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§ 487. Remedy for infringement. The remedy for the infringement of a patent-right, both by statute and common law, is by an action on the case. From the nature of the action and the tenor

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1 Stat. U. S. 1836, c. 357, § 14; 1 Chitty on Plead. 131. The declaration for the infringenient of this right is given by Mr. Phillips in his excellent Treatise on the Law of Patents, p. 520, as follows: "To answer to A of B, in the county of s, in the district of manufacturer, in a plea of trespass on the case, for that the plaintiff was the original and first inventor (or discoverer) of a certain new and useful art [machine, manufacture, composition of matter, or improvement on any art, machine, &c., taking the words of the statute most applicable to the subject of the invention] in the letters-patent hereinafter mentioned and fully described, the same being a new and useful (here insert the title or description given in the letters-patent], which was not known or used before his said invention (or discovery), and which was not, at the time of his application for a patent as hereinafter mentioned, in public use or on sale with his consent or allowance; and the plaintiff, being so as aforesaid the inventor (or discoverer) thereof, and being also a citizen of the United States (if the fact is so], on the

[here insert the date of the patent), upon due application therefor, did obtain certain letters-patent therefor in due form of law under the seal of the Patent Office of the United States, signed by the Secretary of State, and countersigned by the Commissioner of Patents of the United States, bearing date the day and year aforesaid, whereby there was secured to him, his heirs, administrators, executors, or assigns, a for the term of fourteen years from and after the date of the patent, the full and exclu. sive right and liberty of making, using, and vending to others to be used, the said invention [machine, improvement, or discovery), as by the said letters-patent, in court to be produced, 3 will fully appear.“ And the plaintiff further says, that from the time of the

1 “It has been suggested, in a preceding part of this work, p. 408” (says Mr. Phillips in his note in this place), “that the citizenship of the patentee need not be proved by the plaintiff, and, if so, it need not be averred. This will, however, depend upon the construction that shall be given to the 15th section of the act of 1836, c. 357, by which, if the patentee be an alien, the defendant is permitted to give matter in evi. dence, tending to show that the patentee ‘has failed and neglected for the space of eighteen months from the date of the patent to put and continue on sale to the public, on reasonable terms, the invention or discovery. The position referred to in p. 408 assumes that the burden on this point is, in conformity to the language of the statute in the first instance, on the defendant. But to go on the safer side, the above form of declaring assumes the burden to be on the plaintiff to aver and prove, in the first instance, that the patentee is a citizen of the United States, or, if an alien, and the eighteen months have expired before the date of the writ, that he has put and continued the invention on sale ir, the United States on reasonable terms."

2 “Act of 4th of July, 1836, c. 357, § 5." 8 “Which the plaintiff brings here into court." Chit. Pl. vol. ii. p. 795 (5th ed.).

4 "The English precedents here state the making and filing of the specification, the assignment of the patent, and the recording of the assignment, if the action be in the name of an assignee, or if an assignee of part of the right is joined.

“If the patentee is an alien, and the counsel chooses to declare very cautiously, if eighteen months have expired from the date of the patent, he may here introduce the averment, that within eighteen months from the date of the patent, namely, on, &c., at, &c., he (or his assignees) put the invention on sale in the United States, on reasonable terms, and from that time always afterwards to the time of purchasing the writ, he (or they, or he and they) had continued the same on public sale, in the United States, on reasonable terms."

of the declaration, as stated below, it is apparent that the plaintiff, under the general issue, may be required, and therefore should be prepared, to prove, (1) the grant and issuing of the letters-patent, together with the specification and the assignment to him, if he claims as assignee; (2) that the invention was that of the patentee, and was prior to that of any other person; (3) that it is new and useful, and has been reduced to practice; (+) that it has subsequently been infringed by the defendant; and the damages, if any, beyond a nominal sum are claimed. (a) granting to him of the said letters-patent, hitherto, he has made, used, and vended to others to be used for he has made, or has used, or has vended to others to be used, as the case may be), the said invention (machine, improvement, or discovery), to his great advantage and profit (or if he has not made, used, or vended, then, instead of the above averments, may be substituted after the word 'hitherto,' the said exclusive

Yet the said D, well knowing the premises, but contriving to injure the plaintiff, the (some day after the date of the patent), and at divers times before and afterwards, during the said term of fourteen years mentioned in said letters-patent, and before the purchase of this writ, at C, in the county of M, in the said district of unlaw. fully and wrongfully, and without the consent or allowance, and against the will of the plaintiff, make (use, and vend to others to be used, or did make, or did use, or did vend to others to be used, as the case may be the said invention (machine, improvement, or discovery), in violation and infringement of the exclusive right so secured to the plaintiff by said letters-patent as aforesaid, and contrary to the form of the statutes of the United States in such case made and provided, whereby the plaintiff has been greatly injured, and deprived of great profits and advantages, which he might and otherwise would have derived from said invention ; and has sustained actual damage to the amount of —; and, by force of the statute aforesaid, an action has accrued to him, to recover the said actual damage, and such additional amount, not exceeding in the whole three times the amount of such actual damages, as the court may see fit to order and a ljudge. Yet the said D, though requested, has never paid the same, or any part thereof, to the plaintiff, but hath refused, and yet refuses, so to do."

1 The principle upon which these averments are made is the same as that upon which, in an action for trespass upon personal property, the value of the property is alleged, by way of showing that it was a thing in respect to which the plaintiff might sustain damage. Mr. Gould says of this averment : “As he (the plaintiff) is not obliged to state the true value, the rule requiring it to be stated would seem to be of no great practical use.' Gould's Pl. c. 4, § 37, p. 187. Mr. Chitty says, the above averments as to profit by niaking, using, and vending are sometimes omitted. The propriety of making the averment of the value seems to depend upon the question whether the allegation of ownership of an article or species of personal property, or in. terest in it, and possession of it, imports a value to the plaintiff, without specifically alleging its value ; for if it does, then a ground of action distinctly appears, without any such specific allegation."

'2 "Contriving and wrongfully intending to injure the plaintiff, and to deprive him of the profits, benefits, and advantages which he might and otherwise would have derived and acquired from the making, using, exercising, and vending of the said invention, after the making of the said letters-patent, and within the said term of fourteen years in said letters-patent mentioned.'” Chit. Pl. (5th ed.) vol. ii. p. 766.

8 “Act of 4th of July, 1836, c. 357, § 14."

(a) The burden of proof on all these and shift the burden of evidence of any points

is on the plaintiff. Bates v. Coe, 98 defence, e. g. anticipation, on the defend. U. 8. 31. Mellon v. Delaware, &c. Ry. Co., ant. Grear v. French, 11 Fed. Rep. 591 ; 12 Fed. Rep. 640, note. But the letters are Brodie v. Ophir, &c. Co., 5 Sawyer C. C. prima facie evidence on all these points, 608 ; Cornvallis Fruit Co. v. Curran, 8 VOL. II.


§ 488. Proof of letters-patent. (1.) The letters-patent, to which, in the United States, a copy of the specification is annexed as a part thereof, are proved either by the production of the originals, or by copies of the record of the same, under the seal of the patent office, and certified by the Commissioner of Patents, or, if his office be vacant, by the chief clerk.: (a) If the patent is for an improvement, and the specification refers to the former patent, without which it is not sufficiently clear and intelligible, the former patent with its specification must also be produced.(6) Where the proof is by an exemplification, it must be of the whole record, and not of a part only. The drawings, if any, must be produced, whenever they form part of the specification.

$ 489. Construction of letters-patent. As letters-patent are not granted as restrictions upon the rights of the community, but to promote science and the useful arts, the courts will give a liberal construction to the language of patents and specifications, adopting that interpretation which gives the fullest effect to the nature and extent of the claim made by the inventor.4 (c) The meaning is a

1 Stat. U. S. 1836, c. 357, SS 4, 5. By this act, no letters-patents are to be issued until the specification is filed ; which it is the duty of the clerk to enrol ; and therefore no particular evidence of the enrolment is required on the part of the plaintiff. But in England, where the letters-patent are issued before the specification is filed, the party is bound to see to the enrolment of his specification within a limited time, and therefore is bound to show that this requirement has been complied with. Ex parte Beck, 1 Bro. Ch. 578; Ex parte Koops, 6 Ves. 599 ; Watson v. Pears, 2 Campb. 294.

? Lewis v. Davis, 3 C. & P. 502 ; Phillips on Patents, pp. 401, 402. 8 Blanchard v. Sprague, 3 Sumn. 535.

4 Ryan v. Goodwin, 3 Sumn. 514. Where a patent is granted for a term of years, the day of the date of the patent is reckoned inclusive. Russell v. Ledsman, 9 Jur. 557, 558. Fed. Rep. 150 ; Miller v. Smith, 5 Id. of the office affixed thereto, and certified 359 ; Rogers v. Beecher, 4 Id. 639. and signed by the Commissioner of Pa

So a decision of the patent office author- tents, shall be legal evidence of the conities on the validity of a patent, in a case tents of said letters-patent in all cases." when there is a conflict, throws the bur- (b) Kittle v. Merriam, 2 Curtis C. C. den of introducing evidence on the party 475 ; Parker v. Stiles, 5 McLean C. C. against whom the decision is rendered 44. (Wire Book S. M. Co. v. Stevenson, 11 (c) Parker v. Stiles, 5 McLean C. C. 44; Fed. Rep. 155); but on an affirmative de- Winans v. Denmead, 15 How. (U. S.) 330. fence - e. g. license

the burden of proof But this rule of construction is applicable is on the defendant (Watson v. Smith, 7 only to those cases where the state of the Fed. Rep. 350).

art is such that there is no conflict be. It has been said that the defence of a tween the claims of various inventors, and prior invention is an affirmative defence the patent which is the subject of judicial Schillinger v. Gunther, 17 Blatch. c. construction is the first in the field. C. 66; Putnam v. Hollender, 6 Fed. When, however, there are numerous paRep. 882 ; Howes v. Nute, 4 Cliff. C. tents covering nearly similar inventions, c. 173. But cf. Miller v. Smith, supra. the enlargement of any one claim beyond

(a) By act of 1861, c. 88, § 15, it is en- the construction which might fairly be acted, that printed copies of the letters- implied from its language would work in. patent of the United States, with the seal justice to other inventors who have equal

question for the court, the words of art having been interpreted by the jury.' (a) If there is any obscurity in them, reference may be had to the affidavit of the patentee, made and filed prior to the issuing of the patent.? No precise form of words is necessary, provided their import can be clearly ascertained by fair interpretation, even though the expressions may be inaccurate.: (6) But if the claim is of an abstract principle or function only, detached from machinery, it is void.* (C)

§ 490. Sufficiency of specification. The plaintiff must give some evidence of the sufficiency of the specification, if denied ; such as, the evidence of persons of science, and workmen, that they have read the specification, and can understand it, and have practised the invention according to it; and such evidence will be sufficient, unless the defendant can show that persons have been misled by the specification, or have incurred expense in attempting to follow it, and were unable to ascertain what was meant.5 (d) The sufficiency of the specification, in matters of description, is a question for the jury.® (@) If a whole class of substances be

I Neilson v. Harford, 8 M. & W. 806. 2 Pettibone v. Derriger, 4 Wash. 215.

2 Wyeth v. Stone, 1 Story, 273 ; Minter v. Mower, Webst. Pat. Cas. 138, 141 ; 8. C. 6 Ad. & El. 735 ; Derosne v. Fairie, Id. 154, 157 ; 5 Tyrw. 393 ; s. c. 1 M. & Rob. 457.

* Blanchard v. Sprague, 3 Sumn. 535 ; Wyeth v. Stone, 1 Story, 273 ; Lowell v. Lewis, 1 Mason, 187 ; Earle v. Sawyer, 4 Mason, 1 ; Phillips on Patents, pp. 95–100, 109-113; Godson on Patents, c. 3, § 5.

5 Turner v. Winter, 1 T. R. 602 ; Cornish v. Keene, 3 Bing. N. C. 570 ; 8. C. 4 Scott, 337, See, on the requisites of a sufficient specification, Phillips on Patents, c. 11; Godson on Patents, c. 4. See also Bickford v. Skewes, Webst. Pat. Cas. 219; Househill Co. v. Neilson, Id. 692.

6 Walton v. Potter, Webst. Pat. Cas. 595.

claims upon the public for support, and Court is able to say from mere comparison whose patents would be narrowed by such what are the inventions described in each, enlarged construction, and the strict con- and to affirm from such comparison that struction of all the claims will be adopted they are not the same, then the question by the courts. Delong v. Bickford, 13 of identity is one of pure construction, and Fed. Rep. 32 ; Neacy v. Allis, Id. 874. not evidence, and consequently is m:ut

(a) On the question of the identity of ter of law for the Court without any auxthe inventions described in a patent and iliary matter of fact to be passed on by in a re-issue, the following rule of con- the jury when the action is at law. Ci. struction was given in Heald v. Rice, in Jennings v. Kibbe, 10 Fed. Rep. 669. the Supreme Court of the United States, (b) And the specification is to be con12 Fed. Rep. 222 :

strued according to the true import of the Where the question of identity of the in- words used, rather than by their gramvention in the original and re-issued pat- matical arrangement. Allen v. Hunt, 6 ents is to be determined by their face from McLean C. C. 303. mere comparison, and if it appears from (c) Smith v. Ely, 5 McLean C. C. 76. the face of the instruments that extrin- (d) Curtis on Patents, 3d ed. $ 478. sic evidence is not needed to explain (e) Battin v. Taggart, 17 How. (U. S.) the terms of art, or to apply the descrip- 74 ; Hogg v. Emerson, 11 Id. 587. tions to the subject-matter, so that the

mentioned as suitable, the plaintiff must show that each and every of them will succeed; for otherwise the difficulty of making the instrument will be increased, and the public will be misled. But if the title describes the patent to have been granted for improvements, in the plural, whereas the specification discloses only one improvement, it is no variance. The object of the specification is, that after the expiration of the term the public shall have the benefit of the discovery. It must be understood according to the acceptation of practical men at the time of its enrolment; and be such as, taken in connection with the drawings, if any, to which it refers, will enable a skilful mechanic to perform the work.+ (a) If it contain an untrue statement in fact, which, if literally acted upon by a competent workman, would mislead him, and cause the experiment to fail, it is bad, even though a competent workman, acquainted with the subject, would perceive, and in practice correct, the error. (6)

$ 491. Assignment. Besides the formal proof of the assignment, where the plaintiff claims as assignee, he must show that the assignment has been recorded in the patent-office, before he can maintain any suit, either at law or in equity, either as sole or joint plaintiff, at least as against third persons. (c)

§ 492. Originality of invention. (2.) The next step in the plaintiff's proof is to show, that the invention is original, and his own and prior to any other. Of this point, as the applicant for

1 Bickford v. Skewes, 6 Jur. 167 ; 8. c. 1 Gale & D. 736.
2 Nickels v. Haslam, 7 M. & G. 378.
8 Liardet v. Johnson, Bull. N. P. 76 ; Newberry v. James, 2 Meriv. 446.

4 Crossly v. Beverly, 9 B. & C. 63 ; s. c. 3 C. & P. 513 ; Bloxam v. Elsee, 1 C. & P. 558 ; 6 B. & C. 169 ; Morgan v. Seaward, 2 M. & W. 544. 5 Neilson v. Harford, 8 M. & W. 806.

6 Wyeth v. Stone, 1 Story, 273.

(a) The words "or the equivalent there- (c) An invention may be assigned as for," in a claim, cannot apply to another well before as after the application for a invention differing in arrangement and patent; but the patents must be applied principle, but equivalent in result. The for and issued in the name of the invenwords embrace only colorable imitations. tor, and when obtained it will enure to the McCormick v. Manny, 6 McLean C. C. benefit of the assignee. Rathbone v. Orr, 539.

5 McLean C. C. 134. It seems that a (6) In construing the specification of license to un a patented machine, not claim in letters-patent, the entire specifi- being considered a personal privilege, is cation and drawings are to be examined ; assignable. Wilson v. Stolly, 5 McLean and though there is an error in showing C. Č. 1. Parol evidence is admissible in an how a particular element enters into the action by an inventor to recover an agreed combination claimed, if the residue of the consideration for permitting the defendant specification and the drawing afford means to take out the patent in his own name. to correct this mistake, it does not avoid Lockwood v. Lockwood, 33 Iowa, 509. the letters-patent. Kittle v. Merriam, 2 Curtis, C. Č. 475.

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