Thorpe v. Wm. Filene's Sons Co.

• Decision Date: 07 April 1930
• Docket Number: No. 4265.,4265.
• Citation: 40 F.2d 269
• Parties: THORPE et al. v. WM. FILENE'S SONS CO.
• Court: U.S. District Court — District of Massachusetts

40 F.2d 269 (1930)

THORPE et al. v. WM. FILENE'S SONS CO.

No. 4265.

District Court, D. Massachusetts.

April 7, 1930.

Harold E. Cole, of Boston, Mass., for plaintiffs.

Jacob J. Kaplan and Nutter, McClennen & Fish, all of Boston, Mass., for defendant.

MORTON, District Judge.

This is an action at law for damages for infringement of an expired patent. It is being defended by the vendor of the article in question, a child's cap; and I shall refer to the vendor as the defendant. The defendant has moved to dismiss on the ground of "laches," and, in support of the motion, has filed affidavits. No counter affidavits have been filed, and I understand that the essential facts as stated by the defendant are not really in dispute.

Laches is, of course, an equitable defense and in pleading it the defendant avails itself of section 274b of the Judicial Code (28 USCA § 398). "The term `equitable defenses,' within the meaning (of this section) includes a state of facts which, by virtue of doctrines recognized by courts of equity alone, has the effect of barring, or rendering unenforceable against a defendant in a suit, the claim asserted by the plaintiff therein." Walker J. Ford v. Huff (C. C. A.) 296 F. 652, at page 658. Strictly speaking, laches is recognized only in suits in equity, and means such inaction or delay on the part of the plaintiff as makes it inequitable to accord to him the relief prayed for; it is analogous to the requirement that the plaintiff must come into court with clean hands. It has no application to actions at law. A plaintiff's conduct may, however, have been of such character as, without having created any legal defense against his claim, to make it unconscionable for him to maintain it. This is estoppel and is recognized in equity as sufficient ground for enjoining an action at law. The basis of estoppel is deceptive or misleading conduct by the plaintiff on which the defendant has relied to his injury. Simmons v. Burlington, etc., Rwy. Co., 159 U. S. at page 291, 16 S. Ct. 1, 40 L. Ed. 150; Ward v. Sherman, 192 U. S. 168, at page 177, 24 S. Ct. 227, 48 L. Ed. 391. Mere delay by the plaintiff may constitute such laches as will deprive him of equitable relief, but I am aware of no case in which it has been held to constitute a defense to an action at law, except, of course, under the statute of limitations.

The question presented by the motion to dismiss is whether the facts alleged make out a case for estoppel. The plaintiffs obtained their patent in 1912. While the application was pending they tried in a small way to market the patented article. They were unsuccessful in doing so and abandoned the effort. Thereafter they did nothing with the patent until it was about to expire, when they brought an infringement suit in equity against another defendant which they settled for a small sum. After the patent had expired the...