made.: ,.Al'1d,i19o fS:rfrom theseblGckS being laid, as de· tached ones, they are not even detached yet, ,arid never will be, except violence or pressure, in which case crack or break on the 'line of the surface or irregularity in the body of the con· marks or cuts, but sJ.ll'faee r'; ," ',fpe defendants do not iQfrlnge,the patent, and the ,bill must ,be disPlissed., '. " , ,; , '
!"
EVF:RF:ST .
v.
BUFFAt.Q'LuIJIiICATING OIL ; . ;
Co., Limited.
Oourt, N; D.1few YQrk. July 1,1887.)
i
8.,depree has been, made, restraining the inf:ringement of a patent, 'a motion to dismiss the Gomplajnt on the ground that the supreme court, since thedeciee, had takenadvancM'vililwsupon the subject of patentable novelty, will be denied, where it app'ears,that all the decisions so referred to had been decided a¥d, we,re, published and accessible before the original arthe that the same. had all been by thesupreJP-e , court'w1thoUt advancmg 'any new doctrme, or formulatmg any new test of m· vention. : ' ' ,
FOR INVEJ:o<TtoNS'-:'REsT:iunrmG INFRINGEME:NT-MoTIO:N TO DrsMI88 COMl'LAINT-ADVANOED VIIllWS:':Q:S< PATENTABLE NOVELTY. '
2.-, SAME...,rATEN.TED PROCESS,ll'OB TfESTI!NG OILS-:-NoMI:NAL DAMAGES. Wher,e a patented pro()ess}ortesting oils has been infringed,but it does notappe8.l' that the defendant derived any profit from the use of the process. onlyuomlnal damages, can be recovered, and the fact that oil manufactured by another ,company, in' which the process was used, sold for a higher price than that Of other manufacturers. who did not use it, is not sufficient to warrant more than such nomina;} recovery: unless it was also shown that such enhanced value. or some part of it,was due to the use of the process. 8. TO. Where a master's report is confirmed by the court. awarding only nominal the infrin:gemimt of a patent, the costs of the reference, includ· ing,the fees, and. the costs of the exceptions and hearing thereon, b,e against the Complainant.
This cause argQed at the June circuit, 1884, and resulted in a decision for the. complainant. 20 Fed. Rep. 848. In November, 1884, the defendapt presented a petition for It rehearing, which, after arguJllent, and consideration, was denied. 22 Fed. Rep. 252. On the thirtieth, oiMarch, 1887, the master submittedhi,s report, in which he tIl cqruplaillant entitled to nominal damages only. The com!; plainantjiled exceptions to this report. The cause is now before the ,court upon and also upon a motion by the defendant ,tel dismiss; ltl,1e bill on the ground that the patent is void for want of ,Patentable novelty. The theory upon which the latter .motion is based is that, siU96 th interlocutory decree was entered,the supreme court, in 1 a, numlJerof causes, has tllJ),en' advanced ground upon the subject of patentable novelty, which disposes of the patent in question. GecrrgeB. Selden and T. G. Outerbridge, for complainant. James A. Allen, for defendant.
EVEREST 'lJ. BUFFALO LUBRICATING OIL 00.
743
CoXE I J. The motion to dismiss the complaint is, in reality, but a secoud motion for a rehearing. Upon tJ:1is subject but little need be said. The law and the facts are in precisely the same cnndition that they were at the argument and when. the first petition for a rehearing was presented. . The views of the court appear sufficien'tly in the decisions then rendered, and it is not necessary to reiterate them. The causes relied upon by tHe defendant had been decided at circuit adversely to the respective patents before the argument of this cause. These decisions were all published, and were accessible to the defendant had it desired to make use of them. The supreme court in each instance affirmed the decree of the lower court. No new doctrine had been advancedj no new test of invention formulateq. ,Thelaw remains unchanged:.! Each case must be determined upon its own facts, and the courts, as heretofore, must ascertain, as best they may, whereto draw th,e line through the shadowy border land which separates inve:q.tion1lnd mechanical skill. Of the recent decisions Of the supreme court, the one which,upon the. facts, approximates most nearly to the case at bar, ,is unquestionably Ncw-Proce88 Fermentation Cb. v. Maus,390. G. 1419, 7 Sup. Ct: 'Rep. reverses. the the bill, and sustalDs,the tlitrd claIm of the patent In controversY"whlc4 CO,vet:S a process; ,irrespective of the for carrying it out,appl;ied to beer while in one stage ormanufacture. It is not easy, on pl'inqiple, to distinguish this case fro lTI the case at bar. Instead, therefore, of convincing the court that the bill should be dismiSSed, the decisions referred to have confirmed ,and strengthened the opinion that'the complainants' " patent. isa valid one. The master has found only nominal damages, and has accQmpll.nied his report with an opinion in which the reasons for his action are clearly stated and abundantly sustained by authority. I concur in the views expressed by him, and fail to see how he could, have, reached a different It was conceded on the argument that the complainant, he did not grant licenses or operate personally under the patent, was not entitled to damages, He certainly could not. recover the profit without some evidence .showing what prOQt attributable to the invention. There is nothing to show that the ,defendant made more or lost less by the Use ,of the fire test. The record is wholly silent upon this subject. Not only does the complainant fail to show what pr6fit the derived from the invention, but he fail,S to show .that it derived any profit/lt all.:For aught that of the fire test may have been wholly without pecuniary ;lldvantage. The mere fact, if it be a fact, that fire-tested oil made by the Vacuum pany, with which the com plainant is said tobecohtiected,i sold for Olle and cents more per 'gallon than oil 'by otbercompa-J;lies,is entirely insufficie,nt,up1ess ,by proof that, 'the enhanced value, Or some portion ethereof, WaS due to the US«;l of :the tire test. There is no such proof. I t is +nanifest that, in: such circ.umstances, there is no foundation for more than a nominal recovery;' Garret80n v; Olark, 111 U. S. 120j4 Sup. Ct. Rep. 291; at circuit, 15 Blatchf. 70j Fay v.
was
744
.
REPORTER.
Allen, 30 Rep. 446; DobBon v. Doman, 118 U. S. 10, 6 Sup. Ct. V. Ha,r:tfQrd Oarpet 00.,114 U. S. 439,15 Sup. Ct. Rep. Rep. 945; 20 Black v. Thorne, 111 U. S. 122, 4 Sup. Ct. 326. . ......:' The mqtion to. dismiss is denied. The e:4Geptions are overruled, and master's is. ()ollfirmed.. '., Following the precedent.Qf r;tq,rretson v, Clark, BUpra, .the costs of the reference, im.cl1ld,ipg the the costs of the exceptionsancl of the hearing,t4",reon, should be ,tal:ed against the complainant.
rhe' following)s the opinion, to the
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qf the master, Mr. _ '
JAMES BRECK PER-
TheresuJt iJfthe decisions makes It difficult in many cases for a to recover actual damages for an infringement. It may sometimes seem hard that an improvemootcan Le used, and the invention beQf suc):l a character thlllt the defendant is in litfIe danger of being upon his rights. .A. obliged to ,pay anything to the plaintiff for l)laster, hO\fevl'lT" has nothing to do to take the law as. be finds it. Moreover, my <nv.n,obseryation is .that the report of a master'is generally set aside. that my I can, thei'afore, dispose of this maUer,free from action willnooessal'Hy be final or injure the complainant, if I have misinter, preted the o.utuoritl.es. , '.rhe facts of thisi.case are sotne,wbatpeculiar. The co.mplainant bas apparently granted no ,license,and has therefore no license fee. .A. license fee'was allowed in Goodyear v. Van Antwerp, 9 O. G. 497, and Graham v. OOmpany, 32 O. G. 1603, cited by the complainant, but as none is proved here cases seem to have no application. N either did the plaintiff himself mamifactuteoils, or in any way use the patented improvement. He cannot, therefore, recover, on the theory that he bas lost the profits on sales he would have., made if the defendant had not unlawfully sold goods in which the improved process had been used,and thus filched away his customers, under tharule In Seymour v. McOormick, 16 How. 480; Goulds'Manuf'U 00. v. Oowing; 105 U. S. 253; and other cases. . 'It appears tliat the Vacuum OU- Company of Rochester has used the fire test In its man'ufacture, but it is notshowll what interest the complainant has in tbatcompany,or whether he has any. I do not see, therefore, that the complainant has .sustained any damage from the defendant's infringeme:nt, I do not understand that his counsel claims that he is entitled to recover, damages action. But this dOes not dispose of his right to recover any profits which he can show that the has realized from the use of the improvem'ent, and, in order that there may be a recovery on that ground. it is not necessary tosl\owthat the defendant made a profit ou its entire business. Though there was a loss, yet that loss might be reduced by the saving in the cost of mlJ,llufactu.re resulting from the use of the patented process, or from a,n enhancement in the value of. the goods in which .it was used, and these gains would be the measure of the defendant's profits, resulting from his infringements on the rigbtsof thepate'ntee.. GOOdyear v. Van Antwerp, 9 O. G. 497; WilUa11U1 v. Railroad 00., 18 BIatchf. 181,2 Fed. Rep. 702; Burdell v. Deni;q, 92 U. 8.716,719; Oawood Patent, 94 U. S. 695. It is not .claimed in this case that there was allY saving in the cost of manuf,acture of resi<;iual oils from the· use of the fire It does not, therefore,
EVEREST V. BUFFALO LUBRICATING OIL CO.
come under the rule of such a case as the Cawood Patent, supra. It is not shown that tha defendant made a profit on its entire busint>ss, and it is not shown, except as it is argued from the business the Vacuum Company, that the oilsof'the defendant, inthe manufacture of which the fire test was used. sold for any better figures than those on which it was not used. The profit from the use of a patented improvement, under the case of MOW1'y v. Whitney, 14 Walt 625, must ordinarily, I think, consist in one of two items, -saving in the manufacture, or an enhanced value for the articlemanufactured. Perhaps the complainant was bound to show by positive proof that one or the other of those sources of profit actl1.uly inured, to the defendant, and, without this, cannot claim that profits have'been estabHshed for which he can recover. But evMencehasbeen given as to the prices ,received by the Vacuum :OH Company;for its 'oils, and from this it is argued that it may be fou that the defendant did actually realize, or ought to have realized;, a Profit on its oils in which the fire: test was used, which, otherWis6"jt would not have The proposition has been argued with much ingenuity,butlthink, for !3'ev'etal reasons, it does not authorize me in pnding thattbe ually realitl"d'profits from the use of this process. ' It does not appearcleacIy:, if at all; that the Vacuum on Company realized any greater profits ,on its'oils tlianrhany other companies; 'McGill says that its oils brought high,erpricMl than: 6tlier oils, but on he says certain ' grades1'ofoil&, made by Waters, Pierce & Co. commanded higher prices. Then. again, take the oils which sold cheaper than those of the Vacuum Oil Company, it does not appear that any less profit was realized upon them. It is shown that the price of residual oils is affected by the quality of the oils which are refined, and. doubtless. by other considerations. Nothing is shown as to the manner in which the oils were made which sold cheaper than the Vacu)lm Com:l:la!?-¥lf! 01' from whatmateria/s., " " .,.' " ," , . : But eveh 'if it be assumed-':'and I' do not think it can be-that' the other oils were made from the !lame materials as those of the Vacuum Company, and cost the same to manufacture, and that the fire' test was not used by them, and that the Vacuum Company made one and one-half cents per gallon more on the oil it sold'than was made by others, still it wouldnot,aphow much of this profit was due to the fire test in its'manufactlire, and, to'.assume that this entire difference was due to that, would, I think, be contritry to the facts and the law. . The oil commanded better prices. it is said, because it was made more uniform than otheroilsj and Patterson says that the use of the ,fire test:tended to make the, batches run more uniformly. There may havie been some gain to the manufacturer in this; but it cannot be said that the oil sold at one and one-half cents per gallon more simply because the tire test was used toascertain its, grade during the prpcess of manufacture. The price of the oil de'except as far, if at all, as the Vacuum pended, of course, upon its Company may have had speci'al advantages in obtainingcustoIIiers'.This superior was the result of the whole process of manufacturejtheUl:le of various tests, the nature of the stills, buildings, and machinery, the of the employes,alld other ,Other patented processes may have contributed to this result, and, a defendant might be called on to pay the total profit more<than once. The remarks of Judge BLATCHFQRD in ,,DQbson v. Carpet Co., 114 U. S. 439, 5 Sup. Ct. Rep. 945, are much in point', in this case. There has been no apportionment of the profits between the patented andunpa'l;ented processes, andtnstrumentaJities that went into the manufactUre of the Vacuum Company's oil, such as is required by the authorities. The case of. ,Ga1'1'etson v. Cla1'k, 15 Blatchf. 70. seems to me conchisive of this case. Th,e opinion of the master, which Judge BL....1'9HFORD approved, and the learned jildge's own reasoning, appear in all respects in point. ' This
746
FEDERA.L REPORTER.
case was affirmed in all respects in 111 U. S. 120,4 Sup. Ct. Rep. 291. It is the established law, and it will require the acuter eyeoJi.a ,circuit judge to .<fisti nguish it from the present case. : l am unable to do so. The case; of. Tuttle v· Gaylord; 128 Fed. Rep.' 97, decided by Judge Con:, tollow.8thisdecision, and is in point here., ' " The ease of Bargent v. Yale"Co., 17 Biatchf. 249, reversed on another question, 117 U.S. 373,6 Sup., Ct. R.ep; 931, is not analogous to this. The case of Mowry v. Whitney, 14 Wall. 620, is undoubtedly established law. But I do not think"that the evidence here shows any, fruits of the advantage framusing the complainant's patent, within the guarded rules which the sup11eme oourt established in, that case. . ' , :Suffolk 00. iV. Hayden, ,3 Wall.. 315, <loes not confiiQt with later cases, such as Garretson. v. CZark, supra, or, Black v. Thorne, III U. S. 122, 4 Sup. Ct. defendimt ,rec.eived' the same adv,antage in the price of its, oils, from the fact thatitheYlwere>llre tested. the·Yacuum Company did. It is not ,certain ·tllat such aD; inference could be dra)VJ'l,butitis immaterial, in the view which I'take of ,thei case. I Itis not worthwhile to occupy time in the of the weight oftlJ,eevidence, and what tinllings it would justify against the defendant. :11nd'0r the authoritieswh.i<lh havl:j cited,l think that only nominal damages can be allowed the complaioant.
Rep.326.,\ ,;: '" " , ," , I have llisoussed this case.as IO.t was necessll.Dily to be inferred that the
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Qf:secti;ou 824, Rjl>v. St., allowing the ·taxationof $2.50 "for ,eacJ:l, d,tlMsjti\?)II.1 .au51 iii. a cause, " ,JI,ot':apply to testimony taken before a commISSIOner to dIstrIbute the !tom the, sale of a . " vessel in the registry of a court of admiralty. '"" '' ' . . 'A bilnltCliscounting a
or making her;a general loan . ' at her home'port, has'no lien against,tlie vessel, :either under the g,eneral mario timeilaw,or the Pennsylvania:aet of April 20, 181>8, xelating to boats navigat· ing,the rivers,Allegheny, or Ohio, '. 8iSAMEL..WAQBS-&rE:A.M-.BoAT,OUIi1RIL, " ',i' "" ,act,gives ,no lien to aderk none of his , du.t,iell'()ll, :1;lflar4),he steam-bpa.t! but Wholly on j,SAJ4E-:-oTRW,AGE-H OMEPOR',I\ .. : ' ':, . " , ,, , give a Hen ,far towing service at the hOme port. j,',
AT IiOME
PORT.
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"One'wliQ boardea hs,ndwhile engaged in taking care of disabled barges whic)J. had been in the tow' Qh'steam-boat, butwhichl!he had left behind her at a'pdtt in· another state, bas neitber a ,maritim.e lien, nora lien under the , , Pennsylvania act; 'against <the stllBIll-Jjoat.: " ,: ", ' , '8.' 'SOO--'M:A.TERLA'L ANI> La:1Jo:n;. "" ' " : One who, the master, provides the material fOI:, ,and does w,Qrlt,o, of f9r ha,s no He,n thereof, , , un,deJ;.theB,enn,SylVanIa, a,ot.;Wher,e th,e chImneys, were not delIvered or com" and. work was done On the b?at; work baving been stopped by or· , ,'" der of the Iiiaster, on account of the stllzure of the boat, by the U mted States :, . marshal. ,:; ',,: ' ,
BOARD. . '
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