281 F. 51 | 8th Cir. | 1922
For convenience the parties will be designated as they were in the trial court. The plaintiff sued the defendant at law to recover damages for the infringement of patent No. 698,542, issued April 29, 1902, to Orlando W. Norcross for improvements in “flooring for buildings.” On a trial of the issues the defendant recovered a verdict. The trial court instructed the jury that their verdict must be for the defendant, unless they found from the evidence that the defendant was duly notified of the claimed infringement prior to the period for which plaintiff sought to recover damages, and that, if the jury should find for the plaintiff on the question of notice, then their verdict should be for nominal damages only. Counsel for plaintiff claims that this charge was erroneous. The trial court’s view as to the question of damages has been rendered immaterial by the verdict of the jury, unless we shall decide that the law did not require the plaintiff to give notice of the claimed infringement. We therefore proceed to discuss the question of notice. Whether a notice was required, as the court instructed the jury, depends upon the proper construction of section 4900, R. S. U. S. (Comp. St. § 9446), which reads as follows:
“Sec. 4900. Patented Articles Must be Marlced as Such. It shall be the duty of all patentees, and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that the same is patented, either by fixing thereon the word ‘Patented,’ together with the day and year the patent was granted, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label containing the like notice; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented.”
“The first question of the application of R. S. § 4900, may be disposed of by the statement that the statute applies to all patentees who have not given notice. This is clear from a review of the legislation. This provision began with Act Aug. 29, 1842, c. 263, 5 Stat. 543, which required all patentees who made and vended to marie the patented articles, and carried a fine penalty for not so doing. This was followed by Act March 2, 1861, c. 88, 12 Stat. 246, which contained the same requirement, and denied the right to damages unless notice was given. It is to be observed that both these acts were limited to patentees who made and vended. Then came Act July 8, 1870, c. 230, 16 Stat. 198, which extended the provision to all patentees, and to persons who made and vended, and the same phraseology is found in R. S. § 4900, as we now have it.”
Plaintiff cites the following cases in support of the proposition that, when none of the patented devices have been made or sold, or where the patent is exclusively for a process, section 4900, supra, does not apply: Dunlap v. Schofield, 152 U. S. 244, 14 Sup. Ct. 576, 38 L. Ed. 426; Campbell v. Mayor, etc., of New York City (C. C.) 81 Fed. 182; U. S. Mitis Co. v. Carnegie Steel Co. (C. C.) 89 Fed. 206; Ewart Mfg.
Ewart Manufacturing Co. v. Baldwin Cycle Chain Co., supra, was decided by Judge Putnam on demurrer. The plaintiff’s bill alleged:
“That neither plaintiff nor said Payne ever made, used, or sold a drive chain patented by said letters patent No. 237,771, nor licensed any one else so to do, and there was never any person who made or vended said patented drive chain for or under plaintiff and said Payne, or either of them.”
Judge Putnam, referring to the above allegation and to the case of Dunlap v. Schofield, supra, and Coupe v. Royer, 155 U. S. 565, 15 Sup. Ct. 199, 39 L. Ed. 263, said:
“There is nothing in the phraseology of the statute, as well as no expression in the opinions of the Supreme Court referred to, which will enable us to apply to circumstances like those at bar. under which the patent has lain absolutely dormant, a requirement in reference to marking patented articles, which, under those circumstances, became physically impossible.”
The case that Judge Putnam was considering was one where the patentee had not licensed any person to make, use, or sell the patented article under patent No. 237,771. The uncontradicted evidence in the case at bar shows that the plaintiff had issued a large number of .licenses under its patent, and that many licensees had paid royalties for buildings constructed and used. So Judge Putnam’s decision would not control the present case, because the facts are not the same.
In the case of U. S. Mitis Co. v. Carnegie Steel Co., supra, Judge Acheson decided that section 4900, supra, was not applicable to a case of a process patent, and that the failure to mark as required by the statute was not a bar to a recovery for infringement, where the defendant has been notified and continues to infringe in disregard of said notice. This case is no authority that the statute does not apply where the patentee does not vend or sell. The Circuit Court of Ap
“It is immaterial that in the present instance the complainants neither license nor sell their machines, reserving the benefit of the patent for the advantage of their own business. The fact still remains that without notice, either direct or constructive, the defendants are entitled to be regarded as acting innocently, and so not liable to damages, by the express provision of the statute.”
On the subject of notice generally, and that profits are not recoverable without notice, see F. B. F. Co. v. Shapiro & Aronson, 278 Fed. 435 (C. C. A. 3d Circuit).
As a result, of our consideration of the cases cited by counsel, we find no controlling authority that the statute in question would not apply to the plaintiff, and upon sound reason we are of the opinion from an examination of the statute itself that it did apply to the plaintiff. The jury upon competent evidence found that there was no notice, and this finding renders it unnecessary to consider whether the rule as stated by the court as to damages was correct or not.
Judgment affirmed.