216 F. 604 | 6th Cir. | 1914
Lead Opinion
When this case was here on the former appeal, we held (191 Fed. 579,112 C. C. A. 185) that six out of the eight claims sued upon were either invalid or not infringed, but we sustained the validity and found infringement of claims 12 and 13 of patent No. 777,096. Upon the subsequent accounting in the court below,
The patent had reference to a device or structure for making blueprints by artificial light. It consisted of a glass cylinder around the outside of which were exposed the sensitive paper and the negative, backed by an opaque curtain, facing inwardly, and on the inside of which an electric arc lamp was caused to be lighted for a suitable period. The cylinder was vertical and the electric light, suspended from above, was passed slowly and steadily down through the axial line of the cylinder. Of course, a suitable supporting frame was necessary to keep the cylinder and light and their various appurtenances in proper mutual relation. It is apparent, from our previous opinion, that the invention as to which patentability and infringement were found had reference only to the means provided for causing and regulating the-desired downward motion of the lamp. This is illustrated by claim 12, which reads:
“12. In a printing apparatus the combination of a printing cylinder suitably mounted, an electric lamp, electric connections with said lamp, a liquid cylinder, and hollow piston rod operating in said liquid cylinder and means whereby the hollow piston rod is automatically raised by the counterbalance weight of the lamp, substantially as described.”
“The question of profits can hardly depend on the largely fortuitous language of the claim in extending the combination, instead of on the actual advance in the art.”
And it is made additionally clear by the discussion in Seeger v. American (D. C.) 212 Fed. 742, 748, 749. We therefore conclude that, for the purpose of awarding profits, defendant’s structure is not to be treated as merely and only an embodiment of plaintiff’s invention ; and it follows that an apportionment of the profits derived from the sale of that structure is prima facie necessary.
3. Can the profits be apportioned? Plaintiff recognizes his initial burden to show the negative of this proposition, (Westinghouse v. Wagner, 225 U. S. 604, 32 Sup. Ct. 691, 56 L. Ed. 1222, 41 L. R. A. [N. S.] 653), and claims to have discharged the burden by calling, as his witness, Mr. Young, defendant’s manager, who testified that there were no bookkeeping data from which could be made up any accurate statement of the portion of profits attributable to the liquid cylinder; but he further testified that in his opinion the defendant’s machine shotild, for this purpose, be divided into its component parts, and the profits apportioned equally to each part. His method of division was to say that the glass cylinder, the curtain, the supporting frame and the lamp with its connections, each constituted, for this purpose, one-fourth of the machine; that 25 per cent, of the profits should be apportioned to each; and that this portion attributed to the lamp and connections should be again subdivided into four parts with 6% per cent, to each — viz., the lamp, the electric wires, the automatic cut-out, and the hydraulic cylinder. This being the state of the record, we are
Whether, in the absence of any helpful opinion, the court should presume the propriety of such equal division need not be decided; in this case, the witness Young was thoroughly qualified, the theory and effect of his testimony are that the situation justifies apportionment by division, and we think ourselves justified in adopting that view.
We do not, however, agree with the witness as to the proper separation to be made. The structure itself speaks. The marketed device really consists of two main parts, to one of which the invention pertains and to the other of which it is incidental: The glass cylinder or printing frame and its connections and appurtenances constitute one part; the lamp and its connections and appurtenances constitute the other. One is the means for giving out and controlling the rays of light which do the printing; the other is the means for receiving and giving effect to the light rays. The supporting frame is partially incidental to each of these two natural divisions. It follows that, in the absence of any conditions making an equal division improper, and in the presence of the undisputed testimony that this general method is correct, the profits should be divided into two equal parts, one of which should be apportioned to the light-giving part of the device.
It follows that plaintiff was entitled to one-half and to only one-half of the profits.
In No. 2597, the decree is modified so as to award one-half the sum fixed by the District Court; but with interest from the date of that
We do not regard our conclusions in paragraphs 1 and 3 as inconsistent with what is decided in Brennan v. Dowagiac, 162 Fed. 472, 89 C. C. A. 392. Whether the invention oí the patent, by reason of the form of the claim, pervades tiie entire commercial structure so that the structure becomes the thing patented and nothing else, is to be determined in each case according to tho facts of that case, and not merely from the face of the patent but from the entire record. The same thing is true regarding the question whether the patent itself or tho oral evidence or both justify dividing the structure into parts and apportioning the profits among these parts. In the Brennan Case, there was no occasion to consider any such division.
Rehearing
On Application for Rehearing.
The application for rehearing calls attention to an undoubted error in the opinion. It is there said that plaintiff sought a personal decree against John P. Young, who is not a party to the cause. This is a misstatement of plaintiff’s position. He sought to have his decree against the corporation cover profits which had not been received by the corporation, but by Mr. Young after the corporation went out of business, and while business was continued by Mr. Young, but under the same old trade name. The transfer of the business was cleárly proved; it was a good-faith transaction, and the corporation is not liable.
Plaintiff also asks that we permit, or that we direct the court below to permit, the filing of a supplemental bill, or such other amended pleading as may be thought proper and sufficient to include Mr. .Young, and to warrant a final decree against him f,or the profits derived by him personally. It is urged that the joinder of the corporation and Young in one case would be proper, because he personally instigated and directed infringement by the corporation, and was personally liable, and that it would be proper in one accounting to hold him personally for all profits, corporate and individual, and to hold the corporation for what it had received. Without determining this question, or whether the settled rules will permit the desired new pleadings, or will compel the filing of a new bill, the court below will be directed, within such reasonable time as it may fix, to receive and consider such application of this character as plaintiff may make, and with the same force and effect as if the application had been made on the final hearing before the court on exceptions to the master’s report.
The application for rehearing is denied.