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SESSIONS V. ROMADKA, 145 U. S. 29 (1892)
U.S. Supreme Court
Sessions v. Romadka, 145 U.S. 29 (1892)
Sessions v. Romadka
Nos. 262, 263
Argued March 30-31, 1892
Decided April 25, 1892
145 U.S. 29
An assignee in bankruptcy is not bound to accept the title to a patent for an invention, vested in the bankrupt at the time of the bankruptcy if in his opinion it is worthless, or may prove to be burdensome and unprofitable; and his neglect for a year, during which he winds up the estate, to assume the ownership of such property, and his statement to a person desiring to purchase it that he has no power to do anything with it and that the bankrupt is the only one who can give title, are convincing proof of an election not to accept it.
It does not lie in the mouth of an alleged infringer of a patent to set up the right of an assignee in bankruptcy to the patent as against a title acquired from the bankrupt with the consent of the assignee.
Section 4917 of the Revised Statutes, which provides for disclaimers
"whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer,"
and allows the patentee to
"make disclaimer of such parts of the thing patented as he shall not choose to claim or hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent,"
is broad enough to cover disclaimers made to avoid the effect of having included in a patent more devices than can properly be made the subject of a single patent.
The power of a patentee to disclaim is a beneficial power, and ought not to be denied except when resorted to for a fraudulent and deceptive purpose.
The effect of delay by a patentee to make a disclaimer under Rev.Stat. § 4917 until after the commencement of an action for the infringement of his patent goes only to the recovery of costs.
Where the Revised Statutes adopt language of a previous statute which had been construed by this court, Congress must be considered as adopting that construction.
The invention patented by letters patent No. 128,925, issued July 9, 1872, to Charles A. Taylor for an improvement in trunks was novel and patentable; and the letters patent are infringed by the fasteners constructed in accordance with the descriptions in letters patent No. 145,817 dated December 23, 1873, and the improvements thereon described in letters
patent No. 163,828, dated April 10, 1870, both issued to Anthony V. Romadka.
The pioneer in an art, who discovers a principle which goes into almost universal use, is entitled to a liberal construction of his claim.
When a patented invention is infringed by its use upon another article of which it forms an inconsiderable part, taking the place of something previously serving the same uses, and there is no established royalty by which to measure the damages, they may be ascertained by finding the difference between the cost of the patented article and the cost of the article which it displaces; but this rule may be modified, if law and justice seem to require it.
When it is doubtful from the evidence whether the word "patented" could be affixed to a manufactured article or whether a label should be attached with a notice of the patent, under the provisions of Rev. Stat. § 4900, the judgment of the patentees is entitled to weight in determining the question.
A defendant in a suit for the infringement of letters patent, who relies upon a want of knowledge on his part of the actual existence of the patent, should aver the same in his answer.
When an assignee in bankruptcy refuses to accept a transfer of a right of action existing in the bankrupt at the time of the bankruptcy, and abandons it to the bankrupt before the expiration of the time within which an assignee in bankruptcy could bring suit upon it, the right of action of the bankrupt and of a purchaser from him are governed by the general statute of limitations, and not by the rule prescribed for an assignee in bankruptcy.
The court stated the case as follows:
This was a bill in equity by the appellant Sessions for the infringement of letters patent No. 128,925, issued July 9, 1872, to Charles A. Taylor, for an improvement in trunks.
The patent included several devices used in the manufacture of trunks: first, a yielding roller to be applied to the outside of the trunk; second, in spring catches to hold the trunk shut; third, in a brace of peculiar construction applied to the outside of the trunk for the purpose of holding up the lid; and fourth, in a spring arm for supporting the tray when turned up. In the specification, the patentee made the following statement with regard to the spring catch, which was the only feature of the invention claimed to have been infringed in this suit:
"Instead of providing the top of the trunk with the usual
straps for fastening it down, I attach to its front two spring catches, I, and to the top two tangs or plates, J, which lock into and are held by the catches. Each catch consists of a metal socket, e, provided with a hinged latch or hook, f, and with a flat spring, g, which bears against the lower end of the latch and keeps its upper end pressed inward against the socket. The upper end of the latch or hook is provided with a prong, i, which extends through into the socket as shown in Fig. 4; the upper side of the prong being beveled off, as shown. The tangs on the top or lid are provided with beveled ends and with holes or openings, as shown. When the top is pressed down, the tangs slide down into the sockets, and the prongs, i, of the latches, lock through them in the manner shown in Fig. 4, so as to hold the top or lid down securely. In order to unlock latches, it is only necessary to turn back the upper ends of the hooks or laches so as to draw the prongs out of the tangs. After the latches are turned back a certain distance. the springs hold them in position, as shown in Fig. 1, and in dotted lines in Fig. 4, so that it is only necessary to attend to one of them at a time."
The only claim which was alleged to have been infringed was the third, which reads as follows:
"3. The spring catches, I, constructed and applied to the front of the body, as described, in combination with the tongues or hasps, J, on the top, when arranged to operate as set forth."
The answer denied the validity of the patent and infringement of the same. After the testimony had been taken, the plaintiff entered with the Commissioner of Patents a disclaimer of all the claims of the patent except the one in suit, and upon the hearing upon pleadings and proofs, the court adjudged the patent to be valid, and that the defendants had infringed, and referred the case to a master to ascertain and report to the court the number of trunk fasteners made, used, and sold by defendants, and the profits which they had received and which had accrued to them since December 12, 1874, from their infringement, together with all damages in excess of such profits sustained by plaintiff and his assignor since that date.
Subsequent to the entry of the interlocutory decree, which was opened for that purpose, and pending proceedings before the master, the defendants by leave of the court amended their answer by alleging that the title to the patent was in the assignee in bankruptcy of one Poinier, who assigned the patent to the plaintiff subsequent to his adjudication in bankruptcy. The bill was also amended by averring that the assignee never accepted title to the patent, but neglected and refused to assert any claim thereto, and that he is now estopped from claiming any title or exercising any dominion over such patent or the invention thereby secured, and is also barred by the provisions of the Bankruptcy Act requiring suit to be brought within two years after the accruing of any cause of action. In his report, made under the order of the court, the master found that the testimony left no doubt that
"at the date of the granting of the patent to Taylor, the only known device for accomplishing the results produced by the trunk fastener was the ordinary trunk strap used in conjunction with the simple dowel pin. It seems, therefore, that the profits for which the defendants must account to complainant under the decree of this case are to be found by arriving at the cost of making and applying the strap and dowels and deducting therefrom the cost of making and applying the infringing trunk fastener manufactured and sold by the defendants."
Figuring upon this basis, the master found that the sum of $11,455.03 had been saved by the defendants by the manufacture and use of 2,500 gross of fasteners admitted to have been made and used by them, over what it would have cost them to have made and applied the straps and dowels necessary and proper to have been used for the same purpose in lieu of such infringing fasteners. No computation was made of damages, for the reason that the testimony showed that the profits allowed by him largely exceeded any actual damage sustained by the plaintiff. Exceptions were filed by both parties to this report, and a final decree was entered, sustaining the exceptions filed by the defendants to the master's report, vacating and setting aside such report, and decreeing nominal damages
for the infringement. 21 F. 124. Both parties appealed from this decree to this Court.
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