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

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.

= = =

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.

= = =

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.

14 thoughts on “Establishing Guidelines for Patent Damages: The Garretson v. Clark Case of 1884

  1. 4

    Re Sup. Ct. decisions of importance to the PTO and patent law, the Supreme Court just said it will hear a case that could scale back any federal agencies authority, and limit or overrule some agency regulations. It will likely overturn important administrative law since 1984 – the Chevron deference* to agency statutory interpretations of ambiguities in a statute.
    *From the 1984 Chevron U.S.A. v. Natural Resources Defense Council, and extensively criticized by legal conservatives, including current court members.

    1. 4.1

      Assuming the Chevron doctrine is overruled, that leads to the interesting question of what, if any, PTO regulations might be challengeable? Is there any substantive PTO rulemaking that was based on statutory ambiguities other than possibly some rulemaking expressly authored in the AIA statute for its post-grant proceedings?

    2. 4.2

      Apologies if it seemed fishy not to cite this cert-granted case on herring fishing regulations. It is Loper Bright Enterprises v. Raimondo.

      1. 4.2.1

        Here’s an interesting legal article suggesting it may not make that much difference to the PTO or the Fed. Cir.: John M Golden, The USPTO’s Soft Power: Who Needs Chevron Deference, 66 SMU L. REV. 541 (2013)
        link to


          The 2013 date may possibly provide a different context in relation to your interests of post grant proceedings, Paul.


          Here’s a recent case with some USPTO Agency statutory interpretation: Director Kathi Vidal issued a sua sponte Director Review decision on Tuesday explaining that the Patent Trial and Appeal Board’s (PTAB’s) reading of the inter partes review (IPR) statute was incorrect, and directing the Board to revisit the petition brought by Volvo Penta of the Americas, LLC.


            Not a great example, Paul, as you pick an item that Congress explicitly gave open-ended powers to the Executive Agency directly at point.

  2. 3

    We should give more love to Seymour v. McCormick, which required apportionment thirty years before Garretson v. Clark.

  3. 2

    1. Damages at law then; 2. Equitable relief. There is certainly interplay between the regimes. To be sure, under the old legal damages statute the infringer’s profits (note: this is not the modern ‘lost profits’ but for patent damages) w/ apportionment was the standard. And it eventually bore out to be an unworkable mess (the rabbit hole) – what part of the mop is providing a profit margin – are you selling the wood handle at a loss for example? Labor costs? – without the patented piece would you have made the sale at all, convoyed? Just to pose the question illustrates the point. The apportionment rabbit hole became a case within the case. Eventually all agreed that this judge made ‘apportionment’ was adding a complexity (and a hide the ball incentive for infringers) and needed simplification (patent cases were hard enough). Ergo, the damages statute was amended to provide ‘no less than a reasonable royalty’ as the FLOOR for legal damages. Eventually Georgia-Pacific follows – the famous factors to provide and inform a JURY – to determine reasonable royalty legal damages (the 7th Amendment and all that).

    It conflates the history of the damages statute that apportionment from these old lost profits cases should be applied to determine legal (jury determined) damages under the modern statutory remedy ‘no less than a reasonable royalty’ floor – wherein this amendment to the statute itself was to ELIMINATE the apportionment rabbit hole. Of course, history repeats, wherein the serial infringers (a very clever, but not entirely intellectually honest bunch), along with the general ignorance of the courts to the legislative history, are/have resurrecting apportionment – creating the new rabbit hole same as the old rabbit hole. And they know where that rabbit hole goes – excessive unworkable complexity.

    2. Equitable relief. The injunction. Because of the civil nature of a patent case – no one is going to jail for patent infringement – the injunction is at its core is a form of damages. Putting aside the massive ego of Judges for a moment. It forces the infringer to decide whether to continue to infringe or someway stop – improve, alternatives, etc. It puts the economic decision on the party best informed to make that decision – the infringer. The appropriate remedy as borne out in the old cases – Westinghouse I believe – the remedy for continued infringement after the injunction – situated as another patent infringement case with injunction for the first case in hand – is under the equitable theory of unjust enrichment. Which means disgorgement of profits. Not this is not legal damages, or a floor analysis, or the modern “but for” lost profits BOP. Prof. Mosshoff disagrees (unless he changed his mind on this final point).

    1. 2.1

      I think you’re misreading the legislative history of the Patent Act of 1946. Yes, Congress was concerned about the complexity of accounting proceedings, but they weren’t trying to solve the problem by eliminating apportionment. Rather, Congress was more concerned about over-compensation of patentees, which was caused by (1) courts awarding compensation based on the value of infringer profits and (2) patentees using the Westinghouse decision to avoid disgorging those profits. For example, here’s a quote from the opening pages of the legislative history of the 1946 Act:

      “Where, as in many cases, specific damages cannot be proved definitely, the patentee seeks a recovery of profits and at the present time, under the Westinghouse-Wagner doctrine, gets in very many cases enormously more than that to which he is really entitled. The only solution of the difficulty is to eliminate the recovery of profits which as been allowed purely because of a series of historical accidents. The only sound principle is to have the plaintiff recover the damages he can prove. This principle should be covered with the grant of power to the Court to increase the damages on the principle laid down in the Dowagiac case if those proven by the plaintiff seem to the Court inadequate.”

      Congress did not want to eliminate apportionment because that would have made over-compensation worse and would have made Westinghouse apply to all fact patterns. Instead, Congress eliminated the *need* for apportionment by limiting patent compensation to actual damages. If patentees can no longer recover infringer profits, then there’s no need to disgorge those profits. Testimony from the legislative history expressly recognized that this wouldn’t eliminate apportionment proceedings in all cases, but that was okay because Congress solved the bigger need (over-compensation of patentees).

      The reason why apportionment has reemerged in American patent damages law is because we don’t comply with the Patent Act of 1946. Reasonable royalties have become a vehicle for profit disgorgement. Professor Samuelson has called this “partial disgorgement,” but it’s really “inaccurate disgorgement” since today’s reasonable royalties are also permitted to be larger than the infringer’s profits.

      If, instead, we followed Aro Manufacturing and limited patentees to “compensation for the pecuniary loss [the patentee] has suffered from the infringement, without regard to the question whether the defendant has gained or lost by his unlawful actions,” then there’d be no need to apportion infringer profits in reasonable royalty cases because they’d never enter the calculus.

    2. 2.2

      Great post iwasthere.

      I would only add the further illumination as to the nature of the patent right and a first equitable principle of “make the aggrieved whole.”

      I have provided details many times now as to how these two things should Trump [sic] the typical notion that injunctions are an “atom b 0 m b” of remedies.

  4. 1

    Given the current spin attempts (vis a vis attempts to retell the history of the Act of 1952), this caught my eye (emphasis added):

    He [the patentee] must separate its results distinctly from those of the other parts, so that the benefits derived from it [results] may be distinctly seen and appreciated.” Garretson v. Clark, 111 U.S. 120 (1884).


    Who else is seeing a “heads I win, tails you lose” scenario?

Comments are closed.