660 KEYES
FEDERAL REPORTER.
and others ,
'U. 'PUEBLO SMELTING
&
REFINING
Co.
(Oirc'UitOo'Urtl jft
n. Oolorado.
May '18, 1887.)
.The ordInary rules of equity jurisprudence apply in patent cases as in others; lind a temporary prelimliiary injunction to' restrain the infringement of a ; ·pateJ;lt will TIotoe granted where the complainant has .been guilty of laches, by resting for nine years without bringing suit against one who has been using the invention for that period, l1pd where the defendant is also abundantly { able to the plaintilffor any damage which he :niay show that he has sustained, , . 9. flAME----;-4!NSW:ER,-FoRMER ADJUDIOATIONAGAINST PATENT. ! . ' . SucJijemporary pl'e1iminaryinjunction may likewise be refused where the answedd the bill puts in issue the question of novelty, and where there has · i9-thll Same circuit against the validity of the patent, which adjudication,'ltlthough abiding a new trial o.rdered by the supreme court by rllason of certain errors therein. was not set ,aside by reason 6f any . deuision·of 'that court concerning. the validity olthe patent. 3.S4ME..,.j.TBIAL: BY JURY. .
FORbrVEN'l'IoN.....PRELIMINARY INJUNCTION-PLAINTIFF'S LAqlES·
:,' *n aJlplipation for a trialby jury, made by the defendant in such suit under the act of 'dongress providing 'therefor, is in the discre,tion of the court; and, if It appears that the questIOns Involved can be determmed more properly by a chancellor, the application fOl; a jury will be refused.
'
patent No.·121,385 were granted November 28,1881, to Winan improvement in furnaces for Bmeltinglead apd field ·other 91;es, ,iAn action at brought in the circuit court of the United States for the district of Colorado, againstonc Grant et al., to recover damages for an alleged infringement of this patent. The defendimtsl'elied prificipallyon the. want of patentable novelty in the in· vention;and' it was shown that an invention similar in character had ,been described in a publication printed inBerlin in 1831-32, called "System del' Metallurgie, " by one Dr. J. B. Karsten. Upon the trial 'of the cause the oircuit juqge direCted the jury to find"a verdict for the defendants t which was accprdingly done, and judgment entered thereon. Uphn writ of error to the supi'eme court, this direction was held to be errors on the ground that the questions involved should have been submitted/to the jury, with properinstrnctions as to the law, and the case wlisreversed, and remanded with .directions to grant a new trial. 118 .U.:S.2a, 6 Sup. Ct. Rep. 974. Before such new trial took place the .:plaintiffi filed. his bill against the present defendants, to restrain infringe,ment of; the, same patent, and moved for a preliminary injunction. The :defendants interposed the sanie,defense as had been setup in said ac,tidn at' Jaw,; It further appeared that the defendants had been using .thekind of smelter in question. fOJ; nine years before the bill was filed, and that: they.1\'ere abundantly rich to compensate the plaintiff for any dam,age. which he might show that he had sustained. The defendants' made a counter-motion that the matter in issue be referred to a jury under the ·provisioni;l of the act of congress. R. E. Foot, for complainant. O. E. Gast and Thos. Macon, for defendant.
KEYES V. PU:£BLO SMELTING & REFINING CO.
561
BREWER, J. Counsel in this patent case are not here, but I will dispose of their applications, and they can ascertain from the reporter exactly what is decided. There are two motions,-'me is for apreliminary injunction, the other a counter-motion for a jUry. With respect to the first, the ordinary rules of equity jurisprudence apply in patent cases as in others, and a temporary preliminary injunction will not be granted unless it seems probable that the protection which the complainant's bill shows he is entitled to, compels it. If he can receive full protection without such temporary injunction, it will be refused. It will often be refused, also, where there has been great delay on a complain!l,llUs:pwt, in consequence of which the defendant has proceeded to build up an industry based upon that patent. Now, it appears from the answer and affidavits that this defendant is abundantly responsible for. any damages which the complainants may sustain,-worth a million of dollars and more; 80 that, for whatever injury the complainants have sustained or may suffer from the use of thesEi the defendant, itis amply ll.bleto compensate them. Further. the defendant and its predecessol"B in interest, (it is nowacorporation, and its property wastheretqforeowned by the persons who are now itS have \tsedthis kind of a smelter for nine years before this suit. While, of course, this would not justify their piracy, if they are pirating, yet it is certainly reason for not interfering by preliminary injunction. Further, the case stands upon bill requiring sworn answer, with such sworn answer, which certainly puts in issue the question of novelty. Still further, while the complainants have a judgment at law obtained some years ago in the circuit court of California, yet the adjudicatiohs in this circuit are for the present against their patent. A case was tried by Judge HALLETT in the circuit court. and he dedared their patent void,and took the case away from the jury. The complainants appealed to the supreme court, and obtained a reversal; the supreme court not affirming the validity of the patent, but saying that the question should have been left to the jury.l Still, the only express adjudication in this circuit is against the validity of the patent. A judgment by consent signifies nothing. Under those circumstances, it would seem, particularly in view of the pecuniary responsibility of the defendant, improper to issue any preliminary injunction; and that application will be denied. The defendant comes in under the act of congress, and asks that the matter be referred to a jury. I think that also ought to be denied. It is a matter of discretion under the statute, as well as under the old equity practice. It is easier for one man than for a half-dozen to come to a decision upon a question of this kindjand: questions of the validity of a patent or in mechanics, or the state! of' the '. art, are ordinarily much more capable of solution by a chancellor than a jury; and, speaking for myself, I should much prefer, in a question of that kind, to determine
IJudgment against the defendant in the case alluded to (Keyes et aJ. v. Grant et al.) was entered in this court on stipulation, after the case had been redf)cketed on wan. date from the supreme court of the United States.
v.31F.no.9-36
662
FEDERAL ltEPORTEB.
it myself than. to attempt to get the opinion of a jury. r have no desire to hear this case. When it comes to a hearing, I hope Judge HALLETT will take it, for I know he is very conservative on these questions of patent law. If it comes to me, I think I would rather dispose of it than ask the aid of a jury. The application for a jury will also be refused.
Houma
ELEC'fRICPROTECTIVE CO'. ?1. METROPOLlTAN BURGLAR ALARM CO.
(Oireuit Court, 8. D. NewYor"
July 14, 188'7.) ,
PATEN'l'S FOB INVENTIONB-'-INJU:NCTION-DIBBOLVING.
Where a preliminary injunction, restraining the infringement of a patent, has been allowed to stand for three years. and it is within, the power of the patties to bring the cause to tlnalhearlng, the court will allow the to rem&;in until such hearing, and will deny a motion to dissc>lve it, which is made on tile ground that the invention c>f tile patent in controversy was described in a, prior patent to the same Inventor, and' that a' certain authority was not before the court when the dnjuncUc>D wl\sgranted.
In Equity. Samuel A.. Duncan, for plaintiff. G. G. Frelinghuysen. for defendant. WHEELER, J. The preliminary granted herein has stood nearly three years. M<>tion ill now made to dissolve iton the grouJid that the invention of this patent was despribed in a prior patenUo the same inventor, and on the authority of Mahn v. Harwood, 112 U. S. 354, 5 Sup. Ct. ReP. 174, which was not befdrethecourt when the injunction was granted. The question involved was argued in Butterworth \'. Hill, 114 U.S. 128,5 Sup. Ct. Rep. 796, andis, said not to have been considered, as the :case was disposed of on other grounds. Since then the question has been very fully considered, and the 'authorities, including Mahn v. Ha1'(Wood, reviewed in EaStern Paper':Bag Qo.v. Standard PaperBag Co., 30 Fed Rep. 63. The conclusion was there reached:that such description ina prior patent does not, of itself alone, invalidate a subsequent patent for the invention so described, applied for in due Upon this state of the authorities, and in view of the long time during which the injunction has been in force, and the readiness with whioh the cause may be brought to final hearing, it is deemE'd. best that the injunction should remain until that time. Motion
