that species of jurisdiction. The power conferred not only enables the court to decree a final remedy, but to take care that the subject of the controversy shall not be rendered valueless pending the litigation. Potter v. Dixon, 2 Fish. 381; s. c. 5 Blatch. 160.

Where both patents are void for want of novelty, the court may enter a decree declaring both patents void. Foster v. Lindsay, 3 Dillon 126; s. c. 7 0. G. 514; 8 O. G. 1032; s. c. 1 Ban & Ard. 605; s. c. 2 Ban & Ard. 172.

If the question of priority of invention has been already tried, that judgment is conclusive. U. S. & F. S. F. Co. v. Asbestos Felting Co., 18 Blatch. 312; s. c. 19 O. G. 362; s. c. 5 Ban & Ard. 624; s. c. 4 Fed. Rep. 813.

A judgment or decree can not be accepted as determining the question of the interference of two patents, unless it be direct and affirmative in terms and in the words of the statute. The court must adjudge and declare the patent void in whole or in part, or in operation, and invalid in some particular part of the United States. A decree dismissing a bill seeking that relief does not imply such positive judgment, but on the contrary indicates that the court on the proof before it was unable to render that specific judgment. Tyler v. Hyde, 2 Blatch. 308.

SEC. 4919. Damages for the infringement of any patent may be recovered by action on the case, in the name of the party interested, either as patentee, assignee, or grantee. And whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment thereon for any sum above the amount found by the verdict as the actual damages sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.

Statute Revised-July 8, 1870, ch. 230, § 59, 16 Stat. 207.

Prior Statutes-April 10, 1790, ch. 7, § 4, 1 Stat. 111.-Feb. 21, 1793, ch. 11, 25, 1 Stat. 322.-April 17, 1800, ch. 25, 3, 2 Stat. 38.-July 4, 1836, ch. 357, § 14, 5 Stat. 123.

Parties.

A right of action is only given to such party as possesses the whole interest. Suydam v. Day, 2 Blatch. 20.

The patentee is entitled to recover at law, no matter what private agreement subsists between him and any other person or persons, unless he has made a legal assignment and transfer of his interest in the invention. Park v. Little, 3 Wash. C. C. 196; s. c. 1 Robb 17; Blanchard v. Eldridge, 1 Wall. Jr. 337; s. c. 2 Robb 737.

1

A licensee can not maintain an action in his own name. Suydam v. Day, 2 Blatch. 20; Gayler v. Wilder, 10 How. 477.

An action at law to protect the interests of a licensee may be brought in the name of the patentee for the benefit of the licensee. Goodyear v. McBurney, 3 Blatch. 32; Goodyear v. Bishop, 2 Fish. 96; s. c. 4 Blatch. 433.

If a patentee executes a release under seal to another, neither he nor his licensee can sue that party for an infringement. Jackson v. Allen, 120 Mass. 64.

If the licensee brings a suit in the name of the patentee, the latter may claim indemnity against costs, which will be provided for by the court on a proper application. Goodyear v. Bishop, 2 Fish. 96; s. c. 4 Blatch. 438. A suit brought in the name of the patentee for the benefit of the licensee can not be dismissed on a motion made by the defendant, although the nominal plaintiff consents to such dismissal. Goodyear v. Bishop, 2 Fish. 96; s. c. 4 Blatch. 438.

A stipulation by the patentee to sue infringers does not necessarily take from the licensee his remedy, which the law has provided for him by proceeding directly against the wrongdoer. Goodyear v. Bishop, 2 Fish. 96; s. c. 4 Blatch, 438.

An assignee acquires his title to a patent with a right of action in his own name only by force of the statute. Such exclusive right of action exists in favor of a sole assignee only in two cases, namely, where he acquires by assignment the whole interest in a patent or a grant, or conveyance of the whole interest within some particular district or territory. Suydam v. Day, 2 Blatch. 20; Tyler v. Tuel, 6 Cranch 324; s. c. 1 Robb 14.

The assignees of separate, undivided interests in the patent for a certain territory may join in an action for an infringement. Stein v. Goddard, 1 McAl. 82.

The grantee of the exclusive right to construct and use, and vend to others to be used, two patented machines within a certain town, can maintain an action for an infringement. Although limited to the use of two machines within the town, the right to use them is exclusive. No other party, not even the patentee, can use a right under the patent within the territory, without infringing the grant. Wilson v. Rousseau, 4 How. 646; s. c. 1 Blatch. 3; s. c. 2 Robb 373.

A suit for an infringement committed after the assignment was made and recorded must be in the name of the assignee. Herbert v. Adams, 4 Mason 15; s. c. 1 Robb 505.

The correct interpretation of the words "person or persons interested" is, that the words mean the person or persons interested in the patent at the time when the infringement was committed which is the cause of action for which the damages may be recovered. A subsequent sale and transfer of the exclusive right are no bar to an action to recover damages for an infringement committed before such sale and transfer. The reason for the rule is that the assignee or grantee is not interested in the damages

for any infringement committed before such sale and transfer. The patentee may therefore sue for such damages in his own name. Moore v. Marsh, 7 Wall. 515.

The patentee and an assignee of a moiety may join in an action for an infringement. Whittemore v. Cutter, 1 Gallis. 429; s. c. 1 Robb 28.

The joint owner of a patent can sustain an action for an infringement against his co-owner, and recover his actual damages, according to his interest in the patent. If such co-owner appropriates any portion of the exclusive right or common property to his separate use or benefit, by either the use or the sale of the patented machine, he does what is in principle the same as the conversion by destruction or sale of the joint property by a tenant in common, which authorizes his co-tenant to maintain trover. Pitts v. Hall, 3 Blatch. 201.

The assignee of the patent and of a claim for damages may maintain an action at law in his own name to recover the damages. Spring v. Domestic S. M. Co., 22 O. G. 1445; s. c. 13 Fed. Rep. 446.

Infringement.

The statute does not, and was not intended to operate beyond the limits of the United States, and as the patentee's right of property and exclusive use is derived from it, they can not extend beyond the limits to which the law itself is confined. The use of the invention outside of the jurisdiction of the United States is not an infringement of his rights. The rights of property and exclusive use granted to a patentee do not extend to a foreign vessel entering one of our ports, and the use of the improvement in the construction, fitting out, or equipment of such vessel while she is coming into or going out of a port of the United States is not an infringement of the rights of an American patentee, provided it was placed upon her in a foreign port, and authorized by the laws of the country to which she belongs. Brown v. Duchesne, 19 How. 183; s. c. 2 Curt. 371.

The jurisdiction of the United States extends to the decks of American vessels on the high seas, as much as it does to all the territory of the country; and the use of a thing patented on such vessels is an infringement. Gardiner v. How, 2 Cliff. 462.

An infringement is a copy made after and agreeing substantially and in principle with the article described in the letters patent. The statute confers upon the patentee and his assigns the exclusive right to make, to use, or to sell to others to be used, the patented article. It is therefore an infringement to make or manufacture a patented article, though it is never used by the maker. It is likewise an infringement to use a patented article, though made by another. It is also an infringement to sell to others the article when it is manufactured by another. The law vests the exclusive right to do all these three things in the patentee, and hence for another to do one or all of them is an infringement. Haselden v. Ogden, 3 Fish. 378.

It is not necessary that the defendant's machine should be an exact copy of the patentee's machine. All that is required is that the defendant's machine should be substantially like the patentee's machine. Waterbury Brass Co. v. N. Y. Brass Co., 3 Fish. 43; Greer v. Castle, 24 O. G. 1176.

It is a familiar rule that to copy the principle or mode of operation described in the patent is an infringement, although such copy should be totally unlike the original in form or proportions. If it were not so, no question of infringement could arise. If the machine complained of were a copy in form of the machine described in the specification, it would be at once seen to be an infringement. It could be nothing else. It is only ingenious diversities of form and proportion, presenting the appearance of something unlike the thing patented, which give rise to questions. Winans v. Denmead, 15 How. 330.

So long as the patentee's ideas are found in the construction and arrangement, no matter what may be its form, or shape, or appearance, the party using it is appropriating his invention, and must be held to be an infringer. Potter v. Wilson, 2 Fish. 102; Carter v. Baker, 4 Fish. 404; s. c. 1 Saw. 512; Decker v. Grote, 6 Fish. 143; s. c. 10 Blatch. 331; 3 O. G. 65; Decker v. Griffith, 10 Blatch. 343, note; Hyndman v. Roots, 97 U. S. 224; s. c. 13 0. G. 868.

Patents are not monopolies, because a monopoly is that which segregates what was common before, and gives it to one person or class for use or profit. A patent is that which brings out from the realm of mind something that never existed before, and gives it to the country. Probably of all species of property the property in patent rights should be most carefully guarded and protected, because it is so easily assailed. The most difficult thing in the world is to prove an invasion of property of this character. Singer v. Walmsley, 1 Fish. 558; Parker v. Stiles, 5 McLean 44 ; Imlay v. Railroad Co., 1 Fish. 340; s. c. 4 Blatch. 227.

An infringement takes place whenever a party avails himself of the invention of the patentee without such variation as will constitute a new discovery. An infringement involves substantial identity. Carter v. Baker, 4 Fish. 404; s. c. 1 Saw. 512; Rich v. Lippincott, 2 Fish. 1; Foss v. Herbert, 2 Fish. 31; s. c. 1 Biss. 121.

The word "substantial," as applied in actions for an infringement, is not susceptible of an exact definition. The law looks more to the substance of things than their forms. Brooks v. Bicknell, 3 McLean 250;

s. c. 2 Robb 118.

No certain, definite rule, can be stated by which to determine unerringly in every case what will amount to substantial identity. Each case must be determined upon its own circumstances. Carter v. Baker, 4 Fish. 404; s. c. 1 Saw. 512.

The question of infringement is one irrespective of motive. The defendant may have infringed without intending, or even knowing it, but he is not, on that account, the less an infringer. Parker v. Hulme, 1 Fish. 44. The making of a machine fit for use, and with a design to use it for

profit, is an infringement of the patent right. Whittemore v. Cutter, 1 Gallis. 429; s. c. 1 Robb 28; Bloomer v. Gilpin, 4 Fish. 50.

The word "making" is equally as applicable to machines as to compositions of matter, and there is no difficulty in holding that the using or vending of a patented composition is a violation of the right of the proprietor. Whitemore v. Cutter, 1 Gallis. 429; s. c. 1 Robb 28.

An imperfect infringement, because the machine is imperfect, is still an infringement. Union Paper Bag Co. v. Binney, 5 Fish. 166.

The patent law was intended to secure to an inventor his whole invention or discovery, but not unless he claimed to be secured in the whole. If he claims only a part, or some particular form, such part or particular form only is secured to him. Hawes v. Gage, 5 O. G. 494; Boston E. F. Co. v. Rubber Thread Co., 1 Holmes 372; s. c. 5 O. G. 696; s. c. 1 Ban & Ard. 222; American Pin Co. v. Oakville Co., 3 Blatch. 190; Bliss v. Haight, 3 Fish. 621; s. c. 7 Blatch. 7; Sickles v. Gloucester Manuf. Co., 1 Fish. 222; s. c. 3 Wall. Jr. 186; Rich v. Close, 4 Fish. 279; s. c. 8 Blatch. 41; Many v. Sizer, 1 Fish. 31; Waterbury Brass Co. v. Miller, 5 Fish. 48; s. c. 9 Blatch. 77; How v. Williams, 2 Fish. 395; s. c. 2 Cliff. 245; Meissner v. Devoe Manuf. Co., 5 Fish. 285; s. c. 9 Blatch. 363; 2 O. G. 545; Poppenhusen v. N. Y. G. P. Co., 4 Blatch. 253; Smith v. Elliott, 5 Fish. 315; s. c. 9 Blatch. 400; 1 O. G. 331; Doughty v. West, 2 Fish. 553; Evarts v. Ford, 6 Fish. 587; s. c. 5 O. G. 58; Fuzzard Manuf. Co. v. Dickenson, 3 Fish. 289; s. c. 6 Blatch. 80; Consolidated Fruit Jar Co. v. Wright, 12 Blatch. 149; s. c. 6 O. G. 327; s. c. 94 U. S. 92; s. c. 1 Ban & Ard. 320; Rubber C. H. T. Co. v. Welling, 97 U.S. 7; s. c. 13 O. G. 727; s. c. 7 O. G. 608; s. c. 1 Ban & Ard. 282; Le Fever v. Remington, 13 Fed. Rep. 86; Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274; s. c. 12 O. G. 980; Tinker v. W. E. M. & R. Manuf. Co., 5 Ban & Ard. 92; s. c. 1 Fed. Rep. 138; Del. C. & I. Co. v. Packer, 5 Ban & Ard. 296; s. c. 1 Fed. Rep. 851; Knox v. Gt. Western Q. Mining Co., 6 Saw. 430; s. c. 4 Ban & Ard. 25; s. c. 4 Fed. Rep. 809.

An infringement will not take place unless the invention can be practiced completely by following the specifications. An infringement is a copy made after and agreeing with the principle laid down in the patent, and if the patent does not fully describe every thing essential to the making of the thing patented, there will be no infringement by the fresh invention of processes which the patentee has withheld from the public. Page v. Ferry, 1 Fish. 298.

It is not necessary to constitute an infringement that a man should work by the specification contained in the patent. He might not even know there was such a patent, and yet infringe it. Matthews v. Skates, 1 Fish. 602; Parker v. Haworth, 4 McLean 370; s. c. 2 Robb 725.

If the peculiar invention of the patentee is embodied in the defendant's machinery, however it may be combined with other machinery, it is appropriated the same as if it were used alone and separate from those connections. Sickels v. Borden, 3 Blatch. 535; Johnson v. Root, 1 Fish.