V. BER'J:IU.ND.
755
CALKINS ;jj
v.
BERTRAND
and others.
(Oireuie Ooure, N. D. Illirwis. July, 1881.) I.. REISSUE No. 3,932-CULTIVAron-REFERENCE TO MASTEn-ExcEPTIONIl TO MAsTER'S REpORT-NOMINAL DAMAGES-COSTS. . Upon a reference for the infringement of the first claim of reissued letters patent No. 3,932, granted April 26, 1870, to Julius Gerber, for improvement in cultivators, being but one element of a number composing defendant's device, and consisting in hinging the beams of the cultivator to the pole or tongue· between the evener and neck-yoke, exceptions to master's report, finding arbitrarily, independent of any affirmative proof by the complainant, one-half the total net profit of defendant's machine to be due to such feature, sustained,and d.amages and costs only awarded complainant. 2. PATENT FOR BINGLE FEATURE OF MACHINE....;..INFRINGEMENT-MEASURE OF DAMAGES, When a patent covers but one of many features of a machine, the gains on. the whole machine cannot be reckOned as damages for infringement thereof, but only the gains arising from the use of the special device or element claimed by' such patent. ': . . Seyrrwur v. MeOormick, 16J;Iow. Noek, Wall. 460; Mowry v·.. Whitney, 14 Wall. 620; Oawood. Patent ClUe, 94 U. S. 710; Goulds ManuJ'o (fo·. v. Oowing, 8 O. G. 278. S. BUrGLE INFRIl'lGIl'lG ELEMBNor:-Oo:M:BINATION WITH INFRINGIN'G ELEMENT. lIEASURE' OJ' DAJUGES. Where a machine is composed of several elemen\s, only one of which infringes a. patent, the others making the whole a complete and operative mechanism, being covered by patents in which the complailiant has no interest, or' ,are public property, the complainant cannot recover1profits made by the use of }luCh even in combination with his device.. 4. INFR:INGE:llENT-DAMAGES-PROOF-BuRDEN OF PBOOF. The complainant must show his damages by reason of the infringement by evidence. They niustbe proved, and not jumped at. They ate not to be' pre· Nock, 17 Wall. 460; Btakev. Robertson, 94U. B. 733. 5. SAME-INFRINGING ELEMENT NOT INCREASING VALUE-NOMINAL DAMAGES. Where the defendant shows by affirmative pro()f that his machine derived nC); increased value in the market from the use of the infringing element, the plainantcan only recover nQminal damages: ' 6. BAME-SAME-AFFIRMATIVE PROOF BY DEFENDANT-ABSENCE OF PROOF BY' GoMl'LA:INANT. . ,
Affirmative proof by defendant that he has made no profit by the use of the infI;inging feature, supplemented ,by th«!lack of proof to tire contrary by thecomplainant, make no recordftom which any damages or profits Can be shown. 7. 'SAME-DAMAGES-AFl'ORTIONMENT-BuRDEN OF PnooF-EvIDENCE-TANGIBLE-SPECULATIVE. " '., " . of proof is upon the complainant to separate or aPl?ortion the defeildant's profits and complainant's damages between the features infringed' and not infringed,and such evidence must be reliable and tangible, not conjectural:W speculatiye; or he must show by equally r,eliable ap.p,/illotisfactory the profits and'damages are to be. calculated on the' Whole machine, for the reason that 'the eilti'rc value of the whole riiachine as amarketa... blc article is properly and legally attributable to tIle patented feature.
756 8. SAME- SAME MENT.
FEDERAL REPORTER. ABSENCE OF AFFIRMATIVE PROOF ARBITRARY ApPORTION-
In the absence of affirmative proof on the part of the complainant as to the profits made by the defendant by thll use of the infringing feature, it cannot be assumed that half or any other share of the profits made by defendant on his entire machine was due to the use of such feature. 9. SAME-NoMINAL DAMAGES-CoSTS.
Where nominal damages only are awarded the complainant for the infringement of his patent, the assessment of costs will depend upon the special circumstances of the case.
Offield Towle, for complainant. West Bond, for defendants, BLODGEl;'T,D. J. This suit was brought by complainant against the defendants for infringement of certain letters patent issued by the 1!nited States to Ituli,us R. Smith; on the of A.pril, 1860, and reissued .to Julius Gerber, April 26" 1870, for "an improvement in cultivators." A hearing was had upon plea-dings· and entered finding thirl d.efendants. infringed. the proofs, aI,lda', reissued 'patent, which is for "an auxiliary frame first' chiim of side, as shown, when carrying two or more shovels.tt:tndarda on said frame is hinged to the pole between the evener and the neckand a reference yoke, a,ij described, for the purp9ses set made to the master to arid state an account of the gains and profits received by defendants, and the profits of which ,complainant had been deprived,and the damages sustained by him in conl3equence of the infringement sofoand and adjudged. The proof taken on the hearing on ihe question showed that the complainant's patent is applicable to what is known to the trade as a "Riding Straddle Row Cultivator;" that is, a wheel cultivator, on which the operator rides, provided with devices which enable him to drive the team and manage the plows from his seat. The defendants' cultivator belongs to the same class, but the devices by which the plows are and many of theoperative parts of their machine, to the complainant's machine; the only feature of complainant's patent which defendants' machine was held to infringe being that of hinging the beams to the pole or tongue between the evener and neck-yoke so as to secure what complainant calls the "long swing" motion, peculiar to his cultivator. It will thus be seen that defendants were not found to infringe complainants' entire machine, as covered by his reissued patent, but only one element or featuro of it. Other features peen-
O.LKINS'V.
757,'
liar to defendants' machine the complainalilt:had no interest:in, and" it is claimed, are covered by patents held by defendants. ',' Upon this reference so made to him the master reported the gross profits made by defendants on all machines made by them during the years in question at $33,354.75; from which he deducted 10 per cent. as manufacturer's profits, leaving a,net profit of $30,023.75 made by defendants on the machines mlldeby them. To this report exceptions were filed by the defendants, and the matter was referred to the master for furthenaction, with directions: "To further inquire into and report· more fullynvhat profits have been by them the years 1870 to 1874, inc1usi:ve, and a,1;10 v.:hat portion profits rep0r}edby him as ll,lade by the .defendants on theh said. machine is or may be due to the devices and Of. the" iaid contained said machines,' and the vallie of the said defendants' 'improvements found' in' their sa'id' machine which ought to be deducted, from the gross amount ,of profits found by said master.:"· " 't '
made by the defendants upon' the
in
, Upon this reference the master has made,a further report, in whilllh 'he has foundd;he' total number of machines made 'by the defendants in 'aU ,the years in que,etia1l. as follows: 1870, 043; 187'}i 1;300; 1872, 931; 1878,. 740; ',I)8Z4,500; gross profits' 'made!' by defel1dants on' said machines am0unted Ii., $.1,211.50, from which he has'deducted for rent, interesk,taxes; advertising, losses on bad 'debts, and wear of machinery, $9,888.42, and for clerk hire8iLthe rateof"a thousand dollars a year,to each defendant for the four years, making a total of $8,000; making total of deductions $17,838.42, and. leaving a net profit of $23,470.08. The master concludes, Ilond so reports to the court, that one..h8ilf.of, the net profits so found should be deducted as the proportionate amount due to the patented devices and improvements of the defendants contained in said machines, leaving the sum of $11,735.54 as the amount of profits made by defendants which should be accounted for and paid to complainant for such infringement. The reason given by the master for dividing the profits equally between the com. plainant and defendants is that the proof furnished no reliable data on which to fix the amount of profits made by 'defendants from the use of complainanfs device in their cultivators, or for showing the amount of deduction which ought to be made from the net profits of the business by the use of defendants' own patented devices, and that he, therefore, resorted to a division of the profits as the most equita. ble and just rule which he could adopt under the circumstance.s. To.
158
FEDERAL· RlllPORTER'o':
this finding and report of the master defendants have filed 13 excep: . tiona. The first seven exceptions assert in snbsta.nce that it was incumbent on complainant to show by the proof that defendants ootonly made profits by the use of complaiMnt's device in their machine, but the specific amount·of·such profits;' that complainant has. not only failed to make such'proof, but. also that the testimony taken and reported affirmatively shows :tha.t .de.fendants· have made ·no profits by the use of complainant's "long 'swing" feature in their machines. . These· exoeptions I shall first consider. Ina brie.f· opinion,' directing a second reference to the master, I stated that the master would be directed to hear proof "as to what this 'long swing' element in defendants' cultivator, Which belongs to; complainant, is worth to defenda,nts' machine; how much it adds tC;l the value of defendants' machine-rthe sale8ible. value." Iassume that this must be the basis of the inquiry. I consider the law to: ,be well settled that when a complainant's patent covers but one of many features of a machine, the gains ontbe whole. machine cannot be reckQIled as damage, but only the gains arisingfrom.the use.of the special device or element covered by the complainant's patent. ,If the other parts of the machine which go to the' whole a complete and operative organism manufactured by defendants are covered. by patents' in which complainant bas no interest, or even if they are public property, the complainant .cannot claim profits made by the use of such parts, even in oombination with his device. For illustration, if an operative cultivator could be made without the use of any patented device, but ,by the use ·of a certain patent a better or improved oultivator can be made, the da:nages to the patentees for the use of a patent so used would be the increased value' given the machine by the use of the patent, not the profits on the entire ma'" chine. This rule was recognized in the Cawood Patent (JaBe, 94 U. 8.710, where the supreme court said: "In settling an aCleount,'between a patentee and an infringer of a patent, the question is not wl1at profits the latter has made in his b4siness, or from it, but advantage h,as he from his use his manner of . of the patented invention." 80, also, Justice Hunt said, in Gould Manuf'g Co. v. (;Jowing, 8 O.
G.-278:
' .
"I understand the rule to be settled that when the patenfts'for an Improve' . " · . , I" . . . : " .'. .< ment upon a machine, the clamages for the infringement of sueh patent areconfined to the pI'oi1ts madetJy'the use of' the improvemelltunly, and not by'
CALKINSV. BERTRA.ND.
the manufacture ,of the whole instrument. * *,' *' What: advantage did h!\Y,e thatthey would not have had if they had bU,ilt machine with{lut t1:).e , ,) , :'1'0 the same effect are Seymour v. McCormick, 16,How. 490; J;>hilp v. Nock, 17 WaU.460; Mowry.v. Whitney, 14 WalL620., UP0.\l tbe original reference tbeonly proof offered by epmplainant Wali:as ito thl3 profits realized, by the defendants upon tbe entiremaohine :made machine only by tbem. The proof ShOW8.d ,that included the feature of banging a, thEt eveJ:;ler and:neck-yoke, but also cQntained.atJeallt, lOenumer. ated devices CQVflrOO by a patent, owned and 'whicb, defendants contended, gave practjclliLvalue.to theirma,· chinei . ; " ., Ia tbe order was dir-ectedto ,inquire and report more fo11y what-;-{
been' mad6· by defendants upon the. portion of the'prqllts ?r may be due:to ,the defendants contained in said machine, and the ?f m,ents found in their. mac!}iues, which oug-lit to ioundbysaid"maf>ier.'i" Ii, .'.
**. anl!
Mm,alieby of froth ,tIle pl'ofitl3
,,)11
'i'J
, In the neWl)fi)oftaken before the master; compliiti"ahtbas'PQt 'attempted d1l0W how much 6£ ,the profits due to the use of tbe 'patented devices of used in th>e machines.· The only new, t? defendants' profits on the' entire machme, and not to the .use QfCOIUplainant's device in ' " ,.:
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; "The plaintiff JPllst,sppw pe)eft to conjecture oy the juri. ., v. Nook, 17 Wall. 460: ., . ,', . , . , . j Damages must be proved; tbey'itre'not to be presumed." , Bla'Mv. Robertson, 94 U. S. 733. : (" ,.. The patentee must in every c.se,giveevidenoe tendingtl),separllite or apportion the defen4apta' daJDa.gfl/i features and tile and such mlIst be, reliable and and n6t corii'ectural or of :equailyreliable and satiSfactory that the'profits and to'l:)e'&ilctl. lated 011 the whole machine, for the reason that the of the :whhll machine, as· a: markellaOlearttcle; :is property:andlega.lly attributable the ,J.! Q.; 4135. Ii.
" In the light of'tlit1'se 'quite '9;nthas notfurI1il:Jhedby'hiil proor' any' ing or assessing his damages. He
I
thil ebInl'laiirista:tiaatd f6rcdIllpltt-
flit.
760
FEDERAL REPORTER.
defendants' profits were made by the use of his device. But the defendants, upon the rereference, have given proof showing that their machine derived no increased value in the market from the use; of the complainant's "long-swing" feature. Upon the second hearing befote the master the defendants produced a machine constructed with all the leading devices characteristic of the defendants' machine, except that they hinged the plow-beams at the evener instead of hinging them forward of the evener, or between the evener and the neck-yoke. It was a!full-sized operative machine; was constructed and placed' at work in 'a field in the presence of a number ofintelligent witnesses. In' thesame r 'llilldwas also one of the defendalits' machines, constructew with the "long-swing" element precisely as it was claimed to infringe the complainant's patent, where it was hinged between theevenet and the neck-yoke, giving a longer plowbeam and giving a longer vibrating motion to the plows from the increased length of the beam. ' This ma9hine, confltructed·after model No. 17, was tried in' the presence of theBe witnesses, and among them was Mr. Jacob 'Beihl, who appears to have been a manufacturer l1nd machinist. ' After the exhibition he testified that, in his opinion, attaching the shovelfrarp.e,to the tongue in front of the evener had no vallle in defendants' machine i that the cultivator made like Exhibit No. 17 worked better and easier, and was better than the defendants' machine like No.5; that the machines like No. 17 would have been more saleable, and the profits thereon would have been increased rather than diminished. This witness attributes. all tl;1e profits to <;lther featuresthan the "long swing." The testimony of Mr. Anthony Haines, a manufacturer and gentleman of fntelligence, and that of Alfred Crill, is to the same effect. This affirm'ative proOf that defendants made no profits by the ull60f complainant's device, supplemented to the lack of proof by complainant as to what profits were made 'by the UBe of complainant's "long swing," certainly makes' no recordf;rom which it can be said any profits or damages are shown. It cann9tbe ,assumed, in the proof,that half or any other share of the profits made by were due to the use of co.J;uplain/l.nt's device. The other exceptions which were taken in the case had reference to the failure on the part of the master to make certain allowances to the defendants, but as! donot that they; are material, in the view I take of the questions which are presented befor,e me, I shall not review or discuss them.
MAGUIRE V. EAMES.
761
The only question, then, that remains is this: the complainants, having shown no damages in the case, will be entitled to a decree only for nominal damages. And the only question is, who shall pay the cost of the reference? It was contended on the argument that, inasmuch as no damages have been shown on the part of the complainant, the costs of the reference should be assessed against the complainant. I cannot subscribe to this view of the question for this reason: This. suit was commenced in 1873 or 1874, and the defendants persistently fought and resisted not only the validity of the complainant's patent, but the question of infringement. If they had said frankly. at once, as they now say at the end of the conflict, "we get no benefit and make no profit by the use of that part of our machine which infringes yours, and therefore we are willing to abandon it; we can make just as good a cultivator without using it," and had at once changed or modified the form of their cultivator in that regard, they would have stood in the 'light before. the court of acting fairly and frankly with the complainant; but instead of that they resisted the validity of the complainant's patent. denied that they infringed, and fought him to the bitter end upon the question of infringement; and, when that question was .adjudged 'against fell back upon the question of damages. It seems to me, therefore, upon the evidence, that the entire expense of the reference should be ,adjudged against the defendants. . The exceptions will be sustained so far as anything but nominal damages are found by the master, and a decree entered giving judgment for nominal damages and costs against the defendant·
.
MAGUIRE 'V. EAMES.
«(Jircuit (Jourt, E. D. New York.
September 28, 1880.)
1.
LE'1"l'ERB PATENT-HYDRAULIC POWER ACCUMULATOB-PATENT BROADER THAN IMPROVEMENT.
Patent No. 202,660, granted for an improvement in hydraulic power accumulators, is void, because broader than the improvement.
James Ridgway, for plaintiff. W. H. McDougal, for defendant. BENEDICT. D. J. This action is brought to recover damages and for an injunction to prevent an infringement by the defendant of a patent for an improvement in hydraulic power accumulators, granted to the plaintiff April 23, 187S, and numbered 202,660. Hydraulic accumu-