13 Blatchf. 389 | U.S. Circuit Court for the District of Northern New York | 1876
The rights of the defendant became fixed at the date of the decree in the suit between Birdsall and TVickson & Van TViekle, the vendors to Spaulding of the machine the use of which is sought in this suit to be enjoined. That decree was made in January, 1873. Its force and effect, as between the parties and their privies, could not be affected by a subsequent agreement between the plaintiff in that suit, Birdsall, and the plaintiffs in the present suit. Their agreement bore date in September, 1S75. It attempted to engraft a clause contained in it upon an earlier agreement between them, which bore date in September, 1874. This it was competent for them to do. so far as their own rights were concerned; but the previously existing rights of third persons could not be thus affected. The decree against Spaulding's vendors must be looked to, in order to determine whether its effect was to authorize the use by Spaul-ding of the patented machine which he had purchased of them, until it should be incapable of further use. There is no question that the machine now owned by the defendant Spaulding was one of those for the making and selling of which TVickson & Van TViekle were sued by Birdsall, and for which he claimed to recover both profits and damages; nor that it was embraced in the decree in that suit; nor that the decree has been fully satisfied, in respect to the damages and profits awarded. The question is, therefore, what effect is to be given to the decree. By its terms, it adjudges that the defendants Wiek-son &. Van TViekle have infringed the patents owned by Birdsall, by making and vending the machines manufactured by them, and orders that they account to the plaintiff both for the damages sustained by him and the profits made by them, in consequence of such infringement. It then declares that the amount of such damages and profits is adjudged to be the sum of one thousand dollars, and directs the mode of payment.
It seems to be well established, that, when a patentee gets his remuneration by patent or license fees, a recovery of the license or patent fee from an infringer, and its payment, authorizes him to use the particular articles for which such recovery' has been had. On the other hand, when a patentee chooses to use his invention himself, and find his remuneration in the sale of the products of its use. and to prevent others from using his invention, it is his right, and then a recovery for profits and damages will be limited to the profits and damages up to the time of the recovery. Such a recovery will not carry with it any right to the further use by the infringer, of the invention. Suffolk Manuf’g Co. v. Hayden. 3 Wall. [70 U. S.] 315; Spaulding v. Page [Case No. 13,219]. But, where the patentee sells his patented instrument or machine for use by others, finding his remuneration in the profit of the sale of the manufactured machine or instrument, it is obvious that his interest is promoted by increasing the sale, and that into his profit enters the value of the patented invention over and above the cost of manufacture and the ordinary fair profit of the manufacture. Even if no patent or license fee is fixed, the value thereof, as a profit, enters into the
The motion for an injunction must be denied.
