DUNLAP

v.

SCHOFIELD

Mr. Justice Gray,

after stating the case, delivered the opinion of the court.

By section-4900 of the Revised Statutes, (which by virtue of section 4933 applies to patents for designs,) it is made the duty of every patentee or his assigns, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that it is patented, by putting the word “ patented ” upon it, or upon the package enclosing it; “ and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented.”

The clear meaning of this section is that the patentee or his assignee, if he makes or sells the article patented, cannot recover damages against infringers of the patent, unless he has given notice of his right, either to the whole public by marking Ms article “ patented,” or to the particular defendants by informing them of his patent and of their infringement of it.

One of these two things, marking the articles, or notice to the infringers, is made by the statute a prerequisite t6 the patentee’s right to recover damages against them. Each is an affirmative fact, and is something to be done by him. Whether his patented articles have been duly marked or not is a matter peculiarly Avithin his own knowledge; and if they are not duly marked, the statute expressly puts upon him the burden of proving the notice to the infringers, before he can charge them in-damages. By the elementary principles of pleading, therefore, the duty of alleging, and the burden of proving, either of these facts is upon the plaintiff.

In the present case, although the plaintiffs had manufactured and sold goods with the patented design upon them, they made no allegation or proof that the goods Avere marked as the statute required. They did allege in their bill that they notified the defendants of the patent and of their infringement ;. but this allegation Avas distinctly denied in the defendants’ answer, and the plaintiffs offered no proof in support of it. They could not, therefore, recoAter, even if this were a suit for damages within section 4900 of the Revised Statutes.

But these plaintiffs, waiving all right to an' account of profits, or to other damages, sought and Avere allowed to recover the fixed sum of $250, in the nature of a penalty, imposed by the act of February 4, 1887, c. 105, upon any person who, during the term of a patent for a design, and without the license of the owner, applies the design secured by the patent, “or.any colorable imitation thereof,” to any article of manufacture for the purpose of sale, or sells or exposes for sale any article of manufacture to which “ such design or colorable imitation” has been applied, “knowing that the sanae has been so applied.” -24 Stat. 387. This statute, according to its clear intent and effect, requires that, in order to charge either a manufacturer or a seller of articles to which has been applied a patented design or any colorable imitation thereof, he must have been “ knowing that the same has been so applied,” which is equivalent to saying “ with a knowledge of the patent and of his infringement.” The reasons for holding the patentee to allege and prove either such knowledge, or else a notice to the public or to the defendant, from which such knowledge must necessarily be inferred, are even stronger, in a suit for such a penalty, than in a suit to recover ordinary damages only.

In none of the cases on which plaintiffs rely, and by which the court below considered’ its judgment as controlled, was there any adjudication inconsistent with this conclusion.

The leading case is Rubber Co. v. Goodyear, 9 Wall. 788, decided at October term, 1869, which was a bill in equity for an injunction, and for an account of profits, against infringers of a patent for an invention; and' the passage in the opinion of this court, which is relied on by the plaintiffs, is that in .which Mr. Justice Swayne, after citing the provisions of the act of March 2, 1861, c. 88, § 13, which are reenacted in section 4900 of the Bevised Statutes, proceeded as follows: “It is said that the bill contains no averment on this subject, and that the record is equally barren of proof that any such notice was ever given to the defendants, except by the service Of process, upon the filing of the bill. Hence, it is insisted that the master should have commenced his account at that time, instead of the earlier period of the beginning of the infringement. His refusal to do so was made the subject of an exception. The answer of the defendants is as silent upon the subject as the bill of the complainants. No such issue was made by the pleadings. It was too late for the defendants to raise the point before the master. They were concluded by their previous silence and must be held to have waived it. It cannot be considered here.” 9 Wall. 801.

In that case, as appears in the passage just quoted from the opinion, not only was there no averment in the bill, or in the-answer, on the subject of marking or of notice; but no objection to the want of proof of either fact was made by the defendants at the original hearing in the Circuit Court, as appears .by its opinion reported in 2 Cliff. 351. The objection was first taken at the subsequent hearing before a master, and was therefore held to have been waived.

In some later cases in the Circuit Courts of the United States it has been assumed that the defendant was bound to allege and prove that the patented articles were not marked, if he would, upon that ground, avoid liability for damages under the section in question. But in none of those cases was that point in judgment.. In Goodyear v. Allyn, 6 Blatchford, 33, the only question before the court was of granting an injunction,- a matter not touched by this section. In Herring v. Gage, 15 Blatchford, 124, the point decided was that the statute did not apply to the marking of the articles made and used by the infringing defendants. In New York Pharmical Association v. Tilden, 21 Blatchford, 190, the answer alleged and the proof showed that the plaintiffs’ goods were not marked, and the question was as to the sufficiency of a verbal notice to charge the defendants in damages. And in Allen v. Deacon, 10 Sawyer, 210, the want of marking was alleged and proved by the defendant, and he was also proved to have been duly notified of the infringement. On the other hand, in McComb v. Brodie, 1 Woods, 153, it was held that if the patentee did not prove that his articles were marked, or that he gave the defendant notice of the infringement, he could recover only nominal damages.

The patent having now expired, so that the injunction is of no further value, the decree is reversed and the case remanded to the Circuit Court with directions to

Dismiss the hill.