17 F. 736 | U.S. Circuit Court for the District of Eastern Michigan | 1883
There is no doubt whatever of the general proposition that the patentee of an improvement is limited in his recovery to
The difficulty is in the application of this principle. Thus, if one discovers a new composition of matter, such as gun-cotton, nitroglycerine, or vulcanized rubber, or invents some new machine, such as the telephone, or some new article of manufacture, such as barbed wire, or a new pavement, he would obviously be entitled to damages arising from the manufacture and sale of the entire article. Upon the other hand, if his invention were limited to some particular part of a large machine, such as the cut-oif of an engine, the axle of a wagon, or the seat upon a mowing-machine, it is equally clear that his recovery must be limited to such profits as arise from the manufacture and sale of the patented feature. His damages, too, must be proved, and not left to conjecture; and the fact that it is impossible to separate the profits arising from the improvement from those incident to the manufacture of the whole machine, is an insufficient reason for awarding the plaintiff more than he is justly entitled to receive. Philp v. Nock, 17 Wall. 460; Calkins v. Bertrand, 8 Fed. Rep. 755; Gould Manuf’g Co. v. Cowing, 12 Blatchf. 243. In case ho is unable to prove how much of the entire profit upon the machine is due to his patent, he can recover only nominal damages. Blake v. Robertson, 94 U. S. 728.
In the case under consideration the master took the view that the plaintiff was the inventor of a rustic trunk in its entirety; an article complete in itself, differing from anything else in use before, and depending for its value upon the patented feature. He accordingly allowed the plaintiff the entire net profits made by the defendant in the manufacture and sale of the infringing trunks. Herein, we think, the master was in error. The invention is described as a rustic trunk, but in fact it consisted of nothing more than attaching to an ordinary frame strips of wood laid in close proximity to each other, at right angles to the grain of the trunk, thereby increasing its strength, durability, and beauty, and diminishing to some extent the cost of its manufacture. These slats (for they were all that was claimed as new) composed but a small part of the entire trunk, and took the place only of an ordinary leather covering. There was still the frame, the lock, hinges, catches, lining, trays, boxes, and interior decorations unaffected by the patent. We are bound to infer there was a profit upon the manufacture and sale of these as well as the plaintiff’s attachment. ,A proper method of estimating dam
If the profits upon plaintiff’s trunks were no larger than upon an. ordinary trunk, it would indicate that he had suffered no damages legally capable of estimation. It is true that defendant may have sold trunks which the plaintiff would have sold if defendant had not infringed, but the damages thereby occasioned cannot be inferred without proof. Buerk v. Imhaeuser, 2 Ban. & A. 452.
Defendant’s sales may have been the result of superior .energy, diligence, and business capacity, or of the accidents of trade; and we think the burden is upon the plaintiff to show that such sales were attributable to the increased value given to the trunk by his patent.
As the case now stands there must be a decree for nominal damages only, and for a perpetual injunction.
