b. BY WHOM AND IN WHAT NAME BROUGHT. A bill to obtain the cancellation of a patent must be brought in the name and on behalf of the United States by the Attorney-General or the proper district attorney. 1 c. REQUISITES OF BILL. The bill must not be multifarious,2 and, if brought to obtain the repeal of the patent on the ground of fraud, should allege the fraud with sufficient exactness. d. THE DEcree. The decree if in favor of the United States declares the patent void and directs the letters patent to be set aside or canceled, giving costs according to the general rules.4 fraud or deceit or the existence of any error on the part of the officers as to the extent of their power, or that any mistake in the instrument was sufficient to justify a decree of cancellation. Least of all was it intended to be affirmed that the courts of the United States, sitting as courts of equity, could entertain jurisdiction of a suit by the United States to set aside a patent for an invention on the mere ground of error of judgment on the part of the patent officials. That would be an attempt on the part of the courts in collateral attack to exercise an appellate jurisdiction over the decisions of the Patent Office, although no appellate jurisdiction has been by the statutes conferred." 1. It Must Appear on the Face of the Bill that the suit was brought on behalf of the United States by the proper district attorney or it will be held bad on demurrer as not stating a case which entitles the United States to the relief sought. U. S. v. Doughty, 7 Blatchf. (U. S.) 424, 25 Fed. Cas. No. 14,986. An Information in the Name of an Individual, as he is Attorney-General of the United States," and not in the name of and on behalf of the United States, is not authorized by any statute, sanctioned by any precedent, or supported by the authority of any judicial decision; and a demurrer thereto will be sustained and the information dismissed. Atty.-Gen. v. Rumford Chemical Works, 32 Fed. Rep. 608. There Is No Absolute Duty Imposed upon the Attorney-General or any United States attorney, either by the common law or by any statute, to institute a proceeding to annul a patent for an invention when applied to by any party asserting its invalidity for want of novelty. New York, etc., Coffee Polishing Co. v. New York Coffee Polishing Co., 9 Fed. Rep. 578. 2. Bill Assailing Two Patents. — A bill for the repeal of patents because of fraud in their procurement is not objectionable for multifariousness because it assails two patents, issued nearly a year apart, where the patents were issued to the same parties, re. lated to the same subject, and were used in the same operation, the later patent being for an improvement upon the invention of the earlier one. U.S. v. American Bell Telephone Co., 128 U. S. 315. 3. Allegation of Fraud. - In a bill to procure the repeal of a patent for fraud in obtaining it, it is sufficient to allege that the patentee knew that he was not the first inventor and that his efforts to procure the patent were fraudulent, because he was aware that he was obtaining a patent to which he was not entitled in law or in equity. All the evidence which may be adduced to prove fraud need not be recited in the bill. It is sufficient if the main facts or incidents which constitute the fraud be fairly stated. U. S. v. American Bell Telephone Co., 128 U. S. 315. 4. Fraud Clearly Established. - Before the government is entitled to a decree canceling a patent for an invention on the ground that it had been fraudulently and wrongfully obtained, it must, as in the case of a like suit to set aside a patent for land, establish the fraud and the wrong by testimony which is clear, convincing, and satisfactory. U. S. v. American Bell Telephone Co., 167 U. S. 224. Costs. - Where in a bill in equity to set aside a patent because of fraud in its procurement, one of the defendants is not connected with the fraud, and is a bona fide purchaser for value, the court will not on setting aside the patent decree costs against him. U. S. v. Gunning, 22 Fed. Rep. 653. Appeal to Supreme Court. The Su - Provision Is VIII. ACTION TO RECOVER PENALTY 1. When Lies. Made by Statute for an action to recover a penalty from any person who shall mark upon any article made or used by him, but patented by another, the name of such patentee or the word patent, etc., without the patentee's consent, or who shall mark upon any unpatented article the word "patent," or the like, with intent to deceive the public; one-half the penalty to go to the informer and the other half to the United States.i 2. Jurisdiction. — Under the Act of 1870 this action is to be brought in the District Court of the United States 2 for the district wherein the offense is committed, i. e., in which the stamping or marking was actually done.3 3. Parties — a. PLAINTIFF-In General. This qui tam action may be brought by any person who pleases to sue, and the plaintiff need have no special interest in the subject and need not have sustained any actual injury.4 Action in Name of Informer. The action must be brought in the name of the informer and not in the name of the United States." But it is not error to bring the action in the name of the plaintiff suing for himself as well as the United States. b. DEFENDANT. — The defendant should be the person who preme Court of the United States has jurisdiction to entertain an appeal from the Circuit Court of Appeals in a suit brought by the Circuit Court for the repeal or cancellation of a patent. U. S. v. American Bell Telephone Co., 159 U. S. 548. 1. Act July 8, 1870, § 39; Rev. Stat., $4901. See also Act Aug. 29, 1842, § 5. This Is a Qui Tam Action. - Winne v. Snow, 19 Fed. Rep. 507; Pentlarge v. Kirby, 19 Fed. Rep. 501. 2. Act July 8, 1870, § 39; Rev. Stat., $ 4901. Under Act August 29, 1842, § 5, the action was to be brought in any of the circuit courts of the United States or in any of the district courts of the United States having the powers and jurisdiction of a circuit court. See U. S. v. Morris, 2 Bond (U. S.) 27. 3. Winne v. Snow, 19 Fed. Rep 507; Pentlarge v. Kirby, 19 Fed. Rep. 501. See also Hotchkiss v. Samuel Cupples Wooden-ware Co., 53 Fed. Rep. 1018. In a District to Which Have Been Carried the articles falsely marked, this action cannot be brought. Rev. Stat., $732, providing that a suit for penalties may be brought in any one of all the districts in the country where the defendant at the time may be found, is inapplicable to a suit brought under section 4901. The particular case pro vided for by the latter provision controls and limits the general provisions. Pentlarge v. Kirby, 19 Fed. Rep. 501. The Citizenship of the Parties is immaterial. The action must be brought in the district where the offense is committed. Winne v. Snow, 19 Fed. Rep. 507. 4. Pentlarge v. Kirby, 19 Fed. Rep. 501; Winne v. Snow, 19 Fed. Rep. 507. See also Tompkins v. Butterfield, 25 Fed. Rep. 556. Any Natural Person is here meant, in accordance with the general rule that qui tam actions of this sort cannot be brought by a corporation. See U. S. v. Morris, 2 Bond (U. S.) 27. 5. U. S. v. Morris, 2 Bond (U. S.) 27. 6. Winne v. Snow, 19 Fed. Rep. 507, in which case it was held that the United States is not regarded as a party to the action, as the form of the title indicates only that it is a qui tam action prosecuted by the informer to recover a statutory penalty; and that an objection of misjoinder, in suing in the name of the plaintiff as well as the United States, is not well taken. See also Oliphant v. Salem Flouring Mills Co., 5 Sawy. (U. S.) 128, in which the action was brought by the plaintiff, who sued for himself as well as the United States and no objection was made. committed the offense, though it has been held that a corporation may be sued as a defendant. Yet this is against the general rule governing qui tam actions.2 4. Declaration or Complaint-a. RULES OF CIVIL PLEADING APPLY. The sufficiency of the declaration or complaint in the action under treatment is to be determined according to the rules applicable to civil actions, and according to the state practice in similar or analogous actions at common law, and not according to the analogies of criminal procedure.3 b. AVERMENT OF REQUISITES AND ESSENTIAL FACTS. - The declaration or complaint must be full and contain all requisite averments, and every fact essential to constitute the offense must be distinctly alleged.4 c. ALLEGATIONS NOT NECESSARY OR PERTINENT.— But those allegations which are neither necessary, pertinent, nor relevant should not be made part of the complaint." 1. Tompkins v. Butterfield, 25 Fed. clause of Rev. Stat., §4901. Russell v. Rep. 556. 2. See article PENALTIES AND PENAL ACTIONS. 3. Fish v. Manning, 31 Fed. Rep. 340. And see generally article PENALTIES AND PENAL ACTIONS. 4. Fish . Manning, 31 Fed. Rep. 340, in which case it was held that in an action for a penalty under Rev. Stat.. 4901, the statute imposing it and the section thereof must be pleaded with certainty, and that it is improper to refer to different statutes without specifying which is relied on. Complaint Showing Lack of Mark on Original Article. A complaint in an action under Rev. Stat., § 4901, for stamping the word "patented on a patented article without authority, is demurrable where it shows that the original articles manufactured by the plaintiff were not so marked as required by section 4900; and under this section, where the character of the article permits it to be stamped, it is immaterial that the cost of stamping it is so great as to render its manufacture and sale unprofitable. Smith v. Walton, 56 Fed. Rep. 499. Specific and Limited Allegation that Articles Unpatented. An allegation in a complaint that the articles marked patented were not covered by a patent granted on a certain date, or any other patent of that date, is a specific and limited allegation, and cannot be expanded by construction into a general allegation that they were unpatented, so as to bring the case within the third Newark Mach. Co., 55 Fed. Rep. 297. Negativing Exceptions. Those conditions or qualifications which the statute itself makes exceptions in constituting the offense should be negatived in the complaint. Fish . Manning, 31 Fed. Rep. 340. 5. Allegation of Deception where Patented Article Stamped. An averment in a complaint that sales were made for the purpose of deceiving the public is not pertinent to a cause founded upon the stamping of patented articles, but is pertinent only where the stamping is upon unpatented articles. This objection, however, is not available upon demurrer. Fish v. Manning, 31 Fed. Rep. 340. Averments of Special Damage. — In an action to recover a penalty for falsely marking an unpatented article with the word patented," under Rev. Stat., § 4901, any informer is entitled to the same recovery as any other person specially injured. Therefore matter set up in the complaint as special damage to the plaintiff is unnecessary and irrelevant; but where this special matter is not plainly stated as a separate cause of action, and no relief is prayed for in reference to it as irrelevant matter, it may be stricken out on motion under the New York Code of Procedure, but it cannot be objected to by a demurrer. Winne v. Snow, 19 Fed. Rep. 507. Time of Stamping. — In an action to recover a penalty for marking patented articles made by the defendant without d. AVERMENT OF PATENTABILITY. The complaint in an action to recover a penalty for marking the word patent on an unpatented article need not allege that the article was capable of being patented; the statutory penalty applies though the article was not a patentable one.1 e. AVERMENT OF ACT CONTRA FORMAM STATUTI. Since the suit for the penalty is founded only on statute, the declaration or complaint must aver the act to be contra formam statuti.” f. ALLEGATA ET PROBATA. — The allegata and probata must correspond. 3 IX. GENERAL JURISDICTION OF SUITS ON OR CONCERNING PATENTS 1. At Law or in Equity-a. SUITS FOR INFRINGEMENT (1) In General. - Where a patent has been infringed, the party entitled to sue may maintain an action for damages therefor in a court of law, or if in addition to damages an injunction against further infringement is sought the party may have recourse to a court of equity.* (2) Action for Damages. If the only thing sought or necessary is damages in compensation for the injury, the remedy at law is adequate and must be pursued.3 the patentee's consent, the time of stamping need not be stated in the complaint as upon a precise and definite day, under N. Y. Code Pro. Fish v. Manning, 31 Fed. Rep. 340. 1. Oliphant v. Salem Flouring Mills Co., 5 Sawy. (U. S.) 128, 18 Fed. Cas. No. 10,486; Winne v. Snow, 19 Fed. Rep. 507. See, contra and disapproved, U. S. v. Morris, 2 Bond (U. S.) 23, 26 Fed. Cas. No. 15,814. 2. Parker v. Haworth, 4 McLean (U. S.) 370, 18 Fed. Cas. No. 10,738. 3. Hawley v. Bagley, 11 Fed. Cas. No. 6,248. 4. Goodyear v. Hullihen, 2 Hughes (U. S.) 492, 10 Fed. Cas. No. 5,573; Avery v. Wilson, 20 Fed. Rep. 856; Burdell v. Comstock, 15 Fed. Rep. 395; Wise v. Grand Ave. R. Co., 33 Fed. Rep. 277; Bragg v. Stockton, 27 Fed. Rep. 509. Election to Sue at Law or in Equity. Where a company sold machines embodying the plaintiff's inventions to another for use, it was guilty of a tort for which an action would lie. But as that company received money for the plaintiff's property, the latter could waive the tort and sue in assumpsit for the money, or, what is the same in effect, proceed in equity for an account of the money received. Steam Stone Cutter Co. v. Sheldons, 15 Fed. Rep. 608. Remedy Governed by General Principles of Law. The patentee in resorting to his remedy, whether in a court of law or equity, is bound by the same principles affecting the jurisdiction of the two tribunals as prevail in other branches of law. If the remedy at law is ample he is bound to pursue it, otherwise he may resort to a court of equity. Brooks v. Miller, 28 Fed. Rep. 617. See Sullivan v. Redfield, 1 Paine (U. S.) 441, 23 Fed. Cas. No. 13,597. Remedy for Infringement After Interlocutory Decree. Where the defendant infringes the complainant's patent after an interlocutory decree rendered in a suit in equity in favor of the complainant, a new cause of action is created in favor of the latter, and he can proceed at law or in equity to enforce it. His right to do this is not impaired by the circumstances that he can also if he chooses proceed against the defendant for contempt in violating the injunction awarded by the decree in the former suit. Roemer v. Neumann, 23 Fed. Rep. 447. 5. Waterman v. Mackenzie, 138 U. S. 252; Hayward v. Andrews, 106 U. S. 672; Belknap v. Schild, 161 U. S. 10; Sanders v. Logan, 2 Fisher Pat. Cas. 167, 21 Fed. Cas. No. 12,295; Vaughan v. Central Pac. R. Co., 4 Sawy. (U. S.) 280, 28 Fed. Cas. No. 16,897; Jenkins v. Greenwald, 1 Bond (U. S.) 126, 13 (3) Injunction Adequacy of Remedy at Law (a) In General. By the several patent acts courts of equity are given power to grant injunctions according to the course and principles of courts of equity, to prevent the violation of any right secured by a patent.1 Relief in Equity Dependent upon Right to Injunction. The power to issue injunctions gives to courts of equity jurisdiction in patent cases, and the most general ground for equitable interposition in such cases is the necessity of the exercise of this power. Fed. Cas. No. 7,270; Ross v. Fort Wayne, 58 Fed. Rep. 404; Edison Electric Light Co. v. U. S. Electric Lighting Co., 35 Fed. Rep. 134; Brooks v. Miller, 28 Fed. Rep. 617; Ulman v. Chickering, 33 Fed. Rep. 582; New York Grape Sugar Co. v. Buffalo Grape Sugar Co., 18 Fed. Rep. 647. 1. Acts Feb. 5, 1819; July 4, 1836, § 17; July 8, 1870, $55; Rev. Stat., § 4921; Sullivan v. Redfield, 1 Paine (U. S.) 441, 23 Fed. Cas. No. 13,597; Avery v. Wilson, 20 Fed. Rep. 856. If Restraint of Infringement Is Sought a court of equity is the only tribunal which can afford the relief, and a party may invoke the jurisdiction of equity for this purpose, though he has the right to an action at law for damages. Motte v. Bennett, 2 Fisher Pat. Čas. 642, 17 Fed. Cas. No. 9,884; M'Millin v. Barclay, 5 Fisher Pat. Cas. 189, 16 Fed. Cas. No. 8,902; Burdell v. Comstock, 15 Fed. Rep. 395; Bragg v. Stockton, 27 Fed. Rep. 509; Goodyear v. Hullihen, 2 Hughes (U. S.) 492, 10 Fed. Cas. No. 5,573; Sherman v. Nutt, 35 Fed. Rep. 149; Brooks v. Miller, 28 Fed. Rep. 617; Wise v. Grand Ave. R. Co., 33 Fed. Rep. 277. A Bill to Restrain Anticipated Infringements gives a court of equity jurisdiction though no infringements have been committed and possibly may not be. Canton Steel Roofing Co. v. Kanneberg, 51 Fed. Rep. 599: Winchester Repeating Arms Co. V. American Buckle, etc., Co., 54 Fed. Rep. 703; Woodworth v. Stone, 3 Story (U. S.) 749, 30 Fed. Cas. No. 18,021; Henzel v. California Electrical Works, 51 Fed. Rep. 754, affirming 48 Fed. Rep. 375. See Smith v. Sands, 24 Fed. Rep. 470. If the Remedy at Law Is Not Adequate the party whose patent has been infringed may resort to equity for relief by injunction. M'Millin v. Barclay, 5 Fisher Pat. Cas. 189, 16 Fed. Cas. No. 8,902; Bicknell v. Todd, 5 McLean (U. S.) 236, 3 Fed. Cas. No. 1,389; Motte v. 2 Bennett, 2 Fisher Pat. Cas. 642, 17 Fed. Cas. No. 9,884; Brick v. Staten Island R. Co., 25 Fed. Rep. 553; Bragg v. Stockton, 27 Fed. Rep. 509; Spauld. ing v. Page, I Sawy. (U.S.) 703; Brooks v. Miller, 28 Fed. Rep. 617; Henzel v. California Electrical Works, 51 Fed. Rep. 754, affirming 48 Fed. Rep. 375; Jonathan Mills Mfg. Co. v. Whitehurst, 56 Fed. Rep. 589. If the Remedy at Law Is Adequate, equitable interposition is not necessary or proper. Smith v. Sands, 24 Fed. Rep. 470; New York Belting, etc., Co. v. New Jersey Car Spring, etc., Co., 47 Fed. Rep. 504; Sanders v. Logan, 2 Fisher Pat. Cas. 167; Wise v. Grand Ave. R. Co., 33 Fed. Rep. 277; Vaughan v. East Tennessee, etc., R. Co., I Flipp. (U. S.) 621, 28 Fed. Cas. No. 16,898. 2. Root v. Lake Shore, etc., R. Co., 105 U. S. 189; Asbestine Tiling, etc., Co. v. Hepp, 39 Fed. Rep. 324. Equitable Jurisdiction Dependent on Injunction. It is now settled that equitable jurisdiction in patent cases is usually dependent on relief by injunction, and that a court of equity will not take cognizance of such suits except where it involves injunctive relief. Root v. Lake Shore, etc., R. Co., 105 U. S. 189; Woodmanse, etc., Mfg. Co. v. Williams, 68 Fed. Rep. 489; Hewitt v. Pennsylvania Steel Co., 24 Fed. Rep. 369; Sayles. Richmond, etc., R. Co.. 3 Hughes (U. S.) 172, 21 Fed. Cas. No. 12,424. Contra. - But see the following cases which are contra or decide that under some of the former acts the jurisdiction of equity in suits for infringement is not dependent upon injunction. Nevins V. Johnson, 3 Blatchf. (U. S.) 80. 18 Fed. Cas. No. 10,136; Perry v. Corning, 7 Blatchf. (U. S.) 195, 19 Fed. Cas. No. 11,004; Imlay v. Norwich, etc.. R. Co., 4 Blatchf. (U. S.) 227, 13 Fed. Cas. No. 7,012; Vaughan v. East Tennessee, |