The circuit court made an interlocutory decree, declaring the validity of the reissue and its infringement, and awarding a perpetual injunction and an account of profits and damages. By a final decree a sum of money was awarded as damages. From that decree the defendant has appealed. The result of our consideration is that the decree must be reversed, and the case be remanded to the circuit court, with direction to dismiss the bill. [United States Circuit Court-Southern District of New York.j UNITED STATES v. GUNNING ET AL. Decided November, 1883. 26 O. G., 356. L. PATENTS OBTAINED THROUGH FRAUD-RIGHT OF GOVERNMENT TO VACATE. There is no distinction between letters patent for an invention and for land as regards the rights and remedies for vacating them when obtained by fraud. The right is the same as that which a State has to annul the charter of & corporation created by its legislature if obtained by fraud. 2. SAME-PROPER REMEDY. The appropriate remedy in behalf of the United States when a patent for an invention has been obtained by fraud is by a bill in equity. Mr. Louis C. Raegener, special assistant attorney for the United States. Mr. Chas. W. Seymour for defendant. Mr. A. J. Todd, of counsel. WALLACE, J.: This bill is filed to vacate letters patent for an invention granted to the defendants September 26, 1882, upon the ground of fraud and false suggestion, the allegations being that the applicant induced the graut by his statements in his application that he believed himself to be the inventor of the patented subject, and did not know or believe it had been in public use or on sale in the United States for more than two years prior to his application, whereas both of these statements were false to his knowledge. The defendants have demurred, and in support of the demurrer urge that the United States cannot maintain a suit in equity to vacate letters patent for an invention, although the grant was. obtained by fraud. It is insisted in their behalf that there is no statutory provision which permits such a suit, and in the absence of statutory authority no such suit can be maintained. Notwithstanding the expression of opinion of Judge Shepley in Attorney Genera' v. Rumford Chemical Works (2 Bann. & A., 298) in favor of the defendants' position, it is believed there is no sound reason why a bill will not lie in such a case as well as where the subject of the grant is land, or is a franchise or right of a different kind. The learned judge laid much stress upon the consideration that in issuing letters patent for inventions nothing is granted which belonged before to the United States, and the rights and remedies of the parties to such grants are dependent solely on the statute enactments, and do not grow out of any previous ownership of the subject of the grant; and it was his view that in such a case express authority for proceedings to aunul the grant must be conferred in order to sanction them. The same reasoning would preclude a State from proceedings to annul the charter of a corporation created by its legislature if obtained through fraud. Yet it is a familiar principle that grants of corporate franchises obtained through fraud practiced upon the legislature are void when the State elects to set them aside by a judicial rescission. (Mor. Priv. Corp., 148.) He also refers to the provisions of the patent acts of 1790 and 1793, which authorized proceedings for the repeal of patents obtained surreptitiously or by false suggestion, as indicating that Congress deemed it necessary that authority for proceedings to repeal letters patent obtained through fraud should be conferred by statute. These provisions, however, permitted such proceedings to be taken by any person who chose to complain-a right which did not and does not exist unless expressly conferred. A bill in equity lies to set aside letters patent obtained by fraud, but only between the sovereignty making the grant and the grantee. Field v. Seabury, 19 How., 323. No inference can be justly drawn, therefore, from these provisions that Congress deemed it requisite to confer express authority upon the United States to maintain such a suit, nor from the absence of such provisions in the existing laws that Congress intended to withhold such authority. In Mowry v. Whitney (14 Wall., 434) Mr. Justice Miller, in delivering the opinion of the court, assumed without question that there is no distinction between letters patent for an invention and for land as regards the rights and remedies for vacating them when obtained by fraud, and that a bill in equity is an appropriate remedy in behalf of the United States when a patent for an invention has been obtained by fraud. Although the precise point decided was that the owner of a conflicting patent could not maintain a suit in his own name to vacate an interfering patent obtained fraudulently, that conclusion was influenced mainly by the consideration that the Government was the appropriate party to assert the remedy and seek the relief. The demurrer is overruled. [Supreme Court of the United States.] ESTEY ET AL. v. BURDETT. Decided January 7, 1883. '26 O. G., 637. 1. BURDETT'S REED-ORGAN PATENT-CLAIM 1 CONStrued and DEFINED. Claim 1 of Letters Patent No. 87,241, granted February 23, 1869, to Riley Burdett, as inventor, for seventeen years from August 24, 1863, for an improvement in reed-organs-namely, "The arrangement, in a reed musical instrument, of the reed-board A, having the diapason set a and its octave set b and the additional set Lextending from about at tenor F upward through the scale, substantially as and to the effect set forth "-defined and construed. 2. SAME-ANTICIPATION.. A reed-board with two sets of reeds and a third partial set was made and put into an organ by one Dayton prior to the invention of Burdett, and, such organ being put in evidence, it was held that the alleged infringing organs contained nothing which, so far as said claim was concerned, was not found in such prior organ. 3. SAME-CLAIM 2 ConstruED-ANTICIPATION-NON-INVENTION. As to claim 2-namely, "The reed-board A and foundation-board G, constructed with the contracted valve-openings D F F, and the reeds arranged in relation thereto, all in the manner described"—it was held that, in view of the state of the art, there was no invention in making the length and size of the valve-opening greater or less in a reed-board of a given width, or where the reed-board was made wider or narrower, or had more or less sets of reeds in it, either full or partial; and that the vibrating ends of the lowest and longest reeds in such prior organ were as near together as they were in the reed-boards of the alleged infringing organs. On these views a decree was entered in favor of the defendant. APPEAL from the circuit court of the United States for the district of Vermont. Mr. E. N. Dickerson and Mr. Wm. M. Evarts for the appellants. Mr. Justice BLATCHFORD delivered the opinion of the court: This is a suit in equity brought for the infringement of Letters Patent No. 87,241, granted February 23, 1869, to Riley Burdett, the plaintiff, for seventeen years from August 24, 1868, for an improvement in reedorgans. The specification of the patent is in these words: Figure 1 is a perspective view of one of my reed celeste organs. Fig. 2 is a diagram plan, showing the relative arrangement of the reeds. Fig. 3 is a vertical transverse section of my reed-board, &c. This invention consists, first, in the arrangement of the reed-board; second, in a method of tuning, by which a peculiar quality of tone is produced, and by which the power of the instrument is greatly increased without an increased resistance in the ac. tion, and without an increase of power being necessary to operate the bellows. The advantages gained by my peculiar arrangement are a greatly increased power and variety of tone. This is effected by the use of an additional set of reeds, commencing at tenor F, or thereabout, and running upward through the scale of the instrument, and tuning the same in the peculiar manner hereinafter described. No other reed musical instrument containing the same number of reeds, so far as I know, has ever pos sessed so great a variety or pleasing quality of tone, while simplicity of construction, compactness of form, and ease of operation are other excellences of this arrangement not found in others. I will now describe particularly the construction of that part of my instrument which forms the subject of this patent. The case, bellows, pedals, &c., may be in general construction and arrangement like those in common use, and therefore no special description is required. The foundation of the reed-board is also constructed in the usual manner, but the reed-board proper, in itself, differs from the ordinary reed-board in the following particulars, viz: The main board A contains two set of reeds running through the entire scale, the back set of which is marked a, and is tuned as a unison or diapason while the front or octave set, marked b, is tuned an octave above the diapason. In the arrangement of these reeds, it will be seen that the lowest and longest reeds in the diapason and the octave sets are placed with their vibrating ends as near together as they can be, with room only for the tracker-pin, which communicates the motion of the key to the valve beneath the reeds; but as the reeds continually shorten as they advance upward in the scale, there is necessarily a vacant space left between the diapason set a and the octave set b, which constantly enlarges itself, and has heretofore been regarded as useless. Within this space, commencing on tenor F and running upward through the scale, I have introduced a third set of reeds, L, which forms the distinguishing feature of this instrument. These are placed in the reed-board over the octave set b, and run obliquely to the four dation-board G, as shown in Fig. 3, the vibrating ends resting on the same base as the other sets of reeds a and b. These reeds are of the same size as the corresponding ones in the diapason a, and are tuned either a trifle above or below the diapason, but only sufficiently so to produce a slightly waving and undulating quality or effect, without producing any discord, A few trials will enable any tuner of reed instruments to tune these reeds so as to realize the best effect. The method of tuning will, when this set of reeds, which I have named the "Harmonic Celeste," is drawn and used in connection with the diapason, produce a most wonderfully pleasing and captivating effect, while the power and beauty of both sets of reeds are greatly augmented and enriched in a manner which cannot be realized without being heard. Fig. 2 shows a top view of the reedboard proper, wherein the location of the reeds is shown with reference to the divergence of the reeds of the diapason set a and the octave set b, and also the space afforded for the introduction of the third set L. Fig. 3 exhibits a transverse section of my reed and foundation board, showing the arrangement of my reeds and the valve connections. In this figure, A is the reed-board, G is the foundation-board, D is the valve-opening, E is the valve, and F F are the throats over which the reeds are located and placed. The valve E is retained in its proper place by the pins e e and spring H, and is operated by the tracker-pin I, which rests upon its upper surface, and passes upward through the reed-board to the ander surface of the key N. The swell-boards J and K and stop-dampers B and M are raised whenever desired by the knee-stop C, Fig. 1, or by a hand draw-stop, or by some other convenient device. Another important advantage arising from the introduction of the harmonic celeste is that a greater power aud variety are attained than can be by the use of any of the octave coupling arrangements now in use. These, while they augment the power by drawing down octaves to the keys actually played, are objectionable, inasmuch as they offer more than double the resistance to the key, and are thus often exceedingly undesirable. In my instrument no such objection can ever arise, as the pressure upon the keys is always the same, whether one or all the sets of reeds are used. This is of prime importance to the performer, as the required exertion becomes involuntary and not a matter of calculation, and thus the mind is not distracted from the proper feel. ing and expression of the music performed. The claims of the patent are as follows: 1. The arrangement, in a reed musical instrument, of the reed-board A, having the diapason set a and its octave set b and the additional set L extending from about at tenor F upward through the scale, substantially as and to the effect set forth. 2. The reed-board A and foundation-board G, constructed with the contracted valve. openings D F F, and the reeds arranged in relation thereto, all in the manner de scribed. 3. The diapason a and its octave or principal b, arranged over the same valve-opening, as described, so that the octave unison may be produced, when desired, without the use of coupler, and withont auy additional pressure upon the keys. 4. In connection with the reed-board A, having the sets a, b, and L, as described, the independent dampers B and M, as set forth. The circuit court made an interlocutory decree declaring the patent to be valid so far as claims 1 and 2 are concerned; that those two claims had been infringed; that the plaintiff was not the original and first inventor of what is set forth in claim 4, and did not before the commencement of this suit file a disclaimer of what is claimed in claim 4, and had not unreasonably neglected to file such disclaimer, and had presented evidence of his having filed such disclaimer; that no evidence had been offered to show any infringement of claim 3, and that the plaintiff was entitled to recover profits and damages because of such infringement. A reference to a master to ascertain the same was ordered, and a perpetual injunction was awarded as to claims 1 and 2. On the report of the master a final decree was made for the plaintiff for $161,011.79, without costs to either party. The decisions of the circuit court in the case are reported in 15 Blatchf. C. C. R., 349, 16 Id., 105, and 19 Id., 1. The defendants have appealed. An examination of the text of the specification shows that the inventor purposed to cover by his patent two things: (1) a new arrangement of the reed-board; (2) a new method of tuning. In the application for the patent claim 1 read as it does now, while claims 2, 3, and 4 had specific reference to the method of tuning described. The Patent 9373 PAT-—7 |