CHAPTER III. OF THE REMEDY IN EQUITY TO RESTRAIN INFRINGEMENTS. § 314. We have seen that the common law and the statute both afford a remedy, by an action for damages, for the infringement of patent-rights. But this remedy would be wholly inadequate to the protection of such rights, if it were not accompanied and fortified by another remedy, which flows from that great principle of equity jurisprudence, that, where there is a legal right, and the nature of the injury to which it is exposed is such that a preventive remedy is indispensable, equity will afford that remedy, by an injunction. The grounds of the equity jurisdiction in cases of patents are, the prevention of irreparable mischiefs, the suppression of a multiplicity of suits and vexatious litigation, and the more complete discovery, from the party guilty of infringement, of the extent of the injury done to the patentee, than can be obtained in an action at law. It does not belong to the purposes of this work, to trace the origin of this branch of equity jurisdiction, nor is it necessary to do so, since the Patent Laws have expressly adopted in the broadest terms the remedy which it affords, for the protection of patent-rights, and have directed the proper courts "to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor, as secured to him by any law of the United States, on such terms and conditions as the said courts may deem reasonable." 2 All 1 2 Story's Eq. Jurisp. § 930, 931, 932, 933. that is requisite, therefore, in the present work, is to develop the application of the doctrines and practice of courts of equity to the rights of inventors, in the remedy by injunction. § 315. As a preliminary remark, however, we may notice, that the discretion vested in the Court by the terms of the statute above cited, to grant injunctions on such terms and conditions as the Court may deem reasonable, is in perfect accordance with the principles of equity.1 This discretion is 1 In Bacon v. Jones, 4 Mylne & Cr. 433, 436, Lord Cottenham made the following remarks on the granting of injunctions in cases of patents: "When a party applies for the aid of the Court, the application for an injunction is made either during the progress of the suit, or at the hearing; and in both cases, I apprehend, great latitude and discretion are allowed to the Court in dealing with the application. When the application is for an interlocutory injunction, several courses are open; the Court may at once grant the injunction, simpliciter, without more- -a course which, though perfectly competent to the Court, is not very likely to be taken where the defendant raises a question as to the validity of the plaintiff's title; or it may follow the more usual, and, as I apprehend, more wholesome practice in such a case, of either granting an injunction, and, at the same time, directing the plaintiff to proceed to establish his title at law, and suspending the grant of the injunction until the result of the legal investigation has been ascertained, the defendant in the mean time keeping an account. Which of these several courses ought to be taken, must depend entirely upon the discretion of the Court, according to the case made. When the cause comes to a hearing, the Court has also a large latitude left to it; and I am far from saying that a case may not arise in which, even at that stage, the Court will be of opinion that the injunction may properly be granted without having recourse to a trial at law. The conduct and dealings of the parties, the frame of the pleadings, the nature of the patentright, and of the evidence by which it is established — these and other circumstances may combine to produce such a result; although this is certainly not very likely to happen, and I am not aware of any case in which it has happened. Nevertheless, it is a course unquestionably competent to the Court, provided a case be presented which satisfies the mind of the judge, that such a course, if adopted, will do justice between the parties. Again, the Court may, at the hearing, do that which is the more ordinary not a wholly unregulated discretion, but the clause in which it is expressed is to be considered as affected by the previous direction, that the injunction is to be granted according to the course and principles of courts of equity, which are guided by certain well-settled rules; so that the terms and conditions to be imposed in each case will be ascertained, by applying to the circumstances of the case those principles and that course of practice which have been usually followed, and which will admit of a "reasonable" application to the particular facts of the case. § 316. I. The Parties. The parties entitled to relief in equity against the infringement of a patent are, first, the party or parties interested in the patent. As the remedy in equity is given in order to protect a legal right, and as the statute gives a right of action to the person or persons interested, whether as patentee assignees, or grantees of the exclusive right for a particular district, it follows that any person holding the legal title, or the right to bring an action, may bring a bill for an injunction. § 317. We have seen when the assignee of a patent may sue at law in his own name, and when he should join his assignor. The same rules will govern in equity, in determining who are necessary parties to the bill. If the assignee has the whole interest, he may sue alone; but if he has less than the whole interest, he must join the patentee. If the assignment has not been recorded, the assignee is not substituted to the right and responsibility of the patentee, so as to maintain any suit at law or in equity, founded upon the patent;1 and where there is a joint suit by the patentee and course; it may retain the bill, giving the plaintiff the opportunity of first establishing his right at law. There still remains a third course, the propriety of which must also depend upon the circumstances of the case, that of at once dismissing the bill.” 1 Wyeth v. Stone, 1 Story's R. 273, 295. Story, J.: "The objection the assignee, and a disclaimer has been filed by the patentee, in which the assignee did not join, the disclaimer cannot operate in favor of the complainants in such a bill, or in an action at law.1 $318. There is, however, one distinction, between an action at law and a suit in equity, in respect to the parties; and that is, the case of an assignment of the exclusive right, for a particular district. The grantee of such a right may bring an action at law, within his own district, for an infringement, even against the patentee himself, and, consequently, he may bring such an action always in his own name.2 which I deem fatal, is, that the bill states and admits, that the assignment to the plaintiff, Tudor, (made in February, 1832,) has never yet been recorded in the state department, according to the provisions of the Patent Act of 1793, ch. 55, § 4. That act provides, "That it shall be lawful for any inventor, his executor or administrator, to assign the title and interest in the said invention at any time; and the assignee, having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility." It seems a necessary, or, at least, a just inference, from this language, that, until the assignee has so recorded the assignment, he is not substituted to the right and responsibility of the patentee, so as to maintain any suit at law or in equity, founded thereon. It is true, that no objection is taken in the pleadings on account of this defect; but it is spread on the face of the bill, and, therefore, the Court is bound to take notice of it. It is not the case of a title defectively set forth, but of a title defective in itself, and brought before the Court with a fatal infirmity, acknowledged to be attached to it. As between the plaintiffs and the defendants, standing upon adverse titles and rights, (whatever might be the case between privies in title and right,) Tudor has shown no joint interest sufficient to maintain the present bill; and, therefore, it must be dismissed with costs." 1 Ibid. 294. 2 The sixth question certified is as follows: Whether the plaintiff, if he be an assignee of an exclusive right to use two of the patented machines, within the town of Watervliet, has such an exclusive right, as will enable him to maintain an action for an infringement of the patent within the said town; or whether, to maintain such action, the plaintiff must be possessed, § 319. But, in equity, the patentee may be joined with the assignee of such an exclusive right, if it be a right, to use a limited number of the patented machines, in a particular district; because the interest of the patentee is not all vested in the grantee, who, although he may prevent the patentee from licensing other persons within the district, cannot obtain for himself the right to use more machines than the original grant authorized, without paying the patentee for such further license. This interest renders the patentee a proper party, in such a bill. Different persons, who have infringed a patent independently of each other, cannot be made defendants in the same bill.2 § 320. II. The Bill. A bill, for an injunction to restrain the infringement of a patent, after the address to the Court, and the statement of the parties, should recite the application for the letters-patent, by the inventor, and the compliance, by him, with all the prerequisites for obtaining them, and the issue of the letters, giving the title, as it is contained in them, verbatim, their attestation by the proper officers, and their delivery to the patentee. Profert of the as to that territory, of all the rights of the original patentee. The plaintiff is the grantee of the exclusive right to construct and use, and to vend to others, to be used, two of the patented machines, within the town of Watervliet, in the county of Albany. The fourteenth section of the Patent Law authorizes any person, who is a grantee of the exclusive right in a patent, within and throughout a specified portion of the United States, to maintain an action, in his own name, for an infringement of the right. The plaintiff comes within the very terms of the section. Although limited to the use of two machines, within the town, the right to use them is exclusive. No other party, not even the patentee, can use a right, under the patent, within the territory, without infringing the grant." Wilson v. Rousseau, 4 Howard, 646, 686. 1 Woodworth v. Wilson, 4 Howard, 712. It had been previously held, that the grantee for a particular district can maintain a bill, for an injunction and account. Ogle v. Ege, 4 Wash. 584. 2 Dilly v. Doig, 2 Ves. Jr. 487. |