ever, was never indispensable.2 It is often important for the plaintiff to thus meet a defense which he anticipates. For as special replications are not allowed, he may thus save the delay of an enforced amendment of his bill, in order to plead new matter as a reply to a defense in the answer. "If any persons, other than those named as defendants in the bill, shall appear to be necessary or proper parties thereto, the bill shall aver the reason why they are not made parties, by showing them to be without the jurisdiction of the court, or that they cannot be joined without ousting the jurisdiction of the court as to other parties." These averments should be included in this part of the bill. "Every bill brought by one or more stockholders in a corporation against the corporation and other parties, founded on rights which may properly be asserted by the corporation, must be verified by oath, and must contain an allegation that the plaintiff was a shareholder at the time of the transaction of which he complains; or that his share had devolved on him since by operation of law; and that the suit is not a collusive one to confer on a court of the United States jurisdiction of a case of which it would not otherwise have cognizance. It must also set forth with particularity the efforts of the plaintiff to secure such action as he desires on the part of the managing directors or trustees, and, if necessary, of the shareholders, and the causes of his failure to obtain such action." 4 This rule does not apply to suits brought by the stockholders of a corporation after its dissolution; 5 nor to a suit to restrain corporate action to which the president of the corporation is made a party solely for purposes of discovery; nor to a case where it clearly appears that the corporation would certainly refuse to exercise the right upon which the suit is founded. But it has been said, that "it is not enough to say that it appears from the bill that the corporation would probably refuse relief. The rule is imperative that efforts should be made to obtain relief in that direction before such a suit as this shall be 2 Story's Eq. Pl. § 33; Langdell's Eq. Loan & Trust Co., 12 Fed. R. 752; Pl. § 55. 3 Rule 22. 4 Rule 94. See also Hawes v. Oakland, 104 U. S. 450; Huntington v. Palmer, 104 U. S. 482; Dodge v. Woolsey, 18 How. 831; Greenwood v. Freight Co., 105 U. S. 13, 16; Detroit v. Dean, 106 U. S. 537, 542; County of Tazewell v. Farmers' VOL. I.-11 Dimpfell v. Ohio & Miss. R. R. Co., 110 U. S. 209; Quincy v. Steel, 120 U. Si, 241; §§ 12, 87, 207. 5 Lafayette Co. v. Neely, 21 Fed. R. 788. 6 Leo v. Union Pacific Ry. Co., 17 Fed. R. 273. 7 County of Tazewell v. Farmers' Loan & Trust Co., 12 Fed. R. 752. commenced." It has been said that "the bill may show that there was no necessity for efforts to be made with the shareholders, but not so as to the directors."9 An allegation" that this suit is brought in good faith, and for the collection of, and to compel the collection of, what your orator believes to be a meritorious claim," is not equivalent to the allegation "that the suit is not a collusive one, to confer on a court of the United States jurisdiction of a case of which it would not otherwise have cognizance." 10 In cases where the jurisdiction of the court depended upon the amount involved, it has been held at circuit that the bill should show that the value of the matter in dispute exceeds the jurisdictional amount. If a bill be filed to impeach a patent or other grant by the United States and be not brought by the Attorney-General, or some other officer authorized by statute to do so, it must contain an allegation that the Attorney-General has "given such order for its institution as will make him officially responsible for it, and show his control over the cause." 12 The signature of the Attorney-General subscribed to the bill is sufficient to show his authority for filing it.13 $77. Bills to enjoin the Infringement of Patents. A bill to restrain the infringement of a patent must contain an allegation that the complainant or the person through whom he claims was the inventor or discoverer of the thing or process patented.1 It must also contain a substantial description of the patent or else set out the patent itself, or have the same annexed as an exhibit.2 The history of the invention, and a description of patents issued to the complainant before that sued upon, are proper averments.3 It is also proper to describe previous litigation over the same or similar patents. It has been held to be a sufficient allegation of title and infringement for the plaintiff to allege: that he 8 McCrary, J., orally in Foote v. Cunard Mining Co., 17 Fed. R. 46, 48. 9 Squair v. Lookout Mountain Co., 42 Fed. R. 729, 731. 10 Quincy v. Steel, 120 U.S. 241, 246, 247. 11 United States v. Pratt Coal & Coke Co., 18 Fed. R. 708; Murphy v. East Portland, 42 Fed. R. 308; Lehigh Zinc & Iron Co. v. N. J. Zinc & Iron Co., 43 Fed. R. 545, 546; Oleson v. Northern R. Co., 43 Fed. R. 112. 12 Mr. Justice Miller in United States v. Throckmorton, 98 U. S. 61, 71. "was the true, original, and first inventor of a certain new and useful improved application of steam power to the capstan of vessels, not known or used before;" "that a description or specification of the aforesaid improvement was given in his schedule to the aforesaid letters-patent annexed, accompanied by certain drawings referred to in said last mentioned schedule, and forming parts of said letters-patent, the said letters-patent and the said specification thereto annexed (which, or an exemplified copy of which, your orators will produce, as your honors may direct) were duly recorded in the patent office;" and "that the defendant is now constructing, using, and selling steam-power capstans for vessels in some parts thereof substantially the same in construction and operation as in the said letters-patent mentioned." A bill for an injunction and an accounting was held to be good on demurrer, although it did not allege that the complainant was engaged in using the invention patented, or that it was a source of profit to him, when it alleged that the defendant had made profits by the use of the invention. When a bill alleged "that the patentee was the original, first, and sole inventor of a certain new and useful improvement in the construction of cable railways, fully described in the specification of the said letters-patents, which had not been patented to himself or to others, with his knowledge or consent, in any country, and had not, to his or the orator's knowledge, been in public use or on sale in the United States for more than two years prior to his invention and discovery thereof, and application for letters-patent of the United States therefor," it was held sufficient. A bill which alleged that a complainant had obtained a certain patent, that the defendant had obtained patents of a later date which interfered with complainant's rights, and that defendant is making and selling machines under his patents, and has in other ways disturbed complainant in the use and enjoyment of the rights granted by his patent, was held sufficiently to charge interference.8 The allegation "as by the said letters-patent and specification, all in due form of law ready in court to be produced, will fully appear," is equivalent to profert in the most formal and ample terms. It 5 M'Millin v. St. Louis & Mississippi Valley Transportation Co., 18 Fed. R. 260, 261. See M'Coy v. Nelson, 121 U. S. 484. 6 Wirt v. Hicks, 46 Fed. R. 71. 7 American Cable Ry. Co. v. Mayor, &c. of the City of N. Y., 43 Fed. R. 60. 8 Stonemetz P. M. Co. v. Brown F. M. Co., 46 Fed. R. 72. tenders the entire grant to the inspection of the court and party.9 When profert of the patent is made in the bill, only its title need be set forth.10 It was held at circuit that in a bill founded upon a reissued patent it is not necessary to cover specifically the ground upon which the original patent was surrendered; 11 but if such a bill shows a delay of more than two years in obtaining the reissue, it should set up an excuse for the delay.12 Upon a demurrer for both uncertainty and want of equity to a bill founded upon a reissued patent, when the only allegations concerning the reissue were" that said Charles T. Day, having for good and lawful cause and with the consent and approbation of your orator, surrendered said letters-patent to the commissioner of patents, and having made due application therefor, and having in all things complied with the acts of Congress in such case made and provided, did, on the eighteenth of February, 1879, obtain new letters-patent, being reissued letters-patent, for the same invention for the residue of said term, and which were marked 'reissue, No. 8,590,' and were issued in due form of law to your orator, as assignee, under the seal of the patent office of the United States, signed by the Secretary of the Interior and countersigned by the Commissioner of Patents, and bearing date the day and year aforesaid, as by the last mentioned reissued letters-patent, ready here in court to be produced, will appear; " it was held that the bill was not objectionable.13 The court then said: "It is not necessary to aver, specifically, the ground on which the original patent was surrendered. The reissue of letters-patent by the Commissioner is prima facie evidence that such reissue is founded on sufficient cause, and is in accordance with law. It is also presumed until the contrary is shown that the Commissioner acted within his statutory authority." 14 A bill founded upon a reissued patent, which shows a delay of more than two years in the application for the reissue, must allege sufficient excuse for the delay.15 So must a bill to compel the issue of a patent which shows a delay of two years in prosecuting the application in the Patent Office.16 35. 9 Wilder v. McCormick, 2 Blatchf. 31, For a precedent of a bill for the infringement of an original patent, see McCoy v. Nelson, 121 U. S. 484. 10 M'Millin v. St. Louis & Mississippi Valley Transportation Co., 18 Fed. R. 260. 11 Spaeth v. Barney, 22 Fed. R. 828. 12 Wollensak v. Reiher, 115 U. S. 96. 18 Spaeth v. Barney, 22 Fed. R. 828. 14 Colt, J., in Spaeth v. Barney, 22 Fed. R. 828, 829. 15 Wollensak v. Reiher, 115 U. S. 96. 16 Gandy v. Marble, 122 U. S. 432. It has been held that a simple averment that the defendant has infringed the patents above described is sufficient.17 A bill to enjoin the infringement of a patent by the use of a machine need not state what articles the defendant has made by the use of the machine.18 An allegation that the defendant "since the date of said patent" had infringed, was held upon demurrer not to signify "ever since," but "after or subsequently to" that date.19 A bill to enjoin the infringement of several distinct patents has been held multifarious; 20 but if all the patents are infringed in the use of or manufacture of a single machine and it is so alleged, the bill is good.21 It has been said that the complainant "should aver that said inventions are capable of conjoint as well as separate use, and are so used by the defendants." 22 A charge of infringement, and a prayer for an injunction and accounting accordingly, may be joined with a charge of interference and a prayer for relief, under § 4918 of the Revised Statutes.23 A bill seeking an injunction with damages against the infringement of a patent, and an injunction with damages against the publication of libellous circulars affecting plaintiff's patent, has been held multifarious.24 Persons who are acting in concert as employees of the same corporation in the infringement of a patent may be joined as defendants to the same bill.25 An objection that defendants were improperly joined should be raised by demurrer when it appears on the face of the bill.26 $78. General Rules of Equity Pleading. Otherwise, the rules regulating the framing of a bill and, with the exceptions subsequently given, other pleadings in equity are substantially the 17 American Bell Tel. Co. v. Southern Tel. Co., 34 Fed. R. 803. See also McMillin v. St. Louis & Mississippi Valley Transportation Co., 18 Fed. R. 260; McCoy v. Nelson, 121 U. S. 484; Cleveland F. & B. Co. v. U. S. Rolling Stock Co., 41 Fed. R. 476. 18 Fischer v. Hayes, 6 Fed. R. 76, 78. 19 Brush Electric Co. v. Ball Electric Light Co., 43 Fed. R. 899. 20 Hayes v. Dayton, 8 Fed. R. 702; Shickle v. South St. Louis Foundry Co., 22 Fed. R. 105. 21 Nourse v. Allen, 4 Blatchf. C. C. 376; Perry v. Corning, 7 Blatchf. C. C. 195; Case v. Redfield, 4 McLean, 526; Gamewell Fire Alarm Telegraph Co. v. City of Chillicothe, 7 Fed. R. 351; Nellis v. Mc- 22 Gamewell Fire Alarm Telegraph Co. v. City of Chillicothe, 7 Fed. R. 351; Nellis v. McLanahan, 6 Fisher's Pat. Cas. 286. 23 Leach v. Chandler, 18 Fed. R. 262; Holliday v. Pickhardt, 29 Fed. R. 853; Swift v. Jenks, 29 Fed. R. 642; American Roll Paper Co. v. Knopp, 44 Fed. R. 609, 612; Stonemetz P. M. Co. v. Brown F. M. Co., 46 Fed. R. 72. 24 Fougeres v. Murbarger, 44 Fed. R. 292. See § 74. 25 Poppenhusen v. Falke, 4 Blatchf. 493. 26 Putnam v. Hollander, 6 Fed. R. 882. See §§ 75, 110. |