Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; William H. Holly, Judge.
Before EVANS and KERNER, Circuit Judges, and LINDLEY, District Judge.
Plaintiff sued defendant for infringement of its patent No. 2,060,645, covering a "tablet depositing machine." Both validity and infringement of said patent were denied. After defendant had taken the deposition of two of plaintiff's officers, it moved for summary judgment, and its motion was granted, upon the ground that the testimony showed plaintiff was using its patent to secure a monopoly of a non-patented article, to-wit, salt tablets.
The District Court, taking its guidance from the holdings in American Lecithin Co. v. Warfiedl Co., 7 Cir., 105 F.2d 207, 212; Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 58 S. Ct. 288, 82 L. Ed. 371; Carbice Corp. v. American Patents Development Corp., 283 U.S. 27, 51 S. Ct. 334, 75 L. Ed. 819; Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 60 S. Ct. 618, 84 L. Ed. 852, found:
"2. Plaintiff and its predecessor, Scientific Tablet Company, now dissolved, since 1927 have been in the business of manufacturing and selling salt tablets of predetermined content for use in the canning industry in lieu of loose salt or brine. They also manufactured or had manufactured for them machines under the patent in suit and also other machines under patents owned by them for depositing salt tablets. They did not sell but leased said machines made under the patent in suit and their other patents to commercial canners of vegetables, as tomatoes, and the like, in the many states wherein such canners are located. The leases were in writing and included a license to use the patented machine, upon the condition and agreement by the lessee that plaintiff's and its predecessor's salt tablets be used exclusively in said patented, leased machines.
"3. Plaintiff's salt tablets have a particular configuration which is required for use in plaintiff's depositing machines for continuous, untroubled use. But plaintiff's salt tablets are not patented. And anyone may lawfully make and sell them.
"4. The manufacture and sale of the salt tablets is and was the main business of plaintiff's predecessor and of plaintiff after it acquired that business in June, 1928, and which it has since carried on as a subsidiary company. The end and aim of the business was and is the sale of the salt tablets in which its profits lie. The patented depositing machine of the patent in suit and of other patents is a mere secondary adjunct.
"5. The defendant is in the business of mining, processing and selling salt for commercial canning and for other purposes. It also makes and sells salt tablets such as those made and sold by plaintiff for use in the canning industry. It also makes and leases salt tablet depositing machines to canners, and in particular the salt depositing machines charged to infringe the patent in suit.Defendant's salt tablet depositing machine is not patented."
"7. There is no genuine issue as to any material fact involved in the case."
The Facts. Plaintiff is a canning company which owns and operates a wholly owned subsidiary devoted to making and leasing a patented tablet depositing machine and to making and selling salt tablets of a particular design and configuration.
This last-named business is much smaller than plaintiff's main business, which is canning.
In addition to the principal use as a salt depositor, the machines have also been sold for "separating, picking up and depositing gelatine-enclosed lemon oil capsules."
Plaintiff and its predecessor pioneered in the salt tablet industry (placing salt of predetermined quantity in a definite amount of canned vegetables, through the use of salt tablets deposited by a machine) as applied to the canning industry and developed it to its present success.
Dismissal of its suit was due, not to the invalidity or non-infringement of its patent (which was not litigated) but to plaintiff's alleged efforts to monopolize the salt tablet business by inserting in its lease (paragraph 2) a provision that the licensee or ...