and on appeal, although the defendant appealed contending that 2 cents per pound would be a liberal allowance, and the plaintiff appealed contending that 10 cents per pound represented a reasonable royalty. The Court in the matter of its right to adjudge a reasonable royalty, stood upon the Dowagiac case, and that right seems to have been fully conceded. The Court of Appeals in affirming the decree considered all the circumstances of the case, including the character of the invention, the defendant's profit, the defendant's failure to keep suitable books, the evidence of established royalty, the situation of litigation as to the patent during the period of infringement, the patent having been held invalid in one circuit and valid in another and finally valid by the Supreme Court, the character of the infringement and other attendant circumstances.

FIRST, IF THE PROPOSED AMENDMENT IS MERELY INTENDED TO EXPRESS THE EXISTING LAW AND PRACTICE, IT IS UNNECESSARY AND BOUND TO BE CONFUSING.

From the survey above of the existing law and practice it will be seen that the Supreme Court has dealt fully with the subject-matter intended to be affected by the proposed legislation, and that it has laid down clear, definite, just and equitable rules in respect thereto; that it has found no defect in the existing statutory law, in the existing rules of evidence, or in the existing powers of the court. It also appears that the Circuit Courts of Appeal have unanimously in practice applied the principles laid down by the Supreme Court.

Specifically it will be noted that the matter of opinion or expert testimony has been dealt with by the Supreme Court, and such testimony has been held admissible in patent accountings in connection with the apportionment of profits by "reasonable approximation" as distinguished from "mathematical exactness," and it is further specifically held that "a reasonable royalty considering the nature of the invention, its utility and advantages, and the extent of use involved," is "permissible evidence" of the "value" lost by the plaintiff and recoverable by him in cases where there was no established royalty and no proof of loss of sales by the plaintiff.

It further appears conclusively that there is no necessity for any statutory expressions upon the subject either in respect of rules of evidence or burden of proof or as to damages or profits.

Legislation upon this subject can only result in introducing confusion and chaos in a situation now clear and definite in the decisions of the Supreme Court and the other courts dealing with the subject-matter. SECONDLY. IF IT IS INTENDED TO CHANGE THE EXISTING LAW AND PRACTICE, IT IS EXTREMELY UNWISE. IT IMPERILS THE EXISTING RIGHTS OF PLAINTIFFS AND LEAVES IN DOUBT THE RIGHTS OF DEFENDANTS AND WILL PRODUCE CHAOS AND CONFUSION IN A SITUATION NOW MADE CLEAR AND DEFINITE BY THE DECISIONS OF THE COURTS.

If the proposed amendment is intended to abrogate, and will have the effect of abrogating, the existing statute that the complainant shall be entitled (as a matter of right) to recover in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained, when the same are adequately proved, it is unwise and should not be enacted into law. And in our opinion it would have that effect, even if not intended.

It provides that wherever "damages and profits are not susceptible of exact calculation and determination," the complainant cannot recover either damages or profits as a matter of right, but the court may adjudge and decree recovery on a different and other basis. In other words, it takes away the existing rights of the complainant to damages and profits and leaves it in the discretion of the Court to adjudge him damages, practically upon a royalty basis. Inasmuch as there never was a case, and probably never will be, in which either damages or profits are 'susceptible of exact calculation and determination" (as held by the Supreme Court in the Dowagiac case not to be required) it is obvious that this legislation is revolutionary in character.

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If the amendment is intended to abrogate, and would have the effect of abrogating, the Supreme Court's application to accountings for infringement of patents of the rules as to burden of proof laid down in the above Su

preme Court cases, it should do so clearly and explicity, and then it should be condemned as unwise in the extreme.

If the amendment is intended to be, and will have the practical effect of, a compulsory license law, it is unfair. Such a law should be universal in its application, and should not be limited to trespassers and infringers, and so as to be achievable only through a tort.

The subject-matter of the amendment to Section 4921 constituted by the last paragraph thereof as added by the Bill (not included in the quotation given at the beginning of this memorandum) is germane to the general subjectmatter of the bill, namely, the Patent Office, its officers, its employees, and its records. But the amendment relating to recoveries for infringements of patents is not germane to that subject, for it has nothing whatever to do with the Patent Office or its administration or its officers or its employees. The Bill has received commendation and consideration and support because of the features that are germane to its general purpose, but this attempt to alter the law as to recoveries for infringements in patent cases has received scant attention and in its last and worst and most dangerous form practically no attention at all from the patent bar and the public until within the last few days.

We believe that it is hasty, ill considered, unwise and fraught with serious dangers. It would launch litigants upon uncharted seas and undermine and destroy long vested rights.

The subject-matter of recoveries for infringements in patent cases has been adequately dealth with by the Supreme Court, as is shown in the earlier part of this brief.

The principles of law and the rules of evidence and the practice as to burden of proof and other relevant considerations are all now, after a considerable period of uncertainty, settled definitely, clearly and equitably by the Supreme Court, and have been applied by the Circuit Courts of Appeal and the District Courts and can be readily ascertained by any one intelligently considering the subject-matter. The practical effect of the proposed amendmend will be to throw the whole subject-matter into confusion once more and to provoke another long series of cases interpreting, construing and applying this

new statute before the law can again be settled definitely, with very grave doubt whether it ever can under such a statute be made equitable and just.

We therefore submit that the part of section 7 above quoted and herein discussed should be stricken from the Bill.

Respectfully submitted,

LINDLEY M. GARRISON,
WM. HOUSTON KENYON,
HENRY D. WILLIAMS,
FREDERIC D. McKENNEY.

The following is an extract from a copy of a letter by Mr. Walter Scott of Chicago, to Congressman Davis:

ACCOUNTINGS IN PATENT CASES-THE EXISTING LAW.

The statute now in force (U. S. Rev. Stat., Sec. 4921). provides for the recovery by the complainant of the profits realized by the defendant through his wrongful appropriation of the patented invention, and in addition provides for the award to the complainant of damages which he has sustained as a result of such wrongful appropriation. The effect of this law when applied in accordance with its terms and intent is to restore to the owner of the patent the profits which have accrued from the use of his property, namely the patented invention, and to reimburse him for any damages he may have suffered over and above the loss of the misappropriated profits. Such damage may be caused in a variety of ways; the infringer may have sold the patented article at a very small direct profit, thus damaging the owner of the patent by compelling him to reduce his selling price, or the infringer may have injured or ruined the reputation of the patented invention by putting it before the public in so defective a form as to injure or destroy its saleability.

I do not understand that anyone challenges the justice of the existing law as a statement of the rights of the parties. Any attack upon the existing law in that regard

would involve either a bald denial of the right of the owner of property to recover the same when wrongfully taken from him and the right to reimbursement for damages resulting from the misappropriation, or a denial of the right of the public to full freedom in the domain outside of the bounds of the patent.

If the statute can be and now is being executed according to its plain intent and meaning there can be no possible need of amendment. It is true that for a considerable period in the past certain decisions of the Supreme Court of the United States were so interpreted and applied by the lower courts as to practically deny to complainants in patent cases the possibility of recovering profits and damages. This situation arose from the following facts. In many, in fact almost all, instances a patented invention is used in connection with other patented or unpatented devices, and the total profits of an infringer in such cases are due in part of his wrongful act of infringement and in part to the use of ideas and devices which he is entitled to use. There thus arises a confusion of goods. In Garretson v. Clark, 111 U. S., 121, the Supreme Court ruled that the complainant must "give evidence, tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative."

The lower courts interpreted this ruling as denying to the complainant the right to recover in all cases except those where he could produce rigid proof showing by exact calculation the proportion of the total profits and the amount of damages that resulted from the use of the wrongfully appropriated invention. Obviously such exact mathematical determination was impossible in a vast majority of cases and the owners of patents were denied the remedy which the law directed they should have. This clear unjust condition was brought to the attention of the Supreme Court in Westinghouse Electric & Manufacturing Company v. Wagner Electric & Manufacturing Company, 225 U. S., 604, 614 (June, 1912), and in its opinion in that case and in the later case of Dowagiac Manufacturing Company v. Minnesota Moline Plow Company, 235 U. S., 641 (January, 1915) the Supreme Court pointed out