Lange v. McGuin, 177 F. 219 (7th Cir. 1910)

By leave of court appellant filed, an amended bill. The amendments we notice consisted of, first, the file wrapper and contents, which exhibited the examiner’s references to the prior art in support of his disallowance, the examinees further consideration resulting in allowance, and interference proceedings decided in appellant’s favor; and, second, prior patents, which showed that for many years preceding 3.908 pressure and heat had been employed in p. 221processes “for recovering sidrits from internally charred liquor casks which had been once used.”

Bills in patent causes and demurrers thereto are not so unique that they are exempt from the general principles and rules of equity pleading. And therein it is not the province of a demurrer to speak of matters beyond the bill. Of coursé, every bill is written against the background of common knowledge; and in that view a demurrer may be said to invite the chancellor to take judicial notice of the background. But if a bill, in and by its own averments, states a prima facie case, that case cannot properly be overthrown by the chancellor merely ón the ground that he judicially knows of facts that would support an answer. His judicial knowledge must go farther, and be so broad and'all-embracing that he can properly hold that no facts exist that would tend to controvert the supposed answer and support a replication and the p. 223bill. This is so because, if such facts exist, the complainant is entitled to a hearing where he can present and argue the facts, and such a hearing cannot be had on demurrer to the bill.1

Respecting the defense of want of invention, we might think that, in view of the common facts above stated, of the well-known law of diffusion of liquids, and of the application of that law to the extraction of sugar from cane as early as 1807, the application in 1908 of the same law to the extraction of liquor from the cells of charred wood was not an inventive act. Grant that that is a strong and persuasive showing ; but it is a showing of the kind that ordinarily must be made by evidence in support of an answer — that must always be so made except in the extremely rare case where judicial knowledge, extends to the point of knowing that no competent and relevant evidence in support of the patent’s presumptive validity can be, produced. The Patent Office is conducted by experts who have access there to almost endless words and things respecting the prior stages in all the arts. Suppose the records of prior efforts in the art of extracting liquor from the charred interior of casks should disclose that, although the process of extracting sugar from cane by endosmosis and exosmosis was known in 1807, yet in this art such a process had never been suggested or used by any one before appellant, but that radically different, slower, less efficient, more expensive processes had been used, while there had been a succession of unsuccessful efforts to find a quicker, cheaper, more efficient process — would not such evidence be competent in rebuttal of defendants’ case? Clearly, on issues joined, it would be error to reject it. How much of such evidence was before the Patent Office experts when they made their finding of fact respecting invention we do not know, for it is not a matter of common knowledge, but of special information. That there was any such evidence we do not properly know, for, of course, the Circuit Court was right in striking out the file wrapper and contents and the prior patents as amendments p. 224to the bill (it still being improper to plead evidence); but it is enough to require the overruling of a demurrer for want of invention in fact that we are unable to find conclusive ground for saying in advance that no competent evidence can be produced to aid the patent’s presumptive validity;