by Dennis Crouch
In the ongoing debate over the proper standard for issuing injunctions in patent cases, a 240-year-old English Chancery decision has taken on renewed significance. Horton v. Maltby, LI Misc MS 112 (Ch. 1783), provides a window into the traditional principles of equity that modern U.S. courts are instructed to apply when considering injunctive relief for patent infringement.
The case arose when Horton, who had obtained a patent for a stocking-making machine, filed a bill in Chancery (England’s primary court of equity until 1875) against Maltby for allegedly infringing the patent. Horton sought three equitable remedies: accounting of profits, delivery or destruction of the infringing machines, and an injunction to prevent further use. Maltby requested immediate dismissal via demurrer, arguing that Horton should first establish his right at law before seeking equitable relief.
Lord Ashurst, wrote the primary opinion rejecting the demurrer. His opinion draws a parallel between patent and copyright cases, noting that in both instances, ongoing infringement during litigation could cause “irreparable injury” to the rights holder. The opinion’s reasoning suggests that the mere fact of continued infringement during the litigation was sufficient to establish irreparable harm—a key factor in granting injunctive relief.
The reasoning in Horton v. Maltby reflects two key aspects of traditional equity practice in patent cases:
- Equity jurisdiction from the outset: The court rejected the notion that a patentee must first establish their right at law before seeking equitable relief. This suggests a recognition of the unique nature of patent rights and the inadequacy of purely legal remedies.
- Irreparable harm from ongoing infringement: Lord Ashurst’s analogy to copyright cases, where an infringer might “print off a number of copies to the irreparable injury of the Owner,” indicates that the mere fact of continued infringement during litigation was seen as causing irreparable harm.
Although not binding precedent, the significance of Horton v. Maltby lies in its timing and context. Decided just six years before the U.S. Constitution went into effect, it reflects the practice of the English Court of Chancery at a crucial historical moment for American law. The U.S. Supreme Court has repeatedly held that the equity jurisdiction of U.S. federal courts should be understood in terms of the “traditional principles of equity” as practiced by the English Chancery in 1789, unless Congress directs otherwise. See Grupo Mexicano de Desarollo, S.A. v. All. Bond Fund, Inc., 527 U.S. 308 (1999).
In patent law, the links are particularly tight because of the statutory authority that courts may grant injunctions “in accordance with the principles of equity.” 35 U.S.C. § 283. The Supreme Court’s decision in eBay v. MercExchange, 547 U.S. 388 (2006), interpreted this language focusing on a traditional four-factor test, with irreparable harm as a central consideration.
Post-eBay, many courts have been reluctant to find irreparable harm in patent cases, particularly for non-practicing entities. This approach stands in stark contrast to the reasoning in Horton v. Maltby, which suggests that ongoing infringement itself – even absent any direct competitive harm or absence of legal remedy – constitutes irreparable injury. A case directly on point is Robert Bosch LLC v. Pylon Manufacturing Corp., 659 F.3d 1142 (Fed. Cir. 2011), which explained that eBay eliminated any presumption of irreparable harm in patent cases.
The historical evidence from Horton v. Maltby and similar cases suggests that our current approach may be at odds with the traditional principles of equity that Congress intended courts to apply. At the very least, it calls for a reexamination of how we understand and apply the concept of irreparable harm in patent cases.
In their 2020 article, Tomás Gómez-Arostegui and Sean Bottomley cite Horton v. Maltby along with dozens of other late 18th Century Chancery cases. The Traditional Burdens for Final Injunctions in Patent Cases C.1789 and Some Modern Implications, 71 Case W. Res. L. Rev. 403 (2020). Their general conclusion is that Equity did not require patentees to prove irreparable injury or the inadequacy of legal remedies to obtain an injunction. Instead, the court could presume future infringement from past infringement, and legal damages were considered inherently inadequate due to their retrospective nature. The article also notes the ideal of avoiding multiple lawsuits as another reason why courts at the time supported a more lenient standard for granting injunctions.
Regarding preliminary injunctions during litigation, Gómez-Arostegui and Bottomley note that these were routinely granted in patent cases. The Chancery would often issue an injunction to halt the defendant’s activities until the answer was filed, and then extend it until the hearing. This practice underscores the court’s willingness to protect patent rights even before the merits of the case were fully adjudicated. The authors point out that in many cases, the court would grant these preliminary injunctions without requiring the patentee to establish the validity of their patent at law first. This approach further emphasizes the strong presumption in favor of protecting patent rights that existed in the Chancery during this period.
I recently wrote about a case on the forefront of this debate, VidStream LLC v. Twitter, Inc., No. 2024-2265 (Fed. Cir.). VidStream argues that the district court erred in denying a preliminary injunction based on a failure to show irreparable harm. Citing Horton v. Maltby and other historical sources, VidStream contends that traditional equity practice recognized patent infringement as inherently causing irreparable injury.
Most recently in that case, the Federal Circuit has denied VidStream’s motion for expedited briefing – and indicated that “[b]riefing remains stayed,” presumably until the court resolves Twitter’s motion for summary affirmance.
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I want to thank the University of Missouri Library Staff for helping to transcribe the case from the 18th century script – that was largely illegible to me. The transcription is still rough, but let me know if you’d like a copy.