condition that, in case the verdict and judgment in the action shall be in favour of the defendants, the plaintiff undertakes to pay to the defendants the expence of keeping such account. The It has been contended that in the exercise of the equitable jurisdiction now conferred upon us we can only grant an account where there is or has been an injunction. But an injunction does not invariably accompany an account in a Court of equity; and, if it did, in effecting the object in view by ordering an account we cannot be governed by the same rules of procedure which it has been found expedient to adopt in Courts of equity. With regard to an account to be kept during the litigation, we are to see whether there is laid before us reasonable evidence of a valid patent, of this patent having been infringed by the defendant, and of the defendant making profits by the infringement. affidavit relied on by the plaintiff in this case is not strong: but, being wholly unanswered by the defendants, we think that it is a sufficient foundation for this part of the rule. Such an account is often required by a Court of equity on dissolving an injunction, ex parte, against the infraction of a patent, the plaintiff going to law to establish his legal right; and we think that we may properly grant it on such a primâ facie case as is made out by the plaintiff in this case. But we are of opinion that it should only be granted on condition of the plaintiff waiving his claim to damages: for he ought not to be allowed to seek substantial damages and an account of profits, conjointly. In actions for the infringement of patents, juries have found verdicts for large damages which we have refused to disturb: but we conceive that, if such actions had been brought while 1854. VIDI V. SMITH. 1854. VIDI V. SMITH. a bill in equity for an injunction had been retained, a Rule accordingly. A rule was afterwards drawn up, ordering: "that an account be kept by the defendants of all such barometers as they shall sell upon the principle alleged by plaintiff to be an infringement of the plaintiff's patent, and of the profits made therefrom, until such further order as this Court may make; on condition of the plaintiff agreeing to waive all claim to recover more than nominal damages at the trial of the action; and on condition of, in case the verdict and judgment in the action be for the defendants, the plaintiff undertaking to pay to the defendants the expence of keeping such accounts" (a). (a) See the next case. 1854. SIR HENRY HOLLAND against SAMUEL FOX. IR F. Thesiger, in last Hilary Term, January 27th, obtained a rule Nisi to discharge a rule, absolute in the first instance, obtained by Webster in this cause on 17th January. Thursday, June 15th. In an action fringement of a patent, plaintiff obtained a for the in verdict for 40s. damages. Afterwards he patent, obtained a rule, absolute in the The writ first instance, ordering defendant to render an ac count of all the articles The action was for the infringement of a granted to the plaintiff in May 1840, for improvements in manufacturing umbrellas. issued on the 8th day of February 1853. The cause was tried on 15th December 1853; when plaintiff obtained a verdict with 40s. damages. Webster's rule of 17th January was drawn up on reading the affidavit of the plaintiff stating the above dates, and that defendant had, early in 1852, commenced infringements, and had in breach of thereby, as plaintiff was informed and believed, made great profits. It ordered that the defendant "do within ten days render to the plaintiff, his attorney or agent, on oath, a full and particular account of all umbrella and parasɔl frames, made and manufactured by him, his which he had before and since the com. mencement of the action plaintiff's patent, and pay to plaintiff the moneys received for such articles. A rule Nisi was obtained, on part of the defendant, to discharge this rule. By the affidavits it appeared that defendant had made profits by the sale of the pirated articles since the commencement of the action; but that he had discontinued the manufacture since the verdict and before the plaintiff's rule was obtained. And it appeared that, shortly after the action commenced, plaintiff's attorney had told the other side that plaintiff would take only nominal damages, and would, if necessary, file a bill in equity to obtain an account of the profits. Held that the action was still pending, so as to give this Court jurisdiction under The Patent Law Amendment Act, 1852, sect. 42. Held also that, there having been a verdict with damages, and there being no continuing piracy such as would give ground for an injunction, no account of the profits before action could be ordered: but, held that the defendant might be considered a trustee for the plaintiff of those profits which he had made, pending the action, after notice that plaintiff would require them; and that an account of those profits might be ordered. Rule moulded accordingly. VOL. III. 3 R E. & B. workmen and agents" (describing the frames)," in imitation of the plaintiff, and for which letters patent were granted to him dated 7th May 1840, shewing in such account the quantity or number so made sold or disposed of by the defendant, his workmen, agents and others by his authority or connivance: and that the defendant do pay to the plaintiff, his attorney or agent, all moneys received, or agreed to be received, and paid by reason of such manufacture and sale: and that the defendant do pay to the plaintiff on all frames which may remain in stock or unsold at the date hereof such sum or sums of money as may be equal to the sums received or agreed to be received in respect of like frames sold or disposed of.” : Sir F. Thesiger's rule Nisi, to discharge the rule of 17th January, was obtained on affidavits, by defendant and his attorney, the substance of which was that the defendant had himself, in 1852, taken out a patent for what he bonâ fide believed to be a discovery of his own in the manufacture of umbrellas: that under this he sold the articles: but that, since 17th December 1853 (two days after the verdict), he had discontinued the sale that the manufacture and sale of the articles was, at first, a source of loss to him, and had not become profitable till about three months before the date of the trial; and that during these three months the profit was about fifteen per cent. on the price of the umbrellas sold. That, in January 1853, shortly before the action commenced, the plaintiff offered to forego proceedings if defendant would take out a licence in future; which offer was declined; and no notice to keep an account had been given till after the verdict. By the affidavits in answer, however, it appeared that plaintiff's attorney had, in July 1853, informed defendant's attorney that he intended to take nominal damages at the trial, and, if necessary, to file a bill in equity for an account of the profits. In last Easter Term (May 10), Sir A. J. E. Cockburn, Attorney General, and Webster shewed cause; and Sir F. Thesiger and Hindmarch appeared in support of the rule of 27th January; when the Court (a) ordered that the case should stand over, in order that inquiry might be made respecting the practice in equity as to granting an account, when applied for after verdict, and without application for an injunction. In this Term (May 25) the rule was argued (b). But Webster shewed cause. The practice, in patent causes, (a) Lord Campbell C. J., Wightman, Erle and Crompton Js. 1854. HOLLAND V. Fox. |