vention.69 It was held that evidence that the owner of the patent had made but had ceased to make the patented article was not admissible as tending to prove its inutility.70 Where there was a dispute as to the usefulness of the invention and it appeared that neither the patentee nor any subsequent owner had used it practically it was held that the owner had failed to produce convincing evidence which was within his possession and that the fullest weight must be given to the defendant's proofs.71

The plaintiff has the burden of proof as to infringement, even when the defendant pleads a license as well as non-infringement.72 Where the answer admitted that defendant, during the time alleged in the bill, had made and used articles conforming to the claims of the patent, no further proof on the issue of infringement was required from complainant,73 Where the defendant in its proposal for a Government contract which had been accepted specified a machine which would have infringed the patent, in the absence of evidence from the defendant showing what machine it furnished under the contract, the Court found an infringement.74 Proof that defendant's device was made under a later patent does not create a presumption of noninfringement.75

The defendant has the burden of proving the defenses of anticipation and prior use beyond a reasonable doubt.76

69 Ibid.

70 Ibid.

71 Troy Laundry Mach. Co. v. Columbia Mfg. Co., 217 Fed. 787.

72 Niagara Fire Extinguisher Co. v. Hibbard, C. C. A., 179 Fed. 844. 73 Fox v. Knickerbocker Engraving Co., C. C. A., 165 Fed. 442. In a suit for infringement against the Hygienic Chemical Company of New York, where it was shown that defendant was a selling company only, while the Hygienic Chemical Company of New Jersey was a facturing company only, the testimony of a witness that he pur chased an article shown to be an infringement from the "Hygienic Chemical Company" in New York

manu

is sufficient, prima facie, to establish infringement by the defendant. Rumford Chemical Works v. Hygienic Chemical Co., C. C. A., 159 Fed. 436.

74 Int. Curtis Marine Turbine Co. v. William Cramp & Sons Ship & Eng. Bldg. Co., C. C. A., 202 Fed. 932.

75 Simplex Window Co. v. Hauser Reversible Window Co., C. C. A., 248 Fed. 919.

76 Beckwith V. Malleable Iron Range Co., 174 Fed. 1001; Diamond Patent Co. v. S. E. Carr Co., C. C. A., 217 Fed. 400; A. B. Dick Co. v. Underwood Typewriter Co., 246 Fed. 309; Taignian v. Desure, C. C. A., 253 Fed. 364.

A plea to a bill for an injunction to restrain the infringement of a reissued patent, which set up that the claim had been unlawfully expanded so as to embrace subsequent improvements covered by later patents, was held good." A plea to a bill filed under section 4918 of the Revised Statutes against the owner of a patent interfering with that of the complainant, which set up that the invention described in the complainant's patent was described in a previous English patent published in the United States, and filed in the Patent Office here before the issue of the complainant's patent, was held bad and overruled.78

2

§ 189. Proceedings to compel answer. By the Equity Rules of 1912, if the defendant fails to file his answer or other defense to the bill in the clerk's office within the time named in the subpoena, "the plaintiff may, at his election, take an order as of course that the bill be taken pro confesso; and thereupon the cause shall be proceeded in ex parte."1 "Averments other than of value or amount of damage, if not denied, shall be deemed confessed, except as against an infant, lunatic or other person non compos and not under guardianship." They contain no other provision for proceedings to compel an answer. By the rules of 1842: "The plaintiff, if he requires any discovery or answer to enable him to obtain a proper decree, shall be entitled to process of attachment against the defendant to compel an answer, and the defendant shall not, when arrested upon such process, be discharged therefrom, unless upon filing his answer, or otherwise complying with such order as the court or a judge thereof may direct, as to pleading to or fully answering the bill, within. a period to be fixed by the court or judge, and undertaking to speed the cause. The ancient practice upon the subject was substantially the same. If the defendant did not file an answer within due time, he was in contempt and an attachment was issued against him.4 If the sheriff was unable to attach the defendant and returned accordingly non est inventus, a commis

3

77 Hubbell v. De Land, 14 Fed. 471.

78 Pentlarge v. Pentlarge, 19 Fed. 817; s. c., 22 Fed. 412. But see Foster v. Lindsay, 3 Dill. 126, 131. § 189. 1 Eq. Rule 16.

2 Eq. Rule 30.

3 Eq. Rule 18 of 1842.

4 Matter of Vanderbilt, 4 J. Ch. (N. Y.) 58. See Daniell's Ch. Pr., (First Am. ed.) 538.

sion of rebellion would issue.5 If that proved insufficient, it was followed by a writ of sequestration.6

§ 190. Frame of answer. An answer should be entitled in the cause, so as to agree with the names of the parties as they appear in the bill at the time the answer is filed.1 It seems that the defendant may not correct or alter the names of the parties as they appear in the bill, and that if there is a mistake he must correct it in the part following the title of the cause; thus, "The answer of the defendants, the mayor, aldermen, and commonalty in the bill called the mayor, aldermen, and citizens of the city of New York." 2 The answer should begin substantially thus: "The answer of John Aber, one of the above-named defendants, to the bill of complaint of the abovenamed plaintiff;" if the bill has been amended after answer, "to the amended bill of complaint. 113 A female defendant who has married since the filing of the bill, usually begins: "The answer of John Aber and Anna, his wife, lately in the bill called Anna Brown, spinster," or widow, as the case may be. A title, "the several answer of John Peck, Esq., one of the defendants to the bill of complaint of Anna Baines, alias Green, assuming to herself the name of Anna Peck, as pretended wife of John Peck, Esq., deceased, and of Anna Maria Green, assuming to herself the name of Anna Maria Peck, as daughter of the said John Peck, Esq., deceased," was held scandalous.5 An answer by a person defending by guardian or next friend should state that fact: "James Fifield by Edward Jennings, his next friend."6 If two or more defendants join in the same answer, it usually begins, "The joint and several answer;"7 unless they are husband and wife, when it is "The joint answer;'

5 Boudinot v. Symmes, Wall. C. C. 139; Smith's Ch. Pr. (2d ed., 1837), 183, 186.

6 Smith's Ch. Pr., (Second ed. 1837) 183-188; Daniell's Ch. Pr., (First Am, ed) 543; Davis v. Hammond, 5 Sim. 9.

$ 190. 1 Daniell's Ch. Pr. (5th Am. ed.) 731.

2 Atty. Gen. v. Worcester Corp. 1 C. P. Cooper, 18; Daniell's Ch. Pi. (5th Am. ed.) 731.

3 Daniell's Ch. Pr. (5th Am. ed.) 731; Rigby v. Rigby, 9 Beav. 311, 313.

4 Daniell's Ch. Pr. (5th Am ed.) 731.

5 Peck v. Peck, Moseley, 45.

6 Daniell's Ch. Pr. (5th Am. d.) 731.

7 Davis v. Davidson, 4 McLean, 136.

8 Daniell's Ch. Pr. (5th Am. ed.) 731.

but an answer is not defective if put in by several as a joint answer merely.9

When discovery is required, all of the defendants who join in an answer must swear to the same.10 When the same solicitor is employed for two or more defendants, and separate answers are filed, or other proceedings had by two or more defendants separately, costs, were under the practice in chancery, not allowed for such separate answers or other proceedings, unless a master, upon reference to him, certified that such separate answers and other proceedings were necessary or proper, and ought not to have been joined together.11

Next followed formerly a clause reserving to the defendant any and all advantages that might be taken by exception to the bill.12 This was always useless 13 and is forbidden by the Equity Rules of 1912.14

Then comes the substantive part of the answer, setting up the matters of affirmative defense and giving the discovery required.15

Next should be inserted any counter-claim or set-off upon which the defendant relies.16 It is the safer practice to specifically describe the matter thus pleaded as a counter-claim or setoff, as the case may be.17

The answer usually closes with a general traverse inserted out of abundant caution, denying the unlawful combination charged in the bill, and all other matters therein contained.18

In the answers of infants and other persons under a disability, the reservation and general traverse have always been deemed properly omitted.19 The answer in such cases generally is that the infant knows nothing of the matter, and therefore neither admits nor denies the charges, but leaves the plaintiff to prove

9 Davis v. Davidson, 4 McLean, 136.

10 Bailey W. M. Co. v. Young, 12 Blatchf. 199.

11 Rule 62.

12 Mitford's Pl., ch. 2, § 2, part

3; Story's Eq. Pl., § 870.

13 Story's Eq. Pl., § 870; Rules 39, 44.

14 Eq. Rule. 30.

15 Mitford's Pl. ch. 2, § 2, part 3. 16 See Eq. Rule 30.

17 Bates v. Rosekrans, 37 N. Y. 409; Ward v. Conegys, 2 How. Pr. N. S. (N. Y.) 428; Burke v. Thorne, 44 Barb. (N. Y.) 363; Burral v. De Groot, 5 Duer (N. Y.) 379; Equitable Life Ass'n. v. Cuyler, 75 N. Y. 511, affirming 12 Hun, 247. But see Acer v. Hotchkiss, 97 N. Y. 395. 18 Mitford's Pl., ch. 2, § 2, part 3, Story's Eq. Pl., § 870.

19 Story's Eq. Pl., § 871.

them as he shall be advised, and throws himself on the protection of the court.2 20 But if such a defendant has any substantive defense, he should plead the same.21

§ 191. Signature and seal to answer. The answer must be signed individually by one or more solicitors of record.1 It has been held that under the new rules the defendant need not sign the answer. If the former practice is followed, an answer must be signed by the defendant, making it; even, it seems, when an answer under oath has been waived,3 unless he answers by guardian, when the latter should sign it, or unless an order has been obtained dispensing with such signature on account of the defendant's absence, or for some other reason. A person answering in a dual capacity need sign but once. An answer by a cor

poration must be under its corporate seal. In such a case it is advisable to have the seal attested by one of the corporate officers. When an answer is made without oath, the signature of the defendant should also be attested. This is usually done by his solicitor.10

§ 192. Oath to answer. Under the former practice, unless an answer, under oath, was waived in the bill, a defendant, if a natural person, was obliged to swear; or if conscientiously scrupulous of taking an oath, in lieu thereof to make solemn affirmation to the truth of the facts stated by him.2 No oath was necessary to an answer by a corporation.3

V.

20 Chancellor Kent in Mills Dennis, 3 J. Ch. (N. Y.) 367, 368. 21 Holden v. Hearn, 1 Beav. 445, 455; Lane v. Hardwicke, 9 Beav. 148, 149.

$191. 1 Eq. Rule 24.

2 Kinney v. Rice, 238 Fed. 441. 3 Story's Eq. Pl., § 875; Davis v. Davidson, 4 McLean, 136; Bayley v. De Walkiers, 10 Ves. 441; Fulton Bank v. Beach, 2 Paige (N. Y.), 307; Denison v. Bassford, 7 Paige (N. Y.), 370.

4 Anon., 2 J. & W. 553; Daniell's Ch. Pr. (5th Am. ed.) 733.

5 Story's Eq. Pl., § 875;

Lake, 6 Ves. 171;

6 Ves. 285.

6 Anon., 2 J. & W. 553.

V.

v. Gwillim,

7 Haight v. Proprietors Morris Aqueduct, 4 Wash. 601, 605; Monarch Vacuum Cleaner Co. v. Cacuum Cleaner Co., 194 Fed. 172.

8 Daniell's Ch. Pr. (5th Am. ed.) 735, note 2.

9 Daniell's Ch. Pr. (5th Am. ed.) 738.

10 Daniell's Ch. Pr. (5th Am. ed.) 738.

§ 192. 1 Fulton Bank v. Beach, 2 Paige (N. Y.) 307; Daniell's Ch. Pr., (5th Am. ed.) 735.

2 Eq. Rule 91 of 1842, which so far as it applies to cases in which an oath is required, re-enacted in Eq. Rule 78 of 1912. See U. S. R. S. § 5013.

3 Union Bank of Georgetown v.