In estimating, in a suit for the infringement of letters patent,
the profits which the defendant has made by the use of the
plaintiff's device, where such device is a mere improvement upon
what was known before and was open to the defendant to use, the
plaintiff is limited to such profits as have arisen from the use of
the improvement over what the defendant might have made by the use
of that or other devices without such improvement.
An inventor took out letters patent for an invention intended to
accomplish a certain result. Subsequently he took out a second
patent, covering the invention protected by the first, and
accomplishing the same result by a further improvement. While
holding both patents, he sued to recover damages for the
infringement of the second, without claiming to recover damages for
the infringement of the first.
Held that he could recover
only for the injuries resulting from use of the further improvement
covered by the second letters, and that if no such injury were
shown, the defendant would be entitled to judgment.
This was a bill in equity for the infringement of letters patent
No. 129,844, issued July 23, 1872, and reissued as No. 5,630,
October 28, 1873, to the appellant, John McCreary, for an
"improvement in coupling and steering apparatus." In the
specification of the reissue the patentee stated that his invention
related "to certain improvements in devices for steering canal
boats," etc., described in letters patent granted to Elijah and
John McCreary, April 16, 1872, No. 125,684, by means of which two
boats are coupled together, and navigated and steered as one boat
by means of a single steering wheel. The invention described in
said letters patent consisted principally
"in coupling two boats together by means of a chain or rope
passing around a steering wheel on one boat, and around a system of
sheaves or pulleys, and attached to the other boat, for the
purposes of steering said boats as well as of coupling them, and in
centering said boats together and forming
Page 141 U. S. 460
a universal joint between them by means of an overhanging guard
or bumper on the stern of the forward boat, with a central notch
therein, into which the projecting stem or cut-water of the rear
boat fitted. . . . My improvements,"
says the patentee,
"consist first in coupling and centering said boats together and
forming a universal joint between them by means of a chain, the two
ends of which are fastened to opposite points on the stern of the
forward boat, and the central part to the stem or cut-water or some
central point on the bow of the rear boat, so as to hold its stem
or cut-water against the overhanging guard or bumper of said
forward boat, said chain serving to center the boats without the
necessity of any notch in the overhanging guard for the stem of the
rear boat to fit into, and at the same time coupling and holding
the boats together and forming a universal joint between them;
second, in attaching the ends of the coupling and steering chains
to the boats by means of crow-foot claw-hooks, so as to render the
chains easily adjustable, as hereinafter shown and described."
He claimed as his invention:
"1. The combination of the two boats, A and B, the steering
chain, a, passing around sheaves or pulleys, and around the
windlass, C, or its equivalent, the overhanging guard or bumper on
the stern of the forward boat, and the chain, D, attached to
opposite points on the stern of said boat and to the stem or
central part of the bow of the rear boat, so as to form a universal
joint between them, and keep them coupled and centered,
substantially as shown and described."
"2. In combination with the boats, A and B, and the coupling and
steering mechanism herein described, the claw hooks,
h h,
for attaching and adjusting the coupling and steering chains,
substantially as set forth."
Upon the hearing in the circuit court, an interlocutory decree
was entered in favor of the plaintiff finding the validity of the
patent and the infringement by the defendant and ordering a
reference to a master for an account of the "profits, gains, and
advantages which the said defendant has received or made, or which
have arisen or accrued to it," from the said infringement, etc.,
but denying the injunction upon the ground, stated
Page 141 U. S. 461
in the opinion of the court, 5 F. 367, that its allowance would
cause much greater injury to the defendant than benefit to the
plaintiff. A large amount of testimony was taken before the master,
who reported that he found no proven profits, savings, or
advantages to have been received by or accrued to defendant from
the manufacture, use, or sale of the plaintiff's patented
improvements. Exceptions were filed to this report, and upon the
hearing of such exceptions a final decree was entered in accordance
with the report, and that the plaintiff should recover his costs,
except the costs of the accounting before the master, and the costs
of the exceptions to the master's report, which were awarded to the
defendant. The decree was subsequently amended by ordering that the
defendant pay all the costs of the suit. From the decree denying
the recovery of profits and damages an appeal was taken to this
Court.
MR. JUSTICE BROWN, after stating the case, delivered the opinion
of the Court.
About three months prior to the patent in suit, and on April 16,
1872, another patent, numbered 125,684, was issued to Elijah and
John McCreary for "an improvement in steering devices for canal
boats," etc., which covered a similar coupling together of boats,
barges, and scows by means of a vertical groove formed in the
overhanging stern guard or bumper of the forward boat, which groove
was entered by the cut-water of the rear boat, a chain being used
for connecting the boats, which chain was so connected with a train
of gear-wheels placed in the rear boat as to enable both boats to
be steered by means of a windlass. The first claim of this patent
was as follows:
"1. Two boats or barges, A and B, fitted together by means of a
projecting cut-water fitting into a notch in an overhanging guard,
as described, and coupled and steered by means of a
Page 141 U. S. 462
chain or rope having its ends fastened to the forward boat and
passing around pulleys . . . substantially as herein set
forth."
The second claim was immaterial.
In patent numbered 129,844 the patentee stated that his
improvement upon the prior patent consisted
"in substituting for the projecting cut-water and notch,
described in said patent for centering the boats together and
forming a universal joint, a chain attached at both ends to one
boat, and at its center to a central point on the adjacent end of
the other boat,"
etc.
One of the main difficulties in the assessment of damages in
this case arises from the fact that the two patents, the first one
of which is not included in this bill, describe a system of
coupling together two boats by means of chains and a centering
device much the same, differing from each other only in two
particulars: First, in the earlier patent, the two boats are
connected together by the cut-water of the rear boat fitting a
groove in the overhanging guard of the forward boat, while in the
later patent, there is substituted for this a chain attached by
both ends to the forward boat, and at its center to a central point
on the adjacent end of the rear boat. Second, in the later patent,
the center of the chain is wound around an horizontal windlass,
while in the earlier it is wound around a separate wheel, geared to
the windlass below the deck -- a difference which it was not
insisted was material. In this connection, the master found
that
"the combination of the patent in suit and that of the prior
patent are practically identical in function and result, and are
identical in constitution, save only as to one particular element
-- the 'centering' device. As therefore the combination of the
patent in suit is one the sole invention and novelty of which
consisted of a single element, the profit which complainant is
entitled to recover from the defendant in this case is that which
he may have shown to have accrued to it from the use of
substantially that new element in substantially the combination in
which he has described and claimed it."
Exception was taken to this finding upon the ground that the
finding contained an
"erroneous construction of law
Page 141 U. S. 463
if it means that the complainant is not entitled to recover the
entire profits which have accrued to the defendant from the use of
boats containing the invention described and claimed in the patent
in suit because of anything shown or described but not claimed in
said prior patent of the complainant, numbered 125,684."
Plaintiff claimed, and offered evidence tending to show, that
defendant had made a large sum in "savings" by the transportation
of coal in its infringing double boats in place of single boats,
and asked that defendant should be held accountable to him for
these savings (less the cost of applying the couplings to the
double boats) as its profits from the use of this improvement.
The master found, however, in this connection, that complainant
was not entitled, upon the proofs, to recover from the defendant as
its profits from the use of his "improvement" the entire savings in
freight accruing from the shipping of coal in the infringing
coupled boats in place of single boats, but was restricted to such
as were attributable solely to the improvement.
There is no doubt of the general principle that, in estimating
the profits, the defendant has made by the use of the plaintiff's
device, where such device is a mere improvement upon what was known
before, and was open to the defendant to use, the plaintiff is
limited to such profits as have arisen from the use of the
improvement over what the defendant might have made by the use of
that or other devices without such improvements. This is a familiar
doctrine, announced by this Court in a number of cases.
Seymour v.
McCormick, 16 How. 480;
Mowry v.
Whitney, 14 Wall. 620;
Littlefield v.
Perry, 21 Wall. 205;
Elizabeth v. Pavement
Co., 97 U. S. 126;
Garretson v. Clark, 111 U. S. 120.
The important question in this connection is whether, in
considering what was already known and open to the defendant to
use, we are to include the device shown in patent numbered 125,684,
issued to Elijah and John McCreary about three months before the
patent in suit. There were other methods of connecting vessels in
train, such as were disclosed in the British patent to Taylor of
1846, the British patent to Bourne
Page 141 U. S. 464
of 1857, the patent to McCreary of 1860, constructed and put
into use upon a coupled boat called
The Experiment, the
British patent to Bartholomew of 1862, and the American patent to
Stackpole of 1866, but none of these seems to have been adapted to
defendant's use with any advantage over single boats, because, as
the master found, "their construction was such that a rudder could
not be applied to the forward boat." He found further that
"these prior boats were in other respects inferior to the
machines of complainant's patent, but their fatal defect for
defendant's purposes was this inability to apply a rudder to the
forward boat, which was therefore unmanageable when separated from
its mate."
There is nothing, however, to show that the device described in
the patent of April 16, 1872, to the McCrearys was not an operative
device, and if it were open to the defendant to use, the plaintiff
in this action would be limited in his recovery to the profits
which the defendant made by the use of the improvement described in
the second patent over the device shown in the earlier patent. This
improvement, as before stated, consisted principally in
substituting for the projecting cut-water and notch described in
the earlier patent a chain attached at both ends to one boat, and
at its center to a central point upon the adjacent end of the other
boat. No attempt was made to distinguish or separate the profits
arising from this improvement, the testimony being directed only to
showing the profits defendant made by the use of coupled boats in
the place of single boats. There was evidence tending strongly to
show that the transportation of coal in double boats was more
economically effected than in single boats, but none that the
second patent was superior to the first. Indeed, the plaintiff
admitted in his argument that the patent of April 16th described a
plan of coupling and steering very little inferior to that
described in the patent sued upon, and that, if defendant had
pirated that invention instead of this, the same result in profits
or savings would have been realized. Plaintiff, however, contended
in this connection that in determining the state of the art, or
what was open to the defendant to use, the invention disclosed in
the earlier patent to the McCrearys
Page 141 U. S. 465
should not have been considered, as this patent was also owned
by John McCreary, the plaintiff, by assignment of Elijah's interest
to him before the reissue sued upon was granted, and hence that
defendant had no more right to use this invention than the other.
Had this earlier patent also been made the basis of suit in this
case, this position would have been impregnable; but the question
here is not whether the defendant had in fact the right to use this
patent, but whether, so far as this particular case is concerned,
it had not that right. To hold that it had not is to assume that
the plaintiff owned the earlier patent, that it was a valid patent,
and that defendant had infringed it. This was a question that could
not be raised upon an assessment of damages in this case. It is
true the plaintiff claims to be the sole owner of this patent, that
it described an invention both novel and useful, and that defendant
had appropriated this device as well as the one set forth in the
patent in suit; but these were issues which could only be
determined upon a bill framed for this purpose, and could not be
made the subject of contest in a collateral proceeding. For the
purposes of this suit, the master was bound to assume that this
patent was open to the defendant; otherwise he might be led into
inquiries entirely foreign to the subject of his investigation.
Suppose, for example, this patent had belonged to another
person, and the plaintiff, foreseeing that the defendant would upon
this hearing claim that it was open to him, had purchased it, and
taken an assignment of all claims for past infringements, could he
in this way forestall such defense? Clearly not. In such case, the
defendant might justly reply:
"I was summoned here to answer a charge of infringing your
patent, and in case it is established to pay such damages as may be
awarded for such infringement; but I could not anticipate that you
would purchase another patent and set it up in aggravation of such
damages."
But if this could not be done pending the suit, it is difficult
to see how it could be done before suit brought if such patent be
not made the basis of the suit. Had the defendant attempted to
justify by setting up a device obtained subsequent to the date of
the plaintiff's
Page 141 U. S. 466
patent, a different question would have arisen. This question
was considered by MR. JUSTICE HARLAN in
Turrill v. Illinois
Central Railroad, 20 F. 912, in which he held that in
estimating the profits made by the infringer of a patent, the
comparison must be between the patented invention and what was
known and open to the public at and before the date of the
patent.
The case of
Seymour v.
McCormick, 16 How. 480, while not exactly in point,
is somewhat analogous to the one under consideration. This was an
action at common law to recover damages for the infringement of
certain improvements in reaping machines. There were three patents
issued, in 1834, 1845, and 1847. The earliest of these patents had
expired. The first count charged an infringement of the patent of
1845; the second that of 1847. The plaintiff, to avoid delay,
consented to go to trial on the second count only, which was for an
improvement upon prior patents, consisting chiefly in giving to the
raker of the grain a convenient seat upon the machine. The court
permitted the jury to assess the damages as for the infringement of
the entire machine, defendant insisting that he was liable only for
the damages occasioned by the infringement of the improvement -- in
other words, that the plaintiff had the right to recover as great
damages for the infringement of the patent set forth in the second
count as if he had proceeded upon both counts and shown
infringement of all the patents claimed. The case was removed to
this Court by writ of error, and the plaintiff in error argued that
for the purposes of that suit, the defendant had a perfectly lawful
right to use the machine described in the patent of 1834, which had
in fact become public property, and the improvements in the patent
of 1845, and a large portion of those included in that of 1847.
These covered the whole of the improved reaper, except what related
to the seat and its combination with the reel. He further claimed
that as the plaintiff had decided not to proceed on his patent of
1845, that was in effect public property; that by waiving any right
to proceed upon the first claim of his patent of 1847, he had
limited himself to the seat, combined with the reel, and that
Page 141 U. S. 467
the ruling of the court allowed the plaintiff damages to as
great an extent as if the trial had been in a suit upon the old
patents of 1834 and 1845, and upon the first claim of that of 1847
as well as the second, and was therefore erroneous. It seems that
the defendant ought to attack the validity of the patent of 1845,
but the evidence was ruled out; still the plaintiff was allowed to
recover for the profits of the part of the machine covered by this
patent, as if it had been included in the patent of 1847. This
Court adopted the reasoning of the plaintiff in error, reversed the
judgment of the court below, and held that the plaintiff should be
limited in his recovery to the damages occasioned by the
infringement of the second claim of the patent of 1847. "The jury,"
said Mr. Justice Grier in the opinion of the Court,
"gave a verdict for nearly double the amount demanded for the
use of three several patents, in a suit where the defendant was
charged with violating one only, and that for an improvement of
small importance when compared with the whole machine."
If plaintiff be unable to recover damages for the infringement
of a patent originally included in a suit, but upon which he elects
not to proceed, it is difficult to see how he can recover for the
infringement of one not made the basis of any action at all. It is
true that the combination of the earlier patent in this case is
substantially contained in the later. If it be identical with it,
or only a colorable variation from it, the second patent would be
void, as a patentee cannot take out two patents for the same
invention.
James v. Campbell, 104 U.
S. 356. If it be for a different device, then plaintiff
could not recover damages for its infringement without making it
the basis of suit.
We think, therefore, that for the purposes of this suit, the
earlier patent must be deemed open to the defendant, and no damages
having been proved for the infringement of the improvement under
the later patent, considered separately, the finding of the court
below was correct.
We do not wish to be understood as expressing an opinion
whether, if there had been an earlier patent for coupling vessels
outstanding at the date of this infringement, and owned
Page 141 U. S. 468
by a third person, defendant could claim that the device
described in such patent was open to it. In such case, it might
perhaps be held that the plaintiff was entitled to stand upon the
prima facie validity of the earlier patent, and that
presumptively the defendant would be bound to pay a royalty to the
patentee, and, having elected to make use of the plaintiff's
invention, would be bound to pay a like royalty to him. This
question, however, is not presented in the case under
consideration.
The decree of the court below must be
Affirmed.
MR. JUSTICE BRADLEY and MR. JUSTICE GRAY were not present at the
argument, and took no part in the decision of this case.
