25

26

The same variance between the judges as to what is required in the form of a bill of complaint still continues to exist, although the majority of judges sanction the short form of the bill, first approved by Judge Tuttle. In a comparatively recent case,2 Judge Chatfield, of the Eastern District of New York, in considering a bill alleging infringement of a patent and the allegations necessary in such a bill, holds the bill sufficiently specific under the new Equity Rule 27 which requires "a short and simple statement of the ultimate facts." The allegations in the bill before him were substantially that "B, being the inventor, being entitled to a patent, duly filed an application; that on the.... .day of......

.all of the requirements of the statutes of the United States then in force, having been duly complied with, letters patent were duly issued." A motion to dismiss was made.28 The Court considered the motion substantially as a demurrer, and held that the mere allegation that "Defendant infringed by making and offering for sale a patented article" is an insufficient one as to infringement and sustained the motion on that ground.

The former uncertainty as to whether it is necessary to state in a bill of complaint the grounds upon which the court's jurisdiction depends, and the ultimate facts upon which the plaintiff asks relief without stating evidence, is still causing considerable discussion, due to differences of opinion among the courts as to the meaning of the rule 29 relative thereto, though the weight of authority seems to approve and speak with commendation of a concise statement of jurisdictional and fact averments, and follow the rule as laid down in the Carbureter Co. case,30 in which this subject was

Penn. Steel Co., 205 Fed. 377, 379 (1913); Cartwright v. Southern Pac. Co., 206 Fed. 234 (1913); Sturges v. Portis Mining Co., 206 Fed. 534, 539 (1913); United States v. Utah Power & Light Co., 208 Fed. 821 (1913); American Car, etc. Co. v. Merchants Despatch Transp. Co., 216 Fed. 904, 911 (1914) (Interpreting Rule 23); Curriden v. Middleton, 232 U. S. 633 (1914); Vosburg Co. v. Watts, 221 Fed. 402 (1915).

25 Zenith Carbureter Co. v. Stromberg Motor D. Co., 205 Fed. 158 (1913); 27 HARV. L. REV., 634-35.

26 General Bakelite Co. v. Nikolas, 207 Fed. 111 (1913).

27 Federal Equity Rule 25.

28 Federal Equity Rule 29. See also, Tyler Co. v. Ludlow-Saylor Wire Co., 212 Fed. 156 (1914).

29 Federal Equity Rule 25.

30 Zenith Carbureter Co. v. Stromberg Motor D. Co., 205 Fed. 158 (1913).

fully discussed. This is not a safe criterion, for, in certain equity causes (patent and trade mark causes), it has been held that it is necessary to plead the language of the statute under which the grant or registration was made. Before preparing a bill in any specific suit, the pleader should consider the various cases here cited,31 and ascertain the rules adopted in the particular district where the suit is to be brought.

It seems absurd that it should be necessary to plead the statutes, particularly in patent cases where the entire cause of action rests upon a government grant.

Judge Orr, of the Western District of Pennsylvania, has painstakingly considered and reviewed the requirements of Bills of Complaint and points out that brevity and simplicity of allegation are within the purpose of the Rules 25 and 30, which should be of great help to the profession, in Pittsburgh Water Heater Co. v. Beler Water Heater Co.32

A very slight amendment to Rule 25 would materially shorten the pleadings and lessen the uncertainty in this character of cases. It would eliminate delays incident to subjecting the more concise form of bill to a motion to dismiss 33 or for a further and particular statement.34

Under the present rules, if it is desired to speed the cause, it is much safer to follow the longer form, notwithstanding an inherent desire of many attorneys to avoid prolixity.

It has been specifically held that the rule 35 which, on its face, appears to give the plaintiff the right to join as many causes of action cognizable in equity as he may have against the defendant, "cannot be used as the means to bring into the equitable jurisdiction of this court (the District Court) a cause of action between the parties over which the court could not have jurisdiction unless diverse citizen

31 Sawyer v. Gray, 205 Fed. 160 (1913); Maxwell Steel Vault Co. v. National Casket Co., 205 Fed. 515 (1913); Wilson v. American Ice Co., 206 Fed. 736 (1913); Acme Steel Goods Co. v. American Metal Fasteners Co., 206 Fed. 478 (1913); General Bakelite Co. v. Nikolas, 207 Fed. 111 (1913); Alexander v. Fidelity Trust Co., 215 Fed. 791 (1914); Williamson v. Pope, 215 Fed. 1000 (1914); State of Maine L. Co. v. Kingfield Co., 218 Fed. 902 (1914); Destructor Co. v. City of Atlanta, 219 Fed. 996 (1914).

32

222 Fed. 950 (1915).

4 Federal Equity Rule 20.

33 Federal Euity Rule 29.
35 Federal Equity Rule 26.

ship of the parties gave the United States courts general jurisdiction over the case,'

19 36

and that matters ordinarily cognizable at law cannot be joined with a cause of action in equity "for the purpose of bringing the amount involved within the jurisdiction of the United States District Court," 37 and this rule has been interpreted by some courts in connection with Rule 30 to give the defendant the same right in joining causes of action by way of counterclaim, as the plaintiff has joined in its bill of complaint under this rule.3

38

The purpose of the rule 39 relating to stockholders' bills under the authorities seems

"to exclude cases brought by a stockholder collusively, in order to give an apparent jurisdiction to a court which would not have it if the suit were by the corporation,"

"40

and to afford the stockholder relief without the necessity of taking the matter up with the managing director or trustees, where the facts warrant the assumption that such a request would be futile.41

The courts are generally liberal in permitting amendments to the bill, and such amendments, even after the defendant has filed its pleadings, have been permitted in a number of unreported cases, although it is unsafe to be careless about preparing the original bill on the assumption that such amendments will be permitted.

Although demurrers and pleas were abolished by the new rules, the large number of cases in which the substitute motions to dismiss have been used indicates a change in name and form rather than substance.

The rule 42 providing for the motion to dismiss, which motion is heard in advance of the trial, has brought about a somewhat more speedy determination of the preliminary issues than under the old procedure, and, to that extent, has been advantageous.

36 Vose v. Roebuck Weather S. & W. S. Co., 210 Fed. 687, 688 (1914). 37 Bucyrus Co. v. McArthur, 219 Fed. 266, 267 (1914).

38 Marconi Wireless Telegraph Co. v. National Electric Signaling Co., 206 Fed. 295 (1913); Electric Boat Co. v. Lake Torpedo Boat Co., 215 Fed. 377 (1914).

39 Federal Equity Rule 27; Hyams v. Calumet & Hecla Mining Co., 221 Fed. 529 (1915).

40 Kelly v. Dolan, 218 Fed. 966, 970 (1914).

41 Wathen v. Jackson Oil Co., 235 U. S. 635 (1915); Dana v. Morgan, 219 Fed. 313 (1914).

42 Federal Equity Rule 29.

The courts very properly refuse to give consideration to demurrers under this rule, as is well illustrated by the opinion of Judge Sanford, where he says, relative to a demurrer to a petition in bankruptcy:

"The demurrer to the petition in bankruptcy must be stricken out without consideration of its merits. Proceedings in bankruptcy generally are in the manner of proceedings in equity." 43

Likewise, the courts approve the raising of defenses which could formerly have been raised by demurrer by the motion to dismiss, for it has been held that

"The defendant is, therefore, justified and correct in his practice in applying to the court, by means of the present motion, with respect to the determination of what facts must be shown in the complaint to constitute a valid cause of action." 44

The large number of reported decisions,45 as well as the longer list of unreported ones, indicates the extent of the use of this motion, and the result secured by it, in some instances finally determining the cause of action without the necessity of answer or proof under it.

In a recent patent case, Judge Orr, of the Western District of Pennsylvania, entertained at the beginning of the trial a motion to dismiss the bill of complaint for want of patentable novelty and invention appearing on the face of the pleadings and the patent. The five days' notice required by Rule 29 having been waived by plaintiff, the motion was treated as a demurrer under the old practice and after hearing arguments of counsel, the Court sustained the

In re Jones, 209 Fed. 717, 718 (1913).

General Bakelite Co. v. Nikolas, 207 Fed. 111, 112 (1913); New Fiction Pub. Co. v. Star Co., 220 Fed. 994 (1915).

45 Hyams v. Old Dominion Co., 204 Fed. 681 (1913); Sawyer v. Gray, 205 Fed. 160 (1913); Maxwell Steel Vault Co. v. National Casket Co., 205 Fed. 515 (1913); Wilson v. American Ice Co., 206 Fed. 736 (1913); General Bakelite Co. v. Nikolas, 207 Fed. 111 (1913); Puget Sound Elec. Ry. Co. v. Lee, 207 Fed. 860 (1913); Adler Goldman Com. Co. v. Williams, 211 Fed. 530 (1914); Bogert v. Southern Pac. Co., 211 Fed. 776 (1914); Tyler Co. v. Ludlow-Saylor Wire Co., 212 Fed. 156 (1914); Alexander v. Fidelity Trust Co., 214 Fed. 495 (1914), 215 Fed. 791 (1914); So. Western Surety Ins. Co. v. Wells, 217 Fed. 294 (1914); Destructor Co. v. City of Atlanta, 219 Fed. 996 (1914); Boyd v. N. Y. & H. R. Co., 220 Fed. 174 (1915); Ralston Steel Car Co. ". National Dump Car Co., 222 Fed. 590 (1915).

motion, found the patent invalid and dismissed the bill. (Decision unreported.) In some districts a motion to dismiss has been made at the close of plaintiff's proofs and a ruling had on the motion without prejudice to defendant's rights to submit proofs after the ruling upon the motion had been unfavorable to defendant.

48

The line of distinction among the cases relating to the rules governing what may be included in the answer,46 so marked at the end of the first year's operation of the Federal Equity Rules,47 has not only been maintained in the numerous decisions under these rules during the second year of their operation, but has become even more pronounced, and it is rather significant that judges in the same circuit, and even in the same district, are interpreting the rule differently. One line of decisions interprets the rule liberally and allows the defendant to plead in its answer affirmative matters entirely independent of and not in any way arising out of the cause of action set up in the bill. The other line of decisions interprets the rule strictly 49 and holds that any affirmative relief asked for in the answer must be germane to, or arise out of, the original proceeding. These latter courts, instead of being in the majority as they were a year ago, now appear to be in the minority.

One of the reasons (in addition to the ambiguity of the rule

46 Federal Equity Rules 30 and 31.

47 27 HARV. L. Rev., 636–9.

48 Vacuum Cleaner Co. v. American Rotary Valve Co., Judge Lacombe (N. Y.), 208 Fed. 419 (1913); Salt's Textile Mfg. Co. v. Tingue Mfg. Co., Judge Martin (Conn.), 208 Fed. 156 (1913); Motion Picture Pat. Co. v. Eclair Film Co., Judge Rellstab (N. J.), 208 Fed. 416 (1913); McGill v. Sorensen, Judge Chatfield (N. Y.), 209 Fed. 876 (1913); Miss. Valley Trust Co. v. Washington Northern R. Co., 212 Fed. 776 (1914); Electric Boat Co. v. Lake Torpedo Boat Co., Judge Rellstab (N. J.), 215 Fed. 377 (1914); U. S. Expansion Bolt Co. v. Kroncke Hdw. Co., Judge Sanborn (Wis.), 216 Fed. 186 (1914); Buffalo Specialty Co. v. Vancleef, Judge Sanborn (Ill.), 217 Fed. 91 (1914); Hurley Mach. Co. v. Broka Mfg. Co., Judge Landis (Ill.) (Unreported); Portland Wood Pipe Co. v. Slick Bros. Const. Co., Judge Dietrich (Idaho), 222 Fed. 528 (1915).

49 Terry Steam Turbine Co. v. B. F. Sturtevant Co., Judge Dodge (Mass.), 204 Fed. 103 (1913); Williams Patent Crusher, etc. Co. v. Kinsey Mfg. Co., Judge Hazel, 205 Fed. 375 (1913); Adamson v. Shaler, Judge Geiger (Wis.), 208 Fed. 566 (1913); Atlas Underwear Co. v. Cooper Underwear Co., Judge Geiger (Wis.), 210 Fed. 347 (1913); General Bakelite Co. v. Nikolas, 207 Fed. 111 (1913); Klauder-Weldon D. M. Co. v. Giles, Judge Dodge (Mass.), 212 Fed. 452 (1914); Sydney v. Mugford Printing, etc. Co., Judge Thomas (Conn.), 214 Fed. 841 (1914); Kawneer Mfg. Co. v. Hester Mfg. Co., Judge Carpenter (Ill.) (Unreported); United States v. Woods, 223 Fed. 316 (1915).