EMMONS, Circuit Judge.
License: Charles Morgan, the assignee of the patent, sold to Nixon the exclusive right to the use of these machines in the state of Ohio. ' Nixon sold the same right to Chatfield & Woods. After this, Morgan had no fight to sell the use of á machine in Ohio at any time. Not during the original term, because he had already transferred that; not during the extended term, because he did not own it. Nor could he sell a single machine with the right to use it until it was worn out after the expiration of the original term, because the assignments [664]*664of the patentee to him transferred no such double authority as that of first transferring tlK exclusive right of the whole state, which would exhaust his whole power of disposition under the assignment, and then, .secoudly, to flood the country with machines to be used after the expiration of the term, thus defeating the interest of the patentee in the extension. It is not a fair construction of the assignment of a patent that the assignee shall first assign the entire right for a particular territory, and get its whole value from his vendee, and, after having thus received all the benefit he was entitled to under the transfer, sell single machines to be used in the same territory during the extended term. He will in this mode obtain the value of a right never conveyed to him.
It is argued that inasmuch as Morgan himself subsequently, for a short period, owned the extended term, that if he were in court seeking to enjoin Nixon, he would be es-topped to say that at the time of the sale he had no right to make it. If this be so, as the present complainants claim the extended term through him, they should also be estop-ped. There are many fallacies in this argument.
We hold the purchase from Morgan by the defendant of the infringing machine was in fraud of complainants’ rights. Such a title, although it might estop Morgan personally, is not one which would work the same consequences against one whom it was intended to defraud.
It will be noticed particularly that the argument we are now considering, does not suppose the defendant to be possessed of a legal title, .but only an equitable right growing out of the fact that his vendor subsequently became possessed of the right, which by the assumptions of this argument he pretended to grant, but this principle is applicable only where justice demands it, and to prevent circuity of action; good faith demands the annexation of no such incident to a contract made for the purpose of defrauding others; no action could be maintained by Nixon against Morgan for a failure of his user of the machine until it was worn out after the expiration of the first, term. In view of the fact that Nixon had before bought and sold the same right, that Morgan was the assignee only of the patent and had no right to the extended term, we doubt whether any action could be maintained irrespective of fraud. But in view of our conclusion that the contract was actually fraudulent as to third persons, it is clear that no action could be maintained by one particeps criminis against the other. In either view we are clear that no such right, legal or equitable, passed to the defendant, Nixon, as within the decisions authorized him to use it during the original term in such sense as would give him the right to use it during the. extended term. The right to use after the expiration of the term is an incident to the primal rights to use it during the original term; if that fails on the account of fraud, the incident falls with it.
Second claim: In the former printed opinion the head for distending the bag so that it could be severed by an oblique cut was considered “the all important feature of this supporting bar.” It treated the word “supported,” as referring to that function of the bar which supported and distended for severance the tube; it treated as unimportant and utterly funetionless all the other portions of the bar save for the single purpose of sustaining the distending head. So fully was this idea entertained by the court, the presiding judge remarked to defendant’s "counsel that if a hair or thread possessed the power of support, and either was substituted for the near part of the bar, he would deem it an infringement. He added that he thought the very essence of the invention would be taken if by some novel discovery a power analogous to magnetism could be made to hold it in place in an operative machine
It was, therefore, because the court erroneously assumed, as it was fully authorized to do by the argument and facts before it, that this particular mode was the only one by which the head could be supported, that it was said “the attachment of the bar to the bed of the machine was one of its leading features.” The defendant has succeeded in sustaining this head by other means; he demonstrates by experiment that as matter of fact such feature is not essential. He presents a supporting bar around which the tube is formed, and by which it is sustained and extended for an oblique cut precisely in the mode and with the identical functions as those clearly described in the complainants’ patent.
The letter of complainants’ specifications is followed by the defendant, and the actual history and growth of this identical machine shows that in fact as well as in legal theory the complainants’ supporting bar has been the parent of the defendant's device. Nixon bought an operative machine which he had no right to use; he called experts to make numerous substitutions of subordinate parts and was enjoined, they being pronounced mechanical equivalents. He has all the time been running the same machine, and the question is now presented whether the substitution of another mode of sustaining this supporting bar which he borrows from an English patent, is such a substantial alteration of the complainants’ device as avoids infringement.
Notwithstanding what was said by the court when the final-injunction was ordered under the former bill in reference to that feature of the bar by which it was attached to the bed of the machine, and which constitutes the foundation of so much of the defendant’s argument, we npw hold, not without some doubt, that the second claim may [665]*665be so construed as to include a supporting bar around which paper may be formed into a tube and in connection • with which the same may be severed without including, as an essential part of it, the. mode by which the bar is suspended or sustained. When so interpreted, .the defendant has not only a mechanical equivalent, but that which Is identical in all particulars with that of the complainants.
[See 105 U. S. 766.]
The nomenclature of the first judgment arose from the accidents of the argument, and is misleading. It might be inferred that the all-important head was something different from the supporting bar itself. _ The whole judgment shows, however, that all which went to form and distend the tube, the part around which the tube was formed and in connection with which it was severed, was treated as the supporting bar within the meaning of the patent, and all the residue or rear portions as a mere form or mode of holding the supporting bar in place. We adopt no new view now. The only embarrassment results from the undue prominence which was given to the mode of suspending the bar: it was then erroneously supposed to be the only mode.
We think this most useful and highly meritorious invention, one which has cheapened one of the most useful productions of commerce.
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EMMONS, Circuit Judge.
License: Charles Morgan, the assignee of the patent, sold to Nixon the exclusive right to the use of these machines in the state of Ohio. ' Nixon sold the same right to Chatfield & Woods. After this, Morgan had no fight to sell the use of á machine in Ohio at any time. Not during the original term, because he had already transferred that; not during the extended term, because he did not own it. Nor could he sell a single machine with the right to use it until it was worn out after the expiration of the original term, because the assignments [664]*664of the patentee to him transferred no such double authority as that of first transferring tlK exclusive right of the whole state, which would exhaust his whole power of disposition under the assignment, and then, .secoudly, to flood the country with machines to be used after the expiration of the term, thus defeating the interest of the patentee in the extension. It is not a fair construction of the assignment of a patent that the assignee shall first assign the entire right for a particular territory, and get its whole value from his vendee, and, after having thus received all the benefit he was entitled to under the transfer, sell single machines to be used in the same territory during the extended term. He will in this mode obtain the value of a right never conveyed to him.
It is argued that inasmuch as Morgan himself subsequently, for a short period, owned the extended term, that if he were in court seeking to enjoin Nixon, he would be es-topped to say that at the time of the sale he had no right to make it. If this be so, as the present complainants claim the extended term through him, they should also be estop-ped. There are many fallacies in this argument.
We hold the purchase from Morgan by the defendant of the infringing machine was in fraud of complainants’ rights. Such a title, although it might estop Morgan personally, is not one which would work the same consequences against one whom it was intended to defraud.
It will be noticed particularly that the argument we are now considering, does not suppose the defendant to be possessed of a legal title, .but only an equitable right growing out of the fact that his vendor subsequently became possessed of the right, which by the assumptions of this argument he pretended to grant, but this principle is applicable only where justice demands it, and to prevent circuity of action; good faith demands the annexation of no such incident to a contract made for the purpose of defrauding others; no action could be maintained by Nixon against Morgan for a failure of his user of the machine until it was worn out after the expiration of the first, term. In view of the fact that Nixon had before bought and sold the same right, that Morgan was the assignee only of the patent and had no right to the extended term, we doubt whether any action could be maintained irrespective of fraud. But in view of our conclusion that the contract was actually fraudulent as to third persons, it is clear that no action could be maintained by one particeps criminis against the other. In either view we are clear that no such right, legal or equitable, passed to the defendant, Nixon, as within the decisions authorized him to use it during the original term in such sense as would give him the right to use it during the. extended term. The right to use after the expiration of the term is an incident to the primal rights to use it during the original term; if that fails on the account of fraud, the incident falls with it.
Second claim: In the former printed opinion the head for distending the bag so that it could be severed by an oblique cut was considered “the all important feature of this supporting bar.” It treated the word “supported,” as referring to that function of the bar which supported and distended for severance the tube; it treated as unimportant and utterly funetionless all the other portions of the bar save for the single purpose of sustaining the distending head. So fully was this idea entertained by the court, the presiding judge remarked to defendant’s "counsel that if a hair or thread possessed the power of support, and either was substituted for the near part of the bar, he would deem it an infringement. He added that he thought the very essence of the invention would be taken if by some novel discovery a power analogous to magnetism could be made to hold it in place in an operative machine
It was, therefore, because the court erroneously assumed, as it was fully authorized to do by the argument and facts before it, that this particular mode was the only one by which the head could be supported, that it was said “the attachment of the bar to the bed of the machine was one of its leading features.” The defendant has succeeded in sustaining this head by other means; he demonstrates by experiment that as matter of fact such feature is not essential. He presents a supporting bar around which the tube is formed, and by which it is sustained and extended for an oblique cut precisely in the mode and with the identical functions as those clearly described in the complainants’ patent.
The letter of complainants’ specifications is followed by the defendant, and the actual history and growth of this identical machine shows that in fact as well as in legal theory the complainants’ supporting bar has been the parent of the defendant's device. Nixon bought an operative machine which he had no right to use; he called experts to make numerous substitutions of subordinate parts and was enjoined, they being pronounced mechanical equivalents. He has all the time been running the same machine, and the question is now presented whether the substitution of another mode of sustaining this supporting bar which he borrows from an English patent, is such a substantial alteration of the complainants’ device as avoids infringement.
Notwithstanding what was said by the court when the final-injunction was ordered under the former bill in reference to that feature of the bar by which it was attached to the bed of the machine, and which constitutes the foundation of so much of the defendant’s argument, we npw hold, not without some doubt, that the second claim may [665]*665be so construed as to include a supporting bar around which paper may be formed into a tube and in connection • with which the same may be severed without including, as an essential part of it, the. mode by which the bar is suspended or sustained. When so interpreted, .the defendant has not only a mechanical equivalent, but that which Is identical in all particulars with that of the complainants.
[See 105 U. S. 766.]
The nomenclature of the first judgment arose from the accidents of the argument, and is misleading. It might be inferred that the all-important head was something different from the supporting bar itself. _ The whole judgment shows, however, that all which went to form and distend the tube, the part around which the tube was formed and in connection with which it was severed, was treated as the supporting bar within the meaning of the patent, and all the residue or rear portions as a mere form or mode of holding the supporting bar in place. We adopt no new view now. The only embarrassment results from the undue prominence which was given to the mode of suspending the bar: it was then erroneously supposed to be the only mode.
We think this most useful and highly meritorious invention, one which has cheapened one of the most useful productions of commerce. should not, if any liberal reading of the claim can prevent it, be taken by defendant and used without any alteration or addition, without one particle of invention, of even experiment or expense, because the device of another shows him a different mode of sustaining this bar. Before the complainants’ invention no one ever thought of making the lap for a bag by the ingenious device of an extended tube and an oblique cut. Especially was it .never thought of in connection with a continuous tube by which bags are made more rapidly than we can count.
It seems to us a breaking down of all the protective principles of the patent law to hand over an invention so novel and so useful to one who has done no more to improve or change it than har. this defendant
Pressed as we are for time, we shall make no attempt to distinguish this case from the judgments cited by the learned counsel for the defendants. We have examined them all, and think they warrant us in saying that the essence of the complainants’ device having been appropriated by the defendant, he does not escape infringement, as we construe the claim, even though the mode of supporting the bar were so entirely different as to constitute the • subject of a patent. We should deem it a different instrumentality for a support only, and not an essential and indivisible portion of the device around which the tube is formed, distended and presented lor severance
We have not overlooked the many decisions which hold that where the patentee describes particular modes as essential ’to his invention, that he is confined to. those; but we do not think their principle ought to be applied to a case like this where the device is so capable of being employed in another mode, where it is so complete in itself, and when so used and thus employed all its benefits are wholly secured. And we add, more especially, that where, without such employment, its novel purpose could not be accomplished at all. Not one of the cases have taken from an inventor so meritorious a device by such means.
It is possible we are somewhat influenced' by the history of this contest before us; for it was well calculated to warp, and perhaps even to prejudice, the legal judgment. But if an error should be committed, it is better that it should be in an effort to protect meritorious invention rather than to aid in what appears to us to be an attempt to obtain the benefits of this invention without compensation. Prom these views it follows that the defendant’s device infringes the second claim of complainants’ patent.
Fourth Claim: This claim has been construed by Judge Blatchford to be a claim for the mechanism by which the paper for the manufacture of the bags is cut as described. Giving it this construction in connection with the construction which we have given to the second claim, it must, therefore, be held that this claim is also infringed by the defendant.