It is probably true, as a general proposition, that, in actions on the case, the defendant may plead specially many matters which he might give in evidence under the general issue (1 Chit. Pl. 489; Gould, Pl. pp. 333, 334, §§ 55, 50; Steph. Pl. pp. 220-220), particularly when color is given for pleading more than the general issue (Steph. Pl. pp. 415, 416). Without, however, discussing the point upon the general doctrines of the common law applicable to pleading, this court is bound to administer its proceedings in conformity to the principles laid down, in regard to this form of action, by the supreme court of the United States. And that court has explicitly declared, in Evans v. Eaton, 3 Wheat. [16 U. S.] 454, that in actions at law for the infringement of patent rights, a defendant is not limited, in his defence, to the plea of the general issue allowed by the statute, even if his defence rests upon matters which the statute authorizes to be given in evidence under the general issue, but that he may, at his option, plead those particulars specially. In that case, the court says: “It has beau already observed, that the notice is substituted for a special plea; it is farther to be observed, that it is a substitute to which the defendant is not obliged to resort. The notice is to be given only when it is intended to offer the special matter in evidence on the general issue. The defendant is not obliged to pursue this course. He may still plead specially, and then the plea is the only notice which the plaintiff can claim.” In Grant v. Raymond, 6 Pet. [31 U. S.] 218, the court repeats the same doctrine. This principle is the fundamental law of pleading in the courts of the United States, in common law actions for the infringement of patent rights. Phil. Pat. 396, 400; Curt. Pat. §§ 271, 272.
The decision of this court, in Wilder v. Gay-ler [Case No. 17,649], relied upon by the plaintiff to sanction this motion, if in conflict with that doctrine, must necessarily yield to the paramount authority of the supreme court. The pleas are not set forth in the report of that case, but the remarks of the court would imply, that each one rested on aver-ments tantamount to the defences which the defendant might have made under his general issue, with notice. The pleas were of that character in the subsequent case of Paton v. Rennie [Id. 10,799], in which this court, in September, 1853, ordered the special pleas to be stricken from the record with costs, and it is plain that the court made the order in that case in reproof of the practice of pleading special pleas, when all the matters thereof might be given in evidence under the general issue. In that case, there was no notice with the general issue. Still, there would be difficulty in discriminating those cases, in this court, from the rule laid down by the supreme court, even if the pleas in those cases did amount to the general issue, for that rule leaves it absolutely to the option of the defendant to rely upon the general issue, or to plead specially, although the facts specially pleaded be such as are by the statute permitted to be given in evidence under the general issue; and although the special pleas would thus have no other effect than the general issue with notice. It is true, that the question was- not directly raised in those cases, in the supreme court, whether a defendant may plead specially matters amounting to the general issue. But the point is certainly strongly implied, because, both under the 6th section of the act of Febniary 21, 1793 (1 Stat. 322), and under the 15th section of the act of July 4, 1836 (5 Stat. 123). the defendant is allowed to give notice, under the general issue, of facts to be proved, which show that the patentee acquired no Title under his patent, which question of title is necessarily a primary and vital point involved in the general issue.
I am not, however, required to disregard the decision in Wilder v. Gayler [supra], in determining this motion, because the special pleas in question cannot, with propriety, be declared to amount to the general issue. They do not deny the facts which constitute the ground of the plaintiff’s demand. They propound matters of fact and law, which the defendants aver bar that operation, in favor of the plaintiff’s right, which the facts alleged by him might otherwise have. In that manner, the pleas may work the effect of the general issue, as they maintain that, on the facts and law, the plaintiff does not possess the right he claims; and, in that sense, they may be also said to involve the general issue, because, either by permission of the statute, or at common law, the defence made by them might be admissible under the general issue. *252Still, as I understand the doctrine laid down by the supreme court, those are instances in which a defendant has his election to rely upon the general issue, or to plead his de-fences specially.
[NOTE. A subsequent opinion was delivered in this case on questions of law raised at the tr al. Cass No. 3,6SS. For opinion upon an application for a provisional iniunction, in a suit in equity between the same parties in respect to the same patent, see Case No. 3.GSG. Other cases involving this patent are enumerated in a no‘e to Day v. Union India-Rubber Co., Case No. 3,Gill.]These pleas are without two cardinal features of the general issue. They do not impeach the validity of the patent, nor do they deny the use of the patented discovery by the defendants. The defendants are es-topped. by the pleas, fromcontroverting either of these facts. The defence propounded by them is not inconsistent with those allegations in the declaration. On the contrary, it claims a right in the defendants to continue in the use of the patented discovery, from the fact of a title to such use, derived by them through the patentee; and seeks to avoid the title of the plaintiif, acquired by direct assignment from the patentee, by alleging matters outside of that assignment, which prevent its passing any title to him, either because of the incapacity of the patentee in that respect to make such grant, or because of an outstanding paramount right in others. These implied admissions of the right of the patentee, through whom the plaintiif makes title, are sufficient in law to afford color for the avoidance set forth by the special pleas. This is not the time for the court to pass upon the sufficiency of the pleas to the ends proposed by them. It can legitimately consider only whether that mode of defence is, within the meaning of the rules of pleading, no inore than a simple denial of the plaintiff's right of action, and thus amounts to the general issue. The aim of the pleas is to put forth allegations in avoidance of the plaintiff’s right, and in justification of the defendants’ proceedings. Special pleas may be employed for that purpose, even in actions of assumpsit, as a release (Lawes, Pl. 637); and more particularly in actions of tort, in respect to property admitted to be in the plaintiff, as a license to do the act complained of (1 Chit. Pl. 494).
In my opinion, the pleas in question are authorized by law. The motion on the part of the plaintiff is, therefore, denied; but, as it was countenanced by express decisions of this court on the point of practice, costs are not granted to the defendants.