granted,1 and the names and residences of the persons alleged tohave invented or to have had knowledge of the thing patented,3 and where it was used.4 Where Objection Is to be Taken.-Objection to evidence for lack of notice must be taken at trial or before the examiner, or else notice will be regarded waived. 3. Not Statutory-(a) STATUTE NOT ALL EMBRACING.-Naming certain defenses does not prevent the patentee from making others. The defenses ordinarily enumerated are the following: 1 Blatchf. (U. S.) 445; s. c., 1 Fish. Pat. Cas. 268. 1. The provision that the patent shall not be antedated would seem to, and as practice has done away with two dates of grant and date. 2. Orr v. Merrill, 1 Woodb. & M. (U. S.) 376; Lyon v. Donaldson, 34 Fed. Rep. 789. 3. The names of the persons who invented or have had knowledge, not of the witnesses who were expected to prove the prior invention or knowledge. Woodbury Planing Machine Co. v. Keith, 101 U. S. 479; s. c., 17 Pat. Off. Gaz. 1031; Wilton v. Railroads, Wall. Jr. (C. C.) 196; Many v. Jagger, i Blatchf. (U.S.) 376; Roemer v. Simon, 95 U. S. 218; s. c., 12 Pat. Off. Gaz. 796; Allis v. Buckstaff, 22 Pat. Off. Gaz. 1705; Sutro v. Moll, 19 Blatchf. (U. S.) 89; s. c., 8 Fed. Rep. 909. See Judson v. Cope, 1 Bond (U. S.) 327; s. c., I Fish. Pat. Cas. 615. 4. A notice that a certain machine was used in New York City, N. Y., held sufficient, where the names of witnesses and their residence were given, the court saying, "We do not think that the party giving notice is bound to be so specific as to relieve the other from all inquiry, or effort to investigate the facts. If he fairly puts his adversary in the way that he may ascertain all that is necessary to his defense or answer, it is all that is required." Wise v. Allis, 9 Wall. (U. S.) 737; Wilton v. Railroads, I Wall. Jr. (C. Č.) 192. But a notice which merely states the county where a thing was used, is not sufficiently explicit. Hays v. Sulsor, I Bond (U. S.) 279; s. c., I Fish. Pat. Cas. 532. And the actual place must be designated or it cannot be proved. Dixon v. Moyer, 4 Wash. (U. S.) 68; s. c., I Robb Pat. Cas. 324; Searles v. Bouton, 20 Blatchf. (U. S.) 426; s. c., 12 Fed. Rep. 140; s. C., 21 Pat. Off. Gaz. 1784. A failure to state where the article relied on as an anticipation was used, is fatal to the introduction of the testimony. Silsby v. Foote, 14 How. (U. S.) 218; Roemer v. Simon, 95 U. S. 214; Searles v. Bouton, 12 Fed. Rep. 140; s. c., 21 Pat. Off. Gaz. 1784. The time of the use need not be stated, nor is the defendant bound by such statement when made. Phillips v. Page, 24 How. (U. S.) 164; Evans v. Kremer, 1 Pet. (C. C.) 215; s. c., I Robb Pat. Cas. 66. It is not proper pleading to aver that part of the invented device was in use. Williams v. Empire Transp. Co., 3 Bann. & Ard. Pat. Cas. 533 5. Blanchard v. Putnam, 8 Wall. (U, S.) 420; Roemer v. Simon, 95 U. S. 214; s. c., 12 Pat. Off. Gaz. 796; Graham v. Mason, 5 Fish. Pat. Cas. 6; Brown v. Hall, 3 Fish. Pat. Cas. 531; s. c., 6 Blatchf. (U. S.) 401; Phillips v. Page, 24 How. (U. S.) 168; Webster Loom Co. v. Higgins, 105 U. S. 580; s. c., 21 Pat. Off. Gaz. 2031; Woodbury etc. Planing Mach. Co. v. Keith, 101 U. S. 479; s. c., 17 Pat. Off. Gaz. 1031; Kiesele v. Haas, 32 Fed. Rep. 794; Barker v. Shoots, 20 Blatchf. (U. Š.) 178; s. c., 18 Fed. Rep. 647; American Whip Co. v. Lombard, 4 Cliff. (U. S.) 495; Gibbs v. Ellethorp, 1 McArthur Pat. Cas. 702; Evans v. Hettick, 7 Wheat. (U. S.) 453Court below. 3 Wash. (U. S.) 408. 6. Whittemore v. Cutter, 1 Gall. (U. S.) 429; s. c., I Robb Pat. Cas. 28; Kneass v. Schuylkill Bank, 4 Wash. (U. S.) 9; s. c., 1 Robb Pat. Cas. 303; Grant v. Raymond, 6 Pet. (U. S.) 218; s. c., 1 Robb Pat. Cas. 604; Gardner v. Hertz, 118 U. S. 190; s. c., 35 Pat. Off. Gaz. 999. 7. Walker on Patents (2nd ed.), § 440. The defenses are very analytically considered. They are here grouped more compactly. See Issue of Patents and other sections on Patent Office, supra. Marsh v. Nichols, 128 U. S. 605. (6) DEFENSES IN RELATION TO THE GRANT of the Patent, OR THE APPLICATION.--That the patent was in some manner defective in the grant,1 or the specification or other parts of the application. These defenses can be taken by demurrer sometimes where profert is made,3 or by plea or answer. (c) LICENSE OR RELEASE; ESTOPPEL.-A license in force to use, make or sell the patented invention, or a release by the 1. See Specification, Clearness, Specifications, supra. Kneass v. Schuylkill Bank, 4 Wash. (U. S.) 106. How Set Up.-This defense must in a suit in equity be set up in the answer. Jennings v. Pierce, 15 Blatchf. (U. S.) 42; s. c., 3 Bann. & Ard. Pat. Cas. 361; Goodyear v. Providence Rubber Co., 2 Cliff. (U. S.) 351; s. c., 2 Fish. Pat. Cas. 499. Compare Kneass v. Schuylkill Bank, 4 Wash. (U. S.) 106. The defectiveness of the specification so far as it concerns the ability to make from it is a question of fact. Brooks v. Jenkins, 3 McLean (U. S.) 432; Hawkes v. Remington, 111 Mass. 171; Wood v. Underhill, 5 How. (U. S.) 1; s. c., 2 Robb Pat. Cas. 588; Howes v. Nute, Cliff. (U. S.) 173; s. c., 4 Fish. Pat. Cas. 263. Whether the invention itself is described with reasonable certainty, is a question of law. Lowell v. Lewis, I Mason (U. S.) 187; s. c., 1 Robb Pat. Cas. 131; Wilton v. R. Co., 2 Whart. Dig. 359; Wayne v. Holmes, 1 Bond (U. S.) 27; s. c., 2 Fish. Pat. Cas. 20; Hogg v. Emerson, 6 How. (U. S.) 437. 2. See Specification; Clearness, etc., ante; Robinson on Patents, § 970; O'Reilly v. Morse, 15 How. (U. S.) 62; Carlton v. Bokee, 17 Wall. (U. S.) 472. 3. Where the claims are not distinct, if there is a profert of the patent, the defense can be made a demurrer. Walker on Patents, § 608. 4. Where the specification is at fault by special plea at law. Walker on Pat. (2nd ed.), § 454. It cannot be made by plea in equity. Walker on Patents (2nd ed.), § 605; Goodyear v. Providence Rubber Co., 2 Cliff. (U.S.) 351. 5. Walker on Pat. (2nd ed.), §§ 607, 608; Blandy v. Griffith, 3 Fish. Pat. Cas. 609. 6. See LICENSE, vol. 13, p. 514. This defense should be pleaded specially at law. Mini v. Adams, 3 Wall. Jr. (C. C.) 20. Where a license to run a machine contained a restriction against selling 6 material operated upon by such machine to be carried out of a specified territory and resold as an article of merchandise, the restriction being both an invention by the licensee and a condition of the grant-held, that under no circumstances could such material, with the privity or consent of the licensee, be sold out of the territory as an article of merchandise, or, with his privity or consent, be sold within the territory to be carried out and resold as such article of merchandise. Further, that a provisional injunction would be granted against such licensee to restrain his use of the machine, if applied for during his violation of such restriction; but such injunction was refused where it appeared that the licensee had violated the restriction under a misapprehension of his rights, and had discontinued the violation. Wilson v. Sherman, 1 Blatchf. (U. S.) 536. See also Burr v. Duryee, 2 Fish. Pat. Cas. 275. Or the injunction may be granted unless the licensee will conform to the conditions of the license. Brooks v. Stolley, 3 McLean (U. S.) 523; s. c., 2 Robb Pat. Cas. 281. Where the license has been forfeited, the further working by the former licensee will be enjoined as an infringement. Woodworth v. Cook, 2 Blatchf. (U. S.) 151; Day v. Hartshorn, 3 Fish. Pat. Cas. 32; Cohn v. National Rubber Co., 5 Bann. & Ard. Pat. Cas. 568; s. c., 15 Pat. Off. Gaz. 829; Goodyear v. Congress Rubber Co., 3 Blatchf. (U. S) 449; Armstrong v. Hanlenback, 3 N. Y. Leg. Obs. 43. A suit in equity, however, cannot be maintained to forfeit the license for condition broken. Morse v. O'Reilly, 6 Pa. L. J. 501; Brooks v. Stolley, 3 McLean (U. S.) 523; s. c., 2 Robb Pať. Cas. 281. A license may be proved by oral testimony where there has been no written agreement. Black v. Hubbard, 3 Bann. & Ard. Pat. Cas. 39; s. c., 12 Pat. Off. Gaz. 842. At law this defense should be raised patentee or plaintiff,1 or an estoppel2 to bring suit, can be set up as a defense. (d) EXPIRATION OR REPEAL OF PATENTS.-The expiration. or repeal of the patent prior to the infringement is a good defense in law3 and before the bringing of suit to a suit in equity.4 (1) Prior Foreign Patents to Inventor:--Unless the invention has been in public use in the United States for more than two years prior to the application for a patent,5 a prior foreign pat by special plea, but may probably be raised by general issue. În equity by plea or answer. Walker on Patents, (2nd ed.), §§ 465, 618. 1. Bendell v. Denig, 92 U. S. 721, Bailey v. Bussing, 28 Conn. 461. be This defense should at law pleaded specially, but may be proved under general issue. In equity by plea. Walker on Patents (2nd ed.), §§ 465, 619; Daniels' Chancery Practice, § 669. 2. Parkhurst v. Kinsman, 1 Blatchf. (U. S.) 488; Concord v. Norton, 16 Fed. Rep. 477; Dickerson v. Colgrove, 100 U. S. 578, Morgan v Chicago etc. R. Co., 96 U.S. 716; Barnard v. Campbell, 55 N. Y. 456, Rice v. Barrett, 116 Mass. 312, Bronson v. Campbell, 12 Wall. (U. S.) 681. But mere laches is not an estoppel in a suit at law. Concord v. Norton, 16 Fed. Rep. 477. Nor is taking out several patents an estoppel to show that the invention was joint. Barrett v. Hall, 1 Mason (U. S.) 477; s. c., I Robb Pat. Cas. 207. See similarly Allen v. Blunt, 2 Woodb. & M. (U. S.) 121; s. c., 2 Robb Pat. Cas. 530. Great laches of complainant is an estoppel to a suit in equity. Piatt v. Vattier, 9 Pet. (U. S.) 405; Wyeth v. Stone, 1 Story (U. S.) 273; Wallensak v. Reiher, 115 U. S. 101; Kittle v. Hall, 29 Fed. Rep. 508. A delay of two years has been held sufficient to estop complainant in an action in equity. Sperry v. Ribbans, 3 Bann. & Ard. Pat. Cas. 260. But a delay to enforce a right after the defendant has been notified, and continues notwithstanding to infringe will not estop a party. Concord v. Norton, 16 Fed. Rep. 477. Striking out a portion of an application at the request of the Patent Office on the allegation that it was a duplication of the part allowed, does not estop the inventor from setting up the claim to a construction covered by the part stricken out. Ewart Mfg. Čo. v. Bridgeport etc. Iron Co., 31 Fed. Rep. 149. Generally it is an estoppel only where there is a duty on party alleged to be estopped which is violated. Pickard v. Sears, 6 Ad. & El. (Eng.) 469; Young v. Grote, 4 Bing. (Eng.) 253; Bank of U. S. v. Lee, 13 Pet. (U. S.) 107; Reay v. Raynor, 19 Fed. Rep. 308; s. c., 22 Blatchf. (U. S.) 13; s. c., 26 Pat. Off. Gaz. 1111; New York Grape Sugar Co. v. Buffalo Grape Sugar Co., 21 Blatchf. (U. S.) 519; s. c., 18 Fed. Rep. 638; s. c., 25 Pat. Off. Gaz. 1076; Bassett v. Bradley, 148 Conn. 224; Drexel v. Berney, 16 Fed. Rep. 522; s. c., 21 Blatchf. (U. S.) 348; Concord v. Norton, 16 Fed. Rep. 477. This defense is raised by special plea at law, or plea in equity. Walker on Patents (2nd ed.), §§ 470, 661. In this country equitable estoppel is a defense at law. Concord v. Norton, 16 Fed. Rep. 477. An admission is not an estoppel if not acted upon. Gear v. Grosvenor, I Holmes (U. S.) 215; s. c., 6 Fish. Pat. Cas. 314; s. c., 3 Pat. Off. Gaz. 380; Commercial Mfg. Co. v. Fairbank Canning Co., 27 Pat. Off. Gaz. 78; s. c., 36 Pat. Off. Gaz. 1473. 3. See Duration of Right, supra. There is no precedent to show what the pleading should be where the patent has been repeated. See Walker on Patents, 461. Where it has expired, the plea at law is a special one. Walker on Patents (2nd ed.) 462. In equity the defense of repeal can be made by plea or answer. The defense that the patent has expired by demurrer, if sufficient, appears on the record by answer otherwise. Walker on Patents §§ 614, 615. 4. See Jurisdiction supra. of Equity, 5. U. S. Rev. Stats., § 4887. American Hide etc. Co. v. American Tool Co., 1 Holmes (U. S.) 503; s. c., 4 Fish. Pat. Cas. 284; Henry v. Providence Tool Co., 3 Bann. & Ard. Pat. Cas. 501; s. c., 14 Pat. Off. Gaz. 855; Vogeley v. Noel, 18 Fed. Rep. 827. 6. French v. Rogers, 1 Fish. Pat. ent granted to the inventor1 does not debar him from obtaining a patent or make the patent granted invalid.2 (2) Limitation of Term Because of Prior Foreign Patent.-A patent granted on an invention previously patented to the applicant in a foreign country is limited to expire with the foreign patent; and, where there are more than one, with the patent having the shortest term.3 In computing the term of the foreign patents, the original term and such extensions as are granted, of course, are to be included, and the term of the American patent is Cas. 133; In re Cushman, I McArthur Pat. Cas. 577. The priority is that of the grant, not of the application. Bate Refrigerating Co. v. Gillett, 13 Fed. Rep. 553; Gramme Electrical Co. v. Arnoux etc. Electric Co., 25 Pat. Off. Gaz. 193; s. c., 21 Blatchf. (U. S.) 450; Globe Mail Co. v. Superior Mail Co., 27 Fed. Rep. 450. Under the old statutes of March 3, 1839, and July 4, 1836, it was different. French v. Rogers, 1 Fish. Pat. Cas. 133. A patent which was granted after the date of the sealing of the provisional specification, but before the seal ing of the complete specification, does not come within the rule. Emerson v. Lippert, 31 Fed. Rep. 911. See Brooks v. Norcross, 2 Fish. Pat. Cas. 61; Howe v. Morton, 13 L. Rep. (U. S.) 70; American etc. Boring Co. v. Sheldon, 17 Blatchf. (U.S.) 303; s. c., 4 Bann. & Ard. Pat. Cas. 603; Schoerken v. Swift etc. Co., 19 Blatchf. (U. S.) 209. Which declare that a secret patent does not limit a subsequent United States patent granted before the foreign patent was published. Compare Gramme Electrical Co. v. Arnoux etc. Electric Co., 21 Blatchf. (U. S.) 450; s. c., 25 Pat. Off. Gaz. 193. Sealing.--The date of the sealing of the foreign patent, being subsequent, though the application for and date of the foreign patent was prior, held, that the American patent was not limited. Gold & Stock Tel. Co. v. Commercial Tel. Co., 23 Blatchf. (U. S.) 199. The sealing of a British patent is the equivalent of publication. Guarantee Co. v. Sellers, 41 Pat. Off. Gaz. 1165. 1. A foreign inventor is within the statute, even if his foreign patent is invalid. Cornely v. Marckwald, 17 Fed. Rep. 83; s. c., 24 Pat. Off. Gaz. 498; Electric Light Co. v. Electric Lighting Co., 43 Pat. Off. Gaz. 1456. 2. The statute refers to a patent granted to the inventor. A prior patent obtained inimicably after the invention by the American patentee or applicant, does not affect his patent. Kendrick v. Emmons, 2 Bann. & Ard. Pat. Cas. 208; s. c., 9 Pat. Off. Gaz. 201. 3. U. S. Rev. Stats. 4887; Edison Electric Light Co. v. Westinghouse, 40 Fed. Rep. 666. The American patent cannot run longer than seventeen years. U. S. Rev. Stats. § 4887; Weston v. White, 13 Blatchf. (U. S.) 364; s. c., 2 Bann. & Ard. Pat. Cas. 321; s. c., 9 Pat. Off. Gaz. 1196. This provision does not extend to' patents granted prior to 1870. Goff v. Stafford, 3 Bann. & Ard. Pat. Cas. 610; s. c., 14 Pat. Off. Gaz. 748; De Florez v. Raynolds, 8 Fed. Rep. 434; Badische etc. Fabrik v. Hamilton Mfg. Co., 3 Bann. & Ard. Pat. Cas. 235; 8, C., 13 Pat. Off. Gaz. 273. For decision on the prior statutes, see Smith v. Ely, 5 McLean (U. S.) 76; O'Reilly v. Morse, 15 How. (U. S.) 62; Weston v. White, 2 Bann. & Ard. Pat. Cas. 321; s. c., 13 Blatchf. (U. S.) 364; Nathan v. New York etc. R. Co., 2 Fed. Rep. 225; s. c., 5 Bann. & Ard. Pat. Cas. 280; Telghman v. Proctor, 102 U. S. 707; s. c., 19 Pat. Off. Gaz. 859; American etc. Boring Co. v. Sheldon, 17 Blatchf. (U. S.) 303; s. c., 4 Bann. & Ard. Pat. Cas. 603. Guaranty Trust Co. v. Sellers, 41 Pat. Off. Gaz. 1165. "An inventor taking out a patent in the first instance in this country, is entitled to seventeen years' protection; but, if he has previously obtained letters patent in one or more foreign countries, then, while not deprived of his right to a patent here, the term to which the law in such case limits his protection is a period not extending beyond the date of the expiration of that one of the foreign patent first expiring." United States v. Marble, 22 Pat. Off. Gaz. 1365. 4. Bate Refrigerator Co. v. Hammond, 129 U. S. 151; s. c., 46 Pat. Off not shortened by a termination of the foreign patent at a time. previous to the length of the grant by any default of the owner of the foreign patent. The American patent, where the existence of the foreign patent is known to the Patent Office, is limited on its face to the term of the foreign patent; 2 but a failure to so limit it, neither invalidates the patent nor lengthens its term.3 The foreign patent must be substantially identical with the American in order to limit the duration of the latter.4 (e) THAT THE SUBJECT MATTER IS UNPATENTABLE.—The subject matter of the patent is not such as the laws authorize a patent to be granted for.5 6 (f) LACK OF INVENTION.-That the contrivance of the patentee did not involve the exercise of the inventive faculty. This defense can be made sometimes on demurrer, on the plea at Gaz. 689; Consolidated Rolling Mill By this ruling the rulings in Reissner v. Sharp, 16 Blatchf. (U. S.) 383; s. c., 4 Bann. & Ard. Pat. Cas. 366; s. c., 16 Pat. Off. Gaz. 355; Henry v. Providence Tool Co., 3 Bann. & Ard. Pat. Cas. 301; s. c., 14 Pat. Off. Gaz. 855; Bate Refrigerating Co. v. Gillett, 13 Fed. Rep. 553; s. c., 22 Pat. Off. Gaz. 1205; Gramme Electrical Co. Arnaux etc. Electric Co., 17 Fed. Rep. 838; s. c., 25 Pat. Off. Gaz. 1129, are overruled. See Huber v. Nelson Mfg. Co., 38 Fed. Rep. 830; s. c., 46 Pat. Off. Gaz. 1732, which has itself been overruled. V. 1. Pohl v. Brewing Co., 134_U. S., 381; s. c., 51 Pat. Off. Gaz. 156; Electric Light Co. v. Electric Lamp Co., 42 Fed. Rep. 327; s. c., 52 Pat. Off. Gaz. 1570; Holmes Electric Protective Co. v. Metropolitan Burglar Alarm Co., 22 Blatchf. (U.S.) 471; Paillard v. Bruno, 29 Fed. Rep. 864; s. c., 38 Pat. Off. Gaz. 900. Overruling, Haber v. Mfg. Co., 38 Fed. Rep. 830; s. c., 46 Pat. Off. Gaz. 1732. See Badische etc. Fabrik v. Hamilton Co., 3 Bann. & Ard. Pat. Cas. 235; s. c., 13 Pat. Off. Gaz. 273. This doctrine extends to a case where the patentee of a foreign patent, having the right to successive prolongations, fails to secure them by neglect, it being held that this did not invalidate the American patent. Consolidated Roller Mill Co. v. Walker, 43 Fed. Rep. 575 2. Opinion Sec. Int., 21 Pat. Off. Gaz. 1197. The Patent Office can require the applicant to state whether he has any prior patent in foreign countries. United States v. Marble, 22 Pat. Off. 3. Bate Refrigerating Co. v. Gillett, 129 U. S. 151; s. c., 46 Pat. Off. Gaz. 689, Canan v. Pound Mfg. Co., 23 Blatchf. (U. S.) 173; s. c., 23 Fed. Rep. 185; s. c., 31 Pat. Off. Gaz. 119; American Paper Barrel Co. v. Laraway, 28 Fed. Rep. 141; s. c., 37 Pat. Off. Gaz. 674; New American File Co. v. Nicholson File Co., 8 Fed. Rep. 816; Siemens v. Sellers, 23 Pat. Off. Gaz. 2234. Overruling Paillard v. Gautschi, 20 Pat. Off. Gaz. 1893. 4. Siemens v. Sellers, 16 Fed. Rep. 856; s. c., 23 Pat. Off. Gaz. 2234; Clark v. Wilson, 28 Fed. Rep. 95; Commercial Mfg. Co. v. Fairbank Canning Co., 36 Pat. Off. Gaz. 1473; s. c., 27 Fed. Rep. 78. Where the differences between the thing shown and described in the two patents are merely differences of degree, the two patents are subtantially the same. Commercial Mfg. Co. v. Fairbank Canning Co., 27 Fed. Rep. 78. 5. 3 Rob. on Pat., §§ 962, 968. See supra, Art Machine Manufacture, Composition of Matter. This defense may be set up at the hearing. Guidet v. Barber, 5 Pat. Off. Gaz. 149; Hendy v. Iron Works, 127 U. S. 370; s. c., 43 Pat. Off. Gaz. 1117. Ör can be made on demurrer. Walker on Patents, § 598. Or made under a general denial of patentable novelty in the answers. Guidet v. Barber, 5 Pat. Off. Gaz. 149. 6. See article, "Invention." 7. Robinson on Patents, § 959. This must be where it will clearly appear, on inspection, by the application of judicial |