manufacture said articles of commerce under patents owned by them prior to the formation of said company," and that such articles "were sold by said parties * at uniform prices, and upon the same terms, without respect to the cost of production or the merits of the respective articles"; and that the patent in suit was conveyed to the complainant corporation in pursuance of said conspiracy to restrain the trade in the states where said plants were located. The plea further alleges as follows:

"The direct tendency and the direct result of said conspiracy and agreement between said parties, as aforesaid, was and did, as intended by the parties thereto, create a scarcity of said articles of commerce, and enhance the price thereof, in the states where said plants were located, and throughout the several states where said articles were in use by the public to a great extent; and the said conspiracy, and the natural results of the same, as intended and designed by the parties to said agreement, and the acts of the parties thereto under the same, are all and each in violation of law, in restraint of trade and commerce between the several states, and are directly prohibited by the common law and the laws of the United States, and, as said illegal and unlawful combination of the parties to said agreement, the said National Folding-Box & Paper Company, have no right, power, or authority to sue or plead in the courts of the United States, in any civil action wherein it invokes the aid of the courts of the United States, to protect the plaintiff to further engage in or carry on the business for which it was illegally organized, and especially to protect it as demanded in this suit, and said combination is illegal and void, and your respondents, therefore, pray that the proceeding in the cause may be abated and dismissed."

This plea was argued under an oral stipulation to the effect that, for the purposes of the motion for a temporary injunction, the facts alleged in said plea should be taken as true, so far as they referred to the contents and execution of the agreements therein alleged, but that this admission should not be construed to extend to any innuendoes contained in the plea respecting the purposes of said agreements, except so far as they appeared on the face thereof, nor respecting the intent or animus of the parties thereto.

The conclusions reached dispense with the necessity of resting the decision on the legality of the agreement alleged in the plea in abatement. It does not appear that the original contract was illegal. There are no provisions therein which, directly or indirectly, refer to any restriction of trade or regulation of output or of prices. The parties thereto bound themselves not to engage in like business for 49 years. This was essential to effectuate the transfer of the good will, and is not unusual in such cases. The allegation that it was further agreed that the parties "could and did manufacture," etc., is in direct conflict with the previous allegation of the plea. To sustain this plea, it would be necessary to hold, as claimed by defendants, that a corporation formed in restraint of trade in one state could not, in another state, maintain a suit to restrain the infringement of its patent.

The federal cases chiefly relied on by defendants are Harrow Co. v. Hench (C. C.) 76 Fed. 667, affirmed in 27 C. C. A. 349, 83 Fed. 36, 39 L. R. A. 299; Harrow Co. v. Quick (C. C.) 67 Fed. 130.

Harrow Co. v. Hench, supra, was a suit to enjoin licensees from violating a license contract by selling below the price agreed on therein, and for a decree for the specific performance thereof, which

contract was made with a combination controlling 90 per cent. of the manufacturers of certain harrows in the United States. Said contracts prevented licensees from selling their products at a price less than was set forth in a schedule annexed to the license, so that, as the court said, the corporation is simply clothed with the legal title to the assigned patents, while "the several assignors are invested with the exclusive right to manufacture and sell their oldstyle harrows under their own patents; but all of them must sell at uniform prices, and upon the same terms, without respect to cost or the merits of their respective styles of harrows, and all the members of the combination are strictly forbidden to manufacture or sell any other kind or style of float spring-tooth harrow than they are thus licensed to make and sell." Judge Acheson refused the injunction, and the court of appeals affirmed his decision, taking the ground that the prior owners were the beneficial owners, with right to continue their business, subject only to the restriction in its management imposed by the contract, and that "the result would be the same, in legal contemplation, if the corporation and licenses had been dispensed with, and the contract had provided simply, as it does, for combination and restraint of competition." This was not an infringement suit, but a suit to compel the performance of an unlawful contract. The decision rests upon the fact that the corporation was organized solely for the purpose of making a combination to restrain competition and trade and to enhance prices.

In the same line, Judge Coxe, in the suit of the same complainant against the same defendant (C. C.; 84 Fed. 226), to restrain infringement of a patent which had been assigned in accordance with said contract, held that, as the contract was illegal and void, the assignment also was void, and solely on that ground dismissed the complaint.

The only opinion in the federal courts cited by defendant which would seem to support the doctrine that an infringer might defend his illegal acts, even in a case where the complainant was a combination formed for the purpose of restraining trade and competition, is Harrow Co. v. Quick, supra, in which the learned judge disposed of the question of infringement on the merits, but, in passing on the defense that this same harrow company was an illegal combination, said:

"It seems to me that the court cannot sustain the present bill without giving aid to the unlawful combination or trust represented by the complainant. The question is not free from doubt, but in a case of doubt I feel it my duty to resolve it in such a way as will not lend the countenance of the court to the creation of combinations, trusts, or monopolies."

The court of appeals, however, said on this point:

"While not prepared, in view of the authorities, to sanction the proposition that the infringer of a patent may escape liability by showing that the legal owner is engaged in a supposed unlawful combination or trust, we do not consider the point." 20 C. C. A. 413, 74 Fed. 239.

And in Columbia Wire Co. v. Freeman Wire Co. (C. C.) 71 Fed. 306, Judge Adams said:

"I would quite agree with the learned judge who wrote that opinion, that the correctness of his conclusion, even in that case, was not free from doubt.'

And he refused to apply said doctrine in a case of infringement. The question here presented was discussed by Judge Wallace in Strait v. Harrow Co. (C. C.) 51 Fed. 819. Judge Wallace says:

"The proposition that the plaintiff, while infringing the rights vested in the defendant under the letters patent of the United States, is entitled to stop the defendant from bringing or prosecuting any suit therefor because the defendant is an obnoxious corporation, and is seeking to perpetuate the monopoly which is conferred upon it by its title to letters patent, is a novel one, and entirely unwarranted."

The opinion in Machine Co. v. Smith (C. C.) 70 Fed. 383, is to the same effect. Judge Simonton says:

"The issues are these: Do the complainants hold letters patent of the United States giving them the exclusive right to make, vend, and use certain patentable devices? Have the defendants infringed the rights thus granted? If in procuring these exclusive rights, or if, in their exercise, the complainants have been guilty of fraudulent or improper conduct towards these defendants, the fundamental principles relied on would debar them of any relief in this court. But if, in the absence of these, it is sought to deprive them of their remedy for the infringement of their rights because of their motives in asserting them, such motives are not the subject of judicial inquiry. Strait v. National Harrow Co., 51 Fed. 819. “The rule that one coming into equity must come with clean hands is confined to the conduct of the party in the matter before the court, and not to matters aliunde. Courts of equity, as well as courts of law, will not refuse redress to the suitor because his conduct in other matters not then before the court may not be blameless. It is enough if the suitor shows that he has acted justly, fairly, and legally in the subjectmatter of the suit.' Beach, Mod. Eq. Jur. § 16, and cases cited."

The distinction between the cases where such a defense might and might not be interposed is stated as follows by Judge Wallace in Strait v. Harrow Co., supra:

"If the defendant had brought suit against the plaintiffs for some breach of contract or violation of its alleged rights, founded upon the combination agreement, then it might become pertinent to inquire into the character of the combination, and ascertain whether the court would enforce any rights growing out of it. But, in a suit brought for the infringement of a patent by the owner, any such inquiry, at the behest of the infringer, would be as impertinent as one in respect to the moral character or antecedents of the plaintiff in an ordinary suit for trespass upon his property. Even a gambler, or the keeper of a brothel, cannot be deprived of his property because he is an obnoxious person or a criminal."

The court of appeals in this circuit said in Light Co. v. Electric Co., 3 C. C. A. 605, 53 Fed. 598:

"They [the owners of the patent in suit] do not lose that right merely because they may have joined in a combination with others, holding other patents securing similar monopolies, which combination may, when judicially examined in a proper forum, be held to be unlawful. We do not feel justified in assuming, upon the facts before us in the present suit, that the use which the complainants propose to make of the injunction-an injunction which seems necessary to secure their monopoly and make their patent fruitfulwill be such as to promote any other monopoly. When it shall be made to appear that some one, to whom in fairness and good conscience these complainants should sell their lamps, has been arbitrarily refused them, save upon oppressive and unreasonable terms, it will be time to consider whether the complainants should be allowed to continue in possession of the injunction."

In Soda-Fountain Co. v. Green (C. C.) 69 Fed. 333, Judge Dallas sustained exceptions to such a plea, and ordered it stricken out as irrelevant, immaterial, and impertinent. The motion for a preliminary injunction is granted..

EVANS et al. v. ROOD et al.

(Circuit Court of Appeals, Third Circuit. February 9, 1900.)

No. 31.

PATENTS-INFRINGEMENT-MACHINES FOR DRESSING HIDES.

The Rood & Vaughan patent, No. 383,914, for an improvement in machines for shaving skins or hides, as to claim 3, which relates to the cutter cylinder, is limited by the prior art to the precise construction shown, which is a cylinder having two series of knives, arranged spirally thereon, the direction of each series being opposite to that of the other. and each series extending "from one end of the cylinder to and beyond the middle of such cylinder, longitudinally thereof, and until they abut against each other"; and such patent is not infringed by a machine in which the two series of knives terminate or abut against each other on the center line of the cylinder.

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

Henry E. Everding and Frederick P. Fish, for appellants.
Charles E. Morgan, for appellees.

Before ACHESON and GRAY, Circuit Judges, and KIRKPATRICK, District Judge.

KIRKPATRICK, District Judge. The appellees' patent in suit, No. 383,914, dated June 5, 1888, purports to be for an improvement in machines for shaving skins and hides, and especially for an improvement in a shaving machine designed as shown in letters patent No. 339,323, granted to John Rood, one of the joint inventors named in patent No. 383,914. The part of the patented device more particularly indicated as being infringed by defendants' machines is the cutter cylinder. This cylinder, which was common to both of Rood's patents, as constructed under patent No. 339,323, had certain alleged defects, which resulted, when operating, in marking and scratching the shaved skins in an undesirable manner. The alteration of the construction of this cutter cylinder, to effect such an arrangement of the knife blades thereon as would obviate this undesirable result, was the principal point of inventive change sought to be embodied in patent No. 383,914. There were other modifications in the appellees' machine of the later patent not found in the machine embodying patent No. 339,323, but they related only to detail of mechanical construction, the application of a sharpening device to the cutter blades, and other minor features, not directly relative to the question at issue in this cause. The third claim of the complainants' patent alleged to be infringed reads as follows:

"A cutter cylinder having two series of knives, as described, arranged in a spiral direction on the external surface of said cylinder, the direction of each series being opposite to, or the reverse of, the other series, extending from one end of the cylinder to and beyond the middle of such cylinder, longitudinally thereof, until they abut against each other, substantially as shown and described."

The specification of the patent relating to this claim is as follows: "A cutter cylinder, B, having on its external surface two series of knives, a, b, each series being arranged to extend from one end of the cylinder to

wards the other end thereof, and in a spiral direction, the direction of each series being opposite to that of the other series. The knives of each series are extended beyond the middle of the cylinder, longitudinally thereof, until they abut each against the other, as shown in Fig. 4. By arranging the knives as represented, no mark will remain on the hide after it has been operated on by them, and during the operation of shaving the said hide, or skin it will be kept in a smooth state, owing to the arrangement of the knives, they tending to extend or spread the portion of the skin, while being acted upon by them, in directions from the said middle of the cylinder towards each end of it."

It is apparent, from the specific language of this claim and specification, that the patentees' conception of their invention was clearly defined and concisely expressed. The invention was, as stated, a cutter cylinder, with blades spirally arranged, as described, and extending from each end of the cylinder to and beyond the middle of each cylinder, longitudinally, until they abutted against each other. If we look into the prior state of the art, we will find the reversed spiral arrangement of blades in a number of machines constructed under earlier patents. As early as July 9, 1867, patent No. 66,640 was granted to John Schiffer for a machine for dressing hides and skins, which contained a rotary scraper, with knives spirally divergent around the cutter thereof, abutting against each other at the center. Patent No. 4,996, dated August 2, 1865, issued to Bray, describes a cutter cylinder with spirally arranged blades overlapping, but not abutting, against each other, so that the scratches left upon the hide by the extremity of one blade would be removed by the cutting of the next blade following. A cutting surface was thus continually presented to the hide, and the hide was so held firmly and flat while being operated upon. In the Masterson English patent, No. 782 of 1877, a cylinder somewhat similar to the Bray is found. Speaking of the helical arrangement of the cutter blades of this cylinder, the specification of the patent says: "They start from alternate points at the middle, the ends at the middle being rounded off so that no angles are presented."

The principle of overlapping cutter blades was adopted in the early Rood patent, No. 339,323, in order that no part of the skin or hide should remain untreated. It is evident that from the early stages of the art till the granting of the patent in suit, while slight differences in mechanical detail were to be found in the different devices, yet the same result was sought by the various patentees and inventors, and sought along the same lines and similar theories. The peculiar arrangement of the knives in all the above-mentioned cylinders was designed, not only to keep the skin or hide flat and stretched while being operated upon, but to prevent the marking of the skin or hide along the middle or at the terminals of the knife blade, just as in the cutter cylinder of the patent in suit the continuation of the knife blades across the center of the cylinder is to accomplish the like result. It was plain that the marks or scratches upon the hide were caused by the failure to have a cylinder that continuously presented a cutting-blade surface to the hide or skin, thereby leaving some part of the skin uncut or untreated, and which part would then form a ridge or mark upon the surface. As we