Claim 1 of reissued letters patent No. 4696, granted to James
Sargent, January 2, 1872, for an "improvement in locks," on an
application filed September 25, 1871, the original patent, No.
57,574, having been granted to him August 28, 1S66, namely,
"1. In a combination lock for safe or vault doors, a bolt I
which turns on a pivot or bearing when said bolt
I is used
in a lock having no ordinary sliding lock bolt, and in connection
with the separate bolt work of the door, and so arranged as to
receive the pressure of the said bolt work without transmitting it
to the wheels or other equivalent works of the lock,"
is not invalid, as being an unlawful expansion of claim 1 of the
original patent, namely,
"1. The rotating tumbler
I, when separated and isolated
in action from the permutation wheels, and so arranged that any
inward pressure upon the bolt will be exerted upon the bearing
of
Page 117 U. S. 537
said tumbler, and have no action nor effect upon the said
permutation wheels, substantially as and for the purpose herein
specified."
The invention covered by claim 1 of the reissue defined, and
certain prior structures held not to have anticipated it.
The defendant's lock
held to be an infringement of that
claim.
The plaintiff granted no licenses under his patent, but sold
locks made by himself containing the invention. The defendant sold
infringing locks at less prices than the plaintiff, and compelled
the plaintiff to lower his prices. As the turning bolt was an
essential feature in each of the two locks, and the plaintiff could
not sell his patented device unless in a lock, and thus made a
profit on the entire lock, and was deprived of that profit by such
enforced reduction of prices,
held that the infringement
caused the entire loss of the plaintiff, after allowing a proper
sum for any other patented device contained in the defendant's lock
and for any other causes which gave to the defendant an advantage
in selling his lock.
Such loss on the locks sold by the plaintiff, by the reduction
of price, was allowed to the plaintiff as damages in a suit in
equity for infringement, although the defendant made no profit.
The plaintiff, as legal owner of the patent, was entitled to
recover the damages although he had a partner in making and selling
the locks.
As the bill alleged infringement of the reissue generally, and
the answer set up that the reissue was not for the same invention
as the original patent, and one of the claims of the reissue not
disclaimed before this suit was brought was invalid, as an unlawful
expansion of the original patent, although the claim on which a
recovery was allowed was good, this Court, the patent having
expired, but there having been no unreasonable delay in filing a
disclaimer to the invalid claim, reversed so much of the decree
below as awarded costs to the plaintiff, and affirmed it in all
other respects, each party to bear his own costs in this Court and
one-half of the expense of printing the record.
This was a suit in equity to recover for infringement of a
patent. The case in stated in the opinion of the Court.
BLATCHFORD delivered the opinion of the Court
This is a suit in equity, brought in the Circuit Court of the
United States for the Southern District of New York, by James
Sargent against the Yale Lock Manufacturing Company, to recover for
the infringement of reissued letters patent No.
Page 117 U. S. 538
4,696, granted to Sargent, January 2, 1872, for an "improvement
in locks," on an application therefor filed September 25, 1871 (the
original patent, No. 57,574, having been granted to him August 28,
1866).
The specification and drawings of the reissue are as
follows:
"My invention consists in combining with the ordinary
combination wheels, and the other working parts of a combination
lock which has no sliding bolt lock, a bolt turning on a pivot or
bearing, which is so isolated or removed from contact with the said
wheels as to receive any pressure or strain which may be applied
through the separate bolt work of the safe or vault door, and cut
off the communication between the bolt work of the door and the
wheels or fence lever of the lock, whereby the position of the
slots in the wheels can be determined and the lock 'picked,' as can
be done in most cases where the ordinary sliding bolt is used
without some mechanical device to prevent."
"In the drawings, Figure 1 is an elevation of my improved lock,
with the back plate removed; Figs. 2 and 3, an elevation and top
view, respectively, of the pivoted bolt, the combination wheels,
the cam, and the lever work that connects them; Fig. 4, a
perspective view of the pivoted bolt; Fig. 5, a similar view of the
magnet and armatures; Fig. 6, a view showing the manner of applying
the spindle and cam to a safe or vault door."
"
A represents the plate of a safe door, and
B
the case of the lock which is applied thereto.
C C C are
the combination wheels, and
D the operating spindle. The
spindle passes through a hollow stud
a of the case, and
has screwed upon its inner end the cam
E, as shown most
clearly in Fig. 6. The wheels themselves rest on the stud
a.
I is the bolt, turning on a pivot or bearing
q. Its location is such as to rest closely in the rear of
the stem
t of the heavy bolt work of the door, and to hold
it out when in one position, but to allow it to retract, to free
the bolt work, when in the other position; said bolt
I,
turning on its pivot or bearing to allow this to be done.
H is a sliding bar, which gives motion to the bolt as it
is thrown forward or backward, being connected together by
cog-teeth
p r. The bar slides on studs
n n by
which it keeps
Page 117 U. S. 539
its horizontal position.
G is a lever pivoted at
f, to bar
H and serving to throw the latter back.
It has a hook
b, Fig. 2, which engages with the bit
d of the cam, to draw the bar back. The forward motion is
given by the cam striking the end
o of the bar
H.
L is a magnet of the form shown in Fig. 5, which is
suspended on a pivot
i. Its open end rests between
armatures
h k, which are separated by a brass pendant
l. The armature
h is attached to the end of lever
G. When the magnet is in contact with the lower armature
h, the dog
g will be held away from the wheels,
but when raised and brought in contact with the upper armature
k, the lever is released, and the dog is then allowed to
fall into the notches of the wheels, to release the bolt. The
magnet is raised by a roller
c, of the cam, which strikes
a bearing,
m, of the magnet."
"In general principle the magnet is the same as that covered by
the patent of Sargent and Covert, May 2, 1865; but the construction
and arrangement of the magnet and armatures are much simpler and
more effective, and constitute one feature of my present
invention."
"An important feature in my invention is the employment of the
bolt
I, turning on a pivot or bearing, instead of the
sliding bolt heretofore in use. It is isolated, so to speak, from
the combination wheels and the other main working parts of the
lock, and therefore any strain which is brought to bear upon it by
the heavy bolt work will be expended on the bolt itself, and not
upon the wheels. In the old form of lock, the sliding bolt extends
back so as to connect with or come near to the wheels, and any
strain thereon is liable to disarrange the lock works."
"Another important advantage of the isolation of the bolt is
that it increases the difficulty of 'picking,' by being removed
from all contact with the wheels. A common mode of picking ordinary
locks is to force the bolt back, so as to get a contact with it and
the edges of the wheels, by which their position is ascertained. In
my lock this cannot occur, as the bolt simply turns on its bearing
or pivot, and no back action can bring it or the lever work against
the wheels."
"The bolt may not only be of the circular form shown in the
Page 117 U. S. 540
drawings, but of a segmental form, which will serve the same
purpose."
image:a
"I am aware that the combination wheels themselves have been
made with notches, and so arranged that the ordinary sliding bolt,
which rests against their edges, may fall back, and
Page 117 U. S. 541
within the notches, when they are all set. Such is not the
equivalent of my invention, as my express purpose is to avoid all
contact of the bolt with the edges of the wheels."
The claims of the reissue, five in number, are as follows, but
only claim 1 is alleged to have been infringed:
"1. In a combination lock for safe or vault doors, a bolt
I which turns on a pivot or bearing when said bolt
I is used in a lock having no ordinary sliding lock bolt,
and in connection with the separate bolt work of the door, and so
arranged as to receive the pressure of the said bolt work without
transmitting it to the wheels or other equivalent works of the
lock."
"2. In a combination lock for safe and vault doors, I claim the
combination of the bolt
I bar
H and cog
connection
p r when said bolt
I turns on a pivot
or bearing, and receives the pressure of the bolt work situated
outside the lock works, and intervenes between the bolt work and
the wheels."
"3. I claim, in combination with the bolt
I the bar
H and lever
G, arranged and operating as herein
set forth."
"4. I claim, in combination with the vibrating magnet
L, the armatures
h k and pendant
l,
arranged as herein described."
"5. I claim the combination and arrangement of the wheels
C
C, cam
E, lever
G, bar
H, and bolt
I, as herein described."
The defenses set up were want of novelty, noninfringement, and
invalidity of the reissue. After a hearing on pleadings and proofs,
an interlocutory decree was entered finding the reissued patent to
be valid and to have been infringed and awarding a perpetual
injunction and an account of profits and damages. The master
reported $7,771 damages in favor of the plaintiff. The defendant
excepted to the report, but the exceptions were overruled by the
court and a final decree was entered for the plaintiff for $7,771
damages and $650.17 costs. The defendant has appealed to this
Court.
It is contended that the first claim of the reissue is void for
unlawful expansion after unreasonable delay in applying for the
reissue. The original patent had three claims, as follows:
"1. The rotating tumbler
I, when separated and isolated
in action from the permutation wheels, and so arranged that any
Page 117 U. S. 542
inward pressure upon the bolt will be exerted on the bearing of
said tumbler and have no action nor effect upon the said
permutation wheels, substantially as and for the purpose herein
specified."
"2. In combination with the turning tumbler
I, the cog
bar
H and lever
G, arranged and operating as
herein set forth."
"3. The combination and arrangement of the combination wheels
C, cam disk
E, pivoted lever
G, cog bar
H, and turning tumbler
I, the whole operating as
herein specified."
Claim 3 of the reissue is substantially the same as claim 2 of
the original, and claim 5 of the reissue is substantially the same
as claim 3 of the original, while claims 2 and 4 of the reissue are
new claims.
The defendant directs attention to these facts:
When Sargent applied originally for his patent on February 6,
1866, he asked for claim 1 in this form:
"The turning bolt
I, resting on its bearing
q,
in combination with the mechanism of a combination lock in such
manner as to practically isolate or disconnect it from the main
operating parts, substantially as set forth."
Claim 1 having been rejected on the 24th of March, 1866,
Sargent, on the 29th of June, 1866, changed the claim to the form
it has in the original patent as issued, and his attorneys at the
same time, in a letter to the Patent Office, explained the new form
of claim thus:
"The substance of the first substituted claim consists
essentially in providing a rotating tumbler in connection with the
bearing on which it rests, and the stem of the bolt work which
rests against it, when said tumbler is isolated or disconnected
from the combination wheels, so that any inward motion of the bolt
against this tumbler will expend its force against the bearing on
which the tumbler turns and rests and will not reach or affect the
permutation wheels."
The attorneys also said:
"In Mr. Sargent's device, it will be observed that the
combination or permutation wheels are on a different bearing, and
located at a distance from the revolving tumbler
I, and
never in contact therewith, so that the two are practically
isolated from each other, and there is no connection between them
except through the lever
H, which is not within the reach
or influence of the pick lock."
And the specification
Page 117 U. S. 543
of the original patent contained this language:
"The principal advantage of this tumbler consists in its
isolation, so to speak, from the combination wheels and the main
working parts. It rests alone on its bearing
q, the only
part connected being the cog bar
H. In ordinary locks, the
sliding bolt extends back in direct connection with the main
working mechanism, and by its constant action and the strain that
comes upon it frequently disarranges those parts. This is
especially true when the stem or projection
t of the heavy
bolt of the safe door rests against the sliding bolt. In this case,
when force is applied to the bolt, the wrenching strain upon the
bolt and mechanism is very great. In my lock, it will be seen that
this difficulty is obviated, for any strain that comes upon the
circular tumbler either from the stem
t or any other
source is simply expended upon the strong bearing
q, and
does not reach back to the combination wheels, or any part of the
working mechanism. This is of the utmost importance."
It is urged that emphasis was thus laid on the fact that the
turning bolt or tumbler was mounted on a different bearing from the
permutation wheels, and that it was that arrangement which
prevented pressure on it from reaching back to the permutation
wheels; that the original claim, in speaking of the rotating
tumbler as "separated and isolated in action from the permutation
wheels," meant that it was mounted on its own separate bearing, and
did not allow of its being mounted in any other way; that the
specification of the reissue does not say that the tumbler
I "rests alone on its bearing,
q;" that the
limitation thus contained in claim 1 of the original patent is not
found in claim 1 of the reissue, and that thereby an unlawful
expansion was made, the application for the reissue having been
filed more than five years after the original patent was
granted.
But we think the reissue is not fairly open to this objection.
The tumbler in the one claim and the bolt in the other are the same
instrument. The words "rotating tumbler
I" in the original
claim refer to the tumbler described as resting on a bearing
"around which it turns." The claim of the reissue, in saying that
the bolt
I "turns on a pivot or bearing," expresses
Page 117 U. S. 544
the same idea. The words in the claim of the reissue
"when said bolt
I is used in a lock having no ordinary
sliding lock bolt, and in connection with the separate bolt work of
the door, and so arranged as to receive the pressure of the said
bolt work without transmitting it to the wheels or other equivalent
works of the lock,"
are justified by these words in the original claim:
"And so arranged that any inward pressure upon the bolt will be
exerted on the bearing of said tumbler, and have no action or
effect upon the said permutation wheels."
The word "bolt" in the claim of the original meant what in the
claim of the reissue is called "the separate bolt work of the
door," because what is called in the former "the rotating tumbler
I" is called in the latter "a bolt
I, which turns
on a pivot or bearing." The proviso in the claim of the reissue
that the bolt
I is to be "used in a lock having no
ordinary sliding lock bolt" does not expand the claim, but, if
anything, restricts it. The statement in the claim of the reissue
that the bolt
I is so arranged as to receive the pressure
of the separate bolt work of the door without transmitting it to
the wheels is justified by the statement in the original claim that
the rotating tumbler
I is so arranged that any inward
pressure upon the bolt will be exerted on the bearing of the
tumbler, and have no action or effect on the permutation
wheels.
The words in the original claim "when separated and isolated in
action from the permutation wheels," applied to the rotating
tumbler, do not indicate that the mounting of the tumbler alone on
its bearing is required, but mean no more than that the tumbler
shall be separated and isolated in action from the wheels, and the
words of the claim of the reissue have no broader meaning in that
regard. If the rotating tumbler or bolt is thus isolated in action
from the wheels, the arrangement referred to in both claims is
reached. The patentee set forth, as he was bound to do, the method
he used, and which he thought advisable, but any method of mounting
the revolving bolt which effects the isolation referred to is
within either claim. The words "or other equivalent works of the
lock" have no expanding force.
The invention of Sargent consists in combining with the
Page 117 U. S. 545
ordinary combination wheels, and the other working parts of a
combination lock which has no sliding lock bolt, a bolt turning on
a pivot or bearing which is so isolated or removed from contact
with the said wheels as to receive any pressure or strain which may
be applied through the separate bolt work of a safe door and cut
off the communication between the bolt work of the door and the
wheels or fence lever of the lock, so that the position of the
slots in the wheels cannot be determined, for picking the lock, as
in the use of the ordinary sliding lock bolt, which extends back so
as to connect with the wheels. The turning bolt is an incomplete
cylinder, or one in which parts of the periphery are cut away. An
extended part of the bolt work of the door bears against a part of
the complete periphery of the turning bolt in such manner that the
turning bolt receives all pressure, and does not allow it to reach
the combination wheels. The ordinary sliding lock bolt is therefore
dispensed with.
Three alleged anticipating devices are set up -- defendant's
Exhibit A, defendant's Exhibits C and D, and defendant's Exhibit
E.
Exhibit A has in the lock casing a sliding bolt and also what is
alleged to be a turning bolt. But the latter is only the well known
swiveling dog, long used to prevent the retraction of sliding bolts
and so arranged as to be swiveled by a spring when the combination
wheels are gated. As a consequence, the stump or fence bears on the
wheels not only with the pressure of its own weight, but with the
added force of the spring. Any swiveling force applied to the dog
causes the stump to bear on the peripheries of the wheels, and the
picking of the lock is facilitated. The dog prevents the retraction
of the sliding bolt. In Sargent's patent, the lever which carries
the stump is so constructed that no turning of the revolving bolt
can bring the lever work against the wheels. The Sargent revolving
bolt must be acted upon by the user, while the swiveling dog in
Exhibit A is an automatic latch. In Sargent's structure, the
revolving bolt, the lever which carries the stump, and the wheels
are sufficient to prevent the retraction of the bolt work, while in
Exhibit A, the sliding bolt, the swiveling dog, the stump lever,
and the wheels are all of them necessary.
Page 117 U. S. 546
The drawings Exhibits C and D show the Linus Yale lock, which is
also illustrated by a lock mechanism. It is a revolving lock which
permits and prevents the retraction of the bolt work of the door,
and there is no sliding bolt. But there are no permutation wheels
or revolving tumblers, nor any oscillating or sliding tumblers, but
the ancient device of pins is used to prevent the revolution of the
bolt, the pins entering into holes in the bolt, and a cross-strain
can be brought upon the pins, making the picking of the lock
comparatively easy. Moreover, the bolt is not isolated from the
pins, as it is from the wheels in Sargent's lock, but parts of the
pins are in sockets in the bolt. The pins are thus in immediate
connection with the bolt, while Sargent interposes lever work
between the bolt and the wheels to effect the isolation of the
bolt.
In the Butterworth padlock, Exhibit E, there is a revolving bolt
combined with the wheel tumblers by means of a lever, but there is
no "separate bolt work of the door," which is one element of the
claim in Sargent's reissue. Of this padlock the plaintiff's expert,
Mr. Henry B. Renwick, says:
"The padlock has the ordinary hasp attached to the case, and the
bolt acts to prevent this hasp from being drawn away from the axis
upon which the bolt revolves, and not to prevent bolt works from
being forced toward that same axis. The hasp is a contrivance which
must be used with two staples, or one staple and a slotted bar, all
of which must be outside of the door, whereas, on the contrary,
bolt works must be inside of the door and shoot into sockets in the
jambs, it being clear that the hasp could not be used in place of
bolt works, or bolt works in place of a hasp, even if the former
were located outside of the door. I do not think that the lock
would even suggest the idea of the combination referred to in the
first claim of the Sargent reissue. In order to make the lock fit
to be used in combination with bolt works, even after such idea had
been suggested, it would be necessary first to provide the lock
case with means of securing it to the door; second, to elongate the
spindle and so contrive it and the dial plate that they could be
separated from the wheel tumblers and put together again, with the
door between them; third, to alter the direction of the slot in
the
Page 117 U. S. 547
case through which the hasp enters, so that the tail of the bolt
works could press upon the revolving bolt in the line of a radius
thereof. If the tail of bolt works were introduced into the present
slot, any hammering of the bolt works by the handle upon the
periphery of the revolving bolt would tend to turn the revolving
bolt upon its axis, and thus cause the stump to be pressed upon the
wheel tumblers in such a manner as to facilitate picking; this
result being due to the fact that the line of direction through the
slot is not in line of the radius to the bolt, but in line of a
sector thereof. Further, the revolving bolt in a padlock, owing to
its being necessary that it should enter a slot in the hasp, is
weakest at the very point where it should be strongest if it were
to be used in connection with bolt work, and any good constructor
would alter the revolving bolt of the padlock, so that it would be
strongest where it is now weakest in case it was desired to use a
revolving bolt in combination with bolt works."
It is a marked feature of Sargent's lock that the direction of
the pressure of the bolt work of the door on the revolving bolt is
in the line of a radius of that bolt, so that the pressure has no
tendency to revolve the bolt. This feature is not found in the
Butterworth padlock. We are of opinion that, as against anything
found in the old structures, there was patentable novelty in what
Sargent did and what he claimed.
As to the question of infringement, the defendant's lock, Cole
No. 2, has in it a bolt which turns on a pivot and is substantially
identical with the like bolt in Sargent's patent. It prevents and
permits the retraction of the bolt work of the door in the same
manner as Sargent's bolt. There is no sliding bolt. The turning
bolt is arranged to serve as a stop to two sets of bolt works,
instead of one, but in respect to one set there is the same mode of
operation in both locks. As the claim of Sargent's reissue does not
require that the bearing of the rotating bolt should be distinct
from the bearing of the wheels, the fact that in Cole No. 2 the
bearing of the turning bolt is on the stud on which the wheels turn
makes no difference in principle, because the action of the bolt is
as wholly separated and isolated from the wheels in the one lock as
in the other, and in
Page 117 U. S. 548
each the strain from the bolt work is expended on the turning
bolt, and not on the wheels. So too, the fact that in Sargent's
patent the fence lever is connected with the turning bolt by a rack
on the end of the lever engaging with cog teeth on the bolt, while
in Cole No. 2, the end of the lever is pivoted directly to the
turning bolt, does not affect the identity of the arrangement as
part of the combination covered by claim 1 of the reissue. The
defendant's lock must be held to infringe that claim.
On the question of damages, the defendant contends that there
was no sufficient or legal proof that the plaintiff suffered the
damages reported and adjudged, or any other damages. The action of
the master, the character of the exceptions to his report, and the
view taken by the circuit court are fully shown by its opinion,
reported in 17 Blatchford 244, which was as follows:
"The master reports that there is no basis from the proofs
adduced before him to find what profits have been made by the
defendant by the use of the 'turning bolt' (the infringing device)
in the locks made and sold by it, and that therefore on the
testimony before him he cannot find what profits, if any, are due
from the defendant for the use of the 'turning bolt.'"
"The patent on which this suit is brought is a reissue, granted
January 2, 1872. The master reports that after that time, and in
1873, in consequence of the defendant's offering and selling to the
plaintiff's principal customers and to the trade generally locks
containing the infringing device at a less price than the plaintiff
was obtaining, a reduction of prices was enforced on the plaintiff,
such reduction being, in round numbers, $1 on each No. 5 lock and
$2 on each No. 3 lock. Exception one of the defendant is to such
finding and report, and alleges that the master should have
reported that no such reduction was enforced, and that there was no
proof of the amount of any reduction caused by the defendant's
infringement, and that there was no method of computing such
reduction even if it actually existed."
"The master also reports that it is in evidence that, during
Page 117 U. S. 549
the period covered by the accounting, the plaintiff could have
manufactured, in addition to the locks he did manufacture and
without materially increasing his manufacturing facilities, all the
locks manufactured and sold by the defendant. Exception two of the
defendant is to such finding and report, and alleges that the
master should have reported that no such additional manufacture by
the plaintiff was possible, or that it was impossible without a
very great extension of his facilities."
"The master also reports that it is in evidence that during the
period covered by the accounting, the plaintiff would have made
sales to many of the persons who were induced to purchase from the
defendant at his own established prices had not the defendant
offered its locks at lower prices. Exception three of the defendant
is to that part of the report, and alleges that the master should
have found and reported that no such sales would have been made, or
that, even if made, they would not have been at the plaintiff's own
established prices."
"The master also reports that the plaintiff has suffered damage
in respect to the matters to which exceptions two and three relate.
Exception four of the defendant is to that part of the report, and
alleges that the master should have found and reported no damage
whatever from the competition of the defendant."
"The master further reports that the locks sold by the defendant
contained, in addition to the 'turning bolt,' a device patented by
the Rosner patent, for which infringement a claim is made against
the defendant in another suit; that as to the proportion of the
reduction of prices above set forth, which should be allowed to the
device claimed under the Rosner patent, it is claimed by the
plaintiff, and nowhere effectually disputed by the defendant,
'that, in computing the profits on these locks, one-third belonged
to and was charged by him to the Rosner patent,' and that,
admitting this proportion and allowing in addition thereto for any
superior external attractions of the defendant's locks and for the
number of combinations which they had over those of the plaintiff,
and for the shape of the case of the lock, and for the commercial
success of the defendant in effecting sales where the plaintiff
would
Page 117 U. S. 550
have failed, the master is of opinion that the plaintiff is
entitled to recover from the defendant, as damages, one-half of the
amount of the reduction in prices caused by the defendant since
January 2, 1872 -- that is, on 1,009 No. 3 locks, $1 per lock,
being $1,009, and on 13,524 No. 5 locks at 50c. per lock, $6,762,
being a total of $7,771. Exception five of the defendant excepts to
the finding and report that the plaintiff is entitled to recover
from the defendant, as damages, one-half of the amount of the
reduction in prices caused by the defendant since January 2, 1872,
and alleges that the master should have reported 'no reduction in
prices, or no proof of such,' caused by any infringement by the
defendant since said date, and 'hence no damages' to the plaintiff,
'and consequently no method of calculating them.' Exception six of
the defendant excepts to the report for that the master erred in
making the apportionment of the alleged reduction in the
plaintiff's prices, charging one-half thereof to the alleged
infringement of the 'turning bolt' patent, and alleges that no
basis existed, in the proof or in law, for such or for any
apportionment, or for any award of damages. Exception seven of the
defendant excepts to the report for that the master erred in
assessing damages which are not the damages suffered by the
plaintiff, but are those suffered by the firm of Sargent &
Greenleaf, and alleges that the master should have reported that
the damage, if any, found to have been suffered by said firm, is
not the damage of the plaintiff, who is only one member of said
firm, but that the plaintiff's damage is merely a portion thereof.
Exception eight of the defendant excepts to the report for that the
master erred in finding and reporting, as damages, the sum
mentioned in his report, or any damages whatsoever, and in not
reporting that there was no proof of any actual damage suffered by
the plaintiff from the alleged infringement."
"The defendant contends that the competition of the defendant
was not the sole cause of the reduction of the plaintiff's prices,
and that the proportionate effect of the defendant's competition is
not attempted to be estimated or ascertained by the proofs. It
alleges that the defendant is not responsible for the reduction
made in 1873; that there were many other causes
Page 117 U. S. 551
which contributed to this reduction, and that the lowering of
prices was caused principally by the competition of other
fire-proof safe lockmakers, and notably the New Britain Lock Co.,
by the fact that safemakers were making and threatening to make
their own safe locks, and by the general lowering of the prices of
material and labor and the depression of business."
"Reduction of prices and consequent loss of profits enforced by
infringing competition is a proper ground for awarding damages. The
only question is as to the character and sufficiency of the
evidence in the particular case. I think that on the whole
evidence, the reduction of prices by the plaintiff after January 2,
1872, on safe locks containing his invention is shown to have been
directly and solely caused by the defendant's infringement. The
master, in his report, allows damages only for the reduction of
prices on the locks sold by the plaintiff; that is, 1,009 No. 3
locks, and 13,524 No. 5 locks. Although the master states that the
plaintiff suffered damage in losing the sale of locks sold by the
defendant, he awards no damages for that cause. He confines his
award to the loss on the locks which the plaintiff sold."
"The defendant also contends that the plaintiff is not entitled
to recover from the defendant as damages the entire amount of the
reduction enforced by the defendant's competition, but only the
damages occasioned by the effect of the presence of the
infringement; that the burden of proof is on the plaintiff to fix
the value of and to separate the effect of the infringing devices,
that he failed to do so by any proper proof, and that no basis was
afforded to the master on which such damages could be computed. But
as the master allowed damages only for the reduction of prices on
the locks sold by the plaintiff, and as the essential feature of
those locks was the 'turning bolt' device, and as an essential
feature of the infringing locks was the infringing 'turning bolt'
device in them, and as the plaintiff could not sell his 'turning
bolt' device unless it was embodied in a lock, and as he was
thereby enabled to make his profit on the entire lock, and as he
was deprived, by the acts of
Page 117 U. S. 552
the defendant in selling at low prices locks containing the
patented 'turning bolt' device, of the profit he would otherwise
have made on the locks which he actually sold containing the
'turning bolt' device, it seems plain that the defendant's
infringement must be held to have caused the entire loss of the
plaintiff by the reduction of prices, after allowing a proper sum
for any other patented device contained in the defendant's locks
and for any other causes which gave to the defendant an advantage
in selling its locks. This is the basis on which the master
proceeded, and it seems to me, on a consideration of the evidence,
that the master has made all proper allowances and has arrived at a
correct conclusion in fixing, as damages, one-half of the amount of
reduction in prices. The plaintiff, as the owner of the patent, is
entitled to recover the damages in this case. He may be accountable
to his co-partner for a part of them, but the co-partner could not
sue on the patent for such damages or any part of them."
This is a case where the patentee granted no licenses, and had
no established license fee, but supplied the demand for his lock
himself, and was able to supply that demand. The market for the
lock was limited to safemakers. No one but a safemaker wanted or
would buy such a lock. The master was unable to determine from the
proofs what profits, if any, the defendant had made from the use of
the turning bolt. He disallowed all items of damage from the loss
to the plaintiff of the sale of infringing locks sold by the
defendant, and confined his award to the enforced reduction of
price on the locks which the plaintiff sold, caused by the
infringement. That this is a proper item of damages, if proved, is
clear. It is a pecuniary injury caused by the infringement, and is
the subject of an award of damages, although the defendant may have
made no profits and the plaintiff may have had no established
license fee. As the plaintiff at the time of the infringement
availed himself of his exclusive right by keeping his patent a
monopoly and granting no licenses, the difference between his
pecuniary condition after the infringement and what his condition
would have been if the infringement had not occurred is to be
measured, so far as his own sales of locks are concerned, by the
difference
Page 117 U. S. 553
between the money he would have realized from such sales if the
infringement had not interfered with such monopoly and the money he
did realize from such sales. If such difference can be ascertained
by proper and satisfactory evidence, it is a proper measure of
damages. The damages to be recovered, Rev.Stat. §§ 4919, 4921, are
"actual damages," and they may properly include such losses to the
plaintiff as were allowed in this case.
McComb v. Brodie,
1 Woods 153, 161;
Philp v. Nock,
17 Wall. 460,
84 U. S.
462.
The turning bolt was the essential feature of the Sargent lock.
The defendant adopted Sargent's arrangement and then reduced the
price of the lock, forcing Sargent to do the same in order to hold
his trade. The evidence shows that the reduction of prices by
Sargent was solely due to the defendant's infringement. The only
competitor with Sargent in the use of his turning bolt arrangement
during the period covered by the accounting was the defendant. We
think the master made proper allowances for all other causes which
could have affected the plaintiff's prices, that the proper
deduction was made for the use of the Rosner device in the
defendant's lock, and that the damages awarded are no greater than
the testimony warranted. The decision that the plaintiff, as owner
of the patent, was entitled to recover the damages was correct.
The bill alleges infringement of the reissue generally, and
especially of the first claim. The answer alleges that the reissue
is not for the same invention as the original patent. The defendant
contends that this is true as to claims 2 and 4 of the reissue, and
that, as no disclaimer of those claims was entered at the Patent
Office before this suit was brought, the recovery in this case
should have been without costs under the provisions of §§ 4917 and
4922 of the Revised Statutes and the decision in
Gage v.
Herring, 107 U. S. 640,
107 U. S. 648.
That case holds that the invalidity of a new claim in a reissue
does not impair the validity of a claim in it which is only a
repetition and separate statement of a claim in the original
patent. It also holds that a reissued patent is within the letter
and the spirit of the provisions of §§ 4917 and 4922, and that
where a
Page 117 U. S. 554
defendant has infringed such a restated valid claim of a
reissue, the plaintiff, on filing a disclaimer of the new and
invalid claims of the reissue, may have a decree, without costs,
for the infringement of such valid claims where there has been no
unreasonable delay in entering the disclaimer.
There can be no doubt that claim 4 of the reissue was invalid as
an unlawful expansion of the original patent on an application for
the reissue filed more than five years after the original patent
was granted. But the patent has expired, and therefore no
disclaimer can now be filed. There was no unreasonable delay in
filing a disclaimer, as the validity of claim 4 was sanctioned by
the Commissioner of Patents in granting the reissue, and this suit
was commended in July, 1872, and the claim was not held invalid by
the circuit court (both the interlocutory and final decrees having
been entered before the decisions of this Court at October term,
1881, on the subject of reissued patents, were made). The result,
therefore, is that
The decree below must be reversed as to the award of costs
and affirmed in all other respects, with interest, until paid at
the same rate per annum that decrees bear in the courts of the
State of New York, and the case be remanded to the circuit court
with a direction to modify the decree accordingly. Each party will
bear his own costs in this Court and one-half of the expense of
printing the record. Silsby v.
Foote, 20 How. 378, 61 U. S.
387.