FETTER V. NEWHALL.
vention is to be Kept secret or not; that special care is to be taken for the observation of the required secrecy, and due precautions are to be adopted against any possible violation of the secret; and that specifications as to which secrecy is demanded are not open to the public, or for the taking of copies, until the patent is extinct. In the present case the petition for the Austrian patent stated that it was desired that the description be kept secret. But the Austrian statute also provides that an exclusive privilege secures to the pat. entee the exclusive use of his invention, as laid down in his specification, for the number of years mentioned in his privilege. The Austrian patent in the present case states on its face that it is an exclusive patent, for the duration of one year, for the improvements in question, "in consonance with the description deposited," "under all conditions and with all effects stated in the" Austrian statute. In view of these facts, however far the Austrian patent might have come sbort of being a prior public foreign patent sufficient to defeat a patent granted here to another inventor for an invention made after the granting of such prior foreign patent, it is not perceived how the question of secrecy or publicity in the foreign patent, granted prior to the granting of the patent here, can affect, under section 25 of the act of 1870, the question of the duration of the patent here. 'The Austrian patent conferred on the patentees an exclusive privilege. It was the manifest intention of section 25 of the act of 1870 that the exclusive privilege under tbe patent here should expire with the exclusive privilege granted abroad to the same inventor, having the shortest term. De Florez v. Raynolds, 17 Blatch£. C. C. 436, 450; [So C. 8 FED. REP. 434.] As the Austrian patent expired at the latest on December 30, 1880, and before this suit was brought, and No. 120,057 continued to exi:Jt no longer, there was no ground for this suit in equity when it was brought, whatever ground there may have been for a suit at law against these defendants for infringement. Root V. ny. 00. 105 S. 189. The novelty of the invention patented is uttacl,ed, and it is also contended tbat the patent is invalid because it was iSfued for the term of 17 years and not for a sll1rter term. But tbe conRineration of these questions is unnecessary, and the bill is dismis5ed, with costs.
and another v.
(ourt, S. D. lItW J"ork.
1. PATEXTS FOR IsvExTIOxs-AsSIGSJoIEXT BY STATES LAWS,
August 29, 1883.)
'Vm!AX OR IXF.\XT-
. A married woman, an mfa',lt, or a person undcr guanlianship, may lie an Inventor 01 the assIgnee of an mvcntor, and SUCh, the ri:;ht to the pateut
wouhl in them, and when so .vested as patentee or assIgnee, all that the act .of congress requires is that if they assig-n the patent such assignment shall be In writing, so as to be recorded; but lhe ability to mrrke the insLrument must be found in the lrrws of the states, where all such rights are regulated. op NEW YORK. I.n New York a married woman may take by assignment, and by writing assign a patent, and may sue in her own name for an infringement of her rights.
The invalidity of a claim in a reissne does not imprrir the validity of a clair... in the original patent, which is repeated and separately stated in the reissue
It is not necessary to take the whole invention to constitute an infringement.
,Yhere an infringer is not acting under a license, but in defiance of the patent and outside of the license, it wiII not protect him. No. 1l0,839-HElssuE 8,121. Heissued letters patent No. 8,121, dated March 12,1878, granted to David Fetter, assignor, for an improvement in drive screws, the original of which was No. 1l0,83}1, dated January 10,11,71, l.eld valid as to the first claim, allLl infringcd by defcndant.
Amos Broadna.'C, for orators. William Bakewell, for defendant. WHEELER, J. This suit is brought upon reissued letters patent No. 8,121, dated March 12,1878, and gmnted to David F. Fetter, assignor, for an improvement in drive screws, the original of which was No. 110,SSa, dated January 10,1871. The assignee of the inventor assigned the patent to the oratrix, Mary B. Fetter, wife of the inventor, a resident of the state of New York, and she by her sale deed assigned an interest in it to one Lewis, who assigned the same to the orator the Fetter Drive Screw Company. The original patent was for a drive screw for driving into wood like a spike, but to be removed only by turning out; the threads being square on the side towards the head, and tapering from that side towards the point, which was as large as the circle of the outer edges of the threa<1s where it commenced, and tapered in conoidal form to the end, so that the smooth point would divide the fibers of the wood r.nd make room for the threads. There was one claim which was for "a drive screw having an angnlar thread of the character shown, and a conoidal point, the base of which is of the same diameter as the lower end of the shank with which it immediately connects." From the specification it is understood that what is mrant as the shank in the claim includes the threads, so that the diameter of it extends to the outer edges of the threads. In the specification of the reissue it was said that the point might be made co· noidal, its base being of the same diameter as the lower end of the shank, and another claim was added which was for" (2) a drive 3crew having an angular thread of the character shown, and a point v;-hich extends by a gradual taper from its base to its extremity." The defendant operated nnder a license from the inventor, approved by the owners of the patent, until April, 1880, and procured to be made and sold screws according to the specifications of the
FETTER V. NEWHaLL.
original patent, the points being oval in taper, and paid a commission on the sales. Since then he has repudiated the license and continued the use of the same style of screws, except that the points have a straight conical, instead of an oval conoidal, taper. The defenses are that the assignment to l\lary B. Fetter, a married woman, vested the right to the patent in the husband; that if not, her assignment to another was void; that the original patent was void for want of novelty; and that, if not, the reissue is for a different invention, and the;efore void; that the style which he now uses is not an infringement; and that he is proteetedfroma suit for infringement by the license. It may be that at common law a patent-right granted or assigned to a married woman would be such personal property that her husband could, by virtue of his marital right, reduce it to possession and make it his own. Hindmarch, Patents, 35. It is argued that, this being so, the titles to patents are out of the reach of the laws of the states, and that as congress has passed no law clmnging the rights of married women, the common law must prevail, and that the husband should have been a party to the bill, either alone in his own right or with her, if he would leave the patent in her right; and that there is a misjoinder as to the orator the corporation because it has no right. The laws of congress, however, of which patents are creatures, give the right to a patent to the inventor, whether sni juris or under disability, and to the assigns of the inventor. Rev. St. 4886,4895. They are assignable by instrument in writing. Section 4898. This is the whole reqnirement. A married woman, an infant, or a person under guardianship, might be an inventor, or the assignee of an inventor, of a patented invention. It would seem that, when such, the right to the patent would vest in them; and that, when vested in them as patentees or assignees, all that congress has required is that, if they would assign. the assignment must be in writing, so as to be recorded; but that the ability to make the instrument, or the aids to the disability, must be found in the laws of the states where all such rights are regulated. If an infant or other person under guardianship should have a patent to be assigned, the instrument in writing would have to be made to comply with the law of congress, and have to be made by guardian; but there are no federal guardians for such persons, and resort for the guardian would have to be made to the laws of the state. The laws of New York free married women from disability to make such instruments, and mrrke their property distinctly their own. The oratrix could undoubtedly take by assignment, as married women by the common law always could. She could make the instrument in writing by the laws of the state, and when she had made it, it fulfilled the requirements of the laws of the United States. Thus the drive screw company took by her assignment what she attempted to assign to them; and she could sue in
her own name in this form, for infringement of her rigMs. This was expressly adjudged in this court by BLATCHFORD, J., in Lorillard v. Standard Oil Co. 17 O. G. 1506; 18 Blatchf.199; [So U. 2 FED. REP. \)02.) Of course, she could join with another for an injury to their joint rights. As to the want of novelty, the evidence does not satisfactorily show that such screws with either conical or conoidal points, equal in diameter at the base to the shank, including the threads, had been known or used by others at the time of this invention. It may be that the second claim of the reissued pa tent enlarges its scope beyond that of the original patent. If it does, it is doubtless 'Void to the extent of that claim. James V. Campbell, 104 U. S. 356. The invalidity of that claim would not impair that of the claim in the original patent separately reproduced in the reissue. Gage v. Herring, 2 Sup. Ct. Rep. 819, cited and applied by BLATCHFORD, J., in Schillinger v. Greenway Brewing Co. 24 O. G. 495; [So C. 17 FED. REP. 244.J The reissued patent, as to that claim, is not for any invention different from that shown in the specification and drawings of the original patent. The first claim appears, therefore, to be valid. Upon t11e question cf infringement it is to be noticed that this invention, as patented, is not, as has been argued, of an improvement consisting merely of the conoidal point. The essential feature of it is the enlargement of the base of the point to the size of the circle of the outer edge of the threads, and in this the novelty consists. The point is described as conoidal, but the degree of the oval taper is not specified; it might be more or less, and so little as to be hardly distinguishable from a straight taper. The straight taper would, with the enlarged base, be the equivalent of the oval taper for separating the fibers of the wood to admit the threads, and this change merely colorable. If, as has been claimed, the original patent covered no screws but those having oval points, still, as it covered the enlarged base of the point also, it might be infringed by the use of that feature without the oval point, for the patent gives exclusive enjoyment of the whole patented invention, and taking one feature is an infringement pro tallto. It cannot be necessary to take the whole invention to constitute an infringement. Sharp V. TUft, 18 B1atchf. 132; [So C. 2 FEl>. REP. fHl7.J As this case is now considered, the defendant infringes the first claim by taking the point with the enlarged base. In doing this he is not acting under the license, whatever its terms are, which are in dispute, but is acting in defiance of the patent and outside the license. Under these circumstances the license is no protection against suit for infringement. Hartell V. Tilghman, 99 U. S. 547. Let there be a decree for the orators for an injunction and account, with costs.
GODDaRD O. WILDE.
URNItR V. KAYTON.
(OlrClIit Oourt, S. D. NClo York.
August 16, 1883.)
PATENTS FOR INVEN'l'IONS-brFRINGEMENT-COSTS.
Where, in an accounting for profits and damages for Infringement of a patent, the orator has recovered on the merits, and the defendant has not prevailed upon any is.ne upon any distinct item in the case, the costs will not be apportioned, but detcndant held liaLle for tho Whole amount.
lIfr. COlllstoclc, for orator. Mr. O'Callaghan, for defendant.
WHEELEP., J. The defendant, on accounting for profits ana aamages for infringement of patent, has, under order of court, paid the master's fees, and moves for an apportionment of costs on the final decree for the orator for $100 profits. The omtor has a substantial recovery on the merits for the wrongful invasion of his rights by the defendant. The defendant has not prevailed upon any issue upon any distinct item made in the case, so far as is made to appear. The costs are all the consequence of his wrongful acts for whicll the orator has recovered, and should be borne by him. Motion for apportiolllllent denied.
May 10, 1883.)
(Oircuit Court, D. Rhode Island.
PATENT-CONTRACT TO 8ELI,.
Until a contract is set asUe a party thereto mflybe restrained, at the of the other party, from selhng his patent in viola' ion of the terms of snch COhtract, though the court may be una LIe to enforce a specific performance of it.
HDfEDY AT LAW.
. As the equita Ill.e :emedr is more practical and efficil'nt to the ends of justice Iln such cases, an IIlJ unctIOn may be granted, altllOugh plaintitI has a remedy at
SlIch an instrument is a contract and not a power of attorney. revocahle at the pleasure of the maker, and is guod until set aside upun a proper pro. ceedlUg.
In Equity. Motion for a preliminary injunction. Wm. A. Jlacleod, for complainant. Chas. A. Wilson, for defendant. COLT, J. The plaintiff in this case claims the exclusive rirrht to sell within the United States the Wilde patent button, under: contract under seal with the Wilde, the patentee. Subsequent to the date of the contract, lhlde sold a half mterest in the patent