complainant's patent. The defenses must be pleaded with sufficient certainty; 12 although it seems that the same degree of certainty is not required in an answer as in a bill,18 or a plea.14 It has been said that "the respondent cannot set up as a defense that if complainant's patent be so construed as to cover the machine made and sold by him, then the machine embraced in said patent was known and used prior to the invention thereof by the patentee." 15 An averment that a patent "was obtained upon false and fraudulent representations by the plaintiffs, or some of them, made to the commissioner of patents, and is wholly void at law," is also too uncertain to be sufficient to constitute a defense.16 The general rule is that no affirmative defense can be proved unless it has been set up in the answer. In a suit to restrain the infringement of a patent, a license is an affirmative defense.18 It has been said that, if a defendant states in his answer certain facts as evidence of a particular case, which he represents to be the consequence of those facts, and upon which he rests his defense, he is not permitted afterwards to make use of the same facts, for the purpose of establishing a different defense from that to which, by his answer, he has drawn the plaintiff's attention.19 Thus it has been said that where fraud is set up in the answer "the party making the charge, if it is denied in a proper pleading, will be confined to that issue." 20

§ 145. Defenses peculiar to Patent Cases. The Revised Statutes provide that the defendant to a suit in equity for relief against an alleged infringement of a patent may set up in his answer any one or more of the following defenses, and give notice therein that he will offer proof of the same: "First, that for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or, second, that he had 11 National Manuf. Co. v. Meyers, 7 (S. C.) Eq. 509, 520; Burnham v. DalFed. R. 355. ling, 3 C. E. Green (18 N. J. Eq.), 132;

12 Graham v. Mason, 4 Cliff. 88; Arm- Daniell's Ch. Pr. (5th Am. ed.) 712; Black strong v. Lear, 8 Pet. 52. v. Thorne, 10 Blatchf. 66, 84; Sperry v. Erie Ry. Co., 6 Blatchf. 425.

18 Daniell's Ch. Pr. (5th Am. ed.) 714. 14 Maury v. Mason, 8 Porter (Ala.), 213, 228.

15 Graham v. Mason, 4 Cliff. 88. 16 Clark v. Scott, 5 Fisher, 245. 17 Stanley v. Robinson, 1 Russ. & M. 527; Cummings v. Coleman, 7 Rich.

18 Watson v. Smith, 7 Fed. R. 350. 19 Langdell's Eq. Pl. § 79; Bennett v. Neale, Wightwick, 324.

20 French v. Shoemaker, 14 Wall. 314, 335. See § 70.

surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or, third, that it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or, fourth, that he was not the originator and first inventor or discoverer of any material and substantial part of the thing patented; or, fifth, that it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public. And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, a decree shall be entered in his favor with costs."1 Such a notice need not be under oath, and a consent to an order that the answer be considered as amended by the insertion of such defense and notice is a waiver of any further oath.2 Under this statute, it has been held that no evidence can be admitted in support of any of these defenses, unless it has been properly pleaded and the requisite notice has been given to the complainant; but that the respondent, after pleading these defenses or some of them, with the names of such of the persons therein referred to as he then knows, may also plead a general allegation, "that the same had been previously invented and known and used by many other persons, whose names are unknown to the respondent, which, when known, the respondent prays leave to insert and set forth in the answer."4 Upon the subsequent discovery of any such persons, testimony concerning them may be taken, and leave obtained from the court to insert their names in the answer by amendment nunc pro tunc. An order to this effect may be obtained before or after the testimony has been taken. It seems that when a previous patent has not been referred to in an answer, such patent may still be

§ 145.1 U. S. R. S. § 4920.

54; Salamander Co. v. Haven, 3 Dill. 131;

2 Campbell v. Mayor of N. Y., 45 Fed. Jennings v. Pierce, 15 Blatchf. 42; WillR. 243.

8 Teese v. Huntington, 23 How. 2; Agawam Co. v. Jordan, 7 Wall. 583; Blanchard v. Putnam, 8 Wall. 420; Bates v. Coe, 98 U. S. 31; Pitts v. Edmonds, 2 Fisher, 52,

liams v. Boston & A. R. R. Co., 17 Blatchf. 21; Decker v. Grote, 10 Blatchf. 331.

4 Roemer v. Simon, 95 U. S. 214, 220; Brown v. Hall, 6 Blatchf. 405.

proved, as evidence of a prior use of the invention, which has been properly pleaded,5 to show the state of the art at the date of the complainant's alleged invention. It is unsettled whether the defense of insufficient description can be set up without alleging an intent to deceive the public. It has been said concerning the defense of want of novelty: "Where the thing patented is an entirety, consisting of a separate device or of a single combination of old elements incapable of division or separate use, the respondent cannot make good the defense in question by proving that a part of the entire invention is found in one prior patent, printed publication, or machine, and another part in another, and so on indefinitely, and from the whole or any given number expect the court to determine the issue of novelty adversely to the complainant." 8 "Defenses of the kind, if the thing patented is an entirety, incapable of division or of separate use, must be addressed to the invention, and not to a part of it, or to one or more claims of the patent, if less than the entire invention. More than one patent may be included in one suit, and more than one invention may be secured in the same patent; in which cases the several defences may be made to each patent in the suit, and to each invention, to which the charge of infringement relates." It has been said that a defense charging that the original patentee "fraudulently and surreptitiously obtained the patent for that which he well knew was invented by another, unaccompanied by the further allegation that the alleged first inventor was at the time using reasonable diligence in adapting and perfecting the invention, is not sufficient to defeat the patent, and constitutes no defense to the charge of infringement.' 10 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.11

5 Atlantic Works v. Brady, 107 U. S. 192. But see Parks v. Booth, 102 U. S. 96, 105.

6 American Saddle Co. v. Hogg, 1 Holmes, 133; s. c. 6 Fisher, 67; Stevenson v. Magowan, 31 Fed. R. 824.

7 Loom Co. v. Higgins, 105 U. S. 580, 588, 589; Grant v. Raymond, 6 Pet. 218; Whittemore v. Cutter, 1 Gall. 429; Lowell v. Lewis, 1 Mason, 182; Gray v. James, Pet. C. C. 394.

8 Mr. Justice Clifford in Parks v. Booth, 102 U. S. 96, 104; citing Bates v. Coe, 98 U. S. 31.

9 Mr. Justice Clifford in Parks v. Booth, 102 U. S. 96, 104, 105.

10 Mr. Justice Clifford in Agawam Co. v. Jordan, 7 Wall. 583, 597.

11 Puetz v. Bransford, 31 Fed. R. 458.

- Ac

§ 146. Admissions and Denials independent of Discovery. cording 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 defence 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,2 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 denying 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 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. 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.8 There is no need of a denial of the common confederacy clause unless accompanied by special charges of combination. When defendants avoided answering specific interrogatories concerning a charged infringement, but merely denied the use of any ma

§ 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 Mutual Marine Ins. Co. v. Union Mutual Ins. Co., 19 How. 318, 323; Agawam Co. v. Jordan, 7 Wall. 583, 609; Webb v. Powers, 2 W. & M. 497, 510; Meyers v. Busby, 32 Fed. R. 670. 3 See Story's Eq. Pl. § 870.

Brooks v. Byam, 1 Story, 296, 311. 5 Brown v. Pierce, 7 Wall. 205, 212; Brooks v. Byam, 1 Story, 296.

Kittredge v. Claremont Bank, 1 W.

& M. 244.

7 Adams v. Adams, 21 Wall. 185; Union Mutual Ins. Co. v. Commercial Mutual Marine Ins. Co., 2 Curt. 524; s. c. on appeal, as Commercial Mutual Marine Ins. Co. v. Union Mutual Ins. Co. 19 How. 318, 319.

8 Adams v. Adams, 21 Wall. 185. 9 Story's Eq, Pl. §§ 30 with note, and 856; Rule 32.

chinery "in violation 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.10 An admission in an answer that the defendants 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 patent which is valid." 11 An admission that a deed bears a certain date does not estop the respondent from showing that it was fraudulently antedated.12 § 147. Impertinence and Scandal. An answer should contain no impertinence or scandal.1 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 the plaintiff out of his parish. It may be doubted whether so much respect for the cloth would be shown by an American court. 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.5 "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

10 Agawam Co. v. Jordan, 7 Wall. 583, 609.

11 Mr. Justice Miller in Jones v. Morehead, 1 Wall. 155, 165. But compare Troy Iron & Nail Factory v. Corning, 6 Blatchf. 328, 336, 337.

2 See § 68.

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.

Attorney-General v. Hewit, in Chanc. 12 Holbrook v. Worcester Bank, 2 Curt. July, 1801; cited in Cooper's Eq. Pl. 319;

244.

§ 147. Story's Eq. Pl. §§ 861-863; Langdon v. Goddard, 3 Story, 13.

Story's Eq. Pl. § 862.

6 Miller v. Buchanan, 5 Fed. R. 366.