631. Demurrers, pleas, and answers to supplemental bills and to bills in the nature of supplemental bills. 632. Hearings. 633. Interlocutory hearings. 634. Questions of law arising on hearings. 635. Questions of fact arising on hearings. 636. Evidence in support of the bill. 637. Evidence in support of defences. 638. Testimony. 639. Depositions. 640. Depositions taken in other cases. 641. Documentary evidence. 642. Trial by jury in equity cases. 643. Hearings by masters in chancery. 644. Interlocutory decrees. 645. Petitions for rehearings. 647. Rehearings on account of newly 648. Supplemental bills in the na- 651. Bills of review to correct errors 652. Bills of review to introduce evidence discovered after the entry of the final decree. 653. Bills in the nature of bills of review. 654. Appeals. 655. Hearings on appeals. 656. Decisions on appeals. 657. Certificates of division of opinion. $572. JURISDICTION in equity, in patent litigation, is conferred upon the same courts that are authorized to exercise jurisdiction at law, in that branch of jurisprudence.' The two kinds of jurisdiction are kept as distinct in those courts, as if they were conferred upon different tribunals. Equitable relief cannot be had in any action at law; and legal relief cannot be had in any action in equity, except as incidental to some equitable relief granted, or at least rightfully prayed for, therein. The only function of actions at law in patent cases, is to give damages for past infringements of patents. The principal function of actions in equity in such cases, is to restrain future infringements of patents, by means of the writ of injunction. In every case where an injunction is proper, a court of equity, in order to avoid a multiplicity of actions, will take an account of the profits which the defendant derived from infringing the complainant's patent, and will compel the defendant to pay their amount to the complainant. And 1 Revised Statutes, Sections 629 and 4921. Section 379 of this book. equity has jurisdiction, independent of any injunction or right to an injunction, to grant this relief relevant to profits, in all patent cases wherein some impediment prevents a resort to remedies purely legal, or wherein special circumstances render the remedy obtainable by an action at law, difficult, inadequate, or incomplete.' § 573. Wherever equity has jurisdiction to decree an account of the defendant's profits, it also has jurisdiction to assess the damages which the complainant sustained on account of the defendant's infringement. Having ascer 3 tained the amount of both, if the profits are found to equal or exceed the damages, the court will enter a decree for their recovery, and will do nothing further about the damages. Where the accounting shows no such profits, but does show such damages, the court will enter a decree for the amount of the latter, and will do no more.' Where the accounting shows both profits and damages, and shows the latter to be the larger of the two, a decree will be entered for that larger sum alone. The statutory provision which enables a court of equity to assess damages in a patent case originated in 1870. It was a new remedial provision of the Consolidated Patent Act of that date, and was expressly made applicable to all suits thereafter commenced, even on rights of action which theretofore accrued.' In assessing damages, equity follows the law," and is guided by the rules and principles which are set forth in Chapter XIX. of this book. But where damages are measured by a royalty, only the earned portion of the royalty should be assessed; 1 Root v. Railway Co. 105 U. S. 189, 1881. 2 Revised Statutes, Section 4921. 3 Emigh v. Railroad Co. 6 Fed. Rep. 283, 1881. 4 Marsh v. Seymour, 97 U. S. 348, 1877. 5 Star Salt Caster Co. v. Crossman, 4 Bann. & Ard. 566, 1879; Child v. Iron Works, 19 Fed. Rep. 259, 1884; Simpson v. Davis, 22 Fed. Rep, 444, 1884. 16 Statutes at Large, Ch. 230, Sec. 55, p. 206. 16 Statutes at Large, Ch. 230, Sec. 111, p. 216; Union Paper Bag Machine Co. v. Newell, 11 Blatch. 383, 1873. Bancroft v. Acton, 7 Blatch. 506, 1870; Locomotive Safety Truck Co. v. Pennsylvania Railroad Co. 2 Fed. Rep. 682, 1880. for if the royalty assessed is one which covers the future life of the patent, its recovery would authorize a continuance of the defendant's doings, and thus defeat an injunction, and perhaps oust the jurisdiction of equity, and so eventuate in a reversal of the decree by the Supreme Court.' § 574. The complainant in an action in equity for an infringement of a patent may be the holder of the complete title to that patent in the territory where the infringement occurred. Where the legal title resides in one person and the equitable title in another, both should generally join in such an action.' But the holder of the legal title may be dispensed with as co-complainant, where the circumstances of the case are such that a decree against the equitable owner would clearly be pleadable against the holder of the legal title, and the holder of an equitable title may be dispensed with, where his interest is confined to a share of the proceeds of the patent. Where an equitable owner brings an action in equity in the name of the holder of the legal title alone, the defendant may, by means of a motion to the court, compel the equitable owner to become a cocomplainant in his own name.' But where a defendant moves to make a stranger to a suit, co-complainant therein, on the ground that he has an equitable interest in the matter involved, the motion will be overruled if the person, so sought to be brought in, files in the case a disclaimer of all interest in the subject of the litigation." § 575. The defendant in an action in equity for an infringement of a patent, may generally be any person or private corporation connected with that infringement. Questions relevant to the liability of public corporations to such actions, and relevant to the respective liability of joint in 'Bragg v. City of Stockton, 27 Fed. Rep. 509, 1886. 2 Stimpson v. Rogers, 4 Blatch. 336, 1859. 3 Littlefield v. Perry, 21 Wallace, 222, 1874. 4 Rude v. Wescott, 129 U. S. 1889. Patterson v. Stapler, 7 Fed. Rep. 210, 1881. Graham v. Mfg. Co. 11 Fed. Rep. 148, 1880. fringers when sued in equity, and indeed relevant to numerous points in the subject of parties, are explained and answered in the chapter on courts parties and causes: the seventeenth chapter of this book. § 576. An original bill in an action in equity, for an infringement of a patent, properly consists of six parts: 1. The title of the court. 2. The introduction. 3. The stating part. 4. The prayer for relief. 5. The interrogating part. 6. The prayer for process. Anciently it was the custom to insert in all original bills in equity, three additional parts: the confederacy part, the charging part, and the jurisdiction part. But these are no longer required in United States courts.' The confederacy part, if used when only one person has infringed and is sued, is entirely out of place; and even where the bill is filed against joint infringers, such a part is still entirely useless. The charg ing part is also unnecessary, because the complainant is entitled to amend his bill, if the answer renders it necessary for him to plead specially to any defence it contains.' And such a part is objectionable, because it notifies the defendant of the complainant's reply to the defendant's defence, and thus enables the latter to concert his answer with more craftiness than he otherwise could. And the jurisdiction part is useless, because, if the facts stated in the bill do not give equity jurisdiction, the fault cannot be cured by alleging that they do; and if those facts do lay a foundation for jurisdiction in equity, they will speak for themselves, and will require no label such as was anciently tacked to them in the form of a jurisdiction part. That part of an ancient bill in equity originated in England when the chancellors were priests and not lawyers, and when they therefore required to be told that the common law could not give the relief prayed for in the bill. Some pleaders still insert one or all of these three ancient parts in a bill in equity, but neither of them can have any beneficial effect upon the cause, and all of them are better omitted than used. § 577. The title of the court, at the beginning of a bill, should be in the same form as at the beginning of a declaration. It is technically unscientific to entitle a bill in the name of the case, because until the bill is filed there is no such case pending. But such a title is convenient, in order to show at a glance who are the parties; and convenience may properly outweigh technical nicety. It is therefore exceptional to see a bill that is not entitled in the name of the case. § 578. The form of the introductory part is prescribed by the Supreme Court.' It contains a formal address to the judges of the court in which the bill is to be filed, together with the names and citizenship of the parties. § 579. The stating part of a bill in equity, though differing in form from the statement of the cause of action in a declaration at law, agrees with the latter in substance, except in the following particulars: It must contain such a description of the patented invention as will apprise the court of the particulars in which it consists, or it must make profert of the letters patent upon which it is based.' It may state infringements which were committed before the complainant obtained his title, provided that title, when obtained, covered the right of action for those infringements. It need not aver that any damage was incurred by the complainant, if the action is brought for an injunction only, or for an injunction and an account of the defendant's profits. Where the bill prays for a preliminary injunction, its stating part must set forth one or more of the grounds for that relief, which are explained in the chapter on injunctions ;* and when profits are sought to be recovered, it must plainly aver that profits were realized by the defendant on account 1 Section 422 of this book. 2 Equity Rule 20. Post v. Hardware Co. 25 Fed. Rep. 905, 1885; Bogart v. Hinds, 25 Fed. Rep. 484, 1885; Wise v. Railroad Co. 33 Fed. Rep. 277, 1888; American Bell Telephone Co. v. Southern Telephone Co. 34 Fed. Rep. 803, 1888. 4 Parker v. Brant, 1 Fisher, 58, 1850; American Bell Telephone Co. v. Southern Telephone Co. 34 Fed. Rep. 803, 1888. |