departure from principles so long established will be ultimately sustained is doubtful, the evils resulting from ex parte injunctions, especially in cases of infringement, being out of all proportion to the benefits obtained by an abandonment of the ancient practice. If notice is required, it must be reasonable in view of all the circumstances of the parties, but may be waived by the appearance of the defendant. When he appears, he may in his answer admit the truth of the averments contained in the application, or traverse or avoid them, wholly or in part. The answer to an application for an injunction is subject to the same general rules as an answer to an original bill. It confesses whatever it does not deny, and where its denial relates to any point involving the validity of the patent it must set forth the particular facts on which the denial rests. If the defendant does not appear, the hearing will proceed ex parte on the application and the evidence presented by the plaintiff."

§ 1208. Preliminary Injunction: Questions Arising on the Application.

Among the material questions arising on the hearing are: the nature of the invention; the standing of the plaintiff in the trade; the character and extent of the infringement; whether the defendant makes and sells or only uses the invention, the former being an increasing wrong; the responsibility of the defendant for the damages and profits, if recovered; and the inconvenience to the respective parties of denying or allowing the injunction. Whether the plaintiff can enjoy his

4 That an injunction will issue where the defendant has actual notice of the motion and appears, though the service of the subpoena on him was irregular, see Thayer v. Wales (1871), 5 Fisher, 130; 9 Blatch. 170.

5 That on a motion to grant or continue an injunction an answer to the bill for injunction, though filed without a rule, will be treated as an answer, see Brooks v. Bicknell (1843), 3 McLean, 250; 2 Robb, 118.

in reply to a motion for an injunction, a prior use in general on his knowledge and belief, but must set out particulars of the information on which his allegation rests, see Young v. Lippman (1872), 2 O. G. 249; 5 Fisher, 230; 9 Blatch. 277.

7 That a motion for an injunction is an ex parte proceeding, see Potter v. Whitney (1866), 3 Fisher, 77; 1 Lowell, 87.

§ 1208. 1 In Furbush v. Bradford 6 That the defendant cannot allege, (1858), 1 Fisher, 317, Curtis, J.: (318)

own invention without invading other patents, and whether his conduct has misled the defendant where no fraud or estoppel can be claimed, are immaterial.2

§ 1209. Preliminary Injunction: Hearing: Production of Evi

The evidence on the hearing is presented by affidavits. Those of the plaintiff usually accompany the application; those of the defendant follow with his answer; and the plaintiff closes in rebutter, no reply on behalf of the defendant being permitted. Each party is allowed a reasonable

time to inspect the affidavits of the other and to prepare his own, and evidence not thus submitted to inspection cannot be regarded by the court. The proper evidence in support of the patent is the patent itself, with its renewals and extensions, judgments sustaining it at law or equity, the acquiescence of the public in the exclusive possession of the plaintiff, and special injunctions against the defendant or other infringers.2 The evidence of the plaintiff's title consists of the written instruments by which his legal interest was created, or the contracts or other circumstances which confer on him his equitable rights.3 The evidence of intended infringement must cover both the acts of the defendant and the identity of his device or process with that protected by the patent, the former being proved by his past conduct, threats, or preparations; the latter by judgments, expert testimony, or the personal inspection of the court. The defendant's evidence may be drawn from judgments, records, or any matters of fact which controvert or weaken the presumptions raised by the proof offered by the plaintiff.5

Goodyear v. Mullee (1868), 3 Fisher, tions against other parties; (7) Special 420. injunctions against the present defendant, see Woodworth v. Rogers (1847), 3 W. & M. 135; 2 Robb, 625.

That where the defendant on a motion for an injunction sets up new matter, as license, etc., the plaintiff may reply with more proofs, but the defendant cannot put in additional evidence to rebut such proofs, see Day v. New England Car Spring Co. (1854), 3 Blatch. 154.

That affidavits filed after the stipulated date cannot be considered on a motion for an injunction, see American Paper Barrel Co. v. Laraway (1886), 28 Fed. Rep. 141; 37 O. G. 674.

2 That a motion for an injunction may be supported by the following classes of evidence: (1) Letters-Patent; (2) Renewal of Patent; (3) Recovery in Equity; (4) Recovery at Law; (5) Possession and use; (6) Special injunc

> That where the right of a plaintiff to an injunction depends on a written instrument the court will construe it, and grant or refuse an injunction accordingly, see Hodge v. Hudson River R. R. Co. (1868), 6 Blatch. 165; Clum v. Brewer (1855), 2 Curtis, 506.

4 See § 1191 and notes, ante.

That where the plaintiff, on a motion for an injunction, offers extracts from certain documents to support his claims, the defendant may offer the whole documents in evidence upon the subsequent trial, see Western Union Telegraph Co. v. Baltimore & Ohio Telegraph Co. (1885), 23 Blatch. 419.

§ 1210. Preliminary Injunction: Ex Parte Hearings: Burden of

Proof.

When the hearing proceeds ex parte, through the failure of the defendant to appear and answer, if the plaintiff's affidavits show the issue of the patent and a judgment in its favor or an acquiescence by the public, and a probable infringement by the defendant, an injunction will issue though the court may have some doubt concerning the validity of the patent; but if the patent is defective on its face, or the title of the plaintiff is uncertain, an injunction will be refused.3 When the application is heard upon opposing evidence, and the plaintiff's affidavits make a prima facie case for an injunction, the defendant must present testimony sufficient to overcome the presumptions thus created, or prove the existence of other circumstances rendering the allowance of an injunction inexpedient. The application will be decided on broad views of the equitable rights of the parties. The court, from the nature of the proceeding, can examine only far enough to ascertain whether the plaintiff has or has not an apparent title to protection, and cannot, therefore, enter into inquiries concerning difficult questions of law or the

§ 1210 1 That an injunction will be granted almost of course if the patent has been sustained by a judgment and infringement is shown, see Wells v. Gill (1872), 6 Fisher, 89; 2 O. G. 590; Thayer v. Wales (1871), 5 Fisher, 130; 9 Blatch. 170.

That where there has been long enjoyment under the patent an injunction will be granted although a trial at law has already been ordered, see Brooks v. Norcross (1851), 2 Fisher, 661.

2 That an injunction will be denied if the patent is defective on its face, see Isaacs v. Cooper (1821), 4 Wash. 259; 1 Robb, 332.

That although on a prior suit the Claims of the patent were held to be too broad and invalid, yet disclaimer being filed, and an infringement now shown, an injunction and account will be ordered, see Terry Clock Co. v. New Haven Clock

Co. (1879), 17 O. G. 909; 4 Bann. & A. 121.

That where a patent has never been passed upon by the courts the first question on a motion for an injunction is whether there has been sufficient public acquiescence to raise a presumption in favor of the patent, see Guidet v. Palmer (1872), 6 Fisher, 82; 10 Blatch. 217.

That no injunction will issue to restrain a patentee, nor will equity otherwise interfere with him, unless the plaintiff has a patent, see Hoeltge v. Hoeller (1870), 2 Bond, 386.

That an injunction will be granted where the defence of prior use is not established, see Welling v. La Bau (1882), 12 Fed. Rep. 875.

That no injunction will be granted where validity and infringement are denied under oath unless the patent is sustained by a judgment or by long ac

weight and value of conflicting evidence. absence of any right in the plaintiff is so clear that no further litigation will be permitted; in others, the matter is so doubtful that its determination is postponed until the final hearing; in others, though not entirely satisfied of the justice of the plaintiff's claim, the court allows the injunction, as on the whole more consonant with equity than its denial.5

§ 1211. Preliminary Injunction: Form and Scope of Injunction. A preliminary injunction may contain a general or a limited prohibition, and may issue either alone or in connection with other special orders for relief. When certain Claims of the patent are disputed, the injunction may be confined to those which are unquestionably valid; and when certain infringing articles already used by the defendant cannot be equitably enjoined, he may be forbidden to procure others and employ them. When an injunction issues after the expiration of