
    George R. Cornwall, Resp’t, v. Joseph Sachs et al., App’lts.
    
      (Supreme Court, General Term, First Department,
    
    
      Filed May 12, 1893.)
    
    
      1. Patent—Injunction.
    Where, in an action to enjoin the sale of a patent, the plaintiff makes out a prima facie case in support of his claim, and the injury which he would sustain by a sale of the invention is much greater than the defendant could possibly sustain by a temporary restraint upon his right of disposition, it is proper to grant an injunction restraining defendant pendente lite.
    
    8. Same.
    In such case it is improper to embrace in the injunction order an original invention, of which it was claimed the invention in question was an improvement, no allegation in regard to such an invention having been made in the complaint, and plaintiff’s right to the same having never been denied by defendant.
    3. Same.
    The original patent was for an individual call fire-alarm system. Held, that it was improper to embrace in the injunction order a provision restraining the sale of “ any other invention, improvement or patent relating in any way to a fire-alarm system.”
    
      4. Same—Restraint as to drawings.
    An order that defendant deposit with a certain party certain drawings should be limited to' those relating to the invention claimed to be an improvement, and their disposition only should have been restrained pendente lite, not their possession taken away.
    Appeal from an order restraining one of the defendants, to wit, Joseph Sachs, from in any way disposing of or assigning certain patent rights, or from removing certain papers and other property relating thereto from certain premises.
    
      Francis Forbes, for applts; Wheeler, Cortis & Godkin (Lawrence Godkin, of counsel), for resp’t.
   Barrett, J.

The question here is whether Sachs’ latest invention is an improvement upon his original invention, for which a patent was granted on the 30th of August, 1892, or whether it radically differs therefrom and from the patented mechanism. Under the contract between Fenno and Sachs the latter was to perfect an individual call fire-alarm system, to be used in operating present systems of fire-alarm street boxes from a distance, and Fenno was to be the owner of the patent to be issued therefor. Sachs was also to assign to Fenno such improvements upon the original application as might be made' during the continuance of Sachs’ monthly stipend. After the system, for which a patent was granted in August, 1892, had been to some extent perfected, Sachs invented the debated system, and in February, 1893, he applied for a patent therefor. The plaintiff alleges that this latter application, and the system upon which it was based, involved an improvement upon Sachs’ original invention, and, although this allegation is made upon information and belief, Fenno supports it by an affidavit in which he states positively that the latest application was certainly intended to be an improvement upon the system described in the contract, and that it follows the specifications of the contract except in certain particulars, as to which there was a special agreement. Fenno also states that the alleged improvement was so invented while Sachs was still in his employ and in receipt of salary under the contract. The plaintiff thus makes out a prima facie case in support of his claim, and, although his averments are denied, we agree with the special term that it was proper to preserve the status quo until a hearing upon the merits. The injury which the plaintiff would sustain by a sale of the invention is much greater than the defendant can possibly sustain by a temporary restraint upon his right of disposition. The case is thus brought within the rule that where, upon balancing considerations of relative convenience and inconvenience, it is apparent that the act complained of is likely to result in irreparable injury to complainant, and the balance of inconvenience preponderates in his favor, the injunction will be granted. High Inj., §§ 5, 13.

We think, however, that the order appealed from is altogether too broad, and that it should be modified by limiting the injunction to the particular invention which the plaintiff claims as an improvement upon the original invention. It was improper to embrace in the injunction order the original invention for which the patent of August, 1892, was issued. No allegation with regard to this invention is made in the complaint, and Sachs has never denied the plaintiff’s right thereto or to the patent therefor. The sweeping provision restraining the sale of any other invention, improvement or patent relating in any. way to a fire-alarm system, or boxes or apparatus for use in connection therewith,, was wholly unauthorized. So, also, was the mandate that Sachs deposit with Messrs. Brieson & Knauth certain specifications, drawings, and models, and that he prosecute his application for a patent with all practicable diligence. As to the materials, models, drawings and papers in the Germania Bank building or in the shop of Wischering & Son, the injunction was proper, so far as it restrains their disposition pendente lite. But the injunction on this head should be limited to such materials, models, drawings, papers, etc., as relate to the invention and application in dispute, namely, the application of February. 1893, and it should also be limited to the sale of these articles. There is no reason why they should be taken out of Sachs’ possession, any more than the disputed invention, in advance of judgment. Indeed, an injunction can properly run against their disposition only because they are ancillary to the invention, and may be embraced in the decree, if the plaintiff is successful upon the trial, as an incident to the main relief. But for this peculiarity, the plaintiff would be left to his legal remedy as to these articles. This modification of the-injunction practically disposes of the second branch of the appeal, namely, the order made upon the application to punish for contempt. No decision, however, was made with regard to the alleged contempt, and the order on that head is simply a statement that no punishment will be imposed, but that in a certain contingency the plaintiff may apply again. The order appealed from should, therefore, be modified so as to enjoin Sachs from disposing of the invention described in the specifications for an auxiliary fire-alarm system sent by him to the United States patent office on or about February 14, 1893, and also from disposing of any of the materials, models, drawings, papers, or other property relating to said invention. In all other respects the order appealed from should be reversed, without costs of this appeal to either party.

Van Brunt, P. J., and Follett, J., concur.  