Rein v. Clayton

• Decision Date: 12 January 1889
• Citation: Rein v. Clayton, 37 F. 354 (E.D. Mich. 1889)
• Parties: REIN et al. v. CLAYTON et al.
• Court: U.S. District Court — Eastern District of Michigan

37 F. 354

REIN et al. v. CLAYTON et al.

United States Circuit Court, E.D. Michigan.

January 12, 1889

Syllabus by the Court

A court of equity has no jurisdiction to enjoin the infringement of an invention before a patent has been issued, notwithstanding an application for the same has been made, and is still pending in the patent-office.

This was a bill to enjoin the use of an invention belonging to plaintiffs, for which they had not yet obtained a patent. The bill averred the plaintiffs to be the joint inventors and owners of an invention of an improvement in plumbers' and jewelers' furnaces, for which they had made application for a patent on September 11, 1888. A copy of the application, with the specifications, drawings, and claims was annexed to the bill. The bill, which was filed October 11, 1888, further averred that the plaintiffs had been diligently prosecuting their application, which was still pending; that they were the original and first inventors of said improvement; and that they were informed by their solicitors that the same was new and patentable. Following this were the usual averments of infringement.

Alexander Brown, for plaintiffs.

George W. Radford, for defendants.

BROWN J.

We are confronted upon the threshold of this case with the important question whether an inventor can maintain a bill for an injunction before the issue of a patent. The question has been directly decided in but a single case, viz., Butler v. Ball, 28 F. 754; and it is upon this case alone that plaintiffs rely for the maintenance of this suit. The learned judge, who delivered the opinion in this case, does not discuss the question upon principle, but cites two authorities as settling it in favor of the jurisdiction. The first case (Evans v. Weiss, 2 Wash.C.C. 342) was an action at law against a person who had made use of plaintiff's invention for some years prior to the passage of a special act granting him a patent for such invention and the question was whether he was liable as an infringer for using the improvement after he had received notice of the granting of plaintiff's patent; and the court held that he was, notwithstanding a proviso in the special act that 'no person who shall have used the said improvements, or erected the same for use, before the issuing of said patent, shall be liable therefor. ' In delivering the opinion Mr. Justice WASHINGTON observed 'that the right to the patent belongs to him who is the first inventor, even before the patent is granted; and therefore any person who, knowing that another is the first inventor, yet doubting whether that other will ever apply to a patent, proceeds to construct a machine, of which it may afterwards appear he is not the first inventor, acts at his peril, and with a full knowledge of the law that, by relation back to the first invention, a subsequent patent may cut him out of the use of the machine thus erected. ' It is entirely clear that in saying that the right to the patent belongs to the first inventor, even before the patent is granted, he refers only to the plaintiff's property in his invention, and his right to a patent therefor, and not to his right to enjoin an infringer before the patent is issued. The real question was whether the defendant, who had purchased the patented article before the patent was issued, and was then using it, had the right to continue to use it after the patent was granted, and it was held that he had not. The principle of this case was subsequently affirmed by the supreme court in Evans v. Jordan, 9 Cranch, 199. In the other case, also, (Jones v. Sewall, 6 Fish.Pat.Cas. 343,) suit was brought upon letters patent, and in opening his opinion Mr. Justice CLIFFORD made the incidental remark that inventions lawfully secured by letters patent are the property of the inventors, and as much entitled to legal protection as any other species of property. 'They are indeed property, even before they are patented, and continue to be such, even without that protection, until the inventor abandons the same to the public, unless he suffers the patented product to be in public use or on sale, with his consent and allowance, for more than two years before he files his application. ' He is evidently speaking here of the right of an inventor to a patent in case he makes his application within two years after his device has been made public; and this right is a species of property which remains unimpaired during the continuance of the two years. But there is no intimation here that the inventor may apply for an injunction before his right is lawfully secured by letters patent; indeed, the intimation is the other way. He is evidently speaking of the same right of property to which Mr. Justice HUNT alludes in Manufacturing Co. v. Vulcanite Co., 13 Blatchf. 375, 383: 'So far as the plaintiff's own use or manufacture is concerned, it needs no act of congress to enable it to make, use, and vend the article, and it obtains no such right from congress. The benefit of the patent law is that the plaintiff may prevent others from making, using, or vending its invention. To itself, to its own right to make, use, or vend, no right or authority is added by those statutes. ' We think that neither of these cases is authority for the proposition laid down in the case of Butler v. Ball.

Let us now examine the question upon principle. At common law there was no special property in an invention, because the policy of the law was opposed to this as to all other monopolies. Walk. Pat. Sec. 159. Indeed, the inventive genius of the English-speaking people did not begin to manifest itself to any considerable extent before the middle of the last century, and it is only within the past 60 years that the business of the patent-office has been considered of any great importance. Patents for inventions were at first treated as a royal prerogative, and granted as a matter of favor, and never as a legal right. They were in fact a branch of that extensive system of monopolies which became so odious during the reign of Elizabeth and her successors, the Stuarts. In the reign of James I. a statute known as the 'Statute of Monopolies' was passed, declaring all monopolies contrary to law, and void, except as to patents not...