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LANE'V.:sbVERIGN et al.
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(<UrcuU OOUrt, N. D. nUna1.s. April 21,1890.)
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Detendal\tS' aUllwll'r to a blll charging the infringement of complaInant"s patent for makingioU-ca'l1s alleged that the cabs were made in accordance with a patent isth,ltt"'i'f 99mplainll.nt, apd admittl'ld tpat'the ftrl!t claim of co.msued 20 days piainant'll patent ilVas sIl:Dllar to the first. patent. The caUlle was beard on the bIll, answer, and'replioation. HeW,' that the admission of lnfllingement was complete; and w,ustbe as tr\1e, alld the the e1fect of the admfsllfoti are bf no avall' witbout ptQ()L " - ' '
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In Equity. ;D:' forcomplltinant.· 'Banningi,' Banmng &;Payon, .for defendants.
the:complainl,tnt.for an oil-canj andpra)'ing for'aniinjunetion and an accounting for ,profits .and ,.'Defendants answered,admitting the issue oftbelettei'l patent in qU6sti@llto complainant, as alleged in the bill" but insistea on proof as to whather complainant was the origInal and. first inventoroftheitnprovenrentdescribed and claimed in the Defendliriis also, by;' t'heir:linswer, denied. that they were,' at the time,ofma.king such answer,: engAged' ·ili manufacturing! or seiling any' Qil-(loos·whichoontained ol':embodied theinventiondescribE!dand claimed ih the patent. Defendants further, by their-answer, admitted that they had:,'be(ore and soldi831 cans, made su,bstantially in accordance with letters patent No. 886,439; dated July 17; 1888; 'llhd 'as· to suO:h defendant!'! :adl:nitted that, they contained and eombinations described hi the first'cmhnof ant!.. Complainant filed a. replication to this' arlswer; and the hearing upon the',billranswer, and: replimitiorl, and astipuhition to the effect 'that compla.inant might, upon the hearing, introduce in evidenceiul ordinary printed (lOpy of com plainant's patent, drawings,' and, specifications; instead of the original, or a thereof, and on thehearingoomplail1an't:exhibited an office copy of his patent, which was duly received and considered in evi-
BLODGBTT,J'.I Thi:s,isablll in defendants with the infringement' of le.tters· patent No, 887 ,426, granted August 7 , 1888, to
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The production of a copy of the patent i'n evidence, under the tioDj.' 1 !1IMukraises,tbepreaumption ,that complainant was the first inventor oithe device thereby patented; and so much of the answer as depies .of ll?'w in 1n patent IS, I thlOk,responslve to tp9f.?(i?r.eJ .. ,., jO , ' , ... " . , I now co'me to the consIderatIOn of the effect of the admission in the answer of the manufacture of the 837 cans. This answer admits, in effect, that defendants have made 837 cans which contain the features of the first claim of the complainant's patent; but defEmdant!'! insist that
said cans were made in accordance with the specifications of a patent 20 dayspriQ:r in date to the cOlnplainant's patent: This is 'equivalent to saying to complainant, by the answer, "I infringed. the first claim of your patent, but was jtist'ified in doing so. because your patent is anticiby an older patent, and therefore v o i d . " . The admission of infrinp;ement is complete; .The pleading or setting up of an older patent was new matter, which the defenQllDts were bound to prove, if they are to be protected by it j and the mere statement of the defendants. that such older )?lltent exists., and thlltit des.cribes. ,the com· plainant's oil-can is not sufficient. The ohler patent 'should have been put in evidence, so that the court might deterI:\line ""hether it so far described complainant's device as to deleat his patent, ' Possibly it might appear frQttlthe dates of the applications for the two patents that the one last issued was in fact first applied for, or the complainant, on the introduction of the older patent, might have shown by the prooftbat he was the first to make the invention, and hence eniitlilde tothe devicecovored by the first claim as against one claiming protection from a patent older in date. The law in regard to the effect of admissions in the answer when a replication is. filedia. I think, that so much of the answer as is directly responsive to the charges in the bill is to be taken as true; but any new matter pleaded by way of defense to the charges admitted to be true is affirmative matter,which the defendant is bound to prove where a replication is filed. In Daniells' Chancery Practice, (Perk. 4th Amer.Ed. 'vol. 1, p. 844; note 7,) it is said: .. hOwever, the answer of tile defendant is not responsive to the bill, or sets up affirmative allegations of new matter, not stated or Inquired of in tbe bill; in opposition to, or in avoidance of, the plaintiff's demand, and isreplied to. the answer is of nO avail in respect to sucb allegations, and the defendant is as much bound to establish the allegations so made by independent testimony as plaintiff is to'sustain his bill. · · ·. But when the case is heard upon a bill and answer alone, the answer must be taken as true. whetherresponsi ve to the bill or not." So also in McDonald v. McDonald, 16 Vt. 630, it is said: ..A tact alleged in the bill and admitted in the answer is established. but everyfllct alleged in the answer in avuidance of such fact must be proved the bill, if the answel' is traversed." And in Wakeman v. Grover, 4 Paige, 23, it is said: "Where a replication has been filed, allegations in the answer not responsive to anything in the bill cannot benefit the defendant at the hearing." There will, then,be a decree for the complainant, and a reference to a master to ascertain lind report as to the profits and damages complainant is entitled to from the manufacture of the 837 infringing cans which . defendants admit they have made. . ,