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evidence of a written or a parol license, or of an express or an implied license. But no written license can be proved by a certified copy, because the law does not provide for recording licenses, and because, if such documents are sometimes copied into the record books of the Patent Office, they do not thereby become Patent Office records. Licenses form the subject of the twelfth chapter of this book, and to that chapter recourse may be had for further information in regard to the proper evidence to support this defence.
$ 531. The twenty-fourth defence may be sustained by proof of a total or partial release, given after the infringement was committed and before the action was commenced, or it may be sustained pro tanto, by a partial release given even after the action was begun.' A paper cannot be a re
' A lease, if executed before the infringement to which it refers was committed, because no man can relinquish what he does not possess.
Whether a release, given only to a joint infringer with the defendant, can be invoked by the defendant himself, is a question to which no categorical answer can at present be given. It depends upon the question whether contribution can be enforced between infringers, and that point has never been settled by the courts. Nothing more useful can therefore be said in this connection than to state the principles upon which the two questions seem to depend.
The doctrine that there can be no contribution between tort-feasors, does not generally apply to cases where the wrong-doers suppose their doings to be lawful.” This is nearly always true of infringers of patents. When they infringe, they are often ignorant of the patents which they violate, or if they know of the patents, they are apt to give themselves the benefit of every suggested ground for doubt, and thus suppose that their doings do not constitute an infringement. Their wrong-doing is mala prohibita, rather than
1 Burdell v. Denig, 92 U. S. 721, 1875.
? Bailey v. Bussing, 28 Connecticut, 461, 1859.
mala in se. Therefore, it seems to be generally if not universally true, that where one of several joint infringers is sued alone, and suffers and pays a judgment for the joint infringement, he may compel his co-infringers to contribute their due portion of that payment, by means of an action to enforce its refunding. That being so, it will follow that a release to one joint infringer, will operate to release all his co-infringers from the claim of the patentee. Where contribution can be enforced between tort-feasors, a full release to one must release all; for if it did not do so, it would not fully release that one. The releasee would not be fully protected by his release, unless his co-infringers would also be protected by it, because otherwise the releasee would still be liable to an action for contribution brought against him by a joint tort-feasor who had been compelled to respond in damages for the joint infringement. The true rule therefore appears to be, that a plain release given to either of several joint infringers, may be successfully invoked in a court of law, not only by the nominal releasee, but also by either or all of his co-infringers.
$ 532. The twenty-fifth defence may be successful without any evidence, because the burden of proof is upon a plaintiff to show an infringement,' and because some plaintiffs fail to sustain that burden. Accordingly, in one leading law case the defendant was the prevailing party on the circuit, and in the Supreme Court, though the plow which he made was nearly identical with that covered by the plaintiff's patent, and though the defendant introduced no evidence on the subject of infringement, nor indeed on any other. So also, in a leading case in equity, the defendant, though beaten on the circuit, successfully interposed the defence of non-infringement in the Supreme Court, without any evidence on that side of the issue, and against the contrary testimony of several experts.' But these were some
· Brooks 0. Jenkins, 3 McLean, 453, 1844; Royer v. Mfg. Co. 20 Fed. Rep. 853, 1884.
Prouty v. Ruggles, 16 Peters,
3 Railway Co. o. Sayles, 97 U. S. 554, 1878.
what clear cases of non-infringement, and it would be injudicious to rely upon such a defence without evidence to support it, in any case wherein the question of infringement is really debatable in the light of the law. Where a thing made or used or sold by the defendant, is proved or is stipulated, and where a competent expert testifies that it is substantially the same as that which appears to be covered by the patent in suit; it is always advisable, and generally necessary, for the defendant to introduce evidence tending to show non-infringement, if he means to insist upon that defence. Evidence of this sort may consist of the testimony of experts who are acquainted with the letters patent in suit, and with the doings of the defendant, and are of opinion that those doings are substantially different from everything which appears to be secured by the letters patent, and can give an intelligent reason for that opinion. This testimony, like all other testimony of experts on questions of infringement, is necessarily based on hypothetical constructions of the patents in suit, and is therefore to be disregarded, if the judge finds those hypothetical constructions to be substantially erroneous.
Whether the fact that the defendant conformed his doings to a junior patent is admissible as tending to show non-infringement of the patent in suit, is a question which the Supreme Court once decided in the affirmative, and afterward in the negative. The reason of the matter is with the later decision, because a thing may be a patentable improvement on a prior thing, at the same time that it is a clear infringement of a patent for that thing.
$ 533. The twenty-sixth defence requires to be proved as pleaded. Where it depends upon estoppel in pais, it may be proved by parol, or by the production of documents, according as the ground of the estoppel consists of things done or words spoken, or consists of words which were
Bennet v. Fowler, 8 Wallace, 447, 1869.
? Corning v. Burden, 15 Howard,
* Blanchard v. Putnam, 8 Wal. lace, 420, 1869.
committed to writing. Where the defence depends upon estoppel by deed, the document must be produced or otherwise proved according to the rules of evidence applicable to such cases; and where it depends upon estoppel by record, or res judicata, the record must be proved in accordance with the laws governing such evidence.
$ 534. The twenty-seventh defence seldom requires any evidence to sustain it, because the Federal courts take judicial notice of the statutes of limitation ;' and because the plaintiff's pleadings and proofs, when taken together, will generally show when the infringement sued upon was committed. But if the plaintiff's presentation of the case leaves the latter point uncertain to such an extent as to affect the question of the operation of a statute of limitation, the burden is then cast upon the defendant, to prove that part or all of the infringement is old enough to be barred by the statute which he pleaded.”
$ 535. Testimony in actions at law for infringements of patents may always be taken orally in open court; and it may be taken by depositions in writing where the witness lives more than one hundred miles from the place of trial, or when he is bound on a voyage at sea, or is about to go out of the United States, or out of the judicial district in which the case is to be tried, or to a greater distance than one hundred miles from the place of trial, before the time of trial; or when he is ancient and infirm. The sorts of magistrates before whom such a deposition may be taken, are judges of any United States court; judges of any supreme, superior, or county court, or court of common pleas of any of the United States; commissioners of United States circuit courts; clerks of United States circuit or district courts; mayors or chief magistrates of cities; and notaries public. If any such magistrate is counsel or attorney for either party, or interested in the event of the
Pennington o. Gibson, 16 Howard, 79, 1853; Cheever v. Wilson, 9 Wallace, 121, 1869.
? Russell 0. Barney, 6 McLean, 577, 1855.
cause, he is disqualified from acting. Before such a deposition is taken, reasonable notice thereof must be given in writing by the party intending to take it, or his attorney of record, to the opposite party, or his attorney of record, as either
may be nearest, and that notice must state the name of the witness, and the time and place of taking the deposition. The formalities to be observed in taking and transmitting such depositions are prescribed in Sections 864 and 865 of the Revised Statutes; and they must be strictly complied with, in order to make such depositions admissible as against proper objections. Indeed, no such deposition is admissible in any event, unless it appears to the satisfaction of the court, that the witness is dead, or gone out of the United States, or to a greater distance than one hundred miles from the place where the court is sitting, or that, by reason of age, sickness, bodily infirmity, or imprisonment, he is unable to travel and appear at court. Where the witness testified in his deposition to the then existence of the fact which authorized its taking, that fact is presumed to exist at the time the deposition is offered in evidence, and in the absence of contrary proof, the deposition itself will satisfy the court that it is entitled to be admitted.
Most objections to depositions, in order to be efficacious, must be made before the depositions are received in evidence; for when introduced with the acquiescence of the opposite party, they cannot afterward be excluded on the ground that they were not taken in accordance with the rules prescribed therefor.' But where evidence is pertinent to either of several possible defences, one or more of which were pleaded, and one or more of which were not pleaded by the defendant, the fact that the evidence was not objected to when taken or admitted, does not make it admissible in support of any defence which was not pleaded. "
$ 536. The judge may direct the jury to return a verdict
1 Revised Statutes, Section 863.
4 Zane o. Soffe, 5 Bann, & Ard. 284, 1880.