10 F. Cas. 629 | U.S. Circuit Court for the District of Southern New York | 1868
(after stating the facts as above). These reissued patents were fully sustained, on a final hearing, in a suit in equity, in this court, — Goodyear v. New York Gutta Percha, etc., Co. [Case No. 5,580], — in 1862, against all defences of invalidity and want of novelty. On the present application, the defendants do not deny the infringement alleged, but they take three objections to the plaintiffs’ bill.
By section 13 of the act of March 2, 1861 (12 Stat. 249), it is provided, that, “in all cases where an article is made or vended by any person, under the protection of letters patent, it shall be the duty of such person to give sufficient notice to the public that said article is so 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 patented, that may be impracticable, by enveloping one or more of the said articles, and affixing a label to the package, or otherwise attaching thereto a label, on which the notice, with the date, is printed; on failure of which, in any suit for the infringement of letters patent, by the party failing so to mark the article, the right to which is infringed upon, no damage 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 or vend the article patented.” The objection taken is, that the bill does not aver that the plaintiffs, or either of them, marked, as required by the statute, the articles made or vended under the patent. There are several answers to this objection: (1) It does not appear, by the bill, that the plaintiffs, or either of them, have ever made or vended any articles under the patent, and that fact is not shown by the defendants. (2) If that fact did appear, either by the bill or otherwise, it would be for the defendants to show a failure by the plaintiffs to mark, as required, the articles made or vended, and then the burden of proof would be on the plaintiffs to show that, before suit was brought, the defendants were duly notified that they were infringing the patent, and that they continued, after such notice, to make or vend the article patented. (3) The penalty imposed by the statute, for a failure to mark patented articles, is only the taking away of the right to recover damages in the suit. It does not affect the right to an injunction, either perpetual or provisional, as a remedy. (4) It is questionable, whether the statute applies to a suit in equity, or to any other suit, except an action on the case for damages, brought under section 14 of the act of July 4, 1836 (5 Stat 123), that being the only species of suit in which the plaintiff can recover damages for the infringement of a patent. The plaintiff in a suit in equity on a patent does not recover damages. Livingston v. Woodworth, 15 How. [56 U. S.] 546. 559.
It is objected, also, that the plaintiffs are improperly joined, and that it is not proper, in a suit in equity on a patent, to join as plaintiff, with the owner of the legal title to the patent, a party who is a mere licensee. The practice is well settled, that It is proper, in a suit in equity on a patent, to join as plaintiff, with the owner of the legal title to the patent, the party who is immediately injured by the infringement, and who is equitably entitled to the fruits of the recovery in the suit Goodyear v. Central R. Co. [Case No. 5,563], before Mr. Justice Grier; Stimpson v. Rogers [Id. 13,457], before Judge Ingersoll. It is averred, in the bill, that the Vulcanite Jewelrjr Company is entitled to sue for, and receive to its own use, in the name of Goodyear, administrator, and itself, all the damages occasioned by infringements of the reissues, by the manufacture, sale, or use of articles covered by the license to it, made in violation of the reissues, and that this suit is brought for its benefit. This suit is, therefore, properly brought in the name of those who are joined as plaintiffs in it.
The objection is taken, also, that the bill is not verified by Goodyear. The president of the company is, on the facts, the proper party to verify it, and he has done so, and the verification contains the proper averments.
[For other cases involving this patent, see note to Goodyear v. Mullee, Case No. 5,577.]
