signifies a matter of fact that is not of record, and is not given by statute special effect.

§ 179. Defenses of statutes. In general. Defenses founded upon matter that is made a bar by statute rests upon the statute of limitations, the statute of frauds, or less frequently some other statute. An act of Congress ratifying the construction of an otherwise illegal structure will, if constitutional, abate a suit for an injunction against the further maintenance of the structure, although not set up by plea, answer, or demurrer.1 Congress has enacted statutes of limitations in certain civil and criminal

cases.

1

§ 180. Statute of limitations to suits for infringement of patents. "In any suit or action brought for the infringement of any patent, there shall be no recovery of profits or damages for any infringement committed more than six years before the filing of the bill of complaint or the issuing of the writ in such suit or action, and this provision shall apply to existing causes of action." Less than six years' delay will rarely bar a suit to enjoin the infringement of a patent; 2 although it may prevent interlocutory relief. The fact that the owner of a patent permitted a suit for its infringement to be dismissed before trial without prejudice is not such laches as to bar a second suit against the same defendant when the statutory period has not expired, but a delay before suit by the owner of a patent, of seven, or of nine years, after knowledge of an infringement was held to be such laches as to defeat him, although in the latter

§ 179. 1 The Clinton Bridge, 10 Wall. 454, 19 L. ed. 969. But see Griffing v. Gibb, 2 Black, 519, 17 L. ed. 353; Liverpool, N. Y. & P. S. S. Co. v. Comrs. of Emigration, 113 U. S. 33, 38, 28 L. ed. 899, 900. $ 180. 129 St. at L. 694. 2 Ide v. Trorlicht, D. & N. Carpet Co., C. C. A., 115 Fed. 137, 147. 3 Infra, §§ 277, 294.

4 Welsbach Light Co. v. Cohn, 181 Fed. 123.

5 General El. Co. v. Yost Electric Mfg. Co., 208 Fed. 719,

6 Hall v. Frank, 195 Fed. 946. In Layton Pure Food Co. v. Church & Dwight Co., C. C. A., 32 L.R.A. (N.S.) 274, 182 Fed. 35, it was held that a delay for the same period in a trademark case did not deprive the complainant of the right to an injunction, although the accounting must be limited to the time subsequent to the commencement of the suit.

case he claimed that his partner in the ownership of the patent had prevented the previous institution of the litigation."

A delay of six years with failure to mark the patented articles was held to bar the owners claim for damages and claims, but not his right to an injunction although he had known of the infringement during the whole time.

Where the complainant duly notified the defendant that the latter was infringing its trade-mark and threatened suit, subsequent delay for eight years was held to be no laches when the defendant had not changed its position in consequence.

It has been held: that the Federal statute of limitations need not be pleaded to bar the collection of profits or damages for infringement of patents more than six years before the suit."

§ 180a. Statute of limitations to applications for patents. "All applications for patents shall be completed and prepared for examination within one year after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable." It has been held that this requires a bill in equity to compel the issue of a patent, to be filed within one year after the refusal thereof.2

7 For laches which will not bar a suit for an accounting in patent and trade mark cases. A. R. Mosler & Co. v. Lurie, C. C. A., 209 Fed. 364; Drum v. Turner, 219 Fed. 188; Closez & Howard Mfg. Co. v. J. I. Case Threshing Mach. Co., 216 Fed. 937. See Wm. A. Rogers v. H. O. Rogers Silver Co., 237 Fed. 887.

8 Aunt Jemima Mills Co. v. Rigney & Co., C. C. A., 247 Fed. 407. For laches which will defeat a suit for an accounting in patent and trade mark cases, see: Valvoline Oil Co. v. Havoline Oil Co., 211 Fed. 189; Wright's Automatic T. P. Mach. Co. v. American T. Co., 220 Fed. 163; Vacuum Cleaner Co.

v. Innovation Electric Co., Inc., 234 Fed. 942; Allen v. Walker & Gibson, 235 Fed. 230, 233; Ashley v. Samuel C. Tatum Co., 240 Fed. 979; O. & W. Thum Co. v. Dickinson, C. C. A., 245 Fed. 609; Hills v. Hamilton Watch Co., 248 Fed. 499.

9 Peters v. Hanger, C. C. A., 127 Fed. 820; Johnson v. Roe, 1 Fed. 692; Etting v. Marx's Ex'r, 4 Fed. 673. But see Pratt v. Northam, 5 Mason, 95.

§ 180a. 1 U. S. R. S. § 4894, as amended 29 St. at L. 692, § 4, 5 Fed. St. Ann. 488, Comp. St. 3384, Pierce Fed. Code, § 8760.

2 Westinghouse El. & Mfg. Co. v. Ohio Brass Co., 196 Fed. 518.

§ 180b. Statutes of limitations to copyright suits. The Copyright Act of March 4, 1909 provides: "That no criminal proceedings shall be maintained under the provisions of this Act unless the same commenced within three years after the right of action arose."1

The Revised Statutes provide: "No action shall be maintained in any case of forfeiture or penalty under the copyright law, unless the same is commenced within two years after the cause of action has arisen. Whether this section is still in force has not been decided.

12

This statute does not apply to a bill in equity for an injunction and damages,3 nor to an action for the statutory damages for the violation of a dramatic copyright. Actions at common law for damages under the copyright law are subject to the State statutes of limitations.5 Suits in equity for an injunction and damages or profits, are not subject to any statutes of limitation. They may, however, be barred by laches."

When the statute imposing a penalty was in force each printing from plates created a new cause of action.8

Where within a month after the decision of a Circuit Court of Appeals giving a narrow construction to a patent, the patentee presented the matter to the Patent Office, and on the advice of that office filed in the court a petition for rehearing, and later a petition for writ of certiorari, which latter was denied fourteen months after the original decision. Seven months thereafter the patentee applied for a reissue of his patent with a written description. Held, that he was not guilty of such laches, as would invalidate his reissued patent. Ashley v. Samuel C. Tatum Co., 240 Fed. 979.

$ 180b. 136 St. at L. 1075, § 39, Pierce Fed. Code Supp., § 1589.

2 U. S. R. S., § 4968, 2 Fed. St. Ann. 271, Pierce Fed. Code, § 8861.

3 Greene v. Bishop, 10 Fed. Cases 576, 1 Clifford 186.

4 Brady v. Daly, 175 U. S. 148, 20 Sup. Ct. 62, 44 L. ed. 109. 5 Ibid, but see § 181, infra. 6 See infra, § 181, Hale on Copyright and Literary Property, 13 Corpus Juris. 1198.

7 Tinsley v. Lacy, 32 L. J. Ch. 535, 538; Robinson v. Wilkins, 8 Ves. Jr. 224; Platt v. Button, 19 Ves. Jr. 447; Campbell v. Scott, 11 Sim. 31, 34 Eng. Ch. 31; Pitman v. Hine, 1 T. L. R. 39; Rundel v. Murray Jac. 311, 4 Eng. Ch. 311; Bailey v. Taylor, 1 Russ & M. 73, 5 Eng. Ch. 73, Taml. 295, 12 Eng. Ch. 395; Mawman v. Tegg, 2 Russ. 385, 3 Eng. Ch. 385; Buxton v. James, 5 De. G. & Sm. 80; Lewis v. Chapman, 3 Beav. 133, 43 Eng. Ch. 133; Mexborough v. Bower, 7 Beav. 127, 29 Eng. Ch. 127, Hogg v. Scott, L. R., 18 Eq. 144.

8 West Pub. Co. V. Edward Thompson Co., 176 Fed. 833. 838.

§ 180c. Statute of limitations to vacation of patents for lands. The Act of March 3, 1891, provides:

"Suits by the United States to vacate and annul any patent heretofore issued shall only be brought within five years from the passage of this act, and suits to vacate and annul patents hereafter issued shall only be brought within six years after the date of the issuance of such patents."1

This statute applies to all suits by the Government to vacate and annul patents to public lands issued under any laws of the United States.2 It is strictly a statute of limitations and does not create the right to maintain a suit to set aside a patent. lapse of the statutory period of time gives to the patent the same effect against the United States that it would have had if it had been originally valid.*

The

The statute does not apply to suits by the United States praying a decree that the patentees or their successors hold lands for the benefit of others.5 Nor to suits brought on behalf of Indian tribes issued by mistake for lands within their reservations. Nor to suits by the United States to cancel trust patents for allotments of reserved Indian lands. Nor to suits to quiet the title to public land upon the ground that no patent thereto has ever been issued. Nor to recover the value of lands, a patent to which has been issued by mistake damages for such a fraud.11

100 C. C. A., 303 [mod. 169 Fed. 833].

$180c. 1 Act of March 3, 1891, c 559, 26 St. at L. 1093.

2 U. S. v. Norris, C. C. A., 222 Fed. 14.

3 U. S. v. Koleno, 226 Fed. 180. 4 U. S. v. Chandler Dunbar. Water Pow. Co., 209 U. S. 447, 450, 28 Sup. Ct. 579, 52 L. ed. 881; U. S. v. New Orleans Pac. Ry. Co., C. C. A., 235 Fed. 833, 837; U. S. v. Whited & Wheless, C. C. A., 232 Fed. 139, reversed U. S.

5 U. S. v. New Orleans Pac. Ry. Co., 248 U. S. 507, 518.

6 Northern Pac. Ry. Co. v. U. S., C. C. A., 191 Fed. 947.

or fraud,10 nor to recover

7 La Rogue v. U. S. 239 U. S. 62 affirming 198 Fed. 645.

8 U. S. v. Lee Wilson & Co., 214 Fed. 630.

9 U. S. v. Jones, C. C. A., 242 Fed. 609; Union Coal & Coke Co. v. U. S., C. C. A., 247 Fed. 106.

10 U. S. v. Whited & Wheless, 246 U. S. 552, reversing C. C. A., 232 Fed. 139; U. S. v. Jones, C. C. A., 242 Fed. 669.

11 U. S. v. Jones, 218 Fed. 973; Bistline v. U. S., C. C. A., 229 Fed. 546; Pitan v. U. S., C. C. A., 241 Fed. 364.

In case of fraud the statute is suspended until its discovery.12 The Government should, however, alleged and prove specific facts showing that its failure to discover the cause of action within the statutory period was due to concealment by the adverse party or because the fraud was of a self concealing nature and that the government was not guilty of negligence or want of diligence.13 Running of the statute is stopped by the filing of the bills to set aside the patents and the issue and delivery for service of the subpoena provided the Government shows reasonable diligence in making service of the same thereof.14 The commencement of the suit against the patentee does not suspend the running of the limitations in favor of a prior grantee until he is made a party.15 Service of process in such a suit against an individual stops the running of the statute against a corporation which he has secretly formed, of which all the capital stock is owned by him, and the existence of which was unknown to the officers of the Government.16

§ 180d. Statute of limitations to suits upon official bonds. "If, upon the statement of the account of any official of the

12 Exploration Co. v. U. S., 247 U. S. 435, affirming C. C. A., 235 Fed. 110, D. C., 225 Fed. 854. See C. C. A., 203 Fed. 387, 190 Fed. 405; Linn & Lane Timber Co. v. U. S., C. C. A., 203 Fed. 394; U. S. v. Southern Pac. Co., 225 Fed. 197; U. S. v. Albright, 234 Fed. 202.

13 U. S. v. Puget Sound Tr. Lt. & Power Co., 215 Fed. 436. For cases where it was held that this was shown, see U. S. v. Southern Pac. Co., 225 Fed. 197; U. S. v. Booth-Kelly Lumber Co., 246 Fed. 970; U. S. v. Diamond Coal & Coke Co., C. C. A., 254 Fed. 266, 267.

"There is no material averment in it of how and when the plaintiff first came to a knowledge of the matters alleged in the bill. The averment on that subject fails to state any pertinent or material fact except that the plaintiff and all its officers having authority in the

premises were ignorant of the fraud until and except that in November, 1916, a special agent of the Interior Department filed a report on the entries on which complaint is made. But the bill contains no statement of the facts this report revealed, of who discovered them, when they were discovered or how or why the special agent made the report, or of any other material facts tending to show that the knowledge of the fraud could not have been discovered as well in 1904 as in 1916."

14 Linn & Lane Timber Co. v. U. S., 236 U. S. 574.

15 U. S. v. Cooper, 217 Fed. 846; U. S. v. Norris, C. C. A., 222 Fed. 14, where it was sought to bring in the grantee by an amended bill. See § 131 supra.

16 Linn & Lane Timber Co. v. U. S., C. C. A., 196 Fed. 593.