68

70

78

80

90

102

110

. 111

. 113

117

.. 118

122

125

126

136

144

146

151

162

188

189

190

ENGLISH PATENT CASES.

[A TABLE OF THE CASES REPORTED will be found at the beginning of each volume. Cases follow each other in chronologic order; a decision may be found by its date. See top of page.]

CURTIS v. CUTTS.

Chancery, Jan. 19, 1839.

(8 L. J., N. S., Ch. 184.)

Granting Injunction. Retaining Bill with Leave to bring Action.

Where a bill is filed to restrain the infringement, by the defendant, of letters patent, a sufficient cause to justify the injunction must be stated by the plaintiff on the face of the bill, and he must not depend solely on the admissions contained in the defendant's answer for the granting or continuing of the injunction.

If the answer deny that the invention is new, and also that there has been exclusive enjoyment under the letters patent, and state that the specification is imperfectly set forth in the bill, which is the fact, that will dissolve an injunction previously obtained on affidavit, giving the plaintiff liberty to bring an action, although the defendant admits by his answer that he has made machines upon the principle comprised in the letters patent.

The possession and enjoyment, to entitle a party to an injunction until an action can be tried at law, must have been undisturbed and exclusive.

Appeal from a decision of the Vice-Chancellor refusing to dissolve an injunction.

The bill, which was filed by Messrs. Curtis and Parr, in June, 1838, stated (among other things) that in the year 1813 Joseph Cheeseborough Dyer, a manufacturer of cards for carding wool and similar fibrous materials, discovered and invented improvements in the machinery used in that trade; that he took out a patent for them, dated December 15, 1814, and another, for further improvements, dated December 9, 1825, the substance of which patents and of their specifications was stated in the bill, which patents in par

ticular covered machinery for making wire cards of the kinds known as "fillet" cards and "sheet cards," and for preparing leather to be used in making cards. That in January, 1836, Dyer retired from business as a manufacturer, selling his lease, machinery, tools, good-will, etc., to the plaintiffs, who became assignees of the patent of 1825. That the plaintiffs had recently discovered that the defendants had constructed divers machines for making fillet cards upon the principle of the further improvements for which the letters patent of December 9, 1825, had been granted, and had sold and disposed of some such machines, and had others in his possession, which he intended to sell without the plaintiff's license, which the bill alleged was an infringement of the letters patent of December 9, 1825. The prayer of the bill was that the defendant might be restrained from making and selling the improved machines for which the letters patent of December 9, 1825, were granted, and might account for the improved machines which he had sold and delivered up for the plaintiffs such as were in his possession.

The defendant by his answer denied the invention of the further improvements by Dyer, and stated that the specification of the letters patent of December 9, 1825, which had been enrolled, was imperfect and fraudulent; that Dyer did not discover or invent the new improvements; and that the defendant had not pirated or infringed the alleged inventions; that the further improvements and inventions were not new or original; and that Dyer was not the first and sole inventor of the further improvements and inventions; that the substance of the alleged improvements consisted of the substitution of an indented wheel or cam for a pack or notched bar of iron, and was by no means an improvement, but only a colorable alteration in the mode of producing the same result as by the old machinery, and introduced merely for the purpose of fraudulently continuing the existence of the letters patent, then about to expire; that for some months previous to the taking out the said letters patent of December 9, 1825, machines constructed on the principles for which the said letters patent were so

taken out were used and worked for making fillet cards by Dyer himself; and that in 1810 machines upon the principle of the horizontal plate, and similar to those constructed by the defendant for a person named Walton, had been and then were in use in or near London, and that a patent was taken out in respect of the same at or about that time, which letters patent had expired; that in 1835 the plaintiff Parr informed the defendant, who was then in his employ, that the letters patent of 1825 were invalid and not worth a straw; that no such machine as was actually at work as a wire card-making machine, upon the principle professed to be explained, could be made by or from the description contained in the enrolled specification. The answer, however, admitted that the defendant had made and sold card fillet machines similar in substance to the further improved card fillet machines made by the plaintiffs.

An injunction, ex parte, on affidavit, was granted by the Vice-Chancellor in July, 1838, which his Honor declined to dissolve on the coming in of the answer; and the defendant now appealed from that decision.

Rolfe, Solicitor-General, and Elmsley, in support of the appeal, contended that the bill did not sufficiently state the nature of the alleged infringements of the letters patent, or specify the improved machines; that it was not incumbent on the defendant to point out what the infringement was; that the plaintiffs, not having made out a sufficient case by their bill and affidavits, could not sustain the injunction by evidence to be collected from admissions contained in the defendant's answer; and they cited Hill v. Thompson, 1 ante, 285; Bramwell v. Halcomb, 3 Myl. & C. 737; Kay 7. Marshall, 2 ante, p. 185.

Wigram and Bichner, contra, contended that the long possession of the letters patent, for nearly fourteen years, by Dyer and the plaintiffs was a sufficient reason for the injunction being continued; and that the infringement of the letters patent being admitted by the answer, there was no issue except as to the validity of the letters patent; and that that was an additional reason for not dissolving the injunction.