CIRCUIT COURT OF THE UNITED STATES FOR THE FIRST CIRCUIT. Fall Circuit. NEW HAMPSHIRE, OCTOBER TERM, 1845, AT EXEter. Hon. LEVI WOODBURY, Associate Justice of the Supreme Court. MATILDA K. ORR, ADMINISTRATRIX OF ISAAC Orr, vs. JAMES LITTLEFIELD AND OTHERS. In a suit in equity for the violation of a patent right, an injunction will not be granted before a hearing upon the merits, merely upon proof that the complainant has obtained a patent. But proof of undisturbed possession and user of the patent right, for a reasonable length of time, by the complainant, is ground for granting an injunction. It is also ground for granting an injunction, that the complainant has prosecuted other persons for violations of the same patent, and recovered judgment against them; and it makes no difference that such judgment was rendered by agreement of parties, where there was no collusion, or under a specification of this patent, which has been surrendered as defective, and a new one taken out. An injunction will not be dissolved, as a matter of course, on the coming in of the answer, denying the equity of the bill, if the complainant has adduced auxiliary evidence of his right, as in the present case. THIS HIS was a Bill in Equity. It alleged, that before the 20th of January, 1836, Isaac Orr, whom the complainant represented, was the inventor of a new improvement in stoves, called the air-tight stove, and on that day obtained a patent therefor. But the specification being made out inaccurately, he caused the patent, on the 12th of November, 1842, to be cancelled, and a new one to be issued. It further averred Orr v. Littlefield et al. that the patent was valuable during his life, which terminated in 1844, and had since yielded large sums to her as administratrix. The bill contained further averments as to the violation of the patent by Hunneman & Son, and a recovery of damages in a suit at law therefor, in October, 1843; and that the respondents had not respected her rights under the patent, but made and sold stoves like those described in his specification; and hence the bill prayed, among other things, for an injunction to restrain the respondents from making or selling any more air-tight stoves, during the residue of the time the patent has to run. The case was heard before WOODBURY, J., at Portsmouth, on the 13th of October, when the complainant moved for an injunction, in conformity to the prayer of the bill. In support of this motion, she offered in evidence the patent, which appeared to have been issued, cancelled and re-issued, as stated in the bill; and which claimed the invention to be a new combination of particulars in a stove for heating rooms. She next offered copies of a case in which Isaac Orr recovered damages against Hunneman & Son, for a violation of this patent in October, 1846. She next gave in evidence another recovery of damages and costs against Ira Hazelton, for breach of this patent in May, 1845; and the issue of an injunction in her bill against Badger, for another breach, in October, 1844. After that, she read the affidavits of nine persons, showing, that Isaac Orr received about five thousand dollars for licenses and plates to use his stove, the three years previous to his death, and the complainant a like sum since; that the combinations in Orr's stove were new and useful; that his right was unquestioned till the stoves came into general use; and that all using them since, as well as before, had paid when required, except the persons before named and the respondents, who had made and sold stoves similar to them, and refused to pay for the right now, though in 1844 they had purchased some of the plates, which were given as evidence of license. Orr v. Littlefield et al. On the part of the respondents, evidence was then offered that the judgment against Hunneman & Son was rendered on a verdict, taken by agreement of the parties, but without any proof of collusion or fraud. They showed, further, that the judgment against Hazelton was on a default by agreement; and offered the affidavits of four witnesses, stating that the invention of the complainant's intestate was not new, but had been used previously to the original issue of his patent. The motion was argued by S. E. Sewall, (of Boston) and Hackett, for the complainant; and Hatch, for the respondents. Subsequently, at Boston, the opinion of the court was delivered by WOODBURY, J. This motion for an injunction is in accordance with a special prayer in the bill; and hence it is properly asked for. 2 Dallas, 360; 2 Story, Eq. Jur. 156. The subject-matter of the bill is, also, one in which it is usual and fit for the Court to interpose by this remedy, and on a proper state of facts before a final decision is had on the merits; because every stove sold is an injury if the patent is valid, and without such a remedy, the supposed offence being constantly repeated, the causes of action and the multiplicity of suits would probably become much extended, and relief, in that way, prove very defective. Harmer v. Plane, 14 Ves. Jr. 130; Livingston v. Van Ingen, 9 John. R. 507, 570; 9 Wheat. 738, 845; Poor v. Carleton et als. 3 Sumn. 70. An injunction, in such a case, proves to be useful as a bill of peace. On the contrary, however, such injunctions are a check on the business of respondents; and interferences subjecting others to a loss before a full trial between the same parties, are not always to be justified. In what cases, then, should injunctions issue? It is not enough that a party has taken out a patent, and thus obtained a public grant, and the sanction or opinion of the - Orr v. Littlefield et al. patent office in favor of his right, though that opinion, since the laws were passed requiring some examination into the originality and utility of inventions, possesses more weight. But the complainant must furnish some further evidence of a probable right; and though it need not be conclusive evidence, — else additional hearing on the bill would thus be anticipated and superseded, yet it must be something stronger than the mere issue, however careful and public, of the patent, conferring an exclusive right; as, in doing that, there is no opposing party, no notice, no long public use, no trial with any one of his rights. The kind of additional evidence is this. If the patentee, after the procurement of his patent, conferring an exclusive right, proceeds to put that right into exercise or use for some years, without its being disturbed, that circumstance strengthens much the probability that the patent is good, and renders it so likely, as alone often to justify the issue of an injunction in aid of it. Ogle v. Ege, 4 Wash. C. C. 584; 2 Story, Eq. Jur. 210; Drew. on Injunc. 222; Phil. on Pat. 462. After that it becomes a question of public policy no less than private justice, whether such a grant of a right, exercised and in possession so long, ought not to be protected, until avoided by a full hearing and trial. Harmer v. Plane, 14 Ves. 130. In this case, the evidence is plenary and uncontradicted as to the use and sale of this patent by the inventor and his representative for several years, publicly and without dispute. Computing from the original grant, the time is over nine years, and since the re-issue of the letters patent it is nearly three. I concur in the opinion delivered by Judge Sprague in Orr v. Badger, that the time to be regarded under this view is what has elapsed since the original issue or grant. Law Reporter for February, 1845. In Thompson v. Hill, 3 Meriv. 622, the time was only three years from the first grant. In Ogle v. Ege, 4 Wash. C. C. 584, it was but six years. And though in some cases reported, it Orr v. Littlefield et al. had been thirteen, and in others twenty years, 14 Ves. 130, yet it is believed, that seldom has a Court refused an injunction in applications like this, on account of the shortness of time after the grant, however brief, if long enough to permit articles or machines to be constructed by the patentee in conformity to his claim, and to be sold publicly and repeatedly, and they have been so sold and used under the patent without dispute. Here the sales were extensive and profitable from 1836 downwards, and the right as well as the possession does not appear to have been contested till 1842. In Hill v. Thompson, 3 Meriv. 622, 624, it is true that the Court dissolved an injunction, when only about one year had elapsed since any work had been completed under the patent, and only two years since the specification was filed, the chancellor calling it a patent "but of yesterday;" but, he added, that he would not dissolve it, if an "exclusive possession of some duration" had followed; though an answer had been put in denying all equity, and doubts existed as to the validity of the patent; and no sales under it were proved in that case. So though the patent had been issued thirteen years, and the evidence is doubtful as to acquiescence in the possession or use, an injunction may be refused. Collard v. Allison, 4 Mylne & Craig, 487. But in the present case, the acquiescence appears to have been for several years universal. Another species of evidence, beside the issue of the patent itself, and long use and possession under it, so as to render it probable the patent is good, and to justify an injunction, is the fact, that if the patent becomes disputed, the patentee prosecutes for a violation of his rights, and recovers. Same authorities; Kay v. Marshall, 1 Mylne & Craig, 373. This goes upon the ground, that he does not sleep over his claims or interests, so as to mislead others, and that, whenever the validity of his claim has been tried, he has sustained it as if good. But such a recovery is not regarded as binding the |