Establishing Tips for Patent Damages: The Garretson v. Clark Case of 1884

by Dennis Crouch

Calculating damages for patent infringement generally is a complicated activity, significantly when the invention is an enchancment to an present machine or product.  The Supreme Courtroom’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.  Nonetheless, the courtroom balked at awarding the requested back-damages for previous infringement.

The patentee had supplied a easy lost-profit injury calculation.  Specifically the courtroom was introduced with proof exhibiting how a lot revenue the patentee constructed from the sale of every mop, and the patentee requested the courtroom to pressure the defendant to pay that quantity for every of infringing mop.  The circuit courtroom choose Samuel Blatchford appointed NY patent lawyer 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 all the income related to the mop — not simply the worth of the advance.  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 function and the unpatented options, and such proof should 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 all the worth of the entire machine, as a marketable article, is correctly and legally attributable to the patented function.

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 concept of damages totally failed. And, no different damages proof was introduced. The efficient end result 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 Courtroom.  Due to the lengthy backlog on the time, Blatchfort reached the courtroom earlier than the case was heard (despite the fact that it was instantly appealed).  The Supreme Courtroom lastly received round to listening to the attraction in 1886 and affirmed in an opinion by Justice Area.

The excessive courtroom quoted Blatfort’s determination as I’ve accomplished 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 elements, 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 observe 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 reveal that all the worth of the product is attributable to the patented function.

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An attention-grabbing apart from this case is that the defendant – Charles B. Clark – can also be co-inventor of one of many two asserted patents.  Clark had transferred his rights to a 3rd get together, and Garretson purchased them up.  The case includes gross sales of 100,000+ mops.