Kryptok Co. v. Stead Lens Co.

• Decision Date: 16 October 1911
• Docket Number: 3,584.
• Citation: 190 F. 767
• Parties: KRYPTOK CO. v. STEAD LENS CO.
• Court: U.S. Court of Appeals — Eighth Circuit

190 F. 767

KRYPTOK CO. v. STEAD LENS CO.

No. 3,584.

United States Court of Appeals, Eighth Circuit.

October 16, 1911

(Syllabus by the Court.)

The granting of a preliminary injunction rests in the discretion of the trial court, not in its arbitrary, whimsical will, but in its sound judicial discretion, informed and guided by the established principles, rules, and practice of equity jurisprudence; and where the court has not departed from them its injunctional orders may not be reversed without clear proof of an abuse of its discretion.

One may not be enjoined from protecting and enforcing his rights by lawful means, unless his acts to that effect are done or threatened unnecessarily, not really for the purpose of protecting his rights, but maliciously to vex, annoy, and injure another.

It is a good defense to an application for an injunction that the wrong and injury likely to be inflicted upon the opponent of the application by its issue will probably be greater than that which the applicant is likely to suffer from its denial.

The owner of a patent cannot recover in a suit against a manufacturer of an infringing article which the latter sells to retailers all the relief to which he is entitled in suits against the latter and a suit or a decree for an injunction gains, profits and damages against the manufacturer is no bar to suits for infringement against those who purchase from him and use or sell the infringing article.

The owner of patents sued a manufacturer for infringement on June 11, 1909, closed its evidence in chief on April 18, 1910 threatened to bring suits against four retailers who purchased the infringing article from the defendant in October, 1910, brought one such suit in November, 1910 notified the manufacturer's customers that the article they bought of it infringed, and threatened to sue them if they did not stop selling the article.

Held these facts furnished no just ground to enjoin the owner of the patent from prosecuting the suit against the retailer he had already commenced or from commencing others of like character.

John H. Atwood (Edward D. Ellison, on the brief), for appellant.

Wash Adams (Theoph L. Carns, on the brief), for appellee.

Before SANBORN, Circuit Judge, and MARSHALL and WILLIAM H. MUNGER, District Judges.

SANBORN Circuit Judge.

On June 11, 1909, Kryptok Company, a corporation, exhibited a bill in the court below at Kansas City, in the state of Missouri, against Stead Lens Company, another corporation, for infringement of letters patent Nos. 637,444 and 876,933, on improvements in bifocal lenses, and prayed for an injunction and an accounting of gains and profits and for damages. On September 9, 1909, the Stead Company answered, and denied the validity of the patents and its alleged infringement of them. On April 19, 1910, Kryptok Company closed its evidence in chief, and any delay thereafter in the proceedings in the case seems to have been attributable to the Stead Company. That company was a manufacturer of bifocal lenses alleged to infringe the patents, and Haussman & Co., a corporation of Pennsylvania, was one of their customers, that bought the lenses of the Stead Company at wholesale and sold them at retail. In November, 1910, about 17 months after it instituted its suit against the Stead Company, and about 7 months after it closed its evidence in chief in that suit, Kryptok Company brought a suit, in Philadelphia, against Haussman & Co. for infringement of the patents. Thereupon the Stead Company filed a petition and affidavits in the suit in Kansas City, and prayed that the Kryptok Company be enjoined from prosecuting its suit against Haussman & Co., and from beginning any other suits against others who were purchasing bifocal lenses of the Stead Company; and upon this petition, these affidavits, and counteraffidavits presented by Kryptok Company, the court below entered an order whereby it enjoined Kryptok Company from proceeding farther with its suit against Haussman & Co. and from commencing any suits for infringement of its patents against any of the purchasers of bifocal lenses of Stead Company until the final decree should be rendered in the suit of the Kryptok Company against the Stead Company. From this order the Kryptok Company has appealed to this court.

The grant of a preliminary injunction rests in the discretion of the trial court, not in its arbitrary, whimsical will, but in its sound judicial discretion, informed and guided by the established principles, rules, and practice of equity jurisprudence; and where the court has not departed from them its injunctional orders may not be reversed without clear proof of an abuse of its discretion.

Established principles of equity jurisprudence are (1) that one may not be enjoined from doing lawful acts to protect and enforce his rights of property or of person, unless his acts to that effect are clearly shown to be done unnecessarily, not for the purpose of preserving and enforcing his rights, but maliciously to vex, annoy, and injure another; and (2) that where the injury to the applicant if the preliminary injunction is refused will probably be greater than the injury to the opponent if it is granted it should be issued while if the contrary is the probable result the application for it should be denied. Russell v. Farley, 105 U.S. 433, 438, 26 L.Ed. 1060; Shubert v. Woodward, 92 C.C.A. 509, 522, 167 F. 47, 60; Blount v. Societe...