Stirrat v. Excelsior Manuf'g Co.

44 F. 142, 1890 U.S. App. LEXIS 1822

• Court: U.S. Circuit Court for the District of Eastern Missouri
• Decided: October 2, 1890
• Status: Published

Opinion

Miller, Justice,

(orally.') In this case a demurrer to the bill was submitted to us on yesterday. The first ground of demurrer is that while this is a patent case brought to restrain an infringement of complainants’ patent, yet the patent itself is not set out in the bill, or attached thereto, as an exhibit, nor does the bill contain any substantial description of the complainants’ invention. Of course, it is open to demurrer on that account, as has several times been decided. The complainants’ counsel admitted as much on the argument, and that point of the demurrer must be sustained.

Another point of the demurrer is addressed to what appears to be a kind of second clause in the bill. In this clause complainants aver that, when their application was on file in the patent-office, O’Keefe and Fil-ley filed an-application for-a patent on the same device; that an interference.was declared between the two applications, and that such proceedings were had in the patent-office, that complainants’ claims were sustained and a patent awarded to them; and that, subsequently, a subsidiary patent was awarded to O’Keefe and Filley covering mere details of construction. The clause of the bill in question further alleges th¿at the defendant company now pretends to be manufacturing the alleged infringing device under the O’Keefe and Filley patent. We do ■not see what that clause of the bill has to do with the case. It certainly does not show any independent right to equitable relief, nor do we see that it strengthens the right-to relief under the other averments of the bill. For the purpose of determining what construction or breadth should be given to the claims of the respective patents, it may be proper or even necessary, on final hearing, to consider what took place in the patent office when the interference proceedings were pending. But we see no occasion to make any mention of those proceedings in the bill. The trouble with this branch of the demurrer is, however, that the clause in question is mere' surplusage, and the point attempted to be raised oannot well be raised by demurrer. It can only be raised by way of exceptions to the bill. Although the clause in question, under the view we take of it, has no place in the bill, for the reasons above stated, yet we do not see how we can well sustain this point of the demurrer. Tf I. were the pleader in the case I would file a new bill omitting the objectionable matter. As it is, the complainants will have to file a new bill, inasmuch as the first point of the demurrer is sustained, and we will make no order on the other point of the demurrer. Lot the entry be that the first point of the demurrer is sustained, with leave to complainants to file an amended bill on or before October 20th.