293 F. 261 | S.D.N.Y. | 1920
There have been no exceptions at all, properly speaking, to the master’s report, but both sides have consented to treat the execeptions filed to the draft report as equivalent to exceptions to the report proper, and on that stipulation I shall dispose of the case.
To this the plaintiff answers that it is entitled to the presumption, whatever may have been the event, that the defendant could not originally have got the contract, had he not bid upon the specifications as submitted. But this I think is a conclusion which is by no means necessary in cases where the owners eventually consent to the substitute. It seems to me impossible in such cases to say a priori whether the defendant would or would not have been able originally to persuade the owners to accept a contract without the invention. This uncertainty, which is inherent in respect of some, at least, of these contracts, necessarily makes it doubtful whether the defendant took away from the plaintiff those contracts because the invention was a condition precedent to his success. It is not necessary to do more than throw a doubt upon this aspect of the exception, nor have I examined the evidence with a view of learning in respect of which jobs the plaintiff has carried the burden of showing that the defendant could not have got the contracts without promising to infringe, because I think the inquiry immaterial to an accounting for damages for infringement. If the plaintiff chooses to amend its bill, so as to include this new aspect of the case, it is possible that the jurisdictional features may exist, and that it may be even now incorporated into this litigation; but upon the record as it stands the second exception is sustained.
The fourth exception rests upon the theory that the patent covers only the wings, pintle, and chains, but does not cover the casing. This clearly is not the’ proper scope of the claims. It is quite true that Van Kannell’s original patent, which is now a part of the art, included the wings and the casing, and that the new element in the patent in suit was only the collapsible wings and the chain, automatically released; but the patent was not for the wings and chain, but for these in combination with the casing. I do not understand that any of the contracts included more than this combination, together with such trim as was necessary to fill in between the casing and the janibs and lintels. The whole job was contracted for as a unit, and the case is therefore one in which the defendant is obliged to disentangle the profits on this subsidiary trim from those on the combination as a whole. In short,
The fifth exception is covered by the second.
After Judge Hunt’s opinion the defendant continued to infringe. This must be taken as deliberate, whether the defendant took advice or not. I will award as punitive damages $750.
This opinion will require the. parties to make a recalculation, but will not, I think, require any new reference. The plaintiff will tax the expenses of the reference as part of his costs.
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