the patent after persistent opposition is evidence of its validity which only strong counter-proof can overcome."

§ 1184. Preliminary Injunction: Summation of Rules Concerning Prior Judgments as Evidence of Validity.

The foregoing doctrines concerning the effect of prior judgments sustaining the patent, as evidence on an application for an injunction, may be summed up as follows: A judgment of the Supreme Court, or of the Circuit court of the same circuit, upon the same issues and against the same defendant, is conclusive proof of the validity of the patent, unless new evidence has since been discovered or the judgment has been overruled or was originally obtained by fraud. A judgment in another circuit against the same defendant on the same issues is not conclusive, but is of high authority and can be overcome only by convincing evidence that the former tribunal was mistaken or insufficiently informed, except where a decree was rendered by consent, which is without authority unless it also appears that no defence against the patent could have been maintained. A judgment in the Patent Office in a contested case, if well considered, is of great weight against the party there defeated, and in the absence of opposing testimony is sufficient proof of the validity of the successful patent. No judgment is conclusive against persons who were neither parties nor privies to the suit; but where in any of these tribunals certain questions of law relating to the existence, scope, or validity of the patent have been once decided, after full examination and careful scrutiny, these decisions command more or less respect in other courts and causes, although the defendant was not interested in the prior action. Such a decision rendered by the Supreme Court, or the same Circuit court, is not departed from without clear evidence of error. If emanating from the Circuit court of another circuit, prima facie evidence that the makers of Faber (1875), 92 U. S. 347; 10 O. G. the defeated invention infringe, see 71. Holliday v. Pickhardt (1882), 22 O. G. 420; 12 Fed. Rep. 147.

That a decision of the Commissioner is not conclusive as to novelty, utility, or inventive skill, see Reckendorfer v.

6 That a special act of extension is conclusive on a motion for injunction, though alleged to have been procured by fraud, see Gibson v. Gifford (1850), 1 Blatch. 529.

except on decrees by consent, it has a value measured by the ability and experience of the judge, and the completeness of the presentation of the arguments against it. When it results from a contest in the Patent Office, it raises a presumption in favor of the patent on that question, which, in the absence of better reasons to the contrary, the courts will usually maintain. But in all cases where the prior judgment does not operate as an estoppel upon the defendant, the issue on the application for an injunction is open for fresh inquiry and determination, the judgment being merely evidence in favor of the plaintiff, and controlling the decision of the court only when not opposed by more convincing proof. Judgments against the patent are, for obvious reasons, of higher value and a wider influence, since a patent invalid upon any ground is invalid against all the world, and therefore any decision declaring it void, though in a different tribunal and between other parties, affords a presumption of its invalidity which the plaintiff can with difficulty overcome.1 When conflicting judgments have been rendered, the court must follow those which, in view of all the tests of authority, appear to have the higher value, and if the question is still doubtful, and no other evidence is offered, it must decide in favor of the patent.2 For though the patent, unsupported by a judgment, is

§ 1184. 1 That where the same Claims have in a former suit been adjudged to have been anticipated the suit will be dismissed, see Crandall v. Dare (1881), 11 Fed. Rep. 902.

That a decree of invalidity in the Federal courts is conclusive on the parties, see Hawks v. Swett (1875), 4 Hun, 146; 6 Thomp. & C. 529.

That a decision in one circuit that a patent is void for want of novelty will be followed in others, see Kidd v. Ransom (1888), 35 Fed. Rep. 588.

That an injunction will not be granted after successive defeats at law, where the novelty and infringement are in dispute and no public acquiescence appears, unless the plaintiff makes out a clear case, but the defendant will be ordered to try the case at the next

term under penalty of an injunction, see Serrell v. Collins (1857), 4 Blatch. 61.

That an injunction will be refused when several suits were brought against several defendants, and were all defended by one party, and injunctions have already been denied in some of them, and the defendant's case is ready for trial, see Wooster v. Howe Mach. Co. (1879), 16 O. G. 314; 4 Bann. & A. 319.

2 That an injunction may be granted where some judgments have sustained the patent though one has been adverse to its validity, see United States Stamping Co. v. King (1879), 17 Blatch. 55 4 Bann. & A. 469; 17 O. G. 1399; 7 Fed. Rep. 860.

That an injunction will be granted

not sufficient proof of its own validity for the purposes of an injunction, yet when sustained by judgments it outweighs all other judgments of an equal value.

§ 1185. Preliminary Injunction: Public Acquiescence as Evidence of Validity: Acquiescence Defined.

Where no judgment sustaining the patent upon the issues presented on the application for an injunction can be offered, or where if offered the judgment is of doubtful value, the deficiency may be supplied by proof of a public acquiescence in the claims of the patent of sufficient definiteness and duration to afford a reasonable presumption of its validity.'

Acquiescence, in reference to this subject, is a voluntary submission, against interest, to an asserted right. In the first

thing more than a grant of letters-patent must be shown; something which, in the absence of a trial at law, may take its place in establishing, or presumptively establishing, the validity of the patent. This may be done by showing an exclusive possession and exercise of the right granted. In proof of such possession it must appear that the patentee after the grant of his exclusive right has proceeded to exercise that right for some years without being disturbed. (Orr v. Littlefield, 1 W. & M. 13.) This he may prove by showing that he has manufactured and sold ma chines repeatedly, or has sold to others the right to make, vend, and use the thing patented, and if the public acquiesce in this exclusive exercise of his right, it affords some ground for presuming that the patent is valid."

In Potter v. Muller (1864), 2 Fisher, 465, Leavitt, J.: (467) "The rule as to granting or continuing injunctions in patent-right cases is now well settled by the modern usages of the courts of the United States. They are now granted without a previous trial at law in cases where the owner of the patent shows a clear case of infringement, and has been in the possession and enjoyment of the exclusive right for a term of years without any successful impeachment of its validity. Such possession and enjoy ment, aided by the presumptions arising from the patent itself, are usually regarded as sufficient to warrant an injunction to restrain infringement."

In Orr v. Littlefield (1845), 1 W. & M. 13, Woodbury, J.: (16) "If the patentee, after the procurement of his patent conferring an exclusive right, proceeds to put that right into exercise or use for some years, without its being disturbed, that circumstance strength

ens much the probability that the patent is good, and renders it so likely as alone often to justify the issue of an injunction in aid of it." 2 Robb, 323 (326).

See also Brown v. Hinkley (1873), 3 O. G. 384; 6 Fisher, 370; Miller v. Androscoggin Pulp Co. (1872), 1 O. G. 409; 5 Fisher, 340; Holmes, 142; Guidet v. Palmer (1872), 6 Fisher, 82; 10 Blatch. 217; Sargent v. Carter (1857), 1 Fisher, 277; Sargent v. Seagrave (1855), 2 Curtis, 553; Brooks v. Norcross (1851), 2 Fisher, 661; Thomas v. Weeks (1827), Paine, 92 and notes; Sullivan v. Redfield (1825), 1 Paine, 441; 1 Robb, 477; Isaacs v. Cooper (1821), 4 Wash. 259; 1 Robb, 332.

That acceptance by the public is evidence of patentability, see Strobridge v. Lindsay (1880), 18 O. G. 62; 2 Fed. Rep. 692; 5 Bann. & A. 411.

That acquiescence must indicate a recognition of the validity of the plaintiff's patent, and this, in the absence of a judgment of validity, is important, see Sargent v. Seagrave (1855), 2 Curtis, 553.

That an injunction will issue when sufficient acquiescence is shown if the plaintiff's interest requires it, though some doubt as to the validity of the patent may remain, see Sargent v. Seagrave (1855), 2 Curtis, 553.

That an injunction will issue where the plaintiff has been for years in the undisputed use of his patents with the acquiescence of the public, unless spe cial facts take the case out of the gen. eral rule, see McKay v. Dibert (1881), 5 Fed. Rep. 587; 19 O. G. 1351.

That the use and sale of the inven tion by the plaintiff before he applied for a patent, and the acquiescence of the public in his exclusive claims, is to be § 1185

place, the right must be asserted. The issue of a patent is not, of itself, such an assertion. Where the patentee alone employs the invention, in secret or on his own premises, without competition or attracting public notice, or where he neither exposes his monopoly to violation nor vindicates it when it is attacked, there is no right asserted in which the public or an individual can acquiesce.2 Again, the asserted right must be antagonistic to the public interest, at least to the interest of that portion of the public who are generally benefited by the use of such inventions. If the invention is without utility, or if through some mistake as to its character the public are convinced that it is worthless, and there is no demand for or desire to use it, their passive indifference to the exclusive claim of the inventor indicates no public rec

considered on a motion for an injunction, see Sargent v. Seagrave (1855), 2 Curtis, 553.

That previous user by the inventor and others is not necessary where the patent has been sustained by the courts, especially where the patent is for a process, see American Middlings Purifier Co. v. Christian (1877), 4 Dillon, 448; 3 Bann. & A. 42.

2 In Tappan v. National Bank Note Co. (1861), 2 Fisher, 195, Shipman, J.: (198) The principle that exclusive possession for a time strengthens the title of a patentee is founded on the idea that as it is a claim of right adverse to the public, and the public ac'quiesce in that claim, such acquiescence raises a presumption that the claim is good. But no such presumption can be raised in this case. There is no evidence that the public, or that small portion of it who would be likely to avail themselves of this invention knew even of its existence, much less of the existence of an exclusive grant to this patentee or to any one else. Nor, in this view of the case, can I take into account the possession of the right and the use of the invention before the ap

case,

This

plication or grant of the patent.
is sometimes done on the principle laid
down in Sargent v. Seagrave, 2 Curtis,
555. But, of course, the use, in such a
must be a public one under an
avowed claim of a right to a patent;
otherwise, there is no exclusive posses.
sion as against the public, and no claim
in which the public can acquiesce." 4
Blatch. 509 (512).

That proof showing that the plaintiff, while manufacturing under his own patent in his own shop, met with no competition does not establish acquies. cence, see Grover & Baker Sewing Mach. Co. v. Williams (1860), 2 Fisher, 133.

That on motion for injunction it is important that the invention has never been put in the market, nor the patent litigated, nor its validity accepted, see Irwin v. McRoberts (1879), 16 O. G. 853; 4 Bann. & A. 411.

That an injunction will be denied unless the scope of the patent has been defined by the courts, or by the acquiescence of that part of the public who are cognizant of the monopoly, see Steam Gauge & Lantern Co. v. Miller (1881), 8 Fed. Rep. 314; 20 O. G. 889.

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