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paratus for removing obstructions under water, which patent is Reissue No. 6,249, dated January 26, 1875, original patent No. 80,492, dated July 28, 1868.

A similar action was brought by these same complainants against these defendants upon the original patent, to recover for the use by the defendants of the same apparatus which is here claimed to be an infringement, in which suit it was determined, first by the circuit court for the southern district of New York, and then upon appeal by the Supreme Court of the United States, that the use by the defendants of the apparatus in question did not constitute an infringement of the original patent. That patent has been surrendered, and the present patent issued, under which it is supposed the complainants may recover against the defendants. The contention is that the former action failed because the original patent did not claim certain parts of the invention described in the specification, which defect has been remedied by the reissue. But the opinions delivered in the former case, both at the circuit and by the Supreme Court, show. plainly that the plaintiff's action was not rejected because the claims of the original patent failed to cover all of his invention. On the contrary, the description of the invention, as given in the specification of the original patent, was fully examined by the court, and the decision was based upon what was contained in the specification, without in any way limiting the scope of the language there used by the language of the claims. The character and scope of the invention described in the original patent is therefore to be treated by this court as having been finally settled by the decision rendered in the former case. A dismissal of this action is consequently inevitable, for if the reissued patent be for the same invention described in the original patent the former decission that the defendant does not use the plaintiff's invention, made in a suit between the same parties, is conclusive of that question; while, on the other hand, if the reissued patent be for a different invention from that described, the patent sued on is void.

That the reissue is void I do not doubt. By the decision in the former case it was determined that the plaintiff's invention consisted of a dam, inclosure, or breakwater, suspended in the manner described, from a float. The language of the Supreme Court is: "The patentee intends to be understood that such a suspension of the dam, in the manner and by the means shown, is a necessary element of the claim." And because the defendant did not use a suspended dam he was held not to infringe. In the reissue, however, this essential element of the invention will be found to have been omitted.

The reissue describes a portable and adjustable dam, constructed in telescopic sections, but it is not a suspended dam. Such a dam plainly differs from a suspended dam, and so the Supreme Court decided when it held that the defendant's dam did not infringe, because it was not a suspended dam. The dam described in the reissue being, then, different in an essential feature from the dam described in the original patent, the

first claim of the reissue, being for the dam, is void. The same is true of all the other claims for combinations, in which one of the elements is a dam such as is described in the reissue.

This conclusion disposes of all the claims of the reissue except the sixth and eleventh. The two last-mentioned claims are similar in character. The sixth claim is for a combination, the elements of which are a floating deck supported above the water, and a submerged drill-frame arranged directly under said deck, or under an opening through it, substantially as described.

The eleventh claim is for a combination consisting of three elements: (1) a floating deck or flooring, supported above the water; (2) a drillframe arranged in the lower portion of the stream to guide the drills in proximity to the rock to be drilled; and (3) a drill-frame placed above the said lower drill-frame; all being arranged in the same vertical plane, substantially as described.

In regard to any right of action against the defendant, based upon these two claims, it is not clear that this court can with propriety express its opinion, inasmuch as the language of the Supreme Court in the former case, when considering the manner in which the defendant operates his drills, is broad enough to cover the combinations described in the sixth and eleventh claims of the reissue, although such combination was not made the subject of any claim in the original patent. But if there be here any question open to be decided by this court no different results can be reached.

The description given in the specification of the original patent shows drills operated in combination with a floating deck, and not otherwise. The defendant uses a single drill-frame having two guides, but constituting a single drill-frame, which drill-frame is not connected with or operated with reference to any floating deck. It cannot therefore he held that the defendant uses either of the combinations which form the subject of the sixth and eleventh claims. Furthermore, not only did the original patent omit to claim the combinations which form the subject of the sixth and eleventh claims of the reissue, but the language of the specification of the original patent will be searched in vain for language capable of suggesting the idea that the patentee intended to claim or supposed that he was the first inventor of the combinations that form the subject of the sixth and eleventh claims of the reissue. The specification of the original speaks of drills and of a floating deck, and of drills operated beneath a floating deck, but it is nowhere suggested that the use of drills in a drill-frame beneath and in connection with a floating deck, in the manner described, was a new invention of the patentee, nor could it be gathered from anything in the original patent contained that the patentee considered such a construction to be his own invention, or even contemplated the use of the drills set in drill-frames, as described, in combination with a floating deck, to accomplish any new or useful result. Such being the case, I know of no authority which will sustain a

reissued patent, wherein, for the first time, such combinations appear as distinct inventions, adapted to produce a new and useful result not alluded to in the original patent.

These conclusions lead to a dismissal of the bill, and it is dismissed, with costs to be taxed.

[United States Circuit Court-District of New Jersey.]

SPRING ET AL. v. THE DOMESTIC SEWING MACHINE COMPANY. Decided July 17, 1879.

16 O. G., 721.

1. A decree by the court, made at the request and in accordance with an agreement of the parties litigant, not effective against others not parties thereto.

2. A decree by consent of parties litigant should have very little weight in any court when produced as an adjudication in favor of the validity of a patent.

3. Two years' use by defendant of the complainants' patent with the latter's knowledge, who took no steps to stop it, sufficient to defeat a motion for a preliminary injunction.

4. Complainants are chargeable with the laches of the former owners of the patent, having succeeded only to the rights of such former owners.

Mr. George E. Betton for complainants.

Mr. John Dane, jr., for defendant.

NIXON, J.:

I am not satisfied that this motion for a provisional injunction ought to prevail. It is asked for on two grounds: (1) on account of a decree of a court of equity, establishing the validity of the complainants' patent; (2) public acquiescence.

(1.) With regard to the judicial decree.

The opinion of the circuit court for the district of Massachusetts was first against the patent, declaring it a nullity. Doubtless, for proper and sufficient reasons, the decree was vacated and an order entered “that the agreement of the parties annexed to a petition marked B be confirmed, with the same effect as between the parties as if the parties and things agreed and consented to in said agreement were now ordered adjudged and decreed by the court."

No criticism is intended upon the propriety of the decree itself, as between the parties, when it is said that it should have very little weight in any court when produced as an adjudication in favor of the validity of a patent.

(2.) As to public acquiescence.

The affidavits filed in the case by the complainants to sustain this application show that many have not acquiesced, and that the owners

of the Spring patent have been aware of the alleged infringement of the defendant corporation for two years past.

Leaving out of view other depositions, the complainants have put in one by George E. Betton, sworn to September 14, 1877, and one by Levi S. Stockwell, then president of the Howe Machine Company, sworn to October 7, 1877, in both of which the infringment by the Domestic Sewing Machine Company is fully set forth. Mr. Stockwell affirms that the Howe Machine Company was for several years the licensee of Andrew and Charles Spring, and that after its extension the company had become and was then the owner of one-half of the said patent. The bill of complaint claims that Mr. Betton was at that time the owner of the other half, so that we have proof produced by the complainants themselves that the owners of the patent in the summer and autumn of 1877 knew of the alleged infringement, and so far as it appears took no steps to stop it. The present complainants have succeeded only to their rights, and are chargeable with their laches.

The application for an injunction must stand over to the final hearing; but, upon proof of any unnecessary delay on the part of the defendant company to put in their testimony, the complainants have leave to renew the motion.

[United States Circuit Court-Southern District of New York.1

NELSON v. MCMANN ET AL.

Decided April 2, 1879.

16 O. G., 761.

1. A party who, at best, is but a mere licensee cannot maintain an action for infringement in his own name.

2. The distinction between patentees, assignees, grantees of exclusive rights, and licensees made by the law of 1836, and thereafter defined by the courts, has not been changed by the act of 1870. A licensee cannot sue alone in his own name.

Mr. S. D. Law and Mr. A. B. Malcomson, jr., for the plaintiff.
Mr. Thos. Wm. Clarke and Mr. William T. Graff for the defendants.

BLATCHFORD, J.:

The bill in this case is founded on reissued letters patent of the United States granted to Nathaniel Jenkins August 3, 1869, for an "elastic packing for joints and valves exposed to destructive fluids." The original patent was granted to Jenkins May 8, 1866.

The specification of the reissued patent describes the new packing as— An elastic packing, of indestructible properties, to a valve, joint, or aperture through which a destructive fluid is to pass, such as steam of any kind, hot water, kerosene, os other coal-oil, hot or cold.

The bill alleges that Jenkins, by an instrument in writing, dated Feb. ruary 1, 1870, assigned and conveyed to the plaintiff

The exclusive right and license, within the States of New York and New Jersey, to use said elastic packing in the manufacture of any and all manner of valves, cocks, and other articles in which said elastic packing could or should be used, and sell for use in said territory and elsewhere in the United States such valves, cocks, &c., so manufactured.

It also alleges that, under such right, the plaintiff made and sold "valves, cocks, and other articles containing said elastic packing."

It also alleges, as an infringement, that the defendants did, in New York and New Jersey

Use and vend to others to be used the aforesaid invention and discovery, and did cause the same to be done, and did make, use, and vend to others to be used, valves, cocks, and other articles employing and containing said improved elastic packing. To this bill the defendants interpose a plea, which sets forth

That the said Charles Nelson is not and never has been the assignee of the said letters patent in said bill set forth, or of any territorial grant under the same, in manner and form as set forth in said bill, and that the said letters patent are now the exclusive property of Thomas William Clarke, of Boston, in the county of Suffolk and State of Massachusetts, under the following chain of title: The said Nathaniel Jenkins died on or about the twentieth day of May, 1872, leaving a will duly probated in said county of Suffolk, in the probate court thereof, whereof Charles F. Jenkins, Alfred W. Chandler, and John Hassam were executors, and came into full possesion of said letters patent. The said Charles F. Jenkins, Alfred W. Chandler, and John Hassam, executors as aforesaid on the day of 1874, duly assigned said letters patent to Alfred B. Jenkins, under power contained in said will, and thereby conferred upon them. The said Alfred B. Jenkins, on the fifth day of November, 1874, duly assigned the same to said Thomas William Clarke. Wherefore defendants say that the title to said letters patent is not in the said Charles Nelson for the States of New York and New Jersey.

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The plaintiff takes issue on this plea by a replication. Proofs have been taken by both parties and the case has been brought to a hearing thereon. The real question tried and argued has been, whether the plaintiff has a right to maintain this suit in his own name alone, as it is now brought. The bill does not aver that the plaintiff is or has been the assignee of the patent or of any territorial grant under the same. Therefore the plea, in denying that, denies what is not averred in the bill. The allegation of the bill as to the right and license conveyed to the plaintiff by Jenkins by the instrument of February 1, 1870, is not otherwise denied by the plea. The parties have, however, treated the pleadings and proofs as raising the question whether the plaintiff has such a title to or under the patent as authorizes him to bring this suit in his own name alone; and that is the question which will be considered. On the 1st of February, 1870, Jenkins owned two other patents, which had been granted to him, besides the reissued patent of 1869. That reissue will be called the 1869 patent. The 1869 patent was for a packing composed of refractory earth and vulcanized rubber. Of the other two patents, one, granted October 15, 1867, was for a packing for joints and valves, composed of pulverized mica and vulcanized rubber,

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