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its correctness on appeal unless, on the face of the bill, it appears manifest that it

was erroneous and improperly granted. 5. SAME-SUPREME COURT-VALIDITY OF ORIGINAL LETTERS PATENT.

After a decree pro confesso the supreme court cannot, on appeal, say, -as to a question raised by the defendant upon the allegation of the bill referring to the reissue of letters patent, and as to the validity of such reissue upon the complainant's own statement of the original patents being confirmed in numerous suits,matter of law, what effect such suits had to show that the original letters patent were

valid and operative. 6. EXAMINATION OF Facts upon which affidavits accompanying an application to re

open the proof before the master was based. Appeal from the Circuit Court of the United States for the Southern District of New York.

J. C. Clayton and A. Q. Keasbey, for appellants. Frederic H. Betts, for appellee.

BRADLEY, J. The appellee in this case, who was complainant below, filed his bill against the appellants, complaining that they infringed certain letters patent for an improved folding-guide for sewing-machines, granted to one Alexander Douglass, of which the complainant was the assignee. The patent was dated October 5, 1858, was extended for seven years in 1872, and was re*issued in December, 1872. The suit was brought on the reissued patent, ar copy of which was annexed to the bill, which contained allegations that the invention patented had gone into extensive use, not only on the part of the complainant, but by his licensees; and that many suits had been brought and sustained against infringers. The bill further alleged that the defendants, from the time when the patent was reissued down to the commencement of the suit, wrongfully and without license, made, sold, and used, or caused to be made, sold, and used, one or more folding-guides, each and all containing the said improvement secured to the complainant by the said reissued letters patent; and that the defendants derived great gain and profits from such use, but to what amount the complainant was ignorant, and prayed a disclosure thereof, and an account of profits, and damages, and a perpetual injunction. The bill of complaint was accompanied with affidavits verifying the principal facts and certain decrees or judgments obtained on the patent against other parties, and Douglass' original application for the patent, made in April, 1856, a copy of which was annexed to the affidavits. These affidavits and documents were exhibited for the purpose of obtaining a preliminary injunction, which was granted on notice.

The defendants appeared to the suit by their solicitor, May 3, 1879, but neglected to file any answer, or to make any defense to the bill, and a rule that the bill be taken pro confesso was entered in regular course June 10, 1879. Thereupon, on the second of August, 1879, after due notice and hearing, the court made a decree to the following effect, viz.: (1) That the letters patent sued on were good and valid in law; (2) that Douglass was the first and original inventor of the invention described and claimed therein; (3) that the defendants had infringed the same by making, using, and vending to others to be useil, without right or license, certain folding-guides substantially as described in said letters patent; (4) that the complainant recover of the defendants the profits which they had derived by reason of such infringement, by any manufacture, use, or sale, and any and all damages which the complainant had sustained thereby; and it was referred to a master to take and state an account of said profits, and to assess said damages, with directions to the defendants to produce their books and papers and submit to an oral examination if required. It was also decreed that a perpetual injunction issue to restrain the defendants from making, using, or vending any folding-guides made as theretofore used by them, containing any of the inventions described and claimed in the patent, and from infringing the patent in any way. Under this decree the parties went before the master, and the examination was com.

menced in October, 1879, in the presence of counsel for both parties, and was continued from time to time until November 3, 1880, when arguments were heard upon the matter, and the case was submitted. On Noveinber 12th the report was prepared and submitted to the inspection of counsel. On the 18th motion was made by the defendants' counsel, before the master, to open the proofs and for leave to introduce newly-discovered evidence. This motion was supported by affidavits, but was overruled by the master, and his report was filed December 10, 1880, in which it was found and stated that the defendants had used at various times, from January 18, 1877, to the cominencement of the suit, 27 folding-guides infringing the complainant's patent, and had folded 1,217,870 yards of goods by their use, and that during that period there was no means known or used, or open to the public to use, for folding such goods in the same or substantially the same manner, other than folding them by hand, and that the saving in cost to the defendants by using the folding-guides was three cents on each piece of six yards, making the amount of protit which the complainant was entitled to recover, $6,089.35; and that during the same period the complainant depended upon license fees for his compensation for the use of the patented device, and that the amount of such fees constituted his loss or damage for the unauthorized use of his invention; and that, according to the established fees, the defendants would have been liable to pay for the use of the folding-guides used by them during the years 1877, 1878, and 1879, (the period covered by the infringement,) the sum of $1,350, which was the amount of the complainant’s*damages. The evidence taken by the master was filed with his report.

By a supplemental report, filed at the same time, the master stated the fact of the application made to him to open the proofs on the ground of surprise and newly-discovered evidence, (as before stated,) and that after hearing said application upon the affidavits presented, (which were appended to the report,) he was unable to discover any just ground therefor. The defendants did not object to this supplemental report, but on the tenth of January, 1881, they filed exceptions to the principal report, substantially as follows: (1) That, instead of the double guide or folder claimed in the complainant's patent being the only means for folding cloth or strips on each edge during the period of the infringement, (other than that of folding by hand,) the master should have found that such strips could have been folded by means of a single guide or folder, and that the use of such guides was known and open to the public long before 1877, and that such guides were not embraced in the complainant's patent; (2) that the amount of profits found by the master was erronegus, because it appeared that folded strips, such as those used by the defendants, were an article of merchandise, cut and folded by different parties at a charge of 25 cents for 144 yards; (3) that the profits should not have been found greater than the saving made by the use of the double guide as compared with the use of a single guide, or greater than the amount for which the strips could have been cut and folded by persons doing such business; (4) that the damages found were erroneous.

Other exceptions were subsequently filed, but were overruled for being filed out of time

Before the argument of the exceptions the defendants gave notice of a motion to the court to refer the cause back to the master to take further testimony in reference to the question of profits and damages chargeable against theni under the order of reference. In support of this motion further affi

davits were presented. * The exceptions to the report and the application to refer the cause back to the master were argued together. The court denied the motion to refer the cause back, overruled the exceptions to the report, and made a decree in favor of the complainant for the profits, but disallowed the damages. That decree is now brought here by appeal.

The appellants have assigned 14 reasons or grounds for reversing the de

cree.

The first nine relate to the taking of the account before the master, and his report thereon; the last five relate to the validity of the letters patent on which the suit was brought. It will be convenient to consider the last reasons first. The bill, as we have seen, was taken pro confesso, and a decree pro confesso was regularly entered up, declaring that the letters patent were valid, that Douglass was the original inventor of the invention therein described and claimed, that the defendants were infringing the patent, and that they must account to the complainant for the profits made by them by such in-. fringement and for the damages he had sustained thereby; and it was referred to a master to take and state an account of such profits and to ascertain said damages. The defendants are concluded by that decree, so far at least as it is supported by the allegations of the bill, taking the same to be true. Being carefully based on these allegations, and not extending beyond them, it cannot now be questioned by the defendants unless it is shown to be erroneous by other statements contained in the bill itself. A confession of facts properly pleaded dispenses with proof of those facts, and is as effective for the purposes of the suit as if the facts were proved; and a decree pro confesso regards the statements of the bill as confessed.

By the early practice of the civil law, failure to appear at the day to which the cause was adjourned, was deemed a confession of the action; but in later times this rule was changed, so that the plaintiff, notwithstanding the contumacy of the defendant, only obtained judgment in accordance with the truth of the case as established by an ex parte examination. Keller, Proced. Rom. § 69. The original practice of the English court of chancery was in accordance with the later Roman law. Hawkins v. Crook, 2 P. Wms. 556. But for at least two centuries past, bills have been taken pro confesso for contumacy. Id. Chief Baron GILBERT says: “Where a man appears by his clerk in court, and after lies in prison, and is brought up three times to court by habeas corpus, and has the bill read to him, and refuses to answer, such public refusal in court does amount to the confession of the whole bill. Secondly. When a person appears and departs without answering, and the whole process of the court has been awarded against him after his appearance and departure, to the sequestration; there also the bill is taken pro confesso, because it is presumed to be true when he has appeared, and departs in despite of the court, and withstands all its process without answering.” Forum Romanum, 36. Lord HARDWICKE likened a decree pro confesso to a judgment by nil dicit at common law, and to judgment for plaintiff on demurrer to the defendant's plea. Davis v. Davis, *2 Atk. 21. It was said in Hawkins v. Crook, qua supra, and quoted in 2 Eq. Cas. Abr. 179, that “the method in equity of taking a bill pro confesso is consonant to the rule and practice of the courts at law, where, if the defendant makes default by nil dicit, judgment is immediately given in debt, or in all cases where the thing demanded is certain; but where the matter sued for consists in damages, a judgment interlocutory is given; after which a writ of inquiry goes to ascertain the damages, and then the judgment follows." The strict analogy of this proceeding in actions of law to a general decree pro confesso in equity in favor of the complainant, with a reference to a master to take a necessary account, or to assess unliquidated damages, is obvious and striking.

A carefully prepared history of the practice and effect of taking bills pro confesso is given in Williams v. Corwin, Hopk. Ch. 471, by HOFFMAN, maswer, in a report made to Chancellor SANFORD, of New York, in which the conclusion come to, (and adopted by the chancellor,) as to the effect of taking a bill pro confesso, was that “when the allegations of a bill are distinct and positive, and the bill is taken as confessed, such allegations are taken as true, without proofs,” and a decree will be made accordingly; but “where the allegations of a bill are indefinite, or the demand of the complainant is in its nature uncertain, the certainty requisite to a proper decree must be afforded

by proofs. The bill, when confessed by the default of the defendant, is taken to be true in all matters alleged with sufficient certainty; but in respect to matters not alleged with due certainty, or subjects which from their nature and the course of the court require an examination of details, the obligation to furnish proofs rests on the complainant.”.

We may properly say, therefore, that to take a bill pro confesso is to order it to stand as if its statements were confessed to be true; and that a decree

pro confesso is a decree based on such statements, assumed to be true, (1 Smith, Ch. Pr. 153,) and such a decree is as binding and conclusive as any decree rendered in the most solemn manner. “It cannot be impeached collaterally, but only upon a bill of review, or [a bill]-to set it aside for fraud.” 1 Daniell, Ch. Pr. (1st Ed.) 696; Ogilvie v. Herne, 13 Ves. 563.1

Such being the general nature and effect of an order taking a bill pro confesso, and of a decree pro confesso regularly made thereon, we are prepared to understand the full force of our rules of practice on the subject. Those rules, of course, are to govern so far as they apply; but the effect and meaning of the terms which they employ are necessarily to be sought in the books of authority to which we have referred. By our rules a decree pro confesso may be had if the defendant, on being served with process, fails to appear within the time required; or if, having appeared, he fails to plead, demur, or answer to the bill within the time limited for that purpose; or if he fails to answer after a former plea, demurrer, or answer is overruled or declared insufficient. The twelfth rule in equity prescribes the time when the subpæna shall be made returnable, and directs that “at the bottom of the subpæna shall be placed a memorandum, that the defendant is to enter his appearance in the suit in the clerk's office on or before the day at which the writ is returnable; otherwise, the bill may be taken pro confesso." The eighteenth rule requires the defendant to file his plea, demurrer, or answer (unless he gets an enlargement of the time) on the rule-day next succeeding that of entering his appearance; and in default thereof the plaintiff may, at his election, enter an order (as of course) in the order-book that the bill be taken pro confesso; and thereupon the cause shall be proceeded in ex parte, and the matter of the bill may be decreed by the court at any time after the expiration of 30 days from the entry of said order, if the same can be done without an answer, and is proper to be decreed; or the plaintiff, if he requires any discovery or answer to enable him to obtain a proper decree, shall be entitled to process of attachment against the defendant to compel an answer, etc. And the nineteenth rule declares that the decree rendered upon a bill taken pro confesso shall be deemed absolute, unless the court shall at the same term set aside the same, or enlarge the time for filing the answer, upon cause shown upon motion and affidavit of the defendant.

It is thus seen that by our practice a decree pro confesso is not a decree as of course according to the prayer of the bill, nor merely such as the com

1 Reference is made to the first edition of Daniell (published 1837) as being, with the second edition of Smith's Practice, (published the same year,) the most authoritative work on English Chancery Practice in use in March, 1842, when our equity rules were adopted. Supplemented by the general orders made by Lords COTTENHAM and LANGDALE in August, 1841, (many of which were closely copied in our own rules,) they exhibit that “present practice of the high court of chancery in England," which, by our ninetieth rule, was adopted as the standard of equity practice in cases where the rules prescribed by this court, or by the circuit court, do not apply. The second edition of Mr. Daniell's work, published by Mr. Headlam in 1846, was much modified by the extensive changes introduced by the English orders of May 8, 1845; and the third edition by the still more radical changes introduced by the orders of April, 1850, the Statute of 15 & 16 Vict. c. 86, and the general orders afterwards made under the authority of that statute. Of course, the subsequent editions of Daniell are still further removed from the standard adopted by this court in 1842; but as they contain a view of the later decisions bearing upon so much of the old system as remains, they have, on that account, a value of their own, provided one is not misled by the new portions.

plainant chooses to take it; but that it is inade (or should be made) by the court, according to what is proper to be decreed upon the statements of the bill assumed to be true. This gives it the greater solemnity, and accords with the English practice, as well as that of New York. Chancellor KENT, quoting Lord ELDON, says: “Where the bill is thus taken pro confesso, and the cause is set down for hearing, the course (says Lord ELDON, in Geary v Sheridan, 8 Ves. 192) is for the court to hear the pleadings, and itself to pronounce the decree, and not to permit the plaintiff to take, at his own discretion, such a decree as he could abide by, as in the case of default by the defendant at the hearing.” Rose v. Woodruff, 4 Johns. Ch. 547, 548. Our rules do not require the cause to be set down for hearing at a regular term, but, after the entry of the order to take the bill pro confesso, the eighteenth rule declares that thereupon the cause shall be proceeded in ex parte, and the matter of the bill may be decreed by the court at any time after the expiration of 30 days from the entry of such order, if it can be done without answer, and is proper to be decreed. This language shows that the matter of the bill, ought at least to be opened and explained to the court when the decree is applied for, so that the court may see that the decree is a proper one. The binding character of the decree, as declared in rule 19, renders it proper that this degree of precaution should be taken.

We have been more particular in examining this subject, because of the attempt made by the defendants on this appeal to overthrow the decree by matters outside of the bill, which was regularly taken pro confesso. From the authorities cited, and the express language of our own rules in equity, it seems clear that the defendants, after the entry of the decree pro confesso, and while it stood unrevoked, were absolutely barred and precluded from alleging anything in derogation of, or in opposition to, the said decree, and that they are equally barred and precluded from questioning its correctness here on appeal, unless on the face of the bill it appears manifest that it was erroneous and improperly granted. The attempt, on the hearing before the master, to show that the reissued patent was for a different invention from that described in the original patent, or to show that there was such unreasonable delay in apply. ing for it as to render it void, under the recent decisions of this court, was entirely inadmissible, because repugnant to the decree. The defendants could not be allowed to question the validity of the patent which the decree had declared valid. The fact that the reissue was applied for and granted 14 years after the date of the original patent would, undoubtedly, had the cause been defended and the validity of the reissued patent been controverted, been strongly presumptive of unreasonable delay; but it might possibly have been explained, and the court could not say as matter of law, and certainly, under the decree of the court, the master could not say, that it was insusceptible of explanation. And on this appeal it is surely irregular to question the allegato tions of the bill. If anything appears in these allegations themselves going to show that the decree was erroneous, of course it is assignable for error; but any attempt to introduce facts not embraced in those allegations, for the purpose of countervailing the decree, is manifestly improper. The introduction of the original patent, pending the appeal, was clearly irregular.

The appellants have called attention to one matter in the allegations of the bill on which they rely, for the purpose of showing that, as matter of law, the reissued patent must be void. It is stated in their tenth assignment of error as follows: "(10) For that, on the face of the bill and the patent, the reissued patent in 'suit was illegally granted, and therefore void, and the court should have so held; and this court is now asked to so hold, because the bill avers that during the fourteen years of the original term of the patent the validity of said letters patent was established in numerous suits in the circuit courts of the United States, and that all persons sued took licenses and paid therefor, as well as many others not sued, thereby averring, in sub

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