[United States Circuit Court-Eastern District of Missouri.] LIGGETT & MYERS TOBACCO COMPANY v. MILLER ET AL. Decided March Term, 1880. 17 O. G., 798. 1. The proceedings contemplated by section 4918 of the Revised Statutes contemplate an ordinary proceeding in chancery. It is an adversary proceeding, in which the party must file the usual bill in chancery and issue the subpœna required by the chancery practice. 2. No law of the United States makes provision for the service of any process outside of the district, and section 4918 does not permit the circuit courts, by the issuing of a notice of the filing of a bill, to declare an interfering patent invalid, or by any other process to bring before it citizens from any and every part of the United States to have their rights adjudicated there. 3. Such section clearly contemplates that the ordinary course of equity proceedings shall be pursued, and that the judgment shall operate only so far as the jurisdiction of the court shall extend. Mr. S. S. Boyd for complainant. Messrs. Winchester & Beattie and Messrs. Hatch & Stern for defend. ants. ORAL REMARKS ON MOTION TO QUASH NOTICE. MCCRARY, J.-TREAT, J., sitting: This is a proceeding under section 4918 of the Revised Statutes of the United States touching interfering patents. I will read the section in full: 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. When this case was brought to our attention on the 2d day of February last we held that the proceeding contemplated by this section was an ordinary proceeding in chancery; that it was not a summary proceeding, but an adversary proceeding, in which the party must file the usual bill in chancery and issue the subpoena required by the chancery practice. In accordance with that ruling counsel amended his bill so as to make it conform to the chancery practice, and issued the usual subpoena, which has been served on the defendants who were within the district. He furthermore issued a notice, which has been served on parties outside of the district. The notice is as follows, addressed to the several defendants: Please take notice that we have this day filed an amended bill in equity in the bove-entitled cause, under section 4918 Revised Statutes of the United States, praying. among other things, that said court may adjudge and declare Reissue Letters Patent No. 8,060, granted the above-named defendants January 29, A. D. 1878, for improvement in finishing tobacco-plugs," to be utterly null and void. Respectfully, &c., LIGGETT & MYERS TOBACCO COMPANY. By SAML. S. BOYD, Solicitor. The question presented now is-and it is presented really for the second time—whether in such a case as this the complainant may depart from the usual chancery practice and issue a notice of this character to be served outside of the district. Counsel has very properly, I think, brought the matter again before us, for the reason that it was considered very hurriedly on the former occasion, and for the further reason that he ought to have the question presented in a shape to be reviewed by the Supreme Court. But on a reconsideration of the whole subject we have reached the same conclusion announced before. No law of the United States makes provision for the service of any process outside of the district. On the contrary, it is expressly provided by section 749 of the Revised Statutes that— Except in the cases provided in the next three sections, no person shall be arrested in one district for trial in another in any civil action before a circuit or district court, and except in the said cases and the cases provided by the preceding section, no civil suit shall be brought before either of said courts against an inhabitant of the United States, by any original process, in any other district than that of which he is an inhabitant or in which he is found at the time of serving the writ. This is not a case that comes within any exception to that rule. The exceptions are cases where the subject-matter is within the jurisdiction of the court. Now, I do not think that section 4918 is intended to change the practice so far as to permit this court by the issuing of a notice of this character or any other process to bring before it citizens from any and every part of the United States to have their rights adjudicated here. On the contrary, I think the section clearly contemplates that the ordinary course of equity proceedings shall be pursued, and that in many cases it will occur that only part of the persons interested will be brought before the court; for it provides that, you will observe, for a judgment which "may 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;" and further provides that "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." Now, the consequence of giving the statute the construction contended by counsel for the complainant would, it seems to me, be very serious. This is a case of interference. The owner of a patent residing in Maine. may, according to the construction contended for, file his bill, and, by issuing notice upon his own motion and having it served, bring before the court in that State parties residing in California. The parties interested in patents are often very numerous-they may be found in every State of the Union-and may be, by such a proceeding as this, brought to any particular place where a complainant may see fit to file his bill, if the construction claimed is sustained. We adhere to our former ruling; but, as the question is important, I am glad that counsel has presented it again, so that it may be reviewed in case the Supreme Court is called to pass upon the matter. The motion is sustained. [United States Circuit Court-Northern District of New York.] HOWES ET AL. v. MCNEAL. Decided January 15, 1880. 17 O. G., 799. 1. The file-wrapper, contents, and drawings of a patent set up in defense in an action for infringement are not competent to show that the invention described in such patent was made at the date of the oath; nor is it the proper way to show reduction to practice and use of the invention, so as to invalidate the patent sued upon. 2. When patents are cited as anticipating the plaintiffs' patent they speak only as public grants, and nothing from the Patent Office can be admitted in evidence of earlier dates than the patents themselves. 3. The preliminary papers filed in the Patent Office are merely the declaration of third persons, not parties to the suit or connected with them in interest or title, and are incompetent as hearsay and secondary. Mr. E. C. Sprague for the plaintiffs. Mr. W. S. Farwell for the defendant. BLATCHFORD, J.: In this case a motion is made by the defendant that copies of three file-wrappers, contents, and drawings in the matter of three several letters patent may be made a part of the defendant's exhibits and proofs with the same effect as if they had been put in evidence when said three letters patent were put in evidence, or that the suit be referred back to the Examiner with leave to the defendant to introduce such evidence, or that it be referred back for both parties to introduce further proofs, and that the interlocutory decree made herein be so far opened as that the defendant have leave to reargue the case after such new evidence shall have been received, with the same effect as though the same had never been argued. The object of introducing in evidence such file-wrappers is stated to be to show that the inventions described in the several patents were made at dates as early as the oaths to the specifications. That is not the proper way to show the reduction to practice and use of the inventions claimed to be prior, so as to invalidate the plaintiffs' patent. That must be shown by direct evidence of the construction and use of machines. Nothing from the Patent Office can be admitted in evidence of earlier dates than the patents. All such evidence would be hearsay and secondary. A patent is allowed by statute to speak as a public grant; but the preliminary papers are merely the declarations of third persons, not parties to this suit or connected with them in interest or title. The evidence is not competent. The point made that there is no invention in the second claim of the plaintiffs' patent was fully considered, and no ground is seen for changing the conclusion reached in the former decision in regard to such second claim. The claims of the patent were construed in the former decision, and they are not regarded as being open to the charge of ambiguity or uncertainty. It is not perceived that there is any foundation for the suggestion that the reissue was a fraudulent one. The question of the auxiliary air-inlets in the two machines was fully considered in the former decision, as was also the question of infringement. The plaintiffs' arrangement may, in some respects, have been improved upon, but there is no evidence to show that there was not sufficient utility in it to support a patent. Nothing is seen to change the view taken of the Nelson Platt patent in the former decision. The evidence does not establish the defense set up that the inventions covered by the reissue were abandoned to the public before the reissue was applied for. It may be added that if the three file-wrappers were competent as evidence no sufficient legal excuse is shown for not having sooner applied for leave to introduce them. The evidence adduced as to the Hiram Smith machine is not such as to warrant the reopening of the case. The motion is denied in all its branches. [United States Circuit Court-Northern District New York.] HAMILTON . KINGSBURY ET AL. Decided February 5, 1820. 17 O. G., 847. The expression "right, title, and interest," contained in an assignment from a person holding under the patentee, is enough to put the assignee on inquiry, and to charge him with notice of what such inquiry, if made of the first grantor, would have disclosed. Mr. George H. Lathrop for the plaintiff. Mr. William F. Cogswell for the defendants. BLATCHFORD, J. : When this case was before the court on the original bill and the plea thereto it was decided (14 O. G, 448) that the proper construction of the recorded conveyance of August 27, 1866, from Milton A. Hamilton to Lombard & Thompson was, that Lombard & Thompson acquired thereby the right to make, as well as the right to use and to sell to be used, the patented saw-hangings as they are or may be applied to muley or single upright mill-saws, for, to, and in the State of New York, such right to use and to sell to be used being exclusive, but the grantor reserving to himself a right to make in common with the grantees. The plea was allowed, and the plaintiff then amended the bill by setting forth two unrecorded instruments made August 27, 1866, one executed by Milton A. Hamilton of the one part and Lombard & Thompson of the other part, and the other executed by Milton A. Hamilton and then delivered to Lombard & Thompson. There was a plea to the amended bill and a replication to the plea, and proofs were taken thereon. The main point of the plea was that the defendants were bona fide purchasers under the said recorded conveyance of August 27, 1866, without notice of either of the said unrecorded instruments of that date. The case was submitted to the court on briefs, without oral argument (17 O. G., 147), and the court overruled the plea. The plaintiff contended that under the three instruments of August 27, 1866, taken together, Lombard & Thompson acquired no right to make the invention, except in a certain contingency, which had never happened; that the three instruments were contemporaneous and were all portions of the same transaction, and must all be read together to determine the intent of the parties to the transaction; that the three instruments were consistent with no intention other than the one set up in the bill-that is, an intention not to convey to Lombard & Thompson by the recorded conveyance any right to manufacture the invention; that, if the recorded conveyance gave to them the right to manufacture, the other two instruments had no meaning; and that the instruments were (1) a license, which in terms gave the licensees no power to manufacture; (2) an agreement by which the licenser agreed to furnish the hangings to the licensees at fixed prices, and the licensees agreed that they would not manufacture so long as the licenser kept his agreement; (3) a permission from the licenser to the licensees to manufacture in case the licenser failed to perform his agreement. The court held that the three instruments, taken together, must have the interpretation claimed for them by the plaintiff. The defendants contended that they were bona fide purchasers without notice of any instrument but the recorded conveyance of August 27, 1866, and that they were protected from any unrecorded agreement between Milton A. Hamilton and Lombard & Thompson in the absence of any actual notice thereof. On this question the court said: The recording act in force when the defendants took their conveyance from Strong & Woodbury, on the 10th of December, 1869, was section 11 of the act of July 4, 1836 (5 U. S. Stats. at Large, 121), which provided "that every patent shall be assignable in law, either as to the whole interest or any undivided part thereof, by any instrument in writing, which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and |