ent than in" any of the patents referred to. I find, therefore, that the crushers," having protuberdefendant's mill does not have ances which "extend approximately in line with each other," and I find that the said mill does not have one of said crushers geared with the main shaft, "as described in the complainant's patent, and specifiec;1 in the first claim thereof." Fralin every point of view the equity of this cause is with the defendant.· The bill will be dismissed, with costs.
tl. BRUSH ELECTRIC
(CiTcuU Court, N. D. OMo. December 26, 1890.)
L P....'UN'1'8 POB INVBNTIONs-INTBRFBRBNCBB-P:(,BADINGS. In a Bult under Rev. St. U. S. § 4918, to set aside a patent on the groul14 of Interference with plaintiff's prior patent, defQndant may obtain affirmative relief on an answer alleging the validity of his own patent, and the invalidity of plaintiff's under that provision of the statute that "the court, on notice to adverse parties, * · · may adjudge and declare either of the patents void. » 2. SAME-DISlnSSAL OF BILL. Where such suit bas been pending for several years, and defendant bas sought affirmative relief by his answer, and bas failed to file a cross-bill, plaintiff will not be allowed to dismiss his bill before the hearing and after proofs have been taken, and it is immaterial that plaintiff has sold his patent. L SAIIB-PLBADING-SUPPLBMBNTAL BILL. A supplemental bill, alleglnlf that since .the filing of the original bill plaintiff's patent has been .adjudged valld by another court in a case to whic1;l defendant was not a party, on plaintiff's filing a disclaimer limiting the scope of his patent, and that the two patents no longer interfere. will not be stricken out on general demurrer, tbough it prays that the original bill be dismissed, as the facts alleged can be made to appear by supplemental bill only. ". SAlIIB. " In suoh a questiClns of the duration of defendant's patent by reason of the existence of a foreign patent cannot be raised, as the object of the suit is to settle the questions of interference and priority only. G. SAllE. Where the bill prays that defendant's patent may be declared void by reason of interference with plaintiff's prior patent, and the answer prays that plaintiff's patent may be declared void, the suit cannot be regarded as one for infringement.
In Equity. Upon petition of plaintiff for leave to dismiss its bill, and also upon demurrers to the amended and supplemental bills. The amended bill was filed in this case under Rev. St. § 4918, by the assignee of Camille A. Faure, to whom, pn January 3, 1882, patent No. 252,002 was granted to procure an adjudication of the invalidity of PatentNo. 337,299, issued March 2, 1886, to CharlesF. Brush for a sec, ondary battery. To this bill a demurrer and answer was filed by the . Brush Electric Company, affirming the validity of its own patent, and denying that of the Faure patent, and praying tbatthe plaintiff be restrained from transferring its rights under the Faure patent, from disposing of its stock, or from licensing others to make, use, or vend secondary batteries, embodying the invention described in the Faure
ELECTRIC ACCUMULATOR CO. t1. BRUSH ELECTRIC CO.
patent, and from beginning or prosecuting any suits against defendant, its licensees or customers, for alleged infringement of such patent. A replication having been filed, plaintiff proceedecl to take his prima facie proofs, and defendant to take its answering proofs. At this stage of the case plaintiff filed a supplemental bill, setting forth that the first claim of the Faure patent had been adjudged to be valid in the circuit court for the southern district of New York, in a suit in which the Electrical Accumulator Company was plaintiff and the Julien Electric Company was defendant. Upon the filing of a disclaimer in the patent-office, limiting such claim, and disclaiming from the first claim of said patent "any electrodes of a secondary battery, coated with an active layer of absorptive substance, to which the active layer is wholly applied otherwise than in the form of a paint, paste, or cemeat." The sup3emental bill further alleged that since the filing of said disclaimer the said Faure patentantl the said Brush patent have not been interfering patents within the meaning of the law. and prayed the judgment of this court whether this suit should not be discontinued and become abated by reason of such disclaimer, so that there is no longer an interference between the said patents. To this supplemental bill defendant filed a general demurrer. Thereupon plaintiff filed ..this motion to dismiss, to which defendant filed a demurrer and answer, alleging the invalidity of plaintiff's disclaimer, and denying that the Brush and Faure patents were not still patents within the meaning of the law, even if limited by the pretended disclaimer. Betts, Atterbt£ry, Hyde & Betts, for plaintiff. Willer & Kenyon, for defendant.
BROWN, J., (after stating the facts a8 above.) The petitfon for leave to dismiss raises the question as to the right of a plaintiff to dismiss his bill after proofs have been taken and before the hearing, and atler an answer praying for affirmative relief has been filed. If it were an original question, I should feel considerable doubt whether, under section 8'ection 4918, a defendant was entitled to a decree declaring the invalidity of the plaintiff's patent, without filing a cross-bill; but as the practice of claiming affirmative relief in the answer has heen sanctioned by !!Elveral judges, and as no objection is made to it in this case, we do not feel called upon to express an opinion upon the point. Even if, under section 4918, a cross-bill be unnecessary, the defendant, in seeking to obtain a decree establishing the invalidity of the plaintifl"s patent, is clearly an actor, since the section declares that "the court, on notice to . adverse parties, and other due proceedings had according to the course of equity, may adjudge and deolare either of the patents void in whole or in part." Under such circumstances, We think the defendant should be as having the same rights as if it had filed a crossbill. Indeed, if it were necessary under the statute to its affirmative relief, we should permit a cross-bill to be filed even at this stage of the
While there is no doubt of the general proposition that a plaintiff in an equity suit may dismiss his bill at any time before the hearing, it is equally well settled that he cannot do so without an order of court,-a practice which implips a certain discretion on the part of the court to refuse such order if, under the particular facts of the case, a dismissal would be prejudicial to the rights of the defendant. Leave to discontinue has been denied where the defendant has set up a counter-claim which would be barred by the statute of limitations. Van Alen v. Schermerhorn, 14 How. Pr. 287. Where the defendant pleaded an estoppel, which. if established, would amount to a defeasance ofa lien claimed by the plaintiff on his property, and which it was the object of the bill to enforce: Stevens v. Railroads, 4 Fed. Rep. 97 ,-a most satisfactory opinion by Judge HAMMOND. Where defimdant sought to dismiss his cross-bill after the original and cross-bill had been set down to be heard together'; the court remarking that the plaintiff could not dismiss his bill when by so doing he might prejudice the defendant: Booth v. Leyccster, 1 Keen, 247. Where a general demurrer had been overruled upon argument, and defendant had appealed: C<Joper v. Lewis, 2 Phil. Ch. 178. After an order to account and a report has been made: Bethia v. McKay, Cheves, Eq. 93, overruling B08sardv. Lester, 2 McCor,p. Eq. 419. Or where a cross-bill was filed to a bill of foreclosure: Bank v. Rose, 1 Rich. Eq. 292; the court observing that "whenever, in the progress of a cause, a defendant entitles himself to a decree, either against the complainant or against a co-defendant, and the dismissal would put him to the expense and 'trouble of bringing a new suit, and making his proofs anew, such dismissal will not be permitted." Whether, under the New York Code of Pleading, a plaintiff will be permitted to discontinue after a counterclaim has been filed seems to be a question upon which the authorities are not unequally divided. Cockle v. Underwood, 3 Duer, 676; Railroad Co. v. Ward, 18 Barb. 595; Reesv. VanPatten, 13 How. Pro 258; Young v. BU/jh, 36 How. Pro 240. In Cummins v.· Bennett, 8 Paige, 81, it was conceded by counsel on both sides that the right of the plaintiff to discontinue was absolute, even if a cross-bill were filed; but that it did not. carry the cross-bill with it; that as the cross-bill was the bill of the defendant it,remained in court until he voluntarily dismissed it, or it was dismissed by his default or disposed of by the judgment of the court. This, however, does not seem to accord with the practice in the federal courts. Railroad CO. V. Rolling-iUill Co., 109 U. S. 702, 713, 3 Sup. Ct. Rep. 594. It was also conceded that the right existed in replevin where the defendant is an actor, and may notice the cause as well as the plaintiff; and continued in actions of contract after the law allowed a set-off to the' defendant, and his right to recover from the plaintiff any excess of the set-off beyond the plaintiff's claim. In a case at law arising in my own district (Halcomb V. Holcomb, 23Fed. Rep. 781) I held that where a defendant pleaded a set-off, and the case was referred, and the referee had reported a balance due to the defendant, and the statute of limitations has run against an original suit upon his claim, the plaintiff had no right
ELECTRIC ACCUMULATOR CO. 'V. BRUSH ELECTRIC 00.
to discontinue the action. In Bank v. Schulenberg, 54 Mich. 49,19 N. W.
Rep. 741, the supreme court of Michigan was equally divided upon the question whether a nonsuit can be taken after set-off has been pleaded and defendant has claimed judgment for a balance. Upon a full examination of all the cases upon this subject we have come to the conclusion that leave to dismiss a bill should not be granted where, beyond the incidental annoyances of a second litigation upon the same subject-matter, such actiDil would be manifestly prejudicial to the defendant. In ,the case under consideration the litigation has been pending for three years and a half. The defendant is entitled under his answer to an affirmative decree declaring the invalidity of the plaintiff's patent, in case it succeeds in establishing the priority of its own. Relying upon this, it has neglected to institute a cross-cause, and to allow this bill to be dismissed would be virtually to shorten the life of its patent for the time this litigation has been pending. Indeed, as the very object of the statute is to save the necessity of two suits, it will be manifestly unjust to permit either party to put an end to the litigation by dismissing its own bill. It is said, however, that this order ought to be granted, because, since the cases of Electrical Accumulator Co. v. Julien Electric Co., 38 Fed. Rep.. 117, and Bruah Electric Co. v. Julien Electric Co·· 41 Fed. Rep. 679, a disclaimer has been entered which renders these no longer interfering patents, and hence there is no necessity for thislitigation. On the other hand, it is said that this disclaimer was unauthorized by the statu\e, and is a nullity; that while such disclaimer has been acceptt::d in the second circuit, the defendant was not a party to that suit, has not been heard upon the question, and is not bound by the decision, and that the judgment of that court is not a bar to this action, nor to the prayers for affirmative relief contained in the defendant's answer. It is further claimed that even if the disclaimer be valid and legal, the two patents are interfering within the meaning of section 4918; that the first claim of the Faure patent is the only one affected by the disclahner i and that an interference still exists between the third claim of the Faure patent and tJ1e ninth claim of the Brush patent and the fifth of the Faure and ilIe tenth of the Brush. Without expressing any opinion as to the effect of this disclaimer, or the present existence of the interference, it is sufficient to say that these are questions which go to the .merits of the case, and we have no right to consider them upon a motion to dismiss the bill. Puller v. Insurance Co., 31 Fed. Rep. 696. The question whether an interference exists or not is one which must be determined from an inspection of the pleadings and proofs, a question no more to be raised upon this petition than the question of the priority of the respective patents. .The objection that the plaintiff no longer owns the Faure patent, and therefore has no interest in this suit, is untenable. Granting that a sale pen.dente .lit6 by a plaintiff of his interest in the subject-matter. of a suit
'an abatement,-and such seems to be the law, (Brewer v. and Dot one of whi6h the' plaintiff itself CaD take advantage. If tbe defendant seeks to optain affirmative relief against it, its right to such relief ought not to be defeated by an assignment of plaintiff's interest in the patent. A decree in its favor would operate as an estoppel, not only upon tbe plaintiff, but upon anyone purchasing its interest during the pendency of the suit, and also by the statute upon those deriving title under it subsequent to the rendition of the judgment. It is not the judgment which would affect the purchaser pendente lite, but irrespective of the statute he is charged with notice of the suit, and bound by its result. Murray v. BaUou, 1 Johns. Oh. 566 jMurray v. Lylburn, 2 Johns. Ch. 441 j County oj Warren v. Marcy, 97 U. S. 96,105. The petition to dismiss must therefore be denied. 2. There are also two demurrers interposed by the defendant, one to the supplemental bill, and the other to the original amended bill. amended The first of the demurrers is to the supplemental bill.. bill alleges that the inventions described in the two patents are substantially the same; that they are interfering patents within the meaning of the law; and that Faure was the true and first inventor,-and prays that the Brush patent may be declared void. The defendant in its answer admits that certain claims of the Brush patentrecite substantially the same invention as ce:"cain claims of the Faure patent, and that the patents in the suit are interfering patents to that extent, but avers that Brush is the true and first inventor, and prays that the Faure patent may be declared void. Replication was filed and testimony taken upon both sides. While defendant was awaiting the plaintiff's rebutting testimony the latter obtained leave to file a supplemental hill. This bill, after reciting the proceedings had in the suit, states that the first clllim of the Faure patent has been declared valid in the circuit court for the southern district of New York, in a suit against a defendant not a party herein, upon filings disclaimer in the patent-office limiting such claim. This claim is admitted by defendant in its answer to be for substantially the same invention as one of the Brush claims. The supplemental bill further states that since the filing of' said disclaimer the two patents have not been interfering patents within the meaning of the statute, and prays judgment whether this suit should not be discontinued and become abated. In short, after denying that it has any cause of action against the defendant, it prays the court to dismiss its bill. By the recognized rules of equity pleading the province of a supplemental bill is either to supply some defect in the structure of the original bill, when this cannot be done by amendment, or to introduce matters occurring subsequent to the filing of the original bill. Story, Eq. PI. § 332. Although the plaintiff may, in a supplemental bill, pray for other and different relief from that· demanded in the original bill, the new matters which may be introduced should be such as refer to and support the rights and interests of the original bill. Id. §
Dodge; 28: 'Mich. 358,)..,....;this is clearly a matter
ELECTRIC ACCUMULATOR CO. fl. BRUSH ELECTRIC CO.
336. The facts introduced by. way of such bill must not only be material in themselves, but must be such as are in furtherance of the general object of the original bill, and not such as are destructive of it. Its province is to meet exigencies arising or discovered since the filing of the original bill, and to put them on record in such manner that they may be made available for the continued prosecution of the original suit, that the benefit of proceedings already taken may not be lost. Tested by these rules it is quite evident that this bill is objectionable, in so far at least as it prays for a dismissal of the original bill. While it introduces matter which has arisen since the filing of the amended bill, it is matter which, so far from being beneficial to the plaintiff's cause of action. is subversive and destructive of it. It prays not for the same or similar relief to the original bill, but that this may be dismissed. We do not understand that the plaintiff can, either by amendment or by supplemental bill, make an essentially different case, or pray for relief manifestly inconsistent with that claimed in the original bill. Snead v. MeCoull,12 How. 422; Allen v. Spring, 22 Beav. 615; Maynard v. Green, 30 Fed. Rep. 643. In Shields v. Barrow, 17 How. 130, it is said (page 144) that U a bill may be originally framed with a double aspect, or may be so amended as to be of that character. But the alternative case stated, must be the foundation for precisely the same relief. * * * ·Nor is a complainant at liberty to abandon the entire case made by his bill, and make a new and different case by way of amendment. * * * We think sound reasons can be given for not allowing the rules for the practice of the circuit courts respecting amendments, to be extended beyond this, 1,oough doubtless much liberality shol1.ld be shown in acting within it, taking care, always, to protect the rights of the opposite party.» Obviously the proper way to obtain the relief sought by this supplemental bill was to move to dismiss the amended bill. the course which was sllbsequently pursued in this case. While we have already held that, under the peculiar circumstances of the case, plaintiff was not entitled to a dismissal of this bill, no objection was made to the petition as the proper method of procedure. But, inasmuch as the defendant prays for affirmative relief against the plaintiff, it is quite evident that the facts set forth in this supplemental bill of the adjudications in New York and the disclaimer should, in some way, be called to the attention of the court, in order that it may pass an intelligent judgment upun the two patents as they now stand. Indeed, this case well illustrates the difficulty of carrying on a double litigation under this statute without the filing of a cross-bill. Had such bill been filed in this case, the court would have had no doubt of its power to permit these facts to be set up in a supplemental answer. Story, Eq. Pl.§ 903; Patter80n v. Slaughter, 1 Dick. 285; Graves v. Niles, Har. (Mich.) 332; Gen. Eq. Rule 46. But as the right of the plaintiff to have the benefit of these facts is as clear as though a cross-bill were filed, we know of no way by which, in the absence of a cross·bill. they can be made to appear except by a supplemental bill, and for this purpotle it will be permitted to stand. And as the demurrer in this case is taken to the whole bill,
and not to the prayer for reliefonly, it must be overruled. The rule is that a general demurrer cannot be good to the part which it covers and bad as to the rest, and therefore it must stand or fall altogether. Story, Eq. Pl. § 443; Higinbotham v. Burnet, 5 Johns. Ch. 184; Williams v. Hubbard, Walk. (Mich.) 28. ' 3. The demurrer to the amended bill arises out of the allegation that prior to the granting of the patent to Brush there was ari Italian patent granted to one Hadden. agent of Brush, for the term of three years from August 8, 1882, a certified copy of which was annexed to the bill. The argUITlent is that, as the foreign patent had expired before the American patent was taken out, the latter is invalid, and of no effect. Defendant claims that this allegation raises an issue which cannot properly be determined in a suit based upon an interference; that the sole objects of section 4918 are to determine the questions of interference and priority as between two patentees; and that all other questions, including those of anticipation, novelty, and duration of the patent, can only be raised in suits for infringement. Thia question has been passed on in five cases, and in all, except the earliest, the contention made by this demurrer was sustained. In the case of Foster v. Iiind8ay, 3 Dill. 126, the defendant, in a suit upon an interference, set up, among other that the patent compound or process had been anticipated and in use before either of the interfering patents had been claimed or issued. The point was made that the court was bound to adjudicate solely between the interfering patents, leaving one to stand for subsequent adjudication when assailed in a proper suit. Judge 'l'REAT held that the defense was a proper one, and that under the statute the court had the power to declare either one or both of the patents void, and thus end the litigation. But in the subsequent case of Pentlarge v. Pentlarge, 19 Fed. Rep. 817, where the defendants interposed a plea that the invention described in the plaintiff's patent was anticipated by an English patent, Judge BENEPICT held, in an opinion which seems to me unanswerable, that the statute has for its sale object the determinatioD, of the question of interference and priority. 'If the defendant," says he, "in such an action, may tack the plaintiff's invention on any ground which the statute permits to be set up by answer in an action for infringement, it would often result that the proceeding would fail to carry the adjudicatlon of the question of interference, and 80 the proceeding be rendered futile for the purpose which the statute intended to be accomplished." The same view was taken by Judge NIXON in Lockwood v. Cleveland, 20 Fed. Rep. 164; by Judge SAGE in American Clay-Bird Co. v. Iiigowski Olay Pigeon 00., 31 Fed. Rep. 466; and by Judge SPEER in Sawytr v. MaB8ey. 25 Fed. Rep. 144. We regard those cases as settling the law that questions of novelty cannot be raised in suits under this section, andby parity of reasoning, that questions of the duration of either patent. by reason of the existence of a foreign patent, which would involve incidentally the question of the identity of the two, are equally beyond the power of the court.
AMERICAN ROLL-PAPER CO. V. KNOPP.
But it is said that this is also a bill for an infringement, as well as for an interference, and that in such case every question which might properly be put in issue in an ordinary suit for infringement may be raised here; citing Holliday v. Pickhardt, 29 Fed. Rep. 853. We do not so read the pleadings. The bill prays that the Brush patent be adjudged void by reason of its interference with the patent to Faure. The answer prays that the Faure patent may be declared void; that the plaintiff may be restrained from disposing of it, or making use of it directly or indirectly. There is no allegation in either that would justify us in treating either pleading as a bill for an infringement. Indeed, it is very clear that an answer to a bill under this section could not be treated as a bill for an infringement. . Separate orders will then be entered, denying the petition to dismiss, overruling the demurrer to the supplemental bill, and sustaining the demurrer to the amended bill.
(Circuit Oourt, E. D. Missouri., E. D. November 8, 1890.) L I.
PATENTS lI'OR INVENTtONS-PRESUMPTION 011' PRIORITy-INPRINGEMBNT AND INTERFERENCE·.
Where two patents interfere, there is a rebuttablll presumption that the inventor who first applied for a patent was the first inventor. Where two patents interfere, and the later.in date was first applied for, the owners of the latter cannot have damages for an infringement by the owner of the other without first obtaining an adjudication under Rev. St. U. B. § 4918, providing for suits to determine questions of interference, that the other isvoid.
. . .
SAME-RIGHT TO DAMAGES.
A count under that section for an interference and a count for infringement may be joined In the same b i l l . . .. .
In Equity. Geo. H. Knight, for complainant. Paul Bakewell, for defendant.
THAYER, J. In this case it appears that the roll-paper machine manufactured aud sold by defendants is manufactured strictly in accordancewith the specification and drawings of letters patent of the United States No. 394,121, owned by defendants, and issued to Edward L. Knopp December 4, 1888, the application for which was filed September 8,1888.. Complainant's contention is that defendants'machine embodies substantially the same inventi.on claimed and described in letters patent of the United States No. 409,028, granted to the complainant, as assignee of Leo Ehrlich, on August 13, 1889, the application for which appears to have been filed December 2, 1887, and was renewed March 28, 1889. Its contention is also that the machine is an infringement ofthe Ehrlich patv.44F.no.8-39