bring the suit in his own name, instead of in the name of the real party, the United States. The conclusion, therefore, follows that this information to repeal letters patent for an invention, being in the name of George H. Williams, as he is attorney general of the United States, and not inthe name and behalf of the United States, is not authorized by any statute, sanctioned by any precedent, orsupported by the authority of any judicial decision; and the demurrer must be sustained; and the information dismissed.
(Olrcuit Court,S; D. New York. December 11,1884.'
PATENTS FOR !NVENTIONS":"'CANOELLATION-8USTAINED PATENTS.
The United States can not lIlain.tain an aCtion to repeal letters patE\nt for an invention on grounds that have been sustained in a suit for the infringement of the letters patent.
This was an action to repeal letters patent. The case first came up on mo'tion for a preliminary injunction, which was refused. 21 Fed. Rep. 318. Hearing on the demurrer to the bill for want of power in tha court, and failure of the bill to state a caseca.lling for relief in WALLACE, J., (orally.) There are no allegations in the bill charging fraud or false suggestion on the part of the applicant in his application for a patent. At most, the allegations show that there was no novelty in the invention, and inferentially that he, knowing· the prior state of the art, which was public knowledge, must have known there was no novelty. All the facts alleged to show want of novelty seem to have been considered in the case of Oolgate v. Telegtaph 00., 19 Fed. Rep. 828, where they were set up in the answer, and where the patent was sustained. This btanch of the bill, therefore, does not require much consideration. The other aspect of the bill which charges that the commissioner of patents was without jurisdiction to issue a patent, after the decision of the chief justice under the statute, is worthy of more consideration. 'fhe statute of 1849 was evidently intended for the benefit of applicants entitled to a patent, and . to enable them to right any errors which might be made by the commissioner. The proceeding. where there are no interfering applicants, is practically one between the applicant and the commissioner. It would not seem reasonable to construe such a statute as intended to preclude a new application, on new facts bearing either upon novelty or abandonment. to the commissioner after his action had been sustained by the appellate authority on a former application. The decision of the appellate tribunal is confined to the record of the proceedings before the commissioner, and the determination is, in effect, that the commissioner was, or was not, justified upon the facts before him in refusing a patent. There is no decision that upon a new application, and upon different facts, the patent should be refused. If the bill alleged that the new application was founded upon the same papers as the one and no new 'facts existed to authorize the commissioner to come to a different conclusion.
ll!TOTE. This case was decided in 1884. but the opinion has never been published. In view of the citation of. the opinion by counsel and by Judge COLT in U. S. v. Telephone: . 00;, anU, 591, it is printed at this time. [ED. '
SEIBERT CYLINDER OIL-CUP CO.
the case would be stronger for the complainant. As there are no such allegations, it is not necessary to determine what effect should be given to them. I am disposed to give an opportunity to the complainant to amend the bill in this respect if so advised. The decision of the court is that the demurrer be sustained, and judgment ordered dismissing the bill, unless the complainant, within 20 days, brings on a motion to amerid the bill by alleging that the record was the same, and that no new facts were presented to the commissioner at the time of the making of the application for the patent which he granted. Such motion will be heard on affidavits. and I can then j,udge of the probability of the truth of any such allegation.
SEmERT CYUNDER OIL-CUP Co· .". MANNING and others.
(OirlJuit Oourt. S.
n. New York.
November 5. 1887.)
PATENTS FOR INVENTIONS-INFRiNGEMENT-CONTRACT.
Two corporations, owning somewhat similar patents, agreed each not to sue the other or its. agents, etc., under any letters patent owned by it. so long as the mutual covenants in the agreement were performed by each party. One of these covenants on the part of plaintiff corporation was not to grant licenses for a certain territory, and one on the part of the other corporation was to make monthly returns and payments. Plaintiff corporation sued an agent of the other corporation for infrinl'('ement. and in the bill. which was in the usual form. set out by way of anticipation that the agent relied upon this agreement, but that it was at an end, having been rescinded for failure of the other corporation to make returns. Defendant interposed a plea to the effect that contract was still in force, for the reason that plaintiff had granted licenses in the prohibited territory before default of the other corporation. The validity of the patent involved was not questioned, nor its infringement. save as above. denied. Held. on counter-motions for preliminary injunction and to dismiss bill, (1) that the circuit conrt had jurisdiction. the case being' an ordinary suit to prevent the violation of a right secured by a patent which the defendant sought to defeat by a collateral agreement; and (2) that the injunctioushould issue unless defendant give bond to meet any decree against him, and the corporation employing him, which was the real defendant, file a report of sales since the date of its last report under the agreement, and continue to file such a report monthly, as provided for therein.
In Equity. On counter-motions, the one for preliminary injunction, and the other to dismiss bill for want of jurisdiction. Edmund Wetmore,·.for complainant. Francis Forbes and Alexander P. Hodges, for defendants. WALLACE, J. This suit is brought to restrain the infringement of the complainant's patent for an improvement in lubricators. The bill, besides setting out such facts as are ordinarily alleged, showing title and acts of infringement by the defendants, sets out also, by way of anticipating the defense, that the defendants are selling lubricators manufactured by the Detroit Lubricator Company, which sale constitutes the infringement complained of, and pretend that they have a right to sell the same without suit by or molestation from the complainant, because on or about the first day of December, the complainant arid the v.32F.no.9-40