'upon facts very nearly parallel, been decided in Ames v. Spring-Bed Co., 24 Fed. Rep. 785. At page 787, Judge BLODGETT, says:
"It is true that the fabric shown in the Simmons patent differs from that shown in the Kneppler and Boyington patent; but, after the introduction of the woven"wire fabric for bed-bottom purposes, there was no possible room for invention. i.n subslituting the woven-wire fabric for the wooden slat and wire fabric in' Simmons' device; and, when that was done, you had exactly, in constl'uction and mode of operation, the Boyington bed, and all there Was of merit in the Kneppler bed."
This language is equally applicable to the case at bar. be dismissed.
The bill must
(Otrcuit Court, No D New York. August 9,1888.)
PATENTS FOB INVENTIONS-ACTIONS FOB INFRINGEMENT-PENDING SURREN: DEB.
A party who has surrendered his patent for reissue ali inoperative or invalid, cannot maintain an action upon it while it is in the hands of the commissioner of patents awaiting his decision, although Rev. St. U. S. provides . that the "surrender shall take effect upon the issue of the amended patent." 8. EQUITy-PLEADING-FAILURE TO REPLY TO PLEA. -Setting down a plea for argument, without a replication, admits its truth, but denies its sufficiency.
In Equity. Action for infringement of patent. This is an. equity a@tion for infringement, brought by David H. Burrell and others against Arthur C. I:J.ackley. The bill is founded upon three letters patent, one of which, No. 166,353, is for an improvement in veneercutting machines. To that portion of the bill relating to this the defendant has interposed a plea alleging that on the 7th of February, 1876, the then owners, having made the necessary oath that.it was' inoperative orinvalid, surrendered the patent fOJ: reissue; that such applihad not, at the time of the commencement of this suit, been abandoned, but was pending and undetermined; that the patent had n,otbeen surrendered to the applicants, or to anyone claiming under them, and no request for a return had been made of the commissioner. The plea asserts that by reason of the surrender, oath, and pending application for reissue. the complainants. when this suit was commenced, had no right. authority, or power to enforce the patent, or to maintain this bill of complaint. No replication was filed,and the plea was set down for argument. George W. Hey and Hey & Gibbs, for complainants. C. H. Duell and Oookinham & Sherman, for defendants.
CoXE. J. Nothing is before the court but the bill and plea, and all the allegations of the latter are admitted. The rule in this regard is well settled. By replying to a plea the complainant denies its truth; v.35F.no.11-53
but admits.i'tssufficiency;: by setting it down for argument he admits its truth, but denies its sufficiency· In this case the complainants have chosen the latter course. They have admitted the facts, and have, in legal effect, demurred to the plea. Rlwde Island v. Massachusetts, 14 Pet. 210; J!yerav. Dorr,13 Blatchf. 22; Birdseyev. Heiln&r, 26 Fed. Rep. 147; Oottle. v.Kreriteri,tz, 25 Fed. Rep; 494; Korn v. Wiebusch, 33 Fed. Rep. 50; Newtonv.'.l(f!aYer, 17.Pick. 129; Pat. § 590; Story, Eq. PL§ 697. The counsel for the complainants has, apparently, overlooked this rule. In contending that an examination of the file-wrapper will show an abandoned application and a return of the patent, he is unmindful of the fact that tlie complainants have expressly admitted that the proceedings are still pending, and that the patent is now in the possession and under the control of the commissioner. The simple question presented by th.El plea is this: Can a party who has surrendered his patent for reissue as inoperative or invalid maintain an action upon it,while it is the hands of the commissioner of patents, awaiting his decision? It is thought that he cannot. No controlling authority has beerl. produced by the counselor found by the court. But the reasonil1g,of the opinione delivered in causes decided prior to the act· of 1870 are all in support of the view here taken. Peckv. Collins, 103 U. S.660; MoJIiU v. Gaar, 1 Fish. Pat.'Cas. 610, affirmed, 1 Black, 273; Forbes v. Stooe Oo;;2C!iff. 385. It is true that underthepresentlaw the "sur.!l1:J.aU effect upon the issue of the amended patent." Rev. St. § 4916. But this language should not be construed to mean that the 8tatus of the original patent undergoes no change after its return to the commissioner. '1'0 permit the patentee to surrender his patent as inoperative or invalill,and the next day commence an action upon it as 8 valid instrument, would lead to endless confusion and inconsistencies. The reissue may be granted, and all prior right of action be superseded. The patentees may have a contingent right of action depending upon the happening ohome future event, but it is suspended during the time the jurisdictionnpon the question of reissue. Having surrendered the patent, and having declared it to be inoperative or invalid, it is incumbent upon the patentee t.o present some proof that he. has resumed control over it. The plea is allowed.
BURRELL et al. tl. PRATT.
(Oircuit Oourt, N. D. New York. August 9,1888.)
COD, J. As this cause involves the 'same question decided In Burrell.,. Hackley, ante, 833. the plea must be allowed·