therein described operation-when the only practical effect would be to deprive a worthy inventor of the benefit of his patent?

The disclaimer was considered in the case of Tondeur v. Stewart et al., supra, and the judgment of the court was against giving to it the effect here contended for. To that conclusion I must adhere. I will not repeat or much enlarge on what was said upon this subject in the former opinion. The disclaimer is to be read with reference to the prior state of the art, and it may and ought to be construed so that it may harmonize with the plainly-expressed terms of the first claim of the patent. The claim follows directly upon the heels of the disclaimer

But what I do claim is

1. The combination of the bars d d', etc.

The specification describes two sets of bars, one set having a temporary supporting function and the other set supporting and moving the sheets of glass through the leer. The first claim of the patent is for the combination of these two sets of bars arranged and co-operating in the manner and for the purpose defined. The claim should be interpreted with reference to the actual invention. The reasonable presumption is that, having a just right to cover and protect his whole invention, the patentee intended to do so. (Winans v. Denmead, 15 How., 341.)

The construction of patents should be liberal, so as to secure to inventors what they have created, if it can be done consistently with the language used. (Turrill v. Railroad Co., 1 Wall., 491; Klein v. Russell, 19 Id., 433.)

Guided by these just principles, I must reject the construction the defendant would put on the first claim of the patent and hold him to be an infringer thereof. But the defendant makes the further defense (which was not set up in the prior suit) that the Letters Patent sued on are null and void, upon the ground that in the application for his pat ent the plaintiff made oath that be was a citizen of the United States, which he was not. The answer does not allege, nor is there any evi. dence to indicate, that the plaintiff was guilty of any fraud or that his oath was willfully false. On the contrary, it satisfactorily appears that he acted under an honest mistake and with no improper design whatever. The plaintiff left Belgium, his native land, in the year 1881, and came to the United States with the avowed intention of making this country thenceforth his permanent place of residence and citizenship, and he ignorantly supposed that by virtue of his residence and the residence of his family here he became a citizen. This mistake he did not discover until a long time after the grant of his patent. Now, the question raised, it will be perceived, is not whether the Letters Patent are voidable for the cause assigned at the suit of the Government. The position taken is that the patent is a nullity. In support of the proposition the defendant cites the case of Child v. Adams, (1 Fish, 189,) in which a similar defense was sustained by Judge Grier. But that case arose under and was governed by the patent act of 1836, which

allowed the grant of Letters Patent to aliens only upon peculiar conditions, to which citizens were not subject. (5 Stats. at Large, 117.) By that act the patent-fee payable by a citizen was $30 only, whereas an alien was required to pay at least $300, and if a British subject $500; and by the stringent language of the act the fee was to be paid before the application for a patent could be considered by the Commissioner. (Section 9.) Then, again, an alien patentee was compelled "to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent issued." (Section 15.) It was therefore, under that act of the highest importance that the applicant should truly disclose his citizenship, and section 6 required that before any inventor should receive a patent he should "make oath of what country he is a citizen." The decision cited was expressly put upon the ground that an alien, whether through ignorance or intention, falsely swearing that he was a citizen in order to procure a patent not only failed to perform a condition upon which his right to a patent depended, but committed a fraud upon the Government. But the law governing the present case-i. e., the patent act of 1870, as embodied in the Revised Statutes-abolished all such discriminations against aliens and placed them upon the same footing as citizens in respect to the grant of Letters Patent for inventions and the enjoyment of the privileges thereby secured. (R. S., secs. 4886, 4920, 4934.) Therefore, under the law as it stood when the plaintiff applied for and obtained his patent, the mistake in his statement as to his citizenship operated, and could operate, neither to his advantage nor to the detriment of the Government or the public. Furthermore, it is well worthy of notice that while section 4892 Revised Statutes requires the applicant for a patent to "make oath that he does verily believe himself to be the original and first inventor, " etc., in respect to citizenship, the language is "and shall state of what country he is a citizen." This change in phraseology seems to be intentional and to dispense with the necessity of an oath as to citizenship. At any rate, the citizenship of the applicant for a patent is no longer a matter of any real importance, and a mistake touching the same is harmless. I feel quite justified then, in declining to apply to this case the rule which prevailed in Child v. Adams, supra. In the absence of express statutory provision avoiding a patent for a misstatement as to citizenship, it would be going to an extreme length, and, indeed, in the face of well-settled equitable principles, for the court to hold that a mere mistake in that regard, innocently made and working no sort of harm, should have such effect. In Com. Mfg. Co. v. Fairbank Canning Co., (27 Fed. Rep., 78,) where it was urged that a patentee was estopped to deny that his American patent was for the same invention before patented by him in a foreign country by reason of his having made oath that such was the fact in his application for the former, it was held that if the inventor was laboring under a mistake as to this point his rights ought not thereby to be defeated or abridged. At an 2016 PAT

24

early day Judge Story held, in Whittemore v. Cutter, (1 Gall., 429,) that an error in the form of the oath of an applicant for a patent was immaterial; and in Crompton v. Belknap Mills (3 Fish., 536) the court said that even the entire failure to make the oath would not invalidate the patent. Upon the whole, then, I am of the opinion that the misstatement in the plaintiff's oath as to his citizenship is not an available defense to this suit.

Let a decree be drawn in favor of the plaintiff.

[United States Circuit Court-District of Massachusetts.]

THOMPSON ET AL. v. RAND-AVERY SUPPLY COMPANY.

Decided February 5, 1889.

46 O. G., 1112.

SHOREY-MACHINE FOR FORMING STAPLE-SEAMS IN LEATHER-INFRINGEMENT. The infringement of the third claim of Letters Patent No. 136,340, granted February 23, 1873, to Samuel W. Shorey, for an improvement in machines for forming staple-seams in leather by the use of defendant's rest or supporter, which has no incline or bevel, doubtful. Motion for injunction denied.

Mr. James E. Maynadier for the complainants.

Mr. H. D. Donnelly for the defendant.

COLT, J.:

In order to grant the motion for a preliminary injunction now prayed for I must be satisfied that the defendant uses the inclined or retreating anvil n, which is one of the elements of the third claim of the Shorey patent or its equivalent. Upon an examination of the papers before me I have considerable doubt whether defendant's rest or supporter, which has no incline or bevel, can be said to be the equivalent of the inclined anvil n, or whether the defendant can fairly be said to use the combination of devices or the equivalent contained in the third claim of the Shorey patent.

Judge Blodgett, in the case of these plaintiffs against the E. P. Donnell Manufacturing Company et al., where the same question arose, refused an injunction, and after the opinion of Judge Wheeler in the case against the American Bank Note Co. (45 O. G., 347; 35 F. R., 203) he still refuses to modify his opinion. It further appears that Judge Shiras, of the district of Minnesota, denied similar motions in several cases brought by these complainants against different defendants. In view of the doubt in my mind on the question of infringement, I think I ought to follow the ruling of Judge Blodgett and Judge Shiras and deny the motion.

Motion denied.

The same order may be entered in the case of the complainants against L. P. Coffin.

[United States Circuit Court-Southern District of New York.] ROOT v. THIRD AVENUE RAILROAD COMPANY.

Use of an invention for business purposes or profit and in which the test of its success and value was only incidental will defeat a patent if it occurred more than two years before application.

2. FORMER DECISIONS CONSTRUED.

Smith & Griggs Manufacturing Co. v. Sprague and City of Elizabeth v. Pavement Co. applied and explained.

3. ROOT-CABLE RAILWAYS.

Letters Patent No. 262, 162, granted August 1, 1882, to Henry Root, for an improvement in the construction of cable railways, delared invalid by reason of public use more than two years prior to application.

Mr. George Harding and Mr. George J. Harding for the complainant. Messrs. Lauterbach & Spingarn, Messrs. Frost & Coe, and Mr. Harry E. Knight for the defendant.

WALLACE, J.:

The complainant sues for infringement of Letters Patent granted to him August 1, 1882, (No. 262,162,) for an improvement in the construction of cable railroads. His application for the patent was filed September 3, 1881.

The California Street Railroad, a cable railway a the city of San Francisco, was built by the patentee, completed, and went into regular operation prior to April 11, 1878, and as constructed embodied the invention described in the patent in suit. The defendant insists that this is a public use of the patented invention more than two years prior to the patentee's application for his patent, and consequently invalidates the patent. The complainant contends that this was an experimental use of the invention, and that the application was filed within two years fter the patentee became satisfied that the invention was a practical

success.

It is conceded that the road as built embodied the invention of the patent; that Mr. Root had complete charge of the construction of the road and built it for the projectors, and that it has been operated ever since April, 1878, as built, without any changes or modifications in plan or details. The evidence is, that in the early part of 1876 the projectors obtained a franchise to lay and operate a cable railway in California street, one of the public thoroughfares of the city of San Francisco. In the expectation of being employed as the consulting engineer to build the road, the complainant investigated the subject of cable roads nd matured the invention in controversy between May and September, 1876. In Septemoer, 1876, he disclosed the invention to the projectors;

between that time and January, 1877, made a model of it; and in February, 1877, laid down an experimental section of the cable railway embodying the invention, in the yard of the Central Pacific Railway Company in San Francisco. His invention was adopted by the projectors, and work was commenced upon the structure in July, 1877. The road cost, with the equipmeut, $418,000. It was about two miles in length, and the road-bed and tunnel construction cost about two hundred and twenty-five thousand dollars. From April 9, 1878, the structure has been in regular successful use as a street-railway, carrying passengers for pay. Up to the time when the complainant made application for the patent in suit and until 1883 the complainant was superintendent of the road for the owners.

In explanation of his delay in making the application for patent, the complainant testifies that he did not wish to patent the invention if the structure proved weak or undesirable, and he did not feel sufficiently certain of the durability and general practicability until the year 1881; that there was no way but by trial in a public street, through a long period of time, to determine to what extent the moving of cars and the street traffic over a rail connected to iron work without the intervention of any wood would affect the durability of the structure, or to what extent changes of temperature and the effect of water and rust would tend to separate the iron work from the concrete in which it was embedded; and that while he believed there was more than an even chance of its proving a durable and desirable structure he had some` doubts in his own mind, and was influenced also by the doubts expressed by others in whose judgment he had confidence, He admits that he never expressed these doubts to the projectors, either while discussing with them the features of his invention, or while the road was being built, or while he remained its superintendent and after it was completed. In answer to a question whether he had any doubts of the durability of the structure after the road was completed, he states that in the spring of 1879, while making an extension of the railway, some parts of the structure were exposed, and he then saw some indications of the loosening of the yokes in the concrete, and "had some little fear at that time" that trouble might arise in that respect..

Manifestly, the complainant received a consideration for devising and consenting to the use of an invention which was designed to be a complete, permanent structure, which was to cost a large sum of money, and which he knew would not meet the expectation of those who had employed him unless it should prove to be in all respects a practically operative and reasonably durable one. If he had entertained any serious doubts of its adequacy for the purpose for which it was intended it would seem that he would not have recommended it in view of the considerable sum it was to cost. At all events, he did not treat it as an experimental thing, but allowed it to be appropriated as a complete and perfect invention, fit to be used practically, and just as it was, un