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structed by the defendant himself; or where the defendant is only a seller of specimens of the patented article, a suit being pending against the manufacturer from whom he received those specimens ;' or where the prior adjudication upon which the right to a preliminary injunction is based, has been carried to the Supreme Court, and is still pending there;' or where its correctness is doubted by the court;' or where the injunction, if granted, would be very damaging to the interests of the defendant, and not particularly beneficial to the legitimate rights of the complainant;' or where public policy forbids a discontinuance of the defendant's use of the patented invention ;' or where the complainant does not himself employ the invention ;' or where, for any reason, a preliminary injunction would operate unjustly.' It is no part of the legitimate office of a preliminary injunction to force the defendant to compromise a disputed claim ;* nor to compel him to give the complainant a contract to purchase specimens of the patented thing.'
But in the absence of every special reason for giving the defendant the option of giving bonds, instead of submitting to an injunction, that option cannot be demanded by him;" nor ought it to be granted by the court." Where the defendant is entitled to the option of giving bonds or being enjoined, and chooses the former alternative, but is unable to furnish the bonds promptly, an injunction may issue against him, coupled with an order for its dissolution whenever the proper bonds are approved and filed.'
1 Irwin v. McRoberts, 4 Bann. & Ard. 414, 1879.
i Wells v. Gill, 6 Fisher, 93, 1872.
8 Steam Gauge & Lantern Co. v. Mfg. Co. 25 Fed. Rep. 493, 1885; Eastern Paper Bag Co. v. Nixon, 35 Fed. Rep. 752, 1888.
+ Morris v. Mfg. Co. 3 Fisher, 68, 1866; Morris v. Shelbourne, 4 Fisher, 377, 1871 ; Dorsey Harvester Rake Co. v. Marsh, 6 Fisher, 387, 1873; Kirby Bung Mfg. Co. v. White, 1 McCrary, 155, 1880; Hoe v. Boston Daily Advertiser, 14 Fed. Rep. 914, 1883.
6 Guidet v. Palmer, 10 Blatch. 220,
6 Hoe v. Knap, 27 Fed. Rep. 212, 1886.
? Union Paper-Bag Machine Co. e. Binney, 5 Fisher, 169, 1871.
8 Morris v. Mfg. Co. 3 Fisher, 70, 1866.
9 American Nicolson Pavement Co. v. Elizabeth, 4 Fisher, 197, 1870.
10 Consolidated Fruit-Jar Co. 0. Whitney, 1 Bann. & Ard. 361, 1874.
11 Gibson v. Van Dresar, 1 Blatch. 532, 1850; Tracy o. Torrey, 2 Blatch. 275, 1851; Tilghman o. Mitchell, 4 Fisher, 615, 1871; McWilliams Mfg. Co. v. Blundell, 11 Fed. Rep. 419, 1882.
$ 688. Bonds may be required from a complainant, under some circumstances, before a preliminary injunction will be granted.” Such bonds are conditioned on the ultimate success of the complainant in sustaining his claim, and may be required in a case where the injunction, if granted, will cause serious injury to the defendant.' If that is also a case where the defendant is entitled to avert the injunction by giving a bond, that option will first be given to him. If he chooses to file a bond, of course none will be required from the other side, but if he prefers to submit to an injunction, the injunction will be granted only upon the filing of a proper indemnity bond by the complainant.
$ 689. A preliminary injunction cannot be averted on the sole ground that an action at law for the damages to be caused by the infringement, would be a plain, adequate, and complete remedy therefor. In many cases that would 'not be true, and the court cannot determine on affidavits whether it would be true in a particular case or not. A motion for a preliminary injunction is not to be defeated on a possibility that the complainant might be able to obtain damages for the wrong which he seeks to prevent. But even where it is plain that the damages recoverable in an action at law, would be as beneficial to the complainant as an injunction would be, that fact does not oust the right of the complainant to the latter relief. The case is analogous to actions in equity for the specific performance of contracts
· Brooks v. Bicknell, 3 McLean, 250, 1843; Foster v. Moore, 1 Curtis, 279. 1852; Howe o. Morton, 1 Fisher, 586, 1860; Stainthorp v. Humiston, 2 Fisher, 311, 1862; Goodyear v. Hills, 3 Fisher, 134, 1866; Sykes v. Manhattan Co. 6 Blatch. 496, 1869; Gilbert & Barker Mfg. Co. r. Bussing, 12 Blatch. 426, 1875.
Tobey Furniture Co. v. Colby, 35 Fed. Rep. 594, 1888.
3 Orr v. Littlefield, 1 Woodbury & Minot, 20, 1845; Brammer v. Jones, 3 Fisher, 340, 1867; Shelly v. Brannan, 4 Fisher, 193, 1870; Consolidated Fruit-Jar Co. v. Whitney, 1 Bann. & Ard. 361, 1874.
to sell real property. The bills in such cases seldom show, and never are required to show, that an action at law for damages would not be a plain, adequate, and complete remedy for the failure to perform. “Ordinarily a vendor, in the recovery of pecuniary damages, has an adequate remedy at law, but he has a choice of remedies. He may resort either to a court of law or a court of equity.” Bills for preliminary injunctions in patent cases are never obnoxious to Section 723 of the Revised Statutes, because the word “ case” in that section is to be interpreted specifically and not generically. “Suits in equity shall not be sustained in either of the courts of the United States in any case where a plain, adequate, and complete remedy may be had at law." This statute regards an action in equity to restrain infringement of a patent, as a case for an injunction, and not merely as a patent case. It therefore opposes no obstacle to the jurisdiction of equity in such a case.
$ 690. Where the defendant withdraws his opposition to a motion for a preliminary injunction before the motion is decided, the injunction will be granted pro confesso, and the court will decline to render a decision. That is to say: a consent decree will be entered as a consent decree, and not as one based on a conclusion of the judicial mind. If this rule were otherwise, parties between whom there continued to be no real contest might manage to secure decisions from courts which would operate to their mutual advantage, and to the serious disadvantage of strangers to the litigation.
$ 691. The discretion of the court was said, in some of the older cases, to be the real criterion of judgment, when deciding motions for preliminary injunctions in patent cases. The doctrine was a necessity in the beginning of the evolution of the patent laws, because the judges could then find but few precedents to guide or to warn. At present the fact is otherwise. Approved precedents can now be found
Crary v. Smith, 2 Comstock (N. Y.), 62, 1848.
2 Revised Statutes, Section 723.
8 American Middlings Purifier Co. v. Vail, 15 Blatch. 315, 1878.
on nearly every point that can arise. No other branch of the patent law is proportionately richer in that respect, than the branch which relates to preliminary injunctions. But there is still a sense in which the granting or refusing such a writ may truly be said to rest in the discretion of the judge. It so rests, in the sense that no appeal lies from his decision. But that fact is not a reason why a judge should be asked to disregard precedents when making up dicial opinion. He is equally bound by his oath and by his honor to decide cases according to law, whether an appeal lies from his decision or not. Indeed, if it is possible for a judge to hew closer to the line of statutes and of precedents in one class of cases than he ought to do in all classes, he will be particularly scrupulous to do so in whatever class his decision will be final, and any error remediless.
$ 692. A motion to dissolve a preliminary injunction may bo made at any time,' upon reasonable notice to the complainant's solicitor;' and it will be promptly granted where the judge becomes convinced that the granting of the injunction was erroneous in point of law;' or where the defendant properly proves any fact which would have been fatal to the motion for the preliminary injunction, if presented at the time that motion was heard, and shows that the evidence could not with reasonable diligence have been presented at that hearing.' So also, a dissolution of a preliminary injunction may be based on a fact which arose after the injunction was granted : for example, on the fact that the complainant, after that event, assigned all his interest in the future duration of the patent to another;' or on the fact that he omitted to prosecute his case toward an interlocutory hearing with the speed which the rules of court require.
1 Earth Closet Co. o. Fenner, 5 Fisher, 20, 1871.
? Minturn 0. Seymour, 4 Johnson's Chancery (N. Y.), 173, 1819; Cammack o. Johnson, 2 New Jersey Equity, 163, 1839; Jones v. Bank, 5 How. (Miss.) 43, 1840.
3 Wilkins v. Jordan, 3 Washington, 226, 1813; Caldwell v. Waters, 4 Cranch's Circuit Court Reports, 577, 1835.
* Steam Gauge & Lantern Co. v. Miller, 11 Fed. Rep. 719, 1882.
5 Woodworth o. Rogers, 3 Woodbury & Minot, 135, 1847; Hussey 0. Whiteley, 2 Fisher, 125, 1860 ; Young v. Lippman, 5 Fisher, 230, 1872 ; Cary v. Spring Bed Co. 26 Fed. Rep. 38, 1886; Huntington 0. Heel Plate Co. 33 Fed. Rep. 838, 1888.
$ 693. A motion to dissolve an injunction for error in point of law, must be based on a point which was established after the injunction was granted, or which was obviously overlooked or misweighed by the judge at that time. It would be unprofessional as well as unavailing for counsel to move a dissolution on the ground that the judge wrongly reasoned out his conclusion from the premises from which he proceeded. Courts ought not to be asked to change their judgments on points of law, unless the law has changed or been newly formulated in the mean time, or unless some special error can be pointed out. Few things are more trying to the patience of judges, or more useless to the interests of clients, than the repetition of old and well understood arguments.
$ 694. Motions to dissolve an injunction on account of newly discovered facts, require the mover to assume the burden of establishing those facts, because when an injunction is once granted, it is presumed to have been granted rightfully, until the contrary is made to appear.' The contrary can seldom or never be made to appear in a patent case, by means of the defendant's answer; because the answer, as far as it refers to the validity of the patent and of the complainant's title thereto, is generally made on information and belief only, and as far as it refers to the defendant's infringement, it amounts only to a general denial. Where an answer is on file at the time the motion to dissolve is heard, the injunction will not be dissolved on the strength of any facts which are not set up in the answer;* but whether an answer is on file at that time or not, the facts
1 Parkhurst v. Kinsman, 1 Blatch. 489, 1849.
. Robinson o. Randolph, 4 Bann. & Ard. 318, 1879.
3 Woodworth v. Rogers, 3 Woodbury & Minot, 143, 1817.
* Union Paper Bag Machine Co. v. Newell, 11 Blatch. 550, 1874.