West Disinfecting Co. v. U. S. Sanitary Specialties Corp.

221 Ill. App. 372, 1921 Ill. App. LEXIS 57

Opinion

Mr. Justice G-ridley

delivered the opinion of the court.

Counsel for defendants contend that the circuit court erred in overruling defendants’ motion to dissolve the temporary injunction issued on June 10, 1920, and in entering the order of November 16, 1920, wherein the court in effect continued in force said injunction though somewhat modified.

Counsel state in their printed argument that at the time of the issuance of the original injunction of June 10, 1920, the defendant corporation was technically not entitled to claim any infringement of a patent right because its letters-patent, No. 1,346,337, had not then been issued although its application therefor had been allowed, and counsel here raise no question as to the propriety of the issuance of said original injunction, or continuing it in force until the filing of defendants’ sworn answer on July 26, 1920, wherein it appeared that defendants’ said letters-patent had been issued on July 13, 1920. Counsel take the position that the actual issuance of that patent presented such a change in the situation as properly required a dissolution of the injunction.

Examining the amended and supplemental bill of complaint it mil be noticed that the principal new or aditional allegations are, in substance (1) that complainant, upon information received from counsel learned in the patent law, believes and charges that the patent is invalid because the subject-matter lacks patentable novelty; (2) that the defendant corporation has not since the date of the issuance of the patent brought any suit for infringement against complainant or any other person; and (3) that complainant believes and charges- that the defendant corporation does not intend to institute any such suit, but rather intends to use the existence of said patent as a means of intimidating customers of complainant and prospective purchasers of complainant’s product, Fragrant Ice.

The grant of letters-patent by the Commissioner of Patents when lawfully exercised is prima facie evidence that the patentee is the first inventor of that which is described and claimed in them. (Seymour v. Osborne, 78 U. S. 516, 538; Forster v. Brown Hoisting Machinery Co., 266 Ill. 287, 296.) Complainant in its amended and supplemental bill raises the issue of the validity, for want of novelty, of the patent of defendant corporation, shown in its sworn answer to have been granted to it on July 13, 1920. (We do not think that the circuit court, being a State court, has any jurisdiction to determine that issue in this proceeding. (Everett Piano Co. v. Bent, 60 Ill. App. 372, 378; Forster v. Brown Hoisting Machinery Co., supra.) By the terms of the original injunction of June 10, 1920, the defendant corporation could not bring any suit for infringement of its patent against complainant or other persons until the modified injunctional order appealed from was entered, and the fact that it did not bring such suits is no evidence that, with the ban removed, it does not intend to do so. While complainant’s amended and supplemental bill charges that it believes that defendant corporation does not intend to institute any such suits, but rather intends to use the existence of said patent as a means of intimidation, etc., -complainant does not allege any acts done by the defendant corporation, its officers or agents, since the issuance of the patent, showing grounds for that belief. And we do not think that complainant’s allegations, contained in both its original and supplemental bills, as to the acts of defendant corporation, its officers or agents, in relation to the patent after the application therefor had been allowed but before the actual issuance thereof, or their prior conduct in respect to matters having no relation to the patent, should he considered as sufficient grounds for that belief.

Counsel for defendants argue that the grantee of letters-patent of the United States cannot be deprived by injunction of his right to give notice of the existence of his patent and to warn against its infringement, unless such facts are disclosed as show that, since the issuance of the patent, he has been guilty of an abuse of that right. The argument is supported by statute and decisions. By statute of the United States (vol. 7, Fed. Stat. Ann. sec. 4884), the grant of letters-patent gives the patentee for a period of 17 years “the exclusive right to make, use and vend the invention or discovery throughout the United States and the Territories thereof.” * (See also Tuttle v. Matthews, 28 Fed. 98; Agawam Woolen Co. v. Jordan, 74 U. S. 583, 592.) And the exclusion of competitors from making or using the patented article is of the very essence of the right conferred. (United States v. Winslow, 227 U. S. 202, 217.) “Congress put no limitations, excepting time, upon the monopoly. Courts can create none without legislating.” (Rubber Tire Wheel Co. v. Milwaukee Rubber Works Co., 154 Fed. 358, 362.) And, as an incident to the monopoly granted, the patentee has the right to, and in fairness should, notify and warn persons against any invasion of his right, and the giving of such notifications and warnings, if made in good faith and not maliciously and for unlawful purposes, should not be enjoined. (Kelley v. Ypsilanti Dress-Stay Mfg. Co., 44 Fed. 19, 23; Virtue v. Creamery Package Mfg. Co., 179 Fed. 115, 120; Computing Scale Co. v. National Computing Scale Co., 79 Fed. 962, 966; Mitchell v. International Tailoring Co., 169 Fed. 145, 146; United Electric Co. v. Creamery Package Mfg. Co., 203 Fed. 53, 54; Everett Piano Co. v. Bent, 60 Ill. App. 372, 377.) As previously stated, complainant’s amended and supplemental bill does not allege facts showing that the defendant corporation, since the issuance of the patent, has been guilty of any abuse of the rights granted by the patent. Indeed, the record shows that when the patent was issued the defendant corporation and its officers and agents were under injunction not to notify and warn persons against infringement, which injunction was continued in force until the entry of the modified injunctional order appealed from, and by which the right of the defendant corporation to notify and warn persons against infringement were made subject to certain limitations or conditions. By paragraph “b” of said modified injunctional order the defendant corporation, its agents, etc., are enjoined from informing customers of complainant, or any other person, firm or corporation, by circular, letter, oral statement, or otherwise, that the manufacture, sale, purchase or use of complainant’s product, Fragrant Ice, is an infringement of the patent granted to defendant corporation, or that the purchase or use of Fragrant Ice will render the purchaser or user thereof liable in damages to the defendant corporation, unless, prior thereto, said defendant corporation “shall have instituted and then be diligently prosecuting or within thirty days thereafter shall institute and diligently prosecute a suit for such alleged infringement” against such customer of complainant or such other person, firm or corporation; and by paragraph “e” of said modified injunctional order the defendant corporation, its agents, etc., are further enjoined from molesting, intimidating, etc., “except by suit instituted in good faith and diligently prosecuted,” any purchaser or prospective purchaser of Fragrant Ice, respecting the purchase or use thereof. In Anew of the above authorities and the facts disclosed in this record we do not think such an injunctional order can stand. As it seems to us it is an unwarranted limitation upon the right of a patentee to notify and warn persons against infringements, in that the right is conditioned upon the institution of a suit, — an action which the patentee may not desire to take and which he should not he compelled to take. (Celluloid Mfg. Co. v. Goodyear Dental Vulcanite Co., 13 Blatch. [U. S.] 375, 384.) By paragraph “a” of said modified injunc-tional order the defendants were enjoined from giving notice that the defendant corporation had a patent upon its product Aerzonator Blocs “by or through any malicious or improper circular, letter or oral statement.” This, we think, is also an improper limitation upon the right of a patentee to notify and warn persons against infringements, in that it subjects the defendant corporation, in case it gives such notice, to the hazard that the particular circular, letter or oral statement might subsequently be decided to be “malicious” or “improper” and a violation of the injunction.

Our conclusion is that the order of the circuit court, entered November 16, 1920, is erroneous and should be reversed, and it is so ordered.

Reversed.

• BaeNes,. P. J., and Matchett, J., concur.