in the,I!:latter claiD;led doubtedly we can declare the present patent void QI:\demurrer, inasmuch as patentee's form a part of ,the bill. BrO'Wfl, v. 91U·. $.41; SilJ,w80n, v. Railroad 00., 107 U. S. 649, 2 Sup. Ct. Rep. 663. As the case has·:beenpresented,the question really before us is whether we willt8ke :judicial notice of certain processes describeti in, various mechanical· dictionaries, encyclopedias, and other publications 'produced on the hearing of the demurrer, and,by reason of our taking judicial cogniZance Of such processes, determine. that the entinquestiopdoes notde.scribean advance in the art to which it appertains, rising to the dignity of an invention. Besides those facts of which courts are bound by law to take judicial notice, they will ordiJ111rily only· t;akenotice of facts of universal notoriety,-'-'Of facts that are so generally understood that· they may be regarded as forming part of the common knowledge of every person. BrO'Wfl, Piper, tmpra. The lIl.atters of which we are asked·to take jud,icial cognizance in this instance, and thereupon declare invalidity of this patent, do not strike us as falling within the last category. They are a class of facts which might more properly be called to our, attention on the hearing (with opportunity to the other side to rebut or explain) as tending to' show the state of the art to which this patent appertains, and for' the purpose of enabling us to determine whether this patentrea11y describes a newly-discovered process which called for an exercise of the inventive faculty. The remaining points of the demurrer we accordingly overrule.
April 26. 1887.,
, Answer having, been filed,. this case was dismissed by the complainants.
FA.y and others
Otrcuit OoW't, No D. New York. March 19. 1887.
PATENTS POR INVENTIONS-INFRllilGEMENT-DAMAGEs-A.PPORTIONMBNT OJ' PROFITS.,
Where the claim infringed covers simply and only an improvement upon an existing machine, the damages recoverable 8S profits realized by defendant from sales of the infringing machine are not the amount realized from such sales, less the cost of manufacture of the machines sold, but only that part of defendant's profits which was derived from the use of the patented improvements.
SAME-BURDEN OF PROOF·.
In such a case it is obligatory on the complainant to adduce clear and positive proof apportIOning the profits. or equally convincing proof that they should not be apportioned for the reason that the entire market value of th" .machine sold is due to the invention.
Robert H. Parkinson, for complainants. Charles H. Duell, for defendant.
On exceptions to master's report.
COXE, J. This was founded upon two letters patent owned by the complainants. The court decided (Fay v. Allen, 24 Fed. Rep. 804) that the defendant infringed three of the five claims of the Doane and Bugbee patent, but thathe did not infringe the Locke patent. The master has found that the defendant has sold 35 machines containing the features covered by the first three claims of the Doane and Bugbee patent, upon which he has received a profitof.$5,542.10.' This amount wasarrived at by deduoting the total cost of the machines from the 8um for which they were sold. The defendant excepts to the report, upon the ground that the complainants have failed to distinguish what part orthe defendant'sprofitswasderiV'ed from the use of the patented improvements; There is'DO disagreement as to the law. The dispute arises upon the factB.The:complainants concede that they cannot recover the amount found by the master if the claIms infringed cover simply and only an improvement grafted updn preyiously existing spoke-throating machines; but they contend that the patent must be regarded as covering not an improvement, but a new machine, and that the rule of Garretson v. Olark, 111 U. S. 120,4 Sup. Ct. Rep. 291; Dobson v. Hartford Carpet Co., 114 U. S.,489, 5 Sup. Ct. Rep. 945; Dobson v: Dornan, 118 U. S. 10,6 Sup. Ct. Rep. 946; and otlierlike cases,-does not apply for that reason. This proposition is strenuously controverted by the defendant, who insists that the claims cover improvements, and nothing more. The conclusion is reached, not, however, without hesitation, that the defendant's' position in .this regard -is well, founded. Turning to the record and the brief used at final hearing, we find it asserted Qver and over again by ,the counsel and expert for the complainants that the patent in question covers improvements which are Buperadded to the Locke invention. It also appears that the infringing machine contains devices not at all covered by the patent in question. The defendant introduced no testimony before the master, but the complainants proved that other manufacturers had on the market an oldfashioned machine which throats but one side of a spoke at a time, the usual selling price of which was $100. These facts, among others, made it upon the complainants to adduce clear and positive proof apportioning the profits, or equally convincing proof that they llhould not: be apportioned for the reason that the entire market value of the mais. due to the invention. The record returned by the master is I;lilent "UllOll the first and is.not sllfficiently explicit. as to the second. The complainants argue that they are within the rule enunciated in Manufacturing Co. v. Cowing, 105 U. S. 253. It is true that there are many points of similarity between the two cases, but, as the proof now stands, this authority can hardly be regarded as controlling. The G0wing Case was an exceptional one. The patent covered a pump designed for a special purpose ina particular locality. There was no other pump which performed the same functions. The market value of the ma.<;lhine was due solely to the invention. To remove the patented
featlll'e$. wa.sliketaking .out the hE'.art and lungs of a human being. The ma<lhiQ£I was dead. It became an inert maSS of iron, utterly use· less for drawing off· the gas. from the casing of 'an oil-well. Vitality couldl:larestored by replacing theparts thus removed, but in no other Ullimilar, facts exist in the case at bar, they are not fully disclosed by th.e recoI'd. On the contrary, as one p0int of dissimilarity, it ap· pears that other spoke-thl'oating machines ex.isted, and were on the mar· ket prioI' to the patent, and up to the time of the accounting. The complainants' combinatiou is undoubtedly an improvement upon the old machines; it does the desired work faster and better; bat those who use it should only be required to pay for those improvements which ac. complishthelle The old machine could hardly have cost more than the patented macbJne, and there must have hoona handsome profit derived from its sale. If from the profit realized by defendant the profit 011 the old machine were deducted, the result would furnish the value ofthe invention. Mawv. Braum, 17 Fed. 738. Surely the old machine cannot, without additional proof, be wholly ignored. The exceptions should be sustained; but as it seems quite likely that the compll,Lin!J,nts can make the necessary proof,' the matter should be referred, bll-qkto the master to. restate the.account,confining the recovery to the profifsprov.ed to be attributable to the improvements covered by the claims. the complainants produce satisfactory proof that the entire market value of .the machine is due to the patented features., Theex.penses of the new reference should be borne by the complain. ants.
;REA1! t1. BERLIN &JoNES ENVELOPE
Oourt, 8. D. NfAD York.
March 19, 1887.)
PA1ENTS INVENTIONS-SVIT FOR INFRINGEMENT-f'LEADING-AlmNDMENTREISSUE.'
In a suit in equity to restrain infringement of an original patent. and for account of profits and damages for past infringement, the defendant an" swered that the patent sued" on had been surrendered and reissued. Held, within the power of a court of equity to allow an amendment of the bill to cover the reissue.
Arthur v. Brieaen, for plaintiff. J08rph O. Olayton, for defendant.
WHEELER, J. An against further infringement, and an ttccount of profits and damages for past infringement of the plaintiff's l)atent, was decreed on final hearing; and the jurisdiction of this court,