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stance, that the original letters patent were valid and operative; wherefore, appellants ask this court to hold that the original letters patent, having been valid and operative, as averred by complainant, for over fourteen years, no reissue thereafter could be legally obtained, because invalidity or inoperativeness are conditions precedent to the grant of a reissue." The answer to this assignment is obvious. The suits brought on the original patent may have been for infringements committed against particular parts of the invention, or modes of using it and putting it into operation, as to which the specification was clear, full, and sufficient; while, at the same time, there may have been certain other parts of the invention, or modes of using it and putting it into operation, as to which the specification was defective or insufficient, and which were not noticed until the application for reissue was made; or, in the original patent, the patentee may have claimed as his own invention more than he had a right to claim as new, -a mistake which might be corrected at any time. At all events, the court cannot say, as mere matter of law, that this might not have been the case.
We think that the objection to the decree going to the validity of the patent and the whole cause of action cannot be sustained.
*We are then brought to the proceedings in taking the account. The errors assigned on this part of the case are based on the exceptions taken to the master's report, which have already been noticed. They resolve themselves into two principal grounds of objection: First. That the master allowed the coinplainant all the profits made by the defendants by the use of the patented machine in folding cloths and strips as compared with doing the same thing by hand; whereas he should only have allowed the profits of using the complainant's patented machine as compared with a single folder, which the defendants allege was open to the public before their infringement commenced. Secondly. That the master, in allowing profits, took no account of the fact 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 only 25 cents for 144 yards, or about one-sixth of a cent per yard; whereas the defendants were charged with a profit of one-half of a cent per yard.
As to the first of these objections it is to be observed, first, that no evidence was pro luced before the inaster to show that, during the period of the infringement, there was open to the public the use of any machine for folding a single edge, which was aclapted to the work done by the defendants. The only evidence adduced for that purpose was the letters patent granted to S. P. Chapin, February 19, 1856, and the letters patent granted to J.S. McCurdy, dated February 26, 1856. No evidence was introduced to show that the folding-guides described in those patents were adapted to the folding of strips for corsets, which was the work required by the defendants, and for which they used the complainant's invention. On the contrary, it was proved by the positive testimony of the complainant (and not contradicted) that “the Chapin device could not be used for folding strips of materials on one or both edges for use upon corsets,” for reasons fully detailed in the testimony; and that "the McCurdy device is a binder calculated and adapted to fold selvaged-edged goods, such as ribbon and braid, and will fold the strip passing through it in the center only,” “and cannot be used for folding raw-edged strips of cloth, either on one or both edges." The complainant also testified that there was no other way known to him (and he testified that he had large experience on the subject) to do work like that done by the defendants, except by hand, or in the use of another patent owned by him, namely, the Robjohn patent, dated April 19, 1864, (which was produced in evidence,) which consisted of a folding-guide, folding one edge in combination with a device for pressing said fold to an edge, and then passing said folded strip through a narrower folder. folding the other edge, and pressing said fold by a pressing device. No evidence was adduced by the defendants to contradict this testimony.
It is proper to remark here that the affidavits presented to the master, and those afterwards presented to the court, as grounds of the respective applications to reopen the proofs, cannot be looked into on this hearing. They form no part of the evidence taken before the master on the reference; and no error is assigned (even if error could be assigned) to the refusal of the court to refer the case back to the master for the purpose of taking further testimony.
The second objection to the report is that the master, in estimating the profits chargeable to the defendants, did not take into account the fact 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 only 25 cents for 114 yards. To this objection it may be observed that the evidence before the master did not show by what process such folded strips were made, nor whether they were not really made by infringing the complainant's patent. As the proof stood before the master, they must have been made by the use of the complainant's machine, for there was no other known machine by which they could have been made at any such cost. And if made by the use of complainant's machine, the inference must be that the persons making them were infringing the complainant's patent, for they are not named in the list of those to whom the complainant had granted licenses, which list was presented before the master at the defendants' request. If made by such infringement they can hardly be set up against the complainant to reduce the amount of profits made by the defendants. There is something singular about this part of the case. If folded strips, suitable for the defendants' purpose, could have been procured in the market by them at such a low price as is pretended, why did they not procure them in that way after being enjoined against using the complainant’s machine, instead of making them by the disadvantageous method of using a single folder and folding one edge at a time? Was it from a knowledge of the fact that the persons who folded such strips were infringing the complainant's patent, and a consequent unwillingness to become further complicated in such infringements ? At all events, since the defendants chose to make their own folded strips in their own factory, instead of going outside to purchase them, or have them made by others, they cannot justly complain of being accountable for the profits realized in using the complainant's machine for that purpose. It might have been a better financial operation to have bought of others, or employed others to make the folded strips which they required, just as, in the case of the Cawood Patent, the railroad company would have done better not to have mended the ends of their battered rails, but to have had the cut off; but as they chose to perform the operation they became responsible to the patentee for the a:lvantage derived from using his machine. 94 U. S. 710. We do not think that the objection is well taken.
It follows that all the reasons of appeal must be overruled.
No error or ground of appeal is assigned upon the refusal of the court below to refer the cause back to the master for the purpose of reopening the proofs, although some observations on that point are submitted in the brief of the appellants. We think that that matter was fairly addressed to the discretion of the court, and cannot properly be made the ground of objection on this appeal. New evidence, discovered after the hearing before the master is closed, may, in proper cases, be ground for a bill of review, on which issue may be joined and evidence adduced by both parties in the usual way. The defendants are not concluded by the refusal of the court, on mere affidavits, a to refer the cause back to the master. An examination, however, of the affidavits presented to the court does not convince us that a further inquiry* should have been ordered.
In thus considering the case on its merits, as presented by the evidence taken before the master, his report thereon, and the exceptions to such re
port, we have deemed it unnecessary to make any remarks as to the status of a defendant before a master on a reference under a decree pro confesso. Both parties in this case seem to have taken for granted that the rights of the defendants were the same as if the decree had been made upon answer and proofs. In the English practice, it is true, as it existed at the time of the adoption of our present rules, (in 1842,) the defendant, after a decree pro confesso and a reference for an account, was entitled to appear before the master and to have notice of and take part in the proceedings, provided he obtained an order of the court for that purpose, which would be granted on terms. 2 Daniell, Ch. Pr. (1st Ed.) 804; Id. (20 Ed. by Perkins,) 1358; Heyn v. Heyn, Jac. 49. The former practice in the court of chancery of New York was substantially the same. 1 Hoff. Ch. Pr. 520; 1 Barb. Ch. Pr. 479. In New Jersey, except in plain cases of decree for foreclosure of a mortgage, (where no reference is required,) the matter is left to the discretion of the court. Sometimes notice is ordered to be given to the defendant to attend before the master, and sometimes not; as it is also in the chancellor's discretion to order a bill to be taken pro confesso for a default, or to order the complainant to take proofs to sustain the allegations of the bill. Nixon's Digest, "Art. Chancery," $ 21; Gen. Orders in Chancery, XIV., 3–7; Brundage v. Goodfellow, 8 N. J. Eq. 513.
As we have seen, by our eighteenth rule in equity it is provided that if the defendant make default in not filing his plea, demurrer, or answer in proper time, the plaintiff may, as one alternative, enter an order as of course that the bill be taken pro confesso, "and thertupon the cause shall be proceeded in ex parte.” The old rules, adopted in 1822, did not contain this ex parte clause; they simply declared that if the defendant failed to appear and file his answer within three months after appearance day, the plaintiff might take the bill for confessed, and that the matter thereof should be decreed accordingly; the decree to be absolute unless cause should be shown at the next term. See Equity Rules VI. and X. of 1882, 7 Wheat. vii., and Pendleton v. Evans, 4 Wash. C. C. 336; O'Hara v. MacConnell, 93 U. S. 150. Under these rules the English practice was left to govern the subsequent course of proceeding, by which, as we have seen, the defendant might have an order to permit him to appear before the master and be entitled to notice. Whether under the present rules a different practice was intended to be introduced, is a question which it is not necessary to decide in this case.
The decree of the circuit court is affirmed.
(114 U. S. 128)
(March 30, 1885.) 1. COMMISSIONER OF PATENTS-RESIDENCE-OFFICIAL.
The commissioner of patents is by law located in the patent-office. Rev. 8t. & 476. His official residence is therefore at Washington, in the District of Columbia. 2. SAME-SERVICE OF WRIT-ACT op MARCH 3, 1875--DEFENDANT.
The act of congress, March 3, 1875, c. 137, (18 St. 470, c. 1,) exempts a defendant from suit in any district of which he is not an inhabitant, or in which he is not found at the time of the service of the writ. It is an exemption which he may waive, but unless waived, he need not answer, and will not be bound by anything which may be done against him in his absence. Appeal from the Circuit Court of the United States for the District of Vermont.
Sol. Gen. Phillips and Frank T. Brown, for appellant. W. E. Simonds. for appellee.
*WAITE, C. J. This is an appeal from a decree on a bill in equity fiied in the circuit court of the United States for the district of Vermont against the commissioner of patents, under section 4915 of the Revised Statutes. That
section is as follows. “Sec. 4915. Whenever a patent, on application, is refused, either by the commissioner of patents, or by the supreme court of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filing in the patent-office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases where there is no opposing party, a copy of the bill shall be served on the commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.” On the filing of the bill, a subpæna was issued commanding the “commissioner of patents of the United States of America" to appear before the court in Vermont and answer. On the eighteenth of October, 1883, the commissioner made the following indorsement on the writ:
“WASHINGTON, D. C., October 18, 1883. "I hereby accept service of the within subpena, to have the same effect as if duly served on me by a proper officer, and I do hereby acknowledge the receipt of a copy thereof.
E. M. MARBLE, Com'r of Patents. "(Оfice of Com'r of Patents. Received Oct. 18, 1883.)"
And afterwards, and on said twenty-third day of October, A. D. 1883, a letter from the commissioner of patents was filed, which said letter is in the words and figures following:
"DEPARTMENT OF THE INTERIOR,
“UNITED STATES PATENT-OFFICE,
“WASHINGTON, D. C., October 18, 1883. "SIR: I am in receipt of your letter of the 16th instant, inclosing copy of a bill of complaint entitled Hill & Prentice et al. v. The Commissioner of Patents of the United States of America, in the United States circuit court for the district of Vermont, praying that said court direct the comunissioner of patents to issue a patent to the assignees of Hill & Prentice for the invention disclosed and claimed in their application filed in this office March 30, 1880, for an improvement in milk-coolers; also a subpoena to appear and answer to said bill on the 5th proximo and a certified copy of said subpæna. I herewith return the subpæna, service accepted, and have to inform you that I shall not appear in defense in said bill. "Very Respectfully,
E. M. MARBLE, Commissioner "Mr. W. E. Simonds, Hartford, Conn.”
No other service of process was made on the commissioner, and he made no other appearance in the cause than such as may be implied from his acceptance of service and his letter as above. In due course of proceeding a decree was entered adjudging that “Samuel Hill and Benjamin B. Prentice, as inventors, and the Vermont Machine Company, as assignee of said inventors, are entitled to have issued to them letters patent
as prayed for in the petition and bill of complaint.” No one was made defendant to the bill except the commissioner of patents, and Hill, Prentice, and the machine company, the complainants, were all citizens of Vermont. Benjamin Butterworth, the commissioner of patents, took this appeal, and the only questiun presented under it for our consideration is whether the circuit court of the district of Vermont had jurisdiction so as to bind the commissioner by the decree which was rendered.
It is contended that the supreme court of the District of Columbia has ex
clusive jurisdiction of suits against the commissioner brought under this section of the Revised Statutes. In the view we take of this case, however, that question need not be decided. By section 739 of the Revised Statutes, as well as by the act of March 3, 1875, c. 137, § 1, (18 St. 470,) it is provided in substance that, with some exceptions which do not apply to this case, “no civil suit shall be brought before either of said courts (the circuit or district courts of the United States) against an inhabitant of the United States, by any original process, in any other district than that of which he is an inhabitant, or in which he may be found at the time of serving the writ.”. We entertain no doubt that this statute applies to suits brought under section 4915. The applicant is to have his remedy under that section by bill in equity, and by the adjudication “of the court having cognizance thereof, on notice to adverse parties, and other due proceedings had.” A bill in equity implies a suit in equity, with process and parties. The prayer for process is one of the component parts of the structure of a bill, and its purpose is to compel the defendant to appear and abide the determination of the court on the subjectmatter of the proceeding. Story, Eq. Pl. 44.
The bill in this case was filed against the commissioner alone, and it does not appear that he was an inhabitant of the district of Vermont. The patentoffice is in the department of the interior, (Rev. St. § 475,) which is one of the executive departments of the government at the seat of government, in the District of Columbia. Rev. St. § 437. The commissioner of patents is by law located in the patent-office. Rev. St. § 476. His official residence is therefore at Washington, in the District of Columbia. The subpæna in this case was delivered to him in the District of Columbia, and his acceptance of service was made there. That is apparent from the face of his indorsement and the letter which was written afterwards, and filed in the cause undoubtedly as proof of a delivery of a copy of the bill which the law required should be served on him. Both the indorsement and the letter purport to have been written at Washington, and the letter in the patent-office. Unless, therefore, the acceptance of service as indorsed on the writ is to be treated as a voluntary appearance by the commissioner in the court in Vermont, without objection to the jurisdiction, the case stands as it would if the process had been actually served on him in the District of Columbia by some competent officer. The circuit court was of opinion that by his acceptance of service the commissioner waived all objection to the jurisdiction, and consented to be sued away from the seat of government and from his residence. In this we think there was error. The fair meaning of the indorsement on the writ is that the commissioner admits the service with the same effect it would have if-made by an officer in the District of Columbia. No appearance is thereby entered in the
Service of the subpæna in the District is acknowledged, but nothing
In the letter which followed the indorsement of service, both counsel and the court were informed that the commissioner declined to appear. The parties proceeded, therefore, at their own risk, and without the consent of the defendant to the jurisdiction of the court. Such being the case, we are of opinion that the court was without jurisdiction, and had no authority to enter the decree which has been appealed from. The act of congress exempts a defendant from suit in any district of which he is not an inhabitant, or in which he is not found at the time of the service of the writ. It is an exemption which he may waive, but unless waived he need not answer, and will not be bound by anything which may be done against him in his absence. What is here said, of course, does not apply to cases where the suit is brought and service is made under sections 736, 737, and 738 of the Revised Statutes.
Without considering any of the other questions which have been presented in the argument, or which might be suggested under the statute, we reverse the decree of the circuit court and remand the cause, with instructions to dismiss the bill without prejudice, for want of jurisdiction.