Stone Company, of the ideas secured to the complainant, within a certain territorial district, by the decree in this action, must be granted. Inasmuch, however, as Mr. Boswell's acts have been under an apparently honest assumption that the question of using the Sellars patent was still open to him, and that his use thereof was without knowledge of this court's decision that the Sellars patent was limited to a nonabsorbent mold, and inasmuch as Mr. Boswell and the Marbolith Stone Company both agree to refrain from further acts, so long as this court's decree shall remain in force, no award of damages or costs. will be made.

VOIGTMANN et al. v. SEELY et al.

(Circuit Court, S. D. New York. December 22, 1909.)

No. 600,186.

PATENTS (§ 310*)—SUITS FOR INFRINGEment-Demurrer to BILL.

Where the question of the validity of a patent involves an examination of the prior art or of prior patents, it cannot be declared void on demurrer to a bill for its infringement; nor is it ground for demurrer that the patent has been adjudged void in other jurisdictions in suits against different defendants.

[Ed. Note. For other cases, see Patents, Dec. Dig. § 310.*]

In Equity. Suit by Frank Voigtmann and another against Frank Seely and others. On demurrer to bill. Overruled.

Offield, Towle, Graves & Offield (C. K. Offield and Philip B. Adams, of counsel), for complainants.

Phillips & Avery (R. H. E. Starr, of counsel), for defendants.

on

HOLT, District Judge. This is a demurrer interposed by the defendants to a plea in equity brought to restrain the infringement of a patent. Similar suits against other defendants, on the same patent, were brought in the Circuit Courts in the Seventh and Eighth circuits, and on final hearing the court decided in favor of the defendants, the ground that, the claims of the patent sued on were void for lack of invention, and as being mere aggregations. Both these decisions. were affirmed on appeal by the Circuit Courts of Appeal. 133 Fed. 298; 133 Fed. 934; 138 Fed. 56, 70 C. C. A. 482; 148 Fed. 848, 78 C. C. A. 538. The patentee thereupon filed a disclaimer, disclaiming a portion of the specifications and the first four claims, and thereafter brought this suit on the patent as disclaimed. The defendants have demurred; the ground of demurrer being, as I understand it, that the disclaimer has made no substantial change in the patent, and that the patent in its present form is void for want of invention.

I think the disclaimer has made no substantial change in the alleged invention. The cases in the Seventh and Eighth circuits were both brought on claims 5, 6, and 7, and those are the claims upon which this suit is brought. But I cannot see how the fact that a disclaimer has been filed makes the complaint demurrable. Undoubtedly, if a patent is manifestly invalid upon its face, the question of such validity

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

may be raised by a demurrer to the bill. Richards v. Chase Elevator Co., 158 U. S. 299, 15 Sup. Ct. 831, 39 L. Ed. 991. But the cases in which such a demurrer will lie are very unusual. They are cases where the alleged invention is something so obviously incapable of being considered an invention that a demurrer will lie. When the question whether any invention has taken place involves an examination of the prior art, or of prior patents, no demurrer will lie. I think that is the case here. It is true that, in two litigations in which evidence was taken, the Circuit Court in another circuit has held, on final hearing, upon an investigation of the evidence, that the patent discloses no invention and consists of mere aggregations; but any patentee has the right to bring a suit in another circuit against alleged infringers, and prior decisions in other circuits are not necessarily decisive. Mast & Co. v. Stover Co., 177 U. S. 485, 20 Sup. Ct. 708, 44 L. Ed. 856. In actual practice, of course, great weight is usually given to a previous decision on the merits on the same patent; but, as the litigation is not between the same parties, a previous decision is not res adjudicata, and if any different evidence is produced, and, indeed, if only the same evidence is produced, no court is bound to follow a previous decision by another co-ordinate court.

My conclusion, therefore, is that the demurrer should be overruled, with leave to the defendants to answer within 20 days on payment of

costs.

ELLIOTT-FISHER CO. v. UNDERWOOD TYPEWRITER CO.
(Circuit Court, S. D. New York. November 1, 1909.)

PATENTS (§ 95*)—Persons ENTITLED TO PATENTS-ASSIGNEES OF INVENTORS.
A patent may be issued to an assignee of an inventor through mesne
assignments, provided they are first entered of record in the Patent Of-

fice.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 127; Dec. Dig. § 95.*]

In Equity. Suit by the Elliott-Fisher Company against the Underwood Typewriter Company. On motion by defendant respecting proofs. Denied.

Robert Fletcher Rogers, for complainant.
Briesen & Knauth, for defendant.

LACOMBE, Circuit Judge. I find no authority for the proposition that patents may not be issued to an assignee, who holds through mesne assignments from the inventor, provided such assignments are first entered of record in the Patent Office. So to hold would require a very strained and unreasonable construction of section 4895, Rev. St. (U. Š. Comp. St. 1901, p. 3385). That section leaves the discretion with the Patent Office, which may issue to the inventor or to the assignee; and no doubt where there are conflicting assignments the office will avoid passing on questions of title by issuing to the inventor. But For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

it does not appear that the assignments in this case, which were recorded before issue, were conflicting assignments.

Nor is there any difficulty about proving the assignments, if notice to produce and subpoena duces tecum fail to secure the originals, the copies recorded in the Patent Office would be competent.

Motion to require complainant to prove them as part of his prima facie case is denied.

TOLMAN BROS. MFG. CO. v. SILBERSTEIN.

(Circuit Court, S. D. New York. December 16, 1909.)

PATENTS (§ 312*)-SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION.

Evidence held insufficient to warrant the granting of a preliminary injunction against infringement of an unadjudicated patent, or to restrain alleged unfair competition.

[Ed. Note. For other cases, see Patents, Dec. Dig. § 312.*

Grounds for denying temporary injunctions in patent infringement suits, see note to Johnson v. Foos Mfg. Co., 72 C. C. A. 123.]

In Equity. Suit by the Tolman Bros. Manufacturing Company against Albert L. Silberstein. On motion for preliminary injunction. Application denied.

Alan M. Johnson, for complainant.
A. B. Keve, for defendant.

NOYES, Circuit Judge. The patent in suit has never been adjudicated, and the defendant asserts that he intends to contest its validity. The affidavits and earlier patents show that there is a serious question as to its novelty. The proof as to long-continued acquiescence is not sufficient. Regarded as a suit to restrain the infringement of a patent, the case is too doubtful to warrant the issuance of a preliminary injunction.

If it be possible to regard the suit as one to restrain unfair competition, the same conclusion must be reached. The affidavits fail to show imitation of the complainant's article in unessential particulars. The application for a preliminary injunction is denied.

BOISE CITY IRRIGATION & LAND CO. v. TURNER et al.
(Circuit Court, D. Idaho. July 6, 1905.)

WATERS AND WATER COURSES (§ 254*)—IRRIGATION COMPANIES-VALIDITY OF
CONTRACTS.

Private contracts between an Idaho irrigation company and landowners, granting water rights at fixed prices, made in good faith prior to Act Idaho March 7, 1895 (Acts 1895, p. 174), enacted pursuant to article 15 of the state Constitution, which contracts were valid when made, were not affected by such act or subsequent legislation, and remain valid and enforceable.

[Ed. Note.--For other cases, see Waters and Water Courses, Cent. Dig. § 311; Dec. Dig. § 254.*]

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

In Equity. Suit by the Boise City Irrigation & Land Company against Jane E. Turner and others. Ón demurrer to bill. Demurrer On sustained.

Wood & Wilson, for complainant.

W. E. Borah, for defendants.

BEATTY, District Judge. The complainant is the owner of the irrigating system described in the complaint. While the Central Canal & Land Company owned the system, it sold on September 2, 1889, two water rights, to cover 159.65 acres, which now belong to defendant Ash; that on June 15, 1889, it sold another water right, covering 80 acres of land, and on June 10, 1891, another, covering another 80 acres, both of which rights are now owned by defendant Briggs; that on said last date it sold two other water rights, for 160 acres, which are now owned by defendant Turner; that on May 10, 1892, the Boise City & Nampa Irrigation Land & Lumber Company, which had become the owner of said system, sold 1.6 water rights, covering about 160 acres of land, which rights are now owned by defendant Kampner. Such sales were evidenced by an instrument in writing termed “an indenture and agreement," a copy of which is attached to the brief of complainant's counsel, but is not made a part of the complaint. It is, however, accepted as a correct copy of the instrument of conveyance. The complainant now asks that, in view of the constitutional provisions and the statutes in pursuance thereof, the said sales or contracts be set aside.

The Constitution (article 15) provides, by section 1, that:

"The use of all waters now appropriated, or that may hereafter be appropriated, for sale, rental, or distribution, also of all water originally appropriated for private use, but which after such appropriation has heretofore been, or may hereafter be. sold, rented, or distributed, is hereby declared to be a public use, and subject to the regulation and control of the state in the manner prescribed by law."

By section 2:

"The right to collect rates or compensation for the use of water supplied to any county, city, or town, or water district, or the inhabitants thereof, is a franchise and cannot be exercised except by authority of and in the manner prescribed by law."

And by section 6:

"The Legislature shall provide by law the manner in which reasonable maximum rates may be established to be charged for the use of water sold, rented or distributed for any useful or beneficial purpose."

The Constitution was adopted August 6, 1889, ratified by the people November, 1889, and approved by Congress July 3, 1890 (Act, July 3, 1890, c. 656, 26 Stat. 215). The first legislative act in pursuance of the Constitution for the regulation of water rates was March 7, 1895 (Acts 1895, p. 174).

The complainant claims that the disposal of water for irrigation purposes is governed alone by the Constitution and laws, and that all contracts whenever made concerning the same, between the parties, may be held void and subject to the regulations prescribed by law. With

out further discussion, it may be conceded that, as to all contracts made since the Constitution and laws became operative, such claim is correct; but the defendants maintain that contracts made prior to the enactment of such laws and the Constitution are not controlled thereby and are valid. I can but briefly refer to some of the authorities cited by counsel.

In Lanning v. Osborne (C. C.) 76 Fed. 319, it is held that water must be distributed according to law, and not according to contract between the parties; but it appears that the provisions of the California Constitution relating to this subject were adopted in 1879, and the act of the Legislature in pursuance of the constitutional provisions was enacted March 12, 1885, while it was not until 1887 to 1888 that the contract between the parties was made.

In Boise City Irrigation & Land Co. v. Clark, 131 Fed. 416, 65 C. C. A. 399, the only question before the court was the application of the irrigation company to have annulled an order of the commissioners fixing the maximum rate. There are statements in the decision which tend to support complainant's position, although this question is not directly involved; but it must be noted that the court acted upon the understanding that the "water in question was appropriated by the predecessors in interest of the appellant under and in pursuance of the constitutional and statutory provisions of the state," which statement is in effect repeated, so that the court acted upon the idea that all contracts involved were subsequent to the Constitution and the laws in pursuance of it.

In San Diego Flume Co. v. Southern, 90 Fed. 164, 32 C. C. A. 548, it appears that while the Constitution and laws regulating the use of water were in force, and before any steps had been taken under such laws, a contract was made between the parties. Subsequently a rate was fixed in pursuance of the law. As I understand the ruling, it is that, until a rate is fixed by law, the contract between the parties is valid; but in this case, while a rate had been fixed by law since the contract was made, neither party asked the enforcement of the legally fixed rate, but one party desired the cancellation of the old contract, while the other asked its enforcement, and the court enforced it. It does not directly decide the question involved here.

It appears in Stanislaus County v. San Joaquin Irrigation Co., 192 U. S. 201, 24 Sup. Ct. 241, 48 L. Ed. 406, that in 1862 a law was enacted allowing water companies to so charge as to make not less than 18 per cent. on their investment, under which law the company incorporated, built its works, and furnished water until 1896, when the board of supervisors passed an ordinance changing the rate to not less than 6 nor over 18 per cent. The water company asked the annulment of such ordinance, which the court refused, and held that the law under which the company incorporated was subject to amendment, which should bind all parties, and that the company incorporated under this law, did so with notice that it could be amended; but it is variously suggested that a law so framed as not to imply the power of such amendment as to change contracts made under it would protect such

contracts.