| U.S. Circuit Court for the District of Massachusetts | May 15, 1852
The act of July 4, 1836 [5 Stat. 123], § 14, enables patentees and their assignees to bring actions on the case, to recover damages for making, using, or selling the thing, whereof the exclusive right is secured by a patent. Two inquiries arise in this case. The first is, whether, upon the facts stated, the law imports either the damage, or the injury, both which are necessary, by the common law, to support an .action on this case. The second is, whether an action on the case, for the violation of a patent-right, was intended to be given by the patent act, where there was neither damage nor injury received, according to the principles of the common law. As to the injury, the general rule of the common law is, “volenti non fit injuria;” and, in accordance with this maxim, no one can maintain an action for a wrong, where he has consented, or contributed to the act of which he complains. And this principle has been applied to numerous cases in which, though the defendant was in the wrong, the plaintiff’s negligence had contributed to produce the consequential damages which were sought to be recovered in tue action. Here,, the plaintiffs not only consented, but cooperated; for, through their agents, they were themselves' the purchasers. As to the damage, it is true that, in general, the law imports damage from the violation of a right, but I am not aware that damage has ever been presumed by law from an act in which the plaintiff cooperated, and which, therefore, must be supposed to have been done for his own benefit, or at least not to have been to his loss. It was argued that, ex necessitate rei, such a sale should be held to be an infringement, because it is only by such evidence that an infringement of many patents can be shown. This may be sufficient to prove that such a sale may be evidence of an infringement, and that from such a sale, accompanied by other circumstances likely to exist, and capable of being proved if the defendant does infringe, a jury would be warranted in finding an infringement by sales to others than the pat-entee. If the plaintiff’s agent purchased the matches at a shop where matches and similar articles may be expected to be found for sale, if they were sold to him in the usual course of the trade there, and if he saw others exposed for sale, it would be a natural inference for a jury to make, that this was not the only parcel sold; that, in the course of the defendant's business, he had sold what he showed himself willing and desirous of selling, and what customers
Nor can I find any 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. Such I understand to have been the principle proceeded upon by Mr. Justice Story, in Whittemore v. Gutter [Case No. 17,600], where he held that making a machine for a philosophical experiment', or to test the sufficiency of the specification, would not be an infringement; and in Sawin v. Guild [Id. 12,391], where he says the act must be with intent to deprive the patentees of some lawful profit; and also by Mr. Justice Patteson, in Jones v. Pearce, Webst. Pat. Cas. 125, where he excepts the making of a patented article for mere amusement, and not for profit. In these cases, inasmuch as there was supposed to be no damage, there was thought to be no action. And though I am rather disposed, with Mr. Justice Washington, in Watson v. Bladen [Case No. 17,277], to doubt whether the assumption is correct, that in such cases there is no damage; yet if the assumption be correct, I think the inference is sound that no action lies. It is true some of the patent acts which were repealed by the act of 1836 [5 Stat. 123], gave an action for a sale, if made without the consent, in writing, of the patentee, or of his assigns. But the law now in force contains no such provision; and if it did, I should still be of the opinion, that a sale to the patentee himself was not such a sale as was intended by the statute; that no sale was within its meaning, except one which would be within the terms of the grant contained in the letters-patent, which is a grant of an exclusive right to make, use, and vend to others to be used. In this case, I am of opinion that the sale to the plaintiffs’ agent was a sale to them, and that such a sale is not, per se, an infringement. On a statement of facts, I am not at liberty to draw any inferences, and the judgment must be for the defendants.