Dowagiac Manufacturing Company v. Minnesota Moline Plow Company No Dowagiac Manufacturing Company v. Ernest Smith No

• Decision Date: 11 January 1915
• Docket Number: Nos. 6 and 7,s. 6 and 7
• Citation: 35 S.Ct. 221,59 L.Ed. 398,235 U.S. 641
• Parties: DOWAGIAC MANUFACTURING COMPANY, Petitioner, v. MINNESOTA MOLINE PLOW COMPANY et al. NO 6. DOWAGIAC MANUFACTURING COMPANY, Petitioner, v. ERNEST F. SMITH and Luppo W. Zimmer. NO 7
• Court: U.S. Supreme Court

235 U.S. 641

35 S.Ct. 221

59 L.Ed. 398

DOWAGIAC MANUFACTURING COMPANY, Petitioner,

v MINNESOTA MOLINE PLOW COMPANY et al.

NO 6.

DOWAGIAC MANUFACTURING COMPANY, Petitioner,

v. ERNEST F. SMITH and Luppo W. Zimmer.

NO 7.

Nos. 6 and 7.

Argued April 15 and 16, 1913.

Decided January 11, 1915.

Messrs. Fred L. Chappell and Otis A. Earl for petitioner.

Mr. Thomas A. Banning for respondents.

Mr. Justice Van Devanter delivered the opinion of the court:

We have here to review two decrees dealing with an accounting of profits and an assessment of damages resulting from the infringement of a patent granted February 10, 1891, for certain 'new and useful improvements in grain drills, commonly known as 'shoe drills." The suits wherein these decrees were rendered were both brought by the same plaintiff, but were against different defendants, charged with separate infringement. The plaintiff, besides owning the patent, was manufacturing and selling drills embodying the patented improvements; and the defendants, who were whole-sale dealers in agricultural implements, were selling drills embodying substantially the same improvements. The drills made by the plaintiff were sold under the name 'Dowagiac,' and the names McSherry' and 'Peoria' were applied to most of the others. The defendants purchased from manufacturers who, as has since been settled, were infringing the plaintiff's rights. At an early stage in the litigation the validity of the patent was sustained, the defendants were held to be infringers, further infringement by them was enjoined, and the cases were referred in the usual way for an accounting of profits and an assessment of damages. 108 Fed. 67, 55 C. C. A. 86, 118 Fed. 136. Upon the evidence submitted the masters reported that the recovery should be limited to nominal damages, and their reports were confirmed by the circuit court. Its action was affirmed by the circuit court of appeals. 105 C. C. A. 526, 183 Fed. 314.

The conclusion that the recovery should be thus restricted was rested upon these grounds: First, that the patent was not for a new and operative drill, but only for designated improvements in a type of drill then in use and well known; second, that the value of drills embodying this invention, as marketable machines, was not wholly attributable to the designated improvements, but was due in a material degree to other essential parts which were not patented; third, that the plaintiff failed to carry the burden, rightly resting upon it, of submitting evidence whereby the profits from the sale of the infringing drills could be apportioned between the patented improvements and the unpatented parts; and, fourth, that, although the number of sales made by the defendants was disclosed, the evidence did not present other data essential to an assessment of the damage sustained by the plaintiff by reason of the defendants' infringement.

Partly because another circuit court of appeals seemingly had reached a different conclusion in other litigation arising out of this patent (see McSherry Mfg. Co. v. Dowagiac Mfg. Co. 89 C. C. A. 26, 160 Fed. 948, 89 C. C. A. 512, 163 Fed. 34; Brennan & Co. v. Dowagiac Mfg. Co. 89 C. C. A. 392, 162 Fed. 472), and partly because of the importance of the questions involved, writs of certiorari were granted, requiring that these cases be certified here for review and determination. See Judicial Code, § 240 [36 Stat. at L. 1157, chap. 231, Comp. Stat. 1913, § 1217].

Since the writs were granted the rules bearing upon the apportionment of profits in such cases, the relative obligations of the parties to submit evidence looking to an apportionment, and the character of evidence which may be submitted, have been extensively considered and comprehensively stated in Westinghouse Electric & Mfg. Co. v. Wagner Electric & Mfg. Co. 225 U. S. 604, 56 L. ed. 1222, 32 Sup. Ct. Rep. 691. What was said there materially lessens our present task.

At the outset it should be observed that, while the defendants were infringers and bound to respond as such to the plaintiff, their infringement was not wanton or wilful. The masters and the courts below expressly so found, and the evidence sustained the finding. The defendants, therefore, were not in the situation of the infringing manufacturer in Brennan & Co. v. Dowagiac Mfg. Co. supra, of whom the circuit court of appeals for the sixth circuit said: 'It has made and sold these infringing drills with a purpose to imitate the patentee's construction.'

It is quite plain, as we think, that the patent was not for a new and operative grain drill, but only for particular improvements in a type of grain drill then in use and well known. The invention was so described in the specifications forming part of the patent. The inventor there said:

'This invention relates to new and useful improvements in grain drills commonly known as 'shoe drills;' and it consists in a certain construction and arrangement of parts, as hereinafter more fully set forth, the essential features of which being pointed out particularly in the claims.

'The object of the invention is to provide an independent spring pressure for each of the shoes and covering wheels of the drill, whereby the work of the drill is rendered efficient in uneven ground, and to provide means whereby said shoes and covering wheels may be raised from the ground when the implement is not in use, or when transporting it from one field to another.'

In keeping with this statement the claims in the patent were limited to a suitable construction and arrangement of spring pressure rods in combination with certain correlated elements of the seeding part of a grain drill,—the part which opens the furrows, guides the seed into them, and then closes them. Of course, this was an important part, but it was only that; for other parts were required to complete the machine and make it operative. Some of these were simple and easily supplied, such as the tongue and attachments to which the horses were hitched. Others were complex and required careful adjustment. This was especially true of the feeding mechanism whereby the grain was fed from the feed box or reservoir into the several hoppers in continuous, uniform, and precisely measured streams, so that it might be deposited in the furrows evenly and in suitable quantity. Only when all the parts were present and so adjusted as to perform their respective functions was the drill a practical and successful machine. In this respect no change resulted from the invention convered by the patent. It effected material improvements in one part, but did not obviate or diminish the necessity for the others.

We think the evidence, although showing that the invention was meritorious and materially contributed to the value of the infringing drills as marketable machines, made it clear that their value was not entirely attributable to the invention, but was due in a substantial degree to the unpatented parts or features. The masters and the courts below so found, and we should hesitate to disturb their concurring conclusions upon this question of fact, even had the evidence been less clear than it was.

In so far as the profits from the infringing sales were attributable to the patented improvements they belonged to the plaintiff, and in so far as they were due to other parts or features they belonged to the defendants. But as the drills were sold in completed and operative form, the profits resulting from the several parts were necessarily commingled. It was essential, therefore, that they be separated or apportioned between what was covered by the patent and what was not covered by it; for, as was said in Westinghouse Electric & Mfg. Co. v. Wagner Electric & Mfg. Co. supra (p. 615): 'In such case, if plaintiff's patent only created a part of the profits, he is only entitled to recover that part of the net gains.' In the nature of things the profits pertaining to the patented improvements had to be ascertained before they could be recovered by the plaintiff, and therefore it was required to take the initiative in presenting evidence looking to an apportionment. Referring to a like situation, it was said in the case just cited (p. 617): 'The burden of apportionment was then logically with the plaintiff, since it was only entitled to recover such part of the commingled profits as was attributable to the use of its invention.' But the plaintiff did not conform to this rule. It neither submitted evidence calculated to effect an apportionment, nor attempted to show that one was impossible; and this, although the evidence upon the accounting went far towards showing that there was no real obstacle to a fair apportionment. Certainly no obstacle was interposed by the defendants. It well may be that methematical exactness was not possible, but, as is shown in ...