Counsel fees are not a proper element for the consideration of
the jury in the estimation of damages in actions for the
infringement of a patent right.
This point has been directly ruled by this Court, and is no
longer an open question. By the fifteenth section of the Patent Act
of the fourth of July, 1836, the defendant is permitted to plead
the general issue and give any special matter in evidence, provided
notice in writing may have been given to the plaintiff or his
attorney thirty days before the trial.
It is not necessary that this should be served and filed by an
order of the court, and it is sufficient if it was served and filed
subsequently to the time when the depositions were taken and filed
in court.
For the purpose of impeaching a witness, a question was asked of
another witness "What is the reputation of the first witness for
moral character?" This question was objected to, and properly not
allowed to be put by the court below.
The elementary writers and cases upon this point examined.
Another witness was asked what was the reputation of the first
witness for truth and veracity, who replied that he had no means of
knowing, not having had any transactions with him for five years.
This question was excluded by the court, which must judge according
to its discretion whether or not it applies to a time too
remote.
Page 64 U. S. 3
The history of the trial in the court below is fully set forth
in the opinion of this Court.
Page 64 U. S. 6
MR. JUSTICE CLIFFORD delivered the opinion of the Court.
According to the transcript, the declaration in this case was
filed on the eighteenth day of March, 1856. It was an action of
trespass on the case for an alleged infringement of certain letters
patent purporting to have been duly issued to the plaintiffs for a
new and useful improvement in a certain machine or implement called
a sluice-fork, used for the purpose of removing stones from sluices
and sluice-boxes in washing gold. As the foundation of the suit,
the plaintiffs in their declaration set up the letters patent,
alleging that they were the original and first
Page 64 U. S. 7
inventors of the improvement therein described, and charged that
the defendants, on the second day of July, 1855, and on divers
other days and times between that day and the day of the
commencement of the suit, unlawfully and without license vended and
sold a large number of the improved forks made in imitation of
their invention. To this charge the defendants pleaded the general
issue, and in addition thereto set up in their answer to the
declaration two other grounds of defense. In the first place, they
denied that the plaintiffs were the original and first inventors of
the improvement described in the letters patent, averring that the
supposed improvement was known and used by divers other persons in
the United States long before the pretended invention of the
plaintiffs. They also alleged that the improvement claimed by the
plaintiffs as their invention was not the proper subject of a
patent within the true intent and meaning of the patent law of the
United States.
By the fifteenth section of the Patent Act of the fourth of
July, 1836, the defendant, in actions claiming damages for making,
using, or selling, the thing patented, is permitted to plead the
general issue, and for certain defenses, therein specified, to give
that act and any special matter in evidence which is pertinent to
the issue, and of which notice in writing may have been given to
the plaintiff or his attorney thirty days before the trial. Within
that provision and subject to that condition, he may, under the
general issue, give any special matter in evidence tending to prove
that the patentee was not the original and first inventor or
discoverer of the thing patented, or a substantial and material
part thereof claimed as new, or that it had been described in some
public work anterior to the supposed discovery by the patentee, or
had been in public use, or on sale, with the consent and allowance
of the patentee, before his application for a patent. But whenever
the defendant relies in his defense on the fact of a previous
invention or knowledge or use of the thing patented, he is required
to
"state in his notice of special matter the names and places of
residence of those whom he intends to prove to have possessed a
prior knowledge of the thing, and where the same had been used.
"
Page 64 U. S. 8
Two written notices were accordingly given by the defendants of
special matter to be offered in evidence by them at the trial, in
support of the first ground of defense set up in the answer to the
declaration. One was dated on the twenty-eighth day of August,
1856, and the other on the nineteenth day of September of the
succeeding year, but they were both duly served and filed in court
more than thirty days before the trial. Upon this state of the
pleadings, the parties on the twentieth day of October, 1857, went
to trial, and the jury, under the rulings and instructions of the
presiding justice, returned their verdict for the defendants. After
the plaintiffs had introduced evidence tending to prove the alleged
infringement of their patent, they claimed that counsel fees were
recoverable as damages in this action, and offered proof
accordingly in order to show what would be a reasonable charge in
that behalf.
That evidence was objected to by the defendants, upon the ground
that counsel fees were not recoverable as damages in actions of
that description, and the court sustained the objection, and
excluded the evidence. To which ruling the plaintiffs excepted.
Little or no reliance was placed upon this exception by the counsel
of the plaintiffs, and in view of the circumstances one or two
remarks upon the subject will be sufficient. Suppose it could be
admitted that counsel fees constituted a proper element for the
consideration of the jury, in the estimation of damages in cases of
this description; still the error of the court in excluding the
evidence would furnish no ground to reverse the judgment, for the
reason that the verdict was for the defendants. For all purposes
connected with this investigation, it must be assumed, under the
finding of the jury, that the plaintiffs were not entitled to any
damages whatever; and if not, then the evidence excluded by the
ruling of the court was entirely immaterial. But the evidence was
properly rejected on the ground assumed by the presiding
justice.
Counsel fees are not a proper element for the consideration of
the jury in the estimation of damages in actions for the
infringement of a patent right. That point has been directly
Page 64 U. S. 9
ruled by this Court, and is no longer an open question. Jurors
are required to find the actual damages incurred by the plaintiff
at the time his suit was brought, and if in the opinion of the
court the defendant has not acted in good faith or has caused
unnecessary expense and injury to the plaintiff, the court may
render judgment for a larger sum, not exceeding three times the
amount of the verdict. 5 Stat. 123.
Day v.
Woodworth, 13 How. 372. To maintain the issue on
their part, the defendants offered three depositions, each tending
to prove that the plaintiffs were not the original and first
inventors of the improvement described in their letters patent.
Objection was seasonably made by the plaintiffs to the
introduction of each of these depositions on two grounds:
1. Because the first notice of special matter to be introduced
at the trial did not accord with the proof offered, as contained in
these depositions.
2. Because the second notice of special matter to be thus
introduced was served and filed without any order from the court,
and therefore should be disregarded.
Exceptions were duly taken to the respective rulings of the
court, in admitting each of these depositions; but as they all
depend upon the same general considerations, they will be
considered together.
It is conceded by the defendants that the first notice was, to
some extent, insufficient. On the other hand, it is admitted by the
plaintiffs that the terms of the second notice were sufficiently
comprehensive and specific to justify the rulings of the court, in
allowing the depositions to be read to the jury. They, however,
insist upon the objection, taken at the trial, that it was served
and filed without any order of the court and that it was
insufficient because it was served and filed subsequently to the
time when the depositions were taken and filed in court.
But neither of these objections can be sustained. All that the
act of Congress requires is that notice of the special matter to be
offered in evidence at the trial shall be in writing and be given
to the plaintiff or his attorney more than thirty days before the
trial. By the plain terms of the law, it is a
Page 64 U. S. 10
right conferred upon the defendant, and of course he may
exercise it in the manner and upon the conditions therein pointed
out, without any leave or order from the court. When the notice is
properly drawn, and duly and seasonably served and filed in court
as a part of the pleadings, nothing further is required to give the
defendant the full and unrestricted benefit of the provision.
Such notice is required in order to guard patentees from being
surprised at the trial by evidence of a nature which they could not
be presumed to know or be prepared to meet, and thereby subject
them either to delay or a loss of their cause. To prevent such
consequences, the defendant is required to specify the names and
places of residence of the persons on whose prior knowledge of the
alleged improvement he relies to disprove the novelty of the
invention, and the place or places where the same had been used.
Wilton v. Railroads, 1 Wall Jr. 195.
Compliance with this provision, on the part of the defendant,
being a condition precedent to his right to introduce such special
matter under the general issue, it necessarily follows that he may
give the requisite notice without any leave or order from the
court; and for the same reason, if he afterwards discovers that the
first notice served is defective, or not sufficiently comprehensive
to admit his defense, he may give another to remedy the defect or
supply the deficiency, subject to the same condition that it must
be in writing and be served more than thirty days before the
trial.
Having given the notice as required by the act of Congress, the
defendant at the trial may proceed to prove the facts therein set
forth by any legal and competent testimony. For that purpose, he
may call and examine witnesses upon the stand or he may introduce
any deposition which has been legally taken in the cause. Under
those circumstances, depositions taken before the notice was
served, as well as those taken afterward, are equally admissible,
provided the statements of the deponents are applicable to the
matters thus put in issue between the parties.
After the defense was closed, the plaintiffs offered
evidence
Page 64 U. S. 11
to impeach one of the witnesses who had given material testimony
for the defendants. When called, the impeaching witness stated that
he knew the witness sought to be impeached and knew other persons
who were acquainted with the witness, and that they both resided in
the City of Sacramento, whereupon the counsel of the plaintiffs put
the question, "What is the reputation of the witness for moral
character?" To that question the counsel of the defendants objected
on the ground that the inquiry should be limited to the general
reputation of the witness for truth and veracity, with the right to
put the further inquiry whether the witness testifying would
believe the other on his oath, and the court sustained the
objection and rejected the testimony.
No reasons were assigned by the court for the ruling, and of
course the only point presented is whether the particular question
propounded was properly excluded.
courts of justice differ very widely, whether the general
reputation of the witness for truth and veracity is the true and
sole criterion of his credit, or whether the inquiry may not
properly be extended to his entire moral character and estimation
in society. They also differ as to the right to inquire of the
impeaching witness whether he would believe the other on his oath.
All agree, however, that the first inquiry must be restricted
either to the general reputation of the witness for truth and
veracity or to his general character, and that it cannot be
extended to particular facts or transactions, for the reason that
while every man is supposed to be fully prepared to meet those
general inquiries, it is not likely he would be equally so without
notice to answer as to particular acts.
According to the views of Mr. Greenleaf the inquiry in all cases
should be restricted to the general reputation of the witness for
truth and veracity, and he also expresses the opinion that the
weight of authority in the American courts is against allowing the
question to be put to the impeaching witness whether he would
believe the other on his oath. In the last edition of his work on
the law of evidence, he refers to several decided cases which
appear to support these positions,
Page 64 U. S. 12
and it must be admitted that some of these decisions, as well as
others that have since been made to the same effect, are enforced
by reasons drawn from the analogies of the law to which it would be
difficult to give any satisfactory answer. 1 Greenl.Ev., sec. 461;
Phillips v. Kingfield, 19 Me. 375, per Shepley J.;
Goss v. Stimpson, 2 Sum. 610;
Wood v. Mann, 2
Sum. 321;
Craig v. State, 5 Ohio N.S. 605;
Gilbert v.
Sheldon, 13 Barb. 623;
Jackson v. Lewis, 13 Johns.
504;
United States v. Van Sickle, 2 McLean 219;
State
v. Bruce, 24 Me. 72;
Com. v. Morse, 3 Pick. 196;
Gilchrist v. McKee, 4 Watts 380;
State v. Smith,
7 Vt. 141;
Frye v. Bank of Illinois, 11 Ill. 367;
Jones v. State, 13 Tex. 168;
State v. Randolph,
24 Conn. 363;
Uhl v. Com., 6 Gratt. 706;
Wike v.
Lightner, 11 S. & R. 338;
Kemmel v. Kemmel, 3 S.
& R. 338;
State v. Howard, 9 N.H. 485;
Buckner v.
State, 20 Ohio 18;
Ford v. Ford, 7 Humphr. 92;
Thurman v. Virgin, 18 B.Munroe 792;
Perkins v.
Nobley, 4 Ohio N.S. 668;
Bates v. Barber, 4 Cush.
107.
On the other hand, a recent English writer on the law of
evidence of great repute maintains that the inquiry in such cases
properly involves the entire moral character of the witness whose
credit is thus impeached and his estimation in society, and that
the opinion of the impeaching witness as to whether he is entitled
to be believed on his oath is also admissible to the jury. 2 Taylor
Ev. secs. 1082, 1083.
That learned writer insists that the regular mode of examining
into the character of the witness sought to be impeached is to ask
the witness testifying whether he knows his general reputation, and
if so what that reputation is and whether, from such knowledge, he
would believe him upon his oath. In support of this mode of
conducting the examination he refers to several decided cases, both
English and American, which appear to sustain the views of the
writer.
Rees v. Watson, 22 How.St.Tr. 496;
Mawson v.
Hartsink, 4 Esp.R. 104;
Rex v. Rockwood, 13
How.St.Tr. 211;
Carpenter v. Wall, 11 Ad. & El. 803;
Anonymous, 1 Hill S.C. 259;
Hume v. Scott, 3
A.K.Marshall 262;
Day v. State, 13 Mis. 422; 3 Am.Law
Jour. N.S. 145.
Page 64 U. S. 13
Both Mr. Greenleaf and Mr. Taylor agree, however, that the
impeaching witness must be able to state what is generally said of
the other witness by those among whom he resides and with whom he
is chiefly conversant, and in effect admit that unless he can so
speak, he is not qualified to testify upon the subject for the
reason that it is only what is generally said of the witness by his
neighbors that constitutes his general reputation. To that extent
they concur, and so, as a general remark, do the authorities which
on the one side and the other support these respective theories;
but beyond that the views of these commentators as well as the
authorities appear to be irreconcilable.
In referring to this conflict of opinion among text writers and
judicial decisions, we have not done so because there is anything
presented in this record that makes it necessary to choose between
them or even renders it proper that we should attempt at the
present time to lay down any general rule upon the subject. On the
contrary, our main purpose in doing so is to bring the particular
question exhibited in the bill of exceptions to the test of both
theories in order to ascertain whether under either rule of
practice it ought to have been allowed. Under the first mode of
conducting the examination, it is admitted that it was properly
rejected, and we think it was equally improper, supposing the other
rule of practice to be correct. Whenever a witness is called to
impeach the credit of another, he must know what is generally said
of the witness whose credit is impeached by those among whom the
last-named witness resides in order that he may be able to answer
the inquiry either as to his general character in the broader sense
or as to his general reputation for truth and veracity. He is not
required to speak from his own knowledge of the acts and
transactions from which the character or reputation of the witness
has been derived, nor indeed is he allowed to do so, but he must
speak from his own knowledge of what is generally said of him by
those among whom he resides and with whom he is chiefly conversant,
and any question that does not call for such knowledge is an
improper one, and ought to be rejected. No case has been cited
Page 64 U. S. 14
authorizing such a question or even furnishing an example where
it was put, and our researches in that direction have not been
attended with any better success. For these reasons, we think the
question was properly excluded. Some further attempts were made by
the plaintiffs to impeach this witness, and with that view they
called another witness who testified that he knew the one sought to
be impeached, and had had business transactions with him during the
years 1852-1853 in the city where they resided. On being asked by
the counsel of the plaintiffs what was the reputation of the
witness for truth and veracity, he replied that he had no means of
knowing what it was, not having had any dealings with him since
those transactions; thereupon the same counsel repeated the
question, limiting it to that period.
Objection was made to that question by the counsel of the
defendants on the ground that the period named in the question was
too remote, and the court sustained the objection and excluded the
question. To this ruling the plaintiffs excepted. Such testimony
undoubtedly may properly be excluded by the court when it applies
to a period of time so remote from the transaction involved in the
controversy as thereby to become entirely unsatisfactory and
immaterial, and as the law cannot fix that period of limitation, it
must necessarily be left to the discretion of the court.
Considering that the witness had already stated that he was not
able to answer the question, we do not think that the discretion of
the court in this case was unreasonably exercised. None of the
exceptions can be sustained, and the judgment of the circuit court
is therefore
Affirmed with costs.