COMMISSIONER OF PATENTS. See Mandamus.

1. The office of Commissioner of Patents does not disqualify the individual from ob-
taining a patent thereafter for an invention made while holding office. *Foote
v. Frost et al., 421.

CONSTRUCTION OF PATENTS. See Disclaimer, 3; Particular Patents.

Evidence of fraudulent designs on the part of the defendants will incline a court
to a liberal construction of the patent infringed. *Odiorne v. Denney, 270.
CONSTRUCTION OF STATUTES. See Expiration of Patents, 1; Labels.

The rights and remedies conferred by the copyright law are applicable to the
amendatory act of June 18, 1874. *Marsh et al. v. Warren et al., 161.

1. The right to tax the docket fee, where the case is one of a number embraced by
stipulation in a single hearing, the decree in one to stand for the decree in all,
is undoubted. *The Goodyear Dental Vulcanite Company v. Osgood et al., 197.
2. So, too, after issue and interlocutory decree deciding the merits, if the case is
finally dismissed by the court on final decree, and upon motion of the com-
plainants, the docket fee is to be taxed. *Id.;

197.

3. Costs were disallowed, except so far as they had accrued since curing the defect
of non-joinder by the appearance of the omitted partner. *Frese & Co. v. E.
Bachof, 220.

4. The decree below being affirmed as to injunction and reversed as to an account,
the costs in the Supreme Court were taxed against the appellee. *McLean v.
Fleming, 262.

5. Costs allowed the plaintiff, except as to the reference of the cases to the master
and all the subsequent proceedings, with decree for the party in whose favor
the difference in amount of opposing costs should exist. *Ingersoll v. Musgrove
et al., 273.

DAMAGES AND PROFITS. See Injunction, 6, 9.

1. Damages recovered for such infringement will be proportioned to the respective
interests of the parties. *Herring v. Gas Consumers' Association, 225.

2. Damages of a compensatory character may be allowed to a complainant in an
equity suit where it appears that the business of the infringer was so improvi-
dently conducted that it did not yield any substantial profits. *Marsh et al. v.
Seymour et al., 232.

3. The amount of profits and damages arising under infringement being questions
of fact to be satisfactorily proven, and the master having based his report upon
evidence merely in the nature of estimate, opinion, and conjecture, the excep-
tions thereto were sustained and nominal damages alone awarded. *Ingersoll
v. Musgrove et al., 273.

4. Where an invention is confined to improvements in machine details, it is neces-
sary in accounting to distinguish between profits arising from the sale of the
completed machine and those which are justly due to the use of the patented
details. *Garretson v. Clark et al., 343.

5. Other features than those infringed, equally essential and beneficial, may con-
tribute to the value of the organized machine: Hence, in any just estimate,
these should be eliminated and the inquiry directed to the benefit of the in-
fringed elements considered alone. *Id.

6. Nor is it any true measure that the machine, as improved, commands a virtual
monopoly of the market. Other circumstances quite aside from the value of
the added improvements may tend to give them a fictitious importance. *Id.
7. Accordingly, where the plaintiff proved nothing but the profits of the finished
machine, and it was not shown that these were due entirely to the presence of
the patented details, nominal damages alone were awarded. *Id.

8. In every case reliable and tangible evidence must be given, tending either to

DAMAGES AND PROFITS-Continued.

apportion the profits and damages between the patented and unpatented parts,
or else, if these be calculated upon the entire machine, then it must clearly
appear that the value of the machine as a marketable article is properly and
legally attributable to the patented features. *Id.

9. Whatever distinctive profit belongs to the use of the patented improvement, the
plaintiff is entitled to recover. *Schillinger v. Gunther, 396.

10. But where the quantum of such profit is not shown affirmatively by license-fee
or otherwise, and it does not appear that the profits of infringing manufacture
are wholly due to the use of the improvement, nominal damages alone can be
awarded. *Id.

11. Certain findings of the master accordingly overruled, the profits of manufacture
not being apportioned between those arising from the general character of the
pavement and those pertaining to the use of the specific improvement pat-
ented. *Id.

12. In a suit in equity for the infringement of a patent by the use of the patented in-
vention, the patentee is entitled to recover the profits resulting to the infringer
from the use of the invention. * Knox et al. v. Great Western Quicksilver Mining
Company, 425.

13. In such case the patentee is not limited in his recovery in equity to the amount
of the royalty established by him for the use of his invention. *Id.
14. The profits which the patentee is entitled to recover in equity from the infringer
by use of the patented invention are not the profits of the business, but the
value of the advantages derived by the infringer from the use of the invention
over what he would have by the use of other machines then known and open
to the public, and adequate to produce an equally beneficial result. *Id.
15. The fact that the general result of the business is unprofitable does not affect the
recovery. The question is, What advantage in the reduction of cost, &c., has
been derived from the use of the invention? *Id.

16. The account should be extended to the time of the taking, including the profits
resulting from the use of the invention, whether by means of the particular
machine in use at the time of the commencement of the suit, or of others sub-
sequently constructed and used. *Id.

17. For the purposes of an account of profits, the comparison of the invention should
be made with other machines in existence, or known, and open to public use
at the time of the infringement complained of, and not with machines subse-
quently invented, or for the first time constructed or known, or machines not
open to public use.
*Id.

DEFENSES. See Practice in Courts, 8, 10, 11, 17, 19, 22.

1. The objection that the patent was for a simple substitution of one material for
another, involving no invention, not having been set up regularly in the an-
swer, was overruled. *Comstock et al. v. Sandusky Seat Company et al., 182.
2. An objection to the validity of a patent because of an insufficient specification,
raised in argument but not set up as a defense in the answer, cannot be con-
sidered. Rubber Co. v. Goodyear, 2 Fish., 509; 9 Wall., '793.
* Wonson v. Pe-
terson et al., 214.

3. Since a patent may be invalid for several reasons under the law, an assignment
of error which gave no more explicit cause than "that the patent is invalid »
was overruled. * Marsh et al. v. Seymour et al., 232.

DEGREE. See Inventions, 13; Infringement, 30.

DESIGNS. See Division of Applications, 4; Infringement, 47; Particular Patents, 62,
63, 64.

1. Hence, the figure of a boy, together with certain words, printed in minute
squares upon a sampler-card, is the subject of a design-patent. It is not to be

DE SIGNS-Continued.

attached as a distinguishing label or symbol to certain merchandise, but is the
article itself. Ex parte Parker, 14.

2. Doubted whether a frusto-pyramidal shaped packing-can, with rounded corners,
for containing preserved meat, and which facilitates its removal in solid mass,
is a patentable device, because lacking in novelty. *Wilson Packing Company
et al. v. Clapp, 203.

3. Nor is there objection to making claim to each subordinate feature, provided it
is of a distinct and separable part of the whole design. Ex parte Rogers et
al., 62.

4. To constitute a new design, that would be patentable as such, it must be so dif-
ferent from all others existing before as to appear to be such to ordinary observ
ers. *Perry et al. v. Starrett, 368.

5. Under section 4929 of the Revised Statutes, a design patent may be granted for
any shape or configuration of an article of manufacture which is new and
useful, whether it is or is not at the same time ornamental. Ex parte Shoen-
inger, 128.

DILIGENCE. See Abandonment, 56, 68; Interferences, 14.

DISCLAIMER. See Interferences, 1, 2; Particular Patents, 13; Reissue, 16.

1. A disclaimer contained in an original patent may be omitted upon reissue, notwith-
standing it was entered to avoid a threatened interierence, it being clearly
established that the admission which it makes is an inadvertence. Daniels v.

Chestermann, 26.

2. To omit a disclaimer on reissue which is entirely consistent with the limited in-
vention disclosed by the original patent, and obviously not entered through
inadvertence, accident, or mistake, will not permit the insertion of a claim
broader in scope than the invention for which the original patent was issued.
Funck v. Doty,. 18.

3. In the English patent corresponding to the domestic one upon which suit was
brought, a disclaimer to certain general features of invention was entered,
presumably in view of the fact that such features had already been disclosed
by an antecedent patentee. Held, that the American patent, to be valid, must
be likewise limited to the particular means set forth, even though it did not con-
tain the restricting disclaimer. *Ashcroft v. The Boston and Lowell Railroad
Company, 249.

4. The disclaimer has no relation to the statements of effect or result contained in
the specification, but simply concedes that certain subject-matter stated is not
of the invention of the patentee. * Shillinger v. Gunther, 396.

5. The provision of section 4917, Revised Statutes, that no disclaimer by a patentee
"shall affect any action pending at the time of its being filed, except so far as
may relate to the question of unreasonable neglect or delay in filing it," will
be applied to interferences, which will not generally be dissolved on account
of disclaimers made pendente lite. Waring v. Wilkerson, 120.

DIVISION OF APPLICATIONS. See Designs, 3.

1. Division of an application required where distinct inventions pertaining to steam-
condensing apparatus, to air-pumps, and valve-rods, were embraced in it.
Ex parte Hamilton, 16.

2. In one sense the inventions relate to steam-engines, but in an advanced state of
the art specific improvements of an original machine may arise which will be
equally applicable to every species of the machine. It is absolutely necessary
to keep such matters within well-defined limits of classification. Id.

3. A mode of manufacturing ornamented felt fabrics, the machinery employed, and
the article produced declared to be properly joined in a single application. Ex
parte Dailey, 3.

DIVISION OF APPLICATIONS-Continued.

4. An application for a design-patent in analogy to an application for a mechanical
patent need not be divided if the separate subordinate designs to which claim
is made form, when united, one principal and complete design. Ex parte Rogers
et al.,
62.
5. In a sewing-machine, if the combination of the trimmer and the mechanism for
moving the cloth laterally is an invention, then the other subordinate construc-
tions and combinations—improvements upon the two elements of this combina-
tion-may be considered as parts of the same invention, and be included in the
same application. Ex parte Bigelow, 65.

6. The claims for the corn-planter and cotton-seed planter cannot, under Rule 15, be
united as separate claims in one patent. Ex parte Cardwell, 124.

7. Where three separate devices, which, by their peculiar construction and adapta-
tion, constitute one of those inventions which lie mainly in a series of devices
forming a complete set, the operation of each in a certain order being necessary
to accomplish the desired result, a single application containing them need not
be divided. Ex parte Gokey, 144.

DOUBLE USE. See Inventions, 9–11; Particular Patents, 77–79.

DRAWINGS. See Applications, 1,2; Priority of Invention, 1; Reissues, 6, 15.

1. Illustrated drawings of conceived ideas do not constitute an invention, and unless
they are followed u
up by a seasonable observance of the requirements of the
patent laws they can have no effect upon a subsequently-granted patent to
another. * Draper v. The Potomska Mills Corporation, 192.

2. Where a patent is assailed for lack of novelty, sketches and drawings may be
resorted to to fix the date of inceptive invention, and if there has been no un-
reasonable delay subsequently in adapting the invention and applying for
patent the protection of the patent will be carried back to the date thus estab-
lished.
* Id.

3. Corroborated testimony respecting certain unpreserved drawings illustrative of
the invention not wholly disregarded where the patentee's efforts prior to their
date of making, and his subsequent achievements, brought them clearly within
the line of invention pursued. Wyman v. Knowles, 35.

DUPLICATION. See Infringement, 12, 38.

EMPLOYER AND EMPLOYE. See Infringement, 15.

1. An employer is entitled to use the suggestion or invention of an employé which
is an improvement ancillary to a preconceived plan of reorganizing an old ma-
chine. Yost et al. v. Powell, 23.

*

2. The mere fact of employment gives to the employer no title in letters patent for
inventions made by the workman while in his service. Whiting v. Graves
et al., 208.

3. A workman engaged to make improvements in the special machinery of a fancy
dry-goods manufactory, of which his employer is to have the fullest benefit,
forfeits no part of his title to letters patent for inventions which are of general
applicability and not confined to the specialties of construction in the factory
machinery. *Id.

4. The terms of the particular contract may operate as a license to the employer to
use machinery invented by the workman and put in use during his employ-
ment, but it would not of itself confer any legal title to the invention or to
letters patent protecting it. *Id.

5. An exclusive license for the use of certain patented machinery, invented and
constructed during the term of service, results to an employer where the work-
man agreed to give the employer the exclusive benefit of his inventive facul-
ties and of such inventions as he should make in a particular class of ma-
chinery during the period of employment. * Wilkens V.
Spafford, 227.

EMPLOYER AND EMPLOYE-Continued.

6. So, too, an agreement that the employer was to have the exclusive benefit of the
workman's services in making machinery and improvements in the employer's
premises operates to license the use of machinery perfected and constructed, or
in course of construction, during the term of service, although it had actually
been invented and patented by the workman prior to such service. *Id.
EQUITY. See Infringement, 10, 15, 27.

1. In a court of equity, a party holding an equitable title cannot be ousted of his
equitable rights by the holder of the legal title, who in such case stands as
trustee for the party beneficially interested. *Whiting v. Graves et al., 208.
2. An equity court will not entertain jurisdiction of a matter which the person has
had opportunity to litigate in another court, and which has there been decided
against him, unless it appears that circumstances beyond his control prevented
his making the defense or trying the question. *Brooks v. Moorhouse, 211.
EQUIVALENTS. See Infringement, 1, 8, 12, 20, 23, 30, 46; Interferences, 7; Joint
Inventions, 4; Particular Patents, 11, 83; Priority of Invention, 5.

1. The explosive compound consisting of a combination of nitro-glycerine with in-
fusorial earth (Reissue Letters Patent No. 5,799) is infringed by one in which
the nitro-glycerine is mixed with a mealed powder composed of nitrate of soda,
charcoal, and sulphur, it appearing that the powder, as an ingredient, is sub-
stantially the same as the infusorial earth in function and effect, although
possessed of additional advantageous qualities as well. *The Atlantic Giant
Powder Company v. Goodyear. Same v. Townsend, 163.

2. When a substitute is used for one ingredient in a patented combination which
has every property and performs every function of the original in the combi-
nation, it does not cease to be an equivalent because, in addition, it does
something more and better. *Id.

3. Similarities or differences are not to be judged by names. One device is substan-
tially the same as another if it performs substantially the same functions in
substantially the same way to obtain the same result, and this though they
differ in name, form, or shape. *The Union Paper-Bag Machine Company and
Cupples v. Murphy et al., 11, 199.

4. The term "equivalents” in the claims being construed with reference to the
essential characteristics of the invention set forth in the specification relieves
the patent from the objection of lack of novelty. The prior devices accom-
plish the same result by different means, and are not "equivalents" under the
limitation. *Miller's Falls Company v. Ives & Co., 309.

5. Celluloid and rose pearl held to be the substantial equivalent of the hard rubber
or vulcanite, in all essentials necessary to the successful practice of the inven-
tion, and their use a violation of the rights under the Cummings patent.
* Goodyear Dental Vulcanite Company et al. v. Preterre, 324.

6. The facts established by the evidence in relation to such equivalency being dif-
ferent from those appearing in Goodyear Dental Company v. Davis et al. (12
OFFICIAL GAZETTE, 561), that case not deemed to be in point, although it de-
clared the non-equivalent character of celluloid. *Id.

7. It is now well settled that the patentee or owner of a patent for a combination
is as much entitled to equivalents as the patentee or owner of any other class
of inventions. By an equivalent in such a case it is meant that the element
or ingredient substituted for the one withdrawn performs the same function
as the other, and that it was well known at the date of the patent in question
as a proper substitute for the one omitted in the patented combination.
* American Whip Company v. Lombard, 433.

ESTOPPEL. See Abandonment, 9; Interferences, 1.

1. The defendant in a suit at law for infringement agreed with the plaintiff, for a
valuable consideration, to discontinue the manufacture of the infringing arti-