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was reserved for consideration. The motion was again repeated at the close of the testimony in the case. The motion is made on two grounds. One is that the defendant in the case is the agent of the Singer Sewing Machine Company, and is not liable; and the other, that there is no infringement.
Considering the first ground, in an action in form ex delicto,that is, for a tort,—the rule is, all who participate in a wrong are liable. In other words, a tort is the separate act of each individual, and all may be joined, or either may be sued separately. The relation of master and servant-principal and agent-does not relieve from liability. It may make the master or principal liable, but it does not release the servant or agent.
"An agent or servant,”-I read from 1 Chit. Pl. p. *84,-"an agent or servant, though acting bona fide under the directions and for the benefit of his employer, is personally liable to third persons for any tort or trespass he may commit in the execution of the orders he has received. If the master has not the right or power to do the act complained of, he cannot delegate an authority to the servant which will protect the latter from responsibility. Therefore a servant may be charged in trover, although the act of conversion be done by him for his master's benefit. And a bailiff who distrains is liable, if the principal has no right of distress. And a customhouse officer may be sued for a wrongful seizure made by him in that character. There is no injustice in this doctrine, as regards the servant; for, if the act were not manifestly illegal, the indemnity of the principal to the servant against the consequences is not illegal, and will, in many instances, be implied.”
What is the nature of an action for an infringement of a patent? Undoubtedly a tort, and the rule necessarily applies, unless the statute relieves from it.
The statute says:
“That damages for the infringement of any patent may be recovered by action on the case.
There is no obscurity as to what this means. An action on the case is a well-known action in form ex delicto. Judge Lowell, in Nickel Co. v. Worthington, 13 Fed. 392, says: “Infringe ment is not a trespass.” He evidently did not mean it was not a tort, and the distinction he made between trespass and case—which was the common-law one did not justify the learned judge in applying the law of torts to one and exempting the other. Trespass and case are both forms of action ex delicto; both brought for torts,—the first those committed by force and immediately; the second, those not committed with force, or not immediately.
The rule as to participants and parties applies to both. The inquiry necessarily is, who are participants in an act of infringement in making or using or selling the patented article? Regarding cases alone, they are neither, abstractly considered, clear, nor, comparatively considered, harmonious. Robinson on Patents says (section 912):
"How far the officers, stockholders, and employés of a private corporation participate in its infringing acts, and thereby share its liability, is still an open question. That they may be enjoined whenever this is necessary to protect the patentee against future infringements is universally conceded; but whether they can be held in damages for past infringements has been variously decided. One opinion, following the doctrine of limited liability as usually applied to private corporate bodies, regards the infringing act as the act of the corporation alone, and declares that none of its members or officials legally participate therein. Another, affirming the rule that every voluntary
perpetrator of a wrongful act of manufacture, use, or sale is an infringer, considers its directors, agents, and other servants, actually employing or authorizing the employment of the patented invention, as guilty of the infringement, and personally answerable to the patentee. A third, viewing the acceptance of the benefit of the infringing act as furnishing the test of liability, treats its stockholders as infringers, whether or not they are its officers or agents, and exempts the latter, unless they are also members of the corporation. The first opinion is scarcely consistent with a due regard to the rights of the patentee, whose invention might then be practiced with impunity by an insolvent corporation, nor with the general tenor of the patent laws, which permit no voluntary and unauthorized act of manufacture, use, or sale, direct or indirect, to pass unpunished. The third confuses the benefit derived by the stockholders with that accruing to the corporation, the benefit of the former being no more closely related to the infringement than that of creditors or innocent employés, or that of dealers in or users of the products of infringing processes,--and is pregnant with evil and unjust consequences to all members of private corporations, especially to minorities who neither acquiesce in the infringement nor in the appointment of the officers or agents by whom it is committed. The second is in harmony with other doctrines of the law, sufficiently protects the patentee, and justly punishes those whose willful acts place them on the same footing with individual infringers. Under this opinion, all agents who perform acts of infringement, and all stockholders, directors, and other officers who, in the prosecution of the business of the corporation, authorize them, participate in the infringement, and are personally responsible to the patentee.”
The learned author's conclusion is certainly in harmony with the law of the liability for torts of misfeasance. See Cooley, Torts, 133 et seq.
A strict application of the rule would make all servants liable, but a distinction has obtained between mere workmen and agents. The distinction may be artificial and arbitrary, and though starting apparently in a dictum of Judge Hopkinson in Delano v. Scott, Gilp. 489, Fed. Cas. No. 3,753, and based upon consequences somewhat fanciful, nevertheless seems to have maintained itself, and is as firmly established as nisi prius decisions can establish any rule of law. With this exception, the rule is, both on principle and authority, that servants and agents are responsible. Estes v. Worthington, 30 Fed. 465, and cases cited; Rob. Pat. § 920, and notes; National Car-Brake Shoe Co. v. Terre Haute Car & Manuf'g Co., 19 Fed. 514. It is not necessary to review all the cases. They are classed in the quotation from Rob. Pat., supra. What acts of participation in infringement, if there was infringement, did the defendant perform? In his answer he says:
"That during more than twelve years last past the said corporation, the Singer Manufacturing Company, has had and maintained a place of business in the city of San Francisco, in the said Northern district of California, where it has carried on a local business in selling the said Singer sewing machines, and which machines it has sent from its factory in New Jersey to said city of San Francisco for that purpose. Defendant further avers that, in carrying on its said business of selling said sewing machines, the said corporation, the Singer Manufacturing Company, has employed this defendant to act as its employé in making sales of said sewing machines, and in attending to said local business in said city of San Francisco, and this defendant has acted as the employé of said corporation, the Singer Manufacturing Company, in repairing and using, so far as it was necessary to use them for testing their condition, and in selling, the said sewing machines and has done whatever was necessary in and about the carrying on of said local business in the city of San Francisco, as the employé of said corporation, the Singer Manufacturing Company, and in no other way or manner whatever; that he has neither made nor used nor repaired nor sold any sewing machines or sewing-machine treadles in his own right, nor in his own name, but that all the making, repairing, using, and selling of sewing machines or sewing-machine treadles that has been done by this defendant, and which is claimed to constitute an infringement of said letters patent, has been the making or repairing or using or selling done and performed by the said corporation, the Singer Manufacturing Company, by and through this defendant, as its employé, and in no other way; that this defendant has not, at any time, been the owner of any sewing machines or treadles, and has not, at any time, either made or used or repaired or sold any sewing machines, or sewing-machine treadles, or sewing-machine apparatus, or sewingmachine attachments of any nature or kind, otherwise than as employé as aforesaid."
He testified, however, that he made no sale personally, but he is at the head of the agency of this coast, and is the medium to execute the instructions of the company in the receipt and issue and sale of the machines, and for this he receives a salary of $25 per week, and a commission on all moneys reported by him. Manifestly, the amount of commission is dependent on the sales, rising and falling with them. I think this makes him quite an active instrument in the disposition of the machines and participant in the infringement, if infringement exists.
That brings us to the second ground of defendant's motion. Infringement, of course, is usually a question of fact, and whether an answer to this question is a question of law, as contended for by defendant, will be determined by the construction of the patent It has two claims, the first only being alleged to be infringed. It is as follows:
“What I claim, and wish to secure by letters patent, is the vertical double brace joining the legs of the two ends of a sewing machine, provided with holes through its lower extremities to serve as bearings, in combination with a treadle provided with trunnions fitted to oscillate in said bearings, substantially as specified."
The language of itself is clear enough, and the controversy between the parties is whether it shall be confined to the mechanism described and its arrangement, or be held to cover structurally different mechanism, and a different arrangement. In the first specification filed by plaintiff he said, reverting to what took place in the patent office:
"I, Herman Cramer, of the city of Sonora, in Tuolumne county, in the state of California, have invented certain improvements in a treadle to be used in sewing machines, or other machinery where a noiseless treadle may be required, of which the following is a specification."
He then describes the treadle. He says the treadle is V-shaped; the treadle bar rests in socket in the brace, C, which is immediately above a cross brace; and then says:
“My invention consists in having the ends of the treadle bar V-shaped, to fit in hole in brace, C, also 3.shaped to receive the ends of the treadle bar. This V-shaped treadle bar in brace, C, entirely prevents noise from the treadle, is self-adjusting, and does away with the necessity of coons and set screws now in use. This I claim as my invention."
This was rejected for informality by the examiner of the patent office, but in his letter he refers to a patent to G: W. Gregory, April 18, 1882, as exhibiting the alleged invention. This patent is in evidence, and is one for knife-edge bearings, which seems to indi cate that the examiner thought that Cramer's invention was for knife-edge bearings. To correct the informality, other specifications were filed, which are as follows:
“I, Herman Cramer, of the city of Sonora, in Tuolumne county, in the state of California, have invented certain improvements in a treadle and brace to be used in sewing machines, or other machinery where a noiseless treadle may be required, of which the following is a specification: My invention consists in a combination of the usual platform, marked 'A,' in Fig. 1 of diagram on treadle bar. The ends of said treadle bar, marked 'B' are to bear against mufflers."
Then he proceeds to describe as in the other: "The treadle bar, with mufflers on the ends working or bearing in or on brace, entirely prevents noise from the treadle, is self-adjusting, and does away with the necessity for coons and set screws now in use. [Then he represents by figures.] What I claim is a combination of brace, c, with socket or bearing in it or on it, to receive the treadle bar with the mufflers at the ends of treadle bar, or in or on brace, C, in connection with said brace, c, and the treadle bar in connection with brace, C, and mufflers to work in or on the brace, C, substantially as set forth.”
To these specifications and claims the examiner replied on August 14, 1882:
“Applicant's amended claims are met by the patent of J. E. Donovan, June 28, 1880, No. 243,529, in view of which a patent is again refused." The Donovan patent is in evidence, and I will not detail it.
It is also for knife-edge bearings situated on the cross bar or on the legs of the machine.
Becoming dissatisfied with his attorneys, as he testifies, they not comprehending him or his invention, he changed to Munn & Co., of Washington, considered to be competent patent attorneys. They filed another specification, which specification constitutes the speci. fication of the patent. It is as follows:
"Be it known that I, Herman Cramer, of Sonora, in the county of Tuolumne, and state of California, have invented a new and improved sewing-machine treadle; and I do hereby declare that the following is a full, clear, and exact description of the same, reference being had to the accompanying drawing, forming part of this specification: My invention relates to improvements in the bearings of sewing-machine treadles; and it has for its object to provide means, first,"-mark the language,-"improvements in the bearings of sewing-machine treadles; and it has for its object to provide meansFirst, to keep the treadle bearings rigidly in line, and at a fixed distance apart, to avoid friction; and, second, to make its movement, in use, noiseless. To this end my invention consists in the construction and combination of parts hereinafter fully described and claimed,”—mark the language again,“my invention consists in the construction and combination of parts hereinafter fully described and claimed, reference being had to the accompanying drawings, in which,” etc.
Then follows a detailed representation by figures, disclaiming, however, the invention of knife-edge bearings, simply, by the following language:
"I am aware that sewing-machine treadles have before been provided with V-shaped bearings, and I do not claim the same as my invention.”
Then follows the claim which I have already read. Accompany ing this specification was the following letter from Munn & Co.:
“A new oath is herewith filed. Gregory, referred to, pivots the grooved trunnions of his treadle upon knife edges secured within the upper loops of two others, which are secured to the cross bar by means of set screws to keep them from turning. Donovan pivots his treadle upon its trunnions, having sharpened edges, in grooves in the cross bar, where it is held by collars provided with flanges projecting over the trunnions. Applicant pivots his treadle upon the sharpened edges of its trunnions, in loopholes in the two ends of the brace, which is bolted to the legs of the machine by the two ends of the cross bar. This service of the cross bar might be as well performed by two short bolts; but, the bar being a usual cross tie to stiffen the legs, applicant uses its ends as bolts to hold his brace ends to the legs. We have rewritten the specification, to elucidate the inventor's claim. Should the case meet with favorable consideration, a new drawing will be furnished. For the purpose of examination, see pencil sketch on sheet of drawing filed."
The examiner still objected, and seemed persistent in understanding that the patent was for the knife-edge bearings, whereupon Munn & Co. write another letter, dated October 25, 1882, and say:
“In the matter of the application for letters patent for sewing-machine treadle by H. Cramer, filed May 25, 1882, we file herewith a new drawing in this case. "Your obedient servants,
Munn & Co." It will be observed that these proceedings all tend to making special the devices, and fixing their relations. It must be assumed, of course, that the technical language of the claim of the patentee was used technically. The double brace is provided with holes to serve as bearings, and the treadle provided with trunnions having knife edges to oscillate in said bearings. What, then, is a bearing? It is defined by Webster to be, in mechanics: (a). The part in contact with which a journal moves, as the journal boxes, trusses, etc.; (b) that part of the shaft or axle which is in contact with the supports. To the same effect is Knight's American Mechanical Dictionary, only reversing the order: (a) The portion of an axle or shaft in contact with its collar or boxing; (b) the portion of the support on which the gudgeon rests and rotates. The definition of the witnesses makes the bearing consist of two parts, one movable and one immovable; the definition of the books makes it consist of either part, either the movable or immovable part; the patentee uses it for the immovable part. The holes in the cross brace are to be the bearings for the trunnions of the treadle. The corresponding bearing in the defendant's machine is not in the treadle. In this particular the devices are different,—the bearings are not in the same place. In plaintiff's device it happens that both bearings are in the cross brace. In defendant's device, however, even if we consider the support as part of the bearings, as contended for by plaintiff, only one bearing is in the cross brace. But in the definition of a bearing we observe that the support is not a part of it; a bearing being “the portion of the support on which the gudgeon rests and rotates.” Again, the treadle of the patentee is provided with trunnions with knife edges; the treadle of the defendant is without trunnions and without knife edges. This makes another difference. It is familiar law that all the elements of a combination must be used to make infringement, no matter how immaterial any one may be. Is a treadle with a trunnion the same thing as a treadle without a trunnion ? If not, the omission of the trunnion is the omission of the element. But, passing this, is a treadle with