case, taken at large, would seem to show that a patent could not be granted for an invention described in a former patent to the same inventor. What was so spoken of there had been not only described but patented in the former patent. What was said is to be understood by reference to what it was spoken of. That part of that case relied upon

in this rejection is where it is said

It is hardly necessary to remark that the patentee could not include in a subsequent patent any invention embraced or described in a prior one granted to himself any more than he could an invention embraced or described in a prior patent granted to a third person. Indeed, not so well, because he might get a patent for an invention before patented to a third person in this country, if he could show that he was the first and original inventor, and if he should have an interference declared. (Section 382.)

The latter part of this extract relates to the same subject as the former part. It expressly refers to patented inventions by others, and seems to show that patented inventions by the same inventor were intended when inventions embraced or described in his prior patent were referred to. The statute does not make prior description in a patent a bar, but being patented. (Sections 4886, 4887, and 4920.)

The court appears to have merely referred to the plain effect of these statute provisions. In Battin v. Taggart (17 How., 74) it appears to have been expressly adjudged, upon the same statute provisions as are in force now, that an inventor might have a patent for an invention described in a prior patent to himself. The same seems to have been decided in Graham v. McCormick (XI Fed. Rep., 859) on full argument and much consideration.

According to the terms of the statutes the orators seem to be entitled to the patent for these claims. There does not appear to be any settled construction to control otherwise.

Let there be a decree for the applicant adjudging that he is entitled to receive a patent for the inventions covered by these first four claims of his application.

[United States Circuit Court-Northern District of New York.]

SWIFT v. JENKS ET AL.

Decided March 3, 1884.

27 O. G., 621.

1. NON-CLAIM OF APPARENT DEVICE-ABANDONMENT.

The omission by an inventor to claim a combination or device apparent upon the face of his patent amounts to a dedication of the neglected contrivance to the uses of the public.

2. INJUNCTION-NOT TO ISSUE WHEN IT WOULD WORK INJUSTICE.

An injunction should not issue when it would work great harm to one party without corresponding benefit to the other, at least where adequate protection can be afforded by other means.

MOTION for preliminary injunction.

Messrs. Duell & Hey for the complainant.

Mr. Neri Pine for the defendants.

COKE, J.:

This is a motion for a preliminary injunction. The complainant is the inventor of an alleged improvement in lubricators, for which letters patent were issued August 28, 1883. The claims in controversy are as follows:

5. In combination with the steam-condensing duct and its horizontal extension c, the lubricant-cup composed of metal and provided in front of the duct-extension e with an observation-port, r, covered with a transparent plate, substantially as and for the purposes set forth.

6. In combination with the oil-cup of a lubricator, the port r, covered by a glass plate, and the pipe or tube c, having an inclined end or face, substantially as set forth.

Prior to this time, and on the second day of May, 1882, letters patent for a similar invention were issued to the defendants. An interference was declared, and after a thorough investigation the examiners and Commissioner concurred in deciding that the complainant was the prior inventor. But the proceedings in the Patent Office determined more. Upon defendants' motion to dissolve the interference the Commissioner was required to pass upon the question whether or not the subject-matter claimed was patentable. Various references, which, as was urged by the defendants, anticipated the complainant's invention, were presented, and although the Examiners-in-Chief and the Commissioner were not in accord upon this question, it cannot be denied that the issuing of the patent was, to the extent that the question was there investigated, a decision in favor of the complainant. The proceedings in the Patent Office having, as between these parties, determined, first, that the complainant was the prior inventor, and, second, that the subjectmatter of the patent was not void for want of novelty, the complainant would be entitled, if there were no other considerations, to the injunc tion prayed for, there being no dispute as to the infringement. (Smith v. Halkyard, 16 Fed. Rep., 414; Shuter v. Davis, Id., 564.) But the defendants again insist that the patent is void for want of patentable novelty, and in support of this defense they produce various references not presented to the examiners. They also produce affidavits tending to show that one Giles was the original inventor of the patented device or combination. But the argument having the most weight with the court is the one based upon the complainant's prior patent of March 21, 1882. It is urged that he there fully discloses the subject-matter of claim 5, supra. The language of the specification is as follows:

It is not essential that the cylinder should be wholly of glass so long as that portion directly opposite the end of the tube or pipe E is transparent, to expose to view the end thereof the cylinder may be constructed of metal, with a window or "sight" on a line opposite the tube or pipe.

9373 PAT-14

The metal cylinder with the glass observation-port opposite the end of the tube was not claimed in the March patent, and the language of Mr. Justice Bradley in Miller v. Brass Co. (104 U. S., 352) is therefore applicable:

But it must be remembered that the claim of a specific device or combination, and an omission to claim other devices or combinations apparent on the face of the patent, are in law a dedication to the public of that which is not claimed. It is a declaration that that which is not claimed is either not the patentee's invention, or, if his, he dedicates it to the public.

It is argued for the complainant that the patent in suit is not for a particular device, but for a combination, and that, construed most favorably for the defendants, the March patent discloses but one element of that combination. This contention presents for consideration a number of questions not argued upon the motion, but which may perhaps be suffi ciently suggested by an examination of Slawson v. Grand St. R. R. (107 U. S., 649; S. C., 2 Sup. Ct. Rep., 663) and other like authorities. Although the papers presented on this motion have been carefully examined, it is not the purpose of the court to discuss the defenses referred to at this time or express an opinion regarding them; they should be disposed of only after careful consideration on final hearing. They are mentioned here simply to show that the defendants have succeeded in raising a sufficient doubt as to the validity of the complainant's patent to induce the court to withhold the writ asked for provided the complainant's right can be fully protected without resort to so positive a remedy. Where an injunction will work great injury to one party without corresponding benefit to the other, it should not ordinarily issue, especially where adequate protection can be had without it.

An injunction should issue unless the defendants, within fifteen days after service of a certified copy of the order entered upon this decision, shall give a bond with two or more, sureties, to be approved by a coinmissioner of this court, conditioned to keep an account of all the lubricators manufactured and sold by them, and to file such account, duly verified, once a month in the office of the clerk of this court, and to pay the amount of any final decree which may be awarded against them, the penalty of the bond to be in such sum as may be agreed on by the parties; or, if they are unable to agree, as may be fixed by the court upon proof by affidavit or otherwise of the extent of the defendants' business.

[United States Circuit Court-District of Vermont.]

VERMONT FARM MACHINE COMPANY ET AL. . MARBLE, COMMISSIONER OF PATENTS.

Decided April 16, 1854.

27 O. G., 622.

Where a bill in equity is brought to obtain a patent (under section 4915, R. S.) in the district of Vermont, and the Commissioner of Patents accepts service: Held, that by such acceptance the Commissioner consented to be found in said district, and bis act in this respect is binding upon his successor.

MOTION for a rehearing.

Mr. Frank T. Brown for the Commissioner of Patents.

Mr. William E. Simonds for the orators.

WHEELER, J.:

The bill was brought for an adjudication that the orators were entitled to a patent pursuant to section 4915, Revised Statutes. The defendant accepted service of the subpoena to have the same effect as if duly served on him by a proper officer, and acknowledged receipt of a copy, but did not appear in court nor make any objection to proceeding to decree. After hearing the orators a decree was made and entered in their favor. (19 Fed. Rep., 307.) The present Commissioner now loves for a rehearing, principally upon the ground of alleged want of jurisdiction of this court. One mode of attempting to show that this court has not jurisdiction is by claiming that the supreme court of the District of Columbia has exclusive jurisdiction. The language of this section, however, seems to preclude this idea. It reads:

Whenever a patent, on application, is refused, either by the Commissioner of Patents, or by the supreme court of the District of Columbia upon appeal from the Commissiver, the applicant may have remedy by bill in equity.

This seems to clearly imply that the remedy may be elsewhere. Whipple v. Minor, 15 Fed. Rep., 117. Another, and the principal mode is by claiming that no circuit court of a district away from the Patent Office, and in which the Commissioner does not reside, can acquire jurisdiction of such cases. The circuit courts have original jurisdiction: "Ninth. Of all suits at law or in equity arising under the patent or copyright laws of the United States." (Rev. Stat., sec. 629.) This is unquestionably a suit so arising. There is no restriction upon proceeding in these courts in such cases, except that civil suits against inhabitants of the United States are not to be brought by original process in any other district than that in which the defendant resides or is found at the time of service. (Rev. Stat., 739.) The court had general jurisdiction of this subject, ard the defendant, by his acceptance of service, consented to be found in this district, and did not appear in court to object to being bound by his consent.

In ec parte Schollenberger (96 U. S., 369) Mr. Chief Justice Waite, in delivering the opinion of the court, says:

The act of Congress prescribing the place where a person may be sued is not one affecting the general jurisdiction of the courts. It is rather in the nature of a personal exception in favor of a defendant, and one which he may waive. If the citizenship of the parties is sufficient, a defendant may consent to be sued anywhere he pleases, and certainly jurisdiction will not be ousted because he has consented.

Here no question was made before; now when one on this subject is made, it is not whether the Commissioner can be compelled to answer, but whether he can consent to be sued away from the seat of Govern: ment and his residence. Prentiss v. Ellsworth (Mirror of Pat. Off., 35; Law's Dig., 103; Wharton's Dig., 365) raised the question as to the compulsion, and not as to the consent, and it was held upon apparently sound reasoning by Judge Randall that the Commissioner could not be compelled by process issuing out of the circuit court for the eastern district of Pennsylvania to answer there. The question of jurisdiction founded on consent did not arise. It is further objected against the jurisdiction here that the court could not compel the obedience of the Commissioner of Patents at the Patent Office to its decree. It is to be presumed, however, that a high officer of a Department of the Government will do his duty without compulsion, or even command, from any quarter, especially in a matter where he has no interest, nor the Government any, except that the duty be done. This provision of the statute is framed according to this view. The court does not decree that the Commissioner shall issue a patent, but only "may adjudge that such applicant is entitled, according to law, to receive a patent for his invention as specified in his claim, or for any part thereof, as the facts in the case may appear; and such adjudication, if it be in favor of the right applicant, shall authorize the Commissioner to issue such patent," &c. Granting the permission expressed the will of Congress, which would be sufficient. Neither the adjudication or issuing the patent under it will conclude any individual rights. The validity of the patent will be open to trial under the law. But if it is not granted, no suit for infringement can be brought, and the right to the invention cannot be judicially tested. This jurisdiction has been exercised without challenge, except in Prentiss v. Ellsworth, before cited; Ellithorpe v. Robertson, 2 Fish., 83.

As this case is now considered, the jurisdiction upon the consent of the Commissioner seems to be ample. The question involved in the case on the merits was purely one of law, requiring the production of no models or exhibits, and no personal attendance, and might well be submitted anywhere. Whether under the circumstances it should be submitted here rested in the discretion of the Commissioner. His act in this respect is binding upon his successor like any other lawful act, and it oppresses no one. This ground presents no reason that appears to be sufficient for opening the case. All the grounds now urged on the merits of the application for the patent were fully considered before, and no sufficient reason appears for going over the ground again. The motion is denied.