19 F. Cas. 672 | U.S. Circuit Court for the District of Rhode Island | 1844
(summing up to the jury). I have already in the course of the discussion at the bar had occasion to express my opinion upon the second point made at the bar, as a matter of law-; for there is no dispute as to the facts. I shall now, therefore, merely recapitulate it. For the defendants the argument is, that the Eagle Screw Company had a right to use the machines purchased by them from Read before Crum’s patent was obtained, although Crum was the prior and true inventor and patentee under the 7th section of the patent act of 1839, c. 88; and great reliance is placed upon the case of McClurg v. Kingsland, 1 How. [42 U. S.] 202. In my opinion, neither the act of congress, nor the case of M’Clurg v. Kingsland, justifies such a doctrine. Supposing the argument to be well founded, what would be the legal result? Why, that a mere wrong-doer, who by fraud or artifice, or gross misconduct, had gotten knowledge of the patentee’s invention before he could obtain his patent, without any laches on his part, could confer upon a purchaser under him — bona fide and without notice — a title to the patented machine, which he himself could not exercise or possess. Certainly there is no ground to say. that a person, who pirates the invention of any party prior in point of time and right, can make any valid claim thereto against the prior and true inventor. How, then, can he confer on others a title, which he himself does not possess? Upon general principles, the as-signee can ordinarily claim no more than his assignor can lawfully grant. But it is said, tha t the 7th section of the act of 1839, c. 88, declares, “that every person of corporation, who has or shall have purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application by the inventor or discoverer for a patent, shall be held to possess the right to use and vend to others to be used the specific
The case of McClurg v. Kingsland. 1 How. [42 U. S.] 202, properly considered, contains nothing in conflict with this doctrine. The learned judge (Mr. Justice Baldwin) who delivered tile opinion of the court, in commenting upon the 7th section of the act of 1839. said: “The object of this provision is evidently twofold; first, to protect the person, who used the thing patented by having purchased. constructed, or used the machine, &c. to which the invention is applied, from any liability to the patentee, or his assignee; second, to protect the rights granted to the patentee against any infringement by any other persons.” This language is certainly general; but then, in order to understand it correctly, we must apply it to the very case then before the court; and in this view, it was perfectly accurate and appropriate. What was that case? It was a case, where the patentee, before he attained his patent, allowed the defendants to use for their own profit the very Improvements invented by him; and indeed, the improvement was invented by the patentee, while he was in their employment and receiving wages from them. and he freely allowed them to use it. After-wards, the assignee of the patentee brought the suit against the defendants for using the improvement after the patent, was granted. The circuit court held, that the facts justified the jury in presuming, that the defendants used the improvement under a license or privilege originally granted to them by the inventor, and that the facts of the case brought it directly within the 7th section of the act of 1S39. Mr. Justice Baldwin presided in the circuit court at the trial, and he also delivered the opinion in the supreme
The other point of the defence is so completely met by the evidence, that it is unnecessary to comment on it. It seems to be admitted that the evidence is too strong in favor of the plaintiff, and against the defendant, to admit of any reasonable doubt; and accordingly the counsel for the defendants, considering the law upon the other point ruled against them, have confined themselves mainly in the closing argument to the question of damages. I shall leave the whole evidence for your consideration without remark. But upon the question of damages I would upon this occasion state (what I have often ruled before) that if the plaintiff has established the validity of his patent, and that the defendants have violated it, he is entitled to such reasonable damages as shall vindicate his right, and reimburse him for all such expenditures as have been necessarily incurred by him beyond what the taxable costs will repay, in order to establish that right. It might otherwise happen, that he would go out of court with a. verdict in his favor, and yet have received no compensation for the loss and wrong sustained by him. Indeed, he might be ruined. by a succession of suits in each of which he might, notwithstanding, be the successful party, so far as the verdict and judgment should go. My understanding of the law is. that the jury are at liberty, in the exercise of a sound discretion, if they see fit (I do not say that they are positively and absolutely bound under all circumstances) to give the plaintiff such damages, not in their nature vindictive, as shall compensate the plaintiff fully for all his actual losses and injuries occasioned by the violation of the patent by the defendants..
Verdict for the plaintiff. $2.000.