243 F. 924 | D. Mass. | 1917
None of the defects claimed to exist in this bill for infringement of a patent seem to me jurisdictional in the sense contended for by the defendant. If they exist, I cannot regard them as requiring dismissal of the bill without leave to amend, in view of equity rule 19 (198 Fed. xxiii, 115 C. C. A. xxiii).
There are no allegations that said patent was issued in the name of the United States, under seal of the Patent Office, or that it was signed bv the Commissioner, as required by Rev. Stats. § 4883, as amended by Act Feb. 18, 1888, c. 15, 25 Stat. 40 (Comp. St. 1916, § 9427). These omissions, in connection with the fact that no copy of said patent is annexed and no profert thereof made, leave the bill defective. Fichtel v. Barthel (C. C.) 173 Fed. 489. It is understood that the plaintiff intends asking leave to amend by making profert of the patent. If this is done, the above defects will be cured, according to the case cited.
There can be no doubt that before the present equity rules went into effect the omitted allegations were essential. See Bayley, etc., Co. v. Braunstein, etc., Co. (D. C.) 237 Fed. 671, in which many prior decisions are cited. See, also, American, etc., Co. v. National, etc., Co. (C. C.) 127 Fed. 349 (1904); Moss v. McConway, etc., Co. (C. C.) 144 Fed. 128 (1906); Walker, Patents (5th Ed. 1917) § 579. McCoy v. Nelson, 121 U. S. 484, 7 Sup. Ct. 1000, 30 L. Ed. 1017, upon which the plaintiff places some reliance, does not appear to have been
But under rule 25 (198 Fed. xxv, 115 C. C. A. xxv) a bill need only contain “a short and simple statement of the ultimate facts upon which the plaintiff asks relief, omitting any mere statement of evidence.” Does this require a different conclusion as to the omitted averinents now under consideration?
The defendant relies on Maxwell v. National, etc., Co. (D. C.) 205 Fed. 515 (1913), in which Judge Ray declined to strike out such averments, being of opinion that the new rules were not intended to change the settled practice requiring allegations showing compliance with sections 4886 and 4887, and also on Bayley, etc., Co. v. Braunstein, etc., Co. (D. C.) 237 Fed. 671 (1916), in which Judge Learned Hand sustained a motion to dismiss for want of such allegations, although the bill contained allegations to much the same effect as those found in the present bill, that the patentee “was entitled to a patent * * * under the provisions of the statutes in such case made and provided.” Judge Hand, like Judge Ray, considered allegations going no further than to show issue of the patent sued on as allegations of evidence, not of ultimate fact, and held the formerly settled rule unaffected by rule 25.
The plaintiff relies on Zenith, etc., Co. v. Stromberg Co. (D. C.) 205 Fed. 158 (1913), wherein Judge Tuttle denied a similar motion to dismiss, regarding the former necessity for express allegations of compliance with the requirements of sections 4886 and 4887 as done away with by rule 25. To this decision, though rendered some three months earlier, Judge Ray’s decision, above cited, makes no reference. The plaintiff relies also on Gen, etc., Co. v. Nikolas (D. C.) 207 Fed. 111 (1913), wherein Judge Chatfield, as to the matters now being considered, agreed with Judge Tuttle. This decision, made some two months later than Judge Ray’s, contains no reference thereto.
In Pittsburg, etc., Co. v. Beler, etc., Co. (D. C.) 222 Fed. 950 (1915), a decision made, not on motion to dismiss, but on final hearing,' Judge Orr called attention to the undue amount of space taken up in the bill before him by the unnecessarily expanded form wherein all its allegations and prayers were expressed. He found it unnecessary for the purposes of the case before him to determine whether or not averments of compliance with all statutory conditions precedent to the granting of a patent were required, under the new rules, as above; but he forcibly recommended the avoidance of the unnecessary verbiage formerly common in bills for infringement, as serving no useful purpose. I am entirely in accord with these recommendations, and with the similar suggestions made by Judge Ray in his opinion above cited.
Upon the question now being considered, I agree with Judge Ray and Judge Pland, and hold, as they have held, that rule 25 does not change the previously settled requirement of distinct allegations of
The bill affords no express description of the alleged invention, although Uebersax is alleged as above to have invented “a certain process or method,” etc., afterwards patented, and said process or method, as “shown, described, and claimed” in the alleged patent, is alleged to have proved itself of value by commercial success, and also to have been infringed by the defendant. This is not a description sufficient for the purposes of a bill not setting forth or making proferí of the patent referred to, by the amendment said to be intended as above, however, this defect will be cured.
Among the prayers for relief is one for the surrender and destruction, of all apparatus used or intended for use in the alleged infringement. The patent, so far as appears from the bill, covering only a process or method, the bill appears to show no ground, as it stands, for the granting of any such relief. But this, objection, since it would at most justify only the striking out of the prayer referred to, need not be further considered at present.
The result is that the bill is insufficient as it stands, and must be dismissed if not amended. Unless amended within ten days from this date, there may be a decree dismissing it, with costs.