THOMSON V. WOOSTER, 114 U. S. 104 (1885)

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U.S. Supreme Court

Thomson v. Wooster, 114 U.S. 104 (1885)

Thomson v. Wooster

Argued December 1-2, 1884

Decided March 30, 1885

114 U.S. 104


Under the rules and practice of this Court in equity, a decree pro confesso is not a decree as of course according to the prayer of the bill, nor as the complainant chooses to make it, but it should be made by the court according to what is proper to be decreed upon the statements of the bill, assumed to be true.

The difference between former rules in equity and those now in force pointed out.

Whether, after a bill is taken pro confesso, the defendant is entitled to an order permitting him to appear before the master is not now decided.

After entry of a decree pro confesso, and while it stands unrevoked, the defendant cannot set up anything in opposition to it, either below or in this Court on appeal, except what appears on the face of the bill.

In a suit in equity to restrain the infringement of a patent and for an account, the defendant cannot question the validity of the patent after a decree pro confesso establishing its validity.

A delay in applying for the reissue of a patent which appears on the face of the proceedings, and which, unexplained, might be regarded as unreasonable, cannot be set up against the patent by a defendant after a decree pro confesso has been taken in a suit in equity which is founded on and sets up the patent and seeks to restrain him from infringing it.

It is irregular to introduce, pending an appeal, an original patent not introduced below.

Affidavits before a master or the court below as grounds of application to reopen proofs form no part of the evidence before the Court on appeal.

In proceedings before a master after the bill in a suit to restrain infringement of a patent has been taken pro confesso, it is not proper to inquire into the cost of producing a result by other processes or machines; the proper inquiry relates to the profits enjoyed by defendants by reason of using the patented invention.

The appellee in this case, who was complainant below, filed his bill against the appellants complaining that they infringed certain letters patent for an improved folding guide for sewing machines granted to one Alexander Douglass, of which the complainant was the assignee. The patent was dated October 5, 1858, was extended for seven years in 1872, and was reissued

Page 114 U. S. 105

in December, 1872. The suit was brought on the reissued patent, a copy of which was annexed to the bill, which contained allegations that the invention patented had gone into extensive use not only on the part of the complainant, but by his licensees, and that many suits had been brought and sustained against infringers. The bill further alleged that the defendants, from the time when the patent was reissued down to the commencement of the suit, wrongfully and without license, made, sold, and used, or caused to be made, sole, and used, on or more folding guides, each and all containing the said improvement secured to the complainant by the said reissued letters be made, sold, and used, one or more folding guides, great gain and profits from such use, but to what amount the complainant was ignorant, and prayed a disclosure thereof, and an account of profits, and damages, and a perpetual injunction.

The bill of complaint was accompanied with affidavits verifying the principal facts and certain decrees or judgments obtained on the patent against other parties, and Douglass' original application for the patent, made in April, 1856, a copy of which was annexed to the affidavits. These affidavits and documents were exhibited for the purpose of obtaining a preliminary injunction, which was granted on notice.

The defendants appeared to the suit by their solicitor May 3, 1879, but neglected to file any answer or to make any defense to the bill, and a rule that the bill be taken pro confesso was entered in regular course June 10, 1879. Thereupon, on the second of August, 1879, after due notice and hearing, the court made a decree to the following effect, viz., 1st, that the letters patent sued on were good and valid in law; 2d, that Douglass was the first and original inventor of the invention described and claimed therein; 3d., that the defendants had infringed the same by making, using, and vending to others to be used, without right or license, certain folding guides substantially as described in said letters patent; 4th, that the complainant recover of the defendants the profits which they had derived by reason of such infringement by any manufacture, use, or sale, and any and all damages which the complainant had sustained thereby, and it was referred to a master to take

Page 114 U. S. 106

and state an account of said profits, and to assess said damages, with directions to the defendants to produce their books and papers and submit to an oral examination if required. It was also decreed that a perpetual injunction issue to restrain the defendants from making, using, or vending any folding guides made as theretofore used by them containing any of the inventions described and claimed in the patent, and from infringing the patent in any way.

Under this decree, the parties went before the master and the examination was commenced in October, 1879, in the presence of counsel for both parties, and was continued from time to time until November 3, 1880, when arguments were heard upon the matter and the case was submitted. On November 12, the report was prepared and submitted to the inspection of counsel. On the 18th, motion was made by the defendants' counsel before the master to open the proofs and for leave to introduce newly discovered evidence. This motion was supported by affidavits, but was overruled by the master, and his report was filed December 10, 1880, in which it was found and stated that the defendants had used at various times, from January 18, 1877, to the commencement of the suit, 27 folding guides infringing the complainant's patent, and had folded 1,217,870 yards of goods by their use, and that during that period there was no means known or used, or open to the public to use, for folding such goods in the same or substantially the same manner other than folding them by hand, and that the saving in cost to the defendants by using the folding guides was three cents on each piece of six yards, making the amount of profit which the complainant was entitled to recover $6,089.35, and that during the same period, the complainant depended upon license fees for his compensation for the use of the patented device, and that the amount of such fees constituted his loss or damage for the unauthorized use of his invention, and that, according to the established fees, the defendants would have been liable to pay for the use of the folding guides used by them during the years 1877, 1878, and 1879 (the period covered by the infringement) the sum of $1,350, which was the amount of the complainant's

Page 114 U. S. 107

damages. The evidence taken by the master was filed with his report.

By a supplemental report, filed at the same time, the master stated the fact of the application made to him to open the proofs on the ground of surprise and newly discovered evidence (as before stated), and that after hearing said application upon the affidavits presented (which were appended to the report), he was unable to discover any just ground therefor.

The defendants did not object to this supplemental report, but on the 10th of January, 1881, they filed exceptions to the principal report substantially as follows:

1. That instead of the double guide or folder claimed in the complainant's patent being the only means for folding cloth or strips on each edge during the period of the infringement (other than that of folding by hand), the master should have found that such strips could have been folded by means of a single guide or folder, and that the use of such guides was known and open to the public long before 1877, and that such guides were not embraced in the complainant's patent.

2. That the amount of profits found by the master was erroneous, because it appeared that folded strips, such as those used by the defendants, were an article of merchandise, cut and folded by different parties at a charge of 25 cents for 144 yards.

3. That the profits should not have been found greater than the saving made by the use of the double guide as compared with the use of a single guide, or greater than the amount for which the strips could have been cut and folded by persons doing such business.

4. That the damages found were erroneous.

Other exceptions were subsequently filed, but were overruled for being filed out of time.

Before the argument of the exceptions, the defendants gave notice of a motion to the court to refer the cause back to the master to take further testimony in reference to the question of profits and damages chargeable against them under the order of reference. In support of this motion, further affidavits were presented.

Page 114 U. S. 108

The exceptions to the report and the application to refer the cause back to the master were argued together. The court denied the motion to refer the cause back, overruled the exceptions to the report, and made a decree in favor of the complainant for the profits, but disallowed the damages. That decree is now brought here by appeal.

Page 114 U. S. 109

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