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U.S. Supreme Court

Yale Lock Manufacturing Company v. Sargent, 117 U.S. 536 (1886)

Yale Lock Manufacturing Company v. Sargent

Argued March 12, 15, 1886

Decided April 5, 1886

117 U.S. 536


Claim 1 of reissued letters patent No. 4696, granted to James Sargent, January 2, 1872, for an "improvement in locks," on an application filed September 25, 1871, the original patent, No. 57,574, having been granted to him August 28, 1S66, namely,

"1. In a combination lock for safe or vault doors, a bolt I which turns on a pivot or bearing when said bolt I is used in a lock having no ordinary sliding lock bolt, and in connection with the separate bolt work of the door, and so arranged as to receive the pressure of the said bolt work without transmitting it to the wheels or other equivalent works of the lock,"

is not invalid, as being an unlawful expansion of claim 1 of the original patent, namely,

"1. The rotating tumbler I, when separated and isolated in action from the permutation wheels, and so arranged that any inward pressure upon the bolt will be exerted upon the bearing of

Page 117 U. S. 537

said tumbler, and have no action nor effect upon the said permutation wheels, substantially as and for the purpose herein specified."

The invention covered by claim 1 of the reissue defined, and certain prior structures held not to have anticipated it.

The defendant's lock held to be an infringement of that claim.

The plaintiff granted no licenses under his patent, but sold locks made by himself containing the invention. The defendant sold infringing locks at less prices than the plaintiff, and compelled the plaintiff to lower his prices. As the turning bolt was an essential feature in each of the two locks, and the plaintiff could not sell his patented device unless in a lock, and thus made a profit on the entire lock, and was deprived of that profit by such enforced reduction of prices, held that the infringement caused the entire loss of the plaintiff, after allowing a proper sum for any other patented device contained in the defendant's lock and for any other causes which gave to the defendant an advantage in selling his lock.

Such loss on the locks sold by the plaintiff, by the reduction of price, was allowed to the plaintiff as damages in a suit in equity for infringement, although the defendant made no profit.

The plaintiff, as legal owner of the patent, was entitled to recover the damages although he had a partner in making and selling the locks.

As the bill alleged infringement of the reissue generally, and the answer set up that the reissue was not for the same invention as the original patent, and one of the claims of the reissue not disclaimed before this suit was brought was invalid, as an unlawful expansion of the original patent, although the claim on which a recovery was allowed was good, this Court, the patent having expired, but there having been no unreasonable delay in filing a disclaimer to the invalid claim, reversed so much of the decree below as awarded costs to the plaintiff, and affirmed it in all other respects, each party to bear his own costs in this Court and one-half of the expense of printing the record.

This was a suit in equity to recover for infringement of a patent. The case in stated in the opinion of the Court.

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