Massachusetts, in copartnership with his brother-in-law, Caleb Norwood, under the name of Norwood & Manning. In that year Oliver C. Smith, a machinist at Salem, constructed for the firm a machine containing adjustable hollow water-cooled rolls, with stationary scrapers, substantially such as are described in the patent, for converting isinglass into sheets in the manner therein set forth. The use of this machine was continued down to the year 1867, when the firm of Norwood & Manning was dissolved. In the division of the assets of the firm between the partners the machine with the scraper made by Smith fell to Norwood. He took into the business with him as a partner his son, Caleb J. Norwood, and continued it in the same factory from 1867 to 1870, using the machine with the stationary scraper which had been made by Smith.

James Manning, after the dissolution of the firm of Norwood & Mauning, established an isinglass factory at Rockport, Massachusetts, and procured to be constructed two machines similar to that disclosed in the patent. With this factory and machinery he set up in business his two sons, John J. Manning and William N. Manning, and they carried on the business of manufacturing isinglass under the name of J. J. Manning & Brother from the year 1868 until the testimony in this case was taken in 1877, using the two machines with scrapers above mentioned. James Manning, the inventor, had no interest in the business carried on by Norwood and his son after the dissolution of the firm of Norwood & Manning in 1867, nor in the business of J. J. Manning & Brother, carried on from 1868 until after the issue of the patent.

Some attempt is made to show that the use of the machines in the factory of Caleb Norwood from 1867 to 1870 was a secret and not a public use; but we think the testimony shows a use open to the public generally. But whether this be so or not is immaterial, for Norwood and his son were allowed by the inventor the unrestricted use of the patent during the period mentioned without injunction of secrecy or other condition. This is sufficient to constitute a public use. Egbert v. Lippman, 104 U. S., 333.

The decided weight of the evidence shows that there was also a public use of the invention in the factories of J. J. Manning & Brother for more than four years prior to the application of the patent, namely, from 1868 to 1873.

It is also made clear by the testimony not only that the machinery, but the process used by Norwood & Manning from 1860 to 1867, by Norwood & Son from 1867 to 1870, and by J. J. Manning & Brother from 1868 to 1873, and after that year, was substantially the same as that described in the patent. During all these years there was no material change either in the machinery or the process. The use of the machinery and process was not, therefore, an experimental use. These conclusions of fact are fatal to the complainants' case.

It is the policy of the patent laws to forbid the issue of a patent for an invention which has been in public use before the application there

for. The statute of 1836 (5 Stats., 117, sec. 6) did not allow the issue of a patent when the invention had been in public use or on sale for any period, however short, with the consent or allowance of the inventor; and the statute of 1870 (16 Stats., 201, sec. 24; Rev. Stats., sec. 4866) does not allow the issue, when the invention had been in public use for more than two years prior to the application, either with or without the consent or allowance of the inventor. Under either of these statutes the patent relied on in this case was improvidently issued, for there was a public use, with the consent of the inventor, for more than two years prior to the application. The patent is therefore void. McClurg v. Kingsland, 1 How., 202; Egbert v. Lippman, ubi supra; Consolidated Fruit Jar Co. v. Wright, 94 U. S., 92; Worley v. Tobacco Co., 104 U. S., 340.

The decree of the circuit court was therefore right and must be affirmed.

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

WOOSTER V. THE SINGER MANUFACTURING COMPANY.

Decided April 10, 1883.
23 O. G. 2513.

1. PLEA OF LICENSE AFTER REVOCATION FOR BREACH OF CONTRACT.

A defendant corporation having violated the conditions of a contract under which a license to manufacture and sell a patented device was granted, and the license having therefore been revoked by the licenser under a provision of the contract, in a suit for iufringement against such corporation after the revocation, a plea setting up the license was overruled.

2. SUIT AGAINST LICENSEE AFTER REVOCATION-DEFENSES.

When a license has been revoked by a plaintiff and a defendant is sued as a naked infringer, he is at liberty to avail himself of any defense ordinarily open to a defendant charged with infringement.

Mr. Frederic H. Betts for the plaintiff.

Mr. B. F. Lee and Mr. John F. Dillon for the defendant.

SHIPMAN, J.:

This is a bill in equity, in the usual form, founded upon the alleged infringement of two reissued letters patent. The defendant has pleaded a license and permission to manufacture and sell the articles embodying the invention described in said patents.

There are two corporations, each called "The Singer Manufacturing Company"-one, a joint stock corporation, incorporated in 1863, and located in the city of New York; the other, incorporated in 1873 by the Legislature of the State of New Jersey, and a citizen of that State. Mr. George Ross McKenzie, general manager of the New Jersey corporation, testifies that that company was an incorporation of the same perons who composed the New York: company; that since the organization

of the New Jersey company it is the one under which entirely the business of the Singer Manufacturing Company has been done; that all the property of the New York corporation has been transferred to the other company; that the officers of each company are the same, and that the principal financial office of the New Jersey corporation is at the same place in New York City where the office of the New York corporation was before the new company was formed. The New York company has a distinct legal existence, and is apparently a legal person, and these two corporations have not become a unit; but the property which was formally owned and the business which was formerly done by the old corporation have been transferred to the new organization. On July 2, 1875, the plaintiff, who was about to apply for the two reissues which were afterward obtained, and which are the subject of this bill, entered into two written agreements with the New Jersey corporation for licenses when the reissues should be granted. These agreements were evidently intended to be memorandum agreements, and to be the basis upon which formal licenses "with the usual clauses and provisions of licenses of such character" were to be subsequently drawn, and such formal licenses were to be the fulfillment of the preliminary agreements.

On October 8, 1875, and after the reissued letters patent had been issued, a carefully-drawn agreement of license (which was the completed contract contemplated by the agreements of July 2) was entered into between the plaintiff and the New Jersey corporation. The seal of the New York corporation was attached to this agreement, I presume, by inadvertence, for the testimony of Mr. McKenzie and the fact that the agreements of July 2 were undoubtedly with the New Jersey corporation leave in my mind no room for doubt that the agreement of October 8 was in fact with the same corporation.

Great stress is laid by the defendant upon the testimony of the plaintiff as a witness in his own behalf that he had never granted licenses to the New Jersey corporation, and upon the change of front which the plaintiff's counsel made after the testimony had been taken. It is evident that until Mr. McKenzie testified the relations between the two corporations, and the fact that the younger corporation alone was in active business, were not well understood by the plaintiff and Mr. Comstock, his attorney, and it may very well be that Mr. Wooster supposed that he could properly say that his contracts were with the New York corporation; but Mr. McKenzie's knowledge of the part which that company had in the business which was done under the name of "The Singer Manufacturing Company" must be much more intimate than that of any other person, and his testimony is convincing that the New Jersey corporation was the licensee.

In the contract of October 8, 1875, the defendant admitted the "force and validity of said letters patent and all reissues thereof," and covenanted that it would not contest, nor aid, or assist or advise others to contest

in law or equity the validity of said patents or any reissue thereof. It was also provided that "upon the failure of the party of the second part at any time faithfully to carry out and perfom any or either" of the conditions of the contract, the plaintiff could revoke and annul the agreement, in which case the agreement and all right and privileges of the defendant should cease and determine.

On November 28, 1879, the plaintiff, on account of the defendant's breach of the conditions of this agreement, revoked and annulled the license, and gave written notice of this revocation to the defendant.

Since November 28, 1879, the defendant has sold articles which embodied the inventions, and described and claimed in said letters patent, and has kept such articles in stock for sale. No examination was had in regard to the infringement, and I suppose that that fact is conceded.

The plea must be overruled; but an important question which has been discussed in the elaborate briefs of counsel is, whether the customary permission to answer shall be granted with or without restrictions upon the contents of the answer.

The defendant was a licensee of sundry patents, and by its contract of license had bound itself not to contest the validity of the named patents or of any reissue thereof, and had enjoyed the benefit of the license for a time. The plaintiff revoked the license on account of the defendant's breach of its agreements therein, and now sues the licensee as a naked infringer. The point is whether, such facts appearing on the record, the defendant is remitted to all its former rights, and, being sued as an infringer, can defend as an ordinary infringer. I have heretofore shared the doubts which are expressed by Mr. Curtis (Curtis on Patents, 4th ed., sec. 218) whether the language of Justice Nelson in Woodworth v. Cook (2 Blatchif. C. C. R., 151) is to be understood as deciding that a defendant who had made a definite agreement in his contract of license not to contest the validity of the patent was, when sued as an infringer after a revocation of the license, remitted to all the rights which he enjoyed before the license, and have doubted, when the fact of a license and of a covenant not to deny the validity of the patent and of an enjoyment of the benefit of the license were found by the court to exist, whether the defendant was in a proper position to deny the validity of the patent. But the more commonly expressed and therefore presumably better judicial opinion is to the effect that when the license has been revoked by the plaintiff and the bill treats the defendant as a naked infringer he is at liberty to avail himself of any defense ordinarily open to any defendant who is charged with infringement. Burr v. Duryea, 2 Fisher 275; Pelham v. Edelmeyer, 15 Fed. Rep., 262; White v. Lee, 14 Fed. Rep., 789.

I have therefore, contrary to the opinion expressed after the hearing, determined to draw the decretal part of the order in the ordinary form, without deciding either in favor of or against the claim of the plaintiff, that the answer ought not to contest the validity of the patent, so as to

leave the question of the extent of the defendant's answer to be decided upon a motion or hearing in which the question shall be directly at issue.

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

ZEUN ET AL. v. KALDENBERG.

Decided April 19, 1883.

23 O. G., 2514.

· INFRINGEMENT-SIMILAR DEVICES-PARTial Use.

A patent for a hand-mirror in which an elastic cushion or packing is interposed between the glass and the back of the frame to press the glass against the beveled rim of the frame, infringed by one in which the packing, although it performs an additional office by being located outside the periphery, extends beneath the edge of the glass sufficiently to press the glass against the upper rim.

Mr. Louis C. Raegener for the complainants.

Mr. Saml. T. Smith for the defendant.

WALLACE, J.:

It is quite obvious that Zeun is entitled to the credit of the conception which imparts the main value to the invention described in the defendant's letters patent; but, unfortunately, Zeun in the letters patent granted to him is limited by the description and claim to a handmirror or toilet-glass in which an elastic cushion or packing is interposed between the glass and the back of the frame. The office of this cushion is to press the glass against the beveled rim of the frame. The employment of any cushion which will perform this office in combination with the other parts is an infringement of his patent. Some of the toiletmirrors made by the defendant fall within this category, because a part of the elastic packing is beneath the edge of the glass sufficiently to press the glass against the upper rim or lip of the frame. The patent of the defendant, however, does not necessarily require the elastic packing to be interposed between the glass and the back of the frame. As shown in his patent, the packing may surmount the periphery of the glass without having any part of it located beneath the glass or so as to press the glass against the rim or lip of the frame. It may be doubtful whether the packing would practically be satisfactory if located entirely outside the periphery of the glass. However this may be, the defendant cannot escape liability for iufringement when he appropriates the complainants' invention, although by the location of the packing outside the periphery his packing performs an additional office and may involve sufficient invention to sustain his patent.

A decree is ordered for complainants.