Ogle v. Ege

WASHINGTON, Circuit Justice.

As to the first ground for dissolving the injunction, I shall content myself with observing, that whether an assignee of part of a patent, circumscribed as to the interest by local limits, can maintain a suit at law in his own name, or united with the patentee or not (a question unnecessary to be decided in this case); there can exist no doubt but that he may support a suit in equity to enjoin third persons from infringing the patent, and for an account.

2. I take the rule to be, in cases of injunctions in patent cases, that where the bill states a clear right to the thing patented, which, together with the alleged infringement, is verified by affidavit; if he has been in possession of it by having used or sold it in part, or in the whole, the court will grant an injunction. and continue it till the hearing or further order, without sending the plaintiff to law to try his right. But if there appear to be a reasonable doubt as to the plaintiff’s right, or to the validity of the patent, the court will require the plaintiff to try his title at law; sometimes accompanied with an order to expedite the trial; and will permit him to return for an account in case the trial at law should be in his favour. Hill v. Thompson, 3 Mer. 622, cited in Eden. Inj. 260-262; 14 Ves. 132; 3 Mer. 624, 628; Coop. Eq. Prac. 158; 6 Ves. 707; 1 Madd. Ch. Prac. 113; 14 Ves. 130; Amb. 406; 1 Vern. 120; 2 Madd. 175; 3 Atk. 496; 3 Brown, Ch. 376. Now in this case, the patent was granted in 1818, and is on its face free from all exception. Six years after the issuing of the patent, the patentee, for the consideration of $700 paid to him, sold and assigned to his co-plaintiff his right and title to the same within the state of Pennsylvania. This is therefore a strong casé for retaining the injunction until the answer, or until the invalidity of the parent, or the want of title in the plaintiffs, is established at law. Motion overruled*, with costs.