Continental Wire Fence Co. v. Pendergast

• Decision Date: 09 August 1903
• Citation: 126 F. 381
• Parties: CONTINENTAL WIRE FENCE CO. v. PENDERGAST et al.
• Court: U.S. District Court — District of Minnesota

126 F. 381

CONTINENTAL WIRE FENCE CO. v. PENDERGAST et al.

United States Circuit Court, D. Minnesota, Fourth Division.

August 9, 1903

The following is a copy of machine alleged to have been infringed:

(Image Omitted)A. C. Paul, for complainant.

Williamson & Merchant, for defendants.

LOCHRENDistrict Judge(orally).

The Continental Wire Fence Company is the owner of patent No 628,253, issued July 5, 1898, to the defendantMaurice Pendergast and one Whidden, for a wire fence making machine.It is alleged that the defendants infringe certain specified claims of this patent in the machines they have constructed and are operating at Hutchinson, in this state; and the complainant brings the matter before the court on a motion for a preliminary injunction against the defendants.

It is true, as has been held in many cases in the federal courts that an injunction is a harsh remedy, and should not be allowed where the right is doubtful or the wrong uncertain or where there is in a patent case any doubt of the validity of the patent or as to the infringement.And, while there is a presumption of the validity of a patent from the mere issuing of the same by the Patent Office, that is not considered by the courts sufficient to warrant the issuing of an injunction; but they require, in addition, either that the validity of the patent shall have been determined by a final judgment, after an actual trial, where there appears to be no sign of collusion, or that the right of the patentee shall have been admitted by the public, by user for such a length of time as to raise the presumption that the right is not denied or contested.And there should also be like certainty with reference to infringement.

The principal point raised here is whether the circumstances of the case are such as to raise an estoppel against the defendants.Where a defendant is the vendor of the patent whether he is a patentee or a transferee of the patent, if he has himself sold it for a valuable consideration, then from that very fact he is estopped from denying the validity of the patent.It is true that a patent for a machine that is inoperative is void; but with respect to that, the evidence shows that machines have been constructed under this patent by one of the patentees, and the same have been operated, and that such machines, or interests in them, were transferred to two of the parties who formed the complainant corporation, Mr. Hirsch and Mr. Bretchet, together with the patent in suit, and another patent as to the fabric that is constructed or claimed to be constructed by this machine.That transfer was made by defendant Pendergast, of a two-thirds interest in the patent and in these machines, on or about the 29th day of June, 1901.The plaintiff corporation was formed about that time, and the work of operating these machines was carried on under the superintendence of Mr. Pendergast until some time in November or December of that year, when Mr. Pendergast disposed of his remaining interest in the property and patents, and in the corporation which the three had formed by sale of the same to his associates.At the formation of the corporation, Pendergast put in the patents and machines for his one-third share, and the other parties put in amounts of cash which had been agreed upon.When they were transferred to the corporation, it appears that the patent was held by the mother of Pendergast, and two of the machines by his wife, and one by a third person; but they were all, in fact, owned and controlled by Pendergast, who caused them to be transferred to the corporation.The bill of sale of the machines stated that they were made in pursuance of this patent, and that bill of sale from the wife of...