Reedy v. Scott
90 U.S. 352 (1874)

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U.S. Supreme Court

Reedy v. Scott, 90 U.S. 23 Wall. 352 352 (1874)

Reedy v. Scott

90 U.S. (23 Wall.) 352

APPEAL FROM THE CIRCUIT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

1. Though as a general rule suits for infringement of a patent are defeated by the surrender of the patent, and a new original bill -- not a supplemental bill -- is the proper sort of bill by which to proceed for an infringement under the reissue, yet where there has been a surrender and reissue, and the patentee has proceeded by a supplemental bill -- the defendant making no objection to this sort of proceeding, but allowing proofs to be taken and the suit to proceed otherwise to a conclusion, as if the irregularity were wholly unimportant, the two parties proceeding respectively throughout the trial upon the assumption and concession that the reissued patent was substantially for the same invention as that embodied in the original patent -- all objection to the irregularity in proceeding by a supplemental bill instead of by a new original one must be considered as waived.

2. Where, pending a bill in a federal court for the infringement of a patent, the parties have agreed to submit the question whether a machine made by the defendant was an infringement to a solicitor of patents and to abide by his decision, and that if he decides that it is not, then that the bill in said suit shall stand dismissed, and the referee does decide that there is no infringement, but the complainant, instead of having his original bill dismissed and filing a new original bill, files a supplemental bill alleging a surrender and reissue, and that the reissue is "for the same invention" as was secured by the original patent; in such case, if it appear that the parties throughout the trial have treated the invention secured by the reissue, as substantially the same invention as that secured by the original letter, and have raised no issue about exact specification or any of those differences which may properly exist between a claim in an original patent and a claim in a reissue, but on the contrary have impliedly admitted substantial identity, having taken the issue on other matters, the matters, to-wit, whether the complainant was not deceived when agreeing to refer, and whether the right of the referee to make any award was not legally revoked before any award was made by him, and whether, therefore, the award was not void; in such case, if the court be satisfied that there was no deception, and that the award was made, and validly, then the plea of the award and agreement to be bound by it, may be properly pleaded to the supplemental bill as it might have been to the original one.

Page 90 U. S. 353

3. Where in a pending suit, a patentee and a party charged with infringing agree to refer the question of infringement to a third person as arbitrator, and to be bound by his award, this Court will presume, until the contrary is shown, that an award made is correctly made, and must so presume if, disregarding the award, the complainant goes on with his suit, and the case on coming here, comes with a record that exhibits neither the patent of the complainant nor any description of the machine which is alleged to infringe it.

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