The remedy by injunction in patent cases is given by courts of equity, on account of the insufficiency of that given by a court of law. It is in its nature preventive, where irreparable mis-chiefs are apprehended, or when the pat-entee is likely to be vexed by litigation and a multiplicity of suits against stubborn pirates of his invention. The circuit courts of the United States have original jurisdiction as courts of chancery in all patent cases. They do not act merely as auxiliary to courts of law, and may therefore render a final decree on a patent whose validity is contested, without sending the parties in law to try their rights. It is no reflection on juries or trial by jury to say that many disputes about the originality and infringement of patents depending upon complex mathematical calculations, upon a knowledge of the principles of chemical seiencé, and of mechanical philosophy, cannot be satisfactorily decided by the verdict of twelve men, a majority, if not all of whom, have no knowledge or experience on the subjects they are called to decide on.
But while courts of equity will in some cases decide such questions on final hearing, without the assistance of courts of law, it does not follow that in every motion for preliminary injunction, the court will try and determine the whole ease on ex parte affidavits, on five days’ notice, like a court of “pied poudre.”
In cases of waste, purprésture and nuisance, where the mischief done by their continuance till final hearing, may be irreparable; or where the injury or loss to the defendant by this interposition may not be of importance, or the delay in exercising his rights could be easily compensated; such preliminary interference may be necessary to the ends of justice, even where the equity of the bill is denied by the defendant. In the case of infringement of patents, such can seldom be the case, and such preliminary intervention can only be invoked in case of wanton and stubborn persistence in pirating an invention, the title to which has been clearly established either by trial at law, or by long and peaceable possession. Hence we have refused to grant a preliminary injunction where the defendant denies on oath either the originality of the invention or the infringement of the patent, leaving the decision of the question till final hearing. It must be a very strong case in*1030deed, either of impending mischief to the complainant, or where the court, by having the machines or models before them, can see clearly that the defence set up is a mistake or a mere pretence, that the court will thus summarily interfere by granting execution before final judgment, where the defendant alleges under oath a valid defence, and denies the equity of the plaintiff.
There are cases, also, in which this preliminary injunction would cause irreparable injury to the defendant, with no corresponding benefit to the patentee.
Where the profits from a patented invention arise from a monopoly of the. sale of the machine, medicine, or composition invented, and the competition of the defendant may be highly injurious to the established legal rights of the patentee, it may be a very proper exercise of the discretion of the chancellor to restrain the defendant from infringing till he has established his right, if he pretends- to have any. But the case is very different where the supposed infringement consists in the use of some improvement in expensive machinery, which has been adopted in good faith by a defendant, and where the profit of the patentee consists, not in the monopoly of selling his machine, but in the price of licenses given to others to use it. In such a case it is the interest of the patentee that all persons should use his improvement, provided they pay him his fee for a license. The injury to him is not in using his invention, but in not paying for such use. It would be an abuse of the discretion of the court to stop a mill or furnace because it may have used some patented imprcvement in its machinery. It may ruin the defendant without any corresponding benefit whatever to the patentee. The only injury to him is the nonpayment of his license, which will be remedied by the final decree of the court, if the defendant shall be found a wrongdoer. The patent in this case is for certain rollers used in the machinery for breaking and screening anthracite coal; they form but a small, though important part of the combined machinery for the purpose. The steam engine and other apparatus necessary to the operation cost many thousands of dollars. The patentee has a fixed price for the use of his invention, one cent per ton. As between these parties alone, it is the interest of the complainant that the respondent should continue to use his invention, provided he pays the cent per ton. An injunction, by stopping the business of the defendant, may be ruinous to him. The only use to complainant would be an unjust one. It would deliver the defendant over to him with a rope around liis neck, and compel him to accept any terms dictated by the patentee. The defendant 'has sworn to his belief that he has a good and sufficient defence. Witnesses have sworn that the patentee is not the original and first inventor of the machine. The defendant has a right to a hearing before he is condemned as a pirate or infringer of the complainant’s rights. Yet the granting of this injunction would compel him to accept the complainant’s terms, and buy his peace without a hearing. And not only so, but it is alleged, and not denied, that some two hundred others would be compelled to do the same.
“It seems to me,” says Lord Cottenham, in Neilson v. Thompson, [Webst. Pat. Cas. 286,] “that stopping the works by injunction, under these circumstances, is just inverting the purpose for which an injunction is used. An injunction is used for preventing mischief; this would be using the injunction for the purpose of creating a mischief—because the plaintiff cannot possibly be injured. All that he asks, all that he demands, all that he ever expects, is one shilling per ton (and in this case, a cent per ton.) The injunction would be extremely prejuuicial to the defendants, and do no possible good to the plaintiff, for the purpose for which it may be used. It may, by operating as a pressure upon the defendant, produce a benefit. But that is not the object of the writ. The object of the court is to preserve to each party the benefit he is entitled to, until the question of right is tried, and that may entirely be secured by the defendants undertaking to keep an account. If the plaintiff is entitled, the court will have an opportunity of putting him precisely in the position he would have stood in if this question had not arisen.”
But it is contended that the court are bound to give the plaintiff the benefit of this interlocutory injunction, whatever use he may be disposed to make of it, because there has been a verdict of a jury establishing the validity of this patent, and a peaceable possession of the rights conferred by it.
Admitting the court would be justified for these reasons, to grant this motion, without any exercise of discretion founded on the reasons we have given, we do not think that these assertions are supported by the evidence. It is true there has been a verdict on a former trial between other parties. But that verdict was set aside by the court as contrary to law, and it moreover appears that the defence now offered to the validity of the patent, was not before the jury, nor passed upon by them. They were instructed by the court to assess the damages, without reference to any other question. In a subsequent trial, the same court decided against the validity of the patent, on questions of law, which were afterwards reversed by the supreme court. ■ But in none of these trials did either the court or jury pass upon the defence, as to the originality of the plaintiff’s invention, on the facts now submitted. The verdicts in the cases can therefore have neither a technical nor moral effect in the decision of the present motion.
Neither can the evidence of long possession benefit the plaintiff; for it has not existed. *1031On the contrary, after the decisiomof the circuit court against the validity of the plaintiff’s patent, those who had previously , agreed to pay the plaintiff for the use of his invention, have ceased to do so, and many others, acting in good faith, have used the invention in their coal breaking machines, in hostility and adverse to the plaintiff’s claims. It has been admitted on the argument, that some two hundred machines are in use by persons who resist the claim of the patentee.
[NOTE. Patent No. 3,292 was granted to J. Batten October 6, 1843; reissued September 4, 1849, (No. 142.) For another case involving this patent, see Batten v. Taggert, Case No, 1,107.]In every view I can take of the case, I think the granting of this motion would be an injudicious use of the discretion of the court, and wrong to the defendants, who, for anything that appears, may believe that they have an honest defence to this action, and are, therefore, entitled to full and final hearing before they are condemned.
If this motion were granted, they would be compelled to submit without a trial of their rights, which would be contrary to the first principles of practice, and an act of sheer tyranny in the court. Without intimating any opinion as to the validity of this patent, or the truth of the defence, the court must refuse this motion, with costs, and order an issue between the parties as to the validity of this patent, to be tried before a jury on the first Monday of April next.
Injunction refused, but defendant ordered to keep an account.