STONEMETZ PRINTERS'MACHINERY CO. ".
rowers to give dignity to the application, as well as to get the money and was to be used wherever the application was successful. That it was prepared beforehand is evident, as the name of Mr. Aaron is inserted in different ink from that used in the body of the paper. But, whether a bona fide business transaction or not, there was enough in the whole proceeding to arouse sUf:picion in the mind of a cautious, prudent man, and to put him on inquiry, and inquiry from the defendant Metzgar would have disclosed at once the fact that Ross had no title to the judgmenti and, it being Mr. Aaron's duty to inquire, he is chargeable with notice of the real facts, and stands in no better position, as against the assignee, than the original plaintiff in the judgment. He has failed to make out sllch a case as is requisite to enable him to hold the judgment as against the rightful owner. The parties have submitted their case both before the register and in court upon the merits, raising no question as tothe form of the proceeding, and in my judgment the findings of the register and his conclusions are correct, and the exceptions to his report must be overruled, and the report confirmed, and the said Aaron directed to execute an assignment of the said judgment to the assignee in bankruptcy. Counsel will prepare an order accordingly.
t)TONEMETZ PRINTERS' MACHINERY
w: D. Pennsylvania.
July 17, 1891.)
PATENTS FOR INVENTIONS-AcTION FOR INFRINGEMENT-CRoss-BILL.
In a suit for relief on account of interference and infringement, a cross-biJlseeking relief for an aJleg-ed infringement of defendant's patent by the complainant cannot be filed, not being germane to the original suit.
The fact that a complainant is beyond the jurisdiction of the court, so that tile defendant cannot sue Ilim in that forum in an original action, does not enlarge defendant's right to file a cross-bill in the suit brought by complainant..
For former report, see 46 Fed. Rep. 72.
John K. Hallock, for cross-bill. John C. Sturgeon, contra.
REED, J. The bill in this case alleged interference, lind prayed relief under section 4918. It also alleged infringement by defendant, and prayed relief upon that ground as well. A demurrer was filed to the bill because, as claimed by the defendant, there was a misjoinder of causes of action, which, following the decisions of other circuit courts, this court overruled. The defendant then filed its answer, and subsequently filed a cross-bill, alleging infringement by the plaintiff of defendant's patents, and praying for appropriate relief. By arrangement between counsel, the cross-bill was permitted to be filed, and a motion immediately made by plaintiff to strike it from the record, so that practical effect is to bring the matter before the court, as though upon a motion to file the cross-bill. Plaintiff's contention is substantially set
forth in its second reason filed with its motion, namely, that. the only material matter set forth and alleged in the cross-bill is foreign to the issue involved in this case, and not cognizable therein. As the decision upon the demurrer to the bill in favor of the plaintiff's right to join the two causes of action has opened for .him a wide field, my inclination has been, if possible, under the rules relating to cross-bills, to insure to the defendant the same liberality in its defense. A cross-bill ex vi tenninorwn implies Jl bill brought by a defendant against the plaintiff in the same suit, 'Or against both, touching the matter in question in the original bill. Story, Eq. Pl.§ 389. It is brought either to obtain a discovery of facts in aid of the defense to the original bill, or to obtain full llnd complete relief to all parties as to the matter charged in the original bill. It should not introduce new and distinct matters not embraced in the original bill, as they cannot be properly examined in that suit, but constitute the SUbject-matter of an original independent suit. The crossbill is auxiliary to the proceeding in the original suit, and a depenoency upon it. It is said by Lord HARDWI<:KE that both the original and cross-bill constitute but one suit, so intimately are they connected together. Ayres v. C(trve1',17 How. 591; Cro88 v. De Valle, 1 Wall. 1. It should not introduce any distillct matter. It is auxiliary to the original suit, and a grail and dependency upon it. If its purpose be different from this, it is not a cross-bill, though it may have a connection with the same geperal subject. Rubber Co. v. Goodyear, 9 Wall. 807. In the last-cited case the bill was filed for infringement of a patent. The defenses were invalidity of the patent and a license. By the cross-bill the defendant sought to set off a judgment against plaintiff against the damages he might recover in the infringement snit. The court held the cross-bill improperly filed. A cross-bill must grow out of the matters alleged in the original bill, and is used to bring the whole dispute before the court, so that there may be a complete decree touching the subjectmatter of the action. Ex parte Railroad Cr!., 95 U. S. 221. A cross-bill must be confined to the subject-matter of the original bill, and cannot introduce new matters not em braced in the original bill. If it does so, the cross-bill becomes itself an original bill, and there cannot be two original bills in the same cause. Dotz v. Phillips, 24 Wkly. Notes Cas. 382. A cross-bill is like an original bill, except that it must rest on what is necessary to the defense of an original bill. Brandon Mamif'g Co. v. Prime, 14 Blatchf. 371. In the case of Johvson R. S. Co. v. Union S. & S. Co., 43 Fed. Rep. 331, permission was refused to file a crossbill in an infringement suit, wherein the defendant set up the claim of right to a trade mark or name for an electrical system, which included the use of the patentee's name, as going beyond the case of the plaintiff in the original bill, not necessary as a defense to that bill, and matter entirely foreign to the primary controversy. In Young v. Colt, 2 Blatchf. 373, the court say: "A cross-bill, as its name imports. goes no further than to give the pat'ly filing it the reciprocal right enjoyed by the complainant in the original bill in to their mutual title or interest in the subject-matter of the suit."
STOXEME'fZ PRINTERS'.MACHINERY CO. V. BROWN FOI,DING-MACH. CO.
Where a cross-bill. to a bill offoreclosure brought by a party represent. ing the British government set up an independent claim of the respondents against the British government, it was held, in Rowan v. Manlifacturil1g Co., 33 Conn. 1, to be matter which, upon general principles, could not be setup by a cross-bill, the court saying: "If it is true that the matter set up in this cross-bill is wholly inrlependent of the matter set up in the bill. and does not touch or relate to that matter, either for the purpose of defense to it or for any disclosure relating to it, but is merely set up for the purpose of laying the foundation for some independent relief, it seems quite obvious, upon authority and principle, that for the purpose of any such independent relief as is asked for the cross-bill should be dismissed." In Dotz v. Phillips, snpra, a bill was tiled for the specific performance of one agreement, and the cross-bill alleged violation of another independent agreement, and prayed relief against the plaintiffs. The court held that the cross-bill was improperly filed, Raying: "The plaintiffs seek a specific performance. and that only. It is no answer to that to say that the plaintiffs have broken another agreement relating to another su bject." In Galatian v. Ennin, Hopk. Ch. 48, the original suit was for foreclosing two mortgages. By cross-bill one of the defendants in her defense sought to impeaeh for fraud the title of the mortgagor, not only to the mortgaged premises, but to other lands. It was held that as a defense to the original suit the cross-bill was entirely proper, but that it could not introduce a distinct suit relative to the other lands, or become the foundation of a decree concerning matters not em braced in the original suit; and that no decree beyond the subjects of controversy in the original suit could be made in the canse. In the present case the subject-matter of the original bill is the interference between plaintiff's and defendant's patents, and also the alleged infringement of plaintiff's patent by defendant. The defendant's cross-bill is based solely upon an alleged infringement by plaintiff of defendant's patents. If plaintiff's bill was solely for interference between the patents, that would be the only question that could be considered, and a cross-bill would clearly be improper based upon an alleged infringement by plaintiff. An infringement of a patent is a tort, (Rob. Pat. § 931 i) and, if the original bill were tiled for that alone, the defendant could only attack the rights of the plaintiff under his alleged patent, the validity of the patent, or deny the infringement.. He could not set up, by way of defense, another tort, alleged to have been committed by the plaintiff. The joinder of two causes of action in the original bill necessarily involves the joinder of the defenses appropriate in each case, but they are two separate causes of action, although joined, and not a new cause of action, formed by amalgamation, permitting new questions to be raised by defendant different from those relevant to each separate cause of action. The crossbill does not seek to defeat plaintifFs causes of action, and the matters alleged in it are not essential to the complete disposition of plaintiff's case, or of defendant's rights in relation to the plaintiffs causes of action.
Defendant's counsel has argued that, as plaintiff is a foreign corporation r and defendant will be compelled to follow it into another jurisdiction in order to file a bill for infringement, and as plaintiff has come into this court with a matter relating to defendant's patent, that circumstance should be considered, and relief given defendant in the court of plaintiff's own choice. That question was considered in the case of Rowan v. Manufacturing Co., $Wpm, but was held not to authorize the cross-bill based on a counter-claim by defendant. In my judgment the cross-bill cannot be sustained, and, agreeably to the mode pursued by counsel in :raising the question of its validity, it should be stricken from the record. Let an order be made accordingly.
ENTERPRISE MANUF'G ENTERPRISE MANUJ;"G
Co. v. \VANAMAKER.
(Circuit Court, E. D. Pennsylvania. June 2, 1891.)
PA-TENTS FOr. INVENTIONR-ANTICIPATION-MEAT-CUTTEll.
:Letters patent No.. 271,898, issued to John G. Baker, January 30; 1883, for improvements in meohanislll to out up plastio or yielding substances, oonsisting of a rna· chinll. in which the sole reliance for cutting is upon a knife or other cutting device operating in conjunction with a perforated plate at the points of discharge from the casing,_ and in which there is no intentional disturbance of the substance to be cut, other than to force it forward, before it reaches the plate, is not invalid on account of anticipation. Following ManufactUring Co. v. Sargent, 34 Fed. Rep. 134.
The first claim of said patent for the combination of a casing for containing the substance to be cut, a plate at the end of the casing, a device for forcing the substance forward in the casing and against the plate without otherwise disturb· ing it, and a knife operating against the inner face of the plate, is infringed by a device COntaining all the elements specified, though there is some unintentional disturbance caused by the forcing apparatus in the substance to be cut before it reaches the plate. The second claim of said patent for the combination of a casing, a perforated plate, a rotating knife, and a forcing screw is not infringed by a device in which a cylinder with fingers is substituted for the forcing screw.
A decillion in the circuit court on the validity of a patent should be followed by the courts of other circuits, except where its "alidity is afterwards challenged by evidence that was not introduced at the former hearing.
Bills in equity by the Enterprise Manufacturing Company v. Deisler,. manufacturer, and John Wanamaker, seller, of a meat-cutting device,. to enjoin the infringement of patent No. 271,398. Charles How8on, for complainant. Horace Pettit, for respondents. BUTI,ER, J. The suits are for infringement of claims 1 and 2 ofletters issued to John G. Baker, January 30, 1883, for patent "Improvements in mechanism to cutup plasticor yielding substances." The facts in each are the samej and they are, therefore, considered to-