RECENT
CASES
Equity-Doctrine
of
Clean
Hands
as
Applied to
Separate
Causes
of
Action-[Feder-
al].-In
a
suit
for
infringement
of
five
patents, the
first
a
basic
one
and
the
others
for
improvements,
plaintiff's
lack
of
clean
hands
was
set
up
as
a
defense.
Before
plaintiff
had
conceived
of
the
device
embodied
in
the
first
improvement,
a
supposed
prior
use
thereof
had
been
made.
Several
years
later
plaintiff learned
of
this
fact,
and
secured
from
the
prior
user
an
assignment
of
all
his
rights
and
an
agreement
to
suppress
evi-
dence
as
to
the
use.
Subsequently,
in
a
suit
against
one
Byers, plaintiff
obtained a
de-
cree
of
validity
and
infringement
of
three
patents,
including
the
one
supposedly
invali-
dated
by the
prior
use.
Immediately
thereafter
he
instituted
the
present
suit,
alleging
infringement
by the
defendants
of
the
same
patents
as
were
involved
in
the
prior
ac-
tion, and
sought
a
temporary injunction,
partly
on
the
basis
of
the
prior
decree.
The
injunction
was refused.
Plaintiff
later
amended
his
complaint
to
include
claims
of
in-
fringement
of
the
remaining
two
patents,
and
continued
to
trial.
Held,
the
transaction
with
the
prior
user,
and
the
employment
of
the
prior
decree
(secured
in
part
by
sup-
pressing
evidence)
in
applying
for
a temporary injunction,
were
so
unconscionable
as
to
bar
plaintiff
from
relief,
in
this suit,
as
to any
patent.
Keystone
Driller
Co.
v.
General
Excavator
Co.,
54
Sup.
Ct.
146
(1933).
The
maxim
that
he
who
comes
into equity must
come
with
clean
hands
arose
in
early times
when
exercise of
the
powers
of
a court
of
equity
was
largely
a
matter
of
dis-
cretion.
i
Pomeroy,
Equity
Jurisprudence
(4
th
ed.
1918),
739,
§
398.
Generally
the
maxim
will
be applied
only
in
favor
of
a
person
substantially injured
by
the
acts
of
which he
complains.
Meyer
v.
Yesser,
32
Ind.
294
(1869);
Halladay
v.
Faurot,
8
Ohio
Dec. Rep.
633
(1883);
Langdon
v.
Templeton,
66
Vt.
173,
28
Atl.
866
(1893);
Langley
v.
Devlin,
95
Wash.
171,
163
Pac.
395
(1917).
The
maxim
has
not
been
applied
where
the
harm
to
the
defendant
is small,
and
the
injury
to
the
plaintiff
through
denying
re-
lief
would
be great.
Valley Smokeless Coal
Co.
v.
Manufacturers'
Water
Co.,
302
Pa.
232,
153
Atl.
327
(1930);
McNair
v.
Benson,
63
Ore.
66,
126
Pac.
20
(1912);
Bias
v.
Bias,
155
S.E.
898
(W.Va.
193o);
Huntzicker
v.
Crocker,
135
Wisc.
38,
115
N.W.
340
(i9o8).
Several exceptions
to
this
general
rule
have
evolved.
It
has
been suggested
that
where
plaintiff
has
a
fraudulent
intent
and
commits
an
overt
act
in
attempting
to
effectuate
that
intent,
he
comes
within
the
maxim
irrespective
of
injury
to
the
de-
fendant.
See
Curtin
v.
Benson,
222
U.S.
78,
85,
32
Sup.
Ct.
31,
56
L.
Ed.
102
(1911);
Peltzer
v.
Gilbert,
26o
Mo.
500,
521-522,
169
S.W.
257
(194);
Cook
v.
Chapman,
30
N.J.
Eq.
114,
118
(1878).
It
has
also
been
held
sufficient
for
the
maxim
to
be applied
to
show
that
plaintiff's
acts constituted
a
fraud
on
the
public,
or
were
criminally
punishable.
Worden
&
Co.
v.
California
Syrup
Co.,
187
U.S.
516,
23
Sup.
Ct.
*6i,
47
L.
Ed.
282
(i9o3);
American
University
v.
Wood,
294
Ill.
i86,
128
N.E.
330
(1920);
Munn
&
Co.
v.
American
Co.,
83
N.J.
Eq.
309,
41
Atl.
87
(i914);
but
cf.
General
Electric
Co.
v.
Minn.
Electric
Lamp
Co.,
io
F.
(2d)
85i
(D.
C.
Minn.
i924);
Carson
Inv.
Co.
v.
Anaconda
Copper
Co.,
26
F.
(2d)
65i
(C.C.A. 9
th
1928);
i
Walker,
Patents
(6th
ed.
1929),
720,
§
625.
It
is
not
sufficient,
however,
to
show
that
plaintiff
has
committed
a
reprehensible,
fraudulent
or
criminal
act;
that
act
must
be
closely
related to
the
subject
matter
of
the
suit
in
which
the
defense is
set
up.
i
Pomeroy,
Equity
Jurisprudence
(4
th
ed.
i9r8),
741,
§
399.
Thus,
inequitable
conduct
with
respect
to
one claim
or
"cause
of
action"
has
been
held
not
to
bar
other
claims
or
"causes
of
action"
in
the
same
suit.
