WILLIAMS et al. v. BREITLING METAL-WARE MANUF'G CO., 77 F. 285

JENKINS, Circuit Judge, after stating the case, delivered the opinion of the court. In Standard Elevator Co. v. Crane Elevator Co., 9 U. S. App. 556, 6 C. C. A. 100, and 56 Fed. 718, this court declared the doctrine which must prevail in this circuit respecting the allowance of preliminary injunctions in patent cases.

We there said that to authorize a court, in advance of a decree upon the merits, to allow an injunction, not only must the infringement he without reasonable doubt, but the rights of the patentee must be clear; and, failing prior adjudication in favor of the validity of the patent, there must be shown such continued public acquiescence in the exclusive right asserted as raises a presumption of validity not arising from the letters patent alone; and that, if the controversy between the parties be substantial, and not colorable merely, courts of equity are not disposed to adjudicate upon the rights of parties otherwise than according to the approved usages of chancery.

In George Ertel Co. v. Stahl, 24 U. S. App. 567, 13 C. C. A. 31, and 65 Fed. 519, we approved and followed this ruling, and that case must now be taken to declare the settled doctrine in this circuit. There is here apparently no contention that the lamp manufactured and sold by the appellee is not substantially a counterpart of the lamp of the appellants’ patent. With respect to the attack upon the patent itself, we need not at this time express any opinion upon the question.

The motion for an injunction was heard within eight days after the filing of the bill, before any answer could properly be required, and before answer filed. The validity of the patent, as well as the attack ppon it, rests wholly upon ex parte testimony, which we observed in Stand ard Elevator Co. v. Crane Elevator Co., supra, to be not wholly reliable. We are not satisfied that the attack upon the patent is pretentious merely, or that it is offered or tendered in bad faith.

It may fail to be sustained, but it is not manifestly without foundation, and so ineffective to secure the appellee an opportunity to present his defense according to usual procedure in like cases. This patent has never passed judicial scrutiny. It was but recently issued, some four months prior to the hearing upon the motion for injunction. If public acquiescence could be inferred, under any circumstances, within that brief period, it certainly does not exist in this case, for there are at least three different infringements complained of, and acquiescence is shown by one party only. In George Ertel Co. v.

Stahl, 24 U. S. App. 571, 13 C. C.

A. 33, and 65 Fed. 521, we said: “The special presumption of the validity of the patent arising from public acquiescence is not indulged, unless atic-li acquiescence exists when it would not be for the interest of manufacturers and users that it should be yielded, and so exhibiting a genuine conviction of the validity of the patent based upon investigation, and continuing for such length of time, that it may be said the conviction was generally entertained.” It was earnestly urged to our consideration that unusual conditions existed here, which should be persuasive to the allowance of the injunction in this cause.

The argument was with respect to the bicycle. Every part of its construction is fugitive and changeable from year to year, and with respect to the lamp in question, while its usefulness at the present was strongly asserted, it was, nevertheless, urged that it was likely during the present year to be superseded by an electric lamp which would render the appellants’ lamp useless.

If the argument he well founded in fact, it would be a strong attack upon this lamp as a useful invention, within the meaning of the patent law; and, if it be true that the lamp in question is likely to he speedily superseded, — since there is here no attack upon the iinancial ability of the alleged infringer to respond in damages, while, on the contrary, it has been shown affirmatively that it is abundantly responsible, — there would seem to be no necessity for the injunction, since the inventor, if his lamp is to have such brief existence, could be fully compensated, and would be aided by the active exertions of the infringer in placing the lamp on the market during the short term of its life.

It is true the inventor claims that, by reason of the appearance of this infringing lamp, he reduced the price of his own lamp, to maintain it upon the market, and to undersell the infringing lamp. That, however, was a voluntary, and possibly ill-advised, act on his part, since, if his patent shouid be sustained, he could recover damages measured by the market price of the lamp as he had established it, and not by the price which an infringer may receive for it. We perceive no special equity which should take this case out of the general doctrine with respect to injunctions.

The order appealed from will be affirmed.