(after stating the facts as above). [1] The practice of reaching evasive and persistently infringing defendants by supplementary injunction we have already substantially approved. Read Machinery Co. v. Jaburg, 223 Fed. 1022, 138 C. C. A. 659. That approval we reiterate, but the propriety of granting such relief should be ascertained with due regard to settled rules regarding alleged contempt of patent injunctions.
Modifications of enjoined devices have not been dealt with on motions to punish for contempt “unless the change was a mere colorable equivalent” (Crown Cork, etc., Co. v. American, etc., Co., 211 Fed. 653, 128 C. C. A. 154), and when the alleged contemptuous infringer had (after decree) obtained a patent covering his new device, such applications have usually been denied (Bonsack, etc., Co. v. National, etc., Co. [C. C.] 64 Fed. 858, and cases cited). We do not hold that the procuring of such new patent absolutely prevents either punishment for contempt or supplemental injunction, but it is a circumstance of great weight in reaching decision.
[2] Further, supplemental, like preliminary, injunctive relief is always matter of grace and discretion. Such applications are ordinarily heard on affidavits, although there are cases where references have been ordered which practically turned a petition for supplementary injunction into a new suit. Sundh Electric Co. v. General Electric Co. (D. C.) 217 Fed. 583; Id. (D. C.) 235 Fed. 708.
In this instance the District Judge exercised his discretion against plaintiffs’ application, it appearing by the motion papers that after final decree defendant had applied for a patent (the proposed claims of which were disclosed) specifically covering the alleged new infringement, and it is agreed that since the hearing below defendant’s patent has issued.
[3] If an asserted new infringement does not plainly render a new action and another trial an expensive futility, no supplementary in*487junction should issue. There is always a. presumption of invention, novelty, and utility attaching to any patent, unless it be proved to have inadvertently issued. Safe, etc., Co. v. Globe, etc., Co., 242 Fed. 497, -- C. C. A.-. If testimony and cross-examination are required to justify the issuing of supplementary injunction, there is small practical difference between such procedure and the institution of a new suit.
There is, however, a great difference between a supplementary injunction issued upon affidavits and preliminary relief. In the latter case the restraint is pendente lite only, and trial is often expedited by the urgency of preliminary restraint; but a supplementary injunction is not followed by any trial, and puts the burden of appeal upon a defendant who perchance might upon a trial convince the court of the patentable difference between what he had done before adverse decree and what he subsequently did. We are therefore indisposed to interfere with the discretion exercised by the lower court in this instance, and, since equity acts in praesenti, ‘we are the more inclined to affirm because defendant has now the presumptions afforded by a patent in favor of a right to do what plaintiffs complain of.
For these reasons, the order appealed from is affirmed, with costs, without expressing any opinion as to the validity, scope, or interpretation of the defendant’s recently acquired patent rights.