Tompkins v. International Paper Co.

• Decision Date: 12 December 1910
• Docket Number: 84.
• Citation: 183 F. 773
• Parties: TOMPKINS v. INTERNATIONAL PAPER CO.
• Court: U.S. Court of Appeals — Second Circuit

183 F. 773

TOMPKINS v. INTERNATIONAL PAPER CO.

No. 84.

United States Court of Appeals, Second Circuit.

December 12, 1910

Prindle & Wright (E. J. Prindle and Arthur Wright, of counsel), for appellant.

J. C Pennie, for appellee.

Before LACOMBE, WARD, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

The bill is the usual one for infringement of a patent, praying that defendant be enjoined and be decreed to account for profits and damages. The bill was filed August 15, 1908 subpoena served August 17th, and the patent expired the following day, August 18th. The bill was demurred to as without equity, because complainant had a plain adequate and complete remedy at law, and because the bill was filed so shortly before the expiration of the patent that no motion for an injunction could have been regularly notified to the defendant and heard by the court (Circuit Court, Southern District of New York), under its rules, before the expiration of the patent. The rule referred to is No. 36, which provides that:

'Notices of * * * motions, argument or hearing shall be served at least four days before the time of hearing.'

It was held in Root v. Railway Co., 105 U.S. 189, 26 L.Ed 975, that a bill in equity for a naked account of profits and damages against an infringer of a patent cannot be sustained; that such relief ordinarily is incidental to some other equity, the right to enforce which secures to the patentee his standing in court; that the most general ground for equitable interposition is to insure to the patentee the enjoyment of his specific right by injunction against a continuance of the infringement. In that case the bill was filed after the expiry of the patent sued on, and was dismissed because it recited no circumstances which would render an action at law for the recovery of damages an inadequate remedy for the wrongs complained of, and that no ground for equitable relief was presented.

In Clark v. Wooster, 119 U.S. 322, 7 Sup.Ct. 217, 30 L.Ed. 392, the Supreme Court held that, if the suit be begun in such time that an injunction can be obtained before the expiration of the patent, it is within the discretion of the court to take jurisdiction, and, if it does so, it may, without enjoining the defendant, proceed to grant the other incidental relief sought for. Although there was not sufficient time to give four days' notice of motion for injunction, it was within the power of the court upon the filing of the bill to issue an order to show cause returnable in some shorter time and grant an ad interim restraining order, which would have been in substance and effect an injunction. It seems immaterial to inquire whether or not complainant could have sustained an application for injunction or restraining order on the merits. If before the expiration of the patent he is actually in court with a bill upon which he could ask for an immediate injunction, and there was time enough to make such injunction operative if it were granted, it is not easy to see why, under the decision in Clark v. Wooster, the court would not be entitled to take jurisdiction.

Nevertheless there are authorities the other way. Miller v. Schwarner (C.C.) 130 F. 561; American Cable Co. v. Chicago (C.C.) 41 F. 522; Bragg v. Hartford (C.C.) 56 F. 292; Davis v. Smith (C.C.) 19 F. 823; Diamond Machine Co. v. Seus (C.C.) 159 F. 497. We prefer, therefore, to rest our decision on the other proposition contended for by the appellant, viz.: That complainant has not a plain, adequate, and complete remedy at law.

In Root v. Railway Company, supra, immediately after the passage which has been already referred to, the court says:

'Grounds of equitable relief may arise other than by way of injunction, as where the title of the complainant is equitable merely, or equitable interposition is necessary on account of the impediments which prevent a resort to

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