Statement of the Case.

to equity and good conscience, and one which, by reason of the gross laches and delay in prosecuting it, a court of equity ought not to entertain.

"III. To so much of said bill as refers and relates to patent No. 186,787, dated January 30, 1877, this defendant demurs for the following causes of demurrer:

"(1) The plaintiff in and by its said bill does not show any power or authority, and no power or authority in law exists, in any person or party, or any court, to bring said suit, nor to entertain the same, nor to give the relief therein prayed, nor any relief thereunder or touching the subject-matter thereof.

"(2) The plaintiff in and by said said bill has not made or stated a case which calls upon or justifies this court, in the exercise of its discretion, to permit this bill to be entertained.

"(3) The plaintiff in and by its said bill has not made or stated a case which entitles it in a court of equity to the relief therein prayed for, or any relief whatever.

"(4) The plaintiff, in and by its said bill, has not made or stated a case which entitles it in a court of equity, as against this defendant, the American Bell Telephone Company, to the relief therein prayed for, or any relief whatever.

"(5) The case stated in and by said bill is one which, as against this defendant, the assignee of said Bell patents, should have been prosecuted (if at all) with the utmost diligence, whereas, as against this defendant it is a stale claim, contrary to equity and good conscience, and one which by reason of the gross laches and delay in prosecuting it, a court of equity ought not to entertain.

"IV. This defendant demurs to the whole of said bill for each of the reasons set forth in Division III.

"V. (1) As to each and every charge in said bill set forth as the basis of an attack on the validity of said patents, or either of them, or any claim of either of them, this defendant demurs thereto separately for the reason that it does not show the said patent to be void, and also because the allegations therein contained, if true, would not entitle the plaintiff to the relief prayed for, nor to any relief in a court of equity.

"And it prays that this clause of demurrer may be taken

Mr. Storrow's Argument for Appellee.

as a separate demurrer on each of said grounds to each such allegation as if repeated in a separate form to each.

"The allegations here referred to are the following: [setting forth the divisions in the bill demurred to.]

"VI. This defendant specially demurs to said bill for that it does not set forth any fraud in the procuring of said patents; and for that it does not specifically set forth what acts, if any, the complainant relies on as constituting fraud in procuring said patents; and for that it does not show when, how, from whom, or by what means the complainant first had knowledge or notice of each alleged fact, nor why, with due diligence, it would not have learned them earlier.

"VII. Wherefore, and for divers other good causes of demurrer appearing in said bill, the defendant doth demur to said bill, and to separate parts thereof where the demurrers are herein before expressed to be to parts, and humbly demands the judgment of this court whether he shall be compelled to make any further or other answer to the said bill, or said separate parts where the demurrers are expressed to be to separate parts, and prays to be hence dismissed with his costs and charges in this behalf most wrongfully sustained."

The court below, after hearing argument, sustained the demurrers, and dismissed the bill. 32 Fed. Rep. 591.

Mr. Solicitor General, as Acting Attorney General, Mr. Allen G. Thurman and Mr. Jeff. Chandler for appellant. Mr. Eppa Hunton, Mr. William C. Strawbridge and Mr. Charles S. Whitman were on the briefs.

Mr. James J. Storrow for appellee.

The answers to this bill as a whole are, first, that equity will not interfere in such a case as this to displace ordinary litigation and to cancel a deed; and, second, that no power exists in the executive departments to bring, or in the Circuit Court to entertain, suits to cancel patents for invention, because (1) it invokes the exercise of a prerogative power which the judiciary act does not give, and (2) because the course of legislation

Mr. Storrow's Argument for Appellee.

on the special subject of patents has not given the power, but has prohibited it.

Pleading. The bill proceeds against two patents, and sets up against each of them various distinct and separable grounds of invalidity. Demurrers to the whole bill for want of power, and to the whole bill for want of equity, and also demurrers as to each patent and to each separate ground of attack, are authorized by the decisions of this court, and by the practice under the English scire facias to cancel patents. Powder Co. v. Powder Works, 98 U. S. 126; Hindmarch on Patents, pp. 401, 414, 721.

The Question of Equity. - The professed and sole purpose, object and effect of the bill is to draw into this suit to be here tried the questions of novelty of invention and sufficiency of the specification, which, both by statute and by the necessary rules of law, are triable in, and are every day tried in, infringement suits; to enjoin their trial in the statutory infringement suits now pending, and to impose upon those suits a decision on those questions to be here made; to sustain the patent if found valid, and cancel it or modify it if found bad or defective. It asks, therefore, for the exercise of the most startling powers of equity. Atlantic Delaine Co. v. James, 94 U. S. 207; The Maxwell Land Grant Case, 121 U. S. 325, 380; Colorado Coal and Iron Co. v. United States, 123 U. S. 307, 317.

Equity does not so interfere with the established, and especially with the statutory, course of litigation, without some strong exigency for such interference. It does not cancel a deed, nor restrain suits to enforce it, simply because it is void for reasons which would defeat it in those suits. It may interfere if the grounds of invalidity cannot be tried in those suits, or, quia timet, if the holder of the deed will not bring suits where the questions can be tried; or to bring peace to a title which has been so well determined in other litigation that equity will not allow it to be retried; but that is not the case here. The bill does not so aver. On the contrary, it shows, and this court knows judicially that this patent has been often tried, invariably sustained, and is now "established." That is fatal. Miles v. Caldwell, 2 Wall. 35, 39;

Mr. Storrow's Argument for Appellee.

Mt. Zion v. Gillman, 9 Bissell, 479; S. C. 14 Fed. Rep. 123; Bank v. Cooper, 20 Wall. 171. Moreover, it is presumed on demurrer from the specific allegations of this bill, United States v. Atherton, 102 U. S. 372, 373, and this court knows judicially, that every attack on the patents here set up has long ago been passed upon in suits where the patent has been sustained. The bill does not deny this, nor does it suggest any reason for retrying them.

[To the rule of judicial notice, and to the point that on a demurrer the court considers those facts of which it takes judicial notice, the counsel cited: Louisville & Nashville Railroad v. Palmes, 109 U. S. 244; King v. Gallun, 109 U. S. 99, 101; Brown v. Piper, 91 U. S. 37; Terhune v. Phillips, 99 U. S. 592. As instances of judicial notice quoted in his brief : Smith v. Ely, 15 How. 137; Gregg v. Tesson, 1 Black, 150; Pensacola Tel. Co. v. Western Union Tel. Co., 96 U. S. 1; United States v. Union Pacific Railroad, 98 U. S. 569; Sinking Fund Cases, 99 U. S. 700; Wade v. Walnut, 105 U. S. 1; Gilson v. Dayton, 123 U. S. 59; New Hampshire v. Louisiana, 108 U. S. 76.]

Bills will also lie to prevent multiplicity of suits; but only to secure that end; and, therefore, only where one trial will determine the question forever, and prevent retrials in the suits sought to be avoided. This bill does not state such a case. As matter of law, every infringer can retry all the defences here presented, though this court should find them all to be without merit.

These propositions are established by the following authorities: Miles v. Caldwell, 2 Wall. 35, 39; Stark v. Starrs, 6 Wall. 402; United States v. Wilson, 118 U. S. 86; Insurance Co. v. Bailey, 13 Wall. 616; Grand Chute v. Winegar, 15 Wall. 373; Hendrickson v. Hinckley, 17 How. 443, 445; Hapgood v. Hewitt, 119 U. S. 226; Wickliffe v. Owings, 17 How. 47, 50; Holland v. Challen, 110 U. S. 15, 19; Frost v. Spitley, 121 U. S. 552; Orton v. Smith, 18 How. 263; Craig v. Leitensdorfer, 123 U. S. 189; Lessee of Parrish v. Ferris, 2 Black, 606; Vetterlein v. Barnes, 124 U. S. 169, 172; Kerrison v. Stewart, 93 U. S. 155, 159.

Mr. Storrow's Argument for Appellee.

If

These considerations are controlling for another reason. there is no exigency which would require equity to exercise the power, the case is not within the region where its creation by equity without pretence of statutory authority can even be discussed.

The charge of the fraudulent substitution of a new specification made in 126 U. S. 242, 244, 471, 568, is not made here, but is refuted; for the bill states that the original specification was sworn to January 20, 1876, filed February 14, 1876, and is now on file; it annexes a copy of the existing file which is like the correct copy in The Telephone Cases, 126 U. S. 4. The charges of corruption in the Patent Office, which led the Secretary of the Interior to advise a bill on the ground that they could not be satisfactorily investigated in an infringement suit, are not in this bill. The bill filed by leave of the Solicitor General at Memphis in September, 1885, contained abundant and specific charges of fraud about the principal patent, but they are struck out of this bill, though its origin is shown by the fact that some of the allusions to them and prayers based on them are copied verbatim. It makes profuse use of the words "fraudulent," etc., but such general phrases, even if in the form of allegations, will not rouse a court of equity. It does not allege acts which constitute fraud or justify interference. Ambler v. Choteau, 107 U. S. 586; Colorado Coal Co. v. United States, 123 U. S. 307, 317; United States v. Atherton, 102 U. S. 372.

The case, however, cannot turn upon the mere presence of moral fraud. Equity interferes to displace ordinary litigation on the ground of fraud only when the facts which constitute the fraud do not afford a defence in that litigation. It does not set aside a deed because of mistake or of dishonest practices unless it appears that the error or fraud touched the right of the grantee, and not merely the mode in which the deed was obtained, and that the grantee was not justly entitled on the merits to the thing granted. Kerr on Fraud and Mistake, 479; Rooke v. Lord Kensington, 2 K. & J. 753, 763; Fowler v. Fowler, 4 De G. & J. 250, 273; Sells v. Sells, 1 Drew. & Sm. 42; Southern Development Co. v. Silva, 125 U. S. 247, 250,