OITY OF OONCORD V. NORTON.
CITY OF CONCORD V. NORTON,
Trustee, etc., and others.
CITY OF DOVER V. SAME. CITY OF PORTSMOUTH V. SAME. CITY OF MANCHESTER V. SAME. CITY OF NASHUA V. SAME.
((]freuit Oourt, D. Massachusetts.
March 30, 1883.)
PATENTS FOR INVENTIONs-EQUITABLE l'RACTIOEB AS TO ENJOINING AOTIONS AT LAw ON PATENTS.
After a patent has expired a court of equity will not enjoin an action at law for infringement unless there is somc purely equitable defense to the action not available at law. 2.
Nor will a court of eqnity grant a preliminary injunction when an equitable defense and a legal defense are both relied on by the supposed infringer. It will await the determination of the legal point before taking action. 3.
SAME-EsTOPPEL BY CONDUCT.
Estoppel by conduct, often called eqnitable estoppel, IS available as a defense at common law.
It seem8 that mere laches In enfqrcing 8 right of action for infringement, when the supposed infringer is notified of the patent and acts in known defiance of it, will not work an estoppel.
Five bills were filed in this court by five cities of New Hampshire, to restrain <1S many actions at law pending against them in the circnit court for the district of New Hampshire, in which the defendants here, Norton and others, owners of the patent No. 42,920, granted in 1864 to Knibbs & Norton, for an improvement in 'steam fire-engines, were plaintiffs. The cases were heard together, upon motions for a. preliminary injunction, and the facts in one case will serve for all. The bill brought by the city of Dover alleges that the action Bought to be enjoined was brought in 1882, after the patent had expIred; that it lays the damages at $50,000 for the nse of the patented improvement in certan engines owned and used by the city during sub-, Rtantially the whole term of the patent; that in 1859, long before the supposed invention of Knibbs, the Amoskeag Company of Manchester, New Hampshire, made steam fire-engines embodying the same invention, and sold them for public use; that in June, 1864, the patentees notified the Amoskeag Company of their patent, :tnd offered to sell it,
or a right under it, to said company. That the company answered that they had Used the same thing before 1860, and referred the patentees to certain engines in Boston, which they had so made; that the said Norton, for himself and Knibbs, replied tha.t they did not believe this statement, and that if the company did not come to terms with them within 30 days they would give them an opportunity to defend themselves at law; that the company rejoined that they had no objection, and awaited their summons; that no action was ever brought against the Amoskeag Company, and that company continued to make engines containing the improvement until 1877, when they gave up the business of making steam fire-engines; that in this time they made 400 engines containing the improvement, and among them those now belonging to the plaintiff city; that the city bought its engines in good faith and had no notice of any patent; that the patentees had notice of the acts of the Amoskeag Company. An injunction is thereupon prayed for as upon an equitable estoppel. The answer admits many of the facts, dates, etc., of the bill, and the correspondence. It denies that the improvement had been anticipated, and, on the contrary, avers that the patent has been sustained, after full investigation of this defense, in a suit against the city of New York, decided in the southern district of New York in November,1881. Campbell v. Mayor, etc., of New York, 9 FED. REP. 500. That the said Knibbs & Norton brought an action in the northern district of New York late in 1864, or early in 1865, against Lysander Button, a manufacturer of steam fire-engines, for infringement of the patent, which was discontinued by reason of the absence of a material witness; that in 1874, they brought a suit in equity against said Button' and his son, which is still pending. That in 1873 they proceeded by petition to the common council of the city of Troy, for damages or compensation for an infringement, which resulted in a settlement in wriiing, which is referred to as part of the answer. That in 1877 they brought a suit against the city of New York, which 'resulted in the decree in favor of the patentees, as already stated; and they then proceeded against the present plaintiff an d others. They allege that the Amoskeag Company had knowledge of all these actions and suits, and deny that they ever acquiesced in the infringements by that company. George L. Boberts and J. L. S. Roberts, for complainants. Bainbridge Wadleigh and J. C. Caverly, for defendants. LOWELL, J. Sitting here in equity, I cannot, after the expiration of the patent, undertake to decide upon its validity, or to enjoin my-
CITY OF CONCORD V. NQRTON.
self from trying the case at law pending in New Hampshire, unless some purely equitable defense is made out which would not be equally available in that action. The plaintiffs, here do not rely wholly upon an equitable defense to that aotion. They say and sist that the invention was anticipated. If this point is relied on I cannot enjoin the action, because if the defendants here should vail, after a full hearing, in which, they succeed in repelling the equitable estoppel, they must still proseoute the action atJaw against the defense of want of novelty in the, invention. A preliminary injunction granted under such oiroumstances, though times the bill will be retained until the action is tried at la.w. Kerr, luj. 17, 19; ,BCUl'n(lrdv. Wal(j.s, Craig & P.85; Perrine v. Striker, 7 Paige, 598; DerlJysh.ire,etc., Ry. Co. v. Serrell, 2 DeG-ex & S. 358; Waterlow v. Bacon, L. R. 2Eq. 514. But what is called equitable estoppel,-that is, estoppel by conduct, .....,..is, in this oountry at least,as valid a defense at law as in equity. Bigelow, Estop. (3d Ed.) 476, oiting Copper Mining Co. ,v. Ormsby, 47 Vt.709. And the leading cases on this subject, suqh as Pasley v. F'I'eem(tn,3 Term .R. 51, and Pickard v. Sear8, 6'Adol. &.E. 469, are actions at law.. .¥r.. Justice SW.A.YNEannOunced it as the doctrine of the supreme conrt, in Dickerson v. Colgrove, lQO U. S, 578, 584, that this is a legal defense; and so is the law of New Hampshire, where these actions are pending. Horn v. Cole, 51 N. H. 287, 300. For these reasons I must refuse the motion for an injunction. But as the same estoppel may be pleaded before me in the action at law, and as the point has been argued, I feel bound to say that I do not find the estoppel to be made out. . The parties appear to stand very much like ordinary suitors in a patent cause. The patent may not have been litigated with great diligence,but I see good reason why the Amoskeag Company should have more benefit by the delay than anyone else. That company notified the patentees, in answer to a demand for a settlement, that they should contest the validity of the patent; and it may be reasonably inferred that the patentees knew or should have known that the company intended to go on with the manufacture as they might find ocoasion; but I do not think it is a reasonable inference that the company supposed or had any right to suppose that the patentees had lioensedthem to go on, merely because they did not prosecute them after the 30 days' gracehaa' expired. On the contrary, I infer, and I think a jury would infer from the evidence as it now stands, that each party was oonfident of his own opinion, and that
the Amoskeag Company knew that they might be sued at any time, but believed that they could not be sued with effect. Under sucl:. circumstances a court of equity might well decline to give any extraordinary assistance to patentees who had remained quiet for years; but in the cases of that sort, in which equitable relief has been refused, the courts have said that the plaintiff must be left to such damages as he might obtain at law. This is laches, and not estoppel; and for laches the remedy at law is found in the statute of limitations, and if that statute is inadequate there is no other remedy. The same remark, I apprehend, is true of the damages. The hardship which these plaintiffs apprehend appears to arise from the very large damages which are claimed by the patentees. The record before me does not show the grounds of this claim. Supposing it to be, as intimated at the argument, that the regular license fee would be an annual payment, the equitable complaint is that the city was permittted to use the improvement for so many years without notice. This would apply, in a greater or less degree, to all cases of laches; and if the court and jury are incompetent to deal with it, I know of no power ina court of equity to set a limit to the damages which a court of law shall award under such circumstances. Inj unction refused.
THE CHARLES THE AGNES
(District Oourt, E. D. Pennsylvania. May 14,1883.)
PILOTAGE-CONSTITu'rIONAI, LAW-AuTHORITY OF STATE.
Where, by a statute of one state, vessels bound to a port of that state were free from the obligation of compulsory pilotage when not spoken outside of a certain line, sHeha statute has no application to pilot services tendered by a pilot licensed under the laws of another state situated on the same river.
SAME-DELAWARE STATUTE, IMPOSING OBLIGATION TO COMPULSORY Pn.OTAGE UPON VESSELS BOUND TO THE PORT OF PHILADELPHIA, CONBTIlUED.
A pilot, licensed by the state of Delaware, may, by a libel m rem, recover the fees provided by a Delaware statute for pilot services tendered to a vessel on a voyage from a foreign port up the bay and river to the port of Philadelphia, after the vessel had crossed a straight line drawn from Cape May light to Cape Hen]open light, although such services were refused, and not. withstanding a statute of Pennsylvania exempted an such vessels from the duty of taking a pilot, and in case such service was accepted and performed,
*Reported by AlberL B. GUilbert, Lsq., of the Philadelphia bar.