pose of more convenient packing and transportation, to be formed by bending together and uniting its ends by the purchaser for use into a honey-frame. The embodiment of that single idea can hardly be supposed to be the proper subject of a patent. It is merely the adoption of a form of handling and packing, which is not regarded by the statute as an improvment in an art or manufacture.

If the patentee is entitled to claim the blank as a new and useful device, it is because it is a constituent of the frame or section into which it is formed by bending-no matter who bends it, whether the maker or the purchaser-for use; and if the state of the art at the date of the alleged invention was such that the patentee cannot claim as his invention the honey frame or section when formed by bending and uniting the ends of such a frame, then he cannot for the same reason claim as his invention such a blank for the purpose of forming it into a frame or section. The question, therefore, is whether upon the evidence at the date of the alleged invention, the manufacture of honey frames or sections by bending and uniting the ends of a blank consisting of a single piece substantially as described in this patent was a patentable novelty. Upon a careful comparison and consideration of all the evidence this question must be answered in the negative.

Alexander Fiddes testifies to making and using honey-sections formed from a single piece, grooved, bent, and united at the ends, as early as 1872 and 1873, some of which he sold to others for use, and if those now made by the complainant under his patent are superior in any respect to those first specimens of the manufacture, it is merely in point of finish and workmanship. There is no difference whatever in principle, and the early examples were complete and practical frames, actually used and perfectly serving the purpose, so that they cannot be consid ered as rude and imperfect experiments subsequently developed into a successful manufacture. This conclusion, indeed, is required by the production in evidence of the patent, granted to Hutchins, of December 8, 1874, No. 157,473, which is for a machine for the manufacture of just such blanks from the original log of wood, to be bent into form, and the ends united so as to make the sides of a box for any purpose. The invention of such a machine, of course, supposes previous knowledge of the blanks it was devised to manufacture; and the transfer of the use of a box made from such a blank from the ordinary purposes to the single and special purpose of a box or frame for a honey-section is merely a new use of an old and well-known article, which involves no invention.

It results from these views that the equity of the case is with the defendant, and that the complainant's bill must be dismissed, with costs, and it is so ordered.

[United States Circuit Court-Eastern District of Pennsylvania.]

HATCH v. ADAMS.

Decided October 20, 1884.

29 O. G., 776.

PATENT LAW.-INFRINGEMENT ON THE TERRITORIAL Rights of a GRANTEE OF AN EXCLUSIVE RIGHT TO MANUFACTURE AND SELL UNDER THE PATENT IN A SPECIFIED PART OF THE UNITED STATES.

A sale of patented articles in the ordinary course of trade outside the territorial limits to which the right of sale is restricted by the patentee's grant is unwarranted.

Mr. Frank P. Prichard for the complainant.

Mr. W. G. Griffith for the respondent.

MCKENNAN, S.J.:

This case involves a single question, to wit: Has a purchaser of patented articles from a grautee of an exclusive right to manufacture and sell under the patent in a specified part of the United States the right to sell the articles, in the course of trade, outside the designated limits covered by the grant to his vender?

In the absence of authority to the contrary we would feel constrained to answer this question in the negative. While the patent act secures to an inventor the exclusive right to manufacture, use, and sell his invention, it authorizes him to divide up his monopoly into territorial parcels, and so to grant to others an exclusive right under patent to the whole or a specified part of the United States. Undoubtedly the grantee would take and hoid the right conveyed subject to the limitations of of the grant, and hence he could not lawfully exercise it outside of the territorial limits to which he was restricted. It would be illogical then to assume that he could confer upon a vendee a privilege with which he was not invested, and which he could not exercise himself. It has been held, however, that an unrestricted sale of a patented article carries with it the right to its unlimited use; but the reason upon which this rule rests involves a plain distinction between the right to use and the right to manufacture and sell an invention, and is inapplicable to their definition.

In Adams v. Burke (17 Wall., 455) Mr. Justice Miller thus explains the import and scope of the decisions on the subject:

We have repeatedly held that where a person had purchased a patented machine of the patentee or his assignee this purchase carried with it the right to the use of that machine so long as it was capable of use, and that the expiration and renewal of the patent, whether in favor of the original patentee or his assignee, did not affect this right. The true ground on which these decisions rest is that the sale by a person who has the full right to make, sell, and use such a machine carries with it the right to the use of that machine to the full extent to which it can be used in point of time. The right to manufacture, the right to sell, and the right to use are each substantive rights, and may be granted or conferred separately by the patentee. But in the es

sential nature of things, when the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use, and he parts with the right to restrict that use. The article, in the language of the court, passes without the limit of the monopoly-that is to say, the patentee, or his assignee, having in the act of sale received all the royalty or consideration which he claims for the use of his invention in that particular machine or instrument, it is open to the use of the purchaser without further restriction on account of the monopoly of the patentee.

The only question in this case, as shown by the pleadings, involved the right of the purchaser of coffin-lids, bought within a radius of ten miles from Boston, the right to make, sell, and use which was restricted to that circle, to use them outside of it. The court sustained the right, saying

That so far as the use of it was concerned, the patentee had received his consideration, and it was no longer within the monopoly of the patent. It would be to engraft a limitation upon the right of use not contemplated by the statute, nor within the reason of the contract, to say that it could only be used within the ten miles circle. Whatever, therefore, may be the rule where patentees subdivide their patents, as the exclusive right to make or sell, within a limited territory, we hold that in the class of machines or implements which we have described when they are once lawfully made and sold, there is no restriction upon their use to be implied for the benefit of the patentee or his assignees or licensees.

Even with this careful limitation of the judgment of the court, Justices Bradley, Swayne, and Strong dissented, insisting that the locality of the use, as well as of the manufacture and sale, of the patented article, was restricted by the grant, and that it ought accordingly to be enforced. It may be said then that while this case, with others which precede it, determine, for peculiar reasons, that the lawful sale of a patented article carries with it the right to the unrestricted use of such article as to time or locality, it is the fair import of them that no other "substantive right" conferred by the patent is thereby affected.

Our attention has been called to two cases decided by the circuit court which demand a brief notice.

The first of these was Adams v. Burke (4 Fisher, 392). It was decided by Judge Shepley, and his statement of the law is certainly broad enough to cover the right to sell, as well as the right to use, a patented article outside of a restricted locality; but only the latter right was involved in the case. What was said then by the learned judge touching the right to sell was clearly obiter, and when the case reached the Supreme Court (Adams v. Burke, 17 Wall., supra) that court expressly treated the right to manufacture and sell and the right to use a patented article as distinct substantive rights, and decided the law only as it related to the exercise of the latter right.

The remaining case (McKay v. Wooster, 2 Sawyer, 373) was ruled upon the opinion of Judge Shepley in Adams v. Burke, evidently upon the hypothesis that an extra territorial sale of a patented article was a necessary subject of discussion.

But with this scrutiny of these cases we are unembarrassed by the

rule of comity, which would lead us to conform our own judgment to that pronounced by the circuit court elsewhere, for the sake of uniformity of decision, and in view of the state of the law as it has been expounded by the Supreme Court we feel authorized to express our own judgment that a sale of patented articles in the ordinary course of trade outside the territorial limits to which the right to sell is restricted by the patentee's grant is unwarranted. There must, therefore, be a decree in favor of the complainant, with costs.

[United States Circuit Court-Southern District of Ohio.]

ODELL ET AL. v. STOUT ET AL.

Decided October, 1884.

29 O. G., 862.

1. The granting of a reissue is prima facie evidence of inadvertence, accident, or mistake, as the granting of original letters is prima facie evidence of invention. This evidence is not conclusive, nor is the action of the Commissioner of Patents res adjudicata.

2. REISSUES-Enlarging ClaIMS-COMBINATION-PARTS.

The introduction into reissued letters patent of claims for the patentable parts of the combination claimed in the original letters does not invalidate the reissued letters, if the patentee was the first inventor of the patentable parts claimed, although the original patent was for the combination alone, so described and claimed that the parts were not to be used separately, but together and simultaneously.

A patentee may, under proper circumstances, by reissue, enlarge his claims so as to make them extend to the limits of his invention, but he is bound by those limits. He may not enlarge the invention.

4. SAME WHEN CLAIMS MAY BE ENLARGED.

Upon the authority of James v. Campbell and other decisions of the Supreme Court it is clear that the claim of a patent may be enlarged by a reissue if the patentee move promptly and no rights of others have intervened, and the delay in this case of six months is not unreasonable.

5. SAME WITHIN WHAT TIME APPLICATION TO BE MADE-WHAT IS A REASONABLE TIME.

There is no rule fixing the precise time within which application for a reissue must be made. What is a reasonable time is a question, when a reissue is attacked to be decided by the court upon the case presented. The rule is equitable, and therefore flexible, and to be applied according to equity.

6. SAME-DATE OF INVENTION-DRAWINGS.

The rule that an invention may be exhibited either in a drawing or model, so as to lay the foundation of a claim to priority (Loom Co. v. Higgins), is to be taken with the qualification that it must be followed up with reasonable diligence. Merely making drawings is not such an embodiment of invention as will defeat a subsequent patent.

7. Patents granted between the making of a drawing by complainant and his filing an application a year afterward are not anticipated by his invention.

8. SAME-REISSUES-EFFECT UPON OTHER CLAIMS OF INVALIDITY OF ONE.

The invalidity of one of the claims of a reissued patent does not invalidate the entire reissue, provided the invalid claim was made in good faith. Where it appears that claims in a reissued patent were made to broaden the invention, and thereby to cover intermediate inventions or improvements, the frand may so vitiate all the claims in the reissued patent that all will be held to be void; but one claim in a reissue may be void without necessarily invalidating the other claims.

9. PATENT SUITS-INFRINGEMENT-ABANDONMENT-INJUNCTION.

If a defendant has, before suit brought, abandoned the manufacture and sale of an infringing machine, and the court is satisfied that the abandonment was in good faith and final, an injunction ought not to be granted. But if the defendant, after such abandonment, has engaged in the manufacture and sale of another machine which is also an infringing machine, and suit is brought for both infringements, the court will retain the whole cause under its control, and make the injunction and order to account to apply to the manufacture and sale of both.

10. ODELL-ROLLER-MILLS.

The first claim of Reissue Letters Patent No. 10,139, granted to complainant Odell, June 22, 1882, for an improvement in roller-mills for crushing or grinding grain, middlings, and other material, held to be invalid; the second and fourth claims sustained. Complainants required to file a disclaimer of the first claim before decree, and the decree for an injunction and account to be without costs.

BEFORE MESSRS. JUSTICES MATTHEWS AND SAGE, D. J.

Messrs. Wood & Boyd for the complainants.

Messrs. Stem & Peck and Mr. L. Hill for the defendants.

SAGE, J.:

Letters Patent No. 250,934, for an improvement in roller-mills for crushing or grinding grain, middlings, and other material, were issued December 13, 1881, and reissued (No. 10,139) June 22, 1882, to the complainant Odell, who (with Stillwell & Bierce Manufacturing Company, his licensees) sues for infringement. The object of the invention is stated in the specification to be to adjust the outer crushing or grinding rolls to or from the inner ones, and simultaneously to open or close the spouts or channels which control the discharge of grain from the hopper to the feed-rolls.

The first claim in the reissued letters patent is as follows:

1. In a roller-mill, the combination of the hopper-gate mechanism on both sides of the machine with a through shaft, lever mechanism connecting the parts to operate the gates simultaneously, and a single band-lever, substantially as and for the purpose described.

The drawings show a double mill. The hopper is divided by a par tition. Under each side of the hopper is a set of rolls, to which the grain is delivered by means of a feed-spout. Gates or slides moving vertically inside the hopper open and close the aperture leading to the feed-spouts. These gates are connected by rods with a through-shaft, J, located above the center of the space between the two sets of rolls, and parallel with them, and connected also with a single hand-lever,