McCullough

On June 28, 1941, the District Court for the Southern District of California entered interlocutory judgments holding the Reilly-Stone patent No. 1,625,391, owned by appellee Kammerer Corporation and licensed *344 to appellee Baash-Ross Toll Company, to be valid and infringed by appellant [ 39 F.Supp. 213 ]. A permanent injunction was granted 1 and appellant was -ordered to pay appellees such profits and damages as an accounting would show were sustained as a result of the infringement.

On appeal here we affirmed, 9 Cir., 138 F.2d 482 , and denied a petition for rehearing, 9 Cir., 143 F.2d 595 . Certiorari to the Supreme Court was sought and denied, 322 U.S. 739 , 64 S.Ct. 1056 , 88 L.Ed. 1573 , but granted on petition for rehearing, 322 U.S. 766 , 64 S.Ct. 1277 , 88 L.Ed. 1593 . The granting of certiorari was to consider the contention of appellant that appellee Kammerer’s license agreement with appellee Baash-Ross contained restrictions, unauthorized by the patent, against public policy and unlawful.

After hearing, the Supreme Court dismissed the writ of certiorari, 323 U.S. 327 , 65 S.Ct. 297, 298 , 89 L.Ed. 273 , holding that the “only question for which we granted certiorari…

(dissenting).

The Supreme Court has held that, where presented, the issue of the misuse of a patent, against the public interest, is “dominant.” The words of Mercoid Corp. v. Midcontinent Investment Co., 320 U.S. 661, 665 , 64 S.Ct. 268, 271 , 88 L.Ed. 376 , are that it is not the private use but “the public interest which is dominant.” Cf. Vitamin Technologists v. Wisconsin Alumni Research, 9 Cir., 146 F.2d 941, 944 .

Where the dominant public interest is violated the court will refuse all equitable relief, here the equitable relief of injunction and accounting. Mercoid Corp. v. Mid-continent Investment Co., supra, 320 U.S. 661, 670 , 64 S.Ct. 268 , 88 L.Ed. 376 . Such a dominant interest will be protected sua sponte by an appellate court where it discovers such violation. Beasley v. Texas & Pac. R. Co., 191 U.S. 492, 498 , 24 S.Ct. 164 , 48 L.Ed. 274 .

It is apparent that if the complaint here had tendered such a dominant issue, with the issues of validity and infringement, *346 and on a motion to dismiss that issue had been decided adversely to the plaintiff, and the issues of validity and infringement held for the plaintiff and an accounting ordered, the decision of the…