September 26, 2023

by Dennis Crouch

Calculating damages for patent infringement is usually a complicated process, notably when the invention is an enchancment to an present machine or product.  The Supreme Court docket’s 1884 determination in Garretson v. Clark, 111 U.S. 120, helped set up a rule requiring apportionment in instances involving enchancment patents.

The plaintiff, Garretson held two patents overlaying improved mop heads and sued the defendants for infringement.  The decrease courtroom sided with the patentee — discovering the claims legitimate and infringed and in addition issued an injunction to halt ongoing infringement.  Nevertheless, the courtroom balked at awarding the requested back-damages for previous infringement.

The patentee had supplied a easy lost-profit injury calculation.  Particularly the courtroom was introduced with proof displaying how a lot revenue the patentee made out of the sale of every mop, and the patentee requested the courtroom to drive the defendant to pay that quantity for every of infringing mop.  The circuit courtroom choose Samuel Blatchford appointed NY patent legal professional George J. Sicard to conduct an accounting.  Sicard got here again with a suggestion of $0 in damages, and Blatchford agreed.

The difficulty right here is that the patent lined an enchancment to a mop, however the patentee was in search of damages for your complete income related to the mop — not simply the worth of the development.  In his opinion, Blatchford wrote:

The patentee should in each case give proof tending to separate or apportion the defendant’s income and the patentee’s damages between the patented characteristic and the unpatented options, and such proof have to be dependable and tangible, and never conjectural or speculative; or he should present, by equally dependable and passable proof, that the income and damages are to be calculated on the entire machine, given that your complete worth of the entire machine, as a marketable article, is correctly and legally attributable to the patented characteristic.

Garretson v. Clark, 10 F. Cas. 40, 44 (C.C.N.D.N.Y. 1878).  The plaintiff has the burden of proving damages, however its idea of damages completely failed. And, no different damages proof was introduced. The efficient consequence was no damages.

On the time of the choice, Blatchfort was a circuit courtroom choose. In 1882, he was nominated by President Chester Arthur to the U.S. Supreme Court docket.  Due to the lengthy backlog on the time, Blatchfort reached the courtroom earlier than the case was heard (despite the fact that it was immediately appealed).  The Supreme Court docket lastly bought round to listening to the enchantment in 1886 and affirmed in an opinion by Justice Area.

The excessive courtroom quoted Blatfort’s determination as I’ve finished above and  additionally remarked that for enchancment patents, “the patentee should present in what particulars his enchancment has added to the usefulness of the machine or contrivance. He should separate its outcomes distinctly from these of the opposite components, in order that the advantages derived from it might be distinctly seen and appreciated.” Garretson v. Clark, 111 U.S. 120 (1884).

The choice helped set up a transparent rule for patentees to comply with when claiming damages for enhancements in present machines or contrivances. It emphasised the presentation dependable and tangible proof to apportion income and damages between patented and unpatented options or proof to exhibit that your complete worth of the product is attributable to the patented characteristic.

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An fascinating other than this case is that the defendant – Charles B. Clark – can be co-inventor of one of many two asserted patents.  Clark had transferred his rights to a 3rd social gathering, and Garretson purchased them up.  The case includes gross sales of 100,000+ mops.