American Can Co. v. Goldee Mfg. Co.
| Decision Date | 15 November 1927 |
| Docket Number | No. 1046.,1046. |
| Citation | 31 F.2d 492 |
| Parties | AMERICAN CAN CO. v. GOLDEE MFG. CO., Inc. |
| Court | U.S. District Court — Eastern District of New York |
Munday, Clarke & Carpenter, of Chicago, Ill., for plaintiff.
Mock & Blum, of New York City, for defendant.
This is a hearing on exceptions to the master's report on an accounting in an action for an infringement of patent No. 1,316,240, for lunch box, issued by the United States Patent Office, to John M. Hothersall, assignor to American Can Company, and dated September 16, 1919.
There were two claims of the patent involved in the suit before the court.
Claim 1 was held invalid and reads as follows: "A lunch box comprising a body, and a cover hinged to the same, said cover being of campanulate form in cross section, a thermos bottle arranged parallel with the hinge of the cover and seated within the upper part of the same and held from sidewise movement by the curved side walls of the cover, and a spring arranged across the lower part of the cover and movably connected with the sides thereof and bearing on the under side of the bottle to press the latter into its said seat."
Claim 2 was held valid and infringed and reads as follows:
The patent was held to be for an improvement, and the improvement upheld and decreed by the court to have been infringed by the defendant consists of the particular clip or spring by means of which the bottle is held in place.
The manufacture of kits of the form and description of the base of the kit was not new, and various means of holding the bottle in place, such as leather straps and metal springs, were well known and some of them were on the market during the time of the alleged infringement.
The evidence presented before the master shows that the entire commercial value of the lunch kit was not due to the improvement covered by claim 2, but that the infringed improvement represented but a negligible part of its commercial value, and the defendant did a constantly increasing business, notwithstanding the fact that it was competing not only with the plaintiff, but also with others, and changed the form of its clip or spring means four times.
The evidence presented before the master does not show that the salability of the kits in question was enhanced by the use of the infringing clip, but it was shown that there was no appreciable difference between the cost of manufacturing and installing such infringed clip and another manufactured by the defendant which this court held did not infringe.
The defendant having shown that the entire value of the infringing article was not due to plaintiff's patent, the burden of proof was on the plaintiff to separate and apportion the defendant's profits and the plaintiff's damages by evidence reliable and tangible and not conjectural or speculative. Westinghouse Electric & Mfg. Co. v. Wagner Mfg. Co., 225 U. S. 604, 32 S. Ct. 691, 56 L. Ed. 1222, 41 L. R. A. (N. S.) 653; Dowagiac Mfg. Co. v. Minnesota Moline Plow Co., 235 U. S. 641, 35 S. Ct. 221, 59 L. Ed. 398; Underwood Typewriter Co. v. E. C. Stearns & Co. (C. C. A.) 227 F. 74; Metallic Rubber Tire Co. v. Hartford Rubber Works Co. (C. C. A.) 275 F. 315. And this burden the plaintiff has not borne.
The cases of Armstrong v. Belding Bros. & Co. (C. C. A.) 297 F. 728, and Wales v. Waterbury Mfg. Co. (C. C. A.) 101 F. 126, are not in point, as all the profits in the case at bar are not attributable to the invention, and only in rare cases can the whole marketable value of a machine or a collection of devices be attributable to a patented feature...
To continue reading
Request your trial
-
Reliance Molded Plastics, Inc. v. Jiffy Products
...Dowagiac Manufacturing Co. v. Minnesota Moline Plow Co., 1915, 235 U.S. 641, 35 S.Ct. 221, 59 L.Ed. 398; American Can Co. v. Goldee Manufacturing Co., D.C.N.Y.1927, 31 F.2d 492, affd. 2 Cir., 1929, 31 F.2d Reliance has pleaded waiver and estoppel as affirmative defenses to the counterclaim.......
-
Am. Infertility of N.Y., P.C. v. Deep Blue Health N.Z. Ltd.
...111 U.S. 122, 124 (1884); Mayor, Aldermen & Commonalty of City of New York v. Ransom, 64 U.S. 487, 488 (1859); Am. Can Co. v. Goldee Mfg. Co., 31 F.2d 492, 493 (E.D.N.Y. 1927), aff'd, 31 F.2d 494 (2d Cir. 1929))) However, Plaintiff cited "no authority" - and Judge Moses found none - "for th......
-
Austral Sales Corporation v. JAMESTOWN METAL E. CO.
...with royalties paid on comparable devices. The statute contemplates proof of this character, 35 U.S.C.A. § 70. American Can Co. v. Goldee Mfg. Co., D.C., 31 F.2d 492, affirmed 2 Cir., 31 F.2d 494, is in point as are numerous cases therein The plaintiff asks treble damages on account of alle......