Columbia & N. R. R. v. Chandler

241 F. 261 | 9th Cir. | 1917

GILBERT, Circuit Judge

(after stating the facts as above). [1] Upon a careful consideration of the record, we find no ground to disturb the findings of the court below that the invention was patentable, that the patentee was the original inventor of the improvement described in the patent, and that the trucks manufactured by the Seattle Company infringed the same.

| 2] The damages awarded to the appellees by the court below are based wholly upon the profits which the appellees lost on the sale of each set of trucks furnished the appellants by the Seattle Company. There can be. no claim for damages for making or causing to be made the trucks which were constructed by that company. The contract for their construction was entered into on February 9, 1915, and was immediately proceeded with. The application for the patent was not filed until February 25, 1915, and the patent was issued on May 25, 1915. At the date of the patent all the trucks made by the Seattle Company had been completed. Up to that time the Seattle Company had no knowledge that Chandler claimed the invention as his or had applied for a patent. In Gayler v. Wilder, 10 How. 477, 493 (13 L. Ed. 504), Chief Justice Taney said:

“Tlio Inventor of a new and useful improvement certainly lias no exclusive right to it. until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is issued.”

In Marsh v. Nichols, Shepard & Co., 128 U. S. 605, 612, 9 Sup. Ct. 168, 170 (32 L. Ed. 538) the court said;

‘•Until the patent is issued there is no property right in it; that is, no such right as the inventor can enforce. Until then there is no power over its use, which is one of the elements of a right of property in anything capable of ownership.”

In Lyon v. Donaldson (C. C.) 34 Fed. 789, Judge Blodgett said;

“I do not think defendant should be mulcted in damages for machines sold prior to the issue of plaintiff’s patent. At the time these sales were made, plaintiff had no patent, and, although we may assume from the proof that defendant knew when he made his machines that plaintiff was the inventor, yet, until plaintiff made his application for a patent, it was not certain that he would ever apply for or obtain one. Hence defendant cannot be said to have been a trespasser upon plaintiff’s property before his (plaintiff’s) patent was obtained.”

In Brill v. St. Louis Car Co. (C. C.) 80 Fed. 909, the court said:

“Manifestly, therefore, there can be no invasion of the patentee’s rights by any manufacture or use of the device, the subject-matter of the expected patent, prior to the date of the patent.”

But it does not follow, from the fact that there can be no claim of damages for manufacturing the trucks before the issuance of the patent, that the trucks were set free from the monopoly of the patent, and could thereafter be used, without liability to the inventor. It is true that, if they were constructed with the knowledge and consent of the inventor and before the date of his application for patent, the appellants were free to use those specific trucks during the life of 'the patent, uuder Revised Statutes, § 4899 (Comp. St. 1916, § 9445), which provides:

“Every person wlio purchases of the inventor, or discoverer, or witli his knowledge and consent constructs any newly invented or discovered machine, or other patentable article, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or purchased without liability therefor.”

Among the cases applying the statute are Wade v. Metcalf, 129 U. S. 202, 9 Sup. Ct. 271, 32 L. Ed. 661; Dable Grain Shovel Co. v. Flint, 137 U. S. 41, 11 Sup. Ct. 8, 34 L. Ed. 618; Federal Const. Co. v. Park Improvement Co. (C. C.) 166 Fed. 128; Wade v. Metcalf (C. C.) 16 Fed. 130.

The letter written to the appellants by the inventor on November 17, 1914, sufficiently expressed consent to the construction of the trucks which were built by the Seattle Company. At that time the inventor evidently had no thought of applying for a patent. But at or soon after the date when the appellants gave their order to the Seattle Company the inventor in effect recalled his permission, and notified the appellants that the idea of the invention was his own, and that the Seattle Company could not build trucks embodying the same. Nor is it shown ■that any of the trucks had actually been constructed before February 25th, the date when the application for the patent was made. Under the facts as shown, therefore, the appellees were entitled to recover from the appellants the value of that which they took.

But the obstacle standing in the way of awarding a decree for such recovery upon the case made in the court below is that the appellees, upon whom the burden of proof rested, offered no evidence of an established license or royalty for the use of the invention, and no proof-of any advantage or saving to the appellants from such use, and there was no basis for the assessment of the same. There was evidence of defects in the construction of the Seattle trucks, which lessened their utility. That being the situation, “it was permissible to show the value by proving what would have been a reasonable royalty, considering the nature of the invention, its utility and advantages, and the extent of the use involved.” Dowagiac Mfg. Co. v. Minnesota Plow Co., 235 U. S. 641, 648, 35 Sup. Ct. 221, 224 (59 L. Ed. 398); Hunt v. Cassiday, 64 Fed. 585, 587, 12 C. C. A. 316.

While the decree is affirmed in other respects, the decree for the payment of damages is reversed, and the cause is remanded to' the court below, to be heard anew upon the evidence already taken and such further evidence as may be submitted, and for further proceedings in conformity with this opinion; the injunction against the use of the 20 pairs of trucks in question to be dissolved, upon payment by the appellants of the amount so to be found due to the appellees.