Page:Federal Reporter, 1st Series, Volume 4.djvu/932

 918 PEDEBilL BEPOBTSa. �ity, and the sufficiency of its specification, and that if he bas made "said shoes" — that is, shoes embodying the patented invention, or any substantial and material part tbereof — he cannot deny infringement. This last seems a oontradictory and insensible stipulation, for the very question of infringe- ment depends upon -whether the defendant has made "said shoes." That, however, is not the question at present. After- wai'ds, there is the mutual stipulation, also numbered 5, quoted in the plea, that in case of re-issue the grant shall remain good, and the stipulations of the parties shall be bind- ing upon them in the same manner and to the same estent as if the re-issue had never been obtained. �The defendant contends that, although he is liable to pay royalties under the re-issue, it is only to the same extent and in the same cases, in ail respects, as if the single claim of the original patent were the only claim of the re-issued patent. My impression is that the fifth mutual agreement means that the parties are to remain bound under the re-issue sub- stantially as if that had been the original patent. The idea, if that be it, is awkwardly expressed. Instead of saying, as if the re-issue had never been obtained, itshouldbe, as if it had never been necessary to obtain it. But it seems very improb- able that the parties should import into a re-issue a clàim which is cancelled and of no effect, and, indeed, which has no existence except by their stipulation. The re-issue is pre- sumed to be for the same invention. If not, it is void. Per- haps the defendant may be estopped to say it is void; but, as he is bound only for "said shoes," he may, perhaps, be per- mitted to show that the shoes he is asked to aceount for do not embody the invention, though he cannot say that the re-issue. does not. This will depend upon the construction of his fifth agreement. If the re-issue should turn out to be for the same intention, I doubt very much whether the defendant will escape payment if he has used that invention, though it may have baen imperfectly claimed at first. In other words, I doubt if the stipulation refers to the claim of the patent as neeessarily and without possible amendment embodying the ����