in the manufacture of trunks. First, a yield-used, and sold by defendants, and the prots ing roller to be applied to the outside of the which they had received and which had ac trunk; second, in spring catches to hold the crued to them since December 12, 1874, from trunk shut; third, in a brace of peculiar their infringement, together with all damages construction applied to the outside of the in excess of such profits sustained by plaintiff trunk for the purpose of holding up the lid; and his assignor since that date. Subsequent and, fourth, in a spring arm for supporting to the entry of the interlocutory decree, which the tray when turned up. In the specifica- was opened for that purpose, and pending [32] tion the patentee made the following state- proceedings before the master, the defendants ment with regard to the spring catch, which by leave of the court amended their answer, was the only feature of the invention claimed by alleging that the title to the patent was to have been infringed in this suit: in the assignee in bankruptcy of one Poinier, who assigned the patent to the plaintiff subsequent to his adjudication in bankruptcy. The bill was also amended by averring that the assignee never accepted title to the patent, but neglected and refused to assert any claim thereto, and that he is now estopped from claiming any title or exercising any dominion over such patent, or the invention thereby secured; and is also barred by the provisions of the Bankruptcy Act requiring suit to be brought within two years after the accruing of any cause of action. In his report, made under the order of the court, the master found that the testimony left no doubt that “at the date of the granting of the patent to Taylor the only known device for accomplishing the results produced by the trunk fastener was the ordinary trunk strap_used in conjunction with the simple dowel pin. It seems, therefore, that the profits for which the defendants must account to complainant under the decree of this case are to be found by arriving at the cost of making and applying the strap and dowels and deducting therefrom the cost of making and applying the infringing trunk fastener manufactured and sold by the defendants."

"Instead of providing the top of the trunk with the usual straps for fastening it down, I attach to its front two spring catches, I, and to the top two tangs or plates, J, which lock into and are held by the catches. Each [81] catch consists of a metal socket, e, provided with a hinged latch or hook, f, and with a flat spring, g, which bears against the lower end of the latch, and keeps its upper end pressed inward against the socket. The upper end of the latch or hook is provided with a prong, i, which extends through into the socket as shown in Fig. 4, the upper side of the prong being beveled off, as shown. The tangs on the top or lid are provided with beveled ends and with holes, or openings, as shown. When the top is pressed down the tangs slide down into the sockets, and the prongs, i. of the latches lock through them, in the manner shown in Fig. 4, so as to hold the top or lid down securely. In order to unlock latches it is only necessary to turn back the upper ends of the hooks or latches so as to draw the prongs out of the tangs. After the latches are turned back a certain distance the springs hold them in position, as shown in Fig. 1, and in dotted lines in Fig. 4, so that it is only necessary

to attend to one of them at a time."

The only claim which was alleged to have been infringed was the third, which reads as follows:

3. The spring catches I, constructed and applied to the front of the body, as described, in combination with the tongues or hasps J, on the top, when arranged to operate as set forth.

The answer denied the validity of the patent and infringement of the same. After the testimony had been taken, the plaintiff entered with the Commissioner of Patents a disclaimer of all the claims of the patent except the one in suit, and upon the hearing upon pleadings and proofs the court adjudged the patent to be valid, and that the defendants had infringed, and referred the case to a master to ascertain and report to the court the number of trunk fasteners made,

Figuring upon this basis, the master found that the sum of $11,455.03 had been saved by the defendants by the manufacture and use of 2,500 gross of fasteners admitted to have been made and used by them, over what it would have cost them to have made and applied the straps and dowels necessary and proper to have been used for the same purpose in lieu of such infringing fasteners. No computation was made of damages for the reason that the testimony showed that the profits allowed by him largely exceeded any actual damage sustained by the plaintiff. Exceptions were filed by both parties to this report, and a final decree was entered sustaining the exceptions filed by the defendants to the master's report, vacating and setting aside such report, and decreeing nominal damages for the infringement. 21 Fed. Rep. 124. Both parties appealed from this decree [33] to this court.

As to abandonment of invention, see note to Pen- ent: recording; when assignment transfers extended nock v. Dialogue, 7: 327.

v. Morse, 14: 601.

terms, see note to Gayler v. Wilder, 13: 504.

As to when assignee may sue for infringement; when patentce must; when they must join, see note to Wilson v. Rousseau, 11: 1141.

As to damages for infringement of patent: treble damages, see note to Hogg v. Emerson, 13: 824.

As to notes given for patent rights; purchaser be

fore maturity, see note to Mandeville v. Welch,

5: 87.

That prior use or sale of invention renders patent As to assignment, before issuing and reissuing pat- vold, see note to French v. Curter, 34: 664.

The English courts draw a distinction between property owned at the time of the bankruptcy and such as was subsequently acquired. It was of gradual growth, but it resulted in this, as stated in Bacon's Abridgment, 737, "that an uncertificated bankrupt has a right to When long after estates in bankruptcy have property acquired subsequent to his bank- apparently been closed assets are found to exruptcy against all the world except his asist, the court will appoint a new trustee to take signees, and may maintain actions in respect charge of and administer them. of such property unless the assignees iuterpose."

The decision of the department, as well as of the courts has been uniform that such diverse inventions cannot be united in one pat

ent.

Ex parte Yale, L. C. D. 1869, p. 110; Ec parte Shepard, J. F. C. D. 1872, p. 244; Er parte Stow, H. M. C. D. 1873, p. 30; Ex parte Barker & Mack, C. D. 1873, p. 123; Ex parte Lones, C. D. 1874, p. 44; Er parte Rice, O. C. D. 1874, p. 44; Ex parte Sobinski, C. O. C. D. 1876, p. 161; Ex parte Dieterich C. F. C. D. 1877, p. 14: Ex parte Law H. C. D. 1877, p. 115; Ex parte Hamilton, R. W. 13 Pat. Off. Gaz. 122; Ex parte Cardwell, 15 Pat. Off. Gaz. 293; Ex parte David, 0. A. 16 Pat. Off. Gaz. 1139.

Mr. Justice Brown delivered the opinion of the court:

the assignee does not recollect the conversa-
tion, there is nothing to disprove Mr. Ses-
sions' version of it; nor is it strange that
Miller did not recollect it, as he acted as as-
signee in some six or seven hundred cases,
and could hardly be expected to remember
all the transactions connected with them.
It is undisputed that Shepard went to New-
ark to find Poinier, and subsequently went
to Rochester and found him there. The first
assignment from Poinier was executed Au-
gust 16, 1878, and conveyed only the title
to the patent itself; but a second assignment,
bearing date September 24, included also all
rights of action for infringement from ths
date that Poinier himself acquired the title [39]
to it.

While, under the provisions of the bank-
rupt law, the title to this patent undoubtedly
passed to the assignee in bankruptcy of
Poinier, it passed subiect to an election on
his part not to accept it, if, in his opinion,
it was worthless, or would prove to be bur-
densome and unprofitable. And he was

he would accept it or not. American File
Co. v. Garrett, 110 U. S. 288, 295 [28: 149,
152]; Sparhawk v. Yerkes, 142 U. S. 1 [35:
915]; Amory v. Lawrance, 3 Cliff. 523, 535.

1. Defendants attack the title of the plaintiff to this patent upon the ground that Poinier, who bought the patent of Taylor in 1872, and subsequently, in 1878, sold it to Sessions, had, prior to such sale, and in September, 1876, been duly adjudicated a bank-entitled to a reasonable time to elect whether rupt in the District Court of the United States for the District of New Jersey, nd an [38] assignee appointed, in whom, it is claimed, the legal title to the patent vested. It seems, however, that Poinier did not include this In this case the assignee had taken a year patent in his schedule of assets, upon the to wind up the estate, and had given no sign ground, as he said, of its being unproduc- of his wish to assume this property, if intive property and of no value. Indeed, all deed he knew of its existence. On being that he seems to have done with the patent asked with reference to it by the proposed was to make a lot of trunk fasteners in 1872, purchaser, he replied that the estate was all which proved to be failures, and which ap- settled up, that he had no power to do any pear to have been the cause of his insolvency. thing in the matter, and that Poinier was He made no others for the three years before the only one who could give a title. A he went into bankruptcy. On May 15, 1877, plainer election not to accept can hardly be he received his discharge, and on November imagined. Granting that up to that time 27 of the same year his assignee was dis- he had known nothing about the patent, it charged. On June 12, 1878, thirteen months was his duty to inquire into the matter if after Poinier had received his discharge, and he had any thought of accepting it, and not six months after his assignee had been dis- to mislead the plaintiff's agent by referring charged, Sessions bought a shop right of him to the bankrupt as the proper person to Poinier, for which he paid him $500, and in apply to. Under the circumstances, plaintiff the same year purchased the patent itself, for could do nothing but purchase of Poinier. which he paid him $1,000 additional. Mr. Bearing in mind that no claim to this propShepard, who acted as the agent of the plain-erty is now made by the assignee, but that tiff in making this purchase, testifies that his alleged title to it is set up by a third he went to Newark on the morning of June person, who confessedly has no interest in it 6, 1878, and inquired for Henry W. Poinier. himself, it is entirely clear that the defend"I was informed that one Mr. Miller was his ants ought not to prevail as against a purassignee, and that I could learn of his af- chaser who bought it of the bankrupt after fairs by seeing him. I then went to the of-the assignee had disclaimed any interest in fice of Mr. Miller and found him there, in-it. troduced myself, and told him that I had come to see him about a patent for a trunk fastener which was owned by Henry W. Poinier, and under which said Poinier had been making trunk fasteners, and I asked Mr. Miller if he would sell me said patent, or give me a shop right thereunder, as the assignee of Mr. Poinier. Mr. Miller replied that he could not do so; that the estate was all settled up; he had made his return to the court, and had been discharged as assignee, and he had no power to do anything in the matter. I asked him what I could do, and he said the only thing was to go to Mr. Poinier; that Poinier was the only one who could give me any title. I learned that Mr. Poinier was in Rochester." While

Had the existence of this patent been concealed by the bankrupt, or the assignee had discovered it subsequently-after his dis charge-and desired to take possession of it for the benefit of the estate, it is possible the bankruptcy court might reopen the case and vacate the discharge for that purpose. Clark v. Clark, 58 U. S. 17 How. 315 [15: 77]. But it does not lie in the mouth of an alleged infringer to set up the right of the assignee as against a title from the bankrupt acquired with the consent of such assignee.

It is quite evident from the facts stated that this patent, which seems to have been the cause of Poinier's insolvency, was thought to be of little or no value, that the assignee so regarded it, and that its real

[40]

[41]

value was only discovered when the plaintiff | unreasonably neglected or delayed to file the had brought to bear upon the manufacture disclaimer. And such was also the ruling of the device his own skill and enterprise. of Mr. Justice Nelson in Guyon v. Serrell, 2. Defendants are charged with infringing Blatchf. 244; and in Hall v. Wiles, 2 Blatchf. the third claim of the Taylor patent, which 194, 198. We think that section 4917 ought was for a spring fastener, modifications of to be read in connection with section 4922, which are now in almost universal use, as a providing that the patentee may maintain a substitute for the old-fashioned strap and suit at law or in equity for the infringement buckle. Upon the hearing in the court be- of any part of the thing patented, notwithlow, it was claimed the patent was invalid standing the specifications may embrace more by reason of the joinder of distinct inven- than that of which the patentee was the first tions in the same patent-inventions, which inventor or discoverer; but in every such though applicable to the same article, viz, case in which a judgment or decree shall be a trunk, do not co-operate in the use of such rendered for the plaintiff, no costs shall be article. The court below was evidently in- recovered, unless the proper disclaimer has clined to this opinion, but permitted the been entered at the Patent Office before the plaintiff to enter a disclaimer of all the commencement of the suit. This was prac claims but the one in suit. Whether these tically the construction given to correspond different devices were properly embodied in ing sections of the Act of 1837 by this court the same patent or not, we think this was a in Smith v. Nichols, 88 U. S. 21 Wall. 112 [42] proper case for a disclaimer under section [22: 566]; and of the Revised Statutes in 4917. While the language of this section Dunbar v. Myers, 94 U. S. 187, 193 [24: 34, provides for disclaimers "whenever, through 37]. Under section 4922 the effect of de inadvertence, accident, or mistake, and with- laying a disclaimer until after the com. out any fraudulent or deceptive intention, a mencement of the suit goes only to the patentee has claimed more than that of which recovery of costs. We adhere to that conhe was the original or first inventor or dis-struction. Congress having in the Revised coverer," it allows the patentee to "make Statutes adopted the language used in the Act disclaimer of such parts of the thing patented of 1837, must be considered to have adopted as he shall not choose to claim or hold by also the construction given by this court virtue of the patent or assignment, stating to this sentence, and made it a part of the therein the extent of his interest in such enactment. patent." We think this section broad enough to cover disclaimers made to avoid the effect of having included in the patent more devices than could properly be made the subject of a single patent. The power to disclaim is a beneficial one, and ought not to be denied except where it is resorted to for a fraudulent and deceptive purpose. In Tuck v. Bramhill, 6 Blatchf. 95, a disclaimer was allowed by Mr. Justice Blatchford where two or more inventions were covered by a single claim. In Hailes v. Albany Store Co., 123 U. S. 582, 587 [31: 284, 286], it was said by Mr. Justice Bradley to be "usually and properly employed for the surrender of a separate claim in a patent, or some other distinct and separable matter, which can be exscinded without mutilating or changing what is left standing."

The only difficulty connected with the question of the disclaimer in this case arises from the final sentence of section 4917, that "no such disclaimer shall affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it." There is an unfortunate choice of language here which has rendered this sentence very ambiguous and diflicult of construction. It was held by Mr. Justice Story in Reed v. Cutter, 1 Story, 590, 600, that if the disclaimer were filed during the pendency of the suit, the plaintiff would not be entitled to the benefit thereof in that suit-a ruling which had also been made in Wyeth v. Stone, 1 Story, 273, 294. It was held in Tuck v. Bramhill, 6 Blatchf. 95, that the provision meant that a suit pending when a disclaimer is filed is not to be affected by such filing, so as to prevent the plaintiff from recovering in it, unless it appears that the plaintiff

3. The essential feature of the Taylor patent consists of a plate attached to the body of the trunk, which contains a socket and hinged catch, and a double acting spring whose function is to hold the catch either open or shut; and a tang fastened to the lid, which, as the lid is closed, drops into the socket holding the catch, which, when closed, holds the lid firmly in place. It also acts as a dowel to keep the cover from rack. ing.

Of the alleged anticipating devices the patent to Gaylord of 1861 is a trunk lock, not, as in this case, a fastener, designed to supplement the lock, and differing from the old-fashioned and well known trunk lock principally in discarding the hinged hasp and using a rigid tang attached to the cover which sinks into the socket in the body of the trunk prepared to receive it, and is there self-locked, but is unlocked only with an ordinary key. It was not designed at all to supersede the buckle and strap, but was only a substitute for, and an improvement upon, the ordinary lock. In short, it is a moditi. cation of the spring lock previously used upon trunks.

The Roulstone patent of 1866 is for an improvement in traveling bags, and shows a spring-locking device for securing the two parts of the bag firmly together. It has no features in common with the trunk fastener of Taylor, and is not adapted to hold the lid of a trunk firmly to the body. It has no means for holding the catch out of engage ment when desired, and is wholly unlike the modern trunk fastener.

The patent to Semple of 1808 covers an angle plate upon the trunk cover provided at the end side with a dowel in combination with a small plate upon the box provided