LOOKWOOD V. OLEAVELAND.
capable of doing the work; and, that being so, the precise relative proportions of the recessions are matters for the constructor. With this view of the patent, it is admitted that the respondents have infringed it. Interlocutory decree for the complainants.
(Oircuit Court, D. New
ST. § 4918. In a suit against an interfering patentee under section 4918 of the P.evised Statutes the defendant is not required to file a croSs-bill in order to obtain affirmative relief.
The crosB-bill was therefore dismisaed in this case, upon the motion of the. complainant, as having been improvidently filed, but, under the circuIll8tances, costs were not allowed.-[ED.
In Equity. Motion to Dismiss Cross-bill.
Browne & Whitter, for complainant. Munson & Philipp, for defendant. NIXON, D. J. This is a motion to dismiss a cross-bill, as improvidently filed. The circumstances under which the bill was filed are as follows: On the seventh of September, 1875, the commissioner of patents issued to Rhodes Lockwood letters patent No. 167,455, for "Improvement in India-rubber erasers." On the twenty-fifth of May, 1877, one Francis H. Holton, claiming to be the original and first inventor of a certain improvement in erasive rubber, by an assignment in writing, sold and transferred unto Orestes Cleaveland all his right, title, and interest in and to said improvement,which assignment was duly recorded in the patent-office of the United, States, September 27, 1878, in Book J 23, p. 296, of transfers of patents. On the ninth of June, 1877, the said Holton made application to the commissioner for letters patent for said improvement. The commissioner being of the opinion that the application interfered with tho letters v.6,no.7-46
patent No. 165,455, before issued· to Lockwood, gave notice on the fifth of November, 1878, to the parties in interest, as required by section 4904 of the Revised Statutes, and directed the primary examiner to proceed to determine the question of the priority of invention. Testimony was taken and a hearing had,-the respective parties being represented by counsel,-and on the twelfth of December, 1879, the examiner adjudged Holton to be the prior inventor of the improvement. An appeal was taken from this decision to the board of examiners in chief, which, after hearing the parties, reversed the primary examiner, on the twenty-fourth of February, 1880, and adjudged Lockwood to be the prior inventor. On an appeal from this last judgment to the comnissioner of patents, the commissioner, on the third of May, 1880, held that Holton was the original inventor of the improvement, but refused to grant the letters patent applied for, on the ground tllittthe invention had been in public use and on sale for more than two years prior to Holton's application. From this last judgment, Holton took the case by appeal to the supreme court of the District of Columbia, which reversed the commissioner, on the twenty-eighth of September, 1880, and'decided that Holton was entitled to his letters patent. They were accohlingly issued tQCleaveland, as the assignee pf Holtvn, on the nineteenth of October, 1880, Ul1mbered. 233,511, .,This condition of affairs existing between the parties, on the second of November, 1880, Lockwood filed a bill in this coill't against Cleaveland, setting forth the existence of the two patents, and their interference,Qne with/the other, and prayingthat the defendant's letters patent might be decreed void, and;that he might be restrained, by injunction, frominstitutiilgany suit at law or in equity for any alleged infringement there.of. The defendant has answered, denying .that Lockwood was the original and first df the improvement .d:eecribed in his letters patent, and claiming that he, as the ca:ssignee of Holton, is entitled to the invention, and conclud· 'ing with the prayer that the complainant's patent may be :adjudicated void. Simultaneously with the answer, and by h,!),\'c of the court, the defenda'1t. Clea.veland, also filed a
c,ross-bill, praying that the .complainant's patent might be ,declared void, and that he might be restrained from bringing any action in any court for an infringement of the same. The counsel for the complainant in the original suit now asks the court to dismiss the cross-bill, on the ground that section 4918 the :Revised Statutes affords all the relief in the original suit which the defendant can possibly have in the cross-snit. The motion involves the true construction of that section, which is a substantial re-enactment of section 16 of the patent act of 1836, as amended by section 10 of the act of March 3, 1839. It provides that, "whenever there aJ:e interfering patents, any person interested in anyone of them 'it · · may have relief against the interfering patentee, and all. parties interested under him, by suit in equity against the owners of the interfering patent, and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void, in whole or in part. · · ." The design of the provision is obvious. The congress meant to give a speedy and cOIl1pleteremedy to the owners of interfering patents, and, to this end, to clothetbe courts with jurisdiction to adjudge and declare either of the patents void, in whole or in part, or inoperative or invalid in any particular part of the United States. The difficulty and doubt arise wholly from the phrase "due proceeding. had according tf) the course of equity," which seems to have been -added to the previous legislation, and intended as a limitation upon the remedy, and to conclude the parties to three modes of procedure recognized in equity practice. Nothing 'ismQre firmly settled in equity than that where a defendant li!eeksthe aid of the court for the purpose of enforcing affil'BU\tive rights, he must file a cross.bill, although such a course is not necessary when he relies upon his rights to the relief sought against him. 2 Dan. merely as Ch. Pro 1550·.' Thl'lgenera.l rule is that he cannot have any positive relief against the. pla.intiff, even on the subject-matter of the suit, except by cross-bill. Story, Eq. PI. § 398, n. 3; Miller v.
Gregory, 1 C. E. G. 274; &ott v. Lalor's Ex'rs, 3 C. E. G. 801; Leddell v. Starr, 4: C. E. G. 159; Allen v. Roll, 10 C. E. G. 164; Pattison v. Hull, 9 Cow. 747 j Morgan v. Tipton, 3 MeL. 344; Carnochan v. Christie, 11 Wheat. 446. But there are exceptions to this rule in the more modern practice; as, for example, in the case of a suit for specific performance. The supreme court of the United States, in Bradford v. The Union Bank of Tenn. 13 How. 57, adopted the practice first suggested by Sir William Grant, master of the rolls, in Staplyton v. &ott, 13 Ves. 425, and sanctioned by Lord Eldon in Fife v. Clayton, ld. 546, and dispensed with a cross-bill and granted relief to the defenaant, on his answer to a bill for the specific performance of a contract, wherein an agreement was set up differing in many particulars from the one on which the bill of complaint was founded. The court regarded' such a departure from the established practice justifiable, "as most convenient and expeditious in settling definitely the rights of the parties, and for the sake of saving further litigation and expense." It is quite clear, from the reasoning of the court in the opinion deciding the case, that ifthe's&tnelea.rned tribunal should be called upon to collstrne"the section'under consideration, it would have no difficulty in finding in its provisions ample authority for the courts to give affirmative relief to a defendant, on an answer which denies validity to the complainant's interfering patent. But, whether this be so or not, all the courts which have had occasion to 'construe the section have assumed or decided that they :had judsdiction over all the interfering patents, upon a bill nled,and that on proper issues formed by the pleadings, without the intervention of a cross-bill, affirmative relief could be granted to either of the parties entitled to it, by declaring one or the other, or all, of the patents void or valid. The case of The Gold ct Silver Ore Separating Co. v. The United States Disintegrating Ore Co. 6 BIatchf. 307, invoked the jurisdiction of the court, under the sixteenth section of the act of July 4, 1836, and was heard by Judge Blatchford, on bill and answer. The bill alleged that on the eighth of
LOCKWOOD V. CLEAVELAND.
March, 1864, letters patent were granted to one John B. Gale, as assignee of William E. Hogan, for an "improvement in stoves;" that on the sixth of June, 1865, the said patent was surrendered, and re-issued in two separate patents, and that one of the two, numbered 1,988, was for an "improvement in furnaces for treating ores by superheated steam;" that on the third of JanQ.ary, 1865, letters patent No. 45,803 were issued to C. D. De Forest and others, as assignees of Mel= choir B. Mason, for an "improNed method of desulphurizing and oxygenizing metallic ores;" that Hogan was the original and first inventor of the improvements claimed in the reNo. 1,988; and that the invention therein described was identical with that covered by the Mason patent. The bill prayed that the last-named patent might be adjudged· to be void. The answer set up in defence that the original patept to Gale was not for the same invention as that described and claimed in the Mason patent; ,that Mason was the prior inventor of the inventions therein patented, and that the said re-issue No. 1,988 had been procured and the claims expanded for the purpose of fraudulently covering the mventions of Mason. It then prayed that the court would decree the re-issue to be void and the 'patent No. 45,80300 be valid. were taken and the case argued upon the issues by the pleadings, and the court decided the several raised questions, (a) of interference between the patents, (b) of priorityof invention, and (c) of the validity of the respective patents, holding that one was good and the other bad. The cause was argued by Mr. Keller for the complainants, and by Mr. Gifford for the defendants, and the best evidence that the method of procedure was regular is found in the faCt that neither of these distinguished patent lawyers suggested a doubt, on the argument, that the court had authority, under the provisions of the statute, to decide such issues upon bill and answer. The next case, in the order of time, is The Union Paper Bag Co. v. Crane, reported in 6 O. G. 801, tried before Judges Clifford and Lowell. The bill was filed under section 4918
of the Re:vised Statutes, and alleged that the complainants: owned a patent, granted to them December 24, 1872, as assignees of one L. D. Benner, for an improvement in paper bags, of which Benner was the original and first inventor; that the defendants held a patent, dated February 20, 1872, for an improvement alleged to have been invented by Luther C. Crowell; that the patents interfered; and the complain'ants prayed that the defendants' patent might be declared void. The 'answer denied that Benner was the prior inventor of the improvement patented to the complainants; insisted that Crowell was the inventor of that held by the defendants; neither confessed nor denied the interference; but with the prayer that the complainants' patent should be ad. judged void. The court considered the issues upon these pleadings, and, on a comparison of the specifications of the two patents, held that they described and claimed the same invention, and that Crowell was the true and first inventor; thus reversing the judgment of the patent-office, which had declared an interference, examined the case, and decided in favor of Benner. The decree passed by the court declared the defendants' patent to be good and valid, and the complainants' to be void. ' The only other oase, involving a construction of the section under consideration, that I have been able to find, is that of Foster v. Lindsay, 3 Dill. 126, in which Judge Treat, sitting in the circuit court for the eastern district of Missouri, expressly held that the section vested the power in the court to adjudge ,either of the interfering patents void, in whole or in part, and also authorized a decree that both patents were void. The learned judge found a support to his opinion in the allusion made by the supreme court in Mowry v. Whitney, 14 Wall. 4:40, to the scope and purport of the sixteenth section of the act of 1836. The defendant had set up in his answer that both of the interfering patents were void for want of novelty. The court allowed the defence to the action, and said .that the power conferred by the statute to declare either of the patents invalid, in whole or in part, necessarily included full authority, where the evidence justified, on the issues made,
io decree, 'not one of the patents alone, but both to be void, .and adjudged accordingly. Upon the whole case, I am of the opinion that the motion of the complainant must prevail, and the crosB-bill be dismissed; ,but, under the circumstances, without costs.
MARKS v. Fox and another. MARKS v. SCHWARTZ and another.
(Circuit Court. S. D. New Yo-rk.
Decel)lber 10, 1880.)
Evidence of prior use is inadmissible when such rise is not set up in the pleadings.-[ED.
Frederic H. Betts and C. Wyllys Betts, for plaintiff. Gilbert M. Plympton, for defendants. BLATCHFORD, C. J. These suits are founded onre-issued ters patent No. 7,808, Division B, granted to the plaintiff July 24:, 1877, for an "improvement in caps,". the original patent having been granted to him August 3, 1875. The specification of the Te-issue, embracing what is outside and what is inside of brackets, and excluding wha.t is in italics, says: "Figure 1 represents a side view when the [swinging] and neck protector is pulled down. Figure 2 is a vertical central section when the ear and neck protector is up. Similar letters indicate corresponding parts. This j.nvention 'Consists in an ear and neck protector connected to the back part of the crown of ,a, hat or cap by a, tape [or oloth] a'ndto its [the] sides [or nea.r the front of the hat or cap] by loops and buttons, or other equivalent fastenings, insU(lh a manner that, whenever it may be desirable, said, protector Cll,J:1. . bl)