Gordon v. Anthony. an assignment of said property and interests, which assignment specifies, as among the assigned property, "all the said Ebenezer Gordon's right, title and interest in and to all and any claims under the said invention, patent, letters patent and patent-right;" that he reported to the Court, on the same day, that he had done so, and had received from the purchasers the $200 purchase-money, and how he had disposed of part of it; that the Court, on the next day, made an order confirming said report as to said assignment; that, on the latter day, the receiver reported to the Court how he had disposed of the rest of the purchase-money; and that the Court, on that day, confirmed said report. The defendants contend, that, by virtue of said proceedings and said assignment, any right which the plaintiff had to recover against them for an infringement of the patent sued on has become vested in the defendants. Under sections 11, 14 and 17 of the Act of July 4th, 1836, (5 U. S. Stat. at Large, 121, 123, 124,) it was always held, that no one could bring a suit, either at law or in equity, for the infringement of a patent, in his own name alone, unless he were the patentee, or such an assignee or grantee as is mentioned in the 11th and 14th sections of that Act. The provision in section 36 of the Act of July 8th, 1870, (16 U. S. Stat. at Large, 203,) in regard to the assignments of patents and of interests therein, now embodied in § 4,898 of the Revised Statutes, is not different from that found in section 11 of the Act of 1836. The provisions in sections 55 and 59 of the Act of 1870, in regard to suits in equity and at law for the infringement of a patent, now embodied in sections 629, 711, 4,919 and 4,921 of the Revised Statutes, are not different from those found in sections 14 and 17 of the Act of 1836. These provisions were considered by this Court in the case of Nelson v. McMann, (ante, p. 139.) Under them no person can bring a suit for profits or damages for infringement, who is not the patentee or such an assignee or grantee as the statute points out. A claim to recover profits or damages for past infringement cannot be severed from the title by assignment or grant, so as to Gordon v. Anthony. give a right of action for such claim, in disregard of the statute. The profits or damages for infringement cannot be sued for except on the basis of title as patentee, or as such assignee or grantee, to the whole or a part of the patent, and not on the basis merely of the assignment of a right to a claim for profits and damages, severed from such title. Therefore, if, in the present case, no such assignment or grant has been made to the defendants as the statute contemplates, they could not bring suit, in their own names, under the assignment made to them, to recover any claims, profits or damages for infringement, which belonged to Gordon, nor can they use the assignment as a defence against any such claims existing against themselves in favor of Gordon. In this case there has been no assignment executed by Gordon. The right claimed by the defendants rests, therefore, wholly on a transfer by operation of law. In Stephens v. Cady, (14 Пoward, 528,) it was strongly intimated by the Supreme Court, that an assignment of a copyright by operation of law, unaccompanied by an assignment made by the owner, vests no title. In Stevens v. Gladding, (17 Howard, 447,) the same Court suggest that there would be great difficulty in assenting to the proposition that patent-rights and copyrights are subject to sale under the process of State Courts. In Ashcroft v. Walworth, (1 Holmes, 152,) it was held, that the title of an insolvent debtor to, or his interest in, a patent, does not pass to his assignee in insolvency, by an assignment of his property made by a Judge under the insolvency law of Massachusetts. This decision was made on the ground that the assignee in insolvency acquired no title, because the conveyance was not such an one as was contemplated by section 11 of the Act of 1836, namely, a written instrument signed by the owner of the patent and duly recorded. This seems to be a correct view, and it follows that the defendants acquired no right to anything which they can set up as a defence to the plaintiff's claim. It is held, (Moore v. Marsh, 7 Wallace, 522,) that the assignment of a patent does not carry with it a transfer of the The Atlantic Giant Powder Company v. Rand. right to damages for an infringement committed before such assignment. It is not at all clear that the transfer of the "claims" which the assignment in the present case transfers, can be construed to cover claims for past infringements. (Dibble v. Augur, 7 Blatchf. C. C. R., 86.) If the defence under the receivership were held to be available in respect to the whole or any part of the claim of the plaintiff, the defendants would, probably, on the facts in regard to the putting in evidence of the proceedings in the State Court, be held to be entitled now to file a supplemental answer setting up such proceedings; but that question does not now arise. There must be a decree for the plaintiff, for an account of profits and damages. The reissued letters patent, No. 5,799, granted to the Giant Powder Company, March 17th, 1874, for 17 years from the 26th of May, 1868, for an "improved explosive compound," (the original patent having been granted to Julius Bandmann, as assignee of Alfred Nobel, as inventor, as No. 78,317, May 26th, 1868,) are valid. The claim of said patent, namely, "The combination of nitro-glycerine with infusorial earth, or other equivalent absorbent substance, as a new explosive compound," is infringed by an explosive compound known as rendrock powder," and containing, in 100 parts by weight, 34.71 parts of nitro-glycerine, 52.68 parts of nitrate of potash, 5.84 parts of sulphur and 6.77 parts of woody fibre, charcoal and resin, in nearly equal proportions. The Atlantic Giant Powder Company v. Rand. Said reissued patent is not for a different invention from the said original patent. The specifications of the original and the reissue examined and compared. Where a defendant has always been notified that it was claimed he infringed, and has not been misled, by any action of the plaintiff, into making investments, and has no peculiar equity as against the plaintiff, an injunction will not be withheld because the plaintiff, having sued the defendant for infringement, permitted the suit to rest until a recovery was had on the patent in other suits, and then discontinued it and brought a new suit against the defendant. A description in a prior patent, to invalidate a subsequent patent, must show how the article can be certainly made, and its making must be the result of directions in the description, and not of accident. (Before BLATCHFORD, J., Southern District of New York, May 5th, 1879.) BLATCHFORD, J. This is an application for a preliminary injunction, founded on reissued letters patent, No. 5,799, granted to the Giant Powder Company, March 17th, 1874, for 17 years from the 26th of May, 1868. The original patent was granted to Julius Bandmann, as assignee of Alfred Nobel, of Hamburg, Germany, the inventor, as No. 78,317, May 26th, 1868. Bandmann assigned the patent to the Giant Powder Company, and it was reissued to them October 21st, 1873, as No. 5,619. On the surrender of No. 5,619, reissue No. 5,799 was granted. The plaintiff is the owner of No. 5,799 for all the States and territories of the United States which lie east of the easterly boundary lines of the territories of Montana, Wyoming, Colorado and New Mexico. The application for No. 5,799 was filed March 11th, 1874. The specification of No. 5,799 is signed by the Giant Powder Company. It begins by setting forth that Nobel invented 66 an improved explosive compound, of which the following is a specification." It then proceeds: "This invention relates to a new and useful combination or mixture of nitro-glycerine with some absorbent substance, whereby the condition of the nitro-glycerine is so modified as to render the resulting explosive compound more practically useful and effective as an explosive, and far more safe and convenient for handling, storage, and transportation, than nitro-glycerine in its ordi The Atlantic Giant Powder Company v. Rand. nary condition as a liquid. The invention consists in combining or mixing with nitro-glycerine some porous or absorbent substance, which, being free from any quality which will cause it to decompose, destroy or injure the nitro-glycerine, forms, in combination with it, an explosive compound possessing certain marked properties of great practical utility, which not only increases its efficiency, but also obviates many of the serious practical objections to the employment of nitroglycerine as an explosive. Some of these peculiar properties of this mixture will be briefly stated. Nitro-glycerine being a liquid, it is usually necessary, in exploding it as an explosive for blasting purposes, to place it in cases or cartridges formed of paper, metal or other substance, which must, of course, be of somewhat smaller diameter than the bore holes, as, if not so inclosed, the nitro-glycerine would permeate the seams of the rock, and prove highly dangerous to the miner, on account of its liability to explode in subsequent drillings; but, by means of this invention, the nitro-glycerine, being held in combination with the porous or absorbent substance with which it is mixed, and then assuming the altered form of a powder or paste, remains in the bore hole in which it is placed, without leaking through the seams of the rock. Another advantage over liquid nitro-glycerine is, that this mixture can be made to fill the bore hole more closely than a cartridge case will, owning to the irregularities of the shape of the hole, which greatly increases its efficiency. The liability of fluid nitro-glycerine to accidental explosion from agitation or concussion, renders its handling and transportation very dangerous. This danger is, however, almost en-. tirely obviated by the use of the compound described in this specification, because, when mixed with a suitable absorbent, the nitro-glycerine is far less sensitive to shocks than when in a liquid condition, so that it may be handled in mass, either loose or in packages, with impunity. So much is this the case, that, when this mixture is packed in a wooden case or box, the inclosure may be knocked to pieces without danger of exploding its contents. This invention, then, consists |