delivered the opinion of the court.
The appellees, on the 24th of July, 1848, obtained from the court above mentioned an injunction to restrain the appellants from using or vending one or more planing machines substantially the same in construction and mode of operation as the machine which had been patented to William Woodworth, deceased.
In their bill they allege the originality of the invention of the patentee, the extension of the patent after his death for the space of seven years beyond its original limitation to the appellee, William W. Woodworth, as administrator of the inventor, and the grant by said administrator to the appellee, Brooks, of the exclusive right to construct and use the invention within certain specified limits for the entire period of that extension. The bill further alleges a second extension by act of Congress of the patent to the said administrator for the term of seven years from the 27th day of December, 1849; but states that in consequence of doubts entertained as to the correctness of the specification, and of the fact of said letters-patent having been found to be inoperative, they were duly surrendered, and new letterspátent bearing date on the 8th day of July, 1845, were issued to the appellee, William W. Woodworth and his assigns, for the residue of the term of 28 years from 27th of December, 1828; that subsequently to this last renewal the appellee, William W. Woodworth, had granted to the appellee, Wilson, and to his assigns, all the right and title acquired by him by the issue of the last letters-patent with the amended specification. That the appellee, Brooks, by his deed of the 20th of July, 1847, had granted and assigned to the appellee, Tyler, one half Brooks’s right in the patent to Woodworth for the'term ending on the twenty-seventh of December, 1849, to be used within the town of Lowell, and not elsewhere. That the appellee, Wilson, by deed of the'20th of May, 1848, assigned and confirmed to Brooks and his assigns, the exclusive right of constructing and using
The appellants, by their answer state, that during a part of the time which has elapsed between the autumn of 1841 and April 1st, 1844, they have used in their mill at Lowell a single planing machine constructed according to a patent granted to James H. Hutchinson on the 16th of July; 1839, which machine, in some of its combinations, substantially resembles the machine specified in the patent granted to Woodworth in 1845, but is unlike any machine specified in the patent to Woodworth in 1828. ' They aver, also, that the planing business had been carried on as aforesaid, in virtue of the Hutchinson machine,, at
' At the May term of the court, 1849, this cause coming on. to be heard upon the bill, the answers, replications, and exhibits, by the consent of the parties it was decreed by the court, that the appellees (the complainants below) were entitled to the perpetual injunction and to the account prayed for by the bill; said account to commence at such time as shall be found by the master, and be • confirmed by the court. The decree proceeds that, the master in taking said account shall have power to require the parties to produce before him, on oath, all books and papers .relating thereto, and to hear, such oral evidence as either party may produce, and oh the motion of either of the parties, to examine either of the other parties, upon interrogatories. And all farther directions are reserved until the .coming in of the master’s report.-
In pursuance of this decretal order, upon the examination of the parties on oath, and upon evidence produced
aliimde,
the master reported that the amount of gains • and- profits received by the defendants-below upon 3,962,700 feet of plank, the num-; ber of feet planed by them, was at the rate of fifty .cents per thousand feet, no exception being taken to the amount of the work stated to have been .done by the said defendants, or to the gross amount at-which the work was charged by them-per thousand, but exception being taken to the report of the master-upon thé ground that the rate of profit charged to me defendants below should have been one dollar' instead of fituj ~~*.ts per thousand, the court by a farther decretal order recommitted the report to the master, with instructions to ascertain the amount of profits -which may have been,- or with due diligence and prudence might have been, realized by the defendants, for the work done by them or their servants, by the machines de*
In the case before us the objection of misjoinder of the plain* tiffs nowhere appears upon the pleadings, nor, for aught that is disclosed, was it insisted upon even at the hearing: it is urged for the first time after the hearing and after a final decree, and ito allow this objection at so late a stage of the proceedings, would be a surprise upon the appellees, and might operate the most serious mischiefs. In this case, and at this time, the allowance of such an objection would be peculiarly improper, for here the objection cannot be viewed as having been merely waived by reasonable and ordinary implication, but the defendants have expressly consented to a decree between the parties as they were then arrayed upon the record. As to this objection, therefore, we think it comes too late to be of any avail, and should not affect the cognizance of the court either as to the parties or the subject-matter of the controversy. 2d. On the part of the appellees
“ This cause came on, &c.— and.by consent of parties it is declared by the court ” — what ? “ That the complainants are en-. titled to the perpetual injunction and the account prayed for by the bill.” It seems to us incomprehensible, that by this consent of the defendant below, he had consented to any thing precise and unchangeable beyond the perpetual injunction, much more so that he had thereby bound himself to acquiescence in any shape or to any extent of demand which might be made against him under the guise of an account. Indeed the complainants . below, and the Circuit Court itself, have shown by their own interpretation of this decretal order, that they did" not understand it to mean, as in truth by'no just acceptation it could mean, any thing fixed, definite and immutable ; for the complainants below excepted to the report of the master, and the court recommitted that report with a view to its alteration. Nor can we regard the reference to the master as in the nature of an arbitration ; for if so deemed, the award of that officer must have been binding, unless it could be assailed for fraud, misbehavior, or gross mistake of fact. In truth, the account consented to was the account prayed for by the bill, and in the plain words of the bill, viz., “ that the defendants may be decreed to account for and pay over all such gains find profits as have accrued to them from using the said machines since the expiration of said original letters-patent.” This language. is particularly clear and signi.ficant — such gain and profits, and such only, as have actually accrued to the defendants; arid we are unable to perceive how, by such an .assent, the appellants, the defendants below, could have been concluded against exceptions to any thing and every thing which might have .been evolved by that report, however illegal or oppressive.
Considering next the decretal order for the recommitment of the first report, the second -report, made in gbedience to that order, and final decree founded upon the second report, we are constrained to regard them all as alike irreconcilable with the prayer of the bill, with the just import of the consent decree, and with those principles,- which control the action of courts of
We think that the second report of the master, and the final decree of the Circuit Court, are warranted neither by the prayer of the bill, by the justice of this case, nor by the well-established •rules of equity jurisprudence.
, If the appellees, the plaintiffs below, had sustained an injury to their legal rights, the courts of law were open to them for redress, and in those courts' they might, according to a practice, •which however doubtful in point of essential right, is now too inveterate to be called in question, have claimed not compensation merely, but vengeance, for such injury as they could show that they had sustained. But before a tribunal which refuses
There they will be allowed to claim that which, ex cequo et bono, is theirs, and nothing beyond this.
In the present case it would be peculiarly harsh and oppressive, were it consistent with equity practice, to visit upon the appellants any consequences in the nature of a penalty. It is clearly shown that the appellants, in working their machine,
. were proceeding under an authority equal to that (the same indeed) which bestowed on Woodworth and his assignees the right to their monopoly. The appellants were .using a machine patented by.the United States to Hutchinson, and might well have supposed that the right derived to them from such a source was regular and legitimate. They were, then, in no correct sense, wanton infringers upon the rights of Woodworth, or of those claiming under him. So soon as the originality and priority of the Woodworth patent was ascertained by law, the appellants consented to be perpetually enjoined from the use of their machine, (the Hutchinson machine,) and to account for whatever gains and profits they had received from its use. Under these circumstances, were the infliction of damages, by way of penalty, ever consistent with the practice of courts of equity, there can be perceived in this case no ground whatever for the •exercise of such a power.
On the contrary, those circumstances exhibit, in a clearer light, the propriety of restricting the account, in accordance with the prayer of the bill, to the actual gains and profits of the appellants, (the defendants below,), during the time their machine was in operation and during no other period. We are therefore of the opinion, that the decree of the Circuit Court is erroneous, and should be, as it is hereby, reversed, with costs; and that •this cause be remanded to the Circuit Court, with instructions to proceed therein in conformity with the principles ruled in this opinion.
Order.
This cause came on to be heard on the transcript of the. record from the Circuit Court of the United States for the District of • Massachusetts, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, reversed, with' costs; and that this cause be, ¡and the same is hereby, remanded to the said Circuit Court, for further proceedings to be had therein, in ■'conformity to the opinion of this court,