BURDELL V. COMSTOOK.

of their tobacco with adhesivesuustances by sweetening .the:mwith syrup, and intermixing with the leaves what is known as plug-scrap, which is highly· charged with adhesive material. Their product, upon examination, is found to contain a greater quantity of adhesive prepared accordmaterial than the complainant's product ing to the process of the patent. Whether the defendants have thus attempted a colorable evasion of the patented. process, ,or whether in good faith they have believed themselves justified in adopting their substituted treatment, is not material. They have used an equivalent for the gum arabic of sufficient adhesive properties to impart the flaky characteristic to the product, when dried·. This is infringement. The usual decree for an injunction and accounting is ordered.

BURDELL

'V. COMSTOOK.-

(Oircuil Oourt, S. D. Ohio, W. D. March 11,1883.)
1.

DAMAGES FOR INFRINGEMENT OF PATENT-WHEN EQUITY HAS

The proper forum in which to sue for damages arising from infringement of a palent is a court of law, but chancery courts may take cognizance of snch cases if they inv:oJve some element of equitable jll;risdiction; and when such courts have once rightfully obtained jurisdiction they may proceed and decree full relief.
2, SAME-SUIT'BnOUGHT JUST BED'ORE ExPiRATION OF PATENT-FRAUD ON EQUITY

J URIflDICl'ION, Where, though a bill in equity, alleging infringement of.a patent and praying for an injunction and an accouni, was dIed only dve days before the expiration of the patent and no effort was made to obtain an: injunction, hela that the prayer for an injunction was a mere pretext, and that the court never aoquired jurisdiction of the Gottfried v. Moerlein, 14l!'ED, REP.l'l'O, distinguished.
A plain defect of jurisdiction may be insisted upon at the hearing.

3.

DEFECT OD'

In Equity.

.

IIoadly, Johnson & Colston, for complainant. Perry et Jenney, for respondent.

BAXTER, J. The prope,r forum in which to sue for 'damages arising is a court of law:' Root v. Railfrom an iJ;ifringement of way Co. 105 U. 8.,189. But chancery court8may . of such cases if they involve some element of equitable jurisdiction.
l!tHcported by J. C. Harper, Esq., of the Cincinnati bar.

396

nEPOBTEn.

Owners of pateats are entitled, as well to protection against future invasions of their rights, as to compensation for past injuries. Hence, parties desiring such relief must, from the necessities of their cases, invoke the aid of courts authorized to issue injunctions, and when jurisdiction is once rightfully obtained, the court may proceed and decree full relief. This principle was applied in the case of Gottfried v. Moerlein, 14 FED. REP. 110. The bill in that case was filed 16 months before the expiration of the patent sued on. Therein the complainant prayed for an injunction and an account. The prayer for an injunction, based on a statement of facts prima facie entitling the complainant to that relief, gave equitable jurisdiction. The defendant acquiesced in this view of the case. He took no exception to the jurisdiction, but answered and proceeded to take proof and prepare the case for trial. The patent expired in May, 1881, and the case was heard in November, 1882. Most of the evidence was taken after the patent had expired. When the case was called for hearing, the defendant moveq to dismiss it for the want of jurisdiction. But the court thought that the jurisdiction acquired in the beginning was not ousted by the subsequent expiration of the patent, and disallowed the motion. I am satisfied with the decision and adhere to it. But this is a very different case. The bill herein was filed in November, 1864, just five days before the expiration of the patent sued on. It also prayed for an injunction and an account. But it is manifest that the prayer for an injunction was a mere pretext-"a device to transfer a plain jurisdiction to award damages from a court to which it properly belongs, to this court." Betts v. Gallais, L. R. 10 Eq. 392. The injunction prayed for was neither expected nor desired. No court would, under the facts stated, have granted it. If issued, it could only have operated for the few days intervening between the filing of the bill and the expiration of the patent. We have no hesitation in declaring that, upon these facts, 'Mver had jurisdiction of the case. The defendaut, taking this this view of the law, promptly demurred, alleging a want of jurisdiction. His demurrer was overruled. But this decision is not con· clusive of the question. Objections to the jurisdiction are usually taken in the first instance, but a plain defect of jurisdiction may be lhsisted upon at the hearing.· Thompson ·v. Railroad Go. 6 Wall. 131. 'Out opinion is that this court is without jurisdiction, and' complainbe dismissed, with costs.

BURDELL V. DENIG.

397

BURDELL

v.

DENIG

and others.-

'(Oircuit Court. 8. D. Ohio, W. D. March Ii. 1883.)
1.

REPLICATION-NEW CAUSE 01' 4,OTloN

A replication cannot go behind the-case made by the declaration and add another and different cause of action.
2. PATENTS-AcTION POR DAMAGES FOR lNl'RlNGEMENT-lNSUFPlOIENT REPLIOATION TO PLEA 011' AN ACCORD AND SATISFA.CTION.

In an action for damages for infringement of a patent, plaintiffs averred the construction and nse by defendants of certain infringing machines from January 23, 1861, when plaintiffs acquired their joint title to the patent, until the commencement of the action, October 6, 1861. Defendants pleaded an accord and satisfaction with an authorized agent of plaintiffs, to which plaintiffs replied that on March 13, 1860, (nearly a year before plaintiffs acquired their joint title to the patent,) the defendants purchased the infringing machines from persons unknown to and. with wh9IDpiaintiffshad no connection, and that defell-dants thereafter used said machines as alleged in the declaration. On demurrer such rcplicatio'n held to be bad. " ·

lIoadZy, Johnson tJ Oolston and Pugh tJ Pugh, for complainants. 'Perry tJ Jenney, for defendants.
'BAXTER, J. This suit was commenced on the seventh of October, 1861. At a trial thereof had several years since, plaintiffs recovered It Judgment for $125. This judgment was teversed by tbe supreme court and the cause remanded! to this court for a retrial·. Upon its by return the parties began to plelJ.d de novo. "The case, as plaintiffs' amended declaration, is a claim for damages alleged to have been sustained by the plaintiffs by reason of an infringement of a patent, described in the pleadings, in consequence, as is averred, of the construction and use of seven sewing-nlachines, by defendants, from the twenty-third of Janultry, which the plaintiffs acquired their first title to the invention alleged to have been infringed,-untilthe commenCement of this suit in the following October;-a period,.bf 8 months ,and 14, days. If the plaintiffs recover . and obtain a fair assessment of damages; tliey not l'ecoverenough to;pay more than lOper c,ent. of their attorney's fees for services in the prosecntionOf the suit. Nevertheless., ·they are American citizens, ,a to, and, judging from the record, thQre;is no j.ust· groupd to dou bt their desire to be heard. declaration.asfiled January ,7,1881·. The defendants pleaded thereto two special in

;,\'Reporled by J. C. Harper, Esq., of the Cincinnati bat.