when it appears that the complainant, or those to whose rights he has succeeded, have acquiesced for a long term of years in the infringement of the exclusive right conferred by the patent, or have delayed, without legal excuse, the prosecution of those who have openly violated it.' These general principles find ample support in many cases."
Laches and estoppel are equitable defenses, which may be set up in the present action at law. In 32 C.J. p. 84, par. 70, it is stated: "* * * The power of courts of equity in a proper case to enjoin actions or proceedings at law is of long settled standing, and rests on the clear authority vested in them over persons within their jurisdiction."
In 32 C.J. p. 101, par. 100, it is also stated: "Except where the rule is modified or abrogated by statute, the existence of an equitable defense which cannot be made available as a defense in an action at law is sufficient ground for an injunction to restrain proceedings at law. The court of equity in such a case will enjoin the suit at law, and will itself assume jurisdiction of the entire cause and do complete justice between the parties."
The Act of March 3, 1915, c. 90, 38 Stat. 956, 28 USCA § 398, provides: "In all actions at law equitable defenses may be interposed by answer, plea, or replication without the necessity of filing a bill on the equity side of the court. The defendant shall have the same rights in such as if he had filed a bill embodying the defense or seeking the relief prayed for in such answer or plea."
In Liberty Oil Co. v. Condon National Bank et al., 260 U.S. 235, on page 242, 43 S. Ct. 118, 121, 67 L. Ed. 232, Chief Justice Taft said: "Where an equitable defense is interposed to a suit at law, the equitable issue raised should first be disposed of as in a court of equity, and then, if an issue at law remains, it is triable to a jury. Massie v. Stradford, 17 Ohio St. 596; Dodsworth v. Hopple, 33 Ohio St. 16, 18; Taylor v. Standard Brick Co., 66 Ohio St. 360, 366, 64 N.E. 428; Sutherland Code Pl. and Pr. § 1157. The equitable defense makes the issue equitable, and it is to be tried to the judge as a chancellor. The right of trial by jury is preserved exactly as it was at common law. The same order is preserved as under the system of separate courts. If a defendant at law had an equitable defense, he resorted to a bill in equity to enjoin the suit at law until he could make his equitable defense effective by a hearing before the chancellor. The hearing on that bill was before the chancellor, and not before a jury, and, if the prayer of the bill was granted, the injunction against the suit at law was made perpetual, and no jury trial ensued. If the injunction was denied, the suit at law proceeded to verdict and judgment. This was the practice in the courts of law and chancery in England when our Constitution and the Seventh Amendment were adopted, and it is in the light of such practice that the Seventh Amendment is to be construed."
In Ford v. Huff, 296 F. 652 (C.C.A. 5th Cir.) (certiorari refused 266 U.S. 602, 45 S. Ct. 90, 69 L. Ed. 462), an action at law was brought to recover a royalty alleged to be due the plaintiff for use of a patent after a delay of ten years in making claim therefor. The Circuit Court of Appeals held that the defendant had the right to set up the equitable defense of laches and estoppel, saying, on page 657 of 296 F.:
"It would not be consistent with equity and good conscience for plaintiff to enforce the claim asserted by this suit after he, with knowledge of the facts and under conditions inviting the assertion of that claim if it was relied on, acquiesced in defendant treating that claim as nonexistent; after he demanded and accepted payment of the balance of the reward mentioned as a final settlement of all claims based on the services rendered, and theretofore and thereafter for many years refrained from making the claim now asserted, while defendant, in reliance on the belief and understanding, induced by plaintiff's conduct, that such claim never existed or had been abandoned, was changing his position in such a way that he will be injured if plaintiff now is permitted to enforce his claim. Under equitable principles applicable to the state of facts alleged in the plea plaintiff has, by estoppel and laches, lost the right to enforce the claim asserted by him. Simmons v. Burlington, etc., R. Co., 159 U.S. 278, 291, 16 S. Ct. 1, 40 L. Ed. 150; Washington v. Opie, 145 U.S. 214, 12 S. Ct. 822 [36 L. Ed. 680]; Ward v. Sherman, 192 U.S. 168, 176, 24 S. Ct. 227, 48 L. Ed. 391; Moran v. Horsky, 178 U.S. 205, 20 S. Ct. 856, 44 L. Ed. 1038; 10 R.C.L. 694. The effect of one being estopped to enforce a claim is that his plight is substantially the same as it would have been if the claim had never existed.
"Under amended section 274b of the Judicial Code (38 Stat. 956 [Comp. St. § 1251b (28 USCA § 398)]), a defendant in an action at law who files a plea setting up an equitable defense is given the same rights as if he had set them up in a bill in equity. Liberty Oil Co. v. Condon National Bank, 260 U.S. 235, 43 S. Ct. 118, 67 L. Ed. 232. We are of opinion that a bill in equity disclosing the state of facts alleged in the plea in question would show that defendant was entitled to prevent the enforcement of the claim asserted by this suit on the ground that plaintiff's conduct had been such as to deprive him of the right to enforce that claim. The term 'equitable defenses,' within the meaning of section 274b of the Judicial Code, includes a state of facts which, by virtue of doctrines recognized by courts of equity alone, has the effect of barring, or rendering unenforceable against a defendant in a suit, the claim asserted by the plaintiff therein."
Similar rulings were made by the Supreme Court of Maine, in Clark v. Chase, 101 Me. 270, 64 A. 493, and by the Supreme Court of Mississippi, in Wall v. Harris, 90 Miss. 671, 44 So. 36. See, also, 32 C.J. 86; 4 Cyc. Fed. Procedure, p. 377, § 1165; Guffey v. Gulf Production Co., 17 F.2d 930 (C.C.A. 3d Cir.); Thorpe v. Filene's Sons Co., 40 F.2d 269 (D.C. Mass.).
I conclude that the equitable defense of laches and estoppel should be sustained.
Let an order be prepared and submitted in accordance with the foregoing findings of fact, conclusion of law, and this opinion.
© 1992-2004 VersusLaw Inc.