HICKS V. FERDINAND.
(Oircuit Oourt, S. D. New York.
PATENT LAW-REHEARINGS OF CASES TO BE DISCOURAGED WIlEN PmOR USE IS THE DEFENSE.
H.ehearings in equity cases should he generally denied, when the grounds offered therefor pertain to matters of evidence that could just as well have l'cen procured hefore the trial already had. 'I'his should he especially the rule,in patent cases when the defense is prior use, since it is seldom that the defendant cannot make it appear that he has discovered new evidence in support of such a defense.
In Equity. WALLACE, J. The application to amend the answer, and for are· hearing, should be denied, because it does not satisfactorily appear that the facts constituting the new defense could riot have been discovered by the exercise of reasonable diligence before the cause went to a hearing. 'rhe complainant bas conducted a difficult, protracted, and expensive litigation to a successful issue, and it would subject him to great hardship to compel him now to abandon the fruits and meet a. new defense. It was his right to be apprised by the answer of the defenses which he would have to meet and overthrow, so that he could elect whether to proceed with his suit or abandon it. Amendments of pleadings which introduce a new defense are permitted with great has been set for hearing, and after reluctance in equity after a a hearing are rarely allowed. Walden v. Bodley, 14 Pet. 156, 160; Smith v. Babcock, 3 Sumn. 583. When the application is based upon the ground of newly-discovered evidence, a more libel'al rule obtains; but courts of equity, as well as courts of law, in such cases proceed with great caution, and extend no indulgence to the negligent. Unless it appears affirmatively that the evidence could not have been obtained in due season if the party applying had used all reasonable efforts in that behalf, the application will be denied. It is due to the public interests, as well as to the immediate litigants, that rehearings for the purpose of letting in evidence which might and ought to have been introduced before the hearing should not be tolerated. In no class of cases should the practice of allowing rehearings be more Btrictly guarded than in cases like the present, where the defense of prior use is relied on to defeat the novelty of a patented invention, because it is seldom that a defendant cannot make it appear that he ha.s discovered additional evidence in SUppOl't of such a defense. The defendant states in his affidavit, in genera.l terms, that he "has been eager to collect all material evidence," and "has made great exertion and evel.'Y reasonable effort to defend the suit." These are his conelusions, but if the facts were specified they might not be the conclu.
Frost cf; Cae, for complainant. Briesen c1:; Steele and Roscoe Conkling, for defendants.
sions of the court. Such generality of statement is not sufficient; if it could not be conscientiously made in almost every case, it could be in every case with facility and with entire safety. The motion is denied.
WESTON DYNAMO-ELECTRIO MAOHINE Co. v. ARNOUX and another.
(Oircuit Dourt, 8. D. N$'/lJ York.
April 9, 1884.)
PATENT LAW-AUTOMATIC SWITCH FOR DVNAMO-]'ifACIIINE.
An automatic switch for a dynamo-machine for shifting' the electric current from one path to another is the invention of Smith; the rheotomes and the devices of 8iemens being ci,'cuit Lreakers designed for another purpose.
In Equity. E. H. Brown and S. A. Duncan, for complainant. Knox & Woodward, for defendants. WALLACE, J. At the bearing of this c.ause all the questions involved were decided adversely to the defendant, for reasons then stated, except the question of the novelty of the invention. An examination of the proofs shows that the devices upon which the defendant mainly relies to negative novelty, and to which the testimony of the experts is principally addressed, have no bearing whatever upon the issue. These are the devices of Siemens referred to in the letter and report of Col. Abbott. It appears by the proofs that the invention descl'ibed in the complainant's patent was conceived by Smith, the inventor, and embodied in a magneto-electric apparatus, in October, 1873. It is not shown that either of the Siemens machines purchased by Col. Abbott in Europe had arrived in this conntry at that time. While it may be conjectured from the statements of his letter (which by stipulation are made evidence of the facts) that he had received the machines prior to October, there is no proof to this effect. It only remains, therefore, to consider the rheotomes and the apparatus described in Siemens' English patent of 1867. It is obvious that neither of these devices contain the invention of Smith. Smith's invention is an automatic switch for a dynamo-machine for shifting the electric current from one path to another. It is actuated and controlled by the electric current to open and close the connection between the primary circuit and the exterior or working circuit. It is a pivoted and ballasted lever, located between the two circuits, having an armature at the end nearest the primary circuit, and a The switch, as combined with weight and spring at the other the dynamo-machine and the primary and exterior circuits, is intended and is efficient to do work which had not theretofore been done by such a machine. The rheotome and the devices of Siemens are