Montgomery v. Kingsland

• Citation: 166 F.2d 953,83 US App. DC 66
• Decision Date: 19 January 1948
• Docket Number: No. 9407.,9407.
• Parties: MONTGOMERY et al. v. KINGSLAND.
• Court: U.S. Court of Appeals — District of Columbia Circuit

83 US App. DC 66, 166 F.2d 953 (1948)

MONTGOMERY et al. v. KINGSLAND.

No. 9407.

United States Court of Appeals District of Columbia.

Argued November 25, 1947.

Decided January 19, 1948.

Mr. W. B. Morton, of New York City, with whom Mr. C. M. Fisher, of Washington, D. C., was on the brief, for appellants.

Mr. Edwin L. Reynolds, of Washington, D. C., U. S. Patent Office, with whom Mr. W. W. Cochran, of Washington, D. C., Sol., U. S. Patent Office, was on the brief, for appellee.

Before EDGERTON, WILBUR K. MILLER and PRETTYMAN, Associate Justices.

WILBUR K. MILLER, Associate Justice.

The appellants sued in the District Court of the United States for the District of Columbia, under the provisions of R.S. § 4915, U.S.C.A., Title 35, § 63, asking the court to authorize the issuance of a patent. Their claims, which had been held unpatentable by the Patent Office, were thus described in the complaint: "4. The Board of Appeals of the United States Patent Office in a decision rendered on the 8th day of November, 1945, refused to allow three claims of said application Serial No. 436,970, to wit, claims numbered 31, 32 and 33 presented by amendment filed March 2, 1944, constituting Paper No. 8 of the Patent Office proceedings with respect to said application, as will more fully and at large appear from a certified copy of such Patent Office proceedings ready in Court to be produced."

Without answering, the defendant, the Commissioner of Patents, filed this motion: "Now COMES Casper W. Ooms,¹ Commissioner of Patents, defendant, and moves the Court to require the filing, by the plaintiffs, of a bill of particulars setting forth, verbatim, the claims on which they seek to have the Court authorize the issuance of a patent."

From the District Court's order granting the motion, this special appeal was sought by the appellants and allowed by this court.

Authority for requiring a litigant to file a bill of particulars is contained in Rule 12(e) of the Federal Rules of Civil Procedure.² It is there provided that, before responding to a pleading, a party "may move for a more definite statement or for a bill of particulars of any matter which is not averred with sufficient definiteness or particularity to enable him properly to prepare his responsive pleading or to prepare for trial."

Is it necessary for the Commissioner of Patents to have a bill of particulars from the appellants to enable him properly to respond to the complaint or to prepare for trial? Is the "matter" not averred with sufficient definiteness or particularity to enable him to do that? We think the answers to these questions are obvious. In the complaint, the application is described by the serial number assigned to it by the appellee, which identifies it in appellee's files. The claims are described by their numbers, and by the filing date of the amended application which contains them, which is "Paper No. 8 of the Patent Office proceedings with respect to said application. * * *" These allegations are made with sufficient definiteness and particularity to enable the Commissioner of Patents to go to his official files and unerringly to select the text of the claims in controversy. It is therefore idle to say the Commissioner cannot respond to the complaint or prepare for trial until the appellants file a bill of particulars containing a verbatim copy of the claims. Under Rule 12(e) there was no basis for granting the appellee's motion.

The Commissioner does not argue that he cannot plead or prepare for trial without the particulars which he seeks. He urges upon us that the complaint is insufficient.³ In so doing, he confuses the function of a motion for a bill of particulars under Rule 12(e) with that of a motion to dismiss for failure to state a cause of action upon which relief can be granted, permitted by Rule 12(b).⁴ The sufficiency of a complaint is not tested by a motion under Rule 12(e).

It was said in Louisiana Farmers' Protective Union, Inc., v. Great Atlantic & Pacific Tea Co. of America, Inc., et al., D.C., 31 F.Supp. 483, 493, that "The purpose of a bill of particulars is to furnish the moving party with information needed to enable him to prepare his responsive pleadings and to prepare generally for trial, and a motion therefor should not be used as a forerunner of, or in the nature of a substitute for, a motion to dismiss. Questions as to the sufficiency of the complaint in the respect indicated should be raised directly and not by indirection." The quoted language seems to us to be a correct statement, since the allegations of a complaint might state a cause of action so as to be impervious to a motion to dismiss, and yet state the cause so generally as to make necessary a more definite statement to enable the defendant to know exactly what he is required to meet and to formulate a pleading in response.

The appellee argues, however, that "The granting or denial of a bill of particulars is an interlocutory matter resting within the sound discretion of the trial court and the action of such court should not be set aside unless it is found to amount to an abuse of discretion and to work a material injustice." It cannot logically be said the trial court had discretion to grant the motion under Rule 12(e) since, as we have seen, that rule is wholly inapplicable. If the District Court purported to act under the rule in requiring a bill of particulars, it acted arbitrarily. We must, therefore, ascertain whether a trial court may direct a bill of particulars to be filed for cause other than those set forth in the rule, or whether its discretion in that regard is circumscribed and confined by Rule 12(e).

"The overwhelming weight of authority is to the effect that a motion for a bill of particulars or a motion for more definite statement of the claim should not be granted if the complaint sets forth a cause of action with sufficient definiteness to enable the defendant to frame an answer. Additional details that the defendant needs in order to prepare for trial should be obtained by discovery after issue is joined."⁵ In other words, the preponderance of judicial opinion is that a trial court has no discretion, outside the rule, to require particularization.

But even if, entirely apart from Rule 12(e), a trial court has the inherent right, in the exercise of judicial discretion, to require a bill of particulars to be filed (which we do not decide), nevertheless some sort of necessity for particularization must be shown by the movant in order to invoke the exercise of the court's discretion. In the absence of such a showing — and none appears here — a court acts arbitrarily in requiring a bill of particulars. This is especially true when, as here, material injustice may thereby be caused to one party without overbalancing, or indeed any, benefit to his adversary.

With...