Goodyear v. Dunbar

10 F. Cas. 684, 3 Wall. Jr. 310

• Court: U.S. Circuit Court for the District of New Jersey
• Decided: November 15, 1860
• Status: Published

Opinion

GRIER, Circuit Justice.

The defendant, in virtue of his patent, has a prima. facie legal right to manufacture his compound by his process. Whether this process is a mere colorable change from the older patent, or whether his manufacture is the same combination or compound with that described in the plaintiff’s patent, is the great question in dispute between the parties. So far.as the judgment of the patent office affects the case, this question may be considered as having been decided in favor of defendant. The issue between the parties is an important one, and not a question of such easy solution as some may think at first view. But I do not feel called upon to decide it on the present motion. It is enough for the present that the defendant is acting under apparent legal authority, “prima facie” good; having the decision (ex parte, it is true, and therefore not conclusive) of what has been called a “quasi judicial tribunal.”

It is possible that on a final hearing I may differ in opinion with them, and quite as possible that a higher tribunal might differ with me. The question is, therefore, at this time: “Ought I, under such circumstances, to issue a preliminary injunction, and give the plaintiff a remedy before he has established his right on a final hearing?” By doing so I may do an irreparable wrong to the defendant, in breaking up his trade or business. If the plaintiff should be injured by the continuance of defendant’s manufacture, he will recover ample damages by the final decree of the court; as there is no allegation that defendant is insolvent, or likely to become so. The motion for a preliminary injunction is therefore overruled. But the defendant is ordered to keep an account of all that is manufactured and sold by him.

I may here say for the information of the bar, that whenever a defendant presents a case showing a bond, fide issue in fact or law, or, as in this case, a prima facie right to continue his manufacture, founded on a decree of the patent office, and a consequent public grant, I will not grant a preliminary injunction, and thus issue execution before judgment. I will not decide the whole merits of a bona fide issue in fact, on ex parte affidavits, nor anticipate the final judgment of the court on the legal questions, as if they had been brought out on a demurrer.

The remedy by injunction, though necessary in certain eases to do complete justice, is nevertheless one which should always be cautiously granted, and more especially where it is demanded before a decree of the court on final hearing of the merits. If the defendant shows a belief that he has a just defence, and is not a willful pirate of the plaihtiff’s invention, it should be a case of an evident mistake of law or fact, or both, in the defence which he sets up, which will justify the court in using their festinum remedium. Injunction refused; but the defendant ordered to keep an account.

[For other cases involving patent No. 3,633, see note to Goodyear v. Central R. Co., Case No.' 5,563.]