39 F. 803 -

CONSOLIDATED'ROLLER-M'LL CO. tI. COOMBS.

1803

it would seem that the safer and wiser course will be not to permit this severe and arbitrary writ to issue at the present time. Fish v. Sewing-Machine Co., 12 Fed. Rep.495; B?'own v. Hinkley, 6 Fish. Pat. Cas. 370; Hockholzer v. Eager, 2 Sawy. 363; Spri'ng v. ing-Machine Co., 4 Ban. &A. 427; Keyes v. Smelting Co., 31 Fed. Rep. 560; Kittle v. HaU, 29 Fed. Rep. 508, and cases cited on page 511. The complainants are at liberty to move, upon proper proof, for a bond, and, if the final hearing is unreasonably delayed by the defendant, this motion may be renewed.

CONSOLIDATED ROLLER-MILL CO.

(Circuit Court, E. D. llfic7tigan.

'1).

Comms.

July 22, 188{l.)

PATEKTS FOR IKVEKTIONs-INJUNCTION-SUSPENSIOX OF WRIT.

After an adjudication upon the merits in a patent case. an injunction will not be suspended unless public interests are involved. or the issuing of the writ will involve the stoppage of a manufactory in the operation of which a large number of persons are interested. Hence. where the defendant used but one machine. and the evidence tended to show that the patented device might be taken out of such machine without great expense or long continued stoppage, it was held that the injunction ought not to be stayed.

(Syllabus by tlte Court.)

In Equity. On motion to stay injunction. Plaintiff obtained against the defendant the usual decree in patent cases for an injunction ngainst further infringement, and a reference to a master to compute danwges. Defendant moved to stay the issuing of the injunction upon the ground that plaintiff was not a manufacturer, but derived its profits from selling or licensing its machine, and that the damages to defendant by stopping his mill would be out of all proportion to the amount of plaintiff's license, or to any damages that would be occasioned to it by defendant's continued use of machines. R. Mason, for plaintiff. Parkinson & Parkinson, for the motion. BROWN, J. We are asked by this motion to determine whether after an adjudication adverse to the defendant upon the merits of a patent case we ought to stay the issue of an injunction until final decree. So far as preliminary injunctions are concerned, it is entirely well settled that while the patent may be adjudged valid and the defendant an infringer the award of an injunction is purely a matter of discretion, and courts are constantly in the habit of withholding it upon such terms, as to the giving of a bond and the like, as may seem just and equitable, having regard to the comparative injury that will result to the parties by granting or withholding it. Parker v. Sears, 1 Fish. Pat. Cas. 94; Howe v. MOI'ton, ld. 586; Morris v. Manufacturing Co., 3 Fish. Pat. Cas. 67; Tracy

804

FEDERAL REPORTER,

vol. 39.

v. %rrey; 2 Bllitchf. 275; Potter v. Whitney, 1 Low. 87; Hoe v. Advertise'!' Corp., 14 Fed. Rep. 914; Forbush v. Bradford, 1 Fish. Pat. Cas. 317. After an adjudication upon the merits, the case becomes somewhat complicated by the provisions of the constitution and statutes which secure to the inventor "the exclusive right to his discovery." If this right be "exclusive," it is difficult to see how the court can limit or impair it by requiring the patentee to accept anything less than the complete monopoly which the law awards him. While he may not be a manufacturer himself, and may derive his sale profit from licensing others to use his device, still such licenses are entirely voluntary upon his part, are completely within his own control, and the courts have, strictly speaking, no power to demand of him that he shall license the defendant to use his machine, as they are enabled to do indirectly by refusing an injunction upon requiring a bond to pay the amount of the license or such damages as he may have suffered by defendant's use of his machines. If this, then, were a final decree, we should have no hesitation in denying this moti011 to stay the injunction, unless immediate notice were given of an appeal, when the provisions of the ninety-third rule would attach, and the staying of an injunction would become a matter of discretion, to be determined by the facts of each particular case. It has undoubtedly been the practice in a few of the circuits to stay an injunction in certain cases where an appeal is contemplated, and defendant would be irreparably injured; and where public interests are involved, and the people are likely to be injured by denying them the use of plaintiff's machine, there can be no question as to the propriety of such action. Bliss' City of Brooldyn, 4 Fish. Pat. Cas. 597; McElroy v. Kansas City, 21 Fed. J{ep. 257; Ballard v. City of Pittsbnrgh, 12 Fed. Rep. 783. cases will show under what circumA reference to some of the stances it has been the practice of the courts in these circuits to suspend an injullction after an adjudication upon the merits. In Barnard v. Gibson, 7 Hm 650 the supreme court indicated that the injunction ought to be suspended where defendant had invested many thousand dollars in machinery which, by such a procedure, became useless, and their right to run the machines would expire in the course of a few months. The court remarked that unless the defendants were in doubtful circumstances, and could not give bond to respond in damages, should the right of the plaintiff be finally established, they supposed the injunction would be suspended. In Sande-(s v. Logan, 2 Fish. Pat Cas. 167, lVIr. Justice GRIER held that neither an injunction nor an accounting were necessary or proper, because the only injury to the plaintiff's rights consisted not in using his invention. but in failure to pay the price of the license. The learned judge uses strong language in this connection, and the opinion undoubtedly lends considerable support to the deCo, v. Marsh, 6 Fish. Pat. Cas. fendant's position in this case. In 387, Judge McKENNAN, of the third circuit, withheld an injunction upon filing a bond, upon the ground that the plaintiff, not being a manufacturer, would be adequately protected by the payment of a just compensation for the use of his invention; and the defendants had an exten-

CONSOLIDATED ROLLER-MILL CO. 'V. COOMBS.

805

sive establishment, and a large capital invested in it for the manufacture of machines, and seemed to have conducted their business under the impression that it was no invasion of the rights of others. "A sudden stoppage of it would be disastrous to them, and would not benefit the plaintiff." In its facts the case is readily distinguishable from tht one under consideration. In the same circuit, in McCrary v. Canal Co., 5 Fed. Rep. 367, an injunction was denied without discussion, upon the ground that much greater injury to the respondent than benefit to the complainant would result from it. \Ve think these three cases may be regarded as establishing a rule in the third circuit somewhat at variance with those existing in most of the others. In Hoe v. Knap, 27 Fed. Rep. 204, Judge BLODGETT denied an llljunction, after entering an interlocutory decree. npon the ground that the owner of the patent had not, after a reasonable time, put it into use, holding as matter of law that a patentee is· bound either to use the patent himself, or allow others to use it on reasonable or equitable terms. I find myself unable to concur in this view. A man has right to deal as he chooses with his own. I know of no reason why a patentee is bound to make use of his own inventions, or to license others to use them, any more than the owner of a manufacturing establishment is bound to run it for the benefit of his neigh bars or employes. As observed in the earlier portion of this opinion, the question of licensing another to use an invention is one which the patentee alone has the right to answer; and courts cannot lawfully others to use it compel him to make use of his invention, or to against his will. We will now proceed to examine the authorities in the other circuits. In Howe v. Newton, 2 Fish. Pat. Cas. 531, Judge LOWELL, of the first circuit, held that the fact that plaintiff granted licenses, and that defendant was not a maker and vendor, but only a user, was, independently of the fact that the maker had not been sued, a circnmstance to be taken into account; "but it has not been considered sufficient reason in this circuit to refuse the writ, excepting in combination with other circurnst:mces, either of doubt as to title, or of hardship in the operation of the injunction." The defendant was restrained from using one boot-tree. It is but just to say that it appeared that no special damage would result to defendant by enjoining the machine. The case is not unlike the one under consideration. In Pouix v. Mack, 3 Fish. Pat. Cas. 428, Mr. Justice SWAYNE observed tbat when a patentee obtains a decree settling the right to an injunction, the practice in all the circuits, as he had understood, was to make the injunction a part of the decree. "That is the right of the party unquestionably, unless there be shown SOllle special grounds of peculiar hardshi p to the defendant. * * * There may be circumstances which woul(l render that action proper, but I should not be willing to establish such a rule as general." " Again, too, as within my own knowledge, the practice in all the other courts is adverse from that now sought to be established, and I should be reluctant to strike out a new course." The court found no special hardship in the ease, and ordered an injunction. See, also, Whitney v. Jllowry, Id. 175.