Mas v. Coca-Cola Co.

• Decision Date: 20 August 1947
• Docket Number: No. 5582.,5582.
• Citation: 163 F.2d 505
• Parties: MAS v. COCA-COLA CO.
• Court: U.S. Court of Appeals — Fourth Circuit

163 F.2d 505 (1947)

MAS v. COCA-COLA CO.

No. 5582.

Circuit Court of Appeals, Fourth Circuit.

August 20, 1947.

George A. Finch, of Baltimore, Md., for appellant.

Hilary W. Gans, of Baltimore, Md. (John A. Sibley, James M. Sibley, K. Wilson Corder, and Julius R. Lunsford, Jr., all of Atlanta, Ga., Brown & Brune, of Baltimore, Md., and Spalding, Sibley & Troutman, of Atlanta, Ga., on the brief), for appellee.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

PARKER, Circuit Judge.

This is an appeal by plaintiff in a suit instituted under R.S.4915, 35 U.S.C.A. § 63, from an order dismissing the bill of complaint on the ground that plaintiff had not come into court with clean hands. The suit was one to have plaintiff adjudged entitled to a design patent on a beverage bottle which the Board of Appeals in the Patent Office, on appeal in an interference proceeding, had awarded to one Kelly, who had assigned his rights to the Coca Cola Company. The finding that plaintiff did not come into court with clean hands was based upon the fact that he had used forged documents and perjured testimony in his attempts to establish priority of invention in the Patent Office.

The subject matter of the design patent was a beverage bottle which differed very little from the bottle, covered by a patent to one Root, which the Coca Cola Company had been using since 1923. The design of the patent in suit was distinguishable from that of the Root patent only by the addition of two short vertical ribs which divide the plain central portion of the design into two panels. Kelly, President of the Coca Cola Company, Ltd., of Canada, made application for a patent on this design March 24, 1937. On October 15, 1938, plaintiff applied for a patent on a design practically identical with that of Kelly, in so far as the vertical ribs are concerned, but providing in addition surface ornamentation resembling frost on other parts of the bottle. The similarity of the two designs could hardly have been accidental; for it is not reasonable to conclude that a design of such arbitrary character could have been hit upon by two persons independently at or about the same time. Orange-Crush Co. v. American Ornamental Bottle Corporation, 4 Cir., 60 F.2d 518, 520; Dowling v. Jones, 2 Cir., 67 F.2d 537, 539, 540. Plaintiff apparently recognized this self-evident proposition; and when an interference was declared in the Patent Office, he claimed not only priority of conception and reduction to practice, but also that he had made disclosure of his design to the Coca Cola Company in advance of the Kelly application. To prove the last contention, he introduced in evidence two letters purporting to be copies of letters written to the Coca Cola Company in his behalf in the year 1934 and three letters purporting to be written by an official of the Coca Cola Company acknowledging receipt of these letters and of a wooden bottle which he claimed to have submitted to the Coca Cola Company as a model of his design.

The Examiner in the Patent Office went fully into the facts and pointed out that the evidence offered to establish disclosure was entirely untrustworthy. Indeed the fraudulent nature of this evidence was so conclusively established before him that plaintiff expressly abandoned it before the Board of Appeals of the Patent Office. On the basis of the use which he had made of the evidence in the Patent Office, however, plaintiff was indicted in the District Court of the United States for the District of Columbia for filing a false deposition and for uttering forged documents. He was convicted on all counts of the indictment and was sentenced to a term of imprisonment, which was affirmed on appeal. Mas v. United States, 80 U.S.App.D.C. 223, 151 F.2d 32.

When the fraudulent and criminal conduct of plaintiff in attempting to establish priority in the Patent Office was called to the attention of the trial judge on the opening statements in the court below, he inquired fully into the matter. Plaintiff's counsel admitted that the copies of letters purporting to be from the Coca Cola Company which plaintiff filed in the Patent Office were not genuine; and the record in the Patent Office, which was before the court, justified the conclusion that the entire correspondence was fictitious and was fraudulently put forward by plaintiff for the purpose of deceiving and misleading the Patent Office on the issue of disclosure and priority, the very matters which plaintiff was putting in issue by his complaint and with respect to which he was asking that the decision of the Patent Office be reversed. Upon this being established, the trial judge held that plaintiff had not come into court with clean hands and dismissed the suit.

We think that the action of the court was thoroughly justified. The clean hands doctrine is one which the court applies, not for the protection of the parties, but for its own protection. Its basis was well stated by Professor Pomeroy (Equity Jurisprudence, 4th Ed., sec. 397) as follows: "It assumes that the suitor asking the aid of a court of equity has himself been guilty of conduct in violation of the fundamental conceptions of equity jurisprudence, and therefore refuses him all recognition and relief with reference to the subject-matter or transaction in question. It says that whenever a party, who, as actor seeks to set the judicial machinery in motion and obtain some remedy, has violated conscience, or good faith, or other equitable principle, in his prior conduct, then the doors of the court will be shut against him in limine; the court will refuse to interfere on his behalf, to acknowledge his right, or to award him any remedy." Another passage by this authoritative writer on equity jurisprudence, thus states the rule (Sec. 404): "It is not alone fraud or illegality which will prevent a suitor from entering a court of equity; any really unconscientious conduct, connected with the controversy to which he is a party, will repel him from the forum whose very foundation is good conscience."

It is well settled, of course, that the court will not close its doors in the face of a suitor, if the misconduct of which he has been guilty is not related to the equity which he seeks to enforce. Loughran v. Loughran, 292 U.S. 216, 54 S.Ct. 684, 78 L. Ed. 1219. In this case, however, the equity which plaintiff asks is that he be accorded priority of invention; and his misconduct had relation to this very matter. The fraud of which he has been guilty may properly be said to affect the very cause of action which he asserts, since the issue as to priority of invention is inextricably interwined with that of disclosure to the Coca Cola Company, as to which plaintiff is still relying upon the letters to that company found to be fraudulent, although not upon the alleged replies thereto, which are conceded to be forgeries. Cf. Harton v. McKee, C. C., 73 F. 556, 558. It should not be overlooked that plaintiff, to establish disclosure, which is the heart of his cause of action, is still relying in his brief before us on the copies of letters to the company which were found by the Examiner not to be trustworthy, which with the replies thereto were the basis of the prosecution in which plaintiff was convicted of forgery and perjury, and which plaintiff deemed it necessary to support with the replies which he now admits to be forgeries. Surely a court of equity is not required to give consideration to a cause of action the very essence of which is infected with fraud of this character.

Although most cases in which the clean hands doctrine has been applied are cases in which the cause of action itself has arisen out of or been the fruit of unconscionable conduct, we do not understand that it is a prerequisite to the application of the doctrine that the cause of action shall have so arisen. It is sufficient to bar relief that plaintiff has been guilty of unconscionable conduct directly related to the cause of action, such as the fabrication of testimony, the subornation of perjury or other like attempt to perpetrate a fraud upon the court or take an unconscionable advantage of his adversary. It is said that to have relief from a court of equity plaintiff must not only come into court with clean hands, but must keep his hands clean.^* In this case, plaintiff is in the position of asking the court to grant him, on the ground of priority of invention, a patent which the Patent Office denied, and of having to admit at the opening of his case that by perjury and forgery he had attempted to perpetrate a fraud on the Patent Office with respect to that very issue. Surely a court of equity, which is a court of conscience, is not required to listen to a suitor who has placed himself in such a position with respect to the very matter that he is bringing before the court.

Very much in point, we think, is the decision of the Supreme Court in Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 54 S.Ct. 146, 147, 78 L.Ed. 293. In that case plaintiff, grantee of a patent, had been guilty of suppression of evidence of prior use in an infringement suit in which the validity of the patent was involved. In a subsequent infringement suit this misconduct with respect to the subject matter of the litigation was held to bar relief under the clean hands doctrine. The court said:

"But courts of equity do not make the quality of suitors the test. They apply the maxim requiring clean hands only where some unconscionable act of one coming for relief has immediate and necessary relation to the equity that he seeks in respect of the matter in litigation. They do not close their doors because of plaintiff's misconduct, whatever its character, that has no relation to anything involved in the suit, but only for such violations of conscience as in some measure affect the equitable relations between the parties in respect of something brought before the court for adjudication. Story, id., §...