REDUCTION TO PRACTICE-Continued.

3. SAME ORIGINALITY—M and K were associated in the production and introduction of locomotive-boiler furnaces, M inventing and filing several applications and K promoting M's inventions, recognizing M as the inventor and paying expenses of applications, patents, and experiments. The reduction to practice of the device finally found practicable was under K's direction exclusively. It was shown that he had made valuable suggestions, which had been adopted, and he filed his application for a patent first. M failed to prove a communication of the invention by him to K directly or indirectly. Held that K was the inventor. Id.

4. SAME-PRIORITY-REDUCTION TO PRACTICE-Where a large dynamo was provided with the brush-holders in issue and was run for a time successfully under conditions of use such as would represent actual practice, Held to constitute a reduction to practice. Thomson v. Priest v. Wetmore, 27.

5. SAME-SAME-SAME-FAILURE TO PRODUCE THE DEVICE-Where the brushholder was used successfully on a dynamo, then laid aside, and could not be found when the testimony was taken, Held that the failure to produce the device had no effect on the question of reduction to practice, except that it suggests that the device did not work successfully; but on this point the direct evidence outweighs the suggestion. Id.

6. SAME-SAME-ABANDONMENT OF THE INVENTION-Where T reduced the invention to practice in 1886, successfully tested it, then laid it aside, filed an application therefor in the same year, which application his attorney permitted to become abandoned without his consent, and in 1893, after learning that another party had an application pending for the same subject-matter, filed another application therefor, Held not to constitute abandonment of the invention. Id.

7. CONSTRUCTIVE REDUCTION TO PRACTICE-The filing of an allowable application constitutes a reduction to practice. (Citing Lorraine v. Thurmond, C. D., 1890, 86; 51 O. G., 1781; Telephone Cases, C. D., 1888, 321; 43 O. G., 397; 126 U. S., 535.) * Porter v. Louden et al., 707.

REFERENCE LETTERS. See Construction of Specifications and Patents, 9, 15. REFUNDMENT OF FEES. See Fees.

RETURN OF FEES PAID BY MISTAKE-SECOND RENEWAL-Where an applicant paid a second renewal fee on the very day that a decision was published to the effect that there was no authority in the statute for more than one renewal of an application for patent, Held that the fee was paid by mistake and that it should be returned. Ex parte Smith, 99.

REHEARING. See Interference, 3, 4, 5, 6. NEW TRIAL-NEWLY-DISCOVERED EVIDENCE-A petition for a new trial, brought as a motion for rehearing, dismissed, it appearing that the evidence was not newly discovered, much less that it might not have been discovered prior to the previous hearing by the exercise of reasonable diligence. (Spill v. Celluloid Co., 22 Blatchf., 441, 459; Giant Powder Co. v. California Powder Co., C. D., 1880, 680; 18 O. G., 1339; 5 Fed. Rep., 197, 201.) Bostad and Krabol v. Johnson, 44.

REHEARING BY COMMISSIONER OF PATENTS AFTER ATTEMPT TO APPEAL TO THE COURT OF APPEALS. See Interference 5. REHEARING BY COMMISSIONER OF PATENTS AFTER DECISION BY COURT OF APPEALS. See Interference, 4.

REISSUES. See Particular Patents, 2, 15, 19, 31, 39, 40, 78.

1. BROADENING CLAIMS-Where a reissue was obtained for the purpose of broadening the claims of the original patent to cover that which is presumed to have been once abandoned to the public, Held that the reissue

REISSUES-Continued.

is void. (White v. Dunbar, C. D., 1886, 494; 37 O. G., 1002; 119 U. S., 47; Ives v. Sargent, C. D., 1887, 191; 38 O. G., 781; 119 U.S., 652; Dunham v. Dennison Mfg. Co., C. D., 1894, 347; 67 O. G., 1571; 154 U.S., 103.) * Eby v. King et al., 386.

2. SAME ORIGINAL PATENT-When a patent has been surrendered and a reissue obtained and such reissue is held to be void, the patentee cannot proceed upon his original patent. Moffitt v. Garr, 1 Black, 273; Reedy v. Scott, 70. G., 463; 23 Wall., 352, 364; Peck v. Collins, C. D., 1881, 211; 19 O. G., 1137; 103 U.S., 660; McMurray v. Mallory, C. D., 1884, 244; 27 O. G., 915; 111 U. S., 97, referred to and reviewed.) * Id.

3. DEFECTIVE PETITION-JURISDICTION UNDER SECTION 4916, REVISED STATUTES—The Commissioner is authorized to reissue patents in certain specified cases, and if the petition makes no pretense of setting forth facts entitling the patentee to a reissue it is exceedingly doubtful whether he obtains any jurisdiction under section 4916, Revised Statutes, to act upon such petition. *Id.

4. SURRENDER OF ORIGINAL PATENT-REJECTION OF REISSUE CLAIMS-ORIGINAL PATENT-EFFECT OF REJECTION OF CLAIMS IN REISSUE-Quære: If a patentee applies for a reissue of his patent, and includes among the claims under the new application the same claims as those which were included in the old patent, and the Examiner of the Patent Office rejects some of such claims and allows others, both old and new, does the patentee by abandoning his application for a reissue and by procuring a return of his original patent hold his patent invalidated as to those claims which the Examiner rejected? (The above question is certified by the Circuit Court of Appeals to the Supreme Court for decision.) *McCormick Harvesting Machine Company v. C. Aultman & Co. et al., 754. REJECTED CASES. See Limitation of United States Patent by Foreign Patents Previously Granted.

REJECTED CLAIMS. See Claims, 2, 3, 4; Construction of Specifications and Patents, 9; Infringement, 4; Reissues, 4.

RENEWAL FEES. See Refundment of Fees.

RENEWAL OF FORFEITED CASES. See Forfeited Cases, 1, 2, 3.

RES ADJUDICATA. See Former Decisions, 2; Interference, 29.

RESULTS. See Particular Patents, 1, 27, 101; Infringement, 9, 10.

SEPARATE INVENTIONS. See Construction of Specifications and Patents, 7; Infringement, 4.

SPECIFICATIONS. See Construction of Specifications and Patents; Suits under Section 4915, Revised Statutes, 2.

STATE COURTS. See Suits for Infringement, 2.

STATE OF THE ART. See Particular Patents, 13, 15, 18,33,43,55,68,96.

STATE STATUTES OF LIMITATIONS.

STATUTE OF LIMITATION-The statutes of limitations of the several States apply to actions at law for the infringement of patents. Campbell v. City of Haverhill, 130.

SUBSEQUENT PATENTS. See Anticipation, 1; Construction of Specifications and Patents, 8, 87, 92; Interference, 15, 16, 22, 34, 35; Letters Patent Prima Facie Evidence of Validity of Patent; Particular Patents, 92, 96.

1. INFRINGEMENT-PATENT Office, RULING BY-EFFECT OF GRANT—The fact that a patent was granted for a specific means for operating quick-action air-brakes after the grant of a pioneer patent describing and illustrating a

SUBSEQUENT PATENTS-Continued.

different means is, in effect, a ruling by the Patent Office that the subsequent patent does not infringe the pioneer patent, and such a decision, while not conclusive, is entitled to great respect. *Boyden Power Brake Company et al. v. Westinghouse Air Brake Company et al., 357.

2. EARLIER AND LATER PATENTS TO THE SAME INVENTOR-The issuing of a subsidiary patent for specific improvements during the pendency of an application for a primary patent held in the Patent Office without any fault of the inventor does not invalidate the primary patent subsequently issued. *Thomson-Houston Electric Company v. Winchester Avenue Railroad Company et al., 788.

SUBSTITUTION OF PARTS. See Infringement, 9.

SUITS AT LAW. See Injunction, 9.

SUITS BY THE UNITED STATES TO CANCEL A PATENT. See Construction of Specifications and Patents, 8; Supreme Court of the United States, 2.

SUITS FOR INFRINGEMENT. See Appeal to the Circuit Court of Appeals; Damages and Profits; Defense; Demurrer; Infringement, 4, 5, 6; Injunc tion, 6, 7, 8; Jury Trials, 2, 3; Practice in the Courts, 1, 2, 4; State Statutes of Limitations.

1. BILL IN EQUITY, ANSWER, AND PROOF-DEMURRER-APPARENT INVALIDITY— While patent cases are usually disposed of upon bill, answer, and proof, there is no objection, if the patent be manifestly invalid upon its face, to the point being raised on demurrer and the case being determined upon the issue so formed. The Supreme Court has repeatedly held that a patent may be declared invalid for want of novelty, though no such defense be set up in the answer. (Dunbar v. Myers, C. D., 1877, 140; 11 O. G., 35; 94 U.S., 187; Slawson v. Grand Street R. R. Co., C. D., 1883, 313; 240. G., 99; 107 U.S., 649; Brown v. Piper, C. D., 1876, 464; 10 O. G., 417; 91 U.S., 37.) *Richards v. Chase Elevator Company, 392.

2. INFRINGEMENT BY RECEIVER-JURISDICTION OF-Upon a motion to dismiss a bill in equity for infringement of a United States patent by a receiver appointed by a State court, upon the ground that the complainant had not obtained leave to sue from the court making the appointment, Held that the general rule that a court will not entertain jurisdiction of a suit against a receiver appointed by another court until the appointing court has given its consent does not apply when the jurisdiction of the court in which the receiver is sued is conferred by Federal laws. *Hupfeld v. Automaton Piano Co. et al., 469.

3. SAME-SAME-In a suit to restrain the infringement of a patent by a receiver appointed by a State court, Held that the Federal courts will entertain jurisdiction of such suit, without leave of the State court first obtained, to enjoin individuals, even though they be officers of a State court, from acts of infringement. *Id.

4. SMITH-MIDDLINGS-PURIFIER-PATENTS EXPIRED BEFORE SUIT-No EquiTABLE RELIEF-Letters Patent Nos. 133,898, 137,495, 154,770, and 158,992, to George T. Smith, for middlings-purifiers, having expired prior to the commencement of the suit, afford no basis for equitable relief. *Russell v. Kern, 488.

5. SAME-SAME-PATENT EXPIRED AFTER FILING BILL, but Before RETURNDAY-Letters Patent No. 164,050, granted June 1, 1875, to George T. Smith, for middlings-purifier, having expired after the filing of the original bill, but before the return-day of the subpoena, it was within the discretion of the court to dismiss the bill for want of equity. *Id.

SUITS FOR INFRINGEMENT-Continued.

6. Defenses-Estoppel of ASSIGNOR—In a suit for infringement brought by the assignee against the assignor of a patent the latter is estopped from denying its validity; but the prior state of the art is admissible in evidence to aid the court in the construction of the patent. (Ball & Socket Fastener Co. v. Ball Glove Fastening Co., 58 Fed. Rep., 818; C. D., 1894, 689; 69 O. G., 1773; 63 Fed. Rep., 607.) *Martin & Hill CashCarrier Company v. Martin, 503.

Babcock v. Clarkson,

7. TRIAL-INSTRUCTIONS-OFFER OF COMPROMISE-In a suit for infringement of a patent defendant while testifying volunteered the statement that after the action was commenced he had offered $250 in settlement and that plaintiffs demanded $350 and required that defendant should agree to pay a royalty and to sell no carts below a certain price. Held that the court properly refused defendants' request to charge that this offer of compromise should not be construed as an admission of any right in plaintiffs, for, while correct as a proposition of law, it was misleading, because it ignored the evidence relating to plaintiffs' proposition in response to that of defendants. *Holmes et al. v. Truman et al., 581. 8. EQUITY JURISDICTION-PATENT RIGHTS - MONOPOLY - CORPORATIONS TRUSTS-PATENT CONTRACTS NOT UNLAWFUL RESTRAINT OF TRADEPUBLIC POLICY-OPEN MARKET—The preliminary objection of defendants that the complainants had created a close corporation, trust, or syndicate to crush rivals and had resorted to vexatious and frivolous suits, compromises, and other devices to control the market and fix prices of tobacco, and therefore that a court of equity should not and cannot aid the complainants in the prosecution of their unlawful designs, overruled, the Court stating that in the absence of fraudulent or improper conduct toward the defendants the motives of the complainants in procuring and exercising their exclusive rights under the patents may not be the subject of judicial inquiry; that patent rights are essentially monopolistic and patent contracts or contracts relating to patents are not subject to the general rules governing contracts in restraint of trade, and that it follows that a patentee may secure and protect his monopoly in any lawful way by suit, purchase, sale, or combination; that a case requiring the most elaborate investigation and careful consideration cannot be considered vexatious and frivolous, and it is not in point to urge that other pending suits are without merit; that there can be no reason for the interference of the courts, notwithstanding the existence of patent rights, to secure the uninterrupted manufacture of cigarettes, which are neither necessary or beneficial to the public, and that there should be no interference by any department of the Government with open competition in the markets. *Bonsack Machine Company et al. v. Smith et al., 613.

9. ESTOPPEL-PARTIES-INTERFERENCE PROCEEDINGS IN THE PATENT Office— An interference judgment in the Patent Office in a proceeding between the complainant and the patentee whose device the defendant is using does not estop the defendant from denying novelty and priority of invention of complainant's patent when the issue in such proceeding included an additional element and the only evidence that the defendant was a party in privity or that the opposing application was made in its interest rested upon a single inconclusive reply to a question. *McCarty et al. v. Lehigh Valley Railroad Company, 721.

10. Licenses-SUITS IN EQUITY-INFRINGEMENT-Defendants set up, as anticipating the patent sued on, another patent owned by complainant. It appeared that this patent, together with numerous others relating to the 591 PAT 95-55

SUITS FOR INFRINGEMENT--Continued.

same art, owned by complainant and other parties, had by agreement been conveyed to a trustee to issue licenses to others for the use of all the patents, and that in this way licenses had been granted under the alleged anticipating patent, but not to the defendant. Held that complainant was not estopped by reason of such licenses from showing, as against the claim of anticipation, that the patent in question was inoperative, and that the fact of such licenses was only evidential in character, as an admission, and its force as evidence was rebutted by the character of the arrangement under which the licenses were granted. *McCormick Harvesting Machine Company v. C. Aultman & Co. et al., 754.

SUITS UNDER SECTION 4915, REVISED STATUTES.

1. WHAT CAN be ConsidereD—When the suit was under section 4915, and not under section 4918, of the Revised Statutes, it is a continuation of the interference contest in the Patent Office, and the only question that can be considered is whether the complainant is entitled to receive a patent for the invention described in the bill and as specified in his claim filed in the Patent Office. *Standard Cartridge Company et al. v. Peters Cartridge Company, 499.

2. SAME SUFFICIENCY OF SPECIFICATION-Whether the specification in the patent issued to the defendant is sufficient is not involved in the case. It is wholly incompetent and cannot be inquired into. *Id.

3. SAME-Burden of Proof-The only question to be determined is the question of priority. The burden of proof is upon complainants, and they must establish their proof beyond a reasonable doubt. *Id.

4. SAME-SAME-NEW EVIDENCE-Where on a suit under section 4915, Revised Statutes, much additional testimony was introduced, but it was mostly either in corroboration or in contradiction of the testimony in the interference case in the Patent Office, Held that the decision of the Commissioner ought not be set aside upon merely cumulative or impeaching evidence, which is no ground for the granting of a new trial at law. *Id. SUITS UNDER SECTION 4918, REVISED STATUTES. See Interfering Patents.

SUPPLEMENTAL BILL. See Interfering Patents, 5.

SUPREME COURT OF THE UNITED STATES.

1. APPELLATE JURISDICTION-ACT OF CONGRESS-It was not the intention of Congress in the Circuit Courts of Appeals act of March 3, 1891, (ch. 517, 26 Stats., 828,) to narrow the appellate jurisdiction of the Supreme Court in case of a suit brought by the United States as a sovereign in respect of an alleged miscarriage in the exercise of one of its functions as such deeply concerning the public interests and not falling within the reasons of the limitations of the act. * United States of America v. American Bell Telephone Company and Berliner, 665.

2. SAME-SAME-ANNULMEnt of a PATENT-SUIT BY THE UNITED STATES-A suit brought by the United States to annul a patent is a suit brought by the United States as a sovereign in respect of an alleged miscarriage of one of its functions, as such deeply concerns the public interests, does not fall within the limitations of the act creating the circuit courts of appeals, and is within the appellate jurisdiction of the Supreme Court of the United States. *Id.

TECHNICAL TERMS. See Appeal to the Examiners-in-Chief; Construction of Claims, 1; Interference, 1; Limitation of United States Patent by Foreign Patents Previously Granted.