M.OIfFITT V. CAVANAGlI.

511

that it may be considered by the court. But it is merely a waste of time and money to take such testimony, as the court must reject. it when it comes to an examination of the case. Let there be a decree in favor of complainant, sustaining the third and fourth claims of reissued letters patent No 6,831, and the third claim of letters patent No. 173,261; and a reference to the master for an accounting for the profits aI'ising from the use by defendant of the infringing machines up to the present time; and that a per· petual injunction issue, restraining the future use of the inventions by defendant.

MOFFITT V. CAVANAGH.1

EMERY and others v. SAME.

(Circuit Oourt, 8. D. NeuJ York. May 8, 1888.)

1.

PATENTS FOR lNVENTIONS-DAMAGES FOR INFRINGEMENT-LICENSE FEE.

On the accounting, in a suit for infringement of two patents. complainant relied upon a license uuder three patents, one of these being one of the patents infringed, a proper deduction to be made on account of the non-use of the other two; but, as only two out of the six claims of the patent infringed were held valid, and those claims were unimportant, held only nominal dam· ages could be allowed.

2.

SAME.

Where a license offered in evidence to establish the measure of damages for infringement was based upon two patents, one of which was the patent infringed, and the other had been declared void, and there was no important evidence as to the value of the use of the valid patent, held, that only nominal damages could be allowed.

In Equity. William A. Macleod, for complainants. Lucien Birdseye and William S. Lewis, for defendant.
SHIPMAN, J. These are exceptions by the respective complainants to the master's reports in which he found nominal damages only in each of the above-entitled causes. The Moffitt suit was for infringement of patents No. 178,869 and No. 209,826. The Emery suit was for infringement of patent No. 147,288, granted to Simonds and Emery, February 10, 1874. All these patents related to machines for making heel counters or stiffeners for boots and shoes. The facts upon which the reference to the master was decreed are given in the opinions of the court in 17 Fed. Rep. 336, and ld. 242. Moffitt licensed Cavanagh to use two machines containing the improvements described in letters patent reissue No. 6,162, No. 159,· 702, and No. 178,869; the licensee paying three mills for eaoh pair
1 Edited

by Oharles O. Linthicum, Esq., of the Chicago bar.

512

FEDERAL REPORTER.

of counters made upon said machines and sold. The complainants relied entirely upon this license fee, and the proper deduction to be made therefrom, as the rule or basis for an ascertainment of damages. No. 178,869, known as the double process patent, contained six claims. The alleged invention consisted mainly in a double process for making a counter from a blank; the first consisting in shaping it by means of a former moving upon an axis, and suitable means for holding the blank up to the former, the machine for performing this part of the process having been patented to Moffitt by reissue 6,162; and the second process consisting in moulding the counter so formed over a male mould of the desired form. The first part bent the blank to a "clam-shell" form, and the second turned the "clam shell" into a completely moulded counter. The machinery by which the second part was performed was covered by the first and fourth claims of the Simonds and Emery patent, which Moffitt was licensed to use, and which he, in fact, permitted Cavanagh to use when he granted the license hereinbefore mentioned. After this license was granted, Moffitt, voluntarily and without compensation, put into the machines the improvements described in No. 209,826. The court found that claims 5 and 6 only of No. 178,869, and which covered unimportant parts of the machine, were valid, and that claims I, 3, and 4, of No. 209,826 were valid. Reissue 6,162 has been held by the supreme court to be void. Moffitt v. RogM'S, 106 U. S. 423; S. C. 1 Sup. Ct. Rep. 70. No. 159,702 is admitted to have been of no pecuniary importance. It will thus be seen that, of the three patents which Cavanagh was licensed to use, one is void, the second is immaterial, and only two unimportant claims of the third are valid. Moffitt says in reply that, although No. 6,162 is void, yet that No. 209,826 was a valid substi· tute therefor, and that by means of this substitute Cavanagh had the benefit of the machine which he was licensed to use. It is unnecessary to consider any legal objection to this proposition, for it is not supported by the facts. No. 6,162, as will be seen by the decision in Moffitt v. Rogers, was a broad patent, and, if it had been sustained, covered So valuable invention, while No. 209,826 is a very narrow patent, and was only sustained upon a technicality. There was no evidence before the master, and, in my opinion, no evidence could have been produced, which would justify a finding of anything mote than nominal damages for an infringement of so much of the valid Moffitt patents as were used by Cavanagh. In the Emery suit the complainants say that the master erred in his finding of nominal damages only, because "the facts before him were sufficient to warrant a computation of damages upon the principle of an established fee. Although the double process claim of the 1876 patent named in the license was held void, Cavanagh continued to enjoy practically the benefits of that claim by virtue of the

THE MARTHA BROWER.

513

presence in the machines of the Simonds and Emery device of the divided mould, without which the said process could not be worked out. which Simonds and Emery device the complainant had acquired from Simonds and Emery the right to put in the machines, aud which device the court decided to be validly claimed iu the Simouds and Empry patent. Therefore, wbatever valuation, under the license agreement between Moffitt and Cavanagh, belonged to the double process claim of the 1876 patent, and would have been a proper measure of damage under that claim, if it had been held valid, is to be taken as the proper measure of damage for the subsequent unlicensed use of the Simonds and Emery divided mould, the use of which in the machine was the use of the process to all practical intents and purposes." A sufficient answer to this exception is that Cavanagh's license fee was based upon the use of the double process, which consisted in the use of No. 6,162 and No. 147,288, and that the use of the Simonds and Emery mould alone was not practically the use of the double process. There was no testimony which could justify a finding of how much the use of one machine only was worth. Simonds' testimony upon this point I do not regard as valuable. It is unimportant to consider the exceptions in the Moffitt case in regard to the number of counters which Cavanagh made, because, whatever the number, the finding of nominal damages must be the same. The exceptions in both cases are overruled, and the master's reports are confirmed. The final decree in the Moffitt case should be without costs.

THE MARTHA BROWER.!

(District Oourt,

n. HassachusettB.

May 4, 1886.)

1.

COLLISION-CHANGE OF COURSE-DEFECTIVE LOOKOUT-CONFLICTING TESTIMONy-PRESUMPTIONS ARISING FROM COMPARISON OF VESSELS.

The schooner C. collided with the schoonpr M. The former was a small fishing vessel; the latter, a large coaster. At the time of the collision the weather was clear, the wind light, and blowing steadily from the southward. At the time of sighting each other the vessels were sailing on nearly parallel 'ines; the course of the C. being 8. E., that of the M., N. W. by W. The speed of the C. was six knots; that of the M., three knots. The former was close-hauled on the starboard tack, while the latter was on the port tack, with the wind free. The testimony on the part of the C. was that when they first sighted the green light of the M. it bore from two to three points on their port bow, and was distant about three-quarters of a mile; that shortly afterwards both lights became visible, and that the M. continued to come directly on to the C., and struck the latter on her port side. It is further asserted on the part of the C that during all of this time her course remained unchanged: The testimony on the part of the M. is that when they first sighted the red light of the C. it bore two points on their starboard bow, and was distant
by Theodore M. Etting, Esq., olthe Philadelphia bar.

1 Reported

v.27F.no.6-33

:FEDERAL, REPORTER.

'a1)o.ut three-quarters of a mile; that the helm of the M. wa&prdered hard a-port, but that instead of a red a green light appeared on their port bow, whereupon the helm of the M. was starboarded; that shortly afterwards the red light again appeared crossing their bow, and rendering a ,collision inevitable. Held, that the case having been presented on both sides upon the theory that one or the other of these maneuvers actually happened, the probabilities point to the conclusion that the C. was the guilty vessel.
2.

SAME-PRESUMPTIONS ARISING FROM A COMPARISON OF THE CHARACTER AND MANAGEMENT OF THE Two VESSELS.

The circumstance that the master of the M., an experienced mariner, was in charge of the deck; that he had under him a sufficient watch, a competent lookout, and a capable,helmsman; and that the approach of the C. was plainly seen, renders it improbable Uiat under such circumstances the M. would have first kept off two points and then luffed eight points. The circumstance that the master of the C. was below, and did not come on deck until just before the collision; that the lookout. alad of 18,and the wheelsman, were the only people on duty; and that neither of them had been placed in charge of the vessel, or had orders how to act in case of emergency, cannot be disregarded. A comparison of the character, speed, and management of the two vessels renders it much more likely that the C. was guilty of the wrong maneuver tlian theM. 'This presumption is not rebutted by the testimony of the master of the C. with regard to the rudder of the M., as seen by him after the collision. The collision arose undoubtedly from the failure of the lookout on the C. to see the light of the M. until she was close aboard. The change of course followed as the result of the fright and confusion of the man at the wheel.

3.

SAME-NEGLIGENT LOOKOUT-FRIGHT OF HELMSMAN.

Libel by the owners of the schooner Cyrena Ann against the schooner Martha Brower, to recover the loss sustained by a collision between the two vessels. W. W. Dodge, for libelants. G.T. Ilussell, Jr., for claimants. NELSON, J. The Cyrena Ann, a small fishing schooner of 57 tons, belonging to Portland, Maine, left Gloucer:;ter on the morning of August 5, 1885, for a mackerel trip in Barnstable bay. At 8 P. M. of the same day she was 12 miles S. E. by E. from Minot's light, c]osesouthhauled 011 the starboard tack, steering S. E., the wind erly, light, and steady; the evening clear and fine; her speed six knots. The Martha Brower, a three-masted schooner of 612 tons register, to Somers' Point, New Jersey, was on a voyage from Philade]phiato Boston, with a full cargo of 914 tons of coal, and drawing 15 feet of water. She was sailing on the port tack, with the wind free, her course N. W. by W., and her speed three knots. In the collision the Martha Brower struck the Cyrena Ann head on, a little forward of the port beam, cutting into the main hatch, and the latter filled and sunk in half an hour. The Martha Brower suffered the loss of her jib.boom and some of her forward sails and rigging, but was otherwise uninjured. The account given of the collision by Capt. Thompson, of the Martha Brower, in which he is corroborated by all the men on deck, is as follows: At about 8 o'clock, the starboard watch.. conaisting of the master, the second mate, and two able seamen being on deck, the master in charge, the lookout reported the red light of t.he Cyrena.; A'nn two points on the starboard bow, three-

THE MARTHA BROWER.

quarters of a mile away. The master, after examinIng 'her with his glasses from the starboard quarter, and judging herby her. sails to be heading S. E., ordered the helm to be put hard a-port. He then stepped over to the other side of the deck, expecting the light to ap" pea.r over the port bow, as would have happened if the other vessel had kept her course; but not seeing it, he stepped back to. leeward; and saw the approaching vessel's green light, and then ordered the helm to be steadied. 'fhe Cyrena Ann then suddenly sprung her luff, showed her red light, and crossed under the bows of the Martha Brower, thus causing the collision. On the side of the Cyrena Ann, the story of the collision, as told by her lookout and the man at the wheel, is this: The green light of the Martha Brower was first seen between two and three points on the pod bow, three-guarters of a mile off, and then both her lights became visible in the same direction, indicating that she was keeping off. The next seen of her was that she was coming directly into the Cyrena Ann on the port side, the Cyrena. Ann in the mean time having made no change of course whatever. It is obvious, from the relative positions of the two vessels, that either the Martha Brower, after keeping off two points, as it is agreed she did, luffed; or that the Cyrena Ann, instead of keeping her course as she ought to have done, having the right of way, first kept off, and then luffed across the bows of the Martha Brower; and the case was presented on both sides upon the theory that one or the other of these maneuvers actually happened. The question is, which side is to be believed? It seems to me that aU the probabilities of the case point to the conclusion that the Cyrena Ann was the guilty vessel. The Martha Brower was a large, deeply-laden vessel, drawing 15 feet of water, with a valuable cargo on board, approaching Boston in the track of all southern and eastern commerce. She was in charge of her master, a seaman of long experience in coastwise navigation, with a watch of three men on deck, with one able seaman on the lookout and another at the wheel. She was proceeding at a low rate of speed, in a light wind, against a strong ebb-tide. The approach of the Cyrena Ann was plainly seen. That, under such circumstances, she either would or could have first kept off two points, and then luffed eight points, is extremely improbable. On the other hand, to the Cyrena Ann, a small fore and aft fishing schooner, withouteargo. nearly or· quite close-hauled, with all sails set and going with the tide, at twice the speed of the Martha Brower, such a chal1ge of course was not impossible. The only men on deck were the lookout, who was a lad 18 years old, and the man at the wheel. Neither of them had charge of the vessel, and they had received no orders how to act in case of an emergency. The skipper and the rest of the below.. The lookout, some before the collision, went below to call the skipper, who came on deck just as the collision happened. Comparing.the character· and,management Qfthe two vessels, it is

516

FEDERAL REPORTER.

mnchmore likely that the Cyrena Ann was guilty of the wrong movement than the Martha Brower. The depositions of the two men on deck on the Oyrena Ann are by no means satisfactory. They indicate great ignorance, or else want of truthfulness, and are untrustworthy. The aocident arose, undoubtedly, from the failure of the lookout of the Cyrena Ann to see the light of the Martha Brower until she was close aboard, and the change of course followed as the reBult of the fright and confusion of the man at the wheel. The skipper of the Cyrena Ann testifies that after the accident he took a boat, and rowed under the stern of the Martha Brower, and f()Und her rudder turned hard to port. Great reliance is placed on this fact by the libelants. But the collision itself would have the ef· feet to throw the Martha Brower's stem to port, and the rudder would naturally follow the movement of the stem in the same direction. It might also have been changed in the efforts to back off. The fact is not sufficient to overcome the testimony from the Martha Brower that her helm was steadied, and the other stl'Ong presumptions in her favor. Libel dismissed, with costs.

THE ANNEX No. 3.1

HUGG

v. THE PENNSYLVANIA ANNEX No.3.

February 27,1886.)

(District Court, E. D. Ne1JJ York.

CoLLISION-FOG-IDENTITY OF COLLIDING VESSEL-ALmr.

On the evening of February 6, 1884, a vessel collided with the steamer Western Texas, which lying at Pir:r 9. East river; but, owing to the darknesa and a thick fog which prevailed at the time, it waa impoasiule to diatinguiah clearly the boat which did the damage. At about that t\me, on the same evening. the Pennsylvania Annex No.3, on her way from Brooklyn to Jeraey City, was in collision with some object in the vicinity of Pier 9. Suit waa brought against Annex No.3 for the damage sustained by the Western Texas. The claimanta denied the identity of the colliding vessel with the Annex boat. Held, on the evidence, that the libelant had not proved that the damage in question was done by Annex No.3, and that the libel should be dismissed.

In Admiralty. Evarts, Clwate rt Beaman, (Treadwell Cleveland,) for libelant. Goodrich, Deady rt Goodrich, for claimant. BENEDICT, J. This action is to recover of the ferry-boat Annex No. 8 the damages sustainfld by the steamer Western Texas by being run into on the evening of February 6, 1885, while lying along-side Pier 9, in the East river. At the time this damage was done to the West·
1

Reported by R. D. & Wyllys Benedict, Esqs., oithe New York bar.