of the state of the art at the time of the invention. Can the state of the art be shown in a suit by the assignee of a patent against the assignor for infringement to narrow or qualify the construction of the claims and relieve the assignor from the charge? * * *. We think, * * *, in view of the peculiar character of patent property, * * * the state of the art may be considered. Otherwise the most satisfactory means of measuring the extent of the grant the government intended and which the assignor assigned would be denied to the court in reaching a just conclusion. Of course, the state of the art cannot be used to destroy the patent and defeat the grant, because the assignor is estopped to do this. But the state of the art may be used to construe and narrow the claims of the patent, conceding their validity. The distinction may be a nice one but seems to be workable." (Emphasis by this Court.)
The rule permits the introduction of evidence of the prior art for the sole purpose of defining the limits of the patent grant and the coextensive estoppel, but the limitation embodied in the rule precludes the introduction of such evidence for the purpose of destroying the grant and defeating the assignment. The application of the rule is clearly circumscribed by the limitation.
The claims, as the measure of the patent grant, determine the scope of the estoppel, and, as between the assignor and the assignee, should be liberally construed so as to prevent any derogation of the assignment. The estoppel, as thus determined, extends to every device or method within the fair meaning of the claims. Leader Plow Co. v. Bridgewater Plow Co., 4 Cir., 237 F. 376, 377; Piano Motors Corporation v. Motor Player Corporation, 3 Cir., 282 F. 435, 437; Libbey Glass Mfg. Co. v. Albert Pick Co., 7 Cir., 63 F.2d 469, 470; Stubnitz-Greene Spring Corp. v. Fort Pitt Bedding Co., 6 Cir., 110 F.2d 192, 197. Since the claims must be construed in the light of the prior art, the assignor may invoke the prior art but for the sole purpose of limiting the claims and their coextensive estoppel. The assignor, however, may not invoke the prior art for the ostensible purpose of limiting the claims, but for the real purpose of challenging their validity for lack of novelty. Alvin Mfg. Co. v. Scharling, C.C., 100 F. 87; Hurwood Mfg. Co. v. Wood, C.C., 138 F. 835; Automatic Switch Co. v. Monitor Mfg. Co., C.C., 180 F. 983; Piano Motors Corporation v. Motor Player Corporation, supra; Swan Carburetor Co. v. General Motors Corporation, D.C., 42 F.2d 452, affirmed 6 Cir., 44 F.2d 24; Libbey Glass Mfg. Co. v. Albert Pick Co., supra; Cross Paper Feeder Co. v. United Printing Mach. Co., D.C., 220 F. 313, modified 1 Cir., 227 F. 600. The assignor will not be permitted to defeat the estoppel by indirection.
It seems reasonably clear that under these principles the defense of non-infringement, although available to the defendants, may not rest, as it does here, solely on the Inman patent. This patent not only negatives infringement but it invalidates the Marcalus patent and defeats the assignment. If we were to permit the defense of non-infringement to rest on the Inman patent, the defendants would achieve, by indirection, the destruction of the Marcalus patent and the defeat of its assignment, and this the defendants may not do. But see Casco Products Corporation v. Sinko Tool & Mfg. Co., 7 Cir., 116 F.2d 119, 121; Dixle-Vortex Co. v. Paper Container Mfg. Co., 7 Cir., 130 F.2d 569, 577. These decisions, however, were in suits by licensors against their licensees.
The contention of the defendant Marcalus Manufacturing Company that the estoppel does not extend to the corporation is untenable. It is well established that the estoppel is effective against the assignor and all those in privity with him, including a corporation of which he is an officer and stockholder. Mathews Gravity Carrier Co. v. Lister, C.C., 154 F. 490; Onondaga Indian Wigwam Co. v. Ka-Noo-No Indian Mfg. Co., C.C., 182 F. 832; Leader Plow Co. v. Bridgewater Plow Co., supra; Piano Motors Corporation v. Motor Player Corporation, supra; Buckingham Products Co. v. McAleer Mfg. Co., 6 Cir., 108 F.2d 192.
The affirmative defenses of laches and estoppel which the defendants raise for the first time in their answering affidavit, are not considered because they were not pleaded as required by Rule 8(c) of the Rules of Civil Procedure. It is our opinion, however, that the facts stated in the affidavit will not support either defense, and for that reason we are not inclined to grant the defendants leave to amend their pleading.
The machine used by the defendants in the manufacture of dispensing boxes is an infringement of the patent in suit, the validity of which the defendants are estopped to deny. The said infringement will enjoined and the defendants will be required to account to the plaintiff for the profits realized from this use of the infringing machine.
The plaintiff shall submit, on notice to the defendants, a proper decree.
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