Page:Federal Reporter, 1st Series, Volume 9.djvu/461

446 FEDERAL REPORTER. �the plea, and there is no answer to the bill or to any part of it. The plaintiff moves that the plea be stricken from the files as improper, or else be ordered to stand as an answer. �The defendants show by affidavits that they are advised and be- lieve that the stoves they have made were not infringements of the patent sued on ; that by the advice of their counsel, and for the pur- pose of avoiding expense to both parties, the single defence of non- infringement was interposed in the form of a plea; that the defend-- ants have other defences which they wish to embody in an answer, nhould it be necesaary for them to answer, the naost important of which defences are prior patents anticipating the plaintiff's patent, and also limiting its scope so as to render infringement impossible, and prior knowledge on the part of varions individuals; and that to take evidence in regard to all such prior patents and prior knowledge would be very expensive to both parties. The defendants contend that the plea is a proper one ; that it was not necessary for the plea to be supported by an answer, even under the old equity praotice ; that under the equity rules prescribed by the supreme court of the United States, no plea is to be accompanied by an answer, except where fraud or combination is alleged in the bill ; and that, even if the plea be defeetive in form or substance, or if it should have been supported by an answer, the plaintiff bas mistaken his remedy. �No authority is cited where a plea like the present one has been put in or allowed in a suit for the infringement of a patent. By equity rule 34, if a plea is overruled, either on an issue of law or an issue of fact in regard to it, the defendant has an absolute right to put in an answer to the bill, or to so much thereof as is covered by the plea. By equity rule 39 a defendant has a right, in all cases, to insist by answer upon all matters of defence (not being matters of abatement, or to the character of the parties, or matters of form) in bar of or to the merits of the bill, of which he may be entitled to avail himself by a plea in bar. If the present plea should be tried on the fact of infringement, and the issue be found for the plaintiff, and the plea be thus overruled, it would seem difficult, under the above rules, to exolude defendant from contesting again, under an answer, the question of infringement, especially as, under the issues raised by an answer, and under the light thrown on the subject by the proofs on the issue on the plea, and under new proofs on the issues on the answer, the question of infringement might be presented in a very different light from that in which it was presented on the trial of the issue on the plea, and in one much more favorable to the ��� �