Peerless Brick Mach. Co. v. Miracle Pressed Stone Co.

• Decision Date: 30 September 1910
• Citation: 181 F. 526
• Parties: PEERLESS BRICK MACH. CO. v. MIRACLE PRESSED STONE CO.
• Court: U.S. District Court — District of Minnesota

181 F. 526

PEERLESS BRICK MACH. CO. v. MIRACLE PRESSED STONE CO.

United States Circuit Court, D. Minnesota, Fourth Division.

September 30, 1910

Paul &amp Paul, for complainant.

Charles S. Burton and Offield, Towle & Linthicun, for defendant.

WILLARD District Judge.

By the interlocutory degree in this case the Nolan patent, No 811,518, for what is called a one-man brick machine, was sustained as to claims 3, 4, 5, 7, 8, and 9. As to claim 6 it was held void. It was also held that the defendant had infringed the claims sustained, the court saying:

'The defendant's machine is conceived and carried out as an exact duplicate of complainant's machine and clearly infringes the invention. That was conceded in the argument and certainly is manifest by an inspection of the machines.'

After the injunction granted in the interlocutory decree was served, the defendant made and sold a machine which its president testified was the same as the old one, except as to the handles. These, instead of being level with the tops of the partition plates, were an inch or more below such tops, and were curved. In proceedings for violation of the injunction by the sale of the new machines, it was held that they did not infringe the Nolan patent. The case having been referred to a master to take an accounting, he reported that the profits realized by the defendant by the sale of the old machines amounted to $7,530.93, and that the complainant had suffered damages to the amount of $680. The defendant filed exceptions to this report, and the case is now before the court upon the hearing of such exceptions.

The first exception is as follows:

'The defendant excepts to the omission and substantial refusal of the master to find in accordance with the evidence produced before him that the invention covered by the claims of the complainant's patent in suit found to have been infringed by defendant's machine was of no intrinsic or commercial value and did not contribute anything whatever to the intrinsic or commercial value of the defendant's said machines.' This is, in effect, a claim that the patentable feature of the complainant's machine was of no use. In fact, in the fifth exception, the defendant complains of the master's refusal 'to find that the patentable feature did not contribute to the utility of the defendant's infringing machines. ' An invention cannot be held valid unless it relates to a new and useful machine. By the decree holding this patent valid it was necessarily decided that the patented feature did have some utility. Evidence upon the accounting to show that it was useless was in my opinion incompetent. The court, moreover, held that the novel feature in the machine, and the one which the defendant now says was valueless, measured 'the difference between success and failure in the brickmaking operation.'

By other exceptions to the report the defendant presents a claim which is thus expressed in his brief:

'It is only a statement of the plainest equity to say that, unless the patented feature has produced profits for the defendant, the complainant cannot recover any portion of the defendant's profits.'

In support of this claim the following quotation is made from Tilghman v. Proctor, 125 U.S. 136, 8 Sup.Ct. 894, 31 L.Ed. 664:

'If the defendant gained any advantage by using the plaintiff's invention, that advantage is the measure of the profits to be accounted for.'

Applying the rule indicated by the quotation, we are to see 'if the defendant gained any advantage by using the plaintiff's invention. ' That it did use it and between January 6, 1906, and November 27, 1907, the date of the interlocutory decree, made and sold 163 machines which were copies of the complainant's machine, is admitted. It is also admitted that the profits which it realized from such sales were $7,530.93. What part of that sum of $7,530 was due to the complainant's invention? In other words, what part of that sum would the defendant have made if it had not used the complainant's invention, but had used some other? The answer is no part of it. Its president, Miracle, testified that during the time covered by the accounting there were only two machines in the market, his and the complainant's. As his was a copy of the complainant's, it follows that during that time there was only one machine which the defendant could use if it desired to go into the business of making 'a one-man brick machine.' It makes no claim that the Schwartz machine was in any way a competitor of the complainant's. Such claim could not well be sustained in view of the fact that the Schwartz machine could make one brick a day, while the complainant's could make over 2,000.

It was not at that time known that the handles of the Nolan machine could be lowered, and, as the defendant now claims, the machine then successfully operated. The defendant had no choice. It must either stay out of the manufacture of that kind of a machine, or it must use the complainant's invention. It chose the latter course, and it seems certain that, if it had not used the complainant's invention, it would not, and it could not have...