Mills v. Industry Novelty Co.

• Decision Date: 24 January 1916
• Docket Number: 551.
• Citation: 230 F. 463
• Parties: MILLS v. INDUSTRY NOVELTY CO. et al.
• Court: U.S. District Court — Northern District of Illinois

230 F. 463

MILLS v. INDUSTRY NOVELTY CO. et al.

No. 551.

United States District Court, N.D. Illinois, Eastern Division.

January 24, 1916

Plaintiff in this case asks for an injunction to restrain the defendants from infringing letters patent No. 1,027,749. The object of the invention, as stated in the letters patent 'is to provide a construction of annunciator to co-operate with a delivery device for checks, or the like under the control of the operator, and cause operation of the delivery device to display the amount to be paid, or value denoted on or by the check. ' The bill contains the usual allegations.

Paragraph 10 of the answer is as follows: 'Defendants deny that the alleged invention set forth in said letters patent is a useful invention; but, on the contrary, defendants aver that the only use to which said alleged invention has ever been applied is an integral part of certain machines of chance which, with the knowledge and connivance of plaintiff, were sold or used or let for hire or on shares to be used solely for gambling purposes, and that the use of all such machines in which said alleged invention has been embodied is against pubic policy and good morals, and is in violation of the laws of the United States and of the several states thereof; that plaintiff is the president of the Mills Novelty Company (a corporation) of Chicago, Ill., and for and in behalf of said company holds the said letters patent as trustee, the equitable title of said letters patent being in the Mills Novelty Company, and that the only way in which the plaintiff has practiced the alleged invention is by licensing said Mills Novelty Company to embody the same as an integral part of such machines of chance designed and used solely for gambling purposes; that plaintiff in this proceeding merely stands for and represents said Mills Novelty Company; that the purpose of this litigation is to maintain in said Mills Novelty Company the exclusive right to manufacture and control gambling machines embodying the said alleged invention, and that the conduct of said plaintiff in and with respect to said alleged invention is and at all times has been solely that of licensing and encouraging the use of said alleged invention in machines of chance, designed for and used and susceptible of use solely for gambling purposes, and is such that the plaintiff has no right or standing in a court of equity, and no right to demand the relief prayed for in his bill of complaint.'

Plaintiff moves to strike from the record this paragraph of the answer. As a counter motion the defendant seeks to amend the answer by inserting a paragraph numbered 10a, as follows 'Defendants further aver that the only way in which defendants have ever practiced their alleged infringement of the pretended invention of said patent No. 1,027,749 is as an integral part of certain machines of chance made, sold, and used, with plaintiff's knowledge, solely for gambling purposes and incapable of any other use; that the profits if any, derived by defendants from the alleged infringement complained of are profits made in violation of public policy and good morals, and are of such a character that plaintiff can have no right to recover the same; that as defendants' alleged infringement has consisted solely in the practice of the alleged invention in connection with such gambling machines, a court of equity should not recognize any right (exclusive or otherwise) in plaintiff to manufacture, sell, or use such gambling machines, and defendants therefore aver that their alleged infringement has not inflicted, nor will their continuance of the alleged infringement inflict, upon ...