,FEDERAL REPORTER. ,STARLING ST. PAUL PLOW-WORKS.
(Oirc1J,it (Jourt, D. Minne8ota. October 10, 1887.)
PATENTS FOR INvENTIONS-CONTRAOT FOR ROYALTy-BREACH.
By the terms of a contract between the plaintiff and the defendant, the latter was licensed to manufacture and sell a plow,of which the plaintiff was the inventor, upon payment of a royaay for each plow so manufactured and sold. Held, that the manufacture by the defendant of plows called by a different name, but substantially the same as defendant's invention, was 8 breach of the contract, if defendant failed to pay the royalty, and that plaintiff might elect whether to sue for the royalty or for infringement.
Patent No. 127,878, for an "improvement in plows," consisted of a sleeve around the axle which is revolved by a lever affixed to it; the sleeve having two arms projecting towards the rear, and pivoted to the plow-beam underneath. By the operation of the lever the is raised, and a trigger pivoted on the lever falls in to It notch on a cIrcular plate fastened on the rIght of the axle, or its connections, with arms running to the tongue. The plow is thus held up while turning or being taken from the field. It can be locked in the ground; or out of it, by inserting a pin in holes made for the purpose in the circular plate, but the plow cannot be regulated while in motion. The plaintiff's invention consisted of a crooked axle, a crank-bar, bent twice at right angles. and a lever so arranged that while in motion the point of the plow could be raised by the operation of the lever, 'and the horses made to raise it out of the ground; or it could be locked in the at any depth, or out at any height. Held, that the former invention dId not have the same combination as the latter for and lowering, and therefore was not an anticipation of the plaintiff's inventIOn.
Action on a Contract whereby defendant agreed to pay a royalty for the sale of certain patented plows. Prackelton & Oareins, for plaintiff. John B. & W. H. Sanborn, for defendant. NELSON, J. A motion for a new trial is made by defendant upon the /tillowing grounds: "First, on account of accident and surprise which ordinary prudence could not have guarded against; second, on the ground that the decision is not justified by the evidence, and is contrary to law; third. on the ground of newly-discovered evidence, material to the petitioner, which it could not with reasonable diligence have discovered and produced at the trial; fourth, on account of error in law occurring at the trial, and excepted to by the petitioner." The trial was before the court without a jury, and was very thorough., Many questions arose, and, if error was committed, it was in allowing the defendant to show want of novelty and patentability of the plaintiff's plow. The action was brought upon a contract in which the defendant became a licensee to manufacture and sell the plaintiff's invention called the "Starling Plow," on payment of a royalty for each and every "Starling Plow" manufactured and sold. A breach of the contract is alleged, and a recovery sought and obtained for the amount of royalties upon plows sold and not accounted for and paid the defendant. If the defendant manufactured plows called by a different name, but substantially the same as defendant's invention, invading his rights under the patent, or using
STARLING:'IJ.ST. PAUL PLOW-WORKS.
devices claimed in the;plaintiff'Ei. patent, it· is a breach· of the contract if defendant fails to pay:the royalty therein provided, and on arepudiatioD of the contract by the licensee, the licensor and patentee can either sue for royalties unpaid or for infringement. Cohn v. Railroad Ca., 3 Ban. & A. 572, and cases cited. The election .to sue for a breach of the coniract is made in this case, and sustained. The court decided the defendant did infringt', and fl;ave judgment. I dismiss all of the reasons assigned for a new trial with one exception, and will briefly consider that one, viz.: "Newly-discovered evidence, material for the petitioner, which it could not with reasonable diligence have discovered and produced at the trial." This evidence is a patent, No. 127,878, issued June 11, 1872, to William G. Haslup, assignor, for an "improvement in plows." If the newly-discovered evidence which is submitted would not change the result of the verdict and judgment, it is well settled that anew trial should not be granted. The letters patent are attached to the petition for a new trial. I have examined the specifications and claims, and, if it had been offered under the ruling of the court at the trial, it could not have changed the result. The first claim of the plaintiff's patent is "for a crank-bar, combined with the plow-beam, lever, and axle, as and for the purpose 1'et forth, so that the horses are made to raise the plow out of the ground." The plaintiff's plow has a crooked axle, and a crank-bar bent twice at right angles, passing through a box bolted to the plow-beam towards the rear end. The forward end of this bar, near the driver's seat or right wheel of the sulky, rides upon the inner end of the journal. The end of a spring lever, which projects upward along a curved bar on the right side of the driver's seat, is connected rigidly with this end of the crankbar. The curved bar, with notches on the outer side to receive this upright lever, is attached to the axle. and part of a brace running from the axle to the tongue. The crank-bar thus bolted to the plow-beam can be held in any position to which the lever is adjusted. By this deviceitnd manner of construction and bolting, the plow can be locked, either in the ground at any depth, or up at any height, at the will of the driver. and in the operation of raising the plow the point comes up first. B) means of the lever the point turns up, and the horses are made to raise the plow out· of the ground. In the Haslup patent sulky plow there is a sleeve around the axle proper, which is revolved by a lever affixed to it. This sleeve has two arms projecting towards the rear, and pivoted to the plow-beam underneath. When the lever is pushed forward, the plow is raised, and a trigger pivoted to the lever falls into a notch on a circular plate, fastened on the right of the axle, or its connection, with arms running to thE! tongue. The plow is thus held up while it is turned or taken from tht' field. The plow can be locked in the ground, or depth to be plowed determined, only by inserting a pin in holes made for that purpose in the circular plate fastened as heretofore stated. The driver cannot regulate the depth to be plowed, and lock the plow in the ground, while it is in motion. The pin prevents the plow being raised by the lever, and.
it could not be operated while in motion so as to raise the point of the plow, and make the horses pull it out of the ground. The Haslup plow does not have the combination of the plaintiff for the purposes described in his patent, and does not anticipate his invention. The motion for a new trial is denied.
CORNELY 'V. MARCKWAJ,D.
(Oircuit Court, B. D. NiJUJ York.
March 6, 1885.)
PATENTS FOR INVENTIONS-INFRINGEMENT-DAMAGES.
On an accounting under a decree finding that the defendant bad infringed. all that the plaintiff proved upon the question of royalty was that he had instituted 10 or 11 suits against mfring-ers, and in all the cases except one a settlement had been bad between the parties-in some instances before and in others after a decree-by the payment of $50 for each infringing machine sold or used by the respective defendants. Held, that the evidence was insufficient to establish a price as for a fixed royalty. A patentee, in whose favor a decree of infringement has been entered, is not entitled to an allowance for the loss sustained by him by reason of the diversion of sales of the patented article, which he would have made but for the sales made by the defendant, when he fails upon the accounting to put in any evidence showing the cost of the articles.
On an accounting for an infringement it appeared that the patentee had gradually reduced his prices from the time he first put his patented article on the market. down to the time when the defendant commenced to compete, and that this reduction had continued after the defendant was enjoined. Held, that the loss sustained by reason of the reduction in prices owing to the competition of the defendant was conjectural. and not the subject of damages.
In Equity. On exceptions to master's report. WiUiam B. L. Lee, for plaintiff. William A. Coursen, for defendant. WALLACE, J. The complainant's exceptions to the report of the master upon the accounting under the interlocutory decree raise the question whether the master erred in finding that no damages were established by the proofs before him. The complainant insists that he is entitled to recover, upon the theory that he proved an established royalty for the use of his patented invention when licenses were granted by him to others. It appears that he instituted lQ or 11 suits against infringers, and in all these cases, except one, a settlement was made between the parties-in some instances before and in others after a de!lree-by the payment of the sum of $50 for each infringing machine sold ,)r used by the respective defendants. No other testimony was offered bearing upon the question of royalty. Whatever effect it might seem proper to give this testimony were the question an open one, in view of the decision in Westcott v. Rude, 19 Fed. ReI> 830, where it was carefully con·