CHAPTER XIX.

Remedies of Patentee.—Injunction.—Account.

1. COURTS of equity have hitherto granted injunctions to restrain persons from using the invention without license, and compelled the rendering of an account of the profits made by any wrongful use of the invention.

2. Concurrent jurisdiction in such matters is now given to the superior courts of common law. In any action pending in any of her Majesty's superior courts of record at Westminster and Dublin, for the infringement of letters patent, it shall be lawful for the Court in which such action is pending, if the Court be then sitting, or if the Court be not then sitting, then for a judge of such court, on the application of the plaintiff or defendant, to make such order for an injunction, inspection, and account, and the proceedings therein, as to such Court or judge may seem fit.(a)

3. Lord Eldon, in one case, granted an injunction against a public servant, to restrain him from employing patented inventions in the service of the Government. He subsequently punished him for disobeying the injunction; suggesting, at the same time, but not deciding, that probably the injunction ought not to have issued. However, as it had been infringed, he said he would treat Government as he would any suitor of the court, subject to the question at law. He ordered an account to be kept of all machines made in violation of the plaintiff's patent, and of the profits to which the plaintiff would be entitled if the patent had been infringed. He recommended the Government to pay the costs of the application, and said, he would have it understood that if the

(a) Stat. 15 & 16 Vict. cap. 83, s. 42.

recommendation was not attended to, he would make an order for the defendant, Sir William Congreve, to pay.(b)

4. The Court of Queen's Bench have refused a mandamus to the Lords of the Admiralty, to settle the terms on which they might be allowed to make use of an invention protected by letters patent, of which they were availing themselves.(c) The proper course for the patentee to take, when his patent is infringed by the officers of Government acting in that capacity, is, perhaps, by petition of right.(d)

5. Foreigners coming in their own ships into the ports of this country, may be restrained from infringing a patented invention on board such ships. (e)

6. The jurisdiction of the Court of Chancery is founded upon legal rights. Great latitude is allowed to the Court in dealing with the application. When an interlocutory injunction is applied for, several courses are open. The Court may at once grant the injunction simply, without more; a course which is not likely to be taken, when the defendant raises a question as to the validity of the plaintiff's title. Or it may follow the more usual and wholesome practice of either granting the injunction, and at the same time directing the plaintiff to establish his title at law; or of requiring him first to establish his title at law, suspending the grant of the injunction till the result of the legal investigation is known. (ƒ)

7. It is the duty of a court of equity to protect property pending litigation; but when it is called upon to do so, it requires some proof of the title of the party asking its interference. When a patent is new, the Court considers the proof of title in the patentee to be wanting, inasmuch as the public have had no opportunity of contesting the validity of the patent. In such a case, the Court will not act upon its own notions as to the validity of the patent, but will oblige the

(b) Walker v. Congreve, Rep. 1829, 202; 1 Carp. R. 356. See Rankin v. Huskisson, 4 Sim. 14; Priddy v. Rose, 3 Mer. 102; Frewen v. Lewis, 4 Myl. & Cr. 255; De Haber v. The Queen of Portugal, 20 L. J. N. s. Q. B. 488.

(c) Ex parte Pering, 4 A. & E. 949.

(d) See Smith v. Upton, 6 M. & G. 252, n. See, however, The Baron de Bode's case, 8 Q. B. 208. 271, and cases in note; The Baron de Bode v. The Queen, 13 Q. B. 380.

(e) Caldwell v. Van Vlissingen, 9 Hare, 415.

(f) Bacon v. Jones, 4 M. & C. 433.

patentee to establish his title at law before it will grant him the injunction.(g)

8. If there be any doubt as to the validity of the legal right, the Court will be very cautious in granting an injunction, first, because if the legal right ultimately fails, or if the acts complained of turn out not to be a violation of the legal right, it will have acted without any authority whatever, the authority being merely derivable from the legal right; secondly, and principally, because an injunction, if improperly granted, causes infinitely more mischief to the defendant, than the delay of granting it can possibly cause to the plaintiff. As a general rule, the Court will not grant an injunction unless satisfied that, in the result, the legal right will be established, and that the acts complained of are a violation of it.

9. If the Court does not entertain any serious doubt on these subjects, it will grant an injunction without putting the plaintiff to establish his title at law. (h)

10. The legal right being in doubt is a matter for the serious attention of the Court, and one to which great weight should be given; but it is not a matter which renders it absolutely incumbent on the Court to refuse an injunction. The Court must be guided by a discretion, to be exercised according to the circumstances of each particular case.(i)

11. In a patent case, long and exclusive possession and enjoyment is considered such primâ facie evidence of title, as to justify the Court in protecting the patent right by an injunction until its invalidity is established at law.(k) In such a case, there is less inconvenience in granting the injunction than in refusing it; for unless such injunctions were granted, patentees might be ruined by litigation.(1) Thus,

(g) Hill v. Thompson and Forman, Webst. P. C. 331; 3 Mer. 622, S. C.; per Lord Cottenham, Coop. C. C. 48; Baxter v. Combe, 1 Irish Chan. R. 284.

(h) Electric Telegraph Company v. Nott, 2 Coop. C. C. 41; Stevens v. Keating, 2 Phillips, 333; Bacon v. Jones, 4 M. & C. 436.

(i) Ollendorf v. Black, 20 L. J. N. s. Chy. 165.

(k) Hill v. Thompson and Forman, Webst. P. C. 231; 3 Mer. 622, S. C.; Stevens v. Keating, 2 Phillips, 333; Bickford v. Skewes, 4 M. & C. 500; Neilson v. Thompson, Webst. P. C. 275.

(1) Harmar v. Plane, 14 Ves. 132; Boulton and Watt v. Bull, 3 Ves. 140; Universities of Oxford and Cambridge v. Richardson, 6 Ves. 707; Muntz v. Foster, 2 Law Times, 325.

where the plaintiff had been successful in proceedings at law and in equity against other persons, and had had exclusive enjoyment of the patent for a considerable time, although some doubt existed as to the validity of the patent, the Court granted an injunction. (m) Where a bill alleged exclusive possession for ten years, and that the plaintiff had established his title by repeated actions, a demurrer, on the ground of the invalidity of the patent, as appearing from the specification set out in the bill, was overruled.(n)

12. Lord Eldon said, "If a party had got his patent, and put his invention into execution, and proceeded to sell articles made according to it, that was a sufficient possession." (o)

Lord Cottenham said, "He should be satisfied if he found manufacturers had acquiesced in the patentee's enjoyment; but that he should require very satisfactory evidence of the exclusive possession of the patentee. He did not think it enough where some manufacturers stated, that out of respect for the patentee they had not used the invention, and others stated, that they had done so constantly."(p)

13. The period of enjoyment which will be sufficient, must vary according to the circumstances. In the case of Losh's patent for "wheels for railway carriages," enjoyment for seven years was held sufficient. In Bickford's patent for a "miner's fuze," six years was considered sufficient, though the article was one in which there was little competition.(g)

14. In some cases the conduct of parties will induce the Court to assume the validity of the patent as against them. Thus, where a patent had been worked by the plaintiff and defendant as partners, and during the partnership the defendant did not dispute the validity of the patent, the Court, on an interlocutory application against him after the dissolution of the partnership, assumed that the patent was valid.(r)

(m) Newall v. Wilson, 19 Law Times, 161, Chy. Court of Appeal; Beeston v. Collyer, 2 Coop. C. C. 58, Lord Lyndhurst. (n) Kay v. Marshall, 1 M. & C. 373.

59.

(0) Boulton and Watt v. Bull, 3 Ves. 140.

(p) Collard v. Allison, 4 M. & C. 488; Curtis v. Cutts, 2 Coop. C. C.

(q) Losh v. Hague, Webst. P. C. 200; Bickford v. Skewes, Webst. P. C. 212.

(r) Muntz v. Grenfell, V. C. Knight Bruce, 2 Coop. C. C. 61; 7 Jurist, 121.

Where a license had been taken by the defendant for the use of two inventions, one of which was afterwards disclaimed, the defendant refusing to pay the royalties reserved, a demurrer to a bill, praying for an account or an injunction to restrain the defendant from all future use of the invention, in case of his refusal to pay the royalties, was overruled. (s)

15. Where there is conflicting evidence upon the question of infringement, the Court will not grant an injunction till it has been ascertained by action at law, that the acts complained of are an infringement of the legal right granted by the patent.(t)

Lord Eldon said, "Where there is one question, whether a patent is valid, and another, whether it has been infringed, the Court would be going a great way if it granted an injunction.(u) If there has been no infringement, the Court has no power to make compensation to the defendant for the injury occasioned by the injunction. (a)

16. An injunction will not be granted on the application of the assignee of a patent, unless his title as assignee is clear. (y) 17. It is a principle of equity, that a person shall not, by his silence or acquiescence, induce another to expend his money, and incur risk, and then come in and share in the profit. Where the defendants went to considerable expense in erecting hot-blast apparatus, the plaintiff not interfering to stop them, but permitting them to complete their works, under the expectation that if they proved successful, the defendants would take a license, Lord Cottenham dissolved the injunction obtained by the patentee; but the plaintiff having succeeded in an action, the injunction was revived by Lord Lyndhurst.(z)

18. If the plaintiff has been guilty of unnecessary delay in coming to the Court, though the impression of the Court is strong in his favour, an injunction will be refused till the

(s) Haddan v. Smith, 17 L. J. Chy. N. s. 43. See Neilson v. Fothergill, Webst. P. C. 289.

(t) The Electric Telegraph Company v. Nott, 2 Coop. C. C. 41. (u) Wood v. Cockerell, 2 Coop. C. C. 57.

(x) Morgan v. Seaward, Webst. P. C. 168.

(y) Lowndes v. Duncombe, 2 Coop. C. C. 216.

(z) Neilson v. Thompson, Webst. P. C. 286. See Crossley v. Derby Gas Company, Webst. P. C. 120. See Wood v. Sutcliffe, 21 L. J. N. s. Chy. 253; Rochdale Canal Company v. King, 20 L. J. N. s. Chy. 675.