Keystone Driller Co v. General Excavator Co Keystone Driller Co v. Osgood Co
| Decision Date | 04 December 1933 |
| Docket Number | 37,35,36,Nos. 34,s. 34 |
| Citation | 78 L.Ed. 293,54 S.Ct. 146,19 USPQ 228,290 U.S. 240 |
| Parties | KEYSTONE DRILLER CO. v. GENERAL EXCAVATOR CO. (two cases). KEYSTONE DRILLER CO. v. OSGOOD CO. (two cases) |
| Court | U.S. Supreme Court |
Messrs. Wm. H. Boyd and F. O. Richey, both of Cleveland, Ohio, for petitioner.
Messrs. Edwin P. Corbett, of Columbus, Ohio, and Lloyd T. Williams, of Toledo, Ohio, for respondents.
The question presented is whether the Circuit Court of Appeals rightly applied the maxim, He who comes into equity must come with clean hands.
Petitioner owns five patents which may be conveniently identified as the Clutter patent and the four Downie patents.1 They all cover devices constituting parts of a ditching machine operated on the principle of a mechannical hoe or mattock. The Clutter patent is basic and the Downie patents are for claimed improvements.
Prior to the commencement of these suits, the petitioner brought a suit in the Eastern Division of the Northern Ohio District against the Byers Machine Company for infringement of the first three patents. January 31, 1929, the court held them valid and infringed, and granted injunction. 4 F.Supp. 159. Defendant appealed.
February 9, 1929, petitioner brought these two suits in the Western Division of the same District, one against the General Excavator Company and the other against the Osgood Company. In each, plaintiff alleged infringement by defendant of the same three patents. Plaintiff immediately applied for temporary injunctions to restrain further infringement. The applications were based upon the complaints, supporting affidavits and the pleadings, opinion and decree in the Byers Case. The court filed a memorandum in which it is stated that, while plaintiff had sustained its patents as against the defenses of an alleged impecunious infringer, defendants were in good faith pressing new defenses that seemed to have merit enough to prevent the application of the rule permitting a temporary injunction merely because of the prior adjudication. The court denied the injunctions, but upon condition that defendants give bonds to pay the profits or damages that might be decreed against them. In August, 1929, plaintiff filed supplemental complaints alleging infringement of the other two patents. November 5, 1930, the Circuit Court of Appeals affirmed the decree in the Byers Case. 44 F.(2d) 283. Then these cases were consolidated for trial. Plaintiff withdrew its claim that the Osgood Company infringed the last patent. The district court held the Clutter patent and the first and fourth Downie patents valid and infringed, the second Downie not infringed, and the third Downie patent invalid.
At the trial of these cases, defendants introduced evidence that plaintiff did not come into court with clean hands. It was sufficient to sustain findings of fact made by both courts, in substance as follows: June 27, 1921, Downie filed the application on which was issued his first patent. In the preceding winter he had learned of a possible prior use at Joplin, Mo., by Bernard R. Clutter. The latter is a brother of the patentee of the Clutter patent and had then recently been in the service of plaintiff as demonstrator in the use of ditching machinery. Downie made the application and assigned his rights to plaintiff, of which he was secretary and general manager. The patent issued, and plaintiff, contemplating the bringing of an infringement suit thereon against the Byers Machine Company, was advised that the prior use at Joplin was sufficient to cast doubt upon the validity of the patent. Downie then went to Bernard R. Clutter and for valuable considerations—which are described in the opinion of the Circuit Court of Appeals, 62 F.(2d) 48, and need not be detailed here obtained from Clutter an affidavit prepared by Downie to the effect that Clutter's use of the device was an abandoned experiment, and also obtained Clutter's agreement to assign plaintiff any rights he might have as inventor, to keep secret the details of the prior use, and, so far as he was able, to suppress the evidence. No proof of such use was produced at the trial of that case. The defendants in these suits took Clutter's deposition early in 1930. He did not then disclose his arrangement with plaintiff for concealment of evidence in the Byers Case. Their suspicions being aroused by his testimony, defendants in the latter part of that year again examined him and secured facts upon which they were able to compel the plaintiff to furnish the details of the corrupt transaction.
The district court characterized Downie's conduct as highly reprehensible, and found that his purpose was to keep Clutter silent. But it also found that the plaintiff did nothing to suppress evidence in these cases. It expressed the opinion that matters pertaining to the motion for preliminary injunction had no bearing upon the merits, and that plaintiff's use of the Byers decree was not a fraud upon the court. And it ruled the maxim did not apply. The Circuit Court of Appeals held the contrary, reversed the decrees of the District Court, and remanded the cases, with instructions to dismiss the complaints without prejudice. 62 F.(2d) 48; 64 F.(2d) 39.
Plaintiff contends that the maxim does not apply unless the wrongful conduct is directly connected with and material to the matter in litigation, and that, where more than one cause is joined in a bill and plaintiff is shown to have come with unclean hands in respect of only one of them, the others will not be dismissed.
The meaning and proper application of the maxim are to be considered. As authoritatively expounded, the words and the reasons upon which it rests extend to the party seeking relief in equity. Story's Equity Jurisprudence (14th Ed.) § 98. The governing principle is 'that whenever a party who, as actor, seeks to set the judicial machinery in motion and obtain some remedy, has violated...
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