Morton Salt Co v. Suppiger Co

Citation62 S.Ct. 402,86 L.Ed. 363,314 U.S. 488
Decision Date05 January 1942
Docket NumberNo. 49,49
PartiesMORTON SALT CO. v. G. S. SUPPIGER CO
CourtUnited States Supreme Court

Mr. Clarence E. Mehlhope, of Chicago, Ill., for petitioner.

Messrs. Estill E. Ezell and Lawrence C. Kingsland, both of St. Louis, Mo., for respondent.

Mr. Chief Justice STONE delivered the opinion of the Court.

Respondent brought this suit in the district court for an injunction and an accounting for infringement of its Patent No. 2,060,645, of November 10, 1936, on a machine for depositing salt tablets, a device said to be useful in the canning industry for adding predetermined amounts of salt in tablet form to the contents of the cans.

Upon petitioner's motion, pursuant to Rule 56 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, the trial court, without passing on the issues of validity and infringement, granted summary judgment dismissing the complaint. It took the ground that respondent was making use of the patent to restrain the sale of salt tablets in competition with its own sale of unpatented tablets, by requiring licensees to use with the patented machines only tablets sold by respondent. The Court of Appeals for the Seventh Circuit reversed, 117 F.2d 968, because it thought that respondent's use of the patent was not shown to violate § 3 of the Clayton Act, 15 U.S.C. § 14, 15 U.S.C.A. § 14, as it did not appear that the use of its patent substantially lessened competition or tended to create a monopoly in salt tablets. We granted certiorari 313 U.S. 555, 61 S.Ct. 1098, 85 L.Ed. 1517, because of the public importance of the question presented and of an alleged conflict of the decision below with B. B. Chemical Co. v. Ellis, 1 Cir., 117 F.2d 829, and with the principles underlying the decisions in Carbice Corp. v. American Patents Development Corp., 283 U.S. 27, 51 S.Ct. 334, 75 L.Ed. 819, and Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 58 S.Ct. 288, 82 L.Ed. 371.

The Clayton Act authorizes those injured by violations tending to monopoly to maintain suit for treble damages and for an injunction in appropriate cases. 15 U.S.C. §§ 1, 2, 14, 15, 26, 15 U.S.C.A. §§ 1, 2, 14, 15, 26. But the present suit is for infringement of a patent. The question we must decide is not necessarily whether respondent has violated the Clayton Act, but whether a court of equity will lend its aid to protect the patent monopoly when respondent is using it as the effective means of restraining competition with its sale of an unpatented article.

Both respondent's wholly owned subsidiary and the petitioner manufacture and sell salt tablets used and useful in the canning trade. The tablets have a particular configuration rendering them capable of convenient use in respondent's patented machines. Petitioner makes and leases to canners unpatented salt deposition machines charged to infringe respondent's patent. For reasons we indicate later, nothing turns on the fact that petitioner also competes with respondent in the sale of the tablets, and we may assume for purposes of this case that petitioner is doing no more than making and leasing the alleged infringing machines. The principal business of respondent's subsidiary, from which its profits are derived, is the sale of salt tablets. In connection with this business, and as an adjunct to it, respondent leases its patented machines to commercial canners, some two hundred in all, under licenses to use the machines upon condition and with the agreement of the licensees that only the subsidiary's salt tablets be used with the leased machines.

It thus appears that respondent is making use of its patent monopoly to restrain competition in the marketing of unpatented articles, salt tablets, for use with the patented machines, and is aiding in the creation of a limited monopoly in the tablets not within that granted by the patent. A patent operates to create and grant to the patentee an exclusive right to make, use and vend the particular device described and claimed in the patent. But a patent affords no immunity for a monopoly not within the grant. Interstate Circuit v. United States, 306 U.S. 208, 228, 230, 59 S.Ct. 467, 475, 476, 83 L.Ed. 610; Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 456, 60 S.Ct. 618, 625, 84 L.Ed. 852, and the use of it to suppress competition in the sale of an unpatented article may deprive the patentee of the aid of a court of equity to restrain an alleged infringement by one who is a competitor. It is the established rule that a patentee who has granted a license on condition that the patented invention be used by the licensee only with unpatented materials furnished by the licensor, may not restrain as a contributory infringer one who sells to the licensee like materials for like use. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510, 37 S.Ct. 416, 418, 61 L.Ed. 871, L.R.A.1917E, 1187, Ann.Cas.1918A, 959; Carbice Corp. v. American Patents Development Corp., supra; Leitch Mfg. Co. v. Barber Co., supra; cf. United Shoe Machinery Corp. v. United States, 258 U.S. 451, 462, 42 S.Ct. 363, 367, 66 L.Ed. 708; International Business Machines Corp. v. United States, 298 U.S. 131, 140, 56 S.Ct. 701, 705, 80 L.Ed. 1085.

The grant to the inventor of the special privilege of a patent monopoly carries out a public policy adopted by the Constitution and laws of the United States, 'to promote the Progress of Science and useful Arts, by securing for limited Times to * * * Inventors the exclusive Right * * *.' to their 'new and useful' inventions. United States Constitution, Art. I, § 8, cl. 8; 35 U.S.C. § 31, 35 U.S.C.A. § 31. But the public policy which includes inventions within the granted monopoly excludes from it all that is not embraced in the invention. It equally forbids the use of the patent to secure an exclusive right or limited monopoly not granted by the Patent Office and which it is contrary to public policy to grant.

It is a principle of general application that courts, and especially courts of equity, may appropriately withhold their aid where the plaintiff is using the right asserted contrary to the public interest. Virginian R. Co. v. System Federation, 300 U.S. 515, 552, 57 S.Ct. 592, 601, 81 L.Ed. 789; Central Kentucky Natural Gas Co. v. Railroad Commission, 290 U.S. 264, 270, 273, 54 S.Ct. 154, 156, 157, 78 L.Ed. 307; Harrisonville v. U.S. Dickey Clay Mfg. Co., 289 U.S. 334, 337, 338, 53 S.Ct. 602, 603, 77 L.Ed. 1208; Beasley v. Texas & Pacific Railway Co., 191 U.S. 492, 497, 24 S.Ct. 164, 165, 48 L.Ed. 274; Securities & Exchange Comm. v. United States Realty Co., 310 U.S. 434, 455, 60 S.Ct. 1044, 1053, 84 L.Ed. 1293; United States v. Morgan, 307 U.S. 183, 194, 59 S.Ct. 795, 801, 83 L.Ed. 1211. Respondent argues that this doctrine is limited in its application to those cases where the patentee seeks to restrain contributory infringement by the sale to licensees of competing unpatented article, while here respondent seeks to restrain petitioner from a direct infringement, the manufacture and sale of the salt tablet depositor. It is said that the equitable maxim that a party seeking the aid of a court of equity must...

To continue reading

Request your trial
382 cases
  • International Carbonic Eng. Co. v. Natural Carb. Prod.
    • United States
    • U.S. District Court — Southern District of California
    • July 15, 1944
    ...the patent contrary to public policy is well established. As said by the Supreme Court in Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488, at page 492, 62 S.Ct. 402, at page 405, 86 L. Ed. 363: "It is a principle of general application that courts, and especially courts of equity, may a......
  • Libbey-Owens-Ford Glass Co. v. Sylvania Indust. Corp.
    • United States
    • U.S. Court of Appeals — Second Circuit
    • June 3, 1946
    ...Court, having granted certiorari (316 U.S. 652, 62 S.Ct. 946, 86 L.Ed. 1733), reversed and remanded. Citing Morton Salt Co. v. Suppiger, 314 U.S. 488, 489, 62 S.Ct. 402, 86 L.Ed. 363, it held that, because of the price control provision, the license was illegal, as a violation of the anti-t......
  • Video Pipeline v. Buena Vista Home Entertainment
    • United States
    • U.S. District Court — District of New Jersey
    • March 28, 2002
    ...of copyright to control retailer marketing and to control information available to consumers, citing Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 62 S.Ct. 402, 86 L.Ed. 363 (1942), which first recognized a misuse of patent defense. Copyright misuse has been recognized as a defense de......
  • Shapiro v. General Motors Corp.
    • United States
    • U.S. District Court — District of Maryland
    • May 29, 1979
    ...to the public policy which limits the granted monopoly strictly to the terms of the statutory grant, Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 62 S.Ct. 402, 86 L.Ed. 363, the particular form or method by which the monopoly is sought to be extended is immaterial. The first vending ......
  • Request a trial to view additional results
22 books & journal articles
  • Copyright and Trademark Misuse
    • United States
    • ABA Antitrust Library Intellectual Property Misuse: Licensing and Litigation. Second Edition
    • December 6, 2020
    ...misuse doctrine evolved out of a long line of patent misuse cases. 2 The type of conduct 1. Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 492 (1942), overruled in part on other grounds, by Ill. Tool Works v. Independent Ink, 547 U.S. 28 (2006). 2. See id. at 494. 194 Intellectual Prop......
  • Antitrust Analysis Of Intellectual Property Agreements
    • United States
    • ABA Antitrust Library Intellectual Property and Antitrust Handbook. Second Edition
    • December 6, 2015
    ...conform to them.”). 284. See International Salt Co. v. United States, 332 U.S. 392, 395-96 (1947); Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488, 494 (1942). 285. 35 U.S.C. § 271(b). 286. Id. Analysis of Intellectual Property Agreements 107 No patent owner otherwise entitled to relief ......
  • The Misuse Doctrine-Law and Policy
    • United States
    • ABA Antitrust Library Intellectual Property Misuse: Licensing and Litigation. Second Edition
    • December 6, 2020
    ...Development Corp . , 283 U.S. 27 (1931); Leitch Mfg. Co. v. Barber Co . , 302 U.S. 458 (1938); Morton Salt Co. v. G.S. Suppiger Co . , 314 U.S. 488 (1942), overruled in part on other grounds by Ill. Tool Works v. Independent Ink, 547 U.S. 28 (2006) and B.B. Chem. Co. v. Ellis, 314 U.S. 495 ......
  • United States Law and the Proposed Code of Conduct on the Transfer of Technology
    • United States
    • Antitrust Bulletin No. 23-4, December 1978
    • December 1, 1978
    ...is not always co-extensive with antitrust violationbut can be applied in many of the same contexts. See MortonSaltCo.v. G.S. Suppiger Co., 314 U.S. 488(1942). ...
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT