Tilghman v. Proctor
125 U.S. 136 (1888)

Annotate this Case

U.S. Supreme Court

Tilghman v. Proctor, 125 U.S. 136 (1888)

Tilghman v. Proctor

Nos. 537, 548

Argued November, 3-5, 1886

Decided March 19, 1888

125 U.S. 136

APPEALS FROM THE CIRCUIT COURT OF THE UNITED

STATES FOR THE SOUTHERN DISTRICT OF OHIO

Syllabus

One having an interest in all fees and other sums to be recovered under a patent, but not shown to have any interest, legal or equitable, in the patent itself, need not be made a party to a bill in equity for its infringement.

Upon a bill in equity by the owner against infringers of a patent, the plaintiff, although he has established license fees, is not limited to the amount of such fees, as damages, but may, instead of damages, recover the amount of gains and profits that the defendants have made by the use of his invention, over what they would have had in using other means then open to the public and adequate to enable them to obtain an equally beneficial result.

Upon a bill in equity for infringing a patent, if the defendants have gained an advantage by using the plaintiff's invention, that advantage is the measure of the profits to be accounted for, even if from other causes the business in which the invention was employed by the defendants did not result in profits, and if the use of a patented process produced a definite saving in the cost of manufacture, they must account to the patentee for the amount so saved.

The liability of infringers of a patent to account to the patentee for all the profits, gains, and savings which they have made by the use of his invention during the whole period of their infringement, is not affected by the fact that in the midst of that period, an erroneous decision was made in favor of a distinct infringer in no way connected with these defendants.

The conclusions of a master in chancery, depending upon the weighing of

Page 125 U. S. 137

conflicting testimony, have every reasonable presumption in their favor, and are not to be set aside unless there clearly appears to have been error or mistake on his part.

In determining the amount of gains and profits derived by infringers of a patent from the use of the invention over what they would have made in using an old process open to the public, the expense of using the new process is to be ascertained by the manner in which they have conducted their business, and not by the manner in which they might have conducted it; but the cost at which they used the old process is not conclusive against them if other manufacturers used that process at less cost.

As a general rule, in taking an account of profits against an infringer of a patent, interest is not to he allowed before the date of the submission of the master's report, but only after that date and upon the amount shown to be due by his report and the accompanying evidence.

The other questions decided were questions of fact.

In equity. These were cross-appeals from the decree entered (on the report of a master) in the execution of the mandate of this Court in the cause reported in 102 U. S. 102 U.S. 707. The case is stated in the opinion of the Court.

MR. JUSTICE GRAY delivered the opinion of the Court.

This was a bill in equity, filed June 26, 1874, by Richard A. Tilghman against William Proctor and four others, co-partners under the name of Proctor & Gamble, praying for an injunction, for an account of profits, and for damages, for the infringement of letters patent, originally granted to Tilghman for 14 years from January 9, 1854, and afterwards extended to January 9, 1875, for the process of manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure.

"The infringement complained of in this suit was from May 1, 1870, to January 8, 1875. Similar suits by this plaintiff against other defendants had been maintained by the Circuit Courts for the Southern Districts of Ohio and of New York

Page 125 U. S. 138

in 1862 and 1864 respectively. Tilghman v. Werk, 2 Fisher Pat.Cas. 229; Tilghman v. Mitchell, Fisher Pat.Cas. 518. In the suit in New York, a final decree for an account of profits was entered by the circuit court on September 1, 1871. Tilghman v. Mitchell, 9 Blatchford 1, 18, 4 Fisher Pat.Cas. 599, 615. On March 2, 1874, that decree was reversed in this Court by the opinion of four justices against three, two judges not sitting, upon the hypothesis that Tilghman's patent was limited to the apparatus therein described, and that the use of an apparatus similar to that used by the present defendants was not an infringement. Mitchell v. Tilghman, 19 Wall. 287, 86 U. S. 419, iii."

In the case at bar the circuit court, on December 2, 1874, following the decision of this Court in Mitchell v. Tilghman, made a decree dismissing the bill. But on appeal from that decree, this Court at October term, 1880, by a unanimous opinion, overruled its decision in Mitchell v. Tilghman and adjudged that Tilghman's patent was a valid one for a process, and not merely for the particular apparatus described in the specification; that that apparatus could be operated to produce a beneficial result; that the defendants had infringed the plaintiff's patent, and therefore that the decree of the circuit court be reversed and the case remanded, with directions to enter a decree for the plaintiff in conformity with that opinion. Tilghman v. Proctor,102 U. S. 707. There is nothing in the record before us to induce any change or modification of the conclusions then announced.

By making a few extracts from that opinion, the questions now before us will be the better understood:

"The patent in question relates to the treatment of fats and oils, and is for a process of separating their component parts so as to render them better adapted to the uses of the arts. It was discovered by Chevreul, an eminent French chemist, as early as 1813 that ordinary fat, tallow, and oil are regular chemical compounds consisting of a base which has been termed glycerine, and of different acids, termed generally fat acids, but specifically stearic, margaric, and oleic acids. These acids, in combination severally with glycerine, form stearine,

Page 125 U. S. 139

margarine and oleine. They are found in different proportions in the various neutral fats and oils, stearine predominating in some, margarine in others, and oleine in others. When separated from their base (glycerine), they take up an equivalent of water, and are called free fat acids. In this state they are in a condition for being utilized in the arts. The stearic and margaric acids form a whitish, semi-transparent, hard substance, resembling spermaceti, which is manufactured into candles. They are separated from the oleic acid, which is a thin oily fluid, by hydrostatic or other powerful pressure,. the oleine being used for manufacturing soap, and other purposes. The base, glycerine, when purified, has come to be quite a desirable article for many uses."

102 U.S. 102 U. S. 708-709.

The substance of Tilghman's discovery and invention was thus summed up by the court:

"That the fat acids can be separated from glycerine, without injury to the latter, by the single and simple process of subjecting the neutral fat, while in intimate mixture with water, to a high degree of heat under sufficient pressure to prevent the water from being converted into steam, without the employment of any alkali or sulphuric acid or other saponifying agent, the operation, even with the most solid fats, being capable of completion in a very few minutes when the heat applied is equal to that of melting lead, or 612

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