Wright v. Dodge Bros.

• Decision Date: 25 June 1924
• Docket Number: 602.
• Citation: Wright v. Dodge Bros., 300 F. 455 (E.D. Mich. 1924)
• Parties: WRIGHT v. DODGE BROS.
• Court: U.S. District Court — Eastern District of Michigan

300 F. 455

WRIGHT v. DODGE BROS.

No. 602.

United States District Court, E.D. Michigan, Southern Division.

June 25, 1924

George L. Wilkinson, of Chicago, Ill., and Edward N. Pagelsen, of Detroit, Mich., for plaintiff.

Emerson R. Newell, of New York City, for defendants.

TUTTLE District Judge.

This cause is before the court on a motion by plaintiff to strike from the answer certain parts thereof as not pertinent to any issue involved, and on a motion by defendant to compel plaintiff to answer certain interrogatories filed by defendant under equity rule 58.

The bill, which properly invokes the jurisdiction of this court on the ground of diversity of citizenship, seeks specific performance of a certain contract, alleged to have been entered into between the parties hereto in 1916, whereby plaintiff granted to defendant a nonexclusive license to manufacture, sell, and use automobile hood hinges under a certain patent owned by the plaintiff. The bill alleges that since the year 1918 defendant has not made the reports, nor paid the royalties, required by said license, although defendant has since that time made many thousands of automobile hoods embodying the invention covered by said patent and license.

Defendant has filed an answer, in which it admits the making of said license agreement and its failure to comply with the terms thereof since 1918, but alleges that since that time it has not made nor sold any device 'within the terms of the license agreement or covered by any device 'within the terms of the license agreement or covered by the claims of the said letters patent. ' It further alleges:

'That ever since about July 1, 1918, plaintiff has known that defendant has been manufacturing automobile hoods and hinges, and their construction and form, and that defendant has refused to pay any royalties thereon, and plaintiff has for many years past permitted others within the United States to manufacture, use, and sell automobile hoods and hinges claimed in said letters patent, without payment of royalty and without license from plaintiff, and has, with full knowledge of the facts, permitted licensees to violate and disregard the license provisions, yet plaintiff has failed to take reasonable steps to prevent such acts, and thereby, and by other acts and omissions by her, plaintiff acquiesced in defendant's acts and the manufacture by others to such an extent that plaintiff is estopped from any right she might otherwise have to claim that defendant's constructions are included within the scope of said patent or of said license.'

Defendant filed interrogatories under equity rule 58, several of which seek certain specific information concerning the alleged acquiescence by plaintiff in the manufacture, by its licensees and by others, of the devices now claimed by plaintiff to be within the scope of the patent referred to.

Plaintiff moves to strike out the portions of the answer just quoted and objects to the interrogatories just mentioned, in so far as such answer and interrogatories relate to the alleged conduct of the plaintiff in permitting the manufacture, by others than the defendant, of the devices now claimed to be covered by the patent and license involved in this suit. Defendant moves for an order compelling plaintiff to answer such interrogatories.

It is urged on behalf of plaintiff that, as she has not agreed to sue infringers of this patent or licensees, other than defendant, who may have violated the terms of their licenses she is, and has been, under no obligation, so far as defendant is concerned, to do so, or to prevent others from infringing such patent, or from violating their licenses, and that therefore her failure to take such action cannot form the basis of any estoppel as between herself and the defendant, and that it is not open to defendant to plead or to interrogate concerning such matters. In view, however, of the claim of defendant that the devices which it has been manufacturing are not within the scope of plaintiff's patent, and are therefore not covered by the license granted under such patent, I am of the opinion that under the principles of estoppel (which are as applicable to the law of patents as to any other subject) defendant is entitled to allege in its answer, and to seek to ascertain by its interrogatories, that plaintiff, by her conduct, has led defendant to believe that she does not claim that...