W. W. SLY MFG. CO. v. CENTRAL IRON WORKS, 201 F. 683

SANBORN, District Judge (after stating'the facts as'above), The ground upon which the bill was dismissed is thus stated in the brief for appellee: “The court below became convinced that appellant was not entitled to equitable relief by way of a preliminary injunction, and that it could not, under the usage and practice of courts of equity, properly assume jurisdiction of the cause, especially as to claim 1 of patent 514,097, with which the remaining claims of said patent and patent 708,313 were inseparably joined by the thirteenth paragraph of the bill, so that, if the court could not properly assume equitable jurisdiction of claim 1 of patent 514,097, it could not, under the sole allegation of conjoint infringement of both of the patents and of all the claims inseparably and indistinguishably, retain jurisdiction of the remaining claims of the two patents involved, for that would have left the bill defective, in that there would then have been no proper allegation of infringement of such remaining claims, and so the court below quite properly dismissed the bill in its entirety!” ■ It thus appears that the suit was dismissed, not on account of want of jurisdiction over the parties or subject-matter, but for the supposed lack of equity jurisdiction. 'It was supposed because a court of equity will not usually grant a preliminary injunction in the case of a patent about to expire the jurisdiction in equity was thereby affected.

It is the common practice to dismiss bills brought upon patents about to expire, when it clearly appears that no right to a preliminary injunction existed at the time the bill was filed Many of the cases are cited in the briefs, the leading one being Clark v. Wooster, 119 U. S. 322, 7 Sup. Ct. 217, 30 L. Ed. 392. Equity jurisdiction in patent cases depends on the right to an injunction at the time, suit is commenced.

If it appears, therefore, that no facts then existed supporting the right to an injunction, and that the patent sued on will expire before any final decree can be made, the remedy at law is entirely adequate, and the equity suit, since it can avail nothing, must be dismissed because there is no equity jurisdiction. If, however, facts existed when suit was commenced which might, in any view, sustain an injunction, the question is not then one of jurisdiction, but one of discretion in the exercise of jurisdiction. This distinction is explained in Babcock v. Farwell, 245 Ill. 14, 33, 91 N. E. 683, 137 Am. St.

Rep. 284, 19 Ann. Cas. 74, and was applied to a case quite different from this by .this court, in Chicago Title & Trust Co. v. Newman, 187 Fed. 573, 109 C. C. A. 263. The view taken by the trial court was that, no right to a temporary injunction • under the 'first patent-appearing;-the case upon both patents should be dismissed because of the allegation of conjoint infringement under a claim which might sustain an injunction and others which could not.

Even in this view, the question presented was not one of equity power, but merely a suggestion whether the bill should not be amended so as to claim an injunction under- the second patent alone. Defendant (under the allegations of the bill), by making and sale of a machine, was talcing property rights- secured to complainant by two patents, which were conjointly, used by complainant. Clearly it is not an abandonment of thq right to an injunction for complainant to allege that the improvements described in both patents are conjointly used.

This allegation was made to justify joinder of the two patents in one suit, and should not be deemed to destroy the most important remedy given by the patent law, the writ of injunction. The decree is reversed, with direction to proceed in any manner not inconsistent with this opinion. - Reversed.