movement are substantially the same, or at least the means provided by defendant in its pinch rolls are substantially the equivalent of the means provided in the patent in action. I conclude that the machines made by the defendant infringe the claims involved in the McBerty patent.
Plaintiff contends that it is entitled to an accounting from defendant for profits and damages, by reason of machines made and sold by the defendant from the time that McBerty talked to Bedell, an employee of defendant (the exact date not being given), in which conversation it is contended that McBerty told Bedell that if defendant infringed the patent in action, it would be held liable.
Defendant contends that it did not have the notice required by the applicable statute until December 28, 1937, and that there is no proof that defendant manufactured or sold machines alleged to infringe the McBerty patent subsequent to that date. R.S. Sec. 4900, 35 U.S.C.A. § 49, provides that: "It shall be the duty of all patentees and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that the same is patented; either by fixing thereon the word 'patent,' together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label containing the like notice: Provided, however, That with respect to any patent issued prior to April 1, 1927, it shall be sufficient to give such notice in the form following, viz.: 'Patented,' together with the day and year the patent was granted; 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."
In Dunlap v. Schofield, 152 U.S. 244, 247, 14 S. Ct. 576, 577, 38 L. Ed. 426, it is stated: "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 his article 'Patented,' or to the particular defendants, by informing them of his patent, and of their infringement of it."
In General Electric Co. v. George J. Hagan Co., D.C.W.D. Pa., 40 F.2d 505, 507, the Court, in a Per Curiam opinion, stated: "In this case defendant had knowledge of plaintiff's patent in 1919. It built furnaces thereunder, under an oral license of plaintiff from 1919 to 1923; it conducted negotiations with plaintiff about a renewal license, or license from February to September, 1923. At no time did plaintiff comply with the statutory provisions of notice to the public by marking, and at no time did plaintiff either verbally or in writing, notify defendant that it was infringing the patent in suit. It follows, therefore, that plaintiff is not entitled to an accounting for profits and damages."
See, also, Steinthal v. Arlington Sample Book Co., 3 Cir., 94 F.2d 748.
The notice required by the statute was not given. There was no actual notice to the defendant prior to the letter from plaintiff's attorneys dated December 27, 1937, which was received by defendant, December 28, 1937. The oral notice given by McBerty to Bedell, an employee of defendant, was not notice to the defendant. The burden rested upon the plaintiff to prove that the receipt of such a notice and the communication thereof to the defendant was within the authority of the employee. Plaintiff failed to meet this burden. The evidence offered showed that he did not have authority in such matters. It should also be noted that in the alleged oral statement made by McBerty to defendant's employee, that he did not state that defendant was infringing the McBerty patent. There was no proof of manufacture or sale by defendant of machines which infringed the claims of the McBerty patent involved, subsequent to the notice of December 28, 1937. I, therefore, conclude that plaintiff is not entitled to an accounting for profits or damages.
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