SHARP. V. REISSNER.
of congress in the establishment of these regulations. If it be required that owners of vessels must be shown to know that the man he em· ploys as an engineer is not licensed, the public loses the protection intended to be afforded by these regulations, as the owner can employ anyone and say he did not know he was not licensed, and need not inquire. The purpose of this section is to require him to know that such license has been obtained, and he employs him as an engineer ·at his peril if he be not in fact so licensed. Therefore, it is not necessary to aver in the indictment, or prove on the trial, such knowledge on the part of the employer to make him liable to the penalty of the statute. The motion is overruled.
October 5, 1881.)
(Oircuit (}ourt, 8. D. NIJ1J) York.
In a suit for the infringement of a patent, a plea which sets up the single tlefence of non-infringement will be stricken out on motion.
Briesen c1; Betts, for plaintiff. W.H. L. Lee, for defendants. BLATCHFORD, C. J. The bill in, .this case brought for the a patent.1h.e bill· alleges that the defendants, without the license of the and in violation of his rights, and in infringement of the patent, did "make, construct, use, and vend to others to be used, the said invention, and. did make, construct, use, and vend to others to be used, hydrocarbon stoves made according to, and employing and containing, said .invention," and "have made and sold, and caused to be made and sold, large quanti. ties of said hydrocarbon stoves." Two of the defendants have put in a plea to the bill, which sets forth "that neither they, nor either of them, have, since the issuing of the letters patent set forth in said bill, ever made, constructed, used, or vended to others to be used, the invention described in said letters patent, · · · or made, constructed, used, or vended to others to be used, hydrocarbon stoves made according to, and employing and containing, said invention." The plea also denies that the defendants, "or either of them, have ever infringed upon or violated any exclusive right secured by said letters patent in any manner' whatever:" There is nothing else in
the plea, and there is no answer to the bill or to any part of it. The plaintiff moves that the plea be stricken from the files as improper, or else be ordered to stand as an answer. The defendants show by affidavits that they are advised and believe that the stoves they have made were not infringements of the patent sued on; that by the advice of their counsel, and for the pur· pose of avoiding expense to both parties, the defence of noninfringement was interposed in the form of a plea; that the defend·ants have other defences which they wish to embody in an answer, nhould it be necessary for them to answer, the most important of which defences are prior patents anticipating the plaintiff's patent, and also limiting its scope so as to render infringement impossible, and prior knowledge on the part of various individuals; and that to take evidence in regard to all such prior patents and prior knowledge would be very expensive to both parties. The defendants contend that the plea is a proper one; that it was not necessary for the plea to be supported by an answer, even under the old equity praotice; that under the equity rules prescribed by the supreme court of the United States, no plea is to be accompanied by an answer, except where fraud or combination is alleged in the bill; and that, even if the plea be defective in form or substance, or if it should have been supported by an answer, the plaintiff has mistaken his remedy. No authority is cited where a plea like the present one has been put in or allowed in a suit for the infringement of a patent. By equity rule 34, if a plea is overruled, either on an issue of law or an issue of fact in regard to it, the defendant has an absolute right to put in an answer to the bill, or to so much thereof as is covered by the plea. By equity rule 39 a defendant has a right, in all cases, to insist by answer upon all matters of defence (not being matters of abatement, or to the character of the parties, or matters of form) in bar of or to the merits of the bill, of which he may be entitled to avail himself by a plea in bar. If the present plea should be tried on the fact of infringement, and the issue be found for the plaintiff, and the plea be thus overruled, it would seem difficult, under the above rules, to exclude defendant from contesting again, under an answer, the question of infringement, especially as, under the issues raised by an answer, and under the light thrown on the subject by the proofs on the issue on the plea, and under new proofs on the issues on the answer, the question of infringement might be presented in a very different light from that in which it was presented on the trial of the issue on the plea, and in one much more favorable to the
defendants. Indeed, the defendants' affidavit on this motion states that they will desire, by answer, to put in prior patents, to limit the scope of the plaintiff's patent, so as to render infringement impossible. It is difficult to see how they are to be prevented from doing after the overruling' of their plea. The question of this by the infringement of. a patent depends very much on the construction of its claims, and that depends very much on prior patents on the same subject. If such prior patentsure to be pnt in, they ought to be set up in an answer, and be put. in once fpr 'all, and the issue of infringement ought to be tried but once, and under an answer, and qot.. uader a plea. The defendant I? think they will succeed on the queEltion of infringement; but the plaintiff thinks otherwise. If the defendants succeed, expense will have been saved. by having no other issne put that on the plea. But if the plaintiff succeeds on' the plea, he must; to realize his. success, go through a second litigation on the same question, and no expense will have been saved. The one result is pow to be contemplated quite as ,:much as the other. Within the principles laid down in Rhode Island v. Massachusetts, 14 Pet. 210, it would be unjust. to the plaintiff to permit the issue of infringement to be determined on the plea. Besides this, none of the adjudged cases sanction, ina suit like this, a plea merely of non-infringement, under rules of practice such as those which govern this case. On the authorities condemn such a plea. Bailey v. Le Roy, 2 Edw. Ch. 514; Black v. Black, 15 Ga. 445; Milligan v. Milledge, 3 Crane.h, 220. It is only when a plea is unexceptionable in its form and charac-· ter that it is to be set down for argument, or to be replied to. Rhode Islann v. Massachusetts, 14 Pet. 210, 257. The motion to strike this plea from the files as improper is a correct motion, and must be granted, with leave to the defendants to anSwer in 30 days, on payment of costs.
PUTNAM V. LOMAX.
(Oi/fcuit Court, N. D. nUnois. October 7,1881.)
LETTERS PATENT-MEASURE OF DAMAGES.
The profits of which the patentee is deprived by the manufacture or use ot the device, only a single element of which is covered by his patent, constitute the measure of his damages.
Exception to Master's Report. J. P. Altgelt, for complainant. Charles E. Anthony and West t1: Bond, for defendant. BLODGETT, D. J. This was a suit brought by the complainant against the defendant for an infringement of a patent issued to the complainant, and reissued January 19, 1864, for an improvement in wire bottle-stopper fastening. On the hearing the defendant was adjudged to infringe complainant's patent, and reference was ma.fe to a master to hear proofs, and report the profits which had accrued to the defendants by the use of complainant's patent, and to ascertain and report the damages which complainant had sustained thereby. The master has reported, finding amount of profits made by defendant by use of complainant's device, within the time in controversy, to be $3,585.11. To this report defendant has filed seven exceptions. All these exceptions relate to the amount which complainant is entitled to recover from defendant for the alleged infringement of his patent. The master found tbat the defendant had made over 4,000 gross of the fastenings in violation of the complainant's patent; that complainant was in the business of manufacturing fasteners to supply the trade; and that his profits were 86t cents per gross for the goods at his factory. He therefore fixed the defendant's profits at what would have been the complainant's profits if defendant had bought of him. The claim of this patent, which was sustained by the court in this case, and has been construed and sustained in several other cases by different courts, is "for the U-shaped fastener made of wire, with the ends returned and connected to the bottle in order that the pressure on the cork may cause the fastener to hold more securely, as specified;" and it is urged that as the U-shaped fastener alone does not make the complete instrument or device, but is only one part or element of the device, the profits on the whole fastener (part of which is not covered by complainant's patent) do not furnish a rule for the