the date of the notice. The 138th Rule of Practice in the Patent Office provides that cases will be regarded as pending before a tribunal until appeal has been taken from its decision, or until the limit of appeal, which must be fixed in each case, has expired. The notice to the attorney in this case was in these words: "limit of appeal ten days." The limit of appeal was not fixed in a definite manner. The notice is open to two constructions. It may be regarded as giving ten days from the date of the action appealed from or from the date of the receipt by the attorney of the notice.

Under these circumstances it appears to the Department that it would be proper for the Patent Office to treat the appeal of Mr. Buckley as having been filed within the limit fixed, and you will please so treat it. Very respectfully,

M. L. JOSLYN,
Acting Secretary.

The COMMISSIONER OF PATENTS.

DECISIONS

OF

UNITED STATES COURTS

IN

PATENT CASES,

1883.

[United States Circuit Court-Northern District of Illinois.]

TURNBULL ET AL. v. WEIR PLOW COMPANY ET AL

Decided March, 1880.

23 O. G., 91.

1. PATENTS FOR INVENTIONS--CONVEYANCE OF RIGHT.

A conveyance of "all my right, title, and interest in and to" a patent, though properly recorded, does not include the right for two counties covered by a prior conveyance, although the prior conveyance was not recorded in the Patent Office. 2. CONVEYAnce of PatenTS-WHAT INCLUDES.

A conveyance of the right to u ake and sell a patent includes the right to the use of the thing patented.

Mr. James L. High for the complainants.

Messrs. West & Bond for the defendants.

DRUMMOND, C. J.:

I think the plaintiffs in this case were entitled to a decree. Some of the questions involved are of importance, and have been reargued in this case. The bill charges an infringement by the defendants of two claims in the patent, issued originally October 18, 1859, and reissued in 1871 for some improvements in a plow or cultivator. One of the principal and the most important questions in the case arises under the law of Congress upon the subject of patents. The patent was issued origi. nally to Thomas McQuiston, and the plaintiffs claim, through him, the right in two counties-Warren and Henderson-in this State to use the improvement patented. The conveyance by McQuiston through which the plaintiffs' claim, was not recorded in the Patent Office at the time the conveyance through which the defendants' claim, was made

121

by McQuiston and recorded. In other words, the conveyance through which the defendants' claim from the patentee was first recorded in the Patent Office before that through which the plaintiffs' claim was recorded.

I stated at the time I decided this question before, Turnbull v. Weir Plow Company, 6 Biss., 225, that it was one of great difficulty, and about which I had some doubt, because the decision seemed to be contrary to the practice adopted in the Patent Office as to the construction which was there placed upon assignments of patents. After the patentee had made an assignment of the right to these two counties in Illinois he made an assignment through which the defendants claim, which assignment, it is insisted, according to the general scope of the language, would include the two counties which had been previously assigned by the patentee, and under which the plaintiffs claim. The language of the assigninent to the defendants is as follows:

Do hereby grant and convey to the said William S. Weir all my right, title, and interest in and to said letters patent in the following described territory.

The construction which the court formerly placed upon that assignment was that it did not necessarily include the right which had been previously conveyed by the patentee in the counties of Warren and Henderson, but only included all the right which the assignor then had. The language of the statute authorizing assignments in writing to be made of rights secured by letters patent is somewhat different from that contained in this assignment, and also in the form which was given by Mr. Fisher at the time he was Commissiouer of Patents. The language in the statute in substance is this: "all the right which was secured to the patentee by letters patent." (Rev. Stats., sec. 4898.) The language used in the form prescribed by Mr. Fisher is substantially like that used in the assignment through which the defendants claim "all the right, title, and interest in and to said letters patent." It is quite clear to my mind that Mr. Fisher, at the time he prescribed this form, was not thinking of the case where a patentee had disposed of a portion of his interest in the letters patent-as, for example, in such a case as this, where he had assigned the right in a particular territory, reserving his right to other portions of the territory covered by the patent-and therefore I cannot hold that the form prescribed by Mr. Fisher has the same efficacy as that prescribed by the statute itself. Where a man assigns all the right which was conveyed to him by letters patent the meaning is that the assignment takes with it everything that the letters patent conveyed. It is certainly different from an assignment which declares merely that he assigns all the interest which he, at the time he makes the assignment, has in the letters patent, provided, as in this case, he had previously assigned a part of the interest which he had to another person. So that, admitting that the question is one of difficulty and doubt, I must still adhere to the view which I originally took of this case, and hold that it was not the intention of the assignment which was

made to Weir, and through which the defondants claim, to convey to him the interest which had been previously conveyed by the patentee in the counties of Warren and Henderson in this State.

Another objection made to the right of the plaintiffs to recover is that the conveyance to them did not include the right to use as well as to make and sell the improvement patented within those counties. I think that the assignment to make and sell includes necessarily the right to use the thing patented, because without the right to use the right to make and sell would be a barren right. It must be construed as having been the intention of the parties that the right to manufacture and sell included the right in the vendee to use the thing sold.

There is nothing in the case to estop the plaintiffs from setting up a claim under this patent in consequence of any supposed laches that they may have committed; and I think it must be considered that the defendants, under all the circumstances in the case, have infringed upon the right of the plaintiffs. I have not the models of the machines here, without which a statement of the particular points constituting the claim of infringement by the defendants would be unintelligible. It is sufficient to say that I have heretofore fully considered those questions, and have reconsidered them on the argument which has been made, and have reached the conclusion which I then formed, although, perhaps, I did not particularly state it at the time.

It may be said the case is not one of very great importance in some respects-that is, it includes only two counties in this State; but, as I have said, some of the questions involved are quite important, and particularly as to the construction under the patent law of the assignments in this case.

[United States Circuit Court-Southern District of New York.]

MATTHEWS v. SPANGENBERG ET AL. SAME v. MARBLE.

Decided April 25, 1882.

23 O. G., 92.

1. EVIDENCE TAKEN OUT OF TIME-MOTION TO SUPPRESS.

Evidence taken and filed out of time, when there had been no motion to suppress the same, and when objection was made at the hearing to its consideration, allowed to stand and be considered.

2. INFRINGEMENT.

Where the defense was that the defendants' machine was purchased of another person, who had settled with the patentee therefor, and the proof failed to show that the defendants purchased before the date of settlement, Held that the use by the defendants of such apparatus is an infringement.

3. DISCLAIMER-NEGLECT TO FILE-COSTS.

Where the patentee made certain claims by mistake without any willful default or intent to mislead the public, and did not unreasonably neglect to enter disclaimer of the same, he is entitled to maintain suit, but without cost, upon entering the proper disclaimer.

4. PATENT No. 9,028 EXAMINED.

Reissue Letters Patent No. 9,028 examined and sustained as to the fourth, sixth, eighth, and ninth claims, held not infringed as to the first claim, and void as to the fifth and seventh.

Mr. Arthur v. Briesen for the plaintiff.

Mr. Philip Hathaway for the defendants. WHEELER, J.

These suits are brought upon Reissue Letters Patent No. 9,028, dated January 6, 1880, granted to the orator upon the surrender of original Letters Patent No. 50,255, dated October 3, 1865, for soda-water apparatus. The defenses relied upon are that the defendants purchased the apparatus used by them of William Gee, who afterward settled with the orator; that the patent is void for want of novelty, and that they do not infringe. The original patent is not in evidence.

Some of the defendants' evidence was taken and filed out of time. No motion to suppress it has been filed. The orator objects to its consideration, and the defendants ask that it be considered or the time extended to cover its taking. As no motion to suppress has been filed, it is allowed to stand and is considered. Wooster v. Clark (21 O. G., 264) is relied upon by the orator on this point, but in that case there was a motion to suppress.

The case does not show that the defendants purchased their apparatus of Gee before he settled with the orator, and therefore entirely fails to show that he settled with the orator for the sales to the defendants. They stand by themselves independently of Gee. Steam Stone Cutter v. Windsor Manufacturing Company, 17 Blatchf., 24. That defense fails for want of proof.

The patent has nine claims. The second and third are not in controversy. Upon all the evidence it is found that the first claim is not infringed; that the fifth and seventh are anticipated by Letters Patent No. 44,645, dated October 11, 1864, granted to A. J. Morse, for a sirupfountain, and that the fourth, sixth, eighth, and ninth are not antici pated, and have been infringed by each of the defendants. The parts of the things patented in the fourth, sixth, eighth, and ninth claims are definitely distinguishable from the parts claimed in the fifth and seventh claims, and the orator appears to have made the latter claims by mistake, supposing himself to be the original and first inventor of the parts claimed in them, without any willful default or intent to defraud or mislead the public, and not to have unreasonably neglected to enter a disclaimer of those parts. Thus far, therefore, he is entitled to maintain this suit, but without costs, on entering the proper disclaimer. Rev. Stats., sec. 4922; Burdett v. Estey, 15 Blatchf., 349.

On filing a certified copy from the Patent Office of the record of a disclaimer by the orator of what is claimed in the fifth and seventh claims, let decrees be entered that the fourth, sixth, eighth, and ninth claims of the patent are valid, that each of the defendants have infringed, and for an injunction and an account, without costs.