the patent office did not act on that application till June 1857... Hayden having sued the Suffolk Manufacturing Co. for breach of this last-mentioned patent, the defendant's counsel at the trial requested the judge to rule that the patent was void (June, 1857), because the improvements in the interior arrangement, which were described and claimed in it, being also described but not claimed in the patent of March 17, 1857, were by the legal operation of that patent surrendered to the public use. The judge refused so to rule, and on error this refusal raised the first question." The refusal was sustained by the Supreme Court.

§ 396. The next special defence stated in the act of 1836 is, "that the patentee had sureptitiously or unjustly obtained the patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same." This provision was intended to embrace the case of a patent being obtained fraudulently, when the party obtaining it was not the inventor, and also the case of two independent inventors, where the one makes his application before the other, who was the first inventor, and so obtains a patent for that which was previously invented by another.

§ 397. With regard to the first case, of a patent obtained by a person not the inventor, by a fraud on the rights of the real inventor, it is sufficient to observe that such a defence, if made out, would be a complete bar to the action, upon general principles, as well as upon other provisions of the statute. One of the modes in which a patent may be thus surreptitiously obtained, is by obtaining a knowledge of the invention from the public records where the inventor has deposited a description of it. When the real inventor has filed such a description at the Patent Office, or has obtained a patent, he has given notice to every subsequent applicant for a patent for the same thing, of the fact that he invented it; and although others may not afterwards be able to offer direct evidence that a subsequent patentee had seen and pirated the machine or other thing invented by the former applicant or patentee, yet the jury may infer a piracy from the existence of the former record, of which every subsequent patentee is presumed to have knowledge.1

1 Odiorne v. Winkley, 2 Gallis. 51, 55. In this case, Mr. Justice Story said: "As to the question, whether the patent was surreptitiously obtained, there is no

As to the case of two independent inventors, one of whom makes an earlier application than another for a patent and succeeds in obtaining it, it will be a good defence to an action upon such a patent, if it can be shown that the same thing was first invented by another, although not actually perfected, provided the first inventor was at the time using reasonable diligence in adapting and perfecting the thing invented.1

direct or positive proof that Reed had ever seen Perkins's machine before he obtained a patent, but there is evidence, from which the jury may legally infer the fact, if they believe that evidence. It is a presumption of law, that, when a patent has been obtained, and the specifications and drawings recorded in the Patent Office, every man who subsequently takes out a patent for a similar machine has a knowledge of the preceding patent. As in chancery it is a maxim, that every man is presumed to have notice of any fact, upon which he is put upon inquiry by documents within his possession, if such fact could, by ordinary diligence, be discovered upon such inquiry. It is also a presumption of fact, that every man, having within his power the exact means of information, and desirous of securing to himself the benefit of a patent, will ascertain for his own interest whether any one on the public records has acquired a prior right."

1 Reed v. Cutter, 1 Story's R. 590, 599. In this case, Mr. Justice Story said: The passage cited from Mr. Phillips's work on Patents (p. 395), in the sense in which I understand it, is perfectly accurate. He there expressly states, that the party claiming a patent must be the original and first inventor; and that his right to a patent will not be defeated by proof that another person had anticipated him in making the invention, unless such person' was using reasonable diligence in adapting and perfecting the same.' These latter words are copied from the fifteenth section of the act of 1836, ch. 357, and constitute a qualification of the preceding language of that section; so that an inventor, who has first actually perfected his invention, will not be deemed to have surreptitiously or unjustly obtained a patent for that, which was in fact first invented by another, unless the latter was at the time using reasonable diligence in adapting and perfecting the same. And this I take to be clearly law; for he is the first inventor, in the sense of the act, and entitled to a patent for his invention, who has first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable. An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice, and embodied in some distinct machinery, apparatus, manufacture, or composition of matter, is not, and indeed cannot be, patentable under our patent acts; since it is utterly impossible, under such circumstances, to comply with the fundamental requisites of those acts. In a race of diligence between two independent inventors, he who first reduces his invention to a fixed, positive, and practical form, would seem to be entitled to a priority of right to a patent therefor. Woodcock v. Parker, 1 Gallis. R. 438. The clause of the fifteenth section, now under consideration, seems to qualify that right, by providing that, in such cases, he who invents first shall have the prior right, if he is using reasonable

$398. The last defence mentioned in the statute, is, that the patentee, being an alien at the time the patent was granted, "had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent was issued." The object of this provision was to prevent foreigners from obtaining patents in this country, and afterwards withholding the use of their inventions from the public for an unreasonable length of time.1

§ 399. Apart, however, from the general issue, whether pleaded with or without statutory notice of the evidence to be offered, the defendant may plead specially in bar, that since the action was instituted the plaintiff has surrendered his letters-patent and obtained a reissue. Thus in the case of Moffitt v. Garr,2 the court said: "A surrender of the patent to the commissioner, within the sense of the provision, means an act which, in judgment of law, extinguishes the patent. It is a legal cancellation of it, and hence can no more be the foundation for the assertion of a right after the surrender, than could an act of Congress which has been repealed. It has frequently been determined that suits pending, which rest upon an act of Congress, fall with the repeal of it. The reissue of the patent has no connection with, or bearing upon, antecedent suits; it has as to subsequent ones. The antecedent suits depend upon the patent existing at the time they were commenced; and unless it exists and is in force at the time of trial and judgment, the suits fail. It is a mistake to

diligence in adapting and perfecting the same, although the second inventor has, in fact, first perfected the same, and reduced the same to practice in a positive form. It thus gives full effect to the well-known maxim, that he has the better right who is prior in point of time, namely, in making the discovery or invention. But if, as the argument of the learned counsel insists, the text of Mr. Phillips means to affirm (what, I think, it does not) that he, who is the original and first inventor of an invention, so perfected and reduced to practice, will be deprived of his right to a patent, in favor of a second and subsequent inventor, simply because the first invention was not then known or used by other persons than the inventor, or not known or used to such an extent as to give the public full knowledge of its existence, I cannot agree to the doctrine; for, in my judgment, our patent acts justify no such construction.”

1 It has been held that this clause does not apply to American patentees; who became such as assignees of alien inventors, under § 6 of Act of March, 1837. Tatham v. Lowber, 2 Blatchf. 49.

2 1 Black. 273.

suppose that, upon this construction, moneys recovered on judgment in suits, or voluntary payment under the first patent upon the surrender, might be recovered back. The title to these moneys does not depend upon the patent, but upon the voluntary payment or judgment of the court."

CHAPTER X.

OF THE REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS.

§ 400. WE have seen that the common law and the statute both afford a remedy, by an action for damages, for the infringement of patent rights. But this remedy would be wholly inadequate to the protection of such rights, if it were not accompanied and fortified by another remedy, which flows from that great principle of equity jurisprudence, that where there is a legal right, and the nature of the injury to which it is exposed is such that a preventive remedy is indispensable, equity will afford that remedy by an injunction. The grounds of the equity jurisdiction in cases of patents are, the prevention of irreparable mischiefs, the suppression of a multiplicity of suits and vexatious litigation, and the more complete discovery, from the party guilty of infringement, of the extent of the injury done to the patentee, than can be obtained in an action at law. It does not belong to the purposes of this work, to trace the origin of this branch of equity jurisdiction, nor is it necessary to do so, since the patent laws have expressly adopted in the broadest terms the remedy which it affords for the protection of patent rights, and have directed the proper courts "to grant injunctions according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and conditions as the said courts may deem reasonable."2 All that is requisite, therefore, in the present work, is, to develop the application of the doctrines and practice of courts of equity to the rights of inventors, in the remedy by injunction.

§ 401. As a preliminary remark, however, we may notice, that the discretion vested in the court by the terms of the statute above cited, to grant injunctions on such terms and conditions as the court may deem reasonable, is in perfect accordance with the

12 Story's Eq. Jurisp. § 930, 931, 932, 933.

2 Act of July 4, 1836, ch. 357, § 17. Enlarged, as to powers of appeal, by act of February 18, 1861, ch. 37.