the injunction is applied for before an answer has been filed, the plaintiff, in addition to the allegations in his bill, must read affidavits to show his title, and the fact of infringement, especially if the defendant appears and offers evidence against the one or the other; and these affidavits should, in strictness, cover the issue of the patent, the novelty of the invention, and all other facts necessary to the title. It is believed, however, that in our practice, where the whole title is set out in the bill, which is sworn to, if the defendant does not read affidavits denying the title, it is not usual to read them in support of the title, which is considered as verified by the bill itself. But, if the defendant attacks the title by affidavit, it must be supported by auxiliary proof in addition to the bill, in order to make out the prima facie right to an injunction.

§ 443. In one of the circuit courts of the United States some doubt has been thrown over the question, whether the plaintiff is at liberty to read affidavits in support of his title, after an answer denying it. Mr. Justice McLean has held, that on an application for an injunction, after an answer, the plaintiff is not entitled to read affidavits to contradict the answer upon the point of title.2 Mr. Justice Woodbury, on the contrary, has held, that the plaintiff may show from counter-evidence that the case is different from that disclosed in the affidavits, or answer of the defendant, and thus proceed to fortify his right to an injunction.3 I am inclined, after some examination of the point, to think that the latter is the more correct opinion. It is settled, in the first circuit, by a de

1 3 Daniels Ch. Pr. 1890, 1891, Amer. edit. 1846; Hindmarch on Patents, 332, and cases cited.

2 Brooks v. Bicknell, 3 McLean, 250, 255.

Orr v. Littlefield, 1 Woodb. & Min. 13, 19. See the observations cited from this case, ante.

4. If Mr. Justice McLean is to be understood to mean that the plaintiff is not at liberty to read affidavits in support of the novelty of his invention, after an answer denying it, it would seem that the practice and other authorities are opposed to his position. In the case above cited (Brooks v. Bicknell), the principal ground of objection to the plaintiff's title was, that the patent had been illegally extended; and the opinion does not expressly affirm that the plaintiff may not adduce evidence against the answer, to support the novelty of his invention, although this is implied in the observations of the court. It is, however, clear, that there is a distinction between common and special injunctions on this point. In Hill v. Thompson, 3 Meriv. 622, 624, the leading case on the subject of injunetions in patent causes, where Lord Eldon laid down the rules that have since been

cision referred to in the note below, by Mr. Justice Story, that the whole question of granting or dissolving injunctions, in cases of followed by all judges, an injunction had been obtained until answer, or further order; on the coming in of the answer, the defendants moved to dissolve. The report does not expressly state that the answer denied the validity of the patent, but as this was the only question discussed, it is obvious that the answer must have contained such a denial; and it appears that a variety of affidavits were produced on both sides, tending respectively to impeach, and to assert the validity of the patent, and of the injunction to restrain the breach of it; and amongst them, was an affidavit by the plaintiff on the point of novelty. The same reasons for allowing affidavits of title to be read on a motion for dissolving an injunction, apply to motions for granting it, in the first instance, where the answer has been filed. Now, upon the practice of reading such affidavits on a motion to dissolve, there has been a considerable conflict of decisions. But a distinction was adopted, at a very early period, with regard to injunctions for restraining certain wrongful acts of a special nature, as distinguished from the common injunction for staying proceedings at law. It is the settled practice of the court, in England, to allow affidavits to be read, at certain stages, against the answer, in cases of waste, and of injuries in the nature of waste; but, in cases of waste, they must be confined to the acts of waste, and the title, it is said, must be taken from the answer. Drewry on Injunc. 429; Gibbs v. Cole, 3 P. Will. 255; Norway v. Rowe, 19 Ves. 146, 153; Smythe v. Smythe, 1 Swanst. 254, and cases collected in the note. The question is, whether the same rule applies to cases of patents, or, whether they do not stand, in respect to the admission of affidavits on the point of title, upon the reason of the rule which permits affidavits in cases of waste upon the facts of waste. The ground of permitting affidavits to be read on the part of the plaintiff, in cases of waste, is, that the mischief is irreparable; the timber, if cut, cannot be set up again, so that the mischief, if permitted, cannot be retrieved. The same reason exists in cases of partnership, by analogy to waste. Peacock v. Peacock, 19 Ves. 49. Does not this reason apply to a denial of the novelty of the plaintiff's invention? Such a denial in the answer the defendant has a right to make, and to have it tried at law; but if the denial is to be taken as true, on a motion to grant or to dissolve an injunction, it may work an irreparable mischief before the plaintiff can establish his right at law; and yet, this is the consequence of adopting the rule, that, in cases of patents, the title is to be taken from the answer, on motions for an injunction. The court must either assume that the denial in the answer, upon the point of novelty, is true, and, therefore, the plaintiff cannot have an injunction in any case, of however long possession, where the defendant chooses to make this denial; or it must say, that, however strong the denial in the answer, the plaintiff shall always have his injunction; or it must look into the evidence on both sides sufficiently to determine whether it is probable that the plaintiff will be able to establish his patent, and grant or withhold the injunction accordingly. The latter was the course taken by Mr. Justice Woodbury, in Orr v. Littlefield, where, however, an answer had not been filed, the defendant relying on affidavits; but the reasoning of the learned judge makes the same course applicable to cases where the equity of the bill is denied by the answer. See the observations of the court, cited ante. There is a dictum of Lord Lang

irreparable mischief, rests in the sound discretion of the court, after answer, as well as before.

It is also decided, in the second circuit, that where in an application for a provisional injunction the plaintiffs read affidavits in support of the bill, which are met by affidavits from the defendant setting up a license in defence, there the court may, under rule 107, and the emendation of May, 1846, permit the plaintiff to put in proofs of rebuttal of the defence, but that the defendant cannot reply to such rebutting proofs by further evidence on his part. Also, that the order admitting such proofs is regular, although not made until such rebutting proofs are received.1

dale, M. R., in Wilson v. Tindal, Webs. Pat. Cas. 730 note (cited ante), that "notwithstanding this order (the injunction) the defendant may put in his answer, he may displace all the affidavits which have been filed on both sides." This I conceive to mean merely, that the defendant may show such a case in his answer, as to control the primâ facie case made by the plaintiff; and not that the answer necessarily displaces the affidavits before filed. In Poor v. Carleton, 3 Sumner, 70, 83, Mr. Justice Story reviewed this whole subject, and laid down the broad doctrine that the granting and dissolving injunctions, in cases of irreparable mischief, rests in the sound discretion of the court, whether applied for before or after answer; and that affidavits may, after answer, be read by the plaintiff to support the injunction, as well as by the defendant to repel it, although the answer contradicts the substantial facts of the bill, and the affidavits of the plaintiff are in contradiction of the answer.

1 Day v. New England Car Spring Co., 3 Blatchf. 154. "The rule of proceeding applicable to injunctions must govern this case. The plaintiff has set out his rights and his injuries by his bill; and the defendants must be prepared to make their entire defence thereto, by showing in the first instance, by their answer or by affidavits, a want of right in the plaintiffs or a superior right in themselves. The law allows the plaintiff to obviate such defence by suppletory or rebutting evidence, and precludes the defendants from replying to such rebutting evidence by further proofs on their part. This is alike the rule at law and in equity. No court permits a defendant to make a new defence to proofs or arguments made in reply to his own. He has one hearing or chance alone, and must abide the advantage placed in the hands of the plaintiff. But this disadvantage to a defendant is not perpetual. The defendants can file their answer to the bill and move to dissolve the injunction; or they can appeal to the discretion of the court to award only a qualified one, &c.

"As this case stands, the defendants can meet it upon this motion, only by showing, from the depositions and documents before the court, that the plaintiff has no title, or that a paramount legal or equitable right is vested in them. This I understand to be, in a proceeding by injunction bill to stay waste or prevent the infringement of patent rights, the established practice of this court and of the English Court of Chancery." Rule 107 of this Court, in Eq.; Rule, May, 1846; 1 Blatchf. 656; 3 Daniels, Ch. Pract. 1885, 1886, notes; 2 Waterman's Eden on Injunct. 384, 385, notes.

CHAPTER XI.

QUESTIONS OF LAW AND QUESTIONS OF FACT.

§ 444. THE several provinces of the court and the jury in the trial of patent causes have already been incidentally alluded to, but it may be proper to give here a summary of the principal questions which constitute matters of fact and matters of law.

§ 445. As to novelty. Under this general head there are several distinctions to be carefully observed. Novelty, as the term is generally employed, embraces only the topics of invention and identity. But it is evident that, where there is no dispute either as to identity or invention, the question may arise: granting the patent to be what the patentee claims it to be, can the court, without aid of the jury, say that the invention as it stands has been made known to the public? This issue arose in the case of Lang v. Gisborne1 (already discussed in the chapter on Action at Law). The plan of the target invented and patented by the plaintiff was admitted to be identical with that made by the defendant, and also with one described in a work which was published in Paris before the patentee's application, and of which several copies had been sold in England. The only question, therefore, before the court, was, whether the sale of a few copies, unaccompanied by evidence of subsequent public user, did amount to a publication in law such as would entitle the court to reject the plaintiff's application. The Master of the Rolls held that such a sale was a publication in law, and that the question could not be affected by any consideration of the number of the persons who might or might not be proved to have thought it proper to avail themselves of the publication.

This opinion is, we think, substantially embodied in the ruling of the Court of Common Pleas, in the case of Stead v. Williams.2 It must, however, be observed, that this latter case differs from that of Lang v. Gisborne, inasmuch as the question of identity was also raised, and that therefore it was not only proper, but necessary, for the court to submit the question of prior publication to the jury, upon the whole of the evidence. In Lang v. Gisborne, on the con16 Law Times, N. s. 771. 22 Webs. Pat. Cas. 126.

trary, no such point was at issue, but the whole resolved itself into a question of pure law. Making, then, this qualification, we think that the Common Pleas and the Master of the Rolls are of accord on the question what effect is to be given to publications. At the jury trial, Cresswell, J. had instructed the jury thus: "But then the defendants do not bring home to the plaintiff the fact of his having seen any of those publications; and it is for you to judge, upon the whole of the matter, whether you think that he had seen those publications, and had derived his information from the stock of knowledge previously given to the public of this country," &c. This ruling was appealed from, and a new trial was granted on the ground of misdirection. Tindal, C. J. observes: "On a full consideration of the subject, we have come to the conclusion that the view taken by the defendants' counsel is substantially correct; for we think, if the invention has already been made public in England, by a description contained in a work whether written or printed, which has been publicly circulated, in such case the patentee is not the first and true inventor within the meaning of the statute, whether he has himself borrowed his invention from such publication or not; because we think the public cannot be precluded from the right of using such information as they were already possessed of at the time the patent was granted. It is obvious that the application of this principle must depend upon the particular circumstances which are brought to bear on each particular case. The existence of a single copy of a work, though printed, brought from a depository where it has long been kept in a state of obscurity, would afford a very different inference from the publication of an encyclopædia or other work in general circulation."

§ 446. Passing then to the question whether the patentee was the inventor of the thing patented, and whether the thing patented is substantially different from anything before known, an issue which, in distinction from the one treated of in the preceding paragraph, might be called the material one, we find it broadly stated in a number of cases, that it is a question for the decision of the jury, and that the sole province of the court consists in giving the proper instructions as to what constitutes novelty and sufficiency of invention to sustain a patent.1

1 Whittemore v. Cutter, 1 Gall. 478; Lowell v. Lewis, 1 Mas. 182; Carver v. Braintree Manuf. Co., 2 Story's R. 432; Washburn v. Gould, 3 Story's R. 122;