The first point of the plaintiff in error is, that the description, in the patent of March, of the improvement patented the December following, and on which the present suit is brought, and omission to claim it on such earlier patent, operated as an abandonment or dedication of it to the public, and that for this reason the subsequent patent of 1st December was void. But the answer to this ground of defence is, that it appeared that Hayden, the patentee had pending before the commissioner of patents an application for this same improvement at the time he described it in the specification of the 17th March, which was, doubtless, the reason for not claiming it in this patent. The description in no sense affected this application thus pending before the commissioner; and, while it remained before him, repelled any inference of abandonment or dedication from the omission to again claim it.
This original application before the commissioner for a patent, among other things, for an improvement in the screen of the long trunk, not having been acted upon by that officer, a new application was made by Hayden, separately, for this improvement, and which resulted in the patent of 1st December, 1857, on which the present suit is brought.
We do not perceive any objection to this proceeding. It simplified the application, and disembarrassed it from its connection with other improvements claimed; and, doubtless, hastened the granting of the patent. The office, however, subsequently acted upon this original application, and, on the 11th September, 1860, granted a patent to the plaintiff, and, as is alleged, for the same improvement embraced in the patent of the 1st December, 1857, the one in question. And it is insisted that, for this reason, this prior patent for the same improvement is void. This is, obviously, a misapprehension. The last, not the first, is void.
We may add, on looking at the patent of 11th September, 1860, it does not appear that it was granted for the same improvement. It is a patent for a combination of this improvement with other devices.
As to the question of damages. It is supposed by the counsel for the defendants that the court, in the instructions quoted on preceding pages, gave a latitude to the jury in the estimate of damages beyond that of the use or value of the improvements embraced in the patent in question; that they might take into consideration the improvements on the patent of the 17th March, 1857, for widening one end of the trunk. But it is quite apparent that the court was speaking all the time with reference to the improvement in the patent in suit, and the only one in contestation. It is, also, urged that the value of the improvement was not a proper subject for the consideration of the jury in estimating the damages. This may be admitted. But looking at the term value, in the connection in which it was used, it is quite clear that it had reference only to the utility and advantages, or value of the use of the improvement over the old mode of cleaning cotton; not the value of the patent itself.
This question of damages, under the rule given in the statute, is always attended with difficulty and embarrassment both to the court and jury. There being no established patent or license fee in the case, in order to get at a fair measure of damages, or even an approximation to it, general evidence must necessarily be resorted to. And what evidence could be more appropriate and pertinent than that of the utility and advantage of the invention over the old modes or devices that had been used for working out similar results? With a knowledge of these benefits to the persons who have used the invention, and the extent of the use by the infringer, a jury will be in possession of material and controlling facts that may enable them, in the exercise of a sound judgment, to ascertain the damages, or, in other words, the loss to the patentee or owner, by the piracy, instead of the purchase of the use of the invention.
It is proper to say, as was said in the court below, that the jury, in ascertaining the damages upon this evidence, is not to estimate them for the whole term of the patent, but only for the period of the infringement. A recovery does not vest the infringer with the right to continue the use, as the consequence of it may be an injunction restraining the defendant from the further use of it.
JUDGMENT AFFIRMED.
Notes edit
This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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