of before the master, he can report only nominal damages against the defend-
ants. *Fisk et al. v. The West Bradley and Cary Manufacturing Company, 137.
2. In such case, if the complainants except to the master's report, and their excep-
tions are overruled by the court, they will be allowed costs to and including
the interlocutory decree; but the defendants will be allowed costs thereafter,
the one to be set off against the other to the extent of its amount, and the ex-
cess to be recovered of the party against whom it exists. *Id.
3. Where the patent is for an improvement in machines the burden is on the com-
plainant to separate the profits due to the improvement from the general
profits of the business. This rule is recognized, not reversed, in Elizabeth v.
Pavement Company (7 Otto, 126). *Kirby v. Armstrong et al., 146.
4. Where the complainant fails to show what, if any, definite part of the whole
profits were produced by his improvement, his recovery must be nominal
only. *Id.
5. Costs of reference taxed against complainant. *Id.
6. The question in controversy is, "What saving did the defendant derive from the
use of the Stevens brake for the period covered by that patent above what it
would have derived from the like use of the Hodge brake during that period ?”
Emigh v. Baltimore and Ohio Railroad Company, 185.
7. The difficulties of proving the exact money value of this saving are exception-
ally embarrassing. *Id.
8. Although this rate may possibly be less than the defendant's actual gain, in the
absence of more exact means of computing what that gain was, the court de-
termines upon twenty-five dollars per car per year as the proper rate of profits
to be decreed to the complainants in all three of these cases.
9. On these sums the court does not allow interest.
10. The recovery of profits and damages from the manufacturers of an infringing
machine debars the patentee from recovering from a user for the use of the
same machine. * Booth et al. v. Seevers et al., 218.
11. The fact that plaintiffs' device was used raises a presumption that there were,
or might have been, some profits, and he is entitled to have the account taken.
* Andrews et al. v. Creegan, 219.
12. The act of 1870. (Rev. Stats., sec. 4921) provides for the accounting for damages
as well as profits. *Id.
DATE OF INVENTION. See Citizenship; Construction of Rules, 1; Foreign Inventions.
1. In the absence of other evidence, a patented invention will be held to date
from the time of filing the application, and not from the time of the grant.
*Pennington et al. v. King, 269.
2. Where an applicant personally introduced the contested invention into his ap-
plication by amendment under circumstances showing that he had not pre-
viously thought of the invention, he thus made an official record of the origin
of his invention, which must be taken as a controlling fact in fixing the date
of his invention. Hull v. Lowden, 30.
3. The force of this cotemporaneous testimony of the inventor as evidence in a
collateral proceeding is not affected by the circumstance that all questions
touching the propriety of the ministerial act by which the new invention was
allowed to be incorporated into the old application are now closed. Id.
4. Foreign applicants will be permitted, under Rule 74, following the practice in
contested cases, to make oath to facts showing that they have made known
or practiced, or caused to be made known or practiced, in this country the
completed inventions disclosed in their applications prior to the date of the
patents or publications cited in bar; but they cannot be permitted to show
that they made or used their inventions in a foreign country before the date-
of their foreign patenrs for any purpose. Ex parte Lanfrey, 39.
DATE OF INVENTION-Continued.
5. The force of English letters patent as references are overcome by evidence
showing that the domestic patentee made the invention before the date of
the filing of the foreign specification. *Lorillard § Co. v. Dohan, Carroll &
Co., 460.
DATE OF PATENT. See English Specifications and Patents, 1.
DECISIONS. See Construction of Decisions.
DECISIONS OF COMMISSIONER CONCLUSIVE.
3; Inoperativeness of Patent, 1; Reissues, 20, 22.
See Commissioner of Patents, 2,
DECREE. See Drawings, 1; Practice in the Courts, 4, 5, 6; Rehearing, 2.
DEDICATION TO THE PUBLIC. See Reissues, 36.
DEFECTIVE CLAIMS. See Reissues, 23.
DEFECTIVE SPECIFICATIONS. See Inoperativeness of an Invention; Inoperativeness
of Patent, 1; Interferences, 2; Reissues, 9, 10, 15, 18;
DEFECTS. See Conception of an Invention, 1; Reissues, 24.
DEFENSES. See Construction of Specifications and Patents, 1; Motion to Reopen, 1;
Practice in the Courts, 6; Process and Product, 2.
Defense that the acts of infringement were done under a license is an affirmative
defense to be established by proof. *Watson et al. v. Smith et al., 326.
DELAY. See Practice in the Patent Office, 2; Process and Product, 1.
An inventor filed an application for a patent in 1871. Several communications hav-
ing passed between the applicant and the Office, his application was finally
rejected December 26, 1871. A new application for the same invention was
filed April 9, 1879. The affidavits filed under section 4894, to show that this
long delay was unavoidable, showed that the inventor was during much of
the intervening period in straightened circumstances, and that he expressed
at various times a desire to obtain his patent, but did not show that he made
any effort to that end, Held that the delay was not unavoidable, that the sec-
ond application was not a continuous filing with the former, but is liable to
be defeated by public use of the invention occurring more than two years prior
to its date of filing. Smith v. Dimond, 34.
DELAY IN BRINGING SUIT. See Injunction, 7.
DEMAND BEFORE SUIT. See Costs of Suit, 3.
DEMURRER. See Parties to Suit.
Demurrer to bill because of multifariousness sustained for reasons set forth in Hayes
v. Dayton (18 O. G., 1406). *Hayes v. Bickelhoupt, 87.
DESCRIPTION. See Application for Patent; Construction of Specifications and Patents,
4, 7, 11, 14; Reissues, 6.
DESIGNS. See Particular Patents, 64.
1. A design for jewelry-setting is not anticipated by a known design showing cer-
tain features of the patented design but unlike it in appearance both in out-
line and detail. Wood v.
*
Dalbey et al., 340.
2. Two designs may be substantially identical though differing in minor details.
*Id.
The effect of an earlier invention upon the claim of a patent not avoided by a specific
disclaimer in the specification when it appears that such disclaimer is based
upon an unsound view of the invention to which it relates. *Buchan et al. v.
McKesson et al., 90.
DIVISION OF CLAIMS. See Reissues, 14, 29.
DIVISION OF INVENTION. See Commissioner of Patents, 1; Joinder of Inventions;
Reissues, 35, 38.
DIVISION OF INVENTION-Continued.
The United States courts having held divisional patents valid, there can be no ob.
jection to subdividing an invention into distinct claims. Brown v. Deere &
Co. et al., 106.
DIVISION OF PATENTS. See Commissioner of Patents; Joinder of Inventions; Pat-
ents; Reissues 35; Separate Patents.
DIVISION OF REISSUES. See Reissues, 26, 30, 35, 38.
DRAWINGS. See Combinations, 13; Priority of Invention, 2; Reissues, 5, 30, 36, 38.
Where the Patent Office model has been destroyed, an alleged mistake in the patent-
drawing should be very clearly established before a court should attempt to
change by decree the position of a part represented in such drawing. *Royer
v. Russell & Co., 483.
DUPLICATE CLAIMS. See Construction of Claims, 7.
DURATION OF PATENTS. See Extension of Patents, 1; Patents Granted by Special
Act, 1.
DUTY OF EXAMINERS. See Examiners.
ENGLISH LETTERS PATENT AS REFERENCES. See Date of Invention, 5.
ENGLISH SPECIFICATIONS AND PATENTS.
The doctrine that the date of the enrollment of the final specification is to be re-
garded in this country as the date of the English patent reiterated. Bell v.
Brooks, 4.
ENLARGEMENT OF CLAIMS. See Construction of Claims, 11; Reissues, 29.
ENLARGEMENT OF ORIGINAL PATENT. See Particular Patents, 38; Reissues, 5,
6, e, 13, 25, 26, 27, 28, 29, 30, 31, 37, 33.
EQUITY. See Practice in the Courts.
EQUIVALENTS. See Analogous Devices; Construction of Specifications and Patents, 4,
15; Infringement, 3, 14, 16, 18; Interfences, 4; Mechanical Substitute; Non-
Invention; Particular Patents, 30, 49.
Whether or not equivalents are claimed, a patentee is protected against equiva-
lents of any part of his invention. But when a product arrived at by cer-
tain defined stages or processes is patented, only those things can be consid-
ered equivalents for the elements of the manufacture which perform the same
function in substantially the same way. *The Goodyear Dental Vulcanite Com-
pauy v. Davis, 131.
ERRONEOUS CONCEPTION OF THE ISSUE. See Motion for Rehearing, 1.
ERRORS OF JUDGMENT.
The rule upon the subject of estoppel is generally that the parties and privies are
concluded by the judgment. *Miller et al. v. The Liggett & Myers Tobacco Com-
pany, 215.
EVIDENCE. See Date of Invention, 3; Foreign Invention, 1; Practice in the Courts, 3.
1. Evidence almost wholly made up of the recollections of witnesses revived after
the lapse of many years, and contradicted in most instances by explicit testi-
mony of other equally credible witnesses, leaves so much doubt as to the
actual existence of the device as to make it unsafe to defeat a patent on the
ground of public use thus sought to be established. *Washburn & Moen Man-
ufacturing Company et al. v. Haish, 76.
2. Ex parte affidavits and sworn opinions of experts as to novelty and infringement,
contradicted by evidence of equally low grade, are not sufficient to establish
the extent or validity of complainants' patent or its infringement. * Pullman
and Pullman's Palace Car Company v. Baltimore and Ohio Railroad Company, 95.
3. Testimony in reference to experiments and reduction to practice in foreign
countries, whether the invention be that of an American citizen or foreigner,
is incompetent and inadmissible, the Revised Statutes of the United States
proscribing all other evidence of invention abroad than that derived from
patents or printed publications. Bell v. Brooks, 4.
4. The character of evidence required by the Office to establish the fact of inven-
tion is the same as it is in the courts. Id.
5. The record in a suit which proceeded to judgment in one circuit court is proper
evidence in a suit in another when the matter in controversy is the same and
the defendant in the later suit employed the counsel and paid the expenses
in the prior, though not a party thereto. United States and Foreign Salaman-
der Felting Company v. Asbestos Felting Company, 108.
6. By statute "copies of any records, books, or papers belonging to the Patent Of-
fice and of letters patent authenticated by the seal and certified by the Com-
missioner or Acting Commissioner are made evidence where the originals
would be evidence." Rev. Stats., sec. 892. And "copies of the specifica-
tion and drawings of foreign letters patent, certified as provided in the pre-
ceding section, shall be prima facie evidence of the fact of the granting of such
letters patent and of the date and contents thereof." **Schoerken v. The Swift
& Courtney and Beecher Manufacturing Company, 255.
7. French letters patent certified by the Director of the Conservatoire National
des Arts et Metiers of France, under the seal of that department, verified by
the Minister of Agriculture and Commerce and the Minister of Foreign Affairs,
under their seals, come from a proper source, properly authenticated, and are
admissible as evidence under the statute. *Id.
EVIDENCE OF INVENTION. See Foreign Invention, 1.
1. It is the duty of Primary Examiners to conform their practice to the known and
expressed views of the Commissioner, whether they agree with their own
views or not, and there is no excuse for adhering to a practice which has
been overruled on appeal. Ex parte Kitson, 49.
2. Disapproval expressed of the practice of multiplying actions on cases on ques-
tions of mere form without at the same time touching the merits of the case.
Such practice, while it may be claimed to be according to the letter of Rule
63, is certainly not in accordance with its spirit. Id.
EX PARTE AFFIDAVITS. See Eridence, 2.
EX PARTE QUESTIONS. See Priority of Invention, 1.
EXPENSES OF SUIT. See Damages and Profits, 2, 5.
EXPERIMENTS.
See Abandoned Experiments; Conception of an Invention, 1; Eri-
EXPERTS. See Evidence, 2.
EXTENSION OF PATENTS.
1. The general and broad provision for extending patents granted prior to 1861
made no discrimination against those which were limited to fourteen years
from the date of a foreign patent, and there can be no reasonable doubt that
Congress, in the statute of 1870, intended to leave patents granted before
March 2, 1861, exactly where they were before. *New American File Company
v. Nicholson File Company, 343.
2. A patent, therefore, applied for and oqtained under the circumstances named
and duly extended by the Commissioner in proper time and in regular form
is valid, subject to the ordinary defenses. *Id.
FEES. See Trade-Marks, 1.
FINE. See Contempt of Court, 2, 3, 7, 8, 9.
FIRST AND ORIGINAL INVENTOR. See Priority of Invention; Process, 2.
FOREIGN APPLICANTS. See Date of Invention, 4.
A foreign invention imported in this country and made known to others is evidence
of invention under our laws, and, if such invention be completed and reduced
to practice in this country, is of equal weight with a foreign patent to sup-
port the title of the inventor or to bar a subsequent discoverer. Ex parte Lan-
frey, 39.
FOREIGN MAGISTRATES. See Evidence, 3; Practice in the Court, 7.
FOREIGN PATENTS. See Date of Invention, 5; English Specifications and Patents;
Evidence, 3, 6, 7; Extension of Patents, 1; Patents Granted by Special Act, 1.
It appearing that by the law of France some patents are kept secret, and it appear-
ing that the copy of the patent in question was certified to after the manner
of public records, Held that the patent must be taken to be an open patent.
* Schoerken v. The Swift & Courtney and Beecher Manufacturing Company, 255.
FORFEITED APPLICATIONS.
The "withheld" application referred to in this section is sui generis, having neither
the incidents of a rejected nor an abandoned application. It is an applica-
tion held in abeyance and liable to be revived upon the payment of a new
fee, and only becomes abandoned after the expiration of two years, reckon-
ing from the date of allowance. Ex parte Livingston, 42.
FRIVOLOUS CLAIMS. See Claims, 2.
FUNCTION. See Equivalents.
IDENTITY OF DEVICES. See Designs; Infringement, 12, 13, 16, 17; Injunction, 8;
Interferences, 8; Motion for Attachment, 2.
IMPROVEMENTS. See Constructions of Specifications and Patents, 8; Infringement, 7;
Particular Patents, 36.
INCOMPLETE EXPERIMENTS. See Abandoned Experiments; Conception of an Inven-
tion, 1.
INFRINGEMENT. See Change of Structure, 1; Combinations, 4, 9; Construction of
Claims, 4, 6; Construction of Specifications and Patents, 1, 2. 3, 4, 13, 20, 21;
Costs of Suit, 2; Defenses, 1; Designs, 2; Evidence, 2; Injunction; Labels, 9;
Liability, 1; Motion for Attachment, 2; Particular Patents, 1, 5, 30, 34, 35, 49, 52,
67; Parties to Suit, 1; Practice in the Courts, 6, 11, 12, 13; Process, 4; Trade-
Marks, 15.
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1. An invention (Seller's patent, No. 91108, granted June 8, 1869, to A. C. Fletcher,
for postage-stamps) consisting of a postage or revenue stamp having a portion
of its surface composed of thin or fragile paper or other suitable material
loosely attached, and on which a portion of the design or other matter is
printed, is not infringed by a stamp composed of one continuous piece of paper,
of uniform thickness, upon the face of which is certain printed or engraved
matter, with blank spaces, in which are inserted, at the appropriate time,
certain figures and names required by law to appear upon revenue-stamps,
which blank spaces are prevented from adhering to the barrel by the inter-
position of a red slip of blank paper attached to the back and outside edges
of the stamp. *Fletcher v. Blake, 87.
2. Mere structural changes, aside from the vital operating combinations, are not
such changes as will avoid infringement. The Straw Sewing Machine Com-
pany v. Eames, 99.
3. Where a person procures a patent for the building of a machine which produces
certain results which are novel and useful by reason of certain mechanical
contrivances and appliances, any person who attempts to accomplish the same
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