(Circuit (Jourt, S. D. NetJiYork. February 20,1884.)
t'BELDlINARY INJUNCTION-WHEN TO BEGRANTEI!.
A injunction will not be granted while another to tb,e is in force in a different suit. .
elleet . I
Edward N. Dickerson, Jr., for orator. R08coe'Conkling and Samuel A. Duncan, for defendants.
WHEELER, J. This cause has been heard on the motion of the tor for a preliminary injunction to restrain infringement of the second claim of the orator's patent.. In a prior suit in this court, 80 lately brought by the orator against these same defendants that the time for an answer and taking of testimony ha's not yet expired, a preliminary injunction the defendants from infringing this second and the third claims of the patent has, on motion of the orator, been granted, and is still in force. The time for pleading in bar the pendency of the first suit has not arrived. In an affidavit by an expertj filed by the orator on this motion, it is stated that he is faniiliarwith the patent, and made an affidavit on the fornler motion, and that the apparatus claimed to be an iIifringement on this motion "is in all material respects, so far as the second claim is concerned, the same apparatus as that enjoined in the previous motion." The defendants object to this mode of procedure by a new bill, and cite Wheeler v. McCormick, 8 BIatchf. 267. The orator insists that it is proper to file successive bills for successive infringements, and cited Rigby v. Columbia Rubber Co. 18 FED. REP. 601. . It is also urged in support of the orator's position that the prior suit could not be maintained on an infringement subsequent to the fili,ng o(thafbill only; while this may be, and that that may fail and this sucooed. .That is one ground stated by WOODRUFF, C. J., for maintaining the second suit in Wheeler v. McCormick, although the principal ground was that the prior suit was in another district and circuit. That reason does not obtain here, however, as this case now stands, for it is adjudged in thEl prior suit, and that adjudication still stands insisted upon by the orator, that there was an infringement prior to the filing of the former bill sufficient to uphold it to an accountiug and final decree. That the ing in that case would extend to the ,time of taking, and cover the infringement now aimed at, is not at all questioned. That ·distinguishes this cilise from what waS said by LOWELL, J., in Rigbyv.Columbia Rubber Co. There the account had been olosed, and although the former injunction was in force a 'new bill w'ouldbe neoessarytofuU relief for the ,new infringemimt. is alsourged that as a proceeding for conteuipt would be a harsher remedy thn a motion fori a >new injunction, the injunotion might be granted" On a case on which,the
defendants might not be adjudged guilty of contempt of the former one, and especially where the proof would consist of ex parte affidavits. But the processes of courts of equity are so flexible and capable of being tempered to the justice and necessities of every case, at all its stages and in all its phases, that the difference between the forms does not seem to be important. As these cases are now situated the modes of proof on proceedings for contempt of the former injunction would or mij:tht be precisely the same as upon this motion. The question whether the device sought now to be restrained infringes the second claim is precisely the same as that w.hether it violates the former injunction. If it is not willhl it need not be visited with punishment as such. As the case is presented the question to be decided is precisely the same as that before decided between the same parties, the adjudication of which is in force and covers a.!l that is asked for here. If it were necessary, or more fair, or more desirable, to make the former injunction more specific by being directed at some device which the orators claim to be an infringement and the defendants that it is not, that end can be reached by motion in the pending cause as well as by a new bill. Multiplicity of suits should be avoided when practicable, and this multiplicity may well be avoided here. Under the circumstances of this case this motion is denied, but without prejudice to any motion or proceeding in the original cause.
(Oircuit Oourt, D. Massachusetts.
February 28, 1884.)
When the validity of a patent is in litigation, the patentee may, without being guilty of laches, wait until a decision is rendered before bringing suit against infringers.
In Equity. Allen Webster, for complainant. B. F. Thurston, for defendant. LOWELL, J. This suit is brought upon the much-litigated reissued patent, as both counsel have called it, granted to the plaintiff for driven wells, May 9, 1871, No. 4,372. The validity of the patent is not denied. The sum in dispute being small, it is made a question whether the plaintiff should not be remitted to his action at law. The evidence tends to show a technical right to an injunction, and a claim for some profits; and I do not conceive that I have a right, under these circumstances, to dismiss the suit, though, as to the costs, I will hear the parties. The usual license fee for a well for domestic uses is $10, and for one for supplying water for steam-en.