Westinghouse Electric Mfg. Co. v. Wagner Electric Mfg. Co.

• Decision Date: 05 December 1914
• Docket Number: 4457.
• Citation: Westinghouse Electric Mfg. Co. v. Wagner Electric Mfg. Co., 218 F. 646 (E.D. Mo. 1914)
• Parties: WESTINGHOUSE ELECTRIC MFG. CO. v. WAGNER ELECTRIC MFG. CO.
• Court: U.S. District Court — Eastern District of Missouri

218 F. 646

WESTINGHOUSE ELECTRIC MFG. CO. v. WAGNER ELECTRIC MFG. CO.

No. 4457.

United States District Court, E.D. Missouri, Eastern Division.

December 5, 1914

Paul Bakewell, of St. Louis, Mo., and Kerr, Page, Copper &amp Hayward, of New York City, for complainants.

E. E Huffman, of St. Louis, Mo., and Melville Church, of Washington, D.C., for defendants.

DYER District Judge.

On the 16th of February, 1904, in this court, Judge Adams presiding (129 F. 604), a decree was entered in this cause, which among other things recited:

'It is ordered, adjudged, and decreed as follows: That letters patent of the United States issued to George Westinghouse Jr., for electrical converter, dated July 12, 1887, and numbered 366,362, and duly assigned to the complainant, Westinghouse Electric & Manufacturing Company, are good and valid in law, particularly as to the fourth claim thereof, and that complainant, Westinghouse Electric & Manufacturing Company, is the owner of said letters patent and all rights thereunder. That George Westinghouse, Jr., was the first, true, and original inventor of the inventions and improvements described and claimed in claim 4 of said letters patent. That the defendant herein, Wagner Electric Manufacturing Company, has infringed the fourth claim of said letters patent, and upon the exclusive rights of the complainant under the same, by making, using and selling electric converters or transformers embodying in their construction and principle of operation the combination, substantially as described in said Westinghouse patent, of an electric converter or transformer constructed with open spaces in its core, an inclosing case, and a nonconducting fluid in said case adapted to circulate through said spaces and about the converter or transformer. That complainant do recover of the defendant the profits, gains, and advantages which the said defendant had derived, received, or made by reason of said infringement by said defendant of claim 4 of the said Westinghouse patent, No. 366,362, and that the complainant do recover of the said defendant any and all damages which the complainant has sustained by reason of said infringement by said defendant in the manufacture, use, or sale of electrical transformers or converters found to be in infringement of claim 4 of said Westinghouse patent, No. 366,362, as hereinbefore specified, or any electrical converters or transformers which embody in their construction and principle of operation the combination, substantially as described in said Westinghouse patent, of an electrical converter or transformer constructed in its core, an inclosing case, and nonconducting fluid or gas in said case adapted to circulate through the spaces and about the converter. And this cause is hereby referred to Henry H. Denison, Esq., as special master, to take and state an account of said gains, profits, and advantages, to assess such damages, and to report thereon with all convenient speed.'

In pursuance of this decree the special master proceeded to make inquiry, and thereafter made report to the court of what in his opinion had been the gains, profits, and advantages to the defendant in the manufacture, use, or sale of electrical transformers or converters found to be in infringement of claim 4 of said Westinghouse patent, No. 366,362, or any electrical converters or transformers which embody in their construction and principle of operation * * * an electrical converter or transformer constructed with open spaces in its core, etc. The master found the plaintiff's damages amounted to the sum of $132,433.35, for which amount he recommended that judgment be entered.

Exceptions were filed to this report by the defendant, and after a full hearing was had this court, among other things, said:

'The order of the court made by Judge Adams limited the recovery to the profits, gains, and advantages which the defendant made by reason of infringement of claim 4 of complainant's patent No. 366,362. The burden of proof was upon the complainant to show by competent evidence that the defendant had realized profits and advantages by reason of the infringement of claim 4. The master recommends a judgment against the defendant for all the profits derived by it from the sale of all the transformers made and sold by the defendant within a certain period regardless of what per cent., if any, the patented device (claim 4) bore to the whole. This in my judgment was beyond the scope of inquiry contained in the order of reference and cannot be upheld. The demurrer of the defendant at the close of complainant's case should have been sustained. The master's report will be disapproved and set aside, and a judgment will be entered in favor of the complainant for nominal damages (one dollar) only and the costs of this proceeding.'

From this decision an appeal was prosecuted to the Circuit Court of Appeals for the Eighth Circuit. That court, 173 F. 361, 97 C.C.A. 621, affirmed the decision of this court, and said:

'We are unable to concur in the master's findings. We think claim 4 is a limited detailed claim-- open spaces in the core being one of its chief or distinguishing features. This was the view entertained by Judge Amidon upon an application for a temporary injunction, and by Judge Adams at the hearing upon which the case was referred to the master. (C.C.) 129 F. 604. See, also, Westinghouse Electric & Mfg. Co. v. Union Carbide Co., 117 F. 495 (55 C.C.A. 230); Westinghouse Electric & Mfg. Co. v. American Transformer Co. (C.C.) 121 F. 560; Id. (C.C.) 130 F. 550.'

The Supreme Court of the United States considered the case on certiorari. 225 U.S. 604, 32 Sup.Ct. 691, 56 L.Ed. 1222, 41 L.R.A. (N.S.) 653.

This court and the Court of Appeals, as I understand it, held that the burden of proof was on the complainant, and not on the...