CHAPTER X.

REMEDY OF PATENTEE BY BILL IN EQUITY.

Suit in Equity. THE alternative remedy for a Patentee, whose rights have been infringed on, is by a Bill in Equity,a praying an injunction of the Court to restrain the infringer from further violation of those rights, and an order to him to account for and pay over to the plaintiff the profits derived from the infringement.b

Injunction.

The injunction is in the nature of a special injunction of the Court, restraining persons from committing damage or injury to property. It is said not to be an original jurisdiction, but exercised solely in aid of a legal right, on principles similar to those obtaining in the cases of nuisance, breach of contract and waste, the invasion of copyright or the property in secrets of trade and trade marks. Its exercise is not necessarily confined to the terms of the Patent right, the Court interfering even after its expiration to restrain the sale of articles made during Holden v.

a An injunction will not be granted on a claim. craft (1850), V. C., K. B., 14 Jur. 846.

b 3 Steph. Com 524.

Chal

And not on account of the Patent being an exclusive privilege. Calcraft v. West (1845), L. C., Dublin Theatre Patent, 2 Jones & Lat. 128. "The proper officer of the Court, upon an application for an injunction, is not to ascertain the existence of a legal right, but solely to protect the property until that right can be ascertained by the jurisdiction to which it properly belongs." Per Cottenham, L. C., Harman v. Jones (1841), 1 Cr. & Ph. 299; Mitford's Ch. Pl. (5th ed.), 158; Sparrow v. Oxford, Worcester and Wolverhampton Railway Company (1851), 9 Hare, 441.

d 2 Story, Eq. Jur. 209; Jeremy, Eq. Jur., bk. iii., c. 2, s. ; 1 Fonb. Eq. 34, n.; Drewry, Inj. 220; Bacon v. Jones (1839), L. C., gas-burner, 4 My. & Cr. 436; Saunders v. Smith (1838), L. C., copyright, 3 My. & Cr. 728.

its continuance in fraud of the Patentee. The Plaintiff is entitled to an injunction although the defendant may promise to commit no further infringement and offer to pay the costs of the Bill.f

In tracing the course of this jurisdiction in its exercise History. with respect to Patents, we find the explanation of much that strikes us at first sight as anomalous in its practice, particularly in the position assumed by the Court in connection with proceedings at Law. Here, as in other branches of our Law before alluded to, the practice of the Court of Chancery has survived the state of things for which it was originally designed. Long after the Patentee had ceased to be a Royal favourite, obnoxious to the public interests from having a monopoly of the necessaries of life, the Courts refused to enforce a right claimed under Letters-patent or Charter from the Crown, until the right had been tested by the ordeal of a trial at Law."

e

Crossley v. Beverley (1829), L. C., 1 Russ. & My. 166, n.; 13 L. J., N. S., 25.

' Fradella v. Weller (1831), M. R., 2 Russ. & My. 247.

8 In Coke's note (3 Inst. 181) on the clause of the Statute of Monopolies, declaring that cases of Patent right "shall be for ever hereafter examined, heard, tried and determined by and according to the Common Laws of this realm, and not otherwise," we find an explanation of the reasons of thus restricting the trial. "This Act having declared against all Monopolies, &c., to be void by the Common Law, hath provided by this clause that they shall be examined, heard, tried and determined in the Courts of the Common Law, according to the Common Law, and not at the Councell Table, Starchamber, Chancery, Exchequer Chamber or any other Court of like nature, but only according to the Common Laws of this realm, with words negative and not otherwise. For such boldnesse the Monopolists took, that often at the Councell Table, Starchamber, Chancery and Exchequer Chamber, petitions, informations and bills were preferred in the Starchamber, &c., pretending a contempt for not obeying the commandments and clauses of the said grants of Monopolies, and of the proclamations, &c., concerning the same; for the prevention of which mischief this branch was added." Dan. Ch. Pr. 2nd ed. 1511; Godson, 2nd ed. 251; Prodgers v. Phrazier (1682), L. K., 1 Vern. 137.

h Blanchard v. Hill (1742), L. C., cardmakers' charter, 2 Atk. 484.

Without reference to its origin the principle had become a maxim of the Court; and in process of time a fictitious inability was the cause on which it founded its refusal to decide questions involving the validity of the grant, the claim of the Plaintiff to the property it conferred, and the fact of infringement. By degrees, however, the Court advanced to the position it was entitled to assume. In Hicks v. Raincock a demurrer to a Bill for an injunction to stay the infringement of a Patent, on the ground that the Plaintiff had not established his right at Law, was overruled;' and in Newman v. Milner it was said by the Lord Chancellor never to be the right of a defendant to have a case transmitted for trial at Law, but that where the title of the party was clear a Court of Equity would act without a reference."

At a much later period" we find Lord Eldon thus asserting the inability of the Court,-" Where the Patent is but of yesterday, and upon an application being made for an injunction it is endeavoured to be shown in opposition to it that there is no good Specification or otherwise that the Patent ought not to have been granted, the Court will not, from its own notions respecting the matter in dispute, act upon the presumed validity or invalidity of the Patent without the right having been ascertained by a previous trial, but will send the Patentee to Law and oblige him to establish the validity of his Patent in a Court of Law before it will grant him the benefit of an injunction;" and, again, in Wilkins v. Aikin,o—“Where a fair doubt appears as to the Plaintiff's legal right, the Court always directs it to be tried, making some pro

1 Fonb. Eq. 43.

(1785) Thurlow, L. C., stocking, 2 Dick. 647.

See also the recent case of Soltau v. De Held (1851), 2 Sim. N. S. 133, and cases there cited.

m (1794) 2 Ves. jun. 486. (1817) iron, 3 Mer. 622.

• (1810) copyright, 17 Ves. 481.

vision, the best that may be, for the benefit of both parties."

In point of fact, the Court of late has acted independ- Virtual indeently of references to Law. If, upon a special case stated, pendence of the the opinion of one Court was not satisfactory, it was sent Equity. to another, sometimes to a third; and cases have occurred. in which, after obtaining the opinion of more than one, the Court has acted upon its own impressions as to the case in preference to adopting any of them. In Wilson v. Tindal the Master of the Rolls said, when directing an action at Law, he entertained no doubt whatever as to the power of the Court to grant an injunction simpliciter.

sufficient.

Certain rules were, however, adopted with respect to the effect of the proceedings directed at Law. If a Bill of Exceptions were properly tendered, the Court would await its disposal before granting an injunction in consequence of a verdict for the Patentee. In Mangnall v. Verdict not Benecke, however, an injunction was granted notwithstanding a Bill of Exceptions had been tendered and was undisposed of. Similarly, a rule nisi for a new trial having been obtained and then pending, the Court, in Collard v. Allison, considered the legal title as still incomplete.s

The points upon which a reference was had to trials in Three points. Courts of Law previous to the injunction were mainly three-the validity of the Patent, the title of the Plaintiff, and the fact of infringement by the Defendant. Where, upon any of these points, the Court was doubtful, it has of late years shown great reluctance to exercise its powers of injunction. A very usual course has been to refuse

P (1841) cocoa-nut oil, Web. P. R. 730, n. See also Sanxter v. Foster (1841), M. R., 1 Cr. & Ph. 302.

Bridson v. M'Alpine (1845), M. R., machinery for drying wove fabrics, 8 Beav. 229.

(1849) M. R., same Patent, 34 Lond. Journ. 295.

(1839) pianoforte, 4 My. & Cr. 487.

18 Jur. pt. 2, 338. See as to the cases of copyright in which the

Y

Expediency.

the injunction until an action at Law has been tried to establish the right, the Defendant in the meantime undertaking to keep an account. By these means, assuming the solvency of the Defendant," the Plaintiff can be recouped for the loss he has sustained without running the risk of committing an irreparable injury to the Defendant by disturbing the status in quo of the parties.

V

Oftentimes, when conflicting affidavits render it impossible for the Court to arrive at conclusions satisfactory, it is driven to decide on the principle of expediency, and to weigh the probabilities of injustice to either party from the granting or refusing the injunction, in the event of the hypothesis on which it acted proving subsequently incorrect. In some cases the injunction, by stopping extensive works, may do a mischief to the Defendant, if in the right, which can never be repaired; while, in the case of a Defendant whose circumstances are such as to render it improbable that he would be able to meet the pecuniary demands to which he would be liable if unsuccessful at Law, the Court naturally inclines to a more

legal title has been in dispute, Campbell v. Scott (1842), V. C., 11 Sim. 31; Lewis v. Langdon (1835), V. C., 7 Sim. 421; Sunderland v. Newton (1830), V. C., 3 Sim. 450.

See as to account, Crossley v. Derby Gas Company (1834), V. C., gas metre, 3 My. & Cr. 420; Morgan v. Seaward (1835), V. C., paddle-wheel, Web. P. R. 168; Bacon v. Spottiswoode (1839), M. R., gas, 1 Beav. 387; Neilson v. Fothergill (1841), L. C., iron, Web. P. R. 290; Macrae v. Holdsworth (1848), V. C., design, 2 De G. & S. 496; Mitchell v. Barber (1851), M. R., looped fabrics, 39 Lond. Journ. 531. " Newall v. Wilson (1852), L. J., wire rope, 19 L. T. 161.

▾ Sanxter v. Foster (1841), M. R., 1 Cr. & Ph. 302; Midland Railway Company v. Ambergate, Nottingham and Boston and Eastern Junction Railway Company (1853), 10 Hare, 359.

▾ Hill v. Wilkinson (1817), L. C., cited in a note to The Electric Telegraph Company v. Nott (1847), L. C., 2 Coop., C. C., 57.

× Wilkins v. Aikin (1810), L. C., copyright, 17 Ves. 424; Harmer v. Plane (1807), L. C., woollen cloth machine, 14 Ves. 132; Hill v. Thompson (1817), L. C., iron, 3 Mer. 622; Coles v. Simms (1854), L. J., 22 L. T. 277.