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EEPORTS 



OF 



CASES ARGUED AND DETERMINED 



DV TBE 



€xxmt €mxt jaf % Stnitei States 



FOB THE SECOND CIRCUIT. 



BT SAMUEL BLATCHFORD, 

AM AMOOUTB lUSnOB Or Xm IDFBniS CODBT OF TBI VSOMD 8TAT1 



VOLUME XX. 



NEW YORK: 
BAKER, VOORHIS <fe CO., PUBLISHERS, 

6S NASSAU STREET. 
1883. 



Catered, accordiog to Act of Congress, in the year one thousand eight hundred and elghtj4hree, 

Bt SAMUEL BLATCHFORD, 
In the Office of the Librarian of Gongresa, at Washington. 



LIBRARY OF THE 

LrU'~ ^T/UyrORB, JR., UlWMUITf 

Uc, tdPARTHIE/IT. 



I 

1 



Bakbx ft GoDWiir, Pkimtbks, 
N«. ff Ftok Row, N«w Twk. 



JUDGES 

OF THE CIROUIT COURTS OF THE UNITED STATES 

WITHIN THE SECOND CmOUIT, 

DXTBING THE TIME OF THSBE BEPOBTB. 



WARD HUNT, Assooiate Jubtioe of the Supbeme Cottbt 
OF THE United States.* 

SAMUEL BLATOHFORD, Associate Justice op the 

SUPBEME COUBT OF THE UnTTED StATES.* 

SAMUEL BLATOHFORD, Cibcuit Judge of the Second 

Judicial CiBouiT.t 
WllJJAM J. WALLACE, CiBcuir Judge of the Second 

Judicial dECurr.f 

DISTRICT JUDGES. 

ADDISON BROWN, Soutbebn Disteiot of New Yobk. 

WILLIAM J. WALLACE, Nobthebn Distbict of New 
Toek.:|: 

ALFRED C. COXE, Nobthebn Distbict op New Yobk4 

CHARLES L. BENEDICT, Eastebn Distbict of New 
Yobk. 

HOYT H. WHEELER, Vebmont. 

NATHANIEL SHIPMAN, Connecticut. 

* The Honorable Wabd Hurt redgned the office of Associate Jastioe of the 
Supreme Court of the United States, and the Honorable Samuxl Blatohfosd 
was appointed in his place March 27th, 1882, and took the oath of office April 
8d, 1882. 

f The Honorable Samuel Blatchtobd resigned the office of C^cnit Judge of 
the Second Judicial Circuit, and the Honorable Wiluam J. Wallace was ap- 
pointed in his place April 6th, 1882, and took the oath of office April 26th, 1882. 

X The Honorable William J. Wallack resigned the office of Judge of the 
IKstrict Court of the United States for the Northern District of New York, 
and the Honorable Altrxd C. Cozs was appointed in his place May 4th, 1882, 
and took iba oath of office May 16th, 1882. 



«^^ The foUowmg corrections should le made in this 
Volume : 

Page 378, line 28 of syllabus, for "same " read " some," 
** 467, « 6" " *' « Ucense" read "lease of a machine. •• 

" 499, " 18" " " "destructive" read "distinctiTe'' 



CASES 

REPORTED IN THIS VOLUME. 



AdamB(Hoetetterv.) 826 

V, Howard 88 

Albany City National Bank v. 

Maber 841 

Allen (JaoobflCRQ v.) , . 526 

American Grape Sugar Co. (New 

York Grape Sugar Co. v.j,. . . 886 
Anaonia Brass A Copper Co. ( W est- 

ern Electric Mfg. Co. v.) 170 

Armstrong v. Mntual life los. Co. 498 

Arthur (Whiter.) 287 

Ayerill Chemical Paint Co. v. Na- 
tional MixedPaint Co 42 



B 



Bailey (Brooks v.) 86 

Baltaer (BischoffBbeim v.) 229 

Barker tr. ShootflL 178 

«. Stowe 186 

Bartow (Uoited States v.). 849, 861 

Benedict v. Williams 276 

Bernard v. Heimann 21 

Bischoffsheim v. Baltzer 229 

Boston Beef Packing Co. v. Stevens 448 

Bonton (Searls v.). 426, 628 

Brainard v. Gramme 680 

Brett V. Qnintard 820 

Brooks V. Bailey. 86 

Brace «. Harder 866 

Buerk «. Imhaenser. 274 



c 



Campbell «. Kavanangh 266 

If. Mayor, Ac, of New 

York 67 

Canada Central R. R. Co.(Phelp8 v.) 460 
Carrier «. Town of Shawangaiok. . 307 



Central Vermont Railroad Co. 

(Dwightv.) 200 

L Z i (Gris- 

woldv.) 212 

Chittenden v. Tbannhanser. 69 

ClaitiD V, McDermott 622 

Coast Wrecking Co. v. Pheniz In- 
surance Co 667 

Cobam «. Schroeder 892 

Goes V. Collins Co 221 

Collins Co. (Goes V.) 221 

V. Oliver Ames A Sons 

Corporation 642 

Colwell Lead Co. (Shaw v.) 417 

Compagnie G^n4rale Transatlanti- 
qne (People of the State of 

New York v.) 296 

Contioental Life losorance Co. 

(Hale».) 616 

Continental Railway A Trost Co. 

(Wertheinv.) 608 

Co-operative Foundry Co. (Perry 

V.) 498,606 

Cortes Co. v. TbaDnbauaer 69 

Cramer v. Mack 479 

Gramme (Brainard v.) 680 

Crandal (Loercher v.) 106 

tr. Watters 97 

(Wattersr.) 118 

Cross V. McEinnon, 896 

D 

Davies v, Lathrop 897 

Davis (Simpson v.) 418 

Dodge ». Schell 617 

Dohan (Lorillard v.) 68 

Donnelley v. Ivers 881 

Dubois (McCloskey v.) 7 

Dunham Hosiery Co. (Holmes v.). 128 
Dwigbt «. Central Vermont Rail- 
road Co 200 

». Smith 210 



VI 



CASES REPORTED. 



E 
Esselborn {In re) 1 

F 

Fisher t. Meyer 278, 512 

Flagg V, MaDhattaD Railwajr Ck). . . 142 
Fountain «. Town of Angelica. ... 448 
Fraiee V. Moffitt 267 

G 

Galloway (Tyler v,) 446 

Gardner v. Herz 638 

Geer ( Ransom vJ\ 586 

Goodvear's India Rnbber GloFe 

Mfif. Co. (Meyer v.) 91 

Griswold v. Central Vermont Rail- 
road Co 212 

Gonther v. Liverpool, Ac, Ins. Co. 

862, 890 



Hale V. Continental Life Insaranoe 

Co 616 

Harris V. Hess 268 

Hartv. Lovell 816 

Hartford Spring A Axle Co. (lyes 

AMillerv.) 888 

Hayes v. Seton 484 

Heimann (Bernard V.) 21 

Herdsman v. Lewif 266 

Herz (Gardner v.). 688 

Hess (Harris V.) 268 

Hoe V. Eahler 4S0 

Hoffman (New York Bang and 

Bnsbing Co. v.). 8 

Holmes v. Dunham Hosiery Co. . . 128 

V. Plainville M%. Co 128 

Hoetetter v. Adams 826 

Howard (Adams V.) 88 

I 

Imhaenser (Bnerk v.) 274 

In re Esselborn. 1 

Supenrisors of Election 18 

Ivors (Donnelley ».) 881 

lyes A Miller v, Hartford Spring 
A AxleCo 888 

J 

Jaokman (McKay «.) 466 



Jacobson v. Allen 625 

JenninfirB v. Ribbe « 868 

Jones (United States v.) 286 

K 

Kahler (Hoe V.) 480 

Eavanangh (Campbell v.) 266 

Kent (Miller «.) 1 50ft 

Kibbe (Jennings v.) 868 

L 

Lamar (McCay vA 474 

Landers (StroDrioee v,), 78 

Lathrop ^Davies «!) 897 

I^hman (McKay v.) 466 

Leip8ic(The) 288 

Lewis (Herdsman v.) 266 

Lindsay «. Stein 870 

Liverpool, Ac, Ins. Co. (Gnnther 

•.) 862,890 

Loercher v. Crandal 106 

Lorillard «. Dohan 68 

Lovell (Hart ».) 816 

(Schneider v.) 811 

M 

McCall V. Town of Hancock 844 

McCny v. Lamar 474 

McCloskey v. Dubois 7 

McDermott (Claflin v.) 622 

McKay v. Jackman 466 

V. Lehman 466- 

V. Scott Sole Sewing Ma- 
chine Co 46& 

Mack (Cramer v.) 479 

McKinnon (Cross v.) 895 

Maher (Albany City National 

Bank v.) 841 

Mallury M%. Co. v. Marks 82 

Maltme (United States v.) 187 

Manhattan Kailway Co. (Flagg v.) 142 

Marder ( Bruce v ) 866 

Marks (Mallory Mfg. Co. v.) 82 

Matthews v. Puffer 288 

V. Spangenberg 482 

Maxheimer (Meyer v.) 16 

V. Meyer 17 

Mayor, <fcc., of New York (Camp- 
bell vj 67 

Mellen v. Town of Lansing 278 

Merriam (Searls v.) 268 

Meyer (Fij»her v.) 278, 612 

(Maxheimer V.) 17 

V. Goodyear's India Rubber 

Glove Mfg. Co 91 



CASES REPOBTED. 



Vll 



Mejer v. Mszbeimer 16 

Miller v.Eeot 608 

Haffitt (Frazee v.) 267 

Hanson v. The Mayor 858 

Matnal Life Ins. Co. (Armstrong v.) 498 



N 



Narrasransett (The). 87 

national Mixed Paint Co. (Ayerill 
Chemical Taint Co. v.) 42 

Stock Yard Co. (Robin- 
son o). 618 

Nellis (Yao Deosen v.), 45 

New HaypD Steam Mill Co. v. Se- 
cnritv Ins. Co 192 

New York A Baltimore Coffee Pol- 
ishing Co. V. New York Cof- 
fee Polishing Co 174 

— -^— Bong and Bushing Co. 
V. Hoffman 8 

Central and Hudson 

RiTer RaiLoad Co. (Robin- 
son r.) 888 

CoflFee Polishing Co. 

(New York A Baltimore Coffee 
Poliehing Co. v.). 174 

Grape Sogar Co. v. 

American Qrape Sugar 6o. . . 886 



o 



Oliyer Ames A Sons Corporation 

(Collins Co. ».) 642 



People of the State of New York 
V, Compagnie G^n^ralo Trans- 

atlantique 296 

Perry r. Co-operatiye Foundry Co. 

498, 606 

Phelps (United States V.) 129 

V. Canada Central R. R. Co. 450 

Phentz Insurance Co. (Coast Wreck- 
ing Co. v.) 667 

Philips ( I lobinson Tobacco Co. tf.) . 669 
PlaioyUle Mfg. Co. (Holmes v. ).. . . 128 

Plimpton V. Wiiislow 82 

ProTit fence and Stonington Steam- 
ship Co. V. Virginia Fire and 

Marine Ins. Co 405 

Puffer (Matthews v.) 288 

Q 

<)iditUrd (Brett •.). 820 



B 



Ransom v. Geer 686 

Reissner (Sharp v.) 10 

Richardson (Steyens v.) 68 

Robinson o. National Stock Yard 

Co 618 

r. New York Central and 

Hudson Riyer Railroad Co . . . 888 

Tobacco Co. ». Philips.. 669 

Rose V, Stephens A Condit Trans- 
portation Co 411, 466 



s 



Schell (Dodge v.) 617 

Schiie (Yueneling v.) 462 

Schneiaer v. Loyell 811 

Schroeder (Coburn v.) 892 

Scott Sole Sewing Machine Co. 

(McKay ».) 466 

Searls «. Ronton 426, 628 

V. Merriam 268 

Sears (Sieam Stone Cutter Co. v.). 28 
Security Ins. Co. (New Hay en 

Steam Mill Co. v.) 192 

Seton (Hayes v.) 484 

Shttrp V. Reissner 10 

Shaw V. Colwell Lead Co 417 

Sho> te (Barker v.) 178 

Simpson v. Dayis 418 

Smith (Dwiirht ».) 210 

V, Standard Laundry Ma- 
chinery Co 860 

Spancenberg (Matthews v.) 482 

Standard Laundry Madiinery Co. 

(Smith©.) 860 

Steam Stone Cutter Co. v. Sears. . . 28 

Stein (Lindsay v.\ 870 

Stephens A Condit Transportation 

Co. (Rosev.) 411,466 

Steyens (Bo&ton Beef Packing Co. 

V.) 448 

V. Richardson 68 

Stowe (Barker v.). 186 

Strobridge v. Landers. 78 

Superyiaors of Election (In re),,, 18 



Tallmadge (Traders' Bank of Chi- 

ca^o V.) 89 

Thannhauser (Chittenden v.) 69 

(Cortes Co. v.) 69 

The Leipsic 288 

Mayor (Munson v.) 868 

— NaiTagausett 87 



• • • 

VIU 



CASES BEPOBTED. 



Town of Angelica (Fountain v ). . . 448 

Hancock (McCall V.) 844 

•^ Laosing (Mellen V.) 278 

Shawaoffonk (Carrier v.). 807 

Traders' Bank of Chicago v, Tall- 

madee 89 

Tyler i>. Galloway 445 



u 



United States v. Bartow 849, 861 

— V, Jones ; . . 286 

V. Malone 187 

— : V. Phelps 129 



Van Densen v. Nellis 46 

Yermoot Centrfd Bailroad Co. 
Webbv.) 218 



Ylrg^ia Fire and Marine Ins. Co. 
(Providenoe and Stonington 
Steamship Co. v.) 405 

w 

Watters (Crandal v.) 97 

«. Crandal 118 

Webb V. Vermont and Central Bail- 
road Co 218 

Werthein v. Continental Bailway 

A Tmst COj, 60a 

Western Electric Mfg. Co. v. Anso- 

nia Brass A Copper Co 170 

White V. Arthur 287 

WUliams (Benedict i>.) 276 

Winslow (Plimpton v.). 82 



Tuengling v. Schile 462 



APPENDIX. 



I. Bulee 671 



CASES 



CITED IN THIS VOLUME. 



JStzia life Ids. Co. v, France 496 

Alien V, Brown 846 

Amee v. Colorado R. R. Co 481 

Andrews v. Carman. 20, 71 

V. Smith 206 

AngeU V. ADgell 176 

Areoz v. Weir 626 

Attorney-General v. Romford Chem- 
ical, Works 176 

B 

Babbitt ». Clark 41 

Bailey v. Le Roy 12 

Baker v. Taylor 888 

Bank of United States v. Halstead. 28 

If. Moss. ... 139 

Barker v. Shoots 186 

», Stowe 178,186 

Barney «. Baltimore City 846, 449 

». Latham 66 

BartOD V. Barbour 404 

Bates V. Delayan 62 

Beers v. Han^htoD 27 

Black ». Black 12 

Blake v. McEim 66 

Blandy v. Griffith 877 

Boucicanlt v. Fox 462 

Bradford v. Williams 686 

Bridges v, Sheldon 84 

Briggs V. Penniman 627 

Bristol V. Sanford 627 

Brooks v. Cook. 409 

V. Farwell 84 

Brown v. Clarke 208 

tr. Piper 178 

. V. State of Maryland 804 

Buchanan «. Alexander 409 

Buck V. Colbath 208 

Vol, XX.— B 



Bnrdett V. Estey 48& 

Burgess v. Converse 269 

Burleigh Rock Drill Co. v.Lobdell, 888 
Burr V, Duryee 820, 821, 472 



c 



Cagwin v. Town of Hancock. .844, 845 

Cammack v. Lewis 498 

Cary«. Curtis 248 

Chandler v. Worcester Ins. Co. . . . 867 

Chase «'. Sanborn 888 

Citizen's Ins. Co. v. McLaughlin. . 869 

Clarke v. Matthewson 61 

Clintsman v. Northrop 80a 

Cobbett V. Woodward 464 

Cochrane v. Deener 471 

Colby V. Coates 409 

Collar Co. v. Van Deusen 9, 472 

Collender v. Griffith 465 

Colman v. Crump 882 

Coloma V. Eaves 810 

Colston V. Gardner. 26 

Columbia Book Co. v. De Golyer. . 409 

Converse v. Burgess 270 

Coming V. Burden 471 

Cotton Tie Supply Co.r. McCready. 6 

Crandal v. Watters 116 

Cromwell v. County of Sac 191 

Cummings v. NatL Bank 848 

Curtis V. Leavitt 627 



D 



Davis t, Bruns 628 

De Florez v. Raynolds. 66 

Dennis v. Eddy 891 

Doe V. Johnston 62 

Dowell V, Griswold 891 

Draper ». Wattles 71, 72 



GASES CITED. 



Dnnean v. Gegan 610 

Dunlap V. Stetson 62 

DoDn V. darke 61, 62 



E 



Edwards v. Coombe 687 

Egbert v. Lippmann 71 

Ehrel v. Pierce 456 

Elizabeth v. Payement Co 71 

Elwood V. The Western Union Tel. 

Co 840 

Emerick v. Coakley 497 

Emerson v. Hogg 20 

Erskine v. Van Arsdale 250 

Erwin V. Lowry 216 

Jb parte iSchoUenberger 614 



F 



Fairfield v. County of Gallatin. ... 846 

Fish V. Dodge 444 

Eisk 0. Union Pacific R. R. Co. . . . 67 

Flanders v. InsnraDce Co 614 

Foote V. Town of Hanoock. . . .844, 846 

Forrest v. Eeeler 41, 481 

Franckljn v. Coihoon 26 

Freeman v. Howe 61, 208 

French v. Wineor 29 

Frese v. Bachof 882 



G 



Gardner v. Herz 689 

Gayler v. Wilder 429 

Gibbons V. Ogden 808 

Gill V. Wells 820. 821 

Godfrey v. Eames. 877 

Goldoey o. Lonling 687 

Gordon «. Gilfoil 206 

Gorham Co. tr. White 868, 864 

Gould V. Town of Sterling. 847 

Grace v. Newman. '. . .466, 462 

Greene v. Bishop 466 

Green v. Lessee of Neal 846 

Gomee v. County of Brunswick.. . 481 



H 



Hflgan V. Lucas 207 

Hailes v. Van Wormer 601 

Harris v. Dennie 409 

Hartell o. Tilghman 860, 862 

Batch V. Dorr 622 

Hawea v. Oakland 448 



Hecks V. Bums 628 

Henderson v. The Mayor 800 

HoL'g V. Emerson 20 

Hotel Co. t». Wade 208 

House V. Metcalf 446 

Howes V. McNeaL 877 

Hoyt V. Thompson's Exr. 166 

Humboldt v. Long 8 iO 

Hussey v. Bradley 891 

Hyde v. Stone 207, 21 7 



In re Golby. 687 

Hatton 687 

Reiman 687 

Irvine v. Lowry 614 



Jacobs tf. Latour 621 

James «. Campbell. .446, 470, 628, 630 

Johnson v. Donaldson 466 

Jollie V. Jaques 886 

Juneau Bank V. McSpedan 84 



Eflmm V. Stark 62 

Eeene v, Wheatley 462 

Kflleber v. Dorliiig 71 

Eelsey v. Pennsylvania R. R. Co.. 614 

Kitchen v. Strawbridge 614 

Knapp V Railroad Co. 404 

Enowlton v. Congress A Empire 

Spring Co 481 

Kosbkonnng tr. Burton 497 

Kriealer v. Morton 269 



Latham «. Chafee 206 

Lazarus v. Commonwealth Ins. Co. 497 

Le Roy v. Tatham 8 

Little «. Gfiuld 466, 462 

L-igan V. Patrick 61^ 62 

Lorillard v. McDowell 64 

V. Ridj^eway. 64 

Lu wenstein v. Giidewell 62 



M 



McCarthy «. Lavascheu 626 

McCollongh V. Moss. 166 



CASES CITED. 



XI 



If cHonald «. Smalley 846 

M cEImnyle v. Cohen 624 

MachiDe Co. v. Morphy 6 

McKay v. Dibert 469 

McLean v. Fleming: 882 

McMicken «. Webb 86 

MalleU 9. Dexter 217 

Maoro v. Almeida 26 

Mfe.Co. 9. Ladd 17 

MarFh v. Fulton Couoty 287 

Mathez 9. Neidl? 627 

Memphis v. Dean. 204 

Mercantile Trust Co. v. Lamoille 

ValleyR. R. Co 206 

Meyer v. Pritchard 91, 92 

MUler «. Brass Co., 446, 470, 488, 628, 

680 

Milligan v. Milledge IS 

Mitchell V. Henry 882 

Mofiatt V. Van Mullinii^en 636 

Morit*'jo V. Owen 60 

Morgan's Sons Co. v. Trozell 832 

Morris V. Lowell M%. Co 389 

Mowry». Whitney 177 

Mullen V. St. John 412 

Mutual Protection Ins. Co. v. Ham- 
ilton 497 

Hyers «. Callaghan 886 



N 



National Bank v. Kimball 848 

IT. Mechanic's Nat 

Bank 391 

Kew York Life Ins. Co. v. Flack. . 497 
N*nes V. Hojpe Mutual Life Lis.Co. 6 1 6 

Norcross v. Thorns 444 

Horth «. Kershaw 388 



o 



O'Reilly V. Morse 447, 472 

Osborne v. Brooklyn City R. R. Go. 846 
Osgood V. Allen 886 



Page V. BumstiDe 496 

V. TowDwnd 469 

Paisre «. Banks 462 

Palmer e. Warren Ins. Co 199 

Paret t>. Ticknor 637 

Parkinson v. Loselle 384 

Parton v. Praog 462 

Payne V. Hook 217 

Peck r. Crane 25 

Penn. Co. *. Boy 889 



Pickering v. McCullough. : 601 

Pomeroy v. Manhattan Life Ins. Co. 497 
Pond V. Vermont Valley R. R. Co. 208 
Powder Co. ». Powder Works. ... 44 

Pulliam V. Osborne 208 

Pullman v. B. <lk O. R. R. Co 889 



E 



Railroad Co. v. Harris 614 

— ^— - — - V. Husen 806 

Railway Co. v. Sayles 6 

Reckendorfer v. Faber 601 

Reed «. Consequa 62 

Regina V. Bidwell 862 

Rez V. Sainsbury 862 

Rhode Island v, Massachusetts. .12, 18 

Rice V. Houston 404 

Richardson v. Miller 464 

Roemer v. Simon 429 

Rollo V. i^ndes Ins. Co. 409 

Rosenbach v. Drey fuss 467, 464 



s 



Sanders «. Loi^n 889 

Sawyer t>. Gill 62 

V, Horn 882 

Styles V, Northwestern Ins. Co. . . 611 

Schillineer v. Qunther 447 

Schuessfer v. Daris 116 

Scott V. ainton, Ac, R. R. Co 481 

V. London <fc St. Eatherine 

DocksCo 413 

Segee v. Thomas 62 

Shelby v. Bacon 216 

Sheldon v. Houghton 462 

Shelton v, Austin 186 

V. The Collector 186 

Silsby V. Foote 191 

Singer v. Braunsdorf 877 

66 Terra Coita Vases 466 

Smith V, Goodyear Dental Vul- 
canite Co. . .877, 379, 892 

V. Lawrence 636 

V, Lusher 636 

». N. y. A H. R. R. Co 839 

V. Town of Ootaiio 192 

Snow V. (Columbian Ins. Co. 199 

Spalding v. Rosa 619 

Starin v. Town of Genoa. 347 

Sieam Gauge A Lautern Co. v. Mil- 
ler. 888 

Stone Cutter Co. ». Wind- 
sor Mfg. Co 488 

^teegman v. Maxwell. 270 

Stei<;er v. Bonn 84 

Stephani's Case 289 



xu 



GASES CITED. 



Stokes V. SaltonBtall 889 

Strobridge v. Liodsay 79 

StroYo V. Schwedler 884 

Stuart V. Palmer 848 

Suydam v. Broadnax 216 

Swain Turbioe <b Mfg. Co. «. Ladd 684 

Swanston v. Morton 269 

Swords V, Edgar 446 



Tarbell «. GrigKS 628 

Taylor ». rarryJ 208 

». Mixter 80 

Teague v. Hubbard 686 

Terry v. Little 627 

Tba'cb V. Metropole Ins. Co 498 

The Bank v. Labitut 189 

Eleanora 90 

Emily B. Souder 296 

Jubilee 294 

Passenger Cases 800, 3(>6 

People V. Morgan 286 

Princess Alice 294 

Reward 294 

Strathnaver. : . 294 

Tilgbman r. Proctor 70, 471 

Tillson V. United States 248 

Todd V. Flight. 446 

Town of Venice v. Mardock.. .844, 846 
Township of Elmwood v. Marcy . . 846 

Pine Grove v.Talcott, 846 

Transportati'^n Co. «. Downer. ... 412 

Triston v. Hardey 496 

Tyler ». Welch 446 



u 



Union Bank v. Jolly 217" 

Sugar Re&iery r. Mathies- 

son 84 

United States Stamping Co.ir.King. 66- 

V. Sherman '. . . 289 

V.Smith 141 



w 

Wallace v. Holmes ^ 

Walnut V. Wade 810 

Ward V, Chamberlain 26 

V. Seabry 62- 

Warner v. Pennsylvania B. R. Co. 209 

V. Spooner 686 

Wason V, Colburn 496 

Watson V. Jones 206 

Wayraan v. Southard 28, 81 

Weeks v. Love 627 

Wehl V. Wald 67 

Wheaton v. Peters 888 

Wilkinson v. Yale 628 

Wiliams v. Johnson 882 

Wilmot V, Mudge 468 

Wilson V, San(dord 860, 362 

Winchester v, Hackley 496 

Wincock v. Turpin. 626 

Wiswall v. Sampson 208 

Wolfe V. Howe 619 

Wood V. Abbott 464 

Wouster v. Clark 488 



CASES 

ARGUED AND DETERMINED 



nr THB 



€ixmt ^mxts at t\t Mmiti 

WITHIN THE SECOND CIRCTJIT. 




In the Mattes of Geobge Esselbobn, on TTAnicAfl Cobpub. 

A person was, on an examination on a criminal complaint, committed by a Com- 
miflsioner to await the action of the grand jnry. On a habeat eorpua and a 
certiorari, the Court allowed the accoaed to depart without giying any recog- 
nisance, subject to the issuing of a new warrant of arrest, il ordered by the Coort. 
After the lapse of five months, the Court was asked by the accused to determine 
whether the CTidence before the Commissioner was sufficient to warrant his 
commitment. Meantime a grand jury had met and been discharged, without 
indicting the accused, and no information had been filed against him. He 
was not in actual or constructive custody : Hdd, that the Court would not 
determine the said question, and that, if desired, an order would be entered 
discharging the accused, because no indictment or information had been filed 
against him. 

(Before Blatobfobi), J., Southern District of New York, September 20th, 1881.) 

Blatchfobd, J, In this case, a writ of luibeaa oorpuSj re- 
turnable before this Court forthwith, was issued on the 5th 
of April, 1881, to the marshal of the TJuited States for this 
District, to produce the body of George Esselbom, with the 
cause of bis imprisonment. At the same time a writ of cer- 
Uorari^ returnable before this Court forthwith, was issued to 
a United States Commissioner to certify tlie canse of the de- 
tention of said Esselbom. The Commissioner certified the 
prooeedingB before him, consisting of a complaint, alleging a 
Vol. XX.— 1 



2 SOUTBtERN DISTRICT OF 9KW YORK, 



Jk IV Creocge Eoadborn, on HabeM Cofpv. 



criminal offence, and the teetunony taken on the examination 
on the snrrender of the defendant on the compUint. The 
retom of the marRhal to the writ showed that a warrant of 
arrest on the comphunt was issaed by the Commisfiioner to the 
marshal; that the defendant appeared before the Ck>mmis- 
sioner, and an examination was had, and the defendant was 
held to await the action of the grand jnry ; that, for the pur- 
pose of enabling a writ of habeas corpus and a writ of cer- 
tiarari to lie, the Commissioner ordered that the defendant be 
discharged on his own recognizance ; that the defendant re- 
fused to give snch recognizance ; and that the Commissioner 
then committed the defendant to the custody of the marshal 
in default of his having given snch recc^nizance. The case 
came before the Court on the forgoing papers, and, on the 
5ih of April, 1881, the Court made an order ^^ that the de- 
fendant may depart without giving any recognizance, subject 
to the issuing of a new warrant of arrest, if ordered by this 
Court." Nothing has since been done in the matter, and the 
counsel who appeared for the defendant, now, in September, 
1881, asks the Court to pass on the question as to whether 
the evidence before the Commissioner constituted probable 
cause for holding the defendant to await the action of the 
grand jury, and to hold that it did not, and to dischai^ the 
defendant. The District Attorney states, that, since the said 
order of April 5th, 1881, was made, a grand juiy has met and 
been dischaiged without indicting the defendant ; that no in- 
formation has been filed against him ; that he is not in actual 
or constructive custody ; that there is nothing to discharge 
him from ; and that it would be a waste of time to pursue 
the habeas corpus proceedings any further. 

Under § 752 of the Bevised Statutes, the writ of habeas 
corpus is granted ^' for the purpose of an inquiry into the 
cause of restraint of liberty." There is not now in this case 
any such restraint of liberty, or any such state of facts as 
requires that this Court should pass on the question as to 
whether the defendant ought originally to have been held or 
committed to await the action of the grand jury, even if it 



SEPTEMBER, 1881. 



The New York Bang and Bushing Company v. Hoffman. 



would at any time have passed on that question. The de- 
fendant was held and committed only to await the action of 
the grand jury, and, as no indictment or information has been 
filed against him, he is entitled to be discharged on that 
ground, and an order to that effect and for that cause may 
be entered, if desired. 

Sutherland Tenney^ {Assistcmt District Attorney^ for the 
United States. 

Roger M. Shemum^ for the defendant. 



The New Yoek Bung and Bushing Company 
Jaoob Hofeman. In Equify. 

Re-lflsaed letten patent No 8,488, granted Noyember 12th, 1878, to William 
C. McKean, Gkorge H. JadkBon, and Jefferaon Brown, Jr., for an " improre- 
ment in bushings for faucet holes," the original patent, No. 141,478, haying 
been granted to Samuel R. Thompson, August 6th, 1878, are for an inyention 
not described in the original, the original being for a particular form of 
wooden bushing, encased in an iron one, and the re-issue being for any form 
of wooden bushing in an iron one. 

The original patent was not yoid for want of noyelty. 

The defendant was held to haye infringed, because he furnished wooden bungs 
in iron casings, with a hole nearly through the bung, and intended to become 
the compound bushing of the re-issue, by the driying in of the remaining 
wood by the purdiaser, by inserting a yent tube in tapping the barrel 

(Before Whrleb, J., Southern District of New Yoric, September 29th, 1881.) 

Wheeleb, J. This suit is bronght upon letters patent 
No. 141,473, dated Angnst 5th, 1873, issued to Samuel B. 
Thompson, for an ^^improvement in bushings for faucet 



SOUTHERN DISTRICT OF NEW YORK, 



The New York Buog and BoshiDg Company tr. Hoffiaum. 

holes," and re-issued, November 12th, 1878, in No. 8,483, to 
William G. McKean, Geoige H. Jackson and JeflEeraon 
Brown, Jr., assignees, and now owned by the plaintifL The 
principal defences set up are, that the original patent was void 
for want of novelty ; that the re-issne is for an invention dif- 
ferent from that described in the original ; and that the de- 
fendant, in what he does, does not infringe. 

The only anticipations necessary to be noticed are the 
English patent to William Rowland Taylor, dated Angost 
6th, 1864, and sealed February 3d, 1866, for, among other 
things, the employment in beer barrels of peg holes smallest 
in the middle of the stave, and conical both ontward and in- 
ward ; the patent of the United States to John Ruegg, assign- 
or to J. G. Mai-riott, No. 70,024, dated October 22d, 1867, 
for a wooden bung screwed into an iron casing or bushing, 
having screw threads on both its outer and inner circumfer- 
ence, and screwed into the stave of beer barrels ; the patent 
No. 111,352, dated January 31st, 1871, issued to Josiah 
KJrby, for wooden bungs, with a hole in the middle for a vent 
tube, iilled with a plug, both bung and plug being made with 
the grain of the wood running horizontally ; and the patent 
No. 123,789, dated February 20th, 1872, to Otto Netzow and 
John F. Heck, for an elastic bushing for faucets, tapering 
towards the interior of the barrel, both on its outer and inner 
circumferences, with a shoulder on the inside at the inner end, 
to bear against the inner end of the faucet. 

The original patent of Thompson was for a wooden bush- 
ing having the hole for the faucet smallest in the middle and 
conical both outward and inward, screwed into another bush- 
ing or casing made of iron, with screw threads, to be screwed 
into the barrel. The claims were for the bushing, constructed 
and arranged as described, and for the combination of the 
bushing and casing, constructed and arranged as described, 
for the purposes specified. The specification of the re-issue 
states, that ^'the invention consists, broadly, in a device 
composed of a rigid sleeve or casing, to be inserted within 
the faucet hole, and provided with a yielding lining : " and 



SEPTEMBER, 1881. 



The New Tork Bang and Bnsbing Company v. Hoffinan. 



the claims are for a compound baahing for faucet holes of 
barrels, consistiDg of a rigid sleeve or casing, and a yielding 
lining, as set forth, and the combination of a casing and a lin- 
ing having a double beveled internal formation, as shown and 
described, and for the purpose set forth. 

The defendant sells beer in casks having iron casings 
screwed into the staves, for the bung, like that in the 
Rnegg patent, and like that for the wooden bushing in the 
plaintifPs patent, with bungs having a hole nearly but not 
quite through them, in the centre, filled with a plug to be 
driven in by a vent tube, carrying with it the solid portion of 
the bung opposite, when the barrels are tapped, like the bungs 
described in patent No. 148,747, dated March 17th, 1874, and 
re-issued in No. 5,987, dated June 30th, 1874, to Rafael Pent- 
large, for an improvement in bungs for casks. When these 
bungs are so tapped by the insertion of the vent tube, the 
remaining portion of the bung, with the iron casing about it, 
forms a compound bushing of wood within iron, for the vent 
tube, similar to that described in the plaintiff's re-issued pat- 
ent for faucets, and the defendant sells the beer in casks pro- 
vided with such bungs and casings, intending and expecting 
that the bungs will be so tapped with vent tubes, and used until 
the beer is withdrawn, and that then the barrels will be re- 
turned to be refilled and supplied with new bungs, and the 
process repeated. 

It is true, as has been argued for the defendant, that the 
double-conical hole for the faucet is shown in the double-coni- 
cal peg hole in the patent of Taylor, and the rigid casing for 
the wooden bushing in the iron casing for the wooden bung, 
in the patent of Euegg, the simple wooden bushing of the re- 
issue in the yielding bushing of the patent of Netzow and 
Heck, and the wooden bushing of a vent tube driven through 
a bung in the patent of Kirby; but still, as argued for the 
plaintiff, no one of these showj all the elements of this in- 
vention, as shown in either the original patent or the re-issue. 
None of them had a yielding bushing, like one made of 
wood, in an iron outer bushing or casing, forming a com- 



6 SOUTHERN DISTRICT OF NEW YORK, 

The New York Bung and Boshing Company v. Hoffinan. 

pound bashing, yielding to the fancet or yent tnbe, and rigid 
and supporting to the barrel as the plaintiffs bushing and cas- 
ing is. It is also true, as has also been argued for the de- 
fendant, that the defendant does not himself make, or use, or 
vend to others to be used, the whole patented invention of 
the plaintiff, so but that, if the whole stopped where he 
stops, there would be no infringement. But it does not 
stop there ; he furnished the means which afterwards became, 
and intended they should become, the compound bushing de- 
scribed in the re-issued patent, and in that manner directly 
procured the infringement to be done, if any was done, by 
those tapping the bungs to draw the beer, and he is himself lia^ 
ble, if any one is, for that infringement. ( WaUaoe v. HolmeSy 
9 Blatchf. C. C. JS., 65 ; Cotton Tie SfwppVy Co. v. McCreadyj 
17 Id.y 291.) So, the original patent was valid, and the re- 
issued patent is infringed, and the turning question in the 
case is, whether the original patent will support the re-issue. 

The original patent described a wooden bushing inside an 
iron one, or a yielding one inside a rigid one, and, if the de- 
scription had been general, as this statement is, it would have 
covered what the re-issue describes and claims broadly. Such, 
however, is not the case. The original describes the double 
conical form of wooden or yielding bushing only, and this 
form is described to be of the very essence of that part of 
the invention, and of the combination of which the wooden 
bushing was an important part. Thompson was not the orig- 
inal inventor of bushings, nor of wooden bushings, nor of 
iron bushings, for which any patent has been granted, under- 
lying all others of either class, so as to give a monopoly of 
them : he is subsequent to Taylor, Ruegg, and Eirby, and 
could only have a patent for what was distinguishable from 
their inventions, and his patent could be valid only for that. 
{Railway Co. v. Sayles^ 97 U. 8.^ 554.) The form of the 
wooden bushing was an important part of what so distinguished 
it, and, when form is of the substance of an invention, it is 
not to be disregarded. {Machine Co. v. Murphy, 97 U. S., 
120.) Thompson invented a particular form of wooden bush- 



SEPTEMBER, 1881. 



McCloskey v. Dubois. 



ing, encased in an iron one, and took a patent for that, 
dsBcribing no other. The re-issne is for any form of wooden 
bushing in an iron one. That is for an invention not de- 
scribed in the original. If he had discovered, as he now has, 
that other forms were usefnl, he might, doubtless, have had a 
patent covering them, or, if he had described them in his pat- 
ent, had a valid re-issne covering them, bnt he did not do 
either. 

Let there be a decree dismissing the bill, with costs. 



Wyllye Sodges, for the plaintiff. 
Preston StevensoUy for the defendant. 



John MoClobkey 
Fbedebiok N. Dubois and othebs. In Equity. 

The decision (19 Blatehf. C. C. R, 20ff) that letters patent No. 220,767, granted 
to John McCloekey, October 2 1st, 1879, for an improrement in soft metal 
traps, are void, for want of inyention, confirmed. 

A motion to open the case for new eyidence was denied, the new eyidence 
being designed to show only the improyed quality of the metal in the traps 
of the patent, and snch result being due to the process of manufacture. 

(Before Wbxileb, J., Southern District of New York, September 29th, 1881.) 

Wheelsb, J. This cause has been heard, since a decretal 
order for dismissing the bill of complaint, (19 Blatehf. C. C* 
R., 205,) and before decree signed, npon a motion of the 
plaintiff to re-open the case, for the introduction of new evi- 
dence as to the novelty and utility of the patented trap. It 
is plain that the motion should not be granted unless the new 
evidence would vary the case and probably lead to a different 



8 SOUTHERN DISTRICT OF NEW YORK, 

McCloakey v. Dnbois. 

result. The patent is Bimply for a die-drawn seamless saft 
metal plumber's trap, made by forcing the metal through 
dies at varying velocities on opposite sides. It describes 
nothing to distingnish these traps from others, except the 
mode of manufacture and longitudinal striations appearing 
upon them which are merely the result of the manufacture, 
and have nothing to do with the quality or operation of the 
traps. The patent assumed that soft metal traps were before 
known and in use, and, besides, that fact was a matter of com- 
mon knowledge, of which the Court took judicial notice. 
There was no evidence as to the quality and characteristics 
of the die-drawn traps, as compared with the cast traps before 
most in use. The new evidence would tend to show that 
their walls have greater solidity and more perfect uniformity, 
and that they are more elastic, and that the quality of the 
metal is changed and improved by the process of drawing, 
and that they have largely superseded all others in use. All 
these differences are due to the process of manufacture, in 
forcing the metal through dies, all of which effects were be- 
fore well known. They are the same as the differences be- 
tween cast and drawn lead pipe as was shown in Le Roy v. 
Taiham^ (14 How.^ 156.) There, the testimony was that the 
drawn lead pipe ^^ was superior in quality and strength, ca- 
pable of resisting much greater pressure, and more free from 
defects than any pipe before made ; that, in aU the modes of 
making lead pipe previously known and in use, it could be 
made only in short pieces, but that by this improved mode it 
could be made of any required length and also of any required 
size; and that the introduction of lead pipe made in the 
mode described had superseded the use of that made by any 
of the modes before in use, and that it was also furnished at 
a less price." Still the Court said, through Mr. Justice Mo- 
Lean : '^ A patent for leaden pipes would not be good, as it 
would be for an effect, and would, consequently, prohibit all 
other persons from using the same article, however manufac- 
tured. Leaden pipes are the same, the metal being in no re- 
spect different. Any difference in form and strength must 



SEPTEMBER, 1881. 9 



McCloskey v. DnboiB. 



arise from the mode of mannfactaring the pipes. The new 
property in the metal claimed to have been discovered by the 
patentees belongs to the process of mannfactnre and not to 
the thing made." And, in CcUar Company y. Van Devseny 
(28 WaU.y 630,) Mr. Justice Clifford said: "Articles of 
mannfactnre may be new in the commercial sense when they 
are not in the sense of the patent law. New articles of com- 
merce are not patentable as new mannfactnres, unless it ap- 
pears, in the given case, that the production of the new arti- 
cle involved the exercise of invention or discovery beyond 
what was necessary to constmct the apparatus for its manu- 
factnre or production." 

The plaintiff did not discover that soft metal could be 
wrought through dies, nor that the quality of wrought soft 
metal is generally superior to that which is merely cast, and 
does not pretend that he did ; and his patent is not for any 
such diBcovery, nor for the application of it. He constructed 
a machine by which crooked pipe could be made of soft metal 
the same as straight pipe had before been made; and the 
crooked pipe could be cut off so as to constitute traps. His 
patent is for the traps made in that way, for the effect merely 
of that machine. He has not the discovery of any principle, 
even such as Tatham had, in the working of soft metal, to 
support his patent, as the minority of the Court, in Le Roy 
V. Tatham^ thought Tatham had to support his patent. This 
newly offered evidence of the differences in quality between 
the drawn traps and cast traps shows merely the differences 
between drawn pipe and cast pipe, or wrought lead and cast 
lead, and could not affect the decision of the case at all, in 
the view taken of it by the Court. If this construction of 
the patent and view of the case are wrong, they can be cor- 
rected by appeal. 

The motion most be denied. 

James A. Whitneyy for the plaintiff. 

Peter Vwn Antwerp and Rodney Mason^ for the defend- 
ants. 



10 SOUTHERN DISTRICT OF NEW YORK, 

Sharp V, ReiBBner. 



Jambs L. Sharp 

vs. 
Chribtopher Bbissner and others. In Equtit. 

The defeadant in a suit in equity for the infringement of letters patent, without 
answering the bill, filed a plea merely denying inMngemenl The plaintiff 
moved that the plea be stricken from the files as improper or else be ordered 
to stand as an answer. In answer to the motion, the defendant showed, by 
affidavit, that he had other defences which he wished to raise by answer, es- 
pecially prior patents anticipating the plaintififs patent, and, also, limiting its 
scope so as to render infringement impossible, and that to take evidence in 
regard thereto would be expensive to both parties : Sdd, that the plea must 
be stricken from the files, with leave to the defendant to answer. 

(Before Blatohfobd, J., Southern District of New York, October 6th, 1881.) 

Blatohford, J. The bill in this case is brought for the 
infringement of a patent. The bill alleges that the defend- 
ants, without the license of the plaintiff, and in violation of 
his rights, and in infringement of the patent, did ^^ make, con- 
struct, use and vend to others to be used the said invention, 
and did make, construct, use and vend to others to be used 
hjdro-carbon stoves, made according to, and employing and 
containing, said invention," and ^' have made and sold, and 
caused to be made and sold, large quantities of said hydro- 
carbon stoves." Two of the defendants have put in a plea to 
the bill, which sets forth " that neither they, nor either of 
them, have, since the issuing of the letters patent set forth in 
said bill, ever made, constructed, used or vended to others to 
be used the invention described in said letters patent * * * 
or made, constructed, used or vended to others to be used 
hydro-carbon stoves, made according to, and employing and 
containing, said invention." The plea also denies that the de- 
fendants, " or either of them, have ever infringed upon or 
violated any exclusive right secured by said letters patent, in 



OCTOBER, 1881. 11 



Sharp V, ReissDer. 



asj manner whatever." There is nothing else in the plea 
and there is no answer to the bill or to any part of it. The 
plaintiff moves that the plea be stricken from the files as im- 
proper, or else be ordered to stand as an answer. The de- 
fendants show, bj affidavits, that they are advised and believe 
that the stoves they have made were not infringements of 
the patent sued on ; that, by the advice of their counsel, and 
for the purpose of avoiding expense to both parties, the sim- 
ple defence of non-infringement was interposed in the form 
of a plea; that the defendants have other defences which 
they wish to embody in an answer, should it be necessary for 
them to answer, the most important of which defences are 
prior patents anticipating the plaintiff's patent, and, also, 
limiting its scope so as to render infringement impossible, and 
prior knowledge on the part of various individuals ; and that, 
to take evidence in regard to all such prior patents and prior 
knowledge, would be very expensive to both parties. 

The defendants contend that the plea is a proper one ; 
that it was not necessary for the plea to be supported by an 
answer, even under the old equity practice ; that, under the 
Equity Rules prescribed by the Supreme Court of the United 
States, no plea is to be accompanied by an answer, except 
where fraud or combination is alleged in the bill ; and that, 
even if the plea be defective in form or substance, or if it 
should have been supported by an answer, the plaintiff has 
mistaken his remedy. 

"No authority is cited where a plea like the present one 
has been put in or allowed, in a suit for the infringement of 
a patent. By Equity Rule 34, if a plea is overruled, either 
on an issue of law or an issue of fact, in regard to it, the de- 
fendant has an absolute right to put in an answer to the bill, 
or to so much thereof as is covered by the plea. By Equity 
Rule 39, a defendant has a right, in all cases, to insist by an- 
swer, upon all matters of defence, (not being matters of abate- 
ment, or to the character of the parties, or matters of form,) 
in bar of or to the merits of the bill, of which he may be en- 
titled to avail himself by a plea in bar. If the present plea 



12 SOUTHERN DISTRICT OF NEW YORK, 



Sharp V. Reiasner. 



Bhonld be tried on the fact of infringement and the issne be 
f onnd for the plaintiff, and the plea be thus overmled, it 
would seem difficnlt, nnder the above ftules, to exclude the 
defendant from contesting again, nnder an answer, the qnefi- 
tion of infringement, espedallj as, nnder the issues raised by 
an answer, and nnder the light thrown on the subject by the 
proofs on the issue on the plea, and under new proofs on the 
issues on the answer, the question of infringement might be 
presented in a very different light from that in which it was 
presented on the trial of the issue on the plea, and in one 
much more favorable to the defendants. Indeed, the defend- 
ants' affidavit on this motion states that they will desire^ by 
answer, to put in prior patents, to limit the scope of the 
plaintiff's patents, so as to render infringement impossible. 
It is difficult to see how they are to be prevented from doing 
this by answer, after the overruling of their plea. The ques- 
tion of the infringement of a patent depends very much on 
the construction of its claims, and that depends very much 
on prior patents on the same subject. If such prior patents 
are to be put in they ought to be set up in an answer, and be 
put in once for all, and the issue of infringement ought to be 
tried but once, and under an answer, and ncft under a plea. 
The defendants think they will succeed on the question of 
infringement. But the plaintiff thinks otherwise. If the de- 
fendants succeed, expense will have been saved by having no 
other issue but that on the plea. But, if the plaintiff succeeds 
on the plea, he must, to realize his success, go through a 
second litigation on the same question ; and no expense will 
have been saved. The one resxdt is now to be contemplated 
quite as much as the other. Within the principles laid down 
in Rhode Island v. MctssachicsettSy (14 Peters j 210,) it would 
be unjust to the plaintiff to permit the issue of infringement 
to be determined on the plea. Besides this, none of the ad- 
judged cases sanction, in a suit like this, a plea merely of non- 
infringement, under rules of practice such as those which 
govern this case. On the contrary, the authorities condemn 
such a plea. {Bailey v. Ze Roy^ 2 Edw. Ch. jB., 614 ; Black 



OCTOBER, 1881. 13 



In r$ the Appointment of Snperyieore of Election. 

V- Blacky 16 Oeorgiaf 445 ; MiUigan v. MiUedge^ 3 Cranoh^ 

aso.) 

It is onlj when a plea is unexceptionable in its form and 
character, that it is to be set down for argument or to be re- 
plied to. {Shode hlcmd v. MasaachvsettSj 14 Fetera^ 210, 
257.) The motion to strike this plea from the files, as im- 
proper, is a correct motion, and must be granted, with leave 
to the defendants to answer in 30 days, on payment of costs. 

Brieaen A BettSy for the plaintiff. 

W. H. L. Lee^ for the defendants. 



In the Mattes of the Appointment of SiTFEByisoss of 

Elechon. 

The ConTt being required, by § 2,012 of the Reyised Statutes, to appoint, in 
eacb electioa district, two supervisors of election " of different political par- 
tiee," and there being a dispate as to who should be appointed from the 
Democratic party in the city of New York, the Court selected persons recom- 
mended by " The New York County Democracy." 

(Before Blatghiobd, J., Southern District of New York, October 6th, 1881.) 

< 

BuiTOHFORD, J. The requirement of § 2,012 of the Be- 
Tised Statutes is, that the two supervisors of election, in each 
dectioD district, ^^ shall be of different political parties." By 
§ 2,026, the chief supervisor of elections is required to re- 
ceive the applications of all parties for appointment as super- 
vifiors of election, and to present such applications to the 
judge, and fumish information to him in respect to the ap- 
pointment bj the Court of such supervisors of election. A 
question has now arisen as to who shall be appointed super- 
visors from the Democratic party, in the city of New York, 



14 SOUTHERN DISTRICT OP NEW YORK, 

/n re the Appointment of Snperyisors of Election. 

at the coining election, in two Oongressional Districts. Ap- 
plications are made by persons belonging to an organization 
called "The New York County Democracy," and also by 
persons belonging to an organization called " The Democratic 
Organization of the city and county of New York." The 
former organization has come into existence since the last 
Democratic State Convention was held. Delegates repre- 
senting " The Democratic organization of the city and county 
of New York " were recognized and admitted to seats at the 
last Democratic State Convention, and were the only dele- 
gates recognized by that Convention as representing the 
Democratic party in the city and county of New York. 
Whenever a question has arisen heretofore in respect to what 
political organization shoxdd be recognized by the Court, in 
appointing supervisors, as entitled to be considered as the 
regular representative organization of the political party, 
the practice has been to recognize that one which was recog- 
nized by the last State Convention of the party. It has been 
thought wise to recognize some one organization as entitled to 
represent the political party, and to ask that members of its 
organization, recommended by it, and those only, provided 
they were fit and proper persons, and met the requirements 
of the statute, should be appointed the supervisors from such 
political party ; and no rule more likely to effect a just re- 
sult, and to meet with general acquiescence, could be sug- 
gested, than the one above referred to. But, like every gen- 
eral rule, it must be modified by a change of circumstances. 
If such general rule were to be applied to the present case, 
without reference to any circumstances which have trans- 
pired since the last Democratic State Convention was held, 
the organization called " The Democratic organization of the 
city and county of New York" would be recognized as the 
regular representative oi^nization of the Democratic party 
in the city and county of New York. But it has been made 
clearly to appear to the Court, that, since the last Democratic 
State Convention was held, such proceedings have been duly 
and regularly had by proper and authorized representatives 



OCTOBER, 1881. 15 



Meyer v, Mazheimer. 



of " The Democratic organization of the city and county of 
New York/' that, although that organization may still for- 
mally exist, the new organization called "The New York 
Comity Democracy " must be regarded as representing it and 
its members, and as the only organization now recommend- 
ing persons to be appointed as supervisors from the Dem- 
ocratic party, which onght to be recognized by the Court as 
the regular representative organization of the Democratic 
party in the city and county of New York. Therefore, the 
persons recommended by the organization called " The New 
York County Democracy '' will, if fit and proper persons, 
and meeting the requirements of the statute, be appointed 
by the Court as supervisors from the Democratic party. 

WiUiam C, Whitneyy for the New York County De- 
mocracy. 

Cha/rles W. Brooke, for the Democratic organization of 
the dty and county of New York. 



John D. Meter and Chaelbs M. Nbubaueb 
John Maxheimxs. In Equity. 

Re-iaeaed letters patent No. 8,694, granted to John D. Meyer and Charles M. 
Neabaner, Febmary 26th, 1879, for an improyement in wire cages, the orig- 
inal patent, No. 189,874, haying been granted to Michael Grebner, June 10th, 
1878, are inyaUd, being for a different inyention from the original 

The re-issue was, apparently, expanded beyond the original, to cover the inter- 
yening inyentions of others. 

(Before Wbmmleb, J., Sonthem District of New York, October 6th, 1881.) 



16 SOUTHERN DISTRICT OF NEW YORK, 

Meyer v. Maxheimer. 

Wheeler, J. This suit is brought upon letters patent 
No. 139,784, granted to Michael Grebner, Jnne 10th, 1873, and 
re-issned to the plaintiffs, February 25th, 1879, in No. 8,594, 
for an improvement in wire cages. Among the defences set 
up is one that the re-issne is for a different invention from 
that in the original patent. The original patent was for a 
cage having the horizontal bands provided with slots through 
which loops formed outwardly on the upright wires were 
placed and held by a locking bar extending around the cage 
ontside the band and through the loops, making a firm and 
durable connection between the bands and wires. After that, 
and before the re-issue, cages were invented and brought into 
use having their horizontal bands made tubular, of sheet metal, 
vnth holes above and below, through which the upright wires 
were placed, having bends, like loops, extending outwardly 
vdthin the hollow bands, to form a connection between the 
wires and bands. The re-issue is for a cage having horizontal 
bands of sheet metal, or other suitable material, provided with 
holes that engage with the vertical filling wires, which have 
loops or crimps that fit the holes and effectually prevent the 
vertical displacement of the horizontal band ; and a locking- 
bar, like that in the original, to prevent either of the filling 
wires from being pressed in so as to disengage its crimps from 
the cVoss, or horizontal, band. The first claim is for the com- 
bination, in a cage, of filling wires provided with loops or 
crimps and cross-bands provided with boles adapted to engage 
with the loops or crimps. 

There is nothing in the original patent about the engage- 
ment of the loops with the slots otherwise than by being held 
together by the locking-bar. The loops shown in the draw- 
ings are not shaped to, of themselves, hold the cross-band in 
place. The connection between the bands and the wires de- 
pended wholly upon the locking-bar. The combination men- 
tioned in the first claim of the re-issue would not be an open^ 
tive combination at all, with the parts made only as described 
in the original. The invention sought to be covered by the 
re-issue is of a cage held in shape by the fitting of crimpa in 



OCTOBER, 1881. 17 



Mazheimer v. Meyer. 



the wires to holes in the cross-bandB, while that in the original 
16 of a cage held in shape by the locking of loops on the 
wires throngh slots in the cross-bands. These inventions are 
eesentiallj different. The re-issue was, apparently, expanded 
beyond the original to cover the intervening inventions of 
others. The language of the Supreme Conrt in Mfg. Co. v. 
Ladd^ (102 TJ. /&, 408,) seems peculiarly applicable to this 
case. It is said there, that the statute was never intended to 
aDow a patent to be enlarged except in a clear case of mis- 
take, and that there is no safe or jnst rule but that which confines 
a re-issned patent to the same invention which was described 
or indicated in the original. This re-issue seeks to enlarge 
the invention as well as the patent, and is not supported by 
the original. 

Let there be a decree that the re-issned patent is invalid, 
and that the bill of complaint be dismissed, with costs. 



JoK^ Van Santvoordy for the plaintiffs. 
Arthur V. Briesen^ for the defendant. 



John Maxheoceb 
John D. Meter and Chasles M. Nbubaubr. In EQuirr. 

Letten patent No. 162,400, granted to John Maxheimer, April 20th, 1876, and 
letters patent No. 218,768, granted to him Aagust 19th, 1879, each for im- 
provemeDta in bird caf^es, are yalid. 

The first patent underlies all constmctioDS of cages where the horizontal hands 
are held in place solely by shoulders formed on the upright wires. 

An accidental and incidental eifect, not obserred, if it existed, held not to show 
prior inrention. 

An improyement, the use of which inyolres the use of a patented inyention, in- 
fringes it, eyen though the improrement be patented. 

(Before Whskuoi, J., Southern District of New Tork, October 6tii, 1881.) 
Vol. XX.— 2 



18 SOUTHERN DISTRICrr OF NEW YORK, 

Maxheimer v. Meyer. 

Wheeler, J. Tbifi suit rests upon two patents granted 
to the orator for improyements in bird cages, the first num- 
bered 162,400, dated April 20th, 1875, for a cage in which 
the horizontal bands are solid wires with holes through which 
the upright wires are placed and which are held in place 
on the upright wires by short bends in the latter, forming 
shoxdders above and below the horizontal wires, without solder 
or other fastening ; the second, numbered 218,758, dated Au- 
gust 19th, 1879, after an interference between him and Michael 
Grebner, who prosecuted it at the instance and expense of the 
defendants, is for a cage in which the ^horizontal bands are 
hollow wires, through which the vertical wires pass, with short 
bends in them, within the hollow of the horizontal wire, 
which is flattened so as to lock them together. The defend- 
ants deny the novelty of the second patent and infringement 
of either. The plaintiff insists that they are concluded as to 
the novelty of the second patent by the decision in his favor 
against them in the interference proceedings. The defend- 
ants make and sell cages having vertical wires with bends in 
the hollow of horizontal bands locked by flattening the latter, 
like the plaintiffs, except that the bends extend in the direc- 
tion of the axis of the bands, instead of radiaUy, whereby the 
band can be flattened more perfectly. It does not appear, 
from any of the evidence, that any cages had ever been con- 
structed before the plaintiff's invention described in his first 
patent, in which the upright wires and cross-band had been 
held together by their own conformation, without the aid of 
solder or some contrivance to tie or lock them together That 
invention and patent, therefore, underlie all constructions of 
cages whereby the horizontal bands are held in place solely by 
shoulders formed on the upright wires. The plaintiff's second 
patent is for an improvement upon his first by bringing the 
bends within a hollow cross-band and making the connection 
more firm by fiattening the cross-band and bringing the 
shoulders formed by the holes through it more closely to the 
shoulders on the vertical wires. The cross-bands are held in 
place solely by the shoulders on the upright wires in both, the 



OCTOBER. 1881. 19 



Mazheimer t'. Meyer. 



improvement in the latter consisting merely in the better 
mode of bringing the shoulders to bear. In the defendants' 
cage the cross-bands are held in place solely by these means, 
and the shoulders are brought to bear by the plaintiff's im- 
proved method. They, therefore, infringe both patents, if the 
second is valid. The only near approach to the plaintiff's in- 
vention sought to be patented in this patent, and the only one 
to which special reference is deemed to be necessary, prior 
thereto, is in some cages made by John L. Fisher, inventor 
and assignor in letters patent No. 167,325, dated August 31st, 
1875, for an impro\^ment in bird cages, in 1876, at Buffalo. 
This patent is for a cage with a hollow cross-band like the 
plaintiff's, with short bends on the upright wires, within the 
hollow of the cross-band, but held in place by a wire key in- 
serted within the bends and through the wire, and locking the 
upright wires to the cross-band. This is not the plaintiff's 
invention, which does away with all contrivances for fastening 
except the shape of ' the cross-band and upright wires. The 
evidence shows clearly that Fisher made some cages, before 
flie plaintiff's invention, without this wire key. Those so 
made, without other fitting than the insertion of the upright 
wires with their bends through the holes in the cross-band, 
would not have a firm attachment of the cross-band to the 
wires. It is said in behalf of the plaintiff, that none of these 
had all the cross-bands without the key, but this is not mate- 
rial, for, one cross-band and its connections with the wires 
would show the invention as well as more. The evidence 
tends to show, that, in shaping some of those cages, the cross- 
bands out of which the key had been left were flattened and a 
firm connection thereby made between them and the upright 
wires. That, if done, would show the construction of the 
plaintiff's second patent. Bat, it is doubtful whether that was 
done. If done, it was not for the purpose of making a better 
connection between the bands and wires, nor known then to 
have that effect, but was accidental, and incidental to the pro- 
cess of shaping Hie cages. Neither does this effect appear to 
have been observed before the date of the plaintiff's invention. 



20 SOUTHERN DISTRICT OF NEW YORK, 



Maxheimer v. Meyer. 



if it existed. This wonld not show that Fisher or those who 
saw his work invented, or had prior knowledge of, this thing 
patented bj the plaintifE, before he invented it. (Bev. Stat. 
U. S.J sec. 4920 ; Andreios v. Carmarij 13 Blatchf. C. C. jB., 
307.) These conclusions make it unnecessary to consider the 
effect of the decision in the interference proceedings, even as 
to the invention of Grebner set up in his application, which 
set on foot those proceedings. The defendants' mode of 
placing the bends in the upright wires lengthwise in the hol- 
low of the cross-band may be an improvement upon the 
plaintiffs mode, but, if it is, in employing that improvement 
they make use of the plaintifE's patented invention without 
right, although that improvement is patented. 

The plaintiff's second patent also contains a claim for a 
feed cap in connection with the vertical wires of the cage, and 
it is insisted for the defendants that this invention is indepen- 
dent of the other and that the patent for both is, therefore, 
void. But, these inventions are connected together by 
being appropriate for use in the same cage for the common 
purpose of making a bird cage, and, under these circumstances, 
the joinder of both in one patent does not render the patent 
void. {Emerson v. Hogg^ 2 Blatchf. C. C. -S., 1 ; Hogg v. 
Emerson^ 6 How.^ 437.) 

Let a decree be entered for an injunction and an account, 
according to the prayer of the bill, with costs. 

Arthv/r V. Brieeen^ for the plaintiff. 

John Van Samimoordj for the defendants. 



OCTOBER, 1881. 21 



Benuurd v. HeimaniL 



Henby O. Bebnabd and Bobebt Oray 
Julius Heihann and othebs. In Equity. 

Letters patent g^ranted to Robert Gray, September 9th, 1879, for an " improye- 

meot in head-eoTeringa,* are yalld. 
The myention defined and dietingoished firom prior inyentione. 

(Before Blatohfobi>, J., Southern Diatrict of New York, October '/th, 1881.) 

Blatohfobd, J. This suit is brought on letters patent 
granted to Robert Gray, September 9th, 1879, for an " im- 
provennent in head coverings." The specification, which is 
accompanied by, and refers to, a drawing which represents a 
sectional side view of a hat embodying the invention, says : 
" This invention relates to the manufacture of hats, bonnets 
or other head-coverings, with a top layer of flock. Hats of 
this description have been made by applying the flock to a 
bnckram support, but have invariably been stifle, owing to the 
fact that, in order to give the article the required body or 
strength, it was necessary to use a heavy or thick piece of 
buckram. One objection to this hat is the stiffness referred 
to, it being desirable in some cases to furnish a soft hat, and 
another the visibility of the buckram tending to defeat the 
object of the flock layer, which is to produce a felt-like 
article. My invention is a head-covering, consisting of a sup- 
port of buckram or the like, a top layer of flock, and a canton 
flannel or other similar lining, whereby the article is rendered 
capable of taking a soft finish, while both surfaces thereof 
have the appearance or semblance of felt — one of plain felt 
and the other of napped felt. In the drawing the letter A 
designates the support, B the fiock layer, and C the canton 
flannel or other similar lining. In carrying out my inven- 
tion I first cement the lining C to a piece of buckram or other 



22 SOUTHEEK DISTRICT OF NEW YORK, 

Bernard v. Heimann. 

like fabric, by a suitable adhesive substance, with the nap of 
the lining exposed, and then press the two together, in any 
usual or suitable manner, to the desired shape. In lieu of 
canton flannel the fabric known as * glove lining * may be used. 
I now apply to the buckram a layer of cotton, woolen or other 
flock, this process consisting in coating the buckram with an 
adhesive substance and strewing the flock thereon in finely 
powdered form. The article is then in a state for trimming. 
The buckram A suppoHs both the flock layer B and the 
lining C, and, being reinforced by the lining, a light or thin 
piece of such material may be used, rendering the article 
pliable or soft, substantially like soft felt. The appearance 
of the article, moreover, is felt-like, inasmuch as the lining 
has the semblance of napped felt and the flock layer that of 
plain felt." The claim is as follows : " A head covering con- 
sisting of a support of buckram or the like, a top layer of 
flock, and a canton flannel or other similar lining, substanti- 
ally as and for the purpose described." 

The only defence is want of novelty. It is plain that the 
hat of the patent must be a hat made by pressing the materials 
into the shape of a hat, and not made the top in one piece, 
the side crown in another and the brim in another, and then 
these joined. There must also be (I) a layer of flock on a 
support of buckram or the like ; (2) a support of buckram or 
the like next the flock, with a coating of adhesive substance 
on the buckram, on which the flock is strewn ; (3) a canton 
flannel or other similar lining on the face of the buckram to 
which the flock is not applied, with the napped face of the 
canton flannel exposed and not next to the buckram. 

The Kendall turban, defendants' exhibit Ko. 3, has no 
side crown or brim. Irrespective of this, it is not satisfac- 
torily established that that article had in it any stockinet 
support, or any thing but canton flannel with flock applied 
directly to the unnapped face of the canton flannel. 

Bracher's frame, No. 6, if made with the unnapped face of 
the canton flannel exposed, had only flock enough put on the 
buckram to take an impression of straw braid, and was made 



OCTOBER, 1881. 23 



The Steam Stooe Cutter Company v, Sean. 



not for use in that condition as a hat, but solely to be stamped 
as an imitation of a straw hat. The flock was put on only as 
a pnlp on which to emboss, and the flock, by the embossing, 
lost its identity and parted with all resemblance to felt. 

The Morse hat, No. 13, is a flocked bnckram hat, with a 
strip of canton flannel put in separately as a brim. 

Hats such as the Novelty Company hats of 1876, made of 
canton flannel, muslin and flock, with the napped face of the 
canton flannel not exposed, were not the Gray hat. It is 
plain that cementing the nap to the bnckram tended to de- 
stroy the pliability or softness aimed at by Gray, by reason of 
the absorption of the nap by the cement, and that there conld 
be no appearance of napped felt. 

The ca£e is one where there was sufficient invention to 
support the patent, and there mast be a decree for the plaint- 
iffs, with costs. 

S. J, Gordotij for the plaintiffs. 

J. H. Ooodman^ for the defendants. 



The Steam Stone Cuttee Company 
Thomas Seaes. In Equity. 

Rule XI of the Circuit Court for the District of Vermont, providing that " the 
creation, continuance and termination of liens and rights created by attach- 
ment of property, or the arrest of a defendant, shall be governed by the laws 
of this State," covers the issuing and serving of a writ of sequestration in a 
suit in equity in the Circuit Court, after an interlocutory decree for the plaint- 
iff, in a suit in equity for the infringement of letters patent, for an account of 
profits, under which writ real estate of the defendant in the writ is attached, 



24 VERMONT, 



The Steam Stone Cutter Company v. Sears. 



to be held aa security for a final recoTery, and the Circuit Court had power 

to make such Rule, applying to suits in equity. 
Service of such writ by a return of attachment on a copy of it lodged in the 

town clerk's office where the town records are kept, without possession, is 

sufficient to create a lien on the real estate. 
The writ \b, in effect, strictly an attachment to create a lien. 

(Before WHsniB, J., Vermont, October 11th, 1881.) 

Wheeler, J. The orator, as owner of a patent, brought 
a bill in this Coort against the Windsor Maniifacturing Com- 
pany for infringement, and obtained a decree establishing the 
title to and validity of the patent, the fact of infringement, 
and for an account of profits. After this decree, on applica- 
tion of the orator, a writ of sequestration, in the nature of an 
attachment, to create a lien for satisfying the decree, was 
issued and served by attaching the real estate of that defend- 
ant, in accordance with statutes o/ the State of long standing, 
which enable the Courts of Chancery of the State to issue 
such process and create such liens. After this attachment 
that defendant conveyed to this defendant, who had full 
knowledge of the attachment, a portion of the estate so 
attached. The orator obtained a final decree for the payment 
of money in the original cause, took out execution thereon, 
and caused it to be levied upon that estate, and caused the 
estate to be set out to the orator in satisfaction of so much of 
the execution as it would apply to, at its appraised value, 
agreeably to the statutes of the State in relation to levy of 
execution upon real estate. The defendant refused to recog- 
nize the validity of the attachment and levy, and claimed to 
hold the land against them. This bill is brought to confirm 
and enforce the orator's attachment and levy and to obtain 
possession of the estate, and the cause has been heard upon 
bill and answers. Ko question is made about the propriety 
or regularity of the writ of attachment issued in this case, if 
there was authority to issue such a writ at all ; nor about the 
regularity of the attachment upon the writ, or the levy of the 
execution and setting out the estate by the marshal according 
to the laws of the StAte, if the attachment could effectually be 



OCTOBER, 1881. 25 



The Steam Stone Gutter Company v. Sears. 



80 made, or the estate be so levied upon, in any case in equity. 
The only questions made are as to whether the Court has 
the power to issue such writs, and whether the service of such 
a writ in that manner creates a lien that will hold until 
decree. It has been the practice of the Court for about 
thirty years to issue such writs, upon cause shown, in this 
manner, some of which have been served by attaching real 
estate in this manner, but doubts have arisen latterly in 
respect to the legality of this course. In no case has the 
question arisen, so far as is known, except upon the applica- 
tion for the writ, and not then so as to involve appearance for 
the opposite party or argument. It is presented now for the 
first time for debate, and has been argued with thoroughness 
and ability upon each side. 

An attempt has been made to rest these proceedings upon 
the general authority, usage and practice of Courts of Chan- 
cery. That such Courts have issued writs of sequestration, 
from the earliest times, is abundantly shown. {Hinders Chan.y 
127 ; Colston v. Gardner^ 2 Ch. Ca., 44 ; JFrancJdyn v. Coir 
haun^ 3 Sioanst.j 276 ; Peck v. Crane, 25 Vt.y 146.) But these 
writs were always issued in the nature of distresses to compel 
appearance, or performance of some decree or order, and not 
for the purpose of creating a mere lien upon property, to be 
held for the satisfaction of a money decree. These proceed- 
ings must be maintained, if at all, by the force of the statutes 
of the United States, the rules and practice of the Courts in 
pursuance thereof, and the laws of the State adopted thereby ; 
although the practice of Courts of Chancery, botih ancient and 
modem, is to be looked into for the purpose of understand- 
ing and applying these statutes and rules. 

The statutes of the CTnited States make a distinction be- 
tween common law causes and equity and admiralty causes, as 
to provision for process and forms and modes of procedure. 
For the former the practice, proceedings, and remedies, by 
attachment and execution, of the Courts of the States, are 
adopted. {Bev. Stats. XT. S., sees. 914, 915, 916.) For the 
latter it is merely provided, that " the forms of mesne pro- 



26 VERMONT. 



The Steam Stone Catter Company v. Sean. 



cess, and the forms and modes of proceeding in suits of 
equity and of admiralty and maritime jurisdiction, in the Cir- 
cuit and District Courts, shall be according to the principles, 
rules and usages which belong to Courts of equity and of admi- 
ralty respectively, except when it is otherwise provided by stat- 
ute or by rules of Court made in pursuance thereof ; but the same 
shall be subject to alteration and addition by the said Courts 
respectively, and to regulation by the Supreme Court, by rules 
prescribed, from time to time, to any Circuit or District 
Court, not inconsistent with the laws of the United States," 
{Hev. Stats., sec. 913;) and that the Circuit and District 
Courts shall have power to issue all writs necessary for the exer- 
cise of their respective jurisdictions and agreeable to the usages 
and principles of law. {Sec. 716.) There are no provisions 
in the statutes for execution upon decrees in equity or admi- 
ralty causes ; and none for liens thereby, except that it is pro- 
vided, that " judgments and decrees rendered in a Circuit or 
District Court, within any State, shall cease to be liens on real 
estate or chattels real in the same manner and at like periods 
as judgments and decrees of the Courts of such State cease, 
by law, to be liens thereon." {Sec. 967.) Still, decrees in equity 
and in admiralty in the Circuit and District Courts become 
liens upon the lands of defendants therein, in States where 
like decrees of the State Courts become such liens, the same 
as the decrees of the State Courts do. ( Farrf v. Chamber- 
lain, 1 Blacky 430.) And suits in personam in admiralty 
may be commenced by attachment of the property of the 
libellee, to be held to answer the demand. {Manro v. Almeida, 
10 Wheat, 473.) These remedies rest upon the principles 
and usages which belong to such Courts, and the rules of the 
Courts respectively, and not upon any express provision of 
the statutes. And, in giving construction to the statute pre- 
scribing those principles and usages, as guides of procedure, 
reference is to be had to the practice of those Courts in this 
country, as grafted upon the English practice. This was ex- 
pressly laid down as to admiralty proceedings, in Manro v. 
Almeida. The form of the writ of execution in equity cases, 



OCTOBER, 1881. 27 



The Steam Stone Cutter Company v. Sears. 



apoQ decrees for the payment of money, has been provided 
by the Supreme Court, in Equity Rule 8, and no other pro- 
'Fision is made in those Sules in regard to such executions. 
All the rest is left to the Circuit and District Courts. This 
Court provided, by Enle XI, that "the creation, contin- 
uance and termination of liens and rights created by attach- 
ment of property, or the arrest of a defendant, shall be gov- 
erned by the laws of this State." This State has, and has had 
almost from its organization as a State, the English equity 
system, with its jurisdiction vested in Courts of Chancery, and 
those Courts have had the power from nearly as early a 
period to issue writs of attachment like the one in question, 
having the force and effect claimed in behalf of this one. 
Such writs were within the principles and usages belonging 
to those Courts. Such a writ of attachment was as well set- 
tled in the jurisprudence of the State as belonging to the 
Courts of equity as attachments upon mesne process were set- 
tled to belong to the Courts of common law. The Rules of 
this Court are not divided into Eules in equity and Rules at 
law at all, but are all together in one body and left to operate 
on the law side or equity side of the Court as they may be 
applicable. The laws of the State adopted by this Rule are 
as applicable to equity cases as they are to common law cases, 
and, not being restricted by the Rule to either, must have 
been intended for both. This Rule covers the issuing and 
force of this writ. The power to make such a Rule in cases 
where the Supreme Court has not acted is as well conferred 
as the powec of that Court to make Rules for the Circuit and 
District Courts is. The language conferring it is as explicit 
and comes from the same authority. In Beers v. Haughton^ 
(9 Pet.^ 329,) Mr. Justice Story said : " State laws cannot 
control the exercise of the powers of the National Govern- 
ment, or in any manner limit or affect the operation of the 
process or proceedings in the National Courts. The whole 
efficacy of such laws, in the Courts of the United States, de- 
pends upon the enactments of Congress. So far as they are 
adopted by Congress they are obligatory. Beyond this they 



28 VERMONT, 



The Steam Stone Cutter Company v. Sears. 



have no controlling influence. Congress may adopt sach 
State laws directly by a substantive enactment, or they may 
confide the authority to adopt them to the Courts of the 
United States." " The constitutional validity and extent of 
the power thus given to the Courts of the United States to 
make alterations and additions in the process as weU as in the 
modes of proceeding in suits was fully considered by this 
Court in the cases of Wayma/n v. Southard^ (10 TTA^o^., 1,) 
and the Bank of the United States v. SaUtead, (10 Wheats 
51.") " The result of this doctrine, as practically expounded 
or applied in the case of Bank of the United. States v. 
Salsteady is, that the Courts may, by their Kules, not only 
alter the forms but the effect and operation of the process, 
whether mesne or final, and the modes of proceeding under 
it." In Bank of the United States v. Halstead^ it was held, 
that the law of the United States authorizing the Courts of 
the United States to alter their processes, authorized them to 
so alter them as to make lands subject to execution which 
were not so subject under State laws. The objection was 
made there, as it had been in Wayman v. Southard^ that Con- 
gress could not delegate such powers to the Courts, because 
they were legislative powers. In Wayman v. Southard^ 
Chief Justice Marshall said, as to this objection: "If Con- 
gress cannot invest the Courts with the power of altering the 
modes of proceeding of their own oflScers in the service of ex- 
ecutions issued on their own judgments, how will gentlemen 
defend a delegation of the same power to the State legisla- 
tures ? The State assemblies do not constitute a legislative 
body for the Union. They possess no portion of that legisla- 
tive power which the Constitution vests in Congress, and can- 
not receive it by delegation." In Bank of the United States v. 
Halsteady Mr. Justice Thompson said : " If the alterations are 
limited to mere form, without varying the effect and opera- 
tion of the process, it would be useless. The power here 
given, in order to answer the object in view, cannot be re- 
stricted to form, as contradistinguished from substance, but 
must be understood as vesting in the Courts authority so to 



OCTOBER, 1881. 29 



The Steam Stone Cotter Company v. Sears. 



frame, mould, and shape the process as to adapt it to the pur- 
pose intended. The general policy of aU the laws on this sub- 
ject is very apparent. It was intended to adopt and conform 
to the State process and proceedings, as the general rule, but 
under such guards and checks as might be necessary to insure 
the due exercise of the powers of the Courts of the United 
States." " It is said, however, that this is the exercise of leg- 
islative power, which could not be delegated by Congress to 
the Courts of justice. Sut this objection caunot be sustained. 
There is no doubt that Congress might have legislated more 
specifically on the subject and declared what property should 
be subject to executions from the Courts of the United States. 
But it does not follow that because Congress might have done 
this, they necessarily must do it and cannot commit the power 
to the Courts of justice." 

These authorities well establish the validity of the Rule of 
this Court regulating attachments. It is strenuously con- 
tended, in behalf of the defendant, that, if this writ was valid, 
its service, which was by copy of the writ and return of at- 
tachment upon it lodged in the town clerk's office where the 
land records are kept, without possession, was not, and that it 
did not create any lien upon the land. If this was strictly a 
sequestration, this point would be well taken, but it is not, al- 
though it is called so to some extent. A sequestration is 
intended to accomplish its object by the actual taking of 
goodti and chattels, or the rents and profits of lands, and with- 
holding them until the distress brings compliance with what 
is then required, and it creates no lien in favor of future 
judgments or decrees, while an attachment creates such a lien 
and nothing more. This is, in effect, strictly an attachment 
to create a lien, and is so understood in the laws of the State 
adopted by the Eule. {French v, Winsor, 36 Vt., 412.) The 
creation of the lien provided for by the Rule includes as well 
the mode of service as the issuing of the writ, and adopts the 
State law for both pui*po8es. Besides, if the writ was valid 
and there was no law or Rule providing any mode of service, 
the return upon the process, of an attachment of land, would 



30 VERMONT, 



The Steam Stone Gutter Company v. Sean. 



be sutBcient without any taking possession, or entry upon the 
land, by the officer. {Taylor v. Mixter, 11 Pich.^ 341.) And 
this argument would prove too much, for, if the Rules of 
Court did not provide for the service of executions in equity 
cases, there would be no provision at all for that purpose, nor, 
in fact, for issuing executions in such cases. Executions are 
satisfied by levy on land only by appraisal and setting out the 
land to the creditor under the State laws, which make specific 
provision for that purpose, in this State, and, if that mode 
was not adopted by the Rules of the Courts in equity, and 
the statutes of the United States in common law, cases, there 
would be no way to levy executions issuing out of the United 
States Courts upon lands writhin this State. Still, if this land 
had not been conveyed, and the record title had stood in the 
execution debtor, it probably would not be contended but that, 
upon a decree for the payment of money, an execution could 
be taken out and satisfied by levy upon the land, as was done. 
It was said in argument, that such a Rule could no more be 
made here than it could where attachments upon mesne pro- 
cess are not known, which may be true, but the effect of it 
and of all such Rules in either place is limited to the contin- 
uance of liens by decrees in the State Courts, by the statute 
before mentioned. {Rev. Stat. U. /S., sec. 967.) The effect 
of the whole is to keep the liens in proceedings in the United 
States Courts within the same bounds as in those of the State 
Courts, according to the policy of the laws of the United 
States, as stated by Mr. Justice Thompson, in BamJc of United 
States V. Halsteady as before quoted. These proceedings are 
according to the principles, practice and usages of Courts of 
equity, as they obtain within the State, and as the same have 
been recognized by this Court by granting such writs for 
many years, some of which have been served in the same 
manner as this. That practice is entitled to great weight, on 
account of the learning and character of the Judges adopt- 
ing it, and on account of its effect in showing the cases to 
which the Rules were understood to apply. Chief Justice 
Marshall, in speaking of the legality of an arrest by the mar- 



OCTOBER, 1881. 31 



The Steam Stone Cutter Company v. Sears. 

Bhal in ConDecticnt, and commitment to jail without a mitti- 
musy as required by the laws of the State, said : " The uni- 
form course of that Court from its first establishment, dispens- 
ing with this mittimusj may be considered as the alteration 
in this particular which the Court was authorized by law to 
make." {Wayman v. Southard^ 10 Wheat.^ 1.) These au- 
thorities and considerations lead to the conclusion that this 
lien was valid, and that the levy transferred the title to this 
land to the orator. This conclusion is reached with less re- 
luctance, because the defendant knew of this attachment and 
purchased at a time when, so far as appears, all supposed it to 
be valid, and when he could protect himself against it by any 
provision he might require. The doubts which afterwards 
arose were shared in by the Court, and the issuing such writs 
has since been avoided where the service of them might ex- 
pose the marshal to suit for taking property, or the refusal by 
him to take property on them to prosecution for neglecting 
to serve them, until the question of their validity should arise, 
so that it could directly be argued and determined. This ar- 
gument and examination has removed these doubts. 

Let there be a decree establishing the validity of the at- 
tachment and levy, according to the prayer of the bill, with 
costs. 

Prout cfe Walker^ for the plaintiff. . 

jE J. Phel/p% and WUliarn Batchelder, for the defendant. 



32 SOUTHERN DISTRICT OF NEW YORK, 

The Mallory Manafactnring Company v. Marks. 



The Malloby Manxtfaotubing Company 
Edwaed Mabeb and OTHERS. In Eqitity. 

Letters patent No. 74,892, granted Febniary lltb, 1868, to Oeorge MaUory, 
for an " improyement in hats," are yalid. 

The claim of said patent, namely, " The combination of the brim of a hat with a 
drooping hoop, so that the brim is caused to droop at the front and the rear, 
and to rise at the sides, substantially as set forth," construed. 

The question of novelty examined. 

(Before Blatohfoed, J., Southern District of NewYork, October 19th, 1881.) 

Blatchfoed, J. This suit is brought on letters patent 
No. 74,392, granted February 11th, 1868, to George Mallory, 
for an "improvement in hats." The specification says: 
" Figure 1 represents a side view of a hat constructed accord- 
ing to my invention. Fig. 2 represents a perspective view of 
one of the springs of the same. Fig. 3 represents a top 
view of the hat. Fig. 4 represents an edge view of one of 
the springs of the same ; and fig. 5 represents a cross section 
of the hoop enlarged. The object of my invention is to im- 
prove hats made from flexible fabrics, such as cloth ; and the 
invention consists of the combination of the brim of the hat 
with a drooping spring hoop, by which I mean a spring hoop 
bent or twisted in such manner as to impart a droop to the 
front and rear of the brim and an elevation to the sides 
thereof. The hat represented in the accompanying drawings 
embodies my invention when the hoop is formed of concavo- 
convex wire, the brim being strained and shaped by a spring- 
hoop, which is both concavo-convex and twisted, so as to 
give the required droop at the front and rear. The hoop is 
best formed out of steel wire, which, by passing between 
rollers in a manner well know to metal workers, is formed 
rounding on one side and hollowing on the other, so that its 



OCTOBER, 1881. 83 



The Mallory Manufactiiring Company v. Marks. 



transverse section is such as is represented at fig. 5. A piece 
of tliis concavo-convex wire, of the proper length to form 
the hoop, is cnt off and is bent in the following manner : Two 
vises are secured to a bench, at a distance apart a little less 
than the length of the piece of wire, so that it can be strained 
between them, its ends being griped simultaneoasly in both. 
A forked support is also fixed upon the bench, midway be- 
tween the vises, and the fork or slit in this support is made 
just laige enough to receive the wire edgewise. The piece 
of wire is strained between the vises and in the fork. Then 
a forked instrument is applied to it midway between the 
central support and one of the vises, and the wire is parti- 
ally twisted by means of this forked instrument until the 
required bend is obtained. The instrument is then applied 
in like manner to the wire at the other side of the central 
support, and the partial twisting there is made equal to that 
imparted to the portion of the wire first twisted. The piece 
is then removed from the vises, and a sheet-brass clasp, cs, 
similar to those used for skirt hoops, is applied to one of its 
ends. The piece is then inserted in a tubular socket or case, 
iTij formed in the rim of the hat, through an opening left for 
the purpose, and its ends are secured together by the brass 
dasp ; or the hoop may first be formed by uniting the ends 
of the piece by the clasp, and then it may be sewed into a 
tubular socket in the rim of the hat. When the ends of the 
hoop are united, it will be found that the hoop has the form, 
edgewise, shown at figs. 2 and 4, and, when it is in the hat, 
the brim is compelled, by the form of the spring, to droop at 
the front, b, and rear, Cj as shown at fig. 1, and to rise at the 
sides, d. I generally apply two hoops to the brim of the hat 
body, placing one at about half of the breadth of the brim 
from the crown, as shown at n / and, in forming the hoops 
and applying them to the hat brim, I take care to make them 
sufficiently large, and to so apply them, as to strain or stretch 
the brim by distension. My invention may be used by form- 
ing the hoop of straight untwisted concavo-convex wire; 
also, by using flat wire for the hoop, and twisting it as above 
Vol, XX.— 8 



34 SOUTHERN DISTRICT OF NEW YORK, 

The Mallory MannfioctiiriDg Company v. Marks. 

deBoribed. The hat poseesses the advantage resulting from 
the light weight of a concavo-convex hoop, as well as the 
stylish droop resulting from the twist of the hoop ; and be- 
sides, the rounded exterior of such a hoop tends to prevent 
the material bearing npon it from wearing away, as it has no 
sharp comer to cut the cloth." The claim is as follows: 
**The combination of the brim of a hat with a drooping 
hoop, so that the brim is cansed to droop at the front and the 
rear, and to rise at the sides, substantially as set forth." 

It is proper to determine, in the first place, the constmo- 
tion of the patent. It does not claim broadly a hat-brim 
which droops at the front and rear and rises at the sides. It 
claims the combination of the brim of a hat with a droop- 
ing hoop, substantially as set forth, which combination pro- 
duces the effect specified. The specification states what is 
meant by '^ a drooping hoop " in the claim. It means '^ a 
drooping spring hoop," that is "a spring hoop bent or 
twisted in such manner as to impart a droop to the front and 
rear of the brim and an elevation to the sides thereof." A 
droop at the front and rear of the brim, and an elevation at 
the sides thereof, was not new nor claimed as new. The 
means of producing such droop and elevation were claimed. 
The hoop must be a spring hoop. It must be a hoop having 
a spring action. It must both strain and shape the brim. The 
specification calls the hoop a spring, and says that it is the 
form of the spring, when it is in place in the brim, that 
causes the brim to droop at the front and rear and rise at the 
sides. The hoop is required to be so large, that is, so large 
circumferentially, and so applied, as to strain or stretch the 
brim by distension, as well as to shape it. The specification 
also shows that when it says that the hoop is ''bent or 
twisted," it uses the word ''bent" as synonymous with the 
word " twisted." The hoop is so bent by twisting its material. 
The text says that the material is bent by twisting it in the 
manner described, and that it is twisted until the required 
bend is obtained. The remark, in the specification, that the 
" invention may be used by forming the hoop of straight un- 



OCTOBER, 1881. 35 



The Mallor J MaDufactaring Company v. Marks. 



twisted Goncavo-conyex wire " ranst be rejected as not affect- 
ing the proper constmctioD of the claim, and the hoop of the 
cLdm must be a spring hoop twisted substantially in the man- 
ner described in the patent. This construction is necessary 
to sustain the claim, in view of the state of the art, as shown. 
In addition, the brim of the hat must be made from a flex- 
ible fabric. 

The answer denies infringement. The defendants, while 
admitting that their hat, Marks, No. 1, shows a spring hoop 
with a droop at the front and rear and an elevation at the 
sides, combined with a brim of flexible material, contend that 
it is not shown that the droop was imparted to the wire of 
the hoop by twisting it in the manner described in the patent. 
This is not so. The plaintiff's expert, Mr. Renwick, says that 
the second device entering into the combination of the claim 
of the patent is '^ a hoop made of a resilient material, such as 
steel wire, and bent or twisted so as to droop at the parts 
which correspond with the front and rear of the brim of the 
hat, and to rise at the parts which correspond with the sides 
of the brim." He then says that the hoop in Marks, No. 1, 
^* is a drooping spring hoop, apparently identical, in its con- 
struction and in its characteristics, with the drooping spring 
hoop which constitutes the second device of the said plaint- 
iff's patent." This is prima facie sufficient. There is no 
evidence in contradiction of it On the contrary, the cross- 
examination of said expert seems to proceed on the vie^f that 
the wire in Marks, No. 1, is twisted. If this were not so, it 
was easy for the defendants to have shown it. 

lliere was sufficient invention to support the patent. The 
existence of straight untwisted wires before in brims made 
of a flexible fabric does not anticipate the patent. It re- 
quired experiment and invention to pass from them to the 
arrangement of the patent, although it was known before 
that the giving a permanent twisting to a resilient wire 
would permanently alter its longitudinal set. The Adams and 
Slicer patent of December 24th, 1861, covered the giving 
such an excess in the length of a reed, vrire, or other non- 



36 socTHEKT DiarmcT of sew tork. 

1U10I7 Jloiifrctariiv Goavaay «. MartaL 



extensible flexible artide, over thmt of the outer edge of the 
brim of a hat so formed of an extensible material, that when 
said xeed or wire shonM be inserted and forced into a case on 
said ooter edge, it woold give not only firmness to the brim but 
also a rising c nrvat i ir e ther^o, of any desirable confignration. 
This was an attempt towards the resolt aimed at in the 
plaintiff's patent Bnt the means were different The means 
of the plaintiff's patent were not obTioos. They were moch 
superior to those of the Adams and Slioer patent, as is shown 
by the great success which the Mallory brim at once met 
with. With all the knowledge which skiUed men had as to 
the twisting and set of resilient wire, they groped abont, 
trying aU methods but the one which was the needed one to 
secure the desirable result Yet, in this case, as in all other 
cases like it, it is said that the means were so obvioas as not 
to amount to invention. 

The English patent to John Avery, No. 1,822, of 1856, 
only speaks of using a steel or other metal spring to give 
form and flexibility to a bonnet or bonnet foundation. There 
is no su^estion of twisting the wire. 

The English provisional specification of John Taylor and 
others, of Mareh 23d, 1860, No. 751, speaks only of giving a 
final shape, set or finish to a hat brim by a frame made to the 
required shape, either of metal, wood, composition, or any 
suitable metal or material. It has nothing to do with the 
Mallory invention. 

The French patent to Langenhagen and Hepp, of October 
4th, 1862, No. 56,002, speaks only of giving strength and 
stability to the edge of a braided hat, by folding the edge 
and sewing into the fold a rush, a brass wire or a sprig of 
whalebone. This is of no importance. 

The patent to William H. Mallory, of September 8th, 
1863, No. 39,822, shows only flat steel hoops or springs in- 
serted at right angles to the brim of the hat, in hems or tucks 
formed in the brim. 

The other patents put in evidence by the defendants were 



OCTOBER, 1881. 87 



The Mallory Manufactaring Company v. Marka 



granted after the invention of Mallory was made. That was 
in July or Angost, 1863. 

The defendants daim to have shown that the Mallory in- 
vention was made by Carl Fischer, in 1865, in New York, 
wlien he was working for Small and Stieglitz, and that Fischer 
then twisted wires in the manner described in the plaintiff's 
patent, and placed them in the brims of hats to the number 
of seventy or seventy-five dozen, and that snch hats were 
sold. On all the evidence in regard to this invention by 
Fischer, it mnst be held that it has not been satisfactorily 
established. 

The defendants also set np a prior invention by Philip 
Lasky, in 1861 or 1862, and one by John H. A. Kissen, at the 
end of 1861 or the beginning of 1862. On the whole evi- 
dence these are not made out. 

The foregoing views apply also to the snits against Isidor 
and Hein, David Fox and others, John S. Bancroft and 
others, and Patrick Corbet. They also apply, except as to in- 
fringement, to the suit against Marcus Marks and Abraham 
Marks, in which iDfringement is admitted by the answer. 

In the case against Marcus Marks and Abraham Marks, the 
answer sets up an agreement made by the plaintiff with the 
defendants, on or about April 1st, 1878, whereby the plaintiff 
licensed the defendants to make and sell hats under the 
patent. The evidence fails to establish such agreement. 

There must be decrees for the plaintiff in all the suits, 
with costs. 

Eugene TreadweU^ for the plaintiff. 

Bette^ AUerbury <& Betts^ for the defendants. 



88 SOUTHERN DISTRICT OF NEW YORK, 

Adams v. Howard. 



J. MoGbeoob Adams and Bobbbt £. Dibtz 

vs. 
John W. Howard and David R. Mobse. In Equttt. 

A defendant in a suit in equity for the infringement of letters patent cannot de- 
mur to tbe whole bill and also answer the whole bill, especially where the 
answer sets up everything that is in the demurrer, and he will, on motion, be 
compelled to elect between his demurrer and his answer. 

(Before Blatohtoed, J., Southern District of New York, October 24th, 1881.) 

Blatohfobd, J. The defendant Morse has demurred to 
the whole bill and has put in an answer to the whole bill. The 
suit is one for the infringement of a patent. The grounds of 
demurrer set forth in the demurrer are all of them also set 
forth in the answer. They relate solely to the title set forth 
in the bill to the patent, and to the allegations in the bill 
respecting infringement. A replication to the answer has 
been filed. The plaintiffs now move for an order either that 
the defendant elect between his demurrer and his answer, or 
that the demurrer be set down for argument. By Bule 33 
in Equity a defendant may demur to the whole bill, and may 
demur to a part of the bill and answer as to the residue. But 
there is nothing that allows him to demur to the whole bill 
and at the same time to answer the whole bill, especially 
where the answer sets up every thing that is in the demurrer. 
Putting in such an answer is a waiver of such a demurrer. 
The defendant must elect between his demurrer and his 
answer ; and, to guard against misunderstanding, if he should 
elect his demurrer, and it should be overruled on argument, 
he would be held, probably, to have waived what, ordinarily 
and otherwise, would be, under Eule 34, his right. to answer. 

The defendant moves to dismiss the bill. The ground of 
the motion is not specified in the notice of motion. From 



OCTOBER, 1881. 89 



The Traders' Bank of Chicago v. Tallmadge. 



the affidavit made in support of the motion, one ground 
would seem to be that the plaintiffs did not, under Kule 38, 
set down the demurrer for argument within the time re- 
quired, and that they did not take any testimony within three 
months after the replication was filed. I think the plaintifEs 
sufficiently excuse the omissions. The demurrer ought to be 
disposed of before any testimony is taken. The motion is 
denied. 



^. £. Betta^ for the plaintiffs. 
J. A. Whitney^ iot the defendants. 



Ths Tbadebs' Baihs: of Chicago 
JosiAH Tallmadgb ksd Edward Cabteb. 

This case was remanded to the State Conrt because the petition for removal 

was not filed before or at the term at which it could be first tried. 
This Court is to pass on such question even though the 8tate Conrt passed on it. 

(Before Blatohfokd, J., Southern District of New York, October 26th, 1881.) 

Blatohfobd, J. This is a suit at law commenced in a 
Conrt of the State and removed into this Court by the 
plaintiff. Each defendant answered separately in the State 
Court. The case was duly noticed for trial by the plaintiff 
and by each of the defendants for a term of the State Court 
to be held on the first Monday of May, 1881, which was May 
2d. All the notices of trial were served on or before April 
18th. On April 18th, the State Court, on the application of 
one of the defendants, made an order that the plaintiff file 



40 SOUTHERN DISTRICT OF NEW YORK, 

The Traders' Bank of Chicago v. Tallmadge. 

Becnrity for costs within 10 days from the service of the order, 
or show cause to the contrary on April 29th, and that in the 
meantime, or, if secarity should be filed, then until such secur- 
ity should justify, if excepted to, the plaintiff's proceedings 
should be stayed. This stay continued till May 14th, when 
it ended. On the 7th of May each defendant gave notice of 
a motion for May 16th for a commission to take testimony in 
Missouri, and for a stay of the trial of the action till the 
return of the commission. On the 1st of September, the 
plaintiff filed a petition for the removal of the suit into this 
Court. The order of removal was made by the State Court 
on that day. It states that the petition was filed ^^ before the 
term at which said cause could be first tried and before the 
trial thereof, to wit, on the 1st day of September, 1881." The 
petition bears date August 24th, and was verified August 
25th. It states that issue was joined on or about April 15th, 
1881, ^' that the said suit is not yet ready for trial, and that 
the same could not be tried at the last term of the Court, 
nor can it be tried at the present term, and no trial has been 
had." The order of removal was made without any prior 
notice to the attorneys for the defendants. There was a trial 
term of the State Court which commenced the first Monday 
of May. The plaintiff, on the 15th of April, placed the cause 
on the calendar of the Court for that term. There is nothing 
to show how long that term continued. The motions for 
commissions were adjourned from time to time till Septem- 
ber 5th. A trial term of the State Court was held in the 
month of June, 1881. It does not appear that the case was 
noticed for trial for that term by either party. That term 
commenced June 6th and ended prior to September 1st. 
The defendants move to remand the suit. 

It is plain that the suit was not removed in time. There 
was nothing to interfere with its being triable, legally, at the 
June term. The notice of motion for a commission and a 
stay was not a stay. The plaintiff was bound to remove the 
suit at least before the end of the June term, if he was to re- 



OCTOBER, 1881. 41 



The Traders' Bank of Chicago v. Tallmadge. 



move it at all. {Farre^ v. Keder^ 17 Blatchf. C. C. H.y 
522.) 

The plaintiff contends that the question of time cannot be 
eonfiidered in this Court, because the State Court passed upon 
it in its order. It is true that the State Court adjudicated 
upon it, but it did so ex^arte and without a hearing of the 
defendants. The Act of March 8d, 1875, (18 U. S. Stat, at 
Large^ 470, § 5,) provides that if, in any suit removed to this 
Oonrt, it shall appear to its satisfaction, at any time after the 
suit is removed, that it " does not really and substantially 
involve a dispute or controversy properly within the jurisdic- 
tion" of this Court, this Court shall proceed no further 
therein but shall remand it to the Court from which it was 
removed. This provision has recently been construed by the 
Supreme Court, in Babbitt v. Clark, (18 OttOj 606, 610.) It 
is there said by the Court that a decision by the Circuit 
Court that the necessary steps were not taken to remove the 
ease is a decision of the question of its jurisdiction ; and that 
the question of whether a removal was made in time is a 
question of jurisdiction. In that view it is for this Court to 
determine its jurisdiction, however that question may pre- 
viously have been decided by the State Court. 

The motion to remand is granted. 



Strang dk Gadwaladei\ for the plaintiff. 
James 0. Foley ^ for the defendants. 



43 SOUTHERN DISTRICT OF 5EW YORK, 

TIm ATcrin Gfacoikal Punt Co. «. TIm KatkMial Mixed Paint Ca 



Thb Aybull Chxmicai. Paiht Gompaht 

VS. 

Thx National MixsD Paint CoxpAHT AHD OTHERS. IhEquitt. 

Be-lmied letten patenft No. 7,081. granted April 4lfa, 1876, to Damon R. At- 
eriD, for an improTemcDt in paints, tiie original patent, No. 66,773, having 
been granted July 16tli, 1867, for an improred paint compound, are inraUd. 

Hie original was for a paint composed of certain qieoified ingredients, two of 
which were emnlsating agents^ notliing being said aboot any Teasel to contain 
the painl The re4aBne is for a paint of the same ingredients, other than the 
specified emnlsating agents, with any wnnlwating agents, and packed in tight 
Teasels. 

The reisBoe was granted on proof that, before the original a^lication, the in- 
Tentor had pat np his paints in tight Tessek: Meld, that § 4,916 of the Re- 
Tised Statutes did not aothorize this to be done. 

(Before WHsnca, J., Southern District of New 7ork, October 29th» 1881.) 

Wheeleb, J. This suit is founded npon re-issued letters 
patent No. 7,031, dated April 4:tli, 1876, granted to Damon 
B. Averill, assignor, for an improyement in paints. The 
daim is for ^^A mixed liquid painty composed of oxide of zinc 
or other pigments, oil, turpentine or benzine, water, and one 
or more emnlsating agents, put up in tight vessels or cans." 
The original patent was No. 66,773, dated July 16th, 1867, 
for an improved paint compound, particularly described bj 
ingredients and quantities like that in the re-issue, but with 
lime-water and silicate of soda, which were emnlsating agents, 
but not stated to be such, specified as parts of the combination 
and compound. The claim was for '^A paint composed of 
the iugredients herein named, and prepared and compounded 
substantially in the manner specified." There was no allusion 
in the patent to anything to contain the paint. Liquid mixed 
paints produced by the use of emnlsating agents were known 
and used before Averill's discovery, and paints had been con- 
tained in cans and other tight vessels before that time, but no 



OCrrOBBB, 1881. 43 



Hie ATerill Chemioal Paint Go. v. The National Mixed Paint Go. 

paint had been made by the use of his precise combinations 
and ingredients before. On the application for a re-issue the 
patentee made proof that, prior to his application for the orig- 
inal patent, he had put ap his paint in cans and other tight 
packages and noticed its advantages for being pnt np in that 
way, which appears to have been satisfactory to the Commis- 
sioner that this mode of packing was a part of the original in- 
vention, and, upon that proof, the re-issae appears to have 
been granted. The defendants do not ase the combination or 
compound described in the original patent. The principal 
defences are, that the re-issue is not supported by the original 
and is, therefore, void ; that the patentee was not the original 
and first inventor of the invention described in the re-issue ; 
and that, if the re-issue can be upheld at all, the defendants 
do not infringe any part for which it is valid. The original 
patent was valid enough, apparently, for the particular kind 
of paint described in it. The re-issue, if it is for that kind of 
paint only, packed in tight vessels, may be valid, for it would 
merely narrow the scope of the claim upon the same inveU" 
tion, from that kind of paint everywhere to that kind of paint 
only when so packed. But the re-issue is not limited to that 
particular kind of paint ; it extends to all forms made from the 
same ingredients, other than the emulsating agents specified, by 
the use of any emulsating agents. This expands the original pat- 
ent, not only beyond the scope of the claim upon the invention 
described, but beyond the scope of that invention. The whole 
invention there described was of a particular kind of liquid 
mixed paint ; the invention described in the re-issue is of all 
kindsof liquid mixed paint packed in tight vessels. The inven- 
tion of packing in vessels is not at all described or even alluded 
to in the original patent. So, the question is presented, whether 
the Commissioner of Patents is authorized to grant a re-issue 
of a patent for an invention in addition to that shown in the 
original, upon proof, in the absence of any drawing or model 
showing the invention in the original, that the addition was 
really a part of the same invention sought to be patented in 
the original. This question does not now seem to be open. 



44 SOUTHERN DISTRICT OP NEW YORK, 

The Ayerill Chemical Paint Co. v. The National Mixed Paint Co. 

In Powder Oompany v. Powder WorJcSy (98 U. S.y 126,) the 
patents were for compositionB or articles of mannfactnre like 
that here. That part of Section 53 of the Act of Jnly Sth, 
1870, (16 U. S. Stat, at Large^ 206,) which is now section 
4,916 of the Reyised Statutes, authorizing amendment of pat- 
ents upon proof, in the absence of any drawing or model, was 
relied upon and came under consideration. It was there held, 
that this clause did not authorize the Commissioner to grant 
a re-issue for a different invention, or to determine that one 
invention was the same as another or different one, or that 
two inventions essentially distinct constituted but one. The 
question was left open as to whether that clause related to all 
patents or only to patents for machines, but no i'oom was left 
for adding to the invention by proof. Under that decision 
this re-issue cannot stand. If it could stand, the only inven- 
tion covered by it, of which Averill was the first discoverer, 
would be packing this paint in tight vessels. Such vessels im- 
part no quality to the paint. They are no more useful to this 
kind of paint than to others, in proportion to the amount 
used. The paint, on account of its own valuable qualities, has 
found its way into extensive use through the ordinary vehi- 
cles for paints, and AveriU has, doabtless, contributed largely 
to its success, but it has been done by business enterprise 
rather than patentable invention. What he is really the first 
inventor of the defendants have not taken. 

Let there be a decree dismissing the bill of complaint, with 
costs. 

John B. Bennett and Oeorge Harding^ for the plaintiff. 

Edmund WetmorSy for the defendants. 



OCTOBER, 1881. 45 



Van Deiuen «. Nellia 



JusTUB Van Dbubbn and othebs 
Jacob H. Nblus. In £qt7itt. 

The first eUdm of re-iasaed letters patent No. 8,962, granted to John E. Hether- 
isgton, Norember 11th, 1879, for an " improYement in artificial honey-oomb 
fonndationB," the original patent haying been granted to him Oetober lot, 
1878, namely, "As a new article of maoafacture, an artificial honey-comb 
fomidation produced firom a cake of wax haying on each side a series of hex- 
agonal depressions with flat bottoms, said bottoms forming a continaoiis 
aheet, from each side of which rise the ribs which form the borders of the 
hexagonal depressions, sabstantiaUy as shown and described,'' claims nothing 
which was patentable, in yiew of what existed before. 

(Before Blatohiord, J., Northern District of New York, October 29tb, 1881.) 

Blatchfobd, J. This suit is founded on re-issued letters 
patent Ko. 8,962, granted to John E. Hetherington, Novem- 
ber 11th, 1879, for an "improvement in artificial honey-comb 
foundations," the original patent having been granted to him, 
as inventor, October 1st, 1878. The following is the specifica- 
tion of the re-issue, including what is inside and what is outside 
of brackets, omitting what is in italics : " Figure 1 [represents] 
is a front view. Fig. 2 'is a transverse [vertical] section in 
the plane x^ x^ Fig. 1, on an enlarged scale. Similar letters in- 
dicate corresponding parts. This invention consists in [a 
honey-comb foundation produced from a cake of wax having 
on each side a series of hexagonal depressions with flat bot- 
toms, said bottoms forming a continuous sheet, from each side 
of which rise the ribs which form the borders of the hexago- 
nal depressions, whereby, the cost of such honey-comb founda- 
tions is reduced and the durability of the article is increased ; 
also,] in the combination with an artificial honey-comb foun- 
dation [produced from wax] of wires [or other strands] which 
pass through the foundation and prevent it from sagging and 



46 NORTHERN DISTRJCT OF NEW YORK, 

Van Densen v. Nellia. 

Btretching, and also etrengthen it, thereby making it less liable 
to breakage while being handled ; [further,] The invention 
also consists in the combination with a honey-comb foundation 
[produced from wax] of one or more supporting wires or 
strands, extending across the [foundation] cake at suitable 
points to prevent sagging when in the hive and breakage in 
handling. As is well known, artificial honey-comb founda- 
tions [are produced from] consist of sheets or cakes of wax, 
which are pressed between rollers or dies, whereby the sheets 
receive a series of hexagonal depressions, presenting the ap- 
pearance of a honey-comb in section. These cakes or founda- 
tions are placed in the bee-hives, and by this arrangement the 
bees are caused to build their cells regularly. [In all the arti- 
ficial honey>comb foundations of this class known to me, the 
bottoms of the hexagonal depressions have been made in the 
form of an inverted pyramid, and, in order to produce this shape, 
a considerable depth of wax is required, and, furthermore, the 
operation of forming such foundations requires great care. 
My foundation is made of a cake, A, of wax with a series of 
hexagonal depressions, a, the bottoms, &, of which are flat, and^ 
in fact, form a continuous flat sheet, (see Fig. 2,) from each 
side of which rise the ribs, (?, c^ forming the sides of the hex- 
agons. In order to give additional strength to the flat bottom 
of each depression, the ribs, <?, on one side of the cake. A, are 
so placed that they unite in the centre of one of the depres- 
sions on the opposite side, and vice versa^ as indicated by 
dotted lines in Fig. 1 of the drawings. By this arrangement 
I am enabled to produce artificial honey-comb foundations 
with great economy of wax, since the weight of one of my 
flat-bottomed foundations is less than one-half of that of one 
of the old foundations with pyramidal bottoms covering the 
same ; and, furthermore, my flat-bottomed foundations can be 
formed much easier than those with pyramidal bottoms, so 
that in their production a considerable saving of time and 
labor is effected in addition to the saving in stock. In order 
to increase the strength of the artificial honey-comb foundar 
tion produced from wax, I apply to the same a series of wires, 



OCTOBER, 1881. 47 



Van Deasen v, NelliB. 



dy dJ] It has been fownd^ however^ that these foundations 
stretch or sag when they are put into the hive^ by which drfect 
their utility is greatly impaired. Another objection is that 
these cakes are very frail^ and conseqvsnUy they a/re easily 
broken or cradced while being handled. Jieferring to the 
drawings, the letter a designates the depression in ths cake of 
waxj and b are the elevated rims or ridges separating these de- 
pressions from each other. The letters, d, d, indicate a series 
qf wires which pafis through the foandation. These wires 
may be inserted into the sheets of wax before thej are pressed 
between the roller? or [the] dies ; or they may be inserted 
during the process of mannf actnre, in any suitable manner, the 
characteristic feature or principle of [my] the invention being 
that the wires or strands of inelastic material are embedded in 
the cake or [foundation,] comby or traverse the same on 
either or both sides. These wires pass through or are inserted 
into the foundation at a distance of about seven-eighths of an 
inch apart. Of course, I do not limit myself to that precise 
distance ; but I have found that the best result is obtained if 
the wires are thus placed. By this arrangement I strengthen 
the honey-comb foundation, making it less liable to injury 
while being handled, and also prevent it from sagging or 
stretching, [to which foundations of this class are subjected, 
partictdarly in hot weather.] Of course, I do not limit my- 
self to wires to produce this result, since threads or strands of 
any inelastic or non-expanding material may be used as well. 
[I do not claim as my invention an artificial honey-comb 
foundation produced from a cake of wax having on each side 
hexagonal depressions with pyramidal bottoms, such being old 
and well-known.] What 1 claim as new and desire to secure 
by letters patent is — 1. [As a new article of manufacture, an 
artificial honey-comb foundation produced from a cake of wax 
having on each side a series of hexagonal depressions with flat 
bottoms, said bottoms forming a continuous sheet, from each 
side of which rise the ribs which form the borders of the hex- 
agonal depressions, substantially as shown and described. 2.] 
The combination, with a honey-comb foundation [produced 



4:8 NORTHERN DISTRICT OF NEW YORK, 



Van Deusen v. Nellu. 



from wax,] Of wires [or strands,] embedded in and passing 
through the foundation, to increase its strength and durabil- 
ity, substantially as set forth. [3] 2. The combination, with 
a honey-comb foundation [made of wax,] of one or more sup- 
porting wires extending across the [foundation] caJcej where- 
by the sagging of the [foundation] cake is obviated when in 
the hive and the liability to breakage in handling is pre- 
vented/' Beading in the foregoing what is outside of brack- 
ets, including what is in italics, and omitting what is inside of 
brackets, we have the text of the specification of the original 
patent. 

The specification of the original patent does not claim a 
honey-comb foundation having hexagonal depressions with flat 
bottoms, either made of wax wholly or in part, or made of 
some other substance. The embedded wires are made a nec- 
essary feature of the first claim of the original, and the sup- 
porting wires are made a necessary feature of the second claim 
of the original. The first claim of the original is converted 
into the second claim of the re-issue, and the second claim of 
the original is converted into the third claim of the re-issue, 
with the limitation, in the second claim of the re-issue, that 
the foundation is to be produced from wax, and with the lim- 
itation, in the third claim of the re-issue, that the foundation 
is to be made of wax. The text of the original specification 
does not make any allusion to the fact that the hexagonal de- 
pressions have flat bottoms. But flgure 2 of the drawings in 
the original shows that the bottoms are flat, and the specimen 
flled in the Patent Office with the application for the original 
patent showed it. So, also, the text of the original specifica- 
tion did not allude to the fact that the ribs on one side of the 
cake are so placed that they unite in the centre of one of the 
depressions on the opposite side, and vice versa. But that was 
shown in figure 2 of the drawings of the original and in the 
said specimen. 

It is shown that the defendant has infringed the first 
claim of the re-issue. The main defence is that there is noth- 
ing in such first claim, in view of what existed before, which 



OCTTOBEB, 1881. 49 



Van DenseD v, Nellis. 



*wa8 patentable. It is admitted that an artificial honey-comb 
ionndation, produced from a cake of wax having on each Bide 
41 series of hexagonal depressions with pyramidal bottoms, the 
<sake forming a continuons sheet, from each side of which 
rose the ribs forming the borders of the hexagonal depres- 
^ons, existed before. But it is claimed that the foundation 
with flat bottom depressions requires less wax, and is thus 
•cheaper, besides requiring the consumer to eat a less quantity 
of artificial comb. It is said that where the depressions hare 
pyramidal bottoms, or lozenge-shaped bottoms, the base and 
the side walls are so thick that the beeS| in building up the 
'Cells, do not thin the wax sufficiently, whereas where the bot- 
toms are flat the base is thin and the side walls are thin and 
<ean be high and sharp, so that the bees utilize the excess of 
wax in constructing the comb, and thus time and labor and 
material are saved. 

The patent granted to Samuel Wagner, No. 32,258, May 
7th, 1861, for " artificial honey-comb," is introduced by the 
•defendant. The specification says : '' My new manufacture 
consists in a substitute for the central division or foundation 
of the comb built by bees, either with or without the whole 
or any portion of the walls forming the hexiigonal cells pro- 
jecting from the division, which substitute is artificially and 
suitably formed upon both sides or faces and of any suitable 
material which is susceptible of receiving the desired and nec- 
essary configuration. * * * Figs. 1 and 2 of the drawings 
represent my new manufacture in plan, the black lines show- 
ing tlie salient angles on the obverse side, from which spring 
its walls, which form hexagonal cells. The red lines show 
similar angles on the reverse side, and the red and black lines 
illnstrate the relative disposition of the cells." Figs. 1 and 2 
show that the ribs on one side are so placed that they unite 
in the centre of one of the depressions on the opposite side, 
and vice versa. " Fig. 1 represents comb foundation suitable 
for the foundation of drone comb, while Fig. 2 represents that 
suitable for worker comb." The hexagons in the comb in 
Fig. 1 are of larger size than those in the comb in Fig. 2. The 
Vol. 



60 NORTHERN DISTRICT OP NEW YORK, 

Van Densen v, Nellia. 



specification then goes on to describe apparatus for making' 
the foundation : '^ Figs. 3a and 3b are elevations of one of the 
hexagonal solids, which, when used as herein specified, will 
produce the comb foundation shown in Fig. 1 and in section 
on an enlarged scale in Fig. 4. A mold is prepared, similarly 
to those used in the production of printers' type, in whic^ 
solids are cast which will accurately fill the interior of a new- 
ly formed cell of a natural comb of the kind of which it is de- 
sired to form the central division. Numbers of type or solids^ 
being produced they are locked together in a form like print- 
ers' type, and fac-similes of the assemblage are produced by 
either of the well-known processes of stereotyping or electro- 
typing. Two of these stereotypes or electrotypes are made 
to act, by means of a press or otherwise, upon the opposite 
sides or faces of an interposed sheet of suitable material, which 
action gives the sheet the configuration desired. It is best to- 
obtain in this division or foundation sheet a uniform degree 
of tenuity, which can only be done by closely imitating the 
natural waxen comb, which is effected by so placing the die& 
that the apices formed at the juncture of the three rhomboidal 
facets of each hexagon shall be exactly opposite the juncture 
of the sides of three facets of adjacent hexagons forming the 
reverse side. The angles of the rhomboidal facets should be 
as nearly as possible 109^ and 71®, and the dies should not be 
permitted to approach each other so nearly as to reduce the 
thickness of the interposed material much less than the one- 
hundredth part of an inch. Should it be deemed desirable to 
form the hexagonal walls of the ceUs, or any portion of them^ 
the type or solids should be formed as seen in Figs. 3a, 8b, 
with a band or projection around them of about the one 
two-hundredth part of an inch in thickness, and some taper 
may be given to the type from the band toward the rhom- 
boidal facets. * * * Amongst the many materials which 
may be used may be mentioned compounds of which wax 
forms a part, rubber and gutta percha, and compounds of 
which they or either of them are components, papier mach^, 
&c., &c. Thin sheets of metal, reduced to the tenuity of 



OCTOBEB, 1881. 51 



Yao Deosen v. NelliB. 



foils, may be used, though T prefer good noD-condnctors of 
heat, improved by being rendered waterproof, if not bo. Very 
many materials and compounds not mentioned may be used, but 
it is unnecessary herein to attempt to specify them, as my inven- 
tion is not confined to and is independent of any particular mate- 
riaL It may be mentioned that with some materials heat, as 
well as pressure, may be used in shaping the artificial comb 
foundation. Many variations may be made in my invention, 
which, though not improvements upon it, embody its essence. 
For example, the relative arrangement of the impressing dies 
may be varied, so as to produce a different arrangement of 
cells on the obverse and reverse sides of the comb foundation 
from that shown in the drawings, in which case the thickness 
of the division plate would ha^e to be increased, provided the 
pyramidal depressions made by the three rhomboidal facets 
terminating each hexagon were retained. Such depressions 
might be dispensed with and the foundation sheet might be 
impressed so as to leave slightly projecting ridges of the ma- 
terial from which the sides of the cells can be extended on 
each side of the sheet. But I do not recommend any depar- 
ture from the closest imitation possible of the natural central 
sheet of the comb as formed by bees. To render the artificial 
oomb foundation acceptable to the bees, it is not requisite that 
any portion of the sides of the cells should be formed thereon, 
as the salient angles on either side, formed at the edges of the 
described depressions, are a sufficient guide to the bees, and 
from them they will commence the waxen sides of their hex- 
agonal cells. By the employment of my invention in bee 
hives, perfect regularity of combs and their kind is insured, 
and the production of drones prevented to any extent desired. 
I propose to take honey from store combs built upon my arti- 
ficial foundations, by removing the full combs from the hives, 
and by slicing off the natural waxen superstructure. The arti- 
ficial central portion of the comb being then replaced in the 
hive, will be again built upon by the bees, saving to them al- 
ways the elaboration of wax and the time required for the 
construction of this part of the comb, which consumes more 



62 NORTHERN DISTRICTT OF NEW YORK, 

Van Deosen v. NeOu. 

time in its natural constraction than any other parts of the 
comb of equal weight, because fewer laborers can be engaged 
npon it at one time than on other portions." The claim of 
Wagner's patent is this : ^'As a new article of manufacture, 
artificial substitute for the central division of comb built by 
bees, which presents to them, on both sides thereof, guides for 
the construction or continuation of the sides of the comb cells, 
whether the same is constructed with or without the whole or 
any portion of the sides of the cells." 

It is objected to the Wagner patent that it does not speak 
distinctly of a foundation made whoDy of wax. It does not 
exclude such a fouudation, and such a foundation is within 
the general terms of the materials spoken of in it. It names 
compounds of which wax forms a part. Foundations wholly 
of wax, and otherwise answering Wagner's description^ ex- 
isted before Hetherington's invention. Wagner distinctly 
says that the pyramidal depressions may be dispensed with, 
and the foundation sheet, which is, necessarily, a flat sheet, 
be impressed so as to leave slightly projecting ridges of the 
material. It is true that he says he does not recommend any 
departure from the closest imitation possible of the natural 
central sheet of the comb as formed by bees. Some persons 
may prefer pyramidal bottoms. Some may prefer flat bot- 
toms. Wagner shows the use of either, as a mechanical struc- 
ture. Hetherington, for certain reasons, preferred flat bot- 
toms. Others think that such reasons for using flat bottoms 
are overborne by other reasons for using pyramidal bot- 
toms. With the Wagner patent and with foundation made 
wholly of wax with pyramidal depressions, there was no in- 
vention in the first claim of the plaintiffs re-issue. It was a 
mere selection of a form of foundation which Wagner de- 
scribed, besid€B showing how to make it. The use of wax 
alone in such form, after wax alone had been used for the 
foundation with pyramidal depressions, did not make the 
foundation of that form made wholly of wax a new manu- 
facture, or a new invention, in the sense of the patent law. 

This is an action at law, which has been tried before the 



OCTOBER, 1881. 53 



Sterens v. Richardson. 



Court without a jury. On the facts, I find generally for the 
defendant and direct that judgment be entered for him, with 
costs. 



John Van Santvoord, for the plaintiffs. 
Horace E. Smithy for the defendant. 



Mabibtta B. Stevens 

Oeobob F. Biohabdson, Charles G. Stevens, John L. 
Melcher, and Mask M. Stanfibld. In Equift. 

8., a citixen of New York, brought a smt in the State Court against R. and C, 
citlxens of Massachusetts, and J. and M., citizens of New York. R. and C. re- 
moTed tlie suit into this Court. There being a separate oontroyersy between 
8., on one side, and R. and C, on the other, to which J. and M. were not 
necessary parties, and which could be fully determined as between the parties 
to it without the presence of J. or M. : Hdd, that the suit was removable un* 
der § 2 of the Act of March 8d, 1875, (18 U, 8. Siai. at Large, 470.) 

Ho prior notice to the adverse party of the presentation of a petition for removal 
is necessary. 

A bond on removal is not required by § 8 of said Act to be executed by the pe- 
titioner for removal, if it be executed by sufficient surety. 

A party does not, by voluntarily appearing in a suit in a State Court, waive 
bis right of removal 

A motion that the plaintiff replead in this Court denied. 

(Before Blatohford, J., Southern District of New York, October Slst, 1881.) 

Bi^TCHFORD, J. This suit was brought in the Sapreme 
Goart of New York and has been removed into this Court 
by the defendants Richardson and Stevens, as citizens of 
Massachusetts, the other defendants being citizens of New 



64 SOUTHERN DISTRICT OF NEW YORK, 



Sterens v. Ricfaardson* 



York. The plaintiff is a citizen of New York, and moves to 
remand the canse. The removal, if made, must be made 
nnder § 2 of the Act of March 3d, 1876, (18 TJ. S. Stat ai 
Zarg€j 470.) The only pleading pnt in in the State Court, 
before the removal, was the complaint. The controversies 
set ont therein are not varied by the petition for removal or 
by any thing now before this Court. Stevens and Richardson 
are trustees for the plaintiff under the will of Faran Stevens. 
Stevens and Melcher and the plaintiff are executors of said 
will. Stanfield is lessee of an apartment house in New York, 
which is part of the trust property, under a lease thereof 
made to him by Stevens and Eichardson, as such trustees, by 
the terms of which the rent he is to pay is to be paid by him 
to them. The complaint alleges that a valid agreement exists 
between thd plaintiff and said trustees, that said rent should 
and shall be paid directly by Stanfield to the plaintiff, at New 
York, that they insist on having Stanfield pay it to them, and 
that he refuses to pay it to her. In addition to alleging a 
violation of said agreement by said trustees, the complaint 
alleges that the trustees have wrongfully retained from the 
rent paid to them moneys claimed to have been paid by them 
for expenses of suits brought by them against Stanfield to 
compel him to pay the rent to them, and moneys for commis- 
sions, and have refused to pay over to the plaintiff the 
whole amount of moneys so received from Stanfield, and 
have wholly failed in the performance of their duties as trus- 
tees, and reside in Massachusetts, and have no property in the 
State of New York, and are of but little pecuniary responsi- 
bility, and the plaintiff has suffered great loss, and been put 
to great expense, in her efforts to protect herself against the 
wrongful acts of said trustees. There is other property besides 
said apartment house held by said trustees under said trust 
Founded on the above allegations the complaint prays (l)that 
the trustees be enjoined from collecting from Stuifield the 
rent of the apartment house, and from receiving and dispos- 
ing of any moneys as trustees of the plaintiff, and from doing 
any act as such trustees; (2) that they be required to ae- 



ocrroBER, 1881. 55 



Stevens v. Bichardson. 



<«0TiDt as BQcb trustees ; (3) that they be removed as sach 
trastees ; (4) that some other and competent person or per- 
«)D8 be appointed trustee or trustees in their place ; (5) that 
they pay to the plaintiff such damages as she has sustained 
by their wrongful acts. Certainly, in the matters which are 
the subject of those five prayers there are controversies which 
•are wholly between the plaintiff on the one side and the 
trosteefi on the other side. Stanfield is not an indispensable 
party to any of said controversies, although he may be a pro- 
per party to the suit, by reason of his being lessee of the 
4kpartment house. Melcher, as executor, has no concern with 
nftny of said controversies. 

But there are other matters in the complaint. The trust 
for the benefit of the plaintiff is one for her life, for the sum 
•of $1,000,000. It has not been completed by the executors. 
It was for the executors, under the will, to put into the handa 
of the trustees property to that amount. That has been 
done only in part. The complaint prays that the executors 
may complete the trust fund by conveying real estate to the 
trustees, and that they pay to the plaintiff what may be due 
to her for interest on the trust fund, and that they pay to her 
-or for her benefit, out of the estate, other moneys which she 
claims, and that they do not charge against her certain moneys 
which the estate has paid, and that they be restrained from 
paying to certain trustees of certain residuary trusts created 
by said wfll any moneys now in, or which may hereafter come 
into, their hands, as such executors. It also prays that the 
rent of said apartment house under the lease to Stanfield be 
paid to the plaintiff. There is nothing in any of these allega- 
tions which makes Melcher, as executor, a necessary party to 
4uiy of the said controversies between the plaintiff and her 
trustees. Those controversies, as embodied in the said five 
prayers in respect to the trustees, can be fully determined as 
between the parties actually interested in them without the 
presence of either Melcher or Stanfield as a party. If the suit 
had sought no relief but what is embodied in said five prayers, 
neither Melcher nor Stanfield would have been a necessary 



66 SOUTHERN DISTRICT OF NEW YORK, 

SteveDB V. RiehardBon. 

or an indispensable party to those issues. The controversies^ 
involved in those five prayers do not cease to be controversies 
wholly between the plaintiff on the one side and the trusteea- 
on the other becanse the plaintiff has chosen to embody in 
her complaint distinct controversies between herself and the 
executors, or a controversy between herself and Stanfield* 
Whether there is or is not such a connection between the 
various transactions set out in the complaint as to make all of 
the defendants proper parties to the suit and to every con« 
troversy embraced in it, at least in such a sense as to protect 
the complaint against a demurrer for multifariousness or mis- 
joinder, is a question not affecting the matter of removaL 
If there was any fault in pleading, in that respect, it was the 
plaintiff's. On the question of removal she must abide by^ 
the case made by her complaint. The question of multifari- 
ousness or misjoinder comes up after the question of removal 
is settled. The latter question must be settled now upon the 
complaint. If hereafter, under any different phase of the 
case, it should appear that the cause does not really or sub- 
stantially involve a dispute or controversy within the juris- 
diction of this Court, it will be the duty of the Court, imder 
§ 6 of the Act of 1875, to remand it to the State Court. The- 
case is one directly within the decision in Barney v. Latham^ 
(13 Otto^ 205,) and it must be held that the case was one for 
a removal of the whole of the suit by the trustees, eveit* 
though Melcher or Stanfield or both of them may have been 
proper parties to the suit. There is nothing in the case of 
Blake v. McEim^ (13 Otto^ 336,) which in any manner quali- 
fies anything decided in Barney v. Latham. In that case 
there was a single controversy between the plaintiff, a citizen' 
of Massachusetts, and three executors, two of whom were 
citizens of Massachusetts and one of whom was a citizen of 
New York, the suit being one to recover the amount of a. 
bond executed by the testator of the defendants. The Court 
held that the case was not removable under either of the twa 
clauses of § 2 of the Act of 1875, on the ground that all of 
the executors were indispensable parties to the suit, and that 



OCTOBER, 1881. 6T 



SteTens v. Richardaon. 



two of them were citizenB of the same State with the plaintiff^ 
and that the suit embraced only one indivisible controversy. 

The State Court made an order accepting the petition for 
removal and the bond filed, and ordering the removal of 
the snit into this Coart. This order was made without prior 
notice to the attorney for the plaintiff, and the plaintiff con- 
tends that the proceedings for removal were, therefore, irreg* 
nlar. The Act of 1875 does not require any notice. The 
filing of the petition and bond makes it the duty of the State 
Court to accept them and to proceed no further in the suit. In 
the present case the petition and the bond were filed on the 
2Tth of July, 1881, and the Court on that day accepted them, 
without requiring any previous notice. As was said by thia 
Court in WeM v. Wold, (17 Blatchf. 0. C. R., 346 :) '' If, as. 
matter of discretion, a State Court can or does require notice 
in any case of removal, such notice was dispensed with in thi» 
case by the State Court ; and, the matter being one of prac- 
tice, it is for the State Court to regulate its own practice, and 
this Court will not review such a question." It has alwaya 
been held, in this Conrt, that oo notice was necessary. {Fish 
V. Union Pacific R. R. Co., 8 BULchf. C. C. R., 243, 247.) 

The bond for removal is not executed by Stevens and 
Kichardson, nor does it name them as obligors. It is executed 
by two other persons, who are named in it as obligors. It 
recites that Stevens and Kichardson have petitioned for the- 
removal of the suit, and is conditioned that they shall do* 
what the statute requires. The obligors are not otherwise* 
called in the bond sureties for Stevens and Kichardson. The 
plaintiff contends, that, as § 3 of the Act of 1875 says that the 
petitioner for removal is to " make and file " the bond, the 
bond is void and the removal invalid. This objection is not 
tenable. The statute is satisfied, as to the bond, if a bond 
with suflScient surety is filed. The petitioner for removal 
makes the bond, in the sense of the statute, if he offers it to> 
the Court as the bond required. By § 639 of the Eevised 
Statutes he was required to offer good and sufficient surety. 
The Act of 1875 means no more. Aside from this, a new 



-68 SOUTHERN DISTRICT OF NEW YORK, 

Steyens «. RiohardBoii. 

bond, mnning in the name of and executed by Steyens an& 
BicbardBon aa principals, and the former sureties as sureties, 
was filed in the State Court on the 28th of September, 1881, 
that Court having made an order, on the 22d of September, 
that it be filed there nunc pro tunCy as of July 27th. A copy 
was filed in this Court October 1st. The first day of tiie 
next term of this Court after July 27th was October 17th. 
The notice of motion to remand was not served till October 
8d. Nothing to afEect the status of the suit was done in the 
State Court from July 27th to October 1st. The objection 
SB to the bond is overruled. 

It is also objected, that Stevens and Bichardson voluntarily 
appeared in the State Court without the summons being 
served upon either of them ; that, therefore, they were not 
in Court and no action was pending as to them ; that their 
Toluntary appearance was a submission to the jurisdiction of 
the Court, and a waiver of their right of removal; and that 
they also waived such right by obtaining in the State Court 
an extension of their time to answer, and by giving notice of 
A motion in said Court to dissolve a temporary injunction 
which that Court had granted restraining them from collect- 
ing any rent from Stanfield, and from doing other acts as 
trustees. There is no force in these objections. A plaintiff, 
who brings his suit voluntarily, has a right to remove the 
cause under the same statute. The trustees were called on to 
appear and defend their trust, by the bringing of the suit and 
the issuing of the injunction, and they lost no right of re- 
moval by saving to the plaintiff the trouble, expense and 
delay of bringing them in compulsorily or by doing what 
they did. « 

The defendants move that the plaintiff replead in this 
Oourt. It is not so entirely clear that there are causes of ac- 
tion at law set forth in the complaint which are so separate 
and distinct from the equitable causes of action set forth as 
to make it proper now, on this motion, to compel the plaintiff 
to divide the suit into a suit or suits at law and a suit or suits 
in equity. If this is to be done at all it should be done only 



NOVEMBSR, 1881. 59 



The Cortes Compmy v. Thamihaiifler. Chittenden v. The Suae. 

38 the result of pleading. The sione remark applies to anj 
questions of multif arionsness or misjoinder of causes of action 
or of parties. 

I see no sufficient ground in the papers for requiring the 
plaintiff at present to give additional injunction security to 
the trustees ; and, although the notice of motion includes the 
giving further security to the executors, there is nothing in 
the moving affidavits on that subject. 

John Berry ^ for the plaintiff. 

Jd^n JS. Burrilly for the defendants. 



The Cobtbs Company 

vs. 

SioMUND M. Thannhausesk and Augxtst Thaknhauseb. In 

EQUiry. 

LUOIITS E. CnnTENDEN AND OTHEBS 

V8. 

The Same. In Equity. 

Th% plfcintiffii in theee Boits, haying been sned at law by the defendants in these 
ndts, and haying equitable defences to the suits at law, which ^coold not be 
•▼ailed of therein, bnt which, if established, would warrant a perpetual stay 
of the suits at law, moved, in these suits, for an order that the service of sub- 
poenas to appear and answer therein upon the attorueys for the plainti£b in 
the suits at law be deemed sufficient and proper service upon said plaintiffs 
as defendants in these suits, they being either foreigners or citisens of Cali- 
fornia, and residents of California: Ildd, that the motion must be granted, 
and that a copy of the subpoena ought also to be served on the parties per- 
sonally, if they could be found, wherever they might be. 

floeh a suit is not an original suit and the subpcBna in it is not original procaas, 



60 SOUTHERN DISTRICT OF NEW YORK, 

The Cortes Company v. Tbannhaiiser. Chittenden v. The Same. 

within g 1 of the Act of March 3d, 1876, (18 U, & 8tai, at Lar^e, 470,) and 
Rule 18, in Equity, does not apply to each a sobpoena. 

(Before Blatohvou>, J., Sonthern District of New York, November 2d, 1881.) 

Blatohford, J. The defendants in these snits have 
brought two snits at law in this Conrt against the Cortea 
Company and one snit at law in this Conrt against Lncins E. 
Chittenden and others, to recover sums of money alleged to 
be due. The above are suits in equity. The first of them 
is brought to restrain the prosecution of all three of the suits 
at law, and the second to restrain the prosecution of the suit 
at law against Chittenden and others. Properly interpreted 
there is no prayer in either of the two bills for any relief ex- 
cept injunctions to stay the prosecution of the suits at law. 
The ground stated for such relief is, that there is, on the facts 
alleged in the bills, and which are alleged in the same terms 
in both bills, an equitable defence to all of the suits at law^ 
which, if established as alleged, would warrant a perpetual 
stay of the suits, but that such defence cannot be availed 
of in the suits at law, by reason of the distinction main- 
tained, in the jurisprudence of the Qnited States, between pro- 
ceedings at law and proceedings in equity, as shown by the 
ruling in Montejo v. Owen^ (14 Blatchf, C. C. -S., 324,) and 
in the cases there cited. 

The plaintiffs, on filing the bills and on notice to the attor- 
neys for the plaintiffs in the suits at law, now move for an 
order that service of the subpoenas to appear and answer in 
these suits, or such other notices as the Court shall adjudge 
proper, with a view to enable the Court to proceed with these 
suits, upon said attorneys, be deemed suflScient and proper 
service upon the said plaintiffs as defendants in these suits, 
they being either foreigners or citizens of California, and 
residents of San Francisco, in California. 

It is a well settled principle, that a bill filed on the equity 
side of a Court to restrain or regulate a judgment or a suit at 
law in the same Court, is not an original suit, but ancillary 
and dependent, and supplementary merely to the original 



NOVEMBEB, 1881. 61 



The Cortes Compaiiy «. TbaDnhanser. Chittenden v. The Same. 

^ J. , m -"■ I 

suit; and that ench a bill can be maintained in a Federal 
Court without reference to the citizenship or the reeidence of 
the parties. {Logon v. Patrick^ 6 Oranch^ 288 ; Dunn v. 
Clarke^ 8 Peters^ 1 ; Clarke v. Mathewson^ 12 Id.^ 164 ; 
Freetnan ▼• Howe^ 24 Howa/rd^ 460, 460.) On this principle, 
the eqnity suit not being an original suit, the process or no- 
tice issued on its being brought, to advise the plaintiff in the 
suit at law that it has been brought, is not regarded as 
original process, or as an original proceeding. Such plaintiff 
is in Court, voluntarily, for the purpose of prosecuting his 
suit at law and obtaining a judgment, and thereby makes 
himself subject to any control the Court may find it equitable 
to exercise over his suit at law and over the matters involved 
in it, to the extent of perpetually staying its prosecution, if, 
on equitable considerations, that ought to be done. All that 
is requisite is, that the plaintiff in the suit at law should have 
notice from the Court of the institution of the proceeding in 
equity. If he will not defend against it, after receiving such 
notice, he will have to submit to the stay of his suit at law, 
if, after an ex-paris hearing, the Court shall deem such stay 
proper. He is in Court for the purposes of the action of the 
Court on the subject-matter of the proceeding in equity, by 
having become the plaintiff in the suit at law. He is repre- 
sented, for the purpose of giving notice to him of the insti- 
tution of such proceedings, by his chosen attorney in the suit 
at law. This is a necessity. His residence may be unknown, 
or, if known, remote. His attorney is presumed to know 
how and where to communicate with him. Therefore, it is 
proper to give such notice to the attorney, and it is the duty 
of the attorney to bring such notice to the attention of his 
dient. If he does not, or, until he does, it is proper that the 
client should submit to any stay the Court may direct of 
further proceedings in the suit at law, reasonable time being 
given for the communication of such notice to the client, 
that he may discontinue the suit at law, or defend the suit in 
eqnity, or put the matter into the hands of other counsel, or 
have a fair opportunity to take such other course as shall be 



62 SOUTHERN DISTRICT OF KEW YORK, 

The Cortes Company v. Thannfaaiiser. Chittendesi «. The Same. 



deemed advisable. It may be proper to cause an additional 
and direct notice to be served on the plaintiff in the snit at 
law personally, if that is feasible. 

It is provided, by § 1 of the Act of March 8d, 1876, (18 
U. S. Stat at Large^ ^70,) that no civil suit shall be brought 
before a Circuit Court or a District Court " against any per- 
son, by any original process or proceeding, in any other Dis- 
trict than that whereof he is an inhabitant, or in which he 
shall be found at the time of serving such process, or com- 
mencing such proceeding," except as provided in § 8 of the 
same Act, which provides for bringing in absent defendants 
in suits to enforce or remove liens on property within the 
District. Substantially the same provision as to '^original 
process " was contained in § 11 of the Act of September 24tb, 
1789, (1 U. S, Stat at La/rge^ 79,) and was re-enacted in § 789 
of the Revised Statutes. A subpoena or notice issued on the 
filing of such a bill as those in the present suits has never 
been regarded, in the Courts of the United States, as an origi- 
nal process or proceeding, and has been allowed to be served 
on the attorney for the plaintiff in the suit at law, and even 
to be served on such plaintiff out of the District. {Logam, v* 
Patrick^ 6 Cram^h^ 288 ; Reed v. Consequay 4 Wash. C. C. R,^ 
174 ; Ward v. Sedbry^ 4 Id.^ 426 ; Dunlap v. Stetaouj 4 Masoriy 
349, 360 ; Dunn v. Clarke^ 8 Peters^ 1, 3 ; Bates v. Delaman^ 
6 Paige^ 299 ; Doe v. Johnston^ 2 McLeam.^ 323, 825 ; Sawyer 
V. Gill, 3 Woodb. <& J/., 97 ; Segee v. T/iomaSj 3 Blatchf. C. 
C. R.y 11, 15; Kamm v. Starh^ 1 Sawyer, &4t7y 660; Zovh 
enstein v. OUdeweU^ 6 Dillon^ 325.) 

It is further objected, that the Supreme Court, by Rule 13, 
in Equity, has provided that "the service of all subpoenas 
shall be by a delivery of a copy thereof, by the oflBcer serving 
the same, to the defendant personally, or by leaving a copy 
thereof at the dwelling-house or usual place of abode of each 
defendant, with some adult person who is a member or resi- 
dent in the family." The practical construction of this Rule 
has always been not to extend it to subpoenas on bills such as 
those in the present cases. The practice before referred to 



NOYEMBEB, 1861. 68 



P. Lorillard ^ Ck>. «. Dofaan, Curoll <fr Co. 



has existed while Eule 13 lias been in force and has never 
been nndenstood to be affected by that Rale. 

An order for Babetituted aervice on the attorneys will be 
made, and, in addition, it will be ordered that a copy of the 
subpoena be served on the parties personally, if they can be 
found, wherever they may be. 

L. E, Chittenden, for the plaintiffs. 

S. 3. Clarke and J. W. Zilienthal, for the defendants. 



P. LOBILLASD & Co. 

DoHAN, Cabboll & Co. Is Equtty. 

Re-iBBoed letters patent No. 7,862, graDted, October 24th, 1876, to Charles Sied- 
ler, for an improyement in ping tobacco, the original patent, No. 168,604, 
haying been granted to him January 12th, 1875, are yalid. 

The inyention coyered by the re-issne, defined. 

The date of on inyention patented in Great Britain is the date when the specifi- 
cation was filed in the Great Seal Patent Office. 

The qiieation of the novelty of the inyention, considered. 

(Before Whxilxb, J., Sonthem District of New York, November 2d, 1881.) 

Wheelsb, J. This cause depends upon re-issued letters 
patent No. 7,362, dated October 24th, 1876, granted to 
Charles Siedler, upon the surrender of original letters patent, 
No. 158,604, dated January 12th, 1875, for an improvement 
in plug tobacco. Their validity is contested upon the grounds 
of want of patentable invention, want of novelty, and want of 
support of the re-issue by the original. They have been be- 
fore the United States (^cuit Court for the Eastern District 



64 SOUTHERN DISTEICr OF NEW YORK, 



P. LorillArd A Co. v. Dohan, Cwroll A Co. 



of Pennsylvania, in LoriUard v. McDoToell, (11 Of. Oaz.y 640,) 
where it was held, on a motion for a preliminary injanction, 
by McKennan, J., that the re-issue was supported by the 
original, and was not void either for want of invention or 
novelty ; and in LoriUard v, Sidgeway^ (16 Off. Oaz,^ 1^»^1>) 
where it was held, on final hearing, in view of the defences 
there interposed, by the same Judge, that there was a lack of 
patentable invention and nbvelty. The question as to the re- 
issae was the same there that it is here ; the decision upon it 
in the former case was not disturbed by the change of opinion 
in the latter, and that decision is a sufficient authority for 
holding the same way here ; and, besides, the reasoning upon 
which that conclusion was reached is fully concurred in. The 
fiame respect would be paid to the decision in the later case 
upon the other questions, if it had been made upon the same 
evidence, and it has not been claimed or urged in argument 
but what that case should be followed unless this case is sub- 
stantiaHy different. The invention is of a mode of marking 
and identifying each separate plug of tobacco as being of a 
particular quality, origin or manufacture, by tin labels, or 
tags, having the desii'ed inscription upon them, and prongs 
extending backwards from their edges, pressed into the plugs, 
in the last processes of manufacture, with their faces even 
with the surface of the plugs, where they would be held by 
the prongs and the sarrouuding tobacco. Among the things 
in evidence in that case, as anticipations, were English letters 
patent No. 1,516, dated April 30th, 1874, granted to Gibson, 
Kennedy, and Prior, for an improvement in the manufacture 
of tobacco, and apparatus employed therein, the specifications 
of which were filed in the Great Seal Patent Office October 
27th, 1874, which was before Siedler was then shown to 
have made his invention, and in those specifications was de- 
scribed, as placed in each plug of tobacco, in the process of 
finishing, at the surface, ^^ a thin metal plate bearing the man- 
ufacturer's name, abode, trade-mark or mark of quality." 
Now, Siedler's invention is shown to have been prior to the 
filing of that specification. This removes that patent from 



NOYEBCBEB, 1881. 65 



P. LoriUard A Go. v. Dohan, GarroU A Co. 



among the anticipatioiis to be considered. {De Flarez y. 
jSaynolds, 17 Blatchf. G. O. B., 436.) This point is not 
disputed in behalf of tiie defendants. The use of these plates 
or discs was tEe most like Siedler's method of anything shown 
in that case. In view of that use it was well said, that it was 
^ diflScnlt to see how the mere attachment of prongs to a flat 
disc, which had been used before, would involye a patentable 
exercise of inyentiveness." That use being removed, the 
question is now materially changed and is to be decided upon 
the case as now presented. {United States Stamping Com- 
pany V. Kinffy 17 JSlatchf. G. G. JR.^ 55.) The anticipations 
now to be considered are screws, nails, coins, and other similar 
things, pressed into the surface of the plugs at these stages of 
manufacture, to identify some particular plugs to the manu- 
facturers themselves, and not to go into the market with the 
plugs, to be observed by tradesmen or consumers ; and initial 
letters and trade names impressed into some plugs of lots 
placed in the molds at the same time, by metallic letters placed 
loosely among the plugs, within the molds, or attached to the 
inner surface of the molds and intended to mark those plugs 
for consumers ; and there were tin labels, almost exactly like 
Siedler's, in use upon the corks of bottles. The coins and 
things of that sort would not accomplish the whole object 
sought by Siedler's invention ; they would identify particular 
plugs through the processes of manufacture, and that is all 
they were used for, but would be of no use between manufac- 
turers and customers or consumers. The letters were not 
labels, and could not be made to answer the place of labels on 
that substance. From the nature of the tobacco the letters 
must be large, to be legible ; too large to have enough to an- 
swer the purpose of a label put upon the surface of single 
plugs ; and they could not, by the means used, be put upon 
but few of the plugs as they were subjected in a body to the 
final pressures. The tin labels from corks could not be placed 
upon the finished plugs tastefully and securely, because the 
hard pressed surface of the plugs would not receive and hold 
them. The object desired was to mark each plug so that the 
Vol. XX.- 



66 SOUTHERN DISTRICT OF NEW YORK. 

P. Lorillard A Co. v. Dohan, Carroll A Co. 

maunf actnrer or packer would be known by the mark on each 
plug throughout, until it should* reach the conenmer, and to- 
do this by such means that products of one could not be placed 
under the marks of another, and so as to leave the plugs sym- 
metrical, and tasteful to those who will use them. A label or 
tag was to be sought which would not be large enough to 
cover much of the surface, of such material that letters of a 
size small enough so a sufficient number could be used might 
be put npon it, which could be fastened permanently enough 
to remain until the plugs reached the consumer, and which 
would be removable then and would not injuriously affect the 
quality of the tobacco. Siedler accomplished this by the tin 
label, which could be lettered, having prongs, put into each 
plug in the last stages of manufacture and pressed into them^ 
so that the shape of the plug would be preserved, the label 
could not be removed without disfiguring the plug, therefore, 
one could not be exchanged for another, and it could be re- 
moved by the consumer when that part of the plug should be 
reached, and which would not affect the quality of the tobacco 
at all. This could not be wrought out from the means at 
hand before, without thought and contrivance enough to war- 
rant the decision of the Patent Office that they constituted in- 
vention. No one had done this before him. Therefore, as. 
the ease now stands, the patent must be adjudged to be 
valid. With the re-issue valid there is no question about in- 
fringement. 

Let there be a decree for an injunction and an account, ac- 
cording to the prayer of the bill, with costs. 

Lvoingstan Gifford^ for the plaintiffs. 

Samuel S. JBoydy for the defendants. 



NOVEMBEE, 1881. 67 



Campbell v. The Mayor, dtc, of the City of New York. 



Chbistopheb C. Campbell 

vs. 

The Matob, &o., of the Citt of New York. In Equxtt. 

Letters patent No. 42»920, granted May 24tb, 1864, to James Ejoibbs, for an 
iEDprorement in steam fire-engine pomps, are yaUd. 

The inTeniion defined. 

The question of its norelty examined. 

Certain uses of the inyention held to hare been experimental. 

Under §g 7 and 15 of the Act of July 4th, 1886, (6 U. S. 8tal ai Large, 119, 
128,) and § 7 of the Act of March 8d, 1889, (Id, 854,) a sale or use of an in- 
yention more than two years before the application for the patent, mast in 
order to defeat the patent, haye been a public sale or use with the consent or 
allowance of the inyentor. 

(Before WmEEUOt, J., Southern District of New York, Noyember 9th, 1881.) 

Wheeleb, J. The plaintiff has title to letters patent No. 
42,920, dated May 24th, 1864, and issued to James Knibbs, 
assignor, for an improvement in steam fire-engine pnmps, 
whereby such an engine, having constant power for discharg- 
ing several streams of water through lines of hose of various 
lengths, may be made to throw fewer streams, or the same 
number through longer lines, when the resistance to discharge 
would be greater, without varying the power, or causing un- 
due strain upon the working parts or hose, by means of a 
passage from the discharge to the suction side of the pump, 
r^ulated by a valve, for the removal of the surplus water on 
the discharge side caused by the restriction upon the dis- 
charge. This suit is brought for an infringement of this pat- 
ent, which is not denied, if the patent is valid. The validity 
of the patent is questioned upon the ground that Enibbs was 
not the first inventor of this improvement ; that the same had 
been patented abroad, prior to his invention ; and that the 
same had been in public use and on sale in this country for 
more than two years prior to his application. 



68 SOUTHERN DISTRICT OF NEW YORK, 

Campbell v. The Mayor, Ac, of the City of New York. 

The anticipations relied upon are steam fire-engines which 
were made by the Amoskeag Manufacturing Co., of Manches- 
ter, N. H. ; the steam fire-engine Philadelphia, which was 
made by Beanej, Neafie & Co., of Philadelphia ; and the pat- 
ent of R. A. Wilder, No. 27,662, dated March 27th, 1860. 
The foreign patents are the English one of Joseph Bramah, 
No. 1,948, dated April 18tb, 1793, and the French one to 
Benoit Duportail, No. 19,532, dated June 12th, 1857. The 
facts as to the existence, knowledge of, and use of the devices 
in these fire-engines are to be found from a comparatively 
large mass of evidence, consisting of documents, drawings, 
pictures, and the somewhat conflicting testimony of numerous 
witnesses as to various facts and circumstances. Upon the 
whole, after much examination and consideration, it satisfac- 
torily and beyond any fair doubt appears, that, prior to the 
invention of Enibbs, the Amoskeag Manufacturing Co. made 
and put into rotary steam fire-engines manufactured by them 
a passage for water leading from the suction to the discharge 
sides of the engines, which could be opened and closed by a 
valve, for the purpose of having water carried through it, and 
past the pumping apparatus, and discharged through the hose 
by hydrant pressure, when the pumps were not operating, 
which was used at places where there was hydrant pressure for 
that purpose ; and that Reaney, Neafie & Co. made and put 
into steam piston fire-engines tubes leading from the suction 
and discharge parts of the engine towards each other until 
they met, and in one tube from the place of meeting to the 
boiler, which could be opened and closed by valves, one in 
each branch, for the purpose of taking water from either the 
suction or discharge side into the boiler, the two branches 
leading from the suction and discharge sides constituting a 
passage controlled by two valves through which water could 
be taken from the discharge to the suction side, to relieve 
pressure on the discharge side ; but it does not appear, by that 
measure of clear proof, beyond any fair or reasonable doubt, 
which is necessary to defeat a patent, that either of these de- 
vices was ever, before that time, used for the purpose of pass- 




NOVEMBER, 1881. 69 



Campbell v. The Mayor, Ac. of the City of New York. 

ing water from the discharge to the suction side of the en- 
.ginee, to relieve undue pressure on the discharge side, caused 
bj reducing the number of discharge openings or increasing 
the difficulties of discharge by lengthening the hose ; nor that 
the utility of these passageways for that purpose was before 
that time known ; neither does it at all appear that Knibbs de- 
rived any aid from either of these devices. The counsel for 
the defendant, after insisting strenuously that these passages 
were in fact used for the purposes of Knibbs' invention, like- 
wise insist, that, in view of the existence only of these things, 
if that only should be found, Knibbs only put an old device 
to a new use, which would not be patentable. This presents 
the question, on this part of the case, whether such prior knowl- 
edge and use of a like device as is found to have been had 
will defeat the patent. Knibbs' invention was not to be used 
under all circumstances of the use of the engine. It was for 
use only in combination with the constant power for a larger 
discharge and a restricted discharge. The second claim of 
the patent, and the only one in controversy, is for the con- 
necting passage and valve for the purposes described and set 
forth, the principal of which purposes was the use in that com- 
bination. The statutes providing for defences to suits upon 
patents require defendants to set forth the names and resi- 
dences of persons having prior knowledge of the thing pat- 
ented, and where and by whom it had been used. {liev, Stat. 
U. S.J sec. 4,920.) The proof must, of course, correspond 
with and support these allegations. The proofs in this case 
do not support the allegations that the persons knowing of 
and using the Amoskeag engines and the engine Philadelphia, 
as these persons are found to have known and used them, 
knew of and used Knibbs' invention. Those connected with 
the Amoskeag engines used the passage to avoid the pump, 
and those connected with the Philadelphia used only a part 
of it at a time, and then in connection only with contrivances 
for feeding the boiler, and neither of them used it in connec- 
tion and combination with the working pump and over- 
pressed hose at all ; and they respectively had knowledge co- 



70 SOUTHERN DISTRICT OF NEW TORE, 

Campbell v. The Mayor, Ac, of the CStj of New Tork. 

extensive with the use they made. They had brought to- 
gether all the parts necessary to accomplish the result he ac- 
complished, but did not know how to use them. This is not 
the known use required to defeat a patent. {Tilffhman v. 
Proctor, 102 U. aS, 707.) 

Wilder's patent is for a two-way valve in combination 
with apparatus for feeding a steam boiler with water, by 
which surplus water is returned to the tank. The combina- 
' tion with which it is made to work is entirely different from 
that in which this passage and valve is placed, and the work- 
ing parts are not the same. The same may be said of the pat* 
ents of Bramah and Duportail. Both were before steam fire- 
engines, with the necessities of their great and constant mo- 
tive power, were known. 

The facts in regard to use and sale of the invention prior 
to the application appear from the evidence to be, that Knibbs 
was the engineer of a steam fire-engine in use in the city of 
Troy for the protection of property there against fire, and, in 
the latter part of April, 1860, applied his invention in the form 
of a pipe leading from the discbarge to the suction sides of 
the engine, with a globe valve between. The invention was 
tried and operated satisfactorily, except that he thought that 
the passage was rather small. This engine, which was called 
the Arba Beade, was continued in use, with the invention 
upon it, Knibbs continuing to be the engineer. In January, 
1862, the city of Troy procured another steam fire-engine of 
substantially the same pattern, to which, at the request of 
Enibbs, his invention was applied in the form of an opening 
through the partition between the discharge and suction sides 
of the pump, with a valve working to a seat at the opening, 
through which the excess of water could be made to pass. 
This engine, which was called the J. C. Osgood, was put to 
use for the city and the invention operated satisfactorily to 
Knibbs, as well as to others concerned. The tube to the Arba 
Beade was made larger in February, 1863, and worked more 
satisfactorily to all. Knibbs thought of applying for a patent, 
consulted a solicitor of patents about it, and made application 



N0VEB4BER, 1881. 71 



Campbell v. The Mayor, Ac, of the City of New York. 

for the one that was granted, May 13th, 1864, without at any 
time intending to abandon his invention to the public. In 
1861, and consequently more than two years before the appli- 
^cation, the Amoskeag Manufacturing Go. made other steam 
fire-engines containing this invention, which were sold and 
went into use, and from that time until after the application 
«uch engines were occasionally made and sold by that com- 
pany« and, perhaps, by other manufacturers, and went into the 
customary use. This was done without the consent and allow- 
ance of Knibbs. It is contended that these uses and sales, either 
those with or those without the consent and allowance of 
KnibbS) will defeat the patent. This invention, like that in JSltz- 
'dbeth V. Pame7nent Co.^ (97 U. S., 126,) could not well be experi- 
mented with and tested in private. Its object was connected 
with purposes in their nature public, and its practice was nec- 
essarily somewhat of the same nature. The invention was 
not essentially varied by the trials and use made and was pat- 
ented according to its features as first applied. Still, it was 
not dear to the inventor that no changes or modifications 
would be necessary, and necessary to be specified in the appli- 
<cation for a patent, in order to obtain the full benefit of one. 
In this view, the use by him as engineer, and by the city of 
Troy at his request, is deemed to have been experimental and 
4JIowable, within the rule laid down in the case cited. Still, 
if consent and allowance of the inventor are not necessary to 
defeat a patent, the other sales and use were sufiScient to ac- 
Ksomplish that result. It has frequently been said, but in cases 
where the point was not directly raised, that such consent and 
^lowance was not necessary. {JSghert v. Lippman^ 15 Blatchf. 
a a R., 295 ; Kdleher v. Darling, 4 Clifford, 424.) And 
there are cases the other way. {Anda*ew8 v. Carman, 13 
BlaUAf. C C. R., 307 ; Draper v. Wattles, 16 Off. Oaz., 629.) 
In view of these differences of opinion or statement, it may 
be weU to recur to the statutes. In section 7 of the Act of 
July 4th, 1836, (5 U, S. Stat, at Large, 119,) it is provided 
ithat the Commissioner shall make or cause to be made an ex- 
amination of the alleged invention or discovery, and, if it 



72 SOUTHERN DISTRICJT OF NEW YORK, 

Campbell v. The Mayor, Ac, of the City of New York. 

shall not appear, among other things, that it had been in pub- 
lic use or on sale, with the applicant's consent or allowance, 
prior to the application, and if the Commissioner shall deem it 
to be snfBciently nseful and important, it shall be his duty to 
issne a patent for it. In section 15 of the same Act it is pro- 
vided, that a defendant, in a suit for infringement, may set 
up, among other things, in defence, that the invention had 
been in public use or on sale with the consent and allowance 
of the patentee before his application for a patent. These are 
the only provisions for preventing the issue of a patent, or a 
recovery for the infringement of one, on account of the in- 
vention being in public use or on sale, except some provisions 
as to the effect of foreign patents, not material to this question, 
which were in force when this patent was granted. The 7th 
section of the Act of March 3d, 1839, (5 U. S. Stat, at Largty 
354,) does not provide for preventing the issue of a patent on 
this account, and does not enlarge in any direction, but is re- 
strictive of, this defence. It saves to manufacturers and 
purchasers before the application for a patent the right ta 
specific machines, manufactures, or compositions of matter^ 
and provides that no patent shall be held invalid by reason of 
the sales, purchases or use, except on proof of abandonment, 
or that the purchase, sale or use has been for more than two- 
years prior to the application. No purchase, sale or use after 
thej invention would prevent or invalidate a patent but for 
these provisions of the Act of 1836, and it is against those 
provisions that the effect of the making, use, and sales of these 
specific articles is saved by the Act of 1839. The use saved 
against is the public use mentioned in the Act of 1836, a& 
seems to have always been understood, although it is not men- 
tioned as public, in the Act of 1839 ; and the being in use and 
on sale saved against are the public use and sale with the con- 
sent or allowance of the inventor, mentioned in the Act of 
1836. {Draper v. WatOes, 16 Off. Oaz., 629.) 

Upon these considerations there must be a decree for the 
plaintiff. The patent has expired, and, therefore, no injuno- 



KOYEMBER, 1881. 7S 



Strobridge v. Landen, Frary A Clark. 



tion will be granted, unless farther moved for upon some 
special grotmds. 

Let a decree be entered adjudging that the patent is yalid^ 
and that the defendant has infringed, and for an account, ac- 
cording to the prayer of the bill, with costs. 

Georffe H. WiUiamSy for the plaintiff. 

Frederic H. Belts and C. WyUys JSetts, for the defendant. 



TUBNEB StBOBBIDOS 
V8. 

LAjn>EB8, l^^ABY & Clabk. In Equitt. 

Re-iflsoed letters patent No. 7,588, g;ranted to Tomer Strobridge, March 27th,. 
1877, for an improvement in coflfee-miUs, (the original patent, No. 159,467, 
haying been granted to him February 2d, 1876, and re-issned to him as No. 
7,174, June 18th, 1876,) are yalid. 

The first claim of said re-isene, namely, "A coffee or similar mill, haying a de- 
tachable hopper and grinding shell, formed in a single piece, and snspended 
within the box by the npper part of the hopper, or a flange thereon, sob* 
stantially as and for the pnrpose specified," is infringed by a mill constracted 
in aooordance with the description and drawings of letters patent No. 204,866^ 
granted to Bodolphns L. Webb, June lltb, 1878. 

The re-iflsoe is not for a different inyention from the ori^al, and does not con- 
tain new matter. 

The qneetions of noyelty and patentability considered. 

Hie deyioes contained in the first claim held to be a combination and not mere- 
ly an aggregation of parts. 

(Before Blatghtobd, J., Connecticut, Noyember 10th, 1881.) 

Blatohfobd, J. This suit is brought on re-issued letters 
patent No. 7,583, granted to the plaintiff March 27th, 1877, 
the original patent, No. 159,467, having been granted to him. 



74 CONNECTICUT, 



Strobridge v. Landers, Frary A Clark. 



as inventor, February 2d, 1875, and re-issued to him, No. 
7,174, June 13th, 1876. The drawings of the original and 
of No. 7,583 are the same. The following is the specifica- 
tion of No. 7,583, reading what is outside of brackets and 
what is inside of brackets, omitting what is in italics : '' Fig- 
ure 1 is a vertical section of a coffee mill embodying my 
invention. Fig. 2 is an under view of the cover, and fig. 3 is 
a perspective view of the hopper. Like letters refer to like 
parts, wherever they occur. My invention relates to the 
construction of cofiee [and] or spice [mills in such manner 
that the hopper is inclosed in the box, and may be closed in 
turn by a sliding gate or cover, whereby a compact and neat 
mill is obtained.] grinders; and it consists in suspending 
the hopper hy means of the top of the hox^ and securing it in 
position hy means of screws^ which pass through the cover 
<imd through lugs or a projecting fia/nge upon the hopper^ 
whereby a covered hopper is obtained a/nd the construction 
and attachment of the devices simplified; alsoj in providing 
the covered hopper with a sliding or m/yoable gate^ centered 
with the shafik of the grinding nut and sliding upon the 
periphery or fiange of the hopper, whereby hinges^ springs or 
catches are dispensed with, and the gate slides a^side, leaving 
a/n unobstructed opening for the admissicm of the article to be 
gravmdy and also in providing the hopper with projections or 
points which bite into the cover of t/ie box and prevent the 
slipping or turning of the hopper, in connection with a cover 
projecting so as to rest upon the top of the box, and bind upon 
ike upper edge of the hopper. * * * a indicates the box, 
with its drawer, B, of any suitable construction. The top, 
C, of the box is cut away, [so that] for the admission of the 
hopper [may be suspended therein] which 1 introduce from 
above, suspending it by means of a projecting fiange or lugs 
on the [hopper.] hopper, and to [To] facilitate the suspension 
of the hopper, I preferably bevel the opening in top C to 
correspond with the curve of the hopper, as shown at [c] c, 
which [This] also wiU diminish the liability of the splitting 
of the wood when the screws which secure the cover are [in- 



NOTEMBER, 1681. 76 



Strobridge v. Landers, Frary A CSlark. 



trodaced.] introduced, {when a cover is used and secured, as 
^hovon.) D represents the hopper or grinding shell, produced 
with a flange or lugs, d, by which it is suspended [in] upon 
the top C of the box [A. The hopper is fastened down, and 
also prevented from turning, by the screws ^.] A^ and 
through which pass the screws g, which hold the hopper dcwn^ 
and prevent it from turning. The hopper has the usual 
grinding face, d% and a series of projections or points, e, 
which I provide for the purpose of taking hold upon the 
beveled edge c of the top C, to assist in preventing any move- 
ment of the hopper. These points, if sufficiently numerous, 
will of themselves prevent a change of position of the [hop- 
per, so that screws may be omitted. This will be found the 
cheapest and most convenient way of suspending the] hopper. 
E is the cover, having a central opening for the passage of 
the shank of the grinding nut, and a sunken or recessed rim 
for the accommodation of the lugs d, or the flange of the 
hopper, so that the lower edge of the cover rests evenly upon 
the top C, and at the same time binds upon the hopper. This 
cover, E, is provided with a sliding gate or door, F, which is 
pierced, as at f for the passage of, or made to rest against, 
the shank of the grinding nut, upon which it turns or bears, 
said gate F resting, by its lower edge, upon the upper edge 
of the hopper, and sliding or moving within or without the 
cover E, so as to be out of the way when the opening in the 
cover is unclosed. O represents the grinding nut, having a 
tapering shank, H, which passes through the cover, project- 
ing portion of gate F, and the crank, and is secured above by 
the usual tightening nut, I. The devices are put together as 
follows : The cover and gate are placed upon the hopper, the 
shank of the grinding nut passed through the hopper, cover 
and crank, and secured by the tightening nut, the lugs or 
screw openings in the flange of the hopper are made to regis- 
ter with those in the cover, after which the operative parts 
are dropped into the opening in the top of the box, and 
secured by a single set of screws which pass through the 
cover and lugs or flange of the hopper. The projecting 



76 CONNECTICUT, 



Strobridge v. Landers, Vrtaj A Clark. 



points on the outside of the hopper will bite into the top of 
the box, and, as the cover binds npon the upper edge of the 
hopper, these wiU, of themselves, if sufficiently numerous, be 
sufficient to prevent any movement of the hopper, so that, if 
desired, the screws need not pass through the flange of the 
hopper. The hopper may be suspended as shown, and the 
cover replaced by a bridge, to support the shank of the grind- 
ing nut. The grinding sheU or hopper and the cover may be 
secured by a separate set of screws. The lower part of the 
grinding shell may be formed with lugs or projections, to 
guide or steady the grinding nut. Among the advantages of 
my invention are the simplicity of construction, and the 
readiness with which the several parts and the box may be 
adjusted or set up, whereby time and labor are saved and a 
serviceable article produced." Heading in the foregoing 
what is outside of brackets, indudiug what is in italics, and 
omitting what is inside of brackets, gives the text of the 
original specification. There are eight claims in Ko. 7,583. 
Only claim one is involved in this suit. It is as follows : "1. 
A coffee or similar mill, having a detachable hopper and 
grinding shell, formed in a single piece, and suspended 
within the box by the upper part of the hopper, or a flange 
thereon, substantially as and for the purpose specified." The 
original patent had four claims, as follows : " 1. The hopper 
and grinding shell D, provided with points or projections e 
on its outer surface, in combination with cover E, projecting 
so as to rest upon the top of the box, and bind upon the up- 
per edge of the hopper, substantially as and for the purpose 
specified. 2. In coffee or spice mills, the combination of box 
A, having a top C, with the hopper D, suspended within the 
box by means of lugs or projections, 'which rest upon or take 
into top C, and a cover, substantially as specified. 3. The 
combination of the hopper and grinding shell D, grinding nut 
G, having shank H and cover E, having a sliding gate or 
door F, substantially as and for the purpose specified. 4. The 
combination of cover E and grinding shell or hopper D, the 
latter provided with lugs or a flange, so that the two parts 



NOVEBfBER, 1881. 77 



Strobridge v. Landers, Frary A Clark. 



may be aecared to the box by a single set of screws, substan- 
tially as specified." 

So far as can be discerned in the drawings of the original 
and the re-issne, the hopper and the grinding shell are repre- 
sented as in a single piece without any indication of ever 
having been in two pieces. It is not stated in the re-issue 
that they are cast in one piece. The text says that D is the 
hopper or grinding shell, and that it has the usual grinding 
faoe d. That grinding face is shown, in the drawings, as ex- 
tending down from the lower part of the hopper part proper, 
and as having the grinding nut revolving within it. The grind- 
ing face is the inner face of the grinding shell. There is 
nothing else on the point till we come to claim one, where it 
is said that the '^ hopper and grinding shell" are ^^ formed in 
a single piece." 

The elements which appear to be necessary, in claim one, 
are: (1.) A mill in the form of a box ; (2.) a hopper and 
grinding shell formed in a single piece; (3.) the combined 
hopper and grinding shell detachable; (4.) such hopper and 
grinding shell suspended in the box by the upper part of the 
hopper, or a flange thereon ; (5.) an arrangement of these 
features substantially as and for the purpose specified. 

The defendant's structure which is claimed to infringe 
claim one of the re-issue, is constructed in accordance with the 
description and drawings of a patent granted to Bodolphus L. 
Webb, No. 204,865, June 11th, 1878, so far bjb anything in- 
volved in this case is concerned. That patent shows a box 
mill, with a cast metal top projecting, as a lateral flange, 
horizontally from the top edge of the hopper, on all four 
sides, and extending outwardly beyond the tops of the sides. 
The top is of one piece with the hopper proper, and the lat- 
ter is of one piece with the grinding shell, as shown in the 
drawings ; and this is the construction in the article put in 
evidence as infringing. The hopper and grinding shell are 
sunk in the box, so that there are covers which, when closed, 
rest on the upper face of the metal top. The patent states 
that the grinding shell may be cast as a part of the hopper, 



78 CONNECTICUT, 



Strobridge v. Landers, Frary A Clark. 



or may be attached thereto. The patent claims merely an 
arrangement for adjusting the grinding nnt up and down, so 
as to make it ran nearer to or farther from the grinding shell, 
and thus vary the quality of the grinding. This arrange- 
ment does not appear to be embodied in the mills produced 
and put in evidence as specimens of those made by the de- 
fendant. 

The defendant's article is a mill in the form of a box. It 
has a hopper and a grinding shell formed in a single piece, 
they being cast in one piece. The combined hopper and 
grinding shell and top are detachable from the box by un- 
screwing screws which go through the sides of the box into 
lugs depending on the inside of the box from the under side 
of the top. The hopper and the grinding shell, through their 
connection with the metal top, are suspended in the box. 
Every point of advantage resulting from the combination of 
the features in claim one of No. 7,583, exists in the defend- 
ant's article. 

Some question is made as to what is meant by the word 
^' detachable " in claim one. It is not used in the descriptive 
part of the specification. But screws are shown and de- 
scribed which go through the lugs or flange on the hopper 
and into the wood of the box on top and thus fasten the hop- 
per to the box. Of course, these are wood-screws, and re- 
movable at will ; and so the hopper and shell are detachable. 
The defendant's hopper and shell and top are detachable in 
the same way, being attached in the same way. The defend- 
ant urges that its structure does not infringe because the 
hopper is not detachable from the top of the box. All that 
the defendant has done is to enlarge the size of the flange on 
the hopper. The sides of the box support the top of the box. 
When the flange is smaller than the top, it hangs in the top. 
"When it is so large as to itself form a top and overlap the 
sides, the sides support the whole, that is, the flange top, the 
hopper and the grinding shell. The change is merely formal, 
and does not avoid infringement. The flange on the hopper 
may be gradually enlarged and the top of the box be gradu- 



NOVEMBER, 1881. 7^ 



Strobridge v. Landers, Frary A Clark. 



ally cnt away, until the wood of the top is all gone, and the 
flange replaces it, without in any manner affecting the princi- 
ple of the Strobridge invention embodied in claim one. Thia 
is all that the defendant has done. 

The answer sets np that the re-issne is not for the same 
invention aa that described in the original, and that the re-issne 
oontaina new matter not found, suggested or described in the 
original. This objection is not tenable. The statement in 
the re-issne of that to which the invention relates is true, and 
is found, in substance, in the original. There is no statement 
in the re-iasue of what the invention consists in. The state- 
ment in the original as to what the invention consists in is 
omitted in the re-issue. It was narrower than the real inven- 
tion. The drawings of the re-issne and the original are the 
same. There is no new matter introduced into the re-issue. 
The re-issae truly describes the article and its parts. To say 
that the hopper is suspended in the box, when the original 
says that it is suspended from the top of the box, is not 
new matter, within the meaning of § 4,916 of the Bevised 
Statutes. 

The answer also sets up, that, in view of the previous state 
of the art, as shown in various patents set forth in the answer, 
the re-is8ue Bhows no novelty and discloses no patentable sub- 
ject of invention, and that the re-issue is invalid for want of 
patentable quality. 

This re-issued patent was adjudicated upon in the suit of 
Strobridge v. Lindsay^ (2 Fed. Rep.^ 692,) in, the Circuit 
Court for the Western District of Pennsylvania, by Judge 
Acheson. The defendants' mill in that case was of the same 
oonstmction as the mill of the defendant in this case. The 
defences there insisted on were non-infringement and want 
of patentable invention. The mill was held to infringe claim 
one of the issue. The question of the extenaion of the flange 
on the hopper was fully considered. Everything that is intro- 
duced into this case by the defendant, on the questions of 
novelty and patentability, was in the Lindsay case, except a 
mill called " Domestic Coffee Mill." In this, the hopper is 



80 CONNECTICUT, 



airobridge v. Lmden, Fnry A dark. 



elevated and not sunk in the box. There is a cast metal 
cover, covering the box and forming its top. The hopper is 
not of one piece vidth the cover, bat rests on it and is secured 
to it by rivets. The grinding shell is loose, and has a flange 
at its npper edge, and is dropped into a depression surround- 
ing the central hole in the cover, and has the hopper above 
it. Lugs on it, fitting into corresponding recesses in the 
cover, prevent it from turning. The grinding shell is sup- 
ported against lateral strain or displacement by the cover. 
This structure has not a hopper suspended in the box, nor a 
^nding sheU and hopper formed in a single piece, and neither 
meets claim one nor shovrs the defendant's arrangement. 

The question of novelty and patentability was fully con- 
sidered by Judge Acheson, especially in regard to the French 
mill, and the Elevated Hopper mill. Box coffee mills existed, 
euch as the Elevated Hopper mill, the Livingston and Adams' 
mill and the Brown mill, in which the hopper and the grind- 
ing shell were formed in one and the same piece ; and box 
eoffee mills existed, such as the French mill, the Krutz mill, 
and the Clark mill, in which the hopper was suspended in the 
box ; and, in the Domestic Coffee mill, the metal top which 
carried the hopper and the grinding shell was attached to the 
box by wood screws. But no coffee mill existed, combining 
all the features embodied in claim one of No. 7,583. It was, 
however, urged, in the Lindsay suit, that it did not, in view 
of the prior structures, require invention to pass to a struc- 
ture with the combined features of claim one of No. 7,583. 
Judge Acheson held that it did. The entire record in the 
Lindsay suit is in evidence in this suit. There is nothing 
new in this suit as to the matters considered and passed upon 
in the other suit, in regard to patentability and novelty, 
and the Domestic Coffee mill presents no features in regard 
to forming the hopper and grinding shell in a single piece, 
and in regard to a hopper suspended in the box, which were 
not presented by structures among those which were before 
Judge Acheson. Under these circumstances, it would be 
proper, as it is usual, to follow the former decision on final 



NOVEMBER, 1881. 81 



Strobridge v. Landers, Frary A Clark. 



heariDg, in another Gircnit Conrt. But, irreBpective of this, 
I entirely concur in the views of Judge Acheson. 

It is strongly urged that claim one of No. 7,583 cannot 
be sustained, because the old devices aggregated in it do not 
by their combination produce a novel result which is the fruit 
of the combination. It is a sufficient answer to this view to 
say, that a hopper and grinding shell formed in a single piece 
and suspended in the box by the upper part of the hopper or 
a flange therein did not exist before, combined in a mill. The 
evidence shows that the suspension in the box requires, in or- 
der to dispense with the yoke or bridge which is below the 
grinding shell in the French mill, that the grinding shell and 
the hopper should be formed in a single piece, because, when 
the hopper is sunken, the grinding shell no longer has the 
lateral support of the box cover. Hence, the combination of 
those features do produce a novel result as the fruit of the 
combination. If that combination had existed before, the 
question whether adding to that the feature of detachabiUty 
made another patentable combination might arise. But it 
does not arise now. 

The defendant, down to 1877, was not making a mill with 
a sunken hopper. In that year, Webb, who was in its em- 
ploy, having before him the French mill and a mill made by 
the Charles Parker Company, in accordance with the Stro- 
bridge patent, entered into the manufacture of the infringing 
mill. It desired to make a mill with a sunken hopper, which 
should be a cheaper mill than the French mill. It substanti- 
ally copied the Charles Parker mill, merely extending the 
flange pf the hopper. It formed the hopper and the grinding 
shell in one piece, and got rid of the lower supporting yoke 
of the Frendi mill. In the Strobridge mill, the only lateral 
support of the grinding shell is the hopper. Therefore, 
there must be a strong, unyielding union between the grind- 
ing shell and the hopper. Where the hopper is elevated, the 
grinding shell is sustained laterally against the strain of grind- 
ing by the top of the box. The advantages thus resulting 
from Strobridge's arrangement have been availed of by the 
Vol. XX.— 6 



82 SOUTHERN DISTRICT OF NEW YORK, 



Plhnpton V. Wioslow. 



defendant by the use of what is covered by claim one of No. 
7,588. 

There mnst be a decree for the plaintiff, for an account of 
profits and damages, and a perpetual injunction, with costs. 

BaketoeU <& Kerr^ for the plaintiff. 

B. F. ITiurstan and. C. E. Mitchell^ for the defendant 



Jakes L. Plimfton 
Samuel "Winslow. In Equitt. 

Hie defendant held to have been protected, in this case, while attending the 
examination of witnesses for the plaintiff, in New York, in an equity sidt 
pending in Massachosetts, brought against him by the plaintiff, from the ser- 
vice on liim in New York of a sabpoena to appear and answer in this suit. 

(Before BLATonioaD, J., Southern District of New York, November 12th, 1881.) 

Blatohfoed, J. A suit in equity brought by the plaintiff 
in this suit against the defendant in this suit, for the infringe- 
ment of letters patent, is pending in the Circuit Court for the 
District of Massachusetts. Prior to November 2d, 1881, it 
had been verbally agreed between Mr. Roberts, the counsel 
for the defendant, and Mr. Clark, the counsel for the plaint- 
iff, in the suit in Massachusetts, that the defendant might 
have testimony on his behalf taken in the city of New York, 
for use in that suit, before Mr. Thompson, as a special exam- 
iner, and Mr. Clark verbally agreed to attend before Mr. 
Thompson at any time, on telegraphic notice, for the purpose. 
Such notice was given that the plaintiff, together with the de- 
fendant and Mr. Roberts, attended in New York, before Mr. 



NOVEMBER, 1881. 83 



PUmpton V. Window. 



Thompson, on November 2d. Mr. Clark was not present on 
that day. Witnesses were examined on that day on behalf of 
the defendant, before Mr. Thompson, by Mr. Eoberts, as coun- 
sel for the defendant, with the acquiescence of the plaintiff, 
who was present dnring the examination, and it was agreed 
between the plaintiff and Mr. Koberts that Mr. Clark should 
have the right to afterwards cross-examine the said witnesses 
and enter objections to all questions in the direct testimony, 
and the examination was adjourned to Kovember 3d. On 
that day Mr. Clark appeared and cross-examined the said wit- 
nesses, and also, in conjunction with Mr. Roberts, signed a 
atipnlation in writing, dated November 2d, and entitled in the 
Massachusetts suit, stipulating and agreeing that Mr. Thomp- 
son might be appointed as special examiner, by the Court in 
Massachusetts, to take the testimony for the defendant, in the 
«uit, in New York, under the 67th Rule in Equity, as 
amended. After the adjournment on the 2d of November, 
and on that day, the defendant was served personally, in the 
street, in New York, after he had left the building where the 
examiner's office was, and a few steps therefrom, vidth a sub- 
poena to appear and answer in this suit, and with a copy of 
the bill and other papers in this suit and notice of a motion 
to be made for an injunction herein. The bill in this suit was 
ffled November 2d, and is a bOl for the infringement of the 
flame letters patent. The defendant now moves to set aside 
the service of the subpoena and the other papers, on the 
ground that the privilege of the defendant was violated. 

•It is very clear that the motion must be gi-anted. The 
defendant attended as a party before the examiner. The reg- 
ularity of the examination was recognized by the attendance 
of the plaintiff, by the arrangement he then and there made 
for future cross-examination by Mr. Clark, and by the ante- 
dated written stipulation which Mr. Clark signed the next 
day. The examination was thus made a regular proceeding 
in the suit in Massachusetts. The defendant had a right to 
attend upon it in person, whether he was to be himself exam- 
ined as a vidtness before Mr. Thompson or not, and he had a 



84 SOUTHERN DISTRICT OF NEW YORK, 

Plimpton V. Winslow. 

right to be protected, while attending upon, it from the service 
of the papers which were served in this suit. He attended in 
good faith, the examination was pending and unfinished, and 
he was served during the interval of an adjournment. The 
privilege violated was a privilege of the Massachusetts Court, 
and one to be liberally construed, for the due administration 
of justice. (Junecm Bomk v. McSpedaUj 5 BisaeU^ 64; 
Brooks Y. Fa/njoell^ 2 MoCrary^ 220; Bridges v. Shddoriy 
18 Blatohf. C. a R,, 507, 515.) 

The only objections urged against the motion are technical 
ones — ^that the written stipulation was not signed till after the 
service was made ; that there was no order as to the examina* 
tion entered in the Massachusetts Court ; that no formal writ- 
ten notice of the intended examination was served ; that the 
sitting before the examiner was, therefore, unauthorized; 
and that the written stipulation cannot have an effect as of a 
date earlier than November 3d. If these objections were al- 
lowed to have force, the plaintiff would only be placed in the 
position of having, by the prior verbal arrangements made^ 
sanctioned by the subsequent action of himself and his counsel 
thereunder, decoyed the defendant to visit New York, by de- 
ceptive inducements, and thus the case would be brought 
within the principle laid down in Union Sugar Refinery v. 
Mathiesson, (2 Clifford^ 804,) and in Steiger v. Bonny (4 Fed. 
Rep.j 17.) The plaintiff and his counsel, by what they said 
and did, represented to the defendant that the proceeding 
before Mr. Thompson was regular and orderly and authorized^ 
and induced him to rely on that view. He had a right, ad a 
party to the Massachusetts suit, to attend a regular examina- 
tion of witnesses in that suit, in New York, and to be pro* 
tected, while so attending, from the service of the papers in 
this suit. The plaintiff is estopped from raising the objec- 
tions as to regularity. 

The motion is granted. 

K N. Elliot, for the plaintiff. 

Wetmorey Jenner cfe Thompson^ for the defendant. 



KOYEMBER, 1881. 85 



Brooks V. Bailey. 



Chables J. Sbooks 
Edwin C. Bailey. In Equitt. 

To ft bill in equity brought in the Circnit Court for the District of Vermont, 
ftlle^Dg that the plaintiff was a citizen of Maseachosetts and the defendant a 
citixen of Vermont, the defendant pleaded that he was a citizen of New 
Hampshire ; Hdd, that the plea was bad. 

The Act of March 3d, 1876, (18 IT. & Stat, at Large, 470, § 1,) extends the 
jarisdiction to snits between citizens of different States, without requiring 
either party to be a dtizen of the State where the salt is brought. 

(Before Whbklkb, J., Vermont, November 28th, 1881.) 

Wheeleb, J. This is a bill in equity in which the orator 
sets himself np as of Boston, in the State of Massachusetts, 
and a citizen of that State, and the defendant as of Stowe, in 
the State of Yermont, and a citizen of that State. The de- 
fendant has pleaded, that, at the time of the bringing of the 
bill he was, and now is, a citizen of the State of New Hamp- 
shire, and that neither he nor the orator then was, or now is, 
a citizen of the State of Vermont ; and this plea has been 
argued. £j the provisions of the Constitution the judicial 
power of the United States was made to extend to controver- 
Bies between' citizens of different States. {Art. 111^ sec. 2.) 
By § 11 of the Judiciary Act of. September 24th, 1789, (1 U. 
& Stat, at Large^ 78,) Congress conferred upon the Circuit 
Courts jurisdiction of all suits of a civil nature, at common 
law or in equity, of the required amount, between a citizen of 
the State where the snit is brought and a citizen of another 
State. {Rev. Stat^ § 629.) At the same time it was provided 
that no civil suit should be brought therein, against an inhab- 
itant of the United States, by original process, in any other 
district than that whereof he should be an inhabitant, or 
wherein he should be found, at the time of serving the writ. 



86 VERMONT, 



BrookB V. Bailej. 



{Bev. Stat.j § 739.) These provisions oontinned in force nntil 
the Act of March 3d, 1875, (18 U. S. Stat, at Large, 470.) The 
former was the law which conferred jurisdiction in this clasa 
of cases; the latter was a limitation upon the place where 
snits might be brought, for the ease of defendants. Both 
were operative in determining where the place might be* 
{McMickm v. WM, 11 P^., 25.) The Act of March 3d, 
1875, extended the jurisdiction to all suits of a civil nature at 
common law or in equity, of the required amount, in which 
there should be a controversy between citizens of different 
States, without limiting it to depend at all upon citizenship of 
either party in the State where the suit shoald be brought^ 
but retained the limitation upon the bringing of suits in other 
Districts than that whereof the defendant should be an inhab- 
itant or in which he should be found. It has been argued 
that, because this limitation is in sabstantially the same lan- 
guage in the Act of 1875 that it was in the Act of 1789, it 
must receive substantially the same construction that it had 
always borne. This would be correct if it was to be applied 
to the same jurisdiction otherwise conferred, but it is not. 
This provision in the Act of 1789 was only to be applied in 
determining in which District of the two States, between 
whose citizens jurisdiction of suits was given, the suit must 
be brought. In the Act of 1875 it is to be applied in de- 
termining in which District of all the States, between the dt* 
izens of any two of which jurisdiction of suits is given, the 
suit must be brought. Under the latter Act, this Court, in 
common with other Circuit Courts, has jurisdiction of all 
suits, of the required amount, between citizens of different 
States, among all the States, while under the former it had 
jurisdiction only of suits between citizens of this State and 
those of some other of all the States. The suit could be 
brought only in the District where the defendant resided or 
was found, under either. That this defendant was found in 
this District when the process was served is not denied, and, 
therefore, the right to bring the suit in this District is not 
denied. 



DECEMBER, 1881. 87 



The Narragmnsett 



The plea is overruled, and the defendant must answer over 
by the January rule-day. 

EZeazar JS. Hard, for the plaintiff. 

George WUkins and Hen/ry BaUard, for the defendant. 



The Nabsagansett. 

A tehooner and a itoamer coffided. The sohooner^s side lights were hnrning, 
hut not properly, and were not seen from the steamer, though those on her 
ware ngilant The steamer did aU that it was incombent on her to do, when 
she diaooyered the schooner's light. The schooner did not exhibit aoy lighted 
torch, although she saw the approach of the steamer : Hdd, that the schooner 
was iriionj in fiinlt. 

(Before Blatcbfokd, J., Connecticnt, December 2d, 1881.) 

This was a libel in rem. filed in the District Court. After 
a decree for the claimant, the libellants appealed to this 
Court. 

Samuel Z. Warner^ for the libellants. 

Thomas M, Miller^ for the claimant. 

Blatohford, J. A consideration of the proofs in this 
case, as well the additional proofs taken in this Court as those 
found in the apostles, leads me to the same conclusion arrived 
at by the District Court, that no fault is shown on the part of 
the Narragansett, and that the libel must be dismissed. 

The District Judge found that the schooner's green and 
red side lights were properly set, that is, set in their proper 
places,and properly screened, the green on the starboard side and 
the red on the port side, and that they were burning. He did 
not find that they were burning properly. On the contrary, 



88 CONNECTICUT, 



The NarragaDBeit. 



he finds that the master and the lookout of the steamboat 
were on the watch for lights, and were careful and yigilant, 
and were in the exercise of dne diligence, and yet did not see 
any light on the schooner till close upon her ; that, if the 
lights on the schooner had been visible, those persons could 
have seen them ; and that the lights were not capable of being 
seen. He also finds that there was nothing in the condition 
of the atmosphere to prevent the steamer from seeing the 
schooner's lights. I concur in those conclusions. The stat- 
ute {Hev. Stat, U. S.^ § 4,233, HtUes 3 and 8) requires not 
only that sail-vessels under way shall carry a green light on 
the starboard side and a red light on the port side, but that 
those lights shall be '^ of such a character as to be visible on a 
dark night, with a clear atmosphere, at a distance of at least 
two miles." It is very plain that the schooner's lights did not 
meet such requirement. They may have been burning and 
visible to those on the schooner's deck. Sut, for some cause, 
not at all connected with the vigilance or watchfulness of 
those on board of the steamboat, the schooner's lights were 
not seen by them. The District Judge said, that, without un- 
dertaking to find aflBrmatively why the lights were not visi- 
ble, he found simply that the steamboat was in the exercise 
of due diligence, and that the lights were not capable of being 
seen ; and that, for that fact, he relied much on the appear- 
ance and manner of the master of the steamboat, which im- 
pressed him favorably, and that the master was for several 
hours continuously before the collision in the pilot house, in at- 
tendance upon his duty, and that it was his business and duty 
to look out for lights, and that there was no inducement to be 
negligent but every motive to be careful. These considera- 
tions lead me to a concurrence with the District Judge. The 
master of the steamboat was using a glass all the time to 
search for lights. The glass of the schooner's green lantern 
was broken in the collision. Tlie master of the steamboat 
found a bit of it and says that he considered it badly smoked 
up, that it was damp and greasy, and that, if all of the lan- 
tern was in that condition, it was not fit to emit light. The 



DECEMBER, 1881. 89 



The Narragansett 



green light -wbb the one which the steamboat would have seen 
if the schooner was on the course claimed by the schooner. 
Eerofiene "was burned in the schooner's lights. No light from 
her was visible to the two persons in the pilot house of the 
steamboat, or to the bow watchman of the steamboat, until the 
steamboat was close upon the schooner, and then what ap- 
peared to be a dim, colorless light od the schooner was seen 
by those on. the steamboat. The h'ght not being seen to be 
green or red was taken to be a binnacle light in the cabin of a 
vessel going the same way with the steamboat. The bow 
watchman of the steamboat says that a kerosene lamp will 
naturally get blurred on the top ; that, while a smoked green 
lantern wonld seem green near at hand, it might seem with- 
out color far off ; and that to a man looking at its smoked 
part it might seem colorless, while to a man looking upward 
to it it w^onld seem green. All this may explain why the 
schooner'B lights were not seen, though it is not necessary the 
steamboat should do so. The libel alleges that the schooner 
was " duly lighted," that her green and red lights were 
" brightly burning," that she " had all proper, sufficient and 
lawful lights set and burning, as aforesaid." The burden is 
on her to show this, and she has not done so. 

The steamboat, on discovering the schooner, did all that it 
was incumbent on her to do. On the view she had of the 
light she had a right to think it was on a vessel going the 
same way. She slowed and ported so as to go by on what 
she reasonably believed to be the starboard hand of the 
schooner. Kale 21 in § 4,233 provides that every steam ves- 
sel, when approaching another vessel, so as to involve risk of 
collision, shall slacken her speed, or, if necessary, stop and re- 
verse. She did slacken her speed, and it did not then appear 
to be necessary to stop or to reverse. Afterwards, as soon as 
danger of collision appeared from the sudden coming of the 
sails of the schooner into view from the light thrown on them 
by the head light of the steamboat, the latter stopped and 
backed, and backed strong, and her wheel was put hard-a-port. 
She could do no otherwise and no more. 



90 CONNECTICUT, 



The NarragaDsett. 



There is another point in this case. It is provided bj 
§ 4,234 of the Revised Statutes, that every sail vessel, shall," on 
the approach of any steam vessel during the night-time, show 
a lighted torch upon that point or quarter to which such steam 
vessel shall be approaching." The schooner saw the approach 
of the steamboat from a long distance and failed to show the 
lighted torch. This neglect is set up in the answer. There 
was a torch in the cabin of the schooner, ready for nse, and 
easily accessible. The mate of the schooner, who was at the 
wheel, did not know that there was a torch on board. The 
master did. He states that he never saw a torch used. It is 
quite clear that the torch could have been got out and lighted 
and used in time to have prevented the collision. A mis- 
taken idea seems to have been entertained by the master and 
the mate that a lighted torch was to be used only when a 
steam vessel was approaching from behind. This steamboat 
was not approaching from behind, if the testimony of those 
on the schooner is to be believed. But the statute has no such 
meaning. The lighted torch is to be exhibited to the ap- 
proaching steam vessel from whatever direction she is comings 
and is to be shown on the point or quarter to which she ia 
approaching. It was clearly a fault in the schooner, con- 
tributing to the collision, that she did not exhibit a toreb 
light. {The Eleanora, 17 Blatohf. C. C. R., 88.) The steam- 
boat had a right to rely on the exhibition of a torch light, if 
the schooner was in such a position that the steamboat was ap- 
proaching her, and the absence of the torch light has an im- 
portant effect in determining that the steamboat was not neg- 
ligent and observed due caution. 

The libel is dismissed, with $121 25 costs of the District 
Court, as taxed, and costs to the claimant in this Court. 



DEGEMBBR, 1881. 91 



Mejer v. Goodyear's India Rubber Glove Manafactoring Co. 



Chbistophbs Meyeb and Mabt a. Evans, Adminis- 

T&ATSIX, &0. 
VS. 

Ooodteab's India Eubbeb Olovb Manitfaotubino Cohpant* 

Re-iasned letters patent granted to Gbristopber Meyer and Mary A. Eyana, ad> 
miniatratriz, Ac, Noyember 17th, 1874, for an " improyement in iodia mbber 
flhoes," the original patent haying been granted to Christopher Meyer and 
John Eyans, as inyentora, Febroary 21st, 1871, and re-isaned to them July 
16tb, 1872, do not contain new matter, the part of the invention not em- 
braced in the original specification, and included in the re-isane, haying been 
ahown in the model originally deposited in the Patent Office. 

Tbe re-iBsne has no pateotable novelty, in view of letters patent granted to 
EKaa C.Hyatt and Christopher Meyer, January 17th, 1864: and the same 
qoeatloii waa decided in Meyer v. PrUehard, (12 Blotch/. C, C, R., 101.) 

(Before Shipiian, J., Connecticnt, December 5th, 1881.) 

SuiPMAN, J. This is a bill in equity to restrain the 
alleged infringement of re-issued letters patent, granted to 
the plaintiffs on November 17tb, 1874, for an " improvement 
in india rubber shoes." The original patent was granted to 
Christopher Meyer and John Evans, as inventors, on Febru- 
ary 21st, 1871, and was re-issued to the same persons on July 
16th, 1872. Infringement is not denied. 

The invention was brought into existence by the fact that^ 
in 1869 and 1870, " four-holed " india rubber ladies' shoes, or 
shoes having four slits upon the top of the upper, and made 
to imitate a lady's sandal with interstices in the upper, were 
in great demand, and could not be made rapidly enough at 
the factory of Mr. Meyer. The edges of these slits or holes 
were turned over by hand and were then cemented. The 
idea of the inventors was, instead of cutting the uppers from 
a plain sheet of rubber, and then cementing the ribs upon a 
plain surface, to cut the uppers from a sheet which, having 



92 CONNECTICUT. 



Meyer v. Goodyear's India Rabber Glove Manufactoring Co. 

been formed when in a plastic state, between an engraved 
roller and a plain roller, shonld be thickened np into cords or 
ribs at the desired places on its surface. The claim in the 
patent w^ for " one or more transverse ribs, in rabber shoes 
or sandals, formed by thickening the substance itself in the 
lines or directions thereof while in the sheets, by means of 
rolling dies, as and for the purpose described." Before the 
Invention, the edges of the mouth of the shoe were strength- 
ened and made to present a finished appearance, by bein^ 
turned over by hand and cemented. Sometimes, cords or 
strips of rubber were placed by hand upon the edge, and were 
cemented. As a part of the invention, but not included in 
the original specification, daim, or drawings, the inventors 
ribbed the edge of the mouth of the shoe with a rib formed 
in the manner which has been described. The first re-issue 
was obtained for the purpose of including this rib within the 
patent. The claim was as follows: ^'As a new article of 
manufacture, india rubber shoes, with strengthening or other 
ribs homogeneous with the substance of the body, formed by 
thickening up the said substance in the forming of the sheet, 
substantially as specified." The validity of the first re-issue 
was then tested, in this Circuit, in the case of Meyer v. 
Pritchard^ which was tried before Judge Blatchford, (12 
Blatchf. G. C. li., 101.) The Court held that there was no 
patentable novelty in the invention, in view of the patent 
granted to Elias C. Hyatt and Christopher Meyer, January 
17th, 1854. The first and third claims of this patent were as 
follows: "Ist. Producing a shoe sole, or other analogous 
manufacture, in india rubber, or gutta percha, in one piece, 
having variety of thickness in its different parts, by the use of 
rollers, whose surfaces present the reverse of the forms to be 
produced, at a single operation, substantially as herein de- 
scribed." "3d. We also claim such soleing or analogous 
manufacture in continuous sheets, at one operation, by rolling, 
as described." The present re-issue was thereupon granted, 
in which the claim is limited to the rib around the mouth of 
the shoe and is in these words : " As a new article of mann- 



DECEMBER, 1881. 93 



Meyer v. Goodyear's India Rubber GIoto Manufacturing Co. 

factnre, india rubber shoes having a strengthening rib around 
the top or mouth of the shoe, (whether with or \yithout simi- 
lar ribs or other parts of the shoe,) formed not by turning 
over the edge or lapping one piece upon another, but thick- 
ened up from, and homogeneous with, and forming a part 
or portion of, the body of the upper, substantially as spec- 
ified." 

Divers defences are set up in the answer; the two which 
are relied upon are the invalidity of the re-issue, because it is 
for a different invention from that described in the original 
patent ; and lack of patentable novelty, in view of the Hyatt 
and Meyer patent of 1854. 

It is substantially admitted by the plaintiffs that the in- 
vention of the second re-issue was not suggested or indicated 
in the original patent or drawings, but it is claimed that the 
invention Tvas shown in the model which was originally de- 
posited in the Patent Office, and that this fact was conclu- 
sively found by the Commissioner of Patents when the first 
re-issue was granted. These positions, both of fact and law, 
are strenuously denied by the defendant. There are two 
models in the Patent Office, purporting to be the models be- 
longing to this patent. One merely shows the ornamental 
buckle or rosette represented in drawing No. 3, and does not 
contain the invention of the re-issue. The other does not 
contain the invention in any particular, but is a shoe in which 
the cords upon the vamp and around the mouth were placed 
by hand between the lining and the rubber, in accordance 
with the system described in a rejected application of John 
Evans, one of the patentees. The Evans and the Meyer and 
Evans' applications were filed on the same day. The theory 
of the plaintiffs is, that the two shoes have been misplaced, 
and that the Meyer and Evans' shoe was, by mistake, placed 
with the models of the rejected applications, and was destroyed 
in the fire of 1877. The defendant claims to have proved 
that the models are the same that were originally deposited by 
the applicants. 

Without recapitulating the testimony upon this question, 



94 CONNECTICUT, 



Meyer v. Ooodyear's India Bobber Glove MaDofactnrisg Co. 

my conclnfiions are: 1st. The rib around the month of the 
shoe was not indicated in the original drawings, or in the 
original specification, as a part of the invention, because 
neither the patentees nor their solicitor had at that time 
any idea of including this rib in the patent. In view of the 
file wrapper and contents of the original patent, it is not 
credible that Mr. Meyer, who was, in 1871, a manufacturer 
well acquainted with the questions arising in patent litigation, 
should have directed his solicitor to include the cord around 
the mouth, or that his solicitor, who had been an assistant ex- 
aminer in the Patent Office, should have supposed that he 
was including that part of the invention. The conversations 
of which they speak undoubtedly took place, but at a later 
period ; and the witnesses are mistaken in the matter of dates. 
2d. I find, from the testimony of Olmstead and Orairy, that, 
before the application for a patent, a new engraved roll was 
made, upon which a light cord was engraved around the shoe 
mouth. I further find, that^ by means of this roll, a few shoes 
were made, as an experiment and not for sale. One of these 
shoes must have been taken to the solicitor. 3d. Either this 
shoe, or one made upon this roll, was sent to the Patent 
Office, or no model was sent. The presumption is, that a 
model was sent, and this presumption is strengthened by the 
fact of the first re-issue. Notwithstanding the opinion of 
Mr. Parkinson, I think that this presumption, coupled with 
the positive evidence in its support, has not been overcome. 
If a model was sent, it must have been a shoe with a machine 
made rib around its mouth, because a shoe showing the ma- 
chine made ribs upon the upper must necessarily have had 
the machine made ribs upon the mouth. Inasmuch as the 
part of the invention of the patentees which was not em- 
braced in the original specification, and is now included in 
the re-issue, was shown in the model, the reissue is not invalid 
upon the ground that it contains " new matter." 

The next position of the defendant is, that the patent has 
no patentable novelty, in view of the Hyatt and Meyer 
patent, and that this precise question was decided by Judge 



DECEMBER, 1881. 95 



Meyer v. Goodyear's India Rubber Gloye ManitfieustariBg Co. 

Blatchford in the Pritchard case, and is, therefore, now the 
law of this Circait. The plaintiffs contend that the decision 
was upon a patent claiming india rubber shoes^ with strength- 
ening CT other ribs, homogeneous with the surface of the 
body, <fec., while the claim of this re-issue is limited to india 
rubber shoes having a strengthening rib around the mouth of 
the shoe, and is for a shoe having a rib formed in the old 
way, but in a location where, by reason of its location, a new 
and improved article of manufacture is obtained. It, there- 
fore, becomes important to ascertain the scope of Judge 
Blatdbf ord's decision. He says, after quoting the specification 
of the first re-issue : '^ The invention set forth in this specifi- 
cation, as shown by the description and the .claim, is to 
thicken up the plastic india rubber, in desired places, in the 
sheet, as the sheet is being formed between two rolls, by 
means of grooves and ribs on one of the rolls, the other roll 
being plain, so as to leave the sheet thicker where the india 
rubber has entered the grooves than it is in the other parts of 
it, and thus make a sheet which is a flat plane on one side, 
and has raised ribs or projections on the other side. The ap- 
plication of this idea, developed in the specification, is, to make 
these ribs or projections on that part of the sheet which is to 
be used to form the upper part of the shoe — ^that part which 
covers the top of the foot, and that part which surrounds the 
opening through which the foot enters the shoe. The advan- 
tage set forth is, that the ribs or projections thus made are 
of one substance with the rest of the material, and in homo- 
geneous connection with it, and, therefore, better and more 
cheaply, uniformly and perfectly made than when made by 
pasting on strips by hand to form the ribs or projections. 
The patented invention is really complete when the sheet is 
made by the means described, ready to be made up into a 
shoe, and to be vulcanized. The process of making the sheet 
into the* shoe and vulcanizing the shoe is no different from 
the process used to make a sheet into a shoe and vulcanize the 
shoe when the ribs or projections are formed by pasting strips 
on the sheet by hand.'' The head note, which correctly states 



96 CONNECTICUT, 



Meyer v. Goodyear's India Rubber Glove Manufactaring Co. 

the resnlt to which the Court came, is in the following lan- 
guage : ^^ A sheet made according to the patent to Meyer and 
Evans is made strictly in accordance with the directions of the 
earlier patent, without any addition. The sheet of the earlier 
patent was used to cut therefrom the sole of an india rubber 
shoe, the sheet and the sole having a variety of thickness in 
different parts, and being formed in one piece, at a single op- 
eration, by the use of rollers, one of which had a surface the 
reverse of the form to be produced. The sheet of the later 
patent is used to cut therefrom the upper part of an india 
rubber shoe, such sheet and such upper part having a variety 
of thickness in different parts, and being formed in the man- 
ner above described. The two manufactures are analogous, 
the sole, in the one case, and the upper part, in the other, 
being cut and made from the sheet in the same manner ; and 
the shoe with the upper part so thickened up is not a new 
article of manufacture, in view of the prior shoe with the sole 
so thickened up." It is evident, from the tenor of the opin- 
ion, that the Court did not dwell upon the fact that the claim 
was a general one, for ribs wherever situated, whether for 
ornament or for utility, but examined the alleged invention as 
it was presented in the specification and in the product of 
the factory, i. «., ribs upon the part of the upper which covers 
the top of the foot, and the part which surrounds the mouth 
of the shoe, and possessing peculiar advantages, which made 
the shoe a better and stronger and cheaper article than when 
the ribs were cemented by hand. The Court was of opinion 
that the new shoe was a double use of the old invention, and 
virtually decided the point in this case. The differences be- 
tween the second and the first re-issues are modifications of 
statement which emphasize the advantages of a rib around 
the mouth, bnt do not draw the invention out of the reach of 
the adverse criticism of Judge Blatchford. The claim limits 
the invention to one locality, but, in that locality, and with 
the benefits of the rib to the shoe at that point, patentability 
was denied in the decision of the present Circuit Judge. 
Argument against the propriety of holding that the claim of 



DECEMBER, 1881. 97 



Crandiil v. Wattera. 



the present re-lBsne was not patentable, bj reason of the earlier 
patent, is argument against the propriety of the decision 
which was made in the Pritchard case. 
The bill is dismissed. 

S. D. Lcm and Benjamin F. Thwrston^ for the plaintiffs. 

Frederic H. Betta and George Harding^ for the de- 
fendant. 



GbOBGB L. CBAl!a)AL 

John Wattebs Ain> Sobebt Lobboheb. In Egurrr. 

Re-issaed letters patent, No. 6,794, granted to Charles H. Dayie, Mareh 7Ui, 
1876, for an " improyement in box loops for carriage tops," the original pat- 
ent, Na 96,004, haying been granted to him September 21st, 1869, are yalid. 

The inyention claimed in the re-issue is a box loop made of metal so thin that 
the loop can be sfcraok np from it in a single piece, and then bent into shape, 
with Ingt projecting from the loop towards the surface to which the loop is 
to be affixed, so that the loop can be affixed by passing the logs through the 
material and clenching them down tight on the other side by bending them 
at light angles, no riyets or screws being used. 

All the said characteristics are found in the original patent, and the case was a 
proper one for a re-issna 

The claim of the re-issue does not depart from the inyention shown in the 
originaL 

No article like that of the patent, capable of being taken and used for the pur- 
poses for which the patented article can be used, without adaptation and 
alteration, requiring inyention, existed before. 

Prior inyentions distinguished. 

(Before Blatohpobd, J., Southern District of New York, December 18th, 1881.) 

BiATOHFOBD, J. Thls soit is bronght on re-isBued letters 
patent. No. 6,974, granted to Charles H. Davis, March 7th, 
1876, for an " improvement for box loops for carriage tops," the 
original patent, No. 95,004, having been granted to him Septem- 
ber 2l8t, 1869. The specification of the re-issue is as follows, 
Vol. XX.— 7 



98 SOUTHERN DISTRICT OF NEW YORK, 

Crandal v. Watters. 

reading what is ontside of brackets and what is inside of 
brackets, omitting what is in italics : ''^Figwre lis a perspec- 
tive view of the loop with straps amd huckles complete^ attached 
to apiece of leather or section of a carriage top^ B. Figv/re 
2 is a perspective view of the loop ready for use. Figure 8 is 
a plate or cap used on t/ie back or inside of the top B^ for 
securing the loop A. Figure ^is a cross sectional view of' 
the whole complete. Similar letters of reference indicate cor- 
responding parts. My invention has for its object [an im- 
provement in] to improve the construction of box loops for 
carriage [tops,] trimmings, [&c.] and it [It] consists in form- 
ing the loops [in] from one piece of metal, either cast or 
struck up* [into form from a single piece of plate or sheet 
metal,] with a series of [spurs or] lugs [projecting from the] 
upon its lower edges or comers next the si^face to which they 
are to be affixed^ which [spurs or lugs] Vugs or spurs [pass] 
are passed through openings formed in the carriage top [or 
curtain] and [are clinched down tight upon it, and I intro- 
duce] thorough openings in a metal stiffening plate [on the 
opposite side] placed upon the under surface of the leather. 
[leather, as a stiffening plate, through which the spurs pasa 
before thej are clinched, as a further security in the fasten- 
^gi hy which form and construction I securely affix the box 
loop to the curtain, &c.,] The lugs are then bent down or 
clinched upon the metal plate^ thereby securely fastening the 
box loop in place without the employment of rivets or screws. 
Box loops, as usually constructed, are made of leather, and 
either sewed or riveted in [place.] place^ and [They] are liable 
to be bent out of shape and torn from [their fastenings ;] the 
ri/oets. [and this] This method [mode of construction and 
application] is [slow and] expensive, requiring the labor of 
skilled workmen, while, by my improvement, the box [loop 
can be] is easily applied [by any one] and [is] not liable to 
get out of order. In the accompanying drawings [which 
form a part of this description. Figure 1 is a perspective view 
of the loop, either cast or struck up from thin metal, affixed 
in place with buckles complete. Fig. 2 is a perspective view 



DECEMBER, 1881. 99 



Crandal v. Waiters. 



of the loop detached. Fig. 8 is the stiffening plate C] A is a 
metal loop, either cast or struck up from [thin] sheet metal, 
preferably the latter. Patter, which] When formed of eheet 
metal the Uanke are cut out by suitable dies, [with] leaving 
epurs or lugsy [lugs or spurs formed at] H H upon [the] two 
[sides] opposite edges. [The loop is then] They are bent into 
the form [and stamped or embossed, as in Figs. 1, 2, or other- 
wise, which completes the manufacture of the loop, which is 
then ready to be aflSxed in its place B, Fig. 1. To apply this 
loop to a carriage top, or elsewhere, the spurs or lugs H H H 
are thrust through holes or slits made therefor in the leather, 
and the ends are bent and clinched down upon the other side. 
BucUes may be affixed to their place on B, a^ in Fig. 1, in 
any convenient way, and the loop put over them and affixed 
to B. As an additional security, plates, C, (see Fig. 3,) are 
employed on the opposite side of the curtain, to stiffen and 
support the fastenings or spurs H, which are clinched doMm 
on them after passing through openings therein for the pur- 
pose.] shovm in Fig. 2, to produce the loop. D is a strap or 
gtrapSy each end pasm^g a/round and through the buckle Ey 
and securedy in any proper man/nery to the piece B of the 
carriage top. The piece B is provided with a series of holes 
upon ecush side of the strap D, corresponding in number and 
position to the spurs S upon the loop. The loop is applied 
to the piece B by passing the spurs through these holesy as 
shown in the dra/mngy and through holes X X formed in the 
metal plate Cy laid against the inner surface of the piece B. 
The higs are then bent down or clinched upon the surface of 
this platCy thereby firmly securing the loop in place without 
the aid qfrivetsP Heading in the foregoing what is outside 
of brackets, including what is in italics, and omitting what is 
inside of brackets, we have the specification of the original 
patent. The claim of the re-issue is as follows : '' The box 
loop A, formed out of thin plate metal, as described, with the 
lugs or spurs H projecting therefrom, to affix it to a carriage 
top, either with or without the plate C, substantially as and 
for the purposes specified." The claim of the original patent 



100 SOUTHERN DISTRICT OF NEW YORK, 



CraDdal v. Wattera. 



was this : " The box loop A, when formed as described, with 
the lugs or spurs H upon its edges, and applied to a carriage 
top, by passing said lags throngh the same, and through the 
metal plate C, and then bending them down npon the sarface 
of said plate, substantially as described, for the purpose 
specified." 

It is apparent that the article specified in the claim of the 
re-issue is to be (1) a box loop ; (2) made of metal ; (3) the 
metal so thin that the article can, if desired, be struck up 
from it ; (4) the metal of the loop to be a single piece, bent 
into shape ; (5) the lugs to project from the loop towards the 
surface of the material to which the loop is to be affixed ; 
(6) the loop to be capable of being affixed by passing the lugs 
through the material and clinching them down tight upon 
the other side, the clinching being dope by bending them at 
right angles, and no rivets or screws being employed. These 
characteristics are all found in the specification of the re-issue 
in connection with its claim. They are all found in the 
apecitication of the original patent The drawings of the 
two patents are the same. The model filed with the applica- 
tion for the original patent shows all the foregoing character- 
istics. The claim of the original patent was so framed as to 
fieem to require that the loop should be actually applied to a 
carriage top, in order to infringe. It also required that the 
metal plate C should be used in such application. Makers of 
loops were not makers of carriages, and it was obvious that 
the invention was really of the loop ready to be affixed, and 
that the inventor was entitled to have a claim which would 
reach the maker of the loop. Besides, even if the claim of 
the original would have extended to the maker of the loop, it 
might have been questioned whether it would reach him when 
he made a loop without the plate C ; and it was plain that 
that was only a stifieuing or strengthening plate, an adjunct, 
making the article better, perhaps, but yet not of the essence 
of the invention. The case was, therefore, one for a re-issue. 
It is objected that the specification of the original patent 
says that the series of lugs is on the lower edges of the loop, 



DECEMBER, 1881. 101 



Crandal v. Watters. 



that is, projecting from the lower edges of the long parallel 
sides of the loop and in the same plane with such sides. The 
drawings and model show such a constmction. The re-issne 
says that the Ings project from the edges or comers next the 
Bar&ce to which they are to be affixed. The plaintiff's loop 
has an open bottom, the metal being only on the top and the 
sides. The defendants make one form of loop with a closed 
bottom, anid with Ings punched out of the bottom at three 
aides of the lug, and bent down at the fourth side, ready for 
use, and standing at right angles to the sides of the loop and 
in the same plane with each other. To maintain non-in- 
fringement, and yet enable themselves to appropriate the real 
invention, they contend that the claim of the re-issue is a 
departure from the invention shown in the original, (1) in 
making it necessary only that the lugs should project from 
the loop, without limiting them to being arranged as in the 
drawings, on the lower edges of the sides ; (2) in making it 
necessary only that the lugs should be used to affix the loop, 
without its being necessary to use them by putting them 
through the carriage top ; (8) in making it optional to use the 
plate 0. It is clearly a mere formal alteration, and within 
the invention, to put on the closed bottom and make the lugs 
project from it, instead -of making them project from the 
edges of the sides. The closed bottom or fourth side is a 
useless expenditure of labor and material, so far as the real 
invention and the employment of it are concerned. The 
defendants' lugs project in a manner entirely equivalent ; and, 
if the claim of the re-issue had said, as did the claim of the 
original, that the loop had lugs on its edges, it would have 
been proper to say that, for all practical purposes, the defend- 
ants' lugs were upon the edges, the variation being immaterial. 
The claim of the re-issue is not capable of the construction 
that the lugs are to be used without putting them through 
the carriage top. It was no departure and no new matter to 
make the use of the, plate C optional. To say that the lugs 
of the patent project from the edges or comers next the sur- 
face to which they are to be affixed is just as accurate a 



102 SOUTHERN DISTRICT OF NEW YORK, 

Crandal v. Wattara. 

description of them as to saj that they are upon tiie lower 
edges of the loop. It is from the edges next the surface to 
which the Ings are to be affixed that the lugs project. There 
is no statement in the re-issue that the lugs are not to project 
from the edges, and calling the edges comers does not alter 
their location. It is plain that the forms of loop shown in 
" complainant's exhibit 2 " and in " complainant's exhibit 3 " 
infringe the claim of the re-issue, and that the re-issue is not 
open to the objection that it is not warranted bj the original 
patent. 

The remaining question is that of novelty. Various old 
devices are introduced, wherein sheet metal prongs or lugs 
projecting through a material such as leather or paper, and 
clinched by bending them, held and secured the metal or 
other article to which they were attached on the other side of 
the material. This idea was old, and was embodied and used 
by Davis. But no article like the plaintiff's, capable of being 
taken and used for the purposes for which the plaintifiPs can 
be used, without alteration and adaptation, requiring inven- 
tion, existed before. Almost all inventions, at this day, that 
become the subjects of patents, are the embodiment and 
adaptation of mechanical appliances that are old. In that 
consists the invention. When the thing appears, it is new 
and useful. No one saw it before, no one produced it before, 
it supplies a need, it is at once adopted, all in the trade desire 
to make and use it, yet it is said to have been perfectly 
obvious, and not to have been patentable. Where an article 
exists in a given form and applied to a given use, and is taken 
in substantially the same form and applied to an analogous 
use, so as to make a case of merely double use, there is no 
invention. But it is very rarely that a thing of that kind 
secures a patent. 

A patent to Joseph E. Ball, No. 20,246, granted May 18th, 
1868, for a mode of attaching the traces of harness for horses 
to the draught plates or straps, is adduced. Ball's apparatus 
could never be used as a loop for a carriage top. The metal 
was not so thin that it could be practically struck up from a 



DECEMBER, 1881. 103 



Crandal v. Waiters. 



Bingle piece and be bent into shape. The lugs conld not be 
practieailj clinched by bending them, bnt were secured as 
rivets, by a process entirely inapplicable to the use of a loop 
on a carriage top. 

A patent granted to Sobert Meyer, No. 61,628, January 
20th, 1867, for a buckle fastening, is relied on. That does 
not show lugs clinched by bending, but shows only pins 
secured by riveting. For some purposes, in considering 
questions arising on letters patent, bent lugs and riveted pins 
may be the equivalents of each other, but in considering the 
question of the novelty of the plaintiff's loop, riveted pins 
are not the equivalents of the bent lugs. The Meyer device 
could not be used in place of the Davis device without adap- 
tation requiring invention. 

The defendants also introduce a patent granted to Charles 
H. Littlefield, No. 67,322, July 30th, 1867, for an improve- 
ment in breast-plates for harnesses. It is a piece of metal 
bent into a loop at one end to hold a buckle, and to allow the 
tongue of the buckle to pass through a slot made in such 
bent end, and having wings or projecting pieces turned over 
so as to overlap a harness strap. This could not be used as a 
substitute for the plaintiff's loop without invention. It is 
easy after the desired thing is obtained to see how an old 
thing could have been adapted or altered. 

The Ball, the Meyer, and the Littlefield patents were all 
of them considered by the Patent Office, in granting the orig- 
inal Davis patent, and the Ball patent was again considered by 
it in granting the re-issue, as appears by the record. 

The defendants also adduce English patent No. 1,204, 
dated May 13th, 1859, to William S. Thomson, for "improve- 
ments in the manufacture of hooped skirts." Their expert, 
with the Davis device and the Thomson device before him, 
has cut away parts of the former and claims to have converted 
it into the latter. It may not be difficult for ingenuity, with 
both articles in view, and with the problem given to convert 
the later one into the earlier one, to do so. But, the inventor 
of the earlier one had only that one and did not produce the 



104 SOUTHERN DISTRICT OP NEW YORK, 

Crandal «. Watten. 

later one. There is nothing in the Thomson device to sug- 
gest the Davis box loop. It required adaptation and inven- 
tion to convert it into the box loop. An exact reproduc- 
tion, in a model, of figure 8 of the drawings of the Thomson 
patent shows that there is no identity between it and the 
Davis structure. 

The French patent to Fransson, No. 25,417, granted No- 
vember 15th, 1855, for a clinched fastening for gloves, may 
also be dismissed. It contains several features which are 
availed of in the Davis loop, yet to pass from it to that re- 
quired adaptation beyond that existing in a mere double use. 

It is not necessary to allude to the numerous other old 
patents introduced by the defendants. The foregoing remarks 
apply to all of them, and also to the alleged prior structures 
respecting which oral testimony is given. Attention is 
directed by the defendants to an exhibit of theirs marked 
" Bolt guide and catch,^' alleged to represent a prior struc- 
ture. The exhibit is not claimed to be a structure which was 
actually made before Davis' invention, but only to represent 
one. It is a bolt guide consisting of a metal plate, with two 
three-sided metal loops on it, each loop open at its two ends^ 
which open ends are lengthwise of the plate, this plate bein^ 
intended to be placed on one article, and of another metal 
plate, with one three-sided metal loop on it, open at its two 
ends, which open ends are lengthwise of the plate, this plate 
being intended to be placed on an adjoining article. Each 
loop has on it, projecting downward from the lower edge of 
each vertical side of it, a spur or lug, integral with it, and 
passing through a slit in the metal plate, and bent over and 
clinched down on the opposite side of the plate. The exhibit 
in question is introduced by a witness who states that it is 
^^ a guide for a sliding bolt and a catch into which the bolt 
would slide when the article is put in use," and that he has 
known articles similar to it to have been in public use and on 
sale in the United States for nine and a half years before 
January 15th, 1881. This would carry it back to July 15tb, 
1871. The application for the original Davis patent was filed 



DECEMBER, 1881. 105 



Crandal v. Wattera. 



April 22d, 1868. Moreover, the attention of the witness was 
not directed to the feature of the bending over of the Ings to 
clinch them, as dieftinct from riveting them. It does not ap- 
pear that the metal nsed prior to Davis' invention in making 
any snch bolt guide and catch was so thin that the article 
could be or was struck up from a single piece of metaL 
Another witness states that to his knowledge bolt guides were 
made on the plan of said exhibit, but larger, nearly twenty 
years before January, 1881, the loops being fastened to the 
bottom plate twenty years ago the same as in the exhibit, 
clinched to the back of the plate. On cross-examination, he 
says that they were made of heavier metal, some of them. 
He then testifies : ^^ Cross-Q. 10. Were not the ends of the 
hasp or staple headed down on the plate by a blow of the 
hammer, as in riveting, instead of being bent over or clinched, 
as in defendant's exhibit ' Bolt guide and catch t ' A. As 
a general thing, they were made in that way, riveted with a 
hammer to form a clinch ; they were not riveted to f oiin a 
head like a boiler rivet, but were bent over like the exhibit." 
Again, he says that they were, mostly made for heavier pur- 
poses than the exhibit. The defendants' expert says that the 
exhibit could be attached to a carriage curtain. The plaintiff, 
in his testimony as a witness, gives evidence throwing doubt 
on the view that the lugs in any bolt guide were not headed 
down by riveting. On the whole evidence it must be held 
that the prior existence of the bolt guide made of metal 
so thin that the article could be struck up from a single 
piece of it, and with lugs clinched by bending and not rivet- • 
ing, is not satisfactorily shown. Besides all this, it is plain 
that the bolt guide never did and never would suggest Davis' 
box loop. 

There must be a decree for the plaintiff for an account of 
profits and damages and a perpetual injunction, with costs. 

JVeri Pine and Charles M. Stone^ for the plaintiff. 



A. V. JSrissenj for the defendants. 



106 NORTHERN DISTRICT OF NEW YORK, 

Loercher v. CrandaL 



BOBEBT LOESOHBB AND JoHN WaTTEBS 

VS. 

Geobge L. Obandal. In Equity. 

Re-issaed letters patent, No. 7»1 29, granted to Charles Schaeasler, May S8d, 1876, 
for an " improvement in buckle fastenings," the original patent, No. 61,626, 
haying been granted to Robert Meyer, as inventor, January 29th, 1867, are 
yalid, and are infringed by a buckle fastening made in accordance with the 
description contained in letters patent No. 206,298, granted to George L 
Crandal, July 28d, 1878. 

The patented device and the infringing device explained. 

An agreement by a person not to infringe a patent in the future, in considera- 
tion of a release for past infringement, does not authorize a recovery there- 
after for such past infringement, in case of future infringement. 

(Before Blatobfobd, J., Northern District of New York, December 18th, 1881.) 

Blatohfobd, J. This siiit is brought on re-issaed letters 
patent, No. 7,129, granted to Charles Schnessler, May 23d, 
1876, for an *^ improvement in buckle fastenings," the orig- 
inal patent, JSTo. 61,628, having been granted to Robert Meyer, 
as inventor, January 29th, 1867, for seventeen years from 
January 19th, 1867. The specifications of the re-issue and 
of the original are so variant from each other in language, 
that it is impossible to follow the one in the other. They are 
as follows : 

Sb-issue. Obioinal. 

" Figure 1 is a plan view of " The nature of my in- 

my improved fastening, show- vention consists in the em- 

ing it applied to the back cur- j)loyment of two metallic 

tain and back stay of a car- cases, one of which acts as a 

riage. Fig. 2 is a longitudi- covering for the end of the 

nal central section thereof, strap which passes into the 

Fig. 3 is an inverted plan buckle, and is provided with 

view of the shell or case to pins, which pass through the 



DECEMBER, 1881. 



107 



Loercher v, Crandal. 



which the strap is secured. 
Fig. 4 an inverted plan view 
of the shell or case to which 
the bncUe is secared. Simi- 
lar letters of reference indi- 
cate corresponding parts in 
all the figures. This inven- 
tion consists in the employ- 
ment, in connection with a 
strap and buckle, of two hol- 
low cases or shells, to which 
said strap and buckle are re- 
spectivdy secured. That one 
of the two cases to which the 
bndde is secured has a bot- 
tom plate, to which the buc- 
kle IB attached by a joint. In 
the drawing, the letters A 
and B represent two pieces of 
fabric, or pieces of the back 
stay and back curtain of a 
carriage, to which my inven- 
tion is applied. C is the strap, 
and D the buckle, by which 
strap and buckle the pieces 
A and B are to be held to- 
gether. E is a case or shell, 
made of sheet metal or other 
suitable material, in form of 
an elongated inverted cup, 
open at one end and at the 
bottom. This case or shell 
is provided with downwardly 
projecting pins, a, &, which, 
when they are passed through 
the fabric or piece A, serve 
to &8ten the case or shell in 



leather or straps to which 
it is fastened, and through 
two perforated plates, to one 
of which the buckle is at- 
tached by a joint, the other 
being used as a plate to hold 
the several parts together, 
when the ends of the pins are 
riveted to it; the other case 
being provided with pins, 
which pass through the leath- 
er and strap to which it is 
fastened, and through one 
metallic plate, upon which 
the ends of the pins are riv- 
eted. * * * I construct 
my buckle fastening of the 
usual description, such as iron, 
copper or brass; but sheet- 
iron or tin-plate, I think, 
would be the cheapest and 
best. In said drawings, figure 
1 represents a plan view of 
the fastening, with the strap 
and buckle in place. It is 
represented in the position it 
would occupy if attached to 
the back curtain and back 
stay of a carriage. Fig. 2 is 
a back view of the case that 
connects the strap and holds 
it in place. Fig. 8 represents 
a back view of the case to 
which the buckle is attached. 
Fig. 4 is a vertical section 
through the centre of fig. 1. 
The same letters in the sev- 



108 



NORTHERN DISTRICT OF NEW YORK, 



Loercher v. Crandal. 



place on said fabric. One 
end of the strap is inserted 
in the shell E, and secured 
thereto by means of the pins 
a, if in the manner clearly 
shown in the drawing. F is 
another case or shell, also 
made of sheet metal or other 
goitable material, but provid- 
ed at the bottom with a plate, 
dy which forms part of said 
case or shell F. At the open 
end of the case or shell F, 
the bnckle D is attached by a 
joint to the plate D, as shown. 
By means of downwardly pro- 
jecting pins, e^ e^ with which 
the case or shell F is provid- 
ed, the same is fastened to 
the fabric or piece B, in line 
with the case or shell E, as 
shown, so that the strap 
can be readily buckled, and 
its loose end then confined in 
the case F, as clearly shown 
in fig. 2. If desired, the out- 
er end of the case F may 
also be left open, so that the 
strap may be passed through, 
when buckled. The cases or 
shells E and F may be made 
of suitable sizes, and stamped 
in dies of any ornamental 
shape or form desired, and can 
be used on all kinds of straps 
and buckles. In place of the 
pins hereinabove specified. 



erai drawings represent simi- 
lar parts in each. A and B 
represent either two straps or 
a piece of the back stay and 
back curtain of a carriage. O 
is the case which fastens and 
holds the straps E firmly to the 
piece A by means of the pins 
F, G, and plate M, as shown 
in the section fig. 4. D rep- 
resents the case to which the 
buckle is attached, and into 
which the end of the strap £ 
is slipped after being buck- 
led. E is the buckle. H, H^ 
I and J, in fig. 8, are the pins, 
which fasten it to the piece 
B by means of plate N, as 
shown in section in fig. 4, to 
which the ends of said pins 
are riveted when it is desired 
to fasten them in place. R is 
a plate to which the buckle is 
jointed. The case is also 
riveted in the same way to 
the plate M, which holds them 
more firmly in place than by 
the old and tedious way of sew- 
ing ; and, at the isame time, it 
is a plain and more pleasing 
ornament to the carriage. If 
desired, the end of the case D 
may be left open, so that the 
strap may be passed tlirough, 
when buckled. They may be 
made of various sizes, from 
the half inch size up to two 



DECEMBER, 1881. 



109 



Loercher v. CrandaL 



equivalent fastening means 
may be provided. I claim as 
my invention — 



inches, and stamped in dies 
of any ornamental shape or 
form desired. They may also 
be osed on straps of any kind 
as well as for harness or car- 
riage trimmings. I do not 
claim the case D alone, but 
what I do claim is— 

1. The combination there- 
with of the pins H, H, I, J, 
or the equivalent thereof, and 
the plates B and N, as herein 
snbstantiaUy described. 



2. The case C, the pins F, 
6, and plate M, for fastening 
the end of the strap in place, 
as described." 



1. The case or shell E, 
made with an open bottom, 
and provided with the pins 
a, h, adapted to pass throngh 
the strap and firmly hold it 
in place, sabstantially as and 
for the purpose herein shown 
and described. 

3. The case or shell F, 
made with the bottom plate 
d^ and combined with the 
buckle D, which is attached 
to said plate, substantially as 
specified. 

3. The case or shell F, 
made with the bottom plate dj 
and with the projecting pins 
e^ Bj substantially as herein 
shown and described. 

4. The combination of the 
case E and strap with the 
case F and buckle D, sub- 
stantially as herein shown and 
described." 

The plaintiffs claim that the defendant has infringed 
claims 2, 3, and 4 of the re-issue. Prior to June 17th, 1878, 
the defendant made and sold articles like exhibit No. 1. 
Since that date, he has not made or sold any of them. By 
and under the agreement of that date he settled and paid for 



110 NORTHERN DISTRICT OF NEW YORK, 

Loercher v. Gnmdal. 

all those articles. Although, by that agreement, he agreed 
not to make any buckle loops infringing upon said re-issne, 
and althoogh that engagement, in conjunction with his con- 
tract to pay royalty for the articles before made, formed the 
consideration for his release from liability for the making and 
selling of those articles, yet the release was an absolute re- 
lease in prcBsenti^ and, even though he may subsequentlj 
have infringed, the release must stand till formally set aside^ 
and operates to exclude from this suit all further account- 
ability for articles like Exhibit No. 1, such release being set 
up in the answer. 

The defendant admits the making and selling, after Au- 
gust let, 1878, of articles like Exhibit No. 2. The sale of 
articles like Exhibit No. 4 is also proved. Neither No. 2 nor 
No. 4 are covered by the release. The sale of Articles like 
Exhibit No. 8 since the release is not proved. No. 2 and No. 
4 being the only structures involved, the only claims of the 
re-issue which need be considered are claims 2 and 3. 

Claim 2 requires that there shall be a case or shell like 
the case or shell F ; that it shall have a bottom plate like the 
bottom plate d; that such case or shell, having such bottom 
plate, shall be combined with a buckle like the buckle D ; 
and that such buckle shall be attached to such plate. The 
projecting pins for attaching the case or shell to a fabric do 
not appear to be an element in claim 2. The specification 
describes the case or shell F as hollow, as made of sheet metal 
or other suitable material, and as provided at the bottom with 
a plate, d, which forms a part of the case or shell. One end 
of the case or shell is open and the buckle D is attached to 
the bottom plate at that end by a joint so as to project out- 
wardly. The other end of the case or shell is either open or 
closed. The case or shell is provided with downwardly pro- 
jecting pins, which start from the bottom plate Mid pass 
through the fabric to which tlie shell or case is to be attached 
and serve to attach the shell or case to the fabric. Equivalent 
fastening means may be used in place of the downwardly 



DECEMBER, 1881. Ill 



Loercfaer «. Crandal. 



projecting pins. Claim 3 combines the case or shell F, the 
bottom plate and the pins, omitting the buckle. 

No. 2 has a hollow case or shell, like F, made of sheet 
metal, and provided at the bottom with a plate, which forms 
a part of the case or shell. One end of the case is open and 
the other is dosed. There is a buckle at the open end, bnt it 
is not attached to the bottom plate by a joint. It is attached 
by a joint to a short piece of flat sheet metal, so as to project 
outwardly. This short piece, carrying the buckle, is of two 
thicknesses, the metal being bent to form the joint for the 
buckle, and is beneath and close up against the lower surface 
of the bottom plate. In order to secure it to the bottom 
plate, there is a third flat piece of metal, lying longitudinally 
underneath, which has at its extreme end farthest from the 
buckle an integral upwardly projecting pin or fln which enters 
a hole in the bottom plate, and is intended to be bent over 
and down and clinched inside the shell against the upper su> 
face of the bottom plate. The other end of such third longi- 
tudinal piece has at its extreme end nearest the buckle two 
intend upwardly pvojecting pins or fins, lying in line side by 
Bide one each side of the centre of its width and extending 
each from near such centre to the outer edge, each of which 
enters and passes through a separate liole for it through each 
of the two thicknesses of the short piece which carries the 
buckle, (the two holes for each pin or fin being coincident,) 
and then enters a separate hole for it in the bottom plate, 
and is intended to be bent over and down and clinched inside 
the shell against the upper surface of the bottom plate. Thus, 
when the pins or fins are in place and clinched the buckle is 
held firmly and the structure becomes a unit. 

No. 4 has a hollow jase or shell, made of sheet metal and 
provided at the bottom with a plate, which forms a part of the 
case or shell. Both ends of the case are open. There is a 
backle at each end, not attached to the bottom plate by a 
joint A buckle is attached by a joint to each end of a 
separate longitudinal plate, which is longer than the bottom 
plate. Each buckle projects outwardly. Such separate plate 



112 NORTHERN DISTRICT OF NEW YORK, 

Loercher v, CrandaL 

is for a distance at each end of it of two thicknesses, the metal 
being bent to form the joint for the bnckle, and is beneath 
and close up against the lower surface of the bottom plate. 
In order to secure it to the bottom plate, there is a third flat 
piece of metal, lying longitudinally underneath, and some- 
what shorter in length than either such separate plate or the 
bottom plate, which has at each extreme end of it two integ- 
ral upwardly projecting pins or fins, lying in line side by side 
one on each side of the centre of its width, and extending 
each to the outer edge, each of which enters and passes 
through a separate hole for it through each of the two thick- 
nesses of such separate plate which carries the two buckles, 
(the two holes for each pin or fin being coincident,) and then 
enters a separate hole for it in the bottom plate and is in- 
tended to be bent over and down and clinched inside the shell 
against the upper surface of the bottom plate, there thus 
being four of such pins or fins. So, when the pins or fins are 
in place and clinched the buckles are held firmly and the 
structure becomes a unit. 

It is manifest that there is inyolved ixi claims 2 and 8 of 
the re-issued patent, the idea of a hollow case, with a top, two 
longitudinal side plates and a bottom plate, all forming a 
unit and a case, the case having such bottom plate being, in 
claim 2, combined with a buckle attached to the bottom 
plate, and having, in claim 8, the downwardly projecting 
pins. The buckle is secured to the case, and it is so secured 
by being attached to the bottom plate. The strength of the 
structure, as a whole, composed of top, sides and bottom 
plate united in one, is availed of to hold firmly the buckle, 
through the attachment of the buckle to the bottom plate. 
The combination, in claim 2, of the \»se of which the bot- 
tom plate forms a part with the buckle, is effected by attach- 
ing or jointing the buckle directly to the end of the bottom 
plate. A pull on the buckle cannot result in displacing any- 
thing, if the buckle does not break, without displacing the 
structure as a whole. In claim 8, the case of which the bot- 
tom plate, forms a part has the downwardly projecting pins, 



DECEMBER, 1681. 118 



Loercher v. Crandal. 



and, when, by means of them, the stmctnre is fastened to a 
fabric, no pnll on the pins against the structure can displace 
any part of it without displacing the whole of it. In both 
claims, the fact that the bottom plate forms an integral part 
of the case is a leading feature. 

In the light of the foregoing suggestions, an examination 
of No. 3 and Ko. 4 shows a hollow case, with a top, two 
longitudinal side plates and a bottom plate, all forming a unit 
and a case. The case having such bottom plate is combined 
with a buckle. The buckle has, for all practical purposes, 
the same relation to the bottom plate as if it were attached 
to it. The combination of the case with the buckle is ef* 
f ected by means of the plate carrying the buckle end of the 
lower flat piece of metal, and the pins or iins on the latter. 
The plate which carries the buckle, being an additional sep- 
arate plate, must be fastened in some way to the bottom plate 
of the case. The severance makes the reunion necessary, 
and promotes no useful result. It is a mere mechanical 
change, within the scope of the principle of the Meyer struc- 
ture. When the parts are put together, and the pins or fins 
are clinched, the case or shell made with the bottom plate is 
combined with the buckle, and' the buckle is as much attached 
to the plate, for all the practical purposes of the structure, as 
is the bnckle in the Meyer structure. The strength of the 
case, as a whole, composed of top, sides and bottom plate 
nnited in one, is availed of to hold flrmly the buckle, through 
sacb combination of the case with the buckle. A pnll on 
the bnckle cannot resist in displacing anything, if the bnckle 
does not break, without displacing the structure as a whole. 
When the pins or fins are clinched, the case of which the bot- 
tom plate forms a part is provided with downwardly pro- 
jecting pins, which start from the bottom plate, and, after 
passing through the bnckle plate, pass through the fabric to 
which the shell or case is to be attached, and serve to attach 
the shell or case to the fabric. The fact that the pins are in- 
tegral with a longitudinal piece of metal on the other side of 
the fabric, makes no difference. They are the projecting 
Vol. XX.— 8 



114 NORTHERN DISTRICT OF NEW YORK, 

Loercher «. CrandaL 

pins of Meyer, in that, when clinched, they project from the 
bottom plate towards and through the fabric, and fasten the 
combined case and buckle to the fabric. When the structure 
is fastened to a fabric no pull on the pins against the struc- 
ture can displace any part of it without displacing the whole 
of it. The same results follow as in the Meyer structure, 
from the fact that the bottom plate forms an integral part of 
the case. 

The defendant has a patent, granted to him July 23d, 
1878, No. 206,298, under which he claims the right to make 
No. 2 and No. 4. They are described in that patent. That 
patent claims (1) the third flat piece of metal, with its integ- 
ral pins or fins, in combination with the separate buckle plate 
having holes in it corresponding with the pins or fins, for the 
purposes of securing the buckle in proper relation to the case ; 
(2) the combination with the third flat piece of metal, having 
its integral pins or fins, of the separate buckle plate and the 
case with its bottom plate, both of the latter having holes in 
them coincident with said pins or fins, when secured to a cur- 
tain by means of such interior clinching of the pins or fins. 
It may be that these claims may be sustainable for their spec- 
ialties, notwithstanding prior structures. But still No. 2 
and No. 4 embrace points of construction which are the 
equivalents of the points of constraction claimed in claims 
2 and 3 of re-issue No. 7,129. Beyond that, what is 
patented by No. 206,298, is only an improvement, still 
involving the principle of what is claimed in said claims 2 
and 3. On the question of infringement, features of con- 
struction may well be and are often equivalents of prior 
patented features, because involving their construction and 
mode of operation, though going further and containing their 
own patentable features, and for that very reason, when the 
question of the novelty and patentability of such further fea- 
tures comes up, the prior existence of such prior patented 
features does not make them the equivalents of the further 
features so subseqaently patented, in such sense as to antici- 
pate the latter. An iUustration of this is found in the case 



DECEMBER, 1881. 115 



Loercher v. CraodaL 



of Crandal v. Watters, {omte^ p. 97,) a suit brought on the 
Davis patent, decided herewith. 

The validity of the re-issned patent is attacked. The 
drawings of the original and the re-issae are structnrallj the 
eame, although the lettering is changed and figures 2, 3 and 4t 
are differently numbered in the two. Criticism is made on 
the facts that the original speaks of ^' metallic " cases, and the 
re-issue of '^ hollow " cases ; that the original speaks only of 
metallic materials while the re-issue speaks of ^^ sheet metal 
or other snitable material ; '' that, in the original, the pins are 
said to be riveted to the lower plate K, after they have passed 
through the curtain and through the plate N, so as to fasten 
the buckle plate E to the curtain, and claim one of the orig- 
inal is for the combination of the case and the pins, or their 
equivalent, and the plates E and N, while in the re-issue the 
plate N is not lettered in the drawings and is not mentioned 
in the text or in the claims, and the statement in the re-issue 
ia, that the case is provided with downwardly projecting pins, 
which, when they are passed through the fabric, serve to 
fasten the case in place on the fabric. Assuming that Meyer 
was the first to make a case with a bottom plate forming part 
of it, combined with a buckle attached and jointed to said 
plate, and furnished with pins capable of attadiing the struc- 
ture as a whole to a curtain, it is immaterial whether the 
plate N is used or not, or whether the pins are clinched on 
that plate or on the curtain, or whether the pins are of such 
large dimensions that they have to be clinched by hammering 
their ends, or of such small dimensions that they can be 
clinched by bending them over even with the fingers, so long 
as the pins project downward from the bottom plate of the 
case and go through the fabric and are clinched on the other 
side of it. This re-issue No. 7,129, was before Judge Wal- 
lace, in this Court, in the case of Schuessler v. D(wiSy (13 Off'. 
Oaz,y 1,011.) He there says : '^ The description, as well as 
the drawings and model accompanying the original patent, 
clearly point out the invention claimed in the re-issue. The 
improvement consists in a compact device embodying a loop, 



116 NORTHERN DISTRICT OF NEW YORK, 

Loercher •. Crandal. 

bottom plate and buckle, to be attached to a strap by rivets 
or an equivalent fastening. In my view, the valuable feature 
of the improvement does not consist in the method by which 
the case is fastened to the strap, but in the case itself, as 
forming a loop and buckle combined, and its adaptability to 
being fastened by various methods to the strap. In the orig- 
inal patent, the claim did not cover the combination of the 
buckle vdth the case, or, speaking more accurately, with the 
bottom plate of the shell of the case, but was limited to a 
combination of the pins or rivets with the case. It was the 
object and the proper o£Sce of the re-issue to correct this 
omission, so as to protect the patentee to the full extent of 
his invention." Hie defendant's structure in that case was 
not the same as the defendant's structure in this case, but 
consisted of a metallic case with fins or lugs integral with it, 
and projecting down from it, and of a plate underneath, 
with a buckle jointed to each end of it and projecting beyond 
the end of the case, the fins passing through slits in the plate 
and then through the curtain, and being clinched by bending 
them over on the other face of the curtain. Such a structare 
was held to infringe claim two of the re-issue. I do not 
think the re-issue is open to objection so far as any question 
affecting the defendant's structures No. 2 and No. 4 is con- 
cerned. 

On the question of novelty, several prior patents are set 
up in the answer. Only one of them is introduced, No. 
49,809, to Cyrus W. Saladee, August 8th, 1865. In that 
there are two modifications. In one the buckle is not con- 
nected to the plate. In the other the connection between 
the buckle and the plate is rigid and without a joint. In the 
Meyer structure the buckle is attached to the plate by a 
joint. 

Five other prior patents were introduced by the defend- 
ant. None of them are set up in the answer. They are as 
follows: No. 26,013, to Lucius 0. Chase, November 8th, 
1859; No. 89,217, to Frank Douglas, July 14th, 1868; No. 
44,564, to George Purple, October 4th, 1864 ; No. 47,574, to 



DECEMBER, 1881. 117 



Loereher v. Crandal. 



Cyros W. Saladee, May 2d, 1865 ; and No. 47,765, to Eben- 
ezer Brown, May 16th, 1865. In Chase, the bnckle frame is 
rigidly secured, and not jointed. In Douglas, the buckle 
frame is not connected with the loop by the bottom plate. 
In Purple, the buckle frame, carrying the tongue, is not 
jointed, but the tongue has a rigid fastening. In Saladee of 
May, 1865, the Meyer structure is not found, nor is it found 
in Brown. Besides the features above mentioned as to 
Chase, Douglas and Purple, the structures in them would not 
suggest the structure of Meyer. 

As to the parol testimony, in regard to prior structures, 
by Moore, and Davis, and the defendant, it must be held that, 
in view of the construction given to claims 2 and 8 of re- 
issue No. 7,129, and of what the invention of Meyer has 
been defined to be, nothing is shown making out a satisfac- 
tory anticipation of said claims. 

I think the suit is properly maintainable in the names of 
the plaintiffs, as surviving members of the firm composed of 
themselves and Schuessler, and that a decree should be en- 
tered for the plaintiffs as to claims 2 and 3, for an account 
and a perpetual injunction, with costs. 

A. V. Briesenj for the plaintiffs. 

Neri Pine and C* M. StonCy for the defendant. 



118 NORTHERN DISTRICT OP NEW YORK, 

Watters v. Onuddal. 



John Wattebb and Bobest Loeeohes, Suryivobs of thebc- 

BELYES AND ChABLES SoHUEBBLEB, AS COPABTNBBS UNDER 
THE NAME OF ThE MeTAL 8TAMPINa COMFANY 

Geobge L. Ceandal. In Equity. 

Re-iasned letters patent, No. 8,829, granted to Robert Loercber, July 29th, 
1879, for an "improvement in harneas baddes," the original patent, No. 
47,574, ha?ing been granted to Cyrus W. Saladee, as inventor, May 2d, 1866, 
are not infnoged by a buckle constructed in accordance with the description 
contained in letters patent No. 296,298, granted to George L. Crandal, July 
23d, 1878. 

Claim 4 of the said re-issue must be so limited, in view of the patent granted 
to Frank Douglas, July 14th, 1868, that the defendant's buckle does not fall 
within it. 

(Before Blatobford, J., Northern District of New York, December 18th, 1881.) 

Blatohford, J. This Buit ib brought on re-lBsned letters 
patent No. 8,829, granted to Eobert Loercher, July 29th, 
1879, for an ^' improvement in hamesB buckles," the original 
patent, No. 47,574, having been granted to Cyrns W. Saladee, 
as inventor. May 2d, 1 865. The Bpecification of the re-isane, 
including what Ib inside of brackets and what is ontside of 
brackets, omitting what is in italics, is as follows : ^^ Figaro 
1 is a plan [view, and] view. Figure 2 i« a section, [of my 
improved buckle for harness, &c.] the red lines showing the 
strap to which the hucMe is secured. I call my improved 
httckle a ' snapitLcJcUj for it is'self-actvng^ and lacks the or- 
dinary ^ long-ton ffue,^ My invention is more pa/rticularly 
applicable to the plate and rivet bucJd-e described in tny op- 
plicaMon ' J.,' and consists in pivoting the buckle [to the 
projecting end of a metallic plate carrying a loop, in combi- 
nation with fastening pins ; also, in a peculiar construction of 
buckle, as hereinafter more f ally described.] in a groove in 



DECEMBER, 1881. 119 



Watten •. Cnndal. 



the tonguej iprpart that resembles the common tongue^ so that 
a spring shall make the front end of the tongue snap under 
the front ha/r of the huoJde^ which is provided with a short 
stud which passes through the strap to be held, and takes in a 
corresponding hole in the tongue. In the drawings, A is the 
metallic buckle plate, provided with rivets, a. by which it is 
eecared to the upper surface of the strap. B is the metallic 
loop for confining the loose end of the [other strap,] strap. 
[which loop is rigid on the plate A.] The plate A, rivets a 
and loop B are similar to the plate^ rivets and loop described 
in my application ^ A! E is the tongue and is the [The] 
front end or continuation of [the] plate A. [A] It is pro- 
vided with a grooved recess e in its under side ahout one inch 
from the end^ and in which the back bar of the buckle is 
pivoted. G is the buckle, its back bar, (?, being provided 
with a short lever, a?, and turning in the groove, e. The 
under side of the front bar of the buckle is provided with a 
short stud, % which takes into a corresponding indentation, «;, 
in the upper side of the [plate A.] tongue E. I is a flat steel 
spring, the front end of which is secured by a rivet to the 
front end of [plate A,] tongue E^ the rear end of said spring 
pressing [against the] down up lever x of the back bar of the 
buckle, so as to keep it in the groove ^, and at the same time 
force the front ends of the [plate A, which is] tongae 
[shaped,] and [the] buckle together, so as to make the stud i 
take into the hole v. If preferred, the stud i may be put 
upon the tongue [or plate A] instead of upon the buckle, and 
may take into a corresponding hole in the front bar of the 
buckle. In using my improved [buckle,] ' snapiucJde^ the 
strap to be held is placed between the front bar of the buckle 
and the tongue, and drawn as tightly as desired, the spring 
forcing the front bar down upon the strap, so that the stud 
shall take into each hole of the strap as it arrives. The front 
tide of stud % should be rounded off somewhat, so as to allow 
the strap to slip over it when being tightened. There is a 
peculiar advantage possessed by this buckle. It is not neces- 
sary to slacken the strap in order to unbuckle it, as is the case 



120 NORTHERN DISTRICT OP NEW YORK, 

Watten v. Crandal. 

with other buckles. I have only to lift up the front bar of 
the buckle about an eighth of an inch, in order to lift the 
stud i out of the hole in the strap, which thus frees the strap. 
The importance of this advantage is self evident." Beading* 
in the foregoing what is outside of brackets, including what 
is in italics, and omitting what is inside of brackets, gives the 
specification of the original patent. The claims of the re- 
issue are as follows : ^^ 1. The buckle O, in combination with 
the plate A, having the tongue-extension, all substantially aa 
shown and described. 2. The buckle frame pivoted to the 
tongue-extension portion of plate A, all substantially as set 
forth. 8. The buckle frame G, provided with stud », in com- 
bination with the buckle tongue A, having an indentation for 
the reception of said stud, substantially as specified. 4. The 
plate A, provided with the loop and with fastening pins, in 
combination with the buckle frame, which is pivoted to said 
plate, substantially as set forth." The claims of the original 
patent were these : ^^ 1. Constructing a buckle so as to be 
unbuckled without slackening the strap, in the manner de- 
scribed. 2. The buckle G, in combination with the tongue 
E. 8. Pivoting the buckle to the tongue in the manner de- 
scribed. 4. Forming the tongue £, as a continuation of plate 
A, in the manner described. 5. The stud ^, or its equivalent, 
operating as described, in combination with the indentation 

Only claim 4 of the reissue is alleged to have been in- 
fringed. The infringing structures are complainants' Exhibit 
No. 8 and defendant's Exhibit No. 4. The former is con- 
structed in accordance with the description contained in let- 
ters patent No. 206,298, granted to the defendant, July 28d, 
1878. It has a hollow case or shell, made of sheet metal, and 
provided at the bottom with a plate, which forms a part of 
the case or shell. Both ends of the case are open. There is 
a buckle at each end attached by a joint to a short piece of 
flat sheet metal, so as to project outwardly. Each of these 
two short pieces is of two thicknesses, the metal being bent 
to form the joint for the buckle, and is beneath and close up 



DECEMBER, 1881. 121 



Watters v. CnndaL 



against the lower surface of the bottom plate. In order to 
Becnre each short piece to the bottom plate there is a fourth 
flat piece of metal, lying longitadinallj underneath, and 
somewhat shorter in length than the bottom plate, which has 
at each extreme length of it two integral upwardly project- 
ing pins or fins lying in line, side by side, one on each side of 
the centre of its width, and extending each to the outer 
edge, each of which enters and passes through a separate hole 
for it through each of the two thicknesses of the short piece 
which carries the buckle (the two holes for each pin or fin 
being coincident,) and then enters a separate hole for it in the 
bottom plate, and is intended to be bent over and down, and 
dinched inside the shell against the upper surface of the bot* 
torn plate, there thus being four of such pins or fins, two for 
each short buckle piece. There is in the bottom plate, for 
each pin or fin, another hole, so placed that when the pin or 
fin is bent over, its end may go through such hole and so 
leave a smoother clinch inside the shell. When the pins or 
fins are in place and clinched, the buckles are held firmly and 
the stmctnre becomes a unit. Defendant's Exhibit No. 4 
differs from complainants' Exhibit No. 8 only in two re- 
spects. There is in it, instead of the two buckle plates, a 
continuous plate of a single thickness, carrying a buckle at each 
end of it, the metal at each end being bent into tip^o thick- 
nesses, and there are no extra holes in the bottom plate to re- 
ceive the ends of the pins or fins after they are clinched. In 
all other respects the two structures are alike. 

The structure of the Saladee device is such that the piv- 
oting of the buckle in the groove is effected by pivoting in 
ths groove the back bar of the buckle, the back bar having on 
it a short lever, and the rear end of the spring pressing 
against the lever so as to keep the back bar snugly in the 
groove, and prevents its escaping therefrom while it turns in 
it. This method of pivoting the buckle to the tongue is 
made a peculiar feature in the original patent, and is specially 
covered by the 3d claim of that patent. But for the action 
of the spring on the lever of the back bar of the buckle, 



122 NORTHERN DISTRICT OF NEW YORK, 

Wattera «. CrandaL 

there would be no pivoting of the back bar in the groove 
and no pivoting of the buckle to the tongue. Take away the 
spring and the whole structure would be inoperative, for, not 
only would such pivoting disappear, but the stud would not 
take into its hole. Nothing different results from the lan- 
guage of the re-issue. The structure is not and cannot be 
altered. The meaning of the language of claim 4 of the re- 
issue, in saying that the combination is ^^ with the buckle 
frame, which is pivoted to said plate, substantially as set 
forth," is, that the buckle frame is pivoted to the plate by 
means of the spring, or what is, in law and in fact, a mechan- 
ical equivalent for the spring. In view of the patent granted 
to Frank Douglas, July 14th, 1863, the pivoting of the buckle 
in the defendant's structures cannot be regarded as being ef- 
fected by the same means or equivalent means as in the Sal- 
adee structure. In Douglas, there are a plate, a loop on the 
plate, fastening pins on the plate, and a buckle frame which 
is pivoted to the plate. In combination, all the features are 
found in Douglas which are found in Saladee. Kot that the 
Douglas structure anticipates claim 4 of the Saladee re-issue, 
properly construed. But it limits its construction, so that the 
defendant's structures do not fall within it. The pivoting in 
the Douglas structure is effected by having the leather strap 
confine the bar in the groove. It is true that it requires the 
metal and the leather combined together to make the pivot- 
ing in Douglas, and that, in the Saladee structure and the de- 
fendant's structures, there is pivoting by the metal alone with- 
out the leather, but this is of no importance in principle. No 
one of the three structures is of any use except as applied to 
articles of leather. Moreover, the Saladee structure is a 
buckle for harness solely, and it cannot be converted into the 
defendant's structures without destroying its peculiar ar- 
rangement of pivoting. 

The bill must be dismissed, with costs. 

A. V. Brieaen^ for the plaintiffs. 

O. W. Hey and C. H, DueUy for the defendant. 



DECEMBER, 1881. 123 



Holmes v. The PlaiDTille MaDnfactnring Company. 



Geobgb H. Holmes and Fbaite L. Httnobbfobd 

vs. 

m 

The Plaintille Manufactusikg Company. In Equitt. 

The Same 
vs. 

The Dunham Hosiebt Company. In Equity. 

BeJanod letters patent granted to Gkorge H. Holmes, Jnne 26th, 1878, for an 
improrement in take-nps for looms, the original patent haying heen granted 
August 10th, 1869, are not infringed by the nse in knitting machines of the 
take-np rollers described in letters patent granted to Ira Tompkins and Al- 
bert Tompkins, May 16th, 1876. 

The original patent did not indicate or suggest that the inyention could be 
arranged so as to be an adjunct to a knitting machine. The inyentors of the 
Tompkins device altered the Holmes device and adapted it to a knitting ma- 
chine. Then the Holmes patent was re-issued so as to cover machines for 
knitting as well as machines for weaving. Therefore, the re-issue is bad, 
unless the loom of the re-issoe is construed to be the loom of the original 
patent. 

(Beibrs SmncAV, J., Connecticut, December 16th, 1881.) 

Shipman, J. These two cases are each founded upon re- 
issued letters patent to Oeorge H. Holmes, dated June 2Sth, 
1878, for an improvement in " take-ups " for looms. The 
original patent was granted Angnst 10th, 1869. The plaint- 
iffs are the owners of the patent. The defences are the inva- 
lidity of the re-issae because it contains ^' new matter," and 
non-infringement, if the patent is construed by the Court to 
be restricted to the invention as originally claimed. 

The original patent was for an improved " take-up " in 
looms for weaving cloth. A " take-up" is a device for taking 
up or rolling the completed fabric upon an intermittingly 



124 CONNECTICUT, 



Holmes v. The PlaiDTille MAonfactiiriiig Company. 



moving roller or cloth beam. The improvement consisted in 
the arrangement of mechanism for regulating the tension of 
the cloth. The patented mechanism is described as follows : 
A ratchet wheel is so connected with the cloth beam that a 
movement of the wheel necessitates a revolution of the beam. 
This revolution imparts tension to the fabric. Mounted on 
the axis of this wheel, there is an oscillating pawl carrier 
upon which is pivoted a pawl which engages with the teeth 
of the ratchet wheel. Motion is imparted to the pawl and 
its carrier by means of a rod, one end of which is secured to 
the pawl carrier ; the other end rests loosely in a sliding col- 
lar. Motion is imparted to the collar by the crank which 
turns the "lay," or " the wooden frame beam which forces up 
the weft." The intermediate mechanism between the crank 
and the collar is the leg of the lay and a pitman. " Upon the 
rod and surrounding it there is a spiral spring, one end of 
which bears against the reciprocating sliding collar and the 
other end of which bears against an adjustable collar on the 
rod, which collar is termed a ^ stop nut,' in the patent. This 
collar or stop nut can be adjusted longitudinally on the rod, 
so as to compress the spring more or less and increase or 
diminish its tension, as may be desired." The operation of 
the mechanism is thus described in the specification of the re- 
issue : " It is obvious, that, when a reciprocating motion is 
given to the sliding collar m, the degree of compression of the 
spring, and the consequent extent of motion of the pawl 
and the ratchet wheel, will depend upon the resistance or 
tension of the fabric. Thus, if the cloth is slack, the spring 
will be but slightly (if at all) afiPected by the movement of 
the sliding collar m, the strength of the spring being suffi- 
cient to move the pawl and revolve the ratchet wheel and 
take up the fabric, in which case the collar m will move with 
the rod L, and not slide on it ; but, when there ia sufficient 
tension on the cloth to overcome the power of the spring, the 
collar will slide on the rod and expend its blow or pressure in 
compressing the spring, and will not throw the pawl or move 
the ratchet." In the language of the plaintifb' expert, ^* the 



DECEMBER, 1S81. 125 



Holmes v. The PlainTille Mura&ctnring Company. 



ooUar redprocatee positively over a given distance, while the 
movement of tlie rod, the pawl carrier, the ratchet wheel, 
and the doth beam, will varj from time to time, according 
to the tension of the fabric and the resistance which is offered 
thereby to the motion of the beam which takes np the fabric." 
The original claim was in these words : ^^ The slotted lever 
J, pawl hy ratchet wheel I, gear wheel G, the rod L, spring 
0, nut J?, and arm m^ the ^ay' B, and cloth beam F, of 
the loom, when arranged, with reference to each other, sub- 
stantially as herein shown and described, for the purpose 
specified." 

On May 16th, 1876, letters patent were granted to Ira 
Tompkins and Albert Tompkins, for improved take-np roll- 
ers for knitting machines, and thereafter the plaintiffs' re-issue 
was granted. The re-issue was designed to extend the patent 
to machines for knitting as weU as for weaving. The claims 
are as follows : '^ 1. In a take-up device for looms, the combi- 
nation of the ratchet wheel I, through which motion is im- 
parted to the beam which takes up the fabric, the oscillating 
pawl-carrier J, provided with the pawl A, the rod L, spring O, 
8top-nat^, and reciprocating sliding collar r/i, and operating 
mechanism, whereby the positive reciprocating motion im- 
parted to the sliding collar is made to turn the ratchet wheel 
a greater or less distance, according to the tension of the 
fabric, sabetantially as described. 2. In a take-up device 
for looms, the combination of the stop-nut p^ the rod L, 
spring O, sliding collar m, the crank M, and suitable inter- 
mediate mechanism, substantially aa described, whereby the 
rotary motion of the crank is transformed into the compen- 
satory reciprocating motion of the rod L, for the purpose set 
forth." 

A knitting machine has nothing in common with a loom 
for weaving, except that each has a roller upon which the 
completed fabric is rolled, and a take-up. The office of the 
take-ap, in each machine, is to regulate the tension of the 
cloth. In a loom, it is necessary that the warp should be kept 
taut between the yam beam and the cloth beam. A knitting 



126 (X)NNECnCUT, 



Holmes v. The PlainTille Mannfaotnring Company. 



machiiie prodaces a fabric made by a Baccession of loops, and, 
as the necessities of the manufacture do not require that the 
yam or threads should be kept tightly drawn, a smaller ex- 
penditure of force is necessary than in a loom take-up. The 
defendants' machines are rotary, the take-up rollers and the 
frame which holds the take-up revolve with the machines, 
and power is communicated to the crank gearing, which actu- 
ates the take-up mechanism, by the revolution of the frame 
upon its spindle. The take-up mechanism proper of the 
Holmes and the Tompkins devices are the same ; the difier- 
ences are in the mechanism by which power is communicated. 
The crank of the Tompkins device ^'directly actuates the 
take-up machinery, instead of actuating the lay of the loom 
to move the take-up mechanism." 

The plaintiffs' case is founded upon the position that the 
Holmes invention was not a take-up for weaving looms only, 
but was a take-up device for any looms which require a take- 
up, and that the original patent, by the introduction of the 
'^ lay " of a loom, as one element of the combination, unduly 
limited the invention. The plaintiffs also insist, that, while 
the word ^' loom," as defined in the dictionaries, or when used 
technically, does not include a knitting machine, yet, as 
used in the shops and in the Patent Office, it does include 
such machine, but that this is immaterial, for, whoever uses 
the loom take-up, and employs the same combination, in a 
knitting machine, to take up the fabric, is an infringer, aud 
that the crank rod of the defendants' device, by which power 
is communicated to the pawl lever, is the obvious mechanical 
equivalent of the lay and pitman of the Holmes device. 

In my opinion, the case turns upon the question — what was 
the invention which was disclosed, either clearly or faintly, in 
the original patent ? It is true, that the actual invention of 
Holmes could have been applied to knitting machines, and, if 
the patentee had known the extent of his invention, he could 
properly have made a broader daim, which would have been 
valid ; but the point is, whether it does not appear from the 
patent, that .the invention which was the subject of the ap- 



DECEMBER, 1881. 127 



Holmes 0. The PUuDyiUe ManafactoriDg Company. 



plication waa one applicable only to the weaving of cloth, 
and, therefore, whether a broad re-isBue is not faulty, in that 
it contains an invention which was neither suggested nor ap- 
plied for in the original application, but which is sach an ad- 
dition to the invention, as originally claimed, as to be prop- 
erly the subject of a new patent. Starting with the fact that 
whatever may be either the commercial or technical meaning 
of the word "loom," the meaning of "loom for weaving 
doth " is very obvious, and with the additional fact that a 
knitting machine is a structure of altogether different charac- 
ter from a weaving loom, except thai each machine produces 
doth and Ikeeds a take-up, did the original patent indicate, 
suggest, or hint that the invention was anything but an ad- 
junct to looms for weaving ? The originsd application was 
strictly confined to such machines, and for a manifest reason. 
In doth weaving, whenever a thread of filling is passed 
through the threads of warp, the lay is thrown forward and 
beats the thread of filling against the edge of the newly 
woven doth. The old take-ups made are of the constantly 
recurring forward motion of the lay to turn the doth beam 
and to keep the yam taut, for, in a loom take-up, the move- 
ment of the lay is the natural source of motion for the take- 
np mechanism. The inventor wanted to improve the existing 
devices so that a better device, or an improved result, could 
be had by the use of the same motive power. He was direct- 
ing his attention solely to take-ups in looms, and not to take- 
nps in other and different pieces of mechanism, and his pat- 
ent expressed plainly the subject of his thought and the re- 
salt of his labor. That the invention could be applied to 
other machines was a discovery made after the date of the 
patent. 

The original patent was open to objection, because it 
might be claimed that the patentee had included, in the 
combination, the "lay " as a lay, and not as a means of trans- 
mitting power, and, therefore, if the crank should be applied 
to any other lever than the woof-beater, there would not be 
an infringement. This mistake was apparent on the face of 



128 OONNECnCUT. 



Hdmefl v. The PlainTille Manulikctiiruig Ck>mpany. 



the specification, and justifies a re-issue, but that the inven- 
tion was improperly restricted, by limiting it to looms for 
weaving, was not thus apparent. Neither the specification 
taken alone, nor as construed by the state of the art in regard 
to the subject of the original patent, revealed that the inven- 
tion was broader than the patent. That came to light after 
the state of the art on both looms and knitting machines had 
been shown. I am of opinion that the loom of the re-issue 
is the loom for weaving cloth of the original patent. 

The inventors of the device which is used by the defend- 
ants apparently adapted the Holmes take-up to the needs of 
a knitting machine, but not without alteration. They did not 
simply apply the old method to the new one without change. 
The new machine has no lay, and does not require the inter- 
vention of a lever between the crank and the pawl carrier. 
A loom take-up must work with power to keep the fabric taut 
A knitting machine desires that the fabric shall not be 
straitied by over tension, and, therefore, demands only the 
exercise of gentle force in the take-up mechanism. All that 
is required is that motion should be communicated from the 
crank directly to the pawl carrier. In view of the different 
character and needs of the two machines, motion is not 
transmitted, in these two devices, by the same or equivalent 
means. 

The bill is dismissed. 



Charles E. Mitchell^ for the plaintifb. 
E%ek Cotoerij for the defendants. 



NOYEMBER, 1879. 129 



The United States v. Phelps. 



Thk Ubtted States, Flaintiffs in sbboe 
FsAirx Phslpb and Howabd Phelps, Defendants in ebbob. 

Under g§ 2,937 nnd 2,928 of the Reyised Statates, there can be an appraise- 
ment for an abatement of duties, on aoconnt of damage to goods sustained 
daring the voyage of importation, after the goods haye been entered at the 
Custom House and the estimated amount of duties thereon haye been paid.* 

(Before Blatghfokd, J., Southern District of New Yorlc, NoTember 18th, 1879.) 

Blatohfobd, J. This is a writ of error to the District 
Court. The following facts appear bj the bill of exceptions : 
The defendants in error, (who were the defendants below and 
win be called the defendants,) on the 7th of August, 1876, 
imported into the port of New York from a foreign port, 
3,825 boxes of lemons. The value of said lemons in the 
foreign market, when and where thej were purchased, was 
74,521,Thr francs, equal to $14,383. The duties thereupon, 
at the rate of 20 per centum ad valorem^ amounted to 
$2,876 60, on which sum the plaintiff gave a credit of 
$2,013 60, the amount admitted by the complaint to have 
been paid, claiming to recover the balance, $868, as duties. 
The defendants, in like manner, imported, on the ISth of 
August, 1876, 2,930 boxes of lemons, of the foreign value, 
when shipped, of 49,861i^ francs, equal to $9,623. The 
duties thereon, at the rate of 20 ^«r centum ad valorem,^ were 
$1,921 60, on which sum the plaintiffs gave a credit of $1,636, 
the amount admitted by the complaint to have been paid, 
claiming to recover the balance, $288 60, as duties. After 

*This caae was not reported in its re^nbir orv'ler, bat, as the deci.^ion was all 
firmed by the Supreme Court, and the opinion of that Conrt, in 107 U. S., re- 
fers to the opinion of thSa Court, it hat been thought proper to publiah the lat- 
ter io this Tolome. 

Vol. XX.— 9 



180 SOUTHERN DISTRICT OF NEW YORK, 

The United States v. Phelpe. 

the plaintifiB had proved the foregoing facts, the defendantft^ 
offered to prove that they made entry at the custom honse in 
New York of the first above mentioned importation of 
lemons at the fall invoice price on the 7th of Aagnst^ 1876^ 
and then paid to the plaintiffs $2,876 60, as the estimated 
amount of duty on said importation, if in sound condition, 
and afterwards, and on the 14th of August, 1876, applied for 
an allowance for damage to the same on the voyage of im- 
portation ; that, thereafter, an examination and appraisement 
of the damage were made, and thereupon an allowance was 
made for said damage ; that the amount of said damage al- 
lowance was $4,815 ; that the duties thereon, at 20 per cent^y 
amounted to $863 ; that, in accordance therewith, the said entry 
was liquidated on the 8d of October, 1876 ; and that^ on the 
14th of October, 1876, the plaintiffs refunded and paid to the 
defendants the sum of $868. To this evidence the counsel 
for the plaintiffs objected, on the ground that the damage al- 
lowance should have been applied for, and the damage ascer- 
tained, before the entry of the goods ; that, as the applica- 
tion was not made, nor the amount of damage ascertained, 
until after the entry, the proceedings therefor were irregular 
and without warrant of law ; and that the defendants could 
acquire no benefit or advantage from any allowance made in 
pursuance thereof. The Court overruled the objection and 
admitted the evidence, and to such ruling and admission, the 
plaintiffs' counsel excepted. 

As to the importation of August 15th, 1876, the defend- 
ants offered to prove that an entry was made of the goods at 
their full invoice price on that day, and the sum of $1,924 60 
was paid to the plaintiffs as the estimated amount of duty on 
said importation, if in sound condition ; that an application 
for damage allowance was made August 22d, 1876 ; that an 
examination and appraisement were thereupon made, and an al- 
lowance for damage was thereupon made to the amount of 
$1,448, on which the duties amounted to $288 60 ; that the 
entry was liquidated on the 29th of September, 1876; and 
that, on the 11th of October, 1876, the plaintiffs refunded and 



NOVEMBER, 1879. 181 



The Unitod Statet v. Phelpa. 



paid to the defendants the said sum of $288 60. To this ey- 
idenoethe counsel for the plaintiffs objected on the same 
ground as before. The Conrt oyerroled the objection and 
admitted the eyidence, and to snch ruling and admission the 
plaintifis' counsel excepted. 

The defendants then rested. The counsel for the plaint- 
iffia thereupon requested the Court to charge the jury, diat, as 
the goods had been entered at the full inyoice prices in the first 
instance, and the application for allowance, the examination 
and the appraisement were not made, nor the damage ascer- 
tained, nor the damage allowance made, until after the entries 
of the goods^ the damage allowance was unwarranted bj law, 
and the jury could not giye the defendants any abatement of 
duties on account of such damage allowance. The Court re- 
fused so to charge and the counsel for the plaintiffs excepted 
to such refusal. The jury rendered a yerdict for the defendants. 

It is presented as a question for decision, whether there 
can be an appraisement for an abatement of duties, on ac- 
count of damage to goods sustained during the yoyage of 
importation, after the goods haye been entered at the custom 
house and the estimated amount of duties thereon has been 
paid. 

Section 2,927 of the Beyised Statutes proyides as follows : 
'' In respect to articles that have been damaged during the 
yoyage, whether subject to a duty ad valorem^ or chargeable 
with a specific duty, either by number, weight or measure, 
&e appraisers shall ascertain and certify to what rate or per- 
centage the merchandise is damaged, and the rate of percent- 
age of damage so ascertained and certified shall be deducted 
from the original amount subject to a duty ad valorem,^ or 
from the actual or original number, weight or measure on 
which specific duties would haye been computed. No allow- 
anoe, howeyer, for the damage on any merchandise that has 
been entered, and on which the duties haye been paid or se- 
cured to be paid, and for which a permit has been granted to 
the owner or consignee thereof, and which may, on examin- 
ing the same, proye to be damaged, shall be made, unless 



132 SOUTHERN DISTRICT OF NEW YORK, 

The United States v. Phelps. 

proof to ascertain said damage shall be lodged in the cuBtoin 
honse of the port where snch merchandise has been landed, 
within ten days after the landing of such merchandise." 
This is a re-enactment of like provisions in § 52 of the Act of 
March 2d, 1799, (I U.S. Stat, at Large, 666.) 

Section 2,928 of the Revised Statutes provides as follows : 
'^Before any merchandise which shall be taken from any 
wreck shall be admitted to an entry, the same shall be ap- 
praised ; and the same proceedings shall be ordered and execnted 
in all cases where a redaction of duties shall be claimed on ac- 
count of damage which any merchandise shall have sustained 
in the course of the voyage; and in all cases where the 
owner, importer, consignee or agent shall be dissatisfied with 
such appraisement, he shall be entitled to the privileges of ap- 
peal, as provided for in this Title." This section is taken 
from section 21 of the Act of March 1st, 1823, (3 O. S. SiaL 
at Large, 736,) which section 21 was in these words : " Before 
any goods, wares, or merchandise which may be taken from 
any wreck shall be admitted to an entry, the same shall be 
appraised in the manner prescribed in the sixteenth section of 
this Act, and the same proceedings shall be ordered and exe- 
cuted in all cases where a reduction of duties shall be claimed 
on account of damage which any goods, wares, or merchandise 
shall have sustained in the course of the voyage ; and in all 
cases where the owner, importer, consignee or agent shall be 
dissatisfied with such appraisement, he shall be entitled to the 
privileges provided in the eighteenth section of this Act." 
The words ** in the manner prescribed in the sixteenth sec- 
tion of this Act," found in said section 21, are not reproduced 
in section 2,928 of the Sevised Statutes. The manner pre- 
scribed in the sixteenth section of the Act of March Ist, 
1823, (3 V. S. Stat, at Large, 735,) is by appraisers to be ap- 
pointed in a manner designated in that section. By the 5:;d 
section of the Act of 1799, it was provided that, in the case of 
goods which had received damage during the voyage, the ap- 
praisement to ascertain such damage should be made by two 
merchant appraisers, one to be appointed by the collector, 



NOVEMBER, 1879. 138 



The Uoited Stotes v. Phelps. 



and the other by the importer. By the 15th Bection of the 
Act of April 20th, 1818, (8 U. S. Stat at Large^ 437,) it was 
provided as follows : " Before any goods, wares or merchan- 
dise which may be taken from any wreck shall be admitted 
to entry, the same shall be appraised in the manner pre- 
scribed by the ninth section of this Act ; and the same pro- 
ceedings shall also be had where a reduction of dnties shall be 
claimed on account of damage which any goods, wares or 
merchandise imported into the United States shall have sus- 
tained in the course of the voyage." The 9th section of that 
Act provided for the appointment by the President and Sen- 
ate, in each one of six designated ports, of two appraisers, 
who, with a merchant appraiser, to be chosen by the importer, 
were to make appraisements in such six ports, and in other 
ports appraisements were to be made by two merchant ap- 
praisers to be selected by the collector, and one merchant ap- 
praiser to be chosen by the importer. This act of 1818 was 
to continue in force for two years. By the Act of April 
18th, 1820, it was continued in force till March 4th, 1828, (8 
27. 8. Stat, at Large^ 568.) Then came the Act of March 
Ist, 1823, before referred to. The 16th section of that Act 
provides for the appointment, by the President and Senate, 
in each one of seven designated ports, of two appraisers, who 
were to make appraisements in such seven ports, and in other 
ports appraisements were to be made by two merchant ap- 
praisers to be appointed by the collector. 

A change was made by the Act of 1818, and continued by 
tiie Acts of 1820 and 1828, in the mode of appointing ap- 
praisers who were to appraise in the case of damaged goods. 
By the Act of 1799, there were to be two appraisers, one ap- 
pointed by the collector and the other by the importer. By 
the Act of 1818 there were to be in certain ports two stand- 
ing appraisers appointed by the United States, and one ap- 
praiser selected in each case by the importer, and in other 
ports two appraisers selected in each case by the collector, and 
one appraiser selected in each case by the importer. This 
was continued by the Act of 1820. By the Act of 1828 there 



184 SOUTHERN DISTRICT OP NEW YORK, 

The XJuited States «. Fhelpa. 



were to be in certain ports two standing appraisers appointed 
by the United States, and in other ports two appraisers ap- 
pointed in each case by the collector. The change made bj 
the Act of 1818 from the Act of 1799, in the mode of select- 
ing the appraisers, was a marked and a material one, as it 
gave to the United States the selection of two appraisers, and 
to the importer the selection of one, instead of giving to the 
United States the selection of one, and to the importer the 
selection of one. Hence, when the 15th section of the Act 
of 1818 said that *^ the same proceedings shall also be had," 
on a daim to a redaction of duties on acconnt of damage, the 
reference would seem to have been to an appraisement ^' in 
the manner prescribed " by the ninth section of that Act, 
without any prescription that it should be either before or af- 
ter the entry of the goods. The appraisement is a proceed- 
ing. By the 52d section of the Act of 1799, appraisement to 
ascertain damage was to be made by appraisers appointed in 
a manner prescribed by that section. By the 15th and 9th 
sections of the Act of 1818, such appraisement was to be 
made by appraisers appointed in a different manner. The 
requirement of the 15th section of the Act of 1818, that 
goods taken from a wreck shall not be entered until they 
have been appraised, is clear and explicit. Prior to that Act 
goods taken from a wreck could have been entered as other 
imported goods, before appraisement, and were within the 
provisions of law as to goods damaged during the voyage. 
Beasons can very well be suggested why a change was made 
in regard to wrecked goods, coming into the country in an ir- 
regular way, and not by the discharge of them at a landing 
wharf, directly out of the vessel which brought them, such 
change requiring them to be appraised before entry. But no 
satisfactory reasons can be assigned for a like change in regard 
to damaged goods landed in the regular way, and it ought to 
appear very clearly from the language of the statute, that a 
change was intended in regard to such goods. The system 
prescribed by the Act of 1799, and continued in force, in re- 
gard to the landing of goods regularly imported, was that 



NOVEMBER, 1879. 185 



The Unitdd Stales «. Phelpe. 



they should first be entered and the duties on them be paid or 
secured, and then a permit be obtained for their landing, and 
se?ere penalties were imposed for landing goods without a 
permit. {Act of March 2d, 1799, §§ 49, 60, 1 U. S. Stat, at 
Zarge, 664, 665.) It is impossible for an importer to ascer- 
tain, until he sees his goods, after they have been landed in 
ponnance of a permit following an entry, whether thej have 
been damaged or not. Hence, the 52d section of the Act of 
1799 clearly provides for the entry, the payment of duties, 
the permit, and the landing, in the above order, and then for 
the allowance for damage. It ought to require explicit lan- 
guage to make a change in this order of proceeding. It was 
veiy proper to require that proof of damage should be lodged 
within ten days after the landing. But, to require appraise- 
ment before entry or landing, in the case of goods regularly 
imported, would be to prescribe a system impossible of prac- 
tical execution. These views apply to the provisions of the 
21st section of the Act of 1823. The natural meaning of the 
words of that section, which provide that ^^ the same proceed- 
ings shall be ordered and executed in all cases where a reduc- 
tion of duties shall be claimed on account of damage which 
any goods, wares or merchandise shall have sustained in the 
course of the voyage," is the same as the natural meaning of 
the words in the 15th section of the Act of 1818, which pro- 
vide that *^ the same proceedings shall also be had where a re- 
duction of duties shall be claimed on account of damage 
which any goods, wares or merchandise imported into the 
United States shall have sustained in the course of the voy- 
age," and that is, that the appraisement proceedings shall be 
condacted in the manner before prescribed in the Acts re- 
q>ectively, and not that goods regularly imported and bonded, 
and not *^ taken from any wreck," shall be appraised before 
entry. 

In the case of Shdtan v. Avstin^ (1 Cliff ord^ 888,) af- 
firmed by the Supreme Court, as SheUon v. The C6Uectoi\ (5 
WaUace^ 118,) the 52d section of the Act of 1799 had not 
been complied with, in that proof to ascertain the damage 



136 SOUTHERN DISTRICT OF NEW YORK, 

The United States 9. Phelps. 



had not been lodged within the ten days preBcribed by that 
Bection. The goods were not taken from a wreck, bnt they 
were entered before they were appraised. Mr. Jastice Clif- 
ford, in the Circnit Coort, held that they must pay dnties on 
their sound value, as entered, because, under the 21st section 
of the Act of 1823, they were required to be appraised before 
entry, in order to warrant an allowance for damage on the 
voyage. In the Supreme Court no counsel appeared for the 
plaintiff in error. The Court held that there could be no al- 
lowance for damage under the Act of 1799, because proof 
had not been lodged within the ten days after landing ; and 
that there could be none under the Act of 1823, because 
there had been an entry before appraisal. The first ground 
was an adequate one for the affirmance of the judgment, and 
the United States alone were represented on the ai^ument. 
In the present case the record shows that the requirement aa 
to the ten days was complied with. 

By section 5,595 of the Bevised Statutes, those statutes 
are declared to embrace the statutes of the United States, 
general and permanent in their nature, in force on the 1st of 
December, 1873. It follows that the provisions of the Be- 
vised Statutes are to be construed as the enactments in force 
on the 1st of December, 1873, would have been construed. 
Sections 2,927 and 2,928 of the Bevised Statutes are both of 
them enacted as having been in force on the 1st of December, 
1873. The regulations of the Treasury Department in re- 
gard to claims for damage allowance, in force and acted on 
since the Bevised Statutes were enacted, clearly recognize the 
practice and the propriety of entering goods, and then claim- 
ing a damage allowance on them, and proceeding to an ap- 
praisement. Such was the practice in the present case, acted 
on by the collector, even to the paying back of the deposited 
duties on the amount of the damage. 

It is contended for the United States, that, under the 2l8t 
section of the Act of 1823, goods damaged in the course of 
the voyage, though not taken from a wreck, must be ap- 
praised before entry, in order to warrant an allowance for 



DECEMBER, 1881. 137 



The United States v. Malone. 



damage ; and that as, in this case, the entry was made before 
appraisal, no allowance for damage was lawfal. The District 
Gonrt took a different view. The practice of the Treasury 
Department and of the collector has evidently been contrary 
to what 18 now contended for by the United States, notwith- 
standing the decision of the Sapreme Conrt in ShdUm v* The 
Collector. This practice, it is fair to assnme, has obtained 
because the Treasury Department did not regard that decision 
as disposing of the question finally. It is important that the 
question should be speedily decided by the Supreme Court, 
both in the interest of the Government and of importers ; and, 
in view of all the facts of the case, I think the most proper 
disposition of it is, to affirm the judgment of the Court below, 
and thus enable the United States to obtain speedily a recon- 
sideration of the question by the Supreme Court, instead of 
sending the case back for a new trial in the District Court, 
with a long delay before it can reach the Supreme Court. 
The jadgment is affirmed. 

C, P. L. Buder^ Jr.^ {Aseistant Distrid Attorney^ for 
the plaintiffii in error. 

Cha/rUe M. DaCoeta^ for the defendants in error. 



The United States 
DoKiNiOK Malone and Peteb A. Malone. 

An in^ctment, under § 9,266 of the Revised Statutes, charged, in one oonnt. 
the imlawfal uae of a still, for the purpose of distilling spirits, on premises 
where ale was made, and, in another count, snbstantiaUy a like offence. The 
defendant was found guilty on one count, and not on the other, and was sen- 
tenced to be imprisoned and fined. At a subsequent term he mored to ya- 



188 SOUTHERN DISTRICT OF NEW YORK, 

The IJxiited-StateB «. Malone. 

cate the jadgment, on the ground that the Bame offonee wm charged in the 
two counts, and that the yerdiot on the first count wss made Yoid by that on 
the second ; Held, that the motion must be denied, because, 

(1.) Under the Rules of the Court the motion wss too late ; 

(2.) The term at which the judgment was entered haying eipired, the 
Court had no power to yaoate it ; 

(8.) The question raised wss adjudicated by the passing of sentence ; 

(4.) The offenoes charged in the two counts were two different ofienoes. 
Knowledge is not made, by g 8,266, an ingredient in the offence, -and, there- 
fore, it need not be ayerred in the indictment. 

(before Blatohpobd, Bbnbdiot and Bbowk, JJT., Southern District of New York, 
December 20th, 1881.) 

Bbnedictt, J. The defendants were jointly indicted, and 
tried together at the March term, 1881. The indictment con- 
tained three counts, framed nnder § 8,266 of the Bevised 
Statutes. The first count charged, in substance, that the de- 
fendants, on the 5th day of May, a. d., 1879, unlawfully did 
use a still for the purpose of distilling spirits, on premises 
where ale was manufactured, to wit, on the premises number 
613 West 62d street, in the city of New York. 

The second count charged, in substance, that the defend- 
ants unlawfully and knowingly did use, and did aid and assist 
in using, a still for the purpose of distilling spirits, on the 
premises number 513 West 52d street, on which said prem- 
ises, fermented liquor, to wit, ale, was manufactured and pro- 
duced. 

The third count charged, in substance, that the defendants 
unlawfully and knowingly did use a boiler for the purpose of 
distilling spirits on premises where ale was produced, that is 
to say, on the premises number 513 West 52d street, in the 
city of New York. 

The verdict of the jury upon the first count was not guilty 
as to Peter A. Malone, and guilty as to Dominick Malone. 
On the second and third counts the verdict was not guilty aa 
to both the defendants. Thereupon, Peter A. Malone was 
discharged, and afterwards, and at the May term, on motion 
of the District Attorney, Dominick Malone was sentenced to 
be imprisoned for a period of 16 months, and to pay a fine of 



DECEMBER, 1881. 189 



The United States v, Malone. 



$1,000. Now, at the Ootober term of the Court, application 
IB made in behalf of the prisoner to vacate the judgment and 
commitment. This application is based on the proposition 
that tfie offence charged in the first count of the indictment 
is the same offence charged in the second count, and that the 
acquittal on the second count must prevail and makes void 
the verdict upon the first count. To this there are several 
answers. 

First. The objection, if valid, comes too late. By the 
Bules of this Court, when a conviction is had, sentence is de- 
ferred to the next term of the Court for the purpose of af- 
fording opportunity to move meanwhile in arrest of judgment 
or for a new trial, and the Bules prescribe that notice of such 
a motion must be filed within three days after the conviction, 
and the minutes of the trial, as settled by the Judge who tried 
the case, be filed before the first day of such subsequent term. 

In thifi case the prisoner was sentenced at the term subse- 
quent to the conviction, in the absence of any motion for a new 
trial, or in arrest of the judgment, in pursuance of the Bules, 
and he cannot now, at this late day, after judgment, and 
when his term of imprisonment has partly expired, upon 
a motion like the present, urge an objection which, if valid 
and taken in the manner prescribed by the Bules, would 
have arrested the judgment. By omitting to comply with 
the Bules, the prisoner must be deemed to have waived the 
right to raise in this Court any question proper to be raised 
in the manner required by the Bules. 

Second, The judgment sought to be vacated was rendered 
at the May term of this Court, and this application is made at 
the October term thereafter. The term at which the judg- 
ment was entered having expired, no power remains in the 
Court to vacate the judgment. {The Bank v. LdHtut^ 1 
WoodSj 11 ; Bank of United States v. Moes^ 6 How.^ 31.) 

Third. The question now presented in regard to the ef- 
fect of the verdict rendered upon the second count was 
necessarily involved in the question of sentence, and, when 
the prisoner was sentenced, it was necessarily adjudged by the 



140 SOUTHERN DISTRICT OF KEW YORK, 

The Uoited SUtes «. Malone. 

Conrt that the verdict upon the second count did not make 
void the verdict on the first count. That determination can- 
not now be brought in review by an application like the pres- 
ent, made after fiual judgment. 

It is said, however, that the judgment is void, because 
there is no conviction, the defendant having been acquitted 
on the second count. But, how can the judgment be held 
void, when the Court had jurisdiction of the person and of 
the subject-matter, and the record shows a valid indictment, 
a verdict of guilty upon one of its counts, and a sentence such 
as the law permits for the offence charged in such count? If 
there was error, as, manifestly, there was not, in the deter- 
mination made at the trial in regard to the effect of the verdict 
of acquittal upon the second count, such error would not make 
void the sentence pronounced upon the verdict of guilty which 
the record shows to have been rendered on the first counL 

Moreover, the contention in behalf of the prisoner, that 
error was committed at the trial in construing the verdict to 
be a verdict of guilty, rests upon the assumption that the offence 
charged in the second count is the same offence charged in 
the first count. The assumption is without foundation. 

It is possible for a person to commit two similar crimes 
on the same day, and to be indicted and punished therefor ; 
and two crimes are committed when two different stills are 
used at different times on the same day, on premises where 
ale is manufactured. It is not to be denied that two such 
crimes may be charged in one indictment, in different counts, 
nor that in such case each separate count of the indictment, 
in judgment of law, charges a separate and distinct offence. 
Each count in an indictment is, in fact and theory, a separate 
indictment. Different counts are allowable only on the pre- 
sumption that they are different offences, and every count sa 
imports on the face of the record. {Heard on Orim. Pleads- 
ing^ 235, 236. See, also, Rev, Stat^ § 1,024.) Accordingly, 
this record shows the prisoner charged, in two separate counts, 
with having used two different stills at different times, on the 
day and at the place described ; and there is no room to con- 



DECEMBER, 1881. 141 



The United States v. Malooe. 



tend that, because the jary convicted the prisoner on one 
count, and acquitted him as to the other, they found him 
guilty and likewise not guilty of the same offence. 

It has been said, by way of argument, we suppose, for the 
record discloses no such thing, that at the trial evidence as to 
only one offence was giyen. If such be the fact, we fail to 
see how the conclusion follows that the prisoner was improp- 
erly adjudged to have been convicted of one offence. The 
evidence having proved the ase by the prisoner of one still, 
and no more, on the day and at the place described, what was 
there for the jury to do but to render the verdict they did, 
namely, guilty of using one still and not guilty of using an- 
other? On sach an indictment and upon such evidence, the 
verdict must necessarily be, gnilty on one count and not guilty 
on the other. Plainly enough, therefore, the verdict in this 
case amounts to a conviction on the first count of the indict- 
ment, and no error was committed when it was so held at the 
time of passing sentence. 

In addition to the point already considered, we find upon 
the brief a second point, not pressed at the argument, that the 
first count of the indictment charges no offence, because it 
omits to aver knowledge. It appears, from what has already 
been said in regard to the first point, that an objection like 
this cannot be considered upon the present application. But, 
the point, if open for consideration, could not prevail, for the 
reason that knowledge is not made by the statute to be an in<- 
gredient in the offence. When a statute prohibits generally 
and makes no reference to intention, an averment of knowl- 
edge is unnecessary. ( United States v. Smithy 2 Maaorij 143, 
160; 1 Stark. Cnm. Fly 182, 183.) Here the statute prohib- 
its; the use of a still for the purpose of distilling. This in- 
dictment charges an act such as is described in the statute, 
done for the purposes specified in the statute, and, conse- 
quently, charges the offence created by the statute. 

Sutherland Tennet/j {AsHstant District Attorney^ for the 
United States. 



Roger M. Sherman j for the defendant. 



142 SOUTHERN DISTRICT OF NEW YORK, 

¥\Mgg 9. The MftnhBtton Railway Company. 



Gboboe a. Flagg and others 

vs. 

The Manhattan Bailwat Coxpant, The Metropolitan 
Elevated Eailwat CoHPAirr, and The New Tosk 
Elevated Bailroad Coupajstt. In Equity. 

The hiBtof7 giyen of the leaaes of May 20th, 1879, made by the MetropoUtaa 
Company and the New York Company to the Manhattan Company, and of 
the '' tripartite agreement * of that date between the three companiea, and of 
the litigation respecting said leasee and said agreement, and of the agree- 
ments of October 22d, 1881, between 'the three oompanies» modifying the ssid 
leases and the said '* tripartite agreement" 

The agreements of October 82d, 1881, do not impair any Tested rights of the 
stockholders of the Metropolitan Company. 

There was no contract between the Manhattan Company and the indiTidnai 
stockholders of the Metropolitan Company, or between the latter company 
and its stockholders, that they should haye a diyidend of 10 per eeni, per 
OMiMm on their stock. 

The directors of a corporation hare a general power to make and modify its 
contracts, and its stockholders cannot control that power, nor was it neces- 
sary to the yalidity of the agreements of October 2Sd, 1881, that they shonld 
haye been approyed by any one or more stockholders. 

The Act of April 28d, 1889, {Law* of New York, 1889, c^. 218, p. 196,) au- 
thorised the making of the said leases and agreements. 

The new sgreements were made in good faith and with a &ir exercise of the 
judgment and discretion of the directors of the Metropolitan Company. 

(Before Blatohvoed, J., Southern District of New York, December 21st^ 1881.) 

Blatohford, J. This suit is brought by three perBons as 
individoals and two persoDS as copartners, who claim to be 
owners of shares of the capital stock of the Metropolitan £1> 
evated Railway Company, 155, 10, 150 and 75 in number, of 
the par valae of $100 each, there being 65,000 shares in alL 
The three companies defendants are railroad corporations, 
organized under the laws of the State of New York, and will 
be called the Manhattan, the Metropolitan and the New York. 



DEGEMBEB, 1S81. 148 



Flagg V. The Manhattan Railway Company. 



The first company had no linefi of railway. The second and 
third had elevated railways in the city of New York. On 
the SOth of May, 1879, the three companies entered into a 
written agreement, known as the '^tripartite" agreement. 
It recites that the agreement is made '' for the parpose of 
avoiding the danger of crossing elevated railway tracks upon 
the same level, and otherwise secnring to the people of New 
York the advantages of safer and more rapid transit through 
the action of one directing body." It provides for the execu- 
tion of the leases hereinafter mentioned, and contains other 
provisions which it is not important at this point to notice. 
On the same day, the Metropolitan and the Manhattan ex- 
ecuted an agreement of lease in writing. It recites that the 
Metropolitan is authorized to construct and operate a line of 
elevated railway in the dty of New York, a portion of which, 
specifying it, is completed and in operation by it, and is en- 
gaged in constructing other parts ; that the New York is the 
owner of and engaged in operating certain' lines of elevated 
railway in said city, over routes heretofore established by 
law for it, *' which railways and routes at various places unite 
with the railways and routes" of the Metropolitan '^and 
cross and connect and unite therewith at the same level ; " 
that **' the development of the business of passenger traffic on 
elevated railways in said city has made it necessary for each 
of said companies to run trains in such manner, and with such 
speed and frequency, that the crossing of the trains of one 
company over and upon the tracks of the other company, 
and the running of die trains of both companies upon the 
portions of tra^ and route jointly owned or used by them, is 
deemed impracticable except at the risk of inconvenience and 
delay to the public and danger to human life ; " that, *' after 
protracted efforts to devise plans for operating all said lines so 
as to afford to the public perfect fullness of accommodation 
and safety, it is the opinion of both companies, that such 
management cannot be assured while the trains of the two 
companies are run under the control of differing managing 
officers, or otherwise than by placing the lines of both com- 



144 SOUTHERN DISTRICT OP NEW YORK, 

Flagg «. The Manhattan Railway Company. 

panies nnder one sole control, with power to change from 
time to time the termini of rentes, to regulate and limit the 
passage of trains from the tracks of one company upon the 
tracks of the other at the connecting and crossing points, and 
to do such other things and make such other changes, from 
time to time, in the entire management of traffic upon the 
lines of both railways, as experience may show to be neces- 
sary or desirable ; " that the Manhattan ^' is by law authorized 
to construct and operate elevated railroads in the city of New 
York, whether owned or leased by it, and is willing and de- 
sirous to accept," and the Metropolitan and the Kew York 
^^ have agreed to execute and deliver to it, leases of all their 
respective railways and properties, as described in this instru- 
ment, and in a similar instrument of even date herewith, to 
be executed by the New York,*' " as lessor to the Manhattan," 
'^ upon all and singular the terms, agreements and conditions 
herein and therein mentioned and set forth ; " that the Met- 
ropolitan ^^has heretofore executed to the Central Trust 
Company of New York its first mortgage, bearing date July 
10, 1878," "securing the bonds therein provided for, the total 
amount thereof now issued and agreed to be issued being " 
$8,500,000 of principal ; that the Metropolitan '^ may be here- 
after required " by the Manhattan " to issue further amounts 
of the said bonds secured by the said mortgage in excess of 
said " $8,500,000, " for the purpose of constructing and 
equipping extensions of the line of the Metropolitan," " pay- 
ment of all which bonds, principal and interest, is to be as- 
sumed by the Manhattan ; " and that the Metropolitan ^' has 
issued and agreed to issue its capital stock, to the amount, at 
its par value," of $6,500,000, upon which stock the Man« 
hattan "has agreed to guarantee the payment of a div- 
idend of ten per cent, per annwrn^ as hereinafter pro- 
vided." Then, by the agreement, the Metropolitan, "in 
consideration of the rents, covenants and agreements here- 
inafter mentioned, reserved and contained, on the part of 
the Manhattan," " to be paid, kept and performed," leases 
to the Manhattan "all and singular the railroad or rail- 



DECEBfBER, 1881. 145 



Flagg V. The ManhatUn Railway Compaoy. 



way, now owned, operated or constmcted by it in the city of 
New York, as above described, and all and singular the nn- 
finished portions thereof now under constraction, together 
with all its franchises, rights and privileges relating thereto, 
<^r to the constraction and operation of its entire railway as 
authorized, subject to the said mortgage and to the terms 
and conditions under which said franchises are held by the 
<x>mpany, with all and singular the right, title, estate and 
interest which the Metropolitan Company has in any real 
estate in the city of New York heretofore acquired by it, or 
which it may hereafter acquire under contracts already made 
therefor, being aU and singular the entire property and estate 
of said Metropolitan Company, except such of its franchises, 
rights and privileges as are or may be necessary to preserve 
its corporate existence or organization, and its interest in the 
covenants and conditions of this indenture." The lease is 
for 999 years from November 1st, 1875, or so long as the 
Manhattan ^^ shall continue to exist as a corporation and be 
capable of exercising all the functions herein stipulated on 
its behalf," the Manhattan paying to the Metropolitan the 
yearly rent of $10,000, payable semi-annually on the ist days 
of January and July, the first payment of $5,000 to be made 
July Ist, 1879, '^ and keeping and performing all and singular 
tibe covenants and agreements hereinafter set forth to be by 
the Manhattan" ^^kept and performed." The Manhattan 
assumes and agrees to pay, as they respectively become due, 
the principal and interest of the said recited first mortgage 
bonds of the Metropolitan, and keep it harmless from all 
claims against it arising from all or any of said bonds. Then 
follows this article: ^'Article Second. The Manhattan Com- 
pany guarantees to the Metropolitan Company an annual 
dividend of ten per cent, on the capital stock of the Metro- 
politan Company, to the amount of six millions five hundred 
thousand dollars; that is to say, the Manhattan Company 
will, each and every year during the term hereby granted, be- 
gianiog with the first day of October, eighteen hundred and 
seventy-nine, pay to the Metropolitan Company six hundred 
Vol. XX.— 10 



146 SOUTHERN DISTRICT OP NEW TORE. 

Flagg V. The Manhattan Railway Company. 

and fifty thousand dollars, free of all taxes, in eqaal quarterly 
payments of one hundred and sixty-two thousand five hun-» 
dred dollars each, on the first days of January, April, July^ 
and October in each year, the first of such payments to be 
made on the first day of January, eighteen hundred and 
eighty ; and the Manhattan Company will, from to time, exe- 
cute in proper form a guaranty to the at|Ove efi^ect, printed 
or engraved upon the certificates of stock of the MetropolitaD 
Company, and, as such stock certificates are surrendered for 
cancellation and re-issue, will, from time to time, at the re- 
quest of the holder, renew such guaranty upon all re-issued 
certificates." It is then provided that the portions of the 
railway of the Metropolitan which were completed on the 
31st of January, 1879, shall be deemed to have been operated 
from the close of business hours on that day by the Manhat- 
tan, and all such operation from and after that time shall be 
for the account of the Manhattan ; that the Manhattan shall 
run the railways, and keep them in repair and working order 
and supplied with rolling stock and equipment ; that, *^ in ad- 
dition to the rental herein above provided," it shall pay all 
taxes, assessments, duties, imposts, dues and charges which 
shall become payable by the Metropolitan or be imposed on 
the leased property or its business, earnings or income ; that 
the Manhattan will save harmless the Metropolitan against 
all expenses of operating the railways, and all claims and suits 
for injuries to persons and property, or for causing the death 
of any person, or for any other thing in the operation or 
management of the leased property, or for any breach of con- 
tract by the Manhattan in carrying on the business, and will 
defend all suits and claims brought against the Metropolitan 
in respect of any matter arising out of the management or 
operation of said railways since January 31st, 1879 ; and that, 
in case the Manhattan shall at any time fail to pay in full said 
cash rental '^or the guaranteed dividend aforesaid, as the same 
shall become payable, or fail or omit to keep and perform the 
covenants and agreements herein contained, or any of them, 
and continue in default in respect to the performance of such 



DECEMBER, 1881. 147 



Flagg V. The Manhattan Railway Company. 



covenant or agreement or payments for the period of ninety 
daj6," the Metropolitan may enter on the leased railways and 
premises and thenceforth hold, possess and enjoy them as of 
its former estate, and, npon such entry, the interest of the 
Manhattan therein shall cease. The Manhattan then agrees 
with the Metropolitan that it will execute, acknowledge and 
deliver ^' any and all instruments for the more effectually as- 
Buring unto the Metropolitan " " the payment of the cash 
rental and dividends hereinbefore reserved or agreed to be 
paid." On the same 20th of May, 1879, an agreement of 
lease in writing was executed by the Manhattan and the New 
York, in like terms, in all respects, mutatis mutandis^ with 
the one between the Manhattan and the Metropolitan. 

Under these agreements of lease the Manhattan proceeded 
to operate the railways of the other two companies. On the 
2d of July, 1881, The People of the State of New York 
brought a suit, in the Supreme Court of New York, against 
the Manhattan, the complaint in which sets forth the fact of 
said leases and the operation of the roads under them by the 
Manhattan ; that by their terms it agreed to pay oatstanding 
obligations of the other two companies, amounting to very 
large sums, and, under them, is now liable for the payment 
of bonds of said companies, amounting in tl)e aggregate to 
about $21,000,000, and the interest thereupon, and for the 
payment of all taxes on said roads, and to pay to said com- 
panies certain additional fixed charges created by said leases, 
and which aggregate more than $1,300,000 per annum ; that 
the Manhattan is, and for a long time has been, operating said 
railroads at a great loss, which loss, for the year ending Sep- 
tember 30th, 1880, was, according to its estimates, about 
$500,000 ; that the continued operation of said road by it will 
result in further loss to it; that it owes, and for a long time 
past has owed, a sum exceeding $900,000 dollars for taxes 
unpaid, a large part of which has been due for more than one 
year ; that it has no assets with which to meet its existing 
indebtedness and the requirements of said leases, except the 
receipts which accrue to it, from time to time, from said roads, 



148 SOUTBERN DISTRICT OF NEW YORK, 

Flaggy V. The Manhattan Railway Company. 

which fall short of its annually accruing obligations to the 
amount of at least $1,000,000 per annum; and that, on or 
about April 25th, 1881, it addressed a communication in 
writing to the mayor, comptroller and corporation counsel 
of the city of New York, whereby it declared itself to be 
unable to defray its obligations, especially its indebtedness for 
taxes, and, in substance, declared itself insolvent, and showed 
it had been so for more than a year. The complaint prayed 
a dissolution of the incorporation of the Manhattan and a for- 
feiture of its corporate rights, privileges and franchises, and 
the appointment of a receiver of its property, and of a tem- 
porary receiver. On the 12th of July, 1881, the Manhattan 
answered the complaint, denying its insolvency, admitting 
that, during the year ending September 30th, 1880, the said 
roads were operated by it at a loss, and that, on or about the 
25th of April, 1881, it addressed a communication to the 
mayor, comptroller and corporation counsel of the city of 
New York, and denying the other material allegations of the 
complaint. On the 13th of July, 1881, the Supreme Court, 
by Mr. Justice Westbrook, after a hearing of both parties, 
appointed John F. Dillon and Amos L. Hopkins to be tem- 
porary receivers of the Manhattan. On the 23d of July, 
1881, the New York presented to the Supreme Court a peti- 
tion in said suit, praying that the Manhattan and the receivers 
be directed to deliver over to the New York its railways and 
other property. The petition alleges that the Manhattan owes 
the New York, for gross rental, dividend rental and interest on 
mortgage bonds, |465,000, and has not paid the taxes assessed 
on the New York for 1879 and 1880 ; that the New York owes 
no debts except its first mortgage bonds to the amount of 
$8,500,000, and claims for damages and taxes, which the Man- 
hattan is bound to ])ay, and has a considerable cash surplus in 
hand ; that the Metropolitan owes first mortgage bonds to the 
amount of $10,818,000, and second mortgage bonds to the 
amount of $2,000,000 ; that the net earnings of the railways of 
the New York for the last two years have been more than 
enough to pay the interest on its bonds and dividends of at 



DECEMBER, 1881. 149 



Flagg V. The Manhattan Railway Company. 



leafit 10 per cent, to its shareh oldens, but the net earnings of 
the railways of the Metropolitan have been barely enough to 
pay the interest on its bonds ; that the dividend rental paid 
to the Metropob'tan for the six months prior to July, 1881, 
has been paid out of the earnings of the New York ; that the 
indebtedness of the Manhattan to the New York is increasing 
every day, and the railways of the New York and the Metro- 
politan are now run at the expense and risk of the New York ; 
that the structures and rolling stock of the New York and the 
Metropolitan have not been kept up to the standard required 
by the tripartite agreement and the leases, and the falling off in 
this respect has been greater on the New York railways than 
on the Metropolitan; that the Manhattan has kept up the 
stractores and rolling stock of the Metropolitan better than it 
has kept up those of the New York; that a considerable 
number of the engines of the New York have been sold by 
the Manhattan, which has neither replaced the same nor paid 
the proceeds to the New York ; and that the New York, if 
it got back its railways in their present condition, would have 
to pay a large sum to replace its rolling stock and structures 
in the state in which the Manhattan took them. This peti- 
tion was brought to a hearing before Mr. Justice Westbrook 
on the 14th of September. No decision on it being made, the 
New York, on the 30th of September, presented a supple- 
mental petition, praying the same relief, and setting forth 
that since the default of the Manhattan in not paying to the 
New York the various sums of money which were due on 
July 2d, ninety days have elapsed, the last day of the ninety 
being September 29th ; that none of said moneys have been 
paid except $50,000, paid before the former petition was 
brought ; that on the 29th of September the New York de- 
manded of the Manhattan and of its receivers payment of 
said sums, but they were not paid ; that, by reason thereof, a 
forfeiture of said leasehold estate has accrued to the ^ew 
York ; and that it is entitled to the possession thereof. This 
supplemental petition was brought before the Court on the 
8d of October, and, after hearing the plaintiffs in the suit 



160 SOUTHERN DISTRICT OF NEW YORK, 



Flagg V. The Manhattan Railway Compaoy. 



and the receivers and the New York, the Metropolitan and 
the Manhattan, an order wae made giving leave to the Man- 
hattan and the Metropolitan to answer on or before October 
5th, and directing that the supplemental petition be con- 
sidered as part of the original petition. On the 8th of Octo- 
ber, 1S81, the receivers pnt in an answer to the petition of 
the New York, and the Manhattan pnt in an answer to it 
similar to the answer of the receivers. The answer sets up 
that, on or aboul August 31st, 18S1, one Watson brought a 
snit, in this Court, by leave of the said Supreme Court, in 
behalf of himself and all other stockholders of the Manhattan, 
against the New York and the Metropolitan and the receivers, 
bj filing a bill of complaint and serving process on the de- 
fendants, the same being wliat is known as a stockholder's suit, 
and, in substance and effect, a suit by the Manhattan against 
the New York and the Metropolitan, to have judicially deter- 
mined whether the New York and also the Metropolitan are 
not indebted to the Manhattan each in the sum of |6,500,000, 
the bill alleging an indebtedness of the New York to the 
Manhattan of $6,500,000, and seeking to enforce such lia- 
bility, and praying an acconnting of the operations of the 
lease from the New York, and that the New York be decreed 
to pay to the Manhattan or to the receivers such sum as may 
be found due ; that the legal rights and equities of the New 
York and the Manhattan are necessarily involved in said suit, 
and the Supreme Court ought to leave the rights of' the par- 
ties to be determined therein on issnes regularly made and 
tried on proof ; that the Supreme Court should not, as a Court 
of equity, enforce the forfeiture asked, but leave the New 
York, by ejectment or other remedy at law, to recover pos- 
session of the property ; that there are $13,000,000 of Man- 
hattan stock outstanding in the hands of numerous and 
scattered holders ; that the effect of granting an order of for- 
feiture will be to destroy the value of such stock, beyond 
repair; that on the last day of September an injunction order 
was in force, granted by Mr. J nstice Westbrook in said suit, 
restraining the Manhattan and its officers from interfering in 



DECEMBER, 1881. 151 



Flagg V, The Manhattan Railway Company. 



any way in the business of the Manhattan ; that the three com- 
panies are, and were on the 30th of September, by an injunction 
issaed in a suit in this Court, each of them enjoined from 
paying any taxes imposed on the capital stock and personal 
property of any one of them, by the city of New York, for 
the year 1880 ; that the New York, in a suit brought by it, 
in July, 1881, against the Manhattan and the Metropolitan, 
obtained an injunction order restraining the Manhattan from 
parting with any moneys then in the possession or under the 
control of the Manhattan, which had been or might be received 
by it from traflSc on any of the railways of the New York, 
except as required strictly for the operation of the railways of 
the New York leased to the Manhattan, which injunction was 
in force on the last day of September ; that tl\e Manhattan 
is not in default for not paying taxes assessed on the New York 
for the years 1879 and 1880 ; that, as to the remainder of the 
taxes assessed on the New York, the Manhattan, because the 
taxes were excessive, unequal and illegal, determined, with 
the concurrent consent of the New York and the Metropoli- 
tan, that payment of them should be refused, and proceedings 
be taken to review such unlawful taxation, and such proceed- 
ings were taken and are pending, in the name and at the 
request of the New York, to contest the legality of said taxes 
and the obligation of the Manhattan to pay them ; that the 
alleged default of the Manhattan in not paying the taxes 
asBCBsed upon the New York in the years 1879 and 1880 was 
in accordance with the express instructions of the New York 
to that effect, and the action of the Manhattan in relation 
thereto was essential to the protection of the rights of. the 
companies parties to the tripartite agreement, and of the 
atockholders of each of said companies ; and that, on or about 
the 1st of October, 1881, the New York and the Metropolitan 
demanded of the receivers the payment of rent alleged to be 
due to them respectively from the Manhattan under said 



Mr. Justice Westbrook rendered a decision on the petition 
of the New York, at a date stated in the bill in this suit to 



162 SOUTHERN DISTRICT OP NEW YORK, 

Flagg «. The Manhattan Railway Company. 

have been on or about the 14th of October, 1881. The de- 
cision refers to the fact that in the tripartite agreement the 
Manhattan agrees to issue and deliver to the New York and 
the Metropolitan its two bonds, each for $6,500,000, payable 
on demand, one to a trustee for the stockholders of the New 
York, and the other to a trustee for the stockholders of the 
Metropolitan, with authority to the trustees respectively to 
use the same, if they see fit, in payment for the stock of the 
Manhattan at par ; and that the said bonds were executed and 
exchanged for stock in the Manhattan, so that the New York 
and the Metropolitan, or their stockholders, became the ownera 
of the entire capital stock of the Manhattan, then amounting 
to $13,000,000. Mr. Justice Westbrook held that the mere 
appointment of the receivers did not terminate the lease, nor 
did the insolvency of the Manhattan, if it were insolvent ; that 
the Court had no power to settle the questions involved sum* 
manly, or otherwise than in an action regularly instituted by 
the New York to recover the property ; that the failure to 
pay the taxes did not forfeit the lease, because the New York 
had approved the non-payment, and because there was a prop- 
er question as to the lawfulness of the taxes not paid ; and 
that the testimony as to a breach of the lease by not keeping 
the road of the New York in repair, was conflicting. As to 
the default for 90 days in paying rent, the judge remarked, 
that the New York had obtained the said injunction against 
the Manhattan, and could not enforce a forfeiture arising from 
the non-payment of money, when it had itself enjoined the 
Manhattan from using the principal part of its revenue for 
any such purpose. The Judge then proceeds to say ; " Waiv- 
ing, however, this point, there is another of great importance, 
also made by said answers of the Manhattan Company and 
the receivers, which will now be stated. It will be remem- 
bered that the capital stock of the Manhattan Company is 
$13,000,000. This entire stock was transferred and given to 
the New York Company and the Metropolitan Company, in 
professed payment of the leases made to the Manhattan Com- 
pany, $6,500,000 to each. It is true this was not directly 



DECEMBER, 1881. 158 



Flagg V. The Manhattan Railway Company. 



done, for the form was the execatiou of two bonds bj the 
Manhattan CJompanj, of $6,500,000 each, the one to a trustee 
for the benefit of the New York Company, and the other to a 
tnifitee for the benefit of the Metropolitan, which bonds were 
exchangeable for the stock of the Manhattan Company at par, 
md Bach exchange was immediately made. The directors of 
the Manhattan Company were persons who were directors of 
the other two companies. By the terms of the lease the 
Manhattan Company was to pay the bonded debt of the other 
companies, with the interest, and also an annual dividend of 
ten per cent, on the capital stock of the lessor companies, in 
quarter yearly payments. The plain effect of this transaction 
is manifest. The lessor companies, being the owners of the 
stock of the lessee company, and their directors being its di- 
rectors, the individaals owning the stock of the former reaUy 
agreed with themselves to pay themsdves a large and liberal 
rental for the nse by themselves of their own property. 
This was the real transaction ; bnt, as individuals were con- 
cealed nnder the cloak of corporations, the apparent transac- 
tion, which alone the general public would be apt to see, was 
a leasing from two independent corporate bodies to a third 
equally independent. Such leasing, however, was at a rental 
which, if the estimates of the earning capacity of the leased 
roads, submitted upon this motion by the petitioner, to prove 
the bankruptcy of the tenant company, are accurate, it was 
impossible for such company to pay. The individuals who 
had thus extracted the life from the lessee company, by the 
provisions for the payment to themselves of liberal dividends^ 
and the absorption of its entire stock, proceeded to divide, and 
did divide, such stock among themselves, and then disposed of 
it to the general public, thus shifting the burden of paying 
rent from themselves to others, and actually receiving from 
Bucb strangers to the original transaction, large sums for the 
privilege of assuming burdens they could not discharge, and 
which could only result in the restoration to them of the prop- 
erty leased, and the absolute loss by the buyers of Manhattan 
atock of their whole purcliase price. To recover payment for 



154 SOUTHERN DISTRICT OF NEW TORK. 

Flagg V. The Manhattan Railway Company. 



this stock from the two lessor compaDies, an action is now pend- 
ing in the United States Circuit Court for the Southern Dis- 
trict of New York, brought by John C. Watson, a stockhold- 
er of the Manhattan Company, to which suit, by permission 
of this Court, the receivers appointed in this action are par- 
ties. The existence of this action, and the grave question 
which it presents, are urged, both by the Manhattan Coih- 
pany and the receivers, as reasons why, in advance of the de- 
termination thereof, this Court should not surrender the 
property it holds by its receivers. It would, perhaps, be im- 
proper to express an opinion upon the merits of this action, 
further than to say that it presents reasonable grounds for ju- 
dicial inquiry. As a rule, stock purchased of a corporation 
must be paid for either in cash or its equivalent ; and, if not 
so paid for, the money which it represents can be recovered. 
The answer of the petitioning company is, of course, that the 
stock was paid for by the lease which it gave. Whether, 
however, this was a honafide exchange of a substantial thing, 
which the law can treat and regard as a payment for the stock 
transferred, or the contrary, is the point which that suit pre- 
sents. Leaving out of view the very grave question of the 
power of the lessor companies to lease its roads, and of the 
lessee company to accept them — which is not considered, be- 
cause not presented nor argued, but which leases, if illegal 
because ultra vireSy would leave the stock of the Manhattan 
Company entirely unpaid for — is it not most apparent that the 
innocent holders and purchasers of stock of the Manhattan Com- 
pany have grave questions to submit to the Court, both as 
against the lessor companies, and also their stockholders, who 
placed the Manhattan stock upon the market to their great in- 
jury ? It is enough for present purposes, without passing di- 
rectly upon the merits of the Watson suit, to say that that which 
is unjust is unlawful, and for every unlavrf ul act done to anoth- 
er to his injury the law affords a remedy. Whether any of the 
apparently bald facts which have been mentioned can be ex- 
plained so as to give them a diiferent color, is a question for the 
trial. As they appear upon this motion to me, it is plain that 



DECEMBER, 1881. 155 



Flagg V. The Manhattan Railway Company. 



they should not be ignored, and the property asked for surren- 
dered npon the ground of the non-payment of obligations, in- 
curred by the lease, when, perhaps, atrial of the action pending 
may determine that the Manhattan Company is not a debtor to, 
but a creditor of, the petitioner." After thus reaching a con- 
clusion, on the merits, adverse to the relief sought, the Judge 
held, that, as the application was one addressed to the discre- 
tion of the Court, and as it involved grave and difficult ques- 
tions of law and fact, it ought to be disposed of by an action 
and not by a motion. He added : ^' To the general objection 
of deciding such grave questions as this application involves 
so summarily, is added one growing out of the tripartite 
agreement hereinbefore detailed. A sort of quasi-partner- 
ship was thereby formed between the three contracting par- 
ties. The Metropolitan Company joins its objections to those 
of the Manhattan Company, and protests against the granting 
of the petition, and claims the right to be heard by a formal 
suit upon the issues which have been presented. Their re- 
quest is reasonable, and the relief asked for must be denied 
upon the ground of discretion also, without prejudice, how- 
ever, t'O the right of petitioner to bring an action against the 
receivers, leave to do which will be granted." The portions 
of the tripartite agreement thus referred to as forming a sort 
of quasi-partnership are, a provision providing for building 
certain parts of the railway -structures at the joint expense of 
the New York and the Metropolitan, and a provision (Article 
14) that whenever, in any fiscal year, the Manhattan shall 
elect to declare a dividend of more than ten per cent, on its 
capital stock, the Manhattan shall pay to the New York and 
the Metropolitan a sum sufficient to enable them to pay as 
large a dividend in excess of ten per cenL^ on the stock of the 
New York and the Metropolitan, as shall be declared on the 
stock of the Manhattan, in connection with the other provis- 
ions of that agreement. 

Such was the condition of the litigation between or af- 
fecting the three companies, so far as it is material to refer to 
it^ when, on the 22d of October, 1881, the agreement in writ- 



166 SOUTHERN DISTRICT OF NEW YORK, 

Flagg V. The MAnhattan Railway Company. 

ing was made between them, out of which the present Boit 
arises. It sets forth, as part of it, copies of the tripartite 
agreement and of the two leases. It then recites that poesea- 
sion of the railways and property leased was delivered to the 
Manhattan and it continued in the possession and operatioD 
thereof until July 14th, 1881, when possession thereof was 
delivered to said receivers, who are still in possession thereof, 
operating them ; that '^ it has been found impracticable to 
carry out the various terms and conditions imposed by said 
agreement and leases on the Manhattan ; " that the interests 
of each of the parties, as well as the interest of the pablic, 
still require that the lines of railway shall continue to be 
operated xmder a single management ; and that the pardea, 
^^ for the purpose of settling sAl the matters and difierenoes 
between them, and for continuing the operation of said prop- 
erties and railways by a single management," have agreed to 
modify the said agreement and leases as hereinafter set forth. 
It then provides as follows : (1.) The Manhattan shall con- 
tinue to possess and operate the properties and railways for 
the period and on the terms agreed in the leases, except as 
^' herein " modified or changed, such possession to commence 
as soon as the properties can be obtained from the receivers. 
(2.) The Manhattan, from moneys received by it on acquiring 
possession of the properties, and all moneys thereafter ac- 
quired by it from the operation of them, after the payment 
of operating expenses and of all lawful taxes and assessments 
against either of the parties or its property, and before paying 
the suras mentioned in clause 3, shall pay 1. To the New 
York, all sums of money due and owing to it under the terms 
of the lease from it, on the 1st of July, 1881. 2. To the 
Metropolitan, in the same manner, and out of said moneys 
the interest due on its bonds, as provided in the lease from it, 
from the 1st of January, 1881. (3.) After making the pay- 
ments provided for by clause 2, all moneys received by the 
Manhattan from the operation of the properties shall be used 
by the Manhattan 1. For the payment of operating expenses 
and maintenance of structures and equipment. 2. For the 



DECEMBER, 1881. 157 



Flagg V. The Manhattan Railway Company. 



paymeDt of all taxes and aesessments lawfully imposed upon 
either of the parties, or its properties, or the income there- 
from. 3. For the payment of the interest on the bonds of 
tlie 27ew York and the Metropolitan. 4. For the payment to 
each of them of the rental of $10,000 per annnm, as set forth 
in the leases. 5. The Manhattan shall pay to the TSew York 
annually, dnring the continnance' of the leases, a sum of 
money eqnal to 6 per cent, per cmnum on the amonnt of the 
present capital stock, to wit, $6,500,000, of the New York, 
in equal quarterly payments of $97,500, on the first days of 
January, April, July and October, the first to be made Jan- 
uary 1st, 1882. (i. The Manhattan shall pay to the Met- 
ropolitan annually, during the continuance of the leases, a 
sum of money equal to 6 per cent, per annum on the amount 
of the capital stock of the Metropolitan, in equal quarter 
yearly payments, on the first days of January, April, July 
and October, the first to be made January 1st, 1882. 7. The 
several payments enumerated in the foregoing 6 subdivisions 
of clause 3 shall be made, and shall have preference over one 
another, in the order so enumerated, and all moneys received 
by the Manhattan from the operation of the properties, after 
making said payments, shall be the property of the Manhat- 
tan, and shall be retained by it for its own use and benefit, 
subject to the covenants ^' herein " contained, and to the un- 
modified covenants of the leases. 8. The sums provided to 
be paid by subdivisions 5 and 6 of clause 3 shall only be pay- 
able out of the moneys received by the Manhattan from the 
operation of the properties prior to the dates respectively at 
which said payments by the terms of the agreement become 
dua (4.) Tiie provisions of the tripartite agreement and the 
leases are modified so as to conform to '^ the provisions of this 
agreement," and the New York and the Metropolitan release 
the Manhattan from all agreements to pay to the New York 
and the Metropolitan, or either of them, ^^ the sum or sums of 
money as is particularly provided in " Article 14 of the tri- 
partite agreement, and Article 2 of the leases. There is, also, 
a clause whereby each of the parties releases the others, and 



168 SOUTHERN DISTRICT OF NEW YORK, 

Flagg V. The Manhattan Railway Oompaoy. 



each of them, ^' of and from all and all manner of action and 
actions, cause and causes of action, suits, debts, dues, sums of 
money, claims and demands whatever, whether in law or in 
eqnity, against either of the other parties hereto, except such 
as are embraced in and created by the terms of said agree- 
ment and leases, as modified, and the terms and provisions of 
this agreement." By a supplemental agreement of the same 
date, executed by the three parties, it was further agreed, that 
the Manhattan will pay to the New York all snms due and 
owing to it under its lease to the Manhattan, np to and in- 
cluding October 1st, 1881, and that the Manhattan will pay 
to the New York the snm of 6 per cent, on its present capital 
stock, ^^ in the manner and at the times stated in the foregoing 
agreement, and the payment thereof shall be cumulative, not- 
withstanding any provision in the eighth subdivision of the 
third clause thereof." 

The bill in this suit is brought by the plaintiffs in their own 
behalf, and in behalf of all others, shareholders in the Metro- 
politan, similarly situated with the plaintiffs, who may come 
in and contribute to the expenses of the action and consent to 
be bound by the decree herein. It alleges, that, immediately 
after the execution of the tripartite agreement and the leases, 
and the delivery of its road to the Manhattan, the Metropol- 
itan, in order to secure to its shareholders the benefit of Arti- 
cle 2 of the lease, and in order to enhance the value of the 
shares of said stock, caused to be printed on the stock certifi- 
cates of the Metropolitan the following memorandum : '^ The 
Manhattan Eailway Company, for value received, has agreed 
to pay to the Metropolitan Elevated Railway Company an 
amount equal to ten per cent per amium on the capital stock 
of the latter company, that is to say, on six and one-half mil- 
lions of dollars, payable quarterly, commencing January 1st, 
1880;" that the capital stock of the Metropolitan then was, 
and still is, $6,500,000, divided into 65,000 shares of the par 
value of $100 each; that all the certificates of said shares 
issued by the company after the execution and delivery of 
the tripartite agreement and leases, were issued with said 



DECEMBER, 1S81. 159 



Flagg tr. The Manhattan Railway Company. 



memorandnm printed thereon; that the said shares were 
largely dealt in in the city of New York, and were bought and 
Bold as the stock npon which an annnal dividend of 10 per 
eerU. was granted by the Manhattan, and as, upon the sale and 
transfer, from time to time, of shares of said stock, certificates 
were surrendered for cancellation and re-issue, the Metropol* 
itan issued new certificates containing the same memorandum^ 
and no shares were dealt in, after January, 1880, which did 
not contain said memorandum ; that, during the year 1880, 
the Manhattan paid to the Metropolitan quarterly, and the 
holders of shares of the Metropolitan received, the said divi- 
dends '^ so guaranteed," and said dividends were also paid in 
January and April, 1881, but thereafter the Manhattan made 
default in the payment of the dividend due July 1st, 1881, 
and has hitherto continued in default ; and that each of the 
plaintiffs purchased his stock as stock upon which a dividend 
of ten per cent, was guaranteed by the Manhattan, and with 
knowledge of the general provisions of the tripartite agree- 
ment and the leases, and the certificates issued to the plaint- 
iffs by the Metropolitan have each of them on it the said 
memorandum. The bill recites the appointment of the re- 
ceivers, and alleges that, on or about the 25th of October, 1881, 
by order of the Court, the property was surrendered by the 
receivers to the Manhattan, and the receivership was vacated. 
It sets forth the fact of the application of the New York for 
the restoration of its property and of its denial, and the mak- 
ing of the agreement of October 22d. It alleges that the suit 
brought on behalf of The People was not ended until about 
November 17th ; that there has been no material change in 
the alleged insolvent condition of the Manhattan which made 
the receivership proper, other than such as may result from 
the execution of the agreement of October ^2d ; that, during 
the receivership, negotiations were entered upon between some 
of the oflicers of tbe three companies, looking to a modifica- 
tion of the terms of the tripartite agreement and the leases ; 
and that, during the pendency of said negotiations, it was given 
out, and the plaintiffs expected, that the terms of any arrange- 



160 SOUTHERN DISTRICT OF NEW YORK, 

Flagg V. The Manhattan Railway Company. 

ment which should be concurred in by the officers negotiating 
on behalf of the Beveral companies would be submitted to the 
shareholders for approval, but the plaintiffs have never been 
consulted in respect to said proposed agreement, and have 
never consented thereto, and have only been able to ascertain 
the terms of the same with considerable difficulty. The bill 
further alleges, that, by the agreement of October 22d the 
officers of the Metropolitan have undertaken to subordinate 
the rights and the position of the Metropolitan to the New 
York, especially by releasing all claims to the dividends ac- 
cruing July 1st and October 1st, amounting to $325,000, 
whereas the same amount due to the New York is to be paid, 
and, in reference to future dividends, by waiving altogether 
the guaranty of the Manhattan, and making the dividends 
payable to the Metropolitan payable only after the dividends 
to the New York shall have been first paid, and out of any 
surplus earnings that may be left ; that, by the supplemental 
agreement of the same date, the rights and position of the 
Metropolitan were further subordinated to the New York, in 
that the dividends agreed to be paid to the New York were 
to be cumulative, while those due to the Metropolitan could 
never be paid out of any earnings, however large, received 
after the date of the accruing of the dividend ; that the officers 
of the Metropolitan who have actively labored to consummate 
said arrangement^ have betrayed its true interests, and the 
rights and interests of its shareholders, influenced thereto by 
corrupt motives and by personal interests hostile to their posi- 
tion and duties as its directors ; that, at an election of direct^ 
ors held in July, 1881, Bussell Sage and Jay Gould became, 
for the first time, directors of the Metropolitan ; that the Man- 
hattan, being shortly thereafter, and on or about July 13th, 
placed in the hands of receivers, its shares became very much 
depressed in value, and in August following sold as low as 
$16 per share ; that thereupon said Gould, being a director of 
the Metropolitan, began purchasing shares in the Manhattan, 
and, on October 8th, had standing in his own name, on the books 
of the Manhattan, 20,000 shares; that 1,000 shares then stood 



DECEMBER, 1881. 



161 



Flagg V. The Mmhalstaii Railway Company. 



in the name of his son George J. Gould, 1,100 shares in the 
name of W. E. Connor, and 12,400 shares in the name of W. E. 
Connor & C!o., who have heretofore acted as the brokers of said 
Oonld in the purchase and sale of stocks, and in which firm 
said Gould is a partner ; that said 14,500 shares belong to, or 
are held in the interest of, said Gould ; that, when said agree- 
ment was made, he had invested in the stock of the Manhat- 
tan over $500,000 ; that said Sage, a director and the presi- 
dent of the Metropolitan, is largely interested in the stock of 
the Manhattan, though his name appears on its stock reg- 
ister as the holder of only 100 shares ; that said Gould is, in 
his own name, the largest holder of stock in the Manhattan, 
substantially all of which he has acquired since he became a 
director of the Metropolitan ; that he, together with said Sage, 
took an active and the principal part in the negotiations which 
led to the agreement of October 22d ; that the negotiations 
on the part of the New York were conducted by its president^ 
Gyrus W. Field ; thnt, though he holds, as appears by the 
stock register of the Manhattan, only 100 shares of its stock, 
he has become largely interested in the Manhattan, and began 
to purchase shares of it as soon as it seemed probable said 
agreement would be executed, and in view of its being carried 
into effect ; that said Sage, who, as president of the Metro- 
politan, executed said agreements of October 22d, and said 
Gould, who actively influenced their execution, were, from 
their fiduciary position, disqualified from executing the same 
without the consent of the shareholders of the company they 
represented ; and that the same were executed corruptly, for 
the personal ends of the signers of the same. The bill further 
alleges, that the Metropolitan, oti or about November 1st, 1879, 
executed a mortgage on its line and property, second and 
subordinate to the mortgage referred to in the tripartite agree- 
ment, for the purpose of raising funds to complete and im- 
prove the unfinished lines, as provided in said agreement, such 
second mortgage being made to secure $4,600,000 of bonds; 
that only $2,000,000 thereof had been issued and negotiated 
at the time of said receivership ; that now the Metropolitan 
Vol. XX.— -11 



162 SOUTHERN DISTRICT OF NEW YORK, 

flagg V. The Manhattan Railway Company. 

has proposed to issue, the residue of the bonds provided for in 
said second mortgage, and to deliver them for negotiation to 
the Manhattan, and allow it to exercise and nse the proceeds 
of the bonds. It also alleges that the Metropolitan, being now 
in the control of the directors who concurred in the execution 
of the modified agreement, is shaping its action so as to com- 
pel dissentient shareholders to acquiesce in the terms of said 
agreement, it having stamped as cancelled the guaranly 
printed on its stock certificates, and, upon a transfer of anj 
certificate containing the guaranty, refusing to issue to the 
transferee a similar certificate, or any other than a certificate 
with the guaranty cancelled ; that, in aid of this scheme, they, 
immediately after the execution of said agreement, closed the 
transfer books of the company ; and that the acts and doings 
of the company, under the management of its present direct- 
ors, are in hostility to the true interests of the shareholders, 
and planned in order, through the operation of the market and 
the customs of the Stock Exchange, to deprive dissentient 
shareholders of their just and equitable rights. The prayer 
of the bill is (1) for a decree that the two agreements dated 
October 22d are null and void and inoperative as against the 
plaintiffs : (2) that the Manhattan be perpetually enjoined 
from performing the same, so far as they change, or undertake 
to change, the terms of the tripartite agreement and the leases ; 

(3) that the Metropolitan be enjoined, until the further order 
of the Court, from delivering any of its money or property to 
the Manhattan, or from issuing to it any of its mortgage bonds 
for negotiation, or from allowing it to receive the proceeds of 
any such bonds, or from changing the form of the stock cer- 
tificates of the Metropolitan, in respect to the matters printed 
thereon, or doing any other acts which, in respect to the deal- 
ings in said shares, or the terms of the certificates, or their 
registration, shall modify, impair or embarrass any holders of 
the certificates having the said memorandum printed thereon ; 

(4) that the Manhattan be enjoined from paying or transfer- 
ring to the New York any moneys or choses in action under 
the agreement of October 22d, and from performing any part 



DECEMBER, 1881. 168 



Flagg V. The Manhattan Rulway Company. 



of the agreemeDts of that date, so far as they change, or nn- 
dertake to change, the terms of the tripartite agreement and 
the leases. 

The bill is not signed or verified by any of the plaintiffs. 
It is signed by the plaintiffs' solicitors, and the affidavit of 
one of them is appended to it, to the effect that he has read 
the bill, that the facts therein stated are true to the best of 
his knowledge and belief, that the ownership by the plaintiffs 
of the shares of stock, as alleged, has been stated by them in 
petitions signed for the purpose of being admitted to the 
benefit of the suit of Gillett against the same defendants, and 
that the reason why sach verification is not made by the 
plaintifb is their absence from the State. Those petitions 
are not brought before this Court. 

The two agreements of October 22d are signed by the 
New York by said Field, as president ; by the Metropolitan 
by said Sage, as president ; and by the Manhattan by B. M. 
Gallaway, as president. 

The plaintiffs now move for a preliminary injonction to 
the purport prayed in the bill. The motion is supported and 
opposed by affidavits. The facts hereinbefore set forth are 
free from dispute. The bill is brought by the plaintiffs in their 
own behalf, and in behalf of all others, shareholders in the 
Metropolitan, similarly situated with the plaintiffs, who may 
come in and contribute to the expenses of this suit and con- 
sent to be bound by the decree herein. A holder of 50 shares 
of the stock, bought in February, 1881, makes oath that he 
bought them with a knowledge of, and in reliance on, the 
guarantee of the Manhattan, and knowing that he had an in- 
terest in the earnings of the Manhattan after the payment of 
the guarantee to the leased lines and dividends on the Man- 
hattan stock. A holder of 148 shares of the stock bought in 
1880, makes oath that the inducement to him to purchase it 
was the said guarantee and the positions of equality of the 
New York and the Metropolitan ; and that the action of the 
directors of the Metropolitan, in reducing the dividend on 
said stock, was without his consent and is a great damage to 



16i SOUTHERN DISTRICT OF NEW YORK, 

Flagg V. The Mftnhattan Railway Company. 

him, and is illegal and void. These affidavits may be re- 
garded, perhaps, as supplying the defect in the verification 
of the bill. 

1. The principal ground urged in support of the motion 
is, that the agreements of October 22d impair vested rights 
of the stockholders of the Metropolitan ; that each stockholder 
has for himself such vested rights ; and that those rights can- 
not be impaired as to him without his consent. It is urged, 
that, after the Metropolitan lease was executed, there was no 
property left to it upon which anything in the nature of a 
dividend-paying stock could be based, except the revenue to 
be derived from the terms of the lease ; that the value of the 
capital stock consisted wholly in such revenae; that the 
$162,500 to be paid quarterly to the Metropolitan was the 
only profit which investors in the stock could hope to realize 
from their investment ; that the stock is stock of a special 
character, entitled to an agreed portion of a rental to be paid 
by the Manhattan ; that the agreement of the Manhattan ia 
truly expressed in the memorandum on the certificates; that, 
by the whole transaction, the Metropolitan agrees to distrib- 
ute such portion of the rental, as a dividend, among its stock- 
holders ; that the Metropolitan, therefore, cannot surrender 
the guaranty of the Manhattan ; that such guaranty mast be 
regarded as a promise to the Metropolitan for the benefit of 
its stockholders ; and that they are entitled to prevent the 
Metropolitan from diverting the fund or impairing the con- 
tract out of which the right to it comes. 

It is undoubtedly true that the object of the provisions of 
the lease in regard to the tenper cent, per annum on $6,500,000, 
to be paid by the Manhattan to the Metropolitan, was to 
enable the stockholders of the Metropolitan to have, if possi- 
ble, during the continuance of the lease, a quarterly dividend 
of 2iper cent, on their stock. But I fail to see any contract 
to that efiTect between the Manhattan and the individual 
stockholders of the Metropolitan, or between such stockhold- 
ers and the Metropolitan. The language of Article 2 of the 
lease is, that the Manhattan guarantees to the Metropolitan 



DEGEMBEB, 1881. 165 



Flagg IF. The Manhattan Railway Company. 



ftn annua] dividend of 10 per cent on the capital stock of the 
Metropolitan to the amount of $6,600,000, " that is to say." 
The gnaranty is to the Metropolitan, not to its stockholders 
severally. The Article then goes on to interpret the gaaranty, 
and to show what it is, and at what times payments under it 
are to be made. It says, ^^ that is to say," the Manhattan will, 
each and every year during the term, beginning with October 
1st, 1879, pay to the Metropolitan $650,000, free of all taxes, 
in equal quarterly payments of $162,500 each, on the first 
days of January, April, July, and October, in each year, the 
first to be made January 1st, 1880. There is no agreement 
either by the Manhattan or by the Metropolitan that these 
rams shall be paid to the stockholders of the Metropolitan. 
Then there is the further provision that the Manhattan will, 
from time to time, execute in proper form a guaranty ^^ to the 
above effect," printed or engraved on the certificates of stock 
of the Metropolitan, and, as such stock certificates are sur- 
rendered for cancellation and re-issue, will, from time to 
time, at the request of the holder, " renew such gud^anty " 
upon all re-issued certificates. This was never done. The 
Manhattan never executed anything on the certificates. The 
Metropolitan issued the certificates with an unexecuted mem- 
orandum, which does not contain the word '^ guaranty," and 
contains no contract or agreement or guaranty of any kind, 
but only a statement that the Manhattan '^ has agreed to pay 
to the Metropolitan " an amount equal to 10 per cent, per 
annum on the capital stock of the Metropolitan, that is to say, 
on $6,500,000, payable quarterly, commencing January 1st, 
1880. This was the interpretation put at the time on the 
agreement of the Manhattan, by the Metropolitan, and ac- 
cepted by each stockholder of the Metropolitan when he took 
his certificate. If any stockholder was entitled, on request to 
the Manhattan, to a gnaranty of any kind executed by it on 
his certificate of stock, he waived bis right to it. But, if he 
had asked for and received it, it would have been '^ a guaranty 
to the above effect," being a repetition of the agreement to 
make the quarterly payments to the Metropolitan, that is, an 



166 SOUTHERN DISTRICT OF NEW YORK. 

FUgg V. The Manhattan Railway Company. 

agreement to do what the memorandnm states that the Man- 
hattan had agreed to do. This wonld not have been anj * 
more of a contract between the Manhattan and the stock- 
holder, or between the Metropolitan and the Btockholder, 
than now exists. 

2. The case, therefore, is not one of anj vested right in 
the stockholders of the Metropolitan to the ten per cent pay- 
ments, but it depends on the general power of the directors 
of a corporation to make and modify its contracts. That 
power is well established in this Stata {Hoyt v. Thompwrt!^ 
Ext., 19 iT. Z., 207, 216.) Nor can the stockholders control 
that power. (MoCuUough v. JUoss, 6 Denio, 566, 675.) No 
statute or anthoritj is referred to which makes it necessary to 
the validity of the agreements of October 22d that they 
should have been approved by any one or more stockholders. 

8. The leases and the tripartite agreement and the agree- 
ments of October 22d were made under the authority of the 
Act of April 23d, 1889, {Zaios of New York, 1839, cAop. 
218, pf 195,) which provides, that '' it shall be lawful hereafter 
for any railroad corporation to contract with any other rail- 
road corporation for the use of their respective roads, and 
thereafter to use the same in such manner as may be pre- 
scribed in such contract." There is nothing to impeach the 
validity of that statute. The instruments referred to are 
contracts by the Manhattan and the other two companies for 
the use by the former of the roads of th& latter, on terms sat- 
isfactory to each of the latter, as determined by the votes of 
their Boards of Directors. 

4. It is urged that the question should be considered as if 
the Metropolitan, on the failure of the Manhattan to fulfil its 
covenants in the lease, had re-entered, and, as if the question 
were as to a new lease with terms sach as now obtain in the 
lease as modified. In this view the new lease is objected to 
as uli/ra vireSj because it appropriates the revenues of the Met- 
ropolitan, as a part of the general funds of the Manhattan, to 
pay preferred dividends to the New York. The contention 
is, that the Manhattan is to receive ail the earnings of the 



DECEMBER, 1881. 167 



Flagg V. The ManhatUn Railway Company. 



lines of the Metropolitan, and, after paying expenses, taxes, 
* interest, &c., is to pay, first, a dividend of 6 per cent, on the 
stock of the New York; and that, as the earnings of the 
Metropolitan are not to be kept separate, no such arrange- 
ment can be made without the consent of the stockholders of 
the Metropolitan. The question is not one of power, bnt of 
good faith. If, in good faith, the discretion and jadgment of 
the directors of the Metropolitan were fairly exercised, under 
the circunifitancee in which the affairs of the corporation were 
at the time, in view of all its embarrassments, and of the 
condition of the Manhattan, and of the litigations existing 
and threatened, and of the claims made against the Metro- 
politan and its stockholders, by the Manhattan and the stock- 
holders of the Manhattan, and of the relative conditions of 
the two properties, and of the past and probable prospective 
earnings of the roads of the New York and the Metropolitan, 
no Court will undertake to interfere with the exercise of such 
discretion and jndgment, even though, on the same facts, it 
might have arrived or may arrive at a different conclusion, 
and even though the stockholders of the Metropolitan might 
have arrived at a different conclusion. In this view the re- 
marks cited from the decision of Judge Westbrook become 
of great importance. His views in regard to the claim of the 
Manhattan for the $13,000,000 were calculated to have great 
weight, and it is shown they did have great weight, in regard 
to some of the terms of a new arrangement. The Manhattan 
had made two defaults in paying the dividend rentals, it had 
been put into the hands of receivers, it was alleged to be in- 
solvent, and it was asserting the claims for the $13,000^000. 
It waa perfectly clear that the interests of the public de- 
manded that the two elevated roads should be nnder one man< 
agement, and the interests of the public were the interests of 
the two lessor companies. The state of things was such that 
the common manager must be the Manhattan. Therefore, 
its obligations to the other two companies must be modified, 
because they were too onerous to be fulfilled. The only ques- 
tion was as to the new obligations. The evidence satisfac- 



168 SOUTHERN DISTRICT OF NEW YORK, 



Flagg V. The Manhattan Railway Company. 



torily shows that the roads of the Metropolitan were not 
earning enough net money, over expenses, repairs and taxes^ 
to pay the interest on its mortgage bonds, and that the New 
York was earning at least six per cent net, and enoagh more 
to make reasonable the preferences given to it over the Met- 
ropolitan in the new arrangement. By that arrangement the 
claims of the Manhattan for the $13,000,000 are released. 
Bat, whatever conclnsion a judicial tribunal would come to 
now, on proofs, as to whether the new arrangement was a wise 
and proper one for the Metropolitan to make, it is sufficient 
to say, that, on the evidence now presented as to what was 
before the directors of the Metropolit&n, and as to their 
action, they had a right to think, in good faith, that they 
were doing what was most judicious for their stockholders^ 
and they did what they did in good faith. 

5. It is contended that a fictitious necessity was created^ 
and that the stockholders of the Manhattan would have come 
forward to extricate it from its difficulties. I see no evidence 
of this. The directors of the Metropolitan had this question 
before them, necessarily, and passed upon it, and acted in 
view of it. 

6. It is alleged, in the bill, that Messrs. Sage and Oould, 
while acting as directors of the Metropolitan to make the. 
new arrangement on its behalf, were large holders of the 
stock of the Manhattan company, and that Mr. Field was at 
the time a large shareholder in the Manhattan. The directors 
of the Metropolitan who voted to approve the agreement of 
October 22d, were Messrs. Sage, Gould, Connor, Sloan, Dil- 
lon, Navarro, Stout, Dodge and Porter. Mr. Garrison was 
absent. Mr. Kneeland voted in the negative. Leaving out 
Messrs. Sage, Gould and Connor, 6 of the 10 present voted 
in favor of the agreement. As to the supplemental agree- 
ment, there were 10 directors present, Mr. Sloan being absent. 
Mr. Stout did not vote. Of the 9 voting, Messrs. Sage, 
Gould, Dillon, Navarro, Connor, Dodge, Porter and Garrison 
voted to approve the supplemental agreement, and Mr. Knee- 
land voted in the negative. Leaving out Messrs. Sage, Gould 



DECEMBER, 1881. 169 



flagg V. The Manhattan Railway Company. 



and Connor, 5 of the 9 voting voted to approve the supple- 
mental agreement. There were 11 directors in all. Nothing 
ia alleged in impeachment of the positions of Messrs. Sloan^ 
Dillon, Navarro, Garrison, Stout, Dodge or Porter. There- 
fore, whatever may be shown as to the positions of Messrs. 
Oonld, Sage and Connor, the legal aspect of the transaction 
is not affected. 

Mr. Gould was elected a director of the Metropolitan on 
Julj 9th, 1881. He states that at the time of making the 
settlement of October 22d, he had an interest of 2,500 sharea 
in the Metropolitan, and of 5,000 shares in the New York, his 
cash investment for the two being $710,354 21, while hia 
actual cash investment in the Manhattan was $599,031 25. 

Mr. Sage states that at the time of the agreements of Oc- 
tober 22d, he held about 1,200 shares of stock in the Metro- 
poHtan. He was appointed president of the Metropolitan in 
Jalj, 1881. He sajs that at that time he had about 800 
ahares of Manhattan stock, but within a few days thereafter 
" was short " of Manhattan stock, and from that time until 
after the agreement of October 22d bought no stock of the 
Manhattan nor became interested in any, except for the pur- 
pose of fulfilling previous contracts ; and that his pecuniary 
interest, if he ^^ had any, during all that period, was to raise 
the price of Metropolitan stock and depress the price of Man- 
hattan stock.'' 

Mr. Field states that he sold out all his Manhattan stock, 
except 13 shares, in November, 1879, and sold those in March, 
1880 ; and that he '^ never bought or became interested again 
in Manhattan stock until October, 1881," after he ^' became 
convinced that a compromise would be made." But he sus- 
tained no fiduciary relation to the stockholders of the Met- 
ropolitan. 

7. The concurrent testimony is that the Manhattan is now 
entirely solvent, made so, it is true, by the new arrangement, 
but still solvent. It is out of the hands of the receivers. 
The tripartite agreement and the leases, except as modified, 
are in force, and are in force as modified. The mortgage 



170 CONNECnCUT, 



The Western Electric Manitf. Go. v. The Aneonia Brass and Copper Co. 

bonds the issuing of which is sought to be restrained are to be 
issued, it appears, under the tripartite agreement and the 
leases, and pursuant to resolutions passed before the agree- 
ment of October 22d, and their proceeds are to be used in 
perfecting the structure and equipment of the Metropolitan, 
4ind in securing the safety of those who travel on the road. 

The motion for an injunction is denied. 

The bill in the Gillett suit is verified by the plaintiff 
therein. The motion for an injunction in that suit is denied 
and the restraining order is vacated. 



S, P. Nash^ for the plaintiff. 
27. 2>. Fidd^ for the defendants. 



The Western £LEcrrBio MANXTFAcruBmo Oompakt 
The Ansonia Bbass and Ooppeb Company. In Equttt. 

The two re-isaned letters patent, Nos. 6,954 and 6,955, fptmted Febroary S9th« 
1876, to the Western Electric BCannfactnring Company, as assignee of Joeepk 
Olmsted, each for an " improYement in insulating telegraph wires," being re- 
issues, in two divisions, (one for the process and the other for the product,) 
of a patent granted to said Olmsted July 2Srd, 1872, are Toid for want of 
novelty. 

The patented invention consisted in filling the pores of the covering of the wire 
with parafBne or wax and then compressiDg it and forcing the paraffins or 
wax into the pores, and was anticipated by a prior process of oomp rewiny 
bitumen into the pores of the covering of wire. 

(Before Sbipmak, J., Connecticut, December 21st, 1881.) 

Shipman, J. This is a bill in equity, foanded npon the 
alleged infringement of two re-issaed letters patent, granted 



DECEMBER, 1881. 171 



The Western Electric Mennf. Co. v. The AubodIa Braes and Copper Co. 

to the plaintiffs, as assignee of Joseph Olmsted, each for an '^ im- 
provement in insulating telegraphic wires," and dated February 
89th, 1876, and respectiyelj numbered 6,954 and 6,955, and 
being re-issues, in two divisions, (one for the process and the 
other for the product,) of a patent granted to said Ohnsted on 
July 23d, 1872. The specifications of each re-issue are the 
same, and accurately describe the patented improvement upon 
the method which was then commonly used for insulating 
office wire. The entire descriptive part of the two specifica- 
tions is in these words : " The method of insulating now in 
use consists in braiding over the wire a fibrous covering, after 
which it is dipped in wax, for the purpose of filling and closing 
its pores, and, after a subsequent scraping, to remove the sur- 
plus wax, it is ready for use. This method is, however, ob- 
jectionable, inasmuch as it leaves the covering in a very rough 
and soft condition, and fails to secure perfect insulation. In 
my improved method, after the wire has received its coating, 
I dip it in paraffine or wax, after which, instead of scraping 
off the surplus coating, I pass the whole through a suitable 
machine, which compresses the covering, and forces the par- 
affine or wax into the pores, and secures perfect insulation. 
By so compressing the covering, the paraffine or wax is forced 
into the pores, and the surface becomes and appears polished. 
Wire insulated in this manner is entirely impervious to the 
atmosphere, of greater durability, and less cumbersome than 
any heretofore made." The claim of the process patent is for 
" the method of insulating telegraph wire, by first filling the 
pores of the covering, and subsequently compressing this cover- 
ing,and thereby polishing its surface, substantially as described." 
The claim of the patent for the product is for '^ an insulated 
telegraph wire, the covering of which has its pores filled and its 
surface polished, substantially as described." The defect in 
the article coated with uncompressed paraffine was a leakage 
of electricity, which was probably owing to the shrinkage of 
the paraffine in the interstices of the fibrous covering while 
the melted paraffibae was cooling. The paraffine, which was 



172 coinyECTicuT, 



The Western Electric Manaf. Co. if. The Aosonla Braae aod Copper Co. 

compressed while in a plastic state, was thereby forced into 
the interstices of the fibres, and the defect was obviated. 

The defendants make and sell telegraph wire, which thejr 
say, in their answer, is " covered by braiding over the wire a 
fibrous covering, after which it is dipped in a preparation^ 
for the purpose of filling and closing the pores ; after which 
the same is sand-papered and rubbed and passes through re- 
volving dies, for the purpose of scraping off the surplus ma^ 
terial and consolidating and smoothening the surface of said 
remaining covering.^' They further admit that both paraffine 
and wax are component parts of the material which is used for 
insulating their wire. 

I shall spend no time upon the question of infringement^ 
which, I think, was clearly shown. The utility of the plaint- 
iff's article was also proved. 

The important question in the case is in regard to the pat- 
entability of the improvement, which consisted in compressing 
the plastic paraffine, by suitable machinery, after the fibrous 
covering and the paraffine had been applied. The mechanism 
for compressing was so well known that a description was un- 
necessary. The invention consisted in the discovery that com- 
pression of the plastic paraffine into the pores of the fibrouB 
covering, by any well-known mechanical appliances, would be 
advantageous. It did not consist in the discovery that cover- 
ing with paraffine or wax would be desirable, for, wire covered 
with braided fibrous covering and dipped in wax was in com- 
mon use, but the invention simply related to the substitution, 
in place of a mere scraping off of the rough dots of wax, of 
a pressing operation, for forcing the insulating material into 
more intimate contact with the fibrous material ; and, so far as 
the product is concerned, the invention related to a wire in- 
sulated and polished upon its surface, by means of compression 
of the waxed covering, as distinguished from the insulation 
and surface which was the result of non-compression of the 
same covering. 

Dundonald's British patent of 1851, Ko. 13,698, dedarea 
that he employed ^' bituminous material to cover, and thus in- 



DECEMBER, 1881. 173 



The Western Electric Manuf. Ck>. v. The AnsoniA Brass and Copper Co. 

snlate, the cond acting wires of electric telegraphs which 
are intended to be placed undergronnd." He farther says : 
'* The incasement of this wire with bitamen may also be 
effected by covering it with a filamentons material, which 
has been previonsly saturated with melted bitnmen, and then 
passing the wire so covered through a heated die or orifice, so 
as to melt or soften the bitumen upon the filamentous ma- 
terial, and press the whole of this coating against the wire, in 
such a way as to cause it to form one compact continuous cov- 
ering of the wire, and thus insure its insulation." The same 
general process of compression is found in Baudouin's British 
patent, No. 933, of 1857, for electric conductors. The speci- 
ilcation says : '^ The wire is passed through a bath of hot bitu- 
men, and has the superfinous matter removed by passing 
through suitable dies or parts, to scrape and smooth its sur-* 
face, and render it of uniform thickness. The first and sec- 
ond ribbons," (which are strips of material to be wound on 
the wire,) '' are also passed through bituminous or other suitable 
matter, to render them more impervious to electricity. The 
eoated and lapped wire is passed through suitable dies, to 
remove superfluous matter, to smooth down the lapping 
of the ribbons, and to compress and cause their proper adhe- 
sion." It thus appears, that the process of compression had 
been used, for some years before the date of Olmsted's pat- 
ent, in the manufacture of electric telegraph wire previously 
covered with cloth, and then coated with bitumen or fatty 
siibetances, and, having been so used, there is no longer pat- 
entability in compressing the parafSne covering of a wire 
coated with fibrous material. The patented process ^^ was 
simply the application by the patentee of an old process to a 
new subject, without any exercise of the inventive faculty, and 
without the development of any idea which can be deemed 
new or original in the sense of the patent law." {Brown v. 
Piper^ 91 U. 5., 37.) The patentee took the process of Dun- 
donald and of Baudouin, which they had applied to bitumen, 
and applied it to the wax covering which was in common use 
and had been found to be superior, for certain classes of wire, 



174 EASTERN DISTRICT OF mSW YORK, 

The N. T. and Baltimore Coffee Polishing Co. v. The N. Y. Coffiae Polishing Co. 

to any insulated coyering which had been previously used or 
guggeeted. The old process was applied to the new nse with- 
out substantial alteration 'or change. The process patent not 
stating a patentable invention, the product patent is in no 
better condition. 

The bill is dismissed. 

William W. Baldwin and George P. Barton^ for the 
plaintiff. 

WiUiam B. WoosteTy for the defendant. 



The New York aih) Baltimosb Ooffeb PoLisHma CoMPAinr 

vs. 

The New York Coffee PoLisHmo Company, Lditfed. 

In EQTJTrr. 

A bill in equity will lie, under § 666 of the Revised Statates, to obtain a direo- 
tion that the testimony of a witness be taken m perpetwan r^ menwrimii, 
where the plaintiff allege that he is using a process to the nse of which the 
defendant claims an ezclnsiTe right nnder a patent, that the patent is Tf^d 
for want of novelty, that, in case the defendant sues the plaintiff for infringe- 
ment of sud patent, the plaintiff relies, for his defence, on the testimony of 
the witness, that the witness had made public use, in the United States, of the 
said process, for upwards of 12 years before said patent was issued, that 
said witness is upwards of 90 years of age, that the defendant does not sue 
the plaintiff for infringement, and that the plaintiff cannot bring his rights 
to a judicial determination. 

(Before Bxnxdiot, J., Eastern District of New York, December 27th, 18S1.) 

Benedict, J. This case comes before the Court npon a 
demnrrer to the bill. The bill is filed to obtain at the hands 
of this Court a direction that the testimony of a witness 
named William li^ewell may be taken in perpettKtm rei me- 
moriam. The provision of statute under which the bill is 



DECEMBER, 1881. 175 



Tbe N. Y. and Baltimore Coffee PoliBhing Co. v. The N. T. Coffee Polishing Co. 

filed is found in § 866 of the Beyised Statutes, where it is 
proyided, that '^ any Circuit Coart, apon application to it as 
a Conrt of Equity, may, according to the usages of Chancery^ 
direct depositions to be taken in perpeiuam rei memoriam^ if 
they relate to any matters that may be cognizable in any 
Court of the United States.'^ The allegations of the bill 
which are material on the present occasion are these — that the 
complainant has been and still is using, in the city of !N^ew 
York, a certain process, to the use of which the defendant 
claims the exclusiye right under letters patent of the United 
States ; that such letters patent are yoid for want of noyelty ; 
that, in case suit shall be brought by the defendant against 
the plaintiff, for infringement of the said patent, the plaintiff 
relies, for its defence, upon the testimony of William JSTeweJl ; 
that said Newell had himself made public use, in the United 
States, of the said process, for upwards of twelye years before 
the said patent was issued ; that said JSTeweU is upwards of 90 
years of age; that the defendant has neglected, and still 
n^lects, to bring a suit against the plaintiff for its infringe- 
ment of said patent ; and that the plaintiff is unable to bring 
its rights to a judicial determination. 

In support of the demurrer to this bill it is first contended 
that the proceeding is yain, because the deposition, if taken, 
will neyer be admissible in eyidence in the suit which the 
complainants fear. This position is supposed to be sustained 
by the proyision in § 867 of the Beyised Statutes, that " any 
Court of the United States may, in its discretion, admit in 
eyidence, in any cause before it, any deposition taken in per- 
petuam rei memoriam^ which would be admissible in a Court 
of the State wherein such cause is pending, according to the 
laws thereof." But the effect of the proyision last quoted is 
misunderstood by the defendant. The proyision is intended 
to permit the Courts of the United States to admit in eyi- 
dence testimony perpetuateo according to the laws of the 
State, and in no wise relates to testimony perpetuated by 
direction of a Circuit Conrt of the United States, in pursuance 
of the statute of the United States under which this bill is 



176 BA.STERN DISTRICT OF NEW YORK, 

The N. Y. and Baltimore Coffee Polishing Co. «. The N. Y. Cofifee Polishing Oa 

filed. Testimony so perpetuated is admissible in evidence in 
accordance with the usages and practice of Courts of the 
United States, and by virtue of § 866, but not by virtue of 
§ 867. The object of the bill is, therefore, legitimate, and 
the proceeding not vain. 

The next ground taken in support of the demurrer is, that 
the bill does not show a necessity for perpetuating the testi- 
mony of the witness in order to preserve the plaintiff's rights, 
inasmuch as, upon the facts stated in the bill, it would be the 
duty of the Attorney General, upon the application of the 
plaintiff,' to institate a proceeding, in the name of the United 
States, to annul the defendant's patent, in which proceeding 
the testimony of the witness J^ewell could be taken with like 
benefit to the plaintiff as if taken by direction of this Court, 
in 'this proceeding, or in a suit brought by the defendant 
against the plaintiff. 

It may be admitted that, in cases of this description, the 
rule is not to sustain the bill if it be possible that the matter 
can, by the party who files the bill, be made the subject of 
immediate judicial investigation, {AngeU v. Angellj 1 SimoM 
<k Stuart^ 89 ;) but no opportunity to have such a judicial 
determination appears open to the plaintiff in this case. 

Clearly, the proceeding by the Attorney General, supposed 
by the defendant to be possible, is not sndi an opportunity to 
bring the matter to a judicial determination as the rule re- 
quires* If it be assumed that the Attorney General hag 
power to institute a proceeding in the name of the United 
States, to annul the defendant's patent for want of novelty— 
as to which see Attorney Oeneral v. Bumford Chemical 
Works (9 Off. Oaz., 1062)— still it rests with the Attorney 
General, or the United States Attorney, and not with the 
plaintiff, to say whether such a proceeding shall be instituted, 
and, if so, where, and, when instituted, whether the testimony 
of the witness Mewell shall form part of the testimony in 
such proceeding. The plaintiff is without power to compel 
the institution of such a proceeding, and it cannot be known 
that such a proceeding will ever be instituted. 



DECEMBER, 1881. 177 



The K. Y. and Baltimore Coffee PolishiDg Co. v. The N. Y. Coffee Polishing Co. 

It is said that the presumption is that a public officer will 
do his duty, but such presumption does not warrant the con- 
clusion that the Attorney General, or the United States Attor- 
ney, will, as of course, institute a proceeding to annul the 
defendant's patent, upon the plaintiff's application and asser- 
tion that the patent is void for want of novelty. There is no 
absolute duty imposed upon the Attorney General or any 
United States Attorney, either by the common law or by 
any statute, to institute a proceeding to annul a patent issued 
for an invention, when applied to by any party asserting its 
invalidity for want of novelty. 

Besides, the right which the plaintiff asserts in this bill is 
the right to have the validity of the defendant's patent 
adjudicated upon a consideration of the testimony of the 
witness Newell, in regard to the fact asserted by the bill to 
be within the knowledge of that witness, and, if the plaint- 
iff's application to the Attorney General for a proceeding to 
annul the defendant's patent would create a duty on the part 
of the Attorney General to institute such a proceeding, no 
duty to call Newell as a witness would arise. Such a pro- 
ceeding would be wholly within the control of the Attorney 
Genera] {Mowry v. Whitney ^ 14 WaU,^ 441 ;) and the most 
that can be said is, that it is possible that the plaintiff's right 
to the testimony of the witness could be preserved by a pro- 
ceeding taken in the name of the United States, assuming, 
but not deciding, that the power to institute such a proceed- 
ing exists. Such a possibility affords no reason for refusing 
to entertain the bill under consideration. 

There must be judgment for the plaintiff upon the de- 
murrer, with leave to answer on payment of costs. 

Richards dk HeaMj for the plaintiff". 

Goodrich^ Deady dk Piatt, for the defendant. 



Vol. XX.— 13 



178 KOBTHEBN DISTRICT OF NEW YORK, 

I 

Barker «. Shoots. 



* 

William 0. Babkbb V9. Jambs D. Shootb. In Equtit. 

Re-lBsaed letters patent, No. 6,581, granted to William 0. Barker, July 6th, 

1876, for an " improyement in buckets for cbain-piimps.'' are valid. 
A contrary decision as to the yalidity of the patent arrlyed at from that reached 

in Barker y. Stowe, (15 Blat<^f, C. C. R, 49.) 
The claims of said re-issne are infringed by backets for chain-pmnps oonstracted 

according to the description contuned in letters patent -No. 168,684, granted 

January 6th, 1875, to James D. Shoots. 

(Before Blatchford, J., Northern District of New York, January 4th, 1881) 

Blatohford, J. This suit is brought on re-issaed letters 
patent, No. 6,531, granted to the plaintiff, July 6th, 1875, for 
an ^' improvement in bnckets for chain-pnmps,'' the original 
letters patent having been issued to the plaintiff Jane 20th, 
1871, and having been re-issned to him, May 19th, 1874. It 
is the same patent which was passed upon by this Court in 
Barker v. Stowe, (15 Blatchf. G. G. B., 49.) The specifica- 
tion is set forth in the report of that case. The defendant in 
that case, Deloraine F. Stowe, had made and sold buckets for 
chain-pumps described in letters patent granted to him Feb- 
ruary 23d, 1875, for an ^^ improvement in buckets for chain- 
pumps." It was held that he had infringed claims 1 and 2 of 
No. 6,531 ; but the bill was dismissed on the ground that both 
of those claims were anticipated by pump-buckets constructed 
by one Orin O. Witherell prior to the plaintiff's invention. 

In respect to claim 1, Witherell, on his examination as a 
witness in that suit, introduced an Exhibit, A, as representing 
a form of bucket which he made and sold for 5 months, in 
the year 1866. It was said of that Exhibit, in the decision in 
that suit: ''It has a thin india rubber disc placed loosely 
above a metal disc, and the edge of the rubber disc forms a 
flange, which extends downwards and embraces part of the 
depth of the metal disc. The rubber disc has a hole in the 
centre, through which a metal eye, fastened to the upper part 
of the metal disc, passes. He testifies, that the settling down 



JANUARY, 1882. 179 



Barker v. Sboota. 



of the chain, when the pamping was stopped, allowed the 
water above to escape through the hole in the centre of the 
robber disc. * * * Witherell testifies that he put the 
buckets, like Exhibit A, particularly into worn pump-tubes, 
which had only the metal plate buckets ; that, between April 
and August, 1866, he put buckets like Exhibit A into be- 
tween 50 and 100 wells, mostly in the southeastern part of 
New Hampshire ; that he saw one of such pumps in success- 
ful operation with them, as late as 1869 ; that he never used 
less than three of such buckets for a well, and seldom more of 
them ; that he never knew any of them to freeze ; that the 
back motion of the chain, after pumping was stopped, was 
sufficient, even when a ratchet was used, to open a central 
space between the rubber and the metal plate, the rubber ad- 
hering to the sides of the pump-tube, and allowing the water 
to escape down through the centre ; that he used the buckets 
like Exhibit A for the purpose of fitting closely in the tube, 
Bo as to cause suction; and that he generally succeeded in 
establishing a suction, unless the tube was too much worn or 
defective. There is no testimony in contradiction of this, or 
throwing doubt upon the truth of the facts testified to by 
Witherell, or showing that buckets like Exhibit A would not 
operate as he testifies. Exhibit A shows an elastic bucket for 
a chain-pxmip, adapted to fit and work in the bore of a pump- 
tube, to raise water by suction, and provided with a suitable 
orifice or outlet through which the water remaining in the 
pump-tube, above the bucket, can escape down to the source 
of supply. * * * It appears to have been a successful, 
practical, working apparatus. If it was an elastic suction- 
bucket, with a drip, it is of no consequence whether With- 
erell devised it primarily with a view to the drip, or not. 
Nor is it of any consequence that the hole for the link served 
also as a drip-hole. If it allowed the water to escape, it would 
do so as effectually as the extra passage in the plaintiff's 
bucket. It may be, perhaps, that the plaintiff is entitled to 
some claim in respect to a drip-orifice in an elastic suction- 
bucket, but, in view of the Witherell Exhibit A, the first 
daim of the plaintiff's patent is too broad and is invalid." 



180 NORTHERK DISTRICT OF NEW YORK, 

Barker v. Shoota. 

In respect to claim 2, Witherell introdaced, in that case, 
another form of bucket made by him, Exhibit B. It was 
said of that Exhibit, in the decision in that suit: '^He testi- 
fies that he made and sold buckets like Exhibit B, after he 
made them like Exhibit A, and from the fall of 1866 until 
the fall of 1873. Exhibit B has a rubber disc compressed 
between two metal plates by a screw and a nut. By lubricat- 
ing with oil the iron washer on the lower face of the disc, 
the lower part of the disc was caused to expand more 
than the upper part, so as to give to the lower part a bearing 
edge, with the part above it receding from it inwards. Ex- 
hibit B shows such construction. He says that he never used 
less than three of Exhibit B for a set, and seldom more ; that 
his practice was to have the bucket fit as closely as possible, 
and not have the pump work too hard ; that the object of the 
bevelled edge was to have the rubber slide easily over any 
roughness in the tube ; that the bucket operated both by lift- 
ing and suction ; that, when the bucket fitted closely, it re- 
sisted the downward run of the chain ; that he set them close 
enough, by expansion, to draw the water up readily, and yet 
leave room for the water to pass back on the inside of the 
tube ; that the water in the tube, with Exhibit B, never froze, 
when the bucket was properly adjusted ; that he made a con- 
siderable number with the bearing edge like Exhibit B ; and 
that he used that form in tubes that were too lai^e to be fiUed 
by expanding the disc equally from both of its faces. This Ex- 
hibit B is a solid elastic bucket, having an elastic-bearing edge, 
and its upper portion convex from said edge, whereby the bucket 
will readily yield to any irregularities in the pump-tube, and 
admit of its being easily drawn up, while, at the same time, it 
will resist moving downward. It answers exactly the second 
claim of the plaintiff's patent. A provision for the escape of 
the water is no part of the second claim, and the elastic-bear- 
ing edge is no part of the first claim. Although Exhibit A 
has no elastic-bearing edge it anticipates the first claim ; and 
although Exhibit B has no water escape, it anticipates the 
second claim." 



JANUARY, 1882. 181 



Barker v. Shoots. 



The answer in the present case denies infringement and 
sets up that the buckets for chain-pumps which the defend- 
ant kas made, nsed and sold are secured to him by letters pat- 
ent granted to him, Ko. 158,534, dated January 5th, 1875. 
It also sets up want of novelty and alleges various anticipa- 
tions. One of them is that of Witherell. It also alleges that 
the re-issue sued on contain matters of substance not embraced 
in the original patent. 

In the 8towe case it was alleged that matter was found in 
the re-issue which was not in the original patent of 1871, but 
the Court said : '^ The drawings are identical, and there is 
nothing either in the specification or the claims of the r^ 
issue which is not justified by what is found in the de- 
scription or drawings of the oi*iginal patent." Nothing is 
shown to change this view, and the original patent is not put 
in evidence in this suit. 

The structure presented by the plaintiff as the infringement 
is known as " LoveU Exhibit 1." The same structure is rep- 
resented by " Defendant's Exhibit 1." It has no drip-notch. 
It is constructed in accordance with the description in No. 
158,534. It consists of a ringed bolt or eye bolt, which passes 
through an upper metal plate, the extension beyond such 
plate having a male screw-thread cut on it, and passing 
through an india rubber disc and into a female screw-thread 
cut in another and lower metal plate, to which a loop or eye 
or ring is aflSxed. The two parts are centred when screwed 
together. Each of the two plates is convex on its inner face, 
towards the rubber disc, and the disc is slightly concave on 
each of its opposite upper and lower faces. The disc can be 
expanded circumferentially in an outward direction, by screw- 
ing up the lower plate. The disc is solid. The lower part of 
its circumference, for a distance of perhaps an eighth of an 
inch upwards from the lower edge, is bevelled outwards very 
slightly, and then its outer face slopes upward and inward at 
an angle of some 508 to 608, with its base to its upper concave 
face, such slope being, in superficial upward length, about half 
an inch. The claim of No. 158,534 is to a combination of all 
the parts making up the structure. 



182 NORTHERN DISTRICT OF NEW YORK, 

Barker v. Shoots. 

Claims 1 and 2 of No. 6,531, are those which are al- 
leged to have been infringed. They are as follows : '^ 1. An 
elastic bucket for chain-pnmps, adapted to fit and work iA the 
bore of a pnmp-tnbe, to raise the water by snction, provided 
with a suitable orifice or outlet through which the water re- 
maining in the pump-tube above the bucket is allowed to 
escape down to the source of supply, substantially as and for 
the purpose set forth. 2. A solid elastic bucket, having an 
elastic-bearing edge, and its upper portion convex or con- 
tracted from said edge, whereby the bucket will readily yield 
to any irregularities in the pump-tube, and admit of its being 
easily drawn up, while at the same time it will resist moving 
downwards, substantially as and for the purpose specified." 

On the question of infringement the defendant testifies 
that his bucket raises water ^^ by lifting and not by suction 
particularly ; " that it works on the same principle as the old 
metallic bucket ; that he always makes his buckets ^^ to fit 
loosely in the tube ; " that a H inch bucket of his can be ex- 
panded, by compressing the rubber between the plates, so as 
to fit a 1^ inch tubing ; and that, after pumping, with his 
bucket, the water runs back down the tube to the source of 
supply through the space around the bucket, because that fits 
loosely in the tubing and is smaller than the bore. It is con- 
tended for the defendant, that his bucket is not a solid elastic 
bucket, within the meaning of No. 6,531 ; that it does not 
assume the shape of a cone ; and that it will operate equally 
well with either surface upward. The evidence is entirely 
satisfactory that the defendant's bucket infringes claim 2 of 
No. 6,531. It is a solid elastic bucket, and has an elastic- 
bearing edge, and has its upper portion convex or contracted 
from said edge, and thereby the bucket will readily yield to 
any irregularities in the pump-tube, and it can be easily drawn 
up while at the same time it will resist moving downward. 
The specification and claim of No. 158,534 show that the 
bucket is intended for use with the smaller surface of the 
rubber disc uppermost. The witness Biker shows that this 
is so. It also appears that the defendant's buckets sent out 



JANUARY, 18«2. 183 



Barker v. Shoota. 



by him to be put in were pat in so as to fit tightly in the tube 
and draw water by suction, and were pnt in with the smaller 
end of the rubber disc uppermost, and had drip-notches cut 
in them when set. If they fit tight and draw water by suc- 
tion, the drip notch is a necessity, if there is danger of freeze 
ing. It must, therefore, be held that infringement of claim 1 
also is shown. 

The evidence of Witherell is not produced in this suit. In 
regard to Witherell's testimony in the former suit against 
8towe, respecting structures anticipating claim 1 of No. 6,531, 
it was said in the decision in that suit, that there«was in that 
suit no testimony contradicting Witherell, or throwing doubt 
on the truth of the facts testified to by him, or showing that 
a bucket like Exhibit A in that suit would not operate as 
Witherell testified it would. In the present suit, five wit- 
nesses have been examined on the part of the defendant, 
namely Waite, Bostwick, Smith, Wardwell and Reed, to 
show want of novelty in claims 1 and 2. The answer does 
not set up prior knowledge or use by any of them. But it is 
doubtful whether the record contains any objection on that 
ground to the testimony of any of them. Their evidence 
will, therefore, be considered. 

The most that the evidence shows is the use, not in new. 
pump-tubes, but in worn pump-tubes, of a fiat, thin cylin- 
drical disc of rubber, slipped over the loop of the chain and 
lying fiat on the metal button, to compensate for the wear 
which had taken place in the tube by the rubbing of the metal 
button. The rubber discs were not used in a new cylindrical 
bore but only in bores which had become of oval or irregular 
shape, and which were worn more irregularly for a distance 
at the top and the bottom of their length than at the middle 
thereof. These discs were not the elastic bucket of claim 1 
of No. 6,531, fitting so as to operate by suction. The cylin- 
drical rubber disc could not fit any bore that was not cylin- 
drical and could not operate by suction in a bore that was not 
cylindrical. It was as much of a lifting button as the metal 
button, and it could not operate by suction in the non-cylin- 



184 NORTHERN DISTRICT OP NEW YORK, 

Barker v. Shoots. 

drical bore any more than the non-fitting metal button conld 
in a bore either cylindrical or non-cylindrical. Of conrse, if 
these rubber discs did not fit the bore they did not have the drip- 
notch of claim 1 of the plaintiff. The evidence in the present 
case as to the prior structures is very different from that in 
the former case against 8towe. It now appears clearly that, 
in a wooden pump-tube, originally cylindrical, but worn by 
the use of cylindrical metal buttons on a chain, a. cylindrical 
rubber disc will not operate by suction, and the water will es- 
cape back around the edge of the disc, because the wear is not 
uniformly annular, and if the rubber disc be cut non-cylindri- 
cal, but oval, to suit an oval wear, it will, in going, up and 
down, cross the oval and become jammed. 

The thin flat discs referred to are not the solid elastic 
bucket,' with an elastic-bearing edge, and its upper portion 
convex or contracted from said edge, required by claim 3 of 
No. 6,531. Defendant's Exhibit No. Sis the only approach 
towards such a structure, but it was used only experimentally. 

The patent No. 19,173, granted to Marvin, January 19th, 
1858, on the invention of Horton, does not show what is 
found in claims 1 and 2 of No. 6,531, and in the defendant's 
bucket. It has only leather and not india rubber or other 
similarly clastic material. This patent was not mentioned in 
the answer, and its introduction in evidence was objected to 
on that ground. 

It is stated in the defendant's brief that the Witherell 
Exhibits in the former case against Stowe are, by stipulation, 
made evidence in this case. I find no such stipulation. The 
only stipulation I find in the record, on the subject, is one that 
the certified copies of United States letters patent made ex- 
hibits and filed in the former case against Stowe be used for 
this case. Moreover, plaintiff's exhibit 13 was offered in evi- 
dence by the plaintiff as a rubber disc of Witherell, (and it 
appears to be like what is above described to be Exhibit A of 
Witherell in the former case against Stowe), and its introduc- 
tion was objected to by the defendant on the ground that at 
the stage of the case at which it was offered it was not rebut- 



JANUARY, 1882. 185 



Barker v. Stowe. 



ting evidence. This objection was valid. The defendant 
then went on to give notice that he would produce and read 
at the hearing the evidence of Witherell taken in the former 
Boit against Stowe, and the exhibits. To this the plaintiff 
entered an objection, on the ground that the matter was irrel- 
evant and conld not, under any circumstances, form any part 
of the record in this suit. This objection was valid. More- 
over, the said evidence of Witherell has not been produced 
by either party ; and so Exhibit !N'o. 13 has no place in this 
case,, as evidence of a prior structure. 

It is proper to say that, on objections taken by the defend- 
ant and appearing on the record, and insisted on him at the 
bearing, I have rejected the following parts of the testimony 
for the plaintiff: the question at page 12, folio 17, '^Q. Has 
not," &C., and the answer; Exhibit 10 of plaintiff; Exhibit 
11 of plaintiff; and the evidence as to the contents of a 
license from the plaintiff to the defendant and one Colwell. 

There nnust be the usual decree for the plaintiff. 



Oecrge E. Buckley^ for the plaintiff. 
WoUer Z. Dailey^ for the defendant. 



William C. Barker 
DsLORAiNB F. Stowe. Tn Equitt. 

E toed 8., in this Court, in equity, for the infringement of a patent. Oo an 
inne as to novelty the Court decided in fayor of S., and held that the bill 
niiiat be dismiflsed. Afterwards B. sued S. again, in this Court, in equity, for 
the infringement of the same patent. S., in liis answer, set up, as an estoppel, 
the former suit. No decree had in fact been entered in it. Proofs were taken 
in the second suit, in which it was assumed by both parties that there had 



186 NOBTHERN DISTRICT OF NEW YORK, 

Barker •. Stowe. 

been a decree in the first suit. At the hearing of the second suit B. objected 
that there had been no decree in the first suit The Conrt^ on the motioii of 
8., then signed and entered a decree in the first snit» and allowed it to he pot 
in eridence on the part of S., in the second suit, and held that it was a bar to 
the second suit. 

(Before Blatghvokd, J., Northern District of New York, January 4th, 1882.) 

Blatohfobd, J. This suit is brought on the same re- 
issoed letters patent, No. 6,531, inyolved in Barker v. Shoc^ 
{cmte^p. 178,) decided herewith. The defendant in this suit is 
the same person who was defendant in the suit of Barker y. 
Stowe, (15 Blatckf. C. 0. H., 49,) brought on the same patent 
By stipulation the testimony in the suit against Shoots and 
in this suit was taken simultaneously, and it is all of it en- 
titled in both cases, and it is stipulated that the evidence in 
one case '^ shall be good for both.'' The decision in the case 
against Shoots disposes of all questions in this case except that 
of infringement and a question as to the former suit against 
Stowe. 

The answer sets up that the defendant's buckets are 
secured to him by letters patent granted to him. No. 160,125, 
dated February 23d, 1875. The defendant's bucket in the 
present case, " Lovell Exhibit No. 2," is precisely like the one 
described in the decision in the former suit against him as 
the one alleged there to infringe. It is clearly an infrin^ 
ment of claims 1 and 2 of No. 6,531. 

The answer sets up that in 1876 the plaintiff filed a bill in 
this Court setting up the same matters and cause of action as 
are contained in this bill ; that the defendant appeared, on 
process, and answered the bill, setting up the same matters 
previously set up in this answer ; that a replication was pat 
in ; that evidence was thereafter taken in said suit ; that the 
cause was heard on the merits, on pleadings and proofs, at 
the June Term, 1878; that, in July, 1878, the Court made a 
decision, determining that the said patent, No. 6,531, was 
void for want of novelty and that the bill be dismissed, with 
costs ; that the defendant refers to said bill, answer, replica- 
tion, decision, decree and judgment record in said former 



JANUARY, 1882. 187 



Barker •. Stowe. 



snit ; that said Court had jurisdiction of said cause, the par- 
ties thereto and the snbject-matter thereof ; that said judg- 
ment and decree are valid and remain in force ; that the right 
of the plaintifP to the relief songht in that cause was duly 
passed npon and adjudicated ; and that the plaintiff is estopped 
by said former judgment and decree from asserting the same 
in this canse. This answer was verified March 27th, 1880. 
The record of the defendant's testimony, nnder date of Novem- 
ber 24th, 1880, contains an entry that the defendant offers in 
evidence a certified copy of a decree in said snit against him, 
and also the opinion of the Court in said suit, marked defend- 
ant's Exhibit 5 ; and that the plaintiff objected to the same as 
immaterial, and because the proofs on which the decision and 
opinion were based were not introduced. The same record, 
under date of February 19th, 1881, states that it is agreed 
between the resi)ective attorneys " that all documentary evi- 
dence heretofore offered in evidence, that is properly certified 
to, shall be admitted in evidence without objection." The 
record of the plaintifiTs testimony, under date of March 22d, 
1881, contains an entry that the defendant's counsel gives 
notice that he will read and produce on the hearing of this 
case the judgment roll, decision and decree in the said former 
suit against the defendant, and also the evidence of Orin O. 
Witherell, taken in said suit, filed with the clerk, and also all 
of the exhibits used on said trial; and that the plaintiff's 
counsel objected for the reasons before stated under date of 
November 24th, 1880, and because the matter is irrelevant. 
This cause was brought to a hearing at the June Term, 1881. 
It then appeared that nothing had been produced and marked 
defendant's Exhibit 5, and that no decree had ever been signed 
or entered in the former suit. The present suit was begun in 
November, 1879. The bill does not refer to the former suit. 
It alleges infringement in the past generally. When it was 
filed there had been no decree entered in the former suit. 
The proof of infringement made in this case is of an infringe- 
ment on October 6th, 1879. The plaintiff, in giving testimony 
as a witness in this case, on the 11th of June, 1880, testifies 



188 NORTHEBN DISTRICT OF NEW YORK, 

, , w 

Barker v. Stowe. 

that he heretofore brought a siiit in this Coart against this 
defendant, and that the case was dismissed on the evidence of 
O. O. Witherell. This evidence, when given, was duly ob- 
jected to by the defendant's connsel, on the ground* that the 
fact must be proved by the record, and that the decision 
in the case could not be proved by parol, accompanied by 
the statement that the defendant's counsel offers to produce 
the decision, and followed by the statement that the counsel 
for the plaintiff will produce "the original of said records on 
which said bill was dismissed." !N'othing of that kind was 
done by either party. 

This case, though argued orally at the June Term, 1881, 
awaited the submission of printed briefs by the respective 
counsel. The plaintiff's brief was submitted to the defend- 
ant's counsel in July, 1881. It took the ground that no de- 
cree had ever been entered in the former suit; that there 
was no judgment or decree therein against the plaintiff when 
he commenced this suit, and none since ; that no part of the 
record in the former suit had been put in evidence, nor had a 
copy of the decision rendered in the former suit been pro- 
duced in this suit ; that the defendant must, therefore, be re- 
garded as having abandoned the matter ; and that, in the 
absence of a decree and a judgment, the former suit could be 
no bar. Thereupon the defendant gave notice to the plaintiff 
of an application to the Court to sign and enter a decree in 
the former suit. The decision in the former suit, as found in 15 
Blatchf. C. (7. -ff.j 49, was filed in the clerk's office July 1 1th, 
1878. The said application was made on an affidavit made by 
the defendant's solicitor in that suit, the same person who is the 
defendant's solicitor and counsel in this suit, setting forth that 
he was not familiar with the practice in such a case ; that, after 
such decision had been filed, he supposed, and was so informed 
by Mr. Wright, an experienced practitioner in this Court that 
the clerk would enter the final decree on the filing of the de- 
cision and entering the order dismissing the bill, and that the 
costs could be taxed at any time and inserted in the judg- 
ment ; that he supposed the decree had been entered when 



JANUARY, 1882. 189 



Barker v. Stowe. 



this suit was brought ; that, on the 3d of Aiignst, after receiv- 
ing the plaiDtifTs brief, he went to the clerk's office at Utica, 
and learned that no formal final decree had been entered ; 
and that he then prepared a decree to be signed. The said 
application was made and was opposed by the plaintiff. The 
Judge who decided the former case granted the application 
and signed a decree. It sets forth that the canse was heard 
on the pleadings and proofs at the Jnne Term, 1878 ; that 
the decision of the Coart was made and filed July 11th, 1878, 
'^ whereby it was decided that the claim in the re-issued let- 
ters patent No. 6,531, granted to the plaintiff, had ,been antic- 
ipated, and that the bill of complaint herein be dismissed, 
with costs ; ^' and it then orders, adjudges, and decrees " that 
the bill of complaint be and the same is hereby dismissed, and 
that said defendant recover from the plaintiff the costs of this 
action, when taxed and adjusted by the clerk of this Court, 
and that defendant have execution thei*efor." This decree 
was entered and enrolled August 27th, 1881, the roll consist- 
ing of the bill, answer, replication and decree. Meantime, 
the defendant's counsel had submitted his printed brief in this 
case, asking in it that a decision in this case be withheld until 
the decree in the former suit could be perfected and become 
a part of the evidence in this case. The plaintiff's brief in 
reply was put in, and suggested that the defendant had stated 
that he should not get a copy of the record in the former 
suit to file as an exhibit, because he had spent as much money 
as lie was going to spend in the matter. A certified copy of the 
enrolled decree was sent to me, but I informed the defendant's 
soUcitor that he must apply, on notice to the plaintiff, for leave 
to have it considered as evidence. The decision of the case 
was delayed to allow such application to be made. It was 
made at the October Term, 1881, on notice, and was opposed 
by the plaintiff. The form of it was a motion for an order 
opening the case, and for leave to put in in this suit the cer- 
tified copy of the judgment record and decree in the former 
suit. The costs had been taxed at $202 35. The defendant, 
in an affidavit for the motion, denied that he ever stated that 



190 NORTHERN DISTRICT OF NEW YORK, 

Barker v. Stowe. 

he would not incur the expense of procoring a copy of the 
decree in the former suit, and that he believed, nntil informed 
to the contrary by his attorney, that the decree had been in 
fact entered, and wonid be a bar to this sait, and that he was 
at all times wiUing to incur the expense of entering the same 
and procnring a certified copy of it as evidence in this cause. 
The motion was also based on the said aflSdavit of the defend- 
ant's solicitor, used on the motion to have the decree signed. 
Many affidavits on both sides have, since the October Term, 
been furnished to me, directed to the question as to whether 
the defendant had said that he would spend no more money 
in defending the suit, leaving the common defence to be car- 
ried on by the defendant in the Shoots case, and as to whether 
he had intentionally refrained from having the decree in the 
former suit entered. It seems strange that the decree 
was not entered. Yet, the answer of the defendant, sworn to 
by him in March, 1880, and signed by his solicitor, not only 
speaks of a decision in the former case dismissing the bill 
therein, but refers to the decree and judgment record therein 
as having been made, and as existing, and as being an estop- 
pel in this snit. In view of this the plaintiff went on to take 
proofs in this snit ; and, in the plaintiff's opening proofs, in 
June, 1880, the former suit was mentioned by him, as a witr 
ness, as a suit which had been dismissed, and his counsel then 
and there gave notice on the record that he would produce 
the original of the records on which the bill in that suit had 
been dismissed. Afterwards, when, in the defendant's proofs, 
the entry was made that a certified copy of a decree in the 
former suit, and of the opinion of the Jndge therein, marked 
defendant's Exhibit 5, was offered in evidence by the defend- 
ant, (thongh no such papers were then produced or marked,) 
the plaintiff did not object to the making of the entry be- 
cause nothing was produced, and did not allege that there was 
no decree, but objected because the proofs were not offered 
upon which the decision had been based. Afterwards, when, 
in the plaintiff's proofs, the defendant gave notice that he 
would read and produce on the hearing the judgment roll, 



JANTJARY, 1882. 191 



Barker v. Stowe. 



decision and decree in the former soit, the plaintiff objected 
on varions groands, bnt did not Btate that there was no Boch 
decree. It seems, therefore, entirely reasonable that the case 
sboold be opened so far as to allow the certified copy of the 
enioUed decree in the former suit to be put in eridence by 
the defendant, and become a part of the proofs herein. The 
plaintiff's counsel suggests that there was no decree against 
the plaintiff in the former suit, when this suit was brought, 
and that the decision filed amounted to nothing. In SUshy y. 
Footey (20 Howardj 290, 295,) the Supreme Court held that 
the prononncing of a decision by a Circuit Court, and its en- 
tiy in the minutes, where the judgment or decree is a simple 
one, " such as an affirmance or reversal and the like," consti- 
tutes a decree from which an appeal may be taken to that 
Court. Here, the decision in the former suit was a dismissal 
of the bill. The decree signed in the former suit states that 
that was the decision, and that it was made and filed July 
nth, 1878. 

The decree in the former suit must be regarded as having 
the date of July 11th, 1878 ; and the question is, as to 
whether it is a har to this suit. It is properly set up in the 
answer. The suit was between the same parties, and founded 
on infringement of the same patent. The bill in the former 
suit asks for profits and damages from the date of the re-is- 
sue, and for treble damages, and for a perpetual injunction. 
The biU in the present suit makes the same allegations and 
asks the same relief. The issne of the inability of the plaint- 
iff to recover in the suit because the invention claimed had 
been anticipated, was tendered by the answer in the former 
suit, and was found in favor of the defendant, as appears by 
the decree. That issue cannot be again tried between the 
parties. If, in the former suit, that issue had been found in 
favor of the plaintiff, it could not have been again tried in 
this suit ; and in this suit nothing would have been open but * 
the question of infringement, if the bucket claimed to in- 
fringe were different from the infringing bucket in the for- 
mer suit. Within the principles laid down in OrofmoeU v. 



192 CONNECnOUT. 



The New Haven Steam Mill Company v. The Secnrity Insaranoe Comptny. 

County of SaCj (4 Otto, 351,) and applied by this Court in 
Smithy. Town cf Ontario, (18 Blatckf. C. C. JR., 454,) it 
must be held that this suit is barred by the decree in the for- 
mer suit. 

A decree will be entered granting the defendant's motion 
and dismissing the biQ, with costs. 



George E. BucHey, for the plaintifi. 
Walter L, Dailey, for the defendant. 



The Kew Haven Steam Mnx Company 
The SEcuBnr Insubanob Company. 

A Talned marine policy of insurance inaored a reesel for one year. In the 
printed part of the policy there was a warranty by the assured not to ose cer- 
tain specified ports and places, and certain waters, and, amoog them, th« 
West India Islands daring certain months, and ports and places in TeiiB, 
except Galyeston, and foreign ports and places in the Gulf of Mexico and any 
of the West ludia salt islands, and not to load more than her registered ton- 
nage with heavy cargo or grain on any one passage. On the margin of the 
face of the policy, written at a right angle to the printed lines, were thsaa 
words: "To be employed in the Coasting Trode, on the United States 
Atlantic Coast," in one line. Underneath that line, and in one line parallel 
with it, were these written words: "Permitted to carry Grain andhesTy 
cargoes, oyer tonnage on coastwise voyages, and to use Gulf Ports not wsfit 
of New Orleans." The yessel was wrecked by running on shore at a place 
west of New Orleans, while on a voyage from Maine to a port in the Gulf of 
Mexico west of New Orleans: Hdd, 

(1.) That the use of Gulf ports in the United States not west of New Orleans wis 

• not forbidden by the printed clauses, and the use of them was not allowed by 

the written words, " the Coasting Trade, on the United States Atlantic Ooaet; ' 

(2.) That the policy permitted the employment of the yessel in the ooastiiig 
trade on the United States Atlantic Coast proper, excluding the Gq]( but 
with the added permission, that she might use ports in the Gulf not west of 



JANUARY, 1882. 193 



Tbe New Hayen Steam Mill Company v. The Seeority Inanrance Company. 

New Orleans, and might enter the Gnlf for the purpose of proceeding to snch 
ports, with a view to use them ; 
(8.) That the loss was not covered by the policy. 

(Before Blatcotobd, J., Connecticnt^ January 6th, 1882.) 

Blatohfosd, J. This is a libel in Admiralty, filed in the 
District Coort, to recover $3,000, the sum insured by a valued 
marine policy of insurance issued by the respondent to the 
libellant, insuring the schooner Tannhanser, for one year 
from January 28th, 1880. The policy is a printed form, filled 
up with writing and containing additional written clauses. 
It contains the following clauses wholly in print : ^' Warranted 
by the assured not to use ports on the Continent of Europe 
north of Hamburg, nor the Mediterranean east of the Ionian 
Islands, during the period insured ; nor ports on the Conti- 
nent of Europe north of Antwerp, between 1st November 
and 1st March; nor ports in the British Korth American 
Provinces, except between the 15th day of May and 15th day 
of August ; also warranted not to use the West India Islands 
during the months of August and September ; also warranted 
not to use ports and places in Texas, except Galveston, nor 
foreign ports and places in the Gulf of Mexico, nor places on 
or over Ocracoke Bar; nor any of the West India Salt 
Islands ; nor ports or places on the West Coast of America 
north of Benicia, nor to use the Min Kiver, nor Torres 
Straits, during the period insured." ^' Also warranted not to 
load more than her registered tonnage with lead, marble, coal, 
slate, copper ore, salt, stone, bricks, grain or iron, either or 
aQ, on any one passage." On the margin of the face of the 
policy, written at a right angle to the printed lines, are these 
words: "To be employed in the Coasting Trade, on the 
United States Atlantic Coast," in one line. Underneath that 
hne, and in one line parallel with it, are these written words : 
" Permitted to carry Grain and heavy cargoes, over tonnage 
on coastwise voyages, and to use Gulf Ports not west of New 
Orleans." The libel claims for a total loss of the vessel by 
the perils of the seas while on a coastwise voyage within the 
Vol. XX.— -18 



194 CONNECTICUT, 



The New Haven Steam Mill Company «. The Secnritj Insorance Company. 

policy. The answer denies that the voyage was within the 
policy, and avers that at the time of the loss the vessel was 
not on a voyage within the terms of the policy, bat was by 
the voluntary act of her master and owners on a voyage to a 
port in the Gulf of Mexico west of New Orleans, to wit, the 
port of Morgan City, State of Louisiana, and not upon any 
voyage protected by the terms of the policy, and at the time 
of her destruction was upon that part of her voyage to Mor- 
gan City which was west of the port of New Orleans, and so 
known to her master, and she stranded on the shore of the 
Gulf of Mexico, west of the port of New Orleans, because 
her master mistook, in taking his course to the port of Mor- 
gan City, the light on Timbalier Island for the Ship Shoal 
Light, both of which lights were west of the port of New 
Orleans. The proof in the case consists entirely of the follow- 
ing written stipulation, entitled in the suit, and signed by the 
proctors for the respective parties, while the suit was pend- 
ing in the District Court, and of the documents referred to in 
the stipulation: ^'We hereby mutually stipulate and agree 
that the following are the facts applicable to the issues pre- 
sented by the pleadings in the above entitled cause, and con- 
sent that this stipulation and the statement of facts forming 
part thereof shall be entered and filed as the finding of the 
Court as .to the facts in said caase. On the fourth of Feb- 
ruary, A. D. 1880, the Security Insurance Company, acting 
within the scope of its corporate capacity, executed and de- 
livered to the New Haven Steam Saw Mill Company, the val- 
ued policy of insurance for $3,000 upon said Saw Mill Com- 
pany's interest in the schooner Tannhauser, a copy of which 
policy is annexed to the libel in said cause, and marked Ex- 
hibit A, and said policy is itself referred to and made part of 
this agreement and finding, a verbatim copy of which is ap 
pended and marked A. On the eleventh of June, ISSO, the 
said schooner Tannhauser, while on a voyage from the port of 
Bockland, in the State of Maine, to Morgan City, known on 
the United States' coast survey map of 1870 as Brashear, in 
the State of Louisiana, went ashore, and was wrecked, on a 



JANUARY, 1882. 195 



Tbe New HaTen Steam Mill Company v. The Seonrity InaoraDce Company. 

reef in the Gulf of Mexico, west of the port of New Orleans, 
aod was totally destroyed by the perils of the seas. That the 
statement set forth in the proofs of loss filed with said Insur- 
ance Company, and being the marine protest of the master 
and crew of said vessel, are true so far as any issue in this 
cause is concerned, and said protest and the statement there- 
in contained are hereby made part and parcel of this stipula- 
tion and finding, and annexed hereto, marked Exhibit B. It 
is hereby mutually agreed that maps or charts may be referred 
to for the purpose of defining and determining the location 
of the spot where said vessel was lost, and of any place or 
locality referred to in said policy or proof of loss. That 
proper proofs of loss were filed with the Insurance Company 
in due season, and that the libellant is entitled to recover upon 
said policy the amount insured thereby, (less the note of $301, 
given for the premium on said policy,) with interest from the 
day of unless the law is so that upon the facts set 

forth in this finding, said libellant is not entitled to recover, 
in which case judgment is to be entered for said respondent." 
The protest states that the vessel left Eockland on May 17th, 
with a cargo of ice, bound for the port of Morgan City, Louis- 
iana; that, for two days before June 11th, they had not been 
able to take an observation, on account of cloudy and hazy 
weather; that, during the evening of the 11th, they sighted a 
light which they took for Ship Shoal Light, and kept on their 
coarse accordingly, but at 10.30 o'clock p.m. the vessel suddenly 
took the ground ; that they immediately let go an anchor, but 
the vessel soon began to leak, and the ice to melt from contact 
with the Gnlf water, and in a short time she had fiUed and 
rolled over, so that pumping was useless ; that the next day 
they discovered that the light they saw the evening before 
was not Ship Shoal Light but the light on Timbalier Island, 
and that the vessel was ashore on a reef about two miles from 
Tine Island, and about fifteen miles from Timbalier Island ; 
and that the vessel is a total loss. 

The District Court dismissed the libel. It appears from 
the decision of that Court, that the libellant there contended 



196 CONNECTICUT, 



The New Haren Steam Mill Company v. The Security Insaranee Company. 

that '^ the coasting trade on the United States' Atlantic Coast'' 
meant t^ade from Maine to Texas ; that the written permission 
to nse ports in the Gulf of Mexico not west of Kew Orleans^ 
meant, in view of the printed restriction against nsing foreign 
ports in that Gnlf, a permission to nse foreign ports in that 
Gulf not west of New Orleans ; that, if the vessel was pro- 
hibited from using any Gulf ports west of New Orleans, she 
was not using any such port at the time of the disaster ; and 
that an intent to use a prohibited port did not avoid the policy. 
The Court held that the meaning of the two written clauses 
in the policy was that the vessel was to be employed on the 
United States' Atlantic Coast, which was the coast of the At- 
lantic Ocean and not the coast of the Gulf of Mexico, but 
that, if necessity or occasion required, she was to be permitted 
to go into the Gulf of Mexico and use the ports not west of 
New Orleans, but not that her coasting trade was to be there- 
by extended throagh the Gulf; and that, when she was en- 
gaged in transporting a cargo from Maine to Morgan City, she 
was not in the Atlantic coasting trade but upon a voyage out- 
side of the terms of the contract. The view of the Court was, 
that if the coasting trade was to be through the Gulf, the per- 
mission to use ports in the Gulf was unnecessary ; that if the 
coasting trade upon the United States' Atlantic Coast neces- 
sarily implied voyages through the Gulf, a permit to use any 
Gulf ports not west of New Orleans was unnecessary, as those 
United States' Gulf ports had not been excluded in the printed 
part of the policy ; that the fact that the vessel was to be a 
coaster on the United States' Atlantic Coast, coupled with a 
permit to use certain ports in the Gulf, indicated that without 
the permit the vessel could not go into the Gulf ; and that 
the permit apparently enlarged the previous limitation, espe- 
cially as domestic ports not west of New Orleans had never 
been excluded. 

The case for the libellant is argued in this Court upon 
grounds apparently not urged in the Court below. There are 
in the printed clauses of the policy many warranties, above 
cited, by the assured, not to use (1) certain ports and places ; 



JANUARY, 1882. 197 



The New Hayen Steam Mill Company «. The Security InsiiraDce Company. 



(2) certain waters. There are also printed warranties, above 
cited, by it, against loading more than the registered tonnage 
of the vessel with heavy cargoes, inclading grain. The 
printed form is a blank for a purely time policy, under which 
the vessel would have a right to go anywhere except as pro- 
hibited by the warranties not to use the ports, places and 
waters specified as forbidden. Then, on the margin, are the 
two written lines, which control. The first line relates to 
voyages. It purports to specify voyages. It is enabling and 
permissive. It declares that the vessel '^ is to be employed in 
the coasting trade on the United States' Atlantic Coast." It 
is an affirmative statement of voyages. It means that the ves- 
sel is to be employed in those voyages only. Both parties so 
declare. This, in connection with the time clause, one year, 
makes the policy a mixed policy, specifying both time and 
voyages. . Then follows the second written line. It is a per- 
mission. It begins with the word ''Permitted." That word 
qualifies the entire line. Katurally, we should expect to find 
in such permission something permitted which was not per- 
mitted by the preceding printed and written clauses, whether 
something merely not before permitted or something before 
actually prohibited* Accordingly, the first thing permitted is 
a permission '' to carry grain and heavy cargoes, over tonnage on 
coastwise voyages." This had before been prohibited in the 
clause above cited from the printed clauses. Then follows, in 
the same sentence, under the word '' Permitted " and after a 
comma, the words '' and to use Gulf Ports not west of New 
Orleans." The word '' and " is a copulative. It makes of the 
second branch of the sentence a permission, and that branch is 
to be read as if the " permitted " were inserted between " and " 
and ''to." The use of Gulf ports in the United States not 
west of New Orleans had not been prohibited by the printed 
clauses. But then came in the first written line declaring 
affirmatively what the voyages shall be. As the use of Gulf ports 
in the United States not west of New Orleans was not forbid- 
den by the printed clauses, the special permission, in the sec- 
ond written line, to use them, was wholly useless, if the use 



198 CONKECnCDT, 



The New Hayen Stewn Mtll Oompeiiy v. The Security InsnraDce Company. 

of tbem was allowed bj the words in the first written line, 
^^ the coasting trade on the United States' Atlantic C!oast.'^ 
These last words mnst be constmed as not including voTages 
to Gulf ports not west of New Orleans, in order to make the 
two sentences symmetrical. 

For the purpose of supporting the view that '^ the coast- 
ing trade on the United States' Atlantic Coast" includes 
coasting trade in the Gulf up to the line of Mexico, and that 
the vessel was on a voyage in such trade, the advocate for the 
libellant contends, in this Ck>urt, that the words '^ and to use 
Gulf Ports not west of New Orleans " are to be read as if 
they were '* and not to use Gulf Ports west of New Orleans,*' 
so as to make of it a warranty not to use ports west of JSew 
Orleans, and a warranty not broken, because no such port was 
used, while the voyage was a lawful one because in a per- 
mitted coasting trade. This is ingenious but not sound. 
" Permitted not to use " is not a form of expression that any 
person of intelligence would use. There are two permissions 
in the sentence. One is to carry something ; the other is to use 
something. The right to carry the thing so permitted was 
prohibited but for the permission. The right to use the thing 
so permitted was not within .the coasting trade allowed, 
but for the permission. Both of the written lines, in regard 
to voyages, refer to the subject-matter of the insurance. If 
the vessel, when lost, was not employed in the coasting trade 
on the United States' Atlantic Coast, and was not availing 
herself of the permission to use a Gulf port not west of New 
Orleans, the risk was not covered by the policy. 

The voyage clauses must be held to mean that the vessel 
was to be employed in the coasting trade on the United States' 
Atlantic Coast proper, excluding the Gulf, but with the added 
permission, that she might use ports in the Gulf not west of 
New Orleans, and might enter the Gulf for the purpose of 
proceeding to such ports, with a view to use them. A voy- 
age in the Gulf west of New Orleans, with a view to pro- 
ceed to and to use a United States' Gulf port west of New 
Orleans, and a loss west of New Orleans, on such voyage. 



JANUARY, 1882. 199 



The New Hayen Steam Mill Company v. The Security Insarance Company. 



was not a risk within the permitted voyages of the pol- 
icy. There was no way, under the policy, by which the vessel 
could enter the Gulf, consistently with the first written line, 
except by the permission in the second written line, and that 
permiasion gave her no right to be west of New Orleans on a 
voyage to Morgan City. There is a clear intention mani- 
fested and expressed by the words of the policy, of not insur- 
ing against the perils of a coasting trade on the Gulf Coast 
west of New Orleans, or against the perils of trying to enter 
a United States' Gulf port west of New Orleans. 

The case of Snow v. Columbian Ins. Co,j (48 iT. Y.j 624,) 
was the case of a purely time policy, not prescribing any voy- 
ages or trade, and having warranties against using certain 
ports, places and waters. One of them was a warranty not to 
use ports in the British North American Provinces except be- 
tween certain days. The vessel, at a time not between those 
days, sailed for a port in a British North American Province 
and was lost on the coast of that Province about 50 miles from 
that port, at a time not between those days. It was held that 
the insurer was liable, as there had been no use of the forbid- 
den port. The decision was put on the ground that the ves- 
sel had a right to be in the waters where she was. In the 
present case, on a proper construction of the policy, the ves- 
sel was sailing in forbidden waters. 

The case of Palmer v. Warren Ins. Co,y (1 Story^ 360,) 
was the case of an exception or exclusion of what would other- 
wise have been included in the general terms of the policy. 
It differed from the present case. Moreover, the policy was 
purely a time policy, with no designation of prescribed or per- 
mitted voyages or trade. 

The libel is dismissed, with the costs of the respondent in 
the District Court, taxed at $20, and costs to the respondent 
in this Court. 

H. Stoddard^ L. H, Bristol and C. H, IngersoUy for the 
libellant. 

J, W. AUmffy for the respondent. 



200 VERMONT, 



Dwight V. The Ceotral YermoDt Bailroad Company. 



Jonathan Dwight and othebs 

The Central Yebmont Railroad Company and otheb&. 

In Equitt. 

A plea to a bill in eqnity, that there are divers and sundry persons whose 
names are known to and ascertainable by the plaintifis and not by the defend- 
ant, not setting forth any names, and not accompanied by an answer, bat ac- 
companied by a demurrer for want of parties, is not a good plea* 

Stockholders in a railroad company filed a bill against the directors of that 
company, alleging a refusal of the directors to take legal measures to protect 
their rights, and against the party in possession of the road of that company, 
and the lessee of it, and persons claiming liens on it, to recoTer poasesnon of 
the road for said company. To this bill a plea was filed alleging that the 
company had brought a like suit in a Court of the State and had disoontiniied 
it, through its directors, by preconcert with the plaintiffif, that this smt might 
be brought to evade the proper Jurisdiction of the State Court, and denying 
any breach of trust by the directors : Beld, that the plea was bad. 

Another plea was filed to the bill, alleging tbat the plaintiils did not, before 
bringing the biU, in good faith request the directors to take legal measorss 
to protect their rights, but by arrangement between the plaintiffii and the di- 
rectors a simulated request aod refusal were made, and this suit was brought 
by the company in the name of the plaintlfiiB, and denying that there had 
been any such refusal by the directors as amounted to a breach of trust : 
Held, that the plea was bad. 

Another plea was filed to the bill, alleging that security holders of the same 
class as those made defendants had brought proceedings in behalf of them- 
selves and all others like security holders, against the company, in a Court of 
the State, to enforce their security on the road, in which a decision favorable 
to the validity of their lien hnd been made, and which were pending, and set- 
ting forth the proceedings: Held, that the plea was bad. 

Another plea was filed to the bill, by the party in possession of the road, alleg- 
ing that it was in possession as a receiver of a Court of the State and setting 
forth the proceeding^ on which its possession took place : Sdd, that the plea 
must be overruled, and the case proceed to proofs. 

(Before Whiblvb, J., Yermont, January 14th, 1882.) 

Wheeler, J. The orators, as stockholders to a large 
amount in the Vermont and Canada Bailroad Company, and 



JANUARY, 1888. 201 



Dwigbt V. The Central Vermont Rftilroad Company. 

citizenB of New York, Kew Hampshire, and Bhode Island, 
bring this bill in behalf of themselves and all other stock- 
holders having like interests with them, not citizens of Yer- 
mont, Massachusetts, or Maine, against the directors of that 
corporation, citizens of Massachusetts and Pennsylvania, 
ailing that they refuse to take legal measures to protect 
the rights of the orators, and against the Central Yermont 
KaUroad Company in possession, and the Yermont Central 
Bailroad Company lessee of, and the other defendants security 
holders claiming liens upon, the Yermont and Canada Bail- 
road, all citizens of Yermont, Massachusetts, and Maine, to 
recover the possession of that road for the Yermont and Can- 
ada Bailroad Company. 

The Central Yermont Bailroad Company pleads that it is 
in possession as a receiver of the Court of Chancery of 
Franklin County and of the State of Yermont, and the pro- 
ceedings upon which its possession took place are set forth. 

John Gregory Smith pleads that security holders of the 
same class as those made defendants have brought proceed- 
ings in behalf of themselves and all other like security hold- 
ers, against the Yermont and Canada Bailroad Company, in 
the same Court of Chancery, to establish and enfoi*ce their 
security upon this road, in which a decision favorable to the 
validity of their lien has been made by the Supreme Court 
of the State, and which are now pending in the Court of 
Chancery, to ascertain the amounts of, and facts concerning, 
the different classes of securities ; and these proceedings are 
set forth. 

Worthington C. Smith pleads that the Yermont and 
Canada Bailroad Company brought a suit like this, and for 
the same relief, in the same Court of Chancery, and, through 
its directors, by pre-concert with the orators, discontinued the 
same, that this suit might be brought to evade the proper 
jurisdiction of the State Court, and confer a seeming but un- 
real jurisdiction upon this Court, in pursuance of which this 
Boit was brought ; and denying that the directors have vio- 



202 VERMONT, 



Dwight V. The Central Vermont Railroftd Company. 

lated their duty, committed any breach of trust, or done 
otherwise than as requested by the orators. 

Jed P. Clark pleads that the orators did not, before bring- 
ing this bill, in good faith, request the directors to take legal 
measures to protect their rights, but that, by the planning, 
suggestion and request of the directors, and concert and 
arrangement made between them and the orators, for the 
sake of escaping from the jurisdiction of the State Court, to 
which the jurisdiction of right belonged, and to confer upon 
this Court a seeming jurisdiction, not real or of right, a simu- 
lated and unreal pretence of request and refusal were made, 
and that this suit is prosecuted by the Vermont and Canada 
Hail road Company in the name of the orators, for the common 
benefit of them all, and denying that there has been any such 
refusal by the directors as amounts, in legal effect, to a breach 
of trust. 

The Vermont Central Railroad Company sets out, by 
plea, that there were, when this bill was brought, and are 
now, divers and sundry stockholders of the Vermont and 
Canada Railroad Company, citizens of Vermont, Massachn- 
setts, and Maine, whose names are known to and ascertainable 
by the orators and not by the defendant, and demurs to the 
bill for want of the necessary parties. 

None of these pleas is supported by answer. All of them 
and the demurrer have been argued. They may properly be 
considered in the inverse order of their statement. 

The last one, that of the Vermont Central Railroad Com- 
pany, is not in the proper form and sufficient, even if the fact 
that there were stockholders citizens of Vermont, Massachu- 
setts, or Maine, and not invited to take part in the prosecntion 
of the suit, would defeat it. In such cases the defendant 
should, at law, give the plaintiff a better writ, by setting out 
the name and identifying the party whose existence is alleged 
to create a fatal non-joinder, so that the plaintiff may traverse 
the allegation and form a definite issue to be tried, or diBCOD- 
tinue and bring a new suit, joining the proper parties, upon 
the information given. The rules of pleading are the same 



JANTJARY, 1882. 203 



Dwight V. The Central Vermont Railroad Company. 

in equity as at law, unless the reasons of them are varied hj 
the different methods of procedure.. There is no reason, 
growing out of the proceedings in equity, for varying this 
rale. The orators have the right to have the names of the 
stockholders, if there are any, in those States, whose exist- 
ence would defeat the suit, set forth, so that they could 
traverse the existence of the persons or the fact of their 
being stockholders. They could not do that upon these alle- 
gations. There is no person named whom they may say is 
not a stockholder, or about whom they may say there is no 
such person. A traverse of the plea in its terms would put 
in issue what the orators know that the defendants do not 
know about the stockholders in those States. It would be 
quite singular if a suit should be abated, at the instance of 
defendants, on account of the supposed existence of persons 
whom they cannot name or identify. The want of such per- 
Bons as parties is not likely to harm them. (Hotel Company 
V. Wade, 9T U. S.y 13.) 

The pleas of Clark and Worthington C. Smith are to the 
flame effect, and so nearly alike that they may well be con- 
sidered together. They have been spoken of in argument as 
pleas to the jurisdiction of the Court, or to the ability of the 
orators to bring suit, or as pleas in abatement otherwise ; but, 
correctly speaking, they are not either. The orators and de- 
fendants are alleged in the bill to be citizens of different 
States. This fact gives the Court jurisdiction of the contro- 
versy between them, and enables the orators to bring the suit, 
and to maintain it if they can establish their case. The re- 
fusal of the directors is a pai*t of their ease, which they must 
establish, and not a fact on which the jurisdiction of the 
Court, or their ability to sue, at all depends. If they can es- 
tablish the fact of refusal, together with the other facts nec- 
essary to make out a case for the relief asked, then they have 
a case on which they can rest ; otherwise, not. They have 
the right to a full answer and discovery from the defendants 
as to their whole case, this part as well as the rest, unless 
there is some outside fact which would show that they have 



204 VERMONT, 



Dwight V. The Central Yermont Railroad Compaoy. 



no right to maintaiii the suit at all ; or some single fact on 
which the whole case depends'is objected to by plea, and full 
answer and diBCovery is made to that part of the case. Pore 
and proper pleas in equity were such as set up some fact out- 
side of the bill, which would show that the b^ should not be 
answered at alL These pleas required no answer to sup- 
port them, for they would not be included in that which 
the party was called upon to answer. Anomalous pleas, 
denying a single part of the case made by the bill, on which 
the whole case depended, came to be allowed, for conveni- 
ence, to save trying the whole case when the failure of that 
part would be fatal ; and for safety against enforced discovery 
in a suit by those not in any manner entitled to the discovery; 
but, as the ground of the plea would be included in what the 
defendant was called upon to answer, he could not avoid the 
right to have at least that part answered, by merely pleading 
to it He must answer that, although the plea raising the 
objection and the answer supporting it might show that no 
answer to the rest of the case ought to be required. If this 
plea should be allowed, the orators would be deprived of the 
discovery on oath to which they are entitled, as to this part of 
the case, as evidence upon the traverse of the plea, if they 
should traverse it, as they would have a right to. This would 
be contrary to sound principles and to authority. {Story^s Eq. 
PZ., § 672, et seq.) These views are not contrary to the deci- 
sion in Memphis v. Deatiy (8 WaU.y 64,) cited and much relied 
upon in behalf of the defendants. There there was an answer 
by the party pleading, as well as the plea, denying refusal of 
the directors to prosecute, and the cause appears to have been 
decided, in both Courts, in chief, and not upon the plea alone. 
The plea of John Gregory Smith depends solely upon the 
eflfect of the pendency of the suit in the State Court of Chan- 
cery, in favor of himself and other security holders, of which 
James K. Langdon is the foremost plaintiff in the title to the 
suit, against the Yermont and Canada Kailro^d Company, 
through whose rights the orators here make claim. Doubts 
have been entertained by this Court and some others as to 



JANUARY, 1882. 205 



Dwigfat V. The Central Vermont Railroad Company. 

whether the pendency of a snit in a State or Federal Court 
in the same District might not be snccessf ully pleaded to the 
farther prosecution of a like snit in the other Court, and this 
Court inclined to the opinion that it could be. (JHercantile 
Trust Company v. Lamoille Valley Railroad Company^ 16 
Blaichf, C. a B.y 324 ; Andrews v. Sniith, 19 Id., 100.) 
But it now seems to be well settled that it cannot be. {Oor- 
don V. CfUfoU, 99 U. S., 168 ; iMham, v. Ghafee, 7 Fed. 
Bep.y 520.) If this were not so, it has always been held, 
that, in order to have the mere pendency of one suit defeat 
another, the suits must be between the same parties, or their 
reptesentatiyes, upon the same facts and for the same relief. 
( Watson v. Jones^ 13 Wall., 679.) A very slight examination 
and comparison of the two cases will show that they are not 
brought upon the same facts nor for the same relief. The 
plea is pleaded to the whole bill. According to both bills 
the Central Vermont Bailroad Company is in possession of 
the road. In that case it is an orator, as a security holder, 
seeking to hold the road as security for its pay. This partic- 
ular defendant is a defendant there, admitting the right of 
the Central Yermont Railroad Company. That is essentially 
a bill of foreclosure by security holders in possession. The 
decree would ordinarily be that those interested must pay or 
be foredoeed of all right to redeem. The decree could go no 
further than to cut off their right if they should not redeem. 
If they should redeem, the possession would remain to be 
maintained by any other right which the possessor might 
have or claim to have, so far as it would prevail. Another 
Buit would be necessary to determine the rights of the Ver- 
mont and Canada Railroad Company and its stockholders, as 
to everything but the foreclosure. In this suit the right to 
the road is attempted to be maintained outside of the right 
to redeem. If this plea should prevail there would be no suit 
left in which that right could be tried. 

The plea of the Central Vermont Railroad Company 
raises the most important questions of any of these pleas, and 
has received such careful consideration as its importance has 



206 VERMONT, 



Dwight V. The Central YermoDt Railroad CompaDy. 

seemed to demand. The bill alleges that this defendant is in 
possession of the road without right and against the right of 
the Yermon't and Canada Railroad Company and of the 
orators. This plea asserts that it was placed in possession hj 
the Court of Chancery of Franklin County, to run, operate 
and manage the road under the decrees and orders theretofore 
made, and under the direction of the Court, so long as it 
should continue to act as such receiver and manager, and 
denies that it is in possession without right and thatit ought 
to be compelled to surrender its possession to the Vermont 
and Canada Eailroad Company, and prays judgment whether 
it ought to answer further. The proceedings upon which it 
was placed in possession show that certain persons were in 
regular course made receivers of this road, with other railroad 
property, to operate the roads, and out of the income to pay 
the rent to the Vermont and Canada Railroad Company; 
that, pursuant to an agreement between the parties, according 
to its terms embodied in a decree, the then receivers continued 
to operate the roads according to the provisions of the agree- 
ment and decree, by which they were to operate them and 
apply the income to the payment of the rent, then to the pay- 
ment of the first mortgage bonds of the Vermont Central 
Railroad, then to the second mortgage bonds of the Vermont 
Central Railroad, and then to pay it to the Vermont Central 
Railroad Company ; and that, upon the joint petition of those 
receivers and their saccessors and the Central Vermont Bail- 
road Company, a decree was made, by which the Central 
Vermont Railroad Company was placed in possession in their 
stead. The orators claim that the prior possessors had lost 
their right to this road through their non-payment of rent, 
and that the transfer to the Central Vermont Railroad Com- 
pany was merely a transfer by one to the other, although 
sanctioned by the Court, and that the transferee took no 
greater or different rights than the transferrers had. The 
defendants claim that the transfer was ordered by the Court, 
that the rights of the Central Vermont Railroad Company 
under the transfer cannot be inquired into anywhere except 



JAITOART, 1882. 207 



Dwight V. The Central Yermont Railroad Company. 

m that Court, and that they are valid everywhere else against 
all claimants. The right of the orators, denied by the plea, is 
the same which they set up and seek to enforce by their bill, 
and which they claim to have tried and determined upon the 
answer of the defendants, in the usual course. As stated 
before, the parties are citizens of different States, and this is 
a suit in which there is a controversy between them, and 
which those bringing it have the right to have determined in 
this Court, unless there is some unnsnal reason for turning 
them ont of Court. As said by Mr. Justice Campbell, in 
Hyde v. Stone^ (20 How., 170 :) " But the courts of the United 
States are bound to proceed to judgment, and to afford redress 
to suitors before them, in every case to which their jurisdic- 
tion extends. They cannot abdicate their authority or duty 
in any case in favor of another jurisdiction." This is not a 
mere matter of abatement ; it goes to the right, and none the less 
because the right of the defendant may rest upon an order of 
the Court. The order of Court, whatever its effect is, may be 
discharged before any decision is reached and, if it should be, 
the rights of the parties otherwise would still remain to be 
determined. If it should not be, but should remain in force, 
whatever right it should give to any party, or whatever im- 
munity from interference it should afford, could be maintained 
and upheld. If that should be the defendant's title, and it 
should be found to be good, it would prevail. There would 
be no conflict between Courts, for all rights acquired through 
the State Court, and all protection furnished by the author- 
ity of that Court, would be respected. There is no sound 
reason apparent why these rights may not stand for trial ac- 
cording to the usual course, the same as rights acquired by 
contract, or in any other mode. On principle, this seems to 
be the proper course. And there is not any case shown by 
counsel, or which has been seen by the Court, among the 
many wherein rights acquired under legal proceedings have 
come up for adjudication, in which the decision has been 
made otherwise than in chief. In Hagan v. Lucas^ (10 Pet.y 
400,) where the title of a sheriff to property seized by him 



208 YERMONT, 



Dwigfat V. The Centnl Yennoni Railroad Company. 

and receipted, was upheld against a marshal of the United 
States who seized it subsequently, the trial was upon the 
merits of these respective rights. So, in Brawn y. Clarkiy 
(4 ffow.j 4,) and in PtUli^am v. Otbomej (17 ]Iow.y 471.) And 
in Taylor v. Carryly (20 How.^ 683,) where the question was 
as to the right of a State seizure as against proceedings in 
Admiralty, the trial was not upon any plea denying the right 
to interfere, but was upon the title acquired through the pro- 
ceedings. In Freema/a y. Howe^ (24 Haw.^ ^60,) the right of 
a mortgagee to personal property taken by the marshal on pro- 
cess against the mortgagor was tried on replevin, in chief. 
So, similar rights were tried in an action of trespass, in Buck 
V. Cclbath, (3 WaU., 334.) And, in Wiswall v. Sampson, 
(14 How.^ 52,) the right acquired by the levy of a marshal 
upon property in possession of a receiver was tried upon 
ejectment, on the merits. In Pond v. Vermont VaUey Rail- 
road Company^ (12 BUUchf. C. C. B.y 292,) the question of 
this same receivership was raised, but not until after the de- 
cision reported, and upon the hearing before Circuit Judge 
Johnson, on answers and proofs, and it was disposed of as not 
affecting the rights of the parties to the property involved, 
nor the jurisdiction of the Court over the case. 

Attention has been particularly called to the provisions of 
section 5 of the Act of March 3d, 1875, to determine the 
jurisdiction of the Circuit Courts, &c., (18 ZT". S. Stat, at 
Large, ^72,) enacting, ^^ that if, in any suit commenced in a 
Circuit Court, or removed from a State Court to a Circuit 
Court of the United States, it shall appear to the satisfaction 
of said (Tircoit Court, at any time after such suit has been 
brought or removed thereto, that such suit does not really 
and substantially involve a dispute or controversy properly 
within the jurisdiction of said Circuit Court, or that the 
parties to said suit have been improperly or collusively made 
or joined, either as plaintiffs or defendants, for the purpose 
of creating a case cognizable or removable under this Act, 
the said Circuit Court shall proceed no further therein, but 
shall dismiss the suit or remand it to the Court from which it 



JAiniARY, 1882. 309 



Dwight V. The Central Yennont Railroad Company. 

was removed, as justice may require, and shall make such or- 
der as to costs as shall be just." Speaking of this section, John- 
son, J., in Warner v. The Pennsylvania Railroad Compa/ny^ 
<13 Blatdhf. C. C. jS.y 231,) said : " All that is necessary to 
bring the case really and substantially within the jurisdiction 
is, that it involves a controversy of the character, either as to 
the subject-matter or the parties, specified in either the section 
which defines the jurisdiction by original suit, or that which 
authorizes removal and the acquisition of jurisdiction in that 
manner.^' As before stated and shown, the parties to this 
suit are citizens of different States and the suit is one of 
which this Court has jurisdiction for that reason, if the ora- 
tors can make out the case presented by their bill, including 
the refusal of the directors to prosecute, as a part of their case ; 
if they cannot, they have no case. That part of their case, as 
also before shown^ has not been denied in the necessary man- 
ner, by answer, to be efiective to defeat the case upon that 
point, and there is no evidence before the Court, upon that 
or any other point, to make it appear at all that parties have 
been either improperly or coUusively made or joined for the 
purpose of creating a case within the jurisdiction. There is 
nothing before the Court now on which the Court is author- 
ized to act under the provisions of that section. 

The pleas and demurrer are overruled, the defendants to 
answer over by the first day of next term. 

£ t/i Phelps and Prout ds WdOcsTy for the plaintiffs. 



B. F. Fifidd^ for the defendants. 



Vol. XX.— U 



210 VERMONT, 



Dwight V. Smith. 



JoNATHAir DwiaHT AND OTHERS 

J. Gregory Smith and others. In Equity. 

In this case a demurrer to a bill in equity was Bostained because the bin did 
not show definitely and distinctly a right in the plaintiflb to equitable relief 
against the defendants. 

(Before Wekklxr, J., Vermont, January 14th, 1882.) 

Wheeler, J. This cause hais been heard upon a demar- 
rer to the bill of complaint for want of equitj in favor of the 
orators, generally ; and for want of sufficient definiteness in 
stating the grounds for the relief claimed. The bill alone is 
to be looked at in determining the questions so raised. Ac- 
cording to the bill, the orators are now the holders of the first 
mortgage bonds to a large amount, but when thej became 
such holders is not shown ; some of the defendants are 
trustees in that mortgage, others are the representatiyes of a 
trustee deceased ; another defendant is the Central Yermont 
Railroad Company alleged to be in possession of the mort- 
gaged property, others are directors in the latter corporation ; 
the trustees have both neglected and violated their duty to 
the first mortgage bondholders while in possession of the 
mortgaged property, in not accounting to them for moneys 
received . by them as trustees for them, and in delivering the 
property to the Central Vermont Bailroad Company against 
their rights and expressed wishes ; and the Central Vermont 
Eailroad Company has received the income of the mortgaged 
property and not accounted for it, and its directors made 
defendants have participated in that act. 

If the trustees received income from the mortgaged prop- 
erty, belonging to the bondholders and to be distributed to 
lem, the money would belong and be to be distributed to 



JAITOAKY, 1882. 211 



Dwight V. Smith. 



the persons who were at that time bondholders, and the right 
to it would not pass to persons subsequently acquiring the 
bonds, unless they expressly acquired the right to it also. 
The claims of the bondholders against the trustees would not 
be upon the bonds themselves, like the claims against the 
obligors in the bonds, although they would be on account of 
the bonds, but would be claims against the trustees personally 
for the moneys received to the use of the bondholders, and 
these claims would not be assignable at law, although they 
might be in equity. In a suit or proceeding upon the bonds 
thenaselyes the production of the bonds and coupons, or the 
allegation of their ownership, might import that the holder 
had held them at the time of the accruing of the interest in- 
cidental to the debt, and entitle him to recover for the whole ; 
but not so as to a claim not upon the bonds, but for money 
received to the use of the bondholders. The production of 
the bonds would not make out a cause of action or claim for 
relief on account of that money. More would have to be 
shown, and enough more to make out a cause of action or 
ground for relief, and that would include showing a right to 
the money at the time it was received. The orators fall short 
of showing such right. 

And, if the orators had been holders of the bonds ever af- 
ter they were issued, and had so shown in their bill, it would 
be incumbent on them to show that their trustees, or those 
holding the property in place of the trustees, did receive 
money belonging to them, or did so conduct themselves with 
the property as to make themselves accountable for money as 
if they had received it. The bill does not allege that the 
trustees received any money belonging to the bondholders 
prior to their appointment as receivers ; nor that, while they 
were in fact receivers, they received anything more than 
enough to pay the Vermont and Canada rent, which was to 
he first paid ; nor that they ceased to be receivers in fact un- 
til the making of the compromise agreement ; nor then other- 
wise than by the force of that agreement. That agreement 
i8 annexed to the bill and made a part of it. The bill does 



212 VERMOHT. 



Oris wold v. The Central Yermont Railroad Company. 

— - • — ~ ~- — • — ^ ■ I ■ ■ I 

not show that the orators are not bound and willing to stand 
upon that agreement. If thej are, then, as to them, the in- 
come raised afterwards was to be distributed according to 
that agreement. Some of that income was to go to the Yer- 
mont and Canada Railroad Company for rent ; how much 
does not appear. A gross amount of income for a term of 
years is stated, but whether that amount was greater than the 
amount of rent to be lii'st paid is not shown or stated. The 
same would be true if the compromise agreement was not 
binding upon them ; the amount to be paid before anything 
would remain to apply on these bonds would not appear, and, 
consequently, whether anything would be left to go to the 
bond-holders would not in either case appear. The bill should 
show definitely and distinctly not merely a right in somebody 
to equitable relief, but a right in the oratora to equitable re- 
lief against the defendants* 
The demurrer is sustained. 

Francis A. Brooks and WUliam G. Shawy for the pkdni- 
ifb. 

Benjamin F, Fifield and Daniel Roberts^ for the defend- 
ants. 



JoHK N. A. Gbiswold and othxbs 

vs. 

The Cbntbal YEK&fONT Railroad Company and others. 

In Equity. 

J. and otben, citiiens of New York, and cxecnton in that State of G., late a 
citicen of New York, filed this bill to enforce liens on rolling stock, and eam- 
iogs of rolling stock, of two railroads, pledged by some of the defendanU 
while in possession of those roads, and a corporation, their successors in pos- 
session, by consent of parties and order of a Conrt of the State of Yermont 
thereupon, for the security of several series of equipment loans, in which ths 



JANUARY, 1882. 218 



Qriswold «. The Central Vermont Railroad Cknnpany. 

plaintifb, aa executors, inrested. Some of the defendants demurred on the 
groond that owners of the different series of the bonds had no common in- 
terest in the seenrities; that the bonds were not referred to as a part of the 
bill, nor made a part of, nor attached to, the bill; that the doings of the 
managers in possession prior to the possession of the corporation could not 
properly be joined with its doings; and tliat, on the face of the bill, it appeared 
that the Gonrt had not jurisdiction. The corporation pleaded the proceedings 
of the State Ck>urt in bar of jurisdiction, part of which was a provision, in a 
decree in that Court, that that Court might be applied to for the realiration 
of the seeurities held by the plaintiib: BlUd, that the demurrer and the plea 
must be oTermled. 

The plaintiffs, although executors in New York, could sue in Vermont, their 
rights nerer haying accrued to their testator. 

The said proTision for relief in said decree of the State Court did not exclude 
all other remedies. 

Hit fact that property is being administered upon in State proceedings does 
not preront citixens of other States from' proceeding in the Federal Courts to 
establish their claims and obtain relief 

(BeCDre Wbeslbr, J., Vermont, January 14th, 1882.) 

Wheeler, J. The orators are citizens of New York, and 
executors in that State of George Griswold, late a citizen of 
that State, and bring this bill to enforce liens upon rolling 
stock, and earnings of rolling stock, of the Yermont Central 
and Yermont and Canada Railroads, pledged by some of the 
defendants while in possession of those roads, and the Cen- 
tral Yermont Railroad Company, their successors in posses- 
rion, by consent of parties, and order of the Court of Chan- 
cery of the State of Yermont thereupon, for the security of 
several series of equipment loans, in which the orators, as ex- 
ecutors, invested. 

Some of the defendants have demurred, assigning, for 
cause, that owners of the different series of bonds have no 
common interest in the securities ; that the bonds are not re- 
ferred to as a part of the bill, nor made a part of, nor attached 
to, the biU ; that the doings of the managers in possession 
prior to the possession of the Central Yermont Railroad Com- 
pany cannot properly be joined with the doings of that com- 
pany ; and that, on the face of the bill, it appears that this 
Court has not jurisdiction. The Central Yermont Railroad 
Company has pleaded the proceedings of the State Court of 



214 VERMONT, 



Griswold «. The Central Yermont Railroid Ck>mpany. 

Chancery in bar to the jurisdiction of this Conrt, from which 
it appears, that some of these defendants, with other p^ersons, 
were made receivers of these roads in a cause pending be- 
tween the Yermont and Canada Bailroad Company, and the 
Vermont Central Bailroad Company and its security holders ; 
that, while so in possession, an agreement was made between 
the parties, and embodied in a decree of the Court, under 
which those in possession and their successors were continued 
in possessioD, and by one of the provisions of which the cause 
in which the proceedings had been taken was kept in Court, 
with liberty to any party to apply to the Court for further 
orders, as they might be advised ; that, in the proceedings au- 
thorizing these loans, and as a part of the decrees under 
which they were issued, it was provided, that, in case the 
trustees should fail to pay the notes or interest, the holders 
might apply to that Court for the realization of their securi- 
ties, or for a summary order for the payment of the amount 
due, out of any property in the hands of the trustees, and that 
a copy of this part of the decrees was printed upon, and made 
a part of, the notes. The cause has now been heard upon 
these causes of demurrer and this plea. 

The causes of demurrer do not require any eactended no- 
tice. The claims are asserted in favor of parties having like 
claims upon common property against parties in possession of 
that property, to enforce a common trust. The Central Ver- 
mont Bailroad Company succeeded to the duties of its pre- 
decessors in respect to the property, and still the predecessors 
were not discharged ; therefore, all are connected, and all are 
properly joined. If the bonds or notes are sufficiently set 
forth to show their terms and effect, that is enough, without 
reciting them, further referring to them, or attaching copies 
of them ; and it is not pretended but that they are so set 
forth. The question as to the jurisdiction of this Court ia in- 
volved and included in that made by the plea, except as to a 
question made whether the orators, being executors in the 
State of New York, can sue out of that State. This does not 
involve any question as to whether they so succeed to the 



JANUARY, 1882. 215 



Gii^wold «. The Central Yermont Railroad Company. 

rights of their testator out of the State where they are execQ- 
tors, that they can represent him and recover upon his rights 
elsewhere ; these rights never accrued to him at alL Thej 
aocmed to the orators themselves, and accrued to them in the 
same capacity, and, for aught that appears, in the same place, 
in which they are attempting to enforce the rights. Letters 
of executorship or administration extend only to the goods or 
estate which were of the testator or intestate at the time of 
decease, and would not include these securities, if taken out 
in Yermont, as against the rights of the orators. 

As to the other question of jurisdiction, as the parties are 
citizens of different States, the amount in dispute is large 
enough, and this Court has, and is bound to take, jurisdiction, 
when a proper case is brought, unless there is something in 
the nature of the case or situation of the pro'perty that ex- 
dudes the jurisdiction. It is argued, for the defendants, that 
those contracting the debts were still the receivers of the 
Court; that they contracted the debts as such ; that all the 
property from which the debts were to be paid was in their 
possession as receivers ; that no other Court could reach the 
property to afford relief for non-payment, and that the pro- 
yiflion for relief, in the order authorizing the loans and made 
a part of the notes, excludes all other remedies. The juris- 
diction of Courts is given by the law, and not by the parties, 
and can neither be conferred nor taken away by their mere 
consent or agreement. If the conditions prescribed by the law 
for jurisdiction exist, the jurisdiction exists. The conditions 
prescribed for giving this Court jurisdiction of the parties ex- 
ists, and jurisdiction of the case must follow, unless the sub- 
ject is out of reach. Neither by the terms of the securities, 
as set forth in the bill, or as shown in the plea, nor by the 
conditions of the proceedings, was anything to be done by the 
Ooort before the defendants could carry out their obligation 
to set apart the earnings of the rolling stock as agreed and 
tpply them to the satisfaction of these notes. They were at 
liberty to do it, and, so far as appears, were bound to do it. 
If there was a failure, the holders of the notes would have a 



216 VERMONT, 



Qriswold r. The Central Vermont Railroad Company. 

right to apply to the Conrts of the land for relief, and they 
would not be deprived of the right to apply to any one Court 
because they had the right to apply to another. Those which 
were provided were provided for the purpose of giving the 
right to apply to them. There is nothing to prevent apply- 
ing to this Court, unless it may be that, as is argued, the prop- 
erty is in the course of administration of the State Court. It 
is, however, well settled, that the fact that property is being 
administered upon in State proceedings does not prevent citi- - 
zens of other States from proceeding in the Circuit Courts of 
the United States to establish their claims and obtain relief^ 
if entitled to it. (Suydam v. Broadnax, 14 Pet.^ 67 ; Ermn 
V. Lowry^ 7 Baw.y 172.) In Shelby v. Bacon, (10 Baio., 66,) 
the assets of an insolvent corporation were being administered, 
under the laws of Pennsylvania, by assignees accountable to 
the State Court of Common Fleas. The assignees refused to 
allow the claim of the plaintiff, and he brought suit in the 
United States Circuit Court, to which the assignees pleaded 
the pendency of the State proceedings. After noticing some 
defects in the plea, Mr. Justice McLean, in delivering the 
opinion of the Court, said : ^' But, if the plea had been per- 
fect in this respect, it would not follow that the complainant 
could not invoke the jurisdiction of the Circuit Court. He, 
being a non-resident, has his option to bring his suit in that 
Court, unless he has submitted, or is made a party, in some 
form, to the special jurisdiction of the Court of Common 
Pleas. It appears from the bill, that the assignees have re- 
fused to allow the claim of the plaintiff, or any part of it. 
To establish this claim as against the assignees, the complain- 
ant has a right to sue in the Circuit Court, which was estab- 
lished chiefly for the benefit of non-residents. JNTot that the 
claim should thus be established by any novel principle of 
law or equity, but that his rights might be investigated free 
from any supposed local prejudice or unconstitutional legist 
lation. On the most liberal construction favorable to the ex- 
ercise of the special jurisdiction, the rights of the plaintiff 
in this respect could not, against his consent, be drawn into 



JANUARY, 1882. 217 



Giiswold V. The Central Yennont Railroad Company. 



it." In MaOett v. Dexter, (1 Curtii C. a B,, 178,) sometimes 
relied upon to avoid the jurisdiction of the Circuit Court, ju- 
rifidiction was entertained in favor of a non-resident, to re- 
opCT accounts of administrators settled in the Probate Court 
of Rhode Island, on the ground of fraud, although it was re- 
fused as to accounts then actually in process of settlement in 
the State Court. ( Union Bank v. Jolly y 18 How., 603 ; Hyde 
V. Stone, 20 Hoio., 170 ; Payne v. Hook, 7 WdU., 425.) 

According to the allegations of the bill, a particular fund 
iras to be set apart for the payment of the orators' notes, which 
was not set apart, or, if set apart, has not been applied to that 
purpose. The orators have the right to apply to the Federal 
Courts, on account of their citizenship, to have their claims 
investigated. The merits of their claims are not yet before 
the Court, and cannot be until answer and proofs are made. 
The only question now is, whether the case shall proceed to 
answer and proofs. Nothing is seen adequate to deprive the 
orators of their right to resort to the Federal Courts, in com- 
mon with all citizens of one State having or claiming to have 
cause of action against citizens of another State, to have their 
causes tried. 

The demurrer and plea are overruled, defendants to answer 
over by the first day of next term. 

Prout dk WalkeTy for the plaintiffs. 

B. F. Fifield and Z. P. Poland, for the defendants. 



318 VERMONT, 



Webb V. The Yermont CoDtral Rftilroad OomiNuiy. 



William H. Wsbb and othbks 

■ 

vs. 

The Yebmokt Central Railroad Company and othebb. 

In Equity. 

Hie bin in ibis OMe was rastained, on demurrer, as a bill by second mortgagee 

bondholders of a railroad company, against the mortgagor and a trustee io 

the mortgage, to foreclose the mortgage. 
It is a sofficient reason for the bondholders to proceed in their own names and 

behalf, making the trustees defendants, that the trustees bare aoqnired ad- 

Terse interests, and stand in a hostile position, so that they cannot maintaia 

the plaintifis' rights without attacking their own. 
A demurrer to the bill by the trustees of a prior mortgage and by parties in 

possession under them was sustained, because the bill was not framed as t 

bill to redeem the prior mortgage. 

(Before Whxxlsb, J., Vermont, January 14tb, 1882.) 

Whebleb, J. The defendants, the Yermont Central Bail- 
road Company, the Central Yermont Bailroad Company, John 
Gregory Smith, Worthington C. Smith, and James R Lang- 
don demar to the bill, and the cause has been heard npon the 
demurrer. The orators are second mortgage bondholders of 
the Yermont Central Railroad ; the defendant John Gregoiy 
Smith is a trustee in the first mortgage ; Worthington C. 
Smith is a trustee in the second mortgage ; and both of them 
and the defendant Langdon are officers in the Central Yer- 
mont Railroad Company, which is in possession received from 
the trustees of the first mortgage. 

One cause of demurrer assigned is, that the bill does not 
show sufficient reason for the bondholders to proceed in their 
own names and behalf. But the bill does show that the truB- 
tees have acquired adverse interests and stand in a hostile po- 
sition, so that they cannot maintain the orators' rights with- 
out attacking their own. They could not be orators against 
themselves ; and this is a sufficient reason for making them 



JANUARY, 1882. 219 



Webb V. The Yermont Central Railroad Company. 



defendants, where the orators' interests were in soit, atfd 
with them as defendants there woald be no one to prosecute 
the orators' claims bnt the orators themselves. The bond- 
holders are the real owners of the mortgage interest, and the 
trustees haYe bnt a dry legal title, and, when they hold that ti- 
tle in opposition to the bondholders, the latter haYC good 
ground for proceeding in their own behalf, to' protect snch 
rights as they have, and the proper position of the trnstees in 
the proceedings is with the defendants. This canse of demur- 
rer cannot prevaiL 

Another ground is a want of equity in the case made by 
the bill generally. While being considered on this question, 
the bill cannot be aided by what is stated elsewhere, or by 
what is known in some other way, but must stand alone for 
examination, with all its allegations taken for this purpose to 
be tme. It states the prior mortgage as a valid incumbrance 
prior to the second mortgage, and that the trustees of the 
first mortgage were rightfully in possession by virtue of that 
mortgage, and that they procured their possession to pass to 
the Central Yermont Railroad Company. The orators' rights 
are subordinate to the first mortgage, and to those of the first 
mortgage trustees, and all holding under them. As against 
such they have no right but to redeem, and this bill is not 
adapted to that purpose ; it has not the proper allegations, 
offers of payment, nor parties. The bill states proceedings of 
Court by which the Central Vermont was placed in posses- 
sion, but alleges that they were all Yoid as to the orators, and 
aUeges that they were had at the instance of the trustees in 
the first mortgage, and that the Central Vermont claims to 
hold possession by the force of the proceedings. This does 
not show the Central Vermont to be in possession as a mere 
wrong-doer, subject to the rights of any owner, with none of 
its own. It would not lose the rights it had by claiming to 
hold under those it had not. If the proceedings were void 
they conferred no right ; but those who made use of them to 
transfer possession would, by the act, pass such possession as 
they had to pass, and the possession taken would be good as 



220 VERMONT, 



Webb V. The Vermont Central Railroad Company. 



theirB, because they gave it, although there was nothing else 
to uphold it. Thus, the possession of the Central Yermont 
appears to be the same as that of the first mortgage trustees, 
and such tliat the second mortgage bondholders cannot, upon 
the allegations of this bill, disturb it, without redeeming the 
first mortgage. They cannot foreclose their mortgage against 
either, because both stand upon a mortgage which is prior to 
theirs. 

The bill states a transaction by which an agreement, and a 
decree upon it, were made, providing for payment of rent, 
then of the first mortgage, and then of the second mortgage, 
by those in posses8ion,and that the Central Yermont is 
under that duty, but does not state that anything has be^ 
received to apply upon the second mortgage, and does not 
pray for any account ; so, there is no ground for relief in 
that direction. It states that the first mortgage has been en- 
larged against the rights of the second mortgage bondholders, 
and that the trustees and the Central Yermont hold securities 
which they claim to be a prior lien to the second mortgage, 
and which are not ; but, as the orators do not seek to redeem 
such prior incumbrances as they have which are valid, there 
is no relief to be afforded by determining the validity of any, 
and no ground for making such a determination. The bill 
shows a right to foreclose the mortgage against the mort- 
gagor, and to have the trustee a defendant for that purpose, 
and shows no other ground for relief. 

The demurrer of the Central Yermont Eailroad Company, 
and John Gregory Smith and James R. Langdon is sustained, 
and that of the Yermont Central Bailroad Company and 
Worthington C. Smith is overruled. 

William O. Shaw and Francis A, Brooks^ for the plaint- 
iffs. 

Benjamin F, Fifidd and Daniel Roberts^ for the defend- 
ants. 



JANUARY, 1882. 221 



Coes «. The CollixiB Oompanj. 



IjObinq Coes 

vs. 

The Collins Company. In Equity. 

Claim 1 of re-iaaued letters patent No. 8,488, granted to Loring Goee, June Isfc, 
1869, for an " improvement in wrench," the original patent. No. 40,590, having 
beeo granted to Thomas H. Dodge, as assignee of George C. Taft, the inven- 
tor, November 10th, 1868, for an " improvement in wrenclies," namely, *' An 
improved Coes wrench, so constructed that the thrust or back strain of the 
roaette screw, when the wrenoh is used, shall be borne by the shank, instead 
of the handle of the wrench, substantiaUy as described," is not infringed by 
a wrench made in accordance with the description in letters patent No. 
60,864, granted to Jordan and Smith, October 10th, 1866, for an "improved 
wrench." 

The claim is not a claim to so constructing a Goes wrench of 1841, that the 
back thrust shall be borne by the shank ultimately, through the plate and 
the handle and the end nut, nor is it a claim to having the shank bear the 
thmst at some point before the handle is reached, without reference to the 
mechanical means, but it is a claim to the means shown ** substantially as de- 
scribed," and it is not infringed by a wrench in which the plate is not re- 
lieved. 

(Before Blatohiord, J., Connecticut, January 16ih, 1882.) 

Blatohfobd, J. This suit is brought on ro-issned letters 
patent No. 3,483, granted to Loring Coes, the plaintiff, June 
Ist, 1869, for an " improvement in wrench," the original pat- 
ent, No. 40,590, having been granted to Thomas fl. Dodge, as 
ttsignee of George C. Taft, the inventor, November 10th. 1863, 
for an " improvement in wrenches." The specification of the 
re-ifisne is signed by Loring Coes, and is as follows, including 
vhat is inside of brackets, and what is outside of brackets, omit- 
ing what is in italics : " Figure 1 represents a perspective view 
of [a * Coes wrench,' having the said Taf t's improvements applied 
thereto,] my iinprovement^ and Figure 2 represents [sections of 
detached parts of the wrench shown in Fig. 1.] a detdched view 
of the ' rosette ' andpa/rU therevyUh oonneoted. Similar letters of 



222 coiSTNEcrncuT, 



Goes V. The CcllinB Company. 



reference indicate like parts in the drawings. ♦ ♦ * [The 
nature of the said Taft's invention relates to a mode of con- 
structing the Coes wrench patented April 16, 1841, in snch a 
manner that the handle shall be relieved from the back thmst 
or strain of the rosette screw, when the wrench is used. In 
mj said wrench, the rosette presses against the ferrule, and 
the ferrule, in turn, against the front end of the handle, 
whereby the handle was often split and broken. In the draw- 
ings] A is the shank of [the] my wrench ; B, the stationary 
jaw ; and B' the sliding jaw, through the part B" of which 
the operating screw C works. D is the rosette, formed in 
one piece, as shown^ with the screw O, [as shown,] and jonr- 
nailed, at a, to [the] ferrule E. Parallel grooves, rf, rf, rf, [in 
this instance,] are cut in the shank A, [at right angles to the 
line of motion of the movable jaw B"] in which [grooves] pro- 
jections, tf, a, €, of the rosette turn. The projections «, a, a, are 
made parallel to each other, and are bevelled on one side, as 
shown, to lessen the friction of the rosette [in] upon turning. 
The operation is as follows : To adapt the opening between 
the jaws to the size of the object to be clasped thereby, the 
operator turns the rosette to the right or left, as the size of 
the object [may require,] wUl indicate^ which will turn the 
screw in the part B" of the sliding jaw B', [thereby increasing 
or diminishing, as the case may be,] andj as to the way tumedj 
will increase or diminish the distance between the jaws, as 
required. The [advantage] advantages of having a rosette 
of this [improvement] form is that it sicstains the pressure 
which [would otherwise] ofhenoise would come [upon] on the 
[handle is transferred to the shank of the wrench, thus obviat- 
ing one, and really the only serious, objection to the said Coes 
wrench.'] ferrtde E^ which presfiWf*e is often so great as to hreah 
it offy or displace it^ thus rendering the whole wrench useless. 
Having thtis described my improved wreru)h^ I am aware that 
the [rosettes] rosette of screw wrenches [have] has heretofore 
been constructed with [screw threads] a screw thready and 
[such devices are not claimed,] / do not claim such device^ 
but what [is claimed as the invention of the said George C. 



JAKUAKT, 1882. 238 



€066 V. The Collins Compftny. 



Taft,and desired to have secured] I daim and desire to secure 
by letters patent is : " Heading in the foregoing what is out- 
side of brackets, including what is in italics, and omittiug 
what is inside of brackets, gives the text of the specification 
of the original patent. There are 3 claims in the re-issue, aa 
follows : " 1. An improved Goes wrench, so constructed that 
the thrust or back strain of the rosette screw, when the 
wrench is used, shall be borne by the shank, instead of the 
handle of the wrench, substantially as described. 2. A notch 
formed at right angles to the line of motion of the movable 
jaw, in the shank of a Goes wrench, for relieving the handle 
from the back strain of the rosette screw, substantially as de- 
scribed. 3. The combination of two or more parallel grooves, 
(f, in the shank A, with two or more corresponding projec- 
tions, tf, on the rosette D, the same not being spiral, but run- 
ning at right angles to the line of motion of the jaw, sub- 
stantially as described." There was only one claim in the 
original patent, as follows : ^' The combination of the parallel 
grooves dy dy dy in the shank A, vnth the corresponding pro- 
jections ej «,«, on the rosette D, the same not being spiral, but 
ranning at right angles to the line of motion of the jaw, thus 
relieving the ferrule from all strain, while retaining the 
rosette in the same relative position as respects the handle of 
the wrench, substantially as and for the purposes set forth.'' 

The defendant's wrench which is alleged to infringe claim 
1 of the re-issue is made in accordance with the description in 
letters patent No. 50,364, granted to Jordan and Smith, Oc- 
tober 10th, 1865, for an " improved wrench." 

The plaintiflPs wrench and the defendant's wrench both of 
them contain improvements engrafted upon the form of 
wrench shown in letters patent No. 2,054, granted to Loring 
Goes, the plaintiff, April 16th, 1841, for an " improvement in 
the method of constructing screw wrenches," and re-issued to 
him, No. 139, June 26th, 1819, for an "improvement in screw 
wrenches." The main feature of the Goes wrench of 1841 
was the moving of the adjustable jaw by a screw placed at 
the side of, and parallel with, the main bar which carried the 



284 OONHBCTICDT, 



Guee V. The Collins Company. 



permanent jaw at one end of it and the handle at the other 
end, the screw taking into an attachment to the adjastaUe 
jaw, and working that jaw to and fro withont itself moving 
otherwise than by rotation, and having on its end farthest 
from the fixed jaw a rosette or milled head, which never 
approached to or receded from the fixed jaw, and could there- 
fore be rotated, so as to rotate the screw, by the thumb of the 
hand which held the wrench, becanse the rosette always re- 
tained the same position relatively tc^ the handle of the 
wrench. A wooden handle was slipped over the handle end 
of the main bar, and a screw nnt on that end, bearing against 
the adjacent end of the wooden handle, held the other end of 
the wooden handle against a ferrule, and that against an iron 
plate, and that against a shoulder on the main bar. The iron 
plate projected out on the same side with the rosette and 
next that face of it farthest from the fixed jaw. The plate 
earried the revolving end of the screw, the baring point pro- 
jecting beyond the face of the rosette, such revolving end, 
rosette and screw being practically one piece and revolving 
together. In order to prevent the screw and the rosette from 
being carried bodily towards the fixed jaw by the sliding of 
the adjustable jaw on the main bar, a notch as long as the 
width of the periphery of the rosette was cut in or out of the 
substance of the main bar opposite the place intended for the 
permanent position of the rosette, and the periphery of the 
rosette turned within the notch, so that the edge of the rosette 
face nearest to the fixed jaw would catch against the edge of 
the notch, the angle of the notch being towards the fixed jaw. 
But, while this Coes wrench of 1841 had advantages it bad 
difficulties. There was a pressure against the plate by the 
rosette face farthest from the fiied jaw and by the end of the 
screw in its bearing, and thus the back strain or thrust from 
the bite of the jaws was communicated through the adjust- 
able jaw, its attachment, the screw and the plate, to the i&t- 
rule and so to the wooden handle, before it reached the main 
bar through the screw nut at the handle end. The plate and 
the ferrule were often broken or bent and pushed oat of 



JANTJARY, 1882. 225 



Co68 V. The Collins CompaDj. 



place and the wooden handle was split or crashed. It became 
desirable, therefore, to devise a way of taking off this back 
thrust before it coold reach the plate or the ferrule and thns 
the wooden handle, and of bringing it against the resisting 
strength of the n^ain bar itself between the plate and the 
fixed jaw. Taft did this by his invention of 1863. He took 
the Goes wrench of 1841, with its main bar, fixed jaw, adjust- 
able jaw, attachment thereto, screw, bearing, plate, ferrule, 
wooden handle, screw nut and extension of main bar, all as 
they were, and, in place of one rosette, he put in three paral- 
lel rosettes, with narrower peripheries, revolving, at right an- 
gles to the line of motion of the adjustable jaw, in three par- 
allel grooves in the adjacent face of the main bar, each groove 
bearing against both faces of its rosette, so as not only to pre- 
vent the rosette and the screw from being carried bodily to- 
wards the fixed jaw, but to cause the back thrust to be re- 
ceived by the side of the groove farthest from the fixed jaw, 
instead of, as before, by the plate. The grooves being cut in 
the main bar, the back thrust was intercepted by them, and 
the plate and the ferrule, and thus the wooden handle, were 
relieved from all liability to injury from the back thrust, 
while the rosette was retained in the same relative position to 
the handle which it had in the Coes wrench of 1841. In the 
original patent of 1863 the plate and the ferrule together are 
called the ferrule E, and it is stated that by the new arrange- 
ment the pressure which would otherwise come on the fer- 
rule is taken off from it, such pressure being ^* often so great 
as to break it off, or displace it, thus rendering the whole 
wrench useless." The daim in that patent states that the ar- 
rangement relieves the ferrule from all strain, while the 
rosette is retained in the same relative position as respects the 
handle of the wrench. The re-issue states that the nature of 
the invention relates to a mode of constructing the Coes 
wrench patented in 1841 in such a manner that the handle 
shall be relieved from the back thrust of the screw, the arrange- 
ment of the wrench of 1841 being that the rosette pressed 
against the ferrule, (the ferrule, £, being the plate and the 
Vol. XX.— 15 



826 OONNBCnCUT, 



Goes 9. The Ck>lliik8 Ck>mpttn7. 



f emde together,) and the ferrule against the front end of ihe 
handle, whereby the handle was often split and broken. It is 
not said, in the re-issne, that the rosette continues to mamtain 
always the same position rdatively to the handle, bat that is 
necessarily implied in speaking of the wrench improved npon 
as the Coes wrench patented in 1841, and is a necessary result 
of what is described in the text and shown in the drawings. 
The re-issue also states that the advantage of the improve- 
ment is that the pressure, which would otherwise come upon 
the handle, is transferred to the shank of the wrench. 

In the monkey wrenches used before the Goes patent of 
1841, a screw nut on the body of the main bar moved the 
movable jaw, a screw being cut on the body of the main bar, 
as shown in figure 2 of the Coes patent of 1841. In that 
form the direct linear or columnar strength of the main bar 
was availed of to resist the back thrust. When the Goes im- 
provement of 1841 was introduced that advantage was thrown 
away. The improvement of Taft in 1863 was an effort to re- 
store that advantage and yet retain the Coes improvement of 
1841. 

In the defendant's wrench the Coes wrench of 1841 is 
taken, with its main bar, fixed jaw, adjustable jaw, attach- 
ment thereto, screw, rosette, beiuing and plate. But under- 
neath the plate a screw nut is put on the extension of the 
main bar, a screw thread being cut in the extension, and this 
screw nut is screwed up tightly against the bottom of the 
plate, so that the back thrust comes against the extension at 
the screw thread. The wooden handle is slipped over the 
end of the extension and is held up against the bottom of the 
said screw nut by a screw nut at the extreme end of the ex- 
tension below the handle. The rosette is the same as the 
Coes rosette of 1841 and always maintains the same position 
relatively to the handle. 

The first daim of the re-issue, which is the only claim al- 
leged to have been infringed, is a daim to ^^ an improved 
Coes wrench, so constructed that the thrust or back strain of 
the rosette screw, when the wrench is used^ shall be borne by 



JANUARY, 1882. 227 



Goes V. The CoUinB Ck>mpaii7. 



the shank, instead of the handle of the wrench, substantially 
as described." Mr. Waters, an expert for the plaintiff, testi- 
fies that the defendant's wrench is, in his judgment, the same 
in its construction and mode of operation as the wrench de- 
scribed in the re-issue and referred to in the first claim, be- 
cause the essential novelty of the wrench described in the re- 
issue consists in a mode of construction to relieve the Coes 
wrench of the difScnlty described in the re-issue ; that this is 
done in the re-issue by bringing the back thrust to bear 
against projections on the main bar, running across it, against 
which the rosettes on the screw act ; that in the defendant's 
wrench the end throst is taken on the plate, and then, through 
the screw nut, comes on the shank by means of the threads 
inside of the screw nut and the threads on the shank, which 
bear against the former threads ; and that this is only an 
equivalent for the projections on the main bar, in the re-issue, 
against which the rosettes bear. Another of the plaintiff's 
experts, Mr. E. S. Benwick, states that the two wrenches 
obtain by substantially the same means the result of sustain- 
ing the strain of the movable jaw and of the rosette screw 
by the shank or bar of the wrench, in this, that in the de- 
fendant's wrench the rosette and the screw are combined with 
the rectangular part of the shank, or its equivalent, by a 
notch which limits the movement of the rosette and screw in 
both directions, without the intervention of the handle, the 
notdi having its upper shoulder formed by a portion of the 
rectangular shank itself, and its lower shoulder formed by 
the upper surface of the plate, which plate is rigidly secured 
to the shank; and that holding the lower shoulder of the 
notch to the shank by the screw nut in the defendant's wrench 
is a well known substitute for the Taft method of holding 
the lower shoulders of the grooves to the shank by the sub- 
stance of the material of which they are composed. 

It is entirely clear, as is testified to by Mr. H. B. Benwick, 
the defendant's expert, that if, in the Coes wrench of 1841, 
the back thrust of the screw reaches the plate it is trans- 
mitted through it and the wooden handle and the nut at the 



228 CONNECTICUT, 



Coes V. The Collins Company. 



end of the shank, which is an extension of the main bar, to 
the shank, so that it is borne by the shank. It comes back 
thus to the column formed of the main bar and shank, as one 
piece. If the plate bends or the ferrule is displaced or the 
wooden handle is broken, those are incidents of the pressure, 
and those incidents happen only because the thrust is being 
resisted by the shank. Taft brought the pressure back to 
the main bar by taking it ofi by the grooves and rosettes, be- 
fore reaching the plate, thus relieving not only the wooden 
handle and the end nut but also the plate. He did this by 
right angled grooves and rosettes, interposed before reaching 
the plate. If the first claim of the re-issue claims any more 
than this, it cannot be maintained. As a claim to so con- 
structing a Coes wrench of 1841, that the back thrust shall be 
borne by the shank ultimately, through the plate and the 
handle and the end nut, it would cover the Coes wrench of 
1841. As a claim to having the shank bear the thrust at 
some point before the handle is reached, without reference to 
the mechanical means, it is invalid. It must be regarded as 
a claim to the means shown ^' substantially as described." 
As such it is not infringed. Taft left the plate and the 
handle and the end nut outside of the course of the back 
thrust. The defendant's wrench does not leave the plate 
outside of such course. In it the thrust acts fully on the 
plate and a screw nut is interposed between the handle and 
the plate, having on it and on the shank the usual spiral 
threads. The two inventions are inventions in different di- 
rections, though both have a common ultimate object and de- 
sign. The wooden handle is relieved in both. But that is 
not sufficient to make out infringement. The plate is re- 
lieved by Taft, and not by the defendant. 

Claim one of the Taft re-issue must be read as a claim to 
an improved Coes wrench, constructed substantially as de- 
scribed. What is said in it about the bearing of the thrust 
by the shank instead of the handle is merely a statement of a 
result which the construction will effect, and is not a state- 
ment of means or mechanism. It is a daim to means, to the 



JANUARY, 1882. 229 



Bischofbheim tr. Baltzer. 



mechanism described which effects the result stated. The 
means employed by the defendant are different and are not a 
mechanical equivalent for the means in the re-issue. 
The bill is dismissed, with costs. 



George Z. Roberts^ for the plaintiff. 
William E, Svmonds^ for the defendant. 



Henby Louis Bisohoffsheih 
Herman R. Baltzer and William G. Taaks. In Equity. 

The modes of taking tettimony in equity cases explained. 

The proyiaion of Rule 68, in Equity, for taking testimony in an equity case, 

after it is at issue, by depositiou, according to the Acta of Congress, is still 

in force. 
Where testimony in a foreign country can be taken orally, it ought not, except 

for special reasons, to be taken otherwise. 
The plaintiff in an equity suit having applied for an order for a commission to 

examine himself on written interrogatories to be annexed to the commission, 

on an affidavit showing that he expected to prove by himself the material 

averments in the bill, or many of them, the Court allowed the defendant to 

cross^xamine him orally. 

(Before Blatohfobd, J., Southern District of New York, January 16th, 1882.) 

Blatchfobd, J. This is a suit in equity. Issue was joined 
by the filing of a replication to the answer, December Ist, 
1879. On the 5th of February, 1881, the plaintiffs solicitors, 
not haying before taken any testimony, served a notice in 
writing on the defendants' solicitors, that the plaintiff " de- 
sires the evidence to be adduced in this cause to be taken 
orally," and that witnesses would be examined in the city of 
New York, on February 11th. Two witnesses for the plaint- 



230 SOUTHERN DISTRICT OF NEW YORK, 

Bischoflbkeim «. Baltser. 

iff were examined orally under this notice, the last one in 
June, 1881. The time to take testimony has been extended 
and has not expired^. In May, 1881, the defendants' solic- 
itors having been previously informed by the plaintifPs solic- 
itors that the latter intended to have a commission issued to 
take in London, England, the deposition of the plaintiff, who 
resides in London, gave notice in writing to the plaintiff's so- 
licitors that the defendants' solicitors desired to cross-examine 
the plaintiff orally, and requested them to have the commis- 
sion executed during the ensuing July or September, when 
one of the defendants' solicitors would be in London and at- 
tend to the matter. To this notice no reply was ever re- 
ceived. One of the witnesses so examined in New York was 
the confidential manager of the plaintiff's business, residing 
in London, and it appears that the plaintiff has there legal 
advisers who have been consulted concerning the matters in 
issue herein. 

The plaintiff now applies for an order for a commission 
to examine himself on written interrogatories to be annexed 
to the commission, on an aflSdavit showing that he expects to 
prove by himself the material averments in the bill or many 
of them. The defendants ask that if a commission to exam- 
ine the plaintiff on written interrogatories be issued, the de- 
fendants have leave to cross-examine the plaintiff orally them- 
selves. 

By Kule 67 in Equity, as in force prior to the December 
Term, 1861, testimony in suits in equity might be taken by 
commission, on written interrogatories and cross-interrogatories, 
but by agreement it might be taken by oral interrogatories, 
under a commission. This applied even to testimony to be 
taken where a subpoena from the Court could reach the wit- 
ness. By Kule 68, testimony might also be taken in the 
cause, after it was at issue, by deposition, according to the 
Acts of Congress. Under Rule 69, publication of the testi- 
mony taken under such commissions might be ordered im- 
mediately upon the return of the commissions. The idea 
was that it was not known to the parties what the witnesses 



JANUARY, 188a. 281 



Biflohoffiiheim v. Baltcer. 



had testified to, the commisfiion being executed withoat the 
preeeDce of either party or solicitor. Formerly, the general 
mode in England of examining witnesses in equity was by 
interrogatories .in writing exhibited by the party. {DanidPs 
Ch. Pr., ch. 22, § 9.) At the December Term, 1861, (1 
Blacky 6,) a new practice was introduced, by a Rule made by 
the Supreme Court The clause in Bule 67 relating to taking 
testimony by agreement on oral interrogatories was repealed, 
and the Rule was amended by adding to it provisions making 
oval examination the rule, if either party desires it, and ex- 
amination by written interrogatories the exception. Under 
Rule 67 as amended, if neither party gives notice to the other 
that he desires the evidence to be taken orally, then the testi- 
mony may be taken by commission, as formerly, even where 
the witnesses are within the reach of the subpoena of the 
Court. But if either party gives notice to the other that he 
desires the evidence to be taken orally, then ^^ all the wit- 
nesses to be examined shall be examined before one of the 
examiners of the Court, or before an examiner to be specially 
appointed by the Court," the examination to take place on 
notice, in the presence of the parties and by counsel, and 
the witnesses to be cross-examined and re-examined, as nearly 
as may be in the mode used in common law Courts. At the 
elose of the added provisions is this : ^^ Testimony may be 
taken by commission in the usual way by written interroga- 
tories and cross-interrogatories, on motion to the Court in Term 
time, or to a judge in vacation, for special reasons, satisfac- 
tory to the Court or judge." This refers to the former way, 
to the way for which the new way was substituted, in case 
either party should give notice of his desire for an oral tak- 
ing ; and the notice so given was thus made subject to the 
power of the Court, for special reasons, to annul the usual 
effect of the notice. This last provision about taking testi- 
mony by commission in the usual way has no reference to 
issuing a dedimua potestaiem^ under § 866 of the Revised 
Statutes, formerly § 80 of the Act of September 24th, 1789, 



282 SOUTHERN DISTRICT OF NEW YORK, 

^ ^ * 

BiBchoffsheim v. Baltser. 

(1 TJ. S. Stat, at Large^ 90.) It refers to the usual way be- 
fore practised in eqnitj cases. 

Depositions may be taken nnder a dedimtis potestatenij 
nnder § 866, ^^ according to common usage," now as at any time 
hitherto, in a suit in equity. The words ^' common usage," 
in regard to a suit in equity, refer to the practice in Courts 
of equity. Under this practice, it was usual to examine wit- 
nesses abroad by written interrogatories and cross-interroga- 
tories. 

The provision of Kule 68, for taking testimony in an 
equity case, after it is at issue, by deposition, according to the 
Acts of Oongress, is still in force. Under. §§ 863 and 1,750 of 
the Bevised Statutes, depositions de bene esse in dvil causes 
may be taken in a foreign country by any secretary of lega- 
tion or consular officer. The mode of taking such depod- 
tions under §§ 863, 864 and 865 is by oral questions put at 
the time, if desired, and not necessarily by written interroga- 
tories given to the officer before commencing the taking. It 
is the same mode provided for by the amendment to Role 67. 
As, after either party has given notice to the other that he 
desires the evidence to be adduced in the cause to be taken 
orally, the testimony is not, except for special reasons, to be 
taken otherwise, so, by analogy, where testimony in a foreign 
country can be taken orally, it ought not, except for special 
reasons, to be taken otherwise. What would in any given 
case be sufficient special reasons must be left to be decided in 
each case. In the present case, the defendants are, I think, 
entitled to cross-examine the plaintiff orally. There is no 
reason why his direct examination should not be taken on 
written interrogatories, if desired. 

J. H. Choate^ for the plaintiff. 

C. M. Da Costa, for the defendants. 



JANUARY, 1882. ' 238 



Matthews v. Paffer. 



John Matthews 
vs. 
Alyin D. Puffer and othebs. In Equity. 

P., in a mat in eqaily against him for the infringement of a patent^ moyed to 
set aside the senrice of the sabposna on him, on the ground that the service 
was made upon him while he was attending the examination of witnesses in 
Kew York on an interference depen^ng between him and the plaintiff before 
the United States' Patent Office. His moying affidayits did not show where 
he resided or carried on business. The motion was denied. P. afterwards 
renewed the motion on papers showing that at the time of the service he was 
a dtixen and resident of Maasachusetts : Held, that the defendant had 
wsived the objection to the service, as made while he was protected by a 
privilege, by not showing, on the first motion, where he resided. 

(Beimre Blatohfokd, J., Southern Diatriot of New York, January 18th, 1882.) 

Blatohfobd, J. The defendant, Alvin D. Puffer, hereto- 
fore made a motion to this Court founded on affidavits, to 
set aside the service made on him of the subpoena to appear 
and answer herein. The suit is one for the infringement of 
letters patent. The motion was opposed and denied by an 
order made December 30th, 1881. The reasons set out in 
the motion papers, as grounds for the motion, were, that the 
service was made upon the said defendant while he was at- 
tending the examination of witnesses in the office of the 
counsel for the plaintiff herein, in the city of New York, in 
a caDse of interference then depending between him and the 
plaintiff before the United States' Patent Office, and when he 
was lawfully attending at said office '^ in his right as a party 
to said interference cause." The moving affidavits did not 
show where the defendant resided, or where he carried on 
business, but merely that he " went to New York " to attend 
such examination, not stating from what place he went. The 
motion was made upon the bill as a part of the moving papers. 
The bill speaks of the defendants as ^' doing business " at Boston 



384 SOUTHERN DISTRICT OF NEW YORK, 

Matthews v. Poifer. 

and "New York, and as being citizens of the United States. 
In opposition to the motion, it was shown by affidavits on 
the part of the plaintifi, that the defendant served had a 
place of business in the city of New York and one also in 
Boston. In regard to him the plaintiff said, in an affidavit: 
" His place of residence in New York is not known to me 
and I have been unable to ascertain it." The defendant, 
after hearing the affidavits in opposition to the motion, chose 
to submit it for decision, and did not ask leave to withdraw 
it and renew it on further papers or to put in further papers. 
The Court, in denying the motion, said : ^^ It does not any- 
where appear that A. D. Puffer is a citizen of Massachusetts, 
or resides in Massachusetts, or is not a citizen of New York, 
or does not reside in New York. The bill alleges that be 
does business at New York, and is a citizen of the United 
States. It is shown that he has a place of business in New 
York city. The motion is denied." 

The defendant now, without leave, renews the motion, on 
papers showing that at the time of the service he was a cit- 
izen and a resident of the State of Massachusetts. This was 
a fact which the defendant was called upon to show, on the 
first motion. It is not a newly-discovered fact It was in- 
volved in and pertinent to the first motion. It was called to 
the attention of the defendant by the opposing papers and 
yet the judgment of the Oourt was invoked on the case. 
The Oourt had jarisdiction of the subject-matter of the snit. 
The service of the subpoena was made on the defendant pe^ 
fionaUy in this district. The objection to the service, as made 
while the defendant was protected by a privilege, was one 
which the defendant could waive, and one which he might 
waive by not making it when he ought to make it, or by 
not making it in a proper way, as well as by not making it at 
all. It is one of those irregularities which must be promptlj 
availed of. In the present case it must be held that the de- 
fendant lost his right to show that he was a citizen and resi- 



JANIJABT, 1882. 235 



The XTmted States v. Jones. 



dent of HaasachusettB, and the motion to set aside the serr- 
ioe of the snbpcena is denied. 

A. V. Brie^eny for the plaintiff. 
E. C. Weth^ for the defendants. 



The UinTED States vs. William Jonbs. 

« 

Sridflooethst tbe sMosed devised a scheme to put counterfeit money in cireola- 
tioDy by sending throngh the maU, to one B., a letter calcolated to induce B. 
to porohase oowiterfeit money at a low price, fer the purpose of putting it off 
as good, snd that, in order to carry said scheme into effect, he placed in a 
post office a letter addressed to B., for the purpose of inducing R to pnr- 
ehsss eonntarfeit money at a low price, in order that he might put it off as 
good money, for its face Yalne, is sufficient to establish an offence under 
§ 5,480 of the Berised Statutes, although no eyidence is given to show an 
intention in the accused to defraud B., or any other particular person. 

The flovpMt ddicd, in such offence, is the mailing of the letter in execution of the 
nnlawM scheme. 

On tbe trial, the Court refused to permit the jury to inspect a copy of the letter 
proved to have been mailed, which copy the accused made in the presence of 
the jury: Hdd, no error. 

Hts Court also refused to permit an expert in handwriting to say whether the 
originsl letter put in evidence by tbe Govermneot^ and the copy of it made 
by the accused in the presence of the jury, were in the same handwriting : 
AU^ no error. 

(Before Blavohvobd, Bsrbdxot and Baowv, JJ., January 2Sd, 1882.) 

fiiNiEDicr, J. The accnsed was tried upon an information 
fnimed under § 5,480 of the Revised Statutes. Having been 
eonvieted, he now moves for a new trial. One ground of the 
Application is, that the evidence failed to make out an ofienoe 
BQch as is described in § 5,480. The evidence was, and the 
JQiy, under the charge, must have found, tliat the accused de- 
rised a scheme to put counterfeit money in circulation, by 
aending through the mail, to one Bates, a letter calculated to 



236 SOUTHERN DISTRICT OF NEW YORK, 

The United States v, Jones. 

induce Bates to purchase counterfeit money at a low price, 
for the purpose of putting it off as good. The evidence fur- 
ther showed, and the jury found, that the accused, in order to 
carry his said scheme into effect, did place in the post office, 
at New York city, a letter such as is described in the infor- 
mation, for the purpose of inducing Bates to purchase counter- 
feit money at a low price, in order that he might put it off 
as good money, for its face value. This evidence was suffi- 
cient to make out an offence such as is created by the statute 
under which this information was framed, notwithstanding 
the absence of any evidence to show an intention on the part 
of the accused to defraud Bates qr any other particular per- 
son. The scheme to defraud, described in the information, 
may be a scheme to defraud any person upon whom the bad 
money might be passed, and it is within the scope of the stat- 
ute, aJthough no particular person had been selected as the 
subject of its operation. Any scheme the necessary result of 
which would be the defrauding of somebody is a scheme to 
defraud, within the meaning of § 5,480 ; and a scheme to put 
counterfeit money in circulation is such a scheme. We are, 
therefore, of the opinion, that the offence charged was proved 
by the evidence. 

Another point taken is, that there was no evidence of the 
oorpita delicti^ except the defendant's admission. But, the 
gist of the offence consists in the abuse of the mail. The 
corpses delicti was the mailing of the letter in execution of 
the unlawful scheme. There was direct evidence of the mail- 
ing of the letter by some one, and the letter itself showed its 
unlawful character. This much being shown, it was, cer- 
tainly, competent to prove that the defendant was the sender 
of the letter, by his admission to that effect. 

Another point made is, that error was committed, at the 
trial, by the refusal to permit the jury to inspect a copy of 
the letter proved to have been mailed, which copy the ac- 
cused made in the presence of the jury. In this there was 
no error. It is not allowable, upon an issue as to hand- 
writing, to put in evidence papers,- otherwise irrelevant. 



JANUARY, 1882. 237 



While If. Arthur. 



merely for the puqx>Be of enabling the jnry to institnte a com- 
parison of the writing. The statute of the State of Kew 
York permitting a comparison of writings, for the purpose of 
determining handwriting, has no effect upon criminal proceed- 
ings in the Courts of the United States. In those Courts, the 
extent of the rule is to permit the jury to compare writings 
lawfully in evidence for some other purpose. It has never 
been permitted to introduce writings for the mere purpose of 
enabling the jury to institute a comparison of writings. To 
permit the practice here sought to be established would be to 
permit the defendant to make evidence for himself. 

The last point made is, that error was committed in refus- 
ing to permit an expert in handwriting to say whether the 
original letter put in evidence by the Government, and the 
copy of it made by the accused in the presence of the jury, 
were in the same handwriting. Here was no error. It was 
not shown that the expert knew the defendant's handwriting, 
and whether the two letters were in the same handwriting 
was immaterial, except upon the assumption that, because the 
copy of the letter was made by the defendant, it was in his 
usual handwriting, an assumption by no means justifiable by 
the circumstances under which the copy was made. 

The motion is, accordingly, denied. 

William P. Fiero^ {Assistant District Attorney y) for the 
United States. 



Charles S. Spencer j for the defendant. 



Jambs F. WHrrs akd othebs vs, Chestsb A. Abthub. 

On the Ist of March, 1881, a jadgment was docketed in this Court, in favor of 
the plaintiffii, and against the defendant, for a sum of money, in a suit against 
a late collector of the port of New York, to recover back money paid to him 
ISor costoma duties, and by him paid into the Treasury, in the performance of 
his official duty. Prior to that, and at the trial of the action, the Oeort, on- 



288 SOUTHKRN DISTRICT OP NEW YORK. 

White If. Arthur. 

der § 989 of the Rerieed Statates, made a certificate of probable caoee. Tlie 
QoTemment paid to the plaintifb the amount of the judgment, but refined to 
pay any interest on sach amonnt. The United States' attorney then implied 
to the Gonrt to require the plaintiflb to execute a fnU satisfiution piece of the 
judgment, or to make an order that foil satisfisctlon of the judgment be entered 
on the records of the Court : Meld, that the judgment was satisfied and thtt 
the clerk must make all proper entries to^that effect in the records of the 
Court 

The question of the payment of interest by the United States oonmdered, end 
the legislation and practice on the subject reriewed. 

Whatever may haye been the practice under the permanent impropriation in the 
Reyised Statutes, and under statutes prior to the appropriation bill of 1878, 
it is clearly expressed in the appropriation bills of 1878, 1879, 1880 and 1881, 
that, where there are Judgments against collectors of customs for duties paid 
under protest, interest accruing after judgment, on the amount of the judg- 
ment, or on the duties improperly paid, is not to be paid by the Oorenimeot^ 
either from the permanent appropriation or from the special appropriationa. 

Where there has been a certificate of probable cause, under § 989, there csn be 
no execution against the collector, and he is not liable, under the judgment, 
for interest on it. 

(Before Blatohtobd, J., Southern District of New York, January 25th, 1881) 

Blatohfobd, J. This ifi a snit against a late collector of 
the port of New York, to recover back money paid to him for 
cnstomB duties, and by him paid into the Treasory in the per- 
formance of his official duty. On the Ist of March, 1881, a 
judgment in this suit was docketed in this Court in favor of 
the plaintiffs and against the defendant, for $2,295.90. Prior 
to that, and at the trial of the action, this Court, under § 989 
of the Revised Statutes, made a certificate of probable cause. 
It is provided as follows by § 989 : " When a recovery is had 
in any suit or proceeding against a collector or other officer of 
the revenue, for any act done by him, or for the recovery of 
any money exacted by or paid to him and by him paid into 
the Treasury, in the performance of his official duty, and the 
Court certifies that there was probable cause for the act done 
by the collector or other officer, or that he acted under the 
directions of the Secretary of the Treasury, or other proper 
officer of the Government, no execution shall issue against 
such collector or other officer, but the amount so reeovered 



JANUARY, 1882. 239 



White V. Arthur. 



fihall, npon final judgment, be provided for and paid oat of 
the proper appropriation from the Treasury." 

On the 16tli of March, 1881, the Commissioner of Onstoms 
addressed a circular to the First Auditor of the Treasury, stat- 
ing that, in view of the decision of the Supreme Court in 
United States v. Skermcm^ (8 Otto^ 565,) and of the decision 
of the First Comptroller of the Treasury in Steph<m^9 Gam^ 
(96 Tnt, Rev. Record^ 318,) notlung would thereafter be al- 
lowed or paid by the United States on judgments against cus- 
toms officers, under § 989, beyond the amount recovered on 
final judgment, excluding interest on the amount of the judg- 
ment. The decision in Urdted States v. Shermcm was made 
at the October Term, 1878, and that in Stephani^e Case in Au- 
gast, 1880. 

Under instructions from the Commissioner of Customs, 
dated March 24th, 1881, the collector of the port of New 
Fork paid to the plainti£b $2,295.91, the amount of the judg- 
ment, which was paid and received without prejudice to the 
claim of the plaintiffs for interest on the judgment from 
March 1st, 1881. The plaintiffs have never executed any sat- 
isfaction piece of the judgment, because the Commissioner of 
Customs directed the collector not to require one, in order to 
enable the plaintiffs to procure a judicial determination of the 
legality of the said decision of the Commissioner of Customs, 
of March 16tli, 1881. 

The plaintiffs have not applied to the Supreme Court for 
a mandamus to compel the Secretary of the Treasury or other 
officer to pay the interest in question, but the United States' 
attorney now applies to this Court, on the foregoing facts, to 
i^uire the plaintiffs to execute and deliver a full and com- 
plete satisfaction piece of the judgment, or to make an order 
that full and complete satisfaction of the judgment be entered 
<m the records of the Court, 

Although the Commissioner of Customs directed the col- 
lector not to require a satisfaction piece, it must be assumed 
that the present application is made with the consent of the 
Treasury Department, and that, although it is in form an ap- 



34:0 SOUTHERN DISTRICT OF NEW YORK, 

White V, Arthur. 

plication by the defendant, it is also an application by the 
Goyernmeut, for the parpose of obtaining a judicial decision 
as to the liability of the Government to pay the interest. It 
is so treated by both parties. The United States' attorney re- 
lies wholly on the views taken in the decision in Stephanfs 
Case, If the Government is liable for the interest, the plaint- 
iffs ought not to be required to now enter satisfaction. But 
the further question arises, whether the plaintiffs are now 
bound to enter satisfaction even though the Government may 
not be liable for the interest. 

(1.) The question of the liability of the Government to 
pay the interest will be first considered. The case of Steph- 
ani was a judgment against a collector of internal revenue to 
recover back taxes illegally exacted. It arose under §989. 
There was a certificate of probable cause, and the question 
was whether interest should be paid from the date of that cer- 
tificate. In his decision the First Comptroller says that the 
practice theretofore, in his office, had been ^^ to allow interest 
on judgments from the date of the certificate of probable 
cause to the time of filing the judgment in the Treasury De- 
partment for payment." He holds that the expression " the 
amount so recovered,'* in § 989, " as applied to the Govern- 
ment, includes only the sum of the judgment and costs;'' 
that the Government is not liable to pay interest by force of 
§966, which provides that interest shall be allowed on aU 
judgments recovered in civil causes in a Circuit Court, be- 
cause the Government is not named nor intended by clear 
inference ; that the doctrine that interest is an incident of the 
judgment, and so follows the principal, has no application to 
judgments against the Government, or to judgments which 
the Government has, by force of a statute, assumed to pay ; 
that it is specially provided in some cases that the Grovem- 
ment shall pay interest on judgments or on debts, as in § 1,090 
and in the Act of March 3d, 1875, (18 U. 8. Stat, at large, 
481,) such provision being necessary " because at common law 
interest would not be paid ; " and that, under § 3,220, authorit 
ing the repayment to internal revenue collectors of moneys 



JANUARY, 1882. 241 



White V. Arthur. 



recovered against them in a Conrt for taxes collected by them, 
and of damages and costs recovered against them in a snit 
brought against them by reason of anything done in the dne 
performance of official dnty, the practice had been to allow 
interest on snch judgments from the time of rendition nntil 
paid, but that could " no longer be permitted." 

It is contended for the plaintiffs, that the measure of the 
responsibility of the Government is the liability of the de- 
fendant. There can be no doubt that the liability of the 
defendant to the plaintiff, under the judgment, under § 966 of 
the Revised Statutes, is not only for the amount of the judg- 
ment but for interest on it, unless that liability is barred by 
other statutes. It is provided as follows by § 966 : " Interest 
shall be allowed on all judgments in civil causes, recovered in 
a Circuit or District Court, and may be levied by the marshal 
nnder process of execution issued thereon, in all cases where, 
by the law of the State in which such Court is held, interest 
may be levied, under process of execution, on judgments recov- 
ered in the Courts of such State ; and it shall be calculated 
from the date of the judgment, at such rate as is allowed by 
kw on judgments recovered in the Courts of such State." 
Bat the question is whether the Government has assumed to 
its full extent, by § 989, the liability of the defendant. It is 
very dear that it has not, even without reference to § 966, be- 
cause, by § 989, not only is it necessary that there shall have 
been a recovery against the collector, but there must be a cer- 
tificate of probable cause, before the liability of the Govern- 
ment begins. This is what was decided in United States v. 
Sherman^ a case to which the provisions of § 12 of the Act of 
March 3d, 1863, (12 U. 8. Stat, at Large, 741,) now § 989 of 
the Revised Statutes, were applied by § 8 of the Act of July 
28th, 1866, (14 Id., 329.) In that case there was a judgment, 
in June, 1869, against an agent of the Treasury Department 
There was no certificate of probable cause made till June, 
1874, and then it was obtained by the plaintiff' in the judg- 
ment and not by the defendant. The Treasury Department 
then paid to the plaintiff in the judgment the amount of it, 
Vol. XX.— 16 



242 SOUTHERN DISTRICT OP NEW YORK, 

White V. Arthur. 

with interest from the date of the certificate of probable cause. 
The plaintiff then applied to the Supreme Court for a man- 
damns to compel the payment of the interest from the date 
of the judgment to the date of the certificate. The applica- 
tion was denied. The Court held that no claim against the 
Government arose under § 12 of the Act of 1863, as applied 
to that case, until the certificate was made, and that the Gov- 
ernment was not liable for the interest which accrued on the 
judgment prior to the making of the certificate. 

In the present case the certificate was made before the 
judgment was entered, but still the question remains whether 
the Government is liable for interest on the judgment from 
its date, if a certificate of probable cause was made prior to 
or at the time of the date of the judgment. This point waa 
not decided in United States v. Sherman. 

It is well settled that the liability of the Government for 
the interest claimed in this case must be created by some stat- 
ute. There is no contract by the Government or any of its 
authorized agents to pay interest. There is no judgment 
against the CTnited States. There is no suit against the Cnited 
States. There is no liability of the United States tOl after a 
recovery against the collector and a certificate of probable 
cause. So, the question arises as to the construction of § 989. 
" As a general rule, the Government does not pay interest. 
The exceptions to this rule are found only in cases where the 
demands are made under special contracts or special laws, ex- 
pressly providing for the payment of interest. An obligation 
to pay it is not to be implied against the Government, as it is 
against a private party, from the mere fact that the principal 
was detained from the creditor after the right to receive it 
had accrued." (9 Opinions of Attornet/a-Oeneraly 59.) The 
principle that interest is not recoverable against the Govern- 
ment if it unreasonably delays payment of its debts, as it 
would be against a citizen, and the further principle that in- 
terest is not to be allowed on claims presented to the Depart- 
ments, unless it is specially provided for, are recognized by 



JANUARY, 1882. 248 



White V. Arthur. 



the Supreme Court in TiUaon v. UfiUed States^ (10 OttOy 43, 

47.) 

The plaintiffs contend, however, that the interest on the 
judgment in this case is expressly provided for by statute. A 
review of the history of legislation and .adjudication in respect 
to suits against collectors to recover back customs duties ille- 
gally exacted will aid in a decision as to the meaning of the 
present statutory provisions ; and legislation in regard to pay- 
ing interest on other claims and on judgments for them may 
also be referred to. 

Prior to the enactment of § 2 of the Act of March 8d, 
1839, (5 U. 8. Stat, at Large^ 348,) the moneys paid to a col- 
lector of customs for unascertained duties or for duties paid 
under protest against the rate or amount of duties charged, 
were retained by the collector. That Act required such mon- 
eys to be paid into the Treasury, and made it the duty of the 
Treasury Department to refund overpayments, made under 
protest, out of any money in the Treasury not otherwise ap- 
propriated. In 1845, it was decided by the Supreme Court, in 
Gary v. Cwrtisy (3 Howard, 236,) that the effect of § 2 of that 
Act was to take away the right to bring an action against the 
collector, for moneys illegally exacted by him as and for du- 
ties, and paid to him under protest, where he had paid them 
into the Treasury before suit brought. This decision was 
followed by the Act of February 26th, 1845, (5 U. S. Stat at 
Large^ 727,) which provided that nothing in § 2 of the Act of 
1839 should be construed to take away the right of any person 
paying money as and for duties, under protest, to a collector, 
in order to obtain goods imported by him, the duties not be- 
ing authorized by law, to maintain an action at law against 
the collector to try the legality and validity of the demand 
and payment of duties, and to have a trial by jury touching 
the same ; or to authorize the Secretary of the Treasury to re- 
fund any duties paid under protest. This legislation restored 
the right to sue the collector. Of course, a judgment against 
him could be enforced by execution against him, and, under 
§8 of the Act of August 8th, 1842, (5 U.S. Stat, at Large^ 



244 SOUTHERN DISTRICT OP NEW YORK. 



White V. Arthur. 



518,) now § 966 of the Kevised Statutes, interest on snch judg- 
ment from its date could be collected by execution against 
him. 

On the 8th of August, 1846, an Act was passed, (9 U. 8. 
Stat, at Large^ 84 and 675,) providing for the payment by the 
Secretary of the Treasury to six difEerent parties named, of 
any excess of duties paid by them to the collector of the port 
of New York, upon the importation of certain specified goods, 
beyond what the same were legally chargeable with, and in 
four of the six cases interest on the excess is specified as to be 
paid, the direction as to three of the four being that it is to be 
interest from the time of the payment to the collector. By 
§ 2 of that Act the Secretary is authorized, out of any monej 
in the Treasury not otherwise appropriated, " to refund to the 
several persons entitled thereto such sums of money as have 
been illegally exacted by collectors of the customs under the 
sanction of the Treasury Department, for duties on imported 
merchandise," since March 3d, 1833, ^^ provided, that, before 
any such refunding, the Secretary shall be satisfied, by deds- 
ions of the Courts of the United States upon the principle in- 
volved, that such duties were illegally exacted, and provided, 
also, that sach decisions of the Courts shall have been adopted 
or acquiesced in by the Treasury Department as its rule of 
construction.^ In this § 2 nothing is said about paying the 
amounts of judgments, or about paying interest on judgments, 
or about paying interest on sums illegally exacted, but it is 
the sums illegally exacted which are to be refunded, and the 
refunding is made to depend on the adoption of, or acquies- 
cence in, the decision of the Court by the Treasury Depart- 
ment. There is nothing in this § 2 to indicate that it was 
limited to cases of duties paid under protest, while under the 
Act of February 26th, 1845, suits could be brought against a 
collector only where duties had been paid under protest. On 
the 10th of August, 1846, an Act was passed, (9 U. S. Stat at 
Zargey 677,) directing the refunding to a party named of " the 
balance remaining unpaid, and interest thereon," of a judg- 
ment recovered by him in this Court, against a collector of tbi» 



JANUARY, 1882. 245 



White V. Arthur. 



port, for the recovery of duties illegally exacted, " a part of 
which judgment has been heretofore paid." This general and 
special legislation indicates an intention in Congress to speci- 
fy interest when it is to be paid. Like instances of refunding 
to parties named duties illegally or erroneously collected on 
imports, but without mentioning interest, are found in Acts 
passed June 28th, 1848, and March 3d, 1849, (9 U, S. Stat, at 
large, 720, 780.) 

The Act of March 3d, 1857, § 5, (11 rd., 196,) provided for 
an appeal to the Secretary of the Treasury, after protest, from 
the decision of a collector as to the liability of imported goods 
to, or their exemption from, duty, and made the decision on 
such appeal final, unless suit should be brought within 30 
days after such decision. 

By the Act of April 11th, 1860, (12 Id., 837,) provision is 
made for the repayment, with interest at 6 per cent per an- 
num from the date of exaction, of certain duties illegally ex- 
acted, as tonnage and light duties, while by the Act of March 
2d, 1861, (7S., 690,) provision is made for the repayment of a 
certain amount erroneously paid as duties, nothing being said 
about interest. Like provisions, with no mention of interest, 
are made by the Acts of May 1st, 1862, and February 18th, 
1863, (Id., 903, 917.) 

By the Act of March 3d, 1863, § 31, {Id., 729,) the Com- 
missioner of Internal Bevenue, subject to the regulations of 
the Secretary of the Treasury, was authorized " to remit, re- 
fund and pay back all duties erroneously or illegally assessed 
or collected, and all judgments or sums of money recovered 
in any Court against any collector or deputy collector, for any 
duties or licenses paid under protest." That provision re- 
ferred solely to internal revenue and is superseded by later 
provisions of law. 

By § 12 of the Act of March 3d, 1863, (M, 741,) the 
provision was enacted which is now found in § 989 of the Re- 
vised Statutes, as before quoted. By § 13 of the same Act it 
was made the duty of the District Attorney of the District 
within which any suit should be brought against a collector 



246 SOUTHERN DISTRICT OF NEW YORK. 

White V. Arthur. 

or Other officer of the revenue, for any act done by him, or 
for the recovery of any money exacted by or paid to him, 
which should have been paid into the Treasury of the United 
States, to appear on behalf of such officer, unless otherwise 
instructed by the Secretary of the Treasury, and to make a 
report in regard to such suits annually to the Solicitor of the 
Treasury, and it was directed that the same should be re- 
ported annually to Congress, '^ with a statement of all moneys 
received by the Solicitor and by each District Attorney" 
under the Act. Most of these provisions of § 13 are now in 
§§ 771 and 773 of the Kevised Statutes. By said § 12 it was 
also provided, that when, in any such suit, any district or 
other attorney should be directed to appear on behalf of such 
officer by any proper officer of the Government, such attorney 
should be allowed such compensation for his services therein 
as should be certified by the Court to be reasonable and prop- 
er, and approved by the Secretary of the Treasury. This 
provision is now in § 827 of the Revised Statutes. 

By § 7 of the Act of March 3d, 1863, (12 U. S. Stat, at 
Lwge, 766,) now §§ 1,089 to 1,093 of the Revised Statutes, 
interest on judgments rendered by the Court of Claims is not 
to be paid unless the United States have appealed, and then 
interest at the rate of hper cent, per annum is to be paid from 
the time a certified copy of the judgment is presented to the 
Secretary of the Treasury for payment. 

By § 14 of the Act of June 30th, 1864, (13 U. S. Stat, at 
Large^ 215,) an appeal to the Secretary of the Treasury from 
the decision of the collector of customs as to the rate and 
amount of duties, costs and charges on imported goods was 
provided for, after protest, with the requirement that a suit 
to recover back the duties should be brought within ninety 
days after the decision. This is now § 2,931 of the Revised 
Statutes. By § 16 of the same Act it was provided as fol- 
lows ; " Whenever it shall be shown to the satisfaction of the 
Secretary of the Treasury that, in any case of unascertained 
duties, or duties or other moneys paid under protest and ap- 
peal, as hereinbefore provided, more money has been paid to 



JANUARY, 1882. 247 



White tr. Arthur. 



the collector, or person acting as such, than the law requires 
should have been paid, it shall be the duty of the Secretary 
of the Treasury to draw his warrant upon the Treasurer in 
favor of the person or persons entitled to the over-payment, 
directing the said Treasurer to refund the same' out of any 
money in the Treasury not otherwise appropriated," Noth- 
ing was said about interest. The provision is now § 3,012^ of 
the Kevised Statutes. A provision in regard to the paying 
back by the Commissioner of Internal Revenue, on appeal to 
him, of internal revenue duties erroneously or illegally as- 
sessed or collected, was enacted by § 44 of the Act of June 
30th, 1864, {Id.j 239,) which provided for repaying " to col- 
lectors or deputy collectors the full amount of such sums of 
money as shall or may be recovered against them or any of 
them, in any Court, for any internal duties or licenses collected 
by them, with the costs and expenses of snit, and all damages 
and costs recovered against assessors, assistant assessors, col- 
lectors, deputy collectors, and inspectors, in any suit which 
shall be brought against them, or any of them, by reason of 
anything that shall or may be done in the due performance 
of their official duties." This enactment is now found in 
§ 3,220 of the Revised Statutes. 

By §7 of the Act of July 28th, 1866, (14 Id., 328,) the 
Secretary of the Treasury was authorized to refund duties 
overpaid, although the provisions of said § 14 of the Act of 
June 30th, 1864, had not been complied with, on being satis- 
fied that such non-compliance was owing to circumstances 
beyond the control of the importer. 

By § 3,689 of the Revised Statutes, passed June 22d, 1874, 
permanent annual appropriations were made, out of any mon- 
eys in the Treasury not otherwise appropriated, of such sums 
as might be necessary for refunding duties erroneoasly or 
illegally assessed or collected under the internal revenue laws, 
and the excess of deposits for unascertained customs duties or 
customs duties paid under protest. 

On the 3d of March, 1875, (18 U. S. Stat at Large, 469,) 
an important Act was passed. It provided as follows : " No 



248 SOUTHERN DISTRICT OF NEW YORK, 

White if. ArUrnr. 

moDeys collected as duties on imports, in accordance with any 
decision, ruling, or direction previously made or given by the 
Secretary of the Treasnry, shall, except as hereinafter provided, 
be refunded or repaid, nnless iu accordance with the judg- 
ment of a Circnit or District Court of the dnited States giv- 
ing construction to the law, and from which the Attorney 
General shall certify that no appeal or writ of error will be 
taken by the United States, or unless in pursuance of a special 
appropriation for the particular refund or repayment to be 
made: Provided^ That whenever the Secretary shall be of 
opinion that such duties have been assessed and collected 
under an erroneous view of the facts in the case, he may 
authorize a re-examination and re-liquidation in such case, 
and make such refund in accordance with existing laws as the 
facts so ascertained shall, in his opinion, justify ; but no such 
re-liquidation shall be allowed unless protest and appeal shall 
have been made as required by law." This does not require 
a judgment in the particular case, but only a judgment con- 
struing the law, which might be had in another case. It does 
not refer to the payment of a judgment but to the refunding 
of moneys collected. 

By the Act of February 15th, 1876, (19 U. S. Stat, at 
Large, 3,) provision was made for the payment, under judg- 
ments rendered by the Court of Commissioners of Alabama 
claims, of said judgments with interest on the principal at 4 
per cent, per annum, from the date of loss until notice should 
be given for payment. 

In § 3 of the appropriation bill passed June 14th, 1878, 
(20 U. S. Stat at Zarge, 128,) is the following provision: 
" For repayment to importers the excess of deposits for unas- 
certained duties, or duties or other moneys paid under pro- 
test, including interest and costs in judgment cases, two hun- 
dred and fifty thousand dollars : Provided, that no portion of 
this appropriation shall be expended for the payment of 
claims known as the ^ charges and commissions cases.' " In 
§ 1 of the appropriation bill passed March 3d, 1879, (Id., 884,) 
is the following provision : " To enable the Secretary of the 



JANUARY, 1882. 249 



White V. Arthur. 



TreaBurj, in his discretion, to refnnd excess of duties and to 
pay costs in suits and proceedings in charges and commissions 
cases, in which judgments may hereafter be obtained, or 
which may be compromised by said Secretary, fifteen thou- 
sand dollars." In § 1 of another appropriation bill passed 
March 8d, 1879, {Id., 414,) is this provision : " The unex- 
pended balance of the appropriation of two hundred and fifty 
thousand dollars, made by the Act of June fourteenth, eigh- 
teen hundred and seventy-eight, for the repayment to im- 
porters of the excess of deposits for unascertained duties, or 
duties or other moneys paid under protest, including interest 
and costs in judgment cases, is hereby continued and made 
available for the payment of all claims to which the appro- 
priation is applicable, which are not payable from the perma- 
nent annual appropriation provided for in section thirty-six 
hundred and eighty-nine of the Revised Statutes ; Provided, 
That the claims known as the ^charges and commissions 
cases' shall not be paid without further legislation." The 
permanent annual appropriation did not include ^^ interest 
# and costs in judgment cases." Hence, probably, the necessity 
of a special appropriation. The question is — what do the 
words '^interest and costs in judgment cases" mean? Do 
they include interest after judgment, either on the judgment 
or on the excess of duties? In regard to judgments in 
" charges and commissions cases," only excess of duties and 
costs were provided for, nothing being said about interest. 
In § 1 of the appropriation bill passed June 16th, 1880, 
(21 Id., 242,) is the following provision : " For the repayment 
to importers the excess of deposits for unascertained duties, 
or duties or other moneys paid under protest, including inter- 
est and costs in judgment cases, three hundred thousand dol- 
lars, which sum is hereby made available for the payment of 
an claims to which the appropriation is applicable, which are 
not payable from the permanent annual appropriation pro- 
vided for in section thirty-six hundred and eighty-nine. Be- 
vised Statutes ; Provided, That no portion of this appropria- 
tion shall be expended for the payment of claims known as 



250 SOUTHERN DISTRICT OP NEW YORK, 



White V, Arthur. 



*^ charges and commiBsions cases.' " In the same section is the 
following : " To enable the Secretary of the Treasury, in his 
discretion, to pay judgments in charges and commissions' 
cases, obtained since January, eighteen handred and seventy- 
nine, and which may be hereafter obtained, or to settle any 
of said cases, in his discretion, by compromise, seventy-fiye 
thonsand dollars, or so much thereof as may be necessary." 
Here the provision is to pay judgments, but nothing is said 
about interest on judgments. In § 1 of the appropriation bill 
passed March 8d, 1881, {Id.y 418,) is a provision in the same 
words as the one first above cited from the Act of June 16th, 
1880. 

It may be admitted that such a suit as the present is a 
private suit until there is a certificate of probable cause. 
Then the United States come in and assume, by statute, a 
certain liability. The question is as to what liability. The 
plaintiffs contend that the United States assume all the liabil- 
ity which would be that of the defendant if the United States 
assumed no liability. The case of Erakine v. Van Arsdale^ 
(15 WaUacey 75,) cited by the plaintiffs, was a suit to recover4 
back an internal revenue tax, illegally collected. The Court 
had instructed the jury that they might, in their verdict, add 
interest to the tax' paid. This was held by the Supreme 
Court to be correct. The only decision is that interest might 
be added from the time of the illegal exaction to the verdict. 
ISothing is decided as to interest on the judgment, when the 
Government comes to pay it. The interest put into the ver- 
dict is put in before there is any certificate of probable cause, 
and, if there is none, the Government assumes no part of the 
liability of the defendant. 

The allowance of interest as damages, on a writ of error, 
under § 1,010 of the Revised Statutes, and under Rule 23 of 
the Supreme Court, and the form of the mandate in affirming, 
with interest, a judgment where the collector is the plaintiff 
in error, cannot affect the question here. These things all of 
them belong solely to the putting the judgment in shape as 
one in a private suit. 



JANUARY, 1882. 261 



White «. Arthnr. 



Nor does the language 'Mnelading interest and costs in 
judgment cases " mean interest on judgments. It is entirely 
satisfied by confining it to the interest included in the amount 
of the judgment and the costs forming part of that amount. 
The " amount so recovered," referred to in § 989, being more 
than the amount exacted and paid, because including in addi- 
tion interest and costs, was probably regarded as needing ex- 
planation to make it dear that it was not merely the amount 
exacted that was to be refunded, but also the interest and costs 
forming part of the recovery, that is, of the judgment. The 
mention of '^ costs " is indicative of the meaning of ^^ interest." 
There are no costs after judgment ; and, as ^' costs " are costs 
before judgment, so ^' interest," in the same connection, is in- 
terest before judgment. 

The legislation before recited shows that Congress has 
sometimes provided for interest on judgments and sometimes 
for interest on excessive duties and has sometimes omitted the 
mention of interest. The result of this review is, that what- 
ever may have been the practice under the permanent appro- 
priation in the Bevised Statutes, and under statutes prior to 
the appropriation bill of 1878, it is clearly expressed in the 
appropriation bills of 1878, 1879, 1880 and 1881, that, where 
there are judgments against collectors of customs for duties 
paid under protest, interest accruing after judgment, on the 
amount of the judgment or on the duties improperly paid, is 
not to be paid by the Government, either from the permanent 
appropriation or from the special appropriations. Hence, all 
has been paid by the Government in this case which it is 
obliged to pay. 

(2.) Under § 989, as there has been a certificate of probable 
cause in this case, there can be no execution against the col- 
lector. There cannot be an execution against him for the 
interest from March 1st, 1881, on the view that, under § 966, 
interest is due on the judgment as one against the collector 
personally, and that § 989 only means that there is to be no 
execution against him for what the Government pays. He is 
required to pay the money into the Treasury. He does so. 



262 SOUTHERN DISTRICT OF NEW YORK, 

White V. Arthur. 

The District Attorney is required to defend the suit and is 
paid by the Government for doing so. The suit is one which 
can be brought only because Congress allows it to be brought. 
Congress could prevent its being brought. It did so by the 
Act of 1839, as was held in Gary v. Curtis, Then it restored 
the right by the Act of 1845. But the suit is one only ^'to 
try the legality and validity of the demand and payment of 
duties," as the Act of 1842 says. When the collector has paid 
the money into the Treasury, and there is a certificate of 
probable cause, it is clearly the intention of § 989, that the 
collector shall not be liable, under the judgment, for interest 
on it, if the Government is not liable under that section for 
interest on it. The object of the suit and the judgment is 
solely to ptit the claim into an adjudicated shape. What is to 
be paid on it either by the collector or the Government is a 
matter to be determined by Congress. It follows that the 
defendant is not liable to pay the interest in question. 

As everything has been paid on the judgment which is 
legally payable on it, under existing laws, the judgment is 
satisfied, and an order will be entered to that effect and di- 
recting that the derk enter in the records of the Court all 
proper entries to show that the judgment is satisfied. 

Ha/rfley <6 Coleman^ for the plaintiffs. 

Stewart Z. Woodford^ {DUtrict Aitamey^ for the defend- 
ant. 



JAJSTTARY, 1882. 263 



Harris v. Hess. 



Gbobgb W. Habbis and James B. Lbonabd 



V8. 



Henbt Hbss and Jonas Hbbs. 

H., on behalf of G., sold to a national bank a promissory note, not due, and re- 
odyed from the bank the purchase price, and deliyered the note to the bank. 
H. gaye to G. a cheque for the proceeds, less $8 77 commission. Before the 
cheqne was paid, the siad bank learned that when the note was sold its 
maker had suspended payment, and notified H. of the fact and tendered back 
the note and demanded back the purchase money. H. then stopped payment 
of the cheque, and G. brought this suit against H., on the cheque, to recoyer 
its amount The said bank claimed from H. the entire proceeds. H., then, 
on notice to said bank and to the attorney for G., applied to this Court to 
Bobstitute said bank in place of H., as defendant in this suit, and to discharge 
H. from liability to either G. or said bank, concerning the claim sued on, on 
H. paying the money into Court. The application was granted, as being a 
practice proyided for in a suit at law, by g 820 of the New York Code of Ciyil 
Procedure, and adopted by§ 914 of the Reyised Statutes, and H. was ordered 
to pay into Court the entire proceeds. 

The said bank haying, after notice of said application was senred on it, sued H. 
in a Court of the State of New York, to recoyer the money so paid by it to 
H.: ffddf that the bringing of such suit did not affect the jurisdiction of this 
Court to g^rant the application. 

(Before Blatcbfobd; J., Southern District of New York, January 2'7th, 1882.) 

« 

Blatohfobd, J. The defendants, on behalf of the plaint- 
ifis, sold to the Hanover National Bank a promissory note, 
not overdue, and received from that bank the purchase price, 
and delivered the note to the bank. The defendants gave to 
the plaintiffs a cheque on. a bank for the proceeds of the 
note, less {3 77 commission. Before the cheque was pre- 
sented to the bank or paid, the Hanover Bank having ascer- 
tained that, when the note was sold, the makers of it, a firm 
in New Orleans, had suspended payment, notified the de- 



254 SOUTHERN DISTRICT OF KEW YORK, 



HarriB v. HesB. 



fendants of the fact and tendered the note back to them and 
demanded back the purchase money. Thereupon the defend- 
ants stopped the payment of the cheque. The plaintifb, 
citizens of Pennsylvania, then brought this suit in this Court 
against the defendants, citizens of New York. The Hanover 
National Bank appears by the papers to be a corporation doing 
business in the city of New Tork, and having its place of busi- 
ness in that city, and to be a banking association created by 
and under the laws of the United States. It is, therefore, 
to be regarded as a citizen of New York. This suit is a snit 
on the cheque which the defendants gave to the plaintifb, 
and the amount sought to be recovered is $1,486 41, with in- 
terest from November 29th, 1881. The amount of the claim 
of the Hanover Bank against the defendants is $1,490 18, 
with interest from November 80th, 1881. This suit was 
commenced December 19th, 1881. 

It is provided by § 820 of the New York Code of Civil 
Procedure, that a defendant against whom an action to re- 
cover upon a contract is pending may, at any time before 
answer, upon proof, by aflSdavit, that a person, not a party to 
the action, makes a demand against him for the same debt, 
without collusion with him, apply to the Court, upon notice 
to that person and the adverse party, for an order to substi- 
tute that person in his place, and to discharge him from lia- 
bility to either, on his paying into Court the amount of the 
debt ; and that the Court may, in its discretion, make such an 
order. This is a proceeding in a suit at law to substitute one 
defendant for another. It is a proceeding adopted by § 9U 
of the Eevised Statutes. The defendants, before answer, 
served on the Hanover I^ank and on the attorney for the 
plaintiffs, on the 10th of January, 1882, the proper papers 
with notice of an application to be made to this Court, on the 
13th of January, to substitute the Hanover Bank in the plaoe 
of the defendants and to discharge the defendants from liar 
bility to either the plaintiffs or the Hanover Bank concerning 
tlie claim or debt mentioned in the complaint herein, on the 



JANUARY, 1882. 255 



Harris v, Hess. 



defendants' paying into this Conrt $1,486 41. The appli- 
cation was adjourned bj consent from January 13tb to Jan- 
uary 20th, and was made on the latter day. On January 19th 
or 20th, the Hanover Bank commenced a suit against the de- 
fendants, in a Court of this State, to recover the said $1,490 18, 
with interest from November 30th, 1881. The defendants 
are willing to pay into Court $1,490 18, with interest from 
November 29th, 1881. Both the plaintiffs and the Hanover 
Bank oppose the application. 

The defendants have money which they received from the 
Hanover Bank. It is claimed by each of the two parties. It 
is claimed directly by the Hanover Bank, as thQ money which 
it paid to the defendants ; and, although the suit in this 
Court is brought on the cheque, yet it is reaUy a sait to re- 
cover the money which the Hanover Bank paid to the defend- 
ants, as being the money of the plaintiffs. The plaintiffs can 
be in no better position, as regards the real transaction, than 
if no cheque had been given. The cheque was given under 
a mistake of fact. The rights of the plaintiffs as against the 
money and the defendants, and as against the claim of the Han- 
over Bank to the money, are no different now from what they 
would be in a suit by the Hanover Bank against the plaint- 
iffs to recover back from them money paid by the plaintiffs 
to them directly, as the purchase price of the note. Whether 
the plaintiffs or the Hanover Bank have the better right to 
the money is a question not to be settled on this application. 
The defendants are not questioning the title of the plaintiffs 
to the note, and as to the money the defendants are mere 
stakeholders. 

The case is clearly one within the State statute. The ap- 
plication has relation back to the time when notice of making 
it was served, and the bringing of the suit in the State Court 
snbseqnently by the Hanover Bank cannot affect the jurisdic- 
tion of this Court to grant the application. It is granted 
and the order to be made will be made nunc pro tunc as of 
the day for which the application was first noticed. The 



25(y northern district of new yore, 

Campbell «. EaTanangh. 

amoant to be deposited in Court will be $1,490 18, with inte^ 
est from NoTember 29th, 1881. 

James S. Steamsy for the plaintifis. 

Lauterbaeh d: Spingarnj for the defendants. 

Moorej Low <k Sanfardy for the Hanover Bank. 



George Campbell and John Clute 

vs. 
Luke Kayanauoh. In EQunr. 

The claims of re-iaaued letters patent No. 8,891, granted to George Campbell 
and John Clute, September 8d, 1878, for an " improyement in bnrrs for knit- 
ting-machines," the original patent. No. 48,636, haying been granted to W. 
H. Carr and M. P. Akin, July 26th, 1864, for an *' improyement in knitting- 
machine bnrrs," on the inyention of said Carr, considered, in yiew of tiie 
specification and claims of the original patent 

A hub, composed of two slotted rings, secnred together, with an outwardly 
narrowed annular space between the inner ends of the rings^ is not daimedui 
the re-iasne, either by itself or in combination with the rings, bat sach a hob 
was claimed in clum 2 of the original, and was claimed in combination with 
the rings, in claim 8 of the orig^al, and was made a prominent featore of in- 
yention in the orig^naL The original showing that the ioyentor had no idea 
of using hub rings not slotted, or of an interior annular space in a hob not 
formed of two slotted rings, claims 2 and 3 of the re-issue must be constraed 
as referring to no hub other than one formed of two slotted rings, and to no 
annular space except one between two slutted hub rings. 

The patent is not infringed by making and selling rings like the ring of the 
patent, if they are not sold to be used in a burr like that of the patent, there 
being no claim in the patent to a ring other than a ring to be used in a hol- 
low slotted hub. 

(Before Blatohfoud, J., Northern District of New York, January 28th, 1881) 



JANUARY, 1882. 257 



Campbell ». Earanangli. 



Blatch]x>bd^ J. This suit is brought on re-issued letters 
patent No. 8,391, granted to the plaintiffs, September 3d, 
1878, for an " improvement in burrs for knitting-machines," 
the original patent, No. 43,636, having been granted to W. 
H. Carr and M. P. Akin, July 26th, 1864, for an " improve- 
ment in knitting-machine burrs," on the invention of said 
Carr. The specification of the re-issue is not signed by Carr 
but is signed by Campbell and Clute. It is as follows, in- 
dnding what is inside of brackets and what is outside 
of brackets, omitting what is in italics: '^Figure 1 is an 
end view [.] Fig. 2 [is] a side view with part of the 
blades removed [.] amd Fig. 3 [is] a section [as indicated 
by] (A or about the [lines] line z z ivL Fig. 1 [.] of a 
hdttinff^mck:hine hwrr emhodyvng my invention ; and Fig. 4 
]£ a side view of one of the [wings or] blades [.] and Figs. 5 
and 6 [are] perspective views of the two parts of the slotted 
hub which holds the blades, and Fig. 7 [is] a side view of the 
[screw-bush] part by which the two parts of the slotted hub 
are secured together [.] in that hurry like [Like letters of 
reference indicate like] parts [in the several] being marked 
hy the same letters in aU the figuree. [ figures of the draw- 
ings.] Before this invention, burrs for knitting-machines 
had been made with removable wings or blades^ clamped in a 
dotted hub in such manner that the blades^ when broken or 
toom outj could be readily removed and replaced by new oneSj 
upon simply loosening or removing the devices by which the 
Uades were clamped in the slotted hvb^ examples of such 
hniUing^rrs being shown in the specifications and drawings 
iff English patent No. 10,724, granted in the year 1845, and 
United States Letters Patent No, 35,565, dated June lOM, 
1862. Bui^ in such knitting^urrs^ the rem,ovable blades 
vjere secured in a slotted hvh by rings or disks clamped 
against the lateral edges of the blades^ outside of the slotted pa/rt 
of the hub J at its ends ; so that that part of the body of the burr 
which held the blades had a considerably greater thickness 
than the slotted part of the hvh in which the blades were in- 
sertedy which greater tiiickness rendered the burr much more 
Vol. XX.— 17 



258 NORTHERN DISTRICT OP NEW YORK, 

Campbell v. Eayaiuuigh. 

btUky and far less convenient to use in some kinds of knit' 
ting^maohines than the common hniUing-bv/tr having Hades 
of like width soldered fast in a simple slotted hub. [This 
inyention consists in the peculiar constraction of the remoT- 
able wings or blades of knitting-machine burrs, and also in 
the combination of snch wings or blades with the hub and 
bush, whereby a more complete and efficient knitting-ma- 
chine burr is produced than heretofore, and in which the 
necessity for clamping the removable blades at their extreme 
ends, as has heretofore been done, is avoided. * * * ] 
JTow one part of my invention consists in making the inner 
ends of removable wings or blades^ A^ of knitting-nuuAine 
bv/rrs^ each with a dovetail or flaring projection^ ^tfiQ* ^ <^ 
two shoulders^ c^ c, one on each side of the said flaring pro- 
jectiony in such manner that blades thus formed can be fimdy 
secu/red in a hollow slotted hub of suitable construction, hy 
means of devices located within or inside of the hub^ instead 
of at the outer ends or on the outside thereof Another pa/rt 
of my invention consists in making a slotted [The] hub [is 
constructed] for a knitting-machine burr of two separable 
rings, D, D', [see Figs. 5 and 6, which are provided with cen- 
tral holes to receive the screw-bush] having eqtud series of 
slotSy 6, Cy in and around them^ amd held together end to end 
by a central screw bolt F, or its equivalent, and [with obliqne 
slots, «, «, Figs. 5 and 6, and have] ha^mig the unsloUed inside 
parts of their inner ends, g, g^ made hollowing or inclined 
outward toward each other, [substantially as shown in Figs. 
3, 5, and 6] so as to form thereby an outwardly-narrowed 
annular space, A, [see] Fig. 3, between the two hub rings [.] 
in such manner that a series of separate knitting-hurr blada 
of suitalle size a/nd shape can be freely inserted and flrmly 
clamped within and by the said united hub rings themsdves, 
without the aid of any other device or devices. [The hub 
ring D' is provided with a screw-thread, substantially as shown 
in Fig. 5. The central screw-bush F, or its equivalent, is 
constructed, substantially as shown in Figs. 3 and 7, of a 
diameter to fit the central hole in ring D, and is provided 



JANUARY, 1882. 269 



Campbell «. KaTammgh. 



with a central hole, see Fig. 3, to receive the arbor or stnd 
upon which the burr revolves. This bush is provided upon 
one end with a collar of somewhat louger diameter than the 
central hole in ring D, (see Figs. 3 and 7,) and upon the 
other end with a screw-thread which fits and screws into 
the screw in the central hole of ring D\ The blade or 
wing A, (see Fig. 4,) is constructed from sheet metal of 
proper thickness in the ordinary way, and is provided with 
and has attached to its inner edge the dovetail or flaring pro- 
jection hj wider at its inner extreme end than at the point 
where it is joined to the blade or wing. The ring D is placed 
npon the screw-bush F close to the collar, (see Fig. 3,) and 
the ring D' is screwed upon the screw of the bush F a proper 
distance. The rings are adjusted so that the slots e, e^ ex 
actlj correspond with each other when on the bush F. A 
series of wings or blades^ A, are placed in proper position 
successively in the slots e, e^ with the dovetails or flaring 
projections h extending into the outwardly-narrowed annular 
recess A, formed by and between the ends g^ g of the hub- 
rings D D\ (see Figs. 3, 5 and 6,) and the screw-bush F is 
then firmly screwed into the ring J)\ This action of the 
acrews closes together endwise the two hub rings D D'] And 
wnjother partqf my invention corisista in the arrangement of a 
series qfhniUing-burr bladeSj Aj each having on its inner end 
a dovetail or flaring projection^ ij and shotUders^ c, c, on both 
ndee thereof j in cornbination with a knitting-burr hub com- 
poeed of two rings, D, D\ having equal series of slots, e, e, in 
and around them, amd held together end to end by a central 
screu) bolt F, or its equivalent, with the inside unslottedpart, 
g, g, of their inner ends inclined outward toward each other 
in such manner [as to cause their] that the said inclined inner 
ends g, g, [to] (f the hvh rings clamp against the inclined 
edges, i, i, of the flaring projections [or dovetails on] b c/the 
blades [or wings] and [thus] thereby draw and hold [them 
into place] the blades into and with their [edges] shoulders, 
c, c, [tightly pressed] tight against the bottoms of the 
[oblique] slots e, e in the hub-rings [.] ; and thus produce 



260 NORTHERN DISTRICT OP NEW YORK, 

Campbell v. EATanangfa. 

[From this it will be seen that] a cheap and durable knitting- 
barr [is produced,] from which any or all of its blades can be 
readily removed and replaced by others, [by] ttpon simply 
[unscrewing the screw-bush F, thereby] loosening the hnb 
rings [and] in which the blades are clamped [.] in a dotted 
hvhj not only by means of devices located inside of the hub^ 
tut hy means of the inner ends of the two united hub-ringi 
that constitute the dotted huh itsdf [This] And sueh a 
knitting-burr is thinner and lighter, and generally more 
readily applied to knitting-machines of close and compact 
eonstrnction than a knitting-burr having projected blades of 
Jike width clamped in a slotted hub by means of devices ap- 
plied to the [ends] edges of the blades at the outer ends or on 
the outside of the slotted hub.'^ Reading in the foregoing 
what is outside of brackets, including what is in italics, and 
omitting what is inside of brackets, gives the text of the 
original specification. 

The claims of the re-issue are as follows : ^' 1. A knitting- 
burr blade. A, having on its inner edge a dovetail or flaring 
projection, &, and shoulders c^ o, substantially as herein de- 
scribed. 2. A series of knitting-burr blades or wings having 
a dovetail or flaring projection on the inner edge of each, in 
combination with a hub having oblique slots and an outwardly- 
narrowed annular space wherein the dovetails or flaring pro- 
jections of the blades are secured. 8. The combination of a 
series of wings or blades having a dovetail or flaring projec- 
tion on the inner edge of each, a hub having oblique slots and 
an outwardly-narrowed annular space, and a central hollow 
screw bush or its equivalent, all operating together, as de- 
scribed, so as to clamp within the outwardly-narrowed annu- 
lar space the edges of the dovetails or flaring projections, sub- 
stantially as described." 

The claims of the original patent were as follows : '^ 1. 
A knitting-burr blade, A, having on its inner end a dovetail 
or flaring projection, ft, and lateral shoulders, c, c, substantially 
as herein described. 2. A knitting-burr hub composed of 
two rings, D, D\ slotted and secured together end to end, and 



JANUARY, 1882. 261 



Campbell v. Kayanangh. 



having an outwardly-narrowed annnlar space, A, formed by 
and between the inner ends of the said united hub rings, 
substantially as herein described. 3. The combination of a 
series of wings or blades, A, each having a dovetail or flaring 
projection, bj and shoulders, e, Cj on its inner end, with a hub 
composed of two rings, D, D', slotted and clamped together 
end to end, and having an outwardly-narrowed annular recess, 
hy formed by and between the inner ends of the said united 
hub-rings, substantially as herein described." 

It cannot fail of observation, that the hub, composed of 
two slotted rings, secured together, with an outwardly-nar- 
rowed annular space between the inner ends of the rings, is 
Dot claimed in the re-issue either by itself or in combination 
with the wings. Such a hub is claimed in claim 2 of the 
original. Such a hub in combination with the wings is 
daimed in claim 8 of the original. Such a hub is made 
a prominent feature of invention in the original, so that 
the wings may be clamped between and by the rings without 
other device. In claims 2 and 8 of the re-issue the effort 
seems to be to reduce the hub to a hub not necessarily of two 
Blotted rings, and to a hub having an outwardly-narrowed an- 
nular space somewhere but not between the inner ends of two 
dotted hub rings. It is clear from the description and draw- 
ings of the original patent that Carr had no idea of an annu- 
lar space anywhere except between the two slotted hub-rings, 
a hoUow interior annular space in a hub formed of two slotted 
rings. The description in the re-issue speaks only of '^an 
outwardly-narrowed annnlar space, A, between the two hub- 
rings," which are both of them slotted rings. Therefore, the 
^hub" in claims 2 and 3 of the re-issue must be construed to 
be only a hub formed of two slotted rings, and the '^ out- 
wardly-narrowed annular space " in those claims must be con- 
strued to be only such a space when it is a hollow space be- 
tween two slotted hub-rings. The original specification 
points out that the old way of securing removable rings in a 
dotted hub was to press discs against their edges outside of 



262 NORTHERN DISTRICT OP NEW YORK, 



Campbell v. EayaiiAOgh. 



the end of the Blotted part, and that Oarr's idea was to put 
the pressing device, and, of course, the part to be pressed, in- 
side of the hub. He did this by a hoUow hub, made of two 
separable rings, |;iaying an outwardlj-narrowed annular space 
between them, and put into this space a correspondingly 
shaped dovetail attached to the wing in the slot, and made 
the rings press against the inclined edges of the dovetail, and 
so hold it tightly against the bottom of the slot. Under the 
above construction the defendant does not infringe claims 2 
and 8 of the re-issue. 

In the defendant's burr No. 7, the hub is in one piece and 
not in two. There is no hollow space between two rings. 
The wings No. 6 have a projection downward at one end, 
which projection is bevelled on its inner edge. That edge 
comes against a shoulder on one face of the hub, and a disc out- 
side next that face presses against the edges of the wings. Tbis 
disc is no part of the hub. It is not slotted. It is pressed up 
by a screw bolt and holds the wings in place. It does so in 
substantially the same manner referred to as old in the origi- 
nal specification. 

The wings No. 6 are no infringement of claim 1. They 
have but one shoulder and could not be used in the Garr 
burr. 

The wings No. 5, made and sold by the defendant, thongh 
like Carr's wing, were not sold to be used in a burr made like 
Oarr's. Carr's burr, it is shown, went out of use, and was super- 
seded by forms not covered by the patent. The burrs in which 
such wings were to be used were not covered by the patent, be- 
cause they did not have a hub of two slotted rings. The wing 
per se is useless, and it was not sold to be used, nor was it used, 
in any infringing structure. Hence, the patent was not infringed 
by making or selling it. Claim 1 must be limited to a wing to 
be used in a hollow slotted hub. Otherwise, it is not a claim 
to any mechanism or to any patentable structure, but only to a 
piece of metal of a certain shape, incapable of use till incor- 
porated in another structure. The article is not Carr's knit- 



JAirUARY, 1882. 263 



Searls «. Merri&m. 



ting-burr blade, unless it is to be used in the manner pointed 
oat in the patent. 

The bill must be dismissed, with costs. 

E. S. Jenneyy for the plaintiffs. 

K Catoenj for the defendant. 



Anson Seabls 
John O. Mtbrtctam and Pebby D. Bandall. In Equtit. 

The dafans of letters patent No. 221,482, granted to Aneon Searls, as assignee 
of John M. Underwood, the inventor, Noyember lltb, 1879, for an " improve- 
ment in wliip sockets," namely, " 1. The combination with a whip socket 
having an annular recess in it, of a flexible elastic ring, which may be held in 
sach recess by its own elastic force, and which is provided on its inner edge 
with non-contiguous projections, separated so that they cannot be pressed into 
contact with one another by the insertion of the whip stock into the ring. 
2. The ring composed of a body with such projections." — are invalid, for 
want of invention. 

A ring with inward non-contiguous projections existed before, though not used 
with the annular recess, and the annular recess existed before, used with a 
plain ring. 

(Before Blatohpobd, J., Southern District of New York, January 80th, 1882.) 

Blat€H70bd, J. This sait is brought on letters patent 
No. S21,482, granted to the plaintiff, as assignee of John M. 
Underwood, the inventor, November 11th, 1879, for an " im- 
provement in whip sodcets." The whip socket is formed of 
a hollow cylinder, the npper open end of which is provided 
with a flexible elastic ring of india rubber or analogous ma- 
terial, for the purpose of holding the whip stock upright by 



264 SOUTHERN DISTRICT OF NEW YORK, 

Searls «. Merriam. 

the pressure between it and the interior of the ring. The 
ring fits in a recess or annular groove in the upper open end of 
the socket, so as to be retained therein by its own elastic expan- 
sive force. The inner edge of the ring is corrugated, or pro- 
vided with projections formed on and extending from the 
inner edge of the body of the ring, inwards towards its cen- 
tre. These projections are entirely separated from each other, 
with spaces between them, so that they will not be pressed 
into contact with one another, by the insertion of the butt of 
the whip stock in the socket. The ejrtreme inner faces of the 
projections form a circle and support the stock by pressng 
against it, while they yield to permit it to be pushed in or 
drawn out, and the ring, thoogh disturbed in place by those 
movements, will readjust itself in the recess when the stock is 
removed, because it is held therein by its elastic force alone. 
The patent has two claims : '' 1. The combination with a whip 
socket having an annular recess in it, of a flexible elastic ring, 
which may be held in such recess by its own elastic force, and 
which is provided on its inner edge with non-contiguous pro- 
jections, separated so that they cannot be pressed into contact 
with one another by the insertion of the whip stock into the ring. 
2. The ring composed of a body with such projections." 

The specification sets forth that ^^ a simple rubber ring, 
without projections, had been used, held in an annular recess 
in the mouth of the socket, the interior of the ring bein^ 
made small enough to grasp the whip stock, and such a ring 
has been held in place in the recess in the socket by its own 
expansive force ; " also, that radial slits have been cut in the 
inner edge of the ring without removing any of the rubber. 
The point of the new arrangement is stated to be, that 'Hhe 
separated projections, while they are rigid enough to hold the 
whip upright and prevent it from wabbling, will yet so easily 
give way to the pressure of the stock as to allow the stock to 
be readily inserted and removed." 

It is obvious that a plain ring, or a ring with radial slits, 
has the same action in combination with an annular recess, in 
which it is held by its elastic force alone, so far-as regards its 



JANUARY, 1882. 265 



Searlfl «. Herriam. 



readjostment in the recess when disturbed, that a ring with 
inward non-contignons projections has. The co-action be- 
tween the recess and the part of the ring in it, when the part 
of the ring out of it and next the stock is disturbed, is the 
flame in all three cases. Therefore, if the ring with inward 
non-contiguous projections existed before, even though with- 
out the annular recess, there was no patentable invention in 
using such ring with the old annular recess, with which the 
pUdn ring had been used. 

The date of the Underwood invention was May, 1878. 
The rubber disc, defendants' exhibit C, with non-contiguous 
projections, existed in 1878. The number of projections and 
the namber and size of the openings between the projections 
depended then, and depends now, on the thickness of the rub- 
ber. That fact was then known. It was also then known 
that the capacity of the rubber to exert the expansive force 
necessary to maintain its place in the annular recess depended 
on its substance and thickness. In view of the use in an an- 
nular recess of a plain ring of sufficient substance and thick- 
ness to maintain its place in the annular recess, the fact that 
defendants' exhibit C was not used in an annular recess, but 
was clamped between the end of the socket and a cap, is not 
sufficient to make it a patentable invention to use in an an- 
nular recess a rubber thicker than defendants' exhibit C, with 
the same character of non-contiguous projections. The action 
of the inner part of the ring against the stock, so far as the 
non-contiguous projections are concerned, is the same whether 
the outer part of the ring is held in an annular recess, or is 
damped between the end of the socket and a cap. It is quite 
apparent, as is stated by the expert for the plaintiff, that the 
number, or size, or shape of the openings between the projec- 
tions does not constitute a substantial difference^ so long as 
they are of sufficient size and of a proper shape to permit the 
stock to pass through the ring without forcing the edges of 
the projections in contact with each other, and the smaller 
portions of the projections are extended towards the centre. 
These conditions are found in defendants' exhibit C. When 



366 Ei^ STERN DISTEICT OF NEW YORE, 

HerdanuMi v. Lewis. 

the idea is once Buggested, as in that exhibit, to have opeDings 
of that character, it is but ordinary knowledge to yarj their 
number and size according to the thickness of the material 

Neither claim of the patent can be sustained, and the bill 
is dismissed, with costs. 

J. P. Mtohj for the plaintiff. 

ilT. Davenportj for the defendants. 



Sabah E. Herdsman and others 

vs. 
Hugh Lewis and othebs. In Eqihtt. 

A motion for a trial before a jury, la an equity suit, on feigned issaee, of certain 
questions of fact raised by the pleadings, was denied, no teetimony baTing as 
yet been taken, and it appearing that the testimony would be, for the wod 
part, in writing. 

(Before Bxnsdiot, J., Eastern District of New York, January SOth, 1881) 

m 

Benedict, J. This is a motion in an equity cause, for the 
trial before a jnrj, npon feigned issues, of certain qnestioiiB 
of fact raised by the pleadings. It appears by the papers that 
no testimony whatever has yet been taken in the cause, and 
that the decision may tnm npon the question of fact whether 
certain instruments described in the bill, and against which 
the plaintiffs seek relief, were procured by fraud and dnresB. 
While it is not doubted that a Court of the United States 
sitting in equity may, in a proper case, direct questions of fact 
arising in an equity cause to be passed on by a jury, neither 
party has an absolute right to such a trial. Whether a jury 
trial be, in any case, necessary or desirable, depends upon the 
facts of the case. In this case, I see no necessity, at this time, 



FEBRUARY, 1882. 267 



Fraxee «. Moffitt. 



for such a proceeding. Feigned issnes are awarded, it is said, 
^'in order to relieve and ease the conscience of the Court," 
but here the necessity of such relief does not as yet appear. 
The surmise, that the testimony, when taken before an exam- 
iner, will prove conflicting and uncertain, affords no founda- 
tion for present action by the Court. 

Another of the reasons assigned for granting feigned 
iBBoes, viz., because ^^ the Court is so sensible of the deficiency 
of trial by written evidence," also fails in this case, for, it is 
quite apparent, that, in a jury trial, the testimony would be, 
for the most part, in writing, owing to the circumstance that 
the transaction in question occurred in Texas. 

For these reasons, the motion to award feigned issues in 
the case at this time is denied. 



H. P. Herdnumj for the plaintiffs. 
Charles M. Da Costa, for the defendants. 



Jonathan A. Fbazeb and Wee^liam Y. Frazbs 

vs. 

Stbphen MoFFirr. 

H«7 b not a manafftctared article, under § 2,616 of the RoTifled Statutes, and 
00 Bobject to a duty of 20 per mrUum ad valorem^ bnt is a raw or nnmanu- 
fiMtnred article, under that section, and so is subject to a datj of 10 ptr 
eentum advahrem. 

The protest in this case was "against any greater rate of duties • « « 
than at the rate of ten per emium ad valorem, for the reason and on the 
grounds that no higher rate than ten/Mr centum can lawfully or properly be 
charged on hay imported." The collector had liquidated the daties at 
20 per ceni., under § 2,616: Held, that the protest was sufficient, under 
8 2,981. 

(Before BLATCHrou), J., Northern District of New York, February l8t» 1882.) 



268 NORTHERN DISTRICT OF NEW YORK, 

Frazee v. Moffltt 

Blatohfoed, J. This is a suit against the collector of 
customs at Rouse's Point, to recover back daties paid on hay 
in bales, imported from Canada into the United States. There 
is no duty on hay by name, but § 2,516 of the Revised Statutes 
provides as follows : ^^ There shall be ^evied, collected and 
paid on the importation of all raw or unmanufactured articles, 
not herein enumerated or provided for, a duty of ten per cenr 
turn ad valorem; and on all articles manufactured in whole 
or in part, not herein enumerated or provided for, a duty of 
twenty j7^ centum ad valorem?^ Hay is not otherwise enu- 
merated or provided for. The collector imposed a duty of 
^(Sperowd. on the hay, as a manufactured article. The plaint- 
iffs protested and appealed to the Secretary of the Treasury. 
The ground of the appeal was that the duty should have been 
only 10 per cent because, under § 2,516, hay was a raw or 
unmanufactured article. The decision of the collector was 
affirmed. This suit was then brought. At the trial the 
plaintiffs had a verdict for $1,976 86, and the defendant now 
moves for a new trial on a bill of exceptions setting forth all 
the testimony taken on the trial. 

1. There is an exception by the defendant as to the suffi- 
ciency of the protest. The protest was ^* against any greater 
rate of duties being charged upon hay shipped to or by us 
from Canada to the United States, entered with you or at the 
customs office at Rouse's Point, than at the rate of ten per 
centum ad valoremy for the reason and on the grounds that 
no higher rate than ten per centn/m can lawfully or properly 
be charged on hay imported under the laws of the United 
States concerning duties on imports." There was also a 
notice that an appeal would be taken in case of an adverse 
decision. A proper protest, as well as an appeal, are pre- 
requisites to the right to sue. (§ 3,011 Rev. Staty as amended 
hy the Act of February 27th, 1877, 20 U. S. Stat, at large, 
247.) The protest must set forth " distinctly and specifical- 
ly " the grounds of objection to the decision of the collector 
as to the rate and amount of duties. (§ 2,931 Hev. Stat.) This 
provision was made by the Act of June 30th, 1864, § 14, (13 



FEBRUARY, 1882, 269 



Frazee v. Moffitt. 



TJ. S, Stat, at Loflrge^ 214,) and is sabstantiallj the same as 
that in the Act of February 26th, 1846, (5 /rf., 727,) which 
required the protest to set forth " distinctly and specifically " 
the grounds of objection to the payment of the duties. 

It is contended ffr the defendant that the protest in this 
case does not comply with the statute, in that, although it 
objects to paying more than 10 per oent.^ it states no ground 
except that no more than 10 per cent, ought to be paid ; and 
that it states only a conclusion of law, and leaves the defend- 
ant to find out as best he can why it is the law. But, the 
protest was made in view of a liquidation of duties at 20 per 
cent.,, which is the " greater rate of duties" referred to in the 
protest. The liquidation at 20 per cent, was under § 2,516. 
No other provision of law than that section could possibly 
apply to hay. With § 2,616 and the protest before him, the 
collector could not fail to understand from the protest, that 
the rate of ten per cefit. claimed in it to be the proper duty 
was the rata of ten per cent, named in § 2,616. 

A mere protest against the payment of the duty exacted is 
not a compliance with the statute. This protest is not a mere 
protest against the duty charged. It is a protest against that, 
with the further statement that only 10 per cent, should have 
been charged on hay. Hay not being enumerated or provided 
for anywhere, if not in §2,516, and the 20^^ cerU. and the 
10 per cent, being put in contrast both in the protest and in 
§ 2,516, and the collector having acted under § 2,616, in impos- 
ing the 20 per cent., the language of the protest fairly re- 
ferred the collector to the 10 per cent, clause of § 2,516. A 
protest is a commercial document, usually made in the hurry 
of business, entitled to a liberal interpretation, and not re- 
quiring technical precision, while at the same time it must 
show fairly that the objection afterwards made at the trial was 
in the mind of the party and was brought to the knowledge 
of the collector, so as to secure to the Government the prac- 
tical advantage which the statute was designed to secure. 
{Swansion v. Morton, 1 Curtis^ C. C. B., 294 ; Krieder v. 
Morton, Id., 413 ; Burgees v. Converse, 2 Id.^ 216.) 



270 NORTHERN DISTRICT OP NEW YORK, 

Frasee v, Moffitt 

The oase oiSteegman v. Maoowell, (3 Blatohf. O. C. B.j 365,) 
is nearer like the present case than any one I have been able to 
find. The plaintifis imported articles known in commerce as 
*^ thread laces/' composed of linen and cotton. The collector 
exacted 25 per cent, dnt j on them, as *' cotton laces " under 
schednle D of the Act of July 30th, 1846, (9 U. 8. Stat, at 
La/rge^ 46.) " Thread laces " was named in Schedule E, which 
was a 20^^ cent. Schedule. The protest was against the pay- 
ment of the 25^^r c^n^., and claimed that the ^^ thread laces " 
were liable to a duty of only 20 per cent. The Ciourt held 
that the protest was a notice to the collector, adequately dis- 
tinct and specific, of the grounds of objection to the payment 
demanded and satisfied the provisions of the statute. The 
protest did not say that the ground was that the article was 
provided for by name as '' thread laces," in Schedule £ ; but 
it named the 20 per cent, and protested against the 25 ^r cenJt. 
Schedule E immediately followed Schednle D, in the same Act. 
In the present case the protest names the 10 per cent, and 
protests against the 20. The only suggestion against it is that 
it does not say that hay is not an article manufactured in 
whole or in part and that it is a raw or unmanufactured arti- 
cle. But these provisions are in the same section. In the 
case above cited it was expressly held that the statute was 
complied with, although the protest did not designate the 
particular Schedule and name under which the importation 
should be ranked. 

The principle of the foregoing views is sanctioned by the 
Supreme Court in Gonveree v. BurgeeSy (18 Howard^ *13,) 
where it is said, in regard to the protest Act of 1845 : "We 
are not, therefore, disposed to exact any nice precision, nor to 
apply any strict rule of construction upon the notices re- 
quired under this statute. It is sufiScient if the importer in- 
dicates distinctly and definitely the source of his complaint 
and his design to make it the foundation for a claim against 
th^ Government." The protest in this case must be held to 
have been sufficient. 

2. At the dose of the evidence the defendant asked the 



FEBRUARY, 1882. 271 



Fraiee v. Moffitt 



Court to direct a verdict for the defendant, on the ground that 
the undisputed evidence showed that hay was a manufactured 
article and bj the law subject to a duty of 20 j>er cent, ad 
valorem. The motion was denied and the defendant excepted, 
and the case was submitted to the jury, which found for the 
plaintifEs. The defendant contends that a verdict for the de- 
fendant should have been directed. 

The hay was pressed in bales ready for market, and not 
chopped up fine. It was mostly Timothy hay used for horse 
feed. The usual process in regard to the hay is to cut the 
grass and scatter it by a tedder to enable it to dry, and then 
rake it up and put it into cocks, and let the cocks remain in 
the field over night, and the next day open out the cocks to 
dry and then put it in the bam that day. While in the cocks 
the hay sweats. After it is put in the bam, it must remain 
there a month before it is dry enough to be pressed and 
baled. The grass must be cut while green to make good hay. 
If left to dry uncut it becomes worthless. When the grass is 
cut green it contains starch and gluten. After it is cut the 
heat of the sun and the oxygen in the air convert the starch 
into sugar before the hay becomes dry. 

The defendant contends that, on this evidence, hay is a 
manufactured article, under g 2,516 ; that hay is a new article 
transformed from grass, as much as sugar is from the cane 
juice or the maple sap, or as salt is from the saline brine ; that 
the heat of the sun and the air and human skill and labor 
manufacture the grass into hay ; and that the verdict for the 
plaintiffs was not only without evidence but against the evi- 
dence. 

I am of opinion that nothing that was done or occurred to 
the grass which became this hay caused it to be other than a 
raw orimmanufactured article, or to be an article manufactured 
in whole or in part, under § 2,516 ; that the jury were justified 
in finding the verdict they did ; that the direction to find a 
verdict for the defendant would have been erroneous ; that a 
verdict for the defendant would have been erroneous; and 



372 NORTHBRN DISTRICT OF NBW YORK, 

Fraxee v, Moffitt 

that it would have been proper to direct a verdict for the 
plaintiffs. 

If hay is a raw article it is liable to only 10 per cent duty. 
Many articles are properly called raw which have undergone 
some manipolation. Cotton is picked from the bolls, and 
cleaned by ginning, and baled. Yet it is raw cotton in the 
bale. Wheat is cut, and the grains are threshed out, and then 
subjected to a cleaning machine, and then bagged. Yet it is 
raw wheat in the bag. So with other grains. The cotton and 
the grains undergo such change and preparation as exposure 
to light, and natural or artificial heat, and air, and the manip- 
ulation they receive, produce or allow, be it more or less. 
Yet neither the cotton nor the grains would be said to be 
manufactured. Salt and sugar are new articles. Cotton and 
grains are the same articles they were when on the plant with 
its roots in the earth. So hay is the same article it was when 
it was stalks of grass with roots in the earth. It is dried, to 
be sure. But the drying and any conversion of starch into 
sugar are mere incidents of the necessary cutting to enable it 
to be stored for food in latitudes where grass cannot be found 
all the year round. Where it can be so found no hay is 
stored. Dried apples would not be called a manufactured 
article, though the apple is peeled and cored and sliced and 
dried by exposure to the san and manipulation. The sub- 
stance of dried apples is still apples. The substance of dried 
grass or hay is still grass. Change of name and manipulation 
do not necessarily constitute manufacture, within the meaning 
of § 2,516. Eadi case must be decided according to its own 
circumstances. The verdict of the jury in this case was a 
correct one, under the foregoing views, and the motion for a 
new trial is denied. 

KeUy <k MaoRde^ for the plaintiffs. 

Martin L Townsendj {District Attorney^ for the de- 
fendant. 



FEBRUARY, 188S. 273 

Fisher v. Meyer. 



MOBTON C. F18HEB 
VS, 

MoBirz Meteb and othbbs. 

In tbb case, after a yerdiot agaiDrt two of the defendanta for flSlfOOO, they 1^ 
plied for a stay of proceedings during the time aUowed for maUng a case, and 
till farther order. The applicants being in aotiye bnsinesfl, the Court granted 
the application on their giving a bond, with two satisfisctory surges, in the 
snm of $200,000, conditioned for the payment to the plaintiff of any judgment 
which might be rendered against them in this suit, or for the satisfaction of 
the judgment. 

(Before BamuK, J., Southern District of New York, February Ist, 188S.) 

Shipman, J. The motion of the defendants Meyer and 
Adler for a stay of proceedings during the time allowed for 
making a case, and till further order, is not opposed by the 
plaintiff, but he insists that it should be granted upon terms, 
i. ^., inasmuch as the plaintiff has now no security, that secu- 
rity should be given for the payment of the judgment, if one 
is rendered. 

The verdict amounts to a very large sum, viz., about $181,000. 
The defendants are probably now of ample means to pay all 
their liabilities, but they are in active busmess, and whether 
they will be able to pay their debts at the expiration of some 
months, in case judgment is entered against them, depends 
upon contingencies which cannot now be ascertained and 
made certain. They are now able to give security and no 
serious hardship will be imposed thereby. If no security is 
given, a large claim is placed at some hazard. In the case of 
so large a verdict against parties who are subject to the vicis- 
situdes of business, I think that the plaintiff is entitled to 
security. 

The motion of the defendants for a stay is granted, pro- 
vided they shall give bond, with two sureties, to the satisfac- 
VoL. XX.— 18 



274 SOUTHERN DISTRICT OF NEW YORK, 



Biierk v. Imhaeoser. 



tion of the Court, in the som of two hundred thousand dol- 
lars, conditioned for the payment to the plaintiff of any judg- 
ment which may be rendered against them in this suit, or for 
the satisfaction of said judgment. 

In case a writ of error shall be taken to the Supreme 
Court, this bond can be vacated, and the bond required by 
section 1,000, upon writs of error, will be given. 

Luther a. Marshy for the plaintiff! 

Joseph J?. ChoaU and Francis N. Bcmgs^ for the d&- 
fendants« 



Jacob E. Buebk 

vs, 

William Imhaeusbb and Charles Keinath. In Equitt. 

A creditor'B bill on a money decree alleg^ that the defendant had or had had 
property, without specifying any In particular. It prayed a diaooreryof 
property. It contained interrogatories making more specific inquiries, and 
required the defendants to answer such interrogatories as by the note there- 
wider written they should be required to answer, but there was no note there* 
uider written. The answer denied generally that the defendant had any 
property, or that any was held in trust for him, or that he had conyeyed away 
any since the decree, or before, in view of it, to defeat it. On exoeptiona for 
insufficiency, the answer was held sufficient. 

(Before WHXKLEBy J., Southern District of New York, February 2d, 1882.) 

W HEELER, J. This canse has now been heard on excep- 
tions to the answer for insufficiency. The bill states the 
recovery of judgments by decree against the defendants for 
the payment of money ; that execution cannot be satisfied for 
want of property to be found ; and that the defendants have 
or have had property, without specifying any in particular. 



FEBRUARY, 1882. 275 



Buerk «. Imhaenser. 



It prays a discovery of their property in hand or held in trust 
for them. The interrogatories make more specific inquiries. 
The answer denies generally that the defendant answering has 
any property in his bands, or that any is held in trust for 
him, or that he has conveyed away any since the decree, at 
aU, or before, in view of it, to defeat it. The Rules in Equity 
require defendants to answer only such interrogatories as they 
are specifically required by note to answer. This bill, accord- 
ingly, required the defendants to answer such interrogatories 
as by the note thereunder written they should be required to 
answer. There is no note thereunder written ; therefore, 
there were no interrogatories to be specifically answered. 
They were only required to answer the stating part of the 
bill. This the defendant answering has done as specifically 
as he is by the bill charged. No ground is known for making 
a defendant give a particular account of all the property he 
has ever had, or deny specifically having had particular prop- 
erty, upon such general charge as to having had property 
before, which cannot be found now to satisfy judgments. At 
least the particular property sought to be reached should be 
pointed out before anything more than a general answer 
should be compelled. 

The exceptions are overruled. 



WiUiam 0. Hauff^ for the plaintiff. 
Arthur V. Briesen^ for the defendant. 



276 SOUTHERN DISTRICT OP NEW YORK, 

Benedict v. WilliAnu. 



Ebastus D. Benedict 

vs. 

Ephradc Williams and Frank E. Rernoohan. In EQumr. 

W. contracted with K., that K. ahonld oondact a litigation on behalf of W., as 
oooneel, and recelye ^ of the ayalle thereof for so doing. K. contracted 
with M. and H., that they ahoald assist K. in the litigation, and share equally 
with him in the ^. The litigation was oondocted by them with the knowledge 
of W. antil he receiyed a som as its ayails. M. assigned his share of the 
ayails to B. B. sued W. and K. in a State Coart of New York to recoyer 
such share. The suit was remoyed into this Court. B. filed a bill in eqnity 
in this Court setting up the aboye £scts. It was demurred to on the grounds 
(1) that there was no privity of contract between W. and M., or between 
W. and B. ; (2) that W. was only liable to K. ; and (8) that the remedy of B. 
was at law : Held, that the demurrer must be oyerruled. 

The distinctions between legal and equitable procedure being, abolished in the 
State Courts of New York, and the right of B. being a purely equitable 
right, he can, in this Court, proceed in equity. 

(Before Whselki, J., Southern District of New York, February 2d, 1882.) 

Wheeler, J. This cause has been heard on demurrer to 
the bill. It was commeDced in the State Court and retnoYed 
to this Court. The bill shows that the defendant WUliams, 
a citizen of Connecticut, made a contract with the defendant 
Kemochan, a citizen of Massachusetts, by the terms of which 
the latter was to conduct litigation in behalf of the former 
against the Kansas Pacific Railway Company, as counsel, and 
to receive one-fourth part of the avails thereof for so doing; 
that, by a contract between Eemochan and Edwin R. Meade 
and Henry E. Knox, the two latter were to assist in the con- 
duct of the litigation, and to share equally with the former 
in the one-fourth part of the avails ; that the litigation was 
conducted by them with the knowledge of Williams, and 
proceeded until the sum of twenty-seven thousand five hun- 
dred dollars was received from it, as the avails of it, by him ; 



FEBRUARY, 1882. 277 



Benedict v. WUliams. 



tliat Meade sold ai:d assigned his share of these avails to the 
orator, a citizen of New York; that Enox has been fully 
settled with ; and that Meade's share has not been paid over. 

The principal grounds of demurrer assigned are that there 
was no privity of contract between either Williams and 
Meade, or Williams and the orator ; that Williams is only 
liable to Eemochan, who may be liable over to Meade or to 
the orator ; and that the orator's remedy, if he has any, is at 
law. The want of privity relied upon, however, is not mar 
terial. It may be that Williams had only to pay Eemochan, 
as he agreed to, bat, if so, he bas not paid to Eemochan 
Meade's share. That share, if payable to Kemochan, was 
payable to him for Meade, and Meade would have the right to 
proceed for it against both ; against Eemochan as his trustee, 
and against Williams as a debtor to his trustee for him. This 
right he could sell and assign, as the bill alleges he did sell 
and assign it to the orator ; and, when it was so sold and as- 
signed to the orator, he became vested with the right, also, in 
some manner to enforce it. 

It is understood that the distinctions between legal and 
equitable procedure are done away with in the State Ciourts 
from which the case was removed ; and that there the remedy 
is to be sought by the real owner of a cause of action, in his 
own name. In this Court these distinctions are kept up, al- 
though the proceedings at law conform to those in the Courts 
of the State. At common law, a mere chose in action was 
not assignable at all, although it was assignable in equity ; 
and, hence, an assignee of a chose in action could not main- 
tain an action at law upon it in his own name, but could in 
the name of the assignor, for his own benefit ; or he could 
proceed in equity to recover it, and, if he did, he must pro- 
ceed in his own name. The orator took the only mode that 
was open to him in the State Court. Had the proceedings, re- 
mained there his rights would have been wrought out by the 
appropriate methods there provided. But, when the pro- 
ceedings were removed into this Court they were neither re- 
moved from a Court of law, or the law side of a Court, to 



278 NORTHERN DISTRICT OF NEW YORK, 

Mellen v. The Town of Tjaneiiig. 

the law side of this Court ; nor from a Court of equity, or 
from the equity side of a Court, to the equity side of this 
Court ; but they were removed from that Court as it was, 
where remedies are administered without this distinction, to 
this Court, where the distinction is observed ; and the re- 
moval was necessarily to that side of this Court where the 
appropriate relief, if due, could be obtained. The orator is 
merely the assignee of a chose in action, which accrued to 
Meade, or to Kernochan for Meade ; the proceedings are in 
his own name ; and he can go forward with such proceed- 
ings only on the equity side of the Court. His right is a 
purely equitable one, and strictly cognizable in his own name 
in a Court of equity only, or only where equitable remedies 
are administered ; and the remedy is none the less equitable 
because it might not be so classed in the State Court. 

The demurrers are overruled, with leave to the defendants 
to answer over within thirty days, on payment of costs of 
demurrer. 

William A. Beach j for the plaintiff. 

Edward M. Shepao'dj for the defendants. 



Habvey Mellen 
The Town of Lansing. 

By § 1 of the Act of the Legislature of New York, passed April 6tb, 1871, 
(Lami of New York, 1871, vol, I, ehap. 298, p. 686,) the New Tork and 
Oswego Midland Railroad Company was authorised to extend and consimot 
its road from the city of Anbnrn, or from any point on said road easterly 
or southerly from said city, " upon snch route end location and through such 
counties as the Board of Directors of said company shall deem most feasible 



FEBRUARY, 1882. 279 



Mellen v. The Town of Lansing. 



and fayorable for the constraction of said railroad, to any point on Lake 
Erie or the Niagara river." It was also provided, that any town ** in any 
county through or near which said railroad or its branches may be located " 
might aid the constmction of the sold rulroad and its branches and exten- 
sions, by the issue and sale of its bonds, which were to be issued and executed 
by commissioners to be appointed by the county judge of the county in 
which the town was situated. In November, 1871, the Board of Directors of 
the company passed a resolution determining " that the construction and ex- 
tension of the said railroad westerly commence at and from the village of 
Cortland in the said county of Cortland, and thence to Lake Erie or the 
Niagara river." In October, 1871, commissioners were appointed for the 
town of Lansing, in Tompkins county, by the county judge of that county. 
In December, 1871, maps were filed in the office of the clerk of that county, 
locating parts of the " Auburn branch * of the road through the town of 
Lansing, and the road was made through that town to and through the ad- 
joining town in another county, and on, for 26 miles in all, to a point in a 
farming community, unconnected with any other road, and began to run in 
the fall of 1872. In January, 1872, and afterwards, bonds of the town of 
Laufdng were issued to the company, to the amount of $76,000, and it re- 
ceived in exchange a certificate for 760 shares, ot $100 each, of the stock of the 
company : Beidf that the " western extension ** had nothing to do with the 
Auburn branch ; that the resolution of the company was insufficient to au- 
thorize the issuing of any bonds by said town ; that the said maps did not 
locate any part of the " western extension ; " that there was no power in any 
town to issue any bonds until all the counties through which the road was 
to pass had been designated by the directors ; and that the absence of such 
location was fatal to the bonds even in the hands of a bona fide holder of 
them, although the town had paid same coupons on the bonds and had re- 
tained the certificate of stock. 

(Before Blatchfobd, J., Northern District of New Tork, February 8d, 1882.) 

Blatohfobd, J. This suit is brought on conpons cut from 
bonds purporting to have been issued bj the town of Lansing, 
in Tompkins county, New York, and bearing date December 
1st, 1871. The coupons sued on are 47 in number, falling 
due September 1st, 1879, cut from 47 bonds, the princi- 
pal of which bonds amounts to $38,000, the coupons amount- 
ing to $1,330. It was tried once before this Court and a 
jury, and the plaintiff had a verdict, under the direction of 
the Court, for $1,457 69, being the amount of the coupons 
and interest thereon. The defendant moved for a new trial, 
on a bill of exceptions, containing exceptions taken at the 



280 NORTHERN DISTRICT OF NEW YORK, 

H ellen v. Tbe Town of Lanring. 



triaL The Coart, in Aagnat, 1881, granted a new triaL 
(19 Blatchf. C. C. R., 512.) The new trial has been had 
before the Court without a jury. 

The first question is as to the statute authority for the 
issuing of the bonds by the town. By § 1 of the Act of 
April 5th, 1871, i^Laws of New Tork^ 1871, vol. 1, chap. 298, 
p. 586,) it is provided as follows : " The New York and Os- 
wego Midland Sailroad Company are hereby authorized and 
empowered to extend and construct their railroad from the 
city of Auburn, or from any point on said road easterly or 
southerly from said city, upon such route and location and 
through such counties as the board of directors of said com- 
pany shall deem most feasible and favorable for the construc- 
tion of said railroad, to any point on Lake Erie or the Ni- 
agara river," Then follow provisions for constructing 
other branches. Then follows this : '^ and any town, village 
or city in any county, through or near which said railroad or 
its branches may be located, except such counties, towns and 
cities as are excepted from the provisions of the general bond- 
ing law, may aid or facilitate the construction of the said New 
York and Oswego Midland Bailroad and its branches and ex- 
tensions, by the issue and sale of its bonds in the manner 
provided for " in the said Act of 1866 and the Acts " amend- 
atory of and supplementary thereto." The Act of 1866, 
referred to, is the Act of April 5th, 1866, {Laws of Ifew 
Tork^ 1866, vol. 1, chap. 398, p. 874.) It provides for the 
appointment by the county judge of the county in which the 
town is situated, of not more than three commissioners to 
carry into effect the purposes of the Act. The commission- 
ers are to execute the bonds under their hands and seals, and 
to issue them. When issued lawfully they become the obli- 
gations of the town. All the statutes then speak of them as 
bonds issued by the town. 

The bonds in the present case state on their face that they 
are obligations of the town, and that they are issued under 
the provisions of the said Act of 1866, and the several Acts 
amendatory thereof and supplementary thereto, especially the 



FEBRUARY. 1882. 281 



MeUen v. Tbe Town of Lansing. 



said Act of 1871. The bonds purport to be attested by the 
hands and seals of three persons who style themselves therein 
'' duly appointed commissioners of the said to.wn of Lan- 
sing ; " and the bonds state that they have caused each of the 
annexed coupons to be signed by one of their number. 

The board of directors of the company, on the 16th of 
November, 1871, passed the following resolution : " Whereas, 
the New York and Oswego Midland Railroad Company had 
for its original object the construction of a railway from the 
city of New York to the city of Oswego ; and, whereas, since 
the organization of said railroad company, it has become de- 
sirable to extend their said railroad to Lake Erie or the 
Niagara river ; and, whereas, the Legislature of the State of 
New York did, by chapter 298 of the laws of 1871, authorize 
and empower the said New York and Oswego Midland Bail- 
road Company to build and extend their said railroad from 
the city of Auburn, or from any point easterly or southerly 
of said city, to any point on Lake Erie or the Niagara river ; 
and, whereas, the said railroad company and its board of 
directors have decided to begin such extension and construc- 
tion of said railroad westerly at and from the village of 
Cortland, in the county of Cortland, and westerly to Lake 
Erie or the Niagara river : Therefore, be it resolved, that 
the board of directors of said railroad company hereby deter- 
mine that the construction and extension of the said railroad 
westerly commence at and from the village of Cortland, 
in the said . county of Cortland, and thence to Lake 
Erie or the Niagara river." On the same 16th of Novem- 
ber, 1871, the board of directors of said company passed 
the following resolution : " Resolved, that the said New 
York and Oswego Midland Railroad Company, for the pur- 
pose of obtaining money and materials necessary to extend 
their said railroad from the village of Cortland to Lake Erie 
or the Niagara river^ hereby authorizes and directs its presi- 
dent and treasurer to borrow money to an amount not exceed- 
ing twenty-five thousand dollars per mile in length of the track 
of the said railroad, so as aforesaid to be extended and con- 
structed, and, to secure the repayment thereof, to issue its first 



282 NORTHERN DISTRICT OF NEW YORK, 



MelleD V. The Town of Laaaing. 



mortgage bonds, to be made payable in gold coin of the United 
States, and to be of such denomination, and after such manner 
and form, and to such trustees, as the said president may de- 
termine upon and deem best for the interests, of the said 
company.*' 

On the 2l8t of October, 1871, the county judge of 
Tompkins county signed a paper appointing as commissioners 
of said town, to carry into effect the purpKwes of the said Act 
of 1866 and the Acts amendatory thereof, ^^ in accordance 
with the provisions of the said Acts," the three persons who 
afterwards executed the bonds as commissioners. The com- 
missioners took the oath of ofSce as such on the 1st of 
November, 1871. 

Some 20 years prior to the year 1872, a road bed 16 miles 
long, called the *^ Mnrdock Line," intended for a railroad, had 
been graded. That road bed ran from a place called Osmun's, 
in the town of Lansing, northward, to the north line of Lan- 
sing, which is the south line of the county of Cayuga, and of 
the town of Genoa in that county, and then northward 
through Genoa and the town of Venice into the town of 
Scipio, all in Cayuga county. The grading of that road bed 
had become grassed over and the culverts were decayed. 
Some part of it was ready for ties and ballasting. On the 1st 
of January, 1871, the executive committee of the railroad 
company purchased the Murdock line, with its franchises, 
right of way and road bed. During the summer and fall of 
1871 surveys were made by the company for a line of road to 
run from Freeville, in the town of Bryden, Tompkins county, 
the town next south of Lansing, to the south end of the 
Murdock line at Osmun's in the town of Lansing, a distance 
of 10 miles. As a result of this acquisition and of these 
surveys the bonding proceedings were commenced and the 
resolutions of November 16th, 1871, were passed. 

On the 13th of December, 1871, there was filed in the of- 
fice of the clerk of the county of Tompkins a map, 
called "Map No. 1," containing this inscription: "Map 
and Profile of a part of the Auburn branch of the New York 



FEBRUARY, 1882. 283 



Mellen v. The Town of Lansing. 



and Oswego Midland Eailroad, as located in and through a 
part of the county of Tompkins, New York." This location 
covers 10 miles in length from Freeville to the Murdock line 
at Osmun's. On the 22d of December, 1871, there was filed 
in the same oflBce a map, called " Map No. 2," containing the 
same inscription as " Map No. 1." This location is continu- 
ous with the preceding, and covers the Murdock line from 
Osmun's to the north line of the town of Lansing, that being 
the north line of Tompkins county, and the south line 
of Cayuga county. On the 23d of December, 1871, 
there was filed in the office of the clerk of the county 
of Cayuga a map, called "Map 1." containing this 
inscription : " Map and Profile of a part of the Auburn 
branch of the New York and Oswego Midland Railroad, as 
located in and through a part of the county of Cayuga, New 
York." This location is continuous with the preceding, and 
covers the Murdock line from the south line of Genoa, 
through Genoa and Venice, to the south line of Scipio. On 
the 30th of May, 1872, there was filed in the last named of- 
fice a map, called "Map 2," containing the same inscrip- 
tion as "Map 1." This location is continuous with the 
preceding, and covers the Murdock line from the south line 
of Scipio to the Merrifield road in Scipio, which was the 
north end of the Murdock line. The grading and making 
of the road from Freeville north through the town of Lansing 
was begun in December, 1871. There was a railroad already 
built and running from Cortland to Freeville west from 
Cortland, which belonged to the Utica, Ithaca and Elmira 
Railroad Company. Under some arrangement between that 
company and the Midland Company, the latter began, in the 
fall of 1872, to run its own cars from Cortland to Freeville, 
and so on to Scipio, its own road from Freeville to Scipio, 26 
miles, having been completed to the north end of the Mur- 
dock line. The terminus, in Scipio was 11 miles from Au- 
burn, in a farming community, and has never connected there 
with any other railroad. In resuscitating the Murdock line, 
the Midland Company put ties and ballast and rails on the 
whole length of it, and built some culverts and some bridges. 



284 NORTHERN DISTRICT OF NEW YORK, 

Mellon V. Tho Town of Landing. 

The commissionerB isBued the bonds of the town and de- 
livered them to Charles P. Wood, the assifltant treasurer of 
the Midland Company. None of the bonds were issued be- 
fore January 31st, 1872. On that day $16,000 were issued. 
Afterwards $60,000 were issued. In exchange for them the 
commissioners received a certificate for 750 shares of the stock 
of the Midland Company, of $100 each, in the name of the 
town. 

On the 29th of January, 1873, the following proceedings 
took place at a meeting of the board of directors of the Mid- 
land Company : '^ The president presented the contract made 
by the executive committee with Charles P. Wood, of Au- 
burn, dated January 1st, 1871, for the road bed and franchises 
known as the ^ Murdock Line.' On being read and discussed, 
Mr. Merchant offered the following: Resolved, that the 
contract made by D. C. Littlejohn, J. W. Merchant, John R. 
Clarke, Cheney Ames and William Foster, as the executive 
committee, and Charles P. Wood, of Auburn, for the purchase 
of the franchises, right of way and road bed known as the 
^ Murdock Line,' be and the same hereby is approved, ratified 
and confirmed. Resolved, that the action of the president in 
locating and constructing the western extension of this com- 
pany's road over and upon tlie said ' Murdock Line ' be and the 
same is hereby approved. Unanimously adopted." The per- 
sons named were all or a majority of the executive committee. 

The commissioners were appointed before the company 
passed the resolutions of ^November 16th, 1871, and before 
any part of the western extension was located. It is con- 
tended for the defendant that there was no power to institute 
the bonding proceedings before the company had so located 
the whole of the branch road that it would pass through the 
county of Tompkins, or, at least, that there was no power to 
issue any bonds before such location ; and that there was no 
such location before the bonds in this case were issued. 

Under the Act of 1871 the company is authorized to make 
its extension or branch to any point on Lake Erie or the Ni- 
agara river, either from Auburn or from some point on its 



FEBRUARY, 1882. 285 



Mellen v. The Town of Lansiiig. 



road easterly or southerly from Auburn, " upon such route 
and location and through such counties as the board of 
directors of said company shall deem most feasible and favor- 
able for the construction of said railroad." The eastern 
starting point must be fixed by the company, and so must the 
route and location, and the counties through which said ex- 
tension or branch is to pass, and the western terminus. No 
county is named. No town is named. Any town in any 
county through or near which the railroad or its branch may 
be located, except as defined, may issue and sell its bonds in 
aid, in the manner provided for in the prior Acts referred to. 
By § 3 of the Act of May 15th, 1867, {Laws of N^ 
York, 1867, cha^. 917, p. 2,291,) as amended by § 4 of the 
Act of March Slst, 1869, (/rf., 1869, c?Mbp. 84, p. 142,) the 
company was authorized ^^ to construct a branch railroad from 
the line of the said railroad at any point in the counties 
of Chenango or Madison, through the counties of 
Ohenango, Madison, Onondaga, Cortland, Cayuga, to the 
city of Auburn, in the county of Cayuga, whenever, in the 
judgment of the directors, the same shall be for the interest 
of said corporation." Then the same power is given to the 
towns along the line of the said branch road, or interested in 
the construction thereof, ^^ in any county through which said 
railroad shall run," to subscribe stock and issue bonds in aid, 
as is given by the said Acts of 1866 and 1867. The branch 
so mentioned in the Acts of 1867 and 1869 is a branch to 
Auburn. It is not to pass through Tompkins county. No 
location of it could give any power to the town of Lansing to 
issue any bonds. The western extension, provided for by the 
Act of 1871, might, under that .Act, have been ordered by 
the company to start from Auburn, as its eastern terminus, 
and thus have been a continuation of the said branch to Au- 
burn. As it was, the western extension was ordered by the 
company, by the resolution of November 16th, 1871, to begin 
at the village of Cortland. That extension had nothing to do 
with the branch to Auburn, or the Auburn branch. The said 
resolution is, in terms, confined to the extension authorized 
by the Act of 1871. 



280 NORTHERN DISTRICT OF NEW YORK, 

Mellen v. The Towd of Jjuuang. 

The resolotion merely fixed the eastern point. It fixed 
no route, no location, no counties through which the branch 
should pass, no western terminus. It was no location of the 
branch through the county of Tompkins. It was wholly in- 
sufiicient, therefore, to authorize the issuing of any bonds by 
the town of Lansing. 

The said maps are relied on as being a location before 
the bonds were issued. But each of them purports on its 
face to be a location of a part of '' the Auburn branch," that 
is, the branch to Auburn, which was not to go through Tomp- 
kins county. No one of the maps purports to be a location 
of any part of the western extension. 

Moreover, there is an inherent defect, in the fact that the 
company never, by any action of its directors, or otherwise, 
designated all the counties through which the road was to 
pass. Under the Act of 1871, the whole extension or branch 
must be located before the bonds of any town can be issued. 
It is not enough that a location be made through a particular 
county. So that even though the maps filed could be re- 
garded as a location of so much of the western extension as 
was to pass through Tompkins county, there would be no 
authority for issuing the bonds until the whole extension or 
branch should be located. The board of directors must, in 
some way, adopt an entire route as feasible knd favorable 
before the town bonds can be issued. This seems to have 
been the view of the Court of Appeals of New York, in The 
People V. Morgan^ (55 If. J"., 587.) The absence of such 
location, under the Act of 1871, is as fatal to the bonds, even 
in the hands of a bona fide holder, as if there were no stat- 
ute. As was said in the decision in this case granting a new 
trial : ^^ It required special legislative authority to enable the 
town to issue bonds in aid of the railroad. Even without 
what is on the face of these bonds, every person taking them 
or their coupons is referred to the source of authority to issue 
them, in some statute. A bona fide purchaser of them is 
thus referred equally with every other taker. There may be 
no informality, or irregularity, or fraud, or excess of author- 



FEBRUARY, 1882. 287 



Mellen v. The Town of Lansing. 



itj in an authorized agent, capable of operating to the preju- 
dice of a bona fide holder, but there must be some statute 
providing for the constitution of authorized agents. Every 
one is bound to enquire and take notice as to whether there is 
in fact such a statute. If there is not, there is a total want 
of jurisdiction and authority in county judge and in commis- 
sioners." {Marsh v. Fulton County^ 10 TToZZ., 676.) 

The action of the company by its resolution of January 
29th, 1873, in approving the purchase of the Murdock line, 
and what is called .'^ the action of the president in locating 
and constructing the western extension of this company's 
road over and upon the said Murdock Line," can have no 
effect. There is nothing to show that the western extension 
was ever located over and upon the Murdock line, and such a 
location was not the required location of the whole branch. 

The commissioners paid all of the first coupons on the 
bonds and nearly all of the second and third, receiving the 
money to do so from the supervisor or the collector of the 
town. The commissioners also received and have retained the 
certificate of stock. While these acts may be a ratification of 
steps in regard to which merely irregularity is claimed, they 
cannot avail to prevent the town from setting up a total want 
of power to issue the bonds. 

The case is in a worse predicament for the plaintiff than 
when it was before this Court previously. Then it was sup- 
posed that the Murdock line and its extension to Freeville 
might be a part of a western extension beginning at Auburn, 
afi authorized by the Act of 1871. But the present proof shows 
that this is not so. 

There must be a judgment for the defendant, with costs, 
and a like judgment in the Thomas suit. 



Jame8 JR. Cox, for the plaintiff. 
Harlow Z. Comstock^ for the defendant. 



288 SOUTHERN DISTRICT OF KEW YORK, 



The Leipeic. 



The Lbipsio. 

Id tbiB case * Beirioe rendered by one steamer to another steamer, in towing her 
into port, after she had broken her steam maohinery at sea, was held to be a 
salyage service. 

Notwithstanding a written agreement made at sea between the masters of the 
two steamers, that the disabled steamer should pay £3,CX)0 for the serrioe, but 
which agreement contained the words "bat leaye it to the Court to prore 
the said agreement," this Court awarded as a salvage compensation, on a 
quanltan meruit, $5,600, giving to the owners of the towing steamer $4,126, 
to her master $160, and dividing the remaining $1,226 aniong her master, 
officers, and crew in proportion to their respectiye wages although the own- 
ers of the towing steamer had sued on the agreement alone, and not for sal- 
vage for owners, master and crew. 

The District Court had awarded $8,760, of which the owners of the towing 
steamer were to have $2,250, her master $160, and her master, officers and 
crew $1,860, and, as both parties appealed to this Court, this Court awarded 
to the libellants costs in the District Court, because the claimant had made no 
tender, and awarded no costs in this Court to either party. 

(Before Blatchtobo, J., Southern District of New York, February 7th, 1882.) 

This was a libel in r^m, filed in the District Court. After 
a decree for the libellants bj that Court, both parties appealed 
to this Court. This Court found the following facts : " The 
screw steamship Leipsic, of about 2,000 tons burthen, one of 
the regular line of steamers of the North German Llojd, 
plying between Bremerhaven and Baltimore, left the latter 
port, bound for the former, at 2 p; m. on the 4:th of Septem- 
ber, 1879, with a general cargo and twelve steerage passen- 
gers. She passed Cape Henry on the 5th at 4.45 a. m. and 
proceeded to sea. On the 6th, while the weather was fine, 
the wind northerly, and the ship running at about 10 knots, 
that portion of her propeller shaft known as her '^ first trans- 
mission shaft" broke. This accident deprived her of the 
power of propulsion by steam. She was then in the Gulf 
Stream, in latitude 37'' 58' north, and longitude 68** 43' west, 
and about 320 miles from Sandy Hook. Her sails were all 



FEBRUARY, 1882. 289 



The Leipsio. 



fiet and she was immediatelj hove to, in order to disconnect 
her screw-shaft from the remainder of the shafting between 
the screw-shaft and the point of the fracture, so that the 
ecrew-shaf t could revolve freely when the ship was in motion. 
This was done by dropping down that portion of the shaft 
between the fracture and the screw-shaft. Then, when the 
vessel was in motion, the screw-shaft revolved freely in its 
bearings. The ship was then put under sail .on a west-north- 
west course, intending to reach the nearest port on the Atlan- 
tic coast of the United States. She was in all respects, ex- 
cept as to the injury to her machinery, staunch and s trong, 
well manned, equipped and provisioned. She continued 
under sail till the 13th, when the libellants' ship took her in 
tow. The Leipsic made about 25 miles from 2 p. m. on the 6th 
to noon on the 7th. The next 24: hours she made about 10 
miles, the next 24 hours 41 miles, the next 24 hours 38 miles, 
the next 24 hours 52 miles, the next 24 hours 50 miles, 
bringing her down to noon of the 12th. From that time to 
noon on the 13th it was nearly calm, and the current carried 
her 20 miles northeasterly. On the 9th, at 1.30 p. m., she was 
passed by an English steamer, which made an offer of assist- 
ance, but it was declined by the captain of the Leipsic, on the 
ground that he did not need assistance. During the days the 
Leipsic was under sail she sighted several steamers, but she 
made no signals for assistance. On the 12th, her captain, the 
wind having died away, had decided that it was necessary for 
him to reach a port quicker than he could do so under sail ; that 
his only means of so doing was to be towed in by a steamer ; 
and that the saving of time thereby was an advantage to the 
ship and her owners from a business point of view. For that 
purpose, when he went below on the night of the 12th, he 
ordered rocket signals to be thrown up whenever a steamer 
should pass. One did pass at a distance of 5 or 6 miles, but 
failed to heave to or answer the signals. About noon of the 
12th, the Leipsic had spoken a barque bound for the Dela- 
ware Breakwater, and asked her to report the steamer as being 
there with a broken shaft. About 8 or 9 o^clock on the 
Vol. XX.— 19 



290 SOUTHERN DISTRICT OF NEW YORK, 

The LeipsiC. 

morning of the 13th, the steamer Gresham, bound from New- 
port, England, to Baltimore, Maryland, in ballast, overtook 
the barque which had been previously spoken by the Leipsic, 
and was informed by the barque that there was a steamer to 
the eastward with a broken shaft, giving her supposed lati- 
tude and longitude. The Gresham was immediately put 
about and proceeded in the direction indicated, which was 
nearly opposite to her former course. At about noon on the 
13th, the Gresham, having proceeded 40 miles from the point 
where she was spoken by the barque, appeared in sight, and 
the Leipsic signalled her that she had a broken shaft. The 
Gresham came up to her, and, when within hailing distance, 
her captain asked the Leipsic if she wanted a tow, and the 
reply was that she did. The captain of the Gresham then went 
on board of the Leipsic and the latter showed the former the 
position of the ship on the chart, 39° 28' north latitude, and 
71** 25' west longitude. The reckoning of both ships agreed. 
Measurements were made on the chart, and Sandy Hook was 
found to be distant 125 miles and to be the nearest port. 
The captain of the Gresham was then asked what he would 
tow the Leipsic to Sandy Hook for. The two captains diflPer as 
to the price that was named, one testifying that it was £6,000 
and the other that it was £4,000. The captain of the Leipsic 
told the captain of the Gresham that if he did not come down 
any further, the ship was in very good sailing order, he had 
all his square sails set, and that he could help himself in any 
weather with his ship under sail. During the n^otiation 
another steamer hove in sight, about 5 miles off, and within 
signalling distance, but she was not signalled, and night was 
coming on, and the captain of the Gresham insisted that he 
was first on the ground. The captain of the Leipsic said to 
the captain of the Gresham that there was a steamer near by 
which could give him equal assistance. Finally an arrange- 
ment was concluded as set forth in the following paper, signed 
by both captains, on board of the Leipsic : " Lat. 39° 30' N., 
Long. 71^ 25' W., Sept. 13th, 1879. It is this day agreed 
between Captain F. Pfeiffer, of the S. S. Leipzig, and Captain 



FEBRUART, 1882. 291 



The Leipalc. 



Gibb, of the S. S. GreBham, to tow the said steamer Leipzig 
to Sandy Hook for the sum of three thousand pounds, 
(£3,000,) but leave it to the Court to prove the said agree- 
ment." The words, " but leave it to the Court to prove the 
said agreement" were added before the agreement was 
signed. The master of the Leipsic refused to make the agree- 
ment except upon that condition, because he thought the sum 
named too high. He is a German, but he spoke English, and 
the conversation was in English. The master of the Leipsic 
asked to be towed to New York, saying that he would make 
his repairs there. The master of the Gresham told him it 
would be out of his course, but that the Delaware Break- 
water was in his way, but he would take him there or to Sandy 
Hook as he pleased, and the latter place was agreed on. The 
weather was good and the sea was smooth. The wind was 
very light. The Gresham took the Leipsic in tow by two 
hawsers, furnished by the latter. They got under way soon 
after the agreement was signed, in the afternoon of the 13th, 
and passed Sandy Hook about 3 o'clock in the afternoon of 
the 14th, and proceeded about 6 miles up the Bay, where the 
hawsers of the Leipsic were transferred to a tug, which towed 
her to Hoboken. The Gresham waited in the Lower Bay of 
New York a short time, for some trifling repairs to her ma- 
chinery, (such repairs, however, having no connection with 
the service rendered to the Leipsic,) and then proceeded to 
Baltimore. She arrived at the mouth of Chesapeake Bay at 
9 A. H. on the 16th. She had calculated to arrive there on 
the morning of the 14th. She was a freighting steamer, of 
1,092 tons net measurement. She was under charter to pro- 
ceed to Baltimore, and there tak^ on board a cargo of grain 
for a port of delivery in Great Britain or Ireland, or on the 
continent, between Bordeaux and Hamburg, both inclusive, but 
excluding Bouen, according to orders to be given on signing 
bills of lading. By the charter she was required to be at 
Baltimore not later than the 25th of September. The freight 
earned by her on her outward voyage from Baltimore was 
about $13,750. The agreed value of the Leipsic is $90,000 



292 80UTHEBN DISTRICT OP NEW YORK, 

The Leipsic. 

and that of her cargo $160,945. The amount of her freight 
on that voyage was $13,757 37. The value of the Qresham 
is $90,000. The Leipsic was expected to make a round trip 
. at that season every 6 weeks. By keeping her turn on her 
return trip she would presumably carry some 250 steerage 
passengers in addition to her cargo. The Leipsic at the time 
had 6 months' provisions on board. The captain of the Leip- 
sic had commanded 3 steamers of the North Oerman Lloyd, 
and up to the time of the trial in the District Court remained 
in its employ. He was an experienced master. The service 
was rendered without accident. It was not attended with 
any special difficulty or danger. The weather was at first fair, 
and soon after they started the wind became fresher, and both 
vessels set all sail, and then they made for a time about 7 
knots. The following night it became rainy and squally, and, 
the wind getting around to the southwest, they proceeded 
under steam alone. The Gresham sustained no damage to 
her machinery in consequence of the towage, and suffered no 
loss of employment by reason of the delay. The Leipsic paid 
$150 to the tug which towed her from the place where the 
Gresham left her to her dock in Hoboken. This was on 
Sunday and there was no other tug there." 

Lorenzo UUoj for the libellants. 

William D. Shipman^ for the claimant. 

Blatohvobd, J. The District Court awarded $3,750 to 
the owners, master and crew of the Gresham, of which % was 
to go to the owners of the Gresham, and Vb to her master and 
crew, the master to have %) of the Vs, and the officers and 
crew, including the master, to have the remainder, in propor- 
tion to the rates of their respective wages. This gave to the 
owners, $2,250; master, $150; master, officers and crew, 
$1,860. The libel was filed by the owners alone, on the 
agreement, and not as in a cause of salvage, for owners, mas- 
ter^ and crew. The Court ordered the $1,500 to remain in 



FEBRUARY, 1882. 298 



The Leipdc. 



the registry to await an application for it by the master, offi- 
cers and crew. The libellants have appealed to this Court 
because the District Court set aside the contract a*hd did not 
allow the £3,000. The claimant has appealed on the ground 
that too much was allowed. 

The District Court held that the agreement was made sub- 
ject to the approval of the Court '^ as to the amount therein 
named, £3,000, as the amount to be paid for the towage serv- 
ice ; " that the amount suggested by the agreement was very 
greatly in excess of the amount which the Court would award 
for the same service ; and that^ under the circumstances, the 
service was a salvage service. 

It is contended for the libeUants, that what the parties agreed 
to leave to the Court was, not to approve the sum of £3,000, 
but to approve the agreement, that is, to inquire into the cir- 
cumstances under which the agreement was made ; and that 
otherwise their position in Court would be as if no agreement 
were made. There was no disagreement between the parties 
as to what service was to be rendered or as to the place to 
which the Leipsic was to be towed. The Gresham was to 
tow the Leipsic, and was to tow her to Sandy Hook. The 
only dispute was as to the compensation. The captain of the 
Gresham wanted more than £3,000. The captain of the Leip- 
sic insisted on less than £4,000. The captain of the Gresham 
came down to £3,000. The captain of the Leipsic refused to 
make the agreement unless the added words should be added, 
because he thought £3,000 too high. Under these circum- 
stances the words '^ prove the said agreement" can mean 
nothing except " approve the said agreement for £3,000, as 
to its amount." That being so, the Court is at liberty to in- 
quire whether the £3,000 is a sum which would be awarded 
if there were no agreement. 

On the facts of this case, I think this was a salvage serv- 
ice. Unable to use her steam machinery, it not appearing 
that it could be repaired at sea, having rejected offered assist- 
ance from a steamer, neglecting to signal passing steamers, 
keeping this up until the 12th, ordering rocket signals to 



294 SOUTHERN DISTRICT OF NEW YORK, 

The Leipsic. 

steamers that night, hailing the barqne, on the 12th, to report 
her with a broken shaft, the Leipsic induced the Gresham to . 
go back 40'miles to find her. She was drifting northeasterly 
in the current of the Oalf Stream, which was a direction in 
which she did not want to go. She was under sail for 7 days. 
In 6 days she had sailed but 216 miles. She was still 125 
miles from Sandy Hook and approaching the coast, near the 
equinoctial season. Within the rule laid down in The Prin- 
cees Alicej (3 W. Bob., 138,) there was here, certainly, some- 
thing more than employment to expedite a voyage, something 
more than accelerating the progress of the Leipsic. She was 
to be taken to a port to which she was not destined, to repair 
her disabled machinery. In The Bewardy (1 IF. Iiob.j 174,) 
it was said : '^ Mere towage service is confined to vessels that 
have received no injury or damage," and " mere towage re- 
ward is payable in those cases only where the vessel receiving 
the service is in the same condition she would ordinarily be 
in without having encountered any damage or accident." 
The law, as laid down in The Princeee Alicej was approved 
by the Privy Council in Tfie Strathnwoer, {L. jff., 1 Appeal 
CaeeSy 58.) The cases of The Reward and Tfie Princess 
Alice were cases of assistance by steamtugs to sailing vessels. 
In The JvibUee, (42 Law Times JRep,^ N. S.y 594,) a steamer 
which carried fore and aft sails only, and was not rigged for 
proceeding under sail alone, had broken the main shaft of her 
propeller. She put up signals of distress, and was towed by 
another steamer 40 miles into a port to which she was not 
bound. It was urged that she was making fair progress 
towards a safe port by means of her sails, under no circum- 
stances of danger. The question arose directly whether the serv- 
ice was salvage or towage, because the towed steamer had paid 
to the other a sum for the service, and the crew of the towing 
steamer put in a claim for a share in the money, as salvage to be 
distributed. The owners desired to retain the whole, as tow- 
age money only. Sir Robert Phillimore held that the case was 
one of salvage and not of towage only, and gave to the crew a 
share of the money. Citing the case of The Princess Alice, 



FEBRUARY, 1882. 295 



The Leipeic. 



he said : "I think, in this case, the eircamstances show that 
something more was required than expedition, and something 
more than mere acceleration of progress. Here was a vessel 
lying with her mainshaft broken. The great difficaltj of a 
screw steamer is invariably when her shaft is broken. In 
this case she put np two flags for assistance. I am satisfied 
that the principle is laid down in many cases that under these 
circumstances flags are put up on the ship for the purpose of 
obtaining salvage service. The service, therefore, in this case 
was one of a salvage character." In the present case the 
Leipsic did what was equivalent to putting up flags for assist- 
ance or signals of distress, by sending by the barque the mes- 
sage she did, and by ordering rocket signals to steamers on 
the night of the 12th, and by her signal to the Gresham when 
the latter came in sight. The present case is not at all like that 
of The Emily B. Souder, (15 Blotch, C. C. i?., 185.) In that 
case it was held that there was mere expedition by towage, 
in order to deliver passengers sooner at the port to which the 
towed and the towing steamer were both of them bound ; and 
the master of the towing steamer neither did nor said anything 
at the time to indicate that he regarded the case as one of salv- 
age. In the present case, asking even £3,000 for towing a 
distance of 125 miles was a clear indication of a claim to a 
salvage service. 

The case is one of a quantum meruit for salvage. The 
value of the Leipsic, cargo and freight was over $264,000. 
The value oi the Gresham was $90,000. In regard to the 
Leipsic, there are these facts : she had lost the use of her 
steam-power ; with the sails she had, and such winds as she 
had had, she wotdd, at her prior rate of sailing, have been be- 
tween 3 and 4 days in reaching Sandy Hook; she was in the 
Gulf Stream, drifting northeasterly when it was calm ; she 
was in good condition except as to her steam-power ; she had 
tried sailing and had determined to abandon it and was seek- 
ing assistance from steamers ; delay had become serious ; and 
her captain took the services of the Gresham though he knew 
it would be under a claim for £3,000, rather than let the Gre- 



296 SOUTHERN DISTRICT OP NEW YORK, 



The People of the State of N. T. «. The Gompagnie G^n^rale TraneatlMitiqae. 

Bham go and trost to the other steamer in sight, or to some 
other resource. In regard to the Gresham, she put back 40 
miles, and went oat of her way, to a port to which she was 
not bound ; she was delayed in all 48 honrs ; she had a charter 
to begin at Baltimore the 25th, which she might have lost ; 
and the service was, in fact, not difficnlt or dangerous. 

I think the £8,000 is entirely too much. At the same 
time I think the $8,750 is not enough. I award the sum of 
$5,500. Of this the Gresham is to have % or $4,125. This 
is peculiarly a case where her owners ought to have a large 
share. Of the remaining $1,375, the master of the Gresham 
is to have $150, and the rest is to be divided among her master, 
officers and crew, in proportion to the rates of their respective 
wages. 

The District Court awarded costs in that Court to the 
libellants, as the claimant had made no tender. This was cor- 
rect. As both parties have appealed, and each has had partial 
success, no costs in this Court are allowed to either party. 



The Peoplb op thb State op New York 
The Comfagnib Gekebale Tbansatlantiqits. 

The Act of the Legislature of New Tork, passed May 81st, 1881, {Law of New 
York, 1881, chaqi), 432, jd. 590,) imposiDg a duty of |1 for each alien passeDger 
arriving at the port of New York from a foreign port, and appropriating the 
money to " the ezecutioo of the inspection laws of the State of New York " by 
the Commissioners of Emigration, is in conflict with the ezclnsiye power of 
Congress, under the Constitution of the United States, to regulate commerce. 

The " inspection laws " referred to are the proyielons of the Act of the Legisla- 
ture of New York, passed May 28th, -1881, {Law of New York, 1881, chap. 
427, />. 585,) for inspecting the persons and effects of all persons arriying by 
Teasel at the port of New York from a foreign country. 

The Act of May Slst, 1881, is not yalid as a statute laying an impost, or a dnty 
on imports, for executing inspection laws, imder Article 1, section 10, of the 



FEBRUARY, 1882. 297 



Hie People of the State of N. Y. v. The CompagDie G^n^rale TranBatlantique. 

Constitiition of the United States, becanBe the Act of May 28th, 1881, ia not 
an iDspecUoD law. 

What are " inspection laws,*' defined. 

Although, by section 10, of Article 1, of the Ck>nstitntion of the United States, 
State inspection laws are made subject to the revision and control of Con- 
gress, this Court has authority to decide whether a particular law is an inspec- 
tion law or not. 

(Before Blatohvobd, J., Southern District of New York, February 9ih, 1882.) 

Blatohfoed, J. This suit was commenced in the Court 
of Common Pleas for the city and county of New York, and 
was removed into this Court. The complaint was put in in 
the State Court. It alleges that the defendant is and was, at 
the times thereinafter mentioned, a corporation, formed under 
the laws of France, and owner of the vessels thereinafter 
named ; that the defendant, by vessels from a foreign port, 
brought to the port of New York alien passengers, for whom 
a tax has not heretofore been paid, by the vessels, on the dates, 
from the ports and to the number stated in the complaint, 
being in June, July and August, 1881, by 9 vessels, on 16 
voyages, all from Havre or Marseilles, the number of alien 
passengers being, in all, 6,214 ; that the master, owner, agent 
and consignees of such vessel each and a]l failed and neg^ 
lected to pay or cause to be paid to the chamberlain of the 
city of New York, within 24 hours after the arrival of each of 
said vessels at the port of New York, or at any time, the sum of 
$1 for each and every of said passeugers so brought as aforesaid, 
nor has any part thereof been paid ; and that there is due to 
the plaintiffs from the defendant, by reason of the premises, 
the sum of $7,767 50, debt and penalty, and interest thereon 
from the day after the entry of each vessel at the port of 
New York, for the tax and penalty imposed by law respect- 
ively, for which sum, with interest, the plaintiffs demand 
judgment, with costs. The defendant has put in, in this 
Court, a demurrer to the complaint, which states, as the 
ground of demurrer, that it appears upon the face of the com- 
plaint that it does not state facts sufficient to constitute a 
cause of action. The parties, by their attorneys, have stipu- 



298 SOUTHERN DISTRICT OF NEW YORK. 

The People of the State of N. T. v. The Gompagnie G^o6rale Traoaatlanttqne. 

lated in writing that this action ^' is brought and prosecuted 
under and pursuant to an Act of the Legislature of the State 
of New York, passed May 3l6t, 1881, and known as chapter 
432 of the laws of 1881 ; " and that the demurrer is based 
upon the claim that the said Act '^ is repugnant to various 
provisions of the Constitution of the United States, (particu- 
larlj Article 1, section 8, and subdivision 2 of section 10,) and 
also to the Revised Statutes of the United States, and also to 
the provisions of the Treaties now existing between the 
United States and France and other countries." The stipula- 
tion states that its intent is ^^ to remove any question as to the 
right of the defendant to present and urge all such questions 
with the same force and effect as if the demurrer assigned 
various causes, separately setting up each and every objection 
that may be based upon the Constitution of the United States 
or of the State of New York, or upon any existing treaties 
with foreign powers, or upon any alleged want of power on 
the part of the State to enact such a statute as that now 
sought to be enforced, or of the plaintiffs to bring and main- 
tain this action." 

The Act of May 31st, 1881, {Laws of New York, 1881, 
cha^p. 482, p. 590,) is as follows : " § 1. There shall be levied 
and collected a duty of one dollar for each and every alien 
passenger who shall come by vessel from a foreign port to the 
port of New York, for whom a tax has not heretofore 
been paid, the same to be paid to the chamberlain of the city 
of New York, by the master, owner, agent or consignee of 
every such vessel, within twenty-four hours after the entry 
thereof into the port of New York. § 2. It shall be the duty 
of the master or acting master of every such vessel, within 
twenty-four hours after its arrival at the port of New York, 
to report under oath, to the mayor of the city of New York, 
the names, ages, sex, place of birth and citizenship of each 
and every passenger on such vessel, and in default of such re- 
port every passenger shall be presumed to be an alien arriving 
at the port of New York for the first time. And in default 
of every payment to the chamberlain of the city of New 



FEBRUARY, 1882. 299 



The People of the State of N. T. v. The Compagnie G^n^rale Tranaatlantique. 

York, there shall be levied and collected of the master, owner, 
agent or consignee of every such vessel, a penalty of twenty- 
five cents for each and every alien passenger, in addition to 
the dnty heretofore imposed. § 8. It shall be the duty of the 
chamberlain of the city of New York to pay over, from time 
to time, to the commissioners of emigration, all snch sums of 
money as may be necessary for the execution of the inspec- 
tion laws of the State of New York with the execution of 
which the commissioners of emigration now are or may here- 
after be charged by law, and to take the vouchers of the 
commissioners of emigration for all such payments. And it 
shall be the duty of the said chamberlain to pay over annu- 
ally, on the first of January in each year, to the Treasury of 
the United States, the net produce of all the duties collected 
and received by him under this Act, after the payments to 
the commissioners of emigration aforesaid, and take the receipt 
of the Secretary of the Treasury therefor. § 4. The com- 
missioners of emigration shall institute suits in the name of 
the people of the State of New York, for the collection of 
all moneys due, or which may grow due, under this Act, the 
same to be paid, when collected, to the chamberlain of the 
city of New York, to be applied by him pursuant to the terms 
of this Act. § 5. Section one shdl not apply to any passen- 
ger whose passage ticket was actually issued and paid for 
prior to the time this Act takes effect, but every ticket shall 
be presumed to have been issued after this Act takes effect, 
in the absence of evidence showing the contrary. § 6. This 
Act shall take effect immediately." 

Three days prior to the passage of the said Act, and on 
the 28th of May, 1881, {Laws of New York, 1881, chap. 427, 
p. 585,) an Act was passed as follows : ^' § 1. The commis- 
sioners of emigration are hereby empowered and directed to 
inspect the persons and effects of all persons arriving by 
vessel at the port of New York from any foreign country, as 
far as may be necessary to ascertain who, among them, are 
habitual criminals or pauper lunatics, idiots or imbeciles, or 
deaf, dumb, blind, infirm or orphan persons, without means 



300 SOUTHERN DISTRICT OF NEW YORK, 

Th^ People of the State of N. T. v. The Compagnlo G^D^nle TransatUmtiqae. 

or capacity to support themBelves, and subject to become a 
public charge, and whether their persons or effects are affected 
with any infectious or contagious disease, and whether their 
effects contain any criminal implements or contrivances. 
§ 2. On discovering any such objectionable persons or effects, 
the said the commissioners of emigration and its inspectors are 
further empowered to take such persons into their care or 
custody, and to detain or destroy such effects, if necessary 
for the public welfare, and keep such persons under proper 
treatment, and provide for their transportation and support 
as long as they may be a necessary public charge. The com- 
missioners of emigration shall, in case of habitual criminals, 
and may, in other cases where necessary to prevent such per- 
sons from continuing a public charge, retransport such person 
or persons to the foreign port from which they came. § 3. The 
commissioners of emigration are further empowered to board 
any incoming vessel from foreign ports arriving at the port 
of New York, by its agents and inspectors, who shall have 
such powers as may be necessary to the effectual execution of 
this Act, and any person who shall resist them in the execu- 
tion of their lawful function shall be guilty of a misdemeanor 
and may be arrested by the officer resisted, and, upon con- 
viction, may be sentenced to a term not exceeding six months 
in the penitentiary, or to pay a fine of one hundred dollars, 
or both. § 4. This Act shall take effect immediately." 

These provisions were enacted with an endeavor to avoid 
the grounds on which former legislation had been held void bs 
repugnant to the Constitution of the United States. The 
provisions of part 1, chapter 14, title 4 of the Bevised Stat- 
utes of New York, which authorized the recovery from the 
master of every vessel arriving in the port of New York 
from a foreign port, of a sum of money for each passenger, 
and appropriated the money to the use of the marine hos- 
pital, were held void in 2'he Passenger OaseSj (7 Sbw.j 283,) 
in January, 1849. After that various amendments of the law 
were made, which came before the Supreme Court in Sen- 
derson v. The Mayor^ ( 2 OUo^ 259,) in 1875, and were held 



FEBRUARY, 1882. 301 

The People of the State of K. T. v. The Compagnie O^D^rale TraDsatlantiqae. 

void. This legifilation required a bond for each passenger 
landed by a vessel from a foreign port, to indemnify the com- 
missioners of emigration and every municipality in the State 
against any expense for the relief or support of the passen- 
ger for 4 years, but the owner or consignee of the vessel 
could commute for the bond, and be released from giving it, 
by paying $1 50 for each passenger, within 24 hours after 
Ifinding him. If the bond was not given nor the sum paid 
within the 24 hours, a penalty of $500 for each passenger was 
incurred, which was made a lien on the vessel, collectible by 
attachment at the suit of the commissioners of emigration. 
The statute applied to every^ passenger, and not merely to 
every alien passenger. It applied to every passenger by a 
vessel from a foreign port, landed at the port of New York. 
The Court held that the statute amounted to a requirement of 
the payment of the $1 50 ; that it was, in its purpose and 
effect, a law imposing a tax on the owner of the vessel for the 
privilege of landing in New York passengers transported from 
foreign countries ; that, in taxing every passenger, it taxed a 
citizen of France, landing from an English vessel, for the 
support of English paupers landing at the same time from 
the same vessel ; that a law prescribing the terms on which ves- 
sels shall engage in transporting passengers from European ports 
to ports of the Cnited States is a regulation of commerce with 
foreign nations ; that Congress alone could regulate such com- 
merce ; and that a State could not, under any power supposed 
to belong to it, and called police power, enact such legislation 
as that then under consideration. The Court expressly re- 
served the question as to how far, in the absence of legislation 
by Congress, a State could, by appropriate legislation, protect 
itself against actual paupers, vagrants, criminals and diseased 
persons, arriving in its territory from foreign coantries. A 
portion of the legislation of New York then under considera- 
tion concerned persons who should, on inspection, be found to 
belong to those classes, but the Court acted on and held void 
that part of the statute which applied to all passengers alike, 
and that part alone. 



802 SOUTHERN DISTRICT OF NEW YORK, 

The People of the State of N. T. v. The Compagnie G^D^rale Tranaatlaotiqiie. 

The Act of May Slst, 1881, differs from the prior statute 
only in levying a duty of $1 for each alien passenger instead 
of $1 50 for each passenger ; and it may, perhaps, be limited 
to an alien who arrives for the first time. But it applies to snch 
aliens who come bs travellers for pleasure, and have means, 
and intend to go back, and to such aliens who come intending 
to remain, and have means, as well as to such aliens who are of 
the classes mentioned in § 1 of the Act of May 28th, 1881. It 
compels the owner of the vessel to pay $1 for each of the aUen 
passengers embraced in it, for the privilege of landing him. 
The tax is expressly imposed for having the passenger come 
by the vessel from a foreign port to the port of New York. 
The new statute is as liable to the objections stated by the 
Court in the Henderson case as was the statute in that case. 

But it is contended that the provisions of § 3 of the Act 
of May Slst, 1881, make the statute valid, as one laying an 
impost or a duty on imports for executing its inspection laws, 
under this provision of Article 1, section 10, of the Constitu- 
tion of the United States: '^No State shall, without the 
consent of Congress, lay any imposts or duties on imports 
or exports, except what may be absolutely necessary for 
executing its inspection laws; and the net produce of all 
duties and imposts laid by any State on imports or ex- 
ports, shall be for the use of the Treasury of the United 
States ; and all such laws shall be subject to the revision and 
control of the Congress." The Act of May 28th, 1881, is the 
only so called inspection law of the State of New York cited 
as one with the execution of which the commissioners of 
emigration are charged by law. The money received from 
the $1 tax for each alien passenger arriving for the first time 
is to be expended, as far as necessary, in executing the Act of 
May 28th. 

The question arises, therefore, whether the Act of May 
28th is an inspection law, within the meaning of Article 1^ 
section 10. Inspection laws were known when the Constitu- 
tion was framed in 1787, and what were inspection laws was 
well understood. They had reference solely to merchandise. 



FEBRUARY, 1882. 303 



The People of the State of N. T. v. The Compagnie G^n6rale Transatlantiqiie. 

Their object was to improve the quality of articles and fit 
them for exportation or domestic nse. {Gibbons v. Ogden, 9 
Wheaty 1 and 203 ; 1 JETenfs Comm.j 439 ; Story on the Con- 
stitution, ^1,017.) In No. 44 of The Federalist, Article 1, 
section 10, of the Constitution, is commented on, and it is 
said that the manner in which the restraint on the power of 
the States over imports and exports is there qualified, that is, 
in regard to inspection laws, " seems well calculated at once 
to secure to the States a reasonable discretion in providing 
for the conveniency of their imports and exports, and to the 
United States a reasonable check against the abuse of discre- 
tion." In Burrill's Law Dictionary, " inspection " is defined 
thus : ^' Ofiicial view or examination of commodities or man- 
ufactures, to ascertain their quality, under some statute requir- 
ing it.'' In Bouvier's Law Dictionaiy, this is the definition : 
" The examination of certain articles made by law subject to 
such examination, so that they may be declared fit for com- 
merce." In Clintsman v. Northrop^ (8 Cowen, 45,) the 
inspection laws of New York are said " to be laws to protect the 
community, so far as they apply to domestic sales, from 
frauds and impositions, and, in relation to articles designed 
for exportation, to preserve the character and reputation of 
the State in foreign markets." By the Constitution of New 
York of 1846, {Article 6, section 8,) all offices for " inspecting 

■ 

any merchandise, produce, manufacture or commodity what- 
ever " were abolished. 

As the term '* inspection laws," in the section under con- 
sideration, refers only to laws for inspecting articles of mer- 
chandise, this shows that the terms "imports" and "exports" 
in the same section refer only to articles of merchandise. 
Persons are not imports or exports or articles to be inspected, 
under the section. To pass a statute directing persons to be 
inspected, to ascertain their condition as to character, or pecu- 
niary means, or physical characteristics, and then another 
statute calling the first one an inspection law, does not make 
it an inspection law. It was not, and is not, and can never be 
an inspection law, in the sense of the Constitution. Nor can 



804 SOUTHERN DISTRICrr OF NEW YORK. 



The People of the State of N. T. «. The Gompagoie G^n^rale TnuiwtUntiqae. 

passengers arriying in the United States be imports or ex- 
ports, in the sense of the Constitution. In Brawn v. The 
State of JUarylandy (12 Wheaton^ 419, 437,) the section re- 
ferred to was under consideration, and it was said by the 
Court : '^ What, then, is the meaning of the words ^ imposts 
or duties on imports or exports ' ? An impost, or duty on 
imports, is a custom or a tax levied on articles brought into a 
country, and is most usually secured before the importer is 
allowed to exercise his rights of ownership over them, because 
evasions of the law can be prevented more certainly by exe- 
cuting it while the articles are in its custody. It would not, 
however, be less an impost or duty on the articles, if it were 
to be levied on them after they were landed. The policy and 
consequent practice of levying or securing the duty before or 
on entering the port does not limit the power to that state of 
things, nor, consequently, the prohibition, unless the true 
meaning of the clause so confines it. What, then, are ^ im- 
ports ' ? The lexicons inform us they are ' things imported.' 
If we appeal to usage for the meaning of the word, we shall 
receive the same answer. They are the articles themselves 
which are brought into the country. ' A duty on imports,' 
then, is not merely a duty on the act of importation, but is a 
duty on the thing imported. It is not, ta^en in its literal 
sense, confined to a duty levied while the article is entering 
the country, but extends to a duty levied after it has entered 
the country. The succeeding words of the sentence, which 
limit the prohibition, show the extent in which it was under- 
stood. The limitation is, ^except what may be absolutely 
necessary for executing its inspection laws.' Now, the inspec- 
tion laws, so far as they act upon articles for exportation, are 
generally executed on land, before the article is put on board 
the vessel ; so far as they act upon importations, they are 
generally execnted upon articles which are landed. The tax 
or duty of inspection, then, is a tax which is frequently, if 
not always, paid for service performed on land, while the 
article is in the bosom of the country. Yet this tax is an 
exception to the prohibition on the States to lay duties on 



FEBRUARY, 1882. 805 



The People of the State of N. Y. v. The Compagnie Geii6rale Transatlantique. 

imports or exports. The exception was made because the tax 
would otherwise have been within the prohibition." These 
observations are persuasive to show that persons are not im- 
ports or exports^ or the subjects of inspection laws, within 
section 10 of Article 1. The word " imports " and the word 
^' exports " must have equal extent and scope. The former 
can have no greater than the latter. The suggestion that 
persons departing from the United States by vessel could 
properly be said to be exported, or to be exports, under any 
circumstances, even when re-transported by public authority, 
is not one which commends itself to the general understand- 
ing. If not exports they cannot be imports. The fact that 
the importation of persons is referred to in section 9 of 
Article 1 has no effect to include persons within the word 
^^ imports," where that word is used. The clause referred to 
prevents Congress from prohibiting, prior to 1808, "the 
emigration or importation of such persons" as any of the 
States then existing should think proper to admit. So far as 
this section referred to the involuntary arrival of persons it 
had reference to persons brought in to become slaves and 
articles of merchandise. 

There is nothing authoritative in The Paaaenger Oasesy (7 
Sow.y 283,) or in any other decision of the Supreme Court, 
which conflicts with the foregoing views. The new statute of 
New York being void under the decision in the Henderson 
ease, no authority upholding it as a law laying a duty on im- 
ports, to execute an inspection law, can be derived from sec- 
tion 10 of Article 1. In Hailroad Co. v. Huaen^ (5 Otto^ 
465, 472,) the principle of the Henderson case was affirmed 
and applied, as a principle which forbids a State from burden- 
ing foreign commerce under the cover of exercising its police 
powers. It is such a burden to tax aU alien passengers arriv- 
ing by vessel for the first time ; and the fact of examining or 
inspecting the persons of such passengers to see if they are 
good or bad, poor or rich, sane or lunatic, diseased or well, does 
not make the tax a tax to execute an inspection law. Under 
this guise, any law which required examination of any person 
Vol. XX.— 20 



S06 SOUTHERJI DIflTBICr OF HEW TORE, 

TlM PMple of tlM State of 9. T. v. TIm Gonp^nB G^aCnfe 



or thing, and which naed the word ^ inflpection," conld be 
thereby made an inspection law, and the restraint of the Con- 
stitntion oonld be frittered awaj, so long as the duties laid 
did not exceed what was neeessaiy to execote the particnlar 
law. 

Bnt there is, moreorer, on the face of the Act of Hay 
28th, sufficient evidence that it cannot be r^;arded as an in- 
spection law. The Acts of May 28th and Hay 31st cannot 
either of them derive any greater force from the fact that 
they are two Acts than the enactments in the two wonld have 
if they were all in one and the same Act. The Act of May 
28th goes beyond the inspection and the ascertainment of the 
facts prescribed, and anthorizes the commissioners to take the 
objectionable persons into their care or custody and provide 
for the transportation and support of such persons ^^ so long as 
they may be a necessary public charge." Some of the objec- 
tionable persons are defined to be '^ infirm or orphan persons, 
without means or capacity to support themselves, and subject 
to become a public charge." This is an eleemosynary system 
for supporting paupers, it may be for their lives. Able- 
bodied aliens arriving here for the first time, with means, in 
health, not among the classes called ^^ objectionable " in the 
Act, are to have a tax of $1 laid for each of them, to support 
such system. This is not an inspection law. It is a direct 
interference with the exclusive power of Congress to regulate 
commerce with foreign nations. 

It is urged for the plaintifis, that, inasmuch as section 10 of 
Article 1 declares that the State inspection law shall be sub- 
ject to the revision and control of Congress this Court has no 
jurisdiction to revise or control the action of the State in 
enacting or administering the law. If the law is an inspection 
law, it is, as such, subject to the revision and control of Con- 
gress. But this fact cannot deprive the Court of its power of 
adjudging, in a proper suit, whether the law is an inspection 
law at all, or whether it is a law of another character. 

It results from the foregoing considerations, that the de- 



FEBRUARY, 1882. 307 



Carrier v The Town of Sh&wangonk. 



murrer is BOBtained and jadgment is ordered for the defend- 
ant, with costs. 

Z&uns Samders and Oeorge If. Scmders^ for the plamtifis* 
Frederic R. Ccnidertj for the defendant. 



John Carrtkb 

vs. 

The Town op Shawanqunk. 

An Act authoruing the commiflBionerB of a town to borrow money and issae itt 
bonds provided that the power conferred by the statute shonld only be exer- 
cised on the condition that the consent should first be obtained, in writing, of 
tax-payers appearing on the last assessment roll, representing a majority of 
the taxable property of the town, proof of which should be by the acknowl- 
edgment or proof thereof filed in the town and county clerk's offices and an- 
nexed to a copy of the assessment roll The bonds of the town were issued, 
payable to bearer, and re<dting that they were issued in pursuance of the 
Act. The plaintiff sued the town on some of the bonds, and at the trial proved 
that he obtained the bonds firom a bank, and that its attorney, before the bank 
purchased them, examined a certified copy of the consent and assessment roll 
and ascertained therefrom that a majority of the persons on the roll had con- 
sented, and that the bank then bought the bonds and paid value for them, 
without notice of any defence. The defendant then offered in evidence a 
certified copy of the consent roll of the town, and a certified copy of the as- 
sessment roll, to show that the consent of a m^ority in value of the tax-payers 
was not obtained. The Court excluded the evidence : HOd, no error. 

(Before Shipmak, J., Southern District of New York, February »th. 1882.) 

Shifman, J. This is an action at law, to recover the 
amount due upon sundry bonds for $2,400, issued by the 
town of Shawangunk and payable to bearer. The bonds re- 
cited that they were issued in pursuance of the Act which is 



308 SOUTHERN DISTRICT OF NEW YORK. 

Carrier v. The Town of Shawanfirnnk. 

hereafter mentioned and by duly appointed commisBioners. 
The second section of chapter 880 of the Session laws of New 
York, of 1866, {p. 2,074,) provided, that it should be lawful for 
the commissioners (appointed by the county judge npon the 
application of twelve freeholders, residents of the town,) to 
borrow, on the faith and credit of the town, such sum of money 
as the tax-paying inhabitants of the town should fix npon by 
their assent in writing, not exceeding a specified percentage 
of the assessed valuation of the property of the town for the 
year 1866, "provided, however, that the powers and authority 
conferred by this section shall only be exercised npon the 
condition that the consent shall first be obtained in writing of 
such number of the tax-payers of such town, their heirs or 
legal representatives, appearing upon the last assessment roll 
for the year 1865, as shall represent a majority of the taxable 
property of such town, proof of which shall be by the ac- 
knowledgment or proof thereof, as required for deeds of real 
estate, filed in the town and county clerk's office of the re- 
spective counties, and annexed to a copy of the assessment 
roll of the town for 1865." 

For the purpose of showing that the plaintiff, whether a 
purchaser for value or not, had the title and rights of a hofia 
fide holder, because he was the successor of the Dime Savings 
Bank, which was a purchaser for value, before maturity, and 
without notice of any claim of non-liability on the part of the 
town, the plaintiff proved, by the attorney of the bank, that, 
before the purchase and before maturity, he investigated 
whether the consent of the town to the issue of the bonds 
had been obtained, as prescribed by the Act. Before the 
examination, he had never heard of any claim on the part of 
the town, or its officers, that the bonds were invalid. He ex- 
amined a certified copy of the consent and assessment rolls of 
the town, and ascertained that the majority of the persons 
upon the assessment list had signed the petition or consent to 
the bonding of the town, and that the consents represented a 
majority of the property of the town, and that these facts 
had been certified to by the proper officers. The witness tes* 



FEBRUARY, 1882. 809 



Carrier v. The Towq of Shawaoipuik. 



tified : ^^ I carefully added up and reviewed the additions al* 
ready added up, proved the figoreS) and found them correct. 
I counted the names for myself , and I read the certificate. It 
was the county clerk's of Ulster county. ♦ ♦ ♦ I ascer- 
tained that aU the names on the consent roll were on the 
assessment roll and checked them o£^ and added up the 
amount of the property." The result of the investigation 
was reported to the Bank, which thereupon bought a large 
amount of the bonds for ninety jp^ cent, of their par value. 
The certified copy was delivered to the Bank, and was there- 
after mislaid and lost. 

It was not claimed by the defendant that the Bank had 
any actual notice of any alleged invalidity of the bonds, but 
the defendant, after the plaintiff had rested, offered a certi- 
fied copy of the consent roll of the town, in pursuance of 
which the bonds were authorized to be issued, together with 
a certified copy of the assessment roll of the town for the year 
1866, to show that the consent of the majority in value of the 
tax-payers was not obtained, and insisted " that the Bank must 
stand or fall by the roll as it in fact was, not by any mistaken 
interpretation of it by its attorney ; and that it was not a haria 
fde holder, without notice, because it had undertaken to in- 
vestigate the matter, and did not rely on the face of the secu- 
rity." The Court excluded the evidence, to which ruling the 
defendant excepted, and, a verdict having been subsequentiy 
directed for the plaintiff, the defendant filed a bill of excep- 
tions and a motion for a new trial. The question in regard 
to the exclusion of the certified copies of the consent and as- 
sessment rolls for the purpose for which they were offered, 
was the only one which was argued by the defendant. 

It will be observed, that these rolls were not offered, either 
upon cross-examiDation of the attorney or as independent ev- 
idence, to show that he had actual notice of any defect in the 
number of consents, or that he would have had notice if he 
had exercised reasonable diligence, but they were offered 
upon the alleged ground that, inasmuch as the Bank's attor- 
ney had examined certified copies, it, therefore, could not be 



810 SOUTHBBN DISTRICT OP NEW YORK, 



Carrier v. The Town of Shawangnnk. 



a honafde purchaser, if a comparison of the consent roll with 
-the assessment roll would show that the consent of a majority in 
yalue had not been obtained, although diligent scrutiny, at the 
time of the purchase, did not disclose this alleged fact. The 
defendant's proposition was, that the purchaser, before matu- 
rity, of municipal bonds payable to bearer, is not a Jxma fide 
holder, if he undertakes to investigate the validity of the 
bonds which he proposes to buy, and investigation would 
have revealed to him a defect, although it was not disclosed 
by diligent examination, and that such purchaser is charged 
with notice of all that a complex record might show, although 
it is not claimed that he had notice of any defect in the bonds, 
and it is clear that diligent scrutiny of the copies of the pub- 
lic records which were furnished to him did not disclose any 
suggestion of such defect. No such artificial rule in regard 
to notice has been established. It is true, that purchasers of 
municipal bonds are charged with notice of the laws of the 
State which authorized the issue, and of a want of power in 
the municipality or its officers to execute or issue the bonds. 
In this case, it is fairly to be gathered from the statute, that 
the commissioners were invested with power to dedde 
whether the proper number of tax-payers had consented, and 
whether, therefore, the condition precedent had been com- 
plied with, and their recitals in the bonds, when held by a 
hanafide purchaser, are conclnsive. {Coloma v. Mivei, 92 27. 
/S:,484 ; SumMdt v. Zangy 92 O. S., 642 ; Walnut v. Wade, 108 
U. &, 683.) Knowledge, by the purchaser of municipal bonds 
before maturity, of their invalidity, when there are no marks 
of infirmity on the face of the instrument, and there is no 
want of power in the municipality or its officers to execute 
and issue the bonds, is a question of fact. It being admitted 
that the purchaser before maturity, for value, had no actual 
notice or suspicion of any defect, and the bonds, in substance, 
reciting compliance with the condition precedent which was 
required by tihie statute, the arbitrary rule claimed by the de- 
fendant, which declares that he did have constructive notice 
of a defect, does not exist. 



FEBRUARTi 1882. 811 



Schneider v. Lovell. 



The motion for a new trial is denied, and the stay of pro- 
ceedings is vacated. 

Charles C. Leeds and ChaHee H. Wir^field, for the 
plaintiffs. 

D. If. De WiU, for the defendant. 



Benkstt B. Sohnbideb 



vs. 
Fbakk H. Lotbll and Obyille D. Loybll. In Equtiy. 

Be-iasaed letters patent No. 7,511, granted to Bennett B. Schneider, February 
18th, 1877, for an " improvement in shade-koldere for lampa," the original 
patent, No. 182,978, baring been granted to Carl Yotti, as inventor, October 
8d, 1876, do not describe the shape or sice of the parts, or the proportion of 
the parts of the shade, or the principle which is to govern the constmction of 
the shade as to siie and proportions, and there is no infringement of the patent 
by a shade which is not of the form and dimensions and siae and height and 
proportions of the shade shown in the drawings of the patent 

(Before BLAtcBroan, J., Sonthem District of New York, February 10th, 1882.) 

Blatohvobd, J. This suit is brought on re-issued letters 
patent No. 7j511, granted to the plaintiff, February 13th, 
1877, for an ^' improvement in shade-holders for lamps," the 
original patent. No. 182,973, having been granted to Oarl 
Votti, as inventor, October 3d, 1876. The specification of 
the re-issue says : '^ My invention relates to lamps, and it con- 
sists in a transparent shade-holder, or holder of a material 
allowing the passage of light, and shade or globe so arranged 
that an ordinary lamp burner can be used without a chimney^ 
as will be hereinafter more fully set forth. In the annexed 
drawing, figure 1 is a vertical section of my invention. Fig. 
2 is a plan view of the shade-holder. A represents an ordi- 



812 SOUTHEBir DISTRICT OF NEW YORK, 

Schneider «. LoTell. 

nary lamp burner, proyided with a drcnmferential flange, a, 
for the support of the cone ft, and which, ordinarily, also 
serves to support the chimney or cylinder. This flange is 
provided with soitable perforations, through which air is ad- 
mitted both inside and outside of the cone. Instead of using 
the flange a for the support of the ordinary chimney, I place 
on the same my shade-holder, B, which is made of glass or 
other suitable transparent material, or material that will allow 
of the passage of lights and which is provided with a tubular 
extension or socket, c, that fits over the cone }, leaving an air 
space between its inner surface and the outer surface of said 
cone. From said socket extends a broad disk -shaped flange, 
dy which is provided with a rim, «, and which serves to sup- 
port and retain the shade, C. The flange, dj is perfectly 
dosed, so that no air will pass to the flame except what is ad- 
mitted through the perforations in the burner flange, a, and 
by these means I am enabled to produce a bright flame with- 
out the use of an ordinary chimney or cylinder. The advan- 
tages of this arrangement will be apparent, since it allows of 
keeping the burner clean and of trimming the wick without 
difficulty, and the annoyance of broken chimneys is avoided. 
It will be seen, that with the shade-holder and shade arranged 
as shown and described, the ordinary burner ¥rill perform the 
required functions without the use of a chimney. I am 
wdl aware that transparent shade-holders are of themselves 
not new ; hence, I do not claim such, broadly, as being my in- 
vention." The claims of the re-issue are as follows : ^^ 1. In 
a lamp having a burner, the combination of a shade-holder 
made of material that will admit of the passage of light, and 
a shade or globe, arranged and constructed substantially as 
described, whereby the burner performs the required func- 
tions without the use of a chimney, as set forth. 2. The 
shade-holder, B, constructed of material that will admit of 
the passage of light, and provided with a downwardly extend- 
ing socket, Cj and disk-shaped flange, (2, with rim, e, in com- 
bination with a globe or shade, 0, and burner. A, of a lamp^ 
as and for the purposes herein set forth. 3. The combination. 



FEBRUAET, 1882. 818 



Schneider v. LoTell. 



in a lamp, of the burner, A, having perforated flange, a, and 
cone, bj the Bhade-holder, B, with central socket, c, and a 
fihade or globe, 0, snbstantiallj as and for the purposes herein 
set forth.'' 

One of the defences set up in the answer is, that in the 
specification of the re-issue there is not given, as required by 
the statute, a description of the invention, and of the procesa 
of making, constructing, and using it, in such full, dear and 
exact terms as to enable any person skilled in the art or sci- 
once to which it appertains, to make, construct, and use the 
same, nor is there explained in or by said specification the 
principle of the alleged invention, and the best mode in which 
said Yotti has contemplated applying that principle, so as to 
distinguish it from other inventions, and that, therefore, the 
patent is void. 

In the specification nothing is said as to the shape or size 
of the parts, or proportion of the parts, of the shade, 0. 
Nothing is said about it except to call it a globe or shade, and 
to designate it as 0, by a letter of reference to the drawings. 
Nothing is said as to the diameter of the contraction at the 
narrowest part of it near its top, as compared with the diame- 
ter of the socket o of the shade-holder : and nothing as to its 
height or as to the degree of flare of the shade-holder. These 
things are shown by the evidence to be material in construct- 
ing an arrangement of the kind which will give as good a 
light as with the use of a chimney. The object of the ar- 
rangement is stated in the specification to be to use an ordi- 
nary burner without a chimney, and to dispense with the or- 
dinary chimney. This can only mean that as good a light is 
to be produced without as with a chimney. The meaning of 
the words ^^ a bright flame," in their context, is, as bright a 
flame as the chimney will produce. The meaning of the ex- 
pression, that "the ordinary burner will perform the required 
functions without the use of a chimney," is, that the ordinary 
burner will give as much light without the use of a chimney. 
This is to be done by having "the shade-holder and shade ar- 
ranged as shown and described," yet the features of construe- 



314 SOUTHERN DISTRICT OF NEW TORK, 

Schneider v. LoTelL 

tion, and shape, and size, and proportions of the shade, are 
not set forth. So, too, in claim 1, ^^ a shade or globe arranged 
and oonstmcted snbstantiallj as described," is spoken of, yet 
nothing is described as to the construction of the shade. It 
is tme that, by looking at in the drawings, a shade of a cer- 
tain form is shown. But the drawings are not said to be on 
a scale. Looking at the drawings and making a shade from 
them gives but one form of shade, at most, and there is no 
statement of the principle which is to govern the construction 
of the shade as to size and proportions. It is shown that a 
shade made, as nearly as can be ascertained, of the form and 
proportions shown in the drawings will cause the burner to 
give light to some degree, but by no means to the same de- 
gree as the ordinary chimney will with the same burner. It 
is not the shade of the drawings that has been made and 
sold by the plaintiff under the patent, nor have the defend- 
ants made or sold the shade of the drawings. To reach the 
shades of either the plaintiff or the defendants required ex- 
periment, adaptation, and invention beyond anything shown 
in the drawings. Construing the patent as covering a shade 
of the form, and dimensions, and size, and height, and pro- 
portions shown in the drawings, no such shade has been made 
or sold by the defendants, and so there has been no infringe- 
ment. This is the most favorable view which can be taken 
of the patent. 

The bill is dismissed, with costs. 

Oifford dk Oifardj for the plaintiff. 
J. P, Fitch^ for the defendants. 



FEBRUABY, 1882. 815 



Hart V. Thsyer. 



WiLUAM H. Habt, Jb. 

VS. 

HiBAM H. Thayeb. In Equity. 

Ba-iMied letten pfttent, No. 7,009, granted to William H. Hart, Jr., October 
9th, 1877, for ao " improTement in neck-tieB,'' the original patent, No. 169,921, 
haring been granted to him Febroary Idtb, 1876, are not infringed by a pin 
emstmcted according to the description in letters patent No. 206,078, 
granted to Albert M Smith and Hiram H. Thayer, April 28d, 1878. 

If the Te>ifl0iie olums more than the original, so as to coTer the defendant's pin, 
it coyers new matter, not found in the original, and is for an invention not 
shown in the original. 

(BdDre Blatohvobd, J., Southern District of New York, February 18th, 1882.) 

Blatohfobd, J. This suit is brought on re-issned letters 
patent. No. 7,909, granted to the plaintifi October 9th, 1877, 
for an ^^ improvement in neck-ties," the original patent, No. 
159,921, having been granted to him February 16th, 1875. 
The specification of the re-issne is as follows, reading what is 
outside of brackets and what is inside of brackets, omitting 
what is in italics : " Figure 1 is a face view of tiie device 
embodying my invention. Fig. 2 is a side view thereof, 
partly in section. Fig. 8 is a side view, enlaiged, of a detached 
part. Similar letters of reference indicate correspond- 
ing parts in the several figures. In the class of neck- 
ties wherein the front bow, which is made long and lies on 
the chest, is held in position by a band which passes around 
the neck, it is necessary to secure said band in some manner, 
to prevent displacement of the tie. For this purpose pins 
have been sewed to the shields or supporting plates of the 
ties and the neck bands engaged therewith ; but this is objec- 
tioDable, since the pin soon loosens and is lost. Again, the 
cost of thus attaching the pin is a matter of considerable 
moment. My invention is designed to remedy these defects ; 



316 SOUTHERN DISTRICT OF NEW YORK, 

Hart V. Thayer. 

and consists in securing the pins to the shidds by metallic 
fastenings, whereby the pins are firmly retained in place, 
longer service is rendered thereby, and there is a cheapness 
in the product. Referring to the drawings, A represents a 
shield or snpporting-plate for a neck-tie, which consists of a 
long bow or knot, ^, constituting the front portion, and a 
band, ft, which passes aronnd the neck, the two parts being 
shown in dotted lines. To the bottom portion of the shield 
or plate I secure a pin, B, which projects downwardly, so that 
the band h may be attached thereto, in order that the band 
will not disengage from the neck and release the tie. I secure 
the pin to the shield by metallic rivets, [or projections,] 0, 
which readily clinch on the shields and firmly connect the two 
parts. These rivets [or projections are attached to the pin in 
any suitable manner, and they may be parts of the pin itself ; 
or they may be separate pieces of metal fastened to it. Thus 
they] may be passed through the fiattened body of the pin 
and the shield and headed, or [they may be] punched out of 
the said [body.] body^ [The metallic rivet or projection is 
passed through the shield,] and [is] bent over [and] or clinched 
[upon the opposite side.] on the shield. It will be seen that 
the connection of the pin and shield is firm and [durable.] 
durable. [Whereas] / overcome loosening of the pvn due to 
outUng of the threads, [formerly] which heretoforey in use, 
[passing] ha/oe been passed through openings in the pin, 
[were cut by their edges, or rotted away from corrosion of the 
pin through] or rottkng of said thread consequent to perspira- 
tion, [and the pin was soon lost or loosened.] corroding the 
pin. Again, as the work can be performed by machinery, 
instead of stitching or sewing by hand, labor is materially re- 
duced, whereby there is [a] great saving in the [cost of pro- 
duction.] product. [I do not claim any particular method of 
attaching the metal fastenings to the pin, since any of the 
well-known methods of attaching metals together may be 
employed, either cohesion by welding or soldering, or forming 
both pin and fastenings out of one piece of metal, or 
adhesion and pressure by making one metal inclose the 



FEBBtJABT, 1882. 817 



Hart ft. Thayer. 



other.]" Reading in the foregoing what is outside of brackets, 
including what is in italics, and omitting what is inside of 
brackets, gives the text of the original specification. The 
claims of the re-issue are as follows : ^^ 1. The pin B and neck- 
tie shield A, in combination with the metallic fastening 0, 
substantially as and for the purpose set forth. 2. The pin B, 
formed wil^ the fastening 0, in combination with the neck- 
tie shield A, sabstantiallj as and for the purpose set forth. 
3. A metallic fastening or metallic fastenings, 0, attached to 
and projecting from the pin B, substantially as and for the 
purpose set forth." The original patent had only two claims. 
The first was the same as claim 1 of the re-issue. The second 
was the same as claim 2 of the re-issue, with the words 
" punched out " inserted between " the " and " fastening." 

It is claimed that the defendant has infringed claim 2 of 
the re-issue by making and selling neek-tie shields with pins 
such as are described in letters patent No. 206,673, granted to 
Albert M. Smith and Hiram H. Thayer, April 23d, 1878. The 
pin is of metal, pointed at one end. In its length are two bends, 
which are nearly at right angles to the length of the body. 
One bend is farther from the ]>oint than the other bend is 
from the opposite end. Each bend is made by two right 
angled defiections of the body of the pin. From the bend 
near the end farthest from the point, the body of the pin 
proceeds on in a line not continuous with the line of the pin 
the other side of said bend, but parallel therewith. The other 
bend is so made as to bring back the line of the pin between 
said bend and the point to the line of the pin the other side 
of the first-named bend. The shape of the pin, with the two 
bends, is this: = ^ — ^^ =*^ The pin is attached 

to the shield by passing it through two holes in the shield, 
one hole at each bend, so that the two ends of the pin are on 
one side of the shield and the middle part or body is on the 
other side of it. The bends are abrupt or short, and form 
shoulders, which bear in the holes and keep the pin from 
moying or slipping back and forth. The pin, af t^ it is in the 



818 SOUTHERN DISTRICT OF NEW YORK, 

Htfi V. Thayer. 

shield, is flattened, especially at the anpointed end, so that it 
will lie more closely and finnly to the shield and not project 
from its surface. The pin is pat into the shield and iastmed 
by springing its ends together snfliciently to put them through 
the holes made for them in the shield, and then springing the 
pin back again. The claim of the patentee is to the combina- 
tion of the shield with the pin constmcted and arranged to 
operate substantially as and for the purpose thus set forth. 

The original patent, No. 159,921, speaks of only two ways 
of forming the fastenings of the pin. One is to have metallic 
rivets passing through the body of the pin and headed. The 
other is to have the rivets punched out of the body of the 
pin and bent over or clinched on the shidd. The firat daim 
of that patent is for the combination of three things — ^the 
shield, the pin and the separate rivet fastening. The second 
claim is for a combination of the shield and the pin having 
rivets punched out of its body. But, with either form of 
fastening, the entire pin, when in place^ is on one side of the 
shield, and the bent over or clinched or headed ends of the 
fastenings are on the other side of the shield. The body of the 
pin is straight and continuous, aside from the supplementary 
fastenings. In the defendant's pin the body is not straight 
and there are no supplementary fastenings. The body of the 
pin, by being bent, fastens itself. Manifestly, the effort in the 
specification of the re-issue is to enlarge the scope of the pat- 
ent beyond what is warranted by the original The re-issue 
says that the projections may be '' parts of the pin itself." 
No way is shown in the original of making the projections 
parts of the pin itself except by puncturing them out of its 
body. That means partly detaching part of the body and 
letting it form a pin or projection, to be bent down and 
clinched on the other side of the shield. The defendant's 
bends are parts of the pin itself, but they are not projections 
from the body, as in the plaintiff's pin, but are projections cf 
the whole body, in its devious path. The second claim of the 
re-ifisue, if construed to mean anything more than the second 
daim of the original, so as to cover the defendant's pin, covers 



FEBRITABr, 1882. 319 



Hart V. Thayer. 



new matter not found in the original, and is for an invention 
not shown in the original That defence is set np in the answer. 
The only pin with a fastening f ormiDg part of its body, described 
or shown in the original, is a pin with a fastening punched out 
of its body. A pin formed with a fastening which is part of 
the pin itself is a form of description ingeuionsly devised 
to cover a punched-out fastening, and also such bent fas- 
tenings as those in the defendant's pin. But the claim 
cannot be construed to cover any fastening but a punched- 
out fastening or one that is its equivalent. The defend- 
ant's bent fastenings are not equivalents. They are an 
invention in a new directiou, not based on the plaintifiPs 
idea. As against the plaintiff's pin the defendant's is pat- 
entable and not an infringement of claim 2 of the plaintifiPs 
re-issue. The radical difference between the two pins is that 
the principle of fastening is different in the two, the defend- 
ant's pin dispeusing with all fastenings that are separate from 
the pin itself or that are partly detached parts of the body, as 
fastening devices, separate from the whole body. As an inci- 
dent of the difference in structure, and illustrating it, no two 
portions of the defendant's pin on opposite sides of the shield 
are directly opposite to each other. The parts do not form 
the jaws of a clamp, as in the plaintiff's. The shield is held 
by virtue of the strength of the cross section of the pin and 
not by the clamping action of two directly opposite parts. 
Tlxe bill is dismissed, with costs. 

F. H. Betta and J. Van Santvaord, for the plaintiff. 
J, P. FUchy for the defendant. 



820 CONNECTICUT, 



Brett V. Qoiotard. 



Lizzie Bb^tt and anotheb, Adminibtbatobs of Hsnbt 

A. Wells 

vs. 

Waltsb 0. QuiNTABD, Adhinibtbatob OF Elbbidoe Brown. 

Claim 6 of re-iasDed letters patent No. 2,942, grranted May 19th, 1868, to Elin 
Wella, administratrix of Henry A. Wells, for " improyements in machinery 
for makiog hat bodies of for," is not infringed by the Gill machine. 

Under the deddons in regard to this patent, in Burr t. Duryee, (1 WaH, 681,) 
and in 6W T. WOU, (22 Wall, 1,) the WeUs machine and the Gill machine 
contain two radically different rehicles for the transmissien of for. 

(Before Shipmav, J., Connectioiit, Febraary 18th, 1882.) 

Shipman J. This is a bill in oqaity, originally in favor of 
Eliza Wells, as administratrix of the estate of Henry A« 
Wells, to restrain Elbridge Brown from the infringement, by 
the nse of the *^ Gill machine," of re-issued letters patent of 
May 19th, 1868, No. 2,94:2, for <^ improvements in machinery 
for making hat bodies of fur," commonly known as the ^^ hat- 
body patent." Since the commencement of the snit, the 
plaintiff and defendant have both died. The present plaintiffs 
are the administratrix and the administrator of the estate of 
Henry A. Wells. The defendant is the administrator of the 
estate of Elbridge Brown. 

Under the decree, as directed to be modified, and the 
pleadings in the case, as directed to be amended, the hearing 
was confined to the question of the infringement by the de- 
fendant's intestate of the fifth and sixth claims of re-issue No. 
2,942. I assume that the plaintiffs proved the user of the 
Gill machine by the defendant's intestate. 

The state of the art relating to the manufacture of hat 
bodies of fur, the characteristics of the Wells invention, the 
original Wells patent and its re-issues, the first four claims 
of the last re-issue, the mode of construction of his machine, 



FEBRUARY, 1862. 321 



Brett V. Quintard. 



and the general appearance and the different parts of the Oill 
machine are described either in Burr v. JDuryee, (1 W€Ul.j 
581,) or in GiU v. Wells, (22 Wall., 1.) 

The manufacture of hat bodies bj the deposition of fur 
thrown from a picker upon an exhausted revolving cone was 
old at the date of the Wells invention. It is said in Btitt v. 
Duryee, that "the aim and object of both Wells and Boyden 
was to construct an automatic machine which would distrib- 
ute the fur on the cones so that the bat might be thicker in 
certain portions than on others. This was the defect of for- 
mer machines, which each proposed to remedy. * ♦ * The 
great and peculiar characteristic of the Wells invention is a 
tunnel or chamber, constructed as described. Instead of the 
picker, he used a rotating brush to distribute the fur from the 
feed aprons and throw it forward into the chamber which 
conducted it to the cones. The hinged hood and flap were 
devices to distribute the material in unequal quantities, to 
accomplish the object of making the bat thicker in one part 
than another." The chamber or tunnel is, as is said by the 
patentee in his original patent, " gradually changed in form 
towards the outlet, where it assumes a shape nearly corre- 
sponding to a vertical section passing through the axis of the 
cone, but narrower, for the purpose of concentrating and 
directing the fur thrown by the brush on to the cone." The 
cone is in front of the delivery aperture of the chamber. 

The fifth and sixth claims of reissue No. 2,942 are as 
follows : " 5. The combination of the feed-apron, on which 
the fur fibres can be placed in separate batches, each in 
quantity sufficient to make one hat-body, the rotating brush or 
picker, substantially as described, the rotating pervious cone, 
provided with an exhausting mechanism, and the devices for 
guiding the fur fibres, substantially as described, the com^ 
bination having the mode of operation specified, and for the 
purpose set forth. 6. In combination with the pervious cone, 
provided with an exhausting mechanism, substantially as de^ 
scribed, the covering cloth wet with hot water, substantially 
as and for the purpose specified." 
Vol. XX.— 21 



822 CONNECTICUT, 



Brett V. Qnintard. 



The fifth claim was for the combinatioii of the feed-aproD, 
rotating brush or picker, rotating pervions cone provided 
with an exhausting mechanism, and the trunk or tunnel with 
its hinged hood and flap, made substantially as described. It 
implies that the sides of the trunk are to be united at their 
edges, and that the trunk is a unit, and not a collection of 
separate devices ; but the mere fact that the sides were taken 
apart would not defeat the charge of infringement. .The en- 
graving on page 11 of the 22d of Wallace shows the Gill 
machine, except that the deflectors, which, it is said, regulate 
the deposit of fur upon the band of the hat, are not shown. 
These deflectors consist of blocks of wood fastened to the 
interior wall of the Gill case near the bottom, the upper end 
of the blocks being inwardly and downwardly inclined, and 
forming, in the language of the plaintiffs' expert, ^^ an annu- 
lar deflector which surrounds the cone at a prescribed distance 
from its base." 

In considering the question of infringement of the flfth 
claim, first, upon the theory that the different guiding de- 
vices of the Gill machine are the four sides of the Wells 
trunk, when taken apart, it cannot be denied that the various 
parts of the Gill mechanism perform the o£Sce of guiding 
the fur into the case to a point or points where it can be in- 
fluenced by the exhaust mechanism, and that the deflectors of 
the Gill machine perform the office of concentrating the fur 
upon the different parts of the cone where it is desired that 
the thicker portions of the bat shall be formed ; and it may, 
also, be conceded, that the extensible plate of the Gill ma- 
chine, which receives the fur from the rotating brush, performs 
the office of the top plate of the Wells trunk, with its hood, 
and in substantially the same way. 

The plaintiffs insist that the annular ledges near the bot- 
tom of the Gill case are the equivalent of the hinged flap 
upon the end of the bottom plate of the Wells machine. This 
similarity relates only to the end of the bottom plate. It is 
not claimed that the Gill machine has that portion of the 



FEBRUARY, 1882. 323 



Brett V, Qaintard. 



bottom plate of the Wells machine which is between the 
picker and the hinged flap. 

It is next claimed that the side guides of the two machines 
are the same. The side pieces of the Wells tmnk converge, 
as they approach the cone, both horizontally and vertically, 
and guide the fur in a direction towards the side of the cone ; 
and it is admitted that this convergence may be essential in 
the form in which the Wells machine is organized, as shown 
in the patent ; but it is claimed that the side guides of the 
Gill machine are connected with the top of the case, and that 
the case, with its converging walls, forms a continuation of 
these guides down to the annular deflector inside of the case ; 
and that the " Gill case '' is, in one respect, a " tunnel," which 
confines the fur-bearing current and prevents the lateral es- 
cape of the fur from the influence of the exhaust current, 
and, in that respect, performs, as to the vertical downward 
current of fur, the function which the side guides in the 
Wells machine perform as to the horizontal current of fur in 
that machine. 

The decisions of the Supreme Court in regard to the Wells 
invention and re-issue restrict the invention, as secured by the 
patent, within narrow limits, as compared with those which 
were placed upon the patent at the earlier trials. Bearing in 
mind the limitations which were put upon the re-issue by the 
Supreme Oourt, and that the characteristic of the invention 
is the trunk, with its hood and flap, constructed substantially 
as shown in the drawings, I am of opinion that the attempt to 
make the side boards of the Gill trough and the walls of the 
Gill case to be substantially the same thing with the side 
pieces of the Wells trunk, cannot be successful. In view of 
these limitations, the aid of fancy is now required to convert 
the annular ledges upon the lower part of the Gill case into 
the hinged flap of the Wells trunk. This equivalence cannot 
be found except upon the view which is stated by the plaint- 
iffs' expert to be the one which he entertains, and which is, 
that the end of the lower plate in the Wells machine " is pre- 
sent in any machine where there is a guide so related to the 



824 CONNECTICUT, 



Brett V. Qnintard. 



cone and to the devices bj which the fur-bearing currents are 
set in motion that it governs the quantity of fur supplied to 
the lower part of the side of the cone, and acts in conjunction 
with a non-fur-bearing current which is admitted to the per- 
forations at the base of the cone." 

Neither are the trough and the walls of the hopper and 
the ledges at the bottom of the wall, taken together, the equiv- 
alent of the trunk of the Wells patent. It is true, that each 
structure accomplishes the same result of conveying fur to the 
cone, so as to make a graduated hat body ; but the two con- 
duits are not constructed in the same way. The plan of 
operation in these two sets of devices is not the same. In 
the WoUs machine, all the sides of the trunk co-operate with 
each other to confine the fur-bearing current, to guide it in a 
horizontal direction towards the vertical section of the cone, 
and to deliver it in a shape which conforms to that of such 
section. In the Gill machine, the bottom plate and the side 
guides guide the stream of fur to the upper part of a case or 
hopper of large dimensions, as compared with the cone, and 
then, the course of the fur being changed by the powerfol 
exhaust current, it falls upon all sides of the cone which is 
placed at the bottom of the hopper. There is a guiding and 
directing operation by the plates and deflectors of each ma- 
chine, but the Wells machine gaides directly to the cone, 
while in the Gill machine the current of fur is conveyed in a 
trough, open at the top, to the upper part of a hopper, and, 
thence, restrained and deflected by the converging walls of 
the hopper, it is drawn to the cone by the exhaust. These 
differences are not merely formal, but make two radically 
different vehicles for the transmission of fur, and the reason 
for this dissimilarity of construction is because the respective 
methods by which the fur is driven to the cone are not alike* 
In each machine, the blast and exhaust currents co-operate. It 
is impossible for me to say, in view of the history of the liti- 
gation in regard to these two machines, that the blast current 
in the Gill machine does not aid the exhaust current in direct- 
ing the fibres to the cone. But, I am of opinion, that, after 



FEBRUARY, 1882. 825 



Brett V. QniDtarcL 



the fur is blown into the hopper, the influence of the exhanst 
enrrent, in directing the fur to the cone, is the predominant 
inflaence, and this difference in the mode of operation of the 
two machines compels a difference of construction. 

Upon the question of the infringement of the sixth claim, 
there was naturally a disagreement between counsel upon the 
question whether the case was to be entirely retried. The 
counsel for the plaintiffs, supposing that the user, and the man- 
ner of user, of the wet cloth by the defendant's intestate 
had been sufficiently prored before Judge Woodruff, made 
no formal proof of the manner in which the bat was taken 
from the cone, but simply introduced expert testimony 
that such use was an infringement. I shall assume that the 
method of removing the bat from the cone which is described 
by Professor Trowbridge, the defendant's expert, on page 7 
of the printed testimony, was the method pursued by the 
defendant's intestate. If so, there was infringement of the 
sixth claim. If the defendalit asserts that this was not the 
method which was practiced, he will be at liberty, upon veri- 
fied petition, to open the case and introduce proofs to that 
effect. 

Let there be a decree for the plaintiffs, for an accounting 
in respect to the sixth claim. 

jE iT. Diokersanj for the plaintiffs. 

John jET. Perry and Senry T. Blake^ for the defendant. 



826 SOUTHERN DISTRICT OP NEW YORK, 

Hostetter v. Adams. 



Dayid Hobtetter and George W. Smith 
Samuel R. Adamb and others. In Equity. 

A label on a bottle upheld as a trade-mark, in connection with the size, color, 
shape and material of the bottle, and held to have been infringed. 

The general effect to the eye of an ordinary person aoqaainted with the plaint- 
ifib' bottle and label, and never having seen the defendants' label, and not ex- 
pecting to see it, was, on seeing the defendants', to be misled into thinking it 
was what he had known as the plaintifb*. 

The differences which he would see on having his attention called to them were 
not of such a character as to overcome the resemblances to the eye of a per- 
son expecting to see only the plaintiffs' bottle and label and having no knowl- 
edge of another. 

(Before Blatohtou), J., Southern District of New York, February 18th, 1882.) 

Blatohford, J. The bill alleges that the plaintiffs are, 
and for 27 years or more have been, partners, doing business 
as Hostetter & Smith, and during that time engaged in 
making and selling a medicine known as ^^ Hostetter's Cele- 
brated Stomach Bitters '' ; that they have the sole ownership 
of the good will, labels or trade-marks of said bitters ; that 
said bitters have acquired a reputation as a safe and valuable 
medicine ; that, in order to designate said bitters as of their own 
compounding, and as genuine, and to prevent fraud by having 
spurious bitters sold as and for the genuine, they from the b^in- 
ning devised certain labels, tokens or trade-marks, and a cer- 
tain manner of putting up said bitters, placing them upon the 
market in a style different from that in use by manufacturers 
or dealers in like articles, and that they have adhered to said 
style up to the present time ; that said bitters are placed by 
them in square bottles, of uniform size, known as No. 6, con- 
taining about one and a-half pints, and having blown therein 
the name '^ Dr. J. Hostetter's Stomach Bitters," and upon 



FEBRUARY, 1882. 32T 



Hofltetter v. Adams. 



these bottles they cause to be pasted labels or trade-marks, and 
the bottles then have revenne stamps put on them, and are 
packed in sqnare boxes, each box containing a dozen bottles, 
and so boxed are sold to dealers; that the defendants are 
making and selling a spurious and inferior article of bitters, 
prepared in imitation of and intended to be sold as and for the 
genuine Hostetter's Celebrated Stomach Bitters of the plaint- 
iff' own manufacture, and calculated to deceive the public and 
consumers, and to enable the defendants to reap the profits of the 
reputation of the genuine bitters, and to injure the reputation 
and sale of them ; that, with like intent, the defendants have 
printed a false label or trade-mark, in imitation of, and closely 
resembling, one of the plaintiffs' labels, said false label being 
well calculated to mislead and deceive customers and con- 
sumers of the genuine bitters ; and that the defendants use 
the bottles of the plaintiffs, from which the genuine bitters 
have been used, and pack them in the same manner, in cases 
of the same shape, one dozen bottles in each case, in which 
manner they are sold. The bill prays for an injunction re- 
straining the defendants from using said spurious label and 
for other proper relief. The case has been heard on pleadings 
and proofs. 

The plaintiffs' bottle is of dark glass, and has a four-sided 
body, the sides being of equal size and the faces rectangular. 
On one side is an engraved label with a white body. This 
label is substantially as long and as wide as the face of the 
bottle. Kear the top, in four lines, in black, are the words, 
^* Hostetter's Celebrated Stomach Bitters," one word in each 
line. The third and fourth lines have letters of the same size 
and character, larger than the letters in the first and second 
lines. The letters in the first line are larger than those in the 
second line, and of a different character from them and from 
those in the third and fourth lines. The letters in the first 
line and those in the fourth line each of them form a curve, 
the convexity of which is upward. The second and the third 
lines are horizontal. The letters in the first, third and fourth 
lines are shaded. Underneath the fourth line is a horse without 



328 SOUTHERN DISTRICT OF NEW YORE, 

Hostetter v, Adama. 

hamees, yaulting in the air, towards the left, with his hind 
feet on the ground and his fore feet in the air, mounted on 
his bare-back by a naked man, with a helmet on, and a flying 
robe over his right arm, and in his two hands a spear witli 
which he is striking at a dragon below him, on his left The 
open mouth of the dragon is near the left knee of the rider 
and the point of the spear is just above that knee. The body 
of the dragon passes under the horse and his tail comes around 
the right hind leg of the horse and nearly reaches the body 
again. In a fore paw of the dragon near the end of his tail 
appears to be a piece broken off from the head of the spear. 
The horse has a flying mane and a sweeping taiL The horse, 
man and dragon are dark on a white ground. Below them is 
a shield commencing at a little below the middle of the length 
of the label. The shield has a dark ground. On it are letters 
printed in white. There are 16 lines of letters. Lines L, 2, 
4, 7, 8, 9, 10, 12, 13, 14 and 15 are the same size of type. 
The reading of the 16 lines, divided into lines, is this : 1 ^^ The 
best evidence of the merit of an article is " 2 ^* the disposition to 
produce counterfeits " 3 *'^ and we regard it as '' 4 ^^ the strongest 
testimony to the value of " 6 " Hostetter's " 6 " Celebrated 
Stomach Bitters" 7 ^^ that attempts of that description have " 
8 "been frequent. A due consideration of 9 " the public 
welfare has induced us to " 10 ^' obtain a fine engraving of 
which " 11 " this is a fac simile " 12 '^ and to append our note 
of" 18 " hand which cannot be " 14 " counterfeited without" 
15 " the perpetration " 16 " of a felony." The word " and " 
and the word ^' as " in line 3 are smaller than the other letters. 
The words ^' we regard it " in line 3, and also lines 5, 6, 11 and 
16, are on a black ground, darker than the rest of the ground, 
aud the letters are somewhat larger than the rest. All the 
letters in the shield are capitals. The line of the top of the 
shield consists of two curves of equal length starting from an 
apex in the middle of the width and concave upwards, and 
having a imiform sweep, and alike, and rising each to a point 
as high as the starting point, and each then falling off by a short 
concave upwards curve to a point. Then the two sides of the 



FEBRUARY, 1882. 329 



Hostetter v. Adams. 



shield sweep around downward by equal enrves to the centre 
of the width of the label and the lower point of the Bhield, 
completing the outline of the shield. The space on each side 
between the outer edge of the shield and a border around the 
label and a horizontal line running across at the lower point 
of the shield is filled in with engraved work, of waving ir- 
regular figures. Underneath the shield, in a parallelogram, is 
a promissory note for one cent, payable to bearer, on demand, 
signed ^^ Hostetter & Smith.'' In the middle of the width of 
the upper part of the note is a small circle, having in it the 
head and bust of an aged man with a long white beard. 
There is a border around the whole label. 

The defendants' bottle is of the same size, color, shape and 
material as the plaintiffs', and many of the defendants' bottles 
are old bottles of the plaintififs' with the name ^' Hostetter " 
blown in the glass. The side which has that name on it is 
covered by the defendants' label. The defendants buy such 
old bottles when empty, which the plaintiffs have sold in the 
market with bitters in. On one side is an engraved label with 
a white body. This label is substantially as long and as wide 
as the face of the bottle, and is of the same size as the 
plaintiffs' label. Near the top, in four lines, in black, are the 
words "Clayton & Russell's Celebrated Stomach Bitters," 
one word in each line. The third and fourth lines have letters 
of the same size and character, larger than the letters in the 
first and second lines. The letters in the first line are larger 
than those in the second line, and of a different character from 
them and from those in the third and fourth lines. The let- 
ters in the first line and those in the fourth line each of them 
form a curve, the convexity of which is upward. The second 
and third lines are horizontal. The letters in the first, third 
and fourth lines are shaded. The appearance presented by 
those four lines as to the size and character and shading of 
the letters in the corresponding lines, and as to ornamentation 
in flourishes and dashes, is identical with the appearance pre- 
sented by the corresponding four lines in the plaintiffs' label 
as to the same particulars, except the difference resulting from 



830 SOUTHERN DISTRICT OP NEW YORK, 

Hofftetter v. Adams. 

stibBtituting the words *• Clayton & Russell's " for the word 
" Hostetter's." Underneath the fourth line is a horse, with 
harness and caparison and saddle upon him, vaulting in the air, 
towards the right, with his hind feet on the ground and his 
fore feet in the air, mounted by a man with clothing on his 
trunk and feet, and a helmet with wings on his head, and in 
his right hand a spear with which he is striking at a scorpion 
on the ground in front of him. The horse has a sweeping 
tail. The horse, man and scorpion are dark on a white ground. 
They and the four lines above them occupy respectively the 
same space up and down as the corresponding parts in the 
plaintiffs' label. Below them, commencing at the same point 
as in the plaintiff's, is a shield, which has a dark ground, with 
letters printed on it in white. There are 15 lines. The lines 
are all the same size of type, and the size of type in line 1 in 
the plaintiffs'. The reading of the 15 lines, divided into 
lines, is this : 1 " The bitters of Clayton & Russell will be " 
2 " found a highly aromatic liquid and en- " 3 *' tirely free 
from injurious substances." 4 ^' One wineglassful taken three 
times " 6 " a day before meals will be a swift " 6 " and certain 
cure for dyspepsia a" 7 "mild and safe invigorant for 
delica--' 8 "te females a good tonic preparation" 9 "for 
ordinary family purposes, a " 10 " powerful recuperant after 
the " 11 " frame has been reduced by " 12 " sickness an ex- 
cellent app-" 13 "etizer and an agreeable" 14 "and 
wholesome " 15 " stimulant." All the letters in the shield are 
capitals. The line of the top of the shield is made up of 
four curves and corresponds in all respects with the line of 
the top of the shield in the plaintiffs'. The shield is the same 
size and shape as the plaintiffs' and has a corresponding space 
on each side, filled in with engraved work, waving in charac- 
ter, though larger in detail than in the plainti&'. The lower 
point of the shield comes down to the same point as in the 
plaintiffs'. Underneath the shield, in a parallelogram, are the 
words : " Venders do not require a T«iquor Dealer's License, 
being a Medicinal Compound." There is a border around the 
whole label, of about the same width as in the plaintiffs', 



FEBRUARY, 1882. 381 



HoBtetter v. Adame. 



though of a different character. There is a narrow space of 
white in the defendants' all aronnd the lower parallelogram, 
and the side lines of white are carried np on each side to the 
top of the shield, and then continue down aronnd the outer 
edges of the shield, differing in these respects from the 
plaintiffs'. The words beginning with " One wineglassful " 
to the end at *' stimulant " are found in a label of gold letters 
printed on a bronzed ground, which is on another face of the 
plaintiffs' bottle. 

It is shown that there are no such persons as Clayton & 
Bussell ; and that the defendants' label was prepared from 
the plaintiffs', by intentionally making the parts in it which 
are like corresponding parts in the plaintiffs' to be so like. It 
is plain that it is a copy from the plaintiffs' by design. Varia- 
tions are made of such a character as to be capable of discern- 
ment and description. But the general effect to the eye of an 
ordinary person acquainted with the plaintiffs' bottle and label, 
and never having seen the defendants' label and not expect- 
ing to see it, must be, on seeing the defendants', to be misled 
into thinking it is what he has known as the plaintiffs'. The 
size, color and shape of the bottle, the four lines of letters 
at the top of the label being as to the three lower ones 
identical and as to the upper one differing only in the name, 
the general effect of the horse and his rider, the size and shape 
and color of the shield, the white letters in it and their size 
and arrangement in lines contracting in length towards the 
lower point of the shield, the whole in black on a white 
ground, an(} the border, give an aflirmative resemblance calcu- 
lated to deceive an ordinary observer and purchaser, having 
no cause to use more than ordinary caution, and make him be- 
lieve he has before him something which he has before seen 
on the plaintiffs' bottle and expects to find on the bottle he 
is looking at. The differences which he would see on having 
his attention called to them are not of such a character as to 
overcome the resemblances to the eye of a person expecting 
to see only the plaintiffs' bottle and label and having no 



832 SOUTHERN DISTRICT OF NEW YORK, 

Hostetter v, Adams. 

knowledge of another. The testimony to the above effect is 
of great strength. 

The plaintiffs have no exclnsive right to make the bitters. 
Their trade-mark is not in the words ^^ Celebrated Stomach 
Bitters," nor have they any exdnsive right to a bottle of the 
size, shape and color of the one which they nse. Bnt the en- 
tire style of their bottle and label, of which those words form 
a part, is, in connection with the other particulars above men- 
tioned in which the defendants' bottle and label are like theirs, 
the mark of their trade. ( Williams v. Johnson ^ 2 Bosworthy 
1 ; McLean v. Fleming^ 6 Otto^ 246 ; Frese v. Bachofj 14 
Blatchf. 0. C. jff., 482 ; Colman v. Crvmp, 70 N. T., 673 ; 
Morgan^ s Sons Co. v. TroxeU^ 23 JTun, 632, and Goafs Man- 
ualy Case 674 ; Sawyer v. Horny Id.y Case 667 ; Mitchdl v. 
Benryy 15 Ch. Div., 181.) 

The evidence as to transactions after the filing of the bill 
is admissible. It comes in not to show infringement but to 
characterize the practical use of the subject-matter of the suit 
The objection as to the recalling of witnesses is overruled. 

The plaintiffs are entitled to an injunction and to a refer- 
ence to a master to take an account of profits and to the costs 
of the suit. 

A. H. Clarke^ W. W. Goodrich and ./. Watsonj for the 
plaintiffs. 

W. S. Amoux and A. Duicher^ for the defendants. 



FEBRUABT, 1882. 833 



Ires <fc Miller v. The Hartford Spring and Axle Co. 



Ives & Milleb 

vs. 

This Habtfobd SpBiNa akd Axle Oompant. In Equttt. 

Be488Qed letters patent^ No. 8,179, granted liay 20th, 1B19, to lyes A Miller, aa 
aaaignees of Welcome C. Tucker, for an improrement in wagon haba, the 
original patent having been granted September 10th, 1867, and letters patent 
granted te Willis E. Miller, Febmary 12th, 1878, for an improyement in car- 
riage axles, are not infringed by carriage axles made under letters patent 
granted to Ellsworth D. Ires, June 10th, 1879, and NoTember 2d, 1880. 

Unless the general language of said re-issue is construed in accordance with the 
sUte of the art and with the limitations of the original patent in regard to the 
form of the flanges, the re-issue is broader than the inyention, and includes 
deyices different from those which were intended to be the subject of the 
original patent 

(Before Sbcpman, J., Connecticut, February 18th, 1882.) 

Shipman, J. This is a bill in equity to restrain the defend- 
ant from the alleged infringement of re-issaed letters patent, 
No. 8,179, issued May 20th, 1879, to the plaintijSs, as assignees 
of Welcome 0. Tucker, for an improvement in wagon hubs, 
and also from the infringement of letters patent granted to 
Willis E. Miller, February 12th, 1878, for an improvement in 
carriage axles. The original Tucker patent was issued on 
September 10th, 1867. The defendant is manufacturing car- 
riage axles under letters patent granted to Ellsworth D. Ives 
on June 10th, 1879, and on November 2d, 1880. 

The invention of Tucker, as secured by his original pat- 
ent, related to an improvement in wagon hubs made of iron 
or other suitable metal. It consisted, in the language of the 
specification, " in connecting the hub with the axle by cup 
flanges, and securing the hub on the axle with a cup-flanged nut, 
in such manner that the bearing of the axle shall be entirely 
closed at both ends, to retain the oil and exclude dust and 
dirt." The improvement also included ^^ an arrangement of 



334 CONNECTICUT, 



Ives A MUler v. The Hartford Spring and Axle Co. 



adjustable collars for secaring the wheel to the hub by a firm 
attachment." The conBtmction of the flanges upon the hnb 
and axle is described with sufficient accaracj in the second 
claim of the re-issue, which is hereafter quoted. The claims 
were as follows : ^^ 1. The cup flanges c c, on the back and 
front ends of the wagon hub B, upon which are fitted the cor- 
responding fianges a on the axle A, and n on the nut d, as 
herein shown and described. 2. In combination with the 
above I claim the stationary collar m and the adjustable col- 
lar mf on the hub B, combined and arranged as and for the 
purpose specified." The fianges and the collars were dis- 
tinct improvements. It was feared that the language of the 
first claim limited the cup flanges to those on the hub B, and 
thus improperly limited the invention to a combination of 
flanges and collars. A re-issue was obtained, in which the 
claims were as follows : ^^ 1. The axle-arm, on which the 
wheel takes its bearing, with the shoulder at its inner end, 
and the flange projecting forward from the shoulder parallel 
with and concentric to the arm, all made as a part of the axle, 
combined with the box fitting said arm and constructed to 
enter beneath said fiange, and with a concentric recess corre- 
sponding to and so as to inclose said fiange at the shoulder of the 
axle-arm, substantially as described. 2. The combination of. 
the box constructed with a cup-shaped fiange at the outer and 
inner ends, the axle with a cup-shaped fiange at the shoulder, 
and so as to be inclosed by the cup-shaped fiange on the box, 
the nut constructed with a cup-shaped fiange, the correspond- 
ing cup-shaped fiange on the box, inclosing the fiange of the 
nut, a stationary collar, m, and adjustable collar, m, and so as 
to inclose the wood centre of the wheel, substantially as de- 
scribed." Infringement of the first claim only is alleged. 

It will be perceived, that, in the claims of the re-issue, the 
word " box " is substituted for the word " hub " in the claims of 
the original patent. Axle-boxes are '^ bushings for hubs. Their 
duty is to take the wear incident to revolving on the spindle 
of the axle." {Knighfs Mechcmical Dictionary,) The 
original specification described an iron bub. The plaintiffs 



FEBRUARY, 1882. 885 



Ives A Miller o. The Hartford Spring and Axle Go. 

now desire to avail themselves of the distinction between hub 
and box, and to claim that the Tucker inveution consisted, in 
part, in a peculiar construction of box, as distinguished from 
the same construction in a wooden hub inclosing a straight 
iron tube or box. In my opinion, the re-issue does not make 
a box, as distinguished from a hub, a characteristic feature of 
the invention. 

In the next place, the flanges at the outer end of the hub 
disappear from the first claim of the re-issue. It is said by 
the plaintiffs that the application of the flanges to both ends 
of the hub is a mere duplication of the invention, and that 
this mode of construction, while practicable when applied to 
a hub which had adjustable collars, could not be used in con- 
nection with the ordinary methods of fastening the wheel to 
the hub. I assume that this change does not introduce the 
device of new matter into the re-issue. 

It will be perceived, from this statement, that the inven- 
tion, as secured by the original patent, was a narrow one. An 
examination into the state of the art shows that the actual in- 
vention was also a very narrow one, and that, unless the gen- 
eral language of the re-issue is construed in accordance with 
the state of the art and with the limitations of the original 
patent in regard to the form of the flanges, the re-issue will 
be broader than the invention, and will include devices quite 
different from those which were intended to be the subject of 
the original patent. 

Interfitting or intermeshing flanges and recesses upon an 
axle and hub were uot only old, but the flanges and recesses of 
Tucker were old at the date of his invention. They are 
found in the patent to R. W. McClelland, of October 12th, 
1858; but, in his axle, the wheel bears wholly upon the 
flanges at each end of the hub, whereas, in the Tucker axle, 
*' the box flts the axle-arm throughout its entire length." 

In the patent to John W. Crannell, of July 15th, 1862, 
the flanges and recesses are the same as in the Tucker patent. 
The differences in construction are that the recess, which in 
the Tucker device is at the end of the so-called " box," is, in 



886 CONNECTICUT, 



lyes A Miller v. The Hartford Spring and Axle Co. 



the Crannell axle, on the end of the wooden hub ontside of 
the iron lining, and the flanged collar is not an integral part 
of the axle, bnt is secared to it. In the Tucker re-issne, the 
latter difference is pointed ont in the clause, (referring to the 
arm, shoulder and flange,) ^^ all made as a part of the axle." 

The inyention of Tucker, so far as it relates to the flanges, 
consisted in putting the cup-shaped recess of Crannell upon 
an iron hub or box, instead of upon a wooden hub, and in 
making the axle arm and its flange in one piece instead of in 
separate pieces. The character and extent of the invention 
is dearly shown in the following extract from the decision of 
the Acting Commissioner of Patents upon the plaintiffs' appeal 
from the Board of Examiners' rejection of the application for 
a re-issue, ^^Applicant's claims are as follows: I^zrgt. The 
combination of the axle-arm on which the wheel takes its 
bearing, shoulder at the inner end of said arm, a flange pro- 
jecting forward from the shoulder, parallel with and concen- 
tric to the axle, a box fitting said arm and extending beneath 
said flange at the shoulder, and a concentric recess in the box 
to receive said flange, formed by a concentric flange extend- 
ing from the rear end of the box, over, and so as to inclose, 
said flange, at the shoulder of the axle-arm, substantially as 
described. * * ♦ One of the references, the patent of 
John W. Crannell, of July 15th, 1862, for an improved axle, 
shows and describes a structure so nearly like applicant's in 
form and operation, as covered by his first and second claims, 
that the differences can be described by the mention alone of 
the superiority of applicant's device in the matter of mechani- 
cal construction. As the Board of £xaminers-in-Chief in 
their decision remark, ^ Crannell's ' patent is much the closer 
anticipation, having the same configuration of flanges for the 
same precautionary purpose. Applicant's device is, however, 
mechanically superior as a whole, in that his hub, axle, 
shoulder and nut, with their entering flanges, are all made of 
similar material, admitting of machine fitting, and thus ena- 
bling the present application to dispense with the packing 
which Crannell, with his fitting of wood upon iron, is obliged 
to resort to. If these superior mechanical qualities constitute 



FEBRUARY, 1882. 337 



Ivea A Miller v. The Hartford Spring aod Axle Co. 

a patentable invention, it cannot receive protection by the 
present first and second claims, which do not rest upon those 
qualities, bnt cover a structure not only like CranneU's but 
which, in terms, also include the patent of McClelland, No. 
21,766, of October 12th, 1858." The first claim of the re- 
issue was thereupon substituted for the rejected first claim, 
and the application was granted. 

The plaintiffs' re-issue rests upon the superior mechanical 
method in which the patentee constructed CranneU's hub, axle 
and shoulder, with their fianges and recesses. It is limited to 
the cup-shaped flanges and recesses of the original patent, and 
cannot be enlarged to take in any shape of concentric flange 
on the shoulder, and a correspondingly shaped concentric re- 
cess in the hub, to inclose the flange, although the device has 
all the other requisites described in the first claim. 

The defendant's device has a conical or concave recess in 
the shoulder or collar on the axle and a corresponding convex 
or conical projection on the box or hub. Its flanges and re- 
cesses are not cup-shaped. The Crannell intermeshing 
flanges contain four angles. The defendant's device contains 
but two, and is a simpler piece of mechanism. 

The Miller patent is for an improvement on the Tucker 
axle. The claim is for ^^ the combination of an axle-arm the 
collar of which is constructed with a flange projecting forward 
parallel with the axis, and a box' constructed with a groove 
corresponding to said flange, and so as to extend over the said 
collar, with an annular recess between the said collar and the 
box, substantially as described." The defendant has a groove 
between the collar and the box. If the Miller claim is to be 
construed as the addition of the annular recess to the Tucker 
device there is no infringement. If the claim is for the de- 
vice as broadly as it is described, the invention was antici- 
pated by the McClelland axle. 

Let the bill be dismissed. 



John Kimberly Beach^ for the plaintiffs. 
William E. Simonda^ for the defendant. 



Vol. XX.— 22 



888 NORTHERN DISTRICT OF NEW YORK, 

Robinson v. The New York Central and Hudson Riyer Ridlroad Company. 



Thomas Eobinson 



vs. 



The New Yobk Central and Hudson Eiveb Railroad 

Company. 

R., a passenger on a railroad car, was iDJored by the explosion of the boUer of 
the locomotlTe used to pnsh the train, and saed the railroad company for 
negligence. At the trial he rested by proving the explosion. The em- 
ployees of the defendant testified to dne care in managing the boiler at the 
time of the explosion, that the boiler bad recently been repaired and tested 
and found safe, and that the explosion resulted from a hidden flaw in the iron 
of the boiler, which could not be seen. The jury were instructed that they 
might infer negligence, upon the theory that the explosion would not haye 
taken place unless the boiler had been in a defective condition, or unless there 
had been some omiasiob or mismanagement on the part of those in charge of 
it at the time : Held, no error. 

The jury were also instructed, that it was incumbent on the defendant, as 
a passenger carrier, to see to it, by every test recognized as necessary by ex- 
perts, that the boiler was in a safe condition, but that it was not liable for a 
defect which could not be discovered by such tests : Held, no error. 

As the testimony to rebut the presumption of negligence proceeded from per- 
sons who would be guilty of a criminal fault unless they vindicated them- 
selves from such presumption, a question of credibility was presented for the 
jury, and they might disregard such testimony. 

(Before Wallaob, J., Northern District of New York, February ISth, 1882.) 

"Wallace, J. The plaintiff, while upon one of the defend- 
ant's cars, as a passenger, in June, 1878, was injured by the 
explosion of the boiler of the defendant's locomotive, which 
was being used to push the train out of the yard, and 
brought this action on the ground of negligence, to recover 
for his injuries. Upon the issue of negligence the plaintiff 
rested his case by proving the explosion. The defendant pro- 
duced its employees, who testified to the exercise of due care 
in the management of the boiler at the time of the explosion, 
and who also testified that the boiler had been recently over- 



FEBRUARY, 1882. 339 



Robinson v. The New York Central and Hndson River Railroad Company. 

hauled, repaired and tested and fonnd safe, and that the ex- 
plosion resulted from a hidden flaw in the iron of the boiler, 
which could not be seen. 

The jury were instructed, that they might infer negli- 
gence, upon the theory that the explosion would not have 
taken place unless the boiler had been in a defective condi- 
tion, or unless there had been some omission or mismanage- 
ment on the part of those in charge of it at the time. They 
were also instructed, that it Was incumbent upon the defend- 
ant, as a passenger carrier, to see to it by every test recognized 
as necessary by experts, that the boiler was in a safe condition, 
but that the defendant was not liable for a defect which could 
not be discovered by such tests. 

The first instruction is not criticised. It is elementary, 
that, in actions for negligence, if the plaintiff proves he has 
been injured by an act of the defendant, of such a nature 
that, in similar cases, where due care .has been taken, no 
injury is known to ensue, he raises a presumption against the 
defendant which the latter must rebut. 

The other instructions were strictly correct. The jury 
were not told that the defendant was required to adopt every 
test known to experts to ascertain the safe condition of the 
boiler. If this instruction had been given, according to some 
of the authorities, it would not have been erroneous. It has 
been frequently declared that the carrier of passengers con- 
tracts for their safety as far as human care and foresight can 
go, {Siokea v. SaUonstaU^ 13 Peters, 181 ; Penn. Co. v. Ray, 
102 U. S., 451,) and must adopt all the precautions which 
have been practically tested and are known to be of value, 
and employ all the skill which is possessed by men whose serv- 
ices it is practicable for the carrier to secure. {Smith v. iV. 
T. d: S. R. R. Co., 19 If. T., 127.) But the instruction was, 
that the defendant was not exculpated if the defect could 
have been discovered by the application of all tests recog^ 
nized by experts as necessary. It surely would not express 
the true extent of the carrier's liability to say that the carrier 
is exonerated if the defect could not be discovered by the ap- 



340 NORTHERN DISTRICT OP NEW YORK, 

Robinson v. The New York Central and Hndson River Railroad Company. 

plication of some of the tests which experts recof^ize as nec- 
essary. If there was any test recognized as necessary which 
was not applied, the carrier failed to comply with its obliga- 
tion. Of course, it was not the suggestion of the instmction 
that it is the duty of the carrier to adopt all such speculative 
and theoretical precautions as might be thought necessary by 
experts; and the instructions are not impugned upon this 
ground. The precautions referred to were those recognized 
as necessary by men of practical experience in the testing of 
steam boilers. 

The more doubtful question presented by the motion for 
a new trial is, whether the jury were justified in disregard- 
ing the evidence given by the defendant to overthrow the 
presumption established by the fact of the explosion. It is, 
doubtless, the general rule, that, where unimpeached witnesses 
testify distinctly and positively to facts which are uncontra- 
dicted, their testimony suflSces to overcome a mere presump- 
tion. But when, as here, the testimony proceeds from per- 
sons who would be guilty of a criminal fault unless they 
vindicated themselves from the presumption arising from the 
transaction, a question of credibility is presented for the 
jury. {Elwood v. The Western (Jnion Tel. Co.^ 45 N. JT., 
649.) The Court might not feel concluded by this considera- 
tion on a motion for a new trial, but it would not feel at 
liberty to set aside the verdict unless so clearly convinced that 
the witnesses were entitled to full credit, as to be satisfied that 
the jury were controlled by their prejudices rather than by 
their impartial judgment. This is not such a case. Although 
the witnesses who tested the boiler claimed to have made an 
adequate and thorough test, when it appeared that this con- 
sisted simply in firing up the engine, when the repairs on the 
boiler were made, until the gauge indicated the steam pressure 
attained in ordinary use, a fair inference arose adverse to the 
theory of a very careful experiment. 

The motion for a new trial is denied. 

Amasa J, Parker and Ed/win Cauntrymany for the plaintiff. 
Matthew Hale^ for the defendant. 



FEBRUARY, 1882. 341 



The Albany City National Bank v. Maher. 



The Albany City National Bank 

"William J. Maher, Beceiysb of Taxes of the City of 

Albany. In Equity. 

The Act of the Legislature of New York, {Chap. 211, Laws of 1881, p. 882,) 
purporting to validate certain assessmentB on shareholders in National and 
State banks in the city of Albany, is void, because it denies the shareholders 
a right to be heard, and makes a legialatiye assessment of a tax upon them 
withont apportionment or equality, as between them and the general class 
out of which they are selected, or as between themselyes. 

No tender of any sum for a tax is necessary in' the case of a void assessment. 

The shareholders having a right to sue the bank if it pays the tax or withholds 
their dividends, the bank can sue to enjoin the collection of the tax. 

(Before Wallaok, J., Northern District of Now York, February 18th, 1882.) 

Wallace, J. It was decided upon the motion for a 
preliminary injunction herein, (19 Blatohf, C. C, H., 175,) 
that the assessment against the shareholders of the com- 
plainant was void becanse the assessors did not comply with 
the provisions of the statute intended to afford taxpayers an 
opportunity for the examination and correction of their 
assessments, which were a condition precedent to the legality 
of the assessments. Since that decision an Act of the Legis- 
lature has been passed designed to cure the invalidity of the 
assessment and that Act is now relied upon as a defence to 
the action. {Chap. 271, Laws of 1881, p, 382.) That Act 
declares, that the amounts of all assessments attempted to be 
levied, and taxes imposed, upon the shareholders in National 
and State Banks in the city of Albany, during the year 1880, 
as the same now appear of record in the assessment roll of 
the sixth ward in said city, and now in the hands of the 
receiver of taxes therein, are hereby assessed and levied upon 
such shareholders whose names now appear in said assessment 



342 NORTHERN DISTRICT OF NEW YORK, 

The Albany City Natioiuil Bank v. Maher. 

roll as assessed upon their bank shares. It further declares, 
that the time limited for any party aggrieved to procure a 
writ of certiorari to review such assessment upon the ground 
that it is unequal, in that the assessment has been made at a 
higher proportionate valuation than other property on the 
same roll by the same officers, and that the petitioner is or 
will be injured by such alleged unequal assessment, pursuant 
to chapter 269 of the Laws of 1880, shall not be deemed to 
have expired until fifteen days after the Act becomes a law. 

With great reluctance this Act must be declared in excess 
of the legislative power. The almost unlimited power of the 
Legislature over taxation has always been acknowledged by the 
Courts, but this Act is an unprecedented exercise of that 
power. It will not be contended that the Legislature can 
sanction retroactively such proceedings in the assessment of 
a tax as it could not have sanctioned in advance. This 
assessment was void because the persons subjected to it were 
deprived of notice and thereby lost the opportunity to be 
relieved, in whole or in part from the payment of the tax. 
The curative Act perpetuates the vice which was originally 
fatal to the assessment. It denies to the shareholders the 
right to be heard. It does indeed permit a review by certich 
ra/ri^ but the shareholders are limited to a review upon the 
single ground that the assessment is at a higher proportionate 
valuation than other property on the same roll by the same 
officers. They are not allowed to challenge the assessment 
upon the ground of overvaluation generally, or to show that 
they should have been allowed deductions which the laws of 
the State allow to other taxpayers, or to show that they were 
not in fact the owners of the property for which they were 
assessed. It is, in effect, a legislative assessment of a tax 
upon a body of individuals selected out of a general class, 
without apportionment or equality as between them and the 
general class, or as between themselves, and without giving 
them any opportunity to be heard. The Legislature cannot 
impose the whole burden of the State, or of a single taxing 
district, upon a portion of the property owners of the district. 



FEBRUARY, 1882. 343 



The Albany City National Bank v. Maher. 



^' It is of the very essence of taxation that it be levied with 
equality and uniformity and, to this end, that there should 
be some system of apportionment." {Cool&f^a C(mst. LimitOr 
iiona^ 496.) This assessment derives no support from the 
fact that the tax was ori^nally levied upon all other property 
holders by a system of apportionment which secared uniform- 
ity and equality, because these shareholders were excluded 
from the benefits of that system and are still excluded. They 
are singled out and each assessed an arbitrary sum, upon the 
assumption that each is taxable for a given amount of prop - 
erty and that such sum represents his share of the common 
bijrden, while they are denied the right given to all others, 
of obtaining the deductions and corrections allowed by the 
general system of assessment. As is said in SttM/rt v. Palm- 
er^ (74 N. Y.y 183,) " it matters not, upon the question of the 
constitutionality of such a law, that the assessment has in fact 
been fairly apportioned. The constitutional validity of the 
law is to be tested, not by what has been done under it, but 
by what may, by its authority, be done." {Early J.^p. 188.) 
It may be that the tax assessed against the shareholders of 
complainant is no more onerous than they were required to 
bear, but this fact does not affect the question of legislative 
power and cannot give validity to the Act. 

Entertaining these views, it is unnecessary to discuss the 
other objections which have been urged to the original assess- 
ment and to the invalidity of the curative Act. 

As the original assessment was void and has not been 
validated, there was no necessity for a tender, on the part of 
the shareholders, of such sum as might be equitably due on 
account of their taxes. The cases in which a tender has been 
required were those where there was an excessive, as distin- 
guished from a void, assessment. (National Bank v. Kimr 
baU, 103 U. S.f 732; Oummings v. JfaU. Bank, 101 U. S.j 
153.) 

It is urged as a reason for denying the relief claimed, that 
the proofs fail to show that the shareholders of complainant 
have any intention to institute suits against the complainant 



344 NORTHERN DISTRICT OF NEW YORK, 



McCall V. The Town of Hancock. 



if it pays the tax or withholds their dividends* It suffices, 
however, that they have the right to sue the bank. The 
complainant is placed in a position where it is subjected to 
the contingency of a multiplicity of suits by the several 
shareholders, on the one hand, if it recognizes the validity 
of the tax and withholds the dividends, and by the city 
authorities, on the other hand, if it refuses to do so. 

A decree is ordered restraining the defendant from all 
proceedings to enforce the tax as against the complainant. 

Amaaa J. Parker^ for the plaintiff. 

Rufvs W, Peckkam^ for the defendant. 



John B. McCall vs. The Town of Hanoook. 

The plaiDtiif purchased coapons from muoicipal bonds, at the suggestion of 
those who formerly owned them, with a view to collecting them in tills Gottrt, 
when it was supposed a recoyery could not be obtained apon them in the 
State Courts. The former owners guaranteed the collection of the coupons. 
The plaintiff was protected from costs if he was defeated, and he was not to 
pay for the coupons until two years and a half alter the time of the purchase : 
Htld, that he could maintain a suit against the town on the coupons, being 
the owner of them, and that his intent in acquiring them was immaterial. 

This Court held, in FooU t. Tbtm of Hanoock, (16 Blatekf C. C. R, 843,) that a 
hcnafide holder of coupons from bonds issued by the town of Hancock could 
recover on them notwithstanding the irregularities which took place in the 
issuing of the bonds. Afterwards, the Court of Appeals of New York, in 
Cafftoin y. Town of Hancock, (84 N. Y., 632,) decided to the contrary : Held^ 
that that decision of the State Court not haying been made at the time the 
bonds were issued, and before tiie rights of purchasers had arisen, this Court 
was not bound to follow it. 

The case of Town of Venice y. Murdoch, (92 U, 8,, 494,) is controlling upon 
this Court in reference to the bonds of the town of Hancock, those bonds hay- 



FEBRUARY, 1882. 345 



McCall V. The Town of Hancock. 



ing been iasaed tinder a stotnte which authorized the commissioners of the 
town to issue the bonds only on the assent of a majority of the tazables, and 
which declared that the fact that such majority had been obtained should be 
" prored " by the affidavit of one of the assessors of the town. 
The plaintiff is entitled to judgment although he failed to show that the requi- 
site number of taxables had assented to the issuing of the bonds. 

(Before Wallacx, J., Northern District of New Tork, February 18th, 1882.) 

Wallace, J. The evidence shows, what so frequently 
appears in actions upon coupons and municipal bonds, that the 
plaintiff purchased the coupons at the suggestion of those 
who formerly owned them, with a view to collecting them in 
this Court, when it was supposed a recovery could not be ob- 
tained upon them in the State Courts. By the terms of the 
purchase, the former owners guajranty the collection of the 
coupons. The plaintiff is protected from costs if he is de- 
feated, and it may be conjectured, from the fact that he is not 
to pay for the coupons until two years and a half after the 
time of purchase, that it was intended by the parties he should 
not pay for them at all, if, in the meantime, the suit which 
he should bring should be decided adversely to him. Never- 
theless, under the repeated decisions of this Court, as the 
plaintiff is the owner of the coupons, he can maintain this ac- 
tion, and his intent in acquiring them is immaterial. {McJJon- 
aid V. Smdlley^ 1 PeterSy 620 ; Ba/mey v. Baltimore City^ 6 
TToM., ?80 ; Oalorns v. BrooUyn City R. R. Co., 5 Blatchf. 
C. C. R.^ 366.) He is the real party in interest and that suf- 
fices. {AUen V. Brown, 44 N. Y,, 228.) 

It has heretofore been held by this Court, that a honafde 
holder of these coupons is entitled to recover thereon not- 
withstanding the irregularities which took place in the issuing 
of the bonds. (Foote v. Town of Hancock^ 15 Blatchf. C. C. 
R.y 343.) . Since that decision the Court of Appeals has de- 
cided to the contrary, {Cagwin v. Tovyn of Hancock, 84 N. 
Y., 532,) and it is now insisted that this Court should yield 
to that decision and follow it, as the construction of a State 
statute by the highest Court of the State, if that decision 
had been pronounced at the time the bonds were issued from 



346 NORTHERN DISTRICT OF NEW YORK, 

McGall V. The Town of Hancock. 

wliich these coupoiiB were cut, and before the rights of pur- 
chasers had arisen, the duty of this Oonrt would be plain. 
It would follow the decision, although not convinced by the 
reasoning upon which it was predicated. But research of 
counsel has failed to find a case in which the Supreme Court 
has adjudged municipal bonds issued under a State statute to 
be invalid in the hands of honafde holders, simply because 
the highest Court of the State has so determined after the 
rights of such holders had intervened. Sometimes that tri- 
bunal has placed itself upon the ground that such questions 
relate to commercial securities and belong to the domain of 
general jurisprudence, in which the Court will follow its own 
convictions, as in TcfWMihvp of Pine Grove v. TalcoUj (19 
Waa.y 666,) and Tinon of Venice v. Mwdook, (92 U. S., 494,) 
and in other cases on the ground that prior adjudications of 
the State Courts upon similar statutes were in conflict with 
the later decisions. 

Whether these adjudications are a departure from the 
doctrine established by the earlier decisions of that Court, of 
which Chreen, v. Leeeee of NeaL^ (6 Peters^ 291,) is an illustra- 
tion, is not for this Court to inquire, because its duty is plain, 
to conform its judgments to the views of its superior tribunal, 
as they are now entertained by that body. It has, indeed, 
been repeatedly said by the Supreme Court, in actions upon 
such bonds, that, where there has been a fixed and settled con- 
struction by the State Courts, it would be unseemly to depart 
from that construction ; but this was said in cases where such 
construction had been settled before the bonds were issued. 
(See Tovmahvp ofEI/mwood v. Ma/rcy^ 92 TJ. S.j 289.) On the 
other hand, as in Fairfidd v. Comity of QaUa^^ (100 U. 51, 
47,) the Court has not hesitated to reverse its own rulings ad- 
verse to the validity of such bonds, in order to follow later 
decisions of the State Court sustaining their validity. 

The case of Toion of Venice v. Murdoch^ (92 U. 5., 494,) 
must be accepted as controlling upon this Court in the dispo- 
sition of the present case, both because it is one of the most 
recent expositions of the views of the Supreme Court upon 



FEBRUARY, 1882. .%7 



McCall v. The Town of Hancock. 



the general questions involved, and because it is a precedent 
directly in point. There, the validity of the bonds, issued 
under a statute of this State very similar to the statute under 
which the bonds in suit were issued, was the question under 
consideration. That statute authorized the supervisor of the 
town and the railroad commissioners to borrow money and 
execute bonds for the town, in aid of a railroad company. It 
provided, however, that they should have «io power to do so 
until the written assent of two-thirds of the taxables of the 
town should have been obtained and filed in the clerk's office 
of the county, together with the affidavit of such supervisor 
or commissioners, or any two of them, to the effect, that the 
persons assenting comprised two-thirds of the taxables. As- 
sents were filed, together with the requisite affidavits, and the 
bonds were issued, but it was not shown, upon the trial, that 
two-thirds of the taxables had, in fact, assented. Notwith- 
standing the decision of the Court of Appeals of this State, 
that, under this statute, the ontM was on the bondholder to 
show, in a suit against the town, that two-thirds of the tax- 
ables had assented, (JStarm v. Tovm of Oenoa, 23 iT. y.,439,) 
and notwithstanding the decision of the same Court upon a 
very similar statute, in Oould v. Town of Sterling^ (23 If. Y., 
456,) the Supreme Court held that the Act constituted the 
supervisor and commissioners a tribunal to determine whether 
the requisite assents had been obtained, and that their decision, 
as evinced by making the affidavits and issning the bonds, was 
conclusive in favor of a bona fide holder. 

The bonds in the present case were issued under a statute 
which anthorized commissioners appointed for the town to 
borrow money and execute bonds for the town in aid of the 
railroad company. The Act provides that the authority of 
the commissioners shall only be exercised upon the condition 
that the assent shall be obtained, of a majority of the taxables, 
and declares that the fact that such majority has been ob- 
tained shall be ^^ proved " by the affidavit of one of the asses- 
sors of the town. The Act makes it the duty of the assessors 
to make such affidavit when the requisite assents shall have 



348 NORTHERN DISTKICT OF NEW YORK, 



McCall V. The Town of Hancock. 



been obtained. If there is any material difference between 
this Act and the one considered in Town of Venice y. 
Murdoch^ it is that here the statute declares the fact of the 
consents having been obtained ^* proved" by the affidavit, 
while in the other snch effect could only arise by implication 
— ^a difference which it might be supposed would materially 
fortify the position of the purchasers of the present bonds. 

Since these bpnds were issued the Court of Appeals has 
decided, {Cagwim, v. Town of Hcmcock, vbi aupra^ notwith- 
standing the declaration of the Act that the fact that the req- 
uisite assents have been obtained shall be proved by the affi- 
davit, that it is still incumbent on the purchaser to ascertain 
whether the fact thus proved is true or not. In Town of 
Venice v. Mwrdock^ the Supreme Court held that he was not 
required to look behind the recital in the bond. This Court 
cannot follow the Court of Appeals without obviously ignor- 
ing the plain and conclusive adjudication of the Supreme 
Court upon the same question in Town of Venice v. Mur- 
dock. 

It must, therefore, be determined that the plaintiff is en- 
titled to judgment, although he failed to show that the requi- 
site number of taxables had assented to the issuing of the 
bonds. 



Edwa/rd B. Thomas^ for the plaintiff. 
William Gleasouj for the defendant. 



FEBRUARY. 1882. 349 



The Unitod States v. Bartow. 



The United States v8, Alexander Bartow. 

Where a motion to quash an indictment is made after plea, and so mnch time 
has elapsed sinoe the date of the alleged offence that it is too late to frame a 
new indictment, the motion must fail unless the indictment discloses defects 
that woald he clearly fatal after yerdict. 

It is made an ofience, hy § 6,209 of the Revised Statutes, for a cashier of a na- 
tional bank to make any false entry in any report or statement of the associ- 
ation, with intent to defraud the association, or to deoeiTe any officer of the 
association or any agent appointed to examine the affairs of any such 
association ; and an indictment under that section is bad which arers only 
an intent to deceire the Comptroller of the Currency. 

An indictment under that section charged the making a false report of the 
conditioo of the bank, and had in it the words, " whereby, by means of a 
false entry therein by him made." It not being clear that that language 
would be held insufficient to support a conviction for making a false entry in 
the report, the question was left to be raised on a motion in arrest of judg- 
ment, and a motion to quash was denied. 

(Before Bknediot, J., Southern District of New York, February 18th, 1882.) 

Benedict, J. This is a motion to quash an indictment 
framed nnder § 5,209 of the Sevised Statutes, by which stat- 
ute it is made an offence for any cashier of a national bank to 
make any false entry in any report or statement of the associ- 
ation, with intent to defrand the association, or to deceive 
any officer of the association or any agent appointed to exam- 
ine the affairs of any snch association. 

. The indictment is corionsly framed, and, under other cir- 
cumstances, I should have little hesitation in directing it to be 
quashed. But, the lapse of time since the date of the alleged 
offence is such that it is now too late to frame a new indict- 
ment. The defendant has long since pleaded to the indict- 
ment as it stands, and the motion to quash at this time was 
permitted only as a matter of favor, to enable the defendant 
to point oat, if he could, defects that would necessarily be 
fatal on a motion in arrest of judgment. The present motion 
must, therefore, fail, unless the indictment discloses defects 
that would clearly be fatal after verdict. Such a defect plainly 



360 SOUTHERN DISTRICT OF NEW YORK, 

The United States v. Bartow. 

appears in the first, second and third connts, where the only 
intent charged is an intent to deceive John J. Knox, the 
Comptroller of the Oarrency. The intent made by the stat- 
ute an ingredient of the offence is an intent to defraud the 
association, or to deceive any officer of the association or any 
agent appointed to examine the affairs of any such association. 
The Comptroller of the Currency is not an agent appointed 
to examine the affairs of a national banking association^ 
within the meaning of this statute. The first, second and 
third counts of the indictment are, therefore, bad. 

The other counts are differently framed in regard to the 
intent. They are alike in form, and the only obje<5tion taken 
to them is, that the substance of the charge in each is the 
making a false report of the condition of the bank, whereas 
the offence created by the statute consists in making a false 
entry in a report. Upon this ground it is contended that no 
offence is charged in either of these counts. But, while the 
wording of the indictment doubtless affords some ground for 
such a contention, it is not certain that the language employed 
would be held insufficient to support a conviction for making 
a false entry in the report. There are the words " whereby, 
by means of a false entry therein by him made." This lan- 
guage might be held to constitute an imperfect averment 
tliat the defendant made a false entry in the report described, 
and, therefore, sufficient to support a finding that the defend- 
ant made a false entry in the report, within the meaning of 
the statute. Any doubt existing upon such a question, when 
raised as in this case, should be left to be solved upon the 
motion in arrest of judgment. 

The motion to quash is, therefore, denied. 

WiUiam P. Fiero^ (AssistmU District Attorney,) for the 
United States. 

Winohe^fer BHttonj for the defendant. 



FEBRUARY, 1S82. 351 



The United States v. Bartow. 



The CTNiTEa) States vs. Alexander Bartow. 

A motion to quasb an indictment, made after plea, cannot prevail unless the in- 
sufficiency of the indictment is so palpable that no judgment can be rendered 
after conyiction. 

A report of the condition of a national bank, made by its cashier to the Comp- 
troller of the OorreDcy, and verified by his oath, is a declaration, within 
§ 6,892 of the Revised Statutes. 

An indictment under that section charged the taking of a fiilse oath to a report 
to the Comptroller of the Currency, but did not specifically aver that the 
report was made on the requirement of the Comptroller, or according to a 
form prescribed by him, but averred that the report was made to the Comp- 
troller, " and verified as aforesaid, as by law required." It not being clear 
that such averment was not sufficient, after verdict, to warrant judgment on 
the conviction, a motion to quash the indictment was denied. 

(Before Bbnkdiot, J., Southern District of New York, February 18th, 1882.) 

Benedict, J. This case comes before the court upon a 
motion to quash made after plea. It cannot, therefore, pre- 
vail unless the insufficiency of the indictment is so palpable 
as to satisfy the mind that no judgment can be rendered in 
case of conviction. 

The offence sought to be charged is the pfience created by 
§ 5,392 of the Revised Statutes. The act charged is the veri- 
fication of a report of the condition of the National Bank of 
Fishkill, by the accused, as cashier of such association. The 
method of framing the indictment is far from satisfactory. 
Still I think it not impossible to consider the language em- 
ployed sufficient, after verdict, to sustain a finding that the 
accused took an oath that a report of the condition of the 
National Bank of Fishkill subscribed by him is true, and wil- 
fully and contrary to his oath stated, in such report, material 
matter which he did not believe to be true. Such a report is, 
\n my judgment, a declaration, within the meaning of § 5,392. 

The laws of the United States (§ 5,211 Bev. Stat.^) require 
every National Bank to make to the Comptroller of the Cur- 
rency not less than five reports during each year, according to 



352 SOUTHERN DISTRICT OF NEW YORK, 

The United SUtes v. Bartow. 

the form which may be prescribed by him, verified by the 
oath or affirmation of the president or cashier of the associa- 
tion. In this indictment there is no specific averment that 
the report in question was made in pursuance of a request or 
requirement of the Comptroller, or according to a form pre- 
scribed by the Comptroller ; nor is there any averment that 
the Comptroller ever requested a report from the Ifational 
Bank of Fishkill. Because of this omission it is said that no 
offence is charged, inasmuch as the ofi^ence created by § 5,392 
can only be committed in a case in which a law of the United 
States authorizes an oath to be administered. But, the act 
charged is the taking of the oath. The circumstances under 
which the oath was taken are introduced to show that the oath 
was authorized by law. Matter showing that the report which 
the accused verified by his oath was made in pursuance of a 
request from the Comptroller of the Currency, and in accord- 
ance with a form prescribed by him, would be, therefore, 
matter of inducement, and inducement does not, in general^ 
require exact certainty. This indictment contains the aver- 
ment that the report in question was " made to the Comptrol- 
ler of the Currency and verified as aforesaid, as by law re- 
quired." I am not prepared to say that authority cannot be 
found for holding such an averment in regard to such matter 
sufficient, after verdict, to warrant judgment on the convic- 
tion. (See Bex v. Sainabury^ 4 T. H,, 451 ; Heffma v. Bid- 
well, 1 Den. C. C, 222.) 

The motion to quash is, accordingly, denied. 

WHMam P. Fiero, {Assistant Disi/rict Attorney,) for the 
United States. 

Winchester Britton, for the defendant. 



FEBRUARY, 1882. 353 



JeonUigs V. Eibbe. 



Abrajiah G. JBNKmas and another 

vs. 

m 

Henrt E. Kibbb and others. In EQurrr. 

In thie salt, brought for the iDfringeinant of two letters patent for designs, one 
for a "lace pmrling ** and the other for a *' fringed lace fobric,** the plaintiff 
introduced in evidence the patents and a "nnbia" sold by the defendants, 
but examined no witness ais to identity of design. The defendants introdnced 
no testimony. In view of the decision in Oarham Co. ▼. White, (14 Wallaet, 
611,) and of the simple character of the designs of the patents, and of the absence 
of any testimony on the part of the defendants, the Oonrt compared the nnbla 
with the patents, as to design, and determined the question of identity fi*om 
snch comparison. 

^Before Blatohfobd, J., Southern District of New York, February 2(yth, 1882.) 

Blatchford, J« This suit is brought on two letters patent 
for designs. One is No. 10,388, granted to Abraham G. Jen- 
nings, for 14 years, on January 1st, 1878, for a " design for 
lace purling." The other is No. 10,448, granted to Warren 
P. Jennings, for 7 years, on February 12th, 1878, for a " de- 
sign for a fringed lace fabric." The specification of No. 
10,388 says : " Figure 1 represents a photographic illustration 
of my new lace purling. Fig. 2 is a photographic illustration 
of the same design, made of coarser thread. This invention 
relates to a new design for a lace fabric, and consists in pro- 
viding the pillars thereof with more or less irregular laterally- 
projecting loops, thereby imparting to the entire fabric a 
puckered, wavy, purl-like appearance, which is indicated in 
the photograph. The loops on the pillars are placed close to- 
gether, to increase the eflEect." The claim is this: "The 
design for a lace purling the pillars whereof are provided with 
irregular laterally-projecting loops, substantially as shown." 
The specification of No. 10,448 says: "The accompanying 
photograph illustrates a face view of my new design. This 
invention relates to a new looped fringe, applied in series to 
Vol. XX.— 38 



354 SOCTHEBN DISTRICT OF HEW YORK, 

Jomiiigs V. Kibbe. 

laoe fabrics. A represents the lace fabric, of osnal kind. 
B B are the disconnected fringes applied thereto. Eadi 
fringe, B, is formed with loops at both sides of a central stem 
or rib, along its entire extent, as shown, thus piodacing a 
peculiar fall and yet loose effect. The fringes are arranged 
in series of rows, and suspended from the lace fabric?' The 
chum is this : ^' The design for a lace fabric, provided with 
disconnected doable looped fringes, B, having loops at both 
sides of a central stem or rib, substantially as diown." 

The answer denies infringement and sets up various de- 
fences to both patents. In taking proofs for final hearing, 
the counsel for the defendants being present, the plaintifEs 
put in evidence the two patents, and assignments to the 
plaintiflb) and a ^' nubia." The counsel for the defendants 
admitted, on the record of proofs, that the said nubia waa 
purdiased from the defendants' firm prior to the commence- 
ment of this salt. The plaintiffs then rested their case. The 
defendants took no testimony. The plaintiffs bring the case 
now to final hearing on the foregoing evidence, without in- 
troducing any witness to show the identity of design between 
what is found in said nubia and in the plaintiffs' patents. 
The defendants contend that it is not sufficient for the plaint* 
iffs to show merely the sale of the nubia by the defendants, 
and to leave the Court to inspect the nubia and compare it 
with the patents, but that the plaintiffs must produce a wit- 
ness to testify to identity of design. 

In Oorham Co. v. WhUe^ (14 WaUace^ 511,) the Supreme 
Court considered directly the question of identity in regard 
to a patent for a design. It held that the true test of identity 
of design is sameness of appearance, in other words, sameness 
of effect upon the eye ; that it is not necessary that the ap- 
pearance should be the same to the eye of an expert ; and that 
the test is the eye of an ordinary observer, the eyes of men 
generally, of observers of ordinary acuteness, bringing to the 
examination of the article upon which the design has been 
placed that degree of observation which men of ordinary in- 
telligence give. The Court compared, in that case, the de- 
sign of the patent with the designs on the defendants' articles. 



FEBRUABY, 1882. 856 



Bnioe V. Harder. 



and arrived at the conclusion, from sach comparison, that the 
designs of the defendant were, in their effect as a whole, not- 
withstanding v^ances, substantially the same as the design of 
the patent, and infringements. In addition to this there was 
the testimony of witnesses on both sides on the question, and 
the Court was of opinion, also, that the testimony proved the 
infringements. 

In view of the proper test of identity, as above given, and 
of the simple character of the designs in the present case, and 
of the absence of any testimony on the part of the defend- 
ants, I am of opinion that the absence of testimony as to iden- 
tity does not make it improper for the Court, in this case, to 
compare the defendants' nubia with the patents, as to design, 
and determine the question of identity from such comparison. 
It is not intended to imply that the practice can be extended 
to any other patent than one for a design, or that it ought to 
be extended to all patents for designs. 

On such comparison it is found that the defendants' nubia 
infringes both of the patents, and a decree in the usual form, 
in favor of the plaintiff, with costs, wiU be entered. 



A. V. JBriesen, for the plaintiffs. 
J. R. BenneUj for the defendants. 



David W. Bbucb 
John Mabdbb and othbbs. In Egmrr. 

Letters patent No. 189,865, granted to David W. Brace, May 27th, 1878, for an 

improvement in printing types, are valid. 
The invention defined, and held to be patentable. 
The claim oonstrned by the langoage of the spedfioation. 

(Before WaxiUA, J., Soathern District of New York, Febraary 2Sd, 1888.) 



356 SOUTHERN DISTRICT OF NBW YORK, 



Bmce V. Harder. 



Whebleb, J. This snit is brought upon letters patent 
No. 139,365, dated May 27th, 1873, granted to the orator for 
an improvement in printing types. The improvement con- 
sists in having types for figures cast two-thirds the width of 
the body, which is the height of the type, and with corre- 
spondingly larger faces, whereby the type can be more readily 
set, beeause they can be justified, as printers say, by two of 
the ordinary three-in-em spaces, and because the print is much 
more legible. The defences are want of patentability of in- 
vention, and want of novelty. The claim in controversy, of 
the patent, is for : ^^ Figures and fractions in printing type, 
cast upon a block equal to two-thirds the width of the body 
of the * em ' or standard type." 

If this claim was to stand upon its own terms merely, it 
would cover only the size of the body of the type on which 
figures are cast, and not the size of the figures themselves, as 
cast upon the body, and the patent, as involved here, would 
have to be considered in that view. But the specification sets 
forth the old method of casting type for figures, and the in- 
distinctness, on account of smallness of the figures, as one 
of the disadvantages of that method, and then proceeds: 
^' To obviate this indistinctness, I construct the figures broader, 
by casting them two-thirds of the width of the body," &c., 
and refers to the accompanying drawings, which show large- 
faced figures contrasted with small ones, as a part of the im- 
provement. The claim is to be read in connection with the 
specification, as if there was added to it the phrase — as 
specified, or as set forth. Read in that light the claim is for 
the broader figures, as well as for the broader body of the 
type. 

The daim of lack of patentability rests upon the argu- 
ment that there can be no invention in merely increasing the 
size of the types for figures or the width of the body of the 
type, and none in doing both. At first, it would seem that 
this argument was well founded, as to the scope of the patent, 
and sound. But a closer examination of the subject shows 
that the patent involves more than either of these things, or 



FEBRUARY, 1882. 857 



Brace v. Murder. 



the combination of both. The invention is not merely of an 
increase of the size of type for figures. Figures in printing 
are to be used in the same body of type with letters, and the 
whole are to be justified, in the language of printers ; in other 
words, spaced so as to fill out the lines. By the old method 
figures were cast on types one-half the width of the body of the 
line, whatever the size of the type might be ; and an increase 
of the size of the figures made necessary an increase of the 
size of the whole. The orator invented a method of increas- 
ing the size of the figures without increasing the size of the 
type of the letters and the body of the line ; and a method 
of conveniently justifying the types for figures, by making 
the width of the body of the type exactly two-thirds of the 
width of the body of the line, so that they could be justified 
by two of the ordinary three-in-em spaces, whatever the size 
of the type of the body of the line might be. This involved 
finding a new rule of proportion between the sizes of letters 
and the sizes of figures, and one that not only would give 
more legible figures, but such as would be more legible with- 
out increasing the size of tlie letters with which they should 
be printed, and such size of body of .type on which to cast 
the figures that the type could be used conveniently, and 
economically of space. This required more than mere me- 
chanical skill ; it made necessary the creative genius of the 
inventor. The testimony of practical and largely experienced 
printers, taken in the case, shows that his method was not 
known before his invention, that it has been of great utility 
and gone largely into use since. This shows that he discov- 
ered and put to use what others skilled in the art had oyer- 
looked ; that it was very desirable, when known, and would, 
very probably, have been found out before, if ordinary skill 
in that art could have discovered it. On the whole, the pre- 
sumption of patentability arising from the grant of the patent 
is not only not overthrown but is well sustained. 

The evidence as to prior knowledge and use establishes, 
fairly enough, that types for figures were cast with the body 
of the type two-thirds the width of the body of the line, 



868 SOUTHERN DISTRICT OF NEW YORK, 

Munson v. The Mayor. Ac, of the City of New York. 

before this inyention ; and, if that was all of the invention, 
or if the claim was to be constmed according to its own 
terms, without resort to the specification, so that no more 
would be patented, the want of real novelty might be made 
ont. Bat, as before attempted to be shown, the invention in- 
volves the increase of the size of figures in proportion to the 
size of letters, in connection with this size of the body of the 
type, and the whole of that does not appear with the requisite 
clearness to have been known or nsed before. 

Let there be a decree that the patent is valid, that the de- 
fendants infringe, and for an injunction and an account, ao- 
cording to the prayer of the bill, with costs. 

Benjamin F, Lee^ iot the plaintifi; 

H. F. PtMzj for the defendants. 



Francis Mitnson 

vs. 

The Mayor, &o,, of the City of New York. In EQunr. 

An interlocatory decree for the plaintiff haying been made in this salt, (18 
Blotch/. C. C, R,, 287,) after a final hearing on proofs, application was now 
made, on affidayits, to open the decree and admit a new defence of pablic nee 
of the patented article, purchased from the inventor, for more than two yean 
prior to the application for the patent Bat the witnees to the nse had made 
conflicting affidayits, and the Identical article osed was not produced, and the 
inventor testified that the article purchased from him was not the completed 
invention. For these reasons the application was denied. 

(Before Wheblr, J., Southern District of New York, February 82d, 1888.) 

Wheeler, J. This cause has now been heard upon the 
motion of the defendant to re-open the interlocutoiy decree 
for an injunction and account, heretofore made therein, (18 



FEBRUARY, 1882. 859 

Mnotcm «. The Mayor, Ac, of the Ciiy of New York. 



RUstchf. G, C. JS.y 287,) and to admit a new defence of public 
VBB of the patented bond and coupon registers in contro- 
yersy, by the Chicago, Burlington and Quincj Bailroad Com- 
pany, for the period of more than two years prior to the 
application for a patent, which were purchased of the patentee 
himself. The application is founded upon an aflEidayit of 
Amos T. Hall, in which he testifies to such prior use while 
he was treasurer of that corporation, and affidavits of counsel 
showing due diligence in discovering this defence. This 
defence would be meritorious if it could haye been seasonably 
interposed and clearly made out, according to the require- 
ments of the law for defeating a patent. This affidavit, as 
made, having full effect given to all its statements, would 
make out such defence. But, since making this affidavit, the 
same witness has made another, at the request of the plaintiff, 
so modifying the former as to make it doubtful, upon his own 
statements taken altogether, whether it was in fact the pat- 
ented register which he used for that corporation during that 
time. All the registers which he did use were consumed by 
the Chicago fire, so that proof of what they actually were 
would necessarily depend wholly upon oral testimony. In 
addition to this, the plaintiff makes affidavit that what was 
used was not the patented invention as perfected, but was a 
different register, which he made before completing the in- 
vention patented. This would make this defence altogether 
too doubtful in fact to defeat the patent, if it was all in, upon 
this proof, for consideration, upon hearing in chief ; and would 
fall far short of warranting re-opening the case, if all other 
requisites for that course were complied with. It is argued 
for the defendant, however, that the case should, in justice, 
be opened, to give opportunity to investigate this defence and 
procure other witnesses if to be found, and to subject these 
to examination and cross-examination, to develop the facts 
pertaining \o it more fully. This would be very proper in 
preparing for a hearing in chief while the case was open for 
that purpose. That time, however, has passed. It is for the 
interest of all that litigation should in due course cease, and 



860 SOUTHERN DISTRICT OF NEW YORK, 

Smilli 9. The Standard Laundry Madiinery Company. 



that experiments in making proofs should cease. After par- 
ties have had a full opportanity to ascertain, take and present 
all their proofs, and they haye been taken, presented, consid* 
ered, and their weight determined, there is no jnst gronnd 
for opening the case to afford opportunity to explore for 
further proofs. In applications for a new trial on newly dis- 
covered evidence, the evidence offered should, of itself, be 
such as to make it probable that its introduction would change- 
the result. The authorities are full to this extent, at leasts 
The motion must be denied. 

Hoyal S. Oranej for the plaintiff. 

Frederic H. BettSy for the defendant. 



Mart J. Sioth 

The Standard Laundry Maouinbst Companv and others.. 

In Equity. 

S. granted an exdnaiye lioenae, in writing, to a company, t« make and aeU a 
patented article during tlie term of a patent, returns of sales to be made 
monthly, and license fees paid monthly, S. to haye a right to terminate the 
lioense by a written notice to the company, on the faUure to make retoms 
and payments for 8 consecntiye months. S. dnly serred notice of the termi- 
nation of the license, but the company continued to use the patented inyen- 
tion, and S. brought this suit for infiingement. The parties were citixens of 
the same State. In A.'s answer, the company alleged that the contract was not 
lawfhUy terminated, and, also, that it had not sold any of the patented arti- 
cles, and was not making and selling them : Htldt that this Ck>urt had juris- 
diction of the suit 

The case distinguished from WUton y. Semd/ord, (10 JBoio., 99,) and Harldly,, 
TOghman, (99 U. 8., 647.) 

(Before WonLn, J., Southern District of New York, February 22d, 1882.) 



FEBRUARY, 1882. 861 



Smith 9. The Standard Laundry Hachioery Company. 

Wheeler, J. There are two of these eases, brought npon 
numerons patents described in the respective bills of com- 
plaint, and they have been heard together npon the bills,, 
answers, replications, and plaintifPs proofs. The plaintiff, by 
written agreement, dated July 1st, 1874, granted an ezdnsive 
license to the Standard Lanndry Machinery Company, alone 
and singly, to mannfactare and sell lanndry machinery embody- 
ing the improvements patented, to the end of the terms of 
the patents, the company to make return to the plaintiff of 
all sales made dnring each month, on the first of the following 
month, and to pay, as a license fee, on or before the tenth of 
the following month, a sum eqaal to eight per cent, of the 
gross sales of power machinery, and four per cent, of the 
gross sales of hand machinery, so sold. There was a clause in 
the agreement providing that the plaintiff might terminate 
the license by serving a written notice upon the company, on 
failure to make the returns and payments for three consecu- 
tive months. May 13th, 1879, the plaintiff served notice of 
termination of the license. The defendants continued to use 
the patented inventions, and the plaintiff brought these suits 
for infringements after the notice. The parties are citizens 
of the same State, so that this Court has no jurisdiction except 
under the patent laws. The defendants insist that those laws 
give no jurisdiction to decide npon the construction or con- 
tinuance of the agreement for a license, and that the question 
of infringement depends wholly upon the agreement, and rest 
the case here wholly upon this question of jurisdiction. The 
contract of license itself provides a mode for its own termi- 
nation ; and the plaintiff's case shows that it was terminated 
in that mode. The defendants do not rest their cases upon 
the question whether the contract was terminated or not, but,, 
while they insist that it was not lawfully terminated, answer, 
" that they have not sold any machines embodying the inven- 
tion for which the complainant has obtained letters patent, as 
alleged in the complaint, and that defendants are not now 
manufacturing and selling the said machines." This raises a 
question of infringement, arising solely under the patent laws 



362 EASTERN DISTRICT OF NEW YORK, 

Gnnther «. The Lirerpool and London and Globe Insonuioe OomiMny. 

of the United States, of which the CTnited States Oonrts alone 
have jurisdiction, without reference to citizenship. The de- 
cision of the question of the termination of the license might 
obviate this question of infringement, and it might not ; or, 
rather, it might furnish a mode of determining whether there 
was any infringement, and it might leaye that question to be 
•determined otherwise. If the license was not ended, the acts 
charged, if done, would not constitute an infringement ; if 
«nded, the question would remain, whether the acts were done. 
The question of infringement would always be in the case, 
until decision. This is different from WiUon y. Sanc^ordj 
(10 ffow.y 99,) and Bariell v. TUghmauj (99 U. A, 547,) re- 
lied npon by defendants. In each of those cases, as treated 
by the Court, there was but one question made between the 
parties to be decided at all, and that was a question of contract. 
Neither of those cases seems to control this, and this does seem 
to involve a controversy of which this Conrt has jnrisdio- 
tion. 

Let there be a decree for an injunction and an account, ac- 
-cording to the prayer of the bill, with costs. 

H. Q. AtwaieVy for the plaintiff. 

J. Palmer, for the defendants. 



Charles Godfret Gitnthkb 

vs. 
The Ltvbrpool and London and Globe Insurance Company. 

A policy of fire insurance on a hotel, owned by ihe plaintiff, proyided that it 
shonld be void if the premiseB shoold be used so as to increase the risk, with- 
in the control of the assured, without the assent of the insurer, or if the as- 
sured should keep gasoline or benzine without written permission in the pol- 



FEBRUARY, 1882. 363 



Gnnther v. The LiTerpool and London and Olobe Inraranoe Company. 

icy, and that neither bennne nor gaaoline should be stored, used, kept or 
allowed on the premises, temporarily or permanently, for sale or otherwise, 
noless with written permission endorsed on the policy, " excepting the use 
of refined coal, kerosene or other oarbon oU, for lights, if the same is drawn 
and the lamps filled by daylight; ** otherwise, the policy to be yoid. There 
was written in the policy: "Priril^ge to use gasoline gas, gasometer, blower 
and generator being underground, about 60 feet from main building, in 
▼ault, no heat employed in process;" and "privilege to keep not exceeding 
5 barrels kerosene oil on said premises." There was an oil room in the base- 
ment of the hotel, in which materials for lighting were kept The hotel was 
run by the wife of W., W. being her agent in its management. It was de- 
stroyed by a fire which took in the oil room between sundown and dark, from 
a light carried in there by senrants, by direction of W., for the purpose of 
drawing oil sent for from a neighboring hotel. The answer set up, as de- 
fences, that the conditions of the policy were broken, by keeping or allowing 
benzine on the premises, and thereby increasing the risk, without consent or 
permisrioD, but did not otherwise set out any breach by drawing oil after 
daylight, or by other light. On the trial the defendant gave evidenoe to 
show that W. had procured benzine and put it in the oil room for use in 
Ughting the premises, and that this was the same as gasoline, and was what 
was sent for from the other hotel, and was being drawn and took fire from the 
fight, and caused the loss, and that its presence increased the risk. The evi- 
dence also went to show that W. procured the benzine to use at a picnic and 
not for the purposes of the hotel The plaintiif gare evidence to show that 
no benzine was brought there, and that, if there was, it was without the au- 
thority or knowledge of the plaintifF, and that kerosene was what was being 
drawn when the fire took. There was evidence that, in the use of gasoline 
gas, in apparatus such as is described in the permission, it is usual to store 
gasoline in the generator. The Ck>urt charged the jury that, if the benzine 
was there and was procured and placed there by W. in the course of his bus- 
iness of managing the hotel for his wife, to whom the plaintiff had committed 
the use of the premises, and storing it in the oil room would not be within 
what would be understood and expected to be done in the exercise of the 
privilege granted to use gasoline, the plaintiff could not recover ; but that, if 
the benrine was not there, or was placed there by W. without the plaintiff's 
knowledge, for some outside purpose, not connected with the management of 
the hotel, nor within his authority as agent of his wife for that purpose, or if ■ 
it was to be understood and expected, from the permission, that the gasoline 
or benrine might be stored in the oil room, in the usual place for storing such 
things, and it was so stored there, the plaintiff could recover: ffdd, no 
error. 
The defendant requested the Court to direct a verdict for the defendant on the 
ground that drawing the oil after daylight was gone, by artificial light, 
avoided the policy, and to charge the jury that the plaintiff was not entitled 
to recover if benzine was there and increased the risk. The Court refused to 
comply with such requests: Held, no error. 

(Before Wbxklsb, J., Eastern District of New Tork, February 28d, 1882.) 



3d4 EASTERN DISTRICT OP HEW YORK, 

Gnntber «. The LiTerpool aod London and Qlobe loinnuiee Oompasy. 

Whebleb, J. This action is brought upon two policies 
of iDBurance coyering the plaintiff's hotel, stable and bathing 
honses. The policies contained clauses providing that, if the 
premises should '^be occupied or used so as to increase the 
risk, by any means whatever within the control of the assured, 
without the assent " of the company, or, if the assured should 
" keep * * * gasoline, benzine * * * without writ- 
ten permission in the policies," then, in every such case, the 
policies should be void, and that * * benzine * * gas- 
oline * * were " not to be stored, used, kept or allowed 
on the above premises, temporarily or permanently, for sale 
or otherwise, unless with written permission endorsed on this 
policy, excepting the use of refined coal, kerosene or other 
carbon oil, for lights, if the same is drawn and the lamps 
filled by daylight; otherwise, this policy shall be null and 
void." There was written in the policy : " Privilege to use 
gasoline gas, gasometer, blower and generator being under- 
ground, about 60 feet from main building, in vault, no heat 
employed in process;" and ^'privilege to keep not exceeding 
5 barrels kerosene oil on said premises." Gasoline gas appar- 
atus, as described in the permission, was in use when that per- 
mission was given, and that use was whoUy discontinued, and 
the permission to keep kerosene oil was given. There was 
an oil room in the basement of the hotel, in which materials 
for lighting were kept. The hotel was run by a Mrs. Walker, 
and Mr. Walker, her husband, was her agent in its manage- 
ment. The property insured was destroyed by fire, which 
took in the oil room, between sundown and dark, from a light 
carried in there by servants, by direction of Walker, for the 
purpose of drawing oil, sent for from a neighboring hotel. 

The answer set out the conditions in the policy mentioned, 
and averred, as defences, that these conditions were broken, 
by keeping or allowing benzine on the premises, and thereby 
increasing the risk, without consent or permission, among 
other things, but did not otherwise set out any breach by 
drawing oil after daylight, or by other light. 

On the trial, the evidence of the defendant tended to 



FEBRUARY, 1882. 366 



GuDtber v. The laTerpool and London and Globe Insurance Company. 



show, that the day before the fire a half barrel of benzine was 
procured by Walker to be brought and put into the oil room, 
for use in lighting the premises, and that this was the same as 
gasoline, and was what was sent for from the other hotel, and 
was being drawn and took fire from the light, and caused the 
loss ; and that its presence greatly increased the risk. The 
evidence also tended to show that Walker procured the ben- 
zine for use at a picnic in an adjoining grove the next day, 
and not for the purposes of the hoteL The plaintifiPs evidence 
tended to show that no benzine was brought there at all, and 
that, if there was, it was without the authority or knowledge 
of the plaintiff; and that kerosene was what was being drawn 
when the fire took. A witness for the defendant stated that, 
in the use of gasoline gas, in apparatus such as is described in 
the permission, it is usual to store the gasoline in the gasome- 
ter, probably intending to say generator; and this was the 
only evidence upon the subject, other than that arising from 
the nature and necessities of the use. 

The defendant requested the Court to direct a verdict for 
the defendant, on the ground that drawing the oil after day- 
light was gone, by artificial light, avoided the policy ; and to 
charge the jury that the plaintiff was not entitled to recover 
if benzine was there and increased the risk. The Court, not 
complying with these requests, charged the jury that, if the 
benzine was there, and was procured and placed there by 
Walker in the course of his business of managing the hotel 
for his wife, to whom the plaintiff had committed the use of 
the premises, and storing it there in the oil room would not 
be within what would be understood and expected to be done, 
in the exercise of the privilege to use gasoline granted, the 
plaintiff would not be entitled to recover; but that, if the 
benzine was not there, or was placed there by Walker without 
the plaintiff's knowledge, for some outside purpose, not con- 
nected .with the management of the hotel, nor within his aur 
thority as agent of his wife for that purpose, or if it was to 
be understood and expected, from the permission that the 
gasoline or benzine might be stored in the oil room, in the 



366 EASTERN DISTRICT OF NEW YORK. 

Qunther v. The Liverpool and London and Globe Inenrance Company. 

usual place for Btoring such things, and it was so stored there, 
the phiintiff would be entitled to recover. The defendant 
excepted to each of these rulings, and, after verdict, and be> 
fore judgment, moved for a new trial on account of them, 
and the cause has now been heard upon this motion. 

Defences on account of breaches of conditions in such pol- 
icies should, according to the general principles of pleading at 
law, be specially pleaded and set forth. ( Wood on .Fire Ina^y. 
sees. 194, 496.) This was the rule at common law, as to con- 
ditions of penal bonds. And this mode of pleading seems ta 
be especiallj requisite in proceedings under the Code, such aa 
those in this case are. It is said, in argument, that the gen- 
eral allegation that the conditions were broken, in connection 
with the setting forth of the conditions, was a sufficient com- 
pliance with the requirement ; and that the introduction of 
the evidence without objection was a sufficient waiver of it. 
The first of these propositions would seem to be more sound 
if the pleader had stopped when he had set out the conditiona 
and stated generally their breach; but he did not do this. 
After stating the conditions and that they were broken, he 
went on and specified the particulars in which they were 
broken, leaving out drawing oil by other than daylight. Thjs 
would be misleading if that breach was to be relied upon. As 
it was, the Court got no idea at all that such breach was to be 
relied upon until the request to direct a verdict on account of 
it was made. The evidence in respect to it did go in without 
objection, and, had there been no other ground for its admis- 
sion, that fact would be deemed a waiver of any more full 
pleading on this ground ; butthere were other grounds. The 
plaintiff was required to prove the loss, and this involved 
proving the circumstances of the fire ; and the proof on this 
subject went in as a part of those circumstances. There was 
no opportunity for the plaintiff to object on the ground that 
it was proving this defence not pleaded, and the failure to 
object on that ground could be no waiver of it. 

The request to charge as to increase of risk by the presence 
of benzine became immaterial in view of the charge upon 



FEBRUARY, 1882. 86T 



Gonther v. The liyerpool and London and Globe Insoranoe Company. 

other points ; or, rather, if the charge was correct otherwise, 
it was more favorable than the request on this subject. The 
charge, as given, made the mere presence of the benzine a de- 
fence, unless it was there within the permission, or by the act 
of a gitMsi trespasser. A charge according to this request 
would only have made its presence, if it increased the risk, a 
defence with the same qualifications. This part of the charge, 
where it differs from this request, could have done no wrong 
to the defendant. 

As the jury were, by the charge, left to find a verdict for 
the plaintiff if they should find either that Walker put the 
benzine into the oil room on his own account outside of the 
carrying on of the hotel, or that having it there was within 
the permission, the verdict rests upon the soundness of both 
of these propositions. 

The act of Walker would not avoid the policy unless it 
can be said to have been in some way done under or by aa- 
thority from the plaintiff ; and then only unless it was such 
an act as, if done by the plaintiff, would avoid the policy. 
Mere imprudence or negligence of either would not have that 
effect. ( Wood on Fvre Ins.. sec. 101.) So, the mere having 
the benzine there and drawing it by artificial light, without a 
prohibitory clanse in the policy, would not, unless done with 
such recklessness as to show an intent to destroy or to wil- 
fully expose to destruction, of which there was no evidence. 
{CTumdler v. Worceste?* Ins. Co.j 3 Cush.^ 328.) They would 
not, unless these things would avoid the policy, because, by its 
terms, it was agreed that they should avoid it. The conditions 
relied upon commence by providing, that, if the risk should 
be increased by any means withiu the control of the assured, 
and continue by providing that, if the assured shall keep so 
and so, the policy shall be void, showing that the acts stipu- 
lated against are the acts of the assured. In the last clause, 
those words are not inserted, but, as the language is that of 
the company, and in these cases is to be taken most strongly 
against it, and in favor of the assured, they may well be con- 
sidered as carried forward by intention into the other clause. 



368 EASTERN DISTRICT OF NEW YORK, 

Ganther v. Th« LlTerpool and London and Globe Inanrance CompaDy. 

{ Wood on Fire Ins., sec. 57.) It is hardly to be supposed that 
the keeping of benzine, mentioned in one clause, was under- 
stood to be any different keeping from that mentioned in a 
previous clause. In this view, the act of Walker entirely 
outside of the authority of the plaintiff, and of any occupation 
of the premises under the plaintiff, could not, in any sense, be 
justly said to be done by the assured. Beyond this, if the last 
clause was to stand by itself, on its own language, there would 
remain the question whether such an act as the jury may have 
found Walker's to be was not an act insured against. No 
one would probably contend but that it would have been if 
done by a stranger and trespasser ; and probably no one would 
<x>ntend but that the act would have been insured against if 
Walker had wilfully fired the property ; nor but that it would 
if he had brought the benzine there as a means to fire it with. 
These acts would have been so because, although he was there 
and doing some things xmder authority derived from or under 
the plaintiff, they would be done in violation of authority, and 
against his right. They would have caused a loss that he was 
not responsible for, and against which he was insured. Walk- 
er's authority there was included in running the hotel, and 
when he got outside of that he was outside of what the plaint- 
iff was responsible for, and what he did outside of that was 
wrongful as to the plaintiff and included in that against which 
the phintiff was insured, and not in that which he agreed with 
the defendant to prevent. 

The privilege to use gasoline gas was without limitation or 
restriction, except as to location of the apparatus and the em- 
ployment of heat in the process. The defendant argues for a 
construction of it the same in effect as if it was a privilege to 
use gasoline only in the apparatus mentioned ; but that is not 
the language. The privilege is to use that gas, and the location 
of the apparatus for making it only is fixed. The gas could 
not be made without gasoline or benzine, and the privilege to 
make it would necessarily include the presence of the things 
of which it must be made, and these things must be brought 
to the premises somehow, and kept somewhere for use as 



FEBRUABT, 1882. 869 



Gimther v. The Liyerpool and London and Globe Iflsoranoe Company. 

looted, and, therefore, it would include the necessary bring- 
ing and storing. The privilege was broader than the literal 
import of the words, bat how much broader could not be de- 
termined as a matter of law. The question was one of fact, to 
be determined upon the circumstances and necessities of the 
case. The defendant's eyidence went to show that the appa- 
ratus was the place in which the material should be stored. 
This was proper evidence, and the propriety of it showed that 
there was a question of fact on which it might have weight, 
and this qaestion could only be as to whether the material 
should be stored in the apparatus or elsewhere ; and, also, that 
there was something in the case which might be weighed on 
the other side of the question, and which this testimony was 
to meet. If the material was to be stored elsewhere, the 
proper place where would also involve a question of fact to 
be determined by the jury. And, if it was within the privi- 
l^e to store it elsewhere, then the defendant took the risk of 
the premises, when it might be so stored, with it there. This 
risk would be no greater or different, whether it was stored 
there for ase in the apparatus, or for use in some other mode 
on the premises, or not to be used on the premises at all. 
Other use on the premises might be prohibited, but, if the 
prohibited use was not made, the keeping for such use would 
not vitiate the policy, if the keeping it was not prohibited. 
This case, in this aspect, is like Citizen*s Insurance Co. v. Mb- 
Zatighlinj (53 Penn.^ 485,) where the policy granted the privi- 
lege of keeping not more than five barrels of benzole in a 
«mall shed entirely detached from all the other buildings, sit- 
uated on the rear end of the lot, about one hundred feet from 
the main building, and nowhere else on said premises. The 
buildings insured were a patent leather manufactory ; benzole 
was used in the manufacture, and a workman carried a bucket 
containing three or four gallons of it into the middle of a room 
in the factory, and set it down there, and turned away from 
it, and it took fire from an unknown cause, and communicated 
the fire to the building, which was consumed, and this was the 
loss in controversy. The jury found that this was one of the 
Vol. XX.— 24 



370 BOUTHERir DISTRICT OF HEW YORK, 

liodMy 9. Stein* 

risks covered by tbe policy, and the insured recovered for the 
loss. In the case under consideration there seemed to be no* 
way bnt* to submit the question as to the extent of the risk 
taken by this clause, and whether it covered the benzine in the 
oil room, to the jury, as was done. 

The motion for a new trial is overruled, and judgment for 
the plaintiff on the verdict is ordered. 

Oeorge H. Forsterj for the plaintiff. 

WiUiam Allen BuUer^ for the defendant. 



John P. Lendsat va, I^ewis Stein. In EQCimr. 

Letton patent. No. 202,786, granted to John P. Tindaay, April 28d, 1878, for 
an " improTeoi«Dt in aleere Buppoiien,* are Talid. 

The patented supporter coneiete of two of the daeps patented to Lindaay fay 
patent No. 166,429, November 8d, 1874, one at each end of a connection 
either elastic or non-elaatic. Bnt the case is not one of a mere double nse of 
the dasp. 

lindsay applied for a patent for the supporter in October, 1874. The appfi- 
cation was rejected in NoTcmber, 1874, and again in January, 1876, and 
nothing more was done upon it. In April, 1878, a new application was filed, 
on which the patent was granted: Hdd, that, under § 4,894 of the Reyised 
Statutes, the first application was abandoned, because not prosecuted within 
two years after its rejection, but the inyentlon was not thereby abandoned,, 
and a second application could be made. 

The patent would be inyalid if the invenUon covered by it were in public use 
or on sale in this country for more than two years before the second appli- 
cation. 

The features of Lindsay's inyention pointed out, on the question of novelty. 

The question of the infringement of the patent considered. 

(Before Blatchfobd, J., Southern District of New Tork, February 24th, 1882.) 

Blatohfosd, J. This suit is bronght on letters patent No. 
202,785, granted to the plaintiff, April 23d, 1878, for an 



FEBRUARY, 1882. 871 



Lindsay v. Stein. 



^* improvement in sleeve supporters." Some time in 1873 the 
plaintiff invented a clasp. He applied for a patent for it on 
the Slst of Angast, 1874, and obtained a patent for it, Ko. 
166,429, November 8d, 1874. The specification of that pat- 
ent speaks of the clasp as one '' for stocking supporters or 
various other articles of wearing apparel." The clasp is com- 
posed of two jawed levers, pivoted together, and a spring 
arranged between them. The tail of each jaw lever is made 
concavo-convex in transverse section, the lower lever with its 
jaw being extended within the upper lever and its jaw. At 
the place of connection of the two levers the lower one is 
punched inward on its flanks, so as to form two concavo-con- 
vex teats or projections. The spring is shaped or made of 
wire, and has an eye which is slipped upon the two teats, after 
which the upper jaw lever is arranged with respect to the 
spring and the lower jaw lever in proper position, and then 
is punched inward on its flanks, so as to enter the two teats, 
and thus the two levers are connected and pivoted together. 
The levers cover and protect the spring, and, as the specifica- 
tion says, prevent it ^^ from being caught in the stocking or 
clothing " and from moving laterally or getting out of place. 
The specification says that each of the jaws may be notched 
or provided with teeth in its opposite edges, and that, by hav- 
ing the jaw of the lower lever close into the concavity of the 
jaw of the upper lever, a much better hold of the " material 
or stocking " will be secured than when the jaws abut to- 
gether at their edges. The tail of the upper lever has a 
slotted head, which is projected from the tail in such manner 
that its flanks, in case the clasp is pressed '^ against tlie leg of 
the wearer," may bring up against it, " in a manner to prevent" 
the tail of the lower jaw from being accidentally moved in- 
ward so as to open the jaws sufficiently to cause them to let 
go their hold " on the stocking ; " and " the slotted head is 
also to enable the clasp to be attached to a strap of a stocking 
supporter." The claim of No. 156,429 is this : " The clasp 
composed of the levers provided with the operative spring, 
pivoted together by means of the indentations, as described, 



872 SOUTHERN DISTRICT OF NEW YORK, 

Lindsay tr. Stein. 

and made with concaycK^onvex jaws and taik, and with the 
one jaw to close within the concavity of the other, all sab^ 
Btantially as specified." 

In January or February, 1874, the plaintiff invented the 
sleeve supporter afterwards patented by No. 202,735. It 
consisted of two of the clasps described in Ko. 156,429, one 
being at each end of a connection either elastic or non-elastic. 
!No. 202,735 describes the supporter as one '^ for the sleeves 
of shirts and other garments." It is applied to the sleeve in 
a direction longitudinal with the arm, '^ thereby avoiding the 
compression and consequent interference with the free circu- 
lation of the blood incident to that class of supporters which 
partially or entirely encircle the arm." One clasp grasps a 
fold of the lower part of the sleeve to be supported, while the 
other clasp grasps a fold of the upper or supporting portion of 
the sleeve, the lower portion of the sleeve being drawn up to 
the desired distance before attaching the second clasp, the in- 
termediate portion between the two clasps being drawn up 
into folds by that operation. The specification disclaims ^^ a 
garment supporter consisting of. an elastic strap and two 
tongued plates attached to its ends, the tongues being made 
to enter holes in the garments, and being afterward clinched 
down thereon." It also says: "My improved supporter 
simply grasps the sleeve, and does not go into or through it, 
and, consequently, in detaching the supporter therefrom, it 
does not require to be pulled lengthwise, and thereby cause 
undue strain, which tends to tear the sleeve. Nor does my 
supporter require cuts or holes to be made in the sleeve to re- 
ceive it, as is usually the case with garment supporters. '^ The 
claims of No. 202,735 are two, as follows : " 1. The im- 
proved method of supporting or shortening the sleeves of 
shirts and other garments without compression, to avoid in- 
terference with the free circulation of the blood of the wearer 
incidental to the use of encircling bands, by means of a 
holder, consisting, essentially, of a short piece of elastic or 
non-elastic webbing, provided at each end with an automatic 
clasping device applied to the sleeve in the direction of its 



FEBRUARY, 1882. 878 



lindsay v. Stein. 



length, subBtantiallj as described and shown. 2. As a new ar- 
ticle of manufacture, a sleeve supporter consisting of the 
strip B, provided at its ends with the clamping jaws A A, all 
combined and adapted for nse substantially as described." 
The plaintiff, after making one of these supporters in January 
or February, 1874, showed it to other persons and illustrated 
its use at that time, and used it himself satisfactorily in March 
or April, 1874. He made a second supporter of the same struct- 
ure in September, 1874, as a model for an application for a pat- 
ent. His application was filed in the Patent Office, complete, 
October 28th, 1874. The specification was sworn to October 
20th, 1874. The drawings were substantially the same as 
those in Ko. 202,735, and the description was to the same 
effect. The claim was substantially like claim 2 of No. 
302,735. The spring closes the jaws and they are opened 
by pushing the tails of the jaws towards each other against 
the action of the spring, the tail of the lower jaw projecting 
downward. This application was rejected November 9th, 1874, 
on the ground that it did not involve invention, in view of 
No. 156,429, and of a patent to Langford and one to Boughton. 
On December 26th, 1874, amendments were filed. One, to 
obviate the Boaghton patent, disclaimed a supporter consist- 
ing of an elastic strap and two hooked plates fixed to its ends, 
t£e hooks ^' being to enter a garment." Another disclaimed 
either of the clasps separate from the strap. The amend- 
ments were considered, and, on January 2d, 1875, the appli* 
cation was again rejected, in view of the same references. 
Nothing more was done till April, 1878. On the 9th of 
April, 1878, a new application was filed, complete, with a 
new petition, oath, specification, drawing and model, and a 
new fee. The oath was made April 5th, 1878. On the 11th 
of April, 1878, the application was rejected as being '^ found 
to be lacking in patentable novelty, in view of the state of the 
art," because the clasp was old, as seen in No. 156,429, and 
because ^^ suspending straps, composed of an elastic band, with 
a clasp, buckle or other adjusting device on each end, is also 
old, and, therefore, in the present instance, the alleged inven- 



374 SOUTHERN DISTRICT OF NEW YORK, 

LlDdiay v. Stein. 

tion is but the mere Bubstitution of one old clasp in the pkce 
of another upon the ends of the strap, and is not deemed an 
invention." Keference was made, in the letter of rejection, to 
patent No. 88,984, to Bobbins, and to patents to Oibbons, 
Church and Eames, and Philbrook. On the 11th of April, 
1878, after said rejection, amendments were made, making the 
specification and claims exactly as they are in Ko. 202,735. 
The application was rejected again on the 13th of April, 1878, 
on the same references and on a patent to Sanford, but on the 
same day the patent was ordered to be issued. 

It is contended, for the defendant, that No. 156,429 con- 
tains everything that is found in No. 202,735 ; that there was 
no invention involved in passing from the clasp to the struct- 
ure with one of the clasps at each end of it ; and that the case 
is one of mere duplication or double use, or, at least, of merely 
a new application of the clasp. It is quite apparent, from 
the evidence, that the clasp was applicable, and was ap- 
plied, for use, by being attached to one end of a piece of 
elastic and then fastened to a stocking to hold it up, the 
other end of the elastic being fastened by a button or other 
device to another garment above. Large numbers of the 
clasps were made and sold and used in that way. The plaintiff, 
almost simultaneously with his invention of the clasp, capable 
of such separate use, invented the supporter consisting of the 
two clasps and the connecting strip. The latter invention was 
completed before he applied for the patent for the former. 
In that application he might have covered the supporter and 
also claimed the clasp separately, and one patent might have 
embraced both. The supporter is not merely a new applica- 
tion of the clasp. It is something more. As a structure, the 
two clasps with the uniting strip will do what one clasp, or 
one clasp with an attached webbing, cannot do. It is an ar- 
ticle complete in itself, capable of use at any place without 
any appliance except what it contains, and of being moved 
from one place to another, without any previous special prep- 
aration of the garment to receive it. It involves invention, 
beyond what the clasp alone indicated. 



FEBRUARY. 1882. 876 



Lindsay v, Steio. 



The specification of No. 202,735 is criticised, as being ob- 
sscnre and as not pointing out what invention is claimed. The 
first claim is properly to be constraed as a claim to using the 
structure described, consisting of material with the clasp de- 
scribed, or its substantial equivalent, at each end, when such 
vstmctnre is applied to the sleeve in the direction of its length. 
There is no valid objection to this claim. The article can be 
used otherwise than lengthwise of the sleeve. The second 
claim is for the article, irrespective of the manner in which it 
is used. The first claim may be unnecessary and there may 
be little practical difierence between the two claims. But the 
claims sufficiently point out the inventions and they are pat- 
entable. 

By § 12 of the Act of March 2d, 1861, (12 0. S. Stat at 
Large^ 248,) it was enacted as follows : '^ All applications for 
patents shall be completed and prepared for examination with- 
in two years after the filing of the petition, and, in default 
thereof, they shall be regarded as abandoned by the parties 
thereto ; unless it be shown to the satisfaction ^of the Commis- 
sioner of Patents that such delay was ujia voidable." By § 32 
of the Act of July 8th, 1870, (16 M, 202,) it was enacted as 
follows : '^ All applications for patents shall be completed and 
prepared for examination within two years after the filing of 
the petition, and, in default thereof, or upon failure of the ap- 
plicant to prosecute the same within two years after any action 
therein, of which notice shall have been given to the applicant, 
"they shall be regarded as abandoned by the parties thereto, un- 
less it be shown to the satisfaction of the Commissioner that 
«uch delay was unavoidable." This section is substantially re- 
enacted in § 4,894 of the Revised Statutes, approved June 22d, 
1874, the only change being that the words " the filing of the 
petition," in § 32, are altered to the words ** the filing of the 
Application," in § 4,894. On comparing § 32 of the Act of 
1870 with § 12 of the Act of 1861, it is seen that a material 
change was made, by the addition, in §32, of the words, 
^^or upon failure of the applicant to prosecute the same 
'within two years after any action therein." The effect of 



876 SOUTHERN DISTRICT OP NEW YORK, 

Lindsay v. Stein. 

the addition was, that when an applicant for a patent should 
make an application, and complete it for examination, and 
the Patent Office should take action npon it, and reject 
it, and notify him of such action, and he should fail Uy 
prosecute it within two years after such rejection, it should 
be regarded as abandoned, so that it could not be resumed and 
prosecuted further after the lapse of such two years, unless it 
should be shown to the satisfaction of the Commissioner of 
Patents that such delay was unavoidable. It is not the inven- 
tion which should be regarded as abandoned, but the applica- 
tion. In the present case the application of October 28th, 
1874, was rejected a second time January 2d, 1875. That 
application was never prosecuted at all after that. More than 
two years elapsed, and, in December, 1 877, the plaintiff em- 
ployed new attorneys, and gave them a power of attorney, and 
revoked the power of attorney given to his former attorney. 
A paper to that effect was filed in the Patent Office December 
17th, 1877, in the files of the first application. The new 
attorneys, with' the whole matter before them, advised the 
plaintiff that he had better make a new application. They 
did this, unquestionably, because they saw that they could not 
show to the satisfaction of the Commissioner that the delay 
beyond two years from January 2d, 1875, was unavoidable. 
The new appb'cation was made, complete, April 9th, 1878. 

The defendant contends that the effect of the Act of 1870 
is, that when an application is, under § 32, to be regarded aa 
abandoned, no new application for a patent for the same thing 
can be subsequently made. There is nothing to prevent a 
subsequent application. When made, it can derive no aid, as 
to time, from the prior abandoned application, and the appli- 
cant must stand, as to defences in suits on the patent, as if the 
new application were the first application. Therefore, as 
applied to the present case, the words '^ two years prior to his 
application," in § 4,886 of the Bevised Statutes, and the words 
" two years before his application for a patent," in § 4,920, 
must mean, two years before April 9th, 1878, so that No. 
202,735 wiU be invalid, if the inventions covered by it were- 



FEBRUARY. 1882. 37T 



liodsay v. Stein. 



in public use or on Bale in this conntry for more than two 
years before April 9th, 1878. The dedsions of the Conrtg 
nnder the statutory provisions before that in § 82 of the Act 
of 1870, in regard to the continuity of an application once 
made, can have no application to a case like the present, in 
view of the express provision of § 32. An application which 
is to be ^^ regarded ias abandoned " must be regarded as aban- 
doned by the Commissioner and the Courts, aud, if it is to be 
regarded as abandoned, it cannot be regarded as subsisting for 
the purposes of §§ 4,886 and 4,920. The cases of Singer v. 
Braunadorf^ (7 Blatchf. C. C, jB., 521,) Blcmdy v. Qriffithy 
(8 FUKer^B Pat. Cas€8, 609,) H(rwes v. McNeal^ (15 Blatchf. 
C. O. R., 103,) Godfrey v. Eamee^ (1 Wallace, 817,) and 
Smith V. Qoodyea/r Dental Vulcanite Co., (3 Otto, 486,) arose 
under statutory provisions enacted before the Act of 1870 and 
can have no application to the present case. 

It is argued, for the plaintiff, that, as No. 202,735 waa 
granted on the second application for the same invention that 
was claimed in the first application, it must be presumed that 
the Commissioner had before him evidence showing that the 
delay in prosecuting the first application was unavoidable. 
This would be so if, in fact, the Commissioner had allowed the 
first application to be prosecuted further. But he did not. 
It was the application of April 9th, 1 878, that was rejected 
April 11th, 1878, and granted April 38th, 1878, and No. 
202,785 was issued on that application, as appears on its face 
and by the records of the Patent OflSce. 

The defences of want of novelty and of public use and sale 
of the invention for more than two years before the applica- 
tion for the patent are urged by the defendant. The latter 
defence is not set up in the answer, but the plaintiff appeara 
desirous of having it considered under the proofs. 

There is no satisfactory evidence that the plaintiff, either 
by himself or by his agents, allowed his sleeve supporter to be 
in public use or on sale at any time prior to two years before 
April 9th, 1878 ; or that a structure substantially like his waa 
in public use or on sale at any time prior to two years before 



878 SOUTHERN DISTRICT OF NEW YORK, 

Lindflay v. Stein. 

April 9th, 1878. The date of any sale by Taylor Brothers 
cannot be fixed earlier than January, 1877. There was no sale 
by Shelby before the last part of 1876. The Thomas transac- 
tion was in May, 1876. The evidence as to sales by Rollins 
does not show, beyond a reasonable doubt, that such sales 
were made before April 10th, 1876. 

Defendant's Exhibits 1 and 2 are arranged to penetrate or 
pass through at one end one portion of the article to be sup- 
ported, while at the other end are loops or hooks to pass over 
or around buttons or some other previously arranged attaching 
means formed upon the garment. Defendant's Exhibits Nob. 
3 and 16 have no hinged jaws and require a further shortening 
of the garment to allow of attaching or disengaging the wires, 
and the device is liable to lose its hold and cannot seize the 
margin of a garment. Defendant's Exhibit No. 21 is the 
patent to Bobbins, Ko. 88,984, and defendant's Exhibit No. 
5 is a garter made according to that patent, in part. They 
fihow devices the structure of which is such as to necessitate 
the penetration of the garment at each end of the webbing, 
by the devices. The Eobbins patent is the only one of the 
prior patents referred to by the Patent OlKce, (except No. 
156,429,) which has been put in evidence by the defendant. 
It shows two like devices at each end of a piece of webbing. 
It is of the date of 1869. But the existence in it of identity 
between the fastening devices at each end of it does not, in 
view of the evidence as to the invention by the plaintiff of the 
clasp and of the supporter, and of the characteristic features of 
the supporter, show a want of patentability in the invention of 
the supporter. The Ellis patent, No. 187,539, requires a but- 
ton at one end of the device. The Cook patent. No. 55,064, 
has no clamping jaws and no webbing with holding means 
at each end of it. The Kendall or Vail patent, No. 61,011, 
has no clamping jaws on each end of a strip of webbing. De- 
fendant's Exhibit No. 22, the Demorest book, is not proved 
as to its date of publication and is not set up in the answer. 
Independently of this, it is not clear what the thing shown in 
it is, or how such thing is to be used. From what can be 



FEBRUARY, 1882., 879 



Lindsay v. Stein. 



made oat it is liable to the same objections as defendant's Ex- 
hibit 3, requiring the fabric to be forced into a narrow opening, 
and requiring increased shortening to free the fabric, and hav- 
ing no clamping jaws. As to the Exhibits Furness and Fnr- 
ness No. 3, no original article actually made more than two 
years before April 9th, 1878, is produced. The question as to 
the time when any sleeve supporters of the kind were made 
and sold rests wholly on the unaided memory of Mr. Furness, 
and, in view of all the evidence, it must be held that the de- 
fence as to the Famess sleeve supporter is not established. 
Irrespective of this, it is not at all clear that the Furness 
Exhibits embrace the plaintifi^s invention, or will practically 
accomplish the results which the plaintiff's supporter will 
accomplish. None of the prior articles or patents anticipate 
the invention of the plaintiff, and none of the defences con- 
sidered are established. 

It appears that the patented article is one of great utility 
and has found a ready market, as compared with any prior 
structures. Under the plaintiff's authority, from 860,000 to 
1,160,000 pairs of his supporters have been sold during 1878, 
1879 and 1880, and there have been infringements. The ar- 
ticle combines these points of advantage — it does not compress 
the arm ; it does not require adjustment of length for arms of 
different sizes ; it does not require previous preparation of the 
garment, by putting on buttons or making eyelet holes at 
either end ; it can be used to support cuffs and stiff articles on 
their edges ; it can be applied by one hand ; it is secured with- 
out perforating the garment ; it is not pulled off by a slight 
strain ; it does not require to be pulled lengthwise to release 
its hold. It has superseded older articles and is largely rec- 
ognized by the public and licensees as a useful invention. All 
these matters are very persuasive in favor of its patentability. 
(Smith V. Ooodyear Dental Vulcanite Co.^ 3 Otto^ 486, 406.) 

The defendant has sold two structures. No. 1 and No. 2. 
No. 2 is identical with the plaintiff's, in all substantial partic- 
ulars. It is a sleeve supporter, formed of a short piece of 
elastic webbing, with a clasp at each end. Each clasp is com- 



380 SOUTHERlf DISTRICT OF NEW TORE, 

LlndMy w. Stein. 

posed of two jawed levers, pivoted together, with a spring 
between them, which closes the jaws automatically, and the 
jaws are opened by pressing together the tails of the levers. 
Each jaw has across its end teeth or projections which take 
into corresponding indentations in the end of the other jaw. 
This construction is an equivalent construction for the dosing 
of the lower jaw within the upper jaw, as shown in No. 
156,429 and in the drawings of No. 202,735. The bending of 
the fabric, in the one case transversely and in the other case 
longitudinally, assists in holding it, though it by no means fol- 
lows that No. 202,735 would not be infringed if the clasps had 
flush meeting edges in the jaws with a spring, or means of 
holding them together, sufficiently powerful. No. 1 is a 
sleeve supporter having at each end of a piece of elastic web- 
bing a clasp made of two jaws of springy metal, the end of 
each of which is a lip projecting towards the other jaw, one 
lip shutting inside of the other and the ends of the lips not 
meeting. There is a slide enclosing the shanks of the two 
jaws, and the bite is made by sliding the slide towards the 
lips, which forces the lips together. Sliding the slide in the 
reverse direction allows the jaws to open, which they do by 
their springy action, they being set to stand open unless made 
to shut. They shut against the action of the spring, while 
in the plaintiff's form the clasp opens against the action of the 
spring. The form of clasp in No. 1 is substantially the clasp 
shown in the Ellis patent, No. 137,539, granted April Sth^ 
1873. But that patent shows that Ellis contemplated the use 
of only one clasp, and that at the top of a stocking, while 
above the supporter was to be attached by a button to a waist- 
band. No. 1 has all the points of advantage of the plaintiff's 
structure. It has an automatic clasping device at each end, 
consisting of clamping jaws, and the structure as a whole, and 
in its pai*tB, and in their co-operation to effect the result pro- 
duced by the whole, is the equivalent of the plaintiff's struc- 
ture. The change in the springy action, to hold open instead 
of to hold shut, is immaterial in regard to the action of the 
structure as a whole. There was nothing in the Ellis clasp by 



MARCH, 1882. 881 



Donnelley, Gaaaette A Loyd v. Iren. 



itself to indicate the plaintiff's supporter or Ko. 1, any more 
than there was anything in the plaintiff's clasp by itself to 
indicate the plaintiff's supporter or No. 2. On the foregoing 
i^onsiderations it must be held that both No. 1 and No. 2 in- 
fringe the second claim of No. 202,735, and there must be a 
decree to that effect and for an account of profits and damages, 
with a perpetual injunction, and costs to the plaintiff. 



Mtmean <& Philipp^ for the plaintiff. 
«/. B. Staples^ for the defendant. 



DoiiOirELLEY, GaSSSITB & LoTD 

Matthew J. Itebs Ain> James Sttllivan. Ik Equift. 

The title deposited with a yiew to a oopyright for a book was this : *' Orer One 
ThonBand Recipes. The Lake- Side Cook Book; A Complete Manaal of 
Practical, Economical, Palatable aod Healthfdl Cookery. Chicago : Donnelley, 
Loyd and Company, 1878.** The book was published with this title page : 
** The Lake-Side Cook Book No. 1. A Complete Manaal of Praotioal, Eoo- 
nomical. Palatable and Healthful Cookery. By N. A. D.," followed by the 
imprint of the place of publication and the name of the proprietor and the 
notice of oopyright, on the title page : Htld, that the omission, in the title 
page of the published book, of the words '* Otst One Thousand Recipes," 
and the addition, in it, of the words " No. 1 " and " By N. A. D." were im- 
material, and that the title published was deposited, in compliance with 
§ 4,966 of the Reyised Stotutes. 

(Before Blatohpobd, J., Southern District of New York, March 4th, 1882.) 

Blatohfobd, J. On the 19th of April, 1878, Donnelley, 
Lojd and Company, a copartnership firm, deposited in the of- 
fice of the Librarian of Congress the title of a book, the title 
or description whereof was in the following words : '^ Over 



382 SOUTHERN DISTRICT OF IHSW YORK, 

DoniMlIey, GuMtto A Loyd «. Iven. 



One Thousand Recipes. The Lake-Side Ck>ok Book ; A Com- 
plete Maunal of Practical^ Economical, Palatable and Health- 
fol Cookery. Chicago: Donnellej, Lojd and Company, 
1878," the right whereof they claimed as proprietors in con- 
formity with the laws of the United States respecting copy- 
rights. Whatever right and title the firm acquired in the 
copyright it subsequently assigned to the plaintiff. The firm 
and the plaintiff, in publishing the book which it is claimed 
the copyright applies to, have always published it with the 
following title page : " The Lakeside Cook Book No. 1. A 
Complete Manual of Practical, Economical and Palatable and 
Healthful Cookery. By N. A. D.," followed by the imprint 
of the place of publication and the name of the proprietor 
and the notice of copyright, on the title page. The plaintiff 
moves for an injunction, before final hearing, to restrain the 
infringement of the copyright. The defendants have printed 
and published a book, the body of which is a verbatim copy, 
as to matter and type, of the plaintiff's book, and which has 
the following title page : ^^ The flome-Made Cook Book ; A 
Complete Manual of Practical, Economical, Palatable and 
Healthful Cookery. New York ; M. J. Ives & Co., 86 Nassau 
Street." 

The defendants contend that the copyright is invalid be- 
cause the words, " Over One Thousand Recipes " are not on 
the title page of the plaintiff's published book, and are in the 
title deposited, and because the words '* No 1 " and " By N. 
A. D." are on said title page and are not in the title depos- 
ited. The provision of § 4,952 of the Revised Statutes is, 
that the exclusive right secured under a copyright is to be 
enjoyed " upon complying with the provisions of this chapter." 
Section 4,953 says that copyrights shall be granted ^' in the 
manner hereinafter directed." There is no investigation or 
decision by any officer, nor is any grant issued. What is done 
is to be done by the party desiring the copyright. Nothing 
is to be done by any officer, except that the librarian of Con- 
gress is to give to the proprietor a copy, under seal, of the 
recorded title, when required. Section 4,956 provides as fol- 



MARCH, 1882. 38S 



Donnelley, Gaeaette A Loyd v. lyera. 



lowfi : ^' No person shall be entitled to a copyright unlese he 
shall, before publication, deliver at the ofSce of the librarian 
of Congress, or deposit in the mail, addressed to the librarian 
of Congress, at Washington, District of Columbia, a printed 
copy of the title of the book * ♦ ♦ for which he desirea 
a copyright." Section 4,967 provides that " the librarian of 
Congress shall record the name of sach copyright book 
* * * forthwith, in a book to be kept for that purpose, 
in the words following : " The form states the fact of the de- 
posit of ^^ the title of a book " on a day named, by a person 
named, '* the title * * * of which is in the following 
words, to-wit : (here insert the title * * *,) the right 
whereof he claims as proprietor, in conformity with the laws 
of the United States respecting copyrights." By § 4,964, 
damages for the violation of a copyright of a book are made to 
depend on the fact of the recording of the title of the book, 
*' as provided by this chapter." 

It was settled in the case of Wheaton v. Peters, (8 Peters^ 
591,) that there can be no exclusive property in a published 
work except under some Act of Congress ; that Congress^ 
when aboat to vest an exclusive right in an author, has the 
power to prescribe the conditions on which such right shall 
be enjoyed ; and that no one can avail himself of such right 
who does not substantially comply with the provisions of the 
law. It has been held to be necessary to show that the title 
was deposited before publication ; that this is an absolute re- 
quirement ; and that the Court cannot disregard the require- 
ment. {Cfhose V. Sanborn, 4 Clifford, 306.) In Baker v. Tay- 
lor, (2 Blatchf, C. C. B,, 82,) it was held that, under a title 
deposited in 1846, a printing, on the page following the title 
page in the book, of a notice that the copyright had been en- 
tered in 1847, was fatal to the plaintiflPs right. The Court 
said : " Even though the failure to publish the statutory 
notice arose from mistake, this Court would have no power 
to accept the intention of the party, in place of a perform- 
ance, any more in respect to the insertion of that notice on 
the proper page, than in respect to the deposit of the title of 



884 SOUTHERN DISTRICT OP NEW YORK, 

Donnelley, Gaaeetfce A Lojd tr. Irers. 



the book.'-' The same principle was applied in Strove t. 
Schwedler^ (4 Blatohf, C, (7. ^., 23.) In Parkinson v. Zor 
sdUj (3 SawyeVj 330,) it was held, in reference to the deposit 
of the title, that, under §§ 4,952 and 4,956, a person can have 
no copyright nntil he has performed that condition. 

In the present case a certain title was deposited. That 
title, verlxxtim, is not the title page of the book afterwards 
published as the book to which such title appertained. So, 
too, a book with a certain title page was published, but no 
verbatim copy of such title page was deposited before publi- 
<»ttion. The title deposited and the title page of the book 
published contain, in common, the name or designation : 
*^ The Lake-Side Cook Book ; A Complete Manual of Prac- 
tical, Economical, Palatable and Healthful Cookery." The 
words ^^ Over One Thousand Recipes," in the deposited title, 
Are not on the title page of the published book ; and it is 
shown that there are in the book only about 800 recipes. 
The words " No. 1 " and " By N. A. D." are in the title page 
of the published book and are not in the deposited title. 
What the statute requires to be deposited is ^' a printed copy 
of the title." The language is not *' a printed copy of the 
title page," that is, a printed copy of the page containing the 
title. Everywhere in the statute, in reference to the thing 
deposited, it is " the title." What is " the title ?" Section 
4,957 provides, that, as soon as '^ the title " is deposited, the 
librarian of Congress shall ^^ record the name of such copy- 
right book." Therefore, " the title " to be deposited and re- 
corded is " the name " of the book. The record in the libra- 
rian's book must undoubtedly contain, as the name, the title 
deposited. But the question is as to what is a sufficient title 
or name to be deposited and recorded, when it is seen after- 
wards what is the title page of the book published after the 
deposit. 

The theory of the copyright statutes is, that every book 
must have a title or name or designation — something short 
and convenient by which it may be identified in the speech of 
the people ; that that title or name must appear on it, or in 



MARCH, 1681 886 



Donnelley, Gaasette A Loyd v. lyen. 



it, when pablished, on a title page or its equivalent ; and that 
tneh title or name must have been, before the publication of 
the book, deposited in the designated office. The copyright 
to be protected is the copyright in the book. A printed copy 
of the title of such book is required to be deposited, before 
publication, only as a designation of the book to be copy* 
righted. The title is ^^ a mere appendage, which only identi- 
fies, and frequently does not in any way describe, the literary 
composition itself, or represent its character." The title alone 
is never protected separate from the book which it is used to 
designate. {JolUe v. Jaques, 1 BJMchf. C. G. ^.618, 627; 
09good V. AUen^ 1 Holmes^ 185, 193.) In determining, there- 
fore, whether this book is protected by a copyright, the in^ 
quiry is, whether its title or name was deposited. Its title or 
name is to be gathered from the title or name now given to it 
and appearing on its title page. There is nothing connected 
with its title, on the title page, that is not found in the title 
deposited, except the words " No. 1 " and " By N. A. D.** 
Everything else, the real name and designation of the book, 
as found on the title page, is in the title deposited. The 
words not found in the title deposited are immaterial and no 
part of title or name. The '^By N. A. D." is mere surplus- 
age, and neither helps nor harms the title. The ^^ No. 1 " 
appears to have been put in because the same parties, in 1878, 
copyrighted and published a book called ^^The Lake-Side 
Cook Book No. 2." Under the foregoing views, the title of 
the book was deposited before publication. The presence, in 
the title deposited, of the words ^^ Over One Thousand Reci- 
pes " is immaterial. They are no part of the substantial title. 
When the title was deposited it may have been intended to 
put into the book over one thousand recipes. That purpose 
was afterwards changed. Yet the book was published with 
the same title substantially. Aside from this, it is sufficient 
if the title of the published book was deposited, without its 
being necessary that everything in the paper deposited as a 
title should be reproduced on the title page of the book after- 
wards published. The requirement as to the deposit of the 
Vol. 2X— 25 



886 NOBTBERN DISTRICT OF NEW TORE, 

The N. T. Gnpe Sugar Co. v. The American Grape Sugar Go. 



title having been substantiaUj, in good faith, complied with, 
{MyerB Y.CaUagham^ 6 Fed. Rep., 726, 731, 732,) the objection 
that the Btatate as to depositing the title was not observed is 
not tenable. 

There are defects in the bill filed, which mnst be amended, 
and, when that is done, the motion for an injnnction may 
be renewed. The defects referred to were pointed out at the 
hearing. 

James Watacn, for the plaintiff. 

RoberUafij Hartnan dk Cuppia, for the defendants. 



The New York Grape Sugar Company 

vs. 

The American Grape Sugar Company and others. 

In Equity. 

It being donbtftd whether there was any ioTentlon in forming the bottom of a 
starch timy of sheet metal, it hsying before been made of wood and lined 
with metal, a preliminary injnnction on a patent for so forming the bottom 
was refused. 

It would seem that the presumption arising from the grant of a patent^ especially 
when not of recent date, oaght to be a sufficient ground for granting a prelim- 
inary injunction ag^ainst an infringer who does not attack the patent 

Where a plaintiff had bought a patent and proposed to use it not by mannfao> 
turing under it» but by selling licenses, but had not established any license 
fee, and the defendant was responsible, and serious consequences to him would 
arise from granting a preliminary injunction, it was refused. 

(Before Wallaob, J., Northern District of New York, March 6th, 1882.) 

Wallace, J. The complainant moves for a preliminary 
injunction to restrain the defendants from infringing four 
patents owned by the complainant, relating to improvements 



MARCH, 1882. 387 



The N. Y. Grape Sngnr Co. v. The AmericAn Grape Sugar Co. 

iu the apparatus for manufacturing starch. Of these patents 
the first was issued January 14th, 1868, to John A. Owens, 
and was re-issued to Thomas A. Jebb and William T. Jebb, 
May 31st, 1881, for a combination of an agitator and vibrat- 
ing screen or sieve ; the second was issued May 26th, 1868, to 
John A. Owens, for an improvement in starch trays, which 
consists in forming the bottoms of sheet metal; the third 
was issued September 8th, 1868, to J. J. Gilbert, as assignee 
of Colgate Gilbert, for a bolting sieve vibrated, supported, 
and fed as described, and the constituent parts thereof; and 
the fourth was issued to Colgate Gilbert, April 16th, 1878, 
for an adjustable support to a starch separator. Except ae to 
the second patent the defendants have entirely failed to im- 
pugn the right of the complainant to an injunction, if this 
were a final hearing instead of a motion for a preliminary in- 
junction. 

As to the second patent, sufficient appears to raise doubts 
as to the patentable novelty of the improvement described. 
It would seem that the employment of sheet metal as a lining 
for the bottom of a starch tray involves no invention. The 
bottom had been made of wood, and, undoubtedly, when 
lined with lead or copper or galvanized iron, would be more 
durable and more easily cleaned. But it is within common 
knowledge that such linings had been used analogously in 
many other vessels made to contain liquids, because of these 
advantages. Such a lining had also been employed, as de- 
scribed, in the Belgian patent of Heidt, for forming the 
bottom of a trough or channel used for the deposition of 
starch, in place of the tray used by Owen. Inasmuch as the 
Court will not decide doubtful questions as to the com- 
plainant's right upon a motion for a preliminary injunction, 
the motion fails as to this patent. 

The other patents are not seriously assailed, and it is not 
denied that the defendants have appropriated the improve- 
ments covered by them and are now employing them in their 
glucose factories. 

An attempt has been made to present the defence of aban- 



888 NORTHERN DISTRICT OF NBW YORK, 

The N. T. Gn^ Sugar Co. v. The AmerlMD Qrape Sugar Co. 

donment. It is not claimed that there had been an abandon- 
ment before the letters patent were obtained, and the facts 
disclosed signallj fail to show any intention, on the part of 
the owners of the patents, to abandon or dedicate their rights 
to the pablic subsequently. It is not shown that the owners 
of the patents, prior to the Jebbs, who acquired title in the 
spring of 1881, had any knowledge that the defendants or 
others were using the patented improYements. It would 
seem to be fairly inferable, although not distinctly shown^ 
that the Gilberts, who owned all the patents prior to the pur^- 
chase by the Jebbs, iiatended to preclude the public from 
participation in the use of the patents, and to use them exclu- 
sively in their own starch factories. The improvements were 
surreptitiously appropriated from the Gilberts by Fox & Co., 
from whom they were also surreptitiously acquired by the 
Buffalo Grape Sugar Company and these defendants. The 
history of the process patent throws no light upon that of 
the apparatus patents. 

It is insisted that the complainant has not shown such an 
exclusive enjoyment by the owners of the patents, and recog- 
nition by the public of their rights, as to authorize a prelimi* 
nary injunction, in the absence of any adjudication upon the 
patent. If, by the policy of the owners, information as to 
the practical working of the inventions was withheld from 
the public, of course there could not be such a recogni- 
tion and acquiescence as in many of the cases has been held 
to be necessary. Formerly, the rule undoubtedly was, that a 
preliminary injunction would not be granted unless the right 
secured by the patent was forfeited by evidence of an exclu- 
sive or recognized enjoyment of the right, or by former 
adjudications sustaining it. In more recent practice this rule 
has been relaxed when the validity of the patent is not as- 
sailed and the proof of infringement is clear. {North v. 
Kershaw, 4 Blatchf, C. C. jB,, 70 ; The Burleigh Rock Drill 
Co, V. Lohdell^ 1 Holmes^ 450 ; Steam Gauge dk Lantern Co. 
V. Miller, 8 Fed. Rep., 314.) It would seem that the presump- 
tion arising from the grant, especially when not of recent 



MARCH, 1881 2)89 



The N. T. Qnpe Sugar Co. v. The Amerioaa Grape Sugar Co. 

date, ought to snfSce as against a defendant who has appro- 
priated an invention secured to another by letters patent, 
which are not attacked. It is not necessary, however, to pass 
definitely upon the point in the present case, because the in- 
junction must be denied upon another ground. 

The complainant has recently purchased the patents and 
proposes to nse them not by manufacturing under them but 
by selling licenses to others. It is expressly alleged, in the 
moving affidavits, that the complainant does not desire to en- 
join the defendants provided they will accept a license and 
pay damages at the same rate as other licensees. It does not 
appear that the complainant has as yet established any license 
fee for the use of the apparatus patents independently of the 
process patent. The sum which the defendants should pay 
cannot, therefore, well be determined except by an accounting 
for profits, and, as they are entirely responsible, when this is 
had, the complainant can be adequately compensated. Irrep- 
arable damage is an indispensable element upon an applicsr 
tion for provisional injunction. {Sanders v. Logan^ 2 FUhei^s 
Pat. Cos., 167 ; M(yrrU v. Lcywell Mfg, Co,^ 3 Id., 67 ; PuH- 
man v. B. dk 0. E. B. Co., 4 Hughes, 236.) 

On the other hand, the defendants have gradually created 
and developed an extensive market for glucose and grape 
sugar, so large that, if their works were stopped, the demand 
could not be well supplied and serious inconvenience would 
result. They have not only invested a large capital in their 
manufacturing business, but they employ a great number of 
workmen, many of whom would be temporarily cut adrift if 
an injunction were granted. It is difficult to see how the de- 
fendants could remove the patented apparatus without sub- 
stantially dismantling and re-organizing their works. Under 
such circumstances, the equitable considerations which appeal 
to the discretion of the Court, and, within well recognized 
- rules, should lead to the refusal of a preliminary injunction, 
cannot be ignored. 

If the complainant has any reason to doubt the pecuniary 
ability of the defendants, now, or at any future time, to pay 



390 EASTERN DISTRICT OP NEW YORK, 

Guntlier «. The Liyerpool and London u^d Globe Lumranoe Compeoy. 

any decree that may be obtained in the suit^ it may apply for 
a further order requiring the defendants to enter into a bond 
with anreties. 

Diekerson dk Dickerson^ for the phuntiff . 

Bawen^ Rogers dk Locke^ for the defendants. 



Chablbs Godfrey Gunthbr 



The Liverpool and London and Globe Insurance Cokpant. 

In the Second Circuit, actaal dlsbiiraeinente necessarily iociirred in s 8ait» in 
mddition to fees paid for exemplifications and copies of papers, under § 983 of 
the Revised Statates, are taxed io tayor of the preyailing party. 

Accordingly, in a suit at law, $1 paid for serying the summons by which the 
action was commenced was allowed as a disbursement. 

Money paid to a stooogTapher for a copy of the minutes of the testimony giyen 
on the trial was not allowed. 

Interest on the yerdict from the day it was rendered to the day of renderimg 
judgment was allowed. 

(Before BorxDior, J., Eastern District of New York, March 7th, 1882.) 

Benedict, J. Prior to the enactment of the fee bill of 
February 26th, 1853, (10 U, 8. Stat, at Large^ 161,) the actual 
disbursements necessarily incurred and deemed reasonable 
were allowed in the taxation of costs, in accordance with the 
provisions in the laws of the State, (2 R. S,j 634,) by virtue 
of the Eules of Court. (See 1 Blatohf. C. G. R.y 652.) Such 
is the law now unless modified by the fee bill of 1853. That 
fee bill in terms relates to compensation of the officers named^ 
but does contain a provision {p. 168, now § 983, Rev. Stat.) 
allowing clerks to include in the judgment fees for exempli- 
fications and copies of papers necessarily obtained for use oa 



MARCH, 1882. 391 



Gonther v. The Liverpool and London and Globe Insnraoce C!ompany. 



trial, when taxed bj the judge or clerk. This provision has 
by some been considered as exclnsive and to forbid the taxa- 
tion of any item of disbursement other than fees paid for 
exemplifications and copies of papers, but in this Circuit a 
different understanding has prevailed, and actual disburse- 
ments necessarily incurred have been taxed. (See Hussey v. 
Bradley, 5 Blatchf. C. C. R., 212 ; DennU v. Eddy, 12 /rf., 
195.) The rule for this Oircnit, as laid down in the cases 
referred to, will permit, in this case, the taxation of the item 
of $1 paid for serving the summons by which the action was 
commenced in the State Court. It was a necessary disburse- 
ment actually made in the cause, and is now taxable by this 
Court, by virtue of the Rules of the Court, as it would have 
been prior to the fee bill of 1853. 

The sum paid the stenographers by the plaintiff, to obtain 
a copy of his minutes of the testimony given on the trial, 
cannot be taxed, because the employment of a stenographer 
was not directed by the Court, and there was no consent to 
the insertion of any part of the stenographer's chaiges in the 
bill of costs. 

The item of interest on the verdict from the day of the 
rendition of the verdict to the day of entry of the judgment, 
amounting to some $500, may be allowed. The delay was 
caused by a stay of proceedings during the pending of a 
motion for a new trial. This delay should not be at the 
plaintiff's expense. The payment of interest meanwhile 
might probably be deemed a condition attached to the stay ; 
or, if not, an entry of the judgment as of the date of enters 
ing the motion for a new trial might, if necessary to avoid 
damage to the plaintiff, be permitted ; but I consider the item 
of interest on a verdict within the equity of the statute, 
(§ 966 Rev, Stat.,) and for that reason taxable. {Jlat Bcmk 
V. Mechcmiosl* Nat Bank, 94 U, S,, 437 ; see, also, DoweU v. 
OriavDoldj 5 Saijnyer, 24.) 

The clerk will, therefore, allow the item of $1 paid for 
serving the summons, will reject the item of cash paid the 
stenographer, and will allow interest on the amount of the 



39S 80DTBGERN DISTRICTT OF NEW YORK, 

C!obiini 9. Sebroeder. 

▼erdict from the date of its rendition to the date of entering 
np the judgment. The sum paid for the copy of the record 
of the coroner's inqnest maj also be allowed. 

Oeorge A. Farster^ for the plaintiff. 

BuUer^ StiUman 4& Bvhbwrd^ for the defendant 



OhABLBS £. COBTTBN AlfD 0THEB8 

Nicholas Schboedeb and othebs. In Equity. 

A motioii in this om6 by the defend«nt8 to liftTe the decree opened to put in 

eridenoe mdditionftl matton of defence, was denied. 
An Englieh proyiiional spedficetion is not a petent, within § 4,920 of the Be- 

Tised Statutes. 

(Before Whsbub, J., Soothem District of New York, March 8th, 1881) 

Whbbleb, J. This cause has now been further heard upon 
motion of the defendants to have the decree opened, (19 
Blatchf. G. C. 5., 377,) and leave granted to put in, as further 
defences to the patent, an English proyisional specification, 
left bj James Ritchie Butchart, January 22d, 1866, at the 
office of the Commissioner of Patents in England, with a pe- 
tition for a patent, and other evidence of prior knowledge 
and use. The invention is understood to have been made in 
February, 1866. The introduction of the provisional specifi- 
cation would be unavailing unless it would bring the case 
within the third division of section 4,920 of the Revised 
Statutes : *' that it had been patented or described in some 
printed publication prior to his supposed invention or discov- 
ery thereof." In Smith v. Ooodyea/r Dental Vulcanite Oom- 
jpanj/, (93 V. /&, 486,) the invention was found to have been 



MARCH, 1882. 393 



Cobmrn v, Sohroeder. 



made in the spring of 1855, and there was an English provia- 
ional specification and patent in evidence. The Court, at page 
498, on this snbject, said : ^^ Of the English patent of Oharles 
Goodyear, it is enough to say, that, though the provisional 
specification was filed March 14th, 1865, the completed sped- 
^cation was not until the 11th of September following. It 
was, therefore, on the last-mentioned date that the invention 
was patented." This specification is printed in a book en- 
titled, "Specification of Patents," and, as printed in 1866, 
found in the Astor Library in the city of New York,*; and it 
is urged that this would show a sufficient description in a 
printed publication. If this would be a sufl^cient printed 
publication, it would not be printed until the specification had 
been left for some time at least, and this invention was so 
soon after that that this publication would not appear to be, 
and probably was not, made until after the invention. The 
other new evidence shown consists of affidavits of knowledge 
and use in England, France and Canada, and at Buffalo, New 
York. The evidence of such knowledge and use in a foreign 
country would not, of itself, defeat the patent, or be material. 
{Bev. Stat. J sec. 4,923.) The new evidence of use at Buffalo 
is set forth in the affidavit of John W. Sherwood, to the effect 
that, in 1856, he there, ^^ personally made large numbers and 
quantities of said bottomless trays divided into compartments 

containing two or more inside cells, as above stated, — - 

that the same were at that time in common use for drug store 
and other purposes.^' This evidence, if it was in, and should 
gain credit to its full extent, would not show a knowledge and 
use of this invention as patented, as the patent has been con- 
strued. An urgent appeal is made for the opening of the 
decree on account of the alleged change of issue made by the 
filing of the disclaimer. As the issue was framed, and un- 
derstood by all parties, evidence of structures of more than 
two tiers was applicable, and as much so as it would be since 
two tier structures have been disclairaed; and, apparently. 



394 SOUTHERN DISTRICT OF NEW YORK, 

Cobnrn «. Sohroeder. 

the defendants strove to obtain, and introduced, all th^ evi- 
dence they conld obtain of prior knowledge and nse of 
straetnres of more than two tiers, and the plaintiffs strove to 
meet it. So, there is not only no new issne, but the parties 
were not in any way misled in supposing that the issne left 
after the disclaimer was filed was not in the case before. The 
defendants claimed, and appear to have supposed, that proof of 
two tier structures would be sufficient to defeat the patent; 
they also apparently well understood that, a fartioriy proof 
of more than two tier structures would, and to have acted 
fully upon that understanding. The disclaimer did not 
broaden the issue but narrowed it. The parties have had 
a full opportunity to try, and have diligently availed them- 
selves of the opportunity to try, the question which would 
be open if the case should be again opened. Therefore, the 
filing the disclaimer does not affect this question. There is no 
proof of any specific new evidence to be offered, except that 
of Sherwood, accompanying the motion. It is feally an ap- 
plication to prepare the case over again, although it has 
already been once, apparently, thoroughly prepared and pre- 
sented. This, although quite frequently thought by losing 
parties to be desirable, is not by any rule of law or practice 
allowable. 

The motion must be denied. 

Andrew J, Toddj for the plaintiffs. 
Sa/raud Oreenbaum^ for the defendants. 



MARCH, 1882. 896* 



CroM V. McEinDon. 



Alonzo T. Cb08B 

VS, 

DuifOAH MoKlNNON AND OTHERS. Il7 EqUITY. 

LeMen pAtent No. 199,621, gnwted to AIodco T. Gross, Janiuury 29tli, 1878,, 
for an improvement in fonntain pens, are ralid. 

Hie principal diatinctiye feature of the patent is a spring working between the 
Tibrating writing pin and the air^tube, to project the pin and restrain the 
flow of ink when the pen is not in nse, and yield to the pressare of the point 
of the pin and make room for the flow of ink when the pen is in nse. The 
inyention is not anticipated by a pen in which the vibrating point was acta> 
ated by a weight instead of a spring. 

A daim to the vibrating pin and spring combined with the air-tobe, case of the 
pen and ink4nbe, is a valid claim to a combination. 

(Before Wbbklib, J., Southern District of New York, March 8th, 1882.) 

Whsblbb, J. The orator has a patent, nnmbered 199,621^ 
granted January 29th, 1878, for an improvement in fountain 
pens, the principal distinctive feature of which is a spring 
working between the vibrating writing pin and the air-tube, 
to project the pin and restrain the flow of ink when the pen 
is not in use, and yield to the pressure on the point of the 
pin and make room for the flow of ink when the pen is in 
use. The first claim, which is the one in controversy, is of 
the vibrating pin and spring combined with the air-tube, case 
of the pen, and ink-tube. The defences to this suit upon the 
patent are want of novelty in the invention patented and 
non-infringement. Fountain pens with air-tubes, vibrating 
points, and other necessary parts were well known at the time 
of the plaintiff 's invention, but none of them had his precise 
arrangement of a vibrating point iporked by a spring con- 
nected with an air-tube, as he arranged them. The defend- 
ant McKinnon had a patent for one substantially like the 
plaintiff's except that the vibrating point was actuated by a 
weight instead of by a spring ; in others there were springs^ 



896 SOUTHERN DISTRICT OF NEW YORK, 

Cro68 V. HoKfamon. 

but which were not connected, and did not operate like the 
pkintifiPe. One ground of want of novelty presented and 
urged is the equivalencj of the weight in McEonnon's patent 
to the spring in the plaintiff's. That they are equivalents in 
flome operations is well established and known ; but the ques- 
tion on this part of the case is whether they are equivalents 
in producing the desired result here. The efficiency of the 
weight is affected by its necessary confinement in a small 
working space, and by the necessary inclination of the pen 
from a perpendicular both when in and out of use. Some- 
thing to act more quickly in the direction of the point of the 
pen, without regard to its perpendicularity, was necessary, and 
this was found in the spring, which, in this operation, was 
more than the equivalent of the weight. Another ground of 
lack of patentable novelty is an alleged want of working to- 
gether of the parts mentioned as combined in this claim. 
This position rests chiefly upon the fact that the air-tube, as 
such, has nothing to do with the spring ; that it is a mere 
support to the spring, and, for that purpose, might as well be 
a solid rod. It is a fact that the air in the tube and the 
tubular form of that part have nothing whatever to do with 
the operation of the spring ; but the patent does not rest upon 
the idea that they do. The presence of the air-tube was nec- 
essary in the pen, and the merit of the invention consists in 
making the further use of this necessary part to sustain the 
spring where it is wanted. It does combine with the spring 
for this purpose, and by this invention is made to do two 
things instead of one. The spring could be attached to some- 
thing else, but that would make a different pen, and probably 
not so good an one. 

The defence of non-infringement rests upon the fact that 
the defendants have the spring inside the air-tube instead of 
outside. This may be «n improvement upon the plaintiff's 
mode of attaching the spring to the tube ; but, if it is, it is 
none the less an use of his arrangement. They make use of 
the same parts, for the same purpose, in substantially the 
dame way. 



MARCH, 1882. 397 



Dayiee «. Lathrop. 



Let there be a decree for the plaintiff, according to the 
prayer of the bUl. 

Edwm H. Brown^ for the plaintiff. 

Eugene N. Eliot^ for the defendants. 



Jambs R. Davibs and another, administbatobs of Louisa 

Fluhhb, dbobasbd 

Frangib S. Lathbop, Rbobivbb of the Obntbal Bailboad 

CoKFANT of New Jebsey. 

This floit was brought in a State Court of New York, agaiiiBt the reoeiver of a 
New Jersey railroad oorporation, to recover damages for the death of the in* 
teetate of the plaintifb, oansed in New Jersey, by a train on the railroad of 
the corporation, while it was being operated by the receiver. The complaint 
alleged a liability under a New Tork statute and permissioD given by the said 
State Coart of New York to sae the receiver. The answer alleged the ap- 
pointment of the defendant as receiver by a Court of New Jersey, and his 
subsequent appointment by the said State Court of New York as receiver of 
the property of the corporation situated in Nftw York, and that he operated 
the road as a New Jersey receiver. Afterwards, the defendant, as a citizen of 
New Jersey, the plain tifib being dtiiens of New York, removed the suit into 
this Court, the State Court making an order of removal The case was then 
tried by a jury in this Court, the plaintifis being first allowed to amend 
their complaint by setting up, in addition, as a cause of action, a statute of 
New Jersey, and the defendant to amend his answer by setting up the order 
of the New York Court granting leave to sue and allbging that there was no 
other leave to sue. The Court held that the complaint must be dismissed 
because it set forth no cause of action against the defendant as a New York 
receiver, and because there was no leave to sue him as a New Jersey re- 
ceiver. No order or judgment to that effect having been entered, the plaint* 
ifls moved to remand the cause to the State Court : Heid, that the removal 
was proper, when it was made, and that adding in the complaint the allegatiod 
as to the New Jersey statute did not affect the jurisdiction of this Court. 

(Before BLATOHfOBD, J., Southern District of New York, March 9th, 1882.) 



398 SOUTHERN DISTBICT OF NEW YORK, 

Dayies «. Lathrop. 

Blatohfoed, J. This suit was begun in the Supreme 
Oourt of New York, in AuguBt, 1879. It is brought to re- 
cover $5,000 damages for the death of the intestate of the 
plaintiffs, caused at South Amboy, in New Jersey, by a train 
on the railroad of the Central Railroad Company of New 
Jersey, in June, 1 879, while the road was being operated by 
the defendant, as receiver of the company, through his em- 
ployees who were running the train. The complaint is mani- 
festly framed on a liability of the defendant, in a Court of 
New York, under a statute of New York. The complaint 
alleges that the defendant ^^ is. receiver " of the railroad, ^^ a 
corporation which was doing business in fact under the laws 
of this State, having its principal office, now the office of 
said receiver, in said city of New York ; " that '^ he became 
receiver duly by appointment of Conrt ; " that, ^^ as such re- 
ceiver " he was, in June, 1879, managing and operating the 
road ; and that, ^^ while so operating said road," he, through 
his employees engaged in running a train on said road, killed 
the intestate, by negligence, at South Amboy. The complaint 
then states that the suit is brought for $5,000 damages done 
by such killing to the next of kin of said intestate, a son and 
her husband ; and that the '' plaintiffs, as her personal repre- 
sentatives, for the benefit of, and as compensation for injury 
done to, her next of kiQ, and under the statute of said State 
of New York, pray judgment for the full amount, to-wit^ 
said amount of $5,000 statutory damages, against said defend- 
ant, as well as for costs of this action, permission to bring 
which was given to plaintifb by order of this Court, August 
20th, 1879, or, likewise for the benefit of those indicated by 
said statute, plaintiffs, as such representatives, pray judgment 
against said defendant for such relief as to the Court shall 
seem just." This complaint does not allude to a statute of 
New Jersey. Though it does not say that the defendant was 
appointed receiver by a Court of New York, it alleges per- 
mission given by the Supreme Court of New York to bring 
the suit. The suit, as made by the complaint, must be re- 



MARCH, 1882. 399 



Dayiee v. Lathrop. 



garded as one bronght on a statute of New York against the 
defendant as a Kew York receiver. 

In Angnst, 1879, the defendant put in, in the State Court, 
an answer to the complaint, alleging that he was duly ap- 
pointed receiver of the company by the Court of Chancery of 
New Jersey, in February, 1877 ; that two days thereafter he 
was duly appointed by the Supreme Court of New York 
receiver of the property of the company situated within the 
State of New York ; that such last appointment was in con- 
nection with, and ancillary to, his appointment as receiver by 
the Court of Chancery of New Jersey ; and that, pursuant to 
his appointment as receiver by the Chancellor of New Jersey, 
he operated said railroad during June, 1879. He admitted the 
killing of the intestate at South Amboy, New Jersey, and the 
existence of said next of kin, and the permission of the New 
York Court to bring ^^ this action," and denied the alleged 
negligence. 

In October, 1879, the defendant, as a citizen of New 
Jersey, the plaintiffs being citizens of New York, removed 
the suit into this Court, the State Court making an order of 
removal. In January, 1882, the suit came on for trial in this 
Court, before a jury. The Court, at the trial, allowed the 
plaintijBb to amend their complaint by inserting at the end 
thereof, immediately before the prayer for relief, an allega- 
tion that the statute of New Jersey in force at the time of 
the death of the intestate provided as follows, (setting it 
forth, it being a statute giving, in case of the death of a per- 
son by neglect, where he would have had an action for dam- 
ages for injury if he had lived, an action for damages to his 
personal representatives, for the benefit of his next of kin, no 
limit to the amount of damages being specified.) At the 
same time the defendant was allowed to amend his answer by 
inserting the order of the New York Court granting leave 
to sue, and alleging that no other leave to sue was ever 
granted to the plaintifis. The leave was " to bring an action 
in this Court against said Francis 8. Lathrop, receiver of the 
Central Bailroad of New Jersey, acting as such within the 



400 SOUTHERN DISTRICT OF NEW YORK. 

Drnvies v. Lathrop. 

jurisdiction of the Court, for the alleged wrongful killing of 
said decedent through negligence and careleeanefiB." The de* 
fendant was also allowed to amend his answer so as to admit 
permission to bring ^^an action" instead of "this action." 
At the trial, the order of leave made by the New York 
Court, and the order of the New York Court appointing 
the defendant receiver of the property of the company '^ sit* 
uated within the State of New York," " in connection with 
and ancillary to his receivership " under his New Jersey ap- 
pointment, and the fact that the company was a New Jersey 
corporation, and papers showing the receivership under the 
New Jersey appointment, were put in evidence, (the Court 
having excluded the pbdntiJBPs offer to prove the facts stated 
in the complaint,) and the defendant moved the Court to dis- 
miss the complaint on the grounds that, as to the defendant aa 
a New Jersey receiver, the Court had no jurisdiction of the 
suit, and that, as to the defendant as a New York receiver, the 
complaint contained no cause of action. The Court decided 
that the complaint must be dismissed on those grounds, but 
no order or judgment to that effect has been entered. The 
plaintiffs now move to remand the cause to the State Court 
on the ground that it " does not really and substantially in- 
volve a dispute or controversy properly within the jurisdic- 
tion of this Court." The question as to the propriety of the 
removal, or as to remanding the cause, was not presented at the 
trial. 

The plaintiffs contend that, as the defendant was sued as a 
receiver appointed by the New York Court, by its leave, and 
in it, he must, though personally a citizen of New Jersey, be 
regarded, for the purposes of the removal, as a citizen of New 
York ; that the leave granted by the Mew York Court waa 
to sue in that Court its own officer ; and that the suit was not 
brought against the New Jersey officer. 

The defendant contends that the citizenship of the par- 
ties personally was different and sufficient to warrant the re- 
moval ; that, the suit being brought against the defendant as a 
New York receiver, there was jurisdiction as to the subject- 



MARCH, 1862. 401 

DmTies V. Lathrop. 



matter alleged in the complaint and as to the person of the 
defendant, and there was diyersitj of citizenship, and the 
only defect as to the New York receiver was, that there was 
no cause of action on the facts alleged in the complaint, even 
if they were proved ; that the duty of the Court, under § 5 
of the Act of March 8d, 1875, (18 U. S. Stat, at La/tge, 473,) 
where it has no jurisdiction of the controversy, is '' to dismiss 
the suit or remand it," and it has already decided to dismiss 
it ; and that the motion is too late, because it was made after 
the plaintiffs submitted to and invoked the jurisdiction of 
this Court at the trial. 

This case must be first considered in reference to its condi- 
tion when it was brought and when it was removed into this 
Court. There was then in force a statute of New York, 
{Act of December 18M, 1847, cAop. 450 ; Ad; of AprH 7th, 
1849, chap. 256 ; Act of March 16th, 1870, chap. 78,) pro- 
viding for suits by the personal representatives of a deceased 
person to recover damages for his death by wrongful neglect, 
not exceeding $5,000. The New Jersey Act set up by said 
amendment was passed March 3d, 1848, immediately after the 
first New York Act, and in substantially the same words, 
not being limited to f 5,000, the amount being limited to 
$6,000 by the New York Act of 1849. The New York Act 
does not in terms require that the wrongful neglect or the 
death should have occurred within the territorial limits of 
New York. The original complaint is based on the view that, 
although the occurrence took place in New Jersey, on a rail- 
road there, damages for the death could be recovered in a 
New York Court by virtne of the New York statute, from 
the receiver alleged to have caused the death, he being an ap- 
pointee of the New York Court, and that Court having 
granted permission to bring the suit. The case as made by 
the original complaint had no reference to the New Jersey 
statute or to an appointment of the defendant as receiver by 
the New Jersey Court, and of course there was no occasion 
for the plaintifib then to alle^ or show any leave by the New 
Jersey Court to bring the suit. Accordingly, in lids answer. 
Vol. XX.— 26 



402 SOUTHERN DISTRICT OF KEVT YORK, 

Davies v. Lathrop. 

the defendant set np that he was appointed receiver of the 
company by the New Jersey Court ; that he was afterwards 
appointed by the New York Conrt receiver of the property of 
the company in New York ; that the latter appointment was 
ancillary to the former ; that he was operating the road by 
virtue of his New Jersey appointment; that the intestate 
was killed at South Amboy, in New Jersey ; and that per- 
mission to bring this suit was given by the New York Court. 
The answer demanded judgment for the dismissal of the com- 
plaint. 

The cause of action thus shown by the original complaint 
at the time of the removal involved a subject-matter of which 
this Court could take jurisdiction. There could be no objec- 
tion to suing the receiver as a New York receiver, because 
the Court which appointed him had given leave to sue him. 
No restriction arising out of the words in the order of per- 
mission, *' acting as such within the jurisdiction of the 
Court," as applied to the facts set out in the original com- 
plaint, seems to have been supposed to exist. None such is 
set up in the original answer, and there was a general appear- 
ance by the receiver, and a general answer, and no allegation 
of want of jurisdiction, and an admission that the order gave 
permission to bring ^^ this action." Then the removal petition 
was presented, based on diversity of citizenship. The record 
was filed in this Court November 6th, 1879, by the defendant. 
The plaintiffs never made any motion to remand, but went to 
trial. 

Was the case a removable one, and within the jurisdiction 
of this Court, as it stood down to the time the pleadings were 
amended? The order of the New York Court appointing 
the defendant receiver appoints him receiver of the property 
of the company in the State of New York, or which shall 
come within that State, and of snch property only. It gives 
him the usnal powers of receivers, restraining him from sell- 
ing any of said property without the order of the Court, but 
allowing him to use the same to operate the railroad and the 
ferry-boats of the company. It then enjoins all persons from 



MARCH, 1881 403 



Dayies v. Lathrop. 



taking any proceedings against the company, ^^ or its property 
within the State of New York, or from obtaining any prefer- 
ence oyer other creditors as against the same." It then orders 
that the defendant be deemed receiver of said property '^ in 
connection with and ancillary to his receivership under and 
by virtue of any appointment of himself as receiver by the 
Oonrt of Chancery of the State of New Jersey.'^ The order 
of leave made by the New York Court gives permission to 
the plaintifb ^' to bring an action in this Court," for the al- 
leged wrongful killing, that is, in the Supreme Court of New 
York. But afterwards, on the petition for removal, that 
Court made the order removing the suit into this Court for 
trial, and declaring that it would proceed no farther therein. 
That is equivalent to leave to bring and prosecute the suit in 
this Court, so far as any objection or restriction by the New 
York Court is concerned. It left open only the question 
whether this Court could, by reason of the citizenship of the 
parties, acquire and retain jurisdiction of the suit. The fact 
that the defendant was appointed a receiver by the New 
York Court does not deprive this Court of its jurisdiction 
derived from the fact of his being a citizen of New Jersey 
wlule the plaintiffs are citizens of New York, and from the 
removal proceedings, when the State Court has thus expressly 
sanctioned the removal to this Court. Therefore, the removal 
was regular and proper, when it was made. 

Adding to the complaint the allegation as to the New Jer- 
sey statute and its provisions did not destroy or alter the 
cause of action already attempted to be set forth in it against 
the New York receiver, under the New York statute. This 
is shown by the fact that, in the order amending the com- 
plaint, is found the provision amending the answer, by insert- 
ing the order of the New York Court granting leave and 
alleging that no other leave to sue was granted. At most, 
under the pleadings, the original cause of action was left un- 
touched, and another one was added. At the trial the suit 
seems, under the amended pleadings, to have been regarded 
as a suit under both statutes against both receivers. This 



404 SOUTHERN DISTRICT OF NEW TORE, 

DaTies v. Lafthrop. 

Gonrt having jurisdiction of it as respected the New Yoik 
receiver and the cause of action alleged against him under 
the New York statute, and having jurisdiction by the citizen* 
ship of the parties and by reason of the subject-matter and 
by the permission and order of the New York Courts pro- 
ceeded, as it had a right to do, to adjudicate as to the merits 
of such cause of action, and decided against the phdntiffa 
thereon. It then also decided against any cause of action as 
respected the New Jersey receiver, for want of jurisdiction, 
which must have meant that the want of jurisdiction was that 
there was no leave to sue given by the New Jersey Court, 
the cause of action having arisen in New Jersey. Absence 
of such leave took away the jurisdiction of this Court as re- 
spected the New Jersey receiver. This is fully decided in 
Banrion v. Bwfbour^ (104 U. S.j 126,) a recent case in the 
Supreme Court of the United States. But that is not suffi- 
cient cause for remanding the suit. It might have been suffi- 
cient cause for striking out any cause of action against the 
New Jersey receiver, and it was sufficient cause for dismissing 
the complaint as to the New Jersey receiver. The original 
alleged cause of action against the New York receiver re- 
mained, however ; and, if the amendment to the complaint 
were to be considered as only adding an allegation of a cause 
of action against the New York receiver, founded on the New 
Jersey statute, the decision that the complaint, as amended^ 
did not state a cause of action against the New York receiver^ 
was a decision on the merits, as respected a cause of action 
under either statute, in a suit of which, as before shown, the 
Court had jurisdiction. 

The defendant, while an officer of the New York Court, 
and sued as such, was a citizen of New Jersey. He was a 
representative as much as an executor or a trustee is. In fact, 
he was a trustee. The personal citizenship of the executor or 
trustee is what is regarded. {Bice v. Soustan^ 13 Wallaoey 
66 ; Xnapp v. BaUroad Co,, 20 Id., 117, 128.) The New 
York Court, by the order of removal, based on the New Jer- 
sey citizenship, authorized this Court, as against the New 



MARCH, 1882. 405 



The ProTidenoe A StODington Steamship Go. v. The Yirginim F. A M. Ins. Go. 



York Court, to treat the defendant as a citizen of New Jer- 
sey, sned for a recovery of $5,000 and costs. It confided to 
him the responsibility of defending the suit, and this Coart 
has a right to deal with his personal citizenship, on the ques- 
tion of removal. 

It foUows, that the motion to remand must be denied. 

£. Zoewj/y for the plainti&. 

jB. W. DeForeat^ for the defendant. 



The Pbovidbnob and Stoninoton Steamship Oompant 
The Yirginia Fms Ain) Mabine LfstrEANOE Oompaitt. 

Under the provisions of the Aet of the LegisUtore of New York, passed May 
11th, 1860/(Zkn0t ofNwi York, 1866, ch4^. 694, p. 1,408,) m YiixinU insnrsnoe 
corporation deposited, in 1878, with the insurance superintendent of New 
York, certain honds. In 1879, it withdrew its agency from New York. In 
1881, all its risks outstanding in New York were cancelled. Prior to that 
the honds had heen attached in New York in a soit brought there by a Rhode 
Island corporation on a policy of insurance, which suit was remoyed into this 
Court The defendant moved to set aMde the levy under the attachment: 
flUtf, that the motion must be granted. 

(Before BLATOHroan, J., Southern District of New York, March 18th,* 188S.) 

Blatchfobd, J. The plaintiff is a Bhode Island corpora- 
tion. The defendant is a Virginia corporation. This suit is 
brought to recover $5,000 on a policy of marine insurance, 
issued by the defendant to the plaintiff, insuring a steamer 
against marine perils. It was brought in a Court of the State 
of New York and removed into this Court. On the bringing 
of the suit, in September^ 1880, the State Court issaed an at- 
tachment against the property of the defendant, as a foreign 



i06 SOUTHERN DISTRICTT OF NEW YORK, 

The ProyideDoe A Stonington SteamBhip Ck>. v. The YirginiA F. A M. Ina. Go. 

corporation having property within the State of New York^ 
and it was levied on $10,000 of United States ^per cent reg- 
istered bonds, in the hands of the superintendent of the in- 
surance department of the State of Kew York, at Albany. 
The said bonds were deposited with the insurance superin- 
tendent by the defendant, in February, 1873, under the pro- 
visions of the Act of the Legislature of Kew York, passed 
May 11th, 1865, {laws qf New Torhy 1865, chap. 694, p. 
1,408.) That Act provides, that, '^ whenever the existing or 
future laws of any other State of the United States shall re- 
quire of insurance companies incorporated by or organized 
under the laws of this State, and having agencies in such 
other State, or of the agents thereof, any deposit of securitiea 
in such State for the protection of policy holders, or other- 
wise, or any payment for taxes, fines, penalties, certificates of 
authority, license fees, or otherwise, greater than the amount 
required for such purposes from similar companies of other 
States by the then existing laws of this State, then, and in 
every such case, all companies of such States establishing, or 
having heretofore established, an agency or agencies in thia 
State, shall be and are hereby required to make the same de- 
posit for a like purpose in the insurance department of thia 
State, and to pay to the superintendent of said department, 
for taxes, fines, penalties, certificates of authority, license f ees^ 
and otherwise, an amount equal to the amount of snch chargea 
and payments imposed by the laws of such State upon the 
companies of this State and the agents thereof." On the 8d 
of February, 1866, the Legislature of the State of Virginia 
passed an Act, {Zaws of Virginia^ 1865-6, ehap. 96, jp. 206,) 
the 1st section of which, as amended by an Act passed March 
25th, 1871, {Laws of Virginia, 1870-1, chap. 194, p. 284,) 
provided that no insurance company not incorporated under 
the laws of the State of Virginia £dbould carry on its business 
in that State without first obtaining a license ; and that no such 
company should receive snch license until it should have de- 
posited with the Treasurer of the State certain specified se- 
curities, and, among them, bonds of the United States, to an 



MARCH, 1882. 407 



The ProYidenca is Stonington Steamship Co. v. The Yirginia F. A M. Ids. Co. 

amount equal to 5 per cent of its capital stock, the deposit of 
securities to be in no case of less cash value than $10,000, and 
not being required to be of greater cash value than $50,000. 
The Act of Virginia, of 1866, provides that the bonds are to 
be held to pay the liabilities of the insurance company, upon 
its insurance policies made in favor of any citizen or inhabitant 
of Virginia, and the Treasurer is directed to apply the inter- 
est on the bonds, and the proceeds of the sale of them, to the 
payment of such liabilities. The Act also provides, that, if 
the company shall cease to carry on business in Virginia, and 
its liabilities on its insurance policies, whether fixed or con- 
tingent, to the citizens and inhabitants of Virginia, shall have 
been satisfied or shall have terminated, on satisfactory evi- 
dence of that fact to the Treasurer, he ^' shall deliver" to such 
company the bonds deposited with him by it, or such of them 
at remain after paying its liabilities above specified, or, if 
the company shall reduce the amount of its liabilities, both 
fixed and contingent, upon its policies of insurance to the cit- 
izens and inhabitants of Virginia, below the amount of the 
bonds in the possession of the Treasurer, he '^ may deliver " 
to such company a part of the bonds deposited by it with 
him, but so that the bonds in his possession shall always be 
equal to its liabilities upon the insurance policies to citizens 
and inhabitants of Virginia. 

On the 31st of August, 1879, the defendant withdrew its 
agency from the State of New York. It had outstanding 
policies of insurance against fire issued to residents and inhab- 
itants of New York, to an amount exceeding $10,000, from 
that date until February 15th, 1881, on which day it cancelled 
all its risks outstanding in New York, and called its policies 
in. It then applied to the insurance superintendent for the 
said bonds, but he refused to deliver them because of said at- 
tachment. The bonds were so deposited solely to conform to 
the requirements of the said statute of New York. 

The defendant, having appeared and answered, removed 
the suit into this Court, and now moves to set aside the levy 
under the attachment. The motion is made with the concur- 



408 SOUTHERN DISTRICT OF NEW YORE, 



The ProYidenoe A Stonington Steunahip Co. v. The YirgiDia F. is M. Ins. Oo. 

rence of the insurance superintendent. It is plain that the 
defendant deposited the bonds, under the said statute of New 
York, because the Act of Virginia required from a New York 
insurance company a deposit of securities, for the protection 
of policy holders, which the statutes of New York did not 
otherwise require from a Virginia insurance company. Prior 
to the Act of 1865, of New York, there was no law of New 
York requiring any deposit from a fire or marine insurance 
company of another State of the United States, nor has there 
been any since, except what is required under the provisions 
of the Act of 1 865. The deposit required by § 28 of the 
New York Act of June 25th, 1853, {Laios of New York, 
1858, cliap. 466,) is required only from fire insurance com- 
panies incorporated or organized under a foreign government, 
as distinguished from another State of the United States. 
The enactment by Virginia, of its Acts of 1866 and 1871, 
brought into operation on the defendant the New York Act 
of 1865. But the deposit made under that Act of 1865 is 
made *' for a like purpose " with the purpose for which a de- 
posit is made in Virginia, under the Virginia Acts of 1866 
and 1871, and for no other or further purpose. That purpose 
is the purpose of paying the liabilities of the depositing com- 
pany on its insurance policies to citizens and inhabitants of 
the State where the deposit is made. When such company 
ceases to carry on business in such State, and those liabilities 
no longer exist, the depositing company is entitled to receive 
back the bonds deposited. They were not deposited for the 
j^tection of the plaintiff in this case, nor can they be held, 
under the said statutes of New York, for its protection, by 
the insurance superintendent, or applied by him to any liabil- 
ity of the defendant to the plaintiff, aside from any force 
there may be in the levy under the attachment. 

The question is, whether the bonds were subject to such 
levy, in the hands of the insurance superintendent. The 
plaintiff contends that the bonds are property of the defend- 
ant in this State, and subject to the levy, particularly as they 
are no longer held for the protection of any citizens, residents 



MABCH, 1882. 409' 



The Providence S Stonington Steamship Co. v. The Vlrf^nie F. A M. loB. Co. 

or inhabitants of this State, holding policies issued by the de- 
fendant. 

The insurance superintendent is a public officer of the 
State, created by statute, and charged with the execution of 
the laws in relation to insurance. ISTo case of acknowledged 
authority is found which holds that a public officer of a State, 
charged with a trust, created by a public statute of the State, 
in respect to funds or securities in his possession, can be made 
liable in respect to them, by an attachment in favor of a per- 
son not claiming under the trust. Decisions in analogous 
cases, as to persons holding property or funds by authority of 
a statute or of the law, under a trust imposed in regard to 
them, are numerous. {Brooks v. Cooky 8 Mass.y 247 ; Colby 
V. CoateSj 6 Ct4sh.j 558 ; Colombia Book Co. v. DeOoh/er^ 115 
Mdss.j 67, 69 ; Earria v. Dennie^ 8 Peters^ 292 ; Buoha/nan 
V. Alexander y 4 Howa/rd^ 10.) The principle was applied by 
the Court of Appeals of Virginia, in RoU'O v. Andes Ins* Co,^ 
(23 Oratta/n^ 509,) to a case like the present. The Treasurer 
of Virginia, under the Virginia Acts of 1866 and 1871, held 
bonds deposited with him by an Ohio insurance company. 
It ceased to do business in Virginia, and its liabilities, fixed 
and contingent, to citizens or residents of Virginia, were satis- 
fied. This occurred about a month after an attachment in a 
suit brought in Virginia, against the Ohio company, by a citi- 
zen of Illinois, had been levied on the bonds in the hands of 
the Treasurer. The Ohio company and the Treasurer moved 
to abate the attachment, (1,) because the State, and its officers 
and agents, were not subject to attachment process ; and (2,) 
because the property of the Ohio company in the State treas- 
ury was not liable to attachment at the suit of a non-resident 
of Virginia, but was held in trust there for the benefit of the 
Virginia creditors of the company, and, as to any residue 
after the satisfaction of those claims, in trust to be returned 
to the company. The Court held unanimously that the 
Treasurer of the State, having the control and custody of 
insurance funds and securities under an Act of the Legisla- 
ture, was not subject to the proceeding by attachment, even 



410 SOUTHERN DISTRICT OP NEW TORE, 

The ProTidence A Stonington SteMDahip Co. v. The Yirg^U F. A If. Ine. Go. 

though the foreign company had satisfied all its liabilities in 
the State. The Conrt said : '^ It is a question that concerns 
the State. It is certainly not compatible with her sovereignty 
and dignity to be arraigned before her own tribunals, at the 
suit of individuals, in any other mode than is prescribed by 
her statutes. Nor is it consistent with her interests, or the 
proper administration of public affairs, that her officers shall 
be arrested in their public duties, and required to answer be- 
fore the Courts for funds or securities committed to their 
custody for a specific purpose, under authority of a public 
law. ♦ ♦ * The Treasurer is required by the statute to 
retain the securities in the treasury for the special objects 
contemplated by the Act, until the liabilities of the company 
are settled or terminated. So long as anything remains to be 
done, so long as these liabilities continue, he is expressly pro- 
hibited from disposing of or surrendering them. And when 
the Treasurer is satisfied these securities or funds are no longer 
required to meet any liabilities of the company in the State, 
he is authorized and required to deliver them to the company. 
This is the extent of his authority. His power and duty are 
fixed by the law. Now, whether this does or does not con- 
stitute a contract on the part of the State with the insurance 
company, it is the law for the Treasurer, fixing the measure of 
his authority and his responsibility. He holds the securities 
in trust, to be administered, first for the people of Virginia, 
and then for the company making the deposit. This is the 
destination given them by the law, controlling not only the 
Treasurer but the Courts also ; and it would seem there is 
no power, except that of the Legislature, to change such des- 
tination. * * * In returning the securities to the com- 
pany depositing them, the State complies with her engage- 
ment, as expressed through her statutes. The foreign cred- 
itors have no just cause of complaint. As to them the secu- 
rities are in the same condition they occupied before the de- 
posit was made." These views are sound and nothing can be 
added to their force. The statute of New York is to be re- 
garded as if it were in the same words as the Virginia stat- 



MARCH, 1882. 411 



Rose V. The Stephens and Condit TraDsportatioii Cknopany. 

ute, in reepect to the purpose and terms and conditions of the 
deposit. Under snch a statute the funds are not liable to 
attachment at the suit of a person not claiming under a 
policy issued to a citizen or inhabitant of New York. 

The motion to set aside the levy on the securities in the 
hands of the insurance superiotendent is granted. 

WilhelmiM Mynderse^ for the motion. 

Wheder H. Peckham^ opposed. 



John C. Boss 
The Stephens and CoNnrr Transportation Company. 

Negligence may be inferred from the fact of the explosion of a steam-boiler on 
a yessel, eren where the defendant is nnder no contract obligation to the 
plaintift 

(Before Wallace, J., Southern District of New York, March 18th, 1682.) 

Wallace, J. The plaintiff was injured by the explosion 
of a steam-boiler which was being used by the defendant to pro* 
pel a vessel chartered by the defendant to others to be used for 
the transportation of passengers and freight. If the explosion 
resulted either from the carelessness of the employees of the 
defendant in charge of the boiler, or from the negligence of 
the defendant in sending forth an unsafe and dangerous 
boiler to be used where human life would be endangered if 
the boiler should explode, it is conceded the defendant was 
liable. It is contended, however, that it was error to instruct 
the jury that they might infer such negligence from the fact 
of the explosion, and it is argued that such a presumption 
only obtains when the defendant is under a contract obliga- 



418 SOUTHERN DISTRICT OF NBW YORK, 

Rom tr. The Stephaoa and Coadit Traasportetion GonpMi j. 

tioQ to the plaintiff, at in the case of a common carrier or 
bailee. Undoubtedly, the presumption has been more fre- 
quently applied in cases against carrien of passengers than in 
other cases of negligence, but there is no foundation in au- 
thority or in reason for any such limitation of the rale of 
evidence. The presumption originates from the nature of 
the act, not from the nature of the relations between the 
parties. It is indulged as a legitimate inference whenever 
the occurrence is such as in the ordinary couree of things does 
not take place when proper care is exercised, and is one for 
which the defendant is responsible. It will be snflScient to 
cite two cases in illustration of the rule, without referring to 
other authorities. In Scott v. The London <6 St. Kaiherme 
Dacha Co,^ (3 Hurlstone <& CoUmafij 596,) the plaintiff, as 
he was passing by a warehouse of the defendant, was injured 
by bags of sugar falling from a crane in which they were being 
lowered to the ground. The Court said there must be reason- 
able evidence of negligence, but, where the thing is shown 
to be under the management of the defendant or his servants, 
and the accident is such as, in the ordinary course of things, 
does not happen if those who have the management use 
proper care, it affords reasonable evidence, in the absence of 
explanation by the defendant, that the accident arose from 
want of care. This case is dted with approbation in Ttcms- 
jportation Co. v. Dovmer^ (11 WaU.^ 129.) In MuUen t. St. 
John^ (57 If. Y.^ 567,) the plaintiff, who was upon a street 
sidewalk, was injured by the fall of an unoccupied building 
owned by the defendant, and it was held that, from the hap- 
])ening of such an accident, in the absence of explanatory 
circumstances, negligence should be presumed, and the bur- 
den cast upon the owner to disprove it. 

In the present case, the boiler which exploded was in the 
control of the employees of the defendant. As boilers do 
not usually explode when they are in a safe condition and are 
properly managed, the inference that this boiler was not in a 
safe condition, or was not properly managed, was justifiable, 
and the instructions to the jury were correct. 



MARCH, 1882. 41S 



SSmpflOD V. Dayii. 



The other qaestions which are presented upon the motion 
are not snflSciently Berions to deserve extended comment. The 
instractions to the jury must be considered in their integrity 
and not in isolated parts, and, so considered, present the law 
of the case fairly and correctly. The evidence amply justi- 
fied the jury in the conclusion that the defendant had not 
made such an examination of the boiler as prudence required, 
preparatory to its employment for the season of 1878, and 
which, if made, would have revealed the defect. 

The verdict undoubtedly awarded the plaintiff liberal 
damages for the injuries he sustained, but it is very difficult 
to measure the compensation which a party should receive for 
such acute suffering as the plaintiff experienced. Certainly, 
the verdict is not so obviously extravagant as to indicate 
prejudice or partiality. 

The motion for a new trial is denied. 

Chaunoey Sha^er^ for the plaintiff. 

JBuileTj StUlman <6 Buhiard^ for the defendant. 



Jambs S. Simpson and Geoboe F. Simpson 

vs. 
William H. Davis. In Equttt. 

Tb6 6th daim of design letters patent. No. 12,026, granted to Henry Teztor, 
Noyember 9th, 1S60, for a design for newel posts, namely, " A design for the 
upper portion of a newel poet, consisting of the scrolled ornaments, /, and the 
bead, m, the roees or rosettes, n, upon each side, as specified," is not a claim 
to a single ornament, within § 4,929 of the Revised Statutes. 

It wonld seem that the design for the cap of a newel post is a design for a 
mannfaetore, within said statute. 

A newel post of a certain shape, haying ornaments and a cap, is an artide of 
manufacture, within said statute. 

(Before Bbvbdiot, J., Eastern District of New York, March 18th, 1682.) 



414 EASTERN DISTRICT OF KEW YORK, 

SimpBon v. Daris. 

Bbnbdiot, J. This action is broaght upon a patent owned 
by the plaintifb, which, it is alleged, has been infringed bj 
the defendant. The patent is for design No. 12,026, and waa 
iBsned November 9th, 1880, to Henry Textor. The specifica- 
tion states that Henry Textor is the originator and producer 
of a new and improved design for newel posts, the character 
of which is illustrated by a drawing accompanied by a de- 
scription. There are 11 claims. Only the fifth, the sixth, 
and the eleventh are relied on here. It is not disputed that 
the defendant is engaged in manufacturing newel posts sim- 
ilar in ornament, shape, and configuration to the newel posts 
described in the plaintiffs' patent. The similarity is so great 
that a photograph of the plaintifb' newel post is admitted to 
correctly represent the newel post made by the defendant. 
No question in regard to the infringement is, therefore, 
raised, but it is contended that the patent is void for want of 
novelty as well as of patentability in the subject-matter. 

The fifth claim of the patent is for ^' a design for the up- 
per portion of a newel post, consisting of the scrolled orna- 
ments, Z, and the bead, m, the roses or rosettes, n, upon each 
side, as specified." The statute {Hev. Stat.j section 4,999,) 
authorizes a patent for any new and original ornament to be 
cast or otherwise placed on any article of manufacture. The 
subject-matter of the claim under consideration is for an or- 
nament, not for a newel post or a part of a newel post having 
a new or original shape or configuration, but for an ornament 
intended to be placed upon a newel post. The claim does not 
seek to secure the scroll by itself, nor the bead by itself, nor 
the roses by themselves. Each of these is an ornament, but 
neither of them is new. The claim, therefore, seeks to cover 
these forms associated together in the manner described, as 
composing a single ornament. In the matter of ornamenta- 
tion, mere juxtaposition of old forms is, doubtless, sufiScient to 
authorize a patent for an ornament, when, by means of such 
juxtaposition, accomplished by industry, genius, effort and 
expense, the old forms are made to become* component parts 
of an ornament substantially new in its effect. But, the 



MARCH, 188S. 41S 



Simpson v. Dayis. 



resalt of the industry, genins, efEort and expenae employed 
must, as I suppose, be a single ornament, which, taken as a 
whole, can be considered to be the embodiment of a new 
idea in ornamentation. The amount of the novelty may be 
small, but the effect of the ornament must, to some extent, at 
least, be new. The ornament may, in this sense, be new and 
original, although all the forms used in its composition are 
old and well known forms of ornamentation. 

The claim under consideration is, therefore, not defeated 
when it is shown that scrolls similar in effect to the scroll 
described in the claim, and that beads and roses such as those 
described, have often before been employed in the ornamenta- 
tion of newel posts. The difficulty with the claim does not 
arise from want of novelty in the forms employed, nor yet in 
the want of novelty in the method of arran^ng these forms, 
because, simple as the arrangement is, the case furnishes no 
evidence that a scroll and roses were ever before arranged one 
above another, with only a bead between. But I Und it diffi- 
cult to consider that the scroll, roses, and bead, when arranged 
as described in the claim, constitute a single ornament. There 
is no commingling of the lines forming the scroll, the bead, 
and the roses; no new idea seems to be embodied in the 
method of their arrangement. All that has been done is to 
place these distinct and well known ornaments one above the 
other, without the production of any such combined effect as 
to entitle the whole to be treated as a new and original orna- 
ment. No new ornament has in fact been produced. If, 
therefore, the plaintiffs' action rested upon the fifth claim of 
his patent alone, I should hesitate to uphold it. 

The sixth claim is for '^ a design for the cap of a newel 
post, consisting of the gable-like projection, ^, having rounded 
or curved outlines, the recessed or sunken scrolled ornaments, 
9, the foliated moulding, ^, and the fillet, t/, as specified." 
The statute authorizes a patent for ^'any new and original 
design for a manufacture ; " and this claim is intended to 
cover such a design. The first question presented by this 
daim is, whether the cap of a newel post is a manufacture. 



416 SA8TERK DISTRICT OF NEW TOBB; 

SimpaoD «. DsTis. 

within the meaniDg of the statate. The testimony shows 
that the cap of a newel post is a distinct article, often mann* 
factnred bj itself, but never nsed except in connection with 
other parts, which, taken together, go to make np what is 
known as a newel post. Upon this testimony, I incline to 
the opinion that the article described in the sixth claim, 
namely, a cap of a newel post, may be held to be a manofao- 
tnre ; but whether this be so or not seems of no importance 
in view of the seventh claim of the patent, which is for the 
whole newel post, indading the cap. The statate permits a 
patent for any new, nsefnl and original shape or configaration 
of any article of manufacture. The seventh claim describes 
an article of manufacture, namely, a newel post of a certain 
shape or configuration, and having, among other distinctive 
features, the ornaments described in the fifth claim, and the 
cap described in the sixth claim. 

Against this claim the only defence made is that the dis- 
tinctive features of the newel post described were to be found 
in other newel posts prior to the date of the plaintifiEs' inven- 
tion, and many of them, in fact, copied by the inventor him- 
self from newel posts erected in New York. But here the 
difficulty with the defence is, that there is no evidence that 
any newel post substantially similar in shape and configura- 
tion to the one described in the plaintiffs' patent had ever 
before been designed. The arrangement of ornament and 
shape presented by the plaintiffs' post is new, useful and 
original. The several experts testify that the newel post de- 
scribed in the patent would not be considered, either by the 
trade or by those wishing to buy such articles, to be similar 
to any of the other newel posts put in evidence ; and the 
proof is, that, as between the plaintiffs' newel post and the 
one most similar to it of all those put in evidence, the demand 
has been twenty to one in favor of the plaintiffs' post. More- 
over, the defendant has thought it worth the while to copy 
the plaintiffs' post exactly. 

I am, therefore, of the opinion that the seventh daim of 
the plaintiffs' patent can be upheld, and that the patent se- 



MARCH, 1888. 417 



Shaw V. The Colweli Lead Company. 



cares to the plaintifis the exclnsive right to make newel posts 
such as are in said claim described. The fact being undis- 
pnted that the defendant has made newel posts similar to the 
post described in the seventh daim, it follows that the 
plaintifb are entitled to an injunction as prayed for, and also 
to an accounting. 



^wm H. Browfhj for the plaintifiEs. 
itr. H. Clement^ for the defendant. 



William AirrHomr Shaw 



V9. 

The Colwell Lead Company. In Equitt. 

The second daim of re-iflsaed letters patent, No. 8,744, g^ranted to Peter Nay- 

lor, assignee of William Anthony Shaw, Noyember 28d, 1869, for an im- 

proyement in the mann&otnre of tin-lined lead pipe, the original patent, No. 

74,618, having been granted to said Shaw, Febrnary 18th, 1868, antedated 

Febroary 6th, 1868, is valid. 
The invention defined. 

The qnestlons of novelty and infringement considered. 
Public use for two years before the application for the re-issae of a patent does 

not affoct its validity. 
It is sofficient for an invention to be nsefol in itself to be patentable, and it is 

not necessary it should be better than what was before known. 
The right to recover for infringements of a patent is assignable. 
The question of a verbal license to the defendant to use the patented invention, 

considered. ^ 

(Before Whulcb, J., Southern District of New York, March 18th, 1882.) 

Whbelbb, J. This snit is brought for relief against in- 
fringement of letters patent, re-issue No. 8,744, dated Novem- 
ber 23d, 1869, for an improvement in the manufacture of 
Vol. XX.— 27 



418 SOUTHERN DISTRICT OP NEW YORK, 

Shaw V. The Colwell Lead Company. 

tin-lined lead pipe. The bill allegee the grant of the original 
letters, No. 74,618, dated February 18th, antedated February 
6th, 1868, to tlie orator; the aBsignment of them by the 
orator to Peter Naylor, upon terms that he should pay the 
expenses of a re-issue, prosecute infringers, and pay one-half 
the net profits to the orator ; the re-issue to Naylor, assignee 
of the orator ; infringement by the defendant ever since the 
grant of the re-issue ; and the reconveyance of the patent and 
assignment of all rights of action for infringement, on the 
17th of September, 1877, before the bringing of the bill. 
The answer sets up that the invention had been previously 
patented in England to George Alderson, in English letters 
patent, No. 2,749, on the 25th of February, 1804, and to the 
orator and Gardiner WUlard, in letters patent of the United 
States, No. 41,401, dated January 26th, 1864; that the in- 
yention was in public use and on sale for more than two 
years prior to the application for the re-issued patent, with 
the knowledge, consent and allowance of the orator; that 
the orator, during the years 1866, 1867 and 1868, was the 
treasurer of the defendant, and allowed the defendant to use 
the invention ; and, by a general denial of so much of the 
bill as is not otherwise answered, denies infringement. These 
are the only questions made by the answer that are continued 
in the evidence, or insisted upon in argument; there are 
others raised by the evidence and insisted upon. 

As lead pipe is made by forcing a short and very thick- 
walled piece through dies, when softened by heat, and thereby 
making it into a much longer piece of the same sized bore 
and of the required thickness of wall, so tin-lined lead pipe is 
made by forcing a like short piece, composed of tin next to 
the bore and lead outside, through similar dies, when softened 
by heat, thereby making a much longer piece of pipe with 
the inside of tin and the outside of lead. The great difficulty 
in making it successfully lay in so shaping and proportioning 
the parts of tin and lead in the short piece, that, when forced 
through the dies, the inside would be of tin and the outside 
of lead, each of proper uniformity and thickness. This inven- 



MARCH, 1882. 419 



Shaw V. Th« Colwell Lead Company. 



tion was not of tin-lined lead pipe, for the patent asenimed 
that to be before known, nor of machinery for making sach 
pipe, nor of arranging tin within lead for the purpose of being 
80 forced through dies, for these were either mentioned or 
described in the patent and not claimed. The bodies of the 
tin and lead, when arranged in the short piece, ready to be 
forced through, are called ingots, and the whole a charge, in 
the trade. The specification of the patent set forth a central 
ingot of tin, of the outward form of an inverted double frus- 
tum of a cone, the upper frustum containing a little more 
metal, and being a little shorter and more tapering than the 
lower one, encircled by an intermediate lead ingot of the 
outward form of an inverted frustum of a cone, having a 
deep circular cavity, marked D, in the upper end of the ingot, 
and an outer ingot of lead, of the outward form of a cylinder, 
encircling the other ; and described making the lead ingots 
first, and casting the tin ingot in the intermediate lead one, 
which, as the tin would melt at lower temperature than the 
lead, would permit so casting them together without alloying 
the tin with the lead. There were four claims in the original 
patent : 1. Making the charge of metal in three distinct parts, 
as described, and unitiag them either before or after they are 
put in the cylinder. 2. Making the central ingot or charge 
of tin in the form of a double frustum of a cone, or its equiv- 
alent, for the purpose of securing a uniform thickness of tin 
in the lead tube or pipe. 3. Making the intermediate lead or 
alloy ingot in the form of a frustum of a cone, substantially 
as described. 4. Making the cavities, D, in the upper end of 
the charge, for the purpose specified. 

There are likewise four claims in the re-issue: 1. The 
manufacture of lead-encased tin pipe from ingots, or a charge 
of metal made substantially as herein described, of three 
parts, whether the same be united before or after they are 
put in the cylinder. 2. The manufacture of lead-encased tin 
pipe from a compound ingot, composed of concentric parts 
of lead and tin, when the central ingot is made of tin, in the 
form of superposed inverted frusta of cones, or their equiv- 



420 SOUTHERN DISTRICT OF NEW YORK, 



Shaw 9. The CoIweU Lead Campaiiy. 



alent. 3. In the mannfactiire of the compoand ingot for lead- 
encased tin pipe, the employment of an intermediate cone or 
conee, whereby a large portion of the lead ingot may be cast 
without contact with the tin, thna reducing the alloying of 
the two metala. 4. In the mannfactnre of the compound 
ingot aa herein described, the formation of the tin ingot of 
superposed inverted frusta of cones, the upper one being of 
laiger diameter but proportionately shorter than the other. 

No question was made but that the re-issued patent ia 
properly supported by the original. The infringement claimed 
is described by the orator himself in answer to cross-question 
236, and consists in making a lead ingot in the form on the 
inside of the outside of superposed inverted frusta of cones, 
and placing accurately in the centre a pipe of tin, of the same 
height, and filling the space between them with melted tin, 
making a central ingot of tin of the outward form of super- 
posed inverted frusta of cones, encircled by an ingot of lead 
of the outward form of a cylinder. There is no charge of 
metal in three parts, as described in the first claim, nor of 
intermediate cones, or ingots, as described in the third daim, 
of each patent ; nor of cavities D, as described in the fourth 
claim of the original ; nor of an upp^ frustum of a cone of 
larger diameter but proportionately shorter than a lower one, 
as described in the fourth claim of the re-issued patent. 
There is nothing but the central tin ingot in the form of 
superposed inverted frusta of cones, described in the second 
claim of each. 

The patent of Alderson describes a charge of metal for 
drawing into tin-lined lead pipe, composed of a central ingot 
of tin cast into a hollow cylinder of lead, making the tin 
ingot cylindrical in outward form, and anticipates nothing in 
the claims of either patent, and nothing described in either, to 
be referred to by the claims, except the casting the tin into 
the lead, which may prevent alloying, as mentioned. The 
patent of Shaw and Willard, set up in the answer, is for a tin 
ingot tapering at the lower end, and enlarging at the upper, 
either cast into a lead ingot shaped to receive it, or with a 



MARCH, 1882. 421 



Shaw V. Th« C!olwell Lead CompaDj. 



lead ingot cast about it. This latter patent and the patent 
in snit might infringe upon Alderson's patent if that was in 
force ; but these are for forms of ingots different from his, 
and are only for these improvements in form, and are not 
anticipated as such by the form in his. And for the same 
reason the Shaw and Willard patent does not anticipate this. 
That is for one form of ingot and this for another ; and, as 
such, each stands independent of the other. The second 
claim is for the manufacture of lead-encased tin pipe from 
such ingot. If this means the manufactured article as a pro- 
duct, both these patents would anticipate this, in description, 
for thej both describe such pipe ; and, in fact, this would 
anticipate itself, and on its face would claim nothing patent- 
able, for it mentions and describes the making of such pipe 
before. But the word is not understood, and, in argument, is 
not claimed, to have been used in that sense. It is understood 
to have been used as a verbal noun, signifying the making 
such pipe from such ingots, as set forth in the corresponding 
claim in the original patent. Such construction seems war- 
rantable by the authorities. {Otirtia on PatentSy §§ 76, 77.) 

The point against the validity of the patent on account of 
public use for two years before the date of the re-issue seems 
to rest upon the supposition that the statutes making such 
use a defence to a patent apply to the patent in suit, and to 
the application for that, whether it be an original patent or a 
re-issued patent. No case is cited in support of the proposi- 
tion, nor has any to the contrary been cited or noticed ; but 
there are a great many in whidi patents have been upheld 
that could not have been if this would be a defence, and it 
had been made. The language of the statutes is opposed to 
8uch construction. In section 15 of the Act of July 4th, 
1836, (5 27. S. Stat, at Zargej 128), this defence, as provided, 
is the being in public use or on sale with the consent and 
allowance of the patentee before his application for a patent. 
Section 7 of the Act of March 3d, 1839, (5 U. S. SUU. at 
Large^ 354,) limits this defence to cases of such sale or prior 
use for more than two years prior to such application for a 



422 SOUTHERN DISTRICT OF NEW YORK, 

Sbaw «. The Golwell Lead Company. 

patent. The Bame expression is continued in Beyised Statntes, 
section 4,886, providing for granting patents, and section 
4,920, providing for this defence to a patent. And farther, 
the re-issued patent is not a new patent, but is only an 
amended form of an old one, and the application for the re- 
issne is not an application for a patent, bnt is an application 
for an amendment of one ; and that cannot be such an appli- 
cation as is referred to as being necessary to be made before 
two years of pnblic nse shall have been had. 

There is a qnestion made in the evidence, and insisted 
upon in the argument, as to whether this form of ingot it 
any better, or makes any better pipe, than prior forms, and 
whether, if it does not, there is any utility to support the 
patent. The statutes do not require inventions to be superior 
to, or better than, all other things known, to be patentable. 
It is sufiScient if they are useful in themselves, if they are 
also new. There is no question, upon the evidence, but that 
this form of ingots is useful in the manufacture of this kind 
of pipe, nor but that the defendant uses it. If there is an- 
other form equally useful, or better, open to use by the de- 
fendant, that could be taken, but the right to use that would 
not defeat the patent for this. 

N'one of the reasons set up or urged against the validity 
of the patent seem to be sufiScient to defeat it. It is insisted, 
however, that, if the patent is valid, the use of the invention 
by the defendant has, upon the ground stated in the answer, 
as well as others, been so permissive that the defendant is not 
liable to the orator for it. It is expressly admitted, on the 
record, on behalf of the defendant, that the orator is the 
owner of the patent and of ^^ all the rights which the said 
Peter Naylor acquired thereunder, and that he became such 
owner at the time and in the manner alleged in the bill.'^ 
The right to recover for infringement of a patent, like other 
choses in action, is assignable in equity, and the real owner 
of the right is entitled to maintain a suit upon it, in equity, 
in his own name. Upon the allegations in the bill, and the 
concession, the orator is the owner of the right to recover 



MARCH, 1882. 423 



Shaw tr. The ColweU Lead Company. 



for infringements which accrued to Najlor, as well as for any 
which has accrued to himself since he became re-entitled to 
the patent itself. Naylor had no right of recovery for any- 
thing prior to the date of the re-issned patent, November 
28d, 1869. The permission or estoppel set up in the answer 
coyers only the years 1866, 1867, 1868, and, therefore, can 
be no answer to the daim for infringement now in contro- 
rersy, even if any permission from the orator, alone, would 
be any answer to a claim for infringement against the rights 
of Naylor acquired from him by the orator. 

The evidence shows that the defendant brought suit, in a 
State Court of New York, against the orator, and that the 
orator set up, as a defence to that action, by way of counter- 
claim, that, in the year 1868, he was the owner of the patent, 
and gave the defendant the right to use the invention, for 
which the defendant agreed to pay him what it was reason- 
ably worth ; that the defendant had used the invention ; that 
the use was worth a large sum of money ; and that he had a 
right to collect the gains and profits. And, in this present 
case, the orator had testified, in answer to the first interroga- 
tory, that he allowed the defendant to use the invention upon 
the understanding and agreement of the president and secre- 
tary that the company would compensate him for the use. 
These statements are relied upon and urged as establishing 
such permissive use. The position of the orator, so taken, if 
unchallenged by the defendant, might be a good bar to the 
maintenance of this suit for infringement. But the defend- 
ant does not set this up as a defence, nor accept it as being 
the true situation. The validity of the patent is denied in 
the answer, and all such recognition of its validity is denied 
in the evidence, in effect. The denial of the validity of the 
patent leaves the orator his standing in this Court ; and a de- 
fence to the infringement most be set up, and made out, to 
defeat his right of recovery. No license is set up. If one 
according to these statements was set up, the statements 
would be evidence only, and not conclusive, and it would not 
be safe to say now how such an issue would be found, if 



424 SOUTHERN DISTRICT OF NEW YORK, 

Shaw V. The Colwell Lead Company. 

properly made. These statements refer to time when the 
orator himself held the patent, and before the conveyance to 
Naylor. If sach permission was given it might amoant to 
a mere revocable license, of which the conveyance of the 
patent wonld be a revocation. No license at all from Naylor 
is mentioned, and a mere license from the orator would not 
operate against the rights of Naylor, unless by way of es- 
toppel against these rights in the orator's hands. No founda- 
tion for such an estoppd is laid. It does not appear, so fa^ 
as has been alluded to by counsel, or observed, but the de- 
fendant knew of the conveyance to Naylor, and knew that 
the use of the invention was an infringement of Naylor's 
rights. The orator had ceased to be an officer of, and to be 
immediately connected with, the defendant company, and it 
is not claimed that when he left he undertook to agree that 
the use of the invention patented in this patent might be 
retained. The evidence also shows that, July 28d, 1867, 
the defendant entered into an agreement with Tatham, 
Brothers, a firm, for license to them to use several patents 
owned by the defendant relating to tin-lined lead pipe, and 
its manufacture, upon certain considerations and royalties. 
The contract was in writing, executed by the defendant and 
by that firm, and contained a daase, seventh, providing that 
the agreement should ^* remain in force during the continu- 
ance of the said patents, and any improvement in the manu- 
facture of the pipe made by either " should '^ be for the mu- 
tual benefit of both of the parties to this agreement." The 
orator was an officer of the defendant at the time, and it is 
argued that thereby he became a party to the agreement and 
bound himself to not only give to Tatham, Brothers, but to 
the defendant, any improvement he might make in that man- 
ufacture. The defendant was a corporation, distinct in legal 
identity from its officers, and that, not they, was the contract- 
ing party on one side of that agreement. The clause seems 
to refer to two parties only, one on each side, the firm on 
one side and the coiporation on the other, and it does not 



MABOH, 1882. 435 



Shaw V. The Colwdl Lead Company. 



seem capable of including any others within its scope or 
operation. 

The defendant also insists that it made large outlays upon 
experiments to ascertain the best form of ingot for these pur- 
poses, and that these outlays covered materials for making 
this form of ingot, and that the orator knew of these experi- 
ments and expenditures, and did not object to them, and that 
now he ought not, in justice, to be heard to claim that the 
tise by the defendant of this form of ingot was an infringe- 
ment upon any one's rights. The defendant does not go 
80 far in this direction as to set up that this invention was 
known to and used by others in the employ of the defendant 
prior to the orator's discovery of it, so as to defeat the pat- 
ent ; nor as to show that the expenditures were made in com- 
pleting this invention, or in developing it, on the &ith of any 
representation by the orator that the defendant should have 
the use of it. The outlays were made in experiments upon 
various other forms of ingots ; the orator invented this form, 
and patented it, without objection by the defendant or any of 
its oiBcers, and no expenditure about it is shown other than 
the making such implements as were necessary to use it. 
The defendant may have understood that the use made of the 
invention while the orator was treasurer of the company was 
permitted on account of that relation, and not wrongful, but 
that does not cover the claim of infringement involved in 
this case. The relation ceased, the patent was transferred to 
Naylor and re-issued, and nothing was done by the defendant 
to retain or obtain the right to use this invention. The 
orator obtained other patents alone, and as joint inventor, and 
the defendant carefully obtained the title to them; but it 
appears to have taken no steps to do the same with this. 
The defendant may have been misled into supposing it would 
have the right to use the invention, notwithstanding the pat- 
ent, but, if so, it was without the fault of the orator, so far as 
is pointed out. Counsel have not called attention to the tes- 
timony of any witness, and the testimony of none has been 
noticed, showing that the orator has at any time said anything 



426 SOUTHERN DISTRICT OF NEW YORK, 

Searlt v. Bonton. 

to the officers or agents of the defendant to gi^e them to nn* 
derstand that he should not insist upon his patent. 

Let a decree be entered that the orator is the owner of the 
patent ; that the second claim is valid ; that the defendant 
has infringed that claim ; and for an injunction and an ac- 
count, with costs. 

Amos BroadnaaOj for the plaintiff. 

Ten Eyck <6 Remi/n^toiiy for the defendant. 



Anson Seabls 
Charles C. Bouton and others. In Equitt. 

The Mcond eUim of re-issned letters patent No. 9,297, granted to Anson Searls, 
Jnly 18th, 1880, for an improTement in whip sockets, the ori^al. No. 
160,196, haying been granted April 28th, 1874, and letters patent No. 
281,610, granted Angnst 24th, 1880, to Anson Searls, assignee of John M. 
Underwood, for an improyement in whip sockets, are valid. 

The question of the differeooe between the re-issne and the ori^^nal patent can- 
not be considered unless the original is pnt in eyidence. 

The answer alleged prior knowledge by persons named, bnt not prior nse, and 
aUeged that said persons were " of " a place named, but did not allege knowl- 
edge there or at any other place. Althoogh knowledge at the place named 
was proyed, the proof was objected to because the defence was not alleged in 
the terms provided by statute, and it was held that the defence could not pre- 
vail. 

The question of a license considered. 

(Before Whulu, J., Southern District of New York, March 18th, 1882.) 

Wheeleb, J. This suit is brought upon re-issued letters 
patent. No. 9,297, granted Jalj 13th, 1880, to the orator, for 
an improvement in whip sockets, the original, No. 150,195, 
haying been granted April 28th. 1874; and upon original 
letters patent, No. 231,510, granted August 24th, 1880, to 



MARCH, 1882. 427 



Searls v. Boatoo. 



the orator, as assignee of John M. Underwood, also for an 
improyement in whip sockets. The defences set np in the 
answer, are, to the former, that it was not properly re-issued 
for the same invention described in the original ; that the in- 
vention had been preyionslj patented in several prior patents 
in this conntiy; that the invention was previously ^^well 
known '' to, among others, Charles A. Flesche, John Perpente 
and E. E. Stevens, without saying that it had been used by 
any person ; and that defendants haye not infringed ; and to 
the latter the defence is want of novelty. 

Although this objection to the re-issue is set up in the 
answer, the original patent is not put in evidence at all ; and 
there is nothing properly before the Court by which to de- 
termine whether the original and the re-issue are for the same 
invention or not. As the re-issue was granted by the proper 
officer the presumption is that it was properly granted ; and 
there is nothing in the case to overcome that presumption. 
The patent is for a centrally perforated rubber disk fitting 
loosely into an inner groove near the top of a whip 
socket, to steady the whip, and retained there by its expan- 
sive force keeping its outer edge within the walls of the 
groove, and permitting the insertion and withdrawal of the 
whip by its elasticity. The evidence shows that such disks 
had been for some time known and used for this purpose by 
being placed in the whip socket near the top*, and being 
clamped or held there by the outer edge placed firmly between 
the body and top of the socket, or between a shoulder in the ' 
socket and a closely fitting ring, and by other similar arrange- 
ments for holding the outer edge tightly. These were pat- 
ented in the prior patents set up in the answer. In the use 
of disks so fastened, the insertion and withdrawal of the 
whip would bend the inner part up and down, and cause 
it to break from the outer part at the edge of where it was 
firmly held. The invention of the orator obviated this break- 
ing largely, by allowing the outer edge of the disk to roll in 
the groove with the movement up and down of the interior. 
This kind of disk was not described in any of the prior pat- 
ents* It could be used in a socket formed in one piece in that 



438 SOUTHERN DISTRICT OF NEW YORK, 

Saarls v. BouUnl 

part; and the patent describeB making its oater edge of 
harder mbber than its inner edge, to make it more secnre in 
its place, and still permit the insertion and withdrawal of the 
whip. There are three daims : the first is of a whip socket 
formed there in one piece, with a groove, and such a disk m- 
serted in it; the second is for the combination of such a disk 
so held in place with a whip socket ; and the third is for such 
a combination with a disk having its outer edge of harder 
mbber. The second claim seems to cover the whole that the 
patent can be constmed to cover. The whip socket without 
the loosely fitting disk in the groove would not be new ; and 
such a fitting disk in a whip socket would include one with a 
harder edge. This combination is not shown in any of the 
patents. The patents are all for comparatively small differ- 
ences ; and this difference is small, but it exists, and is huge 
enough to be patented. 

The allegation in the answer as to knowledge, without an 
allegation of use, seems to have been made intentionally, 
in view of the evidence to support it, rather than inadvert- 
ently. The proof, at most, shows that but two sockets were 
made showing this invention, and that these were laid away 
with other specimens, without the rubber disks being in the 
grooves. Flesche, who made them« afterwards took a patent, 
which is one of those set up as anticipations, without this 
feature, and no use of them otherwise is shown. One of 
them, defendants^ exhibit L, is in evidence, with a rubber 
disk, made since, in the groove. As so put together, this ex- 
hibit does seem to show all the elements of this patent, as 
construed. The evidence was seasonably objected to for the 
reason of the lack in the answer, and the question is whether 
such an answer supported by proof will defeat a patent The 
section of the statute relating to the granting of patents pro- 
vides that they may be granted if the invention was not 
^^ known or used " by others ; as if either knowledge or use 
would prevent. (Hev. Stat., sec. 4,886.) The section relat- 
ing to defences and the mode of making them (§ 4,930) pro- 
vides for notice stating not only the names and residences of 



MARCH, 1882. 439 



Searli v. Bovton. 



the perBonB allied to have had prior knowledge of the inyen- 
tion, but adds, ^^ and where and by whom it had been need." 
In Oayler v. Wilder^ (10 How.^ 477,) it was held, that these 
statutes were to be construed together, and with others on the 
same subject, and that prior knowledge of an inyention not 
accessible to the public would not defeat a patent. The 
knowledge might be acquired in a foreign country and the in- 
yention not be patented or described in a printed pubUeation 
there, and such knowledge would not prevent or defeat a pat- 
ent by another in this country. The answer alleges knowl- 
edge by persons of New Haven, Oonnecticut, but not knowl- 
edge at New Haven, or any other place. The proof goes 
beyond this, and shows such knowle<^e as there was to have 
been at New Haven ; but, affirmative defences, and especially 
this defence, as provided and regulated by the statute, must 
be alleged as well as proved, and proof objected to for want 
of allegation will not help out the defence. {Roemer v. Sir 
many 95 U. S.y 214.) This defence cannot prevail, as made. 

The defence of non-infringement rests upon a license 
granted by the orator to John O. Merriam and Edwin Cham- 
berlain, "to manufacture,** "at their shop in Troy, N. T., 
and no other place or places." This appears to be a personal 
license, not transferable ; and a license to make only. Mer- 
riam and Chamberlain had a shop in Troy and constituted a 
firm. Merriam appears to have sold out to a new firm com- 
posed of Edwin Chamberlain and Perry D. Eandall. Edwin 
Chamberlain has since died, and Edward Chamberlain has suc- 
ceeded him in the firm of Chamberlain & Bandall. Merriam 
appears to have ordered materials, or to have permitted 
Chamberlan & Bandall to order them in his name, for use in 
making whip sockets at that shop, but he does not appear to 
have been engaged himself in the manufacture. Sockets 
made under and pursuant to the license would be free to the 
trade, but sockets merely dealt in by the licensees would not 
thereby be made free. The defendants have not made it clear 
that the sockets they have sold, which would otherwise be an 
infringement, were made under and pursuant to the license. 



480 SOUTHERN DISTRICT OF NEW YORK, 

Hoe tr. Eahler. 

Therefore, they must be adjudged to have infringed ; the ex- 
tent of the infringement, unlawfully done, must of course go 
to the master for determination. 

There was some difficulty in having these rubber disks 
thick enough to well retain their places in the sockets, and at 
the same time yielding enough to permit ready insertion and 
withdrawal of difEerent sized whips. Underwood invented 
cutting away portions of the disk at intervals, around, be- 
tween the outer edge and the perforation, making them 
more yielding in the interior, whereby this difficulty was, in 
some measure at least, overcome. His patent is for this im- 
provement. The evidence of anticipating devices shows 
nothing like this. 

As the case is made up and presented, the patents must 
be adjudged valid, and to be infringed. 

Let a decree be entered for the orator, for an injunction 
and an account, according to the prayer of the bill, with costs. 

J. P. Mtohj for the plaintiff. 

ilT. Davenport^ for the defendants. 



BioHABD M. Rob and Stephen D. Titoksb 
CoNBAD Kahlkb. In EgmTT. 

Claims 8 and 4 of letters patent No. 181,217, granted to Richard H. Hoe and 
Stephen D. Tncker, September 10th, 1872, for an " improvement in printing 
preaaes," namely, ** 8. Separating two following sheets of papers, in their trarel 
to the fly frame, into two differeot paths, by an arrangement of tapes and 
switches, and making the trarel of one sheet suitably longer than the other, 
so that, when they meet again, they will issue one upon the other to the fly, 
substantially in the manner described and specified. 4. The employment and 
use of the acyusting roller 69, for regulating the trarel of the first sheet, oon- 



MARCH, 1882. 431 



Hoe V. Eahler. 



stnicted uid operating rabBtantially in the manner deacribed and speotfied," 
are valid. 

Claim 8 is for an arrangement of tapee and switchee, which separates two fol- 
lowing sheets of the printed papers, in their trarel to the fly-frame, into two 
different paths, the trayel of one of the two sheets in its path being suitably 
longer than the trarel of the other of the two sheets in its path, so that^ when 
the two sheets meet again, they will issne one accurately superimposed upon 
the other, to the fly. 

The defendant's apparatus had no fly-frames, the sheets in it issuing in pairs to 
a folding apparatus, and it had single-acting switches, instead of double-act- 
ing switches, at the point wbere the longer and shorter paths took their de- 
parture, and It had no switches to separate the sheets after they had issued in 
pairs, but it was held to inMnge claim 8. 

H., one of the patentees, filed in the Patent Office, in 1864, a careat describing 
the inyention covered by claim 8, and iUustrated it by drawings in a manner 
sufficiently Ml and dear to have enabled the apparatus to be built and put in 
practice. In the affidavit to the caveat, H. swore that he verily believed 
himself to be the original and first inventor of the improvement The caveat 
was renewed in each year from 1860 to 1869, both inclusive. The patent was 
appHed for in April, 1872. H. and T. were the joint inventors of what is 
embraced in the patent, and H. was not the sole inventor. H. believed, at 
the time, that he was the sole inventor. He was so advised by his counsel 
at the time, on the ground that, although he and T. were mutual inventors, 
the fact that T. was the hired employee of H. made the invention the prop- 
erty of H. and authorized the taUng of the caveat in the name of H. alone. 
T. concurred at the time in that view: Hdd, that there was nothing con- 
nected with the caveat to interfere with the validity of the patent, or to pre- 
vent the carrying back of the invention, as a joint invention, to the date of 
the oci^al flflng of the caveat. 

In the contents of the ffie-wrapper was an oath to the specification and applica- 
tion, sworn to by H., at London, England, before "a London commissioner 
to administer oaths in common law.** No other oath by H. appeared now 
among the contents of the file-wrapper. There was a proper oath by T. The 
London commissioner was not an officer specified in § 80 of the Act of July 
8th, 1870, (16 U. 8. 8taL at Large, 202,) as one before whom the oath could 
be taken. The bill alleged '' due application." The answer denied that alle- 
gation generally, but did not point out any defect as to the oath of H. The 
plainti/rs put in evidence the patent. The defendant put in evidence the file- 
wrapper and contents, under the plain tiflh' objection. The defendant took no 
objection, in the record of the testimony, as to the oath, or as to the putting 
in evidence the patent. The defendant did not show that there was no proper 
oath by H. or that the oath appearing was the only oath he made: Hdd, that 
it was not shown that there was not a proper oath by H., and that the pre- 
sumption arising from the grant of the patent and from the recitals in it was 
not rebutted. 

Priority of completion of mechanism, as well as priority of invention, deter- 
mined in favor of H. and T., as between them and C. 



432 SOUTHERN DISTRICT OP NEW YORK, 

Hoe V. Kahler. 

CUim 4 is a daim to the adjiutiiig roller for regnlatiiig tihe trayel of the first 
sheets Id ito longer path, relatiyely to the trayel of the eecond eheet^ in Ua 
shorter path, and Inyolyes the two eeyeral series of tapes of the two seyeral 
patha The adjustment of the relatiye lengths of the two paths to eaeh 
other, by modifying the length of the longer one, through an adjnstment of 
the roller acting on the longer tapes, is the point of the daim. Sndk inyen- 
tion was new. 

(Before Blatoriobd, J., Southern District of New York, March 2Yt)h, 1882.) 

Blatohford, J. This suit is brought on letters patent 
No. 181,217, granted to Bichard M. Hoe and Stephen D. 
Tncker, September 10th, 1872, for an " improvement in print- 
ing presses." Infringement is alleged of only claims 3 and 

4 of the 6 daims, and only those parts of the specification 
need be referred to which concern claims 3 and 4. The 
specification says that the inyention "relates to printing 
machines, and more particularly to that class commonly 
known as ' perfecting presses,' in which the sheets of paper 
are printed on both sides in passing once throngh the ma- 
chine. It consists in certain novel combinations and arrange- 
ments of parts to be more f ally described hereafter, which 
have for their object the more perfect operation of the ma- 
chine in presenting the sheets of paper to the printing mech- 
anism, and conducting them away after being printed." 
There are 6 figures of drawings, of which only figures 4 and 

5 are important to the present suit. The specification says: 
" The sheets of paper to be printed are carried to and away 
from the printing mechanism by the series of tapes a, I, e, dy 
Cyf^ y. A, *, shown in detail in Figs. 4, 5." Then the print- 
ing mechanism is described, which prints both sides of each 
sheet, and the means of carrying the sheets^ to and through 
such mechanism. Then the text proceeds: "The sheets^ 
after leaving the printing mechanism, are carried between the 
tapes Cy fj up to the rollers 61, 62, where, by an arrange- 
ment of tapes and switches, they are alternately directed into 
different paths. The tapes g and h run in contact with the 
tapes e^ /, after they diverge at the rollers 61, 62, and they 
act to carry the sheets forward after they leave the tapes e^f. 



MARCH, 1882. 438 



Hoe V. Eahler. 



The tapes g pase around the roller 63 horizontally a short dis- 
tance in contact with the tapes fy and thence aronnd the 
roller 69 to the roller 63 again ; and the other series A pass 
from the roller 60 upward and in contact with the tapes e to 
and over the roUer 59 beneath the tapes e; thence horizon- 
tally to the roller 58 ; and thence to and around the roller 70 ; 
and, finally, in a horizontal direction, to the roller 63 and over 
it to the roller 60. These tapes convey the printed sheets to 
the flying mechanism as they are directed by the switches 72. 
The printed sheets, as they leave the tapes, are received by 
two separate fly-frames R, S, and laid by them npon two sep- 
arate tables, P, Q, and, throogh the arrangement of the tapes 
before described, and the operation of the switches 71, 72, 
two sheets are presented at the same time, one upon the 
other, and taken by the fly. The switches 72 act to direct 
the sheets into different paths, and the switches 71 act to di- 
rect their passage to the fly-frames. As the sheets are fed in 
one after Uie other from the tables T, U, Y, W, it is necessary 
to make some take a longer path than the others, in order to 
have two of them issue together at the same time from the 
tapes, to be taken by the fly-frames, and, for this purpose, 
the switches 72 are employed and operated as follows:" 
Then follows a description of means for operating the 
switches 72, and of means for operating the switches 71, and 
the fly-frames R, S, the fly-frames being alternately raised 
and lowered, one being up while the other is down. The 
text then goes on : '' In conducting the sheets from the last 
printing cylinder to the flying mechanism, between the tapes, 
they follow one immediately behind the other, as they are fed 
from the tables, and it is necessary, as before stated, to make 
the first and third sheets travel a longer path than the second 
and fonrth, in order to cause two sheets to issue simultaneously 
and lie one upon the other, when taken by the fly-frame. As 
the first sheet, therefore, approaches the rollers 61, 62, the 
switch 72 is turned into the position shown in Fig. 4, so that 
the sheet, in its travel upward, strikes against the curved 
edge of the switches 72, is directed by them between the 
Vol. XX.— 28 



iZ4t SOUTHERN DISTRICT OF NEW TORE, 

Hoe 9. Kahler. 

roIleiB 60, 61, and the tapes e, A, and thns caused to trayel 
between these tapes over the roUere 59, 58, while, as the edge 
of the second sheet approaches the rollers 61, 62, the switch 
is tnmed back into the position shown in Fig. 5, so that the 
sheet will be directed by it between the rollers 62, 63, and 
caused to enter between the tapes y, ^, and be carried by 
them in a shorter path to the point where they issue to the 
fly. The third and fourth sheets are acted upon by the 
switches 72 in the same manner, and one caused to take a 
longer path than the other, and so on for the following sheets. 
Two printed sheets are thus brought out on the fly-frame by 
being, separated in their course, after they leave the printing 
mechanism, into two difEerent paths, and being brought to- 
gether again, so that, when they meet, they will issue one 
upon the other. The roller 59 is held in adjustable bearings 
80, secured to the side-frames C, and can be raised or lowered 
to make the path of the first sheet longer or shorter, as it may 
be necessary. The machine is provided with two separate 
fly-frames and receiving tables, placed back to back, for the 
purpose of causing the sheets, when thrown upon the tables, 
to have one side exposed to view on one table, and the other 
side in view on the other table, so that both printed sides are 
in sight at the same time, for inspection. In delivering the 
double sheets to the fly-frames, they are directed alternately 
to each fly by the switches 71, which vibrate, between the 
rollers 57, 68, and issue in front of the fly 8; but, as the 
edges of the next two sheets approach the switches 71, they 
will be turned in the other direction, Fig. 5, and caused to 
direct the sheets into the path between the rollers 66, 67, so 
that they will issue in front of the fly R and be laid upon the 
table P." Claims 8 and 4 are as follows: "3. Separating 
two following sheets of papers, on their travel to the fly- 
frame, into two different paths, by an arrangement of tapes 
and switches, and making the travel of one sheet suitably 
longer than the other, so that, when they meet again, they 
will issue one upon the other to the fly, substantially in the 
manner described and specified. 4. The employment and use 



MARCH, 1882. 435 



Hoe V, Eahler. 



of the adjiiBting roller 59, for regulating the travel of the first 
sheet, constructed and operating sabstantiallj in the manner 
described and specified.^' 

Claim 3 is for an arrangement of tapes and switches, 
which separates two following sheets of the printed papers, in 
their travel to the fly-frame, into two different paths, the 
travel of one of the two sheets in its path being suitably 
longer than the travel of the other of the two sheets in its 
path, so that, when the two sheets meet again, they will issue 
one accurately superimposed upon the other, to the fly. Each 
sheet follows the line of travel of its controlling tapes. 
Sheets 1, 3, 5 and so on, in numerical order, go the longer 
path, and sheets 2, 4, 6 and so on, in numerical order, go the 
shorter path, so that sheet 1, starting before sheet 2, may yet 
arrive at the same time with it, and the two issue in unison 
one upon the other, and so with sheets 3 and 4, and sheets 5 
and 6. Two sheets are delivered at one and the same time, to 
one fly-frame, and then two others are delivered at another 
and the same time, to the other fly-frame. 

The defendant's apparatus has no fly-frames. The sheets 
in it issue in pairs to a folding apparatus. It also has single- 
acting switches, instead of double-acting switches, at the point 
where the longer and shorter paths take their departure, and 
it has no switches 71. If the fly delivery devices, and the 
switches 71, and the double-acting switches, as distinguished 
from the single-acting switches, are no part of claim 3, then 
the infringement is clear. In the defendant's machine, the 
printed sheets are successively carried by the same sets of 
tapes to a place of divergence, where there are single-acting 
switches, along the edge of the sheet. When the switches 
are out of the way, the sheet passes on in a path which is a 
continuation of its path up to the switches. When, for the 
next sheet, the switches are interposed, that sheet is diverted 
into another path. Then the switches move out of the way 
. again, and the first operation is repeated, and so on, the 
switches moving into the way and out of the way alternately 
for each alternate sheet. One of the paths is suitably longer 



■436 SOUTHERN DISTRICT OF NEW YORK, 

Hoe V. Kahler. 

than the other, bo that, when the two paths meet again, the 
sheets coincide, and one is upon the other, and they issue in 
pairs. The question of the infringen>ent of claim 3 depends, 
therefore, mainly upon the proper construction of that claim. 
The object of the invention in claim 3, as indicated by the 
text of the specification, is, to carry along the sheets in sue* 
cession, and divide them into two series, each series consist- 
ing of all the alternate sheets, and to cause a sheet of one 
series and the following sheet of the other series to be brought 
together, in pairs, surface to surface, with coinciding forward 
edges, and thus be delivered ready for the next operation that 
is required. In the plaintiffs' patent a fly takes them. In 
the defendant's apparatus they pass on and are mechanically 
folded, the two sheets at a time. In the plaintifiEs' patent the 
XLse of the two flies makes necessary the switches 71, to 
direct each successive pair of sheets to a different fly. But, 
there is nothing in claim 3 which refers to any operation that 
is to be performed upon the sheets after any successive two 
sheets are made thus to coincide and be superimposed. The 
separation into two paths, the longer and the shorter travel, 
the meeting, and the issuing one upon the other, are all there 
is that is made essential either by the description or the daim. 
It is true that the travel is to the fly-frame, because there is a 
fly-frame, and that the fly takes the pair of sheets, when they 
issue, because there is a fly. But the invention of separation, 
travel in paths of different lengths, and uniting and issuing 
one upon the other, has no relation to and does not include 
the fly-frame or the switches 71, nor does daim 8 include 
them. The word "switches," in claim 3, cannot be con- 
etrued to include the switches 71, without distorting the lan- 
guage of the claim. The switches 71 take no part in sepa- 
rating two following sheets of papers, in their travel to the 
ffy-frame, into two different paths, one longer than the other. 
Tlie switches 71 act upon the sheets after they have left their 
different paths and have come together again, one upon the 
other, and act upon them only as pairs, and have no action to 
make pairs of them. 



MARCH, 1882. 437 



Hoe V. Eahler. 



A determination as to whether the switches 72 shall be 
single-acting or double-acting is controlled entirely by the 
fact as to whether the original path is to proceed on from 
where the switches are located, in a continuation of the same 
line, as a path for one of the sheets, leaving the other sheet 
of the pair to be diverted by the switches into another path, 
or whether the original path is not to proceed on in the same 
line, but there are to be two new paths, each controlled by a 
separate movement of the switches. In the former case, the 
switches keep out of the way, to permit the original path to 
continue on and continue open, as one path, and then come 
into the way to create the second path. In the latter case, 
the switches come into the way to divert one sheet from its 
original line into one path, and then come into the way to 
divert the second sheet from it» original line into another 
path. There is no difference in principle between the switch- 
ing arrangement in the two cases. The change is purely me- 
chanical, depending on the courses the sheets are to take with 
reference to the path by which they approached. The single- 
acting switches direct the travel of the sheet out of whose 
way they keep, relatively to the path of the other sheet, as 
effectually as they direct the path of the latter relatively to 
that of the former, by being interposed in the way. 

On the 24th of January, 1854, Mr. Hoe filed in the Patent 
OflSce a caveat which described the invention covered by 
claim 3, and Illustrated it by drawings in a manner sufiicient- 
ly full and clear to have enabled the apparatus to be built and 
put in practice. The affidavit to the caveat was sworn to by 
Mr. Hoe February 24th, 1854, and was filed in the Patent 
Office February 27th, 1854. In that affidavit Mr. Hoe 
swears that he verily believes himself to be the original and 
first inventor of the improvement. This caveat was renewed 
October 4th, 1860; September 18th, 1861; October 9th, 
1862; September 16th, 1863; August 22d, 1884; October 
5th, 1865; October 5th, 1866; October 8d, 1867; October 
7th, 1868 ; and October 5th, 1869. The patent in suit was 
applied for April 4th, 1872. The evidence of Mr. Hoe and 



488 80UTHBRN DISTRICT OF NEW YORK, 

Hoe V. Eahler. 

Mr. Tncker is entirely condnfiiye to show that they were the 
joint inventors of what is embraced in the patent, and that 
Mr. Hoe was not the sole inventor. Notwithstanding the 
affidavit to the caveat, the fact of joint invention is clear. 
Moreover, the evidence shows that the affidavit was true, and 
that Mr. Hoe did at the time he made it believe himself to be 
the original and first inventor of the improvement All that 
Mr. Hoe swears to is his belief. It is shown that he had snch 
belief ; that he told Mr. Tncker, at the time, that he had snch 
belief ; that he was advised by counsel, that, notwitlistanding 
he and Mr. Tucker mutually produced or invented what was 
in the caveat, yet their relations, as employer and hired em- 
ployee, made the invention the property of the employer, and 
authorized the taking of the caveat in the name of the em- 
ployer alone ; that he told Mr. Tucker of such advice, at the 
time; and that Mr. Tucker concurred in what was done. 
With this explanation, there is nothing connected with the 
caveat to interfere with the validity of the patent, or to pre- 
vent the carrying back of the invention claimed, as a joint in- 
vention, to the date of the original filing of the caveat. The 
caveat having been filed as for an invention of Mr. Hoe alone, 
he could have no motive, nor could there be any advantage, in 
the joint application for the patent, as for a joint invention, ex- 
cept that it was true that the invention was, in fact, joint, and 
that the advice he had received before the time the caveat was 
filed had been modified by different advice received on full 
'Consideration of all the facts, when a patent was to be applied 
for. The impulse of self interest would naturally be, to dis- 
regard the truth, and thus avoid any necessity for explaining 
the apparent discrepancy between the affidavit to the caveat 
and the affidavit to the application for the patent. Both Mr. 
Hoe and Mr. Tucker testify fully and without reservation and 
disclose fully all the facts and all the motives which induced 
the action taken. There is nothing to impeach their truth or 
credibility. The question Js as to what Mr. Hoe and Mr. 
Tucker believed at the time. The question is not as to 
whether the advice of the counsel was correct on the facts 



MABCH, 1882. 439 



Hoe tf. Eahler. 



presented to him. Exactly what facts were presented to him 
cannot now be told. The matter was oral. Whether all the 
facts, as now disclosed, were presented to him, we cannot tell. 
The evidence shows that tlie same counsel who gave the ad- 
vice, afterwards and with reference to taking out a patent for 
the joint inventions of Mr. Hoe as employer and Mr. Tncker 
as his employee, advised that there was a question as to the 
propriety of taking out such patent in the name of the em- 
ployer alone, and that it was wiser to take it ont in their joint 
names. This goes to confirm the fact that the original advice 
was given. Mr. Hoe, as a layman, had a right to act npon it, 
and to swear to his belief. This he did. 

In the contents of the file-wrapper in the matter of the 
patent is an oath sworn to by Mr. Hoe, March 12th, 1872, at 
London, England, before " J. Nnnn, a London Commissioner 
to administer oaths in common law," the official character of 
Mr. Nnnn being anthenticated by a certificate made by the 
Oonsnl-G-eneral of the United States at London. No other 
oath by Mr. Hoe to the specification or applications appears 
among the contents of the file wrapper. There is a proper 
affidavit by Mr. Tucker, that he verily believes himself to be 
the first, original and joint inventor with Mr. Hoe, and as to 
the other particulars required. The form of the oath by 
Mr. Hoe is not criticised. But it is objected that the oath 
was not taken before a proper officer, and so there was no 
oath by Mr. Hoe, and no valid patent. The contents of the 
oath were prescribed by § 30 of the Act of July 8th, 1870, 
(16 TJ. S. Stat, at Large, 202.) That section provided that 
the oath might be made ^^ before any person within the 
United States authorized by law to administer oaths, or, where 
the applicant resides in a foreign country, before any minister, 
charg6 d'affaires, consul, or commercial agent, holding com- 
mission pnder the government of the United States, or before 
any notary public of the foreign country in which the appli- 
cant may be." ^ 

The bill alleges that the plaintiffs obtained letters patent 
for their invention '^ in due form of law." It alleges nothing 



440 SOUTHERN DISTRICT OF NEW YORK, 

Hoe V. Ejthler. 

aB to any oath or as to any application, except to say that they 
obtained the patent " upon dne apph'cation therefor." The 
answer does not aver any defect in Mr. Hoe's oath or any 
want of an oath, bnt alleges merely that the defendant ^^ is 
not informed whether, in other respects, the requirements of 
law relative to the granting of letters patent were complied 
with by the said Hoe and Tncker, or what, if any, proceedings 
were had prior to the issue of said letters patent, and, there- 
fore, denies the allegations of the bill of complaint in respect 
to the same, and leaves the complainants to make snch proof 
thereof as they may be advised." The plaintiffs sustained 
whsLteyer jprima facie burden there was upon them because of 
the averment as to '^ due application^" by introducing the pat- 
ent. The plaintiffs did not put in evidence the jSle-wrap- 
per and contents. They were put in evidence by the defend- 
ant, under the objection by the plaintiffs that they were in- 
competent, irrelevant and immaterial. There is no disclosure 
in the record of any point being made by the defendant as to 
a defect in Mr. Hoe's oath, or as to the want of an oath by Mr. 
Hoe. The plaintiffs had put the patent in evidence without 
any objection being taken by the defendant that it was not 
properly granted, because there was no proper oath. There is 
no evidence put in by the defendant to rebut the presump- 
tion, from the grant of the patent, that there was a proper 
prior oath by Mr. Hoe, tending to show that there was no 
such oath by him, or that the oath appearing was the only 
oath he made. The copy of the file-wrapper and contents i» 
a copy certified January 9th, 1881, and speaks only as to what 
were the contents of the file-wrapper on that date. The 
papers are not evidence to show that there was not a proper 
oath by Mr. Hoe, other than the one referred to, even if that 
were an improper one. They were not competent or relevant 
to show the want of an oath. The patent recites (hat the 
plaintiffs ^^ have complied with the various requirements of 
law, in such cases made and provided," and, ^^ upon due ex^ 
amination made," they are ^' adjudged to be justly entitled to 
a patent under the law." Section 26 of the Act of 1870 pro- 



IfABCH, 1882. 441 



Hoe «. Bjihler. 



yides that the inventor must make application in writing to 
the Commissioner of Patents for the patent. Section 80 pro- 
yides for the oath to be made by the applicant. Section 81 
provides that, '^ on the filing of any such application and the 
payment of the dnty required by law, the Commissioner shall 
cause an examination to be made of the alleged new invention 
or discovery ; and if, on snch examination, it shaU appear that 
the claimant is jnstly entitled to a patent under the law, and 
that the same is sufficiently useful and important, the Com- 
missioner shaU issue a patent therefor." Assuming that it is 
open to a defendant, on pleadings such as those in this case, or 
in any case, to defend a suit on a patent for infringement, 
by setting up and showing a defect in or a want of the pre* 
liminary affidavit, when a patent is issued containing such re- 
citals as that in this case — a question not now necessary to be 
considered or discussed — ^it is very clear that the defendant in 
this case does not show the existence of such a defect or want 
by any competent evidence. 

It remains to consider the Campbell machine, on the ques- 
tion of novelty as to claim 8. It is clear that Hoe and Tucker 
made the invention before Campbell did, and clearly de* 
scribed it in the caveat and drawings filed in 1854. No press 
containing the invention of claim 8 was made before 1871> 
because a printing press of the kind and capacity shown in the 
caveat is a structure of large cost, not to be made with the 
chance of a sale, but only to be made on an order, of a par- 
ticular size, for a particular newspaper. On the 2 1st of April, 
1871, an order for the press was received from the Daily 
News. By December, 1871, the machine was built and set 
up and successfully worked in the factory of Mr. Hoe, em- 
bodying claim 3. It was then taken down and was put up in 
the Daily News Office and worked there in February, 1872. 
Although the Campbell delivery apparatus is alleged to have 
been constructed early in the fall of 1871, tapes were not 
applied to it, nor were the switches or the mechanism that 
operates the switches applied, until January or the first of 
February, 1872, in AyePs factory at Lowell. The delivery 



442 SOUTHERN DISTRICT OF NEW YORK, 

Hoe V. Ejthler. 

apparatus was not set ap, nor were sheets of paper ran throngh 
it, before that time. Therefore, priority of completion of 
mechanism, as well as priority of invention, mnst be deter- 
mined in fayor of the plaintiffs. 

Claim 4 is a claim to the adjusting roUer for regulating 
the travel of the first sheet, in its longer path, relatively to 
the travel of the second sheet, in its shorter path. It thus 
involves the two several series of tapes of the two several 
paths. The adjustment of the relative lengths of the two 
paths to each other, by modifying the length of the longer 
one, through an adjustment of the roller acting on the longer 
tapes, is the point of the claim. The defendant's expert says 
that the English patent to Dryden and Miles does not contain 
any description of the apparatus relied on, and that the draw- 
ing alone is imperfect and is not a sufficient description to in- 
validate claim 4. The plaintifb' expert says that the roller of 
Dryden and Miles does not act on one set of tapes alone, but 
varies the lengths of two sets of tapes simultaneously and to 
substantially the same extent. 

The defendant's expert says that the Dryden press at 
Gray & Green's exhibited the invention in daim 4, but he 
gives no reason for so thinking. The plaintiffs' expert says 
that that press had only one set of tapes, and had no method 
of adjustment by which the travel of one sheet could be ad- 
justed relatively to the travel of another and following sheet ; 
and that the adjustment of the roller in it adjusted the travel 
of the same sheet relatively to forms of types which printed 
the two sides of it, so as to make the impressions rt^ster. 
This is not the invention of claim 4. 

There must be a decree for the plaintiffs as to daims 3 
and 4, with costs. 

M, £, Philipp and J5. F. Thurston^ for the plaintiffs. 

B. F, Lee and TT. Z>. Shipma/n,^ for the defendant. 



MABCH, 1889. 443 



The Boston Beef Packing Company v. Sterens. 



The Boston Beef Packino CoMPAmr 
Calyin a. Stbyeks and others. 

8. and others were sned personally and also in their representatire capacity as 
ezeeators and tmstees under a will, for damages caased by the fall of a bnild- 
ing owned by ihem as such executors and trustees, and which had been leased 
by them. A verdict was had for the plaintiff, establishing that the building 
was unsafe at the time it was leased and that it fell without any contributory 
fault in the lessees or in the plainti£ The plaintiff occupied an acyoining 
buUding: JEMd, 

(1.) That the action could not be maintained against the defendants in their rep- 
resentative character, and the process, pleadings and proceedings must be 
amended by striking out the description of the defendants official character, 
without the granting of a new trial ; 

(2.) That the defendants were liable as individuals for negligence in authorising 
and sanctioning the acts of the tenants in the use of the property. 

(Before Wallaob, J., Southern District of New York, March a9th, 1888.) 

Wallace, J. The defendants are sued personally, and also 
in their representatiye capacity as executors and tmstees under 
the will of Oalvin Stevens, deceased, for damages aUeged to 
have been sustained by the plaintiff by the faU of a building 
owned by the defendants as such executors and trustees, and 
which had been leased by them for a storage warehouse. The 
jury found for the plaintiff, and, under the instructions of the 
Court, their verdict established two propositions : first, that 
the building was unfit and unsafe for use as a storage ware- 
house at the time the defendants let it for such use; and, 
second, that the building fell without any fault contributing 
to the fall on the part of the lessees. The plaintiff was the 
occupant of an adjoining building, and the verdict of the jury 
further established that there was no contributory negligence 
on the part of the plaintiff. 

Upon what theory the defendants were sued in their repre- 



444 SOUTHERN DISTRICT OF NEW YORK. 

The Boston Beef Packing Company v. Stevena. 

sentative character, and by what rale of law their liability in 
Buch character can be maintained, has not been satisfactorily 
shown. The question was reserved upon the trial, bnt no 
authority has been adduced to change the opinion expressed 
by the Court upon the trial, that an action cannot be main- 
tained against an executor or trustee in his representative 
character, for a wrongful act which was not and could not be 
committed by him in his official capacity, but which, because 
it was a wrongful act, was in excess of his authority. * 

A new trial, however, should not be granted. The only 
defendants in the case are the individuals named as such, and, 
although they are also described in their representative char- 
acter, they cannot, in an action at law, sever their identity. 
The same individuals cannot have a judgment in their favor 
and one against them, in the same record. The plaintiff must 
amend the process, pleadings and proceedings by striking out 
the description of the defendants' official character. 

Upon the main question in the case, that of the liability of 
the defendants for negligence, there is no reason to doubt the 
correctness of the rulings at the trial. The defendants were 
carefully protected by the instructions to the jury from all 
responsibility for the acts of the tenants. They were held 
liable only to the extent that for their own profit they author- 
ized and sanctioned the acts of the tenants in the use and 
control of the property. As the verdict was upon the theory 
that the tenants were not guilty of negligence, unless the de- 
fendants are held liable, the singular result would follow, that 
a wrong has been committed for which no person can be held 
responsible. Whoever, for his own advantage, authorizes his 
property to be used by another in such manner as to endanger 
and injure unnecessarily the property or rights of others^ is 
answerable for the consequences. Sometimes, the liability has 
been referred to the law of nuisance. {Notctobs v. Th/yrM^ 61 
Mainej 503 ; Fish v. Dodge^ 4 Denioy 311.) But it exists 
when the injury results from negligence as well as when from 
an intentional wrong. The mere fact that a third person is 
interposed between the owner or principal and the party in- 



APRIL, 1882. 445 



Tyler v. Galloway. 



jnred cannot affect the responBibility of him who originates 
and sanctions the injnry. {Swards v. Edga/r^ 69 N. Y., 28.) 
As is said in Todd v. FUgkt, (9 C B., N. S., 877,) "if the 
wrong cansing the damage arises from the non-feasance or the 
misfeasance of the lessor, the party suffering damage from the 
wrong may sne him." The case of H(yuse v. MeetoaUf^ (27 
Conn.^ 631,) is precisely in point. The rule is too well settled 
to require farther citations. 

The motion for a new trial is denied. 



James McKeen^ for the plaintiff. 

Oeorge W. MoAdamiy for the defendants. 



LmcAisr W. Ttueb 
Jambs D. Gallowat and othebs. In Eguirr. 

The fint olaim of re-issaed letters patent granted, Aognet Sth, 18T9, to Leman 
W. Tyler, as assignee of William Sternberg, for an Improyement in cheese- 
hoops, the original patent having been granted to said Sternberg, March 21flt^ 
1871, is an inexact claim, which, if constmed according to its natural mean, 
ing, woold indnde an inyentioD broader than the one which was made. If a 
limited constmction be given to it, it woold be substantially the same as the 
second daim of the re-issue. The second claim of the re-issue being valid and 
infringed, the Court held that the pUdntiif could have a decree on it, without 
costs, on disdaimiDg the first daim. 

(Before Sbipicav, J., Northern District of New York, AprU let, 188S.) 

SmpMANy J. This is a bill in equity to prevent the in- 
fringement of re-issned letters patent granted, August Sth, 
1879, to the plaintiff, as assignee of William Sternberg, for 
an improvement in cheese-hoops. The original patent was 



446 NORTHERN DISTRICT OF NEW YORK. 

Tyler v. Qalloway. 

granted to Sternberg, March 2l8t, 1871. The object of the 
bill ifi to prevent the use of cheeae-hoops known as the Fra- 
zer hoop, which are made under the patent granted to Milton 
B. Frazer, January 9th, 1872. 

The qnestionB which are involved in this case, viz., the va- 
lidity of the plaintiff's re-issued patent and its infringement by 
the use of the Frazer hoop, were decided by Judge Wallace 
in the case of Tyler v. Welch, (18 Blatohf. C. C. R.y 209.) 
At the suggestion of Judge Wallace this case was heard by 
another judge, as it was thought that the recently decided 
cases of MiUer v. Brass Co,^ (104 U. /X, 350,) and James v. 
Campbell, {Id., 356,) might present the question of the valid- 
ity of the re-issne in a new light. 

The nature of the Sternberg invention, the differences be- 
tween the original and re-issued patents in the descriptive part 
of the respective specifications, and the method of construction 
of the two hoops, are fuUy described in Tyler v. Welch, cited 
supra, I entirely concur with Judge Wallace, and for the 
reasons which he gives, in his conclusions, that the Frazer 
hoop is an infringement of the second claim of the re-issued 
patent, and that there is no ^^new matter" either in the de- 
scriptive part of the specification or in the second claim of the 
re-issue. This claim is a substantial reproduction, in different 
phraseology, of the single claim of the original patent. 

The original claim was as follows : ^' The grooved hoop A, 
a, in connection with the expansible ring B, substantially as 
and for the purpose herein specified." The two claims of the 
re-issue are as follows : ^^ 1. An expansible ring or band, in 
connection with the upper part of a cheese-hoop, to hold the 
upper edge of the bandage while being filled with curd and 
during the process of pressing, substantially as specified. 2. 
The combination of the expansible ring or band and the 
cheese-hoop grooved or depressed sufScient to receive said 
ring or band, so that it will not interfere with the follower, 
substantially as specified." 

Judge Wallace was of opinion that the first daim of the 
re-issue was capable of a broader construction than Sternberg's 



APRIL, 1882. 447 



Tyler v, GaUoway. 



invention warranted, but was disposed to limit the claim so 
that it shoald only cover the actnal invention. While such 
limitation is in accordance with the existing rules of construc- 
tion, yet, in view of the recent decisions of the Supreme 
Court, and of the fact that in this case, with such a construc- 
tion, both claims of the re-issue would be the same, but espe- 
cially in view of the late decisions, I think that such a course 
is not advisable and that the claim should be declared void. 
The plaintiff, in obtaining a re-issue, introduced an inexact 
claim, which, if construed according to its natural meaning, 
would include an invention broader than the one which was 
made. If such a construction should be adopted, the patent 
would be improperly enlarged. If, on the other hand, a lim- 
ited construction should be given, the first claim would be 
substantially the same as the second and would be superfluous. 
One claim in a re-issue may be void without necessarily inval- 
idating the other claims. In such case, it is proper to disclaim 
the void claim. {(yiieiUy v. Morse, 15 How,, 62 ; SchUlmger 
V. Ovmthe/r, 17 Blatchf, C. O. J?., 66.) In this case there has 
been no unreasonable neglect or delay. 

Whenever the plaintiff shall have satisfied the Court that 
a proper disclaimer has been filed in the Patent Office, dis- 
claiming the first claim in such manner as to claim only the 
invention as specified in the second claim of the re-issued pat- 
ent, a decree will be entered for an injunction against the 
infringement of the second daim, and for an accounting of 
profits and damages arising under said infringement, but with- 
out costs. 



Oeorge W, Hey, for the plaintiff. 
H. R. Dv/rfee, for the defendants. 



448 NORTHERN DISTRICT OF NEW TORE, 

Foantam v. The Town of Ani^elica. 



Jambs T. Fountain vs. The Town of Anoslioa. 

The proTinoD of § 5 of the Act of March Sd, 1876, (18 U. 3. 8UU. si Large, 47S,) 
that the Circait Court Bhall dieiiiiss a snit if the partiee haye been improperlj 
or oollnaiyely made or joined for the pnrpoae of creating a case cognisable 
under said Act, conrtmed. 

In this case the aait was diBmisaed, it appearing that the plaintiff had no sab- 
stantlal interest in the coupons sned on. 

(Before Wallagi, J., Northern District of New Tork, April 8d, 188S.) 

Wallaob, J. By the 5th section of the Act of March 3d, 
1875, (18 U. 8. Stat, at Larger 472,) to determine the jariB- 
diction of Circuit Courts of the United States, it is deckred, 
that if, at any time in the progress of a case, either originally 
commenced in a Circuit Court or removed there from a State 
Court, it shall appear that such suit does not really involve a 
dispute or controversy properly within the jurisdiction of the 
Court, or that the parties to said suit have been improperly or 
coUusively made or joined, either as plaintifb or defendants, 
for the purpose of creating a case cognizable or removable 
under the Act, the said Circuit Court shall proceed no further 
but shall dismiss the suit, or remand it to the Court from 
which it was removed. This action presents the question 
whether the plaintiff has been improperly or collusively made 
a party for the purpose of creating a case cognizable by this 
Court, within the meaning of the section referred to. 

It is said by the Supreme Court, in Hawea v. Oakland^ 
(104 U, S.y 450,) that this statute strikes a blow at improper 
and collusive attempts to impose upon this Court cognizance 
of cases not justly belonging to it. Before this Act was 
passed it was settled law, that, although a transfer of the sub- 
ject of the controversy may have been made for the purpose 
of vesting an interest in parties competent by reason of their 
domicile to litigate in the Federal Courts, that circumstance 
would not defeat the jurisdiction if the transaction invested 



APRIL, 1882. 449 



Fountain v. The Town of Angelica. 



the assignee with the real interest in the sabject-matter ; yet, if 
the assignment was colorable only, and the real interest still re- 
mained in the assignor, jurisdiction wonld not be entertained. 
{Barney v. Baltimore Oity^ 6 WaUace^ 280.) The section in 
question, therefore, was qnite unnecessary if it was only in- 
tended to reach a case in which the plaintiff, by assignment, ob- 
tained merely a colorable title to the subject of the controversy. 
It is not difficalt to discern the purpose of the section. It had 
long been notorious that the jurisdiction of the Circuit Courts 
was constantly invoked for the benefit of parties not within 
the class which the constitutional grant of jurisdiction to the 
Federal Courts was intended to include, by parties who, be- 
cause they were citizens of the same State as their adversary, 
could only resort to the Courts of the State, but who, for 
some ulterior motive, desired to resort to the Federal Courts. 
The convenient device was resorted to of transferring the 
subject of the controversy to a citizen of another State, a 
friendly coadjutor, who, while acquiring the legal title, was 
expected to litigate for the benefit of the original party. 
Thus new parties were introduced into controversies in 
which they had no substantial interest, merely to bring cases 
within the Federal jurisdiction. It cannot be doubted that 
the provision in question was intended to meet an(^ prohibit 
a jurisdiction sought and obtained by such collusive methods. 
It should be held that a plaintiff who has been introduced 
into a controversy, by assignment or transfer, merely that he 
may acquire a standing and relation to the controversy which 
will enable him to prosecute it for the beneficial interests of 
the original party, has been improperly and collusively made 
a party, for the purpose of creating a case cognizable under 
the Act. 

No better illustration of the class of cases whicl} the sec- 
tion was intended to meet could be presented than the present 
case affords. It is palpable, upon the evidence, that the 
plaintiff has no substantial interest in the coupons which are 
sued upon, conceding that he acquired the le^ title to them 
so as to enable him to maintain the action. He bought them 
Vol. XX.— 29 



450 NORTHERN DISTRICTT OF NEW YORK. 

Phelps V. The Canada Central Railroad Company. 

at the solicitation of one Dick, without any inquiry as to their 
validity or value, and without any negotiation concerning the 
price to be paid. He pretended to pay for them by a check 
which he has never paid ; which was made for the full face 
amount of the dishonored and contested coupons ; which wa& 
paid, if paid at all, by a bank of which Dick was a director 
and the plaintiff was an assistant cashier ; and which, after 
the expiration of three years, he has never heard of since he 
gave it. He testifies he had no personal interest in the trans- 
action. He was informed the coupons would have to be col- 
lected by suit. He placed them in the hands of Dick's at- 
torney for collection, very soon after receiving them. He 
testifies that he did not expect to be responsible to the attor- 
ney for his charges. In short, he was merely an instrument 
of Dick, selected by Dick, and invested with a formal title to 
the coupons, in order that Dick might litigate them in a Fed- 
eral Court. 

It is the duty of the Court to dismiss the suit. 

Ma/rshaU^ Clinton <& Wilson, for the plaintiff. 

Hamilton Wa/rd^ for the defendant. 



George B. Phelps 
The Canada Central Bailboad Company. 

Before this action was removed into this Court the State Court had made an 
order restricting the plaintiff from setting up any cause of action in addi- 
tion to one for \>reach of contract, on which an attachment had been 
granted. The plaintiff elected to consent to that order, as a condition of re- 
taining the attachment, and it was in force when the action was removed. 
Nothing haying occurred to change the rights or position of the parties, a 
motion by the plaintiff for leave to amend his complaint was denied by thia 
Court. 

(Before Wallaoi, J., Northern District of New Tork, April 3d, 1882.) 



APRIL, 1882. 451 



Phelpe V. The Canada Central Railroad Company. 



Wallace, J. Before this action was removed into this 
Conrt the State Conrt had granted an order restricting the 
plaintiff from averring in his complaint any cause of action 
against the defendant other than for alleged breach of con- 
tract set forth in the affidavit upon which the defendant's 
property was attached and its appearance thereby compelled. 
Although the main point considered by the State Court upon 
the motion which resulted in such order was the right of the 
plaintiff to incorporate into his complaint a cause of action 
and prayer for equitable relief, the order made was both 
broad and explicit in its terms, and confined the plaintiff to 
the cause of action set forth in the affidavit for the attach- 
ment. The plaintiff elected to consent to that order as a condi- 
tion of retaining his attachment, which would otherwise have 
been vacated. Whether the State Court would have thus ad- 
judged if the plaintiff had complained upon a cause of action 
at law only it is not for this Court to determine. It suffices that 
the order, as made, was in force when the action was removed 
to this Court. Undoubtedly, this Court has power to modify 
that order, but it would be unseemly, when nothing has oc- 
curred since the removal to change the rights or position of 
the parties, to disregard the adjudication of the State Court 
made upon hearing and deliberation and consented to by the 
plaintiff. 

Although the plaintiff is entitled, by the Code of Proce- 
dure of the State, to amend, as of course, within the time 
limited by the Code after the defendant has answered, that 
right was waived, in so far as the exercise of it would involve 
any departure from the terms of the order, by the election 
signified upon the hearing which resulted in the order. 

The motion for leave to serve the amended complaint is 
denied. 



Mvllin <6 Oriffm, for the plaintiff. 
Edward C. James^ for the defendant. 



462 SOUTHERN DISTRICT OF NEW YORK, 

TuengliDg v. Schile. 



Da VXD G. YuENOLiNo, Jr. v. Hrnrt Schile. In Equht. 

T. took out a copyright, in 1880, on a cbromo-lithograpliic print, entitled " Gam- 
brioos and his followers," as proprietor, he being a citizen of the United 
States. The chromo was designed in Europe, by an alien, and printed 
there. T. showed no title derived from the author: iTeM, 

(1.) The chromo was the subject of a copyright; 

(2.) Y., not being the author or denying title from him, could not, under 
§ 4,952 of the Revised Statutes, lawfully obtain a copyright for the chromo ; 

(8.) The author, not being a citizen of or resident in the United States, 
oould not obtain a copyright for the chromo as author, and, therefore, Y. ooold 
not, as proprietor; 

(4.) A chromo is a " print,*' within § 4,971 of the Revised SUtutes. 

(Before Brown, J., Southern District of New York, April 8d, 1882.) 

Brown, J. The plaintiflF moves, upon a bill of complaint 
and affidavit, for a preliminary injunction to restrain an in- 
fringement of the plaintiffs rights under a copyright alleged 
to have been obtained by him on the 23d of August, 1880, 
upon a " chromo " entitled " Gambrinus and his followers." 
The moving papers allege that the complainant, on that day, 
was a citizen of the United States, and " proprietor of said 
chromo ; " that he filed on that day, before publication, in the 
office of the librarian of Congress, the title or description 
thereof, and on the same day deposited in his office two copies 
of the same, and gave notice of his copyright by inscribing 
(m the visible front of such chromo, near the bottom, the 
words, " Copyrighted, 1880, by D. G. Yuengling, Jr., New 
York ; " that he has been at great expense in producing such 
chromo, and the same is of great value to him ; that he 
has used it as a gratuitous advertisement in his business, as a 
lager bier brewer ; and that the defendant is about to issue a 
piratical imitation of such chromo, in violation of the plaint- 
iflPs rights in such copyright. 

The complainant's chromo is of evident artistic merit. It 
u designed as a symbolic glorification of lager bier drinking. 



APRIL, 1882. 453 



TnengliDg v. Schile. 



In the centre is a congpicnoos figure of King Gambrinns, his 
left arm resting upon a keg of lager, and his right holding 
aloft a foaming glass of that beverage. On either eide of 
him are a dozen figures of persons representing various 
classes in life, into whose eager hands his page is distributing 
the drink. This chromo, by its subject, its brilliant coloring, its 
excellent finish, aod the artistic grouping of its figures, forms 
a striking picture, suitable for hanging in saloons, and well 
calculated to draw attention to the plain tifiT, whose name is 
printed in large type beneath the figures, as a person engaged 
in the lager bier business, and constituting, therefore, a valu- 
able mode of advertising. Among the Germans, and in the 
lager bier trade, " Gambrinus " is familiarly known as the in- 
ventor of lager bier, while King of Flanders, as the legend 
goes, who used it first as a potion or draught. 

The defendant's chromo, claimed to be an infringement, is 
a few inches smaller than the first, and presents the same gen- 
eral grouping, expression and coloring of the figures, though 
having some conspicuous changes. Upon the head of the 
lager bier cask the words "Bock Bier" are conspicuously 
printed ; and the figure of a goat, with its fore feet upon the 
top of the cask, appears prominently in the foreground, be- 
side the King. The troubadour, who, in the first picture, is 
reclining upon the ground beside a maid drawing bier at the 
spigot, is omitted in the defendant's chromo, which also con- 
tains at the left a prominent typical figure of "Brother 
Jonathan," who is substituted in the place of a tailor in the 
first. There are various other minor changes. 

Upon the whole, it is plain that the defendant's chromo 
is formed upon the same general design as the first, althongh 
with very important variations, and is an infringement of it, 
if the first was lawfully copyrighted before any publication 
of it. The defendant's chromo is designed as a card, adver- 
tising the sale of " bock bier," which is sold mainly in the 
months of April and May. 

From the defendant's affidavits it, however, appears, that 
the complainant's chromo was designed in Europe by G^ 



454 SOUTHERN DISTRICT OF NEW YORK, 

TQengUng v. Scblle. 



Bartschy an alien European artist, whose name is engraved on 
the face of the print ; that in the right hand comer beneath 
are printed the words, " Wittemann Bros., Publishers of Art 
Lithographs, New York ; " that the work is strictly a chromo- 
lithographic print; that all the complainant's copies of it 
were printed and completed in Europe, whence it was im- 
ported to this city by the complainant, who thereupon xmder- 
took to take oat a copyright, by depositing two copies with 
the librarian of Congress, as above stated, and stamping npon 
the left-hand comer the words added by the complainant, 
"Copyrighted, 1880, by D. G. Yuengling, Jr., New York ;" 
that the defendant has long been a designer, and is also en- 
gaged in the lager bier advertising business; that, in the 
summer of 1880, at the book printer's establishment of Kelly 
& Bartholom, 22 College Place, in this city, where he had 
previously been accustomed to get work done, he was shown 
a copy of all the colored portion of this chromo, bnt without 
the copyright stamped thereon ; that he was informed by 
them, at that time, that it was a German work, not copy- 
righted, and had shortly before been imported and received 
by them from Europe ; that he was then allowed to take this 
copy away with him, and had retained it ever since, and had 
made his own chromo therefrom, with the variations above 
pointed out ; and that he never saw any copy with any copy- 
right stamp upon it, and had no knowledge of any such 
copyright until the commencement of this suit. 

It is urged, on the part of the defendant, that the plaint- 
iff's chromo is not the subject of a copyright, because it was 
designed, used and circulated by him as a gratuitous adver- 
tising card, for the benefit of his private business as a lager 
bier brewer, and not for the instruction or improvement of 
the public. The case of Cobhett v. Woodward^ {Law Rep.^ 
14 Eq.^ 407,) relied on by the defendant, was a case where 
the catalogue of an upholsterer containing engravings of the 
articles offered by him for sale and circulated gratuitously 
was held not to be the subject of copyright, on this ground. 
A similar decision was made in this Court, in the case of 



APRIL, 188S. 455 



YueQgliQg V. Schile. 



CoUender v. Oriffithy (11 Bldtckf. C. C. R.^ 212,) concerning 
engravings of billiard tables offered for sale ; but in that case 
it was held that the engravings were not works of art, and did 
not have any valne or use as such, and that it was a mere 
mode of advertising the tables for sale. The case of Ehret 
V. Pierce^ (18 Jd.^ 302,) was decided upon the same principle. 
The case of CoHbett v. Woodwardy {eupra^ has not been fol- 
lowed in England, but was substantially overruled in the 
subsequent case of Orace v. Newmrni^ {Law Rep.y 19 J^., 
623.) 

The plaintiff's chromo in the present case is not a mere 
engraving, or print, of any article which the complainant 
offers for sale. It is a work of the imagination, and has such 
obvious artistic qualities as, in my judgment, render it fairly 
a subject of copyright, without regard to the use which the 
plaintiff has made, or may intend to make, of it. Where the 
work in question is clearly one of artistic merit, it is not ma- 
terial, in my judgment, whether the person claiming a copy- 
right expects to obtain his reward directly through a sale of 
the copies, or indirectly through an increase of profits in his 
business, to be obtained through their gratuitous distribu- 
tion. 

There are several grounds, however, why the preliminary 
injunction sought in this case should not, I think, be granted. 

(1.) It being conceded that the complainant is not the 
author or designer of this chromo, it is incumbent upon 
him to show how he became entitled to any exclusive copy- 
right of it. In Oreme v. Bishop, (1 Cliff., 186, 198,) Clif- 
ford, J., says : " It is undoubtedly true, that, when a party 
comes into a Court of law or equity, seeking protection to a 
copyright, he must show that he is the author of the work, or 
that his title is derived from one sustaining that relation to 
the publication." {LilUe v. Oould, 2 Blatchf. C. G. R., 181.) 
The plaintiff does not show any such derivative title, and it 
appears that he is not the author. 

The owner or proprietor of a work has not, since the Act 
of July 8th, 1870, any more than before, in that character 



456 SOUTHERN DISTRICT OF NEW YORK, 

Ynengling v, Schile. 

alone, any right of copyright. It is only to " authors and in- 
ventors," or to persons representing the author or inventor, 
that Congress is authorized by the Constitution to grant a 
copyright. {Constitution y Art. 1, sec. 8.) The right of any 
other person than the author or inventor must, therefore, be 
a purely secondary and derivative one; and, in enforcing 
any alleged copyright, such a person must show an exclusive 
right lawfully derived from the author or inventor ; and this 
the plaintiff has not done. I find no other averment in the 
papers save that in the bill, that, on the 23d of August, 1880, 
he was the " proprietor of said chromo." This is not enough. 
It does not show any exclusive right derived from an orig- 
inal author. It appears, in opposition, that the work was de- 
signed and printed in Europe, by an alien artist, and that 
copies of this design were imported into this country, and came 
into the defendant's hands, independently of the complain- 
ant. There is no averment either that the design itself was 
new, or that the lithographic stones for the print were engraved 
by any person employed by the plaintiff, or in his behalf, or 
that any right of copyright was ever transferred, or intended 
to be transferred, to the plaintiff', by the author or artist. The 
chromo may be a mere copy of a European painting long 
since published in Europe, and free to be copied by any one. 
For aught that appears, the whole design may have been com- 
mon propert}' for an indefinite period, as would seem to be 
the case with the typical form of King Oambrinus. The 
complainant may have been the '' proprietor " of the chromes 
which he imported, and may have " produced them at great 
expense," and yet have no exclusive right whatever, as be- 
tween himself and the European artist, to the sole use even 
of the lithographic stones in Europe, for the multiplication of 
any additional copies, much less to the original design. In 
that case he could acquire no copyright which would exclude 
the defendant, or any other person, from availing himself, 
either wholly or in part, of other copies obtained from Eu- 
rope, either from the same stones, or from the common source 
of the design. In Johnsaii v. Donaldson^ (18 Blatckf. C. 



APRIL, 1882. 457 



Tnengling v. Schila 



(7. -ff., 287,) in reference to an alleged infringement of the 
copyright of a chromo, it was held, by Wallace, J., that, if the 
plaintiff acquired his copyright by appropriating a sketch from 
a foreign publication, he wonld not become a proprietor there* 
of, and coold acquire no exclusive copyright ; and that, even 
if the plaintiff were the artist and designer of the picture so 
appropriated, the defendant wonld not be liable " if he did 
not avail himself, directly or indirectly, of the plaintiff's pro- 
duction." In Roaenhach v. DreyfusSy (2 Fed. Hep.j 217,) it is 
said, by Ghoate, J. : '^ It is not enough that the defendant may 
be liable if the facts stated in the complaint be true. It 
must appear that he is liable if the complaint is true ; " and 
judgment was rendered for the defendant on demurrer, be- 
cause it did not certainly appear that the articles described 
were articles for which a copyright could be granted under 
the laws of the United States. 

In this case it appears, afBrmatiyely, from the defendant's 
afiSdavits, that, in making his chromo, he has not availed him- 
self of any copy of the chromo imported by the plaintiff ; 
while, from the want of any averment, either that the design 
was new, or that the plaintiff had ever acquired the exclusive 
right of the foreign artist, in case the artist had any such ex- 
clusive right, it is impossible to say that the defendant, in 
availing himself of parts of a foreign copy, independently im- 
ported, violated any right of the author, much less of the 
plaintiff, who could only claim through the author. 

(2.) The plaintiff claims that the Act of July 8th, 1870, 
(16 If. S. Stat, at La/rge, 212, § 86, Reo. Stat, § 4,962,) au- 
thorizes a citizen or resident of this country, if he be the 
" proprietor" of any book, map, print, chromo, &c., to obtain 
a copyright therefor, although the author, inventor, or de- 
signer is an alien. The Act of 1870, for the first time, uses 
the word " proprietor " in connection with the words " author, 
inventor,^' and " designer," as one of the persons to whom a 
copyright may be granted, although, ever since the Act of 
May 81st, 1790, (I U.S.Stat, at Zary^, 124,) a proprietor 



458 BOUTHERN DISTRICT OF NEW YORK, 

Yaengling v. Schile. 

might obtain a copyright, if he were the lawfnl representa- 
tive of the exclusive rights of a native or resident author. 
Thns, though the connection in which the word " proprietor " 
is used in the Act of 1870 is new, the use of the word itself, 
in relation to copyrights, is as old as the laws of copyright. (1 
C. S. Stat, at Large, 124, 125, §§ 2, 8, 4, 6 ; 2 /rf., 171, 172, 
§§ 1, 3; 4 M, 487, § 3; 11 Jd., 138, 139, § 1; 18 Id., 540, 
§ 2; 8 George 11, oh. 13, § 1 ; 17 George III, oh. 67.) 

The litend reading of the 86th section of the Act of 1870, 
now embodied in § 4,952 of the Revised Statutes, does not 
require that both the "author" and "proprietor'' shall be 
citizens or residents of the United States. It provides that 
'^ any citizen of the United States or resident therein, who 
shall be the author, inventor, designer, or proprietor of any 
book, map, chart, dramatic or musical composition, engraving, 
cut, print, or photograph or negative thereof, or of a paint- 
ing, drawing, chromo, statue, statuary, and of models or de- 
signs intended to be perfected as works of the fine arts, and 
the executors, administrators, or assigns of any such person " 
may obtain a copyright ; and § 103 of the Act of 1870, em- 
bodied in § 4,971 of the Kevised Statutes, provides that noth- 
ing therein " shall be construed to prohibit the printing, pub- 
lishing, importation, or sale of any book, map, chart, dramatic 
or musical composition, print, cut, engraving, or photograph, 
written, composed or made by any person not a citizen of the 
United States, nor resident therein." By virtue of the latter 
section an exclusive copyright in the work of any foreign au- 
thor or artist in the subjects mentioned in that section is pro- 
hibited ; but this section does not embrace the words " paint- 
ing, drawing, chromo, statue, statuary " and '^ models," which 
were introduced into the copyright law for the first time in 
the Act of 1870 ; and, on this ground, it is urged by the com- 
plainant, that a "proprietor" may obtain a copyright on the 
last-mentioned subject, though the artist or author is an alien, 
because these are not prohibited by § 4,971. 

There are three objections to the plaintiff's contention in 
this respect : first, that it involves a reversal of the policy of 



APRIL, 1882. 459 



Yaengling v. Sohile. 



the GoYernment from its fonndation, to protect American 
artists and authors only ; second, that the word '' proprietor," 
as used in the copyright lawB, in itself means the representa- 
tive of an artist or anthor who might himself obtain a copy- 
right ; and, third, that chromos are in reality embraced under 
the description of a " print," in the restrictive section 4,971. 

It cannot be doubted that the purpose of the copyright 
laws, from the foundation of the Government, has been to 
encourage native talent and to protect American authors and 
artists only, (Drone on Copyright^ 231, 257 ;) as the English 
Acts were designed " to protect those works which were de- 
signed, engraved, etched, or worked in Great Britain." (Page 
V. Townsend^ 5 Simons^ 395, 404.) 

In the first Act on the subject, that of May 31st, 1790, the 
prohibition against an extension of the copyright to alien au- 
thors was as broad as the section authorizing copyright in 
favor of resident authors. (1 V. 8. Stat at Large^ 124, 125, 
§§1,2, 5.) With every extension of the subjects of copy- 
right, made by subsequent statutes, a corresponding restriction 
was inserted in the prohibitory section relating to foreign au- 
thors or artists, until the Act of 1870, when the few additional 
subjects above-mentioned were added to the subjects of copy- 
right, without any corresponding insertion in the restrictive 
clause as respects foreign authors or artists. But, even this 
omission, which was probably accidental, would not of itself 
have sufiiced to admit copyright upon the works of foreign au- 
thors or artists ; because the section authorizing the granting 
of copyrights has always been limited to authors or artists being 
citizens or residents of the United States, or to their lawful 
representatives or assigns. It is only by the introduction of 
the word " proprietor" into the authorizing clause of the Act 
of 1870, (§ 86,) that any doubt could arise in regard to the 
new subjects of copyright then first introduced and not ex- 
pressly restricted as respects foreign artists ; and its effect, by 
a mere literal reading, to allow a copyright on the works of 
foreign artists, has the appearance of being accidental only. 
After a policy so early estabhshed and so constantly upheld, 



460 SOUTHERN DISTRICT OF NEW YORK, 

YueDgling v. Schile. 

in reference to every subject of copyright, tlirough all the 
extensions of the law up to 1870, to limit its protection to the 
works of native or resident authors, there is certainly a strong 
presumption that no change in this policy was intended in re- 
spect to a few articles only added for the first time by the 
Act of 1870 as subjects of copyright. There is nothing ap- 
parent in the nature of these new subjects of copyright them- 
selves to distinguish them from the subjects of copyright 
previously existing, which can serve as a probable foundation 
for any such supposed change of policy. A copyright here 
upon such articles designed and manufactured abroad would 
be a double injury to American authors and designers. It 
would not only encourage the employment of foreign artists, 
to the neglect and detriment of native designers, but it would 
prevent tlie use by the latter in this country of the foreign 
material which would otherwise find its way here, to the edu- 
cation and development of our native artists, and which would 
serve as models or suggestions for their own work. If all 
foreign works of this kind can be copyrighted in this country, 
through a mere transfer to some resident dealer, or agent of 
the foreign authors, our native artists will be thereby effect- 
ually foreclosed and debarred from availing themselves of all 
such materials for the improvement of their own works. 
Every intendment, and every presumption, to be derived from 
the history of copyright in this country, and from other parta 
of the Act of 1870, seem to me to be against any such inten- 
tion in that Act. 

The effect of the literal construction contended for by the 
plaintiff would, moreover, be to make the Act of 1870 inau- 
gurate two diverse and confiicting policies in reference to the 
articles which may be copyrighted under § 86, now § 4,952 
of the Revised Statutes — one policy virtually protecting 
foreign artists by copyright in respect to the few subjects first 
introduced into the law of 1870; and another policy exclud- 
ing them in regard to all the other and much larger num- 
ber of subjects of copyright named in that Act. I cannot be- 
lieve, in the light of the history of the copyright Act, that, in 



APRIL, 1882. 461 



TDengling v. Sehile. 



reference to these few new subjects. Congress intended to 
inaagnrate any such change of policy, or to grant an exclusive 
copyright upon the importation of works wholly designed, 
manufactured and completed abroad, upon merely depositing 
copies of lithographs in the Congressional Library by some 
resident owner. Such a construction would, in effect, confer 
upon foreign authors and artists, in respect to these subjects 
of copyright, all the advantages of an international copyright 
Act, without any reciprocal rights or advantages whatever in 
favor of our own authors and artists. 

The argument for the plaintiff rests wholly upon the use 
of the word " proprietor " in the authorizing clause (§ 86) of 
the Act of 1870. But, the history of the use of the term 
" proprietor," ever since the Act of 1790, shows that it has 
always been used in the copyright laws in the limited and re- 
stricted sense of a person who, by purchase or otherwise, has 
lawfully acquired the exclusive rights of some native or resi- 
dent author or artist, and in no other manner. 

By § 1 of the Act of 1790, the right to obtain a co py- 
right is granted to a resident author upon his works, or to 
any other person being a dtizethj or resident^ who has jpur- 
chased or legally acquired the copyright of any such work, 
or the executors, administrators or assigns of such persons. 
Section 2 imposes a penalty for publishing, &c., *' with- 
out the consent of the author or proprietor.^^ The same 
expression "author or proprietor ^^ is again several times 
used in §§ 2, 3, and 4 of that Act. Thus in this early Act, 
the term " proprietor " is used to embrace all the persons, ex- 
cept the original author himself, who, by § 1, might obtain a 
copyright, viz., the author's executors, administrators or as- 
signs, or any person who had purchased " or legally acquired 
the copyright." By § 1, it is seen,- moreover, that the pur- 
chasers referred to are the purchasers of " such map, chart, 
book, or books," i, ^., of the works of resident authors only. 
It is the same in all the subsequent statutes above cited. 

From the Act of 1790 down to 1870, there could be no 
*' proprietor," in the sense of the copyright law, except the 



462 SOUTHERN DISTRICT OF NEW YORK, 

Tneogling v, SchUe. 

owner of the work of a citizen or resident author, ineiading