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with an earlier Supreme Court decision on a similar point.' In that case it was held that evidence of want of novelty is admissible in an action at law, where it was taken without being properly set up in any notice, but where a proper notice was subsequently given, and given thirty days before the trial.

Where the answer states that the patent sued on is void for want of novelty, evidence to support that statement will be admitted on the hearing, though not specified in the answer, unless the complainant objects to that evidence for want of the statutory notice."

§ 601. The fourth defence cannot rightly be made in a plea, for though a defendant may make an oath that he believes the patented thing to be without utility, he can hardly swear that it is certainly so. Others might succeed in using it where he had failed. An answer is therefore the only proper pleading for this defence, and without being set up in the answer, it cannot be made at the hearing.'

§ 602. The fifth and sixth defences both require to be interposed in an answer, because they both rest on evidence of abandonment outside of the bill, and therefore cannot be interposed by a demurrer, and because, being two of the five defences provided for by Section 4920 of the Revised Statutes, neither of them can be set up in a plea.

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§ 603. The seventh defence cannot be interposed in a plea because it involves the construction of the claims of the letters patent in suit. Letters patent are not void, merely because they describe something not shown in the original application therefor. It is only when they claim. something not indicated or described in the specification or

1 Teese . Huntingdon, 23 Howarn, 2, 1859.

Roemer v. Simon, 95 U. S. 220, 1877; Brown v. Hall, 6 Blatch. 405, 1869 Barker v. Stowe, 15 Blatch. 49, 1878.

3 Rubber Co. v. Goodyear, 9 Wal

lace, 793, 1869.

4 United States Electric Lighting Co. v. Consolidated Electric Light Co. 33 Fed. Rep. 869, 1888.

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

drawings of the original application that they are obnoxious to the seventh defence. The question what letters patent claim is a question of law for the court, and is therefore not one which can be raised by a plea in an action in equity. Nor can this defence be raised by a demurrer, because, in order to decide upon its validity the court must not only construe the claims of the patent, but must also compare the claims so construed with the original application, and that application must be introduced for the purpose, as a matter of evidence. This defence must therefore be set up in an answer, and not otherwise.

§ 604. The eighth defence cannot be set up in a plea, but must be interposed in an answer, because it is one of the five for which the statute prescribes that form of pleading in equity cases.'

§ 605. Either the ninth or the tenth defence may be interposed in a plea where the defendant knows the fact of joint or of sole invention upon which they respectively stand. Each of these defences rests upon a single matter of fact, which if decided against the complainant is fatal to his patent. But it is always unwise to make either of these defences in a plea, because the complainant will have no alternative but to file a replication, and because, by doing so, he will cut off all other defences, and because there is always a possibility that the court will, on the evidence, decide that the invention was joint, or was several, according as it may be necessary to do in order to sustain the patent.* An answer is therefore the best pleading in which to embody either of these two defences.

§ 606. The eleventh defence stands in the same category, in respect of equity pleading, with the third, fifth, sixth, and eighth, and must, like them, be made in an answer, and not in a plea.

§ 607. The twelfth defence cannot be made in a plea, be

1 Revised Statutes, Section 4920; Carnrick v. McKesson, 8 Fed. Rep. 807, 1881.

Pitts v. Hall, 2 Blatch. 229, 1851; Blandy v. Griffith, 3 Fisher, 616, 1869.

cause, though the defendant might be able to make oath that he is a person skilled in the art to which the invention covered by the patent appertains, and that the description contained in that patent is not full, clear, concise, and exact; enough to enable him to make and use the same, he could not make oath that the same thing is true of other persons, skilled in that art. Even if a defendant were to make the latter oath, the complainant, by replying, could confine the issues of the case to that point, and could probably win that issue by means of the evidence of other skilled persons. An answer is, therefore, the proper pleading for this defence also.

§ 608. Nor can the thirteenth defence be set up in a plea, because it depends on the construction of the claims of the letters patent, and not upon any matter of fact to be sworn to in a plea or proved in a deposition. But this defence can be made by a demurrer, where profert has been made of the letters patent, or they have otherwise been made a part of the bill. An answer is also a proper pleading in which to interpose this defence.

§ 609. The fourteenth defence also generally requires to be set up in an answer.' A plea is not ordinarily suitable for the purpose, because this defence depends primarily upon the necessity for a disclaimer, and because that necessity depends upon the claim being obnoxious to one or more of the first three defences, and because the third defence always, and the first and second generally, require to be interposed in an answer, if interposed at all. Even if technically proper in any case, a plea would be at least an injudicious pleading to adopt for this defence, because it would be likely to be met with proof of some good excuse for the delay to disclaim.

$610. The fifteenth defence can never be interposed in a plea, because it primarily depends either upon the original patent not being inoperative or invalid by reason of a defective or insufficient specification, or upon its not being

'Burden v. Corning, 2 Fisher, 498, 1864.

invalid in part, for want of novelty.' Where it primarily depends upon the first of these matters, it depends either upon the construction of the original letters patent, or upon proof that any person skilled in the art to which the invention belongs, could from the original specification make and use the same; and where it depends upon the second of these matters, it depends upon proof that everything claimed in the original letters patent was novel. None of these matters can ordinarily be put into a plea. Statements of the true construction of a patent cannot be, because they are statements of law. Statements that any person skilled in the art can make and use a particular invention, from a particular specification, are hardly proper in pleas, because a defendant ought seldom to attempt to swear what other persons can or cannot do. And statements that everything claimed in the patent of another was novel with him, should never go into a plea, because a defendant can never know that none of those things were previously known or used. Nor can this defence be raised by a demurrer, unless the original letters patent are incorporated in the bill for infringement of its reissue; and not even then can it be so raised unless the question is solely one of construction of the original letters patent. An answer is always the most suitable place in which to interpose this defence, and generally it is the only possible pleading for the purpose.

§ 611. The sixteenth defence depends partly on the comparative construction of the original and reissue letters patent, and partly upon evidence that the delay in applying for the reissue was unreasonable. Where both the original and the reissue are proffered or incorporated in the bill, this defence may be made by demurrer, because the court then has every necessary means of making the comparative construction,' and because long delay will be held to be unreasonable, unless it is excused in the bill. Where the bill omits to set out the original patent, this defence must be

' Revised Statutes, Section 4916.

2 Powder Co. v. Powder Works, 98 U. S. 126, 1878.

.

made in an answer, for such mixed questions of law and fact are wholly unsuitable to a plea.'

During the time which has passed since this defence was made known to the bar,' it has several times been successfully raised on the hearing, without any pleading to support it. But lack of pleading appears to have been suggested in but one of the reported cases, and in that case the court decided that there was no such lack. To hold that there is no necessity for any answer to support this defence, would seem to be contrary to the fundamental rules of equity pleading.'

§ 612. The seventeenth defence depends upon the comparative construction of the original and reissue letters patent. It may be made on demurrer, where both those documents are proffered or otherwise incorporated in the bill. If the original letters patent are not so incorporated, this defence may be made in an answer; but it cannot be made in a plea; because the question involved is one of construction of documents, and not a question of fact to be sworn to by a defendant, or to be decided upon the replication of the complainant and the evidence of experts.

§ 613. The eighteenth defence may be made by a demurrer, where the bill shows who applied for the extension, and shows that he was neither the inventor, nor his administrator nor executor. Where the bill does not contain full statements on both these points, this defence should be made in an answer; for the defendant cannot know of his own knowledge that the proper person did not apply for the extension, and because that fact could not be proved by producing a copy from the records of the Patent Office, of an application made by an improper person, even if Patent Office records could be pleaded in equity without an oath to verify the plea.

§ 614. The nineteenth defence may be set up in a plea, if

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

2 Miller v. Brass Co. 104 U. S.

350, 1882.

3 Rubber Co. v. Goodyear, 9 Wallace, 793, 1869.

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