46 F. 851 | U.S. Circuit Court for the District of Western Pennsylvania | 1891
The bill in this case alleged interference, and prayed relief under section 4918. It also alleged infringement by defendant, and prayed relief upon that ground as well. A demurrer was filed to the bill because, as claimed by the defendant, there was a misjoinder of causes of action, which, following the decisions of other circuit courts, this court overruled. The defendant then filed its answer, and subsequently filed a cross-bill, alleging infringement by the plaintiff of defendant’s patents, and praying for appropriate relief. By arrangement between counsel, the cross-bill was permitted to be filed, and a motion immediately made by plaintiff to strike it from the record, so that the practical effect is to bring the matter before the court, as though upon a motion to file the cross-bill. Plaintiff’s contention is substantially set
“A cross-bill, as its name imports, goes no further than to give the party fifing it the reciprocal right enjoyed by the complainant in the original bill in respect to their mutual title or interest in the subject-matter of the suit.”
“If it is true that the matter set up in this cross-bill is wholly independent of the matter set up in the bill, and does not touch or relate to that matter, either for the purpose of defense to it or for any disclosure relating to it, but is merely set up for the purpose of laying the foundation for some independent relief, it seems quite obvious, upon authority and principle, that for the purpose of any such independent relief as is asked for the cross-bill should be dismissed.”
In Dote v. Phillips, supra, a bill was filed for the specific performance of one agreement, and the cross-bill alleged violation of another independent agreement, and prayed relief against the plaintiffs. The court held that the cross-bill was improperly filed, saying:
“The plaintiffs seek a specific performance, and that only. It is noanswer to that to say that the plaintiffs have broken another agreement relating to another subject.”
In Galatian v. Erwin, Hopk. Ch. 48, the original suit was for foreclosing two mortgages. By cross-bill one of the defendants in her defense sought to impeach for fraud the title of the mortgagor, not only to the mortgaged premises, but to other lands. It was held that as a defense to the original suit the cross-bill was entirely proper, but that it could not introduce a distinct suit relative to the other lands, or become the foundation of a decree concerning matters not embraced in the original suit; and that no decree beyond the subjects of controversy in the original suit could be made in the cause. In the present case the subject-matter of the original bill is the interference between plaintiff’s and defendant’s patents, and also the alleged infringement of plaintiff’s patent by defendant. The defendant’s cross-bill is based solely upon an alleged infringement by plaintiff of defendant’s patents. If plaintiff’s bill was solely for interference between the patents, that would be the only question that- could be considered, and a cross-bill would clearly be improper based upon an alleged infringement by plaintiff. An infringement of a patent is a tort, (Rob. Pat. § 931;) and, if the original bill were filed for that alone, the defendant could only attack the rights of the plaintiff under his alleged patent, the validity of the patent, or deny the infringement. He could not set up, by way of defense, another tort, alleged to have been committed by the plaintiff. The joinder of two causes of action in the original bill necessarily involves the joinder of the defenses appropriate in each case, but they are two separate causes of action, although joined, and not a new cause of action, formed by amalgamation, permitting new questions to be raised by defendant different from those relevant to each separate cause of action. The cross-bill does not seek to defeat plaintiff’s canses of action, and the matters alleged in it are not essential to the complete disposition of plaintiff’s case, or of defendant’s rights in relation to the plaintiff’s causes of action.