Orr v. Littlefield et al.

final rights of the parties in the bill, because the action was not between them; though when the judgment is rendered without collusion or fraud, it furnishes to the world some strong as well as public assurance, that the patent is a good one. In this view of the evidence of this character in the present action, it is not contradicted, nor impaired at all, by the judgments having been given on verdicts and defaults under agreements. Such judgments, when, as is admitted here, not collusive, are as strong, if not stronger evidence of the patentee's rights, than they would have been, if the claim was so doubtful as to be sent to a jury for decision, rather than to be so little doubtful as to be admitted or agreed to after being legally examined. Both of these circumstances, therefore, possession and judgments, unite in support of an injunction in the present case.

The only answer to the motion as made out on these grounds, is, the evidence offered by affidavits on the part of the respondents, tending to cast doubt on the originality of the invention of the patentee. I say, tending to this, because some of the affidavits, at least, do not distinctly show that the persons making them intended to assert that the whole of any one of the combination of particulars contained in Dr. Orr's claim in his specification, had been used before his patent issued; because, they are counteracted by other testimony, from the witnesses of the complainants, more explicit and in larger number; and because, in this preliminary inquiry, where the evidence is taken without the presence or cross-examination of the opposite party, it would be unsafe to settle and decide against the validity of the patent, when a full and formal trial of it is not contemplated till further progress is made in the case. All that is required in this stage, is, the presumption before named, that the title is good. This presumption is stronger here than usual, as it arises from the issue of the patent and an enjoyment and possession of it undisturbed for several years, beside the two recoveries against those charged with violating it.

Orr v. Littlefield et al.

After these, other persons can, to be sure, contest the validity of the patent, when prosecuted either in equity or at law; but it is hardly competent for them to deprive the complainant of her right, thus acquired to an injunction, or, in other words, to be protected in so long a use and possession, till her rights are disproved after a full hearing; surely it is not reasonable to permit it when the affidavits of the ⚫ respondents to invalidate or cast a shade over her right are met by that which is stronger, independent of the long possession, judgments and presumptions before mentioned. But another objection has been urged in argument. When an answer to the bill denies all equity in it, the respondents contend that an injunction would be dissolved, and hence it ought not to be imposed, if the respondent denies equity by affidavit. This may be correct, in respect to injunctions termed common, as there affidavits and counter affidavits are inadmissible, Eden, 326, 117; yet in these, the denial must be very positive and clear. Ward v. Van Bockelen, 1 Paige, 100; Noble v. Wilson, Ib. 164. But the position cannot be correct in the case of injunctions called special, like the present one, and where facts and counter evidence show the case to be different from what is disclosed in the affidavits or an answer of the respondents alone. No usage or cases are found where the injunctions are dissolved, as a matter of course on such answers, if the complainant has adduced auxiliary presumptions in favor of his right like those in the present instance. On the contrary the cases are numerous where the whole is regarded as still within the sound discretion of the Court whether to issue the injunction or refuse it; or if issued, to dissolve or retain it. 3 Merivale, 622, 624; 2 Johns. Ch. R. 202; 3 Sumn. 74; Livingston v. Van Ingen, 9 Johns. R. 507, 570; Rodgers v. Rodgers, 1 Paige, 426. And where the complainant has made out not merely a grant of the patent, but possession and use and sale under it for some time undisturbed, and beside this a recovery against

Orr v. Littlefield et al.

other persons using it, the courts have invariably held that such a strong color of title shall not be deprived of the benefit of an injunction, till a full trial on the merits counteracts or annuls it. In several cases, where the equities of the bill were even denied, and in others, where strong doubts were raised whether the patent could in the end be sustained as valid, the courts decided, that injunctions should issue under such circumstances as have before been stated in favor of the plaintiff, till an answer or final hearing; or, if before issued, should not be dissolved till the final trial, and then cease, or be made perpetual, as the result might render just. The Chancellor in Roberts v. Anderson, 2 Johns. Ch. R. 202, cites 2 Vesey, 19, and Wyatt's P. R. 236; Boulton v. Bull, 3 Ves. 140; Universities of Oxford and Cambridge v. Richardson, 6 Ves. 689, 705; Harmer v. Plane, 14 Ves. 130; and Hill v. Thompson, 3 Mer. 622, 624.

But if this injunction leads to serious injury in suspending works, the Court can require security, if desired, of the complainant, to indemnify for it, if the patent is avoided, or can make orders to expedite a final hearing and decision. 4 Paige, 447; 2 Paige, 116. So the defendants can have security given for costs, especially as the plaintiffs live out of the State. Let the injunction issue till after a final hearing; and as the defendants request it, security be filed by the plaintiffs for costs in thirty days.

Injunction granted.

CIRCUIT COURT OF THE UNITED STATES

. FOR THE FIRST CIRCUIT.

Fall Circuít.

MASSACHUSETTS, OCTOBER TERM, 1845, AT BOSTON.

BEFORE

Hon. LEVI WOODBURY, Associate Justice of the Supreme Court.

{Hon. PELEG SPRAGUE, District Judge.

FREDERIC EMERSON vs. Charles Davies and another.

A rehearing of a case in equity, is not granted by this Court, on the mere certificate of counsel as to the sufficiency of the reasons for it.

The English practice in such cases, if allowing it in all where there is such a certificate (which is doubtful], is not to be adopted here, except so far as it is reasonable, and suited to circumstances here.

THIS was a petition, by the defendants for a rehearing in a case in equity between these parties, wherein a decretal order was made at the last May term of this Court, and entered on the 17th of August, 1845, and a final decision entered on the 15th of October last in favor of the plaintiff.

Both of these were averred in the petition to be erroneous, for various causes, which need not now be detailed, as the petitioners relied on their right to be heard, without going into the consideration of the causes, because the counsel in the case had certified to their sufficiency.

Emerson v. Davies et al.

The point was argued in writing by I. J. Austin and S. A. Foot (of New York) for the plaintiffs, and by G. T. Curtis for the respondent. The opinion of the Court was delivered as follows by

WOODBURY, J. It is certain that in England the rehearing of cases in equity is much more frequent than in this country. Part of this arises from a difference in our systems, and from the word "rehearing" being often applied there to what would be considered an appeal here. Thus, after a decision by the Master of the Rolls, or Vice Chancellor, if the case be heard by the Lord Chancellor, it is called a "rehearing." 1 Grant's Ch. P. 205; 2 Smith's Ch. P. 18.

Such a rehearing, without any inquiry beyond a request by the party feeling aggrieved, and a certificate of counsel that the reasons for it were sufficient, might not be questionable, where a party has a right to have his case considered by other officers. But another class of cases, such as are usually here denominated rehearings, are a second hearing before the same Judge or Court, on application of a party supposing himself injured by the decision made after the first hearing. Such is the present case; and though, under some very doubting chancellors in England, such rehearings may have been very frequent and often granted merely on the certificate of counsel, yet I apprehend the Court there always could, in its discretion, properly refuse them, notwithstanding such a certificate. In support of this view, the general position there, as here, is, that no rehearing can be had, unless the case comes within some rule of the Court, without satisfying the discretion of the Court that it is right. 1 Grant's Ch. P. 205; 2 Smith's Ch. P. 25.

A certificate of counsel alone might sometimes do this, and sometimes not; and it is not understood to be contended that in England there is any rule of Court making such a certificate sufficient, but only a practice of the kind.