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The Suffolk Company v. Hayden, 70 U.S. 3 Wall. 315 315 (1865)

The Suffolk Company v. Hayden

70 U.S. (3 Wall.) 315


1. Where a party having made application for a patent for certain improvements, afterwards, with his claim still on file, makes application for another but distinct improvement in the same branch of art, in which second application be describes the former improvement, but does not in such second application claim it as original, the description in such second application and nonclaim of it there, is not a dedication of the first invention to the public.

2. In cases where there is no established patent or license fee, general evidence may be resorted to in order to get at the measure of damages; and evidence of the utility and advantage of the invention over the old modes or devices that had been used for working out similar results is competent and appropriate.

3. The jury, in ascertaining the damages, upon this sort of evidence, is not to estimate them for the whole term of the patent, but only for the period of the infringement. And a recovery does not vest the infringer with the right to continue the use.

4. Where the patent office grants a patent for one invention, and afterwards, upon a claim filed previously to that on which such patent has been granted, issues another, the second patent, not the first, is void.

In December, 1854, Hayden, being the inventor of improvement in cotton cleaners, made application to the commissioner for a patent therefor.

The improvements consisted in certain described changes made by Hayden in the interior arrangements of an elongated trunk previously in use for cleaning cotton.

While this application was still pending, Hayden made another distinct improvement, not in the interior arrangements of the elongated trunk, but in the form of the trunk. This

Page 70 U. S. 316

improvement consisted in increasing, towards the rear and of the trunk, that part of its area above the screen (which divided it horizontally into two distinct parts), so that as the air moved through the trunk towards its rear, the space for its passage being enlarged, the air would gradually move more slowly.

Hayden desired, apparently, to claim this new improvement in the form of the trunk, both separately, and in combination with his other improvements in the interior arrangements of the trunk, as to which his application was then pending. Accordingly, in November, 1855, he filed his application for a patent, and on the 17th day of March, 1857, letters were issued to him, in the specification whereof he claims the improvement in the form of the trunk, both separately, and in combination with his improvements in the interior arrangements of the trunk, but he made no claim in this specification to his improvements in the interior arrangements of the trunk.

It did not appear that Hayden was guilty of any laches, or was in any default in reference to the delay of the commissioner to act on his first application for a patent for improvements in the interior arrangements of the trunk made in December, 1854. For some cause, however, the commissioner had not acted on that application down till June, 1857, and in that month, Hayden made another application for a patent, for what the judge at the trial, at the request of the defendants, ruled to be the same improvements, previously applied for in December, 1854, and upon this second application a patent was granted, bearing date December 1, 1857.

[It may be here mentioned incidentally, since the matter was made a point by counsel and is referred to by the court -- though the patent of December 1, 1857, was the only one in suit -- that the commissioner finally acted on the original application of December 1854, and on the 11th of September, 1860, granted on it a patent -- and as was alleged, though not proved, for the same improvement covered by the patent of December 1, 1857.]

Hayden having sued the Suffolk Manufacturing Company,

Page 70 U. S. 317

in the Massachusetts District, for infringement of this last-mentioned patent, the defendants' counsel at the trial, requested the judge to rule that the patent was void, because the improvements in the interior arrangements of the trunk, which were described and claimed in it, being also described and not claimed in the patent of the 17th of March, were by the legal operation of the last-mentioned patent surrendered to the public use.

The judge refused so to rule, and on error this refusal raised here the first question, the counsel for the Suffolk Company taking the same position here as below.

A second question was on the law as delivered to the jury on the matter of damages.

It appeared that no sales had been made of the patent right by the plaintiff, or of licenses for the use of it, so as to establish a patent or license fee as a criterion by which to ascertain the measure of damages. The court below accordingly permitted evidence, after objection, as to the uses and advantages of this improvement over the previous methods of cleaning cotton. And an expert testified that the results were a more thorough cleaning of the cotton, the saving of all the good fibers, less damage to the staple, the freeing of the room from dust, and the machinery from dust, dirt, and sand; the keeping of the machinery in better order at loss cost, and dispensing with one grinder of the cards in consequence of the diminution of dirt and sand, expelling fine dust and dirt not before got out, less breakage of the yarns &c.

There was also evidence of the amount of cotton that had been cleaned at the defendants' mills by the plaintiff's improvement within the period for which the damages were claimed.

The court below, in its charge to the jury, stated the rule as prescribed by the statute, which is the actual damages that the plaintiff has sustained from the infringement, and while speaking of the patent of December, 1857, among other things, observed:

"Then you will look at the value of the thing used and ascertain

Page 70 U. S. 318

that value by all the evidence as to its character, operation, and effect. You will take into view the value of that which the defendants have used belonging to the plaintiff, to aid you in forming a judgment of the actual damage the plaintiff has sustained."

The jury having found for the plaintiff and damages $1,774, the charge as above given was assigned by the defendant for error and made a second question in this Court, the counsel for the defendants arguing that the court in the instructions quoted gave a latitude to the jury in the estimate of damages beyond that of the use or value of the improvements comprised in the patent in question; that they might take into view the improvements on the patent of the 17th March, 1857; and arguing also that the value of the improvement was not a proper matter for the jury to consider when making their estimate of damages.

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