National Metal Weather Strip Co. v. Bredin

• Decision Date: 26 April 1911
• Docket Number: 1,471 (26).
• Parties: NATIONAL METAL WEATHER STRIP CO. v. BREDIN et al.
• Court: U.S. Court of Appeals — Third Circuit

186 F. 490

NATIONAL METAL WEATHER STRIP CO. v. BREDIN et al.

No. 1,471 (26).

United States Court of Appeals, Third Circuit.

April 26, 1911

Charles M. Clarke (W. A. Griffith, of counsel), for appellant.

L. S Bacon (Bacon & Milans, of counsel), for appellees.

Before BUFFINGTON and LANNING, Circuit Judges, and YOUNG, District judge.

LANNING Circuit Judge.

By their bill of complaint filed in this case James Bredin Charles H. Bredin, and Hugh E. Kenny alleged that they were the joint owners of patent No. 424,905 for a new and useful improvement in weather strips for windows, etc., and that the defendant, the National Metal Weather Strip Company, was an infringer of the patent. In the course of the proceedings James Bredin, one of the complainants, died, and his personal representatives were substituted on the record in his place. The Circuit Court adjudged the patent to be valid and infringed, and ordered an injunction and an accounting. See Opinion in Bredin v. National Metal Weather Strip Company (C.C.) 147 F. 741. The decree of that court was affirmed by this court. See 157 F. 1003, 85 C.C.A. 281. The case then went to a master for an accounting for profits and damages. The master, having taken the proofs offered, filed his report denying to the complainants any profits and awarding only nominal damages. Exceptions were filed to the report, and the Circuit Court sustained several of the exceptions, and by its decree awarded to the complainants for profits and damages the sum of $15,554.11. See 182 F. 654. From that decree the defendant has again appealed to this court.

In the amount awarded to the complainants is the sum of $9,082.58 being for manufacturer's profits on 908,258 feet of weather strip at a cent per foot. We are clear that the complainants are entitled to recover from the defendant what are termed 'manufacturer's profits'; that is, profits which the defendant company made in the manufacture and sale of weather strips embodying the complainants' patent. It is conclusively proven, however, that the strips manufactured by the defendant included something more than what was covered by the complainants' patent. In Crosby Valve Co. v. Safety Valve Co., 141 U.S. 452, 12 Sup.Ct. 53 (35 L.Ed. 809), the complainant was allowed the whole of defendant's profits. The court said:

'The entire commercial value of the valves made and sold by the defendant was due to the improvement covered by the patent of 1866, and that the complainant's valves of commerce, all of them, contain the improvements covered by the patent of 1866.'

In Wales v. Waterbury Mfg. Co., 101 F. 126, 41 C.C.A. 250, it was also held that, where the article sold by the defendant would have been unsalable except for the fact that it embodied the complainant's patent, the complainant was entitled to all the defendant's profits. The same rule was applied in Orr & Lockett Hardware Co. v. Murray, 163 F. 54, 89 C.C.A. 492. These cases follow the rule stated by Justice Bradley in Elizabeth v. Pavement Company, 97 U.S. 126, 139, 24 L.Ed. 1000, that, when the entire profit of a business results from the use of the patented invention, the patentee will be entitled to recover the entire profits if he elects that remedy.

In the present case, however, there is no difficulty in distinguishing, with reasonable certainty, between the proportion of the defendant's profits derived from the use of the complainants' patent and the proportion not so derived. The weather strips manufactured by the defendant consisted of three members-- the frame strip, the sash strip, and the meeting rail strip. The complainants' patent covered only the frame strip. The defendant's profit on these strips was found by the master, and assumed by the court, to have been one cent per foot for 908,258 feet, or $9,082.58. That amount is excessive. According to the uncontradicted evidence, the defendant's total profit on the three kinds of strips for the whole of the accounting period was $4,580.23. The master criticised the method by which that sum was ascertained, but it was unobjectionable.

The portion of the profit paid out in dividends during the accounting period and the sums paid for legal and expert services in the litigation over the patent were added together, and from the sum was deducted the deficit existing at the end of the accounting period. Assuming that the defendant company paid no exorbitant salaries, and that it did not in any other manner unfairly dispose of its earnings, and there is no suggestion that it did, we think the method was as fair a one as could have been adopted. Taking, then, $4,580.23 to be the profit made by the defendant in the manufacture and sale of the three kinds of weather strips, it is necessary, in the next place, to ascertain what proportion of that sum should be paid to the complainants. The proof is that the profit on the sash strip is slightly more than on the frame strip. The evidence is silent as to the profit on the meeting rail strip, but the amount manufactured of that strip was comparatively small. Of the total profit of $4,580.23, the sum of $2,250 will be a liberal allowance to the complainants for the profit on the frame strip, which was the only element covered by their patent.

Another item entering into the total amount of the decree now objected to is the defendant's profit on installations of weather strips in what is called the Pittsburgh district. This profit was $1,213.91. That this part of the defendant's profits does not belong to the complainants as joint owners of the patent is conceded. The argument is that it belongs to the executors of James Bredin, who was the complainants'...