Le Roy v. De Vry Corp.

HOUGH, Circuit Judge (after stating the facts as above). The existence of equitable jurisdiction does not of itself prove the propriety of granting equitable relief. The line of decisions suggested by this appeal furnishes illustrations of this truth. Against a general demurrer, we held in Tompkins v. International, etc., Co., 183 F. 773, 106 C. C. A. 529, that there was jurisdiction in equity to entertain — i. e., consider —a bill filed three days before expiration of patent. But it does not follow that, because jurisdiction exists, an injunction should issue, much less that an injunction must issue. There are eases (see Walker [5th Ed.] § 698) holding in substance that a defendant, who had infringed and at expiration of patent had on hand a quantity of the patented article, made or obtained by him before expiration, might be enjoined from disposing of the same on the ground that the things were infringements when made, and to use or dispose of them after expiration prevented the full enjoyment of the patent monopoly by its owner. The doctrine seems to have been introduced by Wheeler, J., in several of the cases cited in the text-books. This court has never given adherence to that doctrine; but it is not necessary to go into the matter now because, first, the injunction actually issued cannot be justified, because seven months after the patent monopoly ended this injunction puts on this defendant the duty of ascertaining at its peril whether a once-patented article, obtained by it at any time from any one and anywhere, had been in fact manufactured by any one anywhere before August [20] 27, 1924. We cannot discover that any ease has ever gone so far. But, second, there was no ground for granting.an injunction, even along the lines first above indicated, because there is nothing in the bill and nothing in the evidence showing, or tending to show, that defendant had any stock or supply of infringing articles which it was preparing to put upon the market. We avoid discussion of the question whether, after patent expiration, or upon the very eve of expiration, any injunction at all can issue, because it has been thought that there is a contradiction on this point between Root v. Railway Co., 105 U. S. 189, 26 L. Ed. 975, and cases following it, and Clark v. Wooster, 119 U. S. 322, 7 S. Ct. 217, 30 L. Ed. 392, and some subsequent cases following that decision. See them collated by Holt, J., in Diamond, etc., Co. v. Seus (C. C.) 159 F. 497. It is enough for our present purposes that, as above stated, no case justifies any injunction on such a record as this. It remains to inquire whether the bill can be sustained as one for an accounting only, as was done in this court in Tompkins v. St. Regis Paper Co., 236 P. 221, 149 C. C. A. 411, where the bill was sustainéd, though brought for an accounting upon a patent that had expired some four years before bill filed. In that ease, however, it is set forth at great length (page 223) that special circumstances must be shown, calculated to induce belief that plaintiff’s remedy at law is not adequate, and the ground of the holding was that the suit for accounting is an independent ground of equitable jurisdiction, available when law is inadequate even for the owner of an expired patent. This case cannot be sustained on the equity side’ of the court on any such ground; there is neither averment nor proof that plaintiff’s remedy at law is inadequate. There is a line of cases holding that, where special circumstances are shown, and in addition there is time between the filing of the bill and the expiration of the patent to obtain relief by temporary injunction, equity will retain jurisdiction, even though no injunction pending suit is granted or even asked for. American Sulphite Pulp Co. v. Crown, etc., Co. (C. C.) 169 F. 140; Sheridan Co. v. Law Co., 172 F. 223, 97 C. C. A. 27; Stromberg Co. v. Holley Co. (D. C.) 260 F. 220. We do not think they benefit appellee, but the matter need not be considered now, because no cases go further in supporting jurisdiction • than the . two Tompkins causes in this court; yet on this record neither of them helps the plaintiff. Decree reversed, with costs, and cause remanded, with directions to transfer it to the law side of the court below; further, that the court below direct a repleader; also that, if plaintiff does not file and serve a complaint at law within 30 days after the filing of the mandate herein, the suit shall be dismissed, with costs.