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Georgia-Pacific Corp. v. United States Plywood Corp.

United States District Court for the Southern District of New York

May 28, 1970

Civ. A. No. 99-195


 [***236]  [*1117]   TENNEY, District Judge.

By opinion dated October 26, 1956, entered in an action by Georgia-Pacific Corporation (hereinafter referred to as "GP") for a declaratory judgment of invalidity and non-infringement of three patents held by United States Plywood Corporation (hereinafter referred to as "USP") and upon a counterclaim by USP for patent infringement and unfair competition, my late brother Judge Herlands found USP's three patents (one Deskey and two Bailey patents) invalid for lack of invention, not infringed by GP's product and further, that there was no proof that GP engaged in acts of unfair competition. 148 F. Supp. 846 (S.D.N.Y. 1956). The Court of Appeals reversed and remanded in 1958, holding that Claim 1 of USP's Deskey Patent No. 2,286,068 covering "Weldtex" striated fir plywood valid and infringed by GP. 258 F.2d 124 (2d Cir.), cert. denied, 358 U.S. 884, 79 S. Ct. 124, 3 L. Ed. 2d 112 (1958).

Following the decision of the Court of Appeals, the case was referred to a special master to determine the amount of damages to be awarded to USP ] under 35 U.S.C. § 284 (1952), 1 [**3]  which provides for "damages adequate to compensate [**2]  for the infringement." The master, computing damages upon the basis of GP's profits derived from the sale of the infringing article, 2 awarded $685,837.00  [*1118]  to USP. Judge Herlands, on  [***237]  exception to the Master's Report, concluded that under the instant circumstances and controlling statute GP's profits did not constitute the proper measure of recovery, and that the award to USP should have been computed on the basis of a reasonable royalty. 243 F. Supp. 500 (S.D.N.Y. 1965).

 [**4]  Evidence relating to the issue of the amount of reasonable royalty to be paid by GP to USP was presented to Judge Herlands on June 8 and October 2, 3 and 4, 1967, November 12 and 20, 1968, April 30, May 19-22, and June 23-24, 1969. During the course of these hearings, GP's Exhs. 1-38 and USP's Exhs. 1-47, 50, 53-56, 59-68 were received in evidence. Briefs were filed by both parties herein on September 22 and 23, 1966, November 28, 1966, January 22, 1968, and July 22, 1969 (proposed findings of fact and conclusions of law having been submitted with the briefs of November 28, 1966 and July 22, 1969).

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318 F. Supp. 1116 *; 1970 U.S. Dist. LEXIS 11541 **; 166 U.S.P.Q. (BNA) 235 ***


Disposition:  Plaintiff corporation was awarded damages based on a royalties estimate for the amount of patented product made and sold by defendant. The court made findings and conclusions as required by the federal rule.


USP, Weldtex, royalty, plywood, striated, patent, license, fir, sales, infringement, profits, negotiations, square foot, decorative, hypothetical, invention, manufacture, appearance, collateral, striation, products, licensee, factors, percent, parties, special master, damages, circumstances, licensor, terms

Civil Procedure, Judicial Officers, Masters, General Overview, Patent Law, Infringement Actions, Remedies, Damages, Infringer's Profits, Copyright Law, Types of Damages, Infringement Profits, Measure of Damages, Patentholder Losses, Patentholder Losses, Reasonable Royalties, Utility Requirement, Proof of Utility, Business & Corporate Compliance, Ownership, Conveyances, Licenses, Infringing Acts, Royalties, Utility Patents, Product Patents, Machines