COMMISSIONER OF PATENTS-continued.

3. The decision of the Board of Commissioners upon an application for the extension of a patent under section 18 of the act of 1836, is not conclusive upon the question of their jurisdiction to act in a given case. Wilson v. Rousseau, 357.

4. A patent is not invalid because it is certified by a person as "Acting" Commissioner.

Ibid.

5. A patent signed by "au Acting Commissioner of Patents" is valid. York and Maryland R. R. v. Winans, 956.

6. The courts will judicially take notice of the persons who preside over the Patent Office.

Ibid.

7. The proceedings before the Commissioner of Patents, on the reissue of a patent, are not open for consideration, except on the ground of fraud. v. Taggert, 969.

See APPLICATION; COPIES; EXTENSION; REISSUE.

COMPOSITION OF MATTER.

Battin

1. In a patent for a composition of matter, the specification must be in such full, clear, and exact terms as to enable one skilled in the art to which it appertains to compound and use the invention without making any experiments of his own. Wood v. Underhill, 432.

2. Where the specification of a new composition of matter gives only the names of the substances to be mixed together, without stating any relative proportion, it would be the duty of the court to declare the patent void; as it would not enable any one to compound and use the invention without experiment. Ibid.

3. But where the patentee gives a certain proportion as a general rule, which seems generally applicable, the patent will be valid, though some small difference in the proportions may be occasionally required. Ibid.

4. In most compositions of matter, some small difference in the proportions must occasionally be required, since the ingredients proposed to be compounded must sometimes be in some degree superior or inferior to those most commonly used. Ibid.

CONGRESS.

See MANUFACTURE.

1. Whether Congress can decide the fact that an individual is an inventor or author, the courts will never presume it to have decided that question in a general act, the words of which do not render such a construction unavoidable. Evans v. Eaton, 8.

2. A private act of Congress authorizing the issue of a patent to an inventor, is ingrafted on the general acts for the promotion of the useful arts, and such a patent is issued in pursuance of both. Ibid.

3. The power of Congress to legislate upon the subject of patents, is plenary, by the terms of the Constitution; and as there are no restraints upon its exercise, there can be no limitation of their right to modify the laws at their pleasure, so that they do not take away the rights of property in existing patents. McClurg v. Kingsland, 322.

4. Laws respecting patents may be retrospective in their operation. bid. 5. A special act in relation to any particular patent, is ingrafted upon the general acts relating to patents; they are statutes in pari materia, and must be construed together. Bloomer v. McQuewan, 730.

6. Under the fifth amendment of the Constitution, Congress would have no right to pass an act depriving purchasers of a patented article of the right to use such article.

Ibid.

CONGRESS-continued.

7. Under the authority conferred upon Congress, it does not follow that it may authorize an inventor to recall rights which he has granted to others. Ibid. See COPYRIGHT; STATUTE, CONSTRUCTION OF.

CONSTRUCTION OF CONTRACT.

See AGREEMENT; ASSIGNMENT; ASSIGNEE; LICENSE.

CONSTRUCTION OF PATENT.

See ACTIONS; PATENT.

CONSTRUCTION OF STATUTE.

See CONGRESS; STATUTES, CONSTRUCTION OF.

CONTRACTS AS TO PATENTS.

See AGREEMENTS.

COPIES.

1. It is the duty of the Commissioner of Patents to give authenticated copies to any person demanding the same, on payment of the legal fees; and for his refusal, an action will lie against him. Boyden v. Burke, 754.

2. Although a demand accompanied by rudeness and insult is not a legal demand, a subsequent and proper demand cannot be refused on account of prior misconduct, or to enforce an apology. Ibid.

COPYRIGHT.

1. An author can have no exclusive property in his published production, except under the acts of Congress. Wheaton v. Peters, 200.

2. Under the act of 1790, considered in connection with the act of 1802, an author can obtain no exclusive right in his work unless he complies with the requirements of sections 3 and 4 of the act of 1790. Ibid.

3. A claim under a renewal term of a copyright involves the validity of the right under the first. Ibid.

4. Copyright is an exclusive right to the multiplication of copies, disconnected from any physical existence. Stephens v. Cady, 726.

See ACTIONS; ASSIGNEE; ASSIGNMENT; COURTS; INJUNCTION; MANUSCRIPT; PENALTY; REPORTS; STATUTES, CONSTRUCTION OF.

CORPORATIONS.

A railroad corporation created by one State, and owning a road in that State, is liable for the use of a patented improvement on cars run on that road, though another corporation held the stock and worked the road. York and Maryland R. R. Co. v. Winans, 956.

COSTS.

1. It is proper for the court to have the costs taxed and entered nunc pro tunc as a part of the original judgment. Sizer v. Many, 937.

2. Under the act of 1837, the plaintiff is not entitled to recover costs upon a judgment in his favor, if he has claimed anything of which he was not the original and first inventor, unless, before suit brought, he has disclaimed such part. Seymour v. McCormick, 1004.

COUNSEL FEES.

See DISCLAIMER.

Counsel fees are not a proper element for the jury in the estimation of damages. Teese v. Huntingdon, 1130.

COURTS.

1. Under section 10 of the act of 1793, if the judge of the District Court grant a rule to show cause why a process should not issue to repeal a patent, the making of such rule absolute does not de facto work a repeal of the patent; but the process to be awarded upon making such rule absolute is in the nature of a scire facias at common law to the patentee, to show cause why the patent should not be repealed; and upon such process being returned, the judge is to proceed to try the cause upon the pleadings and the issue joined therein. Wood & Brundage, Ex parte, 115.

2. The question whether one machine is substantially like another, cannot be certified to the Supreme Court under section 6 of the act of 1802, chapter 31, which applies only to questions of law. Wilson v. Barnum, 510.

3. Where the principles governing a patent cause have been settled by the Supreme Court, it will decline to hear an argument upon technical questions of pleading arising in another case under the same patent. Smith v. Ely, 838.

4. The act of February 15, 1819, is the only law conferring equitable jurisdiction in cases of copyright. Section 9 of the act of 1831 protects manuscripts only. Stevens v. Gladding, 981.

5. The equity jurisdiction of United States courts does not extend to the adjudication of forfeitures; therefore a decree cannot be entered for the penalties incurred for violation of a copyright. Ibid.

6. The jurisdiction of the Circuit Court is materially different, whether a party is seeking to enforce the specific performance of a contract in relation to a patent, or to prohibit the infringement of a patent belonging to him. Brown v. Shannon, 1044.

See ACTIONS; AMOUNT IN CONTROVERSY; APPEAL; ASSIGNEE; ATTACHMENT; NONSUIT.

1. It is the making and selling to be used, and not the selling, or buying, or making alone, for which full damages are usually given. Hogg v. Emerson, 634.

2. The price paid for a license to use a thing patented, may be submitted to the jury as a guide in estimating damages for an infringement, and seems once to have been treated by law as the chief guide in all patent cases; but if* the maker of the machine was ignorant of the existence of the patent-right, that sum may be mitigated. Ibid.

3. It must be a very extreme case where a judgment will be reversed on account of excessive damages, when the instructions of the court suggested to the jury the true general rule, and when, if the damages were excessive, a new trial could have been moved in the Circuit Court. Ibid.

4. The Patent Act of 1790, section 4, made an infringer liable to pay such damages as the jury should find, and also forfeit the machine. The act of 1793, section 5, declared that an infringer should pay a sum equal to three times the price for which the patentee had sold licenses. The act of 1800, section 3, provided that an infringer should pay three times the actual damages sustained. Seymour v. McCormick, 944.

DAMAGES-continued.

5. The Patent Act of 1833, section 14, confines the jury to the actual damages sustained by the patentee. The power to increase them is committed to the discretion of the court. Ibid.

6. There cannot be one rule of damages which will apply equally to all cases. The mode of ascertaining actual damages must necessarily depend upon the nature of the monopoly granted. Ibid.

7. If a patentee considers it for his interest to retain the entire invention, and competition would destroy its value, the profits of the infringer may be the only criterion of the actual damage. Ibid.

8. Where an inventor has found it profitable to exercise his monopoly by selling licenses, he has himself fixed the average of his actual damage, and the price of such licenses may afford a proper measure of damages. Ibid.

9. It is only where no other rule can be found, that the defendant's profits become the criterion of the plaintiff's loss. Ibid.

10. Actual damages must be proved; what a patentee would have made if an infringer had not interfered with his rights, is a question of fact. It is not a legal inference that third persons would have bought of the patentee what they bought of an infringer, if the latter had not made and sold the thing patented. Ibid.

11. Nor is it proper to instruct the jury that the same rule is to govern, as to the measure of damages, whether the patent covers an entire machine or an improvement on a machine. Ibid.

12. The rule of damages is the amount of profits received by the unlawful use of the thing patented,-not what he might have made by reasonable diligence. Dean v. Mason, 1018.

13. But where the wrong has been done under aggravated circumstances, the court has the power to punish it adequately by an increase of the damages. Ibid.

14. The plaintiffs must furnish evidence by which the jury may estimate actual damages. Actual damages must be calculated. Mayor, &c., of New York v. Ransom, 1140.

15. If the plaintiff rests his case after merely proving an infringement, he is only entitled to nominal damages. lbid.

See ACCOUNT OF PROFITS; COUNSEL FEES; INTENT.

DECLARATIONS.

See EVIDENCE.

DEDICATION TO THE PUBLIC.

See ABANDONMENT.

DEFENSES.

1. Section 6 of the act of 1793 does not enumerate all the defenses which a party may make in a suit brought against him for violating a patent. Pennock v. Dialogue, 127.

2. It is not inconsistent with section 6 of the act of 1793, that a defense may be made, that although the patentee is the first as well as the true inventor, he has abandoned or dedicated his invention to the public. Ibid.

3. The distinction is now well settled between defenses which authorize a judgment in favor of the defendant, leaving the plaintiff free to bring other suits for infringement, and those which would require the court to enter a judgment not only for the defendant in the particular case, but one which declares the patent to be void. Grant v. Raymond, 146.

DEFENSES-continued.

4. A party may either plead specially or plead the general issue, and give the notice required by section 6 of the act of 1793 of any special matter he intends to use at the trial. If he shows that the patentee has failed in any of these prerequisites on which the authority to issue the patent is made to depend, his defense is complete, and he is entitled to the verdict of the jury. Ibid.

5. But if, not content with defending himself, he seeks to annul the patent, be must proceed in precise couformity to section 6 of the act of 1793. Ibid. 6. The defendant is permitted to proceed according to section 6 of the act of 1793, but is not prohibited from proceeding in the usual manner, except that special matter may not be given in evidence on the general issue, unaccompanied by the notice which section 6 requires. Ibid.

7. It is a good defense, that the specification does not contain a description of the invention in such full, clear, and exact terms as to distinguish it from all things before known, and so as to enable any person skilled in the art to make and use the same. Ibid.

8. The case of Pennock v. Dialogue affirms that failure on the part of a patentee in the prerequisites of the act authorizing a patent, is a bar to a recovery; and this defense does not depend on the intention of the inventor, but is a legal inference upon his conduct. Ibid.

9. The use of the thing patented during the interval between the original and reissued patent, will not defeat an action under the reissued patent. Stimpson v. West Chester R. R., 330.

10. If a patent has been granted to the defendant, he may put such patent in evidence in justification or defense. Corning v. Burden, 867.

11. Proof of use of the thing patented during the interval between the original and reissued patents, will not defeat the action. Battin v. Taggert, 969. See ACTIONS; GENERAL ISSUE; INFRINGEMENT; PARTNERSHIP; PLEADING.

DEPOSITION.

See EVIDENCE.

DISCLAIMER.

1. Where, in a disclaimer, the party stated that he was the patentee, and said nothing in respect to a transfer of any part of it, the fair presumption is that he still retains the whole; and it is a sufficient compliance with the statute to say that such disclaimer is to operate to the extent of his interest therein. Silsby v. Foote, 717.

2. The law requiring a patentee to disclaim is remedial. It is intended for the protection of the patentee as well as the public, and should not receive a construction that would restrict its operation. O'Reilly v. Morse, 763.

3. Where a patent is illegal in part because of claiming more than the inventor has described, or more than he has invented, the patentee must disclaim in order to save the portion to which he is entitled. Ibid.

4. When a claim has been sauctioned by the Patent Office, and has been held valid by a Circuit Court, the patentee has a right not to disclaim it until it has been passed upon by the highest court; and the omission to disclaim will not render the patent void. The delay in entering the disclaimer, under such circumstances, is not unreasonable. Ibid.

5. Under the circumstances of this case, the patentee was not guilty of unreasonable delay in making the disclaimer; such delay was a question of law for the court. Seymour v. Mc Cormick, 1004.

6. The granting of a patent, and an opinion of a court below maintaining the