of receiving the full price in damages, and the defendant is content with this arrangement, there may be no solid objection to it in such a case. But I do not yet perceive, how the court can force the defendant to purchase, any more than the plaintiff to sell, the patent right, for the whole period it has to run. The defendant may be an innocent violator of the plaintiff's right; or he may have ceased to use, or to have employment for, such a machine." There are other objections alluded to in the case in 1 Gallison, 429.8 "Struck with similar difficulties in establishing any general rule to govern cases upon patents, some learned judges have refused to lay down any particular rule of damages, and have left the jury at large to estimate the actual damages according to the circumstances of each particular case. I rather incline to believe this to be the true course. There is a great difference between laying down a special and limited rule as a true measure of damages, and leaving the subject entirely open, upon the proofs in the cause, for the consideration of the jury. The price of the machine, the nature, actual state and extent of the use of the plaintiff's invention, and the particular losses to which he may have been subjected by the piracy, are all proper ingredients to 8 Whittemore v. Cutter. be weighed by the jury in estimating the damages, valere quantum valeant."9 In one of the cases already cited above, the same learned judge remarks that the rule for damages, in an action for an infringement of a patent, is the amount of the profits actually received by the defendant in consequence of his using the plaintiff's invention.10 This is virtually assuming that the plaintiff's damages shall be considered at least equal to the defendant's actual profits by using the machine; that is, that if the defendant had not used the machine without license, it shall be presumed he would have given the plaintiff for the privilege of using it, what he could actually make. Perhaps, however, the plaintiff has a fixed price for a license, in which case it might be said, that if it be less than the profit made by the defendant, the former ought to be the rule, and that is the actual damage of the plaintiff. On the other hand, it would be unjust to the patentee that the defendant should make a profit by the infringement, especially if it was intentional. In this, as in other cases, the circumstances of aggravation or excuse are taken into consideration by the jury, who would, perhaps, be justified in presuming that the plaintiff would have made the same profit which the defendant has, had not the defend ' Earle v. Sawyer, 4 Mason, 1. ant committed the infringement, and accordingly that this is the measure of damages; for though the rate at which the privilege is ordinarily sold is a less sum, and it is not certain that the plaintiff would not have demanded of him a higher rate, or that he would not have used his invention himself, and thus made the same profit, still it is to be considered that, in these cases, the statute, at the time of the above decision, trebled the actual damage, without any discrimination as to the circumstances of aggravation or extenuation of the infringement; and this is a sufficient protection to the plaintiff's rights. If the privilege is a matter of frequent sale, and bears a fixed, well-known market value, this has one very material advantage over a computation of the defendant's profit, as a rule of damages, since such a computation is generally one of much difficulty, in which the party directly interested in the result, and who has the best means of calculation, is liable to great mistakes, to which witnesses and jurymen must be still more liable. Another circumstance weighs something in favor of this rule, that the small profit or actual loss made by the defendant, cannot be alleged in reduction of the damage which the plaintiff has actually sustained; and this is a reason why undue and aggravated weight should not, at least, be allowed to evidence of a profit far exceeding the actual damage which the plaintiff has proba bly sustained; and to this he is limited by the words of the statutes both of 1793 and 1836. In Arkwright's case, the fact that the patentee, after a verdict against him, in 1781, had lain by for four years before bringing another action for an infringement, when many persons were notoriously using the machine, was considered by Lord Loughborough as material in fixing the damages. He said, "It has been said that many persons have acted upon an idea that Mr. Arkwright had no right, he having failed to establish it when this cause underwent an examination in another place, in which the event was unfavorable to him. If the question at present were what damages Mr. Arkwright should have received for the invading that right, I would have allowed the parties to have gone into evidence, to show to what extent persons had acted upon the faith of the former verdict; but the question now is upon the mere right; and if the result of this cause is in favor of the plaintiff, the verdict will be with one shilling damages. A future invasion of this right would entilte Mr. Arkwright to an action for damages, but in the present case they are not asked."'11 In the United States the express provisions of the statute present a strong objection to any such rule. The question was made, in a case that came before 11 Arkwright v. Nightingale, Dav. Pat. Cas. 55. Mr. Justice Story, in 1813, whether, in an action for the infringement of a patent right, the expenses incurred by the plaintiff for counsel fees are to be considered as items of actual damage. Story J. "At the trial, we had considered, that it was the established rule to consider counsel fees and the expenses of witnesses beyond the taxable costs, as items of actual damage, in estimating damages in cases of mere tort, whether the action was for the redress of a personal injury, or the vindication of a personal right. Since the trial, however, we have seen the case of Arcambel v. Wiseman, 3 Dallas, 306, in which the question as to counsel fees, was directly before the Supreme Court. There can be no doubt that the case was founded on a tort; and we feel ourselves bound by that decision, whatever might have been the opinion we should otherwise have been disposed to entertain."'12 But in a subsequent case, in 1820, the same judge held that in an action for the infringement of a patent, the jury are at liberty, if they see fit, to allow the plaintiff as part of his "actual damages," any expenditure for counsel fees, or other charges, which were necessarily incurred to vindicate the rights derived under his patent, and are not taxable in the bill of costs. Story J. Story J. "I feel myself bound to 12 Whittemore v. Cutter, 1 Gallison, 429. |