pears on its face not to be such a form of document as the statute prescribes. Some of the adjudicated cases which touch this subject, apply the rule to novelty only, and not to validity in general.' The reason of the rule, as far as it relates to novelty, is twofold. A presumption of novelty arises from the inventor's statutory oath that he verily believes himself to be the first and original inventor; and a like presumption arises from the fact that the Commissioner, before he grants a patent, is bound to cause an examination to be made of the alleged new invention;' which examination, in practice, includes all relevant prior patents and printed publications, of which the Patent Office contains any evidence. Now the first of these grounds of presumption does not exist in regard to any quality of validity except novelty, and except regularity in point of sole or joint application for a patent for a sole or joint invention. The second ground is, however, a much stronger foundation for a presumption of validity in other respects, than it is for a presumption of novelty. The Commissioner of Patents has no means of determining how the novelty of an invention may be affected by things of which the Patent Office contains no record, and of which his own narrow experience contains no recollection. If he understands the law, he has, on the contrary, every means of deciding whether a particular application for a patent covers a statutory subject of such a grant. So also he can pass upon the application in point of invention, with more certainty than he can pass upon it in point of novelty. He has nearly every means to determine the utility of the thing covered thereby, and thus to negative the fourth defence. It is clear that no outside evidence need be introduced by a plaintiff, to anticipate either the fifth or the sixth defence, because the law does not favor an abandonment, and throws upon a party who seeks to obtain the benefit of a forfeiture, the 1 Blanchard v. Putnam, 8 Wallace, 420, 1869; Seymour v. Osborne, 11 Wallace, 516, 1870; Mitchell v. Tilghman, 19 Wallace, 287, 1873. burden of proving it beyond a reasonable doubt.' Letters patent are therefore prima facie evidence of their own validity, as against either of these defences. The same thing is true of the seventh defence, though for a different reason. If a patent is obnoxious to this defence, it is because the Commissioner of Patents made an error in granting it, similar to that which he makes when he grants a reissue for a different invention from any indicated, suggested, or described in the original. But there is always a presumption of law against the hypothesis of such an error; and that presumption prevails until such an error is proved. The fact that the statute expressly provides a particular method, in which the eighth defence may be interposed by a defendant,” sufficiently shows, that until it is set up and proved, the plaintiff need not attempt to disprove it, further than by the introduction of his letters patent. As against the ninth and tenth defences, the letters patent are also sufficient prima facie evidence; because both those defences are contradicted by the inventor's oath accompanying the application, even more positively than want of novelty is contradicted by that oath. No inventor can positively know whether his invention is absolutely novel, and therefore his oath covers only his belief on that point; but every inventor knows the facts relevant to whether he was the sole inventor, or only a joint inventor, of the process or thing covered by his application. Letters patent appear to be prima facie evidence of their own validity, as against the eleventh defence, for the same reason which makes them so as against the eighth. Relevant to the twelfth and thirteenth defences, the Commissioner's decision in granting a patent, is entitled to far more weight than it is on the question of novelty, because he has all the data for forming an opinion about the fulness and clearness of a 5 4 Byerly v. Oil Works, 31 Fed. Rep. 74, 1887; Puetz v. Bransford, 31 Fed. Rep. 463, 1887. Revised Statutes, Section 4892. written document before him, but not all the data for an opinion touching the novelty of what that document sets forth. It follows that the resulting presumption of validity, in respect of these defences, is even stronger than the presumption of novelty. The fourteenth defence is based on partial want of novelty, and as letters patent are undoubtedly prima facie evidence of entire novelty, it follows that they constitute prima facie evidence that no disclaimer is needed. The conclusion of the whole matter, therefore, is that an original letters patent is prima facie evidence of its own entire validity.' § 492. Reissue letters patent are also prima facie evidence of their own validity, on all of the three points which are involved in that question. They are so in respect of the fifteenth defence; because the fact that the Commissioner assumed jurisdiction, by treating the original letters patent as a proper subject for a reissue, is at least prima facie evidence that he had jurisdiction.' They are so in respect of the sixteenth defence; because the presumtion is that the Commissioner knew the law, and, knowing it, would not grant a broadened reissue after a long lapse of time from the date of the original.' They are so in respect of the seventeenth defence, because the presumption is that the Commissioner would not violate the law by granting a reissue for a different invention from any which the original letters patent shows was intended to have been claimed therein. § 493. An extension of a patent is prima facie evidence of its own validity as against the eighteenth defence, on the same ground that a reissue is, as against the fifteenth. That ground is the presumption that the Commissioner of Patents will not assume jurisdiction in any case not provided for by law.* 1 Konold v. Klein, 3 Bann. & Ard. 226, 1878; Royer v. Coupe, 29 Fed. Rep. 362, 1886. 2 Brooks v. Bicknell, 3 McLean, 258, 1843. 3 Clark v. Wooster, 119 U. S. 326, 1886. 4 Brooks v. Bicknell, 3 McLean, 258, 1844. § 494. It is an undoubted presumption of law, that letters patent, which appear on their face to be in full force, are so in fact. Such a document is therefore prima facie evidence that it neither has been repealed by a decree of court, nor has expired because of the expiration of some foreign patent for the same invention. It follows that neither the nineteenth nor twentieth defence need be anticipated by a plaintiff, when introducing his prima facie evidence. § 495. After introducing the letters patent in evidence, unless the plaintiff is himself the patentee, his next step is to prove his title to the right, upon the infringement of which the action is based. To this end he must prove himself to be the assignee of the patent; or at least a grantee under the patent, as to the territory wherein the alleged infringement occurred. He may do either of these things, by introducing in evidence the original assignments or grants which constitute his chain of title, after having proved them according to the rules of the common law. It has also been. repeatedly decided by Circuit Courts, that duly certified copies of the Patent Office records of such assignments or grants, are competent primary evidence of the original documents themselves.' These three decisions have been generally acquiesced in for more than twenty years, and few rules of patent law have been more frequently made the basis of action by counsel and by courts than the doctrine just mentioned. But it hardly seems justified by the statute upon which it is based,' and may even yet be overthrown by the Supreme Court. § 496. It is not necessary for any plaintiff to prove in his prima facie evidence that the defendant has no license or release with which to defend; nor can it be required of him to testify that he never made or sold any specimen of 1 Brooks v. Jenkins, 3 McLean, 436, 1844; Parker v. Haworth, 4 McLean, 370, 1848; Lee v. Blandy, 2 Fisher, 91, 1860; Dederick v. Agricultural Co. 26 Fed. Rep. 763, 1886. 2 Revised Statutes, Sec. 892; 16 Statutes at Large, Ch. 230, Sec. 57, p. 207; 5 Statutes at Large, Ch. 357, Sec. 4, p. 118. 3 Fisher v. Hayes, 6 Fed. Rep. 79, 1881. the invention without marking it "patented." Evidence relevant to the twenty-first, twenty-third, and twenty-fourth defences, must therefore be taken by the defendant, before the plaintiff can be called upon to disprove them. $497. Proof of the making, selling, or using, by the defendant, of a specimen or specimens of a process or thing which the plaintiff claims is covered by his patent, constitutes the next step to be taken in proving a prima facie case. This point is often covered by a stipulation of the parties. Defendants are generally wise when they make such stipulations, because any attempts to conceal the nature of their doings, are likely to prejudice the welfare of their defences. But in cases where the defendants have no refuge but concealment, the point of proof may be one of difficulty, for courts of law have no power to order inspections of a defendant's works;' though the defendant may be called as a witness, and compelled to describe what he has done;' and a discovery of the defendant's doings may be obtained by a bill in equity filed in aid of an action at law.' Where a defendant cannot be relied upon to testify fairly and fully, the plaintiff must secure other evidence; for it is necessary to a verdict in an action at law for an infringement of a patent, that both the nature and the extent of that infringement be shown to the jury, by satisfactory proof. Evidence of the nature of a defendant's doings, is the first element of evidence of infringement; and evidence of their extent, is an indispensable part of the necessary evidence of damages.* $498. Evidence of infringement is completed with evidence of the defendant's doings, if what he did was obviously and unquestionably identical with what is covered by the patent in suit,' or if he is estopped from denying iden ' Parker v. Bigler, 1 Fisher, 287, 1857. 2 Roberts v. Walley, 14 Fed. Rep. 169, 1882. 3 Colgate v. Compagnie Française, 23 Fed. Rep. 85, 1885. National Car Brake Shoe Co. v. Mfg. Co. 19 Fed. Rep. 519, 1884. 5 Jennings v. Kibbe, 10 Fed. Rep. 669, 1882; Barrett v. Hall, 1 Mason, 471, 1818; Hayes v. Bickelhoupt, 23 Fed. Rep. 184, 1885; Freese v. Swartchild, 35 Fed. Rep. 141, 1888. |