· 4:71 seems to me ineumbent on: the oWrferof lJo,patent, when a il taken so long after the date of the orig4J.al, to show that there walsome mistake or inadvertence in original issue, which made a le-. issue necessary to cover all patentee had invented; but th& most that can be said in support of this reissue is that, perhaps, if Davenclaims when he took hisorigport had a.sked for these inal patent, they might have been allowed at that time, but this does not show that after waiting 18 yea.rs, and till others have used the combination, he can now be. allowed by a reissue to take all the combination claims which might been conceded to him at the issue of his original, and thereby prevent pthers from reaping' the 1;lenefit of improvements they haveJ;l:lade in his mechanism, and whioh he negleoted to claim in apt time to prevent others from using what he had abandoned. I therefore find-Firat, that Mfenda.nts do not infringe the complainant's patent as charged; secona, that the is void by reapo.'" son of the expansion of the claiJIls beyond those of the ent. The bill is therefore dismissed fOfwant of equity.
IIUBBELL (Oif'cu"
and others ".' DB LAND. November 6, 1882.)
u_t, E.D.
P.lTENTS FOR INvEN'l'IOl!fs-PLEADING-BnCIAL
PLE4.
The validity of the reissued patents questioned, on'the ground that it l\ppean by comparison'of the original and reissue that the latter patent was for one thing and the former for another; that the claim in.the reissue WBIl unla wfully after expanded 80 as to embrace improvements covered by other patents the issuance of the plaintifrs' original patent, and before the reissue, and that therefore the reissue is void :Hetd, matter of defense that may be prasented by specJial plea.
In Equity. On motion to strike plea
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472
FEDERAL REPORTER.
ments of Andrews and Ogden, and the bill in this case is filed to reo strain the infringement of said reissue letters patent, and for an account. To this bill the defendant has interposed a plea which avers that the original patent, issued to Andrews and Ogden, was not for the same invention as that described in the reissue; that the original patent "was fora mechanical device, or a combination of certain materials used in the manufacbure of cheese, while the reissue, upon which this suit is brought, does not claim to be for said combination, but is for moulding the cheese within the bandage cloth, in contradistinction to applying a bandage after the formation of the cheese, substantially as and for the purposes set forth." Tho original and reissue patents, .with their specifications and claims, are set out in hmc verba in the plea.. It is also averred in the plea that on the twenty-first day of March, 1871, a patent numbered 112,977 was issued to William Sternberg, and that on tUe ninth day of January, 1872, a patent numbered 122,520 was issued to Milton BO'Fraser; both of which patents were for an improvement in cheese hoops, and are also set out in full in the plea. The plea concludes with the averment that the original patent to Andrews and Ogden "was limited to the particular combination of mechanical devices shown, and composing the apparatus described in said specifications; that said reissue patent abandons the claim in the original patent, and claims the process of moulding the cheese within the bandage, thereby expanding the claim so as to cover all subsequent improvements, and monopolizes a process not covered by the original patent, and which was in general use; therefore this defendant doth plead, in bar to the said complainant's bill, that said reissue patent No. 6,117 was issued in violation of the statute, and is not for the fame invention as the original patent, and if said process is· disclosed in the employment of the devices described in the original patent and not claimed therein, the same process being described and made use of by other inventors in subsequent patents before said reissue, said reissue is void." A motion is now made by counsel for the plaintiffs that the plea be stricken from the files as improperly interposed, or that it be ordered to stand as an answer to the bill. The ground of the motion is that a defense which impeaches the validity of a patent cannot be specially pleaded, but must be set up in the form of an answer. Auwhich it seems necessary thorities are 'cited in support of the to specially notice. In Birdsall v. Perego, 5 Blatchf. 251, the patentee of a machine granted an exclusive right under his patent to make
HUBBELL V. DE LAND.
41'3
and seli machines in a given territory, for a specified fee to be paid to him for each machine made and sold, and brought a suit against his grantee to recover fees due and unpaid for machines made and sold. The defendant pleaded specially-First, that the plaIntiff had infringed such exclusive right; and, secondly, that the plaintiff was not the-first an,d original inventor of what his patent claimed. The pIcas were demurred to, and it was held that they were. bad on demurrer. The ground taken in the decision was that the plea that the plaintiff had infringed the defendant's exclusive right was not a defense to an action for the recovery of a sum agreed to be paid as a Heense fee for machines which the plea admitted were made and sold by the defendant; and, further, tbat the defense set up in this plea was in effect recoupment, and that recoupment is a matter never pleaded in bar; citing Nichols v. Dusenbury, 2 N. Y. 283, 286. As to the plea that the plaintiff was not the first inventor of what his patent claimed, it was held that, as the plea alleged 110 fraud on the part of the plaintiff, and no express warranty, and did not allege that the defendant had been disturbed in the enjoyment of the exclusive right transferred to him by any paramount title, and did not aver even the existence of any such paramount title, nor a retransferof his alleged right, it constituted no defense to an action to recover license fees due for machines admitted to have been actually sold by the defendant. The statement of the case shows that it has no application to the question presented in the case at bar, which is one of practice, involving the right of the defendant to file the plea in question. In Wilder v, Gayler, 1 Blatch£. 597, it was held that where the defendant in a patent suit pleaded the general issue and special pleas, and also gave a notice of. special matter under section 15 of the patent act of July 4, 1836, (5 St. at Large, 123,) and the matters set forth in the special pleas were those of which notice might have been given under said section 15, the special pleas should be stricken out', The pleas are not set forth in the report of the case, but the general ground of the decision seems to have been that a defendant in a patent suit could not plead specially as a defense matters which the act of 1836 required him to specify in a notice in connection with a plea of the general issue. But this ruling appears to have been in conflict with the rule laid down by the supreme court in Evans v. Eaton, 3 Wheat.· 454, where it was held, as stated by BETTS, J., in Day v. New Eng. Car-spring Co. 3 Blatchf. 181, "that in actions at law for the infringement of patent rights a defendant is not limited in his defense .to the plea of the general issue allowed by the statute, even if his defense
rests upon matters whiohthe statute authorizes to given in evidence under the general issue, but that hEl may, at his option, plead those particulars specially." In Evans v. Eaton, supra, it was said by the court: , '
"It has been already observed that the notice is substituted for a special plea; it is further to he observed that it is Ii substitute to which the defendant is not obliged to resort. The notice is 'to be given only when itis intended to offer the special matter in 6videnceon'the general, issue. The defendant is not obliged to pursue this course. JIe may still plead specially, and then the pJea is the only notice which the plaintiff ca,n claim."
.It, then, in aotions at law the' defendant could plead speoially the matterS: which, under seotion 15 of the aot of 1836, he might give in evidence under a plea of the general issue and notice, it would seem to follow that the same coarse of prooedure can be taken in such actions'under section 4920 of the'present Revised Statutes. In Day v. New Eng. Oar-spring Co. supra, which was an action on the oase for the infringement of It patent brought by the assignee of the patentee,the 'defendant, with the general issue, without any notice of speoial maHer, pleaded speoial pleas, setting up a license under the patentee paramount to the right of the plaintiff; and it ,was held that the special pleas were well pleaded, and could not be stricken out on motion. As will be observed, all the cases' referred to were actions at law; but Sharp v. Reissner, 20 O. G.116t, was an action in equity, and , it was held in that case by Judge BLATOHFORD that a special plea to the bill averring that the· defendants bad not made, constructed, used, or vended to others to be used, the invention described in the patent, and denying infringement of the patent in any manner whatever, was not allowable, and that the issue of inf:ringement ought to be tried under an answer and not under a plea. This authority is much relied on in support of the present motion, but I am of the opinion that it is inapplicable. The special plea in that case was little more thau a mere denial of infringement. It brought forward no new matter displacing the equity of the bill. Argument can hardly be .needed to show that the question of the infringement of a patent is not the proper subject of a special plea. As Judge BLATCHFORD says .in his opinion, the question of the infringement of a patent depends very much on the construction of its claims, and that depends very much on prior patents on the same subject, and if such prior patents a.re to be put in, they ought to be set up in an answer and be put in once for all. And in that case it appeared by affidavit of the defend.
476
ants that jf their plea 'Should be overruled,they :would desire by scppe of the patanswer to put Prior patents to ent, so as to render infringement impossible; .thus proposing to litigate the question of inf:t:ingement first by plea, and, failing in that, then 1)y Undoubtedly this ease was well decided, but it does not, in my opinion,rulethe case at bar. Here it is proposed, under a special plea, to litigate the single .question of the validity of the reissue patent; its validity being questioned on the ground that it appears by comparison of the original and reissue that the latter patent was for one thing and the former for another; that the claim in the reissue was unlawfully expanded so as to embrace improvements covered by other patents issued after the issuance on he plaintiffs' original patent, and before the reissue, and therefore that the reissue is void. Why is not this a matter of, defense that may be presented by special plea? It was, argued that if the plea shall be overruled, the defendant will be '9.t liberty, under rules 34 and 89 in equity, to again make the same defense byanswer. I do not so construe those rules. The question at issue now will then it have been adjudicated. Upon overruling the plea, the is true, would be assigned to answer the bill; but it does not follow that the matters litigated under the plea could be renewed in a defense made by answer. If the plea shall be sustained, that will be the end of the suit; and "whatever shows that there is no right which <lan be made the subject of suit, or whatever is a complete and perpetual bar to the right sued for, may constitute the subject of a plea. 'in bar; or, as it is expressed in a work on pleadings at law, whatever destroys the plaintiff's suit, and disables him from recovery, may be pleaded in bar." 2 Daniell, Ch. Pro 754. In Bailey v. Leroy, 2 Edw. Ch. 514, it was held that when a bill sets forth a contract in writing, alleged to be signed by the defendant {)r his authorized agent, a plea of the statute, averring that there is no writing subscribed by the party or his authorized agent, is inadmissible, because it is merely denying what is alleged in the bill, and brings forward no new fact in opposition, which is the proper office {)f a plea. . If a denial merely be intended, it must be by way of answer. This was the state of the case in Sha,rp v. Reissner, 8upra. There the plea merely negatived certain allegations of the bill. It brought forward no new fact in opposition; or, in the language of the court in Black v. Black, 15 Ga. 448, it presented no new matter displacing the equity of the bill.'
4:76
FEDEBAr..·BEPOBTEB.
In the case at bar, the plea brings forward new matter in opposition to the equity of the bill-matter which, if true, destroys the plaintiffs' suit and disables them from recovery. The motion to strike the plea from the files is denied, and the plaintiffs have leave to set down the plea for argument or to take issue on the plea, as they may elect, within 30 days.
THE INDIA.
(District Oourt, 8. D. New York. 1.
November 4, 1882.)
VEflBEL-CHARTER-PARTy-LIEN FOR SUPPLIES OF COAL.
By the terms of a charter-party the charterer was to provide and pay for all the coal required. The master and l·rew were to be appointed and paid by the owners, but the master was to be "nnder the orders and directions" of the charterers" as regards employments, agency, and other arrangements," Held, that /llien attached to the vessel for coal supplied at a foreign port on the order of aie consignees of the ship appointed by the charterer. 2. SAME-CHARTERER AS SPECfAL OWNER.
Where the chllrte:'e; s of a vessel were by the charter constituted owners of the ship pro vice, the vessel in their possession and not in possesffion of the general owner, the master subject to l1wir directions, the vessel is bonnd for coals furnished upon her credit in a foreign port upon the order of the agent of the .special OWller. 3. FOREIGN SHIP":-'LIEN FOR SUPPLIES. It is not essential to the creation of
upon a foreign ship for supplies that the supplies be ordered by the general owner o!' his agent. Wh'n the general owner of a ship intrusts her entire possession and control to another as her special owner, and when such necessaries are so supplied upon the credit of the ship, the ship is bound, although no.personalliability is incurred by the general owner.
In Admiralty. Beebe, Wikox et Hobbs, for libelants. Ullo et Davison, for claimants.
D. J. This is an action to enforce a. lien upon the German steamship India, for the price of ,a quantity of coal delivered on board that vessel at PhilaJelphia in June last. The nndisputed facts are as follows: BENEDICT,
The steamer India is a foreign vessel owned in Hamburg. In June, ll:lS2, being then in the port of New York, she was chartered by the firm of Huser, Wat!lon & Co., of New York, for "all lawful service and employment uetween