In a suit to enjoin infringement of a patent and for an
accounting and damages, begun within a short time before the patent
is to expire, the jurisdiction of the district court to adjudicate
the claim for monetary relief as a court of equity will not be
divested by a denial of a preliminary injunction if the case be
such that the court properly might either grant or refuse such
injunction in the exercise of its discretion. P. 278 U. S.
24 F.2d 1021 affirmed.
Certiorari, 278 U.S. 585, to a decree of the circuit court of
appeals affirming a decree adjudging a patent
Page 278 U. S. 510
valid and infringed and referring the cause for determination of
profits and damages. A preliminary injunction was denied by the
district court, and the patent expired thereafter pending the suit.
That court declined to transfer to the law docket. See
F.2d 91; 21 F.2d 124.
MR. JUSTICE SUTHERLAND delivered the opinion of the Court.
The question here to be determined arose in a suit in equity by
respondent against petitioner, brought in the federal district
court for the Western District of New York, for infringement of a
patent. The bill alleged repeated and continuing infringement of
the patent by petitioner, preparation and readiness to continue
such infringement, and that, unless petitioner was restrained,
respondent would suffer great and irreparable damage, etc.
Page 278 U. S. 511
It was further alleged that, in a prior suit for infringement,
brought by respondent against the Bowman Dairy Company, the patent
had been sustained as valid and infringed; that the defense to that
suit was openly conducted by petitioner, who paid all expenses, as
well as the judgment rendered by the final decree; that such decree
therefore became res judicata
as against petitioner. The
prayer was for an interlocutory as well as a perpetual injunction,
and for an account to be taken of profits realized by petitioner
and damages sustained by respondent.
At the time suit was brought, only 41 or 42 days remained before
the expiration of the patent. Two days after beginning suit,
respondent moved for a preliminary injunction. After a hearing upon
affidavits, the motion was denied. The court thought no injury
would result to respondent by a refusal to grant the injunction at
that time, that infringement had ceased, that the responsibility of
petitioner was unquestioned, and that the recovery of damages would
be a sufficient protection for past infringement. Subsequently a
motion by petitioner to transfer the case to the law side of the
court was made and denied. The grounds for the denial were stated
in an opinion by the District Judge, 6 F.2d 91, in the course of
which he said:
"In the circumstances, plaintiff had a right, at the time this
action was instituted, to commence in equity and to assert that
right to an injunction existed . . . I must therefore hold that the
relief sought in the bill was grantable, and it was only denied by
the court in the exercise of its discretion. . . ."
The case was then proceeded with as a suit in equity. Before the
trial was entered upon, the patent in the meantime having expired,
petitioner renewed its motion to transfer to the law docket, which
was again denied. The
Page 278 U. S. 512
trial resulted in a decree for respondent holding the patent to
be valid and infringed, 21 F.2d 124, and this decree was affirmed
by the court below on appeal without opinion, 24 F.2d 1021.
The sole question for our consideration is whether, after
refusing the preliminary injunction, the district court was
justified in retaining jurisdiction of the case as a suit in
equity. We allowed the writ and brought the case here because of an
alleged conflict in respect of that matter among the decisions of
the circuit courts of appeals.
The question is very nearly set at rest by Clark v.
Wooster, 119 U. S. 322
There, suit was brought to restrain a patent infringement and to
recover profits and damages. The patent involved expired 15 days
after the bill was filed. It did not appear whether an application
for an interlocutory injunction was made, but, under the rules of
the court, there was time before the expiration of the patent
within which it could have been made. The final decree established
the patent and its infringement, and a reference was made to a
master to take and state an account. The jurisdiction of the trial
court sitting as a court of equity was challenged. This Court
sustained the jurisdiction and held that it was within the
discretion of the trial court under the circumstances to retain the
bill as it did. The opinion then proceeds (p. 119 U. S.
"It might have dismissed the bill if it had deemed it
inexpedient to grant an injunction, but that was a matter in its
own sound discretion, and with that discretion it is not our
province to interfere unless it was exercised in a manner clearly
illegal. We see no illegality in the manner of its exercise in this
case. The jurisdiction had attached, and although, after it
attached, the principal ground for issuing an injunction may have
ceased to exist by the expiration of the patent, yet there might be
other grounds for the writ arising from the possession by the
defendants of folding guides illegally made or procured whilst
Page 278 U. S. 513
patent was in force. The general allegations of the bill were
sufficiently comprehensive to meet such a case. But, even without
that, if the case was one for equitable relief when the suit was
instituted, the mere fact that the ground for such relief expired
by the expiration of the patent would not take away the
jurisdiction, and preclude the court from proceeding to grant the
incidental relief which belongs to cases of that sort. This has
often been done in patent causes, and a large number of cases may
be cited to that effect, and there is nothing in the decision in
Root v. Railway Co., 105 U. S. 189
, to the contrary.
Cotton Tie Co. v. Simmons, 106 U. S.
; Lake Shore, etc., Railway v. Car-Brake Co.,
110 U. S.
; Consolidated Valve Co. v. Crosby Valve
Co., 113 U. S. 157
; Thomson v.
Wooster, 114 U. S. 104
And see Beedle v. Bennet, 122 U. S.
; Busch v. Jones, 184 U.
, 184 U. S.
The decisions of this Court upon the point are entirely
harmonious. Root v. Railway Co.,
referred to in the
foregoing quotation, presents no exception. There, suit was brought
long after the expiration of the patent. No ground for equitable
jurisdiction properly could be alleged, for plainly none existed,
and the bill was merely for an accounting of profits and damages,
the remedy at law for which was complete. Accordingly, a decree
dismissing the bill was affirmed. We deem it unnecessary to review
the decisions in the several circuits thought to be in
In Clark v. Wooster, supra,
when the bill was filed,
the patent had 15 days to run; in the present case, 41 or 42 days
remained. The only substantial difference between the two cases is
that here, an application for an interlocutory injunction was made
and denied. But the bill stated a case for equitable relief, and
the order denying the interlocutory injunction constituted no bar
to a subsequent application upon changed conditions. 2 High on
Injunctions (4th ed.) § 1586. While we see nothing to prevent
Page 278 U. S. 514
a retention of jurisdiction by the chancellor based upon that
contingency, we do not rest upon that ground.
An interlocutory injunction at least ordinarily, is not a matter
of strict right, but the application is addressed to the sound
discretion of the court. 1 High on Injunctions (4th ed.) §§ 11 and
937. And here, the trial court denied the application not because
it would have been error to grant it, but in the exercise of its
discretion, principally based upon a balancing of the relative
conveniences and inconveniences which might result. This is made
clear by the trial judge, who, interpreting his own action,
expressly held that the relief sought was grantable, but was only
denied by the court in the exercise of its discretion. That the
case was one for the exercise of discretion is plain. Id.,
§ 937; Southwestern Brush Elec. L. & P. Co. v. Louisiana
Elec. L. Co.,
45 F. 893, 895, 896; Whitcomb v. Girard Coal
47 F. 315, 317, 318; Rousso v. Barber,
552, 553. The order denying the injunction therefore was conclusive
in an appellate court, and an order granting it would have been
equally so. Buffington v. Harvey, 95 U. S.
, 95 U. S.
As applied to the question under consideration, there is no
sound reason for making a distinction between a failure to obtain
an interlocutory injunction because not asked for and a like
failure because, though asked for, it was denied only in the
exercise of a discretion which might have been rightfully exercised
the other way. This was plainly recognized in the Wooster
case, where it was said that, if the trial court had deemed it
inexpedient to grant an injunction, it might have dismissed the
bill, "but that was a matter in its own sound discretion," which
would not be interfered with by this Court unless exercised in a
manner clearly illegal. (Since the adoption of Equity Rule 22, the
question for the court in the case supposed would be not whether to
dismiss the bill, but whether to transfer the suit to the law side
of the court. Twist v. Prairie Oil Co.,
Page 278 U. S. 515
274 U. S. 684
274 U. S.
.) The action of the trial court here in denying the
motion to transfer was within its authority, and does not call for
our interference. Jurisdiction of the court sitting in equity,
having been rightfully invoked, was not lost either because the
interlocutory injunction was denied in the exercise of judicial
discretion or by the expiration of the patent pending final decree.
This conclusion finds support in the principle that "a court of
equity ought to do justice completely, and not by halves," and to
this end, having properly acquired jurisdiction of the cause for
any purpose, it will ordinarily retain jurisdiction for all
purposes, including the determination of legal rights that
otherwise would fall within the exclusive authority of a court of
law. Greene v. Louis. & Interurban R. Co.,
244 U. S. 499
244 U. S. 520
McGowan v. Parish, 237 U. S. 285
237 U. S. 296
Camp v. Boyd, 229 U. S. 530
229 U. S.