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(39 Sup.Ct.) rari. Rerersed and remanded, with direc- the law of procedure in the federal and state tions.

courts of the same locality. It had its origin

in the Code enactments of many of the states. * Mr. W. L. Welborn, of Roanoke, Va., for While in the federal tribunals the common-law petitioner.

pleadings, forms, and practice were adhered Messrs. G. A. Wingfield and H. T. Hall, to, in the state courts of the same district both of Roanoke, Va., for respondent.

the simpler forms of the local Code prevailed.

This involved the necessity on the part of the Mr. Justice McREYNOLDS delivered the bar of studying two distinct systems of reme

dial law, and of practicing according to the opinion of the Court.

wholly dissimilar requirements of both. The Claiming under the federal Employers' inconvenience of such a state of things is ob. Liability Act (Act April 22, 1908, c. 149, 35 | vious. The evil was a serious one. It was the Stat. 65 (Comp. St. $S 8657–8665]), petitioner aim of the provision in question to remove it. sued the Virginian Railway Company in the This was done by bringing about the conform-, United States District Court, Western Dis. ity in the courts of the United States which it triet of Virginia, for damages on account of prescribes. The remedy was complete. The personal injuries suffered by him July 27, personal administration by the judge of his 1915.

duties while sitting upon the bench was not

complained of. * The personal conduct At conclusion of the testimony the railway and administration of the judge in the discharge company moved for a directed verdict; after of his separate functions is, in our judgment, consideration the trial judge read to counsel "neither practice, pleading, nor a form nor mode * an opinion giving reasons and announced his of proceeding within the meaning of those purpose to grant the motion.

terms as found in the context." "And thereupon the plaintiff, by counsel, moved the court to be permitted to take a vol- See, also, Indianapolis & St. Louis R. R. untary nonsuit, which motion was opposed by Co. v. Horst, 93 U. S. 291, 300, 23 L. Ed. counsel for defendant. And as the court is $98. of opinion that the motion comes too late, it [2, 3] “It is now a settled rule in the courts is overruled, and to this action of the court the of the United States that whenever, in the plaintiff, by counsel, excepted. And thereupon trial of a civil case, it is clear that the state the court directed the jury to find a verdict for of the evidence is such as not to warrant a the defendant, and to this action of the court the plaintiff, by counsel, excepted. And there verdict for a party, and that if such a verdict upon the jury rendered and returned the fol-were rendered the other party would be enlowing verdict: ‘We, the jury, by direction of titled to a new trial, it is the right and duty the court, find for the defendant."

of the judge to direct the jury to find accord

ing to the views of the court. Such is the Judgment thereon was affirmed by the Circonstant practice, and it is a convenient one. cuit Court of Appeals. 244 Fed. 397, 157 C. It saves time and expense. It gives scientific C. A. 23. Petitioner there urged that the trial certainty to the law in its application to the court erred (1) in directing a verdict for the facts and promotes the ends of justice.” defendant, and (2) in denying the plaintiff's Bowditch v. Boston, 101 U. S. 16, 18, 25 L. request to take a voluntary nonsuit. Both Ed. 980; Pleasants v. Fant, 22 Wall. 116, claims were denied and are renewed here.

122, 22 L. Ed. 780; Oscanyan v. Arms Co., *We think refusal to permit the requested 103 U. S. 261, 265, 26 L. Ed. 539; Randall nonsuit was error and for that reason the v. Baltimore & Ohio R. R. Co., 109 U. S. judgment below must be reversed. This

478, 482, 3 Sup. Ct. 322, 27 L. Ed. 1003; makes it unnecessary to consider the other District of Columbia v. Moulton, 182 U. S. point.

576, 582, 21 Sup. Ct. 840, 45 L. Ed. 1237; [1] The Act of June 1, 1872—the Conform- Hepner v. United States, 213 U. S. 103, 113, ity Act (R. S. § 914, c. 255, § 5, 17 Stat. 197 29 Sup. Ct. 474, 53 L. Ed. 720, 27 L. R. A. (Comp. St. § 1537])-provides :

(N. S.) 739, 16 Ann. Cas. 960. And this “The practice, pleadings, and forms and rule is not subject to modification by state modes of proceeding in civil causes, other than statutes or Constitutions. Indianapolis & St. equity and admiralty causes, in the Circuit and Louis R. R. Co. v. Horst, supra; St. Louis, District Courts, shall conform, as near as may Iron Mt. & Southern Ry. v. Vickers, 122 be, to the practice, pleadings, and forms and U. S. 360, 363, 7 Sup. Ct. 1216, 30 L. Ed. modes of proceeding existing at the time in like causes in the courts of record of the state 1161 ; Lincoln v. Power, 151 U. S. 436, 442, within which such Circuit or District Courts 14 Sup. Ct. 387, 38 L. Ed. 224. are held, any rule of court to the contrary not

[4, 5] At the common law, as generally unwithstanding."

derstood and applied, a nonsuit could be taken

freely at any time before verdict if not inConstruing the statute in Nudd et al. v. deed efore judgment. Confiscation Cases, Burrows, Assignee (1875) 91 U. S. 426, 441, 7 Wall. 454, 457, 19 L. Ed. 196; Derick v. 442 (23 L. Ed. 286), this court said:

Taylor, 171 Mass. 444, 445, 50 N. E. 1038; "The purpose of the provision is apparent Bac. Abr. Nonsuit (D). And see Pleasants v. upon its face. No analysis is necessary to Fant, supra, 22 Wall. 122, 22 L. Ed. 780. The reach it. It was to bring about uniformity in right is substantial. When and how it may

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be asserted we think are questions relating, direct verdict for defendant, is not well directly to practice and mode of proceeding founded. within intendment of the Conformity Act. Under the Virginia statute, in the absence

[6] Section 3387 Virginia Code (1901) pro- of a demurrer to the evidence and joinder vides:

therein, the plaintiff may take a nonsuit at “A party shall not be allowed to suffer a any time before submission of the case to the nonsuit, unless he do so before the jury retire jury and their retirement. The conformity from the bar."

statute gives the same right in federal courts.

This conclusion accords with opinions by the Prior to this provision, a plaintiff there Circuit Courts of Appeals for the Sixth, had the absolute right to take a *voluntary Seventh, and Eighth Circuits. Knight v. Illinonsuit at any time before verdict. Harrison nois Central R. R. Co., 180 Fed. 368, 103 V. Clemens, 112 Va. 371, 373, 71 S. E. 538. C. C. A. 514; Meyer v. National Biscuit Co., Chapter 27, Va. Acts 1912, directs:

168 Fed. 906, 91 C. C. A. 335; Chicago, M. "That in no action tried before a jury shall & St. P. Ry. Co. v. Metalstaff et al., 101 the trial judge give to the jury a peremptory Fed. 769, 41 C. C. A. 669. instruction directing what verdict the jury shall The judgment below must be reversed, and render."

the cause remanded to the District Court,

with direction to set aside the judgment in And chapter 42, Idem, provides:

favor of respondent and sustain motion to "In all suits or motions hereafter, when the enter a nonsuit. Knight v. Illinois Central evidence is concluded before the court and jury, R. R. Co., supra, 180 Fed. 374, 103 C. C. the party tendering the demurrer to evidence A. 514; Harrison v. Clemens, supra, 112 Va. shall state in writing specifically the grounds 374, 375, 71 S. E. 538. of demurrer relied on, and the demurree shall Reversed. not be forced to join in the said demurrer until the specific grounds upon which the demurrant relies are stated in writing; nor shall any grounds of demurrer not thus specifically stat

(250 U. S. 383) ed be considered, except that the court may, in T. H. SYMINGTON CO. v. NATIONAL MALits discretion, allow the demurrant to with

LEABLE CASTINGS CO. et al. draw the demurrer; may allow the joinder in demurrer to be withdrawn by the demurree, and MINER v. T. H. SYMINGTON CO. new evidence admitted, or a nonsuit to be taken until the jury retire from the bar."

(Argued April 19 and 22, 1918. Decided June

9, 1919.) Citing Parks v. Ross, 11 How. 362, 373,

Nos. 31, 24. 13 L. Ed. 730, and Richardson v. City of Boston, 19 How. 263, 15 L. Ed. 639 (see also 1. PATENTS 174 IMPROVEMENT Con. Schuchardt v. Allen, 1 Wall. 359, 370, 17 L.

STRUCTION-SPECIFICATION, Ed. 642), petitioner maintains that in the

Where a patent for an improvement in federal courts the practice of directing ver- draft rigging for railroad cars called for a dicts has superseded the demurrer to evi- pocket or housing to hold the other parts in dence and should be controlled by the same dicating that the pocket was to be integral

place, and there was nothing in the claims ingeneral principles. Therefore, it is said, the while the specification stated that it might be statutory rule which gives the judge dis- cast in a single piece, the claims are not limited cretion to allow or refuse a nonsuit after to an integral part. joinder in such a demurrer applies when

2. PATENTS Om62 PRIOR INVENTION-Evithere is a motion for directed verdict. Obviously the laws of Virginia recognize a

Oral testimony tending to show prior inmarked distinction between demurrer to evi- vention as against existing letters patent is, in dence and direction of a verdict—the former the absence of models, drawings, or some kinis permitted; the latter is expressly prohibit-dred evidence, open to grave suspicion, particed. And the different nature and effect of the ularly if the testimony be taken after the lapse two things has been pointed out in Oscanyan of years from the time of the alleged invention. r. Arms Co., supra, 103 U. S. 264, 26 L. Ed. 3. PATENTS (16INVENTION. 539; Central Transportation Co. v. Pullman's

A conception of the mind is not an invenPalace Car Co., 139 U. S. 39, 11 Sup. Ct. tion until represented in some physical form, 478, 35 L. Ed. 55; and Slocum v. New York and unsuccessful experiments or projects abanLife Insurance Co., 228 U. S. 364, 388, 33 | doned by the inventor are equally destitute of Sup. Ct. 523, 57 L. Ed. 879, Ann. Cas. 1914D, that character. 1029. The conclusion announced in Parks v. 4. PATENTS Om62–INFRINGEMENT-PREVIOUS Southern Ry. Co., 143 *Fed. 276, 277, 74 C. C.

INVENTION-EVIDENCE. A. 414, that, because federal courts may in

In an infringement suit, oral evidence held proper cases direct verdicts, therefore, in the insufficient to show prior invention as against exercise of sound discretion, they may deny existing letters patent, at most disclosing only an application for leave to take a nonsuit and a mental conception in the process of develop

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DENCE.

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

*384

one.

(39 Sup.Ct.) ment which was occ

ccasionally outlined on scraps [1] One of the elements called for by the of paper, and then committed to the wastebas- claims in the Byers patent which were susket, and was roughly worked into a wooden tained is a “pocket” or housing, which is to model with a penknife.

hold other parts in place. The corresponding On Writ of Certiorari to the United States element of the Emerick patent is described Circuit Court of Appeals for the First Circuit. as counterpart castings" and is in two parts.

On Writ of Certiorari to the United States Whether the Dyer's pocket was to be integral Circuit Court of Appeals for the Seventh or might be in two or more parts is a matter

about which the two courts differed. In the Circuit.

Maine suit it was held that the claims were Suit by the National Malleable Castings not limited to an integral pocket, but in the Company and another against the T. H. Sym- Illinois suit the ruling was the other way. ington Company. A decree for defendant The former view, as it seems to us, is the was reversed on complainants' appeal (230 right one. There is nothing in Byers' claims Fed. 821, 145 C. C. A. 131, 234 Fed. 343, 148 which were sustained indicating that the O. C. A. 245), and defendant brings certiora- | pocket is to be integral, while there is a disri. Suit by the T. H. Symington Company tinct call for such a pocket in claim 9. The against William H. Miner, in which a decree difference in terms points persuasively to a for complainant was affirmed (229 Ted. 730, difference in purpose, and the specification 144 C. C. A. 140), and defendant brings cer- does even more, for it says “the pocket may tiorari. Decree in the first case affirmed, be cast in a single piece.” This is the coinand in the second reversed.

mon form of designating an admissible al. * Messrs. George I. Haight and Charles C. ternative in such instruments. Of course, Linthicum, both of Chicago, Ill., for Miner. the other alternative is casting it in a plural.

Mr. Charles Neave, of Boston, Mass., for ity of pieces. When this is done and the National Castings Co.

pieces are assembled, they form a pocket and Messrs. Melville Church, Gilbert P. Ritter, serve in the same way as if there were but and Ernest F. Mechlin, all of Washington,

The courts differed also as to who was the D, C., for T. H. Symington Co.

prior inventor. Presumptively it was Byers, Mr. Justice VAN DEVANTER delivered

for his application and patent were bo‘h

prior to Emerick's application. Recognizing the opinion of the Court.

These cases are so related that they may be this, the parties claiming under Emerick disposed of together. Each is a suit to enjoin to an earlier date, and to that end produced

sought by proof to carry his invention back the infringement of a patent. One was begun the testimony of three *witnesses, Emerick in the district of Maine and is based on letters patent granted May 7, 1901, to Jacob J. being one. All three testified in both suits, Byers on an application filed April 21, 1900. in both. In the Maine suit the court pro

their testimony being substantially the same The other was begun in the Northern Dis. nounced this testimony too equivocal and vu. trict of Illinois and is based on letters patent certain to establish priority as against Byers' granted February 18, 1902, to William H. application and patent, but in the Illinois Emerick on an application filed May 24, 1901. suit the court, although regarding the testiBoth patents cover an improvement in draft rigging for railroad cars. In each suit it be- mony as hardly satisfactory, gave effect to

it. On reading it we are persuaded that it came necessary to compare the patents, determine whether the invention of one was

was clearly insufficient.

[2-4] This court has pointed out that oral anticipated by the other, and ascertain which of the patentees was the original and first testimony tending to show prior invention as

against existing letters patent is, in the abinventor. Ultimately the suits reached the

sence of models, drawings, or kindred evi. Circuit Courts of Appeal for the circuits in

dence, open to grave suspicion, particularly which they were brought. In the Maine suit the court held that Byers was the prior in- if the testimony be taken after the lapse of ventor and that *claims 3, 5, and 6 of the pat- years from the time of the alleged invention. ent to him were valid and infringed. Nation- s. 280, 300, 15 Sup. Ct. 118, 39 L. Ed. 153.

Deering v. Winona Harvester Works, 155 U. al Malleable Castings Co. v. T. H. Symington,

And it has said: 230 Fed. 821, 145 C. C. A. 131; 234 Fed. 343, 148 C. C. A. 245. In the Illinois suit the "A conception of the mind is not an invencourt held that Emerick was the prior inven- tion until represented in some physical form, tor and that claims 1, 2, 3, and 4 of the pat. abandoned by the inventor, are equally desti

and unsuccessful experiments projects, ent to him were valid and infringed. 229 tute of that character." Clark Thread Co. v. Fed. 730, 144 C. C. A. 140. These conflicting Willimantic Co., 140 U. S. 481, 489, 11 Sup. decisions led to the allowance of the present Ct. 846, 849 (35 L. Ed. 521). writs of certiorari.

While the discussion at the bar and in the Here the evidence was oral. No model, briefs has taken a wide range, only two drawing, or kindred exhibit was produced. points need be considered.

Fifteen years had elapsed since the date as

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of which invention was being claimed. The Mr. Albert M. Yuzzolino, of New York testimony was not direct and strong, but City, for petitioners. weak and uncertain and in some respects Mr. Assistant Attorney General Hanson, contradictory. At most it only disclosed a for the United States. mental conception in process of development which occasionally was outlined on scraps of *Mr. Chief Justice WHITE delivered the paper and then committed to the waste bas- opinion of the Court. ket and was roughly worked into a wooden

The petitioners, Vitelli & Son during the model four or five inches long with a pen years 1905-1907, made entry at the port of knife. The first real model or drawing was New York of 19 different lots of dutiable made about the time of the actual applica- merchandise, that is, chestnuts and garlic, tion for a patent and there was no attempt and these entries were liquidated and the at reduction to practice until after the patent duties paid. About five years after the last was issued. Such proof under the rule just of these payments, the collector of the port of stated does not suflice.

New York, declaring that evidence had been Decree in No. 31 affirmed.

produced to his satisfaction showing that Decree in No. 24 reversed.

14 of the 19 entries referred to were fraudulent, because of the incorrect weights upon which they were based, canceled the previous

liquidations relating to them and directed a (250 U. S. 355)

reliquidation to be made on the basis of the F. VITELLI & SON v. UNITED STATES. corrected weights. Vitelli & Son, denying (Argued April 24, 1919. Decided June 9,

the existence of fraud and disputing the 1919.)

power to make the reliquidation, protested

against the claim of duty which resulted Nos. 67, 68.

from the reliquidation, and, paying the same 1. Customs DUTIES Cm 81-EVIDENCE em83 under protest, prosecuted an appeal to the

(1)-RELIQUIDATION AFTER YEAR-FRAUD— Board of General Appraisers. BURDEN OF PROOF-PRESUMPTION FROM OF

Before the Board the collector made no FICIAL ACTIOX.

affirmative proof of the commission of fraud, Act June 22, 1874, $ 21 (Comp. St. 8 5714), and submitted the validity of the reliquidation providing that when customs duties have been upon the basis of the official papers pertainliquidated and paid, and the imported goods ing to it—that is, the certificates of weight, delivered to the importer, such settlement shall etc.—upon which he had acted. The petiafter a year, in the absence of fram. be final tioners, not taking upon themselves the burand conclusive, being remedial to circumscribe den of showing that there was an absence of the prior unlimited power to reliquidate, the presumption of correctness of official action of fraud, stood upon their protest as to the the collector, in reliquidating the duties after want of power to make the reliquidation. expiration of the year, cannot obtain, with the The Board sustained the protest. It held result of placing on the importer the burden that as under the conditions disclosed the of showing there was no fraud, and this though existence of power in the collector to make the importer pays the reliquidated duties under the reliquidation after one year depended protest, and appeals; such proceeding being appropriate to resist the result of the reliqui- upon the fact of fraud, that the burden was dation.

upon the collector to establish that which

was necessary to sustain his authority to 2. Customs DUTIES (ww$5—RELIQUIDATION-act, and having failed to do so the reliquidaAPPEAL-REVERSAL AND REMAND.

tion was erroneous and the protest was well The holding of the Board of General Ap- founded. Appeal was prosecuted to the Court praisers, affirmed by the Court of Customs Ap- of Customs Appeals, where the action of the peals, that a reliquidation of customs duties Board was reversed. United States v. Vitelli was valid, having been under a mistaken construction of statute as to presumption and & Son, 5 Ct. Cust. App. *151. The court held burden of proof as to fraud, should not be sus. that although it was true that, as applied to tained, though there was sufficient evidence, but the case before it, the existence of fraud the question of fraud should be passed on by was essential to confer upon the collector the such tribunals freed from such mistaken con- power which he had exerted, as he had exstruction,

ercised the authority, the presumption of

the correctness of official action was suffi. On Writ of Certiorari to the United States cient, without proof of fraud to sustain the Court of Customs Appeals.

reliquidation. In reaching this conclusion it Reliquidations of duties on imports by F. was expressly decided that, in view of the Vitelli & Son were sustained by the Board of presumption of power indulged in, the effect General Appraisers and by the Court of of section 21 of the Act of June 22, 1874, c. Customs Appeals (7 Ct. Cust. App. 243), and 391, 18 Stat. 190 (Comp. St. § 5714), was to the importers appeal. Reversed and re-cast upon the importer the burden of estabmanded.

lishing a negative, that is, that there had

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EmwFor other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

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(39 Sup.Ct.) been no fraud. The case was remanded for of proof which the construction sustained, reconsideration to the Board of General Ap- the remedial purposes of the statute were praisers.

either wholly negatived or in any event While the protest concerning the 14 en- greatly perverted. tries was pending, the collector had, for like It is indeed true that in the opinion on alleged fraud, ordered a reliquidation of the the first hearing below and in the argument remaining 5 of the 19 entries, and by pro- at bar a suggestion was made that as in the test and payment of duties the action of the particular instance the importer had become collector as to those entries was before the an actor seeking to question the reliquidaBoard of General Appraisers for considera- tion, he thereby, as an actor, assumed the tion. They, were heard by the Board along burden of proof as to the absence of fraud with the entries which the Board had under which would not have rested upon him under consideration by virtue of the remanding the statute had he refused to pay the duty order of the Court of Customs Appeals. The resulting from the reliquidation and awaited Board held, in view of the ruling of the action taken against him by the United Court of Customs Appeals as to the presump- States to enforce it. But as the court below tion of power and burden of proof, that the expressly declared that the proceeding taken reliquidation in both cases was valid and that *was appropriate to resist the result of the the protests were consequently without merit. reliquidation, if illegal, it cannot be that the Both cases were then appealed to the Court right to correct the wrong was lost by resort of Customs Appeals, which in an elaborate to the remedy appropriate for its correction. opinion reiterated and applied its previous Moreover the proposition can alone rest ruling (7 Ct. Cust. App. 243), and the cases upon the assumption that the limitation on are here on the allowance of a certiorari. power which the statute imposed was ephem

[1] Obviously the whole case turns upon eral while from the text it is certain that the significance of section 21 of the Act of it was permanent and controlling. The 1874, the text of which is as follows (18 Stat. cogency of this conclusion stands out in bold 186, 190):

relief when it is considered that the reme“Whenever any goods, wares, and merchan- dial purpose of the statute was to protect dise shall have been entered and passed free the citizen from the unlimited power to reof duty, and whenever duties upon any import- liquidate and the uncertainties affecting comed goods, wares, and merchandise shall have mercial transactions resulting from the been liquidated and paid, and *such goods, existence of such power. The inevitable rewares, and merchandise shall have been deliver- sult of the argument is to cast upon the ed to the owner, importer, agent, or consignee, citizen the perpetual burden of showing that such entry and passage free of duty and such he had not been guilty of wrong as the only settlement of duties shall, after the expiration of one year from the time of entry, in the ab- means of escaping the exercise against him sence of fraud and in the absence of protest by of the unlimited power to reliquidate which the owner, importer, agent, or consignee, be it was the purpose of the statute to prevent. final and conclusive upon all parties."

[2] It is contended that although it be

admitted that the statute was wrongly conIndisputable also is it, as stated by the strued below, nevertheless the reliquidation Court of Customs Appeals and long pre- should be now sustained because there was viously pointed out in United States v. Phelps adequate proof in the record to show the et al., 17 Blatchf. 312, Fed. Cas. No. 16039, existence of fraud which justified the rethat the remedy intended to be accomplished liquidation order without reference to the by the section in question was to prevent presumption upon which the court below the right to reliquidate, which had previously based its conclusion. We do not, however, been exerted without limit, from being ex- think this view can be sustained, since, the ercised except in the particular conditions erroneous ruling as to the statute dominates stated, and thus in the interest of the citi- the entire situation and exacts that the queszen to circumscribe the power to the instances tion of the existence of the fraud necessary specified in order that uncertainty as to the to give rise to the power to reliquidate should finality of customs entries might be re- be disposed of by the tribunals peculiarly moved and the security of commercial trans- competent to consider such question, disemactions be safeguarded. But from this prem- barrassed from any mistaken construction ise we are of opinion that the error of the as to the presumption created by the statute. construction given to the statute below be- It follows that the judgment of the Court comes at once apparent, since, in the first of Customs Appeals must be and it is replace, by a presumption of power it virtually versed and the cases remanded to the Board removes the limitation as to the exercise of of General Appraisers for further proceedthe power which the statute created, and ings not inconsistent with this opinion, further, as the necessary result of the onus And it is so ordered.

39 SUP.CT.-35

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