Mumm v. Jacob E. Decker & Sons

Background

A patent owner filed an equity suit claiming infringement using a “short” bill that stated ownership, the patent’s issue, compliance with Patent Office practice, and infringement. The bill did not state negatives required by earlier statutes—such as that the invention was not already in public use, on sale more than two years earlier, described in printed publications, abandoned, or subject to earlier foreign filings. The defendant moved to dismiss for insufficient facts, the District Court granted dismissal with leave to amend, no amendment was made, and the Court of Appeals affirmed; the Supreme Court took the case because courts disagreed on the issue.

Reasoning

The Court looked to the Equity Rules, which require a short and simple statement of the ultimate facts that make up the plaintiff’s case. The Court explained that the ultimate facts are those the plaintiff must prove to get relief. The negative matters listed in the statutes are affirmative defenses that the defendant must prove. The issuance of a patent is prima facie evidence that the invention met statutory conditions, so the plaintiff need not plead the absence of prior use or publication. The Court rejected practical arguments for keeping the old pleading rules and emphasized the Rules’ goal of simplicity.

Real world impact

The Court reversed the dismissal and sent the case back for further proceedings. Practically, patent owners may rely on short, plain complaints to start infringement suits without alleging negatives that defendants must prove. Defendants remain free to raise and prove those defenses later.