I. A patentee cannot be charged with having abandoned his inven-
tion, where the application was not filed in the Patent Office, for
more than two years after it was sworn to, during all which time
the solicitors had the application, model, and requisite funds in
their hands, but neglected to file the application, and the patentee
was ignorant of such neglect. Birdsall v. McDonald.
2. In 1856, an application for a patent was improperly rejected. The
inventor did not withdraw his application, or in any manner acqui-
esce in the rejection, nor did he appeal from the Commissioner, but
he pressed his claim for a patent, from time to time, as his circum-
stances allowed, until 1864, when he made a new application :
Held, That the patentee, neither lost, nor did the public acquire
against him, any rights by their unauthorized use of his invention,
during the time between the two applications. Goodyear Dental
Vulcanite Co. v. Smith.
3. Cummings applied for a patent in April, 1855, and was finally re-
jected by the Commissioner, February, 1856. In 1859, he unsuc-
cessfully moved for a rehearing. In March, 1864, he renewed his
application; whereupon the Patent Office reversed its former decis-
ion and the patent was granted, June 7, 1864. The invention went
into public use about 1860: Held, that the invention was not thereby
abandoned, or relinquished to the public. Goodyear Dental Vulcan-
384
4. Imperfect and crude descriptions of an invention, imparted to oth-
ers by the inventor, at a time when he did not have a complete con-
ception of the invention for which he subsequently obtained his pat-
ent, are no evidence of an intention to abandon it. Locomotive
Engine Safety Truck Co. v. Pennsylvania R. R. Co.
5. Experimental use of an invention, although made in public, from
necessity, is not a public use, and is no evidence of abandonment.
6. Cummings applied for a patent in April, 1855, and was rejected in
1856. He filed a new application in 1864, and the patent was then
granted. The invention went into public use in 1859: Held, that
where successive applications are made for a patent,and there is no
proof of actual abandonment, the subsequent application will be
deemed a continuation of the first. Goodyear Dental Vulcanite Co.
v. Willis.
7. Delay in filing an application is no ground for charging the inventor
with abandonment, if he was residing in the Confederate States
during the war, and guarded the invention with scrupulous care,
and there is no evidence, that any knowledge or use of it, reached
the public. Knox v. Loweree.
589
8. If between the first and second application, by an inventor, for a
patent, he has manifested an actual intention to abandon the first,
the patent granted upon the second application, will have relation
to the time of the filing of that application only; the intention
manifested by the patentee, to abandon the first, will sever the con-
nection between the two applications. Pelton v. Waters.
See EXPERIMENTS, I; NOVELTY, 2; PARTICULAR PATENTS,
ACQUIESCENCE.
See ABANDONMENT; INJUNCTION, 10.
See EXECUTORS AND ADMINISTRATORS.
See EVIDENCE, 1, 2, 5, 6, 10, 11; INJUNCTION, I; PRACTICE,
1. If between the first and second application, by an inventor, for a
patent, he has manifested an actual intention to abandon the first,
the patent granted upon the second application, will have relation to
the time of the filing of that application only; the intention mani-
fested by the patentee, to abandon the first, will sever the connec-
tion between the two applications. Pelton v. Waters.
2. W. and T., having filed applications for patents showing substan-
tially the same device, at the respective dates March 31, 1868, and
April 21, 1868, were both rejected. T. persisted in his claim, and,
upon appeal, secured his patent; while W. amended his applica-
tion, excluding from his claim the common device, and thus, with-
out appeal, obtained a patent of narrow scope. Subsequently learn-
ing of T.'s patent, he filed a second application, broad enough to
include the device previously omitted, and in the consequent inter-
ference proceedings with T. was adjudged the prior inventor, and
thereupon obtained a patent for the invention previously patented
to W. Held, in a suit brought by T. against W., for infringement,
that W.'s second application was the commencement of a new pro-
ceeding, to which alone the patent granted in pursuance of it re-
lates; and therefore, that said second application being subsequent
in date to T.'s patent, the presumption as regards priority of inven-
tion was with T. Id.
See ABANDONMENT, I, 2, 3, 6, 7, 8; PARTICULAR PATENTS,
35, 121; REJECTED APPLICATION, I, 2.
1. Prior to the Act of 1870, relating to patents, a patentee assigned to
A. the exclusive right to make and sell the patented articles in a
specified territory, comprising two counties in the State of Illinois.
This assignment was not recorded. On November 18, 1870, the
patentee assigned to B. all his right, title and interest in and to the
said letters patent in and for the whole State of Illinois. This as
signment was recorded December 5, 1870: Held, that under the Act
of 1836, relating to patents, the unrecorded assignment to A. was
valid as against B., and that the assignment to B., transferred only
the residuary interest in the patent, left in the patentee, after the
transfer to A. of the exclusive rights in the specified territory.
Turnbull v. Weir Plough Co.
2. The provisions of the patent law of 1836, relating to the recording
of assignments of patents, are for the protection of bona fide pur-
chasers, without notice of prior assignments, and an assignee of
"all the right, title, and interest" of the patentee (when any inter-
est remains in the patentee upon which the assignment can op-
erate), is a purchaser only to the extent of the residuary interest re-
maining in the patentee at that time. As between the parties to it,
an assignment is equally binding and valid without recording. Id. 544
3. A subsequent recorded assignment, of "all the right, title, and in-
terest'' of a patentee in his patent, is analogous, both in effect and
the rules of law governing it, to a quit claim of real estate, as against
a prior unrecorded deed of the same property. Id.
4. Where any interest whatever, upon which an assignment of a pat-
ent can operate, remains in the patentee, the court will not, in the
absence of evidence, presume that the patentee, by a subsequent as-
signment of "all his right, title, and interest” in a patent, intended
to convey what he had previously conveyed to other parties, and
thereby perpetrate a fraud on his second assignee, but, on the other
hand, the court will construe the second assignment, as intending
to convey only such residuary interest in the patent, as remained
in the patentee after the making of the first assignment. Id.
5. What the determination of the court would be, if, at the time of
making the second assignment, no interest in the patent remained
in the patentee, quære. Id.
I. An attachment awarded against the president of the defendant cur-
poration, he having been served with the injunction, and having
devised and practised the transgressing process.
Wetherill v. New
Jersey Zinc Co.
2. A final decree, in an equity suit, awarded a decree against the de-
fendant in favor of the plaintiff, for a sum named, and then decreed
that the defendant pay to the master $500, allowed to him as his
compensation, less such sum as the defendant had paid to the mas-
ter, and that the plaintiff have execution for the sum awarded to
him. The defendant paid to the master $35 on account of the $500,
and refused to pay more. He appealed to the Supreme Court from
the whole of the decree, and gave a bond to the plaintiff, sufficient
to cover the amount awarded to the plaintiff and to stay the execu
tion, and a citation was issued and served. The master applied for
an attachment against the defendant for the $465: Held, that the
bond did not cover the amount directed to be paid to the master,
and was not a bond to the master; that the provision for the pay-
ment of the master was not subject to be stayed by the proceedings
for appeal; and that the attachment must be granted. Myers v.
Dunbar.
See VIOLATION OF INJUNCTION, I.
1. The burden of proof is on the defendant, to show want of novelty
in an invention; and where the defendants' testimony is inconsis-
tent, and contradictory, and there is a reasonable doubt as to its
correctness, the complainant's prima facie case, even if uncorrobo-
rated, must prevail. Crouch v. Speer.
2. The burden of proof is on the defendant to show a prior invention,
and, if the evidence is too vague and unsatisfactory to establish af-
firmatively, as against the patent, that the patentee was later in time
in invention, the patent must stand. Taylor v. Wood.
3. As the plaintiffs failed to show the profits or damages arising from
the use of the improvement, the master should have decided that
nominal damages only could be recovered. Goulds Mfg. Co. v. Cow-
ing.
4. Under the circumstances of this case, the onus of proving that in-
strumentalities or improvements, not covered by the infringed pat-
ent, contributed, and the extent and value to which they contrib-
uted, to the defendant's profits, rested upon the defendants; and, as
they failed to give affirmative proof thereof, before the master,
they were properly charged with the whole amount of the profits
which they derived. (Citing Carter v. Baker, 4 Fish, 420.) Ameri-
can Nicholson Pavement Co. v. City of Elizabeth.
CESTUI QUE TRUST.
See EXECUTORS AND ADMINISTRATORS, I.
I. A patentee may claim broadly a new product, however made, or he
may claim the new product, when made by a described process, or
he may claim the process, but he cannot embrace both the process
and the product in the same claim. Merrill v. Yeomans.
2. A patentee may claim a combination of mechanical elements, which
of themselves will not produce a new and useful result, when his
specification shows how the patented combination used with or sup-
plemented by, other devices and instrumentalities therein described,
will produce such result. Wells v. Jacques.
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