and overruled. The case then went to the master, who reported that the infringement was willful, wanton, and persistent; that the appellees had sustained damages to the extent of $2,970.50; and that they waived all claims to the profits realized by the infringement. Exceptions were filed to this report, and overruled, and a final decree entered in favor of Graff and Donnell for $2,970.50, with interest, and costs, from which decree this appeal has been prosecuted. Appellants urge three grounds for reversal: First, that a title to the patent sufficient to maintain a suit for infringement was not, at the date of filing the bill, vested in the complainants; second, that Boesch and Bauer could not be held for infringement, because they purchased the burners in Germany from a person having the right to sell them there, though not a licensee under the German patents; third, that the damages awarded were excessive. These propositions are presented by some of the errors assigned, and are the only errors alleged which require atten. tion, that which questions the infringement not being argued by counsel, and that which goes upon the refusal of the circuit court to grant a rehearing not being open to consideration here. Buffington v. Harvey, 95 U. S. 99, 100; Steines v. Franklin Co, 14 Wall. 15, 22; Railway Co. v. Heck, 102 U. S. 120; Kennon v. Gilmer, 131 U. S. 22, 24, 9 Sup. Ct. Rep. 696. The assignment by Schwintzer to Albert Graff was dated the 22d day of April, 1885, was absolute in form, and transferred title to six twenty-fourths of the patent, for the expressed consideration of "the sum of one hundred dollars, and for other valuable considerations;" but a contract between Schwintzer and Albert Graff was produced by the latter upon his examination by the respondents, which read as follows: "S. 1. Mr. Albert Graff binds himself to pay to Mr. Carl Schwintzer, instead of the, in the patent letter mentioned, one hundred dollars for the first year, the sum of two hundred and fifty marks, payable on the 1st February, 1886, and each following year on the same date the sum five hundred marks, (not less,) till the amount of four thousand marks are paid in all. S. 2. Should Mr. Albert Graff, of San Francisco, not be able to sell more than one thousand burners, called 'Diamond' or 'Mitrailleuse' burners. No. 10,621, manufactured by Mess. Schwintzer & Graff, of Berlin, he reserves to himself to make up a new agreement with Mr. Carl Schwintzer. S. 3. Should not Mr. Albert Graff, San Francisco, against all expectation, stick to the agreements mentioned in S. 1 & 2, all titles of the patent letter ceded to him by Carl Schwintzer shall him return. S. 4. Mr. Carl Schwintzer, partner of the firm Schwintzer & Graff, engages to deliver to Mr. Albert Graff the said burners at the same price as before, if the market price of the metal does not exceed,-make 150 % kos.; and promise likewise to effect any order promptly, if in his power. Albert Graff testified in respect to the words, "instead of the, in the patent letter mentioned, one hundred dollars for the first year," etc., that they meant that, instead of the $100 mentioned in the assignment, he was to pay 250 marks the first year, and that the contract was made one day later than the assignment. Counsel contends that the two documents must be construed together, and amount simply to an executory contract to assign when Graff shall have paid the sum of 4,000 marks; that, therefore, Graff could, at most, only be regarded as a licensee of the interest under the patent, until such time as his contract should be executed according to its terms; and that the legal right as to six twenty-fourths of the patent re mained in Schwintzer, who was therefore a necessary party. It is evident that the. agreement was not drawn by parties well versed in English, but their intention is sufficiently apparent. The assignment, being absolute in form, conveyed the legal title, and on the next day the parties signed this contract, relating to the consideration, probably to enable Albert Graff to pay the 4,000 marks out of the sales of the burners; at all events, it provides that, if Graff failed to carry out his covenants, then the title was to return to Schwintzer, which provision was in the nature of a security to him that he should be paid. The condition that if Mr. Albert Graff did not, "against all expectations, stick to the agreements mentioned in S. 1 & 2, all titles of the patent letter ceded to him by Carl Schwintzer shall him return, is a condition subsequent. The title had already vested, but was liable to be defeated in futuro, on failure of the condition. There has been no such failure, but, on the contrary, Albert Graff has paid the 4,000 marks in full. We shall therefore not reverse the decree on the ground first referred to. Letters patent had been granted to the original patentees for the invention by the government of Germany in 1879 and 1880. A portion of the burners in question were purchased in Germany from one Hecht, who had the right to make and sell them there. By section 5 of the imperial patent law of Germany, of May 25, 1877, it was provided that "the patent does not affect persons who, at the time of the patentee's application, have already commenced to make use of the invention in the country, or made the preparations requisite for such use. 12 O. G. 183. Hecht had made preparations to manufacture the burners prior to the application for the German patent. The official report of a prosecution against Hecht in the first criminal division of the royal district court, No. 1, at Berlin, in its session of March 1, 1882, for an infringement of the patent law, was put in evidence; wherefrom it appeared that he was found not guilty, and judgment for costs given in his favor, upon the ground "that the defendant has already prior to November 14, 1879,-that is to say, at the time of the application by the patentees for and within the state,-made use of the invention in question, especially, however, had made the necessary preparations for its use. Section 5, eodem. Thus Schwintzer & Graff's patent is of no effect against him, and he had to be acquitted accordingly. It appears that appellants received two 002. and use. The right which Hecht had to make and sell the burners in Germany was allowed him under the laws of that country, and purchasers from him could not be thereby authorized to sell the articles in the United States in defiance of the patent. A prior foreign patent operates under our law to limit the duration of the subsequent patent here, but that is all. The sale of articles in the United States under a United States patent cannot be controlled by foreign laws. This disposes of the second error relied on. invoices from Germany, the burners in one of which were not purchased from Hecht, but, in the view which we take of the case, that circumstance becomes immaterial. The exact question presented is whether a dealer residing in the United States can purchase in another country articles pat-rights of patentees under a United States ented there, from a person authorized to sell them, and import them to and sell them in the United States, without the license or consent of the owners of the United States patent. In Wilson v. Rousseau, 4 How.646, it was decided that a party who had purchased and was using the Woodworth planing-machine during the original term for which the patent was granted, had a right to continue the use during an extension granted under the act of congress of 1836; and Mr. Chief Justice TANEY, in Bloomer v. McQuewan, 14 How. 539, 549, says, in reference to it, that "the distinction is there taken between the grant of the right to make and vend the machine and the grant of the right to use it. And he continues: "The distinction is a plain one. The franchise which the patent grants consists altogether in the right to exclude every one from making, using, or sending the thing patented without the permission of the patentee. This is all that he obtains by the patent. And, when he sells the exclusive privilege of making or vending it for use in a particular place, the purchaser buys a portion of the franchise which the patent confers. He obtains a share in the monopoly, and that monopoly is derived from, and exercised under, the protection of the United States. And the interest he acquires necessarily terminates at the time limited for its continuance by the law which created it. * But the purchaser of the implement or machine, for the purpose of using it in the ordinary pursuits of life, stands on different ground. In using it he exercises no rights created by the act of congress, nor does he derive title to it by virtue of the franchise or exclusive privilege granted to the patentee. The inventor might lawfully sell it to him, whether he had a patent or not, if no other patentee stood in his way. And when the machine passes to the hands of the purchaser it is no longer within the limits of the monopoly. It passes outside of it, and is no longer under the protection of the act of congress. "In Adams v. Burke, 17 Wall. 453, it was held that "where a patentee has assigned his right to manufacture, sell, and use within a limited district an instrument, machine, or other manufactured product, a purchaser of such instrument or machine, when rightfully bought within the prescribed limits, acquires by such purchase the right to use it anywhere, without reference to other assignments of territorial rights by the same patentee;" and that "the right to the use of such machines or instruments stands on a different ground from the right to make and sell them, and inheres in the nature of a contract of purchase, which carries no implied limitation to the right of use within a given locality. Mr. Justice BRADLEY, with whom concurred Mr. Justice SWAYNE and Mr. Justice STRONG, dissented, holding that the assignee's interest "was 1 mited in locality, both as to manufacture This brings us to the consideration of the damages reported by the master, which report was confirmed by the court; and we are met on the threshold by the objection that the exceptions taken in the circuit court were not sufficiently specific to entitle appellants to raise the questions here upon which they submit argument. These exceptions are as follows: "First Exception. For that the said master has in and by his said report certified on page six? thereof that 'the cap was the essential feature of the Graff burner. The respondent adopted Graff's arrangement, and then reduced the price of the burner, forcing Graff to do the same in order to hold his trade. The evidence shows that the reduction in prices by Graff was solely due to the respondents' infringement. So far as the evidence shows, the only competitor with Graff in the use of his cap arrangement during the period covered by the accounting was the respondent;' whereas, the said master ought to have certified that respondent came innocently into possession of the burners by purchase in the ordinary course of business from legitimate manufacturers thereof in Germany, and that immediately upon being notified that they were claimed to be an infringement he ceased to sell the same. The evidence shows that at about the time Graff made the alleged reduction in the price of his burners there were thrown upon the market lampburners of other kinds, of equal or greater power, which came directly in competition with the Graff burner, and that the reduction in price was the result of such competition; that the sale of 14 infringing burners by respondent, in the course of three years' trade, could not have been a sufficient competition to plaintiff's business to cause him to make a reduction of price, where the testimony shows that during the period from March 1, 1886, when complainant reduced the price of burners, until October 31, 1887, he sold about 6,000 of said burners. Second Exception. For that the said master hath certified that the amount of damages which the complainant has suffered and sustained from and by reason of said infringement is two thousand nine hundred and seventy dollars and fifty cents;' whereas, he should have reported nominal damages. In all which particulars the report of the said master is, as the said respondent is advised, erroneous, and the said respondent appeals therefrom to the judgment of this honorable court." It is conceded that these exceptions raise two points, namely, that the infringement was not willful, and that the reduction of $706 705 66 prices was not caused solely by it; and this, | by respondents, containing the invention as it seems to us, is quite sufficient to permit the real question involved to be passed upon. The master awarded $2,970.50 as damages for the reduction in price, which, he holds, was caused by the respondent's infringement. He says: After the reduction in his prices, complainant sold, at wholesale, one thousand three hundred and twelve ten-wick burners, at a price twenty-five cents less on each than his original price; four hundred and fifty twelve-wick burners, at fifty cents less; five hundred and ninety-two sixteen-wick burners, at seventy-five cents less; and seven hundred and sixteen twenty-wick burners, at seventy-five cents less,-a total difference between the original and the reduced prices of one thousand five hundred and thirty-five dollars and fifty cents. In addition, he sold at retail, on an average, five burners on each of the five hundred and seventy-four business days between the time when his prices were first reduced and October 31, 1887; the number of burners thus sold being two thousand eight hundred and seventy, which were sold at a minimum reduction of fifty cents each under original prices,-a total difference between the original and the new prices of fourteen hundred and thirty-five dollars; which sum, added to the said sum of one thousand five hundred and thirty- | five dollars and fifty cents, gives an aggregate amount of two thousand nine hundred and seventy dollars and fifty cents. The report of a master is merely advisory to the court, which it may accept and act upon, in whole or in part, according to its own judgment as to the weight of the evidence. Kimberly v. Arms, 129 U. S. 512, 523, 9 Sup. Ct. Rep. 355. Yet, in dealing with exceptions to such reports, "the conclusions of the master, depending upon the weighing of conflicting testimony, have every reasonable presumption in their favor, and are not to be set aside or modified unless there clearly appears to have been error or mistake on his part." Tilghman v. Proctor, 125 U. S. 136, 149, S Sup. Ct. Rep. 894. We think there was error here, within that rule. Where the patentee granted no licenses, and had no established license fee, but supplied the demand himself, and was able to do so, an enforced reduction of price is a proper item of damages, if proven by satisfactory evidence. * Manufacturing Co. v. Sargent, 117 U. S. 536, 6 Sup. Ct. Rep. 934. The damages must be actual damages, but where the patented feature is the essential element of the machine or article, as in the case just cited, if such damages can be ascertained they may be awarded. When, however, a plaintiff seeks to recover because he has been compelled to lower his prices to compete with an infringing defendant, he must show that his reduction in prices was due solely to the acts of the defendant, or to what extent it was due to such acts. Cornely v. Marck wald, 131 U. S. 159, 9 Sup. Ct. Rep. 744. There must be some data by which the actual damages may be calculated. New York v. Ransom, 23 How. 487; Rude v. Westcott, 130 U. S. 152. 9 Sup. Ct. Rep. 463. The master reported "that the number of lamp-burners proven to have been sold claimed in and by the first claim of complainants' letters patent, is fourteen, provided that only the capped burners sold contain said invention, and that the number is one hundred and fourteen, if the half capped burners so sold are to be held to contain said invention." The evidence established that the first invoice of lampburners contained 50 20-wick burners with caps, of which respondents sold 4; and 50 12-wick burners with half caps, of which respondents sold 12; and 5016-wick burners with half caps, of which respondents sold 44; and that respondents altered the 46 remaining 20-wick burners by changing their caps to half caps, and sold 44. This makes the 100 with half caps, referred to by the master. Of the second invoice, the respondents sold 4 20-wick capped burners and 6 16-wick capped burners, making, with 4 20inch burners with caps sold out of the first invoice, the 14 capped wick burners reported as thus disposed of. The original bill in this case was filed September 17, 1886. It had been preceded by another suit, which had been dismissed. The goods in the second invoice, it is testified, had been ordered before this suit was commenced, but the invoice is dated October 16, 1886. This invoice contained 100 20 and 10016-wick burners with caps, of which respondents sold 4 20-wick and 6 16-wick burners unchanged, as before stated. Most of this lot were* still on hand at the time the testimony was taken, though some had been altered into what was called the "Boesch Burner,” which had no caps at all, and sold as such. The evidence tends to establish a profit of $1.85 on the 20-wick burners, $1.50 on the 16-wick, and 75 cents on the 12-wick. This would show a profit of $23.80 on the 14 capped burners, being 820-wick and 6 16wick burners; and a profit of $156.40 on the 100 half-capped burners, being 44 20wick, 44 16-wick, and 12 12-wick burners. Respondents had been advised by their counsel that the burners with half caps were not an infringement. The cap was the invention in question. The claim infringed, as already seen, was a combination, with the guide tubes, of a ring-shaped cap provided with openings for the wicks, said cap being applied to the upper ends of the guide tubes, so as to close the intermediate spaces between the same. The half cap admitted the air directly to each wick, and in that respect differed from the claim of the patent. It is argued, however, with much force, on behalf of the appellees, that the difference was a difference in degree, and not in kind, as the air reached the wick when the full cap was used, and the functions of the latter as a strengthening band, a protector of the tops of the tubes, and in other particulars were performed by the half cap; and this position is not resisted by counsel for appellants. But, assumiug that the sale of 100 burners with half caps was an infringe ment, we are not prepared to concede that the sale of 114 burners under the cir cumstances detailed could have had the effect, in compelling a reduction of price, which has been ascribed to it. It is remarked by the master that "it is a fact of common knowledge that there is *708 602. rection of a foreman, in loading rails on a construction train which had left a station at a time when one of defendant's regular trains was overdue there, as the foreman knew, and which was standing on the main track about two miles from such station; that the length and weight of the rails was such that concert of action was necessary to lift and throw them on the car safely, and to that end the foreman gave the word of command for such actions until but three or four of the rails remained, and the regular train was seen rapidly approaching, when, with oaths, he urged the men to hurry, that he might move the construction train back to the station; that plaintiff and others were waiting for the command to lift and throw on the car the rail they were holding, when the foreman, with violent language, ordered them to get it on the best way they could, and in the excitement one end of the rail was thrown with more force than the other, so that the rail struck the side of the car, fell back, and, before plaintiff could get out of its way, crushed his leg and foot. Held, that it was proper to direct a verdict for defendant, the only negligence shown being that of plaintiff or his fellow-servants, and not of the foreman. In error to the circuit court of the United States for the district of Colorado. E. T. Wells, for plaintiff in error. John F. Dillon, for defendant in error. to be found on sale in the market a great variety of lamp-burners, among which, as shown by the evidence, have been for many years burners of the same general class as complainants'." This being so, and Boesch & Bauer being dealers in burners generally, it is not to be presumed that Graff reduced his prices, for 19 months, on 6,000 burners, not on account of competition in burners, but because of the effect upon his particular burner created by the sale of 14 of the same kind, and of 100 differing, but the same in principle. Conceding that as Graff granted no licenses, and had no established license fee, but supplied the demand for his burner himself, and was able to supply that demand, and that, therefore, if he was compelled to lower the price by the infringement he could recover for the loss thus sustained, does the evidence satisfactorily establish that the reduction in prices was due solely to the acts of the defendants in infringing? The opinion of Mr. and Mrs. Graff to that effect is not sufficient, and even that is so qualified as to fall far short of expressing it. The master allowed upon 3,070 burners sold at wholesale, and on 2,870 sold at retail, by the complainants, between March 1, 1886, and October 31, 1887, or 5,940 in all. The sales of 104 out of the 114 sold by the respondents apparently took place prior to the filing of the bill. Boesch had been in the business for 20 years. The firm of Boesch & Bauer carried a large stock of lamps, embracing a hundred varieties in styles and sizes, under a very large variety of names. Graff's burner was a "mitrailleuse" burner, and called "Diamond," as the Miller burner was. Boesch testified that there was no difference between the selling price of the Hecht, the Miller, and the Boesch burners; that there was no demand in their trade for a mitrailleuse burner with a cap; and that in his judgment the Boesch burner was better than the Hecht. evidence may properly be considered in connection with the fact that but 114 were sold. We cannot concur with the conclusion that the result of the sales of the 114 burners was to keep Graff's prices for his particular burner down from March 1, 1886, to October 31, 1887. If Boesch and Bauer had a burner which satisfied the public just as well as Graff's, and which they could sell cheaper, Graff cannot complain of the consequences. If Graff's burner was so much better than any other that the public must have it, he could make his own price, and, if within the bounds of reason, find a sufficient market. In the state of the case disclosed by this record, the complainants must be content with the protection of an injunction, and a recovery of the profits realized from the infringing sales. The decree is reversed, and the cause remanded for further proceedings in conform-fendant proceeded to load the rails on the ity with this opinion. (133 U. S. 370) COYNE V. UNION PAC. Ry. Co. (March 3, 1890.) This MASTER AND SERVANT-NEGLIGENCE OF MASTER— FELLOW-SERVANTS. In an action against a railroad company for personal injuries to a servant, it appeared that plaintiff was employed with others under the di BLATCHFORD, J. James Coyne brought an action in the circuit court of the United States for the district of Colorado, against the Union Pacific Railway Company, to recover damages for a personal injury After issue joined, the case was tried by a jury. The court instructed the jury to find the issues for the defendant, to which instruction the plaintiff excepted. The jury ren-, dered a verdict for the defendant, and the plaintiff has brought a writ of error. The bill of exceptions sets forth that the plaintiff gave evidence tending to show the following facts: On and before the 18th of May, 1882, the plaintiff was in the employ of the defendant as a laborer or construction hand, under one McCormick, construction boss or foreman of the defendant. Cormick had authority to control and direct, and compel obedience of, the plaintiff, and also, in his discretion, to discharge the plaintiff or any other servant of the defendant working under his direction and control. While employed by the orders of McCormick, the plaintiff, with the other servants and sectionmen of the defendant, went upon its construction train, which was under the control and direction of McCormick, to a place between two stations on Mc its railroad, known, respectively, as "Byers" and "River Bend," about two miles east from Byers' station, and at such place the plaintiff and the other servants were commanded by McCormick to load upon a certain flat-car in the construction train about 40 steel rails, which were then lying near the track of the railroad. The plaintiff and the other employes of the de flat-car, as directed by McCormick, and under his orders, he directing the labor of the plaintiff and the other servants. Each of the rails was from 24 to 29 feet long, and weighed from 400 to 600 pounds. To lift one of them, the labors of about 10 men were required; and the plaintiff and the other servants under the command of McCormick were divided into two gangs, of 10 or more men each. In loading the rails, each of the gangs was required and directed by McCormick to act in concert, and to lay hold of and lift the rail, and walk with it to the flat-car, and there halt, dress, and, at the word of command given by McCormick, lift the rail, and cast it, with one motion, on the floor of the flat-car. By reason of the length and great weight of the rails, it was necessary, in loading them upon flat-cars, that, in order to avoid injury to the workmen engaged, care, deliberation, and concert of action should be observed, and that some person should give the word of command in each of the several stages of progress in loading them, and particularly at the point when the rail was to be thrown upon the car. Prior to the injury complained of, McCormick had controlled and directed the men in loading the rails, and the plaintiff supposed that, in loading the last rail, the one which hurt him, the same course would be pursued by McCormick. Neither at such place nor nearer than Byers' station was there any siding or switch. When all but three or four of the rails were loaded upon the flat-car, the regular freight train of the defendant appeared, rapidly approaching from the east. McCormick thereupon, with violent oaths and imprecations, urged the plaintiff and the other men of the party to make haste and complete the loading of the rails, so that he might move the construction train back to Byers' station, and out of the way of the freight train. By reason of the great baste so commanded by McCormick, and the confusion resulting therefrom, the plaintiff, who had before been, and then was, working and lifting at the end of the rail seized by the gang to which he belonged, was crowded off from that rail. McCormick, who was then, as before, standing on the flat-car, commanded the plaintiff, with oaths and violent lan guage, to lay hold of the other rail, and not to stand idle. Thereupon the plaintiff, in obedience to the commands of McCormick, rushed to and seized upon the rail being lifted by the other gang of men, and moved forward to the flat-car. While the plaintiff and the other men so holding that rail were awaiting the word of command to lift it, McCormick, with further oaths, imprecations, and harsh and violent commands, ordered the party to get the rail on in any way they could, not giving to them any word of command. Thereupon the party, hurried and agitated by the oaths, imprecations, and violent commands of McCormick, lifted without concert, some at one moment and some at another, and threw the rail at one end with force, and at the other end with less force, so that it struck the side of the flat-car at | one end, and fell backwards. The plaintiff, seeing that it was about to fall, endeavored to retreat out of the way of it, but was unable to avoid it, and it fell on him, bore him down, and broke and crushed his foot and leg. He had been in the serv ice of the defendant only about seven days. At the time of his going with McCormick to the place of loading the rails, the time at which the freight train of the defendant would approach that place was well known to McCormick, and was unknown to the plaintiff. The freight train was overdue | at Byers' station at the time the construction train left that station, and McCormick knew the fact of its being so overdue. and knew that the freight train was then coming towards Byers' station from the east, and the plaintiff knew nothing about the freight train. The injury so occasioned to the plaintiff was probably due and owing to the haste and confusion occasioned by the oaths, violent commands, and injunctions to make haste given by McCormick. The only question to be considered in the case is whether it was proper for the court to instruct the jury to find for the defendant, or whether the case should have been left to the jury. We are of opinion that it was proper to direct a verdict for the defendant. On the facts set forth, the injury to the plaintiff was not caused by any negligence on the part of McCormick. It is alleged that McCormick, knowing of the approach of the regular freight train, moved out his train in the face of it; but that does not show any negligence, for it does not appear that the approaching freight train was so near as to render it unsafe for McCormick to start the construction train. Whatever the distance away of the freight train, it would properly be called an approaching train; and it is very plain that the work of construction and repair must be done in the intervals between the running of regular trains. This latter fact was known as well to the plaintiff as to McCormick, and the plaintiff, being employed to do construction work with a construction train, must be held to have assumed the risk of doing it at the times at which it had to be done. The fact that all of the rails save three or four had been loaded at the time shows that there was no negligence in undertaking to load the rails upon the construction train at the time they were loaded. The negligence on the part of McCormick, if there was any, could have been only as to the manner of loading the particular rail whose fall injured the plaintiff. It is clearly to be deduced from the evidence that the method described, of lifting the rail, walking with it to the car, halting, dressing, and then, acting in concert, lifting the rail, at the word of command given by McCormick, and throwing it upon the floor of the flatcar, was a proper and safe method of loading the rails, and that if, in the course of such action, the injury to the plaintiff had happened, no negligence could have been complained of. The negligence alleged consists in the fact that, after the men had lifted the rails in question and had carried it forward to the car, and were there holding it awaiting the word of command from McCormick to lift it further and throw it on the car, McCormick failed to give the word of command in such a way as to produce concert of action in the men, but, on the contrary, ordered them to get the rail on the car in any way they could. The fact that McCormick hurried the men does not show any negligence on his part, or excuse any negligence on theirs. The necessity of keeping the construction train out of the way of the freight train was one of the risks of the employment. The use of oaths and imprecations by McCormick $373 |