FlilDlj:RAL REPORTER,
vol. 48.
U.NITED STATES V. BAIRD.
, (D'l8trlctOOUA1.j D.Washinaton, N. D. December12,1891.)
CBINBBE-D17'J:Y all' -CUSTOM' >Oll'lI'IOERe-OP:POSING ARREST!!. . , The proVisioUs of restriction acts requiring the customs omcera to prevent the landing from boats 01' vessels of Chinese wbci are not entitled to, land ,do 1I,0t Impose upon oftillers the duty of arresting. Cbines" who are already in tbe United 8tates without. nor ta there any law imposing such duty; and ,hence an who, wilihout legal process, attempts to make suoh arrests, acts merely as a private citizen, and one who opJ;l0ses him therein is not of 0ppos, ing "any oftlcer," of the 'customs in the "execution of his duty," wlthin the meaning cCRev. 8t. U. S. 1'5447.: ,
, . Presentment of J. a.Baird for oQlltr1;lcting an officer of the customs in attempting to. arrest a· Chinaman.
P.H. Wi718Wn, U.S.Atty.
HANFORD,' J; The l'e<lord in this case shows .that the defendant has been· heretofore on a warrant issued by a United States commissioner, for an alleged violation of secti6n5447 of the Revised Statutes of the United States, and, after an examination by said commissioner, held to bail for his appearance, at the present term.of this court, to swer for said offense. The case is riow brought before the court by the following presentment ofthe grand. jury: ... . ' . the grand jury, desire to report that we have investigated the cnse of the United States vs. J.O. Baird, charged with a violation of section 5447, Revised Stll.tutes, and f(,lund, the follOWing to be the facts of the case: That Z.'.f. Hplderi, then aninspectoJ' of customs for the district of Pugetsound, was, on the evening of July 26th. 1891, in the town of Wooley, engagl/d in,' an to capture certain ChInese laborers who had entered the Ul'lftedStates con1;ra,l'1 to law, and who were Dot entitled to be in the defeDdant.J. C. Baird, seized upon UnitedStates. That. while so HoldeD,and handcutffldhim, and interfered with him in the the performance of his work. We further find that said Z. T. Holden, at the time he was interfered with, was not acting uuder the direction of any court of law, nor executing any legal process. We have requested the United States attorney, upon thesfl facts, to prepare a bill of indictment against said J. C. Baird, and he has, in response to said request, informed us that he is unable to find a law covering this case upon the facts presented. We therefore desire to present J. C. Baird to the court for having done the act herein stated. and to obtain the opinion of the court as to whether the facts set forth constitute an offense against the United States. "D. R. McKINLEY, Foreman of the Grand Jury." It is one of the fundamental principles of our government that no man can be required to defend against a criminal prosecution in a court of the United States for mere wrong-doing, nor unless the,charge against him be the commission of an offense made punishable by a law of the United States. By the division of governmental powers between the several states and the national government the punishment of all such offenses as assaults, batteries, unlawful arrests, and breaches of the peace, 'committed within a state, belongs to the state. The act which the de-
UNIT)£DSTATES II. BAIRD.
555
fendimt is with having committed is not a crime against the United States because of any injury to }Ir.Holden, as a private citizen, nor unless'l:lational authority has been opposed, resisted, or defied. and execution of the laws obstructed or made difficult by the ill treatment of an officer. Section 5447 must be understood as having for its objects the prevention of interference with the operations of the government, and protection to ·itsofficers in the performance of official duty. The statute, by the phrases "any officer" and "execution of his duty," refers to official. character rather than to an individual and to official duty,--:that is, some peculiar duty appertaining to an office. By the presentment it appears that Mr. Holden was at the time an officer of the United States, and that he was assaulted, opposed, and interfered with. But his effort to arrest Chinese persons who arli' .not lawfully in the United States or entitled to remain therein, although commendable, was no part of his duty as an inspector of customs. The general laws and the regulations of the treasury depattment require all. customs officers, including inspectors. to keep surveillance of au boats and vessels coming into the United States, and give them power to make seizures of property and arrests for a violation Of the revenue laws, laws relating to commE'rceand navigation, and to the inspection and regulation of vessels. The acts excluding Chinese laborers from coming into the country contain provisions which may be construed as imposing upon these officers the duty of preventing the landing from any boat or vessel of Chinese persons not entitled to land in the country, but the statutes do not make it a duty of these officers to arrest Chinese persons who have been landed, or unlawlully brought in by land, nor give them any power greater than or different from the power of a private citizen. The thirteenth section of an act entitled"An act to prohibit Chinese laborers from coming to the United Statlls".(25 U. S. St. 479) provides"That any Cbinese person or person of Chinese descent, found unlawfully in the United States or its tf'rritories. may be arrested upon a warrant is.sued. upon a complaint under oatb filed by any party on bebalf of the United States. by any justice. judge. or commissioner of any Uniled States court."
By the same section. and also by the twelfth section of the original restriction act, 8S amended by the 8ct of July 5, 1884, (23 U. S. St. 118,) all peace officers of the several states and territories are invested with the powers of United States marshals under said acts.' These provisions not only omit to mention inspectors of customs, but seem to confer all power of making arrests upon other and different officers. Without authority conferred by law, and not acting in obedience to a precept of any court in executing legal process, nor in aid of any officer having authority to. arrest the Chinese persons referred to ill'the presentment, Mr. Holden was not, by his endeavors to make the arrest, executing his duty as an officer of the United StateR.· I do not mean to be understood 88 saying that:Mr. Holden was endeavoring to accomplish an' unlawful purpose·. In my opinion, as a, citizen, he could lawfully arrest Chinese laborers in the act of coming into the United States unlawfully, and detain them until complaints could be made against them, and warrant-.
REPORTER ,vol.
48.
not performing any qffipial function. The case therefore does not come within section 5447 of the Revised Statutes,' I find no statute to meet the case. It is my opinion that this grand jury h,as no power to indict the defendant, and this court has no power to punish him for the acts of which he is accused.
NEW YORK BELTING
&
PACKING Co. v. NEW JERSEY CAR-SPRING RUBBER Co. December 24,1891.)
&:
(Circuit Court, 8. D. New
1;
PATENTS FOR INvENTIOYS-PATENTABLB NOVELTy--'DESIGN FOR RUBBER MATS.
The·third olaim of letters patent No. 11;208, issued May 27,1879, to the New York Belting &'Rubber Company, as assignee of George Wofl'enden. is for a "design for a: rubber mat, consisting of a sene's ofpara,llelcorrugations, tlj.e general line of direction of the corrugations in one section making angles with or being deflected to' ·meet those of the corrugations in the contiguous or other sections;" the obiect beinl!' to produce' kaleidoscopic, mosaic, and' efl'ects. HeW ·that, as to the specillc, design, ,the claim possesses. patentable novelty. as the efl'ects produced by the design as ,a wb,ole have never been realized or approached by any previous arrangement of'cori"l1gations.
2:
s.
Althou,gh tbe patent sbows .B square mat baving a square jJeD,tral panel traverse'd',by' diag()Dallines, it is infringed by an oblong mat possessing substantially : .tbe same features, excepting that in the central· panel, which is also oblong; the ;,,' diagq\laL,lines are not runfr0J¥ corner to corner. to formao\!te and obtuse but merely form a right angle III each end of the panel; it llelllg apparent tbat thlS (Wllll merely a mechanical ohange necessary to adapt the design to an oblong mat. · WMn,p,endingo a suit for infringement, tbe patent is assigned, with a reserva.. ·tioD of past damages, and un proof thereof the cause is retained' for the purpose · of, sucb a .subsequent reassignment to theooIllplai-nant cannot · be proved under the. bill. it,ltME-1\SSHINJotENT PEYDENTII· LITE-PLEADING AND PROOF.
SAME.....;iNFRLN'GElIIENT.
In Equity. lB,- F.. &
Suit for infringement of patent.
Decree for an account-
V. Brie8en; for defendant.
W. H. L. Lee, fot complainant.
This is an action for the infringement of letters patent, No. 'to the complainant, as assignee of George Woffenden, May 27, .1879, for a design for a rubber mat. The patent has twice' been before th.e courts. The circuit court held the patent invalid on demurrer. 30 Fed. Rep. 785. The supreme court reversed this decisin part, holding that .the question of novelty should be decided on pleadings and proofs. 137 U. S. 445, 11 Sup. Ct. Rep. 193. A description of the invention will be found in these volumes, and particulllorly in the report of the supreme court decision, where a diagram of the design appears. The first claim was held void by the supreme court and mlSafttlrwards disclaimed by.the complainant, but the court said of the s!Wond and third claims that they may fairly be regarded as confining the patentee tQ the specific design described in the specification and drawing., Of these two claims, the third is the narrower. It is as follows: I
QoXE"J.
\
F. CO.v. NEW JERSEY CAR-SPRING & R. CO.
5Fi7
"(3) .A. de"ign for a rubber mat. consisting of a series of parallel corrugations. depressions or ridges arranged insectloDs, the general Une of:directiOD of the corrugations in one section making angles witb or being deflected to meet those of the corrugations in tbe coptiguous or otber sections. substantially as described." The defenses are lack of patentability, non-infringement, and defectiTa title. The specification says: "In accordance with this design tbemat gives undertbe light different effects,accordi,ug to the relative position of the person looking at it. If the person changes his position continuously, the effects are kaleidoscopic in cases moire effects, like those of moire or watered silk, character. but generally' mosaic effects, are produced. Stereoscopic effects also, or the appearance of a soHdbody or geometric figure, may at times be given to the mat, aUQ,qnder proper conditions au appearance ofa depression may be presented. " In referring to this feature of the design the supreme court.intimates that a new and interesting question is thereby presented. Theopinion says:', ' " , :' 'lIt is possible that sucb a effeet..pioduced by such a design. impressed upon the substance of iildia-rubber, may constitute a qUality of !l)Cceli(lncewbich will gi v.e to the design, a specific character and value and it,from other similar desigllsthat hay;e' not such an the court is no opinion qt1esti6p,a.ild yet itseell1S improbabletlw,tthe suggestion would have been made unl611s the cQurt was impresaed with the novel character of the design in this particular. That the square mat, introduced by the complainant, which is conceded by the defendant to be a correct em.bodirnen.t:of'the drawing; possesses -the kaleidoscopic effect referred to there be no doubt. Viewed from one position certain sections of the mat appear. greY"some have a bluish tinge, others are almost black, and others still have a variegated appearance, varying from a dark, rich, velvety efi'ect>iLl'Quepart, to a light metallic or silvery effect in another. Let the observer change his position and the transformation oithe design is instantaneous. . What was light before is dark now, and vicevcraa. .pOsltion"the. mat seems to be all of one color, 1n another ofseveral different colors, like mosaic or marquetry flooring. There is nothing at all comparable to this in the prior art. The nearest approaches are the rubber stair-plates and bath brushes introduced by the defendant. These unquestionably have some features of the present design, but they do not possess the peculiar effect before alluded to. All of them together could not be so arranged as to suggest the patented design. It has frequently been held that a design patent cannot be anticipated because the separate features of the. design are old. If this were otherwise it would be difficult to conceive ofa patentable design, for it is an easy matter in all these cases to show that every line, color and object represented was known before. Proof of this character does not defeat a design patent any more than proof that all the separate elements of a combination are old defeats a combinatioh patent. In prie caseihe combination m-qst he new and produce a 'new result, in the other the design new and produce
55$ & ,new
vol. 48·. ,,!
'
,
is produced upon the eye.:b.ythe 4esign which is of patentability. t;1f ,tbisds new and pleasing it matter\3not, that'ithevariousielemen{s iwhichclnIl this imThe question .i'8 not whether pri6tart" shows anypression thing which looks like sections of the design, but whether it shows the design asa;wht>ie. Ifno1i;ancl the design posseSses the other characteristics alluded to it is patentable. Testedhy this rule I have, with some hesitation, however, reached the conclusion that onder the intimation of the: .supreme· C()utt this patent <lan' besustlixried; , The questioh(jf infringement is alsba difficult one. only drawing The specificatlonsays, "A is aSl'epresented, square; ,although it might be oblong oJ;:other desiredehape." ; The defendant's mat is ,The elongation of the mat neoessarilyinvolved some changes i,n the contour of the sections. This is particularly noticeable in the central panel. In the by lines patent it is square, made up of four ,J,11inor 9,ra",n from to C?rDeJ,' ,,crossing. each other at right anglee. It is manifest that this square cannot be made oblong without changing somewhat the of The complainant's expert deancJ,qontrasts the mats, in ,this respect, as follows: "The mHtshown Intbe,drawing of the patent being 8 square mat Is arranged with the diagonal: lines running from corner tacorner of the central square, the diagonal lines bl!ing at all, angle of 45 degrees with the two lines Ilt right angles f"orn the intersectIon of which It starts. 'fhe defendant's mat is oblong and the angularity of the diagonllliines with tbelines at right ang-Ies has been prf'served the slime as' In the patent, but. as the mat is longer than it III these lines cannot, of course"l'un from corner to corner of the " The larger section of the central pane] of the defendant's mat has a swallow taibat each end instead' of presenting the appearance of a Maltese croBsllS in:the patent. The herring-'bone horder of the defendant's Inat is broken four times: instead of twice as in the draWing. But the differences and similarities of the two can best be illustrated by placing diagrams' of them aide by side.
i,Zldtezit-. . . rr- .
.JlefendaT¢.···
'Unquestionably specification, ",as permitted. to em:boq.y his designiA aD oblong mat as we)) as:in a. mat. is said thl,\t the ob-
NEW YORK BELTIN,<J.1I; lkco. 17. NEW JEM;E'Y'O.a-BPRING &: R. CO.
.659
:mat of the a central field composed of diagonals drawn. from corner tocomar, the lines crossing as they'do on the reverse side of a letter enve10pe. It is true that the mat could be elongated in this way, but it is also true that it would contain as many departures from the square of the drawing as does the defendant's mat. If a square is stretched out into a rectangle it is very clear that it wiU no longer look like a square. It is impossible,for the central panel of an oblong mat tp retain all the characteristics of the central panel ofa square mat. If defendant's suggestion is 'adopted the right angles of the drawing disappear and in their place are substituted two 'obtuse angles and two acute I am inclined ,to think, therefore, that the defendant's mat :shows tbedesign of the patent, not the exact design of :the drawirig, for applied to an ,thatwowd beimpossib1e;but the design of the oblongmat. The mechanic; conversant with such matters, when shown and asked 'to convert.it into an oblong, mat would'produce the defendant's mat. An ordinary purchaser who had seen' ;tlile patented design and who started out with the intention of buying an ob· long mat embodying that design,.wouldreturn with the <;lefendant's mat. All the distinguishing features of the infringing mat are taken from the bedesign. The man who produced the mat evidently had the fore object'beiii'gto'transfer it to'an oblong mat, preserving at the same time all the pleasing characteristics. of the design. the 7th of March, Prior to the takirigof thepatentin,suitto an EnglishcQrpo1891, At the first hearing the defendant objected to proceeding further -ontlie'gl'()undthatthEfsuit had abated. f:{onoticp having been of the objection the defendant subsequently proved the assignment of the patent to the English corporation, together with all damages and profits · '.AJ1ter;thisproof had been received a motion was 'since June1, made for leave to file .:a,; supplemental bill joining the English company .as a "',,party .oompla.inal1t·.. /This ll1otionw8.s denied for the reasons: The English company had no claim for infringementsptior to June 1, 1890. There was no proof orsuggesti0Il of since that date. The English company (lould ndtmaintain an independent action, and, therefore, should not be made a complainant in ,ther'pt)ndirig suit. '. It!wtts' mso decided "that; thecOl1''rt, having Obtained jurisdiction, would retain it for the pu'tposes'of ail aco'ounting. 47.' Fed. Rep. 5M'.The English company immediately after this diroisidnre.assigned, the patent to the complainant. ,Without ',asking leav:etd 1file :a supplemental bill, or obtaining the permission court in any way, the complainant introduced this reassignment in evidence. The defeiid. ant:objebtedripon the ground, among: others, that it was incompetent under the pleadinga."The defendant having given due nbtice, now . . moves to expunge the reassignment from ;the record. ic After diligentsearchthave been' unable: to find an authority exactly in point::, t N<>ne isoited.Byevety :aooMgyo it 'wouldappear that' a title litecanriot be ,Aga.inr; ,urldei' the :decision·.last to' there S6\ne i donbtlWheth'er
660
,1
RDERALRllntORTEB,
the preslmoe of the reassignment; even if rightfully upon the record,can ,at'allatreetthe decree. By the'assignment to the English company the icomplainant lost all right to an injunction, and, by virtue of the assign. ment the English company' did not acquire the right to an junction, and never possessed it. It is argued with force that what: the English company did not have it could not assign, and that the complainanttook nothing py the reassignment , so far as the decree is concerned, ;which it did not possess·' It is not necessary, however, to deci<;lewhethel: the reassignment invested complainant with the lost right to"Ul injunctionf for the!reason that I am constrained to hold that the reassignment is' not properly before the court. Should an injunetionbe'neeessary hereafter {orthe protection of the complainant, it will .not, bEl ,ditijqult upon proper'showing, either in this or action, .to obta.in,this relief. The complainant is entitled to a decree for anaecounting,.· but. asa disclaimer was filed pendente ,lite, (ReV. St. § 4922,) cit must be without oosta.
ARnl',IQIJ,L SWNE. PAVING
Co.
fl. STARR
d. ale
N. -P.qawornta. December
1891.)
Astbeoonstitutlon of. the United States and tbe legislBtioliofcongress have giVen the, national government e;ltclusive'control of the subject of llatel).tB, state statutes of limitations do not apply to sllits tor infrinltement, even iIi the i\bsence of any natlonalBtatute of Umitat.ionll applioable tbereto. :.
AJ Suit by the California Artificial Stone Paving Company A. Starr .andothers for infringement of a patent. Plea of against the state stJJ.tute of limitations, and. demurrer thereto. Demurrer SWltRined. .... . . . .Edm'Ulll.,d TaUBZ1cy,. for plaintiff. for. defendants. (01'ally.) ,This isa suit at law to recover damages for analleged,iJ,l,fringementpf a patent. Defendants, in their answer, plead t;b.e,.statute of limitations of the state of .California. Plaintiff demurs t.Q portion of the answer, and also moves to strike out the pleas settjIlg up the statute of limitations. The judiciary act provides that the circuit conrt shall have original jurisdiction "of all suits at law or in :equity arising under the patent or copyright laws of the United States." S.§ 629,supsec. 9. It also provides that "the laws of the Rev. St. several states, except whfllre 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 inthe.courts. of the United States, in easel! where they apply.·" Rev. U. S.§ 721. Under this section, is the sf.4!,te .statute of llinita.tions applicable to patent cases? ,This qUe&-
at.