Dowagiac Mfg. Co. v. Minnesota Moline Plow Co.

• Citation: 183 F. 314
• Decision Date: 24 October 1910
• Docket Number: 3,041,3,042.
• Parties: DOWAGIAC MFG. CO. v. MINNESOTA MOLINE PLOW CO. et al. [1] SAME v. SMITH et al.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

183 F. 314

DOWAGIAC MFG. CO. v. MINNESOTA MOLINE PLOW CO. et al. ^[1]

SAME v. SMITH et al.

Nos. 3,041, 3,042.

United States Court of Appeals, Eighth Circuit.

October 24, 1910

Fred L Chappell, for appellant.

Thomas A. Banning (Banning & Banning, on the brief), for appellee Minnesota Moline Plow Co.

Julius S. Starr, for appellees Ernest F. Smith and Luppo Zimmer.

Before HOOK and ADAMS, Circuit Judges, and McPHERSON, District Judge.

ADAMS Circuit Judge.

These were suits in equity to enjoin the infringement of United States patent No. 446,230, granted to Will F. Hoyt, February 10, 1891, and for an accounting of damages and profits. The Circuit Court sustained the patent, awarded an injunction against infringement, and referred the causes to a master to take the account. He reported for nominal damages only. The Circuit Court confirmed the report and entered final decrees accordingly. Complainant appeals.

The only question is whether the proof warranted a finding for substantial damages. The invention was for an improvement in grain drills of a well-known pre-existing type, the 'shoe drill.' Its object, as stated in the specification of the patent, was '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.'

The patent assumes the existence of practically all the elements of well-known grain drills then in existence except the means for exerting an effective pressure upon the shoes in order to elevate or depress them as occasion required. The claims provide for a certain spring metal pressure rod to accomplish this purpose. The interposition of this rod, in combination with old elements, constituted the invention of the patent.

The principle and scope of the invention have been the subject of considerable judicial inquiry, and the results may be briefly stated: In McSherry Mfg. Co. v. Dowagiac Mfg. Co., 101 F. 716, 721, 41 C.C.A. 627, 632, it was said:

'Grain drills were old. Shoes and press-wheels are elements found in other structures. * * * That Hoyt's drill is a marked improvement over older structures is most clear. * * * Hoyt was not a pioneer. But this invention is clearly a meritorious one. * * *'

In Dowagiac Mfg. Co. v. Minnesota Moline Plow Co., 55 C.C.A. 86, 89, 118 F. 136, 139, this court had the Hoyt patent under consideration and said of it:

'The function of the device in the Hoyt patent was to control the depth of the cut of the shoe by a regular pressure easily exerted by means of a lever, and by the same means to regulate the shoe in uneven ground, and to raise the shoe from the ground when not in use. The principle of the combination was old. The result attained old. * * * Hoyt, it is true, was not a pioneer.'

It was there said by Judge Thayer, in a dissenting opinion not differing in this respect from the majority, as follows:

'Hoyt's patent, confessedly, does not cover a pioneer invention, but merely a new combination of old elements to accomplish a result which had previously been accomplished. * * * When the Hoyt patent was issued, what are termed 'shoe drills' were in common use, and various means had been employed by the manufacturers of such drills for applying pressure to the shoes, and for elevating them when the operator desired to do so.'

See, also, Dowagiac Mfg. Co. v. Fowler, 58 C.C.A. 643, 121 F. 988.

In Dowagiac Mfg. Co. v. Brennan & Co., 62 C.C.A. 257, 259, 127 F. 143, 145, the Circuit Court of Appeals for the Sixth Circuit, in considering this patent, said:

'The objects which the inventor had in view were twofold: First, to provide means for depressing the shoes of the drill to meet the requirements of its movements when in operation upon differing and uneven surfaces; and, second, to provide means for lifting the shoe and its attachments off the ground while the drill is being moved from place to place. There were in use devices for both these purposes, but they lacked the desired simplicity, convenience, and ease of management. * * * Some, perhaps all, of these advantages had, in a way, been supplied by the former art; but they had not, so far as we can see, been so completely gathered together or attained in so simple and useful a way.'

In view of these decisions, it is unnecessary to enter upon any independent discussion of the scope of the patent. While its claims call for all the elements of a then well-known grain drill, namely, transporting wheels, frame, hopper, shoe, draft-rods, clamping-plates, etc., the spring metal pressure rod used in combination with those elements constitutes the pith of the invention. It rests in the improvement of a specific part of a well-known structure.

Its character and scope have been thus briefly adverted to because they are important in determining the true measure of recovery for its infringement. The general rule in patent cases, like all others, is that a complainant is entitled to recover damages for the loss he has sustained by reason of the wrongful acts of the infringer, and the burden is on him to show how much it is. This was laid down by Mr. Justice Field, speaking for the Supreme Court, in the case of Garretson v. Clark, 111 U.S. 120, 4 Sup.Ct. 291, 28 L.Ed. 317. He said:

'When a patent is for an improvement, and not for an entirely new machine or contrivance, the patentee must show in what particulars his improvement has added to the usefulness of the machine or contrivance. He must separate its results distinctly from those of the other parts, so that the benefits derived from it may be distinctly seen and appreciated.'

And quoting from Mr. Justice Blatchford, who was the trial judge in the case, he added:

'The patentee must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative.'

Authorities to the foregoing general effect are numerous, and their citation would be useless.

Complainant offered proof tending to show the profits made by defendants in sales of the entire structure without making any apportionment of them to the patented feature, as distinguished from the balance of the drill. It claimed the doctrine of apportionment to have no application, first, because, although the patent contains but one novel element, the combination of that element with the others constitutes an appropriation of all of them in combination. In other words, the contention is that, because the Hoyt patent is a combination patent in which one novel feature is combined with several not novel, each and all of the elements, associated in that combination, are, for the purposes of an accounting, to be considered as appropriated by the patentee, and, if there is an infringement of the novel feature, all the profits made by the infringer upon the whole combined structure are recoverable, and that proof of those made by reason of the novel feature alone is unnecessary. Reliance for this contention is placed upon the cases of McSherry Mfg. Co. v. Dowagiac Mfg. Co., 89 C.C.A. 26, 160 F. 948, and Brennan & Co. v. Dowagiac Mfg. Co., 89 C.C.A. 392, 162 F. 472.

Without now analyzing these cases, it serves our present purpose to say that if they support the contention of the complainant they seem out of harmony with the doctrine of the Supreme Court and our court as disclosed in many cases and particularly the following: Garretson v. Clark, supra; Tilghman v. Proctor, 125 U.S. 136, 8 Sup.Ct. 894, 31 L.Ed. 664; McCreary v. Pennsylvania Canal Co., 141 U.S. 459, 12 Sup.Ct. 40, 35 L.Ed. 817; Crosby Valve Co. v. Supply Valve Co., 141 U.S. 441, 453, 12 Sup.Ct. 49, 35 L.Ed. 809; Sessions v. Romadka, 145 U.S. 29, 12 Sup.Ct. 799, 36 L.Ed. 609; Keystone Mfg. Co. v. Adams, 151 U.S. 139, 147, 14 Sup.Ct. 295, 38 L.Ed. 103; Westinghouse Elec. & Mfg. Co. v. Wagner Elec. & Mfg. Co., 173 F. 361, 97 C.C.A. 621.

These cases have recently been considered by us in an opinion written by Van Devanter, Circuit Judge, in the case of Brown v. Lanyon Zinc Co., 179 F. 309, 102 C.C.A. 497, where a conclusion was reached adverse to complainant's present contention.

These authorities make it clear, we think, that an apportionment of profits between the patented and unpatented parts of the drill was indispensably necessary. The invention did not inhere in the entire machine as an entity, but was only an improvement in a single element of an otherwise well-known device.

It is next contended that the entire value of the machine as a marketable article was properly and legally attributable to the particular patented feature, that it was derived from the Hoyt invention exclusively, and, therefore, within the rule laid down in the cases already cited and Westinghouse v. New York Air Brake Co., 72 C.C.A. 61, 140 F. 545, it was entitled to recover all the profits which the defendant made by the sale of the grain drills embodying the novel feature.

This depends upon the facts of the case, and they upon the evidence of the witnesses. The master who took the evidence heard the witnesses, observed their demeanor, and formed his conclusion as a result of all those considerations which appropriately affect the mind of a trier of facts. His conclusion was reviewed on exceptions by the learned trial judge. Both of them found against the contention. There being no obvious error of law or serious mistake of fact, their findings will be accepted as true. Moline Plow Co. v Carson, 18...