PART IV.

INFRINGEMENT, AND THE REMEDY THEREFOR.

CHAPTER I.

INFRINGEMENT.

§201. THE statute grants to the patentee, for a term not exceeding fourteen years, "the full and exclusive right and liberty of "making, using, and vending to others to be used, the invention or discovery; "1 and it gives a right of action for damages, in case of "making, using, or selling" the thing patented.2 No definition of what is to constitute an infringement is given in the statute; but, of course, there is an infringement of the right, when one "makes, uses, or sells a thing" which another has the exclusive right of "making, using, and vending to others to be used." But what constitutes making, using, and selling, with reference to the various things that may be the subjects of patents, so as to interfere with the exclusive right of the patentee, is left by the statute for judicial interpretation.

§ 202. An infringement takes place whenever a party avails himself of the invention of the patentee, without such

1 Act of July 4, 1836, c. 357, § 5.

2 Ibid. § 14.

variation as will constitute a new discovery;1 or, as it has also been stated, an infringement is a copy made after and agreeing with the principle laid down in the specification.2

1 In Walton v. Potter, Webs. Pat. Cas. 585, 586, Sir N. C. Tindall, C. J., said to the jury: "Now, according to the general rule upon this subject, that is a mere question of fact and peculiarity for the consideration of a jury, and it will be for you to say, under the circumstances that have been brought in review before you, whether that which has been done by the defendants amounts to such an infringement or not. Where a party has obtained a patent for a new invention, or a discovery he has made by his own ingenuity, it is not in the power of any other person, simply by varying in form, or in immaterial circumstances, the nature or subject-matter of that discovery, to obtain either a patent for it himself, or to use it without the leave of the patentee, because that would be in effect and in substance an invasion of the right; and, therefore, what you have to look at upon the present occasion, is, not simply whether, in form or in circumstances, that may be more or less immaterial, that which has been done by the defendants varies from the specification of the plaintiff's patent, but to see whether, in reality, in substance, and in effect, the defendants have availed themselves of the plaintiff's invention, in order to make that fabric or to make that article which they have sold in the way of their trade; whether, in order to make that, they have availed themselves of the invention of the plaintiff. The course which the evidence has taken has made it not an immaterial, but, on the contrary, a very necessary inquiry for you, upon this first head of investigation, to determine whether the defendant's patent, which they have taken out, is, in effect, borrowed from the plaintiff's or not, because there can be no doubt whatever that all the defendants have done they have endeavored to clothe themselves with the right of doing, by taking out the subsequent patent of 1839. The only evidence of infringement we have had before us, is the purchase, at the manufactory of the defendants, of that little piece of card which was marked with the initials S. G., and there can be no doubt but that that fabric, which was so produced in evidence before us, is made on the plan and according to the specification of their own patent, and, therefore, it will not be immaterial to call to your attention, upon this first head of inquiry, the specification of the plaintiff's, and next that of the defendant's patent, in order that we may compare them together, and see whether there really is that variation in substance, so as to give the denomination of a new discovery to what the defendants have done, or whether they are not following out the invention of the plaintiff, with some variation in the description, which may not allow it the name of a new discovery."

2 Galloway v. Bleaden, Webs. Pat. Cas. 523.

There will be, therefore, different modes in which patents may be infringed, according to their subject-matter. Our statute has made use of the phrases "making, using, and vending to others to be used," to comprehend the exclusive right of the patentee; and, consequently, the making, using, or selling, are the modes in which that right may be infringed, according to the nature of the subject-matter. We are now, therefore, to consider the meaning of these phrases, as applied to the infringement of the several classes of things which may be the subjects of letters-patent.

§ 203. 1. As to a machine. When a machine is the subject of a patent, the patent covers both the machine itself, the thing invented, and the mode or process of making it. The statute vests in the patentee the exclusive right of making it, the exclusive right of using it, and the exclusive right of vending it to others to be used. It is, therefore, an infringement to make a patented machine, for use or for sale, though in fact it is neither used nor sold;1 it is an infringement to use

1 Whittemore v. Cutter, 1 Gallis. 429, 433. In this case, Mr. Justice Story said: "Another objection is to the direction, that the making of a machine fit for use, and with a design to use it for profit, was an infringement of the patent-right, for which an action was given by the statute. This limitation of the making was certainly favorable to the defendant, and it was adopted by the Court, from the consideration that it never could have been the intention of the legislature to punish a man who constructed such a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects. It is now contended by the defendant's counsel, that the making of a machine is, under no circumstances, an infringement of the patent. The first section of the Act of 1793, expressly gives to the patentee, &c., "the full and exclusive right and liberty of making, constructing, using, and vending to others to be used," the invention or discovery. The fifth section of the same Act gives an action against any person who "shall make, devise, and use or sell," the same. From some doubt, whether the language of the section did not couple the making and using together to constitute an offence, so that making without using, or using without making, was not an infringement, the legislature saw fit to repeal that section; and, by the third section of the Act of 17th April, 1800, ch. 25, gave the action against any person, who should

it, though made by another; and it is an infringement to sell it, whether made by one's self or by another; because the statute vests the exclusive right of doing all these things in the patentee.

§ 204. The doctrine suggested by Mr. Justice Story, that the making of a machine for philosophical experiment, or for the purpose of ascertaining its sufficiency to produce the described effect, would not be an infringement, is founded in the supposition that such a making is not injurious to the patentee. It is true, that the making for the purpose of using becomes directly injurious to the patentee, because it deprives him of a purchaser of that which he alone is authorized to construct and sell; and it is also true, that, when the machine is made by one not the patentee, for the mere purpose of experimenting on the sufficiency of the specification, no profits are taken away from the patentee. There is, therefore, a difference, undoubtedly, in the tendency of the two acts; but it is not quite clear, that the legislature meant to recog

"make, devise, use or sell" the invention. We are not called upon to examine the correctness of the original doubt, but the very change in the structure of the sentence affords a strong presumption, that the legislature intended to make every one of the enumerated acts a substantive ground of action. It is argued, however, that the words are to be construed distributively, and that "making" is meant to be applied to the case of a composition of matter, and not to the case of a machine. That it is clear, that the use of certain compositions, (as patented pills,) could not be an infringement, and, unless making were so, there would be no remedy in such cases. We cannot feel the force of this distinction. The word "making" is equally as applicable to machines, as to compositions of matter; and we see no difficulty in holding that the using or vending of a patented composition is a violation of the right of the proprietor. It is further argued, that the making of a machine cannot be an offence, because no action lies, except for actual damage, and there can be no actual damages, or even a rule for damages, for an infringement by making a machine. We are, however, of the opinion, that, where the law gives an action for a particular act, the doing of that act imports of itself a damage to the party. Every violation of a right imports some damage, and, if none other be proved, the law allows a nominal damage."