but said that proceedings in it might be stayed until the determination of the second suit.30 Where a second bill is brought by the same person for the same purpose, but in a different right, as where the executor of an administrator brought a bill conceiving himself to be the personal representative of the intestate, and afterwards procured administration de bonis non, and brought another bill, the pendency of the former bill is not a good plea.31 The reason of this determination seems to have been, that, the first bill being wholly irregular, the plaintiff could have no benefit from it, and it might have been dismissed upon demurrer. Pendency of a suit for a penalty because of the importation of a laborer under contract prevents the institution of a second suit for the same violation of the statute.32

Where a decree is made upon a bill brought by a creditor on behalf of himself and all other creditors of the same person, and another creditor comes in before the master to take the benefit of the decree, and proves his debt, and then files a bill on behalf of himself and the other creditors, the defendants may plead the pendency of the former suit; for a man coming in under a decree is quasi a party." 33 The pendency of a taxpayer's bill in the same court was held to be a defense to a bill by other taxpayers for the same relief.34

The pendency of a suit for the infringement of a patent in one district is no bar to a suit against the same defendant' for the infringement of the same patent in another district; but, in the latter suit, the court will only consider and adjudicate upon alleged infringements within its district if the defendant resides or has made a general appearance in the former.35

§ 178. Defenses in bar. Defenses in bar set up some reason founded on the substance of the case, why the plaintiff is not entitled to relief. They rest upon some matter created by either statute, matter of record or matter in pais, which last term

30 Mass. Mut. L. I. Co. v. Chicago

& A. R. Co., 13 Fed. 857.

44.

31 Huggins v. York B. Co., 2 Atk.

32 U. S. v. Dwight Mfg. Co., 213 Fed. 522.

33 Mitford's Pl. ch. 2, § 2, part 2,

citing upon last point, Neve v. Weston, 3 Atk. 557.

34 Gamble v. San Diego, 79 Fed. 487.

35 Warren Bros. Co. v. City of Montgomery, 172 Fed. 414.

signifies a matter of fact that is not of record, and is not given by statute special effect.

§ 179. Defenses of statutes. In general. Defenses founded upon matter that is made a bar by statute rests upon the statute of limitations, the statute of frauds, or less frequently some other statute. An act of Congress ratifying the construction of an otherwise illegal structure will, if constitutional, abate a suit for an injunction against the further maintenance of the structure, although not set up by plea, answer, or demurrer.1 Congress has enacted statutes of limitations in certain civil and criminal

cases.

1

§ 180. Statute of limitations to suits for infringement of patents. "In any suit or action brought for the infringement of any patent, there shall be no recovery of profits or damages for any infringement committed more than six years before the filing of the bill of complaint or the issuing of the writ in such suit or action, and this provision shall apply to existing causes of action." Less than six years' delay will rarely bar a suit to enjoin the infringement of a patent; 2 although it may prevent interlocutory relief. The fact that the owner of a patent permitted a suit for its infringement to be dismissed before trial without prejudice is not such laches as to bar a second suit against the same defendant when the statutory period has not expired, but a delay before suit by the owner of a patent, of seven, or of nine years, after knowledge of an infringement was held to be such laches as to defeat him, although in the latter

6

§ 179. 1 The Clinton Bridge, 10 Wall. 454, 19 L. ed. 969. But see Griffing v. Gibb, 2 Black, 519, 17 L. ed. 353; Liverpool, N. Y. & P. S. S. Co. v. Comrs. of Emigration, 113 U. S. 33, 38, 28 L. ed. 899, 900. $ 180. 129 St. at L. 694. 2 Ide v. Trorlicht, D. & N. Carpet Co., C. C. A., 115 Fed. 137, 147. 3 Infra, §§ 277, 294.

4 Welsbach Light Co. v. Cohn, 181

Fed. 123.

5 General El. Co. v. Yost Electric Mfg. Co., 208 Fed. 719..

6 Hall v. Frank, 195 Fed. 946. In Layton Pure Food Co. v. Church & Dwight Co., C. C. A., 32 L.R.A. (N.S.) 274, 182 Fed. 35, it was held that a delay for the same period in a trademark case did not deprive the complainant of the right to an injunction, although the accounting must be limited to the time subsequent to the commencement of the suit.

case he claimed that his partner in the ownership of the patent had prevented the previous institution of the litigation."

A delay of six years with failure to mark the patented articles. was held to bar the owners claim for damages and claims, but not his right to an injunction although he had known of the infringement during the whole time.

Where the complainant duly notified the defendant that the latter was infringing its trade-mark and threatened suit, subsequent delay for eight years was held to be no laches when the defendant had not changed its position in consequence.8

It has been held: that the Federal statute of limitations need not be pleaded to bar the collection of profits or damages for infringement of patents more than six years before the suit."

§ 180a. Statute of limitations to applications for patents. "All applications for patents shall be completed and prepared for examination within one year after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable."1 It has been held that this

requires a bill in equity to compel the issue of a patent, to be filed within one year after the refusal thereof.2

7 For laches which will not bar a suit for an accounting in patent and trade mark cases. A. R. Mosler & Co. v. Lurie, C. C. A., 209 Fed. 364; Drum v. Turner, 219 Fed. 188; Closez & Howard Mfg. Co. v. J. I. Case Threshing Mach. Co., 216 Fed. 937. See Wm. A. Rogers v. H. O. Rogers Silver Co., 237 Fed. 887.

8 Aunt Jemima Mills Co. v. Rig ney & Co., C. C. A., 247 Fed. 407. For laches which will defeat a suit for an accounting in patent and trade mark cases, see: Valvoline Oil Co. v. Havoline Oil Co., 211 Fed. 189; Wright's Automatic T. P. Mach. Co. v. American T. Co., 220 Fed. 163; Vacuum Cleaner Co.

v. Innovation Electric Co., Inc., 234 Fed. 942; Allen v. Walker & Gibson, 235 Fed. 230, 233; Ashley v. Samuel C. Tatum Co., 240 Fed. 979; O. & W. Thum Co. v. Dickinson, C. C. A., 245 Fed. 609; Hills v. Hamilton Watch Co., 248 Fed. 499.

9 Peters v. Hanger, C. C. A., 127 Fed. 820; Johnson v. Roe, 1 Fed. 692; Etting v. Marx's Ex'r, 4 Fed. 673. But see Pratt v. Northam, 5 Mason, 95.

§ 180a. 1 U. S. R. S. § 4894, as amended 29 St. at L. 692, § 4, 5 Fed. St. Ann. 488, Comp. St. 3384, Pierce Fed. Code, § 8760.

2 Westinghouse El. & Mfg. Co. V. Ohio Brass Co., 196 Fed. 518.

§ 180b. Statutes of limitations to copyright suits. The Copyright Act of March 4, 1909 provides: "That no criminal proceedings shall be maintained under the provisions of this Act unless the same commenced within three years after the right of action arose.

The Revised Statutes provide: "No action shall be maintained in any case of forfeiture or penalty under the copyright law, unless the same is commenced within two years after the cause of action has arisen."2 Whether this section is still in force

This statute does not apply to a bill in equity for an injunction and damages,3 nor to an action for the statutory damages for the violation of a dramatic copyright. Actions at common law for damages under the copyright law are subject to the State statutes of limitations.5 Suits in equity for an injunction and damages or profits, are not subject to any statutes of limitation. They may, however, be barred by laches."

When the statute imposing a penalty was in force each printing from plates created a new cause of action.

§ 180c. Statute of limitations to vacation of patents for lands. The Act of March 3, 1891, provides:

"Suits by the United States to vacate and annul any patent heretofore issued shall only be brought within five years from the passage of this act, and suits to vacate and annul patents hereafter issued shall only be brought within six years after the date of the issuance of such patents."1

This statute applies to all suits by the Government to vacate and annul patents to public lands issued under any laws of the United States. It is strictly a statute of limitations and does not create the right to maintain a suit to set aside a patent.3 The lapse of the statutory period of time gives to the patent the same effect against the United States that it would have had if it had been originally valid.*

The statute does not apply to suits by the United States praying a decree that the patentees or their successors hold lands for the benefit of others.5 Nor to suits brought on behalf of Indian tribes issued by mistake for lands within their reservations. Nor to suits by the United States to cancel trust patents for allotments of reserved Indian lands." Nor to suits to quiet the title to public land upon the ground that no patent thereto has ever been issued. Nor to recover the value of lands, a patent to which has been issued by mistake or fraud,10 nor to recover damages for such a fraud.11

100 C. C. A., 303 [mod. 169 Fed. 833].

$180c. 1 Act of March 3, 1891, c 559, 26 St. at L. 1093.

2 U. S. v. Norris, C. C. A., 222 Fed. 14.

3 U. S. v. Koleno, 226 Fed. 180. 4 U. S. v. Chandler Dunbar Water Pow. Co., 209 U. S. 447, 450, 28 Sup. Ct. 579, 52 L. ed. 881; U. S. v. New Orleans Pac. Ry. Co., C. C. A., 235 Fed. 833, 837; U. S. v. Whited & Wheless, C. C. A., 232 Fed. 139, reversed U. S.

5 U. S. v. New Orleans Pac. Ry. Co., 248 U. S. 507, 518.

6 Northern Pac. Ry. Co. v. U. S., C. C. A., 191 Fed. 947.

7 La Rogue v. U. S. 239 U. S. 62 affirming 198 Fed. 645.

8 U. S. v. Lee Wilson & Co., 214 Fed. 630.

9 U. S. v. Jones, C. C. A., 242 Fed. 609; Union Coal & Coke Co. v. U. S., C. C. A., 247 Fed. 106.

10 U. S. v. Whited & Wheless, 246 U. S. 552, reversing C. C. A., 232 Fed. 139; U. S. v. Jones, C. C. A., 242 Fed. 669.

11 U. S. v. Jones, 218 Fed. 973; Bistline v. U. S., C. C. A., 229 Fed. 546; Pitan v. U. S., C. C. A., 241 Fed. 364.