to other patentees to secure to them the full enjoyment of the rights which it has conferred by its patents to them. Perhaps both of these objects were in view. In so far as the latter was and is the purpose of this suit it brings it within the rule laid down in United States v. Beebe, supra. Doubtless the removal from the public of the burden of a monopoly charged to have been wrongfully created was also one of the objects, and, perhaps, the principal object. (United States v. American G., 1285; 159 U. S., 548.)

Bell Telephone Co., C. D., 1895, 665; 73 O. To what extent this may relieve the Government as suitor from all the rules governing the suits of private individuals need not be specifically determined here.

One of the familiar rules of equity, reinforced by statute (sec. 723, Rev. Stats.) is that

suits in equity shall not be sustained in either of the courts of the United States in any case where a plain, adequate, and complete remedy may be had at law.

The objection to the validity of this patent on the ground that it was already covered by the patent of 1880 is a defense which, under the statutes (sec. 4920, Rev. Stats.) is open to every individual charged by the patentee with infringement, whether the proceeding against him be an action at law or a suit in equity. The Government, therefore, if seeking simply to protect the right of an individual, ought not to be permitted to maintain a suit in equity to cancel that against which the individual has a perfect legal defense available in any action brought by or against him. The query is pressed whether the same rule would not also apply when the Government is only seeking to protect the public at large, for the public is but the aggregation of all the individuals, and if each of them has a perfect defense to the patent, so all together have. Again, and as an illustration perhaps of the extent of the rule referred to, it has often been held that while one having the title to and possession of a tract of land can maintain a suit in equity to cancel a deed or other instrument which is a cloud upon the title, such suit cannot be sustained if the deed or instrument is void upon its face, its invalidity resting upon matters of record, and not affected by any lapse of time or statute of limitations. In other words, the deed or instrument is not considered a cloud if it can never be used to destroy his title or disturb his possession. The objection to this patent on the ground stated is an objection resting upon matters of record-of record in the Patent Office; not dependent on oral testimony nor subject to change, and in no way affected by lapse of time. Within the scope of this specific application of the general rule it would seem that equity has no jurisdiction either at the suit of the Government or of an individual to formally cancel that which by record and unfailing evidence is, as claimed, absolutely void.

But, further, Congress has established the Patent Office, and thereby creating a tribunal to pass upon all questions of novelty and utility. It has given to that Office exclusive jurisdiction in the first instance,

and has specifically provided under what circumstances its decisions may be reviewed, either collaterally or by appeal. As said in Butterworth v. Hoe (C. D., 1884, 429; 29 O. G., 615; 112 U. S., 50, 67:)

That it was intended that the Commissioner of Patents, in issuing or withholding patents, in reissues, interferences, and extensions, should exercise quasi-judicial functions is apparent from the nature of the examinations and decisions he is required to make, and the modes provided by law, according to which, exclusively, they may be reviewed.

Sections 4911 to 4914, Revised Statutes, grant appeals in certain cases to the Supreme Court of the District of Columbia. It is true those sections do not authorize appeals on behalf of the Government, but the failure so to do may be evidence that Congress thought the Government ought not to interfere; and because it believed it had made ample provision for securing the rights of all without the intervention of the Government. Section 4915, Revised Statutes, authorizes a suit in equity on behalf of an applicant for a patent whose application has been refused. Morgan v. Daniels (C. D., 1894, 285; 67 O. G., 811; 153 U. S., 120) presented a controversy under that section, and in the opinion, on page 288, C. D.; 124, U. S., we said:

It is a controversy between two individuals over a question of fact which has once been settled by a special tribunal, intrusted with full power in the premises. As such it might be well argued, were it not for the terms of this statute, that the decision of the Patent Office was a finality upon every matter of fact.

It is true that all these sections refer to proceedings between individuals, but the Government is as much bound by the laws of Congress as an individual, and when Congress has created a tribunal to which it has given exclusive determination in the first instance of certain questions of fact and has specifically provided under what circumstances that determination may be reviewed by the courts, the argument is a forcible one that such determination should be held conclusive upon the Government, subject to the same limitations as apply in suits between individuals.

There is nothing in United States v. Bell Telephone Company (C. D., 1888, 558; 45 O. G., 1311; 128 U. S., 315) and United States v. American Bell Telephone Company (C. D., 1895, 665; 73 O. G., 1285; 159 U. S., 548) to 'conflict with the views above expressed. In the former case the question presented was whether the Government could maintain a bill to set aside a patent for an invention on the ground of fraud in its issue, and among the objections urged was the fact that Congress had, in section 4920, Revised Statutes, made specific provision for certain defenses in suits by an infringer. It was held that the Government could maintain such a bill, and that these special statutory provisions did not defeat its right, the Court summing up the discussion in these words:

The argument need not be further extended. There is nothing in these provisions expressing an intention of limiting the power of the United States to get rid of a patent obtained from it by fraud and deceit. And although the legislature may have given to private individuals a more limited form of relief, by way of defense to an

action by the patentee, we think the argument that this was intended to supersede the affirmative relief to which the United States is entitled, to obtain a cancellation or vacation of an instrument obtained from it by fraud, an instrument which affects the whole public, whose protection from such a fraud is eminently the duty of the United States, is not sound.

In the latter case, which is the one now before us, there was decided a motion to dismiss for want of jurisdiction in this Court of an appeal from the decision of the Court of Appeals, and it was adjudged that this Court had jurisdiction. It is true at the close of the opinion is found this general statement as to the power to maintain such a suit:

In United States v. Telephone Co., (supra,) it was decided that where a patent for a grant of any kind issued by the United States has been obtained by fraud, by mistake or by accident, a suit by the United States against the patentee is the proper remedy for relief, and that in this country, where there is no kingly prerogative but where patents for land and inventions are issued by the authority of the Government, and by officers appointed for that purpose who may have been imposed upon by fraud or deceit, or may have erred as to their power, or made mistakes in the instrument itself, the appropriate remedy is by proceedings by the United States against the patentee.

But while there was thus rightfully affirmed the power of the Government to proceed by suit in equity against one who had wrongfully obtained a patent for land or for an invention, there was no attempt to define the character of the fraud, or deceit, or mistake, or the extent of the error as to power which must be established before a decree could be entered canceling the patent. It was not affirmed that proof of any fraud, or deceit, or the existence of any error on the part of the officers as to the extent of their power, or that any mistake in the instrument was sufficient to justify a decree of cancellation. Least of all was it intended to be affirmed that the courts of the United States, sitting as courts of equity, could entertain jurisdiction of a suit by the United States to set aside a patent for an invention on the mere ground of error of judgment on the part of the patent officials. That would be. an attempt on the part of the courts in collateral attack to exercise an appellate jurisdiction over the decisions of the Patent Office, although no appellate jurisdiction has been by the statutes conferred. We are of opinion, therefore, that the question, as stated, is not open for consideration in this case. We see no error in the decision of the Court of Appeals, and its decree, dismissing the bill, is affirmed.

Mr. Justice HARLAN dissented, but filed no opinion.

Mr. Justice GRAY and Mr. Justice BROWN were not present at the argument, and took no part in the decision.

15377-30

[U. S. Circuit Court-District of Connecticut.]

EDWARD MILLER & COMPANY . MERIDEN BRONZE COMPANY, et al.

Decided April 22, 1897.

79 O. G., 1520.

1. HOMAN-CENTRAL-DRAFT LAMP-VOID-NOT INFRINGED.

Letters Patent No. 477,865, granted June 28, 1892, to William C. Homan, for a central-draft lamp, examined and Held void for want of invention, and also Held not infringed.

2. RELEVANCY OF LIMITED PATENT-PATENTEE ENTITLED TO ALL USES.

The mere fact that a patented device is limited in operation or application is not alone sufficient to destroy its relevancy in a consideration of the prior art. The patentee is entitled to all the uses of which his invention is capable, whether or not he foresaw them at the time of making his invention. 3. REFERENCES, PAPER PATENTS AS.

It is well settled that mere paper patents may negative otherwise patentable novelty, provided that they sufficiently disclose the principles of the alleged invention, or provided that the alleged objections can be obviated by mere mechanical skill.

4. IMPROVEMENTS-PRIMARY INVENTION-EQUIVALENTS.

When at the date of the invention of an improvement the state of the art is such that an inventor can only claim the exact construction which he has selected as the embodiment of his improvement or its ordinary equivalent, the broad range of equivalents permissible in the case of a primary invention cannot be allowed.

5. INFRINGEMENT-ESSENTIAL ELEMENT-IMPROVEMENT-CONVENIENCE.

When complainant insists in his patent that one of the essentials to his device is a certain connection with which the defendant may dispense, and which at best he uses not as essential to its construction, but as a mere convenience to its operation, Held that infringement is not shown.

Messrs. Mitchell, Bartlett & Brownell for the complainant.

Mr. John K. Beach and Mr. E. M. Marble for the defendant.

TOWNSEND, J.:

This bill in equity alleges infringement of the first claim of Patent No. 477,865, granted June 28, 1892, to William C. Homan and duly assigned to the complainant. Said claim is as follows:

+

1. In a wick-adjuster for central-draft lamps, the combination, with a wick-band, of a draw-bar attached thereto, a stem connected at its upper end with the upper end of the said bar and provided at its lower end with coarse screw-threads, a tube having a centrally-perforated knurled operating-nut located at its upper end and constructed with internal screw-threads corresponding in pitch to the threads of the stem aforesaid, and a rotatable suspension-sleeve mounted on the tube below the said nut and adapted to be removably secured to the lamp-fount in which it suspends the said tube, substantially as described.

The defenses are, denial of patentable invention in view of the state of the art and non-infringement. The object of the alleged invention was to provide a special form of wick-adjusting devices for centraldraft lamps, which would combine the advantages of a screw and directthrust action in the adjustment of the wick and extinguishment of the light. This was accomplished by a combination of the ordinary wick

band, with a shank projecting laterally outward, to which was rigidly secured a perpendicular rod or draw-bar passing up through the upper surface of the lamp, coupled at its upper end to another parallel rod or stem extending into a tube suspended perpendicularly in the lamp; said tube and the lower end of said stem being provided with coarselypitched screw-threads. At the upper end of said tube was placed a centrally-perforated operating-nut, and beneath this a rotatable threaded suspension-sleeve which served to suspend said tube and the stem therein. By this combination it was possible either by rotating said operating-nut to slowly raise or lower the wick, or to move it quickly, as for lighting or extinguishing the lamp, by simply taking hold of the draw-bar, or the connection between it and the stem, and directly raising or lowering it. The coarseness of the pitch of the threads permitted them to operate as idlers within the tube.

Every element of this combination was old. Such a draw-bar was shown in the prior Meyrose and Parker patents. Broadly, coupling a draw-bar and stem was old, is shown in the prior Woodward, Davis, and Hoerle patents, and is specifically disclaimed. In the prior Miller, Carr, and Atwood patents were shown means for raising or lowering the wick by ratchets or pinions. These patents are further important because they show devices

combining the advantages of a screw and a direct-thrust action in the adjustment of the wick and extinguishment of the light

which were the results accomplished by the device of the patent in suit, as stated by the patentee.

A screw device for raising or lowering the wick was shown in the prior patent granted to Frank Rhind, April 19, 1887. It comprised a tube extending into the body of the lamp and capable of being used as a filler, and provided with exterior spiral ribs on which a yoke attached to the wick-holder, operated to raise or lower the wick by means of a rotatable head. The patentee Rhind says, as to the pitch of the screw, as follows:

Preferably the spiral rib is made of a quick pitch so that slight extent of rotation will impart a considerable up or down movement to the wick.

Patent No. 394,465, granted December 11, 1888, to Z. Davis, shows a solid draw bar and stem, and a screw device passing through a nut like that of the patent in suit. It describes a construction with the screw-nut either at the top or the bottom of the bowl of the lamp.

Patent No. 435,357, granted August 26, 1890, to N. M. Hoerle, shows a construction similar to that of Davis, except that in this device the screw-thread appears to be sufficiently coarse to permit the quick-thrust operation described in the claim in suit.

All the results ascribed to the patented combination are old, and the new construction is due to the assembling together of old elementseffected without requiring any modification of the parts which was not an obvious one and within the ordinary skill of the mechanic. (Briggs v. Central Ice Co., 60 Fed. Rep., 82, 89.)