States is in the clause providing that no person "shall be prosecuted, tried, or punished, for an offense not capital, nor for any fine or forfeiture under any penal statute, unless the indictment or information for the same shall be found or instituted within two years from the time of committing the offense, or incurring the fine or forfeiture." Act April 30, 1790, c. 9, § 32, (1 St. 119.) For very many years afterwards informations were principally, if not exclusively, used for the recovery of fines and forfeitures, such as those imposed by the revenue and embargo laws. Acts July 31, 1789, c. 5, § 27, (1 St. 43;) March 26, 1804, c. 40, § 3; and March 1, 1809, c. 24, § 18, (2 St. 290, 532;) Ú. S. v. Hill, 1 Brock. 156, 158; U. S. v. Mann, 1 Gall. 3, 177; Walsh v. Ú. S. 3 Wood. & M. 341. Mr. Justice STORY, writing in 1833, said: “This process is rarely recurred to in America, and it has never yet been formally put into operation by any positive authority of congress, under the national government in mere cases of misdemeanor; though common enough in civil prosecutions for penalties and forfeitures." Story, Const. § 1780.

The informations which passed without objection in U. S. v. Isham, 17 Wall. 496, and U. S. v. Buzzo, 18 Wall. 125, were for violations of the stamp laws, punishable by fine only. And the offense which Mr. Justice FIELD and Judge SAWYER held, in U. S. v. Waller, 1 Sawy. 701, might be prosecuted by information, is there described as "an offense not capital or otherwise infamous," and, as appears by the statement of Judge DEADY in U. S. v. Block, 4 Sawy. 211, 213, was the introduction of distilled spirits into Alaska, punishable only by fine of not more than $500, or imprisonment not more than six months. Act July 27, 1868, c. 273, § 4, (15 St. 241.)

Within the last 15 years, prosecutions by information have greatly increased, and the general current of opinion in the circuit and district courts has been towards sustaining them for any crime, a conviction of which would not at common law have disqualified the convict to be a witness. U. S. v. Shepard, 1 Abb. C. C. 431; U. S. v. Maxwell, 3 Dill. 275; U. S. v. Block, 4 Sawy. 211; U. S. v. Miller, 3 Hughes, 553; U. S. v. Baugh, 4 Hughes, 501; S. C. 1 Fed. Rep. 784; U. S. v. Yates, 6 Fed. Rep. 861; U. S. v. Field, 21 Blatchf. 330; S. C. 16 Fed. Rep. 778; In re Wilson, 18 Fed. Rep. 33.

426

But, for the reasons above stated, having regard to the object and the terms of the first provision of the fifth amendment, as well as to the history of its proposal and adoption, and to the early understanding and practice under it, this court is of opinion that the competency of the defendant, if convicted, to be a witness in another case is not the true test; and that no person can be held to answer, without presentment or indictment by a grand jury, for any crime for which an infamous punishment may be imposed by the court. The question is whether the crime is one for which the statutes authorize the court to award an infamous punishment, not whether the punishment ultimately awarded is an infamous one. When the accused is in danger of being subjected to an infamous punishment if convicted, he has the right to insist that he shall not be put upon his trial, except on the accusation of a grand jury.

Nor can we accede to the proposition, which has been sometimes maintained, that no crime is infamous, within the meaning of the fifth amendment, that has not been so declared by congress. See U. S. v. Wynn, 3 McCrary, 266; S. C. 9 Fed. Rep. 886; Same v. Same, 11 Fed. Rep. 57; U. S. v. Petit, 11 Fed. Rep. 58; U. S. v. Cross, 1 McArthur, 149. The purpose of the amendment was to limit the powers of the legislature, as well as of the prosecuting officers, of the United States. We are not, indeed, disposed to deny that a crime, to the conviction and punishment of which congress has superadded a disqualification to hold office, is thereby made infamous. U. S. v. Waddell, 112 U. S. 76, 82; S. C. ante, 35. But the constitution protecting every one from being prosecuted, without the intervention of a grand jury, for any crime which is subject by law to an infamous punishment, no declar

ation of congress is needed to secure or competent to defeat the constitutional safeguard.

The remaining question to be considered is whether imprisonment at hard labor for a term of years is an infamous punishment. Infamous punishments cannot be limited to those punishments which are cruel or unusual, because, by the seventh amendment of the constitution, "cruel and unusual punishments" are wholly forbidden, and cannot therefore be lawfully inflicted even in cases of convictions upon indictments duly presented by a grand jury. By the first crimes act of the United States, forgery of public securities, or knowingly uttering forged public securities with intent to defraud, as well as treason, murder, piracy, mutiny, robbery, or rescue of a person convicted of a capital crime, was punishable with death; most other offenses were punished by fine and imprisonment; whipping was part of the punishment of stealing or falsifying records, fraudulently acknowledging bail, larceny of goods, or receiving stolen goods; disqualification to hold office was part of the punishment of bribery; and those convicted of perjury or subornation of perjury, besides being fined and imprisoned, were to stand in the pillory for one hour, and rendered incapable of testifying in any court of the United States. Act April 30, 1790, c. 9, (1 St. 112-117;) Mr. Justice WILSON'S Charge to the Grand Jury in 1791, 3 Wilson's Works, 380, 381.

By that act no provision was made for imprisonment at hard labor. But the punishment of both fine and imprisonment at hard labor was prescribed by later statutes, as, for instance, by the act of April 21, 1806, c. 49, for counterfeiting coin, or uttering or importing counterfeit coin; and by the act of March 3, 1825, c. 65, for perjury, subornation of perjury, forgery, and counterfeiting, uttering forged securities or counterfeit money, and other grave crimes. 2 St. 404; 4 St. 115. Since the punishments of whipping and of standing in the pillory were abolished by the act of February 28, 1839, c. 36, § 5, (5 St. 322,) imprisonment at hard labor has been substituted for nearly all other ignominious punishments, not capital. And by the act of March 3, 1825, c. 65, § 15, re-enacted in Rev. St. § 5542, any sentence of imprisonment at hard labor may be ordered to be executed in a state prison or penitentiary. 4 St. 118.

What punishments shall be considered as infamous may be affected by the changes of public opinion from one age to another. In former times, being put in the stocks was not considered as necessarily infamous. And by the first judiciary act of the United States, whipping was classed with moderate fines and short terms of imprisonment in limiting the criminal jurisdiction of the district courts to cases "where no other punishment than whipping, not exceeding thirty stripes, a fine not exceeding one hundred dollars, or a term of imprisonment not exceeding six months, is to be inflicted." Act September 24, 1789, c. 20, § 9, (1 St. 77.) But at the present day either stocks or whipping might be thought an infamous punishment.

For more than a century, imprisonment at hard labor in the state prison or penitentiary or other similar institution has been considered an infamous punishment in England and America. Among the punishments "that consist principally in their ignominy," Sir WILLIAM BLACKSTONE classes “hard labor, in the house of correction or otherwise," as well as whipping, the pillory, or the stocks. 4 Bl. Comm. 377. And Mr. Dane, while treating it as doubtful whether confinement in the stocks or in the house of correction is infamous, says, "punishments, clearly infamous, are death, gallows, pillory, branding, whipping, confinement to hard labor, and cropping." 2 Dane, Abr. 569, 570.

The same view has been forcibly expressed by Chief Justice SHAW. Speaking of imprisonment in the state prison, which by the statutes of Massachu setts was required to be at hard labor, he said: "Whether we consider the words infamous punishment' in their popular meaning, or as they are un

derstood by the constitution and laws, a sentence to the state prison, for any term of time, must be considered as falling within them. The convict is placed in a public place of punishment, common to the whole state, subject to solitary imprisonment, to have his hair cropped, to be clothed in conspicuous prison dress, subjected to hard labor without pay, to hard fare, coarse and meager food, and to severe discipline. Some of these a convict in the house of correction is subject to; but the house of correction, under that and the various names of work-house and bridewell, has not the same character of infamy attached to it. Besides, the state prison, for any term of time, is now by law substituted for all the ignominious punishments formerly in use; and, unless this is infamous, then there is now no infamous punishment other? than capital." Jones v. Robbins, 8 Gray, 329, 349. In the same case, Mr. Justice MERRICK, while dissenting from the rest of the court upon the question whether under the words "the law of the land" in the constitution of Massachusetts an indictment by a grand jury was essential to a prosecution for a crime punishable by imprisonment in the state prison, and taking a position upon that question more accordant with the recent judgment of this court in Hurtado v. California, 110 U. S. 516, S. C. 4 SUP. CT. REP. 111, yet concurred with the other judges in holding that such imprisonment at hard labor was an infamous punishment. 8 Gray, 370–372.

Imprisonment at hard labor, compulsory and unpaid, is, in the strongest sense of the words, “involuntary servitude for crime," spoken of in the provision of the ordinance of 1787, and of the thirteenth amendment of the constitution, by which all other slavery was abolished.

Deciding nothing beyond what is required by the facts of the case before us, our judgment is that a crime punishable by imprisonment for a term of years at hard labor is an infamous crime, within the meaning of the fifth amendment of the constitution; and that the district court, in holding the petitioner to answer for such a crime, and sentencing him to such imprisonment, without indictment or presentment by a grand jury, exceeded its jurisdiction, and he is therefore entitled to be discharged.

Writ of habeas corpus to issue.

(114 U. S. 447)

WESTERN ELECTRIC MANUF'g Co. v. ANSONIA BRASS & COPPER CO.1

(April 20, 1885.)

1. PATENT LAW-INSULATING TELEGRAPH WIRES-OLMSTEAD Patent VOID.

Reissued letters patent, numbered 6,954 and 6,955, dated February 29, 1874, for improvements in insulating telegraph wires, granted to Joseph Olmstead, covers an old process applied to the same subject, with no change in the manner of applying it, and with no result substantially distinct in its nature. The patent is therefore invalid.

2. SAME LACK OF SPECIFIC DESCRIPTION OF A PROCESS.

A patentee cannot claim the benefit of an element in his invention not specifically described; he cannot mention a quality of the product, and ask the court to infer the process from that quality.

Appeal from the Circuit Court of the United States for the District of Connecticut.

The case was a suit in equity, brought by the appellant, the Western Electric Manufacturing Company, against the Ansonia Brass & Copper Company to restrain the infringement of two reissued letters patent, numbered 6,954 and 6,955, respectively, granted to the appellant as the assignee of Joseph Olmstead, both dated February 29, 1874, for improvements in insulating telegraph wires. The reissues are divisions of original letters patent No. 129,858, dated July 23, 1872. The descriptive specifications of the two patents were

18. C. 9 Fed. Rep. 706.

$450

identical. They differed only in the claims, the first being for a process, and the second for the product of the process.

The specification of both patents, after stating that Olmstead had invented a new and useful improvement in insulating telegraph wires, proceeded as follows: "The method of insulating now in use consists in braiding over the wires a fibrous covering, after which it is dipped in wax, for the purpose of filling and closing its pores, and, after a subsequent scraping to remove the surplus wax, it is ready for use. This method is, however, objectionable, inasmuch as it leaves the covering in a very rough and soft condition, and fails to secure perfect insulation. In my improved method, after the wire has received its coating, I dip it in paraffine or wax, after which, instead of scraping off the surplus coating, I pass the whole through a suitable machine, which compresses the covering and forces the paraffine or wax into the pores and secures perfect insulation. By so compressing the covering the paraffine or wax is forced into the pores, and the surface becomes and appears polished. Wire insulated in this manner is entirely impervious to the atmosphere, of greater durability, and less cumbersome than any heretofore made."

The claim of the process patent No. 6,954 was as follows: "The method of insulating telegraph wire by first filling the pores of the covering, and subsequently compressing this covering, and thereby polishing its surface, substantially as described." The claim of the product patent No. 6,955 was “an insulated telegraph wire, the covering of which has its pores filled and its surface polished, substantially as described."

The defendant denied in its answer that Olmstead was the first and original inventor of the improvement described in the patents, or of any substantial or material part thereof, or that the same was patentable or the subjectmatter of invention, and *that the alleged invention had been previously patented by letters patent of Great Britain, granted to Thomas Earl of Dundonald, dated July 22, 1851, and by letters patent of Great Britain, granted to Felix M. Baudouin, dated April 3, 1857. The defendant also denied infringement. The circuit court, on final hearing, dismissed the bill, and the plaintiff appealed.

Geo. P. Barton, for appellant. Wm. B. Wooster, for appellee.

WOODS, J. It is clear that the two patents must stand or fall together If the patent for the process is invalid, so must be the patent for the product. What we have to say will refer to the process patent. The alleged invention described in the patent is not for insulating telegraph wires, for that art long antedated the original patent. The specification disclaims as a part of the invention the braiding of a fibrous covering over the wire, and then dipping it in wax for the purpose of filling and closing the pores, and the subsequent scraping of the surplus wax from the wire. The patent does not cover the material in which the wire, after it has received its fibrous coating, is dipped, which may be either paraffine, wax, or bitumen, or any other suitable material. The three substances mentioned had long been used for that purpose. Nor does the patent specify or cover any device by which the process is to be carried on. Any suitable machine may be used. The process described by the patent consists, therefore, simply in this: After the wire has received itsfibrous coating, and been dipped in paraffine, wax, or other suitable substance, the compressing and forcing of the paraffine, wax, or other substance, without scraping off any part of it, into the pores of the fibrous material by some suitable means. We think this process was not new. It was substantially anticipated both by the process described in the patent of Dundonald and in that of Baudouin, the first dated January 22, 1852, and the other April 3, 1857. Dundonald describes his process thus: "I also employ a bituminous material to cover, and thus insulate, the conducting wires of electric telegraphs, which are intended to be placed under ground. For this purpose I employ the said bitumen, either simple or compounded, of a flexible descrip

tion, and pass the wire through it when it is in a melted state, then causing the wire to pass through some die or orifice, which will deprive it of all the superfluous bitumen. The incasement of this wire with bitumen may also be affected by covering it with a filamentous material, which has been previously saturated with melted bitumen, and then passing the wire so covered through a heated die or orifice, so as to melt or soften the bitumen upon the filamentous material, and press the whole of the coating against the wire in such a way as to cause it to form one compact continuous covering of the wire, and thus insure its insulation."

The patent of Baudouin describes his process as follows: "My invention relates to the preparation of conductors of electricity for electric telegraphs, being wires insulated to prevent the loss or deterioration of the electric currents used for that purpose, and also in the machinery for the preparation of manufacture of such conductors. I coat the wires with bituminous or such like fatty matters that are not liable to become hard or crack, but, on the contrary, are constantly acted on by the temperature of the atmosphere. Coatings of this material in themselves are insufficient to maintain the proper protection and insulation for telegraph conductors, but when combined with other materials, such as paper, woven fabrics of cotton, silk, wool, or hemp, in a particular manner, are well adapted for the purpose. I prefer to use three ribbons and bobbins for this purpose, the first covering of the wire being enveloped by the second in such manner that the helical junction of the first ribbon is covered by the second, and the second by the third. The wire is passed through a bath of hot bitumen, and has the superfluous matter removed by passing through suitable dies or parts to scrape and smooth its surface, and render it of uniform thickness. The first and second ribbons are also passed through bituminous or other suitable matter to render them more impervious to electricity. The coated and lapped wire is passed through suitable dies to remove superfluous matter, to smooth down the lapping of the ribbons, and to compress and cause their proper adhesion. The coated and lapped wire passes through dies or smoothing holes both in entering and leaving the rotating frame. These dies or smoothers have a rotary motion, the better to enable them to wipe and smooth the coated wire."

It is plain that these patents anticipate the process set out in the specification of the Olmstead process patent. They all three describe the compressing of the wax, paraffine, or bitumen coating of a wire covered with the fibrous material, so as to attain the same result, namely, the insulation of the wire. The Olmstead patent, therefore, covers an old process applied to the same subject, with no change in the manner of applying it, and with no result substantially distinct in its nature. It cannot, therefore, be a valid patent. Pennsylvania R. Co. v. Locomotive Truck Co. 110 U. S. 490; S. C. 4 SUP. CT. REP. 220; Vinton v. Hamilton, 104 U. S. 485.

The fact that in the process described in the Olmstead patent the surplus wax or paraffine is not scraped off, but all that adheres to the wire is compressed against it and forms part of the covering, is relied on to distinguish that process from those of Dundonald and Baudouin. But the Dundonald process does not differ in this respect from that of Olmstead, for in the Dundonald process the whole of the coating is pressed against the wire, and is left to form the covering; and as to the Baudouin process, the difference consists merely in the use of a greater quantity of wax or paraffine to form the coating. This may be an improvement upon the Baudouin process, but it does not involve invention. So far as the present case is concerned, another answer to this contention of the appellant is that, in this respect, the defendant follows the Baudouin and not the Olmstead process, by scraping off the superfluous coating material.

It was insisted in argument, by appellant's counsel, that one of the features of the process described in the Olmstead patent was the allowing of the wax