WILLETS MANUF'G CO.
(,O';rcuit Oourt, 8. D. HelD
March 26, t888.)
In an action for an Infringement of a patent on a peculiar square-shaped dish, the measure of damages is not the 'gains derived by defendant from theuse, manufacture. and sale of the infringing dishes, but is only the differencebetween the protitsfairly attributable to plaintiff's design which defendant would have derived from the adoption of plaintiff's peculiar variety of squareshaped dish,and those which he would have derived from the sale of other non-infringing square shaped dishes.
, In Equity. On exceptions to master's report. Bill by A. S. Tomkinson against the Willets Manufacturing Company, for the infringement of a patent. Judgment for plaintiff, and the case n.ow comes up on defendant's exception to master's report assessing the amount,of damages. Frank v. Briesen, (or complainant, cited: Dobson v. Oa1'Pet Co., 114U. S. 440, 5Sup. Ct. Rep. 945; Dobson v. Dorman, 118 U. S. 10,(j Sup. Ct. Rep. 946; Bates v. Railroad Co., 32 Fed. Rep. 628; Hammar;he1·v.Witson, Id.1!:J6; Pipel' v. Brown, 3 O. G. 97; Woosterv. Thornton, 26 Fed. '274; Munson v.New Y01'k, 21 Blatchf. 342,16 Fed. Rep. 560; Nicholson v. Elizabeth, 6 O.G: 764; Emm'son v. Simm, 3 O. G. 293; Illinois v. TU1'rill, 12 O. G.709; Know v.' Silver, 14 O. G. 897; Mevs v. Conover, 11 O. G. 1111; Go. v. Van Antwelp, 2 Ban. & A. 252; Allen v. lJlunt, 1 BJatchf.486. Philo Chase, for defendant,cited: Dobson v. Ca1pet Co .· 114 U. S. 439,5 Sup. Ct. Rep. 945; Dobsonv. Dorman, 118 U. 8.J0, 6 Sup. Ct" Rl'p. 946; SChillingm' v. G1J,nther, 15 Blatchf. 310; Ga1'1'etson v. Cla1'k" Id. 70; Scott v. Evans, 11 Fed. Rep. 726; Root v. Lamb, 7 Fed. Rep. 222. ,
LACOMBE, J. This is suit in equity for infringement, founded upon, design patent No. 13,295, granted to John Slater, assignor to & Walker, September 12, 1882, for a design for a vegetable dish. Upon final hearing before Judge qOXE, it appeared that in a precisely similarsuit in the district of New Jersey between the same parties for infringement of this. patent, the defendant appeared by its president, and conto a decree; whereupon, before the commencement of the present suit, judgment was entered,. sustaining the patent. Passing upon the effect of such adjudication, Judge COXE says: '''fhat decree waspleadec;l a,nd proved in this action. It is valid and binding upon the rights of the parties, and as to all the questions determined by it is re.Yjudicata. Unfortunately, perhaps; for the dcfendllllt, the court is not now permitted to'considl'r the defenses, which, by the defenl1ant's own action, are thns eliminated from the case. The qrfeRtion of infrillgement is alone 0pl'n to investigation. * * * I am constrained to say that the defendant infringes." Tomkinson v.Manufacturi1l,U,Co., 23 Fed. Rep. 895·. It was referred to a master to take account of the gains and profits, and assess the damages. The master has duly reported that the con:i--
TOMKINSON V. W·ILLETS MANUF'a CO.
plainant is entitled to recover "the gains and advantages derived by the defendant from the use, manufacture, and sale of the infringing dishes. in the sum of $1,853.29." The case now comes up on defendant's exceptions to the master's report. The rl:3port must be set aside. Even if a method of comparison such as was adopted by the master were conceded to be the proper way in which to accomplish t.he result sought for,-and that question is not now passed upon,-he has not selected a suitable standard of comparison. In order to ascertain the profit derived from the use of complainant's model, comparison should be made, not with goods of an entirely different model, but with goods of the most similar pattern, which defendant was free to use. What makes, or, rather, what is supposed to make, the design patentable? The circumstance that it is an improvement upon the existing state of the art. The patent covers only the particular advance which the patent has made; it gives the patentee no rights in what was common property before. It appears that complainant's patent is for a particular model of square-shaped dish,-for the shape only, not for the decoration. Defendant sold a number of infringing square-Shaped ,dishes, called "Doric." !talso sold dishes of a totally differentshape,.an "Excelsior." It further appeared that defendant was free to use other square-shaped dishes, and did in fact make a noninfringing square-shaped dish, called the "Piedmont." The entire profit ,on the "Doric" dishes over cost of manufacture could no doubt be found, but to that entire sum the plaintiff is not entitled. Dobson v. Carpet Co., 114 U. S. 440, 5 Sup. Ct. Rep. 945. All he should recover is the amount of such profit, which is fairly attributable to his design. Nor is that amount ascertained even by finding what profit the defendant secured by making and selling the infringing square dishes, instead of oval ones. The amount of that profit must be itself subdivided into the sums due respectively to the adoption of a square-shaped dish generally, and to the appropriation of plaintiff's particular variety of square-shaped To the latter sum he is entitled, but its amount is certainly not ascertained by comparing the sales and cost of the infringingdishes with the sales and cost of the oval dishes. Non cO'listat but what defendant would have secured 90 per cent. of its "extra profits," as complainant ,calls them, by sales of such square dishes as it was free to use. If so, the plaintiff would be entitled only to the remaining 10 per cent. as profits resulting frompira-ting his peculiar square dish. It may be that complainant may find it difficult, if not impossible, tp prove the amount of such profit, but that is a difficulty inherent in the particular kind of patent which he holds. One who by some lucky chance secures a patent for "the mere shadow of a shade of an idea" should not be disappointed if the grant, even though uncontested, subsequently proves of no ,appreciable pecuniary value.
FEDERAt. 'BEl'ORTEn. SEIBERT CYLINDER OIL-CUP CO. v. MANNING et ale
(Oircuit Oourt, 8. D. New York. March 26.
In an action for the infringement of a patent it appeared that the defend-· ants' licensors, who owned II. similar patent to thll one in dispute, had into a contract with plaintiff wherein It was agreed that so long as plaintiff shoqlq perform certain, cOvenants and said licensors should make certain payments to plaintiff, neitner partjr was to sue the other on their respective' patents. Held, that performan'ce:of, plaintiff's covenants was a condition pre' cedent to the payments, and the. plaintiff, after having broken the contract, could ,not claim the failure 'to make the payments as.an abandonment of the' contract, so as to authorize a suit on its patent.
FOR'(TSE-BREACH OF COVENANT!!.
In Equity. Hearing upon the sUffioiency of the' plea. Action by the-Seibert Cylinder Oil-Oup Company a.gainst Henry S. Manning et ale For former hearing see 32 Fed. Rep. ThornlUJ Wm. Olarlce and Edmundi' Wetmore, for complainant. O. A. Kentand Franci8Forbes, for defendants . . LACOMBE; J. The sole point arising upon this bearing is as to the' of the plea, lind lies witolna narrow compass. Concededly, the owns a patent, which is infringed by certain articles made by thl;l Lubricator Compaily, and sold by the defendant. The hesides 'other and ordinary averments showing anC!., of infringement, sets ,lout, in anticipation of the defense, that- ..... , '" " , sell by the Detroit LUbricator Company; which sale constitutes thp,'iilfringenient herein complained of; and the said defendants pretend that theYhavl:l a right to sell the same without suit by. or 'other molestation from. the 'complainant,lbecause on or about the 1st day of December, 1l:583, this complainant and said Detroit Lubricator Company made an agreement in writing whereby, among other things. it was covenanted that, , so long as thecovanants and agreem,ents to be observed and performed by the parties respectively are observed and performed, each party agret:s not to sua., or directly or indirectly authorize to be sued. the other party, its agents or vendees, under any of the letters patent now or hereafter owned by it.' And th!! said defendants pretend that agreelDent is still in force; but these complainants aver that said agreement has long since, and prior to the commencemllntof this suih and prior to the acts of infringement herein complaLnedof, rescinded,,,nd that said rescission w/loScaUsed by the wrongful acts and default of' the said Detroit Lubricator Company, because said company wa.Bol'lliged by toe terms of said agreement to rna.kecertain returns, and pay certain royalties to the complainant herein monthly, W hic1l the said Detroit Lubricator Company to for such neglect and refusal. and, because ,of the repudil\tion by the said, Detroit Lubricator Company of the covenants and agreements by it to be performed under said contract, the complainant herein elected to rescind tl16 r,@:ne;and the same was rescinded by the acts and defaults of the said Detroit Lubricator Company, and the act of the complainant. 'fhat at the time when the lubricators referred to herein, and containing the invention set forth and described in the said letters patent hereinbefore mentioned, were sold, and the acts herein