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plaintiff, if he brings his suit as assignee; or that the assignment is recorded; or that the patentee has infringed the patent right. If any of these grounds of defence appear in the declaration itself, the defendant may demur. Or if he does not demur, he may plead any of these defences specially, except the last; or he may plead the general issue, as usual in cases of this description, 25 and establish any of these grounds of defence by want of evidence on the part of the plaintiff, or by the evidence produced by himself.
If the defendant pleads specially that the patentee was not the inventor, he need not set out facts in his plea in support of it.26
The fifteenth section of the act of 1836 provides that the defendant, in an action for an infringement, shall be permitted to plead the general issue and to give this act and any matter in evidence, of which notice in writing may have been given to the plaintiff or his attorney thirty days before trial, tending to prove that the description and specification filed by the plaintiff does not contain the whole truth relative to his invention or discovery, or that it contains more than is necessary to produce the described effect; which concealment or addition shall appear to have been made for the purpose of deceiving the public; or that the patentee was not the original
25 Gods. Pat. 177. 26 Evans v. Kremer, 1 Pet. C. C. R. 215.
and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new ; or that it had been described in some public work anterior to the supposed discovery thereof by the patentee, or had been in public use, or on sale with the consent or allowance of the patentee before his application for a patent; or that he had surreptitiously or unjustly obtained a patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same; or that the patentee, if an alien at the time the patent was granted, had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent issued ; in either of which cases judgment shall be rendered for the defendant with costs; provided, however, that whenever it shall satisfactorily appear that the patentee, at the time of making his application for the patent, believed himself to be the first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or discovery or any part thereof having been before known or used in any foreign country, it not appearing that the same or any substantial part thereof had before been patented or described in any printed publication. By section eight, of the same act, it is provided “that nothing in the act contained shall deprive the original and true inventor of the right to a patent for his invention by reason of his having previously taken out letterspatent therefor in a foreign country, and the same having been published within six months next preceding the filing of his specification and drawings.”
The above provisions of the fifteenth section are mostly adopted from the sixth section of the act of 1793. In that act the provision as to surreptitiously obtaining a patent for the invention of another person, does not add “who was using reasonable diligence in adapting and perfecting the same; that, conversely and literally, this part of the act would read, that where a patentee has surreptitiously or unjustly obtained a patent for that which was invented or discovered by another, his patent shall nevertheless be valid, if that other is not using reasonable diligence in adapting and perfecting his invention. But by looking at the former part of the same section, we find that the patentee must be the "original and first inventor.” The construction of the two parts of the section taken together, is then, that if the patentee was the original inventor of the thing patented, his patent shall not be defeated by proof that another person had anticipated him in making the invention, unless it also be shown that such person was adapting and perfecting his invention. Or, in other words, if the patentee was an inventor of the thing patented, he shall not, in such case, be considered as having surreptitiously or unjustly taken out a patent for what was invented by another.
A doubt early arose on the sixth section of the act of 1793, from which the preceding sections are mostly taken, whether any other defence could be made in an action for an infringement, grounded on objections to the novelty of the invention or on the defects in the specification, than those enumerated. That section contained one provision which is omitted in the substituted law of 1836, namely, that if the defendant made out either of the enumerated grounds of defence, not only judgment should be rendered for him with costs, but also “the patent should be declared void." The law of 1836 contains no provision for declaring the patent void as the result of an action for an infringement. The Supreme Court finally decided that the sixth section of the former law did not preclude the defendant from making any defence which he could have made had the act not contained the sixth section, and that he might make any of the defences enumerated in that section without giving the notice, the result being in such case also the same as if the law had not contained that section. The effect of the section was then' merely that if the defendant, in an action for an infringement, desired to obtain a declaration that the patent was void, he must give the requisite notice of one of the enumerated grounds of defence, and, if it was made out, the court would declare the
The ground of defence in the action in which this decision was made, was that the specification did not contain a description of the invention in full, clear and exact terms; though the defect did not appear to have arisen from any intention to deceive the public. Marshall C. J. “Courts did not, perhaps, at first distinguish clearly between a defence which would authorize a verdict and judgment in favor of the defendant in the particular action, leaving the plaintiff free to use his patent, and to bring other suits for its infringement; and one which, if successful, would require the court, under the sixth section of the act, to enter a judgment noť only for the defendant in the particular case, but one which declares the patent to be void. This distinction is now well .settled. The sixth section is not understood to control the third. The evidence of fraudulent intent is required only in the particular case, and for the particular purpose stated in the sixth section. The act of Parliament concerning monopolies contains an exception on which the grants of patents for inventions have issued in that country. The construction of so much of that exception as connects the specification with the patent, and makes the validity of the latter dependent on the correctness of the former, is applicable, we think, to proceedings under the third section of the American act. The English books are full of cases in which it has been held, that a defective specification is a good bar when pleaded