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$ 587. A bill needs amendment when the defendant's de· murrer, plea, or answer points out a material fault therein, or when the complainant otherwise discovers a material error or omission which may be cured, or when the defendant's plea or answer contains statements to which it is necessary to plead by way of confession and avoidance.' No reply by way of confession and avoidance can be made in a replication in equity. Where the plea or answer sets up new matter, to which the complainant wishes to reply by way of traverse, the general replication is the proper pleading to file for that purpose."

§ 588. Defences may be made to a bill in equity for infringement of a patent, by a demurrer, or by a plea, or by an answer; or by a demurrer to part, and a plea to another part, and an answer to the residue; or by a demurrer to part, and a plea to the residue; or by a demurrer to a part, and an answer to the residue; or by a plea to a part, and an answer to the residue."

The nature and operation of demurrers and answers in equity practice are so well understood by the profession, that nothing need be said about them in this book, further than to show the applicability of each of those forms of pleading to the various defences which belong to patent litigation. But defences by plea may bear a longer review, because they have largely gone out of use in the Federal courts and their principles been partly forgotten by the members of the bar, since the Equity Rules authorized nearly every defence to be made in an answer that formerly required a plea for its interposition. But those rules do not authorize any defendant to make a particular defence in a plea, and if unsuccessful there, to make it over again in an answer. Such a plan, if allowed, would enable a de

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fendant whose plea is overruled as stating no defence at law, to argue that question again on the final hearing; and it would enable a defendant, whose plea is proved to be false in fact, to contest that issue again on new testimony taken in pursuance of an answer. Though pleas in bar are not necessary in equity cases in the Federal courts, except under rare circumstances, they may sometimes be made. useful in saving time, labor, costs, and expense. It is, on these accounts, expedient to remind the reader of the general nature and operation of those pleadings, before explaining their special application to actions in equity for infringements of patents.

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§ 589. A plea in equity is a sworn' pleading, which alleges that some one fact, not stated in the bill, is true; or that some one statement of fact in the bill, is not true; or that some one fact, which the bill states is not a fact, is a fact nevertheless. A plea of the first kind sets up new matter by way of confession and avoidance, and is properly named an affirmative plea. This is the only sort of plea in equity which was recognized in the time of Lord BACON. A plea of the second kind traverses some one statement of fact in the bill, and is therefore properly called a negative plea. This sort of plea was established by Lord THURLOW, and thereafter became a fully recognized part of equity pleading in England and in the United States. A plea of the third kind states some fact to be true which the bill seeks to impeach. It is similar to an affirmative plea in respect that it sets up matter outside of that upon which the bill is based; and it is similar to a negative plea, in that it contradicts some one statement of fact in the bill. It may therefore be properly named a composite plea.

§ 590. After a defendant files a plea to a bill in equity,

1 Equity Rule 31.

2 Daniell's Chancery Practice, Vol. 1, Ch. XV. Section 1,

3 Beame's General Orders of the High Court of Chancery, 26.

4 Daniell's Chancery Practice, Vol.

1, Ch. XV. Section 1.

5 Story's Equity Pleading, Section

668.

6 Daniell's Chancery Practice, Vol.

1, Ch. XV. Section 1.

the complainant should satisfy himself whether it states a good defence to the bill, or to that part of the bill to which it refers, and should ascertain whether it is true in point of fact. If he is sure that he can prove it to be false, he should take issue upon it' by filing a replication. If he has any ground for fear that the plea is true in fact, and any ground for hope that it is bad in law, his true course is to set the plea down for argument;' which setting down is equivalent to a demurrer to the plea. If, on the argument, the plea is held to state no fact which constitutes a defence to the bill, or to any part thereof, it will be overruled, and the defendant will be permitted to file an answer setting up whatever other defences he can." But if the plea is held on the argument to state a good defence to the bill, or to that part of the bill to which it applies, it will be allowed, and thereupon the complainant may file a replication. After a replication is filed to a plea, the fate of the entire bill, or of that part thereof to which the plea applies, will depend upon the trial of the issue of fact thus raised by the parties. If the plea is proved to be true, the bill will be dismissed, if the plea applies to the whole bill; or if it applies to a part only, the bill will be defeated as to that part. But if the plea is proved to be false, the complainant may have a decree without any further proceedings. Only one defence can be made to a bill in a plea, unless the court, in order to avoid a special inconvenience, gives a special permission to

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a defendant to make a plurality of defences in that method of pleading. The rules of English equity pleading allowed a defendant whose first plea was overruled to set up in a new plea any other defence to which a plea was suitable.' But in the United States courts no successive pleas are permitted to be filed, for after any plea has been overruled, the defendant, if he has other defences to interpose, must interpose them in an answer. This outline of the principles of pleas in equity, should be kept in mind by the reader while perusing sundry of the sections which follow.

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§ 591. The twenty-seven defences which may be made to actions at law for infringements of patents, may all be made to actions in equity based on such causes; and the latter actions are also liable to two other defences, to which actions at law are not subject. These are non-jurisdiction of equity, and laches. It is convenient first to explain the facts which may support each of these two defences, and to state the various methods in which each may be interposed, and afterward to review the twenty-seven defences in their order, and to explain wherein any of them differ in their operation in equity, from their operation at law, and to state what forms of pleading are suitable to each, under the varying circumstances of patent litigation.

§ 592. Non-jurisdiction in equity is a defence which will succeed in any infringement case, unless an injunction is granted, or at least rightfully prayed for in that case, or unless some impediment prevents a resort to remedies purely legal, or unless the circumstances of the case render the remedy obtainable by an action at law, difficult, inadequate, or incomplete. But where a bill is filed before the expiration of the patent upon which it is based, and where it truly states a proper case for an injunction, and contains a proper

1 Story's Equity Pleading, Section 657; Wheeler v. McCormick, 8 Blatch. 267, 1871; Noyes v. Willard, 1 Woods, 187, 1871; Giant Powder Co. v. Nitro Powder Co. 19 Fed. Rep. 510, 1884.

? Daniell's Chancery Practice, Vol. 1, Ch. XV. Section VIII.

Equity Rule 34.

4 Section 440 of this book.

5 Root v. Railroad Co. 105 U. S. 189, 1881.

prayer for that relief, equity has jurisdiction, and will retain it to the end of the suit, even if, on account of the delays or errors which are incident to litigation, no injunction is ever granted in the case.'

The conditions and limitations of this rule are to be carefully noted by the practitioner. 1. Where a bill unruly states a proper case for an injunction, and contains a prayer for that relief, the jurisdiction of equity will lapse and the bill be dismissed, whenever it is shown to have been untrue in respect of those of its statements upon which the prayer for an injunction is based. 2. Where a bill states no proper case for an injunction, but contains a prayer for such a writ, the jurisdiction of equity will not attach at all, and the bill will be dismissed whenever its character is brought to the attention of the court. 3. Where a bill is filed so shortly before the expiration of the patent upon which it is based, that no motion for an injunction can be regularly notified to the defendant and heard by the court till after that expiration, the bill will be dismissed whenever the court learns that no injunction can lawfully be granted.*

§ 593. The case of Root v. Railway Co. omitted to clearly state what exceptional facts will give equity jurisdiction, independent of any injunction or prayer for injunction. What the court said on that subject was said in the following phraseology: "Grounds of equitable relief may arisé, other than by way of injunction, as where the title of the

'Clark v. Wooster, 119 U. S 325, 1886; Beedle v. Bennett, 122 U. S. 75, 1886; Gottfried v. Brewing Co. 13 Fed. Rep. 479, 1882; Gottfried v. Moerlein, 14 Fed. Rep. 170, 1882; Forehand. Porter, 15 Fed. Rep. 256, 1883; Reay v. Raynor, 19 Fed. Rep. 309, 1884; Adams v. Howard, 19 Fed. Rep. 317, 1884; Dick v. Struthers, 25 Fed. Rep. 103, 1885; Adams r. Iron Co. 26 Fed. Rep. 324, 1886; Kirk v. Du Bois, 28 Fed. Rep. 460, 1886; Brooks v. Miller, 28 Fed. Rep. 615, 1886; Kittle v. De Graff,

30 Fed. Rep. 689. 1887; Kittle v. Rogers, 33 Fed. Rep. 49, 1887; Hohorst v. Howard, 37 Fed. Rep. 97, 1888.

2 Dowell v. Mitchell, 105 U. S. 430, 1881.

3 Campbell v. Ward, 12 Fed. Rep. 150, 1882; Creamer v. Bowers, 30 Fed. Rep. 185, 1887.

4 Clark v. Wooster, 119 U. S. 324, 1886; Burdell v. Comstock, 15 Fed. Rep. 395, 1883; Davis v. Smith, 19 Fed. Bep. 823, 1884; Mershon v. Furnace Co. 24 Fed. Rep. 741, 1885.

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