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$ 679. The effect of an adjudication may be averted by evidence of some good defence to the patent, together with evidence showing that defence not to have been interposed in the prior adjudicated case.' So also, the effect of a prior adjudication may sometimes be averted by showing that the case adjudged involved questions of nicety and importance, and has been taken to the Supreme Court for review,' or has gone no further than a verdict of a jury which is still pending on a motion for a new trial. But courts will not always disregard adjudications which are thus suspended. They are a good foundation for preliminary injunctions, unless the defendant can convince the judge that they were wrong. The effect of a prior adjudication can sometimes be averted by showing that there has been an adjudication against the validity of the patent, but not where it appears that the lost cause was decided on a part only of the material evidence, nor can such an effect be averted by showing that the validity of the patent is in question in some other case which has long been pending and still awaits adjudication.' Where the patent sued upon is a reissue of the one adjudicated, a substantial doubt of the validity of the
i Parker r. Brant, 1 Fisher, 58, 1850; Union Paper Bag Machine Co. 0. Binney, 5 Fisher, 168, 1871; American Nicolson Pavement Co. o. Elizabeth, 4 Fisher, 189, 1870; Bailey Wringing Machine Co. v. Adams, 3 Bann. & Ard. 97, 1877; Goodyear o. Allyn, 6 Blatch. 35, 1868; Robinson 0. Randolph, 4 Bann. & Ard. 163, 1879; Page 0. Telegraph Co. 18 Blatch. 125, 1880; Ladd v. Cameron, 25 Fed. Rep. 37. 1885; Fraim v. Iron Co. 27 Fed. Rep. 457, 1886; National Machine Co. 0. Hedden, 29 Fed. Rep. 149, 1886; Glaenzer v. Wiederer. 33 Fed. Rep. 583, 1887; Holmes Protective Co. 0. Alarm Co. 31 Fed. Rep. 562, 1887; Travers o.
Spreader Co. 35 Fed. Rep. 133, 1888 Stuart v. Thorman, 37 Fed. Rep. 90, 1888.
? Morris o. Mfg. Co. 3 Fisher, 70, 1866.
Day o. Hartshorn, 3 Fisher, 34, 1855.
4 Forbush v. Bradford, 1 Fisher, 317, 1858; Day o. Ilartshorn, 3 Fisher, 32, 1855; Morris v. Mfg. Co. 3 Fisher, 70, 1866; Wells 0. Gill, 6 Fisher, 89, 1872.
Keyes v. Refining Co. 31 Fed. Rep. 560, 1887.
6 United States Stamping Co. v. King, 4 Bann. & Ard. 469, 1879.
? Atlantic Giant Powder Co. 0. Goodyear, 3 Bann. & Ard. 161, 1877. 2 Bradley & Hubbard Mfg. Co. v. The Charles Parker Co. 17 Fed. Rep. 240, 1883. Hat-Sweat Mfg. Co. v. Sewing Machine Co. 32 Fed. Rep. 403, 1887.
reissue as a reissue, must be solved against a motion for a preliminary injunction.'
$ 680. The effect of acquiescence, as a foundation for a preliminary injunction, may be averted by evidence that it was not general, or was not genuine ; by proof that while some acquiesced in the patent, many others did not; or by proof that those who did acquiesce, did so collusively and not because they believed the patent to be invulnerable. And the effect of acquiescence may also be averted by evidence or arguments which clearly show that the patent is really invalid.
$ 681. The fact that the patent sued upon has been repealed, or that it has expired by its own limitation, or because of the expiration of some foreign patent for the same invention, is of course a good defence to a motion for a preliminary injunction; as also is any fact which overthrows the title of the complainant; or any fact which shows the conduct of the complainant or his privies to be unjustifiable in the eye of equity.'
$ 682. A license is a good defence to a motion for a preliminary injunction; and where the affidavits leave the existence of a valid license in doubt, a preliminary injunction will be refused. Where the question of license depends upon the construction of documents, the court will construe them on a motion for a preliminary injunction, unless it is made to appear that evidence exists which is proper and necessary to be produced in order to enable the judge to arrive at the intention of the parties to an ambiguous instrument. Where the license set up has been forfeited for non-payment of the royalty, a preliminary injunction will be granted, in an otherwise proper case, unless
3 Western Union Telegraph Co. . Telegraph Co. 25 Fed. Rep. 30, 1885.
4 Beane v. Orr, 2 Bann. & Ard. 176, 1875.
5 Hodge o. Railroad Co. 6 Blatch. 165, 1868.
the defendant pays that royalty within some reasonable time to be fixed by the court;' and where it has been forfeited by a forbidden use of the patented thing, a preliminary injunction may be granted as to that use, but not as to the kind of use authorized by the license. The principle of
' these precedents appears to be that a preliminary injunction will not be used to enforce a forfeiture, when the doings which caused the forfeiture can be otherwise compensated. So, also, a preliminary injunction will be refused where the defendant had a license which he forfeited by omission to pay the royalty, if that omission was necessitated by bad faith on the part of the complainant.
$ 683. Estoppel is also a good defence to a motion for a preliminary injunction, and will prevail against a motion for that relief, upon the same facts that would make it prevail in an action at law."
$ 684. Laches is a good defence to a motion for a preliminary injunction;' and delay works laches, unless it is excused by some fact which renders it reasonable. The delay which, if unexcused, works laches in respect of an application for a preliminary injunction, is that which occurs after the infringement sued upon was committed,' and not any delay which occurred before that time. Delay after the infringement, may occur before the suit is brought, or it may occur after that event, and before any motion is made for a preliminary injunction.
Three months' delay of the first kind, for which there was no particular excuse, and which caused no injury to the de
1 Woodworth 0. Weed, 1 Blatch. 165, 1846; Goodyear v. Rubber Co. 3 Blatch. 455, 1856.
Wilson 0. Sherman, 1 Blatch. 636, 1850.
3 Crowell 0. Parmeter, 3 Bann. & Ard. 480, 1878; Washburn & Moen Mfg. Co. o. Barbed Wire Fence Co. 22 Fed. Rep. 712, 1884; Washburn & Moen Mfg. Co. v. Scutt Co. 22 Fed. Rep. 710, 1884.
4 Sections 467 to 469 of this book.
5 Hockholzer v. Eager, 2 Sawyer, 363, 1873; Keyes o. Refining Co. 31 Fed. Rep. 560, 1887.
6 Wortendyke v. White, 2 Bann. & Ard. 26, 1875 ; Green v. French, 4 Bann. & Ard, 169, 1879; Collignon v. Hayes, 8 Fed. Rep. 912, 1881.
* American Middlings Purifier Co. 0. Christian, 3 Bann. & Ard. 50, 1877.
fendant, has been held not to constitute laches;' but in another case, eighteen months',' and in another, two years' delay was held to have that effect;' and in still another, a delay of two years by the then owners of the patent, was held to preclude their assignees from obtaining a preliminary injunction. Two years' delay to sue was excused in one case on the ground that the complainant was much occupied with other business during the time, and that he repeatedly notified the defendant to cease his infringing.' The pendency of a test case under a patent is also a good excuse for delay in bringing actions against other infringers, when those other infringers interpose the defence of laches to a motion for a preliminary injunction.'
Delay after a suit is begun will constitute such laches as will defeat an application for a preliminary injunction, if that delay continues till the defendant has closed his evidence for the interlocutory hearing of the case ;' and a fortiori when it continues till the case is about to be argued on the interlocutory hearing.
$ 685. Where the complainant has made out a prima facie case for a preliminary injunction, and where the defendant has not overthrown that case, the court is generally bound to grant such an injunction' upon all or upon part of the
1 Union Paper Bag Machine Co. 0. Binney, 5 Fisher, 167, 1871.
? Hockholzer v. Eager, 2 Sawyer, 363, 1873.
Sperry v. Ribbans, 3 Bann. & Ard. 261, 1878.
7 Wooster o. Machine Co. 4 Bann. & Ard. 319, 1879.
8 Andrews 0. Spear, 3 Bann. & Ard. 80, 1877.
9 Gibson o. Van Dresar, 1 Blatch. 535, 1850; Sickels 0. Mitchell, 3 Blatch. 548, 1857; Sickels v. Tileston, 4 Blatch. 109, 1857; Potter t. Fuller, 2 Fisher, 251, 1862; Conover 0. Mers, 3 Fisher, 386, 1868; Ely r. Mfg. Co. 4 Fisher, 64, 1860; Rumford Chemical Works 0. Vice. 14 Blatch. 181, 1877; American Middlings Purifier Co. 0. Christian, 3 Bann. & Ard. 54, 1857 ; Green T. French, 4 Bann. & Ard. 169, 1879.
4 Spring v. Machine Co. 4 Bann. & Ard. 428, 1879.
Collignon v. Hayes, 8 Fed. Rep. 912, 1881.
6 Van Hook v. Pendleton, 1 Blatch. 187, 1846; Ru ford Chemical Works 0. Vice, 14 Blatch. 181, 1877; Green 0. French, 4 Bann. & Ard. 169, 1879; Colgate v. Gold & Stock Telegraph Co. 4 Bann. & Ard. 425, 1879.
claims of the patent, according to the merits of the case.' Under some circumstances, however, the court can give the defendant the option to submit to such an injunction, or to give a bond to secure any decree for profits or damages which may ultimately be awarded against him ; but a bond can be required only in a case where an injunction must issue if the bond is not given.' The circumstances under which it is proper to give the defendant that option include the following:
$ 686. Bonds may be taken, instead of preliminary injunctions being imposed, if the complainant habitually avails himself of his exclusive right by receiving royalties for licenses, rather than by making and selling, or making and using, the patented article himself while permitting no other to do so.' But where the complainant is able and willing to supply the market for that article, the fact that the defendant is willing to take a license, and able to pay for one,
, does not entitle him to the option of giving bonds, if the complainant declines to give him a license.
$ 687. So also, a defendant is entitled to the option of giving bonds instead of being enjoined, where his infringing machinery contains costly features which are not covered by the complainant's patent, or where the infringing article was purchased in good faith, having been constructed in conformity to a junior patent;' or where it was so con
Colt o. Young, 2 Blatch. 471, Grape Sugar Co. v. American Grape 1852 ; Potter 0. Holland, 1 Fisher, Sugar Co. 10 Fed. Rep. 837, 1882 ; 382, 1858.
McMillan o. Conrad, 16 Fed. Rep. * Forbush v. Bradford, 1 Fisher, 128, 1883; Eastern Paper Bag Co. o. 317, 1858; American Middlings Pu- Nixon, 35 Fed. Rep. 752, 1888. rifier Co. 0. Atlantic Milling Co. 3 4 Baldwin 0. Bernard, 5 Fisher, Bann, & Ard. 173, 1877.
447, 1872; Westinghouse Air Brake * Howe v. Morton, 1 Fisher, 601, Co. v. Carpenter, 32 Fed. Rep. 545, 1860; Hodge 0. Railroad Co. 6 1887. Blatch. 166, 1868; Dorsey Harvester Howe v. Morton, 1 Fisher, 587, Rake Co. 0. Marsh, 6 Fisher, 387, 1860 ; Stainthorp 0. Humiston, 2 1873; Colgate o. Gold & Stock Tel. Fisher, 311, 1862; Eagle Mfg. Co.o. egraph Co. 16 Blatch. 503, 1879; Plow Co. 36 Fed. Rep. 907, 1888. Kirby Bung Mfg. Co. o. White, 1 6 United States Annunciator Co. McCrary, 155, 1880 ; New York 0. Sanderson, 3 Blatch. 184, 1854.