This is an action “on the case,” brought by the plaintiffs under section 4919 of the Devised Statutes, to recover damages from the defendants for the infringement of a patent for an improved method of ventilating water closets, numbered 171,926. The defendants plead the general issue — “not guilty” — and give notice of the special mаtters which they expect to prove thereunder on the trial, as provided in section 4920 of the Devised Statutes, as follows: That said invention was not novel when produced by the patentee, and ho is not the original inventor thereof, for that a like apparatus was previously patented to Jared Holt on February 10, 1874; and for that a like apparatus or system was previously described, or known and used, specifying six instances where and when and by whom it was described, or known and usеd. Tlio answer also contains three special pleas, to the effect: (1) The plaintiffs have never marked their invention with the word “patented,” togethеr with the date of the patent; (2) the apparatus covered by the patent “was not an invention when produced” by the patentee; (3) the said invention and system of ventilation “was not useful” when produced by the patentee or at any time.
The plaintiffs move to strike out the special pleas for the reаson they are not verified as provided in section 79 of the Oregon Cede of Civil Procedure; and because they are improperly pleaded with the
In Nudd v. Burrows,
To give the enactment full effect, according to this suggestion, it would repeal sections 59 and 60 of the patent act of July 8,1870, (16 St. 207, 208; sections 4919, 4920 of the Eevised Statutes,) authorizing the action for infringement tо be “on the case,” and the defense thereto to be-made by the plea of “not.guilty, ” and notice of sjcecial matter. But the provision must be further construed as not affecting other provisions in prior acts of congress concerning procedure in the national courts. And this is put beyond question, so far as such provisions have been carried into the Eevised Statutes and re-enacted by congress along with said section 5 of the act of 1872. Section 914, Rev. St. They are now one act, and must be construed together as statutes in pari materia. But still it is manifest that congress intended, by the enactment of section 914, supra, to require uniformity in the procedurе in the national and state courts “as near as may be.” But this uniformity “may not be, ” when it is otherwise provided by an act of congress, or where, as was said in Indianapolis, etc., Ry. Co. v. Horst, supra, some “subordinаte provision” in the state statute is rejected by the judges of the national courts, because it “would unwisely incumber the administration of the law or tend to defeаt the ends of justice in their tribunals.”
Allowing, then, that the defendant, in an action “on the case,” which is essentially the same as an action under the Code, may pleаd the general issue and give notice of the special matter, ought not his plea to be verified according to the local law ? The law of congrеss is silent upon the point, and there is nothing in the local law requiring the verification of a pleading by the oath of the party which is
The objection that these special plеas are wrongly pleaded with the general issue is not well taken, either at common law or under the Code. At common law the defendant might plead with the general issue any special plea that did not require a different mode of trial— that concluded to the country — except that of tender; and this was excepted from the rule because it was an admission of the cause of action. Gould, Pl. c. 8, § 27. And under the Code a defendant may, besides controverting the allegаtions of the complaint by denying them, which is in substance and effect the general issue, plead as many defenses as he may have. But he must state them separately, and each is in effect a special plea. Code Civil Proc. tit. 9, c. 10. My conclusion is that the proceedings in an action for infringement, both of the plаintiff and defendant, except as otherwise specially provided by the act of congress, are governed by and must conform to the local law.
The sрecial pleas not being verified, as required by that law, the motion to strike them out is allowed, (Code Civil Proc. § 81,) and if it had included the general issue it would have beеn allowed as to that also. And this conclusion renders it unnecessary to decide whether the pleas are frivolous or not. The first one, which is founded on section 38 of the patent act of 1870, (section 4900, Rev. St.,) does not allege that the defendant was not notified of the infringement