Full opinion text
HERLANDS, District Judge. In this final phase of a patent infringement case, the issues now before the court relate to the determination of the amount of damages to be awarded to the successful defendant, United States Plywood Corporation (USP), against the plaintiff, Georgia-Pacific Corporation (GP). The litigation in chief involved a United States patent known as Deskey Patent No. 2,286,068, the property of USP, and embodied in a striated plywood manufactured and sold by USP as “Weldtex”. The infringing article is GP’s striated plywood. The crucial question to be decided is: What is the proper measure of USP’s recovery under the applicable statute, 35 U.S.C. § 284 (1958), which calls for “damages adequate to compensate for the infringement”? This action was commenced by GP for a declaratory judgment. USP interposed a counterclaim for patent infringement. These proceedings resulted, after appeal, in a decree holding that Claim 1 of the Deskey Patent was valid; that Claims 2 to 7 of such patent were invalid for lack of invention; and that GP had infringed Claim 1. Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124 (2d Cir.), cert. denied, 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112 (1958), reversing 148 F.Supp. 846 (S.D.N.Y. 1956). The judgment on the mandate provided that USP recover of GP “the gains and profits made by the plaintiff and the damages sustained by the defendant by reason of such infringement.” The order of reference made March 17, 1959, referred the cause to a Special Master “to take testimony and make report thereon with respect to the profits and damages to which the defendant in this cause is entitled,” together with findings of fact, conclusions of law and recommendations. The Special Master properly construed the language of the judgment and of the order, under the applicable statute, as requiring him to report on the “damages adequate to compensate for the infringement.” 35 U.S.C. § 284 (1958). Proceedings before the Special Master At the first meeting before the Special Master on April 2, 1959, USP applied orally for an order requiring GP to file an account of the profits derived from the sale of the infringing article. The Special Master directed that formal application be made, on papers and briefs. This was done. Oral argument was heard. The Special Master ruled that an accounting for profits per se was no longer required by the statute (35 U.S.C. § 284) but that GP should file a statement which would supply the data from which its profits might be determined. In so ruling, the Special Master held that, although an accounting for profits was no longer mandatory since the 1946 amendment (Act of Aug. 1, 1946, ch. 726, § 1, 60 Stat. 778), evidence of GP’s profits should be adduced in connection with the determination of the “damages adequate to compensate for the infringement.” In compliance with a formal order of July 20,1959 directing the filing of an account of GP’s profits derived from the sale of the infringing article, GP filed a statement (referred to in the hearings before the Special Master as the “Final Report” and in this opinion as “GP’s Final Report”). Thereafter, GP filed a revision of one of the exhibits (Ex. 9) contained in its said final report. The Special Master then commenced the taking of proof. USP moved for an order of discovery of GP’s books and records and for the examination of its officers, agents and employees as to the matters contained in GP’s statement. The Special Master directed that GP’s books and records be produced; that its officers, agents and employees be examined; and that a hearing for such purposes be held in Portland, Oregon, where GP's head office is situated. Hearings were had in Portland, on six days in January, 1960. On January 14, 1960, the Special Master, all counsel, and other representatives of the parties journeyed to Olympia, Washington. There, at GP’s plywood plants, the process of manufacture of striated plywood from inception to completion was observed. The infringing article is striated plywood, described for purposes of this proceeding as “GP striated.” Following the Portland hearings, hearings were resumed in New York. At the close of USP’s affirmative proof, USP filed a statement of its claim for damages (USP Ex. 116). After both sides rested, briefs were directed to be submitted. USP’s main brief was first filed; then GP’s responding brief. In GP’s responding brief, GP contended that USP had failed to prove the fact of damage or to sustain the burden of proving apportionment, which burden GP contended rested on USP. In view of the circumstance that GP’s responding brief did not deal adequately with the issues of the fact of damage, apportionment and the burden of proof on the issue of apportionment, the Special Master reopened the hearings for the purpose of taking proof on the latter issue of apportionment. Such proof was taken. Closing arguments were had on three days in June, 1961. The transcript before the Special Master is 3,999 pages; the exhibits are approximately 200 in number; printed briefs of counsel submitted to the Special Master cover 260 pages. On December 1, 1961, the Special Master filed a 138-page report (referred to in this opinion as “the Report”). Proceedings subsequent to the Special Master’s Report The court has examined the Special Master’s Report and the entire record before him. In due course, pursuant to Fed.R.Civ.P. 53(e) (2), the parties filed objections to the Report; GP’s were filed January 10, 1962, USP’s on January 11, 1962. On April 21, 1964, the court heard an all-day argument on the objections. Thereafter, on or about June 30, 1964, counsel filed memoranda discussing Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 84 S.Ct. 1526, 12 L.Ed.2d 457 (June 8, 1964). The last communications from counsel on this subject were received by the court on March 5, 1965 (from USP) and March 12, 1965 (from GP). The Special Master’s Services The Special Master, Emil Weitzner, Esq., of the New York Bar, is to be commended for the scholarly and meticulously thorough manner in which he has discharged his duties. Although the court differs with the learned Special Master with respect to the controlling measure of recovery, it cannot be said that the court’s opinion is apodictic. Views of the Court of Appeals concerning the Deskey Patent The Deskey Patent (hereinafter sometimes referred to as “USP’s patent”) applies only to Douglas fir plywood. Douglas fir is a wood of soft texture. Deskey taught that deep incising or grooving or striating of the surface ply or veneer of Douglas fir plywood would mask checking of the surface ply and would also mask separation of the panels at the edges. The prior art had taught the esthetic advantage of superficial incising or grooving, Deskey conceived, invented and patented the method of deep striation to combine the effect of a pleasing appearance with the functional advantages referred to: concealing checks in the surface ply and masking edge effects. The court of appeals held Deskey’s invention novel, useful, and, therefore, patentable. The court of appeals described the subject of the patent, as follows (258 F.2d at 126-127): The general subject matter of the patent is plywood panels, which consist of an odd number of thin plies of ■wood veneer with the grain in the adjacent plies crossed at right angles to each other. Since veneer is weak along the grain but relatively strong across the grain, the cross plies in plywood result in a wood product of considerable strength in relation to its weight and dimensions. The more inexpensive woods, however, such as Douglas fir, present a fiat, wide-grained appearance with limited appeal for use by the public when esthetic qualities are important. Further, the defendant claims that Douglas fir and like woods have two tendencies which militate against their use as decorative panels. The first is that the face ply has a tendency to expand and shrink under changing moisture conditions, resulting over a period of time in unsightly cracks between abutting panels. Also, defendant contends, because of the peculiar graining of these woods, changing moisture conditions will cause the face plies to check or open up surface cracks on the exposed panel. * * * [T]he Deskey patent is by its disclosures directed toward reducing edge effects and checking by grooving the face ply. The result is a striated panel with multiple and alternating ribs and grooves cut to a substantial depth in the face ply but not as deep as the glue line, across the entire panel and running the length of the face ply. By striating defendant contends that stresses created by the difference in moisture content on the surface and within the ply are localized within and across the ribs, thus reducing the incidence of checking and the tendency of abutting panels to draw away from each other. The court found utility in the invention, saying (at 127-131): [Sjtriation of wood products is old in the art. * * * Striating or grooving was also used at a prior time for decorative effect in the plywood field. * * * In the light of prior art, it is clear that grooving wood and related products for decorative effect both by destroying the flat grained surface and masking joints was well known and that those skilled in the art were familiar with incising as a means of graining and incising and rupturing as a means of Controlling warping.' * * * Basic to the Deskey patent is the fact that plywood panels covered by the claims are to be used where an esthetically pleasing appearance is essential. * * * , A pleasing surface appearance is accomplished by striation, which breaks up the grain, a fact long known to the art. Striation also serves to mask the line between abutting panels, and any gouging pattern obscures defects on the surface of the wood. It does not purport to have a significant effect on warp control. Indeed, unless the panel is balanced by such procedures as channeling the reverse face, as done by Georgia-Pacific, or using an initially thicker ply on the exposed face as taught by the Bailey patents, the striation increases the tendency of the entire panel to warp or curl. * * * [T]he Deskey striation attacks an old and very real problem in the Douglas fir plywood industry. * * * That the Deskey striation was an effective solution cannot be denied. * * * Over a sixteen year period (1940-1956) the product has enjoyed an amazing success, with total sales in the United States exceeding $56,-000,000. Although it is undoubtedly true that the decorative appearance of Weldtex and the effectiveness of grooving in masking edge effects and checking have contributed toward this commercial success, we believe that the advantages stressed in the Deskey patent have played a significant role in the widespread and continued public acceptance of the product. The court found novelty in the invention, saying (at 131-135): [N]o one until Deskey realized that this decorative effect could be turned to a utilitarian advantage by cutting deeper into the surface of the plies. * * * [T]he Deskey striation has a very real utility which, arises primarily from the deep grooving, a utility which was insubstantially present in the prior art and at most, if at all,' only dimly perceived. * * * [T]his commercial success may in considerable measure be due to the decorative appeal of Weldtex and the effectiveness of the striation in masking joints and checks. * * * Deskey “recognized, attacked and successfully solved (the problems of checking and edge effect), achieving new, unobvious and unexpected results in a manner not suggested or disclosed to one skilled in the art. ******* Only one of the claims is properly limited to the scope of the Deskey invention. That is claim 1. * * * USP’s Alternative Claims for Damages USP stated its claim for damages alternatively (USP Ex. 116): 1. USP claimed $1,101,520, “representing the net profits United States Plywood Corp. would have earned had Georgia-Pacific Corp. not infringed.” This claim is based upon the theory that USP “would have sold at least 80% of the total footage of striated sold by Georgia-Pacific,” i. e., that USP would have sold that total of footage of “Weldtex”, USP’s striated plywood. Further, USP claimed that these projected sales would have “convoyed” (i. e., generated) additional sales of other products yielding a projected profit of $410,188.40 on warehouse sales and $21,-221.69 on mill sales. 2. Alternatively, USP claimed $1,-004,735, the alleged net profits derived by GP from the infringing sales; and, further, that GP earned an additional profit of $431,000 on “convoyed” sales of other products. The latter claim on “convoyed” sales is stated in general terms. (USP Ex. 116; see Stenographic Minutes of the Hearings before the Special Master (hereinafter referred to as SM) 1168, 1509, 2692). 3. If neither of the foregoing alternative claims were allowed, USP claimed $974,953, the alleged difference between profits that GP earned on the sale of the infringing article and profits that GP would have earned had it sold an equal quantity of plywood panels known in the trade as “% inch AD”. USP further claimed interest and its expenses in this litigation. USP’s Waiver of Damages Based on a Reasonable Royalty USP waived any claim for damages based upon a reasonable royalty (SM 3278-79). However, the Special Master properly invited and took proof offered by GP counsel on that subject (SM 3279-3364). The Special Master did so for the reason that, although a patentee in a patent infringement action may waive any right to recover damages based upon a reasonable royalty, the court is not foreclosed by such waiver from awarding damages so measured (the minimum standard fixed by section 284), if justice so requires. USP’s non-reliance upon a reasonable royalty as a measure of recovery has continued throughout these proceedings to date. This Court’s Conclusion that a Reasonable Royalty Is the Proper Measure of Recovery Herein The measure of recovery adopted by the Report was all of GP’s profits derived from the sale of the infringing article. However, the court concludes that, in the circumstances of this case, GP’s profits did not constitute the proper measure of recovery and that the award to USP should have been and will be computed on the basis of a reasonable royalty. The reasons for the court’s conclusion are set forth in this opinion. Reference to plywood technology, trade terms, and the business activities of USP and GP in making and selling striated plywood is necessary for an understanding of the elements entering into the fixation of damages. The findings on those particular subjects in the Report are approved. “GP Straited”: The Infringing Article The infringing article is a. Douglas fir plywood panel four feet wide, eight feet long. It is composed of three parallel, contiguous veneers, assembled and bound or united by gluing and pressing, to form a plywood panel. Each veneer is Vio inch thick. The face veneer is striated, after the panel is bound. It is this striation which infringes. The back veneer is gouged out to avoid warping of the panel. This is done under Leonardson Patent No. 2,782,468, which taught the art of gouging for that purpose. Leonardson was a GP employee. The value of the panel before striation was much disputed on the issue of GP’s profits. A panel before striation is described as a “blank”. Blanks are made of three superimposed veneers: the face and back longitudinal, and the center or core lateral. Veneers in the Douglas fir plywood industry are graded by letters “A”, “B”, “C”, “D” and “N”, according to industry standards known as the “Commercial Standard”. “N” is the “cream of the crop”; and the veneers grade down from “A” through “D”. An issue contested before the Special Master was whether the face veneer of GP striated was Grade A (as contended by USP), or whether a higher value should be attributed to the blank because of superior quality of the face veneer (as contended by GP). Where the face veneer is “A” grade and the back veneer “D” grade, the plywood panel is described as “AD”. The grade of the center core or ply is not included in the trade description and is immaterial for purposes of this case. USP contended that the blanks used by GP in the manufacture of GP striated were to be valued as % inch AD blanks and at no higher value. GP contended that the blanks, being of superior grade, should be valued higher than the value of AD blanks. Grade A is defined by the Commercial Standard as follows: Grade A veneer shall be of one or more pieces of firm, smoothly cut veneer. When of more than one piece, the pieces shall be well joined. The veneer shall be free from knots, open.splits, pitch pockets, and other open defects. Pitch streaks averaging not more than % in. in width and blending with color of wood, discolorations, sapwood, shims, and neatly made patches shall be admitted, but not more than 18 veneer patches shall occur in any 4 ft x 8 ft. A face, with proportionate limits for other sizes of panels. Shims may not be used over or around patches. Any multiple repair in a panel shall be limited to two patches. All patches and repairs must run parallel to the grain. However, approved plastic fillers may be used to fill small cracks or checks not more than Vsz in. wide; to fill small splits or openings up to Vm in. wide, if not exceeding 2 in. in length and also to fill small chipped areas or openings not more than % in. wide by % in. long. This grade shall present a smooth surface suitable for painting. Thus, a maximum of eighteen patches is allowed; and an unlimited number of shims; and one or more pieces of veneer well joined. In the standard construction of % inch AD plywood, the thickness of the panel before sanding is Via inch, or .293 of an inch. Assembly, gluing and pressing reduce the thickness by about .010 of an inch. After sanding, the thickness is reduced to about .250, subject to a tolerance of Vm inch. The panel before pressing and sanding (i. e., in the rough) is a Via inch thick panel. After sanding and pressing, it is a % inch panel (i. e., within the meaning of the Commercial Standard). Both the face and the back of the panel are sanded after assembly, gluing and pressing. Some Technical Expressions and Procedures The following definitions are culled from the Commercial Standard: Check.- — -A partial separation of veneer fibers, usually small and shallow, running parallel to the grain of the wood. Heartwood. — The darker-colored wood occurring in the inner portion of the tree, sometimes referred to as “heart”. Knotholes. — Voids produced by the dropping of knots from the wood in which they were originally embedded. Patches. — Insertions of boat-shaped sound wood glued and placed into panels from which defective portions have been removed. Pitch Pocket. — A well-defined opening between rings of annual growth usually containing pitch. Sapwood. — The lighter-colored wood occurring in the outer portion of the tree, sometimes referred to as “sap”. Shim. — A long, narrow repair not more than sAe in. wide. Veneer. — Thin sheets of wood. Veneer Patches. — Patches inserted in veneer sheet before panel is assembled for pressing. Patches are of two kinds: those inserted in the veneers before assembly and those inserted in the plywood blank after assembly. Patches in the veneers before assembly are of two kinds: Raimann and Skoog. The machine cuts out the imperfection in the veneer and inserts the patch. After the panel has been assembled, a patch known as the Davis patch is inserted. The grading procedures for the manufacture of GP striated blanks at all of the plants where the blanks were manufactured (with one exception) provided: Patches. — Only Raimann, Skoog elliptic and/or Davis patches. No glued patches. Total of three, one or mixed kinds allowed. Shims. — As in. at ends or Vs in. away from ends. Must be selected for color and must be glued with urea or melamine resin. Grading. — Any panels with small pitch pockets, conspicuously mismatched patches, discoloration, streaks, marks, glue stain or minor machining imperfections shall be classified as Paint Grade. All panels exceeding that grade shall be classified as Select. Panels below Paint Grade shall be classified as Rejects. GP adduced testimony that the number of shims (unlimited in the specifications) was limited to two. Patches and shims are described as “repairs” in the industry. The total number of patches and shims or other repairs in the face veneer of a panel are referred to as so many “repairs”. The Vi inch AD blank is a staple product in the Douglas fir plywood industry. It has a wide market. The market prices are published and known. Its sale does not yield a substantial profit. If “upgraded,” the possibility of a substantial profit is presented. By “upgrading” is meant conversion of the staple into a specialty or premium product. The staple becomes a plywood distinguished for its relative uniqueness in construction and design, with particular reference to the face, which on application would be exposed to view. The manufacturing cost of conversion is relatively low. However, the price which the specialty commands is relatively high, thus creating a much larger margin of profit than would the staple Vi inch AD panel. This explains GP’s purpose in producing GP striated: to take a superior selection of Vi inch AD blanks and “upgrade” them to decorative striated panels salable at a much higher price to yield a substantial profit. Construction and Manufacture of GP Striated Plywood (the Infringing Article) and of Weldtex (the Embodiment of the Patent) The striated product of USP, commercially known as Weldtex, was constructed of three plies of Douglas fir. Unlike the GP striated, which was constructed of veneers equal in thickness, each Vio inch thick, Weldtex was constructed of three plies of different thickness: the face, Vs inch thick, the back ply, Vie inch thick, and the center ply or core, Vio inch thick. This difference in thickness in Weldtex is purposeful. It results from the teaching of the Bailey patents: that veneers of different thickness solve the problem of warping. The Leonardson patent (used in the manufacture of GP striated) sought to solve the problem of warping by gouging out the back ply of a panel of three veneers of identical thickness. The Bailey patents sought to solve the same problem by the invention of a panel composed of veneers of different thickness. Each in its own way produced a balanced panel, designed to compensate for the wood removed by striation from the face ply. The specifications for the manufacture of Weldtex allowed five patches, shims, short tight splits, and small hand patches. The process of manufacturing plywood may be described generally as follows : The veneers are first taken off the log. The log is unwound against a knife, rotary peeled, producing a single ply thickness of veneer. The veneer is clipped into different widths and then put through roller veneer dryers to remove the moisture. Grading and processing then begin. The wide sheets are classified and upgraded by patching. The narrow sheets are spliced and taped to become wide sheets to form a panel by gluing. Plywood results from the assembly and gluing of the veneers. The following is a step-by-step description of the manufacturing process: 1. The bark is first removed from the log after the log has been cut to lengths usually eight feet long from log lengths ranging from sixteen to forty feet long. This is called “barking”. 2. After barking, the log goes into the lathe and is rotated against a knife, cutting the required thickness of veneer. 3. The veneer is then stored in trays from which it passes into clippers (the veneer then being fiat) and is clipped in widths usable later, defects (like rot) being clipped out. It is then piled in stacks on low factory trucks. 4. The veneer is then put into dryers, a single sheet at a time, to remove moisture. 5. At the outfeed end of the dryer, the veneer is graded, deposited on grading tables, and graded in accordance with the Commercial Standard. 6. Douglas fir plywood may be constructed of any odd number of plies, from three to thirteen. (We are concerned with a three-ply panel.) In each case, the adjacent sheet is at right angles, in order to provide strength against the grain to prevent the panel from splitting. The interior plies are called “cores” and the exterior “face” and “back”. 7. Next is the process of assembly or lay-up, that is, of the veneers. The veneers are glued by means of a glue spreader, and assembled. 8. The assembly is then passed through a press where the panel is pressed tight at given temperatures and for given periods, depending upon the thickness of the assembly, to produce a bonded assembly or plywood. 9. After assembly, the veneers, being rough and unsanded, may be passed through sanders. Blanks for GP striated and Weldtex were rough and unsanded because, in the case of GP striated, the face was striated and the back gouged; and in the case of USP’s Weldtex, the face was striated and it was unnecessary to sand the back. 10. The final step is trimming of the panel, handpatching and inspection. The Infringement GP began to plan and prepare for the production of the infringing article in 1954. The infringement actually commenced March 1955 and continued through September 1958. The infringement was, as the Special Master found, deliberate and intentional. GP took a calculated risk. After study, patent counsel had advised GP that, in their opinion, the Deskey patent was invalid. They rendered a written opinion expressing their professional judgment. The correspondence between GP officials and patent counsel discussed not only the legal questions but also practical questions relating to the kind of panel which GP could manufacture which would be least likely in any event to be held to infringe the Deskey patent. USP makes no claim that GP’s infringement was wilful within the purview of 35 U.S.C. § 284. It makes no claim for additional damages. The infringement, though deliberate, was not tainted with unlawful purpose. GP relied, in good faith, on counsel's opinion which was upheld by the District Judge, though not sustained on appeal. In considering the evidence of GP’s costs in manufacturing its striated plywood (such evidence being pertinent to a determination of GP’s profits), the Report kept in proper focus the deliberateness of GP’s infringement. The Report correctly reasoned that, since litigation was inevitable and an adverse decree was an anticipated possibility, GP should be held to the maintenance of adequate records to sustain its contentions (in opposition to USP’s specific claims) as to the various items of cost of manufacture, sale and distribution, making up its total cost on the basis of which its profits would be determined. [Report at 18.] This responsibility of GP subsisted despite the circumstance that the burden of proof was upon USP to establish its claim for damages. Consequently, the following formulation, as a guideline of analysis, expressed in the Report (at 18), is approved by the court: An infringer who deliberately risks infringement is required, at his peril, to maintain the records necessary to measure the liability which may ultimately be imposed, and on his failure to do so, all doubts are to be resolved against him. Computing Scale Co. v. Toledo Computing Scale Co., 279 P. 648 (7 Cir., 1921), cert. den. 257 U.S. 657 [42 S.Ct. 184, 66 L.Ed. 420]; Horvath v. McCord Radiator & Mfg. Co. et al., 100 F.2d 326 (6 Cir., 1938), cert. den. [Carrier Engineering Corp. v. Horvath] 308 U.S. 581 [60 S.Ct. 101, 84 L.Ed. 486]. To similar effect: National Rejectors, Inc. v. A. B. T. Mfg. Corp., 188 F.2d 706 (7 Cir., 1951); Oil Well Improvements Co. v. Acme Foundry & Machine Co., 31 F.2d 898 (8 Cir., 1929); Henry Hangar & Display Fixture Corporation of America, et al. v. Sel-O-Rak Corporation, 270 F.2d 635 (5 Cir., 1959); Krentler-Arnold Hinge Last Company v. Leman et al., 24 F.2d 423 (Dist.Ct. Mass., 1928). GP’s Manufacture of Striated Plywood The following specific facts, recited in the Report (at 18-19), are amply supported by the evidence. GP’s principal plant was situated at Olympia, Washington. All blanks, wherever produced, were shipped to Olympia for striation. GP’s blanks before striation were produced at Olympia and at other plants. These other plants fall into three categories: 1. “Outside” plants, over which GP had no control and in which GP had no stock interest. In this category were the Oregon plants of Snellstrom Lumber Plywood Co., Linnton Plywood Association and Multnomah Plywood Co. 2. Divisions and wholly owned subsidiaries of GP. In this category were plants at Bellingham (Washington) and Coquille (Oregon). Bellingham was a division of GP. Coquille was owned by Coos Bay Lumber Co., a wholly owned subsidiary of GP. 3. The plant of Springfield Plywood Corporation at Springfield, Oregon, an affiliate of GP. From March 1955 until September 1955, GP owned 69 percent of the capital stock of Springfield Plywood Corporation. In September 1955, its stock interest increased to 81 percent and continued so until the end of the infringing period. A total of 15,899,000 sq. ft. of blanks for striation was produced by and for GP at all plants: 5,993,541 sq. ft. at Olympia; 2,140,618 sq. ft. at Belling-ham; 906,304 sq. ft. at Coquille; 1,-890,783 sq. ft. at Snellstrom; 110,624 sq. ft. at Linnton; 30,720 sq. ft. at Multnomah; and 4,826,310 sq. ft. at Springfield. These amounts total 15,898,900 sq. ft. Both sides adopted a rounded off figure of 15,899,000 sq. ft. Considering the production at Springfield as production by GP itself only to the extent of GP’s stock interest in Springfield Plywood Corporation, the Report (at 19) finds the following: Of the total of 15,899,000 sq. ft. produced, 2,994,009 sq. ft. were produced at “outside” plants; of the latter, 1,890,783 at Snellstrom, 110,624 at Linnton, 30,720 at Multnomah, and 961,882 at Springfield. Thus, 2,994,000 sq. ft. of blanks were produced at “outside” plants and 12,-905,000 sq. ft. at Olympia and divisions and subsidiaries of GP. If the Springfield production allocable to the minority stock interest be subtracted (since GP was in control), the net total produced at “outside” plants would be 2,032,118 sq. ft. GP’s Distribution of Striated Plywood GP used three avenues of distribution: (1) sales to GP’s warehouses; (2) sales to customers of GP’s warehouses; and (3) sales to independent jobbers and others. USP’s Weldtex was distributed through two media: sales to its warehouses ; and sales directly from the mill. USP and GP Were Not the Sole Suppliers of Decorative Plywood Panels The following findings and conclusions set forth in the Report and approved by the court are of fundamental importance : 1. In the relevant market of decorative plywood panels, neither USP nor GP had a monopoly; and USP and GP were not “the sole suppliers of a particular product” (Report at 100, 102-05); 2. While USP’s product (Weldtex) and GP’s striated plywood (the infringing article) were closely competitive (and so competitive to a greater degree than they were competitive with other decorative plywood panels) Weldtex was not unique as a decorative panel in the sense that one who wished to buy a decorative panel would buy either Weldtex or GP striated plywood, or none at all; 3. While one would be more likely, if he wanted a striated panel, to choose between Weldtex and GP striated plywood, he would not necessarily do so in the light of the availability of other decorative panels competitively priced; 4. It cannot be said that USP would supply the entire demand for striated plywood as exemplified by Weldtex, absent GP’s infringement; 5. USP failed to established its alternative claim for damages based upon loss of profits on its projected loss of sales of Weldtex; 6. The proof is insufficient to support a finding that USP lost a measurable quantity of sales of Weldtex by reason of any competition on the part of GP in the sale of GP’s striated plywood; 7. The proof is insufficient to support a finding that USP lost a measurable sum in profits due to any loss of sales of Weldtex by reason of any competition on the part of GP in the sale of GP's striated plywood; 8. The proof is insufficient to support a finding that, absent infringement by GP, USP would have manufactured and sold a measurable quantity of Weldtex additional to its actual production; 9. The proof is insufficient to support a finding that, absent infringement by GP, USP would have earned a measurable amount in profits resulting from the sale of any measurable quantity of Weldtex in the manner claimed by USP; 10. The proof is insufficient to support a finding that, absent infringement by GP, USP would have commenced the manufactuer of Weldtex at its Eugene plant, in September 1955; 11. The proof is insufficient to support a finding that contractors for USP would have manufactured any measurable quantity of Weldtex between and including September 1955 and September 1958, additional to the quantities of Weldtex which they did manufacture; 12. The proof is insufficient to support a finding that, absent infringement on the part of GP, USP would have manufactured any measurable quantity of Weldtex, at its Seattle plant, additional to quantities of Weldtex which it did manufacture there; 13. The proof is insufficient to support a finding that USP would have manufactured any measurable quantity of Weldtex at its plant in Eugene, Oregon, between September 1955 and September 1958; 14. There is no presumption of law that USP would have manufactured quantities of Weldtex equal to the quantities of striated plywood manufactured and sold by GP in infringing USP’s Deskey patent; 15. There is no presumption of law that USP would have manufactured and sold any measurable percentage of the quantities of striated plywood manufactured and told by GP in infringing USP’s Deskey patent; 16. There is no presumption of law that USP would have manufactured and sold quantities of Weldtex equal to 80 percent of the quantities of striated plywood manufactured and sold by GP in infringing USP’s Deskey patent; 17. The proof does not support an inference or factual presumption that USP would have manufactured and sold any measurable quantity of Weldtex, absent infringement by GP, additional to the Weldtex manufactured by USP at its plant in Seattle, and by contractors manufacturing the same under contracts with USP, and at its plant in Eugene, Oregon. 18. USP and GP were in general competition with each other in the sale of plywood products, and, in particular, in the sale of Weldtex and GP striated plywood; and GP’s purpose in planning and projecting and effecting the manufacture and sale of striated plywood was to put itself in direct competition with USP’s Weldtex; and it carried out this purpose throughout the period of infringement ; 19. USP and GP both made every effort (without succeeding everywhere) to extend their sales coverage to every possible corner of the country; and in some areas, the competition between them was closer than it was in others, but on the whole, it is clear that the competition between them was keen; and 20. It is impossible to say, with accuracy, what was the degree of competition, but there was substantial national competition between them, and GP striated plywood was competitive with USP’s Weldtex to a greater degree than with other decorative panels. Rejection of USP’s Alternative Claim Based on Alleged Loss of USP Profits Predicated on Projected Loss of USP Sales of Weldtex Although the court is cognizant of the onerous burden of proof placed on the owner of an infringed patented article, particularly where he must show as actual damages his own loss of sales or his own loss of profits, the court agrees with the Report that USP’s factually unproved contentions — predicated upon USP’s allegedly substantially identical amounts of GP sales or upon USP’s allegedly measurable percentage (at least 80 percent) of amounts of GP’s sales or upon USP’s net profits allegedly calculated on GP’s sales — are not permissible as a basis for an award of damages because such contentions, in the light of the record herein, fall outside the considerable latitude in speculation sometimes necessary in this type of case. On the evidence, there is no basis in fact or law for USP’s alternative claim for damages (USP Ex. 116) “representing the net profits United States Plywood Corp. would have earned had Georgia-Pacific Corp. not infringed.” The court sustains and approves all of the Report’s findings and conclusions (Report at 91-107) leading to the rejection of USP’s alternative claim for damages based upon alleged loss of USP’s profits predicated on the projected loss of USP’s sales of Weldtex. Rejection of USP’s Alternative Claim, Based on Certain Alleged Differences in Profits Actually Earned by GP and That Would Have Been Earned by GP under Certain Circumstances This third alternative claim by USP was properly dismissed (Report at 108) though the court’s reason for so doing is based on other grounds, viz., that the proper measure of USP’s recovery is a reasonable royalty. THE SPECIAL MASTER’S CRITICAL FINDINGS AND CONCLUSIONS THAT USP FAILED TO PROVE THE AMOUNT OF ITS ACTUAL DAMAGE, EITHER ACCURATELY OR APPROXIMATELY Certain specific findings and conclusions of the Report, which the court hereby sustains and approves, are of controlling importance. They will now be discussed, though they are already encompassed within the court’s approval, above, of the findings and conclusions set forth in the Report at pages 91 to 107 thereof. The Applicable Rule of the Law of Damages The Report properly states (at 94-95): The line of demarcation, which rules of quality of proof required to sustain a claim for damages, is between the speculative and the probable. The reasonably predictable, not the conjectural, is the standard by which the proof must be appraised. In an early case, Seymour v. McCormick, 16 How. [480] 485 [14 L.Ed. 1024] (1853), the court said (p. 490): “Actual damages must be actually proved, and cannot be assumed as a legal inference from any facts which amount not to actual proof of the fact. What a patentee ‘would have made, if the infringer had not interfered with his rights,’ is a question of fact and not ‘a judgment of law.’ The question is not what speculatively he may have lost, but what actually he did lose * * * ” See, also, Philp v. Nock [17 Wall. 460], 84 U.S. 460 [21 L.Ed. 679] (1873); Palmer v. Connecticut Railroad [Railway] and Lighting] Co., 311 U.S. 544 [61 S.Ct. 379, 85 L.Ed. 336] (1941); Power Specialty Co. v. Connecticut Light & Power Co., 80 F.2d 874 ([2 Cir.] 1936); Underwood Typewriter Co. v. E. C. Stearns [&] Co., 227 F. 74 (2 Cir., 1915); Dobson v. Hartford Carpet Co., 114 U.S. 439 [5 S.Ct. 945, 29 L.Ed. 177] (1885); Dowagiac Manufacturing Company v. Minnesota Moline Plow Company, et al. (cited supra, p. 82). Also, Story Parchment Co. v. Paterson Parchment Paper Co., 282 U.S. 555, p. 562, 51 S.Ct. 248, p. 250, 75 L.Ed. 544 (1931), where the court said: “The rule which precludes the recovery of uncertain damages applies to such as are not the certain result of the wrong, not to those damages which are definitely attributable to the wrong and only uncertain in respect of their amount.” “In such case, while the damages may not be determined by mere speculation or guess, it will be enough if the evidence show the extent of the damages as a matter of just and reasonable inference, although the result be only approximate”. The Finding of the Fact of Damage The Report (at 95) found, and that finding is sustained by the court, that USP proved “the fact of harm” or “the fact of harm or injury,” i. e., “that loss of sales of Weldtex occurred by reason of GP’s infringement.” The Finding and Conclusion that the Amount of USP’s Damages Is Speculative and Conjectural The Report (at 95) found and concluded, and that finding and conclusion are sustained by the court, that “the proof offered by USP of the amount of dama’ges” was “speculative and conjectural”; that USP’s “proof of the probability of production and sales in any measurable quantity is unsupported by sufficient or adequate evidence, and, in any case * * * is dependent upon a series of hypotheses which must be described as conjectural.” The Report (at 95-96) correctly stated: The fact of damage having been established, the amount need not be proved with mathematical accuracy or scientific precision, but may be approximated from evidence which would support such approximation. Such evidence is, however, lacking here. And it must be held that notwithstanding my finding that the fact of harm or injury has been proved, i. e., that loss of sales of Weldtex occurred by reason of GP’s infringement, USP has failed to sustain the burden of proof of the amount of damages which it claims, or to supply proof from which the extent of its damages might be determined “as a matter of just and reasonable inference”. (Story Parchment Co. v. Paterson Co., supra, at p. 562 [51 S.Ct. at p. 250]). And also: In fine, USP’s claim is predicated upon a series of hypotheses and estimates, which, as a matter of fact and of law, I find and conclude are conjectural and speculative, and do not measure up to the kind and quality of proof which would support a right to recover damages in any specific amount. [Report at 94.] Where Error Was Committed Having correctly found and concluded that there was a failure of proof on USP’s part to establish the amount of its damages, the Report then proceeded —and here is where error was committed — to use GP’s profits as a measure of recovery as a matter of law. The proper course would have been to award a reasonable royalty. BASIS OP THE REPORT’S RECOMMENDATIONS: GENERALLY CONSIDERED The Recommendation in the Report As noted earlier in this opinion, USP stated its claim for damages alternatively. One of these three alternatives— that USP should be awarded all of GP’s net profits from the sales of GP striated plywood, the infringing article — was adopted and recommended by the Report (at 20) as the measure of recovery. The Report rejected USP’s other alternative claims, and also rejected a reasonable royalty although USP did not submit a reasonable royalty as a fourth alternative. Having adopted as the governing measure of damages all of GP’s net profits from the sale of GP striated plywood, the Special Master held hearings to determine the pertinent figures and the applicable methods of cost accounting. The Report sets forth comprehensively all such data. The Report found that GP’s profits on the sale of the infringing article amounted to $685,837 (at 81); and the Report awarded that sum to USP as “the damages adequate to compensate” USP for GP’s infringement (at 109), together with interest computed from December 1, 1961, the date of the filing of the Report (at 108). The Special Master’s Rulings on the Admissibility of Evidence The court sustains all of the Special Master’s rulings on the various objections to the admissibility of evidence interposed in the course of the hearings. See, e. g., Report at 30. Reasonable Royalty: Preliminary Comments The court has concluded that none of the three alternative claims submitted by USP is a proper measure of recovery but that damages should be awarded on the basis of a reasonable royalty, as will be detailed in this opinion. Although the Report did not base its recommendation to the court upon a reasonable royalty in any amount, the Report summarized the evidence on that subject “for completeness” as follows (Report at 27-28): Witnesses for GP testified, variously, that a reasonable royalty during the final four years of the Deskey patent, would be between one and two percent (Beggs, SM 3366), less than 3% (Elmendorf, SM 3304-5), 2½% if the net profit were 5% (J. L. Buckley, SM 2621). Mr. Heilpern, Secretary of USP, called as a witness by GP, testified that USP’s licenses under the Deskey and Bailey patents, provided for a royalty of $3 per 1000 ft., a minimum of $1500 per year in two instances, and no minimum in another. These licenses were granted not to competitors, but to licensees who sold their entire production through USP or affiliates (SM 3280, 3279-90). At the hearings before the Special Master, GP contended (SM 3816-7; 3825) “that profits are to be taken into account only to the extent of determining the amount of a reasonable royalty” (Report at 36). Further Proceedings In view of the magnitude and detail of a formal presentation of the accounting and other factors involved in ruling on the parties’ objections to the Report with respect to the disputed items of GP’s costs, the court has been impressed with the practical desirability of not only economizing judicial time but, more importantly, of expediting the filing of this decision which is dispositive of the fundamental issue. These considerations have persuasively suggested that the court should not now rule on the parties’ objections to the Report in so far as they deal with the calculation of GP’s profits. Moreover, it would be premature at this time for the court to rule on the parties’ objections to the Report with respect to the disputed item of GP’s cost that determine the amount of GP’s profits. It is not unlikely that the parties may agree upon a formula by which a reasonable royalty may be fixed. For example, the parties may stipulate that the royalty should be computed on the basis of a particular money amount per foot of striated plywood sold by GP or a certain percentage of GP’s sales of that plywood or upon some other standard not requiring a determination of GP’s net profits on its infringing sales. However, should the parties be unable to agree upon such a formula or standard and should the court find that the amount of GP’s net profits on its infringing sales is logically probative evidence on the issue of a reasonable royalty, the court would then find it necessary to rule on the parties’ objections to the Report with respect to the disputed items of GP’s costs. We now consider the fundamental issue why a reasonable royalty is the applicable measure of USP’s recovery. A REASONABLE ROYALTY IS THE PROPER MEASURE OF USP’S RECOVERY The Report’s Decision and Rationale The Report adopted USP’s view that the controlling statutory provision in 35 U.S.C. § 284 — “damages adequate to compensate for the infringement”— should be interpreted to mean that all of GP’s profits from its sales of the infringing article constitutes, as a matter of law, the measure of USP’s damages. These are the links in the chain of reasoning set forth in the Report leading to the Report’s “square holding here that the profits of GP derived from the infringement may be taken as the measure of USP’s damages, subject, of course, to a disposition of the issue of apportionment raised by GP” (Report at 39): that the 1946 amendment (35 U.S.C. § 70; Act of August 1, 1946, ch. 726, § 1, 60 Stat. 778), which was rephrased without substantial change in the Act of 1952 (35 U.S.C. § 284; Act of July 19, 1952, ch. 950, § 1, 66 Stat. 813), did not eliminate “the infringer’s profits as a measure of the patent holder’s damages” (Report at 33) and “did not change the law of damages in patent causes as it had prevailed” since the enactment of the Act of July 8, 1870, ch. 230, §§55 and 59, 16 Stat. 206-207 (Report at 31); that “the 1946 amendment * * * did not eliminate the substantive rule that the patent holder might recover as damages an amount equal to the profits which the infringer had derived from the infringement” (Report at 31-32); that the infringer must be deemed to have “damaged the patent holder to the extent that the infringer profited from his wrong” (Report at 32); that the infringer’s profits in this case may be used “as an equation for the patentee’s [USP’s] loss or damage” (Report at 35); that the Special Master’s views are confirmed by the legislative history of the 1946 amendment (Report at 35-36), the language of the 1946 and 1952 amendments (Report at 36-37) and the decisions since 1946 (Report at 37-39). The concatenation of premises and allegedly supporting authorities comprising the Report’s rationale is flawed by errors, now to be discussed. The distinction between “damage” and “damages” drawn in the Report (at 36-37), while recognized in the law (Oleck, Damages To Persons And Property 16 (1961 rev. ed.); McCormick, Damages 2 n. 1 (1935)), does not carry significant weight in this case when measured against the revelatory legislative history. This court heeds the admonition that judges in construing legislation ought not to imprison themselves in the fortress of the dictionary. General Critique of the Rationale of the Report The crux of the entire matter is the proper measuring-rod to be used in quantifying the patent owner’s (USP’s) damages. Prior to 1946 there were four commonly accepted standards for determining the monetary recovery due to the owner of an infringed patent: an established royalty; a reasonable royalty; lost profits of the patent owner; and the profits of the infringer. The 1946 amendment eliminated the pre-existing specific provisions for the recovery of the infringer’s profits and this omission is contained in the 1952 codification, the present law. It is generally agreed that the 1952 codification was not intended to alter substantively the 1946 provisions pertaining to the patent owner’s recovery. Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 505 n. 20, 84 S.Ct. 1526, 12 L.Ed.2d 457 (1964). We are squarely faced with the issue as to the role, if any, which the infringer’s profits are to play in the ascertainment of “[D]amages adequate to compensate [the patent owner] for the infringement.” The Report held, as already noted, that GP’s infringing profits, to the full extent thereof, were the measure of USP’s damages and that “in that respect, the 1946 amendment * * * did not change the law of damages in patent causes as it had prevailed since the enactment of the Act of July 8, 1870.” (Report at 31.) With this conclusion, the court disagrees. In the court’s opinion, the 1946 amendment was intended to, and did, eliminate the infringer’s profits as an independently recoverable award, thus leaving compensatory damages, measured by the patent owner’s lost profits or by a reasonable or established royalty, as the sole monetary recovery available to the patent owner. This statutory scheme is not to be evaded by verbal gymnastics which would allow a patent holder, who had not been deprived of any measurable quantity of sales or profits by the infringement, to recover as damages an amount equal to the infringer’s profits. In patent nomenclature what the infringer makes is “profits,” what the owner of the patent loses by such infringement is “damages.” [Diamond Stone-Sawing Mach. Co. of New York v. Brown, 166 F. 306 (2d Cir. 1908), quoted with approval in Duplate Corp. v. Triplex Safety Glass Co., 298 U.S. 448, 451, 56 S.Ct. 792, 80 L.Ed. 1274 (1936).] There is no necessary correlation between the amounts of their respective profits and losses. The Report (at 35) takes the position that the 1946 amendment was not intended to lessen the patentee’s substantive right to the infringer’s profits, and that both before and after the 1946 amendment the infringer’s profits were “an equation for the patentee’s loss or damage.” However, this court’s review of the successive statutes affording monetary relief to patentees, as set forth below, persuasively demonstrates that prior to 1946 “profits” was an independently recoverable award, separate and distinct from the patentee’s damages and that the 1946 amendment should simply be construed as dropping “profits” as an independent measure of recovery. Further, it will be shown that, except in the infrequent class of cases touched on above (supra note 4) the amount of the infringer’s profits is not an accurate gauge- of the patentee’s lost profits. Cf. Coupe v. Royer, 155 U.S. 565, 15 S.Ct. 199, 39 L.Ed. 263 (1895) (am action at law in which the Court held that damages were not to be measured by what the defendant had gained (out of the infringement) but by what the patent owner had lost). Review of the Successive Statutory Remedies The attempt to dogmatize the legislative purpose by resorting to an eclectic collection of phrases culled from the congressional hearings may turn into a quodlibet unless the entire record is read against the backdrop of prior statutes and judicial decisions. In Birdsall v. Coolidge, 93 U.S. 64, 68-69, 23 L.Ed. 802 (1876), the Court provided some background on the early law pertaining to the patent owner’s remedial rights. Controversies and cases arising under the patent laws are originally cognizable, as well in equity as at law, by the circuit courts, or by any district court having circuit powers. Prior to the passage of the act of the 8th of July, 1870, two remedies were open to the owner of a patent whose rights had been infringed, and he had his election between the two: he might proceed in equity and recover the gains and profits which the infringer had made by the unlawful use of his invention, the infringer in such a suit being regarded as the trustee of the owner of the patent as respects such gains and profits; or the owner of the patent might sue at law, in which case he would be entitled to recover, as damages, compensation for the pecuniary injury he suffered by the infringement, without regard to the question whether the defendant had gained or lost by his unlawful acts, —-the measure of damages in such case being not what the defendants had gained, but what the plaintiff had lost. * * * As to the rationale behind the equity practice, the Supreme Court stated that: The general rule [that the patent owner might recover the gains and profits that the infringer has realized from the use of his invention] has been sometimes said to be based upon the theory that the infringer is converted into a trustee for the owner of the patent, as regards the profits made by the use of his invention. But, as has been recently declared by this court, upon an elaborate review of the cases in this country and in England, it is more strictly accurate to say that a court of equity, which has acquired, upon some equitable ground, jurisdiction of a suit for the infringement of a patent, will not send the plaintiff to a court of law to recover damages, but will itself administer full relief, by awarding, as an equivalent or a substitute for legal damages, a compensation computed and measured by the same rule that courts of equity apply to the case of a trustee who has wrongfully used the trust property for his own advantage. Root v. Railway Co., 105 U.S. 189, 214, 215 [26 L.Ed. 975]. [Tilghman v. Proctor, 125 U.S. 136, 148, 8 S.Ct. 894, 900, 31 L.Ed. 664 (1888).] The Act of 1870, section 55, provided that, in an equity suit, the court could grant injunctions and that, upon rendering a decree for an infringement, the court might award to the claimant — “in addition to the profits to be accounted for by the defendant” — “the damages the complainant has sustained thereby.” The court had the discretionary power “to increase” the amount assessed as the damages up to three times that amount. Section 59 of the Act of 1870 provided for the recovery at law of “damages for the infringement of any patent” in an “action on the case.” Where a verdict is found for the plaintiff, “the amount found by the verdict as the actual damages sustained” may or may not be the sum for which the court enters judgment, as the court had the discretionary power to enter judgment on the verdict for a sum not exceeding three times the amount of such verdict. Thus, under the Act of 1870, equity was empowered to award damages as well as profits and an injunction. The patent owner who successfully litigated the issues of validity and infringement had a double-edged means of recovery available to him. The dichotomy in the 1870 Act between “the profits to be accounted for by the defendant” and “the damages the complainant has sustained” by the infringement was sharply drawn in language and in consequences. In section 55 of that Act, dealing with an equity suit, the court may increase up to three times the amount assessed as the complainant’s damages. The court’s power to triple the amount of the damages, as provided in section 55, is expressly governed by the cognate provision in section 59 which relates to the tripling of the amount of “the actual damages sustained.” No such power was granted with respect to the amount ascertained to be the infringer’s profits. A sharp cleavage was thus drawn between the infringer’s profits and the actual damages sustained by the patentee. In Birdsall v. Coolidge, supra, 93 U.S. at 69, the Supreme Court interpreted section 55 of the Act of 1870. Damages of a compensatory character may also be allowed to the complainant suing in equity, in certain cases, where the gains and profits made by the respondent are clearly not sufficient to compensate the complainant for the injury sustained by the unlawful violation of the exclusive right secured to him by the patent. Gains and profits are still the proper measure of damages in equity suits, except in cases where the injury sustained by the infringement is plainly greater than the aggregate of what was made by the respondent ; in which event the provision is, that the complainant “shall be entitled to recover, in addition to the profits to be accounted for by the respondent, the damages he has sustained thereby.” This reasoning strengthens the view that the infringer’s “profits” were not an equation for the patentee’s loss. This is made clear by the Court’s emphasis on the disparity which may exist between the gains and profits made by the infringer, on the one hand, and the injury sustained by the patent owner, on the other. The Court went on to discuss, at 69, the unsatisfactory situation, prevailing in the equity courts under the earlier patent law, which had led to the Act of 1870. Cases occurred under the prior patent act where manifest injustice was done to the complainant in equity suits, by withholding from him a just compensation for the injury he sustained by the unlawful invasion of his exclusive rights, even when the final decree gave him all that the law allowed. Examples of the kind may be mentioned where the business of the infringer was so improvidently conducted that it did not yield any substantial profits, and cases where the products of the patented improvements were sold greatly below their just and market value, in order to compel the owner of the patent, his assignees and licensees, to abandon the manufacture of the patented product. The Act of 1922, section 8, provided that, in an equity suit, where the court rendered a decree for an infringement, the complainant was entitled to recover— “in addition to the profits to be accounted for by the defendant” — “the damages the complainant has sustained thereby.” The Act of 1922 made evidentiary amendments to the 1870 statute by dealing with the situation where the evidence shows that “the complainant has suffered damage from the infringement or that the defendant has realized profits therefrom to which the complainant is justly entitled, but that such damages or profits are not susceptible of calculation and determination with reasonable certainty.” The 1922 Act dealt with this problem of proof by permitting the award of “a reasonable sum as profits or general damages for the infringement” (the dichotomy is