134 F. 78 | 3rd Cir. | 1904
This bill alleges that respondents infringed claims Nos. 1, 2, 3, and 4 in letters patent No. 521,218, granted to John B. Paxton and Ellis I. O’Neill June 12, 1894, for fashioning devices for circular knitting machines. Upon argument the Circuit Court for the Eastern District of Pennsylvania so found, and entered a decree February 27, 1901, sustaining the validity of the patent, awarding an injunction against the respondents directing an accounting, and appointed a master to state the account. Subsequent to the issuing of the injunction, the respondents began the manufacture of a similar device, referred to in these proceedings as “Picker No. 3,” and the complainants came into court alleging an infringement of the same claims in their patent in the manufacture of this picker. This question was referred to the master already appointed, who found the respondents’ picker No. 3 did infringe, and further found and assessed damage to the complainants in the sum of $1,221.89. Upon hearing, this amount was reduced to $1,189.67, and a decree entered January 6, 1904, directing the respondents to pay complainants that amount, together with interest from the date of filing the master’s report, and costs. On February 3, 1904, the respondents appealed to this court, and assigned as error the decrees of the Circuit Court made and entered on February 27, 1901, and January 6, 1904. The assignments of
In an opinion reported in 107 Fed. 137, the court below held that respondents’ picker No. 2 infringes the claims in question, and awarded an accounting. In this, and for the reasons there stated, we concur; but the question as to whether picker No. 3 of respondents infringes the complainants’ device was not then considered, as it was designed and put upon the market subsequent to the determination of the question of infringement raised in the original bill, and while the question of account was before the master, to whom this question of infringement was also referred by the court. The master found that this picker infringes claims Nos. 1 and 2 of complainants’ patent, and included it in his report in assessing damages to them. This picker No. 3 carries the needle from the higher to the lower plane by a simultaneous rotary movement on the post, and a downward swing of the picker from a relatively fixed pivot on the lower end of the post, but at the same time it is a movement in a direction coincident with the axis of its rotation, and, instead of the arm sliding up and down the post, what has been aptly styled “the business end” of the arm, moves in a direction coincident with the axis of rotation. It appears that the complainants’ invention covers an improvement in fashioning device for circular knitting machines, and in the description they state that:
“Upon a consideration of the types of our invention described in the foregoing specifications it will be obvious that they all have in common a characteristic principal of operation, viz., that a rotatable arm, so mounted as to be free to move in a direction coinciding with the axis of its rotation, is combined with guiding devices which compel such movement in the direction of the axis of rotation whenever the arm is rotated. We thus obtain the needle-shifting action by a movement which is the derivative of the rotation of the arm caused by its engagement with the needle hub in the act of passing by the same. While, therefore, we have specified the preferred methods of effecting this derivative movement, we do not limit ourselves to the use of the specific devices shown for effecting it; the only essential being that there should be, in combination with a rotatable arm, having the capacity to move in the direction of its axis of rotation, mechanism which is capable of modifying what otherwise would be a mere movement of rotation, and obtaining a resultant movement in what may be appropriately termed a spiral path.”
It will be seen that this invention thus described is claimed by the complainants in their claims Nos. 1 and 2, as follows:
“(1) The combination with the needle cylinder, the cam cylinder, and actuating mechanism for said cam cylinder, of a rotatable needle shifter, capable of movement in the direction of its axis of rotation, and actuating mechanism arranged with reference to said needle shifter, substantially as set forth, whereby movement of the needle shifter in a direction coincident with said axis is derived from the rotation caused by engagement with and passage by the needle hub.
“(2) The combination, with the needle cylinder, the cam cylinder, and actuating mechanism for said cam cylinder, of a rotatable needle shifter, capable of movement in the direction of its axis of rotation, and a cam having an incline arranged with relation to said needle shifter, substantially as set forth, whereby movement of the needle shifter in the direction of said axis is derived from the rotation caused by engagement with and passage by the needle hub.”
It is conceded that 778 machines were made by the respondents, ■each having 4 pickers attached, a dropper and lifter on each side. They, however, only used a device or picker which infringed the complainants’ picker as a dropper or top picker, one on each side of each machine manufactured; but did not use the lifter. As it appears that $10 profit was made upon the sale of each machine by the respondents, the complainants urged that they were- entitled to one-half, or $5, on each machine, or, as an alternative, they were entitled to the amount of profit made by the respondents on the sale of each separate picker mechanism. It is established that they sold 204 machines containing picker No. 2 at a profit of $1.105 •on each picker (the said 204 machines being sold subject to a discount of 25 per cent.), equal to $225.42; 310 machines containing ■picker No. 2, at a profit of $1.935 on each picker, equal to $599.85; 164 machines containing picker No. 3 at a profit of $1.10 on each picker (the said 164 machines being sold subject to a discount of 25 per cent.), equal to $180.40; 100 machines containing picker No. 3 at a profit of $1.93 on each picker, equal to $193 — the total amount •of profits on pickers of the said 778 machines being $1.198.67. The respondents were selling the infringing device in connection with a machine or mechanism containing a large number of unpatented parts, which, as a whole, had a commercial value, upon which a profit was realized, according to the admissions of respondents themselves, of $10 on each machine. The complainants, however, failed to establish just what portion of the profits were due to the infringing mechanism, and the master rejected their claim for the whole of the profits on the machine sold, for the reason that a ■patentee must show in what particular his improvement had added to the usefulness of the whole machine or contrivance. He must separate its results distinctly from those of the other parts, so that the benefits derived from it may be distinctly seen and appreciated. Garretson v. Clark, 111 U. S. 121, 4 Sup. Ct. 291, 28 L. Ed. 371. It, however, plainly appears^ that the profits made upon each set of pickers attached to the machine sold by respondents, separate and apart from the machine itself, amounted in all to $1,198.67. This amount wa's awarded, and a decree entered accordingly.
The decrees of the court below are affirmed.