i; 'LEE 11. PILLSBURY.
741
LEE
11. PILLSBURY
et ale
(Circtdt COUrt, D. Minnesota. January Term, 1892.) L PATENTS POR INVENTIONS-l'RO:PERTY RIGHT-D.uUGES POR INFRINGEMENT.
The exclusive use granted by a patent is a property rigbt, and a plaintiff, in an action at law for infringement, may recover al,tual damages tberefor. OF CLAIM.
S.
SAME__
Tbe'wotds "substantially all specified;" in the claim of a patent, are to be given effect; and where tbe claim" read literally. would be inoperative, their effect is to include in tbe claim elements or devices contained in tbe specification t:bat are wanting in tbe claim. ' Where there is no license fee, and nothing to show that the patentee puts his machine upon tbe market, he mu!!t furnish other evidence to enable the JUry to come to a proximate amount of the damage which he has sustained by the infringement, and for this purpose general evidence may be resorted to.
8.
SAME-DAMAGES-GENERAL EVIDENCE.
4.
SAME.
The actual damages suffered by' plaintiff may be arrived at by evidence showing the value of that which defendants have used, the utility and advantage of the invention of the plaintiff over the old modes ordevices that have been used for working out similar re!!ult!!, and the saving effected thereby.
Ii.
SAME-NOMINAL DAMAGES.
Plaintiff can recover only nominal damages for the Infringement of an impracticable machine, or if he fails to show actual advantage to defendants by the use of his machine.
6.
SAME-PaOOI' 01' DAMAGES-MERE OPINION.
Plaintiff must prove the actual damages directly, or show such facts as will enable the jury to asc,ertain tbe amount; and mere opinion as to the amount of that damage cannot be considered. ' ,
'1·. SAME-MEASURE 01' DAMAGES.
The proper measure of damages for infringement of a patent is an indemnity to the plaintiff for tile los!! sustainl:ld by the infringement.
Action at Law for the infringement. of letters patent No. 155,874, issued to the plaintiff October 13, 1874, fQr a seed separator. It was claimed by plaintiff that certain machines of defendants, used in their mills, infringed the thirdolaim of his patent. Plaintiff's machine consists of a revolving she'et-metal cylinder,into which the grain is spouted. The cylinderis with holes large enough to receive such grains as cockle, but too small to receive the wheat grains completely within them. On the outside, a skin belt, as wide as the length of the cylinder, surrounds it, so as to cause the perforations to retain the cockle. A trough is sustlended lengthwise within the cylinder, and as the cylinder revolves the cockle is retained in the perforations, carried above the trough, and is dropped upon it, to be discharged out of the machine. This chute or trough has a brush at one edge, which rubs against the inner surface of the cylinder, to brush down the wheat, and leave the cockle in the holes, to be carried up and discharged in the trough. The third claim reilils: "The brush, J, in combination with the perforated cylinder, A, and trough, C, substantially as specified." Defendant'!! contended that the claim was inoperative, because it did not inClude the skin Lelt; that they did Dot inlringe it; also that it was anticipated by
I'EDER,AL
vol. 49.
.the prior art exhibited in American patents, 92,073, June 29, 1869, to Mace; 142,170, August 26, 1873, to Miller; 73;803, January 28, 1868, to Hancock & Leaman; 118,094, August 15, 1871, to Balch; in three French patents, two English patents, and a German publication prior to Lee's patent. It was conceded that the perforated cylinder with a jacket around it, as well as cylinders with indentations for the saD:!e purpose, and used in connection with a trough, were old; also that brushes for various purposeS were shown in some of the prior foreign patents, in connection with SUGh revolving cylinders. The machines of defendants have an indented cylinder, instead of a perforated one with a jacket. Plaintiff admitted that he had never made nor put into operation but a single specimen of his machine, which occurred a few months prior to his application for his _patent; nor had there been any manufacture thereof nuder licenses. On behalf of defendlluts it was contended that, under such circumstances, plaintiff could, at most, recover only nominal damages; citing 3 Rob. Pat. §§ 1053,1054, 1p62, and note; also pages 352366; Rude v.. Westcott, 130 U. S. 152, 9 Sup. Ct. Rep. 463; Mayor v. Ransom, 23 How. 487,7 Brad. Pat. ',Cas. 88. Plaintiff cited, contra, Suffolk 00. v. Hayden, 3 Wan. 315; Packet 00. v. Sickles, 19 Wall. 617; Rpot v. Railway. 00., 105 U. S. 198. Defendants requested the following instructions to be given the jury on the subject of damages: "That the loss sustained by the plaintiff depends upon the use which he makes of his right. That vindictive damages are not. allowable, and that plaintiff is not entitled to more damages than the advantages he would hav.e enj9yed but for the infringement complained of. 'l'hat where an inventor has not exercised his invention in any way, and neither derives nor purposes . to dt'rive any advantage from bis rights under the patent, he cannot sustain more than damages from the,use of his invep,tion by others. That the plaintiff haVing proved that he ne"et made morethar orie machine em1Irodying his invention, which was long since destroyed. and haVing produced nO evidence that he had ever manufa.ctured or intended to manufacture his license, and no evidence device, no evidence that he had ever tllat he made any use of his inventiQn by using it himself,he is, in case of illfringement. entitled to only nominal damages. That; the plaintiff haVing tailed to prove an established license fee, ora depreciationof the value of his eXClusive use by the infringement, he can recover only nominal damages in case defendants have infringed."
. The court refused these instructions, and instructed on that question as contained below. The same question ar<?se on a former trial of the case, ,and the instructions of the court were then the same in substance 'QQw,given. . ,".1)avi$., KeUogg & Severance and Keith, Evan8, Thompson &, Fairchild, for plaJ,Iitiff. . '. i. Flander8, Smith, Bottum &V'das, for defendants.
as'
District Judge, (charging jury.) This suit is brought to raCOvef damages for an alleged infringement of letters patent granted to'
749 in seed separators. 'the plairitiff 60 October 13, 1874, for an The patent has three claims. The third only is alleged to be infringed by the defendants. The patent laws are passed to promote the progress and to encourage inventions of the useful arts. Meritorious inventors are protected, and they are granted the exclusive right to manufacture, sell, and use their inventions. If the subject-matter of the patent possesses novelty and utility, the owner is protected against the use of it by any other person without his consent. The exclusive use granted is a property right, as much so as any other property of the in this case, if the third claim in the plaintiff's patent is determined by you from the evidence to be valid, and the evidence also proves infringement by the defendants, the former is entitled to recover actual damages for such infringement., The third claim ieas follows: "The brush, J, in combination with the'perforated cylinder, A, and trough; C, substantially as specified." The language, "substantially as, specified," is to be given efrec't. Such phrase relates to material features of the combination specified, to be ascertained by considering the purpose of the machine, and what are the elements of the combination which are effective in producing the result intended. It refers to the specification for such elements or devices wanting in the' claim; and elements of the combination not specifically mentioned in the claim may be included therein,-that ie, in the claim,-in the light of other parts of thespecifications, which are applicable. So that, as this third claim, reading it in its literalism, would be inoperative, in my opinion the skin belt may be included as a part of it, jacketed about the perforated cylinder in the manner described in the specification, and I instruct you that my construction of this third claim is that the skin belt must be embraced in it, and, when considering the defenses interposed, yOll must so construe the claim. Now, gentlemen, you are to determine this question as a. jury of business men. Some of you, I know, are familiar with mechanism to a certain extent; others are famiUa.r to some extent with the operations of milling. You will give this case <iareful consideration, weigh al) of the testimony that has been introduced here on both sides, and determine whether the plaintiff has sustained a case which entitles him to damages. If, in your judgment, he has done so, and his rights have been inV!l-ded under this patent by the defendants, then he is entitled to actual damages, and the question then presented is, what amount is he entitled to recover? You can readily see, where there is no license fee, no price fixed for royalty,and nothing disclosed which would show that the patentee puts upon the market a machine, for the use of which he charges so much, it is a very difficult matter to determine what the amount of damages may be in a certain case; but, like all questions presented to a jury for their determination, the plaintiff is bound and required to give some data, and must furnish the jury with evidence, so that they may be enabled to come to a proximate amount of the damage which the patentee has sustained by the infringement. In other words, general evidence may be resorted to for the pur-
.750
I'EDE1'tA,L REl'O:uER,
vol. 49·
.data for juryJo eome t<> . a cQqclusion. They are pose of a,nd IOQk,atthe value and ad vanto take into! mafes of seed separators, and tages of the ascertahdhat'vlilue fromaH .the evidence as to it$ cbar1l.cter, operation, andeffectj and you will' take i'nto considerationth'evalue, if any, of that which tbe defendants have usedhelonging to the plaintiff to aid youinforniing a of the actual damage plaintiff has sustained. It is conceded that, during the time for which. plaintiff seeks to recover, 60 cents a bushel, the value of the cockle seed the price of which is extracted also has been shown, and evidence has been introuse of the plaintiff's ,duced tending to show the saving effected by invention. This evidence has been offered here, .and it is very appropriate and pertinent, 8S going to sh()w the utility imdadvantage of the invention of the plaintiff over the old modes or devices that have been ,usedfor working out similar results. Upon those data you are furnished with' !,!omething by which you can arrive at perhaps not 8n accurate. but .aprpximate conc1ushmRS to what amount of damage has been suffered by: the plaintiff, if you think he is entitled to recover damages. I have been presented with many requests by counsel for. defenlJants, some of I will give you, some I have qualified, and others I have refused. 1 will rend those. I propose .to give, 8114 tbose I have q'Jalified, the qualificatioos, a,nd I st\lte to you that. these instructions I give are to be reeeived by you as part oftbe law in the case. That, in case the jury an infringement, the plaintiff .is only entitled to the damages he has sustained, and. if the jury believe his machine to be impracticaanll useless practicaJly, he would only be entitled to nominal damages for the infringement. 'That it is the Iluty.of the plaintiff to set forth and prove the actual damage to which he claims to be entitled, and that, if he fails to show actual advantage to the delendunts by the use .ofhis machine, he woultl be entitled to only nominal damages in case of thedefendar.ts in(ringe. 'l'hatit is necessary to damage by the plaintiff that he should prove the same dirtlctly. or show such facts as will enable the jury to ascertain the same, and that mere opinion as to the anloupt of that damage cannot be received or considered. That the. proper measure fpr. damages fOI'·the infringement of a. patent is an indemnity to the for loss sustained by the infringement. You will recollect that there is some claim with regard to this trough or this device with a flexible brush attached to not put pn for any such purpose, as the :",neat never rose up to point. Tll.ere is..evidel1ce on the part of the that the wheat di<;l rise up to that point. That is a question ,for:yoH- to detepnine. You are to determine what the operation of for that purpose, and what the operation of the machine and say do or do, the defendantll inf,ringethe combination in the. patent issued to Mr. tee..ThEl plaintiff have brought his S\llt in equit.f;,;an<;l had of a jury, buthe presents his case iI;l.an action at law, as ;be hass perfect right to do. .', "0< ,l . . . c. ".,,' '",' ," .' .,
: THE EMPEROR.
75t
If the )llltcome 'to the. conclusion that the a valid that there has been infringementori the part of-the defendantsthey can award damages to the plaintiff, but not to exceed the amount cliiimed, $1,600. The iliq,'returned a favor of the plaintiff in the of $1.600..
THE EMPEROR. UNITED STATES t1.
THE
EMPEROB.
(DI8trict aourt.1il. D. New York. ,February 29, 1892.) PBxALTJ1!lB AND, DUMPING-ACT OJ' JUNB II "PERSON OJlFIINDING"-WUBN TUG NOT "USED OR EMPLOYED"INVIOLATING'ACT.
:The act of June 29, (25 St. at Large, p. 209.) provides that'muq shall not be du,mped within certain around the port of New York; that ,every person, firIn, or cQrporation engaged in removinjt mud shall be responsible for its deposit outside'of such limits; that for every violation of the law the person o:l!ending shaUbe deebled guilty of an o:l!ense against the act; and that any boat used or emP10Yedin,.v,iola,ting theIH',aviSion,s of the alltshall be,liab1lt, "\;0,, a,penalty · , on,suit brougbt to recover such penalty against a tug which, with scows, was on bel' way to tbe ground in tbe usual course, and well out to sea, but still within t1le prohibited limits, when the llCOw·men. who were in 110 way connected With the tug, with their own volition, and, without the knowledge of tholleOnthll tug, and contrary, to her captain's express, orders, dumped the scows, held, that neither was the master of the tug a "person o:l!ending," within the meaning of the act, nol' was the tug "used or employed n in the illegal act. of the scow-men. '
In Admiralty. SUlt to recover a penalty for dismissed. Je88e Johnson,U. S. Dist.Atty., for libelant. Ch7penter for claimants.
tibel
BROWN, District Judge. The above libel was filed under the 'act or June' 29, 1888,c. 496, (25 St:'at Large, p. 209,) to recover against the tug EItlperor the penalties prescribed by that act for dumping within the prohibited limits certain mud excavated in the\'North river. The mud had beenloaded upon two,scows Nos. 19 and 34, belonging 'to thE:' Morris & Cumming Dredging Company, which after being loaded made to the stake-boat below Liberty 'island. The steam-tug EiIlperot; not belonging to that company, was employed to tow the two'S(l()WS' out to sea to the prescribed duIhping ground. Between12anlt'l o'clock on thenigpt of July 25th, she took the two scow-menbelbngingto'the scows from Jersey City, landed them aboard the scows, and: then proceeded down the bay "with the scows in tow on along hawser,having preViously obtained the permit {or dumping as required by the act. ':,,; i: The :eyiden<!e shows ':that when the tug took theacow-nlen' 'aboard 'at of them Bsid to theeaptilin of the. tug that hewtmld, give Ii whistle f)r show a light when the scows The'Clt'ptiliri re-