The Diversey Corporation v. Charles Pfizer and Co.

• Decision Date: 10 June 1958
• Docket Number: No. 12155.,12155.
• Citation: 255 F.2d 60
• Parties: THE DIVERSEY CORPORATION, Plaintiff-Appellant, v. CHARLES PFIZER AND CO., Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

255 F.2d 60 (1958)

THE DIVERSEY CORPORATION, Plaintiff-Appellant, v. CHARLES PFIZER AND CO., Inc., Defendant-Appellee.

No. 12155.

United States Court of Appeals Seventh Circuit.

May 9, 1958.

Rehearing Denied June 10, 1958.

Charles J. Merriam, Samuel B. Smith, Ronald J. Adams, Chicago, Ill., for plaintiff-appellant, Merriam, Lorch & Smith, Chicago, Ill., of counsel.

Arthur G. Connolly, Wilmington, Del., W. J. Marshall, Jr., Haight, Lockwood & Simmons, Chicago, Ill., Charles F. Hagan, Brooklyn, N. Y. (Werner H. Hutz, Wilmington, Del., of counsel), for appellee.

Before FINNEGAN and PARKINSON, Circuit Judges, and MERCER, District Judge.

PARKINSON, Circuit Judge.

The plaintiff, an Illinois corporation, hereinafter referred to as Diversey, instituted suit in the District Court for the Northern District of Illinois, Eastern Division, against the defendants Charles Pfizer and Co., Inc., a Delaware corporation, hereinafter referred to as Pfizer, and Dr. Pepper Bottling, Inc., an Illinois corporation, hereinafter referred to as Pepper.

The complaint charged both defendants with infringement in the district where filed of plaintiff's patent No. 2,615,846 and defendant Pfizer with additional infringement elsewhere.

On the day Diversey filed its complaint it also filed a motion, with supporting affidavit of Clarence B. Jones, for leave to take the depositions of Carl E. Lanning, Connie McGrath, Frank W. Wilson and George A. Veeder within twenty days after the commencement of the action.

Twenty-two days after Diversey filed its complaint it filed an amendment dismissing the defendant Pepper.

Pfizer filed its answer in admission and denial and affirmative defenses of non-infringement, misuse and unclean hands. Subsequently, by stipulation of the parties, Pfizer was permitted to file a counterclaim for a declaratory judgment declaring Diversey's Patent No. 2,615,846 invalid, unenforceable and not infringed and seeking to enjoin Diversey from interfering with its sales of sodium gluconate.

Trial was to the court. The District Court entered its findings of fact and conclusions of law. It found and concluded that Diversey came into court with unclean hands; that the patent in suit was invalid over the prior art; that it was invalid due to double patenting; and that the alleged patent had not been infringed by Pfizer but rather had been misused by Diversey. Judgment was entered accordingly. Diversey's complaint was dismissed and Diversey was enjoined from suing or threatening to sue Pfizer or any of its customers or potential customers for infringement, due to sale or use of Pfizer's sodium gluconate or gluconic acid, of Patent No. 2,615,846, the patent in suit, and also Patent No. 2,584,017, the so-called "parent patent". This appeal followed.

The District Court entered judgment, inter alia, dismissing Diversey's complaint because of unclean hands. This portion of the judgment was based on Conclusions of Law Nos. 2 and 3 which were founded upon Findings of Fact Nos. 14, 15, 16, 17 and 18.

The undisputed evidence is that Diversey, acting through its secretary and general counsel, Clarence B. Jones, and its vice-president in charge of sales, Bland B. Button, Jr., purposely contacted George Veeder, owner of Pepper, to induce him to infringe, within the Northern District of Illinois, the patent in suit with Pfizer as a contributory infringer. At the solicitation of Jones and Button, Veeder agreed and made contact by telephone with Pfizer and talked with a Mr. Hill. Veeder told Hill he would like to get all the information he could on the uses of sodium gluconate and that he probably would purchase some from Pfizer. Hill said he would send someone to call on Veeder and, at Veeder's request, sent Carl Lanning, a Pfizer salesman who had solicited Veeder regularly and from whom Veeder had bought citric acid.

The testimony of Veeder and Lanning is in conflict as to whether Pfizer was a contributory factor in the infringement. However, the uncontradicted evidence establishes that Veeder infringed the patent in suit at the specific request and solicitation of Diversey with the understanding that his company was to be joined as a co-defendant in the action to be subsequently instituted by Diversey; that he was to testify as a witness for Diversey; that he was to request Pfizer to assume Pepper's defense; and that if Pfizer refused Pepper was to be dismissed from the suit.

The motion of Diversey, supported by the affidavit of Clarence B. Jones, to take the depositions of Veeder and three other witnesses alleged that the plaintiff had been damaged by the activities of those four persons, one of whom was Veeder, and unless the depositions of those persons could be taken at the earliest possible date, steps would be taken by the defendants to prevent plaintiff from getting information possessed by them.

Diversey attempts to justify its conduct as being an innocent mistake and argues that the use of the plural, defendants, in the motion was simply a typographical error.

The fallacy of this excuse is immediately exposed by the language of the very sentence of which the word "defendants"...