particular degrees of heat are to be employed; but some apto be indicated by the patentee,and it should not be so wide of the mark as to involve invention' or frequent eXipeliment to ascertain the proper temperature. The complainant's bill must be dismissed, with costs.
Knmy v. ARMSTRONG and otheJ:s·
.circuit Oowrt, D. Indiana.
INFRINGEMENT-PROFI;rS-BuRDEN OF PROOF.
Where the patent is for an improvement in machines; the burden is on the complainant to separate the profits due to the improvement from the general profitB.of the business This rllle.is recognized, Dot reversed, in Elizabeth v. PafJement 00. 97 U. 8.
2,' SAllE-PROFITS DERIVED FROM IMPROVEMENT-PROOB'.
Where the complainant fails to show what, if any, definite part of the whole· profits were produced by his improvement, his recovery must be nominal only.
()Osts of reference taxed against complainant.
Mitchell cf Holmes, for complainant. Parkinson cf Parkinson, for defendants. G'RESHAM, D. J. Josiah Kirby filed his bill against Thomas Armstrong, Robert Armstrong, William L. Standish,and G. W. Geddes, charging that the defendants had infringed the complainant's letters patent, numbered 72,505, issued on the twenty-fourth day of December, 1867, for a new and useful improvement in bung cutting, with a prayer for an injunc. i tioil and a recovery of profits. On the hearing before' the' cirouit judge it was found thatthe defendantsG. W. Geddes and William L. Standish had infringed the rights ohhe complainant as to. the first, third, and fourth claims set forth in t.he letters patent. The two last-named defendants were enjoined froIIl the further using of the complainant's invention, and there was a reference to the master to take and state'an account of the profits which the defendants had made by infringing. v.5,no.9-51
,The first, .third, and fourth set forth in the plainant's patent read as follows: each bung is by a fish-mouth chisel from a separate square blook of wood of the same diameter as the bung, ,thus saving the material, and lessening the 'fltrain on the .;ma.ehine. ' Third. That the parts of my machine are so arranged that the chisel finishes one blank and partly cuts at each operation, instead of cutting a single blank at each stroke. This enables me to accomplish the next which is-Fourth. That the block'fbd into the'machine at' each stroke serves as a cutting board :fpr the blook already,partly out and on the chisel, thus giving a olean, smooth, surface for the chisel to, cU,t against, aIld securing the, edges of the blank from fray.' ing, and the, edge of the chisel from injury." It was agreed before the master that the defendants had manufactured 1,387 barrels of bungs and taps, which they sold for and that, deduoting the cost of material, expense of manufacturing and sale, there was left a net profit of $182. The master found that the use of the complainant's improvement contribntedto the aggregate profits; , that it was impossibie, on 'the evidence before him, to separate the particular profits which resulted from the use of the complainant's invention, in connection with the other machipElry, from the aggregate profits.; and the burden beillg on, the defendants to make the separation, which they bad fitiled to do, the complainant was entitled to a decree for t4e entire profits. This finding of the master was based upon the ruling in the City of v. Pavement Co. 97 U. S. 126. Bung-cutti»S machines were in use before the date of the complainant's patent, which was for an improvement only in such machines. The defendants used a bung-cutting machine with the complainant's improvement applied, and the generJ1l business resulted in profits. The complainant sU,ed the infringers for an injunction and profits. He has got his injunction, and the master has given him the entire of the business, on the ground that the defendants to separate the profits traceable to the improvement from the general profits. It was not suffi.-
'cient to erititle the complainant to a recovery 61 to gains had from the general busil,lJsS. : was required to go furthe-r, -andshbw by evidence what profits the infringers had derived from affixing to their machine his invention. It is now well settled that if the complainant in a suit for an injunction and profits fails to show that the use of his invention in connection with other' machinery, of which his invention is, an improvement, has produced a definite part of the whole profits, his recovery of profits must be 'nominal oIlly. Robertson v. Blake, 94 U. S. 728; Garretson v. Clarke, 16 O. G. 806. The soundness of this rule is recognized in the Oity of Elizabeth v. Pavement Co. That was a suit to enjoin certain parties from infringing a patent issued to Samuel Nicholson for a new and useful improvement in wooden pavement,and for profits. The defendants, in their answer, amoJ;l.gst other things, alleged that they had constructed the pa'9'emen,t in accordance with a patent granted to John W. Brocklebank and Charles Trainor. In that case the profits received by the defendants were the fruits of the use of Nicholson's invention. It was not a case in which only a part of the profits had resulted from the use of the Nicholson improvement. The Nicholson pavement was a complete thing, consisting of a certain combination of elements which the defendants used as an entirety. The evidence failed to show that the Brocklebank and Trainor invention contributed to the profits realized; in fact, it tended to show that the use of this invention diminished the profits instead of increasing them. In decid. ing the case the court says: "It is not the case of a profit derived from the construction of an old pavement, together with a superadded profit derived from adding thereto an im. provement made by Nicholson, but of an entire profit derived from the construction of his pavement as an entirety. A separation of distinct profit derived from Brocklebanlfand Trainor's improvement, if any such profit was made, might have been shown; but, as before stated, the appellants fail to show that any such distinct profit was realized."
The master should have found that the complainant was entitled to nominal profits only. Decree accordingly, with costs of the reference taxed against the complainant.
(Circuit Court, S. D. New York.
September 14, 1880.)
PATENT-PROCEEDS OF DECREE-TmRD PARTY CLAIMING ADVERSELY TO PLAINTIFF.
Where a decree has been obtained for the infringement of a plltent, the defendant cannot be restrained from paying the proceeds of such decree at the suit of a third party, seeking to recover such proceeds, where such party claims title to the patent adversely to the plaintiff. -[ED.
In Equity. Demurrer. The plaintiff, pro se. Stewart L. Woodford, U. B. Att'y, and Sam'l B. Clark, Asst. U. S. Att'y, for defendant. ,WHEELER, D. J. This cause has been heard upon the demurrer of the defendant James to the bill of complaint. The substance of the case made by the bill is that the plaintiff's intestate hElld the title to a patent; that an assignment of patents was made by him as president of a corporation, which was not intended to convey that patent, and did not in fact, to the defendant Ingalls; that she made an assignment of it to the defendant Campbell, who has brought suit against the defendant James for an infringement, to which the defendant Eddy has become a party, because he claims an interest in the patent, and in which Campbell has obtained a decree in ,his favor, up· holding his title, on the ground that the assignment did convey the patent. The prayer is that, if the assignment did convey the patent, It may be reformed to conform to the intentions of the parties, and that then, or if the patent was not conveyed, the defendant James be restrained from paying the amount de.
*See 2 FED.