14 Blatchf. 265 | U.S. Circuit Court for New York | 1877
In the opinion given by me upon the merits of this case, it was held: 1. That the Thompson patent was not intended to include, and did not include, a claim to an invention or discovery of the use of wet tan as a fuel. 2. That the operation of the heat or fire of the ash pits in drying the wet tan, was not a part of the claim. 3. That the parts or combinations of the furnace were not claimed, except in their application to the preparation and combustion of wet fuels. 4. That the construction and operation of the mixing chamber was the elemental idea of the patent, and that this was an improved machine by which the principle of mixing and applying the different heated gases is carried out. 5. That the defendants’ machines infringed the right thus secured by Thompson’s patent.
In examining the exceptions made to the master’s reports, I am not able to see that he has erred in the principles of law laid down by him. The principles laid down by the master, which are embraced within the first four of the complainants’ exceptions, fall within the conclusions above stated, and the exceptions must be overruled.
The fifth exception is to that part of the report which announces “that the complainants’ patent only secures to the patentee a part of the furnace, and it was the duty of the complainants to show by proofs, which they have failed to do, the particular profits which have accrued to the defendants from the use of the particular improvement of Thompson’s, and that this was necessary in order to show any savings to the defendants, or profits made by them, by the use of Thompson's invention.” This principle is sound, and, applied to the present case, means, that the defendants cannot be charged with the profits arising from the use of a furnace which bums wet tan as a fuel, and which dries the tan, in its use, by means of its fires or ash pits, and which also uses a mixing chamber upon the principle of Thompson’s furnace. The first two operations the defendants have the right to use, and all the profits and advantages to be made from their use belong to them. They infx-inge upon no right of Thompson or the complainants, in such use. Thompson's patent gives a monopoly of the use of the mixing chamber only, and it is only for the profits that arise from that portion of the furnace that he can claim damages. It is possible that the profits made by the defendants’ machine are in spite of, rather than in consequence of, the use of the mixing chamber described. Conceding that the apparatus and process of Thompson are used by the defendants, it does not follow that the profits of the business are due to that source. The master justly says, that it is the duty of the complainants to make proof of the profits arising from the use of that portion of the furnace which is included in Thompson’s improvement. The opinion before referred to, and that of Judge Blatchford in the Thome Case (Black v. Thorne [Case No. 1,465]), both hold, that the furnaces constructed after the models of the Hoyt, Sparrowbush, Crockett and Morrison furnaces, as arranged before the date of Thompson’s invention, are not in conflict with Thompson’s patents. I consider it clear, therefore, that the principle laid down by the master, as applied to this case, is a sound one. It is not enough, therefore, for the plaintiffs to prove, that, in burning wet tan in his furnace, and in using Thompson’s improvement, the defendant Knight saved ?5,691 in the item of wood, between January 1st, 1864, and May 22d, 1872. They must show, also, that this economy was due to the use of Thompson’s improvement, to wit, the construction and apparatus of the mixing chamber. This they fail to do.
The plaintiffs also except to the decision of the master in permitting proof to be made, that the defendants are now burning wet tan in Hoyt’s or Crockett’s furnaces. This is supposed to be what is meant by the seventh exception, which is entirely general in its terms, not specifying whose testimony, or on what points, or on what occasion, or as to what subject, the objection is taken. I think this exception must be overruled for the reasons following: 1st. It is too general. 2d. Assuming that it refers to the evidence intended to rebut the claim of damages, by showing that- an equally good result was produced in the furnaces in which wet tan is burned which did not use Thompson’s improvement, it comes within the principle of Mowry v. Whitney, 14 Wall. [81 U. S.] 620. What advantage did the defendants derive from using the plaintiffs’ improvement, over any other furnace open to their use? 3d. If, as I have before stated, the plaintiffs have failed to establish their claim by showing what portion of the profits was due to the use of Thompson’s improvement, then the defendants are not put upon their defence in that respect, and, whether they gave incompetent evidence, or no evidence, is not important. If their evidence, in this respect, is all stricken out, they are protected by the plaintiffs’ failure. They are not called upon to rebut until the plaintiff has made out a case.
The plaintiffs contend, further, in their
I have not discussed or passed upon the exceptions seriatim or by numbers, but the views expressed cover the whole case, and I am of the opinion, and do decide, that each and every one of the said plaintiffs’ exceptions should be overruled.