Lange v. McGuin

BAKER, Circuit Judge (after stating the facts as above). The office of a general demurrer to a bill is to test the legal sufficiency of the averments to state a good cause of action in equity. Of course, a demurrer may be addressed to a bill for infringement of a patent as well as to any other bill. And, though the bill be in due form and complete in all its parts, yet, if the exhibited patent be inevitably void either on its face or by reason of matters of universal knowledge, the demurrer should be sustained. Thus, if a design patent claims a monopoly, not merely of the particular arrangement of parallel lines pictured and described in the specification, but also of every variety of arrangement that can be effected by the use of parallel lines, such a claim is void, because it is beyond the legal scope of a design patent. N. Y. Belting Co. v. N. J. Rubber Co., 137 U. S. 445, 11 Sup. Ct. 193, 34 L. Ed. 74_ . _ Again, if an inventor devises a machine which in a process of manufacture does better, quicker, and cheaper work than had been done in the same process previously carried out by hand, he cannot hold a process patent, for the reason that the advantages of a better product more quickly and cheaply made are the result, not of a new or improved process, but of the superiority of machine work over hand work in the same steps of manufacture. Risdon Locomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745, 39 L. Ed. 899. So, also, if concededly old elements are brought together, not in the co-operative union of a true combination, but in the forced relationship of a mere aggregation, a patent therefore is void, because a patent cannot lawfully be issued for an aggregation. Richards v. Chase Elevator Co., 158 U. S. 299, 15 Sup. Ct. 831, 39 L. Ed. 991. In each of the above-cited instances the patent was void on its face as a matter of law. No amount of testimony could have affected the result, for testimony is powerless to enlarge or diminish the statutory warrant for the issuance of patents. But here the patent is hot void on its face as a matter of law. What is described in the patent as a process is sucia a matter as under the law might be claimed and protected as a process, if the patentee was in fact the first and true deviser thereof, and if the devising required the exercise of the inventive faculty. Therefore, if the patent in suit is void, it must be so on account of matters of fact dehors the patent — defenses of anticipation and want of invention as matters of fact. Bills in patent causes and demurrers thereto are not so unique that they are exempt from the general principles and rules of equity pleading. And therein it is not the province of a demurrer to speak of matters beyond the bill. Of coursé, every bill is written against the background of common knowledge; and in that view a demurrer may be said to invite the chancellor to take judicial notice of the background. But if a bill, in and by its own averments, states a prima facie case, that case cannot properly be overthrown by the chancellor merely ón the ground that he judicially knows of facts that would support an answer. His judicial knowledge must go farther, and be so broad and'all-embracing that he can properly hold that no facts exist that would tend to controvert the supposed answer and support a replication and the [223] bill. This is so because, if such facts exist, the complainant is entitled to a hearing where he can present and argue the facts, and such a hearing cannot be had on demurrer to the bill.1 Respecting the defense of anticipation, no facts of alleged common knowledge have been brought to our notice which inevitably establish that the patented “process for recovering spirits front internally charred liquor casks which have been once used” had ever been described or employed by any one before appellant. The “grogging,” of British excise slang, started with pouring hot water into the cask. Where it continued and ended we do not know. Appellant’s very process may have been carried out, but the dictionary does not say so. In the common household processes of soaking and rinsing to remove grease and dirt from vessels, we do not conclusively see an application, as in appellant's process, of the natural principle of diffusion of liquids by molecular attraction operating regardless of gravity. Respecting the defense of want of invention, we might think that, in view of the common facts above stated, of the well-known law of diffusion of liquids, and of the application of that law to the extraction of sugar from cane as early as 1807, the application in 1908 of the same law to the extraction of liquor from the cells of charred wood was not an inventive act. Grant that that is a strong and persuasive showing ; but it is a showing of the kind that ordinarily must be made by evidence in support of an answer — that must always be so made except in the extremely rare case where judicial knowledge, extends to the point of knowing that no competent and relevant evidence in support of the patent’s presumptive validity can be, produced. The Patent Office is conducted by experts who have access there to almost endless words and things respecting the prior stages in all the arts. Suppose the records of prior efforts in the art of extracting liquor from the charred interior of casks should disclose that, although the process of extracting sugar from cane by endosmosis and exosmosis was known in 1807, yet in this art such a process had never been suggested or used by any one before appellant, but that radically different, slower, less efficient, more expensive processes had been used, while there had been a succession of unsuccessful efforts to find a quicker, cheaper, more efficient process — would not such evidence be competent in rebuttal of defendants’ case? Clearly, on issues joined, it would be error to reject it. How much of such evidence was before the Patent Office experts when they made their finding of fact respecting invention we do not know, for it is not a matter of common knowledge, but of special information. That there was any such evidence we do not properly know, for, of course, the Circuit Court was right in striking out the file wrapper and contents and the prior patents as amendments [224] to the bill (it still being improper to plead evidence); but it is enough to require the overruling of a demurrer for want of invention in fact that we are unable to find conclusive ground for saying in advance that no competent evidence can be produced to aid the patent’s presumptive validity; The decree is reversed, with the direction to overrule the demurrer. Footnotes [1] See American Fibre-Chamois Co. v. Buckskin Fibre Co., 72 Fed. 508, 18 C. C. A. 662; Caldwell v. Powell, 73 Fed. 488. 19 C. C. A. 592; Higgin Mfg. Co. v. Scherer, 100 Fed. 459, 40 C. C. A. 491 ; Beer v. Walbridge, 100 Fed. 465. 40 C. C. A. 496; Milner Seating Co. v. Yesbera, 111 Fed. 386, 49 C. C. A. 397; Chinnock v. Patterson Tel. Co., 112 Fed. 531. 50 C. C. A. 384; General Electric Co. v. Campbell (C. C.) 137 Fed. 600; Southern Plow Co. v. Atlanta Agric. Works (C. C.) 165 Fed. 214; Neidich v. Edwards CC. (C. C.) 169 Fed. 424; Westrumite Co. v. Com'rs Lincoln Park (C. C. A.) 174 Fed. 144.