Stonemetz Printers' Mach Co. v. Brown Folding-Mach Co.

• Decision Date: 17 July 1891
• Citation: 46 F. 851
• Parties: STONEMETZ PRINTERS' MACHINERY CO. v. BROWN FOLDING-MACH. CO.
• Court: U.S. District Court — Western District of Pennsylvania

46 F. 851

STONEMETZ PRINTERS' MACHINERY CO. v. BROWN FOLDING-MACH. CO.

United States Circuit Court, W.D. Pennsylvania.

July 17, 1891

John K. Hallock, for cross-bill.

John C Sturgeon, contra.

REED J.

The bill in this case alleged interference, and prayed relief under section 4918. It also alleged infringement by defendant, and prayed relief upon that ground as well. A demurrer was filed to the bill because, as claimed by the defendant, there was a misjoinder of causes of action, which following the decisions of other circuit courts, this court overruled. The defendant then filed its answer, and subsequently filed a cross-bill, alleging infringement by the plaintiff of defendant's patents, and praying for appropriate relief. By arrangement between counsel, the cross-bill was permitted to be filed, and a motion immediately made by plaintiff to strike it from the record so that the practical effect is to bring the matter before the court, as though upon a motion to file the cross-bill. Plaintiff's contention is substantially set forth in its second reason filed with its motion, namely, that the only material matter set forth and alleged in the cross-bill is foreign to the issue involved in this case, and not cognizable therein. As the decision upon the demurrer to the bill in favor of the plaintiff's right to join the two causes of action has opened for him a wide field, my inclination has been, if possible, under the rules relating to cross-bills, to insure to the defendant the same liberality in its defense. A cross-bill ex vi terminorum implies a bill brought by a defendant against the plaintiff in the same suit, or against both, touching the matter in question in the original bill. Story, Eq.Pl. Sec. 389. It is brought either to obtain a discovery of facts in aid of the defense to the original bill, or to obtain full and complete relief to all parties as to the matter charged in the original bill. It should not introduce new and distinct matters not embraced in the original bill, as they cannot be properly examined in that suit, but constitute the subject-matter of an original independent suit. The cross-bill is auxiliary to the proceeding in the original suit, and a dependency upon it. It is said by Lord HARDWICKE that both the original and cross-bill constitute but one suit, so intimately are they connected together. Ayres v. Carver, 17 How. 591; Cross v. De Valle, 1 Wall. 1. It should not introduce any distinct matter. It is auxiliary to the original suit, and a graft and dependency upon it. If its purpose be different from this, it is not a cross-bill, though it may have a connection with the same general subject. Rubber Co. v. Goodyear, 9 Wall. 807. In the last-cited case the bill was filed for infringement of a patent. The defenses were invalidity of the patent and a license. By the cross-bill the defendant sought to set off a judgment against plaintiff against the damages he might recover in the infringement suit. The court held the cross-bill improperly filed. A cross-bill must grow out of the matters alleged in the original bill, and is used to bring the whole dispute before the court, so that there may be a complete decree touching the subject-matter of the action. Ex parte Railroad Co., 95 U.S. 221. A cross-bill must be confined to the subject-matter of the original bill, and cannot introduce new matters not embraced in the original bill. If it does so, the cross-bill becomes itself an original bill, and there cannot be two original bills in the same cause. Dotz v. Phillips, 24 Wkly.Notes Cas. 382. A cross-bill is like an original bill, except that it must rest on what is necessary to the defense of an original bill. Brandon Manuf'g Co. v. Prime, 14 Blatchf. 371. In the case of Johnson R.S. Co. v. Union S. & S. Co., 43 F. 331, permission was refused to file a cross-bill in an infringement suit, wherein the defendant set up the claim of right to a trade mark or name for an electrical system, which included the use of the patentee's name, as going beyond the case of the plaintiff in the original bill, not necessary as a defense to that bill, and matter entirely foreign to the primary controversy. In Young v. Colt, 2 Blatchf. 373, the court say:

'A cross-bill, as its name imports, goes no further than to give the party filing it the reciprocal right enjoyed by the complainant in the original bill in respect to their mutual title or interest in the subject-matter of the suit.' Where a cross-bill to a bill of foreclosure brought by a party representing the British government set up an independent claim of the respondents against...