Page:Federal Reporter, 1st Series, Volume 1.djvu/614

 ^06 FEDEEAL BEPOKTEE, �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 "claima." For the p'irpoaes of a provisional injunction under the patent law two things, or either of two thingg, 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 sueScient 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 mcrits to ascertain the validity of the patent. Prima fade 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 hia 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 enteveà pro foryna on the merits is sufficient in itself to require ail other United States circuit courts to grant a pro- visional injunction. Not so. We have held in this circuit that it must have been an honest and not a coUusive matter. In a case in the United States circuit court of xiiabama a matter formerly arose which illustrates my remark. �When one of the most distinguished lawyers of New York was before me, he cited a case which was decided in Califor- nia, and which, on an examination of the record, I found to be a sham case, the decree being obtained by collusion in order to allow parties who held the patents to put under restraint parties refnsingto submit to their demanda; and, of course. ��� �