EXAMINERS-IN-CHIEF. See Appeals, 1, 2, 6, 7; Combinations, 1, 8; Commissioner of Patents; Examiners, 1; Interferences, 6, 4, 15; Motions, 2; Practice in the Patent Office, 19, 23.
1. Under the statute and rules the only question presented to the Board of Exami- ners-in-Chief on an appeal from the Examiner of Interferences is which of the parties to the controversy is the prior inventor. Brown v. La Dow, 199.
2. The Board, by undertaking in its decision to show that the inventions declared to be in interference were not the same, and treating the issue between the parties as a "fictitious one," and rendering a decision on such alleged fictitious issue, exceeded its jurisdiction. Id.
3. The question of interference had been twice before the Commissioner on motion and each time decided affirmatively, and the Board was guilty of an im- propriety in thus reopening the question in their decision. Id.
4. If the Board, upon an examination of a case, is of the opinion that the devices do not interfere, it is its duty, under Rule 134, to call attention to that fact by a statement annexed to its decision, not a part of it. Id.
Exhibits introduced by a party without needful explanation do not deserve and will not receive much consideration. *Miller et al. v. Smith et al., 643.
EX PARTE CASES. See Practice in the Patent Office, 7, 8, 9, 10, 11, 12; Interferences, 8. The provisions of the rules which authorize the Commissioner to receive the affi- davits of third persons for certain purposes in ex parte cases are consistent with the law. Hedges v. Daniels, 64.
EXPENSES OF SUIT. See Costs of Suit.
EXPERIMENTS. See Abandoned Experiments.
1. A rude machine constructed for the purpose of experiment, and subsequently broken up, deserted, and abandoned, cannot be regarded as such a perfected invention as will defeat a patent. "Gottfried et al. v. The Phillip Best Brewing Company et al., 319.
2. A machine which, whether entirely satisfactory or not, has been run in the ordi- nary course of business for twenty or thirty years, and which is patented pre- cisely as it was used, cannot properly be called an experimental machine. *Perkins v. Nashua Card and Glazed Paper Company, 491.
3. Experimental use occurring more than two years prior to the filing of the ap- plication is not fatal to a patent, even though the use was for the purpose of satisfying others as to its utility. *Sinclair et al. v. Backus, 529.
EXTENSIONS. See Construction of Statutes, 6.
FICTITIOUS ISSUE. See Examiners-in-Chief, 2.
FIRST AND ORIGINAL INVENTOR. See Original Inventor; Practice in the Courts, 21. FOREIGNERS. See Bar to a Patent, 1; Citizenship, 1.
FOREIGN INVENTIONS. See Date of Invention, 1, 2, 3, 4; Interferences, 2.
1. If an application is executed in a foreign country, and states the applicant to be a resident of such foreign country, the presumption is that the invention was made abroad, and in such case, as also in case the applicant admits that the invention was made abroad, the presumption is that the date of the filing of the application is the earliest date which can be given to the foreign inven- tion in the Patent Office. This presumption must be overcome by an affidavit showing something more than mere foreign invention in order to warrant a declaration of interference. Thomas v. Reese, 12.
2. The law makes no distinction between citizens and foreigners in the Patent Office, but it does make a wide distinction between inventions made in the United States and those made in a foreign country, whether made by citizens of the United States or by foreigners. Ex parte Nagel et al., 17.
FOREIGN INVENTIONS-Continued.
3. An application executed in a foreign country, and showing the applicant to be a citizen or resident of a foreign country, is presumptive proof that the inven- tion was made in a foreign country; but it is not conclusive proof of that fact either to determine or to prevent an interference. Id.
FOREIGN LAWS AND PUBLICATIONS.
Proof made by a party to an interference that he published the invention as his own in a printed publication in a foreign country before the invention was made by his opponent in the United States will defeat the application of his opponent. Whether it will defeat his own is still a question in the Patent Office. Thomas v. Reese, 12.
FOREIGN MAGISTRATES. See Interference, 8.
FOREIGN PATENTS. See Construction of Statutes, 1; English Specifications and Pat- ents, 1, 2; Presumption, 1, 2; Priority of Invention, 1.
1. A foreign patent granted after the patentee files his American application, but before he obtains his American patent, does not limit the term of the American patent. Ex parte Mann, 57.
2. A foreign patent granted on the day on which an American application is filed is not, in legal intendment, granted before the American application is filed, and does not restrict the term of the American patent. Id.
3. When a foreign patent is set up to defeat a United States patent to a different inventor the manifest intention of the law is that the foreign patent shall ap- ply only as of a date when the invention was published or made accessible to the public, and not, as in the case of a patent obtained by the foreign patentee as of an earlier date from which the inventor may have enjoyed the benefit of the foreign patent as a patent. *De Florez et al. v. Raynolds et al., 289. 4. Where M. and C. jointly took out foreign patents and M. sole subsequently made application for an American patent, which was granted, the testimony of C. that he is a joint inventor with M., controverted by that of M., will not serve to invalidate the patent in the absence of proof of admissions by the lat- ter of joint invention in either of the foreign applications. Hoe et al. v. Cott- rell et al., 543.
FORFEITURE. See Designs, 3; Public Use and Sale, 1.
FUNCTION. See Claims, 27; Combination, 14; Infringement, 10.
GENERAL ISSUE. See Practice in the Courts.
GENERIC CLAIMS. See Claims, 1, 2, 8, 10, 13, 15, 23; Combinations, 9; Interferences, 13; Invention, 5; Patents, 1; Practice in the Patent Office, 22.
1. The term "generic," in its application to inventions, has not an absolute, but only a relative, signification. An invention which is generic in its relation to a class of inventions which it embraces as species may itself be specific in its relation to a broader class in which it is included. The possible scope of generic claims is constantly narrowing with the progress of the useful arts. Ex parte Ewart, 78.
2. A genus is defined as “a precisely-defined and exactly-divided class,” or as assemblage of species possessing certain characteristics in common." In a claim, therefore, for a genus those common characteristics must be distinctly pointed out, and but one genus can be claimed in the same application. Ex parte Kent, 115.
3. A claim for "the use of iron sponge for the decarburization of the bath in the manufacture of steel by the Siemens-Martin process" is generic, and a specific claim for the use in that process of iron sponge of a high standard of purity must be subordinate to such generic claim. Slade v. Blair, 25.
INFRINGEMENT. See Assignments, 9; Circuit Courts, 1; Combinations, 10, 17; Dam- ages and Profits, 5, 7, 13, 14, 17; Defenses, 2; Equivalents, 5; Injunction, 17; Liability, 1; Married Women, 2; Particular Patents, 15, 18.
1. The plaintiff manufactured and sold the patented bale-ties, consisting of bands and buckles having stamped upon them "licensed to use once only." The defendants purchased second-hand these buckles and bands, and, adding new bands or splicing the old bands, sold them: Held that such sale on the part of the defendants was an infringement of the patents. "The American Cotton Tie Supply Company v. Bullard et al., 273.
2. When the thing patented is an entirety, consisting of a single device or combi- nation of old elements incapable of division or separate use, the respondent cannot escape the charge of infringement by alleging or proving that a part of the entire invention is found in one prior patent, printed publication, or ma- cnine, and another part in another prior exhibit, and a third part in another, and from the three or more draw the conclusion that the patentee is not the original and first inventor of the patented improvement. * Imhaeuser v. Buerk,
3. The burden of proving infringement is upon the plaintiff or complainant, and never shifts if the charge is denied in the plea or answer. * Id.
4. Sufficient proof of infringement may be derived from the comparison of that which is used by the defendant with the description of the invention given in the specification of the patent which constitutes the foundation of the suit. * Id.
5. An obvious change of construction not affecting the combination in its essence- a formal or colorable variation—will not avoid infringement. * Miller's Falls Company v. Backus, 386.
6. The use of a process which omits one of the essential parts of that patented, and does not employ a chemical equivalent in its place, is not an infringement. * Dittmar v. Rix et al., 415.
7. Where some parts of the combination are new, and those parts are taken and used in the same manner, but with different elements for the rest of the com- bination patented, a part of the invention is taken, although the whole is not, and it is an infringement to that extent. * Sharp v. Tifft, 483.
8. Where the only new idea in common in two.patents is carried out by a con- struction and mode of operation substantially different in each, machines made according to the later patent do not infringe the earlier one. Hydraulic Elevator Manufacturing Company et al. v. Stebins, 498.
9. The clear purport of the provisions of the Revised Statutes relative to suits for infringement of patents is that such suits must be brought in the name of the real and beneficial party in interest. *Goldsmith et al. v. American Paper Collar Company, 572.
10. The mere fact that the device of the defendants has a function additional to that accomplished by the patented invention will not justify the defendants in the use of the latter without liability. *Strobridge v. Lindsey et al.,
11. Where the office of a reissue was to secure a broad claim the complainant in a suit upon such claim must be held thereto, even though the real invention is not secured thereby. * Wisner v. Grant et al., 573.
12. Where the device sold by the defendants is capable of use independently of a feature necessary to the plaintiff's apparatus and it does not appear that the defendants intended that such feature should be added to their device, the case
cannot be said to come within that class of cases where the seller of parts of a patented combination is liable for infringement if there be a concert of action proved or legally inferable between him and others who supply other parts necessary to the complete combination. * Maynard v. Pawling et al., 586. 13. If to the eye of the ordinary purchaser the designs are substantially the same, if the resemblance is such as to deceive such an observer and sufficient to induce him to purchase one, supposing it to be the other, the one first patented is in- fringed by the other. * Miller et al. v. Smith et al., 643.
14. In determining the matter of infringement attention should be paid to such por- tions as really do the work, so as not to give undue importance to parts used only as a convenient mode of construction. *Holly v. Vergennes Machine Com- pany, 659.
15. So where the specification speaks of a part or feature of the patented device as being "an important feature of the invention" and makes it a part of the claim, the omission of such feature from defendant's device saves him from infring- ing the patent. * Matthews v. Schoneberger et al., 697.
INJUNCTION. See Damages and Profits, 17; Licenses, 10.
1. The defendant having been enjoined from using the patented improvements, ex- cept the identical wires and cables then used by it, and from authorizing others, "either in whole or in part, or alone or in conjunction or in connection with the defendant," from using any such wires or cables, an agreement under which the defendant furnished a wire embodying the invention contained in a cable which had been in use by the defendant long before, and which was in actual use by it at the time of the service of the injunction, was a violation of the injunction. Colgate v. The Gold and Stock Telegraph Company, 256.
2. An agreement involving the furnishing of the infringing device, although made before service of the injunction, if executed after such service, is a violation thereof. Id.
3. An injunction having issued against the defendant restraining it from using the invention, except the identical wires or cables used by it, "and also from sell- ing, transferring, lending, leasing, or parting with, in any manner, any wire or cable embodying said invention, or conferring upon any other person, persons, or corporation, either in whole or in part, or alone or in conjunction or con- nection with the defendant, any use or right to use any such wires or cable," an agreement giving to a certain corporation the right to use certain cables embodying the invention, although claimed to have been a mere confirmation or recognition of a pre-existing agreement with the predecessors of the new corporation, is a violation of the injunction. Colgate v. The Western Union Telegraph Company, 258.
4. If the existing contract or agreement applied to the new corporation, it did so without any new arrangement, and if a new agreement was necessary to bring in the new party and confer on it the right to use the cables, the new agree- ment was a violation of the injunction. *Id.
5. The power to prevent by injunction the violation of a right secured by a patent is conferred by section 4921 of the Revised Statutse, irrespective of any right in the given suit to recover profits or damages. Colgate v. The International Ocean Telegraph Company, 260.
6. The words "perpetual injunction" in a decree mean only for the life of the pat- De Florez et al. v. Raynolds et al., 289.
7. An injunction may be granted restraining all persons, whether officers of a cor- poration or not, who are aiding in the promotion of the infringing sale and use, whether such persons are or are not liable for profits or damages. American Cotton Tie Supply Company v. McCready et al., 299.
8. A steamship company and its officers engaged in transporting infringing and
unlicensed articles, with due notice from the owners of the patents, act in the capacity of agents and servants of the infringers in promoting and effecting the sale and use. *Id.
9. The defendants refusing to disclose the names of the infringing shippers, the plaintiff is without remedy by injunction in respect to the infringing ties which the defendants' company transports in its vessels unless he can obtain an in- junction against the defendants, which he clearly ought to have. *Id. 10. Under section 4921 of the Revised Statutes the authority of the United States circuit court in a case arising under the patent laws of which it has jurisdiction to grant an injunction, according to the course and principles of courts of equity, to prevent the violation of any right secured by a patent, is entirely independent of the award of any other relief in the same suit. *Id. 11. The conduct of the plaintiff and its proceedings heretofore with respect to its litigations and to Dittmar do not appear to have been such as would deprive the plaintiff of the right to a preliminary injunction against Dittmar and the Dittmar Powder Manufacturing Company, and the same is granted. * The Atlantic Giant Powder Company v. The Dittmar Powder Manufacturing Company et al., 405.
12. An injunction should never be allowed to operate oppressively upon any one, but be used for the purpose of securing the rights of the complainant in the case pending the litigation without unnecessarily injuring the other party. *Kirby Bung Manufacturing Company v. White et al., 418.
13. Under the State laws of Missouri there is but one form of a restraining order. If an injunction is asked for provisionally, it must issue as an injunction sim- pliciter. *Id.
14. In the United States circuit courts restraining orders vary according to the cir- cumstances of the case. Thus, in some cases, patent as well as others, there may be such circumstances as require an injunction simpliciter; but ordinarily a bond and order for accounting suffices, and sometimes simply an order for an accounting. Id.
15. For the purposes of a provisional injunction under the patent law, infringement having been proved, two things, or either of two things, may exist-to wit, a final decree sustaining and upholding the validity of the patent after full con- sideration of the matter or proof that the patent went into use undisputed for a sufficient time to raise a prima facie case in the complainant's favor. Id. 16. A.mere decree entered pro forma on the merits is not sufficient of itself to require other United States circuit courts to grant a provisional injunction. *Id. 17. On motion for a preliminary injunction the complainant should set out and describe what the defendant is doing or using that constitutes the infringement charged, in order that the court may determine whether there is such infringe- ment as to warrant the granting of the motion. A general affidavit amounting to no more than a verification of the original bill will not serve this purpose, being but the opinion of the complainant that the defendant infringes—a fact of which the court should be the judge. *Id.
18. Where, on an interference proceeding instituted in the Patent Office between an applicant and a prior patentee, judgment of priority has been awarded the ap- plicant and no appeal taken, and a patent issued to him, an injunction pen- dente lite, should be granted against the unsuccessful party to the interference in the absence of other defense than his prior patent. * Greenwood v. Bracher,
19. It appearing that the defendant had not acted in good faith, an injunction was granted contingent upon the furnishing of bond with security to account for profits and to pay amount of any final decree. *Id.
20. A preliminary injunction will not be refused by reason of the fact that on a suit
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