T KORN v. wnsnuscn. 51
The bill is in the usual form. The defendants have filed a plea, al-
leging the above facts, and insisting that they do not infringe the patent,
for the reason that the only adjustable button-hole scissors made, used,
4 or sold by them do not contain the."conical recess in the other arm of
the cutter," or any equivalent therefor. A pair of the defendants scis-
sors is annexed to and made a part of the plea. They show a screw-
shaft attached to one of the arms, but neither the screw—shaft, nor the
nut which works upon it, enters a hole in the opposite arm, for the rea-
son that there is no hole there of any kind. It is argued for the defend-
ants that the only construction which can be given the patent excludes
their devioe,.and that the complainant is concluded from urging any
broadertor different construction, by reason of the proceedings in the r
patent-oihce, and the language employed by him in the description and
claim. The complainant set the plea down for argument.
Paul H. Bate, for complainant. .
_ Arthur ·v. Brtesen, for defendants. .
Coxm, AJ. By setting the plea down for argument the complainant
tests its sufficiency, and, in eH`ect, demurs to it. ~Myers v. Dorr, 13
Blatchf. 22; Cottle v. Krementz, 25 Fed. Rep. 494; Newton v. Thayer, 17
Pick. 129; Walk. Pat. §590; Daniel], Ch. (5th Ed.) 692; Story, Eq. Pl.
(9th Ed.) § 697; Mitf. & T. Eq. Pl. 389. The issue tendered by the plea
is whether of not the defendants infringe the claim·»of the patent con-
strued.in_com1ection with the specification, the file wrapper, and contents,
and in. thelight of the prior art. This is the controversy which usually
arises when the defendant denies that he makes, uses, or vends the pat-
ented device. In other words, the defendants seek to try the question
of infringementupon a- plea. It is clear that there is no authority for
such practice. If the question were now considered by the court, and
decided against the defendants, they could allege the same defense in »
their answer and try the entire issue again. It is not the pro.vince of a
plea to interpose defenses which go to the merits and relate in nowise to
_ matters in abatement or in bar. · Such defenses should properly be raised
by answer. ~ Sharp v. Retssner, 9 Fed. Rep. 445; Rhode Island v. Massa-
chusetts, 14 Pet. 210. i , .
The defendants cite in support of their plea, Hubbell v. De Land, 14
Fed. Rep,. 471; but in that case the court, at page 474, says: "Argument
can hardly be needed to show that the question ofthe infringement of a
patent-isynot the proper subject of a special plea." In the case atbar,
wherethe device is a simple one, and the issues are sharply defined and
easily understood, it is possible that the question of infringement might
be satisfactorily determined- in this manner with a saving of expense to
all parties concerned. But a decision once made to this effect will be
" recorded for- a precedent," which may be invoked in every action of
infringement, and thus tend to unsettle and confuse what is now plain
and simple. I s . ,
~ The plea is.overruled,,the defendants to answer in 20 days.~