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at complainants' respective refineries, tank N WRIT of Certiorari to the United cars in sufficient number to transport com. States Circuit Court of Appeals for the plainants' normal shipments in interstate Seventh Circuit to review a decree which commerce." What is a reasonable request affirmed a decree of the District Court for or reasonable notice, and what are normal the District of Indiana, dismissing the bill shipments? The order affords no answer, in a suit for the infringement of a patent. and if the railroad company ventures, how. Reversed and remanded for further proever honestly, any resistance to a request ceedings. or notice not deemed reasonable, or to ship. See same case below, 131 C. C. A. 662, 215 ments not deemed normal, it must exercise Fed. 594. this right at the risk of a penalty of $5,000 The facts are stated in the opinion. a day against all of its responsible officers Messrs. Fred L. Chappell and Otis A. and agents. These considerations are very Earl for petitioner. serious (International Harvester Co. v. Mr. V. H. Lockwood for respondents. Kentucky, 234 U. S. 216, 58 L. ed. 1284, 34 Sup. Ct. Rep. 853; Collins v. Kentucky, 234

Mr. Justice McKenna delivered the opin. U. S.

58 L. ed. 1510, 34 Sup. Ct. Rep.ion of the court: 924), but the view we have taken of the Suit for infringement of a patent, brought power of the Commission to make the by petitioner, whom we shall call complainorder, however definite and circumscribed ant, against the respondents, whom we shall it might have been made, renders it un-call defendants, in the circuit court for the necessary to pass upon the contentions.

district of Indiana, October 3, 1910. Decree affirmed.

The device of the controversy is a new and useful improvement in hoisting pulleys. It is alleged to have been invented by Hubert

A. Myers, one of the defendants, who, after (242 U. S. 202)

his application for a patent, but before the GOSHEN MANUFACTURING COMPANY, issue thereof, assigned all of his right and Petitioner,

title to one Allen P. Boyer, to whom a

patent was issued January 21, 1908. Boyer, HUBERT A. MYERS MANUFACTURING on the 28th of September, 1910, sold and COMPANY and Hubert A. Myers.

assigned his right and title to the patent to

complainant, "together with all rights and PATENTS 280_EQUITY-JURISDICTION- choses in action which had accrued to him, PATENT SUIT-REMEDY AT LAW.

as well as those which might accrue for inA suit against a corporation for the fringement thereof, and all rights to sue latter's alleged infringement of a patent for for and recover damages or profits for the a hoisting device is justiciable in equity, al.

same." though the corporation had sold its entire plant and property before the suit was com

It is alleged that after the issue of the menced, where it still retained the owner. patent and before the commencement of the ship of a subsequent patent under which it suit defendants infringed the invention by asserted the right to infringe, and denied constructing and selling a large number of complainant's rights, and asserted in such the pulleys, the exact number not known, and suit a countervailing right, submitted for discovery is therefore prayed; and it is allegal judgment, and had, besides, shortly leged that defendants have a large number before such suit was begun, sued complainant's assignor in a state court for injury on hand which they are offering for sale. to its business because of an advertisement

It is further alleged that large profits charging infringement, published a year be- have been realized by defendants which fore, and in that action had alleged that might have been obtained by complainant; it "is a corporation duly organized and ex- 'how much exactly, however, is unknown, isting under the laws of the state of In- and discovery is prayed. An accounting is diana, and is now and has been for more also prayed and preliminary and final in. than five years last past engaged in the

junctions. business of manufacturing hay cars," since such conduct must be regarded as a con

It is alleged that Myers took part in tinuing menace, the execution of which com. promoting and organizing the defendant corplainant had a right to arrest and to re-poration, that he is a large stockholder, cover as well any lost profits.

and is actively engaged in directing and [Ed. Note.-For other cases, see Patents, Cent. managing the affairs of the company, being Dig. $ 439; Dec. Dig. 280.]

its general manager.

It is also alleged that the trade and pub[No. 60.)

lic have recognized the value and validity

of the patent. Argued and submitted November 1 and 2, The defendants answered separately.

1916. Decided December 11, 1916. Myers's answer is not in the record. The de

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

fendant company's is, and denies that the, the court said: “The first and decisive company had in any manner infringed the question raised in this appeal from a decrce rights of the complainant under the patent, dismissing a bill in equity after a full hearor that any great loss or injury had ac- ing is whether a court of equity or a court crued or will accrue to complainant by rea- of law is the proper forum in which to deson of anything theretofore done by defend. į termine complainant's rights.” [131 C. C. ant, or that complainant had been or is A. 662, 215 Fed. 594.) being deprived of any gains or profits to It will be observed that defendant puts which it is lawfully entitled, by reason of in issue the title of complainant, the novelty any act or any manufacture, use, or sale of of the device described in the patent, alleges hoisting devices by defendant,

anticipation, and precludes or narrows it by And defendant, alleges that it has not the condition of the prior art. It denies in. manufactured any hoisting device of any fringement and also irreparable loss or inkind since October, 1909, or sold or had for jury to complainant by anything theretosale any hoisting device since March, 1910, fore done by defendant, or that complainant and that complainant had knowledge of was deprived or is being deprived of any such facts before bringing this suit; and great gains or profits to which it is lawdenies that it was receiving or enjoying fully entitled by reason of any act or any great gains or profits, or had avowed its manufacture, use, or sale of hoisting dedetermination to continue manufacturing vices by defendant. and selling any such devices.

It appears from the facts found that It admits that Myers took part in organiz- Myers was the inventor of complainant's ing the defendant corporation, but denies device and that he subsequently claimed to that he is a stockholder or in management have invented another different from and of its affairs; alleges that he ceased to be superior to that of complainant, which he a stockholder on November 19, 1909, and assigned to Boyer, and that the defendant that he has not been a director or other company which Myers had helped to organofficer since December 17th of that year, or ize began to manufacture the device of the connected with the company or interested alleged second invention of Myers and made therein.

25 in the spring of 1908, and the following The answer denies the other allegations fall prepared to make 500 more, 300 of of the bill, including the novelty of the de- which were sold and the rest not completed. vice, specifically alleging that it was not the In August, 1909, it (the defendant comresult of invention, but merely of mechani. pany) contracted to manufacture and sell cal skill in bringing together parts of hoist- to one Diedrich 500 additional carriers for ing devices long previously well known and the season of 1910. It was in testimony described and published in prior patents, a that the 300 carriers sold by defendant were list of which is given, and that hoisting de- sold through Diedrich as its agent. vices in all substantial and patentable re- In October, 1909, complainant published spects similar to the alleged invention were a newspaper advertisement declaring defendknown and publicly sold and used in the ant company to be an infringer of complainUnited States, the instances of which are ant's device, and also sent a direct notice related.

to defendant to the same effect. In conseAbandonment of the alleged invention by quence of this it is testified that the defendMyers is alleged, that complainant is es- ant company was unable to proceed and it topped by reason of actions had in the pat- fulfilled its contract with Diedrich by givent office from claiming a device other than ing him permission to use its shop and main the specific form shown and described in terials to finish the 200 uncompleted car. the patent, that Myers was not the first riers and to manufacture the 300 more called inventor or discoverer of a material and for by his contract. substantial part of the device of the patent, In December, 1909, Myers sold his stock and that neither he nor the complainant has to the other stockholders and thereafter ever made or filed a disclaimer thereof, to had no connection with the company, and the great injury of defendants.

it is testified that the company neither There was a replication filed to the an- manufactured nor sold carriers after the

notice of infringement, except as stated Upon the issues thus formed by the plead-above, and that its president and general ings proofs were taken and a decree was manager notified complainants in February, entered that the suit be dismissed for want | 1911, that the company was practically of equity. The decree gives no information dead. In March, 1910, it is further testified, upon which it was based.

it sold its entire plant and all of its propThe complainant took the case to the cir. erty except only the letters patent No. cuit court of appeals and that court affirmed 942,735, that is, the patent for the second the decree. Stating the question presented, invention of Myers, since which time it has


(242 U. S. 139) been out of business and without factory or BENITO LOVATO, Piff. in Err., office. It is also testified that in the latter

V. part of 1909, after notice of infringement,

STATE OF NEW MEXICO it had decided not to manufacture any more carriers.


-CASE TRIED IN TERRITORIAL COURTFrom this testimony the circuit court of

EFFECT OF ADMISSION OF STATE. appeals deduced that clearly as to Myers, 1. The denial of asserted rights based after December, 1909, and as to the defend. on U. S. Const., 5th and 6th Amendments, ant company, after March, 1910, at the lat- presents questions within the appellate est, no infringement of complainant's rights jurisdiction of the Federal Supreme Court had been committed or threatened.

over the supreme court of the state of New We are unable to concur in the conclusion Mexico in a case tried in a territorial court as to the company. It sold its plant in

and appealed to the territorial supreme

court before New Mexico was admitted to March, 1910, but it retained the patent un. the Union. der which prior alleged infringements had [Ed. Note.-For other cases, see Courts, Cent. been practised and justified, and the right Dig. § 1032; Dec. Dig. w387(2).) to proceed under it is neither given up nor CRIMINAL LAW Cw182—FORMER JEOPARDY the intention to do so denied. Besides, in


2. The accused was not placed twice in September, 1910, the company sued Boyer jeopardy, contrary to U. S. Const. 5th in the state court for the injury to its Amend., because, after a demurrer to the business by the advertisement of infringe indictment which had been entertained after ment published a year before, and in that a plea of not guilty had been entered and suit the company made the following al. not withdrawn was overruled, the jury, legation: That it "is a corporation duly which had been impaneled and sworn, was organized under the laws of the state of dismissed, and the accused was forthwith Indiana and is now and has been for more arraigned and required to plead, and this than five years last past engaged in the having been done, and both sides again anbusiness of manufacturing hay cars.” We same jury previously impaneled was sworn

nouncing themselves ready for trial, the cannot ascribe this to the inadvertence or and the trial proceeded. improvidence of counsel, for which the com- [Ed. Note.-For other casez, see Criminal Law, pany was not responsible, as an expression Cent. Dis. 53 330-332; Dec. Dig. 182.

For other definitions, see Words and Phrases, of its intention. It had infringed (we as- First and Second Series, Jeopardy.] sume this for the sake of argument only); CONSTITUTIONAL LAW m268-JURY Cm it retained the patent under which it assert


JURY TRIAL. ed the right to infringe; there was injury

3. Neither due process of law nor the inflicted, therefore, and the means retained

right to jury trial was denied, contrary to of further infringement; a denial of com-U. S. Const., 5th and 6th Amendments, br. plainant's right, and the assertion of a

cause, after a demurrer to the indictment countervailing right submitted for legal which had been entertained after a plea of judgment in the case under review and be not guilty had been entered and not withsides in an independent action. We must drawn was overruled, the jury, which had regard this conduct as a continuing menace, been impaneled and sworn, was dismissed, and we think complainant had a right to and the accused was forth with arraigned arrest its execution and recover as well the done, and both sides again announcing them.

and required to plead, and this having been profits of which it had been deprived, if any, selves ready for trial, the same jury previ: The case, therefore, does not fall within the ously impaneled was sworn and the trial rules of the cases cited by the circuit court proceeded. of appeals and those cited by defendants. [Ed. Note.-For other cases, see Constitutional

Law, Cent. Dig. $$ 756, 757 ; Dec. Dig.. On 268; In other words, further infringement was in Jury. Cent. Dig. 88° 216, 219; Dec. Dig. 31(11).] effect threatened and could be reasonably

[No. 123.) apprehended. We have assumed that there was infring

Submitted November 16, 1916. Decided Deing done and threatened, and, of course,

cember 11, 1916.

N and novelty of the device and that the defendant company's device—that is, the device ment which aflirmed a conviction of man. of patent No. 942,735—is an unsubstan- slaughter in the District Court for the tial variation of it. Whether the assump-County of Taos in the territory of New tion is justified is yet to be decided, and, Mexico. Affirmed. in the first instance, should be decided by See same case below, 17 N. M. 666, L.R.A. the Circuit Court of Appeals.

1917A, 1226, 134 Pac, 222. Its decree dismissing the case is reversed The facts are stated in the opinion. and the case is remanded for further pro

Mr. T. B. Catron for plaintiff in error. ceedings in accordance with this opinion. Mr. Frank W. Clancy, Attorney GenReversed.

eral of New Mexico, for defendant in error.

both assumptions are based on the validity I State of New Mexico to review a judg

For o.ber (a:jes see saine topic & KEY-NUMBER in all Key-Numbered Digesis & Indexes

Mr. Chief Justice White delivered the writ of error was prosecuted. 17 N. M. opinion of the court:

666, L.R.A. 1917A, 1226, 134 Pac. 222. In the district court of the territory of As the case was tried in a territorial New Mexico the accused, on May 9th, 19.10, court, the denial of asserted rights based pleaded not guilty to an indictment for upon the 5th and 6th Amendments presents murder. On May 24, 1911, without with questions within our jurisdiction. drawing his plea, he demurred to the indict- Without expressing any opinion as to the ment on the ground that it charged no of- correctness of the ruling of the court below fense. The demurrer was overruled, and, concerning the failure to promptly raise the both parties announcing themselves ready question of former jeopardy, although on for trial, a jury was impaneled and sworn this record it may be conceded it presents a and the witnesses for both sides were called Federal question, we pass from its consideraand sworn. The record then states: "That tion, since we think the contention that the thereupon it appearing to E. C. Abbott, accused was twice put in jeopardy is wholly Esq., district attorney, that defendant had without merit. Under the circumstances not been arraigned and had not plead since there was, in the best possible view for the the overruling of defendant's demurrer, up- accused, a mere irregularity of procedure on motion the court dismissed the jury and which deprived him of no right. Indeed, directed that the defendant be arraigned when it is borne in mind that the situation and plead.” The accused was accordingly upon which the court acted resulted from again at once arraigned and pleaded not entertaining a demurrer to the indictment guilty, and, both sides again announcing after a plea of not guilty had been entered themselves ready for trial, the same jury and not withdrawn, it is apparent that the previously impaneled was sworn and the confusion was brought about by an overtrial proceeded. At the close of the evidence cautious purpose on the part of the court for the prosecution the defendant moved for to protect the rights of the accused. Whetha directed verdict on the ground, among er or not, under the circumstances, it was others, that the record showed that he had a necessary formality to dismiss the jury been formerly placed in jeopardy for the in order to enable the accused to be again same offense, since it appeared that in the arraigned and plead, the action taken was same case a jury had been impaneled and clearly within the bounds of sound judicial sworn and thereafter had been dismissed discretion. United States v. Perez, 9 Wheat. from a consideration of the case. The mo- 579, 580, 6 L. ed. 165, 166; Dreyer v. Illition was denied and a conviction of man. nois, 187 U. S. 71, 85, 86, 47 L. ed. 79, slaughter followed. The same ground was 86, 23 Sup. Ct. Rep. 28, 15 Am. Crim. Rep. relied upon in a motion in arrest of judg. 253. See United States v. Riley, 5 Blatchf. ment which was denied, and from the judg. 204, Fed. Cas. No. 16,164, in which the ment and sentence subsequently entered an facts were in substance identical with those appeal was prosecuted to the supreme court here presented. of the territory.

As to the contention concerning the denial Pending the appeal New Mexico was ad- of due process and the right to jury trial, mitted to the Union and the case was heard it is not disputed that in the first instance by the supreme court of the state. In that a jury was legally impaneled. The argu. court, in addition to the contention as to ment is, however, that constitutional rights former jeopardy, the accused urged that he of the accused were violated because, after had been denied due process of law and had the order of dismissal and the plea of been deprived of the right to a trial by jury not guilty, there was a failure to impanel because from the record it appeared that al- a jury, although the same jury previously though a jury was impaneled before he drawn was at once sworn and tried the case. was arraigned and pleaded not guilty, that But we think the absolute want of merit in jury was dismissed and it did not appear statement, and is additionally demonstrated

the proposition is manifest from its mere that any jury was impaneled after his arraignment and plea. The court held this

by what we have previously said.

Affirmed. contention to be without merit and concluded from a consideration of the common

(242 U. S. 195) law doctrine of former jeopardy, in the W. A. CISSNA, Piff. in Err, light of which it deemed the constitutional provision on the subject was to be con

STATE OF TENNESSEE. strued, that the question concerning it was raised too late, since it was first presented


RESUBMISSION-PENDENCY OF ORIGINAL to the trial court after the conclusion of the

SUIT INVOLVING SAME QUESTION. state's case. To the judgment of affirm

A case in the Federal Supreme Court ance giving effect to these conclusions this' on writ of error to a state court, which

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cannot be decided on the merits without in. , supreme court of the state, however, revolving a decision of the question involved versed this action and remanded the case in a boundary suit between two states, for trial on the merits. 119 Tenn. 47, 104 pending on the original calendar of the Su. S. W. 437. preme Court, should not be considered or passed upon either as to the jurisdiction or

The pleadings were amended in the trial merits without at the same time consider court, and while the case was there undetering and passing upon the pending contro. mined, the state of Arkansas filed in this versy concerning the boundary between the court its complaint against Tennessee to two states, where an affirmance of the inoney settle the boundary line between the two. judgment below will, in substance, be an The bill made reference to the suit pending award for virtually the entire avails of the in Tennessee and alleged that the lands emlands in suit, as well as of the greater part, braced by that suit were in Arkansas, subif not all, of the lands to be affected in the boundary suit, and such case will there-ject to its sovereignty, and denied the power fore be restored to the docket and reas

of the state of Tennessee in its own courts signed for hearing at the same time and to interfere with the lawful authority of immediately after the coming on for hear the state of Arkansas. Thereafter the er. ing of the original boundary suit.

istence of the sui in this court was al. [Ed. Note.-For other cases, see Courts, Cent. leged in the state court, and that court was Dig. $$ 996-1018. 1026; Dec. Dig. Om 380.]

asked to suspend proceedings until the deci. (No. 89.]

sion in the boundary case. This was denied

and a judgment was entered in favor of the Argued November 10, 1916. Decided De- state of Tennessee, holding that the lands cember 11, 1916.

were in Tennessee and belonged to that state,

and this judgment was subsequently af. N ERROR to the Supreme Court of the firmed by the supreme court of the state.

State of Tennessee to review a judgment In that court also the pendency of the orig. which reversed a judgment of the Chancery inal suit between the two states in this Court of Shelby County, in that state, dis- court was specially set up and an applicamissing a suit by the state to recover cer- tion for suspension of proceedings, based on tain lands, to restrain cutting timber there the fact, was prayed, but was refused. The on, and for an accounting for timber al- judgment of the supreme court of the state ready cut. Case restored to docket and as- not only decreed the lands to belong to the signed for hearing at the same time with state of Tennessee in its sovereign capacity, a pending original boundary suit involving on the ground that they were situated withthe same question.

in that state, but gave a recovery for the See same case below, 119 Tenn. 47, 104 amount of the timber củt before the bring. S. W. 437.

ing of the suit, and also for the money value The facts are stated in the opinion.

of the balance of the timber on the lands Mr. Caruthers Ewing for plaintiff in which had been cut and removed as the re

sult of the modification of the injunction, Mr. John P. Bullington for defendant permitting that to be done. in error.

At the threshold jurisdiction to review

the judgment thus rendered is denied on Mr. Chief Justice White delivered the the ground that no Federal question arises opinion of the court:

for decision. As owner in trust for the people of the It is conceded in argument by both parties state of certain described lands, the state that the decision of the merits of this case of Tennessee in a state court commenced will necessarily be the equivalent of a dethis action in 1903 against Cissna and cision of the boundary suit pending on our others to recover the lands, and to restrain original calendar between the two states, cutting timber thereon, and for an account and that an affirmance of the money judg. ing for timber already cut. A temporary ment below will in substance be an award injunction was granted against removing for virtually the entire avails of the lands and cutting timber, which was modified by in suit in this case, as well as of the greater permitting, on the giving of a bond, the part, if not all, of the lands to be affected removal of timber already cut, and was sub. in the boundary suit. Moreover, in subsequently again modified by allowing all the stance it is not disputed that the facts here timber on the land to be cut and removed on presented are identical with those upon the giving of an additional bond. By pleas which the solution of the boundary suit in abatement and answers the jurisdiction must depend. Under these conditions we of the court was denied on the ground that think, without intimating an opinion on the the lands were not in Tennessee, but in question of jurisdiction raised in this case, Arkansas, and this was sustained and the or on the merits, that we ought not to consuit dismissed for want of jurisdiction. The sider and pass upon this case without at

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