# Marsh v. Nichols Shepherd Company

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United States Supreme Court
128 U.S. 605
Marsh v. Nichols Shepherd Company
This is a suit in equity for the infringement of an alleged patent of the United States, which, it is averred, was obtained by the complainant Marsh and his assignee and co-complainant, Lefever, for a new and useful improvement in steam-engine valve-gear, with a prayer that the defendant corporation may be required to account for and pay over to the complainants the profits acquired by it, and damages sustained by them by its unlawful acts, and be enjoined from further infringement. The bill sets forth that the alleged patent was obtained on the 28th day of December, 1880, and was in due form of law, under the seal of the patent-office of the United States, signed by the secretary of the interior, countersigned by the commissioner of patents, and dated on that day and year. The answer of the defendant to these allegations is that it knows nothing of the issue of the patent, except as informed by the bill or by hearsay, and therefore neither admits nor denies them, but leaves the complainants to make such proofs thereof as they may deem advisable. A replication having been filed to the answer, proofs were taken, among which there was put in evidence an instrument in the form of a patent of the United States, purporting to be signed, 'A. BELL, Acting Secretary of the Interior,' and countersigned and sealed as alleged in the bill. By stipulation of the parties certain facts were admitted with reference to this instrument, and allowed to be considered, 'so far as relevant, competent, or material, on any motion or at any stage of the cause, including final hearing.' The facts thus admitted were substantially these: That the instrument was received from the patent-office by the complainants Marsh and Lefever (the parties named therein as patentees) on or about January 2, 1881, in all respects in the same condition as it now is, save that the words 'A. BELL' were not thereon where they now appear; that the signature to it of E. M. Marble, commissioner of patents, and the seal of the patent-office, are genuine; that neither of the complainants nor their counsel knew of the omission of the signature of the secretary of the interior to the instrument, but supposed it was in all respects regular, their attention never having been called to the same until on or about February 12, 1882, long after the commencement of the present suit; that on or about February 17th following it was sent by the solicitor of the complainants to the patent office at Washington, accompanied by a request of the complainants Marsh and Lefever to have the mistake corrected; and that on or about February 24th it was returned to the solicitor signed, 'A. BELL, Acting Secretary of the Interior,' but without any other change. A letter dated April 28, 1882, from E. M. Marble, who was the commissioner of patents when the instrument was issued, was also admitted in evidence. The letter set forth the various steps taken by Marsh and Lefever to obtain a patent for the invention claimed, and by the officers of the patent-office in preparing, executing, and delivering it to them; and shows that every requirement of the law and of the regulations of the patent-office was complied with when the instrument was issued, except the affixing to it of the signature of the acting secretary of the interior, and that its omission, as established by the history and record of the case, was purely accidental, and probably was caused by the instrument being inadvertently laid aside or withdrawn from before the acting secretary while he was engaged in signing patents. The circuit court held that the signature of the secretary of the interior was essential to render the instrument operative as a patent of the United States for the invention claimed; that until thus signed it was not only a defective instrument, but was entirely void; and therefore that the suit could not be maintained; and it dismissed the bill. 15 Fed. Rep. 914. Its decree was entered on the 16th of April, 1883, and from it the complainants on the 26th of February, 1885, took an appeal to this court. Subsequently, and on the 3d of February, 1887, congress passed an act for the relief of the patentees, reciting in its preamble the issue to them on the 28th of December, 1880, of the letters patent mentioned in due form of procedure, except that by accident or mistake they were not signed by the secretary of the interior, and that they were signed by the then acting secretary on February 24, 1882; and declaring as follows: 'That the letters patent named in the preamble of this act are hereby, and by this act, made legal, valid, complete, and operative, in law and equity, from the 28th day of December, 1880, to the same extent and for the same term that the same would have been legal, valid, complete, and operative if the signature of the secretary of the interior had, at the time of the supposed issue of said letters patent on the day aforesaid, been placed thereon, and the omission of said signature thereon had not occurred: provided, however, that the provisions of this act shall not be held or construed to apply to or affect any suits now pending, nor any cause of action arising prior to its passage.' 24 St. 378.
R. A. Parker and O. D. Conger, for complainants.
[Argument of Counsel from pages 607-609 intentionally omitted]
Chas. F. Burton, for defendant.
FIELD, J.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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