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Mr. Justice Washington says, "I take the rule to be, that where the bill states a clear right to the thing patented, which, together with the alleged infringement, is verified by affidavit; if he has been in possession of it by having used or sold it in part, or in the whole, the court will grant an injunction, and continue it till the hearing or further order, without sending the plaintiff to law to try his right. But if there appears to be a reasonable doubt as to the plaintiff's right, or to the validity of the patent, the court will require the plaintiff to try his title at law; sometimes accompanied by an order to expedite the trial; and will permit him to return for an account in case the trial at law should be in his favor." And he granted an injunction in the case then in hearing on a bill by the patentee, and his assignee, for the state of Pennsylvania, where it was alleged that the patent had been infringed."
In another case, the same judge says: "The rule is, to grant an injunction on filing the bill, and before a trial at law, if the bill state a clear right, and verifies it by affidavit. If it states an exclusive possession of the invention, the injunction is granted, though the courts may entertain doubts as to the va
Ogle v. Ege, 4 Wash. C. C. R. 534: cites Hill v. Thompson, Eden, 260; 14 Ves. 132; 3 Meriv. 624; Coop. Eq. Prac. 158; 1 Madd. C. P. 113; 14 Ves. 130; Ambler, 406; 1 Vern. 120; 2 Madd. 175; 6 Ves. 707; 3 Attk 496; 3 Bro. C. C. 376.
lidity of the patent. But if there be glaring defects in the patent, or specification, the rule is refused. When the patent is recent, and objections are made to the patent, or specification, the court will not grant an injunction till the right is established at law, which the court will order. If the bill does not set forth the possession of the invention by the plaintiff, at any particular time, it is defective. If the answer denies that the defendant uses the plaintiff's invention, the injunction will be refused.1
Upon a bill for an injunction the court required the plaintiff to subjoin a special affidavit of the truth of the allegations in the same; and "that he was, to the best of his knowledge and belief, the true and original inventor and discoverer of the improvement, for which he had obtained his patent; and that the same had not, to the best of his knowledge or belief, been in use, or been described, in any public work, anterior to his said invention or discovery."
This practice, as to requiring an affidavit, is adopted from that of the English court of chancery. It requires the plaintiff to make affidavit, among other things, of the same facts to which he makes oath at the time of taking out his patent, for the court says, that though at the time of taking out the patent, the
Isaacs v. Cooper, Coxe's Dig. 533; 4 Wash. C. C. R. 259.
5 Rogers v. Abbot, 4 Wash. C. C. R. 514.
patentee may have very honestly sworn, as to his belief, that he was the original inventor, yet circumstances may have subsequently intervened, or information been communicated, sufficient to convince him that it was not his own original invention, and that he was under a mistake when he made his vious declaration to that effect."
It is the practice in England to grant injunctions, in some cases forthwith, ex parte, without first hearing the party complained of. In case of a patent which depended upon the proportions of the ingredients, Lord Eldon said, "he doubted whether the injunction ought to have been granted in the first instance, unless the affidavits had stated more particularly, in what the alleged infringement of the patent consisted; and that it should have been shown to be, by working in the precise proportions mentioned in the specification, as being of the essence of the invention."'8
On a bill for an injunction Mr. Justice Washington granted it until answer and further order; and required the plaintiff to institute a suit at law against the defendant to try his right, the writ to be returnable to the next term of the court."
Thompson v. Foreman, 3 Meriv. R. 622.
"Walker v. Congreve, Rep. of Arts, 2d series, v. 29, p. 311; Thompson v. Foreman, 3 Meriv. 622.
Applications for injunctions have been much more frequent in England than in the United States. The reason is, that in the United States, the patentee has had a more adequate remedy at law for damages. In the United States the patentee may safely rely upon his remedy, at law, if the parties infringing are able to respond to his claim for damages. In England, the security of the patentee is sometimes increased, and his remedy for indemnity facilitated, by the proceedings in equity, in which the court, instead of enjoining the party complained of to stop the manufacture, frequently orders him to keep an account of it, so that, if the plaintiff shall succeed in establishing his right at law, the rule of damages may be the profits accruing from the manufacture.10
According to the rule laid down by Mr. Justice Washington, above cited, the English court of chancery has often refused to proceed in an injunction if there is any palpable and glaring doubt of the patentee's right; as if it be doubtful whether the invention is new.11
"I cannot," said one of the Lord Keepers, "grant an injunction in any case, but where a man has a plain right to be quieted in it."12 In regard to
10 Gods. Pat. 183, 188; Hill v. Thompson, 3 Meriv. 622; George v. Beaument, Wackerback and Martineau, Rep. of Arts, 2d series, p. 27. 11 Forsyth's Patent, Gods. Sup. 68; Hill v. Williamson, Rep. of Arts, vol. 30, p. 382.
12 Anon. 1 Vern. 120.
granting injunctions, the case of patents is put upon the same ground as waste.1
Lord Hardwicke seems to have thought that early after the passing of the statute of monopolies, injunctions were not granted until after the right of the patentee had been established by trial at law." But if this was the original rule, it did not very long continue.15 The present practice of granting injunctions in cases not yet tried at law, being of very long standing.
Many of the English cases state the rule much more broadly as to granting injunctions, and in patent cases, allowing them, not merely where there is no doubt of the patent right, but even where there may be some doubt, if the patentee has been in the exclusive possession of the privilege. And Mr. Justice Thompson, of New York, in commenting upon the English cases, lays down the general distinction, that where a patent is granted in pursuance of an act of parliament as in the case of patents for inventions, the court will grant an injunction before a trial of the right at law, but not in the case of other patents. He says: "It is the prevailing practice in England, even where the right is doubtful, and the case is sent to be tried at law, to send it with an injunction, instead of denying it on that ground. But
13 Isaac v. Humpage, 1 Ves. Jr. 430.
14 Whitchurch v. Hide, 2 Atk. 391.
15 S. C. also Hicks v. Raincock, 2 Dickens, 647.