Kirby Bung-Mfg. Co. v. White

• Decision Date: 17 March 1880
• Citation: 1 F. 604
• Parties: KIRBY BUNG MANUFACTURING CO. v. WHITE and others.
• Court: U.S. District Court — Eastern District of Missouri

1 F. 604

KIRBY BUNG MANUFACTURING CO. v. WHITE and others.

United States Circuit Court, E.D. Missouri.

March 17, 1880

TREAT J., (orally.)

The case of Kirby against several defendants is before the court on a motion for a provisional injunction. It is a patent case. It may not be known to counsel, who appear here from another circuit, what the uniform rule is in this circuit as to applications for provisional injunctions. An injunction is the strong arm of equity. It should never be allowed to operate oppressively upon any one, but be used for the purpose of securing the rights of the complainant in the case pending the litigation, without unnecessarily injuring the other party. Were it otherwise, the injury resulting might be very serious. For instance, in the milling cases before us Mr. Justice Miller allowed the defendants' mills to continue in operation on giving bonds of $125,000 or $150,000, instead of granting an injunction in the first instance, which might have closed all the mills in the north-west. If he had stopped all of the mills by the issuance of an injunction simpliciter-- it having been finally determined that the complainant's patent was invalid-- there would have been a great wrong perpetrated upon the parties defendant. Hence, the rule is this,--and is the true rule in equity, as settled in this court by Justice Catron, and existing up to the present hour, and I am authorized by Judge McCrary to say that he fully concurs,-- that the function of a restraining order is to protect the plaintiff without unnecessarily oppressing or annoying the defendant. Whether restraining orders go out in patent cases or in other cases, they are framed according to the circumstances of each case, to-wit: In one case there may be such circumstances as require an injunction simpliciter, but ordinarily a bond and order for accounting suffices, and sometimes simply an order for an accounting. Hence, the form of the order varies with the circumstances. I make these preliminary remarks so that parties may understand that an injunction simpliciter is not to be had for the asking. I am very well aware that the practice under the state laws is different, if it now is the same as years ago. Under the state practice there is but one form of a restraining order to-wit: If an injunction is asked for provisionally, it must issue as an injunction simpliciter. This is not the rule in equity, and has never been the rule in the courts of this circuit. The course in these preliminary matters is to protect the complainant without unnecessarily injuring the defendant.

There is a patent presented to the court for a bung-cutting machine. It is a combination patent, and a very commendable patent in itself. The various devices work automatically to effect the desired end. This patent has been before the circuit court of the United States for the district of Indiana, and a decree was ordered by Judge Drummond in favor of the complainant; and not being familiar with the facts of that case we take it for granted-- as the law requires-- that it was a correct decree, upholding the validity of the patent.

By a reference to the proofs I see that the matter was very fully considered, and the 'claims' involved in this suit are said to be valid and subsisting 'claims.' For the purposes of a provisional injunction under the patent law two things, or either of two things, may exist, to-wit: As in this case, a court, after full consideration of the matter, has rendered a final decree upholding the validity of the patent, that is a sufficient basis in itself for an injunction or some form of a restraining or accounting order, provided the party defendant in the particular case has infringed the patent; in other words, the court, on a motion for a provisional injunction, does not go into the merits to ascertain the validity of the patent. Prima facie the patent is valid; but under the uniform rulings of the courts of the United States for more than half a century, if there has been no decision as to the patent by a United States court, on the merits, the party is driven to show that his patent went into use undisputed for a sufficient time to raise a prima facie case in his favor. But if the court, after a due consideration of the matter, has reached the conclusion that the patent is valid, on this provisional matter the inquiry is not open.

The United States circuit court, sitting in Indiana, Judge Drummond giving the opinion, decided after a fair contest for from the record it seems to have been a bona fide contest, that this patent is valid. I make the remark 'after a fair contest,' because sometimes it has been supposed that a mere decree entered pro forma on the merits is sufficient in itself to require all other United States circuit court to grant a provisional injunction. Not so. We have held in this circuit that it must have been an honest and not a collusive matter. In ...