406
THE GREEN BAG
THE
PROTECTION
OF
UNUSED
PATENTS
By Paul Bakewell. IN The Green Bag of June, 1907, vol. xix, No. 6, p. 381, in Notes of Recent Cases, under the heading "Patents," is found a reference to the dissenting opinion of Judge Aldrich in the case of Continental Paper Bag Co. v. Eastern- Paper Bag Co., 150 Fed. 741. The record and briefs on file in U. S. Circuit Court at Milwaukee and in U. S. Circuit Court of Appeals for the Seventh Cir cuit, in the case of Wisconsin Compressed Air House Cleaning Co. v. American Compressed Air Cleaning Co. (see 60 C. C. A. 529, 125 Fed. 761) will show that as early as 1902 I had fully argued and presented, first, in 1902, to the U. S. Circuit Court sitting at Milwaukee, and afterwards, in 1903, to U. S. Circuit Court of Appeals sitting at Chicago, the following proposition: A complainant in equity who fails to allege and to prove that the invention of the patent in suit has been put into com mercial use before the filing of the bill of complaint, or who fails to show good reason why the invention of the patent has not been put into commercial use before the filing of the bill of complaint, is not entitled to any equitable relief by way of injunction; to grant a complainant equitable relief by way of injunction, under the circumstances stated above, is contrary "to the course and principles of courts of equity," and therefore, to exceed the "power" granted to the several courts vested with jurisdiction of cases arising under the patent laws of Section 4921 of the Revised Statutes of the United States. The Circuit Court of Appeals for the Seventh Circuit (see 60 C. C. A., 533 and 125 Fed. 765) did not pass on this question, because, as it reversed the decree of the Circuit Court (a decree sustaining the bill) for other reasons, it deemed it "unnecessary
to agitate" the question raised by the propo sition above stated. I am now asked by the Editor of The Green Bag to give a short article in support of the aforesaid proposition, to supplement the note contained in The Green Bag of June, 1907, which has been referred to at the head of the article. There are authorities, well founded on the true history and policy of our patent system, which support the proposition that one who has never used the patented invention in volved in a suit and who fails to show good and sufficient excuse (such as poverty, for instance) for not having done so, is not en titled to equitable relief. Some of these authorities are the following: Robinson on Patents, V. i, sec. 43, pages 65-66; Hoe et al, v. Knapp et al, 27 Fed. 204212; Judge Putnam's opinion in New York Paper Bag Co., v. Hollingsworth, 5 C. C. A., 496-497: Christie v. Seebold, 5 C. C. A., 33; Campbell Printing Press Co., v. Duplex Co., 86 Fed. and what Court there says at page 331; and Judge Grosscup's dissenting opinion in Fuller v. Berger, 120 Fed. 281. It is also true that in the case of Ball and Socket Fastener Co., v. Kroetze, 150 U. S. in, the Supreme Court has held that a court of equity will not give relief where there has been a mere technical infringement of a patent in respect to an immaterial feature thereof; that to incite the action of a court of equity substantial, as distinguished from mere abstract or theoretical, rights must be affected. It is also the settled law and practice, the reasons for which are clearly stated by Jus tice Wayne in Mott v. Bennett, 17 Federal
