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Even where the disclaimer was not filed till after the commencement of the suit, there may be exceptions to the general rule. Cases may arise where the circumstances are aggravated, and such as to repel altogether the bona fides of the infringement in which the power to increase the verdict should be exercised. Each case must depend on its own circumstances. Guyon v. Serrell, 1 Blatch. 244.

The law will not in general give treble damages to an assignee. Schwartzel v. Holenshade, 3 Fish. 116; s. c. 2 Bond 29.

The words with costs" were probably added from abundant caution to exclude any inference of an intention to limit the amount of the judgment to the precise sum as increased, which would have excluded costs. When costs can not be recovered, because a disclaimer was not filed till after the commencement of the suit, the rights of the plaintiff and the power of the court in respect to damages remain the same as if costs were allowed, and the court may, if it sees proper, increase them. Guyon v. Serrell, 1 Blatch. 244.

Transfer by Judgment.

A recovery where no license fee has been established will not vest the infringer with the right to continue the use. Suffolk Co. v. Hayden, 4 Fish. 86; s. c. 3 Wall. 315.

If the patent fee is adopted as the measure of damages, the right to the further use of the invention passes to the defendant. Sickels v. Borden, 3 Blatch. 535.

If a patentee does not use the patented machine himself, nor establish a patent fee, but manufactures the patented articles and sells them at fixed prices, seeking his compensation in the profits of the manufacture and sale at such fixed prices, and another party infringes the patent by making and selling the patented article, and the patentee sues the party so infringing, and claims to recover, and does recover, the full amount of profits which he himself would have obtained on the article, had he manufactured and sold it at the ordinary price, by such claim and recovery he adopts the sale made by the party infringing, and the right to use the specific article so sold, and for which the recovery has been had, vests in the purchaser. Spaulding v. Page, 4 Fish. 641; s. c. 1 Saw. 702; 4 A. L. T. (N. S.) 166; Perrigo v. Spaulding, 13 Blatch. 389; s. c. 12 O. G. 352; s. c. 2 Ban & Ard. 348; Booth v. Seivers, 19 O. G. 1140; Steam S. C. Co. v. Windsor Manuf. Co., 17 Blatch. 24; s. c. 4 Ban & Ard. 445.

The price of the invented machine is not the proper measure of damages, because the verdict would not entitle the defendant to use the machine subsequently. The statute gives to the inventor the exclusive right of making and using his invention, and the court can not compel the defendant to purchase, or the patentee to sell this right. Earle v. Sawyer, 4 Mason 1; s. c. 1 Robb 491; Whittemore v. Cutter, 1 Gallis. 478; s. c. 1 Robb 40.

If the damages allowed by the decree were merely for the use of the thing patented, a payment thereof will not entitle the defendant to continue to use it. Matthews v. Spangenberg, 23 O. G. 1624.

If a decree against a manufacturer merely allows nominal damages, it is no bar to an action against a purchaser. Blake v. Greenwood Cemetery, 16 Fed. Rep. 676.

SEC. 4920. In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one or more of the following special matters:

First. That for the purpose of deceiving the public, the description and specification filed by the patentee in the patent office was made to contain less than the whole truth relative to his invention or discovery; or more than is necessary to produce the desired effect; or,

Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or,

Third. That it had been patented, or described in some printed publication prior to his supposed invention or discovery thereof; or,

Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or,

Fifth. That it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public.

And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defences may be pleaded in any suit in equity for relief

against the alleged infringement; and proofs of the same may be given upon like notice in the answer of the defendant, and with the like effect.

61, 16 Stat. 208.

Statute Revised-July 8, 1870, ch. 230, Prior Statutes-April 10, 1790, ch. 7,2 6, 1 Stat. 111.-February 21, 1793, ch. 11, 6, 1 Stat. 322.-July 4, 1836, ch. 357, 15, 5 Stat. 123.

Declaration.

The infringement of a patent is a tort, but as the wrongful act is not committed with direct force, and the injury is the indirect effect of the wrongful act, the form of action is that description of tort called trespass on the case. Stein v. Goddard, 1 McAl. 82.

There is no solid foundation on which to rest the right of a patentee to support an action on the case for the violation of his exclusive right, except that settled and reasonable common law basis of all such actions: injury and damage-injury by a violation of the incorporeal right, and damage, at least nominal, presumed by the law to arise from such violation. Byam v. Bullard, 1 Curt. 100.

A declaration ought always to show a title in the plaintiff, and that with convenient certainty. It ought to state all matters that are of the essence of the action, without which the plaintiff' fails to show a right in point of law to ask for the judgment of the court in his favor. If his title depends upon the performance of certain acts, he must aver the performance of those acts. Gray v. James, 1 Pet. C. C. 476; s. c. 1 Robb 140.

The declaration must aver that the patent was issued and delivered to the patentee. An allegation that the patent was made out is not sufficient. Cutting v. Myers, 4 Wash. C. C. 220; s. c. 1 Robb 159.

As the patentee's title rests upon a patent from the United States, the form of which is prescribed by the act of Congress, the declaration must show that the patent is such as the law requires. Cutting v. Myers, 4 Wash. C. C. 220; s. c. 1 Robb 159.

It is not necessary that the patentee in his pleading shall specify all the acts done by him to obtain a patent in order that it may appear upon the face of the declaration that the mode of proceeding pointed out by the statute has been pursued. It is sufficient to set forth the grant in substance. The court will presume in favor of the grant that everything was rightly and solemnly done which the law requires, in order to authorize the issuing of the patent. Wilder v. McCormick, 2 Blatch. 31; Cutting v. Myers, 4 Wash. C. C. 220; s. c. 1 Robb 159.

It is sufficient to state the substance of the grant, but if the specification professes to set forth the grant according to its tenor, the slightest variance is fatal. Tryon v. White, 1 Pet. C. C. 96; s. c. 1 Robb 64.

A general averment of an extension in due form of law, before the expiration of the term for which the original patent was granted, is sufficient. Phelps v. Comstock, 4 McLean 353.

It would be more formal to annex a copy of the letters patent and specification to the declaration and to refer thereto in the declaration, but the common practice is to simply make profert of the letters patent, and there seems to be no substantial objection to it. Pitts v. Whitman, 2 Story 609; S. c. 2 Robb 189.

The profert of the letters patent makes the letters patent, when produced, a part of the declaration, and so gives all the certainty as to the invention and improvement patented, which is required by law. Pitts v. Whitman, 2 Story 609; s. c. 2 Robb 189.

The words "as by the said letters patent and specification, all in due form of law, ready in court to be produced, will fully appear," is equivalent to profert in the most formal and ample terms. They tender the entire grant to the inspection of the court and party. Wilder v. McCormick, 2 Blatch. 31.

The declaration need not aver at what time the invention patented was made. The patent law nowhere requires the patentee to allege or prove the specific time of his invention. Wilder v. McCormick, 2 Blatch. 31. If the declaration does not set out the nature of the invention, it is demurrable. Peterson v. Wooden, 3 McLean 248; s. c. 21 Robb 116.

A breach which is as broad as the right set forth in the declaration and granted by the patent, is not only sufficient, but that is the most correct manner of pleading. Cutting v. Myers, 4 Wash. C. C. 220; s. c. 1 Robb 159.

The declaration must tender an issue upon the novelty and utility of the discovery patented, these being essential to the enforcement of any exclusive privilege under the patent, but the question of the regularity of the proceedings in petitioning for and obtaining the patent and that of the correctness of the judgment of the commissioner in awarding it are not material and cannot be inquired into. Wilder v. McCormick, 2 Blatch. 31. If the declaration embodies 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 to interpose every defence allowed him by the law, the court will not encourage objections merely critical, and will seek to sustain pleadings substantially sufficient, and will thus avoid useless delays and expense. Wilder v. McCormick, 2 Blatch. 31.

The plaintiff is confined to giving evidence of infringements during the period which he specifies in his declaration. If it were otherwise, the recovery in the suit would be no bar to another action for any anterior breach, since it could not judicially appear that any damages had been recovered for any such anterior breach, and the form of the declaration itself specifying the term would repel any presumption to the contrary. Eastman v. Bodfish, 1 Story 528; s. c. 2 Robb 72.

If the case stated in the declaration is precisely within the statute, an averment that the act complained of is against the form of the statute is mere matter of form, the want of which will be cured by a verdict, hence the omission of it is not a ground for a nonsuit. Tryon v. White, 1 Pet. C. C. 96; s. c. 1 Robb 64.

Where the original patent and a patent for an improvement on it are united in the same person, they constitute an entire right, and must be asserted as such in an action for an infringement. The wrong complained of is for a violation of the entire right united in the plaintiff by the different patents and assignments. The right set up is an entirety, and being united in the same individual, is not susceptible of a division. As well might different actions be brought for trespass upon a close, on the ground that the land was held under distinct titles. Case v. Redfield, 4 McLean 526; s. c. 2 Robb 741.

Distinct causes of action may be set forth in the same count. A reiteration of infringements of a patent may be sued for and recompensed in one action. There is no known doctrine of the law that requires a plaintiff to split up into separate actions grievances of that character. Wilder v. McCormick, 2 Blatch. 31.

If a patent is extended by a special act of Congress, and the plaintiff wishes to recover for infringements under both the original and extended patent, he must file distinct and independent counts for each patent. Eastman v. Bodfish, 1 Story 528; s. c. 2 Robb 72.

Where a matter is so essentially necessary to be proved to establish the plaintiff's right to recovery that the jury could not be presumed to have found a verdict for him unless it had been proved at the trial, the omission to state that matter in express terms in the declaration is cured by the verdict. The mere omission to aver that the assignment under which the plaintiff claims was recorded, will not be deemed fatal on a motion in arrest of judgment, for it is a case of a good title defectively stated. Dobson v. Campbell, 1 Sum. 319; s. c. 1 Robb 681.

If enough is stated in the declaration to show title in the plaintiff, and with sufficient certainty to enable the court to give judgment, but with less certainty than the case admitted of, and which, for the purpose of notice to the adverse party or otherwise, ought to have been stated, the defect is cured by the verdict. The court will presume that all such omissions were supplied and obscurities explained at the trial by the evidence given to the jury. Gray v. James, Pet. C. C. 476; s. c. 1 Robb 140.

If the declaration contains all the necessary allegations to show that the patent was regularly granted, and designates the patent by the terms used in the patent itself, it will be sufficient on a demurrer or motion in arrest of judgment. Gray v. James, Pet. C. C. 476; s. c. 1 Robb 140; Cutting v. Myers, 4 Wash. C. C. 220; s. c. 1 Robb 159.

Although a breach is too general in not stating the number of machines used by the defendant, yet it is cured by a verdict, since it is fairly to be presumed that proof of that fact was given to the jury. Gray v. James, Pet. C. C. 476; s. c. 1 Robb 140.

Plea.

This section appears to be drawn on the idea that the defendant would not be at liberty to contest the validity of the patent on the general issue. It therefore intends to relieve the defendant from the difficulties of pleading

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