these cases, unless it be Batten v. Taggert, 17 How. 74,which is perhaps inconsistent with Leggett v. Avery, 101 U. S. 256,-has been overruled; and a great many similar cases could be cited. It has been brought out a little more decidedly by the later cases that the invention must be the same; but it has never been held in the supreme court, or any circuit court, so far as I can discover, that the commissioner's decision is not final as to the propriety of a re-issue, as distinguished from its validity upon what may be called its merits; or that the claims may not be varied to express the real invention. The claim is part of the specification, and if defective may be amended. Russell v. Dodge, 93 U. S. 460, in which the decision is given by Mr. Justice Field, and which is cited by him in the Powder Co.'s case, merely decides that a re-issue which claims a different invention is void. A similar decision has been made at this term of the supreme court, in giving which Mr. Justice Strong states the law in the old way, that the commissioner's decision is final as to the mistake, but not as to the identity of invention. Ball v. Langles, 18 O. G. 1405. The only cases which he cites are Seymour v. Osborne and Russell v. Dodge, which he evidently considers to be consistent with each other.

I conclude, therefore, that the re-issue was granted to correct some inadvertence, accident or mistake. Whether it is valid is quite another matter. I have read with diligence the very voluminous record, and am satisfied that the presserfoot described and shown in the original patent and model has the functions claimed in the re-issue. It was a tool which was fitted for a particular purpose, and if the claim had been well adapted to the invention it would not have been necessary to re-issue the patent, for no one could have justified a piracy of the presser-foot by omitting to use the folder which was attached to it. The tool was not a combination, but an aggregation of two entirely distinct tools, one to fold and one to press; that is, hold the work to be sewed. The doubt whether the presser-foot would work by itself was dissipated by the evidence, and by a successful experiment in open court.

So it will operate and produce its results as a presser-foot, though not all the results, when the grooves have been made in the stay-strip before it is sewed.

The re-issue, then, was granted in order to enable the patentee to claim the actual operations of his tool in detail, which is a perfectly legitimate reason for a re-issue, until the law is changed by congress or the supreme court.

One great dispute of fact is whether the invention was, in fact, new. One Turner swears that he made a presser-foot of the same sort seven years earlier. Turner was employed by the plaintiffs to sell their presser-foot, and, while so employed, tried to undersell them with one of his own. For this fraud he was discharged, and went into the employ of the defendants, and procured a patent on his presser-foot. How this came to be granted, without an interference, I am not informed. The invention appears to me to be, in substance, identical with that of the plaintiff. However, Turner says that this was a revival of a presser-foot which he had made years before, and there is some testimony to support him. It is open to the criticism so often made upon such remembered inventions, which never went into general use. Against it, the plaintiffs bring strong negative evidence of many persons who must have seen and used the thing if it existed. They go further, and bring thirty witnesses to impeach the character of Turner for truth; and two who swear that he tried to bribe them to remember his presser-foot. None of the evidence to character is met, or attempted to be met, excepting by the testimony of one of the defendants. It is not made out, to my satisfaction, that Turner made his presser-foot before Sutherland made his.

The respondents insist that Turner's presser-foot, whenever it may have been invented, differs essentially from that of Sutherland, in that it has its central recession or depression much deeper than those upon the sides, so that it will fit much better the ordinary shape of an outward turned seam. This argument is used both as to novelty and as to infringement. I find, however, as matter of fact, that Sutherland's foot is

capable of doing the work; and, that being so, the precise relative proportions of the recessions are matters for the constructor.

With this view of the patent, it is admitted that the respondents have infringed it.

Interlocutory decree for the complainants.

LOCKWOOD v. CLEAVELAND.

(Circuit Court, D. New Jersey. February 28, 1881.)

1. INTERFERING PATENTS-CROSS-BILL-REV. ST. § 4918.

In a suit against an interfering patentee under section 4918 of the Revised Statutes the defendant is not required to file a cross-bill in order to obtain affirmative relief.

2. CROSS-BILL DISMISSED-COSTS.

The cross-bill was therefore dismissed in this case, upon the motion of the complainant, as having been improvidently filed, but, under the circumstances, costs were not allowed.-[ED.

In Equity. Motion to Dismiss Cross-bill.
Browne & Whitter, for complainant.

Munson & Philipp, for defendant.

NIXON, D. J. This is a motion to dismiss a cross-bill, as improvidently filed. The circumstances under which the bill was filed are as follows: On the seventh of September, 1875, the commissioner of patents issued to Rhodes Lockwood letters patent No. 167,455, for "Improvement in India-rubber erasers." On the twenty-fifth of May, 1877, one Francis H. Holton, claiming to be the original and first inventor of a certain improvement in erasive rubber, by an assignment in writing, sold and transferred unto Orestes Cleaveland all his right, title, and interest in and to said improvement, which assignment was duly recorded in the patent-office of the United States, September 27, 1878, in Book J 23, p. 296, of transfers of patents. On the ninth of June, 1877, the said Holton made application to the commissioner for letters patent for said improvement. The commissioner being of the opinion that the application interfered with the letters v.6,no.7-46

patent No. 165,455, before issued to Lockwood, gave notice on the fifth of November, 1878, to the parties in interest, as required by section 4904 of the Revised Statutes, and directed the primary examiner to proceed to determine the question of the priority of invention. Testimony was taken and a hearing had, the respective parties being represented by counsel, and on the twelfth of December, 1879, the examiner adjudged Holton to be the prior inventor of the improvement. An appeal was taken from this decision to the board of examiners in chief, which, after hearing the parties, reversed the primary examiner, on the twenty-fourth of February, 1880, and adjudged Lockwood to be the prior inventor. On an appeal from this last judgment to the commissioner of patents, the commissioner, on the third of May, 1880, held that Holton was the original inventor of the improvement, but refused to grant the letters patent applied for, on the ground that the invention had been in public use and on sale for more than two years prior to Holton's application. From this last judgment, Holton took the case by appeal to the supreme court of the District of Columbia, which reversed the commissioner, on the twenty-eighth of September, 1880, and decided that Holton was entitled to his letters patent. They were accordingly issued to Cleaveland, as the assignee of Holton, on the nineteenth of October, 1880, numbered 233,511.

This condition of affairs existing between the parties, on the second of November, 1880, Lockwood filed a bill in this court against Cleaveland, setting forth the existence of the two patents, and their interference, one with the other, and praying that the defendant's letters patent might be decreed void, and that he might be restrained, by injunction, from instituting any suit at law or in equity for any alleged infringement thereof. The defendant has answered, denying that Lockwood was the original and first inventor of the improvement described in his letters patent, and claiming that he, as the assignee of Holton, is entitled to the invention, and conclud ing with the prayer that the complainant's patent may be adjudicated void. Simultaneously with the answer, and by leave of the court, the defendant, Cleaveland, also filed a

cross-bill, praying that the complainant's patent might be declared void, and that he might be restrained from bringing any action in any court for an infringement of the same.

The counsel for the complainant in the original suit now asks the court to dismiss the cross-bill, on the ground that section 4918 of the Revised Statutes affords all the relief in the original suit which the defendant can possibly have in the cross-suit. The motion involves the true construction of that section, which is a substantial re-enactment of section 16 of the patent act of 1836, as amended by section 10 of the act of March 3, 1839. It provides that, "whenever there are interfering patents, any person interested in any one of them

may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent, and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void, in whole or in part. The design

of the provision is obvious. The congress meant to give a speedy and complete remedy to the owners of interfering patents, and, to this end, to clothe the courts with jurisdiction to adjudge and declare either of the patents void, in whole or in part, or inoperative or invalid in any particular part of the United States. The difficulty and doubt arise wholly from the phrase "due proceedings had according to the course of equity," which seems to have been added to the previous legislation, and intended as a limitation upon the remedy, and to conclude the parties to three modes of procedure recognized in equity practice.

Nothing is more firmly settled in equity than that where a defendant seeks the aid of the court for the purpose of enforcing affirmative rights, he must file a cross-bill, although such a course is not necessary when he relies upon his rights. merely as a defence to the relief sought against him. 2 Dan. Ch. Pr. 1550*.

The general rule is that he cannot have any positive relief against the plaintiff, even on the subject-matter of the suit, except by cross-bill. Story, Eq. Pl. § 398, n. 3; Miller v.