United States v. Pickett.

zance, acknowledging themselves jointly and severally to owe the sum before stated, on the condition set forth. To this the justice of the peace annexed his certificate, in the following words: "Taken and acknowledged before me, this 9th of September, 1854, Nathan Guilford, Justice of the Peace." On the 12th of September the defendant, Harding, appeared and signed the recognizance; and the justice thereupon added a memorandum, as follows: "Signed by William Harding, this 12th day of September, 1854, and acknowledged before me, N. Guilford, J. P." The name of Harding was not, however, inserted in the body of the recognizance.

It is not necessary to decide whether Harding is liable, on the facts as they are before the court, to a separate suit, as on a recognizance entered into by him at a time subsequent to that by which the other parties became bound. The question immediately arising on this demurrer is, whether the recognizance on which this suit is brought, by fair legal construction, imports a joint liability on the part of Harding with the other parties, so that he may be joined with them in this suit.

My reflections on this point have lead me to the conclusion that there is no such liability, and that the demurrer to the declaration must be sustained. It is clear that the recognizance entered into by Pickett and Williamson, on the 9th of September, and certified by the justice, was a perfect and valid instrument. It was an acknowledgment of a joint and several liability on the condition set forth. This acknowledgment, without the signature of the parties, with the certificate of the justice, was all that was required to make the recognizance valid and obligatory. There is no statutory provision, either of the United States or of the State of Ohio, requiring the parties to sign a recognizance. Harding's name does not appear in the recognizance as one of the parties making the acknowledgment; and he is not otherwise connected with it than by the fact that he appeared on a subsequent day and put his name to it. The

Jenkins v. Greenwald.

memorandum of the justice, that Harding appeared on the 12th of September and signed the recognizance and acknowledged such signing, did not make him a party to the instrument. It was, no doubt, competent for the justice to have taken a separate recognizance from him; and this would have been the correct course of procedure. But, without his name in the body of the instrument, his signature to the recognizance, at a subsequent day, did not make him a party to it, and thereby create a joint and several liability with the other parties. As before intimated, it may be that the certificate of the justice as to such signing might, by a very liberal construction, be deemed sufficient evidence that he did enter into a separate recognizance, but does not connect him with the instrument, already perfect and complete in itself, as a party to it.

The demurrer to the declaration must be sustained.

(CIRCUIT COURT.)

EBENEZER JENKINS v. ISAAC GREENWALD.

Although inventors only are named in section 17 of the act of 1836, no doubt can be entertained that it extends to and includes the assignees of such inventors.

If there is no sufficient ground for the allowance of an injunction, and the case is to be viewed as a mere proceeding to recover compensation for an infringement of the exclusive right of the complainant, there would seem to be an adequate remedy at law, which would render the interposition of a court of equity improper.

If the party sued as an infringer admits the infringement, but asserts that, after notice or service of the injunction, he had refrained from the use of the thing patented, and that he will not again infringe, it is no resson why the injunction should not issue or be made perpetual. The complainant, in such a case, is not obliged to rest his interests on the mere asseveration of the party that he will not repeat the act of infringement. Having once been a wrong-doer, the law supposes the possibility of his being so again, and will impose the proper restraint to prevent the repetition of the wrongful act.

Jenkins v. Greenwald.

The equity rules adopted by the Supreme Court, under the authority of an act of Congress, are, of course, obligatory on the Circuit Courts. The latter have not the authority to rescind a rule adopted by the Supreme Court for the government of their practice in chancery.

The profits recoverable in an action for a violation of an exclusive right, under a patent, are not regarded as unliquidated damages.

The right to recover rests upon the principle that the party complained of has unlawfully appropriated to himself the benefits of an improvement or discovery which belong exclusively to another; and that so far as he has made profit by such appropriation, he is liable to the party injured. This profit is ascertainable by evidence; and does not, like the claim for damages in an action for a tort, rest in the mere discretion of a court or jury.

The patentee has, under his patent, three distinct rights which he may dispose of separately to different individuals. These are: the right to make the machine, the right to use it, and the right to vend it.

A grant to A. of the exclusive right to make, vend, and use a certain machine within the county of Hamilton, Ohio, conveys the right to make and vend such machines within said county for licensees who intend to use the same without said county; and the manufacture by others of machines within said county, for use without, is an infringement of the rights conveyed to A.

The damages for such infringement are the profits of the manufacture.

THIS was a bill in equity, filed to restrain the defendant from infringing the letters patent granted to William Woodworth, and more particularly referred to in the report of the case of Foss v. Herbert, 2 Fisher, 31. A limited injunction against the defendants had been granted by Mr. Justice McLean, which the complainant now moved to perpetuate. The facts upon which the motion was based sufficiently appear in the opinion of the court.

Coffin & Mitchell, for complainant.

R. D. & J. H. Handy, for defendant.

OPINION OF THE COURT:

This case is before the court on a motion by the complainant for a decree to perpetuate the injunction heretofore allowed by Judge McLean, and for the profits arising from an alleged infringement, by the defendant, of the

Jenkins v. Greenwald.

complainant's exclusive right to construct Woodworth's

patented planing machine within which will be hereafter noticed.

certain territorial limits, This motion is resisted

on several grounds, which will be adverted to.

Before proceeding to the consideration of the points arising in the case, it will be proper to state the material facts involved. This I shall do without presenting even an analysis of the allegations of the parties, as set forth in their pleadings.

On April 21, 1846, James G. Wilson, in whom was vested, by assignment, the title to the Woodworth patent, entered into a contract with the complainant and one Benjamin Bicknell, by which, on the conditions specified, Wilson sold and granted them "the exclusive right to make, use, and vend to others to construct and use, during the full term of said letters patent, from this day until December 27, 1856, machines for planing, tongueing, and grooving, upon the principle, plan, and description of the said renewed patent, and amended specifications, within the territory of Hamilton county, in the State of Ohio, and so much of the adjacent territory in the State of Kentucky as lies along and adjoining said Hamilton county, and within five miles of the Ohio river." After reserving the right of Hudson and Hughes to the use of one machine in the city of Cincinnati, previously granted by Wilson, the contract recites that several other licenses had been granted within Hamilton county on certain conditions stated. Wilson also reserves the right to license the use of other machines within the territory designated in the contract, upon the condition "that the aggregate machines allowed by sale or license, executed by him, or his former assignees, Brooks and Morris, licensed to be used in that territory, do not exceed thirteen," etc. It is then provided that "Bicknell and Jenkins shall not erect for use, or directly or indirectly authorize to be used, within the said territory, any machines, until the number is, or shall be, reduced to eight, and when any right of any person to use any of the said

Jenkins v. Greenwald.

thirteen machines shall cease, Bicknell and Jenkins shall not put in operation a machine or machines in lieu thereof, until the whole number of machines in said territory shall be reduced below eight, and when so reduced, the number of machines shall be kept at eight." It is also agreed that, in the licenses to be granted, it shall be stipulated that the licensees shall not work lumber, by said machines, at a less rate than seven dollars per 1,000 feet of board measure, and that they shall render full accounts of their earnings, etc. Bicknell and Jenkins agree to pay for the rights granted at the rate of $2,500 a year, with the condition, that if their receipts from licenses do not amount in any year to that sum, they are to pay or account to Wilson at the rate of $1.25 per thousand, etc. Wilson binds himself, "on due notice to institute and prosecute all actions necessary to secure the monopoly granted by said patent, within said territory, at his own expense, and expressly reserves to himself all damages which may accrue therein, and the exclusive right to prosecute for piracies." Bicknell and Jenkins reserve the right, on giving three months' notice of their intention, to surrender the agreement, at the end of any year. Wilson, after the assignment to Jenkins and Bicknell above mentioned, assigned whatever remaining interest he had in said letters patent within said territory to Elisha Bloomer. On August 25, 1847, Bicknell assigned to Elisha Bloomer an undivided half of his right to build machines under said contract; and on September 1, 1849, Bloomer assigned his interest to Bicknell. On December 2, 1853, Bicknell assigned all his right to build and sell machines, all claims for damages for infringements, and for profits of making the machine, to the complainant.

It is among the averments of the bill, that the defendant had made a number of machines, at Cincinnati, upon the plan of the Woodworth patent, without license therefor from Wilson, in violation of the complainant's exclusive right; and that then, on August 29, 1854, he was engaged in making one at his shop in Cincinnati. The bill prays