necessary also to plead the legal effect of the patent, by saying that it did grant to the patentee, his heirs or assigns, the exclusive right to make, use, and vend the invention covered thereby, throughout the United States and the Territories thereof.' § 429. Where the patent upon which the action is based, is a reissue, the original letters patent should be set forth precisely as though no surrender and reissue had occurred; and in addition thereto, it is proper to state the particular kind of defect which made the original a proper subject of a reissue; and to state also that such defect arose from inadvertence, accident, or mistake, as the case may be, and without any fraudulent or deceptive intention; and to state that the original patent was surrendered, and who surrendered it; and to state that the Commissioner of Patents caused a new patent to be issued for the same invention; and to state finally the name of the person to whom such new patent was granted. These particulars lie at the foundation of the right of the grantee of a reissue patent to receive such a grant; and although the reissue is prima facie evidence that the truth on all these points is favorable to the validity of the patent, it is none the less proper to put those facts in issue by proper pleading. If the Supreme Court shall decide any of these points of fact to be conclusively settled by the decision of the Commissioner in granting a reissue, it will then be unnecessary to state such fact or facts in a declaration; but it is hardly prudent otherwise to venture a case on a more indefinite form of pleading; though a more indefinite form of pleading has once been held sufficient in such cases." § 430. Where a disclaimer has been filed, that fact ought to be stated in the declaration and its legal effect ought to be indicated, because disclaimers constitute amendments of original patents, and operate to vary their scope. In such a case also, the declaration ought to state that the dis 3 ' Revised Statutes, Section 4884. 828, 1885. 3 Revised Statutes, Section 4917. claimer was filed without unreasonable delay, because that fact is necessary to the right of a patentee to maintain a suit on a patent which required a disclaimer.' § 431. Where the patent in suit was extended by the Commissioner of Patents, and where the action is based partly or wholly on its extended term, the declaration must state that the extension was made in due form of law, and must show that it was made before the expiration of the original term. It ought to state also that the extension was for the term of seven years from the expiration of the first term; but as that is true of all such extensions, it is possible that the omission would be an immaterial one. Where the patent has been extended by a special Act of Congress, and where the suit is partly or wholly based on such extension, the declaration must state the legal effect of the Act of extension, and it must especially show the particular space of time covered thereby. § 432. Where the plaintiff is an assignee or grantee of the patentee, it is safer to set forth all the mesne assignments or grants down to him, than merely to state that the exclusive right which was infringed by the defendant, came to the plaintiff by assignment or by grant. This point of pleading seems deducible by analogy from the rule relevant to declaring on an assigned term for years of real estate.' Title papers should, however, be set forth by their legal effect, rather than incorporated bodily into the declaration. § 433. No profert need be made in any declaration, of any letters patent, disclaimer, reissue, or certificate of extension, because all such documents are matters of record in the Patent Office. Nor is any profert necessary of any assignment or grant of any interest under letters patent, because, although those instruments are sometimes under seal, they are not required to be so,' and therefore do not fall within the definition of a deed. If, however, the title of the plain ' Revised Statutes, Section 4922. 21 Chitty on Pleading, 368. ર 1 Chitty on Pleading, 366; Smith . Ely, 5 McLean, 90, 1849. 5 Revised Statutes, Section 4898. Stephen on Pleading. Ninth American Edition, 437. tiff is founded upon letters testamentary or letters of administration, he must make profert of the same, because they constitute exceptions to the general rule that profert is necessary only of deeds.' If profert is made of any document of which it is not necessary, it will be treated as mere surplusage, and will not entitle the defendant to oyer." § 434. Infringement may be stated in a declaration in general terms. Such a statement is sufficiently specific if it plainly alleges that the defendant, without the leave or license of the owner of the patent, did use, or that he did make, or that he did sell, a specimen or specimens of the thing or process covered by the patent, within the territory covered by the plaintiff's title thereto, and within the time during which the plaintiff held the title within that territory, and contrary to the form of the Act of Congress in such cases made and provided, and against the privileges granted by the patent. This last statement, indeed, seems hardly necessary, for it is but a conclusion of law from the facts stated; and the allegation that the infringement was contrary to the statute is unnecessary, unless the plaintiff seeks to recover exemplary as well as actual damages. Nor is it generally necessary in a declaration to negative the hypothesis of a license; for licenses, where they exist, may more properly be first mentioned in the pleadings of the defendant. But where the declaration shows that strangers to the suit have an exclusive United States license, it must also show that the defendant is not lawfully operating thereunder.' While an allegation of either making, using, or selling will be sufficient in a declaration to show a cause of action, no allegation of any one of these kinds of infringement will support evidence of either of the others. A decla 'Gould's Pleading, Ch. VIII. Sec. 43. 1 Chitty on Pleading, 366. American Bell Tel. Co. v. Southern Tel. Co. 34 Fed. Rep. 803, 1888. Cutting v. Myers, 4 Washington, 223, 1818. Parker v. Haworth, 4 McLean, 373, 1848. 6 Gelpcke v. Dubuque, 1 Wallace, 222, 1863; Catlin v. Insurance Co. 1 Sumner, 440, 1833; Fischer o. Hayes, 6 Fed. Rep. 79, 1881. Still v. Reading, 20 Off. Gaz. 1026, 1881. ration ought therefore to allege as many of them as the plaintiff has any expectation of being able to prove. § 435. The time of the infringement is properly stated by alleging that it occurred on a specified day, and on divers other days between that day and some later specified date; and no plaintiff will be permitted to prove infringement outside of the space of time which he specified in his declaration. Repeated infringements may be sued for in one action; but all the infringements complained of in one declaration, must have been committed after the plaintiff obtained the title to the patent, and before the beginning of the action. Where the plaintiff is an assignee, and where he not only has rights of action against the defendant, for infringements committed after the date of his assignment, but also has purchased rights of action against the same party, for infringements committed before such purchase, he must, if he sues at law, bring a separate action for the latter causes, and must bring that action in the name of the person who owned the patent at the time they accrued. § 436. The damages incurred by the plaintiff on account of a defendant's infringement must be stated specially, because no particular damage necessarily arises from infringements of patents, and therefore none is implied by the law.' The special damages to be alleged in any particular case depend upon the circumstances of that case; depend upon the particular criterion of damages upon which the plaintiff relies. The various measures of damages in patent cases are stated and explained in the nineteenth chapter of this book. One or more of them will be found to be applicable to every case which is likely to arise. From among them, the pleader may select those which he expects to be able to prove to be pertinent, and may then draw his special statement of damages accordingly. Such a special statement is required by the substantial principles of pleading, as well Eastman v. Bodfish, 1 Story, 530, 1841. Wilder v. McCormick, 2 Blatch. 32, 1846. 31 Chitty on Pleading, 396. as by its technical rules. Without it, the defendant would not be apprised of all the issues of the case. He would not know, till the day of trial, whether the plaintiff would prove an established royalty, or prove interference with his business, or prove what would be a reasonable royalty, as the criterion of his damages. The defendant would therefore have to go to court provided with witnesses on all these points, or would have to trust his sagacity, and guess which of these points he would be called upon to meet. It was to prevent such inconveniences that written pleadings were originally designed; and for the same purpose among others, they are still retained as a part of actions in courts. $ 437. The conclusion of a proper declaration in a patent case alleges that, by force of the statutes of the United States, a right of action has accrued to the plaintiff, to recover the actual damages which the declaration specifies, and such additional amount, not exceeding in the whole three times the amount of such actual damages, as the court may see fit to adjudge and order, besides costs. The conclusion ends with the ancient allegation of bringing suit. § 438. A declaration, though not drawn in due form, is sufficient for practical purposes, if it contains all that is essential to enable the plaintiff to give evidence of his right and of its violation by the defendant, and affords to the defendant the opportunity of interposing every defence allowed to him by law.' Courts do not encourage merely technical objections to pleadings, and even on special demurrer will seek to sustain those which, though not technically accurate, are substantially sufficient for the real purposes of pleading. At this point the attention may turn from the first pleading of a plaintiff in a patent action, and may engage itself for a while with pleadings which are appropriate to defendants in such cases. § 439. Dilatory pleas in patent actions are not materially different in their nature and operation from corresponding 1 Wilder v. McCormick, 2 Blatch. 37, 1846. |