HAYES 'V. DAYTON.
(Circuit Court, 8. D. New York. November 10,1880.)
OF LETTERS PATENT.
A bill brought by a patentee to recover profits and damages for an alleged infringement of 38 claims in six different patents, is demurrable on the ground of multifariousness, where there is nothing in the bill to show that any two or more of the patents are in fact, or are capable of being, used in making a single structure, or that the defendant lias so used them, and where the defendant would be clearly prejudiced by being compelled thus to defend himself in one suit against so many alleged causes of action. 2. EQuITY RULE 37 CoNSTRUED. Equity rule 37 applies where a demurrer and an answer are put in at the Bame time to the whole ofa bill.
J. H. for plaintiff. G. G. Frelinghuysen, for defendant. BLATCHFORD, C. J. The bill ,in this case states that the plaintiff invented certain "improvements in ventilators, skylights, skylight turrets, conservatories, and other"glazed structures and ventilating louvres" described in "several letters patent and reissues thereof." It then avers that he obtained six several patents, Nos. 94,203 and 100,143 and 106,157 and 112,594 and 143,149 and 143,153; that he obtained reissues of all of them, the reissues being six in number, one of each, (though it does not appear of which original any particular reissue is the reissue,) the reissues being numbered 8,597 and 8,674 and 8,675 and 8,676 and 8,688 and 8,689 j and that since the reissues the defendant has, without authority, infringed sltid several reissues, and made, used, and sold said inventions. The bill interrogates the defendant as to whether he has made and sold "ventilators, skylights, skylight turrets, conservatories, and other glazed structures, and ventilating louvres, and embraced within any or either" of the said "several letters patent and reissued letters patent;" also, in four several questions, as to whether he has made, sold, or used what is claimed in each one of four claims in reissue No. 8,597, quoting it; and the like as to each on'e of fifteen claims in reissue No. 8,674, and of seven claims in reissue No. 8,675, and of two claims in reissue No. 8,676, and of seven claims in reissue No. 8,688, and of three claims in reissue No. 8,689, there being 38 several claims thus inquired about. The bill prays for a recovery of the profits and damages from the said unlawful making, using, and sell· jng by the defendants of the said "improvements in ventilators, sky-
BAYES 'V; DAYTON.
lights, skylight turrets, conservatories, and other glazed structures, and ventilating louvres." The defendant demurs to the whole bill, and in the demurrer shows, fOlcause of demurrer,"That it appears by the said bin that it is exhibited against tliis defendant
1'or several and distin.ct matters alldei1USeSj in many whereof, as appears by said bill, the defendant is not in any manner intereeted or concerned, and whiehsaid sENeral matters and causes are distinct and separate one from t4e other,.and are not alleged in said bill to be conjointly infringed by defendaJl.t. . By reason of the distinct matters therein contained the complaInant's bill iSdrawn out to considerable length, and the defendant is compelled: to take a copy of the Whole thereof, and by joining distinct matters together!, which do not depend on each other, in the saidbill,tba pleadings, orders, a.nd proce.edings ,will, in the progress of suit" be intricate and prolix;" the defendant be put to unnecessary charges' in taking copies of the same;"
defendant; "not waiving his said demurrer, but relying .there· on,"ha£l put in simultaneously an answer to the whole bill. This demurrer does not use the word "multi:flarious.", A bill is ·multifarious when it improperly unite&in one bill, against one defend, ant, several matters ,perfectly distinct and ·unconnected, 01" when it demands several matters, of a distinct and independent nature, against several defendants, in the Eame bill. The reason of the first case is that the defendant would be compelled 'to. unite, in his answer and defence, different matters wholly unconnected with each,other, -and thus the proofs apPlicable to eaeh would be apt to be confounded with each other, and delays would be occasioned by waiting for the proofs respecting one of the matters when the others might be fully ripe for hearing. The reason of the second c'ase is. that each defendant would have an unnecessary burden of costs, by the statemen.t in the pleadings of the several claims of the other defendants with which he ha,s no connection. Story, Eq. PI. § 271. . The demurrer in this case is intended to be a demurrer for misjoining c8luses of suit against one defendant. Yet much of it is inapplicable to such a case, and is taken from a form which applies only to the case of a demurrer by one .of two or more defendants,. who has no concern with causes of action stated against the other defendants, such a demurrer being really a demurrer for a misjoinder of parties. Story, Eq.Pl. § 530, and note 3, where is to be found the form ini· properly used in this case. Yet there seems to be enough left, after rejecting as sn:rplusage the improper and unnecessary part, to raise in regard to misjoiningcauseslof the point intended. The
suit against the defendant, substantially avers that the bill is brought for several matters and causes which are separate and distinct one from the other, and are not alleged to be conjointly infringed by the defendant. This means that the patents sued on are distinct one from the other, and that they are not alleged to be conjointly infringed in anyone article which the defendant has made or used or sold. This averment of the demurrer is true. Where there is a joinder of distinct claims between the same parties, it has never been held, as a general proposition, that they cannot be united, and that the bill is, of course, demurrable for that cause alone. Nor is there any positive, inflexible rule as to what, in the sense of courts of llquity, constitutes a fatal multifariousness on demurrer. A sound disoretion is always exercised in determining whether the subject-matters of the suit are properly joined or not. It is not very easy, apriori, to say exactly what is or what ought to be the true line regulating the course of pleading on this point. All that can be done, in each particular case as it arises, is to consider whether it comes nearer to the class of decisions where the objection is held to be fatal, or to the other class, where it is held not to be fatal. In new cases the court is governed by those analogies which seem best founded on general convenience, and will best promote the due istration of justice, without multiplying unnecessary litigation on the one hand, or drawing suitors into needless and oppressive expenses on the other. Story, Eq. PI. §§ 531, 539; Horman Patent Manufg Co. v. Brooklyn City R. Co. 15 Blatchf. 444. We are not without cases on the subject, in suits on patents, in this country. In Nourse v. Allen, 4 Blatchf. 376, in 1859, before Mr. Justice Nelson, a bill on four patents was held good, on demurrer, where it alleged that the machine sued contained all the improvements in all the patents. The court thought that the convenience of both parties, as well as a saving of the expenses in the litigation, seemed to be consulted in embracing all the patents in one suit, in such a case; and that although the defences, as respected the several improvements, might be different and unconnected, yet the patents were connected with each other in each infringing machine. In Nellis v. McLanahan, 6 Fish. Pat. Cas. 286, in 1873, before Judge McKennan, it was held that where a suit in equity is brought for the infringement of several patents for different improvements, not necessarily embodied in the construction and operation of anyone machine, the bill must contain an explicit averment that the infring-
BAYES V. DAYTON.
ing machines contain all the improvements embraced in the several patents, or it will be held bad for multifariousness, on demurrer. In Gillespie v. Oummings, 3 Sawy. 259, in 1874:, before Judge Sawyer,the bill was founded on two patents for the manufacture of brooms. There was a demurrer on the ground of the joinder of two separate and distinct causes of action. It appearing by the bill that the defendant's broom, if infringing, must be an infringement of both of the patents, and that there was, therefore, a common point to be litigated, and much of the testimony must, from the nature of things, be applicable to both the patents, the bill was held good. In Horman Patent Manuf'g 00. v. Brooklyrt Oity R. 00. 15 Blatchf. 444, in 1879, before Judge Benedict, a, bill in equity on two patents alleged that the defendant was using machines' containing, in one and the same apparatus, the inventions secured by each of the two patents. It was demurred to on the ground that it did not allege that the devices were used conjointly or connected together in any one apparatus, but the demurrer was overruled. The court held that as the bill did not show the controversy to be of such a character that prejudice to the defe'ndant would result from the joinder in one action of the causes of action joined, the bill. must be sustained. The court was of opinion that, in the absence of·any other fact,the circumstance that the two transactions complained of were the use, in a single machine, of two patented devices connected with the mechanism of the machine, warranted the inference that no prejudice would result to the defendant from the joinder of the two transactions. ' Tile decisions above cited all tend in one direction. The decision in (;ase v. Redfield, 4 MeL. 526, if limited, as it apparently ought to be, to the case of an original patent, and of another patent granted, in terms, as an improvement on the original patent, is not like the present case, as shown by the bill. It is a case difficult to understand, and, if it were like the present case in its facts, whatever there case, is is in the decision of it tending to sustain the bill in opposed to all the other cases on the subject. The present case appears to be a suit on 38 elaimsin 6 different patents. There is nothing to show that any two or more of the patents are in fact, or are capable of being, used in making a single structure, much less that the defendant has so used them. So .far as the bill shows, the causes of action are as distinct as the patents. v.8,no.9-45
706 The patents' are !lot shown to be oonnectedWith each other in every infringing machine:, or to be used 'a.t:the sanie time in any infringing maohine. ,Thecohtroversy in this suit appears from the bill to be of J!Uch:a cha,radier that:'prejudice will result to the defendant froIn beingc8tlled: ,On· to defiffld itt one snit against :88 clai'ms in 6 different p/l.tents, n,o two of·:whichclaims, so far as the bill shows to the contrary,a:r:e employed:in:any one machine.' On thisgto'und theM11 tnust beheld bad.· . - ,The plaintiff' in of an answer to the whqle bill iS8i,wailveriofdhedemurrer.Rule32 in: equity permitss,'de J tllurre:rto ii. part'M a' bill,a plea to a part, and an answer as to the residue. If, dmp'liedly, that rule iforbids' a dei?rtrrMtd the whole bill, and, at .the same 'time, an answer to the wliole bill; the plaintiff's rmnedy is)by,morihg to'strike'ont either the'answeror the 'demurrer, ortocompel!the defendant to elect which he will abide by. By go'j ing to: argumellt@n the demurrer the plaintiff waives the benefit" of the objeetionl!low.:taken; if otherwise he would have it. Moreover, rule 3'7 in ,eq,;uityprovides that "no demurrer or plea shall be held bitd /lild overiule8: 1!Lpon allgument, only because the answer of the defend/l.Ilt· may. extend to some' part of the· same 'matter as may be' eovetsd wasfiratinl1dein March, 1842, by,such demurrer take effect:August! 1, 1842'.< 17 Pet. lxvii. There was no such rule ,in the prim rlliesof March, 1822, (7 Wheat. v,) although ruTe 18 in sueh .prior rules was the 'Balile as the above present rule 82. ,Under the rul'es: of 1822, nlllt only had it been held (Furgu8on'v. O'Hara, Pet. 493) that where there was a plea joining to the whole bill, and a.lso an '8inswer ,to the whole bill, the court would, on the plaintiff's motion" plea on the ground of its being overruled by the answer, but';J'Ukige Story had held, in 1840, in Steame8 .y. Page,l Story, 204, that where a plea stated' a" ground why the defendant Bhonld not' go into a full defence, and, yl!t the defendant auBwe.red putting in a full defen'ee,it would' be held' on the. argument ,of the plea that the an'swer'overruled the plea. Then rule 37 was made. It applies to the'; present oase. The demurrer IS allowed, wit,hoosts.
LILIENTHAL V. WASHBURN.
otbers v. WASHBURN.
(Circuit Court, E. D · .Loui8iana. 1881.)
1 PATImT-BILL Dr EQUITy-PLEA TO JURISDI<YrloN.
swpW, tions fully vcsting the court with jurisdiction, a sworn plea by the respoillle,nt; admitting the validity and infringement of the patents, but denyIng the diction, alleging a right to use the patented processes under a contract.emanat'ing from the. only complainant in interest, and that pomplainant is '!' citizen of the same state with himself, in the absence of further proof, held,
To a bill in equity for infringement of letters patcnt, .and
Ex parle aflldavits introduced without notice to complainant, 'or without tender of afllaIlt for cross-examination, and writiugs ,uuper private unauthenticated, are inadmissible upon the hearing 01 such p l e a . ' '.
In Equity. Suit on patent for injunction. PARDEE, C. d. dOl'eph Wilson Swan, of England; Claude L. Lambert, of Paris, France; an4 Theol1ore :LilienthaI, of the city of New Orleans. bring their bill of complaint William W. Washburn, a resident .of tbe district of Louisiana. setting fortb, among other things, their ownership, of certain patented prooesses for printing photographs, the value and novelty of these inventions, and allege that the respondent, Washburn, is infringing on their patent-rights. The oomplainants pray for an injunction pendente lite, and an account and damages, and a perpetual injunction. On notioe and hearing, the temporary injunction was allowed and issued. March 1, 1880, the defendant filed a plea, substantially as follows:
That as to the alleged rights of the co-complainants of Theodore Lilienthal in the averred patents, and their sale thereof to said Lilienthal, asaYerred, and the validity, use, and effects of said averred patents, this defendant makes no contest, but he maintains that he has rights under contract in the use of said patents; that said contract emanates from said Theodore Lilienthal,one of the complainants herein, under date of fourth of January, 1879, to B. &' G. Moses and their successors, and by said B. & G. Moses to this defendant, as their successor, on the twenty-third day of July, 1879, on file herein; that the co-complainants of said Theodore Lilienthal have no therein; tbat said Theodore Lilienthal was and is a citizen of the state of Louisiana when the bill of complaint herein was filed; and this and.was at the same time a citizen of said state of Louisiana,and this court is not the proper court to take cognizance of the averred rights of Theodore Lilienthal and has no jurisdiction in the premises. . . . ., ' .
.To this plea complainants, on the tenth of,March, 1880, filed replication.