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It is not an infringement of a claim for a combination, to make, or use, or sell any of the elements of the combination less than the whole, though additions to a combination will not avoid an infringement, and a man can not use another's patented invention simply because he has made an improvement upon it. That a device works better or worse than the patented device, is not always, nor generally, decisive of substantial difference.3

There is one important principle, or rule of construction of the claims of a patent, always to be remembered. If a specific thing claimed, or if an element of a combination is in a new field of invention, and is the first of its kind, a court will give the doctrine of equivalents its broadest application as applied to such new thing; but, if the specific thing, or the element of a combination, is itself but new in degree, an improvement upon some prior existing thing for the same purpose, · then the court will only hold those things substantially identical therewith which are mere colorable evasions or obvious substitutes therefor.1 This is a most important rule of construction; and which of these views is to be taken of a claim, has to be determined often, and generally, by an investigation outside of the patent, so as to determine what was the state of the art, with which the invention was most closely connected, when the invention was made.

To constitute an infringement, it is not always necessary that a person should technically infringe the claim. Where a party had a patent for a combination of a lamp-burner and a lamp-chimney, another party made and sold only the

1 Cahoon vs. Ring, 1 Fisher's Pat. Cases, 397.

2 Johnson vs. Root, 1 Fisher's Pat. Cases, 351.

3 Union Paper Bag Co. vs. Binney, 5 Fisher's Pat. Cases, 166. Fales vs. Wentworth, 5 Fisher's Pat. Cases, 302.

4 McCormick vs. Talcott, 20 Howard, 405.

burner, the judge held such makers of the burners infringers; and, where one party had a patent on a cartridge, and another party made and sold guns designed for firing this cartridge, the gun-maker was held an infringer.2 In these and similar cases, the intent is of importance.

Infringement Suits. Suits for infringement can only be brought in the name of the owner or owners of the patent-right for the district or territory where the infringement is committed. Assignees of the whole patent, or grantees of particular districts, may bring suit in their own names, but licensees can not. The licensor is the proper person to bring suit for injury, in the nature of infringement, to the rights of the licensee.

Suits for infringement may be either on the case at law or by a bill of complaint in equity. Such suits are now almost always brought to the equity side of the court, for the reason that the complainant may, if he be entitled, get with little trouble, and upon mere motion, a preliminary or provisional injunction. He is not compelled to go into the question of the amount of damages until the court has settled the question of the validity of the patent and the question of infringement; and a perpetual injunction issues against the defendant, as a matter of course, upon a finding by the court that the patent is valid and has been infringed; while, in suits at law, injunctions must be had by separate process, and the trial of the case is lumbered up with the question of damages.

Jurisdiction. Upon this subject, the statute of July 8, 1870, enacts:

1 Wallace & Son vs. Holmes, Booth & Haydens, 5 Fisher's Pat. Cases, 37.

2 Renwick vs. Pond, 5 Fisher's Pat. Cases, 569.

"SEC. 55. And be it further enacted, That all actions, "suits, controversies, and cases arising under the patent "laws of the United States shall be originally cognizable,

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as well in equity as at law, by the circuit courts of "the United States, or any district court having the powers "and jurisdiction of a circuit court, or by the Supreme "Court of the District of Columbia, or of any territory; "and the court shall have power, upon bill in equity filed "by any party aggrieved, to grant injunctions according to "the course and principles of courts of equity, to prevent "the violation of any right secured by patent, on such "terms as the court may deem reasonable; and upon a "decree being rendered in any such case for an infringeIment, the complainant shall be entitled to recover, in “addition to the profits to be accounted for by the defend"ant, the damages the claimant [complainant] has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction, and the court "shall have the same powers to increase the same in its "discretion that are given by said act to increase the dam"ages found by verdicts in actions upon the case; but all "actions shall be brought during the term for which the "letters-patent shall be granted or extended, or within six years after the expiration thereof.

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"SEC. 56. And be it further enacted, That a writ of error or appeal to the Supreme Court of the United States "shall lie from all judgments and decrees of any circuit. "court, or of any district court exercising the jurisdiction "of a circuit court, or of the Supreme Court of the District "of Columbia or of any territory, in any action, suit, controversy, or case, at law or in equity, touching patentrights, in the same manner and under the same circum'stances as in other judgments and decrees of such circuit

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"courts, without regard to the sum or value in contro

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'versy.

"SEC. 59. And be it further enacted, That damages "for the infringement of any patent may be recovered by "action on the case in any circuit court of the United "States, or district court exercising the jurisdiction of a "circuit court, or in the Supreme Court of the District of "Columbia or of any territory, in the name of the party interested, either as patentee, assignee, or grantee. And whenever, in any such action, a verdict shall be rendered "for the plaintiff, the court may enter judgment thereon "for any sum above the amount found by the verdict as "the actual damages sustained, according to the circum"stances of the case, not exceeding three times the amount "of such verdict, together with the costs."

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All suits for infringement must be brought in United States courts, as must all suits intended to pass upon the validity of patents, though state courts have authority to enforce contracts relating to patents, such as contracts to assign or covenants contained in a license; and it would seem that, where a state court has parties properly before it, and a patent comes in question collaterally, its validity may be inquired into.1

Two things must concur to give a United States court jurisdiction, — the offense of infringement must be committed and process served upon the infringer within the territorial limits of the district over which the court holds sway.

Perpetual Injunctions. When, in the course of an equity suit, the court, on final hearing upon pleadings and proofs, finds that the patent is valid, and that it has been

1 Meserole vs. Union Paper Collar Co., 3 Fisher's Pat. Cases, 483.

infringed, the court grants, as a matter of course, a perpetual injunction against the infringer, enjoining and restraining him from any further infringement, and, if the party thus enjoined does further infringe in defiance of such injunction, he can be committed to jail for contempt The same kind of injunction will be issued by the equity side of a court when a like finding has been made in a suit at law.

of court.

Provisional Injunctions. There is another kind of injunction, other than the perpetual, which is often applied for by the plaintiff or complainant in a patent suit, and which may be granted or withheld, as the judge in his sound discretion may decide. These injunctions are asked for at the commencement or during the progress of a suit, with the intent that the defendant may be restrained from infringing until the final determination of the case and the plaintiff's right to a perpetual injunction is determined.

Strictly speaking, there are no such things as precedents in the practice of granting or withholding provisional injunctions; for every petition for one is addressed to the sound discretion of the judge, as applied to the facts of the case, yet there are some recognized and general rules with regard thereto.

In the first place, courts will not, as a rule, grant a provisional injunction, unless,

FIRST, — There has been some previous adjudication on (and sustaining) the patent, where the same points of validity and infringement were in issue, or unless,

SECOND, There has been a long and undisputed enjoyment of the patent privilege under the patent, and the

1 Earth Closet Co. vs. Fenner, 5 Fisher's Pat. Cases, 15.