be as well adapted to handling sugar cane. Nor, probably, would as fine teeth as would be suitable in moving unthreshed grain or hay be desirable in the case of sugar cane, as it might impale the canes and interfere with the convenience of the work. I do not think that the mere change in a device which was used to unload cars, or to move material from any place upon which it was deposited, in relation to the scraper or flights, would involve invention, or could be considered in that light.

It seems to me, therefore, that the complainants must be confined to the consideration of this endless rake and the machinery which operates it, and that, as to its use in connection with the cars and conveyor, this machine does not differ materially from the machine which was invented by Howard, or the one which was invented by Lockhart. Both of these were used for the like purpose of moving material from the place where it was, either where it rested or where it was in process of being conveyed from one place to another, automatically and by machinery, to a conveyor or elevator, for the purpose of being conveyed to the place where it was wanted. The complainants' machine as constructed, by simply applying that old device to sugar cane which had been applied before to other material, does not seem to involve invention. My conclusion is, therefore, that this patent is invalid.

I am inclined to think that I shall have to come to a like conclusion as to the issue forming the other branch of the defense-the material difference between the machines of complainants and defendants. One of the elements claimed by Mr. Mallon in his patent, which he calls "bars holding the rakes," does not exist in the defendants' machine. I would have no hesitation about holding this,

were it not for the case of McSherry Co. v. Dowagiac Company, IOI Fed. 716, 41 C. C. A. 627, which was decided in the Sixth Circuit, and which has been cited by Mr. Rea. There the patentee described what he called a "swinging head" in each of his claims, in such a way as seemed to make it an essential element of the claim. The Court of Appeals of the Sixth Circuit, however, held differently. It was evidently an unnecessary thing to put upon the springs. The springs were bent around what the inventor called a "swinging head," and then from that they extended back to another portion of the machine; and the Dowagiac Company, the owners of the patent, immediately discarded it; never built any machines like it; simply threw it out; and extended the springs directly back to the drawbars. The defense made the same claim there, that they were not infringers because they did not have a swinging head; and, although it was described carefully in the claims of the patent, Judge Lurton held that there was nothing in the claims which showed that the patentee confined himself to that detail in description. One thing is certain, that it was not essential in the sense that it was any good at all, or performed any function whatever, for it did not. But that is hardly true in relation to these crossbars in complainants' rake, because these crossbars do carry the teeth or scraper, and are in the claims represented as carrying the scrapers; so that they are not idle or useless, as the swinging head was, and I think they cannot be omitted. It must be held that the patentee has made them essential by describing them and their use in the manner which has been done by these claims.

For these reasons, I think the bill must be dismissed.

CONTINENTAL WIRE FENCE CO. v. PENDERGAST et al.

(Circuit Court, D. Minnesota, Fourth Division. August 9, 1903.)

1. PATENTS-SUIT FOR INFRINGEMENT-ESTOPPEL TO DENY VALIDITY.

Where the vendor of a patent who is estopped to question its validity is co-operating with others in its infringement, those who are acting with him are subject to the same estoppel.

2 SAME PRELIMINARY INJUNCTION-SUFFICIENCY OF SHOWING.

The assignee of an unadjudicated patent held entitled to a preliminary injunction against infringement by the patentee, who was in fact the vendor, and his two codefendants, although the latter were nominally sole owners and operators of the infringing machine as partners, and the patentee merely an employé, where infringement clearly appeared, and it was shown that immediately on selling his interest in complainant corporation the patentee associated himself with defendants, superintended the construction of the infringing machine, hired men and interested himself in the extension of the business, and there was evidence tending to show that he invested money and was in fact interested in the business.

8. SAME-INFRINGEMENT-FENCE MAKING MACHINE.

The Pendergast and Whidden patent, No. 628,253, for a fence-making machine, held infringed by the machine of the Sutherland patent, No. 708,679, on a motion for a preliminary injunction.

In Equity. Suit for infringement of letters patent No. 628,253, granted July 4, 1899, to Maurice D. Pendergast and James M. Whidden. On motion for preliminary injunction.

The following is a copy of machine alleged to have been infringed:

A. C. Paul, for complainant.
Williamson & Merchant, for defendants.

LOCHREN, District Judge (orally). The Continental Wire Fence Company is the owner of patent No. 628,253, issued July 5, 1898, to the defendant Maurice Pendergast and one Whidden, for a wire fence making machine. It is alleged that the defendants infringe certain specified claims of this patent in the machines they have constructed and are operating at Hutchinson, in this state; and the complainant brings the matter before the court on a motion for a preliminary injunction against the defendants.

It is true, as has been held in many cases in the federal courts, that an injunction is a harsh remedy, and should not be allowed where the right is doubtful or the wrong uncertain, or where there is in a patent case any doubt of the validity of the patent or as to the infringement. And, while there is a presumption of the validity of a patent from the mere issuing of the same by the Patent Office, that is not considered by the courts sufficient to warrant the issuing of an injunction; but they require, in addition, either that the validity of the patent shall have been determined by a final judgment, after an actual trial, where there appears to be no sign of collusion, or that the right of the patentee shall have been admitted by the public, by user for such a length of time as to raise the presumption that the right is not denied or contested. And there should also be like certainty with reference to infringement.

The principal point raised here is whether the circumstances of the case are such as to raise an estoppel against the defendants. Where a defendant is the vendor of the patent, whether he is a patentee or a transferee of the patent, if he has himself sold it for a valuable consideration, then from that very fact he is estopped from denying the validity of the patent. It is true that a patent for a machine that is inoperative is void; but with respect to that, the evidence shows. that machines have been constructed under this patent by one of the patentees, and the same have been operated, and that such machines, or interests in them, were transferred to two of the parties who formed the complainant corporation, Mr. Hirsch and Mr. Bretchet, together with the patent in suit, and another patent as to the fabric that is constructed or claimed to be constructed by this machine. That transfer was made by defendant Pendergast, of a two-thirds interest in the patent and in these machines, on or about the 29th day of June, 1901. The plaintiff corporation was formed about that time, and the work of operating these machines was carried on under the superintendence of Mr. Pendergast until some time in November or December of that year, when Mr. Pendergast disposed of his remaining interest in the property and patents, and in the corporation which the three had formed by sale of the same to his associates. At the formation of the corporation, Pendergast put in the patents and machines for his one-third share, and the other parties put in amounts of cash which had been agreed upon. When they were transferred to the corporation, it appears that the patent was held by the mother. of Pendergast, and two of the machines by his wife, and one by a

third person; but they were all, in fact, owned and controlled by Pendergast, who caused them to be transferred to the corporation. The bill of sale of the machines stated that they were made in pursuance of this patent, and that bill of sale from the wife of Pendergast was passed and delivered to the corporation by him as the performance of his agreement to make the sale. I think, under those circumstances, that any statements or representations in the bill of sale, so procured by him to be made in the performance of his agreement, must be considered as his representations. Under the circumstances, therefore, I have no doubt that, as far as Pendergast is concerned, he is estopped to deny the validity of the patent, and also to deny that those machines, which he transferred with the patent to the corporation as being made in pursuance of that patent, were so made, and fairly represented the machine which was described in the patent.

The evidence shows that many of the devices of this patent are contained in the machine which was made and operated by the defendants. The carriers and twisters, and some others of the devices, are similar to those described in the first several claims of this patent, with some slight changes. And it seems to me that it clearly appears that these changes do not make them different devices; that what is used in one is fairly the equivalent of what is used in the other. They are used for the same purpose in each machine, and perform the same functions in the same way, substantially. I do not think there is any fair doubt but that the first several claims of the patent which are specified in the bill of complaint are infringed by the defendants' devices.

I think the only remaining question is whether the other defendants, Sutherland and Zickrick, are subject to the estoppel which applies to Pendergast. The rule of law, as shown by the cases which have been cited, is that, where a person who is the vendor of a patent and is subject to an estoppel is co-operating with others in the infringement of the patent, those who are acting with him are also subject to the same estoppel. As to whether these two defendants, Sutherland and Zickrick, are in that situation, the evidence, as shown in the affidavits, is somewhat conflicting. The affidavits of these parties themselves are to the effect that Sutherland and Zickrick alone constitute the partnership, and that Pendergast is simply an employé at day wages. If that is true, the estoppel would not apply to the employers, who were not parties to the sale of the patent; and as Pendergast is only, under that theory, acting as an employé, not doing the business on his own account, the bill would have to be dismissed as to him upon final hearing. But, according to the witnesses whose affidavits have been introduced on the part of the complainant to show how the business was carried on, and the circumstances under which it was commenced, and the relation of the parties to it, it seems that about the time Pendergast finally sold his interest in the complainant company to Mr. Hirsch and Mr. Bretchet, or whoever were the purchasers of that interest, he claimed that in consideration of certain changes in the machine and in its operation, which had been discussed between himself and his associates, as