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civil engineer in the Navy, an assistant naval constructor in the Navy, and an employee of the United States at Mare Island; that the only caisson gate which either of the defendants had any relation with, control over, or use of, within the state of California, was one constructed, manufactured, and used by the government of the United States and for their use and benefit at the navy yard at Mare Island, and was there built by the Union Iron Works, in pursuance of plans and specifications furnished by the Bureau of Yards and Docks, -a board in the naval service of the United States, -and was delivered by the Union Iron Works to the United States, and used by the United States in the dry dock of that navy yard; and that neither the defendants, nor either of them, made or constructed the caisson gate in ques tion, or used it for their own use and benefit, or ever had, or pretended to have, any interest in or claim upon it; but that they only operated and used it as the officers, servants, and employees of the United States, as a part of the navy yard, and for public uses of the United States, in the exercise of their sovereign and constitutional powers.

The Attorney General of the United States, appearing for this purpose only, filed a sugges13]tion (called in the record a *"plea to the jurisdiction") in which he stated that the caisson gate in question was planned and constructed by the United States, and ever since its construction had been in the possession, control, and use of the United States at the navy yard at Mare Island, and was operated at the dry dock in the navy yard for naval purposes and the public defense, in the building and repair ing of ships for the Navy of the United States: that the United States, through their officers and agents, charged with the possession, control, and operation of that navy yard, bad at all times been in possession, control, and operation of the caisson gate as public property of the United States, for public uses, in the exercise of their sovereign and constitutional powers; and that the defendants, and each of them, never had anything to do with the construction, use, or operation of the gate, or made any claim of right, title, possession, control, or use of it, other than as officers and agents of the United States, and in obedience to orders of the naval department of the government; and therefore, "without submitting the rights of the United States to the jurisdiction of the court, but insisting that the court has no jurisdiction of the controversy, for that the said caisson gate and its use now is and at all times has been the property of the United States," moved that the bill be dismissed, and all proceedings stayed and set aside.

The case having been submitted to the court upon the plea of the defendants, and the suggestion of the Attorney General, both were overruled.

The defendants, Belknap, Feaster, Wolcott, and Diamond, then filed an answer, admitting the grant of the letters patent, denying the infringement, setting forth affirmatively the mat ters stated in their former plea, and alleging that neither these defendants nor the United States were parties to the action brought by the plaintiff against the Union Iron works, or estopped by the judgment therein.

A general replication was filed, and evidence was taken by which it appeared that the va lidity of the plaintiff's patent, and its infringement by the defendants, were subjects of conflicting testimony; that Mare Island and the works and dock *thereon, including the [14 caisson gate, belonged to the United States, and were held and occupied for them by their officers and employees; that the defendants respectively held the positions stated in their former plea and had no interest in the caisson gate, and nothing to do with it beyond operating it under the direction of the United States; that the gate was built in 1884, without any agreement or license of the plaintiff, by the Union Iron Works under its contract with the United States, and according to plans and specifications furnished by the Bureau of Yards and Docks, and Wolcott simply inspected the materials and workmanship, as the work progressed, to see if they were according to the contract; and that the gate had since been used by the United States as part of the dock in the navy yard aforesaid.

After a hearing upon pleadings and proofs, the court made an interlocutory decree adjudging that the patent was valid and had been infringed by the defendants; referring the case to a master to take an account of the number of caisson gates made or used by the defendants, or either of them, in violation of the patent, and also of the gains, profits, and advantages arising or accruing to the defendants or either of them, and of the damages sustained by the plaintiff; and ordering a perpetual injunction against the defendants and each of them, "and their and each of their agents, servants, clerks, and workmen, and all persons claiming or holding under or through them or either of them.”

The master reported that one caisson gate to the dock in the navy yard at Mare Island, for the making and using of which the defendants had been adjudged to have infringed the plaintiff's patent, had been made upon plans furnished by the plaintiff and modified by the government officials, and put in use in 1884; that the cost of this gate was $60,000, and the cost of the cheapest practicable gate, constructed on any other plan known to the defendants, would be at least $100,000, and therefore the gains, profits, and advantages, which had arisen and accrued to the defendants from infringing the plaintiff's patent, amounted to $40,000; and that no damages, in addition to such gains, profits, and advantages, had been proved.

*The court overruled exceptions taken [15 by the defendants to the master's report, confirmed bis report, and entered a final decree for the plaintiff for the sum of $40,000, with interest and costs. The defendants appealed to this court.

Mr. Holmes Conrad, Assistant Attorney General, for appellants. Messrs. J. H. Miller and L. T. Michener

for appellee.

Mr. Justice Gray delivered the opinion of the court:

A recapitulation of the principles heretofore affirmed by this court, touching the liability of

the United States and of their officers and agents to suit in the judicial tribunals, will go far towards disposing of this case.

It should be premised that our law differs from that of England as to the right of the government to use, without compensation, an invention for which it has granted letters patent.

In England, the grant of a patent for an invention is considered as simply an exercise of the royal prerogative, and not to be construed as precluding the Crown from using the invention at its pleasure; and therefore a petition of right cannot be maintained against the Crown for using a patented invention; although a private person or corporation that has contracted to supply the government with articles embodying the invention may be sued for infringement of the patent. Feather v. Queen, 6 Best & S. 257; Dixon v. London Small Arms Co. L. R. 10 Q. B. 130, and L. R. 1 App. Cas. 632. But, in this country, letters patent for in

ceedings must bring his case within the authority of some act of Congress. Such is the language of this court in United States v. Clarke, 33 U. S. 8 Pet. 444 [8:1004]. The same exemption from judicial process extends to the property of the United States, and for the same reasons. As justly observed by the learned judge who tried this case, there is no distinction between suits against the government directly, and suits *against its prop- [17 erty." The Siren v. United States (“The Siren"), 74 U. S. 7 Wall. 152-154 [19: 129, 130]. So much of this statement as regards suits against the United States or against their property was repeated by the present Chief Justice in the recent case of Stanley v. Schoalby, 147 U. S. 508, 512 [37: 259, 261].

It necessarily follows that, unless expressly permitted by act of Congress, no injunction can be granted against the United States. United States v. McLemore, 45 U. S. 4 How. 286 [11:977]: Hill v. United States, 50 U. S. 9 How. 199 [20: 134].

ventions are not granted in the exercise of pre-386 [13: 185]; Case v. Terrell, 78 U. S. 11 Wall.

rogative, or as a matter of favor, but under U. S. Const. art. 1, § 8, which gives Congress power "to promote the progress of science and useful arts, by securing, for limited terms, to authors and inventors the exclusive right to their respective writings and discoveries." The 16 patent act provides that *every patent shall contain a grant to the patentee, bis heirs and assigns, for a certain term of years, of "the exclusive right to make use, and vend the invention or discovery throughout the United States." U. S. Rev. Stat. § 4884. And this court has repeatedly and uniformly declared that the United States have no more right than any private person to use a patented invention without license of the patentee or making compensation to him. United States v. Burns, 79 U. S. 12 Wall. 246. 252 [20:38, 3891; Cammeyer v. Newton. 94 U. S. 225, 235 [24: 72, 75]; James v. Campbell, 104 U. S. 356, 358 [26: 786, 787]; Hollister v Benedict & B.

Mfg. Co. 113 U. S. 59, 67 [28: 901, 903]; United States v. Palmer, 128 U. S. 262: 270-272 [32: 442, 444, 445].

The United States, by successive acts of Congress, have consented to be sued upon their contracts, either in the court of claims, or in a circuit or district court of the United States. Acts of February 24, 1855 (10 Stat. at L. 612, chap. 122, § 1); March 3, 1863 (12 Stat. at L. 765, chap. 92, § 2; Rev. Stat. § 1059); Act of March 3, 1887 (24 Stat. at L. 505, chap. 359, SS 1, 2); United States v. Jones, 131 U. S. 1, 15, 16 [33: 90, 91]. The United States may accordingly be sued by a patentee for their use of bis invention under a contract made with him by the United States or by their authorized officers. United States v. Burns, 79 U. S. 12 Wall. 246 [20: 388]: United States v. Palmer, 128 U. S. 262 [32: 442]; United States v. Berdan Firearms Mfg. Co. 156 U. S. 552 [39: 530].

But the United States have not consente 1 to be liable to suits, founded in tort, for wrongs done by their officers, though in the discharge of their official duties. Gibbons v. United States, 75 U. S. 8 Wall. 269 [19:53]; Morgan v. United States, 81 U. S. 14 Wall. 31 534 [20: 738, 789]; Langford v. Uited States 101 U. S. 341 [25: 1010]; United States v. Jones, 131 U. S. 1, 16, 18 [33: 90, 91]: German Bank of Memphis v. United States. 148 U. S. 573, 579, 580 [37: 564, 568, 569]; Hill v. United States, 149 U. S. 593 [37: 862]. The United States, therefore, are not liable to a suit for an infringement of a patent, that being an action sounding in tort. Schillinger v. United States, 155 U. S. 163 [39: 108]; United States v. Berdan Firearms Mfg. Co. 156 U. S. 552 [39: 530].

The United States, however, like all sover eigns, cannot be impleaded in a judicial tribunal, except so far as they have consented to be sued. This doctrine has been affirmed by this court in cases too numerous to be cited: and was clearly stated by Mr. Justice Field, delivering judgment in the case of The Siren, as follows: "It is a familiar doctrine of the common law, that the sovereign cannot be sued in his own courts without his cor sent. The doctrine rests upon reasons of public policy, the inconvenience and danger which would follow from any different rule. It is obvious that the public service would be hindered, and the public safety endangered, if the su preme authority could be subjected to suit at the instance of every citizen, and consequently controlled in the use and disposition of the means required for the proper administration of the government. The exemption from direct suit is therefore without exception. This doctrine of the common law is equally applicable to the supreme authority of the nation, the United States. They cannot be subjected to legal proceedings at law or in equity without of tort by a private person whose rights of prop. their consent; and whoever institutes such pro-erty they have wrongfu'ly invaded or injured,

A public officer is not personally liable on a contract, although under his own hand and seal, made by him in the line of his duty, by legal authority, and on account of the government, and enuring to its benefit, and not to his own. Hodgson v. Dexter, 5 U. S. 1 Cranch, 345 [2: 130]. See also Macbeath v. Haldimand, 1 T. R. 172; Unwin v. Wolseley, 1 T. R. 674; Palmer v. Hutchinson, L. R. 6 App. Cas, 619.

*But the exemption of the United States [18 from judicial process does not protect their officers and agents, civil or military, in time of peace, from being personally liable to an action even by authority of the United States. Little defense is that he has acted under the order

Barreme, 6 U. S. 2 Cranch, 170 [2: 243]; Bates v. Clark, 95 U. S. 204 [24: 471]. Such officer. or agents, although acting under order of the United States, are therefore personally liable to be sued for their own infringement of a patent. Cammeyer v. Newton, 94 U. S. 225, 235 [24: 72, 75]. See also Feather v. Queen, 6 Best & S. 257, 297; Vavasseur v. Krupp, L. R. 9 Ch. Div. 351, 355, 358.

The extent to which officers or agents of the government may be restrained by injunction from doing unlawful acts to the prejudice of private rights is illustrated by the decisions of this court regarding injunctions from the courts of the United States to officers and agents of a state, which, by the Constitution of the United States, is as exempt as the United States are from private suit. Hans v. Louisiana, 134 U. S. 1 [33: 842].

In a suit to which the state is neither for mally nor really a party, its officers, although acting by its order and for its benefit, may be restrained by injunction, when the remedy at law is inadequate, from doing positive acts for which they are personally and individually lia ble, taking or injuring the plaintiff's property, contrary to a plain official duty requiring no exercise of discretion and in violationof the Constitution or laws of the United States. Osborn v. Bank of United States, 22 U. S. 9 Wheat. 738, 868, 871 [6: 204, 235, 236]; Louisiana Board of Liquidation v. McComb, 92 U. S. 531, 541 [23: 623,628); Allen v. Baltimore & O. R. Co. 114 U. S. 311 [29: 200]; Pennoyer v. McConnaughy, 140 U. S. 1 [35: 363].

But no injunction can be issued against officers of a state, to restrain or control the use of property already in the possession of the state, or money in its treasury when the suit is commenced; or to compel the state to perform its obligations; or where the state has other wise such an interest in the object of the suit as to be a necessary party. Louisiana v. Jumel, and Elliott v. Wiltz, 107 U. S. 711, 720-728 [27: 448, 451-454); Cunningham v. Macon & B. R. Co. 109 U. S. 446, 454-457 [27:992, 995, 19] 996]; Hagood v. *Southern, 117 U. S. 52, 70 [29: 805, 811; Re Ayers, 123 U. S. 443 [31: 216]; North Carolina v. Temple, 134 U. S. 22 [33: 849]; McGahey v. Virginia, 135 U. S. 662, 684 [34: 304, 312].

In support of the decree below much reliance was placed upon United States v. Lee, 106 U. S. 196 [27: 171]; Stanley v. Schwalby, 147 U. S. 508 [37: 259]; and Poindexter v. Greenhow ("Virginia Coupon Cases"), 114 U. S. 270 [29: 185].

In United States v. Lee the decision of the court, speaking by Mr. Justice Miller, was that the owner of land held and occupied by the United States for public uses, but under a defective title, might maintain against the offi cers in possession of the land under authority of the United States an action of ejectment, notwithstanding the interposition of the Attor ney General in behalf of the United States. A year afterwards, Mr. Justice Miller, again delivering the opinion of the court, after mentioning a different class of cases, said: "Another class of cases is where an individual is sued in tort for some act injurious to another in regard to person or property to which his

of the government. In these cases he is not sued as, or because he is, the officer of the government, but as an individual, and the court is not ousted of jurisdiction because he asserts his authority as such officer. To make out his defense he must show that his authority was sufficient in law to protect him." After citing several cases to this point he added: "To this class belongs also the recent case of United States v. Lee, 106 U. S. 196 [27: 171], for the action of ejectment in that case is, in its essential character, an action of trespass, with the power in the court to restore the possession to the plaintiff as part of the judgment. And the defendants Strong and Kaufman, being sued individually as trespassers, set up their authority as officers of the United States, which this court held to be unlawful, and therefore insufficient as a defense. The judgment in that case did not conclude the United States, as the opinion carefully stated, but held the officers liable as unauthorized trespassers, and turned them out of their unlawful possession." Cunningham v. Macon & B..R. Čo. 109 U. S. 446, 452 [27. 922, 994].

This statement of the decision in United States v. Lee, supra, was *repeated in Stan-[20 ley v. Schwalby, 147 U. S. 508 [37: 259], in which the point decided was that the statute of limitations or adverse possession might be pleaded in defense of an action of trespass to try title against officers of the United States. 147 U. S. 508, 518 [37: 259, 263].

In Cunningham v. Macon & B. R. Co., above cited, a bill in equity to foreclose a second mortgage of a railroad, and to set aside as invalid a sale and conveyance of the road to the state of Georgia under a foreclosure of the first mortgage, was filed by holders of bonds secured by the second mortgage against the governor and the treasurer of the state, as well as against the railroad company and its directors; and was ordered to be dismissed for want of jurisdiction, because, as was said in the opinion, "it may be accepted as a point of departure unquestioned, that neither a state nor the United States can be sued as defendant in any court in this country without their consent, except in the limited class of cases in which a state may be made a party in the Supreme Court of the United States by virtue of the original jurisdiction conferred on that court by the Constitution. This principle is conceded in all the cases, and whenever it can be clearly seen that the state is an indispensable party to enable the court, according to the rules which govern its procedure, to grant the relief sought, it will refuse to take jurisdiction. In the case now under consideration the state of Georgia is an indispensable party. It is, in fact, the only proper defendant in the case. No one sued has any personal interest in the matter, or any official authority to grant the relief asked. No foreclosure suit can be sustained without the state, because she has the legal title to the property, and a purchaser under a foreclosure decree would get no title in the absence of the state. The state is in the actual possession of the property, and the court can deliver no possession to the purchaser. The entire interest adverse to plaintiff in this suit is the interest of

1895.

BELKNAP V. SCHILD.

the state of Georgia in the property, of which | consequently the circuit court was without ju

she has both the title and possession." 109 U. 8. 451, 457 [27: 994, 996].

In the cases cited by the appellee, reported under the head of Poindexter v. Greenhow ("Virginia Coupon Cases"), 114 U. S. 270 [29: 185], where a collector of taxes due to the state 21] of Virginia refused to receive *coupons of the state tendered in payment of such a tax, because forbidden to do so by a statute of the state, which was unconstitutional and void as impairing the obligation of the contract made by the state with the holders of such coupons in the statute under which they were issued, the court, speaking by Mr. Justice Matthews, held that the court was liable to an action of detinue or of trespass, for distraining personal property for nonpayment of the tax; or, where the remedy at law was inadequate, might be restrained by injunction from mak ing the distraint. Poindexter v. Greehow ("Virginia Coupon Cases"), supra; Chaffin v. Taylor, 114 U. S. 309 [29: [29 198]; Allen v. 0. R. Co. 114 U. S. 311 [29: 200].

tion and the commitments for contempt were
risdiction to entertain it, the order of injunc-
null and void, and the imprisonment of the
officers was without authority of law. Re
Ayers, 123 U. S. 443, 489, 502, 506, 507 [31:
216, 224, 228, 230].

When the matter of the Virginia coupons
was last brought before this court, Mr. Justice
Bradley, delivering its unanimous opinion,
summed up, as the result of the previous de-
cisions, so far as concerns the subject now un-
der consideration, "that no proceedings can be
instituted by any holder of said bonds or cou-
pons against the commonwealth of Virginia,
either directly by suit against the common-
wealth by name, or indirectly against her exec-
utive officers to control them in the exercise of
their official functions as agents of the state;"
but that any holder "who tenders such cou-
pons in payment of taxes, debts, dues, and de-
mands due from him to the state, and continues

to hold himself ready to tender the Baltimore & molestation in person court of the United

But where the circuit
States, at the suit of one who has tendered such
coupons in payment of his taxes, issued an in-
junction against the Attorney General and
other attorneys of the state of Virginia to re-
strain them from bringing any action in behalf
of the state to recover such taxes, and, upon
their bringing such actions, committed them
for contempt in disobeying the injunction, they
were discharged by this court on writs of

babeas corpus. Mr. Justice Matthews, again
delivering its opinion, and fully reviewing the
previous cases, said that from the decision in
Cunningham v. Macon & B. R. Co., above cited,
"the inference is, that where it is manifest,
upon the face of the record, that the defend-
ants have no individual interest in the contro-
versy, and that the relief sought against them
is only in their official capacity as representa-
tives of the state, which alone is to be affected
by the judgment or decree, the question then
arising, whether the suit is not substantially a
suit against the state, is one of jurisdiction;"
and added that actions had been sustained
against officers acting in behalf of a state "only
in those instances where the act complained of,
considered apart from the official authority al
leged as to its justification, and as the personal
act of the individual defendant, constituted a
violation of right for which the plaintiff was
entitled to a remedy at law or in equity against
the wrongdoer in his individual character;"
and that the 11th Amendment of the Constitu-
tion, declaring that "the judicial power of the
22 United States shall not be construed to
extend to any suit in law or equity, commenced
or prosecuted against one of the United States
by citizens of another state, or by citizens or
subjects of any foreign state," must be held "to
cover, not only suits brought against a state
by name, but those also against its officers,
agents, and representatives, where the state,
though not named as such, is, nevertheless,
the only real party against which alone in fact
the relief is asked, and against which the judg-
ment or decree effectively operates;" and there-
fore concluded that the suit in which the in-
junction was granted was in substance and in
law a suit against the state of Virginia, and

48

same

in

payment thereof, is entitled to be free from
account of

or goods on

such taxes, debts, dues, or demands, and may
vindicate such right in all lawful modes of re-
dress,-by suit to recover his property, by suit
against the officer to recover damages for tak-
ing it, by injunction to prevent such taking
where it would be attended with irremediable
injury, or by a defense to a suit brought against
Lim for his taxes or the other claims standing
against him." McGahey v.
S. 662, 684 [34: 304, 312]. And this summary
was repeated and approved in Pennoyer v.
McConnaughy, 140 U. S. 1, 15 [35: 363,
367].

Virginia, 132 U.

*It only remains to apply the principles [23 established by the former decisions to this suit under the patent act of the United States.

That act not only provides that "damages by action on the case," but also profor the infringement of any patent may be re covered vides that "the several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of any right secured by patent, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for an infringement, the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant hassustained thereby; and the court shall assess the same, or cause the same to be assessed under its direction." U. S. Rev. Stat. §§ 4919, 4921.

This bill in equity was filed by the owner of letters patent for an improvement in caisson gates, and alleged that the defendants infringed the patent by manufacturing and using such gates. The defendant filed a plea to the whole bill, and the Attorney General, in behalf of the United States, filed a suggestion, the single ground of each of which was that the only caisson gate that the defendants had any relation with was not made by them, and was not used by them for their own benefit but was made and used by the United States in a 603 dry dock at a navy yard, and the defendants only operated and used it as officers, servants,

and employees of the United States. The fact so pleaded and suggested could not, consistently with the previous decisions, above cited, prevent the defendants from being held liable to the patentee for their own infringement of his patent. There was no error, therefore, in overruling the plea of the defendants and the suggestion of the Attorney General.

But the circuit court erred in awarding an Injunction against the defendants.

As this court, when deciding that things manufactured under letters patent of the United States were subject to be taxed by a state like other property, said: "The right of 24]*property in the physical substance, which is the fruit of the discovery, is altogether distinct from the right in the discovery itself." Patterson v. Kentucky, 97 U. S. 501, 506 [24: 1115, 1117]. Title in the thing manufactured does not give the right to use the patented invention; no more does the patent right in the in vention give title in the thing made in violation of the patent.

In an English case quite analogous to the case at bar, where shells, bought and owned by a foreign sovereign, were brought to England to be put on board his ships of war, the court of appeals held that his agents, if they used the shells in England in infringement of an English patent, might be liable in damages to the patentee, but that the court could not restrain the delivery of the shells to the sovereign to whom they belonged. Lord Justice Brett said: "The patent law has nothing to do with property;" and Lord Justice Cotton expressed the same idea more fully as follows: "The prop erty in articles which are made in violation of a patent is, notwithstanding the privilege of the patentee, in the infringer, if he would otherwise have the property in them. The court, in a suit to restrain the infringement of a patent, does not proceed on the footing that the defendant proved to have infringed has no property in the articles; but, assuming the property to be in him, it prevents the use of those articles, either by removing that which constitutes the infringement, or by ordering. if necessary, a destruction of the articles so as to prevent them from being used in derogation of the plaintiff's rights, and does this as the most effectual mode of protecting the plaintiff's rights-not on the footing that there is no property in the defendant. The court cannot proceed to give that relief, and interfere with the articles, unless it has before it the per son entitled to the articles in question, and has as against this person power to adjudicate that the articles are made or used in infringement of the plaintiff's rights." Vavasseur v. Krupp, L. R. 9 Ch. Div. 351, 358, 360.

In the present case, the caisson gate was a part of the dry dock in a navy yard of the United States, was constructed and put in place by the United States, and was the property 25] of the *United States, and held and used by the United States for the public benefit. If the gate was made in infringement of the plaintiff's patent, that did not prevent the title in the gate from vesting in the United States. The United States, then, had both the title and the possession of the property. The United States could not hold or use it, except through officers and agents. Although

this suit was not brought against the United States by name, lut against their officers and agents only, nevertheless, so far as the bill prayed for an injunction and for the destruction of the gate in question, the defendants had no individual interest in the controversy: the entire interest adverse to the plaintiff was the interest of the United States in property of which the United States had both the title and the possession; the United States were the only real party, against whom alone in fact the relief was asked, and against whom the decree would effectively operate; the plaintiff sought to control the defendants in their official capacity, and in the exercise of their offi. cial functions, as representatives and agents of the United States, and thereby to defeat the use by the United States of property owned and used by the United States for the com mon defense and general welfare; and there fore the United States were an indispensable party to enable the court, according to the rules which govern its procedure, to grant the relief sought; and the suit cou'd not be maintained without violating the principles affirmed in the long series of decisions of this court, above cited.

There was also error in the final decree awarding profits to the plaintiff as against the defendants.

In a suit in equity for the infringement of a patent, the ground upon which profits are recovered is that they are the benefits which have accrued to the defendants from their wrongful use of the plaintiff's invention, and for which they are liable, ex æquo et bono, to the like extent as a trustee would be who had used the trust property for his own advantage. The defendants in any such suit, are therefore liable to account for such profits only as have accrued to themselves from the use of the invention, and not for those *which have ac-[26 crued to another, and in which they have no participation. Elizabeth v. American Nicholson Pav. Co. 97 U. S. 126, 138 140 [24: 1000, 1005, 1006]; Root v. Lake Shore & M. S. R. Co. 105 U. S. 189 [26: 975]; Ti ghman v. Proctor, 125 U. S. 136, 144-148 [31: 664, 666-668]; Keystone Mfg. Co. v. Adams, 151 U. S. 139, 147 [38: 103, 105]; Coupe v. Royer, 155 U. S. 565, 583 [39: 263, 270].

In the leading case of Elizabeth v. American Nicholson Pav. Co. a suit in equity for the infringement of a patent for an improvement in wooden pavements was brought against a city, as well as against the contractor who had laid down the pavements. It being shown that the city had made no profits from the use of the invention, but that the contractor bad, this court held that profits could be recovered against the contractor only, and not against the city. city. Mr. Justice Bradley, in delivering judgment, said: "One thing may be affirmed. with reasonable confidence: that if an infringer of a patent has realized no profit from the use of the invention, he cannot be called upon to respond for profits; the patentee, in such case, is left to his remedy for damages." 97 U. S. 138 [24: 1005].

In the case at bar there was no evidence that the defendants themselves had made any profits whatever from the use of the plaintiffs invention; but the only gains, profits, and

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