224 Fed. Rep., 689, reversed. CERTIORARI to the Circuit Court of Appeals for the Third Circuit. The case is stated in the opinion. Mr. Edwin J. Prindle, with whom Mr. Warren H. Small, Mr. John P. Laffey, and Mr. Kenneth S. Neal were on the brief, for the petitioners. Mr. George Wharton Pepper, with whom Mr. John G. Johnson and Mr. Frank Smith were on the brief, for the respondents. Mr. Justice HOLMES delivered the opinion of the Court. This is a bill to prevent the defendant Walter E. Masland from using or disclosing secret processes the knowledge of which was acquired by the defendant while in the plaintiffs' employ. The defendant admits that he intends to manufacture artificial leather, to which some of the plaintiffs' alleged secret processes relate, but denies that he intends to use any inventions, trade secrets, or secret processes of the plaintiffs that he may have learned in any confidential relation, prefacing his denial, however, with the averment that many of the things claimed by the plaintiffs are well known to the trade. A preliminary injunction was refused at first. (216 Fed. Rep., 271.) But before the final hearing the defendant proposed to employ one or more experts and to make such disclosures to them as the preparation of the defense might require. Thereupon the district court issued a preliminary injunction against disclosing any of the plaintiffs' alleged processes to experts or witnesses during the taking of proofs, but excepting counsel, with leave to move to dissolve the injunction if occasion to consult experts arose. Later a motion to dissolve was denied and the hearing was continued for a decision by the appellate court. (222 Fed. Rep., 340.) The circuit court of appeals reversed the decree. (224 Fed. Rep., 689.) Before any further order was entered the writ of certiorari was granted by this Court. The case has been considered as presenting a conflict between a right of property and a right to make a full defense, and it is said that if the disclosure is forbidden to one who denies that there is a trade secret, the merits of his defense are adjudged against him before he has a chance to be heard or to prove his case. We approach the question somewhat differently. The word property as applied to trade-marks and trade secrets is an unanalyzed expression of certain secondary consequences of the primary fact that the law makes some rudimentary requirements of good faith. Whether the plaintiffs have any valuable secret or not the defendant knows the facts, whatever they are, through a special confidence that he accepted. The property may be denied but the confidence cannot be. Therefore the starting-point for the present matter is not property or due process of law, but that the defendant stood in confidential relation with the plaintiffs, or one of them. These have given place to hostility, and the first thing to be made sure of is that the defendant shall not fraudulently abuse the trust reposed in him. It is the usual incident of confidential relations. If there is any disadvantage in the fact that he knew the plaintiffs' secrets he must take the burden with the good. The injunction asked by the plaintiffs forbade only the disclosure of processes claimed by them, including the disclosure to experts or witnesses produced during the taking of proofs-but excepting the defendant's counsel. Some broader and ambiguous words that crept into the decree, seemingly by mistake, may be taken as stricken out and left on one side. This injunction would not prevent the defendant from directing questions that should bring out whatever public facts were nearest to the alleged secrets. Indeed it is hard to see why it does not leave the plaintiffs' rights somewhat illusory. No very clear ground as yet has been shown for going farther. But the judge who tries the case will know the secrets, and if in his opinion and discretion it should be advisable and necessary to take in others. nothing will prevent his doing so. It will be understood that if, in the opinion of the trial judge, it is or should become necessary to reveal the secrets to others it will rest in the judge's discretion to determine whether, to whom, and under what precautions, the revelation should be made. Decree reversed and case remanded for further proceedings in conformity with this opinion. DIGEST OF DECISIONS. [Decisions of the Examiner of Interferences are indicated by parallel lines (); of the Examiners-in-Chief by a paragraph mark (¶); of the State Courts by a section mark (8); of the Supreme Court of the District of Columbia by the letter a; of the United States District Courts by the letter b; of the Court of Appeals of the District of Columbia by one star (*); of the United States Circuit Court of Appeals by the letter d; and of the Supreme Court of the United States by two stars (**).] ABANDONED EXPERIMENTS. INTERFERENCE-REDUCTION TO PRACTICE.-Ingots formed in the shape called for by the claims Held to amount only to an abandoned experiment where it appeared that they were cast with the big end down instead of small end down (one object of the invention being to avoid "piping") and the molds and ingots were afterward destroyed. *Gathmann v. Clarke, 115. ABANDONMENT OF APPLICATIONS. See Res Adjudicata, 1; Right to Patent. 1. BY WINNING PARTY WITHOUT MAKING INVENTION PUBLIC-JUDGMENT NOT A BAR.-Where the winning party in an interference without making the invention public permits his application to become abandoned, so that the public gets no benefit of it, he fails to complete the inventive act, and the judgment in the interference is not a bar to the grant of a patent for the invention to a losing party whose application has not become abandoned. Jolliffe v. Waldo v. Vermeer and Schorik, 15. 2. UNAVOIDABLE DELAY-MISTAKE BY THE PATENT OFFICE.-The failure of the Office to notify an applicant whose claims were under rejection of the allowance of claims for the same invention to a rival inventor, so that an interference might be had, before passing the rival case to issue, does not excuse the applicant's failure to reply to the rejection within the year allowed by law or justify a holding that the applicant's delay in acting upon the case was unavoidable. (Ex parte McKee, C. D., 1907, 255; 130 O. G., 980, affirmed.) Ex parte Tasker, 29. ABANDONMENT OF PATENTS. See Public Use and Sale, 2. ABANDONMENT OF TRADE-MARKS. See Right to Use Trade-Mark, 1. ADDITIONAL CLAIMS. See Interference, 7, 8. ADVERTISING. See Registration of Trade-Marks, 7, 12. AFFIDAVITS. COMMERCIAL SUCCESS.-Affidavits tending to show that the invention supplied a real need, which other inventions had failed to satisfy, considered and given weight on the question of patentability. *In re Willard, 118. AFFIDAVITS UNDER RULE 75. PATENTABILITY-SUFFICIENCY.-Certain affidavits filed under Rule 75 for the purpose of overcoming a reference considered and Held sufficient. *In re Grieve, 122. AGENT. See Registration of Trade-Marks, 1. AGREEMENT. See Opposition to Registration of Trade-Marks, 3, 4. NEW ELEMENTS.-Where an applicant for patent amended his claim so as to include an element not theretofore stated therein, such amendment is valid if the element was always a part of his invention; but, if it was a departure from the original invention it was invalid unless supported by the statutory oath. d Kintner et al. v. Atlantic Communication Co. et al., 298. ANTICIPATION. See Construction of Claims, 2, 3, 20, 23, 24, 25; Construction of Specifications and Patents, 3, 5; Particular Patents, 3, 14. 1. PATENTS-PRIOR PATENTS.-A patent is not admissible in evidence as an anticipation of another patent which, although later in date of issue, covers an invention shown to have been made before the issue of the earlier patent and upon an application filed several months prior 2. SAME SAME.-Finger-holes in mortise-locks for sliding doors Held so thereto. d Wm. F. Goessling Box Co. et al. v. Gumb et al., 346. remote in purpose and function as not to anticipate a patent for shipping-cases for bottled goods having protected hand-holes for lifting the 3. SAME DEVICE IN REMOTE ART.-A mechanical device or combination which was not designed by its maker or actually used or apparently adapted to perform the function of a patented device or combination, but which was discovered in a remote art, where it was conceived and used under radically-different circumstances to perform another function, neither anticipates nor limits the scope of the patent. Id. See Interference, 1, 2, 9. APPEAL. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Interference, 1. APPLICATIONS. See Abandonment of Applications; Assignments; Delay in Filing Applications; Designs; Disclaimers, 1; Forfeiture of Applications; Interference, 4, 5; Reissues. 1. SIGNED BY ATTORNEY-PATENT GRANTED ONLY WHEN SIGNED BY INVENTOR, IF LIVING.-When application as filed was signed by an attorney and accepted under war conditions prior to act of August 17, 1916, under practice outlined in the Commissioner's letter of September 15, 1914, (223 O. G., 1007,) Held that the patent, under section 4888, Revised Statutes, can be granted only on an application executed by the inventor, if living. Ex parte Kramer, 36. 2. PRACTICE.-The practice instituted to meet the emergency arising out of the European war (Commissioner's letter, supra) was not recommended to the profession and would not have been instituted if the act of August 17, 1916, had been passed at an early date. Id. APPLICATIONS FOR REISSUE. See Assignments. ASSIGNEES. See Assignments; Interference, 15; Patent Rights; Right to Use Trade-Mark, 1. ASSIGNMENTS. 1. CONSTRUCTION AND OPERATION-RIGHT OF ASSIGNOR TO REISSUE.-An assignee of the Northrop patent, No. 987,817, for a misthreading device for looms, Held entitled to a specific enforcement of the implied covenant of the patentee, as assignor, to execute an application for a reissue on the ground that through inadvertence the language of the specification and certain of the claims misstated the mode of operation of a certain feature of the device intended to be covered by the patent. Northrop et al. v. Draper Co., 287. ASSIGNMENTS-Continued. 2. SAME IMPLIED COVENANT TO APPLY FOR REISSUE.-An assignment of an application for a patent to the assignee, his heirs, executors, administrators, and assigns, with the patent to be issued thereon and any right to a reissue, carries with it an implied covenant, which runs with the grant, that the assignor will make application for a reissue in case the patent manifests an intention to claim a feature disclosed therein but which it fails to state accurately in a claim, and such implied covenant is not defeated as to subsequent assignees by a further covenant personal to the first assignee and which does not run with the grant to make such an application if the assignee shall deem it necessary. Id. d ASSIGNMENT OF TRADE-MARKS. PERSONAL MARKS-NOT TRANSFERABLE.-" Mutt and Jeff" Held to be a personal trade-mark incapable of assignment because identified in the mind of the public with the genius and skill of a particular individual. Star Company v. Fisher, 1. § Fisher v. Star Co.; Wheeler Syndicate, Inc., v. Same, 77. ATTORNEYS. See Applications, 1; Diligence. AUTHORITY OF THE COMMISSIONER OF PATENTS. See Cancelation of Patents; Interference, 1; Registration of Trade-Marks, 13. RIGHT OF APPEAL.-The statute gives the Commissioner, without right of appeal, the authority of declaring an interference, and if upon motion to dissolve it subsequently appears that it should not have been declared there is no reason why it should not be terminated by the same authority, without right of appeal from his decision. *Carlin v. Goldberg, 128. AUXILIARY DEVICE. See Construction of Claims, 17. BAR TO PATENT. See Abandonment of Applications, 1; Construction of Statutes, 2; Right to Patent. PRIOR KNOWLEDGE.-Prior knowledge, to invalidate a patent, must be prior knowledge of the actual thing-a physical embodiment of the invention-and must be public, (citing cases.) Jolliffe v. Waldo v. Vermeer and Schorik, 15. BILL IN EQUITY. See Construction of Statutes, 6; Registration of TradeMarks, 8. BROAD AND NARROW CLAIMS. See Interference, 11; Particular Patents, 5; Reissues, 4. BURDEN OF PROOF. See Priority of Invention, 1; Reduction to Practice, 1. SECOND PATENT FOR SAME INVENTION-CORRECTION OF MISTAKE NOT RE- 1 |