NELSON, Circuit Justice.
The proofs in this case are exceedingly voluminous, embracing the testimony of some fifty witnesses, many of whom were examined at great length upon the several questions presented or supposed to be presented in the pleadings, and upon the final decision of which the valuable interests involved in the subject matter in dispute must depend. I have examined them with all the care and attention which the complicated nature of the evidence necessarily requires, and the importance of the rights concerned demands, and shall proceed at once to state briefly my conclusions upon the facts and the law, so far as they may be material to a final disposition of the case.
1. I am satisfied that the proofs establish, beyond all reasonable doubt, that Parkhurst, the plaintiff in the bill, was the first and original inventor of the improvement in the burring machine, for which letters patent were granted to him on the 1st of May, 1845; that the improvement of Sargent, mainly relied on as anterior in time, was neither so far perfected by experiment, or by a reduction to practical operation, as to entitle it, in judgment ■ of law, to the character or attribute of an invention; and also, that the imperfect and unsatisfactory nature of the experiments made by Sargent, and his subsequent conduct in throwing aside his temporary model, and wholly neglecting for years to follow up his experiments, so as to produce a perfect machine, afford strong and decisive evidence of an abandonment of the thing as a failure.
It is not enough, to defeat a patent already issued, that another conceived the possibility of effecting what the patentee accomplished. To constitute a prior invention, the party alleged to have produced it, must have proceeded so far as to have reduced his idea to practice, and embodied it in some distinct form. It must have been carried into practical operation; for he is entitled to a patent, who, being an original inventor, has first perfected the invention and adapted it to practical use. Crude and imperfect experiments, equivocal in their results, and then given up for years, cannot be permitted to prevail against an original inventor, who has perfected his improvement and obtained his patent. Gibson v. Brand, Webst. Pat. Cas. 628; Househill Coal & Iron Co. v. Neilson, Id. 708, 713; Jones v. Pearce, Id. 124; Galloway v. Bleaden, Id. 525, 520; Cornish v. Keene, Id. 508; Hind. Pat. 448, 449; Bedford v. Hunt [supra]; Reed v. Cutter [Case No. 11,645]; Curt. Pat. §§ 40-49.
2. But, if otherwise, and the plaintiff was not the first and original inventor, 1 am of opinion that Kinsman is estopped from setting up that fact, by force of his agreement of the 9th of Februaiy, 1840, whereby he modified and confirmed the previous one of the 22d of May, 1845.
By the first agreement, he acquired an undivided third part of the interest in the patent, and stipulated to become jointly interested with the plaintiff in the business of manufacturing and vending the improved machines, and to furnish a certain amount of capital for that purpose, the profits to be divided according to their respective interests. After carrying on the business under this agreement for some nine months, it was modified by the second one, by which Kinsman agreed to discontinue the manufacture of the machines upon the terms and conditions therein stipulated, and to leave to the plaintiff the sole right to conduct the business of the partnership in future, he agreeing to pay over to Kinsman one-third of the profits. This agreement was entered into with a full knowledge on the part of Kinsman of the claim of Sargent as the original inventor of the burring machine, and after an opportunity to enquire into and ascertain all the facts and circumstances in respect to the merits of such claim.
3. I am further of opinion, that the objections taken to the agreement of the 9th of February, 184G, that it was void, as being in restraint of trade, and against the principles of public policy, are not well founded.
The parties were jointly interested in the patent right, in the proportions of one-third and two-thirds thereof, and had. by the agreement of the 22d of May, 1845, become bound to carry on the business of manufacturing the patented article for the benefit of the joint concern. Kinsman stipulating to devote his personal attention thereto. This was modified by the arrangement of the 9th of February following, whereby the establishment was put under the sole charge [1202]*1202and direction of the plaintiff, subject to certain restrictions as to price, &c., the profits to be paid over according to the respective interests of the parties. This- arrangement contained no stipulations in restraint of trade,' in the sense of the rule upon which the objection is founded. It simply prescribed the mode of conducting the affairs of the partnership, and was no more or less than an ordinary partnership business arrangement, such as was deemed best for the interest of all concerned. Whether the affairs of the company should be conducted by the advice and personal services of both the partners, or by the one or the other of them, depended upon their own views as to which arrangement would be the most beneficial for their common interests. It was a question they had a right to determine for themselves, and. in whichever way it might be determined, it could in no manner operate in restraint of trade in general, or as respected either of the parties. A joint interest in the patent did not make the- parties partners, and some agreement, therefore, became necessary, to enable them to work the invention at their joint expense and for their joint benefit. Hind. Pat 67, 236. They then became partners in the business of manufacturing and vending the patented article, subject “to the rules of law governing parties standing in that relation to each other, except as those rules were modified and limited by the articles of partnership. While the partnership continued, it was an obvious dictate of wisdom to make it a condition, that one of the partners should not be permitted to engage in the same branch of business, to the prejudice of the interest of the common concern. Such a restraint is neither illegal nor unusual in articles of partnership.
4. I am also of opinion, that the change in the form of the slots or teeth cut on the rings or plates which composed the burring cylinder, and which, it is claimed, were made by Kinsman or others subsequent to the date of the patent, and in the course of the manufacturing of the articlé, was not a substantial change in the construction from that described in the patent.
The improvement consisted of hooked teeth, cut upon the rings or plates, and these so arranged upon the cylinder, that the wool or cotton, when taken up by the teeth, would be drawn into the slots or interstices between the teeth, leaving the burra and other -foreign substances on the surface, to be knocked off by the beater. The form of the teeth that would produce this result, embodied, to this extent, the principle of the improvement. Practice and experience in the working of the machine doubtless led to modifications of the' form, highly beneficial, as respected both the quantity and the quality of the article cleaned. This is the natural and usual result in the operation of machinery newly invented and constructed. It requires time and experience to bring it to complete perfection.
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NELSON, Circuit Justice.
The proofs in this case are exceedingly voluminous, embracing the testimony of some fifty witnesses, many of whom were examined at great length upon the several questions presented or supposed to be presented in the pleadings, and upon the final decision of which the valuable interests involved in the subject matter in dispute must depend. I have examined them with all the care and attention which the complicated nature of the evidence necessarily requires, and the importance of the rights concerned demands, and shall proceed at once to state briefly my conclusions upon the facts and the law, so far as they may be material to a final disposition of the case.
1. I am satisfied that the proofs establish, beyond all reasonable doubt, that Parkhurst, the plaintiff in the bill, was the first and original inventor of the improvement in the burring machine, for which letters patent were granted to him on the 1st of May, 1845; that the improvement of Sargent, mainly relied on as anterior in time, was neither so far perfected by experiment, or by a reduction to practical operation, as to entitle it, in judgment ■ of law, to the character or attribute of an invention; and also, that the imperfect and unsatisfactory nature of the experiments made by Sargent, and his subsequent conduct in throwing aside his temporary model, and wholly neglecting for years to follow up his experiments, so as to produce a perfect machine, afford strong and decisive evidence of an abandonment of the thing as a failure.
It is not enough, to defeat a patent already issued, that another conceived the possibility of effecting what the patentee accomplished. To constitute a prior invention, the party alleged to have produced it, must have proceeded so far as to have reduced his idea to practice, and embodied it in some distinct form. It must have been carried into practical operation; for he is entitled to a patent, who, being an original inventor, has first perfected the invention and adapted it to practical use. Crude and imperfect experiments, equivocal in their results, and then given up for years, cannot be permitted to prevail against an original inventor, who has perfected his improvement and obtained his patent. Gibson v. Brand, Webst. Pat. Cas. 628; Househill Coal & Iron Co. v. Neilson, Id. 708, 713; Jones v. Pearce, Id. 124; Galloway v. Bleaden, Id. 525, 520; Cornish v. Keene, Id. 508; Hind. Pat. 448, 449; Bedford v. Hunt [supra]; Reed v. Cutter [Case No. 11,645]; Curt. Pat. §§ 40-49.
2. But, if otherwise, and the plaintiff was not the first and original inventor, 1 am of opinion that Kinsman is estopped from setting up that fact, by force of his agreement of the 9th of Februaiy, 1840, whereby he modified and confirmed the previous one of the 22d of May, 1845.
By the first agreement, he acquired an undivided third part of the interest in the patent, and stipulated to become jointly interested with the plaintiff in the business of manufacturing and vending the improved machines, and to furnish a certain amount of capital for that purpose, the profits to be divided according to their respective interests. After carrying on the business under this agreement for some nine months, it was modified by the second one, by which Kinsman agreed to discontinue the manufacture of the machines upon the terms and conditions therein stipulated, and to leave to the plaintiff the sole right to conduct the business of the partnership in future, he agreeing to pay over to Kinsman one-third of the profits. This agreement was entered into with a full knowledge on the part of Kinsman of the claim of Sargent as the original inventor of the burring machine, and after an opportunity to enquire into and ascertain all the facts and circumstances in respect to the merits of such claim.
3. I am further of opinion, that the objections taken to the agreement of the 9th of February, 184G, that it was void, as being in restraint of trade, and against the principles of public policy, are not well founded.
The parties were jointly interested in the patent right, in the proportions of one-third and two-thirds thereof, and had. by the agreement of the 22d of May, 1845, become bound to carry on the business of manufacturing the patented article for the benefit of the joint concern. Kinsman stipulating to devote his personal attention thereto. This was modified by the arrangement of the 9th of February following, whereby the establishment was put under the sole charge [1202]*1202and direction of the plaintiff, subject to certain restrictions as to price, &c., the profits to be paid over according to the respective interests of the parties. This- arrangement contained no stipulations in restraint of trade,' in the sense of the rule upon which the objection is founded. It simply prescribed the mode of conducting the affairs of the partnership, and was no more or less than an ordinary partnership business arrangement, such as was deemed best for the interest of all concerned. Whether the affairs of the company should be conducted by the advice and personal services of both the partners, or by the one or the other of them, depended upon their own views as to which arrangement would be the most beneficial for their common interests. It was a question they had a right to determine for themselves, and. in whichever way it might be determined, it could in no manner operate in restraint of trade in general, or as respected either of the parties. A joint interest in the patent did not make the- parties partners, and some agreement, therefore, became necessary, to enable them to work the invention at their joint expense and for their joint benefit. Hind. Pat 67, 236. They then became partners in the business of manufacturing and vending the patented article, subject “to the rules of law governing parties standing in that relation to each other, except as those rules were modified and limited by the articles of partnership. While the partnership continued, it was an obvious dictate of wisdom to make it a condition, that one of the partners should not be permitted to engage in the same branch of business, to the prejudice of the interest of the common concern. Such a restraint is neither illegal nor unusual in articles of partnership.
4. I am also of opinion, that the change in the form of the slots or teeth cut on the rings or plates which composed the burring cylinder, and which, it is claimed, were made by Kinsman or others subsequent to the date of the patent, and in the course of the manufacturing of the articlé, was not a substantial change in the construction from that described in the patent.
The improvement consisted of hooked teeth, cut upon the rings or plates, and these so arranged upon the cylinder, that the wool or cotton, when taken up by the teeth, would be drawn into the slots or interstices between the teeth, leaving the burra and other -foreign substances on the surface, to be knocked off by the beater. The form of the teeth that would produce this result, embodied, to this extent, the principle of the improvement. Practice and experience in the working of the machine doubtless led to modifications of the' form, highly beneficial, as respected both the quantity and the quality of the article cleaned. This is the natural and usual result in the operation of machinery newly invented and constructed. It requires time and experience to bring it to complete perfection. But, the right of the inventor does not depend upon the questions whether the machine is more or less perfect, or whether slight modifications in the arrangement of the machinery or in fire finish of the parts composing it, may or may not better accomplish the end sought to be attained; but upon the question whether the machinery constructed as described in the patent will or will not accomplish the end practically and usefAfiy in the way pointed out. If it will, the inventor is entitled to the protection which the government has granted him; and any one using the principle thus embodied is guilty of an infringement, however he may have perfected the machinery by superior skill in the mechanical arrangement and construction of the parts. Such perfecting is but the skill of the mechanic, not the genius of the inventor.
The proof is full to show, that several of the machines constructed in strict conformity to the description in the patent, and immediately after it was granted, operated well, and are still in use by the purchasers. The shape of the teeth, and of the space between them, best adapted to use in cleaning wool or cotton, is a matter of nice calculation, depending upon various considerations, such as the character and condition of the article, whether coarse or fine, very foul or otherwise, and also the nature of the foreign substances, and necessarily, somewhat upon practice and experience in the business. If the space is too 'large at the point of the teeth, the dirt will be drawn into them with the wool or cotton; if it is too small at the point, and too wide at the bottom, the space will clog, and embarrass the operation. For this reason, there might well be different opinions as to the precise shape and structure, as there have been, according to some of the witnesses. The teeth must, however, be hooked, so as to catch the wool or cotton and draw it between them and below the surface of the cylinder.
Upon the whole, without pursuing the examination of the case further in detail, I am satisfied that the plaintiff is entitled to an account of the partnership transactions from the 22d of May, 1845, down to the time when he assigned and transferred all his interest in the patent to William L. King, on the 30th of March, 1S48. Having then parted with the whole of his interest, he was no longer concerned in the partnership business. The assignment worked a dissolution, and left the parties interested in the patent simply to their rights under it. Perhaps Kinsman might have insisted upon a dissolution from the time of the assignment to King of a part of the plaintiff’s interest in the patent, on the 2d of September, 1847, and a closing up of the partnership affairs as they stood at that period; but, as no such step was taken by Goddard, [1203]*1203who then represented the interest of Kinsman, the partnership must he regarded as haying continued down to the 30th of March, 1848, and the account is to be taken down to that period. And, as it appears that the plaintiff is no longer interested in the patent, the injunctions heretofore granted in his behalf, in pursuance of the prayers in the original and supplemental bills, must be dissolved, except so far as they restrain Kinsman and Goddard from collecting the partnership debts.
NOTE. The decree was as follows: “Ordered and decreed, that the plaintiff is the first and original inventor of the improvement in the burring machine, for which letters patent were granted to him May 1st, 1845. as set forth in the hill of complaint; that, if otherwise, the defendants Kinsman and Goddard are estopped from denying the fact by virtue of the agreements of the 22d of May. 1845, and the 9th of February, 184G, also set forth in said bill: that the said agreements are legal and valid, and binding upon the parties Kinsman and Goddard; that the assignment of the whole of the interest of the plaintiff in the patent, on the 30th of March, 1848, to William L. King, worked a dissolution of the partnership which ■ existed between him and Kinsman under the aforesaid agreements; that the burring machines manufactured and sold by Kinsman and Goddard between the 22d of May, 1845, and the 30th of March. 1848. the time of the dissolution, are to be deemed to have been made and sold under the said agreements: that the cause be referred to Charles W. Newton, Esquire, one of the masters of this court, to take and state the partnership accounts which accrued between the parties within the periods above mentioned, under the said agreements; that, in taking and stating the said accounts, the master ascertain and state the number of machines made and sold within the said time by Kinsman and Goddard, or either of them, and the prices for which they were sold, also the amount of monies advanced by the said Kinsman and Goddard, or either of them, in procuring machinery, tools, &e., for the manufacture of the said machines, and for labor, materials, expenses, &e., in the manufacture and sale of the same; and that, in stating the accounts, the master charge said Kinsman and Goddard with at least $100 profit on each and every machine made and sold by them, or either of them, since the 9th of February. 1840: that the master take and state an account with the plaintiff, including monies advanced by him. if any, in procuring machinery, tools, &c., for the manufacture of machines, and for labor, materials, expenses, &c., in the manufacture and sale of machines, and the number made and sold by him between the times aforesaid; that, in stating such account, the plaintiff be charged with at least $100 profit on each and every machine made by him since the 9 th of February. 1840; that the master be authorized to require the production of the account books of the parties before him for examination. and the parties to be at liberty to furnish such further evidence in the premises as they may see fit and proper: that the master report to the court his doings in pursuance of the above directions; that all other questions in the case be reserved till the coming in of said report: and that the injunctions heretofore granted be dissolved, except so far as to restrain Kinsman and Goddard from collecting outstanding debts for vending machines prior to the HUth of March, 1848.”
[On appeal to the supreme court, the decree of this court was affirmed. IS How. 159 U. S.) 289. For oilier cases involving this patent, see Cases Nos. 3,477 and 9,S83.]