MOSHER V. ,JOYOJ:.
4:41
MOSHER
v.
JOYCE
et al.
(OCrcuu Oourt of AppeaZs, Stxth. CirCllif,t. July 9B, 1891.)
No.9. 1. PATBNTS FOR INVBNTIONS-IMPROVE'ldENTs-LIl!'TING JACKS.
1875, and January 18, 18711, respeotively, for .lever lifting jacks, are for improve-
Letters patents Nos. 168,668 and 172,471, issued to Samuel E. Mosher, Ootober 11,
ments only, and not for an entirely new machine or jack.
2. SA'ldB-INFRINGE'ldBNT-REl!'EBENCB TO TAKB ACCOUNT-SEGREGATION 011' PROFITS.
In a suit for infringement of a patent for a lifting jack, the court decreed t11at complainant recover the profits made" from said infringement by the manufacture, use, or sale of tbe improvements described" in the patent, and referred the cause to a master to tske proof, and report the profits made from the manufacture, use, or sale "of said improvements or from said infringement." No proof was given before the order of reference w.as made, showing that the patented feature gave the infringing machine its entire commercial value. Held, that the order did not, and could not properly, direct the finding of profits on the entire machine, and defendants having claimed, at the commencement of the hearing before the mastel', that they were liable only for the profits realized from the infringing feature, the burden was on complainant to show eitber that such feature gave the machine its entire commercial value, or else to segregate the profits made on that feature from the profits on the machine as a whole. 45 Fed. Rep. 205, af6rmed. Complainant, claiming that the entire commercial value of the infringing machine was due to the patented improvement, oITered no evidence to segregate the profits on that feature alone, and the master reported the profits on the whole machine. The court, on exceptions to the report, held tbat the entire commercial value was not due to the patented feature, and thereupon complainant moved to recommit the report for evidence of separate profits. Held, that it was a proper exercise of discretion for the court to refuse the motion, as complainant. with full notice of defendants' claim, had chosen to rely entirely on his own theory of the case.
II.
SA'ldE-:MAsTER'S REPORT-RBCO'ld'ldITTAL.
Appeal from the Circuit Court of the United States for the Western Division of the Southern District of Ohio. In Equity. Bill by Samuel E. Mosher against Jacob O. Joyce and others for infringement of a patent. The patent was sustained, infringement declared, and a reference for an accounting ordered. 31 Fed. Rep. 557. Subsequently the cause was heard on exceptions by defendants to the master's report, which exceptions were sustained, and a decree entered for nominal damages. 45 Fed. Rep. 205. Complainant appeals. Affirmed. Statement by JACKSON, Circuit Judge: In 1883 the appellant brought suit against the appellees for the infringement ofletters patent Nos. 168,663 and 172,471, granted to him October 11, 1875, and January 18, 1876, respectively, for certain new and useful improvements in lifting jacks. After the issues were made up and the proofs taken the cau;:;e came on for hearing in 1887, when the circuit court sustained the patents, adjudged that respondents' jack, No. 29, embodied and infringed the patented improvements, and decreed "that the complainant recover of the defendants the profits which they have received or made, or which have accrued to them, from said infringement by the manufacture, use, or sale of the improvements described, and secured by said letters patent, at any and all times since the
FEDER.\.!., REl'ORTBR;,
voL 51.
18th day of January, 1876, and also the damages which the complainant has sustained 1'Andpas.i1: did: ndt'appear what said profits and damages were, it was further ordered and decreed that the cause be court an referred to aJ}peoial:tnastel';",totake ,proof Rnd account of the profits which the defendants have received, or which have arisen or accrued to them, from the nlilnufacture, use, or sale of said improvements, or from and to. ascertain and report. the Janual'y 18; in the ,cause, and from any evisaI?e." . Upon the'exoo\ilti0ti.oJ thls.fafprence nlntberiparty mtrodpced betore the speI e by defendants from'thomatlufacturel', use, or sale of.',theplltentedimproven1ent, nor as to reason of the infriogeiliel!tl .. Thaltr:laster',took:proof'3s to the,profitadefendants had. rnade oC,tJ1eentire ettlb6dying the patented ,itnprovements,8whreported Sli0h, profi ta upon the whole machines .of had manufactured and lsold 801'JRcksembodymg the,pateoted llwentlOlls, for theaggrf'gateQr -gross From this be the ,coiit of and .and found a here»orted as duetoc,omplainantJrom on. .account 9[{la1llagesrrQnl infringem¢ntsi,dj utiged in this were founded upon the theory WaS by upon the whole machines, or the entire jacks manufactured and sold by them, and that the amount of such net profits was the measure of comdamages fIo'ttlieiI1fting(nrioot;of the patented improvement. After his rep.ort was filed the defendants 'fi1ovedthecourt to refer the at:count back \tothe :mastel',: w hlchmotioF.\'was overrliled and denied. T'hereupon'tbe'defendants:filed excei!ltions to the ,report. The main grodnds of' exception' were that there 'WilS no- evidenoe produced before the'master or: found in the cilUBe that the patented 'improvement or device that derived any profit by the use theTE'of,;or that com plliinant ·had s1Isti:ined any' damage from the infringement, and, further, that there was no evidence to show what value or profit on the jacks manufactured and sold by defendants was due to, or had a<:crued from, the usEl·of thepaoohtedimprovement, or that they had realized or derived any profits therefrom, and that the master 6l'red in awarding complainant'the whole net pllofitsupon the entire machines. 'rhe defendants, in the opening of the reference before the master, claimed thai;" only suoh profits as"resulted froItt,.the use of the patented improvemetitscould bEH1Ilowedtl:woomplMnftnt; that the burden of showing wbatliluch profits were rested UpOll tl1e'(lomplainant, inasmuch as defuticlfi.\1tBhad the right tom:ake and sell.j9cks, and all parts thereof, not CE>Veredby complainal<l't's patent, and:tha.tcomplaillan.t's profits or damages should be·ICdnfiIledor limited tosudh as were shown to have re. stilted from the manufacture and sale of the infringing jacks, over and
MOSHER f1.,JPYCE.
443
above other and similar jacks 'which they had thl;l right to The Gomplainant's claim and contention was that the improvement cov by his invention and red made, 1n effect, ap. entirely new machine,--an improved lifting jack,.-.,sodifferent in operation from lifting jacks previously in use, apd so much more .efficient, that tJ;1e doctrine of the apportionment ofprofitsoould not properly be applied, .and that he should be allowed the entire profits on aU jacks embodying his improvement. , The court below held that complainant's patents were ,fOlf improvements only, and not for an entirely new machine or lifting jack; that it was t96 duty of complainant to give evidence separating or apportioning profits. and his damages the patented teature and the the unpatented features of the jacks made and sold, in v. Clark, 111 U. S. 120,4 Sup. Ct. Rep. 291, and Black v.Thorne, 111 U. S. 124,4 Sup. Ct. Rep. 326; and that" complainant having failed to show either profits or damages that were attributable, to the use of the improvements infringed, he was entilled to only nomina.! damages. The respondents' exceptions to the master's report were accordingly tained, and the complainant was nominal damages and taxed with the costs of the relerence. The complainant moved for a modification of the court's rulings, and for a recommittal of the cause to the master to take additional testimony, which motions were denied. From the decree of the court below awarding him only nominal damages, assessed at the sum of six cents, the complainant has appealed to this court, and has a8signed various errors as grounds of reversal. These assignments need not be severally noticed or considered in detail. The ones relied on relate to the ruling of the lower court upon the character and scope of the invention and the rule of apportionment applied as to the profits. It is also claillled that the interlocutory decree of reference directed the master to find and report the profits made by defendants on the entire jack, which infringed the patented improvement; that the court erred in decreeing nominal damages for want of testimony apportioning the salDe; and that the cause should have been referred back to the master to take proper testimony on which to make such apportionment. L. M. Hosea, for appellant. Edmcnd E. Wood, (Wood &; Boyd, of counsel,) fol' appellees. Before BROWN, Circuit Justice,and JACKSON and TAFT, Circuit Judges. JACKsON,CircuitJudge. There was no error in the holding of the,cireuit court that complainant's invention and patents were for improvements only, and not for an entirely new maehine or lifting jack. The patented improvement made jacks on which it was used more efficient, but did not operate to make an entirely new machine, nor did it supersede all other jacks. W are clearly of the opinion that the order of reference did not direct the master to find and report the profits made by defendants on the entire jack manufactured .and sold by them. In the absence of proof
444
FEDERAL REPORTER,
vol. 51.
showing that'the defendants' infringirip;jack derived its whole commercial value from the 'use of the patented improvement, the court could not properlyh&ve made such an order of reference as appellant claims was made. This is settled by IAUlPfield v. Perry, 21 Wall. 205, 228, 229. 'The refereneewas ordered in substantial conformity with that in DObgonv. Dornan, 118 U. S. 15, 16, 6 Sup. Ct. Rep. 946, and directed ali account of the. profits from the infringement. But, if that were not so,still,upon the coming in of the report, the court upon the final hearing fill-d full authority to vary or depart from the interlocutory decree on of profits·.. ' There is nothinp; in, the record to shqw that the court below erred in rsfneing to recommit the cause to the master for the purpose of taking tlpon' which to mak: an of the profi.ts. , It was claImed by respondents, pendmg the reference, that complamant could the profits which :defendants have realized as the result of the wrtmgfuluseofthe patented improvement. This or involved ",the apportionment of the profits. The complainant,being thus iqronned of what the defendants would contend for, cannot well claim tbathehas been taken by No accident, inadvertence, ormishtke is shown as a ground for the recommittal of the cause. The complainant, after notice of defendants' position and claim, neglected and omitted to introduce any testimony on the point. Nor is his motidri tp refer the account back to the master supported by any affidavit or shdwirig that he can hereafter produce testimony that will enable tpe master or .the court the profits attributable to his improvement. '. In respect to·'such matters as. the recommittal dl accounts or reference back to'Rmaster; the chancellor exercises a very large 'discretion, and is not to be put in error in his action upon such motions, except upon very clear showing of merits a.nd in the absence Where have ali opportunity of presenting their elect to proceed on Rcertain theory as to their rights, which is subsequently not 'sustained, alid then move to reopen the cause forprd6fnpon another theory, some good showing should be presented to support such motion. No special' circumstances are disclosed in the present case, which satisfy us that the court below erred in refusin!!: to refer the cause back to the master for proof on the apportionment of the profits. The remaining and principal question presented by the appeal relates to, the propeJ.: measure of profits which complainant was entitled to recover. Did the circuit cqurt err in confining and limiting his profits to such as resulted from or were attributable to his patented improvement, and, in the absence of proof on that subject, awarding only nominal damages, or was complainant entitled to the entire profits on all the jacks manufachired and sold by defendants, which embodied his invenThe rule for the determination of this question is well settled by the supreme court. It isso clearly stated in Garretson v. Clark, 111 U. S. 120, 121, 4 Sup. Ct. Rep. 291, as to render any discussion of or reference to earlier authorities on the subject unnecessary. In that case
KOSHER 11. JOYCE.
445
the C'/Hlrt say that -c'when a patent is for an improvement,anc1 not for an entirely new machine or contrivance, the patentee must show in what particulars his improvement has added to the usefulness of the machine He must separate its results distinctly from those of the or other parts, so that the benefits derived from it may be distinctly seen and apprecmt,d. The rule on this head is aptly stated by Mr. Justice BLATCHFORD in .the court below. 'The patentee,' he says, 'must in every case. give evidence tending to separate or apportion the defendant's profitsandth,e patentee's damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not.conjectural or speculative; or he must show, by equally reliable and satisfactory evidence, that the profits and damages are to be calcuoD,. the whole machine, for the reason that the entire value of the whole machine, as a marketable article, is properly and legally attributable to the patented feature.'" The rule thus laid down is reaffirmed in Dobson v. Carpet 00., 114 U. S. 444, 445,5 Sup. Ct. Rep. 945, and later decisions. Has complainant complied with either branch of the rule, so as to entitle himself to anything more than nominal damagell? It is clearly shown, and not disputed, that he made no effort and produced no evidence, either before or after the reference, "tending to separate or apportion the defendants' profits and the patentee's damages between the patented features and the unpatented features" of the infringing jacks. His claim below and his contention here is that his case falls within the second branch of the rule announced, in that his profits and damages should be calculated on the whole machine, for the reason that the entire value of the whole infringing machine as $ marketable article was properly and legally attributable to the patented improvement. If he has established this by reliable and sB:tisfacto.ryeyidence, his case falls within the exception recogniied and applied in Manufacturing 0>. v. Cowing, 105 U. S. 253; Root v. Railway 00., ld. 189; Hurlbut v. Schillinger, 130 U. S. 456, 471, 472, 9 Sup. Ct. Rep. 584; and Crosby, etc., Valve Co. v. Consolidated Safety Valve Co., 141 U. S. 454',42 Sup. Ct. Rep. 49,-where the patentee was given the entire profits, because it was shown that the infringing machine or device had derived its entire commercial value from the patented feature or improvement. 'l'-l,lus, in Hurlhut v. Schillinger, 130 U. S. 456, 9 Sup. Ct. Rep. 584, which appellant relies on, it is said by the court: "It clearly appears defendant's concrete flagging derived its entire value from the use of the plaintiff's invention, and that if it had not been laid in that way it would not have been laid at all." So in (]rosby, etc., Valve 0>. v. Consolidated Sqfety Valve 00.,141 U. S. 454, 12 Sup. Ct. Rep. 49, it was. established by the patentee to the satisfaction of the court that the whole commercial value of the infringing article was derived from the use of the patented feature, and for that reason the court awarded the entire profits. Has c9mplainantbrought his case within the rule .established by these a\lthorities? We are clearly of the opinion that he has not. He h8.l\ wholly failed to show, as the burden rested upon him to establish, that value of the infringingjack made and sold bydefendante
FEDERAl;' '!iEptn:tTEi.f(vol.
51.
wasderl,,'etHfbththe \1se'oftH&l plttefitEid 'pntlieconttary, the any.'l·elatihgtothe tilatter, tends strol;gly reliable and tangIble the Jack;!lS a ,h.is p'atentad fe,atu,re, "the conjectUl'eOt 10 order t6 the defendant8/, It was open that hadreceWed an increased price 'for tl1:eif attributable t6 his patented iiriproveU1Emt, the :infringirig: jacks deri"ed ,their entirevalue,as marketable'Rirticles, from Hehas'(liiltld to do either, and we are 'cleiirlyof theopinidti tbat the decree below Was therefore correct, and ahouM l;>e with"<cdsts of appeal, and it is accordingly so ordeiedandadj\idgM.· .' .
TATUM
'tt ill.v. I ;,'.:' ,','
GREGoRY
,.t,:
C01l,rt/N;D. California. June 9, iS92.) "';',
1.
PATI!J'M'TlJ
When a patent COVers 'only cettlii'n features of a machine and not the entire ma' chine, If the' patent features constitute the essential features of the·macbine and It wltllout which tl:\eJpll,Chll1e w:ould be val.ueless and unllalable. the , .. Qamages antl',profits forinfringernent must be calculated on the 'basis of the entire " machine, and':nat merely on', the patented features alone. 8. SAHli·· ," ,;' , ' , ' " " ,,:., , " , To to as damages for infringement tbe profits he would , have realized ir he bad made 'tbe Il8les wnfch were made by theinfringerj be must sbow had the ability to that he would have said Bales but for the infrmgement. , ,.
,
$.
, Olai tn, 1 of patent :No, dated May :1.880, and olalm 1 of let1lers patent N9. 290.858, datE!d December 18.18b3, both granted to J. A. Robb forimprov&ments hi eilgerll. embrace ahd 'eovet' the essential features of the patented machine, l\u!l«l'te-it withoutwbiob. features It would be valueless and unsalable. CAY,CULATED ON
FEATURES.
B.UI£-,!4lUSllR:S
InEquity. Exception to a master's report. Complainants 'br6ugbt suit for an injunction and recovery of damagesanq profits for infringement of the first daim of letters patent No. 227 dated May 25, 18S0,und the first claim ofletters pll:tent o. 290; 358 December18, 1883, botl} granted toJ. A. ltobb forimprovefuentsinedgers. The first patent covered a mec4aIlism fol', laterallyshiftihg the saws along the arbor of an edg;er for the., the distance between, them, and thereby of boards,' ,,The second patent covered a :is.m f<?r sim'ulUl,neo\1sly raising the upper feed 'rolls of an edger. On ,fibal Madng tIill two daims menWmed were held tobe the respondents,and, the ,case the master of chancery to take all accounting. ,See 1'atum v.Gregory, 41 Fed. Rep. 142., Accounting was taken, 'in which the master 'folind' that the patented featureS were