DISCLAIMER-continued.

validity of such patent, will repel any inference of an unreasonable delay in correcting the claim, by entering a disclaimer, until the highest court to which it could be carried had pronounced its judgment. Ibid.

7. The question of unreasonable delay in filing a disclaimer, held to be one of law. Ibid.

8. Under section 9 of the act of 1837, where a patentee claims more than he has invented, his patent will still be good for what he has invented, provided he enters a disclaimer without unreasonable neglect or delay. Silsby v. Foote, 1071.

9. In this case there had not been such unreasonable delay in entering a disclaimer as to bar a recovery; but the plaintiff was not allowed to recover costs. Ibid.

See COSTS; REISSUE.

DISCOVERY.

1. A new process is usually the result of discovery; a machine, of invention. Corning v. Burden, 867.

2. One may discover an improvement in a process, irrespective of any particular form of machinery; and another may invent a machine by which the process may be performed; and each may be entitled to a patent. Ibid.

DOUBLE USE.

See NEW APPLICATION.

DRAWINGS.

1. Models and drawings may be resorted to for clearer information respecting the invention. Hogg v. Emerson, 438.

2. The drawings, as well as the specification, may be looked to for explanation of anything obscure in the patent. And the drawings may be restored when burnt. Ibid.

3. The drawings required by section 6 of the act of 1837, are not required by law to accompany the application when first made. O'Reilly v. Morse, 763.

4. If necessary, experts may be examined to explain drawings. Winans v. New York and Erie R. R. Co., 1996.

EFFECT.

1. An end to be accomplished is not the subject of a patent. Carver v. Hyde, 316.

2. A patent is not good for an effect, as that would prohibit all other persons from making the same thing by any means whatsoever, and thus discourage arts and manufactures. Le Roy v. Tatham, 657.

3. Whoever discovers that a certain useful result will be produced by the use of certain means, is entitled to a patent for it, if he specifies the means used so fully that a skillful person can, by using the means specified, produce the result described. O'Reilly v. Morse, 763.

4. A patent cannot be for an effect produced, distinct from the machinery necessary to produce it. Ibid.

5. It is for the discovery of some method of producing a result that a patent is granted, and not for the result itself. Corning v. Burden, 867.

See MODE; PRINCIPLE.

EQUITY.

1. An assignor may be joined as a party complainant with an assignee of the exclusive interest in a certain territory, in a bill for an injunction. Woodworth v. Wilson, 428.

2. A motion to dismiss the bill, on the ground that the defendants had parted with their interest, will be denied, if the assignment has been made after the time when a computation of profits ended. Dean v. Mason, 1048. See AMOUNT IN CONTROVERSY; APPEAL; COURTS; FEIGNED ISSUE.

EQUIVALENTS.

The patentee has the right to treat as infringers all who make a like invention, even though the infringing machine may be an improvement on the patented one. McCormick v. Talcott, 1085.

See COMBINATION; FORM; INVENTION; NEW APPLICATION.

ESTOPPEL.

See ACCOUNT OF PROFITS.

EVIDENCE.

1. It is competent for the plaintiff to introduce testimony to show that the persons of whose prior use defendant had given evidence, had paid the patentee for licenses to use his machine. Evans v. Eaton, 8.

2. One having an interest in the question, and not in the event of a patent suit, is a competent witness. Evans v. Eaton, 48.

3. In general, the liability of a witness to a like action, or his standing in the same predicament with the party sued, if the verdict cannot be given in evidence for or against him, is an interest in the question, and will not exclude him. Ibid.

4. No practice can give validity to depositions which are not taken according to law, unless the parties waive the objection, or agree to have them made evidence. Ibid.

5. A deposition which has been introduced in a cause with the consent of the opposite party, cannot be afterwards objected to. Evans v. Hettich, 104. 6. It is no objection to the competency of a witness, that he is sued in another action for the infringement of the same patent. lbid.

7. Plaintiff's counsel cannot inquire of witnesses as to acts between plaintiff and third persons as to his patent. Ibid.

8. Fraudulent intent must be found by the jury, to justify a judgment of vacatur by the court. Grant v. Raymond, 146.

9. The question of abandonment does not turn upon the intention of the inventor. Shaw v. Cooper, 173.

10. The onus probandi is on the defendant to show that proper notice has been given under the statute to enable him to show that the invention of the plaintiff had been known or used before his invention. Philadelphia and Trenton R. R. v. Stimpson, 292.

11. It is a presumption of law that all public officers perform their proper official duties until the contrary is proved. Where an act is to be done, as a patent to be granted or reissued 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, or granted the patent, is prima-facie evidence that the proofs have been regularly made, and were satisfactory. Ibid.

12. The declarations of a patentee, affirming that at some former period he invented a particular machine, are not admissible; but his declarations stating that he had made an invention, describing its details and explaining

EVIDENCE-continued.

its operations, are evidence of an assertion of his right at the time, to the extent of the facts made known by him. Ibid.

13. Such declarations are to be deemed a part of the res gesto and evidence that the invention was then claimed by him. Ibid.

14. Parol evidence bearing upon written contracts ought not to be admitted, without the production of such contracts. Ibid.

15. It is incumbent upon those insisting 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 afterward 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. lbid. 16. A party cannot cross-examine a witness except as to facts and circumstances connected with the matters stated in his direct examination. If he wishes to examine him as to other matters, he must do so by making the witness his own. Ibid.

17. The declaration of a patentee who had parted with his interest, that he had never completed his invention, is only hearsay evidence. Wilson v. Simpson, 515.

18. A defendant using a machine patented to him, will have the benefit of a like presumption in his favor, as to the originality of his invention, as the plaintiff has. Corning v. Burden, 867.

19. Under the act of 1793, a patent was not even prima-facie evidence that the invention patented was new or useful; but under the act of 1836, a patent is received as prima-facie evidence of the facts asserted in it. Ibid. 20. The jury are to determine from the facts as to the novelty of the invention. Battin v. Taggert, 969.

See AGREEMENT; BILLS OF EXCEPTIONS; CHARGE OF JUDGE; DAMAGES; DEFENSES; EXPERTS; GENERAL ISSUE; INFRINGEMENT; MODELS.

EXAMINED CASES.

1. Allen v. Blount, 3 Story, 742, approved, as to the conclusiveness of the Commissioner's decision. Brooks v. Fiske, 846.

2. Battin v. Taggert, 2 Wall. Jr., 10], reversed: that a description of a part of a machine in a specification, without making any claim for it, is a dedication of such part, and that it cannot afterward be restored by a reissue. Battin v. Taggert, 969.

3. Bean v. Smallwood, 2 Story, 408, approved: that an application of a machine to a new purpose is not sufficient. Le Roy v. Tatham, 657.

4. Blanchard v. Eldridge, 1 Wall. Jr., 337, approved. That in case of a license, the patentee can alone maintain an action for infringement of the right of the licensee. Gayler v. Wilder, 576.

5. Brown v. Duchesne, 2 Curt., 371, affirmed: that the right of property vested in a patentee does not extend to the use of the thing patented upon a foreign vessel, if such thing was put upon her in a foreign country, and authorized by the laws of such country. Brown v. Duchesne, 1015.

6. Carver v. Hyde, 316, approved: that the use of part of a combination is no infringement. Stimpson v. Baltimore and Susquehanna R. R. Co., 535. 7. Davis v. Palmer, 2 Brock., 298, referred to, as a case in which the patent is limited to a particular form described and claimed. Winans v. Denmead, S87.

8. Evans v. Eaton, Pet. C. C., 323, reversed: that Evans' patent was only for the general result produced by the combination of all his machinery, and not for the several machines as well as the general result. And af

EXAMINED CASES--continued.

firmed that under the act of 1790, under a notice served with the general issue, that an invention had been used, evidence could be given of a use in other places than those named in such notice. Evans v. Eaton, 8.

9. Evans v. Eaton, S, approved: that a special act is to be regarded as ingrafted on the general acts. Bloomer v. Mc Quewan, 730.

10. Evans v. Eaton, 48, approved: that a patentee must state distinctly what he claims as his invention. Brooks v. Fiske, 846.

11. Evans v. Hettich, 3 Wash., 498, affirmed. Evans v. Hettich, 104.

12. Ewer v. Coxe, 4 Wash., 487, approved: that the publication of the record of copyright and the deposit of a book with the Secretary of State are not prerequisites to obtaining a copyright. Wheaton v. Peters, 200.

13. Foote v. Silsby, 1 Blatchf., 445, affirmed, as to what is a sufficient statement of the interest of the person making the disclaimer; that a reference to a book mentioned in the notice required with the plea of the general issue, must be to a page or section,—a general reference not enough; and that in a patent for a combinatiou, a claim for such machinery as produces a given result is sufficiently definite. Silsby v. Foote, 717.

14. Foote v. Silsby, 2 Blatchf., 275, affirmed, as to what is granted by Foote's patent, but reversed as to the allowance of interest and costs; the ruling below sustained, that a judge may disregard the finding of a jury upon a feigned issue, and give a decree in opposition thereto. Silsby v. Foote,

1071.

15. Goodyear v. Matthews, 1 Paine, 302, examined, as to what use of an invention will deprive a party of a right to a patent. Shaw v. Cooper, 173. 16. Grant v. Raymond, 146, approved, as to the right to obtain a reissue. Battin v. Taggert, 969; Shaw v. Cooper, 173.

17. Hartshorn v. Day, 1031, approved. Day v. Union Rubber Co., 1062.

18. Herbert v. Adams, 4 Mass., 5, approved: that an action for an infringement must be brought in the name of the assignee. Gayler v. Wilder, 576. Hogg v. Emerson, 634.

19. Hogg v. Emerson, 438, explained and affirmed. 20. Hotchkiss v. Greenwood, 4 McLean, 456, affirmed: that the alleged invention was but a new application. Hotchkiss v. Greenwood, 610.

21. Howev. Abbott, 2 Story, 194, explained: that a new application or purpose is not patentable. Hotchkiss v. Greenwood, 610.

22. Le Roy v. Tatham, 657, considered, as holding that the patentee was not entitled to a patent for the newly-discovered principle. O'Reilly v. Morse, 763, examined and commented on. Le Roy v. Tatham, 1116.

23. Livingston v. Woodworth, 922, approved: that a party is accountable only for profits actually made, and not what he might have made. Dean v. Mason, 1048.

24. McClurg v. Kingsland, 322, examined, as to provision respecting assignees under section 18 of the act of 1836. Wilson v. Rousseau, 357, considered to be a patent for the application of a known law of nature to a new purpose. O'Reilly v. Morse, 763. (Dissenting opinion.)

25. McCormick v. Seymour, 2 Blatchf., 240, reversed, as to rule of damages. Seymour v. McCormick, 944.

26. Mc Cormick v. Seymour, 3 Blatchf., 209, affirmed, except as to construction of one of the claims, and the right of the plaintiff to recover costs. Seymour v. McCormick, 1004.

27. Morris v. Huntington, 1 Paine, 348, examined, as to the use of an invention which will invalidate a patent. Shaw v. Cooper, 173.

28. O'Reilly v. Morse, 763, approved, as to delay in filing a disclaimer at the Patent Office. Seymour v. McCormick, 1004.

EXAMINED CASES-continued.

29. Parkhurst v. Kinsman, 1 Blatchf., 488, affirmed. Kinsman v. Parkhurst, 997.

30. Pennock v. Dialogue, 4 Wash., 538, affirmed: that an inventor who permits his invention to go into public use before application, cannot receive a valid patent. Pennock v. Dialogue, 127.

31. Pennock v. Dialogue, 127, approved: that under the act of 1793 an inventor abandous his inchoate right if he makes his discovery public before application for a patent. Grant v. Raymond, 146; Shaw v. Cooper, 173, approved: that the use of an invention before application for a patent, without objection, is an abandonment. McClurg v. Kingsland, 322, referred to as a leading case upon the invalidation of a patent resulting from abandonment. Kendall v. Winsor, 1108.

32. Prouty v. Ruggles, 1 Story, 568, affirmed: that it is no infringement to use a part only of a combination. Prouty v. Ruggles, 311.

33. Prouty v. Ruggles, 311, affirmed: that a combination is not infringed by the use of a part thereof. Stimpson v. Baltimore and Susquehanna R. R. Co., 535.

34. Shaw v. Cooper, 173, referred to as a leading case upon the question of abandonment. Kendall v. Winsor, 1108.

35. Silsby v. Foote, 717, explained, as to the extent of the decision below. Silsby v. Foote, 1071.

36. Stimpson v. West Chester R. R. Co., 330, approved: that use under a defective patent does not prevent the taking out of an amended one. Taggert, 969.

37. Troy Iron and Nail Factory v. Corning, 1 Blatchf., 467, reversed. and Nail Factory v. Corning, 691.

Battin v.

Troy Iron

38. Whittemore v. Cutter, 1 Gall., 429, 478, examined, as to the question of the use of an invention which will defeat a patent. Shaw v. Cooper, 173. 39. Wilson v. Barnum, 1 Wall. Jr., 342, remanded, because a question of fact was certified. Wilson v. Barnum, 510.

40. Wilson v. Rousseau, 357, approved, as to the rights of assignees under a renewed patent. Bloomer v. McQuewan, 730, approved, as to repairing a patented machine. Wilson v. Simpson, 515.

41. Wilson v. Sandford, 532, approved: that the State laws regulate contracts in regard to patented machines. Bloomer v. Mc Quewan, 730, approved : that a patent signed by an Acting" Commissioner is not invalid. York and Maryland R. R. Co. v. Winans, 956.

42. Wilson v. Turner, 7 Law Rep., 527, affirmed.

Wilson v. Turner, 427.

43. Winans v. Boston and Providence R. R. Co., 2 Story, 412, explained. Hotchkiss v. Greenwood, 610.

44. Woodworth v. Stone, 3 Story, 749, approved: that the action of the Commissioner in reissuing a patent is conclusive, unless fraud is shown. Brooks v. Fiske, 846.

45. Wyeth v. Stone, 1 Story, 273, examined and explained, as to the position that a patent may cover a combination, and also a right to distinct improvement. Hogg v. Emerson, 438. Hogg v. Emerson, 634.

SEE TABLE OF CASES WHICH HAVE BEEN CITED, AFFIRMED, APPROVED, EXPLAINED, DOUBTED, DISAPPROVED, ÖVERRULED, OR REVERSED. Vol. 2, page 679.

EXECUTION.

See ASSIGNMENT.