Babcock v. Clarkson

Decision Date23 June 1894
Docket Number84.
Citation63 F. 607
PartiesBABCOCK et al. v. CLARKSON et al. [1]
CourtU.S. Court of Appeals — First Circuit

Appeal from the Circuit Court of the United States for the District of Massachusetts.

Edward P. Payson, for complainants.

Thomas W. Porter, for defendants.

Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge.

PUTNAM Circuit Judge.

Joseph T. Clarkson, one of the respondents below, was the original patentee, and the title of complainants is derived under assignments from him for a pecuniary consideration, valuable in law, though said to be small. Consequently, an estoppel operates against him. The precise nature of this estoppel does not seem to have been always clearly apprehended. It is in effect, that, when one has parted with a thing for a valuable consideration, set up his own fraud, falsehood error, or mistake to impair the value of what he has thus parted with. As applied to the specifications of a patent the vendor patentee is as much barred from setting up that his allegations therein were merely erroneous as that they were willfully false. This is as much in harmony with sound morals as with the fundamental rules of equity law. The estoppel is not technically by record; nor is it the usual estoppel in pals, arising from the representations or silence of the party against whom the estoppel is charged, as in Sturm v. Boker, 150 U.S. 312, 14 Sup.Ct. 99, and Brant v. Iron Co., 93 U.S. 326. Consequently, the estoppel which we apply to this case does not run against a patentee whose patent has been sold by his assignee in bankruptcy. These distinctions lay out of this case Cropper v. Smith, 26 Ch.Div. 700, affirmed on this point in Smith v. Cropper, L.R. 10 App.Cas. 249.

Hall v. Conder, 2 C.B. (N.S.) 22, was decided in 1857. It related solely to a question of implied warranty at common law, an essentially different matter from the principle of the equitable rule that one cannot avail himself of his own wrong, which includes error, to the detriment of his privy in title. Much was said in that case with reference to the proposition that the facts were equally within the knowledge of each party; but, in applying the equitable rule referred to, reliance, unless in exceptional cases, is put on the equitable obligations of the vendor, and the question of knowledge is unimportant. In Hall v. Conder an appeal was taken to the house of lords; but we do not find that it was perfected. At any rate, its principles could not have escaped so learned and experienced a lawyer as Lord Romilly, then master of the rolls, who decided Chambers v. Crichley, 33 Beav. 374, in 1864. There the same estoppel was applied as is raised in this case, although the transaction was between partners, who must be presumed to have had equal sources of knowledge. His opinion summarizes the law so well that we give the whole of it on this point, as follows:

'I do not intend to express my opinion as to the validity of Wright's patent. I will assume, for the purpose of my judgment, that it is worth nothing at all. But this is certain; that the defendant sold and assigned that patent to the plaintiffs as a valid one, and, having done so, he cannot derogate from his own grant. It does not lie in his mouth to say that the patent is not good.'

On the whole, the estoppel raised in this case is of the same class as that applied by the supreme court in Brazee v. Schofield, 124 U.S. 495, 8 Sup.Ct. 604, where the court said (page 503, 124 U.S., and page 604, 8 Sup. Ct.) as follows:

'There is another view of this case which would seem to conclude the appellant as to the sufficiency and legality of this notification by the widow. The patent of the United States was issued upon the supposed compliance of the patentees with the requirements of the donation act. That instrument is not in the record, but we must presume that it follows the usual form of such instruments, and recites the compliance of the patentees with the requirements of the act, and the production to the proper officers of satisfactory proof on that
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  • Hologic, Inc. v. Minerva Surgical, Inc., 1:15CV1031
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • June 28, 2018
    ...generally arises in the context of an anticipation or obviousness defense. Diamond, 848 F.2d at 1224 ; see also Babcock v. Clarkson , 63 F. 607, 609 (1st Cir.1894) (stating "[T]he estoppel historically has applied to invalidity challenges based on ‘novelty, utility, patentable invention, an......
  • Scott Paper Co v. Marcalus Mfg Co
    • United States
    • United States Supreme Court
    • November 13, 1945
    ...Fastener Co. v. Ball Glove Fastening Co., 1 Cir., 58 F. 818; Woodward v. Boston Lasting Machine Co., 1 Cir., 60 F. 283, 284; Babcock v. Clarkson, 1 Cir., 63 F. 607; Noonan v. Chester Park Athletic Co., 6 Cir., 99 F. 90, Respondents, denying that the doctrine of estoppel can rightly be appli......
  • Meissner v. Standard Ry. Equipment Co.
    • United States
    • United States State Supreme Court of Missouri
    • April 1, 1908
    ......v. Martin, 62 F. 272, 67 F. 786; Ball & Socket Co. v. Ball Glove Fastening Co., 58 F. 818;. Essex Button Co. v. Paul, 48 F. 310; Babcock v. Clarkson, 63 F. 607. (9) The obligation to pay royalty. should not be pushed beyond the words of the contract. promising payment therefor. ......
  • Westinghouse Electric Mfg Co v. Formica Insulation Co
    • United States
    • United States Supreme Court
    • December 8, 1924
    ...Fastening Co., 58 F. 818, 7 C. C. A. 498; Woodward v. Boston Lasting Machinery Co., 60 F. 283, 284, 8 C. C. A. 622; Babcock v. Clarkson, 63 F. 607, 11 C. C. A. 351; Noonan v. Chester Park Athletic Co., 99 F. 90, 91, 39 C. C. A. 426. There are later cases in nearly all the Circuit Courts of ......
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