HAYDEN V. THE ORIENTAL HILLS.
THE ORIENTAL MILLS.
(Oircuit Court, D. Rhode Island. March 12,1883.)
OF ACTIONS-CoPY UNDER THE PROVISIONS OF
ST. § 721.
.State statutes of limitations are applicable to actions at law for the infringement of a patent. .
At Law. J. L. S. Roberts, for plaintiff. Benj. F. Thurston, for defendant. Before LOWELL and COLT, JJ. LOWELL, J. The plaintiff brings this action on the case for infringement of his rights under a patent. The defendant pleads that the infringement, if any, occurred more than six years before action brought, which is a bar by the statute of Rhode Island. Pub. St. c. 205, § 3. The plaintiff demurs. Several judges of great ability and experience have held that the statutes of limitations of the states do not affect actions upon patent . rights, upon the theory that section 34 of the judiciary act, (now Rev. St. § 721,) making the laws of the states the rules of decision in the courts of the United States, in aotions at the common law, does not apply to aotions which are within the exolusive jUl'isdwtion of the oourts of the United States. There are several able deoisions on the other side, but perhaps the weight of authority is with the plaintiff on this point. We give the oitations in a note at the end of this opinion. This, is an aotion at law, and if the statutes in ,question do not apply, there is no limitation, unless it be that of Rhode Island in 1789, for a oourt of common'law has no discretion to refuse to entertain stale claims. This result appears to us to be inadmissible. No reason is given in any decision for excepting one class of oases out ofseotion 721. Some arguments upon the general question have been made which we shall advert to. There is no suoh exoeption in the statute itself, and none in its intent and purpose. Exclusive jurisdiotion is given for reasons which are apart from this question. For instance, in patent oases the federal courts have this oontrol in order that the oonstruction of the law and of the patents granted under it may be as nearly uniform as possible, not that bhe remedies of a patentee shall be of uniform duration. Equity is a uniform system in the federal oourts throughout the United States, but the remedies in equity are barred in those courts l:>y the state sk.tutes of limitations in certain oaaes.
Suppose congress chooses to give assignees in bankruptcy or national banks an exclusive right to sue in the courts of the United States, can anyone maintain that their debtors have no protection a special statute of limitations is passed by the lapse of time, by the national authority? . This thMry of the dependence of section 721 upon . concurrent jurisdiction seems to be an echo of the rule that courts of equity, and perhaps even courts of admiralty, are bound by the state statutes of limitations in cases of concurrent jurisdiction; hut it is not concurrent jurisdiction of the state courts, but that of courts of common law, state or national, which decides the point. Besides, what is this concurrent jurisdiction? There are very few' cases in which the jurisdiction is really concurrent. In nearly all the defendant has an absolute and conclusive right to make the jurisdiction of the federal courts exclusive by a removal of the cause. The truth is that section 721 is a declaratory act, announcing a. general doctrine of international law, and the supreme court have so construed it. They apply it only to local matters, such as land laws, statutes of limitations,and the like, and in those cases they apply the' same rule in equity, though equitable suits are not mentioned in the act; and on the other hand they refuse to apply it to general questions,such as those of commercial law, though when arising at common law they are within the words of the act. The United States, when theyal'e plaintiffs, are not bound by such statutes of limitations; but this is because they are not bound by similar acts of congress, unless specially mentioned, and they are not mentioned in section 721. It is said that the states cannot declare when actions on patent rights shall be barred. Very true; but neither can they bar any actions in the federal courts. The bar arises from the constitutiou and situation of those courts, the general international law, and section 721. If not, it would seem to follow that there is no limitation, or that it depends upon the law of Rhode Island in 1789, as in U. S. v, Read, 12 How, 361, in which the court, finding that section 721 did not apply to criminal cases, were obliged to fl.nd some law, and went back to the origin of the government. To us it seems as inadmissible to say that section 721 does not apply to patent cases, as that the law adopting the general practice of the states does not apply to them. In one particular it perhaps does not, because the statute says that an action on the case shall be the remedy. This is a reproduction of the old law which was passed when, all the states had that form of action, and it mayor ma,y not
HAYDEN V. THE ORIENTAL MILLS.
now be an exclusive remedy; but no one can deny that in othor respects the process and procedure acts apply to actions at law for the infringement of patent rights. A dozen questions may arise in any patent case whieh can only be decided 'by the law of the state. right There is no doubt," of covrse, , of tlle ' . , of congress. to " I ', , statute pf limitations for patept causes. 'I; he poWe;r is, re· served in section 721, and by the act of 181,0, secW>1l 55, (16 St. 206,) ,they ma.d6such;a.law, which actions s1l.a11 be or brought within the term for which extended, or within six years thereafter. Congress, wilen they passed this act, may havesuppoaed that there was no limitation ; butt if so, theyifonn'dout ,their for this parfofthepatent w'liepthey passe<J by the chapter on patents. Sa,yles v.O'regon Gentral By. Go. 6 Sawy. 31; VauiJhnv. East Tenn., e£c.:,R.,Oo.llO.G. ,789., When they 'thus of ,Btate law became agaiD; to future infringements; but one of, the repealing sections (section 55!l9) reserves all existing causes of action, so far as limita,tions are concerned, precisely as though no repeal had been made. Sayle's v. Oregon GentralRy. Go.,supra; Vaughn v.East Tenn., etc.', R. Go., supra. The plaintiff declares upon a ·patent granted in 1857 and extended in 1861, expiring in 1878, and,a;lleges.damage for the whole period of 21 y'ears. The plew, which 'merely sets u.p the bar of six years hI)fore-action brought,does not fully answer this declaration in the view we have taken of the law, becal1se, granting that when the actof 1870 was passed-, Rn action for a part of the damages was barred, a:n.d granting that all causes of action which have accrued since the act waa repealed, and more tha.n six years before the aervice of the writ, are barred, there may remain, for anything that appears declaration, certain 'tights which arose between these times which are saved by the very strong language of the repealing act. The precis(:} effect of these acts and repeals will come up more properly' at the trial, under a modified plea, if one should be filed. It is plain that the plea is 'too bl'oad and must be· overruled...
*'fhat the state statutes govern such cases: Pal'ker v. Hawlt,2 Fisher, 58; Parker 'Y. Hall. 2:fisher,62, nole: lUch v. Rickett.9, 7B1atchf.230: Sayles,v. Oregon Cent. Ry..Co. 6 Sawy.,31 ; Sayles 'Y. R. F. lYtP. R. Co. 4 Ban. & A, That the state laws do not govern: Parlter v. Hallock, 2 Fisher, 543, note: Collins v. Peebles, 2 Fisher, 541; Read v. Miller, 2 Biss. 12: Anthony v. Carroll. 2 BaT\. & A. 19;:); Wood v. Clevellmd RollinfJ'-mill Co.4 Fisher, 550; Wetherell
FEDERAL REPORTER. STEAM STONE CUTTER CO. v. SHELDONS and others.
(Oircuit Oourt, D. Vermont.
PATENT'LAw-INFRINGEMENT-CHOICE OF ACTIONS.
The sale of machines embodying the patented inventions of anofher to one for use, is an invasion of the patentee's rights, and such a conversion of his property as will render the party so seIling the invention liable in an action for tort. But in such case the plaintiff may waive the tort and sue in a88umpifit for the money received from the sale.
SAME-MEASURE OF DAMAGES-WAIVER.
In an action or proceeding for the money, the measure of damages would be the amount of money received, not the amount of damages done, and all righ t of recovery beyond that would be waived. This is the effect of waiving the tort. The recovery of satillfaction in either form would pass the right to that for which satisfaction was had, and there could be no damages beyond. Consequently, when the plaintiff has recovered and received satisfaction for the tOrt committed the title to so much of'his property as was wrongfully converted will have passed by the sale and conversion and no damages will accrue to him on account of further use of that property.
In Equity. Aldace F. Wa,lker, for orator. Walter G. Dunton, for defendants. WHEELER, J. This suit is brought for relief against of several patents owned by the orator by the use of maohines embodying the patented inventions bought by the defendants of the Windsor Manufacturing Company, with a guaranty of the right to use. The orator brought suit against the Windsor Manufacturing Company for infringement of the same patents, and olaimed to recover therefor the profits on these sales to the defendants here. To this the Windsor Manufacturing Company objected on account of the guaranty. Upon this question it was held that the liability on the guaranty would not relieve that company from the liability to account for the profits on these sales, for the reason that after a recovery and satisfaction clearly, if not after a recovery only, for those profits, the right to use those machines, would have passed to these defendants, so that they would not be liable to the orator for the use of the machines, and there would be no liability over on the guaranty to take away or reduce the profits; and a decree was passed for tIle recovery, among other things, of these profits. Steam Stone Gtttter Co. v. Windsor Manuf'g Go. 17 Blatchf. C. C. 24. The orator has recovered upon that decree some money, and has caused real estate to be set off on execution in satisfaction of the balance. Other persons