notice of the names and residences of the inventors and of those who have the prior knowledge of the thing patented, not the names of the witnesses. 10 Notice of the time when the person named possessed a knowledge or use of the invention is not required." The omission of the place of the use makes the notice fatally defective." The question whether a defendant has an interest in the patent which is the foundation of the bill, and whether he has a license to use such patent, cannot be considered unless specifically raised by plea or answer. 13 § 146. Admissions and denials independent of discovery.According to Professor Langdell, "If the defendant has no affirmative defense, the answer need contain nothing but discovery, unless the defendant proposes to offer a line of evidence in disproof of the bill which may take the plaintiff by surprise; in which case it will be prudent to indicate the nature of such evidence in the answer. This should be done also whenever it is at all doubtful whether the evidence establishes an affirmative defense or is in denial of the bill." Although the weight of authority is in support of the rule that a failure to deny an allegation in the bill does not operate as an admission of its truth, provided some answer is made, it is more prudent and is customary, even when an answer under oath is waived, for the defendant to deny or admit every allegation in the bill; and out of abundant caution, a general traverse deny- · ing the unlawful combination charged in the bill, and all other matters therein contained, is still often inserted after the specific denials. The statement that the respondent believes an Wall. 583, 609; Webb v. Powers, 2 W. & M. 497, 510; Myers v. Busby, 32 Fed. R. 770. 10 Woodbury P. Mach. Co. v. Keith, 101 U. S. 479; Roemer v. Simon, 95 U. S. 214. 11 Phillips v. Page, 24 How. 164. 12 Schenck v. Diamond Match Co. (C. C. A.), 77 Fed. R. 208; s. c., 71 Fed. R. 521. See Story's Eq. Pl., § 870. When defendants avoid answering specific interrogatories concerning a charged infringement, but merely deny the 13 Puetz v. Bransford, 31 Fed. R. use of any machinery "in violation 458. § 146. Langdell's Eq. PL., § 79. 2 Young v. Grundy, 6 Cranch, 51; Brown v. Pierce, 7 Wall. 205, 211; Brooks v. Byam, 1 Story, 296, 302; Rule 61. But see Commercial M. M. Ins. Co. v. Union M. Ins. Co., 19 How. 318, 323; Agawam Co. v. Jordan, 7 and infringement of any rights of the plaintiff, or that they are using, or have made, or sold, or used any machines not protected or covered by the proviso in the act of Congress," it seems that they thereby presumptively admit infringement. Agawam Co. v. Jordan, 7 Wall. 583, allegation to be true is equivalent to an admission; but the statement that he has no knowledge upon the subject seems to be equivalent to a denial," although, if full discovery be required, it is subject to exception for insufficiency. The denial of a conclusion of law is of no effect. There is no need of a denial of the common confederacy clause unless accompanied by special charges of combination.8 § 147. Impertinence and scandal.— An answer should contain no impertinence or scandal.' What constitute scandal and impertinence has been explained in the chapter on Bills. Usually nothing is considered scandalous which is relevant or responsive to the allegations of the bill. But in an English case brought by a clergyman, where the defendant included in a schedule of accounts a charge for money paid by him for an order of filiation of a bastard made upon the plaintiff, the court held the item, although relevant, a proper subject of exception, because the mode of bringing it forward was intended to drive 609. A denial of two allegations con- patent which is valid." See Miller, J., in Jones v. Morehead, 1 Wall. 155, 165. But compare Troy I. & N. Factory v. Corning, 6 Blatchf. 328, 336, 337. An admission that a deed bears 5 Brown v. Pierce, 7 Wall. 205, 212; a certain date does not estop the reBrooks v. Byam, 1 Story, 296. spondent from showing that it was 6 Kittredge v. Claremont Bank, 1 fraudulently antedated. Holbrook W. & M. 244. v. Worcester Bank, 2 Curt. 244. 7 Union M. Ins. Co. v. Commercial M. M. Ins. Co., 2 Curt. 524; s. c. on appeal, as Commercial M. M. Ins. Co. v. Union M. Ins. Co., 19 How. 318, 319. Thus, when the bill alleged that the defendant executed and delivered a deed, a denial by the defendant of its delivery, accompanied by an admission that he made the deed and placed it upon record, is equivalent to an admission of its delivery. Adams v. Adams, 21 Wall. 185. An admission in an answer that the defendant had made locks of the kind described in the patent sued upon, "is satisfied by assuming that the smallest number of locks were made consistent with the use of that word in the plural, and with the use by the defendants of any part of the 8 Story's Eq. Pl., §§ 30 with note, and 856; Rule 32. § 147. Story's Eq. Pl., §§ 861-863; Langdon v. Goddard, 3 Story, 13. 2 See § 68, supra. 3 Peck v. Peck, Mosely, 45; Woods v. Morrell, 1 J. Ch. (N. Y.) 103, 106; Fisher v. Owen, L. R. 8 Ch. D. 645, 653; Story's Eq. Pl., § 862. An allegation that a previous decree was made "without a full reading of the proofs in the cause, or a careful consideration of the briefs of the counsel filed therein," and not "after full consideration," is not scandalous; for it contains no imputation upon the court. Miller v. Buchanan, 5 Fed. R. 366. Allegations to meet charges of bad faith made in the bill were held not scandalous. Mercantile Tr. Co. v. the plaintiff out of his parish. It may be doubted whether so much respect for the cloth would be shown by an American court. Exceptions for impertinence are only allowed when it is apparent that the matter excepted to is not material or relevant, or is stated with needless prolixity. If it may be material, the exception will not be allowed, as that would leave the defendant without remedy, but the allegations excepted to will be allowed to remain in the answer, and the effect thereof, if found to be true, determined on the final hearing. It has been said to be permissible; and it is customary to plead in answers in equity matters of law as well as matters of fact which constitute a defense. It has been held that a short sentence inserted out of abundant caution will not be expunged as impertinent. Neither is new matter not responsive to the bill setting up an insufficient defense the proper subject of an exception for impertinence, although such matter has been expunged by motion. A demurrer to an answer is not permitted.10 Exceptions to answers for scandal and impertinence are taken and disposed of in substantially the same manner as exceptions to bills for the same reasons." Exceptions for impertinence should be filed and disposed of before exceptions for insufficiency are filed.12 6 § 148. Discovery.-Discovery, or answer under oath, which was formerly one of the principal grounds of equitable juris Mo., K. & T. Ry. Co., 84 Fed. R. allegation in an answer that plaintiff 379. brought this suit in a State distant from that of the defendants' residence for the purpose of harassing them and involving them in large 4 Atty. Gen. v. Hewit, in Chanc., July, 1801; cited in Cooper's Eq. Pl. 319; Story's Eq. PL., § 862. Deady, J., Chapman v. School expense was held to be impertinent. Dist. No. 1, Deady, 108, 110. 6 Farmers' L. & T. Co. v. N. P. R. Co., 76 Fed. R. 15. But see Florida Mtge. & Inv. Co. v. Finlayson, 74 Fed. R. 671. 7 Desplaces v. Goris, 1 Edw. Ch. (N. Y.) 350. 8 Adams v. Bridgewater I. Co., 6 Fed. R. 179; Bower-Barff R. I. Co. v. Wells R. I. Co., 43 Fed. R. 391. But see Ford v. Douglas, 5 How. 143, 165; Harrison v. Perea, 168 U. S. 311; s. c. below, 7 N. M. 666. An Whittemore v. Patten, 84 Fed. R. 51. 11 See Equity Rules 26 and 27; Hood v. Inman, 4 J. Ch. (N. Y.) 437; Langdon v. Goddard, 3 Story, 13; supra, § 68. 12 Patriotic Bank v. Bank of Washington, 5 Cranch C. C. 602. diction, is now of little practical importance. For the statutes of the United States, as well as those of all of the individual members of the American Union with which the writer has any acquaintance, allow the full benefits of discovery to be obtained by the oral examination of any party or person otherwise interested in the cause on trial. Moreover, a recent amendment to the equity rules provides that, "if the complainant, in his bill, shall waive an answer under oath, or shall only require an answer under oath with regard to certain specified interrogatories, the answer of the defendant, though under oath, except such part thereof as shall be directly responsive to such interrogatories, shall not be evidence in his favor, unless the cause be set down for hearing on bill and answer only; but may nevertheless be used as an affidavit with the same effect as heretofore upon a motion to grant or dissolve an injunction, or on any other incidental motion in the cause; but this shall not prevent a defendant from becoming a witness in his own behalf under section 3 of the act of Congress of July 2, 1864."2 Consequently, an answer under oath is now usually waived by the complainant. When no such waiver is made, however, the old rule still prevails; and the sworn statement by the defendant in direct response to an allegation in the bill is deemed to be true, unless contradicted by two witnesses, or a single witness and corroborating circumstances. Irresponsive allegations are not evidence. Neither are allegations upon information and belief, nor allegations sworn to positively, concerning facts of which it is evident the respondent can have no personal knowledge.' The admissions of the defendant are binding upon him; and unless he can obtain leave to amend his answers by withdrawing § 148. 1 U. S. R. S., § 858. See infra, S$ 109, 281. 2 Amendment of December, 1871, to Equity Rule 41. The statute cited is now U. S. R. S., § 858. See Woodruff v. Dubuque & S. C. R. Co., 30 Fed. R. 91. Seitz v. Mitchell, 94 U. S. 580, 582; Vigel v. Hopp, 104 U. S. 441; Slessinger v. Buckingham, 17 Fed. R. 454, 456. 5 Sargent v. Larned, 2 Curt. 340; Seitz v. Mitchell, 94 U. S. 580. 6 Berry v. Sawyer, 19 Fed. R. 286; 3 See Slessinger v. Buckingham, 17 Allen v. O'Donald, 28 Fed. R. 17; Fed. R. 454, 456. 4 Clark's Ex'rs v. Van Riemsdyk, 9 Cranch, 153, 160; Union Bank of Georgetown v. Geary, 5 Pet. 99, 110; Earle v. Art L. Pub. Co., 95 Fed. R. 54. 7 Clark's Ex'rs v. Van Riemsdyk, 9 Cranch, 153, 161; Allen v. O'Donald, 28 Fed. R. 17. them, he cannot disprove them at the hearing. When discovery is required, the defendant must answer every allegation in the bill which is material to the plaintiff's case, and an answer admitting which would not expose him to a penalty, forfeiture or criminal prosecution, or expose a privileged communication. "It is not a sufficient foundation of exception that a fact charged in a bill is not answered, unless the fact is material and might contribute to support the equity of the plaintiff's case, and induce the court to give the relief sought by the bill." 10 The former practice required that if a defendant submitted to answer, he must in general answer fully; and that he could usually protect himself from a full discovery only by a plea or demurrer to the objectionable part of the bill." Now, however, the Equity Rules provide that "the rule that if a defendant submits to answer he shall answer fully to all the matters of the bill, shall no longer apply in cases where he might by plea protect himself from such answer and discovery. And the defendant shall be entitled in all cases by answer to insist upon all matters of defense (not being matters of abatement, or to the character of the parties, or matters of form) in bar of or to the merits of the bill, of which he may be entitled to avail himself by a plea in bar; and in such answer he shall not be compelled to answer any other matters than he would be compelled to answer and discover upon filing a plea in bar and an answer in support of such plea, touching the matters set forth in the bill, to avoid or repel the bar or defense. Thus, for example, a bona fide purchaser for a valuable consideration without notice, may set up that defense by way of answer instead of plea, and shall be entitled to the same protection, and shall not be compelled to make any further answer or discovery of his title than he would be in any answer in support of such plea." 12 "A defendant shall be at liberty, by answer, to decline answering any interrogatory, or part of an interrogatory, from answering which he might have protected himself 8 Gold & S. O. S. Co. v. U. S. Dis. O. Co., 6 Blatchf. 307, 310. See Troy I. & N. Factory v. Corning, 6 Blatchf. 328, 336. 9 Atwill v. Ferrett, 2 Blatchf. 39. 10 Taney, C. J., in Hardeman v. Harris, 7 How. 726. 11 Hare on Discovery, pp. 247, 296, 297; Story's Eq. Pl., §§ 605, 606, 609, 846; Mazarredo v. Maitland, 3 Madd. 66, 72; v. Harrison, 4 Madd. 252. 12 Rule 39. |