National Paint Removing Co. of Washington v. Cochran

• Decision Date: 10 March 1923
• Docket Number: 313.
• Citation: 287 F. 376
• Parties: NATIONAL PAINT REMOVING CO. OF WASHINGTON v. COCHRAN et al.
• Court: U.S. District Court — Western District of Washington

287 F. 376

NATIONAL PAINT REMOVING CO. OF WASHINGTON v. COCHRAN et al.

No. 313.

United States District Court, W.D. Washington, Northern Division.

March 10, 1923

Roberts & Skeel, of Seattle, Wash., for plaintiff.

Moore &amp Harroun, of Seattle, Wash., for defendants.

CUSHMAN District Judge.

Plaintiff sues for infringement of patent No. 1,355,074, process for removing paint and other surface finish. Plaintiff alleges it acquired ownership from the patentee of the patent for the state of Washington, through a number of mesne transfers, and now asks a temporary injunction. The defendant has not answered, but has moved to dismiss the bill; one of the grounds of the motion being that the bill does not show title or interest in the plaintiff such as to enable it to maintain the suit.

A number of affidavits were filed and oral testimony was taken for and in opposition to the motion for an injunction. Upon the hearing it was shown that suits for infringement of the patent had been brought in Utah, Texas, California, and Louisiana; that after the suit was brought in Utah, asking an injunction, the alleged infringer abandoned the process, and decree went for complainant; that after the suit was brought in Texas, also praying an injunction, the defendants confessed infringement, and a decree was rendered against them without contest; that Maynard, the now sole defendant in the present suit, 'opened up a paint removing plant in New Orleans, La., and conducted the same using the complainant's patented process, and thereupon suit was brought against him in the United States District Court at New Orleans, and injunction sought, and thereafter said Harry L. Maynard abandoned the enterprise and left the jurisdiction'; that after the suit was brought in California such proceedings were had that the defendants answered, and thereafter upon the trial the plaintiff's complaint was sustained, all of the claims held valid and infringed by the defendant, and injunction against the defendant was granted.

'When there has been a prior adjudication in another court, in which the validity of a patent has been fully contested and sustained, the court will, upon a motion for a preliminary injunction, consider the validity of the patent as prima facie established. Van Hook v. Wood (C.C. 1844) Fed Cas. No. 16,855; Goodyear v. Honsinger (C.C. 1867) Fed. Cas. No. 5,572; Hitchcock v. Shoninger Melodean Co. (C.C. 1875) Fed. Cas. No. 6,537; American Middlings Purifier Co. v. Christian (C.C. 1877) Fed Cas. No. 307; American Bell Tel. Co. v. National Improved Tel. Co. (C.C. 1886) 27 F. 663; Edison Electric Light Co. v. Citizens' Electric Light, Heat & Power Co. (C.C. 1894) 64 F. 491. ' Section 9467, Comp. Stats. 1916, note 44.

'Judgments and decrees entered by consent, pursuant to a compromise between the parties in patent cases, do not establish the validity of patents involved. Wilson v. Consolidated Store-Service Co. (1898) 88 F. 286, 31 C.C.A. 533 (reversing order Consolidated Store Service Co. v. Wilson (C.C. 1897) 83 F. 201); Bowers Dredging Co. v. New York Dredging Co. (C.C. 1896) 77 F. 980; National Enameling Co. v. New England Enameling Co. (C.C. 1903) 123 F. 436; Earll v. Rochester S. & E.R. Co. (C.C. 1907) 157 F. 241; New York Button Works v. Crescent Button Co. (C.C. 1910) 185 F. 820. A decree for plaintiff in a suit founded on a patent, entered without objection and without a hearing before the court by reason of an abandonment of the defense, is not sufficient ground upon which to grant a preliminary injunction in a subsequent suit in another district and against other parties, founded on the same patent. Hayes v. Leton (C.C. 1881) 5 F. 521; Societe Anonyme du Filtre Chamberland Systeme Pasteur v. Allen (C.C. 1897) 84 F. 812 (order affirmed (1898) 90 F. 815, 33 C.C.A. 282); American Electrical Novelty Co. v. Newgold (C.C. 1900) 99 F. 567; Western Electric Co. v. Anthracite Telephone Co. (C.C. 1902) 113 F. 834; Diamond Match Co. v. Union Match Co. (C.C. 1904) 129 F. 602. ' Section 9467, Comp. Stats. 1916, note 50.

The conduct of Maynard, now sole defendant herein, in abandoning his alleged infringing enterprise in Louisiana and leaving that jurisdiction, was virtually an abandonment of his defense to that suit and an election to fight the patent in other fields. This conduct on his part was sufficient to place upon him the burden of overcoming the prima facie validity of the patent established as against him, by his conduct amounting to an admission, upon principles of estoppel.

This leaves for consideration the question of the sufficiency of the evidence of plaintiff's ownership of the patent and the further question of defendant's infringement. Before considering the question of infringement, it is first necessary to determine whether plaintiff has proven ownership. The original assignment to plaintiff from George C. Thompson and the original assignment to George C. Thompson from the National Auto Paint Remover Company, described as a common-law trust composed of W. T. Jackson, John T. Shepherd, and Mrs. Mabel Shellman, are in evidence.

The patentee plaintiff in the California case, as recited in the complaint, the Universal Paint Remover & Motor Cleaning Company, described as a common-law trust, is not shown to be in any way in privity with the plaintiff in the present suit; nor is the defendant herein shown to have been in any way in privity with the defendant in that suit; nor is the plaintiff shown to be in privity with the plaintiff in the Louisiana suit. Therefore plaintiff's title in the present case can in no way rest upon any principle of estoppel, or res adjudicata, but must rest upon such evidence as has been produced of the assignments through which the National Auto Paint Remover Company traces its title from the patentee. The only evidence of these assignments offered is found in an abstract under the certificate of the acting Commissioner of Patents. This certificate reads:

'This is to certify that the annexed is a true copy from the digest of this office of all assignments, agreements, licenses, powers of attorney, and other instruments of writing, found of record up to and including December 19, 1921, that may affect letters patent granted to David P. Cleveland, Dallas, Tex., assignor to Universal Paint Remover & Motor Cleaning Company, Dallas, Tex., a common-law company having as its trustees Ed Wilkerson, J. A. Bergfeld, and David P. Cleveland. Patent No. 1,355,074. Dated October 5, 1920. ' Process of removing surface finish."

This digest does not set out anything which purports to be a copy of any of the assignments, but only contains a synopsis of the contents of each assignment, recited as of record in the office of the Commissioner, and resembles an ordinary abstract of real estate title. This digest indicates, among others, the recording of assignments from the inventor, David P. Cleveland, to the Universal Paint Remover & Motor Cleaning Company (a common-law company having as its trustees Ed Wilkerson, J. A. Bergfeld, and David P. Cleveland), Dallas Texas; from the Universal Paint Remover & Motor Cleaning Company (a trust estate), Ed Wilkerson, J. A. Bergfeld, David P. Cleveland, trustees, to William T. Jackson, J. T. Shepherd, John M. Spellman, all of Dallas county, Texas; from John M. Spellman to Mabel Spellman; from Ed Wilkerson (a trustee of the Universal Paint Remover & Motor Cleaning Company, a trust estate), to J. A. Bergfeld (a trustee of the Universal Paint Remover & Motor Cleaning Company, a trust estate); and...