Mellor v. Carroll
| Decision Date | 22 December 1905 |
| Docket Number | 2,159. |
| Parties | MELLOR v. CARROLL et al. |
| Court | U.S. District Court — District of Massachusetts |
Howson & Howson and Roberts & Mitchell, for complainant.
George N. Goddard, for defendants.
This is a bill in equity to restrain the infringement of letters patent No. 475,929, issued to Carroll, one of the defendants. The case is before the court on motion for a preliminary injunction.
The complainant is the assignee of Carroll, and Carroll is therefore estopped to deny the validity of the patent. The complainant alleges that the other defendants are so engaged with Carroll in the infringing manufacture that they are included in his estoppel. The defendants Pharaoh and C. E Forbes 'were associated' with Carroll. As the result of this association, Carroll and Pharaoh, with I. B. Forbes organized the defendant corporation, of which they were sole stockholders and sole directors; Carroll being president. The defendant Charles E. Forbes succeeded I. B. Forbes as stockholder and director. The directors voted that the corporation buy of Carroll, Pharaoh, and C. E. Forbes (i.e of themselves) the inventions and appliances, goodwill and trade-marks, secret process and recipe, correspondence merchandise, machinery, tools, working process, etc., which were concerned and concerned only with the alleged infringing manufacture. For this conveyance the three directors were paid by the issue of stock, and by an additional payment to Carroll in cash. Of this corporation Carroll has been president, and is now director.
It is not easy to state precisely the rule by which is tested the estoppel of those, not themselves assignors, who are associated with the assignor of a patent in a manufacture alleged to infringe. The assignor is estopped to deny the validity of the patent by reason of his grant, but this reason does not apply to those who have become associated with him in business since the grant. If they had no connection with him, they could not be prevented from showing that the patent is invalid, in a suit for their alleged infringement of it, and this would be equally true, whether they knew of the assignment or were ignorant of it. Upon what principle can A. be restrained from making an article because B. has estopped himself to contest that it is patented? If A is merely an employe of B., he may be restrained as such employe. But the cases extend the privity of estoppel beyond the case of an employe. Continental...
To continue reading
Request your trial
-
Intel Corp. v. U.S. Intern. Trade Com'n, Nos. 89-1459
..."knowledge and assistance" to conduct infringement. Shamrock Technologies, 903 F.2d at 794, 14 USPQ2d at 1733 (quoting Mellor v. Carroll, 141 F. 992, 994 (C.C.D.Mass.1905) (privity between assignors and others who availed themselves of assignor's knowledge and assistance to conduct infringe......
-
Milwaukee Elec. Tool Corp. v. Snap-On Inc.
...clearly availed itself of [the inventor's] 'knowledge and assistance' to conduct infringement." Id. (quoting Mellor v. Carroll , 141 F. 992, 994 (C.C.D. Mass. 1905) ); see also Stubnitz–Greene Spring Corp. v. Fort Pitt Bedding Co. , 110 F.2d 192, 195 (6th Cir. 1940) (privity between assigno......
-
Eskimo Pie Corporation v. National Ice Cream Co.
...the lack of adjudication or acquiescence. Time Telegraph Co. v. Himmer (C. C.) 19 F. 322; Daniel v. Miller (C. C.) 81 F. 1000; Mellor v. Carroll (C. C.) 141 F. 992; Northern Insulating Co. v. Union Fibre Co. (D. C.) 199 F. 793; Continental Wire Fence Co. v. Pendergast (C. C.) 126 F. The evi......
-
National Cash Register Co. v. Remington Arms Co., Inc.
...v. Himmer (C.C.) 19 F. 322; Daniel v. Miller (C.C.) 81 F. 1000; Continental Wire Fence Co. v. Pendergast (C.C.) 126 F. 381; Mellor v. Carroll (C.C.) 141 F. 992; Northern Insulating Co. v. Union Fibre Co. 199 F. 793. The plaintiff here relies upon estoppel. The assignor of a patent is estopp......