COUNTY OF BUCHANAN.
defendant in the circuit court, his representative, though a citizen of. the same state, may revive it,-the court holding, against the argument of Daniel Webster, who was of counsel for the appellees, that the bill of revivor was in no just sense the original suit, but was a mere continuance of the original suit, and, where the jurisdiction of the court had completely attached to the controversy, it could not be divested by any subsequent events, and that the administrator or executor of a deceased party, under the thirty-first section of the judiciary act, (1 St. at Large, 90,) has power to prosecute or defend an action by or against the deceased, without regard to his own citizenship. It may be of consolation to counsel of movant here to reflect that JUdge STORY held with him in the circuit court, and not until ma.ture reflection did he change his opinion. For the reasons given the motion to remand is de1,lied.
MAY 11. BUCHANAN
(Oi'1'CJ.f,ii (Jourt, No D. Iowa, E. D. November Term, 1886.)
Under Rev. st. U. S. § 721, prOViding that "the laws of the several states, except where the constitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at common law, in the courts 'Of the United States, in cases where they apply," an action in a federal court to recover damages for infringement of a patent is not subject to a state statute of limitations.
SAlIIE-CLAIlIl AGAINST COUNTy-STATE STATUTE,
But such action is subject to a state statute reqUiring a demand against a county for unliquidated damages to be presented to t)le board of supervisors of the county, and pay,ment demanded, before bringing action upon it.
Action for damages for infringement of a patent. -tition. Runneu's & Walker, for plaintiff. J. E. Cook, for defendant.
Demurrer to pe-
SHlRAS, J. In the petition filed in this cause, it is averred that on the fourth day of October, 1859, letters patent, in due form, were issued to one Edwin May for an. improvement in the construction of prison cells, and on the fourth day of October, 1873, an extension of said pat·ent for a further term of seven years was duly granted to said May; that in February, 1880, said Edwin May died, in the state of Indiana, and that plaintiff, by proper proceedings had in the probate court, and conveyances executed under the orders thereof. has become and is the owner ·of all the rights conferred by and growing out ofsaid letters patent to said ..Edwin May; that between the fourth day of October, 1873, and the same
in, 1880, the defendant, without right or authQrity so to do, did make and use sundry apparatllS and machinery which infringed upon the exclusive rights secured by said letters patent to said Edwin May, whereby the plaintiff has been depo.ved of the reasonable royalty upon said. infringing apparatus, to· the damage of plaintiff in the sum of $3,000.. To this petition a demurrer is i;I;lterposed, on the grounds that the tion shows on jts face that the cause of action is barred by the statute of limitations of the state of action having been brought after the expiration .of five years from and after the date when the extended pllotent expired; and because it is not averred that the demand, being for unliquidated damages, had been presented to the board of supervisors, and payment demanded, as required by section 2610 of the Code of Iowa. ..... .... . . . This action is brought under the provisions of section 4919 of the Revised Statutes, which enacts that "damages for the infringement of any patent may be recovered by action on the case, in the name of the party interested, either as patentee, assignee, or grantee." By section 55 of the patent act of 1870 it was provided that "all actions shall be brought durthe term for whi,ch the letters patent were granted or extended, or within six years after the expiration thereof." As to causes of action arising after June 22,1874, this limitation was repealed' by the adoption of the Revised Statutes, according to the provisions of section 5596 thereof, but, by section 5599, was 'continued in force as to all causes of action then in existence. If, then, cause of action in the present case had arisen before June 22, ]874, it would be barred by the limitation of six years found in the act of congress of 1870..' . ' T.p.e petition avers more than one act of infringemept. and as to t40se committed after June 22, 1874, the question is whether the action to recover for these is or is not subject to the limitation of the state statute. This questiqnll11snbt been finally settled by the supreme court ofthe United States, and the decisions of the circuit courts are not in harmony. See Walk. Patents, § 477, where the cases are cited and comupon.' , Where, as in this case, the action is based upon the rights conferred by the statute of the United States, then the better rule seems to be that the state statute of limitations, ex proprio vigore, does not apply. The right to a patent, and to the exclusive use of the rights conferred thereby, is wholly of federal creation, andtbestate cannot either extend or limit the time within which an action for the protection of these rights may be brought under the federal statute. It is. however, within the power of congress to declare that actions brought under the provisions of the United States laws shall be subject to the limitations enacted in state statutes. In other words, congress adopt the provisions of the state statute, and .make the same applicable to actions for the enforcement or protection of rights wholly created· by federal legislation, and of which actions jurisdiction is exclusively in the federal courts. The question is whether congress has thus adopted and made
MA.Y ".COUNTY QF BUOHANAN.
cable the provisions of the state statute. It is argued that section 721 of the Revised Statutes, which declares that "the laws of the several states, except where the constitution, treaties, or'siatutes of the United rules of decision States otherwise require or provide, shall be regarded in trials at, common law,in .the courts of the United States, in caSes where they. apply," should be held to include the state statute of limitations, and to render the same applicable in all cases wherein the United States. statute does not prescribe a period of limitations. In the .absenCe of an authoritative construction of this 'section by the supreme <}ourt, .it cannot be denied that the extent and scope of the section is in doubt. In .the case of U. S. v. Reid, 12 How. 361, referring to the similar section in the act 6f 1789, the supreme court held, "that the language of this section cannot, upon any fair construction, be extended beyond civil cases at common law, lIB contradistinguished from suits in equity. So far as concerns rights of property, it i8 the only rule that could be adopted by the courts of the United States, and the only' one congress had tbe power to establish; and the section above quoted was merely intended to confer on: the courts ·ofthe United States the jurisdiction necessary to enable them to ,administer: the laws of the state." In McNiel, v. Holbrook, 12. Pet. 84, the court held that, under. this flection, the rules of evidence prescribed by the laws of the state were applicable iu!trials at common law in the United States court; saying that, "indeed, it-would be difficult to make the laws of the state,.in relation , to the rights of property, the rule of decision in.the circuit courts,withoU,t, associating with them: the laws of the same state, presc11ibing, ,the rilles of evidence by which the rights of property.must be decided/' It is manifest that the laws of a state, to be of force, and to control the decision of any court, state or federal, must be laws rightfully enacted; that. is to say, laws within the power of the state legisla,ture to enact. The state' laws, therefore, which are intended to be included ·within section 721 of the Revised Statutes, as rilles of decision to be followed by the federal courts, must be laws within .the power of the state to enact. The state, having the right to deal with the subject-matter in the way of legislation, can, through its legislature, adopt laws defining the rights of persons in connection therewith; and these laws, creating or defining the rights of persons in the premises, or the rights of property, and the laws providing for the mode of enforcing or protecting these rights,'including those prescribing the time within which actio1\S. may be brought, and the rilles of evidence to be followed, will constitute rules of decision which the courts of the United States must, in dealing with rights thus created, defined, br limited, observe and enforce. But the laws of aatate cannot copstitute rules of decision, binding and obligatory upon: .courts of the United States, in matters or rights which are wholly state control,a.nd wholly within federal control; and the true consttuction of section 721, therefore, is that it makes applicable as rules of decision in the federal courts those laws of the. ,states which, de-aling with $U bjects ,within .state control, create or define rights in or to property,
and providetne mode of protecting or enforcing these rights. When state legislature adopted a statute of limitations, it was intended to apply to proceedings brought to enforce causes of action cognizable in the courts of the state, and, when the cause of action lies without the jurisdiction of the state, then'the 8tatestatute oflimitations cannot be made applicable thereto by any declaration, express or implied; of the state ' , lithe laws of congress on the subject of patents were repealed, there "Wotddnot exist any right to a patent; or, in other words, the inventor would not have any enforceable right of property in his invention, or the fruits thereof. This right of property is created by the acts of congress.and state legislation does not deal therewith. Thus, it is clear .that the state legislature could not legally enact that none of its citizens should apply for and obtain a patent for an invention, unless he should apply for the same within sixmonths,or any other time; 'and the right to protect the property created' by the patent laws, by bringing an action at law or in equity, conferred by the act of congress, cannot be ited or affected by state legislation. When. therefore, the state adopted its statute of limitations, it did not have the right, nor can it posed that it was the intent of the legislature to attempt,to limit the time which actions might be brought, under the provisions of the act of congress, for the protectionM the patent-rights created by the laws of the United States. To make the state statute of limitations, therefore, applicable to an action to recover damages for an infringement of a patent, it must appear that congress has, by law, adopted and made applicable the state statute; and this is not the effect of section 721, if the view expressed of that section is correct, to-wit, that it includes only the laws of the state which deal with subjects within state control. In Sayles v. Dubuque & S. a. R. R. Gb.· 5 Dill. 561, heard before DILLON and LOVEl, JJ., it is stated: "We are inclined to the opinion that the stateatatute of limitations has no application to suits in respect of the rights granted by letters patent for inventions, but we leave the question open to further discussion." While this case left the questiol1open, still it gives a clear intimation of the view entertained by the court, ,and sustains the conclusions reached in the present case, which maybe summed up as follows: (1) That as it is not within the power of the state legislature, by direct enactment, to define or .limit .the time within which an action to recover damages for an infringement of a patent may be brought in the United States courts, it follows that the general statute of limitations of the state does not, ex proprio vigore, apply to or control such an action. (2) That, to limit the time within which an action under secti.on 4919 of the Revised Statutes of the United States may be brought, it must appear that the congress of the United States has fixed a limitation of time; which may be done by showing that congress'has, as in the patent act of 1870. precribed the time within which such actions must be brought, or that it has expressly adopted, and made applicable thereto, the provisions of the state statute. In the latter case, as well as in the former, it is, how\
ever, the act of congress which creates the limitation; (3) That section 7210£ the Remsed Statutes declares that the laws of the state shall be followed as rules of decision "in cases where they apply i" that is, in cases which involve matters or rights within the legislative jurisdiction of the state. (4) That as the subject of granting letters patent, and au, thorizing actions to be brought for the protection of the rights thus created l is whqlly without state control, the general statute of limitations of the state does not, f!(X proprio vigore, apply thereto, and, not applying, is not ,made a rule of decision governing the United States court, by the provisions <;>f section 721. So far, therefore, the demurrer is based upon the ground that the action is barred by reason of the provisions of the state statute of limitations, it is not well taken, ,and is overruled. The othergrqund of demurrer is that it is not averred that the claim for damages,'being unliqllidated,was presented to the board of supervisors, and It demand for payment thereof made, before bringing suit, as required by the provisions of section 2610 of the Code of Iowa. Counsel for plaintiff claim that this provision of the state law is not applicable to actions in the United States courts brought to recover damages for infringement of a patent, because the subject-matter of such actions is beyond state control, and cannot b.e affected by state legislation. If the section of the Code in question dealt with the subject of patents, or sought to limit or control the proceedings authorized by the act of congress for the enforcement or protection of the rights created by the issuance of a patent, the argument of counsel would be applicable; but such is not the object or purport of this section. The right to sue a county of the state and recover judgment against the same is a right dependent upon the laws of the state. The powers, rights, and liabilities of a eounty, the liability to be sued, are wholly derived from the state legislation; and the legislature may, in imposing upon the county the liabHity to be sued, surround such liability with such safeguards as it may deem wise and proper. If the laws of Iowa did not confer upon the county the right to sue and be sued, the plaintiff could not maintain the present action; and as the plaintiff, in bringing suit against the county, is availing himself of a right created by the state, he must take the right with the limitations placed thereon by the power which -creates the right. Having the right to create the municipal subdivision known as a "county," and to prescribe the rights, powers, andliabmties pertaining thereto, the state has the right to enact that the county cannot be sued uutil a proper demand for payment or settlement has been made; and this enactment is one which the United States courts are bound to follow and enforce. , Upon this ground the demurrer to the petition is well taken, and is sustained.
and another 11. BURLINGTON &L. R. CO. and others.
(Jourt,D. Vermont. January 5, 1887.)
To a suit to foreclose a mortgage, brought in a federal 'court in one state ,against a corporation of that state, by bondholders,citizens of another state, other bondholders who are citizens of the state where the suit is brought can· not be made parties plaintiff, the jurisdiction being dependent upon citizen· _ehip; but, under fluch circumstances; the plaintiffs can forEj,clolile the mortgag& separately, and the proceeds of sale, if a sale is made, will be distributed ac· . cording to the rights of all. ' 8. SAME-TIME TO REDEEM-PRACTICE IN STATE AND FEDERAL COURTS. A right of· a mortgagor to have time to redeem on suit to foreclose recognized by the laws of a state where the mortgage was made, is a property right, which will be regarded in a suit to foreclose brought in a federal court. Beld, accordingly, in the case of a Vermont mortgage foreclosed in a federal court, tha,t defendant would be allowed a year from the first day of the term in which to redeem, in accordance with the practice of the state courts, and (it beiJig 'doubtful whether a sale should, be ordered) that meanwhile no de· cree cfor sale would be made, and DO decision as to whetherplaintiJIs were entitled to a lIale. , . · 8. INTEREST-AFT:Jb1i Under the Vermont law. bonds will bear interest after maturity, as well ... before. at a special rate of interest mentioned in them.
OOURTS- FEDERAL-FoRECLOSURE SUlT-PAltTIES-PROCEDURE.
In Equity. Luke P. Poland, for orators. Eleazer R. Hardt for defendants.
J.This bill is brought by the orators, in behalf of them· .elves and aU others in like interest, to foreclose a mortgage of the railroad of t,he defendant railroad company, made to trustees to secure $200,. 000 of its bonds, payable to bearer in five years from date, which was November 1, 1878, with interest at7 per cent. per annum, payable semi· annually. The orators are citizens of New Jersey. The defendant railroad company is a citizen of Vermont, and the railroad is situated there. It is alleged in the bill that the bonds became due, and the condition of the mortgage broken, by non-payment, and that the orators afterwards applied to the trustees to foreclose the mortgage and enforce the security, and that they refused to do so. This is admitted in the answer; and no question is maJe about the validity of the mortgage or, the bonds, nor but that they were due and unpaid at the bringing of thasuit. . "The case has been to a master to take an account of the mortgage debt, and he has made report. From his report it appears that the orator the 'Jackson & Sharp Company is the owner and holder of $13,000 of the principal of the bonds, on which there is due,-reckoning the interest at 7 per cent. from the time they fell due as well as before, and interest on the installments of interest at 6 per cent., the usual legal rate in Vermont, from the time they respectively fell due,-in all, $18,109.65; and that the orator the Diamond State Iron Company is the owner and