UNITED STATES v. BYRNE.

(District Court, E. D. Missouri, E. D. December 9, 1890.)

1. OFFENSES AGAINST POSTAL LAWS-EMBEzzlement of LETTERS-INDICTMENT-DUPLICITY.

Though under Rev. St. U. S. § 5467, "embezzling a letter" and "stealing its contents," are separate offenses, and may be charged as such, the offenses are of the same grade and subject to the same penalty, and hence they may both be charged in a single count of the indictment, stating the whole transaction as a single offense, when both acts are committed by the same person at the same time, and constitute a single continuous act.

2. SAME-REPUGNANCE.

Averments in such an indictment that the letter was secreted, embezzled, and destroyed, and that its contents were stolen, are not repugnant.

On Demurrer to Indictment.

The first count of indictment is as follows: "That Lee M. Byrne, late," etc., "at," etc., "heretofore," etc., "being then and there a person employed in a department of the postal service of the United States,that is to say, a clerk in the post-office of the United States at Piedmont, in the state of Missouri,-unlawfully and feloniously did then and there secrete, embezzle, and destroy a letter then and there intrusted to him, said Lee M. Byrne; and that came into his possession as such post-office clerk, and which said letter was then and there registered matter, and intended to be conveyed by mail, and forwarded through said post-office at Piedmont, and delivered to one Mrs. S. M. W., to whom said letter was then and there addressed, at the post-office of the United States at the city of Detroit, in the state of Michigan, which said letter then and there contained the certain articles of value, that is to say, one United States treasury note X of the denomination of ten dollars, of the value of ten dollars, [nine other notes are then described,] and said ten articles of value being then and there the property of one C. H. T., and which said letter and each of said articles of value, the said Lee M. Byrne did then and there feloniously and unlawfully embezzle, and fraudulently and feloniously convert to his own use, and did then and there feloniously steal and take each of said articles of value out of said letter, and carry away the same, contrary to the form of the statutes of the United States in such case made and provided, and against its peace and dignity." The second count is for another letter to another party with other notes. The indictment was demurred to for the reasons, among others, that the counts were bad for duplicity, and that the allegations were repugnant.

George D. Reynolds, U. S. Atty.

C. D. Yancey and C. A. Davis, for defendant.

THAYER, J. In both counts of the indictment it is averred, in substance, that the defendant "feloniously secreted, embezzled, and destroyed" the letter therein described, and "feloniously stole and took out of said letter" the articles of value therein contained, to-wit, treasury

notes and silver certificates. It may be conceded that under the provisions of section 5467, on which this indictment is framed, "embezzling a letter" and "stealing its contents," are separate offenses, and may be charged as such. Vide U. S. v. Taylor, 1 Hughes, (U. S.) 514; U. S. v. Harmison, 3 Sawy. 556; and U. S. v. Falkenhainer, 21 Fed. Rep. 624. It may be further conceded that it is a fundamental rule of criminal pleading that two offenses should not be alleged in the same count, and that a count is ordinarily defective in which more than one offense is alleged. Still the court is of the opinion that the present indictment cannot be successfully attacked on the ground of duplicity in the several counts. There seems to be a well-defined exception to the rule of pleading above stated to the following effect: When two acts, capable of being counted upon as distinct offenses, are committed by the same person, at the same time, so that they may together be regarded as a single continuous act, it is optional with the pleader to count upon them separately as distinct offenses, or to state the whole transaction in a single count as constituting a single offense, provided both offenses are of the same grade, and the punishment for each is the same. If the latter method of stating the offense is adopted, but a single penalty can be imposed. In Com. v. Tuck, 20 Pick. 356, the indictment charged in one and the same count that the defendant "broke into a shop with intent to steal," which was a felony, and that "he did then and there steal," which was likewise a felony. The court held that the count was not bad for duplicity. So in the case of Hinkle v. Com., 4 Dana, 518, an indictment charged the defendant in one and the same count with "setting up a gaming table," and "keeping a gaming table and inducing others to bet thereat,"-both of which were independent offenses. The court held the count good, saying, in substance, that, as they were co-operating acts constituting altogether one offense, when committed by the same person at the same time, an indictment for the combined act might properly charge the whole transaction in one count, and but one punishment could then be inflicted. The case at bar falls within the principle of these decisions. The indictment alleges that the defendant secreted and embezzled a letter, and stole its contents. The acts in question are alleged as having been committed at the same time, and as together constituting a single act or transaction. The two offenses are of the same grade, and the punishment of each is the same. The defendant is none the less guilty of embezzlement of the letter, because he stole its contents, and vice versa. In other words, the two allegations contained in the counts are neither inconsistent or uncertain. Under the circumstances, if the government sees fit to plead as it has done, thereby making one offense out of a transaction that it might have broken up into two, it is, in my judgment, entitled to do so, and the defendant has no just cause for complaint. The objection that the allegations of the indictment are repugnant, "because it is first alleged that the letter and its contents were destroyed, and is subsequently alleged that the contents were embezzled and stolen," seems to be founded on a misconception of what is averred. The indictment does not aver that the contents of the letter were destroyed. It avers that the letter was

secreted, embezzled, and destroyed, and that the contents-to-wit, treasury notes and silver certificates-were stolen. So far as I can see the averments are not repugnant, and the demurrer must be overruled. It is so ordered.

NATIONAL PROGRESS BUNCHING-MACHINE Co. v. John R. WILLIAMS Co.

(Circuit Court, S. D. New York. December 8, 1890.)

1. PATENTS FOR INVENTIONS-CIGAR-BUNCHING MACHINE-COMBINATION. The ninth claim of letters patent No. 331,676, granted December 1, 1885, to Nicholas H. Borgfeldt and Adolph C. Schutz, covers a machine designed to make a cigar bunch from scrap-tobacco. The tobacco is placed in a cylinder, which throws out measured quantities through a chute into a funnel. The latter is provided with a plunger, which compacts the tobacco into form. It is then delivered upon an apron, and rolled into a completed bunch, which is then deposited in a receiver. The claim is as follows: "In a bunch machine, the combination of the cylinder, B, having notched disk, D, chute, C, with the reciprocating hopper, I, reciprocating plunger, L, apron, M, sliding frame, N, having roller, u, and a bunch receiver, R." It appeared that each element claimed was old, and that each performed the same function when acting separately as it performed in the article patented. Held, that the claim for combination could not be sustained, as the bunch receiver had no connection with the operation of the machine, and was meant simply to hold the manufactured article.

2. SAME-INFRINGEMENT.

In view of the prior state of the art, and the fact that the claim specifically refers to the drawings by letter, it will be strictly construed, and a machine producing similar results will not be held an infringement unless it contains the features enumerated.

In Equity.

This is a bill in equity filed to restrain the defendant from infringing letters patent No. 331,676, granted December 1, 1885, to Nicholas H. Borgfeldt and Adolph C. Schutz, for an improved cigar-bunching machine. The invention relates to a machine designed to produce automatically the inner part, or bunch, of a cigar:

"The machine is adapted to produce such a bunch with a filler of scraptobacco, to measure the proper quantity of the scrap-tobacco for each bunch, to transport the same to the binder, to press the filler into the binder, and then to roll the binder around the filler, so as to complete the bunch, depositing the latter in condition for immediate and convenient use."

The machine is provided with a distributing cylinder having mechanism for measuring the scrap-tobacco and for discharging it in successive doses, each dose containing the exact quantity of tobacco necessary for one bunch. A reciprocating hopper, provided with a reciprocating plunger, receives the tobacco from the chute of the cylinder, compacts the bunch, and presses it into the binder. The machine is further provided with a sliding and tilting binder-rest combined with axed apron, roller, and mechanism for moving the slide and roller. These operate in such a manner that when the filler has been pressed into the binder, the sliding frame, roller and apron co-operate to roll the binder around the filler. The completed bunch is then deposited in the proper recep

tacle from which it is taken by an attendant to be molded and finally covered with a wrapper in the ordinary manner of manufacturing cigars. The ninth claim only is involved. It is as follows:

"(9) In a bunch-machine, the combination of the cylinder B, having notched disk D, and chute C, with the reciprocating hopper I, reciprocating plunger L, apron M, sliding frame N, having roller u, and a bunch-receiver R, substantially as specified."

The defenses are First, non-infringement. Second, anticipation. Third, that the ninth claim covers an aggregation and not a patentable combination. Fourth, that the claim lacks patentable novelty. Fifth, that the claim does not describe an operative machine. Sixth, that complainant's title is defective, another company holding the exclusive right to manufacture, use and sell under the patent for the state of New York. Arthur v. Briesen, for complainant.

Charles C. Gill, for defendant.

COXE, J. The machine covered by the ninth claim of the patent is designed to make a cigar bunch-which is all of a cigar minus the outer wrapper-from scrap-tobacco. The tobacco is placed in a large receptacle or cylinder which throws out accurately measured quantities, through a chute, into a vertically movable funnel, each dose being sufficient for one bunch. The funnel is provided with a plunger which descends upon the tobacco and compacts it into a form approximating a cigar. It is then delivered upon an apron on which a leaf of tobacco called a "binder," has been placed and is rolled, by means of a traveling roller, into a completed bunch. This bunch is deposited in a clamp, or receiver, where it is held intact until removed by hand. The claim covers a bunch machine having the following features: First, the cylinder B, having notched disk D and chute C. Second, the reciprocating hopper I. Third, the reciprocating plunger L. Fourth, the apron M.

Fifth, the sliding frame N, having roller u. Sixth, the bunch receiver R. Experts and counsel agree that these elements, considered separately, were old and well known. The complainant has vied with the defendant in demonstrating that each was "thoroughly old" long prior to the date of the patent. The complainant's brief states the proposition as follows:

"Now, therefore, it is clear from the foregoing, that the complainants cannot be regarded as claiming a new combination of new elements, but that they seek to hold by their patent a new combination of old elements-old, well known elements-for the purpose of producing a new result."

Not only was each element old, but sometimes two and sometimes three had been united to do similar work to that of the complainant's machine. Machines for making cigars were known over 40 years ago, and since then there has been a steady evolution in the art. Previous to the patent, machines were in use which discharged the tobacco in accurate doses, compacted it by pressure into the shape of a cigar, and rolled the binder and filler into the finished bunch. The machines in controversy

show the progress which time would naturally develop in a busy and lucrative industry.

But two defenses will be examined. First, does the claim cover a combination or an aggregation? and, second, does the defendant infringe?

In order to be patentable a combination must not only be new but it must produce a new result, or an old result in a better way. If the combination be old and the result new, or if the result be unchanged and the combination new, in either case there is no patentable novelty. In a combination of old elements all the parts must so act that each qualifies every other. If they act independently, or if one acts independently of the others, it is an aggregation. It is not enough that these independent parts are conveniently associated in one machine, if each performs the same function it did before they were united. They must be so connected that the new result is due to their co-operative action. Thatcher Heating Co. v. Burtis, 121 U. S. 286, 7 Sup. Ct. Rep. 1034; Pickering v. McCullough, 104 U. S. 310; Packing Co. Cases, 105 U. S. 566; Hailes v. Van Wormer, 20 Wall. 353; Trimmer Co. v. Stevens, 53 O. G. 2044, 11 Sup. Ct. Rep. 150; Stephenson v. Railroad Co., 114 U. S. 149, 5 Sup. Ct. Rep. 777; Beecher Manuf'g Co. v. Atwater Manuf'g Co., 114 U. S. 523, 5 Sup. Ct. Rep. 1007; Machinery Co. v. Bunnell, 27 Fed. Rep. 810; Merwin on Patentability, 401.

The ninth claim must be considered as covering, irrespective of connecting mechanism, the combination of elements therein enumerated, and, tested by the foregoing rules, it is somewhat difficult to perceive what new result is produced by their united action. That the machine is better than any which preceded it is sufficiently established; but it is argued by the defendant that, although a number of old devices and instrumentalities are placed in convenient juxtaposition, each acts just as it did before. The cylinder will, it is said, discharge the dose in the old way irrespective of the fact that the hopper and plunger are under the chute. The hopper and plunger will compact the tobacco in the similitude of a cigar whether the tobacco is dropped from the chute or is placed in the hopper by hand. The roller will roll and the receiver will hold the bunch in the same manner separately as in their present position. And yet it is thought that the claim might be sustained for a combination were it not for the introduction of the last element-the bunch receiver. The result to be accomplished is the finished bunch. This object is attained by the successive action of the cylinder, the hopper and plunger, and the rolling apparatus. It is true that if one of these were removed the others would act, but the bunch would not be made in a manner so convenient and advantageous. For these elements a combination claim might be sustained within the doctrine of the following authorities: Forbush v. Cook, 2 Fish. Pat. Cas. 668; Hoffman v. Young, Fed. Rep. 74; Birdsall v. McDonald, 1 Ban. & A. 165. But the introduction of the bunch receiver renders the application of these cases to the claim in question, at least, exceedingly doubtful. What reciprocity can there be between the clamp at the end of the rolling table and the cylinder at