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operation of the machine remains the same, | form the same function, did not take the infringement is avoided. Brooks v. Fiske, structure without the bounds of the patent, 15 How. 212, 221, 14 L. ed. 665, 669; Union Steam-Pump Co. v. Battle Creek SteamPump Co. 43 C. C. A. 560, 104 Fed. 337, 343. In the latter case Judge Severens, who delivered the opinion of the court, after recognizing the doctrine that mere change of the location of parts, if the parts still per
"If, however, such changes of size, form, or location effect a change in the principle or mode of operation such as breaks up the relation and co-operation of the parts, this results in such a change in the means as displaces the conception of the inventor,
and takes the new structure outside of the | patent industriously makes the stationary patent." card, substantially as described, an element of the claim." Of this card the inventor said:
And see Kokomo Fence Co. v. Kitselman, 189 U. S. 8, 47 L. ed. 689, 23 Sup. Ct. Rep. 521, in which case it was held that where the patent does not embody a primary invention, but only an improvement on the prior art, and the defendant's machines can be differentiated, the charge of infringement is not sustained.
In the case under consideration the respondents have dispensed with the the fixed stretcher bar and have adopted a movable one, operated by an entirely different mechanism, capable of accomplishing a much larger amount of work within a given time. In the circuit court of appeals it was said to result in a double working capacity and product. It does not seem to us to be a mere transposition or substitution of parts; in the Sutton patent, the stretcher bar being stationary, there are several mechanisms used for operating the movable brushes and the clipping knives; a different mechanism is used for operating the different parts which are to be brought to the fixed stretcher bar in carrying out the operation intended. In the respondents' machine the same application of power moves the stretcher bar and, by the co-operation of the feeding apparatus as above outlined feeds the machine by bringing the pelt forward, at the same time actuating the knives, in practically one operation. This seems to us to be a distinct mechanical departure, as well an advance upon the Sutton machine, when considered in view of the results accomplished.
Moreover, if infringement could be otherwise sustained, the decree must be affirmed, because the eighth claim has made the stationary card, shown at "E" in the drawing, an essential part of the mechanism described. It may be that this card is unnecessary, and that it was dropped from the later patents issued to Sutton (but it is in this claim, and as was said by Judge Wallace in his dissenting opinion in Cimiotti Unhairing Co. v. Nearseal Unhairing Co. 53 C. C. A. 161, 115 Fed. 507, 509, "the
"Immediately above the stretcher bar B is arranged a stationary card, E, which is attached to the ends of the stretcher bar B by means of thumb-screws. (Not shown in the drawings.) The points of the teeth of the card E are close to but do not touch the surface of the skin, so that the hair and fur are both straightened as the skin is fed forward. The teeth of the card E hold down the fine fur, but permit the stiff hairs to stand up between the teeth, owing to the slow forward movement of the skin, which gives the, hairs sufficient time to so adjust themselves."
He also says: "The card is set back from the edge of the stretcher bar to a distance a little more than one half of the length of the fur, for the purpose of holding the fur and preventing it from moving forward until the forward motion of the skin takes place."
While it is said that the card does not touch the surface of the skin so that the hair and fur are both straightened as the skin is fed forward, it is true that the teeth of the card in some measure hold down the fine fur, and it is insisted that the mechanical equivalent of this card is found in respondents' machine in the compression bar, which also acts to hold down the fur before it is carried to the separating brush. But this bar has no carding feature to it, and cannot be made to perform the functions of a card; it has no separate teeth, and is not a card or the mechanical equivalent of one shown and described and made a part of the eighth claim.
We think the Circuit Court of Appeals was right in the conclusion that the mechanism of the respondents was so materially different from the Sutton patent as to avoid the infringement alleged; and that an essential element of the eighth claim of the Sutton patent was not used by the respondents.
(199 U. S. 1)
PEOPLE OF THE STATE OF NEW YORK | of the state. N. Y. Laws, 1899, chap. 712, ex rel. METROPOLITAN STREET RAIL- p. 1589. The first section reads: WAY COMPANY, Piff. in Err.,
"Section 1. Subdivision 3 of § 2 of the tax law is hereby amended to read as fol
STATE BOARD OF TAX COMMISSION- lows:
"3. The terms 'land,' 'real estate,' and 'real property,' as used in this chapter, inContracts-impairment of obligation-valid- clude the land itself above and under waity of tax on special franchises-due proc- | ter, all buildings and other articles and ess of law-equal protection of the laws. structures, substructures and superstruc
1. The special franchise tax imposed by N. Y. Laws 1899, chap. 712, does not impair the obligation of the contracts by which the state or municipality granted the right to construct, operate, and maintain street railways in the city of New York in consideration of the payment of a gross sum or of the annual payment of a fixed amount or fixed percentage of earnings, where such payments are nowhere declared to be in lieu of, or as the
tures, erected upon, under, or above, or affixed to the same; all wharves and piers, including the value of the right to collect wharfage, cranage, or dockage thereon; all bridges, all telegraph lines, wires, poles, and appurtenances; all supports and inclosures for electrical conductors and other appurtenances upon, above, and under ground; all surface, underground, or elevated railroads, including the value of all franchises, rights, or permission to construct, maintain, or operate the same in, under, above, on, or through streets, highways, or public places; all railroad structures, substructures and superstructures, tracks and the iron thereon; branches, switches, and other fixtures permitted or authorized to be made, laid, or placed in, upon, above, or under any public or private road, street, or
equivalent or substitute for, taxes. 2. The reduction, on account of annual pay ments "in the nature of a tax" covered by existing agreements, which is made by N. Y. Laws 1899, chap. 712, from the amount of the special franchise tax provided for by that statute, does not render the statute invalid, either as denying the equal protection of the laws to street railway companies who agreed to pay a lump sum for their franchises, or as depriving such companies of their property without due process of law. The exemption of the subsurface street rall-ground; all mains, pipes, and tanks laid or way in New York city from the operation of
the special franchise tax authorized by N. Y. Laws 1899, chap. 712, does not make that statute invalid, as denying the owners of the surface street railways in that city the equal protection of the laws, or as depriving them of their property without due process of law.
placed in, upon, above, or under any public or private street or place for conducting steam, heat, water, oil, electricity, or any property, substance, or product capable of transportation or conveyance therein or that is protected thereby, including the value of all franchises, rights, authority, or permission to construct, maintain, or operate, in, under, above, upon, or through
Argued April 17, 18, 19, 1905. Decided May any streets, highways, or public places, any
N ERROR to the Supreme Court of the IN State of New York to review a judgment sustaining an assessment of a street railway franchise, entered pursuant to the mandate of the Court of Appeals of that state, which had reversed a judgment of the Appellate Division of the Supreme Court for the Third Department, which had in turn reversed the judgment of the Supreme Court entered at a special term held in and for the county of Albany on a writ of certiorari to review the action of the state board of tax commissioners. Affirmed.
See same case below in Appellate Division of Supreme Court, 79 App. Div. 183, 80 N. Y. Supp. 85; in Court of Appeals, 174 N. Y.
417, 63 L. R. A. 884, 67 N. E. 69.
Statement by Mr. Justice Brewer:
On May 26, 1899, the legislature of New York passed an act amending the tax law 25 S. C.-45.
mains, pipes, tanks, conduits, or wires, with their appurtenances, for conducting water, substance, or electricity for telegraphic, steam, heat, light, power, gas, oil, or other, telephonic, or other purposes; all trees and underwood growing upon land, and all mines, minerals, quarries, and fossils in and under the same, except mines belonging to the state. A franchise, right, authority, or shall, for the purpose of taxation, be known permission specified in this subdivision as a 'special franchise.' A special franchise shall be deemed to include the value of the tangible property of a person, copartnership, association, or corporation situated in, upon, under, or above any street, highway, public place, or public waters in connection with the special franchise. The tangible property so included shall be taxed as a part of the special franchise. No property of a municipal corporation shall be subject to a special franchise tax."
The portions in italics are the new matter introduced by the amendment. Other
sections were added to the tax law, of and one section authorized certiorari to rewhich 46 is as follows: view their proceedings.
"§ 46. Deduction from special franchise tax for local purposes.-If, when the tax assessed on any special franchise is due and payable under the provisions of law applicable to the city, town, or village in which the tangible property is located, it shall appear that the person, copartnership, association, or corporation affected has paid to such city, town, or village for its exclusive use within the next preceding year, under any agreement therefor, or under any statute requiring the same, any sum based upon a percentage of gross earnings, or any other income, or any license fee, or any sum of money on account of such special franchise, granted to or possessed by such person, copartnership, association, or corporation, which payment was in the nature of a tax, all amounts so paid for the exclusive use of such city, town, or village, except money paid or expended for paving or repairing of pavement of any street, highway, or public place, shall be deducted from any tax based on the assessment made by the state board of tax commissioners for city, town, or village purposes, but not otherwise; and the remainder shall be the tax on such special franchise payable for city, town, or village purposes. The chamberlain or treasurer of a city, the treasurer of a village, the supervisor of a town, or other officer to whom any sum is paid for which a person, copartnership, association, or corporation is entitled to credit as provided in this section, shall, not less than five nor more than twenty days before a tax on a special franchise is payable, make and deliver to the collector or receiver of taxes or other officer authorized to receive taxes for such city, town, or village, his certificate showing the several amounts which have been paid during the year ending on the day of the date of the certificate. On the receipt of such certificate the collector, receiver, or other officer shall immediately credit on the tax roll to the person, copartnership, association, or corporation affected the amount stated in such certificate, on any tax levied against any person, copartnership, association, or corporation on an assessment of a special franchise for city, town, or village purposes only, but no credit shall be given on account of such payment or certificate in any other year, nor for a greater sum than the amount of the special franchise tax for city, town, or village purposes, for the current year; and he shall collect and receive the balance, if any, of such tax, as required by law."
Other sections provide the machinery for assessment. This assessment was to be made by the state board of tax commissioners,
Under this law an assessment was made of the franchises belonging to the plaintiff in error, a corporation created by the consolidation of several corporations, having franchises for the maintenance and operation of street railroads in the city of New York. A certiorari to review this assessment was finally decided by the court of appeals of the state, which, on April 28, 1903 (174 N. Y. 417, 63 L. R. A. 884, 67 N. E. 69), sustained the assessment, and remanded the case to the special term of the supreme court, by which court a final judgment was entered, June 22, 1903. Thereupon this writ of error was sued out. Plaintiff in error makes three assignments of error:
"I. Error in declining to hold that the act of the legislature of the state of New York, approved May 26th, 1899 (chap. 712, Laws 1899), entitled 'An Act to Amend the Tax Law in Relation to the Taxation of Public Franchises as Real Property,' in so far as it authorizes the assessment imposed by the state board of tax commissioners on March 20, 1900, upon the franchises of the [plaintiff in error] relator above named, deprives said relator of its property without due process of law, in contravention of the 14th Amendment of the Constitution of the United States.
"II. Error in declining to hold that said legislative enactment, in so far as it authorizes the said assessment denies to said relator the equal protection of the laws, in contravention of the 14th Amendment to the Constitution of the United States.
"III. Error in declining to hold that said legislative enactment, in so far as it authorizes the said assessment, impairs the obligations of contracts, in contravention of § 10, article 1, of the Constitution of the United States.”
Prior to 1874 the legislature of New York made direct grants of franchises, rights, or privileges to use the streets of the city of New York. In that year the following amendment to the Constitution was adopted (Constitution 1846, as amended, art. 3, § 18):
"The legislature shall not pass a private or local bill in any of the following cases:
"Granting to any corporation, association, or individual the right to lay down railroad tracks.
"But no law shall authorize the construction or operation of a street railroad except upon the condition that the consent of the owners of one half in value of the property bounded on, and the consent also of the local authorities having the control of,
the express condition that the provisions of this act pertinent thereto shall be complied with, and shall be filed in the office of the county clerk of the county in which said railroad is located."
that portion of a street or highway upon | ties shall, in all cases, be applied for in which it is proposed to construct or oper- writing, and when granted shall be upon ate such railroad, be first obtained, or, in case the consent of such property owners cannot be obtained, the general term of the supreme court, in the district in which it is proposed to be constructed, may, upon application, appoint three commissioners, who shall determine, after a hearing of all parties interested, whether such railroad ought to be constructed or operated, and their de termination, confirmed by the court, may be taken in lieu of the consent of the prop-corporated city or village, to whom applierty owners."
In 1884 an act was passed (Laws 1884, chap. 252, p. 309) giving to the local authorities power to grant franchises for street railroads. This act provided:
"Sec. 7. The local authorities of any incorporated city or village to whom application, under the provisions of this act, may be made for consent to the construction, maintenance, use, operation, or extension of a street surface railroad upon any street, road, avenue, or highway, may, at their option, provide for the sale of and sell at public auction the franchise, subject to all the provisions of this act, to so construct, maintain, use, operate, or extend such street surface railway.
"Sec. 8. Every corporation incorporated under, or constructing or operating a railroad constructed or extended under, the provisions of this act, within the cities of the state having a population of two hundred and fifty thousand or more, as aforesaid, shall, for and during the first five years after the commencement of the operation of any portion of its railroad, annually, on the 1st day of November, pay into the treasury of said respective cities in which its road is located to the credit of the sinking fund thereof, 3 per cent of its gross receipts for and during the year ending the next preceding 30th day of September, and after the expiration of said five years make a like annual payment into the treasury of said respective cities for the credit of said sinking funds, of 5 per cent instead of 3 per cent of said gross receipts: Provided, however, That every corporation now existing and operating a street-surface railroad which shall extend its tracks or construct branches therefrom, and operate such extensions or branches under the provisions of this act, or the corporation operating such branches or extensions, shall pay such percentages as aforesaid only upon such portions of its gross receipts as shall bear the same proportion to the whole value thereof as the length of such extension and branches shall bear to the entire length of its tracks."
In 1886 an act amending a prior act of the same year was passed (Laws 1886, chap. 642, p. 919), which contained the following terms:
"Sec. 1. The local authorities of any in
cation may be made for consent to the construction, maintenance, use, operation, or extension of a street railroad, or a railroad or railway for the transportation of passengers, mails, or freight, over, upon, under, or through any of the streets, roads, avenues, parks, or public places in such city or village, must provide, as a condition of the said consent to the use of said street, road, avenue, park, or public place, that the right, franchise, and privilege of using the said street, road, avenue, park, or public place shall be sold at public auction to the bidder who will agree to give the largest percentage per annum of the gross receipts of said company or corporation, with adequate security, as hereinafter provided, for the fulfilment of said agreement, and for the commencement and completion of such road according to the plan or plans, and on the route or routes, fixed for its construction, within the time or times hereinafter designated and prescribed therefor; but this agreement shall not release any such road from the percentages required to be paid by chapter 252 of the Laws of 1884. The legislature expressly reserves the right to regulate and reduce the rate of fare on such railroad or railway.
"And in the event of the failure or refusal of the party or corporation operating or using the railroad to be constructed as aforesaid, to pay the rental or percentage of gross earnings agreed upon, then, upon notice to the said party or corporation,-of not less than sixty days,-the said consent and right to operate such railroad may be declared forfeited, and the same may be resold to the highest bidder in the manner above provided.”
The special acts passed before the amendment of 1874, which are claimed to constitute contracts, the obligations of which are impaired by this tax legislation, are found, first, in chap. 625 of the Laws of 1868, which granted to certain persons the right to construct, maintain, and operate and use a street railroad, with a provision that "the said persons, or their assigns, shall pay to the sinking fund commissioners of the city "Sec. 4. The consent of the local authori-' of New York the sum of $1,000 per annum,