Where, in a patent case, a preliminary injunction has been
granted by a circuit court on the strength of a previous
adjudication by the same court over the same patent, the case
involving questions of fact in respect of anticipation and
infringement, and not being ripe for final hearing, it is error for
the circuit court of appeals, on an appeal from the interlocutory
order, to direct a dismissal of the bill.
Mast Foos Company v.
Stover Manufacturing Company, 177 U.
S. 485, applied.
This was a bill in equity filed in the Circuit Court of the
United States for the Southern District of New York by John A.
Brill and the J. G. Brill Company against the Peckham Motor Truck
& Wheel Company and others, praying for injunction and
accounting for infringement of letters patent No. 478,218, for an
improvement in car trucks, issued July 5, 1892.
The J. G. Brill Company was a manufacturer of street cars and
trucks at Philadelphia, and the Peckham Motor Truck & Wheel
Company was a manufacturer of trucks at Kingston, New York.
The bill was filed October 15, 1900, and a motion for
preliminary injunction on behalf of complainants on claims 1 and 2
of the patent in suit was heard by Judge Lacombe on October 26,
1900, on affidavits previously served by complainants, including
the record of an adjudication in the circuit court in the case of
Brill v. Third Avenue Railroad Company, in which the
opinion of Judge Shipman was filed July 9, 1900. 103 F. 289.
Defendants filed affidavits at the hearing, which had been sworn
to October 25 and 26, and which complainants had apparently had no
opportunity to inspect before the argument. These affidavits set up
two patents (Manier, of August 27, 1889,
Page 189 U. S. 58
No. 409,993, and Peckham, of January 21, 1890, No. 419,876),
which had also been before Judge Shipman in the prior case, and
defendants contended, in view of these two patents, that the two
claims in controversy must be limited in their scope, and that
there had been no infringement of the claims as thus limited. Judge
Lacombe held that, as there was no prior patent before him which
had not been before Judge Shipman, and as the combination which
Judge Shipman described as the gist of the invention was
undoubtedly in defendants' structures, complainants were entitled
to a restraining order under "well settled rules of practice." 105
F. 626. The preliminary injunction was therefore granted. From this
interlocutory order, defendants took an appeal to the Circuit Court
of Appeals for the Second Circuit, and on a hearing there, the
order granting the preliminary injunction was reversed, and the
cause remanded to the circuit court with instructions to dismiss
the bill with costs. 108 F. 267. A petition was filed for a
rehearing, and denied. 49 C.C.A. 87, 110 F. 377. This writ of
certiorari was then granted. 183 U.S. 698.
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
The Circuit Court for the Southern District of New York,
Shipman, J., presiding, in July, 1900, entered a decree in the case
of
Brill v. Third Avenue Railroad Company adjudging the
letters patent to George M. Brill of July 5, 1892, No. 478,218, for
improvements in car trucks, as to claims 1, 2, 9, 10, 11, 12, 14,
and 27 thereof, to be good and valid, and that defendant, as the
purchaser of 181 trucks of the Bemis Car Box Company, had infringed
the exclusive rights of complainant thereunder, and for injunction,
accounting, and
Page 189 U. S. 59
recovery of damages. And a final decree was entered in the cause
October 1, 1900. This bill was filed October 15, 1900, in the same
court against another truck building company, and a motion for
preliminary injunction was heard in that court before Lacombe, J.,
and sustained on the strength of the previous adjudication. The
patent related to the construction of nonpivotal electric street
railway trucks, and the invention was intended to remedy
oscillation.
Judge Lacombe, in ordering the preliminary injunction, said:
"The only question presented is whether defendant's structure
infringes. That involves the construction of the claims declared
on, and, for the purposes of this motion, the construction already
adopted by this court on final hearing in the
Third Avenue
case, 103 F. 289, should be followed; for there is no prior patent,
no prior use, proved here, which was not before Judge Shipman. It
is true that, in that case, the defendant's device was a much
closer copy than the one now under consideration, containing, as it
did, the feature that the spiral springs came first into play, and
the further feature of depending caps, in which the leaves of the
elliptical springs play vertically. But the court most carefully
indicates that the leading feature of the invention lies outside of
these details; that the"
"gist of the invention consists in combining with the frames of
the truck and the spiral springs other springs,
viz.,
elliptical springs, between the car body and the extensions of the
independent frame,"
"the object being to break the rhythm of the springs, and thus
do away with the galloping or rocking motion. The defendant here
insists that there is no rhythm broken -- indeed, that there is no
rhythm to break -- and that the combination of the quotation does
not do away with the galloping motion. On those points, however,
this court should follow the earlier decision. There are additional
rods, and also spirals, below the frame which apparently, in
defendant's structure, do their share in eliminating galloping, but
the combination which Judge Shipman described as the gist of the
invention is undoubtedly in defendant's structure, and, under well
settled rules of practice, complainant is entitled to a restraining
order until final hearing. "
Page 189 U. S. 60
The rule of practice for one member of a court to regard the
prior decision of another in cases of this kind as to be followed
until otherwise authoritatively adjudicated seems to be justified
in the orderly conduct of proceedings, and the circuit court of
appeals did not hold that the circuit court had improvidently
exercised its discretion in granting the preliminary injunction in
accordance with its own prior decision and decree, which decree was
not the subject of the appeal. But the court proceeded to dispose
of the case upon its merits as one in which it was apparent
complainant could not ultimately prevail, and relied on
Mast,
Foos and Company v. Stover Manufacturing Company, 177 U.
S. 485, as authorizing the pursuit of that course.
It was contended there that the Circuit Court of Appeals for the
Seventh Circuit erred in refusing to follow the opinion of the
Circuit Court of Appeals for the Eighth Circuit in respect of the
validity and scope of a patent and in reversing the order of the
circuit court which, on the ground of comity, had done so, and we
held that the obligation was not imperative, but that the Circuit
Court of Appeals for the Seventh Circuit was at liberty to exercise
its own judgment.
In doing so, the court of appeals directed the dismissal of the
bill, before answer filed or proofs taken, on an appeal from an
order granting a temporary injunction, and its action in that
regard was a principal question discussed in this Court.
It should be observed that, in that case, complainant was served
with defendant's affidavits before the argument below, and was
permitted to put in rebuttal affidavits. The merits of the case
were fully before the court, and the patent in suit related to the
use in a windmill of an old and simple mechanical device for the
purpose of converting a rotary into a reciprocating motion. It was
held that the case fell within the rule sometimes applied where
there is no dispute upon the facts and there appears to be no
reasonable possibility that complainant may succeed. But this Court
took care to define the class of cases in which that might be done,
and, speaking through MR. JUSTICE BROWN, said:
"Does this doctrine apply to a case where a temporary injunction
is granted
pendente lite upon affidavits and
immediately
Page 189 U. S. 61
upon the filing of a bill? We are of opinion that this must be
determined from the circumstances of the particular case. If the
showing made by the plaintiff be incomplete; if the order for the
injunction be reversed, because injunction was not the proper
remedy, or because, under the particular circumstances of the case,
it should not have been granted; or if other relief be possible,
notwithstanding the injunction be refused -- then clearly the case
should be remanded for a full hearing upon pleadings and proofs.
But if the bill be obviously devoid of equity upon its face, and
such invalidity be incapable of remedy by amendment, or if the
patent manifestly fail to disclose a patentable novelty in the
invention -- we know of no reason why, to save a protracted
litigation, the court may not order the bill to be dismissed.
Ordinarily, if the case involve a question of fact, as of
anticipation or infringement, we think the parties are entitled to
put in their evidence in the manner prescribed by the rules of this
Court for taking testimony in equity causes. But if there be
nothing in the affidavits tending to throw a doubt upon the
existence or date of the anticipating devices, and giving them
their proper effect, they establish the invalidity of the patent;
or, if no question be made regarding the identity of the alleged
infringing device, and it appear clear that such device is not an
infringement, and no suggestion be made of further proofs upon the
subject -- we think the court should not only overrule the order
for the injunction, but dismiss the bill."
In the present case, the notice of the motion for preliminary
injunction was returnable October 19, and due service of
complainant's affidavits was made; the hearing was adjourned to
October 26 on defendants' application, and on that day, defendants'
affidavits were presented and the hearing proceeded, complainants
not having been afforded previous opportunity to inspect these
affidavits, and not being granted leave to rebut them.
The record does not show that leave was asked, but, if so, it
would naturally be denied because, in the opinion of the circuit
court, its previous decision necessarily required the granting of
the preliminary injunction. In any view, the effect was that
complainants, although they were prepared to go on with the
Page 189 U. S. 62
motion they had made, were subjected on appeal to the same
consequences as if the preliminary hearing had been a final
one.
Complainants, if the case had been retained for final hearing,
could have cross-examined defendants'
ex parte witnesses
as to the actual construction of defendants' various trucks
containing the combination of spiral and elliptical springs of the
patent in suit; the actual operation of defendants' devices;
whether defendants' devices in fact infringed claims 1 and 2 of
complainants' patent if limited; or claims 9, 10, 11, and 14
thereof; or whether the devices of the Peckham patent, No. 419,876,
were in fact incapable of practicable use, or were ever in fact
used, and could have introduced evidence on these subjects, as,
also, on the question whether complainants' invention antedated the
Peckham and Manier patents; to establish the utility and value and
adoption and use of the combination of claims 1 and 2, and that
defendants' trucks were not "radically different, both in
construction and mode of operation, from that of the patent in
suit," as alleged by defendants' counsel to have been shown by the
experiments set up in defendants' affidavits.
Those experiments were performed by respondents and their
experts between the filing of the bill and the hearing of the
motion, some eleven days, and counsel say that
"these experiments would seem to demonstrate conclusively that
Peckham's elliptic springs do not perform the function claimed for
the elliptic springs in the patent in suit. Indeed, as far as
galloping goes, their introduction into the Peckham truck is
demonstrated to be a positive disadvantage, and the only beneficial
function they can perform -- the only reason for their continued
use all these years -- is that stated by the respondents,
i.e., to prevent the lateral swaying of the car body."
This is said in support of the contention, on which counsel lay
great stress in this Court, that respondents lessen oscillation by
the use of an underlying tension spring, and use elliptical springs
merely for bracing the car body.
Counsel also say
"that all of these matters in reference to the functions of the
springs, and whether they operated according
Page 189 U. S. 63
to the theories of the petitioners or the belief of the
respondents -- and, incidentally, whether respondents' trucks did
really embody the alleged invention of the patent in suit -- were
susceptible of absolute practical demonstration."
Clearly complainants were entitled to test these experiments by
cross-examination, and to introduce evidence on their part as to
the operation of the springs.
If Judge Shipman's definition of claims 1 and 2 was correct, no
question of infringement would arise, but the court of appeals held
that his interpretation was incorrect, and on reference to Manier,
No. 409,993, and Peckham, No. 419,876, that the claims, as they
read and as Judge Shipman construed them, must be limited. Yet it
is admitted by counsel that the date of the conception of the
invention of the patent in suit was prior to the dates of both the
patents of Manier and Peckham; but it is argued that the inventor
was not sufficiently diligent in reducing his invention to
practice. If the matter of delay were of importance, as assumed, it
was open to the inventor to explain the reason of the delay, if
any, and complainants were entitled to make proof of such
explanation.
Again, in respect of "the actual operation of defendants'
devices as compared with the devices of the patents in suit," and
"the question whether defendants' devices do, in fact infringe
claims 1 and 2, if said claims are to be limited as held by the
court below," respondents' counsel contend that this issue was
tendered by respondents and decided by the circuit court of
appeals, and that the case ought not to be "reopened" to permit
petitioners to introduce additional proofs. The difficulty is,
however, that the issue was only tendered on the preliminary
application, and the hearing was not, in itself, a final hearing.
If complainants in every case must understand that a motion for
preliminary injunction requires the same showing as on final
hearing, very few motions of that sort would be made.
We think the case comes within the exceptions pointed out in the
Mast, Foos & Company decision, and are impressed with the
conviction that complainants have not had their day in court, and
that it ought to be accorded them. At
Page 189 U. S. 64
the same time, we do not wish to go into the case so far as to
indicate any opinion as to the proper construction of claims 1 and
2 or on the question of infringement. There should be a hearing
below after the case is made ripe for it, unaffected by any
intimations from us.
The situation, then, is this: the order for a preliminary
injunction was reversed as part of the decree directing the
dismissal of the bill, and not independently of the grounds on
which that conclusion rested. But the court of appeals had the
power to vacate the preliminary injunction, and had only this been
done, an appeal to this Court could not have been taken, nor would
a certiorari ordinarily have been granted in such
circumstances.
Considering the peculiar attitude in which the case is
presented, we prefer not to discuss the question how far the
appellate courts are justified in reversing orders of the circuit
courts granting preliminary injunctions, when their discretion has
not been improperly exercised, and the order will be
Decree of the circuit court of appeals reversed, and cause
remanded to the circuit court with a direction to proceed to final
hearing in due course; the latter court being left at liberty to
deal with the preliminary injunction as it otherwise might but for
this decree.