Burdell v. Denig

4 F. Cas. 695, 2 Fish. Pat. Cas. 588
CourtU.S. Circuit Court for the District of Southern Ohio
DecidedOctober 15, 1865
StatusPublished

This text of 4 F. Cas. 695 (Burdell v. Denig) is published on Counsel Stack Legal Research, covering U.S. Circuit Court for the District of Southern Ohio primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Burdell v. Denig, 4 F. Cas. 695, 2 Fish. Pat. Cas. 588 (circtsdoh 1865).

Opinion

SWAYNE, Circuit Justice.

This was an action brought to recover damages for the infringement of a patent, the title to which had become vested, by successive assignments, in the plaintiffs. The matter in controversy was the feeding mechanism invented by A. B. Wilson, and covered by his patent, which patent, as already remarked, had passed, by a series of assignments, to the plaintiffs. The plaintiffs proved the use, by the defendants, of several machines involving this mechanism. They proved further, that it was the announced purpose of one of the plaintiffs, who had assigned to the others, to reserve to himself a close monopoly as it regards the rights transferred to him by assignment, in respect to Franklin county, the locality to which the assignment related. They proved the amount of profits which had been made by the defendants by the use of the machines which they were proved to have used, involving the mechanism in question; and the plaintiffs exhibited to the jury a machine involving this mechanism as evidence of the extent to which a portion of the entire machinery used by the defendants belonged to Burdell, and was covered by his patent. No further evidence was given upon the subject

The defendants relied upon several defenses, among them an assignment by William Burdell to J. Payne Lowe, of an exclusive right to use and sell the Singer machines within Franklin county; and they proved, by Dr. Ide, that nearly all the work to which the controversy related, and out of which nearly all the profits in question were made, was done upon the Singer machines. They proved a contract between Burdell and one Orary, and insisted that that contract was still in force, and that it repelled the idea of a close monopoly, on the part of the plaintiffs, in respect to Franklin county. They proved also what they claimed to be an accord and satisfaction under that contract. And they claimed, as a further defense, that the plaintiffs not having proved the value of the feeding mechanism in the machines which had been used, as compared with the other portions of the machines in question, the plaintiffs could recover only nominal damages. The jury found a verdict for 86.200; and a motion has been made to set aside that verdict and grant a new trial.

[698]*698"We will consider the reasons which have been presented, and the arguments which we have heard in support of and against this motion, in the order in which they were discussed.

First, as to the assignment to J. Payne Lowe. It was insisted, at the trial, on the part of the plaintiffs, that that assignment related to the Singer machine as it was made under the patent of 1851; and that that patent was different, and described a different machine from that described by the reissued patent of 1854.

The proof, in the first place, was the deposition of Stoops, that, from the outset — -the emanation of the first patent — there has been no difference whatever, as regards the feeding mechanism of the Singer machine. The question was put to him:

“State how far the feeding mechanism of the No. 2 Singer sewing machine, as it has been constructed, corresponds with the feeding mechanism described in the patent to Isaac M. Singer of August 12, 1851.”

Ans. “No substantial difference of the feeding mechanism of the sewing machine, from the beginning to the present time, has been made.”

We understand that answer to cover two points. 1. That there has been no difference made as regards the invention with reference to the feeding mechanism of this machine — no change made from the outset. 2. That there has been no change made in the mode of constructing the machine as regards that mechanism; and we understand it to imply very clearly, also, that the machine has been constructed uniformly in conformity with the description contained in the patent of 1851, as well as in conformity with the description contained in the patent of 1854. Further testimony upon this subject was given by Skardon. He stated that he had been an agent for these sewing machines for a long time, and that the machines had been uniformly, in this respect, constructed in the same way.

We do not construe this instrument with the same stringency that is applied to it by the plaintiffs’ counsel. We think that the language used — “as mentioned in the patent of 1851” — was employed merely for the purpose of identifying the machine, and that it had no reference whatever to any peculiarity in the description contained in that patent. We think that, upon the whole testimony, there can be no doubt that the Singer machine as produced upon the trial, and the Singer machine as used by these defendants, was the Singer machine mentioned in the patent of 1851; and that this paper is a clear assignment of any right of Burdell to J. Payne Lowe to use that machine within the territory in respect to which the plaintiffs claim an exclusive right under the Wilson patent. It is not necessary to discuss the other view relating to this subject, which was adverted to in the course of the argument upon this point, and that is, the light I thrown upon this contract by the circumstances surrounding the parties at the time-the contract was entered into. We are satisfied, looking at the paper, without reference to the circumstances surrounding the parties when the contact was made, that the conclusion we have arrived at, as to* its construction, is the proper one — that it simply refers to the machine, without reference to any particular description; and we are satisfied that the proof given upon this: subject falls within the terms of this contract; and that it was clearly shown, by the-evidence, that the Singer machine, which was used by the defendants, was the machine covered by this arrangement executed by Burdell. That being the case, the Singer machines had nothing whatever to do with, the controversy between these parties, and' should have been wholly laid out of view. The proof given by Dr. Ide (and there was-no other proof upon the subject — it stood un-contradicted), that nearly all the work was done upon these machines, from which nearly all the profits were derived, conducts us to the conclusion that, in this respect, the-verdict of the jury was grossly erroneous— that the amount was by far too large; and,, that, in that particular, the verdict was against the evidence in the case.

There is another matter relating to this-subject, to which it is proper to refer, in. connection with the state of the proof. As before remarked, the plaintiffs, in making out their case, exhibited a machine containing the mechanism in regard to which the-plaintiffs have an exclusive right, and containing also many other elements of great importance, if not equaling or surpassing in importance the particular mechanism which was claimed by him. Now, no testimony was given to show what proportion that mechanism bore to the other portions-of the machine, and the jury were left to-grope in the dark to reach such conclusions, as they, in the absence of the light of any other evidence upon the subject, might be able to attain. We suppose that, in that state of the case, the plaintiffs were entitled, at most, to-nominal damages only. It was incumbent upon them to have given specific evidence to-the jury, or at least that upon which the jury would have been warranted in forming a conclusion as to the extent and value of their-claim. The supreme court, in the case of New York City v. Ransom, 23 How. [64 U. S.] 488, decided that:

“Where a plaintiff is allowed to recover only ‘actual damages,’ he is bound to furnish evidence by which the jury may assess-them.

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Bluebook (online)
4 F. Cas. 695, 2 Fish. Pat. Cas. 588, Counsel Stack Legal Research, https://law.counselstack.com/opinion/burdell-v-denig-circtsdoh-1865.