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in such matter. This is quite true if we but realized that under Rule 48 the plaintiff is merely required to make out his prima facie case as to infringement; assuming, of course, that the acts of infringement are within the knowledge of the plaintiff. The latter is not concerned for the time being with the defendants prior uses; plaintiff does need to know the extent and character of the prior use in time to prepare intelligently for trial. But presumably the defendant's expert will of necessity in his affidavit, fully outline the nature and character of the prior use. Hence the plaintiff then has an opportunity before trial to make full answer thereto so that the danger of surprise that might otherwise be possible if the nature of the prior use were left until the time of the trial, may be wholly avoided by timely action taken by plaintiff to apply to have the case placed subject to Rule 48.
While Rule 48 is in no correct sense a discovery in the usual meaning of the word, yet by proceeding under it the need for discovery, as far as prior user is concerned, is in a large measure obviated. In other words, it is an insurance to the plaintiff against surprise at the trial and in that respect it is an effective discovery to him.
EQUITY RULES 25 AND 30. Likewise the rulings of certain of the courts under Rules 25 and 30 concerning the form and substance of bills and answers are in the line of discovery for one or the other of the parties. Here we see a further radical departure from the old practice and one whose possibilities have not yet fully been exploited or defined.
The only reported case in which this matter has been considered, bearing on the subject of discovery or further particulars against surprise is that of
Coulston et al. vs. H. Franke Steel Range Co., Inc., 221 Fed. 669 (March 8, 1915). This was on a motion of plaintiff that the defendant be required to make its answer more definite and certain by setting forth in what respects each of the patents, pleaded in the answer as anticipations, discloses any of the elements or combinations of elements described in plaintiff's letters patent and in what respect they negative the novelty and invention of the device of the patent.
The court points out that the apparent purpose of the rule is to establish in equity cases in the federal courts some of the short cuts provided by the state codes. It further illustrates the abuse, detail, expense and burden to courts and litigants by the old practice of setting out numerous patents in an answer and then only relying on a limited number, if any of them. Such practice leaves the court, when hearing the testimony, wholly in the dark as to what may be relevant and what irrelevant.
Judge Clarke says:
“ I am convinced that it was the purpose of the new rules to require that counsel shall so study the patents on which they intend to rely that in their pleadings they can state in short and simple terms what they claim with respect to them, rather than to defer such study until after a record is made up of volumes of irrelevant matter, and then, by study and analysis, to pick out what is essential to a decision of the case. ..
“ This court cannot refrain from observing in this connection that the old notion that a suit at law or in equity is chiefly a game affording an opportunity for the matching of wits of counsel and for the exercise of the ingenuity of courts is fast giving place to the conception that suits both at law and in equity should be sincere and candid attempts to reach the real point of difference between the parties to them, and to secure a just settlement of such difference.”
With these thoughts in mind, it is not at all surprising that the court allowed the motion of plaintiff.
Thereupon the defendant, acting on the suggestion of the judge, made a motion that the plaintiff in turn, in his complaint, set out in plain terms what new and inventive contribution to the old art was made by the patentee and disclosed in the patent and claimed to be infringed by the defendant; in other words, to require the plaintiff to point out what was the real invention of the patent and claims sued on.
Defendant's motion was granted, and the court for the Northern District of Ohio drafted the following rule governing patent pleadings in that jurisdiction:
“ Counsel are advised that hereafter in pleading in patent cases the provisions of new Equity Rules No. 25 and No. 30 must be strictly complied with, requiring 'a short and simple statement of the ultimate facts upon which the plaintiff asks relief,' and a statement in short and simple terms of the defense to each claim asserted in the bill.
“A general reference to a patent will not be accepted as a sufficiently definite compliance with these rules.”
While the theory of requiring the plaintiff to definitely define his invention in his complaint is good, it is unquestionably an assumption by plaintiff of the prerogative of the court to attempt to construe his patent; the patent being the best evidence of its legal effect, and this legal effect varying with the quality of the prior art developed by the defendant aside from any showing of the file wrapper of the patent. If the rule requiring the pleading of a patent, also required a reference to the file wrapper as construing it so as to make the file contents a part of the bill, an immense step forward would be taken towards informing the court ab initio of the scope and character of the patent. Of course few plaintiffs desire to do that unless the file wrapper were very much in their favor, but that would be the very reason for bringing the file wrapper before the court by the plaintiff, both for the purpose of informing the court and the defendant.
The order entered in the Coulston case, as far as it relates to the plaintiff, is largely, if not wholly, an empty one, for a plaintiff will naturally shape the definition of his invention to suit his own ends. Even if he may have reason to suspect that the defendant will rely on certain evidence to limit his patent, it is not seen how he can be required to anticipate such a defense. In addition to that, it is abhorrent to the rule that a plaintiff cannot be compelled to forecast with absolute certainty the theory of either the law or the facts which he will finally be compelled to unfold at the trial.”
In conclusion I cannot better express the purpose and intent of the new rules, and the duty entailed upon all of us as members of the Bar, than to quote the concluding words of Judge Clarke in the Coulston case:
20 To quote from the recent case of
Gimbel Bros., Inc., vs. Adams Express Co., 217 Fed. 318: “We cannot subscribe to the proposition that a plaintiff can be compelled to attempt to forecast, with absolute accuracy, the theory of either the law or the facts which he will be finally compelled to unfold at the trial. If he was so compelled and did not accurately forecast the theories, both of law and of fact, which he finally at the trial determines to be the true ones, he would be driven to an amendment of his pleadings. It is permissible for him to so state the facts as to leave him free to evolve any theory at the trial which is supported by them. The practical conditions of the trial compel him eventually to make an election among the possible theories on which the case may be tried, but he is under no compulsion to make his election in advance of the trial.”
“.... the application of the new equity rules to patent cases should command the cordial support and assistance of the Bar, without which, of course, judges will be in large part powerless to give them full effect. It may be that there is much in the claim often made that the new equity rules cannot be successfully applied to pleading in patent cases, but several judges throughout the country, notably in the Southern District of New York and in Massachusetts, are making a determined effort to give the application of them to such cases a fair trial. With this effort this court is in entire sympathy, both for its conviction that it is its duty to give effect to these rules prescribed by the Supreme Court of the United States, and also because of its conviction that their application to such cases will greatly curtail the extent of records made up in them, and so the expense to litigants, and will result in a genuine reform, leading to a more prompt decision of cases, and also to a large measure of justice in the determination of them. Delay of decision and excessive cost often defeat justice.” PROCEEDINGS
Meeting of the Judicial Section of the American Bar Association was held at the Hotel Utah, on Tuesday, August 17, 1915, at two o'clock in the afternoon.
Orrin N. Carter, Judge of the Supreme Court of Illinois, presided as Chairman.
While it is not a part of the arrangement that we undertake to transact a little business at this time, on account of the necessity of expediting matters, I think it would be well before the annual address is given to have a Nominating Committee appointed, so that they can report before we begin our general discussion.
Judge Ira E. Robinson, of West Virginia:
Mr. 'Chairman, I move that the Chair be authorized to appoint a Nominating Committee of five.
Motion seconded, put and unanimously carried.
The names of this committee will be announced later. I regret to announce that Mr. Justice Van Devanter, of the . United States Supreme Court, will not be here to address us. No doubt all of you noted that in the first announcement sent out to the judges it was stated that he was to give the annual address, if he could make his other arrangements fit in. Since then matters have arisen which have made it impossible for him to be here—much to his regret, but much more to our regret. I had also arranged with former President William H. Taft to speak to this Section, as he did last year at Washington, but just before I left Chicago I received a letter from Judge Taft stating it would be impossible for him to be here in time to be