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November 18, 1935


The opinion of the court was delivered by: KNIGHT

KNIGHT, District Judge.

The plaintiff moves by separate motions (1) to compel the defendant to serve a bill of particulars; (2) to strike out certain paragraphs of the answer; and (3) to strike certain of defendant's interrogatories.

It is important at the outset to have a general idea of the matters at issue. The suit is for the infringement of patent No. 1,521,575, an improvement in filters for purifying air. The application for patent was filed in 1921. It is claimed that it combines the subject-matter of two German applications filed in 1915 and 1919, respectively. In 1915 a German application was filed by one Heinrich Wittemeier, and in 1919 German application was filed by Deutsche Luftfilter, Baugesellschaft, commonly termed Delbag. The United States application was filed by Hans Wittemeier, and he claims to be the inventor of the subject-matter of the application and claims the German application filing dates as priority dates for this patent, under the provisions of the Nolan Act (35 U.S.C.A. §§ 80-87). Claims 7 and 8 of the patent in suit are the only claims involved herein, and they are alleged to involve only the subject-matter of the Delbag application. The motions will be considered in a single opinion and in the order in which they have been hereinbefore stated.

 Upon the motion for a bill of particulars, the court holds:

 (1) The request for direction to produce copy of a letter to which reference is made in paragraph 8 of the answer is denied.This denial is based upon the rule where the information sought is either peculiarly within the knowledge of the moving party or where such party has equal opportunity for knowledge, the request should be denied.

 Defendant is directed to state in what respects the letter hereinbefore mentioned is inadequate or insufficient as a notice of the alleged infringement of the patent in suit. This allegation with reference to the letter supposes the proof of an intermediate ultimate fact. As such, it is subject to a bill of particulars under Equity Rule 20 (28 U.S.C.A. following section 723). A bill of particulars in this respect will serve to clarify and simplify the issues. It will not compel the exposure of defendant's theory of a defense. Universal Oil Products Co. v. Skelly Oil Co. (D.C.) 12 F.2d 271.

 (2) Paragraph 18 of the answer alleges that the inventor of the patent in suit did not file a complete application within the operative Nolan Act period. The facts to support this conclusion are properly the subject of inquiry by a bill of particulars with the purpose of narrowing and simplifying the issues.

 (3) Paragraph 22 of the answer alleges that the Commissioner of Patents has exceeded his legal authority in the issuance of a patent in "that there was no compliance with the statute for prerequisites to the issue of a proper patent." What has been said in 1 and 2 hereinbefore applies to this paragraph of the pleading. Defendant should state the respects in which there was a failure to comply.

 (4) The request for bill of particulars with respect to paragraph 25 of the answer has been withdrawn.

 (5) Paragraph 27 of the answer alleges that the inventor did not invent the patents; that he fraudulently represented to the United States that he was the inventor; that in bad faith he assigned the patent to the plaintiff, who in bad faith maliciously circulated statements among defendant's customers warning them not to purchase defendant's product and that by instituting and delaying the prosecution of this suit, plaintiff is damaging the business of defendant. It is a fundamental principle of pleading under Equity Rule 25 (28 U.S.C.A. following section 723) that the bill must be sufficiently specific to show the claim made. The paragraph is general in its statement, except in so far as it alleges that the inventor fraudulently represented to the United States that he was such. Defendant is asked to state "upon which of these statements it will rely as being false and maliciously circulated by plaintiff among defendant's customers, to what customers statements were made, when, where, and by whom such statements were made, whether the statements were made orally or in writing, and if in writing * * * then to produce the same or exact copies thereof." It is a well-settled rule that the parties shall not be required to plead or set up evidentiary matters. Equity Rule 25 requires the pleader to make "a short and simple statement of the ultimate facts" upon which he will rely. Equity Rule 20 provides that a party may be required to make "a further and better statement of the nature of the claim or defense, or further and better particulars of any matter stated in any pleading." These two rules are to be read together. Rule 20 is not broader than rule 25. Ultimate facts are all that can be required to be set up in a bill of particulars under rule 20.

 The defendant should state to what customers false statements are claimed to have been made. This does not call for an evidentiary statement or necessarily a statement of the names of witnesses. This holding is in accord with O-So-Ezy Mop Co. v. Channell Chemical Co. (D.C.) 230 F. 469, 470, in which Judge Augustus N. Hand, said: "While in this case the plaintiff may be assumed to know what, if any, derogatory statements concerning the defendant it really made, it does not necessarily know what statements of this nature the defendant may claim were made, who made them, or, consequently, whether the person charged with having made them was an authorized representative of the plaintiff." A.B. Dick Co. v. Underwood Typewriter Co. (D.C.) 235 F. 300; and Bodine v. First Nat. Bank of Merchantville (D.C.) 281 F. 571.

 The further requests as to paragraph 27 are denied as calling for a statement of defendant's evidence. Reviewing the decision of Judge Rippey on a motion for the bill of particulars made by the defendant (11 F.Supp. 705), I do not see that there is any conflict with the view I have just expressed.

 The plaintiff moves to strike paragraphs 20, 21 in part, 24, 25 of the answer. The grounds for striking 20, 24, and 25 are the same. Paragraph 20 alleges that Hans Wittemeier was not the inventor; that he obtained the patent surreptitiously; that he knows the actual inventor; and that defendant does not know the actual inventor. Paragraph 24 alleges that the German application which is said to be the basis of claims 7 and 8 in issue were never issued into a patent; that this failed to issue for the reasons asserted as defenses to claim 7, 8 in suit; that these defenses were known to plaintiff and not to defendant. Paragraph 25 in substance alleges that the invention was in public use before the alleged invention; that the invention was in public use more than two years prior to the United States invention; that the invention was known to and used by others before the patentee invented; and that the users and the places of use were known to the plaintiff and were not known to the defendant.

 Five separate special defenses in an action of infringement are permissible. Section 4920, Rev. Stat. (35 U.S.C. § 69, 35 U.S.C.A. § 69). The above-mentioned allegations are purported to come within the second, third, fourth, and fifth special defenses enumerated in the statute. To make these defenses available, the party invoking it, either in the answer or by notice, must specify certain things. Such things include statement of the name of the patentee, the dates of the patents; the names of the persons alleged to have invented the thing patentee, his prior knowledge of the thing patented, and where and by whom the thing has been used. The notice must be given thirty days before trial. No notice has been given. The ...

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