The refusal of a circuit court to grant a rehearing is not
subject to review here.
S., by an assignment absolute in form and for an expressed sum
and "other valuable considerations," assigned to G. an interest in
letters patent. G., by a writing executed the following day, made a
further agreement with S. as to times and modes and amounts of
payments, and further agreed that if he should fail to carry out
his said agreements, the title
Page 133 U. S. 698
was to revert to S..
Held that the transfer was
absolute, subject to be defeated by failure to perform the
condition subsequent.
When an invention patented in a foreign country is also patented
in the United States, articles containing it cannot be imported
into the United States from the foreign country and sold here
without the license or consent of the owner of the United States
patent, although purchased in the foreign country from a person
authorized to sell them.
To a master's report upon the damages to be awarded in an equity
suit for the infringement of letters patent, the exceptions raised
the points: (1) that the infringement was not willful; (2) that the
reduction in price of the article manufactured by the plaintiff was
not solely due to the infringement.
Held that this was
sufficient to bring before the court the whole subject of the
computation of damages.
When a plaintiff in a suit for the infringement of letters
patent seeks to recover because he has been compelled to lower his
prices in order to compete with the infringing defendant, he must
either show that the reduction was due solely to the defendant's
acts or to what extent it was due to them, and must furnish data by
which actual damages may be calculated.
In equity. The case is stated in the opinion.
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
Albert Graeff and J. F. Donnell filed their bill in the Circuit
Court of the United States for the Northern District of California
against Emile Boesch and Martin Bauer, to recover for infringement
of letters patent No. 289,571, for an improvement in lamp-burners,
granted on December 4, 1883, to Carl Schwintzer and Wilhelm Graeff,
of Berlin, Germany, assignors of one-half to J. F. Donnell &
Co., of New York, all rights being averred to be now vested in the
complainants. Claim 1, alleged to have been infringed, reads as
follows:
"In a lamp-burner of the class described, the combination, with
the guide tubes, of a ring-shaped cap provided with openings for
the wicks, said cap being applied to the upper ends of the guide
tubes, so as to close the intermediate spaces between the same,
substantially as set forth. "
Page 133 U. S. 699
The patent was granted December 4, 1883, but prior to that,
November 14, 1879, January 13, 1880, and March 26, 1880, letters
patent had been granted to Carl Schwintzer and Whilhelm Graeff by
the government of Germany for the same invention. After a hearing
on the merits, an interlocutory decree was entered, finding an
infringement and referring the case to a master for an accounting.
The opinion will be found reported in 33 F. 279. A petition for a
rehearing was filed and overruled. The case then went to the
master, who reported that the infringement was willful, wanton, and
persistent; that the appellees had sustained damages to the extent
of $2,970.50, and that they waived all claims to the profits
realized by the infringement. Exceptions were filed to this report
and overruled, and a final decree entered in favor of Graeff and
Donnell for $2,970.50, with interest, and costs, from which decree
this appeal has been prosecuted.
Appellants urge three grounds for reversal:
First, that a title to the patent sufficient to maintain a suit
for infringement was not at the date of filing the bill, vested in
the complainants.
Second, that Boesch and Bauer could not be held for infringement
because they purchased the burners in Germany from a person having
the right to sell them there, though not a licensee under the
German patents.
Third, that the damages awarded were excessive.
These propositions are presented by some of the errors assigned,
and are the only errors alleged which require attention, that which
questions the infringement not being argued by counsel and that
which goes upon the refusal of the circuit court to grant a
rehearing not being open to consideration here.
Buffington v.
Harvey, 95 U. S. 99,
95 U. S. 100;
Steines v. Franklin
County, 14 Wall. 15,
81 U. S. 22;
Railway Company v. Heck, 102 U. S. 120;
Kennon v. Gilmer, 131 U. S. 22,
131 U. S.
24.
The assignment by Schwintzer to Albert Graeff was dated the 22d
day of April, 1885, was absolute in form, and transferred title to
six twenty-fourths of the patent, for the expressed consideration
of "the sum of one hundred dollars, and for other valuable
considerations," but a contract between Schwintzer
Page 133 U. S. 700
and Albert Graeff was produced by the latter upon his
examination by the respondents, which read as follows:
"S. 1. Mr. Albert Graeff binds himself to pay to Mr. Carl
Schwintzer, instead of the, in the patent letter mentioned, one
hundred dollars for the first year, the sum of two hundred and
fifty marks, payable on the 1st February, 1886, and each following
year on the same date the sum five hundred marks (not less) till
the amount of four thousand marks are paid in all."
"S. 2. Should Mr. Albert Graeff, of San Francisco, not be able
to sell more than one thousand burners, called 'Diamond' or
'Mitrailleuse' burners, No. 10,621, manufactured by Mess.
Schwintzer & Graeff, of Berlin, he reserves to himself to make
up a new agreement with Mr. Carl Schwintzer."
"S. 3. Should not Mr. Albert Graeff, San Francisco, against all
expectation, stick to the agreements mentioned in S. 1 and 2, all
titles of the patent letter ceded to him by Carl Schwintzer shall
him return."
"S. 4. Mr. Carl Schwintzer, partner of the firm Schwintzer &
Graeff, engages to deliver to Mr. Albert Graeff the said burners at
the same price as before, if the market price of the metal does not
exceed -- make 150% kos., and promise likewise to effect any order
promptly, if in his power."
Albert Graeff testified in respect to the words, "instead of
the, in the patent letter mentioned, one hundred dollars for the
first year," etc., that they meant that, instead of the $100
mentioned in the assignment, he was to pay 250 marks the first
year, and that the contract was made on day later than the
assignment. Counsel contends that the two documents must be
construed together, and amount simply to an executory contract to
assign when Graeff shall have paid the sum of 4,000 marks; that
therefore Graeff could, at most, only be regarded as a licensee of
the interest under the patent until such time as his contract
should be executed according to its terms, and that the legal right
as to six twenty-fourths of the patent remained in Schwintzer, who
was therefore a necessary party. It is evident that the agreement
was not drawn by parties well versed in English,
Page 133 U. S. 701
but their intention is sufficiently apparent. The assignment,
being absolute in form, conveyed the legal title, and on the next
day, the parties signed this contract, relating to the
consideration, probably to enable Albert Graeff to pay the 4,000
marks out of the sales of the burners; at all events, it provides
that if Graeff failed to carry out his covenants, then the title
was to return to Schwintzer, which provision was in the nature of a
security to him that he should be paid. The condition that if Mr.
Albert Graeff did not, "against all expectations, stick to the
agreements mentioned in S. 1 and 2, all titles of the patent letter
ceded to him by Carl Schwintzer shall him return" is a condition
subsequent. The title had already vested, but was liable to be
defeated
in futuro on failure of the condition. There has
been no such failure, but, on the contrary, Albert Graeff has paid
the 4,000 marks in full. We shall therefore not reverse the decree
on the ground first referred to.
Letters patent had been granted to the original patentees for
the invention by the government of Germany in 1879 and 1880. A
portion of the burners in question were purchased in Germany from
on Hecht, who had the right to make and sell them there. By section
5 of the imperial patent law of Germany, of May 25, 1877, it was
provided that
"the patent does not affect persons who, at the time of the
patentee's application, have already commenced to make use of the
invention in the country, or made the preparations requisite for
such use."
12 Off.Gaz. 183. Hecht had made preparations to manufacture the
burners prior to the application for the German patent. The
official report of a prosecution against Hecht in the First
Criminal Division of the Royal District Court No. 1 at Berlin, in
its session of March 1, 1882, for an infringement of the patent
law, was put in evidence, wherefrom it appeared that he was found
not guilty, and judgment for costs given in his favor, upon the
ground
"that the defendant has already prior to November 14, 1879 --
that is to say at the time of the application by the patentees for
and within the state -- made use of the invention in question,
especially, however, had made the necessary preparations for its
use. Section 5,
eodem. Thus,
Page 133 U. S. 702
Schwintzer & Graeff's patent is of no effect against him,
and he had to be acquitted accordingly."
It appears that appellants received two invoices from Germany,
the burners in one of which were not purchased from Hecht, but, in
the view which we take of the case, that circumstance becomes
immaterial. The exact question presented is whether a dealer
residing in the United States can purchase in another country
articles patented there from a person authorized to sell them and
import them to and sell them in the United States without the
license or consent of the owners of the United States patent.
In
Wilson v.
Rousseau, 4 How. 646, it was decided that a party
who had purchased and was using the Woodworth planing machine
during the original term for which the patent was granted had a
right to continue the use during an extension granted under the act
of Congress of 1836, and Mr. Chief Justice Taney, in
Bloomer v.
McQuewan, 14 How. 539,
55 U. S. 549,
says in reference to it that "the distinction is there taken
between the grant of the right to make and vend the machine and the
grant of the right to use it." And he continues:
"The distinction is a plain one. The franchise which the patent
grants consists altogether in the right to exclude everyone from
making, using, or vending the thing patented without the permission
of the patentee. This is all that he obtains by the patent. And
when he sells the exclusive privilege of making or vending it for
use in a particular place, the purchaser buys a portion of the
franchise which the patent confers. He obtains a share in the
monopoly, and that monopoly is derived from, and exercised under,
the protection of the United States. And the interest he acquires
necessarily terminates at the time limited for its continuance by
the law which created it. . . . But the purchaser of the implement
or machine, for the purpose of using it in the ordinary pursuits of
life, stands on different ground. In using it, he exercises no
rights created by the act of Congress, nor does he derive title to
it by virtue of the franchise or exclusive privilege granted to the
patentee. The inventor might lawfully sell it to him, whether he
had a patent or not, if no other patentee stood in his way. And
when
Page 133 U. S. 703
the machine passes to the hands of the purchaser it is no longer
within the limits of the monopoly. It passes outside of it, and is
no longer under the protection of the act of Congress."
In
Adams v.
Burke, 17 Wall. 453, it was held that
"where a patentee has assigned his right to manufacture, sell,
and use within a limited district an instrument, machine, or other
manufactured product, a purchaser of such instrument or machine,
when rightfully bought within the prescribed limits, acquires by
such purchase the right to use it anywhere, without reference to
other assignments of territorial rights by the same patentee,"
and that
"the right to the use of such machines or instruments stands on
a different ground from the right to make and sell them, and
inheres in the nature of a contract of purchase, which carries no
implied limitation to the right of use within a given
locality."
MR. JUSTICE BRADLEY, with whom concurred Mr. Justice Swayne and
Mr. Justice Strong, dissented, holding that the assignee's interest
"was limited in locality, both as to manufacture and use." The
right which Hecht had to make and sell the burners in Germany was
allowed him under the laws of that country, and purchasers from him
could not be thereby authorized to sell the articles in the United
States in defiance of the rights or patentees under a United States
patent. A prior foreign patent operates under our law to limit the
duration of the subsequent patent here, but that is all. The sale
of articles in the United States under a United States patent
cannot be controlled by foreign laws. This disposes of the second
error relied on.
This brings us to the consideration of the damages reported by
the master, which report was confirmed by the court, and we are met
on the threshold by the objection that the exceptions taken in the
circuit court were not sufficiently specific to entitle appellants
to raise the questions here upon which they submit argument.
These exceptions are as follows:
"First Exception. For that the said master has in and by his
said report certified on page six thereof that "
"the cap was
Page 133 U. S. 704
the essential feature of the Graeff burner. The respondent
adopted Graeff's arrangement, and then reduced the price of the
burner, forcing Graeff to do the same in order to hold his trade.
The evidence shows that the reduction in prices by Graeff was
solely due to the respondents' infringement. So far as the evidence
shows, the only competitor with Graeff in the use of his cap
arrangement during the period covered by the accounting was the
respondents', whereas the said master ought to have certified that
respondent came innocently into possession of the burners by
purchase in the ordinary course of business from legitimate
manufacturers thereof in Germany, and that immediately upon being
notified that they were claimed to be an infringement, he ceased to
sell the same. The evidence shows that at about the time Graeff
made the alleged reduction in the price of his burners, there were
thrown upon the market lamp burners of other kinds of equal or
greater power which came directly in competition with the Graeff
burner, and that the reduction in price was the result of such
competition; that the sale of 14 infringing burners by respondent
in the course of three years' trade could not have been a
sufficient competition to plaintiff's business to cause him to make
a reduction of price where the testimony shows that during the
period from March 1, 1886, when complainant reduced the price of
burners, until October 31, 1887, he sold about 6,000 of said
burners."
"Second Exception. For that the said master hath certified"
"that the amount of damages which the complainant has suffered
and sustained from and by reason of said infringement is two
thousand nine hundred and seventy dollars and fifty cents,"
"whereas he should have reported nominal damages."
"In all which particulars, the report of the said master is, as
the said respondent is advised, erroneous, and the said respondent
appeals therefrom to the judgment of this honorable court."
It is conceded that these exceptions raise two points, namely,
that the infringement was not willful, and that the reduction of
prices was not caused solely by it, and this, as it seems to us, is
quite sufficient to permit the real question
Page 133 U. S. 705
involved to be passed upon. The master awarded $2,970.50 as
damages for the reduction in price, which, he holds, was caused by
the respondent's infringement. He says:
"After the reduction in his prices, complainant sold at
wholesale one thousand three hundred and twelve ten-wick burners at
a price twenty-five cents less on each than his original price;
four hundred and fifty twelve-wick burners at fifty cents less;
five hundred and ninety-two sixteen-wick burners at seventy-five
cents less, and seven hundred and sixteen twenty-wick burners at
seventy-five cents less -- a total difference between the original
and the reduced prices of one thousand five hundred and thirty-five
dollars and fifty cents. In addition, be sold at retail, on an
average, five burners on each of the five hundred and seventy-four
business days between the time when his prices were first reduced
and October 31, 1887, the number of burners thus sold being two
thousand eight hundred and seventy, which were sold at a minimum
reduction of fifty cents each under original prices -- a total
difference between the original and the new prices of fourteen
hundred and thirty-five dollars, which sum, added to the said sum
of one thousand five hundred and thirty-five dollars and fifty
cents, gives an aggregate amount of two thousand nine hundred and
seventy dollars and fifty cents."
The report of a master is merely advisory to the court, which it
may accept and act upon, in whole or in part, according to its own
judgment as to the weight of the evidence.
Kimberly v.
Arms, 129 U. S. 512,
129 U. S. 523.
Yet, in dealing with exceptions to such reports,
"the conclusions of the master, depending upon the weighing of
conflicting testimony, have every reasonable presumption in their
favor, and are not to be set aside or modified unless there clearly
appears to have been error or mistake on his part."
Tilghman v. Proctor, 125 U. S. 136,
125 U. S. 149.
We think there was error here within that rule.
Where the patentee granted no licenses and had no established
license fee, but supplied the demand himself, and was able to do
so, an enforced reduction of price is a proper item of damages, if
proven by satisfactory evidence.
Yale
Lock
Page 133 U. S. 706
Manufacturing Co. v. Sargent, 117 U.
S. 536. The damages must be actual damages, but where
the patented feature is the essential element of the machine or
article, as in the case just cited, if such damages can be
ascertained, they may be awarded. When, however, a plaintiff seeks
to recover because he has been compelled to lower his prices to
compete with an infringing defendant, he must show that his
reduction in prices was due solely to the acts of the defendant, or
to what extent it was due to such acts.
Cornely v.
Marckwald, 131 U. S. 159.
There must be some data by which the actual damages may be
calculated.
New York v.
Ransom, 23 How. 487;
Rude v. Westcott,
130 U. S. 152.
The master reported
"that the number of lamp-burners proven to have been sold by
respondents, containing the invention claimed in and by the first
claim of complainants' letters patent, is fourteen, provided that
only the capped burners sold contain said invention, and that the
number is one hundred and fourteen, if the half capped burners so
sold are to be held to contain said invention."
The evidence established that the first invoice of lamp burners
contained 50 20-wick burners with caps, of which respondents sold
four, and fifty 12-wick burners with half caps, of which
respondents sold twelve, and fifty 16-wick burners with half caps,
of which respondents sold forty-four, and that respondents altered
the forty-six remaining 20-wick burners by changing their caps to
half caps, and sold forty-four. This makes the one hundred with
half caps, referred to by the master. Of the second invoice, the
respondents sold four 20-wick capped burners and six 16-wick capped
burners, making, with four 20-inch burners with caps sold out of
the first invoice, the fourteen capped wick burners reported as
thus disposed of. The original bill in this case was filed
September 17, 1886. It had been preceded by another suit, which had
been dismissed. The goods in the second invoice, it is testified,
had been ordered before this suit was commenced, but the invoice is
dated October 16, 1886. This invoice contained one hundred 20- and
one hundred 16-wick burners with caps, of which respondents sold
four 20-wick and six 16-wick burners unchanged, as before
Page 133 U. S. 707
stated. Most of this lot were still on hand at the time the
testimony was taken, though some had been altered into what was
called the "Boesch Burner," which had no caps at all, and sold as
such.
The evidence tends to establish a profit of $1.85 on the 20-wick
burners, $1.50 on the 16-wick, and 75 cents on the 12-wick. This
would show a profit of $23.80 on the fourteen capped burners, being
820-wick and six 16-wick burners, and a profit of $156.40 on the
one hundred half-capped burners, being forty-four 20-wick,
forty-four 16-wick, and twelve 12-wick burners. Respondents had
been advised by their counsel that the burners with half caps were
not an infringement. The cap was the invention in question. The
claim infringed, as already seen, was a combination, with the guide
tubes, of a ring-shaped cap provided with openings for the wicks,
said cap being applied to the upper ends of the guide tubes, so as
to close the intermediate spaces between the same. The half cap
admitted the air directly to each wick, and in that respect
differed from the claim of the patent. It is argued, however, with
much force on behalf of the appellees that the difference was a
difference in degree and not in kind, as the air reached the wick
when the full cap was used, and the functions of the latter as a
strengthening band, a protector of the tops of the tubes, and in
other particulars were performed by the half cap, and this position
is not resisted by counsel for appellants. But assuming that the
sale of one hundred burners with half caps was an infringement, we
are not prepared to concede that the sale of one hundred fourteen
burners under the circumstances detailed could have had the effect
in compelling a reduction of price which has been ascribed to
it.
It is remarked by the master that
"it is a fact of common knowledge that there is to be found on
sale in the market a great variety of lamp burners among which, as
shown by the evidence, have been for many years burners of the same
general class as complainants'."
This being so, and Boesch & Bauer being dealers in burners
generally, it is not to be presumed that Graeff reduced his prices,
for nineteen months,
Page 133 U. S. 708
on six thousand burners, not on account of competition in
burners, but because of the effect upon his particular burner
created by the sale of fourteen of the same kind and of one hundred
differing, but the same in principle. Conceding that as Graeff
granted no licenses and had no established license fee, but
supplied the demand for his burner himself, and was able to supply
that demand, and that therefore if he was compelled to lower the
price by the infringement, he could recover for the loss thus
sustained, does the evidence satisfactorily establish that the
reduction in prices was due solely to the acts of the defendants in
infringing? The opinion of Mr. and Mrs. Graeff to that effect is
not sufficient, and even that is so qualified as to fall far short
of expressing it. The master allowed upon 3,070 burners sold at
wholesale, and on 2,870 sold at retail, by the complainants between
March 1, 1886, and October 31, 1887, or 5,940 in all. The sales of
one hundred and four out of the one hundred and fourteen sold by
the respondents apparently took place prior to the filing of the
bill. Boesch had been in the business for twenty years. The firm of
Boesch & Bauer carried a large stock of lamps, embracing a
hundred varieties in styles and sizes, under a very large variety
of names.
Graeff's burner was a "mitrailleuse" burner, and called
"Diamond," as the Miller burner was. Boesch testified that there
was no difference between the selling price of the Hecht, the
Miller, and the Boesch burners; that there was no demand in their
trade for a mitrailleuse burner with a cap, and that in his
judgment the Boesch burner was better than the Hecht. This evidence
may properly be considered in connection with the fact that but one
hundred and fourteen were sold.
We cannot concur with the conclusion that the result of the
sales of the one hundred and fourteen burners was to keep Graeff's
prices for his particular burner down from March 1, 1886, to
October 31, 1887. If Boesch and Bauer had a burner which satisfied
the public just as well as Graeff's, and which they could sell
cheaper, Graeff cannot complain of the consequences. If Graeff's
burner was so much better than
Page 133 U. S. 709
any other that the public must have it, he could make his own
price, and, if within the bounds of reason, find a sufficient
market.
In the state of the case disclosed by this record, the
complainants must be content with the protection of an injunction,
and a recovery of the profits realized from the infringing
sales.
The decree is reversed, and the cause remanded for further
proceedings in conformity with this opinion.