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ment which was occasionally outlined on scraps of paper, and then committed to the wastebasket, and was roughly worked into a wooden model with a penknife.
On Writ of Certiorari to the United States
Circuit Court of Appeals for the First Circuit.
On Writ of Certiorari to the United States Circuit Court of Appeals for the Seventh
Suit by the National Malleable Castings Company and another against the T. H. Symington Company. A decree for defendant was reversed on complainants' appeal (230 Fed. 821, 145 C. C. A. 131, 234 Fed. 343, 148 C. C. A. 245), and defendant brings certiorari. Suit by the T. H. Symington Company against William H. Miner, in which a decree for complainant was affirmed (229 Fed. 730, 144 C. C. A. 140), and defendant brings certiorari. Decree in the first case affirmed, and in the second reversed.
*Messrs. George I. Haight and Charles C.
Messrs. Melville Church, Gilbert P. Ritter, and Ernest F. Mechlin, all of Washington, D. C., for T. H. Symington Co.
Mr. Justice VAN DEVANTER delivered the opinion of the Court.
These cases are so related that they may be disposed of together. Each is a suit to enjoin the infringement of a patent. One was begun
in the district of Maine and is based on let
 One of the elements called for by the claims in the Byers patent which were sustained is a "pocket" or housing, which is to hold other parts in place. The corresponding element of the Emerick patent is described as "counterpart castings" and is in two parts.
Whether the Byers pocket was to be integral
or might be in two or more parts is a matter
about which the two courts differed. In the
While the discussion at the bar and in the briefs has taken a wide range, only two points need be considered.
The courts differed also as to who was the prior inventor. Presumptively it was Byers, for his application and patent were both prior to Emerick's application. Recognizing this, the parties claiming under Emerick
sought by proof to carry his invention back to an earlier date, and to that end produced the testimony of three *witnesses, Emerick
All three testified in both suits,
ters patent granted May 7, 1901, to Jacob J. their testimony being substantially the same Byers on an application filed April 21, 1900. in both. In the Maine suit the court proThe other was begun in the Northern Dis-nounced this testimony too equivocal and untrict of Illinois and is based on letters patent granted February 18, 1902, to William H. Emerick on an application filed May 24, 1901. Both patents cover an improvement in draft rigging for railroad cars. In each suit it became necessary to compare the patents, determine whether the invention of one was anticipated by the other, and ascertain which of the patentees was the original and first inventor. Ultimately the suits reached the Circuit Courts of Appeal for the circuits in
[2-4] This court has pointed out that oral testimony tending to show prior invention as against existing letters patent is, in the absence of models, drawings, or kindred evi
which they were brought. In the Maine suit the court held that Byers was the prior in
And it has said:
dence, open to grave suspicion, particularly 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. 286, 300, 15 Sup. Ct. 118, 39 L. Ed. 153. Deering v. Winona Harvester works, 155 U. al Malleable Castings Co. v. T. H. Symington, 230 Fed. 821, 145 C. C. A. 131; 234 Fed. 343, 148 C. C. A. 245. In the Illinois suit the court held that Emerick was the prior inventor and that claims 1, 2, 3, and 4 of the patent to him were valid and infringed. 229 Fed. 730, 144 C. C. A. 140. These conflicting decisions led to the allowance of the present writs of certiorari.
certain to establish priority as against Byers' application and patent, but in the Illinois suit the court, although regarding the testiit. On reading it we are persuaded that it mony as hardly satisfactory, gave effect to was clearly insufficient.
"A conception of the mind is not an invention until represented in some physical form, abandoned by the inventor, are equally destior unsuccessful experiments projects, tute of that character." Clark Thread Co. v. Willimantic Co., 140 U. S. 481, 489, 11 Sup. Ct. 846, 849 (35 L. Ed. 521).
Here the evidence was oral. No model, drawing, or kindred exhibit was produced. Fifteen years had elapsed since the date as
of which invention was being claimed. The Mr. Albert M. Yuzzolino, of New York
testimony was not direct and strong, but weak and uncertain and in some respects contradictory. At most it only disclosed a mental conception in process of development which occasionally was outlined on scraps of paper and then committed to the waste basket and was roughly worked into a wooden model four or five inches long with a pen knife. The first real model or drawing was made about the time of the actual application for a patent and there was no attempt at reduction to practice until after the patent was issued. Such proof under the rule just
stated does not suffice.
Decree in No. 31 affirmed.
(250 U. S. 355)
F. VITELLI & SON v. UNITED STATES. (Argued April 24, 1919. Decided June 9, 1919.)
Nos. 67, 68.
1. CUSTOMS DUTIES 81-EVIDENCE
Act June 22, 1874, § 21 (Comp. St. § 5714), providing that when customs duties have been liquidated and paid, and the imported goods delivered to the importer, such settlement shall after a year, in the absence of frau. be final and conclusive, being remedial to circumscribe the prior unlimited power to reliquidate, the presumption of correctness of official action of the collector, in reliquidating the duties after expiration of the year, cannot obtain, with the result of placing on the importer the burden of showing there was no fraud, and this though the importer pays the reliquidated duties under protest, and appeals; such proceeding being appropriate to resist the result of the reliqui
2. CUSTOMS DUTIES S5-RELIQUIDATIONAPPEAL-REVERSAL AND REMAND.
The holding of the Board of General Appraisers, affirmed by the Court of Customs Appeals, that a reliquidation of customs duties was valid, having been under a mistaken construction of statute as to presumption and burden of proof as to fraud. should not be sustained, though there was sufficient evidence, but the question of fraud should be passed on by such tribunals freed from such mistaken construction.
City, for petitioners.
Mr. Assistant Attorney General Hanson, for the United States.
Reliquidations of duties on imports by F. Vitelli & Son were sustained by the Board of General Appraisers and by the Court of Customs Appeals (7 Ct. Cust. App. 243), and the importers appeal. Reversed and remanded.
*Mr. Chief Justice WHITE delivered the opinion of the Court.
The petitioners, Vitelli & Son during the years 1905-1907, made entry at the port of New York of 19 different lots of dutiable merchandise, that is, chestnuts and garlic, and these entries were liquidated and the duties paid. About five years after the last of these payments, the collector of the port of New York, declaring that evidence had been produced to his satisfaction showing that 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 reliquidation to be made on the basis of the corrected weights. Vitelli & Son, denying the existence of fraud and disputing the power to make the reliquidation, protested against the claim of duty which resulted from the reliquidation, and, paying the same under protest, prosecuted an appeal to the Board of General Appraisers.
Before the Board the collector made no affirmative proof of the commission of fraud, and submitted the validity of the reliquidation upon the basis of the official papers pertaining to it-that is, the certificates of weight, etc.-upon which he had acted. The petitioners, not taking upon themselves the burden of showing that there was an absence of fraud, stood upon their protest as to the want of power to make the reliquidation. The Board sustained the protest. It held that as under the conditions disclosed the existence of power in the collector to make the reliquidation after one year depended upon the fact of fraud, that the burden was upon the collector to establish that which was necessary to sustain his authority to act, and having failed to do so the reliquidation was erroneous and the protest was well founded. Appeal was prosecuted to the Court of Customs Appeals, where the action of the Board was reversed. United States v. Vitelli & Son, 5 Ct. Cust. App. *151. The court held that although it was true that, as applied to the case before it, the existence of fraud was essential to confer upon the collector the power which he had exerted, as he had exercised 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 was expressly decided that, in view of the presumption of power indulged in, the effect of section 21 of the Act of June 22, 1874, c. 391, 18 Stat. 190 (Comp. St. § 5714), was to cast upon the importer the burden of establishing a negative, that is, that there had For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes
been no fraud. The case was remanded for reconsideration to the Board of General Appraisers.
of proof which the construction sustained, the remedial purposes of the statute were either wholly negatived or in any event greatly perverted.
test and payment of duties the action of the collector as to those entries was before the Board of General Appraisers for consideration. They, were heard by the Board along with the entries which the Board had under consideration by virtue of the remanding order of the Court of Customs Appeals. The Board held, in view of the ruling of the Court of Customs Appeals as to the presumption of power and burden of proof, that the reliquidation in both cases was valid and that the protests were consequently without merit. Both cases were then appealed to the Court of Customs Appeals, which in an elaborate opinion reiterated and applied its previous ruling (7 Ct. Cust. App. 243), and the cases are here on the allowance of a certiorari.
While the protest concerning the 14 entries 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 particular instance the importer had become an actor seeking to question the reliquidation, he thereby, as an actor, assumed the burden of proof as to the absence of fraud which would not have rested upon him under the statute had he refused to pay the duty resulting from the reliquidation and awaited action taken against him by the United States to enforce it. But as the court below expressly declared that the proceeding taken was appropriate to resist the result of the reliquidation, if illegal, it cannot be that the right to correct the wrong was lost by resort to the remedy appropriate for its correction.
 Obviously the whole case turns upon the significance of section 21 of the Act of 1874, the text of which is as follows (18 Stat. 186, 190):
"Whenever any goods, wares, and merchandise shall have been entered and passed free of duty, and whenever duties upon any imported goods, wares, and merchandise shall have been liquidated and paid, and such goods, wares, and merchandise shall have been delivered to the owner, importer, agent, or consignee, such entry and passage free of duty and such settlement of duties shall, after the expiration of one year from the time of entry, in the absence of fraud and in the absence of protest by the owner, importer, agent, or consignee, be final and conclusive upon all parties."
Indisputable also is it, as stated by the Court of Customs Appeals and long previously pointed out in United States v. Phelps et al., 17 Blatchf. 312, Fed. Cas. No. 16039, that the remedy intended to be accomplished by the section in question was to prevent the right to reliquidate, which had previously been exerted without limit, from being exercised except in the particular conditions stated, and thus in the interest of the citizen to circumscribe the power to the instances specified in order that uncertainty as to the finality of customs entries might be removed and the security of commercial transactions be safeguarded. But from this premise we are of opinion that the error of the construction given to the statute below becomes at once apparent, since, in the first place, by a presumption of power it virtually removes the limitation as to the exercise of the power which the statute created, and further, as the necessary result of the onus
Moreover the proposition can alone rest upon the assumption that the limitation on power which the statute imposed was ephemeral while from the text it is certain that it was permanent and controlling. The cogency of this conclusion stands out in bold relief when it is considered that the remedial purpose of the statute was to protect the citizen from the unlimited power to reliquidate and the uncertainties affecting commercial transactions resulting from the existence of such power. The inevitable result of the argument is to cast upon the citizen the perpetual burden of showing that he had not been guilty of wrong as the only means of escaping the exercise against him of the unlimited power to reliquidate which it was the purpose of the statute to prevent.
 It is contended that although it be admitted that the statute was wrongly construed below, nevertheless the reliquidation should be now sustained because there was adequate proof in the record to show the existence of fraud which justified the reliquidation order without reference to the presumption upon which the court below based its conclusion. We do not, however, think this view can be sustained, since, the erroneous ruling as to the statute dominates the entire situation and exacts that the question of the existence of the fraud necessary to give rise to the power to reliquidate should be disposed of by the tribunals peculiarly competent to consider such question, disembarrassed from any mistaken construction as to the presumption created by the statute.
It follows that the judgment of the Court of Customs Appeals must be and it is reversed and the cases remanded to the Board of General Appraisers for further proceedings not inconsistent with this opinion.
And it is so ordered.
(250 U. S. 387)
NORTHERN PAC. RY. CO. et al. v. Mc-
1. PUBLIC LANDS 91 SWAMP LAND RAILROAD GRANT-CONFLICT.
Whether lieu lands selected by railroad company in place of those primarily granted were, (Argued Jan. 22, 1919. Decided June 9, 1919.) when the selections were tendered, so occupied and appropriated as not to be properly subject to acquisition, is a question for determination by the Secretary of the Interior, whose approval or disapproval involves an exercise of sound, but not arbitrary, discretion, and makes it permissible for him, where a selection is proffered for land which a bona fide occupant, `misunderstanding his rights, has reclaimed, to reject the selection and hold title in the United States until the occupant may be enabled, within the limits of existing law or by special act, to obtain title.
8. PUBLIC LANDS 120 - PATENTS PATENT OF OCCUPIED LAND.
The pendency of a claim by the state of Oregon under the swamp land grant made by Act Sept. 28, 1850 (Comp. St. §§ 4958-4960), and Act March 12, 1860, to lands which would otherwise pass to the Northern Pacific Railroad as parts of odd-numbered sections within the place limits of land grant made by Act July 2, 1864, prevented such lands from passing under the grant as place lands, regardless of whether the swamp land claim was well grounded.
3. ADVERSE POSSESSION 7(2) TIVE TITLE-ACQUISITION.
2. PUBLIC LANDS
Where, through mistake in the Land Department, lands which were claimed by the state of Oregon as swamp lands under Act Sept. 28, 1850 (Comp. St. §§ 4958-4960) and Act March 12, 1860, were erroneously patented as place lands under the grant made to Northern Pacific Railroad by Act July 2, 1864, such patents 9. PUBLIC LANDS 117-PATENTS-ATTACK. carried the legal title, but the United States was entitled to a reconveyance, and in equity remained the true owner.
6. PUBLIC LANDS AUTHORITY OF COURT.
No prescriptive title can be obtained to public lands belonging to the United States, nor can a prescriptive title be obtained where the Land Department erroneously conveyed to a railroad company lands as to which there were conflicting claims, and the company in less than the prescriptive period reconveyed the same to the United States, which remained the owner in equity.
7. PUBLIC LANDS 108-RAILROAD GRANT -LIEU LAND SELECTION.
Pending lieu land selections by Northern Pacific Railroad in place of lands excluded from the primary grant because mineral require the approval of the Secretary of the Interior to make them effective.
5. PUBLIC LANDS 103(4)
Where full title to land was in the United States, and there were conflicting pending claims, the courts may not take up the adjudication of such claims, but must await the decision of the land officers and the issue of patents in regular course.
Where, at the time a patent was issued to a railroad under a lieu land selection, the parcel of land was so occupied or appropriated that it properly could not be selected and patented in place of land found to be mineral, that may afford basis for suit by the United States to cancel the patent, or basis for holding the railroad company as trustee of title for the occupant.
Suit to quiet title by E. W. McComas against the Northern Pacific Railway Company and others. A judgment for plaintiff, which was affirmed by Supreme Court of Oregon (82 Or. 639, 161 Pac. 562), was subse
4. PUBLIC LANDS 82-RAILROAD GRANTS- quently modified on rehearing (82 Or. 639, LIEU LAND SELECTIONS. 162 Pac. 862), and defendants bring certiorari. Reversed and remanded.
Pending the final action of the Land Department on conflicting claims, the courts may protect the possession lawfully acquired or restore one wrongfully interrupted, for that is a matter not confided to the Land Department, and may be dealt with by the courts in the exercise of their general powers.
That land selected by railroad company in lieu of its primary grant was so occupied or appropriated that it properly could not be selected and patented does not entitle the occupant to complain on behalf of the United States, or assail the patent collaterally.
On Writ of Certiorari to the Supreme Court of the State of Oregon.
* Messrs. Charles Donnelly, of St. Paul, Minn., Charles H. Carey, James B. Kerr, aud Charles A. Hart, all of Portland, Or., and C. W. Bunn, of St. Paul, Minn., for petiPENDING tioners.
Mr. Harvey M. Friend, of Washington, D. C., for respondent.
Mr. Justice VAN DEVANTER delivered the opinion of the Court.
This is a suit to quiet title in the plaintiff to five small tracts of land in Umatilla county, Oregon, the right to such relief being predicated solely on adverse possession under color of title for ten years, the period prescribed in a local statute. The plaintiff obtained a judgment, which at first was affirmed by the Supreme Court of the state and then on a petition for rehearing was modified as to two of the tracts. McComas v. North
For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes
ern Pac. R. Co., 82 Or. 639, 161 Pac. 562, [ing under the grant as place lands. Whit162 Pac. 862. The case is here on writ of certiorari.
There was substantial testimony tending to show that McComas, the plaintiff, and his predecessors had been in undisputed possession of the lands for ten years when the suit was brought and that during that period they had been cultivating the lands and claiming the same under the deeds from the state hereinafter mentioned and had put improvements thereon costing more than $10,000. The other facts are set forth in a stipulation found in the record.
ney v. Taylor, 158 U. S. 85, 92, 94, 15 Sup. Ct. 796, 39 L. Ed. 906; Northern Pacific R. R. Co. v. Sanders, 166 U. S. 620, 630, 17 Sup. Ct. 671, 41 L. Ed. 1139; Northern Pacific R. R. Co. v. Musser-Sauntry Co., 168 U. S. 604, 609, 18 Sup. Ct. 205, 42 L. Ed. 596. But through some mistake in the Land Department three of the tracts were erroneously patented to the railroad company as place lands between 1906 and 1909. Without doubt the patents passed the legal title, but the United States was entitled to a reconveyance from the railroad company and in equity remained the true owner. Germania Iron Co. v. United States, 165 U. S. 379, 17 Sup. Ct. 337, 41 L. Ed. 754. The two tracts not patented as place lands were selected by the railroad company in 1908 and a succeeding year in lieu of other lands in place excluded from the grant by reason of being mineral. These selections were received by the local land office and were awaiting action by the Secretary of the Interior at the time of the trial.
The lands are all parts of odd-numbered sections within the primary or place limits of the land grant made to the Northern Pacific Railroad Company by the Act of July 2, 1864, c. 217, 13 Stat. 365. At the date of that act they were public lands of the United States and they continued to be such at the time the line of road opposite which they lie was definitely located, save as their status was affected by a pending claim of the state under the swamp-land grant made by the Act of September 28, 1850, c. 84, 9 Stat. 519 (Comp. St. §§ 4958-4960), and the Act of March 12, 1860, c. 5, 12 Stat. 3. This claim was shown by a swamp land selection list filed in the Land Department November 23, 1872, and was still pending in that department in 1892 and 1895. In those years the state, without waiting for a determination of its claim by the department executed deeds for the lands to persons who in turn executed deeds therefor to the plaintiff. As to three of the tracts the swamp land claim was examined and rejected by the department some time before this suit was begun, and as to the other two it was still pending at that time.
This suit was brought September 25, 1912. Shortly thereafter the railroad company, recognizing that the patents theretofore issued to it for three of the tracts had been erroneously issued, reconveyed the title to the United States and subsequently selected those tracts in lieu of other tracts in place excluded from the grant by reason of being mineral. These selections were received by the local land office; one was approved by the Secretary of the Interior and passed to patent, and the other two were at the time of the trial pending before that officer.
The plaintiff made no effort by pleading or evidence to show that the swamp land claim was well grounded or that he, his predecessors or the state, had in any way become entitled to receive the title from the United States.
[3, 4] With some hesitation the trial court concluded that the lands were not excepted from the grant of lands in *place by reason of the existence of the swamp land claim at the date of the definite location, and there
[1, 2] The definite location of the line of road opposite which the lands lie was effected by a map filed in the Land Department and approved June 29, 1883. The grant to the railroad company was of all the odd-numbered sections of public land within designated limits on either side of the line of road as so located, with an express exception of such | fore that on the definite location, by which lands as at the time of definite location were the place limits were identified, the title reserved, sold, etc., or were not "free from passed to the railroad company, the grant pre-emption or other claims or rights." There being one in præsenti as respects place lands was also an express exclusion of all mineral falling within its terms and not within its lands and a provision that "in lieu thereof a excepting or excluding clauses, and the prolike quantity of unoccupied and unappropriat- vision for patents being intended only to ed agricultural lands in odd-numbered sec- give further assurance. Deseret Salt Co. tions nearest to the line of said road may be v. Tarpey, 142 U. S. 241, 12 Sup. Ct. 158, selected" under the direction of the Secre- 35 L. Ed. 999; Toltec Ranch Co. v. Cook, 191 tary of the Interior. By reason of the pend- U. S. 532, 24 Sup. Ct. 166, 48 L. Ed. 291. On ency of the swamp land claim at the time that theory a decree was entered quieting the of the definite location all the tracts in title in the plaintiff as to all the tracts. question were expected from the grant of But the court should have held that the lands in place, and this whether the claim swamp land claim pending, as it was, at the was well grounded or otherwise; that is to date of the definite location prevented these say, the fact that the claim was pending and lands from passing under the grant of lands undetermined prevented the lands from pass-in place. The decisions of this court before