The questions herein are presented upon a motion to strike out the second and fourth pleas, and a demurrer to the third, fifth, sixth, seventh, and ninth pleas, of defendants, in an action at law to recover damages for the alleged infringement of letters patent Ho. 81,132, granted August 18, 1868, to William A. Brickill, for an improvement in feed-water heaters for steam fire engines. The defendants move to require plaintiffs to reply to the eighth plea, and such other pleas as the *217court may permit to remain of record. The demurrer to the complaint, which embraced some of the matters stated in these pleas, was overruled by Judge Shipman, (49 Fed. Rep. 372.)
The first plea is the general issue. The second plea alleges that ihe combination covered by the letters patent was not an invention when it was produced by the patentee. The plaintiffs claim that this plea is surplusage, as it is embraced within the general issue. Undoubtedly, want of invention appearing on the face of the patent may be taken advantage of under the general issue without notice, or under any other plea, or without any plea. Hendy v. Iron Works, 127 U. S. 370, 8 Sup. Ct. Rep. 1275; Dunbar v. Myers, 94 U. S. 187; Brown v. Piper, 91 U. S. 44; Slawson v. Railroad Co., 107 U. S. 649, 2 Sup. Ct. Rep. 663. But defendants claim that the defense of want of invention, disclosed by evidence as to the prior state of the art, where the combinations constituting such prior art are not the same combination as that described in the patent, and do not anticipate it, must be separately pleaded. Walk. Pai. §§ 446, 599. The circuit court, of appeals, in Packing Co. v. Cassidy, 53 Fed. Rep. 259, has decided that the want of invention, considering the prior state of the art, is matter of defense, and may he raised without notice. Robinson on Patents, (section 992,) says;
“While tlie general issue is permitted in the foregoing cases, it is not incumbent on the defendant to employ it. He may plead specially any or all of his defenses, except that which denies his performance o-f the infringing act; and tHis is always his proper course, when he desires to tender a specific issue, lo be simply traversed by the plaintiffs.”
The same matter cannot be presented both in a special plea, and by a notice under the general issue. 3 Rob. Pai. § 992. Matter which might, be made the subject of notice under the general issue may be pleaded speciailv. Evans v. Eaton, 3 Wheat. 503; Cottier v. Stimson, 20 Fed. Rep. 906; Curt. Pat. p. 357; Cottier v. Stimson, 18 Fed. Rep. 689. I do not see that allowing the second plea fo sfand does the plaintiffs any material injury, and the defendants insist that without it an important defense would be closed against them.
The third plea alleges that the patent is void because the contrivance is, nothing but the combination of old devices, without producing any new mode of operation, and states the prior art which, is relied on to support this claim. The plaintiffs contend that ¡his is merely an allegation, in another form, thht the combination claimed by the patent is a mere aggregation, and not a combina! ion, and that, therefore, this defense was disposed of by the opinion of Judge Shipman on the demurrer to the complaint. It seems to me that this defense could not have been disposed of on demurrer, because it depends upon proof, not only that the devices composing the combination are old, but also that there is no new mode of operation. The defendants do not here claim an aggregation, but they claim that, the combination is not patentable because, its component devices being old, their combined operation is also old,
*218The fourth plea alleges that the combination covered by the patent required nothing' but mechanical skill for its production, in view of the prior state of the art. This seems to be equivalent to the second plea, with the addition of the special matter concerning the state of the art on which defendants rely. It is not included in the 27 defenses enumerated'in Walk. Pat. § 440. Defendants’ counsel claims that on the trial he can introduce any evidence he pleases of the prior state of the art, to show that, in view of the state of the art, there was no invention. Whether this can be done without notice of the particulars intended to be proved, must be decided on the trial. The object of this plea seems to be to guard against an adverse decision as to the admission of evidence. The suggestions made concerning the second plea apply to the fourth plea.
The fifth and sixth pleas allege that the patent is void because it is for a mere aggregation, and does not particularly point out, and distinctly claim, the part, improvement, or combination claimed by the patentee as his invention. The ninth plea sets up the statute of limitations of the state of Connecticut as a bar to a part of the plaintiffs’ claim. Each of these points was x*aised by the demurrer to the complaint, and overruled by Judge Shipman. They should not be made a part of the dnswer without leave of court. McClintick v. Johnston, 1 McLean, 414. But the defendants wish to set up these defenses in their plea in order to secxxre their right to have them passed upon by the circuit court of appeals. It is not certain that such right could be secured by an assignment of error based upon the overruling of said demurrer. The general rule is that, if the demurrant wishes to take advantage of such claim of error, he must let final judgment be entered upon it, for, if he answers after such ruling, he waives any objection to it, except for radical defects. Bliss, Code PI. § 417. How far this rule prevails, under the practice in this state, is not settled. The policy of the practice act requires that all objections to the complaint should be taken by demurrer, so that all preliminary matters may be reached by preliminary objections, and disposed of before the trial on the merits. Trowbridge v. True, 52 Conn. 197; Merwin v. Richardson, Id. 233; Donaghue v. Gaffy, 53 Conn. 52, 2 Atl. Rep. 397. But the danger and inconvenience attendant upon a final judgment on such demurrer have led to Various expedients for preserving all such rights until the appeal after final hearing. Under these circumstances, I think I ought to treat these pleas as filed upon allowance of a motion for leave so to do, especially as plaintiffs demurred to them before making any motion'to strike out. Defendants desire that they be allowed to stand, and be overruled upon the trial, but, plaintiffs having demurred to them, they are entitled to have their demurrer decided.
The reasoning of Judge Shipman in the overruling of the demurrers, with which I fully concur, shows that these pleas are demurrable, and I sustain the demurrers on the ground that the *219pleas are insufficient. Defendants will not be required to file any further pleading thereto, and I think, by sustaining the demurrers to these pleas because of their insufficiency, all the rights of tlie defendants on appeal will he saved to them. In any case, 1 do not see .how the demurrers can he overruled.
The seventh plea alleges want of novelty, because the alleged invention had been previously patented, on certain specified dates, by other parties. The dates of the patents so pleaded are prior to the date of the patent in suit. Section 4920, Bev. St. U. S., provides for allegation and proof of a patent, or description in some printed publication, prior to the, supposed invention or dis-„ covery. If this plea is held sufficient, and these patents pleaded really contain the invention in question, complainants must reply, alleging the real date of invention. This might he a better and fairer mode of pleading, hut the real question is that pointed out by the statute, — whether the patents pleaded in defense antedate the supposed invention or discovery, — and I think the statute requires the defense to be so pleaded.
The motions to strike out the second and fourth pleas are .denied. The demurrer to the third plea is overruled. Tlie demurrers to the fifth, sixth, seventh, and ninth pleas are sustained, with leave, as to the seventh plea, to plead over within 20 days. The motion to require the plaintiffs to reply to the pleas is denied. Walk. Pat. § 478. If plaintiffs choose not to reply by denial or otherwise, they take upon themselves whatever risk may attend said refusal.