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ately upon the close of the argument of a motion for such a writ. It does not appear to warrant a restraining order before notice is actually served upon the defendant, nor indeed before the motion has been heard by the court, though the last member of this statement is less clearly true than the first. Even the first has been denied by one district judge; but in order to deny it, he had to hold that a notice is "given" when a rule to show cause against a motion is entered in court.' But the statute does not provide for any rule to show cause. It provides for a notice. which is given; and no notice can be said to be given until it is served.
§ 665. In deciding whether a given complainant has made out a prima facie case for a preliminary injunction to restrain infringement of a patent, the judge is guided by the presence or absence of two presumptions and one certainty. Those presumptions relate to the validity of the patent and to the defendant's infringement thereof, and that certainty relates to the complainant's title thereto. If that certainty or either of those presumptions are absent in a given case, no preliminary injunction will be granted; but such a writ will be granted where they are all present, unless the defendant interposes some good defence to the motion, or unless the court takes a bond from the defendant instead of subjecting him to an injunction. A special presumption that the patent is valid, lies at the foundation of a patentee's right to a preliminary injunction. That presumption does not arise out of the unattended letters patent, but will always exist where the patent has been suitably adjudicated in a Federal court, and there held to be valid; or where the validity of the patent has been
1 Yuengling v. Johnson, 1 Hughes. 607, 1877.
Edward Barr Co. v. Sprinkler Co. 32 Fed. Rep. 80, 1887.
3 Foster v. Crossin, 23 Fed. Rep. 401, 1885; Dickerson v. Machine Co. 35 Fed. Rep. 145, 1888.
Orr v. Littlefield, 1 Woodbury & Minot, 13, 1845; Woodworth v. Hall, 1 Woodbury & Minot, 248, 1846; Woodworth Edwards, 3 Woodbury & Minot, 120, 1847; Gibson v. Van Dresar, 1 Blatch. 532, 1850; Potter v. Holland, 4 Blatch. 258,
suitably acquiesced in by the public; or where the defendant at bar has allowed a decree pro confesso to be taken against him; or where the defendant does not deny the validity of the patent; or where he is estopped from doing so; and that presumption will sometimes exist where the patent has successfully undergone an interference or other contested proceeding in the Patent Office."
§ 666. An adjudication in another case, in order to furnish a suitable foundation for a right to a preliminary injunction, must have resulted in favor of the patent in a regular hearing in equity, or on the trial of an action at law.' Of these, the former raises the stronger presumption,' but most of the considerations which apply to it, apply also to the latter. An interlocutory decree in another case, is as good a foundation for a right to an injunction as a final decree would be; because an interlocutory decree settles all pending questions of validity, and a final decree merely reiterates its conclusions on that point. An adjudication
1858; Parker v. Brant, 1 Fisher, 58, 1850; Potter v. Fuller, 2 Fisher, 251, 1862; Grover & Baker Sewing Machine Co. v. Williams, 2 Fisher, 134, 1860; Potter v. Whitney, 3 Fisher, 77, 1866; Conover v. Mers, 3 Fisher, 386, 1868; Goodyear Dental Vulcanite Co. v. Evans, 3 Fisher, 390, 1868; Goodyear v. Berry, 3 Fisher, 439, 1868; Goodyear v. Rust, 3 Fisher, 456, 1868; Atlantic Giant Powder Co. v. Goodyear, 3 Bann. & Ard. 167, 1877; Green v. French, 4 Bann. & Ard. 169, 1879; Kirby Bung Mfg. Co. v. White, 5 Bann. & Ard. 263, 1880; Cary v. Spring Bed Co. 27 Fed. Rep. 299, 1885; American Bell Telephone Co. v. National Telephone Co. 27 Fed. Rep. 663, 1886.
1 Goodyear v. Railroad Co. 1 Fisher, 626, 1853; American Middlings Purifier Co. v. Christian, 3
Bann. & Ard. 48, 1877.
2 Schneider . Bassett, 13 Fed. Rep. 351, 1882.
Sickels v. Mitchell, 3 Blatch. 548, 1857; New York Grape Sugar Co. v. American Grape Sugar Co. 10 Fed.Rep. 835, 1882.
• Time Telegraph Co. v. Himmer, 19 Fed. Rep. 322, 1884.
Pentlarge v. Beeston, 14 Blatch. 354, 1877; Smith. Halkyard, 16 Fed. Rep. 414, 1883; Consolidated Apparatus Co. v. Brewing Co. 28 Fed. Rep. 428, 1886; Minneapolis Harvester Works v. Machine Co. 28 Fed. Rep. 565, 1886; Dickerson . Machine Co. 35 Fed. Rep. 147, 1888. Doughty v. West, 2 Fisher, 559,
of a prior suit based on the first term of a patent, may be made the foundation of a right to a preliminary injunction to restrain infringement of the extended term of the same patent.' But no adjudication of a suit based on an original patent can be invoked as a basis for a preliminary injunction to restrain infringement of any new claim contained in a reissue thereof. The difference between a prior decree in equity and a prior verdict at law, as foundations for an injunction, seems to be this. A decree cannot be ignored on any ground which merely tends to show that the judge who rendered it misunderstood or misweighed the evidence upon which it was based; while a verdict of a jury may be disregarded if the judge who is invited to base a preliminary injunction upon it, is of opinion that it was not justified by the facts.
§ 667. Public acquiescence, sufficient to create a presumption of validity, and therefore sufficient to furnish a foundation for a right to a preliminary injunction, may arise out of either of two classes of facts. It may arise where the patentees made and sold specimens of the patented article for many years, during which no other person assumed to make any such specimens; or it may arise where the patentee long licensed others to make, use, or sell such specimens, while nobody assumed to do either without such a license from him, and the acquiescence is quite as positive in this case as in the other. But acquiescence in exclusive use of a thing which contains several patented inventions, does not raise a special presumption of validity in favor of any particular one of the patents involved; and when acquiescence stops for good reasons, the special presumption of validity which rested upon it, comes also to an end."
1 Clum v. Brewer, 2 Curtis, 507, 1855; Tilghman v. Mitchell, 4 Fisher, 615, 1871.
? Poppenhusen v. Falke, 2 Fisher, 181, 1861.
3 Sickels v. Young, 3 Blatch. 297, 1855; Day v. Hartshorn, 3 Fisher, 32, 1855.
4 Sargent v. Seagrave, 2 Curtis, 557, 1855; Covert v. Curtis, 25 Fed. Rep. 43, 1885.
5 Upton v. Wayland, 36 Fed. Rep. 691, 1888.
Wollensak v. Sargent, 33 Fed. Rep. 843, 1888.
§ 668. The length of time necessary to make exclusive possession, of the first sort, available in a motion for a preliminary injunction, depends upon the nature of the invention, and on the extent to which a good invention of the sort would naturally be used if it were free to the public; and upon the popularity of that particular invention with that part of the public likely to want an article of the kind.' Where nobody but the patentee had any use for the article during the time of the alleged acquiescence, or where its merits were prized so low that nobody else cared to adopt it; no lapse of time has any tendency to raise a presumption that the patent is valid. Acquiescence in claims which nobody cared to dispute when the acquiescence occurred, has no tendency to show that those claims are valid. But where all persons, other than the owner of the patent, refrain from making, using, or selling specimens of the patented article merely because it is patented, and notwithstanding it would otherwise be for their interest to adopt it; their acquiescence shows their conviction that the patent is valid a conviction presumably based on inquiry, because persons are not likely to acquiesce in adverse rights without any investigation of their soundness.' In a case of the latter sort, any acquiescence which is shown by lapse of time to be general and to be genuine, will be sufficient to sustain a preliminary injunction.' Two years have been found to be ample in a case where the patentee made and sold 105,000 specimens of his patented apple-paring machine during that time, and in another case, eight years, in which the patentee made and sold 150 specimens of his patented machine for cutting leather for shoe soles, were held to be sufficient."
§ 669. The length of time necessary to make exclusive
possession, of the second sort, available on a motion for a preliminary injunction will depend largely upon whether the licenses granted were granted in consideration of the payment of substantial royalties, or for such an insignificant price as indicates that they were issued for the sole purpose of raising a presumption of public acquiescence. In the former case, it is safe to assume that sales of licenses will be quite as rapidly efficacious in the desired direction, as sales of specimens of the patented invention; while in the latter case, a long and genuine payment of royalties will be necessary to give the licenses any importance in respect of preliminary injunctions against third parties.
§ 670. Public acquiescence is strengthened rather than weakened, as a foundation to a right to a preliminary injunction, by the fact that some persons for a while refused to join in it, but on receiving further information, submitted to the exclusive right claimed by the patentee. Such a submission is generally the most persuasive degree of acquiescence. Nor is universal acquiescence necessary to be shown as existing at the time of the motion; for if it were necessary and were shown, it would prove that the defendant himself is not infringing the patent, and thus negative that part of the foundation of the case.' But a preliminary injunction will not be granted on any basis of acquiescence where the defendant has been long in possession and use of the invention, adverse to the claim of the complainant, and under a claim and color of right. No acquiescence in an original patent can be made the basis of a right to a preliminary injunction to restrain infringement of any claim in a reissue of that patent, unless that claim was also contained in the original.*
§ 671. A decree pro confesso entered in a case, raises a
1 Grover & Baker Sewing Machine Co. v. Williams, 2 Fisher, 138, 1860. * Sargent v. Seagrave, 2 Curtis, 556, 1855.
3 McComb v. Ernest, 1 Woods,
Isaacs v. Cooper, 4 Washington, 259, 1821.
Grover & Baker Sewing Machine Co. v. Williams, 2 Fisher, 144, 1860.