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PARKS v. BOOTH.

1. Reissued letters-patent No. 1826, granted Nov. 29, 1864, to Jonathan L. Booth for a new and useful improvement in grain-separators, are valid.

2. A specification describing an invention consisting merely of a new combination of old elements or devices which produces a new and useful result is sufficient if they be specifically named, their mode of operation given, and the result pointed out, so that those skilled in the art, and the public, may know the extent and nature of the claim and what the parts are which co-operate to do the work claimed for the invention.

3. Where in a suit for the infringement of letters-patent for such a combination, the parts of which are not susceptible of division or separate use, the answer sets up that the complainant is not the first and original inventor of it, the defence to be available must apply to the combination as an entirety, and not to a part of it, or to one or more of the claims of the letters, if they do not cover the entire invention.

4. A patentee is not entitled to reimbursement for counsel fees paid or expenses incurred by him, other than his taxable costs, nor to interest on the profits realized by an infringer.

APPEAL from the Circuit Court of the United States for the Northern District of Ohio.

This was a suit by Jonathan L. Booth, against George Parks, Grant B. Turner, William A. Taylor, and James Vaughan, partners, under the name and style of Turner, Parks, & Co., for an alleged infringement of the complainant's reissued letters-patent, for an improvement in grain-separators.

The letters were a second reissue. The original letters, No. 25,484, were granted to Booth Sept. 20, 1859; reissued Sept. 25, 1860, No. 1043; and again reissued Nov. 29, 1864, No. 1826.

The court rendered a decree May 9, 1874, adjudging that the letters were valid, that the defendants had infringed them, and that the complainant recover the profits, gains, and advantages which the defendants received, or which accrued to them since Nov. 29, 1864, by the manufacture, use, and sale of the improvements described and secured by the reissued letters, and also such damages, if any, in addition to profits as he sustained by reason of said infringement. The case was referred to a Master to ascertain the damages and profits, who filed his report Nov. 24, 1875, awarding to the complainant, on account of profits, $9,944.09; and as damages, being expenses of con

ducting the suit, $627.20; and compensation for the complainant's time, $420; making in all, $10,991.29.

To this report the complainant and defendants filed exceptions, which were overruled, saving that made to the allowance for his time. The Master's report, as thus amended, was confirmed Dec. 15, 1876, and a final decree rendered against the defendants for the sum of $11,184.42, being the amount found due by the amended report, with interest thereon.

From that decree the defendants appealed.

The remaining facts are stated in the opinion of the court. Mr. William Bakewell and Mr. T. B. Kerr for the appellants.

Mr. W. F. Cogswell, contra.

MR. JUSTICE CLIFFORD delivered the opinion of the court. Power to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries is expressly vested in Congress by the Constitution. Pursuant to the power there conferred, the enactment of Congress provides that the original jurisdiction of patent cases shall be exclusive in the circuit courts or the district courts exercising circuit court powers. Rev. Stat., sects. 629-711.

Provision is also made that a party, whose rights, secured by valid patent are invaded by infringement, may seek his remedy in an action at law or by a suit in equity, at his election. 5 Stat. 124; 16 id. 206; Rev. Stat., sect. 4920.

Federal courts vested with jurisdiction in such cases have power, in their discretion, to grant injunctions to prevent the violation of any right secured by a patent, as in other cases of equity cognizance.

Sufficient appears to show that a patent in due form was issued to the complainant, on the 20th of September, 1859, for a new and useful improvement in grain-separators, which consisted in the employment and use of a series of inclined screens and boxes, having a proper shake-motion communicated to them, in connection with a fan air-blast spout, the whole being arranged in a manner set forth in the specification.

Without entering much into details, it will suffice to say in

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this connection that the object of the improvement was to subject grain to a thorough screening operation. Machines were constructed under the patent and were put in operation at various places, but on the 25th of September of the next year it was surrendered and reissued, and on the 29th of November, four years later, it was surrendered a second time, when the patent in suit was issued to the complainant, which is a second reissue. Having removed the defects in the prior patents, the complainant alleges that he immediately put the machines on sale; that he has ever since been in possession of the right secured by the patent; and that he would have made large profits from the manufacture and sale of the same had he not been prevented from so doing by the respondents.

Two claims are made by the complainant. He charges that the respondents have largely infringed his exclusive right, and are still engaged in making and selling machines which are constructed in the same manner as the patented improvement, and accomplish the same object by the same mode of operation.

Service was made, and the respondents appeared and filed an answer. Their principal defences are as follows: 1. That the complainant is not the original and first inventor of the patented improvement. 2. That the alleged invention had been in public use and on sale for more than two years prior to the application by the complainant for a patent. 3. That the reissued patent described in the bill of complaint is not for the same invention as the original.

Proofs were taken, hearing had, and the Circuit Court entered a decree in favor of the complainant, and sent the cause to a master to compute the profits, gains, and advantages which the respondents have received, or which have arisen or accrued to them from the infringements of the said patent. Due report was made by the Master, to whose report certain exceptions were filed by the respondents. Exceptions were also filed by the complainant, but, inasmuch as he did not appeal, they will not be re-examined. Those filed by the respondents, which are still the subject of complaint, will receive due consideration.

Both parties appeared, and were heard in support of their respective exceptions, all of which were overruled by the Circuit Court except the fourth exception filed by the respondents.

Matters of the kind being settled, the Circuit Court entered a final decree in favor of the complainant in the sum of $11,184 42, with costs of suit. Prompt appeal was taken by the respondents to this court, and since the cause was entered here they have filed the assignment of errors set forth in their brief.

All such matters as are deemed material to the several defences pleaded in the answers will be carefully considered, without entering into the details of the argumentative portion of the errors assigned. When reduced to specific propositions, the errors assigned may be stated as follows: 1. That the complainant is not the original and first inventor of the patented improvement. 2. That the supposed improvement was not the proper subject of a patent, because it did not involve any invention. 3. That the Circuit Court erred in finding that the re spondents had infringed the reissued patent of the complainant. 4. That the Circuit Court erred in overruling the exceptions of the respondents to the Master's report. 5. That the Circuit Court erred in allowing damages to the complainant in addition to profits.

Redress for the infringement of a patent may be sought by a suit in equity as well as by an action at law, and the required allegations and proofs are substantially the same in one form of remedy as in the other. Neither damages nor profits can be recovered unless the complaining party alleges and proves that he or the person under whom he claims was the original and first inventor of the patented improvement, and that the same has been infringed by the party against whom the suit is brought. Both of those allegations must be proved to maintain the suit; but the patent, if introduced in evidence by the complaining party, affords him prima facie evidence that the patentee was the original and first inventor. That presumption, in the absence of any satisfactory proof to the contrary, is sufficient to entitle him to recover if he proves the alleged infringe

ment.

Evidence to overcome that presumption may be introduced by the defending party in case due notice of such an intention is given to the party that instituted the suit, as required by the act of Congress. Rev. Stat., sect. 4920. Notices of the kind

were given by the respondents in their answers, and the assignment of errors calls in question the decision of the Circuit Court in that regard, which is the first question presented for re-examination in the record.

Questions of the kind cannot well be decided without first ascertaining what the patented improvement is that is described in the first pleading of the complaining party; and that becomes necessary in this case, both in determining the issue of prior invention and the issue of infringement. Attempt having failed to show that the reissued patent is not for the same invention as the original, the question as to the nature of the improvement may be determined by the examination of the specification and drawings of the patent in suit.

Two claims are annexed to the specification. The first is the combination of the zigzag screens and boxes, as exhibited in the model and drawings, when the same have a lateral shake-motion, or one at right angles to the passage of the grain, in such a manner as to cause the grain to pass consecutively over and through them, and when arranged relatively to each other, to operate as set forth in the specification; the second is the series of zigzag screens and boxes with or without the troughs and having the lateral shake-motion in connection with the fan and spout, as set forth in the specification and exhibited in the drawings.

Plain as these claims are, it would not be difficult to define their meaning, even without resort to the details of what precedes in the specification. Speaking directly to the point, the patentee states that his invention consists in the employment or use of zigzag screens and boxes or passages having a proper lateral shake-motion communicated to them, and so arranged that the grain may pass consecutively over and through them and be subjected to a thorough screening operation. Also using in connection with the zigzag screens and boxes a revolving fan and spout, so arranged that the grain will be subjected to a sufficient blast for the separation from it of all light impurities. Reference is then made to the drawings, which show the frame of the machine and the manner in which the series of devices called inclined screens are secured by elastic pendants, as more fully explained in another part of the specification. Explana

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