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sufficient presumption of the validity of the patent, to support a right to a preliminary injunction in that case,' but there is no ground for giving such a decree such an operation in any case against another defendant.'

$ 672. A consent decree is one which is entered by the consent of the defendant, at some stage of the case after the filing of the answer, and before the judge has decided the case on its merits. In some branches of jurisprudence, such a decree may raise as strong a presumption of the validity of the complainant's case, as could be raised by a decree based on a decision of the court. That may be the fact where the nature of the case shows that it would have been distinctly more advantageous for the defendant to win the suit than to be defeated. But in patent cases, it would often be pecuniarily better for the defendant to consent to a decree against him, than to win the suit, if by doing the former he could enable the complainant to secure preliminary injunctions against third parties. If he wins, he secures a right to continue his doings, but he also practically secures the same right for other persons, and thus throws the business open to general competition. If by consenting to a decree against himself, a defendant could secure a license on favorable terms, and could enable the complainant to prevent all competition by means of preliminary injunctions, it would frequently happen that the defendant's net profits would be larger than they would have been if he had won the suit. To win the suit would often operate to reduce prices and profits, to an amount in excess of the aggregate of the decree to which he might consent and the royalties he might promise to pay. In such a case a defendant could better afford to pay the decree and the royalties, than to have had complete success in his defence. For these reasons, a consent decree in a patent case can never be a proper foundation for a right to a preliminary injunction against third persons ; unless it appears from the na

· Schneider 0. Bassett, 13 Fed. Rep. 351, 1882.

? Everett o. Thatcher, 3 Bann. & Ard. 437, 1878.

ture of the patented thing, or from convincing evidence, that the defendant consented to the decree because his defence had become hopeless, and not because it had become inexpedient regardless of its strength. This fact can never appear from the nature of the patented thing, where that thing is an article of commerce; because the making and selling of articles of commerce is subject to those laws of trade which are sure to diminish profits whenever monopoly is replaced by competition. The considerations stated in this paragraph are doubtless those which have caused Federal judges to disregard consent decrees when deciding upon applications for preliminary injunctions in patent cases.' It is true that the same judge who made the third of the decisions just cited, once based a preliminary injunction partly on a consent decree in another case, but he did so on the ground that the circumstances under which the decree was entered, convinced him that it was consented to because the defendant was unable to make a successful defence.

$ 673. Where a defendant admits or does not deny, in his pleadings, the validity of the patent upon which a preliminary injunction is sought against him ; there seems to be no reason why such an admission or lack of denial should not raise a sufficient presumption of that validity to furnish a foundation to a right to a preliminary injunction in that case.' As between the parties to a motion, the court may properly assume every statement of fact to be true, which is made by the complainant, and expressly or tacitly admitted by the defendant. And where the validity of a patent is disputed on no ground except one which is susceptible of an immediate and correct decision ; such a decision may be made on a motion for a preliminary injunction, and may result in the granting of the injunction if the decision is favorable to the patent.'

Spring o. Domestic Sewing Machine Co. 4 Bann. & Ard. 427, 1879; Hayes 0. Leton, 5 Fed. Rep. 521, 1881; De Ver Warner v. Bassett, 7 Fed. Rep. 468, 1881; Keyes o. Re. fining Co. 31 Fed. Rep. 561, 1887 ; Wollensak o. Sargent, 33 Fed. Rep.

843, 1888; Tibbe Mfg. Co. v. Hein. ken, 37 Fed. Rep., 686, 1889.

? Steam Gauge & Lantern Co. o. Miller, 8 Fed. Rep. 314, 1881.

3 New York Grape Sugar Co. o. American Grape Sugar Co. 10 Fed. Rep. 835, 1882.

$ 674. An interference decision of the Patent Office raises a sufficient presumption of validity to furnish a foundation for a preliminary injunction, where the defendant is the person, or the legal representative or assignee of the person, who was defeated in the interference, and where he denies the validity of the patent on no other ground than that the interference decision was wrong. But such an interference decision cannot be invoked against third parties, because it does not rise to the dignity and force of an adjudication of a court.' And it cannot be invoked as against any defence not involved in it, because it has no relevancy to any such defence.

$ 675. The complainant's title to the patent upon which a preliminary injunction is asked must be clear, or the injunction will be refused. The best evidence of that title is found in the patent, if the complainant is the patentee; and if he is an assignee or grantee, he should produce the original assignments or grants which constitute his title, or produce duly certified copies thereof. Where the complainant's title papers require judicial construction, in order to determine their legal effect, it is the duty of the court to give them that construction upon a motion for a perliminary injunction, rather than to postpone the question to a final hearing, unless it is made to appear that evidence aliunde is necessary to their proper interpretation."

$ 676. Infringement or danger of infringement by the defendant, must be clearly proved by a complainant in order to entitle him to a preliminary injunction.' Precisely

· Foster v. Crossin, 23 Fed. Rep. 400, 1885.

? Pentlarge v. Beeston, 14 Blatch. 354, 1877; Holliday v. Pickhardt, 12 Fed. Rep. 147, 1882.

3 Edward Barr Co. o. Sprinkler Co. 32 Fed. Rep. 80, 1887.

* Greenwood v. Bracher, 1 Fed.

Rep. 856, 1880.

5 Mowry v. Railroad Co. 5 Fisher, 597, 1872.

6 Clum o. Brewer, 2 Curtis, 507, 1855; Dodge o. Card, 2 Fisher, 116, 1860.

Pullman v. Railroad Co. 5 Fed. Rep. 72, 1880; Marks 0. Corn, 11



what facts will give rise to such a probability of future in

a fringement, as will justify a preliminary injunction without proof of past infringement, cannot specifically be stated. Courts will never insist on absolute proof of what the defendant will do if not enjoined; for such proof can never be produced, and because it cannot harm a person to enjoin him from doing a thing which he would not do any way. A moderate probability that a defendant intends to do something which would clearly infringe the complainant's patent will therefore be sufficient to entitle the latter to a preliminary injunction in an otherwise proper case.'

Proof of infringement cannot be made by affidavits which merely state that conclusion of fact. The complainant must prove the specific character of the defendant's doings." Upon that evidence the court will examine and decide the question of infringement in the light of whatever expert testimony the case may contain,' and in the light of whatever construction of the patent, it finds on examination to be just,' and that construction will generally be guided and governed by the construction which was given to the patent in the adjudicated case upon which the special presumption of validity is based. But if the court is unable to arrive at a conclusion without the aid of further evidence, it will refuse to grant the injunction till that evidence is supplied."

In order to entitle a complainant to a preliminary injunction, it is not necessary for him to prove any infringement



Fed. Rep. 900, 1881; Coburn o. Clark, 15 Fed. Rep. 807, 1883; Woodworth 0. Stone, 3 Story, 752, 1845; Poppenhusen v. Comb Co. 4 Blatch. 187, 1858; White 0. Heath, 10 Fed. Rep. 293, 1882; Hammerschlag Mfg. Co. o. 'Judd, 28 Fed. Rep. 621, 1886; Butz Thermo-Electric Co. o. Electric Co. 36 Fed. Rep. 196, 1888.

· Sherman 0. Nutt, 35 Fed. Rep. 149. 1888.

Kirby Bung Mfg Co. o. White, 1 McCrary, 160, 1880.

3 Blanchard v. Reeves, 1 Fisher, 105, 1850.

Many v. Sizer, 1 Fisher, 33, 1849; Clum v. Brewer, 2 Curtis, 507, 1855; Coburn o. Clark, 15 Fed. Rep. 807, 1883.

5 Mallory Mfg. Co. v. Hickok, 20 Fed. Rep. 116, 1884.

6 United States Annunciator Co. 0. Sanderson, 3 Blatch. 186, 1854; Howe v. Morton, 1 Fisher, 600, 1860; Boyd v. McAlpin, 3 McLean, 430, 1844; Carey v. Miller, 34 Fed. Rep. 392, 1888.

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to have been committed or threatened within the particular district in which the court exercises jurisdiction ;' nor that the defendant's infringement has not ceased before the motion is heard. Indeed no injunction can be averted by affirmative evidence that the defendant has ceased to infringe, even though coupled with a promise that he will infringe no more.

$ 677. The defences which a defendant may make to a motion for a preliminary injunction may be by way of traverse, or by way of confession and avoidance. A defence of the former sort consists in denying, and attempting to disprove, one or more of the facts which constitute the complainant's prima facie case.

A denial alone is useless, even where it is embodied in an answer. Where the denial is

' supported by affidavits which contradict those of the complainant, the judge will refuse the injunction if he believes the defendant's affidavits to be the true ones, or if he is unable to decide which set of deponents tell the truth.' No remedy invoked in patent cases is so summary in operation or so dangerous to justice as a preliminary injunction, and the courts will not apply that remedy to cases where the complainant's prima facie evidence of a right thereto, is overthrown or seriously damaged by the evidence of the defendant.

$ 678. Defences by way of confession and avoidance to motions for preliminary injunctions, may confess and avoid the adjudication or acquiescence upon which the plaintiff bases the presumption of the validity of his patent; or may interpose any one of several facts entirely outside of the complainant's prima facie case.

1 Wilson v. Sherman, 1 Blatch. 541, 1850; Wheeler 0. McCormick, 4 Fisher, 433, 1871; Thompson 0. Mendelsohn, 5 Fisher, 188, 1871; Macaulay 0. Machine Co. 9 Fed. Rep. 698, 1881.

? Jenkins o. Greenwald, 2 Fisher, 37, 1857; Potter v. Crowell, 3 Fisher, 112, 1866; Goodyear v. Berry, 3

Fisher, 439, 1868.

3 Rumford Chemical Works . Vice, 14 Blatch. 179, 1977; Celluloid Mfg. Co. o. Mfg. Co. 34 Fed. Rep. 324, 1888.

• Clum v. Brewer, 2 Curtis, 507, 1855.

Cooper v. Mattheys, 3 Penn. LAW Journal Reports, 40, 1842.


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