40
FEDERAL REP()RT1i:R.
3 Ban. & A. 485. As a matter offact, in this view, it clearly enough appears that corsets of this design would be readily distinguishable by ordinary persons from those of any prior design. The patent appears, therefore, to be valid. Infringement is not disputed, and is clear; so clear that it shows the results of copying. The orators are, therefore, entitled to a decree. . .L.et a decree be entered that the patent is valid; that the defendants infringe; and for an injunction and an account according to the prayer of the bill, with costs.
WELLING '/).
LA BAU.
(Oircuit Oourt, 8. D. New York. February 25,1888.)
1.
PAT:\llNT8 l1'OR
Upon a reference in a suit for infrin!!;ement of reissued letters patent No. G,940. for an improvement in artifidalivory, consistingotshellac and talc in SUbstantially equal parts, it appeared that defendant used a composition of shellac. !lond "fiber white," claImed to be &: different substance from talc,and to have' b'een discovered since the issue of the patent. The master found that "fiber white" had all the physical and chemillal properties of talc, and was talc. Held, that as his report showed there was,· as to that fact. much conflicting testimony, his finding will not be set aside. Where plaintiff's invention relates to a new composition of matter, and ,the infringing article is made of the patented material, and this alone, the measure of the patentee's damages is the entire profit he would have made, to the extent of the sales bv defendant of the infringing article.
2.
SUIli:---!NFRINGEMENT-DAMAGES.
On Exceptions to Master's Report. On the 30th of June, 1882, the complainant, William M. Wellin.g, obtained. a decree sustaining reissued letters patent No. 5,940, dated June 30, 1874, for an improvement in artificial ivory. See 12 Fed. Rep. 875. The defendant, John H. La Bau, hiving made and sold certain articles containing the patented composition, viz., shellac and talc, in substantially equal parts, was adjudged an infringer, and a mastenvas appointed to take the account. After a long and vigorously contested controversy; during the ptogress of which the court was several times appealed to, (see 32 Fed; Rep. 293,) the master, on the 24th of December, 1886, presented a report, in which he assessed the complainant's damages at $3,634.94. After the date of the original patent, and, probably I about the yeari872, in the extreme southeastern portion of St. Lawrence county j New York, a mineral was discovered which was placed upon thetnarket and known commercially as "tiber white." Large quantities of this mineral were used by the defendant. The question of fact over which the main contest arose was whether "fiber white" was or was hot talc. The master found that it had all the physical and chemical properties oftalc, and was taM., He further found as follows: That the white checkS sold by the defendant contained shellac and talc, in sUbstan-
WELLING V. LA BAU.
41
tially equal proportions; that from March 1, 1876, to May 1,1879, the complainant had no competitor in the manufacture and sale of these checks other than the defendant; that, during this period, the defendant sold large quantities of infringing checks, which, in very much the larger part, were sold to parties who were or had been regular customers of the complainant; that the complainant was at all times ready and able to supply the market, and if the defendant had not interfered he would have sold, in addition to his regular sales, at least the number of checks sold by the defendant. Although the defendant's infringement continued, in connection with others, after May 1, 1879, the master limited the recovery to damages sustained prior to that date, the measure being the loss of profits which the complainant would have made had he sold the checks sold by the defendant at the defendant's prices. On the 28th of December, 1886, the defendant filed, exceptions, disputing the accuracy of the report in 12 particulars, the principal grounds being the aUeged errors of the master in finding-First, that "fiber white" was talc; second, that the infringing checks contained shellac and talc, in equal parts; third, that the defendant was a competitOr, ahd the 'only' competitor, of the complainant; and, fourth, that the complaihantwas ready and able to supply the market. Other exceptions allege error in the COlllpl1tatioij and dispute the master's conclusions o.flaw. Frederick H. Betts, for complail'lant. Lucien Birdseye and Jarnea O.,Oloyd, for defendant. COXE, J., (after as above.) The master has decided riQ question offact which was notJhe subject of protracted and contention. Testimony was by both parties. Experts were called, and the disagreement between them was radical and irreconcilable. Every forward step made by the complainant .was vigorouslyresistedbythe -defendant. Between them the master Was compelled to decide. I t is wise not to lose. Sight of the fact that the court is not to termine these facts de novo.1f the report has been fairly and rendered, without undue influence or manifest error, it :;;hould be per; mitted to stand. It is a matter of no moment that a different result might have been reached had the accounting been taken by the court. If the record shows that there was testimony pro and con, so that intelligent minds might differ upon the questions presented, the court will not assume to substitute its judgment for that of the master. His decision upon disputed facts should be final. A master stands as the representa.l. tive of the court. ·He is selected wfth special reference to his fitness ,and experience. In seeing and hearing the witnesses he possesses advan., tages in determining questions of fact which a reviewing tribunal can never have. A master's report is not to be lightly btushed aside. It is entitled to respect. . The proceedings before him have almost the solemnity as a trial before a referee ora jury, and the familiar rule which precludes the court from setting aside a verdict which is not against the .weight of evidence, is, to a great extent, applicable.' ,Bates v. St. Johnsbury, 32 Fed.. Rep. 628; WeUing v. La Bau, 32 Rep. 293; Metsker
42
FEDERAL REPORTER.
v. Bonebrake, 108 U. S. 66, 2 Sup. Ct. Rep. 351;:;Woosler v. Thornton, 26 Fed. Rep. 274; Bridgea v. Sheldon, 7 Fed. Rep. 17; Greene v. Bislwp, 1 Cliff. 186; Donnel;f,v. Insurance CO.', 2 Sum. 366; A1ason v. Crosby, 3 Woodb. & M. 268. ' The principal contention arises over the finding of the master that the "fiber white" used by the defendant was talc. The complainant c.annot succeed upon the theory that "fiber white" was 'an equivalent for talc, for it was not known at the date of the patent. If,hdwever, it was talc in fact, the principal obstacle in the complainant's path is swept away. Recognizing its importance the Complainant has bent every energy to establish the affirmative, and the defendant the negati.ve, of this proposition.As this is largely a scientific question, the situation may be well illustrated by placing in juxtaposition an epitome of the views of the tlxpertwitnesses, each being to some' extent corroborated, and to some extent contradicted,: by other testimony, and by c(}llateral facts and circumstances. Prol,.
article known as" fibenvhite." It is possible to that "tiber talc: t'4thow "fiber White" to be talc white" is talc; because it does not by looking at it. It bas the structute correspond with' one of the thirtyof talc; it has the fracture of talc; it, six analyses of talc shown in Dana's has the lustre of talc,;: it ,or, :with any recognized tuous feel of talc,-and no other min- 'specimen of talc. It contains more all vroperties at lime, more manganese tb«:" ilailie tiflle. .TakeI( together they than any of them.. "FiOer white" is constitute the'mineralogical identity l1brous. 'falo is not fibr6us': "Fiber of'tille':' "':I?here ,is no other mineral white," when 'considered' from a with which you ,would be liable to con- strictly mineralogical view, or chemfo:und.it· .'{:Jecom:J,ly.:l have exam-, 'ically,or from a ,microscopic or olher ,in.,ad th,\'l.J>HI",V,P, m,i,ner,al under the : personal eX\tUli,n,ation, cann()tpossibly SAd, powder has the be tal9. r am confirmed in my opintll-lc. Thirdly. 4,nal- iO!l,that "fiber white" ig not talc by ysis ilMws itto,be talc. lam satis-' my recent investigations, and by my fied,therefore,: that,this '1ninarill is 'failure to find' any samples- of fibrous talc" as 'it possesses' aU the, ,physical talc by the, most diligent search and ,pJ:()pertiesof talll.:. ,'" inquiry.
lam familiar withtli.6 commercial
Dr. the difendant. It is, utterly unreaSonable, if not 1m-
, It the decide between. these, two opinions. He diddeqipe was talc, anq.: had so decided when this courH Wljiling v. La Ba'iJ{, B'UlPra) said: · , "If tlie' has fouild' t,hatJo'fiber white'is talc, although not dealt; in commercially 'by 'that name(lie lIM' determined a disputed question ,offaet upon which the ,evidence..is'v:ery conflicting. * * * The report oia maeter .wiUn9t. be, set aside, ,fact upon which the evidenqe is doub.tf,ul,91' t,he where his conclusions are cdntUctiqg involv.e. to a or less degree, the ctedibt,lit,Y '6fthe witnesses;" .. < ,
of
If.the,finding of the master upon this question were against the evidenCe, sHould not hesitate tQ set it aside; but it is thought,
after a careful consideration of the testimony,that it is not against the evidence, and should be 'undisturbed. exceptions, which The foregoing views dispose of nearly all the are based upon alleged errors of the master in deciding disputed questions of fact. If "fiber white" was talc, the proof is sufficiently clear that the defendant's white checks contained shellac and talc, in substantially equal parts. The evidence adduced to establish the identity of the checks analyzed by Prof. Chandler with those manufactured by the defendant was sufficient to sustain the master's action in that regard, and the same is true of the testimony upon the question of competition and the ability of the complainant to supply the market. It is thought that the rule enunciated in the carpet design cases (Dobson v. Dornan, 118 U. S. 10,6 Sup. Ct. Rep. 946; Dobson v. Carpet 00., 114 U. S. 439, 5 Sup. Ct. Rep. 945) has little application to the case at par. Those decisions proceeded upon the theory that, as there was no evidence to establish the value imparted to the carpet by the design, it was, error to attribute to the patent tpeentire profit upon the of the carpetS. When, however, the invention relates to a new composition of matter, and the infringing article is made ofthe patented material, and this alone, the measure ofthe patentee's damages may be the entire profit which he would have made. ,There is no room fQr segregation. It is not at all like a patentedimprov,ement upon an existing machine, for there it is entirely clear that evidence must be given to show what portion of the profits is due to the patented feature. Where the patent covers the infringing article in its entirety, no such evidence can be given. There can be notbiug in the proposition that becausE;3 the defendant's checks wereof a lower grade than the the master's computation among 'others, that they were so nearly alike is erroneous, for the in appearance as to deceive buyers not only,but experts in the trJtde. Theevidence has been examined withcal'e, error which wouhl warrant the court in refusingto confirm the report has been discovered. In many respects tho reportjs a most conservi1tive one. The exceptions overruled, and the reporli of the master is confirmed.
THOMPSON'
et al.
'D. GILDERSLEEVE.
(Oz'rcuit Oourt, S.D. New York. February il'l', 1888.) L PATENTS FOR INVENTIOIrS-INF.RtNGltMENT-MACHINES FOR FORMING STAPLESEAMS IN' UuTHEa.
.
The tliirdclaim of letters .. 136.840, .issued FelJruary 25,1878. to Samuel W. Shorey, foran inmachines for forming staple-seams in leather. which consists ofan inclined and retrea!ing 'b'ar or anvil' in combination w·ith a.bender;foot and a driving-bar, the' improvement. being that o! the anvil. retreating under :wire staple. it as It IS drIven Ipto and so.obvlates th.e necessIty (jf bc;>ring holes for It in advance. ISlDfrlD&"ed by a deVICe for staphngtog' of books all;d' pam.phlets, in :whICh the staple, while being driven <in, is