Whitney v. Boston & A. R.

Nelson, District Judge. Defendants’ motion to withhold a decree in favor of the plaintiff until the plaintiff shall have disclaimed the 1st, 4th, 5th, 6th, and 7th claims of his patent is denied, upon the ground that, assuming, as the defendants contend, that the evidence in the case proves that said claims cover what had been in public use and on sale for more than two years prior to the plaintiff’s application for his patent, yet, since it appears that the plaintiff was the original and first inventor of the parts of his invention secured by said claims, he is therefore not required by Rev. St. § 4922, in order to entitle himself to a decree for an 73 infringement of the second and third claims of his patent, to make disclaimer of the other claims. Manufacturing Co. v. Sprague, 123 U. S. 249, 8 Sup. Ct. Rep. 122; Telephone Co. v. Spencer, 8 Fed. Rep. 512; Walk. Pat. § 197. The plaintiff, having waived his right to an account, is entitled to a decree for an injunction against the infringement of the second and third claims of the patent, with costs, and it is so ordered.