Irving-Pitt Mfg. Co. v. Twinlock Co.

• Decision Date: 05 December 1914
• Docket Number: 4-147.
• Citation: 220 F. 325
• Parties: IRVING-PITT MFG. CO. v. TWINLOCK CO. (McMILLAN BOOK Co., Intervener).
• Court: U.S. District Court — Southern District of New York

220 F. 325

IRVING-PITT MFG. CO. v. TWINLOCK CO. (McMILLAN BOOK Co., Intervener).

No. 4-147.

United States District Court, S.D. New York.

December 5, 1914

John C Pennie, of New York City, for complainant.

William W. Dodge, of Washington, D.C., for defendant.

ROSE District Judge.

The complainant is the owner of letters patent No. 778,070 issued December 20, 1904, to William P. Pitt, for improvement in loose-leaf binders. It originally brought suit against the Twinlock Company for alleged infringement of the patent consisting in the selling by defendant of loose-leaf books manufactured by McMillan Book Company. The New York agent of the Twinlock Company (hereinafter for brevity called 'Twinlock') employed competent patent attorneys and also notified the McMillan Book Company (hereinafter referred to as 'McMillan '). The headquarters of the Twinlock were in Cincinnati. Its officers apparently did not care enough for the right to sell the McMillan books to make a fight for the privilege. They accordingly offered to submit to an injunction, provided that it should not be required to account to the complainant or pay any costs. The then parties agreed on the form of the decree, which, as usual, adjudged the patent good and valid and that the Twinlock had infringed, that there should be no accounting for damages and that no costs should be awarded to either party.

Such a decree should have contained a statement that it was entered by consent. Doubtless if it had actually been presented to the judge for signature, he would of his own motion have made such insertion. It is quite common for decrees agreed upon under such circumstances to be submitted, without saying on their face that they are by consent. The court, however, before signing them, should always be careful to require that statement to be inserted. The fact that the parties did not themselves put it in does not, to my mind, show that they had any improper purpose in view. It has never been presented to the court for signature, because on the 23d of May, 1910, McMillan asked for leave to intervene to defend the suit. Over complainant's objection such permission was granted.

When the Mcmillan filed its answer, it charged that the suit as originally brought against the Twinlock was fraudulent and collusive, and the result of a conspiracy between the complainant and the Twinlock to injure the McMillan. Complainant moved that such allegations should be stricken out of the answer as scandalous and impertinent. Judge Noyes, before whom this motion was heard, was not, however, so satisfied of its total irrelevancy as to think it his duty to expunge it; but he distinctly refrained 'from expressing any opinion upon the question whether the allegations, if substantiated, would constitute in themselves a defense to the suit or require its dismissal. ' This order was entered on the 7th of January, 1911. For two years thereafter nothing was done.

The McMillan then gave notice to the complainant that it proposed to take proofs on its behalf. Thereupon the complainant sought to have its case dismissed, setting forth as a reason for so doing that it found that the patent, when issued, had been issued to the Irving-Pitt Manufacturing Company, a partnership, and not to the Irving-Pitt Manufacturing Company, a corporation, which had brought the suit. The copartnership, it is true, had intended to assign all its property to the corporation; but complainant was doubtful whether it could prove that a sufficient assignment of the legal title to the patent had been made. The McMillan opposed the dismissal of the suit, and in order to prevent it stipulated that for the purpose of this case it should be taken as admitted that the title of the complainant was sufficient.

All the proofs having now been taken, McMillan insists that the bill should be dismissed because of what, in its view, was the collusive character of the original suit. There is no sufficient evidence that there was any collusion in its institution, and I do not believe that there was. Courts will not hear a suit to which there are not at least two parties genuinely antagonistic to each other. I think complainant is justified in its claim that when this suit was brought there were two such parties, and that they were still such, even at the time at which the agreement for a consent decree was entered into. A number of months after the intervention of the McMillan, the Twinlock had a disastrous fire. It subsequently sold out the tangible salvage from it, together with its American patents and the good will of its domestic business, to the complainant. No decree against the Twinlock had then been made, and thereafter no decree in favor of the complainant and against the Twinlock could have been properly entered.

But before the complainant acquired any of the property rights of the Twinlock, McMillan had come into the suit. It was then in the position to do either one of two things: It could, as the intervener did in Wood Paper Co. v. Heft, 8 Wall. 333, 19 L.Ed. 379, ask that the case should be dismissed because there were no longer two parties before the court; or it could say: 'Any decree which the complainant may get against the Twinlock will prejudice my interest. It is my goods that complainant says infringe its patent. I am ready to meet that issue, and I want to. This case offers as good an opportunity as any other to do so. I will come in and defend this action on its merit.'

That is the position it did take. It forced the fighting. It resisted complainant's motion to dismiss, and proceeded to take testimony. Having elected to do so, it must abide the result. The cases which it cites to the contrary are not in point. They merely recognize that it had the right to take the first alternative above stated, if it had chosen to do so. Courts of equity require complainants to have clean hands, but they are not criminal courts. They abhor forfeitures. They cannot forfeit complainant's patent, or even its right to prevent the McMillan from infringing it, merely because complainant may have sought to get a decree against Twinlock of which some unfair use might possibly have been made in subsequent litigation with McMillan.

But, as already said, I do not find that complainant's hands were soiled when it came into court, or that they have since acquired anything more than the ordinary grime of litigation. McMillan commented upon the obvious failure of the complainant to press its case with vigor and energy. Such failure might have given the defendant a good reason to move for a dismissal for want of prosecution. It did not see fit to do so. What actually happened may suggest to the court the prudence of scrutinizing complainant's proofs and arguments with something more than ordinary care. It is not perceived that in the present state of the record complainant's tardiness has any other significance. The case must therefore be decided on its merits.

McMillan set up the defense of invalidity and noninfringement. The invention is for an improvement in loose-leaf books provided with a cover and hooks or rings for securing the loose leaves. The inventor was far from the first comer into this general field. Many patents for various forms of such books, or of devices to form a part of them, had preceded his. As under such circumstances is to be expected, the McMillan finds most or all of the separate elements of complainant's combination in the prior art. That, however, is unimportant, if in fact complainant has made a new and useful combination of some of these elements and in doing so has exercised what is (for want of better term) called inventive genius.

The patent says the invention has two objects: (1) To provide means whereby the hooks may be readily opened and closed by simply drawing their free ends apart or pressing them together, so that loose leaves may be readily attached, or removed when desired; and (2) to arrange the several parts of the device in such manner that they may be readily secured to the back of the cover...