Chemical Co v. Ellis

Decision Date05 January 1942
Docket NumberNo. 75,75
Citation86 L.Ed. 367,314 U.S. 495,62 S.Ct. 406
PartiesB. B. CHEMICAL CO.. v. ELLIS et al
CourtU.S. Supreme Court

Mr. Harrison F. Lyman, of Boston, Mass., for petitioner.

Mr. William Gates, Jr., of Boston, Mass. for respondents.

Mr. Chief Justice STONE delivered the opinion of the Court.

This is a companion case to Morton Salt Company v. G. S. Suppiger Company, 314 U.S. 488, 62 S.Ct. 402, 86 L.Ed. —-, decided this day, and involves the question whether the owner of a method patent who authorizes manufacturers to use it only with materials furnished by him may enjoin infringement by one who supplies the manufacturer with materials for use by the patented method and aids in such use.

Petitioner brought the present suit for an injunction and an accounting for infringement of the Ellis Patent, No. 1,830,428, of November 3, 1931, for a method of reinforcing insoles in shoe manufacture. Respondents denied infringement and set up as a further defense petitioner's misuse of the patent by permitting its use only with the unpatented materials sold by petitioner. The District Court, 32 F.Supp. 690, sustained this defense and the Court of Appeals for the First Circuit affirmed. 117 F.2d 829. We granted certiorari, 313 U.S. 558, 61 S.Ct. 1117, 85 L.Ed. 1518, because of the importance of the question presented and because we wished to consider this with the Mortion Salt Company case.

Claim 4 of the patent is for a method 'of reinforcing insoles which comprises applying, at room temperature, to a strip of reinforcing material provided with a dry coating of a cement having a substantial rubber content, a coating of adhesive containing a relatively large amount of rubber and of such a character that it will be effective even when freshly applied to cause quick adhesion of the reinforcing material and the material of the insole, and applying to each other, still at room temperature, a portion of the coated strip and the insole to be reinforced.' Both courts below sustained the validity of claim 4 and held it was infringed by respondents' selling to purchasers of petitioner's materials like material for use with the patented process. But both held that petitioner was debarred from enjoining the infringement because of the manner of conducting its business, which is to supply shoe manufacturers, for use in reinforcing insoles, pre-coated fabric which it has slit into strips of suitable width for use by the patented method. If the manufacturer desires he provides the fabric and petitioner pre-coats and slits it. Petitioner supplies adhesive of high rubber content to be applied to the pre-coated fabric at the factory, just before the application of the reinforcing material to the insole. It also furnishes patented machines suitable for applying the adhesive to the strips, the machines remaining petitioner's property.

As compensation petitioner makes a...

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119 cases
  • International Carbonic Eng. Co. v. Natural Carb. Prod.
    • United States
    • U.S. District Court — Southern District of California
    • July 15, 1944
    ...National Tool Co., 6 Cir., 136 F.2d 339; Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 64 S.Ct. 268; B. B. Chemical Co. v. Ellis, 314 U.S. 495, 62 S.Ct. 406, 86 L.Ed. 367; Carbice Corp. v. American Patents Corp., 283 U.S. 27, 33, 51 S.Ct. 334, 75 L. Ed. 819; Leitch Mfg. Co. v. Barb......
  • Libbey-Owens-Ford Glass Co. v. Sylvania Indust. Corp.
    • United States
    • U.S. Court of Appeals — Second Circuit
    • June 3, 1946
    ...S.Ct. 1055, 88 L.Ed. 1572. 1 Morton Salt Co. v. Suppiger Co., 314 U.S. 488, 489, 62 S.Ct. 402, 86 L.Ed. 363; B. B. Chemical Co. v. Ellis, 314 U.S. 495, 62 S.Ct. 406, 86 L.Ed. 367; Reeves v. Beardall, 316 U.S. 283, 62 S. Ct. 1085, 86 L.Ed. 1478; Sola Electric Co. v. Jefferson Electric Co., 3......
  • United States v. Line Materials Co
    • United States
    • U.S. Supreme Court
    • March 8, 1948
    ... ... As we stated in B. B. Chemical Co. v. Ellis, 314 U.S. 495, ... Page 317 ... 498, 62 S.Ct. 406, 408, 86 L.Ed. 367, 'The patent monopoly is not enlarged by reason of the fact ... ...
  • Ansul Company v. Uniroyal, Inc.
    • United States
    • U.S. District Court — Southern District of New York
    • October 31, 1969
    ...enforceability of his patent by correcting a misuse after commencement of an action for infringement, B. B. Chemical Co. v. Ellis, 314 U.S. 495, 498, 62 S.Ct. 406, 86 L.Ed. 367 (1941); Preformed Line Products Co. v. Fanner Mfg. Co., supra, 328 F.2d p. 278; Printing Plate Supply Co. v. Cresc......
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9 books & journal articles
  • Historical Development of the Misuse Doctrine
    • United States
    • ABA Antitrust Library Intellectual Property Misuse: Licensing and Litigation. Second Edition
    • December 6, 2020
    ...not relevant to an action for direct infringement: 39. See id . at 463. 40. See id. at 461. 41. 117 F.2d 829 (1st Cir. 1941), aff’d , 314 U.S. 495 (1942). 42. Id . at 836. 43. 53 F.2d 641 (D. Conn. 1931). 44. Id . at 642. [ Carbice ] as I read it, has no bearing upon the right of an owner o......
  • Chapter §19.04 Unenforceability
    • United States
    • Full Court Press Mueller on Patent Law Volume II: Patent Enforcement Title CHAPTER 19 Defenses to Patent Infringement
    • Invalid date
    ...that the consequences of the misuse of the patent have been dissipated. Morton Salt, 314 U.S. at 493 (citing cf. B. B. Chem. Co. v. Ellis, 314 U.S. 495 (1942)).[720] Morton Salt, 314 U.S. 492. See generally 6–19 Donald S. Chisum, Chisum on Patents §19.04[4] (2008) ("Purging and Dissipation ......
  • Remedies
    • United States
    • ABA General Library ANDA litigation: strategies and tactics for pharmaceutical patent litigators. Second edition
    • June 23, 2016
    ...making, using, or selling products not within the reach of the monopoly granted by the Government”). 211. See B.A.B. Chem. Co. v. Ellis, 314 U.S. 495, 498 (1942). 212. Novo Nordisk v. Caraco Pharms., 649 F. Supp. 2d 661 (E.D. Mich. 2009); Astra Aktiebolag v. Kremers Urban Dev. Co., 61 U.S.P......
  • The Misuse Doctrine-Law and Policy
    • United States
    • ABA Antitrust Library Intellectual Property Misuse: Licensing and Litigation. Second Edition
    • December 6, 2020
    ...U.S. 488 (1942), overruled in part on other grounds by Ill. Tool Works v. Independent Ink, 547 U.S. 28 (2006) and B.B. Chem. Co. v. Ellis, 314 U.S. 495 (1942). 26. Morton Salt , 314 U.S. at 490. 27. Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 667-68 (1944). In Mercoid I , a......
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