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unable to find any reason for the fear expressed by the defendants that some harm, aside from the issues in this action, might result from disclosure while the application in the one case is pending in the Patent Office. Any invention it may show cannot be forestalled at this time. The rule of practice of the Patent Office which withholds the drawings and papers from the public eye until the case is disposed of, is salutary there, but is not applicable to the investigation of causes by the courts. The application in the other case is stated to be in readiness for filing, and disclosure obtained in this public manner cannot be presumed to imperil any invention it may contain.

The drawings must be produced, if in existence and within control of the defendants or their counsel, for use before the Examiner, upon pay. ment by the complainant of such sum for their use as shall be reason. able. A rule will be entered accordingly, with leave to complainant to apply for further relief upon default or insufficiency of the information.

(U. & Circuit Court-District of Now Jerse THE BRUSH ELECTRIC COMPANY et al. v. THE ELEOTRIO STORAGE

BATTERY COMPANY et al.
Decided August 27, 1894.

69 O. G., 1508. BRUSH-STORAGE-BATTERY-MOTION FOR PRELIMINARY INJUNCTION DENIED,

ALTHOUGH PATENT HAD BEEN LITIGATED AND SUSTAINED, BECAUSE PROOF
OF INFRINGEMENT NOT CLEAR AND DECISIVE, AND COMPLAINANT CHARGE-

ABLE WITH LACHES IN NOT EARLIER INSTITUTING SUIT. Although the validity of the patent sued on had been sustained in previous litigation and was beyond dispute, yet where on a motion for a preliminary injunction the proof of infringement is not clear and decisive, but is in doubt, and, further, where the complainant is guilty of laches in standing idly by for several years during the time of the alleged infringement, Held that for these reasons the motion for preliminary injunction must be denied. ON MOTION for a preliminary injunction. Messrs. Witter & Kenyon for the complainants..

Mr. John R. Bennett for the defendants. GREEN, J.:

Two reasons conjointly compel a denial of the motion for a prelim. inary injunction made by the complainants.

The validity of the Letters Patent in question is beyond dispute. They have been sustained by all the courts before which they have been the subject of litigation. The only question to be considered upon this motion, under the circumstances, is that of infringement. While it is well settled that a preliminary injunction will issue almost as a matter of course in any given case wherein the defendants are shown to be guilty of infringement, after an adjudication establishing the validity of the Letters Patent involved in the litigation, yet it is equally well settled that to warrant and justify the exercise of this extraordinary power the proof of the alleged infringemeut must be clear and decisive. Equity peremptorily insists that such action, so drastic in its effects, shall be taken only in those cases wherein a clear, unclouded, equitable right to the interference of the court is shown. In all other cases the demand is to be met by refusal. Otherwise unfair prejudgment may result.

In the case at bar the proof of infringement fails to attain to this standard.

It is quite true that, on the part of the complainants, certain gentlemen most eminent in their profession, and whose opinions as experts are entitled to great weight, have not hesitated in their affidavits presented to the court upon this motion to assert quite positively that not only the storage-battery manufactured by the defendants, but, as well, the process used in the manufacture, do without doubt infringe some, if not almost all, of the claims of the Letters Patent under consideraation; and they laboriously strove to justify the opinions so expressed, first, by giving to the Letters Patent and the various claims an exceed. ingly broad construction, and, secoudly, by basing such broad construction upon a yet broader construction of the legal conclusions of the learned judges who have in past litigations defined and characterized the inventions of Faure and Brush.

Giving full weight to the opinions of these witnesses, elucidated and most eloquently enforced upon the attention of the court in the exceed. ingly able argument of counsel, it still remains to be said that the defendants have, in opposition thereto, presented opinions of other scientists equally as learned and of equal standing and repute in the scientific worid which are directly antagonistic thereto, and by which they most distinctly and positively declare that in their judgment neither the process pursued by the defendants nor the completely-manufactured battery impinges in the slightest particular upon those secured to the complainants by their Letters Patent; and so upon the one side are found the concurring opinions of Professor Morton and Professor Chandler, Professor Houston and Doctor Barker; upon the other those of Professor Brackett, Professor Cross, Professor Thomson, and Mr. Van Size. These are gentlemen of unquestioned veracity, thoroughly understanding the subject-matter under consideration; stating opinions with confidence which they believe to be well formed, and yet they arrive at conclusions which are irreconcilably and diametrically opposed. It must be apparent that affidavits of this character, ex parte as they are, can only be productive of doubt. When the statements so made and the opinions so expressed come to be tested by a severe and thorough cross-examination, beyond question those which show themselves securely founded upon reason and fact will be immediately accepted

and concurred in; but until then the existence of a doubt, well founded and reasonable, as to the right of the complainants to the remedy they ask cannot be overlooked. The existence of such doubt must now, at least, control the action of the court. It is fatal to a motion for a preliminary injunction. To justify the interference of a court of equity, pendente lite, by way of an injunction, the actual or threatened infringe. ment of a right must appear as clear as the noonday sun.

There is auother reason why this motion must be denied. Equity demands of a complainant that he should display great diligence in the assertion and vindication of his rights. Inexcusable delay on his part, though it may not amount to conclusive proof of acquiescence, nevertheless may be and often is sufficient cause to disentitle him to the summary interference of the court on his behalf by way of interlocutory injunction. Whatever may be the original equities of the case as betweeu the parties, if the complainant stands quietly by without seeking to enforce his rights, while the defendant expends time and labor and money upon the enterprise sought to be enjoined, upon faith that no actual or effective objection thereto will be made, he will be shorn of any right to appeal to the court of equity for assistance. (Hummer v. Hummer, 2 Green, ch. 263; Whitney v. Union Co., 11 Gray, 359; Car. lisle v. Cooper, 21 N. J. Equity, 599.)

In other words, the principle has been thus stated: No one can have relief if his own conduct has led to that state of affairs which occasions the application.

The proofs submitted to the court on this motion show these facts: The defendant corporation was organized, under the laws of the State of New Jersey, in 1888. Its sole purpose was to engage in the manu. facture and sale of electric storage-batteries of the type known as the “chloride accumulator.” Its works were located at Gloucester, in said State, and from the time of its incorporation to the present it has carried on its business without interruption. Its existence and the character and extent of its operations were well known to the principal officers and managers of the complainant corporation. In the conduct of its business at various times, and especially in 1891, 1892, and 1893, the defendants openly installed storage-battery plants of the alleged infringing type in various public buildings and for various corporations. Thus, for example, they furnished plants or batteries to the Provident Insurance Company, of Philadelphia; to the Metropolitan Railway Com. pany, of Washington; to the Union Square Theater, in New York, and elsewhere. The fact that these plants were furnished by the defend. ants was well known to the complainants. Besides, early in 1893 the defendants issued a pamphlet in which was printed an opinion of Professor Chandler, of Columbia College, on storage-batteries, and which contained a detailed and correct statement of the mode of con. struction and operation of the storage-batteries of the defendants and a full and succinct comparison between them and the batteries of the

complainants. This pamphlet was widely circulated and admittedly the complainants know of it. In July, 1893, the defendant, through its president, sent to the complainant corporation a letter, in which, among other things, is the following statement and appeal:

PHILADELPHIA, Pa., July 27, 1895. Mr. WILLIAM BRACKEN,

President Consolidated Eleotrio Storage Company, New York, N. Y.: DEAR SIR: I am favored with copies of your letters of 27th of February and the 24th of July, 1893, to Mr. Goorge W. Pearson, president of the Metropolitan Railway Company, of Washington, D. C., wherein you state that the battery manufactured by The Electric Storage Battery Company, of Philadelphia, is a clear infringement of the Brush patents, and of which “there is no earthly doubt.”

By what authority do you say our battery infringes the claims of your Brush patentt Surely on the authority of no court, for you well know that no court has declared our battery to be an infringement, and although we have been, to your knowledge, openly ongaged in manufacturing our batteries for some years, you have not down to this moment proceeded against us although threatening to do so for vearly eight months past. You apparently propose to dispose of our battery, and business without even resorting to the courts wberein such questions are usually determined.

Unlike you, we have sufficient confidonce in our position to submit the question to the courts empowered to consider and determine such questions, and there we invite you to meet us at onoo, and unlose you do so, or discontinue your libolous statements against our battery, wo will tako such steps as we are advised are open to us to protect our interests.

We are advised by our counsel and experts that our battery does not infringe any of the claims of your patents, and having confidence in their opinion, we propose to continue making and selling our battery, and shall protect and save harmless all users of them, not only as against any clain you may make, but against all claims from whatever source.

Now, boing advised of our intentions, we demand, in view of statements made in your letter to Mr. Pearson and other parties, that you proceed at once against us on a bill for infringement accompanied with motion of injunction so that the question of our infringemont of your patents may be dotermined, and to that ond we advise you, vis:

Wo aro a New Jersey corporation with a factory at Gloucester, in that Stato, where batteries are being manufactured daily, and wo will at any time furnish you with one of our batteries, at the usual price, accompanying same with a sworn statement of precisely how they are made with permission to use the same in any proceedings against us.

We havo, to avoid delay, authorized our counsel, Mr. John B. Bennett, Potter building, New York city, to accept service papers in our name and to aid you in overy way possible to reach the courts at the earliest possible moment, and you can arrange with him either direct or through your counsel for one of our batteries and & statement of its construction,

If you have confidence in your position you will, of course, accept our most rea sonable proposition to proceed against us at once, and if you do not wo hereby potify you that we shall proceed against you to protect our interests, holding you responsible for the damages resulting to our business by the making of statements and the sending out of such unfounded libelous letters as you have sent to Mr. Pearson.

To this letter the complainants returned no answer beyond a mere acknowledgment of receipt and admittedly took no action toward the assertion of their claims until months after.

In the meantime the defendants, assuming, as it cannot be denied they had reason to do, that no attack was to be made upon them, increased their capital stock $250,000 and proceeded to erect in addition to their existing factories a very extensive plant at a very large cost. It was not antil 1894, months afterward, that this bill of complaint was filed. Realizing the necessity of making explanation of their delay, the complainants allege that it was caused, first, by their diligent searching for some purchaser of the defendants' storage battery within the juris. dictional limits of the Circuit Court of the United States for the District of Southern New York, in which forum much of the previous litigation concerning the Brush and Faure batteries had taken place, and so avoid by the bringing of their suit in that jurisdiction some of the trouble and labor which would necessarily follow the commencement of a suit in this jurisdiction, and, further, that all the operations of the defend. ants were considered by the complainants to be simply tentative in the line of producing a practical commercial storage battery and only an effort on the part of the defendants to pursuade the complainants to spend thousands of dollars in substantially a moot litigation to stop the making and sale or use of only a few batteries, and because the complainants believed the venture of the defendants was destined to be a failure and die a natural death.

It is hardly necessary to say that such excuses do not justify the laches of which the complainants have been clearly guilty. If the rights of the complainants are now trespassed upon by the defendants, they were in like manner trespassed upon more than four years ago, and the trespass, of which so loud complaint is made now, has been continuous. For reasons satisfactory to themselves the complainants, well aware of these continuous trespasses, chose to stand by without taking action looking to the vindication of their rights and the prompt punishment of the trespasser. The result of such inaction on the part of the complainants is found in the increased contribution to the capi. tal stock of the defendant corporation of hundreds of thousands of dol. lars and the expenditure of an exceedingly large amount of money in the erection of a greatly-extended plant. If, in fact, the rights of the complainants have been invaded by the alleged infringing acts of the defendants, it is scarcely an exaggeration to say that the dilatory conduct of the complainants in protecting their rights amounted to open encouragement of or at least to silent acquiescence in such invasion. Such conduct bars absolutely the remedy asked for at this time by the complainants. (Brisbin v. Burdick, 12 Beavan, 1; Smith v. 8. W. Railway Co., Kay, 417.)

It was admitted upon the argument that the defendants were finan. cially responsible and amply able to respond to any award of damages that might be made against them.

Under all the circumstances and for the reasons given the motion for a preliminary injunction is denied.

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