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Full text of "The American and English encyclopedia of law"

Cornell University 
Library 



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the Cornell University Library. 

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the United States on the use of the text. 



http://www.archive.org/details/cu31924061132282 



CORNELL UNIVERSITY LlBHAfiV 




3 1924 061 132 282 



American and English 
Railroad Cases. 

A complete collection of all the railroad law as decided by the 
American, English and Canadian courts of last resort. 

Elaborate notes to the more important cases. As a means of giv- 
ing the working lawyer a full collection of all the cases on the sub- 
jects treated, together with able and judicious criticism upon the 
points presented, they are simply invaluable. 



American and English 
Corporation Cases. 

This series presents a full collection of the cases in all the courts 
of last resort, both in America and England, on the law of private 
, and municipal corporation^ other than railroad companies, 

\.— SCOPE. Among the topics treated of ivHl be the following: 
Private Corporations. — Agency ., Assessments^ Building Asso- 
ciatio7is^ Dissolution of Corporations., Dividends and Karn~ 
ings., Ecclesiastical and Religious Corporations, Elections^ 
Mandamus, Officers^ Organization, Powers., Stock and Stock- 
holders, Taxation, 

Municipal Cq-rfoh.a.'tioths.— Assessments , Bonds^ Poioers, Ordi- 
nances^ Poor Laws., Streets, Taxes., Intoxicating Liquors, In- 
juries to Person and Property, etc., etc. 

2, — NOTES. The annotations are a sp$cial feature, being 'Oery full 
and exhaustive. 



These works are issued in monthly Parts, each Part containing 
* not less than 224 pages. Three Parts make a complete volume. 
When Part 3 is published, the Parts are returned to the publisher 
by the subscriber, and are bound in best law sheep and returned by 
mail WITHOUT charge for binding. The subscription price is 
$4.50 per volume, including Notes of Cases. 

EDWARD THOiVLPSOK CO,, PL[blislie]rs, 

Nortiiport, Long Island, N. Y. 



THE 



American and English 



ENCYCLOPAEDIA 



OF 



LAW. 



COMPILED UNDER THE EDITORIAL SUPERVISION OV 

JOHN HOUSTON MERRILL, 

Late Editor of the American and English Railroad Cases and the American and English 

Corporation Cases. 



VOLUME XVIII. 




NORTHPORT, LONG IStAND, N. Y.: 

EDWARD THOMPSON COMPANY, Law Publishers. 

i8q2. 




mM 



Copyright, 1893 
By EDWARD THOMPSON CO.' 



MADE BY THB 

WERNER PRINTING * LITHO. CO. 

AKRON, OHIO. 



PARTIAL LIST OF CONTRIBUTORS, VOL. XVIII. 



Party Wall, Elmer G. Sammis, of the New York 

City Bar. 
Patent Latv, . Mark Wilks Collet, of the Phila- 
delphia Bar. 
Payment, Everett W. Pattisok, of the St. Louis 

Bar. 
Pedigree Thomas J. Michie, of the Editorial 

Staflf Am. & Eng. Encyc, of Law. 
Penalties, '. D. M. Mickey, of the Editorial Staff Am. 

& Eng. Encyc. of Law. 
Pensions, D. M. Mickey, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 
Perpetuities, Philip H. Goepp, of the Editorial Staff 

Am. & Eng.- Encyc. of Law. 
Perpetuities (Accumulations), . . J. Claude Bedford, of the Philadel- 
phia Bar. 
Personal Property, ...... John H. Ingham, of the Philadelphia 

Bar. 
Pe-uis in Churches, . . .... Thomas J. Michie, of the Editorial 

Staff Am. & Eng. Encyc. of Law, 
Pilots, D. M. Mickey, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 
Pleading, George Wharton Pepper, of the 

Philadelphia Bar. 
Pledge George F. Warren, of the New York 

City Bar. 
Police Power, . H. Dent Minor, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 
Poor and Poor Laivs, D. M. Mickey, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 
Poor Debtor, William M. McInnes, of the Boston 

Bar. 
Postal Laws, H. Dent Minor, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 
Powers . . Everett W. Pattison, of the St. 

Louis Bar. 
Words and Phrases, .... . Thomas J. Michie, of the Editorial Staff 

Am. & Eng. Encyc. of Law. 



TABLE OF TITLES AND DEFINITIONS. 



See index for numerous sub-titles and definitions contained in the notes. 



PART PAYMENTS. See Frauds, Stat- 
ute of ; Limitations of Actions ; 
Payment 

PART PERFORMANCE. See Frauds, 
Statvite of 

Party, i 

Party Aggrieved, 2 

PARTY WALLS, 3 

Pass, 17 

Pass Books, 18 

FASSENOERS. See Carriers of Passen- 
gers ; Sleeping Cars; Tickets and 
Fares 

Passport, 18 

PATENT AMBIGUITY. See Ambiguity 

PATENT FOR LAND. See Public Land 

PATENT LAW, 20 

PATERNITY. See Bastardy ; Children ; 
Illegitimate Children ; Parent and 
Child 

Patrimony, 146 

Patronage, 146 

Patronize, 146 

PAUPER. See Poor and Poor Laws 

PAWN, PAWNBROKER. See Bailment ; 
Pledge and Collateral Security 

Pay, Payable, Paid, 146 

PAYMENT, 148 

PAYMENT INTO COURT. See Tender 

Peace, 255 

Peculation, 255 

Pecuniary, 25^ 

PEDIGREE, 257 

Pedis Possessio, 268 

PEDDLER. See Hawkers and Peddlers 

Peer, 268 

Penal, 268 

PENALTIES, 269 

PENCIL. See Writing 

Pending 283 

PENETRATION. See Assault; Rape; 
Seduction 

PENITENTIARY. See Prison 

PENSIONS, 283 

Pent Road, 296 



People, 296 

Per, 297 

Perambulation, 298 

Perception, 298 

Perch, 298 

Perfect, 299 

Perfecting, 299 

Perform, 299 

Performance, 299 

PERILS OF THE SEA. See Marine In- 
surance; Shipping; Bill of Lading 

Period, 299 

Periodical, 300 

PERISHABLE GOODS. See Perishable 
Property 

PERISHABLE PROPERTY. See Carriers 
of Goods; Legacies and Devises; 
SheriiT's Sales ; Supplementary Pro- 
ceedings 

PERJURY, 300 

Permanent, 333 

Permit, 334 

Permissive, 334 

Perpetration, 334 

PERPETUATION OF TESTIMONY. See 
Bill to Perpetuate Testimony ; Bill 
to Take Testimony De Bene Esse ; 
Depositions ; Witnesses 

PERPETUITIES, 335 

Person, 403 

Personal, 403 

PERSONAL ANNUITIES. See Legacies 
and Devises 

Person Aggrieved, 408 

PERSONAL INJURIES. See Comparative 
Negligence; Contributory Negli- 
gence; Damages; Death; Fellow 
Servants ; Livery Stable Keepers ; 
Master and Servant ; Negligence 

PERSONAL LIBERTY. See Constitu- 
tional Law; Extradition; Habeas 
Corpus ; Imprisonment ; Imprison- 
ment for Debt; Liberty ; Police 
Power 

PERSONAL PROPERTY, 408 



TABLE OF TITLES AND DEFINITIONS. 



PERSONATION. See False Personation 

Persuade. 412 

Pertaining, 412 ' 

Perverse Verdict, 412 

Petition, 412 

PETROLEUM. See Oil 

Pettifogging, 413 

PEWS, 413 

PHARMACY. See Drugs; Druggist 

PHOTOGRAPHS, 423 

Physical, 427 

Physically, 427. 

PHYSICIANS AND SURGEONS, 427 

Pictures, 442 

Pier, 443 

Pilfer, 443 

PILOTS, 443 

Pimp, 4S7 

PIN MONEY. See Husband and Wife 

PIPE LINES, 457 

PIRACY, 461 

Pirate, 462 

Pistol Cartridges, 462 

Place, 462 

PLACER CLAIM. See Mines and Min- 
ing Claims 

Plain, 461; 

PLANK ROAD. See Turnpikes 

Plant, 465 

Plantation, 465 

Plastering, 466 

Plat, 466 

Plate, 466 

PLAY. See Gaming 

PLEADING, 467 

PLEASURE CARRIAGE. See Carriage; 
Bicycle 

PLEDGE AND COLLATERAL SECURITY, 

585 
Plunder, 735 

Ply. 73S 
Plying. 735 
Points, 735 

Points and Authorities, 736 
POISONS AND POISONING, 736 
POLICE COURTS. See Justice of the 
Peace ; Municipal Courts 



Police Justice or Magistrate, 739 

POLICE POWER, 739 

Political, 765 

Political Questions, 765 

PoUtics, 766 

POLL. See Criminal Procedure ; 
Deeds; Elections; Mandamus; Tax- 
ation 

POLYGAMY. See Bigamy 

PONDS. See Lakes and Ponds 

Pool, 766 

POOR AND POOR LAWS, 766 

POOR DEBTORS, 823 

POOR RELATIONS. See Relations 

Popular, 837 

Porch, Portico, 837 

Port, 837 

PORT OF DISCHARGE. See Marine In- 
surance; Discharge 

PORT (HOME). See Maritime Liens; 
Home 

PORTICO. See Porch. 

Portion, 839 

Portrait, 839 

Position, 839 

Positive, 839 

POSSE COMITATUS. See Sheriff 

Possessed, 840 

Possession, 840 

Possible, 842 

Possibility, 842 

Post, 843 

POSTAL LAWS, 843 

Posting, 870 

Post-Notes, 870 

Posterity, 870 

POSTHUMOUS CHILD. See Leave ; Stat- 
utes of Descent and Distribution 

POST-NUPTIAL SETTLEMENTS. See 
Marriage Settlements 

POST OBIT CONTRACT, 871 

Potentially, 871 

Pound, 871 

POWER OF ATTORNEY, 871 

POWER OF SALE MORTGAGES. See 
Trust Deeds 

POWERS, 877 



THE 



AMERICAN AND ENGLISH 

ENCYCLOPEDIA OF LAW. 



PART PAYMENTS.— See Frauds, Statute of, vol. 8, p. 736 ; 
Limitations of Actions, vol. 13, p. 748 ; Payment. 

PART PERFORMANCE.— See Frauds, Statute of, vol. 8, 
P- 738. 

PARTY. — A person concerned or having or taking part in any 
affair, matter, transaction, or proceeding, considered individually ; 
also a side or part, composed of one or more individuals.^ — BUR- 
RILL. 



1. Where a deed is executed by the at- 
torney of the grantor, or officer or 
agent of a corporation, lawfully author- 
ized, he is the party executing the same 
who may make tfie acknowledgment. 
Lovett V. Steam Sawmill Assoc, 6 
Paige (N. Y.) 54. 

A statute enacting that the holder of 
any negotiable note or bill may insti- 
tute one suit against the whole or any 
number of the parties liable to such 
holder, but shall not institute more 
than one suit on such note or bill, 
should be construed as embracing all 
the makers as one party, all the en- 
dorsers as another, etc.; and, therefore, 
a suit and judgment upon such joint 
note or bill against one maker, or one 
endorsee, etc., will constitute a bar to 
any other suit against any other maker 
or endorser, etc. Archer v. Heiman, 
21 Ind. 29. 

A statute declaring every contract 
for the sale of lands void, unless sub- 
scribed by the party by whom such 
sale is to be made, or by the agent of 
such party lawfully authorized, requires 
signatures of all the vendors, when 
more than one unite in the contract of 
sale. Snyder v. Neefus, e,-x Barb. (N. 
Y.)63. .5J ^ 

18 C. of L.— I 



In article 10 of the treaty between 
the United States and Great Britain, 
August 9, 1842 (8 St. at Large, 576), 
providing that, on extradition, the 
expense of apprehension and delivery 
shall be borne by the "party who 
makes the requisition, and receives the 
fugitive," the word "party" refers to 
the contracting parties to the treaty, 
and has no reference to any question 
which may arise between the govern- 
ment which receives the fugitive and 
its officers or citizens. People v. 
Board of Supervisors, 8 N. Y. Supp. 

752- 

A Kentucky statute provides that in 
case of schism or division of the 
church, each farty is tO' have the use 
of the church and appurtenances a part 
of the time in proportion to its mem- 
bers. Held, that where a number of 
members of a church congregation, 
although they constituted a majority 
thereof, dissolved their connection with 
the church of which they were mem- 
bers, and with the entire ecclesiastical 
body of which it is a member, and 
united with another and distant relig- 
ious organization, they cannot be re- 
garded as a "party" within the meaning 
of the statute. McKinney v. Griggs, 5 



Sefinition. 



PARTY A GGRIE VED. 



Definition. 



PARTY AGGRIEVED.— (See also Aggrieved, vol. i, p. 449 ; Ap- 
peal, vol. I, p. 616 ; Person ; New Trial and other titles under 
which the term is likely to occur.) The expression "party ag- 
grieved" is not a technical expression ; the words are ordinary Eng- 
lish words, which are to have the ordinary meaning put upon 
them.* 



Bush (Ky.) 401; s. c, 96^ Am. Dec. 
360. 

Party or Privy. — Though a covenant 
that the covenanter has not done, per- 
mitted, or suffered anything preventing 
him from conveying, is not broken by 
his having assented to what he could 
not prevent, yet if the words "or been 
party or privy to" were added, there 
would be a breach in such a case (Hob- 
son V. Middleton, 6 B. & C. 295; 9 D. 
& R. 249. Vh. Elph, 490; Dart, 885, 
886; Sug. V. & P. 603, 604). Vh. 
Clifford V. Hoare, 43 L. J. D. P. 225; 
L. R., 9 C. P. 362; Permit. 

Party Read as Person. — "Signed by 
the party to be charged therewith," §§ 
4, 17, St. of Frauds; — "Party" there is 
not to be construed party as to a deed, 
but person in general (Sug. V. & P. 
129, citing 3 Atk. 503). 

"Party" read "Person" in Barlow v. 
Osborne, 6 H. L. Ca. 556. 

See also Re Quartz Hill Gold Min. 
Co., 21 Ch. D 642; East London 
Waterworks Company x>. Vestry of St. 
Matthew Bethnal Green, 17 Q^ B. D. 
484., 

Boards for the equalization of taxes 
are not judicial tribunals and a nomen- 
clature used in acts relating to them, 
though sometimes such as is used in 
reference to proceedings in courts is 
not there used in its technical legal 
sense. For instance, the word "party" 
as used in the Arkansas act, is used in 
its popular sense of "person" and not 
in its technical sense "party to a suit." 
Prairie Co. v. Matthews, 46 Ark, 383. 
See also Pulaski Co. Equalization 
Board Cases, 49 Ark. 518. See also 
Person. 

1. Robinson v. Currey, 7 Q; B. Div. 
470. 

Section 1294 Code of Civil Proced- 
ure of New York, gives the right of 
appeal to the "party aggrieved." It was 
held, in Watts Campbell Co. i;. Yueng- 
ling, 3 N. Y. Supp. 868, that, where 
judgment was rendered by request of 
defendant's attorney, defendant is not 
aggrieved, within the meaning of the 
statute. 

The statute authorizing "the party 



aggrieved" to prosecute an action to 
set aside a judgment obtained by means 
of the fraud of the "prevailing party," 
held, not to authorize one not a party 
to the action in which such judgment 
was recovered, although he was directly 
interested in the results, to maintain 
such statutory action. Stewart v. 
Duncan, 40'Minn. 410. 

An Indiana act provides that every 
telegraph company having lines within 
the State, etc., shall receive, dispatch, 
and transmit the same, with impartial- 
ity, in the order in which they are re- 
ceived, and that any person contraven- 
ing the act shall be liable to the party 
aggrieved, to the penalty of $100. 
Held, that the act was penal in its 
nature and must be construed strictly, 
and that the sender alone is the party 
aggrieved within the meaning of the 
statute. Hadley v. Western Union 
Tel. Co., 115 Ind. 191; s. c, 21 Am. & 
Eng. Corp. Cas. 72. 

A Minnesota statute provides that 
"a party aggrieved" may appeal from 
an order appointing an administrator. 
"This does not include a mere debtor 
of the estate. It refers to one, who as 
heir, devisee, legatee, or creditor, has 
what may be called a legal interest in 
the assets of the estate and their due 
administration." In Re Hardy, 35 
Minn. 193. 

In proceedings to vacate an assess- 
ment for a street improvement, it ap- 
peared that the partitioner purchased 
the land assessed after the work had 
been commenced and before the assess- 
ment had been laid. The land was 
conveyed to him, subject to any assess- 
ment to be made for the work, and the 
payment of the assessment was made to 
the principal consideration for the con- 
veyance. Held^ that it could not be 
said, as matter of law, that the peti- 
tioner was not a "party aggrieved" 
within the meaning of the statute; that 
to effect that result it is necessary that it 
should afBrmatively appear that the legal 
owner cannot in any respect be injured 
by the assessment; that the conveyance 
imposed no liability upon the grantee 
beyond the payment of any legal assess- 



fDOpBlB, 



PARTY-WALLS. 



Definition. 



PARTY-WALLS.— (See also EASEMENTS, vol. 6, p. 

ERAL AND SUBJACE"NT SUPPORT, vol. 12, p. 933.) 



139; 



Lat- 



hi 



Definition, 3. 
How Created, 4. 

(a) Party Wall Agreements, 1,. 

(b) Implied Grant, 7. 

(c) Prescriftion, 8. 
\d) Statutes, 8. 

When a Party Wall Ceases to be 
Such, 9. 



IV. Rights, Duties and Liabilities of 
Adjoining Owners, 10. 

(a) General Statement, 10. 
(i) Erection and Use, 11. 
(c) Alteration, 11. 
{d) Repair, 13. 
(e) Contribution, 13. 
v.. Remedies, 16. 
VI. Practice and Procedure, 17. 



L Definition. — A party-wall, in the ordinary meaning of the 
term, is a wall between two adjoining owners, built at common 
expense and used for common advantage.^ The term, however, 
may be used in four different senses : First, a wall of which the 
two adjoining owners are tenants in common ;* second, a wall di- 
vided longitudinally into two strips, one belonging to each of the 
neighboring owners -^ third, a wall which belongs entirely to one 
of the adjoining owners, but is subject to an easement or right in 
the other to have it maintained as a dividing wall between the 
two tenements ;*^o?^rz'/2, a wall divided longitudinally into two 



ment that might be made. Matter of 
Pennie, 108 N. Y. 365. 

1. Abb. L, Diet. 252; Hiatt •». Morris, 
10 Ohio St. 523; KoeingT/. Haddix, 21 
111. App. 53; Hammann v. Jordan, 9 
N. Y. Supp. 423. 

One of two adjoining owners of land 
in a city, who erects a wall over the 
boundary line under the ordinances of 
the city, respecting party-walls, cannot 
claim the benefit of such wall as a par- 
ty-wall, unless it be built of the width 
prescribed by the ordinance, and also 
be solid and free from any openings. 
Traute v. White (N. J.), 19 Atl. Rep. 
196. 

A dividing wall between two build- 
ings in the city of Philadelphia owned 
by different parties, the foundation of 
which rest partly upon the ground of 
each is a party-wall. It is immaterial 
that the foundation is not equally laid 
upon the lot of each part3', and thatthe 
wall itself, above the foundation, is 
wholly within the lot of one of the ad- 
joining owners. Western Nat. Banks 
App. 102 Pa. St. 171; Gordon v. Milpe, 
10 Phila. (Pa.) 15. CompareSe3.veT v. 
Nutter, 10 Phila. (Pa.) 345. 

2. Montgomery v. Masonic Hall, 70 
Ga. 38; Brown v. Werner, 40 Md. 15; 
Orman v. Day, 5 Fla. 392; Sherred v. 



Cisco, 4Sand£. CN. Y.) 480; Regina v. 
Copp, 17 Ont. Reps. (Can.) 738; Cubitt 
V. Porter, 8 Barn. & C. 257; Wiltshire 
V. Sidford, 8 Barn. &, C. "259; Watson 
V. Gray, 14 Ch. Div. 192; Jones v. 
Read, 10 Is. R. C. L. 315; Standard 
Band of B. S. A. v. Stokes, 9 Ch. D. 68; 
47 L.J. Ch. 554; 38 L. T. 672; 26 W. 
R. 492. 

3. In this case the owners are not ten- 
ants in common, even if the wall was 
erected at their joint expense; Matts v. 
Hawkins, 5 Taunt. 20; but where there 
has been a common user of the wall 
erected at the common expense, that, 
in the absence of any other evidence, is 
sufficient evidence for a jury to find 
that the wall is held by the two parties 
as tenants in common; Cubitt v. Porter, 
8 Barn. & C. 2i;7; Standard Bank v. 
Stokes, 2Q Ch. D. 68. 

4. Rogers v. Sinsheimer. 50 N. Y. 
646. 

The term is so used in the English 
Metropolitan Building Act. 18 & 19 V. 
ch. 122, § 3; Knight t". Pursell, i Ch. i D. 
412. Such a wall may be a party-wall 
for some part of its height, and above 
that height the separate property of one 
of the adjoining owners; Weston v. 
Arnold, 43 L. J. Ch. 123; 8 Ch. 1084; 
and in same way such a wall may be 



How Created. 



PARTY-WALLS. 



How Created. 



moieties, each moiety being subject to a cross-easement in favor 
of the owner of the other moiety.^ 

II. How Created.— («) Party Wall Agreements. — A wall 
may become a party wall by contract express or implied, by 
prescription or by statute.^ 



laterally a party-wall or such distance 
as it is used by both owners and no fur- 
ther; Knight f. Pursell, ii Ch. D. 412. 
1. "Land covered by a party wall re- 
mains the several property of the 
owner of each half, but the title of each 
owner is qualified by the easement to 
which the other is entitled of support- 
ing his building by means of the half of 
the wall belonging to his neighbor;" 
Ingals f . Plamondon e^ o/. 75 111. 118. 
Gibson v. Holden, 115 111. 199; Wilcox 
V. Danforth, 5 111. App. 378; Nash v. 
Kemp, 49 How. (N. Y.) Pr. 522; Sher- 
red V. Cisco, 4 Sandf. (N. Y.) 4S0; 
Partridge v. Gilbert, 15 N. Y. 601; Hen- 
dricks V. Stark, 37 N. Y. 106; s. c. 93 
Am. Dec. 549; Bropks v. Curtis, 50 N. 
Y. 639; s. c. 10 Am. Rep. 545; Bloch v. 
Isham, 28 Ind. 37, s. c. 92 Am. Dec. 
287; Hoffman v. Kuhn, 57 Miss. 746; 
34 Am. Reps. 491; Burton v. MoflBt, 3 
Or. 29; Graves v. Smith, (Ala.) 6 So. 
Rep. 30S; Sanders v. Martin, 2 Lea 
(Tenn.) 213; s. u. 31 Am. Rep. 598; An- 
drae v. Haseltine, 58 Wis. 395; s. c. 46 
Am. Rep. 635. For a reference to the 
English cases see 5 Fisher Dig. 990 & 
seq. 

Part Only May be Party Wall. — A deed 
convej'ed to M. certain premises, ex- 
tending to the west line of the west wall 
of a brick building upoii the premises; 
so that it included the whole of the west 
wall; with the reservation that the own- 
ers of the ground on both sides should 
have the mutual use of the present par- 
tition wall. At that time there was a 
small pne-story brick building on the 
lot adjoining on the west. Subsequently 
M.'s grantors conveyed this other lot to 
P., who tore down this small building, 
and erected one much higher, and ex- 
tending further along on M.'s wall. 
Held, that the reservation in the deed 
to M. extended only to such portions of 
the west wall as were then used as a 
partition between the buildings, and 
that P. had no right to the mutual use 
of any other, or greater part of this 
west wall. Price v. McConnell, 27 111. 
255. See also, Weston v. Arnold, 8 L. 
R. Ch. 1084; 43 L. J. Ch. 123; 22 W. R. 
284.. 

Not an Incumbrance. — It is true that 



the erection of a party-wall creates a 
communitj' of interest between neigh- 
boring proprietors, but there is no just 
sense in which the reciprocal easement 
for its preservation can be deemed a le- 
gal incumbrance upon the property. 
The benefit thus secured to each is not 
converted into a burden by the mere 
fact tliat it is mutual and not exclusive. 
Hendrick v. Stark, 37 N. Y. 106; s. c. 
93 Am. Dec. 549; Butterworth v. Craw- 
ford, 3 Daly (N. Y.) 57; Mohr v. Parm- 
elee, 43 N. Y. Super. Ct, 320 {Compare 
Giles f. Dugro, i Duer33i); Bertrams. 
Curtis, 31 Iowa 46; Weld v. Nichols, 17 
Pick. (Mass.) 538. 

A Party Wall a Dead or Solid Wall. — 
Windows. — Without an agreement be- 
tween the owners of property allowing 
them, windows have no proper place in 
a party wall. This-is evident from the 
uses and objects of party walls, with 
which use windows are inconsistent. 
St. John V. Sweeney, 59 How. Pr. (N. 
Y.) 175; Van Syckel v. Tryon, 6 Phila. 
(Pa.) 401 ; Rondet v. Bedell, i Phila. (Pa.) 
366; Milne's App. 81 Pa. St. 54; VoU- 
mer's App. 6i Pa. St. 118; Sullivan v. 
Graflford, 35 Iowa 531; Danenhauer v. 
Devine, 61 Tex. 480; Graves v. Smith, 
(Ala.) 6 So. Rep. 308; Weston v. Ar- 
nold, L. R. 8 Ch. App. 1084 s. c, 7 Eng. 
Rep. 572. Comfare Pierce v. Lemon, 
2 Houst. (Del.) 519. See Hart v. Ku- 
cher, 5 Serg. & R. (Pa.) i. 

Flues in Wall. — Where one owner of 
a party wall desired to close a flue in 
said wall which was necessary to the 
beneficial use of the other party, Held, 
that as the easement was apparent at 
the time the party seeking to close the 
flue obtained her interest in the wall, 
she could not interfere with the use of 
the flue by the other party. Ingalls v. 
Plamondon, 75 111. 118. 

2. List V. Hornbrook, 2 W. Va. 340; 
Quinn v. Morse, 130 Mass. 317. 

Party Wall Erected by Tenants. — 
When a partj' Vv'all was erected by ten- 
ants for years, Held, that though the 
wall might be a party wall as between 
the tenants and adjoining owner, it 
would not bind the reversioner nor his 
grantee. Webster v. Stevens, s Duer 
(N. Y.). S53- 



4 



How Created. 



PARTY-WALLS. 



How Created. 



The owners of adjoining lots, especially in large cities, frequent- 
ly enter into an agreement, which may or may not be under seal, 
whereby it is agreed that in the erection of a building either party 
may place the wall of his building so that it will stand partly on 
each lot, and that the other party will, when he uses the wall, 
contribute, proportionately to the cost of erection. An agree- 
ment so made constitutes the wall, when erected and used by the 
adjoining owners, a party-wall.^ 



1. The interest of the licensee in this 
wall, after it has been built, cannot be 
annulled by any revocation on the part 
of either the licensor or his grantee 
■with notice. Wickenham v. Orr, 9 
Iowa (i With.) 253. 

"PlaintiflF and defendant, owning ad- 
joining lots, entered into a parol agree- 
ment to jointly build a party wall, and 
in pursuance thereof built a portion of 
the wall, when defendant refused to pro- 
ceed further. Whereupon the plaintiff, 
who had prepared materials and 
planned a building in reliance upon the 
performance, of the agreement, pro- 
ceeded to complete the wall after due 
notice to the defendant. Held, that the 
parol contract having been partly exe- 
cuted, the parties were estopped from 
denying the existence of the easement 
thereby created. Rindge v. Baker, 57 
N. Y. 209, s. c. 15 Am. Reps. 475. 

B. and M. agreed orally that B. who 
was about to erect a house should put 
the division wall one-half on the lot of 
each. The line was not defined but B. 
began to build on a supposed line. 
Subsequently a written agreement was 
entered into by the parties, embodying 
the terms of the oral agreement. 
When M. came to build it was found 
that the foundation was four inches too 
far over on his land. M. cut off the 
four inches causing injury to B. Held, 
that M. was liable for the damage be- 
cause he had allowed B. to go on in 
good faith. Miller v. Brown, 33 Ohio 
St. 547. 

Constructions of Party Wall Agree- 
ments. — If one agreed to build a party 
wall, resting half upon his own land 
and half upon the land of an adjoining 
land owner, furnishing the material 
and labor therefor, and such adjoining 
land owner agreed that, upon its com- 
pletion, he would pay one-half of the 
cost thereof, and should own a joint 
interest therein, and have the right to 
use it wheneveir he desired to build 
upon his own land; and as the land of 
the adjoining owner did not extend as 



far north as the wall, it was agreed that 
the party erecting it should convey to 
him the small strip of land lying north- 
ward of where his land terminated, 
such contract was absolute and not 
conditional; the covenants therein were 
independent, and the breach of one did 
not relieve from the obligation of an- 
other. » Therefore, a conveyance by the 
party building the wall was not a con- 
dition precedent to the enforcement of 
his claim against the adjoining owner 
for his proportion of the cost thereof. 
Ensign v. Sharp, 72 Ga. 708. 

Where plaintiff purchased a lot of de- 
fendant, and agreed to erect a building 
thereon, and it was further agreed be- 
tween them that when the defendant 
erected a building upon the adjoining 
lot he would construct, in connection 
with the plaintiffs building, a stairway 
to the second story, one-half of which 
should be on the ground of each party, 
and plaintiff, accordingly, built his wall 
20 inches from the line, and defendant 
not only used the wall so built for the 
purpose of the stairway, but built into 
it in such a way as to support his own 
building, and in a way not demanded 
for the support of the stairway, then the 
wall became a party wall, and plaintiff 
wa? entitled to recover one-half the 
value thereof at the time defendant 
so used it, with interest at six per cent. 
Molony v. Dixon, 65 Iowa, 136 s. c, 54 
Am. Rep. i. 

When Liability Accrues. — The plain- 
tiff^s lot was vacant. The defendant's 
lot was occupied by a building one story 
high, which was of brick on all sides 
except the one next the plaintiff's lot. 
On that side it was of wood, and rested 
by permission, on the plaintiffs land. 
The plaintifi's purpose was to erect a 
building on his own land which should 
be four stories high. In doing this, it 
would be necessary to remove the 
wooden side of the defendant's building, 
so as to make room for the partition 
wall located one-half on each lot. The 
parties thereupon agreed that either 



5 



How Created. 



PARTY- WALLS. 



How Created. 



might build the wall, and that the other 
might at any time use as much of it as 
might choose "for the erection of any 
building" paying to the party erecting 
the wall the appraised value of so much 
of it as he shall then use. . . . The 
plain interpretation of the contract is- 
that the defendant incurs no liability to 
pay for the value of the wall until he 
makes some use of it in the future erec- 
tion of some building, or of some ad- 
dition to the old one. Shaw v. Hitch- 
cock, 19 Mass. 254. 

Adjoining owners agreed that one 
should build a foundation partly on the 
land of each and that the other should 
pay for the portion on his premises 
when he should rebuild his house or 
sell. Held, that the executors of the 
party who built had no cause of action 
against the other party until ■ rebuilt 
or sold and that the addition of. a few 
feet to the front extending to the pave- 
ment was not "rebuilding." Elliston 
V. Morrison, 3 Tenn. Ch. 280. 

The law will imply that payment is 
to be made within a reasonable time 
where no time is fixed for payment in 
an agreement to contribute toward the 
erection of a party wall. Rawson v. 
Bell, 46 Ga. ig. 

Where it was agreed that "whenever 
B. or his assigns use said wall by erect- 
ing a building on the lot adjoining on 
the said A.'s, B. or his heirs or assigns 
putting the joists of their building in 
said wall, then said A. or his heirs or 
assigns is to receive one-half of the 
actual cost of the building of said wall 
from B. or his heirs or assigns." Held, 
that the use of the wall was the thing 
contracted for and that the wall having 
been used as a party wall it was imma- 
terial that the joists of the building 
were not inserted in the wall. Green- 
wald V. Kappes, 31 Ind. 2i6. 

Under an agreement that one party 
should pay for a party wall when used, 
the amount to be determined by ap- 
praisers, Held, that the plaintiff could 
not recover until such appraisment or 
the defendant had done something to 
prevent and that the demand for pay- 
ment did not entitle the plaintiff to in- 
terest though defendant was using the 
wall. Thorndyke v. Wells Memorial 
Assoc. (Mass.) t6 N. E. Rep. 747. 

It was agreed between owners of ad- 
joining lots that T. should pay for one- 
half of a party wall when he should 
"make use" of it. When T. built, the 
building inspectors required him to line 
up to the party wall thus obliging him to 



build a new wall. The party wall, 
however, supported and added strength 
to T's wall. Held, that T. was liable 
under the agreement since he did "make 
use" of it. Kingsland v. Tucker, 44 
Hun (N. Y.) 91. 

A simple contract between adjoining 
owners recited that one of them had 
erected a wall on the line intended as a 
partition wall, and stipulated that 
whenever the other, his grantees, heirs 
or assigns, or other persons owning or 
controlling his lot, should desire to 
build in connection with said wall, they 
should first pay the builder one-half of 
its value. Held, that the builder had 
no title to the half of the wall on the 
other lot, the contract being a mere li- 
cense, with an agreement to pay for 
use, and therefore he, and not his gran- 
tee, was entitled to the payment of half 
the value, when the owners of the ad- 
joining let desired to build. Behrens 
V. Hoxie, 26 111. App. 417. 

Under an agreement between the 
owners of adjoining lots providing that 
one may build a party-wall resting one- 
half on each lot, and that the other 
should have the right of joining there- 
to on paying one-half its value, the one 
by whom the wall is built may be en- 
joined from placing therein doors or 
other openings, though there is neither 
allegation nor proof that the other ever 
intends to use the wall. Harber v. Ev- 
ans (Mo.) 14 S. W.750. 

In an action in the New York city 
court, where adjoining owners agreed 
that one might build the wall and that 
the other might have the use of it on 
paying one-half its value, it was held 
that the mutual covenants furnished a 
sufficient consideration for the promise 
to pay, though the interest of the promi- 
sor in the land was small. Scott v. 
McMillan, 4 N. Y. Supp. 434. 

In Kingsland v. Tucker, m; N. Y. 
574, it was adjudged that the construc- 
tion of an independent wall, which 
touched a party-wall at several points, 
but which was of sufficient strength to 
stand alone and fulfilled all the require- 
ments of a wall, was not such a use of a 
party-wall as was contemplated by an 
agreement between adjoining owners 
that one should use the party-wall 
built by the other for the supportof the 
beams of a house then standing on the 
lot, but whenever he should make use 
of the wall in the erection of a new 
building he should pay for one-half of 
its value. 

Enforcement.— Where there is an 



How Created. < 



PARTY-WALLS. 



How Created. 



{d) Implied Grant. — When one owning adjoining lots erects 
a wall partly on each lot and then conveys to others, the wall so 
erected becomes party-wall by implication of law and the dif- 
ferent owners have mutual easements of support in that portion 
of the wall standing on the other's land. ^ 



agreement between the owners of ad- 
joining lots, and one of them covenants 
with the other that he will build a wall, 
for a certain distance, half on one lot, 
and half on the other, and upon his 
failure so to do, the other party enters 
on the ground, and begins to extend the 
wall to the point agreed, the latter will 
not be restrained by injunction. 

But where the distance to which the 
wall is to be extended is a disputed 
point, and the proper construction of 
the covenant is an open question, and 
the extension will render necessary the 
cutting away of part of the building, 
thus causing a permanent injury 
thereto, a temporary injunction will be 
issued, to continue in force until the 
question of right can be settled. Rector 
etc. z>. Keech, 5 Bosw. (N. Y.) 691. 

1. If a person erects two buildings on 
adjoining lots of his own, with a party 
wall between them, and subsequently 
conveys to diiferent persons, each has 
an easement in the party wall standing 
on the land of the other for the support 
of his house. The party disturbing the 
other in the enjoyment of that ease- 
ment, even though he do it for the pur- 
pose of improving his own lot, and with 
the greatest diligence, is responsible for 
damages occasioned to the other by 
such disturbance. And if he employ 
another person in the work, both em- 
ployer and employed are liable for the 
trespass. The building injured being 
in possession of a tenant for a term of 
years, it was held, that the owner could 
recover only the injury to the building, 
and nothing for interruption of use and 
occupation. Eno v. Del Vecchio, 6 
Duer (N. Y.) 17. Partridge v. Gil- 
bert, 15 N. Y. 601, s. c, 69 Am. Dec. 
632; Webster tJ. Stevens, 5 Duer (N. 
Y.) 553; Rogers v. Sinsheimer, 50 N. 
Y. 646; Henry v. Koch, So Ky. 391; s. 
c, 44 Am. Rep. 4S4; Doyle v. Ritter, 
6Phi!a. (Pa.) 577; Goldsmith v. Star- 
ring, 5 Mackey (D. C.) 582; Richards 
V. Rose, 9 Exch. 218; Murly v. Mc- 
Dermott, 8 Ad. & E. 138; Watson v. 
Gray, L. R. 14 Ch. Div. 192. 

"Two houses and two lots were origi- 
nally owned by one Stranahan. He 
had erected the two houses thereon, and 



made the wall in question a party wall 
between them. By two deeds, both 
dated and recorded at the same time, 
he conveyed the easterly lot to the 
grantor of the plaintiff and the westerly 
lot to the grantor of the defendant, 
by a description which is claimed by 
the plaintiff to have so located the line 
of division as to throw the whole of the 
wall and two inches of land on the 
westerly' side thereof within the bound- 
aries of the plaintiff's lot. Assuming 
that the plaintiff is right in his construc- 
tion of the description, yet the wall be- 
ing a party wall and at the time of the 
conveyance serving as a support for the 
beams of the house erected on the lot 
now of the defendant, the premises now 
owned by the plaintiff were charged 
with the servitude of having the beams 
of that house supported by the wall in 
question, and of having the wall stand 
and serve as an exterior wall for the de- 
fendant's house, so long at least as the 
building should endure. . . . Con- 
sequently, on the severance of the two 
properties, the grantee of the westerly 
lot acquired an easement correspond- 
ing with the servitude to which the 
easterly lot was subject." Rogers v, 
Sinsheimer, 50 N. Y. 646. 

Where the use of a wall was not such 
as would give a subsequent grantee no- 
tice of its use as a party -wall and it is 
shown that he did not have notice of 
any right to use. ^e/rf, that when an ad- 
joining owner erected a brick building 
in the place of a frame shop of a light 
and temporary character he could not 
use the division wall as a party wall 
without making compensation. Heim- 
bach's Appeal (Pa.) 7 Atl. Rep. 737. 

Where the owner of adjoining lots, 
on each of which was a building with 
a common wall between them, mort- 
gaged one of the lots, describing the di- 
vision line as running "partly through 
the centre of a party-wall," it was held 
that on the foreclosure and sale of the 
mortgaged lot the common wall became 
a party-wall. Heartt v. Kruger, 56 
Super. Ct. 382. 

The owner of two adjoining city lots 
built a house upon each lot, each sepa- 
rated from the other by a brick wall, 



How Created. 



PARTY-WALLS. 



How Created. 



[c) Prescription. — The continuous use of a wall, by adjoining- 
owners, as a party-wall for the prescriptive period, raises the pre- 
sumption of a contract between the parties.^ 

{d) Statutes. — In some of the states of the Union there are 
statutory regulations upon the subject of party-walls.* 



one-half of which was on each lot, and 
subsequently conveyed the lots to dif- 
ferent persons, each deed describing 
the boundary line between the houses 
as "a line running longitudinally 
through the centre of the partition wall 
between the houses"; and such wall 
stood unchanged as the partition wall 
between the iiouses for fifty years. 
Held, that the wall was a party-wall. 
Everett ti. Edwards, 149 Mass. 588. 

And so where A. and B. owned adja- 
cent houses, and the wall was a com- 
mon wall, and the common grantor of 
both had conveyed each house by a des- 
cription which made the dividing line 
of the lots pass through the centre of 
the wall, though there was no reference 
to the wall, it was held that there was 
an implied grant of the party wall, put- 
ting on each the burden and privilege 
of a party wall. Carlton v. Blake, 
(Mass.) 25 N. E. Rep. 83. 

1. An old wall from long user, in the 
absence of evidence, may be deemed a 
party-wall, presumptively, either from 
an agreement to that effect, or from its 
being built upon the line of the two lots 
for that purpose by the respective own- 
ers. Schile V. Brokhahns, 80 N. Y. 
614; Eno V. Del Vecchio, 4 Duer (N. 

Y.) 53- 

A and B owned adjoining houses, 
the party wall of which was supported 
by anarch, enclosing a passage-way; B 
pulled down his house and part of the 
arch on his estate, in consequesce of 
■which the partition wall fell. In an 
action of trespass on the case by A 
against B, there was evidence that A 
had previously made alterations in his 
house, and had inserted props under the 
arch after B's house had been taken 
down, but that the party wall was not 
weakened thereby, and it did not ap- 
pear that A ever assented to the break- 
ing of the arch. Held, that the right 
of support or easement in the ground of 
B set up by A, was of such a character 
that it must have originated in a grant, 
either actual or presumed, as matter of 
law, from the facts shown by the evi- 
dence in the case. 

Held, also, that the uninterrupted en- 
joyment and use of the alley and alley 



walls for the period shown by the evi- 
dence, raised the presumption of mutual 
grants for such enjoyment for the time 
the two houses should be capable of 
safe and beneficial occupation, and that 
B had no authority or right to interfere 
with tiie alley or walls, without the 
consent of A, unless he could do so 
without injurj' to his possession. Daw- 
ling V. Hennings, 20 Md. 179; Brown 
V. Werner, 40 Md. 15; McLaughlin v. 
Ceccopi, 141 Mass. 252, S. C. 5, N. E. 
Rep. 261: Orman v. Day, 5 Fla. 385, 
Sanders v. Marton, 2 Lea (Tenn.) 213; 
S. C. 31 Am. Rep. 599; Cubitt v. Por- 
ter, 8 Barn & C. 257; Wiltshire -v. Sid- 
ford, 8 Barn & C. 257; Brown v. 
Windsor, i Cromp. & J. 20. 

2. In Iowa, South Carolina, Missis- 
sippi, Louisiana, and the District of 
Columbia, one who in a city or town 
erects a brick building (in Louisiana a 
stone building) may set half the parti- 
tion wall on the adjoining lot. 

In Iowa and Louisiana, one so erect- 
ing a wall cannot compel contribution, 
but if the a^djoining owner uses the 
wall when he builds, he must pay for 
one-half of it; and this he must do in 
South Carolina and Mississippi. 

So in Iowa and Louisiana, if the per- 
son first building places the wall wholly 
on his own land, the other who uses it 
must pay half the value of the strip, 
and, this being done, they own the wall 
in common. Under the statutes of 
these two states a partition wall is pre- 
sumed to be a wall in common. 

Under the Mississippi statute, a 
party-wall paid for by both cannot be 
removed b^' either without the consent 
of the other. For a general reference 
to the statutes bearing upon this subject 
see Stimson's American Statute Law, 
p. 325. O'Daniel v. Bakers' Union, 4 
Houst. (Del.) 488; Zugenbuhler v. Gil- 
liam, 3 Iowa 391 ; Thomson v. Curtis, 
28 Iowa 229; Bertram v. Curtis, 31 
Iowa 46; Molonj' v. Dixon, 65 Iowa 
136, S. C. 54 Am. Rep. i; Graihle v. 
Honn, I La. Ann. 140; Florence v. 
Maillot, 22 La. Ann. 114; Irwin v. Pet- 
erson, 25 La. Ann. 300; Irwin v. Morse, 
130 Mass. 317; Ingles v. Bringhurst, i 
Dall. (Tex.) 341; Beaver v. Nutter, lo 



8 



When a Party- Wall 



PARTY-WALLS. 



Ceases to be Saoh, 



III, When a Party-Wall Ceases to be Such. — A wall ceases to 
be a party-wall with the state of things which created it and there 
is no obligation upon either of the adjoining owners to continue 
the use of a wall as a party-wall after such a change of circum- 
stances, or to unite in the construction of a new wall after the de- 
struction of the old one.^ 



Phiia. (Pa.) 345; Evens v. Ja^'ne, 23 
Pa. St. 34; Bell w. Bronson, 17 Pa. St. 
363; Roberts v. Bje, 30 Pa. St. 375, S, 
C. 71 Am. Dec. 710; Child v. Napheys, 
112 Pa. St. 504: Miller v. Elliott, 5 
Cranch C. C. (U. S. ) 543. 

In such a case it was held that the 
building regulations of the District of 
Columbia, adopted in 1791, were to be 
construed strictly as imposing a burden 
in invitum on the land and did not 
authorize the making of windows in a 
party-wall. Corcoran z'. Nailor, 6 
Mackey (D. C.) 580. 

The Prov. St. of 1692-3 (5 W. & M.) 
c. 13, ^2, providing that any one build- 
ing on his own land in Boston might 
set half his partition wall on his neigh- 
bor's land, and that the neighbor, when 
he should build, should pay for half of 
so much of the wall as he should build 
against, has never been in force in this 
Commonwealth. Wilkins v. Jenett, 
139 Mass. 29. 

municipal Ordinances. — Power to 
pass ordinances to authorize the erec- 
tion of party-walls has been held to in- 
clude the power to authorize their erec- 
tion upon the application of either 
owner, and without the consent of the 
other. Hunt v. Ambruster, 14 N. J. 
Eq. 208. 

A municipal ordinance relating to 
party-walls has no application to inter- 
nal walls dividing a building into sepa- 
rate shops and a conviction under such 
an ordinance for an alleged offence in 
the construction of internal walls will 
be quashed. Regina v. Copp, 17 Ont. 
Reps. (Can.) 738. See also, Marshall v. 
Smith, 8 L. R. C. P. 416; 42 L. J. M. 
C. 108; 28 L. T. 538. 

1. The owners of adjoining buildings, 
connected by a party-wall resting part- 
ly upon the soil of each, are neither 
joint owners or tenants in common of 
the wall. Each is possessed in sever- 
alty of his own soil up to the dividing 
line, and of that portion of the wall 
which rests upon it; but the soil of each, 
with the wall belonging to him, is bur- 
dened with an easement or servitude in 
favor of the other, to the end that it 
may afford a support to the wall and 



building of such other. Each therefore, 
is bound to permit his portion of the 
wall to stand, and to do no act to im- 
pair or endanger the strength of his 
neighbor's portion so long as the object 
foi- which it was erected, to wit, the' 
common support of the two buildings, 
can be subserved; and each will conse- 
quently be liable to the other for any 
damage sustained by a disregard of this 
obligation. But the obligation ceases 
with the purpose for which it was as- 
. sumed, namely, the support of the 
houses of which the wall forms a part. 
If these houses, or either of them, are 
destroj'ed without fault upon the part 
of the owner, he is not bound to rebuild 
in exactly the same style and in exactly 
the same spot because his neighbor de- 
mands it. That this is true where the 
wall itself is swept away with the house, 
is settled by authority. It must be 
equally so where the wall alone re- 
mains. A wall is but a portion of a 
house, and the one is valueless without 
the other. To hold that as long as the 
wall stands the owner whose home has 
been destroyed is compelled to lose the 
use of his lot or to replace the destroyed 
with another of exactly the same pat- 
tern, is to sacrifice the greater to the 
less, and to impose in perpetuity a ser- 
vitude which was assumed only for a 

specific purpose We think 

the obligation is only that so long as 
the houses stand the owner of neither 
shall do anything to impair the proper- 
ty of the other, and either shall be at 
liberty to impair the property of the 
other, and either shall be at liberty to 
repair and keep in order the common 
wall; but when without the fault of 
either the houses are destroyed, the 
easement is at an end, and each becomes 
the owner in severalty of his own soil 
and of so much of the wall as stands 
upon it, with a perfect right to tear it 
down or dispose of it in any way he 
sees proper." Hoffman v. Kuhn, 57 
Miss. 746 S. C. 34 Ajm. Reps. 491. 

Sherred v. Cisco, 4 Sandf. Sup. Ct. 
(N. Y.) 480; Partridge v. Gilbert, 15 
N. Y. 601 ; Antomarchi's Ex. v. Rus- 
sell, 63 Ala. 356; s. c, 35 Am. Rep. 40. 



Rights, Duties and Liabilities PAR TY- WA LLS. 



of Adjoining Owners. 



IV. Rights, Duties and Liabilities of Adjoining Owneks — 

(«) General Statement.— In general each must so deal with the 
party-wall as not to impair any right which the other may have.^ 



It was held by the New York, Court 
of Appeals in Heartt v. Cruger, 24 N. 
E. Rep. 84 1, where an owner of two 
adjoining city lots erected buildings 
thereon, with a party-wall between, 
and afterwards conveyed both lots to 
another, receiving back a mortgage 
upon one of them, in which the divid- 
ing line was described as running 
through the center of a party-wall, and 
where the defendant acquired title to 
this lot through a conveyafice upon 
foreclosure of this mortgage, and mesne 
conveyances, and both buildings were 
afterwards destroyed by iire, so that 
only the foundation remained, that de- 
fendant's easement terminated with the 
destruction of the buildings. 

By deed in fee, a grantee had the 
privilege of putting the wall for the 
third storj' of his house on the top of 
the adjoining wall of the grantor. 
Held, that the grantor and- those claim- 
ing under him could not recover of the 
grantee the land on which the party 
wall stood, though all the building of 
the grantor, except this party-wall, had 
been burnt down. Brondage v. War- 
ner, 3 Hill (N. Y.) 145. 

Wall Destroyed Before One Party Had 
Built. — Adjoining owners agreed that 
one who was about to build should 
place the wall of his building one half 
on the land of the other, who should 
have the right to use it when he built 
on his lot. The wall was built as 
agreed but destroyed by fire before the 
other party built. Subsequently both 
built at the same time, erecting a new 
wall which was used as a party-wall. 
Held, that the one who built the first 
wall was not bound to rebuild it after 
its destruction, the original agreement 
would not apply to the second wall, 
and that both should bear the ex- 
pense of building the second wall. 
Huck V. Flentye, So 111. 258. 

Where One Owner Desired to Change. 
— A and B built houses at the same 
time, and hiuilt a partition wall on the 
division line at joint expense, without 
any agreement as to its maintenance. 
After a peaceful occupancy of twenty- 
one years, A's grantee notified B's 
grantee, that he was about to pull down 
half the partition wall, in order to erect 
a better building, and against the ob- 
jections of the latter, the former pulled 

1 



down the half on his land, using due 
care, notwithstanding which the other's 
building fell. Held, that there was no 
cause of action. Hieatt v. Morris, 10 
Ohio St. 523. 

1. O'Daniel v. Bakers' Union, 4 
Houst. (Del.) 488; Montgomery v. 
Masonic Hall, 70 Ga. 38; Moody v. 
McClelland, 39 Ala. 45; s. c, 84 Am. 
Dec. 770; Dowling v. Hennings, 20 
Md. 179; s. c, 83 Am. Dec. 545; Hoff- 
man V. Kuhn, 57 Miss. 746; Eno v. 
Del Vecchio, 4 Duer (N. Y.) 53; s. c, 
6 Duer 17; Sherred v. Cisco, 4 Sand. 
Sup. Ct. (N. Y.) 480; Earl v. Beadles- 
ton, 42 N. Y. Superior Ct, 294; Web- 
ster V. Stevens, 5 Duer (N. Y,) 553; 
Sanders v. Martin, 2 Lea (Tenn.) 213; 
s. c, 31 Am. Rep. 598; Brown v. 
Windsor, i Cromp. & J. 20. 

_. Plaintiff sold one-half his wall to one 
F to be used as a party wall, and F, in 
constructing his building entered into 
an agreement with a bank to erect a 
party wall on the other side of F',s 
building. The bank constructed a very 
heavy vault and failed to put proper 
foundations under it, by reason of 
which the bank building settled, and 
the walls pressing against the building 
of F caused his building to press against 
and injure the building of the plaintiff. 
Held, in an action against the bank, 
that plaintiff, though he may have 
known in what manner the bank was 
constructing the foundations, did not 
in selling one half his wall to F, assume 
all risks of defective construction by 
the bank. Feige v. First Nat. Bank 
(Mich.) 24 N. W. Rep. 772. 

Windows, — A contract for the erec- 
tion of a party-wall which provides 
that the person on whose land it is to 
be partly built shall not "have the right 
to obstruct the light for any window" 
which the other party "shall build into 
said wall," gives such other party, by 
implication, the right to build windows 
in such wall, Grimley v. Davidson 
(111,) 24 N, E. 439. 

Excavation — Support. — Under N. Y. 
Laws 1882, ch. 410, ^ 474, relating to 
excavations for building purposes in 
New York city, the duty of one mak- 
ing an excavation to preserve a wall 
from injury does not cease with the 
completion of the excavation. There 
must be also a support so that the wall 





Eights, Duties and Liabilities PA RTY- WA LLS. 



of Adjoining Owners, 



{b) Erection and Use. — In the construction of a party-wall 
the one who builds it is under a duty to erect it in a proper and 
skillful manner, and if he fails to do so, he is liable for the resulting 
damage.^ 

"The use of a party-wall in its full unrestricted sence, embraces 
not only the use of the interior face or side of the wall, but also 
such use of it as is necessary to form a complete and perfect junc- 
tion, in an ordinary good mechanical manner, between it and the 
other exterior walls of the house. "^ 

(c) Alteration.— Either party is at liberty to make any change 
in a party-wall, by underpinning or increasing its height, that he 
sees fit, provided that, in so doing, he does not interfere with or 
impair the rights of the other owner. The party making the 
change is liable for any damage which may result therefrom.* 



will "remain as stable as before." A 
contrary construction of the statute 
would be unreasonable. Bernheimer 
V. Kilpatrick, 53 Hun (N. Y.) 316. 

The statute providing that one dig- 
ging to a depth of more than 10 feet 
below the curb-line shall protect "party 
or other walls standing upon or near 
the boundary lines" does not require 
him to protect foundations of a stoop 
standing wholly on the land of the ad- 
joining owner. Berry v. Todd, i4 
Daly 450. 

1. Gorham v. Gross, 125 Mass. 232; 
Glover V. Mersraan, 4 Mo. App. 90. 

One building a party-wall is bound 
to construct it of sufficient strength to 
sustain the one of which it forms a 
part and another of similar size and 
character. Gilbert v. Woodruff, 40 
Iowa 320; Cutter v. Williams, 3 Allen 
(Mass.) 196. 

2. Fettretch v. Learay, 9 Bosw. (N. 
Y.) i;i'i; Nash i;. Kemp, 49 How. Pr. 
(N. Y.)522. 

"The l^nd lying in front of a party- 
wall, between that and the line of the 
street, is to be exclusively enjoyed by 
its owners, freed from any burden of, 
easement growing out of a simple party 
wall agreement, and is to be occupied 
by the adjoining owners according to 
the boundarj' lines of their lots for the 
construction of their fronts. Nash v. 
Kemp, 49 How. Pr. (N. Y.) 522. 

Burton v. Moffitt, 3 Or. 29; Jamison 
V, Duncan, I2 La. Ann. 785; Marion v. 
Johnson, 23 La. Ann. 597; Moore v. 
Rayner. 58 Md. 411. 

3. "The fairer view and the one gen- 
erally adopted in legislative provisions 
on the subject, in this and other coun- 
tries, is to treat a party-wall as a struct- 
ure for the common benefit and con- 



venience of both of the tenements 
which it separates, and to permit either 
party to make any use of it which he 
may require, either bj' deepening the 
foundations or increasing the height, so 
far as it can be done without injury to 
the other." The party making such 
change is obligated to observe care not 
to occasion injury to the adjoining 
owner, but the authorities generally 
seem to hold that in so far as he can 
use the party wall in the improvement 
of his own property, without injury to 
such wall or the adjoining property there 
is no good reason why he may not be 
permitted to do so." Field v. Leiter, iiB 
111. 17; Graves v. Smith (Ala.) 6 So. 
Rep. 308; Montgomery' v. Masonic Hall, 
70 Ga. 38; Phillips v. Bordman, 4 Allen 
(Mass.) 147; Quinn v. Morse, 130 
Mass., 317; Matthews v. Dixey (Mass.) 
22 N. E. Rep. 61 ; Everett v. Edwards 
(Mass.) 22 N. E. Rep. 52; Dowling v. 
Hennings, 20 Md. 179; s. c, 83 Am. 
Dec. 545; Brooks v. Curtis, 50 N. Y. 
639; s. c, 10 Am. Rep. 545; Eno v. 
Del Vecchio, 4 Duer (N. Y.) 53; 
Schile V. Brokhahus, 80 N. Y. 614; 
Keller v. Abrahams, 13 Dalv (N. Y.) 
188; McGittigan v. Evans," 8 Phila. 
(Pa.) 264; Western Banks App. 102 
Pa. St. 171; Sanders v. Martin, 2 Lea 
(Tenn.) 213; s. c, 31 Am. Rep. 598; 
Danenhauser v. Devine, 51 Tex. 480; 
Andrae f. Haseltine, 58 Wis. 395; s. c, 
49 Am. Rep. 635; Bradbee i\ Christ's 
Hospital, 4 Man. & G. 761; Major v. 
Park Lane Co., L. R., 2 Eq. 453. 
Compare McLaughlin v. Cecconi, 141 
Mass. 252; Hieatt v. Morris, 10 Ohio 
St. 523; s. c, 78 Am. Dec. 280. 

Where two adjoining houses are sup- 
ported by a party-wall owned in com- 
mon, and partly on the land of each 



11 



Eights, Duties and Liabilities PA RTY- WA LLS. 



of Adjoining Owners, 



owner, and which has been used as such 
for over twenty vears, and one owner, 
without the consent of the other, re- 
moves the wall while it is suitable for 
the purposes for which it was erected, 
and erects a store on his lot, and a new 
partj-wall, he will be liable to the other 
owner for aiij loss of rent, and the ex- 
pense of repairs rendered necessary by 
such removal. Potter v. White, 6 
Bosw. (N. Y.). 644; Schile v. Brok- 
hahns, 80 N. Y. 614. 

Tearing Down and Repairing. — If a 
party desiring to erect a building find 
the adjoining wall too weak to support 
the building which he is about to erect, 
he may tear down such wall and replace 
it with a stronger one. In so doing he 
must take great care to prevent any 
more damage than is absolutely neces- 
sary. Gettwerth v. Hedden, 30 La. 
Ann. pt. I, 30; Cubitt v. Porter, 2 M. & 
R. 267; 8 B. & C. 257; Standard Bank 
of B. S. A. 9 Ch. D". 68; 47 L. J. Ch. 
554; 38 L. T. 172; 26 W. R. 492; Flu- 
ger V. Hocken, i F. & F. 142. 

The owner of the weak wall cannot 
under the circumstances mentioned 
above be compelled to replace the wall 
with a stronger one at his own expense 
Ferguson v. Fallons, 2 Phila. (Pa.) 168. 

The principle that the builder of a 
new house may take down a party-wall 
that is insufiScient for his purposes, and 
rebuild it at his own expense, is no in- 
vasion of the absolute right of property. 
Evens v. Jayne, 23 Penn. State R. (11 
Harris,) 34. 

The right granted to one co- proprie- 
tor of a wall in common by Civil Code 
La. art. 682, to demolish the old wall 
when found insufficient to bear the addi- 
tional height and weight of a proposed 
new structure, and to build a new and 
thicker wall, adequate to support the 
new building as well as that of the 
neighbor, at his own expense, and tak- 
ing the additional thickness from his 
own estate, is an absolute right, and 
the previous consent of the neighbor is 
unnecessary. 

The right to build the new and 
thicker wall includes the right to 
demolish the old wall, to establish a 
sufficient foundation for the new one, 
to disturb the neighbors enjoyment, 
and to enter upon his property to the 
extent necessary for the principal 
right. 

When one proprietor exercises the 
right granted by Civil Code La. article 
682, his neighbor is bound to bear, with- 
out indemnity, the imconvenience and 



injury consequent thereon, so far as 
they are inseparable froin the exercise 
of the right. 

He is bound, at his peril, to replace 
the neighbor, at the end of the work, in 
a position every way equal to that 
which he occupied at its beginning, and 
to furnish him a new wall, fit and ade- 
quate to support his building, and for 
all shortcomings is liable to his neigh- 
bor in damages. — Heine v. Merrick 
(La.) 5 So. Rep. 760. 

One owner of a party -wall may build 
it to a greater height to support an 
addition to his building, doing no injury 
to his co-owner; and the mere fact that 
in carrying up the wall he violates a 
building act will not render him liable 
to such co-owner. Everett v. Edwards, 
149 Mass. 588. 

The owner of land on the north side 
of a city street conveyed two adjoining 
lots to different persons, each deed pro- 
viding that the center of the easterly 
and westerly partition walls of the 
houses . . . first erected on the said 
land shall be placed on the division lines 
between the granted premises and the 
adjoining lots, and that the one who 
first built such a wall should be paid by 
the other, upon his using it, one half its 
cost. The grantee of the westerly lot 
erected a house on the front part there- 
of, with such a wall on the division line 
between the two, and built a wooden 
fence on the rest of the line. Subse- 
quently, the grantee of the other lot 
proceeded to build a higher and deeper 
house thereon, conforming in all re- 
spects to a building act in force in the 
city, and for that purpose to carry up 
such wall and to extend it to the rear, 
necessarily displacing a part of the 
fence. Held, that such additions could 
rightfully be made without payment 
being first made of one-half the cost of 
the existing wall, if no injury was done 
thereto, and that a bill in equity to pre- 
vent their being made could not be 
maintained. Matthews v. Dixey, 149 
Mass. 595. 

So in Louisiana, one of the co-owners 
may demolish the old wall, if he finds 
it insufficient to support a contemplated 
new structure, and may rebuild on a 
wider foundation, and this he may do 
without the consent of the owner. 
Heine v. Merrick, 41 La. Ann. 194. 

So under an agreement that the par- 
ty-wall shall be used free of expense in 
the erection of a building, while confer- 
ring by implication a right to raise the 
height of the wall, does not authorize 



12 



Bights, Duties and LiabiUties PAR TV- WA LLS. 



of AdjoininpT Owners, 



{d) Repair. — Either owner may repair a party-wall, and after 
giving due notice of his intention to the adjoining owner he is not 
liable for any damage resulting from such repairs if they be made 
with dispatch and without negligence.^ 

(e) Contribution. — There is no obligation to contribute to 
the original cost of erecting a party-wall in the absence of an 
agreement to do so,* but the law will sometimes imply an agree- 



the insertion of windows or openings 
therein to the violation of a cross-ease- 
ment of the adjoining owner. Graves 
V. Smith, 87 Ala. 450. 

Where a wall between adjoining 
houses has for more than 21 years been 
used by their respective owners, it will 
be regarded as a party-wall, whether 
equally on the lot of each or not and 
one owner will not be liable in trespass 
for using it on rebuilding or for tearing 
it down^ and replacing it when con- 
demned by the building inspector. 
— McVey v. Durkin (Pa.) 20 Atl. 
Rep. 541. 

It was held in Berry v. Todd, 14 
Daly (N. Y.) 450, that while an owner 
of a party -wall might increase its thick- 
ness, length, or heighth within the 
limits of his own lot, he was liable for 
injury produced to his neighbor's 
premises. 

A building owner who pulls down a 
party-wall under the authority of the 
Metropolitan Building Act, 1855, 18 & 
19 Vict. c. 122, is not bound to protect 
by a boarding or otherwise the rooms 
of the adjoining owner which are left 
exposed to the weather during the time 
that the wall is being pulled down and 
rebuilt. Thompson v. Hill, 5 L. R. C. 
P. 564; 32 L. J. C. p. 264; 22 L. T. S20; 

18 W. R. 1070. 

See also Bryer v. Willis, 23 L. T. 463; 

19 W. R. 102; Rex V. Hungerford Mar- 
ket Company, 2.N. & M. 340; Knight 
V. Pursell, II Ch. D. 412; 48 L. J. Ch. 
395; 40 L. T. 391; 27 W. R. 817. 

Changed Character of Adjoining House. 
— One party purchased a dwelling 
house with provision in the deed that 
division wall should be a party-wall, but 
with the understanding that the adjoin- 
ing house was to be a private residence. 
Subsequently the adjoining house was 
altered into a family hotel and in mak- 
ing such alterations the owner raised 
the party -wall. Application for injunc- 
tion was made to restrain any addition 
to th^ wall for the purposes intended. 
Held, that though the wall might be 
raised for the purpose of improving the 
adjoining house as a private residence. 



it could not be done to change the char- 
acter of the house, because the other 
house was purchased subject to the 
party -wall easement with the under- 
standing that it should be a party-wall 
between first class residences only. 
Musgrave v. Sherwood, 60 How. Pr. 
(N. Y.) 339. 

Contribution not Condition Precedent. 
— Payment by the party seeking to en- 
large the wall of his share of the costs 
of the original wall is not a condition 
precedent to the exercise of his rights 
therein. — Matthews v. Dixey (Mass.; 
22 N. E. Rep 61. 

Lineal Extensions. — Where one owner 
built a party- wall some distance back 
from the street line and it so remained 
for fifty years after the adjoining owner 
had built upon his lot. Held, that the 
first builder could not extend the party- 
wall to the street line without the con- 
sent of the adjoining owner. Duncan 
V. Hunbest, 2 Brewst. (Pa.) 362. 

See Matthews v. Dixej' (Mass.) 22 
N. E. Rep. 61. 

1. Moore v. Rayner, 58 Md. 411; 
Hoffman v. Kuhn, 57 Miss. 746; 
Crashaw v. Sumner, 56 Mo. 517; Pat- 
ridge V. Gilbert, 15 N. Y. 601; s. c, 
69 Am. Dec. 632; Schile v. Brokhahns, 
80 N. Y. O14; Sherred v. Cisco, 4 
Sandt. (N. Y.) 480; Eno v. Del 
Vecchio, 4 Duer (N. Y.) 53; s. c, 6 Id. 
17; Sanders v. Martin, 2 Lea (Tenn.) 
213; s. c, 31 Am. Rep. 598. 

2. Preiss t. Parker, 67 Ala. 500; 
Antomarchi f. Russell, 63 Ala. 356; 
s. c, 35 Am. Reps. 40; Orman v. Day, 
5 Fla. 385; McCord v. Herrick, 18 111. 
App. 423; Wilkins w. Jewett, 139 Mass. 
29; Sherred v. Cisco, 4 Sandf. (N. Y.) 
480; Sanders v. Martin, 2 Lea (Tenn.) 
213; s. c, 31 Am. Rep. 598- 

Where a party has built a house 
wholly upon his own lot and his neigh- 
bor subsequently erected a house on 
the adjoining lot and made use of the 
wall of the adjoining house. Held, 
that the builder of the second house 
was under no duty to contribute to the 
cost of erection of the wall so used in 
the absence of damage arising from 



13 



Eights, Duties and Liabilities PA J? TV- WA LL S. 



of Adjoining Owners, 



ment from the acts of a party.^ 

Express agreements to contribute to the cost of erection are, 
of course, binding upon the parties to such agreements,* but the 



such use. Abrahams v. Krantler, 24 
Mo. 68; s. c, 66 Am. Dec. 698; Bis- 
quay t'. Jennelot, 10 Ala. 245; s. c, 44 
Am. Dec. 483. 

1. Where one party erected a house 
with the wall party upon the land of 
the adjoining owner who had reason to 
know that the wall was being erected 
and that the party building it expected 
contribution toward its cost when used 
by the other part}-. Held, that the jury 
might properly imply an agreement to 
contribute from the failure of the 
owner of the vacant lot to disclaim any 
liability. Day v. Caton, ng Mass. 
513. See also Huck v. Flentye, 80 111. 
258. 

Statutes. — In these States where 
there are statutes providing that one 
who builds may erect his wall one-half 
upon the adjoining lot, no express 
agreement to contribute is necessary. 
See' Lugenbuhler v. Gilliam, 3 Clark 
(la.) 391; Bertram v. Curtis, 31 Iowa 
46; Pew V. Buchanan (Iowa) 34 N. 
W. Rep. 453; Thomson v. Curtis, 28 
Iowa 229; Davis v. Grailhe, 14 La. 
Ann. 338; Costa v. Whitehead, 20 La. 
Ann. 341; Auch v. Labouisse, 20 La. 
Ann. 553; Marion v. Johnson, 23 La. 
Ann. 597; Irwin v. Peterson, 25 La. 
Ann. 300; Damaker v. Riley, 14 Pa. 
St. 435; Roberts v. Bj'e, 30 Pa. St. 375; 
s. c, 72 Am. Dec. 710; Beaver v. Nut- 
ter, 10 Pa. St. 345; Heimbach's Appeal 
(Pa.) 7 Atl. Rep. 737. 

One who takes with Actual Notice 
of Agreement. — Where owners of ad- 
joining premises made an agreement 
under seal for themselves, but not 
acknowledged and recorded, whereby 
one was to build a party wall, and the 
other, when he should use it in the 
construction of his building, was to 
pay half the cost of such wall, the 
effect of such agreement was to create 
cross-easements as to each owner, and 
a purchaser of the estate with notice, 
would take it burdened with the liabil- 
ity to pay one- half the cost of the wall 
whenever he should avail himself of its 
benefits. 

One purchasing under a quit-claim 
deed, would not, without actual notice, 
be bound by such agreement. Sharp 
V. Cheatham, 88 Mo. 498; Keating v. 
Korfhage, 88 Mo. 524; Wickersham v. 
Orr, 9 Iowa 253. 



14 



Basis on which Contribution Is to be 
Made. — The party seeking contribution 
for use of a party wall can recover one- 
half of the original cost of building 
only, not one-half of the present value. 
Florence v. Maillot, 22 La. Ann. 114; 
Auch V. Labonisse, 20 La. Ann. 553. 

Additions Made Use of by Adjoining 
Owner. — Where one owner of a party 
wall had made additions thereto by 
underpinning and adding to height and 
subsequently these additions were made 
use of by the adjoining owner. Held, 
that the adjoining owner was under a 
duty to contribute one-half of the value 
of the additions used at the time they 
were used. Sanders v. Martin, 2 Lea 
(Tenn.) 213; s. c, 31 Am. Rep. 598. 

Where defendant was sued for one- 
half the value of a. wall which he had 
made use of as a party wall. Held, 
that he had no interest to question 
plaintiff's title further than to ascertain 
whether the claim could safelj' be paid 
to him. Irwin v. Peterson, 25 La. 
Ann. 300. 

2. Ringe v. Baker, 57 N. Y. 209; s. 
c, 15 Am. Rep. 475; Musson's Appeal, 
70 Pa. St. 26; Ensign v. Sharp, 7,2 Ga. 
707; McCourt V. McCabe, 46 Wis. 
596. 

Where a Party Sells before Fulfilling 
Contract to Contribute. — A party coA- 
tracted with an adjoining owner to pay 
for one-half of as much of a party-wall 
as he should use when he built upon 
his lot. Before building, however, he 
sold his lot to a third person thus put- 
ting it out of his power to fulfill his 
contract. Held, that he was liable in 
damages to the first party for not build- 
ing and paying for a part of the wall 
within a reasonable time. Rawson v. 
Bell, 46 Ga. 19. 

Parol Contracts. — An action may be • 
maintained on an oral agreement be- 
tween adjoining owners, that one shall 
erect a party wall and the other pav 
half the expense, if the wall is built 
before any revocation. But if the one 
agreeing to build receives from the 
other a notice of sale of his lot before 
commencing to build, this is a revoca- 
tion of the license, and the action will 
not lie. Rice v. Roberts, 24 Wis. 461. 

A parol contract to contribute 
toward the expense of erecting a party 
wall is binding on the parties to the 



Eights, Duties and Liabilities PARTY- IVA LLS. 



of Adjoining Owners. 



authorities conflict on the point as to whether an agreement to 
contribute made under seal is a covenant running with the land 
or a mere personal contract.^ 

The expense of making repairs, however, must be borne by 
both parties, provided such repairs are not in the nature of altera- 



contract only. Joy v. Boston Penny 
Savings Bank, I15 Mass. 60; Jenkins v. 
Spooner, 5 Cush. (Mass.) 419; s. c, 52 
Am. Dec. 739. 

1. Covenant Running with the Land. 
— Gray J., says: "The defendant hav- 
ing made use of the waU so built, can- 
not deny the plaintiff's right therein, 
and is bound to compensate her for 
such use, either according to the^ cove- 
nant in the deed from his grantors to 
the plaintiff, or according to the value 
of the wall. Richardson i'. Toby, 121 
Mass. 457. See also Savage v. Mason, 
3 Cush. (Mass.) 500; Weld v. Nichols, 
17 Pick. (Mass.) 538; Bronson v. Cof- 
fin, 108 Mass. 175; Maine v. Cumston, 
g8 Mass. 317; Rothe v. UUman, 104 
111. (Dis. in 115 111. 119); Piatt v. Eg- 
gleston, 20 Ohio St. 414; Thomson v. 
Curtis, 28 Iowa 229; Brown v. Pentz, 
I Abb. (N. Y.) App. Dec. 227 (Dis. in 
Scott V. McMillan, 76 N. Y. 141). 

Party Wall Agreement Mentioned in 
Deed. — Where the deed of a party 
mentioned a party-wall agreement 
with adjoining owner. Held, that the 
grantee in the deed became liable to 
contribute under the covenant in the 
same manner as one assuming a mort- 
gage, that the covenant became united 
with and formed part of the considera- 
tion for which the land was parted 
with. Stewart v. Aldrich, 15 N. Y. 
Sup. Ct. 241; Christie v. Mitchinson, 
36 L. T., 621. 

Agreement that Whole Wall Shall Re- 
main Property of Builder Until Contri- 
bution by the Other Party. — Cases, 
therefore, where parties are, by the 
deed under which they take title, given 
one-half of a wall as a party-wall -when 
or ufon condition of making payment, 
and cases in which the owner of one 
lot has licensed the owner of the ad- 
foining lot to build a wall for himself, 
resting one-half of it on each lot, and 
reserving the privilege of thereafter 
purchasing one-half the wall as a party- 
wall, are not analogous. In all such 
cases the title to the whole wall may 
be regarded as appurtenant to the lot 
of the builder, and so passing, by every 
conveyance of it, until a severance of 
the half by the payment of the pur- 



chase money. The sale of the half of 
the wall does not occur, nor the title to 
it pass, in those cases, until the pay- 
ment is made; and so necessarily it is, 
constructively, a sale by. the assignee 
of so much of the wall. His right to 
the purchase money is not because he 
is the assignee of a covenant running 
with the land, but because he is the 
vendor of so much of the wall. Gibson 
V. Holden, 115 111. 199. See also 
Tomblin v. Fish, 18 111. App. 439; 
Standish v. Lawrence, iii Mass. in. 

Covenant a Personal Contract Only. — 
Cole V. Hughes, 54 N. Y. 444, s. u., 
13 Am. Rep. 611; Hart v. Lyon, 90 
N. Y. 663, Scott i>. McMillan, 76 N. 
Y. 141; Gibson v. Holden, 115 111. 199; 
s. V,., 56 Am. Rep. 146, affg. s. c, 16 111. 
App. 411; Behrens f. Hixie, 26 111. 
App. 417, Eckleman v. Miller, 57 Ind. 
88; Bloch v. Ishara, 28 Ind. 37; o. u., 
92 Am. Dec. 287; Kells v. Helm, 56 
Miss. 700. 

L, the plaintiff, owned a lot in fee; 
C held a contract for the adjoining lot; 
L erected a building upon his lot, and, 
by agreement with C, placed half of 
the partition wall on C's lot; and when 
C built upon his lot, he, and those de- 
riving title under him, were to pay L 
half the cost of the wall. C sold his 
interest to W, who obtained a deed 
from the owner of the fee. W then 
conveyed the lot to B, the defendant, 
allowing him a deduction of $100 from 
the purchase money, on account of the 
liability to L for half the wall. The 
deed to B contained this clause: "The 
above convej'ance is executed subject 
to the wall now standing on the north 
line of said lot, the party of the second 
part assuming all the liability under or 
by reason of any contract now existing 
in respect to said wall. B erected a 
building on his lot, using the partition 
wall. Held, that this was not an 
figreement, in terms, to pay L, or to 
pa3' for the wall or any part of it, but 
was simply an undertaking to assume 
W's liabilitj'. The parties thereby 
intended only to limit W's covenant, 
and to save him harmless from all per- 
sonal liability. Held, also, that the 
assignment from C of the contract for 



15 



Semedies. 



PARTY-WALLS. 



Bemedies. 



tions made for the benefit of one party only.^ 
V. Remedies. — See note 2. 



a deed, under which W obtained his 
title, imposed no personal liability 
upon him. ib. 

Held, also, that the deduction 
from the purchase money was not an 
admission of W's liability, but merely 
indicated that the parties were in 
doubt, and that B took the risk, for 
that consideration. Lester v. Barron, 
40 Barb. (N. Y.) 297. 

1. List V. Hornbrook, 2 W. Va. 340; 
Campbell v. Mesier, 4 Johns. Ch. (N. 
Y.) 335; s. c, 8 Am. Dec. 570. 

A was lessee for ninety-nine j'ears of 
premises in the city of London, the 
whole of which were underlet by him 
for improved rents to persons who took 
each an interest in his portion of them 
greater than that of a tenant from year 
to year. Held, that A, was, neverthe- 
less, liable, as an "adjoining owner," to 
contribute to the expense of repairing 
or rebuilding a party wall by his neigh- 
bor, under the metropolitan building 
act, 18 and 19 Vict., c. 122. Hunt v. 
Harris, 19 C. B. (N. S.) 13. 

Where one of the proprietors of a 
dangerous party wall neglected to join 
in making repairs. Held, that he 
could not recover for anj' inconven- 
ience occasioned by the other party 
making such repairs with due care and 
dispatch. Crawshaw v. Sumner, 56 
Mo. 517; Partridge v. Gilbert, 15 N. 
Y. 601; s. c, 69 Am. Dec. 632. 

Landlord and Tenant. — The tenant of 
a house covenanted in his lease to pay 
a reasonable share and proportion of 
supporting, repairing and amending all 
party-walls, and to pay all taxes, duties, 
assessments, and impositions, parlia- 
mentary and parochial, "it being the 
intention of the parties that the land- 
lord should receive the clear yearly 
rent of je5o ' in net money, without any 
deduction whatever." During the 
lease the proprietor of the adjoining 
house built a party-wall between that 
house and the house demised under the 
statute. Held, that the tenant (not the 
landlord) was bound to pay the moiety 
of the expense of the party wall. Bar- 
rett V. Bedford (Duke), 8 T. R. 602. 

A tenant under covenant to repair 
could not maintain an action under the 
statute, against his landlord, for a 
moiety of the expense of re-building a 
party-wall, which, being out of repair, 
the tenant pulled down and rebuilt at 



16 



the joint expense of himself and the 
occupier of the adjoining house, to 
whom he had given the notice required 
by the statute, in his landlord's name, 
but without his authority. Pizey v. 
Rogers, R. & M. 357. 

2. Injunction. — An injunction will be 
granted to restrain the owner of one- 
half of an ancient solid party-wall, long 
used for the support of buildings 
erected on each side of it, from cutting 
away a portion of its face, and erecting 
a new wall upon his own land at a dis- 
tance of two inches from that portion 
of the ancient wall which is left stand- 
ing, and connected with it by occasional 
projecting bricks and ties. Phillips v. 
Bordman, 4 Allen (Mass.) 147. 

Kemedy for Obstruction. — If one of 
two tenants in common of a party-wall 
excludes the other from the use of it by 
placing an obstruction on it, the only 
remedy of the excluded tenant is to re- 
move the obstruction. Watson v. 
Gray, 14 Ch. D. 192; 49 L. J., ch. 243; 
42 L. T. 294; 28 W. R. 438; 44 J. P. 
53^; Cubitt V. Porter, 2 M. & R. 267; 
8 B. &. C. 257. 

Cboice of Remedies. — A proceeding at 
law, which set out a contract and 
sought to enforce it, for the purpose of 
recovering one-half of the cost of 
building the party-wall, was practically 
as effectual as a bill for the specific exe- 
cution of the contract. Under it the 
plaintiff obtained a judgment for money 
due to him, while the defendant is pro- 
tected in his right to the conve3'ance of 
the land he purchased. Ensign v. 
Sharp, 72 Ga. 708. See also Rindge 
V. Baker, 57 N. Y. 209; s. c, 15 Am. 
Rep. 475. 

Damages. — Loss of profits, conse- 
quent upon such a trespass (in this case 
want of due care during alteration) are 
properly allowed as an item of damages, 
provided they are such as might natur- 
ally be expected to follow from the 
wrongful act, and are certain, both in 
their nature and in respect to their- 
cause. 

Where a business has been partially- 
interrupted, because of the trespass, it 
is competent to prove upon the ques- 
tion of damages the amount of business, 
previously done, and how much less, 
the business was during the months, 
when the injury occurred than during 
the corresponding months of the pre- 



Definition. 



PASS. 



Definition; 



VI. Practice and Procedtibe, — See note i. 

PASS. — (See TICKETS AND FARES.) — I. In speaking of con- 
veyances or sales, that is said to pass which is transferred from 
one party to the other, by force of the instrument or contract. 
Thus the title is said to pass by delivery of the deed ; appurte- 
nances are said to pass by a conveyance of a lot and buildings ; 
and, by another form of the expression, the deed, the delivery, 
etc., is said to pass. the lands or the goods. *^ 



vious year, and the profits upon the 
business; and where the evidence is 
sufficient to show that the falling off of 
business was in consequence of the 
wrongful acts of the defendant, the loss 
of profits thus established is a proper 
item of damages. Schile v. Brokhahns, 
80 N. Y. 614. 

1. Proper Parties. — An administrator 
may properly bring an action on a 
party-wall agreement. Burlock v. 
Peck, 2 Duer (N. Y.) 90. 

If a party-wall be used by devisees, 
an action for contribution must be 
brought against them and not against 
personal representatives. Keteltas v. 
Penfold, 4 E. D. Smith (N. Y.) 122. 

In an action by one joint owner of a 
party-wall to compel the removal of an 
addition made by his co-owner, the 
mortgagees of defendant's lot are prop- 
erly allowed to become parties defend- 
ant, as they are interested in resisting 
plaintiffs claim. Everett v. Edwards 
(Mass.) 22 N. E. Rep. 52. 

Where a contractor was to obtain 
one-half of his compensation for build- 
ing a party-wall from the adjoining 
owner, the legal title to the wall being 
in the builder. Held, that the builder 
was a trustee of the contractor, and if 
the builder sold with notice to the pur- 
chaser of the agreement, the purchaser 
becomes substituted as trustee and the 
contractor must bring his action in the 
name of the substituted trustee, but if 
the builder sold without notice to the 
purchaser, then the contractor must sue 
the builder for monej' had and received. 
Roberts v. Bye, 30 Pa. St. 375; s. c, 72 
Am. Dec. 710. 

Form of Action. — On a count for 
money laid out and expended, the plain- 
tiff cannot recover one-half the value 
of a party-wall used \iy the defendant, 
but only one-half the money actually 
expended. Peck v. Day, i N. Y. Leg. 
Obs. 312. 

An action on the case is the prop- 
er remedy by one tenant in com- 
mon of a party -wall against his co-ten- 



ant, for an injury to the wall and the 
house of the plaintiff of which it forms 
a part, caused by the negligence and 
want of skill on the part of his co-ten- 
ant in making an excavation on his 
own land. Moody v. McClelland, 39 
Ala. 45. 

Trespass does not lie by one part 
owner or tenant in common against the 
other. Cubitt v. Porter, 2 M. & R. 
267; 8 B. & C. 257; Wiltshire v. Sid- 
ford, I N. & R. 403. 

Statute of Limitations. — The right to 
recover for a share of the money ex- 
pended in building a party wall may be 
barred by the statute of limitations. 
List V. Hornbrook, 2 W. Va. 340. 

Nature of Eight to Contribution. — The 
right to recover under a covenant of 
contribution is a chose in action. Mc- 
Donnell V. Culver, 8 Hun (N. Y.) 155. 

The right to recover on a covenant of 
contribution is subject to attachment 
and execution. Davids v. Harris, 9 
Pa. St. 501. 

Sufficiency of Proof. — In order to re- 
cover a portion of the cost of a party- 
wall, an agreement to contribute must 
be proved, and it is not sufficient to 
allege that the agreement is not in the 
plaintifFs possession and therefore he 
cannot state its terms. An agreement 
must be shown by some proper aver- 
ment that it contains provisions giving 
title to relief. McCord v. Herrick, 18 
111. App. 423. 

2. Abb. L. Diet. See generally 
Sales; Assignment, vol. i, p 826; 
Conveyances, vol. 4, 123. 

Rev. Stats, of Mo., § 2199, provides 
if the testator shall "by will pass any 
real estate to his wife, such devise shall 
be in lieu of dower." Held, that the 
word "pass" in the statute means de- 
vise and nothing else. Young v. 
Boardman, 97 Mo. 181. See also Gant 
V. Henley, 64 Mo. 162. 

The mere endorsement and delivery 
of a bill of lading by way of pledge for 
a loan, does not ^^fass tfie propertj' in 
the goods," in the sense of a statute, 



18 C. of L- 



17 



Definition, PASS BOOKS— PASSPORT. Definition, 

2. Likewise a bill or resolution pending before a deliberative or 
legislative body is said to pass, or to be passed, when all the 
requisites to effect assent have been finally and formally given. A 
bill has passed the House or the Senate when the majority of 
either has voted for it, and this has been duly attested by the 
presiding officer. It may be said to have passed when both 
houses have voted for it, though it has not received executive ap- 
proval, if the connection shows this is excluded ; but generally, "to 
pass," or " passed," applied to a law, includes approval of the 
Crown, President, or Governor. '^ 

3. When the offenses of forgery or counterfeiting are under 
discussion, to pass is to circulate, put forth, or utter the counter- 
feit or forged coin or instrument.^ 

PASS BOOKS.— (See ACCOUNT STATED, vol. i, p. 124.)— A 
book used by merchants with their customers, in which an entry 
of goods sold and delivered to a customer is made. It is kept 
by the buyer, and sent to the merchant whenever he wishes to 
purchase any article. It ought to be a counterpart of the mer- 
chant's books, as far as regards the customer's account.^ 

PASSENGEES. — See Carriers of Passengers ; Sleeping 
Cars ; Tickets and Fares. 

PASSPORT.^See also Sea Letter). — i. A paper containing a 
permission from the neutral state to the captain or master of a 
ship or vessel to proceed on the voyage proposed. It usually 
conta^ins his name and residence ; the name, property, description, 
tonnage, and destination of the ship ; the nature and quantity of 
the cargo; the place from whence it comes, and its destination, 

which provides that everj- endorsee of 2. Abb. L. Diet. See also CouN- 

a bill of lading, "to whom the property terfeiting, vol. 4, p. 333. 

in the goods therein mentioned shall "Now Passed." — An indictment al- 

fass" shall have transferred to him all leged that an offence was committed 

the rights of suit, and be subject to the on a certain day of September "now 

same liabilities in respect of such goods, passed," it was held, that the time was 

as if the contract contained in the bill not stated with sufficient certainty ; as 

of lading had been made with himself, this does not in terms or by reference 

Sewell V. Burdock, 10 App. Cas. 74. state any year. Commonwealth v. 

1. Abb. L. Diet. Flynn, 3 Cush. (Mass.) 525. 

An act of the legislature is passed, ■ 3. Bouvier's L. Diet. See generally 

only when it has gone through all the Account and Account Stated, 

forms made necessary by the constitu- vol. i, p. 108, no. 

tion to give it force and validity, as a Among bankers, the term pass-book 
binding rule of conduct for the citizen, is given to a small book made up from 
Whether it receives the signature of time to time from the banker's ledger 
the governor, or remains in his hands and forwarded to the customer; this is 
unreturned for ten days, or being not considered as a statement of ac- 
vetoed, is carried by two-thirds of both count between the parties; yet when 
houses, its passage is dated from the the customer neglects for a long time 
time it ceased to be a mere proposition to make any objection to the correctness 
or bill, and passed into a law. Whart- of the entries he will be bound by them, 
man v. Philadelphia, 33 Pa. St. 208. Bouvier's L. Diet. See alio Ac- 
See also Chumasero t;. Potts, 2 Mont, count Stated, vol. i, p. 11;^, n. ; 
285. Gifts, vol. 8, pp. 1345, 1349, „. 

IS 



Definition. 



PASSPORT— PA TENT FOR LAND. 



Definition, 



with such other matters as the practice of the place requires. ^ 

2. A document granted in time of war to protect persons or 
property from the general operation of hostilities.** 

3. In most countries of Continental Europe passports are given 
to travelers. These are intended to protect them on their jour- 
ney from all molestation while they are obedient to the laws. 
The Secretary of State may issue, or cause to be issued in foreign 
countries by such diplomatic or consular officers of the United 
States, and under such rules as the President may prescribe, pass- 
ports, but only to citizens of the United States.* 

PATENT AMBIGUITY.— See Ambiguity, vol. i, p. 527. 

PATENT FOR LAND.— See Public Lands. 



1. Bouvier's L. Diet. 

Passport and Sea-letter (Distin- 
guished). — The former is a permission 
from a neutral state, to a master of a 
ship, to proceed on the voyage pro- 
posed, and usually contains his name 
and residence, the name, description 
and destination of the ship, with such 
other matters as the practice of the 
place requires. The sea-letter speci- 
fies the nature and quantity of the 
cargo, the place from whence it comes, 
and its destination. Sleght v. Harts- 
horne, 2 Johns. (N. Y.) 543. See also 
Sea-Letter. ■ 

2. Bouv. L. D. ; Wheat. Int. Law 475; 
I Kent 161. 

3. Bouvier's L. Diet. See i Kent 
162, 182; Urtetiqui v. D'Arhel, 9 Pet. 
(U. S.) 692. 

"A passport, or sea-letter, is a well- 
known document in the usage of mari- 
time commerce, and is defined to be a' 
permission from a neutral state to the 
master of a ship to proceed on his pro- 
posed voyage, usually containing his 
name and residence, and the name, 
property, tonnage and destination of' 
the ship. Although it evidences the- 
permission of the State to navigate the 
seas, yet it does not, therefore, follow, 
that it must issue directly from the su- 
preme power of the State ; and some 
authority ought to be shown- to sup- 
port such a position. This erroneous 
notion, probably, arises from the prac- 
tice of our own country, "which is dif- 
ferent from all other nations. Previ- 
ous to the year 1793, no other dofcu- 
ments were furnished to the merchant 
vessels of the United States but the 
certificate of registry and clearance ; 
but the depredations upon our com- 
merce having commenced with the 



European war which broke out in that 
year, a form of sea-letter was devised, 
and to give it greater effect, was signed 
by the President. On the 28th of No- 
vember, 1795, a treaty was made with 
Algiers, by which a passport was to pro- 
tect our vessels frooi capture by Al- 
gerian cruisers. By the act of the ist 
of June, 1796, ch. 339, Congress author- 
ized the Secretary of State to prepare 
a form, which, when approved by the 
President, should be the form of pass- 
port. Neither the treaty nor the law 
required the President's signature, but 
the form prepared was signed by the 
President, as the sea-letter had been. 
But this, our peculiar practice, forms 
no rule of conduct obligatory on oth- 
ers ; and will not authorize us to give 
a more restricted meaning to the term 
used in a treaty than the general usage 
of nations will warrant. The word 
passport, thus used, is taken from the 
same word, signifying a permission 
given to individuals to remove from 
one place to another, and the docu- 
ments are analogous. Vattel states, 
that, ' like every other act of supreme 
cognizance, all safe-conducts or pass- 
ports flow from the sovereign author- 
ity ; but the prince may delegate to his 
officers the power of furnishing them, 
and with this they are invested, either 
by express commission, or in conse- 
quence of the nature of their function. 
A general of an army, from the nature 
of his post, can grant them ; and as 
they are derived, though mediately, 
from the same prince, all his generals 
are bound to respect them.' So also 
Blackstone speaks of the offense of vio- 
lating passports or safe-conducts grant- 
ed by the king or his ambassadors." The 
Amiable Isabella, 6 Wheat. (U. S.) 15. 



19 



Synopsis. 



PA TENT LA W. 



Synopsis. 



PATENT LAW — See also DEDICATION, vol. 5, p. 395 ; INFRINGE- 
MENT, vol. 10, p. 726; Invention, vol. 11, p. 780; License in 
Patent Law, vol. 13, p. 557. 



I. Property Right in an Unpat- 
ented Invention, 23. 
II. Constitutional Provisions, 23. 

III. Power of Congress Over the 

Grant of Patents, 23. 

IV. Patent Office, 24.. 

1. Bstablishjnent,2\. 

2. Oncers, 24. 

3. Duties of Commissioner, 2i^. 

4. Qualification and Duties of 

Examiner-in- Cltief, 25. 
^. Practice of Patent Office, 25. 

6. Caveats, 25. 

(a) Who May File, 25. 

{b) Duties of Patent Office, 

(c) Purpose of Caveat, 25. 

7. Petition, 26. 

8. Model, 26. 

9. Oath, 26. 

10. Specification, 2'j. 
(a) Generally, 27. 

{b) Special Rules Relating to 
Composition of Mat- 
ter, 27. 

(c) Special Rules Relating to 
Combination, 27. 

{d) Clearness, 27. 

11. Claim, 29. 

(fl) Claim and Specification, 
29. 

12. Drawing, 29. 

13. Examination, 30. 

14. Rejection and Amendment, 

3°- 

15. Delay in Patent Office, 30. 

16. Testimony for Use in Patent 

Office, 31. 

17. Interference, 31. 

(a) When it Arises, 31. 

(i) Practice in Interference 
Cases, 32. 

(c) Effect of Decision in In- 
terference Cases, Tp.. 

18. Appeal, 32. 

(a) In Patent Office and Su- 
preme Court District 
of Columbia, 32. 

(5) Practice on Appeal, 32. 

(c) Bill in Equity to Compel 
Issue of Patent, 33. 

19. Issue of Patents, 34. 

20. Disclaimer, 34. 

(a) What Can be Disclaimed, 

34- 
(5) Disclaimer Generally, 34. 
(c) 5y Whom Made, 35. 
((f) r/Me Within Which Dis- 



claimer Must be Made, 

35- 
(«) Effect of Disclaimer, 36. 
21. Reissue, 36. 

(«) When Patent Can be 

Surrendered, 36. 
(i) Surrender, 37. 
(c) Action of Commissioner 
in Granting Reissue; 
Ho-w Far Revieivable 
in the Court, 39. 
(</) What Can be Included in 

a Reissue, 40. 
' (e) Combination, P r oce s.s. 

Product, Machine, 44. 
(/) Estoppel, ^6. 

(i) -Sy Matters in the 
I Application for u 

Patent, 46. ' 
(2) By Abandonme7it,\(i. 
(g) Reasonable Time in Ap- 
plying for Reissue, 47. 
(//) Partial Invalidity, 48. 
(0 Reissued Patent, ^S. 
V. Novelty, 49. 

1. Definition of Patentable nov- 

elty, 49. 

2. Presumption of N ov elty; 

Novelty Essential to Pat- 
entability, 51. 

3. Intrinsic Evidence of Nov- 

elty, 51. 

4. Date of an Invention, 52. 

(a) ylj Bet-ween Rival In- 
ventors, 52. 

5. Diligence, 53. 

6. Anticipation, 53. 

(a) ^jy Invention of Third 

Parties, 53. 
(J) Experiment, 55. 
(c) Concealed Invention, 57. 
(rf) .Sjy Publication, 57. 
(e) Knowledge of Prior De- 
vice or Description, 59. 
(/) Afa.s;; Se T'rjo;- to Date of 
Invention, 59. 

7. Novelty -with Reference to 

Foreign Inventions, 59. 

8. Novelty with Reference to 

Combinations, 60. 
VI. Public Use, 60. 
VII. Utility, 62. 

1. General Principles, i>2. 

2. Degree of Utility Requisite, 

f'3- 

3. Presumption of Utility, 64. 
VIII. Dates of Applications for Pat- 
ents, 64. 



20 



Synopsis. 



PA TENT LA W. 



Synopsis, 



IX. Power of States Over Patent 

Rights, 65. 
X. Subjects of Invention, 66. 

1. Art or Process, 66. 
(a) Definition, 66. 

\b) Novelty of- Mechanical 
Means Not Necessary, 
66. 

(c) Not an Art, 67. 

2. Machine, 68. 

(a) Definition, 68. 

3. Composition of Matter, 68. 

4. Improve7nent, 6g. 

XI. Actions Concerning Patents, 
70. 

1. Jurisdiction of State Courts, 

70. 
(a) Contractual, 70. 
{b) Torts, 70. 

2. Jurisdiction of United States 

Courts, 70. 
(a) Generally ; Parties, 71. 
(5) Action at Law; Decla- 

■ ration, 73. 
(c) 5m!V « Equity, 74. 
(i) Foundation, 74. 
(2) When Courtof Equity 
Will Take Juris- 
diction, 74. 
(rf) .SjY/ /k Equity, 76. 
(i) Certainty, 76. 
(2) Multifariousness, *](y. 
(e) Motion for Preliminary 
Injunction, 77. 
(i) General Principles, 

11- 

(2) T'!//e ««(/ Adjudi- 

cation, 78. 

(3) Favorable Decision in 

Interference, 79. 
.(4) Adjudications Not 
Warranting Pre- 
liminary Injunc- 
tion, 80. 

(5) Plaintiff'' s Laches, 81. 

(6) Willingness of De- 

fendant to Accept 
License, 81. 

(7) Ability of Defendant 

to Respond in Dam- 
ages, 82. 

(8) Contractual Relation 

Betvjeen the Par- 
ties, 82. 

(9) Infringement Not 

Clear, 82. 

(10) Public Acquiescence, 

83- 

(11) Former Construction 

Folio-wed, 84. 

(12) Power of Court to 

Impose Conditions, 



{f) Provision in Decree for 
Dissolving Injunction, 

8S- 
XII. Defenses to Action for Infringe- 
ment, 85. 

1. Statutory, 85. 

(«) As to the Specification, 

{b) Prior Patent or De- 
scription, 86. 

(c) Public Use, 86. 

(d) Surreptitiously Obtain- 

ing a Patent, 86. 
((?) Abandonment, 87. 
(/) Lack of Utility, 87. 

2. Notice of Special Defenses, 

(a) Where Prior Invention, 
Knowledge or Public 
Use Is Alleged, 88. 

3. Not Statutory, 89. 

{a) Statute Not A 11 Embrac- 
ing, 89. 

{b) Defenses in Relation to 
the Grant of the Patent 
or the Application, 90. 

(c) License or Release; 
Estoppel, 90. 

(rf) Expiration or Repeal of 
Patents, 91. 

(1) Prior Foreign Pat- 

ents to Inventor, 91. 

(2) Limitation of Term 

Because oj Prior 
Foreign Patent, 
92. 
(e) That the Subject Matter 

is Unpatentable, 93. 
( f) Lack of Invention, 93. 
(g) Patent Different from 

Application, 94. 
{h) Reissue Invalid, 94. 
(z) Unlawful Extension, <^\. 
(j) Unlawful Amendment by 

Representative, 94. 
{k) Lack of Title in Plaintiff 

to Bri7ig Suit, 94. 
(/) Non-infringement, 95. 
{m) Limitations, 95. 

4. Defenses to Costs and Dam- 

ages, 95. 

5. Estoppel of Defendant to Set 

Up Certain Defenses, 95. 

XIII. Plea in Equity, 96. 

XIV. Demurrer, 97. 
XV. Answer, 98. 

1. Responsively and as Defense, 

98. _ [99.] 

2. Exceptions and Replications, 

3. Amendment of Answer , cy). 
XVI. Motions, 100. 

XVII. Evidence, loi. 

1. Answer as Evidence, loi. 



21 



Synopsis, 



PA TENT LA W. 



Synopsis. 



9' 
XVIII. 

I. 

2. 

4- 
5- 



2. Presumption, loi. 
(a) Relating to Patents, loi. 
{b) Presumption of Non-in- 

Jriiige7nent, 102, 

3. Judicial Notice, 103. 

4. Docutnentary Evidence, 104, 
(a) Certified Copies, 104. 
(6) Other Documents, 104. 

(c) i^zVe Wrapper and Con- 
tents, 104. 

5. Exhibits, 105, 
(a) Prior Devices, 105. 
(^) Model of the Invention, 

lOj. 

6. Expert Evidence, 105. 

(d) Relevancy, 105. 
(i) Irrelevancy, 105, 

7. Evidence of the State of the 
. Art, 106. 

8. Evidence of Prior Use or 
Lack of Novelty, 107. 

Privilege, 108. 

Practice, 108. 

Generally, 108. 

Cross-bills, 109. 

i?;7/ o/" Revivor, 109. 

Stare Decisis, no. 

./?e.y Judicata and Lis Pen- 
dens, III. 

Trial at Law, 112. 

Final Injunction; When 
Granted, 112, 

i\^ew Trial and Arrest of 
Judgment, 115. 

Re-hearing, 115. [117, 

Proceedings on Accounting, 

Costs, 1 18. 

Bills of Revietu, 120. 

Attachment for Contempt, 

120. 
Extension of Patent, 122. 
Special Actions Relating to 
Patents, 123. 

1 . Bills to Restrain Suits 

Against the Customers of 
a Manufacturer, 123. 

2. Bills to Enjoin Libel of 

Patent Right, 124. 

3. Fraudulent Marking of an 

Article "Patented" 124. 
(«) Imitating the Name of 

Patentee, 124. 
(J>) Fraudulently Pirating 
the Name of Another'' s 
Patent, 125. 
(c) Fraudulently Marking 
an Unpatented Article, 
125. 
XXI. Marking Article "Patented " 
by Patentee, 126. 
XXII. Repeal of Patent, 127. 

1. By Act of Oivner of Inter- 
fering Patent, 127. 



XIX. 
XX. 



22 



2, Repeal of Patent from the 
United States, 127, 
XXIII. Property in Patents (See also 
License, vol. 3, p. 514), 128, 

1. Generally, 1 28. 

2. Kind oj Property, 128, 

3. Joint Owners, 129. 

4. Assign^nent, 130. 

(1) Definition, 17,0. 

(2) Definition of Grant, 130. 

(3) Rights a7td Liabilities of 

Territorial Grantee, 
130. 

(4) Requisites of Assign- 

ment, 130. 

(5) Formal Requisites of As- 

signment or Grant, 131, 

(6) Assignor, 132, 

(7) Execution and Proof of 

Assignment, 133. 

(8) Condition, 133. 

(9) Covenants, 133. 

'10) Implied Warrantee, 134. 

5. Assignment of Unpatented 

Invention, 134, 

6. Recording Contracts, 135. 
(i) What May be Recorded, 

135' 
(2) Effect of Recording, 136. 

7. Agency, 137. 

8. Other Contracts Respecting 

Patent Rights, 137. 
Royalty, 138, 

Actions on Contracts, iif). 
(i) SiiecificPerformatice,!^^. 
(2) Rescission of Contract, 

140. 
Defenses to Actions Growing 

Out of Contracts, 140. 
(i) Wa«^ o/ Consideration, 

140. 

(2) Breachof Warrantee, \\\. 

(3) Fraud, 142. 

(4) Defenses Pro Tanto, 142, 

(5) Z>?«A(/ q/" Vendee to Re- 
turn Patent, 142. 

Actions Arising Out of Fraud 
in Contract, 142. 

Claims Arising Out of Pat- 
ented Invention Prior to 
the Assignment, 143. 

Jurisdiction of Equity for 
Fraud and' Mistake, 143, 

Jurisdiction of Equity to En- 
force Discovery or Enjoin 
Violation of Agreement, 
143- 

Execution on a Patent Right, 
144, 

Insolvency and Ba7ikruptcy, 
144. 

Jurisdiction in Suits Over 
Patent Property^ 145. 



9- 
10. 



13- 



14- 
IS- 

16. 

17- 
18, 



Property Bight in an 



PA TENT LA W. 



Unpatented Invention. 



I. PaoPERTY Right in an Unpatented Invention. — An unpat- 
ented invention vests in the discoverer an inchoate right to its 
exclusive use.^ This right can be the subject of assignment** and 
other contracts and will be protected against those who, in breach 
of confidence, undertake to convert it to their own use or to be- 
tray it.* It can be made absolute by patenting it.* This right, 
however, does not extend to giving the inventor any rights 
against the public or those who, in good faith, acquire a knowl- 
edge of the invention." 

II. Constitutional Provisions. — Authority is given by the con- 
stitution to promote the progress of science and the useful arts, 
by securing to inventors for limited time the exclusive right to 
their discoveries.® 

III. Power of Congress Over the Grant of Patents. — The con- 
stitution vests in Congress alone the right to grant patents for 
inventions.' This power may be exercised, as it usually is, by 
general laws ; or Congress, in its discretion, may grant patents to 
inventors outside of the general law,* subject only to the limitation, 
that the grant must be to the inventor, or his legal representa- 



1. Gayler v. Wilder, lo How. (U. 
S.) 477; Evans v. Weiss, 2 Wash. (U. 
S.) 342; Jones V. Sewall, 6 Fish. Pat. 
Cas. 343. 

2. Gayler v. Wilder, 10 How. (U. 
S.) 477; Glum v. Brewer, 2 Curt. (U. 
S.) 506; Wright V. Randel, 19 Blatchf. 
(U. S.) 495 ; s. u., 21 Pat. Off. Gaz. 493; 
s. c, 8 Fed. Rep. 591. 

It makes no difference that the ma- 
chine was- imperfect at the time of 
sale, if the inventor agrees to perfect 
and patent it. Rathbone v. Orr, 5 
McLean (U. S.) 131. Nor does it 
matter that it was made after rejection 
by an appeal from the Commissioner 
of patents. Gay v. Cornell, i Blatchf. 
(U. S.) 506. Even if no letters patent 
could be obtained. Hammond v. 
Mason etc. Organ Co., 92 U. S. 724 ; 
s. c, 5 Pat. Off. Gaz. 31. 

3. ,Peabody W.Norfolk, 98 Mass. 452 ; 
Solomon v. Hertz, 35 Pat. Off. Gaz. 
1 109. 

Equity will take jurisdiction to en- 
join a breach of trust or contract simi- 
lar to its protection of trade secrets. 
Peabody v. Norfolk, 98 Mass. 452. 
See also Injunctions, vol. 10, p. 949. 

4. Gayler v. Wilder, 10 How. (U. 
S.) 477- 

5. Peabody v. Norfolk, 98 Mass. 
452 ; Marsh v. Nichols, 128 U. S. 605. 

The courts are without jurisdiction 
to issue an injunction against an in- 
fringer of an unpatented invention. 



Rein v. Clayton, 37 Fed. Rep. 354. 
Disapproving a decision to the con- 
trary in Butler -v. Ball, 28 Fed. Rep, 
754, where an injunction issued while 
the application for the patent was 
pending. 

Several circuit courts have de- 
clared that the inventor has no right 
of property in the invention until 
patented. Sargent v, Seagrave, 2 
Curt. (U. 8.) 553; Bx parte Robinson, 
4 Fish. Pat. Cas. 186; s. c, 2 Biss. (U. 
S.) 309; Wheaton v. Peters, 8 Pet. 
(U.S.)S9i. 

The supreme court has said the 
same thing but with the qualification : 
"No right of property ... on 
which he can maintain suit." Brown 
V. Duchesne, 19 How. (U. S.) 183. 
Or "No exclusive right." Gayler v. 
Wilder, 10 How. (U. S.) 477. 

6. Const. U. S., art. i, § 8. 

"Secure" does not mean the protec- 
tion of an acknowledged legal right, 
but the creation of a new one. 
Wheaton v. Peters, 8 Pet. (U. S.) 

591- 

However, the "securing" is suffi- 
ciently the securing of a right to make 
it unlawful for the United States to 
appropriate it without compensation. 
James v. Campbell, 104 U. S.' 356 ; 
United States v. Palmer, 128 U. S. 271. 

7. Const.U. S., art. i,§§ 6-8. 

8. Blanchard v. Sprague, 3 Sumn. 
(U. S.) 535; s. c, 2 Story (U. S.) 164; 



23 



Patent Office. 



PA TENT LA W. 



Establishment. 



tives, and must not take away a right of property in existing 
patents.^ 

IV. Patent Office— 1. Establishment. — The United States Pat- 
ent Office is an office in the Department of the Interior, and is 
the place where all records, books, drawings, specifications- and 
other papers relating to patents shall be safely kept and preserved. 
It must contain a library of such scientific works and periodi- 
cals, both American and foreign, as may aid the officers in the 
discharge of their duties. Various statutes provide for the dis- 
tribution of copies of specifications and drawings of patents, for 
lithographing drawings and for reports.* 

2. Officers. — The officers of the Patent Office are a Commissioner, 
an Assistant Commissioner, three Examiners-in-Chief and Exam- 
iners.^ All officers of the Patent Office are incapable of acquiring 
or taking patents, except by descent, while employed in the office.* 

3. Duties of Commissi^oner. — The Commissioner of Patents, under 
the direction of the Secretary of the Interior, superintends and 
performs all duties respecting the granting and issue of patents 
directed by law." 



Bloomer -v. Stolley, 5 McLean (U. S.) 
158. 

1. McClurg V. Kingsland, i How. 
(U. S.)202; s. c, 2 Robb Pat. Cas. 145. 

The power of Congress to grant an 
extended or new term is plenarj, and 
may be exercised by it in any way 
which may seem advantageous to it. 
Jordan v. Dobson, 4 Fish. Pat.* Cas. 
^ 332; Blanchard v. Haines, 6 West. L. 
J. 82 ; Blanchard's Gun Stoclc etc. 
Factory v. Warner, i Blatchf. (U. S.) 
258; Bloomer v. Stolley, $ McLean 
(U. S.) 158; Evans v. Robinson, i 
Carolina Law Rep. 209. 

A patent may be granted by Con- 
gress for an invention which was in 
public use and enjoyed by the com- 
munity at the time of the passage of 
the act granting the patent. Blanch- 
ard V. Sprague, 2 Story (U. S.) 
164; s. c, 3 Sumn. (U. S.) 535; s. c, i 
Robb Pat. Cas. 724 ; Evans v. Jordan, i 
Brock (U. S.) 248; s. c, 9 Cranch (U. 
S.) 199; s. c, I Robb Pat. Cas. 20; Jor- 
dan V. Dobson, 4 Fish. Pat. Cas. 
232 ; Blanchard's Gun-Stock etc. Fac- 
tory V. Warner, i Blatchf. (U. S.) 258 ; 
Yuengling v. Schile, 12 Fed. Rep. 97; 
Bloomer v. McQuervan, 14 How. (U. 
S.) 539; McClurg V. Kingsland, i 
How. •(U. S.) 202; s. c, 2 Robb Pat. 
Cas. 105; United States v. Burns, 12 
Wall. (U. S.) 252 ; Cammeyer v. New- 
ton, 94 U. S. 234; McKeever v. United 
States, 23 Pat. Off. Gaz. 1527. 



2. U. S. Rev. Stat., §§ 475-496. 

3. U. S. Rev. Stat., § 476. The suc- 
ceeding paragraphs of the statute 'de- 
fine the duties of the Commissioner. 

Residence. — The official residence of 
the Commissioner of Patents is 
Washington, D. C. Butterworth v. 
Hill, 114 U. S. 128. 

4. U. S. Rev. Stat., § 480. 

Inventions' toy Patent OfBce Em- 
ployees. — A person, however, who 
makes an invention before he comes 
into the governrnent's employ, does 
not forfeit his right. He cannot take 
out a patent while he is an employee, 
but can so soon as his employment 
ceases, and no change in his status is 
caused by the fact of his employment. 
Page V. Holmes etc. Tel. Co., 17 Pat. 
Off. Gaz. 737; s. c, I Fed. Rep. 304; 
s. c, 5 Bann. & Ard. Pat. Cas. 165. 

After the expiration of employment, 
a patent may be taken out even though 
the invention was made during the 
employment. And it may also be 
carried back to its actual date. Foote 
V. Frost, 3 Bann. & Ard. Pat. Cas. 607; 
s. c, 14 Pat. Off. Gaz. 860. 

B. U. S. Rev. Stat., § 481. And has 
charge of all books, records, papers, 
models, machines and other things be- 
longing to the Patent Office. Other 
statutory powers named in the imme- 
diately following sections are the 
classification of models, etc., and re- 
turning models in rejected cases. 



24 



Pateat Office. PA TENT LA IV. Examiners-in-Chief. 

4. ftualification and Duties of Examiners-in-Chief. — The Examiners- 
in-Chief must be persons of competent legal knowledge and 
scientific ability. Their duties are, on the written petition of the 
appellant, to revise and determine upon the validity of the adverse 
decisions of examiners upon applications for patents, and in in- 
terference cases. ^ 

5. Practice of Patent Office. — The Commissioner of Patents, sub= 
ject to the approval of the Secretary of the Interior, may, from 
time to time, establish regulations not inconsistent with -law for 
the conduct of proceedings in the ofifice.'* 

6. Caveats — {a) Who May File. — Any citizen of the United 
States, or any alien who has resided in the United States one year 
next preceding the filing, and who has made oath of his intention 
to become a citizen, who makes any new invention or discovery, 
and desires further time to mature it, may file a caveat.* This 
contains a description of the device with ^ts distinguishing features 
and a prayer for protection of the caveator's right until he shall 
have matured his invention.* 

{b) Duties of Patent Office. — Upon receipt of a caveat, it 
is filed in the confidential archives of the Patent Office and pre- 
served in secrecy, and is operative for one year from its filing.^ 

(c) Purpose of Caveat. — A caveat protects the inventor from 
the granting of any patent for an interfering application without 
his knowledge,® and gives the caveator, who has exercised due dili- 
gence in reducing his invention to practice, the right to carry 
back his invention to the date of the filing of the caveat.' 

1. U. S. Rev. Stat, § 482. When person desires to avail himself of his 
required by the Commissioner, th'By caveat, he shall file his description, 
shall hear and report upon claims for specifications, drawings and model 
extensions and perform such other du- within three months from the time of 
ties as he may assign to them. placing the notice in the post-ofEce 

2. U. S. Rev. Stat., § 483. in Washington, with the usual time 
Authority of These Rules. — "Con- required for transmitting it to the 

grass, in creating the Patent Office, caveator added thereto ; which time 

has, by express legislation, given that shall be endorsed on the notice, 

office the power to enact rules for its 6. Bell v. Daniels, i Fish. Pat. Cas. 

conduct. Those rules, if within the 372; 5. c, i Bond (U. S.) 212; Allen 

powers of the office, are as authoritative v. Hunter, 6 McLean (U. S.) 303; 

as the laws of Congress itself within American etc. Pavement Co. v. Eliza- 

the limitation of its powers. United beth, 6 Fish. Pat. Cas. 424; Hildreth 

States V. Thacher, 7 Pat. Off. Gaz. 603. v. Heath, Cranch Pat. Dec. 96; s. c, 

3. U. S. Rev. Stat., § 4902. vol. 2, Pat. Off. R,ep. of 1847, p. 804. 

4. U. S. Rev. Stat., § 4902. A patent for the same invention as 

5. U. S. Rev. Stat., \ 4902. "And that described in the caveat granted 
if application is made within one year during the pendency of the caveat is 
by any other person for a patent vrith not void. Cochrane v. Waterman, 
which such caveat would in any man- Cranch Pat. Dec. 121. 

ner interfere, the Commissioner shall The proper practice Vvhere a caveat 
deposit the description, specification, is accidentally overlooked, and a pat- 
drawings and model of such applica- ent granted to another during its 
tion in like manner in the confidential pendency, is to grant a patept to the 
archives of the oifice, and give notice caveator. Phelps v. Brown, i Fish. 
thereof, by mail, to the person by Pat. Cas. 479; s.c, 4Blatchf. (U.S.) 362. 
whom the caveat was filed. If such 7. American etc. Pavement Co. v, 

25 



Patent Office. 



PA TENT LA W. 



Petition, 



7. Petition. — An inventor must make application in writing to 
Commissioner of Patents for a patent for his invention. ^ 

8. Model.— In all cases which admit of representation by a model, 
a model of convenient size to exhibit the parts of the device,* and, 
when the invention is of a composition of matter, specimens of 
the ingredients and of the composition in sufificient quantity for 
experiment,^ shall be furnished by the applicant if required by the 
Commissioner.* 

9. Oatk — Contents.^The applicant must make an oath, that he 
does verily believe himself to be the original and first inventor of 
the invention for which he solicits a patent, that he does not be- 
lieve the same was ever before known or used, and shall state of 
what country he is a citizen.^ 

Officer to Administer . — In the United States, any officer author- 
ized by law to administer oaths. When the applicant resides in a 
foreign country any minister, charge d'affaires, consul, or commer- 



Elizabet-h, 6 Fish. Pat. Cas. 424; 
Phelps V. Brown, i Fish. Pat. Cas. 
479; s. c, 4 Blatchf. (U. S.) 362; Allen 
V. Hunter, 6 McLean (U. S.) 303 ; Hoe 
V. Kahler, 12 Fed. Rep. tii. 

It is not necessary for an applicant 
who desires to carry his invention 
back of the date of its perfection and 
reduction to practice, to have a caveat 
filed in order to be able to anticipate 
one who has in the meantime per- 
fected his invention, or even obtained 
a patent. Hildreth v. Heath, Cranch 
Pat. Dec. 96; s. c, vol. 2, Pat. Off. Rep. 
of 1847, p. 804. 

Caveat Not a; Substitute for Diligence 
in Reduction to Practice. — A caveat 
will not protect an imperfect inven- 
tion in perfecting which, due diligence 
has not been employed, against one 
who has subsequently made the same 
invention and reduced it to practice 
in a practical machine. Johnson v. 
Root, I Fish. Pat. Cas. 351. Nor 
against an intervening public use. 
Bell V. Daniels, i Fish. Pat. Cas. 372; 
s. c, I Bond (U. S.) 212. 

Caveat Not an Admission tbat tlie 
Invention is Imperfect. — A caveat is 
not conclusive evidence that the in- 
vention is imperfect. A person may 
choose to file a caveat while he is go- 
ing on and making improvements 
upon an invention which he has al- 
ready completed so that it is of practi- 
cal utility. Johnson v. Root, i Fish. 
Pat. Cas. 351. 

Caveat by Sole Inventor Does Not Es- 
top Him from Declaring Invention Joint. 
— A caveat in the name of a sole in- 
ventor does not estop him and others 



26 



who have in fact made the invention, 
from carrying back the date of the 
joint invention to the date of the 
caveator's filing. Hoe v. Kahler, 12 
Fed. Rep. iii. 

1. U. S. Rev. Stat., § 4888; Hogg v. 
Emerson, 6 How. (U. S.) 437. 

2. U. S. Rev. Stat., § 4891. 

3. U. S. Rev. Stat., ^ 4890. But the 
fact that such was not in reality fur- 
nished when required, does not invali-- 
flate the patent. Tarr v. Folsom, i 
Holmes (U. S.) 313; s. c, 5 Pat. Off. 
Gaz. 92; s. c, I Bann. & Ard. Pat. Cas. 
24; Badischeetc. Fabrikti. Cochrane, 16 
Blatchf. (U.S.) 155; s. u., 4 Bann. & 
Ard. Pat. Cas. 215. 

4. U. S. Rev. Stat., §§ 4890, 4891. 

5. U.S. Rev. Stat., § 4892. 

The omission to take an oath does 
not affect the validitj' of the patent. 
Whittemore v. Cutter, i Gall. (U. S.) 
429; s. c, I Robb Pat. Cas. 28; Crompton 
V. Belknap Mills, 3 Fish. Pat. Cas. 
536; Dyer v. Rich, i Met. (Mass.) 180. 

A recital in the patent that necessary 
oath was taken, is conclusive. Sey- 
mour V. Osborne, 11 Wall. (U. S.) 516; 
De Florez v. Reynolds, 14 Blatchf. (U. 
S.) 505; s.c.,3 Bann.& Ard. Pat. Cas. 292. 

But a broadening of the application 
after the death of the patentee without 
a new oath by the administrator renders 
the patent void. Eagle Mfg. Co. v. 
West etc. Mfg. Co., iS Blatchf. (U. S.) 
218; s. c, 2 Fed. Rep. 774; s. c, 5 Bann. & 
Ard. Pat. Cas. 475; s. c, 17 Pat. Off. Gaz. 
1504. The jurat need not be dated. 
French v. Rogers, i Fish, Pat. Cas. 133. 

A change of words in a claim not 
broadening the invention but making it 



Patent Of9.ce. 



PA TENT LA W. 



Specification, 



cial agent holding commission under the United States, or notary 
public of the country.* 

. By Whom Taken. — The oath is taken by the inventor if living,* 
otherwise by his administrator or executor.* 

10. Specification — {a) Generally. — The specification must con- 
tain a complete description,* but the drawings and models, if there 
are any, are to be taken into consideration in determining whether 
the specification is sufficiently clear," though the scientific prin- 
ciples on which the device operates need not be known to the 
inventor or set forth in the specification.® 

{b) Special Rules Relating to Composition of Matter. 
— The names of the ingredients, and, where the invention cannot 
be used to advantage without naming them, the proportions' must 
be stated. 

(c) Special Rules Relating to Combination. — In a com- 
bination the devices^of which it is composed must be named, their 
mode of operation given and the new result pointed out.* 

{d) Clearness. — An inventor must file in the Patent Office a 
written description of his invention and the manner and process 



clearer, does not require a new oath. 
Brush Electric Co. v. Julien Electric 
Co., 41 Fed. Rep. 679. 

1. U. S. Rev. Stat, § 4892. Seymour 
V. Osborne, 11 Wall. (U. S.) 516. 

2. U. S. Rev. Stat., § 4892. 
3.- U. S. Rev. Stat, § 4896. 

4. Brooks v. Jenkins, 3 McLean (U. 
S.) 432; Dixon V. Moyer, 4 Wash. (U. 
S.) 68; s. u., I Robb Pat Cas. 324; Head 
V. Stephens, 19 Wend. (N. Y.) 411; 
Wheeler v. Clipper Mower etc. Co., 6 
Fish. Pat Cas. i ; s.c, 10 Blatchf. (U. 
S.;i8i; s.c, 2 Pat Off. Gaz. 442. 

A specification is not sufficiently 
clear which requires experiment and 
the solution of a problem before the de- 
vice can be constructed. Webster 
Loom Co. V. Higgins, 105 U. S. 580; 
s. c, 16 Pat. Off. Gaz. 675. 

6. Singer v. Walmsley, i Fish. Pat. 
Cas. 558; Earl v. Sawj'er, 4 Mason (U. 
S.) I ; s. c, I Robb Pat. Cas. 491; Hogg 
V. Emerson, 6 How. (U. S.) 437; Bur- 
rail V. Jewett, 2 Paige (N. Y.) 134; 
Washburne v. Gould, 3 Story (U. S.) 
122; s. c, 2 Robb Pat. Cas. 206; Holt v. 
Kendall, 26 Fed. Rep. 622. 

But where a portion of the invention 
is not described at all in the specifica- 
tion, the fact that it is shown in the 
drawings is not sufficient. Gunn v. 
Savage, 30 Fed. Rep. 366. 

6. Cahill V. Beckford, i Holmes (U. 
S.) 48; Andrews v. Cross, 19 Blatchf. 
(U. S.) 294; s. c, 8 Fed. Rep. 269. 

A patentee is not confined to techni- 



cal terms. Hovey v. Stephens, 3 
Woodb. & M. (U. S.) 17; s. c, 2 Robb 
Pat. Cas. 567. 

A patent which is available for one 
use named by the inventor, is not in- 
valid because it is not applicable to an- 
other use. Phillips v. Risser, 26 Fed. 
Rep. 308. 

Specification has reference both to 
the technical "specification" and 
"claim." ■ Wilson v. Coon, 18 Blatchf. 
(U. S.) 532; s.c, 2 Fed. Rep. 611; s.c, 14 
Pat Offl Gaz. ^82; Badische etc. Fabrik 
V. Higgin, 15 Blatchf. (U. S.) 290; s. c, 
3 Bann. & Ard, Pat. Cas. 462; s. c, 14 
Pat. Off. Gaz. 414. 

7. Wood V. Underbill, 5 How. (U 
S.) I ; s. c, 2 Robb Pat. Cas. 588; Jenk 
ins V. Walker, i Holmes (U. S.) 120 
s. c, 5 Fish. Pat. Cas. 347; s. c, i Pat, 
Off. Gaz. 359; Tyler v. Boston, 7 Wall, 
(U. S.) 327. 

A general rule for proportions is suf- 
ficient. Wood ti. Underbill, 5 How. 
(U. S.) i; s. c, 2 Robb Pat Cas. 588; 
Goodj'ear v. Wait, 3 Fish. Pat. Cas. 242 ; 
s.c, 5 Blatchf (U. S.) 468; Francis v. 
Mellon, 5 Fish. Pat Cas. 153; s.c, i Pat. 
Off. Gaz. 48. 

Where the amount of an article in a 
compound can be varied without af- 
fecting the result except in degree, the 
direction to use "a small quantity" is 
sufficient. Brooker v. Dews, 3 Bann. 
& Ard. Pat Cas. 518; s.c, 15 Pat. Off. 
Gaz. 570. 

8. Seymour v. Osborne, 3 Fish. Pat. 



27 



Patent Office. 



PA TENT LA W. 



Specification. 



of making, constructing, compounding and using it, in such full, 
clear, concise and exact terms as to enable any one skilled in the 
art or science to which it appertains or with which it is most nearly, 
connected to make^ construct, compound and use the same.^ 



Cas. 5^5; Parks v. Booth, 102 U. S. 96; 
s. c, 17 Pat. Off. Gaz. 1089. 

1. U. S. Rev. Stat., § 48S8. Lowell 
V. Lewis, I Mason (U. S.) 182; s. c, i 
Robb Pat. Cas. 131; Wintermute v. 
Redington, i Fish. Pat. Cas. 239; 
Brooks 1). Jenkins, 3 McLean (U. S.) 
432; Page V. Terry, i Fish. Pat. Cas. 
298; Sejmour v. Osborne, 3 Fish. Pat. 
Cas. s.SS; Teese t;. Phe<ps, i McAll. (U. 
S.) 48;' Westlake v. Cartter, 6 Fish. Pat. 
Cas. 519; s. c, 4 Pat. Off. Gaz. 636; 
Smith V. Prior, 2 Sawy. (U. S.) 461; 
s. c, 6 Fish. Pat. Cas. 469; Mitchell v. 
Tilghman, 4 Fish. Pat. Cas. 299; Magic 
Ruffle Co. V. Douglas, 2 Fish. Pat. Cas. 
330; Page V. Ferry, i Fish. Pat. Cas. 
298; Singer v. Walmsley, i Fish. Pat. 
Cas. 5158; Hovey v. Stephens, 3 Woodb. 
& M. (U. S.) i7j s. c, 2 Robb Pat. Cas. 
567; Gray v. James, i Pet. (C. C.) 394; 
s. c, I Robb Pat. Cas. 120; Judson •;;. 
Moore, i Bond (U. S.) 285; s. c, i Fish. 
Pat. Cas. 544; Wayne v. Holmes, 2 Fish. 
Pat. Cas. 20; s. c, i Bond (U. S.) 27; 
Winans v. Schenectadj' etc. R. Co., 2 
Blatchf. (U. S.) 279; Grant D. Reymond, 
6 Pet. (U. S.)-2i8; s.c, i Robb Pat. Cas. 
604; Downton v. Yaeger Milling Co., 1 
McCrary (U. S.) 26; s. c, i Fed. Rep. 
199; s.c, 17 Pat. Off. Gaz. 106; Schneider 
V. Thill, 5 Bann. & Ard. Pat. Cas. 565. 

A specification is sufficientlj' clear if 
expressed in terms intelligible to per- 
sons skilled in the art to which it be- 
longs. Webster Loom Co. v. Higgins, 
105 U.S. 580; s.c., 2 1 Pat. Off. Gaz. 2031; 
Stillwell etc. Mfg. Co. v. Cincinnati 
Gas etc. Co., i Bann. & Ard. Pat. 
Cas. 610; s.c, 7 Pat. Off. Gaz. 829; Shive 
V. Keystone Standard Watcii Co., 
41 Fed. Rep. 434; Pullman Palace 
Car Co. V. Wagner Palace Car Co., 38 
Fed. Rep. 416; Libbey v. Mt. Wash- 
ington Gas Co., 26 Fed. Rep. 757. 

Thus where a patent is for a new 
manufacture, the law does not require 
that all its constituent parts be de- 
scribed. The description is sufflcient, 
if it enables those who use it and deal 
in it to recognize it. Badische etc. 
Fabrik v. Higgin, 15 Blatchf (U. S.) 
290; s. c, 3 Bann. & Ard. Pat. Cas. 462; 
s. c, 14 Pat. Off. Gaz. 414. 

Nor describe well known mechanical 
elements, sizes, proportional parts or 



absolute precision as to details. Brooks 
V. Jenkins, 3 McLean (U. S.) 432; 
Dorsey etc. Rake Co. v. Marsh, 6 Fish. 
Pat. Cas. 387; s. c, 9 Phila. (Pa.) 395. 

But they must be able to practice it 
without experiment. Lockwood v. 
Faber, 27 Fed. Rep. 63. 

Nor what is within the knowledge of 
any workman who may be employed to 
put up the apparatus or construct the 
machine. Page v. Ferry, i Fish. Pat. 
Cas. 298; Monce v. Adams, 12 Blatchf 
(U.S.) 7; s. c, 7 Pat.Off. Gaz. I77;s. c, 
I Bann. & Ard. Pat. Cas. 126; Pearce v. 
Mulford, 102 U. S. 112; s.c, 18 Pat. Off. 
Gaz. 1223; Kneass v. Schuylkill Bank, 
4 Wash. (U. S.) 9; s. c, I Robb Pat. Cas. 
303; Mowry v. Whitney, 5 Fish. Pat. 
Cas. 513; Hancock Inspirator Co. v. 
Lally, 27 Fed. Rep. 88. 

And the specification is sufficient if 
the invention can be constructed from 
it by the exercise of the mechanic's skill 
and judgment. Judson v. Moore, i 
Fish. Pat. Cas. 544; s. u., i Bond (U. S.) 
285; Swift V. Whisen, 3 Fish. Pat. Cas. 
343; s. c, 2 Bond (U. S.) 115; Mowry v. 
Whitney, 5 Fish. Pat. Cas. 513; Am 
Ende v. Seabury, 36 Fed. Rep. 593. 

Even if it omit to describe a part 
which any workman would supply. 
Union Paper Bag Co. w. Nixon, 6 Fish. 
Pat. Cas. 402; s. c, 4 Pat. Off. Gaz. 31; 
Stillwell etc. Mfg. Co. v. Cincinnati 
Gas etc. Co., i Bann. & Ard. Pat. Cas. 
610; s. c, 7 Pat. Off. Gaz. S29. 

Processes. — A chemical process must 
be sufficientl}' clear to be intelligible to 
a chemist. Am Ende w. Seabury, 36 Fed. 
Rep. 593; s. c, 47 Pat. Off. Gaz. 1354. 

Things Tliat a Patentee Need Not 
Specify. — The kind of power to be em- 
ployed or the means of applying it. Carr 
V. Rice, I Fish. Pat. Cas. 198; Lippin- 
cott V. Kelly, i West. L.J. 513; Water- 
bury Brass Co. v. Miller, 9 Blatchf. 
(U. S.) 77; s. c, 5 Fish. Pat. Cas. 48. 

The material of which the parts of a 
machine are made. Bailey Washing etc. 
Mach. Co. V. Lincoln, 4 Fish. Pat. 
Cas. 379; Brooks v. Bicknell. 3 McLean 
(U. S.) 250; s. c, 2 Robb Pat. Cas. 118; 
Aiken v. Bemis, 3 Woodb. & M. (U. 
S.) 348; s. c, 2 Robb Pat. Cas. 644. 

Persons to whom a patent specifica- 
tion must be clear and intelligible are 



28 



Patent Office. 



PA TENT LA W. 



Claim. 



He must state the best mode that he knows.^ 

11. Claim— (fl) Claim and Specification. — Where the claims 
are not ambiguous, they are to be taken to show the extent of the 
patent ;^ but where there is an ambiguity, reference to the specifi- 
cation may be made to remove the ambiguity. ** 

12. Drawing.-^Where a drawing is essential, the applicant shall 
furnish one copy thereof and another, furnished by the Patent 
Office, shall be attached to the patent as part of the specification.* 



practical workmen of ordinary skill in 
the particular business. Page v. Ferry, i 
Fish. Pat. Cas. 298; Smith v. O'Connor, 
6 Fish. Pat. Cas. 469; s. c, 4 Pat. Off. 
Gaz. 633; Mabie v. Hasken, 2 Cliff. (U. 
S.) 507; Lippincott v. Kelly, i West. 
L. J. 513; Brooks v. Bicknell, 3 Mc- 
Lean (U. S.) 250; s. c, 2 Robb Pat. Cas. 
118; Many r;. Sizer, i Fish. Pat. Cas. 
17; Mowry v. Whitney, 3 Fish. Pat. 
Cas. ii;7; Forbes v. Bardow Store Co., 
2 Cliff. (U. S.) 379. 

Acquainted with the state of the art. 
Tompkins v. Gage, 2 Fish. Pat. Cas. 
577; s. c, 5 Blatchf. (U. S.) 268; Tread- 
well V. Parrott, 3 Fish. Pat. Cas. 124; 
s. c, 5 Blatchf. (U.S.) 370. 

Defects of Clearness WMch Have Been 
Held Insufficient to Invalidate a Patent. 
' — Stating a fixed rule but stating that 
the rule can be departed from to some 
extent. Tilghman v. Werk, i Bond 
(U. S.) 511; s. i;., 2 Fish. Pat. Cas. 229. 
Where the specification is referred to 
as embracing the substantial form of 
the invention. Brown v. Guild, 23 
Wall. (U. S.) 181; s.c, 6 Pat. Off. Gaz. 
392; s. c, 7 Pat. Off. Gaz. 739. Exag- 
gerated eulogies, where the device is 
correctly described. Aultman v. Hol- 
ley, II Blatchf. (U. S.) 317; s. c, 6 Fish. 
Pat. Cas. 534; s. c, 5 Pat. Off. Gaz. 3; 
Fames v. Cook, 2 Fish. Pat. Cas. 146. 

Or anj' remote and extreme defect. 
Blanchard Gun Stock etc. Factory v. 
Warner, i Blatchf. (U. S.) 25S; Swift 
V. Whisen, 2 Bond (U. S.) 115; s. c, 3 
Fish. Pat. Cas. 343. 

Defects Which Have Been Stated to 
Invalidate. — Statements tending to de- 
ceive, in regard to the actual construc- 
tion of the thing claimed. Aultman v. 
Holley, 6 Fish. Pat. Cas. 534; s. c, 11 
Blatchf (U. S.) 317; ». u., 5 Pat. Off. 
Gaz. 3. 

1. U. S. Rev. Stat., ^ 4888. 

Magic RufHe Co. v. Douglas, 2 Fish. 
Pat. Cas. 330; Page v. Ferry, i Fish. 
Pat. Cas. 298. 

He need not state all the modes 
of carrying out his invention, if he 



states the best mode and adds that 
there are other modes which he consid- 
ers protected by his patent. Carver v. 
Braintree Mfg. Co., 2 Story (U. S.) 
432; s. t., 2 Robb Pat. Cas. 141 ; Dibble v. 
Augur, 7 Blatchf. (U. S.) 86; Blanch- 
ard V. Eldridge, i Wall. Jr. (p. C.) 
337 ; 2 Robb Pat. Cas. 737 ; 2 Whart. 

Dig- 358- 

Even if he does not describe the best 
way, his intention to do so is sufficient. 
Magic Ruffle Co. v. Douglas, 2 Fish. 
Pat. Cas. 330. 

2. Hazelden v. Ogden, 3 Fish. Pat. 
Cas. 378; Blades v. Rand, 27 Fed. Rep. 
93; Roemer v. Peddie, 27 Fed. Rep. 
702. 

A claim in letters patent cannot be 
enlarged beyond a fair construction of 
its terms. Haines v. McLaughlin, 135 
U. S. 58^.; Day v. Fair Haven R. Co., 
132 U. S'. 98. 

Peculiarities of construction will not 
be construed to be a distinctive por- 
tion of a claim in order to sustain 
their validity where neither the specifi- 
cations nor claims suggest that such 
peculiarities are a distinctive feature of 
the invention. Bradley etc. Mfg. Co. v. 
Parker Co., 25 Fed. Rep. 907; Roemer 
V. Newmann, 26 Fed. Rep. 102; West- 
ern Electric Co. v. Ansonia Brass etc. 
Co., 114 U. S. 447. 

3. Forbes v. Barstow Stove Co., 2 
Cliff. (U. S.) 379; Morris v. Barrett, i 
Fish. Pat. Cas. 461 ; s. c, i Bond (U.S.) 
254; Judson V. Moore, i Fish. Pat. 
Cas. 544; s. u., I Bond (U.S.) 2S5; Pitts v. 
Edmonds, 2 Fish. Pat. Cas. 52; s. c, i 
Biss. (U. S.) 168;. Union Sugar Refinery 
V. Matthiesen, 3 Cliff. (U. S.) 639; s. c, 
2 Fish. Pat. Cas. 600; Vogeley v. Noel, 
18 Fed. Rep. 827. 

Especially to the immediately associ- 
ated parts of the specification. La Rue 
V. Western Electric Co., 28 Fed. Rep. 88. 

But a claim repugnant to the specifi- 
cation, renders the patent void for am- 
biguity. Smith V, Murray, 27 Fed. 
Rep. 69. 

4. U. S. Rev. Stats., § 48S9. 



29 



Patent Office. 



PA TENT LA W. 



Examination. 



The drawing is a portion of the patent.^ 

13. Examination. — After the filing of an application and the pay- 
ment of the fees,^ the Commissioner of Patents shall cause an 
examination to be made.* 

14. Rejection and Amendment, — The Commissioner shall notify 
the applicant whenever any claim for a patent is rejected, and if, 
after such notice, the applicant persists in his claim for a patent, 
with or without altering* his specifications, the Commissioner 
shall order a re-examination.^ 

15. Delay in Patent Office. — A delay of more than two years after 
filing an application before preparing it for examination, or a fail- 
ure to prosecute the application within two years after any action 
therein, causes the application to be abandoned® unless the de- 
lay be satisfactorily explained.' The application must have the 
final fee paid within six months of the time it was passed and 



Filing drawings is not a condition 
precedent. Frencli v. Rogers, i Fish. 
Pat. Cas. 133. 

The drawings need not be working 
drawings, nor is it necessary' that a ma- 
chine made in accordance with them 
would work. American Hide etc. Co. 
V. American Tool etc. Co., i Holmes 
(U. S.) ,503; s. c, 4 Fish. Pat. Cas. 284. 

Nor need references be incorporated 
in the specification; if they are written 
on the drawings it is enough. Emer- 
son w. Hogg, 2 (Blatchf. (U. S.) i; or 
even without references, where the na- 
ture of the machine can be understood 
without them. Brooks v. Bicknell, 3 
McLean (U. S.) 250; s. c, 2 Robb Pat. 
Cas. 118; Washburne w. Gould, 3 Story 
(U. S.) 122; s. c, 2 Robb Pat. Cas. 206. 

1. Emerson v. Hogg, 2 Blatchf. (U. 
S.) i; Washburne v. Gould, 3 Storj' 
(U. S.)i22; s. c, 2 Robb fat. Cas. 206. 

2. Each original application, except 
for design, $15. In design cases, appli- 
cation for three and one-half years, $10; 
seven years, $15; fourteen 3'ears, $30. 
Application for reissue, $30. U. S, Rev. 
Stats., § 4934. 

3. U. S. Rev. Stats., § 4893. 

, It is not incumbent upon the Com- 
missioner to have the examination 
made by any particular officer. Hall 
V. Commissioner, 2 McArthur Pat. 
Cas. go; s. c, 7 Pat. Off. Gaz. 559. 

4. The specificaton is always open to 
amendment until the matter is finally 
disposed of by granting of patent or 
otherwise. Singer v. Brannsdorf, 7 
Blatchf. (U. S.) 521; Godfrey v. Eames, 
I Wall. (U. S. 317. 

Amendments can be made independ- 
ently of the suggestion of the Commis- 



sioner. Godfrej' w. Eames, i Wall. (U. 

S.)3i7- 

The question whether new matter 
can be introduced into the specification 
depends upon whether such matter can 
be found in any part of the application. 
Singer v. Brannsdorf, 7 Blatchf. (U. 
S.) 521; Chicago etc. R. Co. v. Sayles, 
97 U. S. 554. 

But a portion of the invention, if di- 
visible, can be removed from the origi- 
nal to a separate application. Suffolk 
Mfg. Co. -v. Hayden, 4 Fish. Pat. Cas. 
86. 

An inventor may enlarge his claims 
from time to time by amendment to 
embrace all that was specified at the 
start. Railway etc. Mfg. Co. v. North 
Hudson R. Co., 24 Fed. Rep. 793. 

6. U. S. Rev. Stats., § 4903. He 
must give the applicant briefly the rea- 
sons for such rejection, together with 
such information and references as may 
be useful in judging of the propriety of 
renewing his application or of altering 
his specification. U. S. Rev. Stats., § 
4903- 

6. _U. S. Rev. Stats., § 4894. 

It is the application, not the invention, 
that is abandoned, and the inventor may 
file a new application. Lindsay v. 
Steen, 10 Fed. Rep. 907; s. c, 21 Pat. 
Off. Gaz. 1613. 

For abandonment of invention, see 
Dedication, vol. 5, p. 391;. 

7. U. S. Rev. Stats., \ 4894. The 
judgment of the Commissioner on this 
question is conclusive. McMillan v. 
Barclay, 4 Brews. (Pa.) 27c; s.c, 5 Fish. 
Pat. Cas. 189. 

A mental disorder, incapacitating the 
inventor from business, is a sufficient ex- 



30 



Patent Office. 



PA TENT LA W. 



lestimony for TTse. 



allowed, in order to be issued ; ^ but upon failure to do so, a sec- 
ond application may be filed within two years from the allowance 
of the first application^ by any one interested.* 

16. Testimony for Use in Patent Office. — Afifidavits and depositions 
are taken under the rules established by the Commissioner of Pat- 
ents, and before any officer authorized by law to take depositions 
to be used in the United States or State courts.* Subpoenas will 
be issued by the clerk of a United States court in the district to 
compel the attendance of witnesses,^ obedience to which and giv- 
ing testimony can be enforced in the same manner as in case of a 
subpoena to testify at court.® 

17. Interference — (a) When it Arises. — Whenever an applica- 
tion is made for a patent, which, in the opinion of the Commis- 
sioner,' would interfere with any pending application,* or with any 
unexpired patent,^ he shall direct the primary examiner to pro- 
ceed to determine the priority of invention.^® 



cuse for delay. Ballard v. Pittsburg, 12 
Fed. Rep. 783. 

1. U.S. Rev. Stats., § 4897. 

2. U. S. Rev. Stats., § 4897. No per- 
son shall be held responsible in dam- 
ages for the manufacture or use of any 
article or thing for which a patent was 
ordered to issue under such renewed 
application prior to the grant of a pat- 
ent. And upon the hearing of a re- 
newed applicaton preferred under this 
section, abandonment will be consid- 
ered as a question of fact. 

This does not prevent the defendants 
in a suit on a renewed patent, from set- 
ting up the defense of abandonment. 
United States etc. Rifle Co. v. Whitney 
Arms Co., 14 Blatchf. (U. S.) 94; s. c, 
2 Bann. & Ard. Pat. Cas. 493; Marsh 
V. Commissioners, 3 Biss. (U. S.) 321; 
Woodbury etc. Planing Mach. Co. v. 
Keith, loi U. S. 479; s. c, 17 Pat. Off. 
Gaz. 103 1. 

3. U. S. Rev. Stats., § 4S97. 

4. U. S. Rev. Stats., § 4905. 

5. U. S. Rev. Stats., § 4906. The 
subpoena may direct the witness to be 
present at any time and at any place 
within forty miles of where it is served, 
and they are entitled to the same fees 
that are allowed witnesses at the 
United States courts. U. S. Rev. 
Stats., § 4907. 

6. U. S. Rev. Stats., § 4908. But to 
bring him into contempt, his fees for 
coming and going, and one day's at- 
tendance must have been paid or ten- 
dered, or be compelled to disclose a se- 
cret invention. 

7. The Commissioner is free to exer- 
cise his discretion in obtaining informa- 



tion of the interfering patents. Potter 
V. Dixon, 5 Blatchf (U. S.) ibo; s. c, 2 
Fish. Pat. Cas. 381. 

8. An interference can only be de- 
clared where an applicant claims that 
for which a prior application has been 
filed; not where a prior application is 
generic to the second and does not 
claim the species of the second. Ex 
parte Platts, 15 Pat. Off. Gaz. 827. 

See Pentlarge v. New York Bung etc. 
Co., 20 Fed. Rep. 314. 

9. An interference cannot be declared 
between a reissue broadening the appli- 
cation and a patent filed after the grant 
of the surrendered patent. Ex parte 
Mayall, 11 Pat. Off. Gaz. IL07. 

10. U. S. Rev. Stats., ^ 4904. 

Priority of invention is the only ques- 
tion that can be heard or determined 
on an interference. United States v. 
Thacher, 7 Pat. Off. Gaz. 603; Union 
Paper Bag Co. v. Crane, i Bann. & 
Ard. Pat. Cas. 494; s.c.,i Holmes (U. S.) 
429; s. c.,6 Pat. Off. Gaz. Soi. 

A decision in an interference case 
does not make the matter res adjudi- 
cata. Union Paper Bag Co. v. Crane, i 
Holmes (U. S.) 429; s. c, i Bann. & Ard. 
Pat. Cas. 494; s. c, 6Pat. Off. Gaz. 801. 
Wire Book Sewing Mach. Co. v. 
Stevenson, 11 Fed. Rep. 155. 

It has been held in a State court that 
so long as a decision remains un- 
reversed it is such. Peck v. Collins, 70 
N. Y. 376. 

Nor does a statement made in any 
other proceeding in the Patent Office, 
estop an applicant. Crocker's Case, 2 
A. L. T. 129; Union Paper Bag Co. v. 
Crane, i Holmes (U. S.) 429; s.c.,i Bann. 



31 



Patent Office. 



PA TENT LA W. 



Appeal. 



{b) Practice in Interference Cases. — The Commissioner 
shall give notice of an interference to the parties,^ and the pro- 
ceedings are regulated by such rules as may be adopted.** 

{c) Effect of Decision in Interference Cases. — As to the 
question of priority between the parties, the decision, if acqui- 
esced in, is conclusive ; * it is not an estoppel in any other circum- 
stance.* 

18. Appeal— (a) In Patent Office and Supreme Court, 
District of Columbia. — An applicant for a patent, any of 
whose claims have been twice rejected, and every party to an 
interference may appeal to the board of Examiners-in-Chief,^ 
from them to the Commissioner in person," and from them to 
the supreme court of the District of Columbia sitting in banc, 
except in interference cases. ''^ 

{b) Practice on Appeal. — An appellant must give notice to 
the Commissioner and file in the Patent Ofifice his reasons for ap- 
peal.^ The appellant lays before the court certified copies of all 
the papers in the case, and the Commissioner furnishes the 



& Ard. Pat. Cas. 494; s. c, 6 Pat. Off. 
Gaz. 801. 

1. U. S. Rev. Stats., ^ 4904. 

2. The rules of the Patent Office, so 
long as they are not abrogated, are as 
binding as the law itself. Arnold v. 
Bishop, Cranch Pat. Dec. 103. 

Various decisions on minor points of 
practice are found in Perry v. Cornell, 
Cranch Pat. Dec. 132; Smith v. Flick- 
inger, Cranch Pat. Dec. 116; Arnold 
V. Bishop, Cranch Pat. Dec. 103. 

3. Shuter v. Davis, 16 Fed. Rep. 564; 
s. c, 24 Pat. Off. Gaz. 303; Holliday v. 
Pickhardt, 12 Fed. Rep. 147; s.c, 22 Pat. 
Off. Gaz. 420; Hanford i). Westcott, 16 
Pat. Off. Gaz. 1 181; Peck etc. Co. v. 
Lindsay, 2 Fed. Rep. 688; Greenvjrood 
V. Bracher, i Fed. Rep. 857. 

This does not mean that the parties 
may not litigate the matter over again 
in the circuit court. Hubel v. Tucker, 24 
Fed. Rep. 701; Celluloid Mfg. Co. v. 
Chrolithian Collar etc. Co., 24 Fed. 
Rep. 275. 

4. To a party whose patent, after is- 
sue, was put into intererfence with an 
applicant who was declared the prior in- 
ventor. Perry v. Starrett, 5 Bann. & Ard. 
Pat. Cas. 485; s. I,., 14 Pat. Off. Gaz. 599. 

To a purchaser of a machine from the 
defeated party from setting up a prior in- 
vention in another. Pecketc.Co.-?'. Lind- 
say, 5 Bann. & Ard. Pat. Cas. 390; ». c, 
2 Fed. Rep.688; s. c, iSPat. Off. Gaz. 63. 

In an action against third parties they 
can defend by setting up an invention 



by a claimant defeated in an interfer- 
ence proceeding. Perry v. Perry, 14 
Pat. Off. Gaz. 599. 

6. U. S. Rev. Stats., § 4909. 

If, in an interference proceeding, the 
Examiners-in-Chief award priority to 
one party and remand his case to the 
primary examiner to determine whether 
he' has abandoned his invention, the 
other party cannot appeal. Bigelow v. 
Thatcher, 2 McArthur (U. S.) 29. 

6. U. S. Rev. Stats., 5 4910. 

7. U. S. Rev. Stats., §4911. 

The appeal is from a refusal to grant 
a patent. Pomeroy v. Commissioner, 
Cranch Pat. Dec. 112. 

The refusal may take the form of a 
decision that the applicant is not the 
original and first inventor. Commis- 
sioner V. Whitely, 4 Wall. (U. S.) 522. 

Or that the applicant is not such a 
person as is entitled to the reissue for 
which he applies. Commissioner v. 
Whitely, 4 Wall. (U. S.) 522. 

An applicant whose patent has been 
refused may appeal, in spite of being 
improperly put into interference by the 
Commissioner. Ex farte Platts, 15 
Pat. Off. Gaz. S27. 

No Appeal In Interference Case to 
Secretary of Interior. — The action of 
the Commissioner of Patents in granting 
or refusing a patent is a judicial act, and 
therefore is not reviewable by the Secre- 
tary of the Interior. Butterworth v. 
Hoe, 112 U. S. 50. 

8. U. S. Rev.'Stats., § 4912. Therea- 



32 



Patent Office. 



PA TENT LA W. 



Appeal. 



grounds of his decision, touching the reasons of appeal.^ The 
court, on petition, hears and determines the appeal, and revises 
the decision appealed from in a summary way on the evidence 
produced before the Commissioner.'* The revision shall be con- 
fined to the points set forth in the reasons for appeal.^ A cer- 
tificate of the proceedings and decision shall be returned to the 
Patent Oiitice and shall govern the further proceedings in 
the case.* 

{c) Bill in Equity to Compel Issue of Patent.— The 
applicant for a patent, who has been refused by the Commissioner^ 
or the supreme court of the District of Columbia, may exhibit a 
bill in equity against any opposing party ;® or, where there is no 
opposing party, against the Commissioner.' This proceeding is 



sons for appeal must be in writing and 
filed within such time as the Commis- 
sioner may appoint. 

1. U. S. Rev. Stats., ^ 4913. The 
court gives notice to the Commissioner 
of the time and place of hearing the 
appeal, and the Commissioner notifies 
the parties interested. The Commis- 
sioner and examiner can be examined 
under oath. See Perry v. Cornell, 
Cranch Pat. Dec. 132. 

2. U. S. Rev. Stats., § 4914- 

3. U. S. Rev. Stats., § 4914; Arnold v. 
Bishop, Cranch Pat. Dec. 103; Smith 
V. Flickinger, Cranch Pat. Dec. 116; 
Ex f arte Conklin, i McArthur (U.S.) 

375- 

4. U. S. Rev. Stats., % 4914. 

But no opinion or decision of the 
court in any such case shall preclude 
any person interested from the right to 
contest the validity of such patent in 
any court vi^herein the same mav be 
called into question. 

5. Where the Commissioner with- 
holds the patent by virtue of his super- 
visory authority, the remedy is by bill 
against the Commissioner, not by ap- 
peal to the supreme court of the Dis- 
trict of Columbia, or by mandamus. 
Hull t". Commissioner, 2 McArthur (U. 
S.) 90; s. c, 7 Pat. Off. Gaz. 559; rehear- 
ing, 2 McArthur (U. S.) 121;: s. c. 8 
Pat. Off. -Gaz. 46. 

In Interference Cases. — A question of 
priority of invention between two par- 
ties to an interference can be tried b^' 
bill, by party defeated before the Com- 
missioner, against the party prevailing 
before him. Union Paper Bag Mach. 
Co. V. Crane, i Holmes (U. S.) 429; 
Whipple V. Miner, 15 Fed. Rep. I17; 
s. c, 23 Pat. Off. Gaz. 2236. 

6. Whipple V. Miner, 15 Fed. Rep. 

18 C. of L.— 3 



117; o. c, 23 Pat. Oflt. Gaz. 2236; Pren- 
tiss V. Ellsworth, 27 Pat. Off. Gaz. 623; 2 
Whart. Dig. 365; Union Paper Bag 
Mach. Co. V. Crane, i Holmes (U. S.) 
429. 

Costs. — Where there are opposmg 
parties, the costs are taxed as in other 
cases. Butler v. Shaw, 21 Fed. Rep. 

321- 

Parties. — Where there is an opposing 
party, the Commissioner is not a neces- 
sary party. Graham v. Teter, 25 Fed. 

Rep- ."JSS- 

7. U. S. Rev. Stats., § 4915. A cop3' 
of the bill must be served on the Com- 
missioner, and all expenses of both 
sides when the bill is brought against 
the Commissioner, paid by the applicant, 
whether the patent is granted or not. 

The court will examine into the nov- 
elty of the alleged invention. Ex parte 
Greely, i Holmes (U. S.) 2S4; s. c, 6 
Fish. Pat. Cas. 574; s. c, 4 Pat. Off. Gaz. 
612; Ex f arte Arkell, 4 Bann. & Ard. 
Pat Cas. So; s. c, isBlatchf (U. S.)437. 

The applicant rnust have exhausted 
all his remedies by appeal before 
bringing the suit. Kirk v. Commis- 
sioner, 5 Mackey (U. S.) 229. 

And the rejection must have been 
on the merits. Butterworth v. Hoe, 
112 U. S. 50; s. c, 29 Pat. Off, Gaz. 618. 

And must bring his action in the 
^ District of Columbia, "which is the 
legal residence of the Commissioner 
of Patents. Butterworth v. Hill, 114 
U. S. 133; s. c, 31 Pat. Off. Gaz. 1043; 
overruling Vermont etc. Mach. Co. v. 
Marble, 22 Blatchf. (U. S.) 128; s. c, 20 
Fed. Rep. 117; s.c, 27 Pat. OflT. Gaz. 
622. Compare Prentiss v. Ellsworth, 27 
Pat. Off. Gaz. 623. 

The Secretary of the Interior is not a 
necessary party to a bill of this kind > 
33 



f atent Office. 



PA TENT LA W. 



Issue of Patents. 



original rather than appellate,' and does not suspend the action 
of the Patent Office .^ 

19. Issue of Patents. — Patents are issued under the seal of the 
Patent Office, and shall be signed by the Secretary of the Interior, 
countersigned by the Commissioner of Patents^* and recorded in. 
the Patent Office.* 

20. Disclaimer.— (a) What Can Be Disclaimed.— A disclaimer 
can only be filed when the invention that remains after the filing 
of the disclaimer is a material part of the thing patented'. It 
cannot be used to reform the description in the specification,* or 
change the invention.' 

{b) Disclaimer Generally.— Whenever, through inadvert- 



against the Commissioner, Ktirk v. 
Commissioner, 5 Mackey (U. S.) 229; 
s.c.,37 Pat. Off. Gaz. 451. 

Ladies. — The court may inquire into 
any delay in the prosecution of appli- 
cation in suing to obtain the patent. 
Gandy v. Marble, 122 U. S. 432; s. c, 
39 Pat. Off. Gaz. 1423. 

1. Whipple V. Miner, 15 Fed. Rep. 
117; s. c, 23 Pat. Off. Gaz. 2236. 

New Evidence. — New evidence may 
be introduced. Ex parte Squire, 3 
Bann. & Ard. Pat. Cas. 133; s. c, 12 Pat. 
Off. Gaz. 1025. , 

The suit may be decided on any 
issue. Butler v. Shaw, 21 Fed. Rep. 
321- 

2. Whipple V. Miner, 15 Fed. Rep. 
117; s. c, 23 Pat. Off. Gaz. 2236. 

Parties Plaintiff. -:-Ordinarily the ap- 
plicant. U. S. Rev. Stats., § 4915. 

Where an assignment has been made 
it would seem that the assignees are the 
proper parties. Runstetler f. Atkinson, 
22, Pat. Off. Gaz. 940. 

3. A patent issued without the 
signature of the Secretary of the In- 
terior is void, and a subsequent signing 
will not make it valid from its issue, 
and it cannot be signed by a secretary 
whose term of office .has expired. 
Marsh v. Nichols, 15 Fed. Rep. 914; 
s. c, 24 Pat.Off. Gaz. 901. 

And any alteration made in the patent 
after his signature, must be communi- 
cated to him and receive his sanction. 
Woodworth v. Hall, i Woodb. & M. (U. 
S.) 3S9; s. c, 2 Robb Pat. Cas. 517. 

It ma}' now be countersigned by the 
Assistant Secretary. 25 Stats, at Large, 
ch. 15, p. 40. 

4. U. S. Rev. Stats., § 4883. 

5. U. S. Rev. Stats., § 4917; Root 
T. Welch Mfg. Co., 17 Blatchf. (U. S.) 
478; s. c, 5 Bann. & Ard. Pat. Cas. 189; 
s. c, 4 Fed. Rep. 423; Vance v. Camp- 



*bell, I Black (U. S.) 427; Hall v. Wiles, 
2 Blatchf. (U.S.) 194. 

It can be used to disclaim one or more 
of a number of claims, leaving the re- 
mainder to stand. McCormick z'. Sey- 
mour, 3 Blatchf. (U. S.) 209; Tuck v. 
Bramhill, 6 Blatchf. (U. S.) 95; s. c, 3 
Fish. Pat. Cas. 40Q; Taylor f. Archer, 8 
Blatchf. (U. S.) 315; s.' c, 4 Fish. Pat. 
Cas. 449. 

Or a claim in a re-issue unlawfully 
broadened from the original patent. 
T3'ler v. Galloway, 12 Fed. Rep. 567; 
s. c, 22 Pat. Off. Gaz. 2072. 

Or part of a claim. Schillinger v. 
Gimther, 17 Blatchf. (U. S.) 66; s. u., 4 
Bann. & Ard. Pat. Cas. 479; s. c, 16 
Pat. Off. Gaz. 905. 

The claim disclaimed may be invalid 
for vai-ious reasons; the right to dis- 
claim is not limited to a claim invalid 
from want of novelty in the subject 
matter. O'Reilly v. Morse, 15 How. 
(U. S.) 62. • 

A disclaimer cannot be used to dis- 
claim one of the elements of a combi- 
nation. Vance v. Campbell, i Black 
(U. S.) 427. 

6. Hailes v. Albany Stove Co., 16 
Fed. Rep. 240. 

A patentee can eliminate a portion of 
his specification describing an invention 
disclaimed. Schillinger z: Gunther, 17 
Blatchf. (U .S.) 66; s. c, 4 Bann. & Ard. 
Pat. Cas. 479; s.c, 16 Pat. Off. Gaz. 905. 

For instance, he may limit his inven- 
tion to "a rubber eraser having the soft 
finished erasive surface produced by 
tumbling the eraser." Lockwood i. 
Hooper, 25 Fed. Rep. 910. 

7. It cannot enlarge the scope of a 
patent. White v. Gleason etc. Mfg. 
Co., 24 Pat. Off. Gaz. 205. 

Nor change the patent" from a patent 
for a product to one for a process. 
Grant v. Walter, 38 Fed. Rep. 594. 



34 



Patent Office. 



FA TENT LA W. 



Disclaimer. 



ence, accident or mistake,^ and without any fraudulent or de- 
ceptive intention, a patentee has claimed more than that of which 
he is the first inventor or discoverer,^ a disclaimer can be made 
to such portions as are not desired to be claimed or held by virtue 
of the patent or assignment.* 

{c) By Whom Made. — A disclaimer can be made by the 
inventor,* assignee" or legal representative,* and the extent of 
the interest of the person disclaiming should be stated in the 
disclaimer.' 

{d) Time Within Which Disclaimer Must be Made. — A 
disclaimer may be made at any time, even after suit is brought,* 
provided the delay has, not been unreasonable.® An unreasonable 
delay, however, cuts off all rights of action.*® 



1. It is immaterial whether the mis- 
take be one of law or of fact. Wyeth 
t;. Stone, I Story (U. S.; 273; s. c, 2 
Robb Pat. Cas. ii,. 

2. The pUrpose of the di'selairrigi- is 
to eliminate all claims for inventions 
not new with the patentee, and all 
claims for things which were not in- 
ventions with them. Walker on Pat- 
ents, Ij 197; United States Cartridge 
Co. V. Union etc. Cartridge Co., 112 
U. S. 642. 

3. U. S. Rev. Stat. § 4917. Hartes 
■V. Albany Stove Co., 123 U. S. 5SS. 

It applied to patents granted before 
its adoption. Hotchkiss v. Oliver, 5 
Den. (N. Y.) 314. 

The provision applies to re-issues. 
Tyler v. Galloway, 12 Fed. Rep. 567; 
s. c, 22 Pat. Off. Gaz. 2072. 

And to extensions. Brooks v. Jen- 
kins, 3 McLean (U. S.) 432. 

4. U. S. Rev. Stat. ^ 4917. Silsby 
V. Foote, L4 How. (U. S.) 218. 

5. Wyeth f. Stone, 1 Story (U. S.) 
273; s. c, 2 Robb Pat. Cas. 23. 

An assignee must join with the 
inventor; otherwise he will not receive 
the benefit of the disclaimer. This is 
so, even though he be an assignee sub- 
sequent to the grant or issuance of the 
patent. Wyeth v. Stone, i Story (U. 
S.) 273; s. c, 2 Robb Pat. Cas. 23; Rice 
T>. Garnhardt, 34 Wis. 453; Myers v. 
Frame. 8 Blatchf. (U. S.) 446; s. c, 4 
Fish. Pat Cas. 493. 

6. Brooks t'. Jenkins, 3 McLean (U. 
S.) 432- 

7. U. S. Rev. Stats., § 4917. Brooks 
V. Jenkins, 3 McLean (U. S.) 432. 

But a statement merely that the dis- 
claimer is the patentee, is sufficient. 
Silsby V. Foote, 14 How. (U. S.) 221. 

8. Smith V. Nichol.s, i Holmes (U. S.) 
172; s.c, 6 Fish. Pat. Cas. 61; s. c, 2 Pat. 



Off. Gaz. 649; Silsby v. Foote, 20 
How. (U. S.) 378; Seymour v. Mc- 
Cormick, 19 How. (U. S.) 96; Tuck v. 
Bramhill, 6 Blatchf. (U. S.) 95; Gage 
V. Herring, 14 Blatchf (U. S.) 293; s. 
c, 23 Pat. Off. Gaz. 21 19; Hill f. Biddle, 
27 Fed. Rep. 561. 

9. U. S. Rev. Stats., §§ 4917, 4922; 
McCormick v. Seymour, 3 Blatchf. (U. 
S.) 209. 

What is an unreasonable delay, has 
been held to be a question of law. 
Singer v. Walmsley, i Fish. Pat. Cas. 
5^8; Seymour v. McCormick, 19 How. 
(U. S.) 96. 

And a mixed question of law and 
fact. Brooks v. Jenkins, 3 McLean 
(U. S.) 432; Washburne v. Gould, 3 
Story (U. S.) 122; s. c, 2 Robb Pat. 
Cas. 206; Lippincott v. Kelly, i West. 

L-J-S>3 

Delay is counted from the time that 
knowledge is brought to the patentee 
that he was not the first inventor. 
Singer v. Walmslev, i Fish. Pat. Cas. 
5.S8. 

A claim which has been held valid 
by a circuit court need not be dis- 
claimed until declared invalid by the 
highest court. O'Reilly v. Morse, 15 
How. (U. S.J 62. 

Nor until the court has passed on 
the claims. Stutz v. Armstrong, 20 
Fed. Rep. 843; Seymour v. McCor- 
mick, 19 How. (U. S.) 96; Patter v. 
Whitney, 3 Fish. Pat. Cas. 77; Tuck v. 
Bramhill, 6 Blatchf (U. S.) 95. 

A patentee, some of whose claims 
were declared invalid just as the pat- 
ent was about to expire, may recover 
on the valid claims. Kittle v. Hall, 30 
Fed. Rep. 239. 

Or has expired. Yale Lock Mfg. 
Co. V. Sargent, 117 U. S. 553. 

10. Brooks V. Jenkins, 3 McLean (U. 



35 



Patent Office. 



FA TENT LA W. 



Beissue. 



{e) Effect of Disclaimer. — The effect of a disclaimer on a 
patent is to place it in the position of never having contained the 
matter disclaimed. ' No costs are recoverable unless proper dis- 
claimer has been filed before the commencement of thg suit.** 

21. Reissue — («) When Patent Can be Surrendered. — 
When a patent is inoperative^ or invalid* by reason of a defective 
or insufficient specification,* or by reason of the patentee claiming 



S.) 432; Hall V. Wiles, 2 Blatchf. (U. 
S.) 194; Winans v. New York etc. R. 
Co., I Fish. Pat. Cas. 213. 

1. Dunbar v. Myers, 94 U. S. 187; 
s. c, II Pat. Off. Gaz. 35. 

It only affects those by -whom it is 
made. Wyeth v. Stone, i Story (U. 
S.) 273. 

2. U. S. Rev. Stats., § 4922. Reed 
V. Cutter, X Story (U. S.) 591; Bur- 
dett V. Estey,s Bann. & Ard. Pat. Cas. 
308; Proctor i<. Bull, 16 Fed. Rep. 791; 
Smith V. Nichols, 21 Wall. (U. S.) 117. 

- But a defendant will not be per- 
mitted to attack claims not in suit, to 
avoid costs. American Bell Teleph. 
Co. V. Spencer, 8 Fed. Rep. 512. 

3. Giant Powder Co. v. California 
etc. Power Co., 4 Fed. Rep. 720. 

Inoperative does not mean "not fully 
available" to the owner of the patent. 
Burr T>. Duryee, I Wall. (U. S.) 531; 
Whitely v. Swayne, 4 Fish. Pat. Cas. 
117; Poage V. McGowan, 15 Fed. Rep. 

398- . . . 

A want of proper description is a 
good cause to reissue a patent. Sewing 
Mach. Co. V. Frame, 24 Fed. Rep. 

596- 

That it is "not fully valid and availa- 
ble," however, will authorize a reissue. 
Gold & Stock Tel. Co. v. Wiley, 
17 Fed. Rep. 234. "Not fully operative" is 
not enough. Hartshorn v. Eagle Shade 
Roller Co., iS Fed. Rep. 90. 

The defect, to cure which a reissue is 
taken, need not completely vitiate the 
original. Stimpson v. Westchester 
R. Co., 4 How. (U. S.) 380. 

4. Union Paper Collar Co. v. Van 
Dusen, 23 Wall. (U. S.) 530; s. c, 7 Pat. 
Off. Gaz. 919. 

Vogler V. Semple, 7 Biss. (U. S.) 
382; s. c, 2 Bann. & Ard. Pat. Cas. 556; 
s. c, II Pat. Off. Gaz. 923. 

A patent invalid because too broad, 
may be corrected by reissue. Mat- 
thews V. Flower, 25 Fed. Rep. 830. 

Mistakes Tliat May tie Corrected by 
Reissue. — Mis-statement of date of prior 
foreign patent. Buerk v. Valentine, 9 
Blatchf (U. S.) 479; s. c, 5 Fish. Pat. 
Cas. 366; s. c, 2 Pat. Off. Gaz. 295. 



Clerical Errors. — Clerical errors may 
or may not be altered in other ways. 
French v. Rogers, i Fish. Pat. Cas. 133; 
Morris v. Huntington, i Paine (U. S.) 
348; ». c, I Robb Pat. Cas. 448; Grant 
V. Raymond, 6 Pet. (U. S.) 218; s. c, 

1 Robb Pat. Cas. 604; Woodworth v. 
Hall, I Woodb. & M. (U. S.) 248; s.^., 

2 Robb Pat. Cas. 495; Goodyear Den- 
tal etc. Co. V. Weatherbee, 2 Cliff. (U. 
S.) 555; s. c, 3 Fish. Pat. Cas. 87. 

A mistake in fixirig the date of a 
patent so that it did not conform to the 
term of a foreign patent, maybe cor- 
rected by a reissue. Buerk v. Valentine, 
9 Blatchf. (U. S.) 479; s. c, s Fish. Pat. 
Cas. 366; s. c, 2 Pat. Office Gaz. 295. 

5. The patent need not be void; it is 
enough that the specification is defect- 
ive or doubtful in some particulars. 
Woodworth v.' Hall, i Woodb. & M_ 
(U. S.) 248; s. c, 2 Robb Pat. Cas. 495; 
Parham -v. American Button etc. Mach.^ 
Co., 4 Fish. Pat. Cas. 468. 

But the specification must be defect- 
ive. Coon V. Wilson, 113 U. S. 268. 

What Word "Specification" Includes. 
— Specification includes claim; conse- 
quently' a claim which does not de- 
scribe fully the extent of the invention 
may enable the patent to be surrendered 
and reissued, and the clain"! enlarged or 
altered to cover the invention. Carver 
V. Braintree Mfg. Co., 2 Story (U. S.) 
432; s. c, 2 Robb Pat. Cas. 141; Good- 
■ year v. Providence Rubber Co., 2 Fish. 
Pat. Cas. 499; Morej' v. Lockwood, 8 
Wall (U. S..) 230; Worswick Mfg. Co. 
V. Steiger, 17 Fed. Rep. 531; Battin v^ 
Taggert, 17 How. (U. S.) 74; Cromp- 
ton V. Belknap Mills, 3 Fish. Pat. Cas. 
536; French v. Rogers, i Fish. Pat. 
Cas. 133. 

No Eight to Reissue.— Where the 
specification is neither defective nor in- 
sufficient, there exists no right to re 
issue'. Coon w. Wilson, 113 U. S. 268 
Brewster v. Shuler, 37 Fed. Rep. 785 
Mahn xk Harwood, 112 U. S. 354 
Dunham v. Dennison Mfg. Co., 40 Fed 
Rep. 667. 

A reissue of an original patent in two 
reissues is not void because one of the 
36 



Patent Office. 



PA TENT LA W. 



Beissue. 



more than he had the right to claim,* if the error has arisen by 
inadvertence, accident or mistake,* and without any fraudulent or 
deceptive* intention, the patent may be surrendered and a reissue 
taken.* The provisions for reissue apply as well to a former 
re-issue" or to an extended® as to an original patent. 

{b') Surrender. — A surrender of a patent for the purpose of 
reissue is made by the party having the legal title thereto ;' though 



reissues is identical with the original. 
International Terra Cotta Lumber Co. 
V. Maurer, 44 Fed. Rep. 618. 

1. Gould V. Ballard, 3 Bann. & Ard. 
Pat. Cas. 324; Chicago Fruit House 
Co. V. Busch, 2 Biss. (U. S.) 472; Al- 
bright V. Celluloid etc. Trimming Co., 
2 Bann. & Ard. Pat. Cas. 629; s. c, 12 
Pat. Off. Gaz. 227; Carver v. Braintree 
Mfg. Co., 2 Story (U. S.) 432; s. c, 2 
Robb Pat. Cas. 141; Coburn t;. Schroe- 
der, 19 Blatchf. (U. S.) 377; s. c, 8 Fed. 
Rep. 519; s. c, 20 Pat. Off. Gaz. 1524. 

Even where the original patent is too 
broad, and, hence, invalid, the mistake 
may be corrected by a reissue. Ma- 
thews V. Flower, 25 Fed. Rep. 830. 

2. Mistake not an error of judg- 
ment. Swain etc. Mfg. Co. v. Ladd, 
102 U. S. 409; s. c, 19 Pat. Off. Gaz. 62; 

Jones V. Barker, 11 Fed. Rep. 597; s. c, 
22 Pat. Off. Gaz. 771. 

How or when mistake is discovered, is 
unimportant. Poppenhusen v. Falke, 
5 Blatchf. (U. S.) 493; s. c, 2 Fish. Pat. 
Cas. 181; Buffum v. Oakland Mfg. 
Co., 4 Bann. & Ard. Pat. Cas. 599. 

The right to reissue exists in cases of 
defective description, or error arising 
from inadvertence or mistake. Knight 
V. Baltimore Co., i Taney (U. S.) 106. 
■ The United States statute conferring 
jurisdiction on the Commissioner of 
Patents to re-issue any patent invalid 
by reason of a defective or insuflBcient 
specification arising from inadvertence, 
accident, or mistake, and without any 
fraudulent or deceptive intention, au- 
thorizes the insertion of new claims 
founded on the original invention, as 
exhibited by the specifications or draw- 
ings where the claimant uses due dili- 
gence in applying for the correction; 
but the laches of the patentee may es- 
top him. Combined Patents Can Co. 
V. Lloyd, II Fed. Rep. 149. 

Where by an application for a re- 
issue of a patent it is thought merely 
to enlarge a claim, a clear mistake and 
inadvertence must be shown and a 
speedy application for its correction, 
without reasonable delay, must be 
made. Wooster v. Handy, 21 Fed. 



Rep. 51. Distinguished in Wooster f. 
Thornton, 26 Fed. Rep. 275. 

3. A fraud, especially corrupt collu- 
sion between the Commissioner and ap- 
plicant, invalidates the reissued patent. 
Swift V. Whisen, 3 Fish. Pat. Cas. 343; 
s. c, 2 Bond (U. S.), 115; House v. 
Young, 3 Fish. Pat. Cas. 335; Conklin 
V. Stafford, i McArthur ( U. S.) 375. 

The evidence must be clear. Jordan 
V. Dobson, 4 Fish. Pat. Cas. 398. 

4. U. S. Rev. Stats. § 4916. 

5. Selden v. Stockwell etc. Gas 
Burner Co., 9 Fed. Rep. 390; 19 
Blatchf. (U. S.) 444; s. c, 20 Pat. Off. 
Gaz. 1377; Morse v. Bain, 9 West. L. 
J. 106. 

Invalid Reissue Can l)e Reissued. — 
Even an invalid reissue can be re- 
issued. American etc. Boring Co. v. 
Sullivan Mach. Co., 14 Blatchf. (U. S.) 
XI9; s. c, 2 Bann. & Ard. Pat. Cas. 522; 
American etc. Boring Co. v. Sheldon, 
17 Blatchf. (U. S.) 208; S.C., 4 Bann. & 
Ard. Pat. Cas. 551. 

The rule is that a substitute (a re- 
issue) having all the qualities of an 
original, the right to amend it is equal 
with the right to amend the original. 
French v. Rogers, i Fish. Pat. Cas. 133. 

A reissue which has been unlawfully 
broadened may be re-issued with the 
original claims and specification. This 
precludes the idea that the original 
patent was invalid. Celluloid Mfg. 
Co. V. Zylonite Brush Co., 27 Fed. 
Rep. 291 ; Giant Powder Co. v. Safety 
Nitro Powder Co., 19 Fed. Rep. 509; 
Hubel V. Dick, 28 Fed. Rep. 132; Saw- 
yer Spindle Co. v. Eureka Spindle 
Co., 33 Fed. Rep. 836. 

A claim which is too broad may be 
disclaimed, as in an original patent. 
Torrant v. Duluth Lumber Co., 30 
Fed. Rep. 830. 

6. Gibson v. Harris, i Blatchf. (U. 
S.) 167; Wilson V. Rousseau, 4 How. 
(U. S.) 646; s. c, 2 Robb Pat. Cas. 373; 
Hussey v. Bradley, 5 Blatchf. (U. S.) 
134; s. c, 2 Fish. Pat. Cas. 362. 

7. " Patentee, or, in case of his death 
or of an assignment of the whole or any 
undivided part of the original patent 



37 



Patent Office. 



PA TENT LA W. 



BeiEsae.. 



a reissue granted after a surrender by another and its ratification 
by the legal owner is valid as to third parties.* The surrender 
takes effect at the date of issue of the reissued patent.* It may be 



then to his executors, administrators 
or assigns." U. S. Rev. Stats., (j 4916; 
Potter V. Holland, 4 Blatchf. (U. S.) 
206; s. c, I F'ish. Pat. Cas. 327; Smith 
V. Mercer, 5 Pa. L. J. 529. 

A patent may be surrendered by an 
assignee whose title has passed through 
mesne assignments. Swift v. Whisen, 
2 Bond (U. S.) iij; s. c, 3 Fish. Pat. 
Cas. 343. 

Need Not Join Grantee. — A grantee of 
an exclusive territory is not such an 
assignee as must join in the surrender. 
Meyer v. Bailey, 2 Bann. & Ard. Pat. 
Cas. 73; s. c, 8 Pat. Off. Gaz. 437; 
Smith V. Mercer, 5 Pa. L. J. 529. 

The grantee apparently may elect to 
hold either under the old patent or the 
reissue. Potter v. Holland, 4 Blatchf. 
(U. S.) 206; s. c, I Fish. Pat. Cas. 327; 
Woodworth v. Stone, 3 Story (U. S.) 
749; s. c, 2 Robb Pat. Cas. 296; Wash- 
burne v. Gould, 3 Story (U. S.) 122; s. 
c, 2 Robb Pat. Cas. 206; McBurney v, 
Goodyear, 11 Cush. (Mass.) 569. 

Licensee. — A licensee wiio has no 
legal title in the patent. Potter v. Hol- 
land, 4 Blatchf. (U.S.) 206; s. c, I Fish. 
Pat. Cas. 327; Forbes v. Barstow 
Stove Co., 2 Cliff. (U. S.) 379. 

Patentee. — After having assigned his 
patent, a patentee. Swift v. Whisen, 3 
Fish. Pat. Cas. 343; s. c, 2 Bond (U. S.) 

115- 

Assignees of an undivided moiety must 
join ; if not, the reissued patent will be 
invalid unless the non-joining owner 
ratifies. Potter v. Holland, 4 Blatchf. 
(U. S.) 206; s. c, I Fish. Pat. Cas. 382. 

Executors and Administrators. — An 
executor may surrender the patent and 
obtain the reissue; Carew v. Boston 
Elastic Fabric Co., i Holmes (U. S.) 45; 
s. c, 3 Cliff. (U. S.) 356; s. c, s Fish. 
Pat. Cas. 90; s. c, I Pat. Off. Gaz. 91. 

Or an administrator. Woodworth v. 
Hall, I Woodb. & M. (U. S.) 248; s. u., 
2 Robb Pat. Cas. 495. 

Any one of the several personal rep- 
resentatives may surrender and receive 
a valid grant of a reissue to himself in 
his fiduciary capacity. Goodyear Rubber 
Co. •:;. Providence Rubber Co., 2 Cliff. 
(U. S.) 351; B. c, 2 Fish. Pat. Cas. 499. 

Reissue, an Evidence of Title. — The 
grant of a reissue is evidence that the 
grantee had the title to the patent. 
Northwestern Fire Extinguisher Co. v. 



Philadelphia Fire Extinguisher Co., i 
Bann. & Ard. Pat. Cas. 177; s. c, 6Pat. 
Off. Gaz. 34; Woodworth v. Hall, i 
Woodb. & M. (U. S.) 248; Goodyear t>. 
Hullihen,2 Hughes (U. S.) 492; s. c, 3, 
Fish. Pat. Cas. 251. 

A recital of a prior assignment of a 
patent is at least prima facie evidence- 
thereof. Middletown Co. v. Judd, 3 
Fish. Pat. Cas. 141; Hoffheins v^ 
Brandt, 3 Fish. Pat. Cas. 218. 

Verbal Errors. — A verbal error in the 
reissue will not invalidate. Bignall f .. 
Harvey, 18 Blatchf. (U. S.) 352; s. c, 5 
Bann. & Ard. Pat. Cas. 636; s. c, 4 Fed. 
Rep. 334; s. I,., 18 P^t. Oft". Gaz. 1275; 
Woodworth v. Stone, 3 Story (U. S.> 
749; s. c, 2 Robb Pat. Cas. 296. 

1. Wing V. Warren, 5 Fish. Pat. Cas.. 
54S; s. c, 2 Pat. Off. Gaz. 342; Dental 
Vulcanite Co. v. Weatlrer-bee, 2 Cliff- 
(U. S.) 555; Woodworth v. Stone, 3 
Story (U. S.) 749; s. c, 2 Robb Pat.. 
Cas. 296; Mever v. Bailey, 2 Bann. & 
Ard. Pat. Cas". 73; s. c, 8 Pat. Off. Gaz. 
437; Campbell v. James, 17 Blatchf. 
(U. S.) 43'; o. c, 4 Bann. & Ard. Pat.. 
Cas. 456; s. c, 18 Pat. Off. Gaz. 979. 

A patentee cannot, however, affect 
the interest of his assignee by sur- 
rendering his patent. Barnes v. Mor- 
gan, 3 Hun(N. Y.) 703. 

2. U. S. Rev. Stats., §4916. 

Prior to the issuing of the new 
patent, what is called a surrender in. 
the case, is, in general, nothing more 
than a preliminary offer to that effect, as. 
the necessary means of obtaining a re- 
issue: and even when not so intended 
at the outset, it may be subsequently 
so treated by the Commissioner, at the 
request of the party applying for the- 
reissue. Forbes v. Barstow Stove Co., 
2 Cliff. (U. S.) 379. 

If a reissue is invalid for want of 
authority to malce it a surrender, it is.> 
ineffective for want of authority to re- 
ceive it; and the patent stands as if 
there had been no surrender. French 
V. Rogers, i Fish. Pat. Cas. 133; Wood- 
worth V. Hall, I Woodb. & M. (U. S.) 
389; s. t., 2 Robb Pat. Cas. 517; Wood- 
worth V. Edwards, 3 Woodb. & M, 
(U. S.) 120; s. c, 2 Robb Pat.' Cas. 610. 

Where, however, the title to an in- 
vention is in dispute upon the applica- 
tion for a Reissue and adjudged against 
the applicant, the effect of such de- 



38 



Patent Office. 



PA TENT LA W. 



B«iB8ne, 



and may be made in any manner that the rules of the Patent 
Office may prescribe.* 

{c) Action of Commissioner in Granting Reissue; How 
Far Reviewable in Court. — The action of the Commissioner 
in granting a reissue is reviewable only when, upon an inspection 
of the patents, it can be determined as a matter of law that the 
inventions described in the original and reissued patents are differ- 
ent ;* he otherwise has no authority to act or exceed his au- 



cision is as fatal to his original patent 
as to the reissue. Pecki'. Collins, 103 
U. S. 660; s. c, 19 Pat. Off. Gaz. 1137. 

RigMs of Action. — All rights of action 
under the original patent expire with 
the surrender and reissue. Jones v. 
Barker, 11 Fed. Rep. 597; United States 
Stamping Co. v. King, 7 Fed. Rep. 
860; Mers V. Conover, 11 Pat. Off. 
Gaz. 4; Fry v. Quinlan, 13 Blatchf. 
(U. S.) 205; Reedy v. Scott, 23 Wall. 
(U. S.) 352; s. c, 7 Pat. Off Gaz. 463; 
Burrell v. Hackley, 35 Fed. Rep. S33. 

But a patentee may sue for an un- 
lawful use ■of -a -machine bought before a 
reissue. Bliss v, Brooklyn, 8 Blatchf. 
(U. S.) 533; ». c, 4 Fish. Pat. Cas. 596; 
Carr v. Rice, i Fish. Pat. Cas. 327. 

1. Dental Vulcanite Co. v. Weather- 
bee, 2 Cliff. (U. S.) SS5; s. c, 3 Fish. 
Pat. Cas. 87. 

And when the applicant has done all 
he can to make the surrender effective, 
he has a right to consider his applica- 
tion properly before the Commissioner. 
Commissioner z'. Whitely, 4 Wall. (U. 
S.) 522. 

2. Seymour v. Osborne, 3 Fish. Pat. 
Cas. 1555; Graham v. Mason, 5 Fish. 
Pat. Cas. i; s. c, 4 Cliff. (U.S.) 88; 
La Baw v. Hawkins, i Bann. & Ard. 
Pat. Cas. 428; s. t..,6 Pat. Off. Gaz. 724; 
Milligan etc. Glue Co. v. Upton, 97 U. 
S.3; Metropolitan WashingMach.Co.t'. 
Providence Tool Co.. i Holmes (U. S.) 
161; Wells T'. Gill, 6 Fish. Pat. Cas. 
89; s. c, 2 Pat. Off. Gaz. 590; Nicholson 
Pavement Co. v. Elizabeth, 6 Fish. 
Pat. Cas. 424; s. c, 3 Pat. Off. Gaz. 522 ; 
Giant Powder Co. v. Safetj' Nitro 
Powder Co., 19 Fed. Rep. 509; Seckels 
V. Evans, 2 Cliff. (U. S.) 203; Stephens 
V. Pritchard, 4 Cliff. (U. S.) 417; 
Derring v. Nelson, 14 Blatchf. (U. S.) 
293; s. c, 3 Bann. & Ard. Pat. Cas. 55; 
s. c, 12 Pat. Off. Gaz. 753; Tucker" i. 
Tucker Mfg. Co., 4 Cliff."(U. S.) 397; s. 
c, 2 Bann. & Ard. Pat. Cas. 40; s. c, 10 
Pat. Off. Gaz. 464; Chicago Fruit House 
ti. Busch, 2 Biss. {U. S.)472; s. c.,4Fish. 
Pat. Cas. 395; Carew zi. Fabric Co., 3 



Cliff. (U. S.) 356; s. c, 5 Fish. Pat. Cas. 
90; s. c, I Pat. Off. Gaz. 91; Heald v. 
Rice, 104 U. S. 737; s. c, 21 Pat. Off. 
Gaz. 1443; ^^" '"■ Langles, 102 U. S. 
128; Manufacturing Co. v. Du Brul, 
2 Bann. & Ard. Pat. Cas. 618; s. c, 12 
Pat. Off. Gaz. 351. 

Consequently when the original pat- 
ent is not in evidence, the court cannot 
declare the reissued patent void for 
being for a different invention. Doherty 
V. Ha3'nes, i Bann. & Ard. Pat. Cas. 
289; s.c.,4 Cliff. (U.S.) 291; s.i;.,6Pat. 
Off. Gaz. 118. 

All matters of fact connected with 
the surrender and reissue of the patent 
are closed by the actipn of the Com- 
missioner in granting a reissue. Sey- 
mour V. Osborne, 3 Fish. Pat. Cas. 555; 
Jordan v. Dobson, 4 Fish. Pat. Cas. 
232; Stimpson v. West Chester R., 
4 How. (U. S.) 380;. s. c, 2 Robb Pat. 
Cas. 335; Colt V. Young, 2 Blatchf (U. 
S.) 471; Forbes v. Barstow Stove Co., 
2 Cliff. (U. S.) 379; French v. Rogers, 
I Fish. Pat. Cas. 133; Thomas v. Shoe 
Mach. Co., 3 Bann. & Ard. Pat. Cas. 
357; s. c, 16 Pat. Off. Gaz. 541 ; Com- 
bined Patents Can Co. f. Lloyd, 11 
Fed. Rep. 149; Selden v. Stockwell etc. 
Gas Burner Co., 19 Blatchf. (U. S.) 
544; s. c, 9 Fed. Rep. 390; s. c, 20 Pat. 
Off. Gaz. 1377; Parham v. American 
Button etc. Mach. Co., 4 Fish Pat. 
Cas. 468; Gage v. Herring, 23 Pat. Off. 
Gaz. 2179; s. c, 107 U. S. 640; Smith v. 
Merriam, 6 Fed. Rep. 713; s. c, 19 Pat. 
Off. Gaz. 601; Asmus v. Alden, 27 Fed. 
Rep. 684; Searls v. Worden, 11 Fed. 
Rep. 501; s. c, 21 Pat. Off. Gaz. 1955; 
Herring v. Nelson, 14 Blatchf. (U. S.) 
293; s. c, 12 Pat. Off. Gaz. 753; 3 Bann. 
& Ard. Pat. Cas. 55. 

As a rule the question whether the 
reissue was made to cure a fault aris- 
ing from accident or mistake, is de- 
cided conclusively by the Commissioner. 
Asmus V. Alden, 27 Fed. Rep. 684. 

And prima fncie the Commissioner 
has discharged his duty faithfully and 
correctly, and therefore the reissued 

39 



Patent Office. 



PA TENT LA W. 



Beissae. 



thority.^ 

{d) What Can be Included in a Reissue. — A reissue must 
be for the same invention as was contained in the original patent,* 



patent is for the same invention as the 
original patent, and that the surrender 
was on account of an inadvertence or 
mistake. Allen v. Blunt, 2 Woodb. & 
M. (U. S.) 121; s.c, 2 Robb Pat. Cas. 
530; Allen V. Blunt, 3 Story (U. S.) 
742; s. c, 2 Robb Pat. Cas. 285; Phila- 
delphia etc. R. V. Stimpson, 14 Pet. (U. 
S.) 448; s. c, 2 Robb Pat. Cas. 46; Smith 
V. Mercer, 5 Pa. L. J. 529; Hussey v. 
Bradley, 5 Blatchf. (U. S.) 134; s. c, 2 
Fish. Pat. Cas. 362; Crompton v. Bel-- 
knap Mills, 3 Fish. Pat. Cas. 536; 
Birdsell v. McDonald, i Bann. & Ard. 
Pat. Cas. 165; s.c, 6 Pat. Off. Gaz.682; 
Woodworth v. Edwards, 3 Woodb. & 
M. (U. S.) 120; Hussey t». McCormick, 

1 Biss. (U. S.) 300; s. c, : Fish. Pat. 
Cas. ^09; Hussey v. Bradley, 5 Blatchf. 
(U. S.) 134; s. c, 2 Fish. Pat. "Cas. 362; 
Morris v. Royer, 3 Fish. Pat. Cas. 176; 
Middletown Co. v. Judd, 3 Fish. Pat. 
Cas. 141; Goodyear v. Berry, 3 Fish. 
Pat. Cas. 439, s. c, 2 Bond (U. S.) 189; 
Knight V. Baltimore etc. R. Co., i 
Taney (U. S.) 106; ». c, 3 Fish. Pat. 
Cas. i; Manufacturing Co. v. Du Brul, 

2 Bann. & Ard. Pat. Cas. 618; s. c, 12, 
Pat. Off.Gaz.351. 

And rhany other cases where the 
principle is thoroughly established. 
And that it has not been extended be- 
yond the original invention. Bantz v. 
Elsar, I Bann. & Ard. Pat. Cas. 351; 
s. c, 6 Pat. Off. Gaz. 117. 

1. Giant Powder Co. v. California 
etc. Powder Works, 4 Fed. Rep. 720; 
s. I,., iS Pat. Off. Gaz. 1339; Flower v. 
Rayner, 5 Fed. Rep. 793; s. c, ig Pat. 
Off. Gaz. 425. 

The action of the Commissioner is 
now conclusive as to the existence of 
fraud in making the application. Giant 
Powder Co. v. Safety etc. Powder Co., 
10 Sawy. (U. S.) 23; s. c, 19 Fed. Rep. 
sog; s. c, 27 Pat. Off. Gaz. 99; Sey- 
mour V. Osborne, 11 Wall. (U. S.) 
i;i6; La Baw v. Hawkins, 2 Bann. & 
. Ard. Pat. Cas. 428; s. c, 6 Pat. Off. Gaz. 
724; Johnsen v. Beard, 2 Bann. & Ard. 
Pat. Cas. so; s. c, 8 Pat. Off. Gaz. 435; 
Schullinger v. Cranford, 4 Mackey (U. 
S.) 4i;o; Corn Planter Patent, 23 Wall. 
(U. S.) 181; s. c.,6 Pat. Off. Gaz. 392. 

2. U. S. Rev. Stats., ^ 4916; Sey- 
mour V. Osborne, 3 Fish. Pat. Cas. 555; 
Sickels V, Evans, 2 Cliff. (U. S.) 203; 
s. c. 2 Fish. Pat. Cas. 417; Battin v. 



40 



Taggart, i Fish. Pat. Cas. 139; Cahardt 
V. Austin, 2 Fish. Pat. Cas. 543; Sickles 
V. Falls Co., 4 Blatchf. (U. S.) 508; 
s. c, 2 Fish. Pat. Cas. 202; Goodyear v. 
Berry, 2 Bond (U. S.) 189; s. c, 3 Fish. 
Pat. Cas. 439; American Wood Pa- 
per Co. V . Fibre Disintegrating Co., 
3 Fish. Pat. Cas. 362; American Wood 
Paper Co. v. Heft, 3 Fish. Pat. Cas. 
316; Dunham v. Dennison Mfg. Co., 40 
Fed. Rep. 667; Hubel v. Dick, 24 
Blatchf. (U. S.) 139; s.c, 28 Fed. Rep. 
656; Combined Patents Can Co. v. 
Lloyd, II Fed. Rep. 149; Flower v. 
Rayner, ig Pat. Off. Gaz. 425; Cum- 
mings V. Newton, 4 Bann. & Ard. Pat. 
Cas. 159; s. c, 16 Pat. Off. Gaz. 720; 
Neacj' V. AUis, 22 Pat. Off. Gaz. 1621; 
M'Kay v. Stowe, 17 Fed. Rep. 517; 
United States etc. Felting Co. v. Haven, 
3 Dill. (U.S.) 131; s. c, 2 Bann. & Ard. 
Pat. Cas. 164; s. c, 9 Pat. Off. Gaz. 253; 
Goodyear v. Providence Rubber Co., 2 
Fish. Pat. Cas. 499; Reed v. Chase, 25 
Fed. Rep. 94; Haines v. Peck, 26 Fed. 
Rep. 625; Flower v. Detroit, 127 U. S. 
563; National Pump Cylinder Co. v. 
Simmons Hardware Co.,- 18 Fed. Rep. 
324; Globe Nail Co. v. United States 
etc. Nail Co., ig Fed. Rep. 8ig; Phila- 
delphia Novelty Mfg. Co. v. Rouss, 39 
Fed. Rep. 273. 

The original patent consisted of two 
features: First, in the collars of 
parchment- paper or paper prepared 
with animal sizing. Second, in coating 
one or both sides of the collar with a 
thin varnish of bleached shellac to give 
smoothness, strength and stiffness, and 
to repel moisture; the reissue describes 
a paper, other than as above described, 
and did not require the collars to be' 
coated with shellac. Held,' this was a 
different invention. Union Paper Col- 
lar Co. V. Van Dusen, 23 Wall. (U. S.) 
530; s. c, 7 Pat. Off. Gaz. gig. 

The original patent for one of its 
elements had the use of a hot, fat liq- 
uid; the reissue included both hot and 
cold. Held, not the same invention. 
Russell V. Dodge, g3 U. S. 460; s.c, ii 
Pat. Off. Gaz. 151. 

The original patent had the canceling 
device in a letter-canceling and post- 
marking contrivance, restricted to a 
tube containing a piece of wood or 
other material; the reissue claimed a 
stamp without the peculiar mechan- 



Patent Office. 



PA. TENT LA W. 



Seissne, 



and cannot contain new or extraneous matter } although, without 



isms. James v, Campbell, 104 U. S. 
356. 

The reasonable inference in the orig- 
inal specification of Green's patent was 
that an air-tight connection was made 
between the tube and the earth. Held, 
that a description of means of making 
such air-tight connection did not de- 
scribe a different invention. Eames v. 
Andrews, 122 U. S. 40. 

The courts will treat a reissue favor- 
ably, where the patentee is clearly 
seeking, by apt words, to cover his in- 
vention, and nothing more. Crandal 
V. Parker Carriage Goods Co., 20 Fed. 
Rep. 851. 

Parol testimony of what the inven- 
tion actually consisted of cannot be 
used to correct a defect for the purpose 
of obtaining a reissue. Union Paper 
Collar Co. V. Van Dusen, 23 Wall. (U. 
S.) 530; s.c.,7 Pat. Off. Gaz. 919; Averill 
Paint Co. v. National Paint Co., 22 
Pat. Off. Gaz. 585; Farr v. Webb, 10 
Blatchf. (U. S.) 96; s. c, 5 Fish. Pat. Cas. 
593; s. c, 2 Pat. Off. Gaz. 568; Sarven 
V. Hall, 9 Blatchf. (U. S.) 524. 

Nor will a mere inadvertence to 
insert a portion of the invention in the 
original specification, be considered a 
sufficient excuse. Atwater Mfg. Co. v. 
Beecher Mfg. Co., 8 Fed. Rep. 608. 

But apparently a proof of what was 
in a lost or dilapidated model may be 
received. Meyer v. Goodyear etc. 
Glove Mfg. Co., 22 Pat. Off. Gaz. 681 ; 
Aultman v. Holley, n Blatchf. (U. S.) 
317; s. c, 6 Fish. Pat. Cas. 534; s. c, 5 
Pat. Off. Gaz. 3; Royer v. Russell, 7 Fed. 
Rep. 696; s. c, 20 Pat. Off. Gaz. 1819. 

A liberal construction of the original 
patent will be made to avoid declaring 
a reissue void for being not for the same 
invention as the original. Milligan 
Glue Co. V. Upton, 97 U. S. 3; s. c, 6 
Pat. Off. Gaz. 837; Yale Lock Mfg. 
Co. V. New Haven Sav. Bank, 32 Fed. 
Rep. 167. 

1. Giant Powder Co. v. California 
etc. Powder Co., 4 Fed. Rep. 720; s. c, 
18 Pat. Off. Gaz. 1339; Flower v. Ray- 
ner, 5 Fed. Rep. 793; s. c, 19 Pat. Off. 
Gaz. 425; Wells v. Gill, 6 Fish. Pat. 
Cas. 89; s. c, 2 Pat. Off. Gaz. 590; 
Heald v. Rice, 21 Pat. Off. Gaz. 1447; 
Fay V. Preble, 14 Fed. Rep. 652; Aver- 
ill Chemical Paint Co. v. National etc. 
Paint Co, 22 Pat. Off. Gaz. 585; 
Schultz V. Ostrander, 27 Fed. Rep. 245; 
Parker etc. Co.f . Yale Lock Co., 18 Fed. 



Rep. 43; Vacuum Oil Co. v. Buffalo 
Lubricating Co., 20 Fed. Rep. 850; 
Yale Lock Mfg. Co. v. James, 20 Fed. 
Rep. 903; Reed v. Chase, 25 Fed. Rep. 
94; Columbia Rubber Co. v. Klous, 33 
Fed. Rep. 275; Andrews v. Hovey, 26 
Pat. Off. Gaz. loii; Schillinger v. 
Cranford, 4 Mackey (U. S.) 450; s. c, 
37 Pat. Off. Gaz. 49; Farmers' etc. Mfg. 
Co. V. Challenge Corn Planter Co., 23 
Fed. Rep. 42; s.c, 30 Pat. Off. Gaz. 661; 
Hayes v. Seton, 20 Blatchf. (U. S.) 484; 
s. c, 12 Fed. Rep. 120; Streit v. Lau- 
ter, 1 1 Fed. Rep. 309; Hart v. Thayer, 
20 Blatchf. (U. S.) 315; s. u., 21 Pat. Off. 
Gaz. 791; s. c, 10 Fed. Rep. 746; Curtis 
V. Branch, 4 Bann. & Ard. Pat. Cas. 
189; s. c, 15 Pat. Off. Gaz. 919; Kero- 
sene Lamp Heater Co. v. Littell, 3 
Bann. & Ard. Pat. Cas. 312; s. c, 13 
Pat. Off. Gaz. 1009; Russell v. Dodge, 93 
U. S. 460; Stevens v. Pritchard, 4 Cliff. 
(U. S.) 417; s. c, 2 Bann. & Ard. Pat. 
Cas.390;Cahart7;.Austin,2CUff.(U.S.) 
528; s. c, 2 Fish. Pat. Cas. 468; Knight 
V. Baltimore etc. R. Co., i Taney (U. 
S.) 106; s. c, 3 Fish. Pat. Cas. i; Dyson 
V. Danforth, 4 Fish. Pat. Cas. 133; 
Steam Gage etc. Co. v. Miller, 11 Fed. 
Rep. 718; New York Bung etc. Co. v. 
Hoffman, 20 Blatchf. (U. S.) 3; Wicks 
f. Stephens, 2 Woods (U. S.) 310; s. c, 

2 Bann. & Ard. Pat. Cas. 318; United 
States Felting Co. v. Haven, g Pat. Off. 
Gaz. 253; Swaine etc. Mfg. Co. -v. 
Ladd, 2 Bann. & Ard. Pat. Cas. 488; 
s. u., II Pat. Off. Gaz. 153; Matthews w. 
Iron Clad Mfg. Co., 124 U. S. 349; s. c, 
42 Pat. Off. Gaz. 827; Matthews v. Bos- 
ton Mach. Co., 105 U. S. 54; s. c, 21 
Pat. Off. Gaz. 1349; Window Screen 
Co. V. Houghton, i Bann. & Ard. Pat. 
Cas. 327; Ives V. Sargent, 119 U. S. 
6i;2 ; s. c, 38 Pat. Off. Gaz. 781 ; Gong etc. 
Mfg. Co. V. Clark, 3 Bann. & Ard. Pat. 
Cas. 211; Thomas v. Shoe Mach. Co., 

3 Bann. & Ard. Pat. Cas. 557; s. c, 16 
Pat. Off. Gaz. 541 ; Vogler v. Semple, 7 
Biss. (U. S.) 382; s.c, II Pat. Off. Gaz. 
923; Doane etc. Mfg. Co. v. Smith, 
15 Fed. Rep. 459; a. c, 24 Pat. Off. Gaz. 
302; American etc. Drill Co. v. Sulli- 
van Mach. Co., 22 Batchf. (U. S.) 
298; s. V.., 21 Fed. Rep. 74; s. c, 28 Pat. 
Off. Gaz. 81 n; Parker etc. Co. v. Yale 
Clock Co., 123 U. S. 89; Cammeyer v. 
Newton, 4 Bann. & Ard. Pat. Cas. 159; 
s. c, 16 Pat. Off. Gaz. 720; Campbell *. 
James, 104 U. S. 356; s. c, 2 Pat. Off. 
Gaz. 337; Gosling v. Roberts, 106 U. S. 



41 



Tttent Office. 



PA TENT LA W. 



SeisEae. 



considering other doctrines limiting the practical extent of this,* 
the invention may be gathered from anything contained in the 
specifications, drawing or model,* and expressed in different 



39; s. c, 22 Pat. Off. Gaz. 1785; Moffitt 
V. Rogers, 106 U. S. 423; s. c, 23 Pat. 
Off. Gaz. 270; Wing v. Anthonj, 106 
U. S. 142, Warring v. Johnson, 19 
Blatchf. (U. S.) 38; s. c, 6 Fed. Rep. joo. 
Hopkins etc. Mfg. Co. v. Corbin, 103 
U. S. 786, Ball V. Langles, 102 U. S. 12S; 
Garneau v. Dozier, 102 U. S. 230; Jones 
V. McMurray, 2 Hughes (U. S.) 527; 
s. c, 3 Bann. & Ard. Pat. Cas. 130; 
Atwater Mfg. Co. v. Beecher Mfg. Co.. 
8 Fed. Rep. 608. 

The later rulings of the supreme 
court as to what may be included in a 
reissued patent, seem to rule that it 
must appear affirmatively from the com- 
parison of the two patents, that the re- 
issue embraces no invention which was 
not mtended to be secured by the orig- 
inal patent. Flower t'. Detroit, 127 U. 
S. 563; s. c, 43 Pat. Off.- Gaz. 1348; 
Hoskm 7'. Fisher, 125 U. S. 217; s. c, 
43 Pat. Off. Gaz. 1509; Parker etc. Co. 
V. Yale Clock Co., 123 U. S. S7; s. c, 
41 Pat. Off. Gaz. 811. 

New Matter — Definition of —New mat- 
ter is anything not embraced in, or 
necessarily flowing from the invention 
as originally described, which affects 
the substance of the invention and 
might have been the subject of a new 
patent. Dederick v. Cassell, 9 Fed. 
Rep. 306; s. c, 20 Pat. Off. Gaz. 1233; 
Christman v. Rumsey, 17 Blatchf. (U. 
S.) 148; s. c, 4 Bann. & Ard. Pat. Cas. 
506, s. c, 17 Pat. Off. Gaz. 903; Thomas 
V. Shoe Mach. Co., 3 Bann. & Ard. 
Pat. Cas. 13S; 16 Pat. Off. Gaz. 541; 
Purviance v. Yerrington, 2 Bann. & 
Ard. Pat. Cas. 237; s. c, 9 Pat. Off. 
Gaz. 6S9; Siebert etc. Oil Cup Co. v. 
Harper etc. Lubricator Co., 4 Fed. 
Rep. 328. 

1. See cases cited in subsequent 
notes. 

2. Sickles v. Evans, 2 Cliff. {U. S.) 
203; o. c. 2 Fish. Pat. Cas. 417; Sey- 
mour V. Osborne, 3 Fish. Pat. Cas. 515^; 
Cabart v. Austin, 2 Cliff. (U. S.) 543; 
s. c, 2 Fish. Pat. Cas. 543; Knight t'. 
Baltimore etc. R. Co., iTaney (U. S.) 
106, ». !_., 2 Fish. Pat. Cas. i; Hoff- 
heins z'. Brandt, 3 Fish. Pat. Cas. 21S; 
Sarven v. Hall, 9 Blatchf. (U. S.) 524; 
s. c, 5 Fish. Pat. Cas. 415; s. c, i Pat. 
Off. Gaz. 437, Kirby v. Dodgeetc. Mfg. 
Co.. 10 Blatchf. (tf. S.) 307; s. c. 6 
Fish. Pat. Cas. 307; s. c, 3 Pat. Off. 

4: 



Gaz. 181; Adjustable Window Screen 
Co. V. Boughton, 1 Bann. & Ard. Pat_ 
Cas. 327; Flint v. Roberts, 4 Bann. &: 
Ard. Pat. Cas. 168; Atwood v. Port- 
land Co., 10 Fed. Rep. 283; s. c, 5. 
Bann. & Ard. Pat. Cas. 533; Holmes^ 
etc. Tel. Co. v. Domestic Teleph. Co.^ 
42 Fed. Rep. 220; Dederick v. Cassell, 
9 Fed. Rep. 306; Hendy v. Golden. 
State etc. Iron Works, 8 Sawyer (U. 
S.) 468; s. c, 17 Fed. Rep. 515; Bussey 
V. Wagner, 2 Bann. & Ard. Pat. Cas> 
229; s. c, 9 Pat. Off. Gaz. 300; Whit- 
tlesey V. Ames, 9 Biss. (U. S.) 225; s. c.,. 
13 Fed. Rep. 893; s. c, 5 Bann. & Ard. 
Pat. Cas. 96; s. c, 18 Pat. Off. Gaz. 357;. 
Calkins v. Bertrand, 6 Biss. (U. S.) 
494; s. c, 2 Bann. & Ard. Pat. Cas. 
215; s. c, 9 Pat. Off. Gaz. 795; Meyer 
V. Goodyear etc. Glove Mfg. Co., 11 
Fed. Rep. 891; s. c, 22. Pat. Off. Gaz. 
681; Reissner v. Anness,3 Bann. & Ard, 
Pat. Cas. 176; s. c, 13 Pat. Off. Gaz. 
870; Barker v. Shoots, 18 Fed. Rep.. 
647; Peoria Target Co. v. Cleveland 
Target Co., 43 Fed. Rep. 922; Eachus 
V. Broomall, 115 U. S. 429. 

So where the drawings and descrip- 
tion show that the matter embraced in 
the reissue was not in the original 
patent, the reissue is invalid. Covell 
V. Pratt, 18 Blatchf. (U. S.) 126;- s.c.,. 
18 Pat. Off. Gaz. 301; ». c, 1; Bann. & 
Ard. Pat. Cas. 380; s.c, 2 Fed. Rep. 359. 
What was suggested or indicated "in 
the original specification, drawing or 
Patent Office model, is not to be con- 
sidered as a part of the invention in- 
tended to have been covered bv the 
original patent, unless it can be' seen 
from a comparison of the two patents, 
that the invention which the original 
patent was intended to cover, embraced 
the things thus suggested or indicated 
in the original specification, etc., and 
unless the original specification in- 
dicated that those things were embraced' 
in the invention intended to have been 
secured in the original patent. Parker 
etc. Co. I.. Yale Clock Co., 123 U. S. 
87. 

Model. — Under this ruling the office 
model is not sufficient. Flower v. Y)c- 
troit, 127U.S. .;62; s. c, 43 Pat. Off. Gaz. 
1348; Parker etc. Co. v. Yale Clock 
Co., 21 Blatchf (U. S.) 485; s. c, 18 
Fed. Rep. 41;; probably overruling 
Hendy v. Golden State etc. Iron Works, 



Patent Office. 



PA TENT LA W. 



Eeiscne. 



terms or language from that which is used in the original patent.* 



8 Sawy. (U. S.) 468; s. c, 17 Fed. Rep. 
515; Reissner t. Anness, 3 Bann. & 
Ard. Pat. Cas. 176; s. c, 13 Pat. Off. 
Gaz. 870; Mever v. Goodyear etc. Glove 
M/g. Co., 2o'Blatchf. (U. S.) 91; s. c, 
II Fed. Rep. 891. 

Drawing. — But if the invention at- 
tempted to be covered appears in the 
drawing, it is sufficient. Meyer v. 
Goodyear etc. Glove Mfg. Co., 20 
Blatchf. (U. S.) 91; s. c, 22 Pat. Off. 
Gaz. 6S1; s. u.. II Fed. Rep. 891. 

1. French v. Rogers, i Fish. Pat. Cas. 
133; Tarr v Folsom, i Holmes (U. S.) 
313; s. c, I Bann. & Ard. Pat. Cas. 24; 
s. c, 5 Pat. Off. Gaz. 92; Wells v. 
Jaques, i Bann. & Ard. Pat. Cas. 60; 
Wonson v. Peterson, 3 Bann. & Ard. 
Pat. Cas. 249; Carew v. Boston etc. 
Fabric Co., i Holmes (U. S.) 45; s. c, 

5 Fish. Pat. Cas. 90; s. c, i Pat. Off. 
Gaz. 91; Crompton v. Belknap Mills, 3 
Fish.' Pat. Cas. 536; Blake -<.'. Stafford, 
6Blatchf. (U. S.) 19s; Tucker zi. Tucker 
Mfg. Co., 4 Cliff. (U. S.) 397; s. c, 3 
Fish. Pat. Cas. 294; Morse t>. Bain, 9 
West. L. J. 106; Stevens v. Pritchard, 
10 Pat. Off. Gaz. 505: Lorrilard Co. v. 
McDowell, II Pat. Off. Gaz. 640; Bridge 
V. Brown, i Holmes (U.-S.) 53; Searls 
V. Van Nest, 3 Bann. & Ard. Pat. Cas. 
121; s. c, 13 Pat. Off. Gaz. 772; Atlantic 
etc. Powder Co. v. Rand, 16 Blatchf 
(U. S.) 250; s. c, 16 Pat. Off. Gaz. 87; 
s. c, 4 Bann. & Ard. Pat. Cas. 263; St. 
Louis Stamping Co. v. Qiiimby, 4 Bann. 

6 Ard. Pat. Cas. 192: s. c, 16 Pat. Off. 
Gaz. 135; Thomas t'. Shoe Mach. Co., 
3 Bann. & Ard. Pat. Cas. 557; o. c, 16 
Pat. Off. Gaz. i;4i; Christman v. Rum- 
sey, 17 Blatchf (U. S.) 148; s. c, 4 
Bann. & Ard. Pat. Cas. 506; s. c, 17 
Pat. Off. Gaz. 903; Stephenson v. Sec- 
ond Ave. R. Co., 5 Bann. & Ard. Pat. 
Cas. 116; s. c, I Fed. Rep. 416; Tyler 
V. Welch, 18 Blatchf (U. S.) 209; s. c, 
3 Fed. Rep. 636; Wisner v. Dodds, 5 
Bann. & Ard. Pat. Cas. 447; s.c, 2 Fed. 
Rep. 781; McCreary v. Pennsylvania 
Canal Co., 5 Fed. Rep. 367; Marks v. 
Fox, 18 Blatchf (U. S.) 502; s. c, 6 Fed. 
Rep. 727; Loercher v. Crandal, 11 Fed. 
Rep. 872; ». c, 21 Pat. Off. Gaz. 863; 
Strobridge v. Landers, 1 1 Fed. Rep. 
880; s. C.21 Pat. Off. Gaz. 1027; SiearlsT'. 
Worden, 11 Fed. Rep. 501; s. c, 21 Pat. 
Off. Gaz. I9';5; Putnam v. Keystone 
Bottle Stopper Co., 38 Fed. Rep. 234; 
Union Paper Bag Mach. Co. xt. Water- 
bury, 39 Fed. Rep. 389; Pope Mfg. Co. t'. 



Gormully etc. Mfg. Co., 34 Fed. Rep. S96;, 
Walker ;■. Terre Haute, 44 Fed. Rep. 
70; Hubel -•. Waldie, 35 Fed. Rep. 414; 
Turner etc. Mfg. Co. v. Dover Stamp- 
ing Co., Ill U. S. 319; National Spring 
Co. T'. Union etc. Spring Co., 12 Blatchf. 
(U. S.) 80; Blackz^.Thorne, 12 Blatchf. 
(U. S.) 20. 

mustrations of Changes Which May or 
May Not be Made in the Specifications.— 
From an imperfect description of one 
kind of machine to which an invention, 
may be applied to another kind of ma- 
chine. Aultman v. Holley, 1; Pat. Oft'. 
Gaz. 3; ». t., II Blatchf. (U.S.) 317; 
De Fiorez v. Raynolds, 14 Blatchf (U. 
S.) 505; s. c, 3 Bann. & Ard. Pat. Cas.. 
292; Patten v. Stewart, 7 Fed. Rep. 215;. 
Mfg. Co. V. Thomas, 5 Fish. Pat. Cas> 
148; St. Louis Stamping Co. v. Quimby,. 
4 Bann. & Ard. Pat. Cas. 192; s. c, 16. 
Pat. Off. Gaz. 135. 

An inserted assertion that the inven- 
tion belongs to a certain class and ac- 
complishes a certain result, does not 
invalidate. Reed v. Chase, 25 Fed. Rep. 
94; Patten v. Stewart, 18 Blatchf (U.. 
S.) 561; s. c, 7 Fed. Rep. 215; s. c, 19, 
Pat. Off. Gaz. 997; Doaneetc.Mfg. Co. f. 
Smith, 15 Fed. Rep. 459; s. i,., 24 Pat- 
Off. Gaz. 302; Schillinger v. Gunther, 
15 Blatchf (U. S.) 303; s. c, 3 Bann. & 
Ard. Pat. Cas. 491; s. c, 14 Pat. Off. 
Gaz. 713. 

Changes Allowable. — Changes of form, 
where form is not essential. Putnam 
V. Hutchinson, 12 Fed. Rep. 131; Abbe 
V. Clark, 3 Bann. & Ard. Pat. Cas. 211; 
s. c, 13 Pat. Off, Gaz. 274; Decker v. 
Grote, 10 Blatchf (U. S.) 331; s. c, 6. 
Fish. Pat. Cas. 424; ». c, 3 Pat. Off. 
Gaz. 522. 

Otherwise where the change, though 
slight, is a substantial one producing a 
new result. Kirbv v. Dodge etc. Mfg. 
Co., 10 Blatchf (U. S.) 307; s. c. 6 Fish. 
Pat. Cas. I !;6; =. c. 3 Pat. Off. Gaz. iSi. 

Changing the relative importance of 
various matters. Broadnax v. Central 
Stock Yard etc. Co., 4 Fed. Rep. 214; 
s. c, 5 Bann. & Ard. Pat. Cas. 609; 
Poppenhausen v. Falke, 4 Blatchf (U. 
S.) 493; s. c, 2 Fish. Pat. Cas. 181; 
Robertson v. Secombe Mfg. Co., 10 
Blatchf (U. S.) 481; s. c, 6 Fish. Pat. 
Cas. 268, ». c, 3 Pat. Off. Gaz. 412; 
American etc. Pavement Co. v. Eliza- 
beth, 6 Fish. Pat. Cas. 424; s. c, 3 Pat.. 
Off. Gaz. 522. 

Or the drawing in immaterial par- 



43 



Patent Office. 



PA TENT LA TV. 



Beissue. 



(e) Combination, Process, Product, Machine. — A patentee 
cannot reissue a patent for a combination of fewer elements than 
he describes and claims as constituting his invention in his orig- 
inal specification. 1 A patent for one of the various subjects of 



ticulars. Pearl v. Appleton Co., 3 Fed. 
Rep. 153; s. c, 5 Bann. & Ard. Pat. 
Cas. 533. 

Or stating new results. Putnam v. 
Yerrington, 2 Bann. & 'Ard. Pat. Cas. 
237; s. c, 9 Pat. Off. Gaz. 689. 

A new drawing may^embrace matter 
described in the specifications. Union 
Paper Bag Co. v. Nixon, 6 Fish. Pat. 
Cas. 402; Hank's Case, 2 A. L. T. 129. 

A material change in the drawing 
not warranted by the specification, 
must not be made. Flower v. Detroit, 
127 U. S. 563. 

Adding expositions of the prior state 
of the art. Kearney v. Lehigh Valley 
R. Co., 32 Fed. Rep. 320; Adeef. Peck, 
42 Fed. Rep. 497; Turner etc. Mfg. Co. 
V. Dover Stamping Co., 11 1 U. S. 319; 
Robertson v. Secorabe Mfg. Co., 10 
Blatchf. cU. S.) 481; s. c, 6 Fish. Pat. 
Cas. 268; s. c, 3 Pat. Off. Gaz, 412; 
Yale Lock Mfg. Co. v. Scoville Mfg. 
Co., 18 Blatchf. (U. S.) 248; s. c, 3 
Fed. Rep. 288. 

Introduction of the word "prefer- 
ably" in describing certain mechanical 
details. Timken v. Olin, 37 Fed. Rep. 
205. 

Correcting the spelling of patentee's 
name. Bignall v. Harvey, 18 Blatchf. 
(U. S.) 353; s. c, 4 Fed. Rep. 334; s. c, 
18 Pat. Off. Gaz. 1275. 

But having described certain modifi- 
cations of a device, and stated that the 
invention can be modified "in various 
other equivalent ways, such as would 
suggest themselves to any intelligent 
mechanic," other modifications were 
introduced and called new inventions. 
Held, that the reissue was void. Phila- 
delphia Novelty Mfg. Co. v. Rouse, 39 
Fed. Rep. 273. Comfare Broadnax v. 
Central Stock Yard Co., 4 Fed. Rep. 
214; s.c, 5 Bann. & Ard. Pat. Cas. 609; 
Dunbar v. White, 4 Woods (U. S.) 
1 16; s. c, 15 Fed. Rep. 747; s. c, 23 
Pat. Off. Gaz. 1446. 

Omitting ambiguous or substituting 
clear words and phrases not forbidden. 
Atlantic etc. Powder Co. v. Goodyear, 
3 Bann. & Ard. Pat. Cas. 161; s. c, 13 
Pat. Off. Gaz. 45; Draper v. Potomska 
Mills, 3 Bann. & Ard. Pat. Cas. 214; 
s. c, 13 Pat. Off. Gaz. 276. 

A change in the wording of a claim 



by which an invention originally 
claimed as a new manufacture, may be 
claimed in the reissue as a new com- 
bination. Middletown Tool Co. v. 
Judd, 3 Fish. Pat. Cas. 141. 

Latest Eule of Supreme Court Crit- 
icising What May be Contained in a Re- 
issued Patent. — Those cases in which 
this court has held reissues to be in- 
valid, were cases where, by the re- 
issued patent, the scope of the original 
was so enlarged as to cover and claim 
as a new invention that which was 
either not in the original specification 
as a part of the invention described, 
or, if described, was, by not being 
claimed, virtually abandoned and ded- 
icated to public use. Andrews v. 
Hovey, 123 U. S. 267. 

Even where the invention is broader 
than supposed by the patentee it may 
be covered by the reissue. Tuttle v. 
Loomis, 24 Fed. Rep. 789; s. c, 30 
Pat. Off. Gaz. 344; Jenkins v. Stetson, 
32 Fed. Rep. 398 ; Odell v. Stout, 22 
Fed. Rep. 159; Loring v. Hall, 15 Pat. 
Off. Giz. 471. 

1. Gill V. Wells, 22 Wall. (U. S.) i ; 
Washburn etc. Mfg. Co. v. Fuchs, 16 
Fed. Rep. 661 ; Matthews v. Boston 
Mach. Co., 105 U. S. 54; s. c, 21 Pat. 
Off. Gaz. 1349; Johnson v. Flushing 
etc. R. Co., 22 Pat. Off. Gaz. 329; 
Turrell v. Bradford, 23 Pat. Off. Gaz. 
1623 ; Gage v. Herring, 23 Pat. Off. 
Gaz. 2119; s. c, 107 U. S. 641 ; Yale 
Lock Mfg. Co. V. James, 125 U. S. 
447 ; Brewster v. Shuler, 37 Fed. Rep. 
785 ; Jenkins v. Stetson, 32 Fed. Rep. 
398; Neacy v. Allis, 13 Fed. Rep. 874; 
s. c, 22 Pat. Off. Gaz. 1621 ; Cammeyer 
V. Newton, 4 Bann. & Ard. Pat. Cas. 
159; Redmond v. Parham, 16 Pat. Off. 
Gaz. 359; Hale v. Stimpson, 2 Fish. 
Pat. Cas. 565, 

Where the original patent does not 
suggest that a part is a distinct inven- 
tion, the patent cannot be reissued to 
cover that part. Blackman v. Hib- 
bler, 17 Blatchf. (U. S.) 333; s. c, 4 
Bann. & Ard. Pat. Cas. 641 ; s. c, 17 
Pat. Off. Gaz. 107. 

Combined in a Peculiar Manner. — A 
claim for a combination of parts com- 
bined in a certain way capnot be re- 
issued without restriction. McMuf ray 



44 



Patent Office. 



PA TENT LA W. 



BeissTie. 



invention, which describes another as- the invention of patentee, 
may, however, be reissued to embrace the other also.^ 



V. Mallory, iii U. S. 97; s. c, 27 Pat. 
Off. Gaz. 915. 

Substitution of Element. — A substi- 
tution of another element for the one 
originally contained, and not being an 
equivalent therefor, is not allowable. 
Blackman v. Hibler, 17 Blatchf. (U. 
S.) 333 ; s. c, 4 Bann. & Ard. Pat. Cas. 
641; s. c, 17 Pat. Off. Gaz. 107; Na- 
tional Spring Co. v. Union Car Spring 
Co., 12 Blatchf. (U. S.) 80; Decker v. 
Grote, 10 Blatchf. (U. S.) 331 ; s. c, 6 
Fish. Pat. Cas. 143 ; Gallahue -■. But- 
terfield, 10 Blatchf. (U. S.) 236; s. c, 
6 Fish. Pat. Cas. 203 ; s. c, 2 Pat. Off. 
Gaz. 648. 

Under tliis doctrine a patent for a 
combination in which one or more of 
the elements was described and treated 
as a separate invention, the reissue 
may claim the various elements thus 
described. Wheeler t;. Clipper Mower 
etc. Co., 10 Blatchf. (U. S.) 181; s. c, 
6 Fish. Pat. Cas. i ; s. c, 2 Pat. Off. 
Gaz. 442 ; Battin v. Taggert, 17 
How. (U. S.) 74; Wheeler v McCor- 
mick, II Blatchf. (U. S.) 334;s. c, 6 
Fish. Pat. Cas. 551 ; s. c, 4 Pat. Off. 
Gaz. 692 ; Bantz v. Frantz, 105 U. S. 
160; s. c, 21 Pat. Off. Gaz. 2037; Gal- 
lahue f . Butterfield, 10 Blatchf. (U. S.) 
232 ; s. c, 6 Fish. Pat. Cas. 203 ; s. c, 
2 Pat. Off. Gaz. 645 ; Jordoh v. Dob- 
son, 4 Fish. Pat. Cas. 232 ; Chicago 
Fruit House v. Busch, 2 Biss. (U. S.) 
472; >. c, 4 Fish. Pat. Cas. 395; 
Jenkins -'. Stetson, 32 Fed. Rep. 398 ; 
Dunbar v. White, 4 Woods (U. S.) 
116; s. c, 15 Fed. Rep. 747; s. c, 23 
Pat. Off. Gaz. 1446. 

And this doctrine permits a sub- 
combination which is shown by the 
specifications or drawings, to have 
been part of the original invention, to 
be claimed in a reissue. Kerosene 
Lamp Heater Co. v. Littell, 3 Bann. & 
Ard. Pat. Cas. 312; s. c, 13 Pat. Off. 
Gaz. 1009; Christman v. Rumsey, 17 
Blatchf. (U. S.) 148; s. c, 4 Bann. & 
Ard. Pat. Cas. 506; s. c, 17 Pat. Off. 
Gaz. 903 ; Dederick v. Cassell, 9 Fed. 
Rep. 306; s. c, 20 Pat. Off. Gaz. 1233; 
Turrell v. Spaeth, 3 Bann. & Ard. Pat. 
Cas. 458. 

An omission in a combination of a 
merely incidental feature of the in- 
vention, included by accident in the 
original patent, does not invalidate the 
reissue. Adee v. Peck, 42 Fed. Rep. 



497; McWilliams Mfg. Co. v. Blun- 
del!, 22 Pat. Off. Gaz. 177; Woodward 
V. Dinsmore, 4 Fish. Pat. Cas. 163. 

1. Process. — A patent for a process 
may be reissued for a process and pro- 
duct. Tucker v. Dana, 7 Fed. Rep. 
213; Merrill v. Yeomans, i Holmes 
(U. S.) 331; s. c, I Bann. & Ard. Pat. 
Cas. 47 ; s. c, 5 Pat. Off. Gaz. 267. 

Limitation. — But not where the pro- 
duct is not set forth as an invention of 
the patentee. Atlantic etc. Powder 
Co. V. California etc. Powder Works, 
98 U. S. 126; s. c, 15 Pat. Off. Gaz. 
289. 

Product. — A patent for an article in 
a certain form, cannot be reissued to 
claim the article Avithout limitation of 
form. Vacuum Oil Co. v. Buffalo etc. 
Oil Co., 22 Blatchf. (U. S.) 266; s. c, 
20 Fed. Rep. 850 ; s. c, 28 Pat. Off. Gaz. 
iioi. Or an article made by a certain 
process, to the same made by any pro- 
cess. Cochrane v. Badische etc. 
Fabrik, iii U. S. 203 ; s. c, 27 Pat. Off. 
Gaz. 813. Or for all purposes. Fran- 
cis V. Mellon, 5 Fish. Pat. Cas. 153; 
s. c, I Pat. Off.'Gaz. 48. 

But the product and process may be 
both claimed if both were described. 
Badische etc. Fabrik x\ Hamilton Mfg. 
Co., 3 Bann. & Ard. Pat. Cas. 235 ; s. c, 
13 Pat. Off. Gaz. 273 ; Badische etc. 
Fabrik v. Higgin, 15 Blatchf. (U. S.) 
290; s. c, 3 Bann. & Ard. Pat. Cas. 
462; s. c, 14 Pat. Off. Gaz. 414; Holmes 
II. Dunham etc. Mfg. Co., 20 Blatchf. 
(U. S.) 123 ; s. c, 9 Fed. Rep. 757. But 
not otherwise. Averill etc. Paint Co. 
t'. National etc. Paint Co., 20 Blatchf. 
(U. S.) 42; s. c, 9 Fed. Rep. 462; s. c, 
22 Pat. Off. Gaz. 585. 

Machine and Process. — A process and 
a machine for applying the process 
are not necessarily one and the same 
invention. They are generally dis- 
tinct and different. James v. Camp- 
,bell, 104- U. S. 356; s. c, 21 Pat. Off. 
Gaz. 337; Giant Powder Co. -v. Cali- 
fornia Powder Works, 28 U. S. 136. 

And the question whether a patent 
describing both and claiming one, can 
be reissued to cover both, depends 
upon the fact whether the two are one 
and the same invention. Wing v. 
Anthony, 106 U. S. 142; Clark v. 
Kennedy Mfg. Co., 14 Blatchf. (U. S.) 
79; s. c, 2 Bann. & Ard. Pat. Cas. 479; 
s. c, II Pat. Off. Gaz. 68 ; Campbell -o. 



45 



Patent Office. 



PA TENT LA W. 



Beiaaaa. 



(/) Estoppel — (i) By Matters in the Application for- a 
Patent. — A claim cannot be incorporated in a reissued patent 
■which embraces matter disclaimed in the original application.^ 

(2) By Abandonment. — Where the purpose of the reissue is to 
■enlarge the claim, the application must be made within a reason- 
able time after the granting of the patent.* 



James, 104 U. S. 356; s. c, 21 Pat. Off. 
'Gaz. 337; Eachus t'. Broomall, 115 
U. S. 429; s. c, 33 Pat. Off. Gaz. 1265 ; 
Brainard i'. Gramme, 20 Blatchf. (U. 
S.) 530; ». c, 12 Fed. Rep. 621; New 
V. Warren, 22 Pat. Off. Gaz. 587. 

1. Streit V. Lanter, 11 Fed. Rep. 309; 
Leggett V. Avery, loi U. S. 256; s. c, 
17 Pat. Off. Gaz. 445; Putnam v. Tink- 
■ham, 4 Fed. Rep. 411; Putnam v. 
Hutchinson, 12 Fed.Rep. 127; Edgarton 
-I'. Furst etc.: Mfg.'^Co., 10 Biss. (U. S.) 
-402; s. c, 9 Fed. Rep. 450; s. c, 21 Pat. 
Oft". Gaz. 251; Beecher Mfg. Co. v. 
Atwater Mfg. Co., 114 U. S. 523; Fink 
V. Doty, 13 Pat. Off. Gaz. 322; Wicks 
V. Stevens, 2 Wood (U. S.) 310; a. c, i. 
JJann. & Ard. Pat. Cas. 310. 

These cases apparently overruled 
Kells V. McKenzie, 9 Fed. Rep. 284; s. 
<;., 20 Pat. Off. Gaz. 1663. 

Acquiescence in rejection by the 
Patent Office disclaims the matter re- 
jected, which cannot afterwards be in- 
-corporated in a reissue. Boland v. 
Thompson, 26 Fed. Rep. 633; Arnheim 
•V. Finster, 26 Fed. Rep. 277; Dobson v. 
Lees, 30 Fed. Rep. 625. 

It is sufficient to prevent the incor- 
poration of a matter in a reissue that 
the original patent in its specification 
shows that it was not intended to em- 
ploy it. James v. Campbell, 104 U. S. 
356; o. c, 21 Pat. Off. Gaz. 337; Edgar- 
ton V. Furst etc. Mfg. Co., 10 Biss. (U. 
S.) 402; s. c, 9 FecJ. Rep. 450; s. c, 21 
Pal. Off. Gaz. 261; Doane etc. Mfg. Co. 
V. Smith, 15 Fed. Rep. 459. 

Daniels v. Chesterman, 13 Pat. Off. 
Gaz. 4; Fames v. Andrews, 122 U. S. 
40; Yale Lock Mfg. Co. i'. James, 22 
Blatchf. (U. S.) 294; s. c, 20 Fed. Rep. 
•903; Sheppard v. Carrigan, 116 U. S. 
593; s. c, 34 Pat. Off. Gaz. 11 19; Toep- 
•fer V. Goetz, 31 Fed. Rep. 913; s. c, 41 
Pat. Off. Gaz. 933; Lee v. Walsh, 15 
Pat. Off. Gaz. 563; Prietz v. Bransford, 
31 Fed. Rep. 45S; Putnam v. Hutchin- 
son, II Biss. (U. S.) 233; s. c, 12 Fed. 
Rep. 127; Ex parte Hatchman, 3 Mac- 
key (U. S.) 288; s. c, 26 Pat. Off. Gaz. 
738; Blades v. Rand, 27 Fed. Rep. 93; 
Ives V. Sargent, 119 U. S. 652; Harts- 



horn V. Saginaw Barrel Co., 119 U. S. 
664; Dobson V. Lees, 30 Fed. Rep. 633. 

This admission cannot be contradict- 
ed or withdrawn by the patentee. Mof- 
fitt V. Rogers, 18 Fed. Rep. 147; Craw- 
ford V. Heysinger, 123 U. S. 589; s. c, 
42 Pat. Off. Gaz. 197. 

Various Limitations Have Been Made 
to This Doctrine.— Yale Lock Mfg. Co. 
V. Norwich Nat. Bank,. 19 Blatchf. (U. 
.S.) 123; s. c, 6 Fed. Rep. 377; Morey 
V. LoekwoodiS Wall., (U. S.), 230; S.hoe 
Tip Co. V. Protector Co., 2 Bann. & 
Ard. Pat. Cas. 561; Lee v. Walsh, 15 
Pat. Off. Gaz. 563; Stutz v. Armstrong, 
20 Fed. Rep. 843. 

Application was made May 9th, 1S74, 
containing a broad claim, the applica- 
tion was rejected and new applications 
claiming combinations of mechanism 
were filed; this application pending 
from March 12th, 1875, t° September 
25th, 1877, date when original patent 
was issued; shortly after the applicant 
reissued with a claim similar to the 
broad claim in his first application. 
Reissue held invalid. Yale Lock Mfg. 
Co. V. Berkshire Nat. Bank, 135 U. S. 

342- 

Cancellation of Claim from Misunder- 
standing Official Action. — Where, iiow- 
ever, the action of the Patent Office did 
not require an abandonment of part of 
the invention as claimed in the original 
application, cancellation of the claims 
for such part on a misapprehension of 
the action does not estop the patentee 
from reissuing to cover this part. 
Hutchinson v. Everett, 33 Fed. Rep. 
502; Yale Lock Mfg. Co. t;. New Haven 
Sav. Bank, 32 P>d. Rep. 167. 

2. Miller v. Bridgeport Brass Co., 104 
U. S. 350; s. c, 21 Pat. Off. Gaz. 201; 
Matthews v. Boston Mach. Co., 105 U. 
S. 54; Heald v. Rice, 10.4 U. S. 737; 
Bantz V. Frantz, 105 U. S. 160; s. c, 21 
Pat. Off. Gaz. 2057; Johnson v. Flush- 
ing etc. Co., 105 U. S. 539; s. c, 22 Pat. 
Off. Gaz. 329; Moffit V. Rogers, 106 U. 
S. 423; s. c, 23 Pat. Off. Gaz. 270; 
Gage V. Herring, 107 U. S. 640; s. c, 23 
Pat. Off. Gaz. 2119; Ives?'. Sargent, 17 
Fed. Rep. 447; Stiirley v. Mayer, 25 



46 



^Patent Office. 



PA TENT LA IV. 



Reiasae. 



{g) Reasonable Time Applying for Reissue.— What is a 
reasonable time within which to apply for a reissue in which the 
claims are broadened, is a question to be decided upon the facts 
of every case.* From analogy^ the space of two years has been 
suggested in several cases, but cases where a less time has been 
held to be excessive and a greater time excusable, have been 
decided.** 



Fed. Rep. 38, Worden v. Searls, I2i V. 
S. 14, Dryfoos v. Wiese, 19 Fed. Rep. 
315; Rayer etc. Mach. Co. v. American 
Printing Co., 19 Fed. Rep. 42S, Ameri- 
can etc. Boring Co. z\ Sheldon, 25 Fed. 
Rep. 768 , Reed v. Chase, 25 Fed. Rep. 
94; Asmus V. Alden, 27 Fed. Rep. 684, 
Scliultz V. Ostrander, 27 Fed. Rep. 295, 
Hoe V. Knap, 27 Fed. Rep. 204; Cur- 
ran V. St. Louis Refstg/^ator etc. Co., 
29 Fed. Rep. 320; Electric Gas Light- 
ing Co. V. Tillotson, 21 Fed. Rep. 568; 
Electric etc. Lighting Co. v. Smith etc. 
Electric Co., 23 Fed. Rep. 195; Electric 
Gas Lighting Co. i . Boston Electric 
Co., 29Fed. Rep. 455, Consolidated Oil 
Well Packer Co v. Galey, 38 Fed. Rep. 
91S; WoUensak v. Reiher, 115 U. S.96; 
Mahn v. Harwood, 112 U. S. 354; Ives 
-c\ Sargent, 119 U. S. 652; Gage v. 
Kellogg. 23 Fed. Rep. 891; Wooster v. 
Handy, 21 Fed. Rep. 51; Scrivner v. 
Oakland Gas Co., 22 Fed. Rep. 98; 
Holt f. Keeler, 13 Fed. Rep. 464. 

There must be '"a clear mistake inad- 
vertently committed in the wording of 
the claims" to authorize a reissue 
broadening the claims. Haber v. Nel- 
son Mfg. Co., 38 Fed. Rep. 830, Mahn 
-■. Harwood, 112 U. S. 354; Dunham v. 
Dennison Mfg. Co., 40 Fed. Rep. 667. 

But where a feature incorporated 
into the claim is evidently "an incidental 
and preferable feature of the invention" 
it is, as such, a mistake, and the speci- 
fication may be amended to omit it as 
an element. Adee f. Peck, 42 Fed. 
Rep. 497. 

"The claim of a specific device or com- 
bination, 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. . . . This legal ef- 
fect of the patent cannot be revoked 
unless the patentee surrenders it, and 
proves that the specification was framed 
by real accident, inadvertence or mis- 
take, and this should be done with all 
due diligence and speed. . . Now 

we do not deny that a claim may be 
enlarged in a reissued patent; but this 
may only be done when an actual mis- 



take has occurred . . . such as a 
court of chancery, in cases within its 
ordinary jurisdiction would correct." 
Miller v. Bridgeport Brass Co., 104 U. 
S. 350; s. c, 21 Pat. OS. Gaz. 201. 

Siib- combinations. — This rule applies 
to claims for sub-combinations which 
can only be introduced into a reissue 
when the application claiming them is 
made within a reasonable, time and no 
intervening rights ■haVe .'accrued. 
Hubel V. Dick, 28 Fed. Rep. 132; Stiles 
V. Rice, 29 Fed. Rep. 44:;. 

This rule, of course, does not apply 
where the reissue merely describes the 
device more specifically. Hicks v. 
Otto, 19 Fed. Rep. 749. 

Tbe Comparison Is Between the Origi- 
nal and the Last Kelssue. — In order to 
take advantage of a prior reissue to 
show that there had been no delay in 
applying to broaden the claim, this' re- 
issue must be put in evidence; other- 
wise the comparison will be made with 
the original patent, and the time be- 
tween its issue and the application for 
the reissue considered in determining 
plaintiflF's laches. Hoskin v. Fisher, 
125U. S. 217. 

Original Letters Patent When Suit Is 
on Reissued Letters Patent. — Where the 
plaintiff fails to introduce into evidence 
the original letters patent, they may 
be introduced by the defendant. Par- 
ker etc. Co. V. Yale Clock Co., iS Fed. 
Rep, 43. 

1 Mahn v. Harwood, 112 U. S. 354, 
Robmson on Patents, vol. 3, p. 405; 
Western Union Tel. Co. v. Balti- 
more etc Co., 25 Fed. Rep. 30; Stutz v. 
Armstrong, 20 Fed. Rep. 843. 

2. The time allowed for public use of 
an invention before application for a 
patent. U. S. Rev, Stat., §4886. Asmus 
7'. Alden, 27 Fed, Rep. 6S4; Robinson 
on Patents, vol. 3. p. 406. 

An excuse for a delav of over two 
years must be clearly shown. Ives v. 
Sargent, 119 \j . S. 652, s c, 38 Pat. 
Oflf. Gaz, 181, 

3, Robinson on Patents, vol.3, p, 406. 
Enlarged Claims Over Two Years — 

Reissue Invalid.— Enlarged claims de- 



47 



Patent Office. 



PA TENT LA W. 



Beiasae. 



{h) Partial Invalidity. — The fact that some of the claims 
of a reissue are invalid for any cause does not make the reissue 
invalid.^ They may be disclaimed as in an original patent.* 

(«) Reissued Patent. — The reissued patent extends only for 
the remainder of the term of the original,^ which may, if there are 
several separate and distinct parts, be reissued in several separate 
parts.* The various requisites to the grant of an original patent 



clared invalid when reissue is granted 
over two years after the date of origi- 
nal. Three and six years. American 
Co. V. Sheldon, 17 Blatchf. (U. S.) 
208 ; over ten years and intervening 
rights. Hudnut v. Lafayette Hom- 
iny Mills, 26 Fed. Rep. 636; two 
years and two months reissue in- 
valid. Phillips V. Risser, 26 Fed. Rep. 
308. Other spaces of time. Tubular 
Rivet Co. V. Copeland, 26 Fed. Rep. 
706; Gage V. Kellogg, 26 Fed. Rep. 242; 
Hubel V. Dick, 28 Fed. Rep. 656; Tut- 
tle V. Loomis, 24 Fed. Rep. 789; Cur- 
ran V. St. Louis Refrigerator etc. Co., 
2g Fed. Rep. 320; Schickle etc. Iron 
Co. V. South St. Louis etc. Co., 29 Fed. 
Rep. 866; WoUensak v. Sargent, 33' 
Fed. Rep. S40; Philadelphia Novelty 
Mfg. Co. V. Rouss, 39 Fed. Rep. 273. 

Enlarged Claims Under Two Years Re- 
issue Invalid. — One year, nine months, 
ten days and intervening rights, and the 
fact that the inadvertence, accident or 
mistake was readily discernible. Arn- 
ham V. Finster, 24 Fed. Rep. 276; s. c, 
26 Fed. Rep. 277. 

Enlarged Claims, Keissue Valid. — An 
application filed within two months was 
held sufficiently diligent. Russell v. 
Laughlin, 26 Fed. Rep. 699; McArthur 
V. Brooklyn etc. Supply Co., 19 Fed. 
Rep. 263. 

An application filed within less than 
a month of two years after the grant of 
the original was held valid, there being 
no intervening rights. Stutz v. Arm- 
strong, 20 Fed. Rep. 843. 

Fourteen months and the patent pre- 
viously sustained. Hammerschlay 
Mfg. Co. v. Spaulding, 35 Fed. Rep. 
67. 

Question of Law. — What is a reason- 
able time is a question of law, and can 
be determined by the courts by com- 
paring the original and reissued patents 
and the records of the Patent Office 
when presented for record. Western 
Union Tel. Co. v. Baltimore etc. Tel. 
Co., 25 Fed. Rep. 30. 

Good Excuse for Laches. — Sickness of 
patentee at time of grant of patent, and 
his closely following death after he had 



48 



noticed the defect, and where his ad- 
ministrator had used due diligence. Pe- 
oria Target Co. v. Cleveland Target 
Co., 43 Fed. Rep. 922. 

What Are Not Good Excuses for Lack 
of Diligence In Applsring for Reissue. — 
Where the patentee was a foreigner 
not familiar with the English language, 
and applied immediately on becoming 
cognizant of the defect. Boland v. 
Thompson, 26 Fed. Rep. 633. 

Ignorance of the law on the part of 
the patentee. Haines v. Peck, 26 Fed. 
Rep. 625. 

1. Gage?'. Herring, 107 U. S. 641, 
s. c, 23 Pat. Off. Gaz. 21 19; Dunham 
V. Dennison Mfg. Co., 40 Fed. Rep. 
667; Tyler v. Galloway, 12 Fed. Rep. 
567; s. c, 22 Pat. Off. Gaz. 2072; Reed 
V. Chase, 25 Fed. Rep. 94; s. <_., 33 Pat. 
Off. Gaz. 996; American etc. Boring 
Co. V. Sheldon, 25 Fed. Rep. 768; s. c, 
33 Pat. Off. Gaz. 1598; Reav ». Ravnor, 
22 Blatchf. (U. S.) 13; s.'c, 19' Fed. 
Rep. 308; Dryfoos v. Wise, 22 Blatchf. 
(U. S.) 19; s. c, 19 Fed. Rep. 315; s. c, 
26 Pat. Off. Gaz. 639; Havemeyer v. 
Randall, 21 Fed. Rep. 404; Hayes v. 
Bickelhoupt, 22 Blatchf. (U. S.) 463; s. 
c, 21 Fed. Rep. 566; Word v. Packer, 
17 Fed. Rep. 650'; Cote v. Moffitt, 15 
Fed. Rep. 345; Starrettw. Athol Mach. 
Co., 14 Fed. Rep. 910; s. c, 23 Pat. Off. 
Gaz. 1729; Schillinger v. Greenway 
Brewing Co., 17 Fed. Rep. 244; s. c, 24 
Pat. Off. Gaz. 495. 

2. O'Reilly V. Morse, 15 How. 
(U. S.) 62; Yale Lock Mfg. "Co. v. 
Sargent, 117 U. S. 553; Schillinger v. 
Gunther, 17 Blatchf.' (U. S.) 69; Tyler 
V. Galloway, 12 Fed. Rep. 567. 

3. Woodworth v. Stone, 3 Story, 
(U. S.) 749; s. c, 2 Robb Pat. Cas. 
2^6; Whitely v. Fisher, 4 Fish. Pat. 
Cas. 248; House?'. Young, 3 Fish. Pat. 
Cas. 335; Stanley v. Whipple, 2 Mc- 
Lean (U. S.) 31;; Shaw -v. Cooper, 7 
Pet. (U. S.) 292; s. c, I Robb Pat. Cas. 
643 ; Grant v. Raymond, 6 Pet. (U. S.) 
218; s. c, I Robb Pat. Cas. 604; 
Whitely v. Fisher, 4 Fish. Pat. Cas. 
248. 

4. Selden 7;. Stockwell etc. Gas 



novelty. 



FA TENT LA W. 



Definition. 



attach to a reissue,^ which has all the attributes of an original 
patent.** 

v. Novelty — 1. Definition of Patentable Novelty. — Patentable 
novelty is something new invented ;^ a thing which did not ex- 
ist before, differing from all other things in its structure, movement 
or effect, by reason of the introduction of some new mechanical 
combination or principle,* a substantial difference in principle 



Burner Co., 19 Blatchf. (U. S.) 544; s. 
c, 9 Fed. Rep. 390; s. c, 20 Pat. Off. 
Gaz. 1377; Woodworth v. Hall, i 
Woodb. & M. (U. S.) 248; s. c, 2Robb 
Pat. Cas. 495. 

1. See Whiteley v. Fisher, 4 Fish. 
Pat. Cas. 248: Woodworth v. Hall, i 
Woodb. & M'. (U. S.) 248;s.c.,2 Robb 
Pat. Cas. 495; Hartshorn v. Eagle 
Shade Roller fo., 18 Fed. Rep. go; 
Burr V. Duryee, 2 Fish. Pat. Cas. 275; 
Wisner v. Grant, 7 Fed. Rep. 922; 
Carroll v. Morse, 9 Pat. Off. Gaz. 483; 
Carleton v. Bokee, 17 Wall. (U. S.) 463; 
Sergeant v. Burge, 10 Pat. Off, Gaz. 
285; Jones V. McMurry, 2 Hughes (U. 
S.) 527; s.c, 3 Bann. & Ard. Pat. Cas. 
130; Frinck v. Doty, 14 Pat. Off. Gaz. 
157; Shawti. Colwell Lead Co., ii Fed. 
Rep. 711; s. c, 20 Blatchf. (U. S.) 417; 
Newton v. Mfg. Co., 119 U. S. 373; s. 
I,., 38 Pat. Off. Gaz. 104. 

2. French v. Rogers, i Fish. Pat. Cas. 
133; Morse v. Baine, 9 West L.J. 106. 

3. See Invention, vol. 11, p. 780. 

Articles may be new in the commer- 
cial sense when they are not new in 
the sense of the Patent Law. New 
articles of commerce are not patentable 
as new articles of manufacture, unless 
it appears in the given case that the 
production of the new article involved 
the exercise of invention or discovery 
beyond what was necessary to con- 
struct the apparatus for its manufac- 
ture or production. Union Paper Col- 
lar Co. V. Van Dusen, 23 Wall. (U. 
S.) 530. 

The novelty required by the Patent 
Law does not refer to the materials 
out of which the article is made, to the 
form or workmanship of the parts, or 
the use of one known equivalent for 
another. Forbush v. Cook, 2 Fish. 
Pat. Cas. 668; Union Paper Collar Co. 
V. Van Deuzen, 10 Blatchf (U.S.) 109. 

4. Hotchkiss V. Greenwood, 4 Mc- 
Lean (U. S.) 456; AfFg II How. (U. 
S.) 248. 

Meaning of Word Principle with Ref- 
erence to Novelty. — The word princi- 
ple does not mean new mechanical 

18 C. of L.— 4 



power, but consists in the mode of 
applying or contriving mechanical 
powers to produce a certain result. 
Smith V. Pearce, 2 McLean (U. S.) 
176; s. c, 2 Robb Pat. Cas. 13; Dun- 
bar V. Marden, 13 N. H. 311. 

It is not a new principle in the ab- 
stract sense but a new combination or 
mode. Hotchkiss v. Greenwood, 4 
McLean (U. S.) 456., 

To be new in the sense of the Pat- 
ent Law, there must be a discovery-of 
new principles, or the employment of 
old ones in a newr proportion, in a new 
process or to a new purpose. Holden v. 
Curtis, 2 N. H. 61. See Bell v. Dan- 
iels, I Bond (U. S.) 212; s. c, i Fish. 
Pat. Cas. 372. . 

A new application of a principle by 
new mechanical contrivances and ap- 
paratus, by means of which a new and 
beneficial result is produced in the use 
of an article to which it has thus been 
applied, is patentable. Silsby v. Foote, 
I Blatchf (U. S.) 44S; AfFg 14 How. 
(U. S.) 218; Mowry v. Whitney, 5 
Fish. Pet. Cas. 515. 

Novelty in principle may consist in a 
new and valuable mode of applying an 
old power; effecting it,, not merely by 
a new instrument or form of the ma- 
chine, but by something giving a new 
or greater advantage. Hovey v. Steph- 
ens, J Woodb. & M. (U. S.) 290. 

When the mechanism in two ma- 
chines is substantially different from 
anything before known in its mode of 
operation, it is new. Lowell v. Lewis, 
I Mason (U. S.) 182; s. u., i Robb Pat. 
Cas. 132; Blanchard v. Puttman, 2 
Bond (U. S.) 84; s. c, 3 Fish. Pat. Cas. 
1S6; Whipple V. Baldwin Mfg. Co., 4 
Fish. Pat. Cas. 29. 

Equivalents. — The doctrine of equiva- 
lents must be critically considered. 
Sayles v. Chicago etc. R. Co., i Biss. 
(U. S.) 468; s. c, 2 Fish. Pat. Cas. 523; 
Blake z'. Rawson, i Holmes (U. S.) 
200; s. c, 6 Fish. Pat. Cas. 74; s. c, 3 
Pat. Off. Gaz. 122. 

Change of Form, — Change of form is 
irafnaterial where it does not contrib- 



49 



Novelty, PA TE.NT LA W. Deflnition. 

and application,^ or a new mode of operation produced." 



ute to a new result; otherwise where it 
does. Adams v. Edwards, i Fish. Pat. 
Cas. I. 

1. Smith V. Pearce, 2 McLean (U. 
S.) 176; s. c, 2 Robb Pat. Cas. 13. 

Examples. — Williams Mfg. Co. w. 
Franklin, 41 Fed. Rep. y)y, Hiller v. 
Lew, 41 Fed. Rep. 627; Timken v. 
Olin, 37 Fed. Rep. 205; Ingham v. 
Pierce, 31 Fed. Rep. 822; Gandy v. 
Main Belting Co., 28 Fed. Rep. 573; 
Boston Electric Co. f. Fuller, 29 Fed. 
Rep. 515. 

2. Forbush v. Cook, 2 Fish. Pat. Cas. 
668; Eanies v. Cook, 2 Fish. Pat, Cas. 
146; Suffolk Mfg. Co. V. Hayden, 4 
Fish. Pat. Cas. 86; Stainthrop v. Hum- 
iston, 4 Fish. Pat. Cas. 107; Cook v. 
Earnest, 5 Fish. Pat. Cas. 39O; s. u., 2 Pat. 
Off. Gaz. 89; Waterbury Brass Co. v. 
Miller, 9 Blatchfi (U. Sr) 77; s. c, 5 
Fish, Pat, Cas, 48; D,ukes v. Bauerle, 
41 Fed. Rep. 778; Pullman Palace Car 
Co. zj. Wagrter Palace Car Co., 38 Fed. 
Rep. 416. 

Whether a device is new depends 
upon whether it is the same kind of in- 
strument as another, or whether it acts 
in the same way and produces the 
same result in substance. Colt r'. Mas- 
sachusetts Arms Co., ■ Fish. Pat. Cas. 
108; Washburn v. Gould, 3 Story (U. 
S.) i2a-;_ s. c, 2 Robb Pat. Cas. 209; 
Smith V. Higgins, i Fish. Pat. Cas. 537; 
Fisk V. Church, 5 Fish. Pat. Cas. 540; 
s. c, I Pat. Off. Gaz. 634; Bray v. 
Hartshorn, i Cliff. (U. S.) 538'; Robert 
V. Schuyler, 12 Blatchf. (U. S.l 444; 
s. c, 2 Bann. & Ard. Pat. Cas. 5; Blake 
■V. Robertson, 94 U. S. 728; s. c, ii 
Pat. Off. Gaz. 887; Butch f. Boyer, 8 
Phila. (Pa.) 157; Dalton v. Jennings, 93 
U.S. 271; Chase v. Sabin, 1 Holmes 
(U. S.) 39S; s. c, i Bann. & Ard. Pat. 
Cas. 399; s. c, 6 Pat. Off. Gaz. 728; 
Darie v. Chicago Mfg. Co., 6 Fish. Pat. 
Cas. 130; s. c, 3 Biss, (U. S.) 374; 
Tufts V. Boston Mfg. Co., 1 Holmes 
(U. S.) 459; s. c, I Bann. & Ard. Pat. 
Cas. 633; s. c, 8 Pat. Off. Gaz. 239; 
Decker v. Silverbrand, 8 Pat. Off. Gaz. 
944; Mfg. Co. V. Walworth, 9 Pat. Off. 
Gaz. 746; Lyman Ventilating etc. Co. i>. 
Chamberlain, 2 Bann. & Ard. Pat. Cas. 
433; s. c, 10 Pat. Off. Gaz. 588; Boomer 
V. United Power Press Co., 13 Blatchf. 
(U. S.) 107; s. i;., 2 Bann. & Ard. Pat. 
Cas. 107; Fuller v. Yentzer, 11 Pat. 
Off. Gaz. 597; s. c, I Bann. & Ard. Pat. 
Cas. 520; Plastic Slate Roofing Co. v. 



Moore, i Holmes (U. S.^ 167; United 
Nickel Co. v. Keith, i Holmes (U. S.) 
328; s. c, I Bann. & Ard. Pat. Cas. 44; 
s. c, 54 Pat. Off. Gaz. 272; Carr z'. 
Rice, I Fish. Pat. Cas. 198; Howes v. 
Nute,4 Cliff. (U. S.) 173; s. c, 4 Fish. 
Pat. Cas. 263; Piatt v. United States 
Button etc. Mfg. Co., 5 Fish. Pat. Cas. 
265; s. c, 9 Blatchf. (U. S.) 342; =,. c, i 
Pat. Off. Gaz. 524; Rumford Chemical 
Works V. Lauer, 10 Blatchf. (U. S.) 
122; s. c, 5 Fish. Pat. Cas. 615; s. c, 3 
Pat. Off. Gaz. 249; Singer v. Brauns- 
dorf, 7 Blatchf. (U. S.) 521; Wilcox v. 
Komp, 7 Blatchf. (U. S.) 126; Springer 
V. Stanton, 2 Pat. Off. Gaz. 2; Stude- 
baker etc. Mfg. Co. v. Illinois Iron etc. 
Co., 42 Fed. Rep. 52; Sackett v. Smith, 
42 Fed. Rep. 846; National etc. R. Co. 
V. Sioux City etc. R. Co., 42 Fed. Rep. 
679; Cleveland- Fence-Co. v. Indi.inap- 
olls Fence Co., 42 Fed. Rep. 91 1 ; 
Smith V. Pittsburg Gas Co., 42 Fed. 
Rep. 14s; Holmes etc. Tel. Co. v. Do- 
mestic Tel. Co., 42 Fed. Rep. 220; 
Williams v. Barnard, 41 Fed. Rep. 358; 
WoUensak t. Sargent, 41 Fed. Rep. 53; 
Uhlmann z'. Bartholomae etc. Brewing 
Co., 41 Fed. Rep. 132'; Consolidated 
Roller Mill Co. v. Coombs, 39 Fed. 
25; Norton 7. Cary, 39 Fed. Rep. 544; 
Peninsular Novelty Co. v. American 
Shoe Tip Co., 39 Fed. Rep. 791 ; Mc- 
Donald V. McLean, 38 Fed. Rep. 328; 
Facer v. Midvale Steel Works, 38 Fed. 
Rep. 231; Whitman Saddle Co. v. 
Smith, "38 Fed. Rep; 414; Hake z'. 
Brown, 37 Fed. Rep. 783; Sawyer Spin- 
dle Co. V. Buttrick, 37 Fed. Rep. 794; 
Fonduer v. Chambers, 37 Fed. Rep. 
333; Joel V. Gesrwein, 36 Fed. Rep. 
592; Stegner v. Blake, 36 Fed. Rep. 
183; Marvin 7\ Gotschall, 36 Fed. Rep. 
314; National Hat Pouncing Mach. Co. 
W.Brown, 36 Fed. Rep. 317; HiH^'. Saw- 
yer, 31 Fed. Rep. 282; Howe Mach. 
Co. V. National Needle Co., 134 U. S. 
388; Day V. Fair Haven R. Co., 132 W. 
S. 98. 

To render an article new in the sense 
of the patent law, it must be more or 
less efficacious or possess new proper- 
ties by a combination with other ingre- 
dients. Milligan etc. Glue Co. v. Up- 
ton, 97 U. S. 3; Consolidated Brewing 
Apparatus Co. v. Clausen etc. Brewing 
Co., 39 Fed. Rep. 277; Fawcett v. Rub- 
ber etc. Harness Trimming Co., 38 
Fed. Rep. 739; Am Ende v. Seabury, 
36 Fed, Rep. 593; Marchand v. Emken, 



50 



"Novelty. 



PA TENT LA W. 



Presumption of Novelty. 



2. Presumption of Novelty — Novelty Essential to Patentability. — 

Novelty is presumed on the grant of a patent,^ and the patent is 
j>rima facie evidence thereof.'* Novelty is essential to patent- 
ability. ** 

3. Intrinsic Evidence of Novelty. — A new effect, or a materially 
-different effect, or as good an effect more cheaply attained, have 
been held evidence of the novelty of the device.* The produc- 
tion of the same result by two devices, ^ except where the result 



132 U. S. 195; Steam Gauge etc. Co. 
~v. Kennedy, 41 Fed. Rep. 18; United 
States Bung Mfg. Co. v. Independent 
Bung Co., 31 Fed. Rep. 76; Adams v. 
IBridgewater Iron Co., 26 Fed. Rep. 324; 
Western Electric Co. v. Ansonia Brass 
■etc. Co , IT4 U. S. 447; Van Deusen v. 
Nellis, iS Fed. Rep. 596. 

Extreme Cases. — A process of making 
Tvhiskey, consisting in the utilization of 
"the sjjialL particles of sugar, starch and 
yeast contained in the slop, in the sub- 
sequent operations of whiskey-making, 
b3' straining the slop of the chaff and 
-other large particles, and cooling it 
■quickly to prevent the accumulation of 
acid. The slop in a sweet condition, is 
^dded to the liquid in the mash tub at 
"the end of the mashing. Held, that 
though the utilization of the slop from 
which the fine particles were lost, and 
the use of the straining and cooling 
-apparatus were old, yet the utilization 
-of the particles being new, the process 
is a novel one. Frankfort Co. v. Mill 
■Creek Co., 37 Fed. Rep. 533. 

The only change an increase in heat. 
"Cary v. Lovell Mfg Co., 31 Fed. Rep. 

-344-' 

Only change increase of time m rub- 
ting off the coating. Lockwood v. 
-Hooper, 21; Fed. Rep. 910. 

1. Swift" w. Whisen, 2 Bond (U. S.) 

«4- 

This presumption can only be rebut- 

led on clear proof. Donoughe v. Hub- 
bard, 27 Fed. Rep. 742; Cohansey 

-Glass Mfg. Co. V. Wharton, 28 Fed. 
Rep. 189; Butler v. Bainbridge, 29 Fed. 

Hep. T42. 

2. Matthews v. Skates, i Fish. Pat. 
•Cas. 602; Winans v. New York etc. 
R. Co., I Fish. Pat. Cas. 213; Hussev v. 
Bradley, 5 Blatchf. (U. S.) 134; s. b., 2 
Ji'ish. Pat. Cas. 362; Serrill v. Collins, 
I Fish. Pat. Cas. 289; Middletown 

"Tool Co. V. Judd, 3 Fish. Pat. Cas. 141; 
Ransom v. Mayor etc. of N. Y., i Fish. 
Tat. Cas. 252; Poppenhausen v. N. Y. 
Gutta Percha Comb Co., 2 Fish. Pat. 
•Cas. 62; Haselden v. Ogden, 3 Fish. 

51 



Pat. Cas. 378; Waterbury Brass Co. v. 
New York etc. Brass Co., 3 Fish. Pat. 
Cas. 43; Judson %>. Moore, i Bond (U. 
S.) 285; Goodyear v. Beverly Rubber 
Co., I Cliff. (U. S.) 348; Carter v. Ba- 
ker, I Sawyer (U. S.) 512; s. c, 4 Fish. 
Pat. Cas. 404; Huber v. Nelson Mfg. 
Co., 38 Fed. Rep. 830; Frankfort Whis- 
key Process Co. v. Mill Creek Distill- 
ing Co., 37 Fed. Rep. 533. 

3. Blanchard v.. Putnam, 2 Bond 
(U. S.) 84; Rice V. Heald, 13 Pac. 
Law J. 33; Matthews f. Skates, i 
Fish. Pat. Cas. 602; Packing Co. 
Cases. 105 U. S. 566; Bruff v. Ives, 
14 Blatchf. (U. S. 198; s. i;., 2 Bann. 
& Ard. Pat. Cas. 595; s. c, 11 Pat. 
Off. Gaz. 924. This point is so well 
established that authorities which, 
if exhaustively cited, would embrace 
almost all cases involving infringement 
of patents, that further citation is 
thought unnecessary-, 

4. Waterburv etc. Brass Co. v. New 
York etc. Bras's Co., 3 Fish. Pat. Cas. 
43; Suffolk Mfg. Co. V. Hayden, 4 
Fish. Pat. Cas. 86; Forbush v. Cook, 
2 Fish. Pat. Cas. 668; Fames v. Cook, 
2 Fish. Pat. Cas. 146; Roberts v. 
Dickey, 4 Brews. (U. S.) 260; s. c, 
4 Fish. Pat. Cas. 532; s. c, i Pat. 
Off. Gaz. 4; Masury v. Anderson, 
II Blatchf. (U. S.) 162; s. c, 4 Pat. 
Off. Gaz. 55 ; s. c, 6 Fish. Pat. Cas 
457; Child V. Boston Iron Works, 6 
Fish. Pat. Cas. 606; s. c, i Holmes 
(U. S.) 303; s. c, 5 Pat. Off. Gaz. 61; 
International Tooth Crown Co. v. 
Richmond, 30 Fed. Rep. 775. 

5. Fames v. Cook, 2 Fish. Pat. Cas. 
146; Buerk ;■. Valentine, e, Fish. Pat. 
Cas. 366; s. c, 9 Blatchf. (U. S.) 479; 
Whittemore v. Cutter, i Gall, (U. S.) 
478 ; s. c, I Robb Pat. Cas. 40 ; Colt 
V. Massachusetts Arms Co., i Fish. 
Pat. Cas. 108 ; Piatt v. United States 
Button etc. Mfg. Co., 5 Fish. Pat. Cas. 
265 ; s. c, 9 Blatchf. (U. S.) 342; s. c, i 
Pat. Off. Gaz. 524; Rumford Chemical 
Works V. Lauer, 5 Fish. Pat. Cas. 615 ; 
s. c, 10 Blatchf. (U. S.) 122; s. c, 3 



Sovelty. 



PA TENT LA W. 



Bate of an Invention,. 



is produced by the same mode of operation, ^ is no criterion to- 
determine that the devices are the same. 

4. Date of an Invention — («) As Between Rival Inventors. — 
Where the question of the date of an invention is between two 
rival inventors, or the date of the invention of the patentee is to 
be fixed, the date of the invention is the time at which a com- 
plete and intelligible embodiment, by which those skilled in the 
art could understand it, is made** 



Pat. Off. Gaz. 249; Singer v. Brauns^ 
dorf, 7 Blatchf. (U. S.) 521 ; Wilcox v. 
Komp, 7 Blatchf. (U. S.) 126; 
Springer v. Stanton, 2 Pat. Off. Gaz. 2. 
If the same results are produced by 
combinations of machinery operating 
in a substantially different manner, 
the machines are different. Whitte- 
more v. Cutter, i Gall. (U. S.) 478; 
s. c, I Robb Pat. Cas. 40. 

1. Whittemore v. Cutter, i Gall. 
(U. S.) 51 ; s. c, I Robb Pat. Cas. 40; 
Odiorne v. Winkley, 2 Gall. (U. S.) 
21 ; s. c, I Robb Pat. Cas. 52. 

2. Webster Loom Co. n. Higgins, 105 
U. S. 580; s. c, 21 Pat. Off. Gaz. 2031 ; 
Draper v. Potomska Mills, 3 Bann. & 
Ard. Pat. Cas. 214; Reeves v. Key- 
stone Bridge Co., i ]?at. Off. Gaz. 466; 
Matthews v. Skates, i Fish. Pat. Cas. 
602 ; Brodie v. Ophir Min. Co., 5 
Sawy. (U. S.) 608; s. c, 4 Fish.. Pat.' 
Cas. 137; Reed v. Cutter, i Story (U. 
S.) 590; s. c, 2 Robb Pat. Cas. 81; 
Williames v. Barnard, 41 Fed. Rep. 
358. 

In the race of diligence between 
two inventors, he who first reduces 
the invention to a fixed, positive and 
practical form, is entitled to a priority 
of right to a patent. Therefore, Reed 
■V, Cutter, I Story (U. S.) 590; Park- 
hurst V. Kinsman,, i Blatchf. (U. S.) 
488; Foot V. Silsby, 2 Blatchf. (U. S.) 
260; Rich 7;. Lippincott, 2 Fish. Pat. 
Cas. I ; White v. Allen, 2 Cliff. (U. S.) 
224 ; ' Ellithorpe v. Robertson, 2 Fish. 
Pat. Cas. 183; s. c, 4 Blatchf. (U. S.) 
307; Whitely v. Swayne, 4 Fish. Pat. 
Cas. 117; Seymour v. Osborne, 3 Fish. 
Pat. Cas. 555. 

The inventor who first perfects a 
machine and makes it capable of use- 
ful operation, is entitled to the patent. 
Agawam Co. v. Jordan, 7 Wall. (U. 
S.) 583 ; Albright v. Celluloid etc. 
Harness Trimming Co., 2 Bann. & 
Ard. Pat. Cas. 629; Pennsylvania Dia- 
mond Drill Co. V. Simpson, 37 Pat. 
Off. Gaz. 219. Fourteen yeai-s. Pick- 
ering r>. Miller, 25 Pat. Off. Gaz. 189; 
s. c, 16 Fed. Rep. 540. 



He is the first inventor who, being 
the original discoverer, has first per- 
fected and adapted the invention to 
actual use. Whitely 71. Swayne, 7 Wall.. 
(U. S.) 685. Quoting Curtis on Patents, 
kk 43i 37 (3''d ed.),"who first perfected' 
and adapted the same" (his invention)' 
"to use." Seymour v. Osborne, 11 
Wall. (U. S.) 516. 

Various Statements of Date of Inven- 
tion. — The date of an invention is the 
date of the discovery of the principle 
involved and the attempt to embody it 
in some machine; not the date ct the 
perfecting of the instrument. Colt v. 
Massachusetts Arms Co., i Fish. Pat.. 
Cas. 108; National etc. Oil Co. v- 
Arctic Oil Co., 4 Fish. Pat. Cas. 514; 
s. c, 8 Blatchf. (U. S.) 416. 

The period when he strikes out the- 
plan which he afterwards patents. 
Adams v. Edwards, i Fish. Pat. Cas. 1.. 
Or first perfected the intellectual pro- 
duction, or the idea or conception 
of the thing patented, so that, without 
more inventive power, further trial or 
experiment, he could have successfully 
applied it in practice. Ransom v. 
New York, i Fish. Pat. Cas. 252 ; 
Stimpson v. Woodman, 3 Fish. Pat. 
Cas. 98.' 

When the inventor's experiments 
have reached such a stage of maturity 
that he has a clear and definite idea of 
application of principle and has re- 
duced his idea to a distinct form- 
Matthews V. Skates, i Fish. Pat. Cas.. 
602; Brodie v. Ophir etc. Min. Co., 5 
Sawy. (U. S.) 608. 

The date of an invention may be 
prior to the time the invention is em- 
bodied in a form .capable of being 
patented. Colt v. Massachusetts 
Arms Co., i Fish. Pat. Cas. 108; Na- 
tional Oil Co. V. Arctic Oil Co., 4 
Fish. Pat. Cas. 514; s. c, 8 Blatchf. 
(U. S.) 416; Adams v. Edwards, i 
Fish. Pat. Cas. i ; Ransom v. New 
York, I Fish. Pat. Cas. 2^,2 \ Stimpson 
V. Woodman, 10 Wall. (U. S.) 117. 

Priority of invention is hot scien- 
tific precedence. French v. Rogers,. 



52 



"Novelty. 



PA TENT LA W. 



Diligence, 



•in the United States.* 

5. Diligence. — The first of two or more rival inventors is entitled 
to the patent, provided he uses reasonable diligence in perfecting , 
and adapting his invention.^ After the perfecting of his inven- 
tion and its application to practical use, no delay in applying for 
the patent,* unless others are injured by his laches,'* will deprive 
:him of his right to the patent. 

6. Anticipation— (a) BY Invention of Third Parties. — Pat- 
ented inventions can only be anticipated by inventions of third 
parties, when these have been reduced to a practical form,^ 



I Fish. Pat. Cas. 133. Nor priority of 
speculations of a philosopher or a 
mechanic. Bedford ?'. Hunt, i Mason 
(U. S.) 302. Nor the mere suggestion 
of an idea of application of a principle 
to practical purposes. Foote v. 
Silsby, I Blatchf. (U.S.) 445. Nor the 
mere prior conception of an invention 
however perfect the plan may have 
been, and although the inventor act- 
ually described the plan to another. 
White V. Allen, 2 Fish. Pat. Cas. 440; 
s. c, 2 Cliff. (U. S.) 224; Parkhurst -u. 
Kinsman, i Blatchf. (U. S.) 488. 

Nor do illustrative drawings of con- 
ceived ideas constitute an invention, 
unless followed up by reasonable ob- 
servance of the requirements of the 
patent laws ; they have no effect upon 
subsequently granted patent to an- 
other. Reeves v. Keystone Bridge 
Co., 5 Fish. Pat. Cas. 456 ; Drill Co. 
V. Simpson, 37 Pat. Off. Gaz. 219; 
Ellithorp V. Robertson, 4 Blatchf. 
(U. S.) 307; Electric etc. Signal Co. o. 
Hall etc. Signal Co., 6 Fed. Rep. 603 ; 
Pennsylvania etc. Drill Co. v. Simp- 
son, 29 Fed. Rep. 288. Even when an 
antedated drawing exhibits a perfect 
■machine in all its parts. Detroit 
Lubricator Mfg. Co. v. Renchard, 9 
Fed. Rep. 293. But compare Webster 
Loom Co. V. Higgins, 105 U. S. 580; 
s. c, 21 Pat. OfiF. Gaz. 2031. 

1. Brush Electric Co. v. Julien 
Electric Co., 41 Fed. Rep. 679; Elec- 
trical Accumulator Co. v. Julien Elec- 
tric Co., 38 Fed. Rep. 117. 

2. White V. Allen^ 2 Fish. Pat. Cas. 
440; s. c, 2 Cliif. fU. S.) 224; Reed v. 
Cutter, I Story (U. S.) 590; s. c, 2 
Robb Pat.Cas.8i; Singers. Walmsley, 
I Fish. Pat. Cas. 55S; Cox v. Griggs, i 
Biss. f U. S.) 362; s. c, 2 Fish. Pat. Cas. 
174; Whitney v. Emmet, i Baldw. (U. 
S.) 303; s. c, I Robb Pat. Cas. 567; 
National etc. Oil Co. v. Arctic Oil Co., 8 
Blatchf. (U. S.) 416; s. c, 4 Fish. Pat. 
Cas. 514; Kneeland v. Sheriff, 5 Bann. 

53 



& Ard. Pat. Cas. 482; s. c, 2 Fed. Rep. 
901; s. t., 18 Pat. Off. Gftz. 242; Aga- 
wan Co. t;. Jordan, 7 Wall. (U. S.) 583; 
Gates ». Benson, 3 A. L. T. 113; Hubell 
V. Dick, 24 Blatchf. (U. S.) 139; s. c, 
28 Fed. Rep. 132. 

Inventors have the right to take a 
reasonable time in which to experiment 
and test the invention. Kendall v. 
Winsor, 21 How. (U. S.) 322; McCor- 
mick Harvester Mach. Co. r\ Minne- 
apolis Harvester Works, 42 Fed. Rep. 

But between two inventors, one just 
as early as the other in their concep- 
tion and equally meritorious, the one 
who first gets the patent is to be 
favored. Cox v. Griggs, 2 Fish. Pat. 
Cas. 174: s. c, I Biss. (U. S.) 362; Sei- 
bert etc. Oil Cup Co. v. Phillips Lubri- 
cator Co., 10 Fed. Rep. 677; Eagle 
Mfg. Co. V. Miller, 41 Fed. Rep. 3151. 

3. Allen v. Blunt, 2 Woodb. & M. 
(U. S.) 121; s. c.,2 Robb. Pat. Cas. 530; 
Hubel V. Dick, 20 Fed. Rep. 132. 

4. Where an unreasonable delav is 
allowed to occur between the perfection 
of an invention and the application, 
and in the meanwhile other parties 
have independently invented the device 
and put it to use, a patent granted is 
void. New York v. Ransom, 23 How. 
(U. S.) 487. 

5. Cahoon v. Ring, i Cliff. (U. S.) 
592; s. c, I Fish. Pat. Cas. 397; Hil- 
dreth v. Heath, Cranch Pat. Dec. 96. 

Drawings not sufficient. Ellithorp 
V, Robertson, Law's Dig. 428, § 48; 
Reeves v. Keystone Bridge Co., ^ Fish. 
Pat. Cas. 456; s. c, i Pat. Off. Gaz. 
466; Carleton v. Atwood, 2 A. L. T. 
R. 129. 

Use as Evidence of Reduction to Prac- 
tice. — Putting into use is evidence of 
reduction to practice. Coffin v. Ogden, 
7 Blatchf. (U. S.) 61. 

Making a machine and applying it 
to actual use without patenting it is a 
complete invention. Stephenson v. 



WoTeltj. 



FA TENT LA W. 



Anticipation^ 



Brooklyn etc. R. Co. 19 Blachf. (U. 
S.) 473; s. c, 14 Fed. Rep. 457. 

One or two successful applications 
are sufficient. Miller v. Foree, 9 Fed. 
Rep. 603; s. c, 21 Pat. Off. Gaz. 947. 

Insufficient Use. — If a process is prac- 
ticed once as an experiment and then 
abandoned; it will not be an obstacle 
to the right of a subsequent inventor. 
Piper V. Brown, i Holmes (U. S.) 20. 

Wliat is Experiment Only. — In most 
cases a sufficient use of the alleged 
prior invention must be shown to prove 
that it will accomplish what is claimed; 
otherwise it rests in the region of mere 
experiment. Chicago etc. R. Co. v, 
Sayles, 97 U. S. 554. 

The party alleged to have made the 
prior invention, must have proceeded 
so far as to have entitled himself to a 
patent. Allen v. Hunter, 6 McLean 
(U. S.) 303. 

Contra, Hildreth v. Heath, i Cranch 
Pat. Dec. 95. 

If a person understood his invention 
and applied it successfully in one or 
two instances, it is a sufficient reduction 
to practice to defeat the claim of a sub- 
sequent inventor. Miller v. Foree, 21 
Pat. Off. Gaz. 947; s. c, 9 Fed. Rep. 603; 
Rich V. Lippincott, 2 B'ish. Pat. Cas. i. 

If the machine was complete, capa- 
ble of working and known to at least 
five persons, was put into use, tested 
and successful, it will invalidate a sub- 
sequent patent. Coffin v. Ogden, 18 
Wall. (U. S.) 120. 

Extent of Use Necessary. — Where the 
invention has been put into greater or 
less use, or extent of diffusion ot 
knowledge, it is not criterion whether 
it invalidates a subsequent patent. 
Rich V. Lippincott, 2 Fish. Pat. Cas. i; 
Spring V. Packard, i Bann. & Ard. Pat. 
Cas. 531. 

The prior machine must be perfect 
and capable of being used; it is not 
necessary that it should have been used. 
Parker t'. Ferguson, i Blatchf. (U. S.) 
407; Pitts V. Wemple, 2 Fish. Pat. Cas. 
10: s. c, I Biss. (U. S.) 87. 

The use of a successful invention 
which needed no change of mechanism, 
may be entirely discontinued without 
its ceasing to anticipate a subsequent 
invention. Shoup v. Henrici, 2 Bann. 
& Ard. Pat. Cas. 249; Waterman v. 
Thompson, 2 Fish. Pat. Cas. 461; Mc- 
Nish V. Everson, 2 Fed. Rep. 899. 

Success of Use. — The prior invention 
need not be worked with any greater 
skill and success than to demonstrate 
its usefulness. Waterman v. Thomson, 



2 Fish. Pat. Cas. 461; Pitts v. Wemple^ 
I Biss. (U. S.) 87; Northwestern Fire- 
Extinguisher Co. v. Philadelphia Fire- 
Extinguisher Co., i Bann. & Ard. Pat_ 
Cas. 177. 

Reduction into Practice Does Not Mean. 
NecesBarUy Putting Into Use. — " Reduc- 
tion to practice" does not necessarily- 
mean bringing the invention into usc 
Heath v. Hildreth, i Cranch Pat. Dec> 
96; Perry v. Cornell, i Cranch Pat_ 
Dec. 132; Coffin v. Ogden, 3 Fish. Pat_ 
Cas. 640; s. u., 7 Blatchf. (U. S.) 61. 

But putting the invention into a form, 
ready for practical use. Coffin v. Og- 
den, 3 Fish. Pat. Cas. 640; s. c, 7^ 
Blatchf. (U. S.) 61; Heath v. Hildreth,. 
I Cranch Pat. Dec. 96. 

But it neednot be carried to a point 
where there cannot be any subsequent 
improvement, and any practical utilit3', 
however small, is sufficient to show the 
invention completed. Johnson v. Root,, 
I Fish. Pat. Cas. 351. 

A completed invention signifies that 
the invention should be of some prac- 
tical utility; it need not be of a bight 
degree. Johnson v. Root, 1 Fish. Pat.- 
Cas. 351. 

A perfected invention is one that is- 
brought to such a condition as to be 
capable of practical use. Hayden v^ 
Suffolk Mfg. Co., 4 Fish. Pat. Cas. 86; 
affg3 Wall. (U.S.) 315. 

A written description of a machine^ 
although illustrated- by drawings, which 
has not been given to the public, does- 
not constitute an invention within the 
meaning of the Patent Laws. Evidence 
that such a description was made does 
show, of itself, a prior invention^ 
Such a description has not the same 
effect as a printed publication. It 
lacks the essential quality of such a pub- 
lication, for even though deposited in 
the Patent Office, it is not designed for 
general circulation, nor is it made ac- 
cessible to the public generally, beings 
so deposited for the special purpose of 
being examined and passed upon by- 
the Patent Office, and not that it may 
thereby' become known to the public. 
Although it may incidentally become 
known, the deposit of it is not a publi- 
cation of it within the meaning of the 
statutes of the law. Moreover, al- 
though the description may be so fulL 
and precise as to enable any one skilled, 
in the art to which it appertains to con- 
struct what it describes, it does not at- 
tain the proportions or character of a. 
complete invention until it is embodied 
in a form capable of useful operation. 



54 



Wovelty. 



PA TENT LA W. 



Antieipation. 



are beyond the stage of mere experiment,' and are of such a 
character that the patented device can be constructed from them 
without the exercise of invention.* 

{b) Experiment. — Where the inventor has never attained a 
knowledge such as will enable him to put his idea into successful 
practice, although he has made trials and experiments to accom- 
plish it,** or has not reduced his idea to practice and embodied it 



Northwestern Fire Fxtinguisher Co. v. 
Philadelphia Fire Extinguisher Co., 6 
Pat. Off. Gaz. 34; Lyman Ventilating 
etc. Co. V. Lalor, 12 Blatchf. (U. S.) 
303; s. c, I Bann. & Ard. Pat. Cas. 403. 

1. Where an inventor has perfected 
his invention and obtained patent 
therefor the patent cannot be invali- 
dated by showing that crude and un- 
successful experiments were made by 
others previous to his invention. La 
Baw V. Hawkins, ^ Bann. & Ard. Pat. 
Cas. 428; Aultman v. Holley, 11 
Blatchf. (U. S.) 317; s. c, 6 Fish. Pat. 
Cas. 534; s. c, 5 Pat. Off. Gaz. 3; 
Albright v. Celluloid etc. Harness 
Trimming Co., 2 Bann. & Ard. Pat. 
Cas. 629; s. c, 12 Pat. Off. Gaz. 227; 
Uhlmann v. Bartholomae etc. Brewing 
Co., 41 Fed. Rep. 132; Ansonia Brass 
etc. Co. V. Electrical Supply Co., 32 
Fed. Rep. 81. 

An article which was made merely 
as a curiosity and not for the trade will 
not defeat a subsequent invention. 
Lamb v. Hamblen, 11 Fed. Rep. 722. 

2. Crandal v. Watters, 20 Blatchf 
(U. S.) 97; Crandal v. Parker Carriage 
etc. Co., 28 Pat. Off. Gaz. 369. 

Process and Product. — Where an ar- 
ticle is patented, a prior publication re- 
lied upon to anticipate it, need not de- 
scribe the process by which it is inade, if 
it describes the article. Cohn v. United 
.States Corset Co., 93 U. S. 366. 

Where alleged prior invention was 
shown to be very near the realization' of 
the invention, but could not, at a 
period long subsequent make a machine 
embodying the invention, held, Hiat it 
•was not sufficient to defeat a patent 
even though witnesses testified it was 
successful. Dolbear v. American Bell 
Telephone Co., 126 U. S. i; Taylor i;. 
Wood, I Bann. & Ard. Pat. Cas. 270. 

Where prior inventors approach 
very near the discovery of patentee but 
do not discover the principle feature of 
his invention, and are not able to give 
any directions by which same can be 
successfully prepared and applied, the 
patent is not anticipated; Cahill v. 
Brown, 3 Bann. & Ard. Pat. Cas. 580. 



3. United Nickel Co. v. Anthes, i 
Holmes (U. S.) 155; s. c, 5 Fish. Pat. 
Cas. 517; s. I.., I Pat. Off. Gaz. 578; New 
York V. Ransom, 23 How. (U. S.) 487; 
Wayne v. Holmes, i Bond (U. S.) 27; 
Hubbell's Case, 5 Ct. of CI. i; Stick- 
els V. Borden, 3 Blatchf (U. S.) 535; 
Smith r>. Allen, 2 Fish. Pat. Cas. 572; 
Many v. Jagger, i Blatchf. (U. S.) 372; 
Seymour D. McCormick, 19 How. (U. 
S.) 96; Smith V. Fay, 6 Fish. Pat. Cas. 
446; Latta V. Shawk, i Fish. Pat. Cas, 
465; Doughty V. Day, 9 Blatchf (U. S.) 
262; Ellithorp V. Robertson, 4 Blatchf. 
(U. S.) 307; Stainthorp v. Humiston, 4 
Fish. Pat. Cas. 107; Ball v. Murry, 10 
Pa. St. 14; Wilcox V. Komp, 7 Blatchf. 
(U. S.) 126. 

Two Meanings of "Experiment." — An 
experiment maj' be a trial either of an 
incomplete mechanical structure to as- 
certain what changes or additions may 
be necessary to make it accomplish the 
design of its projector, or of a com- 
pleted machine to test its efficiency. 
In the first case, abandonment having 
taken place, no effect is caused on sub- 
sequent invention; but if the experi- 
ment, in second case, shows the capa- 
city of machine to effect the inventor's 
object, he has the merit of producing 
complete invention. Northwestern Fire 
Extinguisher Co. v. Philadelphia Fire 
Extinguisher Co., i Bann. & Ard. Pat. 
Cas. 177. 

Wliat Amounts to an Abandoned Ex- 
periment. — Where an inventor for some 
reason breaks up his invention, and 
while not wholly intending to abandon, 
it, yet uncertain whether he will resume 
the subject, it shows not an uncon- 
ditional abandoment but an entire un- 
certainty during the suspension, 
whether or not the invention will be 
given to the public, there being no ap- 
plication for a patent; another, who in- 
vents the same thing, perfects it, re- 
duces it to practice, patents and con- 
signs it to public use will be regarded 
as the first inventor. White v. Allen, 
2 Fish. Pat. Cas. 440; s. c, 2 Cliff. (U. 
S.) 224; Gallahue v. Butterfield, 10 
Blatchf (U. S.) 232; ». c, 6 Fish. Pat. 



55 



Novelty. 



PATENT -LAW. 



Anticipation, 



in some distinct form,^ he has not progressed beyond an experi- 
ment. The idea must be embodied.** 



Cas. 203; s. c, 2 Pat. OfT. Gaz. 645; 
Adams etc. Mfg. Co. v. Rathbone, 26 
Fed. Rep. 262; Hutchinson v. Everett, 
26 Fed. Rep. 531. 

A man made and tested several de- 
vices, but after testing them, took them 
to pieces and laid them away. Held, 
an abandoned experiment. Fay v. 
Allen, 24 Fed. Rep. 804. 

Extreme Case. — Half a dozen articles 
were made and the manufacture was 
abandoned. Held, their manufacture 
was an abandoned experiment. Hicks 
1'. Otto, 29 Pat. Oft". Gaz. 365; s. c, 19 
Fed. Rep. 749. 

Abandoned Experiment. — If an al- 
leged prior invention was only an aban- 
doned experiment, never perfected, it 
cannot affect a subsequent patent. 
Corn Planter Patent, Brown v. Guild, 
23 Wall. (U. S.) 161; Adams v. Jones, 
I Fish. Pat. Cas. 527; Gottfried v. Phil- 
lip Best Brewing Co., 5 Bann. & Ard. 
Pat. Cas. 4; Woodward v. Dinsmore, 
4 Fish. Pat. Cas. 163; United Nickel 
Co. V. Authes, i Holmes (U. S.) 13,; 
B. c, Pat. Office Gaz. 578. 

If alleged prior machine is abandoned 
as useless after experimental trials, pre- 
sumption will be that it is not identical 
with subsequent invention of proved 
merit. Wavne v. Holmes, i Bond (U. 
S.) 27. 

A single machine abandoned many 
years before, will not invalidate a pat- 
ent. Blake v. Raws.on, i Holmes (U. 
S.) 200; s. c, 3 Pat. Oflf. Gaz. 122; 
Taylor v. Wood, 12 Blatchf. (U. S.) 
no; s. c, I Bann. & Ard. Pat. Cas. 
270. 

If suggestions came to the inventor 
from prior experiments, and he is the 
first who reduced these suggestions to 
practice, he is entitled to his invention. 
Roberts v. Dickey, i Pat. Off. Gaz. 4. 

1. Parkhurst v. Kinsman, i Blatchf. 
(U. S.) 488. 

2. Richardson v. Noj'S, 2 Bann. & 
Ard. Pat. Cas. 398; s. c, 10 Pat. Off. 
Gaz. 507. 

Where a patent has been granted for 
improvements which, after a full and 
fair trial, resulted in unsuccessfuU ex- 
periments and have finally been aban- 
doned, and another person takes up the 
subject of the improvements and is suc- 
cessful, he is entitled to the merit of 
them as an original inventor. Whitely 
Tf.Swayne, 7 Wall. (U. S.) 685. 



Although prior unsuccessful experi- 
ments involved the same idea or prin- 
ciple as subsequent patent, the latter 
will not be invalidated. United Nickel 
Co. V. Authes, 5 Fish. Pat. Cas. 517; 
s. c, I Holmes 135; Roberts t'. Dickey, 
3 Brews. (Pa.) 260; American BelL 
Teleph. Co. v. People's Teleph. Co., 25 
Fed. Rep. 725. 

Model Insufficient. — The mere mak- 
ing a model of an invention, held not to 
constitute invention, as against a patent 
subsequently granted to another for the 
same thing. Stillwell etc. Mfg. Co. 
V. Cincinnati Gas etc. Co., i Bann. & 
Ard. Pat. Cas. 610. 

Same rule obtains, although the model 
was capable of operation for the pur- 
pose of experiments. Gaboon v. Ring, 
I Cliflf. (U. S.) 592. 

Especially where the model was one 
filed in the Patent Office and recalled 
by the applicant because it did not rep- 
resent his invention " truly." Decker 
■V. Grote, 10 Blatchf. (U. S.) 331; s. c, 
6 Fish. Pat. Cas. 143; s. c, 3 Pat. Off. 
Gaz. 65. 

Use of Knowledge Obtained from an 
Abandoned Experiment — When It Makes 
Subsequent Patent Void.— If the knowl- 
edge derived from a prior abandoned 
experiment is sufficiently clear and defi- 
nite to enable an inventor to construct 
the improvement which is the subject 
of his invention, the patent is void; 
otherwise, where an original inventor 
of an improvement, though having 
knowledge of such an experiment, who 
is entitled to the benefit of all unsub- 
stantial changes and improvements, 
notwithstanding such modifications 
may run into and include forms of 
mechanism shown in the abandoned 
experiment. Union Paper Bag etc. Co. 
V. P. & W. Co., 15 Blatchf. (U. S.) 160; 
s. c, 3 Bann. & Ard. Pat. Cas. 403; s. 
c, 15 Pat. Off. Gaz. 423. 

The following have been held to be 
experiments only: A single machine 
abandoned directly, and apparently im- 
practicable. Blake r>. Rawson, 6 Fish. 
Pat. Cas. 74; s! C, 3 Pat. Off. Gaz. 122, 
Taylor t;. Wood, 12 Blatchf. (U.S.).iio; 
s. c, I Bann. & Ard. Pat. Cas. 270; s.c, 
8 Pat. Off. Gaz. 90; Tatum v. Gregory, 
41 Fed. Rep. 142. 

A, device not showing an important 
element. Roberts v. Dicky, 4 Brews. 
(Pa.) 260; s. c, 20 Fish. Pat. Cas. 532; 



56 



Novelty. 



PA TENT LA W. 



Anticipation. 



{b) Concealed Iivivention.^A patent is not invalidated by a 
concealed invention, ' or by one accidentally made and never 
communicated.* 

{d) By Publication. — A patent is anticipated by a publica- 
tion,3 



s. c, I Pat. Off. Gaz. 4; Hitchcock v. 
Tremaine, 9 Blatcht". (U. S.) 5150; s. c, 
5 Fish. Pat. Ca5.S37i s. c, i Pat. Off. 
Gaz. 633. 

A similar product made bj a some- 
what similar process, but apparently 
not successful and not continued. Smith 
■V. Glendale etc. Fabric Co., i Holmes 
(U. S.) 340; s. c, s Pat. Off. Gaz. 429. 

Cases where alleged anticipating de- 
vice declared experiment through the 
non-success of the result. Smith t'. 
Goodyear Dental etc. Co., 93 U. S. 487; 
s. c, II Pat. Off. Gaz. 246. 

1. Whitney v. Emmett, i Baldw. (U. 
S.) 303; s. c, I Robb Pat. Cas. 567; 
Rowley v. Mason, 2 A. L. T. 106; jud- 
son ZK Bradford, 3 Bann. & Ard. Pat. 
Cas. 539; s. c, 16 Pat. Off. Gaz. 17:; 
Sayles v. Chicago etc. R. Co., 2 Fish. 
Pat. Cas. 523; s. c, i Biss. (U. S.l 46S; 
Stainthrop v. Humiston, 4 Fish. Pat. 
Cas. 107; Piper v. Brown, 4 Fish. Pat. 
Cas. I7t;; Zinsser 71. Kremer, 39 Fed. 
Rep. III. 

Especially is this the case where an 
invention is afterward forgotten. Gay- 
ler V. Wilder, 10 How. (U. S.) 477; 
Hall V. Bird, 3 Fish. Pat. Cas. 1:95; s.c, 
•6 Blatchf (U.S.)438; Bullock Printing 
Press Co. v. Jones, 3 Bann. & Ard. Pat. 
Cas. 195. 

And where only a single specimen of 
the invention was in existence. Ca- 
hoon V. Ring, i Fish. Pat. Cas. 397. 

That a device had been kept se- 
cret some time does not prevent it 
from being afterwards patented. Ayl- 
ing V. Hall, 2 Cliff. (U. S.) 494. 

2. New York v. Ransom, 23 How. 
(U. S.) 322. 

3. Publication means put into gen- 
eral circulation. Cotter v. Stimson, 20 
Fed. Rep. go5. 

If an invention has been described 
in a public work anterior to the sup- 
posed discovery, the patent is void. 
Evans v. Eaton, 3 Wheat. (U. S.) 454; 
s. c, I Robb Pat. Cas. 68; Winans v. 
Schenectady etc. R. Co., 2 Blatchf. (U. 
S.) 279; Evans v. Hettick, 3 Wash. (U. 
S.) 40S. 

A specification of a prior foreign 
patent is a prior publication. Sewall 
T". Jones, 91 U. S. 171. 



Status of Publication. — "Under the 
provisions of law, if the publication in 
the English work preceded the discov- 
ery by Heaton, the defense was made 
out. Under the law the publication is 
put upon the same footing with a pat- 
ent taken out at the time of the publi- 
cation. The sole question is, therefore, 
did Heaton make his invention before 
the date of the English publication?" 
Webb V. Qiiintard, 9 Blatchf. (U. S.) 
352: s. c, 5 Fish. Pat. Cas. 276. 

When a Printed Description Becomes a 
"Publication." — A printed description 
of an invention is not deemed pub- 
lished until after it has been left some 
time in a place accessible to the public. 
Coburn v. Schroeder, 22 Pat. Off. Gaz. 
153S; s. c, II Fed. Rep. 425. 

What Does Not Amount to a Publica- 
tion. — A description of an invention 
contained in an application for a pat- 
ent which was rejected because it 
lacks the essential quality of a publica- 
tion, in that it is not accessible to the 
public generally or designed for general 
circulation. Northwestern Fire Ex- 
tinguisher Co V. Philadelphia Fire Ex- 
tinguisher Co., I Bann. & Ard. Pat. 
Cas. 177; s. c, 6 Pat. Off. Gaz. 34. 

Business circulars sent only to per- 
sons engaged or supposed to be en- 
gaged in the trade. New Process Fer- 
mentation Co V. Koch, 21 Fed. Rep. 
580; Parsons v. Colgate, 15 Fed. Rep. 
600. 

A book, of which there was no evi- 
dence other than that furnished by the 
copy, that the work was ever on sale or 
circulation. Cottier v. Stimson, 20 
Fed. Rep. 906. 

A book offered as an anticipatory 
publication must be proved to be put 
in circulalion or offered to the public 
before the patentee's invention, by 
other evidence than the date on the 
title page. Reeves v. Kevstone Bridge 
Co., ■; Fish. Pat. Cas. 458"; s. c.,9 Phila. 
(Pa.) 368; s. c, I Pat. Off. Gaz. 466. 

A written description of a machine, 
although illustrated by drawings, which 
has not been given to the pulilic, does 
not constitute an invention within the 
meaning of the Patent Laws, so as to 
defeat a subsequent patent to an inde- 



57 



Kovelty. FA TENT LA W. Anticipation, 

which clearly sets forth the invention it is intended to describe.' 



pendent inventor, even though it be de- 
posited in the Patent Office as part of 
an application for a patent. Lyman 
Ventilating etc. Co. -u. Lalor, i Bann. 
& Ard. Pat. Cas. 403. 

A mere rejected application showing 
that the device described was ever prac- 
tically made and used, does not antici- 
pate a patent. Barker v. Stowe, 3 Bann. 
& Ard. Pat. Cas. 337. 

When the inventor's idea is perfected 
by a practical adaption of it in the form 
of mechanism, a rejected specification 
with the drawings, must be considered 
in connection with it, in ascertaining 
the date of invention, design of inven- 
tor, and the principle intended function 
and mode of operation of his mechan- 
ism. Northwestern Fire Extinguisher 
Co. V. Philadelphia Fire Extinguisher 
Co., I Bann. & Ard. Pat. Cas. 177. 

A prior application for a patent with- 
out evidence to show that the described 
device was ever constructed, is not suf- 
ficient to defeat subsequent patent. 
Adams v. Howard, 26 Pat. Off. Gaz. 
825. 

An English provisional specification 
is not a bar to a patent, only as a printed 
specification describing the invention. 
The I patent constitutes no objection. 
Cohn V. United States Corset Co., 12 
Blatchf. (U. S.) 225. 

A provisional •specification which is 
not shown to take effect as a publicatioh 
prior to the date showing the invention, 
does not anticipate a patent. Ireson v. 
Pierce, 39 Fed. Rep. 795; Smith v. 
Goodyear Dental etc. Co., 93 U. S.486; 
o. c, 1 1 Pat. Off. Gaz. 246. 

1. A description in a prior publi- 
cation, in order to defeat a patent, must 
contain and exhibit a substantial repre- 
sentation of the patented improvement 
in such full, clear and exact terms as to 
enable any person skilled in the art or 
science to which it appertains to make, 
construct and practice the invention 
patented. It must be an account of a 
complete and operative invention, 
capable of being put into practical 
operation. Sej'mour v. Osborne, 11 
Wall. (U. S.) 516; Cohn v. United 
States Corset Co., 93 U. S. 366; Elec- 
trical Accumulation Co. f. Julien Elec- 
tric Co., 38 Fed. Rep. 117; Adams v. 
Bellaire Stamping Co., 28 Fed. Rep. 
360; Downton v. Yaeger Milling Co., 
108 U. S. 466. 

If the thing patented is described, the 



steps necessarily antecedent need not 
be. Cohn v. United States Corset Co.^ 
93 U. S. 366. 

"Inventions patented here cannot be- 
superseded by the mere introduction of 
a foreign patent or publication, althoughi 
of prior date, unless the descriptions, 
and drawings contain aind exhibit a sub- 
stantial representation of the patented; 
improvement in such full, clear and ex- 
act terms as to enable, anyone skilled ini 
the art or science to which it appertains, 
without resorting to experiments, to- 
make, construct and practice the inven- 
tion as he would be enabled to do from 
a prior patent for the same invention."' 
Cahill V. Bro\Vn, 11; Pat. Off. Gaz. 697 j. 
s. c, 3 Bann. & Ard. Pat. Cas. 580,.^ 
citing Betts v. Menzies, 7 L. T., N. S> 
no. 

Where the alleged prior publication- 
remotely suggested the device, but did 
not construct it so that the public could 
manufacture and put it to the use de- 
signed without further invention. Mc- 
Comb V. Ernest, i Woods (U. S.) 195;; 
Howe V. Williams, 2 Cliff. (U. S.) 245;. 
Carr v. Rice, : Fish. Pat. Cas. 198. 

Scientific Speculation InsufScient. — 
A publication showing only suggestions 
and speculations of scientific men who 
had never tested the practicability of 
the device. Jensen v. Keasbey, 24 Fed, 
Rep. 144; Hays ■?'. Sulsor, 1 Bond (U. 
S.) 279; s. c, I Fish. Pat. Cas. 532. ' 

Incompleteness and Indefiniteness Fa- 
tal. — Statements in a prior publication, 
not full and definite enough to enable 
those skilled in the art to put the inven- 
tion into practice. Hord v. Boston Car 
Spring Co., 21 Fed. Rep. 67; Cohn v. 
United States Corset Co., 93 U. S. 366; 
Downton v. Yaeger Milling Co., loS- 
U. S. 466. 

When the published description does- 
not give the public a practical knowl- 
edge of the invention. Roberts xk 
Dickey, 4 Brew. (Pa.) 260. 

Where the invention cannot be made- 
and used merely by use of the publi- 
cation without the aid of anything not 
known. Begnall v. Harvev, 18 Blatchf, 
(U. S.) 353; Carr v. Rice" i Fish. Pat.. 
Cas. 198; Goff w. Stafford, 14 Pat. Off. 
Gaz. 748. 

Burden to Sbow Sufficiency on Defend- 
ant.— The defendant has to make out 
the sufficiency of the description. Cohn 
V. United States Corset Co., 12 Blatchf. 
(U. S.) 225. 



58 



Movelty. 



PA TENT LA W. 



Poreign InTentiong^ 



{e) Knowledge of Prior Device or Description.— A 
patent is void, even though the inventor had no knowledge of 
the prior device or description anticipating it ;^ even when an in- 
vention is abandoned it becomes public property and cannot be 
resumed by an inventor.* 

(/) Must be Prior to Date of Invention. — To invalidate 
a patent the anticipating device or description must be prior to- 
the patentee's invention, not merely prior to his application for a 
patent.' 

7. Novelty with Reference to Foreign Inventions. — ^A patentee 
must be the inventor with reference to foreign countries, as well 
as to this ;* that is, he must be an original inventor, and not an. 



Completeness of Publication Question 
of Fact. — Whether a publication offered 
in evidence describes the invention 
claimed in the patent, is a question of 
fact. Adams v. Bellaire Stamping Co., 
28 Fed. Rep. 360. 

1. Evans v. Eaton, 3 WheM. (U. S.) 
454; s. c, I Robb Pat. Cas. 68; Win- 
ans V. Schenectady R. Co., 2 Blatchf. 
(U. S.) 279; Evans v. Hettick, 3 Wash. 
(U. S.) 408, s. i;., 1 Robb Pat. Cas. 
166; Sewall t;. Jones, 91 U. S. 171; s.c, 
9 Pat. Off. Gaz. 47. 

See Reed v. Cutter, i Story (U. S.) 
590; s. c, 2 Robb Pat. Cas. 81. 

Presumed to Know Prior Inventions or 
Patents. — A patentee is presumed to 
have knowledge of previous inventions. 
Foote V. Silsbv, 2 Blatchf. (U. S.) 260; 
Woodcock V. Parker, 1 Gall. (U.S.) 438. 

Also presumed to know of a preced- 
ing patent. Odiorne v. Winkley, 2 Gall. 
(U. S.) 51. 

Foreign Patent. — When an invention 
has been patented in a foreign country, 
or described in a public work the alleged 
inventor here is presumed to have been 
acquainted with that invention as it was 
known in the foreign country. Swift 
V. Whisen, 2 Bond (U. S.) 115. 

2. Colt V. Massachusetts Arms Co., 
I Fish. Pat. Cas, 108; Whipple v. Bald- 
win Mfg. Co., 4 Fish. Pat. -Cas. 29; 
White V. Allen, 2 Cliff. (U. S.) 324; s. 
c, 2 Fish. Pat. Cas. 440; Northwes- 
tern Fire Extinguisher Co. v. Philadel- 
phia Fire Extinguisher Co., 1 Bann. & 
Ard. Pat. Cas. 177; Shoup v. Henrici, 2 
Bann. & Ard. Pat. Cas. 249; s. c, 4 
Pat. Off. Gaz. 1 162. 

Lost Art. — A rediscovered "lost art" 
has been placed on a different footing. 
Gayler v. Wilder, 10 How. (U. S.) 477. 

3. Dixon V. Moyer, 4 Wash. (U. S.) 
68; Smith v. Goodyear Dental etc. Co., 
93 U. S. 486; Reeves -c. Keystone 



Bridge Co., 5 Fish. Pat. Cas. 462; s. c.,. 
I Pat. Off. Gaz. 466; Byerly v. Cleve- 
land Linseed Oil Works, 31 Fed. Rep. 
73; Draper f. Potomska Mills, 3 Bann_ 
& Ard. Pat. Cas. 215; Bates v. Coe, 9& 
U. S. 34; Consolidated Bunging Appa- 
ratus V, Woerle, 29 ^ed. Rep. 449. 

And, consequently, where an inven- 
tion is shown to be made before the 
sealing of an English patent, the inven- 
tion is not anticipated by it. Railwa}'- 
Registering Mfg. Co. v. Broadway etc- 
R. Co., 26 Fed. Rep. 522. 

^He can show the date of his invention. 
Parker v. Hulme, i Fish. Pat. Cas. 44; 
Judson V. Cope, i Bond (U. S.) 327; s.. 
c, I Fish. Pat. Cas. 615. 

A description in a printed publica- 
tion cannot invalidate a patent unless- 
prior to the invention. It is not 
enough that it was prior to the- 
application for letters patent. Bar- 
tholomew V. Sawyer, i Fish. Pat. Cas. 
516; s. c, 4 Blatchf (U. S.) 347; Howe 
V. Morton, i Fish Pat. Cas. 586; Coch- 
rane V. Deener, 94 U. S. 780; Reeves- 
V. Ke3'stone Bridge Co., 5 Fish. Pat. 
Cas. 458; s. c, 9 Phila. (Pa.) 368; s. c, 
: Pat. Off. Gaz. 466. 

English Specifications. — A m e r i c a n 
patentee made his invention before the 
filing of English specification. Held, 
that his patent was not invalidated. 
Lorrilard v. Dohan, 9 Fed. Rep. 509; s. 
c, 20 Pat. Off. Gaz. 1587; De Florez v, 
Raynolds, 17 Blatchf. (U. S.) 436; s. c, 
17 Pat. Off. Gaz. 503. 

The specification or other description 
must be published before the date of 
invention of American patentee, pro- 
vided the latter believed himself, at the 
timev of his application for letters- 
patent, to be the first inventor. Eliza- 
beth V. American Pavement Co., 97- 
U. S. 126. 

4. Sewall -'.Jones, 91. U. S. 171. 



59 



Public TTse. 



PA TENT LA W. 



Public TJae. 



importer of the invention.^ 

8. Novelty with Reference to Combinations. — The novelty in 
combinations consists in the embodiment and adaptation of 
mechanical appliances which are old.* 

VI. Public Use. — Where an invention has been in public use or 
on sale in the United States for more than two years prior to 
the application for a patent, the patent granted is void.* It is 
immaterial whether the use or sale has or has not been with the 
consent of the inventor.* The test whether a transaction is or 
is not a public sale or use, is whether the use or sale has been in 



1. Thompson v. Haight, i U. S.L.J. 
5S2. 

Proof of prior use in a foreign 
country will not supersede a patent 
granted here unless the alleged inven- 
tion was patented in some foreign 
country. Proof of such foreign manu- 
facture and use, if known to the appli- 
cant for the patent, niay be evidence to 
show he was not the inventor of 
the alleged new improvement; but it is 
not sufficient to supersede the patent if 
he did not borrow his supposed inven- 
tion from that source, unless the foreign 
inventor obtained a patent for his im- 
provement or the same was described 
in some printed publication. Roemer y. 
Simon, 95 U. S. 214; Doyle v. Spauld- 
ing, 19 Fed. Rep. 744; Illingworth v. 
Spaulding, 9 Fed. Rep. 611. 

2. Crandal v. Walters, 9 Fed. Rep. 
659; Aron V. Manhattan R. Co., 132 U. 
S. 84; Proctor v. Bennis, 36 C. D. 
740; May V. Fond du Lac Co., 27 Fed. 
Rep. 691. 

Novelty in Combinations. — When a 
patent is for a combination, it is imma- 
terial whether the patentee is the in- 
ventor of any of the elements of ingre- 
dients. They may all be old, and yet 
if the patentee was the first to combine 
them for the particular purpose, he is 
entitled to be protected in that im- 
provement. Silsbv V. Foote, 20 How. 
(U. S.) 378; O'Reilly v. Morse, 15 
How. (U. S.) 62; Penwock -v. Dia- 
logue, 4 Wash. (U. S.) ^38; s. c, 2 Pet. 
(U. S.) i; s. c, I Robb Pat. Cas. 466; 
Ryan v. Goodwin, 3 Sumn. (U. S.) 514; 
s. c, I Robb Pat. Cas. 725; Sessions v. 
Romadka, 28 Pat. OfT. Gaz. 721. 

The theory of a combination is that 
all the parts are old and the invention 
consists in the new combination. Union 
Sugar Refinery Co. v. Mathiesen, 2 
Fish. Pat. Cas. 600; s. c, 3 Cliff. (U. 
S.) 639. The test of novelty as applied 
to a combination seems to be, whether 
the application of the powers of nature 



by such means and appliances as the 
patentee claims to have invented, is 
new. Bell v. Daniels, i Fish. Pat. Cas. 
372; s. c, I Bond (U. S.) 212. 

Therefore, where the combination is 
new, the elements may have been in 
the most common and extensive use. 
Ryan v. Goodwin, 3 Sumn. (U. S.) 514; 
s. c, I Robb Pat. Cas. 725. 

A Substitute or an Improvement. — If 
a device is a substitute for one element 
of a combination, and not merely an 
improvement on it, then a machine 
containing ttiis substitute and the other 
old elements is a new and different ma- 
chine from a machine containing the 
combination of old elements known be- 
fore the invention, and not merely an 
improvement upon such machine con- 
taining such combination of old ele- 
ments. Potter V. Holland, i Fish. Pat. 
Cas. 382: =. ^., 4 Blatchf. (U. S.) 
238. 

Although Part of the Apparatus Might 
Have Been Applied to a Similar Purpose. — 
A combination is new although part of 
the apparatus might have been applied 
to similar purposes in other and differ- 
ent machines. Pitts v. Whitman, 2 
Story (U. S.) 609; s. c, 2 Robb Pat. 
Cas. 189. 

But the novelty of a combination can- 
not be supported by the evidence of the 
novelty of a part. Batten v. Clayton, 
2 Wharl. Dig. 363. 

3. U. S. Rev. Stats., § 4886. Lock- 
wood V. Cleveland, 18 Fed. Rep. 37; 
Hutchinson v. Everett, 26 Fed. Rep. 
531; Cross V. Union etc. Fastening 
Co., 29 Fed. Rep. 293. 

A foreign use is not contemplated by 
the statute. Worswick Mfg. Co. v. 
Steiger, 17 Fed. Rep. 250. 

4. Andrews t». Hovey, 123 U. S. 
267. 

The circuit court decisions on this 
question are collected and analyzed in 
the motion for rehearing. Andrews 
V. Hovey, 123 U. S. 267. 



60 



Fnblic Vse. 



PA TENT LA W. 



Public Use. 



the ordinary transactions of life in the ordinary course of business,* 



1. A machine which, whether entirely' 
satisfactory or not, has been used in the 
ordinary course of business for twenty or 
thirty years, and is patented precisely 
as it IS used, cannot properly be called 
an experimental machine. Perkins v. 
Nashua Card etc. Co., 5 Bann. & Ard. 
Pat. Cas. 395, Campbell v. Ma^'Or, 44 
Pat. Oflf. Gaz. 10S5. 

Even when the patentee expresses 
himself doubtful of the durability of the 
device, and claims a desire to test it, a 
use of a permanent nature in the ordi- 
nary course of business for over two 
vears will invalidate the patent. Root 
'v. Third Ave. R.Co., 37 Fed. Rep. 673. 

What Is Public Use. — Public use is: 
(i) where an inventor allows his in- 
vention to be used bj' other persons, 
either with or witliout compensation, 
or where'it is put on sale without his 
consent for such use. Elizabeth v. 
American etc. Pavement Co., 97 U. S. 
126. 

(2) Where an inventor in the general 
course of business sells' his' invention 
even by a conditional sale. Henry v. 
Francestown Soapstone Co., 5 Bann. & 
Ard. Pat. Cas. 108; Plimpton v. Wins- 
low, 23 Pat. Off. Gaz. 1731. 

Number of Persons Using, Unimpor- 
tant.— Whether use is public or not, 



ence of employees of a factory, and 
though but one device was made and 
was soon laid aside, it was held a per- 
fected invention, and not an abandoned 
experiment, and the use was held to be 
public. Brush v. Condit, 20 Fed. Rep. 
826; 28 Pat. Off. Gaz. 451. 

Use of Machine in Factory; Workmen 
Not Fledged to Secrecy. — tfse of ma- 
chine in a factory where the workmen 
are not pledged to secrecy, is a public 
use, even though chance visitors are ex- 
cluded. Perkins v. Nashua Card etc. 
Co., 5 Bann. & Ard. Pat. Cas. 395. 

Wlien an inventor puts his incom- 
plete or experimental device upon the 
market and sells it as a manufacture 
more than two years before he applies 
for his patent, he gives the device to the 
public in the condition or stage of de- 
velopment in which he sells it; and 
his patent cannot cover what he has 
thus given away. Lyman v. Maypole, 
28 Pat. Off. Gaz. 810; s. c, 19 Fed. Rep. 

735- 

A machine and a process were used 
for a series of years without a change in 
either. Held, not an experimental use. 
Manning v. Cape Ann etc. Glue Co., 
108 U. S. 462. 

An inventor allowed two persons the 
use of his invention without anv in- 



does not depend upon the number of junction of secrecy or other condition, 
persons to whom the use is known. Held, a public use. Manning tj. Cape 



Egbert v. Lippmann, 104 U. S. 333. 

Also Number of Articles Made. — Nor 
upon the number of articles made; one 
is sufficient, though a greater number 
may tend to strengthen the proof Eg- 
bert V. Lippmann, 104 U. S. 333; Con- 
solidated Fruit J.ar Co. v. Wright, 12 
Blatchf (U. S.) 149; s. c, 6 Pat. Off. 
Gaz. 327; s. c, I Bann. & Ard. Pat. 
Cas. 320; Henry v. Francestown Soap- 
stone Co., 5 Bann. & Ard. Pat. Cas. 108. 

And Time. — A device was used two 
and one half months onlj', then laid 
aside. Held, an anticipation of the 
patent when the use was not for the 
purpose of testing the device, but was a 
public and practical one with as much 
success as was reasonable to expect at 
that early stage of a particular art. 
Brush V. Condit, 28 Pat. Off. Gaz. 451; 
20 Fed. Rep. 824. 

Where a device did such practical 
work as might reasonably be expected 
in the state of the art at that time, and 
was put in ordinary, though not con- 
stant use, for a short time, in the pres-' 



• Ann etc. Glue Co., 108 U. S. 462. 

A use of an invention where it cannot 
be seen by the public eye, if allowed by 
the inventor to be used in a complete 
condition, not as a test, and without 
any obligation of secrecy is a public 
use. This is an extreme case. A man 
made a pair of corset steels; they were 
given to a female friend, and in their 
use were hidden in the corset. Egbert 
V. Lippman, 104 U. S. 333; s. v.., 21 Pat. 
Off. Gaz. 75. 

Double Purpose of Profit and Experi- 
ment. — A patent is void if, more than 
two years before the application for it 
was -filed, the patentee sold the patented 
article for the double purpose of seeing 
whether they would sell and of realiz- 
ing from the proceeds. Consolidated 
Fruit Jar Co. v. Wright, 12 Blatchf. 
(U. S.) 149. 

Offering a device for sale whether 
any sales were made or not, two years 
prior to the application, invalidates the 
patent. Plimpton v. Winslow, 23 Pat. 
Off. Gaz. 1731. 

6J 



XrtiUty. 



PA TENT LA W. 



Oensral Frinciplea. 



or to test the invention.* 

VII. Utility — 1. General Principles. — That the invention be 
•useful is essential ta the validity o£ a patent.** The. term 
"useful" is employed in contradistinction to what is injurious to 
the moral health or good order of society,* or what is merely 



Partial Success of Machine. — Though 
•the machine embodjing an invention 
was not a success as a whole, if used or 
especially- if sold over two ^'ears prior 
to the application, the patent is void. 
Newark Machine Co. v. Hargett, 28 
JFed. Rep. 567. 

1. Where the inventor uses his ma- 
chine for the bona fide intent of testing 
Jts qu.ilities, although he makes no al- 
terations. Elizabeth v. American etc. 
Pavement Co., 97 U. S. 126. 

Where a use for profit was incidental 
and subordinate to the experimental 
use. Jennings v. Pierce, 15 Blatchf. (U. 
S.)42; s. u., 3Bann.& Ard, Pat. Cas. 361. 

Where the use is an experiment, 
although the public derived an inci- 
•dental advantage. Elizabeth v. Ameri- 
can etc. Pavement Co., 97 U. S. 126. 

Where the use prior to the period of 
two years was by way of trial and re- 
sulted in a change of the machine. 
Pitts V. Hall, 2 Blatchf (U. S.) 229. 

Where a machine is imperfect and 
requires continuous experiments to 
remedy the defects of its organization. 
Sprague v. Smith etc. Mfg. Co., 12 Fed. 
Rep. 721; Eastern Paper Bag Co. v. 
Standard Paper Bag Co., 30 Fed. Rep. 
.63. 

Where a. machine is put up and used 
on the premises of another, and the 
use enures to the benefit of the owner 
of the establishment, but is used under 
surveillance of inventor for the purpose 
of enabling him to test the machine. 
Elizabeth v. American etc. Pavement 
Co. 97 U. S. 126. 

Distinction Between Public Use and 
T7se in Public. — There is an obvious dis- 
tinction between a public use or a use 
-by the public, and an experimental use 
in public. Locomotive Truck Co. v. 
R. Co., I Bann. & Ard. Pat. Cas. 470. 

A Use In Public of a Device WMch Can- 
not be Tested Privately. — If a thing 
■cannot be tested in private, a public 
use may be deemed experimental. 
'Campbell v. New York, 20 Pat. Off". 
•Gaz. 1817; s. c, 9 Fed. Rep. 500. 

Sale of Imperfect Invention. — Sale of 
imperfect invention does not invalidate 
the patent. American Hide etc. Co. v. 
American Tool etc. Co., i Holmes (U. 



S.) 503; Henry v. Francestown Soap- 
stone Co., 5 Bann. & Ard. Pat. Cas. 108. 

The test, whether an article is perfect 
or imperfect, is whether it is or is not 
the invention — that is, "whether it 
embodies the whole of it." Draper v. 
Wattles, 3 Bann. & Ard. Pat. Cas. 619. 

Wben Machine Is Altered. — If a ma- 
chine as originally' constructed is subse- 
quently altered so as to make a machine 
substantially different in its construction 
and mode of operation, the time begins 
to run from the completion of the last 
machine. Haskell v. Shoe Mach. Co., 
3 Bann. &' Ard. Pat. Cas. 553. 

Distinction Between Completed Inven- 
tion and Completed Machine. — The dis- 
tinction between the invention and the 
machine which embodies it must be 
preserved. The invention may be per- 
fect, and the machine which embodies 
the invention may be an imperfect ma- 
chine. American Hide etc. Co. v. 
American Tool etc. Co., i Holmes (U. 
S.) 503; S.C., 4 Fish. Pat. Cas. 284. 

2. U. S. Rev. Stats., § 4886; Page v. 
Ferry, i Fish. Pat. Cas. 299; Lowell v. 
Lewis, I Robb Pat. Cas. 131; Winter- 
mute V, Redington, i Fish. Pat. Cas. 239; 
Winans r'. Schenectady etc. R. Co., 2 
Blatchf (U. S.) 2.79; Vance v. Camp- 
bell, : Fish. Pat. Cas. 483; Shannon v. 
Bruner, 33 Fed, Rep. 289. 

An invention which exposes the 
operator to great bodily harm cannot 
be regarded as useful. Mitchell v. 
Tilghman, 19 Wall. (U. S.) 287. Or is 
simply dangerous. Converse v. Can- 
non, 2 Woods (U. S.) 7; s. c, 9 Pat. 
Off". Gaz. 105; HofFheins v. Brandt, 3 
Fish. Pat. Cas. 218. 

An improvement, which, in effecting 
a subsidiary end (as arresting the sparks 
of a locomotive), is destructive of the 
ends of the principal machine, is not 
useful. Wilton v. R. Co., 2 Whart. 
Dig 360. 

But it must be of some use or bene- 
fit. Cox V. Griggs, 2 Fish. Pat. Cas. 
174; Wintermute v. Redington, i Fish. 
Pat. Cas. 239. It must not be "utterly 
worthless." Vance v. Campbell, i 
Fish. Pat. Cas. 483; s. c, i Black (U. 
S.) 427. 

3. Bedford v. Hunt, i Mason (U. S.) 



82 



Utility. 



PA TENT LA W. Degree of TTtility Kcqaiaite. 



frivolous. > 

2. Degree of Utility Requisite. — The amount of utility in an 
invention is unimgortant, provided it is useful to some degree ;* 
consequently, the fact that a device is not superior to other 
devices,* or is capable of improvement,* or has even been driven 
•out of the market by later inventions,^ is unimportant. 



302; s. c, 1 Robb Pat. Cas. 14S; West- 
lake z'. Cartter, 5 Fish. Pat. Cas. i;ig; 
s. c, 4 Pat. Off. Gaz. 636. 

1. Lowell V. Lewis, i Robb Pat. 
•Cas. 131; Winans t'. Schenectady etc. 
R. Co., 2 Blatchf. (U. S.) 279. 

An invention must not be for a frivo- 
lous object, "like the invention of an 
improvement in playing cards." Ad- 
ams V. Edwards, i Fish. Pat. Cas. i ; 
Wintermute v. Redington, i Fish. Pat. 
■Cas. 239. Or only applicable to gam- 
bling purposes. Nat. Automatic De- 
vice Co. V. Lloyd, 40 Fed. Rep. 89. 

Utility a Question of Fact. — Utility of 
an invention is a question of fact usually 
■depending upon the actual experiment. 
Tilghinan v~. Mitchell, 4 Fish. Pat. Cas. 
599. And the court will not declare a 
patent invalid for want of utility, except 
■on the strongest proof. Kearney v. 
Lehigh Valley R. Co., 32 Fed. Rep. 

Evidence of Utility. — Where an inven - 
tion supersedes all others, it is very 
■strong evidence that some useful result 
was obtained. Smith v. O'Connor, 6 
Fish. Pat. Cas. 469. 

"In face of the proofs, the denial of 
the utility of the invented process is re- 
markable. The evidence -shows the in- 
vention or process to have been pre-em- 
inently' useful. It has gone into very 
•extended use throughout the entire oil 
regions and its use has immensely in- 
■creased the production of oil." Roberts 
x\ Schreiber, 5 Bann. & Ard. Pat. Cas. 
.491, 

The remarkable increase of demand 
for brushes of that class, together with 
substantial imitation of it by the in- 
fringer, are conclusive evidence of the 
utility of the invention. Megrave v. 
Carroll, 5 Bann. & Ard. Pat. Cas. 325. 

Any invention which increases the 
salability of an article may be said to 
contain the elements of utility. New- 
bury- V. Fowler, 28 Fed. Rep. 454. 

2. Doherty r'. Haines, i Bann. & Ard. 
Pat. Cas. 289J Gibbs v. Hoefner, 19 
Fed. Rep. 323; Curtis on Patents, § 106; 
Adams v. Loft, 4 Bann. & Ard. Pat. 
Cas. 494; Fryer v. Mutual L. Ins. Co., 30 
Fed. Rep. 787. The utility need not be 



general; it may be limited to a few cases. 
Bedford v. Hunt, i Mason (U. S.) 304; 
s. c, I Robb Pat. Cas. 14S. 

3. An invention, to be useful, need 
not supersede by general utility all 
other inventions now in practice to ac- 
complish the same purpose. Bedford 
V. Hunt, I Mason (U. S.) 302; s. c, i 
Robb Pat. Cas. 148; Shaw -■. Colwell 
Lead Co., 20 Blatchf. (U. S.) 417. Nor 
be better than anythinginvented before, 
or that shall come after. Hoffheins v. 
Brandt, 3 Fish. Pat. Cas. 2 18. Even if it 
does not accomplish its object as well 
as other articles intended for the same 
purpose, the patent is not void. Wil- 
son V. Hentges, 26 Winn. 288; Bell v. 
Daniels, i Fish. Pat. Cas. 372; s. c, i 
Bond (U. S.) 212. That it does not ac- 
complish its object as well as another 
affects the value of the patent and not 
its validity. Bell v. Daniels, i Fish. 
Pat. Cas. 372; s. c, 1 Bond (U. S.) 212. 

In ascertaining usefulness, it is not 
important that it should be more valua- 
ble than other modes of accomplishing 
the same results; but it must be aprac- 
tical method of doing the thing desig- 
nated, in which its utility may more or 
less consist. Roberts v. Ward, 4 Mc- 
Lean (U.S.) 565. It is not necessary 
that it should be the best thing of its 
kind. Winans v. Schenectady etc. R. 
Co., 2 Blatchf. (U. S.) 279. 

4. Wheeler v. Clipper Mower etc. 
Co., 10 Blatchf. (U. S.) 181; s. c, 6 
Fish. Pat. Cas. i; s. c, 2 Pat. Off. Gaz. 
443; National Hat Pouncing Mach. Co. 
V. Thom. 25 Fed. Rep. 497. 

5. Cook V. Earnest. 2 Pat. Off. Gaz. 
89; &. c, 5 Fish. Pat. Cas. 396; National 
Hat Pouncing Mach. Co. v. Thom, 25 
Fed. Rep. 497. 

Simplicity of Invention Not a Bar. — 
An invention may be simple and not 
import the exercise of very high me- 
chanical or scientific talent. Wayne 
V. Holmes, 2 Fish. Pat. Cas. 20; s. c, i 
Bond {U. S.) 27. Lack of utility is 
not to be inferred from simplicity. 
Bell V. Daniels, i Fish. Pat. Cas. 372; 
s. c, I Bond (U. S.) 212. 

A billiard table having the bfoad 
side rails beveled or inclined inwards 



C3 



Sates of Applications 



PA TENT LA W. 



for Patents. 



3. Presumption of Utility. — A presumption of utility arises from 
the grant of a patent,* and from the use by the infringer.* 

VIII. Dates of Applications fob Patents. — The date of an ap- 
phcation is the date of its fihng in the Patent Office.^ Any 
changes in the specifications, even to the extent of fihng an 
entirely new one, where the substance of the invention as orig- 
inally claimed is sought,* are referred back to the original date of 
filing. This ruling applies also to a second application filed as a 
continuation of the first," but not to a case where it is not so 
intended.** 



so as to give the player opportunity to 
get his leg under the table, and so con- 
structed as to be cheaper than the 
curved or ogee form, has sufficient 
utility to support a patent. CoUender 
V. Griffith, 2 Fed. Rep. 206. 

1. Parker z\ Stiles, s McLean (U. 
S.) 44; Mesker v. Thuener, 42 Fed. 
Rep. 329; Huber v. Nelson Mfg. Co., 
38 Fed. Rep. 830. ; 

The presumption of-utility must be 
rebutted b3' proof. Kirk v. Du Bois, 
33 Fed. Rep. 252. 

Conclusiveness of tlie Presumption. — 
But that it is not conclusive, the inven- 
tion may be shown to be useless. Lee 
V. Blandy, 2 Fish. Pat. Cas. 89; s. u., i 
Bond (U. S.) 361. Presumption of 
utility arises from oath of applicant for 
the patent that it is useful. Hays v. 
Sulsor, I Fish. Pat. Cas. 532; s. c, i 
Bond (U. S.) 279. Presumption of 
utility can onlyj be overcome by clear 
proof, that the device is utterly worth- 
less. 2 Fish. Pat. Cas. 229; s. c, 1 
Bond (U. S.) 511. And if the device is 
useful even in a small degree, it is not 
usual for the court to reverse the de- 
cision of the Patent Office. Doherty v. 
Haynes, i Bann. & Ard. Pat. Cas. 289. 

2. The fact that the defendants were 
contesting a patent is evidence that 
the invention is useful. Smith v. 
O'Connor, 6 Fish. Pat. Cas. 469; s. c, 
2 Sawy. (U. S.) 46 1-, 4 Pat. Off. Gaz. 
633; Megraw v. Campbell, 4 Bann. & 
Ard. Pat. Cas. 325; Niles Tool Works 
V. Belts Machine Co., 27 Fed. Rep. 
301; Kearney v. Lehigh Valley R. Co., 
32 Fed. Rep. 320. 

And this evidence has been held 
conclusive. Hays v. Sulsor, i Fish. 
Pat. Cas. 532: s. c, i Bond (U. S.) 279; 
Vance v. Campbell, i Fish. Pat. Cas. 
483; Hancock Inspirator Co. v. Jenks, 
31 Fed. Rep. 911; La Rue v. Western 
Electric Co., 31 Fed. Rep. So.- 

3. Birdsall v. McDonald, i Bann. & 



64 



Ard. Pat. Cas. 165; s. c, 6 Pat. Off. 
Gaz. 682; Henry %'. Francestown Soap- 
stone Co., 2 Fed. Rep. 78; s. c, 17 Pat. 
Off. Gaz. 569. 

Neither filing the model nor writing 
the paper commonly called the specifi- 
cation, gives the date of the application 
from which the two ^ears are to be 
reckoned. "Application." in tliis con- 
nection,' includes the paper as some 
written paper and its presentation to 
the Commissioner. Henry ji. Frances- 
town Soapstone Co., 2 Fed. Rep. 78; 
s. c, 17 Pat. Oft". Gaz. z,(i^\ Draper v. 
Wattles, 16 Pat. Off. Gaz. 629. 

4. Sewall 71. Jones, gi U. S. 171; 
s. c, 9 Pat. Off. Gaz. 47. 

5. Godfrey v Fames i Wall. (U. S.) 
317; Smith V. O'Connor, 2 Sawy. (U. 
S.) 461; s. I... 6 Fish. Pat. Cas. 469; 
s. c, 4 Pat. Off. Gaz. 633; Smith v. 
Goodyear IDental etc. Co., 93 U. S.486; 
B.C., II Pat. Off. Gaz. 246; Howes v. 
McNeal, 1,5 Blatchf. (U. S ; 103; s. c, 
3 Bann. & Ard. Pal. Cas. 376; s. c, 15 
Pat. Off. Gaz. 60S; Blandy v. Griffith, 
3 Fish. Pat. Cas. 609; Howe -\ New- 
ton, 2 Fish Pat. Cas 1^31; Goodyear 
Dental etc. Co v. Willis, i Flipp. (U. 
S.l 385; s. c, I Bann. & Ard. Pat. Cas. 
560; Weston V. White, 13 Blatchf. (U., 
S.) 364; s. c, 2 Bann. & Ard. Pat. Cas. 
321; Colgate v Western Union Tel. 
Co., 15 Blatchf (V.. S.), 36!;-, s. c, 4 
Bann. & A'rd. Pat. Cas. 37; s. c, 14 
Pat. Off Gaz. 9^3: Graham v. Geneva 
etc. Mfg. Co.. 11 'Fed. Rep. 779. 

This rule is modified by ^ 32 of act 
of 1870, so I hat where an application is 
abandoned by failure to prosecute 
within two years, a new application 
filed does not relate back to the date of 
the prior application, but only to the 
date of its own filing. Lindsav v. 
Stein, 21 P.it. Off. Gaz. 1613; ». c, 10 
Fed. Rep. 907. 

6. United States Rifle Co. v. Whit- 
ney Arms Co., 14 Blatchf. (U. S.) 94; 



Power ef States Over 



PA TENT LA W. 



Patent Bights. 



IX. PowEE OF States Ovee Patent Rights. — The right of the 
inventor to use or sell the patented subject-matter is not enlarged 
by the grant of the patent ; and the use and sale of that subject 
matter can be as lawfully forbidden by the States subsequent to 
as before the grant of the patent.* As a general rule the States 
have no right to restrain or restrict the use or sale of a patented 
invention* but can regulate the sale of patented articles in the 
same manner as other articles not patented.* 



s. c, 2 Bann. & Ard. Pat. Cas. 493; 
s. c, II Pat. Off. Gaz. 373; Rich v. 
I.ippincott, 2 Fish. Pat. Cas. i. 

Whether a new application is a con- 
tinuance of an old one, is a question of' 
fact. Berin v. East Hampton Bell Co., 
gBlatchf. (U. S.) 50; s. c, 5 Fish. Pat. 
Cas. 23; Weston v. White, 13 Blatchf. 
(U. S.) 364; s. c, 2 Bann. & Ard. Pat. 
Cas. 321; Rich v. ]L.ippincott, 2 Fish. 
Pat. Cas. I. 

Filing New Application for Rejected 
Hatter. — A second application embrac- 
ing a claim in a prior application 
which claim had been rejected and was 
canceled from the first application 
after the filing of the second (both ap- 
plications going to issue), is a contin- 
uation of the first application. Gra- 
ham V. McCormick, 20 Biss. (U. S.) 
39; s. c, 5 Bann. & Ard. Pat. Cas. 244; 
s. c, II Fed. Rep. 859; s. c, 21 Pat. Off. 
Gaz. 1533. 

But not where the action of the ap- 
plicant would show intention to aban- 
don the matter contained in the orig- 
inal claim. Pelton v. Waters, i Bann. 
& Ard. Pat. Cas. 599; s. c, 7 Pat. Off. 
Gaz. 425. 

1. Patterson v. Kentucky, 197 U. S. 
501; Webber v. Virginia, 103 U. S. 
344; Jordan v. Overseers of Dayton, 4 
Ohio 295; In re Brosnahan, 18 Fed. 
Rep. 62. 

There remains in the patentee, as in 
every other citizen, the power to man- 
age his property or give direction to 
his laborers at his pleasure, subject 
only to the paramount claims of so- 
ciety, which require that his enjoyment 
may be modified by the exigencies of 
the society to which he belongs, and 
regulated by the laws which render it 
subservient to the general welfare, if 
held subject to State control. Jordan 
V. Overseers of Dayton, 4 Ohio 295; 
Patterson v. Kentucky, 97 U. S. 501; 
In re Brosnahan, 18 Fed. Rep. 62. 

2. Ex parte Robinson, 2 Biss. (U. 
S.) 309; s. c, 4 Fish. Pat. Cas. 186; 
Helm V. First Nat. Bank, 43 Ind. 



167; HoUida v. Hunt, 70 111. 109; Crit- 
tenden V. White, 9 Chic. L. N. no. 

While this power is not expressly 
prohibited to the States, it is so im- 
pliedly. Helm V. First Nat. Bank, 43 
Ind. 167. 

3. Webber v. Virginia, 103 U. S. 
344; Patterson v. Kentucky, 97 U. S. 
501 ; Jordan v. Overseers of Dayton, 4 
Ohio 294; Thompson v. Staats, 15 
Wend. (N. Y.) 395; In re Brosnahan, 
18 Fed. Rep. 62; United States v. 
American Bell Telephone Co., 29 Fed. 
Rep. 43; May v. Buchanan Co., 29 
Fed. Rep. 473. 

A license which does not impose 
any discrimination between articles 
manufactured under a patent and those 
not so manufactured, is legally im- 
posed. Webber -v. Virginia, 103 U. S. 
344; People V. Russell, 49 Mich. 617. 

A State has the right to prohibit a 
dangerous manufacture or the sale of a 
dangerous product, even if thereby it 
destroys the availability of a patent. 
Patterson v. Kentucky, 97 U. S. 501. 

Or to prevent the use of a patent 
which is calculated to produce immor- 
ality. Vannini v. Paine, i Harr. 
(Del.) 65. 

A State may regulate the sale of a 
patented thing and may not regulate 
the sale of the patent covering that 
thing. A patentee has two kinds ot 
rights in his invention. He has aright 
both to make, use and sell specimens of 
his invention, and to prevent all other 
persons from doing either of these acts. 
The first of these is entirely independ- 
ent of the patent laws; the second ex- 
ists by virtue of these laws alone. 
Walker on Patents, 2nd ed. § 155. 

Marking Notes Given for Patent 
Eights. — State statutes compelling, un- 
der penaltj', a distinguishing mark to 
be placed on notes given for patent 
rights, have been declared invalid as in 
conflict with the constitution of the 
United States. Ohio, State v. Peck, 
25 Ohio St. 26. 

Indiana, Helm v. Bank, 43 Ind. 167; 



18 C. of L.— = 



65 



Sabjeets of InTention. 



PA TENT LA W. 



Art or Froceas. 



X. SiiBJECTS OF Invention — 1. Art or Process — (a) Definition. 
— An art is a mode of treatment of certain materials to produce 
a given result ; an act or series of acts to be performed upon the 
subject-matter to be transformed and reduced to a different state 
or thing.^ In the sense of the patent law, it is synonymous with 
" process " or " method "* when used to represent the means of 
producing a beneficial result. 

{i>) Novelty of Mechanical Means Not Necessary. — The 
mechanical means by which the result is accomplished may be 



Fry V. State, 63 Ind. 552 ; Hereth v. 
Bank, 34 Ind. 380; Machine Co. v. 
Butler, .53 Ind. 454; Castle v. Hutch- 
inson, 25 Fed. Rep. 394. 

Illinois, Hollida v. Hunt, 70 III. 109; 
s. c, 22 Am. Rep. 63. 

Wisconsin, State v. Lockwood, 43 
Wis. 403. 

Pennsylvania, Bowen v. Kemmun, 
2 Pearson (Pa.) 250. 

Maine, Haskcall v. Whitmore, 19 
Me. 102. 

Kentucky, Patterson v. Common- 
-wealth, II Bush (Ky.) 311; s. c, 21 
Am. Rep. 20. 

Nebraska, Welch v. Phelps, 25 Pat. 
Off. Gaz. 981. 

In Pennsylvania such statutes have 
been upheld. Haskell v. Jones, 86 Pa. 
St. 173; Shires T'. Commonwealth, 120 
Pa. St. 368. 

Statutes of Limitation. — State statutes 
cannot limit the time within which 
actions for the infringement of letters 
patent may be brought in the United 
States. Collins v. Peebles, 2 Fish. 
Pat. Cas. 541; Parker v. Hollock, 2 
Fish. Pat. Cas. 543; Anthony v. Car- 
roll, 2 Bann. & Ard. Pat. Cas. 195 ; 
s. c, 9 Pat. Off. Gaz. 199 ; Wood v. 
Cleveland Rolling Mill, 4 Fish. Pat. 
Cas. 550 ; Sayles v. Dubuque R. Co., 
5 Dill. (U. S.) 561; s. c, 3 Bann. & 
Ard. Pat. Cas. 219; Stephens v. Kan- 
sas Pac. R. Co., s Dill. (U. S.) 486; 
Wetherill v. New Jersey Zinc Co., i 
Ba!\n. & Ard. Pat. Cas. 485 ; Sayles v. 
jLouisville etc. R. Co., 9 Fed. Rep. 512 ; 
Adams v. Bellaire Stamping Co., 25 
Fed. Rep. 270; May v. Logan Co., 127 
Fed. Rep. 692 ; May v. Buchanan Co., 
30 Fed. Rep. 257 ; May v. Cass Co., 30 
Fed. Rep. 762 ; May v. Ralls Co., 31 
Fed. Rep. 473. Contra, Parkftr v. 
Hawk, 2 Fish. Pat. Cas. 58; Rich t;. 
Ricketts, 7 Blatchf. (U. S.) 230; Hay- 
den V. Oriental Mills, 15 Fed. Rep. 
60s; Royer v. Coupe, 29 Fed. Rep. 
362. 

1. Cochrane v. Deener, 94 U.S. 780; 



Smith V. Frazer, 5 Fish. Pat. Cas. 548; 
s. c, 2 Pat. Off. Gaz. 175. 

A combination of arrangements and 
processes to work out a new and useful 
result is an art. Roberts v. Dickey, 4 
Fish. Pat.; Cas. 532 ; s. c, 4 Brews. 
(Pa.) 260; s. c, I Pat. Off. Gaz. 4. 

2. Piper v. Brown, 4 Fish. Pat. Cas. 

175- 

For examples of process, see Tilgh- 
man v. Norse, 5 Fish. Pat. Cas. 323 ; s. 
c, 9 Blatchf. (U. S.)42i;s..c., i Pat. Off. 
Gaz. 574; Piper v. Brown, 4 Fish. Pat. 
Cas. 165 ; American Bell Telephone Co. 
V. Spencer, 20 Pat. Off. Gaz. 299; s. c, 8 
Fed. Rep. 509; American Bell Tele- 
phone Co. V. Dolbear, 23 Pat. Off. Gaz. 
53S; s. c, IS Fed. Rep. 448; The Tele- 
phone Cases, 126 U. S. i. 

" Process " or " method," when used 
to represent the means of producing a 
beneficial result, are, in law, synony- 
mous with art, provided the means are 
not effected by mechanism or mechani- 
cal combinations. Piper v. Brown, 4 
Fish. Pat. Cas. 17s. 

A combination of arrangements and 
processes to work out a new and useful 
result, is a new and useful art. Rob- 
erts V. Dickey, 4 Fish. Pat. Cas. 632; s. 
c, 4 Brews. (U. S.) 260; s. c, i Pat. 
Off. Gaz. 4, 1000. 

A patent for an art must be practica- 
ble and referable to something which 
may prove to be useful. Evans v. 
Eaton, I Pet. (C. C.) 322 ; s. c, 3 Wheat. 
(U. S.) 454; s. c, I Robb Pat. Cas. 68, 

243- 

A process may be patentable irre- 
spective of the particular form of the 
instrumentalities used. Cochrane v. 
Deener, 94 U. S. 780. 

A new application of some property 
in nature never before known or in use, 
by which a new and useful result is 
produced, is the subject of a patent, in- 
dependently of any peculiar or new ar- 
rangement of machinery. Foot v. 
Silsby, 2 Blatchf. (U. S.) 260; aff'g 20 
How. (U. S.) 378. 



66 



Subjects of InTention. 



PA TENT LA W. 



Art or Process. 



•old,* provided the result has not been accomplished by them 
before. 

{c) Not an Art.— An art must be "useful."* It must be some- 
thing more than the function or abstract effect of a machine,' or 
mere way of making an article* or mechanical operation.^ 



The elements of a process may be 
old, but when combined for the purpose 
of putting a new idea to practical use, 
they constitute a new and useful pro- 
cess. Andrews v. Cannon, 13 Blatchf. 
(U. S.) 307; s. c, 2 Bann. & Ard. Pat. 
•Cas. 277; Cochrane v. Deener, 94 U. 
S. 780. 

An inventor may use any means, 
new or old, in the application of the 
new property to produce the new and 
useful result to the exclusion of all 
other means. Foote v. Silsby, 2 Blatchf. 
(U. S.J 260 : s. c, 10 How. (U. S.) 378; 
Dolbear v. American Bell Telephone 
Co., 126 U. S. I. 

Distinction Between an Art or Frocass' 
and a Principle of Nature. — " Inthis art 
— or what is the same thing under the 
Patent Law, this process, this way of 
transmitting speech — electricity is em- 
ployed, but electricity left to itself will 
not do what is wanted. The art con- 
sists in so controlling the force as to 
make it accomplish the purpose . It had 
long been believed that if the vibrations 
of air caused by the voice in speaking 
could be reproduced at a distance by 
means of electricity, the speech itself 
would be reproduced and understood. 
How to do it was the question. Bell 
•discovered that it could be done by 
gradually changing the intensity of an 
electric current so as to make it corre- 
spond to the changes in the density of 
the air caused by the sound of the voice. 
This was his art." Dolbear v. Ameri- 
can Bell Telephone Co., 126 U. S. i. 

Distinction Between a Machine and a 
Process. — A machine is a thing. A 
process is a mode of acting. The one 
is visible to the eye. The other a con- 
ception of the mind seen only by its 
•effects when being executed or per- 
formed. Tilghman v. Proctor, 102 U. 
S. 708. 

A patentee who has invented an ef- 
fective means for giving circular direc- 
tion to a feed mechanism is entitled to 
a patent for the means, but not for giv- 
ing such a direction to his mechanism, 
nor for the process of operating his 
mechanism for giving such direction. 
Dryfoos v. Weise, 26 Pat. Off. Gaz. 6^9. 

1. Corning v. Burden, 15 How. (U. 



S.) 252; Mowry v. Whitney, 14 Wall. 
(U. S.) 620; Tilghman w. Proctor, 19 
Pat. Off. Gaz. 859; s. c, 102 U. S. 707. 

2. Smith V. Downing, i Fish. Pat. 
Cas. 64; French v. Rogers, i Fish. Pat. 
Cas. 133. 

3. Cochrane v. Deener, 94 U. S. 
78. 

4. McKay v. Jackman, 22 Pat. Off. 
Gaz. 85; s. c, 12 Fed. Rep. 615. 

5. McKay v. Jackman, 23 Pat. Off. 
Gaz. 85;s. c, 12 Fed. Rep. 615; Newt;. 
Warren, 22 Pat. Off. Gaz. 589. 

A process eo nomine, is not made the 
subject of a patent in any act of con- 
gress. It is included in the term "use- 
ful art." An art may require one or 
more processes or machines in order to 
produce a certain result or manufac- 
ture. Where the result is produced by 
chemical action, or by the operation or 
application of some element or power 
of nature, or of one substance to an- 
other, such modes or methods are 
called processes. It is when the term 
process is used to represent the means 
or method of producing a result, that it 
is patentable; and it will include all 
methods or means which are not 
effected by mechanism or mechanical 
combinations; but where the term 
"process" represents the function of a 
machine, or the effect produced by it 
on the material subjected to the action 
of the machine, it is not patentable, 
since a man cannot have a patent for 
the function or abstract effect of a 
machine, but only for the machine 
which produces it. Corning v. Bur- 
den, 15 How. (U. S.) 252. 

A mere mechanical operation is not 
patentable as a process and is not with- 
in the protection of the Patent Law, 
when taken apart from the means of 
performing it. McKay v. Jackman, 
22 Pat. Off. Gaz. 85; New v. Warren, 
22 Pat. Off. Gaz. 589. 

A mere process for making an arti- 
cle is not of itself a patentable inven- 
tion. Mackay v. Jackman, 12 Fed. 
Rep. 615. 

A person cannot patent a result, but 
only the means or art by which the re- 
sult is effected. New Process Ferment- 
ation Co. V. Maus, 20 Fed. Rep. 725. 



67 



Subjects of Invention, 



FA TENT LA W. 



Machine. 



2. Machine — («) Definition. — A machine, whether a new- 
organism of mechanism to produce a new effect,^ or a new com- 
bination of devices,* is patentable as a machine. ** The meaning 
of the word machine has been Hberally construed and held to 
cover a device which is incapable of use except in connection 
with other mechanisms.* 

3. Composition of Matter. — A manufacture has been generally- 
held to be synonymous with product,^ though it has been con- 



Reversed, but on the ground that a 
means was patented. New Process 
Fermentation Co. v. Maus, 122 U. S. 
413. Compare also Consolidated Bung- 
ing Apparatus Co. v. Clausen Brew- 
ing Co. 39 Fed. Rep. 277; New Pro- 
cess Fermentation Qo.v. Koch, 21 Fed. 
Rep. 580. 

1. Woodcock V. Parker, i Gall. (U. 
S.) 438; s. c, I Robb. Pat. Cas. 37; 
Geiger v. Cook, 3 W. & S. (Pa.) 266; 
Sanford v. Merrimack Hat Co., 4 Cliff. 
(U. S.) 404; s. c, 10 Pat. Off. Gaz. 466; 
Renwick v. Pond, 10 Blatchf. (U. S.) 
39; s. c, 5 Fish. Pat. Cas. 569; s. c, 2 
Pat. Off. Gaz. 392; Black t;. Thome, 10 
Blatchf. (U. S.) 66; s. u., 2 Pat. Off. 
Gaz. 388; Hammerschlag v. Scamoni, 
7 F.ed. Rep. 584; s. c, 20 Pat. Off. Gaz. 
75; Bailey etc. Washing Mach. Co. v. 
Lincoln, 4 Fish. Pat. Gaz. 379. 

Definition. — A concrete thing consist- 
ing of parts or of certain devices or 
combination of devices. Burr v. Dur- 
yee, i Wall. (U. S.) 531. See Hatch v. 
Moffitt, 15 Fed. Rep. 252. 

2. Wintermute v. Redington, i Fish. 
Pat. Cas. 239; Williams v. Rome etc. 
R. Co., 15 Blatchf. (U. S.) 200; s. c, 3 
Bann. & Ard. Pat. Cas. 413; s. c, 15 
Pat. Off. Gaz. 563; Sanford v. Merri- 
mack Hat Co., 4 Cliff. (U. S.) 404; s. c, 
10 Pat. Off. Gaz. 466; Edgarton v. Furst 
etc. Mfg. Co., 10 Biss. (U. S.) 402; 
s. c, 9 Fed. Rep. 450; s. c , 21 Pat. Off. 
Gaz. 261; \\\& V. Sawyer, 31 Fed. Rep. 
282; Burgess v. Chapman, 44 Fed. 
Rep. 427; Holliday v. Rheem, 18 Pa. 
St. 368; Union Paper Bag Mach. Co. 
V. Murphy, 97 U. S. 120. 

A patent for a combination does not 
cover the parts separately. Treadwell 
V. Bladen, 4 Wash. (U. S.) 703; s. c, i 
Robb Pat. Cas. 531; Case v. Brown, 2 
Wall. (U. S.) 320; Roberts v. Harnden, 
2 Cliff, (U. S.) 500; Metropolitan Wash- 
ing Mach. Co. V. Providence Tool Co., 
20 Wall. (U. S.) 342; McCormick v. 
Talcott, 20 How. (U. S.) 402; Eddy v. 
Dennis, 95 U. S. 560; Schumacher v. 
Cornell, 96 U. S. 249; Goss v. Cam- 



eron, 14 Fed. Rep. 576; Matterson v. 
Caine, 8 Sawy. (U. S.) 488. 

The principle is well established and 
is implied in almost every case in in- 1 
fringement of combination. 

3. U. S. Rev. Stats. § 4886. 

It has been held to cover a hotel 
register constructed to receive adver- 
tisements about its margin. Hawes v. 
Washburne, 5 Pat. Off. Gaz. 491;, 
Hawes v. Cook, 5 Pat. Off. Gaz. 493. 

Probably the coupon book held pat- 
entable belongs to this class of inven- 
tions. Munson V. Mayor etc. of N. Y., 
18 Blatchf. (U. S.) 237; s. c, 5 Bann. 
& Ard. Pat. Cas. 486; s. c, 3 Fed. Rep. 
338. 

But not a balloon with a banner hav- 
ing an advertisement attached thereto. 
Ex :parte Go\A&, 1 McArthur (U. S.) 
410; s. c, 5 Pat. Off. Gaz. 121. 

A machine need not be automatic. 
Coupe V. Weatherhead, 16 Fed. Rep. 
673; s. c, 23 Pat. Off. Gaz. 1927. 

4. Wheeler v. Clipper Mower etc. 
Co., 10 Blatchf. (U. S.) 181; s. c, 6 
Fish. Pat, Cas. i; s. c, 2 Pat. Off. Gaz. 
442. 

An added element or substantial 
change of the element, to a machine, 
makes a new machine. Bliss v. Brook- 
lyn, 10 Blatchf. (U.S.) 521 ; s. c, 6 Fish. 
Pat. Cas. 289; s. c, 3 Pat. Off. Gaz. 
269; Rheem t). Holliday, 16 Pa. St. 347; 
Hale IK Stimpson, 2 Fish. Pat. Cas. 
565; Sharp iJ. Tift, 18 Blatchf. (U. S.> 
132; s. c. 5 Bann. & Ard. Pat. Cas. 
399; s. c, 2 Fed. Rep. 687; s. c, 17 Pat. 
Off. Gaz. 1282. 

6. American Wood Paper Co. v. 
Fibre Disintegrating Co., 23 Wall. (U. 
S.) 566; Goodyear v. Providence Rub- 
ber Co., 2 Fish. Pat. Cas. 499; s. c, 2 
Cliff. (U. S.) 351; Goodyear v. Rail- 
road, 2 Wall., Jr. (C. C.) 356; s. c, I 
Fish. Pat. Cas. 626; Goodyear v. Wait> 
9 Blatchf. (U. S.) 77; United Nickel 
Co. V. Pendleton, 15 Fed. Rep. 739; 
Simpson v. Davis, 20 Blatchf. (U .S.) 
413; 12 Fed. Rep. 144. 



68 



Subjects of Invention. 



PA TENT LA W. 



Improvement. 



strued to mean the process of manufacturing.^ It is patentable 
in the sense of product only when it is new in itself,^ not merely 
when it is produced by a new process,* or new machinery.* A 
•composition of matter has been held to be a mechanical or chem- 
ical combination of ingredients.^ 

4. Improvement. — An improvement is defined as something in 
aid of the old mode which makes the old mode better.® It is 
patentable' 



A new form of an old manufacture 
■may be a new manufacture. Duff v. 
Calkins, 25 Pat. Off. Gaz. 601. 

But a new feature perceived in an 
•old substance does not make it a new 
manufacture. Ansonia Co. v. Supply 
Co., 32 Fed. Rep. Si; s. c, 42 Pat. Off. 
■Gaz. i'i68. 

1. Merrill v. Yeomans, 94 U. S. 568; 
s. c, II Pat. Oft'. Gaz. 970. 

2. Goodyear v. Providerrce Rubber 
Co., 2 Cliff. (U. S.) 351; s. c, 2 Fish. 
Pat. Cas. 499; Goodyear v. Railroad, 2 
Wall. Jr. (C. C.) 3.i;6; s. c, i Fish. Pat. 
Cas. 626; Analin Fabrik v. Hamilton, 
3 Bann. & Ard. Pat. Cas. 235; s. c, 13 
Pat. Off. Gaz. 273; Draper v. Hudson, 
■6 Fish. Pat. Cas. 327; s. "c, 3 Pat. Off. 
Gaz. 354; Young v. Lippman, 9 Blatchf. 
(U. S.) 277; s. c, 5 Fish. Pat. Cas. 230; 
«. c, 2 Pat. Off. Gaz. 249; Woodward 
V. Morrison, I Holmes (U. S.) 124; s. c, 

5 Fish. Pat. Cas. 357; United Nickel 
Co. •». Pendleton, 21 Blatchf. (U. S.) 
226; s. i;., 24 Pat. Off. Gaz. 704. 

3. American Wood Paper Co. v. 
Fibre Disintegrating Co., 23 Wall. (U. 
S.) 566; McCloskey v. Du Bois, 19 
Blatchf. (U. S.) 205; s. c, 8 Fed. Rep. 
•710; s. c, 19 Pat. Off. Gaz. 1286; Mc- 
Kloskey v. Du Bois, 20 Blatchf (U. S.) 
371; s. c, 9 Fed. Rep. 38; Badische etc. 
Fabrik xk Hamilton Mfg. Co., 3 Bann. 

6 Ard. Pat. Cas. 235; s. c, 13 Pat. Off. 
Gaz. 273; Rex v. Else, 1 Web. Pat. Cas. 
'(Eng.) 76; Wooster v. Calhoun, n 
Blatchf. (U. S.) 215; s. c, 6 Fish. Pat. 
Cas. 514. Compare Anilin v. Coch- 
rane, 16 Blatchf. (U. S.) 155; Anilin 
•v. Hjgg-tn, 15 Blatchf (U. Si). 290; 
l-.a.mh V. Hamblen, 11 Fed. Rep. 722; 
-which, however, are probably overruled 
iy Cochrane v. Badische etc. Co., 1 1 1 
U. S. 293; s. c, 27 Pat. Off. Gaz. 813. 

4. Draper f. Hudson, i Holmes (U. 
S.) 208; s. c, 6 Fish. Pat. Cas. 327; s. c, 
3 Pat. Off. Gaz. 354; Wooster v. Cal- 
houn, II Blatchf. (U. S.) 215; s. c, 6 
Fish. Pat. Cas. 514. 

5. Tyler t'. Boston, 7 Wall. (U. S.) 
327; Goodyear v. Berry, 2 Bond (U. S.) 



189; Cahill V. Brown, 3 Bann. & Ard. 
Pat. Cas. 580," Bowkerzi. Dows, 3 Bann. 
& Ard. Pat. Cas. 518; s. c, 15 Pat. Off. 
Gaz. 510; Jenkins v. Walker, i Holmes 
(U. S.) 120; Root V. Hyndraan, 6 Fish. 
Pat. Cas. 439; s. c, 4 Pat. Off. Gaz. 29; 
Rumford Chemical Works v. Lauer, 
10 Blatchf. (U. S.) 122; Woodward v. 
Morrison, i Holmes (U. S.) 124; s.c, 2 
Pat. Off. Gaz. 120. 

It is sometimes used synonymously 
with composition, compound and man- 
ufacture. Klein v. Russell, 19 Wall. 
(U. S.) 433; Goodyear v. Railroad, 2 
Wall., Jr. (C. C.) 356; s. c, I Fish. Pat. 
Cas. 626. 

6. Potter T*. Holland, 4 Blatchf (U. 
S.) 238; ». c, I Fish. Pat. Cas. 382; 
Kirby v. Dodge etc. Mfg. Co., 10 
Blatchf. (U. S.) 307; s. c, 3 Pat. Off. 
Gaz. 181; s. c, 6 Fish. Pat. Cas. 156; 
Foxwell V. Bostick, I2 W. R. 723. 

An improvement has essential refer- 
ence to a subject matter to be improved. 
It is not original, but embraces and 
either adds to or alters the original. 
Bray v. Hartshorn, i Cliff. (U.S.) 538; 
Turrill v. Illinois etc. R. Co., 3 Biss. 
(U. S.) 66; s. c, 3 Fish. Pat. Cas. 330; 
Evans v. Eaton, 3 Wash. (U. S.) 443; 
s. c, I Robb Pat. Cas. 193; Page v. 
Ferry, i Fish. Pat. Cas. 298; Aspinwall 
Mfg. Co. V. Gill, 32 Fed. Rep. 697; s.c, 
40 Pat. Off. Gaz. 1 133. 

Improvement has been defined as 
synonymous with "invention" in Reese's 
Appeal, 22 W. N. C. (Pa.) 501. This 
decision is opposed to the authority of 
the United States courts and those of 
other States. 

7. An improvement can be patented 
to the inventor of an invention which 
is the basis of the improvement. 
O'Reilly v. Morse, 15 How. (U. 8.) 62; 
Smith V. Ely. 5 McLean (U. S.) 76; 
Eagle Mfg. Co. v. Bradley, 35 Fed. Rep. 
295. 

All the improver can patent is his 
improvement. Colt t'. Massachusetts 
Arms Co., i Fish. Pat. Cas. 108; Lara- 
bee V. Cortlan, i Taney (U. S.) 180; 



69 



ActionB Concerning Patents. PA TENT LA W. Jurisdiction of State Courts. 



when the change amounts to an invention.* 

XI. Actions Concerning Patents — 1. Jurisdiction of State Courts. 
— (a) Contractual. — The State courts have exclusive juris- 
diction over questions arising out of contracts made concerning 
patent rights,* or inventions,'* where there is no other source of 
Federal jurisdiction involved.* 

ijj) Torts. — State courts have jurisdiction over questions, 
arising out of torts not involving the infringement or validity of 
the patent.^ 

2. Jurisdiction of United States Courts. — The State courts have 
no jurisdiction where any question affecting the validity or in- 



s. c, 3 Fish. Pat. Cas. 5; Conover v. 
k-oach, 4 Fish. Pat. Cas. 12; Leach v. 
Dresser, 69 Me. 129; Carsteadt v. 
United States Corset Co., 13 Blatchf. 
(U. S.) 371; s. u., 2 Bann. & Ard. Pat. 
Cas. 331; s. c, 10 Pat. Off. Gaz. 3; 
Plimpton V. Winslow, 3 Fed. Rep. 333. 
But he patents it with reference to all 
machines. Burke v. Partridge, 58 1)1. 
H. 349. 

1. Hall V. Wiles, 2 Blatchf. (U. S.) 
194; Buck V. Hermance, i Blatchf. (U. 
S.) 398; Smith V. Pearce, 2 McLean (U. 
S.) 176; s. c, 2 Robb Pat. Cas. 13; 
Williams v. Barker, 2 Fed. Rep. 649; 
s. c, 18 Pat. Off. Gaz. 242; Sinclair v. 
Backus, 4 Fed. Rep. 539; s. c, 5 Bann. 

6 Ard. Pat. Cas. 81; s. c, 17 Pat. Off. 
Gaz. 1503. . 

2. Goodyear v. Day, i Blatchf. (U. 
S.) 565; Blanchard v. Sprague, 1 Cliff. 
(U. S.) 288; Wilson -v. Sandford, 10 
How. (U. S.) 99; Goodyear v. Union 
India Rubber Co., 4 Blatchf. (U. S.) 
63; Magic Ruffle Co. v. Elm City Co., 
13 Blatchf. (U. S.) 151; s. c, 8 Pat. Off. 
Gaz. 773; s. c, 2 Bann. & Ard. Fat. Cas. 
152; Billings V. Ames, 32 Mo. 265; Al- 
bright V. Teas, 106 U. S. 613; s. c, 23 
Pat. Off. Gaz. 829; Hartell v. Tilgh- 
man, 99 U. S. 547; Adams v. Meyrose, 

7 Fed. Rep. 208; s. c, 2 McCrary (U. 
S.) 360; Ingalls V. Tice, 14 Fed. Rep. 
352; Smith V. Standard Mach. Co., 22 
Pat. Off. Gaz. 587. 

3. Nesmith v. Calvert, i Woodb. & M. 
(U. S.) 34; s. c, 2 Robb Pat. Cas. 311; 
Hammer v. Barnes, 26 How. Pr. (N. 
Y.) 174; Brooks v. Stolley, 3 McLean 
(U. S.) 523; s. c, 2 Robb Pat. Cas. 281. 

4. Fraudulent representations in the 
sale of a patent and to inquire whether 
the patent was for the purpose repre- 
sented. Hunt V. Hoover, 24 Iowa 231. 

Controversies of the following char- 
acter, where no other sources of Federal 
jurisdiction existed, have been specific- 
ally decided not to be within the jurisdic- 



tion of the United States courts : A. 
suit thereby to recover royalty on a. 
license. Hartell v. Tilghman, 99 U. 
S. 547; Ingalls •«. Tice, 14 Fed. Rep. 352;. 
Albright V. Teas, 106 U. S. 613; s. c.,. 
23 Pat. Off. Gaz. 829. 

A bill in equity to cancel the license, 
on account of the alleged invalidity of 
the; platent, the subject matter of the 
license. IS^eserole v. Union Paper 
Collar Co., 3 Fish. Pat. Cas. 483; s. c.,, 
6 Blatchf. (U. S.) 356. 

Bill in equity by a licensee to enjoin 
a patentee from violating his agreement 
not to use the invented device in a cer- 
tain manner. Hill v. Whitcomb, 1 
Holmes (U. S.) 317; s. c, i Bann. & 
Ard. Pat. Cas. 34; s. c, 5 Pat. Off. Gaz. 

430- ^ 

Bill for specific performance of a 
contract to assign a patent. Burr r. 
Gregory, 2 Paine (U. S.) 426; Perry v, 
Littlefield, 17 Blatchf. (U. S.) 272; s.c.,. 
4 Bann. & Ard. Pat. Cas. 624. 

A creditor's bill to reach a ' patent 
award by the debtor. Ryan v. Lee, la 
Fed. Rep. 917. 

A bill to determine the meaning of a 
license or to ascertain whether defend- 
ant has done an act upon which a right 
to a reduction of royalty arises. Flor- 
ence Sewing Machine Co. v. Singer 
Mfg. Co., 4 Fish. Pat. Cas. 329; s. c, & 
Blatchf. (U. S.) 113. 

Whether the jurisdiction is in the 
circuit or State courts is not necessarily 
determined by the pleadings. Where 
it appears at trial that there is no fed- 
eral question involved, the circuit court 
may dismiss a bill containing sufficient 
allegations to authorize the court to- 
take cognizance. Blanchard w. Sprague,. 
I Cliff. (U. S.) 288. 

6. Fraudulent representations in the 
sale of a patent and to inquire whether 
the patent was for the purpose repre- 
sented. Hunt f. Hoover, 24 Iowa. 
231- 



70 



Astions Concerning Patents. PA TENT LA W. Jurisdiction of U. S. Conits. 

_ fringement of letters patent' is directly concerned.* 

(a) Generally ; Parties. — The plaintiff in an action for in- 
fringement must be the one who holds the legal title,* either 
as patentee,* mortgagee," 



1. Parsons zi. Barnard, 7 Johns. (N. woman by herself where the State laws 



Y.) 144; Dudley v. Mayhew, 3 N. Y. 
9; Tomlinson v. Battel, 4 Abb. Pr. (N. 
Y.) 266; Slemmer's Appeal, 58 Pa. St. 
155; Kendal v. Winsor, 6 R. I. 453. 

The defendant cannot agree for a 
valuable consideration, to waive an ob- 
jection to want of jurisdiction. Dudley 
V. Mayhew, 3 N. Y. 9. 

Nor will State courts enjoin United 
States courts while proceeding in an 
infringement suit. Kendall v, Winsor, 
6 R. L 453. 

2. They may decide upon the validity 
of a patent where the question arises 
collaterally. Slemmer's Appeal, 58 
Pa. St. 155; Rich v. Atwater, 16 Conn. 
409; Lindsay v. Roraback, 4 Jones Eq. 
(N. Car.) 124; Sherman v. Champlain 
Transp. Co., 31 Vt. 162. 

3. Gayer v. Wilder, 10 How. (U. 
S.) 477; Suydam v. Day, 2 Blatchf. 
(U. S.) 20; Sanford v. Messer, 5 
Fish. Pat. Cas. 411; s. c, i Holmes 
(U. S.) 149; s. c, 2 Pat. Off. Gaz. 
470; Blanchard v, Eldridge, i Wall. 
Jr. (C. C.) 337; s. c, 2 Robb Pat. 
Cas. 737; Graham v. McCormick, 20 
Biss. (U. S.) 39; s. c, II Fed. Rep. 859; 
s. c, 5 Bann. & Ard. Pat. Cas. 244; s. 
c, 21 Pat. Off. Gaz. 1533; Graham v. 
Geneva etc. Mfg. Co., 11 Fed. Rep. 
138; s. c, 21 Pat. Off. Gaz. 1536; North 
V. Kershaw, 4 Blatchf. (U. S.) 70; Sar- 
gent V, Yale Lock Mfg. Co., 17 Blatchf. 
(U. S.) 249; s. c, 4 Bann. & Ard. Pat. 
Cas. 579; s. c, 17 Pat. Off. Gaz. 105; 
Loercher v. Crandall, 11 Fed. Rep. 
872; s. c, 21 Pat. Off. Gaz. 863; Gold- 
smith V. American Paper Collar Co., 
18 Blatchf. (U. S.) 82; s. c, 5 Bann. & 
Ard. Pat. Cas. 300; s. ^., 18 Pat. Off. 
Gaz. 192; Elm City Co. v. Wooster, 6 
Fish. Pat. Cas. 452; s. c, 4 Pat. Off. 
Gaz. 83; Yale Lock Mfg. Co. v. Sar- 
gent, 117 U. S. 536. 

A trustee may maintain a bill in his 
own name, and in the absence of objec- 
tion without joining cestui que trust. 
Campbell v. James, 17 Blatchf (U. S.) 
,42; s. c, 4 Bann. & Ard. Pat. Cas. 456; 
s. c, 18 Pat. Off. Gaz. 979. Compare 
Northwestern Fire Extinguisher Co. 
V. Philadelphia Fire Extinguisher Co., 
1 Bann. & Ard. Pat. Cas. 177; s. c, 6 
Pat. Off. Gaz. 34. And a married 



permit her to own property as a feme 
sole. Lorrilard v. Standard Oil Co., 5 
Bann. & Ard. Pat. Cas. 432; s. c, 2 
Fed. Rep. 902; s. u., 17 Pat. Off. Gaz. 
902; Fetter v. Newhall, 17 Fed. Rep. 
841; s. c, 25 Pat. Off. Gaz. 502. 

All the joint owners of the patent 
should join. Ambler v. Chouteau, 3 
Cent. L. J. 333. 

But not one who merely has an in- 
terest in the profits. Goodyear v. New 
Jersey etc. R. Co., i Fish. Pat. Cas. 626; 
s. c, I Wall Jr. (C. C.) 356. 

4. Husse^' V. Whitelej', 2 Fish. Pat. 
Cas. 120; s. c, I Bond (U. S.)407; Still 
V. Reading, 9 Fed. Rep. 40; s. c, 20 Pat. 
Off. Gaz. 1025. 

A patentee who has parted with his 
title to the patent, can maintain an ac- 
tion at law for damages for past in- 
fringement occurring during the time 
he owned the patent. Moore v. Marsh, 
7 Wall. (U. S.) 515. 

6. Waterman v. McKenzie, 54 Pat. 
Off. Gaz. 1562. 

A person who has no legal title, but 
only a collateral interest, need not be 
made a party. Goodyear v. New Jer- 
sey etc. R. Co., I Fish. Pat. Cas. 626; s. 
c, 2 Wall. Jr. (C. C.) 356; Morse v. 
O'Reilly, 6 Pa. L.J. 501; Graham v. 
Geneva etc. Mfg. Co.. 11 Fed. Rep. 138; 
21 Pat. Off. Gaz. 1536; Hodge v. North 
Missouri R. Co., i Dill. (U. S.) 104; s. 
c, 4 Fish. Pat. Cas. 161. 

LicenseeB. — Consequently licensees 
cannot in their own name sue strangers 
who infringe. Littlefield v. Perry, 21 
Wall. (U. S.) 205; Hill V. Whitcomb, r 
Holmes (U. S.) 317; s. c, i Bann. & 
Ard. Pat. Cas. 34; s. c, 5 Pat. Off. 
Gaz. 430; Nelson v. McMann, 16 
Blatchf. (U. S.) 139; s. c, 4 Bann. & 
Ard. Pat. Cas. 203; s. c, 16 Pat. Off. 
Gaz. 761; Union Paper Bag Co. v. 
Nixon, 105 U.S. 766; s. c, 21 Pat. Off. 
Gaz. 1271;; Hayward v. Andrews, 106 
U. 8. 672; s. c, 23 Pat. Off. Gaz. 533; 
Wilson V. Chickering, 14 Fed. Rep. 
917; s. c, 23 Pat. Off. Gaz. 1730; 
Gamewell Fire Alarm Tel. Co. v. 
Brooklyn, 14 Fed. Rep. 255; s. c, 22 
Pat. Off. Gaz. 1978; Ingalls v. Tice, 14 
Fed. Rep. 352; Ingalls v. Tice, 22 Pat. 
Off. Gaz, 2160; Suydam v. Day, z 



71 



Actiona Concerning Patents. PA TENT LA W. Jurisdiction of tT. S. Courts, 
grantee,! or assignee,* though there are instances when licensees* 



Blatchf. (U. S.) 20; Gayler v. Wilder, 
10 How. (U. S.) 477; Waterman v. 
McKenzie, 54 Pat. Off. Gaz. 1562; 
Cottle V. Kerementz, 25 Fed. Rep. 494. 
Compare Brammer v. Jones, 3 Fish. 
Pat. Cas. 340; s. c, 3 Bond (U. S.) 100. 

But they can sue in their own names 
their licensor for infringement. Lit- 
tlefield v. Perry, 21 Wall. (U. S.) 205 ; 
s. c, I Pat. Off. Gaz. 964 ; Perry v, 
Littlefield, 17 Blatchf. (U. S.) 272; s. 
c, 2 Fed. Rep. 464; s. c, 4 Bann. & 
Ard. Pat. Cas. 624; s. c, 18 Pat. Off. 
Gaz. 571 ; Stanley Rule etc. Co. v. 
Bailey, 14 Blatchf. (U. S.) 510; s. c, 3 
Bann. & Ard. Pat. Cas. 297. 

And against strangers in the name 
of the licensor (at law). Goodyear v. 
McBurney, 3 Blatchf. (U. S.) 32; 
Goodyear v. Bishop, 4 Blatchf. (U. S.) 
438 ; s. c, 2 Fish. Pat. Cas. 96. 

And where they have authority to 
bring suit in the name of the licensor 
or his assigns they need not obtain his 
consent for every suit. Bassett v. 
Malone, 11 Fed. Rep. 801. 

The patentee may claim indemnity 
for costs. Goodyear v. Bishop, 4 
Blatchf. (U. S.) 438; s. c, 2 Fish. Pat. 
Cas. 96. 

He cannot consent to a dismissal of 
the suit. Goodyear v. Bishop, 4 
Blatch-f. (U. S.) 438; ». c, 2 Fi^li. Pat. 
Cas. 96. 

The administrator of a licensee hav- 
ing a personal license only, cannot sue 
in his grantor's name, for damages for 
infringement. Oliver v, Rumford 
Chemical Works, 109 U. S. 75. 

Equitable and Legal Owner, — In an 
equity suit, an equitable owner and 
one holding the legal title shovild be 
joined. Stimpson v. Rogers, 4 Blatchf. 
(U.S.) 333; Aiken x\ Dolan, 3 Fish. 
Pat. Cas. 197 ; Dibble v. Augur, 7 
Blatch. (U. S.) 86. 

But at law the legal owner only. 
Park V. Little, 3 Wash. (U. S.) 196; s. 
c, I Robb Pat. Cas. 17 ; Blanchard v. 
Eldridge, I Wall. Jr. (C. C.) 337; s. u., 
2 Robb Pat. Cas. 737. 

1. Chambers v. Smith, 5 Fish. Pat. 
Cas. 12; s. c, 7 Phila. (Pa.) 575; Ol- 
cott V. Hawkins, 2 Am. L. J. N. S. 
317; Wilson V. Rousseau, 4 How. (U. 
S.) 646. 

Grantee and patentee may join. 
Woodworth v. Wilson, 4 How. (U. 
S.) 712; s. c, 2 Robb Pat. Cas. 473; 
Ogle w. Edge, 4 Wash. (U. S.) 584; s. 



72 



c, I Robb Pat. Cas. 516; Bach v. 
Cobb, 9 L. R. 545. 

A grantee who had reserved' for 
himself by the patentee certain rights 
in part of territory granted, need not 
join the patentee in suing for an in- 
fringement in a State not subject to 
the reservation. Hobble v. Smith, 27 
Fed. Rep. 656. 

2. Henry v. Francestown etc. Stove 
Co., 2 Bann. & Ard. Pat. Cas. 221 ; s. 
c, 9 Pat. Off. Gaz. 408 ; Hamilton v. 
Rollins, 5 Dill. (U. S.) 495; s. c, 3 
Bann. & Ard. Pat. Cas. 157; Jenkins 
V. Greenwald, i Bond (U. S.) 126; s. 
c, 2 Fish. Pat. Cas. 37 , Shaw v. Col- 
well Lead Co., u Fed. Rep. 711; 
Campbell v. James, 2 Fed. Rep. 338; 
s. c, 5 Bann. & Ard. Pat. Cas. 354; s. 
c, 18 Blatchf. (U. S.) 921 ; s. c, 18 Pat. 
Off. Gaz. mi; Herbert v. Adams, 4 
Mason (U. S.) 15; s. c, i Robb Pat. 
Cas. 505; Suydam v. Day, 2 Blatchf. 
(U. S.) 20; Tyler t;. Tuel, 6 Cranch 
(U. S.) 324; s. c, I Robb Pat. Cas. 14. 
Assignees as tenants in common 
may join. Stein v. Goddard, i McAll. 
(U. S.) 82. See Whittemore v. Cutter, 
I Gall. (U. S.) 429; s. c, I Robb Pat. 
Cas. 28. 

Assignor and assignee may join in 
a bill in equity where infringement 
occurred before assignment. Anthony 
V. Carroll, 9 Pat. Off. Gaz. 199; s. c, 2 
Bann & Ard. Pat. Cas. 195. 

And in a suit against a former li- 
censee whose license has been for- 
feited, the assignor who granted the 
license is a necessary party. Wood- 
worth V. Cook, 2 Blatchf. (U. S.) 151. 
An assignee of a patent with the as- 
signment of the right to damages for 
past infringement may maintain an 
action at law in his own name. Spring 
V. Domestic Sewing Mach. Co., 13 Fed. 
Rep. 446; s. c, 22 Pat. Off. Gaz. 1445. 

3. Goodyear v. Railroad, i Fish. 
Pat. Cas. 626; s. u., 2 Wall. Jr. (C. C.) 
356; Goodyear v. Allyn, 3 Fish. Pat. 
Cas. 374; s. c, 6 Blatchf. (U. S.) 33; 
Dorsey etc. Rake Co. v. Bradley Mfg. ■ 
Co., 12 Blatchf. (U. S.) 202; s. c, i 
Bann. & Ard. Pat, Cas. 330. 

But ordinarily a licensee has not 
such an interest as compells his join- 
ing. Potter V. Wilson, 2 Fish. Pat. 
Cas. 102 ; Grover etc. Sewing Mach. 
Co. -£1. Sloat, 2 Fish. Pat. Cas. 112; 
Nellis V. Pennock Mfg. Co., 13 Fed. 
Rep. 451 ; s. c, 22 Pat. Off. Gaz. 1131. 



Actions Concerning Patents. PA TENT LA W. Jurisdiction of TJ. S. Conrts. 

and others* are proper parties to be joined, especially in equity. 

{b) Action at Law ; Declaration. — The proper legal action 
for the infringement of a patent is an action on the case.^ The 
declaration must show title in plaintiff,* a lawful issue and de- 
livery of the patent,* the nature of the invention^ and aver an 
infringement by the defendant ;® and if the patent has been 
extended, such extension must be averred.' 



But an exclusive licensee should be. 
Hammond v. Hunt, 4 Bann. & Ard. 
Pat. Cas. III. 

And in certain cases should be the 
sole pa,rty. Herman -c. Herman, 29 
Fed. Rep. 92. 

1. Feraonal RepresentatiTes. — Until an 
assignment is made, all suits must be 
brought in the name of the personal 
Tepresentative of the deceased owner. 
Hodge V. North Missouri R. Co., i 
Dill. (U. S.) 104; s. c, 4 Fish. Pat. 
Cas. 161 ; Northwestern Fire Extin- 
guisher Co. V. Philadelphia Fire Ex- 
tinguisher Co., I Bann & Ard. Pat. 
Cas. 177; s. c, 6 Pat. Off. Gaz. 34. 

But where the equitable interest 
passed out of the patentee during his 
lifetime, the administrator is trustee 
for the equitable owner, and the heirs 
are not necessary parties. Northwest- 
■ern Fire Extinguisher Co. v. Philadel- 
phia Fire Extinguisher Co., i Bann. 
& Ard. Pat. Cas. 177 ; s. c, 6 Pat. Off. 
<Jaz. 34. 

A foreign administrator can sue 
-without taking out letters of adminis- 
tration in the State where suit is 
"brought. Smith v. Mercer, 5 ■ Pa. L. 
J., 529; Goodyear v. HuUihen, 2 
Hughes (U. S.) 492; s. c, 3 Fish. Pat. 
Cas. 251. 

The executor in whom the legal 
title is only necessary. Goodyear v. 
Providence Rubber Co., 2 Fish. Pat. 
Cas. 499. 

A holder of the equitable title to a 
patent may maintain a bill in equity 
against a party having the legal title. 
Ruggles w. Eddy, 10 Blatchf. (U. S.) 
52 ; s. c, 5 Fish. Pat. Cas. 583. 

Joint Owners. — In equity one joint 
■owner of a patent cannot sue the 
other. Clum v. Brewer, 2 Curt. (U. 
S.) 506. 

Apparently otherwise at law. Pitts 
V. Hall, 3 Blatchf. (U. S.) 201. 

Partners. — One partner cannot file a 
bill without joining his co-partners for 
infringement of a firm patent. Amb- 
ler V. Chouteau, 3 Cent. L. J. 333. 

a. U. S. Rev. Stat., 5 4919; Stein v. 



Goddard, McAll. (U. S.) 82; Byam v. 
Ballard, i Curt. (U. S.) 100. 

3. Gray f. James, i Pet. (C. C.) 476; 
s. c, I Robb Pat. Cas. 140. 

4. Cutting V. Myers, 4 Wash. (U. S.) 
2io; s. c, : Robb Pat. Cas. 159. 

It is enough to set forth the grant in 
substance. Wilder v, McCormick, 2 
Blatchf. (U. S.) 31. 

But a variance is fatal if the grant is 
professed to be set forth according to 
its tenor. Tryon v. White, Pet. (C. 
C.) 96. 

Novelty and Utility. — The novelty 
and utility of the invention must be set 
up. Wilder v. McCormick, 2 Blatchf. 
(U. S.) 31. 

5. Peterson v. Wooden, 3 McLean 
(U. S.) 248; s. c, I Robb Pat. Cas. 
116. 

Either the letters patent can be an- 
nexed to the declaration or a profert 
made. Pitts v. Whitman, 2 Story (U. 
S.) 609; s. c, 2 Robb Pat. Cas." 189; 
Wilder v. McCormick, 2 Blatchf. (U. 
S.) 31. 

6. Cutting V. Myers, 4 Wash. (U. 
S.) 220; s. c, I Robb Pat. Cas. 159; 
Seymour v. Osborne, 11 Wall. (U. S.) 
516. 

The plaintiff is confined to the times 
within which he declares the infringe- 
ment to have taken place. Eastman v. 
Bodfish, I Story (U. S.) 528; s. c, 2 
Robb Pat. Cas. 72. 

Distinct infringements of one patent 
may be set up in one count. Wilder v. 
McCormick, 2 Blatchf. (U. S.) 31. 

And infringements of a generic pat- 
ent and an improvement when both are 
held by the same party, must be 
brought together. Case v. Redfield, 4 
McLean (U. S.) 526; s. c, 2 Robb Pat. 
Cas. 741. 

7. Phelps V. Comstock, 4 McLean 
(U.S.) 353. . 

Where plaintiff wishes to recover 
under both original and extended pat- 
ents, he must file distinct and independ- 
ent counts for each patent. Eastman 
V. Bpdfish, I Story (U. S.) 528; a. u., 2 
Robb Pat. Cas. 72. 



73 



Actiens Concerning Patents. FA TENT LA W. JuriBdiction of T7. S. Courts. 



{c) Suit in Equity. — (i) Foundation. — The jurisdiction of a 
court of equity in patent cases to grant an injunction is founded 
on the irreparable injury which would otherwise be caused the 
complainant, and the desire of the court to prevent a multiplicity 
of suits.* This power has been confirmed by statute.* 

(2) When Court of Equity Will Take Jurisdiction. — A court of 
equity will take jurisdiction in an action for the infringement of 
a patent only when the patent has not expired prior to the com- 
mencement of the action,^ and will not expire before equitable 
relief could be obtained,* unless there is some other equity out- 



Defects Cured By Verdict. — A breach 
too general in not setting up the num- 
ber of machines used bj' defendant. 
Gray ?). James, Pet. (C. C.) 476; 6. c, 
I Robb Pat. Cas. 140. 

Any uncertainty in the title where 
there is sufficient certainty to enable 
the court to give judgment. Gray v. 
James, i Pet. (C. C.) 476; s. c, i Robb 
Pat. Cas. 140; Cutting v. Myers, 4 
Wash. (U. S.) 220; s. c, I Robb Pat. 
Cas. 159. 

1. Foster's Federal Practice, § 216; 
Daniel Chan. Prac. (5 Am. ed.) 1642- 
1648; Brooks V. Miller, 28 Fed. Rep. 
615; Brick V. Staten Island R. Co., 25 
Fed. Rep. 553. 

This power is of ancient use in 
equity. Fosters Fed. Prac, § 216; 
Hogg V. Kirby, 8 Ves. (Eng.) 215; 
Wilkins v. Aikin, 17 Ves. (Eng.) 427. 

2. "The several courts vested with 
jurisdiction of cases arising under the 
patent laws shall have power to grant 
injunctions according to the course and 
principles of a court of equity, to pre- 
vent the violation of any right secured 
by patent, upon such terms as the court 
may deem reasonable." U. S. Rev. 
Stats., §4921; prior Stat. July 4, 1836, 
§ 16; 5 Stat, at Large 123. 

Right of Patentee to Injunction. — 
The right of a patentee to enjoin an in- 
fringement is incontestable. Birdsell -v. 
Shalioll, 112 U. S.487; Bragg w. Stock- 
ton, 27 Fed. Rep. 509. 

3. Root V. Lake Shore etc. R. Co., 
105 U. S. 211; s. c, 21 Pat. Off. Gaz. 
1112; Roemer v. Neumann, 26 Fed. 
Rep. 332; Lord v. Whitehead etc. 
Mach. Co., 24 Fed. Rep. 801; Vaughan 
V. East Tennessee etc.R. Co., i Flipp. 
(U. S.) 621 ; Sayles v. Richmond etc. R. 
Co., 3 Hughes (U. S.) 172; s. c, 4 
Bann. & Ard. Pat. Cas. 239; s. c, 16 
Pat. OS. Gaz. 43. 

And the same rule holds where all 
the necessarj' parties to the action are 
not brought in until after the expiration 



of the patent. Hewitt v. Pennsylvania 
Steel Co., 24 Fed. Rep. 367. 

The principle is that, as the jurisdic- 
tion of equity rests on the prevention of 
an irreparable injury arising from the 
infringement and tfie prevention of a 
multiplicity, of suits, there is an ade- 
quate remedy at law when the patent 
has expired. 

4. Gottfried v. Moerlein, 14 Fed. Rep. 
170; Burdell v. Comstock, 15 Fed. Rep, 
395; Davis v. Smith, 19 Fed. Rep. 823; 
Betts V. Gallais, 10 L. R. Eq. (Eng.j. 
392; American Cable R. Co. v. Chi- 
cago City R. Co., 41 Fed. Rep. 522;. 
Mershon -v. J. F. Pease Furnace Co., 24 
Fed. Rep. 741 ; McMillin v. St. Louis, 
etc. Transp. Co., 18 Fed. Rep. 260. 

Where there is time for equitable re- 
lief to be obtained, the court will take 
jurisdiction. Lake Shore etc. R. Co.. 
V. National etc. Shoe Co., no U. S. 
229; s. I,., 26 Pat. Off. Gaz. 915. The 
patent expired four months after the 
bill was filed, and a shorter time in 
Consolidated Safety Valve Co. v. 
Crosby etc. Valve Co., 113 U. S. 157. 

The circuit courts have entertained 
suits where the patent will expire in 
three weeks after bill filed. Adams v. 
Bridgewater Iron Co., 26 Fed. Rep. 
324; s. c, 34 Pat. Ofl". Gaz. 1045; ^''' 
tie V. De Graff, 30 Fed. Rep. 6S9. And! 
six weeks. Dick v. Struthers, 25 Fed. 
Rep. 103. See also Singer Mfg. Co. f. 
Wilson Sewing Mach. Co., 38 Fed.. 
Rep. i;86; New York Sugar Co. v. Pe- 
oria Sugar Co., 21 Fed. Rep. 878; Kit- 
tle V. Rogers, 33 Fed. Rep. 49. 

And an amended bill to cover a re- 
issue, has been allowed to be filed, al- 
though the patent alleged to be in- 
fringed by the first bill had expired. 
Reayi'. Raynor, 19 Fed. Rep. 30S, 311. 

The right to come into equity when 
the patent is about to expire, exists 
where "the court of equity could, by 
the exercise of its jurisdiction in the 
ordinary course of procedure, give ta 



ictione Concenung Patents. PA TENT LA W. Jurisdiction of U. S. Court*, 
side of mere infringement to be adjusted between the parties.' 



the plaintiff the most moderate relief 
which he prays or would be entitled to, 
on his allegations." Marshon v. J. F. 
Pease Furnace Co., 24 Fed. Rep. 741 . 

Where the relief could have been ob- 
tained, the failure to obtain or ask for 
it does not oust the jurisdiction of 
equity. Toledo Mower etc. Co. v. 
Johnston Harvester Co., 24 Fed. Rep. 
739; Adams v, Bridgewater Iron Co., 
26 Eed. Rep. 324. 

In such cases the court will retain 
the suit to administer any relief found 
necessary. Gottfried v. Moerlein, 14 
Fed. Rep. 170. Compare, however, 
American Cable R. Co. v. Chicago 
City R. Co., 41 Fed. Rep. 522; Avery 
V. Wilson, 20 Fed. Rep. 856. 

It does not exist where the coming 
into a court of equity appears to be a 
pretense to avoid coming into a court 
.of law. Mershon ii. J. F. Pease Fur- 
nace Co., 24 Fed. Rep. 741 ; Adams v. 
Bridgewater Iron Co., 26 Fed. Rep. 324. 

For instance, where a suit was 
brought five days prior to the expira- 
tion of patent, and an injunction was 
asked for, which could not be obtained 
■ and was not desired for the purpose of 
giving jurisdiction. Burdell v. Com- 
stock, 15 Fed. Rep. 395. Or where, al- 
though the patent expired fourteen 
days after the commencement of the 
suit, no injunction pendente lite had 
been asked for, and the patent would 
have expired before return day of the 
process and before the complainant 
would have been entitled to a default. 
American Cable R. Co. v. Chicago 
City R. Co., 41 Fed. Rep. 522. 

An assignee of the right of damages, 
cannot sue in equity merely because he 
cannot sue in his own name at law. 
Haywood v. Andrews, 106 U. S. 672. 

1. While the general rule is, that where 
an injunction could not be granted, 
equity will not take jurisdiction, 
grounds of equitable relief may arise 
. other than in this, as where the title of 
the complainant is equitable merely, or 
equitable interposition is necessary on 
account of the impediments which pre- 
vent a resort to remedies purely legal; 
and such an equity may arise out of and 
inhere in the nature of the account it- 
self, springing from special and peculiar 
circumstances which disable the pat- 
entee from a recovery at law altogether, 
or render his remedy in a legal tribunal 
difficult, inadequate and incomplete; 



and as such cases cannot be defined 
more exactly, each must rest upon its 
own particular circumstances, as fur- 
nishing a clear and satisfactory ground 
of exception from the general rule. 
Root V. Lake Shore etc. R. Co., 105 U. S. 
211; s. c, 21 Pat. Off. Gaz. 1112. A bill 
will not be merely for an account. 
Root V. Lake Shore etc. R. Co., 105 U. 
S. 211; o. c, 21 Pat. Oft". Gaz. 11 12; 
Vaughan -v. East Tennessee etc. R. Co.> 
I Fish. (U. S.) 621; s. c, II Pat. Off. 
Gaz. 789; s. c, 2 Bann. & Ard. Pat. Cas. 
537; IJavis n. Smith, 19 Fed. Rep. 823. 
An intricate account will not give juris- 
diction. Lord V. Whitehead, etc. Ma- 
chine Co., 24 Fed. Rep. 801; Roemer 
V. Neumann, 26 Fed. Rep. 332. But 
where a discovery and an account were 
both prayed for, and the account was 
such as could not readily be taken be- 
fore a jury, equity will take jurisdiction. 
Vaughan v. East Tenn. etc. R. Co., 
I Flipp. (U. S.) 6,21 ; 6. c, 11 Pat. Off. 
Gaz. 789; s. c, 2 Bann. & Ard. Pat. Cas. 
537; McKay v. Smith, 24 Fed. Rep. 
295. See Kirk v. DuBois, 28 Fed. Rep. 
460. But the mere fact that the de- 
fendants were concealing the facts nec- 
essary to obtain an account. Lord v. 
Whitehead Mach. Co., 24 Fed. Rep. 
891. 

Where the defendants were advised 
of the claim that their manufacture was. 
an infringement, and a suit was pend- 
ing for such infringement, the}' were 
enjoined after the expiration of the pat- 
ent from selling the infringing articles 
made during its term. New York Belt- 
ing etc. Co. V. Macgowan, 28 Fed. Rep. 
14. And the fact that the defendants had 
ceased their infringement at the request 
of the complainant, does not prevent 
an injunction from going out. Facer v. 
Midvale Steel Works, 38 Fed. Rep. 231. 

In the cases prior to Root i-. Lake 
Shore etc. R. Co., 105 U. S. 211, s. c, 21 
Pat. Off. Gaz. 1 1 12, it was frequently 
stated that the infringer was a trustee 
de son tort of the profits he had made, 
and that an action in equity to compel 
him to account could be had on that 
ground onl^i. Nevins v. Johnson, j 
Blatchf (U: S.) 80; Howes v. Nute, 4 
Cliff (U. S.) 173; s. c, 4 Fish. Pat. Cas. 
263; Gordon v. Anthony, 16 Pat. Off. 
Gaz. 1135; s. 1-., 16 Blatchf. (U. S.) 234;. 
s. c, 4 Bann. & Ard. Pat. Cas. 246; 
McComb V. Beard, 3 Pat. Off. Gaz. 33; 
s. c, 6 Fish. Pat. Cas. 254; s. c, la 



75 



Actions Concendng Patents. PA TENT LA W. Jurisdiction of U. S. Court*. 

{d) Bill in Equity. — (i) Certainty. — The bill to enjoin the 
infringement of a patent must contain an allegation that the com- 
plainant, or the person through whom he claims, was the inventor 
or discoverer of the thing or process patented } but it need not 
trace the title beyond averring that it is in himself;* it should state 
the number and date of the letters patent, but need not allege 
the character of the improvement except in general terms,^ and is 
only obliged to charge infringement generally.* He must set 
out that the defendant is an inhabitant of the district in which 
suit is brought,^ except where the jurisdiction depends upon the 
diversity of citizenship.® 

(2) Multifariousness. — The subject-matter of a bill is not made 
multifarious by joining two patents which are infringed by one 
device of the respondent j' nor by joining a prayer for an adjudi- 



Blatchf. (U. S.) 550; Sayles v. Dubu- 
que etc. R. Co., 5' bill. (U. S.) 561; s. 
c, 3 Bann. & Ard. Pat. Cas. 219; Steph- 
ens V. Kansas Pacific R. Co., 5 Dill. 
(U. S.) 486; Perry v. Corning, 6 
Blatchf. (U. S.) 134; Dibbles. Augur, 
7 Blatchf. (U. S.) 86. 

1. Foster's Fed. Prac, § 377; Sullivan 
-v. Redfield; : Paine (U. S.) 441. 

2. Nourse v. Allen, 4 Blatchf. (U. S.) 
376; s. c, 3 Fish. Pat. Cas. 63; Clement 
Mfg. Co. V. Upton etc. Co., 40 Fed. 
Rep. 471; Edison Electric Light Co. v. 
Consolidated Electric Light Co., 25 
Ted. Rep. 719. 

3. Haven v. Brown, 6 Fish. Pat. Cas. 
413; Turrell f. Caminerer, 3 Fish. Pat. 
Cas. 462; Poppenhausen v. Falke, 2 
Fish. Pat. Cas. 181; s. c, 5 Blatchf. (U. 
S.) 493. 

Where a proferl is made, the title of 
the device need only be recited. Mc- 
Millin V. St. Louis etc. Transp. Co., 18 
Ped. Rep. 260; Foster's Fed. Prac, § 77. 
Por form of profert, see Wilder v. Mc- 
Cormick, 2 Blatchf. (U. S.) 31. 

A bill identifying an invention only 
by its title, without the specifications 
being annexed, does not show sufficient 
certainty as to what the invention is. 
Wise V. Grand Ave. R. Co., 33 Fed. 
Rep. 277. 

4. Turrell v. Cammerer, 3 Fish. Pat. 
Cas. 462; Poppenhausen v. Falke, 5 
Blatchf (U. S.) 493; s. c, 2 Fish. Pat. 
Cas. 181; McMillin v. St.' Louis etc. 
Transp. Co., 18 Fed. Rep. 260. 

The bill need not specify the claims 
infringed even though the defendant 
is only infringing some of the them. 
Thatcher Heating Co. v. Carbon Stove 
Co., 4 Bann. & Ard. Pat. Cas. 68; s. c, 
15 Pat. Off. Gaz. 1051. 



5. Foster's Fed. Prac, § 77. 

6. Foster's Fed. Prac, § 77. 

7. Gamewell etc. Tel. Co. v. Chilli- 
cothe, 7 Fed. Rep. 351; Kellehert'. Dar- 
ling, 3 Bann. & Ard. Pat. Cas. 4 38; s. c, 
4 Cliif. (U. S.) 424; s. i;., 14 Pat. Off. 
Gaz. 673; Nellis v. Pennock Mfg. Co., 
13 Fed. Rep. 451; s. c, 22 Pat. Off. 
Gaz. 1131; Seymour v. Osborne, 3 
Fish. Pat. Cas. i;5i;; Nourse f. Allen, 
4 Blatchf. (U. S.) 376; s. c, 3 Fish. Pat. • 
Cas. 63; Herman Pat. Mfg. Co. v. 
Brooklyn City R. Co., 15 Blatchf. (U. 
S.) 444; s. c, 4 Bann. & Ard. Pat. Cas. 
86; Gillespie v. Cummings, 3 Sawj'. (U. 
S.) 259; s. c, I Bann. & Ard. Pat. Cas. 
5S7;Case-r'. Redfield, 4 McLean (U. 
S.) 526. But complainant must aver 
that the defendant's device infringes all 
his patents. Nellis v. McLenahan, 6 
Fish. Pat. Cas. 286. 

Where two assignments, each assign- 
ing a patent, embrace the territory in 
which there is an infringement of both, 
in a single device, one bill may be ex- 
hibited. Gillespie v. Cummings, 3 
Sawy. (U. S.) 259; s. c, I Bann. & 
Ard. Pat. Cas. 587. 

Not Where Patents Are Distinct. — But 
one bill cannot be exhibited for the in- 
fringement of distinct patents, covering 
inventions not capable of being used to- 
gether. Hayes v. Dayton, iS Blatchf. 
(U. S.) 420; s. I,., 8 Fed. Rep. 702; s. c, 
18 Pat. Off. Gaz. 1406; Hayes v. Bickel- 
houpt, 19 Pat. Off. Gaz. 177; Pope Mfg. 
Co. ■:'. Marqua, 15 Fed. Rep. 400; Bar- 
ney V. Peck, 16 Fed. Rep. 413; s. c. 
24 Pat. Off. Gaz. loi. Nor where the 
patents, though infringed by one ma- 
. chine, are capable of a separate use. 
Consolidated Electric Light Co. v. 



76 



Actions CoDcermng Patents. PA TENT LA W. Jurisdiction of TT. S. Conrts, 

cation concerning conflicting patents to a bill for infringement in 
the use of one of the patents.^ 

{/) Motion for Preliminary Injunction. — (i) General 
Principles. — The issue of a preliminary injunction is always a 
matter of discretion and depends upon the peculiar circumstances 
of each case and the comparative expense and inconvenience to 
which the parties will be subjected in case of granting the in- 
junction on the one hand,^ or withholding it on the other.' 



Brush etc. Electric Light Co., 20 Fed. 
Rep. 502. 

The bill must allege and the proofs 
show that the inventions are capable of 
conjoint use and can be used together. 
Lilliendahl v. Detwiler, 18 Fed. Rep. 
176; Griffith t'. Segar, 29 Fed. Rep. 
707. 

Where several patents are closely 
connected and used on one machine, the 
court Vfill sometimes consolidate suits 
brought on; separate ones at the motion 
of the defendant. Deering v. Winona 
Harvester Works, 24 Fed. Rep. 90. 

1. Leach t». Chandler, 18 Fed. Rep. 
262. 

Averments That Are Proper in a BUI. 
Prior litigation. Doughty v. West, 2 
Fish. Pat. 553; Blandy v. Griffith, 3 
Fish. Pat. Cas. 609; Stain Gauge etc. 
Co., V. McRoberts, 26 Fed. Rep. 705. 
Public acquiescence and use. Gutta 
PerchaCo. v. Goodyear Rubber Co., 3 
Sawy. (U.S.) 543. History of inven- 
tion. Lantern Co. v. McRoberts, 26 
Fed. Rep. 858. That defendant is act- 
ing without authority. Still v. Read- 
ing, 9 Fed. Rep. 20; s. c, 20 Pat. Off. 
Gaz. 1025. 

Necessary Averments. — In a bill seek- 
ing an injunction after the expiration of 
a patent, a statement that the defend- 
ant is using machines made during the 
life of a patent or a fear of such use. 
American etc. Boring Co. v. Rutland 
Marble Co., iS Blatchf (U. S.) I46;s.c., 
2 Fed. Rep. 355; s. c, 5 Bann. & Ard. 
Pat. Cas. 354. 

An excuse for delay when a patent 
has been surrendered for reissue more 
than two years after issue. Wollensak 
V. Reiher, 115 U. S. 96. Or in a suit to 
compel the granting of a patent, a de- 
lay of two 3'ears between the actions in 
the Patent Oifice. Gandy v. Marble, 
122 U. S. 432. 

Unnecessary Averments, — That the 
patentee marked the articles made or 
vended under the patent as required by 
the Patent Law. Goodyear -'. AUyn, 
6 Blatchf. (U. S.) 33; s. c, 3 Fish. Pat, 



Cas. 374. A statement where a corpo- 
ration is located or doing business.^ 
National Hay Rake Co. v. Harbert, 2 
W. N. C. (Pa.) 100. The specific 
ground on which a patent was reissued. 
Spaeth V. Barney, 22 Fed. Rep. 828. 

In a suit against a licensee that the li- 
censor has kept his covenants in the 
license. Stanley etc. Co. v. Bailey, 14 
Blatchf. (U. S.) 510; 5. u., 3 Bann. & 
Ard, Pat. Cas. 297. 

2, Parker v. Sears, i Fish. Pat. Cas, 
93; Earth Closet Co. v. Fenner, 5 Fish. 
Pat. Cas. 15; Potter v. Davis Sewing 
Machine Co., 3 Fish. Pat. Cas. 472; 
Gpodyear v. Rust, 3 Fish. Pat. Cas> 
456; s. v;., 6 Blatchf. (U. S.) 229; Potter 
V. Crowell, 3 Fish. Pat. Cas. 112; ». c, 
I Abb. (U. S.) 89; Irwin v. Dane, 4 
Fish. Pat. Cas. 359; s. c, 2 Biss. (U. S.) 
442; Smith V. Mercer, 5 Pa. Leg. J. 
529; s. c, 4 West L. J. 49; Hussey w.. 
Whiteley, 2 Fish. Pat. Cas. 120; s. c, 
I Bond (U. S.) 407; Potter v. MuUer, 2 
Fish. Pat. Cas. 465; Potter v. Schenck, 
I Biss. (U. S.) 515; s. c, 3 Fish. Pat. 
Cas. 82; Hodge v. Hudson River R> 
Co., 6 Blatchf. (U. S.) 165; s. c, 3 
Fish. Pat. Cas. 410; Poppenhausen v. 
New York etc. Comb Co., 2 Fish. Pat. 
Cas. 74; s. c, 4 Blatchf. (U. S.) 184; 
Root V. Mt. Adams etc. R. Co., 40 Fed. 
Rep. 760. 

3. Hockholtzer v. Eager, 2 Sawy. (U. 
S.) 361; Bliss V. Brooklyn, 4 Fish. Pat. 
Cas. 596; s. c, 8 Blatchf. (U. S.) 533; 
Forbush v. Bradford, i Fish. Pat. Cas. 
317; Morris v. Lowell Mfg. Co., 3 Fish. 
Pat. Cas. 67; New York Grape Sugar 
Co. V. American Grape Sugar Co., 10 
Fed. Rep. 835; Hall v. Speer, 6 Pitts, 
Leg. J. 403; i-Iowe v. Newton, 2 Fish. 
Pat. Cas. 531; Brooks v. Bicknell, 3 
McLean (U. S.) 250; Irwin v. Dane, 4 
Fish. Pat. Cas. 359; s. c, 2 Biss. (U. 
S.) 442. 

Where the Patent Had Previously Been. 
Sustained. — A preliminary injunction 
on a patent for a portion of a large 
machine intended to print a daily 
paper refused where the removal of the 



77 



Actions Conceming Patents. PA TENT LA IV. Jurisdiction of TJ. S. Conrts. 

(2) Tii/e and Prior Adjudication. — The title of the complainant 
must be clear^ and ordinarily the patent declared valid by an ad- 
judication.* 



part covered by the patent, though pos- 
sible, was yet very difficult, and the in- 
junction would do no especial good to 
the complainants. Hoe v. Boston etc. 
Advertiser Corp., 14 Fed. Rep. 914; o. 
c, 23 Pat. Oflf. Gaz. 1124. See also 
Consolidated Roller Mill Co. -u. Rich- 
mond City Mill Works, 40 Fed. Rep. 
474; Root V. Mt. Adams etc R. Co., 40 
Fed. Rep. 760; Eagle Mfg. Co. v. 
Chamberlain Plow Co., 36 Fed. Rep. 
905; Eastern Paper Bag Co. v. Nixon, 
35 Fed. Rep. 752. 

Consequential damages resulting 
from groundless fears not a reason for 
refusing an injunction. Rumford Chem- 
ical Works v.y\cG, 14 Blatchf. (U. S.) 
179; s. c, II Pat. Off. Gaz.. 600. 

Nor will an injunction be refused 
where it merely prohibits the sale of 
articles which are manufactured else- 
where. Potter V. Fuller, 2 Fish. Pat. 
Cas. 251. 

A preliminary injunction will not be 
granted when another to the same ef- 
fect is in force in a different suit. Gold 
and Stock Tel. Co. v. Pearce, 19 Fed. 
Rep. 419. 

1. Potter V. Whitney, i Low. (U. 
S.) 87; Forbush v. Bradford, i Fish. 
Pat. Cas. 317; Woodworth v. Rogers, 3 
Woodb. & M. CU. S.) 135; s.c.,2 Robb 
Pat. Cas. 625; Standard Paint Co. v. 
Reynolds, 43 Fed. Rep. 304; Herman v. 
Hermann, 29 Fed. Rep. 92. 

The validity of the patent should be 
clear. Sullivan v. Redfield, i Paine 
(U. S.) 441; s. c, I Robb Pat. Cas. 
477; Arnheim v. Fruster, 24 Fed. Rep. 
276. Also design patent. Osborn i'. 
Judd, 29 Fed. Rep. 76. 

2. Sickels t. Tileston, 4 Blatchf. (U. 
S.) 109; Parker v. Brant, i Fish. Pat. 
Cas. 58; Orr v. Badger, 7 L. R. 465; 
Poppenhusen v. New York etc. Comb 
Co., 2 Fish. Pat. Cas. 74; s. c, 4 Blatchf 
(U. S.) 184; Potter V. MuUer, 2 Fish. 
Pat. Cas. »63i; Potter v. Stevens, 2 
Fish. Pat. Cas. 163; Potter v. Fuller, 2 
Fish. Pat. Cas. 251; Orr v. Littlefield, i 
Woodb. & B. M. (U. S.) 13; s. c, 2 Robb 
Pat. Cas. 323; Potter v. Whitney,. 3 
Fish. Pat. Cas. 77; s. c, I Low. (U. S.) 
87; Putnam v. Wetherbee, i Holmes 
(U.S.) 497; s. c, 8 Pat. Off. Gaz. 320; 
s. c, 2 Bann. & Ard. Pat. Cas. 78; Good- 
year V. HuUihen, 3 Fish. Pat. Cas. 251; 



s.c.,2 Hughes (U. S.) 492; Jones v. 
Merrill, 8 Pat. Off. Gaz. 401; Thomp- 
son V. Mendelsohn, 5 Fish. Pat. Cas. 
187; Robertson v. Hill, 6 Fish. Pat. 
Cas. 465; s. c, 4 Pat. Off. Gaz. 132; 
American Shoe etc. Co. v. National 
Shoe etc. Co., 2 Bann. & Ard. Pat. Cas. 
S5i;s. c. II Pat. Off. Gaz. 740; United 
States Felting Co. v. Asbestos Felting 
Co., 10 Pat. Off. Gaz. 828; Bailey 
Wringing Mach. Co. v. Adams, 3 
Bann. & Ard. Pat. Cas. 96; Atlantic 
Giant Powder Co. v. Goodyear, 3 
Bann. & Ard. Pat. Cas. 161 ; Green v. 
French, 4 Bann. & Ard. Pat. Cas. 169; 
Bradley etc. Mfg. Co. v. Chas. Parke 
Co., 17 Fed. Rep. 240; Barr Co. f. New 
York etc. Sprinkler Co., 32 Fed. Rep. ' 
79; Baldwin v. Conway etc. Co., 32 
Fed. Rep. 791;, Cary v. Domestic 
Spring Bed Co.', 26 Fed Rep. 38; Cary 
V. Domestic Spring Bed Co., 27 Fed. 
Rep. 299; American Bell Teleph. Co. 
V. National Improved Teleph. Co., 27 
Fed. Rep. 663; Hurlburt v. Carter, 39 
Fed. Rep. 802; Raymond v. Boston 
Woven Hose Co., 39 Fed. Rep. 365; 
Stuart V. Thorman, 37 Fed. Rep. 90; 
Upton V. Wayland, 36 Fed. Rep. 691; 
Schneider v. Missouri Glass Co., 36 
Fed. Rep. 582. 

While the favorable judgment (or 
an equivalent acquiesence) is not 
absolutely necessary where the va- 
lidity of the patent has not been 
assailed. (New York Grape Sugar 
Co. V. American Grape Sugar Co., 
10 Fed. Rep. 835; Potter v. Whit- 
ney, I Low. (U. S.) 87; Sickels v. 
Mitchell, 3 Blatchf. (U. S.) 548; North 
V. Kershaw, 4 Blatchf (U. S.) 70), yet 
ordinarily when the patent is new and 
its validity assailed by sufficient evi- 
dence to create a doubt in the mind of 
the court, the injunction will be re- 
fused. Foster's Fed. Practice 312, § 
216 and cases cited in note 10. 

The fact of a patent having been 
adjudged invalid in another court, 
while it had been adjudged valid after 
a long contest in the same court as that 
in which the preliminary injunction is 
sought, will not prevent the allowance 
of a preliminary injunction. Atlantic 
Giant Powder Co. v. Goodyear, 3 
Bann & Ard. Pat. Cas. 161; s. c, 13 
Pat. Off. Gaz. 45. 



78 



Actions Concerning Patents. PA TENT LA W. Jarisdiction of TJ. S. Courts. 

The adjudication which will warraat the grant of a preliminary 
injunction may be a judgment in a trial at law,^ or a final decree 
in equity,* which latter is held more persuasive evidence.^ A 
judgment by agreement, which is not collusive, is equally per- 
suasive.* 

(3) Favorable Decision in Interferetice. — A decision in an inter- 
ference between the parties to the suit, favorable to the plaintiff 
in the suit, is such an adjudication of plaintiff's right between 
the parties that a preliminary injunction will ordinarily issue 
against the respondent.^ 



1. Sickels V. Tileston, 4 Blatchf. (U. 
S.) log; Parker v. Brandt, i Fish. Pat. 
Cas. 58; Sargent v. Seagrave, 2 Curt. 
<U. S.) 553; Wells V. Gill, 6 Fish. Pat. 
Cas. 89; s. c, 2 Pat. Off. Gaz. 490. 

2. Pierpont v. Fowle, 2 Woodb. & 
M. (U. S.) 23; American etc. Purifier 
Co. V. Christian, 3 Bann. & Ard. Pat. 

^Cas. 42; United Nickel Co. v. Man- 
hattan Brass Co.. 4 Bann. & Ard. Pat. 
Cas. 173; 16 Blatchf. (U. S.) 68; 
Steam Gauge etc. Co. v. Miller, 8 Fed. 
Rep. 314; Blaisdell v. Puffer, 4 Bann. & 
Ard. Pat. Cas. 500; Blaisdell v. Dows, 
4 Bann. & Ard. Pat. Cas. 499; Odorless 
Excavating Co. v. Lauman, 12 Fed. 
Rep. 788; Coburn v. Clarke, 24 Pat. 
OflF. Gaz. 899; Potter v. Fuller, 2 Fish. 
Pat. Cas. 251. 

3. Goodyear v. MuUer, 3 Fish. Pat. 
Cas. 420; 

Special Circumstances Connected with 
Adjudication which are Persuasive to 
<}rantlng a Frelimlnary Injunction. — The 
wealth of the former defendant and his 
interest in defeating the patent, and the 
fact of present defendant being con- 
nected with former defendant. Col- 
gate V. Gold and Stock Tel. Co., 4 
Bann. & Ard. Pat. Cas. 559. 

The defendant was interested in the 
result of a former suit. Robertson X'. 
Hill, 6 Fish. Pat. Cas. 468; s. c, 4 Pat. 
Off. Gaz. 132; Robinson v. Randolph, 
4 Bann. & Ard. Pat. Cas. 163; United 
States etc. Felting Co. v. Asbestos 
Felting Co., 10 Pat. Off. Gaz. 828; 
Birdsall v. Hagerstown etc. Mfg. Co., i 
Bann. & Ard. Pat. Cas. 426; s. c, 6 
Pat. Off. Gaz. 604. 

4. Orr V. Littlefield, i Woodb. & M. 
(U. S.) 13; s. c, 2 Robb. Pat. Cas. 323; 
Grover Sewing Mach. Co. v. Williams, 
2 Fish. Pat. Cas. 133; Potter v. Fuller, 
2 Fish. Pat. Cas. 251; Mc Williams 
Mfg. Co. V. Blundell, 11 Fed. Rep. 419; 
s. c, 22 Pat. Off. Gaz. 177. 

Comfare Hayes v. Leton, 5 Fed. Rep. 



521; Warner v. Bassett, 7 Fed. Rep.- 
468. 

Where defendant In prior action the 
same as in the one to be decided, a pre- 
liminary injunction is granted almost 
as a matter of course. Poppenhusen v. 
New York etc. Comb Co., 2 Fish. Pat. 
Cas. 74; s. u., 4 Blatchf. (U. S.) 184; 
Clark V. Johnson, 4 Bann. & Ard. Pat. 
Cas. 403; s. c, 16 Blatchf. (U. S.) 
495; s. c, i7Pat. Off. Gaz. 1401. 

And an adjudication of the patent by 
the supreme court carries overwhelm- 
ing weight. American etc. Purifier Co. 
V. Christian, 2 Bann. & Ard. Pat. Cas. 
42; s. c, 4 Dill. (U. S.) 448; America etc. 
Purifier Co. x'. Atlantic Milling Co., 3 
Bann. & Ard. Pat. Cas. 168. 

A decision affirming the validity of a 
patent will be followed in all cases ex- 
cept where evidence is brought forth 
which, if produced in the former 
case, would have lead to a different re- 
sult therein. Ladd v. Cameron, 25 Fed. 
Rep. 37; Carey v. Domestic Spring Bed 
Co., 26 Fed. Rep. 38. 

But when the evidence is doubtful 
where there have been a number of ad- 
judications, the injunction will be 
granted. Seibert etc. Oil Cup Co. v. 
Michigan Lubricator Co., 34 Fed. Rep. 

33- 

A writ of error taken to a former de- 
cision favorable to the patent does not 
destroy its authority to induce the 
court to grant a preliminary injunction 
Forbush v. Bradford, i Fish. Pat. C&s 
317; Wells V. Gill, 6 Fish. Pat. Cas. 89 
s. c, 2 Pat. Off. Gaz. 590; Morris v 
Lowell Mfg. Co., 3 Fish; Pat. Cas. 67; 
Day V. Hartshorn, 3 Fish. Pat. Cas. 32. 

An extension of a patent, which was 
granted in the face of resistance on the 
ground of lack of novelty, greatly 
strengthens the presumption of validity 
of the patent. Cook v. Ernest, 5 Fish. 
Pat. Cas. 396; s. c, 2 Pat. Off. Gaz. 89. 

5. Smith V. Halkyard, i6 Fed. Rep. 



79 



Actions Concerning Patents. PA TENT LA IV. Jurisdiction of V. S. Courts. 



(4) Adjudications Not Warranting Preliminary Injunction. — A 
preliminary injunction will not be granted because of a decision 
favorable to the patent on a motion for an attachment/ or on a 
motion for a preliminary injunction,* where the judgment or 
decree was collusive.* The prior adjudication must have de-, 
termined the point involved satisfactorily.* 



414; s. c. 23 Pat. Off. Gaz. 1833; Holli- 
day V. Pickhardt, 12 Fed. Rep. 147; s. 
c, 22 Pat. Off. Gaz. 420; Pentlarge v. 
Bees'ton, 14 Blatchf. (U. S.) 352; s. c, 3 
Bann. & Ard. Pat. Cas. 142; Hanford 
V. Westcott, 16 Pat. Off. Gaz. 1181; 
Barr Co. v. New York etc. Sprinkler 
Co., 32 Fed. Rep. 856. 

A preliminary injunction will in 
such cases be granted even when a 
patent is recent. Greenwood v. Brach- 
er, 17 Pat. Off. Gaz. 115; s. c, 5 Bann. 
& Ard. Pat. Cas. 302; s. c, i Fed. Rep. 
856. 

While a defendant who has been de- 
feated in an interference with the com- 
plainant, is not estopped from setting 
up lack of novelty to defeat the inven- 
tion, yet if he h'ad knowledge of the 
condition of the art at the time of his 
application, a want of novelty in the in- 
vention must be clearly apparent, or a 
preliminary injunction will be granted. 
Smith V. Halkyard, 16 Fed. Rep. 414; 
s. c, 23 Pat. Off. Gaz. 1833; Greenwood 
V. Bracher, i Fed. Rep. 856; s. c, 5 
Bann. & Ard. Pat. Cas. 302; ». u., 17 
Pat. Off. Gaz. 115J. 

Comfare, however, Thompson v. 
American Bank Note Co., 35 Fed. Rep. 
203; Minneapolis Harvester Works v. 
McCormick Harvesting Mach. Co., 28 
Fed. Rep. 565. 

Where the defeated party to an inter- 
ference had acquiesced in the judgment 
awarding priority to the opposite party, 
had disclaimed the matter in interfer- 
ence and taken out a more limited 
patent, these facts should ha|Ve great 
weight in favor of granting a prelimi- 
nary injunction where a defense of lack 
of noveltv is set u,p. Reck etc. Co. v. 
Lindsay ,'i8 Pat. Off. Gaz. 63. 

This doctrine does not hold where 
the decision in the interference has not 
been acquiesced in by the defeated 
party. Minneapolis Harvester Works 
V. McCormick Harvesting Mach Co., 
28 Fed. Rep. 565. 

Between Whom Binding. — The adjudi- 
cation in an interference is only bind- 
ing between the parties and privies. 
Barr Co. v. New York etc. Sprinkler 
Co., 32 Fed. Rep. 79. 



The action of the Patent Office ira 
granting a reissue, after an exhaustive 
discussion and examination of the art in. 
which opposing interests were repre- 
sented, will induce the court to grant a 
preliminary injunction. Consolidated 
Bunging Co. v. Schoenhofen Brewing; 
Co.,2&Fed. Rep. 428. 

1. Sargeant Mfgj Co. v. Woodruff, 5; 
Biss. (U. S.) 444. 

2. Warner v. Bassett, 19 Blatchf (U, 
S.) 145; s. c, 7 Fed. Rep. 468. 

Contra, Ladd v. Cameron, 25 Fed- 
Rep. 37. 

3. Kirby Bung Mfg. Co. ». White, 5: 
Bann. & Ard. Pat. Cas. 263; s. c, i ' 
McCrary (U. S.) 155; s. c, 17 Pat. Off. 
Gaz. 974; s. c, I Fed. Rep. 604. 

Consequently a decree entered by 
agreement in favor of the complainant 
after a decision in the suit declaring' 
the patent invalid, will have very little 
weight. Spring v. Domestic Sewing- 
Mach. Co., 4 Bann. & Ard. Pat. Cas. 
427; s. c, 16 Pat. Off. Gaz. 721. 

4. Steam Gauge etc. Co. v. Miller, 11 
Fed. Rep. 718. See Coburne v. Clark^ 
24 Pat. Off. Gaz. 899. 

Ordinarily, the considerations which 
would induce a court to disregard a prior 
decision, must be such as would justify 
setting aside a verdict. Parker v. Brant^ 
I Fish. Pat. Cas. 58; Thayer v. Wales,. 
5 Fish. Pat. Cas. 130; s. c, 9 Blatchf. 
(U. S.) 170; American etc. Pavement 
Co. V. Elizabeth, 4 Fish. Pat. Cas. 189; 
Tilghman -v. Mitchell, 4 Fish. Pat. Cas.. 
615. 

Where the evidence is different, the 
court will not be bound by a decision 
in another circuit. Edgarton v, Furst 
etc. Mfg. Co., 9 Fed. Rep. 450; s. c, 10 
Biss. (U. S.) 402; s. c, 21 Pat. Off. Gaz. 
261; U. S. Stamping Co. v. King, 17 
Blatchf. (U. S.) 55; s. c, 4 Bann. & 
Ard. Pat. Cas. 469; s. c, 7 Fed. Rep. 
860; s. c, 17 Pat. Off. Gaz. 1399; Bailey 
etc. Wringing Mach. Co. v. Adams, 3 
Bann. & Ard. Pat. Cas. 96; Albany 
Steam Trap-Co. v. Felthousen, 26 Fed. 
Rep. 313; Lockwood v. Faber, 27 Fed. 
Rep. 63. And small weight will be 
given where verdicts have been ob- 
tained on inconsistent and contradictory 



80 



Actions Concerning Patents. PA TENT LA W. Jurisdiction of U. S. Coorts. 



(5) Plaintiff's Laches. — An unreasonable delay to prosecute an 
infringer after having acquired information of the infringement, 
will induce the court to refuse a preliminary injunction.^ 

(6) Willingness of Defendant to Accept License. — Where the de- 
fendant will agree to pay a reasonable license fee and accept a 
license, the court may be especially induced where plaintiff sells 
licenses to refuse a preliminary injunction.* This does not hold 



claims. Parker v. Sears, i Fish. Pat. 
Cas. 93. Or different construction of tiie 
patent. Mowry v. Grand St. R. Co., 
10 Blatchf. (U. S.) 89; s. c, 5 Fish. 
Pal. Cas. 587. Or where the results of 
previous trials were conflicting. Allen 
V. Sprague, i Blatchf. (U. S.) 567; 
Batten v. Silliman, 3 Wall-. Jr. (C. C.) 
124; Grover etc. Sewing Mach. Co. v. 
Williams, 2 Fish. Pat. Cas. 133; Eastern 
Paper Bag Co. v. Nixon, 35 Fed. Rep. 

New Defense or Evidence. — Or where 
a new point of defense is made, or 
new evidence produced. Lockwood 
V. Faber, 27 Fed. Rep. 33; Ladd 
V. Cameron, 25 Fed. Rep. 37; 
Bailey etc. Wringing Mach. Co. v. 
Adams, 3 Bann. & Ard. Pat. Cas. 96. 

1. Parker v. Sears, i Fish. Pat. Cas. 
93; Jones V. Merrill, 8 Pat. Off. Gaz. 
401; Cooper?'. Mathews, 5 Pa. L.J. 38; s. 
c, 8 L. R. 413; North v. Kershaw, 4 
Blatchf. (U. S.) 70; Whitney u. Roles- 
tone, Mach. Wks., 8 Pat. Off. Gaz. 908; 
s. c, 2 Bann. & Ard. Pat. Cas. 170; 
Goodyear v. Housinger, 3 Fish. Pat. 
Cas. 147; s. c, 2 Biss. (U. S.) i; Morris 
V. Lowell Mfg. Co., 3 Fish. Pat. Cas. 
67; Hockholzer t>. Eager, 2 Sawy. (U. 
S.)36i; Sloat v. Plympton, 2 Whart. 
Dig. 365; Sperry v. Ribbans, 3 Bann. & 
Ard. Pat. Cas. 260; Ballow Shoe Mach. 
Co. V. Dizer, 5 Bann. & Ard. Pat. Cas. 
540; Tillinghast v. Hicks, 13 Fed. Rep. 
3S8; ». c, 23 Pat. Off. Gaz. 739: Ladd 
V. Cameron, 25 Fed. Rep. 37; Hurlburt 
V. Carter, 39 Fed. Rep. 802. 

Especially where the plaintiff has ac- 
quiesced with the understanding that 
the compensation shall be fixed by 
agreement, and the defendant is willing 
to pay what the court will allow. 
Smith V. Sharp's Rifle Mfg. Co., 3 
Blatchf. (U. S.) 545. 

A delaj' of three months is not un- 
reasonable. Union Paper Bag etc. Co. 
V. Binney, 5 Fish. Pat. Cas. 166. 

He must, however, either know that 
that is an infringement or have means 
of knowing. Wortendyke v. White, 2 
Bann. & Ard. Pat. Cas. 23. 

Mere forbearance to sue without af- 

18 C. of L.— 6 81 



firmative encouragement to continue 
the infringement, does not induce the 
court to refuse. Collignon v. Hayes, 8 
Fed. Rep. 912; s. c, 20 Pat. Off. Gaz. 

447- 

Where the defendants had been ac- 
customed to make and repair pieces of 
a machine for plaintiff and manufacture 
them for others, with plaintiff's knowl- 
edge, preliminary injunction refused. 
Amazeen Mach. Co. v. Knight, 39 Fed. 
Rep. 612. 

Delay During Pendency of Ottier Suits. 
— Where a plaintiff has pfoceeded to 
bring suits against other infringers 
whereby the validity of the patent might 
be determined, a delay to bring suit 
against a particular defendant, after 
knowledge of an infringement by him, 
is not laches. Green v. French, 4 Bann. 
& Ard. Pat. Cas. 169; s. c, 16 Pat. Off. 
Gaz. 215; Van Hook v, Pendleton, t 
Blatchf. (U. S.) 187; McWilliams Mfg. 
Co. V. Blundell, 11 Fed. Rep. 419; s. c, 
22 Pat. Off. Gaz. 177; Rumford Chem- 
ical Works V. Vice, 14 Blatchf. (U. S.) 
179; s. c, II Pat. Off. Gaz. 600. 

For length of time not laches, see 
Brick V. Staten Island R. Co., 25 Fed. 
Rep. 553. 

An injunction may be withheld until 
the complainant explains his apparent 
laches. Sykes v, Manhattan Elevator 
etc. Co., 6 Blatchf. (U. S.) 496. 

2. Hodge V. Hudson River R. Co., 6 
Blatchf. (U. S.) 85; s. c, 3 Fish. Pat. 
Cas. 410; Colgate v. Gold & Stock Tel. 
Co., 16 Blatchf. (U. S.) 583; s. c, 4 Bann. 
& Ard. Pat. Cas. 415; s. c, 16 Pat. Off. 
Gaz. 583; Blake v. Greenwood Cem- 
etery, 14 Blatchf. (U. S.) 342; s. c, 3 
Bann. & Ard. Pat. Cas. Ii2; s. c, 13 
Pat. Off. Gaz. 1046. 

Especially in cases where there are 
other considerations this is a make 
weight. Howe v. Newton, 2 Fish. Pat. 
Cas. 531; Forbush v. Bradford, I Fish. 
Pat. Cas. 317; Potter w. Schenck, i Biss. 
(U. S.) 515; s. c, 3 Fish. Pat. Cas. 82; 
Morris v. Lowell Mfg. Co., 3 Fish. Pat. 
Cas. 67; Livingston v. Jones, 2 Fish. 
Pat. Cas. 207; s. c, 3 Wall. Jr. (C. C.) 
330; Batten v. Silliman, 3 Wall. Jr. (C. 



Actions Concerning Patants. PA TENT LA IV. Jurisdiction of TJ. S. Conrts. 

where the plaintiff is able and willing to supply the market 
demand.^ 

(7) Ability of Defendant to Respond in Damages. — The ability^ 
or inability** of the defendant to pay the profits or damages that 
may be adjudged or decreed, is a consideration, though not a 
controlling one,* with the court. 

(8) Contractual Relation Between the Parties. — A contractual 
relation existing between the parties by which the patent has 
been treated as valid, will induce the court to grant a preliminary 
injunction.^ 

(9) Infringement Not Clear. — Where the infringement of com- 
plainant's patent by defendant's device is not clear, the injunction 
will be refused.® What is sufficient evidence of infringement is 



C.) 124; McMillan f. Conrad, 16 Fed. 
Rep. 128; Hoe v. Boston etc. Adver- 
tiser. Corp., 14 Fed. Rep. 914; s. c, 23 
Pat. Off. Gaz. 1124; National Hat 
Pouncing Machi. Co. v. Hedden,29 Fed. 
Rep. 147. 

1. Baldwin v. Shultz, 9 Blatchf. (U. 
S.) 494; s. c, 5 Fish. Pat. Cas. 71;; s. c, 
2 Pat. Off. Gaz. 315. 

2. Morris v. Lowell Mfg. Co., 3 Fish. 
Pat. Cas. 67; Guidet v. Palmer, 6 Fish. 
Pat. Cas. 82; s. c, 10 Blatchf. (U. S.) 
217; Pullman v. Baltimore etc. R. Co., 
4 Hughes (U. S.) 236; s. c, 5 Fed. Rep. 
72; s. c, 19 Pat. Off. Gaz. 224; Dorsey 
etc. Rake Co. v. Bradey Mfg. Co., i 
Bann. & Ard. Pat. Cas. 330; s. c, 12 
Blatchf. (U. S.) 202; Tillinghast v. 
Hicks, 13 Fed. Rep. 38S; s. c, 23 Pat. 
Off. Gaz. 139; National Hat Pouncing 
Mach. Co. V. Hedden, 29 Fed. Rep. 147; 
Celluloid Mfg. Co. v. Eastman Dry 
Plate etc. Co., 42 Fed. Rep. 159; John- 
son V. Aldrich, 40 Fed. Rep. 675; Hurl- 
bart V. Carter, 39 Fed. Rep. 802. 

3. Brooks v. Bicknell, 3 McLean (U. 
S.) 250; s. c, 2 Robb Pat. Cas. 118; 
Goodyear v. Muller, 3 Fish. Pat. Cas. 
420. 

4. But in a clear case the defendant 
cannot insist on being allowed to con- 
tinue his infringement, although able to 
pay the damages, even when the incon- 
venience caused by the grant of the in- 
junction is very great. Sickels v. Mitch- 
ell, 3 Blatchf. (U. S.) S4S. 

The fact that defendant is manufac- 
turing under a patent, will in some cases 
prevent the granting of a preliminary 
injunction. Celluloid Co. v. Eastman 
Dry Plate etc. Co., 42 Fed. Rep. 159. 
. But it must be set up in the answer. 
Zinn V. Weiss, 7 Fed. Rep. 914. 

And that he is not using his alleged 
infringing article in the manner in which 



the plaintiff uses the patented article. 
Celluloid Mfg. Co. f. Eastman Dry 
Plate etc. Co., 42 Fed. Rep. 159. 

Risk caused to the public by stopping 
the use of a device. Root v. R. Co., 
40 Fed. Rep. 760. 

5. Burr v. Kimbark, 28 Fed. Rep. 574; 
Steam Gauge etc. Co. v. Ham Mfg. 
Co., 28 Fed. Rep. 618; American Paper 
Barrel Co. v. Laraway, 28 Fed. Rep. 
141; Hat Sweat Mfg. Co. v. Porter, 34 
Fed. Rep. 745; Goddard v. Wilde, 17 
Fed. Rep. 845; Goodyear v. Congress 
Rubber Co., 3 Blatchf. (U. S.) 449. 

Limitation. — But not where complain- 
ant does not come in with clean hands. 
Crowell V. Parmenter, 3 Bann. & Ard. 
Pat. Cas. 480; s. c, 18 Pat. Off. Gaz. 
360. 

6. High on Inj. 606; Parker v. Sears, 

I Fish. Pat. Cas. 93; Dodge v. Caid, 2 
Fish. Pat. Cas. n6; Jones t". Osgood, 3 
Fish. Pat. Cas. 591; s. c, 6 Blatchf. (U. 
S.) 435; Grover etc. Sewing Mach. Co. 
V. Williams, a Bish. Pat. Cas. 133; 
American Pavement Co. v. Elizabeth, 
4 Fish. Pat. Cas. 189; Marks v. Corr, 

II Fed. Rep. 900; s. c, 23 Pat. Off. Gaji. 
94; Cross V. Livermore, 9 Fed. Rep. 
607; s. c, 21 Pat. Off. Gaz. 139; Ballow 
Shoe Mach. Co. v. Dizer, 5 Bann. & 
Ard. Pat. Cas. 540; Pullman v. Balti- 
more etc. R. Co., 5 Fed. Rep. 72; s. c, 
19 Pat. Off. Gaz. 224; s. c, 4 Hughes 
(U. S.) 236; Zinssler v. Cooledge, 17 
Fed. Rep. 538; Fraim v. Sharon Valley 
etc. Iron Co., 27 Fed. Rep. 457; Ham- 
merschlag Mfg. Co. v. Judd, 28 Fed. 
Rep. 621; American Fire Hose Mfg. 
Co. V, Calahan Co., 41 Fed. Rep. 50; 
Judson L. Thompson Mfg. Co. v. Hath- 
eway,4i Fed. Rep. 519; Russel v. Hyde, 
39 Fed. Rep. 614; Morss v. Knapp, 39 
Fed. Rep. 60S; Thompson ik Rand 
Avery Supply Co., 30 Fed. Rep. 112; 



82 



-Actions Concerning Patents. PA TENT LA W. Jurisdiction of TJ. S, Courts. 

Stated in the note.^ 

(lo) Public Acquiescence. — An exclusive possession of some 
■duration* will influence the court to grant a preliminary in- 
junction. This possession should be open and notorious,* and 



Norton Door Check etc. Co. v. Hall, 37 
T"ed. Rep. 691 ; Carey v. Miller, 34 Fed. 
Rep. 392; Steam Gauge etc. Co. v. St. 
• l^ouis etc. Supply Co., 25 Fed. Rep. 
.491. 

A lack of clearness of infringement 
■may arise from a dubious construction 
of the patent. Dickerson v. De la Verne 
Refrigerating Co., 35 Fed. liep. 143. 

1. Evidence of infringement held suf- 
ficient to induce the court to grant a 
preliminary injunction. 

An admission of past infringement, 
<ven when coupled with the declaration 
that the defendants did not intend to 
•continue the use of the infringing de- 
■vice. Celluloid Mfg. Co. v. Arlington 
Mfg. Co., 34 Fed. Rep. 324; Jenkins v. 
Greenwald, 2 Fish. Pat. Cas. 37; Good- 
year V. Berry, 3 Fish. Pat. Cas. 439; s. c, 

2 Bond (U. S.) 189; Potter v. Crowell, 

3 Fish. Pat. Cas. 112; Rumford Chem- 
ical Works V. Vice, 14 Blatchf. (U. S.) 
179; s. c, II Pat. OflF. Gaz. 600; White 
■V. Heath, 10 Fed. Rep. 291; s. c, 22 
Pat. Off. Gaz. 500; American Bell 
Teleph. Co. v. Ghegan, 23 Pat. Off. Gaz. 

537- 

The fact that the patent under which 
the defendants are working, on its face 
shows that its working involves an in- 
iringement of the complainant's patent. 
Goodyear v. Evans, 6 Blatchf. (U. S.) 
121; s. c, 3 Fish. Pat. Cas. 390. 

Evidence of infringement held suf- 
ficient in following cases: Boston Elec- 
tric Co. V. Holtzer etc. Electric Co., 41 
Fed. Rep. 390; Stuart v. Thornton, 37 
Fed. Rep. 90; Maltby v. Graham, 35 
Fed. Rep. 206. 

The question of infringement arises 
anew in each particular case independ- 
•ently of prior adjudication. Hammer- 
schlag Mfg. Co. V. Judd, 28 Fed. Rep. 
•631. 

2. Sullivan v. Redfield, i Paine (U. 
S.) 441; s. c, I Robb. Pat. Cas. 477; 
Hockholzer v. Eager, 2 Sawy. (U. S.) 
361; Isaac I'. Cooper, 4 Wash. (U. S.) 
259; s. c, I Robb Pat. Cas. 332; Jap- 
pan V. National Bank Note Co., 2 Fish. 
Pat. Cas. 195; s.c, Blatchf. 4 (U. S.) 509; 
Goodyear v. Railroad, i Fish. Pat. Cas. 

':.$26; s. c, 2 Wall. Jr. (C. C.) 356; Wash- 
burn V. Gould, 3 Story (U. S.) 122; s. c, 
-2 Robb Pat. Cas. 206; Ogle v. Edge, 4 



Wash. (U. S.) 584; s. c, I Robb Pat. Cas. 
516; Sargent v. Carter, i Fish. Pat. 
Cas. 277; Woodworth v. Sherman, 3 
Story (U. S.) 171; s. c, 2 Robb Pat. 
Cas. 257; Morse etc. Pen Co. v. Est- 
erbrook etc. Pen Co., 3 Fish. Pat. Cas. 
515; Hovey v. Stephens, i Woodb. & 
M. (U. S.) 290; s. c, 2 Robb Pat. Cas. 
479; Cook V. Earnest, -5 Fish. Pat. Cas. 
396; s. c, 2 Pat. Off. Gaz. 89; Brooks 
tj. Bicknell, 3 McLean (U. S.) 250; s. 
c, 2 Robb Pat. Cas. 118; Gibson zi. 
Betts, I Blatchf. (U. S.) 163; Wood- 
worth V. Rogers, 3 Woodb. & M. (U. 
S.) 135; s. c, 2 Robb Pat. Cas. 625; 
Hussey v. Whitely, 2 Fish. Pat. Cas. 
120; s. c, I Bond (U. S.) 407; Potter t'. 
Muller, 2 Fish. Pat. Cas. 465; Miller v. 
Androscoggin Pulp Co., 5 Fish. Pat. 
Cas. 340 s. c, I Holmes (U. S.) 142; 
s. c, I Pat. Off. Gaz. 409; Parker v. 
Brandt i Fish. Pat. Cas. 58; Sargent 
V. Seagrave, 2 Curt. (U. S.)"553; White 
v. Heath, 10 Fed. Rep. 291; s. c, 22 
Pat. Off. Gaz. 500; Bar Co. v. New 
YorketCiSprinkler Co., 32 Fed. Rep. 79; 
Tillinghast v. Hicks, 13 Fed. Rep. 388; 
s. i;., 23 Pat. Off. Gaz. 739; White v. Sur- 
dam, 41 Fed. Rep. 790; Schneider v. 
Missouri Glass Co., 36 Fed. Rep. 582. 

Where exclusive possession for a 
terrn of years alleged, the reason for 
the grant of the preliminary injunction 
is the presumption of the validity of the 
patent arising from the acquiescence of 
the public in that right, which would 
not exist unless the right was well 
founded. This public acquiescence has 
weight according to the degree of util- 
ity of the invention, and the number of 
persons whose trade or business is af- 
fected by it. Foster v. Moore, ■ Curt. 
(U. S.) 279; Sargent v. Seagrave, 2 
Curt. (U. S.)S53. 

Accordingly, the shortness of the time 
after the grant, where articles have 
been sold publicly and separately, and 
have been so sold and used without dis- 
pute, is immaterial. Orr v. Littlefield, 
I Woodb. & M. (U. S.) 13; s. c, 2 
Robb Pat. Cas. 323. 

3. Potter V. Whitney, 3 Fish. Pat. 
Cas. 77; s. c, I Low (U^ S.) 87; Grover 
etc. Sewing Mach. Co. v Williams, 2 
Fish. Pat. Cas. 133. 

An exclusive use or sale of theinven- 



83 



Actions Concerning Patents. PA TENT LA W. Jorisdiction ol TJ. 8, CoortB. 

attended with circumstances indicating that there would not have 
been this acquiescence if any fair doubt had existed as to the 
vahdity of the patent.^ A lack of public acquiescence, where 
the device is certainly new and useful, will not prevent the grant 
of a preliminary injunction. ** 

(i i) Former Construction Followed. — The construction given in 
the prior adjudication of the patent will be followed in deciding 
upon a contest over a preliminary injunction.** 

(12) Power of Court to Impose Conditions. — A preliminary in- 
junction may be refused upon condition that the defendant give 
a bond with proper security,* or will keep an account,^ or the 
injunction may be granted on condition that the complainant file 
a bond to indemnify the defendant for his losses, if he fail at final 
hearing,® 



tion prior to the application for a pat- 
ent, if open and under a claim of right, 
may raise a presumption in favor of the 
patent. Tappan v. Natioftal Bank 
Note Co., 2 Fish. Pat. Cas. 195; s. c, 4 
Blatchf. (U. S.) 509; Sargent v. Sea- 
grave, 2 Curt. (U. S.) 553. 

The use of an invention for several 
years along with other patented inven- 
tions in a patented lamp, is not an ac- 
quiescence of the public. Upton v. 
Way land, 36 Fed. Rep. 691. 

1. Guidet V. Palmer, 6 Fish. Pat. 
Cas. 82; s. c, ID Blatchf. (U. S.) 217. 

Estoppel. — An acquiescence in and 
assertion of the validity of tlie patent 
by officers of a company * who were for- 
merly in the employ of the plaintiil, 
will act as an inducement to a grant of a 
preliminary injunction against the com- 
pany. Steam Gauge etc. Lantern Co. 
V. Ham. Mfg. Co., 28 Fed. Rep. 618. 

Where the bill does not aver that the 
patentee has ever sold or used his im- 
provement, the preliminary injunction 
will not be granted. Isaac v. Cooper, 
4 Wash. (U. S.) 259; s. c, I Robb 
Pat. Cas. 332. 

A large number of licenses had been 
taken, some voluntarily and some in 
settlement of litigation, and the inven- 
tion had been thoroughly investigated 
in the Patent Office, and there had been 
a quasi adjudication. Held, sufficient 
public acquiescence to justify prelimi- 
nary injunction in face of affidavits de- 
nying novelty. Hat Sweat Mfg. Co. 
V, Davis Mach. Co., 32 Fed. Rep. 974. 

An unsuccessful attempt to interrupt 
a possession strengthens the presump- 
tion. It shows that persons who have 
found it to their interest to question the 
right have questioned it, but finally sub- 



mitted. Such submission is the most 
persuasive kind of acquiescence. Sar- 
gent f. Seagrave, 2 Curt. (U. S.) 553; 
Cook V. Earnest, 5 Fish. Pat. Cas. 396;, 
s. c, 2 Pat. Off. G'az..89. 

A preliminary injTlnction>will not be 
granted where the defendant has been 
in possession and use of the invention 
for a long period adverse to the title of 
complainant under color of right. Hall 
V. Spier, 6 Pittsb. L. J. 403; Isaac v. 
Cooper, 4 Wash. (U. S.) 259; s. c, t 
Robb Pat. Cas. 332. See infra this 
title. Laches. 

Where the art is very complex, less 
weight will be given to prior acquies- 
cence. Warner v. Bassett, 7 Fed. Rep. 
468. 

An acquiscence of less than a year is 
insufficient where the patent is of doubt- 
ful construction. Johnston Ruffler 
Co. V. Avery Mach. Co., 28 Fed. Rep. 

193- 

2. Hussey Mfg. Co. •:;. Deering, 20- 
Fed. Rep. 795. 

3. Mallory Mfg. Co. v.. Hicok, 20. 
Fed. Rep. 116; Hammerschlag Mfg. 
Co. V. Judd, 28 Fed. Rep. 621. 

A patent will be presumed to be 
valid only to the extent it has been ad- 
judicated so. Carey v. Miller, 34 Fed. 
Rep. 392. 

4. Dorsey etc. Rake Co. v. Marsh, 6 
Fish. Pat. Cas. 387; s. c, 9 Phila. (Pa.) 
395; Morris v. Shelburne, 4 Fish. Pat. 
Cas. 377; s. c, 8 Blatchf. (U. S.) 266; 
Steam Gauge etc. Co. v. St. Louis etc. 
Supply Co., 25 Fed. Rep. 491. 

6. Wilder v. Gaylor, i Blatchf. (U. 
S.)5ii. 

6. Brafnmer v. Jones, 2 Bond (U. S.> 
100; s. c, 3 THsh. Pat. Cas. 340; Shelly 
V. Brannon, 4 Fish. Pat. Cas. 198; s. c. 



84 



Defenses to Action 



PA TENT LA W. 



for Infringement. 



or Other conditions.^ 

(/) Provision in Decree for Dissolving Injunction.— 
The decree for an injunction may provide for its dissolution on 
the defendant's giving bond and security for accounting.^ 

XII. Defenses to Action for Infringement. — 1. Statutory.— (a;) 
As TO Specification. — It is provided by statute that the de- 
fendant may defend by setting up that, for the purpose of deceiving 
the pubHc, the description and specification filed by the patentee 
in the Patent Office was made to contain less than the whole truth 
relative to his invention or discovery ; or more than was neces- 
sary to produce the desired effect.* 



2 Biss. (U. S.) 315; Allis v. Stowell, 
15 Fed. Rep. 242; Tobey Furniture 
Co. V. Colby, 35 Fed. Rep. 592. 

Especially where the injunction leads 
to serious injury in suspending works. 
Orr V. Littlefield, i Woodb. & M. (U. 
S.) 13; s. c, 2 Robb. Pat. Gas. 332; 
Morse v. O'Reilly, 6 W. L. J. 102. 

The defendant, however, has no 
right to demand that a bond shall be 
substituted for the injunction. Sickels 
V. Mitchell, 3 Blatchf. (U. S.) 54.8; 
Tracy v. Torrey, 2 Blatchf. (U. S.) 275; 
Tilghman v. Mitchell, 4 Fish. Pat. 
Cas. 615; s. c, 9 Blatchf. (U. S.) 18; 
Gibson v. Van Dresar, i Blatchf. (U. 
S.) 532; Conover v. Mers, 3 Fish. Pat. 
Cas. 386; Ely v. Monson etc. Mfg. Co., 
4 Fish. Pat. Cas. 64; Consolidated 
Fruit Jar Co. v. Whitney, i Bann. & 
Ard. Pat. Cas. 356; Hodge v. Hudson 
River R. Co., 6 Blatchf. (U. S.) 165. 

A bond can only be required in a 
case in which, if it is not given, the in- 
junction must issue. American Co. v. 
Atlantic Co., 4 Dill. (U. S.) 100; s. c, 

3 Bann. & Ard. Pat. Cas. 168. 
However, it is for the court to say 

whether the rights of the complainant 
are so clear that they ought to be pro- 
tected by an injunction, or not so clear 
so that they can be sufficiently pro- 
tected by bond ^nd security'. Ely v. 
Monson Mfg. Co., 4 Fish. Pat. Cas. 64; 
Kirbj' Bung Mfg. Co. v. White, i Mc- 
Crary (U. S.) 155; s. c, i Fed. Rep. 
€04; s. c, 5 Bann. & Ard. Pat. Cas. 
263; s. c, 17 Pat. Off. Gaz. 974. 

1. Woodworth v. Rogers, 3 Woodb. 
& M. (U. S.) 135; s. c, 2 Robb Pat. 
Cas. 625; Orr tj. Merrill, i Woodb. & 
M. (U. S.),376; s. c, 2 Robb Pat. Cas. 
331; Serreil v. Collins, 4 Blatchf. (U. 
S.) 61; Orr V. Littlefield, 1 Woodb. & 
M. (U. S.) 13; s. c, 2 Robb Pat. Cas. 
331; Rogers -v. Abbott, 4 Wash. (U. 
S.) 514: s. c, I Robb Pat. Cas. 405; 



Wise V. Grand Ave. R. Co., 33 Fed. 
Rep. 277. 

2. Brooks v. Bicknell, 3 McLean 
(U. S.) 250; ». c, 2 Robb Pat. Cas. 
118; Foster v. Moore, i Curt. (U. S.) 
279; Gilbert etc. Mfg. Co. v. Bussing 
12 Blatchf (U. S.) 426; =,. c, 8 Pat. 
Off. Gaz. 144; s. c, I Bann. & Ard. 
Pat. Cas. 621; Howe z). Morton, i Fish. 
Pat. Cas. 586; Jones v. Merrell, 8 Pat. 
Off. Gaz. 401; Annunciator Co. v. 
Hills, 3 Fish. Pat. Cas. 134; American 
etc. Pavement Co. v. Elizabeth, 4 Fish. 
Pat. Cas. 189; Goodyear v. Housinger, 
3 Fish. Pat. Cas. 147; s. c, 2 Biss. (U. S.) 
i; Sykes v. Manhattan Elevator etc. 
Co., 6 Blatchf. (U. S.) 496; American 
etc. Purifier Co. v. Christian, 4 Dill. 
(U. S.) 448; s. c, 3 Bann. & Ard. Pat. 
Cas. 42; Irwin v. McRobets, 4 Bann. 
& Ard. Pat. Cas. 411; s. c, 16 Pat. Off. 
Gaz. 8i;3; Greenwood v. Bracher, 5 
Bann. & Ard. Pat. Cas. 302; s. c, i 
Fed. Rep. 856; s. c, 17 Pat. Off. Gaz. 
1 151. 

3. U. S. Rev. Stats. § 4920. 

See supra Specification, supra 
Clearness, supra Specification and 
Claim. 

The fraudulent attempt is essential to 
this defense. Lowell v. Lewis, i Ma- 
son (U. S.) 182; s. c, T Robb Pat. 
Cas. 131. 

Containing Too Much. — The fact that 
the specification contains too much does 
not make it prima facie fraudulent. 
Hotchkiss V. Oliver, 5 Den. (U. S.) 

3H- 

Matters Concealed. — The matters not 
disclosed must appear to have been 
concealed to deceive the public. Park 
t'. Little, 3 Wash. (U. S.) 196; s. c, i 
Robb Pat. Cas. 17; Gray v. James, i 
Pet. (C. C.) 394; s. c, I Robb Pat. 
Cas. 120; Durden v. Corning, 2 Fish. 
Pat. Cas. 477; Whittemore v. Cutter, i 
Gall. (U. S.) 429; s. c, I Robb Pat. 



85 



Defenses to Action 



PA TENT LA W. 



for Infringement, 



{b) Prior Patent or Description. — That the invention had, 
been patented/ or described in some printed publication** prior 
to his supposed invention or discovery thereof.'* 

{c) Public Use. — Public use or sale of the patented device two- 
years prior to the date of the application for a patent.* 

{d) Surreptitiously Obtaining A Patent. — That he had 
surreptitiously or unjustly obtained the patent for what was, ia 
fact, invented by another,^ who was using reasonable diligence^ ia 

Cas. 297; s. c, I Deadj (U. S.) 649; 
s. t., 1 Pat. Off. Gaz. 144; Kidd v- 
Spence, 4 Fish. Pat. Cas. 37; Tillotson, 
V. Ramsay, 51 Vt.309; Teese v. Phelps,. 
I McAll. (U. S.) 17; Sickles v. Borden, 
3 Blatchf. (U. S.) S35; Turrill v^ 
Michigan etc. R. Co., i 'Wall. (U. S.) 
491; Serrell v. Collins, i Fish. Pat_ 
Cas. 289. 

What is identity is a question of law. 
Latta V. Shawk, i Bond (U. S.) 259;. 
ti. c, I Fish. Pat. Cas. 465. 

This is a different defense from prior 
use. Meyers v, Bushby, 32 Fed. Rep.. 
670. 

This defense cannot be made hy 
plea in equity. Walker on Patents,, 
(2nd ed.), § 600. 

Maj' be given under general issue withi 
notice or special plea at law. Walker 
on Patents (2nd ed.), ^ 447. 

It is a different defense from that of 
public use or sale within the United! 
States for two years prior to the appli- 
cation for the patent. Meyers v. Bush- 
by, 32 Fed. Rep. 670. 

A prior publication renders an Eng- 
lish patent void. Also Chemical Elec- 
tric etc. Light Co. v. Howard, 148- 
Mass. 352, 

4. See supra this title, Public Use. 
This defense applies only to a use 

within the United States. Hurlburt v. 
Schillinger, 130 U. S. 456. 

For a clause held sufficient compli- 
ance with the statute with reference to- 
this defense. See Anderson v. Miller,. 
I2g-U. S. 70. 

With reference to this defense where 
several divisional applications arise out 
of a single original, the date of the ap- 
plications is to be considered as the 
date of all the applications. Frankfort 
Whiskey Process, Co. v. Mill Creek. 
Distilling Co., 37 Fed. Rep. 533. 

5. See stijira, Date of Invention. 
A foreign inventor cannot claim his 

invention as of a date prior to his for- 
eign patent or of a. printed publication. 
Electrical Accumulator Co. v. Julien. 
Electric Co., 38 Fed. Rep. 117. 

6. See stifra, Diligence. 



Cas. 28; Grant v. Raymond, 6 Pet. 
(U. S.)2i8. 

Tetley v. Easton, i Macrory (Eng.) 
48; Walton V. Bateman, i Web. Pat. 
Cas. (Eng.) 613; Neilson v. Harford, i 
Web. Pat. Cas. (Eng.) 295; Lewis v. 
Marling, i Web. Pat. Cas. (Eng.) 493; 
s. c, I Abb. Pat. Cas. 421; Bovill v. 
Moore, i Davies Pat. Cas. (Eng.) 361; 
s. c, I Abb. Pat. Cas. (Eng.) 231. 

A fraudulent intention may be shown 
by circumstantial evidence. Gray v. 
James, ' Pet. (C. Q.) 394; s. c, i Robb 
Pat. Cas. 120; Dyson v. Danforth, 4 
Fish. Pat. Cas. 133. 

Material defects in the specification 
etc., held may be such evidence. 
Whittemore v. Cutter, i Gall. (U. S.) 
429; s. c, I Robb Pat. Cas. 28; Gray v. 
James, i Pet. (C. C.) 394; s. c, i Robb 
Pat. Cas. 120; Rentgcn v. Kanowrs, i 
Wash. (U. S.) 168; s. t,, I Robb Pat. 
Cas. I. 

1. 'Si&Q supra, Anticipation by Patent 
et seq. 

2. Ste supra, Anticipation by Publi- 
cation. 

The defenses in notes one and two 
cannot be made in a suit in equity by 
plea. Carnrick v. McKesson, 19 
Blatchf. (U. S.) 369; Zinn v. Weiss, 7 
Fed. Rep. 914. 

3. U. S. Rev. Stats., § 4920. 

This defense requires a description of 
the invention (as to what amounts to a 
description see Publication, • supra) 
that it shall be contained in a work of 
public character, and that the work be 
made accessible to the public before the 
discovery of the patentee. Reeves v. 
Keystone Bridge Co., 5 Fish. Pat.Cas. 
456; s. u., I Pat. Off. Gaz. 466. 

The construction of the description 
is a matter of law; the identity or di- 
versity of the thing described is a ques- 
tion of fact. Tyler v. Boston, 7 Wall. 
(U. S.) 327; Bischoff t;. Wethered, 9 
Wall. (U. S.) 812; Stevens ?;. Pierpont, 
42 Conn. 360; Waterbury Brass Co. v. 
New York etc. Brass Co., 6 Fish. Pat. 
Cas. 43; Jackson 1'. Allen, 120 Mass. 
64; Tucker v. Spaulding, j Fish. Pat. 



86 



Defenses to Action 



PA TENT LA W. 



for Infringement, 



adapting and perfecting the same.^ 

{e) Abandonment. — That the invention has been abandoned.^ 
(/) Lack of Utility. — That the invention is not useful.* 
2. Notice of Special Defenses. — Where the defendant intends to 
employ any of these defenses, he must give notice* to the plain- 
tiff^ in writing® thirty days before trial' At law this may be 



1. U. S. Rev. Stats., ij 4920. This de- 
fense is distinct from prior public use, 
and a notice of a witness for tiiis de- 
fense will not permit him to testify in 
for the other or vice versa. Meyers v. 
Busby, 32 Fed. Rep. 670. 

This defense is not complete unless 
all the above mentioned elements are 
present. Agawam Co. v. Jordan, 7 
Wall. (U. S.) 583; Reed v. Cutter 
(U. S.) 590; s. c, 2 Robb Pat. Gas. 81; 
Singer v. Walmesley, i Fis. Pat. Cas. 
558; Dixon V. Moyer, 4 Wash. (U. S.) 
68; s. c, 1 Robb Pat. Cas. 324. 

A case stated where the elements are 
present to make a good defense. Phelps 
V. Brown, i Fish. Pat. Cas. 479; s. c, 4 
Blatchf. (U. S.) 362. 

2. See Dedication or Abandon- 
ment OF AN Invention, vol. 5, p. 420. 

This defense is distinct from that of 
"two years' public use prior to applica- 
tion for a patent." Jones v. Sewall, 3 
Cliff. (U. S.) 563; s. c, 6 Fish. Pat. 
Cas. 343; s. c, 3 Pat. Off. Gaz. 630. 

Abandonment can be either actual or 
constructive, and may be interposed at 
law by general issue with or without 
special notice. Walker on Patents, 
(2nd ed.), § 449, in equity by answer. 
Walker on Patents, (2nd. ed.), ^ 602; 
Root V. Ball, 4 McLean (U. S.) 177. 

Abandonment is a question of fact. 
Kendall v. Windsor, 21 How. (U. S.) 
322; American Hide etc. Co. v. Amer- 
ican Tool etc. Co.; i Holmes, (U. S.) 
503; ». c, 4 Fish. Pat. Cas. 284. 

A plea of abandonment is not sus- 
tained by showing that the proceedings 
of the Patent OiBce were such as would 
render void the claim said to be in- 
fringed. Hutchinson v. Everett, 33 
Fed. Rep. 502. 

3. See Utility. 

Whether an invention is useful is a 
question of fact. Wintermute v. Red- 
ington,. I Fish. Pat. Cas. 239; Langdon 
V. De Groot, i Paine (U. S.) 203; s. c, 
I Robb Pat. Cas. 433. 

Can be made at law under general 
issue with notice or by special plea. 
Walker on Patents (2nd ed.), § 448. 
And must be set up in answer in equity. 



Walker on Patents (2nd ed.), § 601; 
McKesson v. Carnrick, 19 Blatchf. (U. 
S.) 158. 

4. Most of these defenses could, with- 
out the statute, be given in evidence 
under the general issue. Wilder v. 
Gaylor, i Blatchf. (U. S.) 599; Stephen- 
son V. Magowan, 31 Fed. Rep. 824; s. c, 
42 Pat. Off. Gaz, 1063; Odiorne v. Den- 
ney, 3 Bann. & Ard. Pat. Cas. 2S7; s. 
c, 13 Pat. Off. Gaz. 965; Roemer v. 
Simon, 95 U. S. 214; s. c, 12 Pat. Off. 
Gaz. 796; Pickering v. Phillips, 4 Cliff. 
(U. S.) 383; s. c, 2 Bann. & Ard. Pat. 
417; s. c, 10 Pat. Off. Gaz. 420; Bates 
-v. Coe, 98 U. S. 31; s. i;., 15 Pat. Off. 
Gaz. 337; Seymour v. Osborne, 11 
Wall. (U. S.) 516; Root V. Ball, 4 Mc- 
Lean (U. S.) 177. But the statute makes 
the notice obligatory. Kneass v. 
Schuylkill Bank, 4 Wash. (U. S.) 9; ». 
c, I Robb Pat. Cas. 303; Kelleher v. 
Darling, 4 Cliff. (U. S.) 424; s. c, 3 
Bann. & Ard. Pat. Cas. 328; s. c, 14 
Pat. Off. Gaz. 673; O'Reilly v. Morse, 
15 How. (U. S.) 62; Parker v. 
Haworth, 4 McLean (U. S.) 370; Root 
V. Ball, 4 McLean (U. S.) 177. 

The object being that the plaintiff 
should not be surprised. Philadelphia 
etc. R. Co. V. Stimpson, 14 Pet. (U. S.) 
448; s. c, 2 Robb Pat. Cas. 46; Silsby 
V. Foote, 14 How. (U. S.) 218. 

Exception. — Where public use is the 
only defense, and that public use is by 
plaintiff himself, notice need not be 
given. American Hide etc. Co. v. 
American Tool etc. Co., i Holmes (U. 
S.) 503. 

B. Or his attorney. U. S. Rev. 
Stat., (j 4920; Teese v. Huntington, 23 
How. (U. S.) 2. 

6. U. S. Rev. Stat., ^ 4920; New 
York Pharmical Co. v. Tilden, 21 
Blatchf. (U. S.) 191; s. c, 14 Fed. Rep. 
740; s. c, 23 Pat. Off. Gaz. 272; Teese 
V. Huntington, 23 How. (U. S.) 2; 
Hudson V. Bradford, i Bann. & Ard. 
Pat. Cas. 539; s. c, 16 Pat. Off. Gaz. 
171. 

7. U. S. Rev. Stat., ^ 4920; Teese v. 
Huntington, 23 How. (U. S.) 2; West- 
lake V. Cartter, 6 Fish. Pat. Cas. 



87 



Defenses to Action 



PA TENT LA W. 



for Infringement 



done either by a special notice^ under the general issue or, where 
permitted, by the practice by special pleading.^ In equity, notice 
must be given in the answer.^ 

(a) Where Prior Invention or Knowledge or Public 
Use is Alleged. — In notices as to proof of prior invention, 
knowledge or use of the thing patented, the defendant shall state 
the names of the patentees,* the date of their patents and when 



518; s. c, 4 Pat. Off. Gaz. 636. A 
defective notice may be supplemented 
by a second, if in time and form. Teese 
V. Huntington, 23 How. (U. S.) 2. 

1. Teese v. Huntington, 23 How. (U. 
S.) 2. 

2. Evans v. Eaton, 3 Wheat. (U. S.) 
454; s. u., I Robb'Pat. Cas. 68; Grant v. 
Raymond, 6 Pet. (U. S.) 218; s. c, i 
Robb Pat. Cas. 604; Read v. Miller, 2 
Biss. (U. S.) 12; s. c, 3 Fish. Pat. Cas. 
310; Phillips V. Comstock, 4 McLean 
(U. S.) 525; s. c, 2 Robb Pat. Cas. 724; 
Day V. New England Car Spring Co., 
3 Blatchf. (U. S.) 179; Wilder v. Gay- 
ler, I Blatchf. (U. S.) S97; Cottier v. 
Stimson, 20 Fed. Rep. 906. 

It was held that the statutory notice 
could not be given in an answer under 
the Oregon Code. Cottier v, Stimson, 
20 Fed. Rep. 906. 

The plea must be filed thirty days be- 
fore trial. Phillips v. Comstock, 4 
McLean (U. S.) 528. 

And the plea and notice must not 
raise same defense. Latta v. Shawk, i 
Bond (U. S.) 259; s. c, i Fish. Pat. 
Cas. 465; Read v. Miller, 2 Biss. (U. 
S.) 12. 

A special plea and the general issue 
with notice may be joined. Cottier v. 
Stimpson, 9 Sawy. (U. S.) 435. 

3. Pickering v. Phillips, 2 Bann. & 
Ard. Pat. Cas. 417; s. c, 4 Cliff. (U. S.) 
383; Agawam Co. v. Jordan, 7 Wall. 
(U. S.).583; Cook v. Howard, 4 Fish. 
Pat. Cas. 269; Seymour v. Osborne, 3 
Fish. Pat. Cas. 555; Collender v. Grif- 
fith, II Blatchf. (tJ. S.) 212; Decker v. 
Grote, 10 Blatchf. (U. S.) 331; s. c, 6 
Fish. Pat. Cas. 143; s. c, 3 Pat. Off. 
Gaz. 65; O'Reilly v. Morse, 15 How. 
(U. S.) 62; Geier v. Goetinger, i Bann. 
& Ard. Pat. Cas. 553; s. c, 7 Pat. Off. 
Gaz. 563; Pitts V. Edmonds, 2 Fish. 
Pat. Cas. 52; s. c, I Biss. (U. S.) 16S; 
Jordan v. Dobson, 4 Fish. Pat. Cas. 
232; Forbes v. Barstow Stove Co., 12 
Cliff. (U. S.) 379; Orr v. Merrill, i 
Woodb. & M. (U. S.) 376; s. c, 2 Robb 
Pat. Cas. 331; Eureka Co. v. Bailey 
Co., II Wall. (U. S.) 488; Union Pa- 
per Bag Co. V. Pueltz etc. Co., 15 



Blatchf. (U. S.) 160; s. c, 3 Bann. & 
Ard. Pat. Cas. 403; s. c, 15 Pat. Off. 
Gaz. 423; Kelleher v. Darling, 4 Cliff. 
(U. 8.) 424; s. c, 3 Bann. & Ard. Pat. 
Cas. 438; s.c, 14 Pat. Off. Gaz.673; Bates 
V. Coe, 98 U. S. 31; s. c, 15 Pat. Off. 
Gaz. 337; Parks v. Booth, 102 U. S. 96; 
s. c, 17 Pat. Off. Gaz. 1089; Graham v. 
Barber, 5 Pat. Off. Gaz. 149; Middleton 
Tool Co. V. Judd, 3 Fish. Pat. Cas. 141; 
Wyeth V. Stone, i Story (U. S.) 273; 
s. c, 2 Robb Pat. Cas. 23; Williams v. 
Boston etc. R. Co., 17 Blatchf. (U. S.) 
21; s. c, 4 Bann. & Ard. Pat. Cas. 441; 
s. c, 16 Pat. Off. Gaz. 906; Marks v. 
Fox, 18 Blatchf. (U. S.) 502; s. c, 6 
Fed. Rep. 727; Wonson v. Peterson, 13 
Bann. & Ard. Pat. Cas. 548; Odiorne t;. 
Denney, 3 Bann. & Ard. Pat. Cas. 287; 
Earle v. Dexter, i Holmes (U. S.) 412; 
Pitts -v. Edmonds, i Biss. (U. S.) 168. 

The special defense must be set up 
specifically and exactly. Agawam Co. 
V. Jordan, 7 Wall. (U. S.) 583; Bates v. 
Coe, 98 U. S. 31; s. c, 15 Pat. Off. Gaz. 

337- 

The answer must be amended to in- 
clude the name, etc., of a witness intro- 
duced to show prior use, if objection to 
the introduction of the witness is made 
before the examiner. Kiesele v. Haas, 
32 Fed. Rep. 794. 

Evidence introduced coUaterallv to 
establish facts relative to matters al- 
ready in evidence need not be set up in 
the answer. Atlantic Works v. Brady, 
107 U. S. 192; s. c, 23 Pat. Off. Gaz. 
1330- 

The answer must state the same 
things as are required to be set up by 
the notice of special matter. Agawam 
Co. •:;. Jordin, 7 Wall. (U. S.) 583; 
Bates V. Coe, 98 U. S. 34; Woodbury 
etc. Planing Mach. Co. v. Keith, loi U. 
S. 493. 

4. It is suiRcient to specify the pat- 
ents and allege that the invention is 
contained in them. Webster Loom 
Co. V. Higgins, 105 U. S. 1580; s. c, 21 
Pat. Off. Gaz. 2031. 

Publication. — A publication pleaded 
as anticipation must have designated 
the page or heading. Foote v. Silsby, 



Defenses to Action 



PA TENT LA W. 



for InMngement. 



granted,* and the names and residences^ of the persons alleged to 
have invented or to have had knowledge of the thing patented, *• 
and where it was used.* 

Where Objection Is to be Taken. — Objection to evidence for lack 
•of notice must be taken at trial or before the examiner,^ or else 
notice will be regarded waived. 

3. Not Statutory— (a) Statute Not All Embracing. — Nam- 
ing certain defenses does not prevent the patentee from making 
others.® The defenses ordinarily enumerated are the following : ' 



I Blatchf. (U. S.) 445; s. c, i Fish. Pat. 
Cas. 268. 

1. The provision that the patent shall 
not be antedated would seem to, and as 
practice has done away with two dates 
of grant and date. 

2. Orr V. Merrill, i Woodb. & M. (U. 
S.) 376; Lyon v. Donaldson, 34 Fed. 
Rep. 789. 

3. The names of the persons who in- 
vented or have had knowledge, not of 
the witnesses who were expected to 
p>-ove the prior invention or knowledge. 
Woodbury Planing Machine Co. v. 
Keith, loi U. S. 479; s. c, 17 Pat. Off. 
Gaz. 1031; Wilton tJ. Railroads, i Wall. 
Jr. (C. C.) 196; Many ri. Jagger, i Blatchf. 

(U. S.) 376; Roemer v. Simon, 95 U. S. 
21S; s. c, 13 Pat. Off. Gaz. •796'; Allis 
■V. Buckstaiff, 22 Pat. Off. Gaz. 1705; 
Sutro V. Moll, 19 Blatchf. (U. S.) 89; s. 
c, 8 Fed. Rep. gog. 

See Judson v. Cope, i Bond (U. S.) 
327; s. c, I Fish. Pat. Cas. 615. 

4. A notice that a certain machine 
was used in New York City, N. Y., 
held sufficient, where the names of wit- 
nesses and their residence were given, 
the court salying, "We do not think that 
the party giving notice is bound to be so 
specific as to relieve the other from all 
inquiry, or effort to investigate the facts. 
If he fairly puts his adversary in the 
way that he may ascertain all that is 
necessary to his defense or answer, it is 
all that is required." Wise v. Allis, g 
Wall. (U. S.) 737; Wilton v. Railroads, 
I Wall. Jr. (C. C.) 192. 

But a notice which merely states the 
county where a thing was used, is not 
sufficiently explicit. Hays v. Sulsor, i 
Bond (U. S.) 279; s. c, i Fish. Pat. Cas. 

532- 

And the actual place must be desig- 
nated or it cannot be proved. Dixon v. 
Moyer, 4 Wash. (U. S.) 68; s. c, i 
Robb Pat. Cas. 324; Searles v. Bouton, 
20 Blatchf. (U. S.) 426; s. c, 12 Fed. 
Rep. 140; s. c, 21 Pat. Off. Gaz. 
1784. 



A failure to state where the article 
relied on as an anticipation was used, 
is fatal to the introduction of the testi- 
mony. Silsby V. Foote, 14 How. (U. 
S.) 218; Roemer v. Simon, 95 U. S. 214; 
Searles v. Bouton, 12 Fed. Rep. 140; s. 
V.., 21 Pat. Off. Gaz. 17S4. 

The time of the use need not be stated,' 
nor is the defendant bound by such 
statement when made. Phillips v. Page, 
24 How. (U. S.) 164; Evans t'. Kremer, 
I Pet. (C. C.) 215; s. c, I Robb Pat. 
Cas. 66. 

It is not proper pleading to aver that 
fart of the invented device was in use. 
Williams v. Empire Transp. Co., 3 
Bann. & Ard. Pat. Cas. 533. 

5. Blanchard v. Putnam, 8 Wall. (U. 
S.) 420; Roemer v. Simon, gi; U. S. 
214; s. c, 12 Pat. Off. Gaz. 7g6; Gra- 
ham V. Mason, 5 Fish. Pat. Cas. 6; 
Brown v. Hall, 3 Fish. Pat. Cas. 1531; 
s. i;., 6 Blatchf. (U. S.) 401; Phillips v. 
Page, 24 How. (U. S.) 168; Webster 
Loom Co. x<. Higgins, 105 U. S. 580; s. 
c, 21 Pat. Off. Gaz. 2031; Woodbury etc. 
Planing Mach. Co. v. Keith, loi U. S. 
479; s. c, 17 Pat. Off. Gaz. 1031; Kiesele 
V. Haas, 32 Fed. Rep. 794; Barker v. 
Shoots, 20 Blatchf. (U. S.) 178; s. c, 18 
Fed. Rep. 647; American Whip Co. v. 
Lombard, 4 Cliff. (U. S.) 495; Gibbs v. 
Ellethorp, i McArthur Pat. Cas. 702; 
Evans v. Hettick, 7 Wheat. (U. S.) 453. 
Court below. 3 Wash. (U. S.) 408. 

6. Whittemore v. Cutter, i Gall. (U. 
S ) 429; s. c, I Robb Pat. Cas. 28; 
Kneass v. Schuylkill Bank, 4 Wash. 
(U. S.) 9; s. i;., i' Robb Pat. Cas. 303; 
Grant v. Raymond, 6 Pet. (U. S.) 218; 
s. c, I Robb Pat. Cas. 604; Gardner v. 
Hertz, 118 U. S. igo; s. c, 35 Pat. Off. 
Gaz. ggg. 

7. Walker on Patents (2nd ed.), §440. 
The defenses are very analytically 

considered. They are here grouped 
more compactlj'. 

See Issue of Patents and other 
sections on Patent Office, sufra. 
Marsh v. Nichols, 128 U. S. 605. 



Defenses to Action 



FA TENT LA W. 



for In&ingement.. 



{6) Defenses in Relation to the Grant of the Patent^ 
OR THE Application. — That the patent was in some manner de- 
fective in the grant, ^ or the specification or other parts of the- 
appHcation.* These defenses can be taken by demurrer some- 
times where profert is made,'' or by plea* or answer." 

(c) License or Release ; Estoppel. — A license in force to- 
use, make or sell the patented invention,® or a release by the- 



1. See Specification, Clearness, Spe- 
cifications, supra. Kneass v. Schuyl- 
kill Bank, 4 Wash. (U. S.) 106. 

How Set Up. — This defense must in a 
suit in equity be set up in the answer. 
Jennings v. Pierce, 15 Blatchf. (U. S.) 
42; s. c, 3 Bann. & Ard. Pat. Cas. 361; 
Goodyear v. Providence Rubber Co., 
2 Cliff. (U. S.) 351; s. c, 2 Fish. Pat. 
Cas. 499. Compare Kneass v. Schuyl- 
kill Bank, 4 Wash. (U. S.) 106. 

The defectiveness of the specification 
so far as it concerns the ability to make 
from it is a question of fact. Brooks 
V. Jenkins, 3 McLean (U. S.) 432; 
Hawkes v. Remington, 11 1 Mass. 171; 
Wood V. Underbill, 5 How. (U. S.) i; 
s. c, 2 Robb Pat. Cas. 58S; Howes v. 
Nute, 4 Cliff. (U. S.) 173; s. c, 4 Fish. 
Pat. Cas. 263. 

Whether the invention itself is de- 
scribed with reasonable certaint}', is a 
question of law. Lowell v. Lewis, i 
Mason (U. S.) 187; s. c, i Robb Pat. 
Cas. 131; Wilton v. R. Co., 2 Whart. 
Dig. 3159; Wayne v. Holmes, i Bond 
(U. S.) 27; s. c, 2 Fish. Pat. Cas. 20; 
Hogg V. Emerson, 6 How. (U. S.) 437. 

2. See Specification ; Clearness, etc., 
ante; Robinson on Patents, § 970; 
O'Reilly v. Morse, i^ How. (U. S.) 
62; Carlton v. Bokee,i7 Wall. (U. S.) 
472. 

3. Where the claims are not distinct, 
if there is a profert of the patent, the 
defense can be made a demurrer. 
Walker on Patents, % 608. 

4. Where the specification is at fault 
by special plea at law. Walker on 
Pat. (and ed.), § 454. It cannot be 
made by plea in equity. Walker on 
Patents (2nd ed.), § 605; Goodyear v. 
Providence Rubber Co., 2 Cliff. (U. S.) 

5. Walker on Pat. (2nd ed.), §§ 607, 
60S; Blandy v. Griffith, 3 Fish. Pat. 
Cas. 609. 

6. See License, vol. 13, p. 514. 

This defense should be pleaded spe- 
cially at law. Mini v. Adams, 3 Wall. 
Jr. (C. C.) 20. 

Where a license to run a machine 
contained a restriction against selling 



material operated upon by such ma- 
chine to be carried out of a specified 
territory and resold as an article of 
merchandise, the restriction being both 
an invention by the licensee and a con- 
dition of the grant — held, that under 
no circumstances could such material, 
with the privity or consent of the- 
licensee, be sold out of the territory as- 
an article of merchandise, or, with his. 
privity or consent, be sold within the 
territory to be carried out and resold> 
as such article of merchandise. Fur- 
ther, that a provisional injunction 
would be granted against such licensee' 
to restrain his use of the machine, if 
applied for during his violation of such 
restriction; but such injunction was re- 
fused where it appeared that the 
licensee had violated the restriction, 
under a misapprehension of his rights,, 
and had discontinued the violation. 
Wilson V. Sherman, i Blatchf. (U. S.> 
536. See also Burr v. Durj'ee, 2 Fish.. 
Pat. Cas. 275. 

Or the injunction may be granted 
unless the licensee will conform to the 
conditions of the license. Brooks v. 
StoUey, 3 McLean (U. S.) 523; s. c, 2- 
Robb Pat. Cas. 281. 

Where the license has been for- 
feited, the further working by the- 
former licensee will be enjoined" as an 
infringement. Woodworth v. Cook, 2 
Blatchf. (U. S.) 151; Day v. Hartshorn^ 
3 Fish. Pat. Cas. 32; Cohn v. National 
Rubber Co., 5 Bann. & Ard. Pat. Cas. 
568; s. c, 15 Pat. Oif. Gaz. 829; Good- 
year V. Congress Rubber Co., 3 
Blatchf (U. S.) 449; Armstrong v. 
Hanlenback, 3 N. Y. Leg. Obs. 43. 

A suit in equity, however, cannot be 
maintained to forfeit the license for 
condition broken. Morse v. O'Reilly^ 
6 Pa. L. J. 501; Brooks v. Stolley,"3 
McLean (U. S.) 523; s. c, 2 Robb Pat. 
Cas. 281. 

A license may be proved by oral 
testimony where there has been no- 
written agreement. Black v. Hubbard, 
3 Bann. & Ard. Pat. Cas. 39; s. c, 12 
Pat. Off. Gaz. 842. 

At law this defense should be raised 
90 



Defenses to Action 



PA TENT LA W. 



for Infringement. 



patentee or plaintiff,-' or an estoppel** to bring suit, can be set up 
as a defense. 

{d) Expiration or Repeal of Patents. — The expiration 
or repeal of the patent prior to the infringement is a good defense 
in law^ and before the bringing of suit to a suit in equity.* 

(i) Prior Foreign Patents to Inventor. — Unless the invention 
has been in public use in the United States for more than twa 
years prior to the application for a patent,^ a prior** foreign pat- 



by special plea, but may probably be 
raised by general issue. In equity by 
plea or answer. Walker on Patents, 
(2nd ed.), ^§ 465, 618. 

1. Bendell v. Denig, 92 U. S. 721, 
Bailey v. Bussing, 28 Conn. 461. 

This defense should at law be 
pleaded specially, but may be proved 
under general issue. In equity \>y plea. 
Walker on Patents (2nd ed.), ^§ 465, 
619; Daniels' Chancery Practice, § 66g. 

2. Parkhurst v. Kinsman, i Blatchf. 
(U. S.) 488; Concord v. Norton, 16 
Fed. Rep. 477; Dickerson v. Colgrove, 
100 U. S. 578; Morgan v Chicago etc. 
R. Co., 96 U. S. 716; Barnard v, Camp- 
bell, 55 N. Y. 456; Rice v. Barrett, 116 
Mass. 312, Bronson v. Campbell, 12 
Wall. {U, S.) 681. 

But mere laches is not an estoppel 
m a suit at law. Concord v. Norton, 
16 Fed. Rep. 477. Nor is taking out 
several patents an estoppel to show 
that the invention was joint. Barrett 
V. Hall, I Mason (U. S.) 477; s. c, i 
Robb Pat. Cas. 207. See similarl3' 
Allen V. Blunt, 2 Woodb.& M. (U. S.) 
121; s. c, 2 Robb Pat. Cas. 530. 

Great laches of complainant is an 
estoppel to a suit in equity. Piatt v. 
Vattier, 9 Pet. (U. S.) 405; Wyeth t'. 
Stone, I Story (U. S.) 273; Wallensak 
V. Reiher, 115 U. S. loi; Kittle v. 
Hall, 29 Fed. Rep. 508. 

A delay of two years has been held 
sufficient to estop complainant in an 
action in equity. Sperry v. Ribbans, 
3 Bann. & Ard. Pat. Cas. 260. 

But a delay to enforce a right after 
the defendant has been notified, and 
continues notwithstanding to infringe 
will not estop a partj-. Concord v. 
Norton, 16 Fed. Rep. 477. 

Striking out a portion of an applica- 
tion at the request of the Patent Office 
on the allegation that it was a dupli- 
cation of the part allowed, does not 
estop the inventor from setting up the 
claim to a construction covered by the 
part stricken out. Ewart Mfg. Co. v. 
Bridgeport etc. Iron Co., 31 Fed. Rep. 
149. 



Generally it is an estoppel only 
where there is a duty on party alleged to- 
be estopped which is violated. Pickard 
V. Sears, 6 Ad. & El. (Eng.) 469; Young 
V. Grote, 4 Bing. (Eng.) 253; Bank of 
U. S. V. Lee, 13 Pet. (U. S.) 107; Reay 
V. Raynor, 19 Fed. Rep. 308; s. c, 22: 
Blatchf. (U. S.) 13; s. c, 26 Pat. Oflf. 
Gaz. iiii; New York Grape Sugar 
Co. V. BuflFalo Grape Sugar Co., 21 
Blatchf. (U. S.) 519; s. ^.., 18 Fed. Rep. 
638; s. c, 25 Pat.'Oflf. Gaz. 1076; Bassett 
V. Bradley, 148 Conn. 224; Drexel v. 
Berney, 16 Fed. Rep. 522; s. c, 21 
Blatchf. (U. S.) 348; Concord v. Nor- 
ton, 16 Fed. Rep. 477. 

This defense is raised hy special plea 
at law, or plea in equitj'. Walker on 
Patents (2nd ed.), §§ 470, 661. 

In this country equitable estoppel is 
a defense at law. Concord v. Norton, 
16 Fed. Rep. 477. 

An admission is not an estoppel if 
not acted upon. Gear v. Grosvenor, 
I Holmes (U. S.) 215; s. c, 6 Fish. 
Pat. Cas. 314; s. c, 3 Pat. Off. Gaz. 380;. 
Commercial Mfg. Co. v. Fairbank 
Canning Co., 27 Pat. Oif. Gaz. 78; s. c, 
36 Pat. Off. Gaz. 1473. 

3. See Duration of Right, supra. 
There is no precedent to show what 
the pleading should be where the pat- 
ent has been repeated. See Walker on 
Patents, § 461. Where it has ex- 
pired, the plea at law is a special one. 
Walker on Patents (2nd ed.) 462. 

In equity the defense of repeal can be 
made \>y plea or answer. The defense 
that the patent has expired by de- 
murrer, if sufficient, appears on the 
record by answer otherwise. Walker 
on Patents §§ 614, 615. 

4. See Jurisdiction of Equity^ 
supra. 

5. U. S. Rev. Stats., § 4887. Ameri- 
can Hide etc. Co. v. American Tool 
Co., I Holmes (U. S.) 503; s. c, 4 Fish. 
Pat. Cas. 284; Henry v. Providence 
Tool Co., 3 Bann. & Ard. Pat. Cas. 
501; s. c, 14 Pat. Off. Gaz. 855; Voge- 
ley V. Noel, 18 Fed. Rep. 827. 

6. French v. Rogers, i Fish. Pat. 



9: 



Sefeoses to Action 



FA TENT LA W. 



for Infringement. 



ent granted to the inventor^ does not debar him from obtaining 
a patent or make the patent granted invalid.^ 

(2) Limitation of Term Because- of Prior Foreign Patent. — A 
patent granted on an invention previously patented to the appli- 
cant in a foreign country is limited to expire with the foreign 
patent ; and, where there are more than one, with the patent 
having the shortest term.^ In computing the term of the foreign 
patents, the original term and such extensions as are granted, of 
course, are to be included,* and the term of the American patent is 



Cas. 133; In re Cushman, i Mc- 
Arthur Pat. Cas. 577. 

The priority is that of the grant, not 
of the application. Bate Refrigerating 
Co. V. Gillett, 13 Fed. Rep. 553; 
Gramme Electrical Co. v. Arnoux etc. 
Electric Co., 21; Pat. Off. Gaz. 193; s. 
c, 21 Blatchf. (U. S.) 450; Globe Mail 
Co. V. Superior Mail Co., 27 Fed. Rep. 

450- 

Under the old statutes of March 3, 
1839, and July 4, 1836, it was different. 
French v. Rogers, i Fish. Pat. Cas. 133. 

A patent which was granted after 
the date of the sealing of the provi- 
sional specification, but before the seal- 
ing of the complete specification, does 
not come within the rule. Emerson v. 
Lippert, 31 Fed. Rep. 911. See Brooks 
■V. Norcross, 2 Fish. Pat. Cas. 61; Howe 
V. Morton, 13 L. Rep. (U. 8.) 70; 
American etc. Boring Co. v. Sheldon, 
17 Blatchf. (U. S.) 303; s. c, 4 Bann. 
& Ard. Pat. Cas. 603; Schoerken v. 
Swift etc. Co., 19 Blatchf. (U. S.) 209. 
Which declare that a secret patent 
does not limit a subsequent United 
States patent granted before the for- 
eign patent was published. Compare 
Gramme Electrical Co. v. Arnoux etc. 
Electric Co., 21 Blatchf. (U. S.) 450; 
s. c, 25 Pat. Off. Gaz. 193. 

Sealing. — The date of the sealing of 
the foreign patent, being subsequent, 
though the application for and date of 
the foreign patent was prior, held, that 
the American patent was not limited. 
Gold & Stock Tel. Co. v. Commercial 
Tel. Co., 23 Blatchf. (U. S.) 199. 

The sealing of a British patent is the 
equivalent of publication. Guarantee 
Co. V. Sellers, 41 Pat. Off. Gaz. 1165. 

1. A foreign inventor is within the 
statute, even if his foreign patent is 
invalid. Comely v. Marckwald, 17 
Fed. Rep. 83; s. c, 24 Pat. Off. Gaz. 
498; Electric Light Co. v. Electric 
Lighting Co., 43 Pat. Off. Gaz. 1456. 

2. The statute refers to a patent 
granted to the inventor. A prior patent 



obtained inimicably after the invention 
by the American patentee or applicant, 
does not affect his patent. Kendrick v. 
Emmons, 2 Bann. & Ard. Pat. Cas. 
208; s. c, 9 Pat. Off. Gaz. 201. 

3. U. S. Rev. Stats. 4887; Edison 
Electric Light Co. v. Westinghouse, 
40 Fed. Rep. 666. 

The American patent cannot run 
longer than seventeen years. U. S. 
Rev. Stats. § 4887; Weston v. White, 
13 Blatchf. (U. S.) 364; s. c, 2 Bann. 
& Ard. Pat. Cas. 321; s. c, 9 Pat. Off. 
Gaz. 1 196. 

This provision does not extend to 
patents granted jirior to 1870. Goff v. 
Stafford, 3 Bann. & Ard. Pat. Cas. 
610; s.c, 14 Pat. Off. Gaz. 748; De Florez 
V. Raynolds, 8 Fed. Rep. 434; Badische 
etc. Fabrik v. Hamilton Mfg. Co., 3 
Bann. &L Ard. Pat. Cas. 235; s, c, 13 
Pat. Off. Gaz. 273. 

For decision on the prior statutes, 
see Smith v. Ely, 5 McLean (U. S.) 
76; O'Reilly v. Morse, 15 How. (U. 
S.) 62; Weston i'. White, 2 Bann. & 
Ard. Pat. Cas. 321; s. c, 13 Blatchf. 
(U. S.) 364; Nathan v. New York etc. 
R. Co., 2 Fed. Rep. 225; s. c, 5 Bann. 
& Ard. Pat. Cas. 2S0; Telghman v. 
Proctor, 102 U. S. 707; s. c, 19 Pat. 
Off. Gaz. 8^9; American etc. Boring 
Co. V. Sheldon, 17 Blatchf. (U. S.) 303; 
s. c, 4 Bann. & Ard. Pat. Cas. 603. 

Guaranty Trust Co. v. Sellers, 41 Pat. 
Off. Gaz. 1165. "An inventor taking 
out a patent in the first instance in this 
country, is entitled to seventeen years' 
protection; but, if he has previously ob- 
tained letters patent in one or more for- 
eign countries, then, while not deprived 
of his right to a patent here, the term to 
which the law in such case limits his 
protection is a period not extending 
be3'ond the date of the expiration of 
that one of the foreign patent first, 
expiring." United States v. Marble, 
22 Pat. Off. Gaz. 1365. 

4. Bate Refrigerator Co. v. Ham- 
mond, 129 U. S. 151; s. c, 46 Pat. Off, 



92 



Defenses to Action 



PA TENT LA W. 



for Infringement. 



not shortened by a termination of the foreign patent at a time 
previous to the length of the grant by any default of the owner of 
the foreign patent.* The American patent, where the existence of 
the foreign patent is known to the Patent Office, is limited on its 
face to the term of the foreign patent ; ^ but a failure to so limit 
it, neither invalidates the patent nor lengthens its term.* The 
foreign patent must be substantially identical with the American 
in order to limit the duration of the latter.* 

{e) That the Subject Matter is Unpatentable. — The 
subject matter of the patent is not such as the laws authorize a 
patent to be granted for.^ 

(/) Lack of Invention. — That the contrivance of the paten- 
tee did not involve the exercise of the inventive faculty.® This 
defense can be made sometimes on demurrer,''' on the plea at 



Gaz. 689; Consolidated Rolling Mill 
Co. V. Walker, 43 Fed. Rep. 575. 

Bj' this ruling the rulings in Reissner 
V. Sharp, 16 Blatchf. (U. S.) 383; s.c, 
4 Bann. & Ard. Pat. Cas. 366; s. c, 16 
Pat. Off. Gaz. 355; Henry v. Provi- 
dence Tool Co., 3 Bann. & Ard. Pat. 
Cas. 301; s. c, 14 Pat. Off. Gaz. 855; 
Bate Refrigerating Co. v. Gillett, 13 
Fed. Rep. 553; s. c., 22 Pat. Off. Gaz. 
1205; Gramme Electrical Co. ■:'. 
Arnaux etc. Electric Co., 17 Fed. Rep. 
838; s. c, 25 Pat. Off. Gaz. 1129, are 
overruled. See Huber v. Nelson Mfg. 
Co., 38 Fed. Rep. 830; s. c, 46 Pat. 
Off. Gaz. 1732, which has itself been 
overruled. 

1. Pohl V. Brewing Co., 134 U. S., 
381; s. c, 51 Pat. Off. Gaz. 156; Electric 
Light Co. V. Electric Lamp Co., 42 
Fed. Rep. 327; s. c, 52 Pat. Off. Gaz. 
1 1570; Holmes Electric Protective Co. ?'. 
Metropolitan Burglar Alarm Co., 22 
Blatchf (U. S.) 471; Paillard v. Bruno, 
29 Fed. Rep. 864; s. c, 38 Pat. Oft". Gaz. 
900. Overruling, Haber v. Mfg. Co., 
38 Fed. Rep. 830; s. c, 46 Pat. Off. 
Gaz. 1732. See Badische etc. Fabrik 
V. Hamilton Co., 3 Bann. & Ard. Pat. 
Cas. 235; s. c, 13 Pat. Off. Gaz. 273. 

This doctrine extends to a case 
where the patentee of a foreign patent, 
having the right to successive prolong- 
ations, fails to secure thera by neglect, 
it being held that this did not invali- 
date the American patent. Consoli- 
dated Roller Mill Co. v. Walker, 43^ 
Fed. Rep. 575. 

2. Opinion Sec. Int., 21 Pat. Off. Gaz. 
1 197. 

The Patent Ofiice can require the 
applicant to state whether he has any 
prior patent in foreign countries. 



United States v. Marble, 22 Pat. Off. 
Gaz. 1365; Ez parte Bland, 15 Pat. 
Off. Gaz. 828. 

3. Bate Refrigerating Co. v. Gillett, 
129 U. S. 151; s. c, 46 Pat. Off. Gaz. 
689; Canan v. Pound Mfg. Co., 23 
Blatchf (U. S.) 173; s. c, 23 Fed. Rep. 
185; s. c, 31 Pat. Off. Gaz. 119; Ameri- 
can Paper Barrel Co. v. Laraway, 28 
Fed. Rep. 141; s. c, 37 Pat. Off. Gaz. 
674; New American File Co. v. Nich- 
olson File Co., 8 Fed. Rep. 816; 
Siemens v. Sellers, 23 Pat. Off. Gaz. 
2234. Overruling Paillard v. Gautschi, 
20 Pat. Off. Gaz. 1893. 

4. Siemens v. Sellers, t6 Fed. Rep. 
856; s. c, 23 Pat. Off. Gaz. 2234; Clark 
V. Wilson, 28 Fed. Rep. 95; Commer- 
cial Mfg. Co. V. Fairbank Canning Co., 
36 Pat. Off. Gaz. 1473; s. c, 27 Fed. 
Rep. 78. 

Where the differences between the 
thing shown and described in the two- 
patents are merelj' differences of degree, 
the two patents are subtantially the 
same. Commercial Mfg. Co. v. Fair- 
bank Canning Co., 27 Fed. Rep. 78. 

5. 3 Rob. on Pat., ^§ 962, 968. 

See supra. Art Machine Manufac- 
ture, Composition of Matter. 

' This defense may be set up at the 
hearing. Guidet v. Barber, 5 Pat. Off. 
Gaz. 149; Hendy v. Iron Works, 127 U. 
S. 370; s. c, 43 Pat. Off. Gaz. 1117. 

Or can be made on demurrer. Walk- 
er on Patents, § 598. 

Or made under a general denial ot 
patentable novelty in the answers. Gui- 
det f. Barber, 5 Pat. Off. Gaz. 149. 

6. See article, " Invention" 

7. Robinson on Patents, § 959. This, 
must be where it will clearly appear, on 
inspection, by the application of judicial 



93 



Defenses to Action 



PA TENT LA W. 



for Infringement. 



law,^ or in the answer in equity,^ or set up at hearing.* 

{g) Patent Different from Application. — That the in- 
vention claimed in the patent is substantially different from any 
invention described, suggested or indicated in the original appli- 
cation.* 

{k) Reissue Invalid. — That the reissue patent is invalid on 
account of its being reissued illegally." 

(z) Unlawful Extension. — That the patent had been un- 
lawfully extended.® 

{/) Unlawful Amendment by Representative. — That 
the representative of the inventor subsequently unlawfully 
amended the application without making a new oath.' 

{k) Lack of Title in Plaintiff to Bring Suit. — That the 
plaintiff is not the owner of the letters patent sued^ on or is not 
the sole owner ; ® that he is not the inventor^" or the sole inven- 
tor; 11 or of two claiming to be joint inventors that they are not 
such inventors. 1* 



knowledge, that there is no invention. 
Eclipse Mfg. Co. v. Adkins, 36 Fed. 
Rep. 1554; West v. Rae, 33 Fed. Rep. 
45; Blessing v. John Trageser etc. 
■Copper Works, 34 Fed. Rep. 753. 

1. Walker on Patents (2nd ed.), ^ 
446. But cannot be set up on pleas in 
«quitj. Walker on Patents (2nd ed.), 

■4 594- 

2. It is not necessary to state the facts 
intended to be proved in its support. 
Walker on Patents, § 599; Vana v. 
Campbell, i Black (U. S'.) 430. 

3. Slawson v. Grand St. etc. R. Co., 
17 Blatchf. (U. S.) 512; o. c, 5 Bann. & 
Ard. Pat. Cas. 210; s. c, 4 Fed. Rep. 
531; ». c, 24 Pat. Off. Gaz. 99; Gard- 
ner w. Hertz, 118 U. S. 1 180; s. c, 35 
Pat. Off. Gaz. 999; Mahn v. Harwood, 
112 U. S. 354; s. c, 30 Pat. Off. Gaz. 

■657- 

4. Walker on Patents (2nd ed.), §§ 
440,450,603; Chicago etc. R. Co. v. Sav- 
les, 97 U. S. 5,63; Kittle v. Hall, 29 Fed. 
Rep. 508; Eagleton Mfg. Co. v. West 
etc. Mfg. Co., Ill U. S.490; Woodbury 
etc. Planing Mach. Co. v. Keith, loi 
U. S. 479; Lindsay v. Stein, 10 Fed. 
Rep. 913; United States etc. Rifle Co. v. 
Whitney Arras Co., 14 Blatchf (U. S.) 
98; s. c.,2 Bann. & Ard. Pat. Cas. 293; 
s. c, 1 1 Pat. Off. Gaz. 373 ; Bevin t'. East 
Hampton Bell Co., 9 Blatchf. (U. S.) 
50; s. <-., 5 Fish. Pat. Cas. 23. 

But a liberal construction is to be 
adopted in considering this question. 
Brush Electric Co. v. Julien Electric 
Co., 41 Fed. Rep. 679; Electrical Ac- 
cumulator Co. V. Julien Electric Co., 
38 Fed. Rep. 117. 



B. See Reissue. 

At law this defense is made by spec- 
ial plea. Walker on Patents, §§ 457, 458, 

459- 

In equity where both the original and 
reissued patents are incorporated in the 
bill, this defense can be made by de- 
murrer, otherwise by answer, though 
the broadening of claims after delay 
may be taken advantage of at the hear- 
ing. Walker on Patents (2r,d ed.), §§ 
610, 611 and 612; International Terra 
Cotta Lumber Co. v. Maurer, 44 Fed. 
Rep. 61S. 

6. See Extension of Patent, infra. 

Raised by special plea at law in equi- 
ty by demurrer when sufficient facts ap- 
pear on the record; otherwise bj' ans- 
wer. Walker on Patents 2nd. Ed. §^ 
.52.';. 613. 

7. This defense may be made with 
special notice, or setting it up in the 
answer. Eagleton Mfg. Co. v. West 
Bradley etc. Mfg. Co., iii U. S. 490; 
s. c, 27 Pat. Off. Gaz. 1237. 

8. See Parties Plaintiff, supra. 

Walker on Pat. 2nd. Ed. § 617; Pro- 
vidence Rubber Co. v. Goodyear, 9 
Wall. (U. S.) 788; Dueber Watch Case 
Mfg. Co. V. Faley's Watch Case Co., 
45 Fed. Rep. 697. 

9. See Parties Plaintiff, stifra. 

10. See Invention, Diligence, supra. 
. The manner of setting up this defense 
is same as above. 

11. See Joint Inventors. Sole In- 
ventors. 

12. See Joint Inventors. .Sole In- 
ventors. 

The defenses of notes four and five 



94 



^Jefenses to Action 



PA TENT LA IV. 



for InfringeAent. 



( /) NON-INFRINGEMENT. — The non-infringement of the device 
by the defendant is a good defense.^ 

(m) Limitations. — That the cause of action is barred by a 
:statute of limitation.** 

4. Defenses to Costs and Damages. — As a defense to plaintiff's 
■claim for costs, defendants may aver an undue delay to enter a 
■disclaimer ;3 and the recovery of damages, that the goods were 
not marked patented in accordance with the law, and that no 
notice had been given of the fact of infringement* 

5. Estoppel of Defendant to Set Up Certain Defenses. — An assignor, 
■when sued by his assignee, is estopped from setting up the invalid- 
.ity of the patent* or his lack of title at the time of the assign- 



must be made at law under special plea. 
Walker on Patents (2nd ed.), ^ 452. In 
■equity they may be raised by a plea or 
in the answer. Walker on Patents, § 
'605. Adams v. Howard, 22 Blatchf. 
(U. S.) 47. 

1. See article Infringement, supra. 
Whittemore v. Cutter, i Gallis (U. S.) 

.424; ». c, I Robb Pat. Cas. 28. 

How Made. — This defense must be 
■clearly set up in the answer. Jordan 
V. Wallace, 5 Fish. Pat. Cas. 185; The- 
berath v. Rubber etc. Trimming Co., 5 
Bann. & Ard. Pat. Cas. 585; Sharp v. 
Reissner, 20 Blatchf. (U. S.) 10. 

Is admissible under general issue at 
-law. Blanchard v. Puttman, 3 Fish. 
Pat. Cas. 186; Dunbar v. M^-ers, 94 
U. S. 19S; Eachus v. Broomall, 115 U. 
S. 434; Grier v. Wilt, 120 U. S. 412. 
And cannot be set up in special 
plea. Hubbell v. DeLand, 11 Biss. 
(U. S.) 382; s. c, 14 Fed. Rep. 471; 
s. c, 22 Pat. Oflf. Gaz. 1883. 

2. Whether the State statutes apply 
is doubtful. See Limitation, supra. 

Also McGinnis v. Erie Co., 45 Fed. 
Rep. 91; May v. Buchanan Co., 29 
Fed. Rep. 469; May v. Cass Co., 30 
Fed. Rep. 762; May v. Ralls Co., 31 
Fed. Rep. 473. 

Prior to July 8, 1870, no U. S. stat- 
ute of limitations applied to patent 
cases. Wood v. Cleveland Rolling 
Mill Co., 4 Fish. Pat. Cas. 550. 

This statute (Stats, at Large, vol. i6, § 
55) provided that all actions for the 
infringement of patents be brought 
within six years from the expiration of 
the patent, was not re-enacted by the 
Revised Statutes. Robinson on Pat., § 
■gSo; May v. Logan Co., 30 Fed. Rep. 
250; s. c, 41 Pat. Off. Gaz. 1387. 

The rights of action accruing under 
patents that expired during that time 
were subject to the rule. Hayden v. 



Oriental Mills, 22 Fed. Rep. 103. See 
on this subject, Sayles v. Richmond 
etc. R. Co., 3 Hughes (U. S.) 172; s. c, 
4 Bann. & Ard. Pat. Cas. 239; s. c, 16 
Pat. Off. Gaz. 43; Vaughan v. East 
Tennessee R. Co., i Flipp. (U. S.) 621; 
». c, 2 Bann. & Ard. Pat. Cas. 537; 
s. c, II Pat. Off. Gaz. 789; Hayward 
V. St. Louis, 3 McCrary (U. S.') 614; 
s. c, II Fed. Rep. 427. 

This defense must be especially 
pleaded or it will be disregarded. 
Neale v. Walker, i Cranch (C. C.) 57; 
I Chitty on Pleading 498; Walker on 
Patents (2nd ed.), § 471. 

Several pleas covering different 
times may be filed. Hayden v. Orien- 
tal Mills, 22 Fed. Rep. 103. 

In equity this defense is made under 
demurrer, where the bill states the time 
within which the infringement was 
committed; otherwise by plea or ans- 
wer. Walker on Pat. (2nd ed.), § 622; 
Adams v. Bridgewater Iron Co., 6 
Fed. Rep. 179. 

3. See Disclaimer, supra. 

This defense must be made in an 
action at law by special plea; in equity 
by answer or plea. Walker on Pat- 
ents, §§ 456, 609. In answer only. 
Worden v. Searls, 21 Fed. Rep. 574. 

4. See Failure to Mark Patented 
Article, infra; U. S. Rev. Stats., § 
4900; Goodyear v. Allyn, 6 Blatchf. (U. 

S.) 33- 

See Marking Article Patented, 
infra. 

Should be made at law by special 
plea. Walker on Pat. (2nd ed.), 463. 

In equity- by plea or in the answer. 
Walker on Pat. (2nd ed.), § 616. In 
answer only. Sessions v. Romadka, 
21 Fed. Rep. 124. 

6. Time Tel. Co. v. Heimner, 19 
Fed. Rep. 322; Curran v. Burdsall, 20 
Fed. Rep. 835; Rumsey v. Buck, 20 



9S 



Flea in Eqmty. 



PA TENT LA IV. 



Flea in Equity.. 



ment ;^ nor can one who has acknowledged in some agreement, for 
value, complainant's rights, afterwards dispute them.* 

XIII. Plea in Eciuity. — The plea must present a single point 
going to a complete defense.* Setting it down for argument is- 



Fed. Rep. 697; Burdsall v. Curran, 31 
Fed. Rep. 918; Parkhurst v. Kinsman, 
I Blatchf. (U. S.) 48S; Newell v. West, 
13 Blatchf. (U. S.) 114; Underwood v. 
Warren, 21 Fed. Rep. 573; Parker v. 
Mckee, 24 Fed. Rep. 808; s. c, 32 Pat. 
Off. Gaz. 137; Alabastine Co. v. 
Payne, 27 Fed. Rep. 559; American 
Barrel Co. v. Laraway, 28 Fed. Rep. 
141; Burdsall v. Curran, 31 Fed. Rep. 
918; Adee v. Thomas, 41 Fed. Rep. 

343- 

An assignor cannot acquire a prior 
patent against his assignee. Curran v. 
Burdsall, 20 Fed. Rep. 835. 

See, however, King v. Gedney, 20 
Law. Rep. (U. S.) 6^1. 

1. Newell V. West, 13 Blatchf. (U. 
S.) 114; s. c, 2 Bann. & Ard. Pat. Cas. 
113; s. c, 8 Pat. Off. Gaz. 598; Her- 
bert V. Adams, 4 Mason (U. S.) 15. 
See, however, Kearney v. Lehigh Val- 
ley R. Co., 27 Fed. Rep. 699. 

For examples of other estoppels pre- 
venting defenses to patents, see Carroll 
V. Gambrill, i McArthur Pat. Cas. 
581; Downton v. Yeager Milling Co., 
I McCrary (U. S.) 26; s. c, i Fed. 
Rep. 199; s. c, 5 Bann. & Ard. Pat. 
Cas. 112; s. c, 17 Pat. Off. Gaz. 906; 
Time Tel. Co. v. Carey, 22 Blatchf. 
(U. S.) 34; s. c, 19 Fed. Rep. 322; s. c, 

26 Pat. Off. Gaz. 826. 

But the fact that the defendants have 
adopted the complainant's device 
bodily, and have used and sold it in 
preference to prior structures, does not 
estop them from questioning its patent- 
ability. Siinmonds v. Morrison, 44 
Fed. Rep. 757. 

2. Baltimore Car Wheel Co. v. North 
Baltimore etc. R. Co., 21 Fed. Rep. 47; 
Eclipse Windmill Co. v. May, 17 Fed. 
Rep. 344; Washburn etc. Mfg. Co. v. 
Cincinnati etc Co., 22 Fed. Rep. 712; 
Pope Mfg. Co. f. Owsley, 27 Fed. 
Rep. 100; Morse Arms Co. v. United 
States, 16 Ct. of CI. 296; Clark v. 
Amoskeag Mfg. Co., 62 N. H. 612. 

An estoppel of a licensee does not 
arise when the licensee stands out 
from under his license. Brown v. 
Lapham, 23 Blatchf. (U. S.) 475; s. c, 

27 Fed. Rep. 77; s. <_., 37 Pat. Ofif. Gaz. 
676. 

Or where the complainant elects to 



treat licensee as infringer. Baltimore 
Car Wheel Co. v. North Baltimore- 
etc. R. Co., 21 Fed. Rep. 47. 

A grantee of a patent is not estoppedi 
from denying its validity out of his- 
territory. Hobbie v. Smith, 27 Fed.. 
Rep. 656. 

3. Reissner v. Anness, 3 Bann. & Ard.. 
Pat. Cas. 148; s. c, 12 Pat. Off. Gaz. 842;, 
White V. Lee, 4 Fed. Rep . 916; Gra- 
ham tj. Mason, 4 Cliff. (U. S.) 88; s. c.,. 

5 Fish. Pat. Cas. i; Giant Powder Co.,. 
V. Safety Nitro Powder Co., 10 Sawy. 
(U. S.) 23; s.c, 19 Fed. Rep. 509; s. c, 
27 Pat. Off. Gaz. 99; Secombe v. Camp- 
bell, 18 Blatchf. (U. S.) 108. 

A plea is intended to dispose of the 
case on a single issue; it will not be al- 
lowed where it will cause the case to be- 
ti-ied piece meal. Giant Powder Co.. 
V. Safety Nitro Powder Co., 19 Fed.. 
Rep. 509. 

Where the plea is double the respond- ' 
ent may elect which ground he will' 
stand on. Reissner v. Anness, 3 Bann.. 

6 Ard. Pat. Cas. 148; s. c, 12 Pat. Off> 
Gaz. 842. And permission may some- 
times be obtained to plead double.. 
Winne v. Snow, 19 Fed. Rep. 507. 

Defenses Whicb May be Set Up by Flea. — 
Non-joinder of necessary party. Ham- 
mond V. Hunt, 4 Bann. & Ard. Pat.. 
Cas. Ill; Wallace!'. Holmes, 9 Blatchf. 
(U. S.) 65; s. c, s P'ish. Pat. Cas. 37;, 
s.c, I Pat. Off. Gaz. 117; Goodyear v.. 
Toby, 6 Blatchf. (U. S.) 130. Thatthe- 
complainant alleged to be a corporation, 
is not incorporated. Goodyear Dental. 
etc. Co. V. Wetherbee, 3 Cliff. (U. S.) 
555; s. 1.., 3 Fish. Pat. Cas. 87. ii> 
pendens, Wheeler v. McCormick, S 
Blatchf. (U. S.) 267; 4 Fish. Pat. Cas.. 
483. That reissue is void as not for 
same invention as original. Hubbell 
V. DeLand, 12 Pat. Off. Gaz. 1883. 

That the plaintiff is only a licensee. 
Cottle I'. Krementz, 25 Fed. Rep. 494.^ 

To the jurisdiction of equity that the 
patent has expired. Edison Electric 
Light Co. V. United States Electric- 
Light Co., 35 Fed. Rep. 134. That the 
defendants had settled the damages. 
Burdell v. Denig, 15 Fed. Rep. 347. 
That defendant is suing on a patent, 
which has been surrendered for reissue^ 
Burrell v. Hackley, 35 Fed. Rep. 833. 



Demnrrer. 



PA TENT LA W. 



Demurrer. 



an admission of tlie facts alleged^ and a waiver of irregularities." 
When a plea is overruled the defendant is permitted to answer' 
and sometimes the plea is allowed to remain as the answer or 
part of the answer.* 

XVI. Demurrer. — A demurrer, at law or in equity, is to take 
advantage of defects appearing upon record.^ 



Defenses Which Cannot be Set Up In a 
Plea. — Infringement. Korn v. Wil- 
busch, 33 Fed. Rep. 50; Matthews v. 
Lalar.ce Mfg. Co., 18 Blatchf. (U. S.) 
84; s. c, 5 Bann. & Ard. Pat. Cas. 319; s. 
c, 2 Fed. Rep. 232; s.c, 17 Pat. Off. Gaz. 
1284. 

Where the determhiation of the is- 
sues sought to be raised by the plea, re- 
quired the patents specified in the bill 
to be examined and passed on bj the 
court, the defendant will be ordered to 
answer. White v. Lee, 4 Fed. Rep. 
916. Every plea should have certifi- 
cate and affidavit of counsel; but this is 
waived by demurrer and argument to 
the merits. Goodyear v, Tobj', 6 
Blatchf. (U. S.) 130. 

1. Wheeler v. McCormick, 8 Blatchf. 
(U. S.) 267; s. c, 4 Fish. Pat. Cas. 433; 
I3irdseye v. Heilner, 26 Fed. Rep. 147. 

2. Goodyear v. Toby, 6 Blatchf. (U. 
S.) 130. But a replication filed where 
the plea is bad in substance does not 
prevent it from being overruled. Mat- 
thews V. Lalance etc. Mfg. Co., 18 
Blatchf. (U. S.) 84; s. c, 2 Fed. Rep. 
232; s. c, 17 Pat. Off. Gaz. 1284; s. c, 5 
Bann. & Ard. Pat. Cas. 319. 

Right to Begin and Close. — If a repli- 
cation is filed, complainant has right to 
begin and close. Reissner v. Anness, 
3 Bann. & Ard. Pat. Cas. 176; s. c, 13 
Pat. Off. Gaz. 870. 

3. Wooster v. Blake, 7 Fed. Rep. 
816; s. c, 20 Pat. Off. Gaz. 158. 

The matter litigated bj' a plea can- 
not generally be raised again b^' an 
answer. Hubbell w. DeLand, 11 Bliss. 
(U. S.) 383. 

But the court may permit an answer 
to be filed upon terms raising the 
same point. Matthews v. Lalance etc. 
Mfg. Co., 18 Blatchf. (U. S.) 84. 

Exception as to Flea in Confession and 
Avoidance — A plea confessing and 
avoiding, where the matter in avoid- 
ance is decided against the plea, being 
overruled, and the main facts of the 
bill admitted by the plea, warrants a 
a decree for complainant Lilienthal 
tj. Washburn, 8 Fed. Rep. 707. 

4. Albright V. Empire Trans. Co., 14 
Pat. Off. Gaz. 523. 



Where a defendant makes a plea part 
of his answer, he will not be compelled 
more or otherwise than if he had filed a 
regular plea. Adams v. Bridgewater 
Iron Co., 6 Fed. Rep. 179. 

5. Laches of complainant can be 
raised by demurrer. McLaughlin v. 
People's R. Co., 21 Fed. Rep. 574. 

Where, in an equity suit, the defend- 
ant desires to avail himself of the de- 
fense that the patent is. too near its ex- 
piration to warrant an injunction. 
New York Grape Sugar Co. v. Peoria 
Grape Sugar Co., 21 Fed. Rep. 878. 
Or that two patents do not interfere 
with each other. Morris v. Kemp- 
shall Mfg. Co., 20 Fed. Rep. 121. Or 
that plaintiff had not alleged that de- 
fendant had not derived right from a 
licensee who had power to give such 
right. Still V. Reading, 4 Woods (U. 
S.) 345; s. c, 9 Fed. Rep. 40; s. c, 20 
Pat. Off. Gaz. 1025. Or that a license 
was not averred to be properly' re- 
voked. White V. Lee, 3 Fed. Rep. 
222; Bloomer v. Gilpin, 4 Fish. Pat. 
Cas. 50. 

Where profert is made an objection 
to, it may be taken by demurrer. Bo- 
gart V. Hinds, 25 Fed. Rep. 484; s. c, 
33 Pat. Off. Gaz. 1268. 

A demurrer to a bill joining in one 
action a corporation and its assignee, 
alleging that the causes of action 
against the corporation and its assignee 
are distinct is bad. Gordon -v. St. 
Paul Harvester Works, 23 Fed. Rep. 

147- 

Questions of Pleading. — Questions of 
pleading must be raised by demurrer. 
Pellam v. Edelmeyer, 21 Blatchf. (U. 
S.) 188; Gillespie v. Cummings, 3 
Sawy. (U. S.) 259; Hodge v. North 
Missouri R. Co., i Dill. (U. S.) 104; 
Case V. Redfield, 4 McLean (U. S.) 
526; Phillips V. Comstock, 4 McLean 
(U. S.) 525; Wilder v. McCormick, 2 
Blatchf. (U. S.) 31; Peterson v. 
Wooden, 3 McLean (U.S.) 248; Stan- 
ley V. Whipple, 2 McLean (U. S.) 35; 
Dobson V. Campbell, i Sumn. (U. S.) 
319; Tryon v. White, i Pet. (C. C.) 96; 
Evans v. Kremer, i Pet. (C. C.) 215; 
Evans v. Eaton, i Pet. (C. C.) 322. 



18 C. of L.— 7 



97 



Answer, 



PA TENT LA W. Responaively and as Defense. 



XV. Answer — 1. Responsively and as Defense. — All the material 
allegations of the bill must be answered ; * but if the answer re- 
sponds to the bill the defendant is in no default by refusing to 
answer any part thereof to which he is not specially interrogated;^ 
and all allegations of defense, which cannot be made at hearing, 
made.* 



A bill which alleges both joint and 
several infringement by the defendants, 
is demurrable. Putnam v. HoUender, 
19 Blatchf. (U. S.) 48. Or to a bill 
bad for multifariousness. Hayes v. 
Dayton, i8 Blatchf. (U. S.) 420. 

A demurrer can be liled to a replica- 
tion where the latter sets up a new de- 
fense. Burdell v. Denig, 15 Fed. Rep. 

397- 

A demurrer to a bill entitled to the 
circuit court act, in chancery sitting, is 
bad. Sterrick v. Pugsley, i Flipp. (U. 

S.) 35°- 

A demurrer to a bill which did not 
allege the location of complainants and 
which was not sworn to, has been ovei"- 
ruled. National Hay Rake Co. v. 
Harber, 2 W. N. C. (Pa.) 100. 

Waiver of Right to Demur. — Putting 
in an answer to the whole bill is a 
waiver of the right to demur. Adams 
V. Howard, 20 Blatchf. (U. S.) 38; s. c, 
9 Fed. Rep. 347; s. c, 21 Pat. Off. Gaz. 

364- 

To What Demurrer Must Apply. — A 
demurrer must apply only to the plead- 
ing which is bad or it will be over- 
ruled. 2 Curt. (U. S.) 97. 

A demurrer may, where there are 
special grounds for action, be sustained 
in part and overruled in part. Interna^ 
tional Co. v. Maurer, 44 Fed. Rep. 61S. 

But a demurrer should not be filed 
to a mere surplusage. Stirratt •:'. Ex- 
celsior Mfg. Co., 44 Fed. Rep. 142. 

A demurrer to a bill for infringe- 
ment on the ground that there was no 
invention in the devise patented, will 
not be sustained unless the case is a 
very clear one. Blessing v. John 
Trageser Steam Copper Works, 34 
Fed. Rep. 753; Standard Oil Co. v. 
Southern Pac. R. Co., 42 Fed. Rep. 
295. See yudicial Knowledge, infra, 

But where by judicial knowledge, 
upon an inspection of the device, the 
■court can see there is no invention, it 
will sustain a demurrer and dismiss the 
bill. West V. Rae, 33 Fed. Rep. 45. 

A demurrer will not lie to a "no- 
tice" under the statute of special de- 
fenses. Henry v. United States, 22 
•Ct. of CI. 75. 



1. Perry v. Corning, 6 Blatchf. (U. 
SO 134; Jordan v. Wallace, 5 Fish. 
Pat. Cas. 185; Agawam Co. t;. Jordan, 
7 Wall. (U. S.) 5S3. 

Irresponsive Sworn Answer Not Evi- 
dence for Defendant. — An answer under 
oath which is irresponsive to the bill, 
is not evidence for the defendant. Sar- 
gent V. Lamed, 2 Curt. (U. S.) 340. 

The answer must be on "knowledge, 
information and belief," not on knowl- 
edge only, if all three are required. 
Parks V. Bryan, i Story (U. S.) 296. 

A corporation cannot be compelled 
to answer under oath, but can be made 
to answer fully where oath is waived. 
Colgate V. Campagnie Francaise du 
Telegraphe, 23 Fed. Rep. 82. 

The answer must be by the party and 
not by the attorney. Wooster v. 
Muser, 20 Fed. Rep. 162. And be 
sworn to, unless, the oath is waived, by 
all the parties professing to answer. 
Washing Machine Co. v. Young, i 
Bann. & Ard. Pat. Cas. 362. 

2. Brooks v. Bicknell, 3 McLean 
(U. S.) 250; s. c, 2 Robb Pat. Cas. 118. 

If the bill requires an answer under 
oath to ceitain interrogatories, the rest 
of the answer is not evidence of facts 
averred therein. Wren v. Spencer etc. 
Mfg. Co., 5 Bann. & Ard. Pat. Cas. 61; 
s. c, 18 Pat. Off. Gaz. 857. 

Separate answers may, if defendant 
so desires, be filed to each patent sued 
on. Kelleher v. Darling, 4 Cliff. (U. 
S.) 424; s. c. 3 Bann. & Ard. Pat. Cas. 
438; s. c, 14 Pat. Off. Gaz. 673. 

3. Goodyear v. Providence Rubber 
Co., 2 Fish. Pat. Cas. 499; s. c, 2 CUff. 
(U. S.) 351 ; Yale etc. Mfg. Co. v. North, 
3 Fish. Pat. Cas. 279; s.c, 5 Blatchf. (U. 
S.) 455; Howes v. Nute, 4 Cliff. (U. 
S.) 173; s. c, 4 Fish. Pat. Cas. 263; 
Russell Mfg. Co. t'. Mallory, 10 Blatchf. 
(U. S.) 140; s. c, 5 Fish. Pat. Cas. 632; 
s. c, 2 Pat. Off. (jaz. 495; Jennings v. 
Pierce, 15 Blatchf. (U. S.) 42; s. c, 3 
Bann. & Ard. Pat. Cas. 361; Wonson 
V. Peterson. 3 Bann. & Ard. Pat. Cas. 
259; s. c, 13 Pat. Off. Gaz. 548; Bragg 
V. Stockton, 27 Fed. Rep. 509. 

Clearness of Defense. — The defense 
must be. set up clearly.. Puetz v. 



Answer, 



PA TENT LA W. Exceptions and Replications. 



2, Exceptions and Replications. — Where a defect in the answer is 
a proper subject for amendment, the objection should be taken 
by exception,^ and a repHcation filed where the matters pleaded 
in defendant's answer or plea are to be put in issue.* 

3. Amendment of Answer. — Defects in answer must be cured by 
amendments;* and an amendment which presfents a new defense 
or makes more than a formal alteration in the bilH must show 
that the matter of the proposed amendment could not have been 
introduced into the answer sooner by using reasonable diligence.^ 



Bransford, 31 Fed. Rep. 458; Day v. 
Combination Rubber Co., 2 Fed. Rep. 
570; ». c, 5 Bann. & Ard. Pat. Cas. 
385; s. c, 17 Pat. Off. Gaz. 1347; Jordan 
V. Wallace, i Leg. Gaz. Rep. (Pa.) 
354; Fisher v. Hayes, 19 Blatchf. (U. 
S.) 26; s. c, 6 Fed. Rep. 76; s. i,., 20 
Pat. Off. Gaz. 239. 

A matter which does not constitute 
a bar, but which will be considered in 
determining the relief to be granted, is 
proper to be set up in the answer. 
Sun Vapor Street Light Co. v. Cedar 
Rapid, 39 Fed. Rep. 698. 

Apparently where a sufficient de- 
fense has been set up once, a new de- 
fense cannot be made. Consolidated 
Electric Light Co. v. Brush etc. Elec- 
tric Light Co., 22 Blatchf. (U. S.) 206. 

1. Foster's Federal Practice, § 153, 
and cases there cited. Graham v. 
Mason, 4 Cliff. (U. 8.) 88; s. c, 5 Fish. 
Pat. Cas. i; Steam Gauge etc. Co. v. 
McRoberts, 26 Fed. Rep. 765; Stirratt 
V. Excelsior Mfg. Co., 44 Fed. Rep. 
142. 

A failure to except and to move to 
take answer of files, or to have bill 
taken fro confesso, admits the answer 
to be sufficient. , Morris v. Kemphall 
Mfg. Co., 20 Fed. Rep. 121. 

In certain cases, exceptions will not 
be permitted to be filed without leave. 
Allis V. Stowell, 10 Biss. (U. S.) 57. 

2. Foster's Fed. Practice, §§ 156, 157, 

'58. 159- ^, ,. . 

Complainant cannot file a replication 
after trying his case on bill and answer. 
BuUinger v. Mackey, 14 Blatchf. (U. 

s.) 355. 

Complainant may be allowed to file 
a replication nunc fro tunc on sufficient 
excuse. Robinson v. Randolph, 4 
Bann. & Ard. Pat. Cas. 163. 

A replication cannot make out a 
different case. Burdell v. Denig, 15 
Fed. Rep. 397. But a replication con- 
taining a general traverse and special 
matter may be good for the general 
traverse, and the special matter be dis- 



regarded. Wren v. Spencer etc. Mfg. 
Co., 5 Bann. & Ard. Pat. Cas. 61; 
s. c, 18 Pat. Off. Gaz. 857. But a re- 
plication may be special and in avoid- 
ance. Goodyear v. McBurney, 3 
Blatchf. (U. S.) 32. 

The want of a replication cannot be 
objected to, after parties have pro- 
ceeded to take testimony on the merits. 
Fischer v. Wilson, 16 Blatchf. (U. S.) 
220; s. c, 4 Bann. & Ard. Pat. Cas. 228; 
s. c, 16 Pat. Off. Gaz. 455. 

If a replication is sufficient other 
matter will be treated as surplusage 
merely. Wren v. Spencer etc. Mfg. 
Co., 5 Bann. & Ard. Pat. Cas. 61; s. c, 
18 Pat. Off. Gaz. 857. 

Form of Plea. — See Wheeler v. Mc- 
Cormick, S Blatchf. (U. S.) 267. 

Effect of Decree on Plea. — See Keller 
V. Stolsenbach, 20 Fed. Rep. 47; s. c, 
27 Pat. Oft". Gaz. 209. 

Eeplicatlou to a Plea. — A replication 
to a plea admits its sufficiency both in 
form and substance. Bean v. Clark, 
40 Pat. Off. Gaz. I ).54; Birdseye v. 
Heilner, 26 Fed. Rep. 1^7; s. c, 34 Pat. 
Off. Gaz. 139 2. 

Replication to Answer. — A replica- 
tion to an answer is a waiver to de- 
fects therein or to its insufficiency. 
Wooster v. Muser, 20 Fed. Rep. 162. 

3. Doughty T'. West, 2 Fish. Pat. 
Cas. 553; Dental Vulcanite Co. v. 
Wetherbee, 3 Fish. Pat. Cas. 87; s. c, 2 
Cliff. (U. S.) 555; Babcock etc. Co, v. 
Pioneer Iron Works, 34 Fed. Rep. 33S. 

Leave to amend in other than formal 
matters, is in the discretion of the court. 
Pentlarge r>. Beeston, 4 Bann. & Ard. 
Pat. Cas. 23. And will sometimes 
OT\y be granted on terms. Underwood 
V. Gerber, 37 Fed. Rep. 796. 

4. Brown v. Hall, 6 Blatchf. (U. S.) 
401; s. c, 3 Fish. Pat. Cas. 531; Roberts 
V. R^'er, 6 Fish. Pat. Cas. 203; s. c, 11 
Blatchf. (U. S.) 11; s. c, 3 Pat. Off. 
Gaz. 550. 

5. India Rubber Comb Co. t . Phelps, 
8 Blatchf. (U. S.) 85; s. c, 4 Fish. Pat. 



99 



Motions. 



PA TENT LA W. 



Motions. 



Especially a fact admitted generally will not be allowed to be 
denied by an amendment,' nor a new defense dependent wholly 
on parol evidence be permitted to be set up.^ 

XVI. Motions. — Where suits are brought which, in reality, all 
embrace the same cause of action, the court will, on motion, con- 
solidate them ; * or where the pleadings contain scandal or imper- 
tinence, the court will, on motion or exception, cause the same to 
be stricken out.* 



Cas. 315; Rumford Chemical Works 
V. Hecker, 2 Bann. & Ard. Pat. Cas. 
3151; Hitchcock V. Tremaine, 9 Blatchf. 
(U. S.) 550; s. c, 5 Fish. Pat. Cas. 537; 
s. c, I Pat. Off. Gas. 633; Richardson 
V. Croft, II Fed. Rep. 800; s. c, 20 Pat. 
Off. Gaz. 372; Ruggles z<. Eddy, 11 
Blatchf. (U. S.) 524; s. c, 5 Fish. Pat. 
Cas. 583; Snow v. Tapley, 3 Bann. & 
Ard. Pat. Cas. 228; s. c, 13 Pat. Off. 
Gaz. 548; Roberts v. Ryer, 6 Fish. Pat. 
Cas. 293; s. c, I L. Blatchf. (U. S.) 11; 
». c, 3 Pat. Off. Gaz. 550. 

Instead of amending, defendant is 
sometimes permitted to file a supple- 
mental answer. Morehead v. Jones, 3 
Wall'. Jr. (C. C.) 306. 

Costs on Amendment. — Upon an 
amendment of the answer, a portion of^ 
the costs may be placed on the defend- 
ant. Morehead v. Jones, 3 Wall. Jr. 
(C. C.) 306; Roberts v. Buck, i Holmes 
(U. S.) 224; s. c, 6 Fish. Pat. Cas. 325; 
s. c, 3 Pat. Off. Gaz. 268. 

Effect of Amendment on Admissibility 
of Testimony. — An amendment to an 
answer will not make testimony ad- 
missible which was taken under ob- 
jection before the answer was amended. 
Roberts v. Buck, i Holmes (U. S.) 
224; s. c, 6 Fish. Pat. Cas. 325; s. c, 3 
Pat. Off. Gaz. 268. 

Element of Surprise to Plaintiff. — If 
the answer contains a general aver- 
ment, and the amendment is to partic- 
ularize this averment, and the plaintiff 
will not be taken by surprise, the de- 
fendant may be allowed to amend even 
at final hearing. Brown v. Hall, 6 
Blatchf. (U. S.; 401; s. c„ 3 Fish. Pat. 
Cas. 531; Roberts v. Ryer, 11 Blatchf 
11; s. c, 3 Pat. Off. Gaz. 55; s. c, 6 
Fish. Pat. Cas. 293. 

1. Pentlarge v. Beeston, 15 Blatchf. 
(U. S.) 347; s. c, 4 Bann. & Ard. Pat. 
Cas. 23; Morehead v. Jones, 3 Wall. 
Jr. (C. C.) 306; Ruggles v. Eddy, 11 
Blatchf (U. S.) 524; s. c, 5 Fish. Pat. 
Cas. 5S1; Webster Loom Co. v. Hig- 
gins, 13 Blatchf (U. S.) 349; s. c, 16 
Pat. Off. Gaz. 665. 



2. India Rubber Comb Co. v. 
Phelps, 8 Blatchf (U. S.) 85; s. c, 4 
Fish. Pat. Cas. 315. Nor of any alle- 
gation where there is doubt if evidence 
can be procured to sustain it. Hicks 
V. Otto, 17 Fed. Rep. 539. 

An assignee of a patent can amend 
his bill by introducing a claim for 
damages by a prior infringement. New 
York Grape Sugar Co. v. Buffalo , 
Grape Sugar Co., 20 Fed. Rep. 505. 
Nor can an amendment be made which 
would virtually make a new suit. 
Goodyear v. Bourn, 3 Blatchf (U. S.) 
266. 

Time When Amendment Can Be Made. 
— There is no fixed time within which 
amendments must be made; they can 
be made even after final hearing. 
Brown w. Hall, 6 Blatchf (U. S.) 401; 
o. c, 3 Fish. Pat. Cas. 531. 

Effect of Amendment. — An amend- 
ment does not, of itself, permit the ad- 
mission of testimony which, though 
admissible under the amendment, 
would not be admissible under the 
original answer. Roberts -v. Blake, 3 
Pat. Off. Gaz. 268. But see Rob- 
erts V. Ryer, 11. Blatchf (U. S.) 11; 
Roberts v. Buck, i Holmes (U. S.) 
224. 

3. Different suits brought for in- 
fringement of different patents which 
are all embraced in a single structure 
made by defendant. Deering v. Wi- 
nona Harvester Works, 24 Fed. Rep. 
90. 

4. Miller v. Buchanan, 5 Fed. Rep. 
366. 

Admission of Manufacturer to Defend 
Suit. — A manufacturer will be admitted 
to defend in a suit brought against a 
purchaser of his manufactured device 
on petition. Curran v. St. Charles 
Car Co., 32 Fed. Rep. 835. 

A motion to extend time of taking 
testimony, will not be granted where 
there has been great laches on pari of 
party applying. Dederick v. Farque- 
har, 39 Fed. Rep. 346; Streat v. 
Steinam, 38 Fed. Rep. 548. 



100 



Evidence, 



PA TENT LA W. 



Answer as Evidence. 



XVII. Evidence — 1. Answer as Evidence. — The sworn answer, 
responsive to the bill, is evidence as in other equity cases,^ and 
an answer not under oath is evidence** against the defendant as 
an admission, and the averments in avoidance must be proved.^ 

2. Presumption— («) Relating to Patents. — The patent is 
prima facie evidence that it is valid, as it is presumed that the Com- 
missioner has performed his duty,* and that the patentee is the 
inventor.^ A patent to two or more as joint inventors involves a 



1. Woodworth v. Hall, i Woodb. & 
M. (U. S.) 248; s. c, 2 Robb. Pat. Cas. 
495,- Hovey v. Stevens, i Woodb. & 
M. (U. S.) 290; s. c, 2 Robb Pat. Cas. 

479- 

But the denial of infringement must 
be positive. Goodjear v. Berry, 2 
Bond (U. S.) 189; s. u., 3 Fish. Pat. 
Cas. 4^9; Popperihusen v. New York 
etc. Comb Co., 4 Blatchf. (U. S.) 185; 
s. c, 2 Fisher Pat. Cas. 74. 

If the denial of novelty in the ans- 
wer is positive and under oath it requires 
more than the testimony of one witness 
to establish infringement. Hovey v. 
Stevens, i Woodb. (U. S.) 290. 

2. Smith V. Potter, 3 Wis. 432. 

3. Hoflfheins v. Brandt, 3 Fisher. Pat. 
Cas. 218. ' 

Admissions in Answer. — An admission 
in the answer is not waived by taking 
testimony on the subject. Jones v. 
Morehead, i Wall. (U. S.) 155. 

And a disclaimer of desire to con- 
test the patent, is an admission warrant- 
ing a decree in sustaining the validity 
of the patent and finding infringement. 
Globe Nail Co. v. Superior Nail Co, 27 
Fed. Rep. 454. 

4. Potter \;. Holland, i Fish. Pat. 
Cas. 382; s. ^.., 4 Blatchf. (U S.) 238; 
Magic RuflBe Co. v. Douglass, 2 Fish. 
Pat. Cas. 330; s. c, 5 Blatchf. (U. S.) 
134; Lowell V. Lewis, i Mason (U. S.) 
182; s. c, f Robb Pat. Cas. 121; Cox, 
V. Griggs, 2 Fish. Pat. Cas. 174; s. c, i 
Biss. (U. S.) 362; Clark Patent etc. Co. 
V. Copeland, 2 Fish. Pat. Cas. 221; 
Poppehhusen v. New York etc. Comb 
Co., 2 Fish. Pat. Cas. 62; Waterman v. 
Thompson, 2 Fish. Pat. Cas. 461 ; Allen 
V. Hunter, 6 McLean (U. S.) 303; 
Alden v. Dewy, i Story (U. S.) 336; 
s. c, 2 Robb Pat. Cas. 17; Brooks v. 
Jenkins, 3 McLean (U. S.) 432; Hein- 
rich V. Luther, 6 McLean (U. S.) 345; 
Wayne v. Holmes, t Bond (U. S.) 27; 
Woodworth v. Rogers, 3 Woodb. & M. 
(U. S.) 13^; Hudson v. Draper, 4 Cliff. 
(U. S.) 178; s. c, 4 Fish. Pat. Cas. 253; 
Waterbury etc. Brass. Co. v. New 



York etc. Brass Co., 3 Fish. Pat. Cas. 43; 
Sands v. Wardwell, 3 Cliff. (U. S.) 277; 
Heating Co. v. Drummond, 3 Bann. & 
Ard. Pat. Cas. 138; Union Stone Co. 
V. Allen, 14 Fed. Rep. 353; Tilghman 
V. Werk, 1 Bond. (U. S.) ^ii; s. c, 2 
Fish. Pat. Cas.* 229; American Bell 
Teleph. Co. i'. Globe Teleph. Co , 31 
Fed. Rep. 729; Byerly v. Cleveland 
Linseed Oil Works, 31 Fed. Rep. 73; 
Good V. Baily, 33 Fed. Rep. 42; s. c, 
41 Pat. Off. Gaz. 935; Osborne v. 
Glazier, 31 Fed. Rep. 402; American 
Box Mach. Co. v. Day, 32 Fed. Rep. 
585; Bostock x'. Goodrich, 21 Fed. Rep. 
316; McMillin v. Vicksburg Anchor 
Line, 22 Fed. Rep. 169; Celluloid Mfg. 
Co. 7'. Chrolithion Collar etc. Co., 23 
Fed. Rep. 397; Adams etc. Mfg. Co. v. 
Rathbone, 26 Fed. Rep. 262; American 
Box Mach. Co. v. Day, 32 Fed. Rep. 
585; konold V. Klein, 3 Bann. & Ard. 
Pat. Cas. 226; Wayne v. Holmes, i 
Bond (U. S.) 27; s. c, 2 Fish. Pat. Cas. 
20; McClure f. Jeffrey, 8 Ind. 74; Mc- 
Bride v. Grand De Tour Plow Co., 40 
Fed. Rep. 162; Mesker v. Thaener, 42 
Fed. Rep. 329. 

The presumption of validity has been 
held to arise also from the oath of the 
inventor filed with the application. In 
re Wagner, i MacArthur Pat. Cas. 
510. 

6. Serrell v. Collins, i Fish. Pat. Cas. 
289; Conover v. Rapp, 4' Fish. Pat. 
Cas. i;7; Forbes v. Barstow Stove Co., 
2 CliiF. (U. S.) 379: Roberts v. Harn- 
den, 2 Cliff. (U. S.) 500; Goodyear 
Dental etc. Co. v. Gardner, 4 Fish. Pat. 
Cas. 224; s. c, 2 Cliff. (U. S.) 408; 
Knight V. Baltimore etc. R. Co., i Taney 
(U. S.) 106; s. c, 3 Fish. Pat. Cas. i; 
Sherman tJ.Champlain Transp. Co., 31 
Vt. 162; Ayling v. Hull, 2 Cliff. (U. 
S.) 494; Whipple V. Baldwin etc. Mfg. 
Co., 4 Fish. Pat. Cas. 29; Bierce v. 
Stocking, 77 Mass. 174; Brooks v. Jen- 
kins, 4 McLean (U. S.) 432; Ashcroft 
V. Cutter, 6 Blatchf. (U. S.) 511 ; Par- 
ham V. American Button etc. Mach. 
Co., 4 Fish. Pat. Cas. 468; Earle v. 



101 



Evidence. 



PA TENT LA W. 



Fresamption. 



presumption that they were such.* A patent is presumed to 
correspond with the application,^ and there is a slight presump- 
tion that a person having a subsequent patent is not an infringer. ^ 
{b) Presumption of Non-infringement. — The presumption 
of innocence raises the presumption of non-infringement by the 
defendant.* 



Sawyer, 4 Mason (U. S.) i ; s. c, i 
Robb Pat. Cas. 491 ; Whitney v. Em- 
mett, I Baldw. (U. S.) 303 ; s. c, i 
Robb Pat. Cas. 567; Brodie v. Ophir 
etc. Min. Co., 5 Taney (U. S.) 608; 
Masury v. Tiemann, 8 Blatchf. (U. S.) 
426; s. c, 4 Fish. Pat. Cas. 524; Tomp- 
kins ». Gage, 2 Fish. Pat. Cas. 577; 
Konold II Klein, 3 Bann. & Ard. Pat. 
Cas. 26; Sands z>. Wardwell, 3 Cliff. 
(U. 8.) 277; Green v. French, 11 Fed. 
Rep. 591; s. c, 21 Pat. Off. Gaz. 1351 ; 
Magic Ruffle Co. v. Douglas, 2 Fish. 
Pat. Cas. 330; Sewall t;. Jones, 91 U. S. 
171 ; s. c, 9 Pat. Off. Gaz. 47; Crouch 
V. Spear, i Bann. & Ard. Pat. Cas. 
145 ; s. c, 6 Pat. Off. Gaz. 187; Hawes 
V. Antisdel, 2 Bann. & Ard. Pat. Cas. 
io;s. c, 8 Pat. Off. Gaz. 685; Taylor 
V. Wood, 12 Blatchf. (U. S.) no; s c, 
I Bann. & Ard. Pat. Cas. 270; s. c, 8 
Pat. Off. Gaz. 90 ; Patterson v. Duff, 
20 Fed. Rep. 641 ; Rogers v. Beecher, 
3 Fed. Rep. 639; Eclypse Mfg. Go. v. 
Adkins, 44 Fed. Rep. 280. 

This Presumption Strengthened by 
Extension. — Cook v. Ernest, 5 Fish. 
Pat. Cas. 396; s. u., 2 Pat. Off. Gaz. 89. 

Date of Presumption of Novelty. — Pre- 
sumption of novelty relates back to 
time of invention. Klein v. Russell, 
19 Wall. (U. S.) 433. 

Kebuttal of Presumption. — To over- 
throw the presumption arising from 
the patent, the proof must be clear. 
Magic Ruffle Co. v. Douglas, 2 Fish. 
Pat. Cas. 330; Crouch v. Spear, i Bann. 
& Ard. Pat. Cas. 145; s. Ct 6 Pat. Off. 
Gaz. 187 ; Rogers v. Beeche, 3 Fed. 
Rep. 639; Miller v. Smith, 5 Fed. Rep. 
359; s. c, 18 Pat. Off. Gaz. 1047 ; Stil- 
well etc. Mfg. Co. v. Cincinnati Gas 
Light etc. Co., I Bann. & Ard. Pat. 
Cas. 610; s. c, 7 Pat. Off. Gaz. 829. 

1. Worden v. Fisher, 11 Fed. Rep. 
505 ; s. c, 21 Pat. Off. Gaz. 1957 ; God- 
fried V. Brewing Co., 5 Bann & Ard. 
Pat. Cas. 4; s.c, 17 Pat, Off. Gaz. 675; 
Hotchkiss V. Greenwood, 4 McLean 
(U. S.) 456; Consolidated Bunging 
Apparatus v. Woerle, 29 Fed. Rep. 
449; s. c, 38 Pat. Off. Gaz. loij. 

Similarly of a patent to a sole in- 
ventor. Puetz V. Bransford, 31 Fed. 



102 



Rep. 458; s. c, 39 Pat. Off. Gaz. 1083. 
A foreign patent to the American 
patentee jointly with another, does not 
shift the burden of proof. Hoe v. Cot- 
trell, 17 Blatchf. (U. S.) 546; s. c, i 
Fed. Rep. 597; =. c, 5 Bann. & Ard. 
Pat. Cas. 256; s.c, 18 Pat. Off. Gaz. 

59- 

2. Webster Loom Co. v. Higgins, 
105 U. S. 580; s. c, 21 Pat. Off. Gaz. 
2031. 

Presumption of Title. — There is a 
presumption that the owner of the 
patent has not parted with any of his 
rights. Watson v. Smith, 7 Fed. Rep. 
350; s. c , 20 Pat. Off. Gaz. 300. 

3. Coming v. Burden, 15 How. (U. 
S.) 252 ; American Pin Co. v. Oakville 
Co., 3 Blatchf. (U. S.) 190; Stearns v. 
Barrett, i Mason (U. S.) 153; s. c, i 
Robb Pat. Cas. 97 ; Smith v. Woodruff, 
I McArthur (U. S.) 459; s. c, 6 Fish. 
Pat. Cas. 476; s.c, 4 Pat. Off. Gaz. 
635 ; Westlake v. Carter, 6 Fish. Pat. 
Cas. 519; s. c.,4 Pat. Off. Gaz. 636; 
Trader v. Missmore, i Bann. & Ard. 
Pat. Cas. 639 ; s. c , 7 Pat. Off. Gaz. 385 ; 
New York Rubber Co. v. Chaskel, 9 
Pat. Off. Gaz. 923. 

Other Presumptions Arising Out of 
Patent. — That the date of application 
was the date of grant. Worley v. Lok- 
er Tobacco Co., 104 U. S. 340; s. c, 21 
Pat. Off. Gaz. 559. 

That the patent unlimited on its face 
is not to be limited by a prior foreign 
patent to same inventor.- American 
etc. Boring Co. v. Sheldon, 17 Blatchf. 
(U. S.) 303 ; s. c, 4 Bann. & Ard. Pat. 
Cas. 603. 

4. Union Sugar Refinery v. Mathie- 
Eon, 3 Cliff. (U. S.) 639; s. c, 2 Fish. 
Pat. Cas. 600; Bell v. Daniels, i Bond 
(U. S.) 2T2; s. c, I Fish. Pat.Cas., 372; 
Forbes v. Barstow Stove Co., 2 Cliff. 
(U. S.) 379; Hudson v. Draper, 4 Fish. 
Pat. Cas. 256 ;s. c.,4 Cliff. (U.S.) 178; 
Francis v. Mellor, 5 Fish. Pat. Cas. 153 ; 
s. c, I Pat. Off. Gaz. 48 ; Price v. Kel- 
ley, 20 Pat. Off. Gaz. 1452; Lehigh 
Valley R. Co. v. Mellon, 104 U. S. 
112 ; s. c, 20 Pat. Off. Gaz. 1891 ; Dixon 

,1'. Moyer, i Robb Pat. Cas. 324; s. c, 
4 Wash. (U. S.) 68; Roger v. Chicago 



Evidence. 



FA TENT LA W. 



Judicial Notice. 



3. Judicial Notice. — The court 
matters of common knowledge.* 



will take notice of scientific 



Mfg. Co., 20 Fed. Rep. 853; Mallory 
Mfg. Co. V. Hickok, 25 Fed. Rep. 827; 
American etc. Purifier Co. v. Atlantic 
Milling Co., 4 Dill. (U. S.) 100; ». c, 

4 Bann. & Ard. Pat. Cas. 148; s. c, 15 
Pat. Off. Gaz, 467; Hayden v. Suffolk 
Mfi?. Co., 4 Fish. Pat. Cas. 86. 

Where the evidence of infringement 
is not clear it is insufficient Hill v. 
Holyoke Envelope Co., 30 Fed. Rep. 
623; Reay v. Rau, 15 Fed. Rep. 749. 

What is held sufficient evidence of 
infringement. Kiesele v. Haas, 32 Fed. 
Rep. 794; Dryfoos v. Friedman, 21 
Blatchf. 563; s. c, 18 Fed. Rep. 824; 
Peterson v. Simpkins, 25 Fed. Rep. 486; 
Spring V. Domestic Sewing Mach. Co., 
9 Fed. Rep. 505; Woven Wire Mattress, 
Co. V. Wire Bed Co., 8 Fed. Rep. 87; 
Fischer v. Hayes, 6 Fed. Rep. 86; 
Fischer v. O'Shaughnessey, 6 Fed. Rep. 
92; Gear v. Fitch, 3 Bann. & Ard. Pat. 
Cas. 573; s. c, 16 Pat. Off. Gaz. 1231; 
Union Paper Bag Mach. Co. x). Binney, 

5 Fish. Pat. Cas. 166; Eastman v. Bod- 
iish, I Story (U. S.) 528; CoUeng v. 
Jackson, 45" Fed. Rep. 639; Schneider 
V. Missouri Glass Co.-, 36 Fed. Rep. 

5S2. 

Burden of Proof When Shifted.— The 
burden of proof is shifted to the com- 
plainant to establish a prior invention, 
when an invention prior to the date of 
application. Thayer v. Hart, 22 Blatchf. 
(U. S.) 229. 

Burden of proof is on defendant to 
show non-infringement when the court 
was satisfied that the devices were the 
same. National Hat Pouncing Mach. 
Co. -v. Thorn, 25 Fed. Rep. 496. 

Other Miscellaneous Presumptions. — 
That mechanics who take out a patent 
or build a machine are conversant with 
the state of the art. Crompton v. 
Knowles, 7 Fed. Rep. 204; James v. 
Campbell, 104 U. S. 356. 

1. That iron and steel may be suc- 
cessfully welded without a flux. Need- 
ham V. Washburn, 7 Pat. Off. Gaz. 749. 
The existence of the common forms of 
ice cream freezers. Brown v. Piper, 91 
U. S. 37; s. u., 10 Pat. Off. Gaz. 417. 
The ordinary construction of sewer 
traps. McKloskey v. Dubois, 8 Fed. 
Rep. 710; s. c, 19 Blatchf (U. S.) 205; 
s. c, 19 Pat. Off, Gaz. 1286. Marking 
out soles on leather so that they would 
fit with each other and save material. 
Walker v. Rawson, 4 Bann. & Ard. 



Pat. Cas. 128. The use of water to re- 
move obstructions in sinking piles. 
Knapp V. Benedict, 26 Fed. Rep. 627. 
See also Terhune v. Phillips, 99 U. S. 
1592; Quirolo V. Ardito, 17 Blatchf (U. 
S.) 400; Snow V. Taylor, 14 Pat. Off. 
Gaz. 861; Anson v. Woodbury, 12 Pat. 
Off. Gaz. i; King t.'. Gallun, 109 U. S. 
99; s. u., 25 Pat. Off. Gaz.9So; Slawson 
ti. Grand St. etc. R. Co., 107 U. S. 649; 
s. c, 24 Pat. Off. Gaz. 99; Torrent etc. 
Lumber Co. v. Rodgers, 112 U. S. 659; 
s. c, 30 Pat. Off. Gaz. 449; Phillips v. 
Detroit, iii U. S. 604; Reed t'. Law- 
rence, 29 Fed. Rep. 915. 

The court will consider scientific facts 
of general knowledge when the bill is 
demurred to for want of novelty in the 
patent. New York Belting Co. v. New 
Jersey Car Spring etc. Co., 30 Fed. Rep. 

785- 

It will take judicial notice of things 
in common use in such case. W^st v. 
Rae, 38 Fed. Rep. 45. 

And may declare the patent invalid. 
Fougeres v. Murbarger, 44 Fed. Rep. 
292; Nicodemus v. Frazier, 19 Fed. 
Rep. 260. 

But will not do so in a doubtful case. 
Standard Oil Co. v. Southern Pac. R. 
Co., 42 Fed. Rep. 295. 

Where an article required some time 
to get on the market, the court will pre- 
sume that in due course of business it 
took some time to produce the articles 
before they were found on the market. 
Wen V. Morden, 21 Fed. Rep. 243. 

That the file wrapper is frequently 
altered in the Patent Office. Hoe v. 
Kahlter, 23 Blatchf. (U. S.) 354. 

Of What the Court Will Not Take 
Judicial Notice. — The Model of an in- 
vention. Everett v. Thatcher, 3 Bann. 
& Ard. Pat. Cas. 435. 

Of matters of science, not strictly of 
common knowledge. Kaolatype En- 
graving Co. V. Hoke, 30 Fed. Rep. 444. 
Of Facts of which experts differ. St. 
Louis Gas Light etc. Co. v. American 
F. Ins. Co., 33 Mo. App. 348. See also 
Finger v. Kingston (Supreme Ct.), 9 N. 
Y. Supp. 175. 

Of What It Will Take Judicial Notice. 
— Of the meaning of the word "whisky." 
Frese v. State, 23 Fla. 267. 

Of the existence and construction of 
grain elevators at a certain date. Rich- 
ards V. Michigan etc. R. Co., 40 Fed. 
Rep. 165. 



103 



Evidence. 



PA TENT LA W. 



Documentary Evidence. 



4. Documentary Evidence — {a) Certified Copies. — Certified 
copies of patents and other papers in the Patent Office are evi- 
dence in the same manner as the original should be.' 

(b) Other Documents.— In the case of other documents the 
ordinary rules of evidence are applied.* 

(c) File Wrapper and Contents. — The file wrapper and its 
contents containing the correspondence between the Patent Office 
and thp applicant may be put in evidence as part of the res gesta 
and used to aid in the construction of the patent and for other 
purposes.** * 

Of the shape, size and construction 
of uncommon wagon ^xles. Stude- 
baker etc. Mfg. Co. v. Illinois Iron etc. 
Co., 42 Fed. Rep. 52. 

1. U. S. Rev. Stats., §§ 882, 883, S84; 
Foster's Fed. Practice, \ 26S and cases 
there cited ; Peck v. Farrington, 9 Wend. 
(N. Y.) 44. 

A certified copy of a restored draw- 
ing is evidence. Emerson v. Hogg, 2 
Blatchf. (U. S.) I. 

Also a certified copj' of an assign- 
ment. Brooks V. Jenkins, 3 McLean 
(U. S.) 432. 

A certified copy of a surrendered and 
cancelled patent, is competent evidence 
to prove prior invention. Delano v. 
Scott, I Gilp. (U. S.) 489; s.c, I Robb 
Pat. Cas. 700. 

Speoiflcations. — See Davis v. Gray, 17 
Ohio St. 330. See Marsh v. Nichols, 
12S U. S. 60S; Tinker v. Wilbur etc. 
Mfg. Co., I Fed. Rep. 138; s.c, 5 Bann. 
& Ard. Pat. Cas. 92. 

As to foreign patents, see Schoerken 
V. Swift etc. Mfg. Co., 19 Blatchf. (U. 
S.) 209; s. c, 7 Fed. Rep. 469; s. c, 19 
Pat. Off. Gaz.'493; i Peck t'. Farrington, 
9 Wend. (N. Y.) 44; Ex parte Trotter, 
32 Pat. Off. Gaz. 1603. 

As to disclaimers, see Foote v. Silsby, 
I Blatchf (U. S.) 445. 

2. Minute Books of Corporation. — 
Pennock v. Dialogue, 4 Wash. (U. S.) 
^38; s. c, 2 Pet. (U. S.) I ; s. c, i Robb. 
Pat. Cas. 466, 542. A French patent 
certified by a "Directeur de la Con- 
servatoire National des Arts et Metiers 
de la France," under seal of Minister, of 
Agriculture and Commerce, and Min- 
ister of Foreign Affairs, is admissible 
under the statute. Schoerken v. Swift 
etc. Mfg. Co., 19 Blatchf. (U. S.) 209; 
s. u., 7 Fed. Rep. 469; s. c, 19 Pat. Off. 
Gaz. 1493. 

Keceipts. — Burdell v. Dewy, 92 U. S. 
716. 

Sealed instruments consideration. 
Day V. Hartshorn, 3 Fish. Pat. Cas. 32. 



Admissions. — Evidence produced by 
a partj' at the preliminary injunction 
motion, is evidence for the other party 
as admission of the party. Western 
Union Tel. Co. v. Baltimore etc. R. Co., 
26 Fed. Rep. 55. 

Amending a subsequent patent by 
defendant to avoid the patent sued on, is 
an admission of the validity of that 
patent. Sugar Apparatus Mfg. Co. 
V. Yaryan Mfg. Co., 43 Fed. Rep. 
140. 

An exhibit filed in a case in pencil, 
will not be compelled to be changed to 
an ink one, on motion of opposing party. 
Tutman v. Watson Mfg. Co., 44 Fed. 
Rep. 429. 

A prior pending application is evi- 
dence on the question of priority of 
invention. Westinghouse v. Chartiers 
Vallev Gas Co., 43 Fed. Rep. 582. 

3. Allen v. Blunt, 2 Woodb. & M. 
CU. S.) 121; s.c.,2 Robb Pat. Cas. 530; 
Pike V. Potter, 3 Fish. Pat. Cas. 55; 
Goodyear Dental etc. Co. v. Davis, 102 
U. S. 222; ,s. c, 19 Pat. Off. Gaz. 543; 
Pettibone v. Derringer, 4 Wash. (U. 
S.) 215; s. c, ,1 Robb Pat. Cas. 152; 
Suiter V. Robinson, 119 U. S. 630; s. c, 
38 Pat. Off. Gaz. 230. 

We do not mean to be understood as 
asserting that any correspondence be- 
tween an applicant and the Commis- 
sioner of Patents can be allowed to en- 
large, diminish or vary the language of 
a patent afterwards issued. Undoubt- 
edly a patent like any other written 
instrument, is to be interpreted by its 
own terms; but when a patent bears 
on its face a particular construction, in- 
asmuch as the specification and claim 
are in the words of the patentee, it is 
reasonable to hold that such a construc- 
tion may be confirmed by what the 
patentee said when he was making his 
' application. The understanding of a 
party to a contract has always been re- 
garded as of some importance in its in- 
terpretation. Goodyear Dental etc. Co. 



104 



Evidence, 



PA TENT LA W. 



Exhibits. 



5. Exhibits — {a) Prior Devices. — Devices prior to the pat- 
entee's invention may be introduced into evidence and are relevant 
with reference to the question of novelty of the complainant's 
patent,* or of public use.** 

{b) Model of the Invention.— A model of the invention is 
evidence to determine whether it involves patentable novelty* 
and infringement.'* 

6. Expert Evidence — («) Relevancy. — Expert evidence in pat- 
ent cases is relevant to determine the meaning of the terms of the 
art,^ the identity or dissimilarity of mechanical structures,® or of 
principle. '^ 

{b) Irrelevancy. — ^Expert evidence is not relevant to deter- 
mine a question of law,* to determine a question of fact," or on a 



V. Davis, I02 U. S. 222; s. c, 19 Pat. 
Off. Gaz. 543. 

Not Evidence. — The report of the ex- 
aminer and the decision of the Commis- 
sioner upon the question of an extension 
is not evidence of the invalidity of the 
original patent. McMahon v. Tyng, 
14 Allen (Mass.; 167. 

When a patent to a third party is set 
up to prove prior use, the tile wrapper 
is not evidence to prove that the inven- 
tion was made when the oath was taken. 
It is res inter alios. Howes V. McNeal, 
4 Fed. Rep. 151; s. c, 5 Bann. & Ard. 
Pat. Cas. 77; 5. c, 17 Pat. Oif. Gaz. 799. 

1. Judson V. Cope, i Bond (U. S.) 
327; s. c, I Fish. Pat. Cas. 615; Miller 
V. Smith, 5 Fed. Rep. 359; Singer v. 
Walmsley, i Fish. Pat. Cas. 558. 

2. Carter v. Baker, i Sawj'. (U. S.) 
512; s. c, 4 Fish. Pat. Cas. 404. 

3. Everett v. Thatcher, 3 Bann. & 
Ard. Pat. Cas. 435; s. c, 2 Flipp. (U. 
S.) 234; s. c, 16 Pat. Off. Gaz. 1046: 
Morris v. Barrett, i Bond (U. S.) 

254- 

A certified copy of the Patent OflSce 
model is not conclusive evidence of the 
character of the model. Johnsen v. 
Beard, 2 Bann. & Ard. Pat. Cas. 50; 
s. c, 8 Pat. Off. Gaz. 435. 

4. Evans v. riettick, 3 Wash. (U. S.) 
408; s. c, I Robb Pat. Cas. 417; Sey- 
mour V. Osborne, i Wall. (U. S.) 516; 
Smith V. Pearce, 2 McLean (U. S.) "176. 

But exhibits should be properly ex- 
plained. Miller v. Smith, 5 Fed. Rep. 
359; s. c, 18 Pat, Off. Gaz, 1047. 

5. Corryng v. Burden, 15 How. (U. 
S.) 252; Jackson v Allen, 120 Mass. 
64; Winans v. New York etc. R. Co., 
I Fish. Pat. Cas. 213; Day v. Stellman, 
I Fish. Pat. Cas. 4S7; Ely v. Monson 
etc. Mfg. Co., 4 Fish. Pat. Cas. 64; 
Cahoon v. Ring, i Cliff. (U. S.) 592; 



s. c, I Fish, Pat, Cas, 397; Many v. 
Sizer, 1 Fish. Pat. Cas. 17; Ingels v. 
Ma.st, 6Fish. Pat. Cas. 415. And gen- 
erally a knowledge of the art. John- 
son V. Root, I Fish. Pat. Cas. 551. 

The consideration of the patent ap- 
plication in the Patent Office is expert 
testimony. Westlake v. Cartter, 6 
Fish. Pat. Cas. 519. 

6, Corning f. Burden, 15 How, (U. 
S.) 252; Barrett v. Hall, i Mason (U. 
S.) 447.. 

7, Barrett v. Hall, i Mason (U. S.) 
447; ». c, I Robb Pat. Cas. 207; Con- 
over ». Rapp, 4 Fish. Pat. Cas. 57; 
Tillotson V. Ramsay, 51 Vt, 309; 
Tucker v. Spaulding, 13 Wall. (U. S.) 
453; s. c, I Pat, Off. Gaz. 144. 

The admission of expert evidence is 
in the discretion of the court; it is not 
error to refuse to admit it. 3 Rob. on 
Pat,, § 10, 14. 

See Pullman v. Baltimore etc, R, 
Co., 4 Hughes (U. S.) 236; s, c, 5 Fed, 
Rep, 72; s. c, 19 Pat. Off. Gaz. 224, 

8. Ely V. Munson etc. Mfg. Co., 4 Fish. 
Pat. Cas. 64; Corning v. Burden, 15 
How. (U. S.) 252; Waterbury Brass 
Co. V. New York etc. Brass Co., 3 
Fish, Pat. Cas. 43; Tompkins v. But- 
terfield, 33 Pat. Off. Gaz. 758. 

9. McMahon v. Tyng, 14 Allen 
(Mass.) 167. 

Weight of Expert Evidence. — Its weight 
is to be considered by the jury. Bar- 
rett V. Hall, I Mason (U. S.) 467; 
Carter v. Baker, i Sawy. (U. S.) 512; 
St. Louis Gaslight Co. v. American F. 
Ins. Co., 33 Mo. App. 348; May v. 
Fond du Lac Co., 27 Fed. Rep. 691. 

And the reasons given by the expert 
for his opinion are to be taken into 
consideration. Jordan v. Dobson, 2 
Abb. (U. S.) 398; Seymour v. Marsh, 
9 Phila (Pa.) 380; Parham v. American 



105 



Evidence, 



PA TENT LA W. 



state of the Ait, 



mere matter of speculation.^ 

7, Evidence of the State of the Art. — Evidence, whether of ex- 
hibits* 



Buttonhole Mach. Co., 4 Fish. Pat. Cas. 
46S; Johnson v. Root, i Fish. Pat. 
Cas. 3^1 ; United States Annunciator 
etc. Co. V. Sanderson, 3 Blatchf. (U. S.) 
184; Bene v. Jeantet, 129' U. S.6S5. 

1. Judson V. Cape, 1 Bond (U. S.) 
327; s. c, I Fish. Pat. Cas. 615. 

The credibility of an expert witness 
is a question of fact to be taken in con- 
sideration with other things. Johnson 
z>. Root, I Fish. Pat. Cas.' 351; Bierce 
V. Stocking, II Gray (Mass.) 171; 
Tucker v. Spaulding, 13 Wall. (U. S.) 
453; s. c, I Pat. Off. Gaz. 144; May w. 
Fond Du Lac, 27 Fed. Rep. 691; Car- 
ter V. Baker, i Sawy. (U. S.) 512; 
United States Annunciator etc. Co. v. 
Sanderson, 3 Blatchf. (U. S.) 184; 
Many cases could be cited; the prin- 
ciple is well established. 

Various criticisms of expert testi- 
mony in patent cases which may be of 
value, are given in the following cases: 

Winans v. New York etc. R. Co., i 
Fish. Pat. Cas. 213; Conover v. Rapp, 
4 Fish. Pat. Cas. 57; Tilghman v. 
Mitchel, 4 Fish. Pat. Cas. 599; King v. 
Leoisville Cement Co., 6 Fish. Pat. 
Cas. 336; s. c , 4 Pat. Off. Gaz. 181; 
Sargent v. Carter, i Fish. Pat. Cas. 
277; United States Annunciator etc. 
Co. V. Sanderson, 3 Blatchf. (U. S.) 
184; Barrett t'. Hall, i Mason (U. S.) 
447; Adams v. Jones, i Fish. Pat. Cas, 
527; Cox V. Grigg, I Biss, (U. S.) 362 
s. c, 2 Fish. Pat. Cas. 174; Hoffheins 
V. Brandt, 3 Fish, Pat. Cas. 18; Mid- 
dlings Purifier Co, v. Christian, 4 Dill. 
(U, S.) 448; Steam Gauge and Lan- 
tern Co. V. Hame Mfg, Co,, 28 Fed. 
Rep, 618 

What Is a Mechanical Expert. — An 
expert is one skilled in the art or 
science to which his opinion or judg- 
ment appertains. Page v. Ferry, i 
Fish. Pat, Cas, 298. 

Artisans skilled in the trade to which 
the patented improvement belongs. 
Allen V. Blunt, 3 Story (U. S.) 743; 
Page V. Ferry, i Fish, Pat. Cas, 298, 

Persons conversant with scientific 
mechanics are competent though not 
artisans, Allen v. Blunt, 3 Storv (U. 
8.) 742, 

The president of a manufacturing 
company who has taken out patents 
and is familiar with the art, is a com- 



petent expert. Sugar Apparatus Mfg. 
Co. V. Yaryan Mfg. Co., 43 Fed. Rep. 
140, 

An expert only can give opinion evi- 
dence, Toohe^' V. Harding, 4 Hughes 
(U, S,)2S3, 

Admissions by Experts. — The admis- 
sion of an expert against the interest of 
the calling party is conclusive if uncon- 
tradicted. Wells V. Jaques, i Bann. & 
Ard. Pat. Cas. 60, 

Expert Not Indispensable, — An expert 
need not be called to show an infringe- 
ment where the case is clear. Bostock 
V. Goodrich, 21 Fed. Rep.' 316; Hayes 
V. Bickelhoupt, 23 , Fed. Rep. 183; 
Doyle V. Spaulding, ig Fed. Rep. 744. 

And will not prevail over facts. 
Tilghman v. Werk, i Bond (U. S.) 511; 
s, c, 2 Fish, Pat. Cas. 229; Hudson v. 
Draper, 4 Cliff, (U, S,) 178; s. c, 4 
Fish. Pat. Cas, 2156; Seymour t;. Marsh, 
6 Fish. Pat. Cas'. 118; s. c, 2 Pat. Off, 
Gaz, 675, 

The court ma3' call an expert of its 
own independent of those summoned 
by the parties. Analine Fabrik v. 
Levinstein, L. R., Ch. D. (Eng.) 156; 
King V. Louisville Cement Co., 6 Fish, 
Pat. Cas. 336. Or examine for itself. 
La Baw v. Hawkins, i Bann. & Ard. 
Pat. Cas. 428; s. c, 6 Pat. Off. Gaz. 
724, 

Contradictory expert evidence is of 
small value. Pullman v. Baltimore 
etc. R, Co,, 4 Hughes (U, S.) 236; s. c, 
5 Fed. Rep. 72; s, c, 19. Pat. Off. Gaz. 
224. 

A decree may be given for complain- 
ant merely on the expert testimony, if 
it is supported by models, etc. Tsh- 
eppe V. Bernheiin, 42 Fed. Rep. 59. 

2. Stevenson i'. Macgowan, 30 Fed. 
Rep. 824; American Cla3' Bird v. Ligo- 
wiski Clay Pigeon Co., 30 Fed. Rep. 
466; Gejer v. Goetinger, 1 Bann. & Ard. 
Pat. Cas. ^53; s. c, 7 Pat. Off. Gaz. 563. 

Patents. — Eachus v. Broomall, 115 U. 
S. 429. 

But a 'scientific work cannot be of- 
fered in evidence to show the state of 
the art. Westlake v. Cartter, 6 Fish. 
Pat. Cas. 519. Nor can memoranda; 
but these last may be used to refresh 
the memory of a witness. Jones v. 
Wetherill, i MacArthur's Pat. Cas.404. 

A Patent Office examiner is com- 



106 



Evidence. 



PA TENT LA W. Prior Use, Lack of Novelty. 



or oral,^ is admissible to show the state of the art^ at the 
time of the invention. This evidence, provided it does not go to 
establish a lack of novelty in the complainant's patent, need not 
be given notice of beforehand. * 

8. Evidence of Prior Use or Lack of Novelty. — The best evidence 
of prior use or of an existence of a patented device prior to the 
time of the invention by the patentee, is the production of the 
device itself and its proper identification.* The testimony of 
vi'itnesses who have seen the device is much less satisfactory,* and 



petent to prove what documents are in 
Patent Office. Sone v. Palmer, 28 Mo. 

539- 

1. Zane v. LofFe, 2 Fed. Rep. 229. 
An expert called to show identity 

between the complainant's invention 
and defendant's device, cannot be re- 
quested not to go into the state of the 
art. American Linoleum Mfg. Co. v. 
Union Linoleum Co., 44 Fed. Rep. 755. 

2. Dunbar v. Meyers, 94 U. S. 187; 
s. c, II Pat. Off. Gaz. 35; Zane v. 
Loffe, 2 Fed. Rep. 229: Nashua Lock 
Co. V. Norwich Lock Mfg. Co., 32 Fed. 
Rep. 87; Ausable Horse Nail Co. v. 
Essex Horse Nail Co., 32 Fed. Rep. 94. 

3. Zane v. Loffe, 2 Fed. Rep. 229; 
Grier ^l. Wilt, 120 U. S. 412; Eachus v. 
Bromall, 115 U. S. 429; Vance v. 
Campbell, i Fish. Pat. Cas. 483; Brown 
V. Piper, 91 U. S. 37; Westlake v. 
Cartter, 6 Fish. Pat. Cas. i;ig; s. c, 4 
Pat. Off. Gaz. 636; Delong v. Bickford, 
13 Fed. Rep. 32; American Saddle Co. 
V. Hogg, I Holmes (U. S.) 133: Phila- 
delp'nia etc. R. Co. v. Dubois, 12 Wall. 
(U. S.) 47. 

4. Hawes v. Antisdel, 2 Bann. & 
Ard. Pat. Cas. 10; s. c, 8 Pat. Ofi". Gaz. 
685; Buchan v McKesson, 18 Blatchf. 
(U. S.) 485; s. c, 7 Fed. Rep. 100; s. c, 
19 Pat. Off. Gaz. 222. ' 

The non-production of an alleged 
prior machine works against (hose re- 
fusing to produce it. Bailej' etc. Wring- 
ing Machine Co. v. Lincoln, 4 Fish. 
Pat. Cas. 379. 

Evidence. — Priority of invention is 
made out where a sample of the prior 
device is produced and identified by 
several witnesses whose character for 
veracity plaintiffs have failed to sub- 
stantially affect. Miller x>. Foree, 33 
Pat. Off. Gaz. 1497; Pennock v. Dia- 
logue, 4 Wash. (U. S.) 538. 

Negative Testimony. — Negative Tes- 
timony of the non-existence of a device, 
is entitled, as a rule, to less weight than 
to positive testimony of the existence of 
such a device. Hawes v. Antisdel, 2 



Bann. & Ard. Pat. Cas. 10; &. c, 
8 Pat. Off. Gaz. 685; Cornel! v. Hy- 
att, I McArthur Pat. Cas. 423. But 
an exception exists where the wit- 
nesses testifying would have been 
likely to have known of the prior use 
had it existed. American Ballastlog 
Co. t;. Cotter, 11 Fed. Rep. 728; s. c, 
21 Pat. Off. Gaz. 1030; Shirley v. San- 
derson, 8 Fed. Rep. 905. 

6. Hawes v. Antisdel, '>, Bann. & 
Ard. Pat. Cas. 10; s. c, 8 Pat. Off. Gaz. 
688; Sinclair v. Backus, 4 Fed. Rep. 
539; s. c, 5 Bann. & Ard. Pat. Cas. 81; 
s. c, 17 Pat. Off. Gaz. 1503; Green v. 
French, 11 Fed. Rep. 591; s. c, 21 Pat. 
Off. Gaz. 1351; Woven Wire Mattress 
Co. V. Wire Bed Co., 8 Fed. Rep. 87; 
Zane v. Peck, 9 Fed. Rep. loi; ^X'ash- 
burne etc. Mfg. Co. v. Harsh, 10 Biss. 
(U. S.) 68; s. c, 4 Fed. Rep. 900; s. c, 
19 Fed. Rep. 173; Greenwood v. Bra- 
cher, I Fed. Rep. 856; Sayles v. Chicago 
etc. R. Co., I Biss. (U. 8.) 468; s. >.., 2 
Fish. Pat. Cas. 523; Wing v. Richard- 
son, 2 Cliff. (U. S.) 449; Stephens v. 
Salisbury, i McArthur Pat. Cas. 379; 
Richardson v. Hicks, i McArthur Pat. 
Cas. 335; Zinner v. Kremer, 39 Fed. 
Rep. III. But where the oral evidence 
of witness speaking largely from mem- 
ory, is coupled with corroborative cir- 
cumstances, the presumption of novelty 
will be overcome. Doubleday v. Beatty, 
II Fed. Rep. 729; Simmonds v. Morri- 
son, 44 Fed. Rep. 757. 

A circumstantial account of a series 
of experiments ending successfully cor- 
roborated, will overcome presumptipn 
of patent. Electrical Accumulator Co. 
V. Julien Electric Co., 38 Fed. Rep. 117. 

And generally the circumstances 
throwing doubt on the testimony of a 
witness will also be considered. At- 
lantic etc. Powder Co. t'. Dittmar 
Powder Co., 17 Blatchf. (U. S.) 531; s. 
c, 5 Bann. & Ard. Pat. Cas. 222; s. c, 
17 Pat. Off. Gaz. 969; Milmann v. Bar- 
tholomae etc. Brewing Co., 41 Fed. Rep. 
132. 
07 



Practice. 



PA TENT LA W. 



Generally. 



in all cases the testimony must clearly establish the facts set 
forth.i 

9. Privilege. — While the ordinary privileges attach to a patent 
suit,* no extra privileges can be given a party by the rules of the 
Patent Office.^* 

XVIII. Practice — 1. Generally. — Practice in equity in patent 
cases is substantially governed by the ordinary equity rules* and 



An inventor's testimon}' tending to 
invalidate his patent will be looked on 
with a great deal of suspicion. Sinclair 
V. Backus, 4 Fed. Rep. 539; s. c, 5 
Bann. & Ard. Pit. Cas. 81; ». c, 17 
Pat. Off. Gaz. 1503. 

A long space of time between the 
dale of observation of the device and 
the date of testimony tends to discredit 
the evidence. Wing v. Richardson, 2 
Cliff. (U. S.) 449; s. c, 2 Fish. Pat. Cas. 
S3S; Sayles v. Chicago etc. R. Co., i 
Biss. (U. S.) 468; Ely v. Monson etc. 
Mfg. Co., 4 Fish. Pat. Cas. 64; Sickles v. 
Gloucester Mfg. Co., 3 Wall. Jr. (C. C.) 
196; Parker v. Hulme, 7 West 417; 
Tatum V. Gregory, 41 Fed. Rep. 142; 
Electrical Accumulator Co. v. Julien 
Electric Co., 38 Fed. Rep. 117. 

1. Wood V. Union Iron Works, 4 
Fish. Pat. Cas. 550; Parham v. Ameri- 
can Button etc. Mach. Co., 4 Fish. Pat. 
Cas. 468; Sayles v. Chicago etc. R. Co., 
4 Fish. Pat. Cas. 584; Crouch v. Speir, 
I Bann. & Ard. Pat. Cas. 145; s. c, 6 
Pat. Off. Gaz. 187; Bostockt). Goodrich, 
21 Fed. Rep. 316; Thayer v. Hart, 22 
Blatchf. (U. S.) 229; s. c, 20 Fed. Rep. 
693; s. c., 28 Pat. Off. Gaz. 542; United 
States Stamping Co. v. Jewett, 18 
Blatchf. (U. S.) 469; Wilson v. Coon, 18 
Blatchf. (U. S.) 532; s. c, 6 Fed. Rep. 
6:1; s. c, 19 Pat. Off. Gaz. 482; Miller 
V. Smith, 5 Fed. Rep. 359; Carter v. 
Carter, i MacArthur Pat. Cas. 388. 
Both the existence of the anticipation 
and its similarity to the invented device 
must be clearly shown. Cottier v. 
Stimson, 20 Fed. Rep. 906. 

2. Privilege of counsel. Edison Elec- 
tric Light Co. V. United States Electric 
Lighting Co., 44 Fed. Rep. 294. 

Which privilege, however, is waived 
by putting in evidence, any communi- 
cation relating to a transaction, so far 
as that transaction is concerned. Wes- 
tern Union Tel. Co. v. Baltimore etc. 
Tel. Co., 26 Fed. Rep. 55; Edison Elec- 
tric Light Co. V. United States Electric 
Lighting Co., 45 Fed. Rep. 55. Or from 
betraying his business secrets. Rob- 
erts V. Walley, 14 Fed. Rep. 167. 



A defendant can be compelled to state 
whether he has in his possession, the 
machme alleged to be an improvement 
before 2l priina facie case is made out. 
Delamater v. Reinhardt, 43 Fed. Rep. 
76. 

3. Edison Electric Light Co. v. 
United States Electric Lighting Co., 44 
Fed. Rep. 294. 

The applicant for a patent can be 
compelled to bring in all papers 
which may be the best evidence, relat- 
ing to an application for patent by sub- 
fmna duces tecum. Edison Electric 
Light Co. V. United States Electric 
Lighting Co., 44 Fed. Rep. 294. 

4. A circuit court was an authority to 
rescind a rule adopted by the supreme 
court for the government of its prac- 
tice in chancery. Jenkins v. Green- 
wald, : Bond (U. S.) 126. 

Exceptions to the rule in English 
chancery practice are equally binding 
with the rules. Brooks v. Bicknell, 3 
McLean (U. S.) 250; s. i,., 2 Robb 
Pat. Cas. 118. 

Appearance and answer is a waiver, of 
an irregularity in serving the subpoena. 
Goodveart;. Chaffee, 3 Blatchf. (U. S.) 
268. 

Equitable and Legal Title. — The court 
will protect the real owners against 
those who are only nominal owners. 
Campbell v. James, 2 Fed. Rep. 338; 
s. c, 18 Blatchf. (U. S.) 42; s. c, 5 
Bann. & Ard. Pat. Cas. 354; s. c, 18 
Pat. Off. Gaz. mi; Dean v. Mason, 
20 How. (U. S.) 198. 

Retention of Suit. — See Lock wood v. 
Cutter Tower Co., 11 Fed. Rep. 724; 
Miller V. Liggett etc. Tobacco Co., 7 
Fed. Rep. 91. . 

Issue at Law. — Watt v. Starke, loi 
U. S. 247; s. c, 17 Pat. Off. Gaz. 1093. 

When Infringement Must be Sliown. — 
An infringement prior to the filing of the 
bill must be shown. Slessinger t'. Buck- 
ingham, 8 Sawy. (U. S.) 469. 

Leave to dismiss will not be grant- 
ed where an answer has been filed, set- 
ting up an affirmative defense and 
proofs have been taken. Electrical Ac- 



108 



Practice. 



PA TENT LA W. 



Cross-Bills. 



doctrines.^ 

2. Cross-Bills. — A cross-bill is filed where the defendant desires to 
obtain some affirmative relief or a discovery from the complainant.^ 

3. BiU of Kevivor. — A bill of revivor is employed in patent as in 
other equity causes to substitute his representatives for a deceased 



cunjulator Co. v. Brush Electric Co., 
44 Fed. Rep. 602. 

Leave to Take Additional Testimony. — 
To obtain leave to introduce testimony 
after the time for talcing it is past, the 
character of the testimony must be 
clearly disclosed. Streat v. Streinam, 
38 Fed. Rep. 548. 

But the court may grant leave to take 
further testimony' even when the case is 
before it for final hearing. Frazer 
V. Gates etc. Iron Works, 22 Fed. Rep. 

439- 

A court may take notice that the pat- 
ent is void even upon a motion made 
to increase the damages already 
awarded. Welling v. Le Baw, 35 Fed. 
Rep. 302. 

1. Permission to Introduce New Evi- 
dence. — The court can admit evidence 
after the time for taking it has expired, 
and can set terms on its admission. 
Goodvear v. Beverly Rubber Co., i 
Cliff. '(U. S.) 348; Stainthorp v. .Humis- 
ton, 4 Fish. Pat. Cas. 107; Knapp v. 
Shaw, 15 Fed. Rep. 115; s. c, 23 Pat. 
Oif. Gaz. 2236. But will do so only when 
it appears likely the desired testimony 
will be secured. Hicks v. Otto, 17 
Fed. Rep. 539. 

Divided Court. — Where court is di- 
vided on a question of infringement, de- 
cree will go for defendant. California 
Art Stone Paving Co. v. Moliter, 119 
U. S. 401; s. c, 38 Pat. OiF. Gaz. 329. 

Waivers. — See Jenkins v. Greenwald, 
I Bond (U. S.) 126; s. c, 2 Fish. Pat. 
Cas. 37. 

Parol Agreements of Counsel. — See 
American Saddle Co. v. Hogg, i 
Holmes (U. S.) 13; s. c, 6 Fish. Pat. 
Cas. 67; s. c, 2 Pat. Off. Gaz. 595. 

What may be awarded under prayer 
for general relief. Emerson v. Simm, 
6 Fish. Pat. Cas. 281 ; s. c, 3 Pat. OflF. 
Gaz. 293. 

Defects in the Keturn. — Where the de- 
fect appears on the face of the return, a 
motion to quash the service or abate the 
writ is the proper mode of bringing the 
matter to the attention of the court. 
Objections not appearing on the face of 
the return are sometimes taken by mo- 
tion to dismiss or set aside the service; 
but the better practice is by plea in 



abatement. United States, v. Ameri- 
can Bell Teleph. Co., 29 Fed. Rep. 

17- 
Decree Pro Confesso. — Decree fro 

confesso is made by the court. Thom- 
son V. Wooster, 114 U. S. 104. 

And after a decree fro confesso the 
defendant cannot assail the patent. 
Dobson V. Hartford Carpet Co., 114 
U. S. 439. 

2. A cross bill must be filed by 
leave of court after due notice to com- 
plainant, and no order of publication 
can be obtained on a cross bill against 
a non-resident complainant. Webster 
Loom Co. t'. Short, 10 Pat. Off. Gaz. 
1019. But a cross bill may be filed in a 
suit in which the complainant is a non- 
resident. Birdsell v. Hagerstown etc. 
Mfg. Co., II Pat. Oif. Gaz. 641. In such 
case a substituted service on the solici- 
tor may be made. Johnson Railway 
Signal Co. v. Union Switch etc. Co., 
43 Fed. Rep. 331. 

The respondent is not prevented from, 
filing a cross bill because he has pre- 
viously filed a bill in a State court for 
the same purpose, and a new party 
may be brought in. Prime v. Bran- 
don Mfg. Co., 14 Blatchf. (U. S.) 371; 
». c, 3 Bann. & Ard. Pat. Cas. 191. 

A cross bill may be filed by a manu- 
facturer against whom a suit is brought 
to prevent the complainant from bring- 
ing suit against his customers. Bird- 
sell V. Hagerstown etc. Mfg. Co., 11 
Pat. Off. Gaz. 641. 

A cross bill by an assignor, in a suit 
by his assignee against him for infringe- 
ment of the assigned patent, claiming a 
right to a trade mark designating the 
system assigned and used by the as- 
signee, is distinct matter and must be 
stricken out. Johnson Railroad Signal 
Co. V. Union Switch etc. Co., 43 Fed. 
Rep. 337. 

A crossbill cannot be filed by defend- 
ant to prevent the complainant from 
infringing defendant's patent. McCor- 
mick Harvester Machine Co. v. Deer- 
ing, 47 Pat. Off. Gaz. 1222. Nor to com- 
pel an assignment of part of the patent. 
Puetz V. Bransford, 32 Fed. Rep. 318. 

Leave to file a cross bill is not an ad- 
judication of the right under the cross 



109 



Practice. 



PA TENT LA W. 



stare Tecisis. 



party. 1 

4. Stare Decisis. — A decision on the same state of facts will gen- 
erally be followed by a court of co-ordinate jurisdiction ;* but not 
where the record presents a different state of facts.* 



bill. Brush Electric Co. v. Brush-Swan 
Electric Light Co., 43 Fed. Rep. 701. 

1. After the death of an infringer, a 
bill of revivor will lie to prevent the 
abatement of the suit. Smith v. Baker, 

1 Bann. & Ard. Pat. Cas. 117; s. c, 5 
Pat. Off. Gaz. 496; Atterbury v. Gill, 3 
Flipp.(U. S.) 239; s. c, 3 Bann. & Ard. 
Pat. Cas. 174; s. c, 13 Pat. Off. Gaz. 
276; Kirk V. Du Bois, 28 Fed. Rep. 
460. 

But a bill of revivor will not lie to 
bring in the other representatives of a 
deceased member of a firm against 
which there is a suit for infringement; 
unless it is alleged that the complainant 
cannot get satisfaction out of the sur- 
vivor. Trov Iron etc. Factory v. 
Winslow, li Blatchf. (U. S.) 513. 
And the interest of the person to be 
brought in must have been acquired 
by the death of a party and not merely 
by an assignment which was followed 
by the death of the party. Metal 
Stamping Co. v. Cravdall, 18 Pat. OfF. 
.Gaz. 1531. 

A bill of revivor may be used to re- 
vive a suit as to part of the relief 
asked. Hohorst v. Howard, 37 Fed. 
Rep. 97. 

2. Putnam v. Ferrington, 2 Bann. 
& Ard. Pat. Cas. 237; s.-c, 9 Pat. Off. 
Gaz. 689;' Washburn v. Gould, 3 Story 
(U. S.) 122; s. c, 2 Robb Pat. Cas. 206; 
Goodyear v. Providence Rubber Co., 

2 Cliff. (U. S.) 351; s. c, 2. Fish. Pat. 
Cas. 499; American Wood Paper Co. v. 
Fiber Disintegrating Co., 3 Fish. Pat. 
Cas. 363; Goodyear v. Berry, 3 Fish. 
Pat. Cas. 443; Tilghman v. Werk, [ 
Bond (U. S.) 511; s. c, 2 Fish. Pat. Cas. 
229; Tilghman v Mitchell, 4 Fish. Pat. 
Cas. 624; Goodj'ear Dental etc. Co. v. 
Root, 6 Fat. Off. Gaz. 154; Goodyear 
V. Willis, I Flipp. (U. S.; 385; ». c, 1 
Bann. & Ard .Pat. Cas. 568; s. c.,7Pat. 
Off. Gaz. 41; Hammerschlag v. Garrett, 
9 Fed. Rep. 43; American Ballast 
Log Co. T). Cotter, 11 Fed. Rep. 728; 
s. i;., 31 Pat. Off. Gaz. 1030; Strobridge v. 
Landers, 11 Fed Rep. S80; s. c, 21 Pat. 
Off. Gaz. 1027; Searls v. Worden, i \ Fed. 
Rep. 501; s. c, 21 Pat. Off. Gaz. 1955; 
McCloskey v. Hamill, 15 Fed. Rep. 
750; s. <-., 23 Pat. Off. Gaz. 2122; Rich- 
ardson V. Lockwood, 4 Cliff. (U, S.) 



128; Jones V. Wetherill, i McArthur 
Pat. Cas. 409. , 

KvJing by Superior Judge. — A ruling 
by an official superior in the same cir- 
cuit is binding on the court. May v. 
Fond du Lac Co., 27 Fed. Rep. 691. 

And generally a decision in the same 
circuit is binding. Holliday f. Mathe- 
son, 23 Blatchf. (U. S.) 239; s. c, 24 
Fed. Rep. 185; s. c, 31 Pat. Off. Gaz. 
1444; Field V. Ireland, 28 Pat. Off. 
Gaz. 2S4; s. c, 19 Fed, Rep.S35; Hayes 
V. Da3'ton, 20 Fed. Rep. 690. 

The prior adjudicated case must 
have been decided on an actual contest. 
Schillinger v. Crawford, 37 Pat. Off. 
Gaz. 1349. 

A verdict in law does not affect a 
subsequent suit between other parties; 
but a dismissal of a prior suit for the 
same subject matter may be pleaded in 
bar in a chancery suit. Allen v. Blunt, 
2 Woodb. & M. 121 ; s. c, 2 Robb Pat. 
Cas. 530; Heysinger v. Rouss, 40 Fed. 
Rep. 584. Compare Dubois v. Phila- 
delphia etc. R. Co., 5 Fish. Pat. Cas. 208. 

This proceeds upon the principle 
that, while the decision of the courts of 
one circuit are not binding on those 
of another, the necessity for uniformity 
of the law requires that the courts of 
one circuit follow those of another with 
reference to the validity of a patent. 
Worswick Mfg. Co. v. Philadelphia, 30 
Fed. Rep. 625. 

A patent was granted to an alleged 
invention; after its grant, it was put in 
interference with an application, and 
the applicant declared a prior invention 
and a patent awarded to him. The 
patentee under the first patent sued the 
patentee under the second, and it was 
held that the first patentee had upon 
him the burden of proof. Wire Book 
Sewing Mach. Co. t. Stevenson, 11 
Fed. Rep. 151;. 

3. McCloskey v. Hamill, 15 Fed. Rep. 
750; s. c, 23 Pat. Oft". Gaz. 2122; Mfg. 
Co. V. Walworth, 9 Pat. Off. Gaz. 746; 
Allen V. Blunt, 2 Woodb. & M. (U. S.) 
121; s. c, 2 Robb Pat. Cas. 530; Tins- 
ser V. Krueger, 45 Fed. Rep. 572; Reed 
V. Lawrence, 29 Fed. Rep. 915; Lock- 
wood V. Tabeb, .27 Fed. Rep. 63; 
United Nickel Co. v. California Elec- 
trical Works, 25 Fed. Rep. 475. 



110 



Practice. 



PA TEN 7^ LA IV. Bea Judicata and Lis Pendens. 



5. Res Judicata and Lis Pendens. — A decree^ or judgment^ decid- 
ing that a device is an infringement of a patent,* or that the patent 
is valid or invaHd,* is binding between the parties and their 
privies,^ and on parties who contribute to the expense of suit in 
which the decision was made.** A pendency of suit in a State 
court will not bar a proceeding for the same cause of action be- 
tween the same parties in a federal court.'' 



This is especially so in injunction 
suits. Many 7'. Sizer, i Fish. Pat. Cas. 
31; Cornell f. Little John, 2 Bann. & 
Ard. Pat. Cas. 324; s. c, 9 Pat. Off. 
Gaz. S37; Potter v. Whitney, 3 Fish. 
Pat. Cas. 77; s. c. Low. (U. S.) 87; s. c, 
Sargent Mfg. Co. v. Woodruff, 5 Biss. 
(U. S.) 444. 

The decree should state that the 
court followed the ruling of another 
court out of comity. Rumford Chemi- 
cal Works V. Hecker, 2 Bann. & Ard. 
Pat. Cas. 386; s. c, 11 Pat. Off. Gaz. 

33°- 

The doctrine of stare decisis does 
not apply to prior decisions of the 
Commissioner of Patents, although en- 
titled to weight. Gloucester Isinglass 
etc. Co. V. Brooks, 19 Fed. Rep. 426. 

1. Barker v. Stowe, 11 Fed. Rep. 303; 
United Nickel Co. v. Worthington, 23 
Pat. Off. Gaz. 939. 

A decree dismissing a suit for want of 
prosecution is not an estoppel. Ameri- 
can etc. Boring Co. v. Sheldon, 17 
Blatchf (U. S.) 208; s. c, 4 Bann. & 
Ard. Pat. Cas. 551. 

Nor for failure of defendant to appear 
and argue a demurrer. Wollensak v. 
Sargent, 33 Fed. Rep. 840. 

Nor an interlocutor decree. Gilbert 
etc. Co. V. Bussing, 12 Blatchf. (U. S.) 
426; s. c, I Bann. & Ard. Pat. Cas. 
621; s. c, 8 Pat. Off. Gaz. 144. 

Nor does a decree decide a point not 
argued. Celluloid Mfg. Co. v. Tower, 

26 Fed. Rep. 45 1 ; Keller v. Stolzenbach, 

27 Pat. Off. Gaz. 209; s. c, 20 Fed. Rep. 
47. But a decree by consent is. Tomkin- 
son V. Willetts Mfg. Co., 23 Fed. Rep. 

89.5- 

2. Wells w. Jaques, 5 Pat. Off. Gaz. 364. 
But to estop a party in an action at 

law the nature of the infringement, 
must be shown by the record, or by ex- 
trinsic evidence. Russell v. Place, 94 
U. S. 606; s. c, 12 Pat. Off. Gaz. 53. 

3. A decree is not conclusive when 
the alleged infringing device litigated, 
is different. Clarke v. Johnson, 16 
Blatchf. (U. S.) 495; s. c, 4 Bann. & 
Ard. Pat. Cas. 407; s. c, 17 Pat. Off. 
Gaz. 1401. 



4. American etc. Boring Co. v. Shel- 
don, 17 Blatchf. (U. S.) 208; s. c, 4 
Bann. & Ard. Pat. Cas. 551 ; D'ay v. 
Combination Rubber Co., 2 Fed. Rep. 
570; s. c, 5 Bann. & Ard. Pat. Cas. 385; 
s. c, 17 Pat. Off. Gaz. 1347. 

A licensee who took a license prior 
to the beginning of the suit, is not con- 
cluded by a decree enjoining his licen- 
sor. Ingersolli'.Jewett, 16 Blatchf. (U. 
S.) 378. 

Alter a decree has been satisfied 
against a vendor, a vendee is not liable. 
Perrigo v. Spaulding, 13 Blatchf. (U. 
S.) 389; s. c, 2 Bann. & Ard. Pat. Cas. 
348; s. c, 12 Pat. Off. Gaz. 352; Gilbert 
etc. Mfg. Co. V. Bussing, 12 Blatchf. 
(U. S.) 426; s. c, I Bann. & Ard. Pat. 
Cas. 621; s. c, 8 Pat. Off. Gaz. 144. 

But a decree against one of several 
joint infringers is not a bar to a 
decree against the other joint infring- 
ers. Union Nickel Co. v. Worthing- 
ton, 23 Pat. Off. Gaz. 939. 

B. United States etc. Felting Co. v. 
Asbestos Felting Co., 18 Blatchf. (U. 
S.) 312; s. c, 4 Fed. Rep. 813; s. c, 5 
Bann. & Ard. Pat. Cas. 624; s. c, 19 
Pat. Off. Gaz. 362; Miller v. Liggett etc. 
Tobacco Co., 7 Fed. Rep. 91; s. t.., 19 
Pat. Off. Gaz. 1138; United States etc. 
Packing Co. ti. Tripp, 31 Fed. Rep. 350; 
Gloucester Isinglass Co. v. Le Page, 30 
Fed. Rep. 370; American Bell Teleph. 
Co. V. National Improved Teleph. Co., 
27 Fed. Rep, 663. 

A decree that a patent is invalid, 
does not prevent the same or a different 
plaintiff from prosecuting a suit against 
another defendant. Consolidated Rol- 
ler-Mill Co V. George T. Smith Mid- 
dlings Purifier Co., 40 Fed. Rep. 305. 

6. Birdsell v. Hagerstown etc. Mfg. 
Co., I Bann. & Ard. Pat. Cas. 426; s. c, 
6 Pat. Off. Gaz. 604; Robertson v. Hill, 
6 Fish. Pat. 465; Miller v. Liggett 
etc. Tobacco Co., 7 Fed. Red. 91; 
American Bell Teleph. Co. v. National 
Improved Teleph. Co., 27 Fed. Rep. 
663; United States etc. Felting Co. v. 
Asbestos Felting Co., 4 Fed. Rep. 813. 

7. Washburn "etc. Mfg. Co. v. Scutt 
& Co., 22 Fed. Rep. 710. 



Ill 



Practice. 



PA TENT LA W. 



Trial at Law. 



6. Trial at Law. — A patentee may recover a verdict against one 
of several defendsints.^ The court is bound to give instructions 
only as to the matters arising in the case.* The relations of the 
judge and jury are the same as in any other civil case.^ 

7. Final Injunction ; When Granted. ^ — A final injunction is granted 
whenever there is no especial equity* to prevent it on the side of 



1. Reutgen v. Kanowrs, i Wash. (U. 
S.) i68; s. c, I Robb Pat. Cas. i. 

2. Pitts V. Whitman, 2 Story (U. S.) 
609; s. c, 2 Robb Pat. Cas. 189* Allen 
t;. Blunt, 2 Woodb. & M. (U. S.) 121; 
s. c, 2 Robb Pat. Cas. 530. 

3. Cahoon t;. Ring, i CliflF. (U. S.) 
592; Conover v. Roach, 4 Fish. Pat. 
Cas. 12. 

As to testimonj*, Johnson ii. Root, i 
Fish. Pat. Cas. 351; Union Sugar Re- 
fining Co. V. Matthiesen, 3 Cliff. (U. 
S.) 639; s. c, 2 Fish. Pat. Cas. 600. 

Nonsuit. — As to power to give per- 
emptory nonsuit. Silsbv v. Foote, 14 
How. (U. S.) 218. 

Jury. — A defective notice will not 
permit motion for withdrawal of juror, 
and vacancy' can be filed in a panel af- 
ter beginning of trial, if the objecting 
part}' is not thereby injured. Silsby 
V. Foote, 14 How. (U. S.) 218. A jury 
having disagreed, the case must go 
over for a new venire. Wilson v. Bar- 
num,i Wall. Jr. (C. C.) 347; s. c, 2 
Fish. Pat. Cas. 635. 

Verdict. — A special verdict may be 
rendered which will be sufficient, al- 
though not in the terms of the issue if 
the court can clearly collect the point 
in issue out of it. Stearns w. Barrett, i 
Mason (U. S.) 153; s. c, i Robb Pat. 
Cas. 97. A verdict of a jury is entitled 
to less regard in patent than in other 
civil cases. Roberts v. Schuyler, 12 
Blatchf. (U. S.) 444; ^. c, 2 Bann. & 
Ard. Pat. Cas. 5. 

Power to Direct Verdict. — See Roger 
V. ShuUz Belting Co., 29 Fed. Rep. 281. 

4. Potter V. Mack, 3 Fish. Pat. Cas. 
428; Rumford Chemical Works v. 
Hecker, 2 Bann. & Ard. Pat. Cas. 386; 
s. c, II Pat. Off. Gaz. 330; Sanders v. 
Logan, 2 Fish. Pat. Cas. 167; Lowell 
Mfg. Co. v.- Hartford Carpet Co., 2 
Fish. Pat. Cas. 472. 

If an estoppel exists. Merriam v. 
Smith, II Fed. Rep. 588. Or if the suit 
is merely for collection purposes. 
Blanchard v. Sprague, i Cliff. (U. S.) 
288. Or if complainant assigns his patent, 
pending the suit. Boomer w. United 
Power Press Co., 13 Blatchf. (U. S.) 
107; s. c, 2 Bann. & Ard. Pat. Cas. 107; 



Wheeler v. McCormick, 11 Blatchf. 
(U. S.) 334; s. c, 6 Fish. Pat. Cas. 551; 
s. c, 4 Pat. Off. Gaz. 692. 

Laches. — This may be changed if the 
defendant is guilty of laches. Salt Co. 
V. Barry, 2 W. N. C. (Pa.) 100; Brush 
Electric Light Co. v. Ball Electric 
Light Co., 43 Fed. Rep 899. 

A long acquiescence may prevent 
the grant of an injunction. Kittle v. 
Hall, 29 Fed. Rep. 508; Kittle v. De- 
Graaf, 30 Fed. Rep. 68g; McLaughlin 
V. People's R. Co., 21 Fed. Rep. 574; 
United Nickel Co. v. New Home 
Sewing Mach. Co., 21 Blatchf (U. S.) 
415; s.c, 17 Fed. Rep. 528. But it is 
no estoppel where the inventor did not 
know that others were investing under 
the supposition that the field was clear. 
Sprague v. Adriance, 3 Bann. & Ard. 
Pat. Cas. 124; s. c, i4Pat. Off. Gaz.308; 
Green v. Barney, 19 Fed. Rep. 420; 
Green v. French, 4 Bann. & Ard. Pat. 
Cas. 169; American etc. Purifier Co. 
V. Christian, 4 Dill. (U. S.) 448; s.c, 3 
Bann. & Ard. Pat.Cas. 42; Child v. Bos- 
ton etc. Iron Works, 19 Fed. Rep. 258; 
Adams v. Howard, 22 Blatchf. (U. S.) 
47; s.c, 19 Fed. Rep. 317; s. c, 26. Pat, 
Off. Gaz. 825. 

But where the complainant has ac- 
quiesced for many years the injunction 
may be withheld until the coming in of 
the master's report. Waite v. Chiches- 
ter Chair Co,, 45 Fed. Rep. 258. 

Especially if laches is coupled with 
acquiescence in the acts of the defend- 
ant. Amazeen Mach. Co. v. Knight, 
39 Fed. Rep. 612; Raymond v. Boston 
Woven Hose Co., 39 Fed. Rep. 365; s. 
c, 48 Pat. Off. Gaz. 1776; Upton v. 
Wayland, 36 Fed. Rep. 691. 

Profits Denied on Account of Laches. 
Entire good faith on part of defendant 
and inexcusable laches on part of com- 
plainant; complainants then may be re- 
fused account of profits. Keller v. 
Stotzenback, 28 Fed. Rep. 81; s. c, 37 
Pat. Off. Gaz. 564. Or dven be a bar to 
.any relief in equity. New York Grape 
Sugar Co. u, Buffalo Grape Sugar Co., 
24 Fed. Rep. 604; s. c, 32 Pat. Off. 
Gaz. 1356. 
Various Reasons Which Have Prevented 



112 



Practice. 



PA TENT LA W. 



Final Injunction. 



the defendant, and the title of the complainant is clear.^ It may, 
and ordinarily will, be granted without any trial at law.* It may 
be suspended if thereby an oppression of the defendant can be 
avoided without injury to complainant.' 



Courts from Granting Injunctions. — Un- 
fair treatment of licensee by defendant. 
Seibert etc. Oil Cup Co. v. Detroit Lu- 
bricator Co. 34 Fed. Rep. 216. 

Where an infringement was not wil- 
ful, and was stopped in good faith. 
North American Iron Works v. Fiske; 
30 Fed. Rep. 632; Odell v. Stout, 22 
Fed. Rep. 159; s. c, 29 Pat. Off. Gaz. 
862; Proctor V. Bayley, 42 Ch. Div. L. 
R. (Eng.) 390. Combined with other 
circumstances the fact that final de- 
cree will soon be rendered. Pope Mfg. 
Co. V. Johnson, 40 Fed. Rep. 584. 

A final injunction will not be refused 
because the defendant was insane when 
he infringed. Avery v. Wilson, 20 Fed. 
Rep. 856. 

1. Potter V. Mack, 3 Fish. Pat. Cas. 
428; Merriam v. Smith, 11 Fed. Rep. 
588; Motte V. Bennett, 2 Fish. Pat. Cas. 
642; Goodyear v. Berry, 2 Bond (U. S.) 
189; s. c, 3 Fish. Pat. Cas. 439; Robin- 
son on Patents, § 1220; Gear v. Holmes, 
6 Fish. Pat. Cas. 595. 

An injunction will not be refused be- 
cause the defendant no longer infringes. 
Bullock Press Co. v. Jones, 3 Bann. & 
Ard. Pat. Cas. 195; s. c. 13 Pat. Off. 
Gaz. 124. Even where the use has 
been merely experimental. Albright 
V. Celluloid &c. Trimming Co.. 2 Bann. 
& Ard. Pat. Cas. 629; s. c, 12 Pat. Off. 
Gaz. 227. See Rumford Chemical 
Works T\ Lauer, 10 Blatchf. (U. S.) 
122; s. c, 5 Fish. Pat. Cas. 615; s. c, 3 
Pat. Off. Gaz. 349. 

Granted Against It may be 

granted against a mere salesman. 
Maltby v. Bobo, 14 Blatchf. (U. S.) 53; 
s. c, 2 Bann. & Ard. Pat. Cas. 459. Or 
one who has the exclusive right to use 
the class of articles to which the inven- 
tion appertains. Colgate v. Interna- 
tional etc. Tel. Co., 17 Blatchf. (U. 8.) 
308; s. u., 4 Bann. & Ard. Pat. Cas. 609. 
Or a carrier who refuses to disclose the 
names of parties delivering articles to 
him for transportation. American 
Cotton Tel. Co.T. McCready , 17 Blatchf. 
(U. S.) 35?; s. c, 4 Bann. & Ard. Pat. 
■Cas. 588; s. c, 17 Pat. Off. Gaz. 565. 

Against the officers of a corporation. 
American Bell Teleph. Co. v. Globe 
Teleph. Co., 31 Fed. Rep. 729; Boston 
Woolen Hose Co.w. Star Rubber Co.,. 



40 Fed. Rep. 167; Howard v. St. Paul 
Plow Works, 31^ Fed. Rep. 743; s. c, 
45 Pat. Off. Gaz. 1067. 

A licensee exceeding his license. 
Covell V. Bostwick, 39 Fed. Rep. 421; 
Union Nickel Co v. California Elec- 
tric Works, 11 Sawy. (U. S.) 250; 
Tappan v. Tiffany etc. Car Co., 39 Fed. 
Rep. 420. But see Chase i). Cox, 41 Fed. 
Rep. 475. 

An injunction may restrain the use 
after the expiration of articles made 
during the life of the patent. American 
etc. Boring Co. v. Sheldon, 18 Blatchf. 
(U. S.) 50; s. c, s Bann. & Ard. Pat, 
Cas. 292; s, c I Fed. Rep. 870; Amer- 
can etc. Boring Co. v. Rutland Marble 
Co., 2 Fed. Rep. 356; s. c, 18 Blatchf. 
(U. S.) 147; s. c, 5 Bann. & Ard. Pat. 
Cas. 346. Or where the defendant has 
ceased to infringe. Facer v. Midvale 
Steel Works, 38 Fed. Rep. 231. But 
will not where the defendant is a cor- 
poration and has disposed of the busi- 
ness in which the patented device was 
used and has not used it since. Kane 
V. Huggins Cracker etc. Co., 44 Fed. 
Rep. 287. See Dissolution of In- 
junction. 

Equity', having jurisdiction over de- 
fendant's person, may act to restrain 
him from a use and construction of the 
infringing device beyond the jurisdic- 
tion of the court. Boyd V. McAlpin, 
3 McLean (U. S.) 427; s. c, 2 Robb 
Pat. Cas. 277; Wilson v. Sherman, i 
Blatchf (U. S.) 536; Thompson v. 
Mendelsohn, 5 Fish. Pat. Cas. 187; 
Wheeler w. McCormick, 8 Blatchf (U. 
S.) 267. But an infringement prior to 
the filing of the bill must be shown. 
Slessinger v. Buckingham, 8 Sawy. 
(U. S.) 469. 

2. Buchanan v. Howland, 2 Fish. 
Pat. Cas. 341; s. c, 5 Blatchf. (U. S.) 
151; Doughty V. V/est, 2 Fish. Pat. Cas. 
553; Hoffheins v. Brandt, 3 Fish. Pat. 
Cas. 218; Wise v. Grand Ave. R. Co., 
33 Fed. Rep. 277; McCoy v. Nelson, 
121 U. S. 487. 

3. Potter V. Mack, 3 Fish. Pat. Cas. 
428; Mowry v. Whitnej', 5 Fish. Pat. 
Cas. 496; Barnard v. Gibson, 7 How. 
(U. S.) 650; Bliss V. Brooklyn, 4 
Fish. Pat. Cas. 597; McElroy v. Kansas 
City, 21 Fed. Rep. 257; Ballard v. Pitts- 



18 C. of L— 8 



113 



Practice. 



PA TENT LA W. 



Final Injunction. 



Other Relief by Decree. — The court may by decree order the in- 
fringing articles to be delivered up to be destroyed,^ or grant 
other equitable relief.^ 



burg, 12 Fed. Rep. 783; Munson v. 
Mayor etc. of N. Y., 19 Fed. Rep. 313; 
Roller Mill Co. v. Coombs, 39 Fed. 
Rep. 803; s. c.4'8 Pat. Oflf. Gaz.973. But 
it is not a matter of right even if tfie de- 
fendant will give bond and the patent is 
about to expire. Brown x>. Deere, 6 
Fed. Rep. 487; s. c, 19 Pat. Off. Gaz. 
1217. 

An injunction will not be suspended 
until the final decree to permit the de- 
fendant to have time to change his ma- 
chine, unless there is a probability of 
his being able to do so in such a manner 
as will evade the patent. Brown v. 
Deere, 6 Fed. Rep. 487; s. c, 19 Pat. 
Off. Gaz. 1217. 

An injunction will be granted al- 
though the plaintiff has withdrawn the 
patented device from a State on account 
of alleged oppressive legislative exact- 
ments. American Bell Telephone Co. 
V. Cushman Telephone Co., 36 Fed. 
Rep. 488; s. c, 4S Pat. Off. Gaz. 1193. 

Expiration of Patent Before Decree. — 
Where a patent expires before fmal 
hearing, the injunction will not be 
granted. Bliss v. Brooklyn, 8 Blatchf 
(U. S.) 5331 Tilghman w. Mitchell, 9 
Blatchf (U. S.) 18; s. c, 4 Fish. Pat. 
Cas. 615. 

A case where the injury to plaintiff 
consists only in the failure to pay the 
price of his license, will not warrant an 
injunction. Sanders v. Logan, i Fish. 
Pat. Cas. 167. 

Where the plaintiff is not a manufac- 
turer the injunction may be refused 
upon his receiving proper compensa- 
tion. Dorsey etc. Rake Co. v. Marsh, 
6 Fish. Pat. Cas. 387. 

The principle being that, where the 
injury to the defendant was greater than 
the advantage to complainant, the in- 
junction should be refused. McCrary 
V. Pennsj'lvania Canal Co., 5 Fed, Rep. 
567. All of these cases are in third cir- 
cuit, which, as stated by Judge Brown 
in Consolidated Roller Mill Co. v. 
Coombs, 39 Fed. Rep. 803, seems to 
have a different rule of decision from 
that obtaining in other circuits and was 
refused to be followed. 

An injunction has been denied on 
the ground that the patentee did not 
put his patent into use or allow others 
to use it on equitable terms. Hoe v. 
Knap, 27 Fed. Rej). 204. 



That a patentee is compelled to put 
his invention into use is denied by Con- 
solidated Roller Mill Co. -v. Combs, 39 
Fed. Rep. S03. 

The right of the plaintiff to his in- 
junction is stated to be based on the 
fact that the chancellor cannot in tiie 
decree give the complainant less than 
his full right and cannot bargain with 
him what he may or may not choose 
to do. Penn v. Bibby, L. R., 3 Eq. 
(Eng.) 308. See Birdsell v. Shaliol, 
112 U. S. 485. 

The ordinary practice is for an in- 
junction, as a matter of course, to fol- 
low a decree in favor of the complain- 
ant on the merits. Rumford Chemical 
Works V. Hecker, 11 Pat. Off. Gaz. 330. 

An injunction will not ordinarily be 
continued as to articles manufactured 
during the life of the patent. Westing- 
house V. Carpenter, 43 Fed. Rep. 894. 
Contra, Crosby v. Gas Light Co.^ i 
Web. Pat. Cas. (Eng.) 119; American 
etc. Boring Co. v. Sheldon, 18 Blatchf. 
(U. S.) 52; s. c, 2 Fed. Rep. 353; 
Mower etc. Co. v. Johnston Harvester 
Co., 24 Fed. Rep. 739; New York 
Belting etc. Co. v. Macgowan, 27 Fed. 
Rep. III. 

But not as to articles made from 
elements made before the expiration, 
when the elements were old and the 
combination the only thing patentable. 
Johnson v. Brooklyn etc. R. Co., 37 
Fed. Rep. 147. 

Liability of Complainant on Bond. — 
Where the complainant has given 
bond to obtain an injunction, he is lia- 
ble on failure for damages for loss of 
sales, depreciation ot goods on hand, etc. 
Toby Furniture Co. v. Colby, 35 Fed. 
Rep. 392. 

1. Birdsell v. Shaliol, 112 U. S. 4S7; 
Needham v- Oxley, 8 L. T., N. S. 
(Eng.) 604; Frearson v. Loe, 9 Ch. 
Div. (Eng.) 67; Betts v. De Vitre, 34 
L. J., Ch. (Eng.) 289; American Bell 
Teleph. Co. v. Kitsell, 35 Fed. Rep. 
c;2i; Emperor v. Day, 2 Giff. (U. S.) 
628. 

But this relief sliould not be granted 
when there is no reason to believe that 
the defendant will act in bad faith in 
regard to the matter. American Bell 
Teleph. Co. v. Kitsell, 35 Fed. Rep. 521. 

2. See Infringement, vol. 10, pp. 
.754, 762 et seg. 



114 



fraotice. 



PA TENT LA W. 



New Trial, etc. 



8. New Trial and Arrest of Judgment. — New trial is granted 
where a material' error has been committed,^ or the verdict is 
against the weight of the evidence ;** or the new evidence, which 
could not have been obtained at the time of the trial* and which 
is not merely cumulative,^ can be and is presented by the losing 
party. 

9. Re-hearing. — The granting of a rehearing is governed by sub- 
stantially the same rules as govern the granting of a new trial,® 



• 1. Allen V. Blunt, 2 Woodb. & M. 
(U. S.) 121 ; s. c, 2 Robb Pat. Cas. 
530; Cowing V. Rumsey, 8 Blatchf. 
(U. S.) 36; s. c, 4 Fish. Pat. Cas. 275. 

2. The error must have been ex- 
cepted to at the time. Allen v. Blunt, 
2 Woodb. & M. (U. S.) 121; s. c, 2 
Robb Pat. Cas. 130; Silsbj' v. Foote, 
14 How. (U. S.) 218; Keyes v. Grant, 
118U. S. 25. 

3. Wilson V. James, 3 Blatchf. (U. 
S.) 227; Aikens v. Bemis, 3 Woodb. & 
M. (U. S.) 348; s. c, 2 Robb Pat. Cas. 
644; Bra3' v. Hartshorn, i Cliff. (U. S.) 
538; Roberts v. Schuyler, 12 Blatchf. 
(U. S. ) 444; s. c, 2 Bann. & Ard. Pat. 
Cas. 5. 

A court will rarely set aside a ver- 
dict on account of the amount of dam- 
ages. Alden v. Dewey, i Story (U. 
S.) 336; s. c, 2 Robb Pat. Cas. 17; 
Whitney v. Emmett, i Baldw. (U. S.) 
303: s. c, I Robb Pat. Cas. 1567; Stimp- 
son V. Railroads, i Wall. jr. (C. C.) 
164, s. c, 2 Robb Pat. Cas. 593. 

Sometimes a party may be given the 
choice to remit part of the damages or 
the other party will get a new trial. 
Johnson v. Root, 2 Cliif. (U. S.) loS; 
s. c, 2 Fish. Pat. Cas. 291; Cowing v. 
Rumsey, 8 Blatchf (U. S.) 36; s. c, 4 
Fish. Pat.' Cas. 275. 

4. Washburn v. Gould, 3 Story (U. 
S.) 122; s. c, I Robb Pat. Cas. 689. 

5. Ames V. Howard, i Sumn. (U. 
S.) 482; s. c, I Robb Pat. Cas. 689; 
Aikens v. Bemis, 3 Woodb. & M. (U. 
S.) 348; s. t., 2 Robb Pat. Cas. 644. 

A motion for a new trial in an issue 
sent for trial to a court of law, will 
not be noticed in the suit in equity. 
Watt V. Starke, loi U. S. 247; s. c, 17 
Pat. .Off. Gaz. 1093. 

6. Ready Roofing Co. v. Taylor, 11; 
Blatchf. (It. S.) 95; 3. c, 3 Bann. & 
Ard. Pat. Cas. 368; Electrical Ac- 
cumulator Co. f. Julien Electric Co., 
39 Fed. Rep. 490. 

Newly Discovered Evidence. — It must 
be shown that the evidence is such as 
would cause the court to come to 
another decision. Buerk v. Imhauser, 



14 Blatchf (U. S.) 19; s. c, 2 Bann. & 
Ard. Pat. Cas. 452; s. c, 10 Pat. Off. 
Gaz. 907; Adair v. Thayer, 7 Fed. Rep. 
920; s. c, 20 Pat. Oflf. Gaz. 523; AUis 
V. Stowell, 5 Bann. & Ard. Pat, Cas. 
458; o. c, 18 Pat. Off. Gaz. 465; Craig 
^|. Smith, 100 U. S. 226; b. c, 17 Pat. 
Off.'Gaz. 141;; Hake v. Brown, 44 Fed. 
Rep. 283; Starling v. St. Paul Plow 
Works, 32 Fed. Rep. 290; Reed tj. 
Lawrence, 32 Fed. Rep. 228. 

It must be shown tliat it was not in 
the possession of the party at the time 
of the hearing and that due diligence 
had been exercised. Reeves v. Key- 
stone Bridge Co., 2 Bann. & Ard. Pat. 
Cas. 256; s. c, 9 Pat. Off. Gaz. 885; 
Munson v. New York, 22 Pat, Off. 
Gaz. 586; Yerrington v. Putnam, 2 
Bann. & Ard. Pat. Cas. 601; Barker 
V. Stowe, 4 Bann. & Ard. Pat. Cas. 
485; s. c, 16 Pat. Off. Gaz. 807; Gillett 
V. Bate Refrigerating Co., 12 Fed. Rep. 
108; Page V. Holmes etc. Tel. Co., 
18 Blatchf. (U. S.) 118 s. c, 5 Bann. 
& Ard. Pat. Cas. 439; s. c, 2 Fed. Rep. 
330; IngersoU v. Benham, 14 Blatchf. 
(U. S.) 362; s. c, 3 Bann. & Ard. Pat. 
Cas. 439; AUis v. Stowell, 5 Bann. & 
Ard. Pat. Cas. 458; s. c, 18 Pat. Off. 
Gaz. 465; Witters v. Sowles, 32 Fed. 
Rep. 765 j Burdsall v. Curran, 31 Fed. 
Rep. 918; Albany Steam Trap Co. v. 
Felthousen, 26 Fed. Rep. 318; Hoe v. 
Kahler, 23 Blatchf. (U. S.) 354; s. c, 
25 Fed. Rep. 271; s. c, 34 Pat. Off. 
Gaz. 127. 

New evidence not introduced on 
account of the incompetence of the 
former solicitor, is no reason to grant 
a rehearing. De Florez v. Raynolds, 
16 Blatchf. (U. S.) 397; s. c, 4 Bann. 
& Ard. Pat. Cas. 431; Railway Reg. 
Mfg. Co. V. North Hudson R. Co., 26 
Fed. Rep. 411. 

Lack of expert testimony will not 
induce the court to grant a rehearing. 
Hitchcock V. Tremaine, 9 Blatchf. (U. 
S.) 550; s. c, 5 Fish. Pat. Cas. 537; 
o. c, I Pat. Off. Gaz. 633. 

Merely cumulative new evidence 
will not induce the court to grant a 



115 



Practice. 



PA TENT LA W. 



Be-hearing, 



excepting the fact that a decree for an injunction, being intelrlocu- 
tory,i makes it subject to revision until the making of a final 
decree,* and that the equitable doctrines are applied.* 



rehearing. Pfanschmidt v. Kelly Mer- 
cantile Co., 32 Fed. Rep. 667; Wit- 
ters V. Sowles, 32 Fed. Rep. 765. 

1. Reeves v. Keystone Bridge Co., 2 
Bann. & Ard. Pat. Cas. 2156; s, c, 9 
Pat. Off. Gaz. S85; Schneider v. Thill, 

5 Bann. & Ard. Pat. Cas. 565. 

An interlocutory decree may be 
opened and the bill dismissed on ac- 
count of the complainant having an 
adequate remedy at lavi^. Spring v. 
Domestic Sewing Mach. Co., 13 
Fed. Rep. 446; s. c, 22 Pat. Off. Gaz. 

H45- 

2. Magie Ruffle Co. v. Elm City Co., 
14 Blatchf. (U. S.) 109; s. c, 2 Bann. 

6 Ard. Pat. Cas. 506; s. c, 11 Pat. Off. 
Gaz. 501; Coburn v. Schroeder, 11 Fed. 
Rep. 425; s. c, 22 Pat. Off. Gaz. 1538; 
Willimantic Linen Co. v. Clark Thread 
Co., 32 Pat. Off. Gaz. 1356; s. c, 24 
Fed. Rep. 799; Wooster v. Handy, 22 
Blatchf. (U. S.) 307; s. c, 21 Fed. Rep. 
31; s. V,., 28 Pat. Off. Gaz. 629; Steam 
Stone Cutter Co. v. Sheldon, 22 
Blatchf. (U. S.) 484; s. c, 21 Fed. Rep. 

87.S- 

Defendant who, subsequent to decree, 
discovers that the patent sued on is 
limited by a foreign patent to patentee, 
may have decree amended to limit the 
Injunction to the life of the American 
patent as limited by the foreign paterft. 
DeFlorez v. Ravnolds, 17 Blatchf. 
(U. S.) 436; s. c., 8 Fed. Rep. 434; 
s. c, 17 Pat. Off. Gaz. 503. 

3. Laches will prevent a party from 
obtaining a rehearing. Andrews v. 
Denslow, 14 Blatchf. (U. S.) 182; s. c, 
2 Bann. & Ard. Pat. Cas. 587; Double- 
day V. Sherman, 6 Blatchf. (U. S.) 513; 
Willimantic Linen Co. v. Clark Thread 
Co., 24 Fed. Rep. 799; s. c, 32 Pat. 
Off. Gaz. 1356. 

But the laches must be considerable. 
Hake v. Brown, 44 Fed. Rep. 283. 

Fraud. — A collusive decree will be 
stricken out. Barker v. Todd, 15 Fed. 
Rep. 265; s. c, 23 Pat. Off. Gaz. 438. 

Where the court is not satisfied with 
the conclusion reached, it may grant a 
re-hearing with leave to take additional 
proof. Rumford Chemical Works v, 
Lauer, 10 Blatchf. (U. S.) 122; s. c, 5 
Fish. Pat. Cas. 615; s. c, 3 Pat. Off. 
Gaz. 349. 

The court will very rarely grant a 
re- hearing when no new facts are 



brought forward. Gage v. Kellogg, 26 
Fed. Rep. 242; s. c, 36 Pat. Off. Gaz. 
238; Tufts V. Tufts, 3 Woodb. & M. (U. 
S.) 429; Rogers v. Reissner, 34 Fed. 
Rep. 270; Giant Powder Co. v. Cali- 
fornia etc. Powder Co., 5 Fed. Rep. 
197. 

Practice in Amendment of Decree. — In 
decrees or decretal orders a mere cler- 
ical correction, especially where the 
decree has not been enrolled, v,-ill be 
made on motion. Witters -v. Sowles, 
32 Fed. Rep. 130; Union Sugar Refin- 
ery V. Mathiesson, 3 Cliff. (U. S.) 146, 

597- ■ 

Practice on Motion for Ee-hearing. — 
After an interlocuter^- decree has been 
entered, application for re-hearing on 
, account of new evidence must be by 
petition for leave to file supplemental 
bill or answer and for re-hearing when 
supplemental bill or answer may be 
ready for hearing. Reeves v. Keystone 
Bridge Co., 2 Bann. & Ard. Pat. Cas. 
256; s. c, 9 Pat. Off. Gaz. 885; Hop 
Bitters Mfg. Co. v. Warner, 28 Fed. 
Rep. 577. 

Or to file a petition in the court 
where the decision was had, and ob- 
tain from the court an order upon the 
other party to show cause on the fol- 
lowing rule day or on some other day 
mentioned, why its prayer should not 
be granted. The other party can then 
answer the petition, and upon the peti- 
tion and answer, the application can be 
heard. Giant Powder Co. v. Califor- 
nia etc. Powder Co., 5 Fed. Rep. 197. 

Practice Petition. — The petition -must 
be. signed by counsel and the aflidavit 
cannot be made before an officer who 
is also attorney for petitioner; it must, if 
re-hearing is sought on the ground' of 
new evidence, state the nature of the 
evidence; that it was not in possession 
of the party until after the hearing; that 
diligence was used to discover it; when 
it was discovered and the circumstances 
of its discovery. Allis v. Stowell, 5 
Bann. & Ard. Pat. Cas. 458; s. c, 18 
Pat. Off. Gaz. 465. 

Terms. — A decree made on re-hear- 
ing may make terms under circum- 
stances which would otherwise cause 
great oppression on a party. Campbell 
V. New York, 35 Fed. Rep. 504. 

Where a re-hearing pending an ac- 
counting is granted, the testimony al- 



116 



Practice, 



PA TENT LA W. Proceedings on Accounting. 



10. Proceedings on Accounting. — The proceedings in the master's 
office are substantially the same as in other cases of reference on 



an accounting.^ 



ready taken before the master will be re- 
tained for use in a subsequent account- 
ing if such be ordered. American etc. 
Boring Co. v. Sheldon, 23 Blatchf. (U. 
S.) 286. 

Wlio Can Move to Amend Decree. — A 
stranger to the decree, even if his rights 
would be affected by the decree, cannot 
move to have it amended. In re Iowa 
etc. Wire Co., 5 Bann. & Ard. Pat. Cas. 
279; Washburn etc. Mfg. Co. v. Colwell 
etc. Fence Co., i Fed. Rep. 22^; Page 
V. Holmes Telegraph Co., 18 Blatchf. 
(U. S.) 118; s. c, 2 Fed. Rep. 320; s. c, 
5 Bann. & Ard. Pat. Cas. 439. 

1. The following has been stated to 
be the proper practice on an accounting 
in a patent suit by Judges Nelson and 
Lowell: "The master appoints a daj' 
for proceeding with the reference, and 
gives notice, by mail or otherwise, to 
the parties or their solicitors. We 
think the solicitor should be notified; 
though probably under rule seventj'- 
five, notice to the party is good notice. 
If the defendant does not appear the 
master proceeds ex farte, and makes 
out the profits and damages, if he can, 
from the evidence produced bj' the 
plaintiff. If it appears that an account 
of profits is necessary to a just decision 
of the cause, and is desired by the 
plaintiff, he makes an order that the de- 
fendant furnish an account by a certain 
day, and adjourns the hearing to that 
day. The defendant should be served 
personally with a notice of this adjourn- 
ment; and of the order to produce his 
account, if it is intended to move for an 
attachment in case he fails to appear. 
The service may be made by any disin- 
terested party and need not be by the 
marshal. If the defendant then fails 
to appear he will be in contempt." 
Kerosene Lamp Heater Co. v. Fisher, 1 
Fed. Rep. 91; s. c, 5 Bann. & Ard. Pat. 
Cas. 78. 

The court will not, however, instruct 
the master in advance as to the course 
he is to pursue. Fisher v. Consolidated 
Amador Mine, 25 Fed. Rep. 201 ; Woos- 
ter V. Gumbirnner, 20 Fed. Rep. 167. 

Nor review each alleged error by 
special motion. Lull v. Clark, 22 
Blatchf. (U. S.) 209; s. c, 20 Fed. Rep. 

454- 

Exceptions. — Exceptions should be 
taken on the spot to a ruling of the 



117 



master, in overruling or sustaining ob- 
jections to admission of testimony. 
Troy Iron etc. Factory v. Corning, 6 
Blatchf (U. S.) 328; s. c, 3 Fish. Pat. 
Cas. 497; American 6tc. Pavement Co. 
V. Elizabeth, ■ Bann. & Ard. Pat. Cas. 
463; s. c, 6 Pat. Off. Gaz. 764. 

The objections to testimony should 
state the ground of the objection. 
Brown v. Hall, 6 Blatchf. (U. S.) 401; 
!,. c, 3 Fish. Pat. Cas. 531. 

And the objection should be made at 
the time of alleged error and afterwards 
reduced to writing and filed with the 
master. Fisher v. Haj-es, 16 Fed. .Rep. 
469; s. c, 24 Pat. Off. Gaz, 304. 

And unless objections similar to the 
exceptions taken were made to the 
draught report, such exceptions will be 
overruled. 

Form of Exception. — Exception should 
point out the error alleged to have 
been committed, and the evidence. 
Turrill v. Illinois Cent. R. Co., 3 Biss. 
(U. S.) 72; Cutting V. Florida etc. R. 
etc. Co., 43 Fed. Rep. 743. 

When No Exceptions Can be Taken. — 
Where the master's report is based 
upon an inspection as well as upon the 
evidence, the findings of fact will not 
be reversed. Piper v^. Brown, 6 Fish. 
Pat, Cas. 240; s. c, i Holmes (U. S.) 
196; s. c, 3 Pat. Off. Gaz. 97. 

Or a master's report upon confiicting 
evidence. Welling v. LeBaw, 34 Fed, 
Rep. 40. 

See as to case where interrogatories 
were adjusted by master. Union Sugar 
Refinery v. Matthiessoij, 3 Cliff. (U. S.) 
146. 

No exception can be taken to a re- 
port on account of error in the interloc- 
utory decree. Williams v. Leonard, g 
Blatchf. (U. S.) 476; s. c, 5 Fish. Pat. 
Cas. 381; Turrell v. Speath, 2 Bann. & 
Ard. Pat. Cas. 185; s. c, 8 Pat. Ofi". 
Gaz. 986. 

Ke-commlttal of Report. — A re-com- 
mittal of report will be made where a 
mistake has been made in it. McKay 
V. Jackman, 17 Fed. Rep. 641; s. c, 24 
Pat. Off. Gaz. 1177. 

Or the master has failed to clearly 
state his conclusions. Webster Loom 
Co. V. Higgins, 43 Fed. Rep. 673. 

But it will not be re-committed mere- 
ly to allow a party to remedy a neglect, 
Fisher v. Hayes, 16 Fed. Rep. 469; s. c, 



Practice. 



PA TENT LA W. 



Costs. 



11. Costs. — The general rule is to give costs to the prevailing 
party. ^ The exceptions are few and rest on strong grounds.^ 
They are generally where the award of them would be against 
equity and good conscience.^ It is, however, a purely statu- 



24 Pat. Oif. Gaz. 304; Gairetson u. 
Clark, 15 BlatcW. (U. S.) 70; s. c, 3 
Bann. & Ard. Pat. Cas. 31:2; s. c, 14 
Pat. Oif. Gaz. 485. 

But see Webster Loom Co. -v. Hig- 
gins, 43 Fed. Rep. 673; Porter Needle 
Co. V. National Needle Co., 22 Fed. 
Rep. 829. 

Nor will it be re-committed where 
the mistake can be corrected by the 
facts appearing in the case aside from 
the evidence before the master. Wit- 
ters V. Sowles, 43 Fed. Rep. 405. 

Opening the Keport. — A report will 
not be opened to admit new testimony 
when it is evident that all important 
testimony is in. Morss v. Union Form 
Co., 39 Fed. Rep. 468. 

Wliat Questions Are Not at Issue Be- 
fore the Master — The validity of the 
patent. Skinner v. Vulcan Iron 
Works, 39 Fed. Rep. 870; Thomson v. 
Wooster, 114 U. S. 104. 

Adjudications made by the court 
upon motion of a party, directing a 
rule for the computation of profits, are 
not open to review by exceptions to re- 
port. Webster, Loom Co. v. Higgins, 
39 Fed. Rep. 462. 

Reporting the Evidence. — Where, at a 
hearing before a master, the evidence is 
not in writing, no order can be made on 
the master to report the evidence. 
Hammacher v. Wilson, 32 Fed. Rep. 
796. See also Loud v. Stone, 28 Fed. 
Rep. 749. 

1. Hovey v. Stevens, 3 Woodb. & M. 
(U. S.) 17"; s. c, 2 Robb. Pat, Cas. 567; 
Urner t>. Kayton, 17 Fed. Rep. 845: 
Calkins v. Bertrand, 10 Biss. U. S. 445; 
s. L., 8 Fed. Rep. 755; Merchant v. 
Lewis, I Bond (U. S.) 172; Green v. 
Barney, 19 Fed. Rep. 420; McKay v. 
Jackman, 17 Fed. Rep. 641. 

Reference. — The cost of a reference 
to a master where the decree is for 
nominal damages only are taxed against 
complainant. Garretson v. Clark, iii 
U. S. 120; Everest v. Buffalo Lubrica- 
ting etc. Co., 30 Fed. Rep. 848; Mofiitt 
V. Cavanagh, 27 Fed. Rep. 511; Dob- 
son V. Hartford Carpet Co., 114 U. S. 

439- 

The complainant paj'S the master's 
fee, and then, if he recovers, has it taxed. 
Macdonald v. Shepard, 10 Fed. Rep. 



919; contra, Urner v. Kayton, 17 Fed. 
Rep. 539; s. c, 24 Pat. Off. Gaz. 1178. 

2. Hovey v. Stevens, 3 Woodb. & M. 
(U. S.) 7; s. c, 2 Robb Pat. Cas. 567; 
Elfelt V. Steinhart, 6 Sawy. (U. S.) 480; 
s. c, 5 Bann. & Ard. Pat. Cas. 596; s. 
c, II Fed. Rep. 896; Yale Mfg. Co. v. 
North, 5 Blatchf. (U. S.) 455; s. c, 3 
Fish. Pat. Cas. 279; Hake v. Brown, 37 
Fed. Rep. 783. 

They may sometimes be divided. 
Fiske V. West etc. Mfg. Co., 19 Pat. 
Off. Gaz. 545; Garretson v. Clark, 16 
Pat. Off. Gaz. 806; Brooks v. Byam, 2 
Story (U. S.) 525. 

3. For instance, where defendant has 
been induced hy complainant to believe 
that his machine did not infringe the 
patent. Sarven v. Hall, 11 Blatchf. 
(U. S.) 29s; s. c, 6 Fish. Pat. Cas. 495; 
s. c, 4 Pat. Off. Gaz. 666. 

Or where the defendants who have 
prevailed, have made a profit by reason 
of the existence of the patent. Hussey 
V. Bradley, 5 Blatchf. (U. S.) 134; s. c, 
2 Fish. Pat. Cas. 362. 

Where defendant has prevailed on 
answer on a defense thqt should have 
clearly been raised by demurer. Brooks 
V. Byam, 2 Story (U. S.) 525. 

An offer having been made by defend- 
ant to pay over the profits. Ford v. 
Kurtz, 12 Fed. Rep. 789. 

But not where a general offer to pay 
ro^'alty has been made and refused. 
Allen V. Deacon, 21 Fed. Rep. 122. 

Where complainant has been defeated 
on the most of his claim. Albany 
Steam Trap. Co. v. Felthousen, 20 Fed. 
Rep. 633; Fay v. Allen, 24 Fed. Rep. 
804; Schimd v. Scovill Mfg. Co., 37 
Fed. Rep. 345; Hayes v. Bickelhoupt, 

21 Fed. Rep. 567; Adams v. Howard, 

22 Blatchf. (U. S.) 47; s. c, 19 Fed. 
Rep. 317; s. c, 26 Pat Off. Gaz. 825. 

But lack of disclaimer in reissue 
which has had its claims unduly broad- 
ened, does not hinder the costs from 
going to complainant where he has thq 
decree. The plaintiff was the original 
inventor of the things claimed but had 
abandoned them. Mundy v. Lidger- 
wood Mfg. Co., 20 Fed. Rep. 191; Yale 
Lock Mfg. Co. V. Sargent, 117 U. S. 

537- 
Prevailing Only on a Side Issue. — 



118 



Practice. 



PA TENT LA W. 



Costs. 



tory right. 1 Security for costs can be demanded in some 



cases. - 



Where complainant has been defeated 
on the main issue and succeeded only 
on an issue of trivial importance, costs 
will be refused. Marks etc. Chair Co. 
V. Wilson, 43 Fed. Rep. 302; Railway 
Mfg. Co. V. R. Co., 34 Pat. OS. Gaz. 
921; Wooster v. Handy, 23 Blatchf. 
(U. S.) 113; s. c. 23 Fed. Rep. 49; 
Wooster v. Hill, 22 Fed. Rep. 830. 

But where defendant fails to defend a 
branch of the case, costs will go against 
him on this branch. Chicopee Folding 
Box Co. V. Rogers, 32 Fed. Rep. 
695. 

Reference to Master. — Where the costs 
on a reference to a master had been 
augmented by the production of irrele- 
vant testimony by the prevailing party. 
Troy Iron etc. Factory v. Cornning, 6 
Fish. Pat. Cas. 85; =. c, 10 Blatchf. (U. 
S.) 223. 

Where rehearing is had to let plain- 
tiff give in evidence he should have 
given in originally. Fay v. Allen, 30 
Fed. Rep. 446. 

Costs on Dismissal. — See Ryan v. 
Gould, 41 Pat. Off. Gaz. 1392. 

1. Hathaway v. Roach, 2 Woodb. & 
M. (U. S.) 63. 

But courts of equity may allow costs 
other than those prescribed in the stat- 
ute. Spaulding v. Tucker, 4 Fish. Pat. 
Cas. 633. 

2. As a general rule, security will 
not be required. Woodworth v. Sher- 
man, 3 Story |U. S.) 171; s. t., 2 Robb 
Pat. Cas. 257. 

For cases in which security has been 
required, see Orr v. Littlefield, i Woodb. 
& M. (U. S.) 13; s. c, 2 Robb Pat. Cas. 

323- 

The rule to enter security must be 
taken at the proper time. Bliss v. Brook- 
lyn. 10 Blatchf. (U. S.) 217. 

When Costs Are Given. — Although 
costs are usually only given when the 
cause is decided, yet a court may grant 
them with reference to matters com- 
pletely settled before that time. Avery 
V. Wilson, 20 Fed. Rep. 856. 

What May be Taxed. — Telegrams 
in the progress of the suit. Hussey v. 
Bradley, 5 Blatchf. (U. S.) 210. 

Postage on the transmission and re- 
turn of a commission. Prouty v. Dra- 
per, 2 Story(U. S.) 199. 

Copies of assignments. Hathawav v. 
Roach, 2 Woodb. & M. (U. S.) 53.' 

Procuring models of the invention 



bv defendant. Hathaway v. Roach, 2 
Woodb. & M. (U. S.) 63. 

Witnesses. — Where the testimony o.f 
witnesses is taken under a deposition by 
consent, a reasonable sum as costs for 
procuring the attendance of witnesses 
may be allowed. Hathaway' v. Roach, 
2 Woodb. & M. (U. S.) 63. 

Fees of witnesses who actually at- 
tend before the plaintiff becomes non- 
suit, though not examined. Hathaway 
V. Roach, 2 Woodb. & M. (U. S.) 63. 

Not to be Taxed — Witnesses. — A wit- 
ness attending merely by request of a 
party. Woodruff v, Barney, i Bond 
(U. S.) 528; s. c. 2 Fish. Pat. Cas. 244; 
Spaulding v. Tucker, 4 Fish. Pat. Cas. 

633- . 

Mileage of witnesses who have come 
twice in the same term. Hathaway v. 
Roach, 2 Woodb. & M. (U. S.) 63. 

Mileage for officers of defendant cor- 
poration. American etc. Drill Co. v. 
Sullivan Mach. Co., 32 Fed. Rep. 552. 

A deposition cannot be taxed where 
it is dispensed with by the party taking 
it and the party called as a witness. 
Hathaway v. Roach, 2 Woodb. & M. 
(U. S.) 63. 

A party is not entitled to counsel fees 
for witnesses before a master. Strauss 
V. Meyer, 22 Fed. Rep. 467. 

Witnesses before a master whose tes- 
timony was afterwards abandoned or 
given up, or stricken out or rejected by 
the master and the striking out or re- 
jection sustained by the court. Troy 
Iron Factory v. Corning, 7 Blatchf (U. 
S.) 16. 

General Treatise. — For a general trea- 
tise on taxable costs, see Wooster v. 
Handy, 23 Blatchf (U. S.) 113; s. c, 23 
Fed. Rep. 49. 

What May Not be Taxed. — Models not 
referred to in the patent. Woodruff v. 
Barney, i Bond (U. S.) 528; s. c, 2 
Fish. Pat. Cas. 244; Hussev f . Bradley, 
5 Blatchf (U. S.) 210; Parker v. Big- 
ler, I Fish. Pat. Cas. 285. 

Model of the infringing machine. 
Cornelly t'.Markwald, 24 Fed. Rep. 187. 

Mileage. — To marslial serving a rule 
to plead on defendant. Parker zi. Big- 
ler, I Fish. Pat. Cas. 285. 

Or for over one hundred miles when 
tiie subpoena is served in another dis- 
trict, though the marshal really travels 
further. Parker v. Bigler, i Fish. Pat. 
Cas. 285. 



119 



Practice. 



PA TENT LA W. 



Bills of Beview. 



13. Bills of Review. — Bills of review follow, in patent cases, the 
same rules as regulate them in other equity proceedings.^ 

13. Attachmeiit for Co.xitempt. — Where a violation of an injunc- 
tion is plain and proved to the satisfaction of the court,* the 



No mileage of ofBcers of a corpora- 
tion testifjing on its behalf. American 
etc. Drill Co. v. Sullivan Mach. Co., 32 
Fed. Rep. 552. 

Copies and Printing. — Copies of plead- 
ings or proofs. Hussey v. Bradley, 5 
Blatchf. (U. S.) 210. 

Printing record is not an item of cost 
"where it is done voluntarily. Spaulding 
V. Tucker, 4 Fish. Pat. Cas. 633. 

Where ordered by court the expense 
may be equally divided. Brooks v. By- 
am, 2 Story (U. S.) 525. 

Of a 'copy of patent procured by de- 
fendant. Hathawav i'. Roach, 2 
Woodb. & M. (U. S".) 63. 

Time of Taxing Costs — Costs are al- 
most invariably taxed after the judg- 
ment is rendered and entered by direc- 
tion of the court nunc pro tunc as part 
of the original judgment. They maj' 
be taxed and entered on the record after 
a transcript has been sent to the su- 
preme court. Sizer v. Many, 16 Hovf. 
(U. S.) 98. 

By Whom Taxed. — Costs are taxed 
with a few exceptions by the clerk. 
He cannot, however, fix the master's 
fee. Doughty v. West etc. Mfg. Co., 4 
Fish. Pat. Cas. 318. 

See, for a complicated taxation with 
reference to master's fee, American etc. 
Drill Co. V. Sullivan Mach. Co., 32 
Fed. Rep. 552. 

1. See Foster's Fed. Practice, §§ 353, 

354- 35.';. 356, 357- 

Where the bill of review is filed on 
account of a matter of fact, leave of 
court to file it must be first obtained; 
where filed on account of newly discov- 
ered evidence, the evidence must be 
more than merely cumulative, and must 
have been discovered within a reason ■ 
able time before the filing of the 
bill. Blandy v. Griffith, 6 Fish. Pat. 
Cas. 434. 

There must have been an effort to 
obtain the evidence for the first trial, 
and where there has been a decree 
' against a party who failed to take any 
evidence while he could have obtained 
such by using proper diligence. Irwin 
■V. Meyrose, 2 McCrary (U. S.) 244. 

A decree by consent cannot be set 
aside by a bill of review. In re Pent- 
large, 17 Blatchf (U. S.) 306; s. c, 4 



Bann. & Ard. Pat. Cas. 607. See, how- 
ever, Thompson v. Wooster, 114 U. S. 
104; s. c, 31 Pat. Ofl^. Gaz. 913. 

Evidence In a Proceeding Before a 
Master — Where Taken. — May be taken 
abroad. Bate Refrigerating Co. v. Gil- 
lette, 28 Fed. Rep. 673. 

Suspension of Accounting. — Account- 
ing will not be suspended pending an 
appeal of, a case on the same patent de- 
cided in another circuit adversely to 
complainant. Celluloid Mfg. Co. v. 
Comstock etc. Co., 27 Fed. Rep. 358. 

How Damages Are to be Paid When 
Several Are Interested In Patent. — 
Where several parties are entitle.d to a 
share of the damages, they are paid in 
proportion to their respective interests. 
Campbejl v. James, 18 Blatchf (U. S.) 
92; s. c. 5 Bann. & Ard. Pat. Cas. 354; 
s. c, 2 Fed. Rep. 338; s. c, 18 Pat. Off. 
Gaz. 1 261; Herring v. Gas Consumers 
Assoc, 9 Fed. Rep. 556; s. c, 21 Pat. 
Oif. Gaz. 203. 

But the defendant may be allowed to 
pay the gross amount into court. Camp- 
bell t). James, 18 Blatchf. (U. S.) 92; 8. 
c, 5 Bann. &. Ard. Pat. Cas. 31:4; s. c, 
2 Fed. Rep. 338; s. c, 18 Pat. Off. Gaz. 
mi; Timken v. Olin, 41 Fed. Rep. 169. 

2. Birdsell v. Hagerstown etc. Mfg. 
Co., I Hughes (U.S.) 59; s. c, 2 Bann. 
& Ard. Pat. Cas. 519; ,s. c, 11 Pat. 
Off. Gaz. 420; Wetherill v. New Jersey 
Zinc Co., I Bann. & Ard.- Pat. Cas. 
105; s. c, 5 Pat. Off. Gaz. 460; Atlan- 
tic etc. Giant Powder Co. v. Dittmar 
etc. Powder Mfg. Co., 9 Fed. Rep. 316; 
s. c, 20 Pat. Off. Gaz. 1380; Pennsyl- 
vania Diamond Drill Co. v. Simpson, 
39 Fed. Rep. 284; s. u., 48 Pat. Off. 
Gaz. 676. 

A mere sending of a machine from 
the maker to an agent is not enough. 
McKay v. Scott etc. Mach. Co., 20 Pat. 
Off. Gaz. 372. 

Or an advertisement that a party 
makes a machine. Allis xk Stowell, 9 
Pat. Off. Gaz. 727. 

But fitting up a factory to make the 
infringing articles is. Goodyear v. 
Mullee, 5 Blatchf (U. S.) 429-' s. c, 3 
Fish. Pat. Cas. 209. 

Or combining to aid others to in- 
fringe. Bate Refrigerating Co. v. Gil- 
lett, 30 Fed. Rep. 683. 



120 



Practice. 



PA TENT LA W. Attachment for Coatempt. 



invention practiced, if changed from that which was enjoined, being 
merely colorably so,^ and the terms^ of the injunction and fact 
of its service^ being clear, the defendant will be attached for con- 
tempt,* and punished in the like manner as in other contempts." 



Or partially making the device and 
sending it to others to be finished. 
Knowles v. Peck, 42 Conn. 386. 

The contempt is the violation of the 
inj unction, not the continuation of the 
infringement of the patent, and the in- 
junction, if. wrong, should be rectified 
by the court on motion of the defend- 
ant. Hamilton v. Simons, 5 Biss. (U. 
S.) 77; Sickels v. Borden, 4 Blatchf. 
(U.S.) 14; Craig f. Fisher, 2 Sawy. 
(U. S.) 345- 

1. Liddle v. Cory, 7 Blatchf. (U. S.) 
i; Putnam v. Hollander, 11 Fed. Rep. 
75; Bate Refrigerating Co. v. East- 
man, II Fed. Rep. 902; Burk v. Im- 
hauser, 2 Bann. & Ard. Pat. Cas. 465; 
o. c, II Pat. Off. Gaz. 112; Onderdonk 
V. Fanning, 2 Fed. Rep. 568; s. c, 5 
Bann. & Ard. Pat. Cas. 562; Califor- 
nia Art Stone Co. v. Molitio, 119 U. S. 
451; s. c, 38 Pat. OflF. Gaz. 329; West- 
ern etc. Mfg. Co. V. Rosenstock, 30 Fed. 
Rep. 67. 

A real difference from the article en- 
joined will not subject the maker to an 
action for contempt; the remedj' is a 
second suit for infringement, even if the 
article is within the patent. Michaels 
V. Roessler, 38 Fed. Rep. 742. 

2. Whipple V. Hutchinson, 4 Blatchf. 
(U. S.) 190; Goodyear v. MuUee, 5 
Blatchf. (U. S.) 429; s. c, 3 Fish. Pat. 
Cas. 209. 

3. Whipple V. Hutchinson, 4 Blatchf. 
(U. S.) igo; Phillips v. Detroit, 2 
Flipp. (U. S.) 92; ». c, 3 Bann. & Ard. 
Pat. Cas. 100; s. c, i6 Pat. Off. Gaz. 
627. 

4. Wetherell v. New Jersey Zinc 
Co., I Bann. & Ard. Pat. Cas. 101;; 
s. c, 5 Pat. Off. Gaz. 460. See Wel- 
lesly V. Earl of Mornington, 11 Beav. 
(Eng.) 180. 

A defendant neglecting to notify his 
agents of the injunction, is responsible 
for their acts. Mundy v. Ridgewood 
Mfg. Co., 34 Fed. Rep. 541. 

The party in contempt must be a 
party to the suit. A corporation 
which purchases the business of an- 
other party who subsequently were en- 
joined, will not be in contempt for not 
obeying the injunction. Bate Refrig- 
erating Co. V. Gillett, 30 Fed. Rep. 
685. 



A party may be punished for con- 
tempt or may be proceeded against by 
injunction where he violates the in- 
junction in another circuit. Roemer v. 
Neumann, 23 Fed. Rep. 447. 

6. Where the violation is not wilful, 
defendant will be merely required to 
pay the profits as damages and costs. 
Ready Roofing Co. v. Taj-lor, 11; 
Blatchf (U. S.) 95; s. c, 3 .Bann. k 
Ard. Pat. Cas. 368; Matthews v. 
Spangenberg, 23 Pat. Off. Gaz. 1624. 

Counsel fees of complainant may be 
exacted. Doubleday v. Sherman, 8 
Blatchf (U. S.) 4s; s.c.,4 Fish. Pat. Cas. 
253; Schillinger v. Gunther, 14 Blatchf. 
(U.S.) 152; s. c. 2 Bann, & Ard. Pat. 
Cas. 544; s. c, II Pat. Off. Gaz. S31; 
Phillips V. Detroit, 2 Flipp. (U. S.) 92; 
o. u., 3 Bann. & Ard. Pat. Cas. 150; 
s. c, 16 Pat. Off. Gaz. 627; Searls v. 
Worden, 13 Fed. Rep. 716. 

An order imposing a fine may be 
made. Fisher v. Hayes, 19 Blatchf. 
(U. S.) 13; s. c, 6 Fed. Rep. 63; s. c, 
20 Pat. Off. Gaz. 601. 

He may committed. Goodyear v. 
Mullee, s Blatchf. (U. S.) 463; s. t., 3 
Fish. Pat. Cas. 260; Fischer v. Haj'es, 
20 Pat. Off. Gaz. 672. 

Mitigating Circumstances. — Mitigat- 
ing circumstances showing that the 
violation of an injunction was not wil- 
ful but unintentional, will lighten the 
penalty. Matthews v. Spangenberg, 
15 Fed. Rep. 813; Barb Steel Wire 
Co. V. Southern Barbed Wire Co., 30 
Fed. Rep. 615; s. c, 40 Pat. Off. Gaz. 
t;78; Morss f . Domestic Sewing Mach. 
Co., 38 Fed. Rep. 482. 

The advice of counsel is no excuse 
for a contempt. Bate Refrigerating 
Co. V. Gillett, 30 Fed. Rep. 683; Barr 
V. Kimbark, 29 Fed. Rep. 428; s. c, 40 
Pat. Off. Gaz . 246; Goodyear v. Mul- 
lee, 5 Blatchf (U. S.) 429; s. c, 3 Fish. 
Pat. Cas. 209; Morss v. Domestic Sew- 
ing Mach. Co., 38 Fed. Rep. 482. 

Nor a mistake. Barb. Steel Wire 
Co. V. Southern Co., 30 Fed. Rep. 615; 
s. c. 40 Pat. Off. Gaz. 578. 

Practice on Contempt. — The court 
can order an inspection of the device 
alleged to be made in contempt of the 
decree and refer the matter to a master 
to determine the facts. The contempt 



121 



Extension of Patent, 



PA TENT LA W. 



Extension of Patent. 



XIX. Extension of Patent.^ — An extension of patents was 
formerly allowed upon the application of the patentee^ or his ad- 
ministrator^ to the Commissioner of Patents,* and a setting forth 
of facts showing the value conferred upon the public by the inven- 
tion and the inadequacy of the return to the patentee.* No ex- 



is a criminal offence, and the fine or 
other penalt3' is a criminal judgment, 
which cannot be altered after the expi- 
ration of the terra. The punishment 
for a contempt may be imposed by an 
order in the suit in which the injunc- 
tion was granted, though it is not ir- 
regular to entitle the proceedings as 
"The People" v. , or same "on re- 
lation of" .the fine may be made 

payable to the party injured by the 
contempt, and tlie party in contempt 
ordered to paj' expenses caused by his 
contempt; he may be committed; there 
cannot be an imprisonment and fine, 
but the party may be fined and com- 
mitted until the fine be paid; and the 
court may make several orders in the 
case without exhausting its powers. 
It need not be averred in the order ad- 
judging contempt that the injunction 
violated was lawful, nor the offense re- 
cited. Fischer v. Ha^'es, 6 Fed. Rep. 

63- 

1. While this subject of patent law is 
practically dead, yet it would leave the 
article incomplete to omit all reference; 
so the notes consist merely of a list of 
cases bearing on the text but not set 
forth at length. 

2. Woodworth v. Sherman, 3 Story 
(U. S.) 171; s. c, 2 Robb Pat. Cas. 257; 
Brooks V. Bicknell, 4 McLean (U. S.) 
64; Crompton v. Belknap Mills, 3 Fish. 
Pat. Cas. ^36; Potter v. Braunsdorf, 7 

.Blatchf. (U. S.) 97. 

3. Brooks V. Bicknell, 3 McLean (U. 
S.) 250; s. c, 2 Robb Pat. Cas. 118; 
Brooks V. Jenkins, 3 McLean (U. S.) 
432; Washburn v. Gould, 3 Story (U. 
S.) 122; o. c, 2 Robb P. Cas. 206, 
Wilson V. Rousseau, 4 How. (U. S.) 
646; s. c, 2 Robb Pat. Cas. 373; Wood- 
worth V. Sherman, 3 Story (U. S.) 171; 
s. c, 2 Robb Pat. Cas.' 257; Kellberg's 
Appeal, 86 Pa. St. 129. 

4. U. S. Rev. Stats,, % 4924. 
Practice.— See U. S. Rev, Stats,, §§ 

4924, 4925; Brooks V. Bicknell, 3 Mc- 
Lean (U, S.) 250; 6. c. 2 Robb Pat. 
Cas. 118; Gear v. Grosvenor, 6 Fish. 
Pat. Cas. 314; s. c, i Holmes (U. S.) 
215; s. c, 3 Pat. Off, Gaz, 380; Johnson 
V. McCuUough, 4 Fish, Pat. Cas. 
170. 

IS 



Practice in deciding whether to grant 
extension. See U. S. Rev. Stats., §^ 
4926, 4927. 

As to How Far tlie Decision of Com- 
missioner Is Conclusive. — Dorsey etc. 
Rake Co. v. Marsh, 6 Fish. Pat. Cas. 
387; s. c, 9 Phila. (Pa.) 395: Clum v. 
Brewer, 2 Curt. (U. S.) 506; Colt v. 
Young, 2 Blatchf. (U. S.) 47!; Brooks 
V. Bicknell, 3 McLean (IJ. S.) 250; s. 
c, 2 Robb Pat. Cas. 118; Jordan v. 
Dobson, 4 Fish. Pat. Cas. 232; ». c, 
2 Abb. (U. S.) 398; Goodyear v. 
Providence Rubber Co., 2 Fish. Pat. 
Cas. 499; s. c, 2 Cliff. (U. S.) 351; 
Gear v. Grosvenor, i Holmes (U. S.) 
215; s. c, 6 Fish. Pat. Cas. 314; a. c, 3 
Pat. Off. Gaz. 380; Crompton v. Bel- 
knap Mills, 3 Fish. Pat. Cas, 536; 
Eureka Co, v. Bartle}' Co,, 11 Wall, 
(U. S.) 488; Mowryi;. Whitney, 8 Fish. 
Pat. Cas. 157; Mowry v. Whitney, 4 
Fish. Pat. Cas. 307; Mowry v. Whit- 
nev, 5 Fish. Pat. Cas. 496; Mowry v. 
Whitney, 14 Wall. (U. S.) 620; Ameri- 
can Wood Paper Co. v. Glens Falls 
Paper Co., 8 Blatchf. (U. S.) 518; s. c, 
4 Fish Pat. Cas. 324; Tilghman v. 
Mitchell, 9 Blatchf. (U. S.) 18; s. c, 4 
Fish. Pat. Cas. 499. 

Is Not Conclusive. — Brooks v. Bick- 
nell, 3 McLean (U. S.) 250; s. c, 2 
Robb Pat. Cas. 118; Wilson t'. Rous- 
seau, 4 How. (U. S.) 646. 

What is a decision. See American 
Wood Paper Co. v. Glens Falls Paper 
Co.,8 Blatchf. (U. S.) 513; s. c, 4 Fish. 
Pat. Cas. 561. 

Foreign patent will not prevent an 
extension. Tilghman t'. Mitchell, 9 
Blatchf. (U. S.) 18; s. c, 4 Fish. Pat. 
Cas. 615; New American File Co. v. 
Nicholson File Co., 8 Fed. Rep. 816; s. 
c, 20 Pat. Off. Gaz. 524. 

B. That the patentee, withou-t neglect 
or fault on his part, has failed to ob- 
tain from the use and sale of his inven- 
tion or discovery a reasonable remvm- 
eration for the time, ingenuity and ex- 
pense bestowed upon it, and the intro- 
duction of it into use, and that it is just 
and proper, having due regard to the 
public interest, that the term of the 
patent should be extended. U. S. Rev. 
Stats. 4929. 



Special Actions 



PA TENT LA W. 



Belating to Patents, 



tension is now granted except by Congress.^ 

The extended patent and original term are considered as two 
distinct terms,*^ but the rights of assignees and grantees to use the 
thing patented of the original term have been, by statute,'^ ex- 
tended into the extended term."* 

XX. Special Actions Relating to Patents— 1. Bills to Restrain 
Suits Against the Customers of a Manufacturer. — On the ground of 
preventing a multiplicity of suits, equity will sometimes enjoin 
the prosecution of suits against customers of a manufacturer 
where the proceedings against them are vexatious, and a suit is 
pending against the manufacturer." 



1. See Rights Given by Act of Con- 
gress, supra. 

A special act procured by fraud is 
binding on the courts, and the . only 
remedy is to obtain a repeal of the 
patent. Gibson v. Gifford, i Blatchf. 
(U. S.) 529. 

And the form of an extension under 
a special act may be the same as that 
in general use. Agawam Co. t'. Jordan, 
7 Wall. (U. S.) 5S3. 

A special act extending the patent is 
effected by the statute saving the rights 
of persons having the lawful right to 
use the thing patented into the extended 
terra. Bloomer v. McQuevvan, 14 How. 
(U. S.) 539; Bloomer v. Millinger, i 
Wall. (U. S.) 340; Blanchard v. Whit- 
ney, 3 Blatchf (U. S.) 307. 

Comfare Bloomer v. Stolley, ^ Mc- 
Lean (U. S.) I s8; Gibson v. Gifford, i 
Blatchf. (U. S.) 529. 

2. Sayles v. Louisville etc. R. Co., 9 
Fed. Rep. ^12; Potter v. Empire Sew- 
ing Mach. Co., 3 Fish. Pat. Cas. 474. 

3. U. S. Rev. Stats., § 4938. 

4. It only means that one having a 
machine lawfully in use during the 
original term may continue lawfully to 
use it in the same manner during the 
extension. Wilson v. Rousseau, 4 How. 
(U. S.) 646; Woodworth v. Sherman, 3 
Stor3' (U. S.) 171; Wilson v. Turner, 4 
How. (U. S.l 712; Blanchard v. Whit- 
ney, 3 Blatchf. (U. S.) 307, Bloomer v. 
Millinger, i Wall. (U. S.)34o; M'ooster 
V. Seidenberg, 13 Blatchf (U. S.) 88; s. 
c, 2 Bann. & Ard. Pat. Cas. 91; Day w. 
Union India Rubber Co., 3 Blatchf (U. 
S.) 488; Union Mfg. Co. v. Lounsbury, 
41 N. Y. 363; Mitchell v. Hawley, i 
Holmes (U. S.) 42; Mitchell v. Hawley, 
16 Wall. (U. S.) 544; s. c, 3 Pat. Off. 
Gaz. 241; Chaffee v. Boston Belting 
Co., 22 How. (U. S.) 217; Eunson v. 
Dodge, 18 Wall. (U. S.) 414; s. c, 5 
Pat. Off. Gaz. 95; Woodworth v. Cur- 



tis, 2 Woodb. & M. (U. S.) 424; s. c, 2 
Robb Pat. Cas. 603; Woodworth v. 
Cook, 2 Blatchf (U. S.) 151; Wether- 
ill V. Passaic Zinc Co., 6 Fish. Pat. Cas. 
50; s. c, 2 Pat. Off. Gaz. 471; Wilson v. 
Simpson, 9 How. (U. S.) 109; Farring- 
ton V. Water Commissioners, 4 Fish. 
Pat. Cas. 216; Aiken v. Manchester 
Print Works, 2 Cliff. (U. S.) 435; 
Bloomer v. McQuewan, 14 How. (U. 
S.) 539; Bloomer v. Stolley, McLeap 
(U. S.) 158. 

Where several rights besides using 
are given, the assignee may continue to 
use, but the other rights fall. Wood v. 
Michigan etc. R. Co., 2 Biss. (U. S.) 
61;; s. c, 3 Fish. Pat. Cas. 464; Hodge 
V. Hudson River R. Co., 6 Blatchf (U. 
S.) 85; s. c, 3 Fish. Pat. Cas. 410. 

5. Kellev v. Ypsilanti Dress Stay 
Mfg. Co., 44 Fed. Rep. 19; Allis v. 
Stowell. 16 Fed. Rep. 783; Rumford 
Chemical Works v. Hecker, 11 Blatchf. 
(U. S.) 552; ». ,.., s Pat. Off. Gaz. 644; 
Booth V. Seevers, 19 Pat. Off. Gaz. 
1 140; Birdsell 1' Hagerstown Agricul- 
tural Mfg. Co., I Hughes (U. S.) 64; 
Ide ?'. Ball Engine Co., 31 Fed. Rep. 
901; National Cash Register Co. v. 
Boston Cash Indicator Co., 41 Fed.' 
Rep. 51. 

But a complainant will not be com- 
pelled to elect between several using 
purchasers. Celluloid Mfg. Co. v. 
Goodyear etc. Dental Co., 13 Blatchf. 
(U. S.) 375; s. c, 2 Bann. & Ard. Pat. 
Cas. 334; s. c. 10 Pat. Off. Gaz. 14. 

The application must be made before 
proceedings have advanced far in the 
other suits. Rumford Chemical Works 
V. Hecker, 11 Blatchf (U. S.) 1552; s. c, 
5 Pat. Off. Gaz. 644. 

The articles claimed to infringe must 
be the same both in the cases against 
the purchasers and the case against the 
manufacturer. Allis v. Stowell, 16 Fed. 
Rep. 783. 



123 



Special Actions 



PA TENT LA W. 



Relating to Patents. 



2. Bills to Enjoin Libel of Patent Right. — A court of equity will 
not enjoin a libel in relation to matters connected with patent 
rights,^ but a false and malicious statement published and used 
for the wilful purpose of inflicting an injury, authorizes the court 
to protect the injured party by an injunction.* 

3. Fraudulent Marking of an Article "Patented." — ^^The United 
States statutes give a qui tain action** against the offender for 
fraudulently marking articles in three cases. 

(a) Imitating the Name of Patentee. — i. Where one 
marks upon anything made, used or sold by him, the name or 
any imitation of the name of any person who has obtained a 
patent therefor without the consent of such patentee, or his 
assigns or legal representatives.* 



In some cases the court has refused to 
act except in cases in the district where 
application to stay proceedings was 
made. Chemical Works v. Hecker, ii 
Blatchf. (U. S.) 552; s. c, 5 Pat. OflF. 
Gaz. 644; Asbestos Felting Co. v. 
United States etc. Felting Co,, 13 
Blatchf. (U. S.) 453. But where the suit 
is not vexatious the court will not re- 



strain. Tuttle 
Rep. 98. 

1. Palmer 1 
501; Francis 
Kidd V. Horr^', 



Matthews, 28 Fed. 



Travers, 20 Fed. Rep. 
. Flinn, 118 U. S. 385; 
28 Fed. Rep. 773; Balti- 
more Car Wheel Co. o. Bemis, 29 Fed. 
Rep. 95; International Tooth Crown 
Co. V. Carmichael, 54 Pat. Off. Gaz. 
1 1 16; Kelley v. Ypsilanti Dress Stay 
Mfg. Co., 44 Fed. Rep. 19; Whitehead 
ti.Kitson, 119 Mass. 484. 

Especially where the purpose is 
merely to save pers'ons from incurring 
liability by purchasing an infringing 
article. Chase v. Tuttle, 27 Fed. Rep. 
110; Boston Diatite Co. v. Florence 
Mfg. Co., 114 Mass. 69. 

Ide V. Ball Engine Co., 31 Fed. Rep. 
901. 

A court will not enjoin the publica- 
tion of an injunction decree. Westing- 
house Air Brake Co. v. Carpenter, 32 
Fed. Rep. 545. 

2. Ide V. Ball Engine Co., 31 Fed. 
Rep. 901; Eraack v. Kane, 34 Fed. 
Rep. 46; Hovey v. Rubber etc. Pencil 
Co., 57 N. Y. 119; Snow v. Judson, 38 
Barb. (N. Y.) 210; Croft w. Richardson, 
59 How. Pr. CN. Y.) 356; Wren v. 
Weild, 42 B. Div. (Eng.) 730; Kelley t;. 
Ypsilanti Dress Stay Mfg. Co., 44 Fed. 
Rep. 19; Bell v. Singer Mfg. Co., 65 
Ga. 452. 

In England the rule prior to the 
Patent act was that allegations' must 
not only assert the statement to be un- 



true, but that it was without reasonable 
and probable cause. Halsev 'v. Brother- 
hood, 15 Ch. Div. L. R." (Eng.) 514; 
Challender v. Royle, 38 Ch. Div., L. R. 
(Eng.) 425; Wren v. Weild, 42 B. 
^Eng.) 730; Prudential Assoc. Co. -u. 
Knott, 10 Ch. App. (Eng.) 143. Later 
English rulings, see CoUey v. Hart, 44 
Ch. Div., (Eng.) 579. 

Practice. — Ordinarily, a bill praying 
relief both for infringement and against 
the publication of slanderous circulars 
concerning the patent is multifarious. 
Fougeres v. Murbarger, 44 Fed. Rep. 
292. 

Jnrisdlction. — The action is in the 
federal courts only. Dudley v. May- 
hew, 3 N. Y. 9; Middlebrooli v. Broad- 
bent, 47 N. Y. 443; Childs V. Tuttle, 54 
Hun (N. Y.) 57. 

3. One-half of said penalty to the per- 
son who shall sue for the same, and the 
other to the use of the United States, 
to be recovered by suit in any district 
court of the United States witifiin whose 
jurisdiction such offense may have been 
committed. U. S. Rev. Stats., § 4901. 

4. U. S. Rev. Stats., § 4901. 

Practice. — The action cannot be pros- 
ecuted in the name of the United States 
alone; it should be in the name of the 
informer. If the United States be joined 
it should be "suing as well on account 
of the United States as of himself." 
United States v. Morris, 2 Bond (U. S.) 
23; s. c, 3 Fish. Pat. Cas. 72; Winne v. 
Snow, 19 Fed. Rep. 507. 

Place to Bring Suit. — Suit must be 
brought in the place where the offense 
was committed. Hat Sweat Mfg. Co. 
V. Davis Sewing Mach. Co., 31 Fed. 
Rep. 294. 

Amount recoverable is just $100 for 
each offense. Stimpson v. Pond, 2 
Curt. (U. S.) 502. 



124 



Special Actions 



PA TENT LA IV. 



Relating to Patents. 



(d) Fraudulently Pirating the Name of Another's 
Patent. — 2. Where one placed the word " patent " or similar 
words on a patented article with intent to imitate or counterfeit 
the mark or device of the patentee without the license or consent 
of such patentee, or his assigns or legal representatives.* 

{c) Fraudulently Marking an Unpatented Article.— 
3. The constituents of the third action are: (i) That the de- 
fendant has placed the word " patent," or any word purporting 
that the same is patented ;* (2) that he has done so on an un- 
patented article ;* (3) and that he has done so for the purpose of 
deceiving the public,* 



Special damage cannot be pleaded. 
Winne v. Snow, 19 Fed. Rep. 507. 

Respondent Superior. — An employer 
who orders goods to be marked patent- 
ed is responsible for the acts of his em- 
ployees in so marking them. Kass v. 
Hawlowetz, 33 Pat. OflF. Gaz. 1135; 
Nichols V. Newell, i Fish. Pat. Cas. 647. 

Limitation. — Action must be brought 
within five years. Stimpson v. Pond, 
2 Curt. _(U. S.) 502. 

Certainty in pleading to a common 
extent after the analogy of the State 
practice in civil actions, is sufficient. 
Fish t;. Manning, 31 Fed. Rep. 340; Hat 
Sweat Mfg. Co. i;. Davis Sewing Mach. 
Co., 31 Fed. Rep. 294. 

1. U. S. Rev. Stat., § 4901. 

The essentials to maintain an action 
under this clause are: the placing the 
word patented, the fact that the article 
is patented, that the patent belongs to 
another, that there be an attempt to im- 
itate or counterfeit it, and that there be 
no consent from a party authorized or 
who could be deemed authorized to give 
such consent. French v. Foley, 1 1 Fed. 
Rep. 804. 

Expired Patent. — It has been held on 
a bill in equity that while, after the ex- 
piration of a patent, the public have the 
right to use the patent, yet no one can 
represent that the goods are made by 
the patentee. Frost v. Rends Kopf, 42 
Fed. Rep. 408. 

2. If the word patent is put on in any 
way or in any part of the article it an- 
swers the statute. Nichols v. Newell, 
1 Fish. Pat. Cas. 647. 

But the use of the phrase "patent ap- 
plied for" is not a violation of the stat- 
ute; it does not make it appear that the 
article is patented. Schewbel v. Bothe, 
40 Fed. Rep. 478. 

3. A fraud with reference to an arti- 
cle actually patented is not under the 
contemplation of this clause of the apt. 



French f. Foley, 11 Fed. Rep. 804; 
Wilson V. Singer Mfg. Co., 9 Biss. (U. 
S.) 173; s. c, 4 Bann. & Ard. Pat. Cas. 
637; s. c, 12 Fed. Rep. 298. 

Where defendant justifies under a 
patent, the court will construe the pat- 
ent, and will determine whether the de- 
fendant's device is made under the pat- 
ent. Hawlowetz v. Kass, 25 Fed. Rep. 
765; s. c, 33 Pat. Off. Gaz. 1499; Tomp- 
kins v. Butterfield, 33 Pat. Off. Gaz. 
758; s. c, 25 Fed. Rep. 556. 

However, the jury were directed to 
find whether a new or different arrange- 
ment of parts from the arrangement of 
same parts in the patent, served any 
new or additional use that is valuable 
on the market. Duval v. Banker, 45 
Pat. Off. Gaz. 591. 

4. Nichols V. Newell, i Fish. Pat. 
647; Oliphant v. Salem Flouring Mills 
Co., 5 Sawy. (U. S.) 128; s. u., 3 Bann. 
& Ard. Pat. Cas. 256; Walker v. Hawx- 
hurst, 5 Blatchf (U. S.) 494; Kass v. 
Hawlowetz, 33 Pat. Off. Gaz. 1135. 

"For the purpose of deceiving the 
public" means "the purpose of making 
the public believe that the article is cov- 
ered by a patent." Tomkins v. Butter- 
field, 33 Pat. Off. Gaz. 758; s. c.,25 Fed. 
Rep. 556. 

There need not be more shown than 
a reck-less disregard of the question 
whether there be a patent or not, to sus- 
tain this portion of the charge. Tomp- 
kins V. Butterfield, 33 Pat. Off. Gaz. 758. 

The question whether the false marlcs 
were put on for the purpose of deceiv- 
ing the public is a question of fact; al- 
though the presumption is that, if the ar- 
ticle was unpatented, they were put on 
for the purpose of deception. Oliphant 
V. Salem Flouring Mills, 5 Sawy. (U. 
S.) 128; s. c, 3 Bann. &. Ard. Pat. Cas. 
256. 

But putting on a hose supporters 
the date of a patent for grain ties is not 



125 



Marking Article 



PA TENT LA W. 



"Patented" by Patentee. 



all of which must be proved } whether the plaintiff's evidence 
must convince the jury beyond a reasonable doub't,^ or whether 
by a reasonable preponderance of evidence^ is contradictorily 
decided. 

XXI. Marking Article "Patented" by Patentee. — It is the 
duty of all patentees and their assignees and legal representatives 
to notify the public by marking the article made that it is 
patented,* in default of which damages cannot be recovered,* 
unless it be proved that the defendant was notified of the infringe- 
ment and continued to infringe after notice.'' 



evidence of intent to deceive; the de- 
vice is not clearly outside the patent. 
Frost w. Rindskopf, 42 Fed. Rep. 418; 
but the conduct of the defendant may 
be gone into by either side both during 
and before the act, to show the intent. 
Nichols V. Newell, i Fish. Pat. Cas. 
647. 

But putting on a structure the word 
patented ■with the date of the patent, af- 
ter the patent has expired will negative 
the idea of fraud. Wilson xk Singer 
Mfg. Co., II Biss. (U. S.) 298; s c, 12 
Fed. Rep. 57. 

Respondant Superior. — A label which 
calls for a patent not apph'ing to the 
articles on which it was placed, it hav- 
ing been put on them by an emplo^'ee 
afterwards a director, it was held that 
the defendants were not affected by his 
knowledge if they had no actual knowl- 
edg themselves. Lawrence v. Holmes, 
45 Fed. Rep. 357. 

1. Nichols V. Newell, i Fish. Pat. 
Cas. 647. 

2. Tompkins v. Butterfield, 33 Pat. 
Off. Gaz. 75S. 

3. Hawlowetz v. Kass, 33 Pat. Off. 
Gaz. 1499. 

Deverall v. Banker, 45 Pat. Off. Gaz. 

S9'- 

These cases are both in the second 
circuit and establish the rule there In 
that circuit also the courts have refused 
to treat the action as a semi-criminal 
one, or to compel the plaintiff to prove 
his case with the same particularity, 
and exactness as a trial of an indict- 
ment. Hawlowetz v. Kass, 33 Pat. Off. 
Gaz. 149s; s. c, 25 Fed. Rep. 765; Kass 
V. Hawlowetz, 33 Pat. Off. Gaz. 1135; 
Fish V. Manning, 31 Fed. Rep. 340. 

4. U. S. Rev. Stats., ^ 4900. 

The statute refers only to a patenter; 
it has no application to an infringer. 
Herring v. Gage, 15 Blatchf (U. S.) 
134; s. c, 3 Bann. & Ard. Pat. Cas. 
396. Nor any one else. Goodyear v. 



Allyn, 6 Blatchf. (U. S.) 33; s. c, 37 
Fish. Pat. Cas. 374. 

The statute provides that this mark- 
ing shall be done "either by fixing (on 
the article) the word 'patented' to- 
gether with the day and year the pat- 
ent was granted; or when', from the 
character of the article, this cannot be 
done, by fixing to it, or to the package 
wherein one or more of them is in- 
closed, a label containing the like no- 
tice. Where the article can be stamped 
at a trifling cost, it must be stamped." 
Putnam v. Sudhoff, i Bann. & Ard. 
Pat. Cas. 198. 

Presumption as to Marking. — The 
presumption is that the article was 
properly marked or the notice other- 
wise properly attached. Schofield v. 
Dunlop, 42 Fed. Rep 323; Providence 
Rubber Co. v. Goodyear, 9 Wall. (U. 
S.) 788; Goodyear v. Allyn, 6 Blatchf. 
(U. S.) 33; s. c, 3 Fish. Pat. Cas. 374; 
Herring v. Gage, 15 Blatchf (U. S.) 
129; Walker on Patents (2nd ed.), \ 

463- 

B. U. S. Rev. Stats, § 4900; McComb 
V. Brodie, i Wood (U. S.) 1^3; ». c, 
5 Fish. Pat. Cas. 384; s. c, 2 Pat. Off. 
Gaz. 117. 

This does not affect the right to an 
injunction. Goodyear v. Allyn, 6 
Blatchf. (U. S.) 33; s. c, 3 Fish. Pat. 
Cas. 374. 

6. U. S. Rev. Stats., ^ 4900. 

The burden to prove (where there has 
been no "marking") notice and infringe- 
ment after notice, is on the complain- 
ant. Goodyear ■?'. Allyn, 6 Blatchf (U. 
S.) 33. But the defendant must first 
prove that there has been no notice by 
marking. Schofield v. Dunlop, 42 Fed. 
Rep. 323. _ 

The notice may be verbal or written. 
New York Pharmical Assoc, v. Tilden, 
14 Fed. Rep. 740. 

There is no trade-mark in the word 
patented, nor can the patentee claim 



126 



Bepeal of Patent. 



PA TENT LA IV. 



B7 Act of Owner, etc. 



XXII. Repeal of Patent — 1. By Act of Owner of Interfering 
Patent. — A party interested in a patent or in the working of an 
invention under patent* may, by bill in equity^ against the owners 
of an interfering patent, have the patent declared invalid.^ The 
decree may declare either of the patents invalid,* and other relief 
may be asked in the bill.^ A decree, however, relative to the 
priority of the two patents should be made, unless the court 
dismiss the bill for lack of interference.® The decree affects the 
interests of the parties to the suit only.''^ 

2. Repeal of Patent by the United States. — Patents can be re- 
pealed in a proceeding by bill in equity^ by the United States 



the exclusive right to use the word 
patented on articles manufactured un- 
der an expired patent. Fairbanks v. 
Jacobus, 14 Blatchf. (U. S.) 339; s. c, 
3 Bann. & Ard. Pat. Cas. 108. 

A party, however, need not notify 
the infringer of his infringement before 
he brings his action. Royer :'. Coupe, 
29 Fed. Rep. 358. 

1. U. S. Rev. Stats., (, 4918, Gay v. 
Cornell, i Blatchf (U. S.) 506; Gold 
& Silver Ore etc. Co. v. United States 
Ore etc. Co., 6 Blaatchf (U. S.) 307; 
s. c, 3 Fish. Pat. Cas. 489. 

The complainant must have ob- 
tained or be interested in a patent, not 
merely claim to be the inventor of an 
invention patented to another. Hoeltge 
V. Hoeller, 2 Bond (U. S.) 386; Mason 
V. Rowley, 3 Am. L. T., N. S. 8. 

2. Liggett etc. Tobacco Co. v. Miller, 
I McCrary (U. S.) 31; s. c, i Fed. Rep. 
203; s. c, 5 Bann. & Ard. Pat. Cas. 
237; s. c, 17 Pat. Off. Gaz. 798. 

3. U. S. Rev. Stats., § 4918. 

The interfering patent may be older 
or younger than the patent owned by 
complainant. Sturges v. Van Hagen, 
6 Fish. Pat. Cas. 572. 

But it must be an interfering patent. 
Garratt v. Seibert, 98 U. S. 75. s. c, 15 
Pat. Off. Gaz. 383; Putnam v. Hutchin- 
son, 12 Fed. Rep. 131; Gilmore v. Golay, 
3 Fish. Pat. Cas. 522. 

But the interference may be either or 
the whole of the part or of part. Gold 
& Silver Ore etc. Co. v. United States 
Ore etc. Co., 6 Blatchf (U. S.) 307,5. c, 
3 Fish. Pat. Cas. 489. 

4. But not both; the question brought 
to issue is only that of prioritv. Pent- 
large V. Pentlarge, 19 Fed. Rep. S17, 
Lockwood V. Cleveland, 20 Fed. Rep. 
164; Sawyer v. Massey, 25 Fed. Rep. 
144; American Clay Bird Co. v. Li- 
gowski Clay Pigeon C0./31 Fed. Rep. 
466; Electric Accumulator Co.. v. 
Brush Electric Co., 44 Fed. Rep 602; 

12' 



Foster v. Lindsay, 3 Dill. (U. S.) 126, 
s. c, 2 Bann. & Ard. Pat. Cas. 172, 
Foster v. Lindsay, i Bann. & Ard. 
Cas. 605; s. c, 7 Pat. Off. Gaz. 514. 

Method of Attacking Complainant's 
Patent — A proper method of making 
the defense that the patent of complain- 
ant is invalid, is by cross-bill as the re- 
lief sought is affirmative; but, as the 
statute gives the court the power on 
notice to adverse parties and other 
due proceedings had according to 
equity, the relief may be had without 
filing cross-bill. American Clay Bird 
Co. V. Ligowski Clay Pigeon Co., 31 
Fed. Rep. 466. But see Lockwood v. 
Cleveland, 6 Fed. Rep. 721. 

Method of Raising Issue Whether 
There Is an Interference in Fact. — May 
be raised by demurrer. Morris v. 
Kempshall Mfg. Co., 20 Fed. Rep. 121. 

5. Potter V. Dixon, 5 Blatchf (U. S.) 
160; s. c, 2 Fish. Pat. Cas. 381. Ameri- 
can Clay Bird Co. t'. Ligowski Clay 
Pigeon Co., 31 Fed. Rep. 466. 

6. Tyler v. Hyde, 2 Blatchf. (U. S.) 
308. 

7. U. S. Rev. Stats., § 4918. 

8. United States it. American Bell 
Teleph. Co., 128 U. S. 315: s. c, 
45 Pat. Off. Gaz. 1311; Mowry v. Whit- 
ney, 14 Wall. (U. S.) 434; United 
States v. Gunning, 18 Fed. Rep. 511. 

The jurisdiction of a court of equity 
to tepeal a patent is based on the gen- 
eral powers of a court of equity to an- 
nul and set aside contracts as instru- 
ments obtained bj' fraud, to correct 
mistakes made in tfiem and to give all 
other appropriate relief against docu- 
ments of that character, such as requir- 
ing their delivering up their cancella- 
tion or their correction in order to 
make them conform to the intention of 
the parties. United States v. Ameri- 
can Bell Teleph. Co., 128 U. S. 315; 
s. c, 45 Pat. Off. Gaz. 131 1. 

Scire facias is not a proper remedy 



Property in Patents. 



PA TENT LA W. 



Generally, 



against the holder of the patent where the patent has been fraud- 
ulently obtained.^ 

XXIII. Pkoperty in Patents — (See also License). — 1. Gen- 
erally. — A patent right has always been considered as property.^ 
The right consists of the right to prevent the use, sale or making 
of a certain invention by others than the patentee.* 

2. Kind of Property. — A patent right is personal property,* and 
after the death of the owner of the patent it vests in the personal 
representatives of the decedent." 



in America. United States v. Ameri- 
can Bell Teleph. Co., 12S U. S. 
1311, s. c, 45 Pat. Off. Gaz. 1311. Nor 
can the attorney general proceed under 
his own name by information. Atty. 
Gen. V. Hecker, 2 Bann. & Ard. Pat. 
Cas. 298; s. u., 32 Fed. Rep. 618. 

There is no jurisdiction in equity 
after the patent has expired to repeal 
the patent. Providence Rubber Co. 
V. Goodyear, 9 Wall. (U. S.) 811. 

Nor will a patent be repealed where 
it is merely alleged that the applica- 
tion had been rejected and the appli- 
cant denied a patent bj' the appellate 
tribunal, and the patent afterwards 
granted, possibly otherwise, where the 
bill to repeal alleged that the same 
matter was presented in the second 
application. United States v. Colgate, 
32 Fed. Rep. 624. Nor in a case where 
the suit is m reality in the interest of a 
private party and the United States is 
indemnified from loss. United States 
V. Frazer, 22 Fed. Rep. 106. 

1. United States v. American Bell 
Teleph. Co., 128 U. S. 315; s. c, 45 Pat. 
Off. Gaz. 1311; United States v. Ameri- 
can Teleph. Co., 39 Fed. Rep; 716, s. 0., 
49 Pat. Off. Gaz. 284, Mahn v. Harwood, 
112 U. S. 354. Overruling and revers- 
ing United States v. American Bell 
Teleph. Co., 32 Fed. Rep. 591. See 
also same case again before the same 
court in 30 Fed. Rep. 523. 

2. McKeever v. United States, 14 
Ct. of CI. 396, Hockett v. State, «05 
Ind. 257; Wilson v. Rousseau, 4 How. 
(U. S.) 646; Patterson v. Kentucky, 97 
U. S. 506; Webber v. Virginia, 103 
U. S. 347; Hammond v. Mason, 92 
U. S. 728; Hendrie v. Sayles, 98 U. 
S. 546; Doughty V. West, 6 Blatchf. 
(U. S.) 429; s. c, 3 Fish. Pat, Cas. 
580; Sloat V. Patten, i Fish. Pat. Cas. 

154- 

3. Jordan v. Overseers of Dayton, 4 
Ohio 309; Tod V. Wick, 36 Ohio St. 
384; Hawks V. Swett, 4 Hun (N. Y.) 
150; Patterson v. Commonwealth, 11 



Bush (Ky.) 315; Celluloid Mfg. Co. 
V. Goodyear Dental etc. Co., 2 Bann 
& Ard. Pat. Cas. 334; In re Brosna- 
han, 18 Fed. Rep. 64; Bloomer v. Mc- 
Quewan, 14 How. (U. S.) 539; Patter- 
son V. Kentucky, 97 U. S. 503; Mc- 
Keever V. United States, 14 Ct. of CI. 
396; Boyd *. Brown, 3 McLean (U. 
S.) 295; Dewitt f. Elmira etc. Mfg. 
Co., 5 Hun (N. Y.) 301. 
• Consequently an authorization by a 
municipality to its officers to advertise 
for the lowest bids on a 'patented arti- 
cle, must mean that the lowest bidder 
authorized to employ the article is 
intended. Greatun v. Griffin, 4 Abb. 
Pr., N. S. (N. Y.) 310. 

The rights conferred by each patent 
are separate; no patent gives a right to 
use improvements and no improvement 
the right to use the original. Gray v, 
James, Pet. (C.C.) 394. 

4. Shaw Relief Valve Co. v. New 
Bedford, 19 Fed. Rep. 7^3; s. c, 28 
Pat. Off. Gaz. 283, Bradley v. Dull, 19 
Fed. Rep. 913; s. c, 27 Pat. Off. Gaz. 
625; Vose x>. Singer, 4 Allen (Mass.) 
230, Holden v. Curtis, 2 N. H. 61. 

A patent right has been treated as a 
chose in action and as analagous to a 
share of stock. Hull Patent Estate, ^ 
13 etc.; Williams on Personal Prop- 
erty, pp. 98, 244. 

5. Shaw Relief Valve Co. v. New 
Bedford, 19 Fed. Rep. 7157; s. c, 28 Pat. 
Off. Gaz. 283; Bradley v. Dull, 19 Fed. 
Rep. 913, o. c, 27 Pat. Off. Gaz. 675; 
Peoria Target Co. v. Cleveland Tar- 
get Co., 43 Fed. Rep. 922; Hqdge v. 
Nroth Missouri R. Co., i Dill. (U. S.) 
104; s. c, 4 Fish. Pat. Cas. 161. 

An executor can maintain suit on a 
patent in the same manner as if he 
were trustee. Providence Rubber Co, 
V. Goodyear, 9 Wall. (U. S.; 788. 

The right to take out a patent passes 
to the personal representatives of a 
decedent. Stimpson v. Rogers, 4 
Blatchf. (U. S.) 333; Rice v. Burt, 16 
Pat. Off. Gaz. 1050. 



128 



Property in Patents. 



PA TENT LA W. 



Joint Owners. 



8. Joint Owners. — Joint owners of a patent right are owners in 
common thereof,^ and in the absence of any specific agree- 
ment,* are not partners.' They are not liable to each other for an 
individual use of the patented invention.* A conveyance of a 
joint owner's portion may be made^ and a license granted by one 
under which the licensee will not be liable to the others.® How 
far the joint owners are accountable to each other for profits 
made is undecided.' 



The executor takes the patent in 
trust for the next of kin, as the grant 
of personal property to a man and his 
heirs means to him and the next of kin 
according to the statute of distribution. 
Shaw Relief Valve Co. v. New Bed- 
ford, 19 Fed. Rep. 753; Pelham v. 
Edelmeyer, 25 Pat. Off. Gaz. 292. 

Contra, that the^' are not personal 
assets but a franchise to be held in 
trust for the heirs. Goodyear v. HuUi- 
hen, 2 Hughes (U. S.) 492; s. c, 3 Fish. 
Pat. Cas. 257. 

Where a devise has been made in 
the will which would include the pat- 
ent, the personal representative takes it 
in trust for devisee. Stimpson p. Rog- 
ers, 4 Blatchf. (U. S.) 333. 

1. Dunham v. Indianapolis etc. R. 
Co.,,7 Biss. (U. S.) 223; s. c, 2 Bann. 
& Ard. Pat. Cas. 327; Whitney v. 
Graves, 3 Bann. & Ard. Pat. Cas. 222; 
s. c, 13 Pat. Off. Gaz. 455; Vose v. 
Singer, 4 Allen (Mass.) 226; Duke v. 
Graham, 19 Fed. Rep. 647. 

2. Pitts V. Hull, 3 Blatohf. (U. S.) 
201. 

They can enter into partnership and 
stipulate that one shall have sole con- 
trol of the business. Kinsman v. Park- 
hurst, 18 How. (U. S.) 289. 

But a mere agreement to account to 
each other does not make them partners. 
Fraser v. Gales, 20 Reporter 427.' 

3. Pitts V. Hall, 3 Blatchf. (U. S.) 
201. 

A right restricted to a partnership 
and not extending to assigns does not 
pass to corporations organized by the 
co-partners. Lock v. Lane etc. Co., 
35 Fed. Rep. 289. 

4. Vose V. Singer, 4 Allen (Mass.) 
226; DeWitt V. Elmira etc. Mfg. Co., 
66 N. Y. 459; Parkhurst v. Kinsman, 
9 N. J. Eq. 600; Dunham v. Indianapo- 
lis etc. R. Co., 7 Biss. (U. S.) 223; s. 
c, 2 Bann. & Ard. Pat. Cas. 327; Whit- 
ing V. Graves, 3 Bann. & Ard. Pat. 
Cas. 222. 

B. May v. Chaffee, 2 Dill. (U. S.) 
385; s. c, ■; Fish. Pat. Cas. 160. 



But can sell only his own share. 
Pitts V. Hall, 3 Blatchf (U. S.) 
201. 

6. Dunham v. Indianapolis etc. R. 
Co., 7 Biss. (U. S.) 223; s. c, Bann. & 
Ard. Pat. Cas. 327; DeWitt v. Elmira 
etc. Mfg. Co., 66 N. Y. 459; Clum v. 
Brewer, 2 Curt. (U. S.) 506; Mathers 
V. Gran, L. R., i Ch. App. 29. 

7. "The exact mutual rights of part 
owners of a patent have never yet been 
authoritatively settled. If one part 
owner derives a profit from a patent, 
either by getting the royalties from its 
use, or -purchase money for sale of 
rights, it would seem tfiat he should 
be accountable to the other part own- 
ers for their portion of such profit. 
And probably a bill for an account 
would be sustained therefor." Aspin- 
wall Mfg. Co. V. Gill, 32 Fed. Rep. 697; 
Gates V, Fraser, 9 111. App. 628. 

An agreement to divide license fees 
will compel accounting. Gates v. 
Fraser, 9 111. App. 624. 

Or where inventor agreed to take 
patent for henefit of himself and tenant 
in common. Blakeney v. Goode, 30 
Ohio St. 350; Marston v. Swett, 66 
N. Y. 206. 

An agreement, between joint owners 
to account for the sales of the right to 
use a machine, does not compel them 
to account for profits on sales of ma- 
chines to those having the right to use, 
or for profits of manufacture. Huben- 
thal V. Kennedy, 76 Iowa 707. 

Estoppel of Joint Inventors. — A joint 
patentee cannot set up the invalidity 
of the patent against his co-owner. 
Stearns v. Barrett, 1 Pick. (Mass.) 

443- 

Where two joint inventors apply for 
a patent and one of them subsequently 
obtains it, the other has a joint interest 
in the invention and patent. Vetter 
V. Leutzinger, 31 Iowa 182. 

Trust Doctrine Between Joint Owners. 
— An issue of a patent to one of two 
joint owners of a patent enures to both. 
Vetter v. Leutzinger, 31 Iowa 182. 



18 C. of L.— 9 



129 



Property in Patents. 



PA TENT LA W. 



Assignment. 



4. Assignment. — (i) Definition. — An assignment is a con- 
veyance of the whole interest in a patent or any undivided part 
of such whole interest, in every portion of the United States.* 

(2) Definition of Grant. — A grant is a conveyance of the 
exclusive right under the patent to make and use, and to, grant 
to others the right to make and use, the thing patented within 
and throughout some specified part or portion of the United 
States.2 

(3) Rights and Liabilities of Territorial Grantee. — 
A territorial grantee has a right to sell within his territory articles 
to be used outside of it in the territory of the patentee or of a 
grantee subsequent in time to him,^ A purchase from him will 
not protect a purchaser who buys the goods in the territory for 
the purpose of selling them outside.* 

(4) Requisites of Assignment. — Any patent or an interest 
therein^ 



1. Potter V. Holland, 4 Blatchf. (U. 
S.) 206; s. c, I Fish. Pat. Cas, 327; 
Gaylor v. Wilder, 10 How. (U. S.)477; 
Blanciiard v. Eldridge, i Wall. Jr. (C. 
C) 337; s. c, 2 Robb Pat. Cas. 737; 
Pitts T.Jameson, 15 Barb. (N. Y.) 310; 
Buss V. Patney, 38 N. H. 44; Meyer v. 
Bailey, 2 Bann. & Ard. Pat. Cas. 73; s. 
c, 8 Pat. Off. Gaz. 437; Tyler v. tuel, 
6 Cranch (U. S.) 324. 

Otiier cases do not strictly carry out 
this definition, but what are now called 
grants are also called assignments. 
Baldwin v. Libbey, i Cliff. (U. S.) 150; 
Farrington v. Gregory, 4 Fish. Pat. 
Cas. 221. 

But a grant carrying the above rights, 
is an assignment regardless of its form 
of words. Nellis v. Pennock Mfg. Co., 
13 Fed. Rep. 451; s. c, 22 Pat. Off. 
Gaz. 1 131. 

2. Potter V. Holland, 4 Blatchf. (U. 
S.) 206; s. c, I Fish. Pat. Cas. 327; 
Whittemore v. Cutter, i Gall. (U. S.) 
429. 

Contents of Instrument Prevails. — , 
The fact that the form of an assign- 
ment or grant was adopted to serve ul- 
terior ends, does not make the instru- 
ment less an assignment or grant. Sie- 
bert etc. Oil Cup Co. v. Beggs, 32 Fed. 
Rep. 790. 

Anything less than these is only ul 
license. Theberath v. Celluloid Mfg. 
Co., 3 Fed. Rep. 143; Hill v. Whit- 
comb, I Holmes (U. S.) 317; s. c, i 
Bann. & Ard. Pat. Cas. 34, s. c, 5 Pat. 
Off. Gaz. 430; Still V. Reading, 4 
Wood (U. S.) 345, s. c, 9 Fed. Rep. 
40; s. c, 20 Pat. Off. Gaz. 1025; Game- 
well Fire Alarm Tel. Co. v. Brooklyn, 



14 Fed. Rep. 255; Stanley Rule etc. 
Co. V. Bailey, 14 Blatchf. (U. S.) 510; 
Farrington v. Gregory, 4 Fish. Pat. 
Cas. 221; Glover v. Messer, 5- Fish. 
Pat. Cas. 411; Hatfield v. Smith, 44 
Fed. Rep. 355; Dorsey etc. Rake Co. 
V. Bradley Mfg. Co., 12 Blatchf. (U. 
S.) 202. 

3. Adams v. Burke, 17 Wall'. (U. S.) 
453; Washing Mach. Co. v. Earle, 3 
Wall. (C. C.) 320; Simpson v. Wilson, 
4 How. (U. S.) 709. 

And it is unimportant whether the 
vendor knows that the goods are to be 
used outside or not. Hobbie v. Smith, 
27 Fed. Rep. 656; Hobbie v. Jennison, 
40 Fed. Rep. 887; Contra, Washburne 
etc. Co. V. Southern Wine Co.,. 37 Fed. 
Rep. 4284 Hatch v. Hall, 30 Fed. Rep. 
613. 

The patentee cannot, however, sell 
for use in a territory for which he has 
made a grant. Ferrel v. Smith, 29 La. 
Ann. ,811. 

4. Standard Folding Bed Co. v. 
Keeler, 37 Fed. Rep. 693; Standard 
Folding Bed Co. v. Keeler, 41 Fed. 
Rep. 51, Hatch v. Adams, 22 Fed. Rep. 
434; Hatch V. Hall, 22 Fed. Rep. 
434; Hatch V. Adams, 30 Fed. Rep. 
613; American Paper Barrel Co. v. 
Laraway, 28 Fed. Rep. 141, Union 
Paper Bag Co. v. Nixon, i Flipp. (U. 
S.) 491; s. c, 2 Bann. & Ard. Pat. Cas. 
244; s. c, 9 Pat. Off. Gaz. 691. 

5. The assignment of a patent is reg- 
ulated by the statute, which must be 
followed strictly. Gayler v. Wilder, 
10 How. (U. S.) 477. 

But as patents are now granted to 
the patentee and his legal representa- 



130 



Property in Patents. 



PA TENT LA W. 



Assignment. 



shall be assignable in law by an instrument in writing, ^ 
and the patentee, or his assigns or legal representatives may, in 
like manner, grant and convey an exclusive right under his patent 
to the whole or any specified part of the United States. 

(S) Formal Requisites of Assignment or Grant. — Any 
instrument containing operative words showing an intention to 
assign* and a sufficiently clear designation of the subject matter 



tives, they are assignable as other chat- 
tels by force of the grant. Blanchard v. 
Eldredge, i Wall. Jr. (C. C.) 337; s. c, 
2 Robb Pat. Cas. 737. 

States have no right to restrict sale 
of patents or determine the form of the 
assignment. HoUida v. Hunt, 70 111. 
109; Crittenden v. White, 23 Minn. 29, 
Cranson v. Smith, 37 Mich. 309; Pat- 
terson V. Commonwealth, 11 Bush 
(Ky.) 311. 

In Indiana a statute providing that 
the patentee must file a copy of the 
patent right in the county where any 
sale took place, was passed upon, but 
a decision of its validity not given. 
Hankey v. Downey, 116 Ind. 118; 
New V. Walker, 108 Ind. 365. 

1. Home V. Chatham, 64 Tex. 36; 
Campbell v. James, 18 Blatchf. (U. S.) 
92; s. c, 18 Pat. Off. Gaz. mi ; s. c, 
2 Fed. Rep. 338. 

The various rights of selling, 
using and making under the patent, 
cannot be assigned separately. Gay- 
ler f. Wilder, 10 How. (U. S.) 477; 
Suydam v. Day, 2 Blatchf. (U. S.) 20; 
Sanford v. Messer, i Holmes (U. S.) 
149; s. c, 5 Fish. Pat. Cas. 411 ; s. c, 
1 Pat. Off. Gaz. 470. 

A single claim under a patent may be 
assigned. Pope Mfg. Co. v. GormuUy 
«tc. Co., 34 Fed. Rep. 893. 

An agreement which is not an as- 
signment or grant, need not be in 
-writing. Blakeney v. Goode, 30 Ohio 
St. 350; Springfield v. Drake, 58 N. H. 

19- 

Nor need the assignment of a right 

to canvass for and sell a patented ma- 
chine. Springfield v. Drake, 58 N. H. 
19. 

Nor an agreement to assign an in- 
terest in a contemplated invention. 
Burr V. De La Vergue, 102 N. Y. 415. 

Assignment by Written Instrument. 
— The instrument of conveyance 
must be in writing. Baldwin v. Sib- 
ley, I Cliff. (U. S.) 150; Jordan v. 
Dobson, 4 Fish. Pat. ,Cas. 232; s. c, 2 
Abb. (U. S.) 398; s. c, 7 Phila. (Pa.) 
533, Davy V. Morgan, 56 Barb. (N. 



Y.) 218; Gibson v. Cook, 2 Blatchf. 
(U.S.) 144; Case v. Redfield, 4 Mc- 
Lean (U. S.) 526; Black V. Stone, 33 
Ala. 327 ; McKeman v. Hite, 6 Ind. 
428; Moore v. Bare, 11 Iowa 198; Stone 
V. Palmer, 28 Mo. 839; Holden -v. 
Curtis, 2 N. H. 61; Boyd v. McAlpin, 
3 McLean (U. S.) 427; Galpin v. At- 
water, 29 Conn. 93. 

Seal. — But need not be under seal. 
Godfried v. Miller, 104 U. S. 521 ; s. c, 
21 Pat. Off. Gaz. 711. 

Verbal Assignment. — A verbal as- 
signment, however, gives an equitable 
right. Burke v. Partridge, 58 N. H. 

349- 

Acknowledgment. — An acknowledg- 
ment before a notary public dispenses 
with the necessity of proving the sig- 
nature of the assignor. New York 
Pharmical Association v. Tilden, 14 
Fed. Rep. 740 ; s. c, 23 Pat. Off. Gaz. 
272. 

U. S. Rev, Stats., § 4898 provides: 
"Every patent or any interest therein 
shall be assignable in law by an instru- 
ment in writing; and the patentee or 
his assigns or legal representatives 
may, in like manner, grant and convey 
an exclusive right under his patent to 
the whole or any specified part of the 
United States. An assignment, grant 
or conveyance shall be void as _against 
any subsequent purchaser or mort- 
gagee for a valuable consideration, 
without notice, until it is recorded in 
the Patent Office within, three months 
of the date thereof." • 

This section is confined to assign- 
ments after the grant of the patent. 
Wright V. Randel, 19 Blatchf. (U. S.) 
495; s. c, 8 Fed. Rep. 591. 

2. Campbell v. James, 18 Blatchf, 
(U. S.) 92 ; s. c, 2 Fed. Rep. 338 ; s. c, 
S Bann. & Ard. Pat. Cas. 354; s. c, 18 
Pat. Off. Gaz. nil. 

Where it is ambiguous from the 
words whether or not an instrument is 
intended as an assignment, the inten- 
tion of the parties may be considered 
Kearney v. Lehigh Valley R. Co., 27 
Fed. Rep. 699. 



131 



Property in Patents. 



PA TENT LA W. 



Assignment. 



to be assigned^ and the parties to the contract,* is sufficient. It 
is to be construed, as in any other contract,* by the whole agree- 
ment,* and under the ordinary rules governing the interpretation 
of written contracts.^ 

(6) Assignor. — The instrument of assignment follows the 
ordinary rules governing the contract® and the State laws where 
the contract is made,' as to the rights of agents,* corpora- 



1. Harmon v. Bird, 22 Wend. (N. 
Y.) 113; Myers v. Turner, 17 111. 179; 
Hill V, Thuermer, 13 Ind. 351; Wash- 
burne etc. Mfg. Co. v. Haish, 4 Fed. 
Rep. 910; s. c, 19 Pat. Off. Gaz. 173; 
Nellis V. Pennock Mfg Co., 13 Fed. 
Rep. 451 ; s. c, 22 Pat. Off. Gaz. 1131; 
Campbell v. James, 18 Blatchf. (U. 
S.) 92, s. c, 5 Bann. & Ard. Pat. Cas. 
354; s. c, 2 Fed. Rep. 338, s. i;., 18 
Pat. Off. Gaz. iiii. 

2. Where the parties can be ascer- 
tained it is sufficient. Fisk n. Hollan- 
der, 4 McArthur (D. C.) 355. 

3. Washburne v. Gould, 3, Story (U. 
S.) 122; s. c, 2 Robb Pat. Cas. 206; 
Morse v. O'Reilly, 6 Pa. L. J. (Pa.) 
501; Philadelphia R. Co. v. Trimble, 
10 Wall. (U. S.) 367; Eureka Co. 7;. 
Bailey Co., i Wall. (U. S.) 488; Perry 
V. Corning, i Blatchf. (U. S.) 195; 
Hope Iron Works v. Holden, 58 
Me. 146 ; Taylor v. Collins, 102 Mass. 
248 ; Seibert etc. Oil Cup- Co. v. Phil- 
lips Lubricator Co., 10 Fed. Rep. 677 ; 
Seibert Co. v. Beggs, 32 Fed. Rep. 

'790; Wilson V. Chickering, 14 Fed. 
Rep. 917. 

Intention of Parties. — It should be 
construed to carry out the intention 
of the parties. American etc. Pavement 
Co. V. Jenkins, 14 Wall. (U. S.) 452 ; s. 
c, I Pat, Off. Gaz. 465 ; Hall v. Speer, 
6 Pitts. L. J. 403 ; Perry v. Corning, 7 
Blatchf. (U. S.) 195 ; Wetherill v. Pas- 
saic Zinc Co., 6 Fish. Pat. Cas. 50 ; s. 
c, 2 Pat. Off. Gaz. 471. 

Lawoftbe Land. — Assignments will 
not be construed in conflict with the 
law of the land unless the intention is 
clearly indicated by the terms of the 
agreement. Wilson v. Rousseau, 4 
How. (U. S.) 646. 

4. Goodyear v. Cary, 4 Blatchf. (U. 
S.) 271; Baldwin v. Sibley, i Cliff. 
(U. S.) 150; Washburne z). Gould, 3 
Story (U. S.) 122; s. c, 2 Robb Pat. 
Cas. 256. 

6. Words are supposed to be used 
in their common sense. Goodyear v. 
Cary, 4 Blatchf. (U. S.) 271. 

And no other meaning is to be given 



132 



them unless it appears that some other 
or different meaning was intended. 
Goodyear f. Cary, 4 Blatchf. (U. S.) 
271; Woodworth v. Sherman, 3 Story 
(U.S.) 171, s. c, 2 Robb Pat. Cas. 
257 ; Troy Iron etc. Factory v. Corn- 
ing, 14 How. (U. S.) 193. 

What May Be Referred to In Inter- 
preting an Assignment. — The circum- 
stances under which the agreement 
was made. Read v. Bowman, 2 Wall. 
(U. S.) 591; Troy Iron etc. Factory 
V. Corning, 14 How. (U. S.) 193; 
Wetherill v. Passaic Zinc Co., 6 Fish. 
Pat. Cas. 50; s. c, 2 Pat. Off. Gaz. 
471 ; Steam Cutter Co. v. Sheldon, 10 
Blatchf. (U. S.) I. ' 

The specification where the assign- 
ment refers to it. Read v. Bowman, 2 
Wall. (U. S.) 591. 

A subsequent confirmatory instru- 
ment. R. Co. V. Trimble, 10 Wall. 
(U. S.) 367. 

Doubt is to be resolved against 
grantor. Smith v. Selden, i Blatchf. 
(U.S.) 475; May v. Chaffee, 2 Dill. 
(U. S.) 385; s. c, 5 Fish. Pat. Cas. 
160. 

Oral Testimony as Effecting Interpre- 
tation. — Declarations written or oral 
as to the meaning of the contract or 
motives for making it, cannot vary the 
sense of the written contract. Weth- 
erill V. Passaic Zinc Co., 6 Fish. Pat. 
Cas. 50; s. c. 2 Pat. Off. Gaz. 471. 

The date of delivery may be shown 
to be different from the date of the 
instrument. Dyer v. Rich, i Met. 
(Mass.) 180. 

Also what was the consideration. 
Wheeler v. Billings, 38 N. Y. 263. 

6. Kinsman v. Parkhurst, 18 How. 
(U. S.) 289; Wilson V. Rousseau, 4 
How. (U. S.) 646; s. c, 2 Robb Pat. 
Cas. 372. 

Several territorial grantees may unite 
in a single instrument as assignors. 
Ladd V. Mills, 22 Blatchf. (U. S.) 242; 
6. c, 20 Fed. Rep. 792. 

7. Fetter v. Ne\yhall, 21 Blatchf. (U. 
S.) 445; s. c, 17 Fed. R^p. 841. 

8. Agent. — Contracts may hi executed 



Property in Patents. 



PA TENT LA W. 



Assignment. 



tions,^ married women* and others.' 

(7) Execution and Proof of Assignment. — The manner of 
executing and proving an assignment follows the State practice.* 

(8) Condition. — A condition in an assignment does not 
reduce it to a license ;^ if the condition is precedent, the assignee 
takes no title until performance,* otherwise where the condition 
is subsequent.' 

(9) Covenants.^ 



by the agent of a corporation, but the 
agent should, in the body of the con- 
tract, name the corporation as the con- 
tracting party and sign as its agent or 
officer. Gottfried v. Miller, 104 U. S. 
521; s. c, 21 Pat. Off. Gaz. 711; Bellas 
■V. Hays, 5. S. & R. (Pa.) 427. And 
where the assignment is executed by 
the agent, there must be proof of the 
agent's authority. Sone v. Palmer, 28 
Mo. 539. And the authority must be 
under seal to authorize an assignment 
under seal. Bejilas v. Hays, 5 S. & R. 
(Pa.) 427; Stetson V. Patten, 2 Me. 358. 
Administrator and Executor. — Don- 
oughe V. Hubbard, 27 Fed. Rep. 742; 
Bradley T". Dull, 19 Fed. Rep. 913; s. c, 
27 Pat. Off. Gaz. 625; Northwestern 
Fire Extinguisher Co. v. Philadelphia 
Fire Extinguisher Co., i Bann. & Ard. 
Pat. Cas. 177; s. i;., 6 Pat. Off. Gaz. 34. 
The State laws cannot limit the author- 
ity of the administrator to assign. 
Brooks f. Jenkins, 3 McLean (U. S.) 
432; Goodyear v. HuUihen, ^2 Hughes 
(U. S.) 492; s. c, 3 Fish. Pat. Cas. 251. 

1. Where the assignment was made 
by an officer having authority, or was 
ratified, it is a good execution. Eureka 
Co. V. Bailey Co., 11 Wall. (U. S.) 488. 
See as to what is a good execution for 
corporation. Campbell v. James, 17 
Blatchf. (U. S.) 42; s. c, i8 Pat. Off. 
Gaz. 979; Gottfried v. Miller, 104 U. S. 
32 1 ; s. c, 2 1 Pat. Off. Gaz-. 711. 

2. In New Tork where the property 
of a married woman is distinctly her 
own, she may, by her sole deed, assign 
her interest in a patent. Fetter v. New- 
hall, 21 Blatchf. (U. S.) 44S; s. c, 17 
Fed. Rep. 841, s. c, 28 Pat. Off. Gaz. 
502. 

3. Administrators — An administrator 
may assign. Brooks v. Jenkins, 3 Mc- 
Lean (U. S.) 432. And an assignment 
by one administrator gives a perfect 
title generally. Donoughe v. Hubbard, 
27 Fed. Rep. 742; Bradley v. Dull, 19 
Fed. Rep. 913; s. c, 27 Pat. Off. Gaz. 
625; Wintermute v. Redington, i Fish. 
Pat. Cas. 239. 



Infants. — An infant must assign by 
guardian. Fetter t". Newhall, 21 Blatchf. 
(U. S.; 445; s. c, 17 Fed. Rep. 841; s. 
c, 21; Pat. Off. Gaz. 502. 

4." Houghton f. Jones, i Wall (U. S.) 
703; Fetter v. Newhall, 21 Blatchf. (U, 
S.) 445; s. c, 17 Fed. Rep. 841; s. c, 25 
Pat. Off. Gaz. 502. 

5. Littlefield v. Perry, 21 Wall. fU. 
S.) 205; s. c, 7 Pat. Off. Gaz. 964; Rit- 
ter r/. Serrell, 2 Blatchf. (U. S.) 379; 
Dorsey etc. Rake Co. v. Bradley Mfg. 
Co., 12 Blatchf. (U. S.) 202; s. c, i 
Bann. & Ard. Pat. Cas. 330. 

6. Pitts V. Hall, 3 Blatchf. (U. S.) 
Philadelphia etc. R. Co.t;. Trimble, 10 
Wall. (U.S.) 367. 

Where a contract shows that arbitrage 
is to be a condition precedent to a right 
to sue upon the contract, the plaintiff 
must make all reasonable efforts for an 
arbitration before he can sue. Perkins 
V. United States Electric Light Co., 21 
Blatchf. (U. S.) 308; s, c, 16 Fed. Rep. 
5i3;s. c, 24 Pat. Off. Gaz. 204. But 
suit can be brought if arbitration fails. 
Humaston v. American Tel. Co., 20 
Wall. (U.S.) 20. 

7. Stanley Rule etc. Co. v, Bailev, 14 
Blatchf. (U. S.) 510; s. c, 3 Bann. & 
Ard. Pat. Cas. 297. 

Where there is a condition of reas- 
signment the court will decree a retrans- 
fer upon breach of condition. Andrews 
V. Fielding, 20 Fed. Rep. 123. 

A condition in a patent assignment 
cannot be apportioned. Tinkham v. 
Erie R. Co., 53 Barb. (N. Y.) 393. 

8. Prosecution of Infringers. — A cove- 
nant that all unlicensed persons should 
be prosecuted was reasonably fulfilled 
by taking action that resulted in stop- 
ping all infringements. Foster v. Gold- 
schmidt, 21 Fed. Rep. 70. Nor does 
this covenant apply where the parties 
prosecuted are declared not to be in- 
fringers. Covell V. Bostwick, 39 Fed. 
Rep. 421. See Brewster v. Tuthili 
Spring Co., 34 Fed. Rep. 769. 

A covenant to proscute infringers is 
not a warrantee that the vendee shall en- 



133 



Property in Patents. 



PA TENT LA W. 



Unpatented Invention. 



(lo) Implied Warrantee. — The vendor impliedly warrants 
the validity of the patent^ and the title.** 

5. Assignment of Unpatented Invention. — An assignment of an 
unpatented invention gives only an equitable title to the letters 
patent when issued,^ except where the assignment contains 
matter showing that it was intended to operate upon -the legal 
title to the letters patent, when the right to the monopoly and 
the property it created is by the operation of the assignment 
vested in the assignee.* An assignment of an unpatented inven- 



joy privilege against persons not claim- 
ing rights under vendor, or estop him 
from showing that his patent is invalid 
in mitigation of damages. Jackson v. 
Allen, 120 Mass. 64. Nor that the pat- 
entee shall have the benefit of the in- 
vention as fully as patentee holds it. 
McKenzie v. Bailie, 4 Cin. L. B. i 
(Ohio) 209. See also Implied War- 
ranty, vol. lo, p. 85. 

1. Faulks V. Kamp, 17 Blatchf. (U. 
S.) 432; s. c, 5 Bann. & Ard. Pat. Cas. 
73; s. c, 3 Fed. Rep. 898; s. c, 17 Pat. 
Off. Gaz. 851; Dickinson v. Hall, 14 
Pick. (Mass.) 217; Rowe v. Blanchard, 
18 Wis. 441; Shepherd v. Jenkins, 73 
Mo. 510. 

Hence a void patent is not a good con- 
sideration for a promissory note. Dick- 
inson V. Hull, 14 Pick. (Mass.) 217; 
Bliss V, Negus, 8 Mass. 46; Cross v. 
Huntley, 13 Wend. (N. Y.) 3S5; Gieger 
V. Cook, 3 W. & S. (Pa.) 266; "Bellas w. 
Hays, 5 S. & R. (Pa.) 427; Bierce v. 
Stocking, II Gray (Mass.) 174; Head 
V. Stephens, 19 Wend. (N. Y.) 411; 
Higgins V. Strong, 4 Blackf. (Ind.) 182; 
McClure v. Jeffrey, 8 Ind. 79; Rowe v. 
Blanchard, 18 Wis. 441; First Bank v. 
Peck, 8 Kan. 660; Turner zi. Johnson, 2 
Cranch (C. C.) 287; Nye v. Raymond, 
16 111. 153; Jolliffet'. Collins, 21 Mo. 338; 
Springfield v. Drake, 58 N. H. 19; Les- 
ter V. Palmer, 4 Allen (Mass.) 145. See 
Failure of Consideration, infra. 

2. Faulks V. Kamp, 17 Blatchf. (U. 
S.) 432; s. c, 3 Fed. Rep. 898; ». c, 5 
Bann. & Ard. Pat. Cas. 85; s. c, 17 Pat. 
Off. Gaz. 851; Onderdonk v. Fanning, 
5 Bann. & Ard. Pat. Cas. 85; s. c, 4 
Fed. Rep. 148; Curran *. Birdsall, 20 
Fed. Rep. 148; Curran v. Birdsall, 20 
Fed. Rep. 885; s. i;., 27 Pat. Off. Gaz. 

1319- 

3. Wright V. Randel, 8 Fed. Rep. 
591; s. c, 19 Blatchf. (U. S.) 495; s. c, 
21 Pat. Off. Gaz. 493; Clenn ». Brewer, 
2 Curt. (U. S.) 506; Hammond v. Hunt, 
4 Bann. & Ard. Pat. Cas. lii; Little- 
field V. Perry, 21 Wall. (U. S.) 205; s. 



c, 7 Pat. Off. Gaz. 964; Woodworth v, 
Sherman, 3 Story (U. S.) 171; s. c, 2 
Robb Pat. Cas. 257; Troy Iron etc. Co. 
V. Corning, 14 How. (U. S.) 192; Gay- 
ler V. Wilder, 10 How. (U. S.) 477; 
AspinwaU Mfg. C6. v. Gill, 40 Pat. 
Off. Gaz. 1 133; United States Stamping 
Co. tJ.Jewett, 18 Blatchf (U. S.) 469; s. 
c, 18 Pat. Off. Gaz. 1529; s. c, 7 Fed. 
Rep. 869; Hammond v. Pratt, 16 Pat. 
Off. Gaz. 124. / 

The legal title vests only when the 
patent issues. Pontiac Knit Boot Co. 
V. Merino Shoe Co., 31 Fed. Rep. 286. 

Circumstances held not to be an 
equitable transfer of a subsequently- 
granted patent. Dueber Watch Case 
Co. V. Dalzell, 38 Fed. Rep. 597, Ful- 
ler etc. Co. V. Bartlett, 68 Wis. 73. 

4. Gayleri". Wilder, 10 How. (U. S.) 
477; Rathbone v. Orr, 5 McLean (U., 
S.) 131; Rich V. Lippincott, 2 Fish. 
Pat. Cas. i; Herbert v. Adams, 4 Ma- 
son (U. S.) 15; s. c, I Robb Pat. Cas.- 
50; United States Stamping Co. v. 
Jewett, 18 Blatchf (U. S.) 469; s. c, 7 
Fed. Rep. 869; s. u., 18 Pat. Oft". Gaz. 
1529; Clenn v. Brewer, 2 Curt. (U. S.) 
506; Hendrie v. Sayles, 98 U. S. 54'6;' 
Emmons v. Sladdin, 2 Bann. & Ard. 
Pat. Cas. 199; s. ci, 9 Pat. Off. Gaz.' 

352- 

The ultimate assignee, at the date of 
theissueofthepatent, if the assignments . 
show that they intend to operate upon 
the legal title to letters patent, is the le- 
gal owner of thgm. SeldentJ. Stbckwell' 
etc. Gas Burner Co., 9 Fed. Rep. 390, s. 
c, 19 Blatchf. (U. S.) 544, s. c, 20 Pat. 
Off. Gaz. 1377; Consolidated Electric 
Light Co. V. Edison Electric Light 
Co., 33 Pat. Off. Gaz. 1597, s. c 23 
Blatchf (U. S.) 412; s. c, 25 Fed. Rep. 
719; Consolidated Electric Light Co. v. 
McKeesport Light Co., 34 Fed. Rep. 
335; s. c, 44 Pat. Off. Gaz. no. 

When Assignment Can be Made. — An 
assignment can be made whenever there 
is any right in the assignor; it does not 
matter that the device is not complete. 



134 



Property in Patents. 



PA TENT LA W. 



Becording Contracts. 



tion gives a right to all patents that may be issued thereon. ^ 

6. Recording Contracts. — (i) What May Be Recorded. — A 
conveyance assigning the entire patent right, an undivided part 
thereof, or of an exclusive right under the patent, within any 
specified part or portion of the United States, may be recorded 
properly in the Patent OfTfice.** There is no authority to record an 
agreement for future assignment of any of these interests,^ or for 
the conveyance of any different interest.* 



Rathbone v. Orr, 5 McLean (U. S.) 
131; Maurice if. Devol, 23 W. Va. 247. 

Nor that it is made after a rejection 
of the application. Gay v. Cornell, i 
Blatchf. (U.S.) 506. 

Or even when the inventions are yet 
in embryo in the inventor's mind. Nes- 
mith V. Calvert, i Woodb. & M. (U. 
S.) 34; s. c, 2 Robb Pat. Cas. 311; 
Aspinwall Mfg. Co. v. Gill, 32 Fed. 
Rep. 697. 

Or even a general sale of the invent- 
ive povfer of a man's mind. Hapgood 
■V. Hewitt, II Fed. Rep. 422; s. c, 21 
Pat. Off. Gaz. 1786; Continental Co. v. 
Empire Co., 8 Blatchf. (U. S.) 295; s. 
c, 4 Fish. Pat. Cas. 428; Green v. Wil- 
lard Barrel Co., i Mo. App. 202; Ap- 
pleton v. Bacon, 2 Black (U. S.) 699; 
Dueber Watch Case Co. v. Dalzel, 38 
Fed. Rep. 597. 

Or which may be made relating to a 
certain manufacture. Reese's Appeal, 
122 Pa. St. 392. 

An assignment of the invention is 
not a putting of it oh sale, and does not 
make a patent granted on an applica- 
tion filed over two years subsequent to 
such assignment, void. United States 
Electric Lighting Co. v. Consolidated 
Electric Light Co., 33 Fed. Rep. 869. 

1. Puetz V. Bransford, 31 Fed. Rep. 

458- 

An assignment of all right, title and 

interest in an improvement of a ma- 
chine already patented, conveys, no in- 
terest in the original patent. Leach v. 
Dresser, 6g Me. 129. 

A right given under an invention 
not patented will protect the user of it 
from suit by assignees of patent rights 
of the vendor of the right under the un- 
patented invention. Hammond v. Ma- 
son etc. Organ Co., 6 Fish. Pat. Cas. 

599- 

Wliat Amounts to an Assignment of an 
Unpatented Invention. — An irrevocable 
power of attorney. Hartshorn v. Day, 
19 How. (U. S.) 211. 

Employee Hired to Invent. — An em- 
pk)3'ee may be hired to invent, in which 



case an equitable title is in the em^ 
ployer for the invention. Joliet Mfg.. 
Co. V. Dice, 109 111. 649; Continental 
Windmill Co. v. Empire Windmill Co.,. 
S Blatchf. (U. S.) 295; s. c, 4 Fish. Pat.. 
Cas. 428. 

But no such right exists in the ab- 
sence of such an agreement. Hapgood 
V. Hewitt, 119 U. S. 226; s. c, 37 Pat. 
Oir, Gaz. 1247; McWilliams Mfg. Co. w. 
Blundell, 11 Fed. Rep. 419; s. c, 22 Pat. 
Off. Gaz. 177; Green v. Willard Barrel 
Co., I Mo. App. 202. Nor after the ex- 
piration of agreement. Appleton v. 
Bacon, 2 Black (U. S.) 699. 

A contract for the sale of an unpat- 
ented invention may be proved by pa- 
rol. Lockwood V. Lockwood, 33 Iowa 
509; Burr V. De La Vergne, 102 N. Y. 

415- 

Estoppel. — An assignement of an in- 
terest in a patent does not bj' itself give 
any interest in a patent for another in- 
vention. Warren v. Cole, 15 Mich. 
265; United Nickel Co. v. American 
Nickel Plating Works, 4 Bann. & Ard. 
Pat. Cas. 74. 

2. Brooks v. Byam, 2 Story (U. S.) 
525; s. c, 2 Robb Pat. Cas. 161; Blanch- 
ard V. Eldridge, i Wall. Jr. (CC.) 337; 
s. c, 2 Robb Pat. Cas. 737; Stevens v. 
Head, 9 Vt. 174; Gibson v. Cook, 2 
Blatchf. (U. S.) 144; Case t;. Redfield, 
4 McLean (U. S.) 526; Black v. Stone, 
33 Ala. 327; McKernan v. Hite, 6 Ind. 
428; Moore v. Bare, 11 Iowa 198; Sone 
V. Palmer, 28 Mo. 539; Holden v. Cur- 
tis, 2 N. H. 61. 

3. New York Paper Bag Mach. Co. 
V. Union Paper Bag Mach. Co., 32 
Fed. Rep. 783; Wright v. Randel, 19 
Blatchf. (U. S.) 495; s. c, 8 Fed. Rep. 
591; s. c, 21 Pat. Off. Gaz. 493. 

4. Chambers v. Smith, 5 Fish. Pat. 
Cas. 12; o. c, 7 Phila. (Pa.) 575; Far- 
rington v. Gregory, 4 Fish. Pat. Cas. 
221; Buss V. Putney, 38 N. H. 44; Con- 
solidated Fruit Jar Co. v. Whitney, 2 
Bann. & Ard. Pat. Cas. 30; Gear v. 
Fitch, 16 Pat. Off. Gaz. 1231; s. c, 3 
Bann. & Ard. Pat. Cas. 573; Brooks v. 



135 



Troperty in Patents. 



PA TENT LA W. 



Recording Contracts. 



(2) Effect of Recording.— The recording of an assignment 
is not requisite to its validity } and an unrecorded assignment is 
binding on the parties thereto* and on others having notice 
thereof,* or mere trespassers.* To protect the assignee from sub- 
sequent purchasers without notice, it must be recorded within 
three months of its date.^ When so recorded it is a complete 



Bvam, 2 Story (U. S.) 525; Stevens v. 
Head. 9 Vt. 174. 

1. Pitts V. Whitman, 2 Story (U. S.) 
609; Peck V. Bacon, 18 Conn. 377. 

The contrary doctrine obtains in In- 
diana. Higgins V. Strong, 4 Blackf. 
(Ind.) 182; Mullikin v. Latchem, 7 
Blackf. (Ind.) 136. 

2; Holden D.Curtis, 2 N.H. 61; Black 
■V. Stone, 33 Ala. 327; Moore v. Bare, 
II Iowa 198; Continental Windmill 
Co. V. Empire Windmill Co., 8 Blatchf. 
(U. S.) 296; Home v. Chatham, 64 
Tex. 36. 

Assignees Without Consideration. — 
And against subsequent assignees with- 
out consideration. Saxton v. Aultman, 
15 Ohio St. 471. 

'3. Perry v. Corning, 7 Blatchf. (U. 
S.) 195 Continental Windmill Co. v. 
Empire Windmill Co., 8 Blatchf. (U.S.) 
295; s. c, 4 Fish. Pat. Cas. 428; Peck v. 
Bacon, 18 Conn. 377; Holden v. Curtis, 
5 N. H. 61; Sons V. Palmer, 28 Mo. 
539; Moore v. Bare, 11 Iowa 198; Mc- 
Kernan v. Hite, 6 Ind. 428; Hapgood v. 
Rosenstock, 23 Fed. Rep. 86. 

What Is Notice of a Prior Contract. — 
A notice of a prior interest. Wright v. 
Randel, 19 Blatchf. (U. S. ) 495; s. c, 
8 Fed. Rep. 591; s. c, 21 Pat. Off. Gaz. 

49.V 

Where the assignee is a corporation 
•oi which the patentee is director and 
imanager, it has notice through him of' 
any unrecorded assignment. Continen- 
tal Windmill Co. v. Empire Windmill 
Co., 8 Blatchf. (U. S.) 295; s. c, 4 Fish. 
Pat. Cas. 428; Steam Cutter Co. v. 
Sheldon, 10 Blatchf. (U. S.) i. 

Where an assignment of a right 
under a patent refers to the invention 
as being in use by a certain party. 
Prine v. Brandon Mfg. Co., 16 Blatchf. 
(U. S.) 453; s. c, 4 Bann. & Ard. Pat. 
Cas. 379. 

The record of an assignment as ad- 
ministrator is notice of an assignment 
of same invention by same person as 
executor of same decedent. Newell v. 
West, 13 Blatchf. (U. S.) 114; s. c, 2 
Bann. & Ard. Pat. Cas. 113; s.c, 8 Pat. 
Off. Gaz. 598; s.c, 9 Pat. Off. Gaz. 11 10. 



136 



And in general anything that puts a 
person on inquiry. Hawley v. Mitch- 
ell, 4 Fish. Pat. Cas. 388; Sheldon Axle 
Co. V. Standard Axle Works, 37 Fed. 
Rep. 789; Dueber Watch Case Co. v. 
Dalzel, 38 Fed. Rep. 597. 

Duty to See What Blgbt, etc.. Assignor 
Has Where It Is Not Stated in Assignment. 
— And where an assignment merely 
conveys the right, title and interest of 
the assignor, it does not cut off a pre- 
vious unrecorded assignment where 
there is anything on which the subse- 
quent assignment can operate. Turn- 
bull V. Weir Plough Co., 6 Biss. (U. S.) 
225; s. c , I Bann. & Ard. Pat. Cas. 
544; s. c, 7 Pat. Off. Gaz. 173; Ashcroft 
V. Walworth, 5 Fish. Pat. Cas. 528; s. 
c, I Holmes (U. S.) 152; p. c, '2 Pat. 
Off. Gaz. 546; Hamilton v. Kingsbury, 
17 Blatchf. (U. S.) 460; s. c, 4 Fed. 
Rep. 428; s. c, 5 Bann. & Ard. Pat. 
Cas. 157; s. c, 17 Pat. Off. Gaz. 847; 
TurnbuU v. Weir Plough Co., 9 Biss. 
(U. S.) 334; s. c, 14 Fed. Rep. 108; s. 
c, 5 Bann. & Ard. Pat. Cas. 288; s. c, 
23 Pat. Off. Gaz. 91. 

The assignee takes subject to what- 
ever limitations affect the title of his 
assignor. Pennington v. Hunt, 20 Fed. 
Rep. 195. 

4. Pitts V. Whitman, 2 Story (U. S.) 
609; s. c, 2 Robb Pat. Cas. 189; Sone v. 
Palmer, 28 Mo. 539; Hall v. Speer, 6 
Pitts. L. J. (Pa.) 403; Olcott V. Haw- 
kins, 2 Am. L.J. 317; Brooks v. Byam, 
2 Story (U. S.) 525; s. c, 2 Robb Pat. 
Cas. 161; Boyd v. McAlpin, 3 McLean 
(U. S.) 427; s. c, 2 Robb Pat. Cas. 277; 
Case V. Redfield, 4 McLean (U. S.) 
526; McKernan v. Hite, 6 Ind. 428; 
Louden v. Birt, 4 Ind. 566. 

It has been held by some circuits and 
in some State courts that the assign- 
ment must be recorded before bringing 
suit against an infringer. Wyeth v. 
Stone, I Story (U. S.) 273; s. c, 2 Robb 
Pat. Cas. 23. 

5. Gibson v. Cook, 2 Blatchf. (U. S.) 
144; Case V. Redfield, 4 McLean (U. 
S.) ,526; Black V. Stone, 33 Ala. 327; 
McKernan v. Hite, 6 Ind. 428; Moore 
V. Bare, 11 Iowa 198; Sone v^ Palmer, 



Property in Patents. 



PA TENT LA W. 



Agency, 



protection to the assignee and his assignees.* 

7. Agency. — An agency in relation to patent rights is, as any 
other agency, revocable,* except where coupled with an interest.* 

8. Other Contracts Respecting Patent Rights. — Contracts between 
owners of patents concerning the manner in which the patent 
rights of each shall be employed, and the articles to be made 
under them,* and options to purchase within a certain time,^ and 
other agreements,® have been held valid. 



28 Mo. 539; Holden v. Curtis, 2 N. H. 
61; Campbell t;. James, 18 Blatchf. (U. 
S.) 72; s. c, 2 Fed. Rep. 338; s. i,., 5 
Bann. & Ard. Pat. Cas. 354; s. u., 18 
Pat. Oflf. Gaz. iiii. 

1. A bona fide purchaser, whose as- 
signment is duly recorded, will not be 
affected by any parol contract between 
the parties to a prior assignment as to 
what it should cover. Campbell v. 
James, 18 Blatchf. (U. S.) 92; s. c, 2 
Fed. Rep. 338; ». c, 5 Bann. & Ard. 
Pat. Cas. 354; s. i;., iS Pat. Off. Gaz. 
IIII. 

He is completely protected. Aspin- 
wall Mfg. Co. V. Gill, 32 Fed. Rep. 697. 

The record of an instrument not re- 
quired to be recorded by the statute, 
will not affect the rights of subse- 
quent assignees by its recording. 
Wright V. Randel, 19 Blatchf. (U. S.) 
495; s. i;., 8 Fed. Rep. 591; s. c, 21 Pat. 
Off. Rep. 493; New York Paper Bag 
Mach. Co. V. Union Paper Bag Mach. 
Co., 32 Fed. Rep. 783. 

Chambers v. Smith, 5 Fish. Pat. Cas. 
12; ». c, 7 Phila. (Pa.) 575. 

See License, vol. 13, p. 514. 

Nor can a subsequent bona fide as- 
signee, who took title after the lapse of 
more than three months after the date 
of a prior assignment be affected by a 
mutual mistake in a prior conveyance, 
which mistake cannot be corrected after 
that time to the disadvantage of the 
subsequent purchaser. Gibson v. Cook, 
2 Blatchf. (U. S.) 144; Woodworth v. 
Cook, 2 Blatchf. (U. S.) 151. 

Racine Seeder Co. v. Joliet Wire- 
check Rower Co., 27 Fed. Rep. 367. 

2. Burdell v. Denig, 2 Fish. Pat. 
Cas. 588. 

3. Day v. Candee, 3 Fish. Pat. Cas. 
9; Burdell v. Denig, 2 Fish. Pat. Cas. 
588.. See Assignors. 

4. Star Salt Castor Co. v. Grossman, 
4 Cliff. (U. S.) 568; Seibert etc. Oil 
Cup Co. V. William Powell Co., 38 
Fed. Rep. 600. 

An agreement of this kind is not 
binding on a purchaser of a machine 



from either party. Pratt v. Marean, 
25 111. App. 516. 

Such a contract does not necessarily 
give an exclusive license to either 
party. Seibert etc. Oil Cup Co. v. 
William Powell Co., 38 Fed. Rep. 600. 
See Woodworth v. Cook, 2 Blatchf. 
(U. S.) 151; McBurney v. Goodyear, 
II Cush. (Mass.) 569; Howe v. Wool- 
dredge, 12 Allen (Mass.) 18. 

6. An option to purchase and an agree- 
ment not to sell during the option, does 
not give a license to manufacture during 
that time. Iowa Barb Steel Wire Co. 
V. Southern Barbed Wire Co., 30 Fed. 
Rep. 615. 

6. To extend time for payment of 
royalties. Brush-Swan Electric Light 
Co. V. Brush Electric Co., 41 Fed. Rep. 
163. Or privies. Iowa Barb Steel 
Wire Co. v. Southern Barbed Wire 
Co., 30 Fed- Rep. 615. 

Agreements relating to the exclusive 
right to manufacture for a patented 
device. Gaily v. Cotts etc. Fire Arms 
Co., 30 Fed. Rep. 118; Houghton v. 
Rowley, 9 Phila. (Pa.) 288. 

Agreements Giving an Equitable Right. 
— An assignee of a patent agreed to 
share the profits with the patentee, his 
assignor. At the instance of said 
assignor an extension of the patent 
was granted. Held, that the assignee 
had the benefit of the extended term, 
although his assignor had an equitable 
interest in it. Sayles v. Dubuque etc. 
R. Co., 5 Dill. (U. S.) 551. 

Sale of Rlgbt to Royalties. — A con- 
tract may be made selling the right to 
royalties under a contract. United 
States V. Burns, I2 Wall. (U. S.) 246. 

Equitable Doctrines as Applied to 
Patent Contracts — Estoppel. — An ad- 
mission that a third party had power 
to grant rights under a patent by the 
true owner will estop him from prose- 
cuting any one who, on account of this 
admission, has obtained rights for a 
valuable consideration from such third 
party. Gear v. Grosvenor, i Holmes 
(U. S.) 215. See supra, this title, 



137 



Fropeity in Patents. 



PA TENT LA W. 



Eoyalty, 



9. Eoyalty. — An agreement to account and pay royalties may 
form part of the consideration of an assignment without reducing 
it to a license. •• An acceptance of an assignment makes the 
assignee liable for any sale under the invention assigned,* and is 
an implied agreement to manufacture under the patent.* In 
general the rules governing actions on contracts of assignments 
govern actions for royalties.* 



Estoff el of Defendant to Set Up Cer- 
tain Defenses, 

Resulting Trusts. — One who obtains 
the legal title of patent with knowledge 
of an equitable title in another, holds it 
in trust for the true owner. Whiting 
V. Graves, 23 Pat. Off. Gaz. 940; Pon- 
tiac Knit Boot Co. v. Merino Shoe Co., 
31 Fed. Rep. 2S6. 

1. Littlefield v. Perry, 21 Wall. (U. 
S.) 205; s. u., 7 Pat. Off, Gaz. 964. 

A contract to pay royalties for the 
use of an unpatented invention begins, 
unless otherwise designated, when the 
patent issues. Travis v. Minneapolis 
Sweeper Co., 41 Minn. 176. 

2. As a general thing, royalty is due 
wherever the party manufacturing un- 
der it has enjoyed the benefits of the 
patent. Covell v. Bostwick, 39 Fed. 
Rep. 421; Jones w. Burnham,67 Me. 93; 
National liubber Co. v. Boston Rubber 
Shoe Co., 41 Fed. Rep. 48; Rogers v. 
Reissner, 30 Fed. Rep. 525; Marston v. 
Sweet, 66 N. Y. 206; Marston v. Swett, 
82 N. Y. 526; Hyatt v. Dale Tile Mfg. 
Co., 106 N. Y. 651; Paper Stock Dis- 
infecting Co. V. Boston Disinfecting 
Co., 147 Mass. 318; Wilder v. Adams, 
16 Gray (Mass.) 478; Wilder w. Stearns, 
48 N. Y. 656; Johnson v. Willimantic 
Co., 33 Conn. 436. 

Where an assignee agrees to pay the 
patentee a certain sum "for each and 
every one of said machines sold or 
caused to be sold by him," held that 
this covered an}' transfer or settlement 
by which the right to use a machine 
passed. Rodgers v. Torrant, 43 Mich. 

Where an assignment is made of an 
invention and a patent to be granted 
thereon any article made embracing 
the "invention" will require a royalty. 
Milligan v. Lalance etc. Mfg. Co., 21 
Fed. Rep. 570. 

An assignor is entitled to royalty on 
machines which were sold by one ad- 
judged an infringer of the patent at the 
suit of the assignee, when the pur- 
chasers from the infringer have paid 
the assignee for the right to use. Por- 



ter V. Standard Measuring Machine 
Co., 142 Mass. 191. 

Where articles finished or unfinished 
made under the patent were turned 
over to the successor of the defendant, 
this is a sale, and rovalty is due. Marsh. 
V. Dodge, 6 Thomp. & C. (N. Y.) 568^ 
s. c, 4 Hun (N. Y.) 278. 

Where articles substantially the 
same as those described are made, ro\'- 
alty is due on them. Wilder v. Adams, 
16 Gray (Mass.) 478. 

Where one properly authorized 
licensee purchases from anotlier prop- 
erly authorized licensee, and sells again, 
only one royalty is collectible. Howe 
V. Wooldredge, 12 Allen (Mass.) 18. 

Cessation of Royalty. — Royalty ceases 
on termination of contract. Garver v. 
Bement, 69 Mich. 149. 

But where the contractor attempts to 
put an end to the license which is not 
acquiesced in by the contractee, the 
contractee is liable for royalty on arti- 
cles made after as well as articles 
made before the notice of termi- 
nation. Union Mfg. Co. v. Louns- 
bury, 41 N. Y. 363; Wilde v. Smith, 8: 
Daly (N. Y.) 196. 

Manufacture and shipment are pre- 
sumptive evidence of sale. Marsh v. 
Dodge, 5 Lans. (N. Y.) 541; Smith v. 
Standard L'aundry Mach. Co., 11 Daly 
(N. Y.) 154. 

An acceptance of royalty is an ac- 
ceptance of a transfer. Bloomer v. 
Gilpin, 4 Fish. Pat. Cas. 50. 

A royalty may be recovered on a 
quantum meruit where an implied 
contract is made to use a patented in- 
vention and pay for the use. Deane 
V. Hodge, 35 Minn. 146. 

3. Wilson V. Marlow, 66 111. 385. 
But not to manufacture to a certain 

extent unless expressly stipulated, 
Hornbostel ■v. Kinney, no N. Y. .94; 
Babcock v. Northern Pac. R. Co., 26 
Fed. Rep. 756. See Washburne etc. 
Co. V. Southern Wire Co., 37 Fed. 
Rep. 428. 

4. Lack of Consideration. — Lack of 
novelty in an invention is not a good 



138 



Property in Patents. 



PA TENT LA W. 



Actions on Contracts, 



10. Actions on Contracts. — (i) Specific Performance. — Equity 
will enforce the specific performance of a contract of sale of a 
patent right.* The ordinary equitable doctrines are enforced,* 
and an account and other equitable remedies are employed,^ even 



defense by an assignee to royalties due, 
when there has been no eviction. 
Patterson's Appeal, gg Pa. St. 521; 
Shaw V. Soule, 20 Fed. Rep. 7go. See 
also License, vol. 13, p. 514. 

But a decree of a United States court 
declaring the patent void, is a good de- 
fense to royalties accruing subse- 
quently thereto. Hawks v. Swett, 4 
Hun (N. Y.) 146; Marston -v. Swett, 4 
Hun (N. Y.) 153. See suj>ra, this title. 
Defenses to an action for Infringe- 
ment. 

Invalidity of patent where the 
party owing royalties has received the 
benefit of a patent is no defense to 
royalties. McKay v. Smith, 3g Fed. Rep. 
556; Covell V. Bostwick, 39 Fed. Rep. 
421; Hyatt V. Ingalls, 4g N. Y. Super. 
Ct. 375; Patterson's Appeal, gg Pa. 
St. 521; Angier v. Eaton etc. Co., g8 Pa. 
St. 5g4; Jones v. Burnham, 67 Me. g3; 
Hall Mfg. Co. V. American etc. Supply 
Co., 48 Mich. 331; Birdsall v. Perego, 
5 Blatchf. (U. S.) 251; Clark v. Amos- 
keag Mfg. Co., di N. H. 612; Wash- 
burne etc. Mfg. Co. v. Wilson, 48 N. 
Y. Super. Ct. i^g; Eureka Co. v. Bailv 
Co., II Wall. '(U. S.) 488; Marsh v. 
Harris Mfg. Co., 63 Wis. 176; Evory 
V. Candee, 17 Blatchf. (U. S.) 200; 
s. c, 4 Bann. & Ard. Pat. Cas. 540; 
Milligan v. Lalance etc. Co., 21 Fed. 
Rep. 570; s. c, 2g Pat. Off. Gaz. 367; 
White V. Lee, 14 Fed. Rep. 78g; s. c, 
23 Pat. Off. Gaz. 1631. 

A failure to prevent others from 
manufacturing unless some stipulation 
to that effect is contained in the agree- 
ment, is not a defense to actions for 
royalty. National Rubber Co. v. Bos- 
ton Rubber Shoe Co., 41 Fed. Rep. 48. 

1. Adams V- Messinger, 147 Mass. 
185; Somerby v. Buntin, 118 Mass. 
27g; Hapgood v. Rosenstock, 23 
Blatchf (U. S.) g5; Satterthwaite v. 
Marshall, 4 Del. Ch. 337; Fuller etc. 
Co. V. Bartlett, 68 Wis. 73; Pontiac 
Knit Boot Co. v. Merino Shoe Co., 31 
Fed. Rep.' 286; Annin 7;. Wren, 51 Hun 
(N. Y.) 352; Berolzheimer v. Strauss, 
ig Jones & S. (N. Y.) g6; Gobd3'ear v. 
Day, 6 Duer (N. Y.) 154; Newell v. 
West, 13 Blatchf. (U. S.) 114; s. c, 2 
Bann. & Ard. Pat. Cas. 113; Harts- 
horn U.Day, 19 How. (U.S.) 211; Day 



V. Candee, i Fish. Pat. Cas. g; Aikin v. 
Dolan, 3 Fish. Pat. Cas. ig7; Emmons 
V. Sladdin, 2 Bann. & Ard. Pat. Cas. 
igg; s, c, g Pat. Off. Gaz. 352; Wood- 
worth V. Sherman, 3 Story (U. S.) 171; 
s. c, 2 Robb Pat. Cas. 257. 

An agreement to assign future inven- 
tions may be enforced. Reese's Ap- 
peal, 122 Pa. St. 3g2; Somerby v. Bun- 
tin, 118 Mass. 27g; Nesmitli v. Cal- 
vert, I Woodb. & M. (U. S.) 34; s. c, 2 
Robb Pat. Cas. 311. 

Oral Agreement. — The agreement may 
be merely oral. Searle v. Hill, 73 Iowa 
367; Sombery v. Buntin, 118 Mass. 279; 
Burr V. De La Verne, 102 N. Y. 415. 

Implied Agreement. — Or even onl3' im- 
plied. Fuller etc. Co. v. Bartlett, 68 
Wis. 73; Fire Extinguisher Mfg. Co. 
V. Graham, 16 Fed. Rep. 543. 

2. Specific performance will not be 
enforced where there is an adequate 
remedy at law and complainant has not 
been free from fault. Brewster v. Tut- 
hill Spring Co., 34 Fed. Rep. 76g. 

Nor the transfer of a void patent. 
Kennedy v. Hazleton, 33 Fed. Rep. 
293; s. c, 46 Pat. Off. Gaz. 973; Ken- 
nedy V. Hazleton, 128 U. S. 667. 

Nor where the contract which the 
complainant was suing to enforce was 
unconscionable or against public policy. 
Pope Mfg. Co. V. Gormull^-, 34 Fed. 
Rep. 877. 

Nor where complainant was in fault. 
Ohio etc. Fence Co. v. Washburne etc. 
Co., 26 Fed. Rep. 703; s. c, 35 Pat. Off. 
Gaz. 1337; Foster v. Goldschmidt, 22 
Blatchf (U. S.) 289; s. c, 21 Fed. Rep. 
70; s.c, 28 Pat. Off. Gaz. 915; Werden 
V. Graham, 107 111. 169; Brewster v. 
Tuthill Spring Co., 34 Fed. Rep. 769. 
Werden v. Graham, 107 111. I6g. 

Nor in detriment of the accrued rights 
of innocent third parties. Whitney v. 
Burr, 115 111. 28g. 

Laches. — Nor where the complainant 
has been guilty of laches. New York 
Paper Bag Mach. Co. v. Union Paper 
Bag Mach. Co., 32 Fed. Rep. 783; Wer- 
den v. Graham, 107 111. i6g. 

Nor where the court could not give 
suitable relief by the decree. Wollen- 
sak V. Briggs, 20 111. App. 50; s. t., 37 
Pat. Off. Gaz. 339. 

3. Conveyance Upon Conditional Agree- 



139 



Property in Patents. 



PA TENT LA W. 



Defenses to Actions, ete. 



where for some cause specific performance may not be de- 
creed.^ 

(2) Rescission of Contract.— A statement by the vendor 
which is only a matter of opinion,* or a mere matter of law,* or 
which is immaterial,* or is not relied on by the vendee,^ is not 
ground for rescinding the contract ; but a false representation of a 
material fact ® will justify the rescission ; but the right to rescind 
must be exercised within a reasonable time.' 

11. Defenses to Actions Growing Out of Contracts. — (i) Want of 
Consideration. — Where the patent is invalid,^ or no such 



ment. — Where an agreement is made to 
convey a patent upon the happening 
of certain contingencies, specific per- 
formance maj' be decreed on proof that 
these contingencies had happened. 
Andrews v. Fielding, 20 Fed. Rep. 123. 

1. An owner of a patent may be en- 
joined from selling to any one else a 
patent he has agreed to sell to complain- 
ant, where the court is unwilling 
to decree the specific performance of 
the contract. Singer Sewing Mach. Mfg. 
Co. V. Union Button-Hole etc. Co., i 
Holmes (U. S.) 253; s. c, 6 Fish. Pat. 
Cas. 480; s. c, 4 Pat. Off. Gaz. 1^53; 
Goddard v. Wilde, 17 Fed. Rep. S45; 
Adams v. Nessinger, 147 Mass. 185; 
Brush-Swan Electric Light Co. v. Brush 
Electric Co., 41 Fed. Rep. 163. 

2. London v. Birt, 4 Ind. 568; Fow- 
ler V. Swift, 3 Ind. 188; Neidefer -u. 
Chastain, 71 Ind. 363; Gatling v. New- 
ell, 12 Ind. 118; Miller T). Young. 33 111. 

354- 

3. Rawson v. Harger, 48 Iowa 269; 
West V. Morrison, 2 Bibb (Ky.) 376. 

Compare, however. Rose v. Hurley, 

39 Ind. 77. 

4. Neidefer -v. Chastain, 71 Ind. 363. 
A false representation of the price at 

which the patentee was accustomed to 
sell the machine will not vitiate the 
contract. Williams v. Hicks, 2 Vt. 36. 

5. Percival v. Hager, 40 Iowa 2S6; 
Hess V. Young, 59 Ind. 379. 

Other Circumstances Held Not Grounds 
For Rescission. — Excess of price over 
value of patent. Bierce v. Stocking, 1 1 
Gray (Mass.) 174; Percival ti. Harger, 

40 Iowa 286; Cowan v. Mitchell, ii 
Heisk. (Tenn.) 87. 

6. Pierce v. Wilson, 34 Ala. 596; 
Hall V. Orvis, 35 Iowa 366; Page v. 
Dickerson, 28 Wis. 694; Neil v. Cum- 
mings, 75 III. 170. 

A false representation that a man has 
a patent right such as he has not. Bull 
V. Pratt, I Conn. 342-; Brown v. Wright, 



140 



17 Ark. 9; McKee v. Eaton, 26 Kan. 
226; David V. Park, 103 Mass. 501. 

It does not matter that the purchaser 
might have discovered the fraud by 
searching the records at the Patent Of- 
fice. McKee v. Eaton, 2^ Kan. 226. 

A false representation that a patented 
article is salable. Hull v. Fields, 76 
Va. 594. 

A false representation of the amount 
derived annually from a royalty on a 
patent. Crosland v. Hall, 33 N. J. Eq. 
III. 

A false representation as to what is 
covered by the patent. Rose v. Hur- 
ley, 39 Ind. 77. 

This representation may be made by 
shovving a machine containing improve- 
ments not embraced in patent assigned, 
which improvements were afterward 
patented. Cowan v. Mitchell, 1 1 Heisk. 
(Tenn.) 87. 

7. Rawson v. Harger, 48 Iowa 269; 
Kingsley v. Wallis, 14 Me. 57; Pierce 
V. Wilson, 34 Ala. 596. 

The assignee alone can have the con- 
tract rescinded. Edmunds v, Hildreth, 
16 111. 214. 

8. Dickinfeonx'. Hall, 14 Pick. (Mass.) 
217; Lester v. Palmer, 4 Allen (Mass.) 
145; Bliss V. Negus,8 Mass. 46; Bierce 
V. Stocking, 11 Gray (Mass.) 174; Gei- 
ger V. Cook, 3 W. & S. (Pa.) 266; Bel- 
las «. Hays, 5 S. & R. (Pa.) 427; Elmer 
V. Pennell, 40 Me. 430; Green v. Stu- 
art, 7 Baxt. (Tenn.), 418; Cross v. 
Huntley, 13 Wend. (N. Y.) 385; 
Kernsdle v. Hunt, 4 Blackf. (Ind.) 27; 
McClure v. Jeffrey, 8 Ind. 79; Nye v. 
Raymond, 16 111. 153; Jolliffe v. Col- 
lins, 21 Mo. App. 338; Rowe v. 
Blanchard, 18 Wis. 441; Rice-f. Gam- 
hart, 34 Wis. 453; Marston v, Swett, 
82 N. Y. 526. 

This is not a defense even pro tanto, 
where several patents are conveyed by 
quit claim deed, and one turns out 
void. Gilraore v. Aiken, 118 Mass. 94. 



Property in Patents. 



PA TENT LA W. 



Defenses to Actions, etc. 



patent had been granted,' or the vendor had no title,* or the in- 
vention was utterly useless,* there is a failure of consideration 
for the contract,* which is a complete defense* to an action 
brought on the contract or on anything connected with it. 

(2) Breach of Warrantee. — If a warrantee is given a breach 
of warrantee is a defense.® 



It can only be set up as disputed in 
the contract. Ball v. Murry, 10 Pa. 
St. III. 

It cannot be set up as a defense to a 
suit on an instrument under seal. Bel- 
las V. Hays, 5 S. & R. (Pa.) 421; Wil- 
der V. Adams, 2 Woodb. & M. (U. 
S.) 329. 

1. McDowell V. Meredith, 4 Whart. 
(Pa.) 311; Nye V. Raymond, 16 111. 
153; Shepherd v. Jenkins, 73 Mo. 
510. 

This defense can be made on a bond 
given for such a patent. Brown v. 
Wright, 17 Ark, 9. 

But a delay in, obtaining a patent is 
no defense to an action for purchase 
money to be paid therefor. Reid v. 
Bowman, 2 Wall. (U. S.) 591. 

2. Stevens v. Head, 9 Vt. 174; Buss v. 
Putney, 38 N. H. 44; Holden v. Curtis, 
2 N. H. 61. 

3. Clough V. Patrick, 37 Vt. 421; 
Cragin v. Fowler, 34 Vt. 326; Williams 
V. Hicks, 2 Vt. 36; Scott v. Sweet, 2 
Greene (Iowa) 224; Bliss v. Negus, 8 
Mass. 46; Lester v. Palmer, 4 Allen 
(Mass.) 145; Rowe v. Blanchard, 18 
Wis. 441 ; Geeger v. Cook, 3 W. & S. 
(Pa.) 266; McDoughall v. Fogg, 2 
Bosw. (N. Y.) 387. 

As to evidence see Wilson v. Hentges, 
26 Minn. 288; Bierce v. Stocking, 11 
Gray (Mass.l 174. 

Limitation. — This doctrine does not 
refer to a case where the invention was 
rendered worthless by subsequent im- 
provements. Harmon v. Bird, 22 
Wend. (N. Y.) 113. 

Nor where the risk of success was 
taken by the assignee and the patented 
process employed. Palmer's Appeal, 
96 Pa. St. 106. 

Nor where the lack of utility is only 
with reference to certain uses. Mid- 
kifFt;. Boggess, 75 Ind. 210. 

Nor where merely it cannot be used 
profitably. Nash v. Lull, 102 Mass. 
60; Howe V. Richards, 102 Mass. 64, n.; 
Neidefer v. Chastain, 71 Ind. 363. 

If the patent be of any value, the pat- 
entee is entitled to recover. Vaughan 
71. Porter, 16 Vt. 260. And also where 
the assignee has in -his turn assigned 



for a valuable consideration. Thomas 
V. Quintard, 5 Duer (N. Y.) 80. 

4. The fact that the patent granted 
cannot be used without infringing other 
patents is a good defense. Davis v. 
Gray, 17 Ohio 330; Orr v. Burwell, 15 
Ala. 378. 

But not where the prior patent which 
was infringed has been declared void. 
Shaw V. Soule, 20 Fed. Rep. 790. 

Vague Description. — A patent which 
describes a machine in such a manner 
that it cannot be determined what the 
invention consists in, is not a good con- 
sideration for a note. Cross v. Huntly, 
13 Wend. (N. Y.) 385. 

6. It must be shown as a matter of 
defense that the patent lacks novelty 
or utility. Case v. Morey, 1 N. H. 347; 
Myers v. Turner, 17 111. 179; Hardesty 
V. Smith, 3 Ind. 39. 

It has been held, that in the absence 
of a decision of a United States 
court, a State court cannot allow the 
defendant to show the invalidity of the 
patent. Elmer v. Pennel, 40 Me. 

43°- 

That the vendor had no title must 
be shown as matter of defense. Buss 
V. Putney, 38 N. H. 44; Holden v. 
Curtis, 2 N. H. 61; Stevens v. Head, 9 
Vt. 174. 

A defendant is not estopped in an 
action on a bond given for purchase of 
a patent to show non-existence of pat- 
ent, invalidity or lack of title in as- 
signor. Nye V. Raymond, 16 111. 153. 

Contra., the vendor must show a 
title in himself and tender a convey- 
ance according to the contract unless 
such tender is dispensed with before re- 
covery. Edwards v. Richards, Wright 
(Ohio) £196; Bellas v. Hays, 5 S. & R. 
(Pa.) 427. 

6. Vaughan v. Porter, 16 Vt. 266; 
JollifFe V. Collins, 21 Mo. 338, Van 
Ostrand v. Reed, i Wend. (N. Y.) 
424; Orr V. Burwell; 15 Ala. 378; Case 
V. Morey, i N. H. 347; Myers v. Tur- 
ner, 17 ill. 179; Hardestj' v. Smith, 3 
Ind. 39; Jackson v. Allen, 120 Mass. 
64; Croninger v. Paige, 48 Wis. 229; 
Hiatt V. Twomey, i Dev. & B. Eq. 
(N. Car.) 315; Darst v. Brockway, 11 



141 



Property in Patents. 



PA TENT LA W. 



Praud in Contract, 



(3) Fraud. — Fraud on the part of one of the contracting 
parties is a good defense.^ 

(4) Defense Pro Tanto. — A misrepresentation of the utility 
of a patented invention, where the device is not entirely useless,* 
a breach of contract by the assignor,^ and other matters showing 
a partial failure of consideration, may be set up in mitigation of 
the plaintiff's claim.* 

(5) Duty of Vendee to Return Patent. — When a con- 
tract is rescinded^ or failure of consideration set up on a de- 
fense,® the vendee should tender back the patent. right or show 
it is worthless. This does not apply to cases where an action is 
brought for fraud in a sale of a patent right.' 

12. Actions Arising Out of Fraud in Contract. —Where an assign- 
ment has been procured by fraud, an action of deceit lies,* or the 
purchaser may recover back the price paid.* 



Ohio St. 462; Cansler v. Eaton, 2 Jones 
(N. Car.) 499; Wright v. Wilson, 11 
Rich. (S. Car.) 144. 

Recovery can be had where a pro- 
cess has been warranted to produce 
a certain effect and does not do it. 
Hawes v. Twogood, 12 Iowa 582. 

A warrantee not contaned in the 
original assignment cannot be proved 
unless It is averred to be fraudulent. 
McClure v. Jeffrey, 8 Ind. 79; JoUiffe 
v. Collins, 21 Mo. 338; Van Ostrand 
■V. Reed, i Wend. (N. Y.) 432; Rose 
V, Hurley, 39 Ind. 77. 

But defendant must have relied upon 
a misrepresentation to render it a war- 
rantee and a defense. Saxton v. 
Dodge, 57 Barb. (N. Y.) 84. 

1. Turner v. Johnsen, 2 Cranch (C. 
C.) 287; McDowell V. Meredith, 4 
Whart. (Pa.) 311; Nye v. Raymond, 
16 111. 153. 

2. MuUikin v. Latchem, 7 Blackf. 
(Ind.) 136; Hardesty v. Smith, 3 Ind. 
39. 

3. Pitts V. Jameson, 15 Barb. (N. Y.) 
310; Moore v. Bare, 11 Iowa 198. 

4. But a purchaser of the right, title 
and interest of a party in an unpatented 
invention is not entitled to a reduction 
for the money expended by him in pro- 
curing a patent, or in obtaining the in- 
terest of the true inventor. Vetter v. 
Lentzinger, 31 Iowa 182. 

5. Pierce v. Wilson, 34 Ala. 596. 

6. Mullikin v. Latchem, 7 Blackf. 
(Ind.) 136; Hardesty v. Smith, 3 Ind. 
39; Burns f. Barnes, 58 Ind. 436. 

7. Hess V. Young, 59 Ind. 379. 
Where, however, equity is resorted 

to to compel a rescission of a contract, 
the complainant must tender a return 



of the patent, or value, if sold. Ed- 
munds V. Myers, 16 111. 207; Edmunds 
V. Hildreth, 16 111. 214. 

8. Warren v. Cole, 15 Mich. 265. 
Fraudulent representations known to 

be such at the time or recklessly made 
without knowledge, will enable the 
vendee, if injured, to bring action for 
deceit. Jolliffe v. Collins, 21 Mo. 338; 
Somers v. Richards, 46 Vt. 170: Newell 
V. Gatling, 7 Ind. 147; Gatling v. New- 
ell, 9 Ind. 572; Gatling v. Newell, 12 
Ind. 118; Bull V. Pratt, i Conn. 342. 

In an action for deceit the vendor 
may show the true state of facts, al- 
though they are different from that set 
up in the assignment. Swazey v. Herr, 
n Pa. St. 278. 

9. Foss V. Richardson, 15 Gray 
(Mass.) 303; Hiatt t;. Twome3', i Dev. 
& B. Eq. (N. Car.) 315; Cansler v. 
Eaton, 2 Jones Eq. (N. Car.) 499; Mc- 
Kenzie v. Bailie, 4 Cin. L. B. (Ohio) 
209; Stevens v. Head, 9 Vt. 174; Darst 
V. Brockway, 11 Ohio St. 64.2; Mc- 
Dowell V. Meredith, 4 Whart. (Pa.) 
311; Dickinson v. Hall, 14 Pick. (Mass.) 
217. 

Where an assignment implies that a 
patent has been issued, the assignor 
may recover back his money if such is 
not the fact. Shepherd v, Jenkins, 73 
Mo. App. 510. Or if the inventor sells 
his patent by the exhibition of a device 
supposed to be the one patented, but 
afterwards discovered to differ materi- 
ally from it. Burrall v. Jewett, 2 Paige 
(N. Y.) 134. But the mere invalidity of 
the patent, in absence of fraud, will not 
warrant the recovery of the purchase 
money. Hiatt v. Twomey, i Dev. & 
B. Eq. (N. Car.)3i5. 



142 



Property in Patents. 



PA TENT LA W. Patented Prior to Assignment 



13. Claims Arising Out of Patented Invention Prior lo the Assign- 
ment. — Unless otherwise provided in the instrument,^ claims 
arising out of the use, sale or making of the patented invention at 
any time prior to the assignment, do not pass to the assignee.* 
These claims may be the subject of a separate conveyance,* or 
the right to sue for them remains in the assignor.* 

14. Jurisdiction of Equity for Fraud and Mistake. — Equity will de- 
cree the reformation or cancellation of an instrument containing 
a contract concerning a patent right, on the gronnd of mutual 
mistake,^ or compel the surrender and cancellation of an instru- 
ment tainted with fraud.® 

15. Jurisdiction of Equity to Enforce Discovery or Enjoin Violation 
of Agreement. — Equity will enforce a discovery of the number of 
patented articles made,' and will enjoin the violation of an agree- 
ment* concerning patent property where there is not an ade- 



A false representation that the goods 
made in accordance with patent are 
equal to the quality of goods made in 
the usual waj. Nelson v. Wood, 62 
Ala. 175. 

1. An assignment of "all the right, 
title, interest, claims and demands" 
which the assignor has "in, to, by, un- 
der and through" specified letters pat- 
ent, carries damages for past infringe- 
ments. May V. Logan Co., 30 Fed. 
Rep. 250; May v. Saginaw Co., 32 Fed. 
Rep. 629. See Campbell v. James, 18 
Blatchf. (U. S.) 92. 

2. Merriam v. Smith, 11 Fed. Rep. 
588; New York Grape Sugar Co. v. 
Buffalo Grape Sugar Co., 21 Blatchf. 
(U. S.) 519; s. c, 18 Fed. Rep. 638; s.c, 
25 Pat. Off. Gaz. 1076; Moore v. Marsh, 
7 Wall. (U. S.) 515; Emerson v. Hub- 
bard, 34 Fed. Rep. 327; May t;. Juneau 
Co., 30 Fed. Rep. 241; Knowlton Plat- 
form etc. Co. V. Cook, 70 Me. 143. 

A mere intention to do so is not suf- 
ficient; the instrument of conveyance 
must show the intention. Emerson v, 
Hubbard, 34 Fed. Rep. 327. 

3. Hamilton v. Rollins, 5 Dill. (U. 
S.) 495; s. c, 3 Bann. & Ard. Pat. Cas. 
157; Shaw V. Colwell Lead Co., 20 
Blatchf. (U. S.) 417; s. c, 11 Fed. Rep. 
711; May V. Logan Co., 30 Fed. Rep. 
250; s. c, 41 Pat. Off". Gaz. 13S7. 

An assignment of this kind conveys 
no interest in the patent right. Tilgh- 
man v. Proctor, 125 U. S. 136. Camp- 
bell V. James, 18 Blatchf. (U. S.) 92; 
s. c, 2 Fed. Rep. 338; =. c, 18 Pat. Off. 
Gaz. iiii. 

The assignee of claims for past in- 
fringement takes subject to equities. 



New York Grape Sugar Co. v. Buffalo 
Grape Sugar Co., 18 Fed. Rep. 638; 
s. c, 25 Pat. Off. Gaz. 1076; s. i;., 21 
Blatchf (U. S!) 519. 

4. Spring v. Domestic Sewing Mach. 
Co., 13 Fed. Rep. 446. 

Such a claim passes to an adminis- 
trator. May V. Juneau Co., 30 Fed. 
Rep. 241; s. c, 41 Pat. Off. Gaz. 578. 

5. Burrall t/. Jewett, 2 Paige (N. Y.) 
134; Foss V. Richardson, 15 Gray 
(Mass.) 303; Black?;. Stone, 33 Ala. 327. 

A request for the alteration desired 
to be made, or a reason for the omission 
of such request must be shown by the 
complainant. Black v. Stone, 33 Ala. 

327- 

A mistake collateral to the instru- 
ment is not ground for cancellation or 
reformation. Overshiner v. Wisehart, 
59 Ind. 135. 

6. For undue infiuence. Colburn v. 
Van Velzer, 11 Fed. Rep. 795. 

Where a negotiable instrument is 
given for a void patent the court will 
compel its surrender and cancellation. 
Darst V. Brockway, 11 Ohio 462; Bel- 
las V. Hays, 5 S. & R. (Pa.) 427. But not 
a non-negotiable instrument. Cansler 
V. Eaton, 2 Jones Eq. (N. Car.) 499. 

An assignment of right, title and 
interest in an improvement does not 
carry extensions. Johnson v. Sewing 
Mach. Co., 27 Fed. Rep. 689. 

7. Hobble v. Owsley, 27 Fed. Rep. 
100; Pope Mfg. Co. V. Jennison, ^o 
Fed. Rep. 887. 

And an account. McKay v. Smith, 
29 Fed. Rep. 265. 

8. Wilson V. Sherman, i Blatchf. 
(U. S.) 536- 



143 



Property in Patents, 



FA TENT LA W. Execution on a Patent Eight. 



quate remedy at law.^ 

Equity will order the conveyance of a property to a party 
having the equitable right by a party having the legal title.* 

16. Execution on a Patent Right. — A patent right may be taken 
in execution on a bill in the nature of a creditor's bill praying that 
the owner may be compelled to assign his rights in the court in 
which the judgment is obtained.' In some States other pro- 
ceedings have been upheld by which the patent right has been 
subjected to execution. 

17. Insolvency and Bankraptcy. — A patent right does not pass by 
the mere assignment under a State insolvent law,* but does under 
a bankrupt act.* 



1. McKay v. Smith, 29 Fed. Rep. 295. 
To enjoin tiie breach of a mutual 

agreement bj holders of patent rights 
as to the way in which they shall man- 
ufacture. Star Salt Castor Co. v. 
Grossman, 4 Cliff. (U. S._) 568. 

Where a plaintiff is suing for royal- 
ties, he will not be enjoined from so 
doing on account of a breach of his 
agreement with defendant, but will be 
enjoined, pending his suit, from deter- 
mining the contract. An adequate 
remedy at law existing in one case but 
not in the other. Baker Mfg. Qo. v. 
Washburne etc. Mfg. Co., 5 McCrary 
(U. S.) 504; s. c, 18 Fed. Rep. T72, 

But equity will not enjoin at the suit 
of complainant guilty of fraudulent 
concealment to the disadvantage- of 
the defendant. Washburne etc. Mfg. 
Co. V. Scutt, 22 Fed. Rep. 710; Wash- 
burne etc. Mfg. Co. V. Cincinnati 
Barbed Wire Fence Co., 22 Fed. Rep. 

712- 

2. Emmons v. Sladdin, 2 Bann. & 
Ard. Pat. Cas. 199; s. c, 9 Pat. Off. 
Gaz. 352. 

A court will decree the conveyance 
of the right to royalties by the 
holder of the legal title, to the holder 
of the equitable right. Rogers v. 
Riessner, 30 Fed. Rep. 525. 

The court will decree the convey- 
ance where the trust is a constructive 
one. Fire Extinguisher Mfg. Co. v. 
Graham, 16 Fed. Rep. 543. 

3. Barnes v. Morgan, 3 Hun (N. Y.) 
703; Pacific Bank v. Robinson, 57 
Cal. 520; s. c, 20 Pat. Off. Gaz. 1314; 
Murray v. Ager, 20 P^t. Off. Gaz. 1311 ; 
s. c, I Mackey (D. C.) 87; Ager %>. 
Murray, 105 U. S. 126; s. c, 21 Pat. 
Off. Gaz. 1 197; Clan Ranald v. Wyck- 
hoff, 41 N. Y. Super. Ct. 527; Carver v. 
Peck, 131 Mass. 291; Gillett v. Bate, 
86 N. Y. 87; Edmeston v. Lyde, i 
Paige (N. Y.) 637; Brinkerhoff v. 



Brown, 4 Johns. Ch. (N. Y.) 671; Mc- 
Dermutt v. Strong, 4 Johns. Ch. (N. 
Y.) 687; Spader v. Davis, 5 Johns. Ch. 
(N. Y.) 280; Hadden v. Spader, 20 
Johns. Ch. (N. Y.) 554. 

Where the owner of the patent is in- 
solvent, he may be compelled by an in- 
solvent court or court of equity to assign 
his rights to a receiver or trustee. Peti- 
tion of Keech, 14 R. I. 571. 

Ordinarily the owner of the patent 
must be compelled to assign in the reg- 
ular manner. Ashcroft v. Walworth, 
I Holmes (U. S.) 152; s. c, 5 Fish. Pat. 
Cas. 528; s. c, 2 Pat. Off. Gaz. 546. 

In Pennsylvania apparently the pat- 
ent right cannot be reached by equita- 
ble process. 

Rutter's Appeal (Pa. 1887), 8 Atl. 
Rep. 170; Bakewell v. Keller, 11 W. N. 
C. (Pa.) 300. 

In some jurisdictions it can be reached 
\>y a creditor's bill in the usual form. 
Gorrell v. Dickson, 26 Fed. Rep. 4154; 
Gillett V. Bate, 86 N. Y. 87. 

And a federal court can take juris- 
diction in a creditor's bill where the 
State court could not grant relief. Gor- 
rell V. Dickson, 26 Fed. Rep. 454. 

Generally a patent right cannot be 
subjected to any of the usual methods 
of execution. It has been held that it 
could not be thus seized in Carver v. 
Peck, 131 Mass. 291; Pacific Bank v. 
Robinson, 57 Cal. 520; Stevens v. Glad- 
ding, 17 How. (U. S.) 447; Stevens v. 
Cady, 14 How. (U. S.) 528. 

4. Ashcroft v. Walworth, i Holmes 
(U. S.-) 152; s. c, 5 Fish. Pat. Cas. 528; 
s. c, 2 Pat. Off. Gaz. 546; Gordon v, 
Anthony, 16 Blatchf. (U. S.) 234; s. i,., 
4 Bann. & Ard. Pat. Cas. 248; s. c, 16 
Pat. Off. Gaz. 1135; Petition of Keach, 
14R. I. 571. 

5. Prime v. Brandon Mfg. Co., 16 
Blatchf. (U. S.) 453; s. c, 4 Bann & 
Ard. Pat. Cas. 379. 



144 



Property in Patents. 



PA TENT LA W. 



Jurisdiction in Suits, etc. 



18. Jurisdiction in Suits Over Patent Property. — In cases where 
the validity or infringement of patent rights are not involved,^ 
the jurisdiction in suits on contracts relating to patent rights or 
for the redress of wrongs connected therewith, is in the courts of 
the States,* unless the courts of the United States obtain jurisdic- 
tion by diverse citizenship. 



An assignment by a bankruptcy court 
need not be recorded in Patent Office. 
Prime v. Brandon Mfg. Co., i6 Blatchf. 
(U. S.) 453; s. c, 4 Bann. & Ard. Pat. 
Cas. 379. 

But it will not override prior agree- 
ments. Frane v. Galis, 20 Reporter 
427. 

1. Dudley v. Mayhew, 3 N. Y. 9; 
Parkhurst v. Kinsman, 6 N. J. Eq. 600 ; 
Kempton v. Bray, 99 Mass. 350 ; Tom- 
linsion v. Buttel, 4 Abb. Pr. (N. Y.) 
266, Gibson v. Woodworth, 8 Paige" 
(N. Y.) 132; Parsons v. Barnard, 7 
Jolins. (N. Y.) 144; Stone v. Edwards, 
35 Tex. 556; Elmer v. Pennel, 40 Me. 
430 ;- Albright t;. Teas, 106 U. S. 613. 

Nor can it acquire jurisdiction su- 
ing in the form of an action to recover 
upon a quantum valebat for use of the 
patented Invention. Battin v. Kear, 2 
Phila. (Pa.) 301 ; De Witt v. Elmira 
etc. Mfg. Co,, 66 N. Y. 459. 

Has Not Ectuitable Jurisdiction. — A 
State court cannot enjoin the collection 
of a decree of a United States court. 
Kendall v. Winsor, 6 R. I. 453. 

Nor to restrain a party from an al- 
leged illegal act when that party justi- 
fies under a patent. Hovey v. Rubber 
Tip Pencil Co., 33 N. Y. Super. Ct. 522. 

Nor to consider a set-off consisting 
of a claim for infringement of a pat- 
ent. Smith V. McClelland, 11 Bush 
(Ky.) 523. 

But a State court may incidentally 
m the course of a controversy, inquire 
into the validity, etc., of a patent. Bur- 
rail V. Jewett, 2 Paige (N. Y.) 134; 
Sherman v. Champlain Transp. Co., 31 
Vt. 162 ; Lindsay v. Roraback, 4 Jones' 
Eq. (N. Car.) 124; Middlebrook v. 
Broadbent, 47 N. Y. 443 ; Saxton -v. 
Dodge, 57 Barb. (N. Y.) 84; Beebe v. 
Mackenzie, 47 N. Y. 662 ; Rich v. At- 
water, 16 Conn. 409; Nash v. Lull, 102 
Mass. 60; McKenzie v. Bailie, 3 Cin. L. 
B. (Ohio) 209; Slemmer's Appeal, 58 
Pa. St. 155 ; Keith TJ. Hobbs, 69 Mo. 84. 

2. Rice V. Garnhart, 34 Wis. 453; 
Street V. Silver, Bright. (Pa.) 96; 
Hunt V. Hoover, 24 Iowa 231 ; Warren 
V. Cole, 15 Mich. 265; David «. Park, 
103 Mass. 501 ; Billings v. Ames, 32 



Mo. 265 ; Lockwood v. Lockwood, 33 
Iowa 509 ; McDougall v. Fogg, 2 Bosw. 
(N. Y.) 387; Bloomer v. McQuewan, 
14 How. (U. S.) 539; Chaffee v. Boston 
Belting Co., 22 How. (U. S.) 217 ; Kel- 
ly V. Porter, 8 Sawy. (U. S.) 482 ; s. c, 
17 Fed. Rep. 519. 

And as well in actions in equity as 
in law. To rescind a contract. Lind- 
say f. Roraback, 4 Jones' Eq. (N. Car.) 
124; Page V. Dickerson, 28 Wis. 694; 
Consolidated Fruit Jar Co. v. Whitney, 
2 Bann. & Ard. Pat. Cas. 30. 

To compel an account of royalties. 
Adams' Appeal, 113 Pa. St. 449. 

For specific performance of a con- 
tract. Binney v. Annan, 107 Mass. 94; 
Brooks ». Stolley, 3 McLean (U. S.) 
523; s. c, 2 Robb Pat. Cas. 28; Perry 
■u. Littleiield, 17 Blatchf. (U. S.) 272; 
s. c, 17 Pat. Off. Gaz. i;i ; Fuller etc, 
Co. V. Bartlett, 68 Wis. 73. 

Jurisdiction of Equity Over Assign- 
ments on the Ground of Fraud or Mis- 
take. — Where an assignment agree- 
ment has been entered into by fraud. 
Colburn v. Van Velzer, 11 Fed, 
Rep. 795; Secombe x<. Campbell, 18 
Blatchf. (U. S.) 108, 

A negotiable instrument given for 
a void patent will be compelled to be 
given up and cancelled. Darst v, 
Brockway, 11 Ohio 462; Bellas v. 
Hays, 5 S. & R. (Pa.) 427. 

Otherwise in the case of a non-nego- 
tiable instrument where there was no 
actual fraud in the sale. Cansler v, 
Eaton, 2 Jones (N. Car.) 499. Or ^ 
mutual mistake made. 

Burrall v. Jewett, 2 Paige (N. Y.) 
134; Black -w. Stoul, 33 Ala. 327; Foss 
V. Richardson, 15 Gray (Mass.) 303; 
Gay V. Cornell, i Blatchf. (U. S.) 506. 
The instrument may be cancelled or re- 
formed. 

Bona ride FuTChaser. — A plea of hona 
fide purchaser for " good and valuable 
consideration," when interposed in a 
case where equity would otherwise 
grant a reformation and profits, must 
set forth the consideration. Secombe 
V. Campbell, 18 Blatchf. (U. S.) 108. 

Authorities for Patent Law. — Curtis 
on Patents, once the only authorized 



18 C. of L.— 10 



145 



Definition. PA TERNITY—PA Y—PA Y ABLE— PAID. Definition. 

PATERNITY. — See BASTARDY, vol. 2, p. 129 ; Child, vol. 3, p. 
229 ; Illegitimate Children, vol. 9, p. 930 ; Parent and Child. 

PATRIMONY. — Property received from one's father, or ances- 
tors, whence patrimonial.^ 

PATRONAGE ; PATRONIZE.— See note 2. 

PAUPER.— See POOR and POOR LAWS. 

PAWN, PAWNBROKER. — See Bailment, vol. 2, p. 40 ; Pledge 

and Collateral Security. 

PAY ; PAYABLE ; PAID— (See also Payment).—" Pay." To 
pay is defined by lexicographers to discharge a debt, to deliver 
a creditor the value of a debt, either in money or in goods, to his 
acceptance, by which the debt is discharged.* 



text-book, is now somewhat anti- 
quated. The second edition of Walker' 
on Patents of 1889 presents a clear, 
terse view of the law, coming down to 
April 30th, 1889. Robinson on Pat- 
ents, 1890, a scholarly work containing 
a full citation of cases, coming down, 
by means of an appendix in the last 
volume, to 1890, is the latest work on the 
subject. Simonds' (present Commis- 
sioner of Patents) Digest is extremely 
full in all cases of practical value to 
the practitioner. Bumps on Patents, 
Trademark and Copyright, coming 
down to October, 1883, is practically 
a complete compilation of patent cases 
to that time. In Special Departments 
Duryee's Assignment of Patent Rights 
has much value. Fenton, Law of Pat- 
ents for Designs, coming down to 
January, 1889 is the unc^uestioned, and 
unquestionable authority on its sub- 
ject. Hall's Patent Estate is of 
■value. Among older digests may be 
mentioned Preble's Patent Case In- 
dex. 

1. And. L. Diet. 

"Patrimony" is not necessarily re- 
stricted to property derived directly 
from a father. (Green v. Giles, 5 Ir. 
Ch. Rep. 25.) 

2. The female inmates of a house of 
ill-fame cannot be said to "patronize" 
the house. Raymond v. People, 9 
Bradw. (111.) 344. 

The court said: "The primary mean- 
ing of the word 'patronize' is to act as 
patron toward. . . The patrons of 
the house, within the meaning of the 
law, are those who go there in the char- 
acter of purchasers to be accommodated 
and entertained in the way of a bawdy- 
house. . . But the patrons of a house 



are not those who are occupied in the 
house, in and about the. premises of the 
house." 

To state "that a loose woman is un- 
der the patronage of a. man named, is a 
technical statement that she is sup- 
ported by him for the purpose of sexual 
indulgence. More v. Bennet, 418 N. Y. 

472. 475- 

3. Beals v. Home Ins. Co., 36 N. Y. 
522; Afij'g 36 Barb. (N. Y.) 614. 

To pay is to discharge an obligation 
by a performance according to its terms 
or requirements. Tolman v. Manufac- 
turers' Ins. Co , I Cush. (Mass.) 76. 

Pay is a fixed and direct amount 
given by law to persons in the military 
service, in consideration of and as com- 
pensation for their personal service. 
Sherburne v. United States, 16 Ct. of 
CI. 496. 

Though the word "pay" has some- 
times a wide sense which includes pay- 
ment in other things than money 
(Anderson's L. Diet., "Payment"; Fo- 
ley V. Mason, 6 M. & D. 37), yet, where 
an agent's authority was to "pay bills," 
it was held that he exceeded it by mak- 
ing paj'ment in merchandise. Claflin 
f. Continental Jersey Works (Ga. 1890), 
II S. E. Rep. 723. 

Payable. — Where there is a gift to a 
remainderman on attaining twenty-one 
or marrying, but to go over in case of 
his death before his share becomes 
"paj'able," this word will generally be 
read as "vested." Emperor v. Rolfe, i 
Ves. Sen. 20S. 

Payable In Currency. — See Money. 

"Payable In trade" (as used in a 
dealer's written contract to pa^'a speci- 
fied sum for services rendered "payable 
in trade"), means payable in such ar- 



146 



Definition. 



PA Y—PA YABLE—PAID. 



Definition. 



tides as the promisor deals in. Dudley 
■V. Vose, 114 Mass. 34. 

Payable as Convenient. — A written 
contract containing a provision that a 
certain sum shall be payable as con- 
venient, cannot be construed so that it 
shall not be payable at all, but only as 
an extension of credit. Black v. Bachel- 
der, 120 Mass. 171. 

Payable in one or two years is not an 
uncommon form of expression in mem- 
oranda of agreements and other writ- 
ings, and is always understood to mean 
at the expiration of one and two years 
respectively. Allentown School Dist. 
V. Derr, 115 Pa. St. 439. See also Due, 
vol. 6, p. 36; Debt, vol. 5, p. 165. 

Paid. — A testamentary direction that 
all legacies are to be "faid" free of 
legacy duty, will be read as including 
the idea of satisfaction, transfer or de- 
livery; so that chattels, stock or shares, 
the subject of a specific legacy, will, 
like payment of a pecuniary legacy, 
have to be delivered or transferred free 
of duty to the legatee. Ansley v. Cot- 
ton, 16 L.J.Ch. 55; i?e Johnston, Cock- 
erell v. Essex, 26 Ch. D. 538. 

A testamentary direction that debts 
are to be "paid" (whether legacies are 
also mentioned or not) prevents the pre- 
sumption that a legacy to a creditor is 
in satisfaction of his claim. Be Huish, 
43 Ch. D. 260; disapproving Edmunds 
V. Low, 3 K. & J. 318; s. c, 26 L. J. Ch. 
432. 

Articles of a company which em- 
power the declaration of dividends "to 
be paid" to members, do not authorize 
the Issue of bonds for dividends. Wood 
V. Odessa Water W. Co., 42 Ch. D. 
636, 628; Hoole V. Great Western Ry., 
3 Ch. 262. 

A bill of sale "truly sets forth its con- 
sideration," within the English bills of 
sales act of 1882, if the money therein 
stated to be "paid" did not actually pass 
in cash, but was a sum owing by the 
grantor to the grantee for unpaid pur- 
chase money of the chattels therein 
comprised. Ex parte Holland, 21 Ch. 

D. 543. 

In a charter-party agreeing to pay the 
highest sum proved to have been paid, 
"paid" may be read as meaning "con- 
tracted to be paid." Gether v. Capper, 
15 C. B. 701. 

A Minnesota tax law. provides that 
judgments and sales for delinquent 
taxes shall be Void upon proof at any 
time that such tax shall have been paid 
or (that) such property was exempt. 
The word "paid" is here used in a com- 



prehensive sense, embracing the mean- 
ing of the words "satisfied by payment, 
redemption or sale," which were used 
in a previous section. The court says: 
"This is within the proper signification 
of the word itself; among the primary 
definitions are, to satisfy, to discharge 
one's obligations to." Forrest v. Henry, 
33 Minn. 434. 

Where a statute required a payment 
of rates before the person could become 
a voter in a burrough, it was held that 
from the words "unless he shall have 
paid" it was to be inferred that the 
voter must pay himself and payment 
for him by another would not satisfy 
the statute. Reg. v. Bridgnorth, 10 
A. & E. 68; s. c, 37 E. C. L. 46. 

A Connecticut statute provided that 
all damages done by dogs to sheep, in 
an}' town, should he. paid "by such town. 
Held, where the selectmen gave to a 
person, whose sheep had been injured 
by dogs, an order on the town treasurer, 
which was given and received in satis- 
faction of the claim, that it was "pay- 
ment" within the meaning of the statute. 
Wilton V. Weston, 48 Conn. 325. 

Paid up Policies. — See Insurance, 
vol. II, p. 306. 

To be Paid. — This phrase in an agree- 
ment inter partes creates a covenant to 
pay. Bower v. Hodges, 13 C. B. 765. 

In a will it is generally synonymous 
with Payable. See further i Jarman 
on Wills 837. In Martineau v. Rogers, 
J5 L. J. Ch. 398; s. c. 8 D. G. M. & G. 
328, a testator bequeathed legacies to 
two nephews and a niece by name, if 
they respectively survived him and 
attained twenty-one, when the neph- 
ews' legacies were "to be paid." In 
case of the death of either of the 
nephews or of the niece leaving issue, 
such issue to take the parent's legacy 
as the parent should by will appoint. 
But in case of the death of either of 
the nephews or the niece before his or 
her legacy became payable, the legacy 
to go to the survivors. During the 
minorities of the legatees the trustees 
were to apply the income of the lega- 
cies for their maintenance and educa- 
tion. The legacy of the niece and any 
share she might acquire by the death 
of her brothers, or either of them, was 
to be settled for her separate use. 
Held, that upon the whole context, the 
word "paid" must be construed as 
"vested" or "payable," and that the 
executory gift to the issue would take 
effect in the event of the parent dying 
after attaining twenty-one. 



147 



Synopsis. 



PA YMENT. 



Synopsis. 



PAYMENT— (See also ACCORD AND SATISFACTION, vol. i, p. 
94 ; Debtor AND Creditor, vol. 5,, p. 179; Debts of Dece- 
dents, vol. 5, p. 206; Demand, vol. 5, p. 522 ; Frauds, Statute 
of, vol. 8, p. 657; Interest, vol. 11, p. 379; Mistake, vol. 
15, p. 625; Novation, vol. 16, p. 862; Tender; United 
States). 



I. Definition, 149. 
II. What Constitutes 



150. 

1. /« General, 150. 

2. By Levy of Execution, 160. 

3. Payment or Purchase, 160. 

III. Medium of Payment, 163. 

1. Jn Money, 163, 

2. Bank Bills, 164. 

3. Confederate Notes, 165. 

4. Illegal Currency, 167. 

5. Account Against Another, 

167. 

6. Note, Bill or Check, 167. 
(«) General Rule, 167. 
(*) Of Third Party, 171. 
(c) Effect of Course of Deal- 
ing, 173. 

(rf) Payment by Check Relates 
to Date Thereof, 174. 

(e) By Worthless Check or 
Note, 174. 

(_/) Note Negotiated, 175. 

(g) Recovery on Original 
Cause of Action, I'jii, 

(Ji) Right of Action Sus- 
pended, 177. 

(i) Rule in Indiana, 178. 

{k) Rule in Massachusetts and 
Maine, 179. 

(/) In Payment of Goods Sold, 
182. 

(»«) By Surety, i84. 

(m) By Executor, 184. 

(0) Certificate of Deposit, 184, 

(/) Order, 184. 

7. Higher Security, 1S5. 

8. Specific Articles, 186. 

IV. By Whom Payment May be 

Made, 187. 

1. In General, 187. 

2. By a Third Party, 187. 
V. To 'Whom Payment May be 

Made, 188. 

1. In General, 188. 

2. After Assignment, 190. 

3. To the Holder of a Bill or 

Note, 190. 

4. Lost or Stolen Bills or Notes, 

191. 

5. To an Agent, 191. 

6. Joint Payees, 195. 
VI. How Payment Is to be Made, 

195- 



VIII. 



IX. 



I. General Rule, 195. 
Payment, 2. Debtor Not Bound to Pay in 

A ny Other Than the Usual 
> Mode, 195. 

3. Applying Bank Deposit, 
196. 

VII. When Payment Must be Made, 
196. 

1. At Exact Time Agreed Up- 
on, 196. 

2. When No Time Is Fixed, 
196. 

"i,. As Depending Upon Per- 
formance, 197. 

4. For Goods $old, 1^7. 

5. Of Note Before Maturity, 
198. 

6. On Sunday, 198. 
Where Payment Must be 

Made, 19S. 

1. The General Rule, 198. 

2. When Note Is Payable at a 
Particular Bank, 199- 

Evidence of Payment, 200. 

1. Receipt of Payment, 200. 

2. Book Entries, 200. 

3. Burden of Proof , 201. 
X. Presumption of Payment, 203. 

1. From Circumstances, 203. 

2. Payment or Loan, 205. 

3. From Possession of Instru- 
ment by Debtor, 206. 

4. Same Party Debtor and 
Creditor, 207. ' 

5. From Lapse of Time, 207. 

6. Rebutting Presumption, 211. 

7. Distinction Bet-ween Pre- 
sumption of Payment and 
Statute of Limitations, 
214. 

XI. Waiver by Payment, 214. 
XII. Voluntary Payments, 214. 

1. Cannot be Recovered Back, 
214. 

2. Under Duress or by Fraud, 
218. 

3. Protest Necessary, 219. 

4. Of Taxes or Assessments, 

220. 

5. Where Officer Holds War- 
rant, 221. 

6. Threat to Sell Land, 222. 

7. Payment to Common Car- 
_ rier, 222. 



148 



Synopsis, 



PA YMENT. 



DeQnitioo, 



8. Made in Ignorance of Law, 

233. 

9. Under, Mistake of Fact, 225. 

XIII. Part Payment, 230. 

I. Effect Generally, 230. 
(a) Does Not Extinguish 

Debt, 230. 
(i) As an Admission, 232, 
(c) Creditor Not Bound to 

Accept, 233. 
(rf) Does Not Make an Ac- 
count Mutual, 233. 
3. Effect on Statute of Limita- 
tions (See Limitation of 
Actions), 233. 
3. Computing Interest on Par- 
tial Paywcnts, 233. 

XIV. Application of Payments, 234. 

1. By Debtor, 234. 

(a) Right to Direct, 234. 

(i) Creditor Must in First 
Instance Accept Debtor'' s 
Appropriation, 235. 

(c) When Debtor Must Make 
Application, 236. 

((f) Ho-w Shown, 236. 

2. .ffy Creditor, 237. 

(a) 0» Failure of Debtor to 
Direct Application, 237. 

(*) Must be Made to Debt 
Due, 238. 

(c) A/ajc Make Application 
Most Favorable to Him- 
self, 239. 

(if) To Unsecured Debt, 239. 



(e) To Z'eJi' Not Legally En- 
forceable, 240. 

if ) When Creditor May Make 
Application, 241. 

(^) Application, How Shown, 
242. 

3. Money Realized from Mort- 

gage, etc., 243. 

4. Application Once Made, Con- 

clusive, 243. 

5. Right Confined to Original 

Parties, 244. 

6. ^jy the Court, 245. 

(a) W/;«?-e Neither Party 
Makes Application, 245. 
(*) Court Will Not Disturb 
Application Made by 
Parties, 246. 
(c) Rules Governing Appli- 
cation, 246. 
(rf) To Oldest Charges, 247. 
(e) To Z>e*; Z>ae, 248. 
(/) To Legal Debt, 248. 
{g) Principal and Interest, 
249. [249. 

fji) Running Open Account, 
{i) To Unsecured Debts, 2ii\. 
XV. Tender (See Tender), 253- 
XVI. Payment Into Court (See Ten- 
der), 253. 
XVII, Pleading Payment, 253. 

I. Affirmative Defense, 253. 

2'. General Averment Suffcient^ 

254. 
3. General Issue, 254. 



I. Definition. 

due.^ 



-Payment is the discharge in money of a sum 



1. Bouvier's Law Diet. 

This is the definition of "payment" 
in its most restricted sense. In its most 
general acceptation, it is the fulfillment 
of a promise, the performance of an 
agreement, the accomplishment of every 
obligation, whether it consists in giv- 
ing or in doing. It is a not technical 
term, and has been imported into law pro- 
ceedings from the exchange, and not 
from law treatises. To prove.payment, 
the party pleading it must show the 
payment of money or something ac- 
cepted in its stead. Bouv. Law Diet, 
2 Greenl. Evid. (13th ed.), § 516; s, 
Masse, Droit Commerciel 229. 

Abbott says (Law Diet): "To pay,, 
as usually understood, means to deliver 
money. This is, however, not neces- 
sarily involved. The word does, how- 
ever, imply a delivery of value, and that 
it is the value called for by the engage- 
ment to be discharged. For when 



that engagement calls for something 
else than a simple delivery of value, 
performance is the proper term; and 
when something else than what is 
called for is delivered and accepted, 
this is a compromise or a discharge, 
and pay does not apply." 

Payment is a transfer of money from 
one person, the payor, to another, the 
payee. Rap. & Lawr. Law Diet. 

The act of discharging a debt, duty, 
or obligation by delivering the value 
for which it calls; also the money or 
other value delivered. Abbott's Law 
Diet. 

Delivery by a debtor to his creditor of 
the amount due — as a plea, money, or its 
equivalent in value. Anderson's Law 
Diet. 

" 'Payment' is not a technical word : 
it has been imported into law proceed- 
ings from the exchange and not from 
law treatises. It does not necessarily 



149 



What Constitutes Payment. 



PA YMENT. 



In G-eneral. 



II. What Constitutes Payment — 1. In General. — Payment is a 
mode of extinguishing obligations. It is an act calling for the 
exercise of will, of consent. To constitute a payment, money or 
some other valuable thing must be delivered by the debtor to the 
creditor for the purpose of extinguishing the debt, and the credit- 
or must receive it for the same purpose.^ 



mean paj'ment in satisfaction and 
discharge, but may be used in a 
popular sense." Dwarris on Statutes, 
(2nd ed.) 675, f;7!«^Maillard v. Argyle, 
6 M. & G. 40. 

"Payment" properly means the full 
satisfaction of a debt by money, not by 
an exchange or compromise, or an ac- 
cord and satisfaction. Manice v. Hud- 
son River R. Co., 3 Duer (N. Y.) 426, 
441. 

To pay is to discharge a debt, to de- 
liver a creditor the value of a debt, 
either in money or in goods, to his ac- 
ceptance, by which the debt is dis- 
charged. Beals V. Home Ins. Co., 36 
N. Y. 522, 527; Tolman v. Manufac- 
turers InS. Co., I Cush. (Mass.) 73. 

The word "pay" implies an indebted- 
ness. Lent V. Hodgraan, 15 Barb. (N. 
Y.) 274,278. 

Payment is not merely the delivery of 
a sum of money, but the performance 
of an obligation; it is an act calling for 
the exercise of the will of consent, with- 
out which it has not the characteristics 
of that mode of extinguishing obliga- 
tions. Germon v. McCan, 23 La. 
Ann. 84. 

"To pay is to discharge an obligation 
by_a performance according to its terms 
or requirements. If the obligation be 
for money the payment is made in 
money; if for merchandise or labor, a 
delivery of the merchandise or a per- 
formance of the labor is pay ment ; or if for 
the erection of a building, performance 
according to the terms of the contract is 
payment." Tolman v. Manufacturers 
Ins. Co., I Cush. (Mass.) 73,- 76. See 
also, Beals v. Home Ins. Co., 36 N. Y. 

527- 

"Payment, in its largest sense, is the 
actual accomplishment of the thing 
that the party obliges himself to give 
or to do, whatever they may be; al- 
though, in our acceptation, it is ordi- 
narily confined to money engagements, 
and it is therefore the natural manner 
in which obligations are extinguished. 
When the obligation is to give some- 
thing, the pa^'ment is accomplished 
when the property in the thing is to be 
given is actually transferred to the 



creditor, and, of course, in order to conr 
stitute the transaction a paymfent, there 
must be both a delivery \iy the debtor 
and an acceptance by the creditor, with 
the purpose, on the part of the former, 
,to part from, and of the latter to accept 
of the immediate ownership of the thing 
passed from the one to the other. In a 
payment we ordinarily look to the act 
of the party making it; but yet its legal 
import ts an act in which the debtor 
tenders and the creditor accents that 
which is offered. ' Ut itaque solutio 
fieri fosset, necessario requisitur set 
untrinsque tarn frcestant is quam ac- 
cifientis voluntas concurrat,' is the 
definition given in the Roman law, and 
may be safely addpted as a correct defi- 
nition of a common law payment." 
Thompson v. Kellogg, 23 Mb. 2S5. 

In the above case the creditor's agent 
presented a draft to the debtor and 
demanded payment. Therefore the debt- 
or uncovered a large quantity of dimes 
and half dimes lying on the table) and 
told the agent there was the mone^' for 
him. The agent went up to the table, 
put his hand on the mone^ and 
in running his hand over it mixed 
the coin together somewhat, and said: 
'►I suppose I shall have to take it, and I 
will go to my office to get bags for it." 
While he was gone the sheriff levied 
on the coin as the property of the debtor. 
In an action to determine the question 
whether the draft had been paid the 
court instructed the jury that if the 
agent received the coin "in immediate 
satisfaction of the draft" it constituted 
a payment. And the jury having 
formed that it was not so received, the 
supreme court refused to disturb the 
verdict. 

1. Bloodworth v. Jacobs, 2 La. Ann. 
24; Kingston Bank v. Gay, 19 Barb. 
(N. Y.) 459; Cushing v. Wyman, 44 
Me. 121; Caine f. Coulson, i H. & C. 
746; s. c.,32 L.J. Exeh. 97. 

Payment means satisfaction by mon- 
ey not by an exchange or coftipromise. 
or an accord and satisfaction. Manice 
V. Hudson River R. Co., 3 Duer (N. Y.) 
426, 441. 

"Payment, in a legal sense, is the 
160 



What Constitutes Payment. 



PA YMENT. 



In General. 



discharge of a contract or obligation in 
money or its equivalent, and it is usu- 
ally made with the assent of both 
parties to the contract. The word is 
not used in statutes or by text-writers 
in the bad sense of revenge or punish- 
ment. No creditor is permitted by the 
laws to seize his debtor's property and 
to declare at his own pleasure that he 
will take it in satisfaction of his demand. 
If he so takes it he is a trespasser, and 
liable in damages." Brady v. Wasson, 
6 Heisk. (Tenn.) 131. 

"As to the mode of payment it may 
be by any lawful method agreed upon be- 
tween the parties and fully executed. 
The meaning and intention of the par- 
ties when it can be distinctly known is 
to have eifect, unless that intention 
contravenes some well established prin- 
ciple of law." Dodge v. Swazey, 35 
Me. 535. 

Says Pearson, J .; "Payment must be 
made either in money or in mone3''s 
worth; but to amount to a payment, 
the thing must be done, the money 
must be paid, or the thing taken as 
money must be passed so as presently to 
become the property of the other party. 
A promise or undertaking to pay, 
either in money or other thing, is not 
payment. The contract is executor^'; 
whereas payment is executed, a thing 
done." Rhodes xk Chesson, Busb. L. 
(N.Car.) 336. 

Says Mr. Daniel: "By payment is 
meant the discharge of a contract to 
pay money by giving to the party en- 
titled to receive it the amount agreed 
to be paid by one of the parties who en- 
tered into the agreement. Payment is 
not a contract. It is the discharge of a 
contract, in which the party of the first 
part has a right to demand payment," 
and the party of the second part has a 
right to make payment. 2 Dan. Neg. 
Instr. (3d ed.), ^ 1221. 

See also, Moran v. Abbey, 63 Cal. 56. 

It is not a payment until the money 
has actually reached the hands of the 
party for whom it is intended, or his 
authorized agent. Remsen v. Wheeler, 
105 N. Y. 573. 

The agent of the debtor took monej' 
to the attorney of the creditor for the 
purpose of paying the debt. A dispute 
arose as to the correct amount tendered, 
and the money was handed to a b)'- 
stander to count, said bystander being 
an officer who, at the time, held a writ of 
attachment against the creditor. The 
officer counted it, found the amount 
and therL attached it as the property of 



the creditor. The attorney of the 
creditor refused to consider the trans- 
action a payment. But it was held to 
constitute a payment, even though it 
was shown that there was connivance 
between the agent of defendant and 
the party who attached the money. 
Root V. Ross, 29 Vt. 488. 

Money paid to a person to whom it 
properly belongs, though under a mis- 
take as to the right under which it ac- 
crues to him, extinguishes the debt, and 
he cannot again enforce payment in 
his lawful right. Hemphill v. Moody^ 
64 Ala. 46S. 

Where A, having in his hands money 
belonging to B, agreed to apply it for 
the benefit of C, a creditor ofB, the la!- 
ter having neither authorized nov as- 
sented to the agreement, such arrange- 
ment would not operate as a payment of 
A's debt to B. Bowman v. Ainslie, i 
Idaho N. S. 644. 

A creditor cannot pay himself with 
the debtor's money without the debtor's 
consent, express or implied. If the debt- 
or delivers him money for a purpose 
whichnegatives the idea of payment, the 
creditor must use it for the purpose for 
which it was given him. IJetroit etc. 
R. Co. V. Smith, 50 Mich. 112. 

The distinction is .sometimes made 
between payment in law and payment 
in fact. Payment in fact is said to be 
an actual payment from the payor to 
the payee; payment in law a transaction 
equivalent to actual payment. Rap. & 
Lawr. Law Diet. 

"In any transaction having in view 
the payment of an obligation, it is re- 
quired that it shall be actually paid in 
order to discharge it, or that something 
shall be received by the creditor from 
the debtor under an express agreement 
that it shall operate as payment." Peo- 
ple V. Cromwell, 102 N. Y. 477, 485. 

Where money was forwarded b}' the 
debtor to the creditor, but the creditor 
refused to receive it and informed the 
debtor that the money was subject to 
his order, this was not a payment, 
Kingston Bank v. Gay, 19 Barb. (N. 

Y,)459- 

Where one of two Joint makers paid 
the note, but by .agreement between 
him and the payee the payment was 
kept a secret, and only half the amount 
was indorsed on the note, and an at- 
tempt was made io collect the balance 
of the co-maker, this constituted an ex- 
tinguishment of the note, and the only 
liability of the comaker was for contri- 
bution. Davis V. Stevens, 10 N. H, 186. 



151 



What Constitutes Payment. 



PA YMENT. 



In General. 



A, an agent of B, held funds of his 
principal to the full amount" of bills 
drawn upon him by B, which the latter 
had delivered to his creditors. The- 
creditors without B's knowledge, made 
a composition with A, and gave him 
up the bills upon receiving from him 
loj. in the pound, B afterwards became 
bankrupt, and his assignee brought an 
action against A for the difference be- 
tween the amount of the bills and the 
composition, but it was held that the 
assignee could not recover, since, as B 
was benefited to the full amount of the 
bills, as between him and A. the com- 
position was a payment. Stonehouse 
V. Read, 5 Dowl. & Ry. Co, 3 B. & C. 
669. 

A cross demand cannot be treated as 
a payment, except by agreement to that 
effect between the parties. Wharton 
V. King, 6g Ala. 365; McCurdy v. Mid- 
dleton,82 Ala. 131, Rowland w. Blakes- 
ley, 2 G. & Dav. 734; i Q^ B. 403, 6 
Jur. 732, Livingston f. Whiting, 19 L. 
J„Q^B. 528, 150^ B. 722, Smith v. 
Winter, 12 C. B. 487; 21 L. J., C. P. 158. 

Where A held B's note, and 6, in 
making out an account current between 
himself and A, 'charged A with the 
note, and afterwards gave him credit 
for it, this did not constitute a payment 
of the note. Bettison v. Jennings, 11 
Ark. 116. See Matossy v. Frosh, 9 Tex. 
610. 

Where one who is liable on a bill of 
exchange is a depositor in the bank 
holding the bill, and has a balance there 
to his credit, the bank cannot be com- 
pelled to appropriate such balance 
toward payment of the bill. Citizen's 
Bank v. Carson, 32 Mo. 191. 

A draft upon a debtor having been 
indorsed and sent for collection to tiie 
bank where the debtor kept his account 
and where the debtor had funds suffici- 
ent to meet the draft, the bank, at the 
debtor's direction, charged up the 
amount of the draft to the debtor's ac- 
count, and then drew its own check for 
the same amount payable to the credit- 
or, but before the check was paid the 
bank closed its doors. Held, that the 
draft was paid. Welge v. Batty, 11 
111. App. 461. 

A, being the holder of a note payable 
at a certain bank, in which he was a 
depositor, sent it at maturity to that 
bank for payment, the bank, supposing 
the maker to be in funds, credited the 
amount of the note to A, but on discov- 
ering their mistake the next day, sent 
notices to the indorsers of non-pay ment. 



Held, that tire note had not been paid, 
Troy City Bank v. Grant, Hill & D. 
Supp. (N. Y.) 119. See also, Dewey 
V. Bowers, 4. Ired. (N. Car.) 538, 

Where a bank writes upon a check 
the word "good." or any similar word 
or words which indicate a statement 
that the drawer has funds in the bank 
applicable to the payment of the check, 
and that it will so apply them, this 
amounts to a payment as to the drawer 
and will discharge him. First National 
Bank v. Whitman, 94 U. S. 343; Meads 
V. Merchants' Bank, 25 N. Y. 143; 
s. c, 82 Am, Dec. 331; First Nat. Bank 
V. Leach, 52 N. Y. 350, s. c, 11 Am. 
Rep. 708. 

The maker of a note payable at a cer- 
tain bank, before maturity thereof, 
gave to the bank the check of a third 
person drawn on itself for the amount 
of the note. The check was by the 
bank placed with the note, and on the 
day ofits maturity it was entered onthe 
books of the bank as paid, and the ac- 
count of the third person charged with 
the amount of the check. Held, that 
the note was paid, though the third 
person's account was at the time over- 
drawn. Pratt V. Foote, 10 N Y. 599. 
See s. c, 9 N. Y. 463. 

A bank, which was not accustomed 
to receive for collection checks drawn 
upon itself, received a check' drawn by 
one of its depositors in favor of an- 
other depositor, credited it in the pass 
book of the payee, placed it on the file 
of paid and cancelled checks where it 
was not the custom to place checks 
received for collection, and credited 
the payee and charged the drawer with 
it in the books of the bank. It was 
/leld that this constituted a payment of 
the check which could not be retracted 
upon discovery that it was an over- 
draft, and the drawer was insolvent. 
City Nat. Bank t). Burns, 68 Ala. 267; 
8. c, 44 Am. Rep. 138. 

This decision is placed on the ground 
that the evidence clearly shows that 
the check was not taken for collection. 
For the mere receipt of a check and en- 
tering it in the depositor's bank book 
does not ordinarily constitute a pay- 
ment of it, though it is drawn on the 
bank where it is deposited. Morse on 
Banking 320. In the opinion of Brick- 
ell, C. J., in the above case, two decis- 
ions are referred to as maintaining this 
view Boyd v, Emerson, 2 Ad. & El. 
184; Kilsby V. Williams, 5 B & Aid, 815, 
But the court holds that in the case be- 
fore it the check was not taken for 



152 



'What Constitutes FaTinent. 



PA YMENT. 



In General. 



collection, and that it falls within the 
principal of Bolton v. Richard, 6 T. R. 
139, where it was held that when a bank 
credit* a depositor with the amount 
of a check drawn upon it by another 
customer and there is no want of 
good faith on the part of the depos- 
itor, the act of crediting is equivalent to 
a payment in money. This is the view 
taken by the Supreme Court of the 
United States in First Nat. Bank v. 
Burkhardt, 100 U. S. 686, and the 
other cases cited in the opinion. Corn- 
fare Watervliet Bank v. White, i Den. 
(N. Y.) 608; McLemore v. Hawkins, 46 
Miss. 716; Nightingale v. City Bank, 
26 Up. Can. C. P. 74. 

A bank in Nashville discounted a 
note for the benefit of a bank in Knox- 
ville, the same being indorsed by de- 
fendant, and by the Knoxville bank. 
The banks were regular correspondents 
of each other and settled their accounts 
monthly. At the maturity of the note 
the Nashville bank sent it to the Knox- 
ville bank with instructions to collect 
and credit. The latter bank entered 
the amount on its books to the credit 
the former. At that time the Knoxville 
bank had money sufficient to pay the 
note, but no money was actually paid, 
and the bank was then insolvent. Two 
days afterward it closed its doors. Held, 
that this constituted a payment, and 
that defendant was not liable. First 
Nat. Bank. v. McClung, 7 Lea (Tenn.) 
492;s. c, 40 Am. Rep. 66. Compare 
Warwick v. Rogers, 5 Man. & G. 340; 
s. c, 6 Scott (N.R.) i; Prince ^.Orien- 
tal Bank, L. R., 3 App. 325; s. c, 24 
Moak's Rep. 221. 

It was the course of business between 
a banker and his customer that when 
claims against the customer were sent 
to the banker, he should pay them out 
of the customer's deposits, if he had any, 
and charge them in the account. A 
particular claim against the customer 
was sent the banker for collection, to 
pay which and others the depositor 
placed money with the banker with di- 
rections to use it in paying those claims. 
Before the money was so applied the 
banker failed. It was held that the 
customer was still liable on the claims. 
Moore v. Meyer, 57 Ala. 20. 

In October the creditor authorized 
the debtor to pay in at certain bankers 
the amount of the debt. Owing to a 
mistake it was not then paid; but on 
Friday, the 9th of December, the debtor, 
who kept an account at the same bank, 
transferred the sum to the credit of the 



creditor. The latter being at a distance 
did not receive notice of the transfer 
till the following Sunday, and on Sat- 
urday the bankers failed. Held, that 
this was a good payment. Eyles v. El- 
lis, 4 Bing. 112; 12 Moore 306. Com- 
pare Brown v. Kewley, 2 Bos. & Pul. 

A purchased goods of B and agreed 
to pay for them by bill at three months. 
A gave B a check on his bankers, who 
were also the bankers of B, requiring 
them to pay B on demand in a bill at 
three months. B paid the check in at the 
bankers, but instead of taking a bill from 
them the amount was transferred on the 
books of the bank from A's account to 
B's, with the knowledge of both. The 
bankers failed before the check became 
due. Held, that B could not recover 
from A the value of the goods. Bolton 
V. Richard, 6 T. R. 139; i Esp. 100. 
See Smith i;. Ferrard, 7 B. & C. 19; 9 
Dow. & Ry. 803: and compare Pedder 
V. Watt, 2 Chit. 619. 

Where plaintiil's attorney wrote to 
the defendant to remit the balance of 
the account due plaintiff, with costs, 
and defendant remitted by post a 
banker's bill payable at sight for the 
account, without costs, and the at- 
torney wrote refusing to accept the 
bill unless the costs were also remitted, 
but kept the bill, though he did not 
cash it, the payment was held to be 
good, as it was the duty of the attorney 
to return the banker's bill if he did 
not choose to receive it in payment. 
Caine v. Coulson, 32 L. J., Exch. 97 ; 
s. c, I H. & C. 764; s. c, II W. R. 239. 

A judgment debtor sent money by 
his son to the clerk of the court to be 
paid to the judgment creditor. The 
clerk deposited the money in bank 
in his own name with a memorandum 
showing for whom it was intended. 
A few months afterwards the debtor 
inquired of the creditor if he had been 
paid, and the latter replied : "No, but 
the money is deposited in the bank for 
me." The clerk subsequently died, 
and the creditor not having applied 
for the money, the administrator paid 
it back to the son of the debtor. Held, 
that there was no acceptance of the 
money, and the- debt was still due. 
Moore v. Tate, 22 Graft. (Va.) 351. 

B offered to sell a promissory note 
owned by him for $500. V, who was 
the holder of a note executed by B for 
,$488, proposed to purchase the note 
held by B for the price asked, and 
having requested to see it, the note 



153 



"What Constitutes Payment. 



PA YMENT. 



In General. 



■was handed to him by B. V Jaid 
down upon the table B's $488 note, 
and $12 in cash, and retained the note 
belonging to B. B objected to this 
proceeding, but afterwards took the 
money and note from the table, to 
prevent their being lost. Held, that 
his act under the circumstances did 
not constitute an acceptance of pay- 
ment. Van Cleave t;., Beach, no Ind. 
269. 

Where the debtor offers to the 
creditor a certain sum in payment of 
a debt, the amount of which is open 
and unliquidated, and accompanies 
his offer with the condition that the 
money, if taken at all, must be received 
in full or in satisfaction of the debt, 
and the creditor receives it, this oper- 
ates as a payment, even though the 
creditor, when receiving the money, 
declares that he will only take it in 
part satisfaction of the debt, as far as 
it will extend. McDaniels v. Lapham, 
21 Vt. 222; McDaniels v. Bank of 
Rutland, 29 Vt. 230 ; s. c, 70 Am. Dec. 
406 ; Cole V. Champlain Transp. Co., 
26 Vt. 87; Calkins v. State, 13 Wis. 
395; Day w. Murdock, i Munf. (Va.) 
460. 

See also, infra, Part Payment. 

Com fare King v. Phillips, 94 N. 
Car. 555; Thomas v. Cross, 7 Exch. 
728; 21 L. J. Exch. 251. 

A payment to a sheriff by the pur- 
chaser of land at execution sale of the 
amount of his bid is none the less a 
valid payment by reason of the fact 
that the purchaser at the time gives 
the sheriff notice not to pay over a 
certain portion of the money. Spraker 
V. Cook, 16 N. Y. 567. 

Where property of the testator is 
delivered to a specialty creditor, this 
virill be treated as a payment of the 
debt, though it was delivered to him 
as residuary legatee. Stephenson v. 
Axson, I Bailey Eq. (S. Car.) 274. 

Defendant had been accustomed to 
paying his indebtedness to the plain- 
tiff by depositing money to his credit 
at any one of several banks, the in- 
debtedness not being considered as 
discharged till plaintiff received notice 
of the deposit. It was agreed that a 
particular debt should be paid by 
depositing the sum due at a certain 
bank. Held, that the bank thus des- 
ignated became the plaintiff's agent, 
and the debt was overcharged by 
making the' deposit, though no notice 
thereof was given to plaintiff. Ex- 
change Bank v. Cookman, i W. Va. 69. 



Where items were originally charged 
to a wife, but were embraced in an 
account rendered by the creditor 
against the husband in the usual 
course of dealing between them, the 
balance being in the husband's favor, 
this constitutes a payment of such 
items. Florance v. Michell, 5 La. 
Ann. 17. 

If it is agreed between the parties to 
a note that payment may be made in 
a particular manner, a performance 
of the agreement by the maker before 
action brought, will be a defense to a 
suit on the note. Gilsbn v. Gilson, 16 
Vt. 464. 

Where contemporaneously with the 
execution of a written obligation to 
pay money there is an oral agreement 
that the obligation is to be discharged 
by the doing of something other than 
the payment of money, this agree- 
ment when performed operates as a 
completed discharge of the obligation, 
Patrick v. Petty, 83 Ala. 420. 

Where contemporaneously with the 
execution of a promissory note it is 
orally agreed that, if the maker mar- 
ries the payee, the latter will dismiss 
a pending suit for bastardy and breach 
of promise, and the note shall be 
deemed satisfied, the maker may set 
up the performance of this agreement 
as a payment and a defense to an 
action on the note. But such defense 
may be avoided by proof that the 
agreement of the maker was not 
merely to marry plaintiff, but also to 
take care of and treat her as a husband 
should his wife, and that, though he 
had married her, he had treated her 
in a manner so cruel and inhuman as 
to drive her from his home, so that 
she was compelled to obtain a divorce. 
Tucker v. Tucker, 113 Ind. 272. 

Where it was agreed at the time of 
giving the note that the maker should 
pay the interest and such part of the 
principal as he could by orders drawn 
on him by the payee, and by paying 
the premiums due from the payee to 
an insijrance company, evidence that 
the agreement was performed by the 
maker is admissible under a plea of 
payment. Jones v. Snow, 64 Cal. 456. 
Where the agreement is performed 
in part, and full performance pre- 
vented by the act of the payee, this 
would constitute payment fro tanto. 
Thus, where, at the time of executing 
the note, it was agreed between the 
parties that if the payee lived through 
the year 1884, and the maker boarded 



154 



What Constitutes Payment. 



PA YMENT. 



In General. 



and cared for her during said year, 
the note was to be discharged, and 
the payee died in September, 1884, 
this constituted a payment of the note 
fro tanto. Patrick v. Petty, 83 Ala. 
420. 

An agreement to credit on a note 
the value of work done does not con- 
stitute a payment pro tanto. Cook v. 
Cook, 24 S. Car. 204 ; Weeks v. Elli- 
ott, 33 Me. 488. 

But if the work is done under such 
agreement it constitutes a payment. 
Moore v. Stadden, Wright (Ohio) 88. 

Where suit is pending on a promis- 
sory note against maker and indorser, 
a payment by the indorser is such a 
payment as will bar a further prosecu- 
tion of the suit against the maker even 
for the indorser's benefit. Griffin v. 
Hampton, 21 Ga. 198. 

Same principle applies to payment 
of judgment. Boggs v. liancaster 
Bank, 7 W. & S. (Pa.) 331; Davis v. 
Barkley, i Bailey (S. Car.) 141. Com- 
jiare Low v. Blodgett, 21 N. H. 121. 

The payee of a promissory note 
agreed with the maker to take it up 
from an indorsee who was the holder, 
and in settlement to deliver it to the 
maker. After it was thus taken up, 
there was a balance due from the 
payee to the maker which exceeded 
the amount of the note. Held, that 
these facts constituted a payment of 
the note. Peabody v. Peters, 5 Pick. 
(Mass.) I. 

Defendant being indebted to a bank 
was authorized by the/ latter to dis- 
charge such indebtedness by taking 
up certain notes and certificates of the 
bank, which had been guaranteed by 
defendant, and the bank offered to 
receive them at par in payment of 
such debt. Held, that the production 
and lender to the bank of such notes 
and certificated constituted a complete 
discharge of the defendant's indebted- 
ness, notwithstanding the fact that 
■such notes and certificates were il- 
legally issued, and the bank was not 
liable on them. Leavitt v. Beers, Hill 
& D. Supp. (N. Y.) 221. 

The indorser of a protested draft 
held by a bank procured his note to 
be discounted by the bank with a 
view to paying the bill, but having 
given no direction as to the applica- 
tion of the proceeds, the amount was 
placed to his credit on the books of 
the bank, and some time afterwards 
applied by the cashier to the note 
which was therefore cancelled and de- 



1.5.5 



livered up to the maker. Held, that 
the note was extinguished and no ac- 
tion could be maintained on it. Shaw 
V. Branch Bank, 16 Ala. 708. 

If the laws of the place where a ves- 
sel touches require that the physician's 
bill for attendance upon a seaman shall 
be paid hy the vessel before she can 
leave port, and the amount is paid by 
the master, this is a payment fro tanto 
of the seaman's wages, and does not 
constitute merely a set-off. Pray v. 
Stinson, 21 Me. 402. 

Where the payee of a joint and several 
promissory note assigns the same to one 
of the makers, this amounts to a pay- 
ment; and the note cannot be revived 
by an assignment by such maker after 
maturity. Gordon v. Wonsey, 21 Cal. 

77- 

One who was in debt to a bank made 
a payment on account in the bank to 
one of the clerks. On a subsequent day 
the debtor agreed to lend the clerk the 
amount so paid, and the clerk took the 
money and used it, the ampunt never 
having been credited to the debtor on 
the books of the bank. Held, that the 
debt was extinguished fro tanto. 
Rhodes ?'. Hinckley, 6 Cal. 283. 

A mortgagor placed in the bank at 
which the secured note was made paj'- 
able the money necessary to meet the 
note, with instructions to the bank to 
retain the money until proper authority 
was given to cancel the mortgage and 
the title to the land for which the note 
was given should appear perfect. The 
title proving defective, the mortgagee 
set about remedying the difficulty. Be- 
fore this was accomplished the noJ:e was 
transferred to a third person, who filed 
a bill for foreclosure, and it was held 
that the payment, being only con- 
ditional, was not a bar to the foreclosure. 
Coburn v. Hough, 32 111. 344. 

Where the debtor makes an absolute 
deed of land to the creditor, this con- 
stitutes a payment to the extent of the 
value of the land. So also does a 
mortgage of land, after foreclosure. 2 
Greenl. Evid. (13th ed.), § 524; Fales v. 
Reynolds, 14 Me. 89. See Hogan v. 
Hall, I Strobh.Eq. (S. Car.) 323. 

While the foreclosure of a mortgage is 
not in a strict sense a payment, yet the 
value 01 the land enures by way of pay- 
ment. Briggs V. Richmond, 10 Pick. 
(Mass.) 391; s. c, 20 Am. Dec. 526; 
Case V, Boughton, 11 Wend. (N. Y.) 
106. 

Where chattels are mortgaged to se- 
cure a debt, a. taking and retaining the 



What Constitutes Payment. 



PA YMENT. 



In General. 



chattels, or selling them without a fore- 
closure, will operate as a payment of 
the mortgage debt. Landon v. White, 
loi Ind. 24j9» See Hunt v. Nevers, 15 
Pick. (Mass.) 500; ». c, 26 Am. Dec. 
616; Wright V. Storrs, 32 N. Y. 691; 
Dismukes v. Wright, 3 Dev. & B. L. 
(N. Car.) 78. 

Where a mortagee who holds two 
mortgages, one covering real estate and 
the other personalty, to secure the same 
debt, forecloses the personal mortgage, 
takes possession of the property and 
converts it to his own use, this operates 
as a payment of the debt and a satis- 
faction of the realty' mortgage, if the 
value of the personalty exceeds the debt 
secured. Androscoggin Sav. Bank v. 
McKenney, 78 Me. 44^. 

Where a negotiable promissory note 
was transferred before due as collateral 
security, and was atterwards paid to 
the payee, who transmitted the money 
to the holder, and the holder, in ignor- 
ance of the fact that the mone3' was the 
proceeds of the collateral note, applied 
it to the payment of the note secured 
thereby, but not to the collateral itself, 
this was a discharge of the collateral 
note. Coleman v. Jenkins, 78 Ga. 605. 

A, being the holder of B's note, em- 
ploj'ed an agent to collect the same. 
B also appointed the same agent to col- 
lect certain rents and notes and apply 
the proceeds to the payment of the note 
to A. The agent collected for B a sum 
greater than the amount of B's note to 
A, but made no credit or endorsement 
of payment on the note, simply credit- 
ing B on his books with the money re- 
ceived. Held, that the note was not 
paid. 'Phillips v. Mayer, 7 Cal. St. 
Compare Grandy v. Abbott, 92 N. Car. 
33, 38; Smith V. Lamberts, 7 Gratt. 
(Va.) 138. 

An agreement between an agent of 
an insurance company, having authority 
to receive premiums, and a party in- 
sured, that the agent shall become re- 
sponsible to the company for the pre- 
mium and the insured become his per- 
sonal debtor therefor, constitutes a pay- 
ment of the premium as between the in- 
sured and the company. Sheldon v. 
Connecticut Mut, L. Ins. Co., 25 Conn. 
207; s. c, 65 Am. Dec. 565; Bouton v. 
American Mut. L. Ins. Co., 25 Conn. 
542. See Home Ins. Co. v. Gilman, 
112 Ind. 7. 

But the mere acquittance or release 
to the agent of his personal debt to the 
debtor, will not constitute a payment to 
the principal. Bostick v. Hardy, 30 



Ga. 836; Smith v. Morrill, 39 Kan. 665. 

Where a party who is indebted to an 
insurance broker hands to the broker a 
policy of insurance that the latter may 
adjust the loss, and upon adjusting it 
the broker debits the insurance company 
and credits the insured, this constitutes 
a payment of the policy, unless the in- 
sured dissents at the time. Bethune v. 
Neilson, 2 Cai. (N. Y.) 139. 

Plaintiff, the owner of a note ex- 
ecuted by A, placed it in the hands of 
an attorney for collection. It was then 
agreed between A and the attorney that 
the latter should borrow for A from B 
a sum of money sufficient to pay the 
note, which was done, A executing a 
deed of trust to secure B, the lender of 
the monej-, and A's note was delivered 
up to him Ijy the attornej' upon the re- 
ceipt of the money from B. Held, that 
as soon as the money was thus received 
by the attorney it operated eo instanti 
as an extinguishment of the note. 
Grandy f . Abbott, 92 N. Car. 33. 

The owner of certain State bonds, 
redeemable at the treasury, deposited 
them with the State treasurer, who 
afterward, without the owner's au- 
thority, took from the treasury money 
to the amount of the bonds and con- 
verted the same to his own use, cancel- 
ling the. bonds. He credited himself 
with the amount as for money paid in 
the redemption of bonds, and in a set- 
tlement with the State was allowed 
credit for ,the amount. Held, that as 
against the owner of the bonds tiiis did 
not constitute a pavment. Bassett f. 
State, 26 Ohio St. 543. 

Where a collector receives for taxes 
a negotiable order drawn by the select- 
men on the town treasurer, this does 
not, of itself, constitute a payment of 
the order. Willey v. Greenfield, 30 Me. 

452- 

The purchaser of a ' lot from his 
father-in-law signed his own father's 
name, to the notes given for the purchase 
mone3', and had the lot conveyed to his 
father. Afterward, in the settlement of 
the father-in-law's estate, these notes 
were taken by the son and his wife as 
part of her distributive share. Held, 
that this constituted a payment of the 
notes. Scheerer v. Scheerer, 109 111. 
II. 

W, a district school teacher, received 
for a month's salary an order of the dis- 
trict committee on the treasurer, which 
he transferred, indorsed in blank, to a 
third person, who in good faith paid him 
the monev on it. This had been the 



156 



What ConBtitutes Payment. 



PA YMENT. 



In General. 



usual .mode of monthly payment for 
two years. Held, to operate as a pay- 
ment to W as against a creditor of his 
who garnisheed the treasurer before the 
order was presented, and before the 
treasurer had received notice of the 
transfer. Seymour v. Over River School 
District, 53 Conn. 502. 

A brakeman took out a policy of in- 
surance, the premium of which was to 
be paid by instalments, and gave to the 
insurance company a written order on 
the railway company by which he was 
employed to pay such instalments out 
of his wages as they fell due, which or- 
der was delivered to the railwaj' com- 
pany by the insurance company, in ac- 
cordance with an existing custom in 
such cases. The railway company neg- 
lected to pay one of the instalments, 
but the insurance company failed to 
notify the brakeman of that fact, and 
within the period covered by such in- 
stalment he was killed. Held, that the 
instalment must be regarded as paid. 
Lyon V. Traveler's Ins. Co., 55 Mich. 
141; s. c, 54 Am. Rep. 354. 

A debt may be paid by a third person 
becoming responsible to the creditor 
with the concurrence of the ' debtor. 
Logan V. Williamson, 3 Ark. 216. 

An agrement between maker and 
payee that the note shall be deemed to 
be paid bj' being allowed in discharge 
of a mortgage from the payee to a third 
person, does not extinguish the note, 
unless the assent of such third person 
is shown. Hewes v. Hanscom, 10 Gray 
(Mass.) 336. 

The holder of a note brought ar ac- 
tion thereon against the malcer. At the 
trial, the plaintiff, against the protest of 
defendant, credited on the note the 
amount of an account which he owed 
defendant, took judgment for the bal- 
ance, and defendant afterward paid the 
judgment. Held, that this did not con- 
stitute a payment of the account due 
defendant. Keith v. Smith, i Swan 
(Tenn.) 92. 

Plaintiff employed a traveling agent 
to sell goods, and fixed the minimum 
prices to be charged therefor. Defend- 
ants, who knew the limitations as to 
prices, bought gopds of the agent upon 
an agreement with him that they should 
settle for the goods at prices less than 
the minimum. The agent then sent to 
plaintiff an order for the goods, with 
the minimum prices affixed thereto. 
Plaintiff, in ignorance of the agreement 
between his agent and defendants, ship- 
ped the'goods together with a bill there- 



of showing the minimum prices, and 
charged the goods to defendants at those 
prices. Defendants received the goods 
and made no objection to the bill, but 
they settled with the agent at the prices 
agreed upon between them, and the 
agent reported to plaintiff that he had 
received the full sum charged by plain- 
tiff for the goods. Thereupon plaintiff 
charged the agent and credited the de- 
fendants with the amount of the bill, 
but there has been no final settlement 
between plaintiff and his agent. In a 
suit to recover of defendants the differ- 
ence between the amount paid to the 
agent and the face of the bills rendered, 
lield, that the bills had not been paid 
and plaintiff was entitled to recover. 
Rogers v. Holden, 142 Mass. 196. 

H owing to P for a set of tombstones, 
made an agreement with S that S 
should pay P for the stones upon their 
delivery, H to credit S with the sum 
upon a demand which he held against 
him. P was indebted to B upon a past 
due promissory note, and agreed withB 
that B should receive payment of S 
for the stones and apply the amount on 
the note, S consenting thereto. P there- 
upon delivered the stones to B with 
notice to S of that fact. Held, thai the 
transaction amounted to a payment in 
fraesenii oitheamOMnt upon P's note 
to B. Butts V. Perkins, 41 Barb. (N. 
Y.) 509. 

A draft indorsed by defendant for 
the accommodation of the drawer, and 
subsequently by plaintiff for the same 
purpose was discounted at the instance 
of the drawer, and not being paid by 
him was taken up by the plaintiff, due 
notice being given to defendant as first 
indorser. Subsequently, in order to re- 
imburse the plaintiff, a note was 
made by plaintiff and indorsed by the 
defendant, discounted by a bank and 
the proceeds remitted to the plaintiff. 
Plaintiff's clerk without his knowledge 
credited the amount on the books of 
plaintiff to the drawer of the draft, 
which act was disaffirmed by plaintiff 
upon its coming to his knowledge. The 
note was not paid by defendant, but was 
taken up by plaintiff. Held, that the 
discount of the note and the receipt by 
plaintiff of the proceeds was not an ex- 
tinguishment of the liability of defend- 
ant as first indorser of the draft. Oli- 
phant V. Church, 19 Pa. St. 318. 

Plaintiff obtained from defendant an 
advance of £15,000 upon the security 
of goods then in transit to M V, con- 
signed to S, and of six bills of exchange 



157 



■What Constitutes Payment. PA YMENT. In General. 

Anything is a payment which the creditor accepts as a 



drawn by plaintiff upon S against the 
shipment and accepted bj S, Two of 
the bills were duly paid. Two of the 
remaining four having been dishonored, 
defendants at M V proposed to realize 
on the goods at once, whereupon plain- 
tiff delivered them a cheque for £2,500 
with the request not to sell but to hold 
the £2,500 as collateral security for S's 
acceptance, to be returned to plaintiff 
when all the bills were paid. S having 
failed to pay the remaining bills, defend- 
ants proceeded against him at M V, 
under which proceedings the goods 
were sold by judicial arrangement, and 
the bills were cancelled and delivered 
up to S, without plaintiff's knowledge 
or consent. The sale of the goods did 
not produce sufficient, even with the 
^2,500, to pay all the dishonored bills. 
Plaintiff brought his action to recover 
back the £2,500. Held, that while 
plaintiff might have an accounting , 
against defendants for what they 
realized or might have realized by 
means of the securities but for their 
own acts and negligence, that is, for the 
real value of the cancelled bills, yet the 
transaction above recited did not con- 
stitute a payment of the bills, and he 
was not entitled to recover the £2.500. 
Yglesias v. Mercantile Bank, L. R, 3 
C. P. Div. 46; s. c, affirmed on appeal, 
L. R., 3 C. P. Div. 330; s. c, 30 Moak's 
Rep. 46, 19S. 

S was trustee of funds belonging to 
defendant, and also cashier of a bank. 
He placed in such bank certain sums 
to his credit as trustee, and gave 
defendant permission to draw on the 
bank at pleasure. Defendant accord- 
ingly drew cheques repeatedly 
on the bank, which were always 
paid up to the time of the 
death of S. After his death defend- 
ant drew two more cheques, the aggre- 
gate amount of which was less than the 
sum standing to the credit of S, as 
trustee, on the books of the bank. These 
cheques were paid by the cashier who 
succeeded S, who did so with the inten- 
tion of charging them against the 
balance to the credit of S, as trustee. 
They were never actually so charged, 
and the bank soon became insolvent 
and went into the hands of a receiver, 
who brought an action to recover the 
amounts so paid defendant on her two 
cheques. Held, that, in equity, the 
money to the credit of S as trustee be- 



longed to the defendant, and the acts of 
S amounted, in an indirect way, to a pay- 
ment thereof to her, and the receiver 
could not recover it back. Bank of 
Slatesville v. Waddell, 100 N.'Car. 

338- 

The maker of a promissory note was 
one of the distributees of the estate of 
the holder thereof She agreed with 
the administrator that 'before the final 
settlement of the estate, the amount due 
on the note should be deducted from 
her share of the estate in payment of 
said note. The estate had never been 
settled, no account had been rendered, 
and it had never been ascertained what 
the maker's distributive share would 
amount to. Held, that this was a 
mere executory agreement, and not suf- 
ficient to establish a payment. Taylor 
V. Lewis, 146 Mass. 222. 

Co7nfare Gardiner v. Callender, 12 
Pick. (Mass.) 374. 

Where a testator was indebted to the 
person named as his executor, and by 
the will leaves certain property to the 
executor in payment of the debt, the 
executor cannot, after proving the will, 
assert his right to take other assets of 
the estate in payment of his debt, 
though the property mentioned in the 
will proves to be of less value than the 
amount of the debt. Syme v. Badger, 
92 N. Car. 706. 

Where a clerk in a bank stole money 
from the drawer of a fellow clerk and 
delivered it to the cashier, who ac- 
cepted it in satisfaction of a debt due 
from the former to the bank, such trans- 
action did not constitute a payment of 
the clerk's debt. State Bank v. Welles, 
3 Pick. (Mass.) 394. 

Where a payment is made in a man- 
ner not contemplated by the contract, 
the payee may adopt and ratify it. But 
if he has a right to elect whether he 
will ratify or disaffirm it, he must 
ratify it or disaffirm it as an entirety. 
Williams v. Jones, 77 Ala. 294. 

Whether the transaction amounts to 
a payment is a question of fact for the 
jury. Binford V. Adams, 104 Ind. 41; 
Monticello v. Grant, 104 Ind. 168. 

As to what constitutes paj'ment of a 
debt due by or to an executor or ad- 
ministrator to or by the decedent, see 
infra, Presumption of Payment. ■ 

As to distinction between pay- 
ment and facts constituting a set-off, see 
Dodge V. Swazy, 35 Me. S3S- 



168 



What Constitutes Fayment. 



PA YMENT. 



In General. 



payment or for the purpose of extinguishing the debt due him.^ 



1. School Town of Monticello v. 
Grant, 104 Ind. 16S. 

Unless prohibited by statute it is 
competent for the owner and con- 
tractor to agree upon the method and 
time of payment of moneys due or to 
become due upon a building contract; 
and when payment is made in accord- 
ance with such agreement, it is binding 
upon all parties, unless impeached for 
fraud or collusion. Crane v. Genin, 
60 N. Y. 127; Payne v. Wilson, 74 N. 
Y. 348; Gibson v. Lenane, 94 N. Y. 
183. 

The following cases illustrate the 
doctrine of what constitutes a payment: 

United States. — Gill v. Packard, 4 
Woods (U. S.) 271; Shortridge v. 
Macon. 1 Abb. (U. S.) 58; Levy v. 
Bank of U. S., 4 Dall. (U. S.) 234; 
Orchard v. Hughes, i Wall. (U. S.) 73; 
Gwathney v. McLean, 3 McLean (U. 
S.) 371. 

Alabama. — Franklin v. McGuire, 10 
Ala. 557; Wilkinson v. Bradley, 54 
Ala. 677; White v. Toles, 7 Ala. 569; 
Mcpherson v. Foust (Ala. 1890), 8 So. 
Rep. 193; Merchants' etc. Bank v. 
Coleman, 81 Ala. 170; Steiner v. Bal- 
lard, 42 Ala. 153; Sledge v. Tubb, 11 
Ala. 383. 

California. — Wright v. Mix. 76 Cal. 

465- 

Connecticut. — Marvin v. Keeler, 5 
Conn. 271; Norton v. Plumb, 14 Conn. 
512; Stamford Bank v. Benedict, 15 
Conn. 437; Duties v. DeForrest, 19 
Conn. 190; Woodruff etc. Works v. 
Stetson, 31 Conn. 51; Meeker v. 
Meeker, 16 Conn. 403. 

Georgia. — Rice v. Georgia Nat. 
Bank, 64 Ga. 173; Jones •&. Grantham, 
80 Ga. 472. 

Illinois. — Bodley v. Anderson, 2 111. 
App. 450; Miller v. Montgomery, 31 

111. 350- 

Indiana. — Yoj'v. Reddick, 31 Ind. 
414; Hyatt -v. Clements, 65 Ind. 12; 
Monticello v. Grant, 104 Ind. 168; Mc- 
Clure V. Andrews, 68 Ind. 97; Dakin 
V. Anderson, 18 Ind. 52. 

Kentucky. — Watson v. Cresap, i B. 
Mon. (Ky.) 195; s. c, 36 Am. Dec. 572; 
Railey -v. Jones, 7 J. J. Marsh (Ky.) 
303; Nelson v. Cartmel, 6 Dana (K3'.) 
7; Anderson v. Mason, 6 Dana (Ky.) 
217. 

Louisiana. — Mouton v. Noble, i La. 
Ann. 194; Bowers v. Hale, 14 La. Ann. 
421. 



Maine. — Woodman v. Woodman, 3 
Me. 350; Ingalls v. Fiske, 34 Me. 232: 
Stackpole v. Keay, 45 Me. 297; Her- 
rick V. Bean, 20 Me. 51. 

Maryland. — Cheston v. Page, 4 Har. 
&J. (Md.) 466. 

Massachusetts. — Young v. Adams, 6 
Mass. 182; George v. Cushing, 17 Pick 
(Mass.) 448; Capen t'. Alden, 5 Met, 
(Mass.) 26S; Leland v. Loring, 10 Met 
(Mass.) 122; Taylor v. Wilson, 11 Met, 
(Mass.) 44; s. c, 45 Am. Dec. 180 
Hall V. Holden, 116 Mass. 172; Mer 
riam v. Bacon, 5 Met. (Mass.) 95; Reed 
V. Parsons, 11 Cush. (Mass.) 255. 

Michigan. — Pennsylvania etc. Co. 
V. Brady, 14 Mich. 360; Iron Cliffs 
Co. V. Gingrass, 42 Mich. 30; Pease v. 
Warren, 29 Mich. 9; Ryan v. O'Neil, 
49 Mich. 281. 

Minnesota. — Fogarty v. Wilson, 30 
Minn. 289; Nutting v. McCutcheon, 5 
Minn. 382. 

Mississippi. — Knight v. Yarborough, 
7 Smed. & M. (Miss.) 179; Dunlap v. 
Petrie, 35 Miss. 322. 

Missouri. — Coy x.'. Dewitt, 19 Mo. 
322. 

Nebraska. — Hughes t'. Kellogg, 3 
Neb. 186. _ 

New Hampshire. — Grafton Bank v. 
Hunt, 4 N. H. 488. 

New Jersey. — Clark v. Mershon, 2 
N.J. L. 70. 

New Tork. — Hodge v. Hoppock, 75 
N. Y. 491; Concord Granite Co. v. 
French, 12 Daly (N. Y.) 228; Dinkel 
V. Wehle, 63 How. Pr. (N. Y.) 298; 
Catlin V. Munn, 37 Hun (N. Y.) 23; 
Chemung Canal Bank v. Chemung 
Co., 5 Den. (N. Y.) 517; Davis v. 
Spencer, 24 N. Y. 386; White v. How- 
ard, I Sandf. (N. Y.) 81; Cowperth- 
•waite V. Sheffield, i Sandf. (N. Y.) 
416; s. c, 3 N. Y. 243; Read v. Mutual 
Safety Ins. Co. 3 Sandf. (N. Y.) 54. 

North Carolina. — Hardgrave v. Du- 
senberry, 2 Hawks (N. Car.) 326; 
Shortridge v. Macon, Phill. L. (N. 
Car.) 392. 

Oregon. — Hindman v. Edgar (Ore- 
gon 1888), 17 Pac. Rep. 862. 

Pennsylvania. — Ormsby Coal Co. v. 
Bestwick (Pa, 1889), 18 Atl. Rep. 538; 
Bailey v. Pittsburg etc. Gas etc. Co., 69 
Pa. St. 334; Fullerton v. Mobley (Pa. 
1888), 15 Atl. Rep.856; Curcier t). Pen- 
nock, 14 S. & R. (Pa.) 51; Levy v. 
Bank of U. S., i Binn. (Pa.) 27; Pearl v. 
Clark, 2 Pa, St. 350. 



159 



"Wliat Constitutes Payment. 



FA YMENT. 



By Levy of Execution. 



2. By Levy of Execution. — The levy of execution on lands does 
not constitute a payment of the judgment debt, nor does the 
seizure of goods and chattels under execution.* 

Part payment to an officer holding an execution or distress 
warrant is a discharge pro tanto, and the plaintiff must look to the 
officer.* 

3. Payment or Purchase. — Where a note or bill is taken up, or a! 
debt paid by a stranger, the question arises whether the transac- 
tion amounts to a purchase or a payment. The general rule is, 
that the demand of a creditor which is paid with the money of a 
third person, without any agreement that the security shall be 



Rhode Island. — Quidnick Co. v. 
Chafee, 13 R. I. 438. 

South Carolina. — Seabrook v. Ham- 
mond, 5 Rich. (S. Car.) 160; Miller v. 
Kerr, i Bailey (S. Car.) 4. 

Tennessee. — Wharton v. Lavender, 
14 Lea (Tenn.) 178. 

Texas. — Chalmers v. Harris, 22 Tex. 
265; Luter V. Hunter, 30 Tex. 688; Can- 
field V. Hunter, 30 Tex. 712; Culbreath 
V. Hunter, 30 Tex. 713; Levison v. 
Norris, 30 Tex. 713; Levison v. Krohne, 
30 Tex. 714. 

Vermont. — Chellis v. Woods, 11 Vt. 
466; Heartt v. Johnson, 13 Vt. 89; Mc- 
Intyre v. Corss, 18 Vt. 451; Tracy v. 
Pearl, 20 Vt. 162; Smith v. Day, 23 Vt. 
656; Farmers' Bank v. Burchard, 33 Vt. 
346; Robinson v. Hurlburt, 34 Vt. 115; 
Nevfell V. Keith, 11 Vt. 214; Putnam v. 
Russell, 17 Vt. 54; s. c, 42 Am. Dec. 478. 

Virginia. — Harpers v. Patton, i 
Leigh (Va.) 306; Laidley v. Merrifield, 
7 Leigh (Va.) 346; Pindall v. North- 
western Bank, 7 Leigh (Va.) 617. 

Wisconsin. — Eastman v. Porter, 14 
Wis. 39; Gray v. Herman, 75 Wis. 453. 

1. Trapnall v. Richardson, 13 Ark. 
1543; s. c, 58 Am. Dec. 338; Dugan v. 
Fowler, 14 Ark. 132; Cowles v. Bacon, 
21 Conn. 451; s. c, 56 Am. Dec. 371; 
Gregory i). Stark, 4 111. 611; Nelson v, 
Rockwell, 14 111. 375; Williams v. 
Gartrell, 4 Green (Iowa) 287; Sasscer 
V. Walker, 5 Gill. & J. (Md.) 102; 
s. c, 25 Am. Dec. 272; De- 
hority v. Paxson, 115 Ind. 124; Spaf- 
ford 'v. Beach, 2 Doiigl. (Mich.) 150; 
Smith V, Walker, 10 Smed. & M. 
(Miss.) 584; Peale v. Bolton, 24 Miss. 
630; Green v. Burke. 23 Wend. (N. Y.) 
490; Lytle V. Mehaflfy, 8 Watts (Pa.) 
267; Campbell's Appeal, 32 Pa. St. 88. 

But in the following cases a levy is 
held to be prima facie a satisfaction of 
the judgment: 



166 



Mickles T). Haskin, 11 Wend. (N.Y.) 
125; Maginac v. Thompson, 15 How. 
(U. S.) 281; Freeman v. Smith, 7 Ind. 
582; Alexander t;. Polk, 39 Miss. 737; 
Wade V. Watt, 41 Miss. 248; Peay v. 
Fleming, 2 Hill Eq. (S. Car.) 96; Pigg 
V. Sparrow, 3 Ha3'w. (Tenn.) 144; 
Warrensburg v. Simpson, 22 Mo. App. 
695; Richey v. Merritt, 108 Ind. 347. 

But it is held by some courts that 
while a levy on real property of suffi- 
cient value- to discharge the execution 
is not a satisfaction, yet it is otherwise 
where personal property is levied on. 
Hogshead v. Carruth, 5 Yerg. (Tenn.) 
227; Carroll *. Fields, 6 Yerg. (Tenn.) 

30.S- 

The plaintiff cannot abandon an exe- 
cution against the will of the debtor. 
Trapnall v. Richardson, 13 Ark. 543; 
s. c, 58 Am. Dec. 338. 

Where an attachment has been 
levied on property, and the record 
does not show any disposition of the 
levy, the presumption is that the debt 
was satisfied. Benson v. Benson, 24 
Miss. 625. 

The return of an execution satisfied 
raises a presumption that the money 
was received by the plaintiiif. Boyd 
V. Foot, 5 Bosw. (N. Y.) no. 

Under the Alabama statute where 
an execution has been sued out within 
a year and a day and has been re- 
turned nulla bona, an alias execution 
may be sued out at any time within 
10 years from the return of the orig- 
inal. Held, that this does not raise a 
presumption of payment, nor does it 
cast upon the plaintiff the burden of 
proving the judgment unsatisfied, 
either in a scire facias to revive the 
judgment Or in an action of debt. 
Collins V. Boyd, 14 Ala. 505. 

2. White V, Mandeville, 72 Ga. 
705- 



What Constitutes Payment. 



PA YMENT. 



Payment or PnTchase. 



assigned or kept on foot for the benefit of such third person, is 
absolutely extinguished.* 



1. Sheldon on Subrogation, ^§ 3, 
2S ; Thorner v. Smith, 2 L. M. & P. 
43; IS J"r. 469; 20 L. ]., C. P. 71; 
Simpson i\ Eggerton, 10 Exch. 845 ; 
Dooley ;■. Virginia F. & M. Ins. Co., 3 
Hughes (U. S.) 221; Stockly v. Hor- 
sey, 4 Houst. (Del.) 603; Day v. 
Humphrey, 79 111. 452; Johnson v. 
Glover, 121 111. 283; Pearce v. Bryant 
Coal Co., 121 111. 590; Binford v. 
Adams, 104 Ind. 41; Montgomery v. 
Vickery, no Ind. 2n; Bunch i). Grave, 
III Ind. 351; Dougherty v. Deeney, 
45 Iowa 443 ; Newport Bridge Co. v. 
Douglass, 12 Bush (Ky.) 673; Brice v. 
Watkins, 30 La. Ann., pt. x, 21; 
Moody V. Moody, 68 Maine 155 ; 
Tuckerman 71. Sleeper, 9 Cush. (Mass.) 
177; American Bank v. Jenness, 2 Met. 
(Mass.) 288 ; Hoysradt v. Holland, 50 
N. H. 433 ; Eastman -v. Plummer, 32 
N. H. 238; New Jersey Midland R. 
Co. V. Wortendyke, 27 N. J. Eq. 658 ; 
Sanford v. McLean, 3 Paige (N. Y.) 
117; s. t., 23 Am. Dec. 773; Banta v. 
Gavow, I Sandf. Ch. (N. Y.) 383; 
Wilkes r'. Harper, I N. Y. 586; Lancey 
r". Clark, 64 N. Y. 209; s. c, 21 Am. 
Rep. 604; Gadsden v. Brown, Spears 
Eq. (S. Car.) 41 ; Campbell v. Sloan, 
21 S. Car. 301; Douglass v. Fagg, 8 
Leigh (Va.) 588; Cravatte v. Esterly, 
26 Wis. 675. Compare St. Louis Min. 
Co. V. Sandoval Min. Co., 116 111. 170; 
Haven x. Grand Junction R. & Depot 
Co., 109 Mass. 88 ; Granite Nat. Bank 
V. Fitch, 145 Mass. 567; Hartshorn v. 
Brace, 25 Barb. (N. Y.) 126; Crounse 
V. Fitch, 23 How. Pr. (N. Y.) 350; 
s. c, 14 Abb. Pr. (N. Y.) 346; Brown 
V. Rich, 40 Barb. (N. Y.) 28; Smith 
V. Miller, 25 N. Y. 619. 

Where one not a party to the con- 
tract pays a debt, it is an extinguish- 
ment of the demand, whether made 
with the assent of the debtor or not. 
Harrison v. Hicks, i Port. (Ala.) 423; 
s. c, 27 Am. Dec. 638. 

And this rule obtains where a third 
person pays a partnership note for one 
member of the firm. In such case the 
person paying the note cannot re- 
cover on it against the firm. Chil- 
dress V. Stone, Ga. Dec, pt. 2, 157. 

"There . is an important difference 
between the payment of a note and 
the purchase of it from the owner. 
Payment is the discharge of a debt. 
The purchase of a note is a contract 



of sale." Elliott, J., in Binford v. 
Adams, 104 Ind. 43 ; citing 2 Dan. 
Neg. Inst. (3rd ed.), ^ 1221. 

In this section Mr. Daniel says 
that a sale is different from a payment. 
A sale "is a contract which does not 
extinguish a bill or note, but continues 
it in circulation as a valid security 
against all parties. And it is neces- 
sary to constitute a transaction a sale 
that both parties should then ' ex- 
pressly or impliedly agree, the one to 
sell, and the other to purchase, the 
paper." Section 1221, and cases cited 
in note. 

A's wife conveyed to B an undivided 
half of a lot owned by her, and he 
therefore purchased the other undi- 
vided half, erected some buildings 
thereon and deeded the whole to A's 
wife. In order to put up the buildings 
some money was borrowed, for which 
notes were given signed by A's wife 
and B, which notes A afterwards took 
up. Held, that this constituted a pay- 
ment and not a purchase, and that B's 
estate was not liable thereon. Wash- 
ington V. Bedford, 10 Lea (Tenn.) 243. 

In a Missouri case the owner of a 
promissory note placed it in bank for 
collection, with no authority to the 
officers of the bank to sell it. By an 
arrangement between the maker of 
the note and a defendant, the latter 
agreed to take up the note and hold it 
for a few months for the maker's ac- 
commodation, and defendant accord- 
ingly went to the bank and handed 
his cheque to the latter, who there- 
upon erased the owner's name which 
was indorsed thereon, and handed the 
note to the defendant. Held, that this 
constituted a payment. Wolff v. 
Walter, 56 Mo. 292. To same effect, 
Burr V. Smith, i\ Barb. (N. Y.) 262; 
Kennedy r;. Chapin, 67 Md. 454. Com- 
pare Swope V. Leffingwell,72 Mo. 348; 
Dodge V. Freedman's Sav. etc. Co., 
93 U. S. 379. 

Three notes were secured by a sin- 
gle mortgage. The maker being un- 
able to meet the first, got a third party 
to take it up with the agreement that 
he was to hold it till certain claims 
were collected, and if the claims were 
not collected in three years the note 
was to be paid by a sal^ under the 
mortgage. This was held not to work 
an extinguishment of the note, though 



18 C. of L.— II 



161 



What Constitutes Payment. 



PA YMENT. 



Payment or Purchase, 



the payee, after its transfer, gave the 
maker a written acknowledgment of 
its payment. Ramsey v. Daniels, i 
Mackey (D. C.) i6. 

The payee of a note presented it at 
maturity to the maker, who gave him 
a letter to a third party which he, the 
payee, did not read, and upon present- 
ation of which the third party gave 
to the payee the amount of the note, 
and the payee wrote a receipt for the 
same on the note and surrendered it 
to the party who paid him the money. 
Held, that this was a payment of the 
note, and an action would not lie on 
the note in the name of the payee, 
though for the benefit of the third 
party, against the maker. Blundell v. 
Vaughan, 12 Smed. & M. (Miss-.) 625. 

During the pendency of a suit by a 
bank against the maker and accom- 
modation indorser of a note, a friend 
of the maker, at the maker's request, 
procured the notes from the plaintiff's 
attorney, paying him the whole 
amount due thereon, upon the assur- 
ance of the attorney that he had full 
authority from the bank to make the 
transfer. This was held tc be a sale 
and not a payment of the note, and 
the transferrer had the same rights 
against the accommodation indorser 
as the bank had before the purchase. 
Warner v. Chappell, 32 Barb. (N. Y.) 
309. See also Concord Granite Co. v. 
French, 65 How. Pr. (N. Y.) 317. 

A furnished the money to enable 
a mortgagor to take up one of several 
notes owned by B. The mortgagor 
informed B at the time the money 
was paid that it was A's money, and 
directed B not to cancel the note, as 
A was going to hold it. B, however, 
did not understand that he had sold 
the note to A. Held, that a payment 
must be presumed, not a purchase. 
Collins V. Adams, 53 Vt. 433. 

The payee of a joint and several 
note, at the request of the principal 
maker, for whose accommodation it 
had been executed by the others, sent 
it to a bank for collection. Plaintiff, 
at the request of said principal maker, 
and upon the understanding that the 
note should be transferred to him, de- 
livered to the bank the amount of the 
note, and the note was thereupon de- 
livered to him. The bank forwarded 
the money to the payee, who received 
it, not knowing but that it was a pay- 
ment, but after learning the facts, nev- 
ertheless, retained the money. Plaintiff 
brought suit on the note, and was held 

16; 



entitled to recover, the court, Finde, 
J., saying: "Whatever may be true as 
to the want of authority to sell the 
note in the bank which received it for 
collection, it is quite certain that the 
transaction between the plaintiff and 
the collecting agent was a sale, or an 
entirely void proceedings It could 
not be transformed into a payment in 
hostility to the expressed intentions of 
both parties who acted in the transfer. 
There was a sale, or an attempt at a sale 
which utterly failed, but never a,pay- 
ment ; and an erroneous supposition 
by Peters, ,the payee, as to the fact 
which produced the money, traceable 
to his ignorance of the truth, cannot 
alter the nature of that truth. The 
note, then, being unpaid, is due from 
the makers to some one, and must be 
payable to Peters or the plaintiff. 
The only concern of the defendants, if 
the rights of the sureties have not 
been infringed, is to know to which of 
two parties they may safely pay the 
debt. . . . Their sole defense is 
that the bank had no authority to sell, 
and so plaintiff got no title. Undoubt- 
edly Peters might have repudiated the 
act of his agent when he learned what 
it was. The moment he became pos- 
sessed of that knowledge, he was 
bound in common honesty to return 
the money paid him by mistake, or re- 
tain it as. it was given to his agent. 
The law will not endure that he shall 
keep the product of the agent's act 
and yet repudiate his authority," 
Coykendall v. Constable, 99 N. Y. 

309- 

On the insolvency of a banking com- 
pany, W, one of the principal share- 
holders, gave securities to another 
bank to cover advances to be made by 
the latter bank for the payment of the 
public creditors of the insolvent bank. 
The creditors in question were paid 
out of such advances, and the debts so 
paid were assigned to R as a trustee 
for W, the deed of assignment reciting 
the facts, and that R had agreed to 
pay the amount of the bills on having 
an assignment to him of the debts. 
Held, that this was not a payment. 
Mclntyre v. Miller, 13 M. & W. 725. 

Where A borrowed money on his 
bond through his attorney, who acted 
as agent for him in his pecuniary 
affairs, and payment being demanded, 
the attorney, without A's knowledge, 
obtained from his bankers an advance 
by depositing the bond in question 
with them, and then stated in a letter 
2 



Hedium of Payment. 



PA YMENT. 



In Money, 



A note paid in fact is not upheld as a subsisting debt by a legal 
fiction of equitable assignment, when there is no ground of justice 
to support the fiction.^ 

III. Medittm of Payment— 1. In Money. — Where nothing is said 
as to the terms of payment an absolute payment in cash is 
always implied.^ 



to the obligee in the bond that he had 
laid down the money to prevent her 
any inconvenience, this v^as not a pay- 
ment of the bond, and an action might 
be maintained thereon by the bankers 
in the name of the obligee against A. 
Lucas V. Wilkinson, 26 L. J. Exch. 13; 
I H. & N. 420. 

Whether the transaction is of such 
a character as to constitute a payment 
or a sale is generally a question of 
fact for the jury. Moran -v. Abbey, 63 
Cal. 56; Balohradsky t;. Carlisle, 14 111. 
App. 289; B.inford v. Adams, 104 Ind. 
41; Dougherty v. Deeney, 45 Iowa 
443; Jones v. Bobbitt, 90 N. Car 391 ; 
Wilcoxson V. Logan, 91 N. Car. 449. 

The rule is different where the 
stranger is compelled to pay the debt 
for the protection of his own prop- 
erty. Weiss V. Guerineau, 109 Ind. 
438 ; Harbach v. Colvin, 73 Iowa 638. 

Where a partner voluntarily pays a 
firm debt out of his individual means, 
he does not thereby become a creditor 
of the firm for the amount so paid. 
Lyons v. Murray, 95 Mo. 23; s. u., 6 
Am. St. Rep. 17. 

Where an agent receives a note for 
collection he may, in Michigan, pay 
the amount to his principal and then 
sue on it in his own name. Coy v. 
Stiner, 53 Mich. 42. 

The maker of a promissory note 
given for the purchase of land pro- 
cured the transfer to himself of a judg- 
ment against the payee, and then, 
upon the surrender of his note by the 
payee, entered satisfaction 6f the judg- 
ment. Afterwards he delivered the 
note to the assignor and real owner of 
the judgment, whose agent he had 
been in the transaction. Held, that 
these facts showed only an ex- 
change of the note for the judgment, 
and did not operate as a payment of 
the note, and that an assignee thereof 
could recover against the maker. 
Flournoy v. Harper, 81 Ala. 494. 

The party assigning or consenting 
to the assignment of a note or bill 
would still be held thereon. Aetna 
Life Ins. Co. v. Corn, 89 IJl. 170; 

16; 



Baker v. Seeley, 17 How. Pr. (N. Y.) 
297. 

As to keeping judgment alive for 
benefit of surety who has paid it, see 
Chandler v. Higgins, 109 111. 602. 

1. Rolfe V. Wooster, 58 N. H. 526. 

2. Benjamin v. Sales (ist Am. ed.), 
kh 706, 712; Means II. Harrison, 114 111. 
248. Comfare Foley v. Mason, 6 Md. 

37- 

Where silver is by the act of Congress 
made legal tender in amounts not ex- 
ceeding $5, a payment in silver of 
costs to a clerk of court is good, though 
the fee bill is $ 15.50 it not appearing that 
more than $5 of such costs was due 
any one person. Harnmann v. Mink, 
99 Ind. 279. 

Where rent is reserved in "lawful 
silver money of the United States, each 
dollar weighing 17 dwt., 6 grs. at least," 
a payment in gold coin is good. Mor- 
ris V. Bancroft, 9 Phila. (Pa.) 277. 

Where the contract on a sale of 
land was for payment in gold, the re- 
ceipt of the purchase money in cur- 
rency together with a delivery of the 
deed, is a waiver of the requirement as 
to payment in gold. Leffermann v. 
Renshaw. 45 Md. 119. 

A payment in currency under a con- 
tract to pay in gold will discharge the 
indebtedness to the amount of the gold 
value of the currency at the date of 
paj'ment. Hittson v. Davenport, 4 
Colo. i6g. 

The word "dollars" in a promissory 
note means dollars in lawful money of 
the United States, and an agent for 
collection has no authority to receive 
depreciated currency in payment. 
Stoughton V. Hill, 3 Wood (U . S ) 
404. 

An agreement to pay $5,000 in law- 
ful silver mone^' of the United States 
may be extinguished by the payment 
of that amount in silver half-dollar 
coins. Parrish v. Kohler, 11 Phila. 
(Pa.) 346. 

In payments between individuals, 
treasury notes and gold coin are to be 
considered as equivalent. Riddlesbar- 
ger V. McDaniel, 38 Mo. 138. 



Uedinm of Payment. 



PA YMENT. 



Bank Bills, 



2. Bank bills are deemed money and pass as such, unless objected 
to on that ground ; and, if accepted, they constitute a payment.^ 



According to Comyns, payment by 
merchants must be made in money or 
by bill. Com. Dig. Merchant (F); 
Bouv. Law Diet. Payment. 

The creditor is not bound to receive 
a cheque in paj-ment. Beauchamp v. 
Archer, 58 Cal. 431; s. i;., 41 Am. Rep. 
266. 

The clerk of a court has no power to 
receive payment of a judgment in any- 
thing but legal tender, without author- 
ity from the owner of the judgment. 
Prather v. State Bank, 3 Ind. 356; 
Bone V. Torry, 16 Ark. 83. See Wood- 
son V. Bank of Gallipolis, 4 B. Mon. 
(Ky.) 203. 

- Where certain notes were payable in 
"cost notes," and it appeared from the 
wording of the instruments that a pay- 
ment was intended more beneficial to 
the maker than money, the question of 
the manner of payment was properly 
left to the jury. Ward v. Lattimer, 2 
Tex. 245. 

"Specie" means gold and silver of 
the country where used; "currency" 
means paper money, or notes current 
in the community as money. Trebil- 
cock V. Wilson, 12 Wall. (U. S.)687. 

The term "lawful money" in a bond 
has been held to mean such currency 
as shall be lawful at the place and 
time when payment is actually made. 
O'Neil V. McKewn, i S. Car. 147. 

The debtor sent to the creditor a 
sum in gold with instructions to sell at 
a specified premium and apply the 
proceeds to the debt. The market 
value never reached the premium 
named by the debtor. The creditor 
retained the gold for two years without 
further instructions, and then credited 
the debtor with its market value at that 
time, which was below the value at the 
time the gold was received. Held, that 
he was not liable for the value at the 
time of its receipt. Patterson v. Cur- 
rier, 106 Mass. 410. 

Where $3,000, due for freight, is pay- 
able at Hull, in England, the pound 
sterling is to be reckoned at its value at 
the time and place of payment. Jeli- 
son V. Lee, i Woodb. & M. (U. S.) 368. 
See also Stanwood v. Flagg, 98 Mass. 
124. And see generally, on the question 
of the obligation to pay in money, the 
additional cases of McElderry v. Jones, 
67 Ala. 203; Blackwell t). The Auditor, 
I 111. (Breese) 152; Berry v. Nail, 54 



Ala. 446; Ballard v. Wall, 2 La. Ann, 
404; Atkinson v. Lanier, 69 Ga. 460; 
Missoula Co. v. McCormick, 4 Mont. 
115; Crutcher t). Sterling, i Idaho, N. 
S. 306. 

1. 2 Greenl. Evid. (13th ed.), § 522; 
Wright V. Read, 3 T R. 554; Owenson 
t'. Morse, 7 T. R. 64; Jones v. Ryde, 5 
Taunt. 488; Snow v. Perry, 9 Pick. 
^Mass.) 539 (and cases cited in note 1 
on page 542)'; Young v. Adams, 6 
Mass. 182; Phillips v. Blake, i Met. 
(Mass.) 156; Muton v. Old Colony 
Ins. Co., 2 Met. (Mass.) i, 5; Bayard 
V. Shunk, I W. & S. (Pa.) 92; s. c., 37 
Am. Dec. 441; Lowry v. Murrell, 2 
Port. (Ala.) 280; Corbitt v. Bank of 
Smyrna, 2 Harr. (Del.) 236; s. c, 30 
Am. Dec. 635; Edmunds v, Digges, i 
Gratt. (Va.) 359 (dissepting opinion, 
p. 549); s. c, 42 Am, Dec. 561; Scruggs 
V. Gass, 8 Yerg. (Tenn.) 175; s, u., 29 
Am. Dec. 114; Williams v. Roser, 7 
Mo. 1556. See Warren v. Mains, 7 
Johps. (N. Y.) 476. 

But if the bank was at the time in- 
solvent, and had stopped paj'ment, the 
acceptance of its bills does not consti- 
tute a satisfaction of the debt, though 
at the time and place of the payment 
the bills were in full credit, and both 
parties were ignorant of the bank's in- 
solvency. Jefferson v. Holland, i Del. 
Ch. 116; Lightbody v. Ontario Bank, 11 
Wend. (N. Y.) 9; s. c, on error, 13 
Wend. (N. Y.) loi; s. c, 27 Am. Dec. 
179; Thomas -v. Todd, 6 Hill (N. Y.) 
340; Honore v. Colmesnil, i J. J. 
Marsh. (Ky.) 523; Frontier Bank v. 
Morse, 22 Me. 88; s. c, 38 Am. Dec. 
284; Fogg V. Sawyer, 9 N. H. 361;; 
Westfall V. Braley, 10 Ohio St. 188; 
s. c, 75 Am. Dec. 509; Wainwright v. 
Webster, 11 Vt. 576; s. c, 34 Am. Dec. 
707; Townsend v. Bank of Racine, 7 
Wis. 185. See Magee v. Carmack, 13 
111. 289; Bayard v. Schunk, i W. & S. 
(Pa.) 92; s. c, 37 Am. Dec. 441; 
Scruggs V, Gass, 8 Yerg. (Tenn.) 75; 
s. c, 29 Am. Dec. 114. And compare 
Lowry v. Murrell, 2 Port. (Ala.) 280; 
Ware v. Street, 2 Head (Tenn.) 609; 
s. c, 75 Am. Dec. 755. 

In the payment and receipt of bank 
bills there is an implied contract on 
the part of the gayer that they are cur- 
rent and would pass readily in mercan- 
tile and business transactions as 
money. Kottwitz v. Bagby, 16 Tex. 656, 



164 



Uedium of Payment. 



PA YMENT. 



Confederate Notes, 



Current notes mean notes which are current at their face value. 
If they are depreciated they cease to be " current " wherever the 
depreciation exists.^ 

3. Confederate notes are to be regarded as a currency imposed 
upon the community by irresistible force and are considered by 
the courts as currency issued by a foreign government tempora- 
rily occupying by force a part of the territory of the United 
States.* If voluntarily received by the creditor during the pend- 
ency of the war at their nominal value, confederate notes consti- 
tuted a valid payment.^ 



As between a bank and a debtor to 
the bank, its notes are cash. North- 
ampton Bank v. Bailie, 8 W. & S. 311; 
s. c , 42 Am. Dec. 297. 

Where the maker of a note sent bank 
bills to the payee, with directions to the 
bearer to see the amount indorsed on 
the note or take a receipt, and the 
payee gave a receipt promising to in- 
dorse the payment on the note or return 
the bills when called for, this consti- 
tuted an amount, though before the ma- 
ker knew of the receipt the bank failed. 
Snow V. Perry, 9 Pick. (Mass.) 539. 

The fact that a note is made payable 
at a certain bank does not render the 
notes of such bank receivable in pay- 
ment. Bull V. Harrell, 7 How. (Miss.) 
9. And see McDougal v. Holmes, i 
Ohio 376. 

1. Williams v. Moslej', 2 Fla. 304. 
And the creditor cannot be compelled 
to take such. Howe v. Wade, 4 Mc- 
Lean (U. S.) 317; Magee v. Carmack, 
13 111. 289; Bragdon v. Goulam, ' T. 
B. Mon. (Ky.) 115. 

Compare Ridenow v. McClurkin,"6 
Blatchf. (Ind.) 411. 

And where an obligation is payable in 
the "current money" of any particular 
State, this means gold and silver. 
Moore V. Morris, 20 111. 255; Cockrill 
V. Kirkpatrick, 9 Mo. 697; Searcy v. 
Vance, Mart. & Y. (Tenn.) 225. 

Compare 'Deming v. Marsh, Kirby 
(Conn.) 424. 

A note payable in "Mississippi cur- 
rencj-" is payable in gold and silver, in 
the absence of proof that notes of the 
banks of that State were intended. Bal- 
lard V. Wall, 2 La. Ann. 4.04. And see, 
as involving a like question in relation 
to "Illinois currency," Hulbert v. Car- 
ver, 40 Barb. (N. Y.) 245. 

In i860 a bank issued a certificate 
showing a deposit of $4.80 "in current 
notes of the different banks of the State 
of North Carolina, which sum is pay- 
able in like current notes." The cer- 



tificate was held until 1868, at which 
time the State bank notes had by de- 
preciation become uncurrent. Held, 
that the bank was liable for the amount 
in United States currency'. Fort v. 
Bank of Cape Fear, Phil. (N. Car.) 417. 

Compare Wilson v. Keeling, i Wash, 
(Va.) 194. 

If a note payable in currfent bank 
notes fell due at a time and place dur- 
ing the late war when and where no 
such notes were in circulation, the 
amount due is to be measured b}' a gold 
standard. Jones v. Kincaid, 5 Lea 
(Tenn.) 677. 

An agreement that payment of a note 
should be made in a currency which af- 
terwards depreciated, does not consti- 
tute a defense to an action on the note, 
but reduces the right of recovery to 
the value of the sum in the depreciated 
currency at maturity. Powe v. Powe, 
42 Ala. 113. 

And credits in currency, indorsed as 
such on a note payable in specie, are 
payments only to the extent of the 
value in specie of such currency at the 
time of payment. Walkup v. Houston, 
65 N. Car. 501. 

Where paper was made payable in 
"current bank notes," if there were at 
the time the paper matured bank notes 
in circulation current as money and used 
in business transactions in the liquida- 
tion of debts, the debtor had the right 
to pay in such bank notes, though as 
compared with gold they were greatly 
depreciated in value. Moore v. Gooch, 
6 Heisk. (Tenn.) 104. 

Compare Western etc. R. Co. v, 
Taylor, 6 Heisk. (Tenn.) 408. 

2. Thorington v. Smith, 8 Wall. (U. 
S,) I. See Wilmington etc. R. Co. v. 
King, 91 U.S. 3. 

3. Berry v. Bellows, 30 Ark. 198; 
Hester v. Watkins, 54 Ala. 44; King v. 
King, 37 Ga. 201;; Caruthers v. Corbin, 
38 Ga. 75; Green v. Jones, 38 Ga, 347; 
Luzenburg v. Cleveland, 19 La. Ann. 



165 



Uedlnm of Payment, 



PA YMENT. 



Confederate Notes. 



473; Mercer v. Wiggins, 74 N. Car. 48; 
Flintt xi. Nelson, 15 Rich. (S. Car.) 9; 
Hyatt V. McBurney, 18 S. Car. 199; 
Jones V. Thomas, 5 Coldw. (Tenn.)465; 
Thorington v. Smith, 8 Wall. (U. S.) 
I. Compare Wright w. Overall, 2 
Coldw. (Tenn.) 336; Blalock v. Phillips, 
3$ Ga. 216; Strauss v. Bloom, 18 La. 
Ann. 48; Emmerson v. Mallett, Phil. 
Eq. (N. Car.) 234; Glenn v. Case, 25 
Ark. 616; Draughan v. White, 21 La. 
Ann. 175; Cuvlerr;. Ferrill, i Abb. (U. 
S.) 169; Ransom v. Alexander, 31 Tex. 

443- 

If an administrator receives confed- 
erate money in payment of debts owing 
the estate, he must, if he is a creditor of 
the estate, apply the same currency to 
the discharge of his own debt. Dickie 
V. Dickie, 80 Ala. 57. 

Where the agent of the payee of a 
note received payment in Confederate 
notes and delivered up the note to the 
maker, the debt was thereby ex- 
tinguished. Reed v. Nelson, 33 Tex. 
471. 

Compare Clark v. Thomas, 4 Heisk. 
(Tenn.) 419; Neely v. Woodward, 7 
Heisk. (Tenn.) 495. 

Payments Idv debtors in the Con- 
federate States to the agents or trustees 
of creditors in the loyal States, in any 
currency other than legal currency of 
the United States would not extinguish 
the debts so sought to be paid. Fretz 
V. Stover, 22 Wall. (U. S.) 198; Taylor 
V. Thomas, 22 Wall. (U. S.) 479. 

A note was given before the war, for 
monev belonging to citizens of New 
York" to a citizen of North Carolina, 
who acted as the agent of the New York 
parties, and was, in 1863, surrendered 
by such agent to a Confederate re- 
ceiver, who accepted in payment 
thereof Confederate monej-. Held, 
that such payment was no defense to a 
suit by the payee to the use of the bene- 
ficial ownero. Justice v. Hamilton, 67 
N. Car. III. 

In the absence of instructions to the 
contrary a circuit clerk was justified in 
receiving confederate money in pa^'- 
ment of a judgment at a time when that 
was the chief circulating medium. 
Douglas V. Neil, 7 Heisk. (T?nn.) 437; 
Binford v. Memphis Bulletin Co., 10 
Heisk. (Tenn.) 355. 

A clerk of a court, administrator, or 
other person sustaining a fiduciary re- 
lation, taking Confederate notes in 
payment in good faith will not be held 
to account for more than their value. 
Burford v. Memphis Bulletin Co., 9 



Heisk. (Tenn.) 691 ; Morris v. Morris, 
9 Heisk. (Tenn.) 814; Pilson v. Bu- 
shong, 29 Gratt. (Va.) 229. See Jones 
V. Jones, 49 Tex. 683. 

The rule established in Tennessee in 
actions to recover the value of Confed- 
erate notes is to estimate the same in 
U. S. treasury notes, and not in gold. 
Lustsr V. Maloney, 6 Baxt. (Tenn.) 374. 

Where payments of principal and in- 
terest on a promissory' note, executed 
in New ' Orleans in 1862, were made 
in United States money, and where no 
claim was made before suit brought 
that the term "dollars" was to be con- 
strued as meaning "Confederate dol- 
lars," judgment will be rendered for the 
amount due to be paid in lawful money. 
Cook V. Lillo, 103 U. S. 792. 

And see generally on the question of 
payments in Confederate money, Pieg- 
zar V, Twohig, 37 Tex, 225; Vander 
Hoven v. Nette, 32 Tex. 184; Pettis v. 
Campbell, 47 Ga. 596: Matthews v. 
Thompson, 2 Heisk. (Tenn.) 588; Opie 
V. Castleman, 32 Fed. Rep. 511; Clark 
V. Bernstein, 49 Ala. 596; Coleman v. 
Ayingfield, 4 Heisk. (Tenn.) 133; Black- 
well V. Tucker, 7 S. Car. 387; Bond v. 
Perkins, 4 Heisk. (Tenn.; 364; Cokrell 
n.Wiley, 4 Heisk. (Tenn.) 472; Darby 
V. Stribling, 24 S. Car. 422; Davis v. 
Mississippi Cent. R. Co., 46 Miss. 552; 
Harshaw v. Dobson, 67 N. Car. 203; 
Sirrine v. Griifin, 40 Ga. 169; Sharp v. 
Harrison, 10 Heisk. (Tenn.) 573; Wintz 
V. Weakes, 10 Heisk. (Tenn,) 593; Dil- 
lon V. Smith, 10 Heisk. (Tenn.) 595; 
Henderson v. McGhee, 6 Heisk, 
(Tenn.) 55; Kelley v. Story, 6 Heisk. 
(Tenn.) 202; Pryor v. Bank of Ten- 
nessee, 6 Heisk. (Tenn.) 442; Pointer 
V. Smith, 7 Heisk, (Tenn.) 137; Wil- 
burn V. McCollom, 7 Heisk. (Tenn.) 
267; Alderson v. Clear, 7 Heisk. 
(Tenn,) 667; Smith v. Smith, loi N. 
Car, 461; Ellis t). Smith, 42 Ala, 349; 
Wood V. Cooper, 2 Heisk. (Tenn.) 441; 
Hill V. Erwin, 60 Ala. 341;* Ritchie v. 
Sweet, 32 Tex 333; s, c, 5 Am. Rep. 
245; Ponder v. Scott, 44 Ala. 241; 
Vance v. Cooper, 22 La. Ann. 508; 
Washington v. Burnett, 4 W. Va. 84; 
Robinson v. International L. Assur. 
Soc, 42 N, Y, 54; s, c, I Am, Rep, 400; 
Hall V. Craige, 65 N. Car. 51; Cross v. 
Sells, I Heisk, (Tenn.) 83; Cable v. 
Harden, 67 N. Car. 472; Bryan v. 
Heck, 67 N. Car. 322; Gilkeson v. 
Smith, 15 W. Va. 44; Ewart v. Saun- 
ders, 25 Gratt, (Va.; 203; Trustees of 
Howard College v. Turner, 71 Ala. 
429; s, c, 46 Am. Rep. 326. 



166 



Uedium of Fayment, 



PA YMENT. 



Illegal Currency. 



4. Illegal Currency. — A payment in an illegal or void currency 
is a nullity.' 

Counterfeit money, though supposed to be genuine by both 
parties and accepted by the creditor, are no payment, if the 
creditor offer to return them without unnecessary delay after dis- 
covering their worthlessness.** 

5. An account against a stranger to the transaction may be re- 
ceived in payment if such is the agreement between the parties; 
and whether such was the agreement is a question for the jury.* 

6. Payment by Note, Bill or Cheque — {a) General Rule. — A 
cheque, draft or promissory note of a debtor or of a third party, if 
not itself paid, does not constitute a payment, unless received by 
the creditor under an express agreement to accept it as an absolute 
payment.* 



\. Richards v. Stogsdell, 2i Ind. 74. 
2. 2 Greenl. Evid. (13th ed.), § 522; 
Baker v. Bonesteel, 2 Hilt. ,(N. Y.) 
397; Thomas v. Todd, 6 Hill (N. Y.) 
340; Markle v. Hatfield, 2 Johns.^ (N. 
Y.) 455; s. c, 3 Am. Dec. 446; Atwood 
V. Cornwall, 28 Mich. 336; s. c, 15 Am. 
Rep. 219; Eagle Bank v. Smith, 5 
Conn. 71; ». c, 13 Am. Dec. 37; Leake 
V. Brown, 43 111. 372; Ramsdale v. Hor- 
ton, 3 Pa. St. 330; Young v. Anams, 6 
Mass. 182; Hargrave v. Dusenbury, 2 
Hawks (N. Car.) 326; Anderson v. 
Hawkins, 3 Hawks (N. Car.) 568; 
Semmes v. Wilson; 5 Cranch (C. C.) 
285. See Corn Exchange Bank v. Na- 
tional Bank, 78 Pa. St. 233. 

But any unnecessary delay in noti- 
fying the debtor will deprive the cred- 
itor of his right to treat the debt as 
still existing. Atwood f. Cornwall, 28 
Mich. 336; s. c, 15 Am. Rep. 219; 
Wingate V. Neidlinger, 50 Ind. 520; 
Lawrencburg Nat. Bank v. Stevenson, 
51 Ind. 594. 

What is a reasonable time within 
which to return the note must depend 
upon the situation of the parties and 
the circumstances of each case. Simms 
V. Clark, 11 111. 137; Burrill v. Water- 
town Bank, 51 Barb. (N. Y.) 105. 

In one case two months was held to 
be too long a delay in returning the 
bills. Thomas v. Todd, 6 Hill (N. Y.) 
340. In another, a neglect for fifteen 
days to return them was held to prevent 
the payee from recovering. Gloucester 
Bank v. Salem Bank, 17 Mass. 42. In 
another case three years. Crucier v. 
Pennock, 14 S. & R. (Pa.) 51. Com- 
pare Prather v. State Bank, 3 Ind. 356. 
It is a question of fact for the jury. 
Magee v. Carmack, 13 III. 289; Union 
Nat. Bank v. Baldenwick, 45 111. 376. 



167 



If the part3' paying the counterfeit 
bills states, upon being notified that 
they are not genuine, tliat he will not 
take them back, this dispenses with an 
immediate offer to return them. Simms 
V. Clark, II 111. 137. 

But a bona fide payment made to a 
bank in notes purporting to be issued by 
said bank is good, though the notes 
prove to be counterfeit. Bank of U. S. 
V. Bank of Georgia, 10 Wheat. (U. S.) 

333- 

Where goods are delivered under an 
agreement to take a specific parcel of 
copper money in payment, the delivery 
of such parcel is a good payment 
though it was, in fact, counterfeit. 
Alexander v. Owen, i T. R. 225. 

3. Willard v. Germer, i Sandf. (N. 
Y.) so. 

And if the creditor agrees to take a 
claim of his debtor agninst a third party 
as payment in presenti, it is virtually 
a purchase of his debtor's claim, and an 
agreement to accept it as paj-ment fro 
tanto of his own claim. Hayden v. 
Johnson, 26 Vt. 768. 

A held certain notes against B, and B 
held a note against A for a less amount, 
payable in instalments. A, without 
the assent of B, indorsed the amount 
of the instalments as they fell due on 
his note to B, as the notes he held 
against B, which were, not then pay- 
able. Held, that this did not constitute 
a payment of his note to B. Green- 
ough V. Walker, '5 Mass. 214. 

4. Story V. Sales (4th ed.), § 219 ; 2 
Greenl. Evid. (13th ed.) § 521 ; Benja- 
min on Sales (i Am. ed.), § 729; 2 
Benj. on Sales (4 Am. ed.), 939, 
940; Owernon v. Morse, 7 T. R. 64; 
Burden v. Halton, 4 Bing. 454 ; Shipton 
V. Casson, 8 Dow. & R. 130; 5 B. & 



Medium of Payment. 



PA YMENT. Payment by Note, Bill or Cheque. 



C. 178; Sayer v. Wagstaff, 5 Beav. 
415; 13 L. J., Ch. 161; 3 Jur. 1083; 
Belshaw v. Bush, 14 Eng. L. & Eq. 269 ; 
In re London etc. Bank, 34 Beav. 332; 
34 L. J.,' Ch. 418 ; Bottomly v. Nuttall, 
5 C. B., N. S. 122; 28 L. J., C. P. no; 
Peter v. Beverly, 10 Pet. (U. S.) 532; 
Bank of U. S. f. Daniel, 12 Pet. (U. 
S.) 32; Gallagher v. Roberts, 2 Wash. 
(U. S.) 191 ; Parker v. United States, 
Pet. (C. C.) 266; Allen v. King, 4 
McLean (U. S.) 128; Wallace -y. Agry, 
2 Mason (U. S.) 336; Sheeley v. Man- 
deville, 6 Cranch (U. S.) 2:;3; The 
Kimball, 3 Wall. (U. S.) 37; Bank of 
St. Mary's v. St. John, 25 Ala. 566; 
Abercrombie v. Mosely, 9 Port. Ala. 
145 ; Crockett v. Trotter, i Stew. & P. 
(Ala.) 446; Ficklingi'. Brewer, 38 Ala. 
685 ; Mooring v. Mobile M. Ins. Co., 27 
Ala. 254; Marshall T'. Marshall, 42 Ala. 
149; Graves tJ. Shulman, 59 Ala. 406; 
Keel V. Larkin, 72 Ala. 493 ; Lee v. 
Green, 83 Ala. 491 ; Lane v. Jones, 79 
Ala. 156; Pope V. Tunstall, 2 Ark. 
209 ; Costar v. Davies, 8 Ark. 213 ; s. c, 
46 Am. Dec. 311; Viser v. Bertrand, ^ 
14 Ark. 267 ; Brugman v. McGuiie, 32 
Ark. 733; Caldwell v. Hall, 49 Ark. 
508 ; s. c, 4 Am. St. Rep. 64 ; Griffith 
V. Grogan, 1,2 Cal. 317; Crary v. 
Bowers, 20 Cal. 85 ; Welch v. Ailing- 
ton, 23 Cal. 322; Anderson v. Hen- 
shaw, 2 Day (Conn.) 272; Davidson 
V. Bridgeport, 8 Conn. 472 ; Bill v. 
Porter, 9 Conn. 23 ; Bonnell v. Cham- 
berlin, 26 Conn. 487 ; May v. Gamble, 
14 Fla. 467 ; Salomon v. Pioneer Co- 
operative Co., 21 Fla. 374; s. c, 58 
Am. Rep. 667 ; Mims v. McDowell, 4 
Ga. 182 ; Butts v. Cuthbertson, 6 Ga. 
166; Hatcher i>. Corner, 75 Ga. 728; 
Ryan v. Dunlap, 17 111. 40; s. c, 63 
Am. Dec.334; Rayburn v. Day, 27 111: 
46; Strong t;. King, 35 111. i ; s. c, 85 
Am. Dec. 336; Archibald v. Argall, 
53 III. 307; Wilhelm v. Schmidt, 84 
ill. 183; Jewett T'. Pleak, 43 Ind. 368; 
Hardin v. Branner, 25 Iowa 364; Mc- 
Laren V. Hall, 26 Iowa 297; Hunt v. 
Higman, 70 Iowa 406 (Iowa cases' 
cited); Cunningham v. McGowan, 71 
Iowa 461; Kermeyer v. Newby, 14 
Kan. 164; Harlan w. Wingate, 2 J.J. 
Marsh. (Ky.) 138; Sneed t;. Wiester, 
2 A. K. Marsh. (Ky.) 277; Comstock 
V. Smith, 23 Me. 202 ; Newall v^ Hus- 
sey, 18 Me. 249; Wolgamot v. Bruner, 
4 Har. & Mc. H. (Md.) 89; Morgan v. 
Bitzenberger, 3Gill, (Md.)35o; Harness 
V. Chesapeake etc. Canal Co., i Md. 
Ch. 248; Banorgee v. Hovey, 5 Mass. 
11; s. c, 4 Am. Dec. 17; where the 



authorities are cited; Watkins v. Hill, 
8 Pick. (Mass). 522; Pomroy t;. Rice, 
16 Pick. (Mass.) 22; Gardner v. Gor- 
ham, I Dougl. (Mich.) 507; Keough 
V. McNitt, 6 Minn. 513; Slocumb v. 
Holmes, i How. (Miss.) 139; Wake- 
field t>. Spencer, 8 Minn. 376; Bacon 
V. Ventress, 32 Miss. 158; Berteaux v. 
Dillon, 20 Mo. A'pp. 603 ; Selby xk 
McCallough, 26 Mo. App. 66; Wear 
V. Lee, 26 Mo. App. 99; Cave v. Hall, 
5 Mo. 59; Steamboat Charlotte v. 
Lumm, 9 Mo. 64; Appleton v. Ken- 
non, 19 Mo. 637 ; Howard v. Jones, 33 
Mo. 583; Block V. Dorman, 51 Mo. 
31; Wadlington v. Covert, 51 Miss. 
631; Smith V. Smith, 27 N. H. 244; 
Coburn v. Odell, 30 N. H. 540; Bar- 
net V. Smith, 30 N. H. 257; s. c, 64 
Am. Dec. 290 ; Gilman v. Stevens, 63 
N. H. 342 ; Coxe v. Hankinson, i N. J. 
L. 85 ; Ayres v. Van Lieu, 5 N. J. L. 
765; Park z). Miller, 27 N. J. L. 338; 
Fry V. Patterson, 49 N. J. L. 612 ; Mid- 
dlesex V. Thomas, 20 N. J. Eq. 39; 
Swain v. Frazier, 35 N. J. Eq. 326; 
Johnson v. Weed, 9 Johns. (N. Y.) 
310; s. c, 6 Am. Dec. 279; Booth v. 
Smith, 3 Wend. (N. Y.) 66; Porter t;. 
Talcott, I Cow. (N. Y.) 359; Ray- 
mond V. Merchant, 3 Cow. (N. Y.) 
147; Smith V. Applegate, i Daly (N. 
Y.)-9i; Van Steenburg v. Hoffman, 
15 Barb. (N. Y.) 28; Crane v. Mc- 
Donald, 45 Barb. (N. Y.) 354; Vail v. 
Foster, 4 (N. Y.)3i2; Noel v. Mur- 
ray, 13 N. Y. 167; (cheque) Cromwell 
V. Lovett, I Hall (N. Y.) 56; People 
V. Baker. 20 Wend. (N. Y.) 602 ; Tam- 
ner v. Bank of Fox Lake, 23 ?Iow. Fr. 
(N. Y.) 399; Burkhalter- w. Second 
Nat. Bank, 42 N. Y. 538; s. c, 40 
How. Pr. (N. Y.) 324; Smitherman v. 
V. Kidd, I Ired. Eq. (N. Car.) 86; 
Merrick •;;. Boury, 4 Ohio St. 60 ; Mc- 
Ginn V. Holmes, 2 Watts. (Pa.) i2t; 
Mclntyre v. Kennedy, 29 Pa. St. 448; 
Kilpatrick v. Home Bldg. & Loan 
Assoc, 119 Pa. St. 30; Wilbur v. 
Jernegan, 11 R. I. 113; Dogan v. Ash- 
bey, I Rich. (S. Car.) 36; in which the 
earlier South Carolina cases are cited ; 
Watson V. Owens, i Rich. (S. Car.) 
Ill ; Barrelli v. Brown, i McCord (S. 
Car.) 449; s. c, 10 Am. Dec. 683 ; Cos- 
telo V. Cave, 2 Hill (S. Car.) 52S; s. c, 
27 Am. Dec. 404; Hill v. Riley, 21 S. 
Car. 602 ; Bermingham. v. Forsythe, 
26 S. Car. 358; Kennall tk Muncey, 
Peck (Tenn.) 273 ; McGuire v. Bid- 
well, 64 Tex. 43; Torrey v. Baxter, 13 
Vt. 452 ; McGuire v. Gadsby, 3 Call. 
(Va.) 234; Moses v. Trice, 21. Gratt. 



168 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



(Va.) 556; s. c, 5 Am. Rep. 609; 
Blair f. Wilson, 28 Gratt. (Va.) 165; 
Hornbrooks v. Lucas, 24 W. Va. 493 
(where the West Virginia decisions 
are fully cited); s. c, 49 Am. Rep. 
277; Lindsey v. McClelland, 18 Wis. 
481; s. c, 86 Am. Dec. 786; Matteson 
V. Ellsworth, 33 Wis. 488. Cojnpare 
Woodville v. Reed, 26 Md. 179; Corn- 
wall V. Gould, 4 Pick. (Mass.) 444; 
Huse V. Alexander, 2 Met. (Mass.) 
157; Spooner v. Rowland, 4 Allen 
(Mass.) 485; Van Ostrandt v. Reed, i 
Wend. (N. Y.) 424. 

Some courts hold that the mere 
taking of a note does not even raise 
a presumption of payment. Marshall 
V. Marshall, 42 Ala. 149; Doebling -u. 
Loos, 45 Mo. 150; Graham v. Sykes, 
15 La. Ann. 49; Devlin t). Chamber- 
lin, 6 Minn. 468; Randlet v. Herren, 
20 N. H. 102 ; AVhitney v. Goin, 20 N. 
H. 354- 

While others hold that it is not 
necessary to prove an express agree- 
ment. White i>. Jones, 38 111. 159; 
Hotchin v. Secor, 8 Mich. 494. 

But in Pennsylvania, it is held that 
the taking of a cheque of a third pai-ty 
raises the presumption of a condi- 
tional payment only. Mclhtyre v. 
Kennedy, 29 Pa. St. 44.8. Compare 
Plankinhorn v. Cave, 2 Yeates (Pa.) 

370- 

The fact that the note given is se- 
cured by mortgage does not affect the 
question. Blunt v. Walker, 11 Wis. 
334 ; s. c, 78 Am. Dec. 709. 

The taking of a new note with per- 
sonal security does not of itself oper- 
ate as a satisfaction of a mortgage. 
McDonald v. Hulse, 16 Mo. 503. 

A debtor gave his creditor the 
check of a third party for the amount 
of the debt, which was payable to 
bearer, and not indorsed. The credit- 
or kept it 26 days before presenting 
it, and when presented the bank had 
failed, and payment was refused. The 
drawer had no funds in the bank at 
the time he drew the cheque, but the 
president testified that it would have 
been paid if it had been presented be- 
fore suspension. There was no agree- 
ment that the cheque should be re- 
ceived as payment. Upon ,its dis- 
honor, the cheque was returned to the 
debtor and by him to the drawer, who 
promised to pay the amount to the 
debtor. Held, not to be a payment. 
Mordis v. Kennedy, 23 Kan. 408; s. c, 
33 Am. Rep. 169. 

It is held by the English courts 



that the acceptance by the credit- 
or of a cheque in his favor drawn 
by the debtor operates as a payment 
unless the cheque is dishonored. 
Pearce i<. Davis, i M. & Rob. 365 ; 
Bridges v. Garrett, 5 L. R., C. P. 451 ; 
39 L. J., C. P. 251 ; reversing, s. c, 4 
L. R., C. P. 580 ; Boswell v. Smith, 6 
Car. & P. 60. 

But to operate as payment the 
cheque must be absolute, and contain 
no condition. If it states in the body 
thereof that it is given for a balance 
of account, it is not payment. Hough 
V. May, 4 Ad. & El. 954 ; 6 Nev. & M. 

535- 

The question whether the note was 
received as absolute payment is one 
for the jury. Goldshede v. Cottrell, 2 
Mees. & W. 20 ; Lyman v. Bank of 
U. S., 12 How. (U. S.) 225; Myatts v. 
Bell, 41 Ala. 222 ; Melledge v. Boston 
Iron Co., 5 Cush. (Mass.) 158, 170 ; s. c, 
51 Am. Dec. 59; Casey v. Weaver, 141 
Mass. 280; Corner v. Pratt, 138 Mass. 
446; Johnson v. Weed, 9 Johns. (N. 
Y.) 310; s. c, 6 Am. Dec. 279; Co- 
burn V. Odell, 30 N. H. 540,, 557; 
Johnson v. Cleaves, 15 N. H. 332; 
Crabtree v. Rowand, 33 111. 421 ; 
White V. Jones, 38 111. 159; Bonnell v. 
Chamberlin, 26 Conn. 487 ; Susque- 
hanna Fertilizer Co. v. White, 66 Md. 
444; s. c, 59 Am. Rep. 186; Salomon 
V. Pioneer Co-operative Co., 20 Fla. 
374 ; s. c, 58 Am. Rep. 667 ; Bullen v. 
McGilcuddy, 2 Dana (Ky.)9i ; Gardner 
V. Gorham, i Dougl. (Mich.) 507 ; Keerl 
V. Bridgers, 10 Smed. & M. (Miss.) 
612; Seltzer v. Coleman, 32 Pa. St. 
493 ; Horner v. Hower, 49 Pa. St. 475 ; 
Brown v. Scott, 51 Pa. St. 357 ; Union 
Bank v. Smizer, i Sneed (Tenn.) 
501. 

As to what is evidence of the agree- 
ment. Van Eps v. Dillage, 6 Barb. 
(N. Y.) 244; Roberts v. Fisher, 53 
Barb. (N. Y.) 69; s. c, 43 N. Y. 159; 
s. c, 3 Am. Rep. 680. 

The surrender of the old note will 
not raise a presumption that the new 
note was taken as absolute payment ; 
especially if the creditor would there- 
by lose some security which he held 
for the debt. Hessw. Dille, 23 W. Va. 
90; Olcott V. Rathbone, 5 Wend. (N. 
Y.) 490 ; Winsted Bank v. Webb, 39 
N. Y. 325; s. c, 100 Am. Dec. 435; 
Welch V. Allington, 23 Cal, 322; 
Moses V. Trice, 21 Graft. (Va.) 556; 
s. c, 8 Am. Rep. 609; Wade v. 
Thrasher, 10 Smed. & M. (Miss.) 358. 
Compare 2 Parsons on Notes and 



169 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



Bills (2nd ed.) 203; Dennis v. Wil- 
liams, 40 Ala. 633; Anderson v. Hen- 
shaw, 2 Day (Conn.) 272; Wood- 
bridge V. Skinner, 15 Conn. 306; Liv- 
ingston V. Radcliff, 6 Barb. (N. Y.) 
201 ; Waydell v. Luer, 3 Den. (N. Y.) 
410; Arnold v. Camp, 12 Johns. (N. 
Y.) 409; s. c, 7 Am. Dec. 328; Neff 
V. Clute, 12 Barb. (N. Y.) 466. 

Where the new note is that of a 
third person not previously bound for 
the debt the taking thereof and the 
surrendering of the old note will,/>-i'?«a 
facie, discharge the old note and release 
the maker from personal liability 
thereon. But where the debt is a lien 
on land of which the maker of the 
new note has become the purchaser 
and assumed the debts as a part of the 
consideration therefor, the taking of 
the new note and surrender of the 
old will not extinguish the lien nor be 
regarded as a payment of the debt, 
will release the maker from his per- 
sonal liability on the old note. Hess 
t'. Dille, 23 W. Va. 90. 

Where the accommodation indorser 
of a note gave a new note to the 
holder for the amount of the original 
note, but left the latter in the hands 
of the holder as security, this did not 
constitute a payment of the original 
note. East River Bank v. Butter- 
worth, 45 Barb. (N. Y.) 476. 

Receipt of a note for a part of the 
debt and cash for the balance is j>rima 
facie payment of the debt. Phelan v. 
Crosby, 2 Gill. (Md.) 462. 

Where a debtor offered to his cred- 
itor to give to him in payment of his 
account, either the note of a third 
person at once or the cash at an e^rly 
day, and the creditor said he would 
take the note, which was thereupon 
delivered to him, and he credited it to 
the debtor, this discharged the debt. 
St. John V. Purdy, i Sandf. (N. Y.) 9. 

If it affirmatively appears that the 
note was neither given nor received in 
payment, the fact that the creditor 
credited the note to the debtor in his 
books will not alter the rights of the 
parties. Follett v. Steele, 16 Vt. 30. 

M. & Co. were the legal depositaries 
of the moneys belonging to Westches- 
ter county applicable to the payments 
of its county bonds, and funds suffi- 
cient to pay the interest coupons on 
said bonds had been deposited with 
them by the county treasurer. The 
Port Chester Savings bank held cer- 
tain coupons which it presented to M. 
& Co. The latter asked how the bank 



desired payment, and upon its request- 
ing a draft for the amount, M. & Co. 
delivered to it their sight draft on a 
New York bank, took up the coupons, 
immediately charged them to the ac- 
count of the county treasurer as paid, 
and afterwards delivered them up to 
him. At the time of the transaction 
M. & Co. were insolvent, but had on 
hand money sufficient to pay the cou- 
pons, and would have paid them but 
for the election of the bank to take a 
draft. The draft was never paid, and 
before its return to the bank M. & Co. 
failed. Held, that the authority 
of M. & Co. was limited to payment, 
and the bank having accepted the 
draft in lieu of money, did so upon its 
own responsibility, and as against the 
county, the transaction constituted a 
payment. (Indig v. National City 
Bank, 80 N. Y. 100, and' Turner v. 
Bank of Fox Lake, 3 Keyes (N. Y.) 
425, distinguished.) People v. Crom- 
well, 102 N. Y. 477 ; reversing s. c, 38 
Hun (N. Y.) 384. 

A receipt stating that the note was 
"payment in full to date," is not con- 
clusive. Howard v. Jones, 33 Mo. 583; 
Johnson v. Weed, 9 Johns. (N. Y.) 
310; s. c, 6 Am. Dec. 279; Elwood v. 
beifendorf, 5 Barb. (N. Y.) 398; Mul- 
don V. Whitlock, ' Cow. (N. Y.) 290; 
s. c, 13 Am. Dec. 533 ; Glenn v. Smith, 
2 Gill. & J. (Md.) 493; s. c, 20 Am. 
Dec. 452; Berry v. Griffin, 10 Md. 27; 
s. c, 69 Am. Dec. 123; Mosely v. 
Floyd, 31 Ga. 564; Swain v. Frazier, 
35 N. J. Eq. 326; Butts V. Dean, 2 Met. 
(Mass.) 76; s. c, 35 Am. Dec. 389; 
Feamster^ v. Withrow, 12 W. Va. 611. 
Compare Bonnell v. Chamberlain, 26 
Conn. 487 ; Dogan v. Ashby, 1 Rich. 
(S. Car.) 36; Day ti. Thompson, 65 
Ala. 269; Wheeler v. Schroeder, 4 R. 
I. 383; In re Hurst, i Flip. (U.S.) 462, 
, Where a note of a third party is 
given to a creditor, and it is speci- 
ally stated in the receipt that the 
amount when collected is to be cred- 
ited on a certain note held by the 
creditor, this does not constitute an 
absolute payment. Holmes v. Lykins, 
50 Mo. 399. 

Plaintiff received in payment of a 
debt due from defendant an order on 
the latter's agent. Upon presentation 
of the order the agent gave his cheque, 
which plaintiff accepted and executed 
a receipt in full. Held, that the cheque 
having been dishonored, defend- 
ant was still liable. Ocean Co. v. 
Ophelia, 11 La. Ann. 28. 



170 



Ucdiam of Payment. 



PA YMENT. 



Payment by Note, etc. 



{V) Third Party. — The rule is the same whether the debtor 
gives his own note or that of a third party.^ If the note of a 



But it has been held that such a re- 
ceipt is /?-/?«« /rtf!> evidence that the 
note was taken in payment. Palmer 
V. Priest, i Sprague (U. S.) 512; 
Davenport v. Schram, 9 Wis. 119; 
Stephens v. Thompson, 28 Vt. 77. 

Where a collecting agent, upon pre- 
senting a draft, received from the 
drawee his cheque on a local bank for 
the amount and surrendered the draft, 
which was thereupon by the payee 
stamped "paid," this is not such a 
paym,ent as to discharge the drawer if 
payment of the cheque is refused on 
due presentment. Turner v. Bank of 
Fox Lake, 4 Abb. App. Dec. (N. Y.) 
434. 

The surrendering of the note and 
tearing off the maker's name upon re- 
ceiving a cheque for the amount is not 
conclusive that the cheque was taken 
in payment. ,Heartt v. Rhodes, 66 111. 
351. 

Where one holding an account for 
wages against a steamboat took the 
note of the owner, indorsed by a third 
party as security, and bearing a higher 
rate of interest than the account bore, 
these facts, with other circumstances 
tending to show a purpose to take the. 
note in extinguishment of the debt, 
were held to destroy his lien on the 
boat. Risher v. The Frolic, i Wood 
(U. S.) 92. 

The fact that the note of a third 
party' was taken by the creditor and 
entered upon his books as a payment 
of the debt, is not conclusive that it 
was taken as absolute payment. Brig- 
ham V. Lally, 130. Mas. 485. 

Tlie burden of proof is on the party 
asserting the payment. 2 Pars, on 
Contr. 756; Susquehanna Fertilizer 
Co. V. White, 66 Md. 444; s. c, 59 
Am. Rep. 186; Geib t;. Reynolds, 35 
Minn. 331 ; Randlet v. Herren, 20 N. 
H. 102; Whitney v. Goin, 20 N. H. 
354; Hutchinson v. Swartsweller, 31 
N. J. Eq. 205; Tyner v. Stoops, 11 
Ind. 22; s. c, 71 Am. Dec. 341 ; Sneed 
V. Wiester, 2 A. K. Marsh. (Ky.) 277; 
Nightingale v. Chafee, 11 R. I. 609 ; 
s. c, 23 Am. Rep. 531 ; Feamster v. 
Withrow, 12 W. Va. 611. Compare 
Smith V. Bissell, 2 Greene (Iowa) 
379; Burrow v. Cook, 17 Iowa 436. 

In Ne-ui Tork the giving and receiv- 
ing of a promissory note is prima 
facie evidence of a settlement of' all 



demands between the parties. Lake 
V. Tysen, 6 N. Y. 461. 

1. Brown t;. Olmstead, 50 Cal. 162; 
Tobey v. Barber, 5 Johns. (N. Y.) 68; 
s. c, 4 Am. Dec. 326; Ely v. James, 
123 Mass. 36; Appleton v. Kennon, 19 
Mo. 637; Commiskey 7'. McPike, 20 Mo. 
App. 82 ; Fleig v. Sleet, 43 Ohio St. 53 ; 
s. c, 54 Am. Rep. 800 ; Spear v. Atkin- 
son, I Ired. (N. Car.) 262; Kilpatrick 
V. Home Bldg. & Loan Assoc, 119 Pa. 
St. 30. Compare Wright v. Temple, 
13 La. Ann. 413. 

The fact that the creditor did not re- 
quire his debtor to indorse the third 
party's note is prima facie evidence 
that he agreed to take it in payment. 
Breed x'. Cook, 15 Johns. (N. Y.) 241 ; 
Whitbeck v. Van Ness, 11 Johns. (N. 
Y.) 409; s. c, 6 Am. Dec. 383; where 
the English and American cases are 
reviewed; Union Bank v. Smiser, i 
Sneed (Tenn.) 501. 

The reverse of this is the settled doc- 
trine of the Pennsylvania courts. Hun- 
ter V. Moul, 98 Pa. St. 13 ; s. u., 42 Am. 
Rep. 610, where the Pennsylvania 
cases are cited. See Hunt v. Higman, 
70 Iowa 406; Susquehanna Fertilizer 
Co. V. White, 66 Md. 444; s. c, 59 Am. 
Rep. 186. 

A debtor offered to his creditor the 
note of a third party in payment only, 
and not as collateral. The creditor 
afterward obtained the note from the 
clerk of the debtor, who was unauthor- 
ized to deliver it. Held, that this con- 
stituted a payment, and the creditor 
will not be permitted to show that he 
did not intend to take it in payment, 
and did not give the debtor so to un- 
derstand. Burlington Gas light Co. v. 
Greene, 22 Iowa 508. 

Where the debtor assigns to the 
creditor the note of a third party, not 
due, on account of the debt, and the 
creditor take judgment by confession 
for his whole claim, it will be presumed 
that the agreement was that he should 
take the note as collateral security. 
Caldwell V. Fifield, 24 N. J. L. 150. 

Where the creditor directs the 
money to be remitted by post office 
money order or by check, and the 
debtor sent the check of his private 
bankers, as he had been accustomed to 
do, and received from his creditor a re- 
ceipt therefor, this was held to be a 
payment, though the bankers failed 



171 



Uedium of Payment. 



PA YMENT. 



Payment by Note, etc. 



before the check was presented. Mc- 
Leish V. Howard, 3 Up. Can. App. Rep. 
503. 

Where the creditor takes the indi- 
vidual note of one of two joint debtors, 
the other is not discharged, in the ab- 
sence of an express agreement to that 
effect. Bowers v. Still, 49 Pa. St. 65 ; 
Schollenberger v. Sheldonridge, 49 Pa. 
St. 83; Nightingale t'. Chafee, 11 R. I. 
609; s. c, 23 Am. Rep. 531. 

Taking a bill from a new firm does 
not per se discharge the old firm. 
Spenceley v. Greenwood, i F. & F. 
297. 

After the dissolution of a partner- 
ship the liquidatijig partner, without 
the knowledge of his co-partner, gave 
the firm note to a creditor of the part- 
nership, under , an agreement that it 
should extinguish the debt. Held, 
to constitute a payment, though both 
parties erroneously supposed that the 
other partner would be bound by the 
new note. Fowler v. Richardson, 3 
Sneed (Tenn.) 508. 

Where a partnership is dissolved 
and one of the partners takes the as- 
sets and assumes the obligations of 
the firm, a new note given by the 
remaining partner and his wife, for the 
purpose of extending an old one is not 
a payment of the firm debt. Van 
Staden v. Kline, 64 Iowa 180. See also 
Fry V. Patterson, 49 N. J. L. 612. 

Where the creditor of a firm accepts 
a new note executed by a part only of 
the members of the firm, and gives up 
the old note, while this fact does not 
raise a legal presumption that the 
debt is extinguished, and the remain- 
ing partners discharged from liability, 
yet it is entitled to great weight with 
the jury. Powell v. Charless, 34 Mo. 
485 ; Lindley on Partn. 454. 

In Vermont it is held to be a satis- 
faction of the debt. Stephens v. Thomp- 
son, 28 Vt. 77. But in England it has 
been held that an agreement to accept 
the liability of a portion of the part- 
ners in lieu of the whole is without 
consideration. Lodge v. Dicas, 3 B. & 
Aid. 611 ; David v. EUice, 5 B. & C. 196. 
But compare Thompson v. Percival, 2 
B. & Ad. 969; Hart v. Alexander, 2 
Mees. & W. 484. 

Where the surviving partners gave a 
promissory note for an account dvie by 
the firm, it does not constitute a pay- 
ment unless agreed to be received as 
such. Thompson v. Briggs, 28 N. H. 
40; Leach 1'. Church, 15 Ohio St. 169. 
And such a note will not discharge 



dormant partners not known to the 
creditor. Nichols v. Cheairs, 4 Sneed 
(Tenn.) 229. 

After the dissolution of a firm, one 
of the partners adjusted a note against 
the firm by giving some money and a 
note of a third party in part payment, 
and his own individual note for the 
the balance, upon receipt of which the 
creditor gave up the firm note. Held, 
that the firm note was extinguished, 
and no action could be maintained 
against the other partners therein. 
Waydell v. Luer, 3 Den. (N. Y.) 410. 
Compare Murray v. Gouverneur, 2 
Johns. Cas. (N. Y.) 438; s. c, i Am. 
Dec. 177. 

One of several makers of a note 
■ makes an arrangement with his co- 
makers by which provision is made for 
the payment of the note, and means are 
put into his hands for that purpose. 
Thereupon he takes up the note, pay- 
ing a part of the amount in cash and 
giving his own note for the balance, 
which is accepted by the holder and 
the original note given up. Held, that 
the original note was paid, and the ma- 
kers thereof discharged. Livingston 
V. Radcliff, 6 Barb. (N. Y.) 201. Com- 
pare Van Ep V. Dillaye, 6 Barb. (N. 
Y.) 244. 

Where a firm agreed to settle their 
account by note, and after the disso- 
lution a partnership note was given 
by the remaining partner, such note is 
not a payment, if the other partner re-' 
pudiates his obligation thereon. Good- 
speod V. South Bend Chilled Plow Co., 
45 Mich. 237. 

A bank, holder of a note, accepted 
in renewal thereof a new note signed 
by one new maker, and from which two 
of the former makers were dropped. 
Upon obtaining knowledge that one of 
the signatures to the new note was 
forged, the bank brought suit thereon, 
obtained judgment against one of the 
parties, issued execution and obtained 
a part of the money. Held, that these 
facts amounted to a payment and dis- 
charge of the first note. Bank of Com- 
monwealth V. Ray, 7 J.J. Marsh. (Ky.) 
272. 

Where before maturity of a note a 
part of the debt is paid and a new note 
is executed for the residue by the debt- 
or, with an express agreement that 
the old note should be surrendered, 
this operates as a payment of the old 
note. Whether such would be the 
effect if the transaction had taken place 
after the maturity of the first note, 



172 



Medium of Payment, 



PA YMENT. 



Payment by Note, etc. 



third party is expressly accepted as payment, it will discharge 
even a judgment debt.^ 

{c) Where there is evidence of a course of dealing 
between the parties in which cheques are uniformly accepted as 
cash, such evidence tends to rebut the presumption of a condi- 
tional payment, and raises a question of fact which should be 
submitted to the jury.^ 

note to a third person in settlement of 
the debt, this is frhna facie a payment 
of the original debt. Ralston v. Wood, 
15 111. 159; s. c., 58 Am. Dec. 604; 
Smalley v. Edey, 19 111. 207; Leake v. 
Brown, 43 111. 372. And where the 
debtor executes a written promise to • 
pay money to "A or B" in settlement 
,of a debt due from the promisor to A, 
this is a payment of the debt to A. 
Parker v. Osgood, 4 Gray (Mass.) 4^6. 
As to the effect of taking a note in- 
dorsed by a third party for a sum less 
than the debt, see infra, Partial Pav- 
ments. See also Winslow i'., Hardin, 
3 Dana (Ky.) 543. 

1. Witherby v. Mann, 11 Johns. (N. 
Y.) 518; New York State Bank u. 
Fletcher, 5 Wend. (N. Y.) 85 ; Dogan 
V. Ashbey, 1 Rich. ( S. Car.) 36; Day 
V. Stickney, 14 Allen (Mass.) 255. See 
also, Howe v. Buflfalo etc. R. Co., 38 
Barb. (N. Y.) 124. And comfare Mor- 
riss V. Harvey, 75 Va. 726. So if the 
note is the joint note of the debtor and 
a third party. Clark v. Pinney, 6 Cow. 
(N. Y.) 298. 

2. Briggs -w. Holmes, 118 Pa. St. 283; 
s. c, 4 Am. St. Rep. 597. To like effect, 
Benneson v. Thayer, 23 111. 374. 

Just before the maturity of a negoti- 
able note payable to A. H. D & Co. 
the makers applied to A. H. D. to per- 
mit them to draw a draft on p. & E., a 
firm in which A. H. D. was a partner, 
for the amount of the note, said draft to 
be payable in 90 days. D, for the 
firm of D. & E. agrees that this may be 
done for the accommodation of the 
makers of the note, the latter proposing 
to take up the note with the draft, and 
to pay the draft at its maturity. Ac- 
cordingly the draft was drawn payable 
in 90 days. The makers of the note 
and drawer of the draft had the draft 
> discounted by the bank which held the 
note for collection. Thereupon the 
bank surrendered the note to the ma- 
kers, and sent the amount thereof to 
A. H. D. & Co., the owners of the note. 
The makers of the note, immediately 
upon its surrender to them, sent it to 
D. & E., the firm upon which the 



seems to be doubted. Bantz i'. Bas- 
nett, \2 W. Va. 772. 

A creditor, by taking the note of an 
agent for the debt of the principal with 
knowledge of the latter's liability, dis- 
charges the principal. Ames Packing 
etc. Co. V. Tucker, 8 Mo. App. 95. 

Where the creditor of a corporation 
received from the president part cash 
and the balance in a note at 30 days, 
made by a firm of which the president 
was a member, and gave a receipt for 
the entire amount of the debt, this 
does not constitute a payment unless it 
was so expressly agreed at the time, 
although the president was at the time 
largely indebted to the company, and 
was subsequently credited by the com- 
pany on account as having paid the 
whole sum due to the creditor, the 
corporation not having been actually 
prejudiced by the transaction. Higby 
V. New York etc. R. Co., 3 Bosw. (N. 
Y.) 497; s. c, 7 Abb. Pr. (N. Y.) 259. 

Defendants were owners of a ship, 
of which A was ship's husband. Plain- 
tiff furnished supplies for the ship, 
charging them to the "ship and own- 
ers," there being no evidence that he 
knew who the owners were. A gave 
plaintiff his note for the amount, tak- 
ing from him a receipt in full, and de- 
fendants, not knowing how A had set- 
tled with plaintiff, settled with A 
as if he had paid plaintiff. A became 
insolvent and the note was not paid. 
It was held that the note did not con- 
stitute a payment, and defendants 
were liable for the supplies furnished. 
Johnson v. Cleaves, 15 N. H. 332. See 
also Muldon v. Whitlock, i Cow. (N. 
Y.) 290 ; s. c, 13 Am. Dec. 533. 

Where the note of a third party is 
taken before maturity in payment of a 
debt, the knowledge on the part of the 
creditor that the debtor was insolvent, 
and that the maker of the note was 
also her creditor, would constitute no 
defense to a suit on the note by the 
endorsee. Flower v. Noble, 38 La. 
Ann. 938. 

Where the debtor, at the request of 
the creditor, executes his negotiable 



173 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



{d) A CHEQUE given in payment and afterward paid becomes 
a valid payment as of the date of its receipt. ^ 

{e) Worthless Cheque or Note. — Payment by a worthless 
cheque or note is no payment.* 



draft -was drawn. The drawers of the 
draft failed to pay it at maturity, ac- 
cording to their promise, and it was 
paid by the drawees, D. & E. There- 
upon A. H. D. & Co., the payees of 
the note, paid to D. & E. the full amount 
of the draft, D. & E. re-transferring the 
note to A. H. D. & Co. Held, that 
this was not a payment of the note, 
but an extension of it for 90 days, and 
its payment might be enforced by A. 
H. D. & Co. Hopkins v. Detwiler, 25 
W. Va. 734. < 

1. Hunter o. Wetsell, 17 Hun (N. 
Y.) 13s; s. c, 84 N. Y. 549; s. c, 38 
Am. Rep. 544. See also, same case, 
57 N. Y. 375; 15 Am. Rep. 508. See 
also, on the question of the effect of a 
check as payment, Henry z>. Conley, 
48 Ark. 267 ; Comptoir D'Escompte de 
Paris V. Dresbach, 78 Cal. 15; Phil- 
lips V. Bullard, 58 Ga. 256 ; Mullins v. 
Brown, 32 Kan. 312; Borne v. First 
Nat. Bank, 123 Ind. 78; United States 
V. Thompson, 33 Md. 575 ; Good v. 
Singleton, 39 Minn. 340; Overman v. 
Hoboken City Bank, 30 N. J. L. 61 ; 
Johnson v. Bank of North America, 5 
Robt. (N. Y.) 554; Smith v. Miller, 
6 Robt. (N. Y.) 413; Kelty v. Second 
Nat. Bank, 52 Barb. (N. Y.) 328; 
Syracuse etc. R. Co. v. Collins, 3 
Lans. (N. Y.) 29; Smith v. Miller, 
43 N. Y. 171; Gloversville Bank v. 
Wells, 79 N. Y. 498; Bernheimer v. 
Herrman, 44 Hun (N. Y.) no; 
Flynn v. Woolsey (Supreme Ct.), 
10 N. Y. Supp. 875; Olcott V. Erwin 
(Supreme Ct.), 9 N. Y. Supp. 71 ; 
Tiddy v. Harris, loi N. Car. 589; 
Holmes v. Briggs, 131 Pa. St. 233, 25 
W. N. C.-(Pa.) 255; Washington Nat. 
Gas Co. t;. Johnson, 123 Pa. St. 576; 
Lingenfelter v. Williams (Pa. 1887), 
9 Atl. Rep. 653; Larue v. Cloud, 22 
Graft. (Va.) 513.; La Fayette Co. 
Monument Corp. v. Magoon, 73 Wis. 
627. 

2. Peoria etc. R. Co. v. Buckley, 
114 111. 337; Taylor v. Thompson, 61 
N. H. 156; Walker v. Tatum, Ga. 
Dec, pt. 2, 161 ; Wright v. Lawton, 
37 Conn. 167; Warriner v. People, 74 
111. 346; Kephart v. Butcher, 17 Iowa 
240; Vallier v. Ditson, 74 Me. 553; 
Dennie t;. Hart, 2 Pick. (Mass.) 204; 
Holmes v. First Nat. River Bank, 126 



174 



Mass. 353; People v. Howell, 4 Johns. 
(N. Y.) 296; Central City Bank v. 
Dana, 32 Barb. (N. Y.) 296; Syracuse 
etc. R. Co. V. Collins, 3 Lans. (N. Y.) 
29-; Patton V. Ash, 7 S. & ii. (Pa.) 116; 
Emerine v. O'Brien, 36 Ohio St. 491. 
See also McLaughlin v. Blount, 6i 
Ga. 168. 

Though the party paying was at 
the time ignorant that it was worth- 
less. Offut V. Bank of Kentucky, i 
Bush (Ky.) i65j Semmes v. Wilson, 

5 Cranch (C. C.) 285; Roberts v. 
Fisher, 43 N. Y. 1J9; s. c, 3 Am. Rep. 
680. Compare Murdock v. Coleman, 
I La. A""- 4I0' 

Though the note of a third party be 
expressly accepted as payment, yet if 
the maker thereof was insolvent at 
the time, and this fact was unknown 
to both parties, there is no payment, 
Roberts v. Fisher, 43 N. Y. 159; s. c, 
3 Am. Rep. 680. 

Where defendant, by a charter 
party agreed that the freight should 
be paid partly in cash and partly by 
approved bill, and the owner, without 
apprising the defendant, took a bill 
from his agent, the consignee, which 
was dishonored, this did not discharge 
the defendant. Taylor v. Briggs, M. 

6 M. 28. ^^ 
But where the note of a third per- 
son is given and accepted as payment, 
without fraud on the part of the 
debtor, it will extinguish the debt, 
though it turn out afterwards that at 
the time the maker of the note was an 
absconding insolyent, which fact was 
unknown to the parties. Heiden- 
heimer v. Lyon, 3 E. D. Smith (N. 
Y.) 54; Long t;. Spruill, 7 Jones (N. 
Car.) 96. Compare Galoupeau v, 
Ketchum, 3 E. D. Smith (N. Y.) 175. 

Otherwise if such acceptance is in- 
duced by fraudulent misrepresenta- 
tions on the part of the debtor. 
Hoopes V. Strasburger, 37 Ind. 390; 
o. c, II Am. Rep. 538. 

Where the signature of the maker 
was forged, the note cannot be re- 
garded as payment, though the payee 
supposed it to be genuine. Goodrich 
V. Tracy, 43 Vt. 314; s. c, 5 Am. Rep. 
281. 

Where the note of a third party 
given in payment was void because 



Uediam of Payment. 



PA YMENT. 



Payment by Note, etc. 



(/) Note Negotiated. — If the note is negotiable, and has 
been actually negotiated by the creditor, and has passed beyond 
his control so that it cannot be produced on the trial for the 



given for a gambling consideration, 
an action may be maintained for the 
value of the goods sold without having 
attempted to collect the note from 
the maker. Beard v. Brandon, 2 Nott. 
& M. (S. Car.) 102. So where the note 
is void for usury. Meshke v. Van 
Doren, i6 Wis. 319; Lee v. Peckham, 
17 Wis. 383. 

If the note of a third person given 
in payment of a pre-existing debt is 
non-enforcible by reason of an agree- 
ment between the maker thereof and 
the debtor, the creditor may recover 
on the original consideration. Torrey 
V. Baxter, 13 Vt. 452. 

And if the debtor appropriates the 
fund out of which a cheque given 
by himself or his agent is to be paid, 
and thereby causes it to be dishonored, 
he cannot claim that the receipt of 
such cheque by the creditor consti- 
tuted a payment. Atkinson v. Minot, 
75 Me. 189. See also, Thayer v. Peck, 
93 III- 357 ? Loughnan v. Barry, 5 Ir. 
Rep., C. L. 538. 

Where the debtor offers in payment 
of his debt cash or a cheque on his 
banker, and the creditor chooses the 
latter, the debt is not discharged if the 
cheque is dishonored on due presenta- 
tion, though the banker fails with a 
large account on his books to the 
credit of the debtor. Everett v. Col- 
lins, 2 Camp. 515. 

The holder of a cheque, payment of 
which had been refused for want of 
funds, passed it to his vendor, stating, 
in answer to inquiries, that there was 
nothing wrong about it. Held, that 
the suppression of the facts consti- 
tuted a fraud on the vendor, and his 
receipt of the cheque did not extin- 
guish the debt. Martin v. Pennock, 
3 Pa. St. 376. 

Where the creditor receives notes 
of a third party guaranteed by the 
debtor, he cannot maintain an action 
on the original indebtedness because 
of false representations of the debtor 
as to the solvency of 'the maker, if he 
has taken no proper Steps to rescind 
the contract, and has not tendered 
back the notes. Williams v. Ketchum, 
21 Wis. 432. 

A sold to B a patent right, and re- 
ceived therefor B's note, void, because 



the fact that it was tor a patent right 
was not written on its face, as the law 
requires. Held, that the note should 
not be deemed payment; that the 
original debt remained in force as 
though no note had been given. Gra- 
ham's Estate, 14 Phila. (Pa.) 280. 

If the drawer of a cheque has 
neither funds nor credit in the bank 
in which the cheque is drawn, its 
acceptance by the creditor does not 
constitute a payment, no matter 
whether the act of the debtor was 
fraudulent or bona fide. And there is 
no difference in effect whether the 
cheque is drawn by the debtor or a 
third person. Fleig 7'. Sleet, 43 Ohio 
St. 53; s. c, 54 Am. Rep. 800. See 
also, Tobey v. Barber, 5 Johns. (N. 
Y.) 68; s. c, 4 Am. Dec. 326; Com- 
miskey v. McPike, 20 Mo. App. 82. 

A collecting agent, upon presenting 
a draft, receives a cheque on a local 
bank and surrenders the draft to the 
drawee, who thereupon marks it 
"paid." Upon presenting the cheque 
payment is refused. Held, not to con- 
stitute a payment. Turner v. Bank 
of Fox Lake, 4 Abb. App. Dec. (N. 
Y.) 434; affirming 23 How. Pr. (N. 
Y.) 399. To the same effect, Jorbitt 
V. Goundry, 29 Barb. (N. Y.) 509. 

In an Illinois case the following 
facts were relied on to prove payment : 
The debtor called on the cashier of a 
bank and made an agreement with 
him to answer his cheque for $8,000. 
The understanding was that the 
money was not to be drawn from the 
bank on the cheque, but when the 
debtor's cheque on the bank should be 
presented, the cashier was to tell the 
holder that it was good. After this 
arrangement, the debtor drew a cheque 
for .$8,000 in favor of the agent of 
the creditor on the bank in question, 
and when the agent presented it at 
the bank he was informed that it was 
good, though, as a matter of fact, the 
debtor had no funds in said bank. 
The agent did not ask for payment of 
the cheque, but immediately made a 
new loan to the debtor of the exact 
amount of the debt at a lower rate of 
interest. Held, that the original debt 
was not paid. Woodburn v. Wood- 
burn, 115 111. 427. 
175 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



purpose of being cancelled, the creditor cannot sue on the original 
cause of action.^ 

{g) There can be no recovery on the original cause of 
ACTION without producing the note at the trial for cancellation.* 



1. Hughes V. Wheeler, 8 Cow. (N. 
Y.) 77; Elwood v. Diefendorf, 5 Barb. 
(N. Y.) 398, 408 (in which the pre- 
ceding decisions are cited); Wallace 
V. Agry, 4 Mason (U.S.) 336, 343 ; Mc- 
Crary V. Carrington, 35 Ala. 698 ; 
Alcock V. Hopkins, 6 Cush. (Mass.) 
484; Leake v. Brown, 43 111. .372; Sal- 
omon V. Pioneer Co-operative Co., 21 
Fla. 374; s. c, 58 Am. Rep. 667 ; 
Sutliff V. Atwood, 15 Ohio St. 
186. 

But if the note is produced and 
offered to be delivered up, the creditor 
may sue on the original debt. Zer- 
rano v. Wilson, 8 Cush. (Mass.) 426; 
Derickson v. Whitney, 6 Gray (Mass.) 
248; Whitton V. Mayo, 114 Mass. 179; 
Ward V. Bourne, 56 Me. 161 ; Torrey 
V. Baxter, 13 Vt. 452 ; Winsted Bank 
V. Webb, 39 N. Y. 325; s. c, 100. Am. 
Dec. 435. Compare Lanata ii.Bayhi, 
31 La. Ann. 229. 

Where the creditor takes a note ih 
■payment, which he indorses and gets 
discounted at a bank, the original debt 
is not extinguished if the creditor is 
obliged to take up the note at its ma- 
turity. Kean v. Dufresne, 3 S. & R. 
(Pa.) 233. 

Where a negotiable promissory 
note taken for a pre-existing debt, but 
without any agreement that it shall 
constitute a payment, is assigned, in- 
dorsed in blank, together with other 
property of the party so taking it, to 
an assignee for the benefit of his cred- 
itor, this will not prevent an action in 
the name of the assignor on the orig- 
inal debt. Lyman v. Bank of U. S., 12 
How. (U. S.) 225. 

Whether a provisional payment has 
been converted into an absolute pay- 
ment by the subsequent. conduct of 
the holder must be determined from 
all the circumstances of the case. 
Hamilton v. Cunningham, 2 Brock. 
(U. S.) 350. 

If the creditor receives a cheque, 
and, instead of having it cashed, pro- 
cures it to be certified, this will dis- 
charge the debtor. First Nat. Bank 
V. Leach, 52 N. Y. 350; s. c, 11 Am. 
Rep. 708. 

2. Miller v. Lumsden, 16 111. 161; 
Reyburn v. Day, 27 111. 46 ; Schepflin 



V. Dessar, 20 Mo. App. 569; Bertiaux 
V. Dillon, 20 Mo. App. 603; Brewster 
V. Bours, 8 Cal. 501 ; -Street v. Hall, 
29 Vt. 165. Compare Lee v. Fontaine, 
10 Ala. 755; s. c, 44 Am. Dec. 505; 
Trotter v. Crockett, 2 Port. (Ala.) 401; 
Holmes v. DeCamp, i Johns. (N. Y.) 
34; s. c, 3 Am. Dec. 293; Sweet- 1'. 
Titus, 67 Barb. (N. Y.) 327; Dixon v. 
Dixon, 31 Vt. 450; s. c, 76 Am. Dec. 
129. See Meyer v. Huneke, 65 Barb. 
(N. Y.) 304. 

What will excuse the production of 
the note, see Miller v. Lumsden. 16 
111. 161 ; Morrison v. Welty, 18 Md. 
169; Matthews v. Dare, 20 Md. 248; 
Hays V. McClurg, 4 Watts (Pa.) 452; 
Widders v. Gorton, 26 L. J., C. P. 165 ; 
I C. B., N. S. 576. 

The creditor has his choice to sue 
on the note or the original cause of 
action. Holmes v. De Camp, i Johns. 
(N. Y.) 34; s. c, 3 Am. Dec. 293; An- 
gel V. Felton, 8 Johns. (N. Y.) 149; 
Smithr). Lockwood, 10 Johns. (N. Y.) 
366; Burdick t'. Green, 15 Johns. (N. 
Y.) 247. 

Where the creditor receives a note 
and indorses and delivers it to n third 
party, and the indorsee recovers judg- 
ment against the maker, which judg- 
ment is unsatisfied, he cannot recover 
on the original consideration, though 
he produces the note to be canceled, 
unless he shows that the judgment is 
satisfied,- or that the title to the note is 
again in him. Teaz v. Chrystie, 2 E. 
D. Smith (N. Y.) 621. 

But it is held in Massachusetts that, 
where a party had, received two prom- 
issory notes, under an agreement to 
release a demand when they should be 
paid at maturity, caused one to be dis- 
counted and took it up after protest 
for non-payment, and jirosecuted the 
other to judgment, but received noth- 
ing on ' either, he was not debarred 
from suing on the original cause of 
action upon tendering in court the dis- 
counted note and an assignment of the 
judgment. Lord v. Bigelow, 124 Mass. 
185. 

Where a note is taken in payment 
and is lost, but not destroyed, it will 
discharge the debt, even though the 
creditor oflfers to indemnify the debtor 



176 



medium of Payment, 



FA YMENT. 



Payment by Note, etc. 



(It) Right of Action Suspended. — The taking of a note for 
a debt, whether such note is negotiable or not, operates to sus- 
pend the right of the creditor to sue on the original cause of action 
until after the maturity of the note.^ 



against any claim on the note. Wood- 
ford V. Whiteley, M. & M. 517. 

1. Story on Sales (4th ed.), §§ 219, 
237. And see cases cited under last 
head. Higgins v. Wortell, 18 Cal. 330; 
Smith V. Owens, 21 Cal. 11 ; Brown v. 
Cronise, 21 Cal. 386; Hornbrooks v. 
Lucas, 24 W. Va. 493 ; s. c, 49 Am. Rep. 
277; Happy ■». Mosher, 48 N. Y. 313; 
Stuart V. Cawse, 5 C. B., N. S. 737 ; 5 
Jur., N. S. 650; 28 L. J., C. P. 193. 

The right to sue for rent is sus- 
pended by the taking of a note there- 
for; such a debt does not differ in this 
respect from a simple contract debt. 
Hornbrooks v. Lucas, 24 W. Va. 493 ; 
s. c, 49 Am. Rep. 277. See Lewis v. 
Lozee, 3 Wend. (N. Y.) 79. 

And it may constitute a payment if 
the creditor has so acted in reference 
to it that its value to the debtor has 
been destroyed. McCrary v. Carring- 
ton, 35 Ala. 698; Thomason v. Cooper, 
57 Ala. 560 ; Brown v. Cronise, 21 Cal. 
386; Cochrtin v. Wheeler, 7 N. H. 202; 
s. c, 26 Am. Dec. 732 ; Kenniston v. 
Avery, 16 N. H. 117; Whitcher v. 
Dexter, 61 N. H. 91 ; Shipman v. Cook, 
16 N. J. Eq. 251 ; Middlesex v. Thomas, 
20 N. J. Eq. 39 ; Copper v. Powell, 
Anth. (N. Y.) 68 ; Mehlberg v. Tisher, 
24 Wis. 607. 

If the creditor neglects to enforce 
the note until rights have sprung up 
in favor of third parties, the note will 
be held to constitute a payment. Lear 
V. Friedlander, 45 Miss. 559. 

If the agreement is that the note is 
to constitute a payment if it proves 
collectible, the creditor is bound to 
use ordinary means and diligence to 
collect. Re Onimette, i Sawy (U. 

S.) 47- 

A, the maker of a note, sent to the 
holder, as payment, cash for a part and 
the note of a third party, indorsed by 
A, for the balance. This note the 
holder delivered to his attorney, who 
lost it before its maturity, but did not 
inform A of the loss until its maturity, 
four months afterward. The attorney 
then wrote A that the creditor refused 
to receive the note of the third party, 
and demanded payment of the orig- 
inal note. Held, that the original note 
was extinguished. Swett v. South- 
worth, 125 Mass. 417. 



A creditor took from his debtor an 
order on a third person for a sum 
which the debtor stated would be due 
in a few days. Whereupon the cred- 
itor took from the person on whom the 
order was drawn his notes for the 
amount of the order, payable in six and 
nine months. Held, that he thereby 
made the debt his own, and that he 
could not, in case the notes were not 
paid, look to his original debtor. 
Southwick V. Sax, 9 Wend. (N. Y.) 
122. 

In another case in the same State it 
was held that a draft drawn on a third 
person by the debtor in favor of the 
creditor, under an agreement that it 
shall be in full satisfaction of the debt 
when paid, is a prima facie payment 
of the original debt. And to rebut the 
presumption in an action in the orig- 
nal debt, the creditor must show dili- 
gence to obtain payment and notice of 
non-payment, or he must show an ex- 
cuse for non-presentment and produce 
the bill at the trial to be canceled. 
Dayton v. Trull, 23 Wend. (N. Y.) 345. 

So, too, if the creditor has received 
a cheque from the debtor, he cannot 
return it and sue on the original cause 
of action, without having first detnand- 
ed payment of the cheque unless he can 
show that no injury has resulted to the 
debtor from his failure to present the 
cheque. Bradford v. Fox, 39 Barb. 
(N. Y.) 203. See same case, 38 N. Y. 
289; Syracuse etc. Co. v. Collins, i 
Abb. N. Cas. (N. Y.) 47; Stevens t;. 
Park, 73 111. 387. 

Where a second note is taken in pay- 
ment of a prior note, the holder must 
use due diligence to collect it before 
he can bring his action on the first 
note; and such diligence must be 
shown on the trial. Gordon v. Price, 
10 Ired. (N. Car.) 385. 

Compare Martin v. Pennock, 2 Pa. 
St. 376. 

Where a note of a third person, void 
because given for a gambling consid- 
eration, IS given in payment of goods 
sold, the creditor may sue for the value 
of the goods without waiting to pro- 
ceed against the maker. Beard v. 
Brandon, 2 Nott & M. (S. Car.) I02.- 
, A creditor who takes from his debt- 
or's agent on account of the debt the 



18 C. of L.— 12 



177 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



{i) The Indiana courts have adopted the following rules : 

1. That taking a promissory note not governed by the law 
merchant, by the creditor from his debtor for an existing debt, is 
not a payment of the debt, unless it is is agreed to be by the parties, 
and the onus of proving such agreement would lie upon the debtor. 

2. That taking a bill of exchange or a promissory note governed 
by the law merchant, by the creditor from his debtor for an ex- 
isting debt, is a payment of the debt, unless it is otherwise agreed 
by the parties, and the onus of proving such agreement would lie 
upon the creditor. 

And these rules are held to apply whether the paper is that of 
the debtor or of some third party. ^ 



cheque of the agent, is bound to pre- 
sent it for payment within a reasona- 
ble time, and if he fails to do so, and 
by reason of the delay the position of 
the debtor is altered for the worse, the 
debt is extinguished, though the debt- 
or was not a party to the cheque. 
Hopkins •?'. Ware, 38 L. J. Exch. 147; 
4 L. R. Exch. 268 ; 20 L. T., N. S. 147. 

Where a precedent liability has been 
suspended or released by the accept- 
ance of a note indorsed by one liable 
on the former demand, plaintiff can- 
not recover on the primary liability 
without showing the same state of 
facts as would enable him to recover 
on the indorsement. Bradford v. 
Haggerty, 11 Ala. 698. 

See also Phoenix Ins. Co. v. Allen, 

11 Mich. 501; s. c, 83 Am. Dec. 756'; 
Stam V. Kerr, 31 Miss. 199. 

At the request of the holder of a 
promissory note, a new note was made 
and indorsed by the same parties as 
on the old note, which new note was 
sent to the holder with a request that 
he retain the old note. No notice was 
taken of this request, nor were the in- 
dorsers notified of the non-payment of 
the new note. Held, that the indcrs- 
ers were discharged. Sage v. Walker, 

12 Mich 425. 

The reception of a draft as condi- 
tional payment suspends the plaintiff's 
original right of action till the draft is 
properly presented for payment and 
payment is refused. Phoenix Ins. Co. 
V. Allen, II Mich. 501 ; s. c, 83 Am. 
Dec. 756. 

Plaintiff, being a creditor of defend- 
ant, received from him an order on M 
for the amount, which plaintiff testi- 
fied was not to be considered payment 
unless paid, Avhile defendant testified 
that he did not remember any such 
understanding. Plaintiff sent the or- 



der to M by a boy with instructions to 
bring it back if it was not paid. M put 
it in his pocket, and claimed that he 
would apply it on an indebtedness of 
plaintiff to him. Held, that plaintiff 
was bound to account for the order, 
and that there was evidence to go to 
the jury that he accepted it in payment. 
Knott V. Whitfield, 99 N. Car. 76. 

The maker of a note gave to the 
payee an order on a third party which, 
when collected, was to be applied on 
the note. The payee surrendered the 
order to the person on whom it was 
drawn, receiving from him his own 
note on time for the amount. Held, 
that the first note was paid pro tanto. 
Tuttle «. Chapman, 10 Iowa, 437. 

Plaintiff, the holder of a note of 
which A was the maker, drew an order 
on A for a certain sum in favor of B, 
which order was accepted by A and 
the amount thereof indorsed upon the 
note. A failed to pay the order, but 
as it did not appear that it had ever 
been returned to plaintiff, it was held 
to be a payment frb tanto of the note. 
Shaw V. Gookin, 7 N. H. 16. 

Where the creditor gives a receipt 
for an order containing the words "to 
credit it when paid," the original debt 
will remain due in full until the order 
is paid. Smith v. Wood, i N. J. Eq. 74. 

If a note is accepted as absolute pay- 
ment of a bond secured by mortgage, 
and the mortgagor guaranties its pay- 
ment, the non-payment of the note will 
not restore the obligation, but the 
mortgagor will be responsible on his 
personal guaranty. Shipman v. Cook, 
x6 N. J. Eq, 251. 

See Torrey v. Baxter, 13 Vt. 452. 

1. Smith t). Bettger, 68 Ind. 254; s. 
c, 34 Am. Rep. 256. 

The reason given by the court for 
the above rules is that " when the debt- 



178 



medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



{k) In Massachusetts and Maine the doctrine was early es- 
tablished that the taking of a negotiable security is prima facie 
evidence of an absolute payment, where there is no express 
agreement to the contrary ; and this rule has been followed in 
some of the other States.^ 



or gives a promissory note not gov- 
erned by the lavir-merchant for an exist- 
ing debt, he cannot be subjected to the 
payment of the debt twice, for the 
payment of either the original debt or 
the note is a discharge of both; but 
when the debtor gives a bill of ex- 
change or a promissory note governed 
by the law-merchant, and it should 
pass into the hands of an innocent 
holder, he might be compelled to pay 
it, either as maker or indorser, notwith- 
standing he had previously paid the 
creditor the original debt." 

This is followed in Nixon v. Beard, 

111 Ind. 137, and Johnson v. Moore, 

112 Ind. 91. 

See also Thornton v. Williams, 14 
Ind. 518; Gaskin v. Wells, 15 Ind. 253; 
Alfordt;. Baker, 53 Ind. 279. 

And compare Olvey v. Jackson, 106 
Ind. 286; Reider v. Nay, 95 Ind. 
164. 

1. Bark Chusan, 2 Story (U. S.) 455; 
Kimball v. The Anna Kimball, 2 Cliff. 
(U. S.) 4; Goodenow v. Tyler, 7 Mass. 
36; s. c, 5 Am. Dec. 22; Johnson v. 
Johnson, 11 Mass. 359; Reed v. Upton, 
10 Pick. (Mass.) 522; s. c, 20 Am. Dec. 
545; Butts V. Dean, 2 Met. (Mass.) 76; 
s. c., 35 Am. Dec. 389; Ilsley v. Jewett, 
2 Met. (Mass.) 168; Tracy v. Lincoln, 
145 Mass. 357; Varner v. Nobleborough, 
2 Me. 121; s. c, n Am. Dec. 48; Gil- 
more V. Bussey, 12 Me. 418; Milliken 
V. Whitehouse, 49 Me. 527; Paine v. 
Dwinel, 53 Me. 52; s. c, 87 Am. Dec. 
533; Bunker v. Barron, 79 Me. 62. In 
the last two cases the prior decisions 
are cited and reviewed. See also Snow 
V. Foster, 79 Me. 558; Bigeloww. Capen, 
145 Mass. 270; Granite Nat. Bank v. 
Fitch, 145 Mass. 567. And compare 
Canfield v. Ives, 18 Pick. (Mass.) 253. 

The same rule obtains in Vermont. 
Hutchins v. Olcutt, 4 Vt. 549; s. c, 24 
Am. Dec. 634; Torrey v. Baxter, 13 Vt. 
452; Dickinson v. King, 28 Vt. 378; 
CoUamer v. Langdon, 29 Vt. 32 ; Arnold 
V. Sprague, 34 Vt. 402. And in Louisi- 
ana. Hunt V. Boyd, 2 La. 109. And 
in Alabama. Maynard v. Johnson, 4 
Ala. 116. And Arkansas. Camp v. 
GuUett, 7 Ark. 524; Costar v. Davies, 8 
Ark. 213; s. c., 46 Am. Dec. 311. And so 



it would seem in Illinois. Smalley v. 
Edey, 19 111. 207. 

In Rhode Island it is held that the 
mere taking of a draft or negotiable 
promissory note from the debtor, on ac- 
count of a pre-existing debt, does not 
extinguish the debt. But if the paper 
is actually negotiated, this fact raises a 
prima facie presumption that the par- 
ties intended it to be a discharge of the 
debt. This presumption may, however, 
be rebutted, and the fact that a lien 
would not be given up, or a security for 
the debt lost or abandoned, raises a coun- 
ter presumption whichrebutsthatarising 
from the negotiation of the note. Sweet 
■V. James, 2 R.I. 270. See also Wheeler 
V. Schroeder, 4 R. I. 383; Nightingale 
V. Chafee, 11 R.I. 609; s. c, ,23Am. 
Rep. 531; Dickenson v. King, 28 Vt. 

378- 

In South Carolina it is held that the 
legal presumption from the giving of a 
note is that all precedent indebtedness 
of the maker is covered by it. Morse 
V. Ellerbe, 4 Rich. (S. Car.) 600. 

As to rule in Pennsylvania, see 
Plankenhorn v. Cave, 2 Yeates (Pa.) 
370- 

The giving of a new note for a former 
one extinguishes the former. Cornwall 
V. Gould, 4 Pick. (Mass.) 444; Huse v. 
Alexander, 2 Met. (Mass.) 157. 

And if given for only a part of the 
debt, it extinguishes the debt pro tanto. 
Ilsley V. Jewett, 2 Met. (Mass.) 68; 
Scott V. Ray, 18 Pick. (Mass.) 360. 

The rule applies where a note is given 
for an amount due on execution. Day 
V. Stickney, 14 Allen (Mass.) 255. 

If the payee of a note at maturity 
takes another note signed by persons, 
some of whom are not parties to the 
first note, and retains the first note, no 
presumption arises that the second note 
was taken in payment of the first. 
Woods -v. Woods, 127 Mass. 141. 

A promissory note of the debtor, or 
that of a third person with the debtor's 
guaranty, given in settlement of a pre- 
existing account, is, in Vermont, a pay- 
ment of such account, unless the note is 
unproductive without the fault of -the 
creditor. If the note is non-enforcible 
\>y reason of a contract between the 



179 



medium of Payment. 



PA YMENT. 



Payment liy Note, etc. 



But the cases are numerous in which this presumption is held 
to be overcome by the facts and circumstances surrounding the 
transaction of giving the note. And, as a general rule, and in the 
absence of express agreement, such presumption will be overcome, 
if it would deprive the creditor of the benefit of a security.^ 



maker thereof and the debtor, the cred- 
itor may resort to his original demand. 
Torrey v. Baxter, 13 Vt. 452. 

1. Bunker v. Barron, 79 Me. 62, cit- 
ing decisions in Maine, Massachusetts 
and Vermont; Parham Sewing Ma- 
chine Co. V. Brock, 113 Mass. 194; Cot- 
ton V. Atlas Nat. Bank, 145 Mass. 43. 
See also Hutchinson v. Woodwell, 107 
Pa. St. 509. 

The presumption may be rebutted by 
proof of concealment, misapprehension 
or unfairness in giving the new security. 
Palmer v. Elliott, i Cliff. (U. S.) 63; 
Wait V. Brewster, 31 Vt. 516. 

Where it appears that the note was 
not the obligation of all the parties who 
were liable for the original debt, or if 
the note was given by a third party, the 
presumption may be rebutted by slight 
circumstances. Hudson v. Bradley, 2 
Cliff. (U. S.) 130. 

Where A sells goods to B, who is the 
agent of an undisclosed principal, C, 
and takes the note of B in ignorance 
that he is the agent of C, the presump- 
tion that the note was taken in payment 
is rebutted, and A may resort to C ■ for 
payment. Lovell v. Williams, 125 Mass. 

439- 

If it appears that the creditor had 
other and better security than the note, 
it will not be presumed that he intended 
to abandon such security' and rely upon 
the note. Mehan v. Thompson, 71 Me. 
492. 

If not intended as payment it will not 
operate as such. Page v. Hubbard, i 
Sprague (U. S.) 335; Vancleef v. Ther- 
asson, 3 Pick. (Mass.) 12; Watkins v. 
Hill, 8 Pick. (Mass.) 522; Jones v. Ken- 
nedy, n Pick. (Mass.) 125; Thacher v. 
Dinsmore, 5 Mass. 299; s. c, 4 Am. 
Dec. 61; Greenwood v. Curtis, 6 Mass. 
358; s. c, 4 Am. Dec. 145; Johnson v. 
Johnson, 11 Mass. 359; Emerson v. 
Providence Hat Mfg. Co., 12 Mass. 237; 
s. c, 7 Am. Dec. 66; Melledge v. Bos- 
ton Iron Co., 5 Cush. (Mass.) 158; s. >,., 
51 Am. Dec. 59; Appleton v. Parker, 
15 Gray (Mass.) 173. 

If the note is that of a third person, 
it is taken at the risk of the creditor, 
unfess there is fraud or an express 
agreement to the contray. Wiseman v. 
Lyman, 7 Mass. 286 



A creditor receiving from his debtor 
a draft for collection with directions to 
pass the proceeds, when paid, to the 
debtor's credit, negotiated it and passed 
the proceeds to the credit of the debtor. 
He was afterwards obliged to pay the 
same as indorsee. Held, that the debt 
had not been satisiied/^-o tanto. Good- 
now V. Howe, 20 Me. 164; s. c, 37 Am. 
Dec. 46. 

So if a note signed by the treasurer 
of a town is taken in payment under a 
misapprehension caused by the treas- 
urer himself, it will not be considered a 
payment. Atkinson v. Minot, 75 Me. 
189. 

The presumption will not be enforced 
against a seaman who receives from the 
owners of a vessel their negotiable note 
for his wages. Neither the claim for 
wages nor the lien against the vessel will 
be extinguished thereby, unless it is dis- 
tinctly stated to the seaman at the time 
he receives the note that such will be its 
effect, and the note is accompanied by 
some additional security or advantage 
to him as a consideration for Iiis relin- 
quishment of the lien. The Betsy & 
Rhoda, Dav. (U. S.) 112. 

But in order to rebut the presump- 
tion, it is not sufficient to show that the 
note was taken by the creditor under a 
misapprehension of the rights of the 
parties, or ignorance of what effect tak- 
ing the note would have on his rights. 
To have such effect the misapprehen- 
sion must arise out of a want of full 
knowledge of the facts. Fowler v. 
Ludwig, 34 Me. 45,1;. See Hedged'. Mc- 
Quaid, II Cush. (Mass.) 352. 

Where a trader gave to a merchant 
bond with surety to secure a present in- 
debtedness and future indebtedness "for 
goods and cash," this is sufficient to au- 
thorize the finding of a jury that notes 
given from time to time by the trader to 
the merchant were not intended as pay- 
ment for goods and cash. Shumway v. 
Reed, 34 Me. 560; s. <-., 56 Am. Dec. 
679. 

Even an order for the payment of the 
money, when given and received in paj'- 
ment, extinguishes the original claim. 
Govern i>. Littlefield, 13 Allen (Mass.) 
127. 

Where a debtor executes a conditional 



180 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



acceptance of an order drawn on him 
by the creditor in favor of a third party, 
such order does not operate as a pay- 
ment, especially if it be afterward sur- 
rendered to the debtor by such third 
party unpaid. Bassett v. Sanborn, 9 
Cush. (Mass.) 58. 

If the new note is avoided on the 
ground of usury, it does not constitute 
a payment. Thurston v. Percival, i 
Pick. (Mass.) 415; Stebbins v. Smith, 4 
Pick. (Mass.) 97, 100; Ramsdell v. Soule, 
12 Pick. (Mass.) 126; Johnson t;. John- 
son, 11 Mass. 359, 363. 

Where a negotiable note is given for 
an instalment due on a mortgage note, 
it discharges the mortgage fro tanto. 
Fowler v. Bush, 21 Pick. (Mass.) 230. 

Yet the question is one for the jury. 
Brown v. Scott, 51 Pa. St, 357. 

Where there are several promisors, 
all equally liable for goods purchased, a 
negotiable promissory note given by 
one discharges the debt as to all. 
French v. Price, 24 Pick. (Mass.) 13. 
See also Washburn v. Pond, 2 Allen 
(Mass.) 474. 

The presumption does not apply to a 
non-negotiable note. Bartlettt'. Mayo, 
33 Me. 51S; Jose v. Baker, 37 Me. 465. 

Where the new note is given in an- 
other State, in which a promissory note 
is not presumed to be accepted in paj'- 
ment, it is a question for the jury 
whether crediting the new note on the 
books of the holder is evidence of its 
acceptance in payment. Connecticut 
Trust Co. V. Melendy, 119 Mass. 449. 

A having built certain houses under 
contract with B, for which there was a 
balance still due him, and for which he 
had a mechanic's lien on the houses and 
lot, was indebted to the firm of H & T 
on account. H & T requested payment 
of,the del?t, and A, replj'ing that he had 
no money, a member of the firm said to 
him: "You get C's note for thirty days 
and we will take that." A accordingly 
requested C to give a note payable to 
H & T at thirty days for $500. C said 
that he had no dealings witli H & T, 
but would make a negotiable note pay- 
able to the order of A, which was done. 
This note A indorsed and delivered to 
H & T. A never gave C credit for the 
amount of this note, and, in a written 
statement of credits subsequently ren- 
dered, did not include it, but gave C the 
following receipt: "Received of C five 
hundred dollars on house account." 
Before the note matured C failed and 
the same was not paid. Held, that the 
presumption that the note was taken in 



payment was rebutted, and that the note 
was not a payment. Quimby v. Dur- 
gin, 148 Mass. 104. 

In Illinois a distinction is made be- 
tween a debt growing out of an account 
and one arising from a loan of money, 
it being held that in the former case the 
giving of a promissory note is prima 
facie payment; but the giving of a note 
for money borrowed is in no sense a 
payment or evidence of payment. 
Hoodless V. Reid, 112 111. 105. 

The following cases in addition to 
those cited above, will be found to 
illustrate the doctrine of payment by 
note : 

Alabama. — Fickling v. Brewer, 38 
Ala. 685. 

Arkansas. — Malpas v. Lowestine, 
46 Ark. 552 ; Newman v. Henry, 29 
Ark. 496 ; Real Estate Bank v. Rawdon, 
5 Ark. 558 ; Akin 11. Peters, 45 Ark. 313 ; 
Pendergrass v. Hellman, 50 Ark. 261. 

Connecticut. — Bartsch v. Atwater, i 
Conn. 409; Stebbins v. Kellogg, 5 
Conn. 265. 

Georgia. — Groverstein v. Brewer, 
76 Ga. 763 ; Mosely v. Floyd, 31 Ga. 
564 ; Pritchard v. Smith, 77 Ga. 463. 

Illinois. — Cheltenham Stone & 
Gravel Co. v. Gates Iron Works, 23 
111. App. 635 ; Chisholm v. Williams, 
128 III. 115; Petefish i^. Watkins, 124 
111. 384; Pope V. Dodson, 58 111.' 361. 

Indiana. — Dick v. Flanagan (Ind.), 
23 N. E. Rep. 765; Nixon v. Beard, m 
Ind. 137; Godfrey v. Crisler, 121 Ind. 
203 ; Hill V. Sleeper, 58 Ind. 221 ; 
Weston V. Wiley, 78 Ind. 54. 

loiva. — Bank of Monroe v. G-ifford, 
79 Iowa 300; Upton v. Paxton, 72 
Iowa 295 ; Burlington Gas Light Co. 
V. Greene, 28 Iowa 289; Quigley v. 
Duflfey, 52 Iowa 610. 

Kansas. — Bradley v. Harwi, 43 Kan. 

314- 

Kentucky. — Jarmen v. Davis, 4 T. B. 
Mon. (Ky.) 115; Greenwade v. Green- 
wade, 3 Dana (Ky.) 495; Proctor v. 
Mather, 3 B. Mon. (Ky.) 353. 

Louisiana. — Whitla v. Taylor, 6 La. 
Ann. 480. 

Massachusetts. — Quimby v. Durgin, 
148 Mass. 104; United States v. Rous- 
maniere, 2 Mason (U. S.) 373; Leon- 
ard V. First Congregational Soc, 2 
Cush. (Mass.) 462 ; Amos v. Bennett, 
125 Mass. 120; Green v. Russell, 132 
Mass. 536. 

Maine. — Richmond v. Toothaker, 
69 Me. 451 ; Bangor v. Warren, 34 
Me. 324; Parkhurst v. Jackson, 36 Me. 
404; Paine v, Dwinel, 53 Me. 52 ; s. c, 



181 



Medium of Payment. 



PA YMENT. 



Payment by Note, etc. 



(/) Goods Sold at the Time. — Where the note of a third 
person is taken in payment for goods sold at the time, and not 
for a precedent debt, it is taken at the risk of the vendor.^ 



87 Am. Dec. 533 ; Greenleaf v. Hill, 31 
Me. 562 ; Sandy River Bank v. Miller, 
82 Me. 137; Titcomb v. McAllister, 81 
Me. 399; 17 Atl. Rep. 315. 

Michigan. — Tiffany v. Glasgow 
(Mich. 1890), 46 N. W. Rep. 231 ; Ma- 
son V. Warner, 43 Mich. 439; Robert- 
son V. First Nat. Bank, 41 Mich. 356. 

Mississiffi. — Guion v. Doherty, 43 
Miss. 538. 

Missouri. — O'Bryan xi. Jones, 38 
Mo. App. 90; Matson v. Walther,, 23 
Mo. App. 263 ; Wiles v. Robinson, 80 
Mo. 47. 

Maryland. — Hall v. Richardson, 16 
Md. 396; s. c, 77 Am. Dec. 303. 

Nebraska. — Pasewalk v. Bollman 
(Neb. 1890), 45 N. W. Rep. 780. 

New Tork. — Gumming v. Hackley, 
8 Johns. (N. Y.) 202; Graham v. Ne- 
gus (Supreme Ct.), 8 N. Y. Supp. 
679; Highland Bank v. Dubois, 5 
Den. (N. Y.) 558; Geller v. Seixas, 4 
Abb. Pr. (N. Y.) 103; Glenn v. Bur- 
rows, 37 Hun (N. Y.) 602; Fuller z". 
Negus (Supreme Ct.), 8 N. Y. Supp. 
681 ; Downer v. Carpenter, i Hun (N. 
Y.) 591 ; Central City Bank ik Dana, 
32 Barb. (N. Y.) 296; Auburn City 
Nat. Bank v. Hunsiker, 72 N. Y. 252 ; 
Averill 7'. Loucks, 6 Barb. (N. Y.) 470; 
Parsons v. Gaylord, 3 Johns. (N. Y.) 
463; Lewis t'. Lozee, 3 Wend. (N. Y.) 
79; Fisher v. Marvin, 47 Barb. (N. 
Y.) i!;9; Dias v. Wanamaker, i Sandf. 
(N. Y.) 469. 

Ni'-Tv Jersey. — Corrigan t'. Trenton 
Falls Co., 7 N. J. Eq. 489 ; Fry v. Pat- 
terson, 49 N. J. L. 612 ; Sayre X'. Sayre, 
3 N. J. L. 587. 

New Hampshire. — Wright v. Buck, 
62 N. H. 656; Exeter Bank v. Gordon, 
8 N. H. 66. 

Ohio. — Bank of Cadiz v. Slemmons, 
34 Ohio St. 142 ; s. c, 32 Am. Rep. 
364; McKee v. Hamilton, 33 Ohio St. 
7 ; Shinkle v. First Nat. Bank, 22 
Ohio St. 516. 

Pennsylvania. — Kemmerer's Ap- 
peal, 102 Pa. St. 558; Cake v. First 
Nat. Bank, 86 Pa. St. 303 ; Van Haagen 
Soap Mfg. Co.'s Assigned Estate, 8 
Pa. Co. Ct. Rep. 84 ; Appeal of Kim- 
berly (Pa. 1886), 7 Atl. Rep. 75; Mc- 
Cord V. Durant, 134 Pa. St. 184. 

South Carolina. — Adger v. Pringle, 
II S. Car. 527; Ex f arte Williams, 17 
S. Car. 396 ; Quackenbush v. Miller, 4 



Strobh. (S. Car.) 235; Prescott v. 
Hubbell, I McCord (S. Car.) 94; Bar- 
relli V. Brown, i McCord (S. Car.) 449. 

Texas. — Bell f. Boyd, 76 Tex. 133. 

C/tah.— Heath v. White, 3 Utah 474. 

Vermont. — Hatch v. Barnum, 23 Vt. 
133 ; a. t., 56 Am. Dec. 59; Surdam f. 
Lyman, 36 Vt. 733 ; Curtis v. Ingham, 
2 Vt. 290; Ormsby v. Fifield, 38 Vt. 
143 ; Keyes v. Carpenter, 3 Vt. 209 ; 
Hadley r. Bordo (Vt. 1890), 19 Atl. 
Rep. 476 ; Ricker v. Adams, 59 Vt. 

154- 

West Virginia. — Hoge v. Vintroux, 
21 W. Va. I ; Dryden f . Stephens, 19 
W. Va. I. 

Wisconsin. — First Nat. Bank v. 
Case, 63 Wis. 504. 

United States. — Lyman v. United 
States Bank, 12 How. (U. S.) 225; 
Baker v. Draper, i Cliff. (U. S.) 420; 
Benedict v. Maynard, 4 McLean (U. 
S.) 569; Re Clap, 2 Low. (U. S.) 226, 
230; Re Hurst, i Flip. (U. S.) 462. 

And the following, payment by 
bill of exchange or draft : Loth v. 
Mothner (Ark. 1890), 13 S. W. Rep. 
594; Webster v. Howe Machine Co., 
54 Conn. 394; Weaver v. Nixon, 69 
Ga. 699; Scattergood v. Findlay, 20 
Ga. 425 ; Alexander v. Byers, 19 Ind. 
301; Hodgen v. Latham,. 33 111. 344; 
Belleville Sav. Bank v. Bornman, 124 
111. 200; 10 N. E. Rep. 552 ; Graham v. 
Sykes, 15 La. Ann. 49; Smith p. Atlas 
Cordage Co., 41 La. Ann. i ; Desca^ 
dillas V. Harris, 8 Me. 298 ; Varner v. 
Nobleborough, 2 Me. 121; 11 Am. 
Dec. 48 ; Wallace v. Agry, 4 Mason 
(U. S.) 343; Wadlington v. Covert, 51 
Miss. 631 ; Hammond v. Christie, 5 
Robt. (N. Y.) 160; Hall v. Stevens; 
116 N. Y. 201; 22 N. E. Rep. 374; 
Wise V. Chase, 3 Robt. (N. Y.) 35; 
Bright --. Judson, 47 Barb. (N. Y. 29; 
Ligon 7'. Dunn, 6 Ired. (N. Car.) 133; 
Riddlesburg Coal & Iron Co's Ap- 
peal, 114 Pa. St. 58; Connelly 7). Mc- 
Kean, 64 Pa. St. 113; Alder t;. Buck- 
ley, I Swan (Tenn.) 69; Rugeley v. 
Smalley, 12 Tex. 238; Churchill v. 
Bowman, 39 Vt. 518; Thornton v. 
Spotswood, I Wash._(Va.) 142; Hop- 
kins V. Detwiler, 25 W. Va. 734; Fair- 
fax V. Fairfax, 2 Cranch C. C. 25 ; 
Olyphant v. St. Louis, Ore etc. Co., 
28 Fed. Rep. 729. 

1. 2 Benjamin on Sales (4th Am. ed.) 



182 



Medium of Payment, 



PA YMENT. 



Payment by Note, etc. 



938; Whitbeck v. Van Ness, 11 Johns. 
(N. Y.) 409; i. c, 6 Am. Dec. 383. 
Explaining Johnson v. Weed, 9 Johns. 
310; 6 Am. Dec. 279. And reviewing 
the English and the prior New York 
decisions. Bulen v. Burroughs, 53 
Mich. 464. And see Muldon v. Whit- 
lock, I Cow. (N. Y.) 290; s. c, 13 Am. 
Dec. 533; Rew v. Barker, 3 Cow. (N. 
Y.) 272; Noel V. Murray, i Duer (N. 
Y.) 385: Ferdon v. Jones, 2 E. D. 
Smith (N. Y.) 106; Bach v. Levy, loi 
N. Y. 511 ; Davis v. Maltz, 57 Mich. 
496 ; Paine v. Smith, 33 Minn. 495 ; 
Ellis V. Wild, 6 Mass. 321 ; Salem 
Bank v. Gloucester Bank, 17 Mass. i ; 
s. c, 9 Am. Dec. iii ; Perkins v. Cady, 
III Mass. 318. Compare Owenson v. 
Morse, 7 T. R. 64. 

Unless the vendor is induced by 
fraud to take the notes. Wilson v. 
Force, 6 Johns. (N. Y.) no; s. c, 5 
Am. Dec. 195; Whitbeck v. Van Ness, 
II Johns. (N. Y.) 409; s. c, 6 Am. 
Dec. 383; Pierce v. Drake, 15 Johns. 
(N. Y.) 475 ; Allen v. Bantel, 2 Th. 
& C. (N. Y.) 342; Susquehanna Fer- 
tilizer Co. V. White, 66 Md. 444; s. c, 
59 Am. Rep. 186; Bridge -z'. Batchel- 
der, 9 Allen (Mass.) 394; Farr v. Ste- 
vens, 26 Vt. 299; Wemet v. Missis- 
quoi Lime Co., 46 Vt. 458. Also 
cases above cited. And see Slocomb 
V. Lurty, i Hempst. (U. S.) 431 ; 
Johnson v. Mechanics' etc. Bank, 25 
Ga. 643. 

But if the seller has been induced 
by fraud to take the note, he cannot 
recover for the goods sold without 
offering to return the note, unless he 
shows that it is absolutely worth- 
less. Estabrook v. Swett, 116 Mass. 

303- 

A gave to B in payment of corn 
purchased from the latter the cheque 
of C on a bank in which C had no 
funds. The bank suspended before B 
presented the cheque, which he there- 
upon returned to A, and it was by A 
returned to C, who agreed to pay A 
the amount thereof. A continued to 
have dealings with C until the latter 
failed, but never obtained payment of 
the cheque. It was held that A was 
still liable to B for the corn. Mordis 
V. Kennedy, 23 Kan. 408; s. c, 36 Am. 
Rep. 169. 

Where the purchaser agreed to pay 
for merchandise in government vouch- 
ers, which he delivered to the seller 
and took a receipt therefor expressed 
to be "in payment of said bill," this 
constituted - a payment, though the 



government afterwards refused to re- 
deem the vouchers in full. Wise v. 
Chase, 44 N. Y. 337. 

Where notes of a third party are 
given in payment for property sold, 
with an agreement that it they are not 
collected the purchaser shall make up 
the deficiency', this constitutes a con- 
ditional payment only. Dodge v. 
Stanton, 12 Mich. 408. 

One of the owners of a vessel, act- 
ing as ship's husband, gave his note 
for supplies furnished the vessel, and 
took a receipt in full. The not« not 
being paid, keld, that the debt was 
not extinguished and all the owners 
were liable. Schemerhorn v. Loines, 

7 Johns. (N. Y.) 311; Johnson v. 
Cleaves, 15 N. H. 332. See also King 
V. Lowry, 20 Barb. (N. Y.) 532. Com- 
pare Ames Packing etc. Co. v. Tucker, 

8 Mo. App. 95. 

Where a bill of exchange is given 
in payment of goods sold, the liability 
of the purchaser upon the original 
consideration is extinguished, and he 
is liable only as indorser. The in- 
solvency of the acceptor at the matu- 
rity of the bill, together with the fact 
that the purchaser had previously 
given the seller notice that he should 
resist payment of the bill on the 
ground that the goods were defective 
does not vary the rule. Francia v. 
Del Banco, 2 Duer (N. Y.) 133; Soffe 
V. Gallagher, 3 E. D. Smith (N. Y.) 
507. See also Sellars v. Johnson, 65 
N. Car. 104. 

In general when the obligation of a 
third party is received from the debtor 
by the creditor at the time when the 
debt is contracted, the presumption is 
that it was taken in payment. Youngs 
V. Stahelin, 34 N. Y. 258; Torry v. 
Hadley, 27 Barb. (N. Y.) 192. See 
Darnall z'. Morehouse, 36 How. Pr. 
CN. Y.) 511; Cole V. Sackett, i Hill 
(N. Y.) 516. 

As to the difference in effect be- 
tween note of the purchaser and that 
of a third person, see Gunn v. 
Bolckow, 44 L. J. Ch. 732; 10 L. R., 
Ch. 491 ; 32 L. T., N. S. 781. 

Where an act of incorporation re- 
quired payments to be made in money, 
the giving of a promissory note does 
not constitute such payment. Leighty 
V, Susquehanna etc. Turnpike Co., 14 
S. &R. (Pa.)434. 

The purchaser of a horse agreed to 
give the vendor in payment a good 
and collectible note of a third person 
responsible for £he price. He after- 



183 



Hedium of Payment. 



PA YMENT. 



Payment by Note, etc. 



{m) Where a surety pays the debt of his principal by giving 
his note therefor, this is such a payment as entitles him to con- 
tribution from his co-sureties.^ 

[n) Executor, etc. — A promissory note given by an execu- 
tor or administrator for the debt of the decedent does not 
constitute a payment, though it may suspend the right of action 
on the original debt until the maturity of the note.* 

{p) Certificate of Deposit. — In the absence of a special 
agreement to that effect, the transfer and receipt of a bank cer- 
tificate of deposit does not operate as absolute payment.^ 

(/) An Order on a third party for the payment of money, 
which has neither been paid nor accepted by the party on whom 
it is drawn, does not constitute a payment of a precedent debt.* 



■wards sent the vendor the note of one 
P, and the vendor laid it away, re- 
marking that he did not know P. At 
the maturity of the note P was in- 
solvent, and the purchaser was held 
liable for the price of the horse. Torry 
V. Hadley, 27 Barb. (N. Y.) 192. 

A note given in another State for 
goods sold there must be governed by 
the law of that State as to whether 
or not it constitutes a payment. 
Pecker v. Kennison, 46 N. H. 488. 

1. Stubbins v. Mitchell, 82 Ky. 536. 

2. Schouler's Exec. & Adm., § 441 ; 
Taylor v. Perry, 48 Ala. 240. 

S.Huse V. McDaniel, 33 Iowa 406. 

A debtor offered to the creditor a 
certificate of deposit issued to and in- 
dorsed by the foreman. The creditor 
declined to receive it, through want of 
confidence in the bank, until the 
debtor declared himself to be good for 
it, and promised to pay it in case the 
bank did not. The next day the bank 
failed, and the creditor deposited the 
certificate in court in a suit on the 
original debt. Held, that the certifi- 
cate was not taken in payment, and 
the above facts constituted no defense. 
Leake v. Brown, 43 111. 372. 

An agreement for a loan having 
been made, the lender offered, and the 
borrower received, instead of cash, 
but without any express agreement as 
to whose should be the risk, a certifi- 
cate of deposit, post-dated. Before 
maturity of the certificate, the bank 
by which it was issued failed. Held, 
.that the fair inference, from all the at- 
tendant circumstances, was that the 
borrower received the certificate, not 
as payment, but as a collateral means 
of obtaining the cash in the mode 
most convenient to the lender; and 



that the lender should bear the loss. 
This was so held, notwithstanding the 
fact that the lender, after transferring 
the certificate, settled his account with 
the bank, giving the bank credit for 
the amount of the certificate; and the 
further fact that complainant made an 
attempt to get the certificate cashed 
before its maturity. Burrows v. Bangs, 
34 Mich. 304. 

Where the creditor acce.pts certifi- 
cates of indebtedness in place of cash, 
in payment of a claim against the 
government, he cannot afterwards re- 
cover the difference in value between 
the certificates and money. Gibbons 
V. United States, 2 Ct. of CI. 421. 

4. Haines v. Pearce, 41 Md. 221 ; 
McNeil V. McCamly, 6 Tex. 163; 
Rogers v. Shelburne, 42 Vt. 550. 
Compare Farwell v. Salpaugh, 32 
Iowa 582. 

An order for money constitutes a 
payment if accepted as such in the ab- 
sence of fraud. ' Harrison v. Hicks, i 
Port. (Ala.) 423 ; s. c, 27 Am. Dec. 638. 

Where the delDtor gave the creditor 
an order on a third party which was to 
be considered a payment in case the 
order was accepted, and the party on 
whom it was drawn refused acceptance, 
the debt was not extinguished, even 
though the debtor was not notified of 
the non-acceptance of the order. 
Geiser v. Kershner, 4 Gill & T. (Md.) 
305; s. c, 23 Am., Dec. 566. See also 
Briggs V. Parsons, 39 Mich. 400. 

In Vermont the delivery by the 
debtor and acceptance by the creditor 
of a town order operates as a satisfac- 
tion of the debt, and the remedy is 
only on the order. Dalrymple v. 
Whitingham, 26 Vt. 345. 

So in Maine unless the order was 



184 



Uedium of Payment. 



PA YMENT. 



Giving of Security. 



7. The giving of a higher security constitutes a payment of a 
simple contract debt, unless it is otherwise agreed at the time.^ 



utterly worthless through want of 
authority. Husseyti. Sibley, 66 Me. 192; 
s. c, 22 Am. Rep. 557. 

If a city warrant is to operate as an ex- 
tinguishment of a judgment debt only 
when paid, the creditor must return 
it, or offer to return it, before he can 
proceed by execution. New Orleans 
V. Smith, 24 La. Ann. 405. 

But the party receiving the order 
may by his actions preclude himself 
from recovering on the original debt. 
Sherwin v. Colburn, 25 Vt. 613. 

Where a party rendering services 
agreed to accept in part payment an 
order on a third party, who accepted 
the order and was in good credit at 
the time, but subsequently failed, this 
constituted a payment for the services. 
Besley v. Dumas, 6 111. App. 291. 

An agreement to take it in payment 
may be inferred from the circum- 
stances. Haines v. Pearce, 41 Md. 
221; Carpenter w. Murpheree,, 49 Ala. 
84 ; Knox v. Gerhauser, 3 Mont. 267. 

As to agent's authority to receive 
note or cheque in payment, see 
infra, " To Whom Payment is going 
to be Made" 

Where the owner of a building at 
the request of the original contractor, 
and before any one has attempted to 
create a mechanic's lien, assumes a 
legal obligation to pay sub-contractors 
or material-men for labor or material 
used in the erection of the building, as 
by accepting orders drawn on him by 
the contractor in favor of such parties, 
this constitutes a valid payment upon 
the contract to the extent of the obli- 
gation assumed. Garrison v. Mooney, 
9 Daly (N. Y.) 218; Gibson w. Lenane, 
94 N. Y. 183. 

An order payable at sight drawn by 
the duly authorized agent of an insur- 
ance company upon its secretary for a 
loss under a policy issued by the com- 
pany, and received by the assured in 
full satisfaction thereof, will operate 
as a payment even before its presenta- 
tion to the secretary. Spodner v. 
Rowland, 4 Allen (Mass.) 485. 

See also as to the effect of a n order 
as payment, Alabama etc. R. Co. v. 
Sanford, 36 Ala. 703 ; McWilliams v. 
Phillips, 71 Ala. 80; Burgen f . Dvs^inal, 
n Ark. 314; Preston v. Jones, 3 111. 
App. 632 ; Porter v. Walker, i Iowa 
456; Palmeteer v, Gatewood, 4 J. J. 



Marsh. CKy.) 503; Chapman v. Coffin, 
14 Gray (Mass.) 454; Waite v. Vose, 
62 Me. 184; Olson f. Cremer, 43 Minn. 
232 ; Rice v. Dudley, 34 Mo. App. 
383; Lupton V. Freeman (Mich. 1890), 
46 N. W. Rep. 1042; Knox v. Ger- 
hauser, 3 Mont. 267 ; Hoar v. Clute, 15 
Johns. (N. Y.) 224; Missen v. Tucker, 
I Jones (N. Car.) 176; Commercial 
Bank v. Bobo, 9 Rich. (S. Car.) 31 ; 
Graves v. Allen, 66 Tex. 589; Good- 
rich V. Barney, 2 Vt. 422 ; Finney v. 
Edwards, 75 Va. 44; Schierl v. Bau- 
mel, 75 Wis. 69. 

1. 2 Greenl. Evid. ( — ed.), §519; Lee 
V. Green, 83 Ala. 491 ; Gardner v. 
Hust, 2 Rich. (S. Car.) 608; Chalmers 
V. Turnipseed, 21 S. Car. 126; Howell 
V. Webb, 2 Ark. 360; Rowe v. Collier, 
25 Tex. Supp. 252. Comfare Stamper 
V. Johnson, 3 Tex. i ; Cumming v. 
Hackley, 8 Johns. (N. Y.) 202 ; Bailey 
V. Wright, 3 McCord. (S. Car.) 484. 

Where the bond of a third person is 
received in part payment of a preced- 
ing debt, it constitutes payment though 
the obligor was insolvent at the time. 
Muir V. Geiger, i Cranch (C. C.) 323. 

It is held in Dakota that the giving 
of a security, either by mortgage or 
trust deed, is not payment of an ante- 
cedent debt evidenced by note. Star 
Wagon Co. v. Matthiessen, 3 Dak. 
233. 

The same is held by the Michigan 
courts. Brown v. Dunckel, 46 Mich. 29. 

As to view of South Carolina 
courts on this point, see Chewning v. 
Proctor, 2 McCord Eq.(S. Car.) II. Of 
courts of New York, Coonley v. 
Coonley, Hill & D. Supp. (N. Y.) 
312. And of Massachusetts, Dodge v. 
Emerson, 131 Mass. 467. 

A note under seal given for an ac- 
count extinguishes the account. Mills 
V. Starr, 2 Baily (S. Car.) 359; Robert- 
son V. Branch, 3 Sneed (Tenn.) 506. 

The sealed note of two partners ex- 
tinguishes a note of the firm for which 
it is given. Chalmers v. Turnipseed, 
21 S. Car. 126. 

To same effect Averill v. Loucks, 6 
Barb. (N. Y.) 19. 

But the receipt of an obligation of 
equal dignity does not extinguish the 
debt. Bowers v. State, 7 Har. & J. (Md.) 
32; Clopper V. Union Bank, 7 Har. & 
J. (Md.) 92; s. c, 16 Am. Dec. 294; 
Hart t».Boller, 15 S. & R. (Pa.) 162 ; s. c. 



185 



Medium of Payment. 



PA YMENT. 



Payment in Specific Articles. 



8. Payment in specific articles is as good as though made in cash, 
if such was the agreement of the parties when the debt was con- 
tracted,^ and the creditor may receive property in payment of 
his debt, though such was not the original agreement.* 



16 Am. Dec. 536; Bailey u. Wright, 3 
McCord (S. Car.) 484. 

A security is not extinguished merely 
by the creditor's in acceptance of a new 
one from other parties, for the same 
debt. Potter v. McCoy, 26 Pa. St. 
458 ; Covington v. Clark, 5 J. ]. Marsh. 
(Ky.) 59. See also Hamilton v. Cal- 
lender, i Dall. (U. 8.) 420. 

Where insurance policies are lodged 
with the creditor as collateral security, 
they do not operate as a payment until 
the money is actually received upon 
them, though under a submission to 
arbitration an award has been made 
that a certain sum is due on them. 
Scott V. Lifford, 9 East 347 ; i Camp. 

346- 

Where a note is given for public se- 
curities, payments thereon made inpub- 
lic securities are to be applied accord- 
ing to their value at the time the 
payments are made. Thatcher v. 
Prentiss, 2 Root (Conn.) 20. 

1. Butman v. Howell, 144 Mass. 66; 
Tinsley v. Ryon, 9 Tex. 405. 

When a sale is for cash, and securi- 
ties which are void or prove to be 
void, are taken in payment, the creditor 
may sue and recover on the original 
cause of action. School Town of 
Monticello v. Grant, 104 Ind. 168. 

It was agreed between the vendor 
and vendee of land that the cotton 
grown thereon should be forwarded to 
the vendor to be by him sold and the 
proceeds applied to the payment of the 
purchase money. Held, that as fast as 
any moneys arising from the sale of the 
cotton came into the hands of the ven- 
dor, the indebtedness was fro tanto re- 
duced, and as to that part could onl3' be 
revived with the consent of the vendee. 
Williams v. Whiting, 92 N. Car. 683. 

Where the debt is to be paid in spe- 
cific articles, it may be discharged by 
the payment of monej'. Sessions v. 
Ainsworth, i Root (Conn.) 181; Jones 
V, Dimmock, 2 Mich. N. P. 87. 

And, ordinarily, the debtor has the 
election either to pay the price or de- 
liver the articles. Cleveland etc. R. 
Co. V. Kelley, 5 Ohio St. 180. 

But it seems the election must be ex- 
ercised by the debtor at or before ma- 
turity of the debt; after that, the credit- 



or's right to demand money is absolute. 
Church V. Feterow, 2 P. & W. (Pa.) 
301. 

Where notes were pa^'able in grain, 
to be delivered at the maker's mill at 
maturity at a fixed price, and the ma- 
ker set apart a sufficient quantity of 
grain to meet the notes, the property 
in the grain was charged and the notes 
were paid. Zinn v. Rowley, 4 Pa. St. 
169. 

2. Ralston v. Wood, 15 111. 1159; s. i,., 
58 Am. Dec. 604; Smith v. Hobleman, 
12 Neb. 502; Smith v. Whitfield, 67 
Tex. 124; Phillips v. Afalo, 4 Man. & 
G. 846; 12 L. J., C. P. 49; Breton v. 
Cope, Peake, 31. 

"Originally payment was the perform- 
ance of a promise to pay money at 
the time and in the manner required by 
the terms of the contract. But it has 
been extended to include the delivery 
of money in satisfaction of a debt after 
a default has been made in payment ac- 
cording to the terms of the contract. 
If wood is delivered and received as a 
payment of monej' due on a note, it is 
only by virtue of a subsequent and in- 
dependent agreement to that effect, and 
there is an accord and satisfaction. 
And the agreement by which the ac- 
ceptance of the wood operates as a sat- 
isfaction of the contract, and the deliv- 
ery and receipt of the wood under 
this agreement, are substantive facts 
which should be set forth in the an- 
swer." Ulsch V. Muller, 143 Mass. 

379- 

If a bank discounts a bUl of exchange 
for the drawer an acceptance of a con- 
veyance of property from the drawer in 
discharge of his liability while the pa- 
per is still the property of the bank, 
constitutes a payment of the bill. Wil- 
liams i\ Jones, 77 Ala. 294. 

If a judgment creditor agrees to ac- 
cept a specific article in satisfaction of 
the judgment, and the article is deliv- 
ered to him and accepted, the judgment 
is thereby extinguished. Brown v. 
Feeter, 7 Wend. (N. Y.) 301. See 
Fowler v. Moller, 10 Bosw. (N. Y.) 

374- 

The maker of a past due note deliv- 
ered to the holder thereof a quantity of 
corn to be shipped to Galveston. The 



186 



By Whom Payment Made. 



PA YMENT. 



In General. 



Where there is an agreement to pay for services rendered a 
certain sum " payable in trade," this means payable in such 
articles as the promisor deals in.^ 

IV. By Whom Payment May be Made — 1. In General. — The 
payor or obligor or debtor, or any one of several joint payors, 
obligors or debtors, or any one in his behalf and at his request 
or with his consent, may make payment. ** 

2. By a Third Party. — One person cannot, without authority, 
pay the debt of another and charge the amount against the party 
for whose benefit the payment was made.^ 



holder shipped a part of the corn but 
the rest rotted in the pens, though 
there were then frequent opportunities 
for shipping to Galveston. Held, that a 
finding of the jury that the corn was a 
payment on the note to the extent of its 
market value at the time would not be 
disturbed. Copes v. Perkins, 6 Tex. 
150. 

Where the debtor delivered to the 
creditor a mare to sell and apply the 
proceeds to the pa3'ment of the debt, 
and the creditor exchanged the mare 
for other property, this constituted a 
payment of the debt, notwithstanding a 
dispute as to the amount to be applied. 
Strong V. Kennedy, 40 Mich. 327. 

Where there was a written agree- 
ment to pay $572, when a certain note 
was paid, a delivery of personal prop- 
erty and acceptance thereof in satisfac- 
tion of the note, accompanied by a sur- 
render and cancellation of the note, is 
such a payment as makes the $572 pay- 
able. Bacon ?■. Lamb, 4 Colo. 578. 

Where the debtor places property in 
the hands of the creditor it is not to be 
considered as payment in full, unless 
such appears to be the intention of the 
parties. Perit v. Pittfield, 5 Rawle 
(Pa.) 166. Compare Kelly v. Kelly, 6 
Rand. (Va.) 176; s. c, 18 Am. Dec. 
710. 

If the creditor accept a deed of land 
in payment of the debt, the debt is ex- 
tinguished, though the title to the land 
be defective. Miller v. Young, 2 
Cranch (C. C.) 53; Hays v. Smith, 4 
111. 427. 

Where a debt is payable in lumber, 
lime and rock, the quantities, time and 
place to be fixed by the payee, an un- 
qualified refusal by the payor to deliver 
any lumber thereon avoids the neces- 
sity of any formal demand by the cred- 
itor fixing quantity, time or place. 
Ritchie v. Huntington, 7 Kan. 249. 

Where a debtor gave his creditor au- 
thority to take certain goods passing by 



delivery, and sell them, and out of the 
proceeds to retain the amount of his 
debt, the creditor thereby acquired a 
lien, as against the administrator of the 
debtor, to the extent of his claim. Gur- 
nell V. Gardner, 4 Giff. 626; 9 L. T., N. 
S. 367; 12 W. R. 67. 

1. Dudley v. Vose, 114 Mass. 34. 
Where a note is to be paid in specific 

articles at "factory prices," this is con- 
strued to mean the prices at which such 
goods are sold at factories, unless it is 
shown that there is a different technical 
sense universally established by the 
custom of trade. Whipple v. Levetl, 2 
Mason (U. S.) 89. 

2. Beaumont r Greathead, 2 C. B. 
454; 3D. & L. 631; isL.J., C. P. 130; 
Moran v. Abbey, 63 Cal. 56. 

In the absence of proof to the con- 
trary, it will be presumed that payment 
was made by the part)' bound, and not 
by another. Ames v. Merchants' Ins. 
Co., 2 La. Ann. 594. 

3. McGee v. San Jose, 68 Cal. 91. 
The payment of a debt by a person 

not legally liable for it is a satisfaction 
of the debt, if so received by the cred- 
itor. Martin v. Quinn, 37 Cal. 55 ; 
Burr TJ. Smith, 21 Barb. (N. Y.) 262; 
Welby V. Drake, i Car. & P. 557. 

But it must be deliberately intended 
to operate as a payment. Kemp v. 
Balls, ^10 Exch. 607; Gernon t;. Mc- 
Can, 23 La. Ann. 84; Breck ti. Blanch- 
ard, 22 N. H. 303 ; Merryman v. Slate, 
6 Har. & J. (Md.) 423; Whiting v. 
Independent Mut. Ins. Co., 15 Md. 
297. 

A payment by a third party to a 
constable on behalf of the judgment 
debtor is good. Cain v. Bryant, 12 
Heisk. (Tenn.) 45. 

Any third person, who demands no 
subrogation, may tender to a creditor, 
either in his own name or that of the 
debtor, the amount of a debt due by 
the latter, in whatever species of prop- 
erty the debt is payable, and compel 



187 



To Whom Payment 



PA YMENT. 



May be Made. 



V. To Whom Payment May be Made — 1. In General. — That a 
payment may operate as an extinguishment of a debt, it must be 
made to the creditor or to a person authorized by him to 
receive it.^ 



the creditor to accept the payment in 
that property. State v. Pilsbury, 29 
La. Ann. 787. , 

A voluntary payment by a stranger 
cannot be set up as a defense to an 
action by the original creditor. Lucas 
V. Wilkinson, i H. & N. 420; Kemp v. 
Balls, ID Exch. 607; 24 L. J. Exch. 47; 
Muller V. Eno, 14 N. Y. 605. 

Payment by a stranger for a 
debtor and on his account, and after- 
wards ratified by him, is a good pay- 
ment. Belshaer v. Bush, w C.B. 191 ; 
22 L. T., C. P. 24. 

But payment by a stranger without 
the authority, prior or subsequent, of 
the debtor, is not. James v. Broad- 
hurst, 9 C. B. 173; Tames v. Isaacs, 12 
C. B. 791 ; 2 L. J., C. P. 73 ; Cook v. 
Lister, 13 C. B., N. S. 543; Goodwin v. 
Cremer, 18 Q^ B. 757. 

And such ratification will be good, 
though not made until after the com- 
mencement of an action, as by plea 
of payment. Belshaer v. Bush, 11 C. 
B. 191 ; 22 L. J., C. P. 24; Simpson v. 
Egginton, 10 Exch. 845. 

But if the creditor, before any rati- 
fication by the debtor, cancels the pay- 
ment by returning the money to the 
stranger, the debtor cannot afterwards 
ratify the payment. Walter v, James, 
6 L. R. Exch. 124; 24 L. T., N. S. i88; 
40 L. J. Exch. 104 ; 19 W. R. 472. 

Where, after a note has become due, 
a stranger calls upon the holder and 
pays the amount, declines to have it 
canceled and takes it away with him, 
nothing being said about buying it, 
this will be held a payment and satis- 
laction of the note, so as to pre- 
vent a suit being brought thereon 
by a person receiving it from the 
stranger. Burr v. Smith, 21 Barb. 
(N. Y.) 262. 

Thovigh a bank is not liable in notes 
and certificates illegally issued by it, 
,yet if at its request a third party who 
is indebted to it takes up such notes 
and certificates in payment of his in- 
debtedness to the bank, such fact con- 
stitutes a payment of the third party's 
debt. Leavitt v. Beers, Hill & D. 
Supp. (N. Y.) 221. 

A voluntary payment by a stranger 
of another's debt gives the payor no 



right of action against the debtor in 
his own name. Brown v. Chester- 
ville, 63 Me. 241 ; Wilkes v. Harper, 
I N. Y. 586. 

Where A delivers to B, who is a 
creditor of C, certain chattels which 
B accepts in satisfaction of C's indebt- 
edness to him, C not being a party to 
the transaction, this satisfies both the 
debt of C to B and any liability of B 
to A for the price of the chattels ; and 
A, after delivering the goods and in- 
ducing B to accept them in payment, 
is estopped from alleging the contract 
to be within the Statute of Frauds, 
upon the ground that the agreement 
was a parol promise to pay the debt of 
another. Fowler v. MoUer, 10 Bosw. 
(N. Y.) 374. 

1. 2 Benj. on Sales (4 Am. ed.) 952; 
Artley w. Morrison, 73 Iowa 132; Rob- 
inson V. Weeks, 6 How. Pr. (N. Y.) 
161 ; Wilson v. Rogers, i Wyoming 
Ter. SI. 

Where a note and mortgage are ex- 
ecuted to a trustee, and the same are 
left in his possession, payment of in- 
terest to the trustee will bind the 
beneficiary. Thomassen v. Van Wyn- 
goorden, 65 Iowa 687' 

Where the obligor pays to the 
obligee the amount of a bond which 
has been assigned, without notice 
thereof to the obligor, the bond is dis- 
charged. Preston v. Grayson Co., 
30 Gratt. (Va.) 496. 

Payments made to a de facto admin- 
istrator are valid. Chicago etc. R. 
Co. V, Gould, 64 Iowa 343. 

A payment made to a guardian 
authorized to receive payment is valid. 
Wuesthoff V. Germania L. Ins. Co., 
107 N. Y. 580. 

Where the widow was sole legatee 
for life, and the estate was not in debt, 
and no adpiinistration pending, a pay- 
ment to the widow is good. Hannah 
■V. Lankford, 43 Ala. 163. 

Payment made by an administrator 
to the husband of a distributee, with- 
out her knowledge and consent, is no 
more than unauthorized payment to a 
stranger, unless it can be traced to her 
hands or to her use. Jones v. Com- 
mercial Bank, 78 Ky. 413. 

If payment is made to a stranger to 



188 



To Whom Payment 



PA YMENT. 



May be Made. 



the transaction, the creditor may after- 
wards ratify it and tlien becomes a 
valid payment. Hoinire v. Rodgers, 
74 Iowa 395 ; Strayhorn i'. Webb, 2 
Jones (N. Car.) 199; s. c, 64 Am. 
Dec. 5S0. 

A ratification of a wrongful pay- 
ment must be an entirety. Williams 
'■. Jones, 77 Ala. 294. 

The authority of the person to whom 
payment is made to receive it may 
be inferred from circumstances or from 
the course of dealing of the parties. 
Sax t'. Drake, 69 Iowa 760. 

If a mortgagor makes payment to 
the person to whom the administra- 
tor of the mortgagee says the mort- 
gage and notes belong, he is protected 
thereby. Reynolds v. Smith, 57 Mich. 
194. 

Payment to the son of the agent 
authorized to receive payment is not 
binding on the creditor, if he does not 
actually receive the money. Lewis v. 
Ingersoll, 3 Abb. App. Dec. (N. Y.) 

The collection of other securities or 
the interest, or a part of the principal 
debt, are insufficient to raise an im- 
plied authority to receive payment. 
Smith V. Kidd, 68 N. Y. 130; s. c, 23 
Am. Rep. 157; Cox v. Cutter, 28 N. 
J. Eq. 13; Garrels v. Morton, 26 111. 
App. 433. 

Where the creditor has authorized 
the debtor to send to a third person 
the money due, the debtor must notify 
the creditor that he has so sent it. And 
it is not sufficient that he writes a 
letter to the creditor, if the creditor 
never in fact receives it, and therefore 
loses the benefit of the payment. Hol- 
land V. Tyns, 56 Ga. 56. 

A sold to B certain chattels upon 
which C had a lien, and B, in order to 
get possession ot the chattels, was com- 
pelled to pay C's claim. Held, that 
this constituted a payment to A of the 
purchase-money fro tanto. Partridge 
V. Dartmouth College, 5 N. H. 286. 

A payment to a persop simulating 
the creditor, will not bar a recovery on 
the debt by the real creditor. People 
V. Smith, 43 111. 219; s. c, 92 Am. Dec. 
109. 

Where an insurance company in one 
of the Confederate States, during the 
pendency of the war, paid the amount 
due the insured for a loss to a quarter- 
master of the government, such pay- 
ment being made by virtue of a mili- 
tary order of the commander of the 
Federal forces, this constituted a valid 



payment, and a defense to an action by 
the assured on the policy. Slocomb v. 
Merchants' Mut. Ins. Co., 24 La. Ann. 
291. 

A compulsory payment of a debt to a 
receiver under the sequestration acts of 
the Confederate government is no de- 
fense to a suit by the creditor. Short- 
ridge V. Macon, Chase Dec. (U. S.) 
136. 

The fact that the note is made paya- 
ble at the recorder's oifice, does not 
confer authority on the recorder to re- 
ceive payment. Aguilar v. Bourgeois, 
12 La. Ann. 122. 

And the same rule applies where the 
note is made payable at the oifice of a 
mercantile firm. Rowland v. Levy, 14 
La. Ann. 219. 

A justice of the peace in whose hands 
notes have been placed for suit may re- 
ceive payment; and a payment to him 
will bar "a subsequent suit on the notes. 
Johnson v. Hall, 5 Ga. 384. 

Under the code of Ohio, where an 
execution has been issued by a justice 
of the peace against a judgment debtor, 
any person indebted to him may pay to 
the constable his debt, or so much 
thereof as is necessary to satisfy the 
judgment, and the constable's reciept 
is a sufficient discharge of the amount 
so paid. Hallanon v. Crow, 15 Ohio 
St. 176. 

And see, under Wisconsin statute, 
Dunbar v. Harnesberger, 12 Wis. 373. 

Payment of a debt due the school 
fund to a school commissioner who 
had been removed from office, and 
whose removal was known to the 
debtor, is not an extinguishment of the 
debt. Jameson v. Conway, 10 111. 227. 

Where the plaintiff is only a nominal 
one, and not the real party in interest, 
a payment of the judgment to him is 
not a satisfaction thereof. Triplett v. 
Scott, 12 111. 137.' 

A savings bank required that every 
depositor should sign the by-laws and 
agree to conform to them. Among the 
by-laws was one providing that the 
bank would not he responsible for loss 
sustained by payments made on pre- 
sentation of the pass-book, when the de- 
positor had not given notice of its hav- 
ing been lost or stolen, and that it 
would not be answerable for the conse- 
quences of any mistake as to identity of 
the person presenting it. A depositor 
received a pass-book containing the by- 
laws, but she was unable to read and 
signed them by her mark. She having 
died, the book was presented to the 



189 



To Whom Payment 



PA YMENT. 



Maybe Made. 



2. After Assignment. — A payment of any debt, not evidenced by 
paper negotiable by the law-merchant, made by the debtor to the 
original creditor, after an assignment thereof by the latter, when 
made in good faith without notice, actual or^ constructive, of the 
assignment, is valid. ^ 

3. To the Holder of a Bill or Note. — The holder of a note who 
presents the same for payment is presumed to be the legal owner 
thereof.^ 



bank by one who fraudulently per- 
sonated her, and the deposit was paid, 
the bank having received no notice of 
the loss of the book. Held, that her 
executor could not recover from the 
bank the amount of the deposit. Don- 
Ian V. Provident Institution, 127 Mass. 
183; s. c, 34 Am. Rep. 358. 

And see further on the general sub- 
ject: United States v. Keehler, 9 Wall. 
(U. S.) 83; Cheney v. Libby, 134 U. S. 
68; Wilcox v. Carr, 37 Fed. Rep. 130; 
Berrel v. Davis, 44 Mo. 407; Crowell v. 
Simpson, 7 Jones L. (N. Car.) 285; De 
St. Romes v. Levee Steam Cotton 
Press, 20 La. Ann. 381 ; Smith v. Atlas 
Cordage Co., 41 La. Ann. i; Rush v. 
Fister, 23 111. App. 348; Loomis v. 
Downs, 26 111. App. 257; Frey v. 
Thompson, 20 Nev. 253; Baughan v. 
Brown, 122 Ind. 115; Walker v. New- 
ton, 53 Wis. 336; Cavanaugh v. Bueh- 
ler, 120 Pa. St. 441; Seiberling v. 
Demaree, 27 Neb. 854; Crane v. Grue- 
newald, 120 N. Y. 274; Tummonds v. 
Moody (Supreme Ct.) 3 N. Y. Supp. 
714; Dean v. International Tile Co., 47 
Hun (N. Y.) 319. 

1. Van Keuren v. Corkins, 66 N. Y. 
79; Preston v. Graj'son Co., 30 Gratt. 
(Va.) 496. 

But if the debt is evidenced by a non- 
negotiable instrument, as a bond, and 
the instrument is not produced when 
the payment is made, such payment is 
made at the risk of the debtor; and if 
, it turns out that the instrument has 
been assigned and is held at the time 
of payment by another party, the pay- 
ment is not a valid one. Clarke ff. 
Iglestrom, 51 How. Pr. (N. Y.) 407; 
Mobley t). Ryan, 14 111. 51; 56 Am. 
Dec. 488; Capps v. Gorham, 14 111. 198. 

If the note is non-negotiable, but the 
maker has notice that it has been 
assigned, a payment to the original 
payee is at the maker's risk; a fortiori, 
if suit has been brought on it by one 
claiming to be assignee. Hickok v. 
Labussier, i Morr. (Iowa) 115; Holden 
V. Kirby, 21 Wis. 149. 



Even if paid on garnishee process. 
Gillan v. Huber, 4 Greene (Iowa) 155. 

2. Stoddard v. Burton, 41 Iowa 582; , 
Holly w. Holly, 94 N. Car. 670. 

If the payee pays a holder whom he 
knows has no rigfit to receive payment, 
this will not extinguish the note. Net- 
terville v. Stevens, 2 How. (Miss.) 642. 

The maker of a note has a right to 
pay it to the holder where it is properly 
indorsed by the payee, even though 
paid before maturity; the element Of 
good faith does not enter into the 
case. Loomis v. Downs, 26 111. App. 

257- 

The holder of a note payable to him- 
self or bearer has the legal title thereto, 
though it was taken by way of division 
in payment of a note given to him and 
another person for property which they 
jointly owned; and the maker cannot 
discharge the debt by paying the other 
person and taking iiis receipt against 
the note in the holder's hand. Enochs 
V. Therrell, 61 Miss. 178. 

Payment of a bill of exchangfe or a 
negotiable promissory note by the ac- 
ceptor or maker to one who is bona 
fide in possession of the instrument, 
though without indorsement, is a good 
payment. Edwards v. Parks, i Winst. 
Eq. No. 2 (N. Car.) 49. 

A payment to the payee or indorsee 
of a draft or note who had not posses- 
sion of it, but who gave a receipt in full 
and agreed to get the paper and sur- 
render it, is not a payment, and will not 
protect the maker or drawer against a 
suit by a bona fide holder thereof. Wil- 
cox V. Aultman, 64 Ga. 544; s. c, 37 
Am. Rep. 92; Howard v. Rice, 54 Ga. 
52; Best V. Crall, 23 Kan. 482; s, c, 33 
Am. Rep. 185; Wheeler v. Guild, 20 
Pick. (Mass.) 545; s. c.,' 32 Am. Dec. 
231; Brayley v. Ellis, 71 Iowa 155; 
Osborn v. Baird, 45 Wis. 189; s. c, 30 
Am. Rep. 710; Gosling v. Griffin, 85 
Tenn. 737. Compare AUein v. Agri- 
cultural Bank, 3 Smed. & M. (Miss.) 



But if the paper is non-negotiable a 



190 



To Whom Payment 



PA YMENT. 



May be Made, 



4. Lost or Stolen Bills or Notes. — Where a note payable to bearer, 
or indorsed in blank, is lost or stolen, a payment by the maker to 
the holder is good, and even gross 'negligence on the part of 
the maker, if unattended with mala fides, will not invalidate the. 
payment.^ 

5. To an Agent. — Where a payment is made to an agent of the 
creditor, there must be some evidence of his authority to receive 
payment.* The delivery of a note to the agent of the holder for 



different rule prevails. Johnston v. 
Allen, 22 Fla. 224; Heath v. Powers, g 
Mo. 774. 

See Murray v. Gibson, 2 La. Ann. 
311; Johnston v. Lewis, ■ A. K. Marsh. 
(Kj.)_40i; Gibson 11. Pew, 3 J.J. Marsh. 
(Kj.)2j2; Bartholomew w. Hendrix, 5 
Blackf. (Ind.) 572. 

A payment to a mere custodian of a 
note, when the debtor knows that 
the money represented by the note 
belongs to another, will not discharge 
the debt. Lochenmeyer v. Fogarty, 
112 111. 572. 

But a payment to the real owner of a 
note is good, though the note is at the 
time held by another, if the payee had 
no notice of that fact. Richardson v. 
Farnsworth, i Stew. (Ala.) 55. 

And payment in good faith to the 
holder of a note indorsed in blank is 
good. Davis v. Lusitanian Portuguese 
Ben. Association, 20 La. Ann. 24. 

1. Story on Prom. Notes (7th ed.), § 
382; Edwards on Bills (3rd ed.), §^ 434- 
438; Goodman v. Harvey, 4 Ad. & 
Ell. 870; Uther v. Rich, 10 Ad. & Ell. 
748; Hall V. Wilson, 16 Barb. (N. Y.) 
548; Magee v. Badger, 30 Barb. (N. Y.) 
247; Ellsworth V. Fogg, 35 Vt. 355. 

Comfare 2 Pars. Bills and Notes, 
212-215; Byles on Bills 271; Crooks v. 
Jadis, S B. & Ad. 909; Gill v. Cubitt, 3 
B. & C. 466. 

In a New York case it is held that 
the maker is protected in paying a lost 
note even to a stranger who produces 
no evidence of his title other than 
possession after maturity. Coth- 
ran v. Collins, 29 How. Pr. (N. Y.) 113. 

2. 2 Gre^nl. Evid. (f3th ed.) § 578; 
Abbott's Trial Evid. 276 (5); 800 (4). 

The authority may be presumed 
from the authority to sell. Henry v. 
Marvin, 4 E. D. Smith (N. Y.) 71. 

A payment by the maker to an 
agent of the payee, before a transfer 
by the payee, may be a good pay- 
ment. Renard v. Turner, 42 Ala. 117. 

The fact that the holder of the note 
receives money as the agent of the 



maker does not constitute a payment 
of the note, unless the maker assents 
to such application of the money. Mc- 
Gill V. Ott, 10 Lea (Tenn.) 147. 

A payment to a duly authorized 
agent of the holder is good, though the 
agent has not possession of the note at 
the time. Dunnt;. Hornbeck, 7 Hun 
(N. Y.)629; s. c, affirmed, 72 N. Y. 
80. See Jones on Mortg., § 964. 

A payment to the party's attorney is 
in general sufficient. Jackson v. Rome, 
78 Ga. 343 ; Yates v. Freckleton, 2 
Dougl. 623 ; Hudson v. Johnson, i 
Wash. (Va.) 10. But not to the clerk of 
the attorney. Yates v. Freckleton, 2 
Dougl. 623 ; Perry v. Turner, i Dowe 
Pr. Cas. 300; 2 C. & J. 89; 2 Tyr. 
128. 

Payment of a judgment to the attor- 
ney by whom it was obtained is good, 
though made more than a year after 
the judgment was received. Powell v. 
Litte, I W. Bl. 8 ; Branch v. Burnley, 
I Call (Va.) 147 ; Langdon t>. Potter, 
13 Mass. 319; Lewis -z;. Gamaje, i Pick. 
(Mass.) 347 ; Jackson v. Bartlett, 8 
Johns. (N. Y.) 361 ; Kellog v. Gilbert, 
10 Johns. (N. Y.) 220 ; s. c.,6 Am. Dec. 

335- 

The facts that an attorney was em- 
ployed to draw up a bond and mort- 
gage, and that the money was advanced 
thereon by his client through such at- 
torney, and that the attorney collected 
the interest, will not raise the infer- 
ence that he is authorized to collect 
the principal, where the securities are 
not in his custody. Smith v. Kidd, 68 
N. Y. 130; s. c, 23 Am. Rep. 157. The 
same rule applied to brokers. Stiger 
V. Bent, III 111. 328. 

While the authority of an agent to 
receive payment may be inferred from 
his having made the loan and retained 
the securities, this inference fails when 
the notes are withdrawn from his cus- 
tody. Garrels v. Morton, 26 111. App. 
433. To same effect. Lane v. Du- 
chac, 75 Wis. 646 ; Roberts v. Matthews, 
I Vern. 150; Westenholm v. Davies, 



191 



To Whom Payment 



PA YMENT. 



May be Made. 



Freem. Ch. R. 298; Curtis v. Drought, 
I Molloy, 487. 

A mortgagor at the time of making 
payment to the agent of the mortgagee 
inquired of him for the papers, where- 
upon search was made for them, but 
they were not found. The mortgagor 
then suggested that they might be at 
the recorder's office, to which the 
agent replied that they probably were. 
The mortgagee was insolvent and had 
assigned the mortgage. Held, that 
there was no presumption that the 
mortgagor knew of the assignment. 
Foster v. Beals, 21 N. Y. 247. 

The burden of proof is on the debtor 
to show that the securities were in the 
custody of the agent at the time of 
payment. Williams v. Walker, 2 
Sandf. Ch. (N. Y.) 325 ; Smith v. Kidd, 
68 N. Y. 130; s. c, 23 Am. Rep. 157; 
Garrels v. Morton, 26 III. App. 433. 

A receipt given in the name of a 
firm, but in the form used by agents, 
puts the person making the payment 
on inquiry as to the authority of the 
party to whom payment is made. 
Chase v. Buhl Iron Works, 55 Mich. 
139. 

Payment to the clerk of a merchant 
is not valid unless it is within the 
scope of his employment to collect 
bills, and his mere statement that he 
has such authority is not sufficient, 
though the bill is made out on one of 
the merchant's bill heads. 

"The usual employment of a clerk in 
a retail store is to sell goods to cus- 
tomers or purchasers, and it is implied 
from such employment that he has 
authority to receive pay for them on 
such sale. But there is no implication 
from such employment that he has au- 
thority, after goods are delivered and 
taken from the store, to present bills 
and collect money due to his employ- 
ers, because it is not in the scope of the 
usual employment of such clerks," 
Hirshfield v. Waldron, 54 Mich. 649. 

One Cox sold defendant an engine 
for plaintiffs, being their agent to sell. 
Another agent took notes from the de- 
fendant for the price of the engine, 
made payable to plaintiils. These 
notes were indorsed by Cox. Defend- 
ant sent to Cox some carloads of shing- 
les to sell and pay the notes off, but 
the notes were never paid. Held, not 
to constitute a payment. Hooks v. 
Frick, 75 Ga, 715. 

If a clerk is authorized to receive 
payment over the counter only, a pay- 
ment made to him elsewhere is not 



good. Kaye v. Brett, 5 Exch. 269; 
Jackson 7'. Jacob, 5 Scott 79. 

Plaintiff placed goods in the ware- 
house of E. & Co. for sale, and two 
parcels were sold the defendant, who 
resided at a distance. After defendant 
had paid plaintiff for one parcel, he re- 
ceived a letter from one T, a clerk of 
E & Co., inclosing an invoice of the 
other parcel, and requesting payment, 
stating that E & Co. were authorized 
to receive the money for the plaintiff. 
The letter purported to be signed by 
E & Co. per per. of the plaintiff. De- 
fendant remitted the amount in ac- 
cordance with the request, but T inter- 
cepted the letter at the office of E & 
Co. and appropriated the money. T 
had authority from the plaintiff to re- 
ceive payments over the counter only, 
//■g/f/jthat not to constitute payment 
for the parcel. Kage v. Brett, 5 Exch. 
296; 19 L. J. Exch. 346. 

Payment to a person found in a mer- 
chant's counting house, ostensibly in- 
trusted with the conduct of the busi- 
ness there, is a good payment to the 
merchant, though it turn out that the 
person was never employed by the 
merchant. Barrett v. Deere, M. & M. 
200. 

A factor made purchases for his 
principal, and the latter made him 
payments on account. The vendor 
wrote to the factor pressing him for 
payment, and the letter came into the 
hands of the principal, who transmitted 
it to the factor and with a knowledge 
of its contents paid the factor the bal- 
ance of the purchase money. Held, 
that he was liable over to the vendor 
for the balance so paid. Powell v. 
Nelson, 15 East 65. 

A payment to a broker is good, where 
the name of the principal is not dis- 
closed, though the purchaser knew 
that the broker was selling for some 
principal. But to be valid it is neces- 
sary that the mode of payment should 
not vary from the terms of the original 
contract. Campbell v. Hassell, i Stark 
233; Thornton i;. Meux, M. & M. 43. 
See Drakeford v. Piercy, 7 B. & S. 515 ; 
14 L. T., N. S. 443. ' 

A purchased goods of B through a 
broker, and paid the broker for them 
partly by an advance on his general 
account with the broker before the 
delivery of the goods, and partly by 
cash on a settlement of accounts after 
delivery. The broker became bank- 
rupt before paying over the money to 
B, and the latter brought an action 



192 



To Whom Payment 



FA YMENT. 



May be Bade. 



collection will authorize such agent to receive the money when 
due, and to deliver the note to the maker on payment.^ The 



against A to recover such part of the 
purchase money as had not been paid 
to the broker in cash. Held, that it 
was a question for the jury, depending 
upon the custom of the trade, whether 
payment to a broker in advance was a 
good payment as against the principal. 
Catteral t. Hindle, 2 L. R., C. P. 368. 

Where goods are bought by a broker, 
the effect of a payment to the broker 
would seem to depend upon the time 
when it was made. If the principal is 
called upon for payment by the vendor 
at the time the payment is due, it is no 
defense that the principal had previous- 
ly made payment to the broker ; other- 
wise, if the day of payment is allowed 
to pass without a demand on the prin- 
cipal by the vendor. Kymer v. Su- 
wercropp, Camp. 109. Compare Smyth 
w. Anderson, 7 C.B. 39; 18 L. J., C. P. 
114; Armstrong v. Stokes, 7 L. R., Q^ 
B. 598, 607 ; 41 L. J., Q^B. 253, 258- 

If the broker does not mention his 
principal, the latter is liable to the 
vendor, though the broker becomes in- 
solvent and is indebted to his principal. 
Waring v. Favenck, i Camp. 85. 

An auctioneer has a right to collect 
the money due on his sales, and may 
maintain an action for it. Harlow v, 
Sparr, 15 Mo. 184. 

A, being in the employ of B, and au- 
thorized to collect money for him, but 
without authority to deposit the money 
so collected, did deposit such money in 
a bank and took certificates of deposit 
in the name of "B by A." A after- 
ward drew the money so deposited, and 
re-delivered the certificate to the bank. 
Thereafter B ascertained the fact that 
such deposits had been made, and 
brought suit to recover the amount 
thereof. Held, that he was entitled to 
recover. Honig v. Pacific Bank, 73 Cal. 
464. 

Money was deposited by the treas- 
urer of a committee in a, bank in his 
name as such treasurer. The bank paid 
it out to another party upon the order 
of the committee. Held, that the pay- 
ment was a valid one. Jay v. Concord 
Sav. Bank, 60 N. H. 277. 

A payment to an attorney after no- 
tice of substitution is not valid. Weist 
■V. Lee, 3 Yeates (Pa.) 47. Or of revo- 
cation. Parker ■v. Downing, 13 Mass. 

465- 

Where a creditor has once author- 



ized payment to an agent, he cannot re- 
voke that authority after the debtor 
has, pursuant to the authority, given 
such a pledge to pay to the agent as 
would be binding in a court of law. 
Hodgson V. Anderson, 5 D. & R. 735 ; 
3 B. & B. 842. See Pooley v. God- 
win, 4 Ad. & El. 64; 5 N. & M. 466. 

The authority of the agent to collect 
the debt is revoked by the death of the 
creditor. Lochenmeyer v, Fogarty, 
112 111. 572; Cassiday i;. McKenzie, 4 
W. & S. (Pa.) 282; s. c, 39 Am. Dec. 
76; Wallace t;. Cook, 5 Esp. 1.17. 

1. Whelan -v. Reilley, 61 Mo. 565 ; 
Yazel V. Palmer, 81 111. 82 ; Padfield 
V. Green, 85 111. 529 ; Johnson v. 
Glover, 121 111. 283; Haines *. Pohl- 
man, 25 N. J. Eq. 179; Camp v. Wig- 
gins, 72 Iowa 643 ; Thomassen v. Van 
Wyngaarden, 65 Iowa 687. Compare 
Taylor f. Vingert, 33 Leg. Int., C. 
P. 238; Brown v. Taylor, 32 Graft. 
(Va.)i3S. 

He is not authorized to receive 
payment before it is due. Sthith v. 
Kidd, 68 N. Y. 130; s. c, 23 Am. Rep. 
157. Compare Merritt v. Cole, 9 Hun 
(N. Y.) 98. 

Possession of the securities by the 
agent indispensable evidence of his 
authority to collect. Jones on Mortg., 

k 964- 

The burden of proof is on the 
debtor to show that the note was in 
the agent's possession when the pay- 
ment was made. Stiger v. Bent, iii 
111. 328. To same effect, Eaton v. 
Knowles, 61 Mich. 625. 

An authority to receive the whole 
of a debt implies a power to receive 
part. Whelan v. Reilley, 61 Mo. 565. 
But an authority to receive interest 
is not an authority to receive the 
principal. Ritch v. Smith, 60 How. 
Pr. (N. Y.) 157; Cox V. Cutter, 28 N. 
J. Eq. 13. 

Defendant executed to plaintiff a 
note payable in ten days at a certain 
bank. Two days afterwards he paid 
the bank the amount of the note and 
took a receipt therefor, the note not 
being there. Three days after the 
payment, the bank sent him notice of 
the time and place of payment, in 
which notice it was stated that notes 
in the hands of the bank might be 
paid at any time before due. Two 
days after the sending of this notice 



18 C. of L.— 13 



193 



To Whom Payment 



PA YMENT. 



May be Uade, 



general rule is that the agent is authorized to receive payment 
only in cash.^ 



plaintiff left the note with the bank 
for collection, and the next day, and 
before the maturity of the note, the 
bank suspended payment, and the 
money was never paid over to plain- 
tiff. Held, that the payment was 
good, on the ground that it was a pay- 
ment to plaintiff's agent, and that such 
agent expressly authorized its pay- 
ment before maturity. Osborn v. 
Baird, 45 Wis. 189 ; s . c, 30 Am. Rep. 
710. 

And the general rule is that where 
the payee of a note leaves it with a 
bank for collection, the bank becomes 
his agent to receive the money, and 
payment at the bank discharges the 
maker, though the bank fail to remit 
the amount to the payee. Smith v. 
Essex Co. Bank, 22 Barb. (N. Y.) 627. 

1. Williams v. Evans, i L. R., Q^ 
B. 352;35L. J., Q^B. III. 

An authority to collect is not an 
authority to commute the debt, i 
Pars. Cent. 42. Nor to release it upon 
a corpposition, nor to pledge it, nor to 
obtain a judgment on it for the agent's 
own use. Padfield v. Green, 85 111. 
529; Eaton V. Knowles, 61 Mich. 625; 
Kingstqn v. Kincaid, ■ Wash. (U. S.) 
448. Nor to take payment by a re- 
lease of the agent's own debt to the 
debtor. Smith v. Morrill, 39 Kan. 
665 ; Bostick v. Hardy, 30 Ga. 836; 
Maynard v. Cleveland, 76 Ga. 52 ; 
Chase v. Buhl Iron Works, 55 Mich. 
139; Parsons v. Webb, 8 Me. 38; s. c, 
22 Am. Dec. 220; Williams v. John- 
ston, 92 N. Car. 532 ; s. c, 53 Am. Rep. 
428; Underwood v. Nicholls, 17 C. B. 
239; 25 L. J., C. P. 79. 

Nor to take a note or other com- 
mercial paper for it. And if the 
debtor pays the debt by giving his 
note payable to the agent, which note 
the agent sells before maturity, and the 
maker pays, this does not prevent a 
recovery by the principal. Lochen- 
meyer v. Fogarty, 112 111. 572. To 
same effect, Harbach v. Colvin, 73 
Iowa 638 ; British etc. Mortgage 
Corp. V. Tibbals, 63 Iowa 468. Corn- 
fare Mulcrone v. American Lumber 
Co., 55 Mich. 622; Anderson v. Hillies, 
12 C. B. 499; 16 Jur. 819; 21 L. J., C. 
P. 150. 

An auctioneer to whom commis- 
sions are due may allow a purchaser 
at the auction sale credit on his pur- 



chase for the auctioneer's individual 
debt to such purchaser, not to exceed 
the amount of his commission. Har- 
low V. Sparr, 15 Mo. 184. 

An agent who is authorized to collect 
a note cannot receive in payment any- 
thing but money ; and if the agent re- 
ceive from the debtor other notes or 
claims on third parties, they will not 
constitute a payment unless actually 
collected by the agent. Mudgett v. 
Day, 12 Col. 139; Locke v. Mackinson, 
14 ij/a. Ann. 361 ; Spence v. Rose, 28 
W. Va. 333 ; Anderson v. Boyd, 64 
Tex. 108. Nor can an agent accept in 
full payment any less than the amount 
due. Rohr v, Anderson, 51 Md. 205; 
Chalfants v. Martin, 25 W. Va. 394. 

Where an attorney receives notes or 
evidences of debt in payment of claims 
placed in his hands for collection, the 
claims are not thereby paid. And if 
the attorney proceeds to collect such 
notes and evidences of debt, the money 
arising therefrom is at the risk of the 
debtor, so long as it remains in the 
hands of the attorney. Kenny v. 
Hazeltine, 6 Humph. (Tenn.) 62. 

An agent authorized to collect a 
debt, received from the debtor his note 
payable to the creditor. The agent 
indorsed it as the creditor's agent, and 
sold it to a third person, to whom it 
was paid by the debtor. The creditor 
never received the money. Held, no 
authority of the agent to indorse be- 
ing shown, the debt was not dis- 
charged. David V. Neven, 10 La. 
Ann. 642. 

If the owner of goo^s allows the 
broker through whom he sells them 
to sell as principal, the purchaser will 
be discharged by a payment to the 
broker in any way which would have 
been sufficient had he been the real 
owner. Coates v. Lewes, i Camp. 
444. 

And if the principal has, in the 
course of dealing, allowed his broker 
to take payment for goods sold by 
drawing bills upon the purchaser in 
his own name, without mention of the 
principal, a payment thus made is 
good, though the broker fail before the 
money is actually paid to the princi- 
pal. Townsend v. Inglis, Holt 278. 

Where the agent is a bank of de- 
posit, it may receive its owa certifi- 
cates of deposit as money, and the 



194 



HOW Payment is to be Made, PA YMENT. 



General Bnlea. 



6. Joint Payees. — Payment to one of several joint payees ex- 
tinguishes the debt.' 

VI. How Payment Is to be Made — 1. General Rule.— The gen- 
eral rule is that payment must be made to the creditor or his 
agent personally ; but a payment made in any manner requested 
or agreed to by the creditor will discharge the debtor, though the 
money never reach the creditor's hands.* 

2. Debtor Not Bound to Pay in Any Other Than the Usual Mode. — 
The debtor is under no obligation to follow the mode prescribed 
by the creditor, but may pay directly to the creditor or his 



principal will be bound thereby and 
the debtor discharged, even though 
the bank soon after becomes insolvent, 
and never remits to its principal. 
British etc. Mortgage Co. v. Tibballs, 
63 Iowa 468. Compare Francis v. 
Evans, 6g Wis. 115. 

1. Lyman v. Gedney, 114 111. 388; 
s. c, 55 Am. Rep. 871 ; Morrow v. 
Starke, 4 J. J. Marsh. (Ky.) 367; 
Henry v. Mt. Pleasant, 70 Mo. 
500. 

So of payment to one of several 
partners, trustees or executors. Porter 
V. Taylor, 6 M. & S. 156; Carr v. 
Reed, 3 Atk. 695; Stone v. Marsh. Ry. 
& M. 364 ; Bryant v. Smith, 10 Cush. 
<Mass.) 169. 

2. 2 Greenl. Evid., (i3tK ed.), ^ 519; 
Benjamin on Sales (i Am. ed.), \ 710; 
1 Benj. Sales, (4th Am. ed.), p. 923 ; 
Gurney v. Howe, 9 Gray (Mass.) 404; 
s. c, 69 Am. Dec. 299. 

Thus if the creditor direct the 
money to be transmitted by post, and 
it is lost or stolen, the payment is 
nevertheless good. Warwicke v. 
Noakes, Peake 67 ; Kington v. King- 
ton, II Mees. & W. 233; 12 L. J. Exch. 
248; Wakefield v. Lithgow, 3 Mass. 
249. 

But the letter must be delivered at 
the general post, or a receiving house 
appointed by that oiBce, and not to a 
bell-man in the street. Hawkins v. 
Rutt, Peake 186. 

The burden is pn the debtor, how- 
ever, to show that the creditor author- 
ized this mode of remittance, either 
by express assent or direction, or a 
usage and course of dealing from 
which such assent or direction may be 
iairly inferred. Gurney v. Howe, 9 
Gray (Mass.) 404; s. c, 69 Am. Dec. 
299; Crane v. Pratt, 12 Gray (Mass.) 
348; Yon V. Blanchard, 75 Ga. 519; 
Gordon v. Strange, i Exch. 477. 

In the absence of any evidence of 
usage and custom to remit by mail, or 



of special authority from the creditor 
to so remit, a remittance in that man- 
ner is at the debtor's risk, and is not a 
discharge of the debt unless received. 
A remittance in a single previous in- 
stance, not objected to by the creditor, 
will not establish such a custom ; nor 
will a letter of the creditor requesting 
a remittance, but specifying no mode, 
prove such authority. Burr v. Sickles, 
17 Ark. 428; s. c, 65 Am. Dec. 437; 
Morton v. Morris, 31 Ga. 378 ; Boyd v. 
Reed, 6 Heisk. (Tenn.) 631. Compare 
Townsend v. Henry, 9 Rich. (S. Car.) 
318. 

Defendants were commission mer- 
chants in Massachusetts, and had in 
their hands produce belonging to the 
plaintiffs, who were residents of Ver- 
mont, to sell for the plaintiffs. Plain- 
tiffs gave defendants a special order to 
remit a part of the proceeds to them 
in a particular way. Held, that this 
did not authorize the defendants to 
remit the balance of the proceeds in 
the same way, and such a remittance 
of the balance was at the risk of de- 
fendants. Dodge V. Smith, 34 Vt. 
178. 

If the creditor authorizes the debtor 
to remit to him by mail under certain 
specified precautionary observances, 
and the debtor remits without observ- 
ing such precautions, it is no excuse 
that their observance was impossible. 
Williams v. Carpenter, 36 Ala. 9 ; s. c, 
76 Am. Dec. 316. 

Where the debtor, in answer to a 
letter demanding payment, sent a 
postoflBce order in which the creditor 
was described by a wrong Christian 
name, this was not a payment, though 
the creditor kept the order without 
cashing it, and was informed at the 
postoflSce that he might receive the 
money at any time by signing the 
name actually used in the order. Gor- 
don V. Strange, 11 Jur. 1019; i Exch. 
477- 



195 



When Payment Must be Made. PA YMENT. At Exact Time Agreed Upon. 

duly authorized agent.* 

3. Applying Bank Deposit. — A banker may apply a deposit of 
his customer to the payment of the customer's note held by the 
bank at its maturity, without any request or direction to that 
effect by the customer.^ 

VII. When Payment Must be Made — 1. At Exact Time Agreed 
Upon. — Payment must be made at the exact time agreed on. At 
common law, if a condition for the payment of money at a day 
certain was broken by a failure to pay on that day, the debt 
could not be discharged by a subsequent payment, unless aC'* 
cepted in satisfaction.* The only relief was in equity.* 

2. When no time is fixed for the payment, it must be made 
within a reasonable time^ 



1. Meyer v. Hehner, 96 111. 400. In 
this case the creditor gave a power of 
attorney to one to receive payment of 
a debt, and afterwards wrote to the 
debtor requesting him, instead of mak- 
ing payment to the attorney, to pur- 
chase an interest-bearing certificate 
of deposit which he would take in 
payment. The attorney who held the 
note, collected a part thereof from the 
debtor, and credited it on the note. 
Held, that the payment was good. 
The debtor was under no legal obliga- 
tion to procure a certificate of deposit 
instead of paying the money to the 
attorney. 

2. Knapp v. Cowell, 77 Iowa 528. 
So, too, a payment may be made by 

means of a credit on a mutual account, 
where such is the agreement between 
the parties. Livingston v. Whitney, 19 
L.J., Q^B. S28;s. c, isQ,B.722. 

See Wharton v. King, 69 Ala. 365; 
McCurdy v. Middleton, 82 Ala. 131 ;_ 
Thomas v. Thomas, 62 Miss. 531; Sut- 
ton V. Page, 3 C. B. 204; Callendar v. 
Howard, 10 C. B. 290; Ashby v. James, 
II Mees. & W. 542; Scholey v. Wal- 
ton, 12 Mees. & W. 510; Smith v. Page, 
15 Mees. & W. 683; Owens v. Denton, 
I Cr. M. & R. 711; McKellar v. Wal- 
lace, 8 Moo. P. C. 378; Sturdy -v. At- 
naut, 3 T. R. 599; Worthington v. 
Grinesditch, 7 Q^ B. 479; Livingston v. 
Whiting, 15 Q^ B. 722; Clark v. Alex- 
ander, 8 Scott (N. R.) 147. 

Or it is so provided by statutes, as in 
the case of a bankrupt. U. S. Rev. 
Stat., 5 5073. 

3. Smith V. Trousdale, 3 El. & B. 83; 
Thompson v. Hunt, 3 Leving. 368; 
Hume V. Peploe, 8 East 167; Poole v. 
Tumbridge, 2 Mees. & W. 223; King- 
ton V. Kington, 11 Mees. & W. 233; 
Wheeler *. Walker, 2 Conn. 196; s. c, 



7 Am. Dec. 264; Walker v. Wheeler, 2 
Conn. 299; Parsons v. Welles, 17 Mass. 
419; Howe V. Lewis, 14 Pick. (Mass.) 

3^9- 

See infra, this title. Pleading Pay- 
7neni, 

And this applies to a covenant for 
pa^'meqt of rent. Green's Case, i Leon. 
262; Pennant's Case, 3 Co. 64. 

And to the debt due under a mort- 
gage. Doton V. Russell, 17 Conn. 
146; Parsons v. Welles, 17 Mass. 419; 
Maynard v. Hunt, 5 Pick. (Mass.) 240; 
Howe V. Lewis, 14 Pick. (Mass.) 329. 

When payment is to be made within 
a certain time after a day named, that 
day is to be excluded in computing the 
time. Campbell v. International L. 
Assur. Soc, 4 Bosw. (N. Y.) 298. - 

4. Whittington v. Roberts, 4 T. B. 
. Mon. (Ky.) 173; Atkins v. Chilson, 11 

Met. (Mass.) 112; Sanborn v. Wood- 
man, 5 Cush. (Mass.) 36; Walker v. 
Wheeler, 2 Conn. 196, 299; Carpenter 
V. Wescott, 4 R. I. 225; Ragan v. 
Walker, i Wis. 527. 

The later cases hold that the de- 
fense of payment may be raised at law. 
Atkins V. Chilson, 11 Met. (Mass.) 
112. 

5. Bank of Columbia v. Hagner, i 
Pet. (U. S.) 455; Brown v. Brown, 103 
Ind. 23. 

Where a vendee agrees to execute 
notes in payment for goods sold, they 
must be executed within a reasonable 
time, or the whole sum becomes due 
forthwith. Ha^'s v. Weatherman, 14 
Ind. 341. 

Two years and three months held not 
to be a reasonable time to make payment 
in case of sale of lands. Fowler v. 
Sutherland, 68 Cal. 414. 

If by inferencf of law the money is 
to be paid in a reasonable time, the 



196 



When Payment Must be Made. PA YMENT. As Bepending Upon Performance. 

or on demand.^ 

3. As Depending Upon Performance. — Where the time fixed for 
payment is to happen, or may happen, before the time fixed for 
performance, the right to payment does not depend upon per- 
formance.* 

4. For Goods Sold. — In an ordinary contract of sale, where it is 
not expressly stipulated that credit shall be given, or the time of 
payment is not agreed upon, the buyer is bound to pay as soon 
as the vendor is ready to deliver.^ 



debtor has no election to make it pay- 
able at different times and in different 
years. O'Donnell v. Leeman, 43 Me. 
158; s. c, 69 Am. Dec. 54. 

Where a contract provided that a 
sum should be "payable as convenie'.it," 
this cannot be construed so that it snail 
not be payable at all, but only as an ex- 
tension of credit. Black v. Bachelder, 
120 Mass. 171. 

1. Bank of Columbia v. Hagner, i 
Pet. (U. S.) 455; Payne v. Mattox, i 
Bibb (Ky.) 164; Slack v. Price, i Bibb 
(Ky.) 272; Colburn v. First Baptist 
Church, 60 Mich. 198; Dorland v. Dor- 
land, 66 Cal. 189. 

A promissory note which states no 
time of payment is paj'able on demand, 
even though the interest is made pay- 
able annually. Converse v. Johnson, 
146 Mass. 20. 

A debt acknovfledged to be due, with- 
out mentioning any time of payment, is 
payable immediately. Payne v. Mat- 
tox, I Bibb (Ky.) 164. 

On an award or a covenant to pay 
money, without any day fixed, no -de- 
mand- is necessary, and the money is 
due forthwith. Slack v. Price, i Bibb 
(Ky.) 272; Kendall v. Talbott, i A. K. 
Marsh. (Ky.) 321. 

But if it is expressly agreed, or es- 
tablished by custom, that payment is to 
be made only after demand or notice, a. 
reasonable time after demand or notice 
is allowed for the debtor to bring the 
money. Benj. on Sales (i Am. ed.), % 
709, citing Brighty v. Norton, 32 L. J., 
Q.B. 38; s. c, 3 Best & S. 305; Jones 
-v. Wilson, 32 L. J., Q^ B. 33, 382; 
s. c, 4 Best & S. 442, 45s; Massey 
V. Sladen, L. R., 4 Exch. 14 ; 
Loughborough v. Nevin, 74 Cal. 
250. 

In the case of Toms v. Wilson, citid 
by Mr. Benjamin, plaintiff being in- 
debted to the defendant, executed to the 
latter a bill of sale of his household fur- 
niture, whereby he agreed to pay the 
debt "immediately upon demand 



thereof in writing," and in case of fail- 
ure to so pay, defendants were author- 
ized to take possession of and sell the 
furniture. Defendants placed in the 
hands of a sherifFs officer a written 
demand of payment, who delivered it 
to plaintiff at his house, and upon his 
failure to make immediate payment, 
seized the furniture. It was held' that 
the seizure was premature. Says 
CocKBURN, C. J.: "By the terms of 
the bill of sale plaintiff was under an 
obligation to pay this money immedi- 
ately upon demand in writing, and, if 
he did not, then the defendants were 
entitled to take possession of and sell 
the goods. Here such a demand was 
made. The deed must receive a rea- 
sonable construction, and it could not 
have meant that the plaintiff was bound 
to pay the money in the very next in- 
stant of time after the demand, but he 
must have a reasonable time to get it 
from some convenient place. For in- 
stance, he might require time to get it 
from his desk, or to go across the street, 
or to his bankers for it." 4 Best & 
Smith 453. 

And Blackburn, J., said: "By a 
reasonable time must be understood 
time enough to ascertain the will of the 
creditor, or of a person authorized by 
him to receive the money." 

The demand in this case having been 
made by an agent of the creditors, it 
was'further held that the debtor must 
have a reasonable opportunity to in- 
quire into the authority of the person 
making the demand. 

2. I Whart. on Contr., § 582; Petty v. 
Church of Christ, 95 Ind. 278. 

3. Benj. on Sales (i Am. ed.), §§ 706, 
707; Endsley v. Johns, 120 111. 469; s. c, 
60 Am. Rep. 572; Wright f. Wabash 
etc. R. Co., 120 111. 541; Lentz v. Flint 
etc. R. Co., 53 Mich. 444; Hill v. Gayle, 
I Ala. 275; Falls v. Garther, 9 Port. 
(Ala.) 605; Robbins v. Harrison, 31 
Ala. 160; Robinson v. Marne}', 5 
Blackf. (Ind.) 329; Kirby v. Stude- 



197 



Where Payment Must be Made. PA YMENT. 



The General Bole, 



5. Of Note Before Maturity. — Payments made by the maker of a 
negotiable promissory note before its maturity are made at his 
risk.* 

6. A payment made on Sunday is good if the creditor retains the 
money.^ 

VIII. Wheee Payment Must be Made — 1. The General Rule is 
that the payee must, if no specific place of payment is designated 
or agreed upon, seek out the creditor and pay him.* 



baker, 15 Ind. 45; TerwiUiger v. Mur- 
phy, 104 Ind. 32; Hundley v. Buckner, 
6 Smed.& M. (Miss.) 70; Peabody v. 
Maguire, 79 Me. 572; Genin v. Tomp- 
kins, 12 Barb. (N. Y,) 265; Cook v. 
Ferral, 13 Wend. fN. Y.) 285; Mc- 
Combs V. McKennan, 2 W. & S. (Pa.) 
216; s. c, 37 Am. Dec. 505; Fitzpatrick 
V. Fain, 3 Coldw. (Tenn.) 15; Bliss v. 
Arnold, 8 Vt. 252; s. c, 30 Am. Dec. 
467; Fay V. Fay, 43 N. J. Eq. 438. 

The buyer has no right to delay till a 
demand is made, nor till the vendor ac- 
tually offers to deliver; nor till he sends 
or carries the articles purchased to the 
purchaser. Benj. on Sales (i Am.ed.), 
§707. 

In Vermont, a sale for cash by a 
commission merchant is held 'to mean 
that the money is to be paid on delivery 
of the property. Bliss v. Arnold, 8 Vt. 
252; s. c, 30 Am. Dec. 467. 

1. Ebersole.-y. P.edding, 22 Ind. 232; 
Jefferson v. Fox, i Morr. (lovifa) 48. 

But this applies only to negotiable 
paper. Merritt v. Cole, 9 Hun (N. Y.) 
98. 

And has no application to paper 
made payable "on or before" a certain 
day. Stoddard ti. Burton, 41 Iowa 582. 

The fact that an attorney has author- 
it}' to receive payment of a note, does 
not authorize him to accept payment 
before the note is due. Smith v. Kidd, 
68 N. Y. 130; s.c, 23 Am. Rep. 157. 
Comfare Merritt v. Cole, 9 Hun (N. 
Y.) 98. 

One J, in order to obtain a loan from 
M, procured S to execute to M his 
promissory note. Thereupon J and his 
■wife executed to S their joint promis- 
sory note for the same amount, which 
latter note was secured by a mortgage 
on the wife's land. The joint note and 
mortgage, indorsed by S, were delivered 
to M, together with S's note to M, both 
payable in bank, and both given solely 
to procvire said loan. Certain payments 
made to M by J were indorsed on the 
individual note of S, but not on the 
joint note of J and his wife. Afterward 



M surrendered to S the note executed by 
him, retaining only the joint note se- 
cured by the mortgage. This note he 
indorsed, and sold it and the mortgage 
for value before maturity to one who 
had no knowledge of the payments and 
who procured judgment on the note and 
foreclosure of the mortgage. J being 
insolvent and the mortgaged property 
having been sold to satisfy the judg- 
ment, J's wife brought an action against 
M to recover the amount of the pay- 
ments which he had failed to credit on 
the joint note. Held, that she was en- 
titled to recover. Moorman v. Shock- 
ney, 95 Ind. 88. 

2. Johnson v. Willis, 7 Gray (Mass.) 
164. See also Sunday. 

3. King V. Finch, 60 Ind. 420; Gale 
V. Corev, 112 Ind. 39; McKinder v. 
Littlejohn, 4 Ired. (N. Car.) 198; San- 
ders V. Norton, 4 T. B. Mon. (Ky.) 
464. 

The maker of a note payable at an 
Ypsilanti bank deposited money with 
his own bankers in Ann Arbor, request- 
ing them to get the note from Ypsilanti 
and paj' it. The Ann Arbor bankers 
wrote to Ypsilanti for the note, which 
was sent to them indorsed "for collec- 
tion." They did not; however, remit 
the money, and upon their failure shortly 
afterwards, the note was found among 
their collection paper, uncanceled. 
Held, that the note was not paid. It 
was the maker's "duty to see that the 
note was paid at maturity, and instead 
of paying it himself he intrusted the 
money to his own bankers, who never 
applied it. . . . We can see no plaus- 
ible ground for holding the note paid." 
Sutherland v. First Nat. Bank, 31 
Mich. 230. 

Where payment was to be made in 
grain on a day fixed, but no place of 
delivery was designated, the parties may 
subsequently agree on a place, and this 
agreement will be binding, though the 
original contract was in writing and the 
place was fixed b}' parol. Miles v. Rob- 
erts, 34 N. H. 245. 



198 



"Wiere Payment Must be Made. PA YMENT. Payable at a Particular Bank. 

2. Notes and other securities made payable at a particular bank are 
payable absolutely, and it is not necessary for the owner to pre- 
sent them at the place where they are made payable in order to 
hold the maker. And though the maker deposit funds with the 
bank to meet such paper, and it would have been paid had the 
holder presented it at such bank at maturity, the maker is still 
liable, notwithstanding the funds are lost through a subsequent 
failure of the bank.* 



1. Adams v. Hackensack Imp. Com- 
mission, 44 N. J. L. 638; s. i;., 43 Am. 
Rep. 406. 

Mr. Justice Story states the re- 
verse of this to be the law, both in Eng- 
land and in this countr3'. That is, while 
the maker is not discharged by the mere 
failure of the holder to present the note 
at the designated place, yet, "if by such 
omission or neglect of presentment and 
demand, he has sustained any loss or 
injury, as if the bill or note were pay- 
able at a bank and the acceptor or maker 
had funds there at the time, which have 
been lost by the failure of the bank, 
then, and in such case, the acceptor or 
maker will be exonerated from liability 
to the extent of the loss or injury so 
sustained." Story on Prom. Notes, ^^ 
227, 228. Mr, Parsons and Mr. Dan- 
iels announce the same rule and cite 
Story as their authority, i Pars. Contr. 
273; I Dan. Neg. Inst. (3rd ed.), § 643. 

But in the case cited, and which has 
been recently decided by New Jersey 
courts, it is insisted that Mr. Story's 
view of the law is not correct, and that 
it is not supported by the authorities 
which he cites. The doctrine as an- 
nounced in the text is there maintained 
in a well reasoned opinion. Adams v. 
Hackensack Imp. Commission, 44 N. 
J. L. 638; s. c, 43 Am. Rep. 406. 

In Bank of U. S. v. Smith, 11 Wheat. 
(U. S.) 172, the Federal Supreme Court 
declines to pass upon the question, as it 
did not necessarily arise in that case. 
In Wallace v. McConnell, 13 Pet. (U. 
S.) 136, the question was whether, in 
suing on a note made payable at a par- 
ticular place, it was necessary to aver a 
demand at that place. Thfe American 
cases are reviewed at length, and the 
conclusion is reached that such an alle- 
gation is not necessary; that it is mat- 
ter of defense on the part of the defend- 
ant to show that he was in attendance 
to pay or had the money there to paj', 
but that plaintiff was not there to re- 
ceive it; "which defense generally will 
be in bar of damages only, and not in 



199 



bar of the debt;" and it is said further 
in that case, though it is merely a dic- 
tum, that should the maker "not find; 
his note or bill at the bank he can de- 
posit his monej' to meet the note when, 
presented, and should he be afterwards 
prosecuted he would be exonerated from 
all costs and damages upon proving. 
such tender and deposit." 

In a recent case in Neiv Tork, the 
rule is declared to be as stated in the 
text, the court of appeals holding that 
if the bank fails with sufficient funds of 
the maker in its hands to pay the note, 
the maker is still liable. Indig v. Nat. 
City Bank, 80 N. Y. 100. 

The courts of lo-wa and of South 
Carolina have followed the rule laid 
down by Story. Lazier v. Horan, 55 
Iowa 75; s. c, 39 Am. Rep. 167; Bank 
of Charleston v. Zorn, 14 S. Car. 444; 
6. c, 37 Am. Rep. 733. 

But in a later case decided by the Su- 
preme Court of Iowa, Seevers, J., 
says: "We do not feel disposed to ex- 
tend the rule" of Lazier v. Horan, and 
intimates an approval of the case cited 
above from Neiv Jersey (Adams v. 
Hackensack Imp. Commission, 44 N.J. 
L. 638); Callanan v. Williams, 71 Iowa 
363,- where it is held that if the note is 
payable at the office of one not a banker, 
the deposit of money by the maker at 
such office is not a payment, unless the 
money actually reaches the payee ot 
the note. 

_ If the note is made payable at a par- 
ticular place, the maker is not in default 
until it is deposited at such place, where 
it is attempted to enforce a forfeiture on 
account of the nonpayment. Robinson 
V. Cheney, 17 Neb. 673; Ballard' v. 
Cheney, 19 Neb. 58. 

Where the note is payable at the office 
of one not a banker, and who is not tht 
holder of the note, a deposit of the 
amount at such place is not a payment 
Callanan v. Williams, 71 Iowa 363. 
_ Where it is agreed between the par- 
ties that a note may be paid at a certain 
store, and a part of the amount is left 



Svidence of Payment. 



PA YMENT. 



Beceipt of Payment. 



IX. Evidence of Payment — 1. Receipt of Payment.^— A receipt is 
only frima facie evidence of payment.* 

2. Book entries made by the payor in his own account books are 
not evidence in his favor, unless brought to the knowledge of the 
creditor,* unless admissible on grounds common to all book 
entries.* 



at the store by the maker, which act is 
ratified by the holder with full knowl- 
edge of all the circumstances, this will 
constitute a payment j>ro ianto, though 
the creditor never actually receives 
the money. Ingalls v. Fiske, 34 Me. 
232. 

1. See, for a full exposition of the law 
relative to receipts. Receipts. 

2. I Greenl. Evid. (i^th ed.), § 305; 2 
Greenl. Evid. (13th ed.), () 517; Whart. 
Evid., §§ 1064, 1 130, 1365; Skaife v. 
Jackson, 5 Dowl. & Ry. 290; Field v. 
Bevil, 12 Ala. 608; Shropshire v. Long, 
68 Iowa 537; St. Louis, Ft. Scott etc. 
R. Co. V. Davis, 35 Kan. 464; Nicholson 
V. Frazier, 4 Harr. (Del.) 206; McAllis- 
ter V. Engle, 52 Mich. 56; Foster v. 
Beals, 21 N. Y. 247; Lambert v. Seely, 
17 How. Pr. (N. Y.) 432; Megargel v. 
Megargel, 105 Pa. St. 475. 

And a receipt is inadmissible as 
against a stranger to the transaction. 
Ferris v. Boxell, 34 Minn. 262; Ranney 
■V. Hardy, 43 Ohio St. 157; Megargel v. 
Megargel, 105 Pa. St. 475. 

Parol evidence of the payment is ad- 
missible, though a receipt was given; 
and it is not necessary to account for 
the absence of the receipt, i Whart. 
Evid., § 77;, Southwick v. Hayden, 7 
Cow. (N. Y.) 334. 

Marking a note or bill "paid" by the 
officers of a bank in which it had been 
deposited for collection, or the mark- 
ing of it canceled, or erasing the 
name of the maker, are not conclusive 
evidence of its actual payment ; and 
it may be shown that these acts were 
done through mistake. 

Irving Bank v. Wetherald, 34 Barb. 
<N. Y.) 323; s. c, affirmed, 36 N. Y. 335. 
Prince v. Oriental Bank Corpora- 
tion, L. R., 3 App. 325 ; s. c, 24 Moak's 
Rep. 221; Warwick v. Rogers, 5 Man. 
& G. 340. 

A bank was accustomed, before 
sending out for collection cheques on 
other banks, to stamp them on their 
face as paid. Held, that such stamp 
does not necessarily cancel the cheque, 
but it may be shown that the cheque 
is not in fact paid. Scott v. Betts, 
Hill & D. Supp. (N. Y.) 363. 



The acknowledgment contained in 
a deed of the payment of the consid- 
eration money, is, in the absence of 
any evidence that it has not been in 
fact paid, sufficient evidence of its pay- 
ment; Wood V. Chapin, 13 N. Y. 509; 
s. c, 67 Am. Dec. 62. 

As to effect where the instrument is 
silent as to the payment of the consid- 
eration, see Solary v. Stultz, 22 Fla. 
263. Such recitals may be rebutted by 
parol. Cravens v. Dewey, 13 Cal. 40. 

3. Abbott's Trial Evid. 322,- 809; 
Clark V. Wells, 5 Gray (Mass.) 69; 
Maine v. Harper, 4 Allen (Mass.) 115; 
Meyer v. Reichardt, 112 Mass. 108; 
Germania F. Ins. Co. v. Stone, 21 Fla. 
555; Bonnett v. Glattfeldt, 120 111. i66; 
Brannin v. Foree, 12 B. Mon. (Ky.) 
506; Hess's Appeal, 112 Pa. St. 168; 
Manion Blacksmith and Wrecking Co. 
V. Carreras, 19 Mo. App. 162 ; White- 
house V. Bank of Copperstown, 48 N. Y. 
239; Himes v. Barnitz, 8 Watts (Pa.) 39; 
Hess's Appeal, 112 Pa. St. 168. 

But where the creditor is a witness 
in his own behalf the entries in his 
books may be read in evidence. Bon- 
nett V. Glattfeldt, 120 III. 166. 

In an action by a mine foreman to 
recover from the owners money ad- 
vanced by him to pay for labor, the 
time-account of the laborers whom he 
has paid, and the receipts given him 
by such laborers, are admissible. Mar- 
tin V. Victor, Mill & Min. Co., 19 Nev. 
180. 

4. See article on Books as Evi- 
dence, vol. 2, p. 467 ; I Greenl. Evid., 
(jlj 117, 118; I Smith's Lead Cs. (7th 
am. ed.) 552. Compare Veith v. Haage, 
8 Iowa, 163; Young v. Jones, 8 Iowa 
219. The entries must be made by the 
party himself in the course of his bus- 
iness, or by the person whose duty it 
was to make them. Tate on Evid., 276 ; 
Pitman v. Maddox, 2 Salk. 690 ; Ld. 
Raym. 732 ; Glynn v. Bank, 2 Ves. 40 ; 
Lefebure v. Worden, 2 Ves. 54; 
Merrill v. Ithaca etc. R. Co., 16 
Wend. (N. Y.) 586; 30 Am. Dec. s. c, 
130; Sterret t'. Bull, i Binn. (Pa.) 234. 
Compare Cummings v. Nichols, 13 
N. H. 420; s. c, 38 Am. Dee. 501. 



200 



Evidence of Payment. 



FA YMENT. 



The Burden of PrOTing. 



Entries in the creditor's books, showing payment in full of an 
account due him, zre prima facie evidence against him.* 

3. The burden of proving payment is on the party pleading it -^ 
but may be proved by circumstances.^ 



The form in whicli tiie account is 
kept or the entries made is not of es- 
sential importance. Smith v. Smith, 
4 Harr. (Del.) 532; Hall v. Field, 4 
Harr. (Del.) 533, note; Taylor f. Tuck- 
er, I Ga. 231, where the entries were 
made on scraps of paper {compare 
Barber v. Bennett, 58 Vt. 476;) s. c, 56 
Am. Rep. 565 ; Hall v. Glidden, 39 Me. 
44s ; Landis ■v. Turner, 14 Cal. 573, 
where they were made on a slate; 
Rowland v. Burton, 2 Harr. (Del.) 
288, when a notched stick was used; 
Miller v. Shay, 145 Mass. 162, where 
the entries were mere marks in a mem- 
orandum book. But a pocket memo- 
randum book has been excluded. Rich- 
ardson V. Emery, 23 N. H. 220; Thayer 
V. Deen, 2 Hill (S. Car.) 677. And 
any mode other than regular books is 
not looked upon with favor. Jones v. 
Jones, 21 N. H. 19; Hall v. Glidden, 
39 Me. 445 ; Faxon v. HoUis, 13 Mass. 
428; Matties v. Robinson, 8 Met.(Mass.) 
269 ; s. c, 41 Am. Dec. 505. 

There must have been a course of 
dealing between the parties. Corn- 
ing V. Ashley, 4 Den. (N. Y.) 354. 

1. Guest V. Burlington Opera House 
Co., 74 Iowa 457. See Beaver v. Tay- 
lor, I Wall. (U. S.) 637; Reynolds v. 
Sumner (111. 1888), 14 N. E. Rep. 661. 
And compare Libbey v. Brown, 78 Me. 
492 ; Oberg v. Breen, 50 N. J. L. 145. 

But where both the creditor and the 
person to whom the payments are 
credited testify that the account was 
not paid, and the action is against an- 
other party, the question of payment 
should be left to the jury. Guest v. 
Burlington Opera House Co., 74 Iowa 

457. 

2. 2 Greenl. Evid., §516; Shulman 
V. Brantley, 50 Ala. 81 ; Adams v. 
Field, 25 Mich. 16 ; Atwood v. Corn- 
wall, 25 Mich. 142 ; Star Wagon Co. v. 
Matthiessen, 3 Dak. 233 ; Van Buskirk 
V. Chandler, 18 Neb. 584; Tootle v. 
Maben, 21 Neb. 617; Baldwin v. 
Clock, 78 Mich. 201 ; Bell's Appeal, 
122 Pa. St. 486; Wingett's Appeal, 
122 Pa. St. 486; Snodgrass v. Cald- 
well (Ala. 1890), 7 So. Rep. 834; 
Stokes V. Taylor (N. Car. 1887), 12 
S. E. Rep. ?io; Hutchins v. Hamil- 
ton, 34 Tex. 290 ; Irvin v. Gernon, 



18 La. Ann. 288 ; Winter v. Simon- 
ton, 3 Cranch (C. C.) 104; Ed- 
monds V. Edmonds, i Ala. 401; Mc- 
Lendon v. Hamblin, 34 Ala. 86; Caul- 
field V. Sanders, 17 Cal. 569; Powel v. 
Swan, 5 Dana (Ky.) i; Witherell v. 
Swan, 32 Me. 247 ; Yarnell v. Ander- 
son, 14 Mo. 619; Buzzell V. Snell, 25 N. 
H. 474; Smith V. Burnet, 17 N. J. Eq. 
40; McKinney r. Slack, 19 N. J. Eq. 
164; Lovelock V. Gregg (Colo. 1890), 
23 Pac. Rep. 86 ; Gutterman v. Schroe- 
der, 40 Kan. 507 ; Doolittle v. Gavigan, 
74 Mich. 11; Zachary v. Phillips, 
loi N. Car. 571 ; Hussey v. Culver 
(Supreme Ct.), 6 N. Y. Supp. 466; 
Rogers v. Priest, 74 Wis. 538. 

Where the purchase money of land 
was payable in instalments and the 
legal title is retained by the vendor, 
the burden of proof is on the purchas- 
er to show payment. McCurdy v. 
Middleton, 82 Ala. 131. 

The fact that since the date of the 
note sued on the payee has received 
from the maker checks to an amount 
sufficient to extinguish the note, does 
not of itself establish the payment of 
the particular note, nor does it shift 
the burden of proof. Smith's Appeal, 
52 Mich. 415. 

3. Declarations of the creditor, or of 
his agent, that the debt is discharged 
Z.XS frima facie evidence of payment. 
State Bank v. Wilson, i Dev. L. (N. 
Car.) 484. And an admission of payment 
in full is competent, though the specific 
payments as shown by the other evi- 
dence are less than the debt. Hender- 
son V. Moore, 5 Cranch (U. S.) 11. 
Evidence that the money was sent 
by mail is admissible, and if strength- 
ened by corroborating circumstances 
becomes prima facie evidence of pay- 
ment. Waydell v. Velie, i Bradt. 
(N. Y.) 277. 

Where plaintiff had, some eighteen 
months before suit brought, received 
from the defendant accounts and 
claims for the purpose of <;ollecting 
them and applying the proceeds on the 
note sued on, evidence of this fact is 
relevant on a plea of payment. Cuth- 
bert V. Newell, 7 Ala. 457. 

In a suit against a maker of a note 
he offered in evidence to show pay- 



201 



Evidence of Faynjent. 



FA YMENT. 



The Burden of Froving-. 



ment a check on a bank, signed by his 
wife, in favor of the plaintiff and in- 
dorsed by the latter. Held, to be ad- 
missible, and, in the absence of proof 
of any other transaction to which the 
check could be applied, to be evidence 
of payment of the note. Murphy v. 
Breck, 33 Pa. St. 235. To same effect, 
Mountford v. Harper, 16 Mees. & W. 
825; 16 L. J. Exch. 182. 

The fact that the creditor having no 
money, called upon the debtor and 
came away with money in his posses- 
sion which he said he got from the 
debtor, is evidence of payment. Whii- 
ler V. Drake, 35 Iowa 103. But evi- 
dence that the debtor borrowed 
money for the , ostensible purpose 
of paying is not admissible. Reed v. 
Pierson, 3 N. J. L. 681. Compare Bur- 
len V. Hubbell, i Thomp. & C. (N. Y.) 
335. 

An indorsement on a note or bond 
made by the payee or obligee without 
the privity of the maker or obligor, is 
inadmissible as evidence of payment in 
favor of the party making it, unless it 
be shown that it was made at a time 
when it would be against the interest 
of the party making it. Roseboom v. 
Billington, 17 Johns. (N. Y.) i82.. And 
see Walker v. Wykoff, 14 Ala. 560; 
Marshall v. Daniels, 18 N. H. 364. 
Compare Morris v. Morris, 5 Mich. 171. 

Where a testator had promised a 
certain sum to one named as a leg- 
atee, and an additional sum as 
interest, the fact that the legacy was 
of a sum equal to the principal is not 
evidence to prove satisfaction thereof. 
Parker v. Coburn, 10 Allen (Mass.) 82. 
See Strong v. Williams, 12 Mass. 
390; s. c, 7 Am. Dec. 81. 

A party holding three notes credited 
a partial payment on the first note. He 
afterwards received a sum amounting 
to the exact balance due on that note, 
and it appeared that the note was de- 
livered to the maker. The holder 
subsequently received a further sum 
more than sufficient to pay the second 
note, which he applied to the payment 
of that note, crediting the surplus on 
the third note. Held, that the evi- 
dence was sufficient to show that the 
first note had been fully paid. Lind- 
say V. McCormick, 82 Va. 479. 

A check drawn by the defendant in 
favor of the creditor or bearer, with 
the bank's canceling mark upon it 
and produced by the debtor, is no ev- 
idence of a payment. Lowe i'. Mc- 
Clerg, 3 Cranch (C. C.) 254. 



A party indebted to his step-mother, 
repeatedly offered to pay her the debt 
and she refused to receive it, declaring- 
that she never intended to collect it 
from him, as he had made the money 
for her, and that if not paid in her 
lifetime it was to be his. The debt was 
not paid in her lifetime. Held, that 
the above facts constituted evidence 
only of an unexecuted intention to 
discharge the debt, and that the debt 
was not in fact extinguished. Mc- 
Guire V. Adams, 8 Pa.St. 286. 

Defendants were sued as obligors in 
a bond and pleaded payment. In sup- 
port of the plea they introduced evi- 
dence tending to show that one of them 
placed in the hands of a third person 
money suificient to pay the debt, and 
the latter informed plaintiff that he 
had the money to pay off the bond; 
that plaintiff refused to receive the 
money, saying that he owed the oth- 
er obligor more money, though he did 
not state that the debt was settled. 
Held, that this was not sufficient to 
prove payment. Green v. Buckner, 6 
Leigh (Va.) 82. 

Where real estate was sold and 
notes secured by mortgage given for 
the purchase money, and the proper- 
ty transferred and laid off in lots 
and a portion resold, bonds and notes, 
being taken for the latter sales ; and 
where a suit for foreclosure was 
brought and payment set up as a de- 
fense, it was proper, the principal 
owner of the property being dead,, 
to permit the introduction in evi- 
dence of a letter from the father of 
the deceased owner to the plaintiff, 
inclosing a receipt from plaintiff's 
attorney to the deceased for a sum 
of money in excess of the mortgage 
debt, said sum having been paid at the 
request of the plaintiff, the letter con- 
necting the payment with the mort- 
gage, and being admitted with other 
evidence in relation to the transac- 
tions of the parties. Cook v. Wood- 
ruff, 97 Ind. 134. 

The final settlement of a guardian 
showing a sum due the ward, togeth- 
er with an order of the court ap- 
proving the settlement and discharg- 
ing the guardian, does not constitute 
evidence of the payment of the money 
to the ward. Naugle v. State, loi 
Ind. 284. 

Where an indorsement on a note 
was shown, and a separate receipt of 
a different date but of a like amount 
signed by plaintiff's agent, this is not 



202 



Presnmption of Payment. 



PA YMENT. 



From Circamstances. 



X. Presumption of Payment — 1. From Circumstances. — A pre- 
sumption of payment may arise from the circumstances of the 
case, in the absence of positive evidence either way, and such 
presumption is a question for the jury.^ The presumption is not 



necessarily proof of two different pay- 
ments. Doty V. Janes, 28 Wis. 319. 

Tiie mother of Mrs. H and defend- 
ant, who were her only children, at 
some period before her death gave to 
Mrs. H a considerable amount of prop- 
erty with the understanding that she 
would thereafter make her home with 
Mrs. H. After some time had elapsed, 
she became dissatisfied, and changed 
her home to defendant's home. About 
a year after the change, defendant and 
her mother had an accounting, though 
it does not appear whether the same 
was in full, and thereupon defendant 
executed to her mother a note and 
mortgage. The mother continued to 
live with defendant until her death. 
During that time she employed an at- 
torney to draw her will, and instructed 
him that defendant was then paying 
the note by boarding her, the testa- 
trix, and that at her death the note 
was to be given up and the mortgage 
canceled. The will was drawn as in- 
structed and duly executed, but Mrs. 
H afterwards, to use her own lan- 
guage, compelled her mother to -de- 
stroy it. Held, that this was evidence 
sufficient to establish a part payment 
of the note. Hughes v. Walker, 14 
■ Oregon 481. 

In the following cases the evidence 
was held to be sufficient to prove pay- 
ment: Kuder v. Twidale, 20 Neb. 390; 
Hammond v. Jewett, 22 Neb. 363. 

For various questions relating to 
the competency and weight of evi- 
dence of payment in particular cases, 
see Pickle v. People's Nat. Bank, 88 
Tenn. 380; Melvin v. Stevens, 84 N. 
Car. 78 ; Mason v. Marshall, 39 Kan. 
424; Oldham v. Henderson, 4 Mo. 295; 
Appeal of Schuey, 130 Pa. St. 16; Ap- 
plegate t;., Baxley, 93 Ind. 147; Baughan 
V. Brown, 122 Ind. 115; Pryor v. 
Wood, 31 Pa. St. 142 ; Maddox v. 
Bramlett (Ga. 1889), 11 S. E. Rep. 128; 
McNail V. Welch, 26 111. App. 482; 
McRae v. McDonald, 57 ,Ala. 423; 
Amos V. Flournoy, 80 Ga. 771 ; Block 
V. Cross, 36 Miss. 549; Amis v. Mer- 
chants' Ins. Co., 2 La. Ann. 594 ; Doo- 
little V. Gavagan, 74 Mich. 11 ; Crain v. 
Barnes, i Md. Ch. 151 ; Crowe v. Col- 
beth, 63 Wis. 643 ; Daniels v. Moses, 



12 S. Car. 130; Cushman v. Hall, 28 
Vt. 656; Dews V. Pickard, R. M. 
Charlt. (Ga.) '479; Carson v. Line- 
burger, 70 N. Car. 173 ; Swan v. 
Brewster, i N. Y. Supp. 584; Succes- 
sion of Moreira, 16 La. Ann. 368; 
Tolliaferro v. Ives, 51 111. 247; Elston 
V. Kennicott, 52 111, 272; Stevens v. 
Gainesville Nat. Bank, 62 Tex. 499; 
Smith V. Smith, 6 N. Y. Supp. 90; 
Smith V. Camp (Ga. 1889), 10 S. E. 
Rep. 539; Griffin v. Petty, loi N. Car. 
380; Green v. Buckner, 6 Leigh (Va.) 
82 ; Grimmell v. Warner, 21 Iowa 11 ; 
Just V. Porter, 64 Mich. 565 ; Woods 
V. Hamilton, 39 Kan. 69; Bradley v. 
Long, 2 Strobh. (S. Car) 160; Brown 
V. Cahalin, 3 Oregon 45 ; Brown v. 
Sadler, 16 La. Ann. 206 ; Broward v. 
Doggett, 2 Fla. 49; Scott v. Scott, 36 
Ga. 484; Rogers v. Priest, 74 Wis. 538; 
King V. Bush, 36 111. 142 ; Koltze v. 
Messenbrink, 74 Iowa 242 ; Reed v. 
Rice, 25 Vt. 171 ; HoUaday v. Little- 
page, 2 Munf. (Va.) 316; Hussey v. 
Culver (Supreme Ct.), 6 N. Y. Supp. 
466; Holcomb V. Campbell, 118 N. Y. 
46; Goldsmid v. Lewis Co. Bank, 7 
Barb. (N. Y.) 427; Filer v. Peebles, 8 
N. H. 226; Flick V. Fridley, 83 Va. 
777; Meyer v. Reichardt, 112 Mass. 
108; Watts V. Shewell, 31 Ohio St. 
331; Fuller T'. Smith, 5 Jones Eq. (N. 
Car.) 192; Carr v. Beck, 51 Pa. St. 
269; Church V. Fagin, 43 Mo. 123; 
Smith V. Camp, 84 Ga. 117; McCurdy 
V. Middleton (Ala. 1890), 7 So. Rep. 
655 ; Lindsey v. Le Mars Bank, 79 
Iowa 607; Joiner v. Enos, 23 111. App. 
224; Selser's Assigned Estate, 7 Pa. 
Co. Ct. Rep. 417 ; Grant t>. Goocli, 105 
N. Car. 278; Gray v, Herman, 75 Wis. 
453 ; Allison v. McClun, 40 Kan. 525 ; 
Gafford V. American Mortgage etc. 
Co., 77 Iowa 736; McNail v. Welch, 
26 111. App. 482 ; Smith v. Smith, 6 N. 
Y. Supp. 90 ; Leith v. Carter, 83 Va. 
889; Perkins v. Hawkins, 9 Graft. 
(Va.) 649; Lovelock v. Gregg (Colo. 
1890), 23 Pac. Rep. 86. 

1. 2 Greenl. Evid. (13th ed.), § 527; 
2 Whart. Evid., §§ 1362, 1363; Abbott's 
Trial Evid., 809, 810; Williams v. 
Peal, 4 Dev. & B. (N. Car.) 471 ; Smith 
V. Nevin, 31 Pa. St. 238; Shaw v. 
Bowie, 3 Brev. (S. Car.) 409; Stephens 



203 



Presumption of Fayment. 



PA YMENT. 



From Circumstances. 



-:■. Stephens, i McCord (S. Car.) 
87. 

Where notes were turned over to 
the creditor by the debtor, his receipt 
and retention of them for three or 
four years, whether they were col- 
lected or collectible or not, raises the 
presumption that they were taken in 
payment. Hapgood Plow Co. v. Mar- 
tin, 16 Neb. 27. See, to same ef- 
fect. Day V. Clarke, i A. K. Marsh. 
(Ky.) 521. 

Slight proofs of payment do not 
raise a presumption of payment, ex- 
cept where there is such confidential 
relation between the parties as will 
call into exercise that artificial pre- 
sumption which courts resort to in 
such cases to aid and help out de- 
fective proof. Vaughan v, Lewellyn, 94 
N. Car. 472. See Atkins v. Withers, 
94 N. Car. 581. 

The debtor may show as presump- 
tive evidence of payment that after 
the time when the debt became due 
the creditor gave to him an obligation 
or security for the payment of money. 
De Freest v. Bloomingdale, 5 Den. 
(N. Y.) 304; Duguid V. Ogilvie, 3 E. 
D. Smith (N. Y.) 527 ; s. c, i Abb. Pr. 
(N. Y.) 145; Chewsing v. Proctor, 2 
McCord (S. Car.) 11, 15; Callaway?'. 
Hearn, i Houst. (Del.) 607. 

But no presumption of payment 
arises from the fact that the debtor, in 
enumerating his debts, made no men- 
tion of the one in question. Aber- 
crombie v. Sheldon, 8 Allen (Mass.) 
532. 

Nor, except as bearing on a pre- 
sumption arising from lapse of tiftie, 
can it be shown that the debtor was in 
the habit of paying his debts promptly. 
Abercrombie v. Sheldon, 8 Allen 
(Mass.) 532. Or was solvent or wealthy. 
Church V. Fagin, 43 Mo. 123; Veazie 
T>. Hosmer, II Gray (Mass.) 396; Hil- 
taxiv. Scarborough, 5 Gray (Mass.) 422. 
See Beach v. Allen, 7 Hun (N. Y.) 
441. And compare Orr v. Jackson, i 
111. App. 439. 

The payment of a subsequent debt 
or instalment of a debt, raises some 
presumption that prior debts have 
been paid. Mathews v. Light, 40 Me. 
394; Attleborough v. Middleborough, 
10 Pick (Mass.) 378 ; Patterson v. 
O'Hara, 2 E. D. Smith (N. Y.) 58; 
Decker v. Livingston, 15 Johns. (N. 
Y.) 479. Comfare Sennett v. John- 
son, 9 Pa. St. 335; Ham v. Barret, 28 
Mo. 388; Bougher v. Kimball, 30 Mo. 
193- 



Where it is shown that the debtor 
has paid interest after the day of pay- 
ment, this raises a strong presump- 
tion that the debt has not been paid. 
3 Phil. Evid. 485. 

Where testator had given a bond for 
certain services rendered, the fact 
that he names the obligee in the bond 
as one of his legatees does not raise 
the presumption that the legacy was 
intended as a payment of the bond, 
unless it is shown that the legacy was 
given in consideration of the same 
services. Strong v. Williams, 12 Mass. 
391 ; s. u., 7 Am. Dec. 81. 

The signature of the maker of a 
promissory note was torn off, but it 
still remained in the possession of the 
payee. Held, not to raise a presump- 
tion of payment. Powell Z', Swan, 5 
Dana (Ky.) i. 

An indorsement on a note of part 
payment is presumptive evidence of 
such payment. Morris v. Morris, 5 
Mich. 171. Though it is made with 
pencil. Greenough v. Taylor, 17 111. 
602. Compare Walker v. Wykoflf, 14 
Ala. 560; Marshall v. Daniels, 18 N. 
H. 364; Roseboom ». Billington, 17 
Johns. (N. Y.) 182. 

In an action against the payee of a 
note, the note being offered in evi- 
dence by the plaintiff, sundry indorse- 
ments of payments, appeared thereon, 
which were not shown to be in the 
handwriting of the payee. Held, that 
these indorsements were prima facie 
made by the plaintiff, and were pre- 
sumptive evidence that the payments 
had been made. Brown i'. Gooden, 16 
Ind. 444. 

Where the same person is adminis- 
trator of the estates of a debtor and 
creditor, and a decree is rendered 
against him as administrator of the 
former in favor of himself as adminis- 
trator of the latter, which is void for 
want of jurisdiction in the court to 
make it, there is no presumption in 
his favor or in favor of a surety on his 
bond that he has paid or transferred 
the funds from the debtor to the credi- 
tor estate. Eatman v. Eastman, 82 
Ala. 223. 

A performed work under three con- 
tracts with the State. Under the first 
he had been largely overpaid, while 
on the other two there were amounts 
still due, amounting in the aggregate 
to less than the overpayment on the first 
contract. Held, that such overpayment 
will be presumed to have been applied 
by the creditor in payment of the other 



204 



Fresiunption of Payment, 



PA YMENT. 



Payment or Loani. 



conclusive, and may be rebutted by circumstances.* 

2. Payment or Loan. — The mere delivery of money by one party 
to another, unexplained, is presumptive evidence of payment of 
an antecedent debt, and not of a loan.* 



obligations as they accrued. Says Dan- 
FORTH, J. . "The money received by 
the claimants in overpayment on one 
contract must be deemed to have been 
money in their hands for the use of 
the State, the State entitled to its ap- 
plication, and the claimants be pre- 
sumed to have applied it in payment 
of the other obligation the moment 
it accrued. The existence of means of 
payment in the hands of the creditor, 
and the lapse of time, are conclusive 
evidence of the pre-existing fact of an 
actual discharge of the accruing debt, 
or are of themselves facts which re- 
quire a court of equity to adjudge such 
application to have been made. Equity 
requires that one demand should ex- 
tinguish the other by deducting the 
less from the greater. Belden v. State, 
103 N. Y. 1. 

Where a broker renders accounts to 
his principal in which no mention is 
made of a claim for which the princi- 
pal, jointly with others, was liable, the 
presumption is raised that the joint 
debt had been paid, which presumption 
is subject to explanation. Smith v. 
Tucker, 2 E. D. Smith (N. Y.) 193. 

Where one party had paid a note at 
a bank as surety for another, and af- 
terwards two different settlements 
were had between the parties, it will 
be presumed that the note was in- 
cluded in one or the other of the settle- 
ments. Ward V. Grayson, 9 Dana 
(Ky.) 280. 

To same effect as to book account, 
Bushee v, Allen, 31 Vt. 631. 

The following additional cases may 
be referred to as raising questions of 
presumption of payment under par- 
ticular circumstances: M'Rae v. Boast, 
3 Rand. (Va.) 481; Morrison v. Collins 
(Pa.), 17 Atl. Rep. 753; Mechanics' 
Bank w. Wright, 53 Mo. 153; Merrick 
V. Hulbert, 17 111. App. 90; Re Oakley, 
2 Edw. Ch. (N. Y.) 478; Norvell v. 
Little, 79 Va. 141; Neal v. Brainerd, 24 
Me. 115; Tunstall v. Withers, 76 Va. 
892; Turner v. Turner, 79 Cal. 56^;; 
Tyler v. Heidorn. 46 Barb. (N.Y.) 439; 
Reynolds v. Richards, 14 Pa. St. 205 ; 
Calwell V. Prindle, 19 W. Va. 604; 
Rodman v. Hoops, i Dall. (U. S.) 85; 
Mills V. Hyde, 19 Vt. 59; s. c, 46 Am. 



205 



Dec. 177; Morrison v. Collins, 127 Pa. 
St. 28; Scott V. Isaacs, 85 Va. 712; 
Clark V. Bogardus, 2 Edw. Ch. (N. Y.) 

387- 

As to force of circumstances in con- 
nection with the lapse of time, see in- 
fra, this title. Payment or I^oan. 

1. 2 Whart. Evid., § 1364; Foulk v. 
Brown, 2 Watts (Pa.) 209; Strohm's 
Appeal, 23 Pa. St. 351; Bushee v. 
Allen, 3 Vt. 631. 

As by showing the debtor's poverty. 
Farmers' Bank v. Leonard, 4 Harr. 
(Del.) 536. Circumstances making it 
inconvenient to pay or receive the 
debt. McClellan v. Crofton, 6 Me. 
307; Crooker v. Crooker, 49 Me. 416; 
Eustace v. Gaskins, i Wash. (Va.) 188. 

2. I Greenl. Evid. (13 £d.), \ ^8; 
Sayles v. Olmstead, 66 Barb. (N. Y.) 
590; Duguid V. Ogilvie, 3 E. D. Smith 
(N. Y.) 527; Poucher -u. Scott, 98 N. 
Y. 422; Hansen v. Kirtley, 11 Iowa 
565; Rohrbracker v'. Schilling, 12 La. 
Ann. 17; Fletcher v. Manning, 12 
Mees. & W. 571; 13 L.J. Exch. 150. 

Where the debtor draws a check in 
favor of his creditor, and the creditor 
receives the money thereon, the pre- 
sumption is that it was in payment of 
the debt. Masser v. Bowen, 29 Pa. St. 
128; s. c, 72 Am. Dec. 619. 

Where a father who is indebted to 
his children conveys to them property 
of a greater value than the amount of 
the indebtedness, the debt will, in the 
absence of proof of a contrary intention, 
be presumed to have been paid therebv. 
Kelley v. Kelley, 6 Rand. (Va.) 176; "s. 
c, 18 Am. Dec. 710. 

Compare Perit v. Pittfield, 5 Rawle 
(Pa.) 166. 

While the mere delivery of money by 
the payer to the holder of a note is pre- 
sumptive evidence of paj'ment, this pre- 
sumption may be rebutted by circum- 
stances. Dougherty v. Deeney, 45 
Iowa 443. 

The payee of a check is not pre- 
sumed to have received pa3'ment where 
it is not shown to have been indorsed. 
The question of payment is for the 
jury. Smith's Appeal, 52 Mich. 415. 

A testator, some three months prior 
to his death, gave his check for $100 to 
defendant, who drew the money there- 



FreBomption of Payment. 



PA YMENT. Fosaession of Instrument, ete. 



3. From Possession of Instrument by Debtor. — A bill of exchange, 
promissory note, or order for the payment of money, found in the 
hands of the drawee or maker, is presumptive evidence of its pay- 
ment.' 



on. It appeared that the testator was a 
snug business man, substantially out of 
debt, and not a borrower of money. 
Defendant gave no proof that he had 
rendered any services to testator, or 
sold him any property for the $ioo, 
and at that time he owed interest in 
excess of that amount on his mortgage 
to the testator, and when told by the 
executor that he found the claim of $ioo 
due from him to the estate, defendant 
made no repl}'. Held, that while rest- 
ing upon the cheque alone the legal 
presumption would be that it was 
given in payment of a debt, the circum- 
stances justified -the finding that it was 
a loan. Stimson v. Vroman, 99 N. Y. 

74- 

1. 1 Greenl. Evid. (13th ed.), §§ 38, 527; 
Hill V. Gayle, i Ala. 275; Lipscomb v. 
DeLemos, 68 Ala. 592; Fedens v. 
Schumers, 112 111. 263; Callahan v. 
First Nat. Bank, 78 Ky. 604; s. c, 39 
Am. Rep. 262; Levy v. Merrill, 52 
How. Pr. (N. Y.) 360; Skannel v. 
Taylor, 12 La. Ann. 773; Succession of 
Penny, 14 La. Ann. igo; Chandler v. 
Davis, 47 N. H.462; Blount v. Starkey, 
T Tayl. (N. Car.) no; Close v. Fields, 
2 Tex. 232; s. c, 9 Tex. 422; s. c, 13 
Tex. 623; Hilly ard v. Crabtree, 11 Tex. 
264; s. c, 62 Am. Dec. 475; Hays v. 
Samuels, 55 Tex. 560. 

A due bill found among the papers 
of a deceased administrator, signed by 
him individually and payable to one of 
the distributees of the estate, is not ad- 
missible against the payee as showing a 
settlement between her and the admin- 
istrator on account of her distributive 
interest in the estate, in the absence of 
evidence tending to show that the 
payee ever had possession of it or 
agreed to accept it. Hart v. Kendall, 
82 Ala. 144. 

The surrender of a note is prima 
facie evidence of its payment. Smith 
V. Harper, 5 Cal. 329. 

So the production of a note secured 
by mortgage, on the hearing of a bill 
to foreclose, raises the presumption 
that it has not been paid, and is still 
the property of the plaintiff. Stiger v. 
Bent, in 111. 328. Compare Thorp v. 
Feltz, 6 B. Mon. (Ky.) 6. 

The possession by the drawer of a 



canceled bank cheque, who testifies 
that on the day of its date he made ar^d 
delivered it to the drawer in payment 
of a debt, is friina facie evidence of 
the payment of the amount named in 
the cheque. Peavy v. Hovey, 16 Neb. 
416. 

The cancellation of a cheque 'upon a 
bank, and its retention by the bank, is 
evidence of its payment. Conway v. 
Case, 22 111. 127. 

The fact that the payee of a note 
delivered it to the maker is not conclu- 
sive evidence of payment of the note, 
but is subject to explanation. Fellows 
V. Kress, j Blackf. (Ind.) 536. 

As to what circumstances are suffi- 
cient to rebut the presumption, see 
Sutphen v. Cushman, 35 111. 186. 

Evidence is admissible that another 
note of the same tenor has been sub- 
stituted for the one in the maker's pos- 
session. Potts V. Coleman, 67 Ala. 221. 

Mere possession of a policy of in- 
surance, without anything more, is not 
evidence that the premium has been 
paid. Millick v. Peterson, 2 Wash. ■ 
(U.S.) 31. 

Possession by one of two joint 
makers raises the presumption. Chan- 
dler V. Davis, 47 N. H. 462. 

An indorsement upon a promissory 
note to the effect that it was endorsed 
by the payee to the surety for value re- 
ceived, together with the possession of 
the note by the surety, raises the pre- 
sumption, in the absence of controver- 
ting evidence, that the surety had paid 
the note and was its owner. Waldrip 
V. Black, 74 Cal. 409. 

Where a written instrument is for 
an expressed consideration, but is 
silent as to whether or not the consid- 
eration has been paid, the presumption 
of law is that it was paid at the time of 
delivery of the instrument ; but this 
presumption is subject to be rebutted. 
Solary v. Stultz, 22 Fla. 263. 

Where a sheriff brought suit on his 
deputy's bond, alleging it to be lost, 
and the deputy denied any indebted- 
ness, and exhibited the bond in answer, 
the mere possession of the bond, un- 
accounted for was held insufficient to 
prove an extinguishment thereof, there 
being evidence tending to show that 



206 



Tresumption of Payment. 



FA YMENT. 



Lapse of Time. 



4. Same Party Debtor and Creditor. — Where the same party is a 
debtor in his individual capacity and a creditor in a representative 
capacity the presumption of payment will vary according to the 
circumstances.* 

5. From Lapse of Time. — After twenty years a presumption of 
payment arises as to every instrument, whether under seal or 
otherwise,* and a jury may infer payment from circumstances, 



at the last settlement between the par- 
ties there was a balance due from the 
deputy, and the bond was not given up. 
Graves v. Wood, 3 B. Mon. (Ky.) 34. 

And see further on this head : Porter 
-V. Nelson, I2i Pa. St. 628 ; Carroll t'. 
Bowie, 7 Gill. (Md.) 34; Bracken v. 
Miller, 4 W. & S. (Pa.) 102 ; Turner v. 
Turner, 80 Cal. 141. 

1. Winship v. Bass, 12 Mass. 199, 205. 
■"When an administrator becomes a 
purchaser of real estate sold by him- 
self as such, he occupies antagonistic 
relations — of purchaser claiming an 
adverse right, and of administrator 
representing the heirs as to the collec- 
tion and distribution of the purchase 
money. Having the right to receive 
payment as administrator, and being 
under obligation to pay as such pur- 
chaser, presumed payment arises when 
the purchase money matures, so far as 
to render him chargeable therewith in 
the settlement of his administrator's 
accounts, but not for the purpose of 
entitling him to a conveyance of title. 
So long as he continues administrator, 
and the purchase money is' unac- 
counted for, there is no payment such 
as is required by the statute, to au- 
thorize the court to order a conveyance 
of title. When the purchase money 
becomes due, the heirs have the right 
to elect whether they will treat it as 
paid and charge the administrator, or 
as unpaid, and resort to the law to en- 
force its payment." Ligon v. Ligon, 
84 Ala. 555. 

Where an administrator is a creditor 
of the estate, his debt will be presumed 
to have been paid whenever he re- 
ceives assets which he can lawfully ap- 
ply to the payment of debts. And if 
he receives Confederate currency in 
payment of debts due the estate, he 
must apply the same currency in dis- 
charge of his own debt. Dickie v. 
Dickie, 80 Ala. 57 ; compare Trimble 
V. Fariss, 78 Ala. 260. 

Where an executor recovers judg- 
ment against a debtor of the estate, and 
the latter becomes administrator de 
bonis non after the death of the exe- 



cutor, the judgment will be considered 
as paid and extinguished, and the 
amount thereof as assets in the hands of 
the administrator. Lane v. Westmore- 
land, 79 Ala. 372 ; Donnan v. Watts, 
22 S. Car. 430. 

Where one and the same person is 
creditor in one representative capacity 
and debtor in another, and it becomes 
his legal duty to appropriate funds re- 
ceived in the latter capacity to claims 
held in the former, it will be presumed 
that such appropriation was made. 
Ruffin -v. Harrison, 81 N. Car. 208; 
». c, 86 N. Car. 190. 

2. 2 Bouv. Law Diet. ; Perry on 
Trusts, § 869; 3 Phil. Evid. 4S5 ; 2 
Whart. Evid. § 1360; Colsell v. Budd 
I Camp. 2 ; Dunlop v. Ball, 2 Cranch 
(U. S.) 180; Higginson t'. Mein, 4 
Cranch (U. S.) 420; Kingsland v. 
Roberts, 2 Paige (N. Y.) 193; Jack- 
son V. Hotchkiss, 6 Cow. (IST. Y.) 
401 ; Tilghman v. Fisher, g Watts. 
(Pa.) 441 ; Cope-?'. Humphreys, 14 S. & 
R. (Pa.) 15; Lash w. Von Neida, 109 
Pa. St, 207 ; Peters' Appeal, 106 Pa. 
St. 340 ; King v. Coulter, 2 Grant's 
Cas. (Pa.) 77; Blake v. Quash, 3 Mc- 
Cord ( S. Car. ) 340 ; Sartor v. Beaty, 

25 S. Car. 293 ; McKinlay v. Gaddy, 

26 S. Car. 573 ; Moore v. Pogne, i Duv. 
(Ky.) 327; Davenport v. Labaure, 5 La. 
Ann. 140 ; Copley v. Edwards, 5 La. 
Ann. 647 ; Wooten v. Harrison, 9 La. 
Ann. 234. 

O'Brien v. Coulter, 2 Blackf. (Ind.) 
421; Fleming v. Emory, 5 Harr. (Del.) 
46; Clark V. Clemen, 33 N. H. 563; Mill- 
edge V. Gardner, 33 Ga. 397; Earned v. 
Earned. 21 N. J. Eq. 24"$ ; Atkmson 
V. Dance, 9 Yerg. (Tenn.) 424 ; s. c, 30 
Am. Dec. 422; Young f. Price, 2Munf. 
(Va.) 534; Wells V. Washington, 6 
Munf. (Va.) 534; Sweetser v. Lowell, 
33Me. 446. ■ And the rule applies not 
only to ordinary bonds and specialties. 
Cottle V. Payne, 3 Day (Conn.) 289; 
Durham v. Greenly, 2 Harr. (Del.) 
124; Bartlett v. Bartlett, 9 N. H. 398; 
Shepherd's Appeal, 2 Grant. Cas. 
(Pa.) 402 ; Levy v. Hampton, [ Mc- 
Cord (S. Car.) 1.^5 ; Haskell v. Keen, 



207 



Presumption of Payment. 



PA YMENT. 



lapse cf Time. 



2 Nott & M. (S. Car.) i6o; Tinsley v. 
Anderson, 3 Call (Va.) 329. But also 
to a recognizance entered into in 
court. Ankeny v. Penrose, 18 Pa. St. 
190. The presumption applies to a con- 
tract for the purchase of land.. Mc- 
Cormick v. Evans, 33 111. 327 ; Morri- 
son V. Funk, 23 Pa. St. 421. And to 
money due for taxes. Dalton v. Beth- 
leham, 20 N. H. 505; Colebrook v. 
Stewartson, 28 N. H. 75 ; Andover 
T'. Merrimack, 37 N. H. 437. And to 
money due a legatee. Hayes v. Whitall, 
13 N. J. Eq. 241 ; Okeson's Appeal, 2 
Grant's Gas. (Pa.) 303. Comfare 
Strohm's Appeal, 23 Pa. St. 351. 

A church claimed two legacies, as to 
the right to which there was some 
doubt. Upon the church executing a 
bond payable in three years, secured 
by mortgage, and which was delivered 
as an indemnity to the executors, the 
latter paid over the amount of the leg- 
acies. Twenty-six years afterward the 
residuary legatee sought to enforce the 
mortgage. Held, that his right was 
barred by lapse of time, though the 
church had in fact no right to the leg- 
acies. Newcomb v. St. Peter's Church, 
2 Sandf. Ch. (N. Y.) 636. 

Payment presumed after thirty years. 
O'Brien v. Holland, 3 Blackf. (Ind.) 
490; Frane v. Kenny, 2 A. K. Marsh. 
(Ky.) 145; s. c, 12 Am. Dec. 367; ^ 
irrespective of probabilities in fact. 
DownstJ. Sooy,28N.J.Eq.55. See Ar- 
den w. Arden, I Johns. Ch. (N. Y.) 313. 

The twenty year presumption ap- 
plies in Missouri to bonds executed 
prior to 1835, and to judgments, the 
common law presumption not being 
affected by the statute. Srhith v. Ben- 
ton, 15 Mo. 371 ; Clemens v. Wilkinson, 
10 Mo. 97. 

' The common law presumption of 
payment applies only to cases where 
twenty years have elapsed after the 
right of action accrued. Updike v. 
Lane, 78 Va. 132. Compare Didlake 
V. Robb, I Woods (U. S.) 680. 

The presumption of payment of a 
mortgage debt arising from possession 
and lapse of time was formerly resorted 
to for want of a statute of limitation. 
Lewis V. Schwenn, 93 Mo. 26. And 
courts of equity act in analogy to the 
statute of limitations. Therefore, if a 
bill be filed to foreclose a mortgage 
after the lapse of so great a time that 
complainant could not maintain an ac- 
tion at law for the recovery of the mort- 
gaged premises, a court of equity will 
presume payment and satisfaction of the 



mortgage debt. McDonald v. Sims, 3 
Ga. 383 ; Field v. Wilson, 6 B. Mon. 
(Ky.) 497; Martin v. Bowker, 19 Vt. 
526. 

But the presumption is not available 
to the owner of the equity of redemp- 
tion to defeat a foreclosure, if the 
mortgagor has made payments upon 
the bond secured by the mortgage 
within twenty years before the com- 
mencement of foreclosure proceedings. 
New York L. Ins. & Trust Co. v. Cov- 
ert, 3 Abb. App. Dec. (N. Y.) 350. 

The presumption applies to rent re- 
served in a lease. Lyon v, Odell, 65 
N. Y. 28. But a non-payment for 
more than twenty years does not raise 
the presumption that the covenant to 
pay rent has been released and dis- 
charged. Lynn v. Odell, 65 N. Y. 28. 

When a note is payable on demand, 
a failure topresent it for any time short 
of the statute of limitations will not 
raise a presumption that it has been 
paid. Smith's Appeal, 52 Mich. 415. 
See also Aultman v. Connor, 25 111. 
App. 654. 

A presumption of payment does not 
arise from the fact that no interest has 
been paid for nineteen years. Boon v. 
Pierpont, 28 N. J. Eq. 7. 

A bill for an accounting will not be 
sustained after a lapse of more than 
twenty years from the date of the tran- 
sactions out of which the account arose, 
especially if no good cause is shown for 
the delay. Ellison v. Moffatt, i Johns. 
Ch. (N. Y.) 46; Kingslandt-. Roberts, 
2 Paige (K. Y.) 193. 

Presumption of payment from lapse 
of time is as applicable to a case where 
payment in a specific mode is pleaded, 
as where it is pleaded generally. Man- 
ning f. Meredith, 69 Iowa 430. 

Where the debt is payable by instal- 
ments and secured by a penal bond, the 
presumption applies to each instalment 
as it falls due. State v. Lobb, 3 Harr. 
(Del.) 421. 

And the lapse of fourteen years after 
the payment of the last instalment 
upon a bond and mortgage may, in 
connection with other circumstances, 
raise the presumption that the bond 
has been paid. Bander v. Snyder, 5 
Barb. (N. Y.) 63. 

The presum,ption is available only as 
a shield, and can only be set up to de- 
feat a right of action ; it cannot be used 
for affirmative, aggressive action. 
Thus where complainant seeks to com- 
pel a conveyance of land upon an alle- 
gation that he has paid the purchase 



208 



PreBumption of Payment. PA YMENT. Lapse of Time, 

though the lapse of time be shorter.'^ And the same rule 



money, he cannot avail himself of this 
presumption to prove the payment. 
Morey v. Farmers' Loan and Trust Co., 
14 N. Y. 302. As to distinction between 
presumption and limitation, see infra, 
this title. Presumption of Payment, 

It seems that the presumption is al- 
ways one for the jury. Lyon v. Guild, 
5 Heisk. (Tenn.) 175; McBride v. 
Moore, Wright (Ohio) 542. Compare 
Winstanley v. Savage, 2 McCord Eq. 
(S. Car.) 435. And its effect is to 
shift the burden of proof. McQueen 
V. Fletcher, 4 Rich. Eq. (S. Car.) 152. 

But from mere lapse of thne short of 
the twenty years, without other cir- 
cumstances, a jury is not at liberty to 
presume payment. Smithpeter v. Ison, 
4 Rich. ( S. Car.) 203 ; s. c, 53 Am. Dec. 
732 ; Farrington v. King, i Bradf. (N. 
Y.) 182; Rogers v. Burns, 27 Pa. St. 
525 ; Thomas v. Hunnicutt, 54 Ga. 337 ; 
Grafton Bank v. Doe, 19 Vt. 463 ; s. c, 
47 Am. Dec. 697. 

The revised statute of North Caro- 
lina of 1835 provided that presumption 
of payment or satisfaction on all judg- 
ments, contracts and agreements should 
arise within ten years after the right 
of action, or the same should accrue, 
under the same rules, regulations and 
restrictions as now exist at law in such 
cases. Rev. Stat. (1835) Ch. 65, § 18, 

P- 375- 

This statute has received the con- 
struction of the supreme court of that 
State in Pearsall v, Houston, 3 Jones 
(N. Car.) 346; Spruill v. Davenport, 5 
Ired. L. (N.-Car.) 663 ; Johnson v. Eng- 
land, 4 Dev. & B. (N. Car.) 70; Camp- 
bell V. Brown, 86 N. Car. 376 ; s. c, 41 
Am. Rep. 464 ; Lane v. Richardson, 79 
•N. Car. 159; Rogers v. Clements, 92 
N. Car. 81 ; s. c, 98 N. Car. 180 ; Mull 
■V. Walker, 100 N. Car. 46 ; Headen v. 
Womack, 88 N. Car. 468; Perry v. 
Jackson, 88 N. Car. 103; Houck v. 
Adams, 98 N. Gar. 519. 

But the revisions of 1875 and 1883 do 
not contain any similar provision, the 
statute of limitations alone applies. 

And the courts of that State have 
held that the presumption of payment 
from lapse of time as to a bond exe- 
cuted in another State is governed by 
the law of North Carolina, and not 
that of the State in which the bond was 
executed Haws v. Cragie, 4 Jones 
(N. Car.) 394. 

1. 3 Phil. Evid. 675 ; Rector r;. More- 



house, 17 Ark. 131 ; Hughes v. Hughes, 
i;4 Pa. St. 240 ; Brubaker v. Taylor, 76 
Pa. St. 83; Peters' Appeal, 106 Pa. St. 
340; Hess w. Frankinfield, 106 Pa. St. 
440; Garnier z". Renner, 51 Ind. 372; 
Bander v. Snyder, 5 Barb. (N. Y.; 63; 
Baker v. Stonebraker, 36 Mo. 338 ; Per- 
kins V. Kent, I Root (Conn.) 312; 
Milledge v. Gardner, 33 Ga. 397; Mat- 
thews -v. Smith, 2 Dev. & B. (N. Car.) 
287; Smithpeter v. Ison, 4 Rich. (S. 
Car.) 203 ; s. c, 53 Am. Dec. 732 ; Blan- 
ton V. Stephenson, i A. K. Marsh (Ky.> 
570; Bailey v. Gould, Walker (Mich.). 
478; Thompson -y. Thompson, 2 Head,, 
(Tenn.) 405 ; Gould v. White, 26 N. H_ 
178 ; Sadler v. Kennedy, 11 W. Va. 187 ; 
Criss V. Criss, 28 W. Va. 388. 

The question is always one for the- 
jury. Lyon v. Guild, 5 Heisk. (Tenn.)i 
175; Waters v. Waters, i Mete. (Ky.) 

"The presumption of payment jrom 
lapse of time is founded upon the ra- 
tional ground that a person naturally 
desires to possess and enjoy his own, 
and that an unexplained neglect to en- 
force an alleged right for a long period 
casts suspicion upon the existence of 
the right itself. This presumption may 
be fortified or rebutted by circumstances. 
Bean v. Tonnele, 94 N. Y. 381; s. c.,46 
Am. Rep. 153. 

Slight circumstances may go to the 
jury when sixteen years have elapsed. 
Blackburn v. Squib, Peck (Tenn.) 60. 

And, if unexplained, the lapse of six- 
teen years raises the presumption of 
payment of a judgment. Kilpatrick v. 
Brashear, 10 Heisk. (Tenn.) 372. Corn- 
fare Cannon v. Mathias, 10 Heisk. 
(Tenn.) 575. 

The fact that a plaintiff, during the 
period when he might have enforced 
his demand by suit, was in indigent cir- 
cumstances and needed the use of his 
means, is a circumstance tending to 
fortify the presumption that the demand 
has been paid or otherwise satisfied. 
Bean ■;:;. Tonnele, 94 N. Y. 381; s. c, 46 
Am. Rep. 153, and cases cited; In re 
Neilley, 9; N. Y. 382; Hughes v. 
Hughes, 54 Pa. St. 240; Phillips v. 
Adams, 78 Ala. 225. Compare Orr v. 
Jason, I 111, App. 439. 

So also the fact that defendant had 
failed during the time and made a com- 
promise with his creditors would tend 
to rebut such presumption. Walker v. 
Russell, 73 Iowa 340; Woodbury v. 



18 C. of L.— 14 



209 



Presomption of Payment. 



PA YMENT. 



Lapse of Time. 



applies to a judgment. ^ But the presumption operates as a pay- 
ment only in favor of the party entitled to the benefit thereof, 



Taj'lor, 3 Jones (N. Car.) 504. Comfare 
Biddle v. Girard Nat. Bank, 109 Pa. St. 
349; Veazlei/. Hosmer, 11 Gray (Mass.) 

39^- 

The character of the creditor for 
promptness in the collection of debts 
"would constitute a circumstance in aid 
of the presumption of payment after 
the lapse of eight years. Leiper v. 
Erwin,5 Yerg. (Tenn.)97; Orrii. Jason, 
I 111. App. 439. Compare Aber- 
■crombie v. Sheldon, 8 Allen (Mass.) 

532- 

Where the plaintiff lived in the neigh- 
borhood of the debtor, against whom 
he had a judgment, for thirteen years 
after its rendition, and after the first 
year made no effort to collect it, finally 
moving away without making any effort 
to collect it, and the debtor during all 
the time had ample property to satisfy 
"the judgment, these facts will raise the 
presumption that the debt has been paid. 
Husky V. Maples, 2 Coldw. (Tenn.) 25; 
-s. c, 88 Am. Dec. 588. 

Mere lapse of time less than that fixed 
by the statute of limitations, together 
with the pecuniary ability of the de- 
fendant to pay, do not raise a presump- 
tion of payment. Daby v. Ericsson, 45 
N. Y. 786. 

After the lapse of nineteen years, 
-slight circumstances will warrant the 
inference of paj'ment. Briggs' Appeal, 
93 Pa. St. 485. 
, A delay of seven or eight years in 
bringing suit on a sealed instrument, is 
■slight evidence of payment, varying ac- 
cording to circumstances. Where it is 
submitted to a jury to infer payment 
from circumstances, the weight to be 
given in delay or promptness in bring- 
ing suit is for them to determine. Lee 
V. Newell, 107 Pa. St. 283. 

So the lapse of fourteen years may 
be considered by the jury, though the 
payee is in possession of the note. 
Walker v. Emerson, 20 Tex. 706; s. c, 
73 Am. Dec. 207. Compare Hendricks 
V. Wallis, 7 Iowa 224. 

The transcript of the judgment of a 
justice of the peace was filed in the 
common pleas more than nineteen years 
after it was rendered, and there was no- 
thing to show whether or not execution 
had ever issued on it, nor was the jus- 
tice called nor the docket produced. 
Held, that the jury were at liberty to 
infer payment from the lapse of time 



and other circumstances. Diamond v. 
Tobias, 12 Pa. St, 312. 

The records of judgments which have 
been rendered against the debtor during 
the twenty years, and which have been 
satisfied, are admissible in aid of the 
presumption of payment. Levers v. 
Van Buskirk, 4 Pa. St. 309. 

Plaintiff was employed as a servant 
at a certain sum per week, to be paid 
weekly. After remaining in her situ- 
ation for over three years, she left the 
service, and about four yeafs afterward 
brought an action for her wages against 
the executor of her employer. It was 
shown that it was not usual for domes- 
tic servants to give receipts for their 
wages. Held, that no legal presump- 
tion that the claim Was paid was raised 
by the lapse of time, though taken in 
connection with the proof as to receipts. 
Snediker v. Everingham, 27 N. J. L. 

143- 

Where the full period of twenty years 
has not elapsed, the circumstances re- 
lied on to raise the presumption of pay- 
ment of a sealed instrument must be 
such as to produce a conviction that 
payment has been made. Bradley v. 
Jennings, 15 Rich. (S. Car.) 34. 

The fact that the time in which a 
right of entry on land is barred, or the 
right to bring an action of ejectment, 
has been reduced to less than twenty 
years by statute, does not operate to re- 
duce the time in which the presumption 
arises of payment of a debt secured by 
mortgage. Criss v. Criss, 28 W. Va. 
388. 

1. Burton v. Cannon, 5 Harr. (Del.) 
13; Campbell v. Carey, 5 Harr. (Del.) 
427; Moore v. Smith,, 81 Pa. St. 182; 
Biddle v. Girard Nat. Bank, 109 Pa. St. 
349; Hess V. Frankenfield, 106 Pa. St. 
440; Kennedj' v. Denoon, 3 Brev. (S. 
Car.) 476; McDaniel v. Goodall, 2 
Coldw. (Tenn.) 391. 

The presumption begins to run from 
the date of entry of the judgment. 
Cloud V. Temple, 5 Houst. (Del.) 587. 

But mere lapse of time less than the 
twenty years will not sufiice. Thayer 
V. Mowry,36 Me. 287; Fister f. Hunter, 
4 Rich. Eq. (S. Car.) 16; McMahan v. 
Crabtree, 30 Ala. 470. 

The same rule prevails in equity. Ed- 
wards V. Giboney, 51 Mo. 129; Bird v, 
Ihslee, 23 N. J. Eq. 363; Miner v. Beek- 
man, 14 Abb, Pr., N. S. (N, Y.) i. 



210 



Presumption of Payment. 



PA YMENT. 



Bebutting Presumption. 



and does not necessarily satisfy the debt as to all the 
debtors.^ 

6. Rebutting Presumption, — The presumption may always be re- 



1, New York L. Ins. & Trust Co. v. 
Covert, 29 Barb. (N. Y.) 435. Compare 
Pearsall v. Houston, 3 Jones (N. Car.) 

346. 

Presumption of payment has been 
held not to arise in the following cases: 

From lapse of time against the gov- 
ernment. United States v. Williams, 4 
McLean (U. S.) 567. 

From a forbearance to sue for nine 
months; under any circumstance or in 
any court. Holmes v. The Lodemia, 
Crabbe (U. S.) 434. 

Where the evidence shows an ac- 
knowledgment of the claimant's right 
within the period of limitation. Arline 
V. Miller, 22 Ga.- 330 

From lapse of time less than twenty 
years. Forsyth v. Ripley, 2 Greene 
(Iowa) 181. 

From the mere lapse of five years 
since the maturity of a pomissory note. 
Nash V. Gibson, 16 Iowa 305. 

From mere lapse of time, short of 
twenty years, of an aniount due upon a 
covenant. Stockton v. Johnson, 6 B. 
Mon. (Ky.) 408. 

Of a judgment, till after a year and a 
day from its recover^'; and if within 
that time a judgment creditor of an in- 
solvent estate files a petition in the pro- 
bate court against the administrator, 
praying that he might be required to 
give new security, the petition need not 
aver that the petitioner's judgment has 
not been paid. Meyer v. Dsjrrance, 32 
Miss. 263. 

From lapse of time, that taxe^ were 
paid, where a referee has expressly 
found the feet that they were not paid 
either in money or labor. Haverhill v. 
Orange, 47 N. H. 273. 

From the non-payment of rent from 
twenty to twenty-four years, where cir- 
cumstances excuse the delay in demand- ■ 
ing the rent; nor will a release or con- 
veyance extinguishing the rent, be pre- 
sumed. Cole V. Patterson, 25 Wend. 
(N. Y.) 457. 

From delay by a British creditor to 
sue, which occurred during the doubts 
in relation to confiscation attendant 
upon the American Revolution. Mc- 
Mair v. Ragland, i Dev. Eq. (N. Car.) 

533- 

From the lapse of ten years, if, during 
a portion of that period, it appears that 



the debtor was insolvent. Woodbury 
V. Taylor, 3 Jones L. (N. Car.) 504. 

From the lapse of seven years, after 
a legacy is demandable. Strohm's Ap- 
peal, 23 Pa. St. 351. 

From lapse of time of a bond on 
which interest has been regularly paid. 
Nixon V. Bynum, i Bailey (S. Car.) 
148. 

Of a judgment from lapse of time; 
unless the lapse of twenty years is com- 
plete. Foster v. Hunter, 4 Rich. Eq, 
(S. Car.) 16; Thayer f . Mowry, 36 Me. 
287. 

For additional cases raising questions 
of the presumption of payment from 
lapse of time, see Stockton v. Johnson, 

6 B. Mon. (Ky.) 409; Anderson v. 
Smith, 3 Mete. (Ky.) 491 ; Helm f. Jones, 
3 Dana (Ky.) 86; Potter v. Titcomb, 7 
Me. 302; West v. Brison, 99 Mo. 684; 
Doe V. Gildart, 5 How. (Miss.) 606; 
Owen V. Calhoun (Supreme Ct.), 8 N. 
Y. Supp. 447; Macauley v. Palmer (Su- 
preme Ct.), 6 N. Y. Supp. 402; Clark 
V. Hopkins, 7 Johns. (N. Y.) 556; In- 
graham V. Baldwin, 9 N. Y. 45; Lammer 
V. Stoddard, 103 N. Y. 672; Phillips v. 
Prevost, 4 Johns. Ch. (N. Y.) 205; Liv- 
ingston V. Livingston, 4 Johns. Ch. (N. 
Y.) 294; s. c, 8 Am. Dec. 562; Walker 
V. Wright, 2 Jones (N. Car.) 155; Giles 
V. Baremore, 5 Johns. Ch. (N. Y.) 545; 
Kerlee v. Corpening, 97 N. Car. -530; 
Hall V. Gibbs, 87 N. Car. 4; Holm'an's 
Appeal, 24 Pa. St. 174; Drysdale's Ap- 
peal. 14 Pa. St. 531; Brubaker v. Tay- 
lor, 76 Pa. St. 83; Connelly v. McKean, 
64 Pa. St. 113; Birkey v. McMakin, 64 
Pa. St. 343; Mertz's Appeal (Pa. 1886), 

7 Atl. Rep. 187; Bentley's Appeal, 99 
Pa. St. 500;* Sartor v. Beaty, 25 S. Car. 
293; Shaw V. Barksdale, 25 S. Car. 204; 
Wightman v. Butler, 2 Spears (S. Car.) 
357; Brewton v. Cannon, i Bay (S. 
Car.) 482; Agnew v. Renwick, 27 S. 
Car. 562; Yarnell v. Moore, 3 Coldw. 
(Tenn.) 173;, Winston v. Street, 2 Patt. 
& H. (Va.) 169; Barbour 7'. Duncanson, 
77 Va. 76; Dwight v. Eastman (Vt.), 
20 Atl, Rep. 594; Smith v. Niagara F. 
Ins. Co., 60 Vt. 682; Sparhawk f. Buell, 
9 Vt. 41 ; Delaney v. Brunette, 62 Wis. 
615; Hopkirk v. Page, 2 Brock. (U. S) 
20; Kirkpatrick v. Laugohier, i Cranch 
(C. C.) 85; Miller v. Evans, 2 Cranch 
(C. C.) 72; McCormick v. Eliot, 43 



211 



Fresnmption of Payment. 



PA YMENT. 



Bebutting Fresumption. 



butted or overcome by showing the facts and circumstances.^ 



Fed. Rep. 469; Denniston v. M'Keen, 2 the force of admissions made on a debt 



McLean (U. S.) 253. 

1. Daggett -u. Tallman, 8 Conn, 16S ; 
Herndon v. Bartlett, 7 Mon. (Ky.) 
449; Knight V. Macomber, 55 Me. 132; 
Abbott ». Godfrey, i Mich. 178; Lewis 
V. Schwenn, 93 Mo. 26; Morris v. 
Wadsworth, 17 Wend. (N. Y.) 103, 
Cole T). Patterson, 25 Wend. (N. Y.) 
457; Jackson v. Hotchkiss, 6 Cow. (N. 
Y.) 401;- McKinder v. Littlejohn, i 
Ired. L. (N. Car.) 66; Buil v. Buil. 2 
Ired. L. (N. Car.) 87; White v. Bea- 
man, 96 N. Car. 122; Lash v. Von 
Neida, 109 Pa. St. 207 ; Biddle v. Gi- 
rard Nat. Bank, 109 Pa. St. 349; Mc- 
Nair v. Ingraham, 21 S. Car. 70; Dick- 
son V. Goudin, 26 S. Car. 391. 

Even though the time elapsed is 
thirty years. Arden v. Arden, i Johns. 
Ch. (N. Y.) 313. Compare Downs v. 
Sooy, 28 N. J. Eq. 55. 

The presumption may be rebutted 
and overcome by proof of any facts 
and circumstances, the legitimate tend- 
ency of which is to render it more 
probable than otherwise that payment 
has not in fact been made. Grantham 
V. Canaan, 38 N. H. 268: McKinder v. 
Littlejohn, i Ired. L. (N. Car.) 66; 
Wood V. Deen, i Ired. L. (N. Car.) 
230. 

Where the surety on a sealed note 
had said that the payee had promised 
not to push him during his, the sure- 
ty's lifetime, this would rebut the pre- 
sumption. Fisher v. Phillips, 4 Baxt. 
(Tenn.) 243. 

It may be rebutted by express admis- 
sions within twenty years : By payment 
of interest or part of principle; by 
proof of the obligor's inability to pay ; 
by the suspension of collection by 
stay-law or war, and even by proof of 
the near relationship of 'the parties. 
Updike V. Lane, 78 Va, 132 ; Cole v. 
Ballard, 78 Va. 139; Criss v. Criss, 28 
W. Wa. 388; Lyon v. Adde, 63 Barb. 
(N. Y.) 89. Ex farte acts of the cred- 
itors cannot be shown to rebut the 
presumption. Colvin v. Phillips, 25 
S. Car. 228. Compare Dabney v. Dab- 
ney, 2 Rob. (Va.) 622; s. c, 40 Am. 
Dec. 761. 

The presumption may be rebutted 
after the lapse of the twenty years. 
Strickland v. Bridges, 21 S. Car. 21. 
See McQueen v. Fletcher, 4 Rich. Eq. 
(S. Car.) 161. 

But there is a distinction between 



not yet presumed to be paid, and on 
one where the presumption of pay- 
ment is complete. Roberts v. Smith, 
21 S. Car. 455. 

And the facts and circumstances re- 
lied on to rebut the presumption mutt 
have occurred within twenty years be- 
fore suit brought. Gregory v. Com- 
monwealth, 121 Pa. St. 611; s. c, 6 
Am. St. Rep. 804. 

After the presumption of payment 
is complete, it can only be rebutted by 
such proof as would take an action upon 
a promissory note out of the statute of 
limitations. The rebuttal of the pre- 
sumption by a part payment is not 
upon the theory of a new promise, 
but of an admission by which the old 
debt is acknowledged to be unpaid. 
Dickson v. Gourdin, 26 S. Car. 391. 

The recogniton of a debt by a per- 
sonal representative may rebut the 
presumption of payment, though it 
would not revive a demand barred 
' by limitation. Tucker v. Baker, 94 N. 
Car. 162 ; Richardson v. Peterson, 2 
Harr. (Del.) 366. Compare. Blake v. 
Quash, 3 McCord (S. Car.) 340. 

Same rule applies to & recognition 
by a principal as affecting a surety. 
McKeethan v. Atkinson, i Jones L. 
(N. Car.) 421. 

So, too, a payment by an assignee in 
bankruptcy with the assent of the 
obligor. Hamlin v. Hamlin, 3 Jones 
Eq. (N. Car.) 191. 

If there is positive proof of non-pay- 
ment, mere lapse of time is no bar to 
the action. Evarts v. Mason, li Vt. 
122. 

The regular payment of interest will 
rebut the presumption. Nixon v. By- 
num, I Bailey (S. Car.) 148. 

But before credits on a hond can 
have any force to rebut the presump- 
tion of payinent, it must be shown that 
they were made before the presump- 
tion of payment had ripened. Lash 
V. Von Neida, 109 Pa. St. 207. 

Presumption of the payment of a 
judgment may be rebutted by showing 
that three executions have been re- 
turned nulla bona ; that the defendant, 
when payment had been demanded, 
had replied that he had no property 
and could not pay ; that about the 
time when the original suit was com- 
menced he commenced to put his 
property, real and personal, out of his 



212 



Freaamption of Payment. 



PA yment: 



Bebutting Freaamption. 



hands, and claimed not to be the 
owner of any property since, and had 
during all the time had the reputation 
of being insolvent. Knight v. Macom- 
ber, 55 Me. 132. 

As to rebutting presumption of pay- 
ment of a judgment under the New 
l~ork statute, see Waddell v. Elmen- 
dorf, 10 N. Y. 170. 

In calculating the period necessary 
to raise the presumption, such time 
must be excluded, if any, in which for 
any reason the creditor has no legal 
right or power to bring an action for 
the debt. Criss v. Criss, 28 W. Va. 
388. 

If during the twenty years the cred- 
itor becomes an alien enemy, the time 
during which such disability continues 
is to be deducted from the time elapsed. 
Bailey v. Jackson, 16 Johns. (N. Y.) 
210; s. c, 8 Am. Dec. 309. And see 
Brewton v. Cannon, i Bay (S. Car.) 
482. 

The pre;?umption is rebutted by the 
fact that the debtor had removed to 
another State and resided therein dur- 
ing the time which had elapsed. 
Boardman v. De Forrest, 5 Conn, i ; 
Mann v. Manning, 12 Smed. & M. 
(Miss.) 615. Compare Kline v. Kline, 
20 Pa. St. 503. 

While the presumption of payment 
of a mortgage debt, arising from the 
possession of the mortgaged premises 
by the mortgagor, or his assigns, for 
more than twenty years after the ma- 
turity of the debt may be rebutted, the 
proof to rebut the presumption should 
always be ample and explicit. Where 
the holder of the mortgage permitted 
his mother, who was the mortgagor, 
and his sister, to whom the mother 
had conveyed the equity, to occupy 
the premises, and he testified without 
contradiction that the debt had not 
been paid, and that he permitted the 
occupancy because of the relationship, 
this is sufficient to rebut the presump- 
tion. Philbrook v. Clark, 77 Me. 176. 

To same effect, Brown v. Hard- 
castle, 63 Md. 484; Baent v. Kepni- 
cutt, 57 Mich. 268; Peters' Appeal, 
106 Pa. St. 340. 

Where a trust is recognized by the 
trustee as continuing, the presumption 
of payment which would otherwise 
arise after the lapse of twenty years, 
is thereby rebutted ; and an informal 
settlement in the probate court, 
wherein the trustee charged himself 
with assets and claimed credit for dis- 
bursements, is such a recognition of 



the trust. Prior cases cited. Wer- 
born V. Austin, 82 Ala. 498. 

A bill to enforce a vendor's lien was 
filed more than twenty years after the 
last instalment of purchase money be- 
came due, the land having been sold 
under a probate decree, and the ad- 
ministrator himself being the pur- 
chaser and defendant in the lien suit. 
Held, that the presumption of pay- 
ment would not be overcome by evi- 
dence, that defendant advanced or paid 
to the complainants different amounts 
of money on their respective interests 
in said estate, taking their receipts for 
the same, and now claims that such 
payments were payments on the pur- 
chase money of the land ; nor is the 
allegation that defendant "has never 
denied, but always admitted, that the 
purchase money of said land is due 
and unpaid" sufficient to overcome 
such presumption, where the bill is de- 
murred to. Solomon v. Solomon, 81 
Ala. 505 ; s. c, 83 Ala. 394. 

Where the creditor endeavors to re- 
but the presumption by showing the 
insolvency of the debtor during the 
twenty years, he may show that the 
debtor lived at a great distance from 
him, as tending to prove that, though 
the debtor may have had property for 
a short time,yet the creditor had no 
opportunity of knowing that fact and 
of getting satisfaction out of that 
property. McKinder v. Littlejohn, 4 
Ired. L. (N. Car.) 198. 

But the mere poverty of the debtor 
is not sufficient to rebut the presump- 
tion. Rogers v. Judd, 5 Vt. 236; s. c, 
26 Am. Dec. 301. 

Where insolvency of the obligor is 
relied on to rebut the presumption, 
such a state of insolvency must be 
shown during the entire time as to 
prove that he did not pay because he 
could not. Grant v. Burgwyn, 84 N. 
Car. 560. 

Payment by the princif)al in a bond 
will rebut the presumption as to the 
surety. McKeethan v. Atkinson, i 
Jones (N. Car.)^42i. 

And see the following cases raising 
questions of the rebuttal of the pre- 
sumption of payment under par- 
ticular circumstances : Werborn -v'. 
Austin, 82 Ala. 498; Girard v. Fut- 
terer, 84 Ala. 323 ; Farmers' Bank v. 
Leonard, 4 Harr. (Del.) 536; Walker 
V. Russell, 73 Iowa 340; Wood v. 
Egan, 39 La. Ann. 684; Mann v. Man- 
ning, 12 Smed. & M. (Miss.) 615; 
Boardman v. De Forrest, 5 Conn. 1 ; 



213 



Waiver by Payment. 



PA YMENT. 



Voluntary Payment, 



7. Distinction Between Presumption of Payment and Statute of Lim- 
itations. — The statute of limitations creates a legal bar to the action ; 
lapse of time merely raises a presumption of payment which may 
be rebutted.^ 

XI. Waivie by Payment. — Payment of the contract price will 
not of itself constitute a waiver of the right to recover for defects 
in the article paid for, even though the party paying was aware of 
the defects. The right to recover must depend on all the circum- 
stances of the case.* 

XII. VOLTJNTABY PAYMENT — 1. Cannot be Recovered Back. — A vol- 
untary payment of money under a claim of right cannot, in 
general, be recovered back. To warrant such recovery there 
must be compulsion, actual, present, potential, and thp demand 



Wiltsie V. Wiltsie (Supreme Cl:.), i N. 
Y. Supp. 559; Dorgeloh v. Bassford, 
50 N. Y. Super. Ct. 450; Alston v. 
Hawkins, 105 N. Car. 3; Lowe v. 
Sowell, 4 Jones (N. Car.) 135; Hinsa- 
man v. Hinsaman, 7 Jones (N. Car.) 
.510; Wiley f. Lineberry, 89 N. Car. 
15; Wilfong V. Cline, i Jones (N. 
Car.) 499; Williams v. Alexander, 6 
Jones (N. Car.) 137; Rowland v. 
Windley, 86 N. Car. 36; Alston v. 
Hawkins, 105 N. Car. 3; Cartwright 
V. Kerman, 105 N. Car. i ; Levers v. 
Van Buskirk, 7 W. & S. (Pa.) 70; Eby 
V. Eby, 5 Pa. St. 435 ; Kirkpatrick v. 
Laugphier, i Cranch (C. C.) 85; Crem- 
er's Estate, 5 W. & S. (Pa.) 331 ; 
Kitchen v. Deardoff, 2 Pa. St. 481; 
Bissell V. Jaudon, 16 Ohio St. 498; 
Martin v, Bowker, 19 Vt, 526; Sellers 
V. Holman, 20 Pa. St. 321 ; Gregory v. 
Commonwealth, 121 Pa. St. 611 ; Van 
Loon V. Smith, 103 Pa. St. 238; Brene- 
man's Appeal, 120 Pa. St. 641; Run- 
ner's Appeal, 121 Pa. St. 649; Wilson 
V. Wilson, 29 S. Car. 260 ; North v. 
Drayton, Harp. Eq. (S. Car.) 34; Pal- 
mer V. Dubois, I Mill Const. (S. Car.) 
178; Boyce v. Lake, 17 S. Car. 481 ; s. 
c, 43 Am. Rep. 618; Duncan v. 
Rawls, 16 Tex." 478 ; Dabney v. Dab- 
ney, 2 Rob. (Va.) 622; s. c, 40 Am. 
Dec. 761 ; Eustace v. Gaskins, i Wash. 
(Va.) 188; McLellanw. Crofton,6 Me. 
307 ; Bowie v. Westmoreland Poor 
School Soc, 75 Va. 300; McCleary v. 
Grantham, 29 W. Va. 301. 

1. Reed v. Reed, 46 Pa. St. 239; 
Bell's Appeal, 122 Pa. St. 486; Biddle 
V. Girard Nat. Bank, 109 Pa. St. 349; 
Shubrick v. Adams, 20 S. Car. 49; 
Dickson v. Gourdin, 26 S. Car. 391 ; 
Colvin V. Phillips, 25 S. Car. 228; 
Tucker v. Baker, 94 N. Car. 162; 
Threadgill v. West, 13 Ired. L. (N. 



Car.) 310; .Alston v. Hawkins, 105 N. 
Car. 3 ; Currie v. Clark, loi N. Car. 
329; Mason v. Spurlock, 4 Baxt. 
(Tenn.) 554; Hale v. Pack, 10 W. Va. 
145. See also Roberts v. Johns, 24 S, 
Car. 580; Roberts v. Smith, 21 S. Car 

4SS- - 

The presumption of payment is ap- 
plicable as well to cases in which a 
bar is prescribed by the statute of 
limitations as to other cases. Wright 
V. Mars, 22 S. Car. 585. 

"The latter (statute of limitations) 
is a prohibition of the action ; the 
former (presumption) prima facie 
obliterates the debt." 2 Whart. Evid., 
^ 1361. 

After the lapse of time an artificial 
presumption of law is raised, as a fact 
to be passed on by the jury. It is not a 
presumption of law, such as arises 
from an adverse occupancy of land, 
from which a grant is presumed, and 
which is not allowed to be contro- 
verted ; but of fact, open to disproof in 
showing that no payment had been 
made, or such facts as in law are held 
sufficient to remove the presumption 
by explaining the inaction of the 
creditor. Long v. Clegg, 94 N. Car. 

763- 

The presumption of payment from 
lapse of time is an artificial and arbi- 
trary rule of law, and is not, like the 
statute of limitations, a bar to an ac- 
tion on the original contract, and a 
new promise is not, therefore, neces- 
sary to enable the creditor to sue on 
the original cause of action. An ad- 
mission rebuts the presumption, even 
though accompanied by a refusal to 
pay. Gregory v. Commonwealth, 121 
Pa. St. 611 ; s. c, 6 Am. St. Rep. 804. 

2. Flannery v. Rohrmayer, 46 Conn. 
558 ; s. c, 33 Am. Rep. 36. 



214 



Voluntary Payment, 



PA YMENT. 



Cannot be Recovered Back. 



must be illegal. In the absence of such compulsion, a mere pro- 
test is not sufficient. The element of coercion is essential to the 
right.* 

But it is lield in Vermont that voluntary, and this was not a case 



where an article, manufactured in ac- 
cordance with a special contract, is 
accepted and retained by the vendee, 
there being no warranty and the de- 
fects, if any, patent and obvious, a 
payment of the contract price is a 
waiver of the defects. Gibson v. 
Bingham, 43 Vt. 410; s. c, 5 Am. Rep. 
289. See infra, this title, Part Pay- 
ments. 

1. Union Pac. R. Co. v. Dodge Co., 
98 U. S. 541 ; Keener v. Bank of U. 
S., 2 Pa. St. 237; Hospital v. Phila- 
delphia Co., 24 Pa. St. 229; Taylor v. 
Board of Health, 31 Pa. St. 73; s. c, 72 
Am. Dec. 724; McCrickart ik Pitts- 
burgh, 88 Pa. St. 133; Harvey v. 
Girard Nat. Bank, 119 Pa. St. 212; 
Vick V. Shinn, 49 Ark. 70 ; s. c, 4 Am. 
St. Rep. 26 ; Raisler v. Mayor etc. of 
Athens, 66 Ala. 194 ; Forbes v. A-pple- 
ton, 5 Cush. (Mass.) 115; Carew u. 
Rutherford, 106 Mass. i ; s. c, 8 Am. 
Rep. 287, where the question is fully 
considered and many cases are cited 
and reviewed. Mayor etc. of Balti- 
more V. Hussey, 67 Md. 112; Eaton v. 
V. Eaton, 35 N. J. L. 290; Wabaunsee 
Co. V. Walker, 8 Kan. 431 ; Kansas 
Pac. R. Co. V. Wyandotte Co., 16 Kan. 
587; Flower v. Lance, 59 N. Y. 603 ; 
Patterson v. Cox, 25 Ind. 261; Wood- 
burn V. Stout, 28 Ind. 77 ; Maxwell v. 
San Luis Obispe Co., 71 Cal. 466 ; Mc- 
Millan V. Richards, 9 Cal. 365, 417 ; 
s. c, 70 Am. Dec. 655 ; Wills -v. Aus- 
tin, 53 Cal. 152; Gibson v. Bingham, 
43 Vt. 410; s. c, 5 Am. Rep. 289; An- 
drews V. Hancock, i Bond & Bing. 37. 

The rule applies to a payment by 
one municipal corporation to another, 
as well as to a payment between indi- 
viduals. Macon Co. v, Jackson Co., 75 
N. Car. 240. 

The agents of a line of ocean steam- 
ers affording the only safe means of 
shipment between San Francisco and 
New York, refused to receive silver 
and gold for transportation and issue 
bills of lading for the same unless the 
shipper furnished stamps fqr the bills 
under the acts of 1857 and 1858. A 
shipper furnished the stamps but un- 
der protest, denying the company's 
right to exact them, and claiming that 
the acts were unconstitutional. Held, 
that the payment for the stamps was 



showing such coercion as to render 
the payment compulsory. Bruma- 
gim -'. Tillinghast, 18 Cal. 265. And 
the same ruling was applied to stamps 
purchased for passage tickets. Garri- 
son V. Tillinghast, 18 Cal. 404. 

Where a corporation paid under 
protest a passenger tax, imposed by a 
statute which was afterwards by the 
Supreme Court of the United States 
declared to be unconstitutional, and 
the tax was paid to avoid penalties 
which could have been collected only 
by a judicial proceeding, the payment 
was voluntary, and could not be recov- 
ered back. Oceanic Steam Nav. Co. 
V. Tappan, 16 Blatchf. (U. S.) 296. 

Where the master of a military 
transport, appointed by the owner, is 
removed by the military authorities 
and another put by them in his place, 
and the owner is required to pay the 
wages of this latter, which he does 
■without protest, he cannot recover 
such payment. White v. United 
States, II Ct. of CI. 578. 

A lease provided that lessee should 
keep the premises in repair, except in 
case of fire, but should they be ren- 
dered unfit for tenancy by fire, a just 
proportionate abatement of rent 
should be made. The premises were 
rendered untenantable by fire, but the 
lessor insisted on the full rent, and the 
lessee paid it under protest. Held, 
that no part of it could be recovered 
back. 

"The fact that the plaintiff in this 
case," says the court, "might have 
been under embarrassment as to the 
amount of rent which he would with- 
hold, or which hf might properly 
claim to rebate, does not. affect the 
principle. It was his right to litigate 
that question with his lessor, and his 
election to pay the full amount rather 
than resist the payment of any portion 
of it, makes the payment a voluntary 
one." Regan v. Baldwin, 126 Mass. 
485 ; s. c, 30 Am. Rep. 689. To same 
effect, Emmons v. Scudder, 115 Mass. 

367- 

Where a contractor for the erection 
of a building pays to a sub-contractor, 
in settlement of claims against the 
latter, an amount in excess of the 
price agreed to be paid him, no liens 



215 



Voluntary Payment. 



PA YMENT. 



Cannot be Becovered Back. 



having been established against the 
building, such payment is voluntary, 
and cannot be recovered back. Mor- 
ley V. Carlson; 27 Mo. App. 5. 

In Carew v. Rutherford (106 Mass. 
I ; 8 Am. Rep. 277 ;), it is held that a 
conspiracy against a mechanic, who is 
under the. necessity of employing 
workmen to carry on his business, to 
obtain a sum of money from him 
which he is under no legal liability to 
pay, by inducing his workmen to leave 
him, and by deterring others from en- 
tering his employment, or by threat- 
ening to do these acts, so that he is 
induced to pay the money demanded, 
under a reasonable apprehension that 
he cannot carry on his business with- 
out yielding to the illegal demand, is 
an illegal conspiracy; the acts done 
under it are illegal, and the money 
thus obtained may be recovered back. 
A certain railroad company paid to 
defendant, an insurance company, a 
premium upon a policy of insurance ; 
whereupon the defendant paid plain- 
tiff, as an insurance broker, full com- 
missions thereon. Eight days after- 
wards the policy was canceled, and 
the defendant paid back to the railway ■ 
company the amount of the premium, 
less the earned premium and the com- 
mission paid plaintiff, and then de- 
manded from plaintiff that he return 
to defendant the amount of his com- 
mission, claiming that such was the 
agreement made- with him before the 
issuance of the policy. Plaintiff re- 
paid the amount of the commission 
under protest, and asserting that he 
waived no rights thereby, and brought 
his action to recover the amount so 
repaid. Held, that the payment was 
voluntary, and plaintiff was not enti- 
tled to recover. Devereux v. Roches- 
ter German Ins. Co., 98 N. Car. 6. 

Where a void execution is levied on 
property, and the party pays the 
amount of the execution to save his 
property, he may recover it t^ck. But 
such is not the rule where the execu- 
tion is merely erroneous and amend- 
able. Bobb V. Dillon, 20 Mo. App. 
309. Comfare Gould v. McFall, n8 
Pa. St. 455 ; s. c, 4 Am. St. Rep. 606 ; 
Lord V. Waterhouse, i Root (Conn.) 

430- 

Plaintiff was arrested for violation 
of an invalid city ordinance. He 
pleaded not guilty, but made no ob- 
jection to the validity of the ordi- 
nance. He was found guilty and 
fined, and paid the fine while under 



arf-est, but without protest, believing 
that the judgment imposing the fine 
was a valid one. Held, that the pay- 
ment was voluntary. Bailey v. Paul- 
lina, 69 Iowa 463. 

Where under threats of prosecution 
one voluntarily pays a bill of costs 
to an officer, no compulsion or mis- 
take of fact being shown, nor any 
fraudulent or wrongful purpose to- 
ward the plaintiff on the part of the 
clerk, Such payment cannot be re- 
covered back. Thompson v. Doty, 72 
Ind. 336. 

Plaintiff's financial circumstances 
were such that he was compelled to 
mortgage his real estate in order to 
raise money. A judgment against 
him, for which he had appealed, was a 
lien on the property, and he was un- 
able to negotiate the loan without 
paying off the judgment, and thus re- 
moving the lien. Held, that payment 
of the judgment under such circum- 
stances was a voluntary one. Hipp 
V. Crenshaw, 64 Iowa 404. 

Undet an execution against A the 
sherifl levied upoii a lot of gold, silver 
and copper coins belonging to B. 
While this money was in the hands of 
the sheriff, B substituted therefor cer- 
tain bank bills, under an understand- 
ing that the property thus substituted 
should be considered the property 
levied on instead of the coin. Held, 
not to constitute a voluntary payment 
nor a waiver by B of his right to re- 
cover the money. St. Louis etc., R. 
Co. V. CasteJlo, 28 Mo. 379. 

In an action to enforce a mechanic's 
lien on real estate, there was a recov- 
ery by plaintiff therein, and it was ad- 
judged that a. certain prior mortgage 
on the real estate was junior and sub- 
ordinate to such lien. The property 
was sold under the decree and pur- 
chased by the judgment plaintiff. 
The mortgagee filed a bill to review 
the judgment, wherein he was de- 
feated, and appealed. The year given 
by statute for the redemption of the 
land sold under the mechanic's lien, 
judgment being about to expire, 
and the mortgagor being insolvent, 
the mortgagee paid the redemption 
money to the clerk of the court for 
the purcl^aser at the judgment sale, 
and the latter received it from the 
clerk. At the time of paying the 
money to the clerk, the mortgagee 
notified the purchaser of his pur- 
pose to prosecute an appeal in the 
case brought to review the judgment,- 



216 



Voluntary Payment. 



FA YMENT. 



Cannot be Secovered Back. 



and filed with the clerk a written pro- 
test, reserving therein the right to re- 
cover the redemption money if the 
judgment appealed from should be re- 
versed. After the year for redemp- 
tion had expired, the judgment refus- 
ing the mortgagee the right of review 
was reversed, and the mechanic's lien 
judgment was afterwards declared void 
as to the mortgagee. The mortgagee 
thereupon foreclosed his mortgage, 
and purchased the property at the 
foreclosure sale. Upon demand for 
a return of the redemption money, the 
■original plaintiff refused to pay back 
the same, and the mortgagee brought 
an action to recover the money so 
paid. Held, that the payment was a 
voluntary one, and the money could 
not be recovered back. Connecticut 
Mut. L. Ins. Co. V. Stewart, 95 Ind. 
588. 

IJefendant, as executrix of her hus- 
band, of whom she was the principal 
legatee, presented the will for pro- 
bate, upon which there was a contest. 

Pending the litigation, defendant 
transferred to plaintiff all her right, 
title and interest in the estate, the in- 
strument of transfer providing that 
plaintiff might continue the proceed- 
ings for probate. Defendant had 
agreed with her attorney to pay him a 
specified sum, in addition to the coun- 
sel fee and costs allowed him by the 
surrogate; and it was the express un- 
derstanding that out of the purchase 
money received from plaintiff she was 
to pay her attorney and extinguish 
his claim. The attorney proceeded 
with the litigatipn to a decree which 
charged the cost of the proponent 
upon the estate. Plaintiff, who had 
become temporary administrator of 
the estate, paid the amount of the costs 
to the attorney, and sued to recover 
the same back from the defendant. 
Held, that the payment was not a 
voluntary one ; that while, as against 
defendant, plaintiff could have pre- 
vented the collection of the costs out 
of the estate, as against the attorney 
he could not ; and as the payment was 
necessary to relieve the estate of the 
lien, it was compulsory. Dodge v. 
Zimmer, no N. Y. 43. 

A purchased for $15,000 certain 
premises upon which she held mort- 
gages to the amount of $11,400, it be- 
ing agreed that she should give a 
mortgage for the purchase price, the 
amount of her mortgages being -first 
deducted. The mortgages were sat- 



isfied and delivered up on her receipt 
of the deed, but the mortgage which 
was presented for her signature was 
for the full amount of the purchase 
price, without any deduction for the 
mortgages surrendered. This mort- 
gage so presented to her she executed, 
supposing it to be for the balance of 
the price only, and it was immediately 
assigned by the mortgagee. She 
afterwards conveyed the premises to 
B, subject to the mortgage, and B, 
with full knowledge of the facts, paid 
$1,050 specifically as one year's interest 
on the mortgage. Held, that while 
the surrender by A of her mortgages 
operated as a payment /j-o tanto of the 
mortgage executed by her, even as 
against a bona fide purchaser, and 
though B was not estopped, by his 
payment of the sum specifically as in- 
terest due, from disputing the validity 
of the mortgage as to the full amount, 
yet as his payment was a voluntary 
one on a disputed claim, he could 
not recover it back, nor could he have 
the excess over the interest actually 
due applied on the principal of the 
mortgage debt. Bennett •;■. Bates, 94 
N. Y. 354. And see on the general 
subject, Abercrombie v. Skinner, 42 
Ala. 633 ; Kaufman v. Dickensheets, 
30 Ind. 258; s. c, 90 Am. Dec. 694; 
Meyer v. Clark, 2 Daly (N. Y.) 497; 
Shelley -d. Lash, 14 Minn. 498; Beech- 
er V. Buckingham, 18 Conn, no; s. c, 
44 Am. Dec. 580; Montgomery v. 
Gibbs, 40 Iowa 652 ; Chicago etc R. 
Co. V. Chicago etc. Coal Co., 79 111. 
121 ; Puckett v. Roquemore, 55 Ga. 
235 ; Ligonier v. Ackerman, 46 Ind. 
552; s. c, 15 Am. Rep. 323; Irwin v. 
Thomas, 12 Kan. 93; Juneau v. 
Stunkle, 40 Kan. 756; Potomac Coal 
Co. V. Cumberland etc. R. Co., 38 
Md. 226 ; Tompkins v. Hollister, 60 
Mich. 485 ; Hope v. Evans, i Smed. & 
M. Ch. (Miss.) 195; Sheldon v. South 
School District, 24 Conn. 88 ; Cum- 
mins V. White, 4 Blackf. (Ind.) 356; 
Gerecke v. Campbell, 24 Neb. 306; 
Randall v. Lyon Co. (Nev. 1887), 14 
Pac. Rep. 583; Newell v. March, 8 
Ired. (N. Car.) 441 ; Gilpatrick v. 
Sayward, 5 Me. 465 ; Rawson v. 
Porter, 9 Me. 119; Association v. 
Ellslen, 6 Phila. (Pa.) 6; Speise v. 
McCoy, 6 W. & S. (Pa.) 485; s. c, 40 
Am. Dec. 579; Eaton v. Eaton, 35 N. 
J. L. 290 ; Mayor etc. of N. Y. v. Er- 
ben, 10 Bosw. (N. Y.) 189; 24 How. Pr. 
(N. Y.) 358; Jackson v. Ferguson,? 
La. Ann. 723 ; Buffington v. Dink 



217 



Volnntary Payment. 



PA YMENT. 



Under Duress or by !Frand. 



2. Under Duress or by Fraud. — Yet to render a payment volun- 
tary, in the proper sense of the word, the parties must stand upon 
equal terms. There must be no duress operating upon the one ; 
there must be no oppressiom or fraud practiced by the other.* 



grave, 4 La. Ann. 550; Edgar v. 
Shields, I Grant Cas. (Pa.) 361 ; Wj- 
man v. Farnsworth, 3 Barb. (N. Y.) 
369; Abell V. Douglas, 4 Den. (N. Y.) 
305; Tyler w. Smith, 18 B. Mon. (Ky.) 
793 ; Baltimore etc. R. Co. v. Faunce, 
6 Gill (Md.)68; Waite v. Leggett, 8 
Cow. (N. Y.) 195; s. c, 18 Am. Dec. 
441 ; Commercial Bank v. Reed, 11 
Ohio 498 ; Lake v. Artisans' Bank, 3 
Abb. App. Dec. (N. Y.) 10; Schlaefer 
V. Heiberger (Supreme Ct.), 4 N. Y. 
Supp. 74; Gwynn 7). Gwynn (S. Car. 
1889), 10 S. E. Rep. 221 ; Gillett v. 
Brewster (Vt. 1890), 20 Atl. Rep. 105; 
Comstock i\ Tupper, 50 Vt. 596; 
Moffitt V. Carr, i Black (U. S.) 273; 
White V. United States, 11 Ct. of CI. 
578; The Nicanor, 40 Fed. Rep. 361. 

1. Morgan v. Palmer, 4 D. & R. 
283; Moses V. McFarlan, 2 Burr. 1005 ; 
Arnold v. Georgia etc. R. Co., 50 Ga. 
304 ; Beckwith v. Frisbie, 32 Vt. 559. 
See also cases cited under preceding 
head. 

A mere apprehension of legal pro- 
ceedings does not make the payment 
a compulsory one. Ligonier v. Ack- 
erman, 46 Ind. 552; s. c, 15 Am. Rep. 

323- 

Duress of goods does not exist be- 
cause a mortgagee of chattels threatens 
to take possession and sell in pursu- 
ance of the power contained in the 
mortgage, unless the mortgagor pays 
■ an amount in excess of what is due. 
Vick V. Shinn, 49 Ark. 70 ; s. c, 4 Am. 
St. Rep. 26. 

Coercion or duress, to render a pay- 
ment involuntary, must consist of 
some actual or threatened exercise of 
power possessed, or believed to be pos- 
sessed, by the party exacting or re- 
ceiving the payment, over the person 
or property of another, from which 
that other hCs no immediate means of 
relief than by making payment. Ra- 
dich V. Hutchins, 95 U. S. 210. Or 
the payment must have been made to 
release the person or property of the 
party from detention, or to prevent a 
seizure of -either one by one having 
apparent authority to seize it without 
resorting to an action. Waubaunsee 
Co. V. Walker, 8 Kan. 431 ; Devlin v. 
United States, 12 Ct. of CI. 266; Wolfe 
V. Marshal], 52 Mo. 167. 



Where one having in his possession 
the property of another upon which 
he claims a lien, refuses to deliver it 
up to the owner without payment of. 
the lien, and the owner thereupon 
pays the amount under protest in 
order to get possession of his prop- 
erty, such payment is not a voluntary- 
one, and may be recovered back. 
Briggs V. Boyd, 56 N. Y. 289. 

Where an officer of the United 
States was induced to pay a balance 
claimed by the suspension of his official 
functions and compensation, and his 
apprehension of being tried by a court 
martial, this was not such duress as 
would make the paym^ent an involiin- 
tary one. Hall .v. United States, 9 
Ct. of CI. 270. Neither is the mere 
fear of a criminal prosecution. St. 
Louis etc. R. Co. v. Thomas, 85 111. 
464; Comstock V. Tupper, 50 Vt. 596. 

A member of a stock board, against 
whom a claim is made by another 
Vnember under the rules of the board 
for a deficiency arising from a sale of 
stock, and who, upon being cited to 
appear before the arbitration com- 
mittee, pays the claim with full knowl- 
edge of all the facts, cannot recover it 
back. Quincy v. White, 63 N. Y. 

370- 

The mere fact that one will be sued 
for a demand is not such compulsion 
as will warrant his paying under pro- 
test, and a payment so made cannot 
be recovered back. Muscatine v. 
Keokuk etc. Packet Co., 45 lowa 185. 

Money may be recovered back 
^hich is obtained by abuse of legal 
process. Cadaval v. Collins, 4 Ad. & 
El. 858; s. c, 6 Nev. & Man. 324; 
Cocke v. Porter, 2 Humph. (Tenn.) 
15; De Bow v.. United States, 11 Ct. 
of CI. 672. 

Thus where the goods of a party 
have been attached by one who knows 
that he has no cause of action, and for 
the purpose of extorting money, ■ a 
payment to free the goods from the 
attachment is not voluntary, and the 
money may be recovered back. 
Chandler v. Sanger, 114 Mass. 364;- 
s. c, 19 Am. Rep. 367. To same 
eflfect, Spaids v. Barrett, 57 111. 289; 
s. c, II Am. Rep. 10; Nicodemus v. 
East Saginaw, 25 Mich. 456; Adams 



218 



Yolantary Payment. 



PA YMENT, 



FroteBt. 



3. Protest. — In such case the payment must be made under pro- 
test, in order to entitle the party to reclaim it.* 



■V. Reeves, 68 N. Car. 134; s. u., 12 Am. 
Rep. 627. 

An obligor, offering to pay liis bond 
in Confederate money, said to the ob- 
ligee that he dare not refuse to accept 
Confederate notes, and that if he did 
he would be imprisoned as disloyal. 
This was held not to be enough, stand- 
ing alone, to constitute such duress as 
would avoid ihe payment. Simmons 
■V. Trumbo, 9 W. Va. 358. 

A when not in custody nor threat- 
ened with illegal arrest, but being in- 
debted to B for the amount of two 
notes forged by A and transferred to 
B, agreed that A's wagon, then in B's 
possession, should be sold at auction, 
and that B should in consideration 
thereof surrender the notes to A. The 
wagon was sold, B becoming the pur- 
chaser, and thereupon the notes were 
surrendered to A, who destroyed 
them. In an action by A against B to 
recover the value of the wagon, it was 
held that he was not entitled to re- 
cover. Kissock V. House, 23 Hun (N. 

Y.) 35. 

But where the money was paid un- 
der threat of defendant to have plain- 
tiff's son arrested and prosecuted for 
burglary and larceny, and was not 
given to compound a felony, it may be 
recovered back. Schultz v. Culbert- 
son, 49 Wis. 122. See also Heckman 
V. Swartz, 50 Wis. 267. 
■ Where an agreement to make the 
payment is made under duress, a sub- 
sequent payment in accordance with 
such agreement is not involuntary, 
where no legal steps are taken to re- 
sist the enforcement of the agreement. 
Mayor etc. of Savannah v. Feeley, 66 
Ga. 31. 

And see generally on the subject 
of the recovery back of money al- 
leged to have been paid by reason of 
duress or of fraud. In re Walter 
(Ala. i8go), 7 So. Rep. 400; Durr ■y. 
Howard, 6 Ark. 461 ; People v. Vis- 
cher, 9 Cal. 365 ; Jefferson Co. v. 
Hawkins, 23 Fla. 223 ; Ingalls v. 
Miller (Ind.), 22 N. E. Rep. 995; Ly- 
man V. Lauderbaugh, 75 Iowa 484; 
Wabaunsee Co. v. Walker, 8 Kan. 
431 ; Wolfe V. Marshall, 52 Mo. 167; 
First Nat. Bank v. Watkins, 21 Mich. 
483 ; Elston v. Chicago, 40 111. 514; s. c, 
89 Am. Dec. 361 ; Storer v. Mitchell, 
45 111. 213; Mayor etc. of Baltimore v. 



219 



Lefferman, 4 Gill (Md.) 425; s. c, 45 
Am. Dec. 145; Claflin v. McDonough, 
33 Mo. 412 ; s. c, 84 Am. Dec. 54 ; Irv- 
ing t'. St. Louis, 33 Mo. 575; Hayes v. 
Huflfstater, 65 Barb. (N. Y.) 531; 
Quincey v. White, 63 N. Y. 370 ; Ar- 
nold V. Crane, 8 Johns. (N. Y.) 79; 
Anderson v. Lewis, 31 Tex. 675 ; Mc- 
Cartney V. Wade, 2 Heisk. (Tenn.) 
369 ; Wilkerson v. Bishop, 7 Coldw. 
(Tenn.) 24; Wood v. Willis, 32 Tex. 
670; Buford V. Lonergan (Utah 1889), 
22 Pac. Rep. 164; Maxwell v. Gris- 
wold, 10 How. (U. S.) 242; Tutt V. 
Ide, 3 Blatchf. (U. S.) 249; Schlesinger 
V. United States, i Ct. of CI. 16; Har- 
mony V. Bingham, 12 N. Y. 99;s. c, 62 
Am. Dec. 142 ; White v. Heylman, 34 
Pa. St. 142 ; Beckwith v. Frisbie, 32 
Vt. 559; De Bow v. United States, 11 
Ct. of CI. 672 ; Devlin v. United States, 
12 Ct. of CI. 266; Corkle v. Maxwell, 3 
Blatchf. (U.S.) 413. 

1. Town of Ligonier v. Ackerman, 
46 Ind. 5i;2; s. c, 15 Am. Rep. 323; 
White t;rUnited States, 11 Ct. of CI. 

578. 

And the protest must state the 
grounds of illegality. Meek v. Mc- 
Clure, 49 Cal. 624. 

But if a public officer who illegally 
demands money of a person and ex- 
acts the payment thereof by coercion, 
has notice of the facts which render 
the demand illegal, a protest is unnec- 
essary. Meek v. McClure, 49 Cal. 
624. 

A protest alone, however, cannot 
change what would otherwise in law 
be a voluntary payment into an in- 
voluntary one. Detroit v. Martin, 34 
Mich. 170; s. c, 22 Am. Rep. 572. See 
also cases cited supra. 

Where the statute requires the pro- 
test to be in writing, an oral state- 
ment to the clerk of a city treasurer 
that the payment is made under pro-' 
test is not sufficient, though the clerk 
acting upon instructions to make a 
note of all protests, wrote upon the re- 
ceipt that the tax was paid under pro- 
test, and also made a memorandum to 
that effect on the treasurer's books. 
Knowles v. Boston, 129 Mass. 551. 

But it is no objection that it was 
written across the face of the tax -bill, 
nor that after presentation to the col- 
lector it was not left with him but was 
taken away by the tax-payer. Bor- 



Volantary Payment. 



PA YMENT. 



Of Tazei. 



4. Of Taxes. — A voluntary payment of an illegal tax cannot be 
recovered back ; and if there is no mode of collecting the tax ex- 
cept by an ordinary proceeding at law or in equity, a payment 
will be considered voluntary, though made under protest.^ 



land V. Boston, 132 Mass. 89; s. c, 42 
Am. Rep. 424. 

See generally as to the effect of a 
protest, McMillan v. Richards, g Cal. 
365 ; Kansas Pac. R. Co. v. Wyandotte 
Co., 16 Kan. 587 ; Wabaunsee Co. -u. 
Walker, 8 Kan. 431 ; Forbes v. Apple- 
ton, 5 Cush. (Mass.) 115; Benson v. 
Monroe, 7 Ciish. (Mass.) 125; Cook v. 
Boston, 9 Allen (Mass.) 393; Await •?'. 
Eutaw, etc. Assoc, 34 Md. 435; Wil- 
liams V. Colby, 44 Vt. 40; Detroit t\ 
Martin, 34 Mich. 170 ; Copas v. Anglo- 
American Provision Co., 73 Mich. 541 ; 
McCabe v. Shaver, 69 Mich 25. 

1. Wills V. Austin, 53 Cal. 152 ; Mer- 
rill V. Austin, 53 Cal. 379; Goddard v. 
Seymour, 30 Conn. 394 ; Garrigan v. 
Knight, 47 Iowa 525 ; Morris v. May- 
or etc. of Baltimore, 5 Gill (Md.) 248; 
Marietta v. Slocomb, 6 Ohio St. 471 ; 
Drake T'. Shurtliff, 24 Hun (N. Y.) 
422. 

An assessment for a municipal im- 
provement, if voluntarily paid, cannot 
be recovered back,though the payment 
was made under protest, and the law- 
authorizing the assessment was sub- 
sequently adjudged unconstitutional. 
Peebles t;. Pittsburg, loi Pa. St. 304; 
s. c, 47 Am. Rep. 714 (cases reviewed) ; 
Rogers v. Greenbush, 58 Me. 390 ; s. c, 
4Am. Rep. 292; Detroit f. Martin, 34 
Mich. 170; s. c, 22 Am. Rep. 512, and 
note p. 519; Wabaunsee Co. t;. Wal- 
ker, 8 Kan. 431 ; Bucknell v. Story, 46 
Cal. 589; s. c, 13 Am. Rep. 220 ; Ligon- 
ier V. Ackerman, 46 Ind. 552; s. c, 15 
Am. Rep. 323. In this last case there 
is a very full citation and review of the 
authorities. First Nat. Bank v. Mayor 
etc. of Americus, 68 Ga. 119; s. c, 45 
Am. Rep. 476. 

Compare Parcher v. Marathon Co., 
52 Wis. 388; s. c, 38 Am. Rep, 745; 
Peyser w Mayor, ' etc. of N. Y., 70 N. 
Y. 497; s. c, 26 Am. Rep. 624; Jersey 
City V. Riker, 38 N. J. L. 225 ; s. c, 20 
Am. Rep. 386; Louisville v. Anderson, 
79 Ky. 334; s. c, 42 Am. Rep. 220. 

Unless there is a statute specially 
authorizing such recovery. Durham 
V. Montgomery Co., 95 Ind. 182. 

If property is assessed for street im- 
provements to a stranger, and the true 
owner, with knowledge of the facts. 



but under a misapprehension of, or in 
ignorance of, the law, pays the tax un- 
der protest and to prevent a threat- 
ened sale by the tax collector, such 
p.ayment is voluntary and cannot be 
recovered back. Bucknell v. Story, 46 
Cal. 589; s c, 13 Am. Rep. 220. 

Land having been sold to a city for 
unpaid taxes, the owner made a writ- 
ten proposition to the c.ity government, 
with a view to avoid any unnecessary 
dispute, to pay the tax if the city would 
remit the interest and penalty and re- 
lease all claim to the land, the payment 
to be without any prejudice to any right 
of such owner in the premises,or to their 
assertion in the courts. The proposi- 
tion was accepted and acted upon, the 
collector's receipt for the taxes stat- 
ing that "the above amount is paid un- 
der protest." Held, that the payment 
was a voluntary one, and the money 
could not be recovered back though 
the land was not subject to taxation. 
Galveston City Co. v. Galveston, 56 
Tex. 486. 

Where the money was paid for taxes 
or as redemption money on lands, the 
entry of which had been suspended by 
the Land Department for failure of the 
local land officers to account for the 
entrance money to the United States, 
it cannot be recovered back pending 
such suspension. Whether it can be 
after the entry is finally canceled, 
qua re. Foster t'.Pierce Co., 15 Neb. 48. 

A tax paid cannot be recovered back 
on the ground of the unconstitutional- 
ity of the statute under which it was 
levied, where there was no compul- 
sion except the threat of selling the 
land. Detroit ?'. Martin, 34 Mich. 170; 
s. c, 22 Am. Rep. 512; San Francisco 
etc. R. Co. V. Dinwiddle, 8 Sawyer 
(U.S.) 312. 

The owner of a city lot tendered to 
the treasurer of the county the taxes 
due thereon. The lot had also been 
assessed by the city for a street im- 
provement, which assessment had been 
certified to the county auditor, and 
placed upon the duplicate for collection, 
as other taxes, but was void for want of 
authority to make it. The county 
treasurer refused to receive the taxes 
legally due, unless the owner would 



a20 



Voluntary Payment. 



PA YMENT. 



Officer Threatening, etc. 



5. Officer Threatening to Execute Warrant. — But if the officer de- 
manding the tax or assessment have in his possession at the time 
a warrant which is in the nature of an execution running against 
the property, and the party can save himself in no other way 
than by paying the illegal demand, he may then pay it under pro- 
test, and recover it back upon showing that the demand was 



illegal. 



also pay the assessment, and upon his 
declining to do so, the lot was re- 
turned delinquent and was about to be 
sold at tax sale. To prevent such sale, 
the owner paid the assessment under 
protest, and also the taxes. It was held 
that such payment was not voluntary, 
and could be recovered back. Stephen 
V. Daniels, 27 Ohio St. 527. 

Where, by anofBcial survey made by 
a city engineer, certain property was 
included within the corporate limits, 
and the owner, without protest, paid 
the municipal tax thereon, he cannot 
recover the amount, though on a re- 
survey by a subsequent engineer the 
property was found to be outside the 
city limits. Jackson v. Atlanta, 61 Ga. 
228. 

Comfare Indianapolis v. McAvoy, 
86 Ind. 587. 

And it is held by the court' of ap- 
peals of Kentucky that though the il- 
legal taxes were voluntarily paid, yet 
if it were paid under a mistake of both 
law and fact, it may be recovered back. 
(CitinffCAses, from Kentucky, Connec- 
ticut and Alabama). Louisville v. An- 
derson, 79 Ky. 334 ; s. c, 42 Am. Rep. 
220. 

In Indiana there is a statutory pro- 
vision for the refunding of taxes, 
wrongfully assessed, (i Rev. Stat. 1876 
3i(^, 311, §§ 84, 85; 1881, fj 5813). To 
bring a case within the statute, how- 
ever, it is not enough to show that the 
taxes were irregularly assessed ; it 
must be made to appear that they were 
not legally or equitably owing. Carroll 
Co. V. Graham, 98 Ind. 279. 

See also Indianapolis v. McAvoy, 86 
Ind. 587 ; Durham v. Montgomery Co. 
95 Ind. 182. 

In Iowa it is held that where a tax 
is not merely informal and irregular, 
but is illegal and void as being levied 
on property not liable to taxation, and 
the owner of the property makes pay- 
ment under protest, the better rule is 
that he may recover it back. Winzer 
V. Burlington, 68 Iowa 279 (where 
cases are to some extent compared) ; 
Thomas v. Burlington, 69 Iowa 140. 



But these cases are decided more 
upon the wording of the statute than 
upon the rule as it exists independent- 
ly of statutory provisions, § 870 of the 
Iowa Code providing for the refund- 
ing of taxes found to have been erro- 
neously or illegally exacted or paid. 
See Isbell v. Crawford Co., 40 Iowa 
102 and earlier decisions. 

Where water commissioners collected 
an excessive rate from a manufactur- 
ing corporation, under threats that if 
it were not paid the water would be 
turned off, thus closing the factory 
and throwing a large number of hands 
out of employment, it was held that 
the payment was not a voluntary one, 
that the excess could be recovered 
back. Westlake v. St. Louis, 77 Mo. 
47 ; s. c. 46 Am. Rep. 4. 

A town having passed an ordinance 
requiring a license for selling liquors, 
the legality of which was questioned, 
an agreement was entered into be- 
tween the town trustees and the liq- 
uor dealers, that if the latter would 
pay the license fee, such fee should 
be refunded in case the town should 
fail to recover judgment in certain 
cases then pending in the courts 
to test the legality of the ordinance. 
Plaintiff paid the license fee, and the 
ordinance was subsequently adjudged 
invalid. Held, that this was not a vol- 
untary payment, but one made under 
contract, and plaintiff was entitled to 
recover. Columbia City v. Anthes, 
84 Ind. 31; s. c, 43 Am. Rep. 80. 

See also Edinburg v. Hackney, 54 
Ind. 83. 

A payment to the treasurer of San 
Francisco to purchase a license as a 
passenger brolier cannot be recovered 
back. Garrison v. Tillinghast, 18 Cal. 
408. 

And see, on the general subject, 
Carr v. Stewart, 58 Ind. 581 ; Mearkle 
V. Hennepin Co. (Minn. 1890), 47 N. 
W. Rep. 165 ; Smyth v. Mayor etc. of 
N. Y., II N. Y. Supp. 583; Vander- 
beck V. Rochester (N. Y. 1890), 25 N. 
E. Rep. 408. 

1. Union Pac. R. Co. Ti. Dodge Co., 98 



221 



Voluntary Payment. 



PA YMElStT. 



A Mere Threat to Sell, 



6. A mere threat to sell realty for an illegal and void tax will 
not render the payment voluntary, since such a sale will not cast 
a cloud on the title. ^ 

7. Payment to Common Carrier. — A payment made to a common 
carrier of a sum of money illegally charged for freight, upon a 
refusal by the carrier to transport the goods unless the illegal 
freight is paid, is not voluntary but compulsory.* 



U. S. 541 ; Kansas Pac. R. Co. v. Wyan- 
dotte Co., 16 Kan. 587 ; Preston v. Bos- 
ton, 12 Pick. (Mass.) 14 ; Wright v. Bos- 
ton, 9 Cush. (Mass.) 241 ; Boston etc. 
Glass Co. V. Boston, 4 Met. (Mass.) 189; 
Borough of Allentown v. Saeger, 20 
Pa. St. 421 ; Bruecher v. Village of 
Porf Chester, loi N. Y. 240 ; Tuttle -v. 
Everett, 51 Mass. 27 ; s. c, 24 Am. Rep. 
622; Maguire v. State Sav. Assoc, 62 
Mo. 344; Kimball v. Corn Exchange 
Nat. Bank, i 111. Abb. 209 ; Chicago v. 
Fidelity Sav. Bank, 11 III. App. 165; 
Western Union Tel. Co. v. Mayer, 
28 Ohio St. 521 ; O'Brien v. Colusa 
Co., 67 Cal. 503 ; Grimley v. Santa 
Clara Co., 68 Cal. 575 ; Bates v. York 
Co. 15 Neb. 284; Foster v. Pierce Co., 
15 Neb. 48; Welton v. Merrick Co., 16 
Neb. 83. 

So if the officer hold legal process 
purporting to authorize the arrest or 
seizure of property to enforce a collec- 
tion of any kind. Atwell v. Zeluff, 26 
Mich. 118; McKee v. Campbell, 27 
Mich. 497; Post V. Clark, 35 Conn. 

339- 

It is not necessary to show that the 
distress was actually made. It is suffi- 
cient that the circumstances lead to the 
conclusion that such distress is im- 
pending and will certainly be made if 
the tax fs not paid. Howard f. Augus- 
ta, 74 Me. 79. 

Payment made under protest of an 
illegal tax, on demand by the sheriff, 
to prevent levy and sale, is not a vol- 
untary payment, though there is no 
present threat of levy. Parcher v. 
Marathon Co., 52 Wis. 388; s. c.'sS 
Am. Rep. 745. 

In order to recover from the collect- 
or in such cases, suit must be brought 
promptly before he is obliged to pay 
over the money. Hardesty v. Flem- 
ing- 57 Tex. 395. 

Where the tax is paid under a threat 
of the city collector to shut up the 
payor's shop, it is not voluntary, and 
may be recovered back from the col- 
lector, but not from the city. Vicks- 
burgh V. Butler, 56 Miss. 72. 



1. 2 Dill. Mun. Corp. (3d ed.) § 942; 
Bucknallf. Story, 46 Cal. 589; s. c, 13 
Am. Rep. 220; Rogers v. Greenbush, 
58 Me. 390 ; s. u., 4 Am. Rep. 292 ; 
Murphey v. Mayor etc. of Wilmington 
(Md., 1880), 10 Atl. Rep. 765 ; Detroit v. 
Martin, 34 Mich. 170; s. c, 22 Am. 
Rep. 512. 

A tax deed which is void on its face 
is not a cloud upon title, and a mere 
threat by a tax-collector to sell prop- 
erty and make such a deed will not 
render the payment of a tax voluntary. 
Wills V. Austin, 53 Cal. 152; Sears v. 
Marshall Co., 59 Iowa 603 ; Shane v. 
St. Paul, 26 Minn. 543. 

Plaintiff refused payment of a per- 
sonal tax on the ground of non-resi- 
dence, whereupon proceedings were 
instituted, which resulted in an order 
on him by the county judge to pay the 
tax, and enjoining him from disposing 
of his property. Plaintiff accordingly 
paid the tax, and sued the assessors to 
recover the amount. Held, that the 
payment was voluntary. Drake v. 
Shurtliff, 24 Hun (N. Y.) 422. 

2. 2 Greenl. Evid. § 121; Mobile etc. 
R. Co. V. Steiner, 61 Ala. 560; Chica- 
go etc. R. Co. V. Chicago etc. Coal Co., 
79 111. 121 ; Lafayette etc. R. Co. v. 
Pattison, 41 Ind. 312; McGregor v. 
Erie R. Co., 35 N. J. L. 89 ; West Vir- 
ginia Transp. Co. v. Sweetjser, 25 W. 
Va. 434. 

Compare Potomac Coal Co. v. Cum- 
berland etc. R. Co., 38 Md. 226. 

A carrier exacted from a shipper il- 
legal and unauthorized rates, and the 
shipper was required to pay the same 
in order to procure the transportation 
of his property, the failure to transport 
which would, by reason of the charac- 
ter of his business, have occasioned the 
shipper great loss. The shipper paid 
the illegal charges, complaining and 
objecting thereto. Held, that such 
payment was not voluntary, and may 
be recovered back. Peters v. Railroad 
Co., 42 Ohio St. 275 ; s. c, 51 Am. Rep. 
814. 

In the case of Parker v. Great West- 



222 



Voluntary Payment. 



PA YMENT. 



Hade in Ignorance of Law. 



8. Made in Ignorance of Law. — Money voluntarily paid to another 
under a mistake of law but with a knowledge of all the facts, can- 
no? be recovered back.* But it seems to be settled that when 
money is paid on a judgment which is afterwards reversed, the 



ern R. Co. (7 Man. & Gr. 253), which 
was a case involving this question, de- 
cided in 1844, TiNDAL, C. J., says: 
"We are of opinion that the pay- 
ments were not voluntary. They were 
made in order to induce the company 
to do that which they were bound to 
do without them, and for the refusal to 
do which an action on the case might 
have been maintained. . . . The 

case very much resembles that of 

■V. Plggott, mentioned by Lord Ken- 
yon, in Cartwright v. Rowley, 2 Esp. ' 
N. P. C. 723. That was an action 
brought to recover back money paid to 
the steward of a manor for producing 
at a trial some deeds and court rolls, for 
which he had charged extravagantly. 
The objection was taken that the money 
had been voluntarily paid, and so could 
not be recovered back again; but, it ap- 
pearing that the party could not do 
without the deeds so that the money was 
paid through necessity and the urgency 
of the case, it was held to be recoverai)le. 
We think the principle upon which 
that decision proceeded is a sound one, 
and strictly applicable in the present 
case, and that the defendants cannot, by 
the assistance of that rule of law on 
which they relied, retain the money 
that they have improperly receiv- 
ed." 

This decision is referred to with ap- 
proval by Mr. Justice Matthews, in 
Swift etc. Co. V. United States (iii U. 
S. 29). See also Feamley v. Morley, 5 
B. & C. 25; Parker v. R. Co., 6 Exch. 
702. 

In the Illinois case cited above, the 
court says: "It can hardly be said the 
enhanced charges were voluntarily paid 
by the appellees. It was a case of life 
and death with them, as they had no 
other means of conveying their coals to 
the markets offered by the Illinois Cen- 
tral, and were bound to accede to any 
terms the appellants might impose. 
They were under a sort of moral du- 
ress, by submitting to which appellants 
have recovered money from them 
which in equity and good conscience 
they ought not to retain." Chicago 
etc.R. Co. w. Chicago etc. Coal Co., 79 
111. 128. 

Nor does it affect the right to recover 



that the payments were made periodic- 
ally. Peters v. Railroad Co., 42 Ohio 
St. 275; s. c, ji Am. Rep. 814; Swift 
etc. Co. V. United States, iii U. S. 22. 

A navigation company which was 
bound to keep in repair certain dams 
failed to do so, and when an owner of 
logs refused to pay tolls threatened 
that unless he paid them a certain dam 
should be cut, the effect of which 
would have been the practical ruin of 
his business. A payment made by him 
under these circumstances was not vol- 
untary, and he could recover back the 
tolls thus extorted. Lehigh Coal etc. 
Co. V. Brown, 100 Pa. St. 338. 

1. Bilbie v. Lumley, 2 East 469; 
Stevens v. Lynch, 12 East 38; Lowrie 
V. Bourdieu, Doug. 467; Livermore v. 
Peru, 55 Me. 469; Clarke v. Dutcher, 9 
Cow. (N. Y.) 674; Norton v. Marden, 
15 Me. 45; s. c, 32 Am. Dec. 132; Mil- 
waukee etc. R. Co. V. Soutter, 13 Wall. 
(U. S.) 517; Bank of U. S. v. Daniel, 
12 Pet. (U. S.) 32; Champlin v. Lay- 
tin, 18 Wend. (N. Y.) 407; s. c, 31 
Am. Dec. 382; Elliot v. Swartwout, 10 
Pet. (U. S.I 137; Brisbane v. Dacres, 5 
Taunt. 144; Wilson v. Bryan, 6 Yerg. 
(Tenn.) 485; Hubbard v. Martin, 8 
Yerg. (Tenn.) 498; Jones v. Watkins, i 
Stew. (Ala.) 8i;Milnes v. Duncan, 6 
B. & C. 671: Mowatt V. Wright, i 
Wend. (N. Y.) 355; s. c, 19 Am. Dec. 
508; Lammot v. Bowly, 6 Har. & J. 
(Md.) 500; Erkens v. Nicolin, 39 Minn. 
461; Real Estate Sav. Institution v. 
Linder, 74 Pa. St. 371; Irvine v. Han- 
lin, 10 S. & R. (Pa.) 219; Deysher v. 
Triebel, 64 Pa. St. 383; Natcher v 
Natcher, 47 Pa. St. 496; Snelson v. 
State, 16 Ind. 29; Rector v. Collins, 46 
Ark. 167; s. c, 55 Am. Rep. 571; 
Downs v._ Donnelj', 5 Ind. 496; Super- 
visors of Onondaga v. Briggs, 2 Den. 
(N. Y.) 26; New York etc. R. Co. v. 
Marsh, 12 N. Y. 308; Hunt v. Rous- 
manier, 2 Mason (U. S.) 342; s. c, 3 
Mason (U. S.) 294; s. c, on appeal, 8 
Wheat. (U. S.) 174. See also Hunt v. 
Rhodes, i Pet. (U. S.) i; Northrop v. 
Graves, 19 Conn. 548; s. c, 50 Am. 
Dec. 264; Haigh v. United States 
Building etc. Assoc, 19 W. Va. 792; 
,West Virginia Transp. Co. v. Sweet- 
zer, 25 W. Va. 434. 



223 



"VoluBtary Payment. 



PA YMENT. 



Made in Ignorance of Law. 



There is some confusion among the 
decisions as to the limitations of the 
rule. Champlin v. Laytin, i8 Wend. 
(N. Y.) 407; s. t., 31 Am. Dec. 382; 
Haven v. Foster, 9. Pick. (Mass.) 112; 
E. c, 19 Am. Dec. 3.i;3; Claflin v. God- 
frj, 21 Pick. (Mass.) 14. 

Though it has sometimes been 
doubted whether ignorance of law will 
prevent the recovery of money volun- 
tarily paid, where there is full knowl- 
edge as to the facts. See Champlin v, 
Laytin, 6 Paige (N. Y.) 189; s. c, 18 
Wend. (N. Y.) 407; s. c, 31 Am. Dec. 
382; Clarke v. Dutcher, 9 Cow. (N. Y.) 
674; Bize V. Dickason, i T. R. 285; 
Farmen v. Arundel, 2 W. Blacks. 825; 
Brigham v. Brigham, i Ves. Sr. 126; 
Cliflion V. Cockburn, 3 Ml. & Ky. 76; 
Northrop v. Graves, 19 Conn. 548; s. c, 
50 Am. Dec. 264; Stedwell v. Anderson, 
21 Conn. 139; Culbreath v. Culbreath, 
7 Ga. 64; s. c, 50 Am. Dec. 375; Under- 
wood V. Brockman, 4 Dana (Ky.) 309; 
s. u., 29 Am. Dec. 407; Ray -v. Bank of 
Kentucky, 3 B. Mon. (Ky.) 510; s. c, 
39 Am. bee. 479; Lammot v. Bowley, 
6 Har. & J. (Md.) 500; Haven v. Fis- 
ter, 9 Pick. (Mass.) 112, 129; s. c, 19 
Am. Dec. 353. 

Yet the weight of authority is in ac- 
cordance with the statement of the 
text. Bilbie v. Lumley, 2 East 469; 
Stevens v. Lynch, 12 East 38; Millins 
V. Duncan, 6 B. & C. 671; Brumston v. 
Robins, 4 Bing. 11; Bank of United 
States V. Daniel, 12 Pet. (U. S.) 32; 
Jones ti. Watkins, i Stew. (Ala.) 81; 
Wheaton v. Wheaton, 9 Conn. 96; 
Pinkham v. Gear, 3 N. H. 163; Peter- 
borough V. Lancaster, 14 N. H. 382; 
Clarke -v. Dutcher, 9 Cow. (N. Y.) 674; 
Mowatt V. Wright, i Wend. (N. Y.) 
355; s. i;., 19 Am. Dec. 508; Real Estate 
Sav. Institution v. Linder, 74 Pa. St. 
371; Gould V. McFall, 118 Pa. St. 455; 
s. c 4 Am. St. Rep. 606; Mayor of 
Richmond w. Judah, 5 Leigh (V a.) 305; 
West Virginia Transp. Co. v. Sweetzer, 
25 W. Va. 434; Beard v. Beard, 25 W. 
Va. 486; s. c, 52 Am. Rep. 219. 

In Bilbie v. Lumley (2 East 469) in 
which it was sought to recover back 
money paid under a policy of insur- 
ance, on the ground that a certain letter 
had not been disclosed at the time the 
assurance was effected which fact was 
known to the underwriter at the time 
the loss was adjusted, plaintiff's, counsel 
was asked by Lord Ellknborough 
whether he could state any case where 
a party paying money voluntarily, 
with full knowledge of the facts of the 



case, could recover it back on account 
of his ignorance of the law; adding: 
"Every man must be taken to be cog- 
nizant of the law, otherwise there is no 
sa3'ing to what extent ignorance might 
not be carried." 

And this is the view taken in Brisbane 
V. Dacres, 5 Taunt. 143; Gomery v. 
Bond, 3 M. & S: 378; East India Co. v, 
Tritton, 3 B. & C. 280; Baumston v. 
Robins, 4 Bing. 1 1 ; Piatt v. Bromage, 24 
L.'J., N. S. Exch. 63; McCarthy -v. De- 
caix, 2 R.'& Myln. 614. 

A payment voluntary made in gold 
coin before the decision of the United 
States Supreme Court declaring the 
legal tender act constitutional cannot be 
recovered back after such decision, if 
made without any misapprehension or 
mistake of fact. Doll v. Earle, 65 
Barb. (N. Y.) 298. 

While ordinarily a payment made 
under a mutual mistake of law cannot 
be recovered back, yet where goods are 
in possession of an officer, who has no 
authority to retain them, yet exacts 
from the owner a fee as a condition of 
restoring them, the payment of such fee 
is riot voluntary, though both parties 
believed it to be legal. De Bow v. 
United States, ri Ct. of CI. 672. 

Where two parties claimed the same 
land under a will, and with knowledge 
of all the facts and without any fraud 
or imposition, collected and voluntarily 
divided the rents and profits, neither 
can subsequently recover from the other 
the rents so voluntarily paid or allowed 
to be paid. White v. Rowland,-67 Ga. 
.546; s. c, 44 Am. Rep. 731. 

It is held in Minnesota that money 
paid under mistake of,law cannot be re- 
covered back where the transaction is 
unaffected by any fraud, trust, confi- 
dence or the like, but both parties acted 
in good faith, knew all the facts and 
had equal means of knowing them. 
Erkens v. Nicolin, 39 Minn. 461. 

Where the members of a mutual fire 
insurance company pay money to a re- 
ceiver upon an assessment which turns 
out to be, invalid, the money so paid 
cannot be recovered back. Wilde v. 
Baker, 14 Allen (Mass.) 349. 

A party in ignorance of the law that 
distances must yield to natural bound- 
aries called for in a deed, paid money 
for a quit-claim deed of property, 
which, under this rule, already belonged 
to him. Held, that the money could 
not be recovered back. Erkens v, 
Nicolin, 39 Minn. 461. 

But it is held in Illinois that where 



224 



Tolontary Payment. 



PA YMENT. 



Under mistake of Fact. 



money so paid may be recovered back.^ If part of the money is 
paid voluntarily after suit is brought and a decree is rendered for 
the balance, which decree is finally set aside, there can be no re- 
covery for the money paid.'-* Money paid under a mistake of a 
foreign law may be recovered back on the ground that such a 
mistake is one of fact.^ 

9. Under Mistake of Fact. — Money paid under a mistake of a 



the defendant in an action of contract 
has paid interest, erroneously deeming 
himself liable to pay it, the court, in 
assessing the amount due on the con- 
tract, will deduct such payments. Hall 
V. Jackson Co., 5 111. App. 609. 

Defendant without fraudulent intent, 
made certain representaions to plaintiff 
as to a patent, whereby plaintiff was 
induced to pay defendant a fixed sum 
for the privilege of operating under said 
patent. It was not claimed that there 
w^as any misrepresenation as to the 
actual contents of the patent and speci- 
fications, but the misrepresentations 
■were as to the legal validity thereof as 
against certain other patents. Held, 
that the money so paid could not be re- 
covered back, (cases reviewed). Schwa- 
zenbach v. Odorless Excavating Ap- 
paratus Co., 65 Md. 34; ». t., 57 Am. 
Rep. 301. 

If after a suit has been broilght to re- 
cover a sum of money, but before any 
judgment or decree has been rendered 
requiring it to be paid, defendant volun- 
tarily pays the money, he cannot re- 
cover it back, even though the judg- 
ment which is afterwards rendered 
against him for the amount is reversed 
on writ of error. Brisbane v. Dacres, 5 
Taunt. 152; Brown v. McKinnally, i 
Esp. 279; Humbt V. Richardson, 9 
Benj. 644; Milnes v. Duncan, 6 B. & 
C. 679; Forbes v. Appleton, 5 Cush. 
(Mass.) 155; Benson v. Monroe, 7 Cush. 
(Mass.) 125; s. c, 54 Am. Dec. 716; 
Beard t. Beard, 25 W . Va. 486; s. c, 52 
Am. Rep. 219. 

And see on the subject of the recovery 
back of money paid in ignorance of 
law: Patterson v. Cox, 25 Ind. 261; 
Peterborough v. Lancaster, 14 N. H. 
382; Vinal V. Continental Const. & 
Imp. Co. (Supreme Ct), 6 N. Y. Supp. 
595; 53 Hun (N. Y.) 247; Silliman f . 
Wing, 7 Hill (N. Y.) 159; Supervisors 
of Onondaga -v. Briggs, 2 Den. (N. Y.) 
26; Ege V. Koontze, 3 Pa. St. 109; Rob- 
inson V. City Council of Charleston, 2 
Rich. (S. Car.) 317; Natcher v. Natch- 
er, 47 Pa. St. 496; Valley R. Co. v. 
Lake Erie Iron Co., 46 Ohio St. 44; 



Real Estate Sav. Institution v. Linder, 
74 Pa. St. 371. 

1. Homer v. Barrett, 2 Root (Conn.) 
156; Sturges -v. Allis, 10 Wend. (N. 
Y.) 354; Duncan z'. Kirkpatrick, 13 S. 
& R. (Pa.) 292; Duncan v. Ware, 5 
Stew. & P. (Ala.) 119; Green v. Stone, 
I Har. & J. (Md.) 405; Clark T'.Pinney, 
6 Cow. (N. Y.) 297; Dennett v. Nev- 
ers, 7 Me. 399; Raun v. Reynolds, 18 
Cal. 275; McDonald v. Napier, 14 Ga. 
89; Stevens v. Fitch, 11 Met. (Mass.) 
248; Maghee v. Kellogg, 24 Wend. (N. 
Y.) 32; Bank of U. S. v. Bank of 
Washington, 6 Pet. (U. S.) 8; Paulding 
V. Watson, 26 Ala. 205; Williams v. 
Simmons, 22 Ala. 425. 

But money paid upon lawful process 
of execution cannot be recovered back 
though not justly or lawfully due by 
defendant in the execution to the plain- 
tiff. Federal Ins. Co. v. Robinson, 82 
Pa. St. 357; Rapalje v. Emorj', 2 Dall. 
(Pa.) 51- 

In Gould V. McFall, 118 Pa. 
St. 455; s. c, 4 Am. St. Rep. 6o5, 
a judgment was rendered against the 
defendants and an execution placed in 
the hands of the sheriff and the judg- 
ment, costs and interest were paid by 
one of the defendants. The judgment 
was reversed on appeal, but it was held 
that the money had been paid volun- 
tarily and could not be recovered. 

The court say: "And the general 
principle appears to be that money vol- 
untarily paid upon a claim of right can- 
not be recovered back however un- 
founded such a claim may afterwards 
turn out to be." 

See also Bond v. Coats, 16 Ind. 202; 
Gooding v, Morgan, 37 Me. 419; Jeffer- 
son Co. V. Hawkins, 23 Fla. 223. Com- 
jpare Logan v. Sumter, 28 Ga. 242. 

2. Beard v. Beard, 25 W. Va. 486; s. 
c, 652 Am. Rep. 219. 

3. Vinal v. Continental Const. & 
Imp. Co. (Supreme Ct.), 6 N. Y. Supp. 
595; Bently v. Whittemore, 18 N. J. Eq. 
336; King V. Doolittle, i Head (Tenn.) 
77; Haven v. Foster, 9 Pick. (Mass.) 
122; s. c, 19 Am. Dec. 353; Sawyer v 
Hammatt, 15 Me. 43. 



18 C. of L.— 15 



225 



Voluntary Payment. PA YMENT. TTnder Mistake of Faot 

material fact may be recovered back.^ But it must appear that 



1. Davis v. Krum, 12 Mo. App. 279; 
Grimes v. Blake, 16 Ind. i6b; Good- 
speed V. Fuller, 46 Me. 141; ». c, 71 
Am. Dec. 572; Glen v. Shannon, 12 S. 
Car. 570; Newell v. Smith, 53 Conn. 
72; Wolfe V. Beaird, 123 111. ^85; 
Wheadon v. Olds, 20 Wend. (N. 'Y.) 
174; Baldwin v. Foss, 17 Iowa 3S9; 
Canal Bank v. Bank of Albany, i Hill 
(N. Y.) 287; McLean Co. Bank v. 
Mitchell, 88 111. 52; Stempel v. 
Thomas, 89 111. 147; Higgins v. Men- 
denhall, 51 Iowa 135; Van Saten v. 
Standard Oil Co., 17 Hun (N. Y.) 140; 
Clark V. Sylvester (Me. 1888), 13 Atl. 
Rep. 404; Lane v. Pere Marquette etc. 
Co., 62 Mich. 63; Buffalo w.O'Malley, 61 
Wis. 255; Townsend v. Crowdy, 8 C. 
B. N., S. 477; Billingslea v. Ware, 32 
Ala. 415; Guild v. Baldridge, 2 Swan 
(Tenn.) 295; Southwick v. First Nat. 
Bank, 20 Hun (N. Y.) 349; Neitzev v. 
District of Columbia, 17 Ct. of CI. 11 1; 
United States v. Onondaga Co. Sav. 
Bank, 39 Fed. Rep. 259; Vinal v. Conti- 
nental Const. & Imp. Co., 53 Hun (N. 
Y.) 247; Johnson v. Leffingwell, 74 Iowa 
114; Lake V. Artisans' Bank, 3 
Abb. App. Dec. (N. Y.) 10; Sharkey 
V. Mansfield, 90 N. Y. 228; s. c, 43 Am. 
Rep. 161; Wood V. Armory, 105 N. Y. 
278; Fraker v. Little, 24 Kan. 598; s. c, 
36 Am. Rep. 262; Du Souchet v. 
Dutcher, 113 Ind. 249; Baldwin t'. Foss, 
71 Iowa 389. (Iowa cases cited.) Corn- 
fare Montgomery's Appeal, 92 Pa St. 
202; a. t., 37 Am. Rep. 670; Glenn *. 
Shannon, 12 S. Car. 570. But it has 
been held that in order to recover back 
money paid for a valid consideration 
it must be shown that the defendant 
was in some way responsible for the 
mistake. Manzy v. Hardy, 13 Neb. 33. 

When money has been paid under a 
mutual mistake or by the mistake of 
one party and fraudulently received by 
the other, an action to recover the same 
will lie, but is barred by the statute of 
limitations in five years. Higgins v. 
Mendenhall, 51 Iowa 135, overruling 
Higgins V. Mendenhall, 42 Iowa 675; 
McGinnis v. Hunt, 47 Iowa 658. 

Money paid under a mistake of fact 
may be recovered, notwithstanding a 
negligent failure to use the means of 
knowledge open to plaintiff. Disap- 
proving Layfayette etc. R. Co. v. Pat- 
tison, 41 Ind. 312; Indianapolis v. Mc- 
Avoy, 86 Ind. 587, and cases cited; 
Lyle' V. Shinnebarger, 17 Mo. App. 66; 



Dobson V. Winner, 26 Mo. App. 329; 
Lawrence v. American Nat. Bank, 54 
N. Y. 432; Mayer v. Mayor etc. of N. 
Y., 63 N. Y.455; Alston V. Richard- 
son, 51 Tex. I. Compare Neal v. 
Read, 7 Baxt. (Tenn.) 333; Union 
Sav. Assoc. V. Kehlor, 7 Mo. App. 158. 
Where the debtor trusts the creditor 
to make the calculation of interest on 
notes, and the creditor after making it 
assures the debtor that it is correct, and 
the statement is accepted and interest 
paid accordingly-, the debtor may, upon 
discovering that the calculation was 
erroneous, recover the excess paid. 
Worley v. Moore, 97 Ind. 15. To same 
effect, Hanson v. Jones, 20 Mo. App. 

595- 

In a Michigan case, where the trial 
court instructed that unless the pay- 
ment was made under a gross mistake 
of fact, the money could not be re- 
covered back, the supreme court held 
that the charge was as favorable, if not 
more so, as the defendant could reason- 
ably ask. Lane v. Pere Marquette 
Boom Co., 62 Mich. 63. 

The facts in the above case were as 
follows: The plaintiff made a written 
contract with defendant to drive his 
logs to L at an agreed price per thou- 
sand feet. A weekly statement was to 
be made by the owners of the mills to 
which the logs were delivered, which 
was to be made up from statements of 
the scaler, and the final settlement was 
to be made on the woods' scale. Plaint- 
ifTs scaler, at his request, rendered to 
the boom company a ' statement of the 
woods scale, and plaintifFpaid defendant 
upon the basis of such statement. After 
the logs were manufactured, plaintiff dis- 
covered that a gross error had been 
made in the measurement, where- 
by he had largely overpaid defendant, 
and brought suit to recover the excess 
paid by him. The court below charged 
the jury that if the discrepancy in the 
quantity of logs, as shown by the woods 
scale and those delivered, was caused 
by the dffFerence in judgment of the 
different scalers on account of defects 
in the quality of the logs, or the cir- 
cumstances under which the scale was 
made, then the plaintiff would be 
bound by the woods scale, and that the 
woods scale must control, unless clearly 
and positively impeached by showing a 
gross mistake. Held, no error. 

Where one by mistake pays taxes ofi 



226 



Voluntary Payment. 



PA YMENT. 



Under Mistake of Fact, 



another's land, he may recover the 
amount so paid from the true owner. 
Ooodnow V. Litclifield, 63 Iowa 282; 
GoodnowT). Oakley, 68 Iowa 25; Union 
R. & T. Co. V. Skinner, 9 Mo. App. 
189. Compare Carr v. Stewart, 58 Ind. 

581. 

But when the title to the land is in 
controversy, and one ot the parties, 
whose title is afterward adjudged in- 
valid, pays the taxes, he cannot re- 
cover the amount so paid from the 
other. Garrigan v. Knight, 47 Iowa 
525. Compare Goodnow v. Moulton, 
51 Iowa 555; Montgomery County v. 
Severson, 68 Iowa 451. 

Money paid upon a parol contract 
sale of goods, under a mutual mistaken 
belief that a certain inventory thereof 
made by a third party stated their true 
cash value, may be recovered back. 
Sheffield v. Hamlin, 26 Hun (N. Y.) 

237. 

If one after an investigation becomes 
satisfied that a claim is correct and 
pays it, he cannot recover the money 
back on the ground that it was paid 
under a mistake of fact, though he 
afterward discovers the claim to be 
baseless. McArthur v. Luce, 43 Mich. 
435; s. c, 38 Am. Rep. 204; Wheeler v. 
Hathaway, 58 Mich. 77. See Reisen- 
leiter v. Lutherische Kirche, 29 Mo. 
App. 2gi. ' 

Where a clerk of a court certified the 
same bill of costs for the same services 
three times, and the county board re- 
lying upon the certificates, made to the 
sheriff treble payments, the money so 
paid could be recovered. Holmes v. 
Lucas Co., 53 Iowa 211. 

A government officer who has been 
paid money to which he is not entitled, 
through a mistake of the accounting 
officers, may be compelled to refund it. 
McElrath v. United States, 12 Ct. of 
CI. 201. 

In Massachusetts an indorser was 
held entitled to recover money which 
he had paid to take up the note, he 
having relied upon the certificate of a 
notary as to its dishoaor, and it after- 
wards appearing that the d'emand upon 
the maker was insufficient to charge the 
indorser. Talbot X'. National Bank, 
129 Mass. 67; s. c, 37 Am. Rep. 302. 

A party who has paid money on an 
indorsement which he recognized as 
genuine, but which he afterwards dis- 
covered to be a forgery, cannot recover 
It back. Lewis v. White's Bank, 27 
Hun (N. Y.) 396. 

If an executor or administrator care- 



lessly, negligently and voluntarily pays 
legacies or distributive shares before 
the estate is settled, and afterwards 
finds he has overpaid the legatee 
or distributee, he cannot recover the 
sum so paid unless he can show reason- 
able diligence on his part in ascertain- 
ing the condition of the estate, and 
special circumstances that reasonably 
misled him in making the pa^-ments. 
Lyle V. Siler, 103 N. Car. 26. 

Where the money is paid for a valid 
consideration, it cannot be recovered 
on the ground that it has been paid 
under a mistake of fact, unless it is 
shown that the party receiving it is 
in some way responsible for the mis- 
take. Manzy v. Hardy, 13 Neb. 36. 

Where an agreement had been made 
whereby the creditors were to receive 
fifty per cent, of their claims against 
the debtor, and one of the creditors re- 
ceived the full amount of his claim on 
account of the debtor supposing it to 
be twice as large as it really was, which 
mistake was known to the creditor, an 
action will lie to recover back the 
amount overpaid. Trecy v. Jefts, 149 
Mass. 211. 

Money paid under a mistake as to the 
law of another State, may be re- 
covered back on the ground that such 
a mistake is one of fact. Vinal v. Con- 
tinental Const. & Imp. Co., 53 Hun 
(N. Y.) 247. 

Where A, believing that he owed 
certain money to B, by arrangement 
paid it to C, a creditor of B, who re- 
ceived it in good faith from A, the lat- 
ter cannot recover it back from C, who 
in consequence may have lost or 
waived remedy against the debtor B. 
Guild V. Baldridge, 2 Swan (Tenn.) 

295- 

Where a mistake had been made in 
deducting the amount of duty which 
the parties to a sale of goods thought 
would be the proper amount, the 
amount deducted being 25 cents per 
pound, while the legal rate was only 20 
cents per pound, it was held that it was 
a mistake of fact and not one of law, 
and a recovery of the excess was al- 
lowed. Renard v. Fiedler, 3 Duer (N. 
Y.) 318. 

Money paid by the agents of the 
government in excess of their author- 
ity may be recovered back by the 
government. United States v. City 
Bank, 6 McLean (U.S.) 130. But see 
United States v. Union Bank. 10 Ben. 
(U. S.) 408. 

Money paid by one bank to a I^ew 



227 



VolTintary Payment. 



PA YMENT. 



t7ndeT Mistake of Fact. 



York bank to be credited to another 
bank in excess of the amount due the 
latter bank from the first, may be re- 
covered back and the proceeds could 
be taken wherever found, unless they 
had passed into the hands of an inno- 
cent holder. First Nat. Bank t). Mas- 
tin Bank, 2 McCrary (U. S.) 438. 

Under a contract to purchase milk 
at a certain price per gallon with the 
understanding that the cans in which 
the milk was delivered contained eight 
gallons, when in fact they contained 
much less, an action will lie to recover 
the money paid over the true amount 
due. Devine v. Edwards, loi 111. 138. 

In Boyce v. Wilson, 32 Md. 122, the 
parties entered into an agreement for 
the purchase of property, and the 
agreement expressed the consideration 
as $90,322, which sum was paid. But 
it was afterwards found that there had 
been a mistake in an arithmetical com- 
putation of $9,072. An action at law 
was brought to recover this amount, 
and it was held, ist, that the terms of 
the agreement could not be varied by 
parol evidence ; 2nd, that the mis- 
take was not such a one as a court of 
law could correct, as the payment was 
just as the contract provided for ; 3rd, 
that the contract would have to be re- 
formed- in equity. 

In Piscataquis v. Kingsbury, 73 Me. 
326, an execution was taken out against 
a town, and property not belonging to 
the town was sold at a sheriff's sale. It 
was held that the purchase could re- 
cover the money paid because there 
was mistake of fact. 

A mistake by a county clerk in 
making out an execution is a mistake 
of fact. Piscataquis v. Kingsbury, 73 
Me. 326. 

In Moore v. Moore, 127 Mass. 22, an 
executor paid money under a mistake 
or misapprehension of the meaning of 
the testator's will. It was held that an 
action would not lie against the per- 
son who received the money, believing 
it to be his own, in favor of him who 
was entitled to it under the will. 

When both parties were mistaken 
as to the title to certain premises, it 
was held that an action would lie to re- 
cover the rents and profits from the 
person who supposed he had the right 
to receive them. Shaw v. Mussey, 48 
Me. 247. 

A demand for the money paid by 
mistake of the payor, when the payee 
knew it was paid by mistake is not nec- 
essary before bringing suit for its re- 



covery. Sharkey v. Mansfield, 90 
N. Y. 227; s. c, 43 Am. Rep. 161. 

Money overpaid on a mortgage on 
account of ignorance of the amount due, 
reliance having been placed upon the 
statements of the creditor may be re- 
covered back. Byrnes v. Martin, 67 
Mich. 399. 

When a son forged two mortgages 
on his father's land and the second 
mortgagee took the money to be paid, 
by him and paid up the first mortgage, 
he cannot after the discovery of the 
forgery maintain an action against the 
first mortgagee for the money so paid. 
Walker v. Conant, 69 Mich. 321. 

Under the Kentucky statute provid- 
ing that where by mistake one cred- 
itor of a decedent is paid more than his 
proportion of the assets the amount 
overpaid may be recovered back by 
the personal representatives, where a 
widow who is the executrix of her de- 
ceased husband pays his debts from 
the proceeds of an insurance policy 
which belong to 'her, on' the supposi- 
tion that the estate was solvent and 
would pay her back, which turns out to 
be insolvent, the creditors receiving 
such insurance money will be com- 
pelled to pay it back pro rata. Moore 
V. Morris, (Ky. 1889), 11 S. W. Rep. 
780. 

When by mutual mistake in settling 
an account one of the parties receives 
and cashes a check overpaying the 
amount due him, an action of tort will 
not lie against him for converting the 
check to his own use. Richardson v. 
Stevens (Supreme Ct.), 6 N. Y. Supp., 
361. 

Computation of Interest. — A common 
mistake of fact for which money may 
be usually recovered, arises in comput- 
ing interest. Major v. Tardos, 14 La. 
Ann. 10; Worley v. Moore, 97 Ind. 
15 ; Boon v. Miller, 16 Mo. 457. 

When a mortgage deed called for 
4)^£ per cent, interest, but the deed 
being lost only 4£ per cent, was col- 
lected, it was held that the difference 
could be recpvered in a proper action. 
Gregory v. Philkington, 39 Eng. L. & 
Eq. 316. 

Where a mortgagor paid interest 
twice by mistake, it was held that an 
action would not lie to recover the 
overpayment as long as a larger sum 
was due from him on the mortgage, 
and that he would have the benefit of 
the payment when the bond and 
mortgage would be foreclosed. Jack- 
son V. McKnight, 17 Hun (N. Y.) 2. 



228 



Voluntary Payment. 



PA YMENT. 



TTndeT Mistake of Fact. 



the money paid was not equitably due.^ And when money has 
been paid under a mistake of fact which the payor had the 
means of knowing, it has been held that it could not be recovered 
back.* However, this doctrine' has been seriously questioned by 
many courts, and may still be regarded as unsettled.^ So also 
when money is paid under a bona fide forgetfulness of facts which 
disentitled the defendant to receive it, an action will lie to recover 
it back.* Where money is paid when a mistake is in question, 



Whea interest was paid upon a note 
designedly made without interest, by- 
reason of a mistake of fact, it was al- 
lowed to be recovered back. Hatha- 
way V, Hagan, 59 Vt. 75. 

And see on the question of a mistake 
of fact, as giving the right to recover 
back money which otherwise might be 
deemed to have been paid voluntarily, 
Rutherford v. Mclvor, 21 Ala. 750; 
Banks v. Marshall, 23 Cal. 223 ; Ver- 
non V. West School District, 38 Conn. 
112; Brown v. College Corner etc. 
Gravel Road Co., 56 Ind. 1 10 ; Le- 
wellen v. Garrett, 58 Ind. 442 ; Stuart 
V. Sears, 119" Mass. 143; Welch v. 
Goodwin, 123 Mass. 71 ; Millett v. 
Holt, 60 Me. 169 ; Worthington v. New 
York Cent. R. Co., 6 Lans. (N. Y.) 
257 ; Mc Goren v. Avery, 37 Mich. 120 ; 
Foster w. Kirby, 31 Mo. 496 ; Koontz 
V. Central Nat. Bank, 51 Mo. 275 ; 
West V. Houston, 4 Harr. (Del.) 170; 
Mutual Life Ins. Co. v. Wager, 27 
Barb. (N. Y.) 354; Duncan v. Ber- 
line, 60 N. Y. 151 ; Mayer v. Mayor, 
etc., of N. Y.,63 N. Y. 455; Lawrence 
V. American Nat. Bank, 54 N. Y. 432 ; 
Ransom v. Masten (Supreme Ct.), 4 
N. Y. Supp. 781; Emerson v. Love- 
land (Supreme.Ct.)^9 N. Y. Supp. 768 ; 
Brummitt v. McGuire (N. Car. 1890), 
12 S. E. Rep. 191 ; Ormsby Coal Co. w. 
Bestwick (Pa. 1889), 18 Atl. Rep. 538; 
Gilliam v. Alford, 69 Tex. 267; ditizens 
Nat. Bank v. Manoni, 76 Va. 802. 

1. Foster v. Kirby, 31 Mc. 496; Genn 
V. Shannon, 12 S. Car. 570. 

2. Union Savings Assoc, v. Kehlor, 7 
Mo. App. 158; Neal v. Reed, 7 Baxter 
(Tenn.) 333; Gooding v. Morgan, 37 
Me. 419; Wood V. Patterson, 4 Md. 
Ch. Dec. 335 ; Warner v. Daniels, i 
Woodb. & M. (U. S.) 90. 

Where an agreement was made be- 
tween a mortgagor and mortgagee that 
a mortgage not yet due should be dis- 
charged for the payment of $500, a 
part of which was paid at the time, it 
was held that the mortgagor could not 
avoid his contract on learning that at 



the time the bargain was made there 
was due on the mortgage only $400, as 
he had the means of ascertaining the 
correct amount due which he failed to 
use. Scott V. Frink, 53 Barb. (N. Y.) 

533- 

3. Townsend v. Crowdy, 8 C. B. S. N. 
C. 477 ; Alston v. Richardson, 51 Tex.i ; 
Kelley v. Solari, 9 M. & W. 54 ; Lyle v. 
Shinnebarger, 17 Mo. App. 66 ; Bell 
V. Gardiner, 4 M. & G. 11 ; Milnesw. 
Duncan, 6 B. & C. 671; Brown v. Col- 
lege Corner etc. Gravel Road Co., 56 
Ind. no; Stanley Rule % Level Co. v. 
Bailey, 45 Conn. 464; Devine v. Ed- 
wards, 87 111. 177 ; Koontz v. Central 
Nat. Bank, 51 Mo. 275; Marriott v. 
Hampton, 2 Sm. Lead. Cas. 403, notes ; 
National Bank of Commerce v. Na- 
tional Mechanics,Banking Assoc, 55 N. 
Y. 211; Lawrence v. American Nat. 
Bank, 54 N. Y. 435 ; Fraker v. Little, 
24 Kan. 598 ; s. c, 36 Am. Rep. 262 ; 
Morrison v. Collier, 79 Ind. 417. 

In Kelley v. Solari, 9 M. & W. 54, 
Parke, B, says : "The position that a 
person so paying is precluded from re- 
covering by laches in not availing him- 
self of the means of knowledge in his 
power seems from the cases cited to 
have been founded on the doctrine of 
Mr. Justice Bayley, in the case of 
Milnes v. Duncan, and with all due re- 
spect to that authority, I do not think 
it can be sustained in point of law. 
If it is paid under the impression of 
the truth of a fact which is untrue, it 
may, generally speaking, be recoved 
back, however careless the party pay- 
ing may have been in omitting to use 
diligence to inquire into the fact." 

In Walker v. Conant, 65 Mich 194, 
it was held that the payment of money 
negligently by the payor did not pre- 
clude its recovery unless the condition 
of the party receiving it had been 
changed so as to make it inequitable to 
allow a recovery. 

4. Kelley v. Solari, 9 M. & W. 54 ; 
Lucus V. Worswick, i M. & Rob. 
293- 



229 



Tart Payment. 



PA YMENT. 



Effect Geneially. 



with the intention of waiving inquiry, no action will lie for an 
overpayment.* 

XIII. Part Payment — 1. Effect .Generally — {a) Does Not Ex- 
tinguish THE Debt. — The paynient of a part of a liquidated 
demand or debt will not extinguish the debt, even though such be 
the agreement of the parties at the time of payment.* But this 
applies only to liquidated demands arising from contract or of 
record,^ 



1. Windbiel v. Carroll, i6 Hun 
(N. Y.) loi; Frambers v. Risk, 2 111. 
App. 499. 

In Windbiel v. Carroll, 16 Hun (N. 
Y.) loi, a purchaser of real estate as- 
sumed a mortgage which had been 
placed thereon by the vendor. In set- 
tling with the holder of the mortgage 
he claimed that a payment had been- 
made by the mortgagor which had 
not been indorsed, but at the time was 
unable to produce the receipt. He 
paid the whole amount claimed, and 
said that he would bring an action to 
recover the overpayment. In that ac- 
tion he produced the receipt, but it was 
held that the money was not paid un- 
der a mistake of fact and could not be 
recovered. 

In Frambers v. Risk, 2 111. App. 499, 
a purchaser of a certain number of 
hogs at an agreed price per hundred 
weight, disputed the weight which at 
Tolonawas 15,120 pounds and at Chi- 
cago 10,750 pounds but having paid 
the price as claimed by the vendor, 
could not recover the deficiency in 
weight. 

2. 2 Chit. Contr. iioi ; Fitch v. Sut- 
ton, 5 East, 230; Cumber v. Wane, 
I Strange 426 ; Cavaness v. Ross, 
33 Ark. 572 ; Warren v. Skinner, 
20 Conn. 559; Curtiss v. Martin, 20 
111. 557; Speer v. Cobb, 22 111. 1528; 
Markel v. Spilter, 28 Ind. 488; Mc- 
Lean V. Equitable L. Assur. Soc, 100 
Ind. 127; s. c. 50 Am. Rep. 779; Rea 
V. Owens, 37 Iowa, 262 ; St. Louis etc. 
R. Co. V. Davis, 35 Kan. 464 ; Nelson 
V. Weeks, 11 1 Mass. 223; Grinnell v. 
Spink, 128 Mass. 25; Helling v. United 
Order of Honor, 29 Mo. App. 309; 
Whiting V. Plumas Co., 64 Cal. 65 ; Al- 
bert V. Citizens' Bank, 5 La. Ann. 721; 
White V. Jordan, 27 Me. 370; Jones v. 
Rickets, 7 Ind. 108; Price v. Cannon, 3 
Mo. 453 ; Bunge v. Koop, 48 N. Y. 225; 
s. c, 8 Am. Rep. 546 ; Hawley v. Foote, 
19 Wend. (N. Y.) 516; Muldon v. 
Whitlock, I Cow. (N. Y.) 306; s. c, 13 
Am. Dec. 533 ; Cole v. Sackett, i Hill 



(N. Y.) 517; Wheeler v. Wheeler, ir 
Vt. 60. Compare Berrian v. Mayor etc. 
of N. Y., 4 Robt. (N. Y.) 538; EmrieT). 
Gilbert, Wright (Ohio) 764; Keen v. 
Vaughan, 48 Pa. St. 477 ; Milliken v. 
Brown, i Rawle (Pa.) 391. 

"The ground upon which this rule of 
law, which is not particularly favored 
by the courts, rests, is that such an 
agreement is without consideration. 
The receipt of less than the whole debt, 
if due, is no benefit to the creditor in a 
legal sense, for he was entitled to it ; its. 
pajyment could not legally prejudice or 
injure the debtor, for he owed the sum 
paid and it was his duty to pay it. But 
where there is any additional consider- 
ation, however small, courts virill up- 
hold such agreements. As,' if the debt 
is not due, though it has but a day in 
which to mature, the receipt of a sum 
less than the whole debt will be held to 
be valid ; and so if the sum is to be paid 
in commercial paper." Wells W.Morri- 
son, 91 Ind. 51 ; Fletcher v. Wurgler, 97 
Ind. 223; Longworth v. Higham, 89 
Ind. 352 ; Curtiss v. Martin, 20 111. 557 i 
Wheeler v. Wheeler, 11 Vt. 60; Jami- 
son v. Ludlow, 3 La. Ann. 492. 

It has been said that "the history of 
judicial decisions upon the subject has. 
shown a constant effort to escape from, 
its absurdity and injustice." Harper v. 
Graham, 20 Ohio, 105, 115. 

In an action of debt on a note for $55, 
the evidence show^ that there was a 
dispute between the parties as to the 
amount due, and they finally fixed upon 
the sum of $40, which was paid. It was. 
thereupon agreed that the suit was set- 
tled and to be dismissed at plaintiff's, 
costs. Held, that the effect of this 
evidence was to show that all over ,$40 
had been previously paid and that it 
was not an agreement to take a less 
sum in satisfaction of a greater. 
Stepp V. Cole, i Ind. 146. 

3. Wilkinson v. Byers, i Ad. & El.. 
106 ; Longridge v. Dorville, 5 B. & A.^ 
117; Atlee f . Backhouse, 3 Mees. & W. 
651 ; Slbree I/. Tripp, 15 Mees. & W. 



230 



l>aTt Payment, 



PA YMENT. 



Effect Generally. 



and to cases where the payment is of money merely.* 
Payment of a less sum is a satisfaction of a larger sum, if the pay- 
ment is made at a different time or place from that required by 
the contract -^ or if the payment is made by a third party ;* or if 



23 ; Huntington Co. v. State, 109 Ind. 
596; Donohue v. Woodbury, 6 Cush. 
(Mass.) 150 ; Lamb v. Goodwin, lo Ired. 
(N. Car.) 320; Mathis v. Bryson, 4 
Jones (N. Car.) 508; McDaniels v. 
Lapham, 21 Vt. 223. 

To make a receipt of a part a dis- 
charge of the whole, there must be a 
new consideration or a voluntary com- 
promise of a disputable and disputed 
demand, by which each party yields 
something, or an accord and satisfac- 
tion by which a' new contract is substi- 
tuted, or a submission to arbitration. 
Baldwin v. United States, 15 Ct. of CI. 
397. 

If a party holding a note payable on 
a contingency and receives in lieu 
thereof a note for a smaller sum paya- 
ble absolutely, it constitutes a payment. 
Winslow V. Hardin, 3 Dana (Ky.) 543. 
See Jenness v. Lane, 26 Me. 475. 

The rule does not apply to a claim 
founded upon a statutory proceeding 
assessing a tax in aid of a railroad cor- 
poration. Huntington Co. v. State, 
109 Ind. 596. 

Plaintiff, having a claim against the 
county, presented it to the board of 
supervisors for allowance, by which 
body it was allowed in part and re- 
jected in part. Plaintiff, with knowl- 
edge of the action of the board, ac- 
cepted payment of the part allowed. 
Held, that this was a satisfaction of the 
entire claim. ( Citing Wapello Co. v. 
Sinnaman, i G. Greene (Iowa) 413) 
Brick V. Plymouth Co., 6.^ Iowa 462 ; 
Perry v. Cheboygan, 55 Mich. 250. 
To same effect, Johnson v. United 
States, 2 Ct. of CI. 169 ; King v. New 
Orleans, 14 La. Ann. 389 ; Hancock Co. 
V. Binford, 70 Ind. 208. 

If he had accepted payment without 
knowledge of the action of the board, it 
seems the effect would have been dif- 
ferent. Fulton V. Monona Co., 47 
Iowa 622. 

1. Cumber v. Wane, i Strange 426 ; 
Pinnel's Case, 5 Co. 117; Thompson v. 
Percival, S B. & Ad. 925; Gavin i). An- 
nan, 2 Cal. 494 ; Bateman v. Daniels, 5 
Blackf. (Ind.) 71 : Arnold v. Bailey, 24 
S. Car. 493 : Gafifney v. Chapman, 4 
Robt. (N. Y.) 275 ; Boyd v. Hitchcock, 
30 Johns. (N. Y.) 76; LePage v. Mc- 



Crea, i Wend. (N. Y.) 164; s. c, 19 
Am. Dec. 469. 

Taking a check or receipt for a 
smaller sum than the amount due on 
promissory notes "in payment and sat- 
isfaction of the notes," is not necessa- 
rily an attempt to discharge a larger 
sum by payment of a smaller, the notes 
being salable like any other personal 
property. Rockwell v. Taylor, 41 
Conn. 55. 

It is held in South Carolina that a 
sealed note can be extinguished by the 
acceptance in place thereof of an un- 
sealed note for a smaller sum. Bolt v, 
Dawkins, 16 S. Car. 198. 

The receipt by a creditor of a less 
sum of money and of the promissory 
note of a third person for a portion of 
the balance, in full of a demand, is an 
extinguishment of original indebted- 
ness. Conklingw. King, 10 N. Y. 440. 
See Booth v. Smith, 3 Wend. (N. Y.) 
66. 

2. Smith V. Brown, 3 Hawks (N. 
Car.) 580; Arnold v. Park, 8 Bush 
(Ky.) 3; Jones v. Perkins, 29 Miss. 139, 
141; s, c, 64 Am. Dec. 136. 

If the debt is not due, though it has 
but a day to mature, the receipt of a less 
sum will be a satisfaction. Fletcher 
V, Wurgler, 97 Ind. 223. 

The fact that the settlement was 
made a few days before payment of 
the debt could have been legally de- 
manded and enforced by suit, is of no 
consequence, where it appears that the 
payment before maturity was not the 
consideration, either in whole or part, 
for such settlement. McLean v. 
Equitable Life Assur. Soc, 100 Ind. 
127 ; s. c, 50 Am. Rep. 779. 

3. Henderson v. Stobart, 5 Exch. 99; 
Wefby V. Drake, i Car. & P. 557 ; La- 
boyteaux v. Swigart, 103 Ind. 596; 
Steele v. Atkinson, 14 S. Car, 154; s. 
t., 37 Am. Rep. 728. 

If a debtor gives and the creditor 
receives, in full satisfaction of the debt, 
a note indorsed by a third person for a 
less sum than the amount of the debt, 
it is a full payment. And a subse- 
quent promise to pay the balance is not 
binding. (Cases reveiwed.) Varneyz'. 
Conery, 77 Me. 527; New York State' 
Bank v. Fletcher, 5 Wend. (N. Y.) 85^ 



231 



Fart Payment. 



PA YMENT. 



Effect Generally. 



there were an additional consideration } or if the agreement is 
under seal ;* or made by way of composition with creditors.* 

(b) As An Admission. — A part payment without more is an 
admission of some liability.^ 



Smith V. Ballou, i R. I. 496; Brooks v. Payment of a smaller sum with an 



White, 2 Met. (Mass.) 283 ; s.c, 37 Am. 
Dec. 95. Cotnfare Kellogg v. Richards, 
14 Wend. (N. Y.) u6. 

Where a creditor receives a part of his 
debt in cash, and the note of a third 
person for a portion of the balance, it 
being agreed that the debt is thus rati- 
fied, this constitutes a payment in 
full. Conkling v. King, 10 Barb. (N. 
Y.) 372; s. c, 10 N. Y.440. See Booth 
V. Smith, 3 Wend. (N. Y.) 66.> 

1. Steinman v. Magnus, i East. 390 ; 
2 Camp. 124; Bradley v. Gregory, 2 
Camp. 383; Boothby v. Sowden, 3 
Camp. 175; Wood v. Roberts, 2 Stark 
417; Andrew v. Booghay, Dyer 756; 
Sibree v. Tripp, 15 Mees. & W. 23 ; 
Jones V. Bullitt, 2 Litt. (Ky.) 49; 
Musgrove v. Gibbs, i Dall. (U. S.) 216; 
Smalley f. Mores, 65 Iowa 386; Bate- 
man T. Daniels, 5 Blackf. (Ind.) 71; 
Brooks V. White, 2 Met. (Mass.) 283; 
s. c, 37 Am. Dec. 95 ; Miller v. Hol- 
brook, I Wend. (N. Y.) 317; McKen- 
zie V. Culbreth, 66 N. Car. 534. 

But if the payment of a less sum of 
money is accompanied with a gift or 
transfer of any other thing, however 
slight, it constitutes a good satisfaction. 
Thus it is said in PenneVs Case (3 Co. 
238) : " Payment of a lesser sum on 
the day, in satisfaction of a greater, 
cannot be any satisfaction for the whole, 
because it appears to the judges that 
by no possibility a lesser sum can be a 
satisfaction to the plaintiff for a great- 
er sum ; but the gift of a hawk, horse, 
robe, etc., in satisfaction, is good, for it 
shall be intended that a horse, hawk 
or robe, etc., might be more beneficial 
to the plaintiff than the money, in re- 
spect of some circumstances, or other- 
wise the plaintiff would not have ac- 
cepted it in satisfaction." 

See also Fletcher v. Wurgler, 97 
Ind. 223. 

Where a party paid $100 and a cow 
in full satisfaction of a judgment against 
him for $200, the value of the cow be- 
ing $40, this extinguished the judg- 
ment, and an execution thereon for 
$60 interest and costs was held insuffi- 
cient to support a levy and sale there- 
under. Neal V. Handley, :i6 111. 418; s. 
c, 56 Am. Rep. 784. 



agreement to abandon a defense and 
pay costs, may be pleaded as a satis- 
faction of a larger demand, whether 
liquidated or unliquidated. Cooper v. 
Parker, 15 C. B. 822; 3 C. L. R. 823; 
24 L. J., C. P. 68 ; I Jur., N. S. 281. 

A note payable by instalments pro- 
vided that a less sum would be accept- 
ed in full payment if each instalment 
were paid punctually. Held, that the 
large sum was in the nature of a penal- 
ty, and that the paynSent of the less 
sum extinguished the hote, though all 
the instalments had not been punctu- 
ally paid. Longworth v. Askrew, 15 
Ohio St. 370. 

But the reservation of a right to 
have full payment of a sum actually 
due on an existing contract, should 
there be a failure to pay a smaller sum 
on a day certain, cannot be treated as 
a penalty. Thompson v. Hudson, 4 L. 
R., H. L. Cas. I ; 38 L. J., Ch. 431. 

2. Williams v. Carrington, i Hilt. 
(N. Y.) 515; Corbett v. Lucas, 4 Mc- 
Cord (S. Car.) 323; Arnold v. Bailey, 
24 S. Car. 493 ; Rohr v. Anderson, 51 
Md. 205. 

3. Reay v. White, 3 Tyrw. 596; I C. 
& M. 748 ; Garrard v. Woolner, 8 Bing. 
258 ; Reay v. Richardson, 2 C. M. & 
R. 422 ; Wilks v. Slaughter, 49 Ark. 
235 ; Cutter v. Reynolds, 8 B. Mon. 
(Ky.) 596; McKenzie v. Culbreth, 66 
N. Car. 534. 

The acceptance in writing of the 
terms of an assignment for the benefit 
of creditors, accompanied by a receipt 
of a portion of the proceeds of the as- 
signed estate, is a sufficient considera- 
tion to support the agreement to accept 
in full, and neither the acceptance nor 
the receipt need be under seal. Ar- 
nold V. Bailey, 24 S. Car. 493. 

4. St. Louis, etc. R. Co. v. Tiernan, 
37 Kan. 606, 629. 

A judgment debtor who makes a 
part payment on the judgment, and 
thus secures a postponement of levy 
of execution, thereby waives his right 
to a review of the judgment. Smith 
V. O'Brien, 146 Mass. 294. 

As to effect of part payment as a 
waiver of damages, see Button v. Rus- 
sell, 55 Mich. 478; and of fraud, Hal. 



232 



Tart Payment, 



PA YMENT. Effect on Statute of LimitationB. 



(f) Creditor Not Bound to Accept. — The creditor is not 
bound to receive payment of part of the amount due.^ 

{d) Does Not Make Account Mutual. — A part payment on 
an account does not have the effect of rendering the account a 
mutual one.** 

2. Effect on Statute of Limitations. — See Limitation of Actions, 
vol. 13, p. ■ja,Z,et seq. 

3. Computing Interest on Partial Payments.^The rule is that pay- 
ments are to be applied, first, to the extinguishment of the 
interest due, and, second, towards ^payment of the principal.* 



Shoemaker v. Benedict, 11 N. Y. 176; 
s. c, 62 Am. Dec. 95 ; Winchell v. 
Hicks, 18 N. Y. 558; Mostyn v. Mos- 
tyn, 5 L. R., Ch. 457 ; 22 L. T., N. S. 
461 ; 39 L. J., Ch. 780. 

A part payment cannot, however, 
give vitality to a void debt. Miner f. 
Lorman, 56 Mich. 212; Gill v. Appa- 
noose Co., 68 Iowa 20. 

Compare St. Louis etc. R. Co. v. 
Tiernan, 37 Kan. 606. 

Nor change what was originally a 
mere moral obligation into a legal debt. 
Mostyn v. Mostyn, 39 L. J. Ch. 780 ; 
22 L. T., N. S. 461 ; 5 L. R.Ch. 457; 18 
W. R. 657. 

But when the vendee of a machine, 
after discovering its defects, is induced 
to make payments on it by a promise 
of the vendor that he will make it ful- 
fill the warranty, such payments will 
not affect the defense of the vendee, if 
the promise is not complied with. 
Hayner v. Churchill, 29 Mo. App. 676. 

Where an indorser has been released 
from liability by the neglect of the 
holder to notify him of the dishonor 
of the paper, a partial payment, made 
-with full knowledge of such release, 
will bind him to the payment of the 
-whole. Margetson v. Aitkin, 3 C. & 
P. 388; Dixon V. Elliot, 5 C. & P. 437; 
Harvey v. Troupe, 23 Miss. 538; Shaw 
V. McNeill, 95 N. Car. 535. 

The mere fact that a widow paid all 
of her deceased husband's debts but 
one, would not tend to establish an 
obligation on her part to pay that one. 
Briswalter v. Palomares, 66 Cal. 259. 

1. Jennings v. Shriver, 5 Black. 
(Ind.) 37. 

2. Norton v. Larco, 30 Cal. 127, 134; 
s. c, 89 Am. Dec. 70 ; Rocca v. Klein, 
74 Cal. 526. 

3. Monroe v. Fohl, 72 Cal. 568; Hart 
V. Dorraan, 2 Fla. 445 ; s. c, 50 Am. 
Dfec. 285 ; McFadden v. Fortier, 20 111. 
509; Estebene v. Estebene, 5 La. Ann. 
738 ; Union Bank v. Lobdell, ro La. 



Ann. 130; Eyle v. Roman Catholic 
Church, 36 La. Ann. 310; Frazier v. 
Hyland, i Har. & J. (Md.) 98; Morgan 
V. Michigan etc. R. Co., 57 Mich. 430 ; 
Lash V. Edgerton, 13 Minn. 210; Bond 
V. Jones, 8 Smed. M. (Miss.) 368; Pee- 
bles ^'. Gee, I Dev. (N. Car.) 341 ; Ham- 
mer V. Nevill, Wright (Ohio) 169; 
Spires v. Hamot, 8 W. & S. (Pa.)' 17; 
De Bruhl v. Neuffer, i Strobh. (S. 
Car.) 426; Genin K. Ingersoll, 11 W. 
Va. 549 ; Hearn v. Cutberth, 10 Tex. 
216, 

The fact of part payment is merely 
evidence of a promise to pay the bal- 
ance. Parsons t/. Clark, 59 Mich. 414; 
Haldane v. Sweet, 55 Mich. 196; Hey- 
lin V. Hastings, i Salk. 29; s. c, 12 
Mod. Rep. 223. 

The rule as laid down by the supreme 
court of Massachusetts is as follows: 
"Compute the interest on the principal 
sum from the time when the interest 
commenced to the first time when a 
payment was made, which exceeds, 
either alone or in conjunction with the 
preceding payments, if any, the interest 
at that time due; add that interest to 
the principal, and from the sum subtract 
the payment made at that time, together 
with the preceding payments, if any, 
and the remainder forms a new princi- 
pal, on which compute and subtract the 
interest, as'upon the first principal, and 
proceed in this manner to the time of 
the judgment." Dean •:;. Williams, 17 
Mass. 417. 

This rule is approved and followed in 
Ferry v. Ferry, 2 Cush. (Mass.) 92, and 
Downer v. Whittier, 144 Mass. 44S, and 
substantially adopted by the Supreme 
Court of Missouri. Riney v. Hill, 14 
Mo. 500; s. c, 55 Am. Dec. 119; State 
V. Donegan, 94 Mo. 66; State v. Shaw, 
I Mo. App. 511. See Cruce v. Cruce, 
81 Mo. 676, 689. 

If payment is made before the princi- 
pal is due, it will be applied first to the 
extinguishment of the accrued interest, 



233 



Application of Payments, 



PA YMENT. 



By Debtor. 



XIV. Application of Payments — 1. By Debtor — («) Right to 
Direct in First Instance. — The debtor may, at or before the 
time of payment, prescribe the application of such payment and 
it is the duty of the creditor to so apply it.^ 



and the residue to that part of the prin- 
cipal which first becomes due; but if 
nothing is due it is to be applied ratably 
to principal and interest, so as to ex- 
tinguish a part of the principal and the 
interest which has accrued on the part 
so extinguished. Jencks v. Alexander, 
II Paige (N. Y.) 619; Miami Export- 
ing Co. V. Bank of U. S., 5 Ohio 260; 
Mills V. Saunders, 4 Neb. igo; McCor- 
mick V. Mitchell, 57 Ind. 248. See Starr 
■V. Richmond, 30 111. 276; s. t., 83 Am. 
Dec. 189; McElrath v. Duprey, 2 La. 
Ann. 520. 

Where interest on a note is paid in 
advance for a stipulated time, and the 
principal is paid before the expiration 
of that time,' the excess of interest is to 
be appled as so m'uch paid on the prin- 
cipal. Freeman's Bank v. Rollins, 13 
Me. 202. 

Where one of two obligors in a joint 
and several bond became bankrupt, 
dividends paid on his estate are, as to 
the co-obligor, to be considered as ordi- 
nary payments on account, and are to be 
applied first to the payment of interest 
due at the date of the dividend, and the 
surplus, if any, in reduction of the prin- 
cipal. Bower v. Marris, i Craig & Ph. 

351- 

Where accrued interest itself bears 
interest, payments will be applied : First, 
to the interest on the interest; secondly, 
to the interest on the principal ; thirdly, 
to the principal. Anketel v. Converse, 
17 Ohio St. 11; s. c, 91 -Am. Dec. 115. 

Where several sales were made si- 
multaneously b^' the same vendor to the 
same vendee at various prices, the pur- 
chase money to be paid in equal instal- 
ments in one, two and three years, 
bearing the same interest, after maturity 
of the last instalment the whole debt is 
to be treated as one, and payments made 
generally must be applied first to all ac- 
crued interest on the entire debt and the 
surplus to the entire principal. Smith 
V. Nettles, 9 La. Ann. 45/;. To same 
effect. Genin v. Ingersoll, 11 W. Va. 

549- 

Where some of the makers of a joint 
and several note make payments of 
their shares of the principal and interest 
due from them at the time thereof, such 
pajTnents must be applied to the fro 



rata of principal as well as interest due 
by the makers so paying. Donaldson 
V, Cothran, 60 Ga. 603. 

As to what is sufficient part payment 
under the Statute of Frauds, see Stat- 
ute OF Frauds, vol. 8, p. 659. 

1. 3 Phil. Evid. (Hill & Cowen's 
Notes) *44i; i Amer. Lead. Cas. *276 
(3rd ed. 288); Mayor etc. of Alexandria 
V. Patten, -4 Cranch (U. S.) 317; Tay- 
ler V. Sandiford, 7 Wheat (U. S.) 13; 
Leef w. Goodwin, Taney Dec. (U. S.) 
460; Sherwood v. Haight, 26 Conn. 432;, 
Pickering v. Day, 2 Del. Ch. 333; s. c, 
on appeal, 3 Houst. (Del.) 474; s. c, 
95 Am. Dec. 291 ; Semmes v. Boykin,. 
27 Ga. 47; Whitaker v. Groover, 54 Ga.. 
174; Coleman v, Slade, 75 Ga. 61;, 
Hatcher v. Conner, 75 Ga. 728; Jack- 
son V. Bailey, 12 111. 159; Forelander v^ 
Hicks, 6 Ind. 448; King v. Andrews, 
30 Ind. 429; Trentman v. Fletcher, 100 
Ind. 105; Ross V. Crane, 74 Iowa 375; 
Irwin V. Paulett, : Kan. 418; Nuttalli;. 
Brannin, 5 Bush (Ky.) 11; McDaniel 
V. Barnes, 5 Bush (Ky.) 183; Blood- 
worthn v. Jacobs, 2 La. Ann. 24; Adams 
■V. Bank of Louisiana, 3 La. Ann. 351;. 
Robson V. McKoin, 18 La. Ann. 544;, 
Treadwell is.Moore, 34 Me. 112; Mitch- 
ell V. Dall, 2 Har. & G. (Md.) 159; s.c, 
4. Gill & J.(Md.)46i; Calvert t;. Carter, 
18 Md. 73; Dickey v. Permanent Land 
Co., 63 Md. 170; Gilchrist v. Ward, 4- 
Mass. 692; Hall v. Marston, 17 Mass. 
575; Bonaffe v. Woodberry, 12 Pick. 
(Mass.) 463; Hussey v. Manufacturers' 
etc. Bank, 10 Pick. (Mass.) 415; Reed 
V. Boardman, 20 Pick. (Mass.) 441 v 
Solomon v. Dreschler, 4 Minn. 278; 
Brady v. Hill, i Mo. 317; s. c, 13 Am. 
Dec. 503; Gartner -u. Kemfer, 58 Mo. 
570; Poulson V. Collier, 18 Mo. App. 
5S3; Bean v. Brown, 54 N. H. 395; 
Martin v. Draher, 5 Watts (Pa.) 544; 
Black V. Shooler, 2 McCord (S. Car.) 
293; McDonald v. Pickett, 2 Bailey 
(S. Car.) 617; McKee v. Stroup, i Rice 
(S. Car.) 291; Bell t;. Bell, 20 S. Car. 
34; Willis V. Mclntyre, 70 Tex. 34; 
Lapham v. Kelley, 35 Vt. 195; Jones v. 
Williams, 39 Wis. 300; Champenois v. 
Fort, 45 Miss. 356. 

The rule of the text appli^es only to 
paj'ments voluntarily made, and not to 
those made by process of law. Black- 



234 



Application of Payments. 



PA YMENT. 



By Debtor. 



(b) Creditor Must Accept Debtor's Appropriation. — If 
the creditor receives money with a direction from the debtor to 
appropriate it to a particular debt, it must go to that debt, no 
matter what the creditor may say at the time : and an appropria, 
tion once made by the debtor cannot be changed by the creditor 
without the debtor's consent.^ 



stone Bank jv. Hill, lo Pick. (Mass.) 
129. 

Bj the terms of a mortgage all the 
notes became due and payable upon 
default as to those first falling due. 
Those first falling due were indorsed ; 
and upon default of payment of these, 
the mortgage was foreclosed. It was 
held that the debtor could not insist 
that the notes first maturing should be 
paid from the proceeds, but that the 
creditor had the right to make the ap- 
plication. Nichols V. Knowles, 3 Mc- 
Crary (U. S.) 477; s. u., 17 Fed. Rep. 

494- 

Where an officer has served two suc- 
cessive terms, with different sets of 
sureties for each term, he may appro- 
priate funds collected during his second 
term, to discharge a deficit of his first 
term if the county treasurer receives 
the money in good faith. State v. 
Smith, 26 Mo. 226; s. c, 72 Am. Dec. 
204. See Draffen v. Boonville, -8 Mo. 
395; St. Joseph V. Merlatt, 26 Mo. 233; 
s. c, 72 Am. Dec. 207; Seymour v. 
Van Slyck, 8 Wend. (N. Y.) 403. 

In the following additional cases 
the rule governing the