pleas in other common law cases. It is therefore unnecessary to treat those preliminary defences in this book. Recourse may be had to the standard works on common law pleading, for whatever information the patent pleader may require upon the subject. § 440. The defences, which are pleadable in bar to an action, are very numerous in the patent law, and most of them are peculiar to that branch of jurisprudence. Where the facts appear to sustain him in so doing a defendant may plead: 1. That the matter covered by the original letters patent, was not a statutory subject of a patent: or 2. That it was not an invention: or 3. That it was not novel at the time of its alleged invention or 4. That it was not useful at that or any other time: or 5. That the inventor actually abandoned the invention, before any application was made for a patent therefor: or 6. That he constructively abandoned it, by not making such application till more than two years after it was in public use or on sale: or 7. That the invention claimed in the original patent is substantially different from any indicated, suggested, or described in the original application therefor: or 8. That the patentee surreptitiously or unjustly obtained the patent for that which was in fact the invention of another, who was using reasonable diligence in adapting and perfecting the same: or 9. That the invention was made by another jointly with the sole applicant or 10. That it was made by one only of two or more joint applicants: or 11. That for the purpose of deceiving the public the description and specification filed in the Patent Office was made to cover less than the whole truth relevant to the invention, or was made to cover more than was necessary to produce the desired effect or 12. That the description of the invention in the specification, is not in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same: or 13. That the claims of the patent are not distinct: or 14. That the patentee unreasonably delayed to enter a needed disclaimer: or 15. That the original patent was surrendered and reissued in the absence of every statutory foundation therefor or 16. That the claims of the reissue patent in suit are broader than those of the original, and that the reissue was not applied for till a long time had elapsed after the original was granted: or 17. That the reissue patent in suit covers a different invention from any which the original patent shows was intended to be secured thereby or 18. That the patent was extended without any statutory application therefor: or 19. That the patent was repealed: or 20. That the patent legally expired before the alleged infringement began, or before it ended: or 21. That the patentee made or sold specimens of the invention covered by his patent, without marking them "patented," and without notifying the defendant of his infringement: or 22. That the plaintiff has no title to the patent, or no such title as can enable him to maintain the action: or 23. That the defendant has a license, which authorized part or all of the doings which constitute the alleged infringement: or 24. That the defendant has a release, discharging him from liability on account of part or all of the alleged infringement: or 25. That the defendant is not guilty of any infringement of the patent upon which he is sued: or 26. That the plaintiff is estopped from enforcing any right of action against the defendant or 27. That the cause of action sued upon is partly or wholly barred by some statute of limitation. $ 441. The first fourteen of these defences assail the validity of original patents; and either of them, if successfully maintained, will defeat any such patent, and therefore defeat any action based thereon. All of the fourteen are also applicable to actions based upon reissue patents, for though a defective or insufficient specification, or a defective or insufficient claim, or an excessive claim, can be cured by surrender and reissue; those faults are sometimes retained and sometimes introduced in reissues.' The fifteenth, sixteenth, and seventeenth of these de 1 Revised Statutes, Section 4916. To what extent those fences assail reissues as reissues. The eighteenth defence applies only to the extended terms of such patents as were extended by the Commissioner of Patents. If maintained with success on the trial of an action for infringement of such an extended term, such a defence would be completely efficacious; because the Commissioner never had jurisdiction to extend any patent without such an application therefor as the statutes required. The nineteenth defence, when true, will certainly be a full one, to any action based on alleged infringements which were committed after the repeal of the patent. Whether it will be a defence to any infringement committed before that time, will depend upon whether the patent is repealed ab initio, or only in futuro. The twentieth defence will be available where the defendant can prove that the invention was patented with the knowledge and consent of the inventor in some foreign country before it was patented in the United States, and that such foreign patent expired before the United States patent purported to terminate. This defence, if successful, will not affect the validity of the patent. It will merely limit the time wherein it is capable of being infringed.' The twenty-first defence, if successful, will bar the action, but it will not affect the patent. Any oral or written notice of infringement, if given to the defendant without stopping his infringement, will oust the defence as to subsequent infringements.' The last six of the twenty-seven defences are all without relevancy to the validity of the patent. Either of them may be partly or wholly successful, according to the circumstances of each action, regardless of the success or want of success which may attend the other twenty-one. 1 Sections 225 and 249 of this book. 3 New York Pharmical Associa tion v. Tilden, 14 Fed. Rep. 740, 1882; Allen v. Deacon, 21 Fed. Rep. 122, 1884. § 442. The ancient rules of common law pleading would require a special plea for either of the twenty-seven defences, which are enumerated in Section 440, save only the defence of non-infringement, and sometimes that of want of title.' But a loose and unscientific relaxation of that part of those rules, crept at one time into practical pleadings, both in England and America. The abuse was reformed in England in the fourth year of William the Fourth; but in the United States it has continued, except so far as it has been limited or enlarged by legislation in particular States. But there was never any principle which guided this departure from the ancient law, and therefore no foundation for any science of the subject. Where an authoritative precedent can be found for a particular relaxation, that particular relaxation must be regarded. In the absence of such a precedent, the safe and proper course is to conform to the ancient common law rules, unless the pleader is willing to risk his defence upon the theory that State statutes relevant to pleadings are binding on Federal courts when trying patent actions of trespass on the case. The text writer believes that they are not binding under such circumstances, because actions of trespass on the case were first prescribed by Congress for patent suits in 1790,' and because the law has never since been changed in that particular, and because, therefore, there seems to be no good cause for holding that such an action under the Revised Statutes, is a different proceeding from what it was under the earliest of the statutes at large. § 443. The patent statute provides that five of the twentyseven defences may be made under the general issue, accompanied with a certain statutory notice of special matter. Those are the defences which, in Section 440 of this book, are numbered three, five, six, eight, and eleven, respectively. In the statute, they are mentioned in a different 1 Stephen on Pleading, 160. 2 Stephen on Pleading, 158. 4, p. 111. 4 Revised Statutes, Section 4920. 31 Statutes at Large, Ch. 7, Sec. order; and indeed the fifth and sixth are there grouped together, and the third is there separated into two parts. The reasons for changing the classification in those particulars are probably obvious to the reader. The fifth and sixth defences are entirely distinct from each other; while the third is sustained by evidence of anticipating matter, whether that matter is a prior patent or printed publication as contemplated by one division of the statute, or is a prior knowledge or use as contemplated by another. Either of these five defences may also be made under a special plea, instead of under the general issue accompanied by notice, if the defendant so determines.' But if any defendant uses both these forms of pleading for any one defence, the court will on motion call upon him to select the one which he prefers, and to abandon the other." § 444. Notices of special matter must be in writing, and must be served on the plaintiff or his attorney at least thirty days before the trial of the case. No such notice requires any order of court as a prerequisite thereto; and depositions taken before the service of such a notice, are as admissible under it as if taken afterward. It is not the purpose of the statute to oblige the defendant to give notice of anticipating matter before taking testimony, and thus to enable the plaintiff to tamper with the witnesses. Its only purpose is to give the plaintiff thirty days before the trial, in which to secure evidence to contradict the testimony of the defendant's witnesses, in case the latter is untrue. Notices of want of novelty must state the names of the prior patentees, and the dates of their patents, where prior patents are relied upon; and where prior knowledge or use is relied upon, such a notice must state the names and residences of the persons alleged to have had the prior knowledge of the thing patented, and where and by whom Evans v. Eaton, 3 Wheaton, 454, 1818; Grant v. Raymond, 6 Peters, 218, 1832; Day v. Car-Spring Co. 3 Blatch. 181, 1854. Read v. Miller, 2 Bissell, 16, 1867. 3 Revised Statutes, Section 4920. 4 Teese v. Huntingdon, 23 Howard, 2, 1859. |