This Court will not reverse the conclusions of the master,
sustained by the court below, upon the extent of the infringement
of a patent when the evidence is conflicting unless some obvious
error or mistake is pointed out.
Where a patent is for a particular part of an existing machine,
it is necessary, in order to establish a claim for substantial
damages for infringement, to show what portion of the profits is
due to the particular invention secured by the patent in suit; but
when the patented invention is for a new article of manufacture,
the patentee is entitled to damages arising from the manufacture
and sale of the entire article.
The defendants not having set up in the court below a claim for
an allowance of manufacturer's profits, or offered evidence by
which it could be estimated, there is no foundation on which to
base such a claim in this Court.
The case is stated in the opinion.
Page 155 U. S. 266
MR. JUSTICE SHIRAS delivered the opinion of the court.
On the 14th day of March, 1881, William I. Keep filed a bill of
complaint in the Circuit Court of the United States for the
Northern District of New York against John Hobert Warren, Joseph W.
Fuller, George A. Wells, and Walter P. Warren, alleging
complainant's ownership of several letters patent and infringement
by the defendants.
The subject matter of the letters patent was certain devices and
designs for base-burning stoves and stove grates.
The case was put at issue by an answer and replication, but on
the 20th day of March, 1883, a decree was entered by consent
declaring the validity of the letters patent set forth in the bill
and infringement by the defendants of some of them.
The decree directed that an account should be taken for profits
and damages upon all the patents so declared to be infringed, but
contained the following provision:
"That such gains, profits, damages, and accounting shall not
apply to any stoves made or sold by said defendants before February
1, 1876, nor to any grates made or sold by said defendants before
that date, except as to grates covered by said letters patent No.
139,583, and supplied by defendants after January 1, 1876, to
stoves originally sold by them without such grates."
The master round that between January 1, 1876, and January 1,
1882, the defendants sold grates upon which the profits amounted to
$11,363.54, and that amount, with six cents damages and costs, was
awarded by the master to and in favor of the complainant.
Exceptions of this report were filed by the defendants, alleging
that the evidence did not sustain the master in finding the number
of the infringing grates sold by the defendants, nor in finding the
amount of profits which the defendants had realized from the
infringement.
Page 155 U. S. 267
The court below sustained an exception to the action of the
master in allowing the sum of $348 as profits on 400 grates, made
and sold by the defendants between January 1, 1879, and July 1,
1879, but overruled the other exceptions, and entered a final
decree in favor of the complainant for the sum of $10,510.86, with
costs, from which decree the defendants appealed to this Court.
The first error insisted upon is that the evidence did not
justify the master in finding the number of grates sold by the
defendants during the six years over which the accounting extended.
The defendants' contention is not that due effect was not given to
the evidence adduced on their behalf, but that the plaintiff's
evidence, consisting chiefly of the testimony of Keep himself, did
not clearly establish the number of the infringing grates sold.
Our examination of this part of the subject has not enabled us
to approve the defendants' contention. The master's action in
restricting his finding to grates sold as separate and independent
articles, and in excluding from the account all grates which were
sold in or with a stove, was quite as favorable to the defendants
as they had any right to claim. In finding the number of grates
sold during the period in question as separate articles, the master
depended chiefly on the entries in the defendants' books, as
testified to and explained on the part of the complainant by Keep,
who had been engaged with the defendants for more than eight years,
and claimed to be thoroughly acquainted with their methods of
business, and, on the part of the defendants, by L. W. Drake, who
was their assistant superintendent. There was a considerable amount
of this evidence, and it was to some extent conflicting. The master
acted in view of this evidence, and the court below concurred in
his finding except in some unimportant particulars. As no obvious
error or mistake had been pointed out to us, their conclusions must
be permitted to stand.
Tilghman v. Proctor, 125 U.
S. 136;
Crawford v. Neal, 144 U.
S. 585;
Furrer v. Ferris, 145 U.
S. 132.
Assuming that the number of infringing grates sold by the
defendants was correctly found, we have next to consider
Page 155 U. S. 268
whether the master erred in awarding to the complainant the
entire profits made upon the grates so sold. The appellees'
contention is that there was no evidence tending to show how much
of the profits was due to the complainant's invention, and that
hence he was entitled to recover nominal damages only. It is, no
doubt, well settled that where a patent is for a particular part of
an existing machine, it is not sufficient to ascertain the profits
on the whole machine, but it must be shown what portion of the
profits is due to the particular invention secured by the patent in
suit.
Blake v. Robertson, 94 U. S.
728;
Dobson v. Hartford Carpet Co.,
114 U. S. 439. But
it is equally true that where the patented invention is for a new
article of manufacture which is sold separately, the patentee is
entitled to damages arising from the manufacture and sale of the
entire article.
Manufacturing Co. v. Cowing, 105 U.
S. 258; Hurlbut v. Schillinger,
130 U.
S. 456;
Crosby Valve Co. v. Safety Valve Co.,
141 U. S. 441.
The grates on whose sale the master assessed profits were not
sold as an incident to any particular stove, but as an independent
marketable article, and the infringers must pay the entire profits
realized from the sale thereof. The statement that at this late day
there can be a grate for use in ordinary stoves which is entirely
new and patentable in all its parts and as an entirety is somewhat
surprising, but that is what we learn from this record. The patent
infringed contains eight claims, of which seven are for the several
parts of the grate and the eighth for the entire device, and the
defendants are precluded by the decree, to which they consented,
from contending that the plaintiff is to be restricted in his
demand for damages to any one feature or part of the grate.
It is further claimed that the master ought to have reported
nominal damages only, because there was evidence before him to the
effect that the defendants, at the time they made and sold the
complaint's grate, likewise made and sold another kind of grate
called the "Hathaway grate," and that the same price was received
for both kinds. From this it is said to follow that there was no
advantage derived by the defendants from the manufacture and sale
of the complainant's grate
Page 155 U. S. 269
above that which they would have received had they made and sold
the Hathaway grated only. We do not think that the consequence
suggested necessarily follows as matter of fact, nor that it has
any relevancy as matter of law.
Mowry v.
Whitney, 14 Wall. 620, and
Littlefield v.
Perry, 21 Wall. 205, which are relied on by the
defendants to sustain this contention, were both cases in which the
patented features were so blended with other features not covered
by the patent that it became necessary to inquire into what portion
of the defendants' profits was due to the patented features, and to
apportion the profits accordingly. Thus, it was said in
Mowry
v. Whitney:
"The patent is for an entire process, made up of several
constituents. The patentee does not claim to have been the inventor
of the constituents. The exclusive use of them singly is not
secured to him. What is secured is their use when arranged in the
process."
In
Littlefield v. Perry, the patent was for certain
improvements in cooking stoves, and the court below, having found
an infringement, decreed an account
"of all the profits, gains, and advantages which the said
defendants have received, or which have arisen or accrued to them,
from the manufacture, use, or sale of stoves embracing the
improvements described in and covered by the said letters
patent."
This Court said:
"The decree is, as we think, too broad. . . . The order is to
account for all profits received from the manufacture, etc., of
stoves embracing the improvements covered by any of the patents.
This would cover all the profits made upon a stove having in it
anyone of the improvements patented. The true inquiry is as to the
profits which the defendants have realized as the consequence of
the improper use of these improvements. Such profits belong to the
plaintiff, and should be accounted for to him."
We think the court below was justified in saying:
"The complainant's grated was made and sold separately from
stoves. Unquestionably it was intended for use in stoves, but so
are many devices that may be the subject of distinct inventions. It
was not sold for use in one pattern of stove alone; it could be
used in many different stoves. Although in general appearance
Page 155 U. S. 270
like other grates, it is so constructed that no part can be used
upon any other grate and no parts of other grates can be used upon
it. Remove the patented features and nothing remains. Although it
is an improvement upon stoves, the complainant is not seeking to
recover the profits upon the stoves, but upon the improvement only.
The rule requiring that the profits arising from the patented
features must be separated from those arising from the unpatented
features has little application in a case where every feature is
patented."
Finally, it is contended that the master and the court below
erred in not allowing credit to the defendants for a manufacturer's
profit.
We are relieved from considering what might be a problem of some
difficulty -- namely, when a complainant's damages are to be
measured by the profits of the defendant, what credit should be
allowed to the latter, as a mere agency for producing the patented
article, for a so-called "manufacturer's profit" -- by the fact
that the defendants neither before the master nor in the court
below made any claim for such an allowance or offered any evidence
by which it could be estimated. The complainant testified as to the
cost of making the grates, and stated that he included in his
estimate of the cost a manufacturer's profit. As no countervailing
evidence was put in by the defendants and no specific exception was
made to the master's calculations that he made no allowance for a
manufacturer's profit, we think there is no foundation on which to
base such a claim now.
The decree of the circuit court is
Affirmed.