SECTION V INJURIES TO BUSINESS A. Legal Monopolies UNITED STATES CONSTITUTION, Article I, Section 8. The Congress shall have Power . . . To promote the Progress of Science and useful Arts. by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. The Early History of Patents in Chancery. The use of injunctions in patent litigation is mentioned by Lord Hardwicke as early as 1742. Whitechurch v. Hide, 2 Atk. 391. See also Anon., 1 Ves. Sr. 476 (1750); and Spence, supra, 5. The first reported injunction seems to have been forty years later in Hicks v. Raincock, 2 Dick. 647 (1783), to stay the infringement of a patent for making loops in stockings. A demurrer because the plaintiff had not established his right at law was overruled by Lord Thurlow, without any reported opinion. Possibly the advantages of the injunction for the protection of patents had been suggested to the English bar a few years before when the House of Lords affirmed a Scotch injunction as to a process for the manufacture of sulphuric acid. Roebuck v. Stirling, 1 Web. Pat. Cas. 45 (1774). In several early English cases, where the patentee had long been in possession, temporary injunctions were granted, without previous establishment at law of the disputed legal right. Boulton v. Bull, 3 Ves. Jr. 140 (1796), Loughborough, Watts' steam-engine; Harmer v. Plane, 14 Ves. Jr. 130 (1807), Eldon; Hill v. Thompson, 3 Mer. 622 (1817). Ordinarily, however, the English practice required a favorable decision at law as a condition precedent to equitable relief. Bacon v. Jones, 4 Myl. & C. 433 (1839). The early American practice seems to have been similar. Whitney v. Fort, cited 9 Johns. 588 (U. S. C. C., Ga., before 1812), cotton gin; Ogle v. Ege, 4 Wash. C. C. 584 (1826). The history of the equitable jurisdiction of the United States courts over patents is given by Matthews, J., in Root v. Railway, 105 U. S. 189 (1881). Injunctions where there was no diversity of citizenship were first authorized by Congress in 1819; the provision is substantially incorporated in the first clause of the quotation, infra, from § 55 of the Act of 1870. UNITED STATES PATENT STATUTES ACT OF JULY 8, 1870, c. 230, § 24. Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof. . . may. obtain a patent therefor. § 22. Every patent shall contain a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States. 1 $55 (slightly changed by Act of March 3, 1897, c. 391, §6). The several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions according to the course and principles of courts of equity, to prevent the violation of any right secured by patent, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for an infringement the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby; and the court shall assess the same or cause the same to be assessed under its direction. . ACT OF FEB. 16, 1875, c. 77, § 2. Said courts, when sitting in equity for the trial of patent causes, may impanel a jury of not less than five and not more than twelve persons, subject to such general rules in the premises as may, from time to time, be made by the Supreme Court, and submit to them such questions of fact arising in such cause as such circuit court shall deem expedient; and the verdict of such jury shall be treated and proceeded upon in the same manner and with the same effect as in the case of issues sent from chancery to a court of law and returned with such This Parkofova prefe findings. waling against. muslemesing forced 4. a jury could not decide bethly fehow. This ta so this ct will posso will passo GOODYEAR v. DAY. CIRCUIT, and grant the ring. ThUNITED STATES CIRCUIT COURT, THIRD Circuit, 1852. [2 Wall. Jr. 283.] This was a case in equity for the infringement of a patent right in the manufacture of Vulcanized Indian Rubber. The bill prayed a perpetual injunction. The answer denied the allegations, and concluded by praying " a trial by jury of the various issues of fact formed by it." 2 GRIER, J. It is true that in England the Chancellor will generally not grant a final and perpetual injunction in patent cases, when the answer denies the validity of the patent, without sending the parties to law to have that question decided. But even there the rule is not absolute or universal; it is a practice founded more on convenience than necessity. It always rests on the sound discretion of the court. A trial at law is ordered by a Chancellor to 1 Problems as to the nature of an inventor's rights are: May he enjoin the infringement of his invention before a patent is issued? Rein v. Clayton, 37 Fed. 354 (Mich., 1889). Does a patent create a right in its owner to control other persons in their use of the invention, or merely the right to exclude others from using it at all, by means of infringement suits? See Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U. S. 502 (1917); 7 St. Louis L. Rev. 143. 2 Most of the statement of facts is omitted, besides the interesting arguments of Rufus Choate against the injunction and of Daniel Webster for it. inform his conscience; not because either party may demand it as a right, or that a court of equity is incompetent to judge of questions of fact, or of legal titles. In the courts of the United States, the practice is by no means so general as in England, or as it would be here, if the trouble of trying issues at law devolved. upon a different court. Cases involving inquiries into the most complex and difficult questions of mechanics and philosophy, are becoming numerous in the courts. Often questions of originality, and infringement of patents, do not depend so much on the credibility of witnesses or the weight of oral testimony, as on the application of principles of science and law to admitted facts. It is true, that in matters of opinion, both mechanics and learned professors will differ widely. But still the question is not to be decided by the number, credibility, or respectability, of such witnesses; but by the force and weight of the reasons given for their respective opinions. It is no reflection on trial by jury to say, that cases frequently occur, in which ten out of twelve jurors do not understand the principles of science, mathematics, or philosophy, necessary to a correct judgment of the case. Besides, much of the time of the courts is lost, where twelve men will not agree upon any verdict; or when they have agreed, the conscience of the Chancellor, instead of feeling enlightened, rejects it altogether. A select or special jury of philosophers, if they could be got, would perhaps not prove more satisfactory or obviate the difficulty. In a late case involving the validity of Morse's telegraph patents, which was heard in Philadelphia, a final injunction was decreed without a verdict to establish the patents; and many other cases might be cited from other circuits, if necessary, in support of this practice, showing that the courts of the United States do not always consider it a proper exercise of their discretion to order such issues to be tried at law, before granting a final injunction. In the present case there are many reasons why the court will not thus exercise their discretion: 1st. Because this case has been set down for final hearing on the exhibits and proofs, without any motion or order of the court for such an issue. 2d. After a patient hearing of very able counsel, and a careful consideration of the testimony, the court feel no doubt or difficulty on these questions, which would be removed or confirmed by a verdict. 3d. It would require three or four weeks at least, to try this case before a jury, if this library of testimony were read to them; and at least as many months, if the witnesses were examined viva voce, as they probably would be; and, after all this expenditure of time and labour, it is even more than probable, that from the confusion created by the great length of the testimony and argument in court, or the force and effect of those urged from without, no verdict would be obtained, and most certainly none that would alter the present conviction of the court. Without requiring the aid of a jury, we shall therefore proceed to examine the questions both of fact and law which affect the validity of the complainant's patents. . . .1 Decree of perpetual injunction./.54 LACOMBE, J., WYCKOFF V. WAGNER TYPEWRITER, 88 Fed. 515 (S. D. N. Y., 1898): "During the 11 years the writer has sat on the circuit bench, there has not been in this court a single jury trial in a patent cause. When one remembers the careful study of intricate machinery, the manipulation of models, the reading and re-reading of technical evidence, the elaborate comparison of documents couched in language which certainly is not that of common speech, the close, hard thinking, sometimes prolonged for weeks, which, in the case of a complicated patent, has to be gone through with, before a judge, however long his experience with such causes, is able to reach a conclusion on the issues of fact, which, even if erroneous, presents at least the appearance of a logical train of reasoning in its support, it seems safe to say, a priori, that the decision of such questions by an ordinary jury, imprisoned for a few hours, with naught but their vague recollections of the evidence, would be a lottery. LEARNED HAND, J., PARKE-DAVIS v. MULFORD, 189 Fed. 95, 115 (S. D. N. Y., 1911): I cannot stop without calling attention to the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of chemistry to pass upon such questions as these. The inordinate expense of time is the least of the resulting evils, for only a trained chemist is really capable of passing upon such facts, e. g., in this case the chemical character of Von Furth's so-called "zinc compound," or the presence of inactive organic substances. In Germany, where the national spirit eagerly seeks for all the assistance it can get from the whole range of human knowledge, they do quite differently. The court summons technical judges to whom technical questions are submitted and who can intelligently pass upon the issues without blindly groping among testimony upon matters wholly out of their ken. How long we shall continue to blunder along without the aid of unpartisan and authoritative scientific assistance in the administration of justice, no one knows; but all fair persons not conventionalized by provincial legal habits of mind ought, I should think, to unite to effect some such advance. CENTENNIAL CATALOGUE CO. v. PORTER. UNITED STATES CIRCUIT COURT, PENNSYLVANIA, 1876. [5 Federal Cases, 356, No. 2,546.] 2 An injunction was asked for to restrain the defendants, who, it was alleged, were about to issue a catalogue of the exhibitors at the Centennial Exhibition at Philadelphia. The bill set forth that 1 The rest of the opinion upholds the validity of the patent. 2 2 Wkly. Notes Cas. 601, 3 Cent. L. J. 460, s. c. the commission had partly written, and were causing to be written. with as much expedition as possible, manuscripts of the official catalogues of the several departments of the exhibition; that on the 25th Sept., 1875, they deposited in the office of the librarian of Congress the titles of separate books, in the following form: "United States Centennial Commission. International Exhibition, 1876. Official Catalogue of the Department of Mining, Metallurgy, Manufactures, Education and Science. All rights reserved. Philadelphia, 1876"; together with similar titles for the departments of agriculture, horticulture, machinery and art; the rights whereof they claimed as proprietors under the copyright laws of the United States; that on Nov. 1st, 1875, the centennial board of finance, with the consent of the commission, granted the exclusive right of publishing said catalogues to the assignors of complainants, and that portions of the catalogues had been already printed by complainants. The plaintiffs' book was in a form called a dummy, i.e., a book containing a few printed leaves followed by blank ones. The plaintiffs contended that although subject-matter open to all the world cannot be copyrighted, as a general principle, in this particular case it was different, because the information from which alone a catalogue could be prepared had been expressly reserved to the commission and their assigns, and all exhibitors and visitors were subject to the reservation by the published regulations. The objection was to the publication by the defendants of a list of leading exhibitors. They further maintained that by taking the initiatory steps in recording the title, they became entitled to protection, and the congressional librarian in his pamphlet of instructions declares that a copyright may be secured for a projective as well as for a completed work. CADWALADER, District Judge, considered that the plaintiffs were not in a condition to make such a book as shown in the application. It was something new to him that copyright was applicable to an inchoate and intended publication. Assuming that a manuscript should be copyrighted, the question was whether it must not be in the form in which it is to be printed. The difficulty was that the plaintiffs had no copyright in the subject but only in the work. If there is anything but literary piracy, their remedy is in the state courts. There is no remedy in the United States court until it comes to infringement of literary property. The plaintiffs go upon the ground of literary property, not in print and only partly in manuscript. The jurisdiction of the court is only over printed matter. The mere threat to print a book does not give it jurisdiction. The act says a book, not an intended. book. The injunction was therefore refused.1 1 For the early history of copyright, see W. S. Holdsworth, "Press Control and Copyright in the 16th and 17th Centuries," 29 Yale L. J. 841 (1920); A. Birrell, Seven Lectures on the Law and History of Copyright in Books (1889), 101 ff.; Encyclopedia Britannica (11th ed.), "Copyright "; Company |