1 W. & M. 290; s. c. 2 Robb 479; Jones v. Hodges, 1 Holmes 37; Livingston v. Van Ingen, 1 Paine 45; s. c. 4 Am. L. J. 56; Winans v. Eaton, 1 Fish. 181; Smith v. Selden, 1 Blatch. 475; Cooper v. Mattheys, 5 Penn. L. J. 38; s. c. 8 Law. Rep. 413; Am. C. Loom Co. v. Manchester C. L. Co., 20 O. G. 372; Brewster v. Parry, 14 Fed. Rep. 694; Evans v. Kelley, 23 O. G. 192; s. c. 13 Fed. Rep. 903.

When the objection relates to the technical form or signature of papers connected with the letters patent, and the doubts arise from acts of public officers, and not any neglect or wrong of the patentee, the injunction should not be dissolved. More especially should an injunction once granted not be disturbed for such doubts, when the term for trial of the merits is near. Woodworth v. Hall, 1 W. & M. 389; s. c. 1 Robb 517. To warrant the exercise of the extraordinary power of the court in granting a preliminary injunction, the case presented should be free from ambiguity or confusion. Especially should this rule be applied to a case where the alleged infringement is in the disputed territory that lies between the limits fixed by the original patent and those fixed by the reissued patent, for whatever of difficulty or uncertainty there may be arising out of the difference between the two specifications is the fault or misfortune of the patentee, and not of the respondent, and should be borne by the former, and not the latter. Poppenhusen v. Falke, 2 Fish. 181; s. c. 4 Blatch. 493.

The existence of a substantial doubt as to the question of identity of the inventions described in a reissued patent and the original is a proper ground for refusing to grant a preliminary injunction. Poppenhusen v. Falke, 2 Fish. 181; s. c. 4 Blatch. 493; Grover & Baker S. Co. v. Williams, 2 Fish. 133.

A mere denial by an answer of the equity of the bill does not prevent the court from looking into the law and the facts of the case when a special injunction is moved for, and granting or refusing it according to its discretion. Where the title to an injunction does not depend upon any controverted or doubtful facts, but upon the interpretation to be put by the court upon a written instrument, the court should interpret it on such motion, and grant or refuse the injunction according to the result of that interpretation. There may be cases in which there is so much doubt what the parties to the instrument intended to effect by it, that the court may think it proper to suspend its judgment until the surrounding circumstances can be more fully and safely examined on a final hearing. It is possible, also, that where there are grave doubts concerning the legal effect of an instrument, the court might decline to interfere by special injunction, even though, if compelled to decide, their decision must be in favor of the complainant. Probably the circumstances of the case, and the degree of mischief which would be suffered by refusing the injunction, compared with the inconvenience and loss occasioned by granting it, would control the action of the court in the case supposed. But in general, if the title to a temporary injunction depends on the construction of a deed, the court will construe it and act accordingly, whatever

view of that question the answer may have presented. Clum v. Brewer, 2 Curt. 506; Goodyear v. Central R. R. Co., 1 Fish. 626; s. c. 2 Wall. Jr. 356; Hodge v. Hudson River R. R. Co., 6 Blatch. 165; s. c. 3 Fish. 410; U. S. Stamping Co. v. King, 17 O. G. 1399; s. c. 17 Blatch. 55; s. c. 4 Ban & Ard. 469; s. c. 7 Fed. Rep. 860.

To authorize a provisional injunction it is not necessary that all the grants of right to the patentee shall have been infringed. All that is required is that some of them shall have been so infringed. Potter v. Holland, 1 Fish. 382; s. c. 4 Blatch. 238.

A temporary injunction may be granted restraining the defendant from using the invention covered by some of the claims in the patent, and the question as to the others postponed until the case comes up for hearing upon the pleadings and proofs. Colt v. Young, 2 Blatch. 471.

It is doubtful whether a misjoinder of parties as plaintiff's can defeat a prayer for a preliminary injunction not to use an invention in which any of them are interested. Such a misjoinder can not probably be objected to at all in equity, though in the final judgment it will be entered up in favor of those alone who appear to have some right and interest to be protected. Woodworth v. Hall, 1 W. & M. 248, 389; s. c. 2 Robb 495, 417.

Though technical objections are to be weighed and examined and allowed to prevail if legal, yet they ought to be treated with no particular indulgence. In all inquiries in equity, the leaning in doubtful points must certainly be rather against than in favor of them, and more especially must it be so in preliminary injunctions where the decision is only temporary, and may be dissolved on motion at any time on showing fuller proof as to anything affecting the merits of the controversy. Woodworth v. Hall, 1 W. & M. 248, 389; s. c. 2 Robb 495, 417.

If the defendant's patent was granted after a full hearing before the patent office, on testimony taken on an interference declared between the application for such patent and the complainant's patent, a preliminary injunction will be denied. Asbestos Felting Co. v. U. S. & F. Felting Co., 13 Blatch. 453; s. c. 10 O. G. 828; s. c. 2 Ban & Ard. 369.

If the defendant resides out of the district and carries on the business there, in the course of which he committed the alleged infringement, the injunction may be refused. Goodyear v. Chaffee, 3 Blatch. 268; Jones v. Osgood, 3 Fish. 591; s. c. 6 Blatch. 435; Wilson Packing Co. v. Clapp, 13 O. G. 368; s. c. 8 Biss. 154; s. c. 3 Ban & Ard. 243; vide Thompson v. Mendelsohn, 5 Fish. 187; s. c. 8 Phila. 166.

The mere fact that several parties interested in a patent have made a common fund for the purpose of protecting their common rights by prosecuting infringers, is no ground for refusing an injunction. Potter v. Fuller, 2 Fish. 251.

A preliminary injunction can not be resorted to for the purpose of obtaining a contract, although the bid of the defendant is the lowest. American Pavement Co. v. Elizabeth, 4 Fish. 189.

An injunction is a proper remedy, because the supposed offence being constantly repeated, the causes of action and the multiplicity of suits would probably become much extended, and the relief at law prove very defective. It is useful as a bill of peace. Orr v. Littlefield, 1 W. & M. 13; s. c. 2 Robb 331.

If there appears from the affidavits such a repugnancy in point of fact as makes it necessary to decide on the relative truth of their conflicting statements or the credibility of the witnesses, no prudent judge will undertake so dangerous an inquiry in the first stage of the cause. The great object is to look for that full information which will lead his mind to a certainty as to all material facts, for doubt or uncertainty is fatal to the motion. Cooper v. Mattheys, 5 Penn. L. J. 38; s. c. 8 Law Rep. 413. In applying for an injunction, the patentee seeks either to interrupt the course of the common law, or to obtain some relief which he can not have at law. He must consequently state and make out a case for equitable relief, on such facts as bring his case within the jurisdiction of courts of equity and proper for its exercise. Hence, if he fails to satisfy the conscience of the chancellor affirmatively, he has no case before him, for the doubt or uncertainty as to facts is of the same effect on a motion as their non-existence. Cooper v. Mattheys, 5 Penn. L. J. 38; s. c. 8 Law Rep. 413; American Pavement Co. v. Elizabeth, 4 Fish. 189; Fales v. Wentworth, 5 Fish. 302; s. c. 1 Holmes 96; 2 O. G. 58; Gutta Percha Co. v. Goodyear Rubber Co., 3 Saw. 542.

If the defendant does not set up his patent in his answer, the fact that he has one will not prevent the granting of a preliminary injunction. Zinn v. Weiss, 7 Fed. Rep. 914.

Where a subsequent patent set up by the defendant contains in itself satisfactory evidence on its face, when read by experts, that its process involves an infringement of a prior patent, a provisional injunction will be granted. Goodyear Dental Co. v. Evans, 3 Fish. 390; s. c. 6 Blatch. 121.

If the patentee is able and willing to supply the market, an injunction will be granted, although the defendant is willing to accept a license. Baldwin v. Schultz, 5 Fish. 75; s. c. 9 Blatch. 494; 2 O. G. 315.

The remedy by injunction in patent cases is given by courts of equity, on account of the insufficiency of that given by a court of law. It is in its nature preventive, where irreparable mischiefs are apprehended, or when the patentee is likely to be vexed with a multiplicity of suits. Battin v. Silliman, 3 Wall. Jr. 124.

If the proof is insufficient, an injunction may be withheld until the complainant satisfactorily establishes the acquiescence of the public, and explains any apparent laches on his part. Sykes v. Manhattan Co., 6 Blatch. 496.

If the questions to be decided are difficult and complicated, especially if they involve disputed facts which have never been passed on by a court or jury, then, although the court may be inclined to think the complainant is right, yet it will not interfere, whether the questions relate to title or

H

infringement. There is, therefore, always an element of discretion entering into the consideration of this question, and all that a complainant is entitled to is the best judgment of the court upon a question of judicial discretion, and not absolutely to an injunction on any given state of facts. Potter v. Whitney, 3 Fish. 77; s. c. 1 Lowell 87; Jones v. Osgood, 3 Fish. 591; s. c. 6 Blatch. 435; Beane v. Orr, 9 O. G. 255; s. c. 2 Ban & Ard. 176; Tilghman v. Hartwell, 1 W. N. 52; Day v. Candee, 3 Fish. 9; Goodyear v. Hills, 3 Fish. 134; Wells v. Jacques, 5 Fish. 136.

If the patentee has stood by for many years without complaint or demand of compensation, this is conclusive proof that a continuance of a use of his invention for a few weeks or even months longer, if paid for in the end, will not be an injury of such an irreparable nature as to require the sharp and hasty remedy of an injunction. Parker v. Sears, 1 Fish. 93; Jones v. Merrill, 8 O. G. 401; Cooper v. Mattheys, 5 Penn. L. J. 38; s. c. 8 Law Rep. 413; North v. Kershaw, 4 Blatch. 70; Whitney v. Rollstone Machine Works, 8 O. G. 908; s. c. 2 Ban & Ard. 170; Goodyear v. Honsinger, 3 Fish. 147; s. c. 2 Biss. 1; Morris v. Lowell Manuf. Co., 8 Fish. 67; Spring v. Domestic S. M. Co., 16 O. G. 721 ; s. c. 4 Ban & Ard. 427 ; United Nickel Co. v. New H. S. M. Co., 24 O. G. 1177; Ballou Shoe Manuf. Co. v. Dizer, 5 Ban & Ard. 540.

Laches in applying for an injunction can not be imputed to a patentee unless he knows or has the means of knowing that there is an infringement. Wortendyke v. White, 2 Ban & Ard. 25.

Mere forbearance to sue after notice given by the complainant to the defendant to cease infringing the patent does not in the absence of any affirmative encouragement affect the right to a preliminary injunction. Collignon v. Hayes, 20 O. G. 447; s. c. 8 Fed. Rep. 912.

The laches of the complainant in permitting the defendant, with his knowledge, to use the patented article, is ground for refusing a preliminary injunction. Hockholzer v. Eager, 2 Saw. 361; Sloat v. Plympton, 2 Whart. Dig. 365; Sperry v. Ribbans, 3 Ban & Ard. 260.

A patentee can not be charged with acquiescence because he proceeded first against that which was a more palpable and obvious violation of his right, or because he did not bring suit against all the machines which infringed upon it. Van Hook v. Pendleton, 1 Blatch. 187; Green v. French, 16 O. G. 215; s. c. 4 Ban & Ard. 169; McWilliams Manuf. Co. v. Blundell, 22 O. G. 177; s. c. 11 Fed. Rep. 419.

A delay of three months after the discovery of the infringement before filing a bill is no ground for refusing an injunction where the defendant has not been induced to change his position. Union Paper Bag Co. v. Binney, 5 Fish. 166.

If the complainant has acquiesced in the manufacture of the thing patented by the defendant, with an understanding that the compensation should ultimately be fixed by agreement, and the defendant is ready to pay such compensation as the court may allow, the defendant will be permitted to complete his existing contracts. Smith v. Sharp's Rifle Co., 3 Blatch. 545.

The fact that the patent is about to expire is no ground for refusing a preliminary injunction, if the patentee has been involved in continuous litigation. Rumford Chemical Works v. Vice, 11 O. G. 600; s. c. 14 Blatch. 179.

An irregularity in the service of the subpoena is no reason for withholding an injunction against a defendant who has notice of the motion and appears to oppose it., Thayer v. Wales, 5 Fish. 130; s. c. 9 Blatch. 170.

If notes are received as the consideration for a license, with a stipulation that if they or either of them are not paid as they fall due, then the license shall be void, the license is forfeited the moment one of the notes becomes due and is not paid, and it is optional with the patentee to resort to his remedy at common law to enforce the collection of the notes or to treat the right of the licensee as forfeited under the stipulation, and obtain an injunction against the licensee. Woodworth v. Weed, 1 Blatch. 165; Abbett v. Zusi, 5 Ban & Ard. 38.

The fact that the complainant grants licenses at a fixed sum, and that the defendant is not a maker and vendor, but only one who uses the machine, is a circumstance to be taken into account, but is not a sufficient reason for refusing the writ, excepting in combination with other circumstances, either of doubt as to title or of hardship in the operation of the injunction. Howe v. Newton, 2 Fish. 531; Furbush v. Bradford, 1 Fish. 317; s. c. 21 Law Rep. 471; Potter v. Schenck, 1 Biss. 515; s. c. 3 Fish. 82; Morris v. Lowell Manuf. Co., 3 Fish. 67; vide Livingston v. Jones, 2 Fish. 207; s. c. 3 Wall. Jr. 330; Batten v. Silliman, 3 Wall. Jr. 124; McMillan v. Conrad, 16 Fed. Rep. 128; Hoe v. Boston D. A. Corporation, 23 O. G. 1124; s. c. 14 Fed. Rep. 914.

Where the patentee seeks his profit solely by means of a royalty, a preliminary injunction will not be granted, if the defendant will pay the royalty into court to abide the event of the suit. Blake v. Greenwood Cemetery, 13 0. G. 1046; s. c. 14 Blatch. 342; s. c. 3 Ban & Ard. 112.

Although the defendant has not paid the royalty under his license, yet a preliminary injunction will not be granted if the patentee has violated his agreement by granting licenses to others at lower rates. Crowell v. Parmenter, 18 O. G. 360; s. c. 3 Ban & Ard. 480.

When a license is granted to any one to use a patent, which license is accompanied with an obligation in favor of the patentee, on the part of the one to whom it is granted, to do or not to do a particular thing, and which obligation is the consideration upon which the license is granted, he upon whom the obligation rests must perform it, and if he will not perform it an injunction will be granted to restrain him from any further right to use the patent under license. Goodyear v. Congress Rubber Co., 3 Blatch. 449.

A party who has a contract for the exclusive right to sell the thing patented is entitled to a preliminary injunction against the patentee, although the latter claims that the contract was obtained by fraud. Goddard v. Wild, 17 Fed. Rep. 845.