676
FEDERAL
machine referred to in the first claim, and, as the defendants have used such a machine, they have infringed the third claim, andwe do not at present see how it could be infringed otherwise than by infringing the first claim.
'BLAKE
v.
GREENWOOD CEMETERY.-
(Circuit Oourt,IJJ. D. New YO'l'k.
February 12, 1883.)
I. PATENTS FOR INVENTIONS-AcTION FOR INFRINGEMENT-NOMIINAL DAMAGES.
The recovery of nominal damages in an action for infringement of a patent, and the tender of such sum by the maker of the machine so infringing, do not operate as a license to the maker or his vendees as to existing infringing machines so made, nor as a bar to a recovery in another action against a subsequent user of the same machine. 2. SAME-EFFECT OF STIPULATION IN FORMER SUIT AS TO DAMAGES.
In· the former action against the maker of the infringing machine, there was a stipulation" that the amount of recovery to be adjudged against the defendants in case of a decree for shall be fixed and determined upon the evidence in the case sUbmitted at final hearing, and both parties request the court, in case of a decisionagainst the defendant, to fix, as the amount of recovery, such amount of damages alii is proved by such testimony." Held, that the cqurt, by giving nominal damages in, the absence of proof. did not thereb.y adjudge in that case that one dollar was the value of the invention. . 3. SAME-MEASURE OF DAMAGES.
The amount of damages to be recovered against .the user of the infringing machine was the profit which the plaintiff.ordinarily received on the sale of a machine of the same size, using the patent so infrin:ged; and where the profit to the defendant, arising ont of the use of the infringing machine, could not be determined by the proofs, the plaintiff was not allowed to recover such profits as damages.
In Equity. II. T. Blake, for complam'am. '. Benj. E. Valentine, for defendant. BENEDICT, J. This action is brought to recover for the use by the defendant of :1 stone-crushing of the kind known as Smith's hydraulic crusher, alleged to be an infringement of a patent owned by the plaintiff for an invention employed in a stone-crushing mao chine known as the Blake crusher. The machine used by the defendant is one of four machines that formed the subject of an action instituted in the year 1873 in this court by this plaintiff against John Robertson and others, tpe makers of the machines. In that tlReported by R D. & Wyllys Benedict.
BLAKE V. GREENWOOD OEMETERY.
e/i?
action it was adjudged that the machine in question infringed upon the plaintiff'8 patent sued on here, and a decree was entered against the makers of the machine for an injunction, and one dollar as nominal damages. Subsequently the defendant in that actiont.endered to the plaintiff the one dollar, with the amount of the taxed costs of that action, which the plaintiff declined to accept. In this action the validity of the plaintiff's patent is not disputed, nor is it denied that· the machine used by the 'defendant infringes upon that patent. But it is contended by the defendant that the covery by the plaintiff of the sum of one dollar in the former suit, and the tender of that sum to him by the maker of the machine, is a' bar to any recovery in this action against the user of the machine. To sustain this plea would be to hold that a decree for nominal damages recovered by a patentee againbt the manufacturer of fringing machines operates as a iicense to the manufacturer,and also to his vendees, as to all existing infringing machines made by such manufacturer. The law is not so understood. The infringement by the manufacturer and the infringement by the user of an infringing machine are separate trespasses, and judgment of one is no bar to an action for the other. To create a bar there must be satisfaction, and nominal damage is not satisfaction. . It is, however, further contended that the present case is taken out of the ordinary rule b.y reason of the fact that in the action referred o against the manufacturer there was a stipulation as follows: "That the amount of recovery to be adjudged against the defendant, in case upon the of a decree for complainant, shall be fixed and evidence in the case submitted at final hearing, andhothparties quest the court, in case of a decision against the defendant, to ftx as the amount of recovery such amount of damages as is proved by such testimony i" and it is said the plaintUI, in consideration ofa concession on the part of the manufacturer, agreed by this' stipulation that the amount of the damages for the use of this machine should be such amount as the evidence in the case at final hearing proved; in other words, agreed to accept one dollar as the damages for the manufacfure, sale, and use of the machine in question. And one dollar having been tendered, there was, it is said, satisfaction of the damages and a resulting license to use the machine. But it is not seen how such an effect 'can be given to the stipulation in the former case. In that case the manufacturer, for reasons of his own, did not prove the amount of damages resulting to him from the use of his invention, and the court, being in duty bound, aside from the stipUlation, to fix
678
REPORTER.
as the amount pf recovery. sucb amo¥nt of damages as the testimony proved, in the absence of proof gavenominal damages. But the court did not thereby adjudge that one dollar was the value of the plaintiff's invention. The plea must, therefore, be overruled· .. The question then arises as to the amount of the plaintiff's recovery upon the testimony in this case. In the former action against the .manufacturer of this machine the plaintiff claimed to recover the BUm of $600, as being thlil sum which he would have realized from his inve;ntion upon -a sale by him of a Blake machine of this size. This ciaimwas rejected by the supreme court upon the ground that other patents than the one sued on were employed in the Blake crushers sold by the plaintiff, and it had not been shown how much of the $600 was due to theae other inventions, nor how much of it was mll>nufactunir's profit. The inference from this decision is that the $600 would have been allowed if. the testimony had shown that the $600 did not include the use of any other invention than that described in the patent sued on, nor any profit for the manufacture and sale of the machine. In this case it is proved that there existed a corporation known as the Blake Crusher Company, which caused Blake's crushing machines, under Blake's patent, to be constructed for them. by other parties and then soJd them; and that for every machine sold by the Blake Crusher Company to be used in New York, that corporation paid to the plaintiff the difference between the cost to them of manufacturing and selling the machine and the amount realized from the sale, and that upon a machine of this size such difference would be as much as $600. Under this arrangement with the plaintiff, the profit of mltnufacturing the machines was paid by the Blake Crusher Company to the persons employed by them to do the manufacturing, and was deducted from the proceeds of their sale, as was also the expense of the sale. The difference the plaintiff received, and is the sum he would have realized from his invention if the defendants had bought of the Blake Crusher Company a Blake crusher, instead of procuring a Smith crusher, as they did. That the defendants would have bought a Blake crusher if they had not made the arrangement with the maker of the Smith crusher may, I think, be fairly inferred from the testimony; and if so, the plaintiff's right to recover $600 for his damages, by reason of the use of the infringing machine, is made out. . But the plaintiff, in addition to this $600, claims to recover a large sum as being the profits realized by the defendant from the use of the plaintiff's invention.
3LAKE V. GREENWOOD CEMETERY.
679
'The ground of this contention is an assumpti9,I! that the statute the profits real· (Rev. St. § 4921) permits a double recovery; ized by the patentee from the employment of his in,vention in con· structing machines made and sold, by him, and in addition the profits realized by the infrlnger from the use of the invention in infringing machine. But if such be the effect of the statute, as to which no opinion need here, be expressed, (see Bloomer v.' MUlinger, 1 Wall. 350iSpaulding v. Page, 1 Sawy. 702; Knox v. Great Western Quicksilver Minirig Co. 3 Sawy. 422,) still, the plaintiff ,cannot recover profits in this case, for the amount of the profit has not ,the court to lh. tl pon been shown. The, testimony' does ':not, any sum as the amount of profit derived from the use of the invention described in the patent sued on. It is, not .enough to show that the defendants derived an advantage frolllcrushing their stone by means of a. machine in which the 'plairitiff's device, was employed, instead of breaking their stone by hind: The go' further, and show the worth of the advantage secured by the use of this particular device. The proofs here ahow the difference. between the 'expense of crushing a quantity of stone crushed by using a machine worked by steam, and employing the' device in 'question with others, and the expense of, breaking the sattle quantity of stone by hand, and at the same time show that there were Rawson crushers open to public use, available to the defendant and adapted to do'the same work, and probably able to do the work as well as it was done by thettlachine used. From such testimony the amot'mt of the 'profits realized by using the plaintiff's invention cannot be 'determined: ' The 'amount of the plaintiff's decree is, therefore, to be limited to $600 and the costs of this action. In making this disposition of the case I ha.ve paid no attention to the particular exception taken to the master's report, because of the stipulation of the parties that the caSe be disposed of by the court, upon the proofs taken by the master, as be if such testimony· had been taken before the court. Let a entered for $600 damages and thE! costs.
680 WOOSTER
FEDERAL RErORTER.
SIMONSON
and another. June 6, 1883.) 1.1.
(Circuit OOUT!, 1. CENSE l!'EE.
s. D. New
PATENT LAW-INFRINGEMENT-MEASURE OF DAMAGES--RULE ALLOWING
Following the general r\\1e in giving damages for the infringement of a pat. ent, to allow the amount accustomed to be charged by the patentee as a license, such established license is, nevertheless, not the correct measure of damages in a case where only one of several claims of a patent was appropriated by thc infringer. 2. SAME.
The rule cannot be applied without qualification, and wbere than tht· whole invention has been infringed, evidencc must be given to shvw tAt; nature of the part appropriated.
Exceptions to Report"of Master. Betts, Atterbury <f; Betts, for complainant. Wetmore, Jenner J: Thompson, for defendants. WALJ.,ACE, J. The master has reported as damages the snm com· plainant has been accustomed to charge as a license fee for· the use of his invention, while the proofs show that only one claim, the second, of the six claims of the patent has been infringed by defendant. Although several of the six claims may be for substantially the same invention, others are for different combinations. It must be held that the established license fee for the use of the entire invention secured by the six claims of the patent is not the correct measure of damages where the defendant has not infringed all the claims. The proofs show what damages the complainant would have sustained if the defendant, instead of apart of the invention, had appropriated the whole of it. When damages are sought by a patentee against an infringer, his inquiry, as in all other cases where a plaintiff's right of property has been invaded, is what is the value of the right, and the extent of the injury. If the injury amounts to a deprivation or appropriation of the entire right of property in a patent, the value of the patent is the measure of damages. An established license fee is competent and satisfactory evidence of the value of a patent-right, because the price which it commands between those who sell and purchase it is the best criterion of value. When a patentee uses his monopoly by selling to others the privilege of using it, the law deems him completely indemnified if an infringer is required to pay him the sum which he has himself fixed as the value of the privilege.
