interests of all parties, and far more accurately than the old preserves a proper order and sequence in its remedies. §723. Proceedings for a Repeal in the Interest of Prior Inven tors under the Revised Statutes of 1874. The relief afforded to the defeated applicant is prescribed by Section 4915 of the Revised Statutes, and has already been discussed in its appropriate connection.1 Proceedings for the repeal of interfering patents are governed by Section 4918.2 According to this section any person interested in one of two or more interfering patents,3 or in the practice of the invention which it claims, may bring a bill in equity against the owners of the adverse patent, praying for relief against the interfering patentee or any party holding under him. Upon due notice § 723. 1 See §§ 571, 604, and notes, ante. 2 Rev. Stat. Sec. 4918: "Whenever there are interfering patents any person interested in any one of them, or in the working of the invention claimed under either 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, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment." 8 That Sec. 4918, Rev. Stat., relates only to interfering patents for the same invention, when the plaintiff claims to be the original inventor, see Celluloid Mfg. Co. v. Goodyear Dental Vulcanite Co. (1876), 10 O. G. 41; 13 Blatch. 375. That two patents for distinct articles do not interfere under Sec. 4918, though one is an improvement on the other, see Pentlarge v. N. Y. Bung & Bushing Co. (1884), 28 O. G. 370; 20 Fed. Rep. 314. That two patents interfere under Sec. 16, act of 1836, only when they claim in whole or in part the same invention, as under Secs. 8 and 12, see Gold & Silver Ore Separating Co. v. United States Disintegrating Ore Co. (1869), 3 Fisher, 489; 6 Blatch. 307. That no action lies by a junior pat entee to obtain a decision that his patent does not conflict with a prior one, see Celluloid Mfg. Co. v. Goodyear Dental Vulcanite Co. (1876), 10 O. G. 41; 13 Blatch. 375. That patents can be adjudged void only under Sec. 16, act of 1836, and Sec. 10, act of 1839, and then only when two patents interfere or when a patent is refused by the Commissioner or a justice of the Supreme Court of the District of Columbia on appeal, see Merserole v. Union Paper Collar Co. (1869), 3 Fisher, 483; 6 Blatch. 356. That an assignee before the patent, if his assignment was duly recorded, may sue one to whom the patent issued to the adverse parties, and after such proceedings according to the usual course of equity as the nature of the controversy requires the court may declare either of the patents void in whole or in part, or inoperative or invalid in any particular portion of the United States, according to the interest of the parties in the patent or the invention patented.5 This judgment binds only the parties to the suit and those deriving title under them after such judgment has been rendered. § 724. Nature and Effect of the Proceedings for a Repeal in the Interest of Prior Inventors. The power conferred by this section upon the prior inventor and those claiming under him is broad enough to meet all after its denial to his assignor, and have the patent annulled and a new one granted to him, see Gay v. Cornell (1849), 1 Blatch. 506. That equity will not entertain a bill to vacate an extension after the extension has expired, but will dismiss it on demurrer, see Bourne v. Goodyear (1869), 9 Wall. 811. 5 That a proceeding under Sec. 4918, Rev. Stat., is a chancery proceeding and is regulated by chancery practice, as also under Sec. 739, see Liggett & Myers Tobacco Co. v. Miller (1880), 5 Bann. & A. 237; 1 McCrary, 31; 17 O. G. 798; Fed. Rep. 203. That a bill to annul a patent must be brought in the district where the defendant resides or is found, see Prentiss v. Ellsworth (1846), 27 O. G. 623. That in a suit for repeal under Sec. 4918, Rev. Stat., no provision exists for notice to parties outside the district in which the suit is brought, see Liggett & Myers Tobacco Co. v. Miller (1880), 1 Fed. Rep. 203; 17 O. G. 798; 1 McCrary, 31; 5 Bann. & A. 237. That in a suit for repeal under Sec. 4918, Rev. Stat., the defendant is not compelled to file a cross-bill in order to obtain affirmative relief, and if he does -30 VOL. II. so it may be dismissed without costs, see American Clay Bird Co. v. Ligowski Clay Pigeon Co. (1887), 31 Fed. Rep. 466; Lockwood v. Cleveland (1881), 6 Fed. Rep. 721. That in a suit to annul an interfering patent the court may defeat the defend. ant's patent, although the plaintiff's patent is void, being anticipated by his own prior patents, see American Clay Bird Co. v. Ligowski Clay Pigeon Co. (1887), 31 Fed. Rep. 466. That a delay of five years in instituting proceedings to annul a patent tends to show a want of good faith in the petitioner, see Sawyer v. Massey (1885), 25 Fed. Rep. 144. That on a bill to repeal a patent in the Federal Courts, the preliminary statement as to the date of the invention on an interference in the Patent Office does not bind the assignees of the inventor, see Union Paper Bag Mach. Co. v. Crane (1874), Holmes, 429; 6 0. G. 801; 1 Bann. & A. 494. 6 That the judgment on a bill to annul an interfering patent binds only the parties to the suit and their subsequent assignees, see Mowry v. Whitney (1871), 14 Wall. 434; 1 O. G. 499; 5 Fisher, 513. conceivable emergencies. Whenever the rights of one person are derived from the lawful patent of the first inventor, and are in any manner limited or violated by another person under cover of the unlawful patent of a subsequent inventor, redress commensurate with the injury may be obtained and the unlawful patent declared void so far as it affects the antagonistic interests of the contending parties.2 The judgment of repeal may embrace the whole patent, as in cases where its entire patentable subject-matter was first produced by the inventive genius of the adverse claimant, or may include only the particular inventions which are covered by the rival patent and are found by the court to have been first invented by the rival patentee. Both patents are equally before the court for judgment and either may be repealed, so far as the contending parties are concerned, to any extent which may be necessary in order to secure to the party claiming under the prior inventor of each art or instrument the unqualified enjoyment of the monopoly to which he is entitled. § 724. 1 That in proceedings to annul under Sec. 4918, the courts are not bound by the decisions of the Patent Office, see Holliday v. Pickhardt (1887), 24 Blatch. 201; 29 Fed. Rep. 853; Minneapolis Harvester Works v. M'Cormick Harvesting Mach. Co. (1886), 28 Fed. Rep. 565; 37 O. G. 566; Hubel v. Tucker (1885), 23 Blatch. 297; 24 Fed. Rep. 701. 2 That under Sec. 58, act of 1870, the court may order the defeated patent to be delivered to the clerk and cancelled by him, and sent to the Secretary of the Interior with a copy of the decree, see Sturges v. Van Hagen (1873), 6 Fisher, 572; 4 O. G. 579. That where the court annuls a patent it may enjoin the patentee from instituting actions thereon, see Sawyer v. Massey (1885), 25 Fed. Rep. 144. That a junior patentee cannot be enjoined from suing under his patent on the motion of the prior patentee, pending a suit by the prior patentee to cancel the junior patent, when the In this proceeding the junior patent was granted after a full hearing in the Patent Office, on an interference with the prior patentee, see Asbestos Felting Co. v. Salamander Felting Co. (1876), 10 O. G. 828; 13 Blatch. 453. That Sec. 4918, Rev. Stat., allows the court to declare either or both patents void, in whole or in part, see Foster v. Lindsay (1875), 8 O. G. 1032 ; 3 Dillon, 126; 2 Bann. & A. 172; Foster v. Lindsay (1874), 7 O. G. 514; 1 Bann. & A. 605. That on a bill to annul, the court can declare either patent void, but not both, see American Clay Bird Co. v. Ligowski Clay Pigeon Co. (1887), 31 Fed. Rep. 466. That on a petition to annul, if it appears that one patentee abandoned his experiments, and after the issue of a patent to his rival renewed them and patented the invention, the rival patent will be sustained, see Hutchinson v. Everett (1885), 35 O. G. 1110; 26 Fed. Rep. 531. patentability of the inventions described and claimed in the antagonistic patents is not in issue. Priority of invention is the only point in controversy, and judgment, therefore, is awarded to the party who derives his title from the first inventor. SECTION II. OF THE REPEAL OF PATENTS IN THE INTEREST OF THE PUBLIC. § 725. Proceedings for a Repeal in the Interest of the Public Rest upon Fundamental Principles of Sovereignty, not on mere Legislative Acts. Whether the public, as a collective body, can institute proceedings for the repeal of letters-patent, under the present provisions of our law, has been a matter of dispute. Adhering to the theory that such proceedings can be authorized only by express acts of legislation, some courts have held that in the absence of a statute conferring this power on the people it did not exist. In obedience to this doctrine it has been That the only issues on a petition to annul an interfering patent are interference and priority, see Sawyer v. Massey (1885), 25 Fed. Rep. 144; Pentlarge v. Pentlarge (1884), 22 Blatch. 10; 19 Fed. Rep. 817; contra, Foster v. Lindsay (1875), 8 O. G. 1032; 2 Bann. & A. 172; 3 Dillon, 126; Foster v. Lindsay (1874), 7 O. G. 514; 1 Bann. & A. 605. That on a petition to annul an interfering patent, under Sec. 4918, the defendant cannot set up by plea as a defence, if holding under a later patent, that the invention was in use before the plaintiff's inventive act, see Pentlarge v. Pentlarge (1884), 22 Blatch. 10; 19 Fed. Rep. 817. That on proceedings for repeal under Sec. 4918, Rev. Stat., a plea that the plaintiff's patent is void for want of novelty is improper, see Pentlarge v. Pentlarge (1884), 22 Fed. Rep. 412; 22 Blatch. 120. That when on a suit to repeal under Sec. 4918, Rev. Stat., the defendant pleads that the plaintiff's patent is void for want of novelty, and this plea is overruled as improper, and the plea is amended, the defendant cannot set up the same matter in his answer, it being res adjudicata in that case, see Pentlarge v. Pentlarge (1884), 22 Blatch. 120; 22 Fed. Rep. 412. That where, after an interference judgment, patents are granted to both parties, and the party to whom priority was adjudged institutes proceedings to annul the other patent, the latter patentee is not estopped to deny that the invention was new and patentable, see Holliday v. Pickhardt (1887), 29 Fed. Rep. 853; 24 Blatch. 201. decided, in two cases of considerable prominence, that the acts of 1790 and 1793 bestowed this privilege upon the public; that the act of 1836, while enlarging the defences permitted to infringers, withdrew the public privilege of a repeal; and that as subsequent statutes have not revived it, no such privilege now exists. But in the light of principle, as well § 725.1 In Attorney-General v. Rumford Chemical Works (1876), 9 O. G. 1062, Shepley, J.: (1066), "This leads us to the consideration of the protection afforded by the provisions of the patent acts to the rights of the general public, and to the history of the legislation upon that branch of the subject. The fifth section of the act of 1790, the first act of Congress in relation to this subject (1 Stat. at Large, 111), provided a form and mode of proceeding to repeal a patent obtained surreptitiously, by or upon false suggestion,' upon complaint made under oath before the judge of the district court where the defendant resided, and motion within a year after the issuing of the patent, but not afterward. The patent issued under this act without any oath of the applicant and any previous examination, and want of novelty and originality are not included in the list of defences authorized by the sixth section. The act of 1793 extended the time of limitation for commencing proceedings to repeal the patent to three years, and enlarged the defences in actions for infringement, opening the defence for want of novelty and originality. These provisions clearly show that it was deemed necessary that authority for proceedings to repeal letters-patent should be conferred by statute.... (1067) These acts of 1790 and 1793, including these provisions conferring jurisdiction upon the Federal courts over proceedings for the repeal of letters-patent, were repealed by the act of 1836. That act was substan tially re-enacted and codified by the act of 1870, and in the Revised Statutes of 1874. The act of 1836 contained no provision authorizing any proceeding to repeal letters-patent upon the ground that they were obtained 'surreptitiously, by or upon false suggestion,' but the sixteenth section provided a remedy in the case of conflicting patents, and for a repeal of the one which the court should adjudge had been improvidently issued. This takes the place of the remedy to which, in case of conflicting grants, the subject is entitled as matter of right in England. For the protection of the general public, in place of the provision for a proceeding in the nature of a scire facias to repeal the patent, to be instituted within three years, as provided in the act of 1793, it sought to provide safeguards against the issue of letters-patent upon false suggestion, and ample security against any injury to the citizen, to whom it opened every possible defence against injury resulting from any mistake or oversight of the Commissioner in issuing the patent. In fact, every defence against a patent that can well be imagined was left open to the citizen whose interests were affected by it, excepting only the one which, in Whitney v. Mowry, the Supreme Court decided was not open, the question of fraud upon the government in obtaining the grant. To guard against such a fraud it provided for the examination by the Examiner and for a Commissioner and the subsequent proceedings herein before stated, it being made the duty of the Examiner and the Commissioner to protect the rights of the public. The jurisdiction conferred by acts of 1790 |