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complainant is equitable merely, or equitable interposition is necessary on account of the impediments which prevent a resort to remedies purely legal; and such an equity may arise out of, and inhere in, the nature of the account itself, springing from special and peculiar circumstances which disable the patentee from a recovery at law altogether, or render his remedy in a legal tribunal difficult, inadequate, and incomplete; and as such cases cannot be defined more exactly, each must rest upon its own peculiar circumstances, as furnishing a clear and satisfactory ground of exception from the general rule." Before this case was a year old, the same justice who delivered the opinion of the Supreme Court was called upon to deliver another in explanation thereof.' In the latter case it was held that grounds of equitable relief do not arise" where the title of the complainant is equitable merely," unless that fact constitutes an impediment to a resort to remedies purely legal, or constitutes a circumstance which renders the remedy obtained by an action at law difficult, inadequate, or incomplete. And Judge COLT has decided that such an equity does not "arise out of, and inhere in, the nature of the account itself" merely because the account is intricate."

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§ 594. Want of jurisdiction in equity may be set up by a defendant in a demurrer or in an answer, but it does not really require any pleading to sustain it. It may be interposed by a motion at any stage of the case in the circuit court. Even on the hearing of an appeal in the Supreme Court, the defendant may successfully call attention to it; and indeed that court may enforce that defence against the express waiver and request of the defendant. But there is an advantage in making this defence by demurrer instead of by answer, or by a motion after an answer; for in the

1 Hayward v. Andrews, 106 U. S. 672, 1882.

2 Lord v. Machine Co. 24 Fed. Rep. 803, 1885; Adams v. Iron Co. 26 Fed. Rep. 325, 1886.

3 Spring . Sewing-Machine Co. 13 Fed. Rep. 446, 1882.

4 Hipp v. Babin, 19 Howard, 271, 1856.

first case the bill may be dismissed with costs, while in either of the others no costs can be recovered, even if the defence is successful.'

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§ 595. Prior adjudication in an action at law is not necessary to give jurisdiction to equity in cases of infringements of patents, nor is such an adjudication necessary to call equity into activity in that behalf. A circuit court may, in its discretion, order a trial at law in such a case, or order a trial by jury at its own bar, in order to inform the conscience of the chancellor ; but no such trial can be demanded by either or both of the parties as an absolute right, for courts of equity are not only really, but also technically, competent to judge of questions of facts.'

§ 596. Laches is a defence which is peculiar to courts of equity. It arises from one of the fundamental maxims which govern the administration of justice in those courts. That maxim is generally stated in the Latin language, and in the following words: Vigilantibus non dormientibus æquitas subvenit. In pursuance of the modern tendency to substitute English equivalents for Latin phrases in text-writing, it is well to set down in this place, a free but sufficiently accurate translation of this maxim: Equity aids the vigilant, and not the sleeping. In pursuance of this maxim, a court of equity sometimes refuses its remedies because they were not invoked with diligence, whether the right sued upon is old enough to be barred by a statute of limitation or not; " and whether the complainant or his assignor is the party who is chargeable with laches.' But delay to sue is not always laches, because it may have resulted from the fact that the complainant did not know of the infringement till

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long after it began; or from the fact that he was litigating a test case under his patent against another infringer during the time of the delay; or it may have occurred after the infringer was warned to infringe no more, and while the patentee was preparing for action. The first of these circumstances excuses delay, because vigilance does not imply omniscience, and the second excuses delay because abstinence from vexatious litigation is worthy to be praised rather than punished by a court of equity, and the third excuses delay because it is neglect, and not patience, that constitutes laches. Where neither of these excuses can be invoked by a complainant, he may perhaps avail himself of some excuse arising out of grievous poverty or protracted sickness. How short a delay will constitute laches in the absence of all special excuses, is a question to which no definite answer seems ever to have been given. But it is settled that where delay is without a particular excuse, less of it is required to deprive a complainant of an account of profits, than is required to deprive him of a permanent injunction. And a right to a preliminary injunction will be lost by a shorter delay than would be required to deprive a complainant of the right to an account of profits.

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§ 597. The defence of laches can be made in a demurrer,' or in an answer, or in an argument on the hearing without any pleading to support it. But a plea is not appropriate for such a defence, because, if the bill shows delay and is silent about excuses therefor, the method of a plea would be to state that there is no such excuse, and because, by taking issue on such a plea, and proving an excuse, the complainant could cut off all other defences, and win the

1 Van Hook v. Pendleton, 1 Blatch. 193, 1846; Green v. French, 4 Bann. & Ard. 171, 1879; Green v. Barney, 19 Fed. Rep. 421, 1884; American Bell Telephone Co. v. Southern Telephone Co. 34 Fed. Rep. 802, 1888.

Scibert Oil Cup Co. v. Lubricator Co. 34 Fed. Rep. 34, 1888.

McLean v. Fleming, 96 U. S. 257, 1877; McLaughlin . Railroad Co. 21 Fed. Rep. 574, 1884.

4 Mundy v. Kendall, 23 Fed. Rep. 591, 1885.

5 Maxwell v. Kennedy, 8 Howard, 222, 1850.

6 Sullivan v. Railroad Co. 94 U. S. 811, 1876.

cause.

To guard against a demurrer based on laches, in a case where long delay intervened between the infringement and the filing of the bill, the bill ought to state the existing excuses for that delay; and to guard against such a defence being started on the hearing, the evidence ought to show whatever excuse the complainant can interpose.

$598. The first of the twenty-seven defences which are known both to actions at law and actions in equity for infringements of patents, can be made in a demurrer, where the letters patent appear on their face to have been granted for something other than a process, machine, manufacture, composition of matter, or design, and where the bill discloses that fault. But a plea is never applicable to this defence, because its validity depends upon the construction of the letters patent, and not upon any matter of fact to which an oath would be pertinent; though an answer is always applicable thereto, and may join it with other defences to a patent.

§ 599. The second defence may be made on the hearing without any pleading, in all cases where the court will take judicial notice of the facts which show want of invention;' and a demurrer will also be sustained under the same circumstances; but courts will not take judicial notice of facts merely because they are stated in books, nor of facts which are not generally known,' nor of facts the reality of which is subject to doubt." And where the state of the art needs to be proved by evidence, in order to show that the advance covered by the patent did not amount to invention, it is necessary to set up the defence of want of invention in an answer. A plea is not applicable to such a case, be

1 Hendy v. Iron Works, 127 U. S. 375, 1887; Brown v. Piper, 91 U. S. 41, 1875; Slawson v. Railroad Co. 107 U. S. 649, 1882; Ligowski Clay Pigeon Co. v. Clay Bird Co. 34 Fed. Rep. 332, 1888.

2 Dick v. Supply Co. 25 Fed. Rep. 105, 1885; Kaolatype Engraving Co. v. Hoke, 30 Fed. Red. 444, 1887;

New York Belting Co. v. Rubber
Co. 30 Fed. Rep. 785, 1887; West v.
Rae, 33 Fed. Rep. 45, 1887.

Kaolatype Engraving Co. v.
Hoke, 30 Fed. Rep. 444, 1887.

Eclipse Mfg. Co. v. Adkins, 36 Fed. Rep. 554, 1888.

Blessing v. Copper Works, 34 Fed. Rep. 753, 1888.

cause defendants can seldom swear to the state of the art, and even where they can, they cannot plead resulting want of invention, because that depends upon the construction of the patent, which is to be made by the court in the light of the state of the art. When interposing this defence in an answer, it is not necessary to state what facts are intended to be proved in its support; because those facts refer only to the state of the art, and not to novelty.' The function of an answer, in respect of this defence, is to notify the complainant that the evidence of the state of the art, which is taken by the defendant, will be invoked at the hearing to show want of invention, and not merely to narrow the patent and thus show non-infringement.

§ 600. The third defence cannot be set up in a plea, because the statute expressly provides that it shall be set up in an answer. Nor can it be based on such a notice as will effect the purpose in an action at law. It requires an answer for its embodiment; and that answer must state the same things which a statutory notice of want of novelty in an action at law is required to contain."

It has been held on the circuit, that evidence of want of novelty, taken without being properly pleaded in the answer, is not made admissible by being set up in a subsequent amendment of that pleading. In another case it was held to rest in the discretion of the court to admit the evidence, so taken and subsequently pleaded, or to reject that evidence, but permit the defendant to take it anew under the amended answer.' These holdings are hardly consistent with each other, and neither of them seems consistent

1 Vance v. Campbell, 1 Black. 430, 1861.

Carnrick v. McKesson, 8 Fed. Rep. 807, 1881.

3 Doughty v. West, 2 Fisher, 555, 1865.

4 Seymour v. Osborne, 11 Wallace, 516, 1870; Roemer v. Simon, 95 U. S. 214, 1877.

5 Agawam Co. v. Jordan, 7 Wallace, 583, 1868; Bates v. Coe, 98 U. S. 31, 1878; Planing-Machine Co. v. Keith, 101 U. S. 493, 1879.

• Roberts v. Buck, 1 Holmes, 224, 1873.

Allis v. Buckstaff, 13 Fed. Rep. 879, 1882.

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