50 . · n FEDERAL nE1>oE·rEE.
which admitted of the device being used in connection with the cres-
cent·shaped saddles, which were the subject of his second claim.
This disposes of the case if the respondent is permitted to put its
defense upon the invalidity of the complainant’s patents.
It is, however, strenuously argued by complainant’s counsel that
the respondent is estopped from denying the validity of the Stewart
patent, both the original and the reissue, because the Bemis Car-box
Company, from which the respondent purchased the wheels and axle-
boxes complained of, had recognized the validity of their patent by
entering into a written agreement, in which it acknowledged that
similar boxes made by it we1·e infringements, and agreed to pay a
· sum in compensation therefor, and accepted a license to continue to
make similar boxes under the reissued patent during its term, the
complainant, however, reserving in that agreement the exclusive
right to make the wheels and axles to be used with such boxes. With
V regard to this position assumed by the complainant, two things are
to be observed: First, that it is not suggested anywhere in the bill
of complaint; and second, that the present respondent is not pretended
to have been a party to the written agreement. The bill of complaint
makes no allegation whatever'with regard to any license, and dis-
closes nothing whatever with regard to it. It is, in form, the usual
bill of complaint against an infringer praying for an injunction and
an account of prohts, and alleges that the respondent, “without license
of your orators and against their will, and in violation of their rights,
have used, etc., the said improvement."
The answer, after setting up the defenses of want of novelty and
invalidity of the Stewart reissued patent, avers, upon information
and belief, that the Bemis Car-box Company was, by the writing of
January 25, 1881, licensed by the complainant to make the axle-
boxes purchased by the respondent. To this answer the complain-
ant filed a general replication. These pleadings show that the com-
plainant, as the foundation of his case, treats the license as forfeited,
and as no longer having any force or efficacy. It is true that in a
case in which the licensor affirms the contract, and is pursuing his
remedies under it, the licensee is estopped from denying the validity
, ofthe patent; but it cannot be declared void by one party, and yet
estop the other. Burr v. Dumyee, 2 Fisher, 283. But, without regard
to the pleadings, I do not see how the proposition can be maintained
_ that the respondent, who is not a party to the written agreement,
can be estopped by its admissions. If the license is still in force, the
complainants only remedy is against the Bemis Car-box Company;
if it is not in force, then the complainant was right in proceeding
against the respondent as an ordinary infringer. ‘ _
It is to be noticed, also, that the estoppel, to avail in this case, must
go further than a mere acquiescence in the validity of the Stewart
reissue: it must go tothe extent of admitting that the wheels and
boxes used by respondent are infringements, notwithstanding the ab-