2. Bills to Enjoin Libel of Patent Right.-A court of equity will not enjoin a libel in relation to matters connected with patent rights, but a false and malicious statement published and used for the wilful purpose of inflicting an injury, authorizes the court to protect the injured party by an injunction.2 3. Fraudulent Marking of an Article "Patented."-The United States statutes give a qui tam action3 against the offender for fraudulently marking articles in three cases. (a) IMITATING THE NAME OF PATENTEE.-I. Where one marks upon anything made, used or sold by him, the name or any imitation of the name of any person who has obtained a patent therefor without the consent of such patentee, or his assigns or legal representatives.4 In some cases the court has refused to act except in cases in the district where application to stay proceedings was made. Chemical Works v. Hecker, II Blatchf. (U. S.) 552; s. c., 5 Pat. Off. Gaz. 644; Asbestos Felting Co. v. United States etc. Felting Co,, 13 Blatchf. (U. S.) 453. But where the suit is not vexatious the court will not restrain. Tuttle v. Matthews, 28 Fed. Rep. 98. 1. Palmer v. Travers, 20 Fed. Rep. 501; Francis v. Flinn, 118 U. S. 385; Kidd v. Horry, 28 Fed. Rep. 773; Baltimore Car Wheel Co. v. Bemis, 29 Fed. Rep. 95; International Tooth Crown Co. v. Carmichael, 54 Pat. Off. Gaz. 1116; Kelley v. Ypsilanti Dress Stay Mfg. Co., 44 Fed. Rep. 19; Whitehead v. Kitson, 119 Mass. 484. Especially where the purpose is merely to save persons from incurring liability by purchasing an infringing article. Chase v. Tuttle, 27 Fed. Rep. 110; Boston Diatite Co. v. Florence Mfg. Co., 114 Mass. 69. Ide v. Ball Engine Co., 31 Fed. Rep. 901. A court will not enjoin the publication of an injunction decree. Westinghouse Air Brake Co. v. Carpenter, 32 Fed. Rep. 545. 2. Ide v. Ball Engine Co., 31 Fed. Rep. 901; Emack v. Kane, 34 Fed. Rep. 46; Hovey v. Rubber etc. Pencil Co., 57 N. Y. 119; Snow v. Judson, 38 Barb. (N. Y.) 210; Croft v. Richardson, 59 How. Pr. (N. Y.) 356; Wren v. Weild, 42 B. Div. (Eng.) 730; Kelley v. Ypsilanti Dress Stay Mfg. Co., 44 Fed. Rep. 19; Bell v. Singer Mfg. Co., 65 Ga. 452. In England the rule prior to the Patent act was that allegations must not only assert the statement to be un true, but that it was without reasonable and probable cause. Halsey v. Brotherhood, 15 Ch. Div. L. R. (Eng.) _514; Challender v. Royle, 38 Ch. Div., L. R. (Eng.) 425; Wren v. Weild, 42 B. (Eng.) 730; Prudential Assoc. Co. v. Knott, 10 Ch. App. (Eng.) 143. Later English rulings, see Colley v. Hart, 44 Ch. Div. (Eng.) 579. Practice.-Ordinarily, a bill praying relief both for infringement and against the publication of slanderous circulars concerning the patent is multifarious. Fougeres v. Murbarger, 44 Fed. Rep. 292. Jurisdiction.-The action is in the federal courts only. Dudley v. Mayhew, 3 N. Y. 9; Middlebrook v. Broadbent, 47 N. Y. 443; Childs v. Tuttle, 54 Hun (N. Y.) 57. 3. One-half of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offense may have been committed. U. S. Rev. Stats., § 4901. 4. U. S. Rev. Stats., § 4901. Practice. The action cannot be prosecuted in the name of the United States alone; it should be in the name of the informer. If the United States be joined it should be "suing as well on account of the United States as of himself." United States v. Morris, 2 Bond (U.S.) 23; s. c., 3 Fish. Pat. Cas. 72; Winne v. Snow, 19 Fed. Rep. 507. Place to Bring Suit.-Suit must be brought in the place where the offense was committed. Hat Sweat Mfg. Co. v. Davis Sewing Mach. Co., 31 Fed. Rep. 294. Amount recoverable is just $100 for each offense. Stimpson v. Pond, 2 Curt. (U. S.) 502. (6) FRAUDULENTLY PIRATING THE NAME OF ANOTHER'S PATENT. 2. Where one placed the word "patent" or similar words on a patented article with intent to imitate or counterfeit the mark or device of the patentee without the license or consent of such patentee, or his assigns or legal representatives,1 (c) FRAUDULENTLY MARKING AN UNPATENTED ARTICLE.— 3. The constituents of the third action are: (1) That the defendant has placed the word "patent," or any word purporting that the same is patented;2 (2) that he has done so on an unpatented article; (3) and that he has done so for the purpose of deceiving the public, Special damage cannot be pleaded. Winne v. Snow, 19 Fed. Rep. 507. Respondent Superior.-An employer who orders goods to be marked patented is responsible for the acts of his employees in so marking them. Kass v. Hawlowetz, 33 Pat. Off. Gaz. 1135; Nichols v. Newell, I Fish. Pat. Cas. 647. Limitation.-Action must be brought within five years. Stimpson v. Pond, 2 Curt. (U. S.) 502. Certainty in pleading to a common extent after the analogy of the State practice in civil actions, is sufficient. Fish v. Manning, 31 Fed. Rep. 340; Hat Sweat Mfg. Co. v. Davis Sewing Mach. Co., 31 Fed. Rep. 294. 1. U. S. Rev. Stat., § 4901. The essentials to maintain an action under this clause are: the placing the word patented, the fact that the article is patented, that the patent belongs to another, that there be an attempt to imitate or counterfeit it, and that there be no consent from a party authorized or who could be deemed authorized to give such consent. French v. Foley, 11 Fed. Rep. 804. Expired Patent.-It has been held on a bill in equity that while, after the expiration of a patent, the public have the right to use the patent, yet no one can represent that the goods are made by the patentee. Frost v. Rends Kopf, 42 Fed. Rep. 408. 2. If the word patent is put on in any way or in any part of the article it answers the statute. Nichols v. Newell, I Fish. Pat. Cas. 647. But the use of the phrase "patent applied for" is not a violation of the statute; it does not make it appear that the article is patented. Schewbel v. Bothe, 40 Fed. Rep. 478. 3. A fraud with reference to an article actually patented is not under the contemplation of this clause of the act. French v. Foley, 11 Fed. Rep. 804; Wilson v. Singer Mfg. Co., 9 Biss. (U. S.) 173; s. c., 4 Bann. & Ard. Pat. Cas. 637; s. c., 12 Fed. Rep. 298. Where defendant justifies under a patent, the court will construe the patent, and will determine whether the defendant's device is made under the patent. Hawlowetz v. Kass, 25 Fed. Rep. 765; s. c., 33 Pat. Off. Gaz. 1499; Tompkins v. Butterfield, 33 Pat. Off. Gaz. 758; s. c., 25 Fed. Rep. 556. However, the jury were directed to find whether a new or different arrangement of parts from the arrangement of same parts in the patent, served any new or additional use that is valuable on the market. Duval v. Banker, 45 Pat. Off. Gaz. 591. 4. Nichols v. Newell, 1 Fish. Pat. 647; Oliphant v. Salem Flouring Mills Co., 5 Sawy. (U. S.) 128; s. c., 3 Bann. & Ard. Pat. Cas. 256; Walker v. Hawxhurst, 5 Blatchf. (U. S.) 494; Kass v. Hawlowetz, 33 Pat. Off. Gaz. 1135. "For the purpose of deceiving the public" means "the purpose of making the public believe that the article is covered by a patent." Tomkins v. Butterfield, 33 Pat. Off. Gaz. 758; s. c., 25 Fed. Rep. 556. There need not be more shown than a reckless disregard of the question whether there be a patent or not, to sustain this portion of the charge. Tompkins v. Butterfield, 33 Pat. Off. Gaz. 758. The question whether the false marks were put on for the purpose of deceiving the public is a question of fact; although the presumption is that, if the article was unpatented, they were put on for the purpose of deception. Oliphant v. Salem Flouring Mills, 5 Sawy. (U. S.) 128; s. c., 3 Bann. &. Ard. Pat. Cas. 256. But putting on a hose supporters the date of a patent for grain ties is not all of which must be proved; whether the plaintiff's evidence must convince the jury beyond a reasonable doubt,2 or whether by a reasonable preponderance of evidences is contradictorily decided. XXI. MARKING ARTICLE "PATENTED" BY PATENTEE. It is the duty of all patentees and their assignees and legal representatives to notify the public by marking the article made that it is patented, in default of which damages cannot be recovered,5 unless it be proved that the defendant was notified of the infringement and continued to infringe after notice. evidence of intent to deceive; the device is not clearly outside the patent. Frost v. Rindskopf, 42 Fed. Rep. 418; but the conduct of the defendant may be gone into by either side both during and before the act, to show the intent. Nichols v. Newell, 1 Fish. Pat. Cas. 647. But putting on a structure the word patented with the date of the patent, after the patent has expired will negative the idea of fraud. Wilson v. Singer Mfg. Co., 11 Biss. (U. S.) 298; s. c., 12 Fed. Rep. 57 Respondant Superior.-A label which calls for a patent not applying to the articles on which it was placed, it having been put on them by an employee afterwards a director, it was held that the defendants were not affected by his knowledge if they had no actual knowledg themselves. Lawrence v. Holmes, 45 Fed. Rep. 357. 1. Nichols v. Newell, I Fish. Pat. Cas. 647. 2. Tompkins v. Butterfield, 33 Pat. Off. Gaz. 758. 3. Hawlowetz v. Kass, 33 Pat. Off. Gaz. 1499. Deverall v. Banker, 45 Pat. Off. Gaz. 591. These cases are both in the second circuit and establish the rule there In that circuit also the courts have refused to treat the action as a semi-criminal one, or to compel the plaintiff to prove his case with the same particularity, and exactness as a trial of an indictment. Hawlowetz v. Kass, 33 Pat. Off. Gaz. 1495; s. c., 25 Fed. Rep. 765; Kass v. Hawlowetz, 33 Pat. Off. Gaz. 1135; Fish v. Manning, 31 Fed. Rep. 340. 4. U. S. Rev. Stats., § 4900. The statute refers only to a patenter; it has no application to an infringer. Herring v. Gage, 15 Blatchf. (U. S.) 124; s. c., 3 Bann. & Ard. Pat. Cas. 396. Nor any one else. Goodyear v. Allyn, 6 Blatchf. (U. S.) 33; s. c., 37 Fish. Pat. Cas. 374. The statute provides that this marking shall be done "either by fixing (on the article) the word 'patented' together with the day and year the patent was granted; or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label containing the like notice. Where the article can be stamped at a trifling cost, it must be stamped." Putnam v. Sudhoff, 1 Bann. & Ard. Pat. Cas. 198. Presumption as to Marking.-The presumption is that the article was properly marked or the notice otherwise properly attached. Schofield v. Dunlop, 42 Fed. Rep 323; Providence Rubber Co. v. Goodyear, 9 Wall. (U. S.) 788; Goodyear v. Allyn, 6 Blatchf. (U. S.) 33; s. C., 3 Fish. Pat. Cas. 374; Herring v. Gage, 15 Blatchf. (U. S.) 129; Walker on Patents (2nd ed.), § 463. B. U. S. Rev. Stats, § 4900; McComb v. Brodie, I Wood (U. S.) 153; s. C., 5 Fish. Pat. Cas. 384; s. c., 2 Pat. Off. Gaz. 117. This does not affect the right to an injunction. Goodyear υ. Allyn, 6 Blatchf. (U. S.) 33; s. c., 3 Fish. Pat. Cas. 374. 6. U. S. Rev. Stats., § 4900. The burden to prove (where there has been no “marking”) notice and infringement after notice, is on the complainant. Goodyear v. Allyn, 6 Blatchf. (U. S.) 33. But the defendant must first prove that there has been no notice by marking. Schofield v. Dunlop, 42 Fed. Rep. 323. The notice may be verbal or written. New York Pharmical Assoc. v. Tilden, 14 Fed. Rep. 740. There is no trade-mark in the word patented, nor can the patentee claim XXII. REPEAL OF PATENT-1. By Act of Owner of Interfering Patent. A party interested in a patent or in the working of an invention under patent1 may, by bill in equity2 against the owners of an interfering patent, have the patent declared invalid. The decree may declare either of the patents invalid, and other relief may be asked in the bill. A decree, however, relative to the priority of the two patents should be made, unless the court dismiss the bill for lack of interference. The decree affects the interests of the parties to the suit only." 2. Repeal of Patent by the United States.-Patents can be repealed in a proceeding by bill in equitys by the United States the exclusive right to use the word patented on articles manufactured under an expired patent. Fairbanks v. Jacobus, 14 Blatchf. (U. S.) 339; s. c., 3 Bann. & Ard. Pat. Cas. 108. A party, however, need not notify the infringer of his infringement before he brings his action. Royer v. Coupe, 29 Fed. Rep. 358. 1. U. S. Rev. Stats., 4918, Gay v. Cornell, Blatchf. (U. S.) 506; Gold & Silver Ore etc. Co. v. United States Ore etc. Co., 6 Blaatchf. (U. S.) 307; S. C., 3 Fish. Pat. Cas. 489. The complainant must have ob tained or be interested in a patent, not merely claim to be the inventor of an invention patented to another. Hoeltge v. Hoeller, 2 Bond (U. S.) 386; Mason v. Rowley, 3 Am. L. T., N. S. 8. 2. Liggett etc. Tobacco Co. v. Miller, 1 McCrary (U. S.) 31; s. c., 1 Fed. Rep. 203; s. c., 5 Bann. & Ard. Pat. Cas. 237; s. c., 17 Pat. Off. Gaz. 798. 3. U. S. Rev. Stats., § 4918. The interfering patent may be older or younger than the patent owned by complainant. Sturges v. Van Hagen, 6 Fish. Pat. Cas. 572. But it must be an interfering patent. Garratt v. Seibert, 98 U. S. 75; s. c., 15 Pat. Off. Gaz. 383; Putnam v. Hutchinson, 12 Fed. Rep. 131; Gilmore v. Golay, 3 Fish. Pat. Cas. 522. But the interference may be either or the whole of the part or of part. Gold & Silver Ore etc. Co. v. United States Ore etc. Co., 6 Blatchf. (U. S.) 307; s. c., 3 Fish. Pat. Cas. 489. 4. But not both; the question brought to issue is only that of priority. Pentlarge v. Pentlarge, 19 Fed. Rep. 817, Lockwood v. Cleveland, 20 Fed. Rep. 164; Sawyer v. Massey, 25 Fed. Rep. 144; American Clay Bird Co. v. Ligowski Clay Pigeon Co., 31 Fed. Rep. 466; Electric Accumulator Co. v. Brush Electric Co., 44 Fed. Rep 602; Foster v. Lindsay, 3 Dill. (U. S.) 126; Method of Attacking Complainant's Patent.-A proper method of making the defense that the patent of complainant is invalid, is by cross-bill as the relief sought is affirmative; but, as the statute gives the court the power on notice to adverse parties and other due proceedings had according to equity, the relief may be had without filing cross-bill. American Clay Bird Co. v. Ligowski Clay Pigeon Co., 31. Fed. Rep. 466. But see Lockwood v. Cleveland, 6 Fed. Rep. 721. Method of Raising Issue Whether There Is an Interference in Fact.-May be raised by demurrer. Morris v. Kempshall Mfg. Co., 20 Fed. Rep. 121. 5. Potter v. Dixon, 5 Blatchf. (U. S.) 160; s. c., 2 Fish. Pat. Cas. 381; American Clay Bird Co. v. Ligowski Clay Pigeon Co., 31 Fed. Rep. 466. 6. Tyler v. Hyde, 2 Blatchf. (U. S.) 308. 7. U. S. Rev. Stat., § 4918. 8. United States v. American Bell Teleph. Co., 128 U. S. 315; s. C., 45 Pat. Off. Gaz. 1311; Mowry v. Whitney, 14 Wall. (U. S.) 434; United States v. Gunning, 18 Fed. Rep. 511. The jurisdiction of a court of equity to repeal a patent is based on the general powers of a court of equity to annul and set aside contracts as instruments obtained by fraud, to correct mistakes made in them and to give all other appropriate relief against documents of that character, such as requiring their delivering up their cancellation or their correction in order to make them conform to the intention of the parties. United States v. American Bell Teleph. Co., 128 U. S.. 315; s. C., 45 Pat. Off. Gaz. 1311. Scire facias is not a proper remedy against the holder of the patent where the patent has been fraudulently obtained.1 XXIII. PROPERTY IN PATENTS (See also LICENSE).-1. Generally. A patent right has always been considered as property.2 The right consists of the right to prevent the use, sale or making of a certain invention by others than the patentee.3 2. Kind of Property.-A patent right is personal property, and after the death of the owner of the patent it vests in the personal representatives of the decedent.5 in America. United States v. American Bell Teleph. Co., 128 U. S. 1311, s. c., 45 Pat. Off. Gaz. 1311. Nor can the attorney general proceed under his own name by information. Atty. Gen. v. Hecker, 2 Bann. & Ard. Pat. Cas. 298; s. c., 32 Fed. Rep. 618. There is no jurisdiction in equity after the patent has expired to repeal the patent. Providence Rubber Co. v. Goodyear, 9 Wall. (U. S.) 811. Nor will a patent be repealed where it is merely alleged that the application had been rejected and the applicant denied a patent by the appellate tribunal, and the patent afterwards granted, possibly otherwise, where the bill to repeal alleged that the same matter was presented in the second application. United States v. Colgate, 32 Fed. Rep. 624. Nor in a case where the suit is in reality in the interest of a private party and the United States is indemnified from loss. United States v. Frazer, 22 Fed. Rep. 106. 1. United States v. American Bell Teleph. Co., 128 U. S. 315; s. c., 45 Pat. Off. Gaz. 1311; United States v. American Teleph. Co., 39 Fed. Rep. 716, s. c., 49 Pat. Off. Gaz. 284, Mahn v. Harwood, 112 U. S. 354. Overruling and reversing United States v. American Bell Teleph. Co., 32 Fed. Rep. 591. See also same case again before the same court in 30 Fed. Rep. 523. 2. McKeever v. United States, 14 Ct. of Cl. 396, Hockett v. State, 105 Ind. 257; Wilson v. Rousseau, 4 How. (U. S.) 646; Patterson v. Kentucky, 97 U. S. 506; Webber v. Virginia, 103 U. S. 347; Hammond v. Mason, 92 U. S. 728; Hendrie v. Sayles, 98 Ü. S. 546; Doughty v. West, 6 Blatchf. (U. S.) 429; s. c., 3 Fish. Pat. Cas. 580; Sloat v. Patten, 1 Fish. Pat. Cas. 154. 3. Jordan v. Overseers of Dayton, 4 Ohio 309; Tod v. Wick, 36 Ohio St. 384; Hawks v. Swett, 4 Hun (N. Y.) 150; Patterson v. Commonwealth, 11 Bush (Ky.) 315; Celluloid Mfg. Co. v. Goodyear Dental etc. Co., 2 Bann & Ard. Pat. Cas. 334; In re Brosnahan, 18 Fed. Rep. 64; Bloomer v. McQuewan, 14 How. (U. S.) 539; Patterson v. Kentucky, 97 U. S. 503; McKeever v. United States, 14 Ct. of Cl. 396; Boyd v. Brown, 3 McLean (U. S.) 295; Dewitt v. Elmira etc. Mfg. Co., 5 Hun (N. Y.) 301. Consequently an authorization by a municipality to its officers to advertise for the lowest bids on a patented article, must mean that the lowest bidder authorized to employ the article is intended. Greaton v. Griffin, 4 Abb. Pr., N. S. (N. Y.) 310. The rights conferred by each patent are separate; no patent gives a right to use improvements and no improvement the right to use the original. Gray v. James, Pet. (C. C.) 394. 4. Shaw Relief Valve Co. v. New Bedford, 19 Fed. Rep. 753; s. c., 28 Pat. Off. Gaz. 283, Bradley v. Dull, 19 Fed. Rep. 913; s. c., 27 Pat. Off. Gaz. 625; Vose v. Singer, 4 Allen (Mass.) 230, Holden v. Curtis, 2 N. H. 61. A patent right has been treated as a chose in action and as analagous to a share of stock. Hull Patent Estate, § 13 etc.; Williams on Personal Property, pp. 98, 244. 5. Shaw Relief Valve Co. v. New Bedford, 19 Fed. Rep. 757; s. c., 28 Pat. Off. Gaz. 283; Bradley v. Dull, 19 Fed. Rep. 913, s. c., 27 Pat. Off. Gaz. 675; Peoria Target Co. v. Cleveland Target Co., 43 Fed. Rep. 922; Hodge v. Nroth Missouri R. Co., 1 Dill. (Ŭ. S.) 104; s. C., 4 Fish. Pat. Cas. 161. An executor can maintain suit on a patent in the same manner as if he were trustee. Providence Rubber Co. v. Goodyear, 9 Wall. (U. S.) 788. The right to take out a patent passes to the personal representatives of a decedent. Stimpson v. Rogers, 4 Blatchf. (U. S.) 333; Rice v. Burt, 16 Pat. Off. Gaz. 1050. |