P.P. Mast & Co. v. Superior Drill Co.

• Citation: 154 F. 45
• Decision Date: 16 May 1907
• Docket Number: 1,625.
• Parties: P. P. MAST & CO. v. SUPERIOR DRILL CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

154 F. 45

P. P. MAST & CO. v. SUPERIOR DRILL CO.

No. 1,625.

United States Court of Appeals, Sixth Circuit.

May 16, 1907

H. A Toulmin, for appellant.

Border Bowman, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

SEVERENS Circuit Judge.

This cause came here on a former occasion on an appeal of the present appellant from a decree of the court below declaring the validity of the first, second, and third claims of letters patent No. 557,868, granted to F. R. Packham for an improvement in the construction of disk grain drills, more particularly in the provision of a furrow opener therefor the infringement thereof by the appellant, and ordering a perpetual injunction and a reference to a master to ascertain and report the profits and damages. Upon full consideration of the record on that appeal, this court affirmed the decree of the Circuit Court in all particulars and directed further proceedings thereon. 115 F. 886, 53 C.C.A. 36. On the reception of our mandate, that court, upon the suggestion of counsel for both parties, appointed B. R. Cowen, Esq., as master to state and report an account. The evidence in the former record was used on the reference. The new proofs submitted to him proceeded upon two distinct lines; one directed to the ascertainment of damages, estimated in the main upon royalties received upon licenses to other parties and the other to the ascertainment of the profits realized by the defendant (below), based upon sales made by the defendant and the cost of production.

The master, in dealing with the subjects of the reference, observed the same distinction. He summed up his conclusions thereon as follows:

'Findings: I find:

'(1) That the infringement by defendant of the claims Nos. 1, 2 and 3 of the Packham patent No. 557,868, beginning in 1898, and continuing until 1902, was deliberate, wanton and continuous.

'(2) That a license fee of 25 cents per furrow opener was established by complainant, which is adopted by the master as the measure of damages.

'(2) That there is due complainant from defendant, on account of said infringement, under the standard adopted in the second finding above:

On 96,951 furrow openers at 25 cents . . .	$24,237 75
Interest . . .	5,460 78
Total . . .	$29,698 53

'As an alternative to the third finding as above, in case the court should overrule the conclusion as to there being an established license fee, I find:

'(4) That the profit on the 10,236 single-disk drills carrying the infringed device was $23,031.00. Interest to September 1, 1905, $5,290.65. Total $28,321.65."

To this report, counsel for the defendant filed 26 exceptions. These exceptions were overruled by the master, as was also an exception by counsel for the complainant wherein the latter claimed to recover 'the entire profits made by the defendant upon the complete drill, $100,562.22 and interest'; that is, as we understand, the profits of the business of making and selling the drills which embodied the Packham invention.

Before the case came on for final hearing, the court on motion of the defendant referred the case back to 'take proof as to the entire or partial abandonment by complainant of the disk furrow opener covered by the patent involved herein, and the substitution therefor of another and different type of device for the same purpose. ' The proof thereupon offered by the defendant consisted of trade circulars and advertisements of the complainant dated December, 1905, and after, and certain machines made by complainant in 1906 showing an improved device for the purpose of a furrow opener, in consequence of which the Packham furrow opener had to some extent been superseded. The master reported that he was unable to discover how the later improvement should affect the consequences of the infringement from 1898 to 1902 and adhered to his former report. It is manifest that his conclusion upon the matter referred back to him was correct.

Upon final hearing the court filed a written opinion wherein, after making some general observations commendatory of the care and discrimination shown by the master's report and concerning the difficulty which usually prevents any exact adjustment of profits and damages in such cases, he concluded as follows:

'In order to meet everything which I think could be reasonably said on the score of the profits, or license fees, not being properly established as a charge against the defendant on account of the speculative feature, or any other objection urged, I have concluded to reduce the amount reported against the defendant by the master in his findings to the even sum of $18,000, and with this reduction or modification to overrule all objections to the master's findings and report, and to allow a decree for this sum, together with the cost of the cause, including the compensation to the special master, which, if not agreed upon with him, will be fixed by the court upon further notice and further attention to the case.'

Thereupon the court, on July 12, 1906, entered a decree overruling all the exceptions to the master's findings and report, and adjudging that the complainant recover the sum of $18,000 and costs, including compensation to the master in the sum of $500. On September 1st following, the defendant filed a prayer for an appeal and an assignment of errors for the following reasons:

'(1) That the Circuit Court erred in finding an arbitrary sum and decreeing its payment by defendant.

'(2) That the Circuit Court erred in sustaining the master's report to any extent, and in not overruling it altogether.

'(3) That the Circuit Court erred in decreeing the payment of any sum by defendant, and in not finding for nominal damages only.

'(4) That the Circuit Court erred in overruling to the extent that it did the exceptions filed by defendant, and in not wholly sustaining said exceptions.

'(5) That the Circuit Court erred in holding said exceptions to be technical.

'(6) That the Circuit Court erred in awarding costs and the master's fee against defendant.'

The appeal was allowed, the bond approved and filed, and a citation issued on the same day. Service of the citation was acknowledged on September 6th. Then on September 8th counsel for the appellant filed in the court below additional assignments of error as follows:

'(7) That the Circuit Court erred in not sustaining the objections of record to the evidence adduced by complainant.

'(8) That the Circuit Court erred in not sustaining the objection that the alleged licenses and the testimony relating thereto were incompetent, because the licenses are of date subsequent to the commencement of the infringement.

'(9) That the Circuit Court erred in not sustaining the objection that the testimony relating to the cost of labor and material in defendant's furrow openers was incompetent and irrelevant.'

The complainant also appealed, filing the following assignments of errors:

'(1) That the Circuit Court erred in setting aside the master's finding, the substance of which was that the evidence of complainant's license fee of 25 cents per furrow opener was properly introduced to show the value of the patented device, which, together with the evidence of the profits made by defendants over the device commonly used prior to the introduction of the patented device, was sufficient to warrant a recovery on that basis to the amount of $29,698.53.

'(2) That the Circuit Court erred in setting aside and refusing to confirm the master's finding, the substance of which was that the disk shield device should be compared with the device most nearly approaching the patented device open to the public and commonly used prior to the patent, and that the hoe drill fulfilled these requirements, and that it was proper to compare defendant's profits made on the disk shield device with the said hoe device.

'(3) That the Circuit Court erred in not accepting the master's finding, viz., that the single disk shield device should properly be compared with the hoe device which it supplanted, in order to ascertain the profit due to the patented feature, and that defendant's profits figured on said basis amounted to $23,031.00, which sum at least should be awarded complainant.

'(4) That the Circuit Court erred as matter of law in not allowing the Superior Drill Company that part of the profits made by P. P. Mast & Co. on the single disk drill, which were proved to be due to the patented features in suit, amounting to $2,25 per machine, which would make the judgment $23,031.00 with interest from October 18, 1905.'

And this cross-appeal has been perfected.

The first question with which we are required to deal is with regard to the status of the seventh, eighth, and ninth assignments of error. Counsel for complainant insists that these assignments are not properly before us because not seasonably filed. As is seen from the foregoing statement, all the proceedings for taking the appeal were perfected by the service of the citation on September 6th, and these later assignments of error were filed in the court below September 8th. Rule 11 of this court (150 F. xxvii, 118 C.C.A. xxvii) requires that the appellant shall file with the clerk of the court below with the petition for appeal an assignment of the errors asserted and intended to be urged, and that no appeal shall be allowed until such assignment of errors shall have been filed. The rule was prescribed under the second section of the act creating the Courts of Appeals (Act March 3, 1891, c. 517, 26 Stat. 826 (U.S. Comp. St 1901, p. 547)), and has the force of law. The S. S. Osborne, 105 U.S. 447, 450, 26 L.Ed. 1065.

It is the same in all the circuits. The assignment of errors is to...