Bankers' Utilities Co. v. Pacific Nat. Bank

The appellees present a petition for modification of the mandate sent down by this court in the above-entitled cause; the court having found that the deeree of the court below dismissing the suit was eiToneons, and that claim 6 of the patent sued upon was valid. It is now represented that the mandate was erroneous, in allowing the appellants costs on the appeal, and that the case comes within the provisions of section 973, Rev. Stat. (28 USCA § 821; Comp. St. § 1614), which provides in substance that if, in a suit for infringement of a patent, it appears that the patentee has made unsustainable claims, no costs shall bo recovered unless a disclaimer of such claims has been entered at the Patent Office before the suit was brought.

In the opinion this court said that the appellants’ rights were fairly defined in claim 6, and further said: “In so far as the other claims may be construed to be of broader scope, they are held to be void.” We may pass by the question whether, in so ruling, the said specified claims were held to be totally void, or void only in part, for, as we regard the statute which is here invoked and the established practice thereunder, the failure to file a…