HUNT BROS. FRUIT PACKING CO. V. CASSIDY.
257
HUNT BROS. FRUIT PACKING .I .
00. v.CASSIDY· . .: .· .
(Circuit Court of Appeals, Ninth Circuit. October 24, 1R92.)
1.
PATENTS FOR INvENTIONS -lNFRINGEHEl'iT ApPARATUS.
OPINION .
EVIDENCE
DRYINd
In an action for of a patent for improvements, in fruit dryers, the patentee. after stating that he had been in pursuits. had seen many different dryers. and had sufficlent,knowledge of mechanics to permit him to give an intelligent opinion as to the cost of a piece of mao chinery when he saw it, was asked which in his judgment would be the ch.eaper to construct. his or th3 alleged infringing dryer.. H.eta. that the ques. tion was not objectionable. on the ground that the witness hali said he did not know the costo! the infringing"dryer. 2. SAME-INVENTION-BuRDEN OF PROOF-DIRECTING VERDICT.
The eXistence of letters patent issued in due form constitutes prima facie evidence of the validity of the patent. and where, in an action at law for in. fringement, such letters are introduced. an alleged want of invention is mat· ter of defense, the burden of showing which is on defendant; and the court cannot direct a judgment for defendant, even though the patentee, on cross· examination, has given evidence that may tend to show a prior state of the art excluding invention on his part. .
8.
SAME-INFRINGEMENT-INSTRUCTIONS-QUESTIONS FOR JURY.
Whether there was invention in the patent. whether plaintiff was the first inventor. and whether the use of gravity catches as mechanical equivalents of spring catches was known at the time of plaintiff'sla'pplication, wereques· tions of fact for the jury . . ;
4.
SAME-DISCLAIMER-MECHANICAL EQUIVALENTS-
In letters patent No. 172,608, issued January 25. 1876, to John W. Cassi4Y, for an improvement in fruit dryers. the patentee first claimed "spring or other catches." but, on an objection that his application was not in proper form. amended by striking out "or other." Held, that this was not a disclaimer of gravity catches, which were known mechanical eqUivalents for spring catches. . . '
Ii.
SAME-NOMINAL DAMAGES-EVIDENCE.
Plaintiff. owning a patent for two improvements in fruit dryers, BuedJor the infringement of but one. Heid, that nominal damages only were recoverable, where the evidence showed only the amount of a license fee for both devices; and the profits to be made in manufacturing fruit dryers containing both improvements. An exceution to the court's refusal to direct a verdict for defendant at tbe · close of piaintiff's evidence is waived by proceeding in the cause, and introducing evidence for the defense. Railway Co.v. Cummings, 1 Sup. Ct. Rep. 498. 106 U. S. 700, and Insurance Co. v. Crandal,7 Sup. Ct. Rep. 685, 120 U.· S. 527, followed.
8.TRi:AL-INSTRUCTIONS-WAIVER OF OBJECTIONS.
. In EITor to the Circuit Court of the United States for the Northern District of California. At Law. Action by John W. Cassidy against Hunt Bros. Fruit Packing Company to recover damages for infringement of patent. Judgment for plaintiff. Defendant brings eITor. Reversed. M. A. Wheaton, I.M. Kallochand F. J. Kierce, for plaintiff in error. John H. Miller, for defendant in error. . Before McKENNA, Circuit Judge, and ROSS and KNOWLES, District Judges.
KNOWLES, District Judge. Defendant in error instituted suit in the circuit court of the United States· for the northern district of v.53F.no.2-17
California for an infringement upon his letters patent for improvement in a drying:.'Q8l'atus for dryitlg;'fruit. The declar(t1J.onare:to an desiccating fruit and by! meatis''O'i! artltlcia:l h'eat. andconlilsted, among other things, of a novel means of moving. the trays on which the frult Is held within the dryfrom time Iti8 is removed therefrom, as will mON"UllY'ltppear from patent' hereinafter setout, to which reference I., hllN'Utlde'for a fullilr: description."'" , (-If'"
"That said
,tllte charge ,is· that' defendant... I _ " '. ,j.
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snd patent. It
ll.nd.<>I,l;l,large numbers of machines containing the 'invention described and claimed in and by the said letterl ' ! I)
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ll'urMng to the .letters patent, :ffnd what are the invl;!ntions claimed.; :I 1 ,I 'Resays: .'",' . ,'!.!i'iq,. My il;lventiott·l'elatell to atlr,improved device for desiccating fruit and i,I , ,; ,'. ·· · . ( ;' ,-
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othe;l;',8\l\}fltaneeS,QY meaj)ll of artificial beat,and It consists,tIrst, of a novel method through flues from the furnace, and by leading these flues around the chamber within suitable pipes or cases, and making certain openings from thesccases Into the chamber, I .am enabled to admit heated air all sides and at between the layers of fruit, while lleat Ie. admitt.e4 1:I\Om the bottom: of "the chamber or not. as may be desired. < ,", E\c'CQl;lij;,M:y;lJ;lv,qnt.ipqalsocon,silltll ,In a DQvel, ·means of moving the fruit within th'e chaniber'fl.'om the tinie it is admitted until It Is. again removed. " and support ,tb'e' trays of fruit after they are introduced, I com1;Jiy:l!ttiqn of movableaiJdstationary standards upon two opposite lIiqea.Q(thll.chaIDQel\.a.nd thesestandardsare provided with spring catches, forced,.jnwaltd to allow alSray to pasaup, but will return to their places afiel'it passes, and prevent Its going down." , ,liIu'QrdE!-r
In describi,ng this
the applicant says: . . '
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in his briet: alleged improvements in a drying apparatus. It
"The patent In suit was granted to John W. Cassidy, * * * and covers im· provements in drying apparatus uled for drying frults,'-vegetables, and other prod· · ucts,"
in his brief:
only.
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;two,
IJdriilgement is charged of the second
Again,"rhe device cov.ered by thetlrst claim Is a system of flues for evenly distributing the heat. infringement thereof is charged. and it may be dismissed from consideration...
No
"There is no resemblal!cewbatevel' 1;letween the Alden and Cassidy machines" further than the fact that they are both stack dryers.. B\.lt the Cassidy claim is not for,a,stackdryer. It i$ f()f, a peculiar'mechanism to lift the trays of a stack dryer. "
Ji'rom, the WQ:qld thatthere was no contention but that defe:lidant i'JieITor's patent was for improvements in fruit dryers, and not for a fruit dryer. In the subsequent consideration of this case this may become important. Plaintiff. inerroJ,' urges that theeircuit court committed an error in allowing -give an opinion as to the relative costs between
259 hie pa.tentedfruit dryer. and the Alden fruit, dl'yer..· The witness stated that he 'had for a number of. 'years been engaged in mechan· icalpursuits; that he had seen a great.maIiy fruit dryers' of different kinds; that he thought his knowledge ot mechanics sufficient to per· rilit him. to give an intelligent opinion' as to the cost of' a piece. of when he saw it. This question was then asked him: "With that as a basis, J will repeat' the and will ask you which m.your judgment would be the cheapest to construct, yours or the Alden?" The <!bjeetion of plaintiff'in error to this question was ''because the witness says he does not kriowwhat the Alden dryer would cost." It will be seen that the objection was not that the witness was not competent to give an opinion as to the relative costs of these two mal:lhines, or tl).at this was not a competent way of proving their relative costs. It is urged by plaintiff in error that the cost of building the Alden dryer was capable of exact proof. There is no evidence to show this, and this was not the objection made. A party objecting to the introduction.of evidence must specify the point of objection definitely, ahd none other will be considered The fact that the witness did not know the exact cost of the Alden machine would be no objection to his giving' his opinion, as a competent expert, as to its cost. A party is never injured by a question propounded to a witness unless he can show injury from the answer thereto. In this case the answer was much narrower than the question would have warranted. In response thereto the witness said: "1 think, so far as the shifting apparatus is concex'Ded, this would be 50 per cent. cheaper than the Alden,---.fifty or seventy-five." This was competent evidenl:le upon the question as to the utility of the machiri.e of the defendant in error. The next error claimed by plaintfjf in error to have been committed by the circuit court is in its refusing to instruct the jury to find a vet· diet for defendant, when the plaintiff in the court belo"," had rested his case upon the evidence then presented The ground upon which it is urged that the court should have given this instruction seems to be that it appeared from the evidence that there was no novelty in plaintiff's patent; that it was superseded by the Alden machine; that Cassidy had substituted in his patent only mechanical equivalents for those devices used in the Alden. Plaintiff introduced his patent in evidence. This was prima facie proof ot the validity of his patent. Iil the case of Mitchell v. 'Tilghman, 19 Wall. 390, the supreme court said: "The patent, when introduced in evidence by the complaining party in a snit for Infringement, affords a prima facie presumption that the patentee is the oriKinal and 1lrst inventor of what is therein described and claimed 8S his invention."
when in· in evidence, is prima facie proof of its own validity, it appears on its face not to be such a document as the statute prescrlbes. Walk. Pat. § 491. When letters patent are introduced in evidence the burden is cast upon the defendant to show that they are not good, or that the patentee is not the first inventor. Blanchard v. Putnam, 8 Wall. 420; Seymour v. Osborne, 11 Wall. 516·-538. The question of anticipation or want of invention is a matter of defense. The question of anticipation cannot be raised without notice specifying the anticipating invention. Section 4920, Rev. 81. The que&
Iil Walker on Patents the rule is expressed that the
·REPORTER t
vol. 53.
fD,:\!"entiqn .
qfthe DO made by patentee may be n9t1ce. ,of inventionln a patent is a matter Qfdefense unless the ,tij.pigJOl' 'Which a patent is claimed shows on its fa.ce that it is Wl;L1k.Pat. § 599. In the following cases want is spoken Malin v. Harwood, 112 U. S. .Ct. Rep. 174, ,and 6 Sup. Ot. Hep. 451; Hendy·v. Iron U. 370, Ct. Rep. 1275. The evidence given by dryel' was brought out by defendant on eros$·examination.tt,wpuld appear to have been an attempt on)tspart to make out itS defense in this way. If the evidence of any tendency to make out defendant's defense, it was a the jury Wdeterm.ine its weight. And they should haVe able to find from it, beyond reasonable doubt, that there was no invention in his patented devices, or that they had been anticipated. Coffin v. Ogden, 18 ,Walk. Pat. § 76. It was not pretended that the Oassidy mac1l.ine, showed, want of invention on its face. This reswt ,waS t() be reached, only by evidence. Under such a condition there cQuldhave been. no errorin the court refusing to take the case l7 fro . of fact presented itself. Defen.d· Iplt e,. j.. u .'. "a.nd decide.,th.e iss11..e error waived the exception to the plaintiff in CQllrt :toinsp-uctthe jury to find for defendant byproevidence on its part. In tlle 106 U. S.700, 1 Sup. Ot. Rep. 493, tijh.....
t,() whether, COD$idering the previous
. thai. case :may. be presented m which the refusal to tbe, defllndant,at the plaintiff's testimony will be good ground lor the reversal of ajudgmen\ on ,a verdict in favor of the plaintiff. if the defendant rests hi.s caseon such testimonY,and introduces Done in his own bebalfioutlf,'he:goes on with his defense. 'and puts in testimony of his own, and the the·whole judgD,wotcfD,1Iot reYe:r;se",inthe absence (lfthe defendant's testlmoIly,pn account lof'th&'orlgitral'ref,usal,evell though it would not ha.ve been wroIlg to, give'the'lnSlliL'uttSon lUbe tlmeltwas&.sked\·" ' .
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... 685; the, ,CIt the "cannot be. assigned aaerror because the defendant, time of requesting.J;\uch an instruction had not rested its This ·doctrb;lewas affirmed in Robertson v. Perkins, 129 U. S. Ot. Rep. 279. Under these controlling authorities, the contention of defendant in error on this point must be sustained. Plaintiff in error urges that under the evidence it was wrong to have left it to the jury to. determine whether or not gravity catches were mecha.nicalequivalents for spring catches, for the reason that defendall1: in error nalTowed his claim by an amendment of his application for a. patent so as to. leave out of his claim for spring OT other catches the words "other catches." It does appear from the record that .defendant' meiTor, in his applica.tion for a patent, first clltimed "spring or . ' other catches," and then amended to "spring catches." Thi!'! was done by direction of the patent office, on. the ground that the application was not proper in form. There is a decisi()u of the supreme coUrt that urges that such applications should
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00. v.; (.kandal, UOU. S. 527, 7 Sup. Ot. court h,el<l that, under i;!uch
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261
not be received, because of indefiniteness and liability to misconstruction. But we do not think that this can be classed as a disclaimer of any other catches which would be a mechanical equivalent therefor. Such was not the object of the amendment, or the reason for requiring the same. Generally, a patentee, no matter what the character of his patent may be, can claim mechanical equivalents known to exist at the time of the application, whether he claims them or not in his application. Walk. Pat. § 350; Vulcanite Co. v. Davis, 102 U. S. 230; Tatum v. Gregory, 41 Fed. Rep. 142. There may be a rule of strict construction applied to patents that do not embrace pioneer inventions when considering this question. But there is no dispute but that the gravity catches were known mechanical equivalents for spring catches at the time of defendant in error's application. There would seem to· be no room, then, for construction upon this point. If defendant in error is entitled to mechanical equivalents at all, he shpuld be in this case. We hold that this point is not well taken. The court in his instructions submitted to the jury the question as to whether there was invention in the patent, and as to whether defendant in error was the first inventor of the devices mentioned in his patent; .and also the question as to whether gravity catches. were the mechanical equivalent for spring known at the time of the patentee's application. These are. all questions of fact, and in a law case should be submitted to the jury under proper instructions as to the law applicable to the same. This, we think, was properly ,done by the court. Plaintiff has assigned and claimed many errota as committed by the court in regard to the refusal to instruct requested by it, and in giving certain instructions to the jury. Co]}: sidering the charge as a whole,. we think, upon the matters above stated, it Was correct and sufficient. Under these circumstances, we think it a profitless expenditure of time to consider and review-in this opinion all of the alleged l:!lrrors. The plaintiff in error, upon another issue not above stated, namely, upon the question of asked the court to instruct the jury that, under the evidericepresented, the plaintiff could not recover more than nominal damages, if any. As stated before, defendant in error claimed two improvements in fruit dryers. He sued for an infringement of but one of these claims. His claim for damages cannot be broader than for the infringement he claims. In other words, he cannot claim damages for· anything more than this one device.. lie is injured only to the extent of the use of that part of his patent which has been infringed. The evidence as to damages consisted of evidence of a license fee which he had fixed for both of his devices, and evidence of the profit to be made in manufacturing fruit dryers containing both of these improvements, and also certain unpatented features. The authorities are full upon the point that a party can· not recover as damages the profits to be derived from the manufacture of the whole of a machine, when only a portion of the same contains a patented feature. Garretson v. Clark, 111 U. S. 120, 4 Sup. Ct. Rep. 291; Dobson v. Carpet Co., 114 U. S. 440, 5 Sup. Ct. Rep. 945; Philp v. Nock, 17 Wall. 460. The burden of proving damages for thein-
the pl,a,iIl.,tiff, and he, m,uat, e,stablish by cOPlIfflteJJ.t evidence, and they must not ,be left to be conjecture by the jury. Garretson v. aupl'a i1!)/tke v" ,94 U. S. 728... Itilil true that when there ,is ,no . evidence W'l\ichcan be produced of a license· fee, or the profits to frWiQ. .the manufacture of the patented device, the what would be a reasona"?le license (lyidence il$ introduced tendin.g to establIsh that I' Walk. Pat.§§ 5W3, .564. ,But the evidence in this case did not have tendency thatfact. No evidence was introoLthe relative utility or value duced fo;r;thatpurpose. of the tvvq devices .in :the patent was presented. The proof fee for tW():W1proveme;nts in fruit dryers is not compeof a tent, in, order, to show,.the damage sustained by an infringement of one of.i)hese Philp v. Nock, 11 Wall. 460 ; Seymour v. 16 IJ9w. 480. The market prife of two pieces of land could not be proven in order to show the market value of one A license fee, when established and agreed to by the of these public, is. QnIy a meanspfestimating the market value of a patented macb,ine, prdevice of whiph. the patentee had been deprived by infringemellt.,. Seymour v.¥cCormick, supra, 490, opini,on; Packet Co. v. Sickle.'lt;!9Wall.6,11;J;lijlle v. Westcott, 130 U. S. 152--165, 9 Sup. Ct. Rep. Plaintiff'!i1,eyiderice was of such a character, then, in our opinion,as not to.give tb,e jury the means of arriving at any more than nODlinal damages for plaintiff. The damages found cannot be d¢uced froIll the case, but must have been reached by surmise the was not of the character to thesame. It was therefore error in the court below. to have plaintiff in error's request to instruct the jury that theyeoUId o:Qly damageafor plaintiff. For this error the judgment of court below. is reverf3ed and set aside, and the cause remanded for further proOO(ildings·
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. , , MANUF'G CO. v. BESHOREl. (Cb"cult Oourt, E. :po J;'enusylvania. ,November 22, 1892.) No.1. TBADE·MABKS-INll'RINGEMENT.
In an action to restrain the infringement of a common-law trade-mark in the words "One Cough CUre." it appeared that plaintiff began in 1888 to sell a corn re¢e(iy labeled, "One Night Corn Cure," and a certain cough remedy, labeled "Rocky Mountain Cough Syrup." The labels for the latter having b(;!enexhausted, it was thereafter sold in slllall quantities under the nallle of. Cough Cure," the labels being in writing. In the full of 1891 PrJ..nt!1d labels were. llsed, and the business was actively pushed until the conlJilenCf'ment ofthis action, in February, 1892. The respective remedies, and, the labelS for the one and the ot4er, rendered it diflicult to understB.Q.dwhat was intended to apply to the one and what to the other.ln the'application for regl$tration of the trade-mark the label recorded was as follows: . . "Corn Salve and Cough Syrup." . "One Night Cure." In the accompanying affidavit plaintiff states that the trade-mark of said colllpany WD$ists of the words, '''One Night" preceding the worus
