Syllabus.

added; that they keep it attached from eight to twenty days, until the beer is drawn off for the market; that, on an average, they gain about two days by the use of the apparatus; and that they avoid the running over of the foaming yeast through the bung-hole.

We have confined our consideration of this case to the third claim of the patent, as that is the one which distinctly embodies the invention of the patentees, and it has been infringed by the defendants. It will be time enough to consider the other process claims, and the eighth claim, in cases involving their infringement, where the third claim is not also infringed. In the present case, it appears that the defendants have used "the process of preparing and preserving beer for the market," by "holding it under controllable pressure of carbonic acid gas from the beginning of the kraeusen stage until such time as it is transferred to kegs and bunged, substantially as described" in the specification of the patent.

The decree of the Circuit Court is reversed, and the case is remanded to that court, with a direction to enter a decree establishing the validity of the third claim of the patent, and awarding a perpetual injunction and an account of profits and damages, and to take such further proceedings in the suit as may not be inconsistent with this opinion.

GANDY v. MARBLE.

APPEAL FROM THE SUPREME COURT OF THE DISTRICT OF COLUMBIA.

Argued April 29, May 2, 1887.- Decided May 27, 1887.

On a bill in equity filed under § 4915 of the Revised Statutes, to obtain an adjudication in favor of the granting of a patent, the plaintiff must allege and prove that a delay of two years and more in prosecuting the application after the last action therein of which notice was given to him was unavoidable, or the application will be regarded as having been abandoned, within the provision of § 4894.

Statement of the Case.

THIS was an appeal by the plaintiff in a suit in equity brought in the Supreme Court of the District of Columbia against the Secretary of the Interior and the Commissioner of Patents, from a decree of the general term of that court dismissing the bill. The suit was brought by Maurice Gandy against H. M. Teller, as Secretary of the Interior, and E. M. Marble, as Commissioner of Patents. The bill was founded upon § 4915 of the Revised Statutes, which provides as follows: "Sec. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not."

The facts of the case were these: On the 1st of December, 1877, Gandy filed in the Patent Office an application for a patent for "improvements in belts or bands for driving machinery." The application was rejected on the merits. After due proceedings, an appeal was taken to the Commissioner of Patents in person, who, on the 7th of April, 1879, affirmed the decision rejecting the application. Gandy appealed to the Supreme Court of the District of Columbia, which, on a hearing, and on the 30th of January, 1880, dismissed the petition of Gandy, and directed that a copy of its decree be transmitted to the Commissioner of Patents. The bill stated that the ground of the action of the Patent Office and of the Supreme Court of the District of Columbia in rejecting the application

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Statement of the Case.

was, that the invention was not patentable, having been anticipated in prior patents. The bill alleged that the application was erroneously rejected, and prayed that the court would hear and determine the right of the plaintiff to a patent for what he claimed, or for such parts thereof as he might be justly entitled to, and would decree accordingly.

The bill was filed on the 3d of May, 1883. A subpoena was issued upon it, and served upon the Secretary of the Interior and the Commissioner of Patents, on the 5th of May, 1883. On the 19th of October, 1883, the solicitor for the plaintiff served on the Secretary of the Interior and the Commissioner of Patents, in person, a notice that he would, on the next day, move the court for leave to enter their default in the case, and thereupon to proceed with the cause ex parte to final hearing. On the 20th of October, 1883, the court made an order setting forth, that the process of the court and a copy of the bill had been duly served upon the defendants, that they had not appeared or answered, and that, on proof of service of the above named motion, no one appearing for the defendants, it was ordered that the plaintiff have leave to enter the default of the defendants and to proceed with the cause ex parte, and that he have sixty days to take and put in his proofs. It also specified the officers before whom proofs might be taken. Documentary and oral proofs were put in, the former includ ing a copy of the proceedings in the Patent Office, by which it appeared that the date of the last proceeding in the application was the making of the decree of January 30, 1880, by the Supreme Court of the District of Columbia. No one appeared for the defendants on the taking of any of the proofs. On the 14th of April, 1884, the Supreme Court, in special term, no one appearing for the defendants, made an order that the cause be heard in the first instance by the general term. On the 30th of April, 1884, Benjamin Butterworth, having succeeded Mr. Marble as Commissioner of Patents, moved the court, in general term, to dismiss the bill and set aside the order entering the default of the defendants, and for leave to make a defence in the cause, assigning as grounds for the motion that the Secretary of the Interior was not a proper

Argument for Appellant.

party to the suit; that Mr. Butterworth had succeeded Mr. Marble as Commissioner of Patents; and that the application for the patent had been abandoned by reason of the failure to prosecute the same within two years after the last action thereon, of which notice was duly communicated to the applicant. The court in general term made an order allowing the plaintiff to amend his bill, striking out the name of the Secretary of the Interior as a defendant and adding as a defendant the successor in office of Mr. Marble. On the same day, the court in general term made a decree, on a hearing of counsel for both parties, dismissing the bill, with costs. From that decree the plaintiff appealed to this court.

Mr. Amos Broadnax for appellant.

This is an original proceeding - not an appeal from the decision of the Commissioner of Patents.

It was contended by the attorney for the Commissioner of Patents in the court below, that under § 4894 of the Revised Statutes, complainant's right to a patent was barred by failure to file his bill within the time limited by that section. This question was twice argued before the court below, once on motion, and again at final hearing. That court was, however, unanimously of opinion, that § 4894 referred only to applications pending before the Patent Office, and that it did not limit the time when a bill in equity to obtain a patent might be filed.

The statute in question is as follows: "SEC. 4894. All applications for patents shall be completed and prepared for examination within two years after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable."

The language of this section is explicit. It refers only to applications which are subject to "examination" by the Commissioner of Patents. The fact that the commissioner is the

Argument for Appellant.

only person who is authorized to investigate and determine the question of abandonment under this section seems to be conclusive on this point.

The decision of the Commissioner was affirmed by the Dis trict Supreme Court on January 30, 1880, and this bill was filed on May 3, 1883. But this proceeding, while it must be supplemental to the proceedings in the Patent Office, is nevertheless an original suit in equity to enforce an equitable right like any other suit in equity. See In re John J. Squire, 12 Off. Gazette, 1025; Whipple v. Miner, 15 Fed. Rep. 117.

It is not seen upon what other ground it can be considered. The statute is silent as to the time within which the bill must be filed, and in the absence of any statutory bar, it becomes a simple question as to whether the complainant intended to abandon his application, and there being no evidence of such intention, it becomes a question whether upon a delay of three years, under the circumstances, in filing the bill, the court will presume abandonment against the inventor. But can the presumption of abandonment arise in this case? The inventor obtained a patent for his invention in England, in May, 1877. On December 1, 1877, he filed this application — three years before his invention was put in public use in this country, which use did not begin until November, 1880.

Now under § 4887 of the Revised Statutes, it is provided

that:

"SEC. 4887. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country, shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years."

The invention in this case was first patented in England.