Mills v. Industry Novelty Co.

CARPENTER, District Judge (after stating the facts as above). I have considered carefully the briefs of the defendants, not having been favored with briefs on the part of the plaintiff. The motion to strike paragraph 10 of the answer must prevail, and leave to amend the answer will be denied, A patentee’s rights are defined in Paper Bag Patent Case, 210 U. S. 407, 28 Sup. Ct. 748, 52 L. Ed. 1122. Granting a valid patent, the right to an injunction against infringement is clear. Granting there is. a valid patent in this case, the defendants are not concerned with the particular use which the plaintiff makes of his monopoly. As was said in Fuller v. Berger, 120 Fed. 274, 56 C. C. A. 588, 65 L. R. A. 381: “Equity is not concerned with the general morals of a complainant; the taint that is regarded must affect the particular rights asserted in his suit. * * * If the defendant can do no more than show that the complainant has committed some legal or moral offense, which affects the defendant only as it does the public at large, the court must grant the equitable remedy, and leave the punishment of the offender to other forums.” It is true in that case Judge Grosscup made a most vigorous dissent, but apparently he became reconciled to the view of the majority of the court, because in the later case of Board of Trade v. L. A. Kinsey, 130 Fed. 507, 64 C. C, A. 669, 69 L. R. A. 59, he concurred in the opinion of Judge Baker, which quoted with approval the above excerpt from the opinion in the Berger Case. The unlawful conduct of the plaintiff is a collateral issue, and as such does not affect the defendants, and furnishes no^ grounds for defense. Dr. Miles Medical Company v. Platt (C. C.) 142 Fed. 606 and cases cited. Clearly an unlawful use of a device made by its pat-entee can given no license to the general public to infringe the patent by the construction of a device which is used' in legitimate trade. The motion to strike paragraph 10 will be allowed. As to the proposed amendment to the answer: The defendants admit that their infringement of the plaintiff’s device is in violation of the public policy of the United States and the various states of the Union, and is unlawful, and claim, therefore, that the plaintiff should not share in any profits arising from an unlawful act. This is not a suit between persons in pari delicto; this is not a suit where the plaintiff and defendant have been jointly interested in a violation of the [465] law. If the defendants have in fact infringed the plaintiffs patent, they must account for their profits, whether or not their use of the patent was legitimate or illegitimate. If full effect is given to the defense set out in the proposed amendment to the answer, it would amount to giving the public generally a license to manufacture these gambling instruments, instead of restricting the unlawful use to the plaintiff. So- far as the general public is concerned, it will be much better off if the manufacture is limited to the plaintiff. If the plaintiff is violating the law, he can be punished in the proper forum. If the state of Illinois and the government of the United States have seen fit to permit the manufacture of gambling* devices under this patent, it is not for the defendants to say that they can infringe upon the plaintiff’s monopoly without making lawful compensation. The defendants, admitting their own wrong, seek to avail themselves of the plaintiff’s rights, because they say the plaintiff has never used his patent, except to manufacture a gambling instrument. The defendants’ position is more unmoral than the plaintiff’s. The plaintiff had a lawful right to manufacture under his patent. He exercised that right to make a device to be used in violation of the law. The defendants admit (arguendo) that they have not only violated the same law by manufacturing the gambling instruments, but also that they have unlawfully infringed upon the exclusive rights of the plaintiff. Such a defense should not be permitted, and leave, therefore, will not be granted to the defendants to amend the answer, as indicated. Nothing herein is intended to prevent the defendants from making a general denial of the utility of the plaintiff’s invention.