Owing to the fact that the briefs discuss a number of propositions which are not directly involved in this appeal, the appearance of unusual complexity is given to what, in reality, is a comparatively simple question.
[1] The bill filed under section 4915 of the Revised Statutes prays that the complainant may be awarded a patent for the invention pointed out in the claims set forth in paragraph VII of the bill. The bill also prays for a decree holding that the complainant was the original and first inventor of the invention pointed out in said claims and is entitled to a patent therefor in the proceedings now pending in the Patent Office. The demurrer presents the question that the so-called generic invention for which the complainant asks a patent is disclosed in patent No. 771,628 of October 4, 1904, attached to the bill, and that if another patent be given the complainant containing the broad claims asked for, the monopoly of the existing patent will be extended after its expiration, and parties making the specific devices released by the expiration of the prior patent may be held as infringers of the broad claims of the proposed patent. In other words, a new patent with broad claims will extend the monopoly of the earlier patent with more restricted claims. That the proposed claims are generic and the existing claims restricted, is alleged repeatedly in the bill. We see no answer to the proposition that the proposed patent would be void for double patenting. If the facts alleged in the bill be correct, the claims of the new patent, if issued, will cover the specific devices covered by the claims of No. 771,628, which devices the public have a right to use immediately after the expiration of that patent.
The Circuit Court was entirely justified in awarding costs to the defendant. It is enough that the demurrer was sustained. The fact that the defendant presented several grounds of demurrer which the court thought untenable is immaterial in view of the controlling fact that the demurrer was upheld and the bill dismissed.
[2] A defendant who obtains judgment dismissing the complaint upon one defense is not precluded from recovering costs because he has pleaded a dozen other defenses which were wholly without merit.
The decree is affirmed with costs.