through numerous contests before the office tribunals, are strongly conclusive facts as to its merits. [Little vs. Sargent, 88. 14. A patent will not be sustained if the claim is for a result, a principle, an idea, or any other mere abstraction. [* Fuller and Barnum v8. Yentzer and Scates, 218. 15. A patent for improvements in an apparatus may be valid if they are new and accomplish a new and useful result, even though all the elements of the same are old, provided the combination or arrangement of such elements is new and of such a character that it involved invention to construct the same. [* Fuller and Barnum vs. Yentzer et al., 227. 16. The fact that the prints (cards) may be used by persons to violate the laws against gambling does not of itself deprive them of the protection of the law. [Richardson vs. Miller et al., 291. 17. Courts of justice will not lend their aid to protect the authors of immoral works, but before refusing it must be made to appear either that there is something immoral, pernicious, or indecent in the things per se; or that they are incapable of any use except in connection with some illegal or immoral act. [* Ibid., 291. 18. The patentability of the dies established, it appearing that by their use a better article was brought upon the market at less labor and expense than had before been produced. [* Albright vs. The Celluloid Harness. Trimming Company, 311. 19. That the omission of certain elements in a prior patented machine might enable a mechanic to alter and employ the remnant like the infringed machine, is no test of the patentability of the latter. [* The Railroad Companies vs. Turrill, 341. 20. This is to be determined by the question whether the information necessary to construct and use the latter machine can be read out of the prior specification. [* Ibid., 341. 21 The utility of the article shown from its extensive sale, and the unanimity with which rivals engaged in its manufacture. [* Eppinger vs. Richey and Boniface, 353. (See Article of Manufacture, 2; Form and Location, Change in, 3, 4, 7, 8, 9; Novelty, 5; Substitution, 2.) PENDING CASES. (See Construction of Statutes, 2; Interferences, 27, 28; Practice in Patent Office, 11, 12.) PLEADINGS AND PRACTICE. 1. The question whether or not an alleged improvement is or is not patentable is, in an equity suit, a question for the court. [*Dunbar and Hopper vs. Myers, Ex., et al., 140. 2. In a motion for commitment for contempt for violating an injunction issued upon a patent the question as to whether the new machine is the same as the old is a question of fact to be determined on the evidence. [*Birdsell vs. The Hagerstown Agricultural Implement Company, 203. 3. The rule is that courts of equity will never attach unless the violation of the injunction is plain and clearly proven to the court. [* Ibid., 203. 4. Where a bill is brought for a discovery and for other equitable relief within the appropriate jurisdiction of a court of equity, and the ultimate object of the plaintiff is to obtain damages in such case, the court, having granted a discovery, will proceed and give the proper relief in damages. [*Magic Ruffle Company vs. Elm City Company, 212. 5. Where a bill is brought for discovery in a case which is not the proper subject of an action or bill for account, the fact that the plaintiff is entitled to a discovery does not necessarily entitle him also to an account. [*Ibid., 212. 6. Interlocutory orders and decrees are subject to revision until a final decree is made, and if, after an interlocutory decree, the master's report discloses facts properly heard by him upon the order of reference, which, in the opinion of the court, should be further investigated, it is competent for the court to direct such an investigation. [* Ibid., 212. 7. It is generally true that a court of equity ought not to sustain a bill which although it may contain matter which can give the court jurisdiction, is merely for the assessment of damages for a breach of contract. [*Ibid., 212. 8. Upon a bill in equity for the infringement of a patent it is a matter of discretion, and not of jurisdiction, whether a case shall be first tried at law; and in this matter, the courts of the United States, sitting as courts of equity in patent cases, are much less disposed than the English courts are to send parties to a jury before assuming to decide upon the merits. [*Cochrane et al. vs. Deener et al., 242. 9. Where it is discretionary with a court of equity whether it will first send a case to be tried at law, and it exercises its discretion to decide the case upon its merits without the aid of a jury of any sort, such action is not a ground of appeal. [* Ibid., 242 10. But if the appellate court were convinced that the case was not properly decided, and could not be properly decided without such reference, it might, in the exercise of its own discretion, remand it to the court below for that purpose. [* Ibid., 242. 11. A bill of discovery may be maintained against a corporation, although, in order to compel a discovery on oath, the officers of the corporation must be made parties. [* Vaughn vs. The East Tennessee, Virginia and Georgia Railroad Company, 256. 12. As a general rule a bill in equity will not lie to settle an account on one side only, except when a discovery is prayed, or when the nature of the account is such it cannot be readily investigated in a court of law. [*Ibid., 256. 13. The surrender of a patent extinguishes it, and after its surrender pending suits founded upon it fall with its extinguishment. [Mevs vs. Conover, 286. 14. The exceptions to the master's report on extent of infringement and amount of damages declared to be well taken, it appearing that a narrower construction of the patent had been made by him than was warranted. [*Ruggles vs. Eddy and Shaver, 357. 15. After defining the scope of the patent reference was again made to the master to ascertain infringement and damages, with leave to the parties litigant to introduce additional evidence because of the new construction placed upon the patent. [* Ibid., 357. 16. Parties defendants sued at law for infringement are not allowed to set up the defense of a prior invention, knowledge, or use of the thing patented, unless written notice thereof is given thirty days before the trial. [* Roemer vs. Simon et al., 368. 17. Such notice must state the names of the patentees and the dates of their patents alleged to have been invented, and the names and residences of the persons alleged to have invented or to have had the prior knowledge of the thing patented, and where and by whom it had been used. [* Ibid., 368. 18. Since the passage of the act of July 9, 1870, the regulation in equity suits is, that defenses such as are described in section 61 of that act may be pleaded in any equity suit for relief against an alleged infringement, and that proof of the same may be given upon like notice in the answer of the respondent, and with like effect. [* Ibid., 368. 19. On appeal, questions not involved in the assignment of errors will be passed over without examination. [* Ibid., 368. 20. The respondents having given due notice of the defense of prior invention and use, stating the names and residences of the persons having the prior knowledge, and where and by whom the alleged invention had been used, added further that it had been known to and used by others to them unknown, and prayed leave that when discovered they might be permitted to insert and set forth their names in the answer: Held, that on motion to insert, in accordance with the notice, and no objection made, the court was justified in entering the additional names and residences nunc pro tunc. [* Ibid., 368. 21. Where, in answer to a bill of complaint for infringement, the defendants filed a plea involving three distinct grounds of defense, such plea was held bad for duplicity. [* Reissner and Fray vs. Anness and Blauvelt, 376. 22. The several matters, although relating in a general way to but a single defenseviz, the invalidity of the complainants' patent-were essentially independent of one another, and by their retention destroyed the very office of the plea, which is to secure singleness in the issue. [* Ibid., 376. 23. The general rule is, that a plea must not contain more defenses than one. It is not limited to one fact. It may embrace various facts, but they must all conduce to à single point on which the defendant rests his defense. (Stor. Eq. Pl., section 654.) [* Ibid., 376. 24. If there is more than one distinct ground of defense to be urged, the defendant should set the matter forth by way of answer and not by plea. [* Ibid., 376. 25. The defendants were accordingly permitted, either (1) to set down the pleas that had been filed as an answer, or (2) to elect within a time specified which of the several grounds of defense they would stand upon, and when such election had been made, the other grounds would be overruled. [* Ibid., 376. 26. It is no compliance with the requirements of the court that the profits arising from the use shall be proven to show that wherever the particular patented improvement was introduced, other kindred devices could not be sold. [* The Gould's Manufacturing Company vs. Cowing et al., 383. 27. The report of the master which gave to such showing the erroneous effect of proof of profit arising from the use and estimated damages accordingly was consequently overruled. [* Ibid., 383. 28. The suit in equity authorized under section 4915 R. S. is an original and not an appellate proceeding. It is conducted according to equity rules, and a party contesting his right to a patent thereunder need not be confined to matters existing of record in the Patent Office or in the supreme court of the District of Columbia. [*In re Squire, 388. 29. A motion to appoint a special examiner, under the rules of the court, for the purpose of taking additional testimony, was accordingly granted. [* Ibid., 388. 30. The state nent in ex parte Gresley, 6 Fisher, that the suit under the section "is virtually an appeal," construed to mean that the party seeks to obtain a different result from that which had before been allowed, and in such sense alone does he pursue a virtual appeal. [* Ibid., 388. (See Construction of Specifications and Patents, 34, 35, 37; Construction of Statutes, 3; Damages, 4, 5; Estoppel; Infringement, 41; Injunction; Jurisdiction, 3.) PRACTICE IN THE PATENT OFFICE. 1. The rejection of an application upon the ground that it does not constitute the proper subject-matter for a design patent, has reference to the merits, and is appealable to the Board. [O. Pressprich, 18. 2. The rejection of an application on the ground that there is no legitimate combination between the devices represented, or that they are deficient in novelty or invention, is appealable to the Board of Examiners-in-Chief. [R. Pintsch, 43. 3. Matters of public notoriety affecting the right of an applicant to a patent will be taken notice of by the Office in analogy to the practice of the courts in determining the validity of patents. [Auson vs. Woodbury et al., 49. 4. The jurisdiction of the Board of Examiners-in-Chief is limited in ex parte cases to the adverse decisions of the Primary Examiners. If there appear reasons for refusing the patent other than those alleged by the Examiner, a statement should be made to that effect to the Commissioner. [W. S. Smoot, 51. 5. The objection made to the application was want of novelty, and upon appeal to the Board it reversed the decision of the Examiner as to three of the four claims, but one member of the Board giving it as his opinion that new matter was included, remanded the case to the Examiner for his further consideration: Held, that his remanding the case to the Primary Examiner for reconsideration on that point was entirely unauthorized, and without the additional approval of the Commissioner the reconsideration of the Primary Examiner was also unauthorized. [Ibid., 51. 6. The rules of the Office have the force of law so long as they remain unrepealed, and are as binding upon its officials as they are upon the general public. [Ibid., 51. 7. The Commissioner is bound to take notice of an objection to the patentability of a case whenever and however his attention may be called to the subject. [Ibid., 51. 8. Where, however, the matter is properly cognizable by a lower appellate tribunal, the Commissioner will not interfere except, in extraordinary cases, to prevent fraud or remedy an action clearly opposed to some requirement of the law. [Ibid., 51. 9. An expression of opinion by one member of the Board does not constitute a decision of that tribunal. [Ibid., 51. 10. Examiners are admonished to be careful in making a thorough examination of all questions affecting an application before final rejection. [Ibid., 51. 11. Any case in which judgment has been rendered by a competent tribunal, the parties notified and no appeal taken or noted, can hardly be regarded as pending. [John P. Mygatt, 59 12. The Office rules in force at the time of the passage of the act of 1870 construed to mean that a case was pending only until the decision of an appeal after a second rejection thereon, or until after the party had withdrawn the case from the further consideration of the Office. [Ibid., 59. 13. If an applicant seeks to claim in a subsequent application subject-matter which has been rejected by the Examiner in a prior one already passed to issue, the Examiner would be justified in refusing to consider the renewed claim on its inerits, on the ground that it was "res judicata." [J. Arkell, 73. 14. In such case, if the applicant desires to contest its novelty, he should reissue the prior patent and include the claim therein. [Ibid., 73. 15. The domestic application for an invention already patented abroad need not be restricted to precisely the same subject-matter as the foreign grant. [C. W. Siemens, 75. 16. It must, however, be divided if found to conflict with the rule respecting duplex applications. [Ibid, 75. 17. If the domestic application is for the same subject-matter as the foreign patent, with immaterial variations, the requirement that the patent granted shall be "limited to expire at the same time with the foreign patent" will be strictly followed, and the limitation be made directly upon the face of the instrument. [Ibid., 75. 18. Where new features are introduced, and are in combination with those contained in the foreign patent, such limitation cannot be made; but in event separate claim is laid to matter set forth in the foreign patent, specific mention by date and number of such patent must be entered in the domestic specification. [Ibid., 75. |