be authorized to declare the other a joint inventor when the facts showed that
he was not; but he might be authorized to protect the other from fraud by
making him a joint patentee. Id.
8. An applicant in an interference case not estopped in the assertion of this title
as first and original inventor by reason of his conduct or by his admissions to
another, when the latter was not induced by such conduct or admissions to
take steps or perform acts, or refrain from the same, in regard to the particular
invention in controversy. Taylor v. Bourguignon, 262.
9. The effect of an estoppel in the Patent Office cannot be to cause its tribunals to
adjudge him to be the first and original inventor whom the proofs show not to
be the first and original inventor, but, at most, only to cause them to take care
that he who has been led by the representations of another to a course of action
which will result in his own detriment, unless such representations shall be
made good, shall be protected, not in the false character of a first and original
inventor, but in the true character of an equitable assignee. Packard v. Sand-
ford, 314.
10. Documents constituting, not a mere statement of priority, but a stipulation of
priority, are not authorized by law, and will no more entitle a party who bases
his action upon them to a patent by estoppel than will any other attempt to
evade the law by substituting a stipulated for a real first and original in-
ventor. Id.
EVIDENCE. See Abandonment, 3; Construction of Statutes, 7; Damages and Profits, 6;
English Specifications and Patents; Foreign Laws and Publications; Granting Pat-
ents, 1; Infringement, 8; Interferences, 20, 31; Joinder of Invention, 5; Oath ;
Patents; Practice in the Courts, 7, 23; Practice in the Patent Office, 43, 44, 53, 60,
67; Preliminary Statement, 1; Printed Publications; Priority of Invention, 9;
Reissues, 19.
1. A model and rejected application of a third person, and the patentee's knowl-
edge of the same, are admissible to show the circumstances connected with the
invention and the state of things existing at the time, in order to enable the
court to understand the subject-matter of the patent and to aid in its construc-
tion. * The Union Paper Bag Machine Company v. Pultz & Walkley Company, 386.
2. Rejected applications for patents are not of themselves evidence of the existence
of perfected inventions at their dates of filing, in the absence of evidence of
the construction and operation at such dates of the machines embodying the
said inventions. Howes et al v. McNeal, 410.
3. The testimony of a witness as to prior use by him of the invention patented is
rendered unreliable and incompetent by the circumstance that his employers,
after having the benefit of his skill, sought the right to use the patented pro-
cess as soon as they heard of it, and the further fact that the specimens pro-
duced were very different from those made under the patent. *Saint Louis
Stamping Company v. Quinby et al., 502.
4. But such prima facie evidence may be overcome by proof that the improvement was
previously made and reduced to practice by another in this country, or that it
had previously been patented or described in some printed publication prior to
the supposed invention by the patentee. [* Judson v. Bradford et al., 506.
5. Since the decision of the case Coffin v. Ogden, (18 Wall., 120,) evidence is sufficient
to support the defense of a prior knowledge and use when it proves that the
invention was complete and capable of working, if it had been put in public
use and was known to any considerable number of persons. *Id.
6. A printed English specification, whether certified under the seal of the English
Commissioners or not so certified, is evidence before the United States Patent
Office, as before the courts of the United States, only for the purposes for which
it is made evidence either by the common law or by the statutes of the United
States. Lauder v. Crowell et al., 177.
7. The affidavit filed by the applicant in conformity with the statute constitutes
prima facie evidence, for the purposes of the ex parte application, of the fact of
invention by the applicant; but it constitutes no evidence of any date of inven-
tion earlier than the date of the application itself. It does not lose its char-
acter as competent prima facie evidence of the fact of invention when a decla-
ration of interference is made; but, as between applicants in interference, the
affidavit of each constitutes prima facie proof of invention of the date of his
application. The object of interference proceedings is to determine the question
of priority between dates claimed earlier than those of the respective applicants.
Id.
8. An averment in the petition that the applicant is the patentee named in the Eng-
lish patent is not competent evidence to identify him as the English patentee,
or to fix the date of his invention at the date of that patent, or for any other
purpose. Id.
9. Testimony having been taken showing that Wilson, the original defendant, had
infringed the plaintiff's patent, but no direct testimony having been taken
after the amendment of the bill to show that the added defendants (Ackerman
and Borkel) had, together or singly, used the infringing machine, Held, that
the reference in the stipulation signed by the solicitor on behalf of Ackerman
and Borkel, as well as on behalf of Wilson, and under which Ackerman and
Borkel put in their answer, to the fact that they had bought "the business of
said Wilson in which the infringing machine or machines were used," and that
the accounting against them was to date from the time of such purchase, and
that they were to be enjoined, and that they were not to object that they had
not infringed jointly with Wilson, taken in connection with the fact that in
the joint answer, which is sworn to by Borkel, the machine charged in the bill
as infringing is spoken of as "the machine used by these defendants," is suffi-
cient prima facie evidence of the use of the machine by. Ackerman and Borkel.
*Fischer v. Wilson et al., 533.
10. The date of invention fixed by that of the oath of the earlier specification (Jan-
uary, 1848) in the absence of any satisfactory evidence to show adverse knowl-
edge prior thereto. *Colgate v. The Gold and Stock Telegraph Company, 553.
11. In the absence of other evidence, the date of the patent is to be taken as the
date of invention, and the burden of proof is upon the defendant to show, be-
yond any fair doubt, prior knowledge and use. When such evidence has been
produced the burden is shifted upon the plaintiff to show still earlier invention.
*Webster Loom Company v. Higgins et al., 570.
12. The clear meaning of a written instrument cannot be changed in the Patent
Office by parol proof that the parties intended something else. Hammond v.
Pratt, 337.
EXAMINERS. See Examiners-in-Chief; Practice in the Patent Office, 24, 25, 26, 28, 29, 30,
31, 32, 33, 59, 68, 69, 71, 75; Rules of the Office, 1.
EXAMINERS-IN-CHIEF. See Appeals, 3.
A decision of the Examiners-in-Chief, lawfully made in any case, constitutes a rule
for the Primary Examiner in that case until the decision is overruled by the
Commissioner. Ex parte Rodgers, 207.
EXECUTORS. See Construction of Statutes, 11; Practice in the Patent Office, 76.
In case of the death of the applicant, a new application by the executor is not nec-
essary, nor is it the better practice to file a new application; and yet, as be-
tween the executor and the public, there is no reason why this course, which is
not in itself illegal, should be prohibited; but such a disposition of the original
application will not be permitted to prejudice the rights of assignees or of parties
to an interference. Rice v. Burt et al., 291.
EX PARTE CASES. See Practice in the Patent Office, 53.
EXPERIMENTS. See Invention, 26.
Crude and imperfect experiments are not sufficient to confer a right to a patent; but
in order to constitute an invention a conception must have been reduced to
practice and embodied in some distinct form. *Judson v. Bradford et al., 506.
FEES, ATTORNEYS'.
1. While an attorney has no such lien upon his client's papers as a mortgagee has
upon mortgaged property, real or personal, and cannot, either by foreclosure
or sale, realize his fees out of the papers, yet he has a right to retain possession
of them until his fees are paid, and the same rule is applicable to patent agents.
Ex parte Bowers, 275.
2. A substitute attorney appointed by the principal attorney, with the authority
of the patentee, is entitled to hold the letters patent until the fees stipulated
to be paid by the patentee to the principal attorney are paid; and he has a
right, upon notice to the patentee before payment, to demand that so much of
the fees to be paid to the principal attorney as will suffice to cover his own
stipulated compensation shall be paid directly to himself. Id.
FIRST AND ORIGINAL INVENTOR. See Estoppel, 6, 9, 10; Granting Patents, 2;
Priority of Invention, 4.
A citizen or foreigner who is an original inventor, whether he made his invention
in the United States or in a foreign country, may, in the absence of an interfer-
ing application, obtain letters patent of the United States, although the same
invention may have been previously known or used abroad, and although the
applicant may himself have obtained a foreign patent therefor. Lauder v.
Crowell et al., 177.
FOREIGNERS. See Construction of Statutes, 14; Practice in the Patent Office, 7, 51, 52;
Priority of Invention, 3.
1. The right of a foreigner to a patent in the United States is not a natural right
merely regulated by law, nor is it even a common-law right or a constitutional
right merely regulated by law, but it is a statutory right, created as well as
regulated by law, and is, like that of the citizen, subject to forfeiture by laches
on the part of the applicant. Jones v. Greenleaf et al., 23.
2. The foreign patentee of a foreign invention, when he appears as an ex parte appli-
cant in the Patent Office, stands not upon his foreign patent, but, like any other
applicant, upon his oath of invention. Until contested, that oath is accepted
as prima facie proof of the fact of invention from an applicant who is a foreign
patentee, precisely as from any other applicant. When a contest springs up
he must, like other applicants, resort to legal proof. Lauder v. Crowell et al.,
177.
3. When a foreign patentee of a foreign invention applies for a patent in the United
States, and a foreign patent or printed publication exhibits the same invention,
he must show by legal proof either that the invention so patented is his own,
or that he made and patented the same invention at an earlier date. Id.
FOREIGN LAWS AND PUBLICATIONS. English Specifications and Patents.
The laws of a foreign country designed only for the direction of its own affairs are
not to be noticed in other countries unless proved as facts, and the sanction of
an oath is required for their establishment unless they can be verified by some
other such high authority as the law respects not less than the oath of an indi-
vidual. A foreign written law may be received when it is found in a statute
book, with proof that the book has been officially published by the government
which made the law. But no publication which has not, under the laws of the
country whence it emanates, sufficient verity to be competent evidence of its
contents in the courts of that country, can, by importation into this country,
acquire such character as to be competent evidence in the United States, unless
by virtue of statutory provision. Lauder v. Crowell et al., 177.
FOREIGN PATENTS. See Construction of Statutes, 5; Interferences, 13; Practice in the
Patent Office, 9, 37; Presumptions, 1; Particular Patents, 24.
When two applicants for patents for the same foreign invention, of whom only one
is a foreign patentee, are before the Patent Office of the United States, the
foreign patent of one of the applicants is a bar to the issue of an American
patent to the other, even though he is in fact the prior inventor. Lauder v.
Crowell et al., 177.
FORFEITURE. See Abandonment, 6, 8; Practice in the Patent Office, 64.
1. To constitute forfeiture to the right of a patent, the evidence must be conclu-
sive in showing that the conduct of the dilatory applicant amounts to such
acquiescence by him in the use of the invention by others, or in the claim by
another as its inventor, that he is thereafter estopped in asserting title in him-
self. Green et al. v. Field, 208.
2. It is difficult to distinguish forfeiture from abandonment or dedication of a com-
plete invention to the public by the original inventor; but a delay to file an
application for a patent after a patent had been granted to another for the
same invention, which was solely the result of advice received from joint ap-
plicants' attorney, and on which they reposed in good faith, and not passively,
does not amount to forfeiture or abandonment.
GENERAL ISSUE. See Practice in the Courts.
See Claims, 10, 15, 20, 22, 23, 24; Disclaimers, 6; Practice in the
Patent Office, 49.
1. All matters of fact involved in the hearing of an application for the reissue of
a patent are conclusively settled by the decision of the Commissioner in grant-
ing the application Power to grant reissued as well as original patents is
vested in the Commissioner. When that power has been lawfully exercised
and a patent has been duly granted, whether reissued or original, it is of it-
self, if introduced in evidence where a party claims redress for alleged in-
fringement, prima facie evidence that the patentee is the original and first
inventor of that which is therein described and secured to him as his inven-
tion. *Judson v. Bradford et al., 506.
2. The execution of a judgment at law, or of a decree in equity, only places the
parties where, by voluntary mutual arrangement, they might have placed
themselves; but the execution of a judgment of priority in the Patent Office
by the grant of letters patent to the successful party effects a result which the
stipulations, concessions, admissions, and other acts of parties are powerless to
secure. The intervention of the Government is necessary to the issue of the
patent, which can only be granted to the first and original inventor or his as-
signee. Packard v. Sandford, 314.
3. This fundamental difference between an action at law or in equity and an inter-
ference proceeding in the Patent Office occasions a corresponding difference
in the applicability of the rules of estoppel to the respective cases. A party to
an action at law or in equity may, by concession, admission, or stipulation,
authorize a judgment against himself which will transfer the property from
himself to another, because he is disposing of what is absolutely subject to
his own control. The truth or falsehood of the stipulation or concession or
admission are not material to the validity of the judgment. But an attempt
by one party to stipulate or concede or admit a patent into the hands of an-
other is an attempt to dispose of that which the Government only has power
to dispose of, and which the Government is bound to award, according to law,
to the person who is, and not to the person who is falsely or erroneously stip-
ulated to be, the first and original inventor. No admission, stipulation, conces-
sion, or other act will justify the Government in deciding, in defiance of
established facts, that a party is the first and original inventor. Id.
INFRINGEMENT. See Acquiescence; Combinations, 17; Eridence, 9; Particular Patents,
27; Practice in the Courts, 5; Reissue, 24.
1. The use of a die for tempering and straightening wire, consisting of two plates,
having two opposite walls of the groove parallel with each other, and tonched
by the contour of the wire at all points, and having the other sides of the
groove semi-elliptical to accommodate the flattened parts of the wire, is an in-
fringement of a claim for "constructing the tempering-die with a square hole,
corresponding in size to the wire to be tempered, in order that the wire may
be straightened in all directions, and the flattened portions of the wire be
brought in line with each other, as and for the purposes specified." *Ameri-
can Manufacturing Company v. Lane et al., 381.
2. A patent for a five-blade paper-bag cutter, which, without waste, forms a central
projection at one end and a corresponding recess at the other end of a bag-sheet,
so that the central projection at one end and the side projections at the other
end constitute the top and bottom of the bag, is infringed by the use of a five-
blade paper-bag cutter with additional parallel knives, so operating as to form,
by the removal of parts of the paper, central projections at both ends of the
bag-sheet. *Union Paper Bag Machine Company v. Pultz & Walkley Company, 386.
3. Such a patent is infringed by the use of a three-blade bag-cutter having the
central blade about a bag's length in advance of the side blades. *Id.
4. Where the use of a combination of materials is an infringement of a patent, a
sale of materials to persons using such combination with the intention that
they shall be so used, is also an infringement of the patent. *Bowker v.
Dows, 405.
5. A patent for a combination of saponine, extracted from vegetable products, with
liquids containing carbonic-acid gas, to be used as a beverage, is infringed by
the sale of vegetable products containing saponine for use in such a com-
bination. Id.
6. A machine embodying the patented invention is none the less an infringement
because it contains improvements rendering it more effectual in operation than
the machine patented. *Howes et al v. McNeal, 410.
7. The essential feature of this invention consists in the discovery that the green
color of the fuchsine may be changed to a bronze color by the use of spirit-
varnish, and that the mixture, when applied to boots and shoes, instead of
stiffening the leather and causing it to crack, renders it more elastic and pliable,
and it is immaterial, in an infringement suit, whether these results are produced
by mechanical or chemical action. Cahill v. Brown, 432.
8. In an infringement suit the defendant rendered before the master an account of
the number of machines which he had made, of which he represented some as
infringing three, and others only one, of the claims of the complainant's patent.
The complainant then alleged that he had "for many years, to the knowledge
of the defendant, exacted and received from many other persons a royalty," at
a specified rate, "upon all harness manufactured by the use of machines similar
to those employed by the defendant,” who thereupon admitted, in writing, "the
license and the terms of the same as alleged" by the plaintiff. Here the plaint-
iff rested his case. The respondent then offered to verify the statement of his
account that a large part of his machines infringed only one of the three claims
mentioned in the original decree. The master held this evidence to be inad-
missible, and assessed the damages for all the machines at the usual rate. Upon
exception his action was affirmed by the court. *Kendrick v. Emmons, 655.
9. The use of the explosive compound known as "rendrock powder," which con-
tains, in one hundred parts, by weight, nitro-glycerine, 34.71; nitrate of pot-
ash, 52.68; sulphur, 5.84; and woody fiber, charcoal, and resin, in nearly equal
proportions, 6.77 parts, is an infringement of Reissue Patent No. 5,799, granted
to the Giant Powder Company, assignee, March 17, 1874, for the combination
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