STANDARD ELEVATOR CO. et al. v. CRANE ELEVATOR CO. et al., 76 F. 767

SHOWALTER, Circuit Judge (after tbe foregoing recital): Counsel, in their printed argument, hare discussed the jurisdiction or province of this court on this appeal. What may be said touching the function of this court, the scope of the review which may be had here, the form and effect of an adjudication here, either of reversal or affirmance, as bearing on the status of the cause in the circuit court, conies logically first in any pronouncement to be made on this record. In England, as I understand, the right of appeal in chancery cases was developed by the courts, — possibly out of analogies from the civil law.

In this country the appeal is by statute, and ordinarily only from a final decree; but, whether from a decree which is final or interlocutory, statutory limitations control. Stevens v. Clark, 10 C. C. A. 379, 62 Fed. 321. Whether or not a decree be final, and on that ground appealable, depends in one sense on the nature of the adjudication as affecting the party against whom it is made. In Illinois there can be no appeal in a chancery case except from a final decree. In Blake v.

Blake, 80 Ill. 523, the supreme court of that state said: “It is apprehended there can be no decree against a party that will work a deprivation of his property or liberty from which no appeal or writ of error will lie.” See, also, the opinion of the supreme court of the United States by Mr. Justice Miller in Farmers’ Loan & Trust Co., Petitioner, 129 U. S. 213, 9 Sup. Ct. 205. In Forgay v. Conrad, 6 How. 202, Judge Taney noticed that there might be two or more successive final decrees, and as many successive appeals, in the course of a single litigation.

The power of a court of original jurisdiction over a final decree, or over that portion of a decree which is final, ceases (barring the matter of rehearing or bill of review) with the close of the term at which such decree was entered of record. Central Trust Co. v. Grant Locomotive Works, 135 U. S. 207, 224, 10 Sup. Ct. 736, 741.

Where no appeal is pending, a bill of review, which is a new' suit, may doubtless be entertained after the term, showing error of law on the face of the record, or some new matter of fact occurring after the decree, or some matter of fact extant when the decree was rendered, but not then, and without fault on the part of the petitioner, brought to the notice of the court.

In federal practice, under equity rule 88, a rehearing (presumably if the application be made during the term at which the decree wa s entered) can he had not later than the following term, and not after the term in which the decree was entered of record in any case where an appeal could have been taken. What may be done by bill of review after an appeal is not here considered. The point here is that a decree may be final, and on that ground appealable, in a case -where, if no appeal be taken, a rehearing (Roemer v. Simon, 91 U. S. 149; Desty, Fed.

Proc. 729) or bill of review would he available remedies in the court of original jurisdiction. It may not be out of place to add that a, decree inav be none the less final because it is incomplete in falling to provide for its own execution, and to so end the litigation. If no reservation be made in such decree, the power of the court over it ceases with the term at which it was recorded, and a new bill must be filed, if need be, in order to carry into execution the adjudications in such final decree. Hindes, Ch. 68; 1 Har. Prac.

Ch. 148; Lube, Eq. 204. “When a decree does not adjourn the consideration of the cause, it is said to be a final decree.” 2 Paniell, Oh. Prac. (6th Am. Ed.) 994. The footnote to this text contains the following: “A decree which disposes of a cause without reserving anything for further consideration is, of course, final. Mills v. Hoag, 7 Paige, 18; Cook v. Bay, 4 How. (Miss.) 485; Britton v. Johnson, Dud. Eq. 24; Tennent’s Heirs v. Pattons, 6 Leigh, 196; Talbot v. Todd, 7 J. J. Marsh. 456; Johnson v. Everett, 9 Paige, 636; Ex parte Crittenden, 5 Eng. (Ark.) 333. See, per Sutherland, J., in Kane v.

Whittick, 8 Wend. 224; Harvey v. Branson, 1 Leigh, 108; Longfellow v. Longfellow, 1 Clarke. Ch. 344; Hey v. Schooley, 7 Ohio. 373; Brewer v. Connecticut, 9 Ohio, 189; Road Co. v. Elmer, 9 N. J. Eq. 754, 787; Webster v. Hitchcock, 11 Mich. 56. So, if it decides the rights of the parties on the merits, although it may make a reference to ascertain the amount due from one party to the other on the basis of the adjudication, reserving nothing except to determine that the report is strictly in conformity with the decree. Jones v. Wilson, 54 Ala. 50. Quackenbush v. Leonard, 10 Paige, 131. See Story v.

Hawkins, 8 Dana, 12; Michoud v. Girod, 4 How. 503; Forgay v. Conrad, 6 How. 203. And such a decree is final, both as to ah original and.cross bill, that the equity of the case is with the complainant in the original bill, although leave is given to either party to apply, at. the foot of the decree, for such further order as may be necessary to the due execution of the same, or as- may be required in relation to any matter not finally determined by it. French v. Shoemaker, 12 Wall. 98. And see Wyatt v.

Garlington, 50 Ala. 576.” “Strictly speaking, every decree settling rights Upon a hearing on the merits of the original cause, or upon the equity reserved, is pro tanto a final decree. But where an appeal is only allowed by statute from a final decree, the courts have not agreed as to what decree shall be considered final within the meaning of the statute.

The United States supreme court, under such a statute, has decided that, if the decree decides the right of property, and orders it to be delivered up or sold, or adjudges a sum of money to be paid, a.nd the party is entitled to have such decree carried into immediate execution, it is a final decree, under the act of congress, from which an appeal lies, although there is a reference for an account between the parties upon the basis of the decree, and the cause is retained for the purpose of adjudicating these accounts. Forgay v. Conrad, 6 How. 203.” In Iron Co. v. Meeker, 109 U. S. 180, 182, 3 Sup.

Ct. 111, it is expressly decided that a reservation as to the matter of costs does not make a decree in other respects any the less final and appealable. In a patent case there can be no right to an accounting unless the infringement be made out; but the infringement may be found and the injunction awarded in favor of a complainant who, upon the proofs, has no right to an accounting.

Upon the issue whether or not the complainant is entitled to the accounting, it may not appear that the defendant used or sold the patented device, but merely that he made it; or it may otherwise appeal' that there were, in fact, no profits, or that an account had already been stated, conditionally or otherwise, by the parties themselves, and that for want of notice, as provided in

section 4900 of the Revised Statutes of the United States, no damages could be recovered. In such event there could be no award of an accounting in the decree, although the perpetual injunction would be awarded. Whittemore v. Cutter, 1 Gall. 478, Fed. Cas. No. 17,601; Elizabeth v. Pavement Co., 97 U. S. 127, 144. In a patent case on the equity side the primary and essential contention relates to the ownership of the patent by complainant, the validity of the claims, and the infringement. The final adjudication in favor of complainant on this contention is a perpetual injunction.

In the decree of March 12, 1895, the question of costs, as already stated, was expressly reserved, and the determination of the amount for which on the accounting appellees were to have execution against appellants awaited the report on the reference. One portion of a given decree may be final, and for that reason reviewable on appeal, while the remainder may be interlocutory, and for that reason not appealable. Forgay v. Conrad, 6 How. 202; Iron Co. v. Meeker, 109 U. S. 180, 3 Sup. Ct. 111; McFarland v. Hall, 17 Tex. 691; Malone v. Marriott, 64 Ala. 486; Williamson v. Field, 2 Barb. Ch. 281; Dickenson v.

Codwise, 11 Paige, 189. This appeal on the face of the record comprehends very clearly as the matter presented for review the ownership of the five claims, their validity, the infringement, and the perpetual injunction. If this porlion of the decree of March 12, 1893, wherein the property right as between the litigants was adjudged, and the sentence of the court carried into immediate execution, be not in itself an “interlocutory order or decree,” _such as is identified in amended

section 7 of the act of March 3, 1891, this appeal, if not authorized by

section 6, should be dismissed; for, be it noticed, it is not any “interlocutory order or decree,” but only one which comes specifically within the terms of amended

section 7, that is appealable. In this ease, and as to that portion here appealed from of the decree there was no reservation of any further hearing. It would have been within the power of the circuit court, though such a proceeding would have been exceptional, to retain the cause for further consideration as to the ownership, validity, and infringement of the patents.

Such a reservation would have meant that the injunction was still within the control of the court, merely extant until further order, or subject to vacation on any change of view by the court, or upon additional evidence which the court might choose to hear. If would have been within the power of the court, also, upon such reservation, to require a bond from complainants conditioned to answer all damages in case the court should actually see fit, at a later day, to dissolve the injunction. But no such ease is presented. The “interlocutory order or decree” made appealable by amended

section 7 must be one wherein the court grants, continues, refuses, dissolves, or refuses to dissolve an injunction. The state of the record or progress of the cause must be such, when said appealable “interlocutory' order or decree” is entered, that a “final decree” upon the matter with which said “interlocutory order or decree” has to do may yet be made. The contrast suggested by tbe words “interlocutory order or decree” and “final decree,” as used in the first paragraph of amended

section 7, is between a decree which is preliminary to a hearing on the merits, and hence1 discretionary in the court, and one which follows a. hearing on the merits, and is hence final, conclusive, and as of right in the prevailing party; between a decree which is meant to preserve the subject-matter of the litigation, or prevent irreparable injury, till a bearing on the merits can be bad, and a decree which follows the hearing on the merits, and ultimately determines the rights of the litigants. The “interlocutory order or decree” made appealable by amended

section 7 must be one which leaves the cause pending on the issues in the court of original jurisdiction. “The proceedings, in other respects, in the court below, shall not be stayed unless otherwise ordered by that court during the pendency of such appeal.” Upon entering an “interlocutory order or decree” for an injunction, the court may, and ordinarily does, require the complainant to give a bond which will protect the defendant against loss in case such injunction be dissolved.

If another “interlocutory order or decree” be afterwards made on defendant’s motion dissolving said injunction, and the complainant ' appeal, “the court below may, in its discretion, require as a condition of the appeal an additional injunction bond.” In other words, no “order or decree” for an injunction can be appealable under amended

section 7, unléss it would have been competent for the court to require an injunction bond when such order or decree was entered. . Can that portion of the decree which constitutes the adjudication specifically appealed from in the case at bar be crowded into the limitations fixed in amended

section 7 for the “interlocutory order or decree” there made appealable? The injunction here is perpetual. How can a perpetual injunction, where no power over the same is reserved, be the subject of an interlocutory order? See 2 Daniell, Ch. Prac. 1683. On the face of the decree now here, no further action was to be taken by the court in the matter of the injunction or of the ownership, validity, or infringement of the patents. On the face of the decree, the injunction without limitation went as of right in the complainants, and not as of discretion in the court.

On the face of the record, this decree, so far as concerns the adjudication appealed from, was not preliminary. It was technically and essentially on the merits, and after the parties had had in the fullest sense their day in court. This was a decree in which, as a condition of the injunction, no bond was, or could without error have been, exacted from complainants, they being, on the face of this decree, entitled to the perpetual injunction as of right.

The hearing which resulted in this decree was of such kind that, if the court had found no infringement, and an injunction previously issued against defendants had been' dissolved, no “additional injunction bond” could have been required as the condition of an appeal by complainants. The hearing which resulted in this decree was of such kind that, if the court had found no infringement, the decree must have been a dismissal for want of equity as to all the patents sued on; and such decree, whether it dissolved a prior injunction ■ or not, could not have been interlocutory, within the sense of

section 7. Furthermore, this appeal would not seem entitled to precedence in this court. The statutory requirement of precedence in appeals under amended

section 7 is senseless when applied to this appeal. The precedence is given because the decree to be appealed from under that

section awards or dissolves an injunction against the alleged right of the appellant before he has had his day in court upon the merits of that right, or, if the appeal be from a refusal to grant an injunction, because the appellant may be irreparably injured before his case can be heard on the merits. On the reversal of an order or decree granting a pendente lite injunction — an order which would be strictly interlocutory within the sense of amended

section 7 — this court must, if in the opinion of the judges here the record call for such action, issue its mandate directing the trial court to dismiss the bill for want of equity. The general rule that a court of review may, whether the adjudication appealed from be interlocutory or final, direct the court of original jurisdiction to enter whatever decree ought to have been entered in the first instance, as in Le Guen v. Gouverneur, 1 Johns. Cas. 436; Richmond v. Atwood, 2 C. C. A. 596, 52 Fed. 10; Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C. C. A. 25, 72 Fed. 545; and Green v. Mills, 16 C. C.

A. 516, 69 Fed. 852, the opinion in the last-named case being by Chief Justice Fuller, — need not be dwelt on.

Section 701 of the Revised Statutes of the United States, quoted in connection with appropriate provisions from the ad: of March 8, 1891, in the statement which precedes this opinion, seems to be law for the federal courts in such a case. The order, when entered by the circuit court pursuant to the mandate, would be the final decree in the cause. This court would not, by such mandate, exercise original jurisdiction. The mandate would be the logical and necessary, outcome of the review by this court of what had been done in the court of original jurisdiction.

The words, “the proceedings in other respects in the court below shall not be stayed unless otherwise ordered by that court during the pendency of such appeal,” in

section 7, seem to imply that the mere perfecting'the appeal shall not, in legal effect, stay the suit. In view of the decisions of the federal courts of appeal above cited, those words are not deemed a limitation on the appellate power of these* courts. A judgment of reversal in the case at bar would, therefore, be the same in form and effect whether the matter here appealed be a “final decision,” within the meaning of

section 6, or an “interlocutory order or decree,” within the meaning of amended

section 7. If, however, we find no error in the record, the stress of the situation will become manifest. This is a court of review. It may, on the one hand, reverse, in whole or in part, the decree appealed from; or, on the other, approve and affirm. In the latter event — ■ barring the rule that no subsequent appeal on the same question can be entertained, since this court has no power to review its own adjudications — the decree would stand in the lower court precisely as though no appeal had been taken. This court has not original jurisdiction.

It may not usurp or repress the judicial power of the circuit court. Whatever of force or virtue there may be in a decree of the circuit court is attributable to the judicial power vested by law' in that court. There is no power in the court of appeals whereby its affirmance, or approval on review', of a decree of the circuit court, can give a finality to that decree which it did not have when entered of record in the circuit court. If the mat ter here appealed be an “interlocutory order or decree,” a judgment of affirmance (that is to say, a refusal to reverse) by this court cannot make it a final decree.

If, so far as concerns the ownership of the claims, their validity, the infringement and the injunction, the decree entered in the circuit court on the 12th day of March, 1895, be an interlocutory order or decree, then, as pointed out by Judge; Jackson in Watch Co. v. Robbins, 3 C. C. A. 103, 52 Fed. 337, all questions concerning such, ownership, validity, infringement, and injunction (the hypotíí-esis for the present being that no error is well assigned) are still within the judicial power of that court.

If to the order on the master’s report and the costs yet to be made in the circuit court there shall be added a recital whereby that portion of the decree of March 12th brought here by this appeal is re-entered or “confirmed” by the circuit court, that order, on the hypothesis now in question, will be the “final decision” or “final decree,” and by the statute an appeal can again be taken to this court, and this court wall be bound by the statute to rehear, reconsider, and render a judgment upon the very questions which must be decided on the present appeal, and that without any change whatever in the record, so far as concerns said questions.

In view of this impossible and absurd result,— enlarged upon , by the court of appeals of the Sixth circuit in the case next below cited, — either the adjudication brought up by this appeal was not “an interlocutory order or decree,” within the meaning of amended

section 7, when entered of record in the circuit court, or it will cease to be interlocal ory, and become final, as the legal result of affirmance (or a refusal to reverse) by this court. In Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C. C. A. 25, 72 Fed. 545, after a full hearing on the merits in the circuit court, a decree was made and recorded wherein was adjudged the validity of the patent, complainant’s ownership, the infringement by defendant, and a perpetual injunction.

It was also found in this decree that complainant was entitled to an accounting, and a reference to a master was made on that matter. The defendant appealed, and the court of appeals affirmed.

After the judgment of affirmance, and long after the close of the term in the circuit court at which the decree was recorded, but prior to the report on the accounting, the judge in the circuit court, conceiving the decree to be in' all respects still within his control, on motion of complainant vacated the injunction so far as to permit the defendant to complete and sell certain of the infringing devices, the sales so made to be accounted for before the master.

From this order complainant appealed, and the court of appeals reversed, declaring that the circuit court had no power to change or modify the injunction; that the decree was final and conclusive so far as concerned the patent property, the validity of the patent, the infringement, and the perpetual injunction.

But the learned writer of the opinion, Lurton, Circuit Judge, in the line of reasoning whereby he reached this conclusion, said that the finality of ■ the decree in the respects mentioned was due to the affirmance in the court of appeals; that the decree in the respects mentioned was an interlocutory decree till so affirmed, and then, and as the legal result of such affirmance, became final.

The rule whereby, on the reversal of an interlocutory decree, a mandate may direct a final decree to be entered in the circuit court was dwelt on in the opinion, but the learned judge failed to note the contradiction involved in the proposition that an affirmance can alter the essential character of the decree affirmed. The decree which the circuit court attempted to change was, so far as concerned •the pronouncements therein which were executed by the perpetual injunction, either a “final decision” when entered of record, or it remained, after as before affirmance, interlocutory.

The want of power in the circuit court over that portion of the decree, if that court were foreclosed at all, dated, not from the order of affirmance, but from the end of.the term at which such decree was recorded. In Watch Co. v. Robbins, 3 C. C.

A. 103, 52 Fed. 337, also in the court of appeals of the Sixth circuit, which was an appeal by the defeated defendant in a patent ease from a decree of the hind already described, counsel for both sides joined in a motion whereby (he court of appeals was ashed to “hear and finally determine the merits of the controversy relating to the validity of the patent in suit and the infringement of the same,” as though a decree which had been made pursuant to a final hearing on flu; merits could be reviewed otherwise than on the merits, and as though the consent of counsel (Stevens v. Clark, 10 C. C.

A. 379, 62 Fed. 321) could give to the court of appeals a jurisdiction which, by their application, they seemed to concede was not given by law. The court of appeals assumed without question that the decree was in all parts interior utorv. From this assumption it seemed to follow, as in effect pointed out in the opinion by Judge Jackson, that the ownership, validity, and infringement of the patent were still open questions in the circuit court; in other words, that the court of appeals was powerless to make any adjudication (of affirmance) which, on the theory of the motion, would have force in the circuit court.

The matter was thereupon certified to the supreme court of the' United States. The lat ter tribunal dismissed the certificate for want of form. The court of appeals thereupon heard the appeal, and delivered a second opinion. 12 C. C. A. 174, 64 Fed. 384. The record was fully considered, and the decree affirmed. The opinion contains the statement that on the then present appeal the court of appeals could “hear and finally determine the merits of the controversy as to the validity of the patent and its infringement.” The court of appeals had no original jurisdiction.

The decree affirmed, it would seem, was no more conclusive as the result of the affirmance than it would have; been if no appeal bad ever been taken. The import of,the opinion is that no appeal could be again entertained upon “the validity of the patent and its infringement.” This means that the circuit court had exhausted its power in making the decree appealed from so far as concerned “the validity of the patent and its infringement”; in other words, that to this extent the decree already of record in the circuit court and under review in the court of appeals was final. In Bissell Carpet-Sweeper Co. v.

Goshen Sweeper Co., supra, it is said: “The doctrine of res adjudicate rests upon the maxim that there should he an end to litigation. No doctrine rests upon sounder principles of public policy, or is more entitled to a wide application. If, under an appeal from a decree awarding an injunction, this court obtains such a record as to enable it, with justice to the parties to the appeal, to hear and consider the merits of the cause, it would be most anomalous if we have not the power to decide. The judicial function of considering involves the function of determining.

The decision of an appellate court is Anal, and no second appeal is maintainable, except as to matters reserved, or proceedings subsequent to the first appeal. These considerations lead us to the conclusion that, inasmuch as it was decided upon the former appeal that the patent of the complainant was valid, and that the defendant had infringed it, and a perpetual injunction had been properly awarded, there was no power in the circuit court to dissolve, modify, or suspend the injunction. There was no room for the exercise of judicial discretion.

The complainant was entitled to the remedy by injunction which had been accorded him, and that relief had been affirmed by this court.” If the ultimate judgment of the court of appeals in the last-named case that the circuit court could not change the decree as was attempted be sound, then, since the court of appeals had no original jurisdiction in such a case, since in affirming that court merely approved or declined to reverse or modify the decree appealed from,' that decree, so far as the quality of conclusiveness or finality attached at all, must have been final and conclusive when entered of record-in the circuit court.

The determining consideration in the opinion seemed to be that by the affirmance the decree appealed from became the decree of the court of appeals. But, in the nature of things, as well as by the terms of

section 701, the court of appeals can merely direct a decree “to be rendered” in the circuit court, and that only when the decree appealed from is reversed or modified. The power incidental to appellate jurisdiction is the power to direct the circuit court to enter such a decree as on the showing of the record ought to have been entered by that court. What is done by a court of original jurisdiction pursuant to a mandate from a court of review on reversal is precisely what ought to have been done by the court of original jurisdiction in the first instance.

The legal force as res judicata of a final decree entered in a circuit court pursuant to a mandate from a court of appeals is the same as though such decree had been entered originally, and in place of the erroneous decree which was annulled on appeal.

If, for instance, and to taire an extreme and exceptional case, after the hearing, as shown' by this record, the circuit court had incorporated in its decree a reservation whereby the defendants were at liberty to present further evidence or further argument on the ownership, validity, or infringement of the patents, or given liberty to move at or before the coming in of the master’s report to vacate the decree for the injunction, it would then have been within the authority of this court upon approval here of the holdings below touching the ownership, validity, and infringement of the two patents in question on this appeal, to reverse such decree so far as concerned the reservation specified, and direct that a final and perpetual injunction without reservation ■or condition be ordered in the circuit court; in other words, to reverse or modify the decree of the circuit court, and direct to be entered in that court the decree that ought to have been originally entered there.

It may be here added that in each of the following cases: Bouchier v. Taylor, 7 Brown, Parl. Cas. (1st Ed.) 414; Governors of St. Stephen’s Hospital v. Swan, 5 Brown, Parl. Cas. (1st Ed.) 454; Ellis v. Seagrave, Id. 478; White v. Lightburns, 2 Brown, Parlk Cas. (1st Ed.) 405; Scribblehill v. Brett, 1 Brown, Parl. Cas. (1st Ed.) 57; Rous v. Barker, 3 Brown, Parl. Cas. (1st Ed.) 80; McCan v. O’Ferrall, 8 Clark & F. 30; Le Guen v. Gouverneur, 1 Johns. Cas. 437; Bush v. Livingston, 2 Caines, Cas. 66; and Bebee v.

Bank, 1 Johns. 529,—the decree of the court of original jurisdiction was reversed, and another decree, such as ought to have been rendered by that court on the showing of the record, was directed to be rendered in that court by the mandate of the court of error. These and one other — Dale v. Roosevelt, 6 Johns. Ch. 257, which does not appear to concern the question — are the citations in Bissell Carpet-Sweeper Co. v.

Goshen Sweeper Co., supra, from which, more distinctly than from any other, was evolved the proposition that an affirmance by a court of error can add finality to a decree which, when entered of record in the court of original jurisdiction and up to the time of such affirmance, was not final. It is true, indeed, as stated by Judge; Lurton, that “the judicial function of considering involves the function of determining.” But what a court of error considers is the soundness of the decree appealed from, and the legal sufficiency of that decree to meet the showing of the record on which it rests.

What it determines is either that such decree is not the appropriate conclusion from the record, but that some other decree would have been, in which event the decree which ought to have been originally entered is directed by the mandate; or, on the other hand, that the decree appealed from was the just conclusion of law and fact, in which event that decree as originally made by the circuit court is affirmed.

The effect, the decree in question being one on the merits, is that the power of the court of error is exhausted, — the possibility of further consideration of the same matter by the court of error, the possibility of reversal or modification on appeal, is extinguished. The status of the case becomes the same, so far as the law of res adjudicata is involved, as though no appeal had been taken, but the time limit for an appeal had expired.

The argument and conclusion of Judge; Lur-ton, if addressed to the proposition that the; decree, when entered in the circuit court, was final on the ownership, validity, and in frmgement of the patent and tlie injunction, would seem unimpeach - able.

In other words, fremi his proposition, as applied to the court of appeals, that “the judicial function of considering involves the function of determining.” and from the further proposition that the court of appeals on the prior appeal was bound by law to hear and determine,- — in other worels, had jurisdiction. — it followed, as the matter appears to the writer of this opinion, not that finality was given by the affirmance to a decree which had not that quality when entered, hut that such decree was really final when entered in the circuit conrt, and so continued from that date. In Richmond v. Atwood, 2 C. C.

A. 596, 52 Fed. 10, the decree in favor of the complainant patentee was reversed, and the cause remanded, -with the direction that the order of reference be vacated, and the bill dismissed for want of equity. Whether the appeal in that case were by

section 6 or by

section 7, it was, as already suggested, entirely competent for the court of appeals upon reversal to direct a decree which, when entered of record by the circuit court, would be final. See, also, Green v. Mills, 16 C. C. A. 516, 69 Fed. 852. By

section 6 of the act of March 3, 1891, this court is required to review any “final decision” of the circuit court in a patent suit. That portion of a decree- in such a case which formulates on the record, of the court what is in truth a “final decision” is expressly made appealable. . In Potter v. Mack, Fed. Cas. No. 11,331, Judge Swayne declared that the portion — such as is here appealed from— of a decree in a patent case is a final decision.

If in a decree in a land case it be declared that certain premises held by defendant, and which defendant claimed as his own, is the property of complainant, and that the possession thereof be turned over from defendant to complainant, or that a writ of possession forthwith issue, and if in the same decree it be found that complainant is entitled to an accounting as to the rents and profits, and a reference be made to a master on such accounting, such decree, apart from the accounting, is final and appealable. White v. Ross, 147 Ill. 427, 35 N. E. 541; Forgay v. Conrad, 6 How. 202.

In the case at bar the bill was dismissed for want of equity as to certain of the patents in suit. So far as concerned other patents, and by that portion of the decree which constitutes the matter of this appeal, the property in contention was, after a final hearing, not only adjudged in favor of complainants, but, in effect, taken from defendants, and actually and finally put into the exclusive possession of complainants. The adjudication appealed from was not only made, but executed.

The business of defendants, so far as it depended on their ownership and use of the devices in suit, was stopped at once and forever. Their liberty in that regard was taken away. Their property rights, or what they supposed to be their property rights, were annulled or transferred to complainants as distinctly as though land or money, being the subject of contention, had been taken from their possession and delivered to complainants.

Section 6 should be considered in connection with amended

section 7. The latter

section has been made the subject of comment in this opinion. The words “final 'decision” in

section 6 may include a perpetual injunction decreed against a defendant after a full hearing on the merits in a patent case. Said words certainly must be held so inclusive if the legislative policy to that effect appear affirmatively and by reasonable intendment. By providing an appeal from a preliminary or pendente lite injunction, and in an adjoining

section of the same act giving an appeal from any “final decision,” the lawmakers indicated that a perpetual injunction decreed as the outcome of a final hearing on the merits in a patent • case was appealable'as a “final decision.” The proposition that a defeated defendant in a patent case must submit to the perpetual injunction decreed against him without any right of appeal during the interval of months or years which may elapse between the entry of such decree and the order on a master’s report touching the amount of money for which complainant shall have execution, is not to be entertained in view of the legislation now current. The assumption that

section 6 of the act of March 3, 1891, must be deemed the equivalent of

section 692 of the Revised Statutes of the United States as construed by the supreme court in Barnard v. Gibson, 7 How. 650, and Humiston v. Stainthorp, 2 Wall. 106, lias been the source oí perplexity in the federal courts of appeals. But the two statutes are not (lie same.

Section 6, so far as concerns a perpetual injunction in a case like the one here, must be read in connection with amended

section 7. It was competent for the lawmakers to declare that a defendant in a patent suit can have an instant appeal from an adjudication on the merits, whereby he is perpetually enjoined. It was competent for them to declare that the portion — such as here appealed from — oí a decree in a patent suit is and shall be deemed final. ¡Section 6 and amended

section 7, when read together, seem to carry this meaning. To construe these statutes otherwise, assuming jurisdiction in this court over an appeal like the one here, would lead, as suggested, to exceptional and impossible results. This controversy is waged most strenuously as to letters patent No. 456,122.

The invention of that patent is an improvement in “means for controlling the operation of elevators” used for carrying passengers to and from the upper floors of city buildings.' A. three-armed level-, fixed at the bottom of the elevator shaft, — that is to say, a straight beam placed normally horizontal and pivoted in the center, with an arm extending from the pivotal point downwards,- -was, at the time of this invention, a known means of controlling, through pulleys and cables, with suitable attachments, the mo\ements up or down of the car of a hydraulic elevator by the attendant in charge of such car.

The downward arm is attached at its point to a rod connecting with a. valve which, when such arm is perpendicular, and the beam horizontal, closes the opening or openings whereby water passes to and from the cylinder. When one side of the beam is depressed, the water passage or inlet is uncovered, so that the water is pumped into the cylinder. The piston is at the same time driven or pushed forward in the cylinder pulling down the lifting cables, and the car rises.

When the other side of the beam is depressed, the valve shuts off the water from entering tin1 cylinder, and uncovers the opening for the exit, and the car descends by its own weight, driving the piston backward, and expelling the water through said place of exit. The problem before the pat-en tee, Reynolds, was to devise a means of operating from the moving ear the three-armed lever, which would be different and superior to any means already known.

As shown by the patent in question, he fixed under the car, and pivoted to a downward projection from the floor of the car, a second three-armed lever or horizontal cross beam, with an arm projecting upward through a slot in the floor of the car. From one end of this second beam a rope extended downward, around a pulley on the corresponding end of the beam first described, thence upward along the side of the car and the elevator shaft to the top of the shaft, thence over a second pulley and down to the roof of the car adjoining that side of the shaft where it was secured to the car.

From the other end of said secondly described arm passed another rope downward and around a like pulley at the other end of the beam first mentioned, thence upward along the opposite side of the car to a second pulley at the top of the shaft, and thence down said opposite side of the shaft to the roof of the car, where, it also was secured. The two ropes or cords were of equal length, and they and the pulleys were arranged symmetrically.

In this construction assuming the car to be stationary at any position in the shaft, the handle or arm of the lever projecting through the car floor will be vertical, and the tension of the two ropes or cables wilt be the same. If the attendant move this handle to the left, the end of the rope to the right will be pulled upward, bringing with it the right end of the lower beam. The left end of the lower beam will at the same time be correspondingly depressed. By this action the car will be set in motion, and so continue till the attendant move the handle again to the vertical position, when the car will stop.

By a movement of the handle to the right, the car will go in the opposite direction. The tension of the two cords remains at all times substantially the same, and the force which must be exerted by the attendant to shift the handle is subject to only slight variation. Moreovér, the movement of the car is steady and uniform, and always within easy control of the attendant. The patent, the invention thereof being described in appropriate specifications, and illustrated by drawings, had two claims. They were in words following: “

(1) In a controlling' device for elevators, the combination of a car, two cables attached positively at each of their ends to travel with the car and connected with the controlling device, and an operating device upon the car to positively take up and pay out said cables to shift positively the controlling device, substantially as set forth.

(2) In controlling devices for elevators, the combination of a car, traveling cables connected positively at each of their ends to the car, and passing over stationary pulleys at one end of the well and around movable pulleys connected to the controlling device at the other end of the well, and means for positively contracting and relaxing the bights of the cables, substantially as set forth.” It is strongly urged that this device is anticipated by a German patent to one-Lampe, published June 3, 1882. This publication discloses a control device for an elevator.

The drawing which is part of said publication exhibits the device as applied to a platform or freight elevator. A single cord, attached to a fixture marked “g” on said platform, passes downward to and around a pulley firmly secured at the bottom of the elevator shaft, thence up through or alongside the car or platform to and over a pulley at the top of the elevator shaft, thence back to the fixture aforementioned on the said platform, where it also is secured.

The upper pulley is in a slotted or forked lever or arm hinged or fulcrumed at one end so that such pulley may be moved downward by a pull from the person on the platform who seizes for that purpose a handle or stirrup marked “h,” attached to the cord three or four feet above the point “g,” where the two ends are fastened, as already mentioned. The downward movement of the lever shifts the valve, whereby motion is imparted to the car or platform.

A counteracting weight is depended on to lift, by means of another cord running over pulleys, the end of said lever when the pull on the rope by the attendant or person using the elevator ceases. Said counterweight is also depended on to reset the valve in its normal position, and it must be sufficiently heavy for that purpose.

In using this device, as the downward pull of the handle is made, the cord becomes slack between “k” and “g.” When the car or platform is stopped at the bottom of the shaft, the counterweight pulls up the lever marked “d,” thus raising the cable, which in that position hangs the full length of the shaft on one side and nearly the full length on the other, and also resets the valve.

When the car or platform is stopped at the top of the shaft, the counterweight is opposed — apart from the force necessary to reset the valve —by the weight of that side of the cable which extends to the pulley at the bottom of the shaft. The difference in weight between the cable as suspended over the upper pulley and the counterweight therefore varies with the position of the car, being least at the bottom and greatest at the lot).

The force which the attendant must use in pulling down the handle, “h,” must overcome this excess of weight together with, that resistance which, when the pull ceases, resets the valve. This force, therefore, varies in like manner as described. The pnll when the elevator is at the top is stronger by the weight of nearly one entire side or half of the cable than when at the bottom, and the variation is continuous between these extremes.

Upon the showing of the evidence hero, this variation in the force required from the attendant might be so great in a tall building as to render the operation of the Lampe control device impractical.

It is said in this publication respecting the Lampe device that “for moving * * * valves * * (hat have not the tendency to return to the closed position the mechanism is doubled, whereby the loose pulleys are placed on a two-armed lever that can then act directly as a cock-key or beam.” No suggestion is made in said publication touching any method or means of doubling or duplicating the “mechanism.” The matter quoted is all that is shown on that subject.

If we suppose the two-armed lever to be a beam, such as is shown in the Reynolds device, pivoted in the center, and having a pulley at each end, then, assuming each of the cords to have both ends fastened to the car, as shown with respect to the one cord in the diagram accompanying said publication, the device would be manifestly inoperative1. The handle, “h,” could not he pulled down, since the cord over the adjacent and opposite pulley would resist the pull. In other words, both cords must, under such conditions, necessarily remain taut.

If one of the cords or ropes in the Reynolds device be discarded, and in place of the pulley at the end of the lower rocking beam around which said discarded rope would pass a spring or weight be made use of to act automatically in bringing said beam back into the position where the handle, L, will be vertical, — in other words, to react against the force used by the attendant in handling the car, — then the Reynolds device would he analogous to that of Lampe. It would then also be subject to the objections already noticed with respect to the Lampe patent.

The attendant; must use force enough to overcome the resistance of the weight; or spring and also the varying resistance of that portion of the cord or rope which, having its attachment; underneath the car, lengthens as the car rises. In the Reynolds patent there is no weight or spring to be overcome bv the attendant, and the two cords pendent from the ends attached to the lever under the car, and which lengthen equally as the car rises, counterbalance each other in weight, so that the movement of the handle, L, by the attendant is not affected by any difference in weight between the two.

The arrangement of the two cables “substantially as described” in the specification and illustrated in the diagram of the Eeynolds patent, whereby they counterbalance each other, - and secure substantial steadiness and uniformity of force in the movement by the attendant of the control device, is the character^ istic feature — the point upon which the invention centers — in that patent. There is nothing in the Lampe publication which could have suggestéd the Eeynolds device.

Nor, for reasons already given, does the arrangement of the single rope as shown in the specification of patent No. 456,107 to Baldwin anticipate the.Eeynolds patent in suit. The last-named invention is not a doubling or duplication of cables or of “mechanism,” as shown by Lampe or by Baldwin. The “two cables attached positively at each of their ends, if * substantially as set forth” in the specification and diagrams, is an essential element of the invention in suit.

With the Lampe publication or the Baldwin patent before him, it would have still called for invention in Eeynolds to arrange two cables as shown in patent No. 456,-122. There was, it seems, an interference proceeding in the patent office between Baldwin and Eeynolds. The issue there concerned a claim framed in words following: “

(1) In controlling devices for elevators, the combination of a car, flexible means attached to the ear to travel therewith and connected to the operating mechanism, and a device on the car to taire up or pay out said flexible means to shift the operating mechanism.” The “flexible means” in Baldwin’s patent was, as already stated, a single rope. Thé feigned claim, as applicable to his patent, implies any kind of device which, upon analysis, turns out to be a mere multiplying of that invented by him.

So far as the mere idea of two cables being essentially a duplicate of his one cable is concerned, Baldwin is doubtless prior to Eeynolds. But the method of combining the two cables, which, as has been suggested, is the essential point in the Eeynolds patent, is not comprehended in said feigned claim. Nor is it material that Eeynolds, as against Baldwin, would not be entitled to a claim as framed in the interference proceeding. In the course of this interference Eeynolds made a concession to Baldwin in words following: “I hereby concede priority of invention to O. W.

Baldwin in the matter of the above interference, so far as the invention contained therein is set forth in the single-rope device in the application of said O. W. Baldwin, No. 179,-5S4.” This concession, which concerns the patent already spoken, of and afterwards issued as No. 456,107, in view of what has been said, amounts to nothing as against the validity of .the Eeynolds patent. The application for the Eeynolds patent was filed January 26, 1887. The patent was finally granted July 14, 1891. On December 15, 1885, one Eudolph C.

Smith filed an application and on January 26, 1886, there was issued to him a patent showing a device which, as counsel for appellees apparently concede, would have been an anticipation of the Eeynolds patent. But appellees meet the point with the insistence that Reynolds was in fad the. prior inventor. An original sketch or free hand pen and ink drawing on paper w’as put in evidence by appellees.

It is not serionsly contended, and this court cannot hold on the evidence here, that this drawing was not made by Reynolds, that it was not made in September, 1884, and that it was not an original conception, so far as Reynolds was then advised. Appellants say that such drawing shows the invention of another patent, applied for by Reynolds in January, 1885, wherein the two cables pass from the car down to the pulleys as hereinbefore described, thence up the sides of the shaft and over the upper pulleys and down to weights pendent at their ends.

This latter device plainly appears in the sketch, and as the principal subject-matter thereof; but lines are also indicated from each of the upper pulleys to opposite points of attachment in the roof of the car. These lines show unmistakably the conception of the patent in suit, though it is obvious that at the time of making the sketch Reynolds regarded the plan of the pendent weights as preferable to that of fastening the upper ends of the cables to the car.

Exit in February, 1885, he reduced the invention of the patent in suit to practice by detaching the weights from the ends of the cables— in the case of an elevator in a building in Chicago equipped with his pendent-weight device1 — and fastening the ends to the top of the car. Appellants contend that the sketch of September, '1884, does not show the conception of the device in suit. We think, as did the trial judge, that it does, beyond reasonable question.

This original sketch and the proof concerning it being in the case, it became necessary for appellants to prove that the invention by Smith was prior to September, 1884. They attempted to prove by the recollection of witnesses that Smith bad sketched the device in question in .1881. Rebut tin g testimony was introduced by appellees. From all the testimony on the subject, it is plausibly contended that what Smith then sketched was a different device forming the subject-matter of an application for a different patent.

If the sketch then made by Smith did show the conception of the Reynolds invention, such sketch was not preserved, nor was there any reduction to practice by Smith. If the idea of the invention were present in Smith’s mind in 1881, he apparently regarded it as of no practical value. It was not for him to place an embargo on invention by conceiving and merely retaining the idea without taking steps to put it in practice, or secure a patent. In December, 1884, Reynolds and Smith, who were intimate acquaintances, met, and conversed with each other.

In the course of their conversation they talked of the invention sketched by Reynolds in September. Reynolds, as he testifies, then made a pencil drawing, showing his plan of the pendent weights. He swears also that Smith then made a pencil drawing, showing the cables attached to the car. These pencilings by the two were not put in evidence or preserved. It may be that Smith conceived the invention prior to this talk. It is possible, however, that he conceived it during the talk, and from what was then disclosed to him by Reynolds himself.

But Reynolds evidently received at that conversation, and, for a time at least, retained, the impression that Smith had anticipated him in the plan of attaching the upper ends of the cables to the car. Admissions, subsequent to this conversation, express or implied, by Reynolds, are urged in aid of the showing that Smith was the prior inventor. But these admissions were evidently based on the conversation of December, 1884, and the impression already referred to then made on Reynolds.

They cannot raise any estoppel as against these appellees and in favor of these appellants; nor do they have any efficiency as proof against the sketch of September, 1884. That memorial of the Reynolds invention, with the testimony concerning it, is substantially unassailed. The showing of the record would not justify a pronouncement from this court that the trial judge ought to have declared the priority of Smith’s invention as a ground for invalidating the Reynolds patent. Assuming the validity of this patent, it is not contended that appellants do not infringe.

The three claims of the patent No. 828,-614, together with, the two claims of patent No. 456,122, all concern portions of the equipment of a hydraulic elevator. The assignments of error are three in number, and are set forth in the statement which precedes this opinion. The first assignment is not distributive or severable as between the five claims. The proposition to which appellants commit themselves is that their construction is not an infringement of any one of the five claims. This court cannot sustain the assignment in form and effect as made without declaring that no one of the claims is infringed.

So, also, as to the second assignment. The proposition therein put forward by appellants is that neither of the patents is valid. This court cannot sustain this assignment without holding that both are invalid. But two of the claims were infringed, and one of the patents, namely, that numbered 456,122, is valid. Assuming that the two assignments of error meet the technical rules of this court, — a matter not here decided, since a court of error may, of its own motion, reverse for an error not assigned, — this court must necessarily overrule said assignments, The situation here is plain enough without elaboration.

It has been law time out of mind that a demurrer to an entire declaration must be overruled if there be one good count. Such demurrer asserts that no cause of action is shown. It therefore'raises no further question if one count be good. The argument in such case may properly cover all the counts, but the ruling is complete with the determination that one count is good. ¡ Since this court may reverse for an error not assigned, and in view of misunderstandings as to the scope and effect of this appeal, the validity and alleged infringement of the three claims of patent No. 328,614 have been' considered.

Claims 2 and 4 are in words following: “

(2) The combination, with a hydraulic cylinder and piston and a change or reversing valve for controlling the flow of water to and from the cylinder, of an air-escape pipe leading from the top of the cylinder to the valve-casing, and controlled by said change or reversing valve, substantially as and for the purpose here described.” “

(4) The combination, with the horizontal cylinder, A, its piston, piston-rod, and cross-head, of two sets of sheaves, B, B’, the change or reversing valve whereby 1he flow of water to and from the cylinder is controlled, and the water-passage, 113, leading from said valve to the bottom of the cylinder at the rear end thereof, whereby the discharge of any foreign matter from the cylinder will be facilitated, substantially as and for the purpose herein described.” Beading these claims in connection with the drawings and specification, the matter to be noted as bearing npon the infringement in dispute is the provision whereby, at each backward full stroke of the piston, the accumulated air is expelled from the cylinder through one opening or passageway and the water by another, these two passageways uniting, after they have ceased to be integral with the interior space of the cylinder, and thence constituting a common passageway to a common exit on an elevation with the uppermost surface of the cylinder. “The; flow of water” spoken of in claim 2, and means therefor, namely, the large pipe from the bottom of the cylinder, or some other separate means for “the flow of water,” must be thought of in order that the air-escape pipe can be an air exit as contrasted with the water exit.

By fair implication from the terms of the claim, the change or reversing valve controls a flow of water which leaves the cylinder at one point, and also a flow of air which leaves the cylinder at another point. Claim 4 contains factors other than and in addition to factors shown in claim 2. The emphatic feature is the large pipe or water passage, H3. This exit from the cylinder is a water exit connected at ihe lowest plane of the cylinder, so that the water flow may carry with it hard substances which might otherwise remain in the cylinder, and ini (irrupt the free movement of the piston.

But it is described asa water-passage, not an air exit, or an exit for water and air; and in the invention of this patent described in the specification a, passage; intended for air and a passage for water, the two passages being separate and distinct from each other when; they leave the cylinder, is a feature.

The “cylinder, A,” and “the change or reversing valve,” constructed “substantially as and for the purpose herein described,” are a cylinder with a hole in or near the upper surface, through which the accumulated air escapes at each backward stroke of the piston, and a valve with a hole in the upper casing, or some other means of ingress, whereby the air from the cylinder enters. A closed passage from one hole to the other, or from the hole in the cylinder to the Interior of the valve-casing, is shown a,s part of the invention, and is necessary to make the combination operative as intended.

The air-escape pipe, or some means other than the water passage H3, for the escape of air, must be assumed in view of the specification and drawings, in order that the passage, H3, may be in fact what it is called, and evidently intended to he, a water passage, and not the common and sole passage for water and air. In the construction of appellants the water is expelled from the cylinder through an opening along the lowest portion of its rear end into a compartment the lower internal level of which is not above the lowest portion of the cylinder.

It is thence carried upward to the highest elevation of the cylinder, where it is joined by the air driven into the same compartment by the same movement of the piston through a hole or passageway in the end and near or adjoining the extreme upper surface of the cylinder, such water and air thus driven through these two exits being from their place of junction as indicated carried together and expelled through the main change valve.

The air is forced out of the cylinder at one place of exit, the water mainly at another, at each backward stroke of the piston; and the air exit opens into the water passage, so that the two elements finally pass out at a common place of exit through the main change valve, and on an elevation with the upper surface of the cylinder, it may be added that the water exit from the cylinder is apparently so constructed that the outward flow or wash through said exit may carry with it deposits of foreign matter on or near the bottom of the cylinder.

We do not understand from the record that either of the combinations set forth in these claims, as read in connection with the drawings and specification, was contained in the prior art. These two claims were held valid, and the infringement declared, as well by Judge Blodgett, who was so sure upon both points that he granted a preliminary injunction, as by the learned circuit judge from whose decree this appeal was taken.

Apart from niceties of construction, and in view of the invention as shown and described in the patent, it does not seem appropriate, on the state of this record, to reverse the ruling of the circuit court on either of these claims.

Following are the words of claim 6: “The combination, with the cylinder and piston of a hydraulic elevator and a passage for liquid to and from the cylinder of a shut-off or safety valve arranged in said liquid passage, an unbalanced piston for holding said valve normally open, and appliances through which said valve is moved automatically against the pressure of water on said piston to close the valve as the main piston approaches the end of its movement, substantially as herein described.” As shown by the drawings and specification of this patent, the secondary or limit stop valve called in the claim the “shut-off or safety valve” is placed in the water passage between the main or change valve and the cylinder.

Through this passage the water is driven to the cylinder from the main valve, and from the cylinder to the main valve. In or across this passage is the safety valve. Its purpose is to stop, when the car is at the top or bottom of the shaft, the flow of water, whether it be coming in towards the cylinder or going out from the cylinder. It is, in operation and effect, a singlé valve, and its action “against the pressure” of the water, or in returning to its normal position by means of the unbalanced piston, is the same whether the flow be towards or from the cylinder.

The unbalanced piston, together with leakage holes through the disks which form the valve, is the means whereby the flow of water to or from the cylinder is gradually stopped and started in the reverse direction through the passage, H3, when the ca.r is at the bottom or top of the shaft. A passage for liquid to and from the cylinder wherein is arranged a shut-off or safety valve held normally open by the expedient of an unbalanced piston, substantially as shown in the drawings and described in the specification, is the important factor in this claim.

When a hydraulic cylinder is constructed so that there is one water passage for the flow towards such cylinder and another for the outward flow, a safety valve in either to stop the tlow was in the prior art. The idea of the patent in suit, so far as concerned the matter of claim 6, was a single water passage for the flow to and from the cylinder, and in that passage a single valve to stop the flow in either direction when the car was about to pass the proper limit at the top of the shaft in going up or at the bottom in going down.

Apart from anything in the prior art, this would seem to be the sense of the claim in view of its terms and of the drawings and speciflcation. In the construction of appellants there is no passage for water to and from the cylinder which contains any .• ini oif or safety valve. In that construction there are two valves, operated by a common stem; or a double valve, one part of which closes a passage for the exit of water from the cylinder while the other

part is adapted to close another passage for the flow to the cylinder. While the* flow through the inlet passage is stopped by one of these valves, (he outlet, passage is unobstructed. The inlet passage is closed by the valve; appropriate to it when the car is at the top of the well, the other valve being meantime withdrawn, wo that, so far as that valve is concerned, the outlet passage is entirely open. The reverse of ibis occurs when the car is at the boh iom of the well.

Neither an unbalanced piston nor any instrumentality other than the main change valve is needed or used to start the flow of water to the cylinder when the car is at tin* bottom, or from it when the car is at the top. In this construction the safety or sihat-oiT valves are not in the water passage from the main valve to the cylinder. In this construction, as already said, there is no passage for the flow of water to and from the cylinder in which is arranged a safety or shut-off valve.

Nor is there apparently anything answering to the leakage holes which seem to he functional in the shut-off or safety valve as shown in the patent in suit; nor is ¡here apparently anything which has a function equivalent to that of the unbalanced piston as described in the patent in suit. These latter suggestions seem not inappropriate in connection with the important point of distinction, namely, that appellants have not arranged a shut-off or safely valve in a passage through which the water flows in both directions between the main valve and the cylinder.

Construing claim 6 with reference to the invention described, (he construction of appellants, so far as concerns that claim, would not appear to be within the monopoly of the patent in question. The third error alleged by appellants concerns the title of appel-lees to the patent numbered ■‘128,614. The title comes to them by divers assignments. Copies of the record in the patent office of such assignments were put in evidence, and no oilier proof of the original instruments or the signatures thereto was made.

It is tlw; want of such additional proof, rather than the incompetency, for any purpose, of the copies from the record in the patent office, which appellants insist: on. •

Section 1898 of the Revised Statutes of the United States is in words following: “See. 4898. Every patent or any interest therein 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. An assignment, grant, or conveyance shall be void as .against any subsequent purchaser or mortgagee íor a valuable consideration, without notice, unless it,is recorded in the patent office within three months from the date thereof.”

Section 892 is in words following: “Sec. 892. Written or printed copies of any records, boohs, papers, or drawings belonging to the patent office, and of letters patent authenticated by the seal and certified by the commissioner or acting commissioner thereof, shall be evidence in all cases wherein the originals could be evidence; and any person mating application therefor, and paying the fee required by law, shall have certified copies thereof.”

Section 4898 does not require that any instrument in the chain of title to a patent shall he recorded, hut all such assignments may he recorded. The sense — the essential significance and intent — of this

section is that the record or official copy of any assignment shall give to any person interested the prima facie assurance that an original assignment was made in terms as shown in the record, that such instrument was subscribed as shown, that it was delivered, that the signature thereto is the genuine signature of the assignor,, and that such assignor had an assignable interest according to the purport of the instrument. These are the inferences — the prima facie inferences — which any person interested is authorized and authorized by law (that is to say, by the

section itself) to draw. The laws of thought are not suspended when the inquiry arises in a court of justice. The'selfsame inferences spring up prima facie when a litigant in a patent case, being called on to prove that A. assigned to B., produces a writing, purporting to show on its face an assignment from A. to B., which is proven to be a copy of a record in the patent office. The record of assignments in the patent office is a record “belonging to the patent office,” within the literal terms of

section 892. But, in the absence of that section, and on the general principles of evidence, a paper purporting to be a copy of a record in the patent office could be proven to be such copy by the sworn testimony of the person who made it, or of a person who had compared it with the original record in the patent office. The view here stated as to the prima facie probative force of a copy from the record of an assignment in the patent office has been substantially taken in many reported decisions. Brooks v. Jenkins, 3 McLean, 432, Fed. Cas. No. 1,953; Parker v. Haworth, 4 McLean, 370, Fed. Cas. No. 10, 738; Lee v.

Blandy, 1 Bond, 361, Fed. Cas. No. 8,182; Dederick v. Agricultural Co., 26 Fed. 763; National Folding Box & Paper Co. v. American Paper Pail & Box Co., 55 Fed. 488. The same theory as to the probative force of records made by authority of law in the case of alienations of other property is recognized with more or less definiteness in the following cases: Sudlow v. Warshing, 108 N. Y. 522, 15 N. E. 532; Chamberlain v. Bradley, 101 Mass. 188; Ward v. Fuller, 15 Pick. 185; Lane v. Bommelmann, 17 Ill. 95; Seeley v. Wells, 53 Ill. 120; People v. Lee, 112 Ill. 113; Railway Co. v. Trayes, 17 Ill. App. 136; Sampson v.

Noble, 14 La. Ann. 347; Evanston v. Gunn, 99 U. S. 660; Navigation Co. v. Amsden, 25 Ill. App. 307. Said the supreme court of Massachusetts, speaking of the probative force of a copy of a deed from the public registry of deeds, in. Chamberlain v. Bradley, supra; “Between natural persons, the production of a copy is evidence of the execution of the deed by the person whose deed it purports to be, of its delivery, of its due acknowledgment; and, in the absence of other evidence, of the seisin of the grantor.

This involves the presumption or inference of fact (1) that the seal was the seal of the grantor; (2) that it was affixed by him, or by his authority; (3) that he signed his name, or authorized it to be signed by him or in his presence; (4) that it was the grantor who made the acknowledgment; (5) that the certificate of the magistrate is genuine; and (6) that the grantor was seised of the Land which the deed purports to convey.” It is not here meant that a plaintiff in ejectment conld make out a prima facie case by putting in evidence a copy from the record of the last deed in his chain of title.

The presumption that the assignor of a patent, for instance, was vested with the interest assigned on the face of the instrument, or that the grantor in a land conveyance was seised of the estate transferred on the face of the deed, in the absence of other proof tracing prima facie the title of such assignor to the original source, or to a source which was common to the contending litigants, would doubtless be sufficiently rebutted in the case of a patent by the adverse user, in the case of land by the adverse possession. In Navigation Co. v. Amsden, 25 Ill. App. 307, and in Sampson v. Noble, 14 La.

Ann. 347, records in the collector’s office were used as nrima facie proof to show the ownership of a vessel. In a case where the litigant against whom the copy is offered was himself the as-signee in the assignment to be proved, and may, for that reason, be assumed to have the custody of the original, an objection that no notice was given to him to produce the original will be good, but such objection must specify the want of notice as its ground.

On the other hand, if a litigant should offer a copy from the patent office to prove an assignment wherein he himself is assignee, and presumptively in possession of the original, an objection specifically on the ground that he should produce, or show the loss of, or account for, the original. would likewise be good. Draper v. Hatfield, 124 Mass. 53; Stockwell v. Siloway. 105 Mass. 517; Samuels v. Borrowscale, 104 Mass. 207; Blanchard v. Young, 11 Cush. 345; Palmer v. Stevens, 11 Cush. 147; McNichols v. Wilson, 42 Iowa, 385.

The record in the case at bar shows the following note of the objection made when the copy from the patent office of the first in the chain of assignments was introduced in evidence before the commissioner; “Counsel for defendants objects to the introduction of the said paper as an exhibit for its admission in evidence, on the ground that the original of which it is certified to be a copy, so far as the purposes of the suits which defendants’ counsel represents, is immaterial, indefinite, incompetent, and not proven.” This objection, in terms, is that the record in the patent office is “immaterial, indefinite, incompetent, and not proven.” “The original of which” the paper put in evidence was “certified to be a copy” is the record in the patent office, not the original writing of assignment.

The meaning of the objection is that the record in the patent office is “immaterial,” etc. This objection was repeated, or rather referred to, in connection with each succeeding assignment in the chain of title as the copy from the patent office was put in evidence. There was no call for any original writing of assignment, nor was any objection made on the ground that any original writing of assignment was not produced, or its loss accounted for.

The matter was not brought in any way to the attention of the ■circuit judge, nor is it asserted as error that any copy from the patent office was admitted over the objection that the original writing was not produced, or its loss accounted for. The only question presented by the record is the prima facie probative force of the patent office record of an assignment. Tn City of New York v. American Cable Ry. Co., 9 C. C. A. 336, 60 Fed. 1016, the federal court of appeals at New York, following an obiter dictum by the federal court of appeals at Boston in Paine v. Trask, 5 C. C.

A. 497, 56 Fed. 233, decided that under the sections above quoted from the Revised Statutes of the United States a certified copy from the records in the patent office would not prima facie prove the assignment without a further showing as to the execution of the original instrument. It is argued by the learned writer of the opinion that the statute does not require an assignment to be recorded, that the original is not left in the custody of the patent office, and that no certificate of acknowledgment or proof of execution is required by the statute to be made in connection with such instrument.

But the line of reasoning .upon which the courts have developed the rule already stated does not involve any one of the conditions named. The statute makes it the duty of the commissioner of patents to record assignments (meaning assignments that are genuine). He has no authority to record a spurious instrument. A spurious assignment recorded in the patent office would not be in law a record of that office. The record of an assignment is, in law, tantamount to a finding or certificate by the commissioner that the original is genuine.

It matters not that the commissioner may act on the mere assumption that whatever paper of this kind is presented for record is genuine. He is a public officer, charged by law with the duty of recording only such as are genuine. The law attaches to his act in making the record the prima facie presumption that the instrument copied upon his record book is entitled to record; that is to say, is genuine. The argument that a spurious assignment may be mistakenly put upon the record might be urged against the policy of the statute, but not against the obvious sense of it.

Such an argument might also be urged against the ordinary statutes for recording deeds, for it would be no more difficult to secure the recording of an instrument with, a spurious certificate of acknowledgment than an instrument with no acknowledgment at all, but with a spurious signature. All such enactments proceed upon the assumed integrity of men on the average, as civil institutions in general in this country assume a fair degree of integrity and intelligence in the average man. This court cannot accede to the view announced in City of New York v. American Cable Ry. Co., supra.

The rule, as understood and acted upon prior to that decision, is considered by this court to be law. For 52 years (Brooks v. Jenkins, supra, was decided in 1844) that rule has prevailed. As pointed out by Judge Coxe in National Folding Box & Paper Co. v. American Paper Pail & Box Co., supra, a holding that the patent-office record of an assignment shall have no force as prima facie proof of the original writing would oft.en entail great and useless expense, if not an entire defeat of the rights of the complainant in a patent case.

A spurious or counterfeit assignment put of record in the patent office would be easily and certainly detected by any person interested in the inquiry, especially in the case of any patent of real value. The possible gain from such a rascality would not be worth the risk. The complainant in a patent: suit is ordinarily making actual use of the patent. What may be called his possession of the patent property is usually open and notorious.

It is no hardship upon an infringer who, claiming no right in himself, proposes to dispute the showing of the patent office on the matter of title, to require from him such proof as may at least raise a fair presumption that the original of some assignment shown of record in the chain of title is spurious.

In accordance with the prevailing opinion of the judges on this hearing, the adjudication appealed from is affirmed in all respects except as to the sixth claim of patent No. 328,614, and as to that claim the decree is reversed, with the direction that the order of reference be to that extent vacated, and the bill to that extent dismissed for want of equity; and the cause is remanded to the circuit court.