this respondent by proper instruments of writing, duly recorded in the patent-office of the United States, to the Eclipse Improved Wheat-cleaning Machine Company, a corporation organized under the laws of the state of New Jersey, and was, at and before the time of the filing of said complainant's said bill, and is now, owned by said company; and respondent submits that the said Eclipse Improved Wheat-cleaning Machine Company is a necessary party to this suit, but is not by said complainant's said bill of complaint made a party thereto. * says * * that it appears by said bill (3) This respondent * of complaint that said complainant has been refused a patent upon his application in said bill mentioned by the commissioner of patents, within whose cognizance and jurisdiction such matters properly are, and that complainant's said bill of complaint is exhibited for the purpose of obtaining the jUdgment and decree of this honorable court that he is by law to receive a patent for the invention claimed in his said application in said bill mentioned; wherefore it appears from complainant's said bill of complaint that the said commissioner of patents is a necessary party to this suit, but he is not by said bill made a party thereto.
. The case was set down by complainant for argument under equity .rule 52 on these objections for want of parties. The court sustained the first objection, but overruled -the second one, holding (orally) that the Eclipse Improved Wheat-cleaning Machine Company should be made a party defendant, but that the commissioner of patents was not a necessary party to the bill so long as there was an opposing party, and the following order was entered: And now, October 6, 1885, this cause came on to be heard upon the "defendant's objection for want of parties," and was argued by counsel. Whereupon it is ordered that complainant have leave to amend his bill of complaint by adding the Eclipse Improved Wheat-cleaning Machine Company, a corporation created by the laws of the state of New Jersey, as a party defendant, without costs to be taxed against him. It is further ordered that the objection tl1at the commissioner of patents is not made a party be overruled.
(Circuit Oourt, D. Ma88achu8ctta. October 1, 1885.)
PATENT-MARK ON UNPATENTED ARTICLE-PENALTY.
Under section 4901, Rev. St., the marking of an unpatented article "patented, " with intent to deceive and defraud the public, is a criminal offense, and liable to a penalty of not less than $100 for each offense. A eorporation is liable for the act of its superintendent in wrongfully af· fixing word "patented" to an article which is unpatented.
CORPORATION-SUPERINTENDENT-LIABILITY FOR ACTS OF.
If the superintendent knew, or should have known, that the articles were not covered by patent. the corporation will be liable; but if he honestly believed they were, it will not be.
TOMPKINS V. BU1"XERFIELD.
J. C. Clayton, for plaintiff.
may be unlawfully stamped will see that the proper action is brought to enforce the penalty, and leaving it to the public at large to enforce it in this wa,y, of course ex.pecting that in all probability the suits will be brought by those who are interested pecuniarily in the article in respect to which the penalty has been incurred; and in this case, as I suppose in all cases of this nature, the party suing is a person interested in the article manufactured, and who desires for some reason, to enforce the penalty against a rival manufacturer who interferes with the business of the plaintiff. . Now, another consequence flowing from this being, as I have said, in the nature of a criminal proceeding,. is this: that the offense must be proved by evidence that leaves upon the minds of the jury no reasonable doubt that the penalty has been incurred. In an ordinary criminal prosecution it is not suffioient to go only so far as to establish a preponderance of the evidence in favor of the government. Every person charged with an offense is to be considered innocent unless his guilt is proved so clearly that the jury can conscientiously say that no reasonable doubt remains upon their minds as to his guilt. The term "reasonable doubt," of course, does not signify a mere skeptical condition of the mind. It does not require that the proof should be so clear that no possibility of error can exist; for if that were the case, no criminal prosecution would ever prevail. It means simply that the evidence must be so conclusive and complete that all reasonable doubt of the facts is removed from the mind. That is a rule which you will apply to this case, and you will keep it in mind through the entire case. It appears that some time before this suit was commenced the Suffolk Iron Company sold 50 saddle-trees, on each of which Was stamped the words and figures, "Patented June 9, 1874." The parties agree that this stamp is sufficient to satisfy that provision of the law which prohibits any person from putting the word "patented," or any word importing that the thing is patented, upon any article for the purpose of deceiving the public. Thus it has been admitted in this case that these 50 articles sold by the defendants were all stamped within the meaning of this statute. There is no controversy about that. I think it may also be stated here that the plaintiff has proved, by sufficient evidence to justify you in finding a verdict in his favor, that this article is wholly unpatented unless it is covered by a patent granted to one Theobald on the date borne on this label, the ninth of June, 1874. This also is agreed to in substance by the parties. Therefore, one question to be determined is whether anyone of these articles (for they are all alike) was manufactured in accordance with the specification and claim of this patent to George Theobald. I must confess . that I have found some difficulty in construing this patent as a matter of law ; but I have given it the best consideration that I have been able to, and I have come to the conclusion to instruct you in regard :' to this patent as matter of Jaw, so that ypu will not have to consider
TOMPKINS V. BUTTERFIELD.
the question whether or not, upon the evidence in this case, these articles are covered by the Theobald patent. I think, upon scrutiniz· ing this instrument carefully, that. neither the ridge, the chamber or orifice, the square opening at the end of the wing or side of the tree, or the space beneath, ia covered by the patent. I think neither of these is covered within the meaning of this patent. I think that it also fails in not having upon it the sockets, which are an essential part of the article described in the Theobald patent, and in not having any concave or convex surface, such as is described in the specification or claim of the letters patent. We are fortunate in having before us a saddle-tree which the parties agree is made in accordance with the Theobald patent, and I have come to the conclusion to take the view which was taken by the learned gentleman who appeared here, Mr. Faber du Faur, as an ex.pert for the plaintiff, and to hold that what the claim of the patent actually covers is the convex. surface on the under side of the bearing portion of the tree, the depressed upper surface, which constitutes the corresponding part to the convex under surface, the air-chamber, formed by its corrugated upper surface, and the sockets by which the contrivance is attached to the saddle; and therefore you will take it for granted, in determining this case, that these 50 articles were not manufactured in conformity with this patent. If I err in this respect, the defendant has his remedy by taking the case to a higher court. That is the conclusion to which I have come upon a careful examination of this claim and specification. But that, of course, is by no means the whole of this case. Although this maybe an article which is not patented within the meaning of the statute, still the defendant is not necessarily guilty of this offense. The plaintiff must go further, and prove that these marks were affixed to these articles for the purpose of deceiving the public. Now, this suit is against a corporation which can have no purpose whatever, can have no mind or volition. The evidence is that these marks were affixed after the corporation became the proprietor of the Theobald patent, and the owner of the stock purchased of Hayes. It appears that the labels were affixed by the superintendent per· sonally, or by persons under bis direction, and that the other officers of the corporation had nothing whatever to do with it, gave no directions in regard to it, and that the act of fixing or causing these marks to be fixed was that of the superintendent. I instruct you that the corporation is responsible for the conduct of its superintendent; that as he was the person who had charge of this work, and the person who conducted the manufacturing part of the business of the corporation, his acts bound the defendant; and that the corporation is. bound by the purpose of the superintendent in the performance of the acts, and by his knowledge with reference to the performance of the acts. . what does the statute mean when it , Now comes the the term "for the purpose of deceiving the public 'I" It means the
purpose of making the public believe, by affixing a stamp or mark upon the article, that it is covered by a patent. If that was the purpose of tho superintendent, with the knowledge or belief that in point of fact and law the article was not covered by a patent, then the corporation is liable to the penalty for the act of the superintendent. So it is important for you to find out from all this evidence what was the state of mind of this superintendent. There is no claim that the other officers of the corporation had any knowledge of these acts; and the suit has been discontinued as against them. It all rests upon the knowledge and purpose of Hayes, the superintendent. Now, if you think, upon all this evidence, that Mr. Hayes knew or ought to have known that these articles were not fairly within the tel'ms of the Theobald patent, then it is your duty to find a verdict for the plaintiff; but if, on the other hand, you find from all this testimony that he honestly believed, though his belief may have been mistaken, that these articles were covered by the Theobald patent, then, although he may not have had a lawful right to have so affixed these marks, yet it cannot be said that he did it with the fraudulent and unlawful purpose which the statute makes essential to the offense; therefore you will, of course, weigh very carefully his testimony, and compare it with an the facts in the case. You have heard his own statement as to the efforts which he made to ascertain his own rights while he himself was the holder of the patent and the manufacturer of the trees, and affixed these stamps to the articles manufactured, and you have heard his testimony as to his consultation with a patent solicitor. Of course, it is important that all this should be carefully considered by you; and you are to say whether he honestly believed that the articles were fairly within the terms of the 'patent, and that he had a rigllt to affix these stamps upon that ground. Now, I think I ought to go a step further and say to you that if he affixed the stamps without knowing whether the articles were patented or not, and not having had in his mind clearly the question whether the article was within the patent or not, and without any reference to this patent or any other patent, then it was an act whir-h, unCler the statute, fairly constitutes a case of criminal conduct on the part of the defendant. If he proceeded without any knowledge one way or the other to stamp the article, neither he nor the corporation can have the right to say that they had no purpose; that they never gave it a thought; that they did it under some mistaken idea of duty, -did it honestly, but without reference to any patent, and without any reference to the patent of Theobald. If they did so act, was a case of fraud upon the public which comes within the meaning of the statulte. If you find that condition of mind on the part of Hayes in reference to affixing these stamps, then you must find a verdict for the plaintiff. The declaration contains 50 distinct ,counts, one upon each of the 50 articles sold by the defendant corporation. The result would be,
if you found for the plaintiff upon either one of them, you must neces· sarily find for him upon all, or a verdict of $5,000, one-half of which would go to the plaintiff and the other half to the Unit.ed States. But the plaintiff asks for your verdict only upon three of the counts, and that you shall find the defendant guilty only as to three of the articles. If, therefore, you find for the plaintiff, you will return a verdict for $300, and not for the $5,000 which you would otherwise be obliged to return if you found on either one of the counts for the plaintiff. I think, gentlemen, I have covered all the points which have been raised in the case. So far as my rulings are contrary to what has been requested by either party, their right of exception, of course, exists.
Mr. Clayton. As at present advised, the rulings are entirely satisfactory to the counsel for the plaintiff; but I will inquire, by way of greater caution, if he will have an opportunity, should it be needful, to except after he shall have seen the written charge. Nelson, J. No; I think you must except now. I do not think you have the right to except at any subsequent time. Have you anything to say, Mr. Cummings? Mr. Cummings. I do not care to call the attention of the court to anything further; but I should like to save the defendants' exception, supposing that there should ever be any occasion for it, as to the ruling of the court upon the construction of the Theobald patent, and likewise upon the ruling as to the liability of the corporation with respect to Mr. Hayes' acts. Nelson, J. You are entitled to exceptions upon both those points. Therefore, gentlemen, I think has been covered, and it only remains for you to take the case and pass upon the facts. I want to caution you in one particular. There has been a great deal I)f testimony here, called expert testimony,-opinions given by per. Rons skilled in this art, who have come before you and given their opinions. Now, it is very difficult in such testimony to separate the mechanical opinion from the opinion on questions of law in a case of this kind. The law and fact are so mixed up in a case of this kind that it is very di-fficult to separate the opinion of the witnesses upon a mechanical question from their opinion upon a question of law. You must remember that you must take all the law from the court. You f1.re yourselves to be the sole judges upon all questions of fact; but you are not to take any opinion upon any question of law from the mouth. of the expert witness. Gentlemen, you will now retire to your room lD charge of an officer of the court and consider your verdict, and when you have agreed upon it, you will notify the officer in at. tendance, and you will be brought into court, and your verdict will be received and recorded. v.25J!'lllO.9-36
«(Jircuit Court, E. D. Nf/IJ) York. August 81, 1885.)
CARRIER OF GOODS BY W ATER-DISC.lURGE OF CARGO OF ORANGES IN FREEZING WEATHER-SHIP How FAR LIABLE FOR DAMAGES.
The steam-ship A. arrived in the port of New York, from Kingston, Jamaica, on the twenty-ninth of December, 1880, having on board a consignment of oranges. for one W. The weather on the 29th, and for some days after, was extremely cold. On the morning of the 29th, W., hearing of the arrival of the steamer with his consignment, procured a custom-house permit to land the fruit, and gave the steam-ship company a check for the freight. In the afternoon of the same day, however, concluding that it was too cold to discharge green fruit, he gave notice not to discharge his oranges, and he did not surrender the custom-house p'ermit. Notwithstanding this, the oranges were discharged, and were speedIly frozen. On learning of this, W. stopped. payment of his check for the freight and abandoned the fruit, giving notice to the steam-ship of his action, and he subsequently libeled the vessel for the full value of the oranges. Held, that the steam-ship was guilty of negligence in discharging the fruit at an improper time and against the objection and protest of the libelant.
S ..U lE-BILL OF LADING-INVOICE VALUE.
The bills of lading contained a clause limiting the liability of the steamer to the invoice value of the goods shipped. No evidence of what the invoice value was, was given in the district court. The district judge held that, under the circumstances, as the oranges had not only been frozen, but forfeited to the government by being lllnded without a permit, the libelant was entitled to recover the sound value of the fruit in New York, less the freight, i. e., $5,784.01. On appeal, new evidence being introduced as to the invoice value, held, that as, in accepting the bills of lading, the shipper accepted the terms of the contract they contained, the libelant could not, under the limiting clause in the bill of lading, recover more than the invoice value, for which, less the freight, i. e., for $733.27, decree was rendered.
SAME-"EFFECT OF CLIMATE."
"Effect of climate" in the sentence" effect of climate or heat of holds, "in a bill of lading, means the effect of climate in the passage of the vessel from a tropical climate northward, or vice versa, during the voyage, in its action on cargo in the vessel, and not such exposure as occurred in this case
FINDING OF FACTS BY COURT.
(1) The libelant, Gerhard Wessels, was and is a merchant doing business in the city of New York; (2) The steam-ship Aline mentioned in the libel herein was and is owned by the Atlas Steam-ship Company. (Limited,) the claimant, a corporation organized and existing under the laws of the Kingdom of Great Britain and Ireland. She was. long prior to the filing of the libel herein. and continued tu be down to that time, one of a regular line of steamers, some of which belonged to and others were chartered by the cla.imant, and all of which were managed by it,and which formed a regular line of common carriers for the carriage of passengers, mails. and cargo, between the port of New York and divers ports in the West India islands, one of which was the port of KingstOn, in the Island of Jamaica. (3) The steamers of said line had regular days of sailinK from the port of New York and the port of Kingston, aforesaid, which were advertised for about a month in advance, and which. with some few exceptiolls, were regularly kept, and were relied upon by persons dealing with said line, for the