Statement of the case. "The claim of the Sherwood patent was, for making the case of door-locks and latches double-faced, or so finished that either side may be used for the outside.' The arrangements of the internal parts of the lock, and devices necessary to such a lock, are set forth in the specification. They were rather complex, and required that, in order to change the lock from a right-hand to a left-hand lock, it should be opened and some change be made in the position and arrangement of the internal parts. For the purpose of the present discussion it is unnecessary to describe these devices. The name 'Janus-faced' locks was given to this machine to distinguish it from others which had not its peculiar qualities. "Now, it is evident, that although the patent of Sherwood may be said to be for an improvement in the manufacture of locks, a well known implement or machine; nevertheless, the lock contrived by him was a new and distinct species, having certain qualities differing from all other locks; that the Janus-faced lock is a specific article, (although of the genus lock,) known in the market, having peculiar value; and that the value of the monopoly granted by the patent consisted in the exclusive right to manufacture this peculiar machine without any competition, and have all the profits of such a monopoly. The respondents have made large gains by trespassing on the rights of the complainants. The profits they made by this trespass justly belong to the true owner. They have partaken equally with the complainants in the profits of the monopoly granted to them alone, without license, and in defiance of their rights. The only measure of the redress to which the complainants are entitled is an account of the actual profits made by respondents. The machine being a unit-a specific article well known in the market, having peculiar value because of the patentee's discovery or invention the attempt to arbitrarily divide the profits of the monopoly of the whole machine among its parts. is without precedent, and receives no countenance from the case of Seymour v. McCormick, 16 How., 480, which has been relied on for an opposite idea." The court accordingly confirmed the master's report giving to the complainants the whole profits, $13,282.92; and decree was entered accordingly. Appeal to this court now brought before it— 1. The originality of Sherwood's invention as set forth (ante, p. 27) in his first claim-the claim, to wit, in these words: "What I claim as my invention, and for which I desire an exclusive patent, is making the cases of door-locks and latches double-faced, Opinion of the court. or so finished that either side may be used for the outside, in order that the same lock or cased fastening may answer for a right or left-hand door, substantially as described." 2. The correctness of the idea of unity in machines as held, apparently, from this record, by the court below. The case was argued by Mr. Gifford for the appellant, and by Messrs. Browning and Bakewell, contra. Mr. Justice MILLER delivered the opinion of the court: It is the first claim as set forth which defendants charge to be invalid for want of novelty, and in this we think they are sustained by the testimony. Indeed it may be doubted if the making of the case which incloses the internal works of the lock, with two faces just alike, and so well finished off in point of style that either side may be presented outwards, is a matter which could be patented, if no locks with such cases had ever been made before. But we are not called on to decide this point, and therefore pass it without further comment. Several locks were produced on the trial below, and were shown to us here-being made exhibits by the record-which we are satisfied are the same in principle as the double faces of the Sherwood lock. Two of these locks are from the gates of the New York city hall. They are cased both sides alike, inclosing the internal works completely, and are so finished that one side may be presented outward as well as the other, and the locks can be applied to a door swinging from right to left, or from left to right. Locks from the city hospitals, having the double-faced case, both sides alike, have also been produced, and one from the entrance gate of St. Mark's church. A lock from the custom-house is shown, which has the double-faced case, both sides alike, and which, by being turned laterally, can be used for a door opening either to the right or left, without even turning the keyhole upside down. These locks are all proven to have been in use several years before Sherwood set up any claim to his invention. They are taken from the most public places in the great commercial city of the Union. These facts are incompatible with the claim of novelty on the part of Sherwood for this part of his patent. As to the two remaining claims in the schedule accompanying the patent, it appears clearly that they were never infringed by defendants. In fact no locks were ever made with the particular internal arrangements as to bolts, latches, &c., specified in Sherwood's patent, except one or two by Sherwood. Opinion of the court. Very shortly after he obtained his patent, one Calvin Adams made an improvement upon it, which entirely superseded the use of the specific internal arrangement claimed by Sherwood in his invention. Combining this improvement with the double-faced case of Sherwood, Adams made a lock which has ever since been known as the Janus-faced lock, and which is the lock manufactured by complainants, of whom Mr. Adams is one. It is not shown by any proof in the case that defendants ever used any part of Sherwood's patent, except the double-faced casing. Nor is it seriously claimed in argument that they did. But it is urged that this double-faced case, when used in connection with a latch or bolt and keeper, susceptible of such an arrangement that it may be placed upon a door opening either to the right or left, constitutes a unit, and the real invention of Sherwood, which is infringed by the defendants. This mode of viewing the matter cannot be admitted. Sherwood claims that he is the inventor of three distinct parts going to make up his lock, which thus made up answers a certain purpose, namely, a lock capable of being applied indifferently to a door opening from the right or left. Two of these claims have been long since superseded by other improvements, and abandoned by everybody, and have never been used by the defendants. The other claim which they have used is found to be invalid for want of novelty. What is left of the Sherwood patent? It is clear that no part of the patent which is valid has been used by defendants, and they cannot be made infringers by an argument that mingles the valid and invalid parts of a patent, and calls it a unit; and then claims that defendants are infringers because they have used one part of this unit, although it was a part as to which the patent is void. It therefore appears that, in point of fact, the defendants have not infringed the Sherwood patent, and if we were unembarrassed by the pleadings, we should dismiss the bill with costs. But the defendants have admitted in their answer that they did make locks as described in Sherwood's patent, and when they afterwards asked leave of the court to retract that admission and deny the infringement, the court refused such permission. This request was made after the issue was made up, after much testimony had been taken, and its object was to deny a fact previously admitted under oath. It was a matter in the discretion of the Circuit Court, and we are not disposed to review its action on that subject here, under these circumstances, if, indeed, it can be done under any. An effort has been made by counsel to show that this admission Statement of the case. has been waived, by the act of plaintiffs, in going into the proofs, and otherwise treating it as an open question. But this would violate a principle of universal application, both in proceedings at common law and in chancery, to wit, that the proofs must correspond with the allegations. It would be subversive of all sound practice, and tend largely to defeat the ends of justice, if the court should refuse to accept a fact as settled which is distinctly alleged in the bill and admitted in the answer. Crockett v. Lee, 7 Wheaton, 522. The fact that the defendants did manufacture and sell locks of the character of those patented by Sherwood, must be accepted as established in this case by the pleadings. The admission, however, need go no further than its terms necessarily imply. The language of the admission is satisfied by assuming that the smallest number of locks were made, consistent with the use of that word in the plural, and with the use by defendants of any part of the patent which is valid. The Circuit Court, by its decree, ordered an injunction, restraining defendants from making, using, and vending said invention, or any part thereof, mentioned in said patent, and the payment by defendants to plaintiffs of $13,282.92 profits made by them. The result of the views we have expressed is, that this decree must be reversed, and the injunction modified so as to restrain the defendants from using any part of the Sherwood patent, except that embraced in the first claim of invention mentioned in the schedule attached to said patent, and a decree rendered for a nominal sum of one dollar for profits. The appellants in this court must recover their costs. DECREE ACCORDINGLY. GODFREY V. EAMES. (1 Wallace, 317.) 1. If an applicant for a patent choose to withdraw his application for a patent, intending, at the time of such withdrawal, to file a new petition, and he accordingly does so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the seventh sections of the patent acts of 1836 and 1839. CLIFFord, J., dissenting. 2. The question of the continuity of the application is a question to be submitted to the jury. THE patent act of 1836 provides, (§ 7, 5 Stat. at Large, 119,) that on the filing of an application for a patent, "the Commissioner shall make or cause to be made an examination of the alleged Statement of the case. new invention or discovery, and if on any such examination it shall not appear to the Commissioner that the same had been in public use or on sale with the applicant's consent or allowance prior to the application, it shall be his duty to issue a patent therefor, but whenever on such examination it shall appear to the Commissioner that the applicant was not the original and first inventor or discoverer thereof, or that what is claimed as new had before been invented or discovered, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of the invention. or discovery which is new. "In every such case," the act goes on to say, "if the applicant shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back $20, part of the duty required by this act, on filing a notice in writing of such election in the Patent Office. But if the applicant in such case shall persist in his claim for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, in manner aforesaid, and if the specification or claim shall not have been so modified, as in the opinion of the Commissioner shall entitle the applicant to a patent, he may on appeal, and upon. request in writing, have the decision of a board of examiners," &c. A subsequent act-an act of 1839-(§ 7, 5 Stat. at Large, 354,) provides that those who shall have purchased, sold, or made the thing patented, "prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use and vend to others to be used" the same; and that "no patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid, except on proof of abandonment of such invention to the public, or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent. With these enactments in force, Godfrey, on the 31st January, 1855, filed an application for a patent for boot-trees. This application the Commissioner, on the 17th May, 1855, rejected for want of novelty. On the 24th April, 1857, within the time required by the rules, Godfrey submitted his case again. The old application was withdrawn, and a new one filed, simultaneously; the withdrawal fee of $20 going to make part of the new application fee of $30, and not in fact being received by the applicant. These different applications were made through different attorneys, and the |