to the newly-discovered evidence of the prior knowledge and use of machines like that patented. The averments as to this are full and complete, and notice of the names and places of residence of the persons alleged to have had such knowledge and to have seen the use is given with sufficient particularity. If the averments in this respect were true, and the newly-discovered evidence was such as could be made available by bill of review, there can be no doubt that the original decree was wrong.

It is contended, however, that the evidence could not be used because it related to matters which existed at and prior to the former hearing, and by the use of proper diligence it might have been found and produced at that time, and also because the evidence was cumulative only. The bill avers that due diligence was used to find the evidence, but without success. This is one of the facts which, for the purposes of this hearing, we are to consider as proved by the evidence submitted below, but not sent here.

There is no universal or absolute rule which prohibits the courts from allowing the introduction of newly-discovered evidence under a bill of review to prove facts which were in issue on the former hearing.

But the allowance of it is not a matter of right in the party, but of sound discretion in the court, to be exercised cautiously and sparingly, and only under circumstances which demonstrate it to be indispensable to the merits and justice of the cause.

Such was the language of Mr. Justice Story in Wood v. Mann (2 Sumn., 334), and he states the rule none too strongly. In the absence of the evidence produced below we are to presume that this case was brought within this requirement. In the original answer a prior invention of one Young was set up, which, it was said, was like that of Craig, and the public use of this machine with the consent and allowance of Young in Mobile and Memphis. The new matter alleged in the bill of review relates to other machines used in other places. In legal effect the bill of review gave new notice of prior knowledge and use by different persons and in different places from those set out in the answer. That a proper case was made for the admission of the evidence may fairly be inferred from the fact that, without submitting that question to the court, all parties went to a hearing, by consent, upon the merits of the case as presented under the original bill and the bill of review.

It is also contended that, even though the review was right, it was wrong to dismiss the original bill on the first hearing and without an answer on file giving notice of the new matter-that is to say, of the names and places of residence of the persons alleged to have been discovered, who had knowledge of the prior invention and prior use-as required by section 4920 of the Revised Statutes. It is a sufficient answer to this to say that the cause was submitted by the parties "on the original bill, answer, and replication, and the bill of review, answer, and replication thereto, and the proofs, as well those used on the original bill, answer, and replication as those taken and filed with

the bill of review, answer, and reply." This was clearly a submission of the whole case on the merits after a review granted. The bill of review contained all the notice to Craig that he could demand, and, as it was filed more than thirty days before the final submission of the cause, all the requirements of section 4920 Revised Statutes were substantially complied with.

Decree affirmed.

[United States Circuit Court-Northern District of New York.]

HAMILTON V. KINGSBURY ET AL.

Decided November 7, 1879.

17 O. G., 147.

1. A license exclusive within a limited territory as to all the privileges secured by the patent, with the single reservation of a right in the grantor to make the invention, fails pro tanto to be a conveyance of the exclusive right within the meaning of the law of 1836, providing for the record of such conveyances in the Patent Office.

2. Not being exclusive, its record in the Patent Office is not such notice to purchasers that they can safely rely upon the record as showing the whole transaction between the parties to the instrument in respect to its subject-matter.

3. Hence, certain unrecorded written agreements contemporaneous with the license, and like it not necessary to be placed of record, were held binding upon the assignees of the license, although they were bona fide purchasers without actual notice of any agreement between licenser and licensee other than the license itself.

Mr. A. C. Cox for plaintiff.

Mr. W. F. Cogswell and Mr. Geo. R. Selden for defendants.

BLATCHFORD, J.:

This suit is brought on letters patent granted to Palmer Hamilton, December 5, 1865, for "improvements in saw-mills." The bill alleges infringement by the defendants by making, constructing, using, and vending to others to be used machines containing the patented invention. Palmer Hamilton, by an instrument in writing, executed August 1, 1866, conveyed to Milton A. Hamilton and to his legal representatives all the right, title, and interest which he, the said Palmer Hamilton, had in the patented invention, "as it was or might be applied to muley or single upright mill-saws." This instrument was recorded in the Patent Office August 27, 1866.

By an instrument in writing, executed August 27, 1866, and recorded in the Patent Office October 15, 1866, and which recited the said conveyance from Palmer Hamilton to Milton A. Hamilton as being one of all the right, title, and interest of Palmer Hamilton in and to the invention "as it is or may be applied to muley or single upright mill-saws," Milton A. Hamilton conveyed to Clinton A. Lombard and John Thomp. son, as copartners under the name and style of Lombard & Thompson,

"and to their legal representatives, the full and exclusive right to use and to sell to be used the said saw-hangings" (the invention patented being stated in said conveyance to be known as "Hamilton's oscillating and reciprocating saw-hangings"), "as they are or may be applied to muley or single upright mill-saws, as secured by the said letters patent, for, to, and in the State of New York, I excepting and reserving the right to manufacture the said invention for myself and legal representatives." On the same 27th of August, 1866, and at the same time, a written agreement was executed between Milton A. Hamilton of the first part and Lombard & Thompson, as copartners under the name of Lombard & Thompson, of the second part, which contained the following language:

The party of the first part, in consideration of the conditions hereinafter named to be kept and performed by the party of the second part, hereby agrees to furnish as many sets of "Hamilton's patent oscillating and reciprocating saw-hangings" as they may use or sell to be used in the State of New York, as they are or may be applied to single or upright muley mill-saws, as secured by letters patent from the United States, the said party of the second part having the right to use and sell the said patent sawhangings according to a deed of assignment bearing even date herewith, upon which this article is based, and to deliver the said machinery. The said party of the second part agrees to pay to the party of the first part sums of money for the said machinery according to the following prices and rates. And the said party

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of the second part further agrees that they will not manufacture the said machinery or its parts so long as they are supplied by the said party of the first part, as above specified, or by his legal representatives; and, further, it is understood and agreed that the said second party is not to sell the said machinery to be used in any other than the State of New York.

This instrument was never recorded in the Patent Office. On the same 27th of August, 1866, and at the same time, Milton A. Hamilton executed and delivered to Lombard & Thompson an instrument in writing, which recited that they had purchased and paid him for certain rights in "Hamilton's patent oscillating and reciprocating saw-hangings," and referred to the said patent, and then proceeded thus:

And whereas I, Milton A. Hamilton, have also given them, the said Lombard & Thompson, a certain contract, bearing even date herewith, for the supply of the said saw-hangings, I reserving for myself and legal representatives the right to manufacture the said hangings, now, this indenture witnesseth that in case I or my legal representatives are unable from any circumstance or emergency to furnish the said Lombard & Thompson saw-hangings, according to the above-mentioned contract, I, for myself and legal representatives, agree that the said Lombard & Thompson shall have the right to manufacture the said hangings for use in the State of New York. The purport of this article is to secure to them the said machinery against failure on my part to fulfill the conditions of the said contract, which, being fulfilled, this is to be null and void; otherwise, to be in effect.

This instrument was never recorded in the Patent Office.

Lombard & Thompson, by an instrument in writing executed April 29, 1868, and recorded in the Patent Office August 7, 1868, conveyed to Robert P. Russell, Montgomery Reese, and the firm of Strong & Woodbury, in equal shares of one-third each, "all the right, title, and interest

which we have in the said invention, as secured to us by said letters patent, for, to, and in the State of New York." Reese, by an instrument in writing executed July 18, 1868, and recorded in the Patent Office August 7, 1868, conveyed to Russell and the firm of Strong & Woodbury, in equal shares of one-half each, "all the right, title, and interest which I have in the said invention, as secured to me by said letters patent, for, to, and in the State of New York." Strong & Woodbury, by an instrument in writing executed December 10, 1869, conveyed to the defendants in this suit "all our right, title, and interest therein, as secured by the letters patent and assignment before mentioned, which consists of the right, title, and interest of the said Robert P. Russell, Henry A. Strong, and Edward F. Woodbury, to the right for the whole State of New York, except one half interest held by Robert P. Russell, and the counties of Cayuga and Franklin, previously assigned to John Busby and Sidney A. Paddock, respectively."

The bill alleges that Milton A. Hamilton, by an instrument dated March 20, 1867, and duly recorded in the Patent Office, conveyed to Palmer Hamilton all his right, title, and interest in and to the said patent and invention; and that the recorded conveyance from Milton A. Hamilton to Lombard & Thompson was not intended by the parties thereto to convey to Lombard & Thompson any right to manufacture said invention, and that the practical construction placed upon said instrument by the acts of said parties at the time of the execution thereof and subsequently was that the sole right to manufacture said invention remained in said Hamilton. It also sets forth the two unrecorded instruments of August 27, 1866, and avers that ever since the three instruments were executed the said Milton A. Hamilton and his assignee have been at all times and now are ready and willing to furnish such saw-hangings to said Lombard & Thompson and to their assigns, and did so furnish such saw-hangings to said Lombard & Thompson, and that the defendants have not applied to the said Milton A. Hamilton or to his assigns to be furnished with such saw-hangings, but have assumed to manufacture the same themselves; that Palmer Hamilton, by an instrument dated April 18, 1873, and recorded in the Patent Office, assigned to the plaintiff all the right, title, and interest of him, the said Palmer Hamilton, in and to said invention, and also all rights of action for infringements of said patent which had accrued to him, the said Palmer Hamilton; and that he is the sole owner of said invention.

The defendants have filed a plea to the whole bill. It sets up the conveyance of August 1, 1866, from Palmer Hamilton to Milton A. Hamilton; the recorded conveyance of August 27, 1866, from Milton A. Hamilton to Lombard & Thompson; the conveyance of April 29, 1868, from Lombard & Thompson to Russell, Reese, and Strong & Woodbury; the conveyance of July 15, 1868, from Reese to Russell and Strong & Woodbury, and the conveyance of December 10, 1869, from Strong & Woodbury to the defendants. It then avers that the defendants "never

made, constructed, or used, or vended to others to be used, any machine or machines containing the invention of said Palmer Hamilton, described in the letters patent in said bill of complaint mentioned, or any part of such invention, prior to the time of the execution of the said assignment from Strong & Woodbury to them, as above mentioned, excepting that within a year prior to the time of said assignment they manufactured for said Strong & Woodbury, and at their request, a small number or said machines (the exact number they cannot state), and that since the time of the execution of the said assignment these defendants have neither made, constructed, nor used, or vended to others to be used, any machine or machines containing the said invention or any part thereof, excepting that they have made, constructed, and vended to others to be used muley and single upright mill-saws containing said invention, or some part thereof, within the State of New York, and not elsewhere, and not in the counties of Cayuga and Franklin, in said State, as they lawfully might in pursuance of the authority given them by virtue of the several assignments above mentioned."

The plea further alleges that the instrument of March 20, 1867, from Milton A. Hamilton to Palmer Hamilton, was not recorded in the Patent Office until after the time when the defendants made the purchase from Strong & Woodbury and received from them the assignment above mentioned; that the defendants never had any notice of such assignment from Milton A. Hamilton to Palmer Hamilton until after the commencement of this suit; that the defendants made the purchase from Strong & Woodbury, and received from them the assignment above mentioned, and paid them therefor, in good faith, the consideration of one thousand dollars therein expressed, without any knowledge or notice that any such assignment as that from Milton A. Hamilton, above mentioned, then or ever existed, and in the full belief that the said assignment from Strong & Woodbury gave to the defendants a perfect title to such interest in said patent as it purported to convey. The plea further alleges that the defendants have no knowledge or information as to what was intended by the parties to the assignment from Milton A. Hamilton to Lombard & Thompson, save such as is derived from the language of said assignment, and no knowledge or information of the practical construction put upon said assignment by the acts of the parties at or subsequent to the time of the execution thereof, save such as is derived from the bill, and no knowledge or information, save such as is derived from the bill, that Milton A. Hamilton ever entered into two or any contracts, as mentioned in the bill, or any other contract of any kind, except the assignment to Lombard & Thompson, and that they never heard of said two contracts, or had any notice thereof, until they learned of the mention thereof in the bill.

The plaintiff put in a replication to the plea, and proofs have been taken, and the case has been heard thereon. A suit brought by the same plaintiff against the same defendants on the same patent was heard