any part of the land within the limits of its exterior boundaries is excepted out of the jurisdiction of the government thus brought into existence, it is no part of such State or Territory, is sound. The authority of Congress, from which the power to exercise the new jurisdiction proceeds, to except from that jurisdiction any part of its own soil, or that of the Indians, to whom the government has promised by solemn treaties to do so, is beyond question. The applicability of this doctrine to the jurisdiction of places in which the United States have constructed permanent forts, arsenals, etc., before such governments are organized, will be seen at once. Congress has also acted on this principle on the organization of new State Governments. The Act for the admission of Kansas into the Union as a State, after describing its exterior boundaries and declaring that the new State is admitted into the Union on an equal footing with the original States, in all respects whatever, adds, that nothing contained in the Constitution of the State shall be construed "to include any territory which by treaty with a Tribe of Indians is not, without the consent of said Tribe, to be included within the territorial limits or jurisdiction of any State or Territory; but all such territory shall be excepted out of the boundaries and constitute no part of the State of Kansas, until such Tribe shall signify their assent to the President of the United States to be included within said State." Between the United States and the Shawnee Tribe a Treaty then existed by which the United States guarantied that the lands of the Tribe should never be brought within the bounds of any State or Territory, or subject to the laws thereof. In the case of U. S. v. Ward, 1 Woolw., 1, the Circuit Court held that the state courts had no jurisdiction in the lands of the Shawnees, and this was repeated in U. S. v. Stahl, 1 Woolw., 192. tion of title to real property, the justice of the peace shall suspend all further proceedings, and certify the case to the District Court of the county, which shall thereafter have jurisdiction over the case as if originally brought in that court. The record of the case is imperfect, but it appears that the case was an appeal in the District Court from the judgment of the justice of the peace, and that the District Court overruled the motion of the defendant to dismiss the case because the justice of the peace was without jurisdiction to try it. The same matter was urged in the Supreme Court on appeal from the judgment of the District Court. We are of opinion that the justice of the peace had no jurisdiction to try the case after the sworn answer of the defendant was filed, and that it was his duty to have certified it for primary trial to the District Court. When it came there on appeal, it should have been dismissed, because there could have been no lawful trial before the justice. That the issue tendered by the sworn answer of the defendant involved the title, is clear. If he was holding under the United States, his attornment to plaintiff and taking a lease was void. The question would then arise, as to the superiority of the title of plaintiff and that of the United States, set up by defendant. For the trial of that title, the action brought by plaintiff and the forum in which it was commenced were inappropriate. The judgment of the Supreme Court of Idaho on the effect of their own Code of procedure in this respect will not be reversed here, and it is, accordingly, affirmed. True Copy. Test: James H. McKenney, Clerk, Sup. Court, U. S. The Act of Congress of March 3, 1863, which organized the Territory of Idaho, 12 Stat. at L., GEORGE PARKS, GRANT B. TURNER, 808, contained a clause precisely similar to the one in the Act admitting Kansas into the Union. And this court in the case of Harkness v. Hyde, relying upon an imperfect extract from a Treaty with the Shoshonees found in the brief of counsel, inadvertently inferred that it contained a clause against including the lands of the Tribe within a territorial or state jurisdiction like the Treaty with the Shawnees. In this it seems we were laboring under a mistake, and where no such clause or language equivalent to it is found in a treaty with any Indian Tribe within the exterior limits of Idaho, the land held by them is a part of the Territory and subject to its jurisdiction, so that process may run there, however the Indians themselves may be exempt from that jurisdiction. As we are not shown any such Treaty with the Nez Percé Tribe, on whose lands the premises in dispute are situated; and as it is a contest between white men, citizens of the United States, the court had jurisdiction of the parties, if the subject-matter was one of which the justice of the peace could take cognizance. The Act to regulate proceedings in civil cases in the courts of Idaho Territory, section 347, declares that, on a trial before a justice of the peace if it appear from the plaintiff's own showing, or from the answer of the defendant verified by his oath, that the determination of the action will necessarily involve the decision of a ques WILLIAM A. TAYLOR AND JAMES A. VAUGHN, Partners, as TURNER, PARKS & Co., Appts., v. JONATHAN L. BOOTH. (See S. C. 12 Otto, 96-107.) Application for patent-patented invention-defenses-patent for grain separators-costs and interest. is required to explain the principle thereof, the best 1. An applicant for a patent, in case of a machine, mode of applying the same, and to point out and distinctly claim the part, improvement or combination which he claims as his invention. 2. A patented invention may embrace both a new device or element, and a new combination of old devices. nal and first inventor, if the thing patented is an 3. The defense, that the patentee is not the origientirety, incapable of division or of separate use, must be addressed to the invention and not to a part of it, nor to one or more claims of the patent, if less than the entire invention. 4. Booth's re-issued patent for an improvement in grain separators is valid. The proofs in this case establish that he is the original and first inventor. 5. In an action for the infringement of a patent, the complainant is not entitled to an allowance for any expenses beyond the taxable costs. Interest on NOTE.-Damages for infringement of patents; treble damages. See note to Hogg v. Emerson, 52 U. S. (11 How.), 587. [No. 233.] the profits decreed to the complainant is not al-peared and filed an answer. Their principal delowed. fenses are as follows: (1) That the complainant is not the original and first inventor of the invention had been in public use and on sale for more than two years prior to the application by Argued Mar. 31, Apr. 1, 1880. Decided Apr. 26, patented improvement. (2) That the alleged 1880. APPEAL from the Circuit Court of the Unit. Mr. W. F. Cogswell, for appellee. Mr. Justice Clifford delivered the opinion of the court: the complainant for a patent. b) That the ret issued patent described in the bill of complaint is not for the same invention as the original. Proofs were taken, hearing had, and the circuit court entered a decree in favor of the complainant, and sent the cause to a master to compute the profits, gains and advantages which the respondents have received, or which have arisen or accrued to them from the infringePower to promote the progress of science and ments of the said patent. Due report was made useful arts, by securing for limited times to au- by the master, to whose report certain excepthors and inventors the exclusive right to their tions were filed by the respondents. Exceptions respective writing sand discoveries, is expressly were also filed by the complainant, but, inasvested in Congress by the Constitution. Pur- much as he did not appeal, they will not be suant to the power there conferred, the enact-re-examined. Those filed by the respondents, ment of Congress provides that the original jurisdiction of patent cases shall be exclusive in the circuit courts or the district courts exercising circuit court powers. R. S., secs. 629-711. Provision is also made that a party whose rights, secured by valid patent, are invaded by infringement, may seek his remedy in an action at law or by a suit in equity, at his election. 5 Stat. at L., 124; 16 Stat. at L., 206; R. S., sec. 4920. Federal Courts vested with jurisdiction in such cases have power, in their discretion, to grant injunctions to prevent the violation of any right secured by a patent, as in other cases of equity cognizance. Sufficient appears to show that a patent in due form was issued to the complainant, on the 20th of September, 1859, for a new and useful improvement in grain separators, which consisted in the employment and use of a series of inclined screens and boxes, having a proper shake motion communicated to them, in connection with a fan air-blast spout, the whole being arranged in a manner set forth in the specification. Without entering much into details, it will suffice to say, in this connection, that the object of the improvement was to subject grain to a thorough screening operation. Machines were constructed under the patent and were put in operation at various places, but on the 25th of September of the next year it was surrendered and re-issued, and on the 29th of November, four years later, it was surrendered a second time, when the patent in suit was issued to the complainant, which is a second re-issue. Having removed the defects in the prior patents, the complainant alleges that he immediately put the machines on sale; that he has ever since been in possession of the right secured by the patent; and that he would have made large profits from the manufacture and sale of the same had he not been prevented from so doing by the respondents. Two claims are made by the complainant. He charges that the respondents have largely infringed his exclusive right, and are still engaged in making and selling machines which are constructed in the same manner as the patented improvement, and which accomplish the same object by the same mode of operation. Service was made, and the respondents ap which are still the subject of complaint, will receive due consideration. Both parties appeared, and were heard in support of their respective exceptions, all of which were overruled by the circuit court except the fourth exception filed by the respondents. Matters of the kind being settled, the circuit court entered a final decree in favor of the complainant in the sum of $11,184.42, with costs of suit. Prompt appeal was taken by the respondents to this court, and since the cause was entered here they have filed the assignment of errors set forth in their brief. All such matters as are deemed material to the several defenses pleaded in the answers will be carefully considered, without entering into the details of the argumentative portion of the errors assigned. When reduced to specific propositions, the errors assigned may be stated as follows: (1) That the complainant is not the original and first inventor of the patented improvement. (2) That the supposed improvement was not the proper subject of a patent, because it did not involve any invention. (3) That the circuit court erred in finding that the respondents had infringed the re-issued patent of the complainant. (4) That the circuit court erred in overruling the exceptions of the repondents to the master's report. (5) That the circuit court erred in allowing damages to the complainant in addition to profits. Redress for the infringement of a patent may be sought by a suit in equity as well as by an action at law, and the required allegations and proofs are substantially the same in one form of remedy as in the other. Neither damages nor profits can be recovered unless the complaining party alleges and proves that he or the person under whom he claims was the original and first inventor of the patented improvement, and that the same has been infringed by the party against whom the suit is brought. Both of those allegations must be proved to maintain the suit; but the law is well settled that the patent in question, if introduced in evidence by the complaining party, affords him prima facie evidence that the patentee was the original and first inventor. That presumption, in the absence of any satisfactory proof to the contrary, is sufficient to entitle him to recover if he proves the alleged infringement. Evidence to overcome that presumption may be introduced by the defending party in case due notice of such an intention is given to the party that instituted the suit, as required by the Act of Congress. R. S., sec. 4920. Notices of the kind were given by the respondents in their answers, and the assignment of errors calls in question the decision of the circuit court in that regard, which is the first question presented for re-examination in the record. Questions of the kind cannot well be decided without first ascertaining what the patented improvement is that is described in the first pleading of the complaining party; and that becomes necessary in this case, both in determining the issue of prior invention and the issue of infringement. Attempt having failed to show that the re-issued patent is not for the same invention as the original, the question as to the nature of the improvement may be determined by the examination of the specification and drawings of the patent in suit. Two claims are annexed to the specification, of which the first is the combination of the zigzag screens and boxes, as exhibited in the model and drawings, when the same have a lateral shake motion, or one at right angles to the passage of the grain, in such a manner as to cause the grain to pass consecutively over and through them, and when arranged relatively to each other, to operate as set forth in the specification; (2) in the second place he claims the series of zigzag screens and boxes with or without the troughs and having the lateral shake motion in connection with the fan and spout, as set forth in the specification and exhibited in the drawings. Plain as these claims are, it would not be difficult to define their meaning, even without resort to the details of what precedes in the specification. Speaking directly to the point, the patentee states that his invention consists in the employment or use of zigzag screens and boxes or passages having a proper lateral shake motion communicated to them, and so arranged that the grain may pass consecutively over and through them and be subjected to a thorough screening operation. Also using in connection with the zigzag screens and boxes a revolving fan and spout, so arranged that the grain will be subjected to a sufficient blast for the separation from it of all light impurities. Reference is then made to the drawings, which show the frame of the machine and the manner in which the series of devices called inclined screens are secured by elastic pendants, as more fully explained in another part of the specification. Explanations follow which show that the screens may be formed of perforated zinc or other sheet metal, placed alternately in reversed inclined positions, as is clearly seen in figure 2 of the drawings, each screen being placed at the top of what is termed a shallow box which forms the passage of the grain, the boxes extending the whole length of the screens in order to receive the grain and discharge the same on to the elevated end of the screen next below, through openings constructed for the purpose, in order that the screening operation may be continued through the whole series of screens. Instructive and minute explanations are given in the specification of the entire construction and mode of operation of the apparatus and the several devices of which it is composed. Beyond all doubt, the explanations constitute a full compliance with requirements of the Patent Act in all respects, and are amply sufficient to show that the invention consists of the combination of elements or ingredients, the substance of which is embodied in the claims of the patent annexed to the specification. None of the elements or ingredients are claimed to be new, from which it follows that the invention consists entirely in the combination, and not a doubt is entertained that it is both new and useful. Inventors of machines are required, before they secure a patent, to deliver a written description of the improvement and of the manner and process of making, constructing and using the same, in such full, clear and exact terms as to enable one skilled in the art or science to make, construct and use the invention. Drawings are also required in certain cases, and if the invention is such that it may be represented by a model, the applicant for a patent is required to furnish a model of the improvement. Requirements of the kind, in cases where they apply, may be regarded as conditions precedent to the right of the commissioner to grant such an application; but cases often arise where they or some of them do not apply. An applicant for a patent, "in case of a machine," is required to explain the principle thereof, the best mode of applying the same, and to point out and distinctly claim the part, improvement or combination which he claims as his invention; and the respondents contend that the patent of the complainant is invalid because the specification does not comply with that requirement. R. S., sec. 4888. Inventions sometimes embrace an entire machine, and in such cases it is sufficient if it appears that the claim is co-extensive with the patented improvement. Other inventions embrace only one or more parts of a machine, and in such cases the part or parts claimed must be specified and pointed out, so that constructors, other inventors, and the public may know what the invention is and what is withdrawn from general use. Patented inventions are also made which em brace both a new device or element and a new combination of old devices embodied in the same apparatus or machine. Particular description of the improvement is required in such a case, as the property of the patentee in such a case consists not only in the new device, but also in the new combination. Modern inventions very often consist merely of a new combination of old elements or devices, where nothing is or can be claimed except the new combination. Such a combination is sufficiently described, to constitute a compliance with the letter and spirit of the Act of Congress, if the devices of which it is composed are specifically named, their mode of operation given, and the new and useful result to be acomplished is pointed out, so that those skilled in the art and the public may know the extent and nature of the claim and what the parts are which co-operate to do the work claimed for the invention. Apply those rules to the specification in question, and it is clear that the proposition that it does not point out what is claimed as new is wholly unsupported and founded in mistake as to what is required by the Patent Act. Suppose that is so; still it is insisted by the respondents that the patentee is not the original and first inventor of the improvement. Such a defense may be supported by proof that the invention was made by another before the patented improvement was made for the infringement of which the suit is brought. Authority is also given to the respondent in such a suit to show if he can that the improvement had been patented or described in some printed publication prior to the supposed invention set forth in the specification. R. S., sec. 4920. Defenses of the kind are authorized by the Act of Congress, and it may be remarked that it is not neccesary to allege or prove, in order to sustain such a defense, that the prior patent or description was issued or given two years earlier, as the only requirement is that the patent or publication was prior to the supposed invention of the complainant. sisting of a separate device or of a single combination of old elements incapable of division or separate use, the respondent cannot make good the defense in question by proving that a part of the entire invention is found in one prior patent, printed publication or machine, and another part in another, and so on indefinitely, and from the whole or any given number expect the court to determine the issue of novelty adversely to the complainant. Imhaeuser v. Buerk, not reported [101 U. S., 647, XXV.,945]. Common justice forbids such a defense, as it would work a virtual repeal of so much of the Patent Act as gives to inventors the right to a patent consisting of old elements, where the combination itself is new and produces a new and useful result. New elements in such a patent are not required, and if such a defense were allowed, not one patent of the kind in a thousand of modern date could be held valid. Enough appears in this explanation to show Nor is such a defense consistent with the reguthat the two defenses may be considered to-lations enacted by Congress in respect to the gether, as it is settled law that if the patentee is procedure in litigations in respect to patentnot the original and first inventor of the im- rights. provement, or if it had been patented or described in any printed publication prior to the supposed invention, then the complainant can not recover. cribed in some printed publication prior to the supposed invention, or that it had been in public use or on sale in this country for more than two years before the patentee applied for his patent. Corresponding proceedings may be had in equity, the denial of infringement and notice being alleged and given in the answer. Infringers or persons sued as such may plead the general issue, and having given the required notice may prove that the patentee is not the original and first inventor of the imNotice in due form is given by the respond-provement, or that it had been patented or desents in their answer and amended answer of twelve patents or specifications prior in date to the patent of the complainant, and which, as the respondents allege, supersede the invention described in the complainant's patent. Attempt will not be made to describe the invention set forth in each of these publications. Suffice it so say in that regard, that all of them have been carefully examined to the extent of the means furnished by the transcript, and the court is of the opinion that no one of the documents is of a character to sustain the issue that the complainant is not the original and first inventor of the improvement. Most or all of the inventions described in those publications bear more or less resemblance to that claimed by the complainant, and it may be that if it were allowable to test the validity of the invention in question by comparing the same with the whole as if embodied in a single exhibit, the evidence might be sufficient to support the views of the respondents in respect to the defense under consideration. Were that allowable it might well be suggested that the screen is found in one, the box in another, and the means to produce the lateral shake in a third, and so on to the end; but it would still be true that neither the same combination in its entirety nor the same mode of operation is described in any one of the patents or printed publications given in evidence. Attempt is scarcely made in argument to show that any one of these exhibits embodies the entire invention of the complainant, but it is insisted that every feature of the patented improvement is found in some one or more of those publications. Suppose that is so; still it is clear that such a concession, if made, could not benefit the respondents, unless they can be allowed to extend the same comparison to two or more exhibits, as they do not contend that the entire invention is superseded by any one of their exhibits. Where the thing patented is an entirety, con Defenses of the kind, if the thing patented is an entirety, incapable of division or of separate use, must be addressed to the invention and not to a part of it or to one or more claims of the patent, if less than the entire invention. More than one patent may be included in one suit, and more than one invention may be secured in the same patent, in which cases the several defenses may be made to each patent in the suit and to each invention to which the charge of infringement relates. Bates v. Coe, 98 U. S., 31, 48 [XXV., 68, 74]. Remarks already made, without more, are sufficient to show that the evidence introduced by the respondents to sustain the proposition that the complainant is not the original and first inventor of the improvement fails to establish that assignment of error, and that the defense must be overruled. Much discussion of the next defense is not required, beyond what is necessary to state the true construction and meaning of the provision. of the Patent Act which allows that defense. Evidence of the want of novelty arises from the acts of others, the defense being that the invention was constructed by another before the patentee made his invention, the rule being that priority of right depends in the first place upon priority of construction. Inventors may, if they can, keep their inventions secret; but if they do not, and suffer the same to go into public use for a period exceeding what is allowed by the Patent Act, they forfeit their right to a patent. Hence, the Patent Act allows the infringer to plead and prove that the invention of the patentee had been in public use or on sale in this country for more than two years before the inventor applied for a patent. No question of priority is open under that defense, nor will evidence sustain it that another had made or patented the invention two years before the application, without the knowledge of the patentee whose invention is in question. the entire interest allowed, must be deducted from the decree. From which it follows that the decree in favor of the complaint, instead of being $11,184.42, should be $9,992.09, without interest, but with costs of suit, as allowed in the decree of the circuit court; and the decree Evidence of priority is admissible under the of the circuit court is modified so as to conform preceding defense. Unless inventors keep their to that computation, but without any injunction, inventions secret, they are required to be vig- as the term of the patent has expired. ilant in securing patents for their protection; The decree, as modified, is affirmed without inand if they do not, and suffer the same to be interest or costs, the costs of this court to be paid by public use or on sale in this country for more the appellee. than two years before they apply for a patent, they forfeit their right; and if an infringer alleges and proves that defense, he cannot be held liable in a suit for infringement. Subject to this explanation, it is clear that there is no proof in this case that the complainant was guilty of any laches in applying for a patent, or that his improvement ever went into public use or was on sale in this country before he applied for his patent. Machines called grain-separators, it is admitted in argument, are manufactured and sold by the respondents, but they denied in their original answer that their separators were in all respects constructed in the same manner as the apparatus of the complainant, nor have they since entirely abandoned that proposition. Instead of that, they still insist that the re-issued patent of the complainant differs from the original, but they substantially admit that the machines which they construct and sell do infringe the invention of the complainant, as described in the re-issued patent, which is sufficient for the complainant, as the respondents have failed to make good their defense that the reissued patent is not for the same invention as the original. Irrespective of any admission, however, the court is satisfied, from a comparison of the two exhibits, that the charge of infringement is fully sustained. Eighteen exceptions were filed by the respondents to the report of the master, but it is not deemed necessary, in view of the state of the record, to give them a separate examination in this case. Infringement being proved, the complainant was entitled to an account of the profits made by the respondents in the unlawful use of the patented improvement, which consisted of the new combination described in the specification. Obviously, it was a proper case for reference to a master, and it is not perceived that the general basis of his report exhibits any error to the prejudice of either party. Two special errors are discovered in addition to the one very properly corrected by the circuit court. Costs were properly allowed, but the court is of the opinion that the complainant was not entitled to an allowance for any expenses beyond the taxable costs. Interest on the profits decreed to the complainant should not have been allowed, as was decided by this court many years ago, the better opinion being that profits in such a case are to be regarded in the light of unliquidated damages, which usually do not draw interest without the special order of the court. Silsby v. Foote, 20 How., 378, 386 [61 U. S., XV., 953, 955]. Expenses to the amount of $627.20, including counsel fees, were allowed to the complainant beyond the taxable costs, which, together with True copy. Test: James H. McKenney, Clerk, Sup. Court U. S. Cited-105 U. S., 204. 110 U. S., 303. Mr. Chief Justice Waite delivered the opinion of the court: It does not appear from this record that any exceptions were taken in the progress of the trial to what was done by the court below. The trial was finished and a verdict rendered on the 28th of November. Nearly three weeks afterwards, a motion was made for a new trial, because of certain alleged errors in the charge; but it is nowhere shown that these errors were noted or brought to the attention of the court before the verdict. Certainly no exceptions were taken. A trial court may, in the exercise of its judicial discretion, grant a new trial, if convinced that its charge was wrong, even though its attention was not called to the error complained of before the case was finally submitted to the jury. But not so with us. Our power is confined to exceptions actually taken at the trial. The theory of a bill of exceptions is that it states what occurred while the trial was going on. Time is usually given to put what was done into an appropriate form for the record; but, unless objection was made and exception able on review. See note to Phelps v. Mayer, 56 U. NOTE.-Exception; when must be taken to be availS. (15 How.), 160. |