by Dennis Crouch
Calculating damages for patent infringement can be a complex task, particularly when the invention is an improvement to an existing machine or product. The Supreme Court’s 1884 decision in Garretson v. Clark, 111 U.S. 120, helped establish a rule requiring apportionment in cases involving improvement patents.
The plaintiff, Garretson held two patents covering improved mop heads and sued the defendants for infringement. The lower court sided with the patentee — finding the claims valid and infringed and also issued an injunction to halt ongoing infringement. However, the court balked at awarding the requested back-damages for past infringement.
The patentee had offered a simple lost-profit damage calculation. In particular the court was presented with evidence showing how much profit the patentee made from the sale of each mop, and the patentee asked the court to force the defendant to pay that amount for each of infringing mop. The circuit court judge Samuel Blatchford appointed NY patent attorney George J. Sicard to conduct an accounting. Sicard came back with a recommendation of $0 in damages, and Blatchford agreed.
The issue here is that the patent covered an improvement to a mop, but the patentee was seeking damages for the entire profits associated with the mop — not just the value of the improvement. In his opinion, Blatchford wrote:
The patentee must in every case give evidence tending to separate or apportion the defendant’s profits and the patentee’s damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or speculative; or he must show, by equally reliable and satisfactory evidence, that the profits and damages are to be calculated on the whole machine, for the reason that the entire value of the whole machine, as a marketable article, is properly and legally attributable to the patented feature.
Garretson v. Clark, 10 F. Cas. 40, 44 (C.C.N.D.N.Y. 1878). The plaintiff has the burden of proving damages, but its theory of damages utterly failed. And, no other damages evidence was presented. The effective result was no damages.
At the time of the decision, Blatchfort was a circuit court judge. In 1882, he was nominated by President Chester Arthur to the U.S. Supreme Court. Because of the long backlog at the time, Blatchfort reached the court before the case was heard (even though it was directly appealed). The Supreme Court finally got around to hearing the appeal in 1886 and affirmed in an opinion by Justice Field.
The high court quoted Blatfort’s decision as I have done above and also remarked that for improvement patents, “the patentee must show in what particulars his improvement has added to the usefulness of the machine or contrivance. He must separate its results distinctly from those of the other parts, so that the benefits derived from it may be distinctly seen and appreciated.” Garretson v. Clark, 111 U.S. 120 (1884).
The decision helped establish a clear rule for patentees to follow when claiming damages for improvements in existing machines or contrivances. It emphasized the presentation reliable and tangible evidence to apportion profits and damages between patented and unpatented features or evidence to demonstrate that the entire value of the product is attributable to the patented feature.
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An interesting aside from this case is that the defendant – Charles B. Clark – is also co-inventor of one of the two asserted patents. Clark had transferred his rights to a third party, and Garretson bought them up. The case involves sales of 100,000+ mops.
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Note here that this case was brought in equity rather than at law and so that raises a major difference between current cases, and we had different statutory language under the 1870 Act. A lot of our 1800s patent cases have quirks that leave them not susceptible to direct application to today’s cases. Still, I be but they still provide some amount of foundational guidance and gives a chance to observe the evolution of the legal principles we know today.