THE TREMOLO PATENT, 90 U. S. 518 (1874)

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U.S. Supreme Court

The Tremolo Patent, 90 U.S. 23 Wall. 518 518 (1874)

The Tremolo Patent

90 U.S. (23 Wall.) 518


1. An amendment which changed the character of a bill, allowed even after final decree, the circumstances being peculiar and the cause having been, in fact, tried exactly as it would have been if the bill had originally been in the amended form.

2. The defendants, venders of organs generally, and selling sometimes organs having a patented invention consisting of a combination of what was called a "tremolo attachment," with the organ, and selling sometimes organs without the attachment, were decreed guilty, in their sales of organs with the attachment, of infringing the complainant's patent.


i. That in the ascertainment of profits made by them from sales of the organs with the tremolo attachment, it was proper to let them drove the general expenses of their business in effecting sales of organs generally, and deduct a ratable proportion from the profits made by the tremolo attachment.

ii. That the master in the present case, for the particulars of which the reader must see the statement of the case (infra, page 90 U. S. 520), had ascertained on right principles the general expenses.

Page 90 U. S. 519

Hitchcock & Co., owners by assignment of a patent to one Carpenter, which had been twice reissued to themselves, filed a bill in the court below against Tremaine and others, vendors of organs generally and other musical instruments, to enjoin their sale of what was known as a "tremolo attachment," an appendage sometimes made to organs; the purpose of which is to make a tremolo or vibratory note, preserving at the same time, as far as possible, its smoothness, fullness, and power.

This tremolo attachment was no necessary part of an organ, but, as its name declared, an "attachment," an optional device, used or not used at pleasure.

The defendants, who, as already said, were venders of organs generally and who bought different sorts of organs from the different makers of them, had and sold organs with the attachment (buying them from persons not licensed), and organs without the attachment. For those containing the attachment, they paid an additional price, and they sold them also for more than those which did not have the attachment.

The defendants answered the bill, and the case having been heard and they decreed guilty of infringement, it was referred to a master to take an account of profits, the order of reference directing:

"That the permit the defendants to prove the general expenses of their business incurred alike to effect the sale of all goods (i.e.,, not specifically incurred in reference to any particular class or kind), said general expenses to be apportioned by the master, and a part of the same, bearing the same proportion to the whole that the gross sum received from sales of the infringement bears to the gross sum received by the defendants from all sales in their said business, to be added to the expense of the infringing tremolos, and allowed to the defendants."

In taking this account, the master did accordingly allow the defendants to prove the general expenses of their business incurred in effecting the sales of all musical instruments, and deduct a ratable proportion from the profits made by the sale tremolo attachments. To explain, he reported thus:

Page 90 U. S. 520

"1st. That the gross sum received by the defendants from all sales in their said business, during the period specified, was $91,165.32."

"2d. That the gross sum received by the defendants from sales of the infringement was $3,913.96."

"3d. That the general expenses of their business incurred alike to effect the sales of all goods was $16,868.93."

"4th. That the proportion of such general expenses applicable to the tremolo, pursuant to said order, is $729.22."

"5th. That if said proportionable part of the expenses be added to the expense of the tremolo, or deducted from the profits previously reported, to-wit, $1,238.48, the profit derived by the defendants from the infringing tremolo will amount to the sum of $509.26."

No detailed statement of general expenses was offered before the master on the part of the defendants, nor did they prove specific items of general expense, except the items of rent, salaries, freight, and cartage, advertising, insurance, gas, and fuel. They made a general statement, however, and introduced their books in cross-examination. Both parties submitted analysis of these books. The master adopted the figures of the defendants' analysis except, where he considered them at variance with the previous sworn testimony, and he allowed as general expenses certain sums and items, including:

Stationery and printing . . . . . . . . . $1,405.28

Telegraphing. . . . . . . . . . . . . . . 47.78

Office furniture and fixtures . . . . . . 239.35

Expressage. . . . . . . . . . . . . . . . 28.12

Labor . . . . . . . . . . . . . . . . . . 79.30

And disallowed eight various large items.

The complainants excepted:

1st. To the deduction from the profits made on the sale of the tremolo attachments of a ratable proportion of the general expenses of the defendants' business.

2d. To the way in which the master ascertained the general expenses.

The court, however, confirmed the master's report and a decree was entered accordingly.

Page 90 U. S. 521

Soon after this was done, it was discovered that the case had been tried on issues not made in the pleadings; that the complainants in taking their proofs had put in evidence a reissue different from and later than the one which they had set out in their bill as the ground for their complaint, and that the bill had never in any way been amended.

As to this new matter now brought up after decree made, the case was thus:

The bill set forth that a patent for the "attachment" had been granted on the 27th day of June, 1865, to one Carpenter; that subsequently he assigned the letters patent to the complainants; that on the 18th day of May, 1869, they surrendered the patent and obtained a reissue to themselves (No. 3444), and that the defendants had been guilty of infringing their rights under the patent.

To the complaint thus exhibited the defendants answered, admitting the grant of the letters to Carpenter, but denying all knowledge as to the truth of the allegations that Carpenter had at any time assigned his interest to the complainants or to any one or more of them, and therefore denying that the complainants had any interest in the said letters patent or to the "reissues" of the same as set forth in the bill of complaint. The answer further averred that Carpenter was not the original inventor of the tremolo attachment, but that it was known and was in use before his alleged invention was made. It denied that the defendants had infringed upon the rights and privileges granted by the patent dated June 27th, 1865, "or by ANY of the reissues of the same."

To this answer a general replication was put in, and the parties went to trial, when the complainants gave in evidence, without objection, reissued letters patent No. 3665, dated October 5th, 1869, which had been granted on the surrender of the first reissue No. 3444. This second reissue was not set out in the bill, but it was obvious enough that both parties supposed it was, through all the progress of the trial. As already said, the answer denied infringement not of the single reissue mentioned in the bill, but of any of the reissues. No other reissue than No. 3665 was put in

Page 90 U. S. 522

evidence. The decretal order to account mentioned it in terms. The evidence taken by the master under the order of reference related only to attachments sold by the defendants after the second reissue was granted. In the exceptions taken by them to the master's report, no intimation was made that the rights of the complainants under the reissue No. 3665 were not on trial, and not even when the final decree was made was it suggested that the parties had been trying the case on an issue not made by the pleadings.

After the final decree had been made, the complainants applied to have the bill of complaint amended by inserting in it a declaration on the reissued letters patent which were decreed to be valid, and the court below made an order containing a recitation of alleged facts to authorize the order amending the bill as prayed for.

There was no allegation that the bill of complaint ever contained the allegation as to reissue No. 3665, prior to the judgment. The motion and the order were not made "to conform the bill to the proofs."

Both parties appealed, the complainants because of the confirmation of the report in the face of their two exceptions to it, the defendants because of the amendment allowed in the bill after a final decree made.

Page 90 U. S. 527

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