some one claim of the patent is small. The difference between the two sums may sometimes be measured by thousands of dollars. A judgment or a decree may be largely lessened and justly lessened, if a defendant is permitted to prove a necessity for a disclaimer of a claim not sued upon. In view of these considerations, it is possible that the law will finally be settled otherwise than as Judge LOWELL's remark would seem to forecast.

§ 206. Disclaimers are required to state the extent of the interest which is held by the disclaimant in the patent involved.' If, however, the disclaimant is the original patentee, and the disclaimer states that fact, and is silent respecting any transfer of any part of it, the fair implication is that he still owns the whole, and that implication is a sufficient statement of the interest of the patentee.' So also, if an executor or administrator, in whose name a patent has been extended, states in his disclaimer, that he is the patentee, and refers to the patent as showing his interest, that is a sufficient statement of his interest in the patent. But if one only, of several joint owners or owners in common, of a patent, should file a disclaimer, no other owner could avail himself of its benefits, nor could it affect a suit brought by all the owners jointly.*

§ 207. The construction of a patent after a disclaimer has been properly entered, must be the same that it would have been if the matter so disclaimed had never been claimed." No disclaimer, in order to be effectual, needs to eliminate anything from the description; though no harm will follow from such elimination if it is confined to matter which is disclaimed, and which is not needed to show the nature of the invention which, after disclaimer, the patent continues to cover."

2

§ 208. Disclaimers may be filed pending a suit on the

1 Revised Statutes, Section 4917.

Silsby v. Foote, 14 Howard, 221, 1852.

3 Brooks . Jenkins, 3 McLean, 432. 1844.

4 Wyeth v. Stone, 1 Story, 294,

1840.

5 Dunbar v. Myers, 94 U. S. 187, 1876.

Schillinger v. Gunther, 17 Blatch. 69, 1879.

patent,' but in that event, the plaintiff, even if he prevails in the suit, can recover no costs." The filing of a disclaimer, at that stage of affairs, does not affect the pending action, except so far as it may bear upon the question whether or not there was unreasonable delay before filing it.' That question is an open one, until decided on its merits, regardless of whether the disclaimer was filed before or after the bringing of the suit. The sooner a necessary disclaimer is filed, the less danger exists that the preceding delay will be held unreasonable. For that reason, and for that reason alone, it is sometimes wiser to file a disclaimer pending a suit, than to wait till the case is heard, or still longer, till it is decided.

§ 209. An important question arises, when a Circuit Court, before any disclaimer has been filed, decides that a part of the claims of the patent in suit are valid, and have been infringed by the defendant, while another part are void for want of novelty, or for want of invention, and ought therefore to be disclaimed. Ought the chancellor, in such a case, to enter a decree for an injunction and an account on the valid claims, and allow the complainant to disclaim the others or not, as he deems most prudent? Or ought the chancellor to refuse both the injunction and the account, till the complainant shall have filed a disclaimer? Or ought the chancellor to grant an injunction whether the complainant disclaims or not, while refusing an account till after he shall have done so? Or ought the chancellor, in case the complainant declines to disclaim, to refuse an injunction, and grant a decree for an account? The second of these courses has been the practice followed by Justice BLATCHFORD; and by Judge WALLACE; Judge SHIPMAN,

1 Filley v. Stove Co. 30 Fed. Rep. 434, 1887.

2 Smith v. Nichols, 21 Wallace, 117, 1874.

3 Revised Statutes, Section 4917; Tuck v. Bramhill, 6 Blatch. 95, 1868. 4 Reed v. Cutter, 1 Story, 590, 1841.

5

Myers v. Frame, 8 Blatch. 446, 1871; Burdett v. Estey, 15 Blatch. 349, 1878; Christman v. Rumsey, 17 Blatch. 148, 1879.

6 Brainard v. Cramme, 12 Fed. Rep. 621, 1882.

7 Tyler v. Galloway, 12 Fed. Rep. 567, 1882.

3

2

and Judge WHEELER,' and also by Justice MATTHEWS and Judge SAGE. The third was that adopted by Judge CADWALLADER. The point has never been decided by the Supreme Court, though the action of that tribunal, in O'Reilly v. Morse; appears to favor the first of the four suggested views. The subject is a complex one, and when the law relevant thereto is finally settled, a number of considerations will require to be weighed which appear not to have been heretofore considered.

The second view of the law operates to deny an appeal from the Circuit Court upon the question of the necessity for a disclaimer. If the patentee submits to the condition imposed by the chancellor, and if, in order to secure an injunction and an account on his confessedly valid claims, he disclaims the others, and if the Supreme Court, on an appeal by the defendant, holds that no disclaimer was necessary in the case, it will be impossible to rectify the error, for there is no way to recall a disclaimer.

The third view is open to the same objections as the second, but in a diminished degree; a degree diminished, in any particular case, in the same proportion that the value of an injunction, bears to the value of an injunction and an account. It is also open to the objection of inconsistency, for there is probably no reason for refusing an account, which does not apply with equal force to an injunction.

The fourth view seems still less reasonable than the third, because an account is incidental to an injunction, and if no injunction is granted, the power to enter a decree for an account is sometimes wanting.

The first view would probably be found to be more consistent with convenience and with justice than either of the others. Whenever a Circuit Court decides, that while some of the claims of a patent are valid and have been infringed,

1 Matthews v. Spangenberg, 14 Fed. Rep. 350, 1882.

Odell v. Stout, 22 Fed. Rep.

169, 1884.

3 Aiken v. Dolan, 3 Fisher, 207, 1867.

O'Reilly v. Morse, 15 Howard, 121, 1853.

others are void and should be disclaimed; that decision is right or it is wrong. If it is wrong, the patentee ought to have an opportunity to get it corrected by the Supreme Court. On the other hand, if that decision is right, it will be either obviously right or questionably right. If it is obviously right, and if the patentee insists on taking a decree without filing a disclaimer, he will do so at his peril; for the Supreme Court will probably hold, on the defendant's appeal, that the omission to disclaim was unreasonable, and the whole patent therefore void. If the decision is questionably right; that is to say, if there is room for difference of intelligent opinion upon the point, then the patentee ought not to be forced to disclaim till the Supreme Court shall have decided that question against him. No ultimate injustice would result to either litigant, were the first of the four courses, adopted by the Circuit Courts; whereas the adoption of either of the others, involves a denial of the right of appeal; a right provided by the statute in all cases touching patents."

1 Revised Statutes, Section 699.

CHAPTER IX.

REISSUES.