City of Concord v. Norton

Lowell, J. Sitting here in equity, I cannot, after the expiration of the patent, undertake to decide upon its validity, or to enjoin, my [479] self from trying the case at law pending in New Hampshire, unless some purely equitable defense is made out which would not be equally available in that action. The plaintiffs here do not rely wholly upon an equitable defense to that action. They say and insist that the invention was anticipated. If this point is relied on I cannot enjoin the action, because if the defendants here should prevail, after a full hearing, in which they succeed in repelling the equitable estoppel, they must still prosecute the action at law against the defense of want of novelty in the invention. A preliminary injunction is never granted under such circumstances, though sometimes the bill will be retained until the action is tried at law. Kerr, Inj. 17, 19; Barnard v. Wallis, Craig & P. 85; Perrine v. Striker, 7 Paige, 598; Derbyshire, etc., Ry. Co. v. Serrell, 2 De Gex & S. 353; Waterlow v. Bacon, L. R. 2 Eq. 514. But what is called equitable estoppel, — that is, estoppel by conduct, —is, in this country at least, as valid a defense at law as in-equity. Bigelow, Estop. (3d Ed.) 476, citing Copper Mining Co. v. Ormsby, 47 Vt. 709. And the leading cases on this subject, such as Pasley v. Freeman, 3 Term E. 51, and Pickard v. Sears, 6 Adol. & E. 469, are actions at-law. Mr. Justice Swaynb announced it as the doctrine of the supreme court, in Dickerson v. Colgrove, 100 U. S. 578, 584, that this is a legal defense; and so is the law of New Hampshire, where these actions are pending. Horn v. Cole, 51. N. H. 287, 300. For these reasons I must refuse the motion for an injunction. But as the same estoppel may be pleaded before me in the action at law, and as the point has been argued, I feel bound to say that I do not find the estoppel to 3be made out. The parties appear to stand very much like ordinary suitors in a patent cause. The patent may not have been litigated with great diligence, but I see no good reason why the Amoskeag Company should have more benefit by the delay than any one else. That company notified the patentees, in answer to a demand for a settlement, that they should contest the validity of the patent; and it may be reasonably inferred that the patentees knew or should have known that the company intended to go on with the manufacture as they might find occasion; but I do not think it is a reasonable inference that the company supposed or had any right to suppose that the patentees had licensed them to go on, merely because they did not prosecute them after the 30 days’ grace had expired. On the contrary, I infer, and I think a jury would infer from the evidence as it now stands, that each party was confident of his own opinion, and that [480] the Amoskeag Company knew that they might be sued at any time, but believed that they could not be sued with effect. Under such circumstances a court of equity might well decline to give any extraordinary assistance to patentees who had remained quiet for years; but in the cases of that sort, in which equitable relief has been refused, the courts have said that the plaintiff must be left to such damages as he might obtain at law. This is laches, and not estoppel ; and for laches the remedy at law is found in the statute of limitations, and if that statute is inadequate there is no other remedy. The same remark, I apprehend, is true of the damages. The hardship which these plaintiffs apprehend appears to arise from the very large damages which are claimed by the patentees. The record before me does not show the grounds of this claim. Supposing it to be, as intimated at the argument, that the regular license fee would be an annual payment, the equitable complaint is that the city was per-mittted to use the improvement for so many years without notice. This would apply, in a greater or less degree, to all cases of laches; and if the court and jury are incompetent to deal with it, I know of no power, in a court of equity to set a limit to the damages which a court of law shall award under such circumstances. Injunction refused.