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granted, and the names and residences of the persons alleged to have 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., i Fish. Pat. A failure to state where the article Cas, 268.
relied on as an anticipation was used, 1. The provision that the patent shall is fatal to the introduction of the testinot be antedated would seem to, and as mony. Silsby v. Foote, 14 How. (U. practice has done away with two dates S.) 218; Roemer v. Simon, 95 U. S. 214; of grant and date.
Searles v. Bouton, 12 Fed. Rep. 140; s. 2. Orr v. Merrill, 1 Woodb. & M.(U. C., 21 Pat. Off. Gaz, 1784. S.) 376; Lyon v. Donaldson, 34 Fed. The time of the use need not be stated, Rep. 789.
nor is the defendant bound by such 3. The names of the persons who in- statement when made. Phillips v. Page, vented or have had knowledge, not of 24 How. (U. S.) 164; Evans v. Kremer, the witnesses who were expected to 1 Pet. (C. C.) 215; s. C., i Robb Pat. prove the prior invention or knowledge. Cas. 66. Woodbury Planing Machine Co. v. It is not proper pleading to aver that Keith, ioi U. S. 479; s. C., 17 Pat. Off. part of the invented device was in use. Gaz. 1031; Wilton v. Railroads, 1 Wall. Williams v. Empire Transp. Co., 3 Jr. (C.Č.) 196; Many v. Jagger, i Blatchf. Bann. & Ard. Pat. Cas. 533. (U.S.) 376; Roemer v. Simon, 95 U. S. 3. Blanchard v. Putnam, 8 Wall. (U, 218; s. C., 12 Pat. Off. Gaz. 796; Allis S.) 420; Roemer v. Simon, 95 U. S. v. Buckstaff, 22 Pat. Off. Gaz. 1705; 214; s. C., 12 Pat. Off. Gaz. 796; GraSutro v. Moll, 19 Blatchf. (U. S.) 89; s. ham v. Mason, 5 Fish. Pat. Cas. 6; c., 8 Fed. Rep. 909.
Brown 7. Hall, Fish. Pat. Cas. 531; See Judson v. Cope, 1 Bond (U. S.) S. C., 6 Blatchf. (U. S.) 401; Phillips v. 327; s. C., 1 Fish. Pat. Cas. 615.
Page, 24 How. (U. S.) 168; Webster 4. A notice that a certain machine Loom Co. 2". Higgins, 105 U. S. 580; s. was used in New York City, N. Y., c., 21 Pat. Off. Gaz. 2031; Woodbury etc. held sufficient, where the names of wit- Planing Mach. Co. v. Keith, 101 U. S. nesses and their residence were given, 479; s. C., 17 Pat. Off. Gaz, 1031; Kiesele the court saying, "We do not think that v. Haas, 32 Fed. Rep. 794; Barker v. the party giving notice is bound to be so Shoots, 20 Blatchf. (U. S.) 178; s. C., 18 specific as to relieve the other from all Fed. Rep. 647; American Whip Co. v. inquiry, or effort to investigate the facts. Lombard, 4 Cliff. (U. S.) 495; Gibbs v. If he fairly puts his adversary in the Ellethorp, 1 McArthur Pat. Cas. 702; way that he may ascertain all that is Evans v. Hettick, 7 Wheat. (U. S.) 453. necessary to his defense or answer, it is Court below. 3 Wash. (U. S.) 408. all that is required." Wise v. Allis, 9 6. Whittemore v. Cutter, i Gall. (U. Wall. (U. S.) 737; Wilton v. Railroads, S.) 429; s. c., I Robb Pat. Cas. 28; 1 Wall. Jr. (C. C.) 192.
Kneass v. Schuylkill Bank, 4 Wash. But a notice which merely states the (U. S.) 9; s. c., i Robb Pat. Cas. 303; county where a thing was used, is not Grant v. Raymond, 6 Pet. (U. S.) 218; sufficiently explicit. Hays v. Sulsor, i s. C., i Robb Pat. Cas. 604; Gardner v. Bond (U. S.) 279; s. C., i Fish. Pat. Cas. Hertz, 118 U. S. 190; . C., 35 Pat. Off. 532.
And the actual place must be desig. 7. Walker on Patents (2nd ed.), $ 440. nated or it cannot be proved. Dixon v. The defenses are very analytically Moyer, 4 Wash. (U. S.) 68; s. C., I considered. They are here grouped Robb Pat. Cas. 324; Searles v. Bouton, more compactly. 20 Blatchf. (U. S.) 426; s. c., 12 Fed. See Issue of Patents and other Rep. 140; s. C., 21 Pat. Off. Gaz. sections Patent Office, supra. 1784.
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, or the specification or other parts of the application. These defenses can be taken by demurrer sometimes where profert is made, or by pleat 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, Spe material operated upon by such macifications, supra. Kneass v. Schuyl. chine to be carried out of a specified kill Bank, 4 Wash. (U. S.) 106.
territory and resold as an article of How Set Up.—This defense must in a merchandise, the restriction being both suit in equity be set up in the answer. an invention by the licensee and a conJennings v. Pierce, 15 Blatchf. (U. S.) dition of the grant-held, that under 42; s. C., 3 Bann. & Ard. Pat. Cas. 361; no circumstances could such material, Goodyear v. Providence Rubber Co., with the privity or consent of the 2 °Cliff. (U. S.) 351; 8. C., 2 Fish. Pat. licensee, be sold out of the territory as Cas. 499. Compare Kneass v. Schuyl. an article of merchandise, or, with his kill Bank, 4 Wash. (U. S.) 106.
privity or consent, be sold within the The defectiveness of the specification territory to be carried out and resold so far as it concerns the ability to make as such article of merchandise. Fur. from it is a question of fact. Brooks ther, that a provisional injunction v. Jenkins, 3 McLean (U. S.) 432; would be granted against such licensee Hawkes v. Remington, 11. Mass. 171; to restrain his use of the machine, if Wood v. Underhill, 5 How. (U. S.) 1; applied for during his violation of such 6. C., 2 Robb Pat. Cas. 588; Howes v. restriction; but such injunction was reNute, 4 Cliff. (U. S.) 173; s. C., 4 Fish. fused where it appeared that the Pat. Cas. 263.
licensee had violated the restriction Whether the invention itself is de- under a misapprehension of his rights, scribed with reasonable certainty, is a and had discontinued the violation. question of law. Lowell v. Lewis, I Wilson v. Sherman, 1 Blatchf. (U. S.) Mason (U. S.) 187; s. C., 1 Robb Pat. 536. See also Burr v. Duryee, 2 Fish. Cas. 131; Wilton v. R. Co., 2 Whart. Pat. Cas. 275. Dig. 359; Wayne v. Holmes, i Bond Or the injunction may be granted (U. S.) 27; s. c., 2 Fish. Pat. Cas. 20; unless the licensee will conform to the Hogg v. Emerson, 6 How. (U. S.) 437. conditions of the license. Brooks v.
2. See Specification; Clearness, etc., Stolley, 3 McLean (U. S.) 523; S. C., 2 ante; Robinson on Patents, ļ 970; Robb Pat. Cas. 281. O'Reilly v. Morse, 15 How. (U. S.) Where the license has been for62; Carlton v. Bokee, 17 Wall. (U. S.) feited, the furthe
working by the 472.
former licensee will be enjoined as an 3. Where the claims are not distinct, infringement. Woodworth v. Cook, 2 if there is a profert of the patent, the Blatchf. (U. S.) 151; Day v. Hartshorn, defense can be made a 'demurrer. 3 Fish. Pat. Cas. 32; Cohn v. National Walker on Patents, $ 608.
Rubber Co., 5 Bann. & Ard. Pat. Cas. 4. Where the specification is at fault 568; s. C., 15 Pat. Off. Gaz. 829; Good.. by special plea at law. Walker on year v. Congress Rubber Co., 3 Pat. (2nd ed.), § 454. It cannot be Blatchf. (U. S) 449; Armstrong v. made by plea in equity. Walker on Hanlenback, 3 N. Y. Leg. Obs. 43. Patents (2nd ed.), $ 605; Goodyear v. A suit in equity, however, cannot be Providence Rubber Co., 2 Cliff. (U. S.) maintained to forfeit the license for 351.
condition broken. Morse v. O'Reilly, 6. Walker on Pat. (2nd ed.), 08 607, 6 Pa. L. J. 501; Brooks v. Stolley, 3 608; Blandy v. Griffith, 3 Fish. Pat. McLean (U. S.) 523; S. C., 2 Robb Pat. Cas, 609.
Cas. 281. 6. Seé LICENSE, vol. 13, p. 514.
A license may be proved by oral This defense should be pleaded spe testimony where there has been no cially at law. Mini v. Adams, 3 Wall. written agreement. Black v. Hubbard, Jr. (C. C.) 20.
3 Bann. & Ard. Pat. Cas. 39; s. C., 12 Where a license to run a machine Pat. Off. Gaz. 842. contained a restriction against selling At law this defense should be raised
patentee or plaintiff, 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 laws 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," a prioro foreign patby special plea, but may probably be Generally it is an estoppel only raised by general issue. În equity by where there is a duty on party alleged to plea or answer. Walker on Patents, be estopped which is violated. Pickard (2nd ed.), I$ 465, 618.
v. Sears, 6 Ad. & El. (Eng.) 469; Young 1. Bendell v. Denig, 92 U, S. 721, v. Grote, 4 Bing. (Eng.) 253; Bank of Bailey v. Bussing, 28 Conn. 461. U. S. v. Lee, 13 Pet. (U. S.) 107; Reay
This defense should at law be v. Raynor, 19 Fed. Rep. 308; s. C., 22 pleaded specially, but may be proved Blatchf. (U. S.) 13; s. c., 26 Pat. Off. under general issue. In equity by plea. Gaz. 1111; New York Grape Sugar Walker on Patents (2nd ed.), 09 465, Co. v. Buffalo Grape Sugar Co., 21 619; Daniels' Chancery Practice, § 669. Blatchf. (U. S.) 519; S. C., 18 Fed. Rep.
3. Parkhurst v. Kinsman, 1 Blatchf. 638; s. C., 25 Pat. Off. Gaz. 1076; Bassett (U. S.) 488; Concord v. Norton, 16 v. Bradley, 148 Conn. 224; Drexel v. Fed. Rep. 477; Dickerson v. Colgrove, Berney, 16 Fed. Rep. 522; s. C., 21 100 U. S. 578, Morgan v Chicago etc. Blatchf. (U. S.) 348; Concord v. NorR. Co., 96 U.S. 716; Barnard v. Camp- ton, 16 Fed. Rep. 477. bell, 55 N. Y. 456; Rice ö. Barrett, 116 This defense is raised by special plea Mass. 312, Bronson v. Campbell, 12 at law, or plea in equity. Walker on Wall. (U. S.) 681.
Patents (2nd ed.), 09 470, 661. But mere laches is not an estoppel In this country equitable estoppel is in a suit at law. Concord v. Norton, a defense at law. Concord v. Norton, 16 Fed. Rep. 477. Nor is taking out 16 Fed. Rep. 477. several patents an estoppel to show An admission is not an estoppel if that the invention was joint. Barrett not acted upon. Gear v. Grosvenor, v. Hall, 1 Mason (U. S.) 477; s. C., I 1 Holmes (U. S.) 215; s. C., 6 Fish. Robb Pat. Cas. 207. See similarly Pat. Cas. 314; S. C., 3 Pat. Off. Gaz. 380; Allen v. Blunt, 2 Woodb. & M. (U.S.) Commercial" Mfg. Co. v. Fairbank 121; S. C., 2 Robb Pat. Cas. 530.
Canning Co., 27 Pat. Off. Gaz. 78; s. C., Great laches of complainant is an 36 Pat. Off. Gaz. 1473. estoppel to a suit in equity. Piatt v. 3. See Duration of Right, supra. Vattier, 9 Pet. (U. S.) 405; Wyeth v. There is no precedent to show what Stone, i Story (U. S.) 273; Wallensak the pleading should be where the patv. Reiher, 115 U. S. 101; Kittle v. ent has been repeated. See Walker on Hall, 29 Fed. Řep. 508.
Patents, $ 461. Where it has A delay of two years has been held pired, the plea at law is a special one. sufficient to estop complainant in an Walker on Patents (2nd ed.) 462. action in equity. Sperry v. Ribbans, In equity the defense of repeal can be 3 Bann. & Ard. Pat. Cas. 260.
made by plea or answer.
The defense But a delay to enforce a right after that the patent has expired by dethe defendant has been notified, and murrer, if sufficient, appears on the continues notwithstanding to infringe record by answer otherwise. Walker will not estop a party. Concord v. on Patents $$ 614, 615. Norton, 16 Fed. Rep. 477.
4. See Jurisdiction of Equity, Striking out a portion of an applica- supra. tion at the request of the Patent Office 6. U. S. Rev. Stats., Ø 4887. Amerion the allegation that it was a dupli- can Hide etc. Co. v. American Tool cation of the part allowed, does not Co., 1 Holmes (U. S.) 503; s. C., 4 Fish. estop the inventor from setting up the Pat. Cas. 284; Henry v. Providence claim to a construction covered by the Tool Co., 3 Bann. & Ard. Pat. Cas. part stricken out. Ewart Mfg. Čo. v. 501; s. c., 14 Pat. Off. Gaz. 855; VogeBridgeport etc. Iron Co., 31 Fed. Rep. ley v. Noel, 18 Fed. Rep. 827. 149.
6. French v. Rogers, i Fish. Pat.
ent granted to the inventor? 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, 1 Mc- obtained inimicably after the invention Arthur Pat. Cas. 577.
by the American patentee or applicant, The priority is that of the grant, not does not affect his patent. Kendrick v. of the application. Bate Refrigerating Emmons, 2 Bann. & Ard. Pat. Cas. Co. v. Gillett, 13 Fed. Rep. 553; 208; s. C., 9 Pat. Off. Gaz. 201. Gramme Electrical Co. v. Arnoux etc. 3. U. Ś. Rev. Stats. 4887; Edison Electric Co., 25 Pat. Off. Gaz. 193; s. Electric Light Co. v. Westinghouse, c., 21 Blatchf. (U. S.) 450; Globe Mail 40 Fed. Rep. 666. Co. v. Superior Mail Co., 27 Fed. Rep. The American patent cannot run 450.
longer than seventeen years. U. S. Under the old statutes of March 3, Rev. Stats. $ 4887; Weston v. White, 1839, and July 4, 1836, it was different. 13 Blatchf. (U. S.) 364; s. C., 2 Bann. French v. Rogers, i Fish. Pat. Cas. 133. & Ard. Pat. Cas. 321; 8. C., 9 Pat. Off.
A patent which was granted after Gaz, 1196. the date of the sealing of the provi- This provision does not extend to' sional specification, but before the seal- patents granted prior to 1870. Goff u. ing of the complete specification, does Stafford, 3 Bann. & Ard. Pat. Cas. not come within the rule. Emerson v. 610; S.C., 14 Pat. Off. Gaz. 748; De Florez Lippert, 31 Fed. Rep.911. See Brooks v. Raynolds, 8 Fed. Rep. 434; Badische v. Norcross, 2 Fish. Pat. Cas. 61; Howe etc. Fabrik v. Hamilton Mfg. Co., 3 v. Morton, 13 L. Rep. (U. S.) 70;
Bann. & Ard. Pat. Cas. 235; s, C., 13 American etc. Boring Co. v. Sheldon, Pat. Off. Gaz. 273. 17 Blatchf. (U. S.) 303; S. C., 4 Bann. For decision on the prior statutes, & Ard. Pat. Cas. 603; Schoerken v. see Smith v. Ely, 5 McLean (U. S.) Swift etc. Co., 19 Blatchf. (U. S.) 209. 76; O'Reilly v. Morse, 15 How. (U. Which declare that a secret patent S.) 62; Weston v. White, 2 Bann. & does not limit a subsequent United Ard. Pat. Cas. 321; s. C., 13 Blatchf. States patent granted before the for- (U. S.) 364; Nathan v. New York etc. eign patent was published. Compare R. Co., 2 Fed. Rep. 225; s. C., 5 Bann. Gramme Electrical Co. v. Arnoux etc. & Ard. Pat. Cas. 280; Telghman v. Electric Co., 21 Blatchf. (U. S.) 450; Proctor, 102 U. S. 707; s. c., 19 Pat. s. C., 25 Pat. Off. Gaz, 193.
Off. Gaz, 859; American etc. Boring Sealing.--The date of the sealing of Co. v. Sheldon, 17 Blatchf. (U. S.) 303; the foreign patent, being subsequent, S. C., 4 Bann. & Ard. Pat. Cas. 603. though the application for and date of Guaranty Trust Co. v. Sellers, 41 Pat. the foreign patent was prior, held, that Off. Gaz. 1165. “An inventor taking the American patent was not limited. out a patent in the first instance in this Gold & Stock Tel. Co. v. Commercial country, is entitled to seventeen years' Tel. Co., 23 Blatchf. (U. S.) 199. protection; but, if he has previously ob
The sealing of a British patent is the tained letters patent in one or more forequivalent of publication. Guarantee eign countries, then, while not deprived Co. v. Sellers, 41 Pat. Off. Gaz. 1165. of his right to a patent here, the term to
1. A foreign inventor is within the which the law in such case limits his statute, even if his foreign patent is protection is a period not extending invalid. Cornely v. Marckwald, 17 beyond the date of the expiration of Fed. Rep. 83; s. c., 24 Pat. Off. Gaz. that one of the foreign patent first 498; Electric Light Co. v. Electric expiring.". United States v. Marble, Lighting Co., 43 Pat. Off
. Gaz. 1456. 22 Pat. Off, Gaz. 1365. 2. The statute refers to a patent 4. Bate Refrigerator Co. v. Hamgranted to the inventor. A prior patent mond, 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
(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 United States v. Marble, 22 Pat. Off. Co. v. Walker, 43 Fed. Rep. 575. Gaz. 1365; Ez parte Bland, 15 Pat.
By this ruling the rulings in Reissner Off. Gaz. 828. v. Sharp, 16 Blatchf. (U. S.) 383; s. C., 3. Bate Refrigerating Co. v. Gillett, 4 Bann. & Ard. Pat. Cas. 366; s. C., 16 129 U. S. 151; s. c., 46 Pat. Off. Gaz. Pat. Off. Gaz. 355; Henry v. Provi- 689; Canan v. Pound Mfg. Co., 23 dence Tool Co., 3 Bann. & Ard. Pat. Blatchf. (U. S.) 173; s. C., 23 Fed. Rep. Cas. 301; s. C., 14 Pat. Off. Gaz. 855; 185; S. C., 31 Pat. Off. Gaz. 119; AmeriBate Refrigerating Co. v. Gillett, 13 can Paper Barrel Co. v. Laraway, 28 Fed. Rep. 553; 8. C., 22 Pat. Off. Gaz. Fed. Rep. 141; s. C., 37 Pat. Off. Gaz. 1205;
Gramme Electrical Co. v. 674; New American File Co. v. NichArnaux etc. Electric Co., 17 Fed. Rep. olson File Co., 8 Fed. Rep. 816; 838; s. C., 25 Pat. Off. Gaz. 1129, are Siemens v. Sellers, 23 Pat. Off. Gaz. overruled. See Huber v. Nelson Mfg. 2234. Overruling Paillard v. Gautschi, Co., 38 Fed. Rep. 830; s. C., 46 Pat. 20 Pat. Off. Gaz. 1893. Off. Gaz. 1732, which has itself been 4. Siemens v. Sellers, 16 Fed. Rep. overruled.
856; s. C., 23 Pat. Off. Gaz. 2234; Clark 1. Pohl v. Brewing Co., 134 U. S., v. Wilson, 28 Fed. Rep. 95; Commer381; S. C., 51 Pat. Off. Gaz. 156; Electric cial Mfg. Co. v. Fairbank Canning Co., Light Co. v. Electric Lamp Co., 42 36 Pat. Off. Gaz. 1473; s. C., 27 Fed. Fed. Rep. 327; s. C., 52 Pat. Off. Gaz. Rep. 78. 1570; Holmes Electric Protective Co.v. Where the differences between the Metropolitan Burglar Alarm Co., 22 thing shown and described in the two Blatchf. (U.S.) 471; Paillard v. Bruno, patents are merely differences of degree, 29 Fed. Rep. 864; s. C., 38 Pat. Off. Gaz. the two patents are subtantially the 900. Overruling, Haber v. Mfg. Co.,
Commercial Mfg. Co. v. Fair38 Fed. Rep. 830; s. C., 46 Pat. Off. bank Canning Co., 27 Fed. Rep. 78. Gaz. 1732. See Badische etc. Fabrik 6. 3 Rob. on Pat., 96 962, 968. v. Hamilton Co., 3 Bann. & Ard. Pat. See supra, Art Machine ManufacCas. 235; s. C., 13 Pat. Off. Gaz. 273. ture, Composition of Matter. This doctrine extends
This defense may be set up at the where the patentee of a foreign patent, hearing. Guidet v. Barber, 5 Pat. Off
. having the right to successive prolong- Gaz. 149; Hendy v. Iron Works, 127 U. ations, fails to secure them by neglect, S. 370; s. c., 43 Pat. Of. Gaz. 1117. it being held that this did not invali- Or can be made on demurrer. Walkdate the American patent. Consofi- er on Patents, ( 598. dated Roller Mill Co. v. Walker, 43 Or made under a general denial of Fed. Rep. 575.
patentable novelty in the answers. Gui2. Opinion Sec. Int., 21 Pat. Off. Gaz. det v. Barber, 5 Pat. Off. Gaz. 149. 1197
6. See article, “ Invention." The Patent Office can require the 7. Robinson on Patents, $ 959. This applicant to state whether he has any must be where it will clearly appear, on prior patent in foreign countries. inspection, by the application of judicial