Wyeth et al. v. Stone et al. 1 Story.

or justly his own, any such patentee, his administrators, executors, or assigns, whether of the whole or a sectional part thereof, may make disclaimer of such parts of the thing patented, as the disclaimant shall not claim to hold by virtue of the patent or assignment, &c., &c. And such disclaimer shall be thereafter taken and considered as a part of the original specification, to the extent of the interest which shall be possessed in the patent or right secured thereby by the disclaimant, &c. Then follows a proviso, that "no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing the same." The ninth section provides, "That whenever, by mistake, accident, or inadvertence, and without any wilful default or intent to defraud or mislead the public, any patentee shall have, in his specification, claimed to be the first and original inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just right to claim the same, in every such case the patent shall be deemed good and valid for so much. of the invention or discovery as shall be truly and bona fide his own; provided it shall be a material and substantial part of the thing patented, and shall be definitely distin

guishable * from the other parts so claimed without [* 294 ] right as aforesaid." Then follows a clause, that in every such case, if the plaintiff recovers in any suit, he shall not be entitled to costs, "unless he shall have entered at the Patent-Office, prior to the commencement of the suit, a disclaimer of all that part of the thing patented, which was so claimed without right; with a proviso, "That no person bringing any such suit shall be entitled to the benefits of the provisions contained in this section, who shall have unreasonably neglected or delayed to enter at the Patent-Office a disclaimer as aforesaid."

Wyeth et al. v. Stone et al. 1 Story.

Now, it seems to me that, upon the true construction of this statute, the disclaimer mentioned in the seventh section must be interpreted to apply solely to suits pending, when the disclaimer is filed in the Patent-Office; and the disclaimer mentioned in the ninth section to apply solely to suits brought after the disclaimer is so filed. In this way, the provisions harmonize with each other; upon any other construction they would seem, to some extent, to clash with each other, so far as the legal effect and operation of the disclaimer is concerned.

In the present case, the suit was brought on the first of January, 1840, and the disclaimer was not filed until the twenty-fourth of October, of the same year. The proviso then, of the seventh section, would seem to prevent the disclaimer from affecting the present suit in any manner whatsoever. The disclaimer, for another reason, is also utterly without effect in the present case; for it is not a joint disclaimer by the patentee and his assignee, Tudor, who are both plaintiffs in this suit; but by Wyeth alone. The disclaimer cannot, therefore, operate in favor of Tudor, without his having joined in it, in any suit, either at law or in equity. The case, then, must stand upon the other clauses of the ninth section, independent of the disclaimer. [* 295] * This leads me to say that I cannot but consider that the claim made in the patent for the abstract principle or art of cutting ice by means of an apparatus worked by any other power than human, is a claim founded in inadvertence and mistake of the law, and without any wilful default or intent to defraud or mislead the public within the proviso of the ninth section. That section, it appears to me, was intended to cover inadvertences and mistakes of the law, as well as inadvertences and mistakes of fact; and, therefore, without any disclaimer, the plaintiffs might avail themselves of this part of the section to the extent of main

Wyeth et al. v. Stone et al. 1 Story.

taining the present suit for the other parts of the invention claimed, that is, for the saw and for the cutter, and thereby protect themselves against any violation of their rights, unless there has been an unreasonable neglect or delay to file the disclaimer in the office. Still, however, it does not seem to me that a court of equity ought to interfere to grant a perpetual injunction in a case of this sort, whatever might be the right and remedy at law, unless a disclaimer has been in fact filed at the Patent-Office before the suit is brought. The granting of such an injunction is a matter resting in the sound discretion of the Court; and if the Court should grant a perpetual injunction before any disclaimer is filed, it may be that the patentee may never afterwards, within a reasonable time, file any disclaimer, although the act certainly contemplates the neglect or delay to do so to be a good defence both at law and in equity, in every suit brought upon the patent, to secure the rights granted thereby. However, it is not indispensable in this case to dispose of this point, or of the question of unreasonable neglect or delay, as there is another objection, which in my judgment is fatal, in every view, to the maintenance of the suit in its present form.

The objection which I deem fatal, is, that the bill states and admits that the assignment to the plaintiff, Tudor, (made in February, 1832,) has never yet [* 296] been recorded in the State Department, according

to the provisions of the Patent Act of 1793, ch. 55, § 4. That act provides, "That it shall be lawful for any inventor, his executor or administrator, to assign the title and interest in the said invention at any time; and the assignee having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility." It seems a necessary, or, at least, a just inference from this language, that until the assignee has so recorded the assignment, he is not

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters.

substituted to the right and responsibility of the patentee, so as to maintain any suit at law or in equity, founded thereon. It is true that no objection is taken in the pleadings on account of this defect; but it is spread upon the face of the bill, and therefore the Court is bound to take notice of it. It is not the case of a title defectively set forth, but of a title defective in itself, and brought before the Court with a fatal infirmity, acknowledged to be attached to it. As between the plaintiffs and the defendants, standing upon adverse titles and rights, (whatever might be the case between privies in title and right,) Tudor has shown no joint interest sufficient to maintain the present bill; and, therefore, it must be dismissed with costs.

THE PHILADELPHIA AND TRENTON RAILROAD COMPANY, PLAINTIFFS IN ERROR, V. JAMES STIMPSON, DEFENDANT IN

ERROR.

[14 Peters, 448. January T. 1840.]

Action for the violation of a patent-right, granted to the patentee for " a new and useful improvement in turning short curves on railroads."

On the 26th September, 1835, a second patent was granted, the original patent, granted in 1831, having been surrendered and cancelled on account of a defective specification; the second patent being for fourteen years from the date of the original patent. The second patent was in the precise form of the original, except the recital of the fact, that the former patent was cancelled 66 on account of a defective specification,” and the statement of the time the second patent was to begin to run. It was objected that the second patent should not be admitted in evidence on the trial of the case, because it did not contain any recitals that the prerequisites of the Act of Congress of 1836, authorizing the renewal of patents, had been complied with. Held: that this objection cannot, in point of law, be maintained. The patent was issued under the great seal of the United States, and is signed by the Presi

The Philadelphia & Trenton Railroad Co. v. Stimpson. 14 Peters. dent, and countersigned by the Secretary of State. It is a presumption of law that all public officers, and especially such high functionaries, perform their proper official duties, until the contrary is proved. Where an act is to be done, or patent granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act, in granting the patent is primâ facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to reëxamine or controvert the sufficiency of such proofs, when the law has made the officer the proper judge of their sufficiency and competency.

Patents for lands, equally with patents for inventions, have, in Courts of justice, been deemed primâ facie evidence that they have been regularly granted, whenever they have been produced under the great seal of the government, without any recitals or proofs that the prerequisites of the acts under which they have been issued have been duly observed. In cases of patents, the United States have gone one step further; and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed primâ facie evidence that he has made the invention.

It is incumbent on those who seek to show that the examination of a witness has been improperly rejected, to establish their right to have the evidence admitted; for the Court will be presumed to have acted correctly, until the contrary is established.

To entitle a party to examine a witness in a patent cause, the purpose of whose testimony is to disprove the right of the patentee to the invention, by showing its use prior to the patent by others, the provisions of the Patent Act of 1836, relative to notice, must be strictly complied with.

It is incumbent on those who insist upon the right to put particular questions to a witness, to establish that right beyond any reasonable doubt, for the very purpose stated by them; and they are not afterwards at liberty to desert that purpose, and to show the pertinency or relevancy of the evidence for any other purpose not then suggested to the Court.

A party has no right to cross-examine any witness, except as to facts and circumstances connected with the matters stated in his direct examination. If he wishes to examine him on other matters, he must do so by making the witness his own; and calling him as such, in the subsequent progress of the cause. A party cannot, by his own omission to take an objection to the admission of improper evidence, brought out on a cross-examination, found a right to introduce testimony in chief, to rebut it or explain it. Parol evidence, bearing upon written contracts and papers, ought not to be admitted in evidence, without the production of such written contracts or papers; so as to enable both the Court and the jury to see whether or not the admission of the parol evidence in any manner, will trench upon the rule that parol evidence is not admissible to vary or contradict written contracts or papers.

As a general rule, and upon general principles, the declarations and conversa