ASSIGNMENTS-Continued.

8. SAME-RIGHTS OF USERS OF MACHINES DIFFERENT FROM THOSE OF ASSIGN-
EES.-The difference between the right to use machines properly obtained and
the right to use by reason of the ownership of an interest or share of the mo-
nopoly is distinct and well recognized; and the failure of the act to mention
the assignees, in view of the express reference to the users of machines, must
be regarded as intentional, expressio unius exclusio alterius. The right by as-
signment is not a mere equitable right, such as ordinarily has to be prose-
cuted in the name and often at the pleasure of the assignor, but the assignor
was as much bound to prosecute the application with diligence, and was as
effectually concluded by the fact of his rights under the general patent laws
of the country and the Rules of Practice in the Patent Office at Washington,
as the inventor himself. "Id.

9. SAME-SAME-THE BENEFIT OF THE SPECIAL ACT IS FOR THE PERSONS EX-
PRESSLY NAMED THEREIN.-Under the circumstances named, a special act
was as necessary to the revival of the assignor's rights as of the inventor.
Whatever rights might be conferred by such act could only inure to the per-
sons in whose favor it should be granted. "Id.

10. TERM

HEIRS" IN SPECIAL ACT DESCRIPTIO PERSONA.-The heirs do not take
under the special act, as if by descent from the original inventor, an estate
charged with the contracts and incumbrances made by him in his life-time.
They do not take from the inventor, but directly from the special act of Con-
gress. In technical phrase, assimilating their property to real estate, they
take by purchase and not by descent. The reference to the beneficiaries of
the act as "heirs" is mere descriptio persona. *Id.

ATTORNEYS.

ATTORNEY-PARTY BOUND BY ACTS OF HIS ATTORNEY.-A party is bound by all
the acts of his agent, made in good faith and within the scope of his authority.
Ex parte Hatchman, 979.

ATTORNEY'S POWER TO AMEND APPLICATION. See Void Application.
AUTOMATIC MACHINES. See Patentability, 11.

BAR TO A PATENT. See Public Use, 2, 11.

BAR TO REGISTRATION OF TRADE-MARKS. See Trade-Marks, 9.

BILL IN EQUITY. See Agreement to Assign, 1, 2; Injunction, 3; Particular Patents,
38 Hotchkiss Practice in the Courts, 1; Service of Process.

1. BILL IN EQUITY-ASSIGNEE CANNOT MAINTAIN BY VIRTUE OF HIS EQUITABLE
TITLE.-An assignee of a chose in action-as a patent right-cannot proceed
by bill in equity to enforce for his own use the legal right of his assignor
merely because he cannot sue at law in his own name. Hayward v. Andrews
et al., 135.
2. ROOT V. RAILROAD COMPANY CONSTRUED.-The meaning of the passage in Root
v. Railroad Company that the bill in equity may be maintained "where the
title of the complainant is equitable merely" is to limit the exception to cases
where the purpose and necessity of the resort to a court of chancery are to
enforce the peculiar equity personal to the complainant, and not merely the
legal right of which he is a beneficial owner. * Id.

3. BILL IN EQUITY-INFRINGEMENT-MULTIFARIOUSNESS.-A bill alleging infringe-
ment of several patents for different inventions must aver that the inventions
are capable of conjoint use, and are so used, else be liable to the objection of
multifariousness. Barney v. Peck & Snyder, 317.

BREACH OF CONTRACT. See Agreement to Assign; Contracts, 2, 4.

BURDEN OF PROOF.

See Interference, 5.

CANCELED CLAIMS. See Amendments, 4.

CANCELLATION OF CLAIMS. See Reissues, 18; Void Application.

CASES COMMENTED UPON. See Patentability, 13.

CAVEATS. See Rules of Practice,

CHANGE OF FORM. See Construction of Specifications and Patents, 5; Designs, 6;
Interferences, 2.

CHANGE OF INVENTION. See Particular Patents, 85 Wintergerst.

CHANGE OF MATERIAL. See Infringement, 16, 17; Interferences, 2; Patentability, 6.
CHANGE OF PROCESS. See Construction of Specifications and Patents, 5; Infringe-
ment, 3, 5, 16, 17; Interference, 14; Particular Patents: 27 Hammerschlag, 62
Richardson, Patentability, 2.

CHANGE OF STRUCTURE. See Construction of Specifications and Patents, 4; In-
fringement, 8, 12, 13; Interferences, 2; Particular Patents: 2 Backus, 16, 17, 18,
19 Doane and McKee, 31, 32, 33, 34, 35 Hoff heins, 41 Jackson, 43 Lemmon, 59
60 Richards, 63, 64 Richardson, 65 Schaffer, 79 Todd, 83, 84 Winchell, Patenta-
bility, 8, 10, 12; Reissues, 1, 11.

CHEMICAL EQUIVALENTS. See Infringement, 16, 17.

CHOICE OF ACTIONS. See Infringement, 15.

CHOSES IN ACTION. See Damages and Profits, 6.

CIRCUIT COURTS. See Jurisdiction of United States Courts; Jurisdiction to Grant a
Patent, 1; Practice in the Courts.

CITIZENSHIP. See Jurisdiction of United States Courts, 1, 2.

CLAIMS. See Amendments, 4, 6; Combinations, 1,5; Construction of Claims; Construction
of Specifications and Patents, 2, 6,7; Designs, 3.

CLASSIFICATION. See Applications, 4, 5.
COLLUSION. See Decree, 1; Injunction, 8.

COMBINATIONS. See Aggregation; Construction of Claims; Construction of Specifica-
tions and Patents, 4; Infringement, 2, 5, 8, 11, 20; Invention, 4; Particular Pat-
ents: 16, 17, 18, 19, Doane and McKee; 32, 34, 36, Hoffheins; 43, Lemman; 50,
Miles; 59, 60, Richards; 75, Snow; Patentability, 10, 12.

1. COMBINATIONS OF NEW AND OLD PARTS-NEW PARTS ADDED TO AN OLD COM-
BINATION TO PERFECT THE MACHINE PATENTABLE.-Combinations may be
made up of parts entirely new or entirely old, or part new and part old; but
if the parts when brought together so coact as to produce a new and bene-
ficial result, the party so bringing them together has made an invention,
and is entitled, if he makes claim thereto, to a patent therefor. If new ele-
ments are added to an imperfect combination, and if by the addition of
such new elements the combination is made perfect and operative, the person
who adds such elements is entitled to claim the new combination. Hall v.
Johnson, 39.

2. COMBINATION-AGGREGATION.-In a patentable combination of elements all
the parts must so enter into it that each qualifies every other. The combi-
nation must either form a new machine of a distinct character and function or
produce a result due to the joint and co-operating action of all the elements,
and is not the mere result of adding together the separate contributions.
(Pickering v. McCullough.) *Bradley & Hubbard Manufacturing Company v. The
Charles Parker Company, 397.

3. SAME-SAME.-Doubted, whether the devices for raising and lowering the lamp
and shade together in an extension lamp-fixture are strictly in combination
with the device for securing the shade to the ring, and preliminary injunc
tion denied for that reason. *Id.

COMBINATIONS-Continued.

4. COMBINATION OF OLD ELEMENTS-MUST CO-OPERATE.-All the component
parts must so enter into the combination of old elements that each qualifies
every other. If the elements of a combination act independently of each
other, or if one element acts independently of the others, it is an aggrega-
tion of parts, and not entitled to protection as a combination. *Clark Pomace
Holder Company v. Ferguson, 399.

5. SAME-NEW AND USEFUL RESULT.-It is indispensable to the validity of a
combination claim that the parts named therein should produce some new
and useful result. Unless this is the case, even though the elements act re-
ciprocatively and in combination, the requirements of the law are not satis-
fied. The combinations must be new; so must the result. *Id.

6. SAME-PRESUMPTION THAT ELEMENTS ARE OLD.-It is a presumption of law,
where a patent is claimed for combination simply, that all the elements of
the combination are old. *Id.

7. COMBINATION.-Considered as a generic term, a combination may be defined to
be a co-ordination of individual functions, so as to constitute a common fanc-
tion. Co-ordination necessarily implies some modification of the individual
function of each part as it existed prior to the combination. Ex parte Mar-
shall, 97.

8. PATENTABLE COMBINATION.-To be patentable a combination must conform to
the requirements of the definition given above, and must also contain two
other elements-namely, novelty and utility. Id.

COMMISSIONER OF PATENTS. See Amendments, 2, 5, 7; Disclaimers, 7; Injunction,
5; Interferences, 3, 6; Licenses, 3; Priority of Invention, 3; Public Use, 2, 4 ;
Trade-Marks, 7, 8; Void Patents, 1, 2.

COMMON USE. See Invention, 6; Public Use.

COMPARISON OF PATENTS. See Reissues, 12.

COMPOUNDS. See Infringement, 16, 17.

CONCEPTION OF INVENTION. See Abandoned Experiments, 1; Priority of Inven-
tion, 9, 10.

CONFLICTING APPLICATIONS. Soe Applications, 2, 3; Interferences, 1, 2, 5, 13, 14;
Priority of Invention, 2, 4, 5, 6, 7, 8,

CONSENT OF INVENTOR TO USE OF INVENTION. See Constitutional Protection
of Inventors; Infringement, 9; Injunction, 11; Licenses, 3; Patentability, 4;
Public Use, 8, 10.

CONSTITUTIONAL PROTECTION OF INVENTIONS.

1. CONSTITUTIONAL PROTECTION OF INVENTIONS-POWER OF CONGRESS.-The
language of the Constitution confers upon Congress the power of "securing"
"to inventors the exclusive right to their discoveries." It is not empowered
to grant to inventors a favor, but to secure to them a right; and the term
"to secure a right" by no possible implication carries with it the opposite
power of destroying the right, in whole or in part, by appropriating it to
the purposes of the Government without complying with that other condition
of the Constitution, the making of "just compensation." *McKeever v. The
United States, 232.

2. INVENTOR'S EXCLUSIVE RIGHT.-Neither does the term "the exclusive right"
admit of an implication that, with regard to such patentable articles as the
Government may need, the right shall not be exclusive. *Id.

3. SAME WHEN SECURED BY LETTERS PATENT BECOMES PROPERTY-GOVERN-
MENT CANNOT USE WITHOUT LICENSE OR MAKING COMPENSATION.-Such
right, when properly secured in the manner provided by law, becomes prop-
erty in the eye of the law, and the Government cannot make use of the im-
provement any more than a private individual without license of the inventor
or making him compensation.

*Id.

CONSTRUCTION OF CLAIMS. See Combinations, 5; Construction of Specifications
and Patents, 2, 4, 6, 7: Disclaimers; Invention, 3.

1. CONSTRUCTION OF CLAIM-COMBINATION.-Claim for a combination in form
construed as a claim for an article of manufacture. *Duff et al. v. Calkins,
432.
CONSTRUCTION OF RULES. See Amendments, 8; Applications, 2, 3; Designs, 7;
Interferences, 1, 5, 6, 7, 8, 9; Practice in the Patent Office; Priority of Invention,
1, 13; Void Application.

CONSTRUCTION OF SPECIFICATIONS AND PATENTS. See Anticipation; Com-
binations; Disclaimers; Infringement, 3, 4, 5, 8, 11, 12, 13, 16, 17, 20; Invalid
Patents; Invention; Oath of Inventor; Particular Patents; Reissues.

1. DEVIATION.—In reducing his patent to practical application a patentee is not
held to strictly and entirely follow the mere mechanical device shown in his
drawings, but he may deviate so long as he does not violate the principle in-
volved in his patent. Weir v. North Chicago Rolling Mill Company, 135.

2. How CONSTRUED.-A patent claim must be construed in the light of the speci-
ficatious, and where the specifications describe the entire article parts of the
description cannot be separately considered to show an infringement of one
of the parts. *Evans v. Kelly et al., 138.

3. INFRINGEMENT.-Construing the patent according to the requirements of the
Office acquiesced in by the patentee, Held, That the defendant did not in-
fringe, because his frame has not the peculiar construction which the Exam-
iner declared was the only ground for issuing the patent. *New York Belting
and Packing Company et al. v. Sibley, 227.

4. CLAIM-INFRINGEMENT.—The new thing that plaintiff invented was the pivoted
bar carrying the knife upon one end, and with its ruotions controlled by the
revolutions of the other end within the hollow pattern; but to make this
work effectively he combined with it certain old and well-known mechanical
devices, such as the feed-screw, sliding fulcrum-block, slideways, and gear-
ing-wheels, by which the fulcrum-block and pivoted bar were to be revolved,
and the claim in his patent should not be construed as a mere combination
claim of old elements, but as a claim for the pivoted bar, which was a new ele-
ment brought into the art by him and made efficient when used with these
older devices, and in this view of the claim his invention is infringed by the
machine of defendants. *Aram et al. v. Moline Wagon Company, 334.

5. PERMISSIBLE MODIFICATIONS IN CONSTRUCTING PATENTED ARTICLES.-A pat-
entee is not limited to the literal import of his description of his invention,
but in construction he may make such modifications of it as do not involve
a departure from its principle or a material change in its mode of operation.
*Grier v. Castle, 404.

6. CONSTRUCTION OF PATENTS-CLAIMS MAY RESTRICT.-But a patentee may cer-
tainly restrict the comprehensiveness of his patent rights by the tenor of his
claims. Id.

7. CONSTRUCTION OF A PATENT-IMPERFECT CLAIMS.-It is the office of the claims
of a patent to reveal to the world what the characteristics of the invention
are for which the patentes desires protection. If he fail to state these fully
and correctly, he may remedy the omission by a surrender and reissue, but
until then the court has no power to give him relief against infringers. *The
Delaware Coal and Ice Company v. Packer, 411.

CONSTRUCTION OF STATUTES. See Agreement to Assign, 1; Appeals, 1; 48-
signments, 5; Designs, 1; Divisional Application, 1; Evidence, 2; Foreign Pat-
ents, 1, 4; Limitation of United States Patents by Foreign Patents Previously Ob-
taiued; Notice to the Public of Patented Articles, 1, 2; Patentability, 7; Prior
Publications; Public Use, 10; Reissues, 4, 18, 19; State Statutes.

CONSTRUCTION OF STATUTES-Continued.

1. STATUTES Relating to Foreign Patents.-Statutes with regard to the effect
of a foreign patent upon a United States patent recited. Cornley v. Marck-
wald, 349.

CONTEMPT OF COURT. See Infringement, 7.

CONTESTED CASES. See Abandonment, 1; Interferences; Priority of Invention, 1, 2,
3, 4, 5, 8, 11, 13; Public Use, 2, 4, 5, 6.

CONTRACTS. See Jurisdiction, 1; Jurisdiction of United States Courts, 1, 2; Liability,
1; Practice in the Courts, 5; Title to Patent, 2.

1. LICENSEE-STIPULATIONS IN THE CONTRACT-QUESTION OF INFRINGEMENT.—A
licensee is at liberty to contest the question whether the articles made by
him embody the invention or any material part thereof, and a stipulation to
the contrary in the contract is of no effect. * White et al. v. Lee, 245.

2. PLEA OF LICENSE AFTER REVOCATION FOR BREACH of ContracT.-A defendant
corporation having violated the conditions of a contract under which a license
to manufacture and sell a patented device was granted, and the license hav-
ing therefore been revoked by the licenser under a provision of the contract,
in a suit for infringement against such corporation after the revocation, a
plea setting up the license was overruled. Wooster v. The Singer Manufactur-
ing Company, 309.

3. CONTRACTS-Decree for PERFORMANCE OF.-Courts of equity never decree the
specific performance of a contract where the decree would be a vain or im-
perfect one. Werden et al. v. Graham, 485.

4. SAME-SAME-DELAY-NON-FULFILLMENT.-A court of equity will not decree
specific performance of a contract providing for the assignment of an interest
in letters patent by one party and the manufacture and sale of the patented
machines by the other after the lapse of a long time, and where the party
seeking the assignment has failed to carry out his agreements as to manu-
facturing and selling. Id.

5. CONTRACTS-ARBITRATION--SUITS AT LAW.-Where a contract stipulates that
an arbitration is to be a condition precedent to the right to sue upon the con-
tract, or if this may be inferred upon construction, no suit can be maintained
unless the plaintiff has made all reasonable efforts to comply with the condi-
tion. * Perkins v. The United States Electric Light Company, 322.

6. CONTRACT-Correction of Mistake.—A written instrument having imperfectly
expressed the intention of the parties, but the parties having acted accord-
ing to their actual agreement, and over two years having elapsed, the appel-
lant could only have the mutual mistake in the language of the instrument
corrected, and it would be inequitable to absolve him from the obligation of
his contract. * Leaver v. Dennett et al., 449.

CONVEYANCE. See Agreement to Assign; Assignments; Contracts; Damages and
Profits, 4, 5; Licenses, 5, 6.

CO-ORDINATION. See Combinations, 7.)

CORPORATIONS.

See Parties to Suit, 1; Service of Process.

COSTS OF SUIT. See Disclaimer, 1; Practice in the Courts, 4.

COURT OF CLAIMS. See Jurisdiction, 1.

COURTS OF EQUITY. See Agreement to Assign, 1; Contracts, 3, 4: Injunction; Par-
ties to Suit, 2; Title to Patent, 2; Trade-Marks, 4.

CROSS-EXAMINATIONS. See Public Use, 1, 2.

DAMAGES AND PROFITS. See Abandonment, 3; Agreement to Assign, 3; Constitutional
Protection of Inventions; Infringements, 1, 2, 15; Injunction, 4, 13, 14; Juris-
diction of United States Courts, 1, 2; Liability, 1; Licenses, 4; Parties to Suit, 1;
Practice in the Courts, 3, 4, 5.