2 F. 677 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1880
After a careful examination of the evidence submitted to the master, including both the testimony and the exhibits, I have come to the conclusion that none of the exceptions filed to his report, by the complainants or by the defendants, ought to be sustained. The report is an intelligent and discriminating deduction from the evidence, and the conclusions which the master has reached are strongly fortified by his reasoning. I can add little to what he has said beyond an expression of my concurrence.
In the endeavor to ascertain the profits, if any, which the defendants derived from the use of the patented invention, both parties agreed during the argument that the rule stated in Mowry v. Whitney, 14 Wall. 620, and repeated in subsequent cases, is to be followed. That rule is that the measure of profits, as distinguished from damages, for which an infringer is responsible, is the aggregate of gains or savings which he has made from the use of the patented invention, above what he could have made, in doing the same work, from the use of any other device or process existing at the time, capable of accomplishing the same purpose, or attaining the same result, and free, or open, to public use.
This rule is founded upon the soundest reason. It is only that which was previously not known — or, in other words, it is only the addition to human knowledge and convenience which a patentee has made — that he can be said to own. The patent laws give him an exclusive right to that addition, and to the advantages resulting from it, and to nothing more. Undoubtedly, it may be a benefit to the community to have two modes of doing certain work, instead of one, both equally economical and convenient, accomplishing the same result, and each still patentable; but, as was well remarked by the master: “Unless a patentee can show such an absolute advantage in the use of his patent over results which could be reached by other processes in common and unrestricted use, there has been nothing really gained, no advance made by his invention. In such a case, though he may maintain a
The rule stated in Mowry v. Whitney was applied by the master to the facts as they appeared in the case. But he found, after comparison of the patented invention with other devices in use before the invention was made, and ever since in use, — devices open to the public, and free to be used by anybody, — that the defendants had received no gains, profits or advantages by reason of their infringement of the complainants’ letters patent, and that no such gains, profits or advantages had accrued to them by reason thereof. In this finding I concur. The evidence certainly established that a locomotive with plain forward driving-wheels, — that is, with its forward driving-wheels without flanges, — and with a rigid truck, is in all respects quite as convenient and economical as is a locomotive with such a truck as the patent describes. There is no gain, profit or advantage in the use of one over the use of the other. The former was in common use when the complainants’ patent was granted. It was free to be used by the defendants. But the complainants argue that because it was not employed by the defendants when they began to use the combination of the swinging truck with a locomotive, the comparison of advantages should be made with an engine having flanged forward driving-wheels and a rigid truck.
I do not assent to this view. The combination protected by the patent is not that of a swinging truck, with a particular kind of engine, such as on© having flanged forward driving-wheels. It is a combination of such a truck with any locomotive for railroad uses. It is the advantage of such a combination to which the patentee is entitled. Certainly, if the defendants had never used any locomotive when they began to employ the complainants’ invention, they would,
But were it conceded that the defendants in this case did secure someadvantagefrom the use of the complainants’patented device, instead of other devices they were at liberty to use, (which I am unable to perceive,) I think there is not sufficient in the evidence to enable me to make any reliable estimate of the value of that advantage. The defendants are not to be held liable for profits in any amonnt unless there is some satisfactory evidence that profits to that amount were made, though they may be answerable in damages for their invasion of the complainants’ right. Some witnesses, it is true, have given estimates of the saving of wear by the use of the swinging truck. But an examination of their testimony convinces me that their estimates are mere guesses, without any reliable basis. There are no facts in evidence to justify them. Besides, the comparisons upon which they rest their conjectures are inadmissible in view of what I have said. They rest upon the supposed wear of tires or flanges under different conditions
The case, therefore, is one for damages only. The evidence shows to my satisfaction that the complainants had a fixed royalty of $100 for each locomotive to which the invention was applied. The master adopted that as a proper standard for estimating the damages. In this I think he was justified by the case of Birdsall v. Coolidge, 3 Otto, 64. That, it is true, was an action at law. But there is no conceivable reason why the damages sustained by a patentee from tire infringement of his patent are not the same whether he proceeds at law or in equity. Applying this standard, and adding interest to the royalties, the master has reported the damages to be $89,644, the invention having been used by the defendants in 614 engines. That sum will certainly cover all the damages the complainants have sustained, and all possible profits the defendants have made, if they made any.
A doubt arose in my mind at first whether interest should have been added by the master to the aggregate of the royalties, but further reflection has removed the doubt. As I have noticed, the royalties were allowed as the measure of damages. It is doubtless the general rule that interest prior to the final decree is not to be allowed upon profits or damages, because, until the decree, they are unliquidated. Mowry v. Whitney, 14 Wall. 653. But the rule is not without exceptions. We said in that case: “We will not say that, in no possible case, can interest be allowed.” The present seems to be one not within the reason of the rule, and therefore proper for an exception. The damages cannot be said to have been unliquidated from the first. The amount of the royalty was fixed when the defendants began to use the inven
This is all I need say of the case. All the exceptions filed to the master’s report are overruled, and his report is eon-.firmed. Let a final decree, accordingly, be prepared.