Piaget Novelty Co. v. Headley

• Decision Date: 01 August 1903
• Citation: 123 F. 897
• Parties: PIAGET NOVELTY CO. v. HEADLEY et al.
• Court: U.S. District Court — Southern District of New York

123 F. 897

PIAGET NOVELTY CO. v. HEADLEY et al.

United States Circuit Court, S.D. New York.

August 1, 1903

Clifton V. Edwards, for complainant.

William Houston Kenyon and George W. Mills, Jr., for defendants.

HAZEL District Judge.

This suit was brought to establish infringement by defendants of two United States letters patent-- No. 379,534, dated March 13, 1888, and granted to Elwood Headley, assignor of one-half to William G. Horton, and No. 384,523, dated June 12, 1888 of which the defendant Headley and one Horton were patentees. The patents are now owned by the complainant. The earlier patent is for a toy registering savings bank, and the later for a coin receptacle and regulating register. At final hearing brought on before Judge Wheeler the third claim of the earlier patent was sustained, and defendants held infringers, while as to the later the complaint was dismissed. A reference was directed to a master to ascertain and report the profits and gains made by the defendants. An appeal taken from the interlocutory decree to the Circuit Court of Appeals resulted in affirmance of the decision of the Circuit Court. 108 F. 870. The case now comes up for hearing upon exceptions filed to the master's report which finds that the net profits to the defendants resulting from the infringement amounted to $1,658.15. I have carefully examined the report, the evidence, and authorities upon which it is based, with a view of ascertaining whether the master erred in his application of the rules of law which may properly be invoked in a case where the profits, gains, and advantages are recoverable from an infringer. The master's report shows careful and diligent preparation. The evidence is succinctly set forth in his opinion, and with sufficient detail. I think the propositions of law justifying a recovery of the profits by the complainant are correctly stated and applied. I quite agree with the master in view of the decision of the Circuit Court, reported in 107 F. 134 (affirmed on appeal, 108 F. 870, 48 C.C.A. 116), holding the patent in suit to be a pioneer patent for a new article of manufacture, and deciding that claim 3 of the patent covers in its entirety all toy banks containing a registering device, that the complainant is entitled to recover the gains and profits derived by the defendants from their manufacture and sale of banks containing the patented mechanism. The principal objection to the confirmation of the report is whether the patentee is entitled to recover for profits upon sale of the bank in its entirety. The claim is made that the toy bank was marketable only because of its trunk shape, an unpatentable feature; but I am well satisfied that the defendants were not entitled, because of such shape to an apportionment of the profits. The controlling reasons stated by the master for refusing such apportionment of the profits on the theory contended for by defendants are amply justified by the proofs. The value of the...