# Fuller v. Berger

> Court of Appeals for the Seventh Circuit · February 5, 1903 · 120 F. 274

URL: https://www.frixlaw.com/law-library/cases/8749647

## Case

- **Full name:** FULLER v. BERGER
- **Court:** Court of Appeals for the Seventh Circuit
- **Decided:** February 5, 1903
- **Citations:** 120 F. 274; 65 L.R.A. 381; 1903 U.S. App. LEXIS 4493
- **Precedential status:** Published
- **Opinion:** Dissent by Grosscup
- **Judges:** Baker, Grosscup
- **Cited by:** 24 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8749647

## Opinion text

GROSSCUP, Circuit Judge
(dissenting). Gambling and gambling devices are condemned by the laws of every state and territory, except perhaps New Mexico. Upon this it can be safely predicated that the *280 conscience of the people of the state in which this court sits; of the people of the three states that constitute this circuit; indeed, of the people of every state and territory, except a little territory bordering on Mexico, condemns the practice of gambling. Gambling and gambling devices are condemned, also, by the enactments of congress, in-the statutes forbidding the use of the mails in aid of lotteries and other gambling purposes. Thus the national conscience is seen to be outspoken against the practice. Nothing could be conceived more conclusively showing a general conscience, and a general conception of policy. Unless a moral sense, thus widespread and unanimous, may be accepted as the conscience, not simply of the chancellor, but the 'judicial conscience, I am at a loss to know where to look for any authority for judicial conscience.
In the opinion from which I am compelled to dissent, it is assumed— and the record fully justifies the assumption — that the equities of the-case under consideration should be determined as if the Mills Novelty Company were the complainant. The Mills Novelty Company has-used the invention solely as an adjunct to a gambling machine. So-far as the record discloses, its sole purpose for the future, is to use the invention in connection with gambling devices. The patentee shows-no other purpose or practical use. The practical purpose of the writ of injunction asked for, therefore, is to aid them in their business of manufacturing and selling gambling machines; and such, and such, alone, will be the practical effect of the writ when issued by this court..
In my judgment, on this state of facts, the writ should not be issued. But, because it is possible to apply the patent mechanically to a use-not pernicious — though practically no such application is in mind— the majority of the court seem to think that the writ asked for cannot rightly be withheld. The majority are impressed with the cases that hold, that irrespective of whether the patentee actually uses his patent or not, the right to exclude others from its use is retained; and upon-this postulate is based their judgment, that irrespective of the pernicious use of the patent by complainant, he may successfully invoke the aid of a court of equity to exclude others from its use. The majority hold that because the invention is mechanically capable of a. moral use, there is created, at least technically, in the patentee, a valid'! property right, — a property right they feel themselves bound to protect, no matter what complainant is actually doing, or intends to do,, with his invention.
I can assent to no such limitation upon the moral discretion of a. court of equity. The bare existence of legal title does not leave the chancellor without discretion to issue, or withhold, his writ. Whence-comes, it may be pertinently asked, the right to withhold the writ where complainant comes into court with a clear title, but without clean hands; or is guilty of laches; or bears in some other respect: toward the party proceeded against an unconscionable attitude? •
If a court may withhold the writ, though asked in aid of clear title,, under one set of unconscionable circumstances, why may it not under another? Why is not the power to control its writ in the instances named applicable to any other instance where expediency, public policy, or substantial consideration of morals and conscience, are- *281 equally commanding? The chancellor, in my judgment, is master of his own writ, and though the claimant hold a legal title, is under no compulsion of law to issue the writ, so long as sound consideration of public morals and conscience forbid.
The majority of the court is misled, I fear, by the seeming analogy of the cases that hold that a patentee, though declining to use his invention, may forbid its use by others. Non-use and pernicious use must not be confounded. The inventor who declines to put his patent into use occupies toward society an attitude entirely distinct from the inventor who is using his invention in a way that injuriously affects society. I am not sure that an inventor is not bound either to use his-invention, or permit others to use it. The Supreme Court has not yet passed upon that question. But however that may be, the doctrine cannot be invoked in aid of a pernicious use. Non-use is not, in itself, .pernicious, and inflicts no moral injury on society. At most, it is the withholding only of what society, but for the invention, would possibly never have had. But pernicious use is something different. It does not deny simply to society the present benefit of an invention— it visits upon society an affirmative moral harm. Pernicious use injures where non-use only withholds; wounds, where non-use only declines to help.
It may be doubted if complainant comes into equity with clean hands, even under the limitation that unclean hands is not a disability to be extended to any misconduct unconnected with the matter in litigation, or with anything with which the opposite party has no-concern. A patent is not a private contract, nor a transaction between private individuals. It is a contract between the patentee and the public; and to every suit brought to enforce the patent, the public is beneficially a party. How a patentee has used his contract right, and' how he intends to use it in the future, is a matter not unconnected with the public’s interest in the litigation, and comes, therefore, to be a pertinent inquiry when an enforcement of his contract rights is asked for.
I would not, in the case under consideration, have the court, upon the facts presented, pass upon the validity or invalidity of the patent. The court should stand aloof from the whole transaction, not because the pernicious use is a defense that lies in appellee’s mouth, but because it is a consideration the public may interpose, and because to issue the-writ under such circumstances, would be to pollute the writ itself. The issuance of the writ, upon the case presented, will involve the court as an abettor in practices universally denounced and legislated against as harmful to the public morals. It will be an injunction in aid of crime. When the patentee comes into court with some conscionable use for his invention, or even with a non-use divorced from unconscionable use, it will be time to consider his claim for a writ; until that time, he should be shown the chancellor’s back.
The decree is reversed, with the direction to enter a decree in appellant’s favor for an injunction and ah accounting.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8749647. Public record. Not legal advice.