Argument for the defendant in error.

patent is inoperative or invalid, at least until there is some averment to the contrary.

But further, the act of surrender extinguishes the right of action so far as the old patent is concerned, for there is no reservation of any right, either for prior or subsequent infringements, or for actions pending, to be asserted upon the old patent after the surrender. The only rights saved is under a reissue, and in virtue of the new patent, and this new right is confined by the express terms of the statute to "actions hereafter commenced for causes subsequently accruing." In the case at bar, the plaintiff counts upon a cause of action which accrued prior to the surrender; but the only rights which survive the surrender, survive alone by virtue of the new patent. Consequently, if the new patent does not sustain the pending action, the old one cannot have that effect.

In the case of Woodworth v. Stone, 3 Story's Rep., 749, a question arose upon the effect of a surrender and reissue pendente lite. The case was upon a bill for an injunction. Judge Story held that the case might proceed, notwithstanding the surrender or reissue, to prevent future and threatened infringements, and carefully distinguishes such a suit from an action at law, which only regards the past.

I do not find that the precise question now under consideration has been decided by this court. In Stimpson v. Westchester R. R., 4 How., 402, the court say: "The charge of infringement in the declaration is laid some years after the new patent, so that the question does not arise whether an action could be sustained for a violation of the right prior to the corrected patent.'

The case from which the above quotation was made arose under the 3d section of the act of 1832, which first provided for a reissue. It will be found that it did not contain the provisions contained in the 13th section of the act of 1836, confining the new patent to "causes subsequently accruing," and it would seem that this provision was added to settle any question which might arise upon the act of 1832.

In the case of Batten v. Taylor, 17 How., 74, the court came very near to a decision of this question, for it is said: "The plaintiff, by a surrender of that patent and the procurement of the patent of 1849 with the amended specifications, abandoned the first patent, and relied wholly on the one reissued."

Mr. Curtis, in his Treatise on Patents, sec. 255, seems to take it for granted, that, after the surrender, the infringement must be subsequent.

See also Ames v. Howard, 1 Sumner, 482, 488.

Argument for the defendant in error.

The counsel for the plaintiff cite the case of Eastman v. Bodfish, 1 Story, 529. That case has no relation to a surrender. It was a suit upon an extended patent, and simply decides that, as the time laid for the infringement fell within the time of extension, the plaintiff could not rely upon an infringement prior to the extension, but must be confined to the time laid in the declaration. Nor does the case decide that if the time had been laid prior to the extension the plaintiff might have recovered. However that may be, a patent extended is quite another thing from a patent surrendered.

I find only one case in the English books which has any relation to the case at bar-Perry v. Skinner, Webster's Patent Reports, 350. That case was upon a disclaimer, under a statute which made the amended specification part of the original patent; and the reporter adds this note at the close of the case:

"The result of the above decision would appear to be that the party entitled to letters patent in the title or specification, of which any disclaimer or memorandum of alteration has been enrolled, has no remedy at law in respect of an infringement prior to the date of the enrollment of such disclaimer or memorandum of alteration, but from the date of such enrollment the patentee acquires a new title."

If this is the consequence of a disclaimer, which becomes part of the old patent, how can there be a doubt that the same consequence results from a surrender and reissue? If the disclaimer works a new title by implication, the surrender and reissue do the same thing expressly.

In England the surrender of a patent works a total extinction of the grant for all purposes. I do not claim such an effect from our statutory surrender, except as to infringements prior to the sur render.

It is very certain that, from the date of the surrender and reissue, there is only one patent in esse, for there cannot be two patents for the same invention existing at the same time. Whatever rights survive the surrender must be asserted under the reissued patent, which, for some purposes, has relation to the original grant. The idea suggested by the plaintiffs' counsel, that, after the original patent has been surrendered, that patent may be used as the foundation for an action, or introduced in proof as a valid title, seems to me wholly inadmissible.

The plaintiff also claims that the plea is bad, because it does not aver a cancellation of the surrendered patent, and cites 17 How., 80. The case warrants no such conclusion. There is nothing in

Opinion of the court.

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the statute about cancellation, and this word, whenever used by this court, is used as an equivalent term for surrender. In England no surrender can be made without a record, and perhaps a cancellation; but there a surrender works a total relinquishment of the grant, and as the Crown cannot receive such a relinquishment without a record, this ceremony is necessary. Hindmarsh on Patents, 246.

In conclusion, I beg to call the attention of the court to the following facts shown by the record: The original patent was granted to the plaintiff on the 30th November, 1852. This patent was surrendered on the 23d March, 1858, as is alleged in the declaration, "in consequence of an insufficient and defective description and specification of said invention; and such proceedings were then had that, on said 23d day of March, 1858, a new patent was granted to said plaintiff on an amended description and specification, previously filed in the Patent Office, for the same invention and improvement, and in accordance with said amended description and specification, which said new letters patent bear date March 23, 1858;" and then profert is made "of said reissued letters patent."

The infringement is next alleged to have been made or committed "after the making of said letters patent, after the reissue thereof," to wit, on the 25th day of March, 1858, and on divers other days and times between that day and the commencement of this suit." There is no question that these averments confine the plaintiffs to infringements after the reissue under the new patent. The plea then alleges "a surrender was made after the commencement of the suit of the patent before that time issued to him, and for the alleged infringement of which this action is brought." Now, it is perfectly clear that the original patent cannot be resorted to as a foundation for suit for infringements after its surrender, and during the life of the reissued patent. So, too, it is equally clear that infringements during the time of the new patent cannot, after its surrender, survive such surrender; for all rights of action under the reissued patent are totally gone, and whatever rights survive, as to duration of the term, &c., have relation only to the first patent.

Mr. Justice NELSON. The suit was brought by Moffitt against the defendants for the infringement of a patent for an "improvement in grain separators."

The defendants plead to the declaration that, since the commencement of the suit, the plaintiff had surrendered his patent to the United States, for the alleged infringement of which the action was brought. To which the plaintiff put in a general demurrer.

Syllabus.

The court overruled the demurrer, and sustained the plea, and gave judgment accordingly.

The 13th section of the act of Congress of July 4, 1836, provides, "that if a patent shall be inoperative, &c., it shall be lawful for the Commissioner, upon the surrender to him of such patent," "to cause a new patent to be issued, &c., and the patent so reissued” "shall have the same effect and operation in law on the trial of all actions hereafter commenced, for causes subsequently accruing, as though the same had been originally filed in the connected form," &c.

Now, the point in the case is, whether or not the patentee may maintain a suit on the surrendered patent instituted before the surrender, if he has not availed himself of the whole of the provision, and taken out a reissue of his patent with an amended specification. The construction given to this section, so far as we know, and the practice under it, in case of a surrender and reissue, are that the pending suits fall with the surrender. 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 suits. 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 suppose, that, upon this construction, moneys recovered on judgments 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 the judgment of the court.

We are satisfied the judgment of the court below is right, and should be affirmed.

VANCE V. CAMPBELL ET AL.

(1 Black, 427.)

i. Where a patentee, suing for an infringement of his patent, declares upon a combinanation of elements which he asserts constitute the novelty of his invention, he cannot, in his proofs, abandon a part of such combination and maintain his claim to the rest.

Opinion of the court.

2. Much less can he prove any part of the combination immaterial or useless.

3. The combination is an entirety; if one of the elements be given up, the thing claimed disappears.

4. The 9th section of the act of 1837, (5 U. S. Stat., p. 194,) which provides that the suit shall not be defeated where the patentee claims more than he has invented, applies only to cases where the part invented can be clearly distinguished from that claimed but not invented.

5. In a suit for the infringement of a patent right, no notice is necessary to justify the admission of evidence on behalf of the defendant to show the improvements existing at the date of the plaintiff's invention in the class of articles to which it belongs. 6. The rules of evidence prescribed by the laws of a State are rules of decision for the United States courts, while sitting within the limits of such State, within the meaning and subject to the exceptions contained in the 34th section of the judiciary ast. 7. Where a bill of exceptions sets out that a witness was offered, was objected to on the ground of incompetency, and rejected by the court below, but does not state what facts he was called to prove, this court will not presume that his testimony would have been immaterial if it had been heard.

ERROR to the Circuit Court of the United States for the Southern District of Ohio.

This suit was commenced in the Circuit Court at Cincinnati, December term, 1859, by Vance against Campbell, Ellison, and Woodrow. Judgment for defendants. Writ of error sued out by plaintiff. The question argued here, and the material facts bearing upon it, are fully discussed in the opinion of the court.

Messrs. Lee and Fisher, of Ohio, for plaintiff in error.

Mr. Lincoln, of Ohio, for defendant in error.

Mr. Justice NELSON. This is a writ of error to the Circuit Court of the United States for the Southern District of Ohio.

The suit was brought by Vance against the defendants in the court below, for the infringement of a patent for certain improvements in cooking stoves.

The patentee recites in his specification that it has been very difficult heretofore to make the bottom and back plates of the oven. sufficiently hot, and equally difficult to prevent the front and top from becoming too much heated. For this difficulty, he says, he has devised a remedy, which consists in a particular arrangement of the flues, for the purpose of equalizing the draught above and below the oven.

To heat the oven equally on all sides, he further observes, it must be uniformly enveloped with heated products of combustion; and, to this end, the flue is divided in front of the oven into two branches, one passing above, the other below the oven, and which reunite near the middle of the back flue, where they enter the pipe