Opinion of the court. In our view this is too narrow a construction. The fair and just interpretation of the terms of the agreement indicate unmistakably that the author of the manuscript, in agreeing to deliver it for publication at a stipulated compensation, intended to vest in the publishers a full right of property thereto. The manuscript is delivered under the terms of the agreement for publication." No length of time is assigned to the exercise of this right, nor is the right to publish limited to any number of copies. The consideration is a fixed sum of $1,000. Whether one or one hundred thousand copies were published, the author was entitled to receive, and the publishers bound to pay, this precise amount. As between the parties to the agreement the absolute interest was conveyed by the stipulation of Paige, that he would furnish the manuscript for publication. Paige could no longer do any act after such delivery for publication inconsistent with the absolute ownership of the publishers. But it was proper, for the protection of the publishers, that they should be in position to assert the remedies given by the law against intruders, and it is to this end it is added in the agreement, "and the said Gould & Banks shall have the copyright of said reports to them, their heirs, and assigns forever." It is not covenanted that the publishers should take out the copyright, nor is there any express agreement for an assignment to them by Paige, if he should take it out. Undoubtedly the provision, that the publishers "should have the copyright," would authorize them to apply for it, and if Paige had taken it out in his own name it would have enured to their benefit. But, as between Paige and the publishers, the rights of the latter could not be estimated differently, whether they had or had not availed themselves of the provisions of the act. We have been referred to the case of Cowen v. Banks, in which Mr. Justice Nelson, on a similar agreement, expressed the opinion. that the construction now contended for by the appellants was the true one. No reason is assigned by the judge for his opinion, and the case was such that it was not necessary that this point should be maturely considered. The practical construction by Judge Cowen of his own contract, in opposition to his interest, is cited in the decision to which we are now referring, together with the fact that the judge died in 1844, three years after the expiration of the first term of the copyright. On this it said, with some emphasis, (24 Howard's Practice Cases, 72,) "that he had all this time acquiesced in the claim of the assignee." The decree was that the contract be reformed accordingly. Statement of the case. In the case now before us the construction contended for by the appellants was, for the first time, urged by letter of Mr. Paige, 13th January, 1858, addressed to the appellees, who replied on 3d February following, asserting their absolute right of ownership, with an unlimited license to publish and sell. The parties lived together after this in the same State until 31st March, 1868, when Paige died, a period of ten years, during which no further notice was ever taken of this subject, and no attempt by Paige, by act or protest, to interfere with the exercise of the right of the appellees to publish and sell. It is difficult to account for this long acquiescence upon any assumption that Paige, after the receipt of the reply to the publishers, had faith in the construction now urged. If this agreement needed any extraneous aid to indicate the intention of the parties, this acquiescence would certainly be persuasive of the view we have taken of it. DECREE AFFIRMED. MOWRY v. WHITNEY. (14 Wallace, 434.) 1. The ancient mode of annulling or repeating the king's patent was by scire facias, generally brought in the chancery where the record of the instrument was found. 2. In modern times the court of chancery, sitting in equity, entertained a similar juris diction by bill when the ground of relief is fraud in obtaining the patent, and in this country it is the usual mode in all cases, because better adapted to the investigation and to the relief to be administered. 3. But scire facias could only be sued out in the English courts by the king or his attorney general, except in cases where two patents had been granted for the same thing to different individuals, and the sixteenth section of the act of July 4th, 1836, concerning patents for inventions, is based upon analogous principles. 4. Both upon this authority and upon sound principle no suit can be brought to set aside, annul, or declare void, a patent issued by the government, except in the class of cases above mentioned, unless brought in the name of the government or by the authority or permission of the Attorney General, so as to be under his control. APPEAL from the Circuit Court for the Eastern District of Pennsylvania; the case being thus: Asa Whitney, of Philadelphia, had obtained, on the 25th April, 1848, a patent for fourteen years for an improvement in annealing and cooling cast-iron car-wheels. This patent expired, of course, by its terms, on the 25th of April, 1862. Just before its expiration, that is to say, on the 21st of March, Albert Mowry, of Cincinnati, also obtained a patent for fourteen Statement of the case. years, for a process for annealing car-wheels, of which he professed to be the inventor. In March, 1862, Whitney-the expiration of his patent now approaching-applied to the Commissioner of Patents for an extension of the patent for seven years more. This extension was applied for in pursuance of a provision of the Patent Act of 1848, (act of May 27th, 1848, 6 Stat. at Large, 231, amending the act of July 4th, 1836, 5 Id., 124,) which authorizes an extension where the patent has not been remunerative, and the act, therefore, requires that the patentee when applying for the extension shall "Furnish to the Commissioner of Patents a statement in writing, under oath, of the ascertained value of the invention, and of his receipts and expenditures sufficient in detail to exhibit a true and faithful account of loss and profit, in any manner, accruing to him from, and by reason of, the said invention." Whitney did furnish to the Commissioner a statement, which purported to be such as the act required; and accordingly the extension was granted April 25th, 1862, for seven years from that date, or in other words, until 25th of April, 1869. On the 21st of March, 1866, Whitney filed a bill in the Circuit Court for the Southern District of Ohio, to enjoin Mowry against proceeding in his business of annealing car-wheels, on the ground that he, Mowry, by his process of annealing, was infringing his, Whitney's, patent; and it being decided in the Circuit Court April 5th, 1867, on the hearing of the case, that Mowry was, by his plan of annealing, infringing Whitney's patent, the question of damages came up. This being referred to a master, Whitney, in order to swell his damages, sought to prove (as Mowry alleged) that his profits had been very large; greatly larger than what he had sworn they were in the statement which he made before the Commissioner when seeking his extension.* Hereupon, April 7th, 1870, Mowry filed a bill in chancery in the court below, representing the fact of Whitney's patent, and of the extension of it, (annexing as exhibits all the patent, the certificate of extension, and all the affidavits and estimates on which the extension had been granted;) setting forth his own patent, that he was sued by Whitney in a suit still pending; that in the progress of investigation necessary to his defense in that suit he had discovered the fraud by which the extension was obtained, and praying that it might be declared that Whitney's letters, granted on the *For an account of this controversy see infra, p. 411. Argument for the appellant. 25th of April, 1848, and extended on the 7th of April, 1862, were, and are void and of no effect from and after the 25th of April, 1862. The Patent Act of 1836, (5 Stat. at Large, 124,) it should be added, by its 16th section thus enacts: "That whenever there shall be two interfering patents, or whenever a patent, on application shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent previously granted, any person interested in any such patent, either by assignment or otherwise, in the one case, and any such applicant in the other case, may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge and declare either the patents void, in the whole or in part, or inoperative and invalid in any particular part or portion of the United States, according to the interests which the parties to such suit may possess in the patent or the inventions patented; and may also adjudge that such applicant is entitled according to the principles and provisions of this act to have and receive a patent for his invention as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall in any such case be made to appear. And such adjudication, if it be in favor of the right of such applicant, shall authorize the Commissioner to issue such patent, on his filing a copy of the adjudication and otherwise complying with the requisitions of this act: Provided, however, That no such judgment or adjudication shall affect the rights of any person except the parties to the action, and those deriving title from or under them, subsequent to the rendition of such judgment." To the bill filed as above mentioned by Mowry, Whitney demurred, on these two, among other grounds: 1. That it appeared from the bill that the government of the United States was a necessary party complainant, but that the government was not made a party, nor was the suit brought at the instance of, nor by the authority, nor with the consent of the government. 2. That it appeared by the bill that the term for which the letters patent sought to be canceled were granted and extended had expired before the commencement of the suit. The court below sustained the demurrer on these grounds and dismissed the bill. From that decree Mowry took this appeal. Messrs. A. G. Thurman and C. B. Collier, for the appellant: Argument for the appellee. sion was procured by fraud, the extended patent must be regarded as void, ab initio, and as conferring no monopoly upon the patentee as against the public or the complainant. Notwithstanding the expiration by limitation of Whitney's patent prior to the filing of the bill, the extended patent, until declared void for fraud, was and is alive and in effect for all purposes of suit for infringements of it that occurred during its existence. Patent Laws, act of 1870, § 55. By reason of the fact that Whitney's patent had expired prior to the filing of the complainant's bill, the government was neither a necessary nor a proper party to the bill, and by reason of such expiration the bill could not have been maintained in the name of the government, it having no interest in the subject-matter of the controversy. Bourne v. Goodyear, 9 Wallace, 811. Mowry, as appears on the face of his bill, has a direct and personal interest in the subject-matter of the suit; he is sued by Whitney for an alleged infringement of his patent in the Circuit Court for Ohio; he cannot avail himself of the fraud of the patentee as matter of defense to the suit in that court and in that cause; he is without remedy save in the court and according to the manner in which he has sought it by this proceeding. Wood v. Williams, 1 Gilpin, 517. The extension of the patent having been confessedly procured fraudulently, and the government not being able to maintain a suit in relation to the patent by reason of its expiration, and having no further interest in it, the suit was properly and could only be brought by one who had a continuing interest in the patent, and whose rights were, notwithstanding its expiration, affected by it. The primary object of the suit is that the complainant may be relieved from a prosecution which is contrary to equity and good conscience, and the court is asked to find and declare that the patent, having been procured fraudulently, was ipso facto void as antecedent to obtaining the relief prayed for. Mr. Henry Baldwin, Jr., contra: There is no provision of law for any such proceeding as this to repeal a patent; and any proceeding for that purpose must be at the instance of the government. Instead of this bill being filed by the authority or with the consent of the government, it is on its face filed by an adjudged infringer against a patentee whose rights he has invaded, and whose statute remedy he now seeks to enjoin. The demurrer admits the facts stated in the bill only so far as they are relevant and well pleaded. On the complainant's own |