the owner of the patent. No complete system of law offers such a premium for its own violation. To prevent such failures of justice, it was long the theory and the practice of the United States courts, that equity had jurisdiction to enforce a patentee's right to recover an infringer's profits, independently of all other equitable titles, rights, and remedies.' But that theory was overruled, and that practice was stopped by the Supreme Court, in the case of Root v. Railway Co.' The new rule which was stated and enforced in that case, calls aloud upon courts of law to entertain actions of assumpsit for infringements of patents, if by any means they can find authority for so doing. If no such authority can be deduced from the common law, then it ought to be conferred by legislation; for unless it exists or is supplied, it must often happen in the future that infringers will profit by their infringements far more than inventors can profit by their inventions. § 421. A majority of the States have abolished all common law actions, and have substituted for the whole of them a single form of proceeding which they call a civil action. The United States statutes provide that "The practice, pleadings, and forms and modes of proceeding in civil causes, other than equity and admiralty causes, in the circuit and district courts, shall conform, as near as may be, to the 1 Stevens v. Kansas Pacific Railway Co. 5 Dillon, 486, 1879; Nevins v. Johnson, 3 Blatch. 80. 1853; Sickles v. Mfg. Co. 1 Fisher, 222, 1856; Jenkins v. Greenwald, 2 Fisher, 41, 1857; Imlay v. Railroad Co. 4 Blatch. 228, 1858; Perry v. Corning, 6 Blatch. 134, 1868; Howes v. Nute, 4 Clif. 174, 1870; Cowing v. Rumsey, 8 Blatch. 36, 1870; Packet Co. v. Sickles, 19 Wallace, 611, 1873; Smith v. Baker's Administrators, 1 Bann. & Ard. 117, 1874; Wetherill v. Zinc Co. 1 Bann. & Ard. 485 1874; Burdell v. Denig, 92 U. S. 720, 1875; Birdsall v. Coolidge, 93 U. S. 68, 1876; Vaughan v. East Tennessee, Virginia & Georgia Railroad Co. 2 Bann. & Ard. 537, 1877; Vaughan . Central Pacific Railroad Co. 3 Bann. & Ard. 28, 1877; Sayles v. Dubuque & Sioux City Railroad Co. 3 Bann. & Ard. 219, 1878, Gordon v. Anthony, 16 Blatch. 234, 1879; Hendrie v. Sayles, 98 U. S. 546, 1879; Bignall v. Harvey, 18 Blatch. 353, 1880; Atwood v. Portland Co. 10 Fed. Rep. 283, 1880; Stevens v. Baltimore & Ohio Railroad Co. 6 Fed. Rep. 283, 1881. 2 Root v. Railway Co. 105 U. S. 189, 1881. 1 practice, pleadings, and forms and modes of proceeding existing at the time in like causes in the courts of record of the State within which such circuit or district courts are held, any rule of court to the contrary notwithstanding," and that "Damages for the infringement of any patent may be recovered by action on the case." Both these apparently inconsistent provisions are contained in the same enactment. They must therefore be construed together; and effect must be given to both. This result is reached by following Section 4919 as far as it necessarily goes, and by conforming in other respects to Section 914.' With this view, it has been held that the complaints and petitions which are prescribed for civil actions by the codes of sundry of the States, may be used in bringing actions on the case for infringements of patents in Federal Courts sitting in those States, respectively; and indeed, in one case, it has been held that the forms of pleading and procedure in such an action in a Federal Court must be the same as those employed in civil actions in the State Courts of the State in which that Federal Court is located. But the forms of pleading and procedure in those States which have abolished common law actions, and substituted a single civil action therefor, are so variant in character, in those different States, that no explanation of any of them would be suitable here. It may however be useful to explain in this book the characteristics of such a declaration, in an action of trespass on the case, as is proper to be filed in beginning a suit for an infringement of a patent in the Federal Courts in those States which still employ that common law action. § 422. The proper parts of such a declaration are the following: 1. The title of the court. 2. The title of the term. 3 Revised Statutes, Section 914. Revised Statutes, Section 4919. Cottiere. Stimson, 18 Fed. Rep. 690, 1883. 4 May. County of Mercer, 30 Fed. Rep. 250, 1887. 5 Celluloid Mfg. Co. v. Zylonite Co. 34 Fed. Rep. 744, 1888. 3. The venue. 4. The commencement. 5. The statement The true title of the United States Circuit Court established in Connecticut is "Circuit Court of the United States, for the District of Connecticut," and the title of the circuit court, which is established in any other district is the same, except as to the name of the district.' The proper term of the court in which to entitle the declaration is the term at which the appearance of the defendant is due.' It is unnecessary to entitle a declaration in the name of the case in which it is filed; though it is convenient to indorse that name on the back of the declaration, for the purpose of enabling the document to be readily found in a file. The venue should be laid in the district where the action is commenced, regardless of the district or districts wherein the infringement was committed. An infringement suit, being based on a transitory cause of action, the place laid in the declaration draws to itself the trial of all questions of infringement, wherever committed; except in the single case where the United States statutes otherwise provide.* The commencement contains a statement of the names of the parties to the action, and of the capacity in which they respectively sue or are sued, if it is other than a natural personal capacity. Though it is probably unnecessary, it is undoubtedly prudent to state the nation of which the parties are respectively citizens, and if that nation is the United States, to allege also the particular State of which the parties are citizens respectively. Where either party is a corporation, that fact must be stated, and the name of the State or other sovereignty wherein it was created and exists should also be alleged. The commencement properly closes with a brief recital that the form of action is that of trespass on the case. Revised Statutes, Section 608. 21 Chitty on Pleading, 15 American Edition, p. 263. 3 McKenna v. Fisk, 1 Howard, 248, 1843. 4 Revised Statutes, Section 657; Section 390 of this book. § 423. The statement of the right of action should contain the name and residence of the inventor, in order to identify him, and to enable the defendant to make inquiries into the history of the alleged invention. If that name or that residence were concealed from the defendant, he might thereby be deprived of the means of learning of several perfect defences. As the statutes stand at present, there is no necessity for stating the citizenship of the inventor in any declaration, unless the inventor is also a party to the action. Such a necessity will however arise whenever Congress discriminates between citizens of the United States and citizens of other countries, in respect of the terms upon which it may authorize patents to be granted. § 424. The novelty and the utility of the invention must be put in issue by proper averments in the declaration; but it is not necessary to state the particular time at which the invention was made, so that it appears to have been made before the application for the patent was filed.' The circumstance that letters patent are themselves prima facie evidence of novelty and utility, does not render unnecessary a proper allegation of those facts in the declaration. Evidence cannot take the place of pleading, and proper pleading is necessary to make any kind of evidence admissible in support of the right of a patentee to recover for an infringement of his patent. $425. The statement of the right of action must also aver that the invention was not in public use or on sale for more than two years before the inventor's application for the patent; because that fact is one of those which are necessary to give the Commissioner of Patents jurisdiction to grant such a document. It is a fact which is of the essence of the right of action, and it must therefore be stated in the declaration." 1 Wilder v. McCormick, 2 Blatch. 31, 1846. Revised Statutes, Sections 4886. 3 Gray v. James, 1 Peters' Circuit Court Reports, 482, 1817; Blessing v. Copper Works, 34 Fed. Rep. 754, 1888. § 426. If the patentee is neither a party to the action, nor the inventor of the thing or process covered by the patent, it is natural and proper to separately state his name in order to fully and surely identify the patent. It is well also to state his residence and his citizenship, though there is at present no requirement of law on either of those points. § 427. It is not necessary to state in a declaration the particulars of the application for the letters patent, nor the particulars of the proceedings of the Patent Office in considering that application, because the courts will presume that everything was rightly done which the law required to be done in order to authorize the Commissioner to issue the patent. It is customary and proper to say in a declaration that the inventor made due application for letters patent, but not even that general allegation appears to be required.' § 428. The declaration may describe the patent in the language of the grant, and it is not necessary to set out the specification either verbatim or substantially; though it is not improper, except in point of prolixity, to incorporate the whole of the patent and specification into the declaration.' The declaration must state that the letters patent were issued in the name of the United States of America, under the seal of the Patent Office, and were signed by the Secretary of the Interior, or an Assistant Secretary of the Interior, as the case may be, and countersigned by the Commissioner of Patents, and that they were delivered to the patentee. Inasmuch as patents are granted for various spaces of time, it is necessary to state the particular terms for which the letters patent in suit were issued. It is 4 Wilder v. McCormick, 2 Blatch. 35, 1846. 5 Revised Statutes, Section 4883; 25 Statutes at Large, Ch. 15, p. 40; 3 Cutting v. Myers, 4 Washington, . Cutting v. Myers, 4 Washington, 223, 1818. 222, 1818. |