In suits for the infringement of a patent right, the rule of
damages is the amount which the infringer actually realized in
profits, not what he might have made by reasonable diligence.
After a bill is taken
pro confesso in the circuit
court, a motion to allow an answer to be filed is addressed to the
discretion of the court, and from a refusal so to do an appeal does
not lie to this Court.
A motion to dismiss the complainant's bill upon the ground that
he had parted with his interest was properly overruled, because
such assignment was not made until after the time when the
computation of profits ended.
Page 61 U. S. 199
The bill was filed by Nathan Mason of the City of Providence, in
the District of Rhode Island, planer of boards; Charles D. Gould,
of Albany, in the State of New York; William W. Woodworth, of Hyde
Park, in the Northern District of New York, as he is administrator
of William Woodworth, late of the City of New York, gentleman,
deceased, and as he is grantee of certain exclusive privileges
under and pursuant to an act of Congress, as is hereinafter fully
set forth; James G. Wilson, formerly of the City of Philadelphia,
and now of Hastings, in the State of New York, gentleman; and
Richard Borden, and Jefferson Borden, both of the Town of Fall
River and District of Massachusetts, against Dean, of the City of
Providence.
The facts of the case are stated in the opinion of the
court.
Page 61 U. S. 202
MR. JUSTICE McLEAN delivered the opinion of the Court.
A bill was filed in this case by Mason, claiming to be owners of
a territorial right to the exclusive use of the Woodworth patent
for planing boards, charging the defendant with using three of the
machines in the City of Providence, in violation of the
complainant's right. The suit was commenced the first year of the
extension of that patent by Congress, and the three machines which
were sought to be enjoined were those used during the first
extended term of the patent, under a license from its owners. A
preliminary injunction was granted.
Page 61 U. S. 203
At the June term, 1851, of the circuit court, a decree
pro
confesso was entered against the defendant, and he was
perpetually enjoined. The case was referred to a master, to take
and account of the profits or income derived by the defendant, or
which by reasonable diligence might have been realized by him, from
the use made of the three machines.
Exceptions were taken to the first report of the master, and it
was referred to him again under the same instructions.
Before the second report of the master, a motion was submitted
to the court by the defendant to set aside the decree
pro
confesso, and for leave to answer the bill, on the ground that
the Supreme Court, in the case of
Bloomer v.
McQueen, 14 How. 539, had held, in a case similar
to this that the licensee's privilege continued under the extension
of the patent by Congress, the same as under prior extensions; but
the court refused the motion; consequently, the appeal does not
bring before us any question under the last extension of the
patent.
At the November term, 1854, the master made his second and final
report, in which he stated the sum of $2,566.46 as the amount of
profits which the defendant, by reasonable diligence, might have
derived from the use made by him of such patented machines, and the
sales of the products thereof, during the period covered by the
suit.
The decree was entered, on the report of the master, for the
estimated amount of profits which the defendant, with reasonable
diligence, might have realized -- not what in fact he did realize.
This instruction was erroneous. The rule in such a case is, the
amount of profits received by the unlawful use of the machines, as
this, in general, is the damage done to the owner of the patent. It
takes away the motive of the infringer of patented rights, by
requiring him to pay the profits of his labor to the owner of the
patent. Generally, this is sufficient to protect the rights of the
owner; but where the wrong has been done, under aggravated
circumstances, the court has the power, under the statute, to
punish it adequately, by an increase of the damages.
The injury done is measured by the supply of planed boards
thrown upon the market, which lessens so much the demand. But, if
the liability of an infringer is to be increased by an estimate of
the work he might do, with great diligence, he will be more likely
to exceed the estimate than fall below it. This policy would
increase the evil of the wrongdoer, without benefit to anyone. In
Livingston v.
Woodworth, 15 How. 546, the true rule of damages in
such cases is laid down.
It is contended the court erred in refusing leave to the
defendant to answer, on the motion made at June term, 1853.
Page 61 U. S. 204
A motion to amend, or file an answer after default, is generally
addressed to the discretion of the court. Under some circumstances,
the court, for the purposes of justice, will go great lengths in
opening a default and allowing a plea to be filed. But this is done
or refused by the court, in the exercise of its discretion, which
is not subject to the revision of this Court.
In the case before us, the motion to file an answer was not made
until after the decree
pro confesso had been entered, and
a reference made to a master for an account. This was more than
three years after the bill was filed. Whether the circuit court
refused the motion on the ground of delay, or a want of merits in
the cause assigned, does not appear, but it is sufficient to say,
that on such grounds the decree cannot be reversed.
The motion to dismiss the complainant's bill, upon proof that
they had parted with all their interest in the subject matter of
the suit, was properly overruled. The allegation is that Mason
parted with his title in April, 1852, and the account of the
profits is brought down only to the 29th August, 1851. The right
asserted in this action was not affected by the conveyance of Mason
to Baker & Smith.
The refusal of the circuit court to permit a supplemental bill
to be filed by Baker & Smith, was, under the circumstances, a
matter of discretion in the court, and it affords no ground for the
reversal of the decree. It is not perceived what interest these
assignees could have in a suit for an infringement of the patent,
before their right accrued, and any attempt to make them parties,
with the view to benefit the defendants in the pending suit, was
unsustainable.
For the reasons assigned, the decree for damages must be
reversed, at the costs of the defendants in error, as founded on an
erroneous estimate, and the cause is remanded to the circuit court,
with instructions to enter a decree for the amount of the profits
realized by the defendant from the wrongful use of the
patent.