65 F. 321 | U.S. Circuit Court for the District of Massachusetts | 1895
This is a bilí in equity to enjoin an alleged infringement of letters patent No. 469,809, issued March 1, 1892, to tbe respondent, for improvements in systems of electrical distribution. Tbe respondent has filed a plea, which is now set down for hearing, and has been argued, in which be alleges that prior to the application for the patent tbe respondent had assigned tbe invention to the complainant, and that the application was prosecuted by tbe complainant; “that tbe assignment aforesaid was’made without any special consideration therefor, but in pursuance of tbe provisions of a general contract entered into by and between this defendant and one George Westinghouse, Jr., under date of May 20, 1884, whereby this defendant obligated himself to assign to tbe said Westinghouse, or to such company as tbe said Westinghouse might organize (tbe Westinghouse Electric Company being the company contemplated by such contract), not only the "patents relating to electrical engineering which be bad already taken out in tbe United States, and the right to patent in tbe United States certain electrical inventions for which applications were then pending, but also the right for the United States in such inventions in electrical engineering as this defendant might thereafter make during tbe continuance of such contract, it being specially provided in such contract that the assignment of such future inventions — among which the invention covered by letters patent No. 469,809 is included —was to be without other or additional consideration, — that is, other than the general consideration named in said contract”; that an interference was declared between the application and the patent No. 368,936, “which had been granted on the same invention to one Marmaduke M. M. Slattery, under date of July 31, 1888”; that preliminary statements were filed by both parties, “and that by the said preliminary statement and the amendment thereto, as well as the
The question is as to the sufficiency of this plea. The allegation as to the consideration for the contract by which the invention was sold to the complainant does not seem to me to present any defense. It is, in effect, an allegation that the invention was sold to the complainant for a consideration. But the main contention of the argument for the respondent is that the plea is good, because it alleges that “the invention of the patent in suit was nqt made by Stanley until September, 1885, and yet the same invention had been described in printed publications in the year 1883.” The sufficient answer to this argument is that the plea does not so allege with the directness and in the manner which is required in a plea. The allegation is that: the company “became and were fully advised” that the Stanley invention dated no further back than September, 1885, and that the examiner found, “as was the fact,” that the invention had been described in prior publications. There are not distinct allegations that the invention of Stanley was made not earlier than 1883, and that the invention had been earlier described. A traverse of the plea would only deny that the company was advised, and that the examiner found as stated in the plea. In other words, in order to reach the trial of the question whether the invention had been before described, and whether, accordingly, the patent is void, the respondent must deny the inferences, and not (he allegations, of the plea. There is no single definitely stated issue, and so, as it seems to me, the plea is bad, and must be overruled.