JURY TRIAL. See Chancery, 5; New Trials, 3.
LACHES. See Patents, 9.
LIABILITY. See Construction of Statutes, 10, 11, 12; Damages and Profits, 16.
1. If a few persons form themselves into a corporation under the Missouri statute,
the business of which is a necessary infringement of a patent, they cannot es-
cape individual liability for the acts done in the corporate name.
Stamping Company v. Quinby et al., 614.
LICENSEES. See Licenses.
1. The defendants claimed to be licensees under the patent by reason of a purchase
from one of the inventors of a machine used by him; but it appearing that
said machine was subsequently torn down and afterward rebuilt of substan-
tially a new construction, it was held that the identity of the original machine
was thereby destroyed, and the evidence did not disclose such facts as to show
that the patentees had expressly or impliedly given to the defendants license or
permission to use such machine. * Gottfried et al. v. The Phillip Best Brewing
Company et al., 319.
LICENSES. See Assignments; Licensees; Patents, 17.
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. *Hamilton v. Kingsbury et al., 246.
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. *Id.
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. Id.
4. The fact that the government granted to the defendant the exclusive right, for
a defined period of time, to lay submarine telegraphic cables and maintain
thereby telegraphic communication between the State of Florida and the Island
of Cuba, does not confer upon the defendant the right to use, without molesta-
tion, all subsequently patented inventions in the construction of said cables.
*Colgate v. The International Ocean Telegraph Company, 260.
5. A provision in the grant excluding the patentee from the privilege of laying
cables in a certain locality does not confer upon such parties as have that privi-
lege the right to use his invention. *Id.
6. Neither the Government, nor an agent of the Government, nor a private indi-
vidual, whether claiming to act under the authority of the Government or
otherwise, can use a patented improvement without the license of the patentee.
*Id.
7. The words "licensed to use once only," stamped upon each buckle, was notice
to every one who handled it that there was attached to it a restriction in the
shape of a license, and of a license to use only once. *The American Cotton Tie
Supply Company v. Bullard et al., 273.
8. Although it was the custom to purchase without tare bales of cotton, whereby
the bands and buckles were included in the transfer, such fact could not oper-
ate to defeat the express limitation imposed upon the use of the buckles, nor
to give to the transferee any better title than that obtained by the transferrer.
*Id.
9. The original license is fairly a license to have the buckle and the band confine
a bale until the consumer needs to confine the bale no longer, and a license for
no longer time. *Id.
10. Where, in his contract with the defendant, the plaintiff agreed that he would
sell no licenses for less than a certain price, and it conclusively appears that he
has broken such agreement in a way calculated to injure the defendant, a pre-
liminary injunction will be denied, notwithstanding the fact that the defendant
has admittedly failed to pay his stipulated royalty. *Crowell v. Parmenter, 601.
11. Where the decree in a former suit against one licensee of a patentee was for a
simple dismissal of the bill, a claim that the plaintiff is estopped from suing
another licensee will not be entertained. United States Stamping Company v.
Jewett et al., 704.
LIMITATION OF PATENT TERM.
1, 2.
See Duration of a Patent, 1; Foreign Patents,
1. Patents granted under the act of March 2, 1861, for inventions previously pat-
ented in a foreign country do not remain in force for seventeen years from their
date, but are limited to the term of seventeen years from the date of publica-
tion of such foreign patents. *De Florez et al. v. Raynolds et al., 289.
2. The actual date of issuing a patent (section 8, act of 1836) or the time when a
patent should "take date" was one thing, and the date from which its term
began to run was another. The latter need not necessarily be a date expressed
on the face of the patent, and under section 6 of the act of 1839 such date is
"the date of publication" of the foreign patent. *Id.
3. The provisions of the law limiting the duration of a United States patent for
an invention previously patented abroad to the same inventor are intended to
give to the patentee a specified term from the date at which his foreign patent
had effect as a foreign patent in his favor. *Id.
Quare whether, when a patentee has made an original invention which is confessedly
an improvement upon all old machines, he is conclusively presumed to have
known every lost and forgotten machine in the line of his art, and therefore
must prove invention over the best of them, as he undoubtedly must be pre-
sumed to know of any machine which fully embodied his invention. *Sinclair
et al. v. Backus, 529.
MAGISTRATES. See Foreign Magistrates; Oath, 2, 3.
1. There is no statute or rule in the equity courts of New York which prohibits or
prevents a married women, owning a patent, from bringing suit thereon with-
out joining her husband as a party thereto. *Lorillard v. The Standard Oil Com-
pany, 539.
2. By the law of New York a married woman may own property of every descrip-
tion in the same manner as if she were a femme sole, and under the Revised
Statutes suits in equity for infringement of letters patent must be brought by
the party in interest in his or her own name, and such right cannot be delegated
to others to bring suit in their own names when the suit is not in any way for
their benefit. Therefore the husband, having no legal interest in the patent
or the suit, is neither a necessary nor a proper party to be joined. *Id.
MASTER. See Damages and Profits, 3, 6, 14, 15; Royalty, 1, 2, 3.
MEASURE OF DAMAGES. See Damages and Profits.
MECHANICAL SKILL. See Inventions; Non-Patentability, 1, 2, 3, 4, 5.
The patentable features of a railway or other ticket, like those of any other sub-
stantive thing must depend upon peculiarities of mechanical construction. Ex
parte Lee, 174.
MECHANICAL TERMS. See Patentability, 4; Technical Terms.
METHOD. See Claims, 5, 7; Joinder of Inventions, 1; Process and Product.
MODEL. See Date of Invention, 8; Practice in the Patent Office, 24, 25; Public Use and
Sale, 4.
MODIFICATIONS. See Claims, 23, 24; Inventions, 11; Process, 2.
Mere change in form or proportion of a known machine or instrument, however
great, is often merely colorable or unessential; but if a change is effected in-
volving invention, whereby a better and more convenient article for the same
purpose is produced, it may avoid the charge of a mere constructive modifica-
tion. *Miller's Falls Company v. Backus, 386.
MOTIONS. See Appeals, 3; Interferences, 16, 18; Practice in the Patent Office, 3, 4, 5, 6,
13; Rehearing, 3.
1. Two motions for the dissolution of an interference based on the same ground
cannot be entertained by any tribunal of the Patent Office. If either party is
dissatisfied with the adjudication of the first motion, he may have recourse to
an appeal or to a motion for a rehearing but not to a new motion. Banks
v. Snediker, 95.
2. Rule 120 provides for the making of motions before the Examiner of Interfer-
ences or the Examiners-in-Chief in regard to any fact not relating to priority,
but which may constitute a statutory bar to the grant of a patent. The pro-
visions of said rule, however, must not be construed to provide an alternate
remedy, but can only be availed of when motions relating to statutory bars
cannot be made as prescribed by the other rules. Barney v. Kellogg, et al.,
134.
3. Motions do not necessarily effect a stay of proceedings in interferences. To do
this they should be accompanied by a petition, and at or before the hearing of
said motion an order should be entered granting or refusing the petition. Du
Bois v. McCloskey, 142.
4. Motions to reopen contested cases in this Office will be determined in accordance
with the principles which, in the courts, govern the granting of new trials.
Stevens v. Putnam, 160.
NEWLY-DISCOVERED EVIDENCE.
See Bill of Review, 1; New Trials, 1, 6.
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 of a patent cause; but the allow-
ance 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.
* Craig v. Smith et al., 239.
NEW MATTER. See Examiners, 1; Reissues, 3, 10, 27.
1. A motion for a new trial based on the ground of newly-discovered evidence will
not be granted where the circumstances of the case negative a general aver-
ment of diligence made under oath by the party moving for the new trial.
Withington v. Gordon, 53.
2. A motion for a new trial, where a question of fact has been referred to a court
of law for determination, must be made to the court of chancery, and for that
purpose the party applying for a new trial must procure notes of the proceed-
ings and of the evidence given at the trial for the use of the chancellor. * Watt
v. Starke, 447.
3. On a motion for a new trial the complainant might have had the evidence sub-
mitted to the jury, or the substance of it stated and made part of the record,
and the court would have determined whether it had sufficient grounds for
being satisfied with the conclusions of the jury. *Id.
4. To bring the matter before the chancellor on a motion for a new trial the party
may have the proceedings and evidence reported with the verdict, or by mov-
ing the chancellor to send to the judge who tried the issue for his notes of trial,
or by procuring a statement of the same in some other proper way. The evi-
dence and proceedings then become a part of the record and go up to the court
of appeal.
5. Where in an interference between two applicants for a patent priority of in-
vention was awarded to one of them and a patent issued accordingly: Held,
that the issue of the patent constituted no bar to the reopening of the inter-
ference between the defeated applicant, whose application was pending in the
Office, and the patentee, upon proof of fraud and newly-discovered evidence
and in the absence of laches on the part of such applicant, and that upon proof
on the new trial that the applicant was the original and first inventor he was
entitled to the patent. Hibbard v. Richmond, 136.
6. The primary requirements to give a litigant standing and entitle him to a new
trial for the purpose of introducing further testimony are that it is important;
that it could not have been procured before trial upon the exercise of reasona-
ble diligence; that it is not merely cumulative; that it must bring to light
some new and independent truth of a different character; that the evidence
has come to the applicant's knowledge since the trial, and that failure to ob-
tain such knowledge before is not owing to want of diligence. Stevens v. Put-
nam, 160.
7. Misstatements in arguments of counsel will not warrant the granting of a new
trial. Wicks v. McAvoy, 190.
NON-PATENTABILITY. See Aggregation, 3.
1. A lamp-chimney constructed with base and top in one piece being old, no inven-
tion was required to conceive the idea that it could be made in two pieces, nor
to form a surrounding rim upon the upper part of the base for the purpose of
maintaining in position the separate top piece. * Blackman et al. v. Hibbler et
al., 234.
2. A pavement consisting of blocks of wood cut from the trunks or branches of
trees in their natural form, the bark only being removed, laid vertically upon
a bed of gravel or sand, which is also used as a filling to keep the blocks in
position, is not patentable. Phillips v. The City of Detroit, 251.
3. While the fact that a device is useful and has superseded others previously
employed for analogous purposes is proper to be considered, and in some cases
is decisive, it does not of itself establish the fact of patentability. *Id.
4. Tacks and pins in rubber-backed soles and curry-combs having been fixed therein
by vulcanization, no invention was exercised in following the same process in
fixing the heads of metal pins to a rubber back of a brush. The interference
dissolved and the applications remanded to the Primary Examiner for rejection.
Lovejoy v. Hill, 59.
5. The printed matter upon a ticket is nothing more than an arbitrary direction as
to how such ticket is to be used, and can have no bearing upon the patenta-
bility of the ticket itself. Ex parte Lee, 174.
6. A railway-ticket anticipated by an internal-revenue stamp where the system and
the manner in which it is carried out is substantially the same. Id..
7. Duplication of checks or coupons as a matter of expediency, obviously suggested
by the necessity of the case, does not require invention. Id.
8. In the present state of the art, a staple having its points run at a certain angle
and both points beveled on the same side, so that they incline or bend in the
same direction when driven into wood, and adapted for use upon pails, is not
such an invention as will sustain a patent. * Double Pointed Tack Company V.
Two Rivers Manufacturing Company et al., 616.
NOTICE. See Bill of Review, 1; Practice in the Patent Office, 6.
NOVELTY. See Defenses, 7; Inventions, 10.
OATH. See Application for Patent, 2; English Specifications and Patents, 2; Interfer-
ences, 8.
1. An applicant's oath, which is presumptive proof that he is the first inventor and
that his invention has never before been known or used, is practically, in most
cases, conclusive proof of originality of invention, and having such virtue,
must be made strictly according to law. Warnant v. Warnant et al., 36.
2. An applicant's oath cannot be taken before a burgomaster of the Kingdom of
Belgium unless such burgomaster is a notary public. The presumption is that
the office of notary public, which exists in all European states, is different from
the office of a Belgian burgomaster. Id.
3. A Belgian burgomaster's official seal and signature, coupled with a United States
consul's certification of the genuineness of such seal and signature, cannot fur-
nish presumptive proof that that officer was a notary public as well as a bur-
gomaster. Id.
See Evidence, 5; Interferences, 19, 20, 22; Practice in the Patent
OLD ELEMENTS. See Combinations, 11; Equivalents, 1, 2; Invention, 9, 10; Pat-
8.
1. Old instruments placed in new and different organizations, producing in such
situation different results, or the same results by a new and different mode of
operation, do not prevent such newly-organized mechanism from being patent-
able. Gottfried et al. v. The Phillip Best Brewing Company et al., 319.
2. Although the various elements or parts of the patented mechanism, when sʊp-
arately considered, may be regarded as old, they are to be viewed in the light
in which they have been combined in connection with the new and useful re-
sults which the combination accomplishes. Id.
3. It is sufficient for the purpose of distinguishing old parts from new in the speci-
fication and claims of a patent to describe each and all of the parts, and claim
the mechanism as a whole, so constructed and operated as to produce the re-
sult set forth. * Id.
4. Where the patent covers an entirety it cannot be defeated by showing that the
several component parts are old in other connections. It must appear that
they have existed together in the same relation. * Parks et al. v. Booth, 439.
5. Old parts to be patentable must combine in operation and by their joint effect
produce a new result. They need not act simultaneously, but if so arranged
that the successive action of each contributes to produce the result which,
when obtained, is the product of all the parts, viewed as a whole, a valid
claim for this combination may be sustained. * Hoffman v. Young, 628.
ORIGINAL INVENTOR. See Bar to a Patent, 1; Defenses, 3, 4; English Specifications
and Patents, 2; Estoppel, 1; Infringement, 2; Interferences, 21; Invention, 1;
Practice in the Patent Office, 19, 32; Presumptions, 1, 2.
1. It is well settled that he who is first to conceive an invention and is then dili-
gent to complete and operate the same is the first and meritorious inventor, as
against one who is subsequent to conceive but the first to reduce to practice.
Gardner v. Dudley, 123.
2. The charge that an applicant is not an original inventor must be sustained by
proof of a most conclusive character. Hockhausen v. Weston, 185.
OWNERSHIP. See Assignments, 2, 10; Reissues, 19; Title, 1.
ADAMS-Electro-Deposition of Nickel.
1. The patent granted to Isaac Adams, jr., August 3, 1869, for improvement in the
electro-deposition of nickel, construed and sustained. * The United Nickel Com-
pany v. Harris et al., 264.
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