FEDER.\J.o .RJilJ?ORTER, vol. 42.
.Illll;ster finds that .between January 1 and July 1, 1879. the demade and sold 400infringing grates, realizing a profit therefrom of$348. This amount is arrived at not from statements in the books, or from direct evidenceo( any but is the result of a guess UpOn.R of sales during the corresponding months for the year before and the year after.'J;'pe testimony is insufficient to support the finding. The finding as to the number of grates sent to the branch houses at New York, Chicago, ftnd Cleveland is founded upon statements too. problematical and to be accepted as proof. The exceptions which challenge these two findings are the twelfth and the fourteenth. They are sustained. The finding as to the number of grates sold· at defendants' retail store was not excepted to. Tile remaining question is whether the facts bring the case within the rule requiring complainant to point out what portion of the profits is due. to the patented feature, or, in other words, whether the patent is for an entire device, or only for an improvement upon an existing device. ·Two of the claims are as follows: "A stove grate provided with transverse bars, which are capable of a vibratory motion in a horizontal plane, and of a semi-rotation in a vertical upon or around the center of vibration. substantially as and for the . purpose specified.. "The hereinbefore described fire grate as a Whole. when its several parts are cohstructed and combined.to operate in the manner arid for the purpose shown and described." Themaster's report contains the following statement upon this subject: "Letters patent No. 139.583 il! for a stove grate. This grate iB a complete co.mbination in itself. The parts and combinations described and claimed in the Beveral claims in thepatent constitute the entire device." The master hascarefQlly eliminated from the account aU grates which were 1501d in or with a stove,and has confined it entirely to such grates as were sold as separate and independent articles. ·The defendants questipn the novelty and utility of the invention, and seek to limit the construction to be placed upcm the claims by referencEls not now before. pourt. Such questions cannot be considered. They are merged in the decree. The court, appa,rently without much opposition from the defendants, decided the. paten,t v/illid in its entirety. as to each and all its claims,and that the defendants were infringers, having sold the identical thing covered by the patent. This decree cannoi be questioned here. ThaUhlilclaims cover the fire grate'aS a whole there, can be no doubt, and,there is a clear distinction between an improveflgrate and an im;. provement on a grate. The. complainant's grate was made and sold separately from stoves. Unquestionably it was intended for use in stoves, but so are many devices which may be the subject of distinct inventioliS. Itwas not sold fpr use in one pattern of stove alone; it could be used in many different li!toves. Although in general appearance like othe:\: grates,it is so constructed that no. part can be used upon any other grate, and no part of other grates call be used upon it. Remove
ltEEP II. FULLER..
the patented features and nothing remains. Altqough it is an improvement upon stovesthk complaihantisnot seeking to recover the profits upon the stove, but upon the improvement only. The rule requiring from the patented featureslllust be separated that the profits from those arising from the unpatented features has- little application ill a case where every .feature is patented. This distinction is clearly pointed. out in Maier "I. Brrrwn, 17 Fed. Rep. 736, ,cited with approval upon defendflnts' brief. The court says: "Thus"if one of matter, such all gun-c9tlon.
nitro-glycerine, or vulcanized rubber, or invents some new machine. such as the telephone, or some new article of manufacture, such as barbed wire, or a new pavement. he would obViously be entitled to damages. arising. trom , the manufacture and sale of the entire, ,Upon the otller if his invention were limited to some pa'rticular part of a,Iarge machine, such as the cut-off of an engine, the axle of a wagon, or the seat upon a mOWing. machine. it is equally clear that his recovery must be limited to such profits as arise from the manufacture alld sale olthe patented feature. " .
Even when an invention belongs to the second class named in the quotation is it not true that the patentee is entitled to recover the profits made by 'an infringer, where the article is complete in itself, and is sold separately from the machine, the operation of which it is intended to improve? Take for illustration "the seat upon 8 nlOwing"machine." Suppose '8 person invents such a seat, operating upon an entirely new principle and designed to fit all mowing-machines, and has it patented; can it be that one who sells this seat alone can escape liability because it is an improvement ona mowing.machine, or because seats for the drivers of such machines had been known before? It is thought, therefore, that the facts do not bring this case within the rule of Garretson v. Clark,l11 U. S. 120,4 Sup. Ct. Rep. 291, but rather within the rule of the following authorities: Elizabeth v. Pavement Co., 97 U. S. 126; Manufacturing Co. v. Cowing, 105 U. S. 253; Hurlbut v. Schillinger, 130 U. S. 456, 472, 9 Sup. Ct. Rep. 584; Z1.ne v. PeCk, 13 Fed. Rep. 475; Reed v. Lawrence, 29 Fed. Rep. 915, 918. The twelfth and fourteenth exceptions are allowed and the others are overruled. The amount found due by the master is reduced from 811,363.60 to 810,510.86, and, as so reduced, his report is confirmed, with interest from the date of its submission tothe court, (Tilghuw'n v. Proctor, 125 U. S. 136, 161, 8 Sup. Ct. Rep. 894j Railroad Co. v. Turrill, 110 U. S. 301, 4 Sup. (''t. Rep. 5,) and costs, as provided by equity rule 84.
aEJ,J.ULOID'MANUF'G Co. tI. CEJ,LONITE MANUF'G (Circuit Court, S. D. New York. June 26, 1890.)
PATENTS' FOB INVENTIONS-ExTENT OF CLAm.
Letters patent No. 156,852, issued Octo!)er27, 1874, to John W. and Smith Hyatt for an improvement in manufacturing solidified collodion "by mixing Plroxyline with' a 'latebt liquid solvent, which becomes active only upon the applICation of heat, " do not cover liquid solvents which are active as ,respects the pyroxylinewith whicp. intp actual cont;act, but are used with such a relatively large mass of pyroxyline that the mass will not be converted into solidifled collodion at Ordil1ary temperatures.
InljJquity. J. 'Hindon Hyde" for com plainant. John R. Bennett, for defendant.
LACOMBE, J.This is a suit for infringement of the flrilt claim of letters patent No·.156,352, dated October 27, 1874, and issued to Smith Hyatt and JohnW. Hyatt for an "improvement in manufacturing solidified collodion." The claim referred to is as follows: "(1) The process herein de\,!cribed of manufllcturing solidified collodion by mixing pyrexyline with a latent liquid solvent, which becomes active only upon the application of heat, for the purposes set forth." Upon the construction of this claim' rests the det,ermination of the case. The complai11al).t'insists that it covers liquid solvents which are active as respects the pyroxyline with which they are brought into actual contact, but are used with such a relatively large mass of pyroxyline that the mass will notge converted into solidified collodion at ordinary temperatures. The defendantS'contend that tQ ;claim must be restricted to such liquid solvents-only,as possess no solvent powers at ordinlLry temperatures, and whicb,',when brought in.:contact with pyroxyline, remain perfectly inthe application, of heat; heat ,alone being necessary to bring into activity their latentsolvent powers,. ,TIle firllt question, tJep., t<;> be decided is whether, under this patent, the activity or latency of a solvent is to be determined with reference solely to the power of the solvent iti;lelf, or with reference to the quantity ofpyroxylineto w,hich it is applie<i. Another patent for an improvement in the manufactu,re of celluloid (No. 156,.853) was taken out by on the same day as the Qne in suit. That patent was be}qqge SHII'MAN,,inOelluloid Man.1tj'g Co. v. Zylonite Co., 26 Fed. Rep. 692. In his decision will be found a very full description of the state of the art prior to October 27, 1874, and to restate it here would be mere useless repetition. The following brief narrative of events, however, bears more particularly upon the point raised in this suit: In June, 1869, (No. 91,341,) the Hyatts patented an "improved method of making solid collodion," the distinguishing feature of which was the use of great pressure applied to a mixture of pyroxyline and solvent, llnd applied so quickly that the solvent was forced into contact with every particle of the pyroxyline before the dissolving process had time