Peter Vivian Daniel

“ The principle is well settled, that a court of equity sometimes forces the character of a trustee upon an intruder, a wrongdoer, or one who is in possession under color of right, and who takes rents or profits which belong to another, or might have taken them. ”

“ So soon as the originality and priority of the Woodworth patent was ascertained by law, the appellants consented to be perpetually enjoined from the use of their machine, (the Hutchinson machine,) and to account for whatever gains and profits they had received from its use. Under these circumstances, were the infliction of damages, by way of penalty, ever consistent with the practice of courts of equity, there can be perceived in this case no ground whatever for the exercise of such a power. ”

“ That by the decision of the court they were trespasers and wrongdoers, in the legal sense of these words, and consequently in a position to be mulcted in damages greater than the profits they have actually received: the rule being not what benefit they have received, but what injury the plaintiffs have sustained.' To what rule the master has reference in thus stating the grounds on which his calculations have been based, we do not know. We are aware of no rule which converts a court of equity into an instrument for the punishment of simple torts ”

“ In obedience to the decretal order last mentioned, the master made a second report, by which he charged the defendants for profits on the work done by their machine at the rate of one dollar per thousand feet, instead of fifty cents, as in his former report, from the 8th day of July, 1845, the date of the reissued patent. He says it is true that the rate of profit adopted by him is conjectural, 'but that he does not think he has infused into the case any element to unfavorable to the defendants. ”

“ All the authorities and precedents which declare that the infringer is to account in equity for the 'profits' made by the unlawful use of the invention, contemplate a case where the actual profits are all that could have been made, or else that question has not been raised. This is a case where the evidence shows that the respondents so conducted their business that the actual profits were less than half what might have been realized by the patentee from the same business. ”

“ In the case before us the objection of misjoinder of the plaintiffs nowhere appears upon the pleadings, nor, for aught that is disclosed, was it insisted upon even at the hearing: it is urged for the first time after the hearing and after a final decree, and to allow this objection at so late a stage of the proceedings, would be a surprise upon the appellees, and might operate the most serious mischiefs. ”

“ Indeed the complainants below, and the Circuit Court itself, have shown by their own interpretation of this decretal order, that they did not understand it to mean, as in truth by no just acceptation it could mean, any thing fixed, definite and immutable; for the complainants below excepted to the report of the master, and the court recommitted that report with a view to its alteration. Nor can we regard the reference to the master as in the nature of an arbitration ”

“ The only question in this case is, whether the consent decree, entered May term, 1849, (p. 18,) does not render the final decree (p. 51, 52) a decree by consent also. It will be contended that it does:
1. Because, by the first decree, the appellants consented that the appellees were entitled to the prepetual injunction, and 'the account prayed for in the bill;' and all that remained to be done was to ascertain what account was prayed for in the bill. ”

“ The bill further alleges a second extension by act of Congress of the patent to the said administrator for the term of seven years from the 27th day of December, 1849; but states that in consequence of doubts entertained as to the correctness of the specification, and of the fact of said letters-patent having been found to be inoperative, they were duly surrendered, and new letters-patent bearing date on the 8th day of July, 1845, were issued to the appellee, William W. Woodworth and his assigns, for the residue of the term of 28 years from 27th of December, 1828 ”

“ As it stood on the master's first report, therefore, there was evidence tending to show that, in charging $1.50 per thousand as the cost of planing, the respondents had conducted the business with less skill and prudence than it might have been conducted. ”

“ Upon the case, as it stood in court, actual 'gains and profits,' and nothing more, ought to have been charged against the defendants. If damages, beyond actual gains and profits, were asked, the complainants should have sought another forum. ”