tension of such patents is hereby prohibited." The act of 1870, which was a revision of all previous laws relating to patents, continued the period of 17 years as the term of a patent, and, in case a foreign patent had been previously issued, declared that the American patent should expire at the same time with the foreign patent, or, if more than one, at the same time with the one having the shortest term; but in no case for a longer term than 17 years. This provision is substantially carried forward into the Revised Statutes, (section 4887.)

The appellants contend that the act of 1861 repealed that portion of the act of 1839 which declared that a patent should be limited to the term of 14 years from the date or publication of prior foreign letters patent for the same invention. So far as the period of 14 years is concerned, this is undoubtedly true. Prior to 1861 all patents, as we have seen, were granted for the term of fourteen years, with a right, under certain circumstances, to an extension for seven years longer. This right of extension was attended with many inconveniences and much expense to meritorious patentees, and congress, by the act of 1861, cut it off, and made the term of all patents 17 years, a compromise between 14 and 21 years. The act had nothing to do with the question of foreign patents, but only with the term for which patents would ordinarily run; and the period of 17 years, without any privilege of extension, was adopted in lieu of 14 years, with a provisional right of extension. That was the sole point before the legislative mind. Seventeen years limit was substituted for 14 years. That was all that was intended or thought of. We are of opinion, therefore, that the condition imposed by the act of 1839, that the term of a patent for an invention which has been patented in a foreign country, shall commence to run from the time of publication of the foreign patent, was not repealed or abrogated by the act of 1861. If it was, it follows that there was a period of nine years, from 1861 to 1870, in which our patent system presented the anomaly of allowing patents to be taken out in this country at any length of time after the invention had been patented abroad, and without being subject to any condition, limitation, or restriction. This can hardly be supposed to have been the intention of congress.

No doubt, the words of a law are generally to have a controlling effect upon its construction; but the interpretation of those words is often to be sought from the surrounding circumstances and preceding history. From the history of the law in this case, as exhibited in previous enactments, and from the evident object and purpose of section 16 of the act of 1861, we are satisfied that the words there used to define and limit the term during which patents thereafter granted should remain in force, namely, "seventeen years from the date of issue," were only intended to change the length of the term, and not the point of its commencement. The latter continued as before, at "the date of issue," as defined by previous laws; referring either to the issue of the American patent itself, when no foreign patent had been previously obtained, or to that of the latter, when such a patent had been obtained. This view of the construction and meaning of the act of 1861 was fully explained and enforced by Mr. Justice BLATCHFORD in the case of De Florez v. Raynolds, 17 Blatchf. 436, 8 Fed. Rep. 434.

The decree of the circuit court is affirmed.

WILKINSON, Treasurer, etc., and others v. STATE OF NEBRASKA ex rel. SOCIETY FOR SAVINGS OF THE CITY OF CLEVELAND. (November 14, 1887.)

REMOVAL OF CAUSES-ERROR TO UNITED STATES SUPREME COURT-ACT OF MARCH 3, 1887. The circuit court of the United States, on motion of relator, remanded a suit that had been removed to it to the state court. The defendant brought error, and claimed that a writ of error lies to the supreme court of the United States, by act of 1875, under

this proviso of section 6 of act of March 3, 1887: "Provided, that this act shall not affect the jurisdiction over or disposition of any suit removed from the court of any state, or suit commenced in any court of the United States, before the passage hereof, except as otherwise expressly provided in this act,"-the case at bar having been begun, and the petition for its removal having been filed, before the passage of the act. Held that, under the acts of 1875 and 1887, no appeal or writ of error should be allowed from the decision of the United States circuit court deciding that a cause had been improperly removed, and remanding it back to the state court.

In Error to the Circuit Court of the United States for the District of Nebraska.

On motion to dismiss.

J. M. Woolworth, for the motion. A. J. Poppleton and J. M. Thurston, in opposition.

WAITE, C. J. This is a writ of error for the review of an order of the circuit court remanding a suit which had been removed from the supreme court of the state of Nebraska. The suit was for a mandamus to compel Wilkinson, the treasurer of Dakota county, to apply certain moneys in his hands, collected for that purpose, to the payment of past-due coupons detached from bonds issued by the county. It was begun February 14, 1887. The defendants answered March 1, 1887, denying the validity of the bonds, and at the same time they presented their petition for the removal of the suit to the circuit court of the United States for the district of Nebraska, on the ground that the relator was a citizen of Ohio, and they were citizens of Nebraska. The state court directed the removal April 6, 1887, and a copy of the record was entered in the circuit court on the nineteenth of the same month. On the twenty-seventh of May the relator moved to remand the suit, "on the ground that the circuit court was without jurisdiction to review the said cause, and to hear and determine the same." This motion was granted the same day, and thereupon the present writ of error was sued out by the defendants, which the relator now moves to dismiss for want of jurisdiction.

We have already decided at the present term, in Morey v. Lockhart, 123 U. S. ——, ante, 65, that since the act of March 3, 1887, (chapter 373; 24 St. 552,) no appeal or writ of error lies to this court under the last paragraph of section 5 of the act of March 3, 1875, from an order of the circuit court remanding a suit which had been removed from a state court. That, however, was a case in which the suit was begun, and the removal had, after the act of 1887 went into effect. Here the suit was begun, and a petition for removal filed, in the state court before the act, and this, it is contended, saves to these parties their right to a writ of error under the act of 1875, because of a proviso in section 6 of that of 1887, in these words: "Provided, that this act shall not affect the jurisdiction over or disposition of any suit removed from the court of any state, or suit commenced in any court of the United States, before the passage hereof, except as otherwise expressly provided in this act."

This, in our opinion, relates only to the jurisdiction of the circuit court, and the disposition of the suit on its merits; and has no reference to the jurisdiction of this court, under the act of 1875, for the review, by appeal or writ of error, of an order of the circuit court remanding the cause. That was "expressly provided" for in the last paragraph of section 2 of the act of 1887, in which it was enacted that "whenever any cause shall be removed from any state court into any circuit court of the United States, and the circuit court shall decide that the cause was improperly removed, and order the same to be remanded to the state court from whence it came, such remand shall be immediately carried into execution, and no appeal or writ of error from the decision of the circuit court so remanding such cause shall be allowed." This provision, when taken in connection with the repeal by section 6 of the last paragraph of section 5 of the act of 1875, shows unmistakably an intention on the part of congress to take away all appeals and writs of error to this

court from orders thereafter made by circuit courts remanding suits which had been removed from a state court; and this, whether the suit was begun, and the removal had, before or after the act of 1887.

The motion to dismiss is granted.

SMITH & GRIGGS MANUF'G Co. v. SPRAGUE, Adm'x, etc.1

(November 14, 1887.)

1. PATENTS FOR INVENTIONS-PATENTABILITY-PUBLIC USE.

In an action for infringement, the plaintiff's testimony showed that for more than four years previous to the date of the patent he had been using the invention for profit, and had manufactured and sold several thousand gross of the articles which the machine was made to produce; that the machine was defective, but that improvements were not made until after it had been in use for more than two years, and that the defects were then only partially remedied. During the years previous to patent it was the only machine producing these articles, and plaintiff alone supplied the market. The evidence in regard to the purpose on the part of the plaintiff to patent his invention, and that his experiments and use of the machine, prior to his application for a patent, were to perfect its mechanism, and improve its operation to that end, was vague and indefinite. Held, that the use of the invention was a public use, within the meaning of Rev. St. U. S. 2 4886, which provides that "any person who has invented or discovered any new and useful * * * machine, *** not in public use or on sale for more than two years prior to his application, * * may obtain a patent therefor," and that the patent was therefore void.

*

*

2. SAME LIMITATION OF CLAIM-SPECIFICATIONS.

The plaintiff claimed an infringement of the fifth claim of patent No. 228,136, and of the first and fourth claims of No. 231,199, for a machine for making bucklelevers, which are bent by formers, and swaged by dies, so that they have a lip or bead, which bears upon the holding-strap, and two beads at the upper edge for a finish, and to prevent the strap from cutting. The parts alleged to be infringed are the combination, with mandrel and dies, of springs, to press the dies forward into proper position relative to the mandrel; the combination of mandrel, provided with ribs, of dies, and a support which presses a certain part of the bucklelever against a rib; the combination with mandrel, having rib, of dies and stops adapted to engage both ends of the partially formed lever, to regulate its position relative to the niandrel and dies. The defendant's invention possesses the same component parts, but so arranged that the machines differ only in form. Held, that the plaintiff's invention was the first to make "beaded" buckle-levers, and that the patent was not confined to the mere form of mechanism which the plaintiff adopted.

Appeal from the Circuit Court of the United States for the District of Connecticut.

Geo. E Terry and M. B. Philipp, for appellant. C. E. Mitchell, for appellee.

MATTHEWS, J. This is a bill in equity for an injunction and account based upon the alleged infringement by the appellant of letters patent No. 228,136, dated May 25, 1880, and letters patent No. 231,199, dated August 17, 1880, for improvements in machines for making buckle-levers, issued to Leonard A. Sprague, the appellee. The defenses relied on are: (1) A denial of the infringement alleged in respect to the fifth claim of patent No. 228,136, and the first and fourth claims of patent No. 231,199; (2) as to all the other claims of both, that a machine embodying them was in public use for more than two years prior to the application for the patents. The application for patent No. 228,136 was filed on November 11, 1879, while that for patent No. 231,199 was filed December 2, 1878; the two being divisions of an application based on the same model. The machines described in the two patents, it is admitted, are substantially the same in construction and operation, both patents being

1Reversing 12 Fed. Rep. 721.

for different parts and combinations of a single machine. For the purposes of this case, therefore, the date of the application is to be taken as of December 2, 1878, being the earlier of the two.

The machine is for making levers of buckles used almost exclusively on "arctic" overshoes. These levers are made from a single piece of brass, with slots through them near each end to fasten them to the strap of a shoe, and are bent by formers, and swaged by dies, so that they have what is termed a lip or bead, which bears upon the holding strap, two grooves within which lies the bar or pivot of the buckle, and two beads at the upper edge for a finish, and to prevent the strap from cutting when it is fast through the slots, and bears upon them when in use. There is no claim in these patents for the buckle-lever itself as a new article of manufacture; for which, however, Sprague, the appellee, had a prior patent, dated May 27, 1862. The levers are made from a strip of metal by a succession of operations in the patented machine. The first step is to produce the slotted blank; the next, to bend it by doubling it upon itself into a U-shape; the next, to produce the central double bead forming the grooves; and the next, to produce the double beads between the slot and the edge of the lever. The machine is organized to feed a strip of sheet brass under punches which punch the slots in the blank, and then cut it from the strip; to feed this blank over a matrix, where it is bent into U-form; to feed it on to a mandrel, on which, by a pair of dies, it is partially formed, and then along that mandrel to a second pair of dies, where its form is completed. The machine is automatic, and, while these successive steps take place in the complete manufacture of a single lever, all the various steps in the process, with respect to successive levers, take place simultaneously. So that, as each lever is completely and finally formed on the mandrel, it is pushed from the mandrel by another to take its place in that stage of formation.

The first, second, third, fourth, and sixth claims of patent No. 228,136, and the second, third, and fifth claims of patent No. 231,199, are those in respect to which the alleged infringement is admitted, and as to which the defense of two years' prior public use is urged. These claims are as follows:

Of patent No. 228,136: “(1) In combination with the mandrel, M, provided at its lower edge with the rib, m, and with the short ribs, m2, m2, the dies, N, N', 0, 0, whereby, after the partially formed lever has been acted upon by dies, N, N', the rib, m, serves as a support or guide over which said lever may be moved to a proper position relative to dies, O, O, substantially as set forth. (2) In a machine for making buckle-levers, the combination of the mandrel, M, the dies, N, N', advanced on planes substantially at right angles to the planes of the partially formed buckle-lever, and the tongue, n2, attached to the die, N, substantially as set forth. (3) In a machine for making buckle-levers, the combination, with the mandrel, the punch which punches blanks from a continuous sheet of metal, and two or more dies which successively form the metal into the desired shape, of a carrier which moves a blank from the punches to the forming-dies, and advances the partially formed levers against the preceding lever, substantially as set forth. (4) In a machine for making buckle-levers, the combination, with the matrix, L, and folder, l2, of the dies, N, N', the mandrel arranged to receive the blank from the matrix, and the carrier, substantially as set forth." "(6) In a machine for making buckle-levers, the combination, with the folder, 72, of the pusher-pin, c3, attached to and moving with the punch-stock, C, and a returning spring, which lifts the folder, substantially as set forth."

Of patent No. 231,199: "(2) In a machine for making buckle-levers, the combination, with the die which punches blanks from a continuous sheet of metal, of two or more dies which successively form the metal into the desired shape, and a carrier which moves a blank from the punching-die to the forming-dies, and advances the partially formed lever against the preceding

lever, substantially as set forth. (3) In a machine for making buckle-levers, the combination, with the mandrel, M, provided with the rib, m, of the dies, N, N', and a stop adapted to engage with the lower end of the lever, and determine the length of the bit, u, substantially as described." "(5) The herein described method of manufacturing buckle-levers, that is to say, by bending the blank into U-shape, then forming the bit, u, and seats, u2, u3, and subsequently forming the grooves, ut, substantially as herein set forth."

The claims in respect to which infringement is denied are as follows: Of patent No. 228,136: “(5) In a machine for making buckle-levers, the combination, with the mandrel, M, and dies, N, N', of the springs, N2, N2, to press the dies forward into proper position relative to the mandrel, substantially as set forth."

Of patent No. 231,199: "(1) In a machine for making buckle-levers, the combination of the mandrel, M, provided with the ribs, m, m3, of the dies, N, N', O, O, and a support, which presses the part, u, of the lever against the rib, m, substantially as set forth." "(4) In a machine for making bucklelevers, the combination, with the mandrel M, having rib, m, of the dies, N, N', and stops adapted to engage both ends of the partially formed lever, to regulate its position relative to the mandrel and dies, substantially as set forth."

It will be observed that the claims in respect to which the infringement is denied do not embrace the whole invention claimed in the two patents. They cover only certain definite and specific combinations of parts of the mechanism. It is possible, therefore, that a defendant might be guilty of infringement in respect to all the other claims in the two patents, and yet not infringe the three claims specified above. That is to say, he might use a machine which embodied all the combinations except those specified in these three claims. These he might entirely omit without any substitute, or he might have a substitute for them so different as to amount to a separate invention, and therefore not mere equivalents for them. In the examination of the question, therefore, of the prior public use, for two years before the date of the application, of the invention as embodied in those claims in respect to which the infringement is admitted, we assume for the present that the machine used by the defendant is an infringement of that covered by the complainant's patents only so far as it is covered by them, excluding the three claims in respect to which the infringement is denied.

The testimony on the subject of the prior public use by the complainant is that from the fall of 1874 until the fall of 1877, and thus more than two years prior to December 2, 1878, the complainant had in use for the purpose of profit in his business, operated in his factory by his workmen for the production of arctic overshoe buckles, a machine which contained all the elements and combinations covered by the claims in the two patents in respect to which the defendant confesses infringement. This machine was practically successful, in that during the period of its use the complainant produced and sold about 50,000 gross of levers used on these shoe-buckles, which he sold to his customers in the market. It was a public use in the sense of the statute, and within the decisions of this court, inasmuch as it was used by the complainant in the regular conduct of his business, by workmen employed by him in its operation, and in the view of such part of the public as chose to resort to his establishment, either for the purpose of selling material for the manufacture, or of purchasing its product. It is claimed, however, and it was so decided by the circuit court, that this prior use of the machine in that form was not a public use, within the prohibition of the statute, so as to defeat the patent, because that use was experimental only, of an imperfect machine, embodying an incomplete invention, in order to enable the inventor to perfect it by improvements actually added, and to overcome defects developed by this use, which improvements are contained in the three additional