106 They have no right to take your patent and put it into a combina.tion, where it is an essential element. Make that allegation to show which the patents are, and that your three patents were susceptible of and are being conjointly used by the defendants; or, if that be not t.rue, that one or more of. them is used. I will sustain the demurrer, as it involves the matter of phraseology, and will allow you to amend, as suggested by the court, to show what connection your patents have with the South St. Louis Foundrv Company. If these parties are officers, say so; that cures that; and then that they are using these three patents conjointly. Then you will have no trouble when you come to the final determination. , Mr. Wood. The coujoint use must be all in one machine? , The Court. No; I don't hold anything about it. "Sufficient for the day is the evil." There is the averment. I am only talking of the simple question of pleading; as he chooses to sue on three patents. He cannot maintain a bill on three patents and escape multifariousness unless he says that they are susceptible of conjoined use, and are conjointly used. That must be his averment. If it turns out, as you seem to suggest, that these are different machines, and not a conuse, why. his bill will fail on the proof, and he will sue on the individual patents separately.
(District Court, N. D. IlUnois.
PATENTS FOR INVENTIONS-BILL BY UNITED STATES TO ANNUL FRAUDULENT ENT IN INTEREST OF PRIVATE PARTIES.
Bill to Cancel Patents. E. A. West and R. S. Tuthill, for complainant. Ooburn d: Thacher, for defendant. BLODGETT, J.. This is a demurrer to a bill filed to cancel two patents, the first dated September 9,1879, and the second dated October 19, 1880, both being issued to defendant for "improvements in axlegrease." The right to cancel these patents is claimed on the ground that the defendant, in order to obtain them, falsely and fraudulently made oath that the alleged improvements had not been before known or used, when, in fact, they had been publicly known and used more
UNITED STATES V. FRAZER.
than two years prior to the application made therefor; and that the process described in the patents was fully described in a. patent issued to the defendant himself in October, 1860, which has long since expired. The bill avers that the defendant Frazer, in 1863, commenced, in the city of Chicago, the manufacture of axle-grease under what he pretended was the process covered by his patent of 1860; and after conducting the said business for some time, he sold it out to several persons, named in the bill, and they, after conducting the business for some time as his successors, formed a corporation which haa, sinoe that time, conducted the same business; that sinoe he sold his business the defendant has obtained the patents now in question and again resumed business, olaiming that these two patents cover the device and process which suoh corporation is now using and which defendant so sold to said persons. This allegation, taken together with a letter from the attorney general of the United States which was filed with the bill, and appears as part of the record, shows, in substance, that this bill was prepared here by a firm of well-known attorneys, who make patent cases their specialty, and submitted to the attorney general, who transmitted it to the distriot attorney here, with directions to file it upon sufficient bond being filed to indemnify the United States against all costs and expenses on 0.0count of this proceeding. The averments in the bill, with the letter from the attorney general, show that the persons or corporation who olaim to be aggrieved by the conduot of the defendant after he had sold them the exclusive right to manufacture this composition, have obtained the use of the name of the United States for the purpose of conducting a. suit of their own in regard to the validity of this pateht. The facts set out in the bill ooncerning the devioe described in the two patents of 1879 and 1880, if true, are suffioient to defeat this patent. They are such as are set up in very many if not almost all patent controversies where the question of the novelty and validity of the patent is challenged, and such as almost every patentee is called on in some form to meet. If, is true that it is an imposition on the patentoffice to falsely make an affidavit that a device for which a patent is asked has not been known and used prior to the invention thereof by the applicant for the patent. Such conduct may justly be said to be fraudulent; but it is a. faot which goes to the validity of his patent, and may be pleaded by any person against whom the patentee brings suit; and it seems to me that it would be better to leave the litigation of questions like this, which constitute a defense in patent cases, to the parties directly interested, rather than that the government should lend its name to a suit really in the interest only, of certain private parties. , The practice here inaugurated will, if follqwed, transfer nearly all litigation on patents, except mere questions off'act as to infringement, to the office of the attorney general, instead of leaving it in the hands
of the persons directly interested. Patentees, as a rule, have trouble enough to establish their patents without being in peril at any time during the life of their patents of a suit, in the name of the United States, brought at the instance of interested parties, but not bound by any prior judgment or decree sustaining the patent. If the grant. ing of the patent was conclusive upon the public of the questions of fact upon which the patentee's right to it depends, I can readily see that some mode of proceeding to cancel the patent for false and fraudulent statements in obtaining it would be almost necessary for the protection of the public; but the issue of the patent is not conclusive upon any of these questions. All questions as to the novelty and utility of the alleged invention and its prior use to such an extent as to make it public property can be raised as a defense by any person who is charged with infringement of the patentee's exclusive rights. The patentee takes his patent subject to all these defenses, and must .be prepared to meet them if the validity of his patent is denied. The bill in question is not authorized by any special statute of the United States. There is a statute that authorizes the bringing of a bill between interfering patentee8, where two patents are issued for the same, or substantially the same, device, and the fact that congress did not authorize bringing a bill of this character is certainly a strong argument in favor of the view that it was not intended that bills of this character should be brought, and that they intended if a party took a patent he should take it subject to being defeated by those interested in its defeat, by traversing any and all facts upon which his claim to the patent is based. Another consideration of some weight in my mind is the fact that the public at large, the patent-office, and the United States have rested for about five years, in reference to these patents, without raising any question as to their validity, and .it is now only at the instance of parties who .are specially and directly interested in their defeat, and who, by the showing of the bill, have a complete defense against both these patents, that the name of the government is lent to these contestants under which to attack these patents, and that only upon a guaranty that the government is to incur no costs. If this suit can be maintained by these individuals in the name of the government, upon the conditions named by the attorney general, the next applicant for leave to bring a similar suit may have an equally meritorious case, but no means to idemnify the government against costs, and the question will arise whether he is to be denied the right to use the name of the United States because of his poverty. It must be conceded, upon the allegations of this bill, that the de. fendant has acted dishonestly, both in the false statements by which he obtained his patents, and in his dealings with the persons to whom he sold his business and the right to use his process under his older patent; but the fact of such dishonesty does not clothe this aourt with jurisdiction to entertain a suit in the name of the United
IN BE INSURANOE
to cancel the patent, when it is apparent that the of the government is only colorably used, and that the suit is really prosecuted by private persons. Would it not be better to leave the attack upon such patents as have been obtained by false suggestions where they have heretofore been left, as defenses to the validity of the patents? My attention was called upon the argument to Mowry v. Whitney, 14 Wall. 434, but I do not find in that case any for sustaining this bill. I do not intend to be understood as holding that a bill in chancery will not lie in any case to annul a patent obtained by fraud, but only that this bill does not, in my opinion, make such a case as requires or authorizes the United States to allow the use of its name to fight out a contest between these individuals. . The demurrer to the bill is sustained, and the bill dismissed for want of equity. See U. S. v. (}'unning, 18 FED.
In re Petition of INSURANCE COMPANY OF THE STATE OF PENNSYLVANIA for the Proceeds of the Barge Waubaushene.
(District Court, N. D. New York· . 1884.)
MARTNE INSURANCE 'l'AINTNG RECEIPT.
PAYM&NT OF PREMruMS -
DELIVERY OF POLICY CON-
The delivery of the policy of insurance to the assured, containing a receipt for the premium, estops the company, for the reason that the receipt is con· clusive evidence of payment; to the extent, at least, that such payment is necessary to give validity to the contract. The company will not be permitted to say that no contract was made. When the unauthorized act of an agent is ratified by the principal, the ratification relates back to the time of the inception of the transaction, and the act is treated throughout as if it were originally authorized.
SAME-UNAUTHORIZED ACT OF AGENT-!tATIFICATION.
3. SAME-CONTRACT-WHERE MADE.
SAME-LIEN FOR UNPAID PREMIUMS-NEW YORK STATUTlt--FORBIGN VggllEL.
5. SAME-MARITIME LIEN.
No. genera! lien is created by the maritime law, in favor Qf the unpaId premIUms.
Motion to Confirm Report)n Favor of Petitioner.