Ensten v. Rich-Sampliner Co.

• Decision Date: 05 April 1926
• Docket Number: No. 1704.,1704.
• Citation: 13 F.2d 132
• Parties: ENSTEN v. RICH-SAMPLINER CO. et al.
• Court: U.S. District Court — Northern District of Ohio

13 F.2d 132 (1926)

ENSTEN v. RICH-SAMPLINER CO. et al.

No. 1704.

District Court, N. D. Ohio, E. D.

April 5, 1926.

Harold Elno Smith, of Cleveland, Ohio, for plaintiff.

Albert Lynn Lawrence, of Clevland, Ohio, for defendants.

WESTENHAVER, District Judge.

This suit is based on United States letters patent 1,303,080, issued August 12, 1919, to Louis H. Ensten. Claims 1, 3, 4, and 5 are declared on. This is the same patent as was involved in equity case 573, Ensten v. Rich-Sampliner Co. In that suit it was held that claims 1, 3, 4, and 5 were valid, and that claim 2 was invalid, and on May 24, 1922, an interlocutory decree was entered, awarding a preliminary injunction and ordering an accounting of profits and damages on the claims held valid, and denied as to claim 2, held invalid. An appeal was taken by defendant, and none by plaintiff, resulting in an affirmance in all respects of the decree of the District Court, June 30, 1923. An application of appellant for a rehearing was denied October 4, 1923. See (C. C. A.) 291 F. 1003. The present suit asserts a right to recover for an infringement alleged in the bill not to be within the issues heard and decided in this prior litigation.

Defendants move to dismiss the bill on the ground that the patentee has unreasonably neglected and delayed to file his disclaimer as to claim 2, held invalid because too broad and including more than that of which he, the patentee, was the original or first inventor or discoverer. A disclaimer was not filed until April 30, 1924. Upon an intimation from the court that this motion might present an issue of fact to be decided upon evidence, the parties have stipulated the facts, and have submitted the questions arising on the motion for final decision. The facts so stipulated consist of the full record in equity case 573, including Ensten's answers to interrogatories filed February 2, 1925, agreed statement of facts filed April 24, 1925, and a certified copy of his disclaimer as to claim 2, filed in the Patent Office April 30, 1924, and filed herein June 30, 1925. As stated in substance in plaintiff's brief filed February 20, 1926, this presents the questions of law and fact to be determined, as if the motion to dismiss were in fact an answer, and this specific issue had been called up for hearing separately, under equity rule 26. Both parties express a desire to have these questions decided without regard to forms of procedure.

The controlling questions of law involve the force and effect of sections 4917 and 4922, R. S. (Comp. St. §§ 9462, 9468). The first section provides in substance that whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, he may be permitted to make disclaimer of such parts of the thing patented as he shall not choose to claim or hold by virtue of his patent. This disclaimer may be filed, not only by the patentee, but by any one having an interest in the patent. The other section permits the patentee to maintain a suit on his patent, notwithstanding the fact that he has through inadvertence, accident, or mistake, and without any willful default or intention to mislead the public, claimed any material or substantial part as an invention of which he was not the original or first inventor. He is deprived, however, of the right to recover costs, unless he has filed a proper disclaimer before the commencement of his suit. This section further provides: "But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer." The dispute here revolves around the provision last quoted.

Much consideration has been given by text-writers and courts to the proper construction and effect of those sections. See Walker, § 209; Robinson, § 644. In the Second circuit, for many years prior to 1909, the practice had been to compel a disclaimer as to all claims held invalid because too broad, before entering a decree for a preliminary injunction restraining infringement of the claims held valid. For a list of cases, see Page Mach. Co. v. Dow, Jones & Co. (2 C. C. A.) 168 F. 703, 94 C. C. A. 209. In this circuit, a similar practice had been declared and enforced in Odell v. Stout, 22 F. 159, opinion by District Judge Sage, concurred in by Mr. Justice Matthews, and in Office Specialty Mfg. Co. v. Globe Co., 65 F. 599, opinion by District Judge Sage. This practice, however, was criticized by Judge Coxe in Brush Elec. Co. v. Elec. Accumulator Co. (C. C.) 47 F. 48; Ballard v. McCluskey (C. C.) 58 F. 880. In Plecker v. Poorman, 147 F. 530, District Judge Thompson, of the Southern district of Ohio, refused to apply it. In the Page Mach. Co. Case, Judge Lacombe states that, while sitting at circuit, he had repeatedly refused to follow this practice, on the express ground that it was grossly inequitable. The basis of this criticism is that an appeal was then allowed only from an order granting or continuing a preliminary injunction in force, whereas the plaintiff had no appeal from an interlocutory decree holding patent claims invalid, and refusing to grant an injunction to restrain infringement of them. It was upon this ground alone that the Second Circuit Court of Appeals in the Page Mach. Co. Case disapproved of the practice, pre-existing in that circuit, requiring the plaintiff, as a condition precedent to an award of a preliminary injunction in his favor, to file first a disclaimer as to claims held invalid. It was considered harsh, inequitable, and unreasonable to require a plaintiff to accept as final an interlocutory decree, and cut off his right of appeal from that part of the decree adverse to him, as a condition to his having any relief. Accordingly the Circuit Court of Appeals in that case refused to instruct the lower court to modify its decree, finding valid and infringed and awarding an injunction as to certain claims, until a disclaimer was filed as to a certain other claim held to be invalid.

There was no intimation in that case that a disclaimer should not be required as a condition precedent to the award of a preliminary injunction, if and whenever it was found and held on appeal that some claims were too broad and therefore invalid. In that situation, the patentee's right of review has not been cut off, but has been preserved and exercised. The practice of the Circuit Court of Appeals of this circuit uniformly has been to require a disclaimer as to claims held invalid because too broad, as a condition precedent to the award of a preliminary injunction against infringement of claims held to be valid. See Morgan Co. v. Alliance Co., 176 F. 100, 100 C. C. A. 30; Herman v. Youngstown, 191 F. 579, 587, 112 C. C. A. 185; Cummer v. Atlas Dryer Co., 193 F. 993, 998, 113 C. C. A. 611; Higgin Mfg. Co. v. Watson (C. C. A.) 263 F. 378. The same practice has been adopted and followed in the Seventh circuit. See Carbonic Co. v. Gilchrist Co., 253 F. 54, 58, 165 C. C. A. 652. In all these cases the lower court had sustained the validity of certain patent claims, and had awarded a preliminary injunction, and, on appeal by the defendant, the holding was that some claims only were valid and others were invalid. The instruction to the lower court was to grant a preliminary injunction restraining infringement of the valid claims only upon condition that the plaintiff produce evidence that a disclaimer had already been filed as to the invalid claims. In some instances the time given was 30, and in others 60, days within which to make such disclaimer and furnish proof. In Herman v. Youngstown, the Page Mach. Co. Case is cited as one of the authorities supporting the order made. The affirmance without criticism or modification of the decree of the District Court in equity case 573, is an implied approval of the practice adopted in the Page Mach. Co. Case. Thus far no inconsistency is perceived in the decisions of the several courts.

The controlling question then is wheththe patentee, Louis H. Ensten, has unreasonably neglected or delayed to make disclaimer as to claim 2. The authorities reviewed hold no more than that he is not required to make this disclaimer in the District Court as a condition precedent to his right to the preliminary injunction restraining infringement of the claims held valid,...