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is pleaded. It has been held: that a judgment of the Supreme Court of a State is no bar to a subsequent suit in a Circuit Court of the United States, where it has been taken by writ of error to the Supreme Court of the United States and is there pending undetermined.24 Where a decree for a perpetual injunction and an accounting was affirmed, it was held: that an infringement could not before accounting set up by petition to the Circuit Court of Appeals as res adjudicata,25 a judgment of another Circuit Court of Appeals in another action.26 The defense may be raised by a demurrer when the allegations of the bill show that it exists.27

A statement in the judgment or the judgment roll that the defendant appeared by counsel is presumptive evidence that the appearance was authorized.28 In a suit upon a foreign judgment the authority to appear may be contradicted.29 Evidence that the attorney was authorized to appear specially but not generally in the original suit is sufficient to attack the validity of the judgment.30

The recitals in the record of the judgment are not conclusive proof that the defendant was served or duly appeared; 31 but they are presumptive evidence of the point and in view of the presumption of regularity, a decree which recites that an order or publication had been duly published and executed is not open to collateral attack because no affidavit in support of the order is in the record, when the State statute does not specificially require a written affidavit.32 It has been said that to authorize recovery upon a judgment there should be some evidence, either by the recitals of the judgment or otherwise, to show that the court which rendered it had acquired jurisdiction over the defendant, or the court should have before it the entire record upon which, nothing appearing to the contrary, to predicate a presumption

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of jurisdiction over the parties.33 The court may refuse to receive evidence to prove want of jurisdiction until the defendant's case is reached, and before then admit judgment, subject to attack.34 In a suit upon a foreign judgment, certified copies of the record on appeal showing affirmance are admissible.35 The court will take judicial notice of its own records as to proceedings formerly had by a party to a proceeding before the court.36

§ 188. Defenses peculiar to patent cases. The Revised Statutes provide: "In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one or more of the following matters: First, that for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or, second, that he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or, third, that it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or, fourth, that he was not the originator and first inventor or discoverer of any material and substantial part of the thing patented; or, fifth, that it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public. And in notices as to proof of previous invention, knowledge or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defenses may be pleaded in any suit in equity for relief against an alleged in

33 Blue Goose Mining Co. V. Northern Light Mining Co., C. C. A., 245 Fed. 727.

34 Ibid.

35 De Bearn v. Safe Deposit & Tr. Co. of Baltimore, 233 U. S. 24. 36 Infra, § 329a.

fringement; and proofs of the same may be given upon like notice, in the answer of the defendant, and with the like effect."1

Inconsistent defenses may be pleaded.2 The defendant may deny complainant's title and allege that he owns the patent and also deny its validity.3 The respondent cannot set up as a defense that if complainant's patent be so construed has to cover the machine made and sold by him, then the machine embraced in said patent was known and used prior to the invention thereof by the patentee. It has been held that defenses impugning the validity of complainant's patent and the defense of non-infringement, are not waived by a further defense of license. It was held at common law that the defendant might plead the general issue, and also a special plea that the combination covered by the patent was not an invention, and a further plea that the invention was not patentable."

A denial in the answer in a suit for infringement of a patent that the patentee was the first inventor of the improvement described in the patent named in the bill, specifying it by number, is sufficient to raise the issue of invention, although the title of the patent as stated in the answer may be technically inaccurate. Where a bill alleged past and present infringement, and that defendant then had on hand a large number of infringing machines which it was offering for sale, it was held: that an answer which admitted that defendant had previously sold a machine which had been adjudged an infringement, but alleged that it had ceased selling the same "long prior" to the beginning of the suit and returned the parts on hand to the manufacturer, and since "that time" had sold no machines of

$188. 1 U. S. R. S., § 4920. Cf. Anderson v. Miller, 129 U. S. 70, 32 L. ed. 635.

2 Eq. Rule 30, supra, § 175. Under the former rule it was said that "the respondent cannot set up as a defense that if complainant's patent be So construed as to cover the machine made and sold by him, then the machine embraced in said patent was known and used prior to the invention thereof by the patentee."' Graham v. Mason, 4 Cliff. 88.

3 Cleveland Eng. Co. v. Galion Dynamic Motor Truck Co., 243 Fed. 405.

4 Graham v. Mason, 4 Cliff. 88. 5 Nat. Mfg. Co. v. Meyers, 7 Fed. 355.

6 Niagara Fire Extinguisher Co. v. Hibbard, C. C. A., 179 Fed. 844.

7 Brickill v. Hartford, 57 Fed. 216; Blackedge v. J. M. Shock Absorber Co., 213 Fed. 478.

8 Robinson v. American Car & Foundry Co., C. C. A., 135 Fed. 693.

that character, was indefinite and evasive and not responsive, and must be treated as admitting the averment that defendant had infringing machines on hand which it was offering for sale.9 Where the answer alleged that the patented machine had been used by the defendant before the application for the patent and that he was its inventor, upon his failure to sustain such allegation, it was held that there was such an admission of infringement as entitled the complainant to a decree against him.10 When defendants avoided answering specific interrogatories concerning a charged infringement, but merely denied the use of any machinery “in violation and infringement of any rights of the plaintiff, or that they are using, or have made, or sold, or used any machines not protected or covered by the proviso in the act of Congress;" it was said that they thereby presumptively admitted the infringement charged.11

The patentee who has assigned his patent 12 or a licensee whose license has not been repudiated 13 cannot contest its validity in a suit for its infringement.14 The same rule applies to the licensee of the assignor 15 and to the employer of the assignor who has instructed the latter to design a competing device which will avoid infringement.16 The estoppel does not prevent the assignor or

9 Deere & Webber Co. v. Dowagiac Mfg. Co., C. C. A., 153 Fed. 177.

10 Reed v. Cropp Concrete Machinery Co., C. C. A., 225 Fed. 764.

11 Agawam Co. v. Jordan, 7 Wall. 583, 609, 19 L. ed. 177, 184. An admission in an answer that the defendant had made locks of the kind described in the patent sued upon, "is satisfied by assuming that the smallest number of locks were made consistent with the use of that word in the plural, and with the use by the defendants of any part of the patent which is valid." See Miller, J., in Jones v. Morehead, 1 Wall. 155, 165, 17 L. ed. 662, 664. But compare Troy I. & N. Factory v. Corning, 6 Blatchf. 328, 336, 337.

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thaler Linotype Co. v. Int. T. Mach. Co., 229 Fed. 168; Leader Plow Co. v. Bridgewater Plow Co., C. C. A., 237 Fed. 376. It has been held that the assignor of a patent cannot sue his assignee for infringement of an older and broader patent subsequently acquired by him covering the same invention when the assig nee has acted within the limits of the patent assigned. United Printing Mach. Co. v. Cross Paper Feeder Co., 220 Fed. 322.

13 Martin v. New Trinidad Lake Asphalt Co., 255 Fed. 93.

14 Mergenthaler Linotype Co. v. Int. Typesetting Mach. Co., 229 Fed. 168.

15 Leader Plow Co. v. Bridgewater Plow Co., C. C. A., 237 Fed. 376. 16 Babcock & Wilcox Co. v. Toledo Boiler Works Co., C. C. A., 170

licensee from proving the state of the prior art for the purpose of limiting the scope of the patent. Nor from denying the infringement.17 A complainant is not estopped to attack a patent, introduced by defendant as part of the prior art, which was originally pleaded in the bill but afterwards abandoned.18 It has been held that the assignor cannot escape the estoppel by alleging that he was induced to part with the patent by unfair representations.19 But in a later case a defendant was permitted to deny the complainant's title to the patent and in a counterclaim allege equitable ownership in itself and pray for a decree quieting its title.20 An allegation in an answer to a suit for infringement that the Government had begun a suit for the dissolution of the complainant company as an illegal monopoly was held to be irrelevant.21 In a suit for the cancellation of an interfering patent the answer may allege any objection to the validity of the patent of the complainant ;22 it was held that in such a suit allegations as to the decision of questions in a prior suit between different parties were irrelevant.23

The notice required by the rule, need not be under oath, and a consent to an order that the answer be considered as amended by the insertion of such defense and notice is a waiver of any further oath.24 Under this statute it has been held that no evidence can be admitted in support of any of these defenses unless it has been properly pleaded and the requisite notice has been given to the complainant; 25 the complainant's patent is then prima facie

Fed. 81; Standard Plunger Elevator Co. v. Stokes, C. C. A., 212 Fed. 941; Mergenthaler Linotype Co. v. Int. Typesetting Mach. Co., 229 Fed. 168, 172; H. D. Smith & Co. v. Southington Mfg. Co., C. C. A., 247 Fed. 342.

17 H. D. Smith & Co., v. Southing ton Mfg. Co., C. C. A., 247 Fed. 342; Moon-Hopkins Billing Mach. Co. v. Dalton Adding Mach. Co., C. C. A., 236 Fed. 936.

18 Mergenthaler Linotype Co. v. Int. Typesetting Mach. Co., 229 Fed. 168, 173.

19 Vacuum Eng. Co. v. Dunn, C. C. A., 209 Fed. 219.

20 Cleveland Eng. Co. v. Galion D. M. Truck Co., 243 Fed. 405.

21 Motion Pict. Patent Co. V. Eclair Film Co., 208 Fed. 416.

22 Nikola Tesla Co. v. Marconi Wireless Tel. Co., 227 Fed. 903.

23 Nikola Tesla Co. v. Marconi Wireless Tel. Co., 227 Fed. 903. See infra, § 237.

24 Campbell v. Mayor of N. Y., 45 Fed. 243.

25 Teese v. Huntington, 23 How. 2, 16 L. ed. 479; Agawam Co. v. Jordan, 7 Wall. 583, 19 L. ed. 177; Blanchard v. Putnam, 8 Wall. 420, 19 L. ed. 433; Bates v. Coe, 98 U. S. 31, 25 L. ed. 68; Pitts v. Ed

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