American Sulphite Pulp Co. v. De Grasse Paper Co.

• Decision Date: 11 July 1911
• Parties: AMERICAN SULPHITE PULP CO. v. DE GRASSE PAPER CO.
• Court: U.S. District Court — Northern District of New York

190 F. 39

AMERICAN SULPHITE PULP CO. v. DE GRASSE PAPER CO.

United States Circuit Court, N.D. New York.

July 11, 1911

Frank T. Benner, for complainant.

W. B Van Allen and Henry Schreiter, for defendant.

RAY District Judge.

The Circuit Court of Appeals, following and approving American Sulphite Pulp Company v. Howland Falls Pulp Co., 80 F. 395, 25 C.C.A. 500, held that defendant, De Grasse Paper Company, had infringed the Russell patent, No 11,282, dated November 15, 1892 (reissued), the claims of which read as follows:

'1. The improved pulp-digester herein described, having an outer shell A and a continuous lining or coat B of cement as described, applied to the interior of the said shell, for the purpose set forth.

'2. The improved pulp-digester herein described, having an outer shell A, a continuous lining or coat B of cement, substantially as described, applied to the interior of the said shell, and an interior lining of tiles C, all substantially as set forth.'

Interlocutory judgment accordingly and for an accounting having been entered, the matter went to a special master to take evidence and report as to the complainant's damages. Much time was consumed and much evidence taken; the hearings continuing over a long period of time. It is clear that defendant's position on the accounting was or should have been well understood by the complainant. After the master had submitted his 'Draft' report, the complainant moved before the master to open the accounting for the purpose of taking additional testimony. There was no pretence of newly discovered evidence, and clearly there was no surprise. The master was fully justified in refusing to reopen the accounting.

On the accounting, the complainant waived and abandoned all claim to profits, and relied on proving damages based on the claim that it had an established and substantially uniform license fee of $1.10 per cubic foot for digester linings made and put in under the patent in suit, which complainant alleged and alleges was the proper measure of damages.

The special master has found that the evidence does not establish any uniform or fixed license fee, and that, as complainant has waived all claim to profits and it has not been shown that defendant derived any advantages by reason of the infringement of the patent in suit, the complainant is entitled to recover nominal damages only. This is finding 20, and reads as follows:

'20. From the foregoing facts I find complainant has failed to prove an established license fee for the lining of digesters under the patent in suit at the time defendant commenced to infringe said patent and as the complainant has waived all claim to profits, and as it has not been shown that defendant derived any advantages by reason of said infringement, I therefore report that in my opinion the complainant is entitled to recover nominal damages only.'

It appears in the case that the complainant had another patent granted to one Jurschina, assignor of one-half to one Kammann, No. 379,580, dated March 20, 1888, for 'self-hardening cement,' the claim reading:

'The herein described composition of matter, consisting of silica and water-glass-- i.e., sodium or potassium silicate-- to which my hydraulic cement may be added, substantially as and for the purpose specified.'

The specifications say:

'This invention relates to and consists in a novel self-hardening composition or cement, consisting, essentially, of finely-ground quartz (silica) and water-glass (potassium or sodium silicate), or the said elements combined with Portland or other hydraulic cement. The object of this invention is to produce a self-setting and hardening compound adapted for use in molding, reproducing fac similes of objects of art, and other purposes-- as, for instance, for purposes of printing.'

The licenses granted by the complainant and paid for by the licensees in nearly every instance, if not in all instances, covered and granted the right to use the processes and products described in both patents, and there was no division of the license fee paid. Hence it was impossible to determine how much was paid in any instance for the license under either patent.

The complainant contended, and contends, that the Jurschina patent is for a mere structural detail in case it is valid and that it cannot be assumed a license under it in connection with the license for the use, etc., of the Russell patent had any value. There is no proof that the Jurschina patent had no value, or that the use of the patent, etc., was of no value. The right to work under and according to both patents was granted to the several...