dеlivered the opinion of the court. lie recited the facts as above stated, and continued:
The plaintiffs in the present suit, Birdsell, the patеntee, in whom is the legal title, and the Birdsell Manufacturing Company, his licensee, in whom is the beneficial interest, make three objections to the dеcree set up by way of estoppel: 1. That the Birdsell Manufacturing Company was not a party. 2. That the present defendants were not parties.. 3. That only nominal damages were recovered and paid.
1. A licensee of a patent cannot bring a suit in his own name, at law or in equity, for its infringement by. a stranger; an action at law for the benefit of the licensee must be brought in the name of the patentee alone; a suit in equity may be brought by the patentee and the licensee together.
Gayler
v.
Wilder,
2.
It is a more serious question whether a decree in favor of the patentee, upon a bill in equity against one person for making and selling a patented machine, is a bar. to a subsequent suit by the patentee against another person for afterwards using the same machine within the term of the patent. A license from the patentee .to make, use and sell machines gives the licensee the right to do so, -within the scope of the license, throughout the term of the patent; and has the same effect upon machines sold by the licensee under authority of his •license, that a sale by the patentee has upon machines sold by himself, of wholly releasing them from the monopoly, and discharging all claim of the patentée for their use by anybody ; because such is the effect of the patentee’s voluntary act of licensing or selling, in consideration оf the sum paid him for the license or sale.
Adams
v.
Burke,
This view is in accord with the judgment of Yice-Chancеllor Wood (afterwards Lord Chancellor Hatherley) in two suits brought by a patentee, the on# against the manufacturer, and the other against the user, where the plaintiff asked for an injunction against each, for an account against the manufacturer, and for damages against the user, аnd declined to accept an offer of the user to pay him the like royalties that other persons paid. It was argued in behalf of. the user that the patentee was not entitled to damages against him, as well as to an account against the manufacturer; and could not havе an account against the seller without adopting the sale, and, if he adopted the sale, had no .right to get anything from the purchaser. But the Yice-Chancellor held that the plaintiff was entitled to an injunction, to an account, or, upon his waiving that, to damages against the manufacturеr, and also to damages against the user, and said: “ With regard to the damages, it has never, I think, been held in this court that an account, directed against a manufacturer of a patented' article, licenses the use of that article in the hands of all the purchasers. The patent is a сontinuing patent, and I do not see why the article should not be followed in every man’s hand, until the infringe-, ment is got rid of. So long as the article is used, there is сontinuing damage.”' “As to the royalties, I cannot compel the plaintiff to accept the same royalty from these defendants as he rеceives from others. I cannot in the decree do less than give the plaintiff his full right, and I cannot bargain for him what he may choose, or may not сhoose, to do.” Penn v. Bibby, L. R. 3 Eq. 308; S. C. 15 Weekly Reporter, 192.
3. If one person is in any'toase exempt from being sued for damages .for using the same machine for the making' and sell *489 ing of which damages have been recovered against and paid by another person, it can only be when actual damages have been pаid, and upon the theory that the plaintiff has been deprived of the same property by the acts of two wrongdoers, and' has received full compensation from one of them. In that viéw, the case of the patentee, whose right of property under his patent had been invaded, would be analogous to that of one. from whom personal property had been taken.
But, according.to the law of England, as well as of America, the owner of a chattel, which others have taken from him and converted to their own use, is not deprived of his property therein- by recovering judgment for damages against any or ail of them, without- actual satisfaction by somebody. By the law of England* indeed, as declared by its' cоurts, upon ■ technical. grounds, the owner of a chattel, who has recovered judgment for its value in trover against one of two joint tortfeasоrs, cannot, although that judgment remains unsatisfied, bring, a like action against the other for the same cause. But, even by that law, such a judgment against., the .one, without satisfaction, does not vest the property in the chattel in him, or bar a subsequent action against the other for continuing to detain thе chattel. Holroyd and Littledale, JJ., in Morris v. Robinson, 5 D. & R., 34, 47, 48; S. C. 3 B. & C. 196, 206, 207; Brinsmead v. Harrison, L. R. 6 C. P. 584, and L. R. 7 C. P. 547, 554; Ex parte Drake, 5 Ch. D. 866. In Brinsmead v. Harrison, Mr. Justice Willes observed that to say that the mere. obtaining judgment for nominal damages vésts the property in the defendant would be an absurdity. L. R. 6 C. P. 588.
' By our law, judgment against one joint trespasser, without full satisfaction, is no bar to a suit against another for the same trespass.
Lovejoy
v.
Murray,
The result is, that, in any view- of the case, the decree of the Circuit Court dismissing this bilí was erroneous, and must be
Reversed-.