Sidebilder
PDF
ePub

plaintiff may, in such a case, avoid it by other matter which he is at liberty to adduce.1 It has been held that after a replication has been filed and testimony taken, the court may, without examining the testimony, overrule the plea for insufficiency and allow the defendant to answer. If, however, the truth of a plea upon which issue has been joined is established, and the plea meets and satisfies all the claims of the bill, the defendant is entitled to a decree.14 If the truth of a plea is not established upon issue joined, the bill cannot before answer be dismissed for want of equity.15 Leave to withdraw the replication and amend or to set down the plea for argument may under special circumstances be obtained. By replying to a plea, objections to its form or for a failure to support it by answer are waived." Pending an issue upon a plea all proceedings not germane to the same are usually stayed.18

§ 143. General remarks upon pleas.-In conclusion, it may be remarked that the cautious practitioner will act wisely in eschewing the use of pleas, unless he desires to plead matter in abatement, or in extraordinary cases. For it is as true now as in the time of Beames, that the subject of pleas in equity is one "concerning which so much still remains to be elucidated, that it may be said of them, maxima pars eorum quae scimus est minima eorum quae ignoramus."1

12 Pearce v. Rice, 142 U. S. 28; Elgin W. P. & P. Co. v. Nichols, 65 Fed. R. 215, 218.

13 Matthews v. Lalance & G. Mfg. Co., 2 Fed. R. 232. But see Myers v. Dorr, 13 Blatchf. 22; Theberath v. Rubber & C. H. T. Co., 5 Bann. & A. 584; Cottle v. Krementz, 25 Fed. R. 494. See Chisholm v. Johnson, 84 Fed. R. 384.

14 Horn v. Detroit T. D. Co., 150 U. S. 610, 625; Rejall v. Greenhood,

92 Fed. R. 945; McAleer v. Lewis, 75 Fed. R. 734.

15 Farley v. Kittson, 120 U. S. 303. 16 Cottle v. Krementz, 25 Fed. R. 494; Hughes v. Blake, 6 Wheat. 453, 473; Equity Rules 29 and 35.

17 Stead's Executor v. Course, 4 Cranch, 403; Farley v. Kittson, 120 U. S. 303; U. S. v. California & O. L. Co., 148 U. S. 31.

18 Playford v. Lockard, 65 Fed. R. 870.

§ 143. Beames on Pleas, 61.

CHAPTER X.

ANSWERS AND DISCLAIMERS.

§ 144. Pleading defenses in an answer.- An answer in equity serves two purposes: the setting up of the defenses to the suit, and discovery. It cannot ordinarily pray relief against the complainant, and never against a co-defendant.1 If a defendant desires such relief he must ordinarily file a cross-bill." The defendant is entitled in all cases by answer to insist upon all matters of defense (not being matters of abatement, or to the character of the parties, or matters of form), in bar of or to the merits of the bill, of which he may be entitled to avail himself by a plea in bar.3 Matters in abatement, such as lis pendens, which do not affect the jurisdiction, cannot be set up by answer. An answer may contain defenses which have been. previously raised by plea or demurrer and overruled. Facts that have occurred since the filing of the bill may be pleaded in an answer. The defenses must not be inconsistent with each other. If so, it seems that both will be disregarded,

144. 1 Ford v. Douglas, 5 How. 143; Hubbard v. Turner, 2 McLean, 519; Morgan v. Tipton, 3 McLean, 339; Chapin v. Walker, 6 Fed. R. 794; S. C., 2 McCrary, 175.

2 See infra, §§ 170, 171. It has been held in New York that the defense that a contract was executed under undue influence can be set up by answer without a cross-bill. McCabe v. Cooney, 2 Sand. Ch. 347.

3 Rule 39.

6 Earl of Leicester v. Perry, 1 Brown Ch. C. 305; Turner v. Robinson, 1 Sim. & S. 3.

7 Chapman v. School Dist. No. 1, Deady, 108, 115; Jesus College v. Gibbs, 1 Y. & C. 145, 147; Leech v. Bailey, 6 Price, 504; Daniell's Ch. Pr. (5th Am. ed.) 714. It is not considered inconsistent for a defendant both to deny the complainant's title and to allege that he has waived a right which he claims under it. Carte

Pierce v. Feagans, 39 Fed. R. 587; v. Ball, 3 Atk. 496, 499; Comstock v. supra, § 125.

5 Crawford v. The William Penn, 3 Wash. 484; Burnley v. Jeffersonville, 3 McLean, 336; Storms v. Kansas Pac. Ry. Co., 5 Dill. 486; Rhode Island v. Massachusetts, 14 Pet. 210.

Herron, 45 Fed. R. 660; Daniell's Ch. Pr. (5th Am. ed.) 714. The defense of a license from the plaintiff to commit the acts complained of is, in the absence of special covenants or recitals in the license, not inconsistent

8 Jesus College v. Gibbs, 1 Y. & C. 145; Daniell's Ch. Pr. (5th Am. ed.) 714.

12

14

unless the inconsistent allegations are trifling, when they may be treated as surplusage. The defenses must be pleaded with sufficient certainty; 10. although it seems that the same degree of certainty is not required in an answer as in a bill," or a plea. The general rule is that no affirmative defense can be proved unless it has been set up in the answer. 13 In a suit to restrain the infringement of a patent, a license is an affirmative defense. It has been said that, if a defendant states in his answer certain facts as evidence of a particular case, which he represents to be the consequence of those facts, and upon which he rests his defense, he is not permitted afterwards to make use of the same facts, for the purpose of establishing a different defense from that to which, by his answer, he has drawn the plaintiff's attention.15 Thus it has been said that where fraud is set up in the answer "the party making the charge, if it is denied in a proper pleading, will be confined to that issue." 16

§ 145. Defenses peculiar to patent cases.-The Revised Statutes provide that the defendant to a suit in equity for relief against an alleged infringement of a patent may set up in his answer any one or more of the following defenses, and give

with other defenses impugning the validity of complainant's patent. National Mfg. Co. v. Meyers, 7 Fed. R. 355. It was held to be consistent to qualify in one part of an answer a denial in another, and to plead different statutes of limitations. Von Schroder v. Brittain, 98 Fed. R. 169.

9 Jenkinson v. Royston, 5 Price, 496, 510; Daniell's Ch. Pr. (5th Am. ed.) 714.

10 Graham v. Mason, 4 Cliff. 88; Armstrong v. Lear, 8 Pet. 52. It has been said that "the respondent cannot set up as a defense that if complainant's patent be so construed as to cover the machine made and sold by him, then the machine embraced in said patent was known and used prior to the invention thereof by the patentee." Graham v. Mason, 4 Cliff. 88. An averment that a patent "was obtained upon false and fraudulent

representations by the plaintiff, or some of them, made to the Commis sioner of Patents, and is wholly void at law," is also too uncertain to be sufficient to constitute a defense. Clark v. Scott, 5 Fisher, 245.

11 Daniell's Ch. Pr. (5th Am. ed.) 714. 12 Maury v. Mason, 8 Porter (Ala.), 213, 228.

13 Stanley v. Robinson, 1 Russ. & M. 527; Cummings v. Coleman, 7 Rich. (S. C.) Eq. 509, 520; Burnham v. Dalling, 3 C. E. Green (18 N. J. Eq.), 132; Daniell's Ch. Pr. (5th Am. ed.) 712; Black v. Thorne, 10 Blatchf. 66, 84; Sperry v. Erie Ry. Co., 6 Blatchf. 425.

14 Watson v. Smith, 7 Fed. R. 350. 15 Langdell's Eq. Pl., § 79; Bennett v. Neale, Wightwick, 324.

16 French v. Shoemaker, 14 Wall. 314, 335. See § 70.

notice therein that he will offer proof of the same: "First, that for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or, second, that he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or, third, that it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or, fourth, that he was not the originator and first inventor or discoverer of any material and substantial part of the thing patented; or, fifth, that it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public. And in notices as to proof of previous invention, knowledge or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, a decree shall be entered in his favor with costs."1 Such a notice need not be under oath, and a consent to an order that the answer be considered as amended by the insertion of such defense and notice is a waiver of any further oath. Under this statute it has been held that no evidence can be admitted in support of any of these defenses unless it has been properly pleaded and the requisite notice has been given to the complainant; but that the respondent, after pleading these defenses or some of them, with the names of such of the persons therein referred to as he knows, may also plead a general allegation "that the same had been previously invented and known and used by many

§ 145. 1 U. S. R. S., § 4920. Cf. Anderson v. Miller, 129 U. S. 70; infra, $ 360.

3

Blanchard v. Putnam, 8 Wall. 420;
Bates v. Coe, 98 U. S. 31; Pitts v.
Edmonds, 2 Fisher, 52, 54; Salaman-

2 Campbell v. Mayor of N. Y., 45 der Co. v. Haven, 3 Dill. 131; JenFed. R. 243.

3 Teese v. Huntington, 23 How. 2; Agawam Co. v. Jordan, 7 Wall. 583;

nings v. Pierce, 15 Blatchf. 42; Willianus v. Boston & A. P. Co., 17 Blatchf 21; Decker v. Grote, 10 Blatchf. 331.

other persons whose names are unknown to the respondent, which, when known, the respondent prays leave to insert and set forth in the answer." Upon the subsequent discovery of any such persons, testimony concerning them may be taken, and leave obtained from the court to insert their names in the answer by amendment nunc pro tunc. An order to this effect may be obtained before or after the testimony has been taken.5 It seems that when a previous patent has not been referred to in an answer, such patent may still be proved, as evidence of a prior use of the invention, which has been properly pleaded, to show the state of the art at the date of the complainant's alleged invention. The defense of a want of patentability need not be pleaded in the answer. It is unsettled whether the defense of insufficient description can be set up without alleging an intent to deceive the public. The statute requires

4 Roemer v. Simon, 95 U. S. 214, 220; Brown v. Hall, 6 Blatchf. 405.

5 Ibid.

6 Atlantic Works v. Brady, 107 U. S. 192. But see Parks v. Booth, 102 U. S. 96, 105; Kennedy v. Solar Ref. Co., 69 Fed. R. 715.

7 Am. S. Co. v. Hogg, 1 Holmes, 133; s. C., 6 Fisher, 67; Stevenson v. Magowan, 31 Fed. R. 824.

versely to the complainant."
"Defenses of the kind, if the thing
patented is an entirety, incapable of
division or separate use, must be ad-
dressed to the invention, and not to
a part of it, or to one or more claims
of the patent, of less than the entire
invention. More than one patent
may be included in one suit, and
more than one invention may be

8 Stevenson v. Magowan, 31 Fed. R. secured in the same patent: in which

824.

9 Loom Co. v. Higgins, 105 U. S. 580, 588, 589; Grant v. Raymond, 6 Pet. 218; Whittemore v. Cutter, 1 Gall. 429; Lowell v. Lewis, 1 Mason, 182; Gray v. James, Pet. C. C. 394.

It has been said concerning the defense of want of novelty: "Where the thing patented is an entirety, consisting of a separate device or of a single combination of old elements incapable of division or separate use, the respondent cannot make good the defense in question by proving that a part of the entire invention is found in one prior patent, printed publication, or machine, and another part in another, and so on indefinitely, and from the whole or any given number expect the court to determine the issue of novelty ad

cases the several defenses may be made to each patent in the suit, and to each invention, to which the charge of infringement relates." Mr. Justice Clifford, in Parks v. Booth, 102 U. S. 96, 104; citing Bates v. Coe, 98 U. S. 31. It has been said that a defense charging that the original patentee "fraudulently and surreptitiously obtained the patent for that which he well knew was invented by another, unaccompanied by the further allegation that the alleged first inventor was at the time using reasonable diligence in adapting and perfecting the invention, is not sufficient to defeat the patent, and constitutes no defense to the charge of infringement." Clifford, J., in Agawam Co. v. Jordan, 7 Wall. 583, 597.

« ForrigeFortsett »