Dobson v. Dornan

• Decision Date: 19 April 1886
• Citation: 118 U.S. 10,30 L.Ed. 63,6 S.Ct. 946
• Parties: DOBSON and another v. DORNAN and others. Filed
• Court: U.S. Supreme Court

118 U.S. 10

6 S.Ct. 946

30 L.Ed. 63

DOBSON and another v. DORNAN and others.

Filed April 19, 1886.

[Syllabus from pages 10-11 intentionally omitted] Richard P. White and H. T. Fenton, for appellants, John Dobson and another.

L. C. Cleoman, for appellees, John Dornan and others.

BLATCHFORD, J.

This is a suit in equity brought in February, 1875, by the appellees, trading as Dornan, Maybin & Co., against the appellants, John Dobson and James Dobson, in the c

ircuit court of the United States for the Eastern district of Pennsylvania, for the infringement of letters patent No. 6,822, for a design for a carpet, granted to Charles A. Righter, August 19, 1873, for three and one-half years. The entire specification is as follows: 'Be it known that I, Chas. A. Righter, of the city of Philadelphia, county of Philadelphia, state of Pennsylvania, have invented and produced a new and original design for carpets, of which the following is a specification: The nature of my design is fully represented in the accompanying photographic illustration, to which reference is made. I claim as my invention the configuration of the design hereunto annexed, when applied to carpeting.' The photographic illustration is a six-inch square, containing a single figure or design. The only defense set up in the answer is non-infringement. Issue being joined, proofs were taken, and the case was heard, and in April, 1876, a decree was made finding that the patent was valid, and had been infringed, and awarding to the plaintiffs costs, an account of profits and damages before a master, and a perpetual injunction.

The master made his report in April, 1882. He found that the defendants had made no profits, and stated thus the contending views of the parties as to the proper rule of damages: 'The complainants asked to have awarded to them, as damages and compensation for the injury inflicted upon them, whatever protit the defendants may have made, and also whatever loss they, the complainants, had incurred, which could be measured by the profits that would have accrued to them if they had made the exclusive sales of the carpet, deducting in such case the amount of profits, if any, made by the defendants. The defendants, however, contended that all that the complainants were entitled to was not what they, the defendants, had made or saved on the carpets, but only what they made or saved by reason of the use of the pattern, as compared with what they could have made without it, and therefore, unless they could sell the carpet bearing the design at a higher price than other carpets, whereby they made more or lost less, no profit resulted to them. They further contended that, unless it was shown by direct evidence that the complainants would have made the sales which the defendants did, had they not infringed, the fact could not be inferred.' The master found that the profit of the plaintiffs consisted in the exclusive use of the invention, and in the monopoly of manufacturing for others to use; that they sold their carpets at from 10 to 15 cents a yard more than the defendants did, and made a profit, in 1874, of 13 3/4 per cent., and in 1875 of 10 3/4 per cnet., their average price per yard being more than one dollar; that the defendants might have made an equal profit if they had asked the same prices, and the benefit, gain, or advantage to them might be reasonably estimated as equivalent to the money profit they might have made; that it was to be presumed that the defendants' carpets displaced the plaintiffs' in the market; that it was proper to award to the plaintiffs an amount equal to the profits they could have made, in 1874 and 1875, on the carpets made and sold by the defendants, if the plaintiffs themselves had made and sold them; that the defendants made and sold, in 1874, 19,243 1/2 yards, which would have yielded, at one dollar a yard, $19,243.50, on which the profits of the plaintiffs, at 13 3/4 per cent., would have been $2,645.97; that the defendants made and sold, in 1875, 31,280 1/2 yards, which would have yielded, at one dollar a yard, $31,280.50, on which the profits of the plaintiffs, at 10 3/4 per cent., would have been $3,362.65; and that, therefore, the plaintiffs had sustained $6,008.62 damages by the infringement of the patent.

The defendants excepted to the report, but the court confirmed it, and, in October, 1882, rendered a decree for the plaintiffs for $6,128.79, from which the defendants have appealed.

It is assigned for error that the patent is void on its face for want of a sufficient description and claim. It was issued under the act of July 8, 1870, c. 230, (16 St. 198.) Sections 71, 72, and 76 of that act provided as follows:

'Sec. 71. Any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture, bust, statute, alto-relievo, or bas-relief; any new and original design for the printing of woolen, silk, cotton, or other fabrics; any new and original impression, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and original shape or configuration of any article of manufacture,—the same not having been known or used by others before his invention or production thereof, or patented, or described in any printed publication,—may, upon payment of the duty required by law, and other due proceedings had, the same as in cases of inventions of discoveries, obtain a patent therefor.

'Sec. 72. The commissioner may dispense with models or designs when the design can be sufficiently represented by drawings or photographs.'

'Sec. 76. All the regulations and provisions which apply to the obtaining or protection of patents for inventions or discoveries not inconsistent with the provisions of this act shall apply to patents for designs.'

It is contended that section 26 of the act of July 8, 1870, applies to the present case. That section provides that, before any person shall receive a patent for his invention or discovery, he shall file in the patent office a written description of it, and 'particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.' It is urged that section 26 was not complied with in this case, and that the patent is void because it contains no description, and no proper claim. But we are of opinion that the description and claim are sufficient. The purport of the description is that what the photographic illustration represents as a whole is the invention. It is that which is claimed, when applied to carpeting. The design is a pattern to be worked into a carpet, and is within the statute. Claiming the 'configuration of the design' is the same thing as claiming the design or the figure or the pattern. It is better represented by the photographic illustration than it could be by any description, and a description would probably not be intelligible without the illustration.

In Dobson v. Bigelow Carpet Co., 114 U. S. 439, 446, S. C. 5 Sup. Ct. Rep. 945, the

claim of the design patent was 'the design for a carpet, substantially as shown.' Objection was taken to the form of the claim; but this court said it saw no good objection to the form, and that the claim referred to the description as well...