No. 4,364, and "relates tOll. concrete pavement, * * * laid in sec., tions, so that each section can be taken up and relaid without disturbing the adjoining sections." The master held that for the infringement complained of, the defendant was not liable to the patentee for the entire profit realized on those jobs :in which the device covered by the patent had been used, but only for' such portion of the profit as was clearly traceable to the use of the patented device or process. To such rUling the complainant excepts, and insists that he is entitled to the entire manufacturer's profit, which, in case, amounts to over $8,000. Second. He insists that if his first position is untenable,--that is to say, if he is compelled to accept such portion of defendant's business profit as is dearly traceable to the use of the patented device,-that there is evidence in the case showing what such profit was, and warranting a decree for a substantial amount. The ,first exception is based mainly on the case of Elizabeth v. Pavement Co., 97U. S. 121. The subsequent case of the Manufacturing Go. v. Gowing, 105 U. S. 253, is also,referred to, but that decision was predicated on a special state of facts, and is irrelevant to the matter in hand. To my mind, at least, it seems clear that this case is not controlled by the principle of the decision in Elizabeth v. Pavement Go., but by the rule announced in Mowry v. Whitney, 14 Wll.I1.648;and such was also the opinion of Mr. Justice BLATCHFORD, as circuit judge, in Schillinger v. Gunther, 15 Blatchf. 303. It is, perhaps, unnecessary to point out the distinction between this case 'and the one relied upon by the complainant, but the apparent confidence with which the case of Elizabeth v. Pavement Go. is cited justifies such a course. In the latter case. as has many times been remarked, the patent involved covered a combination that was complete in itself, and constituted a new pavement, commonly called the "Nicholson," which differed from any other then in use. As combined and arranged, the Nicholson pavement was a new new thing, like a new chemical compound." It wall this new thing, or pavement, complete in itself, which the defendant made, and he made it as a complete structure. He did not embody it as an improvement in some other pavement which he was employed to construct. Under such circumstances, it followed that whatever the defendant realized above the cost of construction was a profit realized by the ment. The principle that controlled the case, so far as the estimate of the profits was concerned, is the same that governs when a manufacturer makes and sells an entirely new machine, which, as an entirety, is pi'otected by letters patent. In such case the profit recoverable is the difference between the cost to the manufacturer and the price realized on sale. Walk. Pat. §§ 717, 7'35j Rubber 00. v. Goodyear, 9 Wall. 804. The case at bar is an essentially different case. Schillinger simply devised a new method of laying a particular kind of pavement, to-Wit, con· crete, which was before well known, c:.nd in common use. He did not invent a new pavement. His device was, according to his own admission, an improvement on a pavement already in common use, which any one might lay; and as an invention it was not susceptible of use, and
SHANNON V. BRUNER.
was of no value, except as it was employed in the construction of concrete pavements, which it was intended to improve by rendering them more durable. The proof of thef!e statements is found in the specifications of the Schillinger patent. The patentee says he has "invented a new and meful improvement in concrete pavements." He then proceeds to describe an invention which in this verv case was held "to consist in diinto blocks or sections, so that viding a concrete pavement as it is one section may be removed or repaired without injury to the adjoining sections, the division being effected by interposing some substance, such as tar paper, or an equivalent, between the blocks," so as to effectually separate them, and, at the same time, produce a tight joint. Ante, 290. Such being the nature of the Schillinger invention,-that is to say, as it was intended to be used in the construction of an old and well-known pavement, for the purpose of rendering it more serviceable than formerly,-it is clear,beyond question, that the patentee cannot recover from an infringer the business profit realized by the infringer on every pavement which has been laid accordiI1g to that particular method. This is pre-eminently a case in which the profit to be recovered of the infringer must be ascertained by determining what advantage was derived .from the use of complainant's method over what would have been derived by the use of SOme other available method. Mowry v. Whitney, 14 Wall. 651, and Black v. Thorne, 111U. S. 122, 4 Sup. Ct. Rep.326. In the case of Elizabeth v. Pavement 00., Justice BRADLEY remarked, as a reason for rejeoting the rule in Mowry v. Whitney, which had been invoked, that the case thenuuderconsideration was "not the case of a profit derived from the construction of an old pavement, together with the superadded profit derived from adding an improvement made thereto by Nicholson;" thereby clearly recognizing the rule of lti()UJry v. Whitney as applicable to a case like the one at bar; for, beyond all question, the defendant in this case has done'no more than to construct an old pavement with an added improvement suggested by Schillinger. He is chargeable, therefore, with profits only to the extent that he derived some speoial advantage from the nse.ofthe improved method over what would have been derived by adopting some other available method; and, in so ruling, and in rejecting complainant's claim to the business profit on all jobs in which an infringement was shown, the master committed no error. is whether the evidence before the The next question to be master showed that any such advantage or gain had been derived from the use of the complainant's invention, and whether the evidence furnished any data for an approximately correct estimate of such gain. This question is not embarrassed by any considera.tion of the question upon which party rested the burden of proof, for the master's ruling on that point has not been excepted to, and cannot be reviewed. It appears, from the evidence in the catle, that in making contracts for the laying of pavements the defendant was not required, or even asked, by his customers to lay them according to the Schillinger method, or even to divide a pavement into sections. He usually contracted to lay a concrete pavement of certa,in dimensionl;l, and made a practice of giving a guaranty to
his custorrters with reference to the quality and durability of the pavement to be laid; thereafter he selected such method of doing the work as he deemed advisable. It is manifest that the use oithe Schillinger invention by the defendant was not made necessary by a public demand for apavement laid accordillg to that patent. When defendant made use of the invention, it was his voluntary act, not enforced by any public demandj and, if he derived any special advantage therefrom, it is obvious from the testimony that that advantage consisted,not in securing more work or in lessening materially the cost of construction, but in being able to lay a more perfect and durable pavement than could be produced by other available methods, thereby avoiding the expense of making repairs,which might otherwise be required of him under the terms of his guaranty. It appears, from the evidence before the master,that the division of concrete pavements into sections, or blocks, not exceeding 10 or 12 feet square, adds greatly to the utility and wear of such pavements. So ell'" sential ill it 'now deemed ·tp make such divisions into blocks that pavements are 'rarely laid ina different manner. Schillinger's patent contemplated such division into !iElctions, and in that feature consisted iIi part, at least,the utility of the invention. It was shown, however, before the lnasterthat there were other feasible methods,' not covered by the Schillinger patent, by which a concrete pavement .could be laid in sections;· I shell only mention one of such other methods, which appears to·me, from the to have been well known at the time of the infringement, and' to have been open to use, by means of which a concrete pavement could have been as cheaply laid as by the Schillinger process. ' 1 refer to the method practiced by the defendant since the interlocutory in this case, of laying one block, and, after the concrete has 'partially set, removing the scantling that forms one side of the frame of the block, and laying the next block immediately against that, and soon Buecessively,withoutintroducing any. separating medium tween the blocks, as in the Schillinger process. This method of layi!ng a pavement is not an infringemetit 'of complainant's patent, and, according to the concurrent testimony of all the witMsses, the process last described separlltesthe pavement into blocks or sections. The testimony in the case conviIices me that pla.stic concrete laid against an adjoining block when it 'is only partially' set, and after the frame has been removed, does not 'unite with it so as to form practically one block. The weight of testimony is that the second 'one laid does not adhere to the first; that' blocks are divided, when fully set, b:r a sensiblespaC0, which is SUfficient, at least, to interrupt· the line of fracture, if either block is cracked .frOID , any cause. Schillinger himself concedes, in hie specifications, that ODe block laid in immediate contact with an adjoining block, which is partially set, will not adhere to it in consequence of shrinkage. ,Such being th'e state of the case, the ultimate question before the masterwaswhethei''thejoint formed by the Schillinger method;'-that is to say,. by'introducing some substance, like tar paper, or its' 'eqUivalent, between theblocks,-was better than a joint formed as last described,
.:: Tij;E HAVILAH.
without any separating mediunl, and'bya process which the defendant was free to adopt, and, since the decree, has adopted. It might be suggested that the Schillinger method forms a tightjoi11.t, and keeps out the while the other joint does not. Again, it mightbe suggested that the Schillinger method permits the blocks to move more freely, and that the separation is more perfect, and that less injury is liable to be done to the adjoining blocks by settlement, upheaval, or fracture of any of the blocks. These are possible advantages of the Schillinger method of forming a joint which may have induced the defendant to adopt that method ,in lieu of others that were open to him. I have carefully examined all the testimony, however, and I have failed to find anything to warrant me in saying that they are positive advantages by which the defendant rEl!llized a profit; much less have I been able to find any testimony to enable me to make a definite estin;late of the amount of such profit. The result is, in view of the foregoing considerations, that the exceptions to the report must be overruled, and the report confirmed. It is so ordered.
THE HAVILAH. PRATT 'V. THE HAVILAH.
(Dl8trict (Jourt, 8. D. New York. February 9,1888.)
CoLLISION - BRIG AND SCHOONER - SAILING FREE AND. CLOSE-HAULED ll'LICTJ1ilGEVIDENCE-LIGHTB-OREDIBILITY OF WITNESSES.
About dawn the schooner Helen Augusta was sailing fUll and by,.on a course about E. by N., with the wind about N. N. E. Tbe breeze was moderate, the. weather clear, and the schooner was making some four or five knots. She was run into and sunk by the brig Havilah, sailing free, on a course W. tN. OnContlicting evidence, Mld, that the schooner's green ligbt was at all times shown to the brig; that ,she made no material change of course that misled th'e brig, except a luff in extremilJ, not constituting a faUlt; and that, a8 the brig was 'sailing free. and tbe schooner close-hauled, it was the duty of the brig to keep out of the way; ·that the brig was negligent in not seasonably observing the lights of the schooner, in not keeping constant watch upon them. and not taking timely measures to avoid the schooner.
In Admiralty.' Libel for collision. Noah T.ebbits and Henry Arden, for libelant. Henry D. lJoteh1cWJ and R. D. Benedict, for claimants.
BROWN', J. At about da,wnin the morning of December 9, 1887, the libelant'!? t'WQ-masted sehooner Augusta came in collision with the brig Havilah in Long Island sound, probably some five miles or thereaboutsto the ..south-west of Faulkner's Island light. The brig's stem struck thesc1;looner a little forward of amid-ships, on the starboard side, '