Universal Oil Products Co. v. Skelly Oil Co.

• Decision Date: 30 April 1926
• Docket Number: No. 582.,582.
• Citation: 12 F.2d 271
• Parties: UNIVERSAL OIL PRODUCTS CO. v. SKELLY OIL CO.
• Court: U.S. District Court — District of Delaware

12 F.2d 271 (1926)

UNIVERSAL OIL PRODUCTS CO. v. SKELLY OIL CO.

No. 582.

District Court, D. Delaware.

April 30, 1926.

Thomas G. Haight, of Jersey City, N. J., and Ward, Gray & Ward, of Wilmington, Del., for plaintiff.

William H. Davis and Frank E. Barrows (of Pennie, Davis, Marvin & Edmonds), both of New York City, W. P. Z. German, of Tulsa, Okl., and James H. Hughes, Jr. (of Marvel, Marvel, Layton & Hughes), of Wilmington, Del., for defendant.

MORRIS, District Judge.

Universal Oil Products Company filed its bill of complaint against Skelly Oil Company for infringement of specified claims of United States letters patent Nos. 1,281,884, 1,484,445, 1,517,830, 1,525,281, and 1,534,927. The allegation of infringement is the general one — "that * * * the * * * defendant * * * did unlawfully and wrongfully practice the inventions of said letters patent and each of them described and claimed in the claims thereof. * * *" The defendant, relying upon equity rule 20, the asserted complexity of its processes and apparatus, and an offer made by it to permit the plaintiff, before complying with the order sought, to make a full and complete examination of defendant's plant, processes, and apparatus, now moves for an order requiring the plaintiff to set out in a bill of particulars "(a) the particular step or steps charged to embody each of the steps of each of the process claims relied upon; and (b) the particular element or elements of apparatus which are charged to embody each of the elements of claim 4 of patent No. 1,281,884." The plaintiff opposes the motion upon the ground that an order granting the motion would run counter to the great weight of authority and would be in direct conflict with the decision of the Court of Appeals for this Circuit in Morton Trust Co. v. American Car & Foundry Co., 129 F. 916, 64 C. C. A. 367.

As I understand the motion, it is in effect that the plaintiff be required (1) to set out the specific steps in defendant's processes and the specific parts or elements of defendant's apparatus which constitute the alleged infringement of the process and apparatus claims, respectively, in suit, and (2) to parallel and compare each step of each process claim and each element of the apparatus claim in suit, respectively, with the alleged infringing steps of defendant's processes and with the like parts of its apparatus.

As a bill of particulars is deemed a part of, or an amendment to, the pleading of which it is an amplification, and is construed as though it formed a part of it (Milbank v. Milbank 1900 1 Ch. 385; Starkweather v. Kittle, 17 Wend. N. Y. 20, 21; Chrysler v. James, 1 Hill N. Y. 214, 215), the motion of the defendant presents, broadly, the question, With what degree of definiteness and certainty may a plaintiff be required to plead infringement of a patent? The longstanding fundamental rule of pleading embracing all bills in equity is that they must be sufficiently specific to inform the defendant of the nature of the claim made against him and of what he is called upon to answer. Garrett v. Louisville & Nashville R. R., 235 U. S. 308, 35 S. Ct. 32, 59 L. Ed. 242; Story's Equity Pleading, § 241. But this rule forbids the pleading of conclusions of law upon the one hand and of evidence upon the other (save for purposes not necessary here to be considered). Pleading conclusions of law, or, otherwise expressed, conclusions of mixed law and fact, would leave the minor premise of the pleader's syllogism wholly undefined, and furnish to the adversary no guide or information with respect to the facts by which the conclusion is to be supported. To pass to the other extreme and cover in the pleading the wide areas of circumstantial detail in which the case has its roots would make vague the major, as well as the minor, premise of the syllogism, and thus leave the conclusion wandering and uncertain. Plainly, therefore, the facts which must be alleged in order to obtain the benefit of a rule or principle of law are those — termed "ultimate facts" — found in that vaguely defined field lying between the evidential facts on the one side and the primary issue or conclusion of law on the other. See Brumbaugh's Legal Reasoning and Briefing, pp. 65-73, 386, 387. This principle was codified by the Supreme Court (Bayley & Sons, Inc., v. Braunstein Bros. Co. D. C. 237 F. 671) in equity rule 25 thus:

"Hereafter it shall be sufficient that a bill in equity shall contain, * * * third, a short and simple statement of the ultimate facts upon which the plaintiff asks relief, omitting any mere statement of evidence."

A valid bill complying with that rule necessarily alleges every fact and circumstance essential to show a cause of action and to entitle the plaintiff, at least prima facie, to relief. Maxwell Steel Vault Co. v. National Casket Co. (D. C.) 205 F. 515, 525. Yet the Supreme Court promulgated, simultaneously with rule 25, another rule, rule 20, which provides:

"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, may in any case be ordered, upon such terms, as to costs and otherwise, as may be just."

Consequently, it seems to me, the mere existence of rule 20 is a recognition that a plaintiff, whose bill of complaint has met all the requirements of rule 25, may, nevertheless, in the discretion of the court (Gimbel Bros., Inc., v. Adams Express Co. D. C. 217 F. 318), be ordered to supplement his bill by a further and better statement of the nature of his claim. Yet, as it is not the office of a bill of particulars to supply allegations essential to make out a cause of action or a valid defense, and as a party cannot be required in a bill of particulars, any more than in his bill of complaint, to set out his opinions and arguments or to disclose his evidence (Garfield v. Paris, 96 U. S. 557, 24 L. Ed. 821; Clarke v. Ohio River Ry. Co., 39 W. Va. 742, 20 S. E. 699; Tebbetts v. Pickering, 5 Cush. Mass. 83, 51 Am. Dec. 48; Richmond & D. R. Co. v. Payne, 86 Va. 481, 10 S. E. 749, 6 L. R. A. 849), it becomes obvious that "evidence" and hence "ultimate facts" are always relative terms (Wigmore on Evidence 2d Ed. § 2), and that, in the chain of causation leading from remote evidential circumstance to the ultimate fact lying next below the conclusion of law, there may be, and usually are, intermediate facts which, to the end that the adversary may be better apprised of the case he has to meet, a court may, in its discretion properly exercised under the facts, and rule 20, order set out in whole or in part in a bill of particulars. See Wigmore on Evidence (2d Ed.) § 2 (2).

How have these principles been applied with respect to the tort or infringement in patent suits in equity? Infringement is a conclusion of law drawn from the application of a principle of law to establish facts. It is a mixed question of law and fact. California Paving Co. v. Molitor, 113 U. S. 609, 617, 618, 5 S. Ct. 618, 28 L. Ed. 1106. An allegation that the defendant has "manufactured, used, and vended to others to be used, boots containing and embracing the invention, * * * and in infringement of the patent," was held sufficient on a general demurrer. McCoy v. Nelson, 121 U. S. 484, 486, 7 S. Ct. 1000, 1001 (30 L. Ed. 1017). In American Bell Tel. Co. v. Southern Tel. Co. (C. C.) 34 F. 803, which arose on exceptions and special demurrer to the bill, Judge Brewer said:

"On authority, the other objection must also be overruled; that is, the objection that there is simply a general averment that the defendant infringes. It is not so easy to sustain that upon principle, because, as was well stated by counsel here, the exactness and certainty of equity pleadings would seem very properly to require that, instead of a simple averment that the defendant has infringed, particularly in a case where a patent covers many claims — in this case also covering both a process and an apparatus — it would narrow the inquiry if the averments were made specific that the infringement was in reference to one claim, and not in reference to the rest. Still, whatever might be the decision if the matter was open to question, the practice is very general in bills in patent cases to simply aver that the defendant has infringed. * * * So, while as a matter of principle it may not be so easy to sustain this practice, yet, in view of the great weight of authority as to the form of pleadings that are sufficient in patent cases, this objection must also be held not well taken, and the special demurrer will be overruled. Pitts v. Whitman, 2 Story, 609 Fed. Cas. No. 11196; Turrell v. Cammerrer, 3 Fish. Pat. Cas. 462 Fed. Cas. No. 14266; Haven v. Brown, 6 Fish. Pat. Cas. 413 Fed. Cas. No. 6228; McMillan McMillin v. Transportation Co. C. C. 18 F. 260; McCoy v. Nelson, 121 U. S. 484, 7 S. Ct. 1000 30 L. Ed. 1017."

The Court of Appeals for this circuit held, in Morton Trust Co. v. American Car & Foundry Co., 129 F. 916, 64 C. C. A. 367, that a bill stating that defendant "has manufactured, sold, and used metallic cars, * * * in violation and infringement of the said letters patent No. 584,709 and of the claims thereof," should be construed, in accordance with the approved practice in patent cases, to charge infringement of all the claims, and that, save under exceptional circumstances, a complainant so alleging cannot be required to specify, by amendment, the claims with respect to which infringement is to be urged, or the parts of defendant's structure which are claimed to infringe. Referring to the portion of the order of the District Court which directed the complainant to specify "the particular parts of the defendant's car or car construction that are relied upon as infringements of the patent in suit," Judge Acheson said:

"In its scope the order goes beyond any precedent known to us. Compliance with the order would require definite knowledge of the defendant's car...