BROWN ". LAPlUM.
(Circuit Oourt, S. 1.
A licensee under a patent is estopped to deny its validity on any question arising out of that relation between the parties, (Kinsman v. Pa1'khurst, 18 How. 289,) but it does not follow that he will be always estopped because he has stood in that relation.
SAME-WHEN LICENSEE MAY CHALLENGE VALIDITY OF PATENT.
When a licensee under a patent stands out from under the license. and claims nothing from it, and does nothing more under it, with full knowledge to the licensor of his position, he is at as full liberty to contest the patent as anyone. Taking and operating under a license is sufficient evidence of acquiescence to warrant an injunction without any previous adjudication, if the patent is unchallenged.
SAME-WHEN INFRINGEMENT llY LICENSEE WILL BE ENJOINED.
In Equity. B. F. Clark, for plaintiff. Samuel Greenbaum, for defendants. WHEELER, J. The defendants appear to have been licensees of the September 26, 1882, plaintiff under his patent No. 264,854, for an improvement in stylographic pens, and afterwards to have repudiated the license and continued their infringement in defiance of the patent. The plaintiff has moved for a preliminary injunction. On this motion the defendants have filed affidavits tending to show that a manufacturer for the plaintiff of another style of pen, and his -own workmen, devised this improvement for the plaintiff, and that they were the inventors of it, although the plaintiff got the patent for it. The plaintiff relies upon the estoppel of the defendants to deny the validity of the patent growing out of the license and the operating under it by them. There is no fair question but that a licensee under a patent is estopped to deny its validity on any question arising out of that relation between the parties. Kinsman v. Parkhurst, 18 How. 289. It does not follow that he will be always estopped be·cause he has stood in that relation. When he stands out from under the license, and claims nothing from it, and does nothing more under it, with full knowledge to the licensor of his position, he would appear to be at as full liberty to contest the patent as anyone. In this case, taking and operating under the license would appear to be suffi· cient evidence of acquiescence to warrant this injunction without any previous adjudication, if the patent was unchallenged. As it is, the plaintiff must stand upon the validity of his patent, and maintain it against this attack. On cross-examination of these witnesses, and the whole evidence when put in, this attack may not amount to
lReported by Charles C. Linthicum, Esq., of the Chicago bar.
thing decisive. As it is, upon this question as submitted, the affidavits raise sufficient doubts about the patent to stand in the way of granting this motion now. Motion denied.
Co., Consolidated, and another,
(Oircuit Oourt, N. D. lUinoiB. March 22, 1886.)
PATENT8 FOR INVENTION8-IDENTITY OF PATENTED PROCESSES.
In a suit for infringement of reissued letters patent No. 10,137, of June 13, 1882, to complainants, as assignees of Hippolyte Mege, for an improved method of treating animal fats, held, that the invention covered by this patent was identical with that described in a Bavarian patent, which expired April 8, 1876, and in an Austrian patent, which expired May 26. 1876, both to the same inventor, and that the American patent expired with said foreign patents, prior to the beginning of this suit. Where it was urged that patentee had estopped himself to deny that his American patent was for the same invention as patented to him in prior foreign patents, after having represented that to be a fact in his application for the former, held, that if the inventor was laboring under a mistake as to this point, his rights should not thereby be prejudiced. A fair test to determine whether an American patent is identical with or included in a prior foreign patent to the same inventor is to inquire whether the use of the precise process described in the foreign patent, after the grant of the American patent, would be enjoined as an infringement of the latter.
SAME-TEST TO DETERMINE IDENTITY OF PATENTS.
In Equity. Offield et Towle, (B. F. Thurston and T. D. Lincoln, of counsel,) for complainant. Hill cf; Dixon, for defendants. Heard before GRESHAM and BLODGETT, JJ. BLODGETT, J. This Buit was brought for an alleged violation of reissued patent No. 10,137, granted June 13, 1882, to complainant, assignee of Hippolyte Mege, for "an improved method of treating animal fats," the original patent having been granted December 30, 1873, and reissued May 12, 1874, and again reissued Septembe.t 24, 1878, before the reissue llOW in question. By the specifications it is claimed that Mege invented an improved means for transforming animal fat into butter; the process described resulting in artificially producing the natural work which is performed by the cow when it reabsorbs its fat in order to transform the same into butter. His process included nine steps, the first five of which only are in controversy in this case. Briefly stated, these steps are as follows:
(1) Neutralization of the ferments or germs of decay, which is done by plunging the suet or raw fat, as soon as possible after the death of the ani1 Reported
by Charles C. Linthicum, Esq., of the Chicago bar.