Lapas attēli
PDF
ePub

pronounced that the process was not patentable at all, and from very clear authority and clear reasoning. I mean the Brinkerhoff case. In that case a party wanted to get a patent for a form and arrangement of a speculum, a very ingenious device for doing certain kind of work, and he got it. He got two or three patents for it. Then he came back and applied for a patent for the process of applying it. We rejected it. We could not see it, although he had his speculum for us to look into it; but we could not see it at all. This looks to us very much like another case of that sort. It may not be, however. Whether so or not, we are not permitted in this process to look into it to define the judgment of the court whether it is a matter of judicial discrimination or a matter of administrative discrimination. Apparently, it is a matter of administrative jurisdiction which we have held all the time, and at no time more emphatically than in the case that we determined here to day, is not within our control or supervision in any way, and ought not to be, but belongs to the administrative part of the Government. We have concluded that under these circumstances we cannot issue this writ, but must deny it.

[United States Circuit Court.-Southern District of New York.]

MUNDY . LIDGERWOOD MANUFACTURING COMPANY.

Decided April 23, 1884.

27 O. G., 718.

1. When an inventor merely brings an old element into his machine, he makes no invention, but where he does more-dispenses with certain parts, duplicates others, rearranges, and simplifies the machine-he must be held to have made an invention.

2. When a patent is for a combination, one element of which is a gear-wheel with a cone supported in a peculiar manner, and the defendant uses the gear-wheel with the cone, but the latter is supported differently, though the elements employed by the defendaut are the equivalents of those of the complainant in the patented combination: Held, that the defendant takes the complainant's combination and infringes his patent.

3. Reissue Letters Patent No. 9,289, July 13, 1883, construed and held to cover a novel and patentable invention.

Mr. Ernest C. Webb, Mr. Edwin H. Brown, and Mr. Frederic H. Betts for the orator.

Mr. Livingston Gifford for the defendant.

WHEELER, J.:

This suit is brought upon Reissue Letters Patent No. 9,289, dated July 13, 1880, the original of which was No. 158,967, dated January 19, 1875, granted to the orator for an improvement in friction-drums for

pile-drivers and hoisting-machines. The original had one claim. The reissue has three others and this one, which is made the fourth, and is the only one relied upon. The defenses are lack of novelty and denial of infringement. The object of these inventions is to have a drum for the hoisting-rope, which can be made to engage with, closely or loosely, and be released from gearing in constant motion, so as to be started promptly but moderately, and made to move rapidly or slowly, and to stop gradually or quickly, and be left to turn the other way, at the pleasure of the operator. The orator accomplished this by providing a conical projection on the side of the gear-wheel next to the drum, of nearly the same diameter, made of wedge-shaped pieces of wood with the broad ends outward, forming a tapering friction-surface on the ends of the wood, and a circular flange projecting from the circumference of the drum loose on the same shaft, to fit tightly over the friction-surface on the wheel when pressed toward it, and a spring coiled about the shaft between the wheel and the drum to separate the surfaces. The specification mentions a shell or flange on the side of the gear wheel supporting the wood, and describes mechanism for pressing the drum toward the wheel and bringing the surfaces together. The claim is for the combination of the drum loose, and the gear-wheel having the friction-cone and the side flang to support it and spring to repel it fast, upon the shaft, for this purpose. The defendant makes friction-drums like these in all respects, except that the wedge-shaped pieces of wood are bolted to the gear-wheel. Loose friction-drums connecting with fast gear wheels on the same shaft, with springs coiled about the shaft to repel them, and friction-surfaces-one of metal and the other of the ends of wood-for use for other purposes, were old and well known; and Letters Patent No. 150,755, dated May 12, 1874, were granted to John Knowlson, jr., for improvements in similar apparatus, showing a gear wheel with similar wedge-shaped pieces of wood, separated by radiating flanges on the side of the gear-wheel presenting friction-surfaces composed of the ends of the wood of each piece, and a drum with a similar projecting flange at each end to fit over the friction-surfaces, and a wheel revolving with but sliding along the shaft at the other end of the drum, having a similar friction-surface, with mechanism for pushing back along the shaft and bringing its friction-surface in contact with that on that end of the drum, and thereby pressing the drum along and bringing the friction-surfaces at the other end of the drum to a bearing, but without any springs to repel the friction-surfaces.

There is some contest as to which invention was first, Knowlson's or the orator's; but from the whole evidence it appears that Knowlson's was first accomplished.

It is strongly urged for the defer lant that Knowlson's friction-surfaces are substantially the same as the orator's; that there was no invention in putting the spring to the same purpose in the orator's devices that it had accomplished in prior similar devices, and that the orator

really invented nothing but the shell or flange on the wheel for sup porting the wood of the friction-cone, which the defendants do not use. Apart from the mode of fastening the wood to the wheel, the frictioncones of Knowlson perform the same function in substantially the same way as those of the orator and of the defendant, although, perhaps, they would not wear so well as either. Each, however, may be con sidered for this purpose to be the mechanical equivalent of the other. Theu the orator is not entitled to a monopoly of this friction-surface in such machines. It is said that beyond this he did nothing but to bring the spring of former machines into Knowlson's, which could be accomplished by the skill of good workmanship. Had this been all, the arguments would be well founded. But he did more. One spring would not have answered to repel the friction surfaces in that machine. Two would have been necessary, and of different power, one to repel the cone on the wheel not geared, and another and stronger to repel the drum, and that from the gear-wheel. The orator dispensed with one of Knowlson's friction-cones and flanges, rearranged and simplified the machine, and put the spring where it was needed or where he wanted. it. This appears, after it was done, to have been easy to do; but no one did it before, and it makes a more compact, economical, and useful machine. (Loom Co. v. Higgins, 105 U. S., 580.) The patent is for the new combination. It is further strenuously urged that the gear-wheel with the cone supported in the orator's peculiar manner is one element of the combination, and that, as the defendant does not use that element, it does not infringe that combination. But the gear wheel and frictioncone of the defendant are the equivalent in the combination to those of the orator, and by the use of them the defendant takes the orator's patented combination.

Let there be a decree for the orator for an injunction and an account, with costs.

[United States Circuit Court-District of Indiana.]

WESTCOTT ET AL. v. RUDE ET AL.

Decided April 1, 1884.

27 O. G., 719.

1. In an account before a master, evidence of payments for past infringement, for the purpose of ascertaining the amount which should be paid by the defendant, is incompetent. To admit it is contrary to the maxim “Inter alios acta,"&c. 2. When the sale of licenses by the patentee has been sufficient to establish a price for such licenses, that price should be the measure of his damages against an infringer; but a royalty or license-fee, to be binding on a stranger to the licenses which established it, must be uniform.

3. Proof of a single license is not sufficient to establish a market-price.

9373 PAT-15

4. In respect to two or more claims in a patent, each of value, and distinct from the other, one cannot equal all in value any more than in mathematics a part can equal the whole. A licensee may, if he choose, bind himself to pay the same price whether he use the entire invention or a part only, but at the same time he acquires the right to use all, and so his agreement may not be unreasonable; but if as against an infringer such a license can have any force, reasonably it must be in the way only of establishing a royalty for the entire invention.

Mr. H. C. Fox and Messrs. Wood & Boyd for the complainants.
Messrs. Stem & Peck for the defendants.

WOODS, J.:

The exceptions filed are numerous, but passing by others, the court will consider only those which bring into question the measure of the damages assessed. Upon this point the master says: "Plaintiffs waive all claims for profits and rely upon the proofs produced as establishing a fixed license or royalty as the measure of damages," and after giving an abstract of the testimony of the four witnesses who were examined upon the point. the report proceeds to say:

It is very difficult to determine from this vidence whether it makes proof of such an established royalty or license-fee as furnishes a criterion upon which to estimate the complainant's damages. The owner of a patent is granted a monopoly. He may choose to reserve the right to use his invention exclusively to himself aud to make and sell machines, keeping all other manufacturers out of competition. He may enjuin infringers. He has the right to fix a reasonable license-fee or royalty to be paid by manufacturers who use his invention in making machines, and if fixed and reasonable, and paid by those who use the invention, such fee or royalty is a criterion upon which a computation or assessment of damages may be based. It is proved that the Wayne Agricultural Company paid the royalty of one dollar for one-horse machines and two dollars for two-horse machines for four years, a sum which, in the absence of evidence to the contrary, may be regarded as reasonable. Mast & Co. paid between two thousand dollars and three thousand dollars in cash, and conceded privileges which Westcott estimates to have been worth as much more, for infringement. It is true Westcott threatened suit, and wher money is paid under threat of suit merely as the price of peace, it furnishes no evidence of the amount or value of the real claim in dispute; but the settlement made shows that Westcott was paid something substantial for the infringement, and that the fear of litigation was a small element of the settlement itself. Westcott says that he arrived at the amount by his estimate of the number of machines made by Mast & Co. and other considerations which are explained in Mast's deposition. Mast says that no estimate was made of the number of machines. Westcott says he gave licenses like the one attached to his deposition to Mast & Co. and to English & Over. Mast was examined, but not interrogated on that point. Mr. English, the active man in the firm of English & Over, says he does not recollect whether they took a license or not.

It is with considerable reluctance that I have come to the conclusion that the evidence furnishes proof of a license-fee which may be taken as a basis for damages. The defendauts have undoubtedly infringed complainant's invention, and the machines made by them which are mentioned in the evidence were all made after this suit was brought. As to the point made that the evidence does not show how many of the machines mau. by defendants intringed one, and how many infringed both claims of plaintiffs, the master is of the opinion that the terms of the license were the same in either case, and the same fee was charged whether one or more claims were infringed. I therefore report and find that the defendants have made and sold eight hundred infringing onehorse machines, and that the plaintiff's damages on that account are eight hundred

dollars, and that defendants have made and sold eight hundred infringing two-horse machines, and that plaintiff's damages on that account are sixteen hundred dollars, making twenty-four hundred dollars his damages in full.

The clause in the license referred to by the master is of the following tenor:

Third. The party of the second part agrees to pay two dollars as a license-fee upón any two-horse drill or seeder, and the sum of one dollar on every one-horse drill or seeder, manufactured by said party of the second part, containing any of the patented improvements; provided that if the said fee be paid upon the days provided herein for semi-annual returns, or within ten days thereafter, a discount of fifty per cent. shall be made from said fee for prompt payment.

There is probably no reason to question the general principles enunciated by the master in respect to the rights of patentees in their inventions, but the court does not concur in all respects with the master's application of them in this case, nor with the conclusion reached. Some of the facts found are not, in the judgment of the court, supported by the evidence. Some items of evidence were considered by the master which, in the opinion of the court, were not admissible, and which therefore should have been allowed no weight whatever.

In respect to the royalty paid by the Wayne Agricultural Company, Westcott, the only witness to the point, testified this:

The licensees to whom these licenses were given paid the fees as stipulated. The Wayne Agricultural Company paid for four years, since which time they have paid nothing, their excuse being that they claimed to have bought an interest in the patent. We sued them in court, and the court decided that they had no title to the patent, and then they agreed to arbitrate with us, and the suit was dismissed.

The evidence does not show the payment of fees as stated by the master. It is left uncertain whether or not the fees paid "for four years" were at the rate of one and two dollars for a machine or fifty per cent. of those sums. The fair inference, perhaps, is that the Wayne Agricultural Company did for four years manufacture drills under the license, though it is not entirely clear that the license was not issued after or near the close of that period, so as to make the transac tion in reality a settlement for infringements. This is certainly so in respect to the other parties named, who, if they received licenses at all, which is doubtful, received them as evidence of settlements, and these settlements, it is shown, were made either under express threats or the fear of suits for infringement. If for a time the Wayne Agricultural Company made the drills under a license, the manufacture was afterward continued under a different claim or right, and when that claim had been overruled by the court, instead of settling for the infringement on the terms of the license, the company obtained an arbitration, the result of which has not been shown.

The first inquiry is whether the proof in respect to payments for infringements was admissible or ought to have been considered by the master at all. I know of no case in which it has been decided that such evidence is competent, and upon principle I am not able to see how it

« iepriekšējāTurpināt »