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at complainants' respective refineries, tank cars in sufficient number to transport complainants' normal shipments in interstate commerce." What is a reasonable request or reasonable notice, and what are normal shipments? The order affords no answer, and if the railroad company ventures, however honestly, any resistance to a request or notice not deemed reasonable, or to shipments not deemed normal, it must exercise this right at the risk of a penalty of $5,000 a day against all of its responsible officers and agents. These considerations are very serious (International Harvester Co. v. Kentucky, 234 U. S. 216, 58 L. ed. 1284, 34 Sup. Ct. Rep. 853; Collins v. Kentucky, 234 U. S. 634, 58 L. ed. 1510, 34 Sup. Ct. Rep. 924), but the view we have taken of the power of the Commission to make the order, however definite and circumscribed it might have been made, renders it unnecessary to pass upon the contentions. Decree affirmed.

(242 U. S. 202)

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Mr. Justice McKenna delivered the opinion of the court:

Suit for infringement of a patent, brought by petitioner, whom we shall call complainant, against the respondents, whom we shall call defendants, in the circuit court for the district of Indiana, October 3, 1910.

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 his application for a patent, but before the

GOSHEN MANUFACTURING COMPANY, issue thereof, assigned all of his right and

Petitioner,

V.

HUBERT A. MYERS MANUFACTURING
COMPANY and Hubert A. Myers.

PATENTS

280-EQUITY-JURISDICTIONPATENT SUIT-REMEDY AT LAW.

A suit against a corporation for the latter's alleged infringement of a patent for a hoisting device is justiciable in equity, although the corporation had sold its entire plant and property before the suit was commenced, where it still retained the ownership of a subsequent patent under which it asserted the right to infringe, and denied complainant's rights, and asserted in such suit a countervailing right, submitted for legal judgment, and had, besides, shortly before such suit was begun, sued complainant's assignor in a state court for injury

to its business because of an advertisement charging infringement, published a year before, and in that action had alleged that it "is a corporation duly organized and existing under the laws of the state of Indiana, and is now and has been for more than five years last past engaged in the business of manufacturing hay cars," since such conduct must be regarded as a continuing menace, the execution of which complainant had a right to arrest and to recover as well any lost profits.

[Ed. Note.-For other cases, see Patents, Cent. Dig. 439; Dec. Dig. 280.]

[No. 60.]

Argued and submitted November 1 and 2, 1916. Decided December 11, 1916.

title to one Allen P. Boyer, to whom a patent was issued January 21, 1908. Boyer, on the 28th of September, 1910, sold and assigned his right and title to the patent to complainant, "together with all rights and choses in action which had accrued to him, as well as those which might accrue for infringement thereof, and all rights to sue for and recover damages or profits for the

same."

It is alleged that after the issue of the patent and before the commencement of the suit defendants infringed the invention by constructing and selling a large number of the pulleys, the exact number not known, and discovery is therefore prayed; and it is alleged that defendants have a large number on hand which they are offering for sale.

It is further alleged that large profits have been realized by defendants which might have been obtained by complainant; how much exactly, however, is unknown, and discovery is prayed. An accounting is also prayed and preliminary and final injunctions.

It is alleged that Myers took part in promoting and organizing the defendant corporation, that he is a large stockholder, and is actively engaged in directing and managing the affairs of the company, being its general manager.

It is also alleged that the trade and public have recognized the value and validity of the patent.

The defendants answered separately. 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 decree 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- 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 which it is lawfully entitled, by reason of any act or any manufacture, use, or sale of hoisting devices by defendant.

And defendant, alleges that it has not manufactured any hoisting device of any kind since October, 1909, or sold or had for sale any hoisting device since March, 1910, and that complainant had knowledge of such facts before bringing this suit; and denies that it was receiving or enjoying great gains or profits, or had avowed its determination to continue manufacturing and selling any such devices.

It will be observed that defendant puts in issue the title of complainant, the novelty of the device described in the patent, alleges anticipation, and precludes or narrows it by the condition of the prior art. It denies infringement and also irreparable loss or injury to complainant by anything theretofore done by defendant, or that complainant was deprived or is being deprived of any great gains or profits to which it is lawfully entitled by reason of any act or any manufacture, use, or sale of hoisting devices by defendant.

It appears from the facts found that Myers was the inventor of complainant's device and that he subsequently claimed to have invented another different from and superior to that of complainant, which he assigned to Boyer, and that the defendant company which Myers had helped to organ

It admits that Myers took part in organizing the defendant corporation, but denies that he is a stockholder or in management of its affairs; alleges that he ceased to be a stockholder on November 19, 1909, and that he has not been a director or other officer since December 17th of that year, orize began to manufacture the device of the connected with the company or interested therein.

alleged second invention of Myers and made 25 in the spring of 1908, and the following fall prepared to make 500 more, 300 of which were sold and the rest not completed. In August, 1909, it (the defendant com

to one Diedrich 500 additional carriers for the season of 1910. It was in testimony that the 300 carriers sold by defendant were sold through Diedrich as its agent.

The answer denies the other allegations of the bill, including the novelty of the device, specifically alleging that it was not the result of invention, but merely of mechani-pany) contracted to manufacture and sell cal skill in bringing together parts of hoisting devices long previously well known and described and published in prior patents, a list of which is given, and that hoisting devices in all substantial and patentable respects similar to the alleged invention were known and publicly sold and used in the United States, the instances of which are related.

In October, 1909, complainant published a newspaper advertisement declaring defendant company to be an infringer of complainant's device, and also sent a direct notice 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 in the specific form shown and described in the patent, that Myers was not the first inventor or discoverer of a material and substantial part of the device of the patent, and that neither he nor the complainant has ever made or filed a disclaimer thereof, to the great injury of defendants. There was a replication filed to the an- manufactured nor sold carriers after the

swer.

ing him permission to use its shop and materials to finish the 200 uncompleted carriers and to manufacture the 300 more called for by his contract.

In December, 1909, Myers sold his stock to the other stockholders and thereafter had no connection with the company, and it is testified that the company neither

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 entered that the suit be dismissed for want of equity. The decree gives no information upon which it was based.

The complainant took the case to the circuit court of appeals and that court affirmed the decree. Stating the question presented,

manager notified complainants in February, 1911, that the company was practically dead. In March, 1910, it is further testified, it sold its entire plant and all of its property except only the letters patent No. 942,735, that is, the patent for the second invention of Myers, since which time it has

been out of business and without factory or office. It is also testified that in the latter part of 1909, after notice of infringement, it had decided not to manufacture any more carriers.

From this testimony the circuit court of appeals deduced that clearly as to Myers,

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387(2)-ERROR TO STATE COURT -CASE TRIED IN TERRITORIAL COURTEFFECT OF ADMISSION OF STATE.

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 Mexico in a case tried in a territorial court and appealed to the territorial supreme court before New Mexico was admitted to the Union.

[Ed. Note.-For other cases, see Courts, Cent.

Dig. § 1032; Dec. Dig. 387(2).]
CRIMINAL LAW 182-FORMER JEOPARDY
-"TWICE IN JEOPARDY."

We are unable to concur in the conclusion as to the company. It sold its plant in March, 1910, but it retained the patent under which prior alleged infringements had been practised and justified, and the right to proceed under it is neither given up nor the intention to do so denied. Besides, in September, 1910, the company sued Boyer jeopardy, contrary to U. S. Const. 5th 2. The accused was not placed twice in 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 suit the company made the following allegation: That it "is a corporation duly organized under the laws of the state of Indiana and is now and has been for more

than five years last past engaged in the business of manufacturing hay cars." We cannot ascribe this to the inadvertence or improvidence of counsel, for which the company was not responsible, as an expression of its intention. It had infringed (we assume this for the sake of argument only); it retained the patent under which it asserted the right to infringe; there was injury inflicted, therefore, and the means retained of further infringement; a denial of complainant's right, and the assertion of a countervailing right submitted for legal judgment in the case under review and besides in an independent action. We must regard this conduct as a continuing menace, and we think complainant had a right to arrest its execution and recover as well the profits of which it had been deprived, if any. The case, therefore, does not fall within the rules of the cases cited by the circuit court of appeals and those cited by defendants. In other words, further infringement was in effect threatened and could be reasonably apprehended.

We have assumed that there was infringing done and threatened, and, of course, both assumptions are based on the validity

and novelty of the device and that the defendant company's device-that is, the device of patent No. 942,735-is an unsubstantial variation of it. Whether the assumption is justified is yet to be decided, and, in the first instance, should be decided by the Circuit Court of Appeals.

Its decree dismissing the case is reversed and the case is remanded for further proceedings in accordance with this opinion. Reversed.

a plea of not guilty had been entered and not withdrawn was overruled, the jury, which had been impaneled and sworn, was dismissed, and the accused was forthwith arraigned and required to plead, and this having been done, and both sides again ansame jury previously impaneled was sworn nouncing themselves ready for trial, the and the trial proceeded.

[Ed. Note.-For other case, see Criminal Law,

Cent. Dig. $$ 330-332; Dec. Dig. 182.

For other definitions, see Words and Phrases,
First and Second Series, Jeopardy.]
CONSTITUTIONAL LAW 268-JURY
31(11)-DUE PROCESS OF LAW-RIGHT TO
JURY TRIAL.

right to jury trial was denied, contrary to
3. Neither due process of law nor the
U. S. Const., 5th and 6th Amendments, be-
cause, after a demurrer to the indictment.
which had been entertained after a plea of
not guilty had been entered and not with-
drawn was overruled, the jury, which had
been impaneled and sworn, was dismissed,
and the accused was forthwith arraigned
and required to plead, and this having been
selves ready for trial, the same jury previ
done, and both sides again announcing them-
ously impaneled was sworn and the trial
proceeded.

[Ed. Note. For other cases, see Constitutional Jury, Cent. Dig. §§ 216, 219; Dec. Dig. 31(11).j Law, Cent. Dig. §§ 756, 757; Dec. Dig. 268; [No. 123.]

Submitted November 16, 1916. Decided December 11, 1916.

State of New Mexico to review a judg N ERROR to the Supreme Court of the ment which affirmed a conviction of manslaughter in the District Court for the County of Taos in the territory of New Mexico. Affirmed.

See same case below, 17 N. M. 666, L.R.A. 1917A, 1226, 134 Pac. 222.

The facts are stated in the opinion.
Mr. T. B. Catron for plaintiff in error.
Mr. Frank W. Clancy, Attorney Gen-
eral of New Mexico, for defendant in error.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & 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 New Mexico the accused, on May 9th, 1910, pleaded not guilty to an indictment for murder. On May 24, 1911, without with-questions within our jurisdiction. drawing his plea, he demurred to the indictment on the ground that it charged no offense. The demurrer was overruled, and, both parties announcing themselves ready for trial, a jury was impaneled and sworn and the witnesses for both sides were called and sworn. The record then states: "That thereupon it appearing to E. C. Abbott, Esq., district attorney, that defendant had not been arraigned and had not plead since the overruling of defendant's demurrer, upon motion the court dismissed the jury and directed that the defendant be arraigned and plead." The accused was accordingly again at once arraigned and pleaded not guilty, and, both sides again announcing themselves ready for trial, the same jury previously impaneled was sworn and the trial proceeded. At the close of the evidence | for the prosecution the defendant moved for a directed verdict on the ground, among others, that the record showed that he had been formerly placed in jeopardy for the same offense, since it appeared that in the same case a jury had been impaneled and sworn and thereafter had been dismissed from a consideration of the case. The motion was denied and a conviction of manslaughter followed. The same ground was relied upon in a motion in arrest of judgment which was denied, and from the judgment and sentence subsequently entered an appeal was prosecuted to the supreme court of the territory.

As the case was tried in a territorial court, the denial of asserted rights based upon the 5th and 6th Amendments presents

Without expressing any opinion as to the correctness of the ruling of the court below concerning the failure to promptly raise the question of former jeopardy, although on this record it may be conceded it presents a Federal question, we pass from its consideration, since we think the contention that the accused was twice put in jeopardy is wholly without merit. Under the circumstances there was, in the best possible view for the accused, a mere irregularity of procedure which deprived him of no right. Indeed, when it is borne in mind that the situation upon which the court acted resulted from entertaining a demurrer to the indictment after a plea of not guilty had been entered and not withdrawn, it is apparent that the confusion was brought about by an overcautious purpose on the part of the court to protect the rights of the accused. Whether or not, under the circumstances, it was a necessary formality to dismiss the jury in order to enable the accused to be again arraigned and plead, the action taken was clearly within the bounds of sound judicial discretion. United States v. Perez, 9 Wheat. 579, 580, 6 L. ed. 165, 166; Dreyer v. Illinois, 187 U. S. 71, 85, 86, 47 L. ed. 79, 86, 23 Sup. Ct. Rep. 28, 15 Am. Crim. Rep. 253. See United States v. Riley, 5 Blatchf. 204, Fed. Cas. No. 16,164, in which the facts were in substance identical with those here presented.

As to the contention concerning the denial of due process and the right to jury trial, it is not disputed that in the first instance a jury was legally impaneled. The argument is, however, that constitutional rights of the accused were violated because, after the order of dismissal and the plea of not guilty, there was a failure to impanel a jury, although the same jury previously drawn was at once sworn and tried the case. But we think the absolute want of merit in statement, and is additionally demonstrated the proposition is manifest from its mere by what we have previously said. Affirmed.

Pending the appeal New Mexico was admitted to the Union and the case was heard by the supreme court of the state. In that court, in addition to the contention as to former jeopardy, the accused urged that he had been denied due process of law and had been deprived of the right to a trial by jury because from the record it appeared that although a jury was impaneled before he was arraigned and pleaded not guilty, that jury was dismissed and it did not appear that any jury was impaneled after his arraignment and plea. The court held this contention to be without merit and concluded from a consideration of the commonlaw doctrine of former jeopardy, in the light of which it deemed the constitutional provision on the subject was to be construed, that the question concerning it was raised too late, since it was first presented to the trial court after the conclusion of the state's case. To the judgment of affirmance giving effect to these conclusions this on

(242 U. S. 195) W. A. CISSNA, Plff. in Err.,

V.

STATE OF TENNESSEE.

COURTS 380-ERROR TO STATE COURT-
RESUBMISSION-PENDENCY OF ORIGINAL
SUIT INVOLVING SAME QUESTION.

A case in the Federal Supreme Court writ of error to a state court, which

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

cannot be decided on the merits without involving a decision of the question involved in a boundary suit between two states, pending on the original calendar of the Supreme Court, should not be considered or passed upon either as to the jurisdiction or merits without at the same time consider ing and passing upon the pending controVersy concerning the boundary between the two states, where an affirmance of the money judgment below will, in substance, be an award for virtually the entire avails of the lands in suit, as well as of the greater part, if not all, of the lands to be affected in the boundary suit, and such case will there

fore be restored to the docket and reas

signed for hearing at the same time and immediately after the coming on for hearing of the original boundary suit.

[Ed. Note.-For other cases, see Courts, Cent. Dig. 996-1018, 1026; Dec. Dig. 380.] [No. 89.]

Argued November 10, 1916.

IN

cember 11, 1916.

supreme court of the state, however, reversed this action and remanded the case for trial on the merits. 119 Tenn. 47, 104 S. W. 437.

The pleadings were amended in the trial court, and while the case was there undetermined, the state of Arkansas filed in this court its complaint against Tennessee to settle the boundary line between the two. The bill made reference to the suit pending in Tennessee and alleged that the lands embraced by that suit were in Arkansas, subject to its sovereignty, and denied the power of the state of Tennessee in its own courts to interfere with the lawful authority of the state of Arkansas. Thereafter the existence of the suit in this court was alleged in the state court, and that court was asked to suspend proceedings until the decision in the boundary case. This was denied and a judgment was entered in favor of the Decided De- state of Tennessee, holding that the lands were in Tennessee and belonged to that state, and this judgment was subsequently affirmed by the supreme court of the state. In that court also the pendency of the original suit between the two states in this court was specially set up and an application for suspension of proceedings, based on the fact, was prayed, but was refused. The judgment of the supreme court of the state not only decreed the lands to belong to the state of Tennessee in its sovereign capacity, on the ground that they were situated within that state, but gave a recovery for the amount of the timber cut before the bringing of the suit, and also for the money value of the balance of the timber on the lands

N ERROR to the Supreme Court of the State of Tennessee to review a judgment which reversed a judgment of the Chancery Court of Shelby County, in that state, dismissing a suit by the state to recover certain lands, to restrain cutting timber thereon, and for an accounting for timber already cut. Case restored to docket and assigned for hearing at the same time with a pending original boundary suit involving the same question.

See same case below, 119 Tenn. 47, 104 S. W. 437.

The facts are stated in the opinion.
Mr. Caruthers Ewing for plaintiff in which had been cut and removed as the re-

error.

Mr. John P. Bullington for defendant in error.

sult of the modification of the injunction, permitting that to be done.

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:

As owner in trust for the people of the state of certain described lands, the state of Tennessee in a state court commenced this action in 1903 against Cissna and others to recover the lands, and to restrain cutting timber thereon, and for an accounting for timber already cut. A temporary injunction was granted against removing and cutting timber, which was modified by permitting, on the giving of a bond, the removal of timber already cut, and was subsequently again modified by allowing all the timber on the land to be cut and removed on the giving of an additional bond. By pleas in abatement and answers the jurisdiction of the court was denied on the ground that the lands were not in Tennessee, but in Arkansas, and this was sustained and the suit dismissed for want of jurisdiction. The

for decision.

It is conceded in argument by both parties that the decision of the merits of this case will necessarily be the equivalent of a decision of the boundary suit pending on our original calendar between the two states, and that an affirmance of the money judg ment below will in substance be an award for virtually the entire avails of the lands in suit in this case, as well as of the greater part, if not all, of the lands to be affected in the boundary suit. Moreover, in substance it is not disputed that the facts here presented are identical with those upon which the solution of the boundary suit must depend. Under these conditions we think, without intimating an opinion on the question of jurisdiction raised in this case, or on the merits, that we ought not to consider and pass upon this case without at

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