Tuttle v. Claflin · Not specified in text

Court

Circuit Court of the United States for the Southern District of New York

Filed

Jul 10, 1878

Decided

Jul 29, 1896

Judge

SHIPMAN, Circuit Judge

Posture

Decree entered for complainant for nominal damages after accounting

Plaintiff/Complainants (2)

Theodore A. Tuttle, trustee of the Elm City Company

Benjamin F. Lee

Defendants/Infringerss (3)

John Claflin, as executor of Horace B. Claflin, and others formerly partners under the name of H. B. Claflin & Co.

Edmund Wetmore

Overview

The decree of the circuit court is reversed, with costs of this court, and the cause remanded with instructions to enter a decree declaring the validity and infringement of claims 2 and 4 of the patent, and adjudging that the complainants recover $40,000 as profits, plus costs in the circuit court.

Case summary

This case involves a patent infringement suit over the Crosby and Kellogg patent No. 37,033 for a machine crimping textile materials. The plaintiff, as trustee, sued defendants for using infringing roller plaiting machines. The trial court found infringement of claims 2 and 4, ordered an accounting, but after a master's report, awarded only nominal damages. On appeal, the Circuit Court of Appeals affirmed infringement, holding defendants' machines used mechanical equivalents. On profits, the court held plaintiff entitled to savings over hand-plaiting, but allowed a deduction for an ironing improvement in defendants' machines. The court set profits at $40,000 based on the record, reversing the nominal award. The court also held defendants waived a notice defense under Rev. St. § 4900 by not raising it below.

Abstract

Plaintiff sued defendants for infringing specific claims of a patent on a machine for crimping textile materials using roller plaiting machines. Trial court found infringement and ordered an accounting, but awarded only nominal damages after a master's report; appellate court affirmed infringement based on mechanical equivalents, calculated defendants' profits at $40,000 with deductions for improvements, and reversed the nominal award. Supreme Court reversed the circuit court's decree, remanding to declare patent validity and infringement and award $40,000 in profits plus costs.

Opinion of the court

Majority
opinionSHIPMAN, Circuit Judgejoined by PECKHAM, Circuit Justice, LACOMBE, Circuit Judge

Infringement found based on equivalence of defendants' machines
Profits calculated as savings over hand-plaiting with apportionment for improvements
Notice defense waived due to failure to raise in trial court
Court set $40,000 profits to avoid further delay

Jurisdiction

not challenged

Statutory basis

Not specified

Subject matter

Patent infringement suit under federal patent law

Jurisdictional holding

Not applicable

Jurisdictional facts

Suit in equity for patent infringement
Appeal from Circuit Court of the United States for the Southern District of New York

Procedural posture

Posture at trial

Decree entered for complainant for nominal damages after accounting

Posture on appeal

Direct appeal from final decree in equity

Preserved issues

Infringement of claims 2 and 4
Accounting for profits
Validity of patent

Unpreserved issues

Lack of notice under Rev. St. § 4900 (raised for first time on appeal)

Forfeited issues

Notice requirement under Rev. St. § 4900 deemed waived

Subsequent history

Petition for rehearing

not specified

Rehearing en banc

not specified

Petition for certiorari

not specified

Remand proceedings

Case remanded to enter decree for $40,000 profits

Mandate issued

not specified

Legal categories

Business

Case record

Full case name

TUTTLE, Trustee, v. CLAFLIN et al.

Docket number

Not specified in text

Court

Circuit Court of Appeals, Second Circuit

Trial court

Circuit Court of the United States for the Southern District of New York

Trial court judge

Judge Wallace (referred to in opinion)

Filed

Jul 10, 1878

Decided

Jul 29, 1896

Opinion author

SHIPMAN, Circuit Judge

Opinion type

published

Precedential status

precedential

Judges on panel

PECKHAM, Circuit JusticeLACOMBE, Circuit JudgeSHIPMAN, Circuit Judge

Issues & holdings

Issues raised

affirmed

modified

Holdings

Whether defendants' machines infringed claims 2 and 4 of the Crosby and Kellogg patent

affirmed

Standard of review

De novo (legal issue of infringement)

Disposition rationale

Court found infringement as defendants' machines used substantial equivalents of patented elements

Preservation

Issue preserved for review

Whether defendants were entitled to an apportionment of profits due to improvements in their machines

modified

Standard of review

De novo (legal issue of profit calculation)

Disposition rationale

Court allowed deduction for ironing improvement but rejected other claims; set profits at $40,000

Preservation

Issue preserved for review

Whether lack of notice under Rev. St. § 4900 barred recovery of damages and profits

affirmed

Standard of review

Plain error (unpreserved issue)

Disposition rationale

Issue waived as not raised in pleadings or trial court

Preservation

Issue not preserved

Holdings of the court

Infringement of claims 2 and 4

Defendants' machines infringed claims 2 and 4 of the Crosby and Kellogg patent

Defendants' machines used mechanical equivalents (rollers for flat surfaces) that performed same function as patented crimper and smoother; claim 2 not limited to specific operation as argued by defendants

unanimousbinding precedent

Accounting for profits

Plaintiff entitled to profits measured by savings over hand-plaiting, with deduction for ironing improvement

Under Mowry v. Whitney and other cases, infringer must account for pecuniary advantage; if improvements contribute to savings, apportionment allowed but burden on infringer to show portion; here, ironing improvement warranted deduction but other claimed improvements did not

unanimousbinding precedent

Notice requirement under Rev. St. § 4900

Defendants waived notice issue by not raising it in pleadings or trial court

Following Rubber Co. v. Goodyear and Sessions v. Romadka, technical pleading defects not raised below are waived on appeal

unanimousbinding precedent

Error analysis

Circuit court's conclusion that hand-plaiting costs were prohibitive and marketable plaits could not be made by hand — evidentiary · error foundError affected profit calculation; court corrected by setting $40,000 based on record · not harmless
Failure to allow apportionment for ironing improvement in defendants' machines — procedural · error foundCourt accounted for it in setting $40,000 profits · harmless

Statutory interpretation

Statute

Rev. St. § 4900

Question

Whether notice requirement applies and was waived

Court's reading

Notice requirement may apply but was waived by not raising in pleadings or trial court

Canons applied

Waiver doctrine for unpreserved issues

no legislative history

Burden of proof

Prosecution burden

Preponderance of evidence for infringement and profits

Defence burden

Burden to show apportionment for improvements contributed to profits

Burden met

true

Burden-shifting issues

Defendants bore burden to prove portion of profits from improvements

Standards of review

Infringement of patent claims — de novo Legal issue of infringement reviewed de novo
Accounting for profits and apportionment — de novo Legal standards for profit calculation reviewed de novo
Unpreserved notice issue — plain error Issue not raised below, reviewed for plain error

Timeline

Events

12,293

Days, incident to ruling

Dec 2, 1862 — Jul 29, 1896

Span

Dec 2, 1862factual eventcited in opinion

Crosby and Kellogg patent No. 37,033 issued for a machine for crimping textile materials

Outcome: Patent granted

Foundation of the infringement suit

Patent validityInfringement

C. O. Crosby · Henry Kellogg Not specified not applicable

Jul 10, 1878filingcited in opinion

Plaintiff filed bill in equity alleging infringement and seeking injunction and accounting

Outcome: Temporary injunction granted

Initiation of lawsuit

InfringementAccounting

Theodore A. Tuttle, trustee · H. B. Claflin & Co. Circuit Court for the Southern District of New York trial court

Apr 3, 1884rulingcited in opinion

Circuit court final decree adjudged infringement of claims 2 and 4 and directed accounting

Outcome: Infringement found, accounting ordered

Key trial court ruling on liability

InfringementAccounting

Judge Wallace · Parties Circuit Court for the Southern District of New York trial court

Aug 26, 1893procedural eventcited in opinion

Special master filed report assessing no damages but finding profits of $76,215.85 based on savings over hand-plaiting

Outcome: Report filed

Master's calculation of profits

Accounting for profits

Special master · Parties Circuit Court for the Southern District of New York trial court

Jul 29, 1896appeal eventcited in opinion

Circuit Court of Appeals issued opinion reversing decree and remanding with instructions to award $40,000 in profits

Outcome: Decree reversed, $40,000 awarded

Appellate decision on profits and infringement

InfringementAccounting for profitsApportionment

Judges Peckham, Lacombe, Shipman Circuit Court of Appeals, Second Circuit appellate court

Facts & evidence

Incident

Date

1862-12-02 (patent date)

Location

Not specified

Key facts

6 facts

Crosby and Kellogg patent No. 37,033 for a machine for crimping textile materials issued December 2, 1862
Plaintiff as trustee sued defendants for infringement in 1878
Temporary injunction granted, final decree in 1884 found infringement of claims 2 and 4
Special master reported profits of $76,215.85 based on savings over hand-plaiting
Circuit court set aside report and awarded nominal damages (six cents)
Both parties appealed

Disputed questions

Whether defendants' machines infringed claims 2 and 4
Amount of profits attributable to infringement
Cost of hand-plaiting as baseline for profit calculation
Effect of improvements in defendants' machines

Procedural history

5 steps

July 10, 1878: Bill in equity filed
April 3, 1884: Final decree adjudging infringement and directing accounting
August 26, 1893: Special master's report filed
Circuit court set aside report and entered decree for nominal damages
Appeals to Circuit Court of Appeals

Evidence in the record

Direct

Testimony of witnesses on cost of hand-plaiting
Master's report on profits

Physical

Patented machine models
Defendants' roller plaiting machines

Testimonial

Witnesses Kürsheedt, Brown, Wooster on hand-plaiting costs
Defendants' superintendent Smith on practicality of hand-plaiting

Documentary

Crosby and Kellogg patent specification
Arnold and Pipo patent specifications
Special master's report

Circumstantial

Comparison of defendants' machines to patented machine

Challenged

Evidence type: Witness estimates of hand-plaiting costs · Challenge basis: Inaccuracy and lack of experience · Trial court ruling: admitted · Reasoning: Court found estimates excessive and based on insufficient investigation · Challenged on appeal: true · Appellate outcome: modified

Objects of relevance

Crosby and Kellogg crimping machineRoller plaiting machines (Griffith and Fanning machines)Sewing machine attachments

Policy considerations

Need to avoid prolonged litigation in patent cases
Equity considerations in profit accounting for inadvertent infringers

Authorities

Cited authorities (4)

Mowry v. Whitney, 14 Wall. 620

followedprecedent

Cited for rule that profits are difference in expense between patented device and old method

Elizabeth v. Pavement Co., 97 U. S. 126

followedprecedent

Cited for principle that infringer has right to apportionment if improvements contribute to profits

Dunlap v. Schofield, 152 U. S. 244

distinguishedprecedent

Cited on notice requirement under Rev. St. § 4900

Rubber Co. v. Goodyear, 9 Wall. 811

followedprecedent

Cited for waiver of pleading defects not raised below

Related cases (5)

Elm City Co. v. Wooster, 6 Fish. Pat. Cas. 452, Fed. Cas. No. 4,415

prior appeal

Patent sustained

Mowry v. Whitney, 14 Wall. 620

precedent

Profits measured by savings over old method

Elizabeth v. Pavement Co., 97 U. S. 126

precedent

Apportionment allowed for improvements

Dunlap v. Schofield, 152 U. S. 244

precedent

Notice requirement under Rev. St. § 4900

Rubber Co. v. Goodyear, 9 Wall. 811

precedent

Waiver of pleading defects

Statutes

Rev. St. § 4900 (notice requirement for patent damages)

Standards & doctrines

Doctrine of equivalents
Profit apportionment for improvements
Waiver doctrine for unpreserved issues

Legal principles applied

Infringer must account for entire profits unless improvements contribute
Notice requirements under Rev. St. § 4900 can be waived
Appellate courts may set profits to avoid further delay

Notable quotes

“If the infringer uses in his infringing machine the essential part of the patented machine, without which his infringing machine is worthless, it is not an adequate answer to the demand for the payment of his entire profits that his substituted equivalents improved the work of the corresponding elements of the infringed machine.”

SHIPMAN, Circuit Judge — Discussion of profit accounting and apportionment

Establishes principle that improvements do not negate liability for full profits if essential part taken

“It is too late to raise for the first time in an appellate court technical questions of pleading or proof which are not jurisdictional in their character, and which were not raised either in the pleadings or before the trial courts, where defects might have been remedied, and which must therefore be considered to have been waived.”

SHIPMAN, Circuit Judge — Addressing unpreserved notice issue under Rev. St. § 4900

Emphasizes waiver doctrine for issues not raised below

Index terms75

Summary terms

Legal mechanisms

Various actions

Various actors

Legal concepts

Legal outcomes

Legal issues

Legal procedures

Legal remedies

Legal evidence

Legal arguments

Legal defenses

Legal penalties

Legal procedural steps

Geo locations

Judges

Attorneys

Procedural terms

Substantive offenses

Entities and documentation

Legal actions

Action type

reversed and remanded

Target

trial court decree awarding nominal damages

Appealed from

Circuit Court for the Southern District of New York

Citation

62 Fed. 453

Context

Appellate court reversed decree and remanded with instructions to enter decree for $40,000 in profits

Scope

full

Further instructions

Enter decree declaring validity and infringement, and adjudging recovery of $40,000 as profits plus costs

Disposition vote

unanimous

Action type

affirmed

Target

trial court finding of infringement of claims 2 and 4

Appealed from

Circuit Court for the Southern District of New York

Citation

19 Fed. 599

Context

Appellate court affirmed infringement finding based on equivalence

Scope

full

Disposition vote

unanimous

Physical materials

Search facets

Parties

Judges

PeckhamShipman

Courts

Statutes cited