Campbell v. City of New York

• Decision Date: 14 May 1897
• Citation: 81 F. 182
• Parties: CAMPBELL v. MAYOR, ETC., OF CITY OF NEW YORK.
• Court: U.S. District Court — Southern District of New York

81 F. 182

CAMPBELL v. MAYOR, ETC., OF CITY OF NEW YORK.

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

May 14, 1897

Harvey D. Hadlock, Walter K. Griffin, William T. Washburn, and John McDonald, for plaintiff.

Edmund Wetmore and John R. Bennett, for defendant.

WHEELER District Judge.

This suit was begun November 24, 1877, upon letters patent No 42,920, dated May 24, 1864, and granted to James Knibbs assignor, for a relief valve in steam fire-engine pumps. The patent was sustained, and the cause sent to an account of profits. Campbell v. Mayor, etc., 20 Blatchf. 67, 9 F. 500, and 47 F. 515. The master has reported profits from savings in making repairs, $28,336, with a comprehensive statement of evidence and findings as to this claim and others not allowed. The cause has now been heard upon exceptions by each party to this report. Some of which raise questions as to any recovery, and some as to any further recovery.

One general question arises upon the statutes of limitation of the state and of the United States. The infringement was begun in 1865, and continued till the expiration of the patent. When the patent was granted there was no federal statute of limitations applicable to infringements, and the state statute would govern. Campbell v. City of Haverhill, 155 U.S. 610, 15 Sup.Ct. 217. The state statute was displaced by section 55 of the patent act of 1870, which provided that 'all actions shall be brought during the term for which the letters patent shall be granted, or extended, or within six years after the expiration thereof. ' This provision was repealed by the Revised Statutes, but existing causes of action were saved by section 5599, with the same right of suit as if the repeal had not been made. The state statute had not run upon any part of this infringement at the time of the act of 1870; the federal statutes took place and saved all of that was prior to December 1, 1873, until six years after the expiration of the patent; and the state statute, which again took place, had not run upon what was after December 1, 1873, when this suit was commenced. So no part of the recovery sought here was barred, even at law, by any statute. Walk. Pat. Sec 472.

Another general question arises upon section 4900, Rev. St., which requires all patentees, their assigns and legal representatives, and all persons making or vending any patented article for or under them, to mark or label the articles 'Patented,' and prohibits the recovery of damages for infringement 'by the party failing so to mark,' except on proof of notice to the defendant. Mr. Justice Gray, in Dunlap v. Schofield, 152 U.S. 244, 14 Sup.Ct. 576, said:

'The clear meaning of this section is that the patentee or his assignee, if he makes or sells the article patented, cannot recover damages against infringers unless he has given notice of his right.'

Neither the plaintiff, nor any one for or under him, has made or sold this patented device; and he does not come, according to this construction, within this prohibition. The defendant had notice, July 11, 1877, which was alleged in the bill, and has been suggested to have worked an estoppel as to prior infringements. But the defendant did not act upon the notice with respect to prior, or even subsequent, infringements, so as to make the claim for the prior infringements inequitable because of that precaution as to further infringement, and the insertion of it in the bill would not be any express or implied waiver of other grounds of recovery.

The master reports:

'The Amoskeag Manufacturing Company, one of the largest manufacturers of steam fire engines, immediately appropriated the invention, and an engine equipped with it was delivered by that company to this city. All engines subsequently purchased contained the invention. Engineers in the department witnessed its operation, and one of them applied the device to an old engine then in use. The other engines were thereafter sent to the repair shop to be fitted out with the relieving mechanism. It was extremely valuable in and of itself, and it opened the way for other improvements, which enabled steam fire engines to be operated so as to extinguish fires with a minimum loss in the destruction of property, and to avoid needless waste of water. The superiority of an engine containing in its main water pump this relieving device over those known to the art at the date of the invention is conceded. * * * The first steam fire engine came permanently into service in this city in 1858. There was but one such engine in service in 1860, when Chief Decker took charge of the department. He left the service in 1865, at which time there were twenty-nine in active service and four under construction. The patent in suit was granted May 24, 1864, and the first engine fitted with the relieving mechanism came into the service of the city during the year 1865. At the end of 1866 all the old engines in active service had been fitted with the patented relief.'

That the plaintiff's--

'Claims are based upon benefits due wholly or in part to the patented device, which are as follows: (1) Economy in the use of water; (2) reduction in property destruction; (3) economy in engine and pump repairs; (4) prolongation in the life of engines; (5) stability, reliability, and increased efficiency in the use of engines; (6) economy in manual labor; (7) prolongation of the life and savings in the use of hose. As compared with the old style or solid pump engines, the evidence is conclusive that the defendant enjoyed each of the advantages above enumerated by the use in its fire service of steam fire engines subsequent to the grant of the patent in suit. Some of them were due solely to the relieving mechanism, and others were obtained by the use of that device in connection with subsequently patented controlling nozzles. There was a great saving in water, and the damage to property by water was materially reduced.'

The first two of these claims were abandoned for reasons given by the master.

The plaintiff improved as witnesses before the master chiefs of fire departments of the defendant, and foreman and others in those departments, some of whom had been engaged there from long before this infringement was commenced, and all were men of long experience about things connected with it, and of great skill and judgment concerning them. From their testimony as to the utility of the patented device, the uses made of it, and results produced, with their estimates as to the saving in number of men employed in making repairs, the master has found the defendant enabled 'to discontinue the services of two machinists in making repairs to engines and pumps, whereby it made a saving of three dollars per day for each of said men, amounting to the sum of $1,848 per year, for the period of fifteen years and four months, making an aggregate saving due to the invention of $38,336,' as before mentioned. Nevertheless, apparently because such evidence as to other claims was thought to be less competent, no other savings or profits are found. The exceptions raise questions as to this competency. The testimony is not that of mere experts giving opinions upon supposed cases, but of observers as well, stating facts from their own knowledge, with estimates and opinions thereupon. The cases most relied upon to show the incompetency of such evidence seem to be quite different from this one in this respect. Thus, in Mayor, etc., v. Ransom, 23 How. 487, the plaintiffs furnished no evidence as to damages or profits except that the invention was valuable, and could be applied at an expense of $25, thereby greatly increasing the power of the machine. In Ingersoll v. Musgrove, 14 Blatchf. 541, Fed. Cas. No. 7,040, which was on a patent for an improvement in cuspidors, the plaintiff showed merely that the defendant infringed, and his prices were reduced 30 per cent. In Sargent v. Manufacturing Co., 17 Blatchf. 249, Fed. Cas. No. 12,367, which was on a patent for an improvement on a lock, two witnesses appear to have estimated the value of the device to the defendant without stating facts as a foundation for the estimate. In Munson v. City of New York, 21 serving bonds, one witness testified, without stating facts for foundation, as to what, in his judgment, would be the advantage or benefit from the use of that plan. In Garretson v. Clark, 111 U.S. 120, 4 Sup.Ct. 291, which was on a patent for an improvement on a mop head, the plaintiff merely proved the cost of his mop heads and the price of which they were sold. In Coupe v. Royer, 155 U.S. 565, 15 Sup.Ct. 199, which was on a patent for an improvement on a machine for treating hides, one of the plaintiffs testified that, in his opinion, there would be a saving of four or five dollars a hide by using his machine over what it would cost to treat hides by any other method, and that the difference between the treating hides on his machine and by hand would be more than one dollar a hide. Such evidence alone was held in these cases, respectively, to be in competent. On the other hand, that the estimates and opinions of experts, and observers stating facts for foundation, are in many such cases admissible in evidence and competent from which to find ultimate facts relating to such subjects, is well shown in many books and cases.

In 1 Greenl. Ev. (Redfield's Ed.) Sec. 440a, it is said:

'Facts which are latent in themselves, and only discoverable by way of appearances more or less symptomatic of the existence of the main fact, may, from their vary nature, be shown by the opinion of witnesses as to the existence of such appearances or symptoms; such as the state of health or of the affections, as already stated. Sanity is a question of the same character. So, too, upon

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