10 F. 673 -

TIFFT

V.

SHARP.

678

acts as aforesaid, and such further sum as the court shall deem equitable and just; and that your orator may have such other or further relief in the premises as equity may require and to your honors may seem meet."

The defendants demurred to the bill on the following grounds, to-wit: First, that the complainant is not entitled to a discovery upon which to predicate a forfeiture; second, that the complainant can have an effectual and complete remedy at law i and, third, that the bill is multifarious.

Ooburn d: Thatcher, for complainant. Edward J. O'Brien, for defendants. TREAT, D. J. A demurrer is interposed to the bill on gronnds therein stated. The plaintiff, claiming to be the assignee of patents mentioned, granted to defendants a license for the use of the same on terms prescribed. A former suit was brought for an infringement, which this court held conld not be maintained so long as said license was outstanding.· Its ruling was based on Hartell v. Tilghman, 99 U. S. 547. This suit is for the revocation of said license and for other relief. Under the allegations of the bill, if maintained, the plaintiff's right to relief will obtain, the measure thereof to follow as the facts may demand. The court holds the demurl'er not well taken, and the same is overruled.

TIFFT v.

L

SHARP

and another.

May 8,1880.)

(Circuit Oourt, 8. D. New York.

PATEN'1'I:'--IMPROVEMENT ON GAS STOVES.

The combination of a flange around the top of a burner may make a new burner and a new combinatIOn on a burner, so as to be patentable, but the patent would only cover the precise form of burner so made, and would be infringed only by a burner of that exact form, Of by such a flange with ilome other form of burner.
2.

WHAT NOT INVENTION.

Perforations of annular series are mere workmanship, not invention.

In Equity.

Benj. F. Lee, for plaintiff. Arthur v. Briesen, for defendants. WHEELER, D. J. This suit is brought for an alleged infringement of reissued letters patent No. 7,077, granted to the plaintiff, April 25,
*See 7 FED.

REP.

208.

v.l n,no.6-43

FEDERAL REPORTER.

1876, .for an improvement in gas stoves; the original patent, No. 411;469, having been granted August 15, 1865, to Elijah J. Caldwell and Alexander M. Lesley, on the invention of said Caldwell. Among other defences, defendants deny infringement. The patent has four claims, the first, second, and fourth of which only are claimed to be infringed. All of them are for combinations of parts. The combination of the first claim is of a perforated diaphragm, through which air and gas pass and become mixed, a chamber between the diaphragm and outlet, and an annular outlet consisting of a series of perforations, through which the material passes from the burner. That of the second claim is of a gas supply-pipe, an air cylinder, a. perforated diaphragm above them, through which the air and gas pass, a cap above the diaphragm, and an annular outlet below the top ofth'e cap. And that of the fourth claim is of a laterally-projecting flange, overhanging the outlet, with a burner containing the parts mentioned in the other claims. From all the evidence in the case, H satisfactorily appears that none of these parts by themselves were new to these purposes, except the laterally-projecting flange. The perforations of no annular series had been placed so closely together, probably, as Caldwell placed them, but such series had been made before, and it was mere workmanship, not invention, to make them thicker if they were needed thicker. Perhaps the combination of the flange around the top with the rest of a burner made a new burner, and a new combination in a burner, so as to be patentable; but, if so, the patent would properly cover only the precise form of burner so made, including the flange, and the flange itself, as flo part of the patented combination or patented burner. Hence, the patent would not be infringed but by that exact form· of burner throughout,or by such a flange with some other form of burner. Sharp v. Tifft, C. C. S. D. N. Y. Oct. term, 1879. The defendants are not shown to have used either that form of burner or the flange with any other form; therefore, the patent cannot be upheld to an extent broad enough to make what they have done an infringement. Let the bill be dismissed, with costs.
See 2 FED.

REP.

697.

FAULKS V. KA14P.

675

FAULKS

and others v.

KA14P

and another.-

(Oircuit Oourt, 8. D. New York. February 13, 1882.)
1.

LETTERS PATENT-BALING SHORT-CUT HAy-BASIS OF PROFITS.

Where the only claim of the patent infringed was for" pressing and binding short-cut hay into bales," short-cut hay being known before, the only profits to be allowed for such infringement are the extra profit due to selling such hay when baled, over selling it when loose or prepared for market in other known ways.
2.

SAME-SAllE-BuRDEN OF PROOF.

It is the duty of the plaintiffs to give evidence separating such profits; otherwise only nominal profits can be allowed.

'In Equity. On exceptions to master's report. e. N. Judson, for plaintiffs. J. C. Clayton, for defendants. BLATCHFORD, C. J. The first claim of the patent, the only one infringed, is for pressing and binding short-cut hay into bales. Shortcut hay was known before. Pressing and binding it into bales made no change in its properties or quantity, but enabled it to be more can· veniently handled for sale as merchandise, and for transportation. The profits to which the plaintiffs are entitled do not include any profits of converting long hay into short-cut hay. They include only the profits of pressing and binding into bales short-cut hay; hay after it is cut short. They do not include, either, any profits on the hay as hay, except such profits as resulted from the fact that, as short-cut hay, it was pressed and bound in bales, such last-named profits being the extra profits due to selling the short-cut hay pressed and bound in bales, over selling it as loose, short-cut hay, or as shortcut hay manipulated for market in some prior known way. The master appears to have reported profits on cutting the hay, and also other profits on the hay as hay than those above specined as allowable. The third exception must, therefore, be allowed. It was the duty of the plaintiffs to give evidence separating the profits above defined. In the absence of such proof only nominal profits can be allowed. It is also ma,nifest that the master, in fixing four dollars a ton as profit in respect of the matter covered by the second exception, included profits on cutting hay, and the other improper profits above mentioned. The second exception is allowed. For the same reasons the fourth exception is allowed, and also the first. The report is set aside, and the
-Reported by B. Nelson White, Esq., of the New York bar.