Fretwell v. Gillette Safety Razor Co.

• Decision Date: 02 October 1939
• Docket Number: No. 4506.,4506.
• Citation: 106 F.2d 728
• Parties: FRETWELL v. GILLETTE SAFETY RAZOR CO.
• Court: U.S. Court of Appeals — Fourth Circuit

106 F.2d 728 (1939)

FRETWELL v. GILLETTE SAFETY RAZOR CO.

No. 4506.

Circuit Court of Appeals, Fourth Circuit.

October 2, 1939.

Before PARKER and NORTHCOTT, Circuit Judges, and CHESNUT, District Judge.

Israel H. Perskin, of New York City (George E. Bendall, of Danville, Va., and Herbert J. Jacobi, of New York City, on the brief), for appellant.

Henry R. Ashton, of New York City (E. Walton Brown, of Danville, Va., on the brief), for appellee.

PARKER, Circuit Judge.

This is an appeal by defendant in a suit instituted by a manufacturer of safety razor blades to enjoin defendant, a patentee, from prosecuting an infringement suit against a drug company selling the blades. Defendant asserted a counterclaim to recover damages for alleged breach of contract on the part of plaintiff in appropriating the idea of a locked safety razor disclosed by defendant. The District Court entered a decree enjoining defendant from prosecuting the suit against the drug company and dismissing the counterclaim, and defendant has appealed.

Defendant is the owner of patent No. 1,467,930, covering a locked safety razor, claim 4 of which covers a perforated safety razor blade. In a suit instituted by defendant against plaintiff in the United States District Court for the District of Delaware it was held that this claim was not infringed by blades of plaintiff's manufacture. Fretwell v. Gillette Safety Razor Co., D.C., 6 F.Supp. 818, affirmed, 3 Cir., 78 F.2d 868. Defendant later instituted an infringement suit in the United States District Court for the Western District of Virginia against the Peoples Service Drug Stores, a Virginia corporation, to enjoin the sale of plaintiff's blades; and this suit was thereupon instituted by plaintiff to enjoin the prosecution of that suit. The defense is based upon the admitted fact that the Peoples Service Drug Stores does not purchase the blades alleged to infringe from plaintiff, but from the Peoples Drug Stores, a Maryland corporation, although it is admitted also that the latter corporation purchases from plaintiff and that Peoples Service Drug Stores is a wholly owned subsidiary of that corporation.

We think that the court below was clearly right in granting the injunction. Kessler v. Eldred, 206 U.S. 285, 27 S.Ct. 611, 51 L.Ed. 1065; General Chemical Co. v. Standard Wholesale Phosphate & Acid Works, 4 Cir., 101 F.2d 178; United States Galvanizing & Plating Equipment Corporation v. Hanson-Van Winkle-Munning Co., 4 Cir., 104 F.2d 856. Quite apart from the close relationship existing between the corporation sued by defendant and the corporation actually purchasing from plaintiff, we think it clear that the rule laid down in Kessler v. Eldred, supra, can be invoked by plaintiff to protect its business against suits by defendant charging infringement with respect to blades of plaintiff's manufacture, whether instituted against persons purchasing directly from plaintiff or not. The Delaware suit adjudicated the right of plaintiff to manufacture and sell its blades free of interference by defendant; and it became the duty of defendant, upon the rendition of the decree therein, "to recognize and yield to that right everywhere and always." Infringement suits against retail dealers in the blades who purchase from plaintiff's customers would interfere with that right quite as effectively as suits against the customers themselves, and plaintiff is entitled to have such suits enjoined to protect it in the enjoyment of the right which has been adjudicated.

The argument is made that the rule of Kessler v. Eldred, supra, extends only to the protection of suits against customers and that, since the Peoples Service Drug Stores does not purchase directly from plaintiff, it is not technically a customer of plaintiff and hence does not come within the rule. The determinative consideration in applying the rule, however, is not the fact that the person sued is a customer of plaintiff but that the suit will interfere with a right of plaintiff which has been adjudicated. As we pointed out in General Chemical Co. v. Standard Wholesale Phosphate & Acid Works, supra 101 F.2d 182 the effect of the adjudication of non-infringement in favor of the manufacturer is to estop the patentee from asserting infringement with respect to sale or use of identical articles of his manufacture on the ground that, "having had his day in court on the question as to whether the product of the manufacturer infringes, he should in all subsequent litigation be bound by the judgment rendered against him with respect to that question." Since, therefore, the patentee is estopped to assert infringement with respect to the product of...