227 F. 903 | S.D.N.Y. | 1915
This is a motion to strike out as impertinent and insufficient certain allegations of the answer to the bill of complaint in a suit brought to have the defendant’s patent adjudged void.
The thirteenth and fourteenth paragraphs of the answer allege that (1) the complaint does not state facts sufficient to constitute a cause of action; and (2) that the complaint is not entitled to any answer or to have defendant’s patents declared void. These allegations amount to a demurrer, and, while unnecessary, are not prejudicial. The defendant could in any event raise the same questions at the trial, and I therefore shall not strike out these mere statements that defendant takes such a position.
The fifteenth, sixteenth, seventeenth, eighteenth, nineteenth, and twentieth paragraphs set up that (a) the Tesla patents have no utility; (b) that for the purpose of deceiving the public they are made to cover less than the whole truth relative to the alleged inventions thereof; (c) that they are anticipated by prior patents and publications; (d) that there was prior invention by other persons; (e) that there was prior public use of the alleged Tesla inventions; (f) that in view of the prior art, set forth in the answer, the Tesla system involved no patentable invention.
“I think that the plain language of Bev. St. § 4918 (U. S. Comp. St. 1901. p. S394), authorizes the court In an action such as tills to declare ‘either of the patents (in suit) void in whole or in part,’ and does not confine the decision to invalidity for any especial reason; the only limitation of the statutory power being that the adjudication shall not ‘affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition’ thereof. * * « 1 think it clearly the dnty of the court upon establishment of an interference tq investigate and decide any question concerning the validity of either of the patents raised by the pleadings in the case.”
Not only do the better-reasoned cases support the construction of section 4918, supra, which I have adopted, but I have no doubt that everything is to be gained in deciding all questions between the parties relating to the validity of their patents in a single suit. As was said by the Circuit Court of Appeals in Palmer Pneumatic Tire Co. v. Lozier, supra:
“ * * * Section 4918 necessarily involves the presence of a patentable invention as the subject-matter of the litigation, and * * * the court cannot close the door to all inquiry as to whether such subject-matter for controversy exists. The court is, by the terms of the statute, empowered, as the sequel to its inquiry, to determine either of the patents void in whole or in part.”
Futhermore, in the present suit, I think the complaint sets, up an ordinary cause of action for infringement, as well as a cause of action under section 4918. There can be no objection under rule 26 of the new equity rules (198 Fed. xxv, 115 C. C. A. xxv) to the joinder of these
For the foregoing reasons, the motion to strike out is'granted as to paragraph 11 of the answer, and denied as to paragraphs 13, 14, 15, 16, 17, 18, 19, and 20.
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