REPORTS OF CASES ARGUED AND ADJUDGED IN THE SUPREME COURT OF THE UNITED STATES, DECEMBER TERM, 1853. By BENJAMIN C. HOWARD, Counsellor at Law, and Reporter of the Decisions of the Supreme Court of the United States. VOL. XV. SECOND EDITION. EDITED, WITH NOTES AND REFERENCES TO LATER DECISIONS, BY STEWART RAPALJE, AUTHOR OF THE “ FEDERAL REFERENCE DIGEST,” ETC. NEW YORK AND ALBANY BANKS & BROTHERS, LAW PUBLISHERS 1889.. . Entered, according to Act of Congress, in the year 1884, BY BANKS & BROTHERS, In the office of the Librarian of Congress, at Washington. PROCEEDINGS IN RELATION TO THE DEATH OF WILLIAM R. KING, LATE VICE-PRESIDENT OF THE UNITED STATES. December 2th, 1853. At the opening of the Court this morning, Mr. Cushing, the Attorney-General of the United States, addressed the Court as follows:— May it please your Honors:—I rise to submit a motion, which seems to be called for by the nature of the subject-matter. God, in his inscrutable, but supreme will, has removed from the service of the country, and from that path of honor which, through a long lifetime of greatness and goodness, he has so nobly trod, the Vice-President of the United States. When the voice of some future panegyrist, on the banks of the Mississippi—the Bravo of Columbia,—shall speak of the heroes, the legislators, the statesmen, and the magistrates of our country, as it recounts the names borne on that glorious roll of immortality, it cannot fail to pause with unalloyed satisfaction at the name of William R. King. Providence, from time to time, raises up men to lead armies on to victory through the clash of the battle-field, or, by rare gifts of written or spoken thought, to wield, at will, the fiercest impulses of nations. Such men, if they have a superlatively splendid career, yet have an agitated one*. They create events and they partake of the vicissitudes of events. They may, they often do, have shaded sides of the mental formation, without which the bright ones would be too dazzlingly brilliant. They come to be praised or dispraised alternately, according to the light in which their actions are viewed, and the flux or reflux of the tides of popular emotion. If William R. King be not one of these, yet he has an appropriate, and perhaps he has a more enviable place in the temple of fame and in the hearts of Americans. For of him, it is with plainest truth to be said, that with lofty elements in his character to merit and receive the most absolute commendation, there is nothing in it open to censure. . He stands to the memory in sharp outline, as it were, against the sky, like some chiselled column of antique art, or some consular statue of the imperial republic wrapped in its marble robes, grandly beautiful in its simple dignity and unity of a faultless proportion. iv DEATH OF WILLIAM R. KING. Placed at an early age in that august assembly, the highest, all things considered, in this or any other land, the Senate of the United States, — and continuing there, save with brief interruption of the most eminent diplomatic employment, during a whole generation of time, — and repeatedly elevated to preside over its deliberations,—he had grown to be, not of it merely, but its representative man, its typical person, its all conspicuous model of an upright, pure, spotless, high-minded, chivalric American Senator. This it is, in my judgment, which constitutes the distinctive trait in his character* and career, and which drew to him the veneration and the confidence of his countrymen. We think of him almost as an historical monument of senatorial integrity, rather than as a mere mortal man of the age. Like that gallant soldier, who received the baton of marshal in the very scene of his achievements, and fell, struck by a cannon shot, in the act of grasping the insignia of his command, so the Vice-President did but reach the pinnacle of his greatness to die. Such a death, so timed, though premature for us whom he has left behind to the toils and cares of public duty, was not premature for the consummate completness of his renown. Knowing how deeply his loss must be deplored by your Honors, it is deemed fitting for me to move that this Court, in unison with what has been done in both Houses of Congress, do now adjourn, in manifestation of its respect for the memory of the deceased Vice-President of the United States. To which Mr. Chief Justice Taney replied:— The Court is sensible that every mark of respect is due to the memory of the late Vice-President, William R. King. His life was passed in the public service, and marked throughout by its purity, integrity, and disinterested devotion to the public good. It is true that no part of it connected him particularly with the judicial branch of this government. But the people of the United States had elevated him to the highest office but one in their gift; and the loss of a statesman like him, so honored and so worthy of the honor bestowed, is felt to be a public calamity by this department of government as well as by that to which he more immediately belonged. And as a token of their high respect for him while living, and their sincere sorrow for his death, the Court will adjourn to-day, without transacting its ordinary business. Whereupon, proclamation being made, the Court is adjourned until Monday morning at 11 o’clock. SUPREME COURT OF THE UNITED STATES. Hon. ROGER B. TANEY, Chief Justice. Hon. JOHN McLEAN, Associate Justice. Hon. JAMES M. WAYNE, Associate Justice. Hon. JOHN CATRON, Associate Justice. Hon. PETER V. DANIEL, Associate Justice. Hon. SAMUEL NELSON, Associate Justice. Hon. ROBERT C. GRIER, Associate Justice. Hon. BENJAMIN R. CURTIS, Associate Justice. Hon. JOHN A. CAMPBELL, Associate Justice. Caleb Cushing, Esq., Attorney-General. William Thomas Carroll, Esq., Clerk. Benjamin C. Howard, Esq., Reporter. Jonah D. Hoover, Esq., Marshal. LIST OF ATTORNEYS AND COUNSELLORS. ADMITTED, DECEMBER TERM, 1853. C. Cushing, . . Massachusetts. Geo. W. McCook, .... . . Ohio. Wm. Dunbar, .... . . Louisiana. F. Perin, . . Louisiana. John Perkins, Jr., .... . . Louisiana. T. S. Wilson, . . Iowa. Hugh A. Garland, .... . . Missouri. John S. Woodward, .... . . New York. Charles Donohue, .... . . New York. Wm. Shepard Bryan,.... . . Maryland. Frederick K. Bartlett, . . . Minnesota. Mariano D. Papy . . Florida. Horace W. Soper, .... . . New York. Samuel M. Hart, .... . . Ohio. Nathaniel Hatch, .... . . District of Columbia. Montgomery Blair, .... . . District of Columbia. James L. Orr, .... . . South Carolina. Thomas C. P. Buckley, . . New York. J. M. Chapman, .... . . New Jersey. T. J. Fox Alden, .... . . Pennsylvania. Waldo Hutchins, .... . . New York. John W. McKim, .... . . District of Columbia. John E. Burrill, Jr., . . 1 . . New York. Geo F. Shepley, . . Maine. Geo. Buckham, .... . . New York. Charles Tracy, . . New York. John Stryker, . . New York. E. Ingersold, . . Pennsylvania. Samuel W. Parker, . . Indiana. Jeremiah Clemens, .... . . Alabama. LIST OF ATTORNEYS AND COUNSELLORS. vii W. C. Johnson, . . . . . . . New York. George Miller,..............................New York. William R. Sapp, ....... Ohio. Wm. Carey Jones,............................California. Theodore Gaillard Hunt, ..... Louisiana. Randell Hunt,................................ Louisiana. 0. H. Browne,...............................Nebraska. Archibald Williams, ...... Illinois. Dyre Tillinghast,...........................New York. Joseph H. Jackson,..........................New York. J. Thomas Spriggs, . . ’ . . . . New York. Edward Mills,...............................Ohio. Wm. G. M. Davis,............................Florida. Courtland Cushing, .........................Indiana. John T. Hoffman,............................New York. Alexander Grailhe, . ' . . . . . Louisiana. J. N. Platt, . ..........................New York. W. Claude Jones,............................Missouri. James Raymond,..............................Maryland. Walter Rutherford,..........................New Jersey. Wm. W. Boyce,...............................South Carolina. James H. Thompson,..........................Ohio. Wm. Henry Norris,...........................Maryland. Isaac N. Arnold,.............................Illinois. Rufus P. Spalding,..........................Ohio. John H. Handy,..............................Maryland. James B. Everhart,..........................Pennsylvania. Allen T. Wilson,............................District of Columbia. Abraham Becke, ....... New York. Edward Dickinson,...........................Massachusetts. Tappan Wentworth, . . . . . . Massachusetts. Theodoric Romeyn Westbrook,.... New York. F. W. Hughes,..................................Pennsylvania. J. A. Barlow,...............................Maryland. George Sedgwick,............................Michigan. J. W. Scudder,.......................... . New Jersey. Annis Merrill,..............................California. Andrew J. Cutler,...........................New York. James J. Ring,..............................New York. W. P. Harris,...............................Mississippi. viii LIST OF ATTORNEYS AND COUNSELLORS. R. C. Martin, New York. Benj. C. Barroll, Maryland. William Fullerton, New York. Mortimer M. Jackson, Wisconsin. George A. Starkweather, .... New York. John C. Starkweather, Wisconsin. Abraham H. Sherman, New Jersey. Isaac A. Velplanck, New York. Alex. D. Fraser, Michigan. William Gray, Michigan. Robt. P. Toms, Michigan. Sidney T. Fairchild, New York. B. C. Thayer, . New York. C. V. Traphagen, . . . . New Jersey. Virginius H. Joy, Louisiana. Benj. Pringle, New York. John Ganson, New York. Luther R. Marsh, ...... New York. A TABLE OF THE CASES REPORTED IN THIS VOLUME. [The references are to the Star (*) pages.] PAGE. Adams v. Otterback ........ 539 Anderson et al. v. Bock . . . . . . . 323 Arkansas, State of, Curran v. ..... 304 Bennet, Carter v. . . ...............354 Bevins et al. v. Ramsey et al. . . . . . . 179 Bispham v. Price ........ 162 Bock, Anderson et al. v. . . . . . . 323 Brooks et al. v. Fiske et al. . . . . . . 212 Broome v. United States.......................143 Burden, Corning et al. v......................252 Carter v. Bennet..............................354 Corning et al. v. Burden......................252 Corning v. Troy Iron and Nail Factory . . . .451 Coxe, Wylie v.................................415 Curran v. State of Arkansas...................304 D’Auterieve et al., United States v. ... . 14 Davenport’s Heirs, United States v...... 1 Davis et al., Garrow et al. v.................272 Dawson et al., United States v................467 Delauriere v. Emison........................ 525 Denmead, Winans v......... 330 Den v. Jersey Company ....... 426 Ducros et al., United States v. . . . . . .38 Ely et al., Smith v.....................* 137 Emison, Delauriere v. ....... 525 Eyre et al. v. Potter et al. ..... . 42 X TABLE OF CASES REPORTED. PAGB. Fiske et al., Brooks et al. v.............. .212 Foley v. Harrison ........ 433 Forsyth v. Reynolds et al. . . . . . . 358 Garrow et al. v. Davis et al. . . . . . . 272 Gibson v. Murray . . . . . . . .421 Hanna et al., Rockhill et al. v. . . . . . 189 Harrison, Foley v. . . . . . • . . 433 Jersey Company, Den v. ...... 426 Kanouse v. Martin ........ 198 Kearney et al.-v. Taylor et al. . . . . . 494 Kneeland et al., Walworth v. ...... 348 Livingston et al. v. Woodworth et al. . . . . 546 Magniac et al. v. Thomson ....... 281 Martin, Kanouse v. ....... 198 Mayer, Phelps v. . . . . . . . . 160 McDonogh’s Executors v. Murdoch .... 367 Michigan Central R. R. Co., Northern Indiana R. R. Co. v. 233 Morse et al., O’Reilly et al. v. . . . . . 62 Murdoch et al., McDonogh’s Executors v........367 Murray v. Gibson.................... . . 421 Northern Indiana R. R. Co. v. Michigan Central R. R. Co. 233 O’Reilly et al. v. Morse et al................ 62 Otterback, Adams v. . . . . . . . . 539 Patterson, United States v. ..... 10 Phelps v. Mayer . . . ... . . 160 Potter et al., Eyre et al. v. . ... . . 42 Price, Bispham v. ....... 162 Ramsey et al., Bevins et al. v. . . . . . 179 Reynolds et al., Forsyth v. .....’. 358 Rockhill et al. v. Hanna et al. . . . • . 189 Roselius et al., United States v. . . . . . . * 31 Same v. Same ....... 36 TABLE OF CASES REPORTED. xi PAGE. Smith et al. v. Ely et al....................137 Taylor et al., Kearney et al. v..............494 Thomson, Magniac et al. v. ...... 281 Troy Iron and Nail Factory, Corning v........451 United States, Broome v........ 143 United States v. D’Auterieve et al........... 14 United States v. Davenport’s Heirs.............1 United States v. Dawson et al................467 United States v. Ducros et al.................38 United States v. Patterson ...... 10 United States v. Roselius et al...............31 Same v. Same..................................36 Walworth v. Kneeland et al................. 348 Winans v. Denmead............................330 Woodworth et al., Livingston et al. v. . . . . 546 Wylie v. Coxe................................415 A TABLE OF THE CASES CITED IN THIS VOLUME. [The references are to the star (*) pages.] A. PAGE. Abbott v. Amer. Hard Rubber Co..... 4 Blatehf., 489............. 233n Adams v. Dyer........... 8 Johns. (N. Y.), 350 .................. 195 Agawam Co. v. Jordan......................... 7 Wall., 583 ...... 62n Akin v. Bemis..............■....... 3 Woodb. & M., 349.......... 347 Allen v. Blunt............................... 3 Story, 742 ...... 228 Amer. Bell Telephone Co. v. Spencer.. 8 Fed. Rep., 512 .......... 63n Ames v. Howard............................... 1 Sumn., 482 . 223, 341 Armstrong v. Treasurer of Athens County............................. 16 Pet., 281.......... 321 Atlantic &c. Tel. Co. v. B. & O. R. R. Co................................. 46 Superior (N. Y.), 387 . 233a Aylwin v. Bray............................... 2 Younge & J., 518n. 557 B. Bacon v. Robertson.............. 18 How., 486 ...... 304n Bank v. Bossieux............................. 4 Hughes, 408 .... 304n Bank of Augusta v. Earle........ 13 Pet., 520 ........ 413 Bank of Kentucky v. Wistar. ........ 3 Pet., 431.................. 309 Bank of United States v. Devereux... 5 Cranch, 61................. 251 Bank of United States v. Planters’ Bank....................................... 9 Wheat., 904 ...... 309 Baptist Association v. Smith................. 3 Pet., 486 ........ 414 Baring v. Dabney............................ 19 Wall., 9 ....... 304n Barney v. Baltimore City..................... 6 Wall., 280 ..... 233n Beverly v. Burke............................. 9 Ga., 440 ......... 329 Bexwell v. Christie................ Cowp., 396................. 519 Birdsall v. Coolidge......................... 3 Otto, 70 ....... 547n Bischoff v. Wetherel......................... 9 Wall., 815 ..... 252n Blanchard v. Putnam.......................... 8 Wall., 425 ..... 252n Blanchard v. Sprague......................... 3 Sumn., 540.118, 224, 341 Bloxam v. Elsee.............................. 1 Car. & P., 558.... 223 Boyd v. Barringer........................... 23 Miss., 270........ 424 Briscoe v. Bank of Kentucky........ 11 Pet., 257 .............309, 318 Bronson v. Chappell......................... 12 Wall., 681 ..... 162n Bronson v. Kinzie............................ 1 How., 311.....310, 319 Brookbank v. Smith...................... 2 Younge & Col., 58..... 178 Brown v. Clarke.............................. 4 How., 4......... 160n Brown v. Evans............................... 8 Sawy., 510. ..... lOn Bruce v. State of Maryland. 11 Gill & J. (Md.), 382............... 156 Bucher v. Fitchburg R. R.............131 Mass., 157 ........ 421n Burden v. Winslow..................... 15 How., 252.............. 342 Burdett v. Estey ............................ 4 Bann. & A., 22 .. 63n TABLE OF CASES CITED. xiii PAGE. Burdett v. Estey.................... 5 Bann. & A., 312 ............ 547n Burke v. Partridge................. 58 N. H., 351 ................. 330n Burns v. Ledbetter................ 56 Tex., 283 .................. 451n Burr v. Duryee...................... 1 Wall., 576..........113n, 252n C. Calvin v. Buckle.................... 8 Mees. & W., 680.......... 179 Canter v. Ocean Ins. Co............. 1 Pet., 511............ 466 Carpenter v. Shimer................ 24 Hun (N. Y.), 465 ........... 421n Chace v. Vasquez................... 11 Wheat., 429.............. 467 City of Elizabeth v. Pavement Co.. 7 Otto, 139 .................... 547n Clapp v. Peterson..................104 Ill., 31.................... 304n Clark v. Mathewson................. 12 Pet., 165................ 208 Coiron v. Millaudon................ 19 How., 113................... 233n Collins v. Thompson................ 22 How., 246 ........... 42n, 272n Commercial Bank v. Buckingham .... 5 How., 317n..................... 355n Conant v. Jackson ................. 16 Vt., 335 .................... 42n Cookendorfer v. Preston............. 4 How., 317............544, 545 Copis v. Middleton.................. 2 Madd., 409.................... 60 County of St. Clair v. Livingston. 23 Wall., 68 .................... 426n Crowell v. Randell................. 10 Pet., 392................ 321 D. Darrington v. Bank of Alabama..... 13 How., 12...............309, 318 Davis v. Gray...................... 16 Wall., 221 ................. 304n Davis v. Palmer..................... 2 Brock., 309..........343, 345 Davoll v. Brown..................... 1 Woodb. & M., 53 ......... 341 Dean v. Mason...................... 20 How., 203 ............... 547n D’Auterive v. United States........ 11 Otto, 700 ................... 14n DeCastro v. Brett................. 56 How. (N. Y.) Pr., 484.... 162n Den v. Wright....................... 1 Pet. C. C., 64 ......... 208 DePontalba v. New Orleans........ 3 La. Ann., 660........406, 410 Dodds v. Wilson..................... 1 Treadw. (S. C.) Const., 448.. 42n Doulson v. Matthews................. 4 T. R., 503 .............. 243 Dredge v. Forsyth................... 2 Black, 568 ................. 160n Duke of Rich. v. Mylne............. 17 La., 312................. 410 Dumont v. Fry...................... 12 Fed. Rep., 22............ 416n Dunbar v. Myers..................... 4 Otto, 194................... 121n Duvall v. Choppin.................. 15 La., 566 ................ 328 E. Earle v. Sawyer..................... 4 Mason, 1.................... 215n Eddy v. Dennis...................... 5 Otto, 569................... 330n Electric Telegraph Company v. Brett . 10 C. P........................ 110 Ellis v. Prevost................... 19 La., 251 ................ 329 Emmerson v. Fox..................... 3 La., 183 ................ 329 Evans v. Eaton...................... 7 Wheat., 434 ............. 215 Ewing v. Burnet.................... 11 Pet., 41.................... 329 Eyre v. Potter.................... post, 42 ........................ 272n F. Farnam v. Brooks.................... 9 Pick. (Mass.), 212......... 42n Farrington v. Tennessee............. 5 Otto, 687 .................. 304n Finlay v. King...................... 3 Pet., 377................ 412 Fisher v. Cockerell................. 5 Pet., 248................ 210 Foley v. Hill....................... 1 Phill., 399 .............. 178 Foss v. Herbert..................... 2 Fish. Pat. Cas., 31......... 215n Foster v. Foster................. 129 Mass., 565 ............... 494n XIV TABLE OF CASES CITED PAGE. Foster v. Jackson.................. Hob., 52 ................196, 300. Foster v. Vassall................... 3 Atk., 589 .............. 243 Fraser v. Ritchie................... 8 Bradw. (Ill.), 559..... 304n Furlong v. State................... 58 Miss., 735............. 421n G. Gage v. Herring.................... 17 Otto, 646 ............... 63n Garrow v. Davis.................. post, 272..................... 42n Garrett v. Beaumont................ 24 Miss., 377.............. 424 Gates v. Fraser.................... 6 Ill. App., 229 ......... 162n Gaussen v. United States............ 7 Otto, 592 ............... 143n Geiger v. Union Mut. Life Ins. Co.. 1 N. Y. City Ct. Rep., 237... 198n Gill v. Wells...................... 22 Wall., 28................ 212n Gordon v. Longest.................. 16 Pet., 97................. 208 Gordon v. Ogden..................... 3 Pet., 33.............. 208 Gottfried v. Phillip Best Brewing Co. . 5 Bann. & A., 35.........212n Gould v. Rees...................... 15 Wall., 194............... 212n Grant v. Raymond.................... 6 Pet., 218................ 341 Gratz v. Cohen ................... 11 How., 1.................. 42n Green v. Biddle..................... 8 Wheat., 1................ 319 Green v. Liter...................... 8 Cranch., 229 ............ 208 . Griffiths v. Sprattey............... 1 Cox, 383................. 60 H. Hallett v. Collins.................. 10 How., 174.............. 42n Hamilton v. Hamilton................ 18 Pa. St., 20.............. 179 Hastings V. Brown................... 1 Ell. & B., 453 .......... 215 Haworth v. Hardcastle .............. 1 Webs. Pat. Cas., 484....... 341 Hawthorn v. Calif................... 2 Wall., 21 .............. 304a Henen v. B. & O. R. R. Co........... 17 W. Va., 1.............. 198n Hide & Leather &c. Co. v. Amer. Tool &c. Co. ......................... 4 Fish. Pat. Cas., 284 ... 62n Hightower v. Thornton............... 8 Ga., 493............308, 312 Hill v. Whitcomb................... 1 Bann. & A., 38.......... 416n Himely v. Rose...................... 5 Cranch, 313.............466 Hogg v. Emerson................... 11 How., 587............... 215n Hotchkiss v. Greenwood............. 11 How., 249.................. 345 Howard v. Castle.................... 6 T. R., 642.............. 519 I. Inglee v. Coolidge................. 2 Wheat., 363................ 210 J. Jaques v. Withy .................. IT. R., 557.................. 196 Johnson v. Brewers’ Fire Ins. Co... 51 Wis., 582 .............. 198n Jones v. Foreman................... 66 Ga., 381 ............. 198n Judson v. Cope...................... 1 Bond, 327 .............. 62n Juhr v. Pratt....................... 1 Webs. Pat. Cas., 103.... 131 K. Kerrison v. Kerrison............... 60 How. (N. Y.) Pr., 51.... 198n King v. Leighton .................. 22 Hun. (N. Y.), 419....... 162« Kneiss v. The Bank.................. 4 Wash. C. C., 19......... 131 Knight v. Marjoribanks............. 11 Beav., 322 ............. 175 Knowell, Ex parte......■............. 13 Yes., 193.............. 196 TABLE OF CASES CITED. xv k. PAGE. Ladd v. Taylor...................... 3 Woodb. & M., 325 ....... 198n Lancey v. Maine Central R. R. Co. ... 72 Me., 34................ 162n LeRoy v. Tatham................... 14 How., 156........62n, 117, 342 Lennox v. Roberts................... 2 Wheat., 373.............. 311 Lessieur v. Price.................. 12 Pet., 75................ 447 Little v. The Bank................. 14 Mass., 443 .............. 197 Lord Cranstown v. Johnson .......... 3 Ves., 182 .............. 243 Lord Portarlington v. Soulby........ 3 Myl. & K., 104........... 243 Losh v. Hague....................... 1 Webs. Pat. Cas., 207..... 345 Louisville R. R. Co. v. Letson.... 2 How., 497.................. 248 M. McClurg v. Kingsland............ 1 How., 204................ 131 McCracken v. Hayward................ 2 How., 608 ........ 310, 319 McDonogh v. Millaudon............... 3 How., 693................ 31 McKenney v. Carroll................ 12 Pet., 66................. 321 McManus v. Standish............... 1 Mack., 149.............. 416n McMillen v. Rees.................... 5 Bann. & A., 273.......... 63n McPherson v. Cox.................... 6 Otto, 404 .............. 416n MacRay v. Jackman.................. 12 Fed. Rep., 618.......63n, 252n Magic Ruffle Co. v. Elm City Co... 2 Bann. & A., 158 .... .... 547n Magniac v. Thompson................. 7 Pet., 348................ 281 Martin v. Hunter................... 1 Wheat., 355.............. 466 Martin v. Waddell.................. 16 Pet., 367 ...........426, 432 Massie v. Watts..................... 6 Cranch, 148.............. 243 Matthews v. Skates.................. 1 Fish. Pat. Cas., 602..... 62n Maury v. Mason..................... 8 Port. (Ala.), 211....... 179 May v. LeClaire.................... 11 Wall., 217............ 416n Mays v. Fritton.................... 20 Wall., 418.............. 160n Merch. Nat. Bank v. Jefferson County. 1 McCrary, 365 ........... 304n Merriweather v. Garrett............ 12 Otto, 530; 1 Morr. Tr., 384.. 304n Milligan &c. Glue Co. v. Upton....... 1 Bann. & A., 500......63m, 330n Mills v. Bank of United States.... 11 Wheat., 430.............. 545 Mills v. Stoddard................... 8 How., 345................ 538 Miner v. Dupont.................... 2 Wash. C. C., 463 .......... 208 Mitchell v. Tilghman............... 19 Wall., 392 ... ......... 119n Morgan v. Morgan................... 12 Wheat., 290.............. 208 Moore v. Lobbin................... Miss. Supt. Ct. Ms........... 424 Morley v. Lord Hawke................ 2 Younge & J., 520 ........ 557 Morrison v. Shuster................. 1 Mack., 195 .............. 42n Mumma v. Potomac Co................. 8 Pet., 281........308, 310, 311 Muns v. Dupont...................... 2 Wash. C. C., 463 ....... 198n Murray v. Hoboken Land &c. Co.....18 How., 284 ................. 433n N. Nathan v. Whitlock.................. 3 Edw. (N. Y.),215......... 308 Nat. Trust Co. v. Miller............ 6 Stew. (N. J.), 163 ..... 304n Neilson v. Harford.................. 1 Webs. Pat. Cas., 341....... 342 Nevitt v. Bank of Port Gibson..... 6 Sm. & M. (Miss.), 513.. .308, 311 New Amer. File Co. v. Nicholson File Co................................ 8 Fed. Rep., 820 .......... 63n New Orleans v. United States...... 10 Pet., 662 ................. 410 Newton v. Commissioners............ 10 Otto, 557 ............... 304n Nicoll v. Amer. Ins. Co............. 3 Woodb. & M., 530........ 160n Noyes v. Cooper.................... 5 Leigh (Va.), 186 ........ 302 O. Odiorne v. Denney................... 3 Bann. & A., 291 ......... 63n Ogle v. Turpin...................... 8 Bradw. (Ill.), 455...... 451n XVI TABLE OF CASES CITED PAGE, Okill v. Whitaker................... 1 DeG. & 8., 83........... 177 Owing’s Case........................ 1 Bland (Md.), 370........ 42n P. Palmer v. Gatling Gun Co............ 8 Fed. Rep., 516.......... 63a Palmyra, The....................... 10 Wheat., 502............ 467 Parker v. Haworth................... 4 McLean, 372 ............... 342 Parker v. Stiles................... 5 McLean, 44............. 62n Pearl v. Ocean Mills................ 2 Bann. & A., 475........ 330n Penn v. Lord Baltimore.............. 1 Ves., 444 .............. 243 People v. Ashburner................ 55 Cal., 523 .............. 367n Perin v. Cary..................... 24 How., 505 ............. 367n Perry v. Starrett................... 3 Bann. & A., 489......... 63n Pollard v. Hagan.................... 3 How., 212 ............. 426n ' Porter v. School Directors....... 18 Pa. St., 144.......... 179 Postmaster General v. Norvell...... Gilp., 106..............143n, 155 Prevost v. Martel.................. 10 Rob. (La.), 512........ 414 Price v. Berrington................ 7 Eng. L. & Eq., 254 ...... 56 Puett v. Beard..................... 86 Ind., 174...............416n R. Raffity v. King..................... 6 Law Jour., 93........... 557 R. R. Bank of Vicksburg v. Slocum .. 14 Pet., 60............... 249 Railroad Co. v. Howard.............. 7 Wall., 410 ............ 304n Railroad Co. v. Koontz........... 14 Otto, 14.............. 198n Railroad Co. v. Mississippi........ 12 Otto, 136; 1 Morr. Tr., 50 ... 198n Ransom v. Keys...................... 9 Cow. (N. Y.), 128 ...196, 197 Read v. Frankfort Bank ............ 23 Me., 318................ 311 Reed v. Marsh...................... 13 Pet., 153...............210 Reedy v. Scott..................... 23 Wall., 367 ........... 212re Renner v. Bank of Columbia......... 9 Wheat., 587............... 545 Roberts v. Cooper.................. 20 How., 481.............. 466n Root v. Railway Co................. 15 Otto, 194 ............. 547n Rubber Co. v. Goodyear............ 9 Wall., 795........252n, 448n, 547n Rundle v. Delaware & Raritan Canal Co................................. 14 How., 95 .......... 250 Runyon v. Coster................... 14 Pet., 122...............413 Russell v. Allen................... 17 Otto, 169.............. 367n Russell v. Cowley.................. 1 Webs. Pat. Cas., 470....... 342 Ryan v. Goodwin..................... 3 Sumn., 514.............. 223 S. Sanger v. Sargent................... 8 Sawy., 94 ............. 433n Santa Maria, The................... 10 Wheat., 431............. 466 Sawyer v. Hoag.................... 17 Wall., 621 ......... 304n Sawyer v. Miller................... 12 Fed. Rep., 727 ........ 330n Sawyer v. Upton..................... 1 Otto, 61............... 304n Sayles v. Richmond &c. Co........... 4 Bann. & A., 244 ........ 547 Scammon v. Kimball.................. 2 Otto, 368 ............. 304n Sewall v. Jones . .................. 1 Otto, 183 ............. 330n Seymour v. McCormick............... 19 How., 96.............63n, 121n Seymour v. Osborne................ 11 Wall., 544 ............ 112n Sheppard v. Wilson.................. 6 How., 275............... 161 Sherman v. Clark.................... 3 McLean, 91............. 208 Shields v. Barrow.................. 17 How., 130 .............. 233n Shields v. Ohio..................... 5 Otto, 324 .............. 304n Shipley v. City of Terre Haute..... 74 Ind., 300 ............... 304n Sibbald v. United States........... 12 Pet., 488 .............. 466 TABLE OE CASES CITED. xvii PAGE. Smith v. Ely...................... post, 137 ............... 62n, 63a Smith v. Honey...................... 3 Pet., 469.............. 208 Smith v. Merriam.................... 6 Fed. Rep., 718........... 63a Smith v. State of Maryland......... 18 How., 74 ............... 426n Smith v. Ullman.................... 58 N. H., 190 ............. 494a Snead v. McCoul.................... 12 How., 407............196, 300 Sohn v. Watterson.................. 17 Wall., 600 ............. 421a Somes v. Skinner................... 16 Mass., 358 .............. 42a Spring ». Grey...................... 6 Pet., 151................ 178 Stanton v. Embry.................... 3 Otto, 555...........160a, 416a State v. Doxtater................... 1 Cr. L. Mag., 84.'....... 467a State v. Harris..................... 2 Wis. L. N., 2 ........... 467a Stettheimer v. Killip............. 75 N. Y., 282 ............. 162a Stewart v. Mordecai................ 40 Ga., 1.................. 198a Stimpson v. West Chester R. R..... 4 How., 380 ............... 228 Stoddard v. Chambers................ 2 How., 285................ 538 Strawbridge v. Curtis............... 3 Cranch, 276.............. 248 Sullivan v. Sullivan................21 Law Rep., 531............ 42a Supervisors v. Kennicott............ 4 Otto, 499 .............. 466a Suydam v. Williamson............... 20 How., 438 .............. 160a Swann v. Summers................... 19 W. Va., 131............. 304a Swift v. Whisen..................... 3 Fish. Pat. Cas., 343..... 62a T. T. H. & I. R. R. Co. v. Absend.... 9Bradw. (Ill.), 308.......... 198n Taylor v. Taylor ................... 8 How., 183................ 42a Taylor v. Waters.................... 5 Mau. & Sei., 103 ........ 196 Thomas v. Weeks..................... 2 Paine, 92............... 62n Thompson v. Butler.................. 5 Otto, 696 .............. 198n Tilghman v. Proctor................ 12 Otto, 722 ; 2 Morr. Tr., 116 180, 268a Toland v. Sprague.................. 12 Pet., 300................ 178 Trapier v. Waldo................... 16 So. Car., 285........... 488a Travellers’ Ins. Co. v. Brouse.... 83 Ind., 66 .................. 304a Tyler v. Galloway.................. 12 Fed. Rep., 569 ......... 63a Tyler v. Maguire................... 17 Wall., 284 .......... 466a Tyrell v. Roundtree....... 7 Pet., 464........................... 492 U. Udell v. Davidson................... 7 How., 769...........348a, 353 Union Nat. Bank v. Douglass....... 1 McCrary, 90 ............... 304a Union Paper Bag &c. Co. v. Pultz & W. Co................................. 3 Bann. & A., 410..... .... 330a Union Paper Collar Co. v. White... 2 Bann. & A., 64; 11 Phil. (Pa.), 481....................... 63a United States v. Berry............. 2 Cr. L. Mag., 187........ 467a United States v. Breitling..‘.......20 How., 254 .............. 160a United States v. Bridleman.......... 2 Cr. L. Mag., 673........ 467a United States v. Clarke............. 8 Pet., 436 ............... 8 United States v. Constant.......... 12 How., 437 ............... 14a United States v. Davenport........ post, 1....................... 12 United States v. D’Auterive........ 10 How., 610.............38, 41 United States v. Delespine......... 15 Pet., 319.................. 7 United States v. Ducros........... post, 38...................... 14a United States v. Gibert............. 2 Sumn., 22 .............. 160a United States v. Huertas............ 8 Pet., 475 ................. 7 United States v. Huertas............ 8 Pet., 709 (App.)........... 7 United States v. Innerarity........ 19 Wall., 597 .............. 10a United States v. Jackalow........... 1 Black, 486.............. 488a United States v. Kan-gi-shan-ci... 14 Chic. L. N., 83........... 467n V zviii TABLE OF CASES CITED. PAGE. United States v. LeBaron........... 19 How., 76 .............. 143n United States v. McBratney......... 14 Otto, 621 ............. 467n United States v. McCullough........ 13 How., 216............... 14n United States v. Moore............. 12 How., 209....In, 9, 14n, 36, 37 United States v. Percheman.......... 7 Pet., 51................. 7 United States v. Perot.............. 8 Otto, 429................ 7n United States v. Philadelphia...... 11 How., 609............... 14n United States v. Pillerin.......... 13 How., 9............. 14n, 37, United States v. Railroad Co....... 17 Wall., 335 ............ 367n United States v. Reynes............ 9 How., 127.......8, 14n, 31, 34 United States v- Roselius........... post, 31 & 36.............. 14n United States v. Stansbury.......... 1 Pet., 573............... 301 United States v. Sutter............ 21 How., 175.............In, lOn United States v. Vallejo............ 1 Black, 555 ............ In United States Bank v. Deveaux..... 5 Cranch, 61................. 249 United States v. Dandridge......... 12 Wheat., 64.............. 155 V. Vaughn v. Barclay................... 6 Whart. (Pa.), 392 ....... 243 Vaughn v. E. Tenn. &c. R. R. Co... 2 Bann. & A., 542; 1 Flipp., 626 ..................... 421 n Veazie Bank v. Fenno................ 8 Wall., 553 ............ 317n Vidal v. Girard..................... 2 How., 127 ............. 367n Vigers v. Aldrich........,.......... 4 Burr, 2483.............. 196 Vint v. King........................ 2 Am. L. Reg., 712........ 42n W. Waterman v. Haskins................ 11 Johns. (N. Y.), 228 .... 195 Waters v. Barral.................... 2 Bush (Ky.), 598.... .... 42n Watkins v. Holman.................. 16 Pet., 25................ 243 Watts v. Kinney..................... 6 Hill (N. Y.), 82 ....... 243 Wendrun v. Parker................... 2 Leigh (Va.), 361........ 301 West. Union Tel. Co. v. Horack ...... 9 Bradw. (Ill.), 311..... 198n White v. Hall.................... 12 Ves., 323 ............... 243 White v. Holt...................... 2 W. Va., 807............ 198n White v. White..................... 7 Gill & J. (Md.), 208 .... 243 Wicker v. Hume................... 14 Beav., 509...........406, 414 Williams v. Bankhead............... 19 Wall., 563 ............ 233n Williams v. Criteris.............. Cro. Jac., 136. .............. 300 Winans v. Denmead................. post, 342.................. 268n Winans v. New York & Erie R. R. Co. 21 How., 88 ............... 252n Winans v. Providence R. R. Co..... 2 Story, 412............... 345 Winans v. Schnectady &c. R. R. Co. 2 Blatchf., 280........... 215n Wise v. Col. Turnpike Co............ 7 Cranch, 276.............. 208 Wood v. Dummer...................... 3 Mason, 308 ............. 308 Woodworth v. Stone.................. 3 Story, 749 ............. 228 Wright v. Petrie .,................. 1 Sm. & M. (Miss.) Ch., 319 308, 311 Wright v. Tebbitts.................. 1 Otto, 254 ............. 416n Wright v. Wells................... Pet. C. C., 220 ............ 198n Wyeth v. Stone...................... 1 Story, 270...........118, 223 Y. Yale Lock Manuf. Co. v. Scoville Manuf. Co........................... 5 Bann. A., 529........... 63n THE DECISIONS OF THE SUPREME COURT OF THE UNITED STATES, AT DECEMBER TERM, 1853. The United States, Appellants, v. Samuel Davenport’s Heirs. Two grants of land in the country known as the neutral territory lying between the Sabine River and the Arroyo Hondo, confirmed, namely, one for La Nana granted in 1798, and the other for Los Ormegas granted in 1795. These grants were made by the commandant of the Spanish post of Nacogdoches, who at that time had power to make inchoate grants. In both cases the grants had defined metes and bounds, and the grantees were placed in possession by a public officer, and exercised many acts of ownership. The evidence of the grants was copies made by the commandant of the post, and also copies made by the land-office in Texas. These copies, under the circumstances, are sufficient.1 At the date of these grants, it was necessary to obtain the ratification of the civil and military Governor before the title became perfected. This not having been done in the present case, the title was imperfect, although the petition alleges that it was perfect, and the District Court had jurisdiction under the Acts of 1824 and 1844. But the District Court ought not to have decreed that floats should issue where the United States had sold portions of the land, because these vendees were not made parties to the proceedings.2 This was an appeal from the District Court of the United States for the Eastern District of Louisiana, under the Acts of 1824 and 1844, so often referred to in cases previously reported. The facts of the case are recited in the opinion of the Court. It was argued by Mr. Cushing (Attorney-General) on the part of the United States, and by Mr. Baldwin and Mr. John-son, with whom was Mr. Coxe, on behalf of the appellees. The points made on the part of the United States were, 1 Cited. United States v. Sutter, 21 How., 175; United States v. Vallejo, 1 Black, 555. ft Vol. xv.—1 2 S. P. United States v. Moore, 12 How., 209. 1 1 SUPREME COURT. United States v. Davenport’s Heirs. I. That the court below had no jurisdiction, and that the decrees are therefore nullities. These grants were complete titles, requiring nothing more to be done to perfect them ; and the cases are full of proof, offered *by the claimants, to show that the grants were ‘■'J perfect grants. But the act of 1824 applies only to cases of incomplete titles, to cases protected by the treaty of 1803, “and which might have been perfected into a complete title, under, and in conformity to, the laws, usages, and customs of the governments under which the same originated, had not the sovereignty of the country been transferred to the United States.” 1 Land Laws, 385. The point, it is conceived, is decided in the case of the United States v. Reynes, 9 How., 144, bottom of page, and 145. II. That there is no sufficient evidence of the execution of the grants by Fernandez and Gaudiana. III. That, even if their execution is proved, then they are void ; because Fernandez and Gaudiana had no authority to make such large grants. Laws for the sale and distribution of lands. 2 White’s Rec., p. 48 to 55; Royal Ordinance of 13th October, 1749, Id., 67; Royal Ordinance of 1754, Id., 62; O’Reilly’s and Gayoso’s Regulations, Id., 229, 231. IV. That even if their execution is proved, then the grants are void, because no lands were severed from the public domain by surveys, giving a certain location previous to the treaty of 1800 or even 1803, and the descriptions in the grants are so vague, indefinite, and uncertain, that no location of the lands embraced in them can be given. United States v. Miranda, 16 Pet., 156 to 160 ; 15 Pet., 184, 215, 275, 319 ; 10 Pet., 331; 3 How., 787; 5 How., 26; United States v. Boisdore's heirs, 11 How., 63; Lecompte n. United States, Id., 115. V. That the claimants are not within the provisions of the act of 1824, and there are not the proper averments in their petitions to show that they are entitled to its benefits. The counsel for the appellees made the following points: — 1. The territory within which both of these grants were situate was, at their respective dates, within the boundaries of Texas, (the Arroyo Hondo being the eastern boundary,) and subject to the dominion and control of the command-ancy at Nacogdoches, so far as related to the granting of lands. 2. The civil and military commandants at that post were, ex officio, lieutenant-governors, and had authority to grant lands within their province or department. 3. These grants were made by them in manner stated in the petitions, and were in conformity with the laws, usages, 2 DECEMBER TERM, 1853. 2 United States v. Davenport’s Heirs. and customs of Spain, which then existed in the province of Texas and at the post of Nacogdoches. 4. These grants gave to the grantees therein named, and • to their legal representatives, a good title to the premises in them respectively described. *5. The plaintiffs, in these suits, have shown them-selves, by a regular deduction of title, the owners of *-the William Burr and Samuel Davenport interests in both tracts; and are, therefore, entitled to recover. Jfr. Johnson, in his argument, said that the United States had not denied the existence of the original grants. As to the allegation that the lands were not severed from the royal domain, if the grant was capable of being located, it need not be actually severed. Glenn n. United States, 13 How., 250. This grant can be located. A centre being given, a line must be run from it two leagues to the north and two to the south ; then from each end, two east and two west; then close the survey. The record shows that the centre tree existed. The other grant can be surveyed also. But it has been said that if these titles are good for any thing, they are complete titles, and therefore not within the jurisdiction of the court under the acts of 1824 and 1844. We are aware that in the case of the United States v. Reynes, 9 How., 127, this court has decided that perfect grants, arising under the treaty of 1803, do not fall within, and are not embraced by, the provisions of this law; and to that decision we bow with respectful deference ; but we ask the court whether the two grants under consideration are of that description? We submit to your honors whether the fact that these grants were made by the civil or military commandants; whether from the fact that they lay within the neutral territory, a territory which, from its earliest history, was in dispute between the commandants at Natchitoches, in Louisiana, and Nacogdoches, in Texas, and which, by the treaty of 1819, falls within the limits of Louisiana; seeing that the grants originated with the commandant in Texas,— are not considerations which will take these cases out of the operation of that decision. Notwithstanding the proof in these cases to the contrary, we submit, whether, under the laws of Spain and of the Indies, stricti juris, these grants, to make them perfect and complete, did not require the sanction of the.Home Department and authority. Such was the construction put upon them by Governor Salcedo himself, the governor of the internal provinces, when “ on his way to San Antonio he collected all the titles he could, in order to have 3 3 SUPREME COURT. United States v. Davenport’s Heirs. them confirmed.” See Colonel Bloodworth’s testimony, Y. and M., O. R., p. 201; N. R., 187. And did not the submission of Davenport & Co. of one of the grants to Governor Salcedo, show that they deemed the sanction of the acts of the military commandant, who made the grant, by a higher authority necessary; and did not the action of that governor show his own *acquiescence in these views, and also J show that the grant was farther embarrassed, by the fact that it lay within the neutral territory? Y. and M., O. R., p. 140; N. R., 130. This, too, is in accordance with the testimony of Benjamin Fields, who swears that he always supposed such sanction necessary; p. 92 and 93; N. R., 89, 90; and are not these views strengthened by reference to the note of the commissioners, p. 43, 44, and 51 ? In which last note the commissioners say :— “It appears to be a historical fact, that the strip of country called the neutral territory was early disputed by the ancient governments of Texas and Louisiana, both alternately assuming and repelling jurisdiction over it; and even after both provinces were united under the dominion of Spain the dispute did not subside, but was kept alive and perpetuated by the local commandants, &c.” These commissioners, in their several reports, after classing these in the first class of claims, recommend them for confirmation; a language which would not have been used in reference to perfect titles, and which, coming from them, is to be regarded as the language of the government itself. 9 Pet. R., 468. These were the grounds on which the District Attorney, in the court below, insisted that the grants were inchoate and not perfect and absolute; and we with great confidence submit to the court, therefore, whether these combined considerations do not clearly distinguish these cases from that of the United States v. Reynes, before referred to ; and if so, whether they are not embraced by the act under which the suits are brought; and in view of the whole case in all its aspects, we, with like confidence, submit whether we are not entitled to recover* 1 How.’, 24; 7 Pet., 51; 10 Pet., 303; Civil Code, title Prescription, 3421, 3437, 3438, 3465, and 3466; 2 White’s Recop., 191; Duff Green’s American State Papers, vol. 3, p. 72 to 83; lb., vol. 4, p. 34-36, 60, 61, 75 ; Executive Document, 33, 2d session, 27th Congress, p. 81. Doe v. Eslava et al. 9 Pet., 449; Doe v. The City of Mobile, Id., 468. “ The authority given to these officers (the register and receiver) was to be exercised only in cases of imperfect 4 DECEMBER TERM, 1853. 4 United States v. Davenport’s Heirs. grants, confirmed by the act of Congress, and not cases of perfect titles; in these they had no authority to act.” Mr. Justice CAMPBELL delivered the opinion of the court. This cause comes before this court by an appeal from a decree of the District Court of the United States for the Eastern District of Louisiana. The appellees filed their petition in that court to establish their claim to a share in two grants of land, situate on the western border of Louisiana, in the country known as the *neutral territory, lying between the Sabine river and ~ the Arroyo Hondo. *- One of these grants was issued by the commandant of the Spanish post at Nacogdoches to Edward Murphy, the 1st day of July, 1798, for a tract of land called La Nana, containing 92,160 acres. The grantee, in the month of November following, conveyed it to the trading firm of William Barr & Co., of which Murphy and Samuel Davenport, the ancestor of the appellees, were respectively members. The evidence of the grant consists in copies of the petition of Edward Murphy to the commandant, dated in February, 1798, for a donation of the tract La Nana, situate to the east of the Sabine river, on the road leading from the town of Natchitoches. The tract asked for forms a square of four leagues upon that road, the centre of which is the prairie adjoining the bayou La Nana. The motive of the application was, that the petitioner might have summer pasturage for his cattle and other animals. The petition was granted by the commandant, and the procurator was ordered to place the grantee in possession. The procurator fulfilled this order the first of August, 1798, by going upon the land with the grantee and in the presence of witnesses, “ took him by the right hand, walked with him a number of paces from north to south, and the same from east to west, and he, letting go his hand, (the grantee,) walked about at pleasure on the said territory of La Nana, pulling up weeds and made holes in the ground, planted posts, cut down bushes, took up clods of earth and threw them on the ground, and did many other things in token of the possession in which he had been placed in the name of His Majesty, of said land with the boundaries and extension as prayed for.” The act of possession was returned to the commandant, who directed “ that it should be placed in the protocol of the post to serve as evidence of the same, and that a certified copy should be given to the person interested.” The conveyance 5 5 SUPREME COURT, United States v. Davenport’s Heirs. of Murphy to his firm bears date in the month of November after; was executed in the presence of the same commandant, and at that time the certified copies offered in evidence, purport to have been made. The other grant is for a tract of land called Los Ormegas, containing 207,360 acres. It is founded on a petition of Jacinta Mora to the commandant of the same post,-in November, 1795, who asked for the concession, that he might establish a stock farm for the raising of mules, horses, horned cattle, &e., and to cultivate the soil. The tract described in the petition contains six leagues square on the river Sabine, the centre of the Western line being opposite to the Indian eross-ing place of that river. *The prayer of the petition J was allowed the same day, and orders given to the procurator to place the petitioner in possession, “ with all the usual formalities of style, and that he should report his proceedings for the more effectual confirmation of the property.” This order was executed in December, 1795, with the same ceremonial that was employed about the order upon the La Nana grant, and the act recording the transaction was placed in the protocol of the post. The paper in evidence is a certified copy made by the commandant of the post in 1806, shortly before the conveyance of the grantee to the firm of William Barr & Co., and in the certificate the copy is declared to have been compared and corrected, and that it is true and genuine. Besides these papers, the plaintiffs procured certified copies from the officers of the land-office in Texas, from copies of the protocol made in 1810, which were submitted by the firm of Barr & Co. to the governor (Salcedo) of one of the internal provinces of New Spain, of which this post was at the time a dependency, apparently for the purpose of obtaining his sanction, either to the authenticity of the document, or to the grant it evinced. This copy of the La Nana papers does not correspond with that of 1798, but that of the Ormegas grant is substantially the same as that made in 1806. The plaintiffs, farther to support their claim, offered evidence satisfactorily explaining why these papers eame to be deposited in the archives of Texas and for the fact of their discovery there. These claims were presented in 1812, to the commissioners appointed to ascertain and adjust claims to lands in the Western District of Louisiana, and have been before the several boards which have been since constituted to effect the same object. The genuineness of the signatures which appear on these, copies of the grant; that they have come from a proper 6 DECEMBER TERM, 1853. 6 United States v. Davenport’s Heirs. depository; that the parties who now hold them have claimed them since the date of their titles; that the lands are fitted for the objects for which they were sought, and have been used for that purpose; that surveys and possession defined their limits, contemporaneously, or nearly so, with the grants, are facts sufficiently established by the evidence submitted to the District Court. No imputation upon the authenticity of the grants occurs in any of the reports or acts of the government, but in the various reports of the Boards of Inquiry they have been treated as genuine, resting upon just considerations, and entitled to confirmation from the equity of the government. The questions now arise, have these grants been legally *established ? Were they within the competency of the persons making them ? Are they binding upon L the faith of the government of the United States ? Does it lie within the jurisdiction of this court to render a decree favorable to the petitioners? The copies made by the Spanish commandant from the protocol, and certified by him to be true and genuine, though dated long after the protocol, would be received in evidence in the courts of Spain, as possessing equal claims to credit as the primordial or originals. For the reason, that those like these are certified by the same officer whose attestation gives authenticity to the protocol, and who is charged to preserve it. 2 Escriche, Die. de leg., 185. And this court for the same reason has uniformly received them, as having the same authority. United States v. Percheman, 7 Pet., 51; United States v. Delespine, 75 Pet., 319, and cases cited. In this case the evidence o,f the loss or destruction of the protocol is satisfactory, and the copies would be admitted as secondary evidence upon well settled principles. The power of the commandants of posts, in the Spanish colonies to make inchoate titles to lands within their jurisdictions has been repeatedly acknowledged by this court. Under the laws and regulations of the Spanish Crown, it is a question of some doubt, whether grants for the purpose of grazing cattle, were any thing more than licenses to use the lands, and whether they were designed to operate upon the dominion. This question was presented in the case of the United States v. Huertas, 8 Pet., 475, upon a grant “with the precise condition to use the lands for the purpose of raising cattle, without having the faculty to alienate the said land by sale, transfer, control of retrocession, or by any other title m favor of a stranger without the knowledge of this government, . was confirmed by a decree of this court against that objection upon the part of the government, 8 Pet., 475-709. 7 7 SUPREME COURT. United States v. Davenport’s Heirs. We consider the question closed by the decision in that case, in reference to the country formerly held by Spain, lying to the east of the Sabine. The land comprehended in these grants at their respective dates was within the unquestioned dominions of the Crown of Spain. The evidence clearly established that the commandants of the posts at Nacogdoches, before and subsequently, were accustomed to make concessions to lands in the neutral territory. This was not at all times an unquestioned jurisdiction, but between the years 1790 and 1800, it seems to have been generally acquiesced in.1 Some of the grants made within that period have been confirmed by the United States. The dispute of this jurisdiction was a dispute raised by other local commandants and had no relation to the controversy *q-| which arose *between the United States and Spain, -• upon the construction of the treaty of St. Ildefonso and the limits of the cession it made. Had these grants been executed after the date of that treaty, they would probably have been controlled by the doctrine of the case of the United States v. Reynes, 9 How., 127, and those of a kindred character. Having been executed by. officers of the Crown of Spain, within its dominions, and in the exercise of an apparently legitimate authority, the presumption is in favor of the rightfulness of the act. No evidence has been given on the part of this government to impugn it, and much evidence has been adduced to uphold and sustain it. The petition of the appellees describes the grants to be complete, wanting nothing to their validity from the authorities of Spain. They have adduced evidence to show that such was the estimation in which they were held by the inhabitants of the district of Nacogdoches. If the court had adopted this conclusion it could have taken no jurisdiction of the case. Its jurisdiction under the act of 1844 is merely to supply the deficiencies in the titles, which were in their incipient state at the termination of the Spanish dominion. The facts pleaded, enable us to determine the case without a reference to these legal conclusions of the parties. In the United States v. Clarke, 8 Pet., 436, this court reviewed the ordinances and regulations of the Crown of Spain for the disposition of its uncultivated lands in the Indies, so as to ascertain in whom, among its officers, the power to grant resided. From the examination, it was concluded that in 1774, it was confided to the civil and military Governors, from whom it 1 Quoted. United States v. Perot, 8 Otto, 429. 8 DECEMBER TERM, 1853. 8 United States v. Davenport’s Heirs. had been for some years previously withdrawn, and that it remained with these officers till a period subsequent to the date of these grants in the territories bordering upon the Gulf of Mexico. The commandants of posts, and other sub-delegates of this officer, were charged only with a superintendence of the incipient and mediate states of the title, but the power of completely severing the subject of the grant from the public domain was uniformly retained by that central jurisdiction. We are, therefore, of the opinion, that these concessions must be treated as imperfect, and dependent upon the sanction of the United States. Upon a full examination of the evidence, we think they are sustained upon principles of equity, and that the decree of the District Court that declares them to be valid, should be affirmed. That portion of the decree which provides that the petitioners be entitled to locate so many acres of land as have at any time been sold, or otherwise disposed of, out of said subdivisions by the United States, or any other unappropriated land ^belonging to the United States, within the State pg of Louisiana, falls within the objections, stated in the *-case of the United States n. Moore, 12 How., 209, and of United States v. McDonogh, at this term, and cannot be maintained. To this extent the decree of the District Court is reversed. The effect of which reversal and of the decree rendered, is to exempt the lands sold or disposed of by the United States from the operation of the plaintiffs claim, and to leave the question of indemnity between the claimant and the political department of this government. ORDER. This cause came on to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is the opinion of this court that the grants set forth in the record are valid grants, and that so much of the decree of the District Court as confirms them should be affirmed; but that such of the lands embraced by the said grants as have been sold or otherwise disposed of by the United States are exempt from the operation of the said grants; and that so much of the decree of the said District Court as authorizes the location of so many acres of the lands embraced in the said grants as have been sold or otherwise disposed of by the United States, on any other unappropriated lands of the United States, within the State of Louisiana, is erroneous, and should be reversed. 9 9 SUPREME COURT. United States v. Patterson. Whereupon, it is now here ordered, adjudged, and decreed, that so much of the decree of the District Court as authorizes the location of so many acres of the land as have been disposed of by the United States on any other unappropriated lands of the United States, within the State of Louisiana, be, and the same is hereby reversed and annulled; and that the lands so sold or otherwise disposed of by the United States, be, and the same are hereby exempted from the operation of the said grants. And it is now here further ordered, adjudged, and decreed, that so much of the decree of the said District Court as declares the said grants to be valid, be, and the same is hereby affirmed. *101 *The United States, Appellants, v. Thomas H. Patterson. A claimant of a share of the grants spoken of in the preceding case, having failed to produce evidence of the right of his grantor to convey to him, cannot have a decree in his favor. A person cannot intervene here who was no party to the suit in the District Court. And even if the practice of this court sanctioned such intervention, there is nothing to show his right to do so in this case.1 This was a branch of the preceding case. The original title and the lands were the same. Patterson claimed under a deed executed on the 21st of November, 1836, by the heirs of William Barr, deceased; but the deed purported to be executed by their attorney in fact, Robert Thompson. The cause was argued by the same counsel who argued the preceding case, with the addition of Mr. Lawrence, who claimed to intervene on behalf of the heirs of Joseph Piernas. Mr. Lawrence, in support of this claim, alleged that,—The petitioners rely upon a conveyance of Jacinto Mora to Barr, Davenport, and Murphey, bearing date the 22d day of July, 1805. This is the only title they set up in their petition to the Ormegas tract. During the progress of the cause they offered in evidence a conveyance from Jacinto Mora to Joseph Piernas, bearing date the 25th of April, 1796, a paper purporting to be 1 Followed. United States v. In- States v. Sutter, 21 How., 182; Brown nerarity, 19 Wall., 597. Cited. United v. Evans, 8 Sawy., 510. 10 DECEMBER TERM, 1853. 10 United States v. Patterson. a conveyance from Piernas to Vitor Portia, dated 30th August, 1804, and a conveyance from Portia to Davenport, dated in the year 1818. All of these instruments of writing are in due form, except the most important one, viz., that purporting to be from Piernas to Portia, which was not authenticated by a notary or other officer, is not taken from any legal depository, nor recorded in the land-office, and in which neither the handwriting of the witnesses nor of Piernas is proved, nor the witnesses produced or their absence accounted for. In short, there is no proof at all of the genuineness of the paper, but it is left for the court to judge of the genuineness of the signature of Piernas. Now, it will be at once perceived that if there were no defect in the chain of title from Piernas to Davenport, this would have been the elder and better title to Davenport as to the Orraegas tract; and yet, though the conveyance to Davenport of Piernas’s interest was in 1818, and this petition was filed in 1845, it is not even alluded to in the petition. It will be seen, from the extract from vol. 3, American State Papers, (Rec. 46,) that as late as 1815-16, Piernas made claim *to this land before the board of commis- r-$-. -< sioners, and no claim was made by Vitor Portia. L In 1824-5 the same land was recommended for confirmation, but was never actually confirmed by Congress. Piernas had in the mean time died, and his heirs were young children, living in poverty and obscurity. (See letter of Hayward, Rec. 172; also Report to Commissioner, Rec. 213.) The heirs of Piernas deny that he ever signed the paper to Portia, and aver that it is entirely fictitious. Full notice of the claim of Piernas was before the court below, for the petitioners introduced his title themselves. It was, therefore, fully’within the competency of the court below, if they perceived, from the record, title in Piernas to the Ormegas tract, and had no legal evidence before them of his having parted with that title,—to have reserved the rights of Piernas’s heirs in their decree ; and it is respectfully submitted, that it is within the power of this court (should the validity of the grant be affirmed) to protect those rights, so far as they appear in the present record. In the case of Cunningham and Ashley, (14 How., 377,) this court interposed meso motu, to save the new Madrid title. Here an older title is introduced. The act of Congress says the court is to decide on evidence brought in by any person, other than the parties to the suit. If so, it is proper to inter 11 11 SUPREME COURT. United States v. Patterson. vene here. The deed from Piernas to Portia had never been recorded, and the court below had no right to receive it. Mr. Baldwin, in reply to Mr. Lawrence, made the following points: — 1. That the great lapse of time raised a strong presumption against this claim. From 24th day of April, 1818, when, as appears by the record, Piernas conveyed his interest in that tract to Samuel Davenport, no claim has ever been set up to this land, either by Piernas or his heirs, until now, notwithstanding they reside in New Orleans, where their suit was tried at great length in the court below. 2. That the claimants under Piernas cannot intervene in this court, it being a court of appellate jurisdiction. 3. That the deed from Piernas, being an ancient deed under the laws of Louisiana, proved itself. 4. That it was regularly proved—the testimony of CrusaL as to the signature of Piernas, having been taken without objection in the court below. 5. That this court will not undertake to settle the rights of parties in interest, but leave them to litigate their rights oq in the court *below, or in the State tribunal; and that J whatever judgment the court might pronounce in this matter, it would not be conclusive between the parties. Mr. Justice CAMPBELL delivered the opinion of the court. This appeal was taken from a decrefe of the District Court of the United States for the Eastern District of Louisiana. The appellee claimed in the District Court a confirmation of the grants for the La Nana and Los Ormegas tracts of land, in which, he asserted an interest as an assignee of the heirs of William Barr, one of the members of the firm of William Barr & Co., in which they had been vested. The questions of law and fact, arising in this case, are the same as those determined in the case of the United States v. Samuel Davenport’’s Heirs, in so far as they concern the validity of the grants. The evidence of the purchase by the plaintiff from the heirs of Barr is not sufficient. No power of attorney appears in the record to Thompson, who made the conveyance to the plaintiff in their name. It is therefore proper that the decree that shall be entered shall be without prejudice to their right, and this opinion is filed in order that this judgment of the court may be understood. The operation of the judgment 12 DECEMBER TERM, 1853. 12 United States v. Patterson. will be, to perfect the title for the benefit of the legal representatives of William Barr. In this cause, as well as in that of the United States v. Samuel Davenport's Heirs, a motion was submitted on behalf of the heirs of Joseph Piernas alleging that a deed from Joseph Piernas to Victor Portia, dated the 30th August, 1804, being a link in the title to the Ormegas grant, wras not sufficiently proven, and suggesting that it was not a genuine^ deed, and praying for leave to intervene in this suit to sustain their rights to this property. The court is of opinion that the motion cannot be allowed. The plaintiff commenced his proceedings to assert his own claims against the United States. Those proceedings can neither benefit nor injure the persons interested in this motion, for they are not parties to the cause. The period for the assertion of a claim under the act of Congress of 17th June, 1844, has expired. Neither in the District Court nor in this court would it be lawful for persons, who failed to avail themselves of the benefit of that act during its operation, to intervene for the purpose of establishing a right under grants like these, after its expiration, in a suit commenced by other persons. In looking through the record, we find no fact to authorize the belief that the heirs of Piernas have any title to the lands *embraced in these grants. If, therefore, it was com- p^g patible with the constitution and practice of this *-Court, for a person to intervene here in a litigation, to which he was no party in the court of original jurisdiction, we find nothing to authorize it in the present instance. The decree will be entered here to conform to that pronounced in the suit of the United States v. Davenport's Heirs, with the direction that the confirmation shall be for the use of the legal representatives of William Barr, deceased. ORDER. This cause came to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is the opinion of this Court that the grants set forth in the record are valid grants, and so much of the decree of the District Court as confirms them, should be affirmed for the use of the legal representatives of William Barr, deceased; but that such of the lands embraced by the said grants as have been sold or otherwise disposed of by the United States, are exempt from the operation of the 13 13 SUPREME COURT. United States v. D’Auterieve et al. said grants—and that so much of the decree of the said District Court as authorizes the location of so many acres of the lands embraced in the said grants as have been sold or otherwise disposed of by the United States on any other unappropriated lands of the United States within the State of Louisiana is erroneous, and should be reversed. Whereupon it is now here ordered, adjudged, and decreed, that so much of the decree of the District Court as authorizes the location of so many acres of the land as have been disposed of by the United States on any other unappropriated lands of the United States within the State of Louisiana be, and the same is hereby reversed and annulled—and that the lands so sold or otherwise disposed of by the United States be, and the same are hereby exempted from the operation of the said grants. And it is now here further ordered, adjudged, and decreed, that so much of the decree of the said District Court as declares the said grants to be valid, be, and the same is hereby affirmed for the use of the legal representatives of William Barr, deceased. *The United States, Appellants, v. Jean Bap-tiste D’Auterieve, Ponponne Le Blanc and Others, Heirs and legal Representatives of Jean Antoine Bernard D’Auterieve, deceased. The heirs of D’Auterieve claimed a tract of land near the river Mississippi, upon two grounds, viz., 1st, Under a grant to Duvernay by the Western or Mississippi Company in 1717, and a purchase from him by D’Auterieve, the ancestor, accompanied by the possession and occupation of the tract from 1717 to 1780 ; and 2d, Under an order of survey of Unzaga, Governor of the province of Louisiana in 1772, an actual survey made, and a confirmation thereof by the governor. With respect to the first ground of title, there is no record of the grant to Duvernay, nor any evidence of its extent. It is, therefore, without boundaries or location; and, if free from these objections, it would be a perfect title, and therefore not within the jurisdiction of the District Court, under the acts of 1824 and 1844. With respect to the second ground of title, if the proceedings of Unzaga be regarded as a confirmation of the old French grant, then the title would become a complete one, and beyond the jurisdiction of the District Court. If they are regarded as an incipient step in the derivation of a title under the 1 See notes to United States v. v. Pillerin, 13 Id., 9; United States v. Reynes, 9 How., 127; United States v. McCullough, Id., 216; United States v. Philadelphia, 11 Id., 609; United States Roselius, post, *31 and *36; United v. Constant, 12 Id., 437; United States States v. Duer os, post, *38. 14 DECEMBER TERM, 1853. 14 United States v. D’Auterieve et al. Spanish government, then the survey did not extend to the back lands which are the property in question, but only included the front upon the river, which was surrendered to the governor in 1780. Neither the upper or lower side line, nor the field-notes, justify the opinion that the survey included the back lands. A letter addressed to Unzaga by the surveyor is so ambiguous, that it must be controlled by the field-notes and map. The neglect of the parties to set up a claim from 1780 to 1821, and the acts of the Spanish government in granting concessions within the limits now claimed, furnish a presumption of the belief of the parties that the whole property was surrendered in 1780.2 This was an appeal from the District Court of the United States, for the Eastern District of Louisiana. The history of the claim is fully set forth in the opinion of the court. It was argued by Mr. Cushing, (Attorney-General,) for the United States, and submitted on a printed argument, by Messrs. Janin and Taylor, for the appellees. The points made on the part of the United States were the following:— 1. That the claim of the petitioners, founded on the alleged grant by the Western Company is not open for discussion, the petitioners having taken no appeal from the decree of the court below, confirming their claim to the extent only of the forty-four arpens of front, and excepting even out of this confirmation the forty in depth on the front granted to the Acadians. But if it were, then every thing relating to that grant and its extent and locality, and what interest D’Auterieve had in it, are so vague and uncertain that it would be impossible to identify and locate the land, and the grant would have been declared void. *2. That D’Auterieve, by accepting the new con- -cessions from the Spanish authorities, thereby waived L all claims under the grant of the Western Company. 3. That the edict of 1728, and the alleged order of O’Reilly reducing the extent of the lands and the granting of them to others, subsequent to the alleged concessions, are acts for which the petitioners can have no relief against the United States, being the acts of competent French and Spanish authorities during the time these powers held the sovereignty of the country. The property, in the enjoyment of which the treaty stipulates that the inhabitants of the ceded territory were to be maintained and protected, was such property as stood recog 2 Further decision, D’Auterieve v. to United States v. Moore, 12 How., United States, 11 Otto, 700. See note 209. 15 15 SUPREME COURT. United States v. D’Auterieve et al. nized by Spain at the date of the treaty, as the private property of the inhabitants. The United States are not bound to recognize what Spain had not recognized. 4. That the evidence in the case shows that this claim was voluntarily given up and surrendered to the Spanish authorities in 1780:, and the long silence from that time until 1836, shows that it had been abandoned by the claimant’s ancestors, and the grants made by the Spanish authorities within the limits of the land claimed, to the Acadians and others subsequent to the surrender, show how they regarded the matter. 5. That there wus no sufficient evidence of the concessions made by O’Reilly and Unzaga such as to enable the court below to take jurisdiction of the claim. None were produced, and there was no evidence of loss or contents. The act of 1824 limits the jurisdiction to claims founded on any grant, warrant, or order of survey. The letter of Unzaga to D’Auterieve is not a concession, and the recital in the certificate of survey of Andry is not evidence of the existence of the concession or of its contents. 6. That there is nothing in the case to authorize the side lines to be run to the Atchafalaya river. It is alleged in the petition that O’Reilly, at the time of his visit to point Coupee in December, 1769, whilst he reduced the front of the grant, allowed the original depth to the river to remain. The first thing to be done is to show that this was the depth of the French grant. There is not a particle of evidence to show that this was the original depth, or to show that O’Reilly sanctioned it. A supposition, even that he could have sanctioned it, is put to flight by the first article of his regulations, made 18th February, 1770, on his return to New Orleans, from his visit, which declares that grants on the borders of the river (the Mississippi) shall be forty arpens in depth. That this was the depth allowed by O’Reilly to D’Auterieve, is corroborated by the sale made by the widow of the latter shortly after his death, which conveys only to the depth of forty arpens. *As to Andry’s plan and certificate of survey, they J say nothing as to the rear boundary being the Atchafalaya, neither do they profess to state that he measured and run the side lines to any distance whatever; he merely marks their direction, without saying how far they run; disregarding the twelfth article of O’Reilly’s regulations. The rear boundary cannot be ascertained from either or both of the plan and certificate of survey, and the lands cannot, therefore, be located, and the alleged concessions of O’Reilly and Unzaga must therefore be declared void, as being vague and uncertain. 16 DECEMBER TERM, 1853. 16 United States v. D’Auterieve et al. If the claimants were entitled to the confirmation of any part of the concessions it would be confined to the lands delineated on Andry’s plan, (which, it will be seen on examination, stretches back from the river only about forty arpens,) because Unzaga in his letter to D’Auterieve states, that he “ approves the survey, conformably to the plan of the surveyor, Don Lewis Andry, dated 12th March, last.” But even this would avail the claimants nothing, for the whole lands appearing on the plan are absorbed by the Acadian grants, excepted from confirmation by the court below, and other Spanish grants in their rear. The brief of Messrs. Janin and Taylor was as follows:— The petitioners in this action seek to obtain the confirmation of a tract of land as described in their petition, extending from within forty arpens of the Mississippi river to the Atchafalaya. Their title to it is asserted to result from a grant made by the “Western Company,” created by the King of France, in 1717, to Paris Duvernay, having four leagues front on the western bank of the Mississippi river, opposite Bayou Manchac, and extending back to the Atchafalaya river. And from the proceedings of the Spanish government in relation to it, after the transfer of Louisiana by France to Spain, under the treaty of 1762, by which the front on the Mississippi was reduced to forty-four arpens, between side lines, the beginning and courses of which were established in 1772, by the proper surveying officer, and approved by the then governor, with the former depth to the Atchafalaya. We shall confine ourselves to a reference to the evidence in the record produced by the petitioners, inasmuch as there can be no question as to the authority of the Western Company to make the grant alleged to have been made to Paris Duvernay, (1 White’s Recop., 641, 642, art. 5; 643, art. 8,) or of the Spanish authorities to recognize the title of the then holder of it to the whole or to a part of the land comprised in it in 1772. The original grant by the Western Company has not been produced, nor indeed any direct written evidence of its existence, or its precise location or extent. *The evidence showing the existence, location, and ~ extent of the grant to Paris Duvernay is, 1st, historical; *--6, documentary; and 3d, parol, and is as follows: Vol. xv.—2 17 17 SUPREME COURT. United States v. D’Auterieve et al. 1st. Historical Evidence. 1st. Mention is made of it in Martin’s History of Louisiana, vol. 1, pp. 205 and 246. In that work it is spoken of as one of the large grants made by the “Western Company” to promote the settlement of the colony, and is described as situated on the right bank of the Mississippi, opposite Bayou Manchac. The arrival of the settlers sent out by Duvernay in or about 1718, to be established on the grant, is related in Martin’s History, (vol. 1, p. 206,) and it is also spoken of by Bernard de la Harpe, in his “ Journale Historique de 1’estab-lissement des Fran^ais a la Louisiana,” p. 142. 2d. Documentary Evidence. 1. The existence of the grant is clearly shown by the descriptions of the contents of different papers found by the public officer, who made an inventory in due form of law of the effects left by Claude Trenonay de Chamfret, at Point Coupee, in Louisiana, on the 10th of July, 1793. 2. Its existence is clearly shown by the following copies obtained from France: 1st. An extract from the archives existing in the office of the Minister of Marine and the Colonies of France, containing a statement of the passengers embarked for Louisiana, on the ship Gironde, on the 30th of September, 1724, in which one of the passengers is described as “ director or manager of the concession belonging to H. Paris Duvernay”; and others are spoken of as workmen attached to the same concession. 2d. Extract from the same archives, containing a statement as to the companies of infantry supported in the province of Louisiana, and of the situation of the inhabitants at each point, dated May, 1724. Mention is here made of the concession of Mr. Paris, and a number of particulars are given with respect to it. 3d. Extract from a general census of the plantations and inhabitants of the colony of Louisiana, from the same office, dated 1st January, 1726. Mention is made in it of the “concession of Mr. Paris Duvernay, at Bayou Goula.” 4th. Extract from the same archives, dated 17th May, 1724. This is an extract from the register “ Comptes des Indes,” and is an order from the directors of the East India *1^-. Company, on *the council of Louisiana, for fifty J negroes, for which Paris Duvernay had paid the sum of 40,000 livres to the company in Paris. 18 DECEMBER TERM, 1853. 18 United States v. D’Auterieve et al. 5th. Copy of a notarial act passed in Paris on the 16th of May, 1729, between Duvernay and others, who were interested with him as partners, in relation to this concession. 6th. Copy of a notarial act passed in Paris, on the 2d of October, 1726, containing the deliberations of the persons then interested in relation to the management of this concession. 7th. Copy of a power of attorney, by notarial act, from Paris Duvernay to Claude Trenonay de Chamfret, dated 18th October, 1731, giving him authority to cancel and annul a previous arrangement, and to take back the plantation and concession. 8th. Copy of contract by notarial act between Duvernay and de Chamfret, 18th October, 1731. 9th. Mention of the copy of a decree putting Claude Trenonay de Chamfret, acting under the power of attorney of Paris Duvernay, in possession of the concession contained in the extract from the inventory of Claude Trenonay de Chamfret, before mentioned. The date of this decree was 16th August, 1733. It is erroneously printed in the transcript, 1783. 10th. Notarial act of donation, made by Paris Duvernay to Claude Trenonay, of the establishment, &c., and to all his rights, by virtue of the concession originally made, &c. This was dated at Paris, 28th July, 1748. 11th. Copies of acts, &c., &c., showing sale by Claude Trenonay de Chamfret to D’Auterieve, of the concession, and the ratification of that sale by Claude Trenonay, by his accepting a note or notes representing a part of the price, and enforcing the payment of them. The act, at page 36, of the transcript, executed by Trenonay, makes mention of his claim against his uncle, Claude Trenonay de Chamfret, for the alienation of property belonging to him; and that at page 37, recites that de Chamfret had given up an obligation of D’Auterieve for the sum of fourteen thousand four hundred and sixty-six livres, the balance of the sale of the plantation at bayou Goula, comprised in the donation to him. In the examination of papers contained in the inventory before referred to, there is one described as the decree of the council, condemning D’Auterieve to pay to Trenonay the amount of his obligation for 14,456 livres. And this brings us to a new epoch. No trace has been discovered of the original grant. If it remained in the hands of the original grantee, it was doubtless soon lost after he, or his heirs, ceased to have any interest in the land comprised in it. Ihe Western Company ceased to exist long before the transfer 19 19 SUPREME COURT. United States v. D’Auterieve et al. *1 QI L°uisiana by France to Spain, in 1769. After Spain J took possession of the Province, O’Reilly, the first Governor, by an arbitrary exercise of power, declared his determination to reduce the front of D’Auterieve, the then owner of the concession, to a front of twenty arpens. There is, however, no written evidence of this fact, but what results from the statement made by Andry, in the proces verbal of his survey. Unzaga, the. succeeding Governor, did not carry out the determination of O’Reilly. He reduced the front on the river, however, to forty-four arpens, but left to D’Auterieve the original depth to the Atchafalaya. This appears from the copy of the proces verbal of the survey made by Andry, under the authority of the Governor General, on the 12th of March, 1772, to be found at page 27, of the printed transcript, and the plan or map representing the same at page 40, of the original transcript, and from the express approval of the survey, proces verbal, and plan, which were laid before him on the 28th of March, 1772, made and given in writing on the 12th of July, of the same year, 1772. There are translations of the material parts of the proces verbal of the survey, made by Mr. Janin, and embodied in a brief presented by him to the land office in 1835 or 1836, at page 21, of the transcript, and a translation of the letter of Unzaga approving it, also embodied in the same brief, at page 22. From these proceedings, three facts are rendered indisputable. 1st. That it was to the knowledge of the Spanish government that a valid grant existed, under the authority of France, for a very large tract of land at the point in question, the title to which at the time vested in D’Auterieve, of which the tract comprised in the lines established by the survey, made a part. 2d. That it had a very wide front on the river; and 3d. That it extended back in depth to the Atchafalaya. The parol evidence of Degruys, as to the existence, location, and extent of the grant, is very clear and distinct. The portions of his deposition relating to these points are in harmony with the proceedings and acts of the Spanish government, as shown in the record. The lines established by the Spanish government, as the boundaries to the land left to D’Auterieve, after 1772, are shown by the following evidence: 1st. By the grant to Delpino, received in evidence, and copied into the transcript, and the survey of the land granted to hipi, which survey was made on the 14th of February, 1772, before the survey made of the land left to D’Auterieve, which was confirmed by the United States to Joseph Hebert, under No. 406. (See confirmation, page 46, of printed transcript.) 20 DECEMBER TERM, 1853. 19 United States v. D’Auterieve et al. Public lands, page—, and is represented as lot or section 48, on the *plot of T. 10, R. No. 13 east, which is con- r*nn tained in the original transcript; and *- 2d. By the grant to An. Maria Dorval, and the survey of the land granted to him, made on the 12th of March, 1772. This was confirmed to Barbre Chlatre, No. 206. (Public Lands, page—.) These two tracts constituted the upper and lower boundaries of the tract left to D’Auterieve, and the lower and upper lines, respectively, determine the direction of the side lines of the claim. D’Auterieve continued in possession of this property up to his death. He entered into a contract for erecting a mill there in 1772. He died there in 1776. D’Auterieve, at his death, left several young children, who were his heirs. After the death of D’Auterieve, his widow, the same year, (1776,) sold six arpens of the front, with the depth of forty arpens. The remainder of the front, to the depth of forty arpens only, was afterwards comprised in an arrangement made by Degruys, with Governor Galvez, as stated in his deposition before referred to. The statement of Degruys is confirmed by the fact that the surveys of the different portions of the front were all made long after the arrangement spoken of by him, (being, in point of fact, made in 1796,) and that it is stated in the proces verbals of the surveys that these lands were those which were contained in the forty arpens from the concession of Mr. D’Auterieve, for the establishment of the Acadian families. (See proces verbal of survey, by Pintado, and forming part of the concession of Mr. Dotrive, which was destined for the establishment of the Acadian families, and “which wTere taken for the establishment of the French Acadian families, from the concession of Mr. Dotrive.” The court is also referred to the brief of Mr. Janin, prepared and filed with the commissioners in 1835 or 1836, which we find copied in the transcript at page 18. Mr. Justice NELSON delivered the opinion of the court. This is an appeal from a decree of the District Court for the Eastern District of Louisiana. The heirs of D’Auterieve filed their petition under the act of Congress of the 17th June, 1844, which provides for the adjustment of certain land claims against the government, setting up a claim to a large tract in the parish of Iberville, on the west bank of the Mississippi river, at a place called Bayou Goula, some thirty leagues above the city of New 21 20 SUPREME COURT. United States v. D’Auterieve et al. Orleans. The decree below is in favor of the heirs, and the case is now before us on an appeal by the United States. *The petition sets out a charter from the King of J France, in August, 1717, by which the province of Louisiana was granted to the Western or Mississippi Company ; and also a grant from that company in the same year, to Paris Duvernay, a wealthy capitalist of France, of a tract of land fronting on the western bank of the Mississippi opposite Bayou Manchac, having four leagues front on the river, and extending back in the rear to the river Atchafalaya. That soon after this, Duvernay fitted out a company of sixty men, under the direction of his agent Dubuisson, all of whom arrived at New Orleans in the spring of 1716, and immediately thereafter settled upon the tract; the settlement was known as the “ Bayou Goula Concession,” the principal establishment being in the neighborhood of the village of the Bayou Goulas Indians. That the settlement was kept up by Duvernay for many years at great expense, and under many difficulties, and contributed materially towards the establishment of the French dominion in Lower Louisiana. The petition further states, that in 1765, Duvernay, through his agent, Tremonay De Chamfret, sold the tract in question to Bernard D’Auterieve, the ancestor of the present claimants, and delivered to him the possession. That in 1769, after O’Reilly had taken possession of the province, on behalf of the King of Spain in pursuance of the treaty of 1762, he gave orders that the Bayou Goula Concession should be reduced from four leagues to twenty arpens front, but that Unzaga, his successor, in 1772, enlarged it to forty-four arpens on the river, and ordered a survey of the same by Luis Andry, the government surveyor, which was made accordingly on the 12th of March, 1772, and approved by the Governor, 12th July, of the same year. D’Auterieve continued to occupy and improve the tract, making it his place of residence, from 1765, the date of his purchase, till his death, 24th of March, 1776. That the widow remained in possession with her children till 1779, when she married Jean Bab-tiste Degruys, who resided at Attakapas, to which place they removed. The petition further states, that about this time, Galvez, the then Governor of Louisiana, desirous of introducing some Spanish families from the Canary Islands as colonists, and to provide a settlement for them, made contracts with various persons for the construction of small houses, and, among others, with Degruys ; who undertook to build a number on the Bayou Goula Concession, and to give up the 22 DECEMBER TERM, 1853. 21 United States v. D’Auterieve et al. front on the river to the use of these colonists, with forty arpens in depth; that he built a number of these houses, and delivered them to the Governor, and was paid for them ; but not in accordance with the agreement. That the government having become engaged in a war *against the province [-#99 of West Florida, the Governor changed his purposes *-in behalf of the Spanish families, and assigned a different location for their accommodation, but subsequently set apart this tract with the cabins erected, to a number of Acadian emigrants, who had been some years previously driven from their ancient possessions in Nova Scotia by the British government. The petition states, that Degruys and his family continued to reside at Attakapas, where they had other property ; that the back land in Bayou Goula Concession, being either low swamp land, or nearly inaccessible, and of little value, was neglected by the family, and especially by Degruys, the head of it, and some portions were subsequently granted to others by the Spanish government, in ignorance of the rights of the ancestors of the present claimants. The petitioners admit that no claim was set up to these back lands, from the time the front was surrendered to Governor Galvez, which must have been about the year 1780, down till 1821 or 1822, when the heirs employed the late Mr. Edward Livingston, as their attorney, to inquire into their claims. They state that the children of D’Auterieve, at the time of his death were under age; that there were four of them; and at the time of the removal of the family from the Concession to Attakapas, the eldest, Antoine, was only fourteen years old, the second, Louis, twelve, the third, Marigny, six ; the fourth, Dubrelet, died in infancy. Antoine died in 1812, leaving four children; Marigny in 1828, leaving no issue; Louis, in 1814, leaving four children. These descendants of DAuterieve have instituted the present proceedings. The widow died in 1811. Degruys, the husband, was living at the commencement of this suit, and has been examined, as a witness, on behalf of the -claimants. These are the facts substantially, as stated in the petition; and the title of the petitioners, as will be seen from the statement, is founded, 1st, upon the grant or concession to Duv-ernay by the Western or Mississippi Company, in 1717, and the purchase from Tremonay de Chamfret, his agent, in 1765, by D’Auterieve the ancestor, together with the possession and occupation of the tract, from 1717 down to 1780, when the family left it, and removed to Attakapas ; and 2d, upon the order of survey of Unzaga, in 1772, the survey made accord-23 22 SUPREME COURT. United States v. D’Auterieve et al. ingly by Andry, and the approval of the same by the Governor in the same year. As it respects the first ground of title, the grant to Duvernay in 1717, no record of it has been produced, and, after a thorough examination of the archives of that date, both at New Orleans and at Paris, and in the appropriate offices for the deposit of such records, none can be found. The only proof furnished is to be found in the historical sketches given * to the public, of the *first settlement of Louisiana -I by the French government, under the direction of the Western or Mississippi Company, together with some documentary evidence relating to the settlement of the plantation by Duvernay, through his agents, such as powers of attorney, and some intermediate transfers of the titles, in the course of the agency. But unfortunately, neither the historical sketches, nor documentary evidence, furnish any information as to the extent of the grant or its boundaries. The several historians of the transactions of the Western Company in Louisiana of that date, concur in stating that agriculture was one of the first, objects of encouragement in the colony; that the company thought the most effectual mode of accomplishing it would be to make large concessions of land to the most wealthy and powerful personages in the kingdom. Accordingly, one of four leagues square, on the Arkansas river, was made to John Law, the famous projector of the company, and its Director-General, together with twelve others in different places in the province, and among them, one on the right bank of the Mississippi, opposite Bayou Manchac, to Paris Duvernay, the grant in question. The extent of these grants is given only in the instance of Law. Duvernay at the time was one of the counsellors of the king, and Intendant of the Royal Military Academy in France. In the course of the first year after the grant was made, he shipped with his agent, Dubuisson, some sixty emigrants, and settled them upon the tract, with the necessary provisions and implements for clearing the plantation, for the erection of cabins, and for husbandry, and in a few years after, 1724, he purchased and sent to Louisiana, some fifty slaves to supply labor upon it. Large sums of money were also expended by him in other improvements. But, notwithstanding the exertions and large expenditures of the proprietor, the establishment turned out unprofitable, became embarrassed through the neglect and dishonesty of the agents, and involved in litigation, so that in 1765 he made a sale of part of it to D’Auterieve, as already stated, and in the next year, 1766, gave the residue and all his interest in the con-24 DECEMBER TERM, 1853. 23 United States v. D’Auterieve et al. cern, to Claude Tremonay, his nephew, he agreeing to indemnify him against any claims or demands arising out of it, and for which he might be liable. Now, as it respects this branch of the title set up, and relied on by the petitioners, there are two objections to their proceedings under the act of 1844, either of which is fatal to a recovery. In the first place, the title, as derived from Duvernay, if still a subsisting one in them, is a complete and perfect one, and consequently not within the first section of that act, which confers the jurisdiction upon this court. The place to litigate it is in *the local jurisdiction of the State by the common-law action of ejectment, or such L other action as may be provided for the trial of the legal titles to real estate. For, although we are not able to speak of the nature or the character of the title from the terms of the grant, in the absence of that instrument, all the evidence which has been furnished in relation to it leads to the conclusion that the full right of property passed to the original grantee. Even the length of possession, which is relied on, lays a foundation for the presumption of such a grant, and cannot therefore avail the petitioners here. And in the second place, the tract claimed as derived from Duvernay is without boundaries or location. The only description that has been referred to, or which we have been able to find, after a pretty thorough search, even in historical records, is that it was a grant of a large tract upon the right bank of the Mississippi river, opposite Bayou Manchac, a point some thirty leagues above New Orleans. In the intermediate transfers and powers of attorney, found in the record, it is referred to as a plantation or concession, known by the name of “ Le Dubuisson,” the name of the first agent, or by the name of “Bayou Goula Village,” the name of an ancient Indian village at that place on the river. We have no evidence of the extent of the concession on the river, or of its depth back, or of any landmarks designating the tract, by which it can be regarded as severed from the public domain. Without, therefore, pursuing this branch of the case further, it is sufficient to say, that no title or claim of title has been made out under the French grant, or concession, to Duvernay, that could have been recognized or dealt with by the court below, under the limited jurisdiction conferred by the act of 1844, and of course no ground for the decree in that court, in favor of the petitioners under it. The title, if any, is a legal one, not cognizable under this act. The next branch of the title set up and relied on by the 25 24 SUPREME COURT. United States v. D’Auterieve et al. petitioners, is that derived from the Spanish government in 1772. It appears that O’Reilly, who first established the Spanish authority in Lower Louisiana in 1769, after the cession by France in 1762, assumed the right to reform and modify several of the large grants that had been made by the old government upon the Mississippi river, and required of the occupants to confine themselves within fixed and determined boundaries. His avowed object was to secure a denser population upon the margin of that river, .especially above New Orleans, with a view to protect the province against the incursions of hostile Indians, and also against the border settlements of the English, in case of a war between Great *25-1 Britain and Spain. Amongst others, *he reduced the J possession of D’Auterieve under the grant to Duvernay, to twenty arpens front on the river. Unzaga, however, who succeeded him as governor of the province in 1772, enlarged it to forty-four arpens front, and ordered a survey of the same by Andry, the public surveyor. This survey was made, returned, and approved by Unzaga in the same year. These acts of O’Reilly and Unzaga have been urged as a confirmation by the Spanish government, pro tanto, of the French grant to Duvernay; and it may be admitted that they are entitled to great weight in that aspect of the case. But this view cannot avail the petitioners here, as the effect would be simply the confirmation of a complete and perfect title, which we have seen cannot be dealt with under this act of 1844. The title thus confirmed must necessarily partake of the nature of the one derived under the French concession or grant. It has also been urged, that this order of survey by Unzaga may be properly regarded as an incipient step in the derivation of a title under the Spanish government, independently of any previous grant—hence an incomplete title, and therefore an appropriate case for examination by the District Court, under the act of 1844. This, we think, cannot be denied, and shall therefore proceed to examine the claim to the tract in question, under this survey by Andry. We have before us the field-notes of this survey, together with the lines protracted upon the map accompanying them. They furnish full evidence, that the tract assigned to D’Auterieve by O’Reilly and. Unzaga, was severed from the royal domain, and its boundaries determined; and, were there nothing else in the case, there would be but little difficulty as it respects the title within these boundaries. But, as we have already seen, it is admitted that the front of the 26 DECEMBER TERM, 1853. 25 United States v. D’Auterieve et al. tract on the river within the limit of this survey, and for forty arpens back, was given up to Governor Galvez, in or about the year 1780, and was subsequently assigned by him to the Acadian emigrants, under whom it is still held. No part of this is claimed by the petitioners. But it is insisted that this survey extended back from the river beyond the forty arpens, and even to the Atchafalaya river, a distance of some twelve or fifteen miles. The claim is confined to this part of the tract. It becomes material, therefore, to ascertain the extent of this survey, especially the depth back from the river. The upper side line is the boundary between this and the adjoining lot, which then belonged to Vincente Delpino. This lot was surveyed by Andry, in February, 1772, the month previous to the survey of D’Auterieve in question ; and, it is stated in the field-notes that the two lots are separated by a strait which appears to extend back from the river to the *north-west, and will serve as a common boundary be-tween the adjacent owners. Andry further states that L no landmarks have been made upon the line, as the channel of the bayou or strait is taken as the boundary; and may serve as a common canal for both habitations to get wood from the mountains. In a note to this survey it is stated, that D’Auterieve and Delpino had agreed between themselves, that in case the said bayou instead of following the direction of the course of the line which was north-west, should incline more towards the west, that is, upon the concession of D’Auterieve, then this canal should remain the property of the latter. This survey of Delpino’s lot extended back from the river the usual depth, which was forty arpens, or one mile and a half. It was made in February, 1772. The survey by Andry of D’Auterieve’s lot was made in the next month. The fieldnotes of that survey adopts this bayou or canal as the common boundary between him and Delpino in case the course of its channel should be north-west; but if it should incline more west, then it was to belong exclusively to D’Auterieve. No other boundary was designated on this line, this bayou, as said by Andry, being supposed to be the division until its course may be perceived or ascertained after the land has been cleared. The bayou is drawn upon the map giving to it the course supposed; and the note of Andry appended, explaining it as follows : “ Bayou or strait which separates the lands of the party interested from the lands of Vincente Delpino, under the stipulation expressed in the certificate.” Now this is the upper side line of D’Auterieve, which it is insisted on behalf of the petitioners, extends back from the 27 26 SUPREME COURT. United States v. D’Auterieve et al. river not only the depth of forty arpens, but back to the Atchafalaya river, a distance of some twelve or fifteen miles. This river is not mentioned in the field-notes, nor is it delineated on the map, nor anywhere referred to as the terminus of the line. On the contrary, the lower side line of Delpino, the next neighbor above, is adopted as a common boundary between them, and that line, it is admitted, extends in depth but forty arpens, leaving, therefore, a very strong, if not controlling inference, that this was also the depth of D’Auterieve’s. In making the survey, Andry run out the two lots of D’Auterieve separately, that is the twenty arpens as limited by O’Reilly, and adjoining these, the addition made by Unzaga, his successor. This mode was adopted as enabling the surveyor the better to make the requisite allowance for the sharp bend in the Mississippi river at this stretch of it. Accordingly, after ascertaining the lower point on the river, of the twenty arpens and course of the line back, Andry states in *971 the field-notes, that *he traced the line back, marked J E, B, X, as a common limit between the two aforesaid grants; but he says he placed no landmarks on it, as both the grants belonged to the same master, and the interested party so desired. This line is also drawn upon the map, and corresponds with the upper side line in depth, and of course with the rear line of Delpino’s lot, which was but forty arpens back. The field-notes then set out in detail the survey of the remaining twenty-four arpens conceded to D’Auterieve by Unzaga, and after ascertaining the lower point on the river and course of the lower side line back, describes it as a line marked Q, R, S, and as separating the lot from Antonio Dor-val, the neighbor below. On referring to the map, it will be seen that this line corresponds in depth with the two preceding back lines of the survey. Dorval’s lot extended in depth only forty arpens. The field-notes further state, that adopting this line as the true boundary between D’Auterieve and Dorval, his neighbor below, the former would be deprived of a road of four leagues in extent, which he had made through the mountains and swamps, to enable him to go to the Atchafalaya and attend to his cattle which he had on a vachary at Attakapas; and this being so, Andry changed this lower’ line so as to include the road within the limits of the lot. This completed the survey; and it will be seen, from the examination, that there is not the slightest ground for the claim set up, on the part of the petitioners, that the tract as surveyed under the Spanish order extended back to the Atch-28 DECEMBER TERM, 1S53. 27 United States v. D’Auterieve et al. afalaya, or further than the usual depth of forty arpens. This river is not drawn upon the map as the boundary in the rear, nor is it designated or even referred to as such boundary in the field-notes, on the contrary the rear line of the tract as drawn on the map corresponds with the termini of the lines traced back from the Mississippi, and which we have already described. Andry, in his report of the survey to Unzaga, mentions his departure in tracing the lower line of the lot from his instructions, with a view to include the road, and observes, that he had bounded him in the said road and its adjoining lines as far as the river Atchafalaya, subject to the approbation of his Excellency. This survey was approved by Unzaga, and it is argued, that this communication of Andry implies that this lower line of the tract was intended to reach back to the Atchafalaya. The answer to this is, that no such intention is to be found in the minutes of the survey kept at the time it was made, nor as indicated upon the map, but the contrary. And all that can be properly understood from the letter, is what Andry had previously stated in the field-notes, namely, that the *lower side line had been depressed so as to [-*90 give to D’Auterieve, the benefit of his road of four L " leagues, which extended to the Atchafalaya. Had this alteration not been made, the road leading from the Mississippi back for the forty arpens, would have fallen within the limits of Dorval’s lot below, and thus D’Auterieve be deprived of the benefit of it for the mile and an half, the depth of that lot. Beyond that limit he could have used it as before, as it then ran through the royal domain. We cannot infer, from the ambiguous expressions in the letter to Unzaga, the object of which was to explain the reasons for the depression of this side line contrary to his instructions, so as to include the road, an intention to carry the survey back to that river, when in contradiction of the description as given in the field-notes, and as delineated on the map. If Andry had intended the side lines should be thus carried back, it would have been a simple matter to have said so in the field-notes, and to have designated the river as the rear boundary on the map. The difference in the result is not so slight as to have been overlooked, or accidental. The survey, as actually made, contains probably some twenty-five hundred, or three thousand acres. As claimed under the construction attempted to be given to the letter, it would contain but little short of half a million, a difference depending upon the fact, whether the side lines which run north-west and south-west and widened therefore ninety degrees, should be 29 28 SUPREME COURT. United States v. D’Auterieve et al. extended back one mile and a half, or from twelve to fifteen miles. We think the field-notes and map should control, rather than this casual phrase in the letter accompanying them to Unzaga. The field-notes described this lower line by letters Q, R, S, and we have the delineation of it on the map corresponding to these letters; and both fix the terminus in conformity with the upper back lines of the tract as already run and delineated, and all this without any mention or allusion to this river as the boundary in the rear. Instead of this, the rear line is protracted on the map at the termini of the back lines, thereby expressly excluding the idea of a river boundary. A good deal of stress has been laid upon the idea, that as the French grant extended back to the Atchafalaya, the order of survey by the Spanish authorities was intended only to limit or diminish the front upon the river, leaving the depth as before. But the difficulty in giving any force to the suggestion is, that there is no evidence before us that the French grant extended back to this river. Even the historical records, mostly relied on in the case, furnish no such suggestion. This idea, therefore, cannot aid us in giving the construction claimed to the order of survey. *The acts of the parties tend strongly to confirm the J view we have taken of this order of survey. Two of the sons of D’Auterieve were of age at the time this concession was given up to Galvez in 1780, and the family removed to Attakapas, and the youngest became of age in a few years thereafter. The eldest died in 1812, the second in 1814, and the youngest in 1828. All of them resided in the neighborhood of the tract, and during this whole period, a lapse of some thirty-three years, no claim was made to it; nor indeed ever by any of the members of the family who had the best opportunity of knowing the facts and circumstances under which it was surrendered, and of the extent and character of the title. The presumption is very strong, they must have been impressed with the belief that all the right that belonged to the family under the order of survey, had been given up to Galvez by the arrangement entered into with him. The acts of the Spanish government also in making concessions subsequently within the limits of the claim, as was done, show that no such right as is now set up was recognized by it. In any view, therefore, that we have been able to take of 30 DECEMBER TERM, 1853. 29 United States v. D’Auterieve et al. the case, we think that the decree of the court below is erroneous, and should be reversed. Mr. Justice CURTIS. Justices McLean, Wayne, Campbell and myself, do not understand the opinion which has been delivered by Mr. Justice Nelson as intended to express the judgment of this court upon the validity of the complete French grant, alleged by the petition to have been made by the Western Company to Paris Duvernay in 1717, or upon the effect of the alleged confirmation of such alleged complete French title, or any part thereof by the Spanish Governors, O’Reilly and Unzaga. The trial of such a title not being within the jurisdiction of this court upon this petition, according to the repeated decisions of this court, and the plain terms of the act of May 26, 1824, under which we derive our authority, it seems equally clear, that the questions whether there is any sufficient evidence that such a grant was made, or whether it could be located, or whether it embraced the premises in question, or whether it had been in part or in whole confirmed; and how extensive such confirmation, if made, was, are questions not judicially before us. For these questions belong exclusively to the trial of that legal title. In our judgment, this embraces the whole case. It exhausts every allegation in the petition, which makes no claim to any incipient or imperfect French or Spanish title. It alleges only *a complete French grant, and a confirma- r*on tion to D’Auterieve, who was then in possession under *■ it, of part of the land. Now, the first section of the act of 1824, provides that a person, claiming lands by virtue of a French or Spanish grant, concession, warrant, or order of survey, which might have been perfected into a complete title, may present a petition to the District Court, setting forth, fully, plainly, and substantially, the nature of his claim to the lands, particularly stating the date of the grant, &c., under which he claims; and then it continues: “ and the said court is hereby authorized and required to hold and exercise jurisdiction of every petition presented in conformity with this act, and to hear and determine the same.” Unless, therefore, the petition is presented in conformity with this act, the special and limited jurisdiction which the act confers does not exist. The title shown by this petition being a complete title, derived from the Western Company, and confirmed by the Spanish authorities, and the petitioner not having shown, fully, plainly, and substantially, or even by the most obscure suggestion, any 31 80 SUPREME COURT. United States v. Roselius et al. other title, we cannot perceive how this court has any jurisdiction under the act of 1824. We add, however, that if, as in the case of Davenport’s Heirs, at the present term, the petition did duly aver facts, constituting in point of law an imperfect title, we should not consider the petition defective, though it might state an erroneous legal conclusion from those facts, and call the title a perfect one. That is not this case, as may be seen by recurring to the petition. Our opinion is, that this petition should be dismissed for want of jurisdiction, without prejudice to any legal title of the petitioners, and that no opinion should be expressed by this court upon any question of fact or law arising upon the evidence. ORDER. This cause came on to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said District Court, in this cause be, and the same is hereby, reversed, and that this cause be, and the same is hereby remanded to the said District Court, with directions to that court to dismiss the petition of the claimants. *311 *^HE United States, Appellants, v. Christian J Roselius, Abial D. Crossman, William E. Liv-eridge, Francois B. D’Autuin, Benjamin C. Howard, John Spear Smith, Brantz Mayer, John Gibson, and R. R. Gurley, Executors of John McDonogh, deceased. Under the laws of 1824 and 1844, relating to the confirmation of land titles, where a claimant filed his petition, alleging a patent under the French government of Louisiana, confirmed by Congress, and claiming floats for land which had been sold, withm his grant, by the United States to other persons, the mere circumstance, that the court had jurisdiction to decree floats in cases of incomplete titles, did not give it jurisdiction to decree floats in cases of complete titles. This title having been confirmed by Congress, without any allowance for the sales of land included within it, the confirmation must be considered as a compromise accepted by the other party who thereby relinquished his claim to floats. If the title be considered as a perfect title, this court has already adjudged (9 How., 143) that the District Court had no jurisdiction over such titles. The claimant in this case prayed that the side lines of his tract might be 32 DECEMBER TERM, 1853. 31 United States v. Roselius et al. widened by diverging instead of parallel lines ; but this court, in this same case, formerly (3 How., 693) recognized the validity of a decree of the Supreme Court of Louisiana, which decided that the lines should be parallel and not divergent, The District Court of the United States ought to have conformed its judgment to this opinion. Moreover, the claimant in this case did not state in his petition what lands had been granted by the United States, nor to whom, nor did he make the grantees parties; all of which ought to have been done before he could have been entitled to floats. This was an appeal from the District Court of the United States for the Eastern District of Louisiana. The facts are stated in the opinion of the court. It was argued by Mr. Cushing, (Attorney-General,) for the United States, who made the following points : I. That the grant under which the claim is made being a complete and perfect grant, the court below had no jurisdiction. IL That if the court had jurisdiction the grant is void, having been made by the French authorities subsequent to the treaty of Fontainbleau of 3d November, 1762, by which France ceded Louisiana to Spain, and the order of delivery, dated 21st April, 1764. 1 Clark’s Land Laws, Appendix, 976 ; Montault v. United States, 12 How., 47 ; United Stat\ v. Pellerin, 13 How., 9. HI. That the Spanish authorities after the cession did not confirm or recognize the said grant as valid. The proceedings before Livaudais did not operate as a confirmation. Under the Spanish rule, the authority over the lands was vested first in the governors of the province. See the Marquis of Grimaldi’s Letter to Unzaga, of 24th August, 1770 ; 2 White’s Recop., 460. The authority was subsequently vested *in the intendant. See the royal order r*on of 22d October, 1798; Id., 477,478. The certificates *-of Trudeau were not sufficient evidence to show that Governor Miro had confirmed or recognized the grant as valid. Under the acts of 1824 and 1844, the District Court had no power to act, except in cases of claims under grants, concessions, warrants, or orders of survey. V. With respect to the allegation in the petition, that the grant has been confirmed by an act of Congress of 11th January, 1820. Whether this be so or not cannot arise in this case, the jurisdiction of the court under the act of 1824, as revived by that of 1844, being limited to incomplete claims originating with the Spanish, French, or British authorities, which might have been perfected into a complete title under and in conformity to the laws, usages, and customs of the Vol. xv—3 33 32 SUPREME COURT. United States v. Roselius et al. government under which the same originated, had not the sovereignty of the country been transferred to the United States. Act of 1824; 4 Stat, at L., 52; Act of 1844; Id., 676. VI. But as the petition claims opening and diverging side lines from the front to the rear, and avers that a large portion of the land had been sold by the United States, and claimed floats therefor, and the court below has decreed in favor of the claimant on both points, it may be that the object of the petition was to have these points determined under the grant. With respect to the first, there is nothing in the grant which calls for diverging side lines, and when this is the case, the side lines run parallel to each other. That the side lines in this grant run parallel was decided in the Supreme Court of Louisiana, in McDonogh v. Millaudon, which will be found reported in 3 How., 693. As to the claim for floats, no individuals claiming lands under title from the United States having been made parties in the case, no decree for floats could be made. United States v. Moore, 12 How., 209. Mr. Justice CATRON delivered the opinion of the court. John McDonogh claimed to be confirmed in a tract of land bounded in part by the river Mississippi; the front being 40 arpens more or less ; bounded on the upper side, by a line running back from said river a distance of seventeen miles, and two hundred and twenty-seven perches, more or less, until it strikes the river Amitie, on a course by compass of north 35° west; on the lower side, by a line running back from said river Mississippi a distance of eighteen miles and twenty-two perches, more or less, until it strikes lake Maure-pas, on a course by the compass of north nine degrees fifty minutes east; and bounded on the rear line by the river Amitie and lake Maurepas. #oo-| *The petitioner represents that in the year 1739 J Duport purchased the land from the Collopissa nation of Indians; and that said purchase was confirmed in the year 1769 by the French government by a regular and formal patent : and secondly, that the claim was duly presented to and approved by the board of land commissioners of the United States, who confirmed it for the whole quantity claimed, according to a plan of survey. And that said titles were also recognized and confirmed by an act of Congress of the 11th May, 1820. But the petitioner avers, that a large portion of said tract of land has been sold by the United States, or confirmed to actual settlers. 34 DECEMBER TERM, 1853. 33 United States v. Roselius et al. The district court found that McDonogh held under Du-port by regular mesne conveyances, and showed a title to the land by patent, which was granted by the highest authorities in the province ; that it was a complete and full title; and furthermore, “ that the land claimed as per plan of survey on file herein was confirmed by the report of the land commissioners of the United States on the 20th of November, 1816.” The court below then proceeded to pronounce the grant of . 1769 to be valid; and that the survey thereof, filed as an exhibit in the cause, indicates the metes and bounds, and the land is ordered to be located according to said survey, and to that extent the claim is confirmed. And then the decree proceeds to adjudge that for all lands within these bounds which have been sold or otherwise disposed of by the United States, the petitioner shall be authorized to enter other lands by floating warrants. Assuming the foregoing facts to be true, the question presented is, whether jurisdiction existed to make the decree? The mere fact, standing alone, that the United States had sold or otherwise disposed of any part of the land here claimed, and that compensation could be made as provided by the 11th section of the act of 1824, does not give jurisdiction, as the pow’er to award floating warrants is an incident to a case where jurisdiction exists to decree the lands claimed and to order that a patent therefor shall issue; and if the power to divest title out of the United States is wanting, none exists to decree the floating warrants, because it must be first found and adjudged, that the petitioner has the better equity to the land of which the United States have deprived him by their grant to another. But, there is another consideration why this petitioner could not claim floating warrants. He sought a confirmation of his title from the United States, for the obvious reason that his grant from the French government, made in 1769, was invalid, as that government had no interest in the country in 1769, it having been ceded to Spain in 1763. And if McDonogh was *forced. to go behind his French grant, and rely on his Indian pretension to L claim, the probability was that he could establish nothing to support his assumption of title, and must fail altogether. Under these circumstances, the United States confirmed McDonogh’s claim, without allowing him any compensation for such land as had been previously sold or disposed to others within the boundaries confirmed. He accepted the confirmation on these terms; and as we are substituted by the acts of 1824 and 1844, for the political power, and required 35 34 SUPREME COURT. United States v. Roselius et al. to adjudge these claims, as Congress adjudged them before the act of 1844 was passed, we are bound to hold that, when our predecessors decided McDonogh’s claim favorably, they awarded him all that he had a right to demand, and which he sanctioned by accepting the confirmation on the terms it was offered. Nothing could be fraught with worse consequences as regards confirmations by Congress, or by commissioners acting by its authority, than to hold, that when a doubtful claim was confirmed on certain terms, and the claimant accepted these terms, and took the full benefit of the confirmation, that still he could come into the courts of justice and enforce his entire claim for the deductions made by Congress, as if no adjustment had been made. Such cases must stand on the footing of compromise, and all equities existing when the compromise was made, and not provided for by it, must be deemed to have been abandoned. If it were otherwise, then there would be no end to these pretensions to compensation, before Congress and the courts. But to hold that the confirmation was final, and conclusive of the whole claim, (as we think it clearly was,) then the country will, at last, find repose, and the cultivator of the soil will know from whom to buy, and take title. McDonogh’s claim being compromised, the government had no duty imposed on it to compensate him in case of loss. Jurisdiction is also wanting on other grounds. If the grant of the French government to Duport was a complete title, then no act on the part of the American government was required to give it additional validity, as the treaty of 1803, by which Louisiana was acquired, sanctioned perfect titles: nor was jurisdiction vested in the Distiict Courts to adjudge the validity of perfect titles. This is the settled construction of the act of 1824, as was held by this court in the case of the United States v. Reynes, 9 How., 143, 144. In the next place, McDonogh alleges that his title was confirmed by the United States in 1816, and again in 1820. The act of 1824 conferred jurisdiction on the District Courts to adjudge and settle the validity of imperfect claims against the United States as already stated. But where the claim had been *granted by an act of Congress, or by officers -I acting under the authority of Congress, and a perfect legal title vested in the grantee, no power was conferred on the courts to deal with such title, because it needed no aid. And because such an assumption would of necessity claim power in the courts to modify the grant made by Congress, in every respect, or to set it aside altogether. 36 DECEMBER TERM, 1853. 35 United States v. Roselius et al. On this assumption, the District Courts might have been called on to re-adjudge every claim that Congress had confirmed. The legislature contemplated none of these things, when passing the acts of 1824 and 1844. McDonogh .informs us, in his petition, that he did not claim a decree for any land covered by his grant, but that he sought a decree for land warrants to be located on other lands for such parts as had been sold or disposed of by the United States within the bounds of his claim. And as incident to this claim for compensation, he prayed that his side lines might be widened, so that the upper line would run north 35° west; and the lower line, north 9° 50' east. These side lines are about eighteen miles long, and commence on the Mississippi forty arpens apart, but by widening the tract claimed, as decreed by the District Court, is something like fifteen miles wide where the lines terminate on the river Amitie, and lake Maurepas. The boundaries were thus settled by the court below, according to the power conferred by the second section of the act of 1824, sweeping over a large tract of country, and covering many lands granted to others by the United States. The petition in this case was filed in June, 1846; at the previous term of the Supreme Court of the United States, the cause of John McDonogh, against Millaudon, was decided, on which this court was asked to revise a decision of the Supreme Court of Louisiana, which settled the boundaries of McDonogh’s grant; holding that the sides lines could not diverge, but that the land must be of equal width in front and rear, and the side lines parallel to each other throughout. The question in the State Court being one of boundary, and not involving any consideration that could give this court cognizance, under the 25th section of the Judiciary Act, the writ of error was dismissed for want of jurisdiction. As the decision of the Supreme Court of Louisiana had settled the question of boundary, we think the District Court should not have disregarded that decision, and involved the government in such serious consequences as that of making compensation for lands not covered by McDonogh’s grant. If none of these objections existed, however, there is another, that would preclude the petitioner from having compensation *in land warrants. He does not state what r*og lands the United States have granted to others, within *-his claim; nor who the owners are ; neither does he make them parties. These steps were required by the act of 1824, 37 36 SUPREME COURT. United States v. Roselius et al. and not having been taken in this instance no general decree could be made for floating warrants, as was done by the District Court. We so held in the case of the United States v. Moore, 12 How., 223. For the reasons stated, it is ordered, that the decree be reversed, and the petition dismissed without prejudice to McDonogh’s claim. ORDER. This cause came on to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed, by this court, that the decree of the said District Court, in this cause, be, and the same is hereby, reversed, and that this cause be, and the same is hereby, remanded to the said District Court, with directions to that court to dismiss the petition in this case, without prejudice to the rights of the petitioner. The United States, Appellants, v. Christian Roselius, Abial D. Crossman, William E. Liveridge, Francois B. D’Autuin, Benjamin C. Howard, John Spear Smith, Brantz Mayer, John Gibson, and R. R. Gurley, Executors of John McDonogh, deceased. Where a party claimed title to a tract of land in Louisiana, under a Judicial sale in 1760, and alleged that he and those under whom he claimed, had been in peaceable possession ever since the sale, a case of perfect title is presented which is not within the Jurisdiction of the District Court, under the acts of 1824 and 1844. Upon the sufficiency of the evidence to sustain the title, no opinion is expressed. This was an appeal from the District Court of the United States for the Eastern District of Louisiana. The case is fully stated in the opinion of the court. It was argued by Mr. Cushing, (Attorney-General,) for the United States. Mr. Chief Justice TANEY delivered the opinion of the court. t This is an appeal from the decree of the District Court for 38 DECEMBER TERM, 1853. United States v. Roselius et al. *the Eastern District of Louisiana, in a proceeding in- r*o7 stituted in that court by John McDonogh, in his life- L & time, to try the validity of his claim to certain land mentioned in his petition. The proceeding was under the acts of 1824 and 1844. The petition was presented on the 15th of June, 1846, and sets forth that he has a good and valid title to a tract of land in the parish of Jefferson, near the city of New Orleans, and on the same side of the river Mississippi, commencing at a distance of eighty arpens from the river, and running back or in the rear from thence, with the continuous lines of the front tract of twenty-one arpens on the river, a distance of about forty-nine and one third arpens in depth, until one of the side lines intersects with the other in a point, including about one hundred and seventy-seven and one third superficial arpens. That said tract of land is a portion of a larger tract which was adjudicated and sold on or about the 17th of April, 1760, to De Pontalba, by order of the highest tribunal of the government of France, in Louisiana, called the Supreme Council of the province of Louisiana, by Charles Marie Dela-lande Dapremont, Counsellor and Assessor of the Supreme Council of the Province, and Attorney-General of the King of France for said Province of Louisiana; that said sale and adjudication by the order and authority aforesaid, is fully equivalent to a patent to said land; the Supreme Council of the Province being at the head of the land-office, granted the lands and issued the patent; that after passing through various mesne conveyances, the petitioner finally acquired said tract of land; that his title and claim had been presented and proved before the Board of Land Commissioners, who reported that it ought to be confirmed, but the said report was never acted on by Congress; and that said tract of land has always been in the peaceable and undisturbed possession and enjoyment of the petitioner, and those under whom he derives his title, ever since the date of the original grant thereof. The petitioner therefore prays confirmation. These are the facts stated in this petition; and if they are true, the District Court had no jurisdiction of the case, and no right to pronounce judgment upon the validity of the title. The acts of 1824 and 1844 authorize a proceeding of this kind in those cases, only where the title set up is imperfect, but equitable. . It has been repeatedly so held by this court, and was so decided in the case of the United States v. Moore, 12 How., 209; and again in the case of the United States n. J illerin and others, 13 How., 9, as well as in other cases to which it is unnecessary to refer. Indeed, the words of the 39 37 SUPREME COURT. United States v. Ducros et al. act of 1824, conferring this special jurisdiction on the District Courts, appear to be too plain for. controversy. *Now the title set up by the petitioner is a complete -* legal title ; and if he can establish the facts stated in his petition, his title is protected by the treaty itself, and does not need the aid of an act of Congress to perfect or complete it. For undoubtedly, if the possession of the land has been held continually by the petitioner and those under whom he claims, under the judicial sale made by the French authorities in 1760, the legal presumption would be that a valid and perfect grant had been made by the proper authority, although no record of it can now be found. We of course express no opinion as to the sufficiency of the evidence to maintain the complete and perfect title claimed in the petition. That question is not before us on this appeal; for as the District Court had no authority to decide upon it, the decree must be reversed for want of jurisdiction, and the petition dismissed. But we shall dismiss it without prejudice to the legal rights of either party; leaving the petitioner at liberty to assert his rights in any court having competent jurisdiction to decide upon the validity or invalidity of the complete and perfect title set up in his petition. ORDER. This cause came on to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of said District Court in this cause be, and the same is hereby, reversed, for the want of jurisdiction in that court, and that this cause be, and the same is hereby, remanded to the said District Court, with directions to that court to dismiss the petition without prejudice to the legal rights of either party. The United States, Appellants, v. Joseph Marcel Ducros, Alfred Ducros, and Louis Toutant Beauregard. A grant of land in Louisiana by the French authorities in 1764 is void. The province was ceded to Spain in 1762. (See 10 How., 610.) . In 1793, certain legal proceedings were had before Baron de Carondelet m ms judicial capacity, wherein the property now claimed is described as part; oi the estate of the grantor of the present claimant. But this did not amount 40 DECEMBER TERM, 1853. 38 United States v. Ducros et al. to a confirmation of the title in his political character; and if it did, the title would be a perfect one, and beyond the jurisdiction of the District Court, under the acts of 1824 and 1844. This was an appeal from the District Court of the United States for the Eastern District of Louisiana. *The facts are set forth in the opinion of the court. r*gg It was argued by Mr. Cushing, (Attorney-General,) for the United States. The following were the points made on behalf of the appellants. 1. That the court below had no jurisdiction, and its decree is therefore, void. The grant is a complete French grant, and not an incomplete title. See first section of the act of 1824, United States v. Reynes, 9 How., 144, 145; United States v. Power’s Heirs, 11 How., 580. 2. That there was no sufficient evidence of the making of the grant produced in the case. The copy certified by the register is not evidence. See 3d section of the act of 1824, and the brief in the case of Me Car they’s Heirs, No. 21, of the present terra. 3. That even if the court had jurisdiction, and the evidence were sufficient, the grant is void, having been made by the French authorities after Louisiana had been ceded by France to Spain, in 1762. United States v. D’ Aut erive, 10 How., 610. 4. That the proceedings had before Carondelet, in 1793, operated no confirmation of the grant. They were merely proceedings in the settlement of the estate of Louis Toutant Beauregard, in which in no way was the extent of the plantation in issue. The front of the land was held at this time, under the grant to Le Sassier. Besides, it is to be remembered, that by the 13th article of O’Reilly’s regulations, approved at Madrid, it was provided, that “ all grants shall be made in the name of the King, by the Governor-General of the province,” &c. No land could, therefore, be divested out of the King, except by a grant. 5. That from the great lapse of time before the grant was brought forward and insisted on, it must be held that the petitioners and their ancestors had abandoned all claim to the lands embraced within its limits. 6. That the grant is void under the fourteenth section of the act of 26th March, 1804. 1 Land Laws, 114; United States v. D’ Auterive, 10 How., 624. 41 39 SUPREME COURT. United States v. Ducros et al. Mr. Justice GRIER delivered, the opinion of the court. The appellees filed their petition in the District Court for Louisiana, against the United States, under the act of Congress of May 26, 1824, as revived by the act of June 17th, 1844. It sets forth that they are the owners of a tract of land of twenty arpens front on the Mississippi river, lying about twelve miles below the city of New Orleans, and extending in depth to lake Borgne. *401 *That the said tract of twenty arpens front is de- -* rived from one title, and until after the year 1800 had but one proprietor. That, in that year it was the property of the widow Toutant Beauregard, who thereafter sold an undivided half to Rodolph Joseph Ducros, who subsequently made partition thereof, by which the upper half was assigned to the widow, and the lower to Ducros. That the rights of the former have since been acquired by the petitioner, Louis Toutant Beauregard, and the rights of the latter, by Joseph Marcel and Louis Alfred Ducros. That the widow Beauregard and Rodolph Joseph Ducros, heretofore filed their claims to said lands for confirmation with the board of commissioners, but that being then ignorant of the full extent of their rights, they claimed and obtained the confirmation of their titles only to the depth of a league and a half from the Mississippi river. The petitioners claim that the confirmation should have been to the depth of lake Borgne, because that on the 2d of March, 1764, Madame Marie Gaston, the widow of Rochemore, who then was owner of the front tract, obtained from the French government of the province of Louisiana a grant, of the rear of her said front tract, with the entire depth to lake Borgne, and that the said entire tract was, on the 16th of November, 1793, in a judicial proceeding before Baron Carondelet, adjudicated to said widow Toutant Beauregard, under whom petitioners claimed. In support of their claim, the petitioners gave in evidence a grant from D’Abbadie, Director-General, &c., of Louisiana, under the King of France, dated 2d of March, 1764, for all the land lying in rear of her estate, running towards the lake, (the said estate having a front of sixteen arpens on the river Mississippi, about four leagues below New Orleans,) to Madame Marie Gaston. The next muniment of title consists of copies from the Spanish records of the province, showing an inventory and appraisement of the estate of Don Louis Loutant Beauregard, in which this tract of land is described as part of his estate, and as running back to the lake ; and a legal proceed-42 DECEMBER TERM, 1853. 40 United States v. Ducros et al. ing before Baron de Carondelet, by which it is vested in Donna Magdalena Cartier, in 1793. And again in 1799, an inventory and appraisement of the estate of Donna Magdalena Cartier and sale of the same (describing said tract of land as before) to Donna Victoria Ducros, widow of Don Louis Toutant Beauregard. On the 1st of February, 1802, deed from the widow to Ro-dolph Joseph Ducros for one half, describing the tract as of the ordinary depth of forty arpens. And in all the numerous partitions and mesne conveyances, bringing down the title to the petitioners, the tract is described as forty arpens deep, till, in *1836, in a conveyance in partition, it is again described as running back to lake Borgne. *- Without laying any stress on' the want of any mesne conveyance or connection between widow Gaston and Don Louis Toutant Beauregard, and on the descriptions of the deeds from the widow Beauregard and those claiming under her, there are two objections, which are fatal to the recovering of the petitioners in this case. 1st. It has been decided by this court in the United States v. D' Aut erive, 10 How., 610, that a grant by the French authorities after the cession of Louisiana by France to Spain in 1762, is void. And 2dly. The proceedings before Carondelet in 1793, in the settlement of the estate of Louis Toutant Beauregard, could not be construed as a confirmation of the French grant, from the mere circumstance that in the inventory, decedent’s estate is described as running back to the lake. Carondelet could not be said to confirm, in his political capacity, a title which is not even stated in the mere formal proceedings before him in his judicial capacity. And if it had the effect of a confirmation of the original French grant, as that purports to be a perfect title in fee, it is not the subject of jurisdiction of the United States courts under the acts of Congress under which this suit is brought. This has been so frequently decided by this court, that a reference to cases, or the reasons for the decision, may now be considered superfluous. The decree of the District Court of Louisiana is therefore reversed. ORDER. This cause came on to be heard on the transcript of the record from the District Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, 43 41 SUPREME COURT. Eyre et al. v. Potter et al. and decreed by this court, that the decree of the said District Court in this cause be, and the same is hereby, reversed, and that this cause be, and the same is hereby, remanded to the said District Court with directions to dismiss the petition of the claimants. *421 *J°SEPH K. Eyre and Algernon E. Ashburner, -I Executors of Elizabeth E. Potter, deceased, v. Samuel R. Potter and Mauger London. Where a widow filed a bill in chancery, complaining that immediately upon the death of her husband, the son of that husband, together with another person, had imposed upon her by false representations, and induced her to part with all her right in her husband’s estate for an inadequate price, the evidence in the case did not sustain the allegation.1 It is not alleged to be a case of constructive fraud, arising out of the relative position of the parties towards each other, but of actual fraud. The answers deny the fraud and are made more emphatic by the complainant’s having put interrogatories to be answered by the defendants, and the evidence sustains the answers.2 * It will not do to set up mere inadequacy of price as a cause for annulling a contract made by persons competent and willing to contract, and, besides, there were other considerations acting upon the widow to induce her to make the contract.8 The testimony offered to prove the mental imbecility of the widow, should be received with great caution, and is not sufficient.4 * * * This was an appeal from the Circuit Court of the United 1 See Taylor v. Taylor, 8 How., 183; Gratz v. Cohen, 11 Id., 1; Sullivan v. Sullivan, 21 Law Rep., 531 ; Hallett v. Collins, 10 How., 174. 2 Where the bill alleges fraud and the answer denies it, the burden of proof is on the plaintiff to establish the fraud affirmatively. Ganow v. Davis, post, *272; Collins v. Thompson, 22 How., 246. 8 A lease made by a man infirm in body and mind, acquiesced in by his children before and after his death, will not, in the absence of fraud, be set aside on the ground of inadequacy of consideration or the imbecility of the lessor. Waters v. Barral, 2 Bush (Ky.), 598. But if the consideration of a contract made by a person of feeble intellect to one in whom confidence has been reposed, is so entirely inadequate as to afford evidence that he did not understand the nature of 44 the contract he was making, relief against it will be afforded by a court of equity. Conant v. Jackson, 16 Vt., 335. 4 Mere weakness of mind alone, without imposition or fraud, forms no ground for vacating a contract. But if there is any unfairness in the transaction, then the intellectual imbecility of the party may be taken into the estimate, to show fraud, as a ground for annulling the contract. Owings's Case, 1 Bland (Md.), 370; Dodds v. Wilson, 1 Treadw. (S. C.) Const., 448; 3 Brev., 389; Somes v. Skinner, 16, Mass., 358. But no degree of physical or mental imbecility, which leaves the party legal competency to act, is of itself sufficient to avoid a contract or settlement with him. Farnam v. Brooks, 9 Pick. (Mass.), 212. See also Morrison v. Shuster, 1 Mack., 19a DECEMBER TERM, 1853. 42 Eyre et al. v. Potter et al. States for the District of North Carolina, sitting as a court of equity. The bill was filed by Elizabeth E. Potter, during her lifetime, to which her executors afterwards became parties. The opinion of the court contains an explanation of the case as it is set forth in the bill, and it is not necessary to repeat it. This cause was argued by Mr. Badger for the appellants, and by Mr. Bryan and Mr. Graham for the appellees. The points of law which were raised by the counsel upon each side respectively, were so intermingled with their views of the facts and evidence, that it is impossible to separate them. The view of the case presented on behalf of the appellants was as follows:— The consideration of the deed, dated May 31, 1847, was evidently and grossly inadequate. The defendant, Samuel R. Potter, in his answer admits that he had formed the opinion, that the estate of his late father was worth $120,000. The statements and estimates in the answer of the said defendant, and the schedules therein referred to, show that the real and personal estate of the said Samuel Potter, at the time of his death, must have been nearly that sum. They certainly show that the estate was so large and valuable that the price agreed to be paid to the plaintiff for her interest therein, was shockingly inadequate. In relation to the debts of the intestate, no account has been *filed by the administrator, Samuel R. Potter, and no r*4q vouchers exhibited or proved. If the witness Burr L were competent to speak in a general way, when the vouchers and exhibits, if any, are withheld, then he proves that the whole amount of disbursements by the administrators was about $15,938: he is defendant’s witness. It is insisted, in behalf of the appellants, that her interest in the estate of her said husband was worth from $1,800 to $1,900 per annum, and from $13,000 to $14,000 absolutely. 4 he result is arrived at from the answer of the defendant, Samuel R. Potter, and from the evidence in the cause. This valuable interest she transfers in the said deed for the sum of $1,000, in cash, and the personal covenant of the defendant, Samuel R. Potter, to pay her $600 per annum during her life, she being at the time nearly seventy years of age, and in infirm health. It is true, as stated in the answer of the defendant, Mauger London, that the defendant Samuel R. Potter, as 45 43 SUPREME COURT. Eyre et al. v. Potter et al. administrator of the said Samuel Potter, afterwards allowed the plaintiff to obtain a decree or order in the proper court for her year’s provision out of the said estate, and that said provision was of the value of $1,000, but this has nothing to do with the merits of said deed. It is also true that the said Samuel R. Potter, in the instrument executed by him, also covenants with the plaintiff to furnish her with a competent livelihood and maintenance at his own house, but nothing of this kind is mentioned in the said deed, dated May 31,1847. Notwithstanding the facts immediately above mentioned, it is still insisted, in behalf of the said plaintiff, that the consideration received by her, or secured to her for her interest in said estate was grossly inadequate. The price of board and lodging in Wilmington, N. C., is from $20 to $25 per month in hotels and boarding-houses. Mere inadequacy of consideration is not of itself a sufficient ground to set aside a contract, unless the inadequacy be such as amounts to apparent fraud, or unless the situation of the parties be so unequal as to give one the opportunity of making his own terms. A court of equity looks upon inadequacy of consideration as a mark of fraud or imposition; and where the inadequacy is so gross as to excite an exclamation, &c., it is of itself proof of imposition. If, for instance, there be such inadequacy of price as that it must be impossible to state it to a man of common sense without an exclamation at its inequality, a court of equity considers that a sufficient proof of fraud to set aside the conveyance. 1 Bro. C. C., 9, &c. If the inadequacy be such as to show that the person did not understand the bargain, or was so oppressed that he was *441 *gla(l to make it, knowing its inadequacy, that shows’ -* a command over him amounting to fraud. Heathcote v. Paignon, 2 Bro. C. C., 175 : Chesterfield v. Janssen, 2 Ves., 125. The deed cannot be supported by evidence of the natural love and affection cherished by the plaintiff for her granddaughter Marion, who is the wife of the defendant, Samuel R. Potter. The rules for determining upon a deed of sale, and a deed of gift are not the same in equity. Upon principle, therefore, where a deed purports to be a sale, the party interested therein cannot escape from the appearance of fraud by setting it up as a gift, and vice versa. Were this allowed, the court would be cheated, and its rules would be prevented or rendered unavailing by the arts of those very persons whom its rules were intended to reach. Though a deed may, in equity, be impeached by averments negativing the consideration 46 DECEMBER TERM, 1853. 44 Eyre et al. v. Potter et al. therein expressed, yet the converse of the proposition does not hold good, and a deed cannot be supported by evidence of a consideration different from that expressed in the deed. 2 Hovenden on Frauds, 103, 43, 14, and cases there cited ; vide 6 Johns. (N. Y.) Ch., 232; 2 P. Wms., 204; Clarkson v. Hanway, 3 P. Wms., 129, n.; Watt v. Green, 2 Sch. & L., 501; 2 Ves., 402; Chesterfield v. Janssen, 2 Ves., 125. Indeed, it may be said that, where a deed purports to be a valuable consideration, and the contrary is averred and proved, it is thereby falsified and discredited; and it would be dangerous, if not absurd, to admit proof of averments in its support as a gift. These consequences would follow, that after the plaintiff has falsified the deed, and established by evidence that he was imposed upon when he put his seal to a false pretence of a sale, the defendant might escape and retain the spoils by admitting the falsehood of the deed, and thereby withdrawing himself out of the rules of the court, and insisting upon his own falsehood as the basis of a right to support the deed as a gift. A deed which expresses a valuable consideration, and no other, when impeached for inadequacy of price, cannot be supported by any evidence of natural love and affection. Vide 2 Hov. on Frauds, 14, 43, 102, and the cases there cited; Newland on contracts, 359, 360; vide 2 Dev. (N. C.) Eq., 376; Jones v. Sasser, 1 Dev. & B. (N. C.), 452; 1 Dev. & B. (N. C.) Eq., 496; Chesson v. Pettijohn, 6 Ired. (N. C.), 121. It ought to be remembered that the consideration of natural love and affection is not only not expressed in the deed, but it has not been proved, nor is any thing secured in the deed to the separate use of the granddaughter of the plaintiff. There are many circumstances in this case, either admitted in *the answers or proved, which tend strongly to p.r show fraud, imposition, and undue influence, practised *-upon the plaintiff at the time of the execution of the deed. She was at the time an old woman. The deposition of her son, Joseph K. Eyre, taken on the 15th day of November, 1848, shows that she was then sixty-nine or seventy years of age, and that she was always of a very weak mind and incompetent to transact business ; and that her mind had been for many years, especially the last four or five years, materially affected by age, disease, and infirmity. And if any thing m addition were needed to show the incompetency and the imbecility of the complainant, it will be found in the allegation in Samuel R. Potter’s answer, that she said she knew all about her husband’s estate, and its value, and the value of 47 45 SUPREME COURT. Eyre et al. v. Potter et al. her own interest in it, at the very time when she was parting with that interest for a consideration so utterly inadequate. The same facts are in substance proved by the depositions of Emma L. Allibone, Maria Ashburner, Anna Worrell, J. L. Kay, E. C. Crowley, Josephine K. McCammon, Hannah B. Drummond. The same witnesses prove that the plaintiff had, at the date of the said conveyance, five children, one of them insane, and two of them in indigent circumstances. They also prove that she was a tender and affectionate mother, and by no means so destitute of sensibility, as the defendants and some of their witnesses have insinuated. The said deed bears date two days after the death of the husband of the plaintiff, before she could have an opportunity to reflect deliberately upon the very important step which she was about to take, before she could consult with her friends, and when her feelings must have been too much disturbed and agitated to enable her to act with care and caution in the disposition of her property. Her mind could hardly have been calm and composed immediately after the burial of her husband, whether she lived happily with him or not. She resided in the house of the defendant, Samuel R. Potter, and was without money enough in her pocket to pay for a piece of mourning. At such a time, and under such circumstances, the plaintiff might easily have been imposed upon by her step-son and the other defendant, and it seems she had no aid from any other person prior to the date of the conveyance. On Sunday morning no one was present but the defendant Potter and his wife, and when the agreement was entered into, nobody was present but the plaintiff and the defendant Potter. At the time when the deed was signed, no one was present but the plaintiff, the two defendants, and Mrs. Potter. *The depositions of Everett, Baker, London, and J others, show that the plaintiff was not the object of affection to the family of her deceased husband. There was unusual haste in making the contract and in the execution of the deed. The husband of the plaintiff died on Saturday, was buried on Sunday, and the contract was completed and the instrument signed on Monday morning. The said deed makes a disposition of all the property of the plaintiff. The conveyance was in a very high degree unwise and imprudent, as regards the plaintiff, and unjust and unnatural towards her children, two of whom were poor and one of them insane. A disposition of property so revolting to common sense 48 DECEMBER TERM, 1853 46 Eyre et al. v. Potter et al. and natural affection ought to be looked upon with suspicion. If the plainiiff married her late husband under the influence of the mercenary motives which have been attributed to her, the execution of the said deed would be no less extraordinary and unaccountable. If property was so dear to her, why should she dispose of it upon such ruinous terms, if she in fact understood what she was about ? The parties did not deal with each other upon equal terms. The defendant Potter was much more competent than the plaintiff to transact business, and was much better acquainted with the estate. He admits in his answer that he had had the management of a portion of his father’s property, to wit, the rice plantation, known as Point Peter, and Love Grove, and the hands belonging to the same. The defendant, Potter, misrepresented the value of the estate to the plaintiff, before she signed the deed. The defendant, Potter, says in his answer that, on Monday morning, 31st of May, 1847, the plaintiff said that she had concluded to sell her interest in her husband’s estate to him for the benefit of her granddaughter. How then does it happen that the property was not conveyed for the benefit of the granddaughter of the plaintiff? By what influence did she sign a deed contrary to her own conclusion and in violation of the agreement? Where, and when, and with whom, and for what price, did she consent to change her purpose ? This pretended consideration of love and affection for her granddaughter, at the expense of her more needy and equally beloved children, was probably introduced to save the agreement from the imputation of shocking inadequacy, but like all similar pretexts, it puts upon the deed a brand of fraud and a mark of surprise or imposition. Neither by general nor special words does this leading motive find a place in her deed, and yet she signed it, according to the statement of the defendant *Potter, gladly and eagerly. The name of Mrs. Marion Potter is not even mentioned in the deed. *- Again. The defendant, Potter, says the bargain was that he would pay her one thousand dollars in cash. How happens it that the writing only gave her his note without interest, and left her^obli^ed to borrow money from her granddaughter to Again. Said defendant says that the bargain was that he would “ give her board,” as a part of the price. How does it lappen that the covenants for her board and the other writings, do not recite this as a part of the price, but, on the con-r£^y» recite that she is to be boarded at the house of 'said e endant, simply because she “ deserved it,” thereby making Vol. xv.—4 49 47 SUPREME COURT. Eyre et al. v. Potter et al. it a voluntary covenant? And wherefore did plaintiff consent to turn her privilege of boarding with Marion into a condition that she was to board with Mr. Potter, no matter whither he might go Again. Said defendant says that the agreement was, that he was to “find her a servant.” Why is this omitted in the writings ? Again. The said defendant says that it was a part of his original agreement with the plaintiff, that she was to have her year’s allowance. And yet she conveys away her entire interest in the estate. The statements of the two defendants concerning the circumstances attending the transaction, do not in all respects agree with each other, and their statements are in many respects extraordinary and suspicious. The deed, dated June 21, 1847, is no confirmation of the deed previously executed by the plaintiff. It is not relied upon as a confirmation. But if it were relied upon as such, there is a ready answer. On the 21st of June, 1847, the defendant, Samuel R. Potter, was administrator of his father, Samuel Potter, and supposing his deed of the 31st of May, 1847, to be void, he was a trustee of the property in his hands, and by the established rules of a court of equity, this agreement could not stand for a moment, at least so far as the personal estate is concerned. In order to make an express confirmation available, it must appear that the party was then aware of his rights, and knew that the first transaction was impeachable. Lord Chesterfield n. Janssen, before cited; Boyd v. Hawkins, 2 Dev. (N. C.) Eq., 215. If it be competent to look beyond the deed itself for a consideration to support it, and if there be sufficient proof to show that natural love and affection for the wife of the defendant Potter constituted any part of the consideration, then the * deed, *dated 31st of May, 1847, ought to be considered 48 J as a gift so far as it conveys any thing over and above the value of the price paid or secured, and it ought to be governed by those rules which relate to voluntary conveyances. Competency of Evidence. It is insisted by the plaintiff that the deposition of Manger London, one of the defendants, is not competent, because his answers were written by him, before he came before the commissioners. , Plaintiff insists that the correspondence between herselt 50 DECEMBER TERM, 1853. 48 Eyre et al. v. Potter et al. and her children, after the execution of the deed, dated May-31, 1847, is competent. The defendant, Potter, in his answer says, that she re. ceived letters reproaching her before the 21st of June, 1847, The letters are thereby made evidence to disprove it. Defendant Potter said she loved none of her children; said letters are evidence to show the contrary. Said letters are evidence to discredit London, witness for the defendant, Potter. The counsel for the appellees made the two following points, before examining the case upon its merits: 1st. The rights of these very parties have been adjudicated upon in a State court. Potter v. Everett, 7 Ired. (N. C.) Eq., 152. 2d. All the children, and the grandchild of Samuel Potter, the deceased, intestate, who are his heirs at law, and next of kin, ought to be parties to this suit. Story, Eq. Pl., § 72 to 76, inclusive; Poor v. Clark, 2 Atk., 515; Mitf. Eq. Pl. by Jeremy, 164. As to the merits: These depend upon the pure principles of English equity. There is nothing in the jurisdiction of this court, or the laws of the State from which it comes, to give to it any peculiarity. And its solution involves, mainly, the question, what guardianship, either for relief or restraint against their own action, do courts of equity assume over persons of either sex, who are of mature age, of sound mind, and, in the case of women, not under coverture. The execution of the deed, which it is sought by this bill to set aside, being admitted, it must stand here, as in a court of law, unless there were circumstances attending its execution which establish fraud and surprise in its procurement. Ihe circumstances relied on are stated in the bill, from the lower part of page 2 to 5 of the record; and, as summed up in the brief of the plaintiff’s counsel, are, that on the 31st of May, 1847, when the deed was executed, she was sick, nervous, and*afflicted; without counsel; ignorant of her i-jmq rights, and of the value* of the estate of her husband ; *-not competent to transact business; that the defendants availed themselves of the advantage afforded by this, her con-n 1(T’ and surprised and defrauded her into the execution of ■ ie,$eed’ disposing of her whole worldly estate for a greatly inadequate consideration; and that the value of her interest ln J1®1* husband’s estate was misrepresented and underestimated by the defendants, Samuel R. Potter and London, who was his attorney. he answers of both defendants are directly responsive to 51 49 SUPREME COURT. Eyre et al. v. Potter et al. the bill, and both deny every material allegation in support of these charges, and explain every fact relied on to give them color. They deny that she was sick, nervous, or afflicted, to their knowledge, during the illness, or at the time of the death, of her husband, or at the time of the execution of the deed. On the contrary, they state circumstances, showing ordinarily good health and extraordinary indifference and composure. They deny that she was. ignorant of her rights, and of the value of the estate of her husband, and that she was not competent to transact business. They both state that she informed them, in conversation, that she had managed two estates of deceased persons in Philadelphia, before her marriage to Samuel Potter; that the defendant, London, expressly informed her of her legal rights, as the widow of her husband, before her execution of the deed; that she declared she knew what the estate was worth; verified this declaration by enumerating most of the articles of property of which it consisted, and said the whole was worth $130,000, and that her dower was worth $1,000 a year, (all of which, defendants allege is an overestimate,) but that a primary motive with her for making the conveyance, was to benefit her granddaughter, the wife of the defendant, Potter, and O O 7 77 himself. As to being without counsel, they respond, that she was cautioned by the defendant, London, as to the importance of the business, and advised to call in D. B. Baker, Esq., an eminent lawyer, and P. K. Dickinson, Esq., an eminent man of business, both of whom were near to her house, the former, the son-in-law, and the latter, a partner of her late husband; but that she declined, preferring to act on her own judgment, and desiring to keep the affair secret. They deny, secondly, that either of them misrepresented or underestimated the value of her interest in the estate of her husband, or advised or influenced her to make the conveyance in question; but, on the contrary, they aver, that the whole arrangement originated with, and was proposed by her first, while the funeral ceremonies of her husband were in progress, and was persevered in and carried out with perfect *-a-i composure and *deliberation. They deny that Lon-0 -J don was the attorney of S. R. Potter in general, or of the intestate Samuel Potter. The former states that he was averse to employing London as his counsel, in conducting the administration of his father’s estate, and only consented to retain him upon the advice of his brother-in-law, the aforesaid D. B. Baker, himself a lawyer. They state that she, on returning from her husband’s burial, requested London to 52 DECEMBER TERM, 1853. 50 Eyre et al. v. Potter et al. call and see her the next morning on particular business; that he did so call; that she then mentioned the sale she proposed to make of her interest in her husband’s estate to Samuel R. Potter, and gave him instructions to prepare the conveyances ; that whatever circumstances of secrecy attended his visits to her house, were occasioned by her special requests They admit that the pecuniary consideration recited in the deed was not equal to the interest thereby conveyed, but allege that the plaintiff was so told by both of them, and was well aware of that fact, as she then declared, from her own knowledge of the estate. They state that the plaintiff, at the time of its execution, was well satisfied with her deed, and so continued until, a few weeks thereafter, she received a letter from her relatives in Philadelphia, complaining that she had made no provision for her lunatic daughter, Mrs. Babcock. This becoming known to the defendant, Potter, he told the plaintiff if she was dissatisfied with what she had done, he would surrender the deed to her. She declined this; but it was then agreed that the defendant, Potter, should pay to the said Mrs. Babcock an annuity of $150 per year, to commence immediately on the death of the plaintiff, and that the plaintiff should therefore confirm the conveyance to him; that she then sent again for the defendant, London, gave him instructions for written instruments to carry this agreement into effect, and that the annuity bond being signed by the defendant, Potter, she then, to wit, on the 21st of June, 1847, by her solemn deed, reaffirmed the conveyance of the 31st of May preceding. They deny that this last arrangement was made by either of the defendants with a view to avoid odium, which had been incurred by them on account of the original conveyance; but the defendant, Potter, alleges, that he entered into it because the plaintiff had been liberal to him, was and expected to continue an inmate of his family, and to enable her to silence the reproachful clamors of her friends in Philadelphia; that, upon its being completed, she professed herself fully satisfied, and said her Philadelphia friends could no longer complain. Thus the parties are at issue, and the decree to be rendered depends wholly upon the finding of the facts as alleged by the one party or the other. The judges in the court below found m favor of the defendants. This being a court of errors in law, * will not reverse the decision there made upon a r-*r-i mere difference of opinion as to the conclusion to be *-drawn from the evidence upon the facts. But supposing the questions of fact to be retired here, what 53 51 SUPREME COURT. Eyre et al. r. Potter et al. evidence is there to sustain any material allegation in the bill, or to contradict any material averment in the answers ? That of the plaintiff consists mainly of the depositions of certain persons in Philadelphia, (for the most part her children and connections,) who depose that she had children by her first marriage, and manifested for them, in her intercourse, the usual family affection; that she was a delicate person, not of strong mind, and had some relatives who were lunatics; and that she could not transact business; that the defendant, Potter’s wife, is the daughter of a man of wealth, and has an estate independently of her father, and that the plaintiff had no estate, except her interest in the fortune of her husband. In addition to these, she has taken the depositions of certain persons in Wilmington, which are found in the record, to show of what her husband’s estate consisted, what was its value, the relations of friendship between S. R. Potter and London, and the state of London’s credit in 1847, &c. There is no witness who supports the allegations of her bill, which constitute her claim to be relieved, against her solemn deed, by the rules of justice administered in courts of equity. Namely, that at the time of its execution she was sick, run down with fatigue and watching, distressed, ignorant of her rights concerning her husband’s estate, and of the value thereof, in need of. counsel, which she would have had but for the fraudulent acts of the defendants; that the defendants, or either of them, misrepresented or underestimated the amount of the estate, almost all the articles of which are enumerated in her deed; or that they, or either of them, advised or urged her to make the conveyance to the defendant, Potter; or that the defendants conspired or colluded to defraud her. The bill should therefore be dismissed, for want of proof to sustain its material charges, which are contradicted by the answers of the defendants. The answers being directly responsive to the allegations and interrogatories of the bill in evidence for them, which must prevail, unless overborne by the testimony of two witnesses, or its equivalent. Story, Eq., 528; Lewis v. Owen, 1 Ired. (N. C.) Eq., 290; Arnswttrlhy v. Cheshire, 2 Dev. (N. C.) Eq., 456. But the defendants have, moreover, disproved the plaintiff’s charges by positive testimony. Their depositions show that the plaintiff was not sick, distressed, fatigued, or in anywise disconcerted by the sickness or death of her husband; that the defendant, Samuel R. Potter, was much grieved; that she was well acquainted with her *husband’s estate, and estimated it at itsfull value. That J she told a witness, on her return from her husband’s burial, on Sunday, that she had determined on the disposition 54 DECEMBER TERM, 1853. 52 Eyre et al. v. Potter et al. of her property as conveyed by this deed. That she had been reading the Revised Statutes the same day while the company was at the burial. That she made a similiar declaration to another witness, on the next morning, before London came to her house. That she afterwards expressed satisfaction with this arrangement, and gave good reasons for it: Namely, 1st, that she was much attached to Mrs. S. R. Potter, and intended to live with her; 2d, that she had made over her property to her children, at the time of marrying Mr. Potter, and thought it but right that his children should have his; 3d, that most of his property consisted in slaves, and she would not own one for any consideration. 4th, that the management of the property would be troublesome to her, and that the amount to be paid her by Potter was as much as she wanted. 5th, that Samuel R. Potter might be enabled to buy the Point Peter plantation, and thus have an ample provision for his wife. The deposition of D. B. Baker, taken by plaintiff, shows that.she was a person of bad disposition and temper, self-willed, and dictatorial. They prove, also, that she was content with the disposition of her property until she received a letter from her son, Joseph Eyre, in Philadelphia. That upon the new arrangement being made, by which an annuity was secured to her daughter, Mrs. Babcock, she was entirely satisfied, and deliberately ratified her conveyance, with a full knowledge of everything pertaining to the subject. This was on the 21st of June. In August ensuing, her son, Joseph Eyre, came to Wilmington, and she left with him for Philadelphia. Aware of the effect of these proofs, the learned counsel for the plaintiff devotes the main stress of his argument to the inadequacy of the consideration of the deed, as a ground of relief. It will be insisted that the inadequacy, though considerable, is not gross, and that, regard being had to the nature of the property, and the relative capacities of the plaintiff and Samuel R. Potter to render it profitable, the arrangement as a sale was not so disadvantageous to her as it has been represented. With this object, reference will be made to the inventory of the administrator. But suppose the inadequacy, as a question of pecuniary value, to be gross, it alone affords no ground for relief, and requires some other accompaniment to taint the deed with fraud. 2 Cox, 320 ; Coles v. Trecothick, 9 Ves., 246 ; Underhill v. Howard, 10 Ves., 219; Lord Thurlow, in Foxn. Macreth, 16 Ves., 512, 517; Story, Eq., 245; Burrowes v. Lock, 10 Ves., 471; G-reene v. Thompson, 2 Ired. (N. C.) Eq., 365; Moore v. Reid, Id., 580; Osgood v. Franklin, 2 Johns. (N. Y.) Ch., 23. There is 55 53 SUPREME COURT. Eyre et al. v. Potter et al. *rq-i *no such accompaniment here. On the contrary, it is J clearly shown that the pecuniary consideration was accompanied by that of affection. It is said that this circumstance cannot be taken into the account, because it only appears by parol evidence, and thus to prove it violates the rule that parol evidence cannot be received “ to vary, add to, or contradict ” a deed. The fallacy of this argument consists in applying a salutary rule in the construction of deeds, and the determination of rights under them, to inquire into the fraud or fairness of their execution; in fact, to the inquiry whether the alleged deed is a deed. If this circumstance attending the execution cannot be proved by evidence dehors the deed, what other can? How does the consideration appear to be inadequate, but by parol evidence ? Is it to be allowed to impeach but not to sustain ? In investigations of this kind nothing is excluded which shows the acts or motives of either party. That it is admissible for this purpose is considered as settled. Springs v. Haivks, 5 Ired. (N. C.), 33; 6 Ired. (N. C.) Eq., 38; 1 Phill, on Ev., 482, n. and cases cited ; 3 Stark. Ev., 1004, et seq. ; 1 Greenl. Ev., 408; 2 Story, Eq., 1531; Sugd. on Vend., 87 ; Potter v. Everitt, 7 Ired. (N. C.), 152; Hinde v. Longworthy, 11 Wheat., 199; Runyon v. Leary, 4 Dev. & B. (N. C.), 233. Even conveyances, voluntary on their face, may be shown by parol to have been for valuable consideration, and thus defeat the claims of creditors. Sugden, 438; Chapman v. Emery, Cowp., 278. And the eases are numerous where conveyances, absolute in their terms, have been allowed, by parol, to be shown to be mere securities for money. Streder v. Jones, 3 Hawks (N. C.), 423; 2 Dev. (N. C.), 558; 1 Ired. (N. C.) Eq., 369 ; 6 Id., 38. The cases cited by the plaintiff’s counsel on this point do not sustain his position. There is a well-established distinction between the cases in which a specific performance will be refused in equity, where a contract is executory, and those in which it will be rescinded being executed. The circumstances of this case may class it with the former, but not the latter. But, whatever may be thought in regard to the original transaction, there has been such complete recognition and confirmation on the part of the plaintiff that she cannot impeach her deed. Moore v. Reid, 2 Ired. (N. C.) Eq., 580; Chesterfield v. Janssen, 2 Ves., 125; Cole v. (xibbons, 3 P. Wms., 289. As to Competency of Evidence. London’s deposition was properly allowed as evidence. 56 DECEMBER TERM, 1853. 53 Eyre et al. v. Potter et al. After the certificate of the commissioners, dated April 14, 1849, of the execution of their commission, they were functi officio, and no other certificate of theirs can be heard. If they are to be *further heard, it must be upon oath as wit-nesses. But if their certificate of the 12th November, *-1844, is to be respected, the fact it sets forth is neutralized by their third certificate, on the same page that the irregularity of writing out the answers of witness, while out of their presence, was occasioned by themselves. No observation is deemed necessary on the complaint, that the plaintiff was not permitted to introduce as evidence the correspondence between herself and her children. Mr. Justice DANIEL delivered the opinion of the court. This is an appeal from a decree of the Circuit Court of the United States for the District of North Carolina, by which decree the bill of the appellant (the complainant in the Circuit Court) was dismissed with costs. The allegations in the bill, on which the interposition of the court was invoked, are substantially as follow: That Samuel Potter, deceased, the late husband of the complainant, died on the 29th of May, 1847, possessed of a large real and personal estate, consisting of houses in the towns of Wilmington and Smithville, in North Carolina, of a productive rice plantation, of an interest in one or more valuable saw-mills, of a large number of slaves, of a considerable amount of bank and railroad stocks, and of other personal property; that the complainant who, at the time of her husband’s death, was ignorant of the value of his property, had, from recent information, ascertained that the annual value of the real estate was more than -$6,000, perhaps equal to twice that sum, and that her share in her husband’s personal property was worth not less than $15,000; that by the laws of North Carolina the complainant, in addition to one year’s maintenance for herself and family, (in this instance amounting to not less than $1,000,) was entitled, in light of her dower, to one third of her husband’s real estate during her life, and to an absolute property in a child’s part, or one sixth of the personalty, her husband having left surviving him four children and one grandchild; that by the laws of the same State, she had the prior right of administration upon the estate of her husband, and thereby the control of his assets, and a right to all the legular emoluments resulting from that administration ; that ie complainant is an aged and infirm woman, predisposed o nervous affections, and wholly inexperienced in the transaction of business; that during the last illness of her hus-57 54 SUPREME COURT. Eyre et al. v. Potter et al. band, being overwhelmed by daily and nightly watchings and anxiety, she became ill; that, whilst she was thus sick and oppressed with affliction and infirmity, Samuel R. Potter, the son of her late husband, professing great sympathy and affection for the complainant, availing himself of her dis-tressed *and lonely condition, and of her ignorance of J the value of the estate, with which he was familiar, having been several years the manager of it, combined with a lawyer by the name of Mauger London to defraud the complainant, and to deprive her of her rights and interest in the estate, and succeeded in accomplishing this scheme in the following manner: In the prosecution of their plan they in the first place induced the complainant under an assurance that the measure would be in accordance with the wishes of her late husband, and would prove the best means of protecting and securing her interests, to relinquish to the said Samuel R. Potter, her right to administer upon her husband’s estate. In the next place by false representations as to the value of the estate, and the expense and trouble of managing it, they prevailed upon her to sell and convey to the said Samuel R. Potter, by a deed bearing date on the 31st of May, 1847, her entire interest in this wealthy and productive estate, for the paltry consideration of $1,000, and a covenant for an annuity of $600 during the complainant’s life; and that even this small allowance was not otherwise secured to the complainant than by the single bond of said Samuel R. Potter, for the sum of $2,000. That in the eagerness to effect their iniquitous purposes, the said Potter and London, in total disregard of her feelings and even of decency, did, on the day of her husband’s death and before his interment, urge her acquiescence in their scheme, and on that day or the day succeeding, accomplished it, by extracting from the complainant a deed bearing date on the 31st of May, 1847, conveying to Samuel R. Potter the complainant’s entire interest in her late husband’s estate, and the instrument of the same date, whereby she relinquished to the same individual her right to administer upon that estate. The bill makes defendants the said Samuel R. Potter and Mauger London ; charges upon them a direct fraud by deliberate combination, by misrepresentation, both in the suppression of the truth and the suggestion of falsehood, and in the effort to profit by the ignorance, the sickness, the distress and destitution of the complainant. The bill calls for a full disclosure of all the facts and circumstances attending the transactions therein alleged to have occurred ; prays that the deed of May 31st, 1847, from the complainant to said Samuel R. Potter may be cancelled; that the property thereby 58 DECEMBER TERM, 1853. Eyre et al. v. Potter et al. conveyed may be released and reconveyed to the complainant, and concludes with a prayer for general relief. It is now the office of this court to determine how far the foregoing allegations are sustained upon a proper construction of the pleadings, or upon the evidence adduced by either of the parties. *And here it may be proper to premise, that in the examination of the case made by the bill, it cannot be *- 00 considered as one of constructive fraud, arising out of some peculiar relation sustained to each other by the complainant and the defendants, and therefore to be dealt with by the law under the necessity for protecting such relation, but it is one of actual, positive fraud, charged, and to be judged of, according to its features and character, as delineated by the complainant, and, according to the proofs adduced to establish that character. Although cases of constructive fraud are equally cognizable, by a court of equity, with cases of direct or positive fraud, yet the two classes of cases would be met by a defendant in a very different manner. It seems to be an established doctrine of a court of equity, that when the bill sets up a case of actual fraud, and makes that the ground of the prayer for relief, the plaintiff will not be entitled to a decree, by establishing some of the facts quite independent of fraud, but which might of themselves create a case under a totally distinct head of equity from that which would be applicable to the case of fraud originally stated. In support of this position may be cited, as directly in point, the case of Price v. B er ring ton, decided by Lord Chancellor Truro, in 1851. Vide 7 Eng. Law & Eq., 254. The defendants, in this case, were clothed with no special function, no trust which they were bound to guard or to fulfil for the benefit of the complainant; they were not even the depositaries of any peculiar facts or information as to the subject matter of their transactions, or which were not accessible to all the world, and by an omission or failure in the disclosure of which, they could be regarded as perpetrating a Recurring to the pleadings in this case, there is not alleged in the bill one fact deemed material to the decision of this controversy, which is not directly met, and emphatically denied, by both the defendants. Although the age assumed for the complainant seems to be controverted by none of the parties, yet the assertions that, a ie period of her husband’s death, she labored under any unusual infirmity; that she was exhausted by fatigue and by anxious watchings at the bed of sickness, or was overwhelmed 59 56 SUPREME COURT. Eyre et al. v. Potter et al. with grief, or even discomposed by the event which severed forever her connection with her husband, are assertions directly met, and positively contradicted; and in further contravention of these statements by the complainant, are the averments that the intercourse of the complainant with her late husband, was of a very unhappy character, evincing not indifference merely, but signs of strong antipathy. Equally direct and positive are the denials in the answers of both the defendants, of the charges of *persuasion or induce-J ment of any kind, or of any concealment or misrepresentation moving from the defendants, by which the complainant was or could have been influenced; and it is expressly denied by each of the defendants, that any proposition was by them, or either of them, submitted to the complainant for the sale of her interest in the estate, or for the relinquishment of her right to the administration. These positive denials in the answers, being directly responsive to the charging part of the bill, the latter, by every rule of equity pleading, must be displaced by them, unless those denials can be overcome by evidence aliunde. But by the peculiar frame and structure of the bill, in this case, the complainant has imparted to the answers, a function beyond a mere response to the recitals or charges contained in the bill. The complainant has thought proper specifically to interrogate the defendants, as to the origin, progress, and conditions of the transactions impugned by her; and as to the part borne in them, both by the defendants and the complainant herself. By the answers to these interrogatories, the complainant must, therefore, be concluded, unless they can be overthrown by proofs. How stands the case, in this aspect of it, upon the interrogatories and the evidence ? The defendants, being called on to disclose minutely, and particularly, their knowledge of, and their own participation and that of the complainant in, the transactions complained of, declare, that when those transactions took place, the complainant was in her usual health; was in possession of all her faculties, was exempt from any of those influences, such as grief and depression, which might have rendered her liable to imposition; was in possession, likewise, of all the knowledge as to the subject-matter of the transactions requisite to judge of her own interests; that with such capabilities, and such knowledge, the complainant herself proposed the arrangement which was adopted, and although informed by both the defendants, that the consideration she proffered to receive was less than the value of her interests in the estate, she urged and insisted upon that arrangement, assigning for it, reasons, which are deemed neither 60 DECEMBER TERM, 1853. 57 Eyre et al. v. Potter et al. unnatural nor improbable, and which, although they might, to some persons, appear not to be judicious, she had the right, nevertheless, legally, and morally, to yield to. How does the history, thus given by the defendants, accord with the proofs in this cause ? And first as to the state of complainant’s health, and the condition of her mind and spirits as affected by the illness and death of her husband. Benjamin Ruggles, who says that he is acquainted with the parties, states that he was with the husband of the complainant *every day during his illness, (which lasted eight r#f-$ or ten days,) and sat up with him two nights; that he *- ™ saw the complainant every day; that she did not sit up either night that the witness was there ; that she exhibited no sign of distress at the sickness of her husband, nor devotod much of her time to him, nor showed any sign of grief at his death ; that on the night of her husband’s death, the complainant attended to getting his burial-clothes, which she handed to the witness, seeming calm and composed. The complainant was not sick during the witness’s stay. Josephine Bishop, also acquainted with the parties, was at the house of the deceased on the day of his death, returned there on the second day after that event, and remained three or four weeks. On the morning of witness’s return, the complainant, in a conversation, informed her that complainant intended to propose to the defendant, Samuel E. Potter, to make over to his wife all the complainant’s interest in her husband’s estate. Some two or three weeks after, the complainant said to the witness that she had sent for Mr. London to arrange her business for her, and felt greatly relieved and satisfied at the manner in which he had arranged it; that she had conveyed her interest in her husband’s estate to Samuel R. Potter, who was to give her two thousand dollars in cash, six hundred dollars a year during her life, to furnish her board and a servant, and would have given her more if she had asked it, but she was satisfied with the amount, which was as much as she would have use for. The complainant spoke of the defendant, London, in the strongest terms of approbation. She further remarked to the witness, that she knew her interest in the estate of her late husband was worth much more than she had asked for it. Yet at the time of her marriage with him, she had made over her own property to her children by a former marriage, and thought it nothing but right that his children should have the benefit of his property, besides that the greater part oi the property consisted of slaves, and she would not own 61 58 SUPREME COURT. Eyre et al. v. Potter et al. one for any consideration. Witness saw the complainant every day during the time she was at the house; she did not complain of ill health nor appear to be at all distressed; and witness had never seen her in better spirits. The conversations in which these declarations of complainant were made, were introduced by the complainant herself. Margaret H. Wade, who is acquainted with the parties, states that she was three or four times at the house of defendant during his illness, and remained three or four hours during each time. Witness saw the complainant once only in the room of her husband; she staid in an adjoining room. Witness did not perceive that the complainant was indisposed in any way, nor *did the complainant appear to be J grieved during the illness of her husband nor after his death. In a conversation with witness some three or four days before decedent’s death, the complainant asked the witness if she thought the decedent could live, and upon the reply of the witness that she did not think he could, the complainant observed that she was provoked at Samuel (the defendant) for forcing him to take first one thing and then another, “and make him live any how.” Afterwards, on board of the steamboat returning from Smithville from the funeral of the decedent, the complainant told the witness, that she had made over her property to Samuel R. Potter, or intended so doing, on account of his wife Marian ; that she was very fond of her, and wished to stay with her the residue of her life, though she did not know that her friends at the north would be willing that she should do so. Without a farther and more protracted detail of the testimony adduced on the part of the defendants, it may be sufficient merely to advert to the depositions of Julia and Caroline Everett, of Edwin A. Keith, and of Sterling B. Everett, (the last for many years the physician in the family of the decedent,) and of the complainant herself, as fully sustaining the averments in the answers of the defendants, and the statements of the witnesses previously named, in relation to the capacity of the complainant, to her disposition and deportment towards her late husband, the effect of his illness and death upon her health and spirits, her knowledge of her rights and interest in the subject of her transactions with the defendants, the origin and fairness of those transactions, the objects for which, and the means and instrumentality by which, they were consummated. Nor can it escape observation, as a circumstance of great if not of decisive weight, that all this testimony is derived from persons familiar with the parties, living upon the immediate theatre of the transactions 62 DECEMBER TERM, 1853. 59 Eyre et al. v. Potter et al. in controversy, many of them more or less acquainted with the subjects embraced by them, witnesses, all of them free from imputation on the score of interest, and against whose veracity or intelligence no exception is even hinted. Against an array of evidence like this, the question of equivalents or of exact adequacy of consideration cannot well be raised. The parties, if competent to contract and willing to contract, were the only proper judges of the motive or consideration operating upon them; and it would be productive of the worst consequences if, under pretexts however specious, interests or dispositions subsequently arising could be made to bear upon acts deliberately performed, and which had become the foundation of important rights in others. Mere inadequacy of price, or any other inequality in a bargain, we are told, is not to *be understood as constituting per se a ground to avoid a bargain in •-equity, for courts of equity, as well as courts of law, act upon the ground that every person-who is not, from his peculiar condition or circumstances, under disability, is entitled to dispose of his property in such manner and upon such terms as he chooses; and whether his bargains are wise and discreet or otherwise, or profitable or unprofitable, are considerations not for courts of justice, but for the party himself to deliberate upon. Vide Story, Eq., § 244, citing the cases of Griffiths v. Spratley, 1 Cox, 383; Gopis v. Middleton, 2 Madd., 409, and various other cases. Again, it is ruled, that inadequacy of consideration is not of itself a distinct principle of equity. The common law knows no such principle. The consideration, be it more or less, supports the contract. Common sense knows no such principle. The value of a thing is what it will produce, and it admits of no precise standard. One man, in the disposal of his property, may sell it for less than another would. If courts of equity were to unravel all these transactions, they would throw everything into confusion, and set afloat the contracts of mankind. Such a consequence would of itself be sufficient to show the injustice and impracticability of adopting the doctrine, that mere inadequacy of consideration should form a distinct ground for relief. Still, there may be such an unconscionableness or inadequacy in a bargain, as to demonstrate some gross imposition or some undue influence; and in such cases courts of equity ought to interfere, upon satisfactory ground of fraud; but then, such unconscionableness or such inadequacy should be made out as would, to use '.ln expressive phrase, shock the conscience, and amount in itself to conclusive and decisive evidence of fraud. Vide 63 60 SUPREME COURT. Eyre et al. v. Potter et al. Story, Eq., § 245-246, and 9 Ves., 246; 10 Id., 219; and other cases there cited. But the contract between the parties in this case should not be controlled by a comparison between the subject obtained and the consideration given in a mere pecuniary point of view; added to this, were the motives of affection for the wife of the grantee, the granddaughter of the grantor, a conviction in the latter of what justice dictated towards the children of the decedent in relation to his property; the prospect of ease and independence on the part of this elderly female; her exemption from the expense, the perplexities, and hazards.of managing a species of property to the management of which expense and energy and skill were indispensable ; property to the tenure of which she entertained and expressed insuperable objections. Here, then, in addition to the sums of money paid, or secured to be paid, we see con- -i siderations of great influence which, *naturally, justly, -* and lawfully, might have entered into this contract, and which we think cannot be disregarded in its interpretation, upon any sound construction of the testimony in the cause. Upon the first view of this case, it may, in the spectacle of the widow and the son bargaining over the unburied corpse of the husband and the father for a partition of his property, be thought to exhibit a proceeding revolting to decorum, and one, therefore, which a court of equity, equally with a court of morals, would be cautious in sustaining, or be inclined to condemn; yet, upon testing this proceeding by any principle of decency, as well as of law or equity, it is manifest that it could not be disturbed without benefit to the chief offender against such a test; for the evidence incontestably shows, that whatever in the conduct of the parties was inconsistent with the highest and most sacred relations in life —whatever may be thought to have offended against the solemnity and decorum of the occasion,—was commenced and pressed to its consummation by the plaintiff in this case. Tried, then, by this standard, she should be left precisely where she has placed herself. To avoid the consequences flowing from the acts of the complainant touching the matters of this controversy, the testimony of several witnesses, taken in the city of Philadelphia, has been introduced, to prove the mental as well as physical incompetence of the complainant. With respect to the character and purposes of this testimony, it may be remarked, that a position in a court of justice founded upon what is in effect the stultification of the person who assumes that position, is one to be considered with much diffidence, as 64 DECEMBER TERM, 1853. 61 O’Reilly et al. v. Morse et al. it admits in general the factum which it seeks to invalidate; and if the averments on which such position rests be true, the person occupying that position should be in court by guardian or committee. But in truth this testimony establishes no such position, either directly or inferentially, in reference to the complainant. In the first place, all these witnesses resided in a different State, and at the distance of many hundreds of miles from the complainant; and not one of them appears to have had any intercourse with her or to have seen her even for a series of years preceding the contract which it is essayed to vacate; nor to have had any knowledge of the existence of that contract until after its completion; nor of the state of mind or of the health of the complainant at the period at which that contract was found. In addition to this ignorance of these witnesses, of the transaction under review, and of all the circumstances surrounding it, there is no fact stated by one of them which amounts to proof of incapacity on the part of the complainant to comprehend the character of her acts, and of the legal consequences incident to *them ; and much less do they establish, as to her, such an aberra- L tion or imbecility of mind as would justify a presumption, and much less a legal conclusion, against the validity of any and every act she might perform. To such a conclusion only could the general expressions of opinion and belief of these witnesses apply, and such a conclusion they come very far short of establishing. We are therefore of opinion, that the decree of the Circuit Court should be affirmed, and the same is hereby affirmed with costs. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of North Carolina, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs. Henry O’Reilly, Eugene L. Whitman, and W. F. B. Hastings, Appellants, v. Samuel F. B. Morse, Alfred vail, and Francis O. J. Smith. orse was the first and original inventor of the electro-magnetic telegraph, or which a patent was issued to him in 1840, and reissued in 1848. His in-,Jn-E<10n,wa? Pri°r to that of Steinhiel of Munich, or Wheatstone or Davy of England. J Vol. xv.—5 65 62 SUPREME COURT. O’Reilly et al. v. Morse et al. Their respective dates compared. But even if one of those European inventors had preceded him for a short time, this circumstance would not have invalidated his patent. A previous discovery in a foreign country does not render a patent void, unless such discovery or some substantial part of it had been before patented or described in a printed publication. And these inventions are not shown to have been so.1 Besides, there is a substantial and essential difference between Morse’s and theirs; that of Morse being decidedly superior. An inventor does not lose his right to a patent because he has made inquiries or sought information from other persons. If a combination of different elements be used, the inventors may confer with men as well as consult books to obtain this various knowledge.2 There is nothing in the additional specifications in the reissued patent of 1848, inconsistent with those of the patent of 1840. The first seven inventions, set forth in the specifications of his claims, are not subject to exception. The eighth is too broad and covers too much ground. It is this. “ I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specifications and claims ; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, signs or letters at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.”3 The case of Neilson and others v. Hartford and others, in the English Exchequer Reports, *examined; and also the American decisions. The acts of -I Congress do not justify a claim so extensive. But although the patent is illegal and void so far as respects the eighth claim, yet the patentee is within the act of Congress, which gives him a right to disclaim, and thus save the portion to which he is entitled. No disclaimer having been entered before the institution of this suit, the patentee is not entitled to costs.4 In 1846 Morse obtained a second patent for the local circuits, which was reissued in 1848. It is no objection to this patent that it was embraced in the eighth claim of the former one, because that eighth claim was void. Nor is it an objection to it, that it was an improvement upon the former patent, because a patentee has a right to improve his own invention. This new patent and its reissue were properly issued. The improvement was new, and not embraced in the former specification. These two patents of 1848, being good with the exception of the eighth claim, are substantially infringed upon by O’Reilly’s telegraph, which uses the same means both upon the main line, and upon the local circuits.5 1 S. P. Smith v. Ely, post, *137; Parker v. Stiles, 5 McLean, 44 ; Swift v. Whisen, 3 Fish. Pat. Cas., 343. See U. S. Rev. Stat., § 4923. And see Judson v. Cope, 1 Bond, 327; Hide and Leather $-c. Co. v. Amer. Tool frc. Co., A Fish. Pat. Cas., 284. 2 S. P. Agawam Co. v. Jordan, 7 Wall., 583, and cases cited at p. 603 n. But if the idea of the principle were, without being executed, suggested to him by another, he cannot claim to be sole inventor. Thomas v. Weeks, 2 Paine, 92. S. P. Matthews vj.Skates, 1 Fish. Pat. Cas., 602. 3 A mere principle, or an exclusive right to use a new power, is not pa- 66^ tentable, see note to Le Roy v. Tatham, 14 How., 156. 4 S. P. Seymour v. McCormick, 19 How., 96. 5 See Smith v. Ely, post, *137; Gage v. Herring, 17 Otto, 646; Milligan frc. Glue Co. v. Upton, 1 Bann. & A., 500 ; Union Paper Collar Co. v. White, 2 Id., 64; s. c., 11 Phil. (Pa.), 481; Odiorne v. Denny, 3 Bann. & A., 291; Perry v. Starrett, Id., 489; Burdett v. Estey, 4 Id., 22; M’Millin v. Rees, 5 Id., 273; Yale Lock Manuf. Co. v. Sco-vill Manuf. Co., Id., 529; Smith v. Merriam, 6 Fed. Rep., 718 ; Amer. Bel Telephone Co, y. Spencer, 8 Id., 512; Palmer v. Gatling Gun. Co., Id., 516; DECEMBER TERM, 1853. 63 O’Reilly et al. v. Morse et al. (Jfr. Justice Curtis') having been of counsel, did not sit in this cause. This was an appeal from the Circuit Court of the United States for the district of Kentucky, sitting as a Court of Equity. It is difficult to make a fair report of this case without writing a book. The arguments of counsel would fill a volume by themselves. The history of the case was drawn up by the learned Judge, who presides over the District Court of the United States in Kentucky, and whose decree was under review. Permission has been given by Judge Monroe that the reporter may use his statement as preliminary to this report, and he avails himself with pleasure of this kindness; because, although the narrative is occasionally interspersed with the opinions which induced the judge to decree an injunction in favor of Morse, yet the history is given with great precision and clearness. The following statement is extracted from the opinion of Judge Momoe : The complainants, in their bill, allege that Samuel F. B. Morse, one of them, was the true and original inventor of the Electro-Magnetic Telegraph, worked by the motive power of electro-magnetism, and of the several improvements thereon, by which intelligence which is in one place is transmitted to other distant places, and that by the letters-patent of the United States, duly issued to him, Samuel F. B.-Morse, and by his partial assignments to F. O. J. Smith and Alfred Vail, the other complainants, they together are lawfully invested with the exclusive right of constructing and employing such telegraph for such purpose, throughout the United States, for the terms in the letters-patent mentioned, and which have not yet expired—and they exhibit the letters-patent. They show that the practicability and great utility of the invention was fully established by the telegraph con- pgq. structed under the superintendence of Morse, by means *-ofan appropi iation made by the Congress of the United States ver PurP°se, and put in operation between the cities of Washington and Baltimore, in the year 1844. that afterwards there had been constructed, by the agency and means of joint-stock companies, promoted by the complainant, and operating under contracts and license of the patentee, Morse and his assignees, telegraphs along lines, v- Nicholson File Id., 569; Mackay v. Jackman, Id., Co<’ Id., 820; Tyler v. Galloway, 12 619. 67 64 SUPREME COURT. O’Reilly et al. v. Morse et al. amounting, in the aggregate, to upwards of four thousand five hundred miles, whereby telegraphic communication was established between the principal cities of the United States, from New Orleans to Boston; and that there were now in progress of construction, numerous additional and other lines, under contracts with them, for more widely extending the benefits of the invention, and they believe that if they are protected in the lawful use of their rights, every section of the United States will, in a short time, have the benefits of their improvements in telegraphic correspondence. They represent that, in all the lines of telegraphic communication now in successful operation in the United States in transmitting intelligence by means of electro-magnetism, the improvement of S. F. B. Morse, or the chief and essential principles and parts thereof, are employed. They show that they had caused to be established, a line of telegraphic communication from Louisville, by way of Frankfort and Lexington, to Maysville, Kentucky, which was in successful operation. They represent that they had caused to be constructed, lines of posts and wires from Louisville in the district of Kentucky, by way of Bardstown, Glasgow, and Scottsville, in Kentucky, and thence by way of Gallatin to Nashville, in the district of Tennessee, for the transmission of intelligence, by means of their improved telegraph; and that they had expended great sums of money therein; and that this line is in the extension to New Orleans, State of Louisiana; and is connected by another line, with Memphis, Tennessee; and that large sums of money will be expended in this work; and all the lines in a short time completed, and the assignments. They represent that their rights have been repeatedly and explicitly acknowledged and admitted in divers ways and by individuals and large bodies of associated citizens in various sections of the United States; that these had treated with them for the purchase of their rights, or parts thereof, and of licenses to use their patented improvements; and that they had made extensive sales, or licenses, to use them to com-panies and individuals, upon various lines, and amongst others, to the New York, Albany, and Buffalo line; the Washington and New York line; the New York and Boston line; the Washington and Petersburg line; the line from Petersburg to New Orleans; besides numerous shorter and side lines. They state that they had been thus in the successful and uninterrupted exercise of the rights granted to them by the letters-patent of the United States, and had been in nowise Q8. DECEMBER TERM, 1853. 65 O’Reilly et al. v. Morse et al. disturbed therein, until, by the operations of the defendant, O’Reilly, and the committing of the wrongs presently mentioned, by him and his co-defendants. This defendant, O’Reilly, they state, had, as early as 1845, entered into a contract with the complainants, and another, then having an interest in the patent, whereby he, O’Reilly, acknowledged their rights; and that he had afterwards, in various ways, and for a long period of time, manifested his acquiescence in, and admissions of, the rights and privileges of them, the complainants, and even insisted on his right to the use of them himself, under his contract with them; that he had, under this contract and his claims under it, in fact, used and employed the improved telegraph of the complainants, and persisted in such, his claim, to employ it on all the lines embraced by his contract, without questioning the validity of their patents. But, They allege that this defendant, Henry O'Reilly, had, by himself, his agents and servants, constructed a line of posts and suspended metallic wires thereon, from the city of Louisville, in the District of Kentucky, by way of Bardstown, to Nashville, in the State of Tennessee, and well knowing all the facts by the complainants set forth, he and his co-defendants had worked and employed upon said line, a telegraph substantially the same with the Electro-Magnetic Telegraph, invented by the complainant, Morse, and in his patents mentioned, against the will and without any authority from them, the complainants. They show that the terms of the contract, under which O’Reilly claimed their right to the use of the telegraph, on certain other lines where be employed it, did not extend to any country north of the Ohio river, and that there was no color for any claim by the defendants to the use thereof, within the District of Kentucky, or on any part of the lines by them lately constructed. They represent, especially, that the defendants, in the operation and working of their line of telegraph, so by them constructed, used and employed instruments, apparatus, and means, which are, in the material, substantial, and essential parts. thereof, so upon the principle and plan of the said several improvements patented by the complainant, Morse, or the plan and principle of some of said improvements, and not other or different. And, They state, that by such means the defendants, their servants and agents, had been for the space of *-than four months past, and were still, transmitting intelligence over said line, for any person who desired the same; and for such service, had been, and are yet, receiving 69 66 SUPREME COURT. O’Reilly et al. v. Morse et al. compensation from the persons for whom the same is performed ; all which they allege is in violation of the rights granted by the letters-patent, or of some of the parts thereof. They further represent, that the defendant, O’Reilly, was extending the line from Nashville to New Orleans, and had extended it to Memphis, and was operating upon the last mentioned line to Memphis, in violation of the rights of them, the complainants, by the use of their patented improvements, or the principal and essential parts thereof; and that he had declared his intention of completing the other line from Louisville to New Orleans, and of then employing the same instruments as he was then using on the line from Louisville to Nashville. They state that they are informed that the defendants sometimes give out in speeches, that the patents of the complainant, Morse, are void; and at other times, give out and pretend that the machinery and apparatus which they use for the transmission and the reception of the intelligence upon the said line, is a distinct and separate invention, which they, the complainants, are informed the defendants call the Columbian Telegraph: Whereas, the complainants charge that the patents are good and valid in law, and that the defendant, O’Reilly, by his contract with the patentee, and by his having exercised, and his persisting in his claim to exercise, under it, the exclusive privileges by the patents granted, is estopped from denying their validity. And, That the said pretended new invention is, in its essential principles, identical with, and upon, the plan of the patented improvements of Morse, and that the use of the same is a violation and infringement of the patent issued to the complainant, Morse. They allege that the defendants had received, and were then receiving, considerable sums of money for transmitting intelligence on the line from Louisville, within the District of Kentucky, in violation of the rights of the complainants; and they complain that the defendants had, by their unlawful operations, greatly disturbed them in the lawful exercise of their rights, so granted and held by them, and had caused a great diminution of the business of them, the complainants, on their line of telegraph, which they had caused to be constructed, and had now in operation within the District of Kentucky; and that the defendants refuse to desist from such violation of the complainants’ rights. Wherefore, ,/>»-] *The complainants pray that the defendants, by an J order, and the process of the court, may be enjoined 70 DECEMBER TERM, 1853. 67 O’Reilly et al. v. Morse et al. from hereafter using or employing such telegraphs in the violation and infringement of the rights of them, the complainants, within the District of Kentucky ; that they may be compelled to account for the money received by them in consideration of their unlawful operations and wrongful exercise of the rights, privileges, and property of the complainants; and that on due proceeding and final hearing, such order of injunction may be made final and effectual; and that the complainants may have such other relief as their case may require. And, They propound numerous interrogatories, framed on all the material allegations of the bill, and pray that each defendant may be compelled to answer, on his oath, such as are for him designated, and, to this end, and that they may have the relief which shall be adjudged them, they pray the writ of subpoena. Ansiver and Grounds of Defence. The defendants appeared by their counsel, and admitted that they had sufficient notice. O’Rbxlly read his answer to the complainants’ bill. The respondent admits the contract with the complainants, of 1845, stated in the bill, and seems to admit that he had used, under it, portions of the “ machine or combinations ” described in the patent to Mr. Morse, of 1840; but denies he had used others under this contract. He says he was not scientific, and had not seen the patent until after the complainants had alleged he had forfeited his contract, and instituted a suit to have it vacated; and insists that he is not estopped to deny the validity of the patents. He sets up no defence under this contract, and disclaiming any license from the complainants in respect to the line of telegraph in question, answers, that he believes, on grounds which he sets forth, that Mr. Morse is not the original and first inventor of the telegraph described in his patents, and insists that his patents are, on that ground, and upon their face, and for other causes he states, null and void. He admits the construction and operation of the lines of telegraph in Kentucky, and elsewhere, by himself and others ; but denying that the instruments employed on them are within the description of the complainants’ patents, even on the supposition of their validity, denies the infringement. But other grounds of defence, not presented by the answer, assume(^ *n arSument 5 and the matter of the answer '1A be more fully stated under the several heads of the whole 71 67 SUPREME COURT. O’Reilly et al. v. Morse et al. defence. The defendants all united in opposition to the motion. *The parties respectively read, without objection, a J great mass of documentary proof, in support of their positions, and a model of the telegraph described in the letters-patent, to Mr. Morse, and of the telegraph employed, and proposed, to be employed by the defendants, was exhibited and subjected to the application of the proofs, the explanation of the parties, and the inspection of the tribunal. The grounds of defence presented by the answer of O’Reilly, and assumed on the proofs, will be comprehended under these heads of primary division: I. The complainant, Morse, was not the true and original inventor of this telegraph. II. The letters-patent to him are null and void upon their face, and for other causes dehors. III. The telegraph constructed and employed by them, the defendants, is substantially and in law, different from the telegraph described in the letters-patent, to Morse, and of which he can lawfully claim the exclusive employment: And, therefore, on the supposition of the validity of the patents to any extent, there has been no infringement. IV. The case on the pleadings and proofs, is not one, whatever might be considered of it on a final hearing of the bill, which will justify an order for injunction presently. These subjects in their order. Is Mr. Morse the original inventor of this telegraph, and of the several improvements thereon described in his letters-patent ? It is necessary that we now ascertain and settle, what is the thing which was invented; and to this end it will be most convenient to begin at its conception, and accompany it in its progress down to its present state of apparent maturity and completeness. History of the Invention. Its conception is fixed by Mr. Morse himself, in October, 1832, on board the packet ship “Sully,” on her passage from Havre, France, to New York. He says that he was by profession, a historical painter, and had, in 1829, gone to Europe for perfecting himself in that art; that on his return home, in October, 1832, there were among the passengers in the ship, the Hon. William C. Rives, Minister of the United States to the Court of France, Dr. C. T. Jackson, James Fisher, Esq., of Philadelphia, William Constable, Esq., and other gentlemen of extensive reading and 72 DECEMBER TERM, 1853. O’Reilly et al. v. Morse et al. 68 intelligence; and that soon after the voyage commenced, the then experiments and discoveries in relation to electro-magnetism, and the *affinity of’electricity to magnetism, or their probable identity, became a subject of conver- h sation. In the course of this discussion, it occurred to him that, by means of electricity, signs representing figures, letters, or words, might be legibly written down at any distance, and that the same effect might be produced by bringing the current in contact with paper saturated with some saline solution. These ideas took full possession of his mind, and during the residue of the voyage he occupied himself, in a great measure, in devising means of giving them practical effect. Before he landed in the United States, he had conceived and drawn out in his sketch book, the form of an instrument lor an electro-magnetic telegraph, and had arranged and noted down a system of signs composed of a combination of dots and spaces, which were to represent figures; and these were to indicate words to be found in a telegraphic dictionary, where each word was to have its number. He had also conceived and drawn out the mode of applying the electric or galvanic current, so as to mark signs by its chemical effects. This is the account of the inventor himself; but it is supported by the testimony of disinterested witnesses. Mr. Rives, under date of September 27, 1837, addressing himself to Mr. Morse, says: “ I remember perfectly, that you explained to me the idea of your ingenious instrument, during the voyage which we made together in the autumn of 1832. I also remember that during our many conversations on this subject, I suggested several difficulties to you, and that you obviated them with promptness and confidence.” Captain Pell, the commander of the ship, says, on the same day, addressing himself to Mr. Morse : “ When I examined your instrument a few days since, I recognized in it the same mechanical principles and arrangements which I had heard you explain on board of my vessel in 1832.” And, It appears by the depositions of two brothers of Mr. Morse, that on their meeting him on board the ship, immediately she had moored at New York, the greeting had hardly passed between the brothers, and before they had reached the house of one of them, which they immediately proceeded to from fh he announced to them his discovery, and told them v during his voyage, made an important invention, which had occupied almost all his time on ship-board, one that 73 69 SUPREME COURT. O’Reilly et al. v. Morse et al. would astonish the world, and of the success of which he was perfectly sanguine ; and that he said this invention was a means of communicating intelligence by electricity, so that a *701 *message could be written down in character, in a J permanent manner, at any distance ; and he took from his pocket and showed them, in his sketch-book, a representation of his invention. And this was the invention in October, 1832. Mr. Morse further says : — “ Immediately after his landing in the United States, he communicated his invention to a number of his friends, and employed himself in preparations to prove its practicability and value, by actual experiment. To that end, he made a mould, and cast, at the house of his brother, in New York, before the commencement of the year 1833, a set of type, representing dots and spaces, intended to be used for the purpose of closing and breaking the circuit in his contemplated experiments.” And this statement is also supported by other testimony. But he was unable to proceed, for the want of money, to purchase the materials for a galvanic battery and wire, and was compelled, for subsistence, to return to his pencil; and having been led, in pursuit of employment, from place to place, from 1832 to the latter part of 1835, he had no opportunity of making experiments of his invention. But, he affirms, he never lost faith in its practicability, or abandoned his intention of testing it as soon as he could command the means. “ In 1835, he was appointed Professor in the New York city University, and about the month of November, in that year, occupied rooms in the University buildings. Here he immediately commenced, with very limited means, to experiment upon his invention. “ His first instrument was made up of an old picture or canvas-frame fastened to a table; the wheels of an old wooden clock moved by a weight to carry the paper forward; three wooden drums, upon one of which the paper was wound and passed thence over the other two ; a wooden pendulum suspended to the top piece of the picture or stretching frame, and vibrating across the paper as it passed over the centre wooden drum; a pencil at the lower end of the pendulum in contact with the paper ; an electro-magnet fastened to a shelf across the picture or stretching frame, opposite to an armature made fast to the pendulum; a type rule and type for closing and breaking the circuit, resting on an endless band, composed of carpet binding, which passed over two wooden rollers 74 DECEMBER TERM, 1853. 70 O’Reilly et al. v. Morse et al. moved by a wooden crank, and carried forward by points projecting downwards into the carpet binding; a lever with a small weight on the upper side, and a tooth projecting downwards at one end, operated on by the type and a metallic fork, also projecting downwards, over two mercury cups; at the other end a galvanic battery of one *cup, and a short circuit of wire embracing the helices of the elec- *-tro-magnet, connected with the positive and negative poles of the battery, and terminating in the mercury cups. “ When the instrument was at rest, the circuit was broken at the mercury cups. As soon as the first type in the type rule, (put in motion by turning the wooden crank,) came in contact with the tooth on the lever, it raised that end of the lever and depressed the other, bringing the prongs of the fork down into the mercury, thus closing the circuit. The current passing through the helices of the electro-magnet, caused the pendulum to move and the pencil to make an oblique mark upon the paper, which, in the mean time, had been put in motion over the wooden drum. The tooth in the lever falling into the space between the two first types, the circuit was broken, when the pendulum returned to its former position, the pencil making another mark as it returned across the paper. Thus as the lever was alternately raised and depressed by the points of the type, the pencil passed to and fro across the strip of paper, passing under it, making a mark resembling a succession of V’s, the points only, of which however, were considered as telegraphic signs. The spaces between the types caused the pen to mark horizontal lines, long or short, in proportion to their own length. “With this apparatus, made as it was, and completed before the first of the year 1836, he was enabled to mark down, intelligibly, telegraphic signs; and having arrived to that point, he exhibited it to some of his friends early in that year, and first of all, to Professor Leonard D. Gayle, who was a colleague Professor in the University. “ Here was an actual operation of the instrument, and a demonstration of its capacity to accomplish the end of the invention.” And, This statement is fully supported by the affidavit of Dr. Gayle. He says: “ That in the month of January, in the year one thousand nf hundred and thirty-six, I was a colleague Professor in 1 Sniversity city New York, with Professor Sam-Ue av .-Morse, who had rooms in the University buildings, on Washington Square, in said city. That during the said month of January, of the year aforesaid, the said Professor 75 71 SUPREME COURT. O’Reilly et al. v. Morse et al. Morse invited me into his private room, in the said University, where I saw for the first time, certain apparatus, constituting his Electro-Magnetic Telegraph. The invention at that time consisted of the following pieces of apparatus.” Here the witness gives a full description of the apparatus, and of its operation, and of the result, and this result was the making of the permanent and legible record. And, *7Q-i *This was the state of the invention in January, 1836. Thus far it had not been ascertained what was the limit of the magnetic power, and therefore it was not known on what length of wire it would be found of sufficient force to make the record, and there had been no means devised of extending the operation, further than the magnetic current of one battery would be effectual. But this matter had not escaped the attention of Mr. Morse, and he had been devising means for the supply of whatever defect might be found in this respect. He says: “Early in 1836, he procured forty feet of wire, and putting it in circuit, found that his battery of one cup, was not sufficient to work his instrument. This result suggested to him the probability that the magnetism to be obtained from the electric current would diminish in proportion as the circuit was lengthened, so as to be insufficient for any practical purpose at great distances; and to remove that probable obstacle to his success, he conceived the idea of combining two or more circuits together, each with an independent battery, making use of the magnetism of the first to close and break the second; that of the second to close and break the third, and so on. “His chief concern, therefore, in his subsequent experiments, was to ascertain at what distance from the battery, sufficient magnetism could be obtained to vibrate a piece of metal to be used for that purpose, knowing that if he could obtain the least motion at the distance of eight or ten miles, the ultimate object was within his grasp.” A mode of communicating the impulse of one circuit to another analogous to the receiving magnet now in use, was matured early in the spring of 1837, and then exhibited to Professor Gayle, his confidential friend. And, This statement is also fully confirmed by the statement of Dr. Gayle. He says:— “ It was early a question between Professor Morse and myself, where was the limit of the magnetic power to moA-e a lever? I expressed a doubt whether a lever could be moved by this power at the distance of 20 miles, and my settle 76 DECEMBER TERM, 1853. 72 O’Reilly et al. v. Morse et al. conviction was, that it could not be done with sufficient force to mark characters on paper at 100 miles distance. To this, Professor Morse was accustomed to reply, ‘ If I can succeed in working a magnet ten miles, I can go around the globe.’ The chief anxiety, at this stage of the invention, was to ascertain the utmost limits at which he, Morse, could work or move a lever by magnetic power. He often said to me, ‘ It matters not how delicate the movement may be, if I can obtain it at all, it is all I want.’ Professor Morse often referred to the number of stations which might be required, and which he observed would *add to the complica- r#7o tion and expense. The said Morse always expressed L his confidence of success in propagating magnetic power through any distance of electric conductors which circumstances might render desirable. His plan was thus often explained to me: ‘ Suppose,’ said Professor Morse, 4 that in experimenting on twenty miles of wire, we should find that the power of magnetism is so feeble that it will but move a lever with certainty a hairs breadth, that would be insufficient, it may be, to write or to print, yet it would be sufficient to close and break another, or a second circuit 20 miles further, and this second circuit could be made in the same manner, to close and break a third circuit, and so on around the globe.’ “ This general statement of the means to be resorted to, now embraced in what is called the Receiving Magnet, to render practical, writing or printing by telegraph, through long distances, was shown to me more in detail, early in the spring of the year 1837, (one thousand eight hundred and thirtyseven,) and I am enabled to approximate the date very nearly, from an accident that occurred to me, in falling on the ice formed of late snow in the spring of that year. Ine accident happened on the occasion of removing to Professor Morse’s rooms in the New York University, some pieces of apparatus to prepare a temporary receiving magnet. . “ The apparatus was arranged on a plan substantially as indicated in the drawings on sheet 2, accompanying this affidavit. 1 is a battery at one terminus of a line of conductors representing 20 miles in length, from one pole of which the conductor proceeds to the helix of an electro-magnet at the other terminus, (the helix forming part of the conductor) ; from thence it returns to the battery, and terminating in a mercury cup o, from the contiguous mercury cup p, a wire proceeds to the other pole of the battery. When the fork of he lever c, unites the two cups of mercury, the circuit is complete, and the magnet b, is charged and attracts the armature 77 73 SUPREME COURT. O’Reilly et al. v. Morse et al. of the lever d, which connects the circuit of battery 2 in the same manner, which again operates in turn lever c, twenty miles further, and so on. “ This I depose and say, was the plan then and there revealed and shown to me by the said Professor Morse, and which, so far as I know, has constituted an essential part of his Electro-Magnetic Telegraph from that date till the present time.” The diagram referred to by the witness, is attached to the deposition, and exhibits the combination of the circuits of electricity claimed by Mr. Morse, as a part of his invention. Their construction is fully described, and their operation having been witnessed by the deponent, is described in his deposition. And, This was the state of the invention earlv in the spring of 1837. *It fully appears that the completing of the inven-' -* tion had been retarded by the want of means by Mr. Morse. But in the spring of this year he appears to have been excited by the publication of an account of the invention of a telegraph by two French gentlemen, M. Gonon and Servel, which it was at first apprehended, from the terms of its announcement, was no other than the Electro-Magnetic Telegraph; but which afterwards turned out to be only a form of the common telegraph formerly in use, and he consented to a notice being taken in one of the newspapers of New York, of his invention, and renewed and increased his exertions to perfect and demonstrate its great superiority and value. He was assisted by his fellow Professor, Dr. Gayle, in trying experiments, and in consideration thereof, and of his further assistance in such work, he presented him an interest in the invention, and by the united work of the two, from April to September, they were enabled to exhibit it in an improved form. In the latter part of August, Dr. Gayle states the operations of the instrument were shown to numerous visitors, in the University. And he continues: “It was on Saturday, the second day of September, 1837, that Professor Dauberry, of the English Oxford University s being on a visit to this country, was invited, with a few friends, to see the operations of the Telegraph in its then rude form, in the Cabinet of the New York City University, where it then had been put up, with a circuit of 1,700 feet of copper wire, stretched back and forth in that long room. I well remember that Professor Dauberry, Professor Torrey, and Mr. 78 DECEMBER TERM, 1853. 74 O’Reilly et al. v. Morse et al. Alfred Vail, were present among others. This exhibition of the Telegraph, although of very rude and imperfectly constructed machinery, demonstrated to all present, the practicability of the invention; and it resulted in enlisting the means, the skill, and the zeal of Mr. Alfred Vail, who early the next week called at the rooms and had a more perfect explanation from Professor. Morse, of the character of the invention.” “ The doubt to be dispelled in Mr. Vail’s mind, as he then stated, and has since frequently stated, was, whether the power by magnetism could be propelled to such a distance as to be practically effective. This doubt was dissipated in a few minutes’ conversation with Professor Morse ; and I have ever been under the full conviction that it was the means then disclosed by Professor Morse to Mr. Vail, to wit, the plan of repeating the power of magnetism at any distance required, which I have stated, that induced Mr. Alfred Vail and his brother, George Vail, at once to interest themselves in the invention, and to furnish Professor Morse with the means^ material, and labor for an experiment on a larger scale.” And, l$*This was the state of the invention in September, £*75 Mr. Morse accordingly proceeded to have constructed a new, larger, and more perfect instrument for exhibition on an application for a patent to Washington. Caveat. In the mean time, on the — day of October, 1837, in order to protect his right to his invention, he filed his caveat in the* Patent Office. It is in these words: “ To the Commissioner of Patents. The petition of Samuel F. B. Morse, . . . represents:— Ihat your petitioner has invented a new method of transmitting and recording intelligence by means of electro-magnetism, which he denominates The American Electro-Magnetic Telegraph, and which he verily believes has not been known or used prior to the invention thereof by your petitioner. Your petitioner further states, that the machinery for a full, practical display of his new invention is not yet completed, and he ercfore prays protection of his right till he shall have matured the machinery; and desires that a caveat for that purpose may be filed in the confidential archives of the Pa- 79/ 75 SUPREME COURT. O’Reilly et al. v. Morse et al. tent Office, and preserved in secrecy, according to the terms and conditions expressed in the act of Congress in that case made and provided; he having paid twenty dollars into the Treasury, and complied with other provisions of the said act. New York, Sept. 28th, 1837.” These are the specifications annexed to the caveat: “ The nature of my invention consists in laying an electric or galvanic circuit or conductors of any length to any distance. These conductors may be made of any metal, such as copper or iron wire, or strips of copper or iron, or of cords or twine, or other substances, gilt, silvered, or covered with any metal leaf, properly insulated in the ground, or through or beneath the water, or through the air, and by causing the electric or galvanic current to pass through the circuit, by means of any generator of electricity, to make use of the visible signs of the presence of electricity in any part of the said circuit, to communicate any intelligence from one place to another. “ To make the said visible signs of electricity available for the purpose aforesaid, I have invented the following apparatus, namely: “First. A system of signs, by which numbers, and consequently words and sentences, are signified. *7fi-| *“ Second. A set of type adapted to regulate and J communicate the signs, with cases for convenient keeping of the type, and rules in which to set up the type. “ Third. An apparatus called a Port Rule, for regulating the movement of the type rules, which rules, by means of the type, in their turn regulate the times and intervals of the passage of electricity. “ Fourth. A register, which records the signs permanently. “Fifth. A dictionary or vocabulary of words, numbered and adapted to this system of telegraph. “ Sixth. Modes of laying the conductors, to preserve them from injury.” Here is a description of each of the articles of the invention, after which he concludes in these words: “ What I claim as my invention, and desire to secure by letters-patent, and to protect for one year, is a method of recording permanently electrical signs, which, by means of metallic wires, or other good conductors of electricity, convey intelligence between two or more places.” The new instrument, which Mr. Morse was enabled to have constructed bv his arrangement with Mr. Vail, was completed 80 DECEMBER TERM, 1853. 76 O’Reilly et al. v. Morse et al. in the latter end of this year, and in the succeeding February, 1838, it was exhibited in the Franklin Institute at Philadelphia, where it operated with success through a circuit of ten miles of wire; and a committee of the Institute made a report of its success. It was thence removed to the city of Washington, where it was publicly exhibited in the hall of the House of Representatives, and a committee having been appointed to examine it, made a favorable report, and recommended an appropriation of thirty thousand dollars, to have effectually tested the utility of the invention. And, This was the state of the invention early in the spring of 1838. Petition for Patent and its Specifications. The caveat was followed, on the 7th of April, 1838, by the petition of Mr. Morse for the patent. It is to this effect: “ Be it known, that I Samuel F. B. Morse, of the city, county, and State of New York, have invented a new and useful machine and system of signs for transmitting intelligence between distant points, by the means of a new application and effect of electro-magnetism, in producing sounds and signs, or either, and also for recording permanently, by the same means and application and effect of electro-magnetism, any signs thus *produced, and representing intelligence, trans- [-*77 mitted as before named, between distant points, and I L denominate said invention the American Electro-Magnetic Telegraph, of which the following is a full and exact description, to wit: “ It consists of the following parts: First, Of a circuit of electric or galvanic conductors from any generator of electricity or galvanism, and of electro-magnets at any one or more points in said circuits.” Here he gives the several parts of which his invention consisted, and adds a long description of each of them, and then sums up what he had affirmed he had himself invented, in these words: “ What I claim as my invention, and desire to secure by letters-patent, is as follows: “ 1st. The formation and arrangement of the several parts of mechanism constituting the type rule, the straight port rule, the circular port rule, the two signal levers, and the register ever, and alarm lever with its hammer, as combining, respectively with each of said levers, once or more armatures vol. xv—6 81 77 SUPREME COURT. O’Reilly et al. v. Morse et al. of an electro-magnet, and. as said parts are severally described in the foregoing specification. “ 2ndly. The combination of the mechanism constituting the recording cylinder, and the accompanying rollers and train wheels, with the formation and arrangement of the several parts of mechanism, the formation and arrangement of which are claimed as above, and as described in the foregoing specification. “3dly. The use, system, formation, and arrangement of type and of signs, for transmitting intelligence between distant points, by the application of electro-magnetism, and metallic conductors combined with mechanism, described in the foregoing specification. “4thly. The mode and process of bieaking, by mechanism, currents of electricity or galvanism in any circuit of metallic conductors, as described in the foregoing specification. “5thly. The mode and process of propelling and connecting currents of electricity or galvanism in and through any desired number of circuits of metallic conductors, from any known generator of electricity or galvanism, as described in the foregoing specification. “ 6th. The application of electro-magnets by means of one or more circuits of metallic conductors, from any known generator of electricity or galvanism, to the several levers in the machinery described in the foregoing specification, for the purpose of imparting motion to said levers and operating *^0-1 said *machinery, and for transmitting, by signs and J sounds, intelligence between distant points, and simultaneously to different points. “ 7thly. The mode and process of recording or marking permanently signs of intelligence transmitted between distant points and simultaneously to different points, by the application and use of electro-magnetism or galvanism, as described in the foregoing specification. “ 8th. The combination and arrangement and electro-magnets, in one or more circuits of metallic conductors, with armatures of magnets, for transmitting intelligence by signs and sounds, or either, between distant points, and to different points simultaneously, “9th. The combination and mutual adaptation of the several parts of the mechanism and system of type and of signs, with and to the dictionary or vocabulary of words, as described in fhe foregoing specification.” It appears that no objection was found to the issuing of the patent immediately, except that there had not been filed with 82 DECEMBER TERM, 1853. 78 O’Reilly et al. v. Morse et al. the specifications a duplicate set of the drawings, and that the commissioner wrote in answer to an application for it, to this effect, on the 1st of May. In England and France. But Mr. Morse had conceived a hope, that he might secure a consideration for the use of his invention in foreign countries, as well as in the United States, and on the 15th of May, he returned this answer to the commissioner, and departed the next day for Liverpool: “ New York City University, May 15,1838. “ Hon. Henry L. Ellsworth. “ Dear Sir,—Excuse the delay in answering your letter of the 1st instant, relative to a duplicate set of drawings for my letters-patent. May I ask the favor of you to delay issuing the letters-patent until you hear from me in Europe, as I fear issuing them here will at present interfere with my plans abroad. “I sail to-morrow in the ship Europe for Liverpool. Farewell.” In England a patent was refused to the American inventor, on the ground that some description of his invention —the substance of which will appear hereafter—had been published in the London Magazine. But he was otherwise received in France. In the French Academy of Science. He communicated a description of his invention, and exhibited the instrument in operation, before the French Academy of Sciences, on the 10th of Septem- *-ber, 1838. And, « account of the invention published in the “ Comptes Rendusf the weekly journal of the Academy: “ Applied Physics.—Electro-Magnetic Telegraph of Mr. Morse, Pro^essor in fbe University of New York.” e instrument has been put in operation under the eyes o the Academy. The following is a literal translation of a arge portion of the notice delivered by Mr. Morse to the P erpetual Secretaries: Mr. Morse conceives that his instrument is the first prac- 83 79 SUPREME COURT. O’Reilly et al. v. Morse et al. ticable application which has been made of electricity to the construction of a telegraph. “ This instrument was invented in October, 1832, whilst the author was on his way from Europe to America, in the packet ship Sully. The fact is attested by the captain of the ship and several of the passengers. Among the number of the latter, was Mr. Rives, the Minister of the United States near the French government. (Here is given the account of Mr. Rives and Captain Pell, already set out. After which the account proceeds.) “The idea of applying galvanism to the construction of telegraphs, is not new; Dr. Coxe, a distinguished citizen of Philadelphia, makes mention of it in a note inserted by him in February, 1816, in the Annals or Dr. Thompson, page 162, First Series : but he did not give any means of effecting it. “ Since the period to which the invention of Mr. Morse’s telegraph goes back, other arrangements, founded on the same principles, have been announced, of which the most celebrated are those of Mr. Steinheil, of Munich, and of Mr. Wheatstone, of London. They differ very much in mechanism. “ The American Telegraph employs but one circuit,* the following is an abridged description of it: “ At the extremity of the circuit where the news is to be received, is an apparatus called the Register. It consists of an electro-magnet, the wire covering of which forms the prolongation of the wire of the circuit. “ The armature of this magnet is attached to the end of a small lever, which at its opposite extremity holds a pen ; under this pen is a ribband of paper which moves forward as *qo-i required, *by means of a certain number of wheels. ° -I At the other extremity of the circuit, that is to say, at the station from which the news is to be sent out, is another apparatus called the Port Rule ; it consists of a battery or generator of galvanism, at the two poles of which, the circuit ends; near the battery a portion of this circuit is broken; the two extremities disjoined, are plunged into two cups of mercury near each other. “ By the aid of a bent wire attached to the extremity of a * “ Suppose the places to be put in communication with each other occupy the three angles of a triangle, the four angles of a quadrilateral, or certain points of a line inclosing a space, a single wire passing through all tnos points would be sufficient, at least according to theory.” 84 DECEMBER TERM, 1853. 80 O’Reilly et al. v. Morse et al. little lever, the two cups may be, at will, placed in connection with each other, or left separated; thus the circuit is completed and interrupted at pleasure. The movement of the mechanism is as follows : “ When the circuit is complete the magnet is charged ; it attracts the armature, the movement of which brings the pen into contact with the paper. When the circuit is interrupted, the magnetism of the horseshoe ceases, the armature returns to its first position and the pen is withdrawn from the paper. When the circuit is completed and broken rapidly in succession, mere dots are produced upon the moving paper; if, on the contrary, the circuit remain complete for a certain length of time, the pen marks a line, the length of which is in proportion to the time during which the circuit remains complete. This paper presents a long interval of blank if the circuit remain interrupted during some considerable time. These points, lines, and blanks, lead to a great variety of combinations. By means of these elements, Professor Morse has constructed an alphabet and the signs of the ciphers. The letters may be written with great rapidity, by means of certain types, which the machine causes to move with exactness, and which give the proper movements to the lever bearing the pen. Forty-five of these characters may be traced in one minute. “ The register is under the control of the person who sends the news. In fact, from the extremity called the Port Rule, the mechanism of the register may be set in motion and stopped at will. The presence of a person to receive the news is, therefore, not necessary, though the sound of a bell which is rung by the machine, announces that the writing is about to be begun. “ The distance at which the American Telegraph has been tried, is ten miles English, or four post leagues of France. The experiments have been witnessed by a committee of the Franklin Institute of Philadelphia, and by a committee appointed by the Congress of the United States. The reports of these committees, which we have not copied, are extremely favorable. The committee of Congress recommended the appropriation of thirty thousand dollars.” * French Patent, 1838. [*81 A patent was accordingly granted to Mr. Morse by the r rench government, but it yielded him no pecuniary profit. It is dated on the 20th August, 1838, and was delivered to him on the 30th October afterwards. But, 85 81 SUPREME COURT. O’Reilly et al. v. Morse et al. The law of France required the invention to be put into use in two years, and on failure, the exclusive privilege of the patentee was forfeited. Mr. Morse had not the means of complying with the condition, and he returned home in 1838, with the hope of inspiring in his own countrymen sufficient confidence in his great invention. But the embarrassed condition of the country caused him to despair of success at that time, and being compelled to betake himself again to his pencil, he made no farther movement until the succeeding year. American Patent, 1840. On recurring to his former application for his patent, which had remained on the files of the office, the duplicate set of his drawings were still wanting; but having supplied this, and complied with some other directions of the Commissioner, the patent was issued. It was sealed, and bears date June 20th, 1840. The specifications filed in 1838, on the application for the patent, are annexed to it as part thereof. These specifications, or so much of them as may be necessary, will be set out hereafter, before or when they become the subject of discussion. But, The confidence of the capitalists in an invention so extraordinary, and one promising such incredible results, could not be inspired, and the patentee was not able, himself, to construct a line of telegraphs, and introduce it into actual use, and he again applied to the Congress of the United States. This resulted in the appropriation of thirty thousand dollars, according to the recommendation of the committee in 1838, for the purpose of testing the practicability and utility of the system, under the superintendence of Mr. Morse. And, This resulted in the construction of the line of telegraph from Baltimore to Washington, and a complete demonstration of the practicability and great public utility of his invention. And, This was the state of the invention in June, 1844, twelve years after its conception. Efforts were then made for the extension and multiplication of its advantages, but difficulties were encountered in the introduction and establishment of an affair of such nov-*821 an(^ ^requiring such a large amount of capital, and some time was necessary to overcome them. The exertions were, however, continued, and with the suc-86 DECEMBER TERM, 1853. 82 O’Reilly et al. v. Morse et al. cess which the progress in the establishment of the telegraphs stated in the bill exhibits. And, In the mean time, as will be presently seen, Mr. Morse continued his exertions to improve and perfect this great invention. 1840 Patent Reissued, 1846. In January, 1846, the specifications of the invention and description of the mode of its operation having been supposed to be in some respects defective, the patent was surrendered, and a new patent taken out in its stead. The specifications annexed to this patent will be adverted to hereafter. It will be sufficient, for the present, to state that, in the summing up of what the patentee affirmed he had invented, there is found one article corresponding to the fifth and some of the other clauses in the specifications of the patent of 1840. He says, “ I also claim the combination of two or more circuits of galvanism or electricity, generated by independent batteries, by means of electro-magnetism, as above described.” It appears that, originally, the design was that this part of the invention was to be resorted to only in case the galvanic current of one battery should be found insufficient on a long line, to afford the motive power necessary to work the register and record the intelligence, and it does not appear that it had been, before this date, ascertained that the one battery and circuit would not be sufficient for any distance. Patent of 1846 for New Improvement. But, on the 16th April, 1846, Mr. Morse applied for, and obtained another patent for an improvement on his own original invention. And, It appears from his representations, contained in the specifications annexed to this patent, that it had then been ascertained that the galvanic current generated by one battery, would be sufficient to continue the electric current on any length of line, and afford sufficient motive power to open and close the battery; but that it would not be sufficient, at any considerable distance, to work the register and make the rec-th ’ unleSS battery was made of great magnitude ; and at by such battery the expense of the operation would be greatly increased. He had, therefore, contrived what he called a receiver or receiving magnet, worked by a local battery, or battery situ- 87 82 SUPREME COURT. O’Reilly et al. v. Morse et al. ated *at the place to which the intelligence is trans-J mitted, by which a second, but short, local circuit, connected with the main circuit, was opened and closed, and sufficient force given to the register to make the record. The second patent is for this, and for other improvements, which he sums up in these words : “ What I claim as ray invention, and desire to secure by letters-patent, is the receiving magnet, or a magnet, having a similar character, that sustains such a relation to the register magnet, or other magnetic contrivances for registering, and the length of the current or telegraphic line as will enable me to accomplish, with the aid of a main galvanic battery, and the introduction of a local battery, such motion or power for registering as could not be obtained otherwise, without the use of a much larger galvanic battery. “ I claim, as my invention, the use of a local battery and magnet, in combination with a battery and magnet connected with the main line or lines of conductors for the purpose above specified. “ I also claim the combination of the apparatus connected with the clock-work, for setting off the paper and stopping it with the pen lever, [MJ. “ I also claim the combination of the points affixed in the pen lever, with the grooved roller, [N] for marking on paper as above described.” But, on the 13th June, 1848, on the supposition there were some defects in the specifications of each of these two patents then extant, they were both surrendered and cancelled, and new patents obtained in the stead of each respectively. And, These are the patents upon which the exclusive right to the employment of the telegraph now before us, is claimed by the complainant. But, It is necessary, to a fair and intelligible statement and discussion of the case, that large portions of the schedules be set out in their own words. 1840 Patent Reissued 1848. The patent itself, which is a reissue of the patents of 1846, which was a reissue of the original patent of 20th June, 1840, will be given at length, because the terms of it will be the subject of discussion hereafter, in connection with the statute. It is in the following words: The United States of America, To all to whom these letters-patent shall come: Whereas, Samuel F. B. Morse, Poughkeepsie, New York, 88 DECEMBER TERM, 1853. 84 O’Reilly et al. v. Morse et al. *has alleged that he has invented a new and useful improvement in the mode of communicating informa- *- 0 tion by signals, by the application of electro-magnetism, (for which letters-patent were granted on the 20th June, 1840, which letters-patent were surrendered and rescinded on the 15th day of January, 1846, which last letters-patent are hereby cancelled on account of a defective specification,) which he states has not been known or used before his application; has made oath that he is a citizen of the United States, that he does verily believe that he is the original and first inventor or discoverer of the said improvement, and that the same has not, to the best of his knowledge and belief, been previously known or used ; has paid into the treasury of the United States the sum of fifteen dollars, and presented a petition to the Commissioner of Patents, signifying a desire of obtaining an exclusive property in the said improvement, and praying that a patent may be granted for that purpose. These are therefore to grant, according to law, to the said Samuel F. B. Morse, his heirs, administrators, or assigns, for the term of fourteen years from the twentieth day of June, one thousand eight hundred and forty, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement—a description whereof is given in the words of the said Samuel F. B. Morse, in the schedule hereunto annexed, and is made part of these presents. The schedule annexed is in these words: To all to whom these presents shall come: Be it known that I, Samuel F. B. Morse, now of..........., the State of New York, have invented a new and useful apparatus for, and a system of, transmitting intelligence between distant points by means of electro-magnetism, which puts in motion machinery for producing sounds or signs, and recording said signs upon paper or other suitable material, which invention I denominate the American Electro-Magnetic Telegraph, and that the following is a full, clear, and exact description of the principle or character thereof, which distinguishes it from all other telegraphs previously known ; and of the manner of making and constructing said apparatus, and of applying said system, reference being had to the accompanying drawings making part of this specification. . . . Here follows a description of the instruments, and of the mode of their operation, which will be omitted here and adverted to hereafter. 89 84 SUPREME COURT. O’Reilly et al. v. Morse et al. These particular specifications and descriptions completed, the patentee sums up what he intends it should be understood *he had and had not invented; and after disclaiming J all pretensions to the invention of what he says was before known, He specifies what he affirms he had himself discovered or invented, and thus designates his improvement or improvements, a description whereof he had just before given in this his schedule, and which is made part of the patent. “ First. Having thus fully described my invention, I wish it to be understood that I do not claim the use of the galvanic current, or current of electricity, for the purpose of telegraphic communications, generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents, substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery, which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances. “ The only ways in which the galvanic currents had been proposed to be used, prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and deflections of the needles, thus produced, were the subjects of inspection, and had no power, or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism. “ There are various known modes of producing motion by electro-magnetism, but none of these had been applied prior to my invention and improvement, to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement. “Second. I also claim as my invention and improvement, the employment of the machinery called the register or recording instrument, composed of the train of clock-wheels, cylinders, and other apparatus, or their equivalent, for removing the material upon which the characters are to be imprinted, and for imprinting said characters, substantially as set forth in the foregoing description of the second principal part of my invention. “ Third. I also claim, as my invention and improvement, the combination of machinery herein described, consisting o 90 DECEMBER TERM, 1853. 85 O’Reilly et al. v. Morse et al. the generation of electricity, the circuit of conductors, the contrivance for closing and breaking the circuit, the electromagnet, the pen or contrivance for marking, and the machinery for sustaining and moving the paper, altogether constituting one *apparatus of telegraphic machinery, which I r*on denominate the American Electro-Magnetic Telegraph. *- “ Fourth. I also claim as my invention, the combination of two or more galvanic or electric circuits, with independent batteries, substantially by the means herein described, for the purpose of obviating the diminished force of electro-magnetism in long circuits, and enabling me to command sufficient power to put in motion registering or recording machinery at any distance. “ Fifth. I claim, as my invention, the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes. “ Sixth. I also claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, substantially as herein set forth and illustrated, in combination with machinery for recording them, as signals for telegraphic purposes. “ Seventh. I also claim as my invention, the types, or their equivalent, and the type rule and post rule, in combination with the signal lever or its equivalent, as herein described, for the purpose of breaking and closing the circuit of galvanic or electric conductors. “ Eighth. I do not propose to limit myself to the specific machinery, or parts of machinery, described in the foregoing specifications and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, letters, or signs, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.” 1846 Patent Reissued 1848. This patent is the reissue of the patent of April, 1846, and is for a new and useful improvement in “ electro-magnetic telegraphs.” It grants the exclusive use to the patentee for isi ^erm °f fourteen years from the eleventh day of April, 1846, and refers in the common form to the schedule annexed or the specifications of the improvement. This schedule is in these words: 91 86 SUPREME COURT. O’Reilly et al. v. Morse et al. “ Be it known that I, Samuel F. B. Morse,..............have invented a new and useful improvement in the Electro-Magnetic Telegraph, and I do hereby declare that the following is a full, clear, and exact description of the object, construction, and operation thereof, reference being had to the accompanying drawings, and making part of the same. *“ Object of the invention. J “ The original and final object of all telegraphing, is the communication of intelligence at a distance by signs or signals. “Various modes of telegraphing, or making signs or signals at a distance, have for ages been in use. The signs employed heretofore have had one quality in common. They are evanescent — shown or heard a moment, and leaving no trace of their having existed. The various modes of these evanescent signs have been by beacon fires of different characters, by flags, by balls, by reports of firearms, by bells heard from a distant position, by movables, arms from posts, &c. “ I do not, therefore, claim to be the inventor of telegraphs generally. The electric telegraph is a more recent kind of telegraph, proposed within the last century, but no practical plan was devised until about sixteen years ago. Its distinguishing feature is the employment of electricity to effect the same general result of communicating intelligence at a distance by signs or signals. “ The various modes of accomplishing this end by electricity have been, “ The employment of common or machine electricity, as early as 1787, to show an evanescent sign by the divergence of pith balls. “The employment of common or machine electricity, in 1794, to show an evanescent sign by the electric spark. “ The employment of voltaic electricity, in 1809, to show an evanescent sign by the evolution of gas bubbles, decomposed from solution in a vessel of transparent glass. “ The employment of voltaic electricity in the production of temporary magnetism, in 1820, to show an evanescent sign by deflecting a magnet or compass needle. “ The result contemplated from all these electric telegraphs was the production of evanescent signs or signals only. “ I do not, therefore, claim to have first applied electricity to telegraphing for the purpose of showing evanescent signs and signals. . . . , “ The original and final object of my telegraph is to imprint characters at any distance as signals for intelligence, its o ject is to mark or impress them in a permanent manner. 92 DECEMBER TERM, 1853. 87 O’Reilly et al. v. Morse et al. “ To obtain this end, I have applied electricity in two distinct ways. 1st. I have applied, by a novel process, the motive power of electro-magnetism, or magnetism produced by electricity, to operate machinery for printing signals at any distance. 2dly. I have applied the chemical effects of electricity to print signals at any distance. “ The apparatus or machine with which I mark or imprint *signs or letters for telegraphic purposes at a distance, r*oo I thus describe. L Here follows a description of the instruments, and of how they are employed. After which the patentee sums up, and specifies what he affirms he had invented, and desires to have secured to him by the grant, in these words : “ First. What I claim as my invention, and desire ^o secure by letters-patent, is the employment, in a main telegraphic circuit, of a device or contrivance called the receiving magnet, in combination with a short local independent circuit or circuits, each having a register and register magnet, or other magnetic contrivances, for registering, and sustaining such a relation to the register magnet, or other magnetic contrivances for registering, and to the length of circuit of telegraphic line, as will enable me to obtain, with the aid of a galvanic battery and main circuit, and the intervention of a local battery and local circuit, such motion or power for registering as could not be obtained otherwise without the use of a much larger galvanic battery, if at all. “ Second. I also claim as my invention the combination of the apparatus called the self-stopping apparatus, connected with the clock-work by the register, for setting said register in action and stopping it with the pen lever F, as herein described. “ Third. I also claim as my invention the combination of the point or points of the pen and pen lever, or its equivalent, with the grooved roller, or other equivalent device, over which the paper, or other material suitable for marking upon, fnay be made to pass for the purpose of receiving the impression of the characters; by which means I am enabled to mark or print signs or signals upon paper or other fabric, by indentation, thus dispensing with the use of coloring matter for marking, as specified in my letters-patent of January 15th, 1846.” But the Telegraph itself, constructed according to the specifications of the patents, and in actual use, having been 93 38 SUPREME COURT. O’Reilly et al. v. Morse et al. exhibited and given in proof, it is necessary, in order to put on paper the case which has been heard, that the instruments themselves be described. Description of the Telegraph. It consists of,— 1. The main circuit with its battery. 2. The key with the signal lever. 3. The local circuit with its battery. 4. The receiver, or mutator, with its electro-magnet. 5. The register, with its electro-magnet, pen lever, and grooved roller. *It will be observed, that in this description, the -* relay magnet, as it was called, by which the combination of the circuit was originally effected, will not be found. It has been substituted by the subsequently invented receiver or mutator, on the same principle by which the main circuit is combined with each local circuit, or circuit in the telegraph office, whereby sufficient motive power is obtained to work the register, And, That the port rule is also absent.’ It has been supplied by the improved register and pen lever, with its pen point and grooved rollers in connection. And, It will be observed that the telegraphic dictionary has been also abandoned; and that the characters indented by the pen constitute an alphabet, differing in little else beside the figure of the letters from the common alphabet; and which is therefore read, not by a peculiar dictionary, but as common manuscript. Nothing occurred in the case which makes it necessary to describe the self-stopping apparatus. The main circuit of conductors, in connection with the principal battery, and key with its pen lever, which operates upon it, may be thus described. It is begun in a plate of copper buried in the ground under the first telegraph office, and consists of these conductors: A copper wire, having one end inserted in the copper plate, and the other in one pole of the galvanic battery, in a room of the office. . ' Another copper wire, with one end inserted in the other pole of the battery, and after passed through the rooms as may be convenient, with the other end of it extended up ant 94 DECEMBER TERM, 1853. 89 O’Reilly et al. v. Morse et al. inserted in and under one end of a short bar of brass, which is part of the instrument called the key. We will here stop the description of the circuit of conductors, and describe this instrument. Key with its Signal Lever. This key consists of a cross formed of two flat bars of brass, about two or three inches long, screwed down upon the table, or upon a pedestal fixed upon a table ; on each end of the arms of this cross there rise similar bars, after the manner of the sights of a surveyor’s compass, about a couple of inches high. These support the fulcrum of the signal lever. This fulcrum of the lever is a steel cylinder extended between the two upright bars on the arms of the cross, with its ends terminating in axles extending through the bars near the upper ends, so that it may be turned when the lever is worked. The leyer is a bar of brass fixed with its centre upon this fulcrum. *It is horizontal when at rest, and is kept r*gp in its position by a spring fixed under its fulcrum and L extended back. A sort of button of brass is fixed immediately under the front end of the lever, and in proximity to the foot of the cross; so that when the lever is pressed down it is brought into contact with it and the end of a wire which is extended up through its centre. This button is so contrived that, by a short lever extended from it, it is turned from or brought into contact with the cross. We now return to the circuit of conductors. It is in and under the head of this cross that the wire from the battery was inserted; and this bar constitutes the next conductor. There are now here two conductors—one the conductor when intelligence is not being transmitted from the office, and the other when intelligence is being transmitted trom the office. When intelligence is not being transmitted, then, after this bar of the key, the button having the brass wire. through its centre is the conductor. But when the position of the button is so changed that it is not in contact wdfi this bar, then it is not the next conductor, and the right an(I left hand arms of the cross and the fulcrum are the next conductors, and the signal lever pressed down and brought in o contact with the button, is the conductor to it and the projecting up through it. hen intelligence is to be transmitted from the office, the perator changes the position of the button, brings it out of 95 90 SUPREME COURT. O’Reilly et al. v. Morse et al. contact with the foot of the cross, and the circuit at this point is broken, and the lever constituted the conductor next the button towards the key. The operator has then command of the circuit for his operation. By pressing the key down into contact with the button, the circuit is closed; and the pressure off, the circuit is broken. This produces the corresponding action of the pen lever, which registers the intelligence he sends off. We now return to the circuit of conductors. The wire extended from the button is the next conductor. It is copper, and is extended down under the table, and then up through it near the pedestal of the receiving magnet, situated on the table at a convenient distance from the key, and inserted in a brass standard near its upper end, which stands on one corner of the pedestal of this receiver, which will be presently described. And, This standard is the next conductor. The next is a small brass wire, extending from the foot of this standard up through the pedestal into proximity to the horseshoe magnet. This wire, prolonged and covered with silk, is wound around the shanks of the horseshoe, first around the one end, and then around the other, and made to *qii constitute-*the helices of the magnet; after which it -I is returned down through the pedestal, and inserted in the foot of another standard on another corner of the pedestal of the magnet. And, This standard is the next conductor. The next is the brass wire with one end inserted into the standard near its upper end, and the other, after its extension out of the office, united to the iron wire on the posts. This iron wire is the next conductor to the next office. On entering this office, it is united to the end of a copper wire, which has its other end inserted in and under the head of the cross of the key in the office. Thence the circuit is continued through the instruments of this office as in the first office, when it is again extended out upon the posts to another office ; and thus through any number, and over any distance, to the last office, of the circuit. It is then, after being passed through the instruments of this office, as in the other offices, extended down and fastened in a plate of copper in the ground. The earth, it is said, constitutes the conductor from this copper-plate to the other, from which we set out, and thereby the circuit is completed. We will now return and describe the receiver, more properly called the mutator. 96 DECEMBER TERM, 1853. 9'1 O’Reilly et al. v. Morse et al. Receiving Magnet. This magnet rests on the pedestal, which has been already mentioned, eight or ten inches long, and four or five broad, with the axis of its helices horizontal, and parallel to the sides of its pedestal, and with what corresponds to the front part of the horseshoe presented to the left, in proximity to the two standards we passed on the circuit. It is kept in its position by a brass bar extended across the helices, near the heels of the horseshoe, and pressed, and kept firmly upon them, by a screw extended down from either end, into the pedestal. Its heels present themselves to a horizontal armature of a movable upright lever, within their attractive power; and which, it will be presently found, is one of the conductors of the local circuit. This local circuit can now be described. It begins in a galvanic battery in the office, and consists of these things: A copper wire, with one end inserted in one pole of the local battery in a room of the office, and the other end brought up through the table, and screwed into an upright brass bar or standard near its upper end, standing on the back right hand corner of the pedestal of the receiver. The next conductor is this standard. And then, A copper wire extended from its lower end under the pedestal *and there connected with the steel cylinder; r^qo which constitutes the fulcrum, on which stands the *-movable lever already mentioned in describing the main circuit. This cylinder is horizontal, parallel to the heels of the magnet, but below them, is fixed in a channel across the pedestal; and has its ends in sockets, in which it turns and allows the lever which stands upon it, to move forward and back. And, This lever is the next conductor. It stands perpendicular, and is held in this position by a spiral spring extended from behind it and holding it back against the end of a screw, projected in like manner against its back; but which, when the armature, fixed across it, is attracted by the heels of the magnet, readily consents to its motion forward, to meet near its upper end another conduc-or, which will be presently described, and when the attrac-1OJL1S n^’ aS withdraws it to its former position. We will now return back to the local battery, and commence at its other pole. The first conductor thence, in this direction, is another copper wire. Vol. xv.—7 97 92 SUPREME COURT. O’Reilly et al. v. Morse et al. This has one end inserted in the battery, and after being extended around, according to the situation of the room, has its other end brought up under the table near the electromagnet of the register, where it is united to a small wire, which is the next conductor. It is prolonged and wound on the horseshoe bar, in like manner with the wire on the main circuit, and made to constitute the helices of this magnet, and then has its other end fastened to a large wire. And, This wire is the next conductor. It is extended under the table, and afterwards brought up, and has its other end screwed into a brass standard, upon the right-hand front or remaining corner of the pedestal of the receiver. And this standard is the next conductor. It is succeeded by a brass wire, extended from its lower end under the pedestal, and brought up between the helices of the receiving magnet, to the under side of the horizontal bar, which we lately left extended across the helices near the heels of the magnet, and there inserted in this bar. Immediately over this end of this wire, and fixed upon this horizontal bar, stands a perpendicular bar, which is the next conductor. And, The last conductor is a brass screw, which passed through this bar, near its upper end, and extended out horizontally from it, presents its platina point to the movable lever, which we lately left in describing the conductors from the other end #qo-i of the *battery, ready to close the circuit whenever at- -I tracted forward by the heels of the magnet presented to its armature below. When, by the act of the operator on his signal key, the main circuit is complete or “ closed,” as it called, the horseshoe is instantly an electro-magnet, and the armature of the lever, attracted towards, not to, its heels, the lever is brought into contact with the platina point of the brass screw, presented to its front, and the local circuit of conductors is “ closed ”; and the horseshoe whereon we just said the wire of the local circuit had formed the helices, being converted into an electro-magnet, for the register, instantly acts upon the pen lever, in the register, in the mode we will presently describe, and records the intelligence which the operator proposed. . This done, and the main circuit broken, the spiral spring behind the lever, which had before readily assented to its attraction forward, as quickly withdraws it to its former position, and awaits another signal. 98 DECEMBER TERM, 1853. 93 O’Reilly et al. v. Morse et al. Register, Pen Lever, and Grooved Rollers. The register consists of a horseshoe magnet, the pen lever, a spiral spring, the grooved rollers, and the clock-work, all fixed in a proper frame upon a brass pedestal ten or twelve inches long, and about half that breadth, fixed down upon the table at a convenient distance from the other instruments. The magnet is fixed on the right-hand end of the pedestal, the axis of the helices perpendicular, and the heels upwards, presenting themselves to an armature of the pen lever within their attraction above. The pen lever is a brass bar. It rests in a horizontal position, with one end extended to the right, across the heels of the magnet, where its armature is fixed across it, and the other extended to the left towards the rollers. It has for its fulcrum a steel cylinder, fixed across its centre, with its ends in sockets in the frame work. It is held to the position by the spiral spring, extended from the lower end of a bar fixed in, and extended down from, the centre of the fulcrum, and thence extended back towards the magnet, and made fast, which, by its facile extension, instantly assents to the action of the lever with its pen; and as quickly withdraws it. The rollers are fixed each with its axis in the frame work, one with its axis on a level with the lever, and the other with its axis over the line of the periphery next the lever of the lower roller. The pen, fixed upon this end of its lever, and projected forward, presents its point upwards, in proximity to the centre of this upper roller, in proper direction for action upon the paper in its transit over it, when cast up by the attraction, down, of the other end of the magnet. The paper is guided from above this upper roller, r*q4 and passed around it, and between the two rollers, and L by their revolution is drawn forward at a rate suited to the action of the pen. There is around each roller, under the paper and exactly opposite the pen, a narrow groove of such depth that the pen point, in making its indentations on the paper, does not extend to the metal of the roller, whereby its point is preserved, and the line of characters on the paper it kept from contact with either roller, and protected from being dimmed by the compression of the paper, in its transit between them. 1 he revolution of the rollers is by the clock-work on the left. Ihe rollers having been put in motion, the electro-magnet c arged, the armature with that end of the lever attracted: 99 94 SUPREME COURT. O’Reilly et al. v. Morse et al. down, and the other cast up, the pen with its point indents a character upon the paper, and the magnet discharged, the spiral spring has brought down the pen, and holds it in position for a repetition of the act. But we will return to the signal key, or correspondent, stationed in the distant office whence the intelligence is to be transmitted, and follow it in its course and see it recorded. The operator, having been put in possession of the intelligence, and broken the circuit in the lower conductors of his key, and thereby made his signal lever a conductor of the main circuit, applies his hand upon the signal lever and presses it down upon the conductor below, the main circuit is instantly closed, the horseshoe within the helices of this main circuit is a magnet, the armature has drawn its movable lever into contact with the platina point, the local circuit is closed, the horseshoe within the helices of this circuit is an electro-magnet, the armature of the pen lever is upon its heels, the other end of the lever has cast up the pen, and indented an intelligible character upon the paper. The operator’s hand taken off, and the main circuit is broken, the receiver "within it is not a magnet, the movable lever has been withdrawn, by its spring, from the platina point, the local circuit is broken, the register magnet is no longer a magnet, and the pen has been sprung down from the paper, and stands ready too repeat and add another character of the intelligence. The operator’s hand upon his lever, and another character is added. And, These are the characters recorded, and how they are read: ---is A,-------is B,---is C,------is D,-isE,-------is F,----- is G, - — is H, - - is I,------------------------------------is J,-is K,-is L, —- is M,----is N, -- is O,----is P,-------is Q, - - - is R, - - - is S, _ is T,------is U,------is V,--------is W,--------is X, —- is Y, -— is Z, -— is &, and such is the alphabet. *Then---------is 1,--------is 2,--------is 3, ---- ' is 4,-----------is 5,------is 6,---------is 7,-------is 8, -------is 9,--------is 0; and these are the numerals. The holding down the lever an instant indented one dot, (-), the holding it longer made a dash (—) of a length corresponding to the time. The dots were made at distances corresponding to the time the hand was held off the lever. And, This is the Telegraph and its operations before us. (Judge Monroe then proceeded to examine the law and evidence upon all other points in the case, and then passed the following decree.) 100 DECEMBER TERM, 1853. 95 O’Reilly et al. v. Morse et al. Decree of the Circuit Court, 12th November, 1849. It is found and adjudged by the court that the letters-patent of the United States to the complainant, Samuel F. B. Morse, for his invention of a new and useful improvement in the mode of communicating information by signals, by the application of electro-magnetism, originally issued June 20th, 1840, but reissued on the 15th day of January, 1846, and afterwards finally reissued on the 13th of June, 1848, in their bill exhibited and read on the hearing of this cause, are valid and effectual acts of the government; and that the complainants are thereby, and by the assignments by them in their bill alleged, vested with the exclusive rights thereby granted. And If is found and adjudged by the court, that the defendants have, in those rights, disturbed the complainants as in their bill alleged; that they, the defendants, after the grant thereof to the patentee, Samuel F. B. Morse, and his assignments to his co-complainants, and after the final reissue of the letters-patent above mentioned, did, within the district of Kentucky and elsewhere, wrongfully construct, and unlawfully employ, a telegraph, consisting of combined circuits of electricity, worked by the motive power of electro-magnetism, substantially the same plan of construction and principle of operation with the telegraph of the said Morse in his letters-patent described and specified; and by which intelligence, which was in one station, was, by the defendants, transmitted to other distant stations, by making thereat a permanent record thereof in the alphabetical characters described and specified in the letters-patent to the said Morse, and did thereby violate and infringe the exclusive rights so granted by the United States to him, the said Samuel F. B. Morse, and invested in the complainants as above found; and it is considered that the injunction heretofore granted herein was rightfully awarded and enforced. * It appears, however, by the document itself, read by the complainants among their proof, that the patentee, Samuel F. B. Morse, had, on the 30th day of October, *- 8, prior to the issuing of his original patent, awarded by the United States for his original invention, obtained of the g°vernment of France a patent for the invention of his Elec-ro-Magnetic Telegraph, in principle and plan of construction e same with that described in his said letters-patent so a erwards obtained of the United States. And t seems to the court that the exclusive right of the com- 101 96 SUPREME COURT. O’Reilly et al. v. Morse et al. plainant, in respect to his original invention, is limited by this foreign patent to the term of fourteen years from its date. It is therefore ordered, adjudged, and decreed, that the defendants, their servants, and agents, be, and they are hereby, enjoined and commanded that they, and each of them, do still desist, and shall for and during the term of fourteen years from the 30th day of October, 1838, altogether refrain, from all and every use of the Electro-Magnetic Telegraph, which the complainants in their bill charged was, by the defendants, employed in violation of their rights, which, in its several forms is described in the proofs of the cause, and denominated by the witness in the depositions, and by defendant, O’Reilly, in his answer, the Columbian Telegraph, in the transmission of intelligence which is in one place to another distant place, by making thereat a permanent record in the alphabetical characters in the patent of Samuel F. B. Morse for his original invention specified; or by making thereat, with the action of the instrument which would make such characters, alphabetical sounds, and out of them composing such characters or words in the ordinary alphabet; and from the using of such telegraph, or any part thereof, in any other mode, in violation of the exclusive rights so granted by the United States and vested in the complainants; and that they shall, for and during the said term of fourteen years, refrain from making, constructing, or vending to be used within the district of Kentucky, any other telegraph consisting of combined circuits of electricity, worked by the motive power of electro-magnetism, on the plan and principle of the Electro-Magnetic Telegraph of the complainant, Morse, described and specified in his letters-patent, by which intelligence shall or may be transmitted by making, in the mode above stated, a record thereof in the said alphabetical characters of the said Samuel F. B. Morse, or in an alphabet formed on the same plan and principle, or by making in such mode sounds, whereof such characters shall or may be composed, in the violation and infringement of the exclusive right of the complainants as they are above adjudged. It is also found and adjudged by the court, that the letters-patent of the United States to Samuel F. B. Morse, for his invention of “a new and useful improvement in -* electro-magnetic telegraph,” originally issued on the 11th day of April, 1846, but afterwards reissued on the 13th of June, 1848, with the amended specifications of the improvements invented, which is in the bill of the complainants exhibited, and made part of the record of this cause, is a 102 DECEMBER TERM, 1853. 97 O’Reilly et al. v. Morse et al. valid and effectual act of the government; and that the complainants are thereby, and by the assignments in their bill alleged, vested with the exclusive rights thereby granted. And It is found and adjudged, that the defendants have disturbed the complainants in these their exclusive rights. It is found that the defendants, before and after the issuing of the said last mentioned letters-patent of the 13th June, 1848, in renewal of the said former patent, did, within the district of Kentucky and elsewhere, wrongfully cause to be constructed, and did unlawfully use and employ as a part of the Electro-Magnetic Telegraph, denominated the Columbian Telegraph, an instrument denominated by them the mutator, in plan of construction, principle of operation, and in the purpose accomplished by it, substantially the same with the improvement described and specified in the said last mentioned letters-patent to the complainant, Morse, which consists of the contrivance called, in his schedule to his patent, the receiving magnet, and which is by this denomination described and specified under the head of the first claim of the improvements in his schedule. And That they did, in like manner, cause to be constructed, and unlawfully employ, as another part of the said Columbia Telegraph, certain other apparatus and instruments and combinations thereof, in plan of construction, principle of operation, and purpose, substantially the same with the improvements of the register invented by him, the said Samuel F. B. Morse, and in the schedule described and specified as the third thing claimed by him as his invention, consisting of the combination of the point of the pen and pen lever, with the grooved roller over which the paper is passed, and receives the indentations of his alphabetical characters, and whereby is dispensed with the use of the coloring material, as specified in the patent for the original invention of the telegraph, first above mentioned, issued and bearing date January 15th, 1846. And It is found that the said telegraph, called the Columbia Telegraph, containing and consisting in part of the said two improvements of the said Morse, described and specified in his said last mentioned letters-patent, was by the defendants employed, before and after the last issue of the said last men-ioned letters-patent, within the district of Kentucky and elsewhere, in the. transmission of intelligence in the mode above nientioned, *in violation and infringement of the ex-c usive right so granted by the United States by these *- $ 103 98 SUPREME COURT. O’Reilly et al. v. Morse et al. last mentioned letters-patent, and held by the complainants as by them alleged and by the court adjudged. It is therefore ordered, and adjudged, and decreed, that the defendants, their servants and agents, be and they are hereby enjoined and commanded that they and each of them do still desist, and shall forever, and during the term of fourteen years from the eleventh day of April, eighteen hundred and forty-six, altogether refrain from all and every use and employment of the above-mentioned telegraphic instruments, denominated the mutator, in the combination with the other above-described instruments of such telegraph, or in any other combination on the same plan and principle, in the transmission of intelligence in the district of Kentucky. And That they do still desist, and for and during the said term of fourteen years, refrain from all and every such enployment in the transmission of intelligence within the district of Kentucky, of the above-mentioned improvement of the complainant, Morse, in the register of his telegraph, whereby is accomplished the making of his alphabetical characters before mentioned, described, and specified by indentation instead of by coloring matter, in violation of the exclusive rights of complainants, by them held under the aforesaid letters-patent as above adjudged. And That the defendants shall, for and during the said term of fourteen years from the said eleventh day of April, eighteen hundred and forty-six, refrain from constructing or vending to be employed in such transmission of intelligence, within the district of Kentucky, any of the above-mentioned improvements, either the instrument denominated the mutator, the improved register of said Morse, or any other of the improvements in the Electro-Magnetic Telegraph, so described and specified in said letters-patent as the invention of the said Samuel F. B. Morse, and whereof the exclusive right is granted him; and that they shall in no otherwise, for the term aforesaid, violate, or in anywise infringe, the aforesaid rights of the complainants within said district of Kentucky. And It is ordered, that the complainants may have the proper writs of execution on what is above decreed. (The decree then went on to provide for damages, which part is omitted.) The defendants appealed from this decree. The cause was argued in this court by Jfr. Grillet and Mr. Chase for the appellants, and Messrs. Campbell and Harding 104 DECEMBER TERM, 1853. 98 O’Reilly et al. v. Morse et al. of Philadelphia, and Mr. Grifford of New York for the appellees. *It is impossible for the reporter to do more than r*na merely state the positions assumed by the respective counsel. The counsel for the appellants contended. First. Morse’s patent of 1840 is void, because it runs fourteen years from the. date of its issue, instead of that length of time from the date of his French patent. Second. In constructing a patent, and deciding what are the inventions patented thereby, the summing up is conclusive. Nothing is patented but what is expressly claimed, in the summing up, as the invention. Third. What is described in a patent and not claimed, whether invented by the patentee or not, is dedicated to the public, and cannot be afterwards claimed as a part of his patent, in a re-issue or otherwise. Fourth. A patent void in part is void in whole, except when otherwise provided by statute. Fifth. An invention is not complete, so as to be patentable, or to bar the obtaining a patent by another inventor, until it is perfected and adapted to use. Sixth. Where a patent is for a combination of parts, and not for the different parts composing the combination, the use of any of those parts less than the whole is not an infringement. Seventh. Morse’s patents of 1846 and 1848 are void, because he was not the first inventor of the things patented, or of substantial and material parts thereof. Eighth. Morse’s reissued patents, dated June 13, 1848, are void, because he has not shown that the surrendered patents were inoperative or invalid for defective specification, or otherwise, so as to confer on the commissioner, jurisdiction to make such reissues. The surrendered patents being set out, disprove any such jurisdiction. Ninth. The patent of 1840, as secondly reissued, is void, because the commissioner had no authority to accept a second surrender and make a second reissue. Tenth.. Morse’s patent of 1840, as secondly reissued, is void, because it is broader than the invention originally patented. Eleventh. Morse’s patent of 1846 is void, 1. Because material parts of it had been known and in pub-dc use before his application. The first claim covers the inventions for connecting circuits U 9 Davy, Wheatstone, and Henry, in 1837. Because the same was described by Henry in Silliman’s 105 99 SUPREME COURT. O’Reilly et al. v. Morse et al. Journal, and in the London Mechanics’ Magazine, containing an account of Davy’s invention; and by Vail, in giving Morse’s and others. 3. Because the same invention, or a substantial part there-*1001 °^’ *was patented by Wheatstone, Davy, and Morse -• himself, prior to his application for his patent of 1846. The first claim in the reissue of the patent of 1846, is the same thing as the fourth claim of the last reissue of the patent of 1846. The account given by Henry and Morse shows that Henry’s, Wheatstone’s, and Davy’s were the same as Morse’s first claim of the reissue of the patent of 1846. Twelfth. Morse’s reissue of 1846 is void, because it is broader than the original. 1. He claims the employment of a receiving magnet, or its equivalent, in combination with a short, local, independent circuit, having a register magnet, to obtain power. There is no such claim in the original. He there claimed the invention of the receiving magnet, or registering contrivances, which sustained certain relations, as would enable him to obtain power, &c., without mentioning a short, local, independent circuit. He now claims two short local circuits. The claim is materially enlarged. 2. His third claim is for a combination which includes the pen lever or “its equivalent,” and for any thing over which paper may be passed for the purpose of receiving the impression of characters, &c., by indentation on paper and other fabrics, dispensing with coloring matter, &c. Here is a palpable enlargement of his claim. 3. His historical recital is an unauthorized addition, and not necessary to perfect his specification. Thirteenth. The surrender and reissue on account of a defective specification authorizes amendments only, and not changing the specification into a new one, nor does it authorize new claims. Fourteenth. In the second reissue of the letters of 1840, Morse patents a principle or effect, and not a machine, manufacture, or composition of matter, or an improvement upon either ; and it is therefore void. The counsel for the appellees considered the patents separately, viz. Patent of 1840. Reissued 1848. Patent of 1846. Reissued 1848. Patent of 1840. Reissued 1848. 106 DECEMBER TERM, 1853. 100 O’Reilly et al. v. Morse et al. To this patent, and the claim under it, five defences are presented: It is alleged by the appellants, I. That it is void by reason of an alleged error in date— (i. e. not date of French patent). II. That the things claimed in the fifth, the sixth, and the eighth claims are not patentable. *111. That Morse was not the inventor of substan-tial parts of the improvement as claimed. «- IV. That the description in the specification is insufficient. V. That the appellants do not infringe. (Each one of these heads was examined separately. The particular attention bestowed by the court to the following head, renders the insertion of the view of the counsel proper.) II. Are the 5th, 6th, and Sth Claims Patentable ? 1. Of the 5th and 6th. The fifth is a claim to the system of signs, composed of dots, spaces, and horizontal lines, (susceptible of being variously combined, representing numerals, words, and sentences,) for telegraphic purposes; being an improved instrumentality in the art of telegraphing by electricity or galvanism. The sixth is a claim to the art—consisting of the marking the signs, composed of dots, spaces, and horizontal lines, (susceptible of being variously combined, representing numerals, words, and sentences,) by closing and breaking a galvanic circuit more or less rapidly for telegraphing; combined with machinery to record them. An art is patentable by the act of 1836, and so is an improvement on it. Whittemore v. Cutter, A. Gall., 478; Phillips on Pat., 102,110; King v. Wheeler, 2 Barn. & Aid., 349; Crane v. Price, 1 Webs. Pat. Cas., 409; Sch. Bk. v. Kneass, 4 Wash. C. C., 9 and 12 ; McClurg v. Kingsland, 1 How., 204; Curtis on Pat., § 37 ; French^. Rogers, Opinion Judges Grier and Kane; Pamphlet, Kane, J., Parker n. Hulme, p. 7. The art is distinct from the means employed in its exercise ; both may be, and under this patent are, patented. II. Of the eighth claim. This claim is declaratory, and is to the effect that, having been the first to conceive and carry into effect a plan for imprinting telegraphic characters by the power of electro-magnetism, he negatives the idea that the mere instrumentalities described in his patent constitute the whole of the invention claimed by him, or even the most important part thereof, or that he intended to surrender to the public the conception he 107 101 SUPREME COURT. O’Reilly et al. v. Morse et al. had reduced to practical utility, should anybody else be able to devise other means for accomplishing the same end, by the use of the same power, but claims it as his property. He who discovers a principle and devises one mode by which the same can be rendered practically useful, is entitled to a patent which shall protect him to the full extent of his invention and against all other devices for using it. *1091 Morse, therefore, was the first to discover that -I the power of electro-magnetism could be used for the purpose of recording telegraphic signs, and devised one practical mode for using it, he may, by a general claim, secure to himself the right of so applying it, as well as the particular devices by which he did so. London Jour, and Rep. Arts, 1850, p. 130; Jupe v. Pratt, 1 Webst. Pat. Cas., 145, 146; Forsyth’s Patent, Id., 96, 97; Crane v. Price, Id., 409, 410; Park n. Little, 3 Wash. C. C., 197. See the cases collected in Lund on Patents, Law Lib., Sept., 1851, p. 37, illustrating the proposition that the rights of the patentee are not restricted to the particular application or embodiment of his invention, but extend to the exclusion of other like applications. Judge Kane’s opinion, Blanchard's case; Fr. Inst. Jour., 1847; and Pamphlet, Parker v. Hulme, Judge Kane’s opinion. Patent of 1846. Reissued 1848. The defences suggested by the appellants to this patent are, I. That the improvement is not sufficiently described, and that the improvement is not sufficiently discriminated. II. That it is for the same invention that was patented to Morse in the patent of 1840. III. That it was in use and on sale with patentee’s consent, before his application for a patent. IV. That Morse was not the inventor. As to the 4th head, the counsel for the appellees contended that the following list was shown by the evidence to have been invented by Morse: 1. He was the first person who employed an electro-magnet placed in a long circuit for telegraphic purposes. 2. He was the first person who devised suitable machinery for recording, and adapted such machinery to an electromagnet placed in a long galvanic circuit. 3. He was the first person who employed an electro-magne placed in a long galvanic circuit to open and close another long galvanic circuit for telegraphic purposes. 108 DECEMBER TERM, 1853. 102 O’Reilly et al. v. Morse et al. 4. He was the first person who employed an electro-magnet placed in a long galvanic circuit, to open and close a short local circuit at a distance for telegraphic purposes. 5. He was the first person who placed in the course of a long galvanic circuit at various distances apart, a series of electro-magnets, to open and close, at one and the same time, a corresponding series of short recording circuits, by means of which arrangement an operator at one station could simultaneously record at a series of distant telegraphic stations. *6. He was the first person who adapted to an elec-tro-magnet placed in a long galvanic circuit, suitable L machinery for recording the establishment and duration of a galvanic current through such a long galvanic current. 7. He was the first person who devised a process or mode of establishing and continuing at determinate intervals of time a galvanic current through a circuit of conductors, and of recording the establishment of such current in dots and lines. 8. He was the first person who devised a system of signs formed of the combination of dots and lines, and so applicable to the above process of recording, as to render it available for representing at a distance, letters, words, and sentences. 9. He was the first person who employed electro-magnetism, when developed in the manner and by the means specified, to produce distinguishable signs for telegraphing. 10. He was the first person who adapted to an electromagnet a lever with an adjustable reacting spring, and adjustable stops for limiting the play of such armature, and thus formed a receiving electro-magnet, susceptible of nice regulation so as to operate equally with the varying force of the galvanic currents in a long or main circuit. 11. He was the first person who combined such an electromagnet in a long circuit with a short recording circuit, to be opened and closed by such electro-magnet. 12. He was the first person who devised and constructed an apparatus or machine for telegraphing, consisting of the several following parts, sustaining to each other the several following relations, and performing the several following functions respectively: 1. A main circuit, which consists of a long conductor extending through several stations, the function of which is to transmit the galvanic current through its whole length whenever it is closed. 109 103 SUPREME COURT. O’Reilly et al. v. Morse et al. 2. A main battery series, each of which consists of a number of cups arranged along the main conductor, the function of which is to supply the main conductor with a current sufficient to work the electro-magnets in its course. 3. Operating keys, a small metallic lever, 44 to break and close the main circuit. 4. A series of receiving magnets, 44 an electro - magnet, with lever, and reacting spring, 44 to close the office circuit when a current passes through the main circuit. 5. Adjusting screws, 44 movable screws to regulate force of reacting spring and play of lever, 44 to render receiving magnets sensitive to varying force of main current. #1041 *6. Office J circuits, 44 a circuit of conductors limited to each office, 44 to transmit the power to mark the paper. 7. Office battery series, CC a certain number of Grove cups at each station, 44 to generate and supply the office circuit with a current of greater force than the main circuit current. 8. Marking apparatus, which consists of a fine pointed piece of iron, pen lever, and grooved roller, 44 to indent dots and lines upon paper. 9. Registers, 44 a series of clockwork moved by a weight regulated by a fly, 44 to move the paper uniformly under the point of the pen. 10. Office magnets, 44 an electro-magnet, 44 1. To develop the power by which the pen marks in the groove of a roller. 2. To produce audible distinguishable sounds. 11. Certain p r o-cess, 44 in establishing, continuing, and interrupting a galvanic current, through the main circuit at determinate intervals, 44 to record dots and lines at one or many distant, stations at the will of a distant operator. 12. A system of signs 44 dots and lines to represent the letters of the alphabet and numerals, 44 1. When applied to the record, to render such record intelligible. 2. When applied to the sounds of the office magnet, to render those sounds intelligible. 110 DECEMBER TERM, 1853. 104 O’Reilly et al. v. Morse et al. 13. The art of recording dots and lines at a distance for telegraphing. (The counsel then examined the question of infringement of each patent, separately, and concluded with the following:) The Appellants infringe the Patents of 1840 and 1846, jointly considered. It is proper to consider the claims of the patents together, and in connection with the specifications as well as separately, in order to secure the real invention to the patentee. The joint effect of the several claims of the first patent, apart from the specific things claimed in each, makes it a patent also for Morse’s new art, process, and system of telegraphing, by recording the variable duration of the galvanic current, in dots and lines. The second patent is for an improvement in the means by which that art was carried into effect. The two together constitute the art, process, system, and *means of telegraphing as improved, or, in other r*-tnc words, the Telegraph. L This whole system or telegraph so jointly considered, as used by the appellants, in all its main features, is copied from that of the appellees. That it is so, will appear from the following table, showing the several parts of the apparatus used by each, and their several relations and functions. The appellants and appellees agree in employing an apparatus for telegraphing, consisting of the following parts sustaining to each other the several following relations, and performing the several following functions, respectively •— 1. A main circuit, which consists of a long conductor extending through several stations, the function of which is to transmit the galvanic current through its whole length whenever it is closed. 2. A main battery series, u a number of cups arranged along the main conductor, to supply the main conductor with a current sufficient to work the electro-magnets in its course. 3. Operating keys, each of which consists of a small metallic lever. lic *from using it, even if discovered. He can J lawfully claim only what he has invented and described, and if he claims more his patent is void. And the judgment in this case must be against the patentee, unless he is within the act of Congress which gives the right to disclaim. The law which requires and permits him to disclaim, is not penal but remedial. It is intended for the protection of the patentee as well as the public, and ought not, therefore, to receive a construction that would restrict its operation within narrower limits than its words fairly import. It provides “that when any patentee shall have in his specification claimed to be the first and original inventor or discoverer of any material or substantial part of the thing patented, of which he was not the first and original inventor, and shall have no legal or just claim to the same,”—he must disclaim in order to protect so much of the claim as is legally pa* tented.1 , Whether, therefore, the patent is illegal in part because he claims more than he has sufficiently described, or more than he invented, he must in either case disclaim, in order to save the portion to which he is entitled ; and he is allowed to o so when the error was committed by mistake. 1 Cited. Dunbar v. Myers, 4 Otto, 194. 128 DECEMBER TERM, 1853 121 O’Reilly et al. v. Morse et al. A different construction would be unjust to the public, as well as to the patentee, and defeat the manifest object of the law, and produce the very evil against which it intended to guard. It appears that no disclaimer has yet been entered at the patent office. But the delay in entering it is not unreasonable. For the objectionable claim was sanctioned by the head of the office ; it has been held to be valid by a circuit court, and differences of opinion in relation to it are found to exist among the justices of this court. Under such circumstances the patentee had a right to insist upon it, and not disclaim it until the highest court to which it could be carried had pronounced its judgment.1 The omission to disclaim, therefore, does not render the patent altogether void; and he is entitled to proceed in this suit, for an infringement of that part of his invention which is legally claimed and described. But as no disclaimer was entered in the patent office before this suit was instituted, he cannot, under the act of Congress, be allowed costs against the wrongdoer, although the infringement should be proved. And we think it is proved by the testimony. But as the question of infringement embraces both of the reissued patents, it is proper, before we proceed to that part of the case, to notice the objections made to the second patent for the local circuits, which was originally obtained in 1846 and reissued in 1848. It is certainly no objection to this patent, that the improvement is embraced by the eighth claim in the former one. We *have already said that this claim is void, and that the qo former patent covers nothing but the first seven inven-tions specifically mentioned. Nor can its validity be impeached upon the ground that it is an improvement upon a former invention, for which the patentee had himself already obtained a patent. It is true that under the act of 1836, s. 13, it was in the power of Professor Morse, if he desired it, to annex this improvement to his former specification, so as to make it from that time a part ot the original patent. But there is nothing in the act that forbids him to take out a new patent for the improvement, if he prefers it. Any other inventor might do so: and there can be no reason in justice or in policy, for refusing the like privilege tq the original inventor. And when there is no positive law to the contrary, he must stand on the same footing with any other inventor of an improvement upon a previous discovery.a,. Nor is he bound in his new patent to refer 1 Follo^e»- Seymour v. McCormick, 19 How., 105, 106. VOL. XV____9 129 122 SUPREME COURT. O’Reilly et al. v. Morse et al. specially to his former one. All that the law requires of him is that he shall not claim as new, what is covered by a former invention, whether made by himself or any other person. It is said, however, that this alleged improvement is not new, and is embraced in his former specification ; and that if some portion of it is new, it is not so described as to distinguish the new from the old. It is difficult, perhaps impossible, to discuss this part of the case, so as to be understood by any one who has not a model before him, or perfectly familiar with the machinery and operations of the Telegraph. We shall not, therefore, attempt to describe minutely the machinery or its made of operation. So far as this can be done intelligibly, without the aid of a model to point to, it has been fully and well done in the opinion delivered by the learned judge who decided this case in the Circuit Court. All that we think is useful or necessary to say is, that after a careful examination of the patents, we think the objection on this ground is not tenable. The force of the objection is mainly directed upon the receiving magnet, which it is said is a part of the machinery of the first patent, and performs the same office. But the receiving magnet is not of itself claimed as a new invention. It is claimed as a part of a new combination or arrangement to produce a new result. And this combination does produce a new and useful result. For, by this new combination, and the arrangement and position of the receiving magnet, the local and independent circuit is opened by the electric or galvanic current, as it passes on the main line, without interrupting it in its course; and the intelligence it conveys is recorded almost at the same no-, moment at the *end of the line of the Telegraph, and J at the different local offices on its way. And it hardly needs a model or a minute examination of the machinery to be satisfied that a telegraph which prints the intelligence it conveys at different places, by means of the current, as it passes along on the main line, must necessarily require a different combination and arrangement of powers from the one that prints only at the end. The elements which compose it may all have been used in the former invention; but it is evident that their arrangement and combination must be different to produce this new effect. The new patent for the local circuits was therefore properly granted; and we perceive no well-founded objection to the specification or claim contained in the reissued patent of 1848. The two reissued patents of 1848, being both valid, with the exception of the eighth claim in the first, the only remaining 130 DECEMBER TERM, 1853. 123 O’Reilly et al. v. Moi’se et al. question is, whether they or either of them have been infringed by the defendants. The same difficulty arises in this part of the case which we have already stated, in speaking of the specification and claims in the patent for the local circuits. It is difficult to convey a clear idea of the similitude or differences in the two Telegraphs to any one not familiarly acquainted with the machinery of both. The court must content itself, therefore, with general terms, referring to the patents themselves for a more special description .of the matters in controversy. It is a well-settled principle of law, that the mere change in the form of the machinery (unless a particular form is specified as the means by which the effect described is produced) or an alteration in some of its unessential parts; or in the use of known equivalent powers, not varying essentially the machine, or its mode of operation or organization, will not make the new machine a new invention. It may be an improvement upon the former ; but that will not justify its use without the consent of the first patentee. The Columbian (O’Reilly’s) Telegraph does not profess to accomplish a new purpose, or produce a new result. Its object and effect is to communicate intelligence at a distance, at the end of the main line, and at the local circuits on its way. And this is done by means of signs or letters impressed on paper or other material. The object and purpose of the Telegraph is the same with that of Professor Morse. Does he use the same means ? Substantially, we think he does, both upon the main line and in the local circuits. He uses upon the main line the combination of two or more galvanic or electric circuits, with independent batteries for the purpose of obviating the diminished force of the galvanic current and in a manner varying very little in form from the invention of Professor Morse. And, indeed, the L same may be said of the entire combination set forth in the patentee’s third claim. For O’Reilly’s can hardly be said to differ substantially and essentially from it. He uses the combination which composes the register with no material change in the arrangement, or in the elements of which it consists; and with the aid of these means he conveys intelligence by impressing marks or signs upon paper—these marks or signs being capable of being read and understood by means of an alphabet or signs adapted to the purpose. And as regards the second patent of Professor Morse for the local circuits, the mutator of the defendant does not vary from it in any essential particular. All of the efficient elements of the 131 124 SUPREME COURT. O’Reilly et al. v. Morse et al. combination are retained, or their places supplied by well-known equivalents. Its organization is essentially the same. Neither is the substitution of marks and signs, differing from those invented by Professor Morse, any defence to this action. His patent is not for the invention of a new alphabet ; but for a combination of powers composed of tangible and intangible elements, described in his specification, by means of which marks or signs may be impressed upon paper at a distance, which can there be read and understood. And if any marks or signs or letters are .impressed in that manner by means of a process substantially the same with his invention, or with any particular part of it covered by his patent, and those marks or signs can be read, and thus communicate intelligence, it is an infringement of his patent. The variation in the character of the marks would not protect it, if the marks could be read and understood. We deem it unnecessary to pursue further the comparison between the machinery of the patents. The invasion of the plaintiff’s rights, already stated, authorized the injunction granted by the Circuit Court, and so much of its decree must be affirmed. But, for the reasons hereinbefore assigned, the complainants are not entitled to costs, and that portion of the decree must be reversed, and a decree passed by this court, directing each party to pay his own costs, in this and in the Circuit Court. Mr Justice WAYNE, Mr. Justice NELSON, and Mr. Justice GRIER, dissent from the judgment of the court on the question of costs. Mr. Justice GRIER. I entirely concur with the majority of the court that the aPPe^ee *and complainant below, Samuel F. B. Morse, J is the true and first inventor of the Recording Telegraph, and the first who has successfully applied the agent or element of nature called electro-magnetism, to printing and recording intelligible characters at a distance ; and that his patent of 1840, finally reissued in 1848, and his patent for his improvements as reissued in the same year, are good and valid; and that the appellants have infringed the rights secured to the patentee by both his patents. But, as I do not concur in the views of the majority of the court, in regard to two great points of the case, I shall proceed to express my own. . I. Does the complainant’s first patent come within the proviso of the 6th section of the act of 1839 ? and shou 132 DECEMBER TERM, 1853. 125 O’Reilly et al. v. Morse et al. the term of fourteen years granted by it commence from the date of his patent here, or from the date of his French patent in 1838 ? If the complainant’s patent is within the provisions of this section, I cannot see how we can escape from declaring it void. The proviso declares that, “ in all cases, every such patent (issued under the provisions of that section) shall be limited to the term of fourteen years from the date or publication of such foreign letters-patent.” It is true it does not say that the patent shall be void if not limited to such term on its face ; but it gives no power to the officer to issue a patent for a greater term. If the patent does not show the true commencement of the term granted by it, the patentee has it in his power to deceive the public, by claiming a term of fourteen years, while in reality it may not be more than one. But I am of opinion that the patent in question does not come within this proviso. The facts of the case, as connected with this point, are these : On the 6th of October, 1837, Morse filed in the office of the commissioner of patents, a caveat accompanied by a specification, setting forth his invention, and praying that it may be protected, till he could finish some experiments necessary to perfect its details. On the 9th of April, 1838, he filed a formal application for a patent, accompanied by a specification and drawings. On the first of May, 1838, the commissioner informs him, that his application has been granted. Morse answers on the 15th of May, that he is just about to sail to Europe, and asks the commissioner to delay the issue of his patent for the present, fearing it effects upon his plans abroad. On the 30th of October, 1838, he obtained his useless French patent. On his return to this country in 1840, he requests his patent to be perfected and issued. In this application, filed on the 9th of April, 1838, there was an oversight ln filling up the day and month. This clerical omission was wholly immaterial, *but ex majori cautela a second affidavit was filed, and the patent issued on the 20th *-of June, 1840, for the term of fourteen years from its date. The application of 1838 had a set of drawings annexed to the specification. The second set of drawings required by the 6th section of the act of 1837, being for the purpose of annexation to the patent, they were entirely unnecessary till e patent issued, and are not required by law to accompany e application when first made, and the want of them can-no affect the validity of the application. 133 126 SUPREME COURT. O’Reilly et al. v. Morse et al. In many instances, owing to various causes, the patent is . not issued till many months, and sometimes a year or more after the application. The commissioner requires time to examine the specification; he may suggest difficulties and amendments; and disputes often arise, which delay the issuing of the patent. But the application does not require to be renewed, and is never considered abandoned in consequence of such delay. It still remains as of the date of its filing for every purpose beneficial to the applicant. The law does not require that the specification and its accompaniments should be in the precise form which they afterwards assume in the patent. It requires only that the application be “ in writing,” and that the applicant should “ make oath that he is the original inventor,’’' &c. The other requirements of the act must precede the issuing of the patent, but make no part of the application, and are not conditions precedent to its validity. In the present case, we have, therefore, a regular application in due form, accompanied by a specification and drawings, filed on the 9th of April, 1838. It has not been withdrawn, discontinued, or abandoned. There is nothing in the act of Congress which requires that the patent should be issued within any given time after the application is filed, or which forbids the postponement of it for a time, at the suggestion either of the applicant or the officer. Nor is there anything in the general policy of the patent law which forbids it. On the contrary, it has always been the practice, when a foreign patent is desired, to delay the issuing of the patent here, after application filed, for fear of injuring such foreign application. It forms no part of the policy of any of our patent acts to prevent our citizens from obtaining: patents abroad. By the Patent Act of 1793, the applicant must swear “that his invention was not known or used before the application. The filing of the application was the time fixed for determining the applicant’s right to a patent. If a patent had issued abroad, or the invention had been in use or described in some public work before that time, it was a good defence to it. The *1271 time *°f filing the application was, therefore, made by -■ law the criterion of his right to claim as first inventor. A foreign patent .subsequent to the date of his application, could not be set up as a defence against the domestic patentee. The American inventor who had filed his application and specification at home, was thus enabled to obtain his patent abroad, without endangering his patent at home. This was a valuable privilege to American citizens, and one of which be has never been deprived by subsequent legislation. And thus the law stood till the act of 4th July, 1836. 134 DECEMBER TERM, 1853. 127 O’Reilly et al. v. Morse et al. Before this time the right to obtain a patent was confined to American citizens, or those who had filed their intentions to become such. The policy of this act was to encourage foreign inventors to introduce their inventions to this country, but in doing so it evinces no intention of limiting our own citizens by taking away from them rights which they had hitherto enjoyed. Accordingly it gave an inventor, who had obtained a patent abroad, and who was generally a foreigner, a right to have one here, provided he made his application here within six months after the date of his foreign patent. Neither the letter nor the spirit of this act interferes with the right of an inventor who has filed his application here, from obtaining a patent abroad, or his right to a term of fourteen years, from the date of his patent. In 1838, therefore, when complainant filed his application, he was entitled to such a patent. But in March, 1839, an act was passed, by the 6th section of which it is alleged the complainant’s rights have been affected. That section is as follows: “ That no person shall be debarred from receiving a patent for any invention, &c., as provided in the act of 4th July, 1836, to which this is additional, by reason of the same having been patented in a foreign country, more than six months prior to his application. Provided, that the same shall not have been introduced into public and common use in the United States prior to the application for such patent. And provided, also, that in all cases, every such patent shall be limited to the term of fourteen years from the date of publication of such foreign letters-patent.” Now the act of 1836, as we have shown, had given a privilege to foreign patentees to have a patent within six months after date of such foreign patent. It had not affected, in any manner, the right previously enjoyed by American citizens, to take out a foreign patent after filing their applications here. This section gives additional rights to those who had first taken out patents abroad, and holding out an additional encouragement to foreign inventors to introduce their inventions here, subject to certain Conditions contained in r#1 the proviso. Neither the letter, spirit, nor policy of *-tms act, have any reference to, or bearing upon, the case of persons who. had just made their applications here. To con-stiue a proviso, as applicable to a class of cases not within its enacting clause, would violate all settled rules of construc-ion. The office of a proviso is either to except something iom the enacting clause, or to exclude some possible ground 135 128 SUPREME COURT. O’Reilly et al. v. Morse et al. of misinterpretation, or to state a condition to which the privilege granted by the section shall be subjected. Here the proviso is inserted, to restrain the general words of the section and impose a condition on those who accept the privileges granted by the section. It enlarged the privileges of foreign patentees, which had before been confined to six months, on two conditions. 1st. Provided the invention patented abroad had not been introduced into public use here; and 2d, on condition that every such patent should be limited in its terms. The general words, “in all cases,” especially when restrained to every such patent, cannot extend the conditions of the proviso beyond such cases as are the subject-matter of legislation in the section. The policy and spirit of the act are to grant privileges to a certain class of persons which they did not enjoy before; to encourage the introduction of foreign inventions and discoveries, and not to deprive our own citizens of a right heretofore enjoyed, or to affect an entirely different class of cases, when the applications had been filed here before a patent obtained abroad. It is supposed, that certain evils might arise by allowing an applicant for a patent here to delay its issue till he can obtain a foreign patent. To which, it is a sufficient answer to say, that if such evil consequences should be found to exist, it is for Congress to remedy them by legislation. It is no part of the duty of this court, by a forced construction of existing statutes, to attempt the remedy of possible evils by anticipation. I am, therefore, of opinion that the complainant’s patent, as renewed, contained a valid grant of the full term of fourteen years from its original date. II. The other point, in which I cannot concur with the opinion of the majority, arises in the construction of the eighth claim of complainant’s first patent, as finally amended. The first claim, as explanatory of all that follow, should be read in connection with the eighth. They are as follows: “ 1st. Having thus fully described ray invention, I wish it to be understood, that I do not claim the use of the galvanic current or currents of electricity, for the purpose of telegraphic communications generally; but what I specially *1291 c^m as my invention and improvement, is making -* use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the fq^t- principal part of my invention, as means of operating or giWig motion to machinery which may be used to imprint ‘•signals, upon paper or other suitable material, or to produce sounds in any 136 DECEMBER TERM, 1853. 129 O’Reilly et al. v. Morse et al. desired, manner for the purpose of telegraphic communication at any distances. The only ways in which the galvanic current had been proposed to be used prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and tlie bubbles and the deflections of the needles thus produced, were the subjects of inspection, and had no power or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnet-ism. “ There are various known modes of producing motions by electro-magnetism, but none of these had been applied prior to my invention and improvement to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement,” “ 8th. I do not propose to limit myself' to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.” The objection to this claim is, that it is too broad, because the inventor does not confine himself to specific machinery or parts of machinery, as described in his patent, but claims that the essence of his invention consists in the application of electro-magnetism as a motive power, however developed, for printing characters at a distance. This being a new application of that element or power, of which the patentee claims to be the first inventor or discoverer. tai order to test the value of this objection, as applied to the present case, and escape any confusion of ideas too often arising from the use of ill-defined terms and propositions, let ns examine, 1st. What may be patented; or what forms a proper subject of protection, under the Constitution and acts °* Executor of Joseph Archer, deceased. In the settlement of complicated partnership accounts by means of an arbitrator, Bispham was charged with one half of certain custom-house bonds, which Archer, the other partner, was liable to pay, and which obligations had been incurred on partnership account. There was a reservation in the settlement as to certain liabilities, but this one was not included. Archer’s estate was afterwards exonerated from the payment of these bonds by a decision of this court, reported in 9 How., 83. A bill cannot be brought by Bispham against Archer’s executor to refund one half of the amount of the bonds, upon the ground that Archer had never paid it. The reference to an arbitrator was lawful, and his award included many items which were the subject of estimates. It was accepted as perfectly satis-tory, and acquiesced in as such until long after the death of Archer.1 No fraud or mistake is charged in the bill, and if an error of judgment occurred, by which the chance was overrated that the custom-house bonds would be enforced against Archer, this does not constitute a ground for the interference of a court of equity.2 The statute of limitations also is a bar to the claim, the exception as to merchants’ accounts, if it applies at all to accounts of partners, inter sese, not including their stated accounts.3 This was an appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania, sitting as a court of equity. *• The facts in the case are very fully stated in the opinion of the court. It was argued by Mr. Gerhard for the appellant and by Mr. Meredith for the appellee. 1 An award may be set aside for a palpable mistake of fact, such as a miscalculation of figures; or for an error of law appearing on the face of the award, i.e., where it appears that the arbitrators intended to decide according to law, but, through mistake as to the law, did not. I)e Castro v. Brett, 56 How. (N. Y.) Pr., 484. See also Stettheimer v. Killip, 75 N. Y., 282. Where one, without objection, suffers another to do acts which proceed upon the ground of authority from him, or by his conduct adopts and sanctions such acts after they are done, he will be bound, although no previous authority exist, in all respects as if the requisite power had been given in the most formal man- 172 ner. Bronson v. Chappell, 12 Wall., 681. 2 When a settlement of partnership accounts will be set aside because of the false and fraudulent statements of one partner. See King v. Leighton, 22 Hun (N. Y.), 419. See also Gates v. Fraser, 6 Ill. App., 229. 3 Where parties make out what they believe to be a correct itemized account of the dealings between them, and the balance appearing thereon is paid, the items can no longer be considered unsettled, although one item was omitted by mistake. Such a case is not within the exception of “ Merchants’ Accounts ” in the statute oi limitations. Lancey v. Maine Central R. R. Co., 72 Me., 34. DECEMBER TERM, 1853. 162 Bispham v. Price. The counsel for the appellant made the following points. First -Point. The express terms and proper construction of the statement of the accounts between the parties by William Foster, entitle the appellant to a recovery. The “settlement ” or “statement” of the accounts by Mr. Foster, giving rise to this suit, is careful to provide for any such contingency as that which has occurred. The amount to be paid by Mr. Archer to Mr. Bispham, is declared to be “ in liquidation and full settlement between them, of all matters, claims, and demands, relating to or growing out of the transactions of their late firm, so far as they are now known, ascertained, or believed to exist.” This seems to include every future contingency, and to reserve to each party the benefit of it. To prevent any possible future misunderstanding, however, the paper goes on to provide, First. “ But as liabilities may hereafter be established or ascertained,” Second. “ Or claims received, not now known to exist, growing out of transactions during the partnership for partnership *account, it is understood that the same are not embraced in the foregoing settlement and deter- *-urination by me as the agent and umpire of the parties, and especially any matter of such character contingent on the result of pending suits, is excepted from this adjustment of the affairs of said firm.” It will be observed, that there were no pending suits unless a reference was intended, as was doubtless the case, to the suits by the United States against Mr. Archer on the customhouse duty bonds in question—no others existed. There was one and one only, in New York, besides those, which are the foundation of this suit. And it is submitted that the court below erred in refusing to recognize, as pending suits, those in which judgments had been recovered, but the judgments themselves were unsatisfied—and that, too, when the phrase is used by merchantile men in an informal paper writing. If a reference is only made to the second reservation above quoted, it is submitted that the appellant’s case is made out. What difference is there between the actual facts, and the hypothetical case of a payment by Mr. Archer and a repay-k Mifflin ? Could there, in such an event, have been a oubt as to Mr. Bispham’s right to participate in that re-eo-very. The facts then would have been literallv within the provision. SecondPoint. If it is necessary to sustain the case for e appellant, the court as a court of equity, would reform 173 163 SUPREME COURT. Bispham v. Price. the agreement and statement made in pursuance of it, to give relief to the appellant in the present case. It* is a case within the principles of both mistake and accident. It is clearly settled, that where, either in a settlement, award, or even a solemn adjudication by the judgment of a competent court, there has been a technical mistake, such as has occurred in the present case, courts of equity will relieve against such a mistake. Courts of equity will grant relief in cases of mistake in written contracts, not only when the fact of the mistake is expressly established, but also when it is fairly implied from the nature of the transaction. Story, Eq., § 162. Equity will give effect to the real intentions of the parties, as gathered from the objects of the instrument, and the circumstances of the case. The general rule, “Quoties in verbis nulla est ambigiiitas, ibi” &c., shall not prevail to defeat the manifest intent and object of the parties, where it is clearly discernible, on the face of the instrument, and the ignorance, or blunder, or mistake of the parties has prevented them from expressing it in the appropriate language. Id., § 168. “ The same principle applies where a legacy is revoked, or is given upon a manifest mistake of facts.” Id., § 182. 8 Hare, 222; Osgood v. Jones, 10 Shep. (Me.), 312; Williamson v. Johnson, 3 Hals. (N. J.) Ch., 537. *164.1 *8° a^S0 in case settlements, so called. -• A settlement of accounts, where one of the parties had but little knowledge of the matters settled, will be considered as primd facie evidence, subject to be rebutted by satisfactory proof, under proper allegations, in the pleadings charging fraud or mistake as to particular items. Lee’s Administrators v. Reed, 4 Dana (Ky.), 109. The court will open settlements made by mistake, although receipts in full have passed, and the note on which payments were made has been taken up. M' Crae v. Hollis, 4 Desaus. (S. C.), 122. See also Shipp v. Swann, 2 Bibb (Ky.), 82. Waggoner v. Minter, 7 J. J. Marsh. (Ky.), 173. Where a bond was in form only a joint bond, but it was suggested to have been the intention of the parties to have made it joint and several, the court referred it to the master to inquire whether this was the intention of the parties. Where such intention appears on the face of the bond, the court will treat it as a joint and several bond, although it is only a joint bond in form. Ex parte Symonds, 1 Cox, 200. See also Rawstone v. Parr, 3 Russ., 539. And so anxious is a court of equity to correct a mistake, that even parol evidence is admitted to prove one made by a 174 DECEMBER TERM, 1853. 164 Bispham v. Price. solicitor in the draft of a settlement. Rogers v. Earl, Dick., 294. See also Shipp v. Swann, 2 Bibb (Ky.), 82. An account stated, may be set up by way of plea, as a bar to all discovery and relief, unless some matter is shown which calls for the interposition of a court of equity. But if there has been any mistake, or omission, or accident, or fraud, or undue advantage, by which the account stated is in truth vitiated and the balance is incorrectly fixed, a court of equity will not suffer it to be conclusive upon the parties, but will allow it to be opened and reexamined. Sometimes the account is simply opened to contestation, as to one or more items, which are specially set forth in the bill of the plaintiff. Story, Eq., § 523. An award may be good for part and bad for part; and the part which is good will be sustained, if it be not so connected with the part which is bad, that injustice will thereby be done. Banks v. Adams, 10 Shep. (Me.), 259. To some extent the courts of equity and of common law exercise a concurrent jurisdiction on this point. Wilkins v. Woodfin, Administrator of Pearce, 5 Munf. (Va.), 183. Assumpsit lies for one against his copartner, for money paid him on a dissolution, and adjustment of the concerns of the copartnership, more than was actually due. Bond v. Hays, 12 Mass., 34. Or for one who has paid over by mistake more than his partner was entitled to receive. Id., 36. *It is very plain that the error which occurs in the r*-|pr case before the court was not a mistake of law, but L of fact, or a technical mistake, for the reason that, at the time, when that settlement was made, there was an actual existing liability for which the appellant was obliged to account. Where a party has been subjected by a decree to a contingent and probable liability, he may be compelled to account, with a view to that liability, when the state of things shall happen upon which it may depend. Bank of the State v. Rose, 2 Strobh. (S. C.) Eq., 90. If, therefore, the occurrence in question comes within the definition of a mistake, it was clearly one of fact; a mistake ot fact is this, that the account was struck upon the basis, at the contingency would never happen by which those payments were discharged. This view of the subject, however, necessarily points out another light in which it may den?”^^ aS the scope of equitable relief, viz. “ acci- The definition of “ accident,” as given by Mr. Jeremy, em- 175 165 SUPREME COURT. Bispham v. Price. braces this very case ; he defines it to be “ an occurrence in relation to a contract which was not anticipated by the parties, when the same was entered into, and which gives an undue advantage to one of them over the other in a court of “ law.” And the exception, taken to this definition by Mr. Justice Story, is that the term “ contracts ” is not sufficiently general. Story, Eq., § 78, note 3. By the term accident, is here intended not merely inevitable casuality, &c., but such unforeseen events, misfortunes, losses, acts, or omissions, as are not the result of any negligence or misconduct in the party. Story, Eq., § 78. It may be stated, generally, that where an inequitable loss or injury will otherwise fall upon a party, from circumstances beyond his own control, or from his own acts done in entire good faith, and in the performance of a supposed duty without negligence, courts of equity will interfere to grant him relief. Id., § 89. Under this definition the unforeseen death of Mr. Archer fairly brings the appellant’s case within that ground for equitable relief. See also Hachett n. Pattie., 6 Mad., 5. Third Point. There has been an entire failure of the consideration upon which the money sought to be recovered in this action was paid by the appellant to the appellee’s testator. Parish v. Stone, 14 Pick. (Mass.), 198, 210. Fink n. Cox, 18 Johns. (N. Y.), 145 ; 8 Mass., 46; 15 Johns. (N. Y.), 503 ; 4 Pick. (Mass.), 391; 2 Pa. St., 200. This is the appellant’s case, to which various defences have been made. It is said that Mr. Bispham released Mr. Archer. There is no release, (technical,) express or by implication. Agnew v. Dorr, 5 Whart. (Pa.), 131; Tyson v. Dorr, 6 Id., 256. Nor *if it were a release would it be binding in -• a court of equity, where there was ground for relief on account of mistake or accident. Story, Eq., § 523 ; M'Crae v. Hollis, 4 Desaus. (S. C.), 122; Shipp v. Swann, 2 Bibb (Ky.), 82. When construing the whole transaction together, with an effort and the right to arrive at the actual meaning of the parties, there can be no question that no such release, as is asserted in the answer, was designed or intended. Even construing exhibit E as a strict technical release, the defendant cannot at all sustain his construction of it. Mr. Bispham exonerates Mr. Archer from any further claims, “ further than such as can be made under Mr. Foster’s settlement, is the grammatical construction. And the plaintiff really asks for nothing beyond this. Again, it is said by the appellee that the agreement to state the accounts was a submission to an arbitrament, and tha 176 DECEMBER TERM, 1853. 166 Bispham v. Price. Mr. Foster’s statement was an award, and is conclusive on Mr. Bispham. The appellant denies that this was an award; but even if it was, the case has been shown to be carefully excluded from the effect of Mr. Foster’s statement. It is submitted that an award, not made a rule of court, cannot be binding where, if it were a rule of court, it would be set aside, and it is a familiar principle of the law of awards that courts will set aside an award made upon a mistake appearing, as here, on the face of the award itself. Watson on Arbitraments and Awards, 280. In all awards, not made under a rule of court, it is the settled law that a court of equity will relieve against them on the ground of mistake in any such case as the present. Another suggestion of the appellee is that the account stated between the parties bars the appellant. The law is otherwise where, as here, there was a mistake, accident, or any similar event. The court will open settlements made by mistake, although receipts in full have passed, and the note on which payments were made has been taken up. Again, it is said by the court below, that Mr. Bispham confirmed the settlement of the accounts twenty-one months after he had had the opportunity of examining it. This would be very well if Mr. Bispham’s absence from Philadelphia put him into legal default. But it appears, from the evidence and record, that, from the date of the settlement of November 18th, 1835, to the confirmation of the account by Mr. Bispham on the 18th of August, 1837, he was absent from Philadelphia, and had not seen Mr. Archer who was in England and Canton. He had not, therefore, at the date of the confirmation, been informed that no money had in fact been paid on this account by Mr. Archer, but he was justified in supposing, from his (Archer’s) letter of the 16th of November, 1835, . above referred to, that *the judgments had been ac-tually satisfied by him. If upon this supposition (a *-clear mistake in point of fact) Mr. Bispham confirmed the settlement by Mr. Foster, he would, upon every principle, be entirely justified in asking a court of equity to correct this mistake, particularly as he had been led into it by the assertions of Mr. Archer himself, that the liability on his part was coniplete, and that funds were provided by him for its immediate payment, which would be made as soon as they should e realized by his father. Twenty-one months after this letter i r. Bispham certainly had a right to suppose them to have een actually so applied, and that the charge was therefore a proper one. 5 But even if Mr. Bispham did abandon or waive his right, Vol. xv.——12 177 167 SUPREME COURT. Bispham v. Price. under a mistake, it will not conclude him. A party who abandons his rights under a contract, from a mistake as to their character, is not concluded by such abandonment. Williams v. Champion and Goodrich, 6 Ham., 169. The counsel for the appellant then argued that the Statute of Limitations did not apply. Mr. Meredith, for the appellee, made the following points. On behalf of the appellee it is contended that there is no equity whatever in the bill, for on this very subject-matter there were— 1. A submission and award. 2. Freely ratified and confirmed by the parties after full consideration, and with full knowledge of all material facts. 3. Payment of the amount awarded, in satisfaction, and 4. Mutual releases. (See Mr. Archer’s letter, Record, p. 22,) and Mr. Bispham’s letter, (Record, p. 24).’ It is also conceived, that— 1. If the plaintiff has any claim, he has a complete remedy at law. 2. That he is barred by the Statute of Limitations. 3. That he is affected by such laches as would bar him in equity, independently of the Statute of Limitations. 1. There was a submission and award on the very subjectmatter in question. The submission is on the record, by which, after appointing Mr. Foster the joint agent of the parties in the settlement of all accounts between them, it is ex- pressly agreed that his “ decision shall be final and binding on all the parties concerned.” By the award, dated 18th November, 1835, Mr. Foster did “award and determine ” that Mr. Archer was indebted and should pay, &c. These bonds were part of the subject-matter of that award. *1681 *We contend that this case shows both an award J and a settlement. 2. This award was freely ratified and confirmed by the parties after full consideration, and with full knowledge of all material facts. It was ratified as a whole, and by Mr. Archer, on the express condition that the whole should stand or none. See his letter of 16th November, 1835, and. the paper signed by him of 19th November, 1835, (Record, pp« 22-23). That paper, which the bill alleges was delivered by Archer to the comptroller on the 19th November, lo , (Record, p. 3,) expressly provides that if Mr. Bispham o jects to the settlement, Mr. Archer binds himself to abroga e the same, and open it for a new and final adjustment. n the 18th August, 1837, Mr. Bispham says, “the settlement 178 DECEMBER TERM, 185 3. 168 Bispham v. Price. .....is perfectly satisfactory to me, and I do hereby confirm the same.” He had taken, therefore, abundant time for the fullest consideration; and that he was acquainted with all the facts, not only appears from the evidence in the case, but has not been denied by Mr. Bispham. 3 and 4. The acknowledgment of payment, and the mutual exoneration are to be found in the letters above referred to. Mr. Bispham, in his letter of August 18th, 1837, (Record, p. 24,) after acknowledging the receipt of the amount due under the award and settlement, and reciting what he understood to be the exception, adds, “ and intending this letter as entirely exonerating you from any further claims from myself, heirs, or executors, I am,” &c. The appellant (Brief, p. 16) contends that this was not a technical release; but being founded on a sufficient consideration, it cannot be denied that it is, for all the purposes of this case, just as much a release as if the most formal instrument had been executed, The word “ further ” in the release, evidently means further than any unsettled claims which might be made on the firm. To be sure Mr. Bispham understood the meaning of the award to be the same, as will hereafter be more fully shown, and therefore, in that sense, he may be considered to have meant further than could be made under Mr. Foster’s settlement. The appellant’s counsel, in the brief, presents three points, on each of which a few words will be said. They are substantially as follow, viz. 1. That on a true construction of the award, which he calls a statement of account, the appellant is entitled to recover. 2. That the papers are, if necessary, to be reformed on the ground of mistake or accident, or both. 3. That there has been an entire failure of the consideration on which the money sought to be recovered in this action was paid. *(The remarks of Mr. Meredith upon the first and r#-|^q third of these propositions, are necessarily omitted for *-want of room.) 2. Ihe second point advanced in the brief of appellant’s counsel, is that, if necessary, the papers are to be reformed on the ground of mistake, or accident, or both. it is to be observed on this, and the succeeding point, that . j appellant’s bill sets up no case in which they can arise; 1 does not allege any mistake, or accident, or failure of coneration, nor does it pray that the papers may be reformed, is release cancelled, or that he may be relieved from his con ract; on the contrary, it appears to claim that on the 179 169 SUPREME COURT. Bispham v. Price. true construction of all the papers, agreements, &c., themselves, he is entitled to recover the money which he claims. Now a party cannot set up in argument, a case different from or inconsistent with his bill, and, therefore, there is no necessity for answering either the 2d or 3d point of appellant’s brief. Nevertheless, a brief notice will be given to both. And first on the question of mistake, the appellant’s brief has been in vain carefully examined on this head of his argument, to discover what mistake it is that he alleges. The bill does not allege any mistake, and it is conceived that the brief particularizes none. On page 12, of the brief, it is said “where there has been a technical mistake, such as has occurred in the present case, courts of equity will relieve.” Again, on page 15, “It is very plain that the error which occurs in the case before the court, was not a mistake of law, but of fact, or a technical mistake,” &c. And again, on the same page: “If, therefore, the occurrence in question comes within the definition of a mistake, it was clearly one of fact; a mistake of fact in this, that the account was struck upon the basis that the contingency would never happen by which these payments were discharged.” From these extracts, the following positions may be gathered, pursuing the order in which they are found, viz. That the mistake complained of, was, 1. A technical mistake. 2. Not a mistake of law. 3. A mistake of fact, or a technical mistake. 4. Clearly a mistake of fact, if the occurrence in question were a mistake at all. What the “occurrence” was, that is here referred to, is not very clearly explained. It may be surmised, (from what follows in the same sentence,) to have been “ the contingency by which these payments were discharged.'’ If this be so, then the allegation is that Mr. Archer’s dying six years after the settlement, was a mistake, but if so, it was not a wilful mistake, and surely not such a mistake as would induce a court of equity to set aside all the contracts he had made in his lifetime. e „ If the ground really be, that Mr. Bispham was ignorant of *1701 *tbe rule of law which discharges the estate of a J deceased surety, against whom a judgment has been obtained jointly with his principal, the answer is twofold. 1. That there is no evidence whatever that Mr. Bispham was, in fact, ignorant of that rule of law. He nowhere asserts himself to have been so ignorant; and this court have assumed, that this rule of law is known and established, an formed a part of the written conditions of the bonds in question. 180 DECEMBER TERM, 1853. 170 Bispham v. Price. 2, If such ignorance were averred or proved, then it is abundantly clear, that it would be wholly immaterial. See for this familiar principle, 1 Story, Eq., c. 5, § 111 to 115, inclusive, and the cases there cited. In the well known case of Hunt V. Rousmaniere, (8 Wheat., 174; 1 Pet., 1, 13, 14,) upon a loan of money, for which security was to be given, the lender took a letter of attorney, with power to sell the property, (ships,) in case of non-payment of the money, instead of a mortgage on the property itself, upon the mistake of law, that the security by the former instrument would bind the property as strongly as a mortgage, in case of death or other accident. The debtor died insolvent, and on a bill against his administrators to reform the instrument, or to give it a priority by way of lien on the property, the court denied relief. On the head of accident, the case seems quite clear against the appellant. In matters of positive contract and obligation created by the party, (such as this was,) it is no ground for the interference of equity that the party has been prevented from fulfilling them by accident; or, that he has been in no default; or that he has been prevented by accident from deriving the full benefit of the contract on his own side. 1 Story’s Equity, c. 4, § 101, et seq., and the cases there cited. Thus, if an estate be sold by A, to B, for a certain sum of money, and an annuity, and the agreement be fair, equity will not grant relief, although the party dies before the payment of any annuity. Mortimer v. Capper, 1 Bro. Ch., 156; Jackson v. Lever, 3 Bro. Ch., 605; and see 9 Ves., 246. There is a sort of suggestion on pages 17 and 18, of the brief, that Mr. Bispham, at the date of the confirmation of the settlement, supposed that Mr. Archer had actually paid the bonds, and that he had been led into this mistake by the assertions of Mr. Archer himself. Of Mr. Bispham, it ought to be observed that he has not in his bill, or elsewhere, so far as is known, averred or insinuated that he supposed the bonds yere paid. The settlement was made expressly on the footing that the bonds were not paid, and it was confirmed on the same footing. As Mr. Bispham does not appear to have made such a suggestion during Mr. Archer’s lifetime, or hitherto since his death, it is not probable that he will ever sanction it. ■ It is stated, in the appellant’s brief, that the part- r*-< ners never met after the expiration of the copartner- *-a nil'll , ere is no evidence in the case on that point, but the th tiu 8 counseI is instructed to say that they did meet, and a Mr. Archer, after a lingering illness, actually died in Mr. *181 171 SUPREME COURT. Bispham v. Price. Bispham’s house, at Mount Holly, N. J., where he had been staying for several weeks as a guest. Now, still looking at the settlement as relating to the bonds alone, it will be observed that the position of the parties was this. Mr. Archer was absolutely liable to the United States for the whole amount of the judgments, long before obtained against him. Mr. Bispham was liable to him for one half of what he should be obliged to pay, unless Mr. Foster’s proportion could be recovered, and the recovery of that was quite desperate. Notwithstanding the award, Mr. Archer left Mr. Bispham at perfect liberty to accept or reject its terms. Mr. Bispham might either have determined to wait till Mr. Archer had actually paid the judgments, and then contributed his proportion, in which case he would, in all human probability, have been obliged (failing Mr. Foster) to pay the full half of the whole amount; or he might accept the terms proposed in the award, and by paying at once less than half the amount, be entirely exonerated. He deliberately chose the alternative. This case seems to differ in substance from Hunt v. Rous-maniere, and other cases cited above, only in this remarkable circumstance, that whereas, in those cases, the party complaining was worse off, by reason of the unforeseen death, and lost his money thereby, in the present case, it is evident that Mr. Bispham is no worse off by Mr. Archer’s death, and has lost no money thereby. If Mr. Archer had lived, it is not pretended that Mr. Bispham would have been entitled to recover the money back, and his death merely leaves him in the same position. Mr. Justice CAMPBELL delivered the opinion of the court. This is an appeal from a decree of the Circuit Court of the United States for the eastern district of Pennsylvania. Joseph Archer (the testator of the appellee) and the plaintiff (Charles Bispham) in June, 1828, provided for the extension of a partnership, which was existing between them, for a term of five years. The plaintiff was to form a connection with another house, and to remain at Valparaiso, on the Pacific coast, for the term; while Archer was to manage the affairs of the firm in the United States. During the latter years of this partnership, Archer formed a partnership connection with another firm, and went to Canton, in . Y!a* The partners agreed to be equally Concerned in e profit or loss of all their business, whether transacted on the coast of the Pacific, the United States, or elsewheie. 182 DECEMBER TERM, 1853. 172 Bispham t>. Price. At the termination of this partnership, one of the partners was at Valparaiso and the other at Canton. In April, 1834, Archer, then at Canton, signed a paper which declares, that from “ the long and repeated absence ” of the partners from the United States “ it is believed their accounts are in a state of confusion,” and “ in case of the death of either,” “ some difficulty might be experienced in the settlement.” William Foster was therefore constituted “ the joint agent ” of the partners, “in the settlement of all accounts between them,” and “ that his decision shall be final and binding.” This paper was countersigned in the November following by Bispham, and the authority of Foster confirmed. Twelve months after, (November, 1835,) Foster executed this authority, by a statement of the accounts between the parties ascertaining a large balance to be due to Bispham, and awarded and determined that it should be paid to him “in liquidation and full settlement between them, of all matters, claims, and demands relating to, or growing out of the transactions of the firm so far as they are now known, ascertained, or believed to exist; ” and provided, that “ as liabilities might hereafter be established or ascertained, or claims recovered (received) not then known to exist, the determination was not to embrace them, and especially any matter of such a character, contingent on the result of pending suits, was excepted from this adjustment of the affairs of the firm.” Before the execution of this power, Archer had returned to the United States, and the settlement was evidently undertaken by Foster at his urgent solicitations. For, contemporaneously with the settlement, he gave to Foster a stipulation, reciting that Foster, having agreed to and ratified the final settlement of all accounts between the partners in relation to their business, that if it should happen that Bispham should, in his own name, object to this settlement, Foster is to be exempt from all blame, and he binds himself to “abrogate said settlement, and open it for a new and final adjustment.” At the same time, he wrote a letter to Bispham, stating that ne had hoped to have met him in the United States, but that as he was about to embark for China, there seemed little c ance of “their meeting for a number of years.” He had resolved, in conformity with the letter of Bispham, of the 13th ay, (this letter is not a part of the record,) to make a set-enient of Archer and Bispham’s affair with William Foster, s per statement, which he will forward, and he expresses the j11"5?11?”011 that the settlement was made on liberal princi- P es o Bispham. In this letter, after discussing various ems ot the account indicative of liberality, and jus- L 183 173 SUPREME COURT. Bispham v. Price. tifying others, he says, “if there is any thing in this settlement which does not meet with your approbation, I wish you to state it candidly to William Foster, with your reasons, and let him, as your agent, appoint an arbitrator, and my father, as mine, will name another, and let them say what is just and right under all circumstances, embracing the gain allowed you, on the shipment of raw silk in settlement, and open the account anew for adjustment. If the settlement meets your approbation, confirm it, under your own hand, and send it to me at Canton.” He promises, in this letter, to remit the balance against him from Canton. A month later, he addresses a letter to Bispham, from England, in which he states, that “ I wrote to our friend, William Foster, yesterday, about our settlement, and have stated to him, that if you were not satisfied with it, I was perfectly willing to leave it to an arbitration. He will show you the letter, if you desire it. I want the business closed, for should you or I make a finish of our career in this world, it never could be settled with any degree of certainty.” What communications were made during the year 1836, or the first half of 1837, between the partners or their agent, do not appear. The 18th of August, 1837, twenty-one months from the date of Foster’s statement, Bispham, at Valparaiso, addressed Archer a letter at Canton, in which he acknowledges the receipt of a bill on London for the ascertained balance, dated June, 1836, declares that the settlement, made by William Foster, is “ perfectly satisfactory,” admits his responsibility for any unsettled claims which might be made, and concludes that “ intending this letter as entirely exonerating you from any further claims from myself, heirs, or executors. I am, yours, &c.” It appears, from a particular averment in the bill of the plaintiff in this case, “ that no liabilities have been established or ascertained growing out of transactions during the said partnership of Archer & Bispham for partnership accounts, or any payments on account of the same, other than those known to exist at the time of the settlement of the account of said Archer & Bispham by William Foster, and that no claims had been received by Bispham, growing out of the transactions of the firm.” The record shows no other dealings between these partners during the life of Archer, who died in 1841. After his death, Bispham qualified as executor of his will, and acted for sixteen months, and was discharged upon his own petition. . ' , The present controversy originates in the execution y Archer, in his individual name, of eight bonds to the Uni e 184 DECEMBER TERM, 1853. 173 Bispham v. Price. States for the payment of duties, as surety for James L. Mifflin, upon four of which William Foster was a co-sure ty. These bonds by *arrangement, were debts of the firm. Mifflin r-#1 „ z having become insolvent, the bonds were not paid, and, ■-in 1829, judgments were rendered against the obligors jointly,, in favor of the United States, by the Circuit Court of the United States at Philadelphia. In 1831, Foster petitioned for his discharge as an insolvent, which was granted in 1834. These liabilities are included in the settlement of 1835, under the title of “statement of J. L. Mifflin’s bonds, for which Archer & Bispham are liable.” In the statement of the account, the bonds are enumerated, their dates, and the amount of principal and interest due upon them described. The share of William Foster, notwithstanding his continued insolvency and the fact of his release, is deducted, and the balance divided between the partners. From the balance found to be due on the accounting to Bispham from Archer, his share of this liability is deducted. In the letter of November, 1835, to which we have referred, Archer says,—“During our absence, my father endeavored to effect a compromise with the government for Mifflin’s bonds, and, since my return, I have also made an effort to do the same, but without effect, as the officers intrusted with such matters can make no abatement in the whole amount due with interest, unless the applicant produce all their books and papers, and affirm their inability to pay the whole amount. With these conditions I could not comply; and as there seems likely to be no benefit to us by longer delay, I have concluded to pay the amount. My father has funds enough of mine in his hands to pay the amount, which will be appropriated to that purpose as soon as he can realize them. “ You will observe, by the statement, that your proportion of the bonds has been deducted from the sum due you. I therefore absolve you from all claim for these bonds, your proportion having been paid to me in settlement.” No other explanation of the transaction is found in the record. These judgments were not paid to the United States during the lives either of Foster or Archer; nor since by Mifflin, who is the survivor of both. Upon the death of Archer we learn, from the bill and answer, that the executor of Archer “ at all times ” claimed, and now claims, the exemption of the assets in his hands rom the judgments, for the reason that the remedy at law "was extinct, and that equity would afford none. This court su^amed that claim, for reasons reported, 9 How'., 83. his bill, in 1850, was a consequence of that decision. It 185 174 SUPREME COURT. Bispham v. Price. charges that, in the settlement, it was assumed that the liability of Archer upon the bonds could be enforced by the United States, and, on that assumption, the share of Bispham in the *17^1 *liability was paid to Archer; and that the estate hav- -I ing been discharged without a payment, he is entitled to a return of his money. The bill does not claim that there was any want of information, or any mistake in reference to the state of the liability at the date of the settlement. The inference to be deduced from the age of the judgments, Foster’s connection with a portion of them, and his discharge by the United States, the item for counsel fees in the accounts, the intimate relations of the plaintiff with Archer and with the estate of Archer, and the absence of all averment in the bill, either of error, ignorance, mistake or fraud,—is, that accurate information of the judgments was possessed by all the persons connected with the settlement. The bill does not aver that these judgments were designed to be included in the reservation contained in the latter part of Foster’s report; but the extract we have made from the bill evinces that this is a claim whose situation was known, and the relations of the partners to it at that time ascertained and adjusted. The evidence is satisfactory that this reservation did not include this liability, or any contingency in which it was involved. The statement of the liability in the accounts is particular and exact. The portion of each partner is determined with precision. Archer acknowledges to have received Bispham’s share, and “ absolves ” him from further claim; while Bispham expresses his satisfaction with the whole result, and exonerates Archer from future responsibility. Whether we consider the averments in the pleadings, or the evidence, we must take the settlement as a sedate and deliberate adjustment of the affairs of the partnership, so far as they were ascertained and could be made the subject of an arrangement. The design of the settlement was to extricate the affairs of the partners from the complication, uncertainty, and confusion in which they were involved. They had been engaged in distinct partnerships, carrying on business in different continents, apparently disconnected, and having but little opportunity even of correspondence. They had the prospect before them of a longer separation, and of diminished intercourse. Their partnership had ended. The ordinary mode of liquidating, after a dissolution, could not be followed. These partners, under these circumstances, and to attain their ends, consequently agreed to a reference of their accounts o a mutual friend, and clothed him with authority to make a final and binding decision. Was this lawful? 186 DECEMBER TERM, 1853. 175 Bispham v. Price. In Knight v. Marjoribanks, 11 Beav., 322, affirmed on appeal 2 Me. & G., 10, the Master of the Rolls, after stating the usual course on a dissolution, said, “ it is lawful for partners to deal with each other in quite a different way, if they think proper. *They may lawfully rely on the stock-tak-ings, valuations, and accounts which appear in the *-books, and the accounts kept in the manner known to, or acquiesced in, by the partners. The stock-takings and valuations will be more or less accurate, according to the nature of the business and the property employed or engaged in the concern. It would, in many cases, be absurd to expect perfect accuracy, or to conclude that a transaction between partners, founded on statements appearing on the valuations and accounts stated in the books, could be set aside on the ground of some subsequent discovery of unintentional inaccuracy. When a question arises, you must in each case look to the circumstances.” In that case, the seat of the partnership was Van Diemen’s Land. The partners resided in London, having no personal knowledge of the business, and dependent upon the reports of agents, coming at distant intervals, and received several months after their date. A sale of the share of one partner to another was impeached for inadequacy of price, error, and fraud. The Master of the Rolls said, “ these parties, situated as they were, might fairly and honestly deal with each other, with respect to the share of any one, notwithstanding the ignorance in which they were as to the exact value. After all inquiry which can be made with respect to matters of this kind, the question of value becomes comparatively immaterial, if there was no deception, no misrepresentation or fraud, no unfairness.” In the case before us, entire accuracy is not to be looked for. Bispham is credited with proportions of profit arising from “ unfinished business,” and is charged with proportions of “ estimated gains.” There are items, which Archer pointed to as debatable, which he had conceded, and there are allowances to him, which might be considered as narrow. He regarded the settlement as a liberal one to Bispham. He asked its acceptance as a whole, “ to close the business,” and provided or an arbitration if this was refused. There was not haste Tf™16 acceptance, but ample time employed for inquiry, iter this, it was accepted as “ perfectly satisfactory,” and acquiesced in as such, until long after the death of Archer. VX e cannot infer mistake or error under these circumstan-^s.‘ xt ad°Pt the language of Chancellor Walworth, ( 4 aige (N. Y.), 481,) “that the practice of opening accounts, 187 176 SUPREME COURT. Bispham v. Price. which the parties who could best understand them have themselves adjusted, is not to be encouraged,” and “the whole labor of proof lies upon the party objecting to the account, and errors, which he does not plainly establish, cannot be supposed to exist.” In the absence of mistake, or fraud, does there arise an equity in favor of the plaintiff, by the averment that it was assumed in *the settlement, that there was a liability ‘ ‘J against Archer, which the United States might, at all times, and under all circumstances, enforce; and on this alone the money was paid to him, or allowed to him in settlement? In the able argument submitted to us for the plaintiff, this assumption is treated as the motive to the contract, that which constitutes its obligation, in one word, its consideration. If this assumption had been so comprehensive, and had entered so thoroughly into the inducements to the contract, the consequence might follow; but the argument is not supported by the evidence. The parties certainly assumed there existed an imminent liability over the firm which the United States could enforce against Archer, and for which it was prudent to provide. Bispham, entertaining this opinion, by making a payment to the United States on the judgments to the extent of his share, would have been absolved from the claim either of the United States or of Archer. The United States having made no contract, except with Archer, and Bispham being liable only through him, might liberate himself by a payment to Archer, instead of the United States. This he accomplished. It may be that neither party reckoned upon the neglect of the government officers about the collection of the debt, nor weighed the consequences of the death of Archer upon the binding efficacy of the judgments, but these were within the provisions of both of the parties to the contract, and its terms might have been moulded to secure the rights of each, according to such circumstances. This court has no competency to supply a providence which the parties to the contract withheld. The corpus of this portion of the contract, a debt obliging Archer, and through him affecting the partnership, the collection of which could have been enforced, and which both parties had the right to assume would be enforced, had an unquestionable existence. If there was an error, it was m overlooking the fact that there were some contingencies in which the debt might be extinguished as to Archer withou the payment of money, and in making no provision for these. An error of this nature, if it were plainly proven to exis , could not be regarded as a ground for equitable relief. 188 DECEMBER TERM, 1853. 177 Bispham v. Price. The case of Okill v. Whitaker, 1 De G. & S., 83, 2 Phil., 338, was one in which premises had been sold, and enjoyed for several years, upon a contract for the sale of the residue of a term, both parties expressly contracting and settling the price on the belief that eight years only remained unexpired. Upon the discovery that there were twenty years, a bill was filed for relief. The Vice-Chancellor complained of the delay of the suit until after the death of the purchaser, *where-fore “ those who had io administer justice between the *-parties were deprived of all the assistance and information he could give if he were living.” He said that the only reasonable ground upon which the bill could be treated was as a bill to rescind the entire contract, upon the alleged mistake, and adds, “that for the present purpose it is not too much to say, that it was their duty to know what was the state, what was the condition of the property they had to sell.” The Lord Chancellor said that the only equity presented was “ that the thing turns out more valuable than either party supposed.” The nature of this settlement and the motives presented in the correspondence concerning it, would render it impossible for the court to modify one portion, and to leave the rest in force. It was presented to Bispham as a settlement made on liberal principles, with the option to accept it as it was, or to reject it altogether. Without the benefit of the information and assistance that Archer and Foster might give, after so long an acquiescence, the case must be brought clearly within the limits in which courts of equity are accustomed to interfere, to justify such a decree. This has not been done. But if we could doubt upon the intrinsic equities of the parties, the statute of limitations affords a conclusive answer to the bill. The bill and the answer agree that this item of the account was ascertained and stated, and that all the liabilities of the firm were practically adjusted by this settlement. The amount of the liability of Bispham was credited to him, and he received the ‘•.absolution ” of Archer, from all further claim. The exception in the Pennsylvania statute in favor of merchants’ accounts, according to numerous authorities of the State courts, does not apply to the accounts of partners inter sese, though 18 not universally admitted. 1 Rob. (Va.), 79 ; 10 Pick. (Mass.), 112; 6 Mon. (Ky.), 10. 4 Sandf. (N. Y.), 311 (contra). But however the law may be as to open accounts, e settled doctrine of the court is, that the exception in the s a ute does not apply to stated accounts. Spring v. Grey, b Pet., 151; Toland v. Sprague, 12 Pet., 300. 189 178 SUPREME COURT. Bevins et al. v. Ramsey et al. If we regard this money as a deposit in the hands of Archer, to be applied to a specific object, or to abide the action of the government against him, in either case the statute would afford a bar. The assumpsit in the one would be to pay the money in a reasonable time, and a cause of action would accrue upon a neglect of this duty. Foley v. Hill, 1 Phill., 399; Brookbank v. Smith, 2 Younge & Col., 58; 13 Barb., 632; 11 Ala., 679; 4 Sandf. (N. Y.), 590. In the other case, the liability of Archer was determined at *his death, and the right of the United States then J extinguished. The facts were all known at that time, and the executor of Archer appreciated accurately the legal value of the facts, for the bill avers and the answer admits that he uniformly repelled the claim of the United States, and denied its validity. It is clear, therefore, if Bispham had placed this money to abide the issue of these obligations, the right to reclaim it arose at the death of Archer. Calvin n. Buckle, 8 Mus. & W., 680; Maury v. Mason, 8 Port. (Ala.), 211. Our views upon this statute correspond with those expressed by the Supreme Court of Pennsylvania. Hamilton v. Hamilton, 18 Pa. St., 20; Porter v. School Directors, Id., 144. Upon the whole case, we conclude there is no error in the record, and that the decree should be affirmed. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Eastern District of Pennsylvania, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed with costs. William C. Bevins and Oliver P. Earle, surviving Partners of the firm of Bevins, Earle & Co., Assignees, &C., WHO SUE FOR THE USE OF OLIVER P-Earle, Plaintiffs in Error, v. William B. A. Ramsey, Robert Craighead, James P. N. Craighead, Thomas W. Humes, and James McMillan, Administrator of Andrew McMillan, deceased. Where a clerk of a court was sued upon his official bond, and the breach alleged was, that he had surrendered certain goods without taking a bond with goo 190 DECEMBER TERM, 1853. 179 Bevins et al. v. Ramsey et al. and sufficient securities, and the plea was, that the bond which had been taken was assigned to the plaintiffs, who had brought suit, and received large sums of money in discharge of the bond,—this plea was sufficient, and a demurrer to it was properly overruled. This case was brought up, by writ of error, from the Circuit Court of the United States for the District of East Tennessee. Ramsey was clerk of the Chancery Court, held at Knoxville, Tennessee. Bevins and Earle were citizens, the former of Arkansas, and the latter of South Carolina. *The action was one of debt, upon the official bond r-*-< ™ of Ramsey, and his securities. The declaration states that Ramsey was appointed clerk and master of the Chancery Court, in the declaration mentioned; and, on the 11th April, 1836, delivered to Newton Cannon, Governor of Tennessee, his bond, with the other defendants, his sureties, in the penalty of $10,000, conditioned to discharge the duties of the office of clerk and master, according to law. That Ramsay failed to discharge the duties of that office: 1. That upon the dissolution of an injunction, awarded on a bill attaching certain property brought by the plaintiffs against Chase & Bowen, which property had been put in the hands of Ramsey, clerk and master, as receiver, he was ordered to surrender the property attached on Chase & Bowen, giving bond and security to abide the decree; that it was the duty of Ramsey, as clerk and master, to take that bond; that he did not take their bond with sufficient securities, but, on the contrary, took the bond of Chase, with Thornburg and others, as sureties, who were then wholly insufficient for the performance of the judgment and decree; that plaintiffs finally got a decree for $6,303.64, which is still unpaid. 2. That in the suit of Bevins, Earle, and Brown v. Chase $ Bowen, the property attached in, which had been placed in the hands of Ramsey, clerk and master of the court, as receiver, he was ordered to surrender the property attached to Chase & Bowen, on their giving bond and security to abide by and perform the decree ; and under that order it was the duty of Ramsey, as clerk and master, before surrendering the goods, to take a bond from Chase & Bowen, with sufficient security conditioned according to the order. But Ramsey did not take such bond with sufficient security, but wholly neglected and failed so to do, and gave up the property without so doing. And plaintiffs afterwards obtained a decree against Chase & Bowen, for $6,303,64, which is still unpaid by said Chase & Bowen. 191 180 SUPREME COURT. Bevins et al. v. Ramsey et al. 3. That in the suit, and under the order-above described, it was the duty of Ramsey, as clerk and master, to take such bond as the order directed to be taken before surrendering the property; yet Ramsey did not take bond and security from Chase & Bowen to abide and perform the decree, but surrendered the property without taking bond and security; and a decree was afterwards rendered for $6,303.64, in favor of the plaintiffs. 4. That in the suit, and under the order aforesaid, it was the duty of Ramsey, as clerk and master, to take from Chase & Bowen, bond and sufficient security to abide and perform the decree ; yet he wholly failed and neglected to take bond and sufficient security, but surrendered the property held by *11 him as *receiver, without taking bond and security as J required by the order: and afterwards a decree for 6,303.64 was in that suit rendered in favor of plaintiffs, which Chase & Bowen have failed to perform, and which yet remains due. By reason of the premises, the bond of Ramsey, as clerk and master, became forfeited, and was assigned by the successor of the obligee, Governor of Tennessee, by his written assignment, on a copy of the bond, to plaintiffs, on the 22d July, 1847. The defendants appeared and pleaded: 1st. That they had performed the condition of the bond. 2d. That it was no part of the right or duty of Ramsey, as clerk and master, to take the bond of Chase & Bowen with good and sufficient security or otherwise, but it was the duty of the receiver. On these pleas there is an issue of fact. 3d. That the filing the bill of the plaintiffs against Chase & Bowen, the attachment awarded, and the appointing the receiver, the order requiring the bond and final decree, were null and void for want of jurisdiction in the court of chancery, the remedy being properly at law. 4th. That after the order on the declaration mentioned, and before the surrender of the property, Ramsey did take a bond conditioned as required by. the order, which bond was, application of Bevins, Earle & Co., by the court, ordered o be surrendered, and was accepted; and under it they have recovered $2,000. 5th. That the defendants do not owe the debt. 7th. That at the date of the bond, the obligors and obligees were citizens of Tennessee, and the obligors and the obhgee and his successors, have all continued to be citizens oi len nessee. 492 DECEMBER TERM, 1853. 181 Bevins et al. v- Ramsey et al. 8th. That at the time of the cause of action the plaintiffs and defendants were citizens of Tennessee. To these pleas the plaintiffs demurred. To the 6th plea: that before surrendering the property, Ramsey took bond conditioned as required by the order; and in so doing, and judging of the sufficiency of the sureties, he acted bond fide in the exercise of his best judgment. The plaintiffs replied, that Ramsey did not take bond from Chase & Bowen with sufficient surety, as was his duty. To this replication the defendants demurred. The court overruled the demurrers of the plaintiffs, and sustained the demurrer of the defendants to the replication to the sixth plea and to the declaration, and gave judgment for the defendant on the whole record. *In this state of things, the record was brought up «« to this court. «- 18 It was argued by Mr. Davis, for the plaintiffs in error, and Mr. Lee, for the defendants, with whom was Mr. Cullom. Mr. Davis, for the plaintiffs in error, contended that, under the declaration, they could recover on one of the two following propositions: 1. That the goods attached are alleged to be in the hands of the defendant Ramsey, in his character of clerk and master, according to the legal effect of the declaration ; and that, therefore, it was his duty to take good bond and surety before surrendering the goods. Caruthers and Nicholson, St. Tenn., 224, 162, 155; (Acts 1797, c. 22, § 3; 1794, c. 1; 1833, c. 47); Waters v. Carroll, 9 Yerg. (Tenn.), 102, 108, 110; McNutt v. Livingston, 7 Sm. & M. (Miss.), 641. 2. That if the legal effect of the' declaration be to charge that the goods were in the hands of Ramsey as receiver, and not as clerk and master, then that it was his duty, as clerk and master, to approve the bond on which the goods were ordered to be surrendered by him as receiver; and that, having approved a bad bond, in his capacity of clerk and master, ie is liable in that character for the consequences of such approval the loss following from the surrender of the goods y him as receiver, on the faith of the bond improperly approved by him as clerk and master. Ihis may be maintained on the following grounds : declaration distinctly avers that, in point of fact, Wa® duty of Ramsey, as clerk and master, under such i or er as that for the surrender of the goods, on bond to e given, to take the bond; and this allegation has been Vol. xv.-—13 6 193 182 SUPREME COURT. Bevins et al. v. Ramsey et al. traversed, and an issue of fact is now pending on it; and under this it will be competent for the plaintiff to show such to have been his duty: 1st, by adducing the rules of court; or, 2d, showing the practice and course of the court in like cases. United States v. McDaniel, 7 Pet., 1; United States v. Fillebrown, 7 Id., 28 ; Duncan's Heirs v. United States, 7 Id., 435 ; United States v. Arredondo, 6 Id., 714; Minor v. Mechanics Bank, Alex., 1 Id., 46; Williams v. United States, 1 How., 290. (J.) It is clearly a part of the duty of the master to approve such bonds. The bond is an official one, to be filed in court, not kept by the receiver. The receiver is to act only on such a bond as the proper officer of the court shall have approved. It is the duty of the receiver not to surrender the property till such a bond, properly approved, be *1831 The order does not give *the receiver the right, J nor throw on them the duty of approving the bond. He is ordered to surrender the goods when such a bond is given, but is silent as to the person by whom it is to be taken and approved. That person is, plainly, from the nature of his office, the clerk and master. See books above cited, and 1 Smith, Ch. Pr., 9. If it be supposed that the declaration contemplates only one of those grounds of liability; then, 3. The question, whether Ramsey be charged in his capacity of clerk and master, or as receiver, cannot, as is admitted by the brief of the defendants in error, be now the subject of inquiry on these demurrers; since “ this supposed error in pleading is brought to an issue of fact, which is still undisposed of.” We are, therefore, entitled to charge Ramsey, on this declaration and at this stage, with the duty of taking or approving the bond as clerk and master. 4. We submit, that the bond of the clerk and master is assignable, under the Tennessee statutes. Caruthers and Nicholson, 162, 155; Acts 1794, c. 1; and 1797, c. 22, § 3. 5. That the assignment here is not a copy of the bond, but the bond itself; the assignment happening to be indorsed or written on a copy of the bond. . 6. The demurrer to the 3d plea must be sustained. The plea attempts to inquire collaterally into the regularity of the proceedings in the injunction suit. It does not raise the question of the jurisdiction of the tribunal; but whether t ie relief sought were properly to be had at law or in equi y-To call that a question of jurisdiction, in order to open e case to collateral inquiry, is to misuse legal language. 194 DECEMBER TERM, 1853. 183 Bevins et al. v. Ramsey et al. 7. The plea of nil debet is clearly had in reply to breaches assigned on a bond with collateral condition. Sneed v. Wister, 8 Wheat., 690. 10. The fourth plea contains no answer to the declaration in substance ; and what it does contain is badly pleaded. The gravamen of the action is the neglect to take any bond, or if any were taken, the taking of insufficient surety. This plea avers the taking of a bond which it sets forth, and so far it is good. But it does not aver the sureties to have been good or sufficient; and, therefore, it does not in that meet the declaration. That the plaintiffs sued on the bond, does not show it to have been sufficient, but is, perhaps, the best way of proving its insufficiency. If it were good for part, and not all of the decree, the plaintiffs were entitled to have it, and get what they could, and perhaps bound so to do; but then they were at liberty to sue the officer, likewise, for his neglect in approving bad sureties, *or surrendering the property $4 without taking good sureties. It was no case of elec- *-tion, where the suing on the bond concluded the plaintiffs’ right to indemnity for its insufficiency. 11. If the replication to the sixth plea be perhaps not very formal, it is as good as the plea; and the plea itself is clearly bad on general demurrer. The plea avers, 1st, that, taking of bond with sureties, according to the order; and, 2d, that in taking bond, Ramsey acted bond fide, and in the exercise of his best judgment. But, 1st. To meet the declaration, the defendant was obliged to aver the taking of bond as a performance of one of the duties provided for in the bond on which the suit was brought; but the bond should have been so stated or pleaded as to enable the court to judge of its conformity to the order of law. The plea does not state to whom it was payable, to whom it was delivered, what were its terms; its dafe, its. conditions, who were the sureties, nor who were parties ^°r does the plea aver that the sureties were sufficient a ffi • date bond; nor that they were believed to be suthcient by Ramsey; nor that he made them swear as to t suffioioocy- It merely avers that he acted bond fide, and 0 e best of his judgment: but does not say what he did, , ?r.0^ wbat he judged, nor that he took any means to inform O.n plea, the court must take his ideas of cl,? an(^ hi® judgment as conclusive. Minor v. Meanies Bank, Alexandria, 1 Pet., 46, 49, 71, 66 ; 4 Taunt., 195 184 SUPREME COURT. Bevins et al. v. Ramsey et al. 34; Wise v. Wise, 2 Lev., 152 ; Steph. Pl., 406 ; 1 Chit. Pl., 567, 573 ; 1 Bos. & P., 638; Co. Lit., 303, b; Finley v. Bochin, 3 Gill. & J. (Md.), 42, 51; Hughes v. Sellers, 5 Har. & J. (Md.), 432; Townsend v. Jemison, 7 How., 706, 722; 4 Gill & J. (Md.), 395, 401; McNutt v. Livingston, 7 Sm. & M. (Miss.), 641; McAlister v. Scrice, 7 Yerg. (Tenn.), 277, 278. But the replication to the sixth plea may well be considered as a traverse of one of the two material allegations of the plea; for the plea alleged taking bond, without stating the parties ; and the replication denies the taking bond with the proper parties, as well as the taking of sufficient surety. The counsel for the defendant in error contended, that there is no rule of pleading better settled than that a demurrer reaches the first error in pleading; and, if it were universal in its operation, it might be contended for successfully, that this declaration shows on its face that the defendant Ramsey acted as receiver in the chancery case set forth in the declaration, and as such was not liable, in his official character of clerk, but in his individual capacity, as commissioner ot the court. See 9 *Yerg. (Tenn.), 102. There are, however, some exceptions to this rule ; and amongst others is embraced the case where a supposed error in the pleading is brought to an issue of fact, which is still undetermined ; we are therefore precluded, perhaps, from the argument of the point just suggested in this stage of the proceedings. There are two objections to the declaration, which are brought up by the demurrers, either of which is fatal. 1st. The bond of a chancery court clerk is not made assignable by the statutes of Tennessee ; and, 2dly. If it is, the assignmen must be made of the original bond, and not of a certified copy. It will be seen, by reference to the act of 1794, (see Nich. CaY, pages 155, 147,) that the bonds of the Circuit and County Court clerks are both made payable to the gover“° ’ and assignable in cases of default; but the act of » 1 Nich. & Car., 162,) which requires a bond from the Chancery Court clerk, does not make it assignable, and it remains as common law. In confirmation of this view °f the case, tnt court is referred to the case of 9 Yerg. (Tenn.), 1 •> the suit was instituted in the name of the governor, tainly, there is no statute in Tennessee authorizing & ment of a copy of a bond, as set forth in this declaratio . is true that profert may, by the statutes, be made of a py» 196 DECEMBER TERM, 1853. 185 Bevins et al. v. Ramsey et al. as the original remains in the office, but the assignment must be of the original bond. The fourth plea of the defendants was a good and sufficient answer to the declaration, for several reasons. The law of Tennessee does not impose upon clerks and masters in chancery, in express terms, the duty of requiring bonds in cases of the dissolution of injunctions or judging of the sufficiency of the sureties thereto ; the obligation arises simply from the order or interlocutory decree delegating him to this power by the court. It is exactly on a footing with any other requisition made upon him by the chancellor in any cause, such as selling property, taking testimony, &c.; he is bound to perform the duty, and make report thereof, and if no exceptions are filed by the parties, they are absolutely concluded, unless in cases of fraud. It would be hard indeed, if, after two years from the execution of an interlocutory decree, a clerk could be rendered liable for its faulty performance, when, perhaps, both the means of rectifying his error or disproving it would have passed away forever. The power is delegated by the court to its officer, and when he performs the duty and makes report of his action, and it is confirmed, the rights of the parties are fixed, and neither of them eau go behind the decree, unless some fraud should intervene. If we should be mistaken in this view of the case, certainly the surrender of the bond to the complainants, after the ob-tention *of their decree, their institution of a suit upon it, and obtaining judgment, execution, and part satis- *-faction of their debt, do constitute an election of their remedy, and a confirmation of the act of the clerk, which would estop them from suing him for neglect of duty. This question has been expressly decided in New York, (see 1 N. Y., p. 433) ; and that, too, not in a case where there was a faulty performance of duty on the part of the clerk, but where he had clearly exceeded his powers, and committed an illegal act. It is in consonance, too, with the general rules adopted cour^s regard to the responsibility of other public officers. If a sheriff, on the execution of bailable process, should take the notes or property of the defendant in the process, and discharge him out of custody, although the dis-7 fl?6 *S and renders the sheriff liable for escape, yet, i the plaintiff accept the notes or property, he is foreclosed trom his remedy against the sheriff. See 2 Bos. & P., 151; 6 ow. (N. Y.), 465; and 4 Campb., 46. The bond of the de-en ants, in the chancery case, was made payable to the com-P alnaots, and they, by their acceptance of it, and recovery judgment, have converted it into a security of a higher 197 186 SUPREME COURT. Bevins et al. v. Ramsey et al. character, and made it their own ; thus disabling the defendant Ramsey from pursuing any recourse he might have had on the property originally attached, or the parties to the bond. It may be urged, in answer to the authorities adduced, that they were cases of an illegal exercise of authority by public officers, and that these acts must be disavowed in toto by the parties interested, or their acceptance would conclude them; but in the case now at issue, the act of the clerk was primd facie legal, and the only mode of testing the insufficiency of the bond was by pursuing the obligors to insolvency. It will be seen, by reference to the cases themselves, that it was admitted by the counsel, that acts of omission could be cured by affirmance ; and the only dispute there was, whether the same rule should be applied to cases of illegal exercise of powers, and the admission is true on principle. If the clerk is liable here at all, it must be on the ground that the bond was defective at the time of its reception; the complainants in the chancery suit, then, had the right of exception; if they did not except, and any right of action still remained to them, it must have been perfected on the obtention of their decree, and that was the period for their election. The demurrer to the sixth plea was not sustainable, and properly overruled; the plea was a full answer to the declaration, and should have been negatived. The clerk of the court, whether acting ministerially or judicially in the reception of the bond, was not an insurer; he was only bound to *1 ac^ bond fide *and with reasonable discretion. See 7 Sm. &M. (Miss.), 641; 7 Yerg. (Tenn.), 276. Mr. Justice CATRON delivered the opinion of the court. The defendant, William B. A. Ramsey, and his sureties, were sued on an official bond given by Ramsey as clerk of the Chancery Court held at Knoxville, Tennessee. The condition of the bond declares that the clerk shall “ truly and honestly keep the records of said court, and discharge the duties of said office, according to law; ” and the declaration alleges that said Ramsey did not truly and lawfully discharge the duties of his office, in this, that Bevins, Earle & Co. filed their bill in equity in the Chancery Court at Knoxville against Chase & Bowen, and that certain goods of theirs were attached, and put into the hands of said Ramsey, as receiver; and that by an order of court the injunction was dissolved, and the receiver, Ramsey, was directed to surrender the goods to Chase & Bowen, “upon their entering 198 DECEMBER TERM, 1853. 187 Bevins et al. v. Ramsey et al. into bond. with, security to abide by and perform the judgment and decree of the court upon final hearing of the cause, if made against them;” and that by virtue of the order it became the duty of Ramsey, as clerk and master of said court, to take a bond as above prescribed. Nevertheless, he did not take from Chase & Bowen their bond, with sufficient sureties thereto, but, on the contrary, he took certain sureties, (five in number,) who were wholly insufficient to perform the decree of the court, and on said insufficient bond and security surrendered the goods to Chase & Bowen; and that afterwards, on a final hearing, a decree was rendered against Chase & Bowen in favor of Bevins, Earle & Co., for the sum of $6,303.64, with interest thereon, which remained unpaid. The second and third breaches aver that Ramsey surrendered the goods without taking any bond, “ with good and sufficient sureties,” from Chase & Bowen; and, The fourth breach avers, that no bond whatever was taken from Chase & Bowen, on the delivery of the goods to them. The defendant relied on several pleas in defence, only two of which, the fourth and sixth, it is deemed necessary to notice. . The fourth plea sets out the order dissolving the injunction, and the bond taken by Ramsey from Chase & Bowen, and their five sureties, and avers that, after the final decree was made against Chase & Bowen, the bond was, on the application of Bevins, Earle & Co., by order of the court, surrendered to them by the clerk and master, and was accepted by them; and under and by virtue of said bond, Bevins, Earle & Co. have demanded and brought suit against and received of the sureties in said bond large sums of money; to wit, two thousand dollars, part and parcel of the penalty and condition of said bond; and *which were r*-too demanded, and received on, and in discharge of, said *-bond. The sixth plea avers that the bond taken by Ramsey, as clerk and master, was for ten thousand dollars, and was in due form; and that in judging as to the sufficiency of the sureties, and in surrendering the property, said Ramsey acted ona fide, and in the exercise of his best judgment. io this plea the plaintiffs replied, reaffirming that said Ramsey had not taken bond with good and sufficient security, as was his duty; and to the replication there was a demurrer. ^ec^ara,ti°n did not charge the clerk with bad faith, n the presumption of good faith being primd facie in his 199 188 SUPREME COURT. Bevins et al. v. Ramsey et al. favor, from the face of the bond, taken by him, neither the plea or replication could be of any force, because in their legal effect they are the same as that of the declaration ; and so the court below held, and, going back to the declaration, declared it bad ; and secondly, overruled the demurrer to the defendant’s fourth plea. The plaintiffs were offered the liberty to amend their declaration and pleadings, but this they declined doing, and final judgment was rendered against them. Whether it was necessary to aver in the declaration that insufficient security was taken wittingly and knowingly, and consequently in bad faith, we do not propose to discuss, as it is a question more appropriately belonging to the State courts than to this court. But as judgment was given against the plaintiffs on the fourth plea, and as that judgment is conclusive, if the plea is good, we will consider that plea. The demurrer admits that Bevins, Earle & Co. obtained the bond of Chase & Bowen and their sureties; that they sued the sureties on it, and received of them two thousand dollars, part of the penalty; and which sum was received in discharge of the bond; whether the money was obtained by judgment or compromise, does not appear, nor is it material. Chase & Bowen were principals to Ramsey, if he was in default for neglect of official duty ; and so were the sureties to the bond responsible to him should he be compelled to pay in their stead. The clerk was the last and most favored surety, and if forced to pay the debt, he was entitled to all the securities Bevins, Earle & Co. had, to remunerate his loss; and, in such event, he would have been entitled to the bond on Chase & Bowen, and their sureties. And in the next place, it is manifest, that Ramsey cannot be in a worse situation than if he had been a party to the bond, in common with the other sureties; and in such case, it must be admitted that he would stand discharged. We concur with the Circuit Court that the fourth plea was a good defence, and order the judgment to be affirmed. *189] *ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the district of East Tennessee, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, affirmed with costs. 200 DECEMBER TERM, 1853. 189 Rockhill et al. v. Hanna et al. Thomas C. Rockhill, Wade T. Smith, and William P. Rockhill, Plaintiffs, v. Robert Hanna, Asa B. Strong, Edward Heizer, Aaron Aldridge, Robert B. Hanna, David Shields, Thomas Johnson, Jeremiah Johnson, and George Bruce. Three judgments were entered up against a debtor on the same day. One of the creditors issued a capias ad satisfaciendum in February, and the other two issued writs of fieri facias upon the same day, in the ensuing month of March. Under the ca. sa. the defendant was taken and imprisoned, until discharged by due process of law. The plaintiff then obtained leave to issue a fi. fa., which was levied upon the same land previously levied upon. The marshal sold the property under all the writs. The executions of the first fi. fa. creditors are entitled to be first satisfied out of the proceeds of sale. Each creditor having elected a different remedy, is entitled to a precedence in that which he has elected. Besides, the ca. sa. creditor, by imprisoning the debtor, postponed his lien, because it may happen, under certain circumstances, that the judgment is forever extinguished. If these do not happen, his lien is not restored as against creditors who have obtained a precedence during such suspension. This case was brought up from the Circuit Court of the United States for the District of Indiana, upon a certificate of division in opinion between the judges thereof.1 The facts in the case are succinctly stated in the opinion of the court, and also the. questions certified. It was submitted, on the part of the plaintiffs, by Mr. Thompson, upon a printed brief by Mr. Morrison and Mr. Mayor, and submitted on the part of the defendants, upon a brief, by Mr. 0. H. Smith. Mr. Thompson, for plaintiffs, We shall in the outset assume, that the following principles must be carried into an examination of this case, and that without a recognition of which, the questions submitted cannot be intelligently and correctly determined. It is, r*inn perhaps, superfluous to say, that these principles are *-only a reiteration of the long-established and uniform decisions of this court, viz. 1st. If the State of Indiana has a statute declaring and de-ning judgment liens on real estate, this court will give full efiect to such statute. 2d. If the supreme judicial tribunal of the State has given 1 Reported below., 4 McLean, 554. 201 190 SUPREME COURT. Rockhill et al. v. Hanna et al. construction to the statute, this court will follow that construction. The transcript shows that in the court below there were three several judgments rendered on the same day, against the same defendant, but in favor of different plaintiffs, one of which was in favor of our clients, Rockhill, Smith & Rockhill; that the marshal sold real estate of the execution defendant, under executions issued upon all three judgments, offering to each set of plaintiffs a portion of the avails, according to the amount of their respective judgments; that Rockhill, Smith & Rockhill, the plaintiffs, rejected such apportionment, claiming the whole avails of the sale as their legal right, and that for refusing to pay over the whole, the plaintiffs instituted this suit against the marshal and his sureties on their bond. We state the case thus briefly to call the special attention of the court to the two propositions above stated; and we insist that the questions submitted naturally and necessarily suggest the inquiry, as a first principle to be ascertained, has the State of Indiana a law on the subject of judgment liens ? “ Judgments in the Circuit and Supreme Courts of this State shall have the operation of, and shall be liens upon the real estate of the person or persons against whom such judgments may be rendered, from the day of the rendition thereof.” Revised Statutes of Indiana, 1838, page 306, § 22. The revised Statutes of 1843, page 454, are to the same effect. We do not insist that the literal reading of tlie statute above cited determines the questions submitted, in our favor; neither does it determine any thing against us. As to judgments of the same date, it is altogether silent. It neither in terms asserts the principle for which we contend, that priority should be accorded to the most vigilant creditor, nor the principle assumed and acted upon by the marshal, when he undertook to apportion the avails of the sale among the several creditors. They both rest upon the same foundation—a construction of the statute. We proceed to show that the Supreme Court of Indiana has given the statute a construction that, if followed by this court, must determine the questions submitted, in favor of the plaintiffs. The case of Michaels v. Boyd and others, Indiana Rep., 100, while it recognizes the doctrine that judgments *1011 rendered at *the same time, have, under the statute, J no priority of lien over each other, it yet decides tha the creditor whose execution is first issued and levied, gams priority, as the most vigilant creditor. 202 DECEMBER TERM, 1853. 191 Rockhill et al. v. Hanna et al. If any thing were required to add weight to the opinion, we might suggest that it was pronounced by Judge Blackford, whose reputation as a jurist, we suppose, is not entirely unknown to this court. It will be also noticed that the decision is sustained by the cases of Adrams v. Dyer, 8 Johns. (N. Y.), 347; Waterman v. Haskin, 11 Id., 228, and 1 How. (Miss.), 39. It was argued below, that the decision of the Supreme Court of Indiana could not be considered a judicial construction of the local law of Indiana, on the subject of judgment liens. We suppose the argument will be pressed in this court. We cannot, however, believe it will find any favor here. The very second paragraph in Judge Blackford’s opinion, cites the statute, by book and page, and his whole reasoning is in direct reference to the statute. The statute is the basis, the substratum of the decision. We trust we shall not be considered guilty of the slightest disrespect, or as transgressing any rule of propriety, by alluding to the circumstance that at one important conjuncture of this case, his Honor Judge McLean allowed his judgment to be controlled by the same authorities cited by Judge Blackford in his opinion, which, by the by, was previous to the decision in Indiana. Judge McLean then ruled, that by our superior vigilance in taking out execution, levying, and selling, we had gained such a priority as entitled us to the whole of the proceeds of the sale. Afterwards, however, and after the second sale, (the first having been set aside by the court on the application of the attorneys for the other execution plaintiffs,) the learned judge, on the authority of the opinion of Chief Justice Marshall, in Hankin Schatzell v. Scott, 12 Wheat., 177, had his former opinion shaken. We therefore propose to show that the case in 12 Wheat, is not applicable to the case before the court. Firstly. The judgments in that case were of different dates, and the court below had determined a priority in favor of the younger judgment, to the exclusion of the older one. The District Court of Missouri had decided that a sale by a sher-iff, under a second judgment, but first execution, divested the len of a first judgment. The decision was properly reversed; 11 1 j learned and able judge, in his opinion, never once a luded to the case of judgments of the same date. That was a question not before the court. The question was one be-W*ur Pri°r and subsequent judgment liens. •ri + iire ax\are that the argument of the judge is sai to be against us, but we cannot perceive it to be *-so. Ihe opinion suggests an analogy between a statutory lien 203 192 SUPREME COURT. Rockhill et al. v. Hanna et al. and a mortgage lien, as regards their similar binding effect. This we admit. The lien created by a prior judgment, in reference to a subsequent one, is very similar to that of a prior mortgage, duly recorded, in reference to a subsequent mortgage ; and we feel that we can admit, without endangering our position, that in both the case of a judgment and a mortgage, the prior lien is entitled to prior satisfaction. The opinion, however, concedes, that even a prior lien might be displaced by some act of the party holding it; though it is said “ the single circumstance of not proceeding on it, till a subsequent lien has been obtained and carried into execution, has never been considered such an act.” Our case shows not only delay on the part of our adversaries, but delay for a consideration. If, however, more is sought to be made of the analogy of the learned judge on the subject of the two kinds of lien than we concede, we shall insist, not only that the case itself is not in point, but that there is a substantial dissimilarity between them. It was said, we believe, by Lord Mansfield, that there is nothing so apt to mislead as a simile ; and the remark will certainly hold true in regard to the parallel supposed to exist between a judgment lien and a mortgage lien. While a judgment lien is general, a mortgage lien is specific. A judgment creditor acquires no distinct or independent interest in the estate of his debtor. A mortgagee has such an interest in the particular thing mortgaged. He may take possession; he may eject the mortgagor. It will be noticed that the opinion under review, like that of Judge Blackford, assumes to give construction to a local statute, on the subject of judgment liens. The opinion commences by quoting the statute of Missouri, as Judge Blackford’s does that of Indiana. The Missouri statute had, however, received no judicial construction. This court had, therefore, full authority to construe it. The Indiana statute had received a construction which, right or wrortg, this court, according to its own admission, is bound to follow. Secondly. We consider that in perfect consistency with the most exalted estimate of the ability of the eminent Judge who delivered the opinion in 12 Wheat., we have the right to suppose that, had the Supreme Court of Missouri given her statute the construction that the District Court did, he would have felt constrained to follow it, erroneous as he deemed it to be. This supposition we feel authorized to cherish, by the uniform decisions of this court on the subject of the adjudica-tion of the *State courts on their local statutes, ihe -• authorities on this subject are so numerous and so 204 DECEMBER TERM, 1853. 193 Rockhill et al. v. Hanna et al. clear, and must be so familiar to this court, that an array of them might be considered uncalled for. We hope, however, to be excused for referring to a few of them. In the case of Shelby v. Guy, 11 Wheat., 367, the court holds the following language:—“ That the statute law of the States must furnish the rule of decision to this court, as far as they comport with the Constitution of the United States, in all cases arising within the respective States, is a position that no one doubts. Nor is it questionable, that a fixed and received construction of their respective statute laws in their own courts, makes, in fact, a part of the statute law of the country, however we may doubt the propriety of that construction.” “ In construing local statutes respecting real property, the courts are governed by the decisions of the State tribunals.” 6 Wheat., 119. “ Where the question upon the construction of the statute of the State, relative to real property, has been settled by any judicial decision in the State where the land lies, the Supreme Court, upon the uniform principle adopted by it, would recognize that decision as a part of the local law.” Gardner v. Collins et al., 2 Pet., 58. We only add a few quotations from the case of Green v. Neal, 6 Pet., 291—a case in which this court, in following a then recent decision of the State court, overruled its former construction of a local law, on the sole ground that the State court had changed its construction. Mr. Smith, for defendants. 1. Did the plaintiffs obtain a preference by the issue and levy of the first execution ? Certainly not; that execution was a ca. sa., and the levy was on the body, not the lands. 2. Did the plaintiffs obtain a preference by the first sale of the lands, and the order of the court, to appropriate the proceeds to their execution to its amount ? Certainly not; because the sale and the order were set aside by the court, and stood as if they had not been made. Did the plaintiffs obtain a preference, by the order of the court, for the issue of the vend. ex. on which the lands were sold? Certainly not. As the clerk had full power to issue all the writs, without any order of the court, as is the unitorm practice, and all the writs were issued by the clerk on the same day, placed in the hands of the marshal at the same time, and the property advertised and sold under all ^ie marshal the same time. r-*-. Q < • Did the plaintiffs obtain a preference, by the *- 205 194 SUPREME COURT. Rockhill et al. v. Hanna et al. delay of the other judgment plaintiffs, to issue their writs of vend. ex. on their levy ? Clearly not. See 4 McLean, 554; Rankins v. Scott, 12 Wheat., 177. 5. The original general liens being equal, did the issuing and service of the ca. sa., and imprisonment of Allen by the plaintiffs, suspend or displace the lien of their judgment, so as to give the other judgments a priority of lien on his real estate ? We contend that they did, and rely upon the following authorities : Tayloe v. Thompson, 5 Pet., 358 ; Bigalow v. Cooper, 1 Cow. (N. Y.), 56 ; Ranson v. Keys, 9 Id., 128; Sunderland v. Loder, 5 Wend. (N. Y.), 58. 6. Did the issue of the writs of fieri facias by the other plaintiffs on their judgments, and their levy on the lands in controversy, pending the imprisonment of the defendant in execution on the ca. sa., give to the judgments, executions, and levy a special lien on the lands levied upon, and a preference for the whole proceeds, to the amount of their judgments ? So we contend, and rely upon the following authorities to sustain the position : Adrams v. Dyer, 8 Johns. (N. Y.), 347; Waterman v. Haskins, 11 Id., 228; Burney v. Boyett, 1 How. (Miss.), 39; Michaels v. Boyd and others, 1 Ind., 100. Mr. Justice GRIER delivered the opinion of the court. This case comes before us on a certificate of division of opinion between the Judges of the Circuit Court of the United States for the District of Indiana. It is an action on the official bond of the marshal, and the questions certified arise on the following facts: Rockhill & Co., the plaintiffs in this issue, and Price & Co., and Siter & Co. had each entered up judgments on the same day (19th November, 1838) against John Allen. On the 5th of March, 1839, Price and Siter issued fi.fus. which were levied on the lands of Allen. On the 7th of February, 1839, plaintiffs issued a ca. sa., on which the defendant, Allen, was arrested and imprisoned till the passage of the act of General Assembly of Indiana, of 13th of January, 1842, to abolish imprisonment for debt; by virtue whereof he was released, on the ground that this act had been adopted by act of Congress. The plaintiff afterwards, in March, 1844, on affidavit and proof of the defendant s discharge by force of the insolvent law, had leave of the court to issue a fi. fa. which was levied on the same land previously seized in March, 1839, on the executions issued on the other judgments; and the marshal was proceeding to sell, when writs of vend. exp. on these judgments were put in his han s. 206 DECEMBER TERM, 1853. 194 Rockhill et al. v. Hanna et al. A sale was made, *but afterwards set aside by the court. In May, 1844, writs of vend. exp. on all three •-of the judgments were put into the hands of the marshal—on these, the property of Allen was sold, the money raised being insufficient to pay all the judgments. Plaintiff (Rockhill) claimed that the money should be applied first to the satisfaction of his judgment; Price and Siter claimed that it should be applied to satisfy their judgments first. Whereupon the court certified a division of opinion on the following questions: “ 1st. Whether or not the plaintiffs in this suit are entitled to more than their distributive share of the proceeds of the sale. 2d. Whether they are not entitled to the whole proceeds, to the extent of what is justly due on their judgment. 3d. Or whether the executions first levied are not entitled to the whole proceeds of the sale. 4th. Or whether there can be any preference recognized by reason of superior diligence, the judgments being of equal dates and not impeached.” In the State of Indiana, judgments are liens upon “the real estate of the persons against whom such judgments may be rendered, from the day of the rendition thereof.” As the statute provides for no fractions of a day, it follows that all judgments entered on the same day have equal rights, and one cannot claim priority over the other. In England, when several judgments are entered to the same term, (and by fiction of law, the term consists of but one day,) the judgment creditor, who first extends the land by elegit, is thereby entitled to be first satisfied out of it. The case would be much stronger, too, in favor of the first elegit, if one of three judgments had levied a fi.fa. on the goods and chattels of the defendant, the second taken his body on a ca. sa., and the third on his land. For each one, having elected a umerent remedy, would be entitled to a precedence in that which he has elected. This principle of the common law has been adopted by the courts of New York, as is seen in the cases of Adams v. Dyer, 8 Johns. (N. Y.), 350, and Waterman . dlaslcins, 11 Id., 228; and also by the Supreme Court of ncliana, in Marshal v. Boyd and others, where it is said, the mere delivery of an execution, as in case of personal proper y, will not give apriority, but the execution first begun to e executed, shall be entitled to priority. ® application of these principles to the present case ou give the preference to the judgments of Siter and Price, ic i were levied on the land five years before the plain tiff’s 207 195 SUPREME COURT. Rockhill et al. v. Hanna et al. levy on the same. An execution levied on land is begun to be executed, and is an election of the remedy by sale of it; and *^ie mere delay of the sale, if not fraudulent, in--* jures no one and cannot postpone the rights of the creditor who has first seized the land and taken it into the custody of the law for the purpose of obtaining satisfaction of his judgment. If he has obtained a priority over those whose liens are of equal date, by levying his execution, he is not bound to commence a new race of diligence with those whose rights are postponed to his own. There may be a different rule as to a levy on personal property, where it is suffered to remain in the hands of the debtor. But liens on real estate are matters of record and notice to all the world, and have no other limit to their duration than that assigned by the law. But we do not think it necessary to rest the decision of this case, merely on the question of diligence, or to decide whether this doctrine has been finally established as the law of Indiana. The plaintiff’s lien does not, by the statement of this case, stand on an equality as to date with that of the other judgments. By electing to take the body of his debtor in execution he has postponed his lien, because the arrest operated in law as an extinguishment of his judgment. It is true, if the debtor should die in prison, or be discharged by act of the law without consent of the creditor, he may have an action on the judgment, or leave to have other executions against the property of his creditor. The legal satisfaction of the judgment, which for the time destroys its lien and postpones his rights to those whose liens continue, is not a satisfaction of the debt, but, as between the parties to the judgment, it operates as a satisfaction thereof. The arrest waives and extinguishes all other remedies on the goods or lands of the debtor while the imprisonment continues, and if the debtor be discharged by the consent of the creditor, the judgment is forever extinguished, and the plaintiff remitted to such contracts or securities as he has taken as the price of the discharge. But if the plaintiff be remitted to other remedies by a discharge of his debtor by act of law, or by an escape, it will not operate to restore his lien on the debtor s property, which he has elected to waive or abandon as against creditors who have obtained a precedence during such suspension. The case of Snead v. McCoul, 12 How., 407, in this court, fully establishes this doctrine. It is to be found in the common law as early as the Year Books, and is admitted to be the law in almost every State in the Union. See Year Book, 33 Henry VI., p. 48; Foster v. Jackson, Hob., oZ, 208 DECEMBER TERM, 1853. 196 Rockhill et al. v. Hanna et al. Barnaby'’s case, 1 Str., 653; Vigers v. Aldrich, 4 Burr., 2483; Jaques v. Withy, 1 T. R., 557 ; Taylor v. Waters, 5 Mau. & Sei., 103; Ex parte Knowell, 13 Ves., 193, &c., &c., &c. And in New York, Cooper v. Bigelow, 1 Cow. (N. Y.) ; Ransom v.Keys, 9 *Cow. (N. Y.), 128; 5 Wend. (N.Y.), 58. piny In Pennsylvania, Sharp v. Speckenyle, 3 Serg. & R. L ’ (Pa.). In Massachusetts, Little v. The Bank, 14 Mass., 443. The insolvent law of Indiana which discharges the person of the debtor from imprisonment upon his assigning all his property for the benefit of his creditors, provides that his after acquired property shall be liable to seizure, and also that liens previously acquired shall not be affected by such assignment and discharge; but it does not affect to change the relative priority of lien creditors, as it existed at the time of the discharge, or to take away from any lien creditor his prior right of satisfaction, which had been vested in him previous to such discharge. Neither the letter nor spirit of the act will permit a construction which by a retrospective operation would divest rights vested before its passage. We are of opinion, therefore, that the several questions certified from the court below, should be answered as follows :— 1st. That plaintiffs in this suit are not entitled to more than their distributive share of the proceeds of the sale. 2d. That they are consequently not entitled to the whole proceeds to the extent of what is due on their judgment. 3d. The executions of Siter & Co. and of Price & Co. are entitled to be first satisfied from the proceeds of the sale. ..th. the decision of the preceding questions being a disposition of the whole case, it is unnecessary to give any answer to the fourth question. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Indiana, and on the points or questions on which he judges of the said Circuit Court were opposed in opinion and which were certified to this court for its opinion, agreea-y to the act of Congress in such case made and provided, an was argued by counsel. On consideration whereof, it is the opinion of this court. th ’ ^e P^hRiffs in this suit are not entitled to more n7^lr distributive share of the proceeds of the sale. ’ they are consequently not entitled to the whole h Vn,e S extent of what is claimed on their judgment. vol. xv.—14 209 197 SUPREME COURT. Kanouse v. Martin. 3. The executions of Siter & Co. and of Price & Co. are entitled to be first satisfied from the proceeds of the sale. 4. That the decision of the preceding questions being a disposition of the whole case, it is unnecessary to give any answer to the fourth question, which is an abstract proposition *1qqi *not necessary to be decided by this court. Where-iy°J upon it is now hereby ordered and adjudged by this court, that it be so certified to the said Circuit Court. Cornelius Kanouse, Plaintiff in Error, v. John M. Martin. Where a citizen of New Jersey was sued in a State court in New York, and filed his petition to remove the case into the Circuit Court of the United States, offering a bond with surety, the amount claimed in the declaration being one thousand dollars, it became the duty of the State court to accept the surety, and proceed no further in the case. Consequently, it was erroneous to allow the plaintiff to amend the record and reduce his claim to four hundred and ninety-nine dollars.1 The case having gone on to judgment, and been carried by writ of error to the Superior Court, without the petition for removal into the Circuit Court of the United States, it was the duty of the Superior Court to go behind the technical record, and inquire whether or not the judgment of the court below was erroneous. The defendant was not bound to plead to the jurisdiction of the court below; such a step would have been inconsistent with his right that all proceedings should cease when his petition for removal was filed. The Superior Court being the highest court to which the case could be earned, a writ of error lies to examine its judgment, under the 25th section of the Judiciary Act.2 This case was brought up from the Superior Court of the city of New York, by a writ of error issued under the 25th section of the Judiciary Act.3 1 Distinguished. Thompson v. Butler, 5 Otto, 696. Cited. Railroad Co. v. Mississippi, 12 Otto, 136; s. c., 1 Morr. Ir, 50; Railroad Co. v. Koontz, 14 Otto, 14. S. P. Wright v. Wells, Pet. C. C., 220; Stewart v. Mordecai, 40 Ga., 1. The value in dispute may appear by the ad damnum in the writ or by the declaration; and if there be doubt as to the amount involved, the State court may inquire into it, and in case it is found to be less than $500, may refuse to grant a removal. Ladd v. Taylor, 3 Woodb. & M, 325; Muns v. Dupont, 2 Wash. C. C., 463. 210 2 See also the following cases, which cite the principal case : Jones v. Fore-man, 66 Ga., 381; T. H. 8p I. R-R-Co. v. Abend, 9 Bradw. (Ill.), 308; West. Union Tel. Co. v. Horack,Id., 311; Kerrison v. Kerrison, 60 How. (N. Y.) Pr, 51; Geiger v. Union Mut. Life Ins. Co., 1 N. Y. City Ct. Rep, 237; Henen v. B. 8p 0. R. R- Fo.,U W. Va, 1, 4; White v. Holt, 20 Id, 807; Johnson sr. Brewers Fire Ins. Co., 51 Wis, 582. 3 Reported below, 1 Blatchf., 149. DECEMBER TERM, 1853. 198 Kanouse v. Martin. A motion was made at the last term of this court by Mr. Martin, to dismiss the case, for want or jurisdiction, which is reported in 14 How., 23. The facts are stated in the opinion of the court. It was argued by Mr. Garr, for the plaintiff in error, and Mr. Martin, for the defendant. The counsel for the plaintiff in error first filed an elaborate . brief, to which the counsel for the defendant replied. Then there was filed a reply to defendant’s argument, and then a counter statement and. points by the counsel for the defendant in error. From all these, the reporter collects the views of the respective counsel, as far as they concerned the points upon which the judgment of the court rested. Mr. Garr, for the plaintiff in error. The questions arising in this case are the following: 1st. Whether the Court of Common Pleas had jurisdiction to proceed further in the cause, and to render a judgment *therein, after the defendant had duly petitioned for the removal of it to the Circuit Court of the United •-States. 2d. .Whether the Superior Court of the city of New York erred in refusing to look beyond the judgment-roll, and in excluding from its consideration the proceedings brought before it by the allegation or diminution and certiorari, that proved the existence of the errors complained of. 3d. Whether the Court of Appeals of the State of New York erred in holding that the defendant below was precluded from his writ of error, by it not appearing on the record that he had appealed from the order of the Court of tmmrnon Pleas, denying his application to remove the cause. 4th. As to the sufficiency of the matters set forth by the eiendant in error in his plea to the special assignment of errors, and in the subsequent pleadings that terminated in a demurrer. . I- The defendant below had, at the time of enter-71 4-S aPPearance in the Court of Common Pleas, a legal qF/ to remove the cause to the Circuit Court of the United eS’ ma,tter then in dispute exceeded the sum or If6 12th sect, of Judiciary Act of 1789. val * r ma,tter then in dispute exceeded the sum or tbp^h* $500 was manifest by uncontradicted evidence of claim1^! • na^ure’ viz- the declaration in the cause, the sum e in which (when the action is for damages) is the sole 211 199 SUPREME COURT. Kanouse v. Martin. criterion by which to determine the amount in dispute. Martin v. Taylor, 1 Wash. C. C., 2; Muns v. Dupont, 2 Id., 463; Sherman v. Clark, 3 McLean, 91; Gordon v. Longest, 16 Pet., 97; 1 Kent, Com., 6th ed., 302, n. b; Opinion of Judges Nelson and Betts, in Martin v. Kanouse, U. S. Circuit Court, April 25th, 1846, Appendix, p. 37. III. By the filing of the petition, and the offer of the surety prescribed by the statute, (on the 18th of September, 1845,) the defendant’s right to a removal of the cause was perfected and absolutely vested; and it thereupon instantly became “ the duty of the State court to accept the surety, and proceed no further in the cause.” 12th sect, of Judiciary Act. IV. The Common Pleas erred in afterwards receiving (on the 1st of October) an affidavit of the plaintiff, reducing his demand below $500, and thereupon denying (on the 6th of October) the motion for removal, because, 1. It is only where property, and not damages, is the matter in dispute, that the court, for the purpose of determining the amount, looks at any evidence beyond the declaration. In such a case, the court will receive affidavits, in order to ascertain the value. Cooke v. Woodrow, 5 Cranch, 13. 2. Mr. Martin’s affidavit, had it even been admissible, was *2001 insufficient. It did not deny any of the facts alleged J in the petition, nor did it even allege that there had been a mistake in the declaration, and that he had not intended to demand by it a sum exceeding $500. On the contrary, the affidavit merely states that the demand made by the declaration was more than “ the actual amount due to him”; that such amount was less than $500, and that he “ now,” (that is, at the time of making the affidavit, being thirteen days after the filing of the petition, and after the defendant’s right to a removal had become perfect,) limits and reduces his claim to the sum of $499.56. 3. The act of Congress does not provide that the State court may retain its jurisdiction, if the plaintiff will reduce his demand below $500. 4. The jurisdiction depends upon the state of things at the time of the action brought, and is not affected by any subsequent event. Mollan v. Torrance, 9 Wheat., 537; Kp-pel v. Heinrich, 1 Barb. (N. Y.), 449. # . If Mr. Martin, the plaintiff, had, after the bringing of his action, removed from the State of New York, and become a citizen of the same State with the defendant, his change o residence would not have restored jurisdiction to thesCour of Common Pleas. Clark v. Matthewson, 12 Pet., 164- . ’ Upon the same principle, his making an affidavit reducing 212 DECEMBER TERM, 1853. 200 Kanouse v. Martin. below $500 the claim which he therein admitted he had made by his declaration, could not restore the jurisdiction. 5. By the defendant’s application to remove the cause, the Court of Common Pleas lost jurisdiction over it; and as that jurisdiction could not be restored by any subsequent act of the plaintiff, or proceeding in that court, it follows that the plaintiff’s affidavit reducing his demand, the amending of the declaration, and the subsequent proceedings in the cause, were coram non Judice, and, as such, erroneous and void. Wright n. Wells, Pet. C. C., 220; United States v. Myers, 2 Brock., 516; Gordon v. Longest, 16 Pet., 97; Hill v. Henderson, 6 Sm. & M. (Miss.), 351; Campbell v. Wallin's Lessee, 1 Mart. & Y. (Tenn.), 266. 6. The errors complained of were not in matters of mere practice, or matters in regard to which the court below had an arbitrary discretion. They were in matters of substance; they consisted in the court’s withholding a right to w’hich the defendant was entitled under the act of Congress, and in their persisting to exercise jurisdiction, and to amend the declaration, and render a judgment, after it had “become their duty to proceed no further in the cause.” “Where the law has given to the parties rights, as growing out of a certain state of facts, their discretion ceases.” Gordon *v. Longest, supra; People v. Superior Court of New York, 5 Wend. (N. Y.), 125, and 10 Id., 291. L 2Ui Mr. Martin, for defendant in error. First Point. The State court had jurisdiction of the cause until the plaintiff in error fully complied with all the requirements of the United States statute, and until the State court had so decided, and made an order for its removal. The New York Common Pleas is a common-law court, and had an original jurisdiction of this cause, of which it could not be deprived by a paramount statute. Ex parte Bollman, 4 branch, 75. This jurisdiction, and the right of the State court to decide on the application for a removal of the cause, is conceded in the act of Congress, by requiring the presentment of a petition for such removal. But it is insisted, by the plaintiff in error, at pages 14, 15, a a i arSument, that “ by the filing of the petition, and the,offer of the surety prescribed by the statute, the deendant s right to a removal of the cause was perfected and a solutely vested; and it thereupon instantly became the u y °f the State court to accept the surety and proceed no ur er m the cause; ” and that, “ by the defendant’s appli- 213 201 SUPREME COURT. Kanouse v. Martin. cation to remove the cause, the Court of Common Pleas lost jurisdiction over it.” The court will observe that nothing is here said about the appearance required by the act; but it is contended that an instantaneous change of jurisdiction was effected by filing the petition and offering the surety only. For the sake of argument, let it be supposed that a false appearance has been entered, and a spurious petition filed, and insufficient sureties offered,—does a change of jurisdiction instantly follow? If it does, then the State court can have no opportunity to protect its own jurisdiction or the rights of its suitors against fraud—no time to look into the petition or bond, to see if the one be properly authenticated, or the other duly executed; or to ascertain whether the real amount in controversy exceeds $500 or not. Upon this theory the State court is paralyzed, and struck dumb and blind, by the mere presentation of a set of papers, no matter how defective in form or fraudulent in execution; and no matter what evidence may be produced—an affidavit or a bill of particulars, to satisfy the court that the amount is less than $500,—and no matter how well satisfied the court may be of fraud in the papers, or deficiency in the amount to entitle the applicant to remove the cause. This is probably too absurd to be seriously maintained, *2091 even *in this case; and it will doubtless be considered -» that the State court has a right to judge of the regularity and sufficiency of the applicant’s papers; and that jurisdiction must remain with the State court long enough, at least, to enable the court to inspect them, and decide upon their sufficiency. If this be conceded, as it is submitted it must be, it must also be conceded that the court may retain jurisdiction to ascertain the true amount in controversy; and if it may retain jurisdiction an hour for these purposes, it may retain it for such further time as may be reasonable and necessary to enable the parties to obtain the requisite evidence to satisfy the court upon any of the matters of which it may inquire. And this is destructive of the whole theory of an instantaneous change of jurisdiction. These tests of the plaintiff’s theory show its absurdity, ana the correctness of the decision of the United States Circuit Court for the Southern District of New York, on the defendant’s motion in this case in that court. On that motion it was held, in substance and effect, that a cause was not actually removed into the United States Circuit Court, until certified copies of the papers in the State 214 DECEMBER TERM, 1853. 202 Kanouse v. Martin. court, and of an order for their transmission, were sent to, and entered in the United States court. This decision, if correct, sets the question of the actual jurisdiction of this case, pending the application for its removal, at rest. It also furnishes a sufficient reason for the plaintiffs unwillingness to apply to that court, as directed by the Supreme Court of the State, for a mandamus to compel the New York Common Pleas to grant an order for the removal of the cause. He had not filed copies of his papers in the United States court, so authenticated as to warrant the United States court in proceeding upon them, and therefore had not done what was necessary to authorize him to ask the assistance of that court, had he been otherwise entitled to it. Second Point. The plaintiff in error did not so comply with the requirements of the 12th section of the United States Judiciary Act, as to divest the State court of its jurisdiction and entitle himself to an order for the removal of the cause, because he did not enter his appearance in the State court at the time of filing his petition, &c. See U. S. Stat, at L., p. 79. . Third Point. The State court properly retained its jurisdiction of the cause; and was not bound to grant an order for its removal into the United States court, because it did not appear to the satisfaction of the State judge, that the amount in controversy exceeded $500, exclusive of costs. By the 12th section of the United States act, before cited, *this is expressly declared to be necessary to entitle the applicant to a removal of the cause. The terms L of the statute are clear and unequivocal. The amount must “be made to appear to the satisfaction of the court.” This language is peculiar to the 12th section of this act, and is not found in the 22d section of it, authorizing the removal of causes from the circuit courts to this court by writ of error, nor in the act of 1803, (2 U. S. Stat., p. 244,) authorizing like removals by appeal where the amount exceeds $2,000; nor in the act of 1816, (3 U. S. Stat., 261,) authorizing writs of error to the United States Circuit Court of the District of Columbia, where the amount exceeds $1,000. ,*n none these sections is a discretion expressly given to he court from which the cause is to be removed, as in the i^th section. This constitutes the basis of a very important distinction e ween this case and most of the cases cited by the plaintiff in error; and when taken in connection with the fact, that in io one of those cases was there any dispute about the amount 215 203 SUPREME COURT. Kanouse v. Martin. in controversy before the State court, it renders them wholly inapplicable to this case, as authorities, to show that the declaration is conclusive as to amount. Upon this point they leave the present case entirely free from the control of prior adjudications. This distinction also furnishes a very conclusive proof that Congress did not intend that the same rules of evidence should be applied in ascertaining the amount in dispute in these two classes of cases—else why declare in the one that the amount must be made to appear to the satisfaction of the court, and remain silent in the other ? The inference from all this is irresistible, that Congress meant to give the State courts a discretion, not only as to the amount, but as to the evidence to show it. In G-ordon v. Longest, (16 Pet., 97, which is the only reported case that has come before this court under the twelfth section,) the general discretion of the State judge was admitted by this court; although “ in that case ” the court held that a claim of $1,000 in the writ was conclusive, there being no evidence before the State judge, or in this court, that the amount was less. Under this state of facts it was held that, although the State court had a discretion as to the amount in controversy, yet it was a “legal discretion,” to be reasonably exercised, and that “ on the facts of the case, the State judge had no discretion ” in that case, and could not arbitrarily refuse to allow a removal of it, when it appeared by undisputed evidence that the amount exceeded $500. *204-1 *This, it is submitted, is all that was decided in Gor-J don v. Longest; and if the court had gone as far as is contended for by the plantiff in this case, and had declared the evidence furnished by the writ or declaration to be absolutely conclusive upon the State court, the decision would have been not only against the manifest meaning of Congress, but inconsistent with itself. It would have been inconsistent with itself, because there is nothing concerning the amount in dispute upon which a “ legal discretion ” can be exercised, except evidence of the amount; and if this court were to take away all discretion concerning this evidence, by declaring this or that sort, ot evidence conclusive, it would be tantamount to a declaration that the State courts have no discretion at all. dt-rnn The amount claimed must always be over or under $50 , or exactly that sum ; and it must always be made by wn » declaration, or complaint. If the claim be exactly $500 oi under, no application for removal will ever be made. 1 e 216 DECEMBER TERM, 1853. 204 Kanouse v. Martin. only case, therefore, in which any discretion at all can be exercised by a State court is, where a claim is made for more than 8500. And if the mere claim were always conclusive, the amount would thereby be unalterably fixed, and there would be no room left for discretion. From this examination of the facts and opinion in the above case, it will be seen that it is a controlling authority for the defendant in error; and clearly shows that the State court is authorized by the statute to consider any legal evidence which the parties may offer to satisfy the court of the true amount in dispute ; and that the judge had a right to receive and listen to an affidavit in this case, in which it was solemnly sworn: “ that the amount of damages mentioned at the foot of the declaration in this cause, is not the actual amount due to this deponent as plaintiff in said cause, nor does it show the amount he seeks or expects to recover therein; and the whole of said amount really due deponent, and so sought to be recovered is less than $500; and that he is now ready and willing, and hereby offers, to settle and discontinue this suit on payment to him of a less sum than $500, and to give the said defendant a full discharge of and from all claims and demands which this deponent, as plaintiff in this suit, has made, or can or may recover against the defendant.” After hearing this affidavit, and on considering the facts thereby disclosed in connection with the language of the act, “and being satisfied that the actual amount in controversy herein is less than $500,” the judge denied the plaintiff’s motion. *In doing so, he looked at no authority but the act itself.- Its language seemed too clear and plain to be *-questioned, and he exercised his judgment and discretion without hesitation ; and the plaintiff in error has not been able to find a court, from that day to this, which doubted that he had the discretion, and exercised it rightly. On this point, the plaintifFs own authorities are against him; tor, in Wright v. Wells, (Pet. C. C., 220,) Mr. Justice Washington said: “the State court was not bound to grant the re-m(Lvak unless it was satisfied that the amount exceeded $500.” i ixr1 Campbell v> Wallen’s Lessees, cited by the plaintiff from Mart. & Y. (Tenn.), 268, the Supreme Court of Tennessee S‘l i? “ security need not be given until it has been judicially decided that, upon the facts set forth in the petition, as it respects citizenship, value of matter in dispute, &c., the applicant is entitled to a removal.” In the case now here, e supreme Court of the State of New York has said the came thing in effect. See 2 Den., 197. 217 205 SUPREME COURT. Kanouse v. Martin. In Carey v. Cobbet., 2 Yeates, 277, the Supreme Court of Pennsylvania said, that “a bill of exceptions will not lie against the opinion of the court, in refusing the removal of an action into the United States court;” and finally, this court itself, in Grordon v. Longest, concedes a like discretion to the State court. All these cases arose on the twelfth section of the act, except Carey v. Cobbet; and they are the only ones cited by the plaintiff which did so arise, except Muns v. Dupont, 2 Wash. C. C., 463; and, in this latter case, Justice Washington listened to, and relied on an affidavit as evidence to fix the amount in controversy. But it is said, at pages 14 and 15 of the plaintiff’s argument, that the original declaration “ was uncontradicted evidence of the highest nature,” and that the Common Pleas erred in afterwards receiving an affidavit of the plaintiff reducing the demand below $500.” In the first place, it is not true that a declaration, while in paper, is evidence “ of the highest nature.” If it were so, it would settle the rights claimed under it, for it would be a record, and could not be contradicted even by a plea. It would settle the facts alleged in it beyond all controversy ; and the proposition is practically absurd. A declaration before judgment is like any other paper in the proceedings of a cause, and may be disputed and amended until the matters alleged in it have been finally adjudicated and settled, and until it has been enrolled, and. then it be-comes a *record, and is “ the highest evidence,” and -I not until then. 1 Salk., 329; 1 Ld. Raym., 243-9; J. R., 290. Neither was the declaration “uncontradicted,” as has already been shown. In the next place, the statement, that the Common Pleas received the plaintiff’s affidavit, “reducing his demand below $500,” is not true; the affidavit did not “reduce the demand,” nor was it received for that purpose. It merely showed the true amount of the demand, and that the plaintiff’s attorney, Mr. Westervelt, had overstated it in in the declaration, and the affidavit was received for that purpose, and for no other. The true amount in controversy in this case was alwavs less than $500, and it never belonged to a class of cases of which Congress intended the federal courts should have jurisdiction. And what reason, founded either on public policy or private right, can be assigned for depriving the State court o the means of satisfying itself whether the actual amount is such as to entitle the applicant to a removal or not? 218 DECEMBER TERM, 1853. 206 Kanouse v. Martin. In the United States v. Daniel, 4 Cranch, 316, a judgment had been obtained in a United States circuit court for more than $2,000, on the penalty of a bond of which the condition was less than $2,000. On a motion to dismiss the writ of error by which the judgment had been removed into this court, it was held, that the amount of the condition of the bond, and not of the judgment, controlled the jurisdiction, and the writ was dismissed. Why should not the true amount, and not the fictitious one, be allowed to control the jurisdiction in the present case, as well as in the one just cited? They both sound in damages ; the fiction in the one case was in the judgment, in the other in the declaration. Why should a declaration be considered more conclusive than a judgment? Fourth Point. “While a court has jurisdiction, it has a right to decide any question which occurs in the cause.” Fifth Point. The plaintiff in error did not present the decision of the New York Common Pleas in this case to the appellate courts of the State of New York, as required by the laws of that State, to enable those courts to review that decision ; and they have so decided; and this court will be governed by their decisions on this point. Finally, it is submitted, that the original jurisdiction of the State court was not divested, nor the cause removed, by any proceedings of the plaintiff in error. First. Because the plaintiff in error did not pursue the regular course of practice in entering the cause in the United States Circuit Court. See 1 Blatchf., 150; *Second. Because he did not enter his appearance in the State court at the time of filing his petition for L a removal, as required by the United States statute. Third. Because he did not make it appear, to the satisfaction of the State court, that the matter in dispute exceeded the sum of $500, exclusive of costs, as required by the same statute. Fourth. That the State court, having jurisdiction of the cause, had a right to make orders and proceed to judgment therein. Fifth. That it appears, from the judgment of the New York Superior Court and Court of Appeals, that no question aris-n*7e,r ^.e Constitution or laws of the United States was ecided by either of them; but only certain questions relating o heir own jurisdiction under local State laws, to review a c amber order, made by a single judge of an inferior State Cer^n questions of costs. And it is further sub-ui eel, that such decisions will not be revised by this court. 219 207 SUPREME COURT. Kanouse v. Martin. And that the refusal of Judge Daly, of the New York Common Pleas, to grant an order for the removal of the cause, is the only decision in this case which this court will review. And that his decision was right. Mr. Justice CURTIS delivered the opinion of the court. This is a writ of error to the Superior Court of the city of New York. Upon the return of the writ at the last term, the defendant in error moved to dismiss it for want of jurisdiction. This motion was overruled, and the opinion of the court is reported in 14 How., 23. At the present term, the case has been submitted on its merits upon printed arguments filed by the counsel for the two parties. The action was, originally, a suit in the Court of Common Pleas for the city and county of New York. The plaintiff was a citizen of the State of New York, and the defendant a citizen of the State of New Jersey; and at the time of entering his appearance, he filed his petition for the removal of the cause into the Circuit Court of the United States for the southern district of New York, and offered a bond with surety; the form of this bond, or the sufficiency of the surety does not appear to have been objected to. The declaration then on file demanded damages in the sum of one thousand dollars. That was the amount then in dispute between the parties. The words “matter in dispute,” in the 12th section of the judiciary act, do not refer to the disputes in the country, or the intentions or expectations of the parties concerning them, but to the claim presented on the record to the legal consid-*2081 era^on the court. What the plaintiff *thus claims, -I is the matter in dispute, though that claim may be incapable of proof, or only in part well founded. So it was held under this section of the statute, and in reference to the right of removal, in Gordon v. Longest, 16 Pet., 97 ; and the same construction has been put upon the eleventh and twenty-second sections of the judiciary act, which makes the jurisdiction of this court and the Circuit Court dependent on the amount or value of “the matter in dispute.” The settled rule is, that until some further judicial proceedings have taken place, showing upon the record that the sum demanded is not the matter in dispute, that sum is the matter in dispute in an action for damages. Green v. Liter, 8 Cranch, 229; Wise v. The Col. Turnpike Co., 7 Cranch, 276; Gordon v. Ogden, 3 Pet., 33; Smith n. Honey, 3 Pet., 469; Den v-Wright, 1 Pet. C. C., 64; Miner v. Dupont, 2 Wash. C. C., 463 ; Sherman v. Clark, 3 McLean, 91. Without any positive provision of any act of Congress o 220 DECEMBER TERM, 1853. 208 Kanouse v. Martin. that effect, it has long been established, that when the jurisdiction of a court of the United States has once attached, no subsequent change in the condition of the parties would oust it. Morgan v. Morgan, 12 Wheat., 290 ; Clarke v. Mathewson, 12 Pet., 165. And consequently when, by an inspection of the record, it appeared to the Court of Common Pleas that the sum demanded in this action was one thousand dollars, and when it further appeared that the plaintiff was a citizen of the State of New York, and the defendant of the State of New Jersey, and that the latter had filed a proper bond with sufficient surety, a case under the twelfth section of the judiciary act was made out, and, according to the terms of that law, it was “ then the duty of the State court to accept the surety, and proceed no further in the cause.” But the court proceeded to make inquiry into the intention of the plaintiff, not to claim of the defendant, the whole of the matter then in dispute upon the record, and allowed the plaintiff to reduce the matter then in dispute to the sum of four hundred and ninety-nine dollars, by an amendment of the record. It thus proceeded further in the cause, which the act of Congress forbids. All its subsequent proceedings, including the judgment, were therefore erroneous. . But it is objected, that this is a writ of error to the Superior Court, and that, by the local law of New York, that court could not consider this error in the proceedings of the Court of Common Pleas, because it did not appear upon the record, which, according to the law of the State, consisted, only of the declaration, the evidence of its service, the entry of the appearance of the defendant, the rule to plead, and the judgment for want of a *plea, and the assessment of dam-ages; and that these proceedings, under the act of •-Congress, not being part of this technical record, no error could be assigned upon them in the Superior Court. This appears to have been the ground upon which the Superior Court rested its decision. That it was correct, according to the common and statute law of the State of New York, may be conceded. But the act of Congress which conferred on the defendant the privilege of removal, and pointed out the mode in whi,ch it was to be claimed, is a law binding upon all the courts of that State; and if that act both rendered the judgment of the Court of Common Pleas-erroneous, and in effect gave the defendant a right to assign that error, though he proceeding did not appear on the technical record, then, y f°jce of that act of Congress, the Superior Court was ound to disregard the technical objection, and inspect these proceedings, unless, which we shall presently consider, there 221 209 SUPREME COURT. Kanouse v. Martin. was some defect in its jurisdiction which disenabled it from doing so. The reason why the Superior Court declined to inspect these proceedings was, that the defendant did not plead them to the jurisdiction of the Court of Common Pleas, and thus put them on the record. And it is generally true, that a party claiming a right under an act of Congress, must avail himself of some legal means to place on the record that claim, and the facts on which it rests; otherwise he cannot have the benefit of a reexamination of the judgment upon a writ of error. But this duty does not exist in a case in which he cannot perform it without surrendering some part of the right which the act secured to him, and in which the court, where the matter is depending, is expressly prohibited from taking any further proceeding. In this case, the right of the defendant to remove the cause to the next term of the Circuit Court was complete, and the power of the Court of Common Pleas at an end. To require the defendant to plead, would deny to him his right to have all proceedings in that court cease, and would make all benefit of that right dependent on his joining in further proceedings in a court forbidden by law to entertain them. It would engraft upon the act of Congress a new proviso that, although the court was required to proceed no further, yet it might proceed, if the defendant should fail to plead to the jurisdiction ; and that, though the defendant had done all which the laws required, to,obtain the right to remove the suit, yet a judgment against him would not be erroneous, unless he should do more. In our opinion, therefore, the act of Congress not only conferred on the defendant the right to remove this suit, by filing his petition and bond, but it made all subsequent proceedings of the Court of Common Pleas erroneous, and neces-*9101 sarily *required the court, to which the judgment was -J carried by a writ of error, to inspect those proceedings which showed the judgment to be erroneous, and which could not be placed on the technical record consistently with the act which granted the right of removal. It should be observed that the judgment of the Superior Court did not proceed upon any question of jurisdiction. I± it had quashed the writ of error, because the laws of the State of New York had not conferred jurisdiction to examine the case, this court could not have treated that judgment as erroneous. But entertaining jurisdiction of the writ ot error, it pronounced a judgment, “ that the judgment aforesaid, in form aforesaid given, be in all things affirmed and 222 DECEMBER TERM, 1853. 210 Kanouse v. Martin. stand in full force and effect; ” and it did so, because the plaintiff in error, by omitting to plead to the jurisdiction, had not placed on the record those proceedings which rendered the judgment of the Court of Common Pleas erroneous. The error of the Superior Court was therefore an error occurring in the exercise of its jurisdiction, by not giving due effect to the act of Congress under which the plaintiff in error claimed; and this error of the Superior Court, in the construction of this act of Congress, it is the province of this court to correct. Though the point does not appear to have been made in Gordon v. Longest, yet it was upon this ground only that this court could have rested its decision to look into the proceedings for the removal of that suit from the State court. For it is as true in this court as in the Superior Court of New York, that, upon a writ of error, this court looks only at the technical record, and affirms or reverses the judgment, according to what may appear thereon. Inglee v. Coolidge, 2 Wheat., 363; Fisher's Lessor v. Cockerell, 5 Pet., 248; Heed's Lessee v. Marsh, 13 Pet., 153. But this is only one of the rules of evidence for the exercise of its jurisdiction as a court of error; it prescribes what shall and what shall not be received as evidence of what was done in the court below; and when an act of Congress cannot be executed without disregarding this general rule, it becomes the duty of this court to disregard it. The plaintiff in error, having a right to have the erroneous judgment reversed, must also have the right to have the only legal proceedings, which could be had consistently with the act of Congress, examined to show that error. It is unnecessary to refer to the proceedings in the Court °f Appeals any further than to say, that the appeal was dismissed for want of jurisdiction, that court not having cognizance of appeals from the decisions of a single judge at a special term. It is stated by counsel, that when these proceedings took place *in the Court of Common Pleas, r^oi i there was, by law, no distinction between general and *-special terms of the Court of Common Pleas, and that, therefore, the plaintiff in error could not, by any- proceeding, have enfdled himself to go to the Court of Appeals. We have not thought it necessary to inquire into this, because we are of opinion that the defendant was not bound o take any appeal to the general term, if there was such an one then known to the law. His right to remove the suit emg complete, he could not be required, consistently with e act of Congress, to follow it further in the Court of Com-223. 211 SUPREME COURT. Brooks et al. v. Fiske et al. mon Pleas; and the power of that court being terminated, it could not lawfully render a judgment against him; and it is of that judgment he now complains. The only legal consequence, therefore, of his not appealing to the general term is, that the Superior Court is the highest court of the State to which his complaint of that judgment could be carried, and therefore, under the twenty-fifth section of the judiciary act, a writ of error lies to reexamine the judgment of that highest court. The judgment of the Superior Court must be reversed, and the cause remanded, with directions to conform to this opinion. ORDER. This cause came on to be heard on the transcript of the record from the Superior Court of the city of New York, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Superior Court in this cause be, and the same is hereby reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Superior Court, for further proceedings to be had therein, in conformity to the opinion of this court. *219-1 *Artemas L. Brooks, Ignatius Tyler, William *J-I W. Woodworth, as Administrator of William Woodworth, deceased, and also as Grantee, and James G. Wilson, Appellants, v. John Fiske and Nicholas G. Norcross, doing business under the firm of Fiske & Norcross. A machine for planing boards and reducing them to an equal thickness throughout, which was patented by Norcross, decided not to be an infringement of Wood worth’s planing machine, for which a patent was obtained in 1828, reissued in 1845.1 The operation of both machines explained. (J/?. Justice Curtis did not sit in this cause, having been of counsel for the patentee.) 1 Cited. Gould v. Rees, 15 Wall., 194; Gill v. Wells, 22 Id., 28; Reedy v. Scott, 23 Id., 367; Bates v. Coe, 8 224 Otto, 38 ; Gottfried v. Philip Best Brewing Co., 5 Bann. & A., 35. DECEMBER TERM, 1853. 212 Brooks et al. v. Fiske et al. This was an appeal from the Circuit Court of the United States for the District of Massachusetts, sitting as a court of equity. The appellants were the owners of the Woodworth patent for a planing machine, the documents respecting which are set forth in extenso^ in the report of the case of Wilson v. Rosseau, 4 How., 646. They filed a bill against the appellees for an injunction to restrain them from using a certain planing machine, known as the Norcross machine, upon the ground that it was an infringement of their letters-patent. Other matters were brought into the bill, which it is not material here to state. In their answer, the appellees say, that they have jointly, under the firm of Fiske & Norcross, and not otherwise, used one planing machine and no more, since December 25th, 1849, at their mill in said Lowell, and nowhere else ; but they belipve, and therefore aver, that said machine is not the same in principle and mode of operation as the said Woodworth machine, but is substantially different therefrom, and contains none of the combinations claimed in the said Woodworth patent, but is a new and different invention, secured to said Norcross by letters-patent, duly granted and issued to him by the United States of America, on the twelfth day of February, in the year one thousand eight hundred and fifty; to which, or a duly certified copy thereof, they refer as an exhibit, with this their answer, for the purpose of showing the substantial difference between said machines. The answers then admit the filing of the bill of complaint charged in this bill to have been filed against them in 1844, and the making of the agreement recited in this bill; but they say that the machine referred to in that agreement, and which they were then using, was constructed according iqq1 Pa^eilt granted to one Hutchinson, on the 16th July, 1839, but they admit that *it embraced the first com- r#9iq bination claimed in the Wood worth amended patent. *--*■ he answers further contain the following averments: “And these defendants, further answering, say that they elieye, and therefore aver, that the said Woodworth patent is V(?y\in Part’ f°r want of novelty in the first claim therein, to or the employment of rotating planes in combination wi ii rollers or any analogous device to keep the board in p ace, the same thing substantially having been before patented in France, to wit, in 1817 and 1818, by Sir Louis Vic-(Lm08^ -i ar^ Roguin, and in 1825 by Sir Leonore Thomas anneville, and described in the printed publication commonly called Brevets d’lnventions, vol. 23, pages 207 to 212, vol. xv.—15 225 213 SUPREME COURT. Brooks et al. v. Fiske et al. plates 27 and 28, and vol. 41, pages 111 to 116, plate 12; and these defendants refer also to the Hill machine, mentioned in the said patent of Norcross, as publicly used by Joseph Hill, of Lynn, prior to the pretended invention of the said combination by the said William Woodworth, deceased.” “ And these defendants further say, that they believe, and therefore aver, that the said patent issued to William W. Woodworth, July 8, 1845, is not for the same invention as the original patent issued to William Wood worth, December 27, 1828, exclusive of the part disclaimed January 2d, 1843, as alleged in the plaintiff’s bill.” “ And these defendants, further answering, say that they are informed by numerous and able experts, and they verily believe, and therefore aver, that the machine used by them and patented by said Norcross, as aforesaid, is not an infringement of the said Woodworth patent, nor of any rights of the plaintiffs under the same; and they pray that the question of infringement may be tried by a jury under the direction of the court.” To this answer a general replication was filed. Much evidence was taken, and in March, 1852, the cause came on to be heard upon the bill annexed, general replication, and the proofs taken therein, before the Judge of the District Court, Mr. Justice Curtis having been of counsel in the case. The court adjudged that the machine made and used by the defendants, and complained of in the said bill, is not an infringement of the right secured to the complainants under and by virtue of the letters-patent reissued and granted to William W. Woodworth, administrator, on the eighth day of July, in the year one thousand eight hundred and forty-five, referred to in the said bill, and under and by virtue of the several mesne conveyances recited in the said bill; and thereupon the court doth order, adjudge, and decree that the complainants’ said bill be, and the same hereby is, dismissed with costs. *214] *The complainants appealed to this court. It was argued by Mr. Keller and Mr. Gr. T. Curtis, for the appellants, and Mr. Whiting, for the appellees. The reporter finds himself unable to give an intelligible explanation of the arguments of counsel, without introducing engravings, which would be out of place in a law book. In fact, models were used in the argument before the court. He is compelled, therefore, to omit all the arguments of counsel. 226 DECEMBER TERM, 1853. 214 Brooks et al. v. Fiske et al. Mr. Justice CATRON delivered the opinion of the court. The bill before us was filed against Fiske and Norcross by the assignees of Woodworth’s patented machine for planing boards, and of tonguing and grooving them. It is alleged that a planing machine, patented to Norcross, and used by the defendants, was substantially in its combination, and in the result it produced, the same as that assigned to the complainants, for a district in which the defendant’s machine was used; that the complainant’s patent was the elder, and that the use of Norcross’s machine was an infringement of that invented by William Woodworth. The Circuit Court dismissed the bill on the hearing; and it is this decree we are called on to revise. The contest in the court below could hardly have been more stringent; and much consideration was obviously bestowed on the case by the judge who decided it, as appears from his opinion, which is laid before us, the accuracy of which opinion and the decree founded on it, we are called on to examine. Before doing so, it is proper to state, that the machine used by the defendants does not tongue and groove boards, and that this part of Woodworth’s machine is not in controversy. It is insisted that Wood worth’s monoply extends to his mode of reducing a plank to an equal thickness, and a principal question is whether the patentee sets up any such claim. It is provided, by the 6th section of the act of 1835, that in case of any machine the inventor shall fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character, by which it may be distinguished from other inventions : “ And shall particularly specify and point out the part, improvement, and combination, which he claims as his own invention or discovery.” An improvement of a machine is here claimed as having been invented, and the statute requires that such improvement shall be particularly specified; it is to be done in writing, and the applicant is to swear that he believes he is the first inventor of the improvement. This is required, so that the public may know what they are *prohibited from doing r*n-i r during the existence of the monopoly, and what they L are to have at the end of the term, as a consideration for the grant. wor(^s Lord Campbell, in Hastings v. Brown, 1 /. & L., 453, “ The patentee ought to state distinctly what \ 18 *or which he claims a patent, and describe the limits of pe .mo^°Poly; ” or, in the language of this court, in Evans v. a on, 7 Wheat., 434. It is for the purpose of warning an nocent purchaser, or other persqp, using the machine, of his 227 215 SUPREME COURT. Brooks et al. v. Fiske et al. infringement, and at the same time, of taking from the inventor the means of practising upon the credulity or fears of other persons, by pretending that his invention was different from its ostensible objects. Have these requirements been complied with by Woodworth, as respects a claim for planing boards to an equal thickness ? He obtained a patent for his machine in 1828, which was surrendered by his executor in 1845, for want of a proper specification, and a second patent issued, and on this reissued patent the case rests. For its better understanding, we give extracts from the claim and specification; they are the same that were relied on by the Circuit Court, and are as follows: “ What is claimed therein as the invention of William Woodworth, deceased, is the employment of rotary planes, substantially such as herein described, in combination with rollers, or any analogous device to prevent the boards from being drawn up by the planes, when cutting upwards; or from the reduced or planed to the unplaned surface as described.” And afterwards, “The effect of the pressure rollers in these operations, being such as to keep the boards, &c., steady, and prevent the cutters from drawing the boards towards the centre of the cutter wheel, whilst it is moved through by machinery. In the planing operation the tendency of the plane is, to lift the boards directly up against the rollers; but in the tongu-ing and grooving the tendency is to overcome the friction occasioned by the pressure of the rollers.” This language, so far from claiming the new truth or the result now contended for as the invention or discovery, does not describe or even suggest either of them. The claim, or summing up, however, is not to be taken alone, but in connection with the specification and drawings; the whole instrument is to be construed together. But we are to look at the others only for the purpose of enabling us correctly to interpret the claim.1 . . The specification begins by saying, “ the following is a full, clear, and exact description of the method of planing, fongu-ing, and grooving plank or boards, invented by William Woodworth, deceased. . « *91 fil *Here the invention is denominated a method o -I planing, tonguing, and grooving, but not of reducing to an uniform thickness. . The specification, then, after describing the mode oi Pre_ 1 S. P. Hogg v. Emerson, 11 How., 587; Earle v. Sawyer, 4 Mason, 1; Winans v. Schenectady frc. R. R. Co^2 228 Blatchf., 280; Foss v. Herbert, 2 Fish-Pat. Cas., 31. DECEMBER TERM, 1853. 216 Brooks et al. v. Fiske et al. paring the board, proceeds: “ When the plank or boards have been thus prepared, (on a separate machine,) they may be placed on or against a suitable carriage, resting on a frame or platform, so as to be acted upon by a rotary cutting or planing and reducing wheel, which wheel may be made to revolve either horizontally, or vertically, as may be preferred. The carriage which sustains the plank or board to be operated upon, may be moved forwards by means of a rack and pinion, by an endless chain, or band, by geared friction rollers, or by any of the devices well known to machinists for advancing a carriage, or materials to be acted upon in machines for various purposes. The plank or board is to be moved on towards the cutting edges of the cutters, or knives, on the planing cylinder, so that its knives or cutters, as they revolve, may meet and cut the plank or board, in a direction contrary to that in which it is made to advance. The edges of the cutters are in this method prevented from coming first into contact with its surface, and are made to cut upwards from the reduced part of the plank towards said surface; by which means their edges are protected from injury by gritty matter, and the board, or plank, is more evenly and better planed than when moved in the reversed direction.” There is afterwards a reference to, and explanation of, the drawings, as follows: “ In the accompanying drawings, figure 1, is a perspective representation of the principal operating parts of the machine, when arranged and combined for planing, tonguing, and grooving; and when so arranged as to be capable of planing two planks at the same time, the axis of the planing wheel being placed vertically.” And again, “ the rollers f. f. f. which stand vertically, are to be made to press against the plank and keep it close to the carnage, and thus prevent the action of the cutters from drawing the plank up from its bed, in cutting from the planed sur ace upwards; they may be borne against it by means of eig s or springs, in a manner well known to machinists, in a single horizontal machine, the horizontal friction rollers the pressure rollers placed above them to llc i ,.e boar(i, with or without the carriage, a bed plate being used directly under the planing cylinder.” _ D- a*terwards, in describing the process for tonguing and nart he says • “ The edges of the plank, as its planed with^+kSeS the planing cylinder, are brought into contact whioh o e a *Vi described tonguing and grooving wheels, 7on± e/° Play this contrivance, the edge of the cutter is kept in a fixed lelation to the rest, or, in other words, the pressure roller; _e space between them being always the same, whereas in fi 1 r|S’ • a^S° i*1 Wood worth’s, the edge of the knife had a relation ^ie bed, and not to the pressure roller. The en ant, therefore, has made a new and independent inven- 235 222 SUPREME COURT. Brooks et al. v. Fiske et al. tion, and does not use the arrangement, or mode of combination of the plaintiff.” For the reasons above stated, we are of opinion that the machine of the respondents did not infringe the patent of the complainants, and therefore order that the decree of the circuit court dismissing the bill be affirmed. Mr. Justice McLEAN, Mr. Justice WAYNE, and Mr. Justice NELSON, dissented. Mr. Justice McLEAN. I dissent from the opinion of the court. The defendants rest their defence on three grounds: *2231 *1* A wan^ novelty in Woodworth’s invention. -* 2. That in the new patent of Woodworth, issued on the surrender of the old one, to correct the specifications, a new invention is claimed, not contained in the first patent. 3. That the defendant’s machine is substantially different from the plaintiff’s. The Woodworth patent has been a subject of investigation frequently before the circuit courts of the United States, and of this court. And although the originality of the invention has been, I believe, uniformly sustained, still, the fact of novelty depends upon proof, and may be disputed by any one against whom suit is brought. The patent is primd facie evidence of right in the patentee. A defence which denies the novelty of the invention must be proved. The original patent of Woodworth is dated 27th of December, 1828. He describes his invention to be an “ improvement in the method of planing, tonguing, grooving, and cutting into mouldings, of either plank, boards, or any other material, and for reducing the same to an equal width and thickness, and also for facing and dressing brick, and cutting mouldings, or facing metallic, mineral, and other substances. He then describes the machinery by which this result is produced. And he says, in the conclusion, that he does not claim the invention of circular saws, or cutter wheels, knowing they have long been in use; but he claims as his invention, the improvement and application of cutter and planing wheels to planing boards, &c., as above stated, &c. There is no claim, in his written specifications, for pressure rollers on both sides of the cutting cylinder, which confine the board to its place, and necessarily reduced it to an equa thickness; but in the drawings, these rollers appear at the proper places, and are so arranged as to reduce the board to a uniform thickness. 236 DECEMBER TERM, 1853. 223 Brooks et al. v. Fiske et al. The written specifications, including the drawings, constitute a part of the patent, and must be construed as the claim of the plaintiff. In Ryan v. Goodwin, 3 Sumn., 514, it is said, if the court can perceive, on the whole instrument, the exact nature and extent of the claim made by the inventor, it is bound to adopt that interpretation, and to give it full effect. The same is held in Wyeth v. Stone, 1 Story, 270, 286; and in Ames v. Howard, 1 Sumn., 482, 485, it is said “ the drawings are to be taken in connection with the words, and if, by a comparison of the words and the drawings, the one would explain the other sufficiently to enable a skilful mechanic to perform the work, the specification is sufficient.” Bloxam v. Elsee, 1 Car. & P., 558, is to the same effect. Formerly, patents were construed strictly as giving monopolies ; *but of late years, in England, inventions are [-*994 treated differently, and a liberal view is taken in favor *-of the right. Blanchard v. Sprague, 3 Sumn., 535, 539. This has been the settled doctrine in this country, and it is founded upon the highest considerations of policy and justice. The opinion, delivered by my brother Curtis this morning, as the organ of the court, cites the authorities. No patent, it is believed, which has ever been granted in this country, has been so much litigated as this one. This affords no unsatisfactory evidence of its value. Very shortly after Woodworth’s machine was put in operation, a system of piracy was commenced, and, although twenty-five years have elapsed, numerous suits are still pending contesting the right. Mr. Justice Story was one of the first judges whose duties required him to scrutinize this patent in all its parts, and he sustained it in all. This was before the specifications were corrected. And this court also sustained it, in 7 How., 712, where it says, “the specifications accompanying the application for a patent are sufficiently full to enable a mechanic with ordinary skill to build a machine.” And this is what the law requires. In the corrected specifications the patentee says: “Having thus fully described the parts and combinations of parts, and operation of the machine for planing, tonguing, and grooving oards or plank, and shown various modes in which the same may be constructed and made to operate, without changing ie* Pri?ciple or mode of operation of the machine, what is c aimed therein, as the invention of William Wood worth, eceased, is the employment of rotary planes, substantially as erein described, in combination with rollers or any analogous device, to prevent the boards from being drawn up by e planes, when cutting upwards, or from the planed to the 237 224 SUPREME COURT. Brooks et al. v. Fiske et al. unplaned surface, as described. And also the combination of the rotating planes with the cutter wheels, for tonguing and grooving, for the purposes of planing, tonguing, and grooving boards, &c., at one operation, as described.” i “ And, finally, the combination of either the tonguing or grooving cutter wheel, for tonguing and grooving boards, &c., with the pressure rollers, as described; the effect of the pressure in these operations being such as to keep the boards, &c., steady, and prevent the cutters from drawing the boards towards the centre of the cutter wheels, whilst it is moved through by machinery,” &c. L. Roguin, of France, in the years 1817 and 1818, invented a machine for planing, grooving wood, moulding, &c., it is alleged, substantially on the same principles as Woodworth’s machine. *99^1 *A considerable number of experts were examined, in the Circuit Court, on both sides, and their opinions, as usual in such cases, were directly in conflict. Such testimony, being written, cannot lead the court to a satisfactory result, by weighing the evidence, as might be done by a jury, where the witnesses are examined in open court. There seems to be no other mode of arriving at a correct conclusion, than to read what the experts have said, and make up an opinion on the specifications of the patents, and on an examination of the models. The French machine was improved in 1818. The patentee says: “The parent idea of the first machine could not vary. This parent idea consisted in subjecting the wood to the action of a tool of a particular shape, and to impart to this tool a rotary movement; but the choice remained, either of making the tool stationary, and causing the wood to. advance under it with a slow and progressive motion—one rotary, the other progressive. The first was adopted in the construction of the machine described in support of the petition for letters-patent ; the second has been adopted in the construction of the improved machine.” After describing the structure of the cylinder, he says: “ It is borne by a cast-iron carriage, and to the back part ot this carriage is attached an iron axletree, bearing two brass pinions, which gear into a rack, and tend to regulate the movement of the carriage. The bench moves itself vertically by means of screws which support it, and tend to raise it or lower it, according to the thickness of the wood to be worked.” “Four small, graduated plates of metal, placed in the interior angles of the superstructure, act as a regulator o fix this bench in a perfectly horizontal position.” “ Two non 238 DECEMBER TERM, 1853. 225 Brooks et al. v. Fiske et al. squares abut the bench at both ends.” “ Experience,” he says, “ has taught that the weight of the bench was not sufficient, singly, to prevent the vibration imparted to it by the machine when in operation, and there resulted from this vibration waves on the surface of the planed board.” This was obviated by the weight of the carriage. “ The carriage is of cast iron, and weighs about two hundred and forty-one pounds. It is necessary that the carriage should be of sufficient weight, so as not to be raised by the strain of the tool.” “ The back part of the bench carries a claw, against which the wood is rested and stopped, like a carpenter’s bench. At the other extremity, the wood is stopped by movable dogs, which pass under a bar through which passes pressure screws.” And he further says: “We have seen, in the description of the first machine, that the piece called guide (because it serves effectually to guide the wood under the tool for grooving and *moulding) was fixed on the superstructure of the bench. In the new machine, *-this piece is borne by the carriage.” From this description it appears, that the planing cylinder is carried by an iron frame, and passes over the surface of the board, which is fastened on a bed by a claw at one end, and at the other by movable dogs.” This bench, on which the board is placed, is movable vertically, so as to be adjusted by screws to the thickness of the wood to be worked. . . The wood is fastened on this adjustable bed, and the iron frame wrhich carries the cutting cylinder is of sufficient weight to keep the cutters on the board, but this machinery cannot reduce the plank to the same thickness. When the bench rises or falls, the whole surface of the plank rises and falls, and the cutting knives cannot so operate by pressure on so long a surface as to reduce the inequalities of the board. But this can be done by pressure rollers, as in Woodworth’s machine, on each side of the cutting cylinder—one adjustable, so as to admit the passage of the unplaned plank ; the other fixed, so as to admit the passage of the plank, when reduced o the required thickness. The French machine may present a smooth surface, but the inequalities of the board will not e removed. . They will remain in the same proportion as be-tore the planing operation. t is argued, that the piece or bar which, in the first ma-c me, was fastened to the bench, and which, in the improved rnn’ wa,s ani}exed to the carriage, operated as a pressure ,,er’ J* this were admitted, it would not remove the diffi-y» as one pressure roller or bar could answer no valuable P rpose. There must be two rollers, one adjustable, as above 239 226 SUPREME COURT. Brooks et al. v. Fiske et al. stated, or two fixed rollers, or bar and an adjustable bed, to reduce the plank to an equal thickness. But if L. Roguin be permitted himself to describe the function of this bar, it is, “ to guide the wood under the tool for grooving, tonguing, and moulding.” Shall the language of the inventor be misapplied, and this bar be appropriated to a use which it would seem he never thought of, to render invalid Wood worth’s patent? Several of the witnesses on both sides gave their testimony from the description of L. Roguin’s patent, published in a book called “ Brevets d’lnventions ” ; but, as that book was not published until after Woodworth’s invention, its description is evidence only so far as it agrees with the specification attached to the patent of L. Roguin. And it does appear, from the original specifications, filed by him, a certified copy of which has been recently procured by M. Perpigna, that there are some material variances. We must therefore look to the authentic paper and drawings, as certified, for evidence in regard to the machine. The organization of this machine does not seem to be on *0971 *fhe same principle as Woodworth’s, and the result is -I different. The other French machine, alleged to be similar to that of Woodworth’s, is De Manneville’s. This machine was patented in France in 1825 and described in the printed work called “ Brevets d’lnventions.” The patent embraced two machines, having for (their) object the grooving, planing, and reducing to a uniform thickness, wood intended for inlaid work; as well as all sorts of boards, whatsoever may be their dimensions. The inventor calls them a groover and planer. The description of this machine by the inventor is confused, and scarcely intelligible. One of the defendants’ witnesses describes it as having two planes, one of which is called rough, the other smooth, both of which are kept down to the face of the board by a tool-bearer, and are moved backward and forward by a crank motion. The rough plane is movable to and from the board, by being held to it by a spring; the smooth plane, or finisher, is immovable, principally from, the board, except to separate the shavings from it. The position of the board is edgewise, resting on the horizontal rollers—-friction rollers; and it is carried through by a pair of fluted cylinders or rollers, vertical, and parallel to each other; which rollers press upon each side of the board, one of which, the back one, is made to slide in its boxes, held up by a spring, and thus made to yield to the inequalities of the thickness of the board. Another pair of rollers, holding the same vertical position, called discharging cylinders, neither of whic 240 DECEMBER TERM, 1853. 227 Brooks et al. v. Fiske et al. is yielding, nor are they fluted; and to adjust the different thicknesses, the inventor suggests rollers of different diameters, and on an adjustable bed. Any one can at once see that this is not an organization of machinery similar to Wood worth’s machine. It is not the same principle, nor is it in substance like it. This remark is made in regard to the combination claimed by Woodworth, and not to all the elements of which that combination is formed. In the Manneville machine there is no combination of pressure rollers with rotary cutters, as in Woodworth’s; the cutters have a reciprocating motion instead of a rotary one. Several of the elements in both machines are the same, but they are not so arranged as to act in the same manner or on the same principle. Some of the witnesses for the defendants think, that from the two French patents, the Woodworth machine might be constructed without invention ; but these machines must be considered singly, and not together. In the defence it is alleged, in reference to Woodworth’s machine, that “the same thing substantially was patented in France, in 1817 and 1818, by L. *Roguin, and in 1825, by Manneville. The de-fence, in this respect, is not sustained, as neither of the patents are substantially the same as Woodworth’s. The next point for consideration is, whether, in the amended specifications of Wood worth’s patent, in 1845, a new invention was claimed, not embraced in the original patent. It must be admitted, that the subject-matter of the new patent is the same. The patent was surrendered, to correct defective specifications, which did not result from any fraudulent intent. This right was secured to the patentee by the thirteenth section of the patent act of 1836; and, on an application to the commissioner of patents, he, finding there had been no fraud, a new patent was issued for the same invention, more accurately described, as the law authorized. In the case of Woodworth v. Stone, 3 Story, 749, and Allen v. Blunt, Id., 742, it was held, that the action of the commissioner, in accepting a surrender of a patent and issuing a new one, concluded the parties, unless fraud be shown. And in timpson v. West Chester Railroad, 4 How., 380, this court say, “In whatever manner the mistake or inadvertence may ave occurred is immaterial. The action of the government in renewing the patent, must be considered as closing this point, and as leaving open for inquiry, before the court and questi°n °f fraud only.” ie corrected specifications of the new patent, on a surren- Vol. xv.—16 1 241 228 SUPREME COURT. Brooks et al. v. Fiske et al. der, would necessarily be different from those that were defective. And it is the duty of the commissioner not to permit a new invention to be claimed under the pretence of correcting defective specifications. Some things are omitted in the new patent which were claimed in the old one. But the principal objection on this ground seems to be, that pressure rollers were claimed in the new patent, and were not claimed in the old one. This is a mistake, as has already been shown. These rollers were represented in the drawings, and in that way were more accurately described than they could have been by a written specification. These drawings are a part of the patent. It does not appear that the corrected specifications embrace a new invention, not included in the original patent. The third and last point is, whether the defendants’ machine is an infringement of the plaintiffs’. In the opinion of the Circuit Court in this case, it is said, “ The defect in the Hill machine was, that it did not reduce the board to a uniform thickness. This desideratum the plaintiff has obtained by an improvement, for which he was entitled to a patent. The defendant has accomplished the *9991 same purpose * without using the improvement of the J plaintiff, but merely by a new invention of his own, and therefore does not infringe.” From these remarks it would seem, that the Circuit Court considered Woodworth as entitled to a patent, “for reducing boards to a uniform thickness,” but that his patent does not cover it. In this the Circuit Court was mistaken, as I shall endeavour to show, in fact and in law. It is not controverted, that Wood worth’s combination of machinery does reduce boards to an equal thickness. He did not and could not claim a patent for reducing a board to a uniform thickness; for an exclusive right could not be given for such a result. For centuries, boards have been reduced to a uniform thickness by hand planes, and, perhaps, by other means. What, under the patent law, could Woodworth claim? He had a right to claim, as he did claim, a combination of machinery which would produce such a result. Was it necessary, in the summing up of his claim, which is done to distinguish what he has invented from parts of his machine wliich he has not invented, that he should claim the combination of his machine for the purpose of reducing boards to a uniform thickness ? This would have limited his inven ion to that purpose, when it was applicable, and was intende 0 be applied, to that and many other purposes. . By the sixth section of the patent law of 1836, an mven .242 DECEMBER TERM, 1853. 229 Brooks et al. v. Fiske et al. is required to describe his invention in every important particular, in his application for a patent, so as to enable those skilled in the art or science to which it appertains, to make, construct, compound, and use the same ; and if the invention be a machine, he is required to state “ the several modes in which he has contemplated the application of the principle or character by which it may be distinguished from other inventions ; and “ shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention and discovery.” He is required to accompany the whole with a drawing, and, if a machine, a model, &c. Is it not clear that Woodworth has explained the principle, and the several modes in which he has contemplated the application of the principle or character of his machine, by which, in the language of the act, it may be distinguished from other inventions? The plank is planed, tongued, and grooved, by an organization of machinery unknown before. This is all, in the summing up, which the act requires. It is objected that Woodworth does not include, in his claim, that of reducing a plank to a uniform thickness. The invention consists in the means through which this is done. A result, or *an effect is not the invention. This r*oon appears to have been the turning point in the opinion *-of the Circuit Court. But Woodworth has, in the specifications of his machinery, stated that the board is necessarily reduced to a uniform thickness. He says “ The edges of the plank, as its planed part passes the planing cylinder, are brought into contact with the above-described tonguing and grooving wheels, which are so placed upon their shafts, as that the tongue and groove shall be left at the proper distance from the face of the plank, the latter being sustained against the planing cylinder by means of the carriage, or bed plate, or otherwise, so that it cannot deviate, but must be reduced to a proper thickness, and correctly tongued and grooved.” Here Woodworth describes the combined operation of planing, tonguing, and ’ an(^ by which the plank is reduced to a proper ickness, that is, the required thickness; and correctly ongued and grooved, &c. This is the effect of his machine ln Pining boards clearly described. He says, the the board is kept against the planing cutters y means of the carriage, or bed plate, or otherwise. The pressure rollers are claimed in his specification written, and so in his drawings, which show how they are to be applied. a Jays’ represents the same machine with the s o the planing cylinder placed horizontally, and intended 243 230 SUPREME COURT. Brooks et al. v. Fiske et al. to operate on one plank only at the same time. A A is the frame; B B the heads of the planing cylinder; C C the knives or cutters attached to said, heads, to meet the different thicknesses of the plank; the bearings of the shaft of the cylinder may be made movable by screws, or other means, to adjust it to the work, or the carriage of the bed plate may be made so as to raise the plank up to the planing cylinder.” The patent of the defendants was issued February 12th, 1850. It is alleged to be an improvement upon Hill’s machine. That machine, from the description, consisted of a planing cylinder, a platform bench, with an aperture in it, through which the planing cutters operated, so as to cut away any required thickness from the surface of the plank subjected to its action; the relation of the cylinder to the bench was permanent; a spring plate bore upon the plank nearly opposite to the cylinder, and forced it towards the cylinder and bench; feeding rollers carried the plank forward, the same as in Woodworth’s machine. By this operation a stratum of equal thickness was cut from the plank, leaving a smooth surface, but not removing the inequalities of the board. The combination of machinery was different in principle from Woodworth’s, and, consequently, the result was different. *9311 *Norcross says his invention is an improvement of -* Hill’s machine, and “ renders it capable of reducing or planing a board to an equal thickness throughout its length. He says, “ Hill’s machine was capable of planing or reducing a board on one side, or removing from such side a stratum or layer of wood of an equal thickness,” but this did not make the board of uniform thickness. The amended machine contains rotary planes which cut, from the planed to the unplaned surface of the plank; an adjustable bar and rest is at a fixed distance from the cutting action of the planes; the rotating planes and this rest bar were so connected together in a separate frame as to move vertically with the frame, and is borne downward by their weight; two bars, one before and the other behind the rotating planes, and on the face of the plank cut by them, to cause its opposite face, in its progress through the machine, of wha -ever thickness and however warped, to pass in contact wi the rest bar F. One of the said bars is termed a platform > and the distance between this and the rest bar F, is vaUa, e and self-adjusting to the varying thickness of the Pja^ e fore it is planed, and the other, called a horizontal ba! o throat-piece G, placed at the same distance from the res F, as the line of the cutting action of the rotating planes, 244 DECEMBER TERM, 1853. 231 Brooks et al. v, Fiske et al. act on the face of the plank which has been planed, and ensure the contact of the opposite and unplaned face with the rest bar F. Norcross says, “what I claim as my invention is, the combination of the rotatory planing cylinder E, and the rest F, with mechanism, by which the two can be freely moved up or down, simultaneously and independently of the bed, or platform B B, or any analogous device, substantially in the manner and for the purpose of reducing a board to an equal thickness throughout its length, all as hereinbefore specified. “ I also claim the above-described improvement of making the underside of the rest concave, in combination with so extending the part B, under the rest F, and applying it to the concave part thereof, as to cause the board, as it passes across the rest, to be bent, and presented with a concave surface to the operation of the rotatory cutter planing cylinder, substantially as specified.” This organization of machinery seems to be the same in principle as that of Woodworth’s, and produces the same result. If the concave surface of the board, on which the cutters operate, be an improvement, or any other slight change has been made, which may be an improvement on Woodworth’s machine, that would give the defendants no right to use it without a license. The difference between the machines appears to be this. The ^rotating planes and the plate or bed of Wood-worth’s are stationary in the main frame, and the roller L or analogous device on that face of the plank to be planed, is movable toward and from the plate or bed to suit the varying thickness of the plank. While in the Norcross machine, two bars, are substituted for the pressure rollers ; and instead of making the one which acts on the plank before it is planed, movable, to suit the varying thickness of the plank, it is fixed permanently in the main frame ; and the rotating planes and the plate or bed termed by him the rest bar, F, are connected together in a separate frame, and together move up and down, to adapt themselves to the inequalities in the thickness of the plank. Norcross has made that part of his machinery movable, yhich in the Woodworth machine is fixed ; and that which is movable in the Wood worth machine, he has made permanent. . These changes, and the reversal of Woodworth’s ma-c me is the difference in their structure. A cast of the eye n e models will satisfy a machinist of the truth of this representation, “ 245 232 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. Whether the cutting cylinder operates above or below the bench on which the plank is laid, can be of no importance; nor is the difference material whether a pressure roller varies to suit the variable thickness of the plank, or the planing cylinder, connected permanently with the bench, shall be elevated or depressed to accomplish the same object. These devices, though different in form, are the same in principle, and produce the same effect. I think there is an infringement, and that the decree of the Circuit Court should be reversed. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Massachusetts, and was argued by counsel. On consideration whereof it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed with costs. -tenoo-i *THE NORTHERN INDIANA RAILROAD COMPANY, AND -* the Board of Commissioners for the Western Division of the Buffalo and Mississippi Railroad, Appellants, v. The Michigan Central Railroad Company. The Michigan Central Railroad Company, established in Michigan, made an agreement with the New Albany and Salem Railroad Company, established in Indiana, that the former would build and work a road in Indiana, under the charter of the latter. Another company, also established in Indiana, called the Northern Indiana Railroad Company, claiming an exclusive right to that part of Indiana, filed a bill in the Circuit Court of the United States, for the District of Michigan, against the Michigan company, praying an injunction to prevent the construction of the road under the above agreement. The Circuit Court had no jurisdiction over such a case. . The subject-matter of the controversy lies beyond the limits of the district, and where the process of the court cannot reach the locus in quo. . Moreover, the rights of the New Albany Company are seriously involved m the controversy, and they are not made parties to the suit. The act of Con-gress, providing for the non-joinder of parties who are not inhabitants oi e district, does not apply to such a case as the present.1 1 Cited. Atlantic fyc. Tel. Co. v. B. 8f 0. R. R. Co., 46 Superior (N. Y.), 387. “ The general rule as to parties in 246 chancery is, that all ought to he ma parties who are interested in the co troversy, in order that there may an end of litigation. But there DECEMBER TERM, 1853. 23 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. This was an appeal from the Circuit Court of the United States, for the District of Michigan, sitting as a court of equity.2 The appellants were complainants below. They were corporations created by, and doing business in, the State of Indiana, claiming a prior right to make and use a railroad running from east to west across the northern part of Indiana. The defendants were a company incorporated by Michigan, and had made a road from Detroit to Michigan City. Being desirous to continue the road round the southern end of Lake Michigan, they entered into an agreement, for this purpose, with a company, incorporated by Indiana, called the New Albany and Salem Railroad Company. The appellants filed a bill in Michigan, the domicil of the Michigan Central Railroad Company, praying for an injunction to prevent them from entering upon or using the said lands of said complainants, and from grading and excavating upon the same, and from hindering the complainants from completing their road and using the same exclusively, and from constructing and using the railroad which the defendants have laid out, or any railroad upon or near the line where the same is located, and from doing any thing in violation of the exclusive rights of the complainants. To this bill the defendants demurred, and the Circuit Court dismissed the bill, with costs. The complainants appealed to this court. It was argued by Mr. Bronson, for the appellants, and by Mr. Pruyn and Mr. Jay, for the appellees. *The arguments branched out into several heads, but it is only necessary to notice those bearing upon p qualifications of this rule arising out of public policy and the necessities of particular cases. The true distinction appears to be as follows: First. Where a person will be directly af-tected by a decree, he is an indispensable party, unless the parties are too numerous to be brought before the court, when the case is subject to a special rule. Secondly. Where a per-?01J 18! mterested in the controversy, out will not be directly affected by a ^c.ree made in his absence, he is not an indispensable party, but he should < a, S-iia party if Possible, and the wTthl 7’L1- no!; Proceed to a decree Third? w? he can be reached, in thp^' Where he is not interested m the controversy between the imme- diate litigants, but has an interest in the subject-matter which may be conveniently settled in the suit, and thereby prevent further litigation, he may be a party or not, at the option of the complainant.” Williams v. Bankhead, 19 Wall., 563, 571. Neither the act of Feb. 28,1839, nor the 47th rule in equity, enables a circuit court to make a decree in the absence of an indispensable party, whose rights must necessarily be affected. Shields v. Barrow, 17 How., 130; Coiron v. Millaudon, 19 Id., 113; Abbot v. American Hard Rubber Co., 4 Blatchf., 489; Barney v. Baltimore City, 6 Wall., 280. 2 Reported below, 5 McLean, 444, 247 234 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. the question of jurisdiction, arising from locality and the want of proper parties. Mr. Bronson, for appellants. Sixth Point. The New Albany and Salem Company is not a necessary party. First. The defendants have done, and threaten to do, the wrong of which we complain. It is a tort or trespass upon our rights, for which the wrongdoers are answerable, whoever may stand behind them. No one standing behind a trespasser, whatever may be the relation between them, has a right to say that he must be made a party, when the person injured seeks redress against the transgressor. We demand nothing as against the New Albany and Salem Company. Kerr v. Watts, 6 Wheat., 550. If the New Albany and Salem Company was made a party, the rights existing between that company and the defendants, whatever those rights may be, could not be adjusted in this suit. Second. The relation between the New Albany and Salem Company and the defendants is that of grantor and grantee ; and it is never necessary to make the grantor a party to a suit against the grantee, except in real actions, where the grantee vouches the grantor to warranty. The New Albany and Salem Company has sold its franchise, so far as relates to the road in question, to the defendants, and the pretended right to repurchase is only colorable. (1.) There is no mortgage, because there is no debt or obligation to pay. Conway v. Alexander, 7 Cranch, 218, 237; Almy v. Wilber, 2 Woodb. & M., 371; Clover n. Payn, 19 Wend. (N. Y.), 518. (2.) There is nothing like the relation of principal and agent. The defendants are doing work for themselves only. Third. If the relation between the two companies is that of mortgagor and mortgagee, or principal and agent, it is still enough that we bring into court the party who has done and is doing the wrong, when we ask no redress against the other. The New Albany and Salem Company could not, by any form of contract with the defendants, entitle themselves to be made parties to assist against the defendants as tort-feasors. Fourth. The New Albany and Salem Company is not a necessary party, because it cannot be joined without ousting the jurisdiction of the court. (1.) The jurisdiction of the Circuit Court, as the suit now stands, cannot be questioned. The matter in dispute exceeds 248 DECEMBER TERM, 1853. 235 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. *five hundred dollars, (page 10.) The complainants are corporations created by, and doing business in, L Indiana. The defendants are a corporation created by, and doing business in, Michigan. The suit is, therefore, between citizens of different States. Louisville R. R. Co. v. Letson, 2 How., 497. And the suit is brought in Michigan, where the defendants reside. (2.) The New Albany and Salem Company is a corporation created by, and doing business in Indiana, page 6. That company cannot be made a defendant in this suit, for the reasons, 1. It is a citizen of the same State with the complainants; and 2. It cannot be arrested or served with process in the District of Indiana, where it resides, for trial in the District of Michigan, where the suit is brought, and the trial is to be had. Judiciary Act of 178.9, § 11. The courts of the United States have, always been disposed to get rid of an objection for the non-rejoinder of a party who was beyond the jurisdiction of the court, or whose joinder would oust the court of jurisdiction. And the case is now fully provided for by Congress, and the rules of the court. Act of February 28, 1839. Sect. 1. “ That where, in any suit at law or in equity, commenced in any court of the United States, there shall be several defendants, anyone or more of whom shall not be inhabitants of, or found within, the district where the suit is brought, or shall not voluntarily appear thereto, it shall be lawful for the court to entertain jurisdiction, and proceed to the trial and adjudication of such suit, between the parties who may be properly before it; but the judgment or decree rendered1 therein shall not conclude or preclude other parties not regularly served with process, or not voluntarily appear-W to answer; and the non-joinder of parties who are not inhabitants, or found within the district, shall constitute no matter of abatement or other objection to said suit.” Rules of Practice for the Court of Equity of the United States, adopted January Term, 1842. fp U person, other than those named as de- nari,an shall appear to be necessary or proper nnf 168 ^bereto, the bill shall aver the reason why they are ma e parties, by showing them to be without the juris- 249 235 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. diction of the court, or that they cannot be joined without ousting; the jurisdiction of the court as to the other parties.” 1 How., 48. sieoonn *The proper averment has been made in the bill, by J showing that the New Albany and Salem Company is without the jurisdiction of the court, and cannot be joined without ousting the jurisdiction of the court. Ketchum v. Farmers Loan and Trust Company, 4 McLean, 1; Culbertson v. Wabash Navigation Company, Id., 544. Rule 47. Union Bank of Louisiana v. Stafford, 12 How., 327, 341-3; New Orleans Canal and Banking Company n. Stafford, Id., 343, 346; McCoy v. Rhodes, 11 Id., 131, 141. The counsel for the appellees made the following points: As to want of jurisdiction from locality—The Circuit Court in Michigan had no jurisdiction in the case. Whether the defendants act under the authority of law or not, the alleged cause of complaint is- local, and the bill can only be maintained in Indiana. 6 Cranch, 158; Chit. Pl., 268; 1 Atk., 544; 3 Ves., 183 ; 10 Ves., 164; 3 Atk., 589 ; 1 Sumn., 504; 1 Har. & J. (Md.), 223; 1 Ves. Sr., 446; 1 Bibb (Ky.), 409. As to the want of proper parties—The defendants contend that the case cannot go on, even to a hearing, without the presence of the New Albany and Salem Railroad Company. The injustice of hearing and deciding the case without giving that company an opportunity to be heard, is manifest, and most clearly so. It claims the right and authority to construct a railroad from New Albany to the Illinois line, making Michigan City, at the head of Lake Michigan, the termination of the Michigan Central Road, a point, and to mortgage the whole or any part of the road constructed, or proposed to be constructed, to obtain money wherewith to build. It has entered into an agreement with the Michigan Central Company to advance money enough to construct, and to construct, as the agent of that company, that part of the road west of Michigan City, and to take in addition thereto $500,000 of stock, which said money is to be expended, one fifth south and four fifth north of Lafayette and south of Michigan City, and for the punctual payment of the subscriptions of stock it holds as absolute security all the road from Michigan City, to the Illinois line complete and running; with the right to declare forfeited and hull all the rights of the Michigan Central Company, in case of its default in paying its subscriptions of stock. It has mortgaged its entire line of road from New Albany to Michigan City, and upon the credit thereof, has obtained loans to large amounts, which are rapidly completing 250 DECEMBER TERM, 1853. 236 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. the road, through its entire distance. It is still in the money market to dispose of about a million and a half of unsold mortgage bonds to complete entirely the work, the most important, by far, in the State of Indiana. The *far-mer, merchant, and mechanic, from one end of the *-State to the other, are its stockholders. Now, upon all these vast interests, the decree of this court, if it can make one against these defendants, must act directly. It is the charter of the New Albany and Salem Company which is in controversy. The powers claimed by it will be struck out of existence. Its arrangements with the Michigan Company will be declared null and void. Its road west of Michigan City will be struck out of legal existence. Its security for $500,000 of stock destroyed. Its road south of Michigan City towards Lafayette complete more than half, and nearly complete the whole distance, blotted out. Its credit in the money market, its stock and its bonds sold, will be ruined, and all this in a suit where that company cannot be heard. Is this possible in a court of equity? And yet this suit cannot go on, and the complainants succeed,-without all these disastrous results. They are the direct results of the decree sought, and of the allegations in the bill; and the rights of the New Albany and Salem Company are all the rights in controversy, the Michigan Central Company claim none of themselves, and exercise none except as the New Albany and Salem Company are empowered to grant them. That the welfare, nay, the fate, of the New Albany Company, of its stocks, bonds, its entire interests, depends upon this question, there can be no doubt. Can this case go on without making that company a party? Shall a decision be had which may destroy it, when, if here, it might make a showing and a defence which the present defendants know nothing of? There needs nothing to show the injustice of thus acting. “ But the rule of law here runs with equity and justice. All persons interested, either legally or beneficially, in the subjectmatter of the suit are to be made parties to it, either as plain-v defendants, so that a complete decree shall be made, w ich shall bind them all. By this means the court will make a complete decree to prevent future litigation, and to make it per ectly certain that no injustice is done either to the parties e ore it or to others who are interested in the subject-matter y ecree, which might otherwise be grounded upon a partial conW<-°+t^ °*the real merits. When all parties are before the r he whole case may be seen, but it may not where all 251 237 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. the conflicting interests are not brought out by the pleadings by the parties thereto. Story, Pl., p. 74, §§72 and 75. “ If the proper parties are not made to a bill, even though there be a decree, yet it will bind none but the parties to a suit, so that all the evils of fruitless or inadequate litigation may be visited upon the successful party to the original suit, *2381 by leaving *his title still open to future question and -* controversy.” Story, § 75. Here the New Albany Company would not be bound. It would, in its own courts, seek to enforce its rights under the contracts with the defendants. The State courts would not be bound even by a decree of this court construing the statutes of the State, and this court might be compelled to reverse its own decisions on such a question. What would be the position of the two companies in such a case? This question is fully discussed also in the following cases: Platt and Oliver, 2 McLean, 305; 4 Pet., 202. We were aware that there are exceptions to this rule, but they are all cases where complete justice can be done between the parties before the court, without prejudice to the rights and interests of parties not before it. Story, Pl., §§ 77, 81, 83, 89, 94, 96, 154, 191, 192, 193. Agents are not proper parties to a bill, because they have no interest in the subject-matter. There is one instance, however, and that is where a discovery may be sought from a corporation in which officers may be joined, though Judge Story evidently did not think this exception founded upon principle. Story, PL, 204, § 235. We are not unaware of the remarks which fell from Mr. Justice Baldwin, in the case Bonaparte v. The Camden and Amboy Railroad Company. He there seems to think that because an agent can be sued for a trespass, he can be impleaded in the Court of Chancery, and the principles upon which the two courts act in allowing suits against agents are the same, and he reasons from cases at law to cases in equity. There may be no doubt that an agent may be, in a multitude of cases, sued at law, when the rights of his principal could not be determined and settled in a suit in equity against him alone. The case of Osborne against the United States bears no analogy to this. There was in that case no possibility that the decree of the court could operate injuriously to any other parties; and in the case of Bonaparte, the railroad company was made a party, and could be heard. That case also differs from this in many respects. There were no such relations there subsisting between the railroa company and its agents, as subsist between the defendants an 252 DECEMBER TERM, 1853. 238 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. the New Albany and Salem Company. The decree for an injunction would not cut through such vast interests, and work such wide, sweeping destruction to manifold interests as would an adverse decree in this case. That case differs from this also in this : that was a bill to enjoin against committing a trespass which would be the cause of an irreparable injury, and immediate and decisive action was neces- r^pon sary to avert the ruin. Here is no such thing. Here *-the bill is merely to test the legal right, which in truth should be tried in an action of ejectment. It is not to prevent a trespass, but to procure a decision whether the New Albany and Salem Railroad Company have the legal right to maintain a railroad where it has constructed and laid it down, and is now operating it. It sufficiently appears from the bill that the road had been constructed before the bill was filed. It had, in fact, been constructed for some months, and passenger trains had been run over it for a long period of time. The controversy is, then, not to prevent an irreparable trespass, but to dispute the right of the New Albany and Salem Company to maintain its road where it has long been built and in operation, and was so before the road of the complainants was built; to dispute its right to mortgage it to the defendants, and to procure a decree that its asserted rights are null and void, and securities held by it and mortgages made by it are all null and void; and to enjoin against the maintaining and using its road; and all this without giving it a chance to be heard. It would seem as if there could be no need of argument in such a case in a court of equity. . It is no answer to these questions to say that the jurisdiction of this court will be ousted if the New Albany and Salem Company is made a party. The court cannot go on and do justice unless that company is a party, and that is always a reason why the suit should be dismissed. 3 Sumn., 426; 3 Russ. & M., 83; 2 Mason, 181; 3 Swanst., 140-5. rhe act of Congress of 1839 cannot aid the complainants in this case. That act did not intend to overthrow the fundamental principles upon which a court of chancery acts, and determine the rights of one party in a suit against another. That act simply provides that the court shall go on with the suit against the party who shall appear; but the decree shall not affect the rights of the party who does not appear; that is that the court shall exercise its jurisdiction where it may do so without prejudice to the rights of parties in interest who o not appear, or have not been made parties. Act of Feb. 28,1839, § 1. This does not at all change the principles which are fanda-253 239 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. mental with courts of equity upon questions of jurisdiction. See 14 Pet., 66. In order to change the universal rule of the court, and alter its practice in fundamental points, the act of Congress should be express, and its intention to do so expressed with irresistible clearness and force. 1 Peters, Cond. Rep., 425. *0401 *Mr. Justice McLEAN delivered the opinion of the -I court. This is an appeal in chancery, from the Circuit Court of the District of Michigan. The Northern Indiana Railroad Company, and the Board of Commissioners for the Western Division of the Buffalo and Mississippi Railroad, corporations created by, and doing business in, the State of Indiana, filed their bill in the Circuit Court, stating that an act of the legislature of Indiana, dated February 6th, 1835, incorporated the Buffalo and Mississippi Railroad Company. That by a subsequent act of the legislature, of February 6th, 1837, the name of the corporation was changed to that of the “Northern Indiana Railroad Company ”; that by an act of the 8th of February, 1848, the “Board of Commissioners for the Western Division of the Buffalo and Mississippi Railroad,” were incorporated. That several acts of the legislature of Indiana were passed, confirming, amending, and enlarging the charters and franchises of the same corporations; that by virtue of said laws the complainants are severally entitled to do and perform business in the State of Indiana, as authorized by their said charters. That the Northern Indiana Railroad Company, after being duly organized, examined, surveyed, marked, and located the route of their railroad, and by the means specified in the aforesaid acts, procured the right of way for said railroad, as the same has been constructed, and become seized in fee of the right to the lands acquired for that purpose, with all the privileges and franchises in relation thereto, confirmed and declared by the said acts ; and that the route of that part of the western division of said railroad, lying between Michigan City, in the county of Laporte, and the western line of the State of Indiana, was duly surveyed and located, and the right of way duly acquired. That a part included in said location consists of a strip of ground eighty feet in width, extending from Michigan City to the west line of the State of Indiana, and that the railroad has been constructed and is in operation, from Elkhart to Laporte, and from Michigan City to the west line of the State of Indiana. 254 DECEMBER TERM, 1853. 240 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. And the complainants say that they have purchased, and now own in fee-simplei certain other lands situated on or near the line of said railroad, which is deemed necessary for the business and purposes of said railroad. And they aver that they commenced their road within the time required, and have prosecuted the same, as by the several acts above referred to, they were required to do. That among the rights and privileges under their charters, is the sole and exclusive right and privilege of building, maintaining, and using a railroad along *the general route of the road. And they insist that no charter can be lawfully granted to L any other company to construct any other road or roads, in the vicinity of said railroad, which would materially interfere, injuriously, with the profits of said road, without the consent of the complainants, which has not been given. That the legislature of Indiana has no power to establish such a road, there being no such power reserved in the original charter. And the .complainants allege the Michigan Central Railroad, a corporation created by, and doing business in, the State of Michigan, were incorporated for the purpose of constructing and using a railroad from Detroit, in th§ State of Michigan, to some point in the same State upon Lake Michigan, accessible to steamboats navigating said lake; and with authority to extend their road to the southern boundary of the State of Michigan ; that said company have constructed and now keep in use, a railroad from Detroit to New Buffalo, and thence to the southern line of the State of Michigan in the direction towards Michigan City, in the State of Indiana; and that by an arrangement with the Commissioners of the Western Division of the Buffalo and Mississippi Railroad Company, the road has been extended and is now in use to Michigan City. And the complainants further allege, that the New Albany and Salem Railroad Company is a corporation created by and under certain acts of the legislature of the State of Indiana, and, doing business therein, has no power or franchise to construct, or to authorize the construction, of any railroad whatsoever, except what is contained in certain statutes re-erred to in the bill. That said company, and the defendants, the Michigan Central Railroad Company, on or about e 24th of April, 1851, entered into a contract with each ° contract is in the possession of the defendants, an ,a discovery of the same is prayed, and that it may be produced. That by color of said contract the defendants aim the right to construct and use a railroad from Michi- 255 241 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. gan City to the western line of the State of Indiana, by a route nearly parallel with the complainants’ railroad, and in its immediate vicinity, and several times crossing the same; and also the right and power to locate, construct, and use such railroad, over and across the complainants’ road, with the exclusive franchises and privileges aforesaid, as they, the defendants, shall see fit. That the defendants have so laid out the route of their road from Michigan City to the western line of the State of Indiana, as to cross the complainants’ railroad upon lands, the title of which was acquired by, and is now held by the complainants, and upon which their railroad has been con-*9491 structed, with the *purpose and intent of obstructing ^4*JJ and unlawfully interfering with the possession, occupancy, and use of the complainants’ lands, and with the intent to hinder and molest them, in the enjoyment and use of the rights and franchises granted to them by the legislative acts stated, and to defeat the exclusive right to have and use a railroad within that vicinity. And after stating many other facts having a bearing upon the New Albany and Salem Railroad Company; and, as they allege, conducing to show a want of right in that company to extend their road to Michigan City, and from thence to the western line of the State of Indiana, near to and parallel with the complainants’ road, as above stated, they pray that the defendants may be enjoined: from the construction of their road, &c. The defendants filed a general demurrer to the bill, and a decree was entered in the Circuit Court, sustaining the demurrer and dismissing the bill. At the threshold of this case, the question of jurisdiction arises. It is not controverted, that the road of the defendants, against which the injunction is prayed, has been constructed, not only from Michigan City to the Western line of the State of Indiana, but to Chicago, in the State of Illinois. The demurrer admits the facts charged in the bill, and they are also established in part by surveys of both roads. The jurisdiction of the Circuit Court of the United States is limited to controversies between citizens of different States, except in certain cases, and to the district in which it sits. In this case we shall consider the question of jurisdiction in regard to the district only. In all cases of contrac , suit may be brought in the Circuit Court where the defcii ' ant may be found. If sued out of the district in which he lives, under the decisions he may object, but this is a privi lege which he may waive. Wherever the jurisdiction ot e 256 DECEMBER TERM, 1853. 242 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. person will enable the Circuit Court to give effect to its judgment or decree, jurisdiction may be exercised. But wherever the subject-matter in controversy is local, and lies beyond the limit of the district, no jurisdiction attaches to the Circuit Court, sitting within it. An action of ejectment cannot be maintained in the district of Michigan, for land in any other district. Nor can an action of trespass quare clausum fregit be prosecuted, where the act complained of was not done in the district. Both of these actions are local in their character, and must be prosecuted, where the process of the court can reach the locus in quo. The complainants allege that the defendants have built a railroad, crossing their road several times; have entered upon their grounds, and, by building a parallel road so near as to carry the *same line of passengers and freight, their franchise has been impaired. That they have an L exclusive right to run a railroad on the route stated, and that they have been seriously injured by the defendants’ road. This remedy by injunction is given to prevent a wrong, for which an action at law can give no adequate redress. In its nature it is preventive justice. Where the wrong has been inflicted before an injunction was applied for, it may be a matter of doubt, in most cases, whether an action at law would not be, at first, the appropriate remedy. But whether the re-lef sought be at law or in chancery, the question of jurisdiction equally applies. In his Conflict of Laws, Mr. Justice Story says, (sec. 463,) not only real but mixed actions, such as trespass upon real property, are properly referable to the forum rei sitce. Skinner v. East India Company, Law Rep., 168; Poulson v. Mat- 4 T. R., 503; Watts v. Kinney, 6 Hill (N. Y.), 82. ut he says a court of chancery, “having authority to act in personam, will act indirectly, and under qualifications, upon real estate situate in a foreign country by reason of this au-lority over the person, and it will compel him to give effect • ° its decree, by a conveyance, release, or otherwise, respectug such property.” Foster v. Vassal!, 3 Atk., 589; 1 Eq. as. Abr., 133 ; Penn v. Lord Baltimore, 1 Ves., 444 ; Lord v’ Johnson, 3 Ves., 182, 183; White v. Hall, 12 v es., <523 ; Lord Portarlington v. Soulby, 3 Myl. & K., 104 ; Chw" 7* $ Cranch, 148, 160. In this last case the (citpd \ us^ce says, “ Upon the authority of these cases, well a an<* °* °^iers which are to be found in the books, as in a pIUp°?/eneral Principles, this court is of opinion that, ynT e *raud of trust, or of contract, the jurisdiction of U1‘. xv.—17 257 243 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. a court of chancery is sustainable wherever the person be found, although lands not within the jurisdiction of that court may be affected by the decree.” In another part of the opinion he says, “Was this, therefore, to be considered as involving a naked question of title ; was it, for example, a contest between Watts and Powell, the jurisdiction of the Circuit Court of Kentucky would not be sustained.” If the court had acquired jurisdiction of the person by his being within the State, they will compel him, by attachment, to do his duty under his contract or trust, and enforce the decree in rem, by his executing and conveying or otherwise, as justice may require, in respect to lands abroad. White v. White, 7 Gill & J. (Md.), 208 ; Vaughan v. Barclay, 6 Whart. (Pa.), 392; Watkins v. Holman, 16 Pet., 25. The controversy before us does not arise out of a contract, nor is it connected with a trust expressed or implied. An exclusive right is claimed by the complainants, under their *044-1 charters, *and the legislative acts of Indiana connected J therewith, to construct and use a railroad, as they have done, from the city of Michigan to the western line of the State. And they complain that the defendants have unlawfully entered upon their grounds, constructed a road crossing the complainants’ road several times, and materially injuring it, by constructing a road parallel to it. Relief is prayed for an injury threatened or done to their real estate in Indiana, and to their franchise, which is inseparably connected with the realty in that State. In the investigation of this case, rights to real estate must be examined, which have been acquired by purchase, or by a summary proceeding under the laws of Indiana. This applies, especially, to the ground on which the complainants road is constructed, and to other lands which have been obtained, for the erection of facilities connected with their road. And, in addition to this, the chartered rights claimed by the defendants, and the right asserted by them to construct their road as they have done, crossing the complainants’ road and running parallel to it, must also be investigated. Locality is connected with every claim set up by the complainants, and with every wrong charged against the defendants. In the course of such an investigation, it may be necessary to direct an issue to try the title of the parties, or to assess the damages complained of in the bill. , It will readily be admitted that no action at law could be sustained in the district of Michigan, on such ground, for injuries done in Indiana. No action of ejectment, or for trespass on real property, could have a more decidedly 258 DECEMBER TERM, 1853. 244 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. local character than the appropriate remedy for the injuries complained of. And is this character changed by a bill in chancery? By such a procedure, we acquire jurisdiction of the defendants, but the subject-matter being local, it cannot be reached by a chancery jurisdiction, exercised in the State of Michigan. A State court of Michigan, having chancery powers, may take the same jurisdiction, in relation to this matter, which belongs to the Circuit Court of the United States, sitting in the district of Michigan. And it is supposed that no court in that State, could assume such a jurisdiction. But there remains another ground of objection to the jurisdiction in this case. The New Albany and Salem Railroad Company is not made a party to this suit. As an excuse for this omission, it is alleged, in the bill, that this company being a corporation by the laws of the State of Indiana, of the same State as the complainants, it cannot be made a party without ousting the jurisdiction of the court. This is true; and if the relief prayed for by the complainants can be given without impairing the rights of this company, under the act of 1839, the jurisdiction may be exercised. *The complainants contend that this company is not a necessary party, and that no decree is asked against *• it. The right claimed by defendants to construct their road as stated in the bill, was derived solely from the New Albany and Salem Company. The contract under which this claim is made, is referred to in the bill, and is, consequently, a part of it. It is stated in the contract that this company, “ both for the public good and their own interest, deemed it important to extend its road to Michigan City, and thence westward by the State line of Illinois, &c.” And it is also stated that the Michigan Central Railroad Company were willing to subscribe Aik^Ve hundred thousand dollars of the stock of the New Albany and Salem Railroad Company upon certain conditions, as well as to build the entire line of railroad from Michigan ity to the Illinois State line, provided they can have the use and control of the same, until the costs of the same shall be reimbursed to it, &c. The payment of the stock to the New any road, as one of the conditions, was to be made by ins a ments stipulated, a large part of which are yet unpaid. n o reimburse the Michigan Company a million of dollars ere assumed as the cost of the road, from Michigan City to witlT^S+eri1 Skde, which sum, if paid in forty years, $ve Per Cen^. per annum, the railroad to be ructed by the Michigan Company, with all its equip- 259 245 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. ments, shall become the property of the New Salem Company, and the mortgage or pledge of contract shall cease. In the argument it was contended by the complainants, that under no act or acts of the Indiana legislature have the New Albany and Salem Company a right to construct a railroad further north than Crawfordsville. That certain words used in the act of February 11th, 1848, giving the company power to “extend their road to any other point or points than those indicated by the location heretofore made by the authority of the State,” were, necessarily limited to the points named in the previous acts, New Albany, Salem, and Crawfordsville. And that in extending the road from Crawfordsville north to Michigan City, and thence west parallel with the complainants’ road to the western line of the State of Indiana, it was located without any legal authority. From the above it appears that the validity of the New Albany and Salem charter is involved in this case, for between two and three hundred miles, from Crawfordsville to Michigan City, and thence to the western line of the State of Indiana. The construction of that road has been nearly, if not entirely completed, at an expenditure of between two and three millions of dollars. And in addition to this, it appears from the *9-WI *cont;ract made between this company and the Michi- J gan company that, as one of the conditions of the contract, the latter company subscribed in stock to the New Albany and Salem road, half a million of dollars, a part of which sum only has been paid. Now, if this court, in giving the relief prayed for by the complainants, should find it necessary to declare that the above charter gave no authority to the New Albany Company to locate and construct their road north of Crawfordsville, it would be ruinous to that company. And it is clear, that any decision which shall declare the road from Michigan City to the western line of the State of Indiana, without the protection of law, must equally apply to the road from Michigan City to Crawfordsville, as they were located and built under tne same authority. This question is, therefore, vitally interesting to the New Albany Company ; and by the bill we are called to decide that question, although that company is not made a party to the suit. It is impossible to grant the relief prayed, without deeply affecting the New Albany Com-pany. If their charter should be held good, as claimed by that company, an injunction against the defendants would materially injure the New Albany Company, as it would no only impair the contract made with the defendants, in regar to the road from Michigan City westward to the State line, 260 DECEMBER TERM, 1853. 246 Northern Indiana Kailroad Co. v. Michigan Central Railroad Co. but it would, probably, release the defendants from a subscription of half a million to the stock of the Crawfordsville road, or at least from the payment of the part of that subscription which has not been paid. The act of 1839 provides, that “ where, in any suit at law or in equity commenced in any court of the United States, there shall be several defendants, any one or more of whom shall not be inhabitants of, or found within the district, jurisdiction may be entertained, but the judgment or decree shall not conclude or preclude other parties. And the non-joinder of parties who are not inhabitants, or found within the district, shall constitute no matter of abatement, or other objection to said suit.” The provision of this act is positive, and in ordinary cases no difficulty could arise in giving effect to it; but in a case like the present, where a court cannot but see that the interest of the New Albany Company must be vitally affected, if the relief prayed by the complainants be given, the court must refuse to exercise jurisdiction in the case, or become the instrument of injustice. In such an alternative we are bound to say, that this case is not within the statute. On both the grounds above stated we think that the Circuit Court has no jurisdiction. The judgment of that court, in dismissing the bill, is therefore affirmed. *Mr. Justice CATRON and Mr. Justice CAMP- [-*947 BELL delivered separate opinions. Mr. justice *- 24 DANIEL dissented. Mr. Justice CATRON. The Northern Indiana Railroad Company and the Railroad Commissioners for the Western Division of the Buffalo and Mississippi Railroad Company, filed their bill against the Michigan Central Railroad Company, in the Circuit Court of the United States in the District of Michigan, seeking an injunction against the defendant to prevent the Michigan company from laying down and using a railroad around the southern end of Lake Michigan, and within the State of In-lana; which road crosses the road of the complainants, and runs near to, and parallel with it, and, as the complainants a ege, will materially withdraw their profits. And the com-p ainants insist that they have a monopoly by their charter to cons ruct the only road near to and around the southern end • and that the defendant has violated the chartered %b the complainants. e bill was demurred to, and the demurrer was sustained 261 247 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. by the Circuit Court. The first cause of demurrer set forth is, that the complainants have not, by their bill, made such case as entitles them to any discovery or relief against the defendant as to the matters contained in the bill, or any of them ; and the judgment of the court is prayed whether the defendant shall be compelled to make further answer; and, on this state of pleadings, the question standing in advance of all others is, whether the Circuit Court had jurisdiction to entertain the bill, as between these parties, independent of the merits of the case set forth. The bill alleges that the Northern Indiana Railroad Company, and the Commissioners of the Buffalo company were, severally, corporations created by the State of Indiana, and were doing business in said State according to their charters ; “ and are, in meaning and contemplation of the Constitution and laws of the United States, citizens of the State of Indiana, and entitled to be deemed and taken as such citizens for all the purposes of suing and being sued, and for the purposes of this bill of complaint.” A corporation is composed of many individual members, having a joint interest, and a joint right to sue in their corporate name ; and the consideration here presented is, whether a State law, creating the corporation, makes such corporation, “ a citizen,” according to the Constitution, regardless of the fact where its members reside. If the corporation be such citizen, then every member of the corporate body might reside in Michigan, and yet have the right to sue citizens of Michigan there in the United States court. *2481 *The Constitution gives jurisdiction to the courts of -1 the Union, “between citizens of different States. Now, if it be true, that corporations—such as for making roads, &c.—be citizens in the established sense of the Constitution, it must have been thus settled in the case of the Louisville Railroad Company n. Letson, 2 How., 497 ; as, previous to that decision (made in 1844) this court did not suppose that a corporation was a citizen. Nor was any such question presented in Letsoris ease; far from it. Letson sued the railroad company in covenant, by their corporate name, distinctly averring that the members of the company were citizens of South Carolina, and that the plaintiff was a citizen of New York. , The defendant pleaded in abatement, that Rutherford an Baring, two of the stockholders, were citizens of North Carolina ; and that the State of South Carolina was also a stoca-holder. To this plea there was a demurrer, which was sustained in the Circuit Court and in this court. 262 DECEMBER TERM, 1853. 248 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. It was held, 1. That the State could not object, as she stood on the foot of every other individual stockholder, and need not be sued; and, 2. That fugitive stockholders, who were changing every day, and quite too numerous to be included in a suit, need not be made parties of record. This, from the report of the case, seems to have been the unanimous opinion of the members of this court, who were present at the time; certainly it was my opinion. The president and directors of the railroad company were alleged to be, and admitted to be by their plea, citizens of South Carolina; they represented the stockholders, and were their trustees, and whose acts were binding on the stockholders. This state of parties conformed to the act of Congress of 1839, and the spirit of the 47th, 48th, 49th, and 50th rules for the government of chancery practice in the federal courts, adopted in 1842. It is now assumed, that Letton’s case overruled the decision in Strawbridge v. Curtis, 3 Cranch, 276. That decision undoubtedly proceeded on the true rule. There were various complainants to a bill in equity; and the bill alleged that some of the complainants were citizens of Massachusetts, where the suit was brought; and that the defendants were also citizens of Massachusetts, except Curtis, who was stated to be of Vermont, and a subpoena was served on him in that State. There, it was held, “ that each distinct interest should be represented by persons, all of whom are entitled to sue, or may be sued, in the federal courts.” A bill thus framed could not at this day be treated seriously. *The next case supposed to be in conflict with Letson s case is that of the United States Bank v. *-Devereux, 5 Cranch, 61. The old Bank of the United States sued Devereux and Robertson, in the Circuit Court of Georgia, alleging that it was a corporation established under an act of Congress of 1791; and alleging, further, that the petitioners, the President, Directors, and Company of the Bank of the United States, were' citizens of the State of Pennsylvania; and that Devereux and Robertson, the deendants, were citizens of Georgia; and this averment was held sufficient by the court. p-??1 -C-etson’s case overruled that of the R. R. Bank of icksburg v. Slocum and others, is true; and it was justly overruled, as I think. Slocum, Richards, & Company sued e, alleging that they were citizens of Louisiana, and a ne President, Directors, and Company of the Bank ere citizens of Mississippi. The Bank pleaded in abatement, 263 249 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. that Lambeth and Thompson, two of the stockholders, were citizens of Louisiana. And this court sustained that plea; whereas, according to Letsoris case, it was quite immaterial where the stockholders resided, so that the president and directors were citizens of the State where the suit was brought. What a corporation is, was very fully discussed in Devereux s case (5 Cranch) ; nor will I discuss it further here, as I do not feel called on to prove, to the legal profession of this country, that a corporation is not a citizen. And as no averment is made in the bill before us, that the president and directors of the corporations suing, are citizens of different States from the president and directors of the corporation sued, I think the demurrer ought to be sustained, and the court below instructed to dismiss the bill. I view this assumption of citizenship for a corporation as a mere evasion of the limits prescribed to the United States courts by the Constitution. The profitable corporations are owned in a great degree in the cities ; there the president and directors often reside; whilst the charter was granted in another State, and there the owners keep an agency, the business being in fact conducted in the city. Now these owners and directors may sue their next neighbors of their own State and city, in the United States courts, according to the rule that the corporation is a citizen of the State where it was created, and that jurisdiction depends on this sole fact. Could I consent to pronounce from this bench an opinion deemed by myself extrajudicial, and, therefore, without authority, I might attempt an argument to expose the irregularity and. impotence of an adjudication confined, by law, within *prescribed geographical limits, with respect to J subjects purely local, whenever it should be attempted to extend the operation of such adjudication beyond the locus to which the law has allotted it. For of this character has been the action of the Circuit Court upon the controversy of these two corporations now before us. The Northern Indiana Railroad Company, incorporated by the State of Indiana, have complained of an invasion of their local rights, a tort to real property situated within the territory of Indiana, by a company incorporated by, and situated within, the State oi Michigan ; and the Circuit Court for the State of Michigan, limited in its cognizance of local matters to the territory of that State, has undertaken to adjudicate upon t e merits of this complaint. But irregular and futile as is e action of the Circuit Court of Michigan, and as it is by a 264 DECEMBER TERM, 1853. 250 Northern Indiana Railroad Co. v. Michigan Central Railroad Co. here admitted to have been, can it have been more irregular than is the undertaking, on the part of this tribunal, to pronounce authoritatively upon the character of the acts, or the relative rights and powers of the parties, over which the Circuit Court of Michigan has claimed cognizance? Is not the warrant for cognizance by the Circuit Court and by this tribunal essentially, nay, precisely, the same ? Are they not both to be found, if existing at all, in the Constitution of the United States? And is it not indispensable that such cognizance should be regularly and certainly vested in the Circuit Court, before this court can sanction its validity? If it be asked, by what provision of the Constitution the Circuit Court could assume jurisdiction of the present controversy, it must, of necessity, be referred to that (2d sec., 3d Art.) provision which extends the judicial power to controversies between citizens of different States. This, indeed, is admitted; and the admission carries with it inevitably the implication that a corporation can and must, for certain purposes, become a citizen, and must, ex necessitate, possess the attributes of citizenship in order to obtain access to a court of the United States. Having, on a former occasion, (vide the case of Rundle et al. v. The Delaware and Raritan Canal Company, 14 How., 95,) endeavored to expose the incongruities involved in, and incident to, this anomalous conception, I will not now attempt a further enumeration of them beyond this obvious remark,—that citizenship and corporate existence created by State authority, being decreed by this court to be, to some extent at least, identical, as "must be the case to authorize this court to call the parties before them, it must follow that, to the same extent, a corporation can be a citizen, and a citizen can become a corporation. The process by which the latter transformation may be accomplished has not yet been pointed out. We are told, *by the English jurists, and by the decisions of the English courts, and *- " so, too, in the case of the Bank of the United States v. Devereux, it is laid down by Marshall, C. J., that a corporation is an invisible, intangible, artificial creature. In one sense, at least, the citizen may render himself invisible and intangi-he may abscond. In what signification he must become ai ihcial, amongst the infinite varieties which may be imagined, wi 1 present a question more difficult to be determined. But m le possession of a portion even of his corporate attributes, IZeZ1 may be deemed a quasi corporation, when it shall oe thought convenient; and will, doubtless, in that chrysalis / 10P-’ *urnish as just a representation of the integral ga entity, as the latter, in the shape of quasi citizen, can 265 251 SUPREME COURT. Northern Indiana Railroad Co. v. Michigan Central Railroad Co. ever supply of the real, material, and social being with whom it is sought to identify it. Powerless and vain as probably ever will be the “ still small voice ” of an humble individual, in opposition to the united declaration of those justly considered the learned and the wise, still, under the most solemn conviction of duty, the effort can never be forborne to raise that humble voice in accents of alarm at whatever is believed to threaten even the sacred bark in which the safety both of the States and of the United Statesis freighted. I hold that,beyond the Constitution of the United States, there is no federal government, either in the mass or in the detail. That beyond the pale and limits prescribed by that instrument, to be interpreted, not by indirect or ingenious or forced constructions, or by remote implications, but by the plain and common-sense import of its language, a language familiar to the common and general understanding, all is unwarranted assumption and wrong—a termination of all legitimate federal power. Whilst therefore I profess, as I really feel, my belief in the wisdom and purity of those who think themselves justified in what I regard as an infringement upon the terms and objects of our only charter, I am constrained to record my solemn protest against their doctrine and their act. On these grounds I dissent from the opinion just pronounced, and think that this cause should have been remanded to the Circuit Court, with directions to dismiss it, as one over which the courts of the United States can have no jurisdiction with respect to the parties. Mr. Justice CAMPBELL. I concur fully in the opinion of the court denying jurisdiction to the Circuit Court to entertain this bill. The objection made in the opinion to the exercise of jurisdiction, and which is fairly presented by the record, is sufficient to dispose * of the case. The *court has declined to determine any ‘J-* question upon the averments of the bill, in regard to the citizenship of the parties. The question is left exactly where it was when this case was presented. I state these facts, that no inference may be drawn to the contrary, and that the decision of the court may not be misunderstood. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Michigan, and was argued by counsel. On con-266 DECEMBER TERM, 185 3. 252 Corning et al. v. Burden. sideration whereof, it is the opinion of this court, that the Circuit Court had no jurisdiction of the case, and on that ground the bill was properly dismissed; there was, therefore, no error in the decree of said court. Whereupon it is now here ordered, adjudged, and decreed, by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs. Erastus Corning and John F. Winslow, Plaintiffs in Error, v. Peter A. Burden. In a suit brought for an infringement of a patent-right, the defendant ought to he allowed to give in evidence the patent under which he claims, although junior to the plaintiff’s patent. Burden’s patent for “ a new and useful machine for rolling puddler’s balls and other masses of iron, in the manufacture of iron,” was a patent for a machine, and not a process, although the language of the claim was equivocal. The difference explained between a process and a machine.1 Hence, it was erroneous for the Circuit Court to exclude evidence offered to show that the practical manner of giving effect to the principle embodied in the machine of the defendants was different from that of Burden, the plaintiff ; that the machine of the defendants produced a different mechanical result from the other; and that the mechanical structure and mechanical action of the two machines were different.2 Evidence offered as to the opinion of the witness upon the construction of the patent, whether it was for a process or a machine, was properly rejected.3 “ A machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. The principal of a machine is properly defined to be ‘ its mode of operation, or that peculiar combination of devices which distinguish it from other machines. A machine is not a principal or an idea. The use of ill-defined abstract phraseology is the frequent source of error. It requires no great ingenuity to mystify a subject by the use of abstract terms of indefinite or equivocal meaning. Because the law requires a patentee to explain the mode of operation of his peculiar machine which distinguishes it from ers, it does not authorize a patent ror a mode of operation as exhibited Wsdi Burr v- 1 Wall., 531, 570. W..ii’IT?nr Rvbhef Co. v. Goodyear, 9 7 t ’ ®ee also Blanchard v. $ WaH., 425; MacRay v. d ackman, 12 Fed. Rep., 618. 3 “Experts may be examined to explain terms of art, and the state of the art, at any given time. They may explain to the court and jury the machines, models, or drawings, exhibited. They may point out the difference or identity of the mechanical devices involved in their construction. The maxim of ‘ cuique in sua arte cre-dendum ’ permits them to be examined to questions of art or science peculiar to their trade or profession; but professors or mechanics cannot be received to prove to the court or jury what is the proper legal construction of any instrument of writing. A judge may obtain information from them, if he desires it, on matters of which he does not clearly comprehend, but cannot be compelled to receive their opinions as matter of evidence.” Winans v. New York Erie R. R. Go., 21 How., 88,100. S. P. Bischoff v. Wether ed, 9 Wall., 815. 267 252 SUPREME COURT. Corning et al. t>. Burden. This case was brought up, by writ of error, from the Circuit Court of the United States for the Northern District of New York. Peter A. Burden, as assignee of Henry Burden, brought his action against Corning and Winslow, for a violation of a patent granted to Henry, as the original and first inventor and discoverer of a new and useful machine for rolling puddle balls or other masses of iron, in the manufacture of iron. What took place at the trial is set forth in the opinion of the court. Under the instructions of the Circuit Court, the *2501 jury *found a verdict for the plaintiffs, with one hun- J dred dollars damages; upon which the defendants brought the case up to this court by a writ of error. It was argued by Mr. Seymour and Mr. Keller, for the plaintiffs in error, and by Mr. Fitzgerald and Mr. Stevens, for the defendants in error. Each one of the four counsel filed a separate brief. The points presented on the part of the plaintiffs in error are taken from the brief of Mr. Seymour, and those on the part of the defendant in error from the brief of Mr. Stevens. Points and Authorities submitted on the part of the Plaintiffs in Error. First exception to the charge.—The court erred in charging the jury that “the letters-patent which have been given in evidence by the plaintiff are for a new process, mode, or method of converting puddlers’ balls into blooms by continuous pressure and rotation of the balls between converging surfaces, thereby dispensing with the hammer, alligator jaws, and rollers, accompanied by manual labor, previously in use to accomplish the same purpose; and the said letters-patent secure to the patentee the exclusive right to construct, use, and vend any machine adapted to accomplish the objects of his invention, as above specified, by the process, mode, or method above-mentioned.” I. The court erred in charging the jury that Burden s patent was for a new process, mode, or method. A process or mode may be patented. Curtis, p. 65, 66, 67, 68, 69, 70, 71, 73, and cases there cited, from § 77 to §83. 1. Burden did not patent a process, but a machine. What he designed to co^er by his patent is to be gathered 268 DECEMBER TERM, 1853. 253 Corning et al. v. Burden. from the patent itself, the specification, and its summing up. Webster on Subject-Matter, p. 18, and note Z; Davoll v. Brown, 1 Woodb. & M., 59; Russell v. Crowley et al., 1 Cromp. M. & R., 864; Moody v. Fiske, 2 Mason, 112; Rex v. Cutler, 1 Stark., 283; Leroy v. Tatham, 14 How., 156, 171; Wyeth v. Stone, 1 Story, 285; Gray v. James, Pet. C. C., 394, 400 ; Mr. Justice Nelson’s Opinion, in Appendix A, annexed. 2. Burden’s patent claims that he has invented a new and useful machine, &c., not a process. 3. The specification, which purports to be a part of the let-ters-patent, states the invention to consist in a “ machine,” not in a process. *4. The summing up of the specification, or the r*oK4 claim, is substantially for a “ machine.” L And he specifies three modes of applying the principle of his invention; thus complying with the requisition of the sixth section of the act of 1836, in reference to all patents for machines, and for machines only. The preparing of puddlers’ balls is not claimed as an invention, nor could it be, for it is as old as the art of making iron by the process of puddling. See Encyclopaedia Americana, Vol. 7, Art. Iron, p. 72. The preparing puddlers’balls by pressure is not claimed, for that, too, is old. lb. But the claim is for the invention of the new mechanism for preparing puddlers’ balls. II. An invention, such as Burden’s is described to be in the patent and specification, is, upon the authority of elementary works, and the decision of our courts, a machine, and not a process. Ihe distinction between a patent for a machine and a patent for a process is well known. 1. A patent for a machine is defined by Curtis, § 93, as follows: “If the subject of the invention or discovery is not a mere function, but a function embodied in some particular mechanism, whose mode of operation and general structure are pointed out, and which is designed to accomplish a particular purpose, function, or effect, it will be a machine in the sense of the patent law.” If the specification describes “ not a mere function, but a machine of a particular structure, whose modes of opera-are pointed out to accomplish a particular purpose or end, the patent is for a machine, and not for a principle or unction detached from machinery.” Blanchard v. Spraque, 3 Sumn., 540. or Process may be the subject of a patent. See P hillips, pp. 93, 94; Curtis, § 80, 81. 269 254 SUPREME COURT. Corning et al. v. Burden. Among the cases cited (see Curtis, § 79) of patents for a method, or, as the writer expresses it, “ for the practical application of a known thing to produce a particular effect,” are Hartley’s invention to protect buildings from fire by the application of plates of metal. See also 1 Webs. Pat. Cas., pp. 54, 55, 56; and note, pp. 55, 56. Forsyth’s patent for the application of detonating powder, which he did not invent, to the discharge of artillery, mines, &c. In this case the patentee succeeded in an action against the party using a lock of different construction from any shown in the drawing annexed to his specification, and, as Curtis says, “thus established his right to the exclusive use and application of detonating powder as priming, whatever the construction of the lock by which it was discharged.” 1 Webs. Pat. Cas., pp. 95, 97, n. *Hall’s patent for the application of the flame of -* gas to singe off the superfluous fibres of lace, and other goods, is another of this class. 1 Webs. Pat. Cas., p. 99. The plaintiff had a verdict founded on his sole right to use gas-flame for the clearing of fibres from lace. Curtis, p. 67, n, 1; 1 Webs. Pat. Cas., pp. 100, 103; Neilson v. Harford, Id., 191, &c.; Neilson v. Thompson, Id., 275; The Househill Co. v. Neilson, Id., 673; Boulton v. Bull, 2 H. Bl., 492; Clegg’s Patent, 1 Webs. Pat. Cas., 103; Morse’s Patents; McClurg v. Kingsland, 1 How., 202; Russell v. Cowley, 1 Webs. Pat. Cas., 459. 2. The preparing a puddler’s ball is reducing and compacting it by pressure into the form of a bloom. See Encyclopaedia Americana, vol. 7, article Iron, p. 72; Nicholson’s Op. Mechanic, pp. 334—5; Ure’s Die. of Arts and Manufactures, p. 703. If Burden’s claim, then, is for the reducing and compacting the ball by pressure into the form of a bloom, it is a claim for a process long before known in the manufacture of iron, and would therefore be void for want of novelty. To avoid this difficulty, the statement of the claim goes on to say that he claims the preparing these balls, by causing them to pass between curved or plane surfaces, in the manner described in his drawings and in the specification of the several parts of the machine. . . „ If the words “ the particular method of the application were correctly held in Wyeth v. Stone, before cited, to. mean the particular apparatus and machinery described in the 270 DECEMBER TERM, 1853. 255 Corning et al. v. Burden. specification, is not the claim for preparing puddlers’ balls, by causing them to pass through a certain machine, as clearly a claim for the invention of the machine ? Wyeth claimed not only the art or principle of cutting ice of a uniform size, but “ the particular method of the application of the principle ”; and this last part of the claim was held to be the only valid part of it, and to be a claim of the particular apparatus and machinery, described in the specification to effect the purpose of cutting ice. So Burden’s patent, if it be sustained at all, must be held to be a patent for the particular apparatus and machinery, described in the specification to effect the “preparing the puddlers’ balls.” See also the case of Blanchard v. Sprague, 3 Sumn., 535. It was objected, on the trial in this last case, “that the plaintiff’s specification was defective; that he claimed the functions of the machine, and not the machine itself.” Mr. Justice Story, at p.540, says: “Looking at the present specification, and construing all its terms together, I am clearly *of opinion that it is not a patent claimed for a function, but it is claimed for the machine specially *-described in the specification ; that it is not for a mere function, but for a function as embodied in a particular machine, whose mode of operation and general structure are pointed out.” If to claim a “ method ” or mode of operation in the abstract, explained in the description of certain machinery, be a claim for a machine, as was adjudged in Blanchard v. Sprague, is not the claim of preparing puddlers’ balls, by the operation of certain machinery, much more a claim of a machine ? In other words, is the claim of a particular result before known, from the operation of a machine claimed to be new, any thing else than a claim for the peculiar construction of the machine itself, by which that result is effected ? 3. Again, the result claimed by Burden is to produce a bloom from a puddle ball by pressure, welding together the particles of iron, and expressing in part the impurities, and partly shaping the mass for the after operation of converting it into bars, also by pressure. It cannot be pretended that Burden invented this, or any part of it. This was all done before his invention, under the ammer and the alligator jaws. But it may be said that he invented an improvement in this process. This cannot be; or ie only compresses the mass to cement the particles, express the impurities, and give shape; all this was done before 271 256 SUPREME COURT. Corning et al. v. Burden. by the hammer and. the jaws, and, in the opinion of many, better done than he does it. 4. Again, it may be said that he made an improvement in the operation by making it continuous. This brings the matter to a true test, and shows that it is the invention of a machine to render the operation continuous which before had been intermittent. 5. It may be claimed that he has invented or introduced the element of self-action. This establishes the defendant’s proposition that Burden’s patent is only for a machine. For the meaning of this is, as the term self-action must be predicated of material substances, that he has substituted an organization of machinery to perform automatically what was before performed partly by hand and partly by machinery. Machines for nail-cutting, making hook-head spikes, carding and spinning, weaving, felting, are self-acting machines, which have been invented to carry on known processes; all have the element of self-action, and yet all of them have been recognized as machines, and not processes. III. The plaintiff in his declaration counts upon his patent as a patent for a machine only, and not for a process. *9^71 *He f° be permitted to recover only secundum -I allegata et probata. IV. But suppose the patent be for a process, and not for a machine: then we submit that the court erred in sustaining the patent as a patent for a new process of preparing pud-dlers’ balls, by continuous pressure and rotation of the balls between converging, surfaces. 1. For this process itself is a well known and common process in the arts, and therefore could not be patented at the time of the alleged invention. The operation to which the puddler’s ball is subjected, that is, the process, produces common results necessarily arising from pressure on all soft and porous substances, to wit: condensation, expression of matter, and change of form. 2. All the experts testify that Burden’s invention consists in carrying on the old process of reducing a puddler’s ball to a bloom, by pressure created and continued by his machinery. That the machinery by which such pressure may be applied is patentable, is obvious. But aside from the peculiar construction of Burden’s machinery, there is nothing new in its application. It is merely the application of a known mode ot operation in the arts, to produce a known result, that is, mechanical pressure, to produce a bloom out of a puddler s ball. See Curtis, p. 78, § 88. 272 DECEMBER TERM, 1853. 257 Corning et al. v. Burden. That this form of applying mechanical pressure is not new, was proved by, &c., &c. Notwithstanding the condition embodied in the second proposition contained in the charge of the court, as follows: “ The machines for milling buttons, milling coin, and rolling shot, which have been given in evidence by the defendants, do not show a want of novelty in the invention of the said patentee, as already described, if the processes used in them, the purposes for which they were used, and the objects accomplished by them, were substantially different from those of the said letters-patent; ” yet taken in connection with the construction given by the court to the patent, in the first proposition contained in the charge, the defendants were deprived of the defence to which they were entitled, to wit: That the reducing puddlers’ ball to blooms, by their rotation and pressure between converging and continually approximating surfaces, was but a double use of a process or machine, long before used in milling buttons, milling coins, and rolling shot. For the court had decided, in the first proposition of the charge, that Burden’s patent was “ for a new process of converting puddlers’ balls into blooms, by continuous pressure and rotation of the ball between converging surfaces.” *In other words, that the application by the plain-tiff’s machine to the puddler’s ball, of the old method *- $ of reducing and compacting metals by the continuous pressure of converging surfaces, constituted such a novel process in the manufacture of iron, that (its utility not being questioned) the plaintiff’s patent was good, notwithstanding the* previous use of the milling machine on copper, silver, and gold, and of the shot machine on lead, in compacting and reducing those metals by the rotation of the metals and the continuous pressure of converging faces. 4. Burden’s patent is clearly a case of double use. See t'Urtis on Pat., §§ 85 to 89, and notes and cases therein cited ; "°8h v- Hague, 1 Webs. Pat. Cas., 207; Howe v. Abbott, 2 Story, 190-193. To this defence the defendants were clearly entitled. The processes of milling the coin, finishing the edges of the but-ons, making the shot or balls, and making the blooms, are strictly identical. i ’ /^?ie coui't erred in charging the jury as they did in the to ua6 proposition contained in the charge, ™ i . the said letters-patent secure to the patentee ada ex$ usrve right to construct, use, and vend any machine stipo fi6 J n ac It is true the mere question of originality in ringement generally turns on the testimony of the wit- 287 271 SUPREME COURT. Garrow et al. v. Davis et al. nesses produced on the trial; but if the plaintiff’s patent in a doubtful case may have some weight in turning the scale in his favor, it is but just that the defendant should have the same benefit from his; valeat quantum valeat. The parties should contend on an equal field, and be allowed to use the same weapons. We are of opinion, therefore, that the court erred in refusing to permit the defendants’ patent to be read to the jury. The judgment of the Circuit Court is, therefore, reversed, and a venire de novo awarded. *272] *ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Northern District of New York, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court, in this cause, be, and the same is hereby, reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to award a venire facias de novo. John Garrow, Thomas Y. How, Jr., James Seymour, and George Miller, Appellants, v. Amos Davis, George M. Pickering, William McCrillis, and Ephraim Paulk. Black, as agent for the owners, contracted to sell a large quantity of land in Maine, which contract was assigned by the vendee, until it came, through mesne assignments, into the hands of Miller and others. Payments were made from time to time on account; but at length, in consequence of a failure to make the payments stipulated in the contract, and by virtue of a clause contained in it, the contract became void. In this state of things Miller employed one Paulk to ascertain from Black the lowest price that he would take for the land, and then to sell to others for the highest price that he could get. Paulk sold and assigned the contract to Davis for $1,050. Upon the theory that Paulk and Davis entered into a fraudulent combination, still, Miller and others are not entitled to demand that a court of equi y should consider Davis as a trustee of the lands for their use. They had no interest in them, legal or equitable, nor anything but a good will, whic alone was the subject-matter of the fraud, if there was any. But the evidence shows that this good will did not exist; for Black was no willing to sell to Miller and others for a less price than to any other perso • Although Paulk represented himself to be acting for Miller and others, w e 288 DECEMBER TERM, 1853. 272 Garrow et al. v. Davis et al. in reality he was representing Davis, yet he did not obtain the land at a reduced price thereby; but, on the contrary, at its fair market value. The charges of fraud in the bill are denied in the answers, and the evidence is not sufficient to sustain the allegations.1 This was an appeal from the Circuit Court of the United States for the District of Maine, sitting as a court of equity. The appellants were complainants below, whose bill was dismissed under the circumstances stated in the opinion of the court. The cause was argued by Mr. Seward, for the appellants, and by Mr. Shepley and Mr. Rowe, for the appellees. * Complainants’ Points. [*273 Point I. The complainants, assignees of the contracts of February 17, 1835, for 28,804 acres of pine lands, had an interest in those contracts and lands, which subsisted until they were surrendered by Davis to Black, in November, 1844; and this interest was, if not a legal chose in action, at least a chose in equity of some, and even considerable value. These instruments were executory contracts for the purchase of land, of a value, variously estimated at different times, of from -$86,000 to $172,000. Point II. The complainants are proper parties, and are entitled to maintain their suit against the defendants. Point III. The defendant Paulk, while acting as agent of the complainants, in procuring possession of the contracts and the power to assign them, and in conducting the negotiations in their behalf with Colonel Black, on the one side, and with the defendants and others, as purchasers, on the other side, committed the frauds charged in the complainants bill. The allegations of the bill on this important issue are sustained. Point IV. The defendants, Davis, Pickering, and McCril-hs, by means of frauds committed by Paulk with their knowledge, had, by colluding with him in the perpetration of frauds against the complainants, acquired from Colonel lack, at the cost of the complainants, and under false representations to him that they were the assignees of the com-p amants, and that the complainants were the real benefici-fhe contracts for the 28,804 acres of pine land in Maine, vmch was of very considerable value. oint V. The defendants’ excuses and attempts to explain are unavailing. * See Collins v. Thompson, 22 How., 246; Eyre v. Potter, ante, *42. vol. xv.—19 289 273 SUPREME COURT. Garrow et al. v. Davis et al. Point VI. The complainants are entitled to a decree, according to the prayer of their bill. The account to be decreed is an account of future as well as past profits; and the defendants ought to be decreed to assign the contract of Black to the complainants upon just terms, so as to secure the defendants their advances, and to the complainants their profits. Defendants’ Points. 1. None of the parties plaintiff had any interest in or under the Black contract at the time of the alleged fraud. 2. The claim, if any, is stale, and is lost by laches of the plaintiffs. They have never refunded to Davis the money he paid; nor offered to do so. *9741 *They never offered to repay the cash payment of J $7,500; or to take up, or to indemnify Davis and Paulk against the notes given for the land; but waited till September, 1847, till the result of the operations on the township showed the speculation to be a good one ; and then they filed their bill claiming the benefit of it. No court can allow one party to hold himself prepared to take advantage of all favorable contingencies, without being affected by those which are unfavorable. Marshall, C. J., in Brashier v. Grratz, 6 Wheat., 528; 13 Ves., 238: 4 Dall., 345; 14 Pet., 170 ; Benedict v. Lynch, 1 Johns. (N. Y.) Ch., 370. 3. The plaintiffs had not the means nor the intention of purchasing the lands at such a price as they would fetch in the market. They were embarrassed in their finances, disgusted with speculations in Eastern lands, and “ in ignorance, doubt, and uncertainty, as to the real value of said lands, and the true quantity of pine timber thereon; ” their only intention being to sell the contracts. Paulk was directed to ascertain the final and lowest price that Black would take for the lands of the persons holding the contracts, for the purpose of aiding him in the sale of the contracts, and not for the purpose of enabling his principals to decide whether they would or not become purchasers of the lands. Years after, when the price had been quite or nearly repaid, by the proceeds of the timber, plaintiffs claim to be the equitable owners, without having advanced, or offered to advance, a single dollar. ' , That of which the bill charges that the defendants defrauded the plaintiffs—that is, the difference between the price a which Black would sell the lands to the plaintiffs, and t e price at which he would sell to others; or, “ so much as t le 290 DECEMBER TERM, 1853. ?74 Garrow et al. v. Davis et al. said John Black, by compromise, should agree to take less than the fair value of the lands ”—did not exist. 4. There was no fraud on the part of either of the defendants. Each denies all combination, fraud, &c., on his own part; and knowledge, or belief, of any on the part of his co-defend-ants, &c. As each stands, in relation to this question of fraud, in a position different from the others, it will be necessary to consider their position separately. Paulk was the agent of Miller alone of plaintiffs, p. 43; and of Norton. The case shows no precedent authority, or subsequent ratification, from the others. By his answer, it appears that the only instructions he had from Norton were to sell, for $1,000; and if he could not get *that, to take less, and “to. close the matter in the r*275 shortest possible time.” *- That Miller’s instructions were, to endeavor to find some one who would buy the lands, and give the holders of the bonds some portion of the lands, or of the profits (if any) of the speculation ; and, “if he could not make such an arrangement, to sell the contracts for the most he could get, as the holders had neither the intention nor the means of buying themselves.” He attempted to make such an arrangement with Pickering, and failed. Any further attempt would have been useless, as Black asked him more for the land than it would fetch in the market. He then sold the contracts for the highest sum offered. Upon these points, the answer is responsive and uncontradicted. There is no evidence that he could have got any more for the contracts ; there is no evidence that they were worth any more. The answer denies that he was bound by his instructions to ascertain Black’s lowest price before selling; and is not contradicted. He did, however, first ascertain all that was material on this point, namely, that Black would make no reduction in favor of his principals; nor sell the lands for less than the iull market value.* The answer denies all improper disclosures to the defendants. answer denies that any false statement was made to uler or Norton; and sets out the statements which were made. 291 975 SUPREME COURT. Garrow et al. v. Davis et al. There is no evidence which contradicts it, in this respect, in any material point. The agreement, that he should continue the negotiation with Black for Davis’s benefit, was not a provision for his own private benefit, but a necessary consequence of the idea of reduction in price, which he held out as inducement to Davis. The answer denies that he had any interest in the purchase from Black, and that he received any money, property, or securities from any of the defendants, for any thing done before the assignment to Davis. The payment of $1,500 was for honest and proper services rendered to Davis afterwards. The answer on this point is responsive, and not contradicted,—that he acted with fidelity to his principals, to the extent even of wronging Davis by suppressing facts which he should have disclosed to him. (Then followed an analysis of all the answers.) *Mr. Justice CURTIS delivered the opinion of the 27 O I . J court. This is an appeal from a decree of the Circuit Court of the United States, for the District of Maine, dismissing the complainants’ bill. The substance of the bill is, that John Black, as agent for the trustees under the will of William Bingham, on the 17th of February, 1835, contracted, in writing, with Charles Ramsdale to sell to him a township and adjacent tracts of land in that State, containing twenty thousand eight hundred and four acres, for the price of three dollars per acre, payable one fifth in sixty days, and the residue in four equal annual payments—the contract of sale expressly providing that, in case of failure to make either of these payments, the contract was to be void. That, on the 1st day of April, 1835, Ramsdale assigned these contracts to Nathaniel Norton and Jairus Keith, in consideration of their agreement to pay to him the sum of two dollars for each acre of the said lands; and that, at a still further advance of one dollar on an acre, the contracts of Black came to the complainants and one Herman Norton, by assignment, in November, 1835. That Ramsdale made the first, and the complainants some other payments, amounting in the whole to.about forty thousand dollars, but failed to pay the residue. That subsequen to the year 1840, nothing was done by them concerning t le lands until after July, 1844, when one of the complaman s received from Black a letter stating that, though all ei rights were terminated many years since, he desired to no whether they wished to do any thing respecting the paymen 292 DECEMBER TERM, 1853. 276 Garrow et al. v. Davis et al. for the lands. That, thereupon, Miller, one of the complainants, employed Ephraim Paulk, one of the defendants, to negotiate with Black, and finally instructed him to ascertain from Black the lowest price at which he would let the complainants have the land, and then to sell the complainants’ rights and interests under the contracts for the highest price he could obtain—the supposition of the complainants being, that Black would sell the lands to them for much less than he could obtain from others, by reason of their having already paid a large sum towards the purchase-money, under the contracts above mentioned. The bill further states, that Paulk I?ass.i^ned the contracts to Davis for the sum of $1,050; and it charges that, before doing so, he entered into a fraudulent combination with Davis and the other defendants to obtain from the complainants an assignment of these contracts for a trifling sum, and then to negotiate with Black as 1 21° ^omPlainants, and thus defraud the complainants of what Black should be willing to discount from the fair value ot the lands, on account of their peculiar equities; that he, in combination *with the other defendants, actually executed this scheme, and obtained the lands from *-Black for a much less price than could have been got from others, by reason of Black’s belief that he was abating the KT+k benefit of the complainants. And the bill prays that the defendants may be treated as trustees of the com- ’ ux.r^sPect to these lands, and for an account, and tor other relief. So far as respects the title to these lands, or any claim of e complainants to have them charged with a trust in their ^bmk the complainants, upon the statements in heir bill, and upon the proofs, have made no case. They Ria f10 or. e $°r he learns, from the return of the sheriff, J that he was in execution, and then he had the object of his suit.” Page 1. But perhaps the most carefully considered case on this whole subject is that of Fosters. Jackson, where the defendant diedin execution, and the plaintiff brought scire facias against his executors. After examining Blumfield's case, and reviewing the whole subject at length, C. J. Hobart says, “ But now singly out of the very point, I hold that a capias ad satisfaciendum is against that party as not only an execution, but a full satisfaction by force and act and judgment of law, so as against him he can have no other, nor against his heirs or executors, for these make but one person at law.” And, in concluding, he lays down the broad principle on which many of the decisions already referred to are based, especially those where an agreement to surrender has been held to be void, “ that the body of a freeman cannot be made subject to distress or imprisonment by contract, but only by judgment. Hob., 52. The law, as laid down in Foster v. Jackson, governed all subsequent cases of death in execution, until parliament interfered, and, by the statute of 21 Jac. 1, c. 24, gave the creditor a further remedy against the estate of the deceased. 1 Str., 653; 8 T. R., 123; Amb., 79; 5 Mau. & Sei., 73; 13 Ves., 193 ; 3 Meriv., 224, 233-4-5; 20 L. J., Ch., 174; 15 Jur., 49; 13 Beav., 229; 1 Eng. L. & Eq., 146; 8 Dow. & Ry., 42. The above cases not only sustain the position to which they are cited, but they also prove that it is not merely a sharp point of law, adhered to out of respect for ancient authority, but that it has been treated at all times, both by judges an chancellors, as a well-founded principle, to which a controlling force should be given, in every case where it is either direct y or collaterally involved. The original debt has uniform y, and for all purposes for which it has ever been attempte be used, whether as a set-off, the foundation of an assumpsi, 308 DECEMBER TERM, 1853. 291 Magniac et al. v. Thomson. or of a claim in bankruptcy, been held to be satisfied, and the judgment to be valueless. It only remains, in the third place, to examine some particular cases, which are considered by the plaintiffs as exceptions to the general rule, but which in reality go far to illustrate and strengthen it. 1. Cases of escape. By the oldest authorities an escape was considered as effectual a discharge of the debt as a release, and Blumfield's case is the first decision to the contrary. Y. B. 33 Hen. VI., p. 47. The opposite doctrine was finally established in Whiteacres v. Hamkinson, and the reason of it was given by Ashhurst, J., in Jacques v. Withey: “I know of only one case where a debtor in execution, who obtains his liberty, *may afterwards be taken again for the same debt, and that is where he has escaped ; and the reason *-of that is, because he was not legally out of custody.” Sup., p. 11, 12. The result of these cases then is, that where the prisoner has escaped of his own wrong, although the satisfaction which the plaintiff was receiving is temporarily interrupted in fact, yet, in intendment of law, the defendant is still in custody, and may be retaken. 2. Cases of rescue, which depend upon the same principle as those of an escape. The defendant was never, in contemplation of law, out of custody. Jacques v. Withey, ut sup. 3. Arrest of privileged defendants. The arrest of a memr ber of parliament has, from the earliest times, been held irregular ; and it was occasionally doubted whether such an arrest, followed, as it necessarily.was, by a discharge, either upon writ of privilege, or without it, did not operate, like a release by consent, as a total discharge of the debt. 1 Hatsell, 48; May’s Practice of Parliament, 107, 113, 114; 2 Man. & G., 437, 471 ; 1 Cromp. M. & R., 525; 5 Tyrrw., 147; 10 Ad. & EL, 225 ; 1 Ad. & El. N. S., 525 ; 2 Gale & D., 473 ; Godb., 327. 4. Cases of discharge from imprisonment by the lord’s act, &c. The discharge in these cases has always been held to be the act of the law, and not to imply any consent on the part of the plaintiff. In compliance, therefore, with the old maxim, the courts have taken care that this act of law shall in no way injuriously affect the plaintiff’s rights. Thus, in Nadin v. Battie et al., 5 East, 147, where two were in prison, and one was discharged because of the plaintiff’s refusal to pay the prison charges, Lord Ellenborough, on an application to dis-c arge the other, decided that “ the discharge cannot be said ? ave been with the plaintiff’s assent, because he did not c oose to detain the party in prison at his own expense. Nor 309 292 SUPREME COURT. Magniac et al. v. Thomson. can the law, which works detriment to no man, in consequence of having directed the discharge of one defendant, so far implicate the plaintiff’s consent against the fact, as to operate as a discharge of the other.” The same, as will be seen hereafter, has been the ruling of the American courts, and for the same reasons here assigned. 5. Cases of debts payable by instalments. Where the judgment is to be satisfied by instalments, and execution is to issue upon non-payment of any of the instalments, it is held that a release from imprisonment upon one instalment with the plaintiffs consent, will not affect the remedy, or bar the execution upon a second instalment. Davis n. Gompertz, 2 Nev. & M., 607. This is expressly upon the ground that the two executions are not for the same debt. Such was the principle *tbat governed the case of Atkinson v. Bayn- -* tun, which has been relied upon as an authority against the appellee. 1 Bing. N. C., 444. 6. It may be proper, in this connection, to notice the case of Baker v. Ridgway, which has also been cited against the appellee. 3 Bing., 41; s. c., 9 Moo., 114. There, the defendant was in custody under a ca. sa.; a commission of bankruptcy was issued against him ; the plaintiffs were compelled, by the statute 49 Geo. III., c. 121, to discharge him out of custody, before they could be admitted to prove their debt under the commission; the commission was afterwards superseded on the ground of irregularity; and the defendant was again arrested. Affidavits were submitted by the plaintiffs, and relied on by the court, tending to prove that the irregularity, by which the commission had been avoided, was the result of fraudulent collusion between the debtor and a portion of his creditors. This was a motion to discharge the defendant, and enter satisfaction upon the judgment. The rule was discharged. Such being the facts, it does not seem that the case differs materially from that of an escape. It was, in reality, an escape effected by an abuse of the forms of law, and the same may be said of it, as Ashhurst, J., said of Jacques v. Witkey, “The defendant was never legally out of custody.” At any rate, he was never discharged by the consent of the plaintiff. That these were the grounds of the court’s opinion, may be seen from many of the remarks reported by Bingham. Thus Best, C. J.: “If this discharge has been obtained by a fraudulent commission, and the plaintiff has afterwards been cheate by a supersedeas out of the benefit sought by the proof of his debt, the defendant may be taken again, because the frau 310 DECEMBER TERM, 1853. 203 Magniac et al. v. Thomson. has avoided the whole transaction, and the defendant has never been legally out of custody.” From all the cases, then, we draw the conclusion that the English law is, and has been for more than four centuries, that the writ of ca. sa. is the highest sort of execution known ; that it is capable of affording the plaintiff complete and absolute satisfaction; and that its execution will satisfy the judgment and extinguish the debt, unless this its regular legal effect be avoided by some after contingency. The only after contingencies, whether existing at common law, or provided for by statute, which are allowed to have this effect are, an escape by the defendant's own wrong, or effected by his actual fraud; a rescue; an avoidance of the writ for irregularity; an enlargement of the prisoner by act of law; or (since the 21st Jac. 1) his death in execution. Upon the happening of any of these contingencies, *the plaintiff [-*-904 having been deprived, without his own default, of the *• complete satisfaction to which his writ entitled him, the law will supply him with other means of enforcing it. If, however, after the execution of the writ, the plaintiff voluntarily consent to the discharge of the defendant from custody, while by such execution and discharge the judgment is satisfied and the debt extinguished at law, so the plaintiff’s consent operates further as a confession of such satisfaction, and if properly presented to the court, will be entered of record on the roll. The policy of the law, moreover, prohibits the defendant from entering into any agreement by which the judgment or debt, upon which he is in custody, shall, for any purpose whatever, be made to survive his release, and pronounces all such agreements null and void. Nevertheless, the discharge of the defendant shall be a good consideration for an original and independent contract, which, if afterwards violated, may be enforced by new proceedings. This last lule avoids the hardship to which creditors might otherwise, even against their inclination, be compelled to subject their imprisoned debtors, who are unable to liquidate their debt by actual payment, but can give satisfactory security in consideration of a discharge. Archb. New Com. Law Pr., p. 257, Ed. 1853 ’ on Sheriffs, 198. We have next to ascertain whether the American courts lave adhered to the doctrines of the common law as expounded in England. The precise question as to the effect of the voluntary dis-c arge of the debtor from custody, has, it is believed, never en ®ci("e(^ by fbis court. But, in two cases, the nature of e writ of ca. sa. has been incidentally discussed, so far as it 311 294 SUPREME COURT. Magniac et al. v. Thomson. bore collaterally upon points then before the court. It was only necessary, therefore, to enter into the subject, and to press the conclusions far enough to meet the particular question presented. Thus, in The United States v. Stansbury, 1 Pet., 573, the question before C. J. Marshall was, whether the rights of a particular debtor were to be governed by the common law or by an act of Congress. Having decided in favor of the latter position, he waives all argument upon the common law, and introduces his opinion by stating it in a form that was unquestioned on either side. “ It is not denied, that at common law, the release of a debtor whose person is in execution, is a release of the judgment itself. Yet the body is not satisfaction in reality, but is held as the surest means of coercing satisfaction. The law will not permit a man to proceed at the same time against the person and estate of his debtor; and when the creditor has elected to take the person, it presumes satisfaction, if the person be voluntarily released. The release of the judgment is there-f°re *the legal consequence of the voluntary discharge -J of the person by the creditor.” So, in the case of Snead M' Coull, 12 How., 407, the question was, whether a creditor’s lien upon the lands of his debtor could survive the execution of a ca. sa. upon his person. Judge Daniel, delivering the opinion of the court, after showing that no lien on lands can be of superior binding force to that of an elegit, the capacity to issue which never survives a fully executed ca. sa., incidentally alludes to the nature of this latter writ, and the effect of a plaintiff’s voluntary releasing a defendant who is in custody under it. In so doing, he cites at length the strong language of the Lord Chancellor in Ex parte Knowell, sup., 23, and refers to the leading cases of Vig er s v. Aldrich, Tanner v. Hague, and Blackburn v. Stu-part. But, in the United States v. Watkins, 4 Cranch, C. C., 271, the whole subject was fairly brought before the Circuit Court of the United States for the District of Columbia, and 0. J-Cranch, in the course of a most learned opinion, in which almost every English authority is examined, fully sustains all the positions taken by the appellee as to the English law, recognizes them as forming part of the law of Maryland, and therefore binding in the District of Columbia. Since this decision, the case of Harden v. Campbell, 4 Gil (Md.), 29, has been adjudicated in Maryland, and C. J. Martin fully sustains the conclusions arrived at by C. J. Cranch.. The counsel then commented upon the following Ameiican cases:—2 Leigh (Va.), 361-7 ; 5 Id., 186; 6 Mass., 58; lb 312 DECEMBER TERM, 1853. 295 Magniac et al. v. Thomson. Mass., 63 ; 3 Cush. (Mass.), 463; 16 Law Rep., 629; 1 Chipm. (Vt.), 151; 1 R. I., 143; 5 Johns. (N. Y.), 364; 1 Cow. (N. Y.), 56; 8 Id., 171; 9 Id., 128; 2 South. (N. J.), 508, 799; 2 Green (N. J.), 102; 10 Ohio, 362 ; 6 Blackf. (Ind.), 36; 3 M’Cord (S. C.), 165; 4 Dall., 214; 3 Serg. & R. (Pa.), 463. In Pennsylvania the statute of 21 James 1, ch. 24, for the relief of creditors, against such persons as die in execution, was reported by the Judges to be in force, but not the statute of 1 James 1, ch. 13, relative to privilege of parliament, nor that of 8 & 9 William 3, ch. 27, s. 7, where in case a prisoner escapes, it is provided he may be retaken on a new capias. This law was altered by the 31st section of the act of 16th June, 1836, which enacted that “a judgment shall not be deemed to be satisfied by the arrest or imprisonment of the defendant upon a capias ad satisfaciendum, if such defendant die in prison, or escape, or be. discharged therefrom by reason of any privilege, ‘ or at his own request; ’ but the party entitled to the benefit of the judgment may have such remedies at law for the recovery thereof as he would have been entitled to if such capias ad satisfaciendum had not been issued: saving nevertheless all *rights and interests which may r*296 have accrued to any other person between the execu- L tion of such writ and the death or escape of such parties.” This section was taken from the 32d section of the bill reported by the revisers of the civil code on the 4th of January, 1836, but the words in italics, “ or at his own request,” were inserted by the legislature. The section as reported by the revisers, is stated by them to be “derived from the statutes 1 Jac. 1, c. 13; 21 Jac. 1, c. 24; and 8 & 9 William 3, c. 27, sect. 7.” . The case of Jackson n. Knight, 4 Watts & S. (Pa.), 412, decided in 1842, occurred after the passage of the act of Assembly, and was governed by the 31st section of the act of 16th June, 1836. The agreement to discharge the defendant from imprisonment was dated 10th October, 1840, and on the argument the counsel for the plaintiff in error cited the said 31st section. Mr. Justice DANIEL delivered the opinion of the court. This is an appeal from a decree of the Circuit Court of the U^ted States for the Eastern District of Pennsylvania. appellants, by their bill in the Circuit Court, alleged at, being creditors of the appellee in a very large amount ° Prev.iously and advanced to him, they, in the year 1828, instituted their action for its recovery on the law 313 296 SUPREME COURT. . Magniac et al. v. Thomson. side of the court, when it was agreed, by writing filed of record, that a judgment should be entered against the appellee as of the 26th of November, 1827, in favor of the appellants, for the sum of $22,191.71. That this judgment, with a large accumulation of interest, remained unappealed from and unsatisfied, either in whole or in part. That the appellants, after obtaining this judgment, believing that the appellee was possessed of concealed means of satisfying it, and especially that when in a state of insolvency, and with a view of defeating his creditors, he had settled upon his wife a large amount of property, and, as afterwards appeared, made transfers of property to her between the date of the judgment and of the execution thereon, they sued out upon the said judgment a writ of capias ad satisfaciendum, returnable to the April term of the court, 1830, and in virtue of that process caused to be taken into actual custody the body of the appellee. That under the exigency of this process and arrest, the appellee would have been compelled to continue in close confinement, or could have obtained his release therefrom solely by the laws of Pennsylvania passed for the relief of insolvent debtors, which laws would have exacted of the appellee an assignment to his creditors of all estate, property, or interests whatsoever, held by himself or by others for him, or unlawfully settled *2971 uPon his *wife 5 and would have conferred upon him -I only an immunity against further bodily restraint by reason of the non-payment of such debts as were due and owing from him at the date of such proceedings in insolvency; but that the appellee, being at the time of his arrest a citizen of the State of New Jersey, could not have been admitted to the benefits of the insolvent laws of Pennsylvania until after remaining three months in actual confinement under the writ of capias ad satisfaciendum. That on the 19th of November, 1825, a marriage contract was executed between the appellee and Annis Stockton, his intended wife, and Richard Stockton, the father of said Annis, by which agreement the said Richard Stockton was invested with a large amount of real and personal property in trust for the benefit of the appellee and his intended wife during their joint lives, and if the said appellee should survive his intended wife and have issue by her, in trust for his benefit and for the maintenance and support of his family, and if there should be no child or children of the said marriage, then after the death of the husband or wife, in trust to convey the property to the survivor in fee-simple. That the appellee, being arrested and in actual custody under the capias ad satisfaciendum, sued out as aforesaid, it 314 DECEMBER TERM, 1853. 297 Magniac et al. v. Thomson. was then and there agreed in writing between the appellants and the appellee, that the former should, without prejudice to their rights and remedies against the latter, permit him to be forthwith discharged from custody under the said process, and that the appellee should go to the next session of the Circuit Court of the United States for the Eastern District of Pennsylvania, and on the law side of that court make up an issue with the appellants, to try the question whether the appellee was possessed of the means, either in or out of the marriage settlement, of satisfying the judgment against him ; the said issue to be tried without regard to form, or to the time when the jury for the trial thereof should be summoned, the appellee also giving security to abide the result of the trial of said issue. That upon the execution of this agreement, the appellee was released from custody, and the marshal for the Eastern District of Pennsylvania, to whom the writ of capias ad respondendum was directed, made a return upon the writ that he had taken the body of the appellee into custody, and that he had been discharged by the consent and direction of the appellants. That the trial of the issue, which was provided for in the said agreement, actually took place, and resulted in a verdict by which, so far as concerned the purposes of the said trial, it was found that the appellee had not the means, either in or out of the said marriage settlement, of satisfying the judgment of the appellants. *The bill alleges that by the force and effect of the agreement in writing and of the proceedings in pursu- *-ance thereof, the appellee obtained no farther or other right or advantage, than a present discharge from close custody, and the judgment of a court of competent jurisdiction that he was then possessed of no means, whether in or out of the said marriage settlement, wherewith to satisfy the judgment of the appellants. It farther states, that since the judgment upon the issue made up and tried as aforesaid, the wife of the appellee had died without issue, and in consequence of that fact, all estate and property vested in the trustee by the marriage settlement, and found by the issue tried as aforesaid to be then protected thereby from the creditors of the appellee, bad become the absolute property and estate of the appellee, and had either by the original trustee in the marriage settlement or by his successor, been conveyed and delivered over the appellee as his own estate and property, free and clear oi any trust whatsoever. created by the marriage settlement, and by w icn the above property comprised therein was adjudged to m protected against creditors, having expired by its own 315 298 SUPREME COURT. Magniac et al. v. Thomson. limitation, that property had become liable to the creditors of the appellee, who w’as bound to a full account of the value thereof and for the satisfaction of the rights and demands of the appellants out of the same. That the appellants had accordingly applied to the appellee for payment of their judgment, to be made out of the property comprised in and protected by the marriage settlement or out of any other resources at his command, but had been met by a refusal on the part of the appellee, founded not upon his inability to satisfy the just claim of the appellants for money actually loaned, but upon an alleged exemption from all liability resulting from the facts of his having been once arrested under a capias ad satisfaciendum^ and subsequently released from custody by consent of the appellants. The bill alleges this refusal, and the foundation on which it is placed, to be in direct violation of the written agreement, which explicitly declared that it was made for the accommodation of the appellee, and without any prejudice whatever to arise to the plaintiffs’ (the appellants’) rights, by the defendant’s (the appellee’s) enlargement. It charges the refusal and objection now interposed to be fraudulent, and made in bad faith, and as such, though it might avail at law to embarrass or prevent the enforcement of the judgment of the appellants, yet that a court of equity should prohibit a resort thereto on account of its unconscientious and fraudulent character. The bill concludes with a prayer, that the appellee may be enjoined from setting up, as a discharge from the judgment against him, his release from *9091 custody under *the circumstances of the case set forth; d that an account may be taken of the several subjects of property comprised in the marriage settlement, and of the rents, profits, interest, and dividends accruing therefrom, since the death of the wife of the appellee; that satisfaction out of those subjects, of the judgment and claim of the appellants may be decreed: the bill seeks also for the general relief. To this bill the appellee (the defendant in the Circuit Court) demurred, assigning, for causes of demurrer, that if the taking into custody of the body of the defendant under the capias ad satisfaciendum was a legal discharge of the alleged debt, the complainants are not relievable in equity from the effect thereof for or by reason of any act, matter, or thing in the bill alleged ; and if the taking into custody was not such a legal discharge, then the complainants have full, adequate, and complete remedy at law; and farther that the taking into custody under the said writ was and is to be deemed to have been a discharge and extinction of the judg' 316 DECEMBER TERM, 1853. 299 Magniac et al. v. Thomson. ment of the plaintiffs at law, and a discharge and exstinction as well at law as in equity of the debt for which the same was obtained; and the cause coming on to be heard upon the demurrer, the court by its decree sustained the demurrer and dismissed the complainant’s bill with costs. The correctness, or incorrectness of the decree thus pronounced, are now the subjects of our consideration. Extensive or varied as may be the range of inquiry presented by the bill with respect to what is therein averred to appertain to the merits of this controversy, or to the character of the acts of the parties thereto, the view and the action of this court in relation to that cause must be narrowed nec essarily to the question of law arising upon the demurrer. In approaching these questions there may be propounded as postulates or legal truisms, admitting of no dispute, the following propositions: 1. That wherever the rights or the situation of the parties are clearly defined and established by law, equity has no power to change or unsettle those rights or that situation, but in all such instances the maxim equitas sequitur legem is strictly applicable. 2. That wherever there exists at law a complete and adequate power, either for the prosecution of a right or the redressing of a wrong, courts of equity, with the exception of a few cases of concurrent authority, have no jurisdiction or power to act. To the test of these rules the case before us, in common with every appeal to equity, should be brought, and if the effect of such test should prove to be adverse, that effect should be sought in the character of the appeal itself, and not in objections to maxims which judicial experience and wisdom have long established. Recurring now to the history of this cause, let us inquire *what was the precise situation of the parties, what their legal rights and responsibilities *■ at the date of the judgment and arising therefrom, what have been their acts and proceedings subsequently to that judgment, and the consequences flowing from their acts to their previous relative position. Upon the recovery of their judgments the appellants had their election of any of the modes of final process known to the courts of law, or they might in equity have impeached the marriage settlement for any vice inherent in its consideration, or for an attempt fraudulently t0 *n?erPose ^at settlement between the appellants’ judgment and its legal satisfaction. But in their election of any of the terms of final process, the appellants must be held to have known the nature of that process, and the consequences indent to its choice and consummation. To permit an igno-317 300 SUPREME COURT. Magniac et al. v. Thomson. rance of these, or in other words an ignorance of the law, to be alleged as the foundation of rights, or in excuse for omissions of duty, or for the privation of rights in others, would lead to the most serious mischief, and would disturb the entire fabric of social order. In choosing the writ of capias ad satisfaciendum, therefore, for the enforcement of their judgment, the appellants can derive no benefit from the presumption of ignorance or misapprehension as to the effects of calling into activity this severest and sternest attribute of the law. Such a presumption is wholly inadmissible. They must be affected with knowledge of whatever has been settled as to the nature of this writ, and of whatever regularly follows a resort to its use. They were bound to know, 1st, that the service of a capias ad satisfaciendum, by taking into custody the body of the debtor, operates a satisfaction of the debt; and for that reason deprives the creditor of all recourse to the lands, or chattel, or property of any description belonging to his debtor. For a doctrine well settled and familiar as is that, it may appear superfluous to cite authorities ; but we may refer to some of these, commencing with the early cases of Foster v. Jackson, Hob., 52; Williams and Criteris, Cro. Jac., 136, and Rolle, Abr., 903; and coming down through the more modern authorities to Mr. Justice Blackstone’s Commentaries, vol. 3, p. 415 ; 4 Burr., 2482; 1 T. R., 557 ; 2 East, 243, and 13 Ves., 193. To these cases might be added many decisions in the courts both of England and in the different States in this country; and, as conclusive of the same doctrine, in this court the case of Snead v. M'Coull, 12 How., 407. So unbending and stringent was the application of the doctrine maintained by the earlier cases, that prior to the statute of 21st Jac. 1, cap. 24, the death of a debtor whilst charged in execution, an event which rendered the process absolutely unavailable to the creditor, deprived the latter *3011 neverf^e^ess a right to a farther *execution; the -I jealousy of the common law denying t© him any power beyond that he had exerted in the privation of the personal liberty of the debtor. The statute of James authorized the exception of the death of the debtor to this inhibition of the common law, and to this exception has been added the instances of escape or rescue, seemingly upon the ground that in these instances the debtor should not be regarded as legally out of custody. The taking of the body under a capias a satisfaciendum being thus held the complete and highest sa is faction of the judgment, it would follow ex consequenti, tha a discharge of the debtor by the creditor would imply an ac knowledgment of such satisfaction, or at any rate would ta e 318 DECEMBER TERM, 1853. 301 Magniac et al. v. Thomson. from that judgment the character of a warrant for resorting to this highest satisfaction in repeated instances for the same demand. But the authorities have not stopped short at a mere technical restraint upon the creditor who may seek to repeat the arrest of the debtor whom he once had in confinement ; they have gone the length of declaring, that if a person taken on a capias ad respondendum was discharged, the plaintiff had no further remedy, because he had determined the choice by this kind of execution, which, affecting a man’s liberty, is esteemed the highest and most rigid in the law. See the cases from Hobart, Croke Jac. and Rolle’s Abr. before cited. Again it has been ruled that if the plaintiff consent to the defendant being discharged out of execution, though upon an agreement, he cannot afterwards retake him although the security given by the defendant on his discharge should be set aside. 4 Burr., 2482 ; 1 T. R., 557; 2 East, 243; and the Lord Chancellor, in 13 Ves., 193, uses this explicit language, “ It is clear, that by taking the body in execution, the debt is satisfied to all intents and purposes.” Many American cases may be avouched in support of the same doctrine. In the case of the United States v. Stansbury, 1 Pet., 573, Chief Justice Marshall says, “It is not denied that at common law the release of a debtor ‘ whose person is in execution,’ is a release of the judgment itself. The law will not permit a man to proceed at the same time against the person and estate of his debtor; and when the creditor has elected to take the person, it presumes satisfaction if the person be voluntarily released. The release of the judgment is, therefore, the legal consequence of the voluntary release of the person by the creditor.” In the ease of Wendrum v. Parker, 2 Leigh (Va.), 361, it is said by Carr, J., that the “ levy of a ca. sa. and the release of the debtor from execution by the plaintiff, or his agent, is an extinguishment of the debt, I have considered as well settled as any point can be by an unbroken series of decisions.” And in *the case of Noyes v. Cooper, 5 Leigh (Va.), 186, r^onn Brockenbrough, J., says, “ It has been undoubtedly es- *-tablished by a series of decisions, that where a defendant in execution has been discharged from imprisonment by direc* tion or with the consent of the plaintiff, no action will ever again lie on the judgment, nor can any new execution issue on that judgment, even though the defendant was discharged on an express understanding that he should be liable again o be taken in execution on his failure to comply with the terms on which the discharge took place.” Upon a collation of the authorities applicable to the acts 319 302 SUPREME COURT. Magniac et al. v. Thomson. and proceedings of the parties to this controversy at the time, and subsequently to the judgment in favor of the appellants against the appellee, we are led to the following conclusions, viz.: that by suing out a capias ad satisfaciendum upon their judgment, and by taking into actual custody the body of the appellee under this process, the appellants had obtained that complete and highest satisfaction of their demand, of which they could be deprived only by the act of God, by operation of law, or by their own voluntary acknowledgment, or by a release of their debtor; that by entering into the arrangement stated in the bill, and by discharging the appellee from custody, the appellants have, in all legal intendment, admitted satisfaction of their demand, released the appellee from all liability therefor, and destroyed every effect of their judgment as the foundation of legal rights. Such being our conclusions upon this branch of the case, and the same conclusions being implied in the application of the appellants for equitable interposition, the inquiry here presents itself, whether a court of equity can be called upon to abrogate or impair or in any manner or degree, to interfere with clear, ascertained, and perfect legal rights ? The simple statement of such an inquiry suggests this ready and only correct reply: Equity may be invoked to aid in the completion of a just but imperfect legal title, or to prevent the successful assertion of an uconscientious and incomplete legal advantage; but to abrogate or to assail a perfect and independent legal right, it can have no pretension. In all such instances, equity must follow, or in other words, be subordinate to the law. With the view doubtless of giving color to their application, the appellants have intimated (for they can hardly be said to have charged it positively and directly) that the marriage settlement of the appellee was made in fraud of his creditors, and they have directly averred that the refusal of the appellee after the death of his wife to apply the property comprised in that settlement, in satisfaction of the judgment of the appellants, was at once fraudulent, and in direct violation of «onq-i the agreement in *pursuance of which the appellee was -* discharged from custody. With respect to each of these allegations, however, the appellants are entirely deficient in their proofs, and in the latter, the statement does not accord with the document, that is, the written agreement between the parties on which this averment is founded. -No evidence seems to have been adduced upon the trial which took place in pursuance of the agreement, to impeach the tallness of the marriage contract; and the absence of any attemp to establish its unfairness, together with the charge of the 320 DECEMBER TERM, 1853. 303 Magniac et al. v. Thomson. court to the jury, would seem to exclude the existence, or at that time the belief of the existence, of fraud in the settlement. The agreement entered into at the time of the appellee’s release from custody contains no stipulation that he would hold himself liable to another execution dependent on the event that the issue contemplated by that agreement, or that he would consider the judgment as still in full force against him. And if there had been a stipulation of the kind, we have seen that it could not have averted the consequences flowing from the discharge of the appellee from custody; but the only conditions for which the appellee covenanted were that he would make up and try the issue proposed and would abide the result of the trial; with both of which conditions the appellee has literally complied. This charge of fraud then, even if it could in any aspect of this question have been available, is entirely unsustained. With regard to the question raised by the demurrer as to the obligation of the appellants to pursue their remedy at law, under the allegation in the bill, that such legal remedy had been reserved to them by the -terms of the agreement, there can be no doubt, upon the supposition that this remedy remained unimpaired, that the appellants could not arbitrarily abandon it, and seek the interposition of equity in a matter purely legal. The averment therefore by the appellants of the continuation of their judgment, and of their right to enforce it by execution in all their original force and integrity, is wholly irreconcilable with any known head or principle of equity jurisdiction, and their bill is essentially obnoxious to objection on that account. We are of the opinion that the decree of the Circuit Court, sustaining the demurrer to the bill of the appellants, (the complainants in the Circuit Court,) is correct, and ought to be, as it is, hereby affirmed, with costs. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Eastern District of Pennsylvania, and was argued by counsel. On Consideration whereof, it is now here ordered, ad-judged, and decreed by this court, that the decree of *-the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs. Vol. xv.—21 321 304 SUPREME COURT. Curran v. State of Arkansas et al. James N. Cure an, Plaintiff in Error, v. The State of Arkansas, The Bank of the State of Arkansas, John M. Ross, Financial Receiver, and David W. Cirrol, Bank Attorney. In 1836, the Legislature of Arkansas incorporated a bank with the usual banking powers of discount, deposit, and circulation, the State being the sole stockholder. The bank went into operation, and issued bills in the usual form, but in November, 1839, suspended specie payments. Afterwards, the legislature passed several acts of the following description: 1843, January, continuing the corporate existence of the bank, and subjecting its affairs to the management of a financial receiver and an attorney, who were directed to cancel certain bonds of the State, held by the bank, for money borrowed by the State, and reduce the State’s capital in the bank by an equal amount. 1843, February, directing the officers to transfer to the State a certain amount of specie, for the purpose of paying the members of the legislature. 1845, January, requiring the officers to receive the bonds of the State which had been issued as part of the capital of the bank in payment for debts due to the bank. 1845, January, another act, taking away certain specie and par funds for the purpose of paying members of the legislature, and placing other funds to the credit of the State, subject to be drawn out by appropriation. 1846, vesting in the State all titles to real estate or other property taken by the bank in payment for debts due to it. 1849, requiring the officers to receive, in payment of debts due to the bank, not only the bonds of the State, which had been issued to constitute the capital of the bank, but those also which had been issued to constitute the capital of other banking corporations which were then insolvent. Upon general principles of law a creditor of an insolvent corporation can pursue its assets into the hands of all other persons except bond fide creditors or purchasers, and there is nothing in the character of the parties in the present case or in the laws transferring the property, to make it an exception to the general rule. For the Supreme court of Arkansas has decided that the State can be sued in this case.1 The bills of the bank being payable on demand, there was a contract with the holder to pay them; and these laws, which withdrew the assets of the bank into a different channel, impaired the obligation of this contract.2 Nor does the repeal or modification of the charter of the bank by the legislature prevent this conclusion from being drawn. But in this case the charter of the bank has never been repealed. Besides the contract between the bill-holder and the bank, there was a contract between the bill-holder and the State, which had placed funds in the bank for the purpose of paying its debts, and which had no right to withdraw those funds after the right of a creditor to them had accrued. The State had no right to pass these laws, under the circumstances, either as a creditor of the bank or as a trustee taking possession of the real estate tor the benefit of all the creditors.3 * 5 1 Cited. Railroad Co. v. Howard, 7 Wall., 410; Davis v. Gray, 16 Id., 221; Sawyer v. Hoag, 17 Id., 621; Sanger v. Upton, 1 Otto, 61; Scammon v. Kimball, 2 Id., 368; Shields v. Ohio, 5 Id., 324; Farrington v. Tennessee, Id., 687; Newton v. Commissioners, 10 Id., 322 557; Merriwether v. Garrett, 12 Id., 530; 8. c., 1 Morr. Tr., 384. 2 Cited. Hawthorne v. Calej, * Wall., 21. «\ io 3 Followed. Barings v. Dabney, Wall., 9-11. DECEMBER TERM, 1853. 304 Curran v. State of Arkansas et al. The several laws examined. The Supreme Court of the State held these laws to be valid, and consequently the jurisdiction of this court attaches under the 25th section of the judiciary act.4 This case was brought up from the Supreme Court of Arkansas, by a writ of error issued under the 25th section of the judiciary act. *It was argued by Mr. Lawrence and Mr. Pike, for the plaintiff in error, and by Mr. Sebastian, filing a *-brief prepared by Mr. Hempstead, for the defendants in error. The arguments of counsel upon both sides were in such an unbroken train of reasoning, that the reporter cannot compress them into a mere report; and as, together, they made upwards of sixty pages of print, he cannot publish them entire. The reader who desires to examine into the case thoroughly, can consult the opinion of the Supreme Court of Arkansas, delivered in November, 1851. In that opinion the court maintains its doctrines with great earnestness. Mr. Justice CURTIS delivered the opinion of the court. This is a writ of error to the Supreme Court of the State of Arkansas. The plaintiff in error filed his bill in equity in the Circuit Court of that State for the county of Pulaski, against the State of Arkansas, the State Bank of Arkansas, and the financial receiver and the attorney of the bank; and the defendants having demurred thereto, the Circuit Court overruled the demurrers, and, as the defendants elected to rest thereon, the court made a decree in favor of the complainant. The defendants appealed to the Supreme Court, where the demurrers were sustained, and the bill ordered to be dismissed. This decree the plaintiff has brought here for reexamination, under the 25th section of the judiciary act. As questions to be determined arise on a demurrer to he bill, the substance of the case, therein made and confessed .y the demurrer, must be stated, to exhibit the grounds on winch our decision rests. . The bill shows that the Bank of the State of Arkansas was incorporated by the legislature of that State in 1836, with 4 See also the following cases, citing i «e RrinciPal case: Bacon v. Robertson, Rn?0\nO86; Bank v- Bossieux, 4 Hughes 4o8 411; Nnion Nat. Bank ■^ Bouglass, 1 McCrary, 90; Merch. P Bankv. Jefferson County, Id., 365; razer y. Ritchie, 8 Bradw. (Ill.), 559- Clapp v. Peterson, 104 Ill., 31; Shipley v. City of Terre Haute, 74 Ind., 300; Travellers Ins. Co. v. Brouse, 83 Ind,, 66; Nat. Trust Co. v. Miller, 6 Stew. (N. J.), 163; Swann v. Summers, 19 W. Va., 131, 132. 323 305 SUPREME COURT. Curran v. State of Arkansas et al. the usual banking powers of discount, deposit, and circulation, and that the State in fact was, and was designed by the charter to be, its sole stockholder. That the capital stock of the bank consisted of $1,146,000, raised by the sale of bonds of the State, together with certain other sums paid in by the State as part of the capital stock, amounting in the aggregate to the sum of $350,753, being in the whole $1,496,753; all which was in specie, or specie funds. That the bank was required by its charter to have on hand at all times sufficient specie to pay its bills on demand. That the plaintiff, being the owner and bearer of bills of this bank, amounting to upwards of $9,000, which the bank had refused to pay, instituted suits and recovered judgments thereon at law, upon which executions, running against the goods, chattels, and lands of the bank, have been duly returned *wholly -> unsatisfied. The general scope of the bill, therefore, is to obtain the aid of a court of equity to reach such assets of the bank as ought to be appropriated to satisfy this judgment debt. The parties in whose hands it is alleged these assets are, are the State of Arkansas and two other defendants, who are alleged to have charge of certain effects of the bank, in behalf, and under the authority of the State. To make a case against these parties, and show that they hold property, which in equity belongs to its creditors, and ought to be appropriated to pay their debts, the bill states, that the bank having gone into operation, and issued bills to a large amount, which were then in circulation, gave public notice, on the 7th day of November, 1839, that the payment of specie was definitely and finally suspended; and. thenceforward, with some comparatively trifling exceptions, has refused to redeem any of its bills. That in January, 1843, the bank still continuing insolvent, an act was passed by the legislature to liquidate and settle its affairs. That the assets of the bank then amounted to $1,832,120, of which the sum of $1,000,000, was good and collectible; and that it had then on hand the sum of $90,301 in specie. This act expressly continued the corporate exis -ence of the bank; its affairs were subjected to the management of a financial receiver and an attorney, who were o apply the moneys collected by them to redeem the outstan -ing circulation of the bank; but, at the same time, bonds o the State, held by the bank, for money borrowed by t e State, amounting to at least $200,000, were required by 11 act to be given up and cancelled, and their amount to credited to the bank against a part of the capital stock pu by the State. The bill further shows, that by another a 324 DECEMBER TERM, 1853. 306 Curran v. State of Arkansas et al. passed at the same February session, in 1843, the officers- of the bank were required to transfer to the State the sum of $15,000 in specie, which was appropriated by the act to pay the members of that legislature. That on the 4th day of January, 1845, another act was passed, authorizing the officers of the bank to compromise its debts receivable, and take specific property in payment, and requiring those officers to receive in payment the bonds of the State, issued to raise capital stock for the bank, notwithstanding the bills of the bank might not have been taken up. That on the 10th day of January, 1845, another act was passed, depriving the bank of all its specie and par funds, and appropriating the specie, first, to pay the members of that legislature, and declaring that certain funds which had been placed in the bank, and made by the charter to form a part of its capital stock, should be deemed to be deposited there to the credit of the State, subject to be drawn out by appropriations. *That by another act, passed on the 23d day of p,™-December, 1846, the title to all real estate and prop- •-erty of every kind, purchased by said bank, or taken in payment of debts due to it, was declared to be vested in the State, and titles to property received on account of debts due to the bank were required to be thereafter taken in the name of the State; and the bill avers, that many different parcels of land specifically mentioned and described, have been conveyed to the State, under this law, by debtors of the bank, in satisfaction of their indebtedness. The bill further states, that, by another act, passed on the 9th day of January, 1849, the officers of the bank were required to receive in payment of its debts, bonds of the State, issued to raise capital for the Real Estate Bank of Arkansas, and other banking corporations theretofore chartered by the General Assembly, and then insolvent; which last-mentioned bonds amounted to at least $2,000,000. The bill prays, among other things, for satisfaction of the plaintiff’s judgment debt out of the assets of the bank thus shown to have come into the custody, or to stand in the name, or to have gone to the use of the State by force of the aws above-mentioned; and the jurisdiction of this court, P21C^er1 this WI'it of error, is invoked, upon the ground that ese laws, or some of them, impair the obligation of a con-and tl^at the highest court of the State has held them v& i , and by reason of such decision, dismissed the complainant’s bill. 325 307 SUPREME COURT. Curran v. State of Arkansas et al. It follows, that there are three questions for our consideration. 1. What would have been the rights of the complainant under the contracts shown by his bill, if uncontrolled by the particular laws of which he complains ? 2. Do those laws, or either of them, impair the obligation of any contract with the complainant? 3. Does it appear, by the record, that the Supreme Court of Arkansas held these laws to be valid, and by reason thereof made a final decree against the complainant ? The first of these questions may be answered without much difficulty. The plaintiff is a creditor of an insolvent banking corporation. The assets of such a corporation are a fund for the payment of its debts. If they are held by the corporation itself, and so invested as to be subject to legal process, they may be levied on by such process. If they have been distributed among stockholders, or gone into the hands of others than bond fide creditors or purchasers, leaving debts of the corporation unpaid, such holders take the property charged with the trust in favor of creditors, which a court of equity will enforce, and compel the application of the property to the satisfaction of their debts. *This has been often decided, and rests upon plain -» principles. In 2 Story’s Eq. Jur., § 1252, it is said, “Perhaps, to this same head of implied trusts, upon presumed intention, (although it might equally well be deemed to fall under the head of implied trusts by operation of law,) we may refer that class of cases where the stock and other property of private corporations is deemed a trust fund for the payment of the debts of the corporation; so that the creditors have a lien, or right of priority of payment on it, in preference to any of the stockholders of the corporation. Thus, for example: “ The capital stock of an incorporated bank is deemed a trust fund for all the debts of the corporation : and no stockholder can entitle himself to any dividend or share of such capital stock, until all the debts are paid, and if the capital stock should be divided, leaving any debts unpaid, every stockholder, receiving his share of the capital stock, would, in equity, be held liable pro ratd to contribute to the discharge of such debts out of the fund in his own hands.” In conformity with this is the doctrine held by this court in Mumma v. The Potomac Company, 8 Pet., 281. The cases of Wood v. Dummer, 3 Mason, 308; Wright v. Petrie, 1 Sm. & M. (Miss.), 319; Nevitt v. Bank of Port (ribson, 6 Id., 513; Hightower v. Thornton et al., 8 Ga., 493 , Nathan v. Whitlock, 3 Edw. (N. Y.), 215, affirmed by the 326 DECEMBER TERM, 1853. 308 Curran v. State of Arkansas et al. chancellor, (9 Paige (N. Y.), 152,) contain elaborate examinations of this doctrine, and. it has been affirmed and applied in many other cases. So far, therefore, as the property of this bank has become vested in the State or gone to its use, it is so vested and used, charged with a trust in favor of this complainant, as an unpaid creditor, unless there is something in the character of the parties, or the consideration upon which, or the operation of the laws by*force of which, it has been transferred, taking the case out of the principles above laid down. And, first, as to the character of the parties. By the charter of this bank, the State of Arkansas became its sole stockholder. But the bank was a distinct trading corporation, having a complete separate existence, enabled to enter into valid contracts binding itself alone, and having a specific capital stock, provided, and held out to the public as the means to pay its debts. The obligations of its contracts, the funds provided for their performance, and the equitable rights of its creditors were in no way affected by the fact, that a sovereign state paid in its capital, and consequently became entitled to its profits. When paid in and vested in the corporation, the capital stock became chargeable at once with the trusts, and subject to the uses declared and fixed by the charter, to the same extent, and *for the same r*onq reasons, as it would have been if contributed by pri- *-vate persons. That a State, by becoming interested with others in a banking corporation, or by owning' all the capital stock, does not impart to that corporation any of its privileges or prerogatives, that it lays down its sovereignty, so far as respects the transactions of the corporation, and exercises no power or privilege in respect to those transactions not derived from the charter, has .been repeatedly affirmed by this court, in the Bank of the United States v. The Planters Bank, 9 Wheat., 904; Bank of Kentucky v. Wistar et al., 3 Pet., 431; Briscoe v. The Bank of Kentucky, 11 Id., 324; Darrington et al v. The Bank of ■Alabama, 13 How., 12. And our opinion is, that the fact that the capital stock of this corporation came from the State which was solely interested in the profits of the business, does not afiect the complainant’s right, as a creditor, to be paid out of its property; a right which, as we have seen, follows the fund into the hands of every person, save a bond fide creditor or purchaser, and which a court of equity is bound to enforce y its decree against any party except such a creditor or pur-tio&Ser Ca^a^e ^aw being brought within its jurisdic- 327 309 SUPREME COURT. Curran v. State of Arkansas et al. That the State of Arkansas is capable of being thus sued, has been decided, after a careful examination, by the Supreme Court of that State, in this suit; and as this is purely a question of local law, depending on the constitution and statutes of the State, we follow that decision, and hold, in conformity therewith, that by its own consent the State has become liable to a decree in favor of the complainant in this suit, if the complainant has valid grounds entitling him to the relief prayed. Whether there was any thing in the consideration or circumstances of the transfers of the property of the bank to the State, or to its use, which relieved that property from the trust in favor of creditors, may best be examined under the next question, which is, do the laws, by force of which these transfers were made, impair the obligation of any contract with the complainant. This question can be answered only by ascertaining what contracts existed, and what obligations were attached to them, and then by examining the actual operation of those laws upon those contracts and their obligations. The plaintiff was the bearer of bills of the bank, by each of which the bank promised to pay him, on demand, a certain sum of money. Of course these payments were to be made out of the property of the bank. By the laws of the State, existing when these contracts were made, their bearer had the right, by legal process, to compel their performance *3101 by levy an *execution on the goods, chattels, J lands, and tenements of the bank, by garnisheeing its debtors, and by resorting to a court of equity to reach equitable assets, or property conveyed to others than creditors and bond fide purchasers. Such were these contracts and their obligations; and it would seem to require no argument to prove that a law authorizing and requiring such a corporation to distribute its property among its stockholders, or transfer it to its sole stockholder, leaving its bills unredeemed, would impair the obligation of the contracts contained in those bills. The cases of Bronson v. Kinzie et al., 1 How., 811; and McCracken v. Hayward, 2 Id., 608, which will be more particularly adverted to hereafter, leave no doubt on that point. Indeed it has not been attempted to maintain, that such a law, operating on the property of a mere private corporation, whose charter the legislature could not repeal, would be valid. But it is argued that this is a different case. That the legislature has powei to destroy this corporation and thereupon its contracts are no longer in existence, and cannot be enforced against the prop-328 DECEMBER TERM, 1853. 310 Curran v. State of Arkansas et al. erty of the corporation, which, upon the repeal of its charter, reverts to the grantors of its lands and escheats, so far as it is personalty, to the State, and that, if it be in the power of the State thus to destroy the remedies of creditors, by repealing the charter, their rights must be considered to be entirely subject to the will of the State, and no law can impair the obligation of their contracts, because subjection to any law which may be passed belongs to the very existence of such contracts. Or, to express the same ideas in different words, that the State created and can destroy the corporation and all its contracts, and, as it can thus destroy them by repealing the charter, it can modify, obstruct, and abridge the rights of creditors and the obligations of their contracts, without repealing the charter. Neither these premises, nor the conclusion deduced from them, can be admitted. This banking corporation, having no other stockholder than the State, it is not doubted that the State might repeal its charter; but that the effect of such a repeal would be entirely to destroy the executory contracts of the corporation, and to withdraw its property from the just claims of its creditors, cannot be admitted. If such were the effect of a repeal of an act incorporating a bank containing no express power of repeal, it might be difficult to encounter the objection, that the. repealing law was invalid, as conflicting with the Constitution of the United States. This argument was pressed on this court, in the case of Mumma v. The Potomac Company, (8 Pet.) and it was met by the following explicit language: “We are of opinion, that the dissolution of the cor- r*o-|-| poration, under the acts of Virginia and Maryland, *-cannot in any just sense be considered, within the clause of the Constitution of the United States on this subject, an impairing of the obligation of the contracts of the company by those States, any more than the death of a private person can ' be said to impair the obligation of his contracts. The obligation of those contracts survives; and the creditors may enforce tae^r claims against any property belonging to the corporation, which has not passed into the hands of bond fide purchasers, . 18 still held in trust for the company, or for the stock- olders thereof, at the time of its dissolution, in any mode permitted by the local laws/’ Indeed, if it be once admitted that the property of an in-fading corporation, while under the management of ,S ^.t10618’ ts a trust fund in their hands for the benefit of tie i ors, it follows, that a court of equity, which never allows lust to fail for want of a trustee, would, see to the execu- 329 311 SUPREME COURT. Curran v. State of Arkansas et al. tion of that trust, although by the dissolution of the corporation, tlie legal title to its property had been changed. Murnma v. The Potomac Co., 8 Pet., 281; Wright v. Petrie, 1 Sm. & M. (Miss.) Ch., 319; Nevitt n. The Bank of Port Gribson, 6 Sin. & M. (Miss.), 513; 1 Edw. (N. Y.); s. C., 9 Paige; Reed v. Frankfort Bank, 23 M., 318. And, in this point of view, the decision of this court, in Lennox et al. v. Roberts, (2 Wheat., 373,) is applicable. It was a suit in equity, brought by persons to whom, at the expiration of the charter of the Bank of the United States, its effects were conveyed by deed, in trust for creditors and stockholders. Among these effects were certain promissory notes indorsed by the defendant, which the bill prayed he might be compelled to pay. The complainants had not the legal title transferred to them by indorsement upon the notes. This court held that the suit was maintainable. And this decision necessarily involves two points. First. That the expiration of the charter had not released the indorser. Second. That a court of equity would lend its aid to trustees for creditors of the bank, to enforce payment of the notes. We do not think that the omission of the bank to appoint a trustee would vary the substantial rights of creditors in a court of equity. Whatever technical difficulties exist in maintaining an action at law by or against a corporation after its charter has been repealed, in the apprehension of a court of equity, there is no difficulty in a creditor following the property of the corporation into the hands of any one not a bond fide creditor or purchaser, and asserting his lien thereon, and obtaining satisfaction of his just debt out of that fund specifically set apart for its payment when the debt was contracted, and charged *31^1 with a trust for all *the creditors when in the hands "J of the corporation; which trust the repeal of the charter does not destroy. Chancellor Kent, in 2 Com., 307, n., says, “ The rule of the commom law has in fact become obsolete. It has never been applied to insolvent or dissolved moneyed corporations in England. The sound doctrine now is, as shown by statutes and judicial decisions, that the capital and debts of banking and other moneyed corporations, constitute a trust fund and pledge for the payment of creditors and stockholders, and a court of equity will lay hold of the fund, and see that it be duly collected and applied. The case of Hightower v. Thornton, 8 Ga., 491, and other cases before referred to in this opinion, are in conformity with this doctrine ; and, in our judgment, a law distributing the property of an insolvent trading or banking corporation among its stockholders, 330 DECEMBER TERM, 1853. 312 Curran v. State of Arkansas et al. or giving it to strangers, or seizing it to the use of the State, would as clearly impair the obligation of its contracts as a law giving to the heirs the effects of a deceased natural person, to the exclusion of his creditors, would impair the obligation of his contracts. But if it could be maintained, that the repeal of the charter of this corporation would be operative to destroy the obligation of its contracts, it would not follow that any thing short of a repeal could have that effect. The only ground upon which such a power could be claimed is, that inasmuch as the power of repeal exists when the contract is made, and inasmuch as the necessary effect of a repeal is to put an end to the obligation of the contracts of the corporation, all its con tracts are made subject to this contingency, and with an inherent liability to be thus destroyed. We have already said, that it is not the necessary effect of a repeal of the charter to destroy the obligations of contracts; but if it were, and they were entered into subject to this liability, upon what ground could it be maintained, that merely suspending certain powers of the corporation, its existence being preserved, can be followed by any such consequence ? Surely it is not the necessary effect of a prohibition to transact new business, to destroy contracts already made; and if not, how can the right and power to destroy them be considered to grow out of a power to make such a prohibition ? or how can it be fairly assumed, because the creditor knew when he received the contract of the bank that the legislature could at any time deprive it of power to enter into new engagements, and therefore must be taken to have assented to the exercise of that power at the discretion of the legislature, that he must also be considered as assenting to the exercise of a totally different power, viz. the power to destroy contracts already made? Legislative powers, over contracts lawfully existing when the *con- « tracts are formed, affect the nature and enter into the L $ $ obligations of those contracts. But such powers can be exerted only in the particular cases in reference to which they have been reserved; and they are inoperative in all other cases. And, until such a case arises, the obligation of such a contract can no more be impaired than if it were under no circumstances subject to legislative control. The assumption hat, because the legislature may destroy a contract by repealing the charter of the corporation which made it, therefore such a contract may be impaired, or altered, or destroyed, in any manner the legislature may think fit, without repealing charter, is wholly inadmissible. ow the charter of this bank has never been repealed. 331 313 SUPREME COURT. Curran v. State of Arkansas et al. On the contrary the 28th section of the act of the 31st day of January, 1843, expressly provided, “ That nothing in this act shall be so construed as to impair or destroy the corporate existence of the said Bank of the State of Arkansas, but the charter of the said institution is only intended to be so limited and modified as that said bank shall collect in and pay off her debts, abstain from discounting notes, or loaning money, and liquidate and close up her business as is hereinafter provided.” Subsequent laws have still further limited and modified the corporate powers, but the corporate existence has not been touched, and the corporation is made a party to this suit, and appears on the record. We do not consider, therefore, that the power of the State to repeal this charter enables the State to pass a law impairing the obligation of its contracts. We have thus far considered only the contracts between the complainant and the bank, arising out of the bills of the bank held by him, and some of the obligations of those con’ tracts. But this is not the only contract ydth the complainant. It is true that, as the State was the sole stockholder in this bank, the charter cannot be deemed to be such a contract between the State and the corporation as is protected by the Constitution of the United States. But it is a very different question whether that charter does not contain provisions, which, when acted upon by the State and by third persons, constitute in law a binding contract with them, the obligation of which cannot be impaired. If a person deposit his property in the hands of an agent, he may revoke the agency and withdraw his property at his pleasure. But if he should request third persons to accept the agent’s bills, informing them, at the same time, that he had placed property in the hands of that agent to meet the bills at their maturity, and upon the faith of such assurance *31-41 agen^s *bills are accepted, the principal cannot, by -* revoking the agency, acquire the right to withdraw his property from the hands of the agent. It is no longer exclusively his. They who, on the faith of its deposit, have changed their condition, have acquired rights in it. The matter no longer rests in a mere delegation of a revocable authority to an agent, but a contract has arisen between the principal and the third persons from the representation made, and the acts done on the faith of it, and the property cannot be withdrawn without impairing the obligation of that contract. , . Now the charter of this bank provides, (§ 1,) that it shall have a capital stock of one million of dollars, to be raised by 332 DECEMBER TERM, 1853. 314 Curran v. State of Arkansas et al. the sale of the bonds of the State, and also, (§ 13,) that certain other funds, which are specifically described, shall be deposited therein by the State, and constitute a part of the capital of the bank, and the bill avers that the bonds of the State, amounting to one million of dollars, and also other bonds of the State amounting to one hundred and forty-six thousand dollars, authorized by a subsequent act of the Assembly, were sold, and their proceeds, together with the other funds mentioned, were paid into the bank to constitute its capital stock. The bank received this money from the State as the fund to meet its engagements with third persons which the State, by the charter, expressly authorized it to make for the profit of the State. Having thus set apart this fund in the hands of the bank, and invited the public to give credit to it, under an assurance that it had been placed there for the purpose of paying the liabilities of the bank, whenever such credit was given, a contract between the State and the creditor not to withdraw that fund, to his injury, at once arose. That the charter, followed by the deposit of the capital stock, amounted to an assurance, held out to the public by the State, that any one who should trust the bank might rely on that capital for payment, we cannot doubt. And when a third person acted on this assurance, and parted with his property on the faith of it, the transaction had all the elements of a binding contract, and the State could not withdraw the fund, or any part of it, without impairing its obligation. We proceed, therefore, to examine the laws complained of, to ascertain what is their operation upon the obligations of the several contracts with the State and with the bank, which are above declared to exist. The learned counsel for the State of Arkansas has, with great ability, presented a view of these laws which requires consideration. It is this. That so far as these laws withdraw specie and funds from the bank, and appropriate them to the uses of the State, the State acted in the character of a creditor, taking a preference over other creditors, and paying *itself a debt; and that the |-*o-| r other laws, by force of which all the real property of *-the bank was vested in the State, are not to be deemed to have been passed in denial of the rights of creditors, but only the better to protect and give effect to those rights; that the trust in favor of creditors still subsists, to be worked out in suqh manner, as the State shall deem proper. Io maintain the first proposition, it must appear that the stood in such a relation to this bank and its creditors at e time these laws were passed; that it was a creditor, and 333 315 SUPREME COURT. Curran v. State of Arkansas et al. could provide by law for the payment of its debt in preference to other creditors; and secondly, that these laws do not withdraw and apply to the use of the State any greater sum than the amount of such debt. In our judgment, the State cannot be considered to have occupied this position. It had placed its bonds in the possession of the bank, with authority to sell them and hold their proceeds as capital. It had also paid over to the bank certain other funds, with an express declaration, contained in the thirteenth section of the charter, that these also were to be part of its capital, and were to have credited them to their proportion of dividend of the profits of the business. All these moneys were thus set apart, in the hands of the bank, as a fund, upon the credit of which it was to issue bills, and which was to be liable to answer the engagements of the bank contracted to its creditors, in the course of the business which it was authorized to transact for the profit of the State. Such is the necessary effect of the express declaration in the charter, that these funds constitute the capital of the bank. When this bank became insolvent, and all its assets were insufficient to perform its engagements, it is manifest that every part of these assets stood bound by the contracts which had been made with the bank upon the faith of the funds thus set apart by the charter; and it is equally clear, that the bank had no longer in its possession any capital stock belonging to the State. Whatever losses a bank sustains, are losses of the capital paid in by its stockholders; that is the only fund it has to lose. When it has become insolvent, it has lost all that fund, and has nothing belonging to its stockholders. In some sense a bank may be said to be indebted to its stockholders for the capital they have paid in. With the leave of the State, they have a right to withdraw it, after all debts are paid, and, if the State is itself the sole stockholder, it may withdraw its capital while any of it shall remain. But, from the very nature of things, it cannot withdraw capital from an insolvent bank, because it has none of their capital remaining. When insolvent, its assets belong solely to its creditors. *0-1 pn *It is unnecessary, therefore, to decide what were the rights and powers of the State, in respect to any portion of these funds, while the bank continued solvent. When it became insolvent, when its entire property was insufficient to pay its debts, it no longer had any capital stock belonging to the State, and, therefore, none could be withdrawn, without appropriating by law to the use of the State what by the charter stood pledged to creditors, and such a 334 DECEMBER TERM, 1853. 316 Curran v. State of Arkansas et al. law impairs the obligations of the contracts of the bank, and also the obligation of the contract between the State and the creditors, arising from the provisions of the charter devoting these funds to the payment of the debts of the bank. In addition to this, it must be observed that the averments of the bill, which are confessed by the demurrer, show that the whole amount of the funds mentioned in the thirteenth section of the charter, which it is claimed the State had the right to withdraw, was $350,753; and that the amount actually withdrawn and appropriated to the use of the State, was at least $400,000. On an investigation of the accounts, these averments might appear to be erroneous; but we are obliged to consider them to be true, as they are confessed on the record. Our opinion is, that these laws, which withdraw from the bank the sum of $400,000, according to the averments in the bill, cannot be supported upon the ground that the State had the right, as a creditor of the bank, to appropriate these funds to its own use. Nor can we find sufficient support for the other position, that the laws divesting the bank of its property and vesting it in the State, do not impair the obligations of the plaintiff’s contracts, because they were not passed in denial, but in furtherance of the rights of creditors, and to afford them a remedy, and for the prevention of further loss. Passing over the laws which, upon their face, not only withdrew funds from the bank, but appropriated those funds to the use of the State, and which, therefore, cannot be supposed to be in furtherance of the rights of creditors, or intended to protect them from loss, or not to be in denial of their rights, to so much of the property of the bank as was thus withdrawn, there are four acts complained of by the bill, which require examination, with a view to see whether they can be considered as remedial only, and in that point of view consistent with the obligations of the contracts of the plaintiff, rhe. first is the act of January 4, 1845. The seventeenth section of this act is as follows: “ That said financial receivers be required to receive, in whole or in part payment of any debt due the bank, the bonds of the State which were sold in good faith to put said *bank and branches in opera-^^notwithstanding the outstanding circulation of L said bank and its branches may not be taken up.” VVe cannot attribute to this provision of law any other ™eaniiig or effect than what is plainly apparent on its face. an horizes and requires the assets of the bank to be appro-pna ed. to pay debts of the State; and we cannot conceive 335 317 SUPREME COURT. Curran v. State of Arkansas et al. how this can be reconciled with the rights of creditors to those assets, or how it can consist with the execution of a trust in their favor, or how is differs from the other laws appropriating the property of this insolvent bank to the use and benefit of the State. The circumstances that these bonds were sold by the State, through the agency of the bank, do not make them debts of the bank. They were bonds under the seal of the State, signed by the governor, and countersigned by the treasurer, containing an acknowledgment that the State of Arkansas stood indebted, and a promise by the State to pay. The president and cashier of the bank are empowered to transfer them by indorsement; but no liability, even of the conditional character which arises from the indorsement of negotiable paper by the law merchant, is attached by the charter to these indorsements, and, from the nature of the case, we do not see how any such could have been intended. We do not deem it necessary to determine, whether, under the fifteenth section of the charter, the bank was made liable for the accruing interest on the bonds. It would seem that this section is merely directory to the general board, and was intended to provide for the payment of interest out of expected profits; but however this may be, to suppose that the charter intended the fund raised by the sale of these bonds, and which it held out to creditors as capital of the bank, could, at any time, be appropriated to pay these bonds, leaving the creditors, who had dealt with the bank on the faith of that capital, wholly unpaid, would be to give it a construction not supported by any provision which we have been able to discover in it, and directly in conflict with its manifest purpose and meaning. For in no fair sense can the bank be considered to have had the proceeds of these bonds as so much capital, if it was liable, at the pleasure of the State, to be swept away at any moment to pay the debts which the State had contracted to borrow it. In such a condition of things, these proceeds would be nothing more than a deposit, payable on demand ; and to call them capital, and allow the public to trust to them as such, would involve a plain contradiction.1 Indeed, upon this construction of the charter, taken in connection with the alleged right to withdraw at pleasure all the *^181 °^ier *funds deposited, the bank had no proper capital J which was bound by its contracts; and this would render it extremely difficult to maintain the validity of the charter under the tenth section of the first article of the Constitu- 1 See Veazie Bank v. Fenno, 8 Wall., 553. 336 DECEMBER TERM, 1853. 318 Curran v. State of Arkansas et al. tion of the United States, prohibiting the States from emitting bills of credit. It is well known that the power of the several States to create corporations, to issue bills, and transact business for the sole benefit of the State which appointed the corporate officers, and was alone interested in the bank, has been from time to time seriously questioned. The cases of Briscoe v. The Bank of Kentucky, 11 Pet., 257, and Barrington et al. v. The Bank of Alabama, 13 How., 12, have settled this question, in reference to such banks as were involved in those cases. But the principal ground on which such bills were distinguished from bills of credit emitted by the State, was, that they do not rest on the credit of the State, but on the credit of the corporation derived from its capital stock. But if the charter of the bank has not provided any fund, effectually chargeable with the redemption of its bills, if what is called its capital is liable to be withdrawn at the pleasure of the State, though no means of redeeming the bills should remain, then the bills rest wholly upon the faith of the State and not upon the credit of the corporation, founded on its property. We do not perceive, in the charter of the State Bank of Arkansas, an intention to create such a bank and emit such bills ; on the contrary, we think it plainly appears to have been intended to make a bank having a real capital, on the credit of which its business was to be transacted; and this intention is necessarily in conflict with the existence of the power anywhere to appropriate the funds of the bank, after it became insolvent, to pay debts of the State contracted to borrow the money which constituted that capital. By the act of December 23, 1846, the financial receivers were authorized in certain cases to pay judgment creditors in notes of non-resident debtors, provided such judgment creditors would convey to the State all lands of the bank on which they had levied ; and by another act, passed on the same day, all conveyances of real estate purchased for, or taken in payment of, any debt due to the bank, were required to be made to the State, and all such titles were declared to be vested in the State. The second section of this law is in the following words: “That the governor is hereby authorized to exchange a^y property, so taken by the said bank, for an equal amount °... . bonds of the State executed for the benefit of said in-8 Prov^e^ that such property shall not be exchanged h1 u i holders of such bonds at less prices than were allowed e oank for the *same, and that the governor be r*Q1Q u orized to make titles and give acquittances for the Vol. xv.—22 337 319 SUPREME COURT. Curran v. State of Arkansas et al. same; and this act shall take effect and be in force from and after its passage.” If this law had contained only the first section, vesting the real property of the bank in the State, and providing no remedy by which this complainant, as a creditor of the bank, could reach it, we think it would have impaired the obligation of his contracts. True, it does not touch the right of action against the bank; it only withdraws the real property from the reach of legal process, and thus affects the remedy. But it by no means follows, because a law affects only the remedy, that it does not impair the obligation of the contract. The obligation of a contract, in the sense in which those words are used in the Constitution, is that duty of performing it, which is recognized and enforced by the laws. And if the law is so changed that the means of legally enforcing this duty are materially impaired, the obligation of the contract no longer remains the same. This has been the doctrine of this court from a very early period. In Green v. Biddle, 8 Wheat., 1, Mr. Justice Washington, delivering the opinion of the court, said: “It is no answer that the acts of Kentucky now in question are regulations of the remedy and not of the right to the lands. If these acts so change the nature and extent of existing remedies as materially to impair the rights and interests of the owner, they are just as much a violation of the compact as if they directly overturned his rights and interests.” In Bronson v. Kinzie, 1 How., 311, Mr. Chief Justice Taney, delivering the opinion of the court, and speaking of the above rule, as laid down in Green v. Biddle, said: “We concur entirely in the correctness of the rule above stated. The remedy is the part of the municipal law which protects the right, and the obligation by which it enforces and maintains it. It is this protection which this clause in the Constitution was mainly intended to secure.” The difficulty of determining, in some cases, whether the change in the remedy has materially impaired the rights and interest of the creditor, must be admitted. But we do not think any such difficulty exists in this case. The decision of this court in McCracken v. Hayward, 2 How., 608, must be considered as settling this question. In that case the law under consideration provided that a sale should not be made of property levied on under an execution, unless it worn bring two thirds of its valuation by three householders. . was held that such a law so obstructed the remedy as to impair the obligation of the contract. The law now in question certainly presents a far more serious obstruction, for it wi 338 DECEMBER TERM, 1853. 319 Curran v. State of Arkansas et al. draws the real property of the bank altogether from the r reach of legal process, provides no *substituted remedy, •-and leaves the creditor, as is truly said by the Supreme Court of Arkansas, in its opinion in this case, “ in a condition in which his rights live but in grace, and his remedy in entreaty only.” But not only does this law withdraw the real property from the bank, and vest it in the State, but by the second section, the terms of which have been given, the property so withdrawn is expressly appropriated to pay the bonds of the State. An appropriation, which, as has been above stated, cannot be reconciled with the preservation of the rights of creditors, whether those rights are to be protected by existing legal remedies, or in any other manner. The same observations apply to so much of the act of the 9th of January, 1849, as required the officers of the bank to receive in payment of debts due to the bank, bonds of the State issued to obtain capital to put in operation the Real Estate Bank of the State of Arkansas, which bonds are averred in the bill to have amounted to $2,000,000. If a law which withdrew assets of the bank to pay bonds sold to raise its capital, impaired the obligation of the complainant’s contracts, it would probably not be supposed that a law applying such assets to pay bonds of the State sold to raise capital for another bank, could be free from that objection. It only remains to consider the third question : whether it appears by the record that the Supreme Court of Arkansas held these laws to be valid, and by reason thereof dismissed the complainant’s bill. Each of these laws is specifically referred to in the bill, and its operation upon the property of the bank averred, and made a subject of complaint. If a private person had received assets of the bank in the same manner they are alleged in the bill to have been received by the State, he must have been held amenable to the complainants as a creditor of the bank, in a court of equity. We have already stated that, by the local law of Arkansas, the State stands in the same predicament as a private person, in respect to being chargeable as a trustee, unless it is exempted by force of the laws in question. It necessarily follows, therefore, that the Supreme Court of the State held these laws valid, and that by force of them the State was not subject to the principles upon which it would otherwise have been chargeable. It is sufficient, to give this court jurisdiction under the 25th sec ion of the judiciary act, that it appears by the record that e question, whether a law of a State impaired the obligation 339 320 SUPREME COURT. Curran v. State of Arkansas et al. of a contract, was necessarily involved in the decision, and that such law was held to be valid, and the decision made against *the plaintiff in error by reason of its supposed J validity. Armstrong v. The Treasurer of Athens County, 16 Pet., 281; Crowell v. Randall, 10 Pet., 392 ; McKenny v. Carroll, 12 Pet., 66. The result is, that so much of each of the said laws of the State of Arkansas, as authorized and required the cancellation of the bonds of the State, given for money borrowed of the Bank of the State of Arkansas, or authorized and required the withdrawal of any part of the specie or other property of that bank, and the appropriation thereof to the use of the State, or authorized and required the application of any part of the assets or property of that bank to pay bonds issued by the State and sold to raise capital for the Bank of the State of Arkansas, or for the Real Estate Bank of the State of Arkansas, or authorized and required real property purchased for the Bank of the State of Arkansas, or taken in payment of debts due to the Bank of the State of Arkansas to be conveyed to and the title thereof vested in the State of Arkansas, impaired the obligation of contracts made with the complainant as the lawful holder and bearer of bills of the Bank of the State of Arkansas, and so were inoperative and invalid. And, consequently, the judgment of the Supreme Court of that State must be reversed, and the cause remanded, that it may be proceeded in as the Constitution of the United States requires. Mr. Justice CATRON, Mr. Justice DANIEL, and Mr. Justice NELSON, dissented. Mr. Justice CATRON. As this case comes up from a State court under the 25th section of the judiciary act, the first question presented is, whether we have jurisdiction to decide the merits; and I am of opinion, that no violation of any contract rendered, which the complainant sets up a right to recover, has occurred within the sense of the Constitution, by the laws passed by the State of Arkansas, and which laws are complained of in the bill. On the merits, I have formed no opinion, not having authority to inquire into them, as I apprehend. Mr. Justice DANIEL. From the decision of this court, just announced, I am constrained to declare my dissent. According to my apprehen-340 DECEMBER TERM, 1853. 321 Curran v. State of Arkansas et al. sion there is no legitimate ground of jurisdiction, and of course for the interference of this court in this case, within the just intent and objects of the 10th section of the 1st article of the Constitution. By the legislature of the State of Arkansas, which has *been assailed, the obligation of [-*099 no contract is denied. The claims of every stock- L holder and every noteholder of the Bank of the State of Arkansas are, in reference to that corporation, fully recognized. The utmost that can be objected to the action of the State is, that in a contest amongst the creditors of a failing corporation, the State, as one pf those creditors, and the largest creditor of the number, may have appropriated to herself a portion of the assets of that corporation greater than would have been warranted by perfect equity, or other equality, amongst all the creditors. But should this conclusion be conceded, the concession implies no attempt to deny or impair any obligation of the bank to satisfy every creditor. It might raise a question of fraud or unfairness in the action of the State in reference to the other creditors of the bank, but it carries with it no interference with the obligation or the sanctity of their contract with the corporation, whatever that might be. The mere question of fraud, in the execution of non-performance of contracts, surely the Constitution never intended to constitute as a means by which the federal authorities were to supervise the polity and acts of the State governments. Such a claim of power in the federal government would justify the interference with, and the supervision by this court of any act of the State legislatures, and of every transaction of private life, and in the necessarily imperfect attempts to exercise such a power, would encumber it with a mass of business, which would disappoint and entirely prevent the performance of its legitimate duties. ORDER. This cause came on to be heard on the transcript of the record from the Supreme Court of Arkansas, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Supreme Court in this cause be, and the same is hereby, reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Supreme court, in order that such further proceedings may be had therein, in conformity o the opinion of this court, as to law and justice, and the (institution of the United States, shall appertain. 341 323 SUPREME COURT. Anderson et al. v. Bock. ^ooo-i Reuben Anderson and Others, Plaintiffs in -I Error, v. Michael Bock. The city of New Orleans sold a lot in the city for a certain sum of money, the payment of which was not exacted, but the interest of it, payable quarterly, remained as a ground rent upon the lot. It was further stipulated, that if two of these payments should be in arrear, the city could proceed judicially for the recovery of possession, with damages, and the vendees were to forfeit their title. Six years afterwards, the city conveyed the same lot to another person, who transferred it to an assignee. The title of the first vendee could not be divested without some judicial proceeding, and the dissolution of the contract could not be inferred merely from the fact that the city had made a second conveyance. Therefore, the deed to the second vendee, and from him to his assignee, were not, of themselves, evidence to support the plea of prescription. The city, not having resumed its title in the regular mode, could not transfer either a lawful title or possession to its second vendee. The Circuit Court having instructed the jury that, in its opinion, under the written proofs and law of the case, the plea of prescription must prevail, and the written proofs not being in the record, this court cannot test the accuracy of its conclusion. This case was brought up, by writ of error, from the Circuit Court of the United States for the Eastern District of Louisiana. The facts in the case are set forth in the opinion of the court. It was submitted, on printed briefs, by Mr. Bemis, for the plaintiff in error, with a brief by Messrs. Stockton and Steele, and by Mr. Benjamin, for the defendant in error. Plaintiffs Points. I. The charge of the court was manifestly improper and illegal, as the judge stated to the jury, “ it was his opinion, that under the written proofs and law of the case, the defence of prescription, set up by the defendant, must prevail.” This was not a deduction for him to draw, but it was peculiarly the province of the jury to decide on the evidence. The defence of prescription involves both matter of fact and law; of the former the jury are exclusive judges, and of the latter they are also judges, under the instruction of the court as to what the law is. . This expression of opinion by the judge, in delivering his charge, could form, legally, no part of the charge. He does not tell the jury what the law is, but only that, as 342 DECEMBER TERM, 1853. 323 Anderson et al. v. Bock. the law stands, the proofs in the cause make out the defence of prescription. II. The court erred in charging the jury, that the act of sale from the city to John Clay, dated 18th November, 1816, and the act of sale from Clay to defendant, dated 30th January, 1823, *were of themselves evidence of possession [-*094 in the defendant and his vendor, Clay, to support the *-plea of prescription. Possession is a matter in pais, and it cannot be established by a mere paper conveyance of the property. III. The court erred in refusing to instruct the jury, as required by the plaintiffs, “ that by the acts of sale, dated 15th October, 1810, from the city of New Orleans to Sticher and Anderson, the said city transferred to Sticher and Anderson the title and possession of the property, and that neither the title nor possession thereof can be presumed to be afterwards in the city; but, on the contrary, the city must show, by proper evidence, that the title and possession again came lawfully into its hands. This was simply a requirement, on the part of the plaintiffs, that the court should instruct the jury that the elder title, emanating from the city to Sticher and Anderson, must prevail over the younger title from the city to Clay. The deeds to Sticher and Anderson were made on consideration of an annual ground rent, to be paid by them for a certain number of years, and the further consideration of a stipulated price, to be paid by them after the term for the continuance of the ground rent should have expired. This term for the continuance of the ground rent had expired many years before the institution of this suit. No complaint has been made that Sticher and Anderson did not pay the considerations stipulated in the deed to them. There can, then, be no good reason why their prior title shall not prevail over the junior title of the defendant. Defendant's Points. f biH °f exceptions complains, that “ the judge re- used to charge the jury, that, by the act of sale, dated 15th ctober, 1810, from the city of New Orleans, to Sticher and Anderson, the city transferred to them the title and possession of the property; that neither could afterwards be presumed to be in the city, but, on the contrary, the city must °Z’ii ProPe.r evidence, that the title and possession came w u ly into its hands; ” and further complains that the J ge, on the contrary, charged the jury, “ that the act of sale 343 324 SUPREME COURT. Anderson et al. v. Bock. from the city of New Orleans to John Clay, dated the 18th November, 1816, and the act of sale from Clay to defendant, dated the 30th January, 1823, were of themselves evidence of possession in the defendant, Bock, and his vendor, Clay, to support the plea of prescription set up by the defendant.” The second bill of exceptions complains that “ the judge stated to the jury, that it was his opinion, that, under the *Q9^1 wriften *proofs and law of the case, the defence of pre- -I scription, set up by the defendant, must prevail.” Now, in relation to these bills of exceptions, it is to be observed that neither of them pretends on its face to set forth all the evidence offered in the cause, but only a part of the written evidence. As regards the second bill of exceptions, therefore, it is clear that this court is without the means of determining whether the charge of the judge was correct or not; and, in the absence of such means, the presumption of law is, that the judgment of the lower court was supported by the written proofs. For aught that appears in the record, there may have been offered in evidence a written admission by the plaintiffs that the defendant had been in possession, as is alleged in the answer, for a length of time sufficient to establish prescriptive right to the property; or written contracts, receipts, or other documents, proving him to have inclosed and built upon the property, or leased it to tenants, and collected rents. Without a statement showing what the written evidence was, it is impossible to say that there was error in the charge “ that under the written proofs and law of the case, the defence of prescription must prevail.” In order to determine the propriety of the charge complained of in the first bill of exceptions, the issues presented by the pleadings must be taken into consideration. The petition alleges possession by the defendant, but asserts the possession to be unlawful. The answer admits the possession, and asserts it to have been lawful under just title for upwards of thirty years, and sets forth the deed under which the possession was acquired, to wit, the deed of 30th January, 1823. The fact of possession being thus asserted by both parties, the only question was, whether the possession was lawful, or in good faith. It appears, by the bill of exceptions, that the defendan showed, as the basis of his possession, the deed from Clay, o 30th January, 1823, being at a date twenty-seven years anterior to the institution of the suit. By reference to the act of sale to defendant, it will appear, that when it was executed, “ Michael Bock, being presen , 344 DECEMBER TERM, 1853. 325 Anderson et al. v. Bock. declared that he accepts this act of sale and conveyance, is in possession of the said property, and contented therewith.” This deed was in evidence without objection, exception, or reservation. Now the article 2455, of the Civil Code, provides that “the law considers the tradition or delivery of immovables as always accompanying the public act which transfers the property.” *The judge, therefore, had before him, r*Q9fi 1st. The admission by plaintiffs of the fact of defend- *- ant’s possession. 2d. The proof that this possession had originated in 1823, and was held by virtue of the sale made in that year, as recited in the deed itself. 3d. The legal presumption established by article 2455 of the actual delivery of the immovable sold. 4th. The absence of any allegation or pretence by plaintiffs of adverse possession in themselves or any other person tlian the defendant between the year 1823 and the institution of the suit. The article 3442 of the Civil Code provides that “he who acquires an immovable in good faith and by a just title, prescribes for it in ten years, if the real owner resides in the State, and after twenty years if the owner resides out of the State.” It is obvious, from these premises, that the sole question before the court and jury was, whether the defendant had acquired a good title by prescription, and that the court did not err in charging the jury that the defence had been established. The prayer of the plaintiff that the judge should charge the jury in relation to the effect of the sale from the city to Sticher and Anderson, was properly refused, because wholly irrelevant. The question was not whether Sticher and Anderson had acquired a valid title in 1810, but whether the defendant had subsequently acquired a good title to the same property by prescription, and the judge properly confined . is charge to the latter inquiry, the only one relevant to the b language of the charge is, that the acts of sale set up ,7 r * were themselves evidence of possession in e defendant, Bock, and his vendor, Clay, to support the plea of prescription.” Judge did not charge that these acts were conclusive an/fLProo^s’l)Ut that they were evidence of possession; a they were evidence is fully established by the terms 345 326 SUPREME COURT. Anderson et al. v. Bock. of the article 2455, above quoted. See also articles 3405, 6, 7, 3414, 3450. The point in dispute is fully settled in the jurisprudence of Louisiana. In the case of Ellis v. Prevost et al., 13 La., 230, 235, the principle is thus stated: “No physical act, in taking possession under a sale by notarial act, is necessary. The intention of the purchaser, which the law presumes, coupled with the power which the act of sale gives, vests the possession in him. The right is taken for the fact, and he is seized of the thing corporeally. Article 3405 goes on to provide that when a *3971 person has *once acquired corporeal possession, the in- -I tention which he has of possessing suffices to preserve it in him, although he may have ceased to have the thing in actual custody.” It is, therefore, respectfully submitted that the plaintiffs have failed to show error as alleged, and that there is no le^al ground for disturbing the verdict and judgment of the lower court. Mr. Justice CAMPBELL delivered the opinion of the court. The plaintiffs commenced a petitory action, as heirs at law of Thomas Anderson, to recover a lot of land in the city of New Orleans, of which they aver he died seized and that the defendant wrongfully detains. The defendant denied their claim to the property, and pleaded prescription under a just and valid title, with undisputed possession for upwards of thirty years. Upon the trial, the plaintiffs produced a conveyance of the lot by a notarial act from the city of New Orleans to Sticher and Anderson, dated in 1810, upon the consideration of fifteen hundred and eighty dollars. This sum was to remain a charge upon the lot, and the interest upon it, at the rate of six per cent, per annum, was to be paid in quarterly instalments. Upon a failure to pay two of these instalments, the city was authorized to proceed judicially for the recovery oi possession, and for the damages arising from a deterioration of the property, and the vendees were to forfeit their title. The other stipulations in this conveyance are immaterial to the decision of the case. . f The defendant relied upon a notarial act from the o New Orleans, dated in 1816, conveying the property in the same lot to one Clay, upon a contract of sale, and an ac dated in 1823 from Clay conveying the property to t e defendant. In each of these the vendees acknowle ge 346 DECEMBER TERM, 1853. 327 Anderson et al. v. Bock. that possession of the lot had been delivered at the date of the deeds. The plaintiffs requested the court to instruct the jury that the city of New Orleans, by the notarial act of 1810, had transferred to Sticher and Anderson the title and the possession of the property, and that neither the title nor the possession can be presumed to be afterwards in the city, but that the city should show that the title and possession came lawfully into its hands. This request was refused by the court, and the jury was instructed that the deeds from the city to Clay of 1816, and from Clay to the defendant in 1823, were of themselves evidence of possession in the defendant and his vendor to support the plea of prescription. The court further instructed the jury that, under the written proofs and law of the case, the plea or prescription must prevail. These instructions were excepted to, and are here assigned as error. *The conveyance from the city to Sticher and An- pogo derson, of 1810, was upon a resolutory condition. The contract between the parties was not dissolved of right by the non-fulfilment of the condition, but the party complaining of the breach might have insisted upon its dissolution, with damages, or upon a specific performance. C. C., The dissolution of the contract for the non-fulfilment of the conditions, could not be inferred merely from the fact of a subsequent conveyance by the city of the same property. The title of the city to the lot passed to Sticher and Anderson by the notarial act of 1810, and, to sustain a posterior conveyance of the city, it should have been shown, either that the first contract had been revoked, or that another title had been acquired. The court erred, therefore, in refusing the instruction requested by the plaintiffs. 2. To sustain a title by prescription to immovable property, according to either of the articles of the civil code, referred to in the pleas, the defendant was required to show ‘a public, unequivocal, continuous, and uninterrupted possession,” “ under the title of owner.” “ The possessor must have held the property in fact and in right as owner,” j oygh a Possession would suffice, if it had been preceded by the corporeal possession.” C. C., 3466, 3467, 3453; ■Derail v. Choppin, 15 La., 566. The court has been referred to the civil code, (C. C., 2455,) o prove that the claims of the articles of the code we have Ci e are fulfilled by the public acts produced by the defend-n s* This article is “that the law considers the tradition or e ivery of immovables as always accompanying the public 347 328 SUPREME COURT. Anderson et al. v. Bock. act which transfers the property. Every obstacle which the seller afterwards imposes, to prevent the corporeal possession of the buyer, is considered as a trespass.” This article was designed to declare the operation of a contract for the transfer of property when embodied in a public act, as between the parties to the act. It establishes, that the transfer is complete by the use of apt words of conveyance in such an act, without the formality of a real delivery; that the power of control and enjoyment, transferred by a grantor in such an act, is equivalent to a manual or physical tradition. So exactly the equivalent, that an “ interfering obstacle,” interposed by the grantor afterwards, may be treated as a trespass—that is, a disturbance of the possession of the grantee. This rule from the Louisiana code, corresponding with that of the code Napoleon, deviates from the rule of the Roman and feudal law, which exacted a formal delivery, to perfect the transfer of the property. *The rule is in complete harmony with the Ameri- -* can system of conveyancing, which accomplishes the cession of property, with its incidents of possession and enjoyment, without a resort to symbolical acts, or inconvenient ceremonies, by the consent of the owner, legally authenticated. This explanation of the object of the article of the code, will enable us to define the limits of its operation. A vendor cannot transfer a title, or a possession, which is not vested in him. He cannot, by his conveyance or admissions, affect the claims of persons whose title is adverse to his. It follows, therefore, that the recitals in these acts, that possession had been delivered, and that the vendor was satisfied therewith, are not evidence of that corporeal possession, which is the foundation of a prescriptive right, in a case like the present. Tropl. De Vente, § 36, 40; C. C., 2233, 2235; Emmerson Fox, 3 La., 183; EUis v. Prevost, 19 La., 251. 3. As a general rule, the possession necessary to sustain a prescription is founded upon facts, which it is the province of a jury to ascertain. Ewing v. Burnet, 11 Pet., 41; Beverly v. Burke, 9 Ga., 440. But the “ written proofs,” upon which the Circuit Court felt authorized to instruct the jury that the plea of prescription must prevail, are not exhibited in the record, and. this court cannot, therefore, test the accuracy of its conclusion. For the errors in the charge that we have noticed, t e judgment of the Circuit Court must be reversed, and t e cause remanded for further proceedings. 348 DECEMBER TERM, 1853. 329 Winans v. Denmead. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Eastern District of Louisiana, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause, be, and the same is hereby, reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions for further proceedings to be had therein, in conformity to the opinion of this court. *Ross Winans, Plaintiff in Error, v. Adam, r*non Edward, and Talbot Denmead. L A patent was taken out for making the body of a burden railroad car of sheet iron, the upper part being cylindrical, and the lower part in the form of a frustum of a cone, the under edge of which has a flange secured upon it, to which flange a movable bottom is attached. The claim was this. “ What I claim as my invention and desire to secure by letters-patent, is, making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which also the lower part is so reduced as to pass down within the truck frame and between the axles, to lower the centre of gravity of the load without diminishing the capacity of the car as described. I also claim extending the body of the car below the connecting pieces of the truck frame and the line of draught, by passing the connecting bars of the truck frame and the draught bar, through the body of the car substantially described.” Ihis patent was not for merely changing the form of a machine, but by means of such change to introduce and employ other mechanical principles or natural powers, or a new mode of operation, and thus attain a new and useful result. Hence, where, in a suit brought by the patentee against persons who had constructed octagonal and pyramidal cars, the District Judge ruled that the patent was good for conical bodies, but not for rectilinear bodies, this ruling was erroneous. ,e ?trYiCture’ the mode of operation, and the result attained, were the same m both, and the specification claimed in the patent covered the rectilinear ars- With this explanation of the patent, it should have been left to the J ry to decide the question of infringement as a question of fact.1 iao Sewa11 v- Jones, 1 Otto, Eddy v. Dennis, 5 Id., 569; Mil-Gl^e Go‘ v- Upton, 1 Bann. « A., 514; Pearl v. Ocean Mills, 2 Id., 475; Union Paper Bag frc. Co. v. Pultz W. Co., 3 Id., 410; Sawyer v. Miller, 12 Fed. Rep., 727; Burke v. Partridge, 58 N. H., 351. 349 330 SUPREME COURT. Winans v. Denmead. This case was brought by. writ of error from the Circuit Court of the United States for the District of Maryland. It was an action brought by Ross Winans for the infringement of a patent-right. The jury, under the instruction of the District Judge, the late Judge Glenn, then sitting alone, found a verdict for the defendants ; and the plaintiff brought the case to this court by a writ of error. The nature of the case is set forth in the explanatory statement prefixed to the argument of the counsel for the plaintiff in error. It was argued by Mr. Latrobe, for the plaintiff in error, and by Mr. Campbell, for the defendant in error. Statement and points of plaintiff in error. On the 29th June, 1847, Ross Winans, the plaintiff in error, obtained letters-patent of the United States, for a new and useful improvement in cars for transportation of coal, &c. The occasion for the invention thus patented, and the principle of it, are well set forth in the specification, thus,— “ The transportation of coal, and all other heavy articles in lumps, has been attended with great injury to the cars, Requiring the bodies to be constructed with great -> strength, to resist the outward pressure on the sides, as well as the vertical pressure on the bottom, due, not only to the weight of the mass, but the mobility of the lumps amongst each other, tending ‘ to pack,’ as it is technically termed. Experience has shown, that cars on the old mode of construction cannot be made to carry a load greater than their own weight; but, by my improvement, I am enabled to make cars of greater durability than those heretofore made, which will transport double their weight of coal. “ The principle of my invention, by which I am enabled to obtain this important end, consists in making the body, or a portion thereof, conical, by which the area of the bottom is reduced, and the load exerts an equal strain on all parts, and which does not tend to change the form, but to exert an equal strain in the direction of the circle; at the same time this form presents the important advantage, by the reduced size of the lower part thereof, to extend down within the truck and between the axles, thereby lowering the centre of gravity of the load.” The specification then gives a detailed description of the 350 DECEMBER TERM, 1853. 331 Winans v. Denmead. mode of constructing the cars in question, and proceeds thus:— “ What I claim as my invention, and desire to secure by letters-patent is, making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which also the lower part is so reduced as to pass down within the truck frame, and between the axles, to lower the centre of gravity of the load, without diminishing the capacity of the car as described.” And the specification concludes with a claim for a portion of the construction, not important in this connection. From the testimony it appears that cars, constructed by the plaintiff, in accordance with the specification, while they weighed but 5,750 lbs. each, carried 18,550 lbs. of coal— making the weight of the load, in proportion to the weight of the car, as 3.3 to 1—that the thickness of the sheet iron used in the construction of the bodies was but 3.32ds of an inch, and that the dimensions of the band around the top were | of an inch by 2 inches; and it is further shown, in illustration of the importance of the invention, that the plaintiff had constructed a model car, which, weighing but 2| tons, carried, nevertheless, 9| tons of coal “in perfect safety and satisfactorily from Cumberland to Baltimore.” The proportion of the weight of the car, in this instance, to the weight of coal carried in it, was as 1 to 4 nearly. It appears further, from the testimony, generally, that *the cars referred r*ooo to' were used in the transportation of coal from the mines near Cumberland to Baltimore. It then appears that the defendants, “ in view for a call for cars from the mining roads near Cumberland,” in 1849, ’50, required their draftsman, Cochrane, to get up a car that would suit their purposes; that he went to the Reading road, and “ finding nothing there, returned to Baltimore, and went to the plaintiff’s shops, where he saw a car nearly finished, which he examined and measured.” That it first occurred to him to make a square car, but that, as this would interfere with the wheels, he made an octagonal one. , Another witness proves, that the iron used in the car, thus bunt by the defendants, was of the same thickness as that used by the plaintiff, to wit, 3.32ds of an inch, while the and around the top was of the same thickness,—to wit, | of an meh, and 1| inches in width. 351 332 SUPREME COURT. Winans v. Denmead. It thus appears that a patent was granted, in 1847, to Ross Winans for a car for carrying coal, whose merits may be summed up thus;—that it carried more coal in proportion to its own weight than any car previously in use, and. that the load instead of distorting it, preserved it in shape, acting as a framing. These eminent advantages, which increased the available power of the locomotive engine, looking to revenue on coal as a freight, from 50 to 100 per cent, were to be attributed to the peculiar shape of the car body, consisting of a frustum of a cone, which permitted the use of iron, as thin as has been described, lessening, in proportion, the weight of the car, or the weight, the transportation of which by the locomotive gave no return in revenue; and it appears that, in view of obtaining the best results from his invention, the plaintiff, iu 1849, ’50, at the instance of the witness Pratt, perfected a model car for certain mining roads near Cumberland;—that this model car was examined and measured by the defendant’s draftsman, to aid him in getting up coal cars for other mining companies in 1849 and 1850; and, subsequently, cars of the same weight of material in the bodies, which differed from the plaintiff’s in this only, that while the latter were cylindrical and conical, the others were octagonal and pyramidal,—were built by the defendants, to the number of 24. Believing that the cars thus built by the defendants were built in palpable violation of his patent, the plaintiff brought the present suit. It will be seen, by examining the record, that the main question before the jury was, whether the cars, so built by the defendants, were substantially the same in principle and mode of operation with the car described and claimed by the *plaintiff in his specification, and experts were exam- -* ined on both sides on this point. On the part of the defendant, it was contended, that the cars of the defendants were octagonal in shape, while the plaintiff’s were cylindrical. On the part of the plaintiff it was insisted, that this was immaterial, provided the octagonal car obtained the same useful results, through the operation of the same principles in its construction ; and it was suggested that, if the original construction of the body in right lines saved the infringement, an hundred-sided polygon would be without the patent; an also that, in point of fact, even the conical car was oftener a polygon than a true curve, owing to the character of the material from which it was built; and that if, by accident, i 352 DECEMBER TERM, 1853. 333 Winans v. Denmead. came from the shops a true theoretical cone, a day or two’s use made a polygon of it; and that the immediate tendency of the load of coal, when put into an octagon car, was to bulge out its sides and convert it into a conical one. All of which was urged for the purpose of showing that the question was necessarily a question as to whether the change of form was colorable or substantial—a question of fact, which it belonged to the jury to determine. It is not necessary, in this statement, and in view of the questions arising on this appeal, to go into evidence in regard to the merely colorable difference of construction in detail. All the witnesses, on both sides, proved that the advantages which Winans proposed to obtain were substantially obtained in the defendant’s cars—the plaintiff’s witnesses swearing to the fact directly, and the defendant’s witnesses admitting it on cross-examination ; and the only testimony quoted now is that of the defendant’s own and leading witness. “ That the advantage of a reduced bottom of the car thus obtained, whether the car was conical or octagonal; that the strengthening of the bottom, due to the adoption of the conical form, was the same when the octagonal form was adopted or the circular ; that the circular form was the best to resist the pressure, as, for instance, in a steam boiler, and an octagonal one better than the square form; that the octagonal car was not better than the conical car; that for practical purposes, one was as good as the other; that a polygon of many sides would be equivalent to a circle ; that the octagon car, practically, was as good as the conical one ; and that, substantially, witness saw no difference between the two.” The testimony must indeed be all one way, where the plaintiff is willing to rest his case on the defendant’s own showing. In the view of the plaintiff below, there were two questions ; the first for the court, being the construction of the patent; the ^second for the jury, being the substan-tial or only colorable difference between the cars in *-principle and mode of operation. The plaintiff prayed the Circuit Court (his Honor, the late Judge Glenn, sitting alone) accordingly. In framing the prayer for the court’s construction of the specification, the language of the specification was adopted, in describing the object of the invention ; and the court were as ed to say to the jury, “ that what they had to look at was no simply whether, in form and circumstances, which may be more or less immaterial, that which had been done by the de- Vol. xv.—23 353 334 SUPREME COURT. Winans i-. Denmead. fendant varied from the specification of the plaintiffs patent, but to see whether, in substance and effect, the defendants, having the same object in view as that set forth in the plaintiff’s specification, had, since the date thereof, constructed cars which, substantially, on the same principle and on the same mode of operation, accomplished the same result.” And to give more certainty to the prayer, the plaintiff added the instruction as prayed for by him, “■that to entitle the plaintiff to a verdict, it was not necessary that the body of the defendant’s cars should be conical, in the exact definition of the term, provided the jury should believe that the form adopted by the defendants accomplished the same result, substantially, with that in view of the plaintiff, and upon substantially the same principle, and in the same mode of operation.” The language of the first part of the prayer, here quoted, was taken verbatim, nearly, from the charge of Sir N. C. Tin-dal to the jury in the case of Walton v. Potter and Horsfall, 1 Webs. Pat. Cas., 587. This was a case where the plaintiff’s patent was for the substitution of sheets of India rubber for leather for the insertion of the teeth, in the manufacture of cards for carding wool; and the infringement lay in the use of cloth saturated with a solution of India rubber for the same purpose; and the court, after determining the construction of the specification, gave substantially the same instruction that the plaintiff prayed for here. It is in this case that C. J. Tindal says, “ That if a man has, by dint of his own genius and discovery, after a patent has been obtained, been able to give the public, without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose. But he has no right whatever to take, if I may so say, a leaf out of his neighbor s book, &c.” , It would be hard indeed to find a case where the court s decision, applied to the facts in this cause, more completely negatived the right, set up by the defendants, to build the cars *which they did build; for here the taking of the J leaf out of the book is not left to inference, but day and date are given for the act. To the same point is the case Huddart v. Grimshaw, also cited in the court below. 1 Webs. Pat. Cas., 95. Here a patent had been obtained for making rope, a par of the process being the passage of the strands, while being twisted, through a tube; and it appeared that they had oi 354 DECEMBER TERM, 1853. 335 Winans v. Denmead. merly passed through a hole in a plate. If the tube and the plate were the same, substantially, the difference being colorable only, then the patent was void, otherwise it was good ; and the question was left to the jury, who found for the plaintiff. To the same point is the case of Russell v. Cowley $ Dixon, 1 Webs. Pat. Cas., 463. This was the case of a patent for welding iron tubes, by drawing them, at a welding heat, through a conical hole. The infringement was the passing them between rollers; and the question of colorable or substantial difference, was referred to the jury. So in the case of Morgan n. Seaward, 1 Webs. Pat. Cas., 170, which was upon Gallaway’s patent for paddle wheels of steam-vessels, and where the question of infringement having arisen, the Court, Alderson, B., told the jury “that the question would be, simply, whether the defendant’s machine was only colorably different; that is, whether it differed merely in the substitution of mechanical equivalents for the contrivances which were resorted to by the patentee.” And after referring to points of construction, the court continues, “ Therefore, the two machines were alike in principle ; one man was the first inventor of the principle, and the other has adopted it; and though he may have carried it into effect by substituting one mechanical equivalent for another, still you (the jury) are to look to the substance, and not the mere form, and if it is in substance an infringement, you ought to find so.” So, too, in the case of Crossley v. Beverly, growing out of Clegg’s patent for a gas meter; and referred to by Alderson, B., in the case of Jupe v. Pratt and others, 1 Webs. Pat. Cas., 144, as follows : “ There never was a more instructive case than that. I remember very well the argument put by the Lord Chief Baron, who led on that case, and succeeded. There never were two things to the eye more different than the plaintiff’s invention, and what the defendant had done in contravention of his patent-right. The plaintiff’s invention was different in form; different in construction; it agreed with it only in one thing, and that was, by moving in the water. A certain point was made to open either before or a ter, so as to shut up another, and the *gas was made o pass through this opening; passing through it, it *-was made to revolve it; the scientific men, all of them, said, ' V I?on\en^ a practical, scientific man has got that principle 4.18 . . ’ he can multiply, without end, the forms in ■which rnat principle can be made to operate.” 355 336 SUPREME COURT. Winans v. Denmead. As in the case under discussion ; the moment a practical, scientific man is furnished with the idea of giving to the car a shape which will, by dispensing with the framing ordinarily used, enable him to make it lighter in proportion to its load, than it has ever been made before, he can multiply without end the forms in which this principle can be made to operate. He can make the car a polygon of an hundred sides, of twenty sides, or of eight sides. He can vary the angle of the cone, or pyramid, through which the coal is discharged, ad infinitum. He can make the opening at the bottom larger or smaller to please his fancy. He can avail himself or not of the advantage of lowering the car, in position, so as to lower the centre of gravity. Still the question must always be, whether, whatever the shape he adopts, he is not availing himself of the principle first suggested by the patentee; a question which, in a court of law, is at all times a question not for the court, but the jury; after the former shall have given to the specification that construction which is to govern the latter in determining whether the infringement complained of falls, substantially, in principle and mode of operation, within the plaintiff’s patent. The authorities here cited, and which were relied on in the court below, are held to sustain the prayer of the plaintiff; that, having pronounced upon the construction of the specification, the question of infringement should be left to the jury. The court below thought differently’, however, and, rejecting the prayers of both plaintiff and defendants, instructed the jury, “ That while the patent is good for what is described therein ; a conical body in whole or in part, supported in any of the modes indicated for a mode of sustaining a conical body on a carriage or truck, and drawing the same, and for those principles which are due alone to conical vehicles and not to rectilinear bodies; and it being admitted that the defendant’s car was entirely rectilinear, that there was no infringement of the plaintiff’s patent.” See Record, pages 16,17. . , . . Upon this instruction nothing was left for the jury but to render a verdict for the defendant. The court had not on y settled the construction, but the infringement also. , The present appeal is from this decision of the late distnc judge. The points of the plaintiff in error are, , ., 1. That the court below erred, in the construction wnie i *gave to the specification, should, it be held that is J construction limited the plaintiff to the strictly conic form. 356 DECEMBER TERM, 1853. 337’ Winans v. Denmead. And upon this point the authority relied on is the patent itself. 2. That the court below erred, even supposing that its construction of the specification was correct, in excluding the inquiry whether the cars of the defendants were not substantially the same in principle and mode of operation with those of the plaintiff; admitting that these last were rectilinear in their sections and not curvilinear. And upon this point the authorities relied on are, Walton v. Potter, 1 Webs. Pat. Cas., 587; Huddart v. Grimshaw, Id., 95; Jupe v. Pratt, citing Crossley v. Beverly, Id., 144; Morgan n. Seaward, Id., 170; Russel v. Crowley, Id., 463; Phil, on Pat., 125, 6, 7. (Infringement.) Curtis on Pat., 263, 265, 264, 5, 268; citing Wyeth v. Stone, 1 Story, 273; OdiorneN. Winldey, 2 Gall., 51; Gray v. James, Pet. C. C., 394; Bovill v. Moore, Dav. Pat. Cas., 361. 3. The court below erred in taking the question of fact from the jury. Upon which point the authorities already cited are relied on. Defendant's Points. The defendant in error submits that the court below was right in refusing the prayer on the other side and giving the instruction which it did. 1. As to the rejected prayer of the plaintiff. This prayer asserted the essence of the invention to consist in the conical form adopted by the patentee, and rightly so asserted, but the conclusion thence drawn was a non sequitur. It was that any other form was a violation. Had the patent claimed the application of a principle operating through the form of a cone, and more or less through other forms, and claimed the principle or mode of operation through whatever shape permitted it, there would have been some ground for the deduction. But the claim is confined to a single form, and only through and by that form to the principles which it embodies; and if, out of many forms embodying more or less perfectly the same mode of operation, the plaintiff in error a$ made his choice of the best, he is confined to that choice and the rejection which it involves of all other forms less e icitous. It may be admitted, without hesitation, that the su stitution of mechanical or chemical equivalents, as they are called, will not affect the rights of a patentee, but the cases in which this principle holds are where the modus operand! embraces more than a single way to reach the de~ 357 337 SUPREME COURT. Winans v. Denmead. sired end. Where the invention consists of a principle *ooo-j embodied in *a single form, the form is the principle -• and the principle the form, and there can be no violation of the principle without the use of the form. Davis v. Palmer, 2 Brock., 309. 2. As to the court’s instruction. The construction of the patent was exclusively for the judge. He construed it correctly as embracing only a curvilinear form. It necessarily followed that, as the infringements relied on consisted only in the construction of rectilinear forms, there was no evidence to go to the jury of any violation of the patent, and it was proper in him so to instruct them. Grreenleaf v. Birth, 9 Pet., 292. Mr. Justice CURTIS delivered the opinion of the court. This is a writ of error to the Circuit Court of the United States, for the District of Maryland. The plaintiff in error brought his action in that court for an infringement of exclusive right to make, use, and sell “ an improvement in cars for the transportation of coal,” &c., granted to him by letters-patent, bearing date on the 26th day of June, 1847; and, the judgment of that court being for the defendants, he has brought the record here by this writ of error. It appears, by the bill of exceptions, that the letters-patent declared on were duly issued, and that their validity was not questioned; but the defendants denied that they had infringed upon the exclusive right of the plaintiff. On such a trial, two questions arise. The first is, what is the thing patented; the second, has that thing been constructed, used, or sold by the defendants. The first is a question of law, to be determined by the court, construing the letters-patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury. In this case it is alleged the court construed the specification of claim erroneously, and thereby withdrew from the jury questions which it was their province to decide. This renders it necessary to examine the letters-patent, and the schedule annexed to them, to see whether their construction by the Circuit Court was correct. In this, as in most patent cases, founded on alleged improvements in machines, in order to determine what is the thing patented, it is necessary to inquire. 1. What is the structure or device, described by the patentee, as embodying his invention. 358 DECEMBER TERM, 1853. 338 Winans v. Denmead. 2. What mode of operation is introduced and employed by this structure or device. 3. What result is attained by means of this mode of operation. *4. Does the specification of claim cover the de- r*ooq scribed mode of operation by which the result is at- *-tained ? Without going into unnecessary details, or referring to drawings, it may be stated that the structure, described by this patent, is the body of a burden railroad car, made of sheet iron, the upper part being cylindrical, and the lower part in the form of a frustum of a cone, the under edge of which has a flange secured upon it, to which flange a movable bottom is attached. This bottom is made movable, in order to discharge the load through the aperture left by removing it. To understand the mode of operation introduced and employed by means of this form of the car body, it is only necessary to state, what appears on the face of the specification, and was testified to by experts at the trial as correct, that, by reason of the circular form of the car body, the pressure of the load outwards was equal in every direction, and thus the load supported itself in a great degree; that, by making the lower part conical, this principle of action operated throughout the car, with the exception of the small space to which the movable bottom was attached ; that, being conical, the lower part of the car could be carried down below the truck, between the wheels, thus lowering the centre of gravity of the load; that the pressure outwards upon all parts of the circle being equal, the tensile strength of the iron was used to a much greater degree than in a car of a square form; and, finally, that this form of the lower part of the car facilitated the complete discharge of the load through the aperture, when the bottom was removed. It thus appears that, by means of this change of form, the patentee has introduced a mode of operation not before employed in burden cars, that is to say, nearly equal pressure in all directions by the entire load, save that small part which rests on the movable bottom ; the effects of which are, that the load, in a great degree supports itself, and the tensile strength of the iron is used, while at the same time, by reason of the same form, the centre of gravity of the load is depressed, and its discharge facilitated. The practical result attained by this mode of operation is cori ectly described by the patentee; for the uncontradicted evidence at the trial showed that he had not exaggerated 359 339 SUPREME COURT. Winans v. Denmead. the practical advantage of his invention. The specification states: “ The transportation of coal, and all other heavy articles in lumps, has been attended with great injury to the cars, requiring the bodies to be constructed with great strength to resist the outward pressure on the sides, as well as the vertical pressure on the bottom, due not only to the weight of the mass, but the mobility of the lumps among each other tend-*04a-i ing to‘pack,’as *itis technically termed. Experienc'? -I has shown that cars, on the old mode of construction, cannot be made to carry a load greater than its own weight; but, by my improvement, I am enabled to make cars of greater durability than those heretofore made, which will transport double their own weight of coal,” &c. Having thus ascertained what is the structure described, the mode of operation it embodies, and the practical result attained, the next inquiry is, does the specification of claim cover this mode of operation, by which this result is effected? It was upon this question the case turned at the trial in the Circuit Court. The testimony showed that the defendants had made cars similar to the plaintiff’s, except that the form was octagonal instead of circular. There was evidence tending to prove that, considered in reference to the practical uses of such a car, the octagonal car was substantially the same as the circular. Amongst other witnesses upon this point was James Millholland, who was called by the defendants. He testified. “ That the advantage of a reduced bottom of the car was obtained, whether the car was conical or octagonal; that the strengthening of the bottom, due to the adoption of a conical form, was the same when the octagonal form was adopted, or the circular. That the circular form was the best to resist the pressure, as, for instance, in a steam boiler, and an octagonal one better than the square form ; that the octagonal car was not better than the conical car; that, for practical purposes, one was as good as the other; that a polygon of many sides would be equivalent to a circle; that the octagon car, practically, was as good as the conical ones; and that, substantially, the witness saw no difference between the two. The district judge, who presided at the trial, ruled, That while the patent is good for what is described therein, a conical body, in whole or in part, supported in any of the modes indicated for a mode of sustaining a conical body on a carriage or truck, and drawing the same, and to those principles which were due alone to conical vehicles, and. not o rectilinear bodies, and it being admitted that the defendan s 360 DECEMBER TERM, 1853. 340 Winans v. Denmead. car was entirely rectilinear, that there was no infringement of the plaintiff’s patent. The substance of this ruling was, that the claim was limited to the particular geometrical form mentioned in the specification ; and as the defendants had not made cars in that particular form, there could be no infringement, even if the cars made by the defendants attained the same result by employing, what was in fact, the same mode of operation as that described by the patentee. We think this ruling was erroneous. *Under our law a patent cannot be granted merely for a change of form. The act of February 21, 1793, *-§ 2, so declared in express terms; and though this declaratory law was not reenacted in the Patent Act of 1836, it is a principle which necessarily makes part of every system of law granting patents for new inventions. Merely to change the form of a machine is the work of a constructor, not of an inventor; such a change cannot be deemed an invention. Nor does the plaintiff’s patent rest upon such a change. To change the form of an existing machine, and by means of such change to introduce and employ other mechanical principles or natural powers, or, as it is termed, a new mode of operation, and thus attain a new and useful result, is the subject of a patent. Such is the basis on which the plaintiff’s patent rests. Its substance is a new mode of operation, by means of which a new result is obtained. It is this new mode of operation which gives it the character of an invention, and entitles the inventor to a patent; and this new mode of operation is, in view of the patent law, the thing entitled to protection. The patentee may, and should, so frame his specification of claim as to cover this new mode of operation which he has invented; and the only question in this case is, whether he has done so; or whether he has restricted his claim to one particular geometrical form. There being evidence in the case tending to show that other forms do in fact embody the plaintiff’s mode of operation, and, by means of it, produce the same new and useful result, the question is, whether the patentee has limited his claim to one out of the several forms which thus embody his invention. Now,. while it is undoubtedly true, that the patentee may so restrict his claim as to cover less than what he invented, or may limit it to one particular form of machine, excluding all other forms, though they also embody his invention, yet such an interpretation should not be put upon his claim if it Caif be construed otherwise, and this for two reasons: Because the reasonable presumption is, that having a 361 341 SUPREME COURT. Winans v. Denmead. just right to cover and protect his whole invention, he intended to do so. Haworth v. Hardcastle, 1 Webs. Pat. Cas., 484. 2. Because specifications are to be construed liberally, in accordance with the design of the Constitution and the patent laws of the United States, to promote the progress of the useful arts, and allow inventors to retain to their own use, not any thing which is matter of common right, but what they themselves have created. Grant v. Raymond, 6 Pet., 218; Ames v. Howard, 1 Sumn., 482, 485; Blanchard v. Sprague, 3 Id., 535, 539; Bavoll v. Brown, 1 Woodb. & M., *8421 Parker v< *Raworth, 4 McLean, 372; Le Roy v. Tatham, 14 How., 181, and opinion of Parke, Baron, there quoted; Neilson v. Harford, 1 Webs. Pat. Cas., 341; Russell v. Crowley, Id., 470; Burden n. Winslow (decided at the present term), ante, *252. The claim of the plaintiff is in the following words: “What I claim as my invention, and desire to secure by letters-patent, is making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which, also, the lower part is so reduced as to pass down within the truck frame and between the axles, to lower the centre of gravity of the load without diminishing the capacity of the car as described. “I also claim extending the body of the car below the connecting pieces of the truck frame, and the line of draught, by passing the connecting bars of the truck frame, and the draught bar, through the body of the car, substantially as described.” It is generally true, when a patentee describes a machine, and then claims it as described, that he is understood to intend to claim, and does by law actually cover, not only the precise forms he had described, but all other forms which embody his invention ; it being a familiar rule that, to. copy the principle or mode of operation described, is an infringement, although such copy should be totally unlike the original in form or proportions. Why should not this rule be applied to.this case? It is not sufficient to distinguish this case to say, that here the invention consists in a change of form, and the patentee has claimed one form only. Patentable improvements in machinery are almost always made by changing some one or more forms- of one or more parts, and thereby introducing some mechanical principle or 362 DECEMBER TERM, 1853 342 Winans v. Denmead. mode of action not previously existing in the machine, and so securing a new or improved result. And, in the numerous cases in which it has been held, that to copy the patentee’s mode of operation was an infringement, the infringer had got forms and proportions not described, and not in terms claimed. If it were not so, no question of infringement could arise. If the machine complained of were a copy, in form, of the machine described in the specification, of course it would be .at once seen to be an infringement. It could be nothing else. It is only ingenious diversities of form and proportion, presenting the appearance of something unlike the thing patented, which give rise to questions; and the property of inventors would be valueless, if it *were enough for the defendant to say, your improvement consisted in *-a change of form ; you describe and claim but one form; I have not taken that, and so have not infringed. The answer is, my improvement did not consist in a change of form, but in the new employment of principles or powers, in a new mode of operation, embodied in a form by means of which a new or better result is produced; it was this which constituted my invention; this you have copied, changing only the form; and that answer is justly applicable to this patent. Undoubtedly there may be cases in which the letters-patent do include only the particular form described and claimed. Davis v. Palmer, 2 Brock. 309, seems to have been one of those cases. But they are in entire accordance with what is above stated. The reason why such a patent covers only one geometrical form, is not that the patentee has described and claimed that form only; it is because that form only is capable of embodying his invention; and, consequently, if the form is not copied, the invention is not used. Where form and substance are inseparable, it is enough to look at the form only. Where they are separable ; where the whole substance of the invention maybe copied in a different form, it is the duty of courts and juries to look through the form for the substance of the invention—for that which entitled the inventor to his patent, and which the patent was designed to secure ; where that is found, there is an infringement ; and it is not a defence, that it is embodied in a form not described, and in terms claimed by the patentee. Patentees sometimes add to their claims an express declaration, to the effect that the claim extends to the thing patented, however its form or proportions may be varied. nt this is unnecessary. The law so interprets the claim 363 343 SUPREME COURT. Winans v. Denmead. without the addition of these words. The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions. And, therefore, the patentee, having described his invention, and shown its principles, and claimed it in that form which most perfectly embodies it, is, in contemplation of law, deemed to claim every form in which his invention may be copied, unless he manifests an intention to disclaim some of those forms. Indeed it is difficult to perceive how any other rule could be applied, practically, to cases like this. How is a question of infringement of this patent to be tried? It may safely be assumed, that neither the patentee nor any other constructor has made, or will make, a car exactly circular. In practice, deviations from a true circle will always occur. How near to a *circle, then, must a car be, in order to infringe? -I May it be slightly elliptical, or otherwise depart from a true circle, and, if so, how far? In our judgment, the only answer that can be given to these questions is, that it must be so near to a true circle as substantially to embody the patentee’s mode of operation, and thereby attain the same kind of result as was reached by his invention. It is not necessary that the defendant’s cars should employ the plaintiff’s invention to as good advantage as he employed it, or that the result should be precisely the same in degree. It must be the same in kind, and effected by the employment of his mode of operation in substance. Whether, in point of fact, the defendant’s cars did copy the plaintiff’s invention, in the sense above explained, is a question for the jury, and the court below erred in not leaving that question to them upon the evidence in the case, which tended to prove the affirmative. The judgment of the court below must be reversed. Mr. Chief Justice TANEY, Mr. Justice CATRON, Mr. Justice DANIEL, and Mr. Justice CAMPBELL, dissented. Mr. Justice CAMPBELL. I dissent from the opinion o’f the court in this case. The plaintiff claims to have designed and constructe a car for the transportation of coal on railroads which s a carry the heaviest load, in proportion to its own weight. „ His design consists in the adoption of the “ conical orm “for the body of the car,” “whereby the weight of the load presses equally in all directions”; does not “tend to c an£ the form of the car”; permits it “to extend down wi 364 DECEMBER TERM, 1853. 344 Winans v. Denmead. the truck,” lowering “the centre of gravity of the load,” and by its reduced size at the bottom adding to its strength and durability. He claims as his invention, and it is the whole of the change which he has made in the manufacture of cars, “ the making of the body of the car in the form of the frustum of a cone.” It is agreed that a circle contains a greater area than any figure of the same perimeter; that the conical form is best suited to resist pressure from within, and that the reduced size at the bottom of the car is favorable to its strength. The introduction of the cars of the plaintiff, upon the railroad, for the transportation of coal, was attended by a great increase of the loads in proportion to the weight of the car. The merits of the design are frankly conceded. Nevertheless, it is notorious, that there does exist a very great variety of vessels in common domestic use, “ of a conical form,” or, “of the form of the frustum of a cone,” for the reception and transportation of articles of prime *necessity and constant demand, such as water, coal, food, clothing, *-&c. It is also true that the properties of the circle, and of circular forms alluded to in the patent of the plaintiff, are understood, and appreciated, and have been applied in every department of mechanic art. One cannot doubt that a requisition from the transportation companies for cars of a diminished weight, and an increased capacity, upon the machinists and engineers connected with the business, w’ould have been answered promptly by a suggestion of a change in the form of the car. The merit of the plaintiff seems to consist in the perfection of his design, and his clear statement of the scientific principle it contains. There arises in my mind a strong if not insuperable objection to the admission of the claim, in the patent for “the conical form.” or the form of the frustum of a cone, as an invention. Or that any machinist or engineer can appropriate by patent a form whose properties are universally understood, and which is in very common use, in consequence of those properties, for purposes strictly analogous. The authority of adjudged cases seems to me strongly opposed to the claim. Hotchkiss v. Greenwood, 11 How., 249; Losh n. Hague, 1 Webs. Pat. Cas., 207 ; Winans v. Providence Railroad Company, 2 Story, 412: 2 Id., 190; 2 Carr. & K., 1022; 3 Wels. H. & G., 427. Conceding, however, that the invention was patentable, and this seems to have been conceded in the Circuit Court, the inquiry is, what is the extent of the claim? The plaintiff professes to have made an improvement in the form of a 365 345 SUPREME COURT. Winans v. Denmead. vehicle, which has been a long time in use, and exists in a variety of forms. He professes to have discovered the precise form, most fitted for the objects in view. He describes this form, as a matter of his invention, and the principle he develops applies to no other form. For this he claims his patent. We are authorized to conclude, that his precise and definite specification and claim were designed to ascertain exactly the limits of his invention. Davis n. Palmer, 2 Brock., 298. The car of the defendants is of an octagonal form, with an octagonal pyramidical base. There was no contradiction, in the evidence given at the trial, in reference to its description, nor as to the substantial effects of its use and operation. In the size, thickness of the metal employed in its construction, weight, and substantial and profitable results, the one car does not materially vary from the other. The difference consists in the form, and in that, it is visible and palpable. The Circuit Court, acting upon these facts, of which there was no dispute, instructed the jury that an infringement of the plaintiff’s patent had not taken place. I do not find the ^question before the court a compound question of law J and fact. The facts were all ascertained, and upon no construction of those facts was the plaintiff, in my opinion, entitled to a judgment. In theory, the plaintiff’s car is superior to all others.. His car displays the qualities which his specification distinguishes. The equal pressure of the load in all directions; the tendency to preserve the form, notwithstanding the pressure of the load; the absence of the cross strain ; the lowering of the centre of the gravity of the load,—are advantages which it possesses in a superior degree to that of the defendants . Yet the experts say that there is no appreciable difference in the substantial results afforded by the two. The cause for this must be looked for in a source extrinsic to the mere form of the vehicles. Nor is it difficult to detect the cause for this identity in the results in such a source. The coarse, heavy, cumbrous operations of coal transportation do not admit of the manufacture of cars upon nice mathematical formulas, nor can the loads be adjusted with much reference to exactness. There is a liability to violent percussions and extraordinary strains, which must be provided for by an excess in the weight and thickness of the material used. Then, unless the difference in the weight of the load is great, there will be no correspondent difference in the receipts of the transportation companies. ; t The patentee, not exaggerating the theoretical superior! y 366 DECEMBER TERM, 1853. 346 Winans v. Denmead. of the form of his car, overlooked those facts which reduced its practical value to the level of cars of a form widely variant from his own. The object of this suit is to repair that defect of observation. It is, that this court shall extend, by construction, the scope and operation of his patent, to embrace every form which in practice will yield a result substantially equal or approximate to his own. In the instruction asked for by the plaintiff, “ form and circumstances ” are treated as more or less immaterial, but the verdict is claimed if the defendants have constructed cars “which, substantially on the same principle and in the same mode of operation, accomplish the same result.” The principle stated in the patent applies only to circular forms. The modes of operation in coal transportation have experienced no change from the skill of the plaintiff, except by the change from the rectilineal figure to the circular. The defendant adheres to the rectilineal form. The result accomplished by the use of the two cars is the same—a more economical transportation of coal. This result it is that the *plaintiff desires to appropriate, but this cannot be permitted. Curtis on Pat., § 4, 26, 27, 86, 87, 88; 2 L Story, 408, 411. In the case of Aiken v. Bemis, 3 Woodb. & M., 349, the learned judge said, “ When a patentee chooses to cover with his patent the material of which a part of his machine is composed, he entirely endangers his right to prosecute when a different and inferior material is employed, and one which he himself, after repeated experiment, had rejected.” The plaintiff confines his claim to the use of the conical form, and excludes from his specification any allusion to any other. He must have done so advisedly. He might have been unwilling to expose the validity of his patent, by the assertion of a right to any other. Can he abandon the ground of his patent, and ask now, for the exclusive use of all cars which, by experiment, shall be found to yield the advantages which he anticipated for conical cars only ? The claim of to-day is, that an octagonal car is an infringement of this patent. Will this be the limit to that claim ? Who can tell the bounds within which the mechanical industry of the country may freely exert itself? What restraints oes this patent impose in this branch of mechanic art ? ■to escape the incessant and intense competition which exists in every department of industry, it is not strange that persons should seek the cover of the patent act, for any appy effort of contrivance or construction; nor that patents 367 347 SUPREME COURT. Winans v. Denmead. should be very frequently employed to obstruct invention, and to deter from legitimate operations of skill and ingenuity. This danger was foreseen, and provided for, in the patent act. The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. Its principle and modes of operation must be explained; and the invention shall particularly “specify and point” out what he claims as his invention. Fulness, clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfil the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress. In my judgment, the principles of legal interpretation, as well as the public interest, require that this language of this statute shall have its full significance and import. In this case the language of the patent is full, clear, and exact. The claim is particular and specific. #o4q-i *Neither the specification nor the claim, in my opin-ion, embrace the workmanship of the defendants. I therefore respectfully dissent from the judgment of the court, which implies the contrary. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Maryland, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit .Court in this cause be, and the same is hereby reversed, with costs, and that this cause be, and the same is hereby remanded to the said Circuit Court, with directions to award a venire facias de novo. 368 DECEMBER TERM, 1833. 348 Walworth v. Kneeland et al. Clinton Walworth, Plaintiff in error, v. James Kneeland and Hannah his wife, and Frances Cornelia Foster and William Foster, Infants, by their next Friend, James Kneeland. Where a case wras decided in a State court against a party, who was ordered to convey certain land, and he brought the case up to this court upon the ground that the contract for the conveyance of the land was contrary to the laws of the United States, this is not enough to give jurisdiction to this court under the 25th section of the judiciary act. The State court decided against him upon the ground that the opposite party was innocent of all design to contravene the laws of the United States. But even if the State court had enforced a contract, which was fraudulent and void, the losing party has no right which he can enforce in this court, which cannot therefore take jurisdiction over the case.1 This case was brought up from the Supreme Court of the State of Wisconsin, by a writ of error issued under the 25th section of the judiciary act. The case is stated in the opinion of the court. It was submitted, on a printed brief by Mr. Smith, on behalf of the plaintiff in error, and argued by Mr. Baxter, for the defendants in error. The counsel for the plaintiff in error made the following points. 1st. The contract in which this suit originated was made in violation of the act of Congress, approved March 3d, 1807, entitled “An act to prevent settlements being made on lands ceded to the United States, until authorized by law. 2 U. S. Stat., 445. *The first section prohibits the occupation and cul- r^q^n tiyation of the public lands, under the penalty of for- *-feiture of all the right and claim of the occupant. The fourth section provides for the removal of such occupants and their punishment by fine and imprisonment. At the time all the contracts connected with the land in question, to which Walworth was a party, were made, there was no preemption law of the United States in force. Every occupant of the public lands was a trespasser and occupied in violation of the act of 3d of March, 1807, unless he had permission pursuant to the provisions of the second section of that act. The bond of Walworth to Arnold, and the contract in w nch it originated, were made in violation of the 4th sec tt 1 ®ee note to Udell v. Davidson, 7 How., 769. VOL. XV—24 369 349 SUPREME COURT. Walworth v. Kneeland et al. tion of the act of Congress, of the 31st of March, 1830. U. S. Stat., vol. 8, p. 278. 3d. These agreements respecting this land between Frisbee and Walworth, Frisbee and Arnold, and Walworth and Arnold, all originated in, and were part of, a combination to hinder and prevent, at first any other person than Frisbee, and after his sale, any other than Walworth from purchasing the land at the public sales of the United States. There was a double combination. Walworth, Arnold, and Frisbee, combined together, and they also combined with and became a part of the general organization of the settlers upon the public lands in the Milwaukee land district, to prevent any one, excepting the actual claimant under the rules of such organization, from purchasing such lands at the public sales. 4th. Frisbee testifies that whether the title was obtained by preemption or under the claim laws, the title to the land, according to the original contract, was to come to him; that is, he was to purchase direct from the United States, and convey one half to Walworth; and he (Walworth) for that one half was to furnish money to pay for the whole, in addition to the 8100 he paid Frisbee at the time of making the original contract. In other words, he was to give something more than the price for which the land should be purchased of the United States. This contract was clearly within both the spirit and the letter of the act of 31st March, 1830, which declares all such contracts absolutely void. 5th. The contract between Walworth and Arnold, if ever valid, was annulled or rendered impossible to be performed by the act of Congress, passed 18th day of June, 1838, entitled “ An act to grant a quantity of land to the Territory of Wisconsin for the purpose of aiding to open a canal to connect the waters of Lake Michigan with those of Rock River. . The counsel for the defendant in error moved to dismiss ~n-. *case f°r want °f jurisdiction, and on that motion and On the argument of the case, relied on the following points: I. Foster, the plaintiff in the court below, purchased from Arnold the land in question, and took the assignment of the title bond executed by Walworth, without any knowledge ot, or participation in, the illegality (if any existed) between Frisbee and Walworth. He expended his money in the purchase and improvement of the land, without any design o violate or encourage the violation of law. 370 DECEMBER TERM, 1853. 35^ Walworth v. Kneeland et al. He therefore contends that Walworth cannot set up the defence of illegality against him. 1. Because they are not in pari delicto. 2. Because he was able to establish his case as stated in his bill, and claim specific performance of the contract, without relying on the illegal contract alleged by Walworth to exist between Frisbee and Walworth. On this point the defendant in error will rely on the following cases: Faikney v. Reynous, 4 Burr., 2070; s. c., 1 W. Bl., 633; Petrie v. Hannay, 3 T. R., 418 ; Simpson v. Bloss, 7 Taunt., 246; Fivaz v. Nicholls, 2 Man. G. & S., 501-52; Eng. Com. Law, 501; Bunn n. Winthrop, 1 Johns. (N. Y.) Ch., 337 ; Ellis v. Nimmo, Lloyd & G., 333; 10 Cond. Eng. Ch., 533; Lewis v. Davison, 4 Mees. & Wels., 654. II. This court has not jurisdiction, because the decision of the Supreme Court of Wisconsin does not question the validity of any of the statutes referred to in the assignment of errors, nor has the plaintiff in error set up any right, title, privilege, or exemption under said statutes or any of them. III. The Supreme Court of Wisconsin has not misconstrued the acts of Congress named in the assignment of errors. On these points the defendant in error will refer to the acts of Congress and authorities mentioned below. The Judiciary Act, 1 Stat, at L., 85, L. & B.’s edition. An act to prevent Settlements, etc., 2 Id., 445. An act for the relief, etc., 4 Id., 391-2. An act to grant, etc., 5 Stat, at L., 245. An act regulating grants, etc., south of Tennessee, 2 Id., pp. 229-30, §§ 2, 3, 1803. An act supplementary, etc., 2 Id., c. 43, § 5, 1805. An act to authorize the State of Tennessee, etc., 1806, c. 31, § 2, condition and 2d proviso, 2 Id., 383. An act regulating grants of land in Michigan, 1807, c. $4, § 2, p. 438, vol. 2. An act supplemental, etc., 1808, c. 15, 3 1, P* 455, vol. 2. 1808, c. 40, § 6, p. 480, an act concerning sales. 1808, c. 87, § 3, p. 503, an act supplemental, etc. Act of 1811, c. 46, § 4, 1st proviso, vol. 2, p. 664, preference given to occupants. 1813, c. 20, § 1, p. 797, preference, in sales in Illinois territory, given to settlers. 1814, c. **» § 4, p. 126, vol. 3, *preemption to settlers in Illi- r*Qti nois prior to February 5, 1813. 1815, c. 63, § 3, p. L 218, vol. 3. 1816, c. 101, § 1, p. 307, vol. 3. 1816, c. 163, SS 1, 2, and pp. 330, 331. 1820, c. 86, p. 573. 1826, c. 28, . . , P* 1^4, preemptions to settlers in Alabama, Mississippi, and Florida. 1830, c. 208, vol. 4, p. 420. 1834, c. 54, vo ' P* 578. 1838, c. 119, vol. 5, p. 251. Piatt v. Oliver and others, 2 McLean, 278; Oliver v. Piatt, 3 How., 410, 371 351 SUPREME COURT. Walworth v. Kneeland et al. Mr. Chief Justice TANEY delivered the opinion of the court. This case is brought before us by a writ of error directed to the Supreme Court of the State of Wisconsin. A bill in equity was filed in the Milwaukee District Court of that State by Gustavus A. Foster, against Walworth, the plaintiff in error, to obtain the specific performance of a contract for the conveyance of a certain quarter section of land described in the bill. The contract under which the complainant claims is set out in the bill; and, as he alleges, was made by Walworth with a certain Jonathan E. Arnold; that the land in question had at that time been surveyed by the government, but not offered for sale; and that Arnold, in pursuance of and in execution of the agreement with Walworth, entered upon and took possession of it, and afterwards assigned his interest to the complainant, who took possession, and still held the possession when his bill was filed; that Walworth had become the purchaser, pursuant to his agreement with Arnold, and obtained a legal title from the United States; and was bound, under that agreement and the assignment of Arnold above mentioned, to convey the land to the complainant. Foster died pending the suit, and the defendants in error are his legal representatives. Walworth, in his answer, alleges that the original contract in relation to this land, was between him and a man by the name of Frisbee ; that Frisbee transferred his interest to Arnold, who agreed to take his place, and fulfil his part of the agreement; and that the contract with Arnold was made upon that condition. He admits that Arnold conveyed his interest to Foster. He also gives in much detail the several contracts; the understanding of the respective parties at the time, as he alleges it to have been; their acts afterwards; the object of the agreement; and the circumstances under which he afterwards became the purchaser of the land claimed. And he denies that there was any valuable consideration moving from Frisbee or Arnold to him to support the contract; and if there was, he denies the construction given by the complainant to the agreement; and denies, also, that his subsequent purchase from the government was made under it. He alleges that neither Frisbee nor Arnold *performed their part ot J the contract; and, moreover, that the contract was void, because its object and purpose was to prevent competition for public lands, when offered at auction by the government, and therefore against the policy of the law. Testimony was taken on both sides ; and, at the final hear-372 DECEMBER TERM, 1853. 352 Walworth v. Kneeland et al. ing, the court, by its decree directed Walworth to convey to the defendants in error the one half of the quarter section in question. Walworth appealed to the Supreme Court of the State, where the decree was affirmed. And this writ of error is brought to revise that decree. Upon looking into the proceedings in the State court, we should be at a loss to understand how this court could be supposed to have jurisdiction upon this writ of error, over any of the questions decided in the State court, if the printed argument in behalf of the plaintiffs in error had not pointed to the one on which he relies. For we do not see that Walworth set up any right or title under an act of Congress ; or that any of the contingencies took place at the trial which give jurisdiction to this court under the twenty-fifth section of the act of 1789. But it appears that he claims the right to remove the case to this court upon the following ground: He alleges in his answer that, at the time of his contract with Frisbee, and also with Arnold, there was no act of Congress which authorized them to settle on this land, or gave any right of preemption to those who had settled on them ; that they were trespassers, and had illegally combined with a large body of men of like character, who had settled upon the public lands in that district, to prevent them from selling for more than one dollar and twenty-five cents the acre, and to secure to each other at that price the land they had respectively selected. And he further states, that these settlers had adopted rules and established a land office in which their respective claims were to be entered; and had agreed that, if the government refused to grant the right of preemption at the price above named, and directed them to be sold at public auction, the settlers would, by force and terror—or, as he terms it, “ by club or Cynch law ”—prevent any one from bidding against the settler for the land he had entered at their land office; and would, by such means, enable him to buy it at the lowest government price, that is, at one dollar and twenty-five cents an acre. And that, under the agreement between Frisbee and himself, Frisbee was to hold possession, and have his claim entered at the settlers’ land office; and, if Congress should give the right of preemption at the lowest government pnce, he and Frisbee or Arnold were to share in the profits, .alworth to furnish the money to pay for it. And, if no right of preemption was given, Walworth was to be permitted ° iUn(^er the *settlers’ regulations, at that price, anc the profits in that case also to be shared between L e parties. And that these contracts were in violation of 373 353 SUPREME COURT. Walworth v. Kneeland et al. the acts of Congress, in relation to the sales of public lands, and contrary to public policy, and, therefore, void. Such is the substance of his defence on this part of the case, so far as we can gather it from his answer, (which is by no means clear in its statements,) and from the evidence he offered to support it, and the printed argument filed in his behalf. It is due to the State court to say that, in its decree, it declares that such a contract would be void; and it decreed in favor of the complainants upon the ground that it was not proved, by legal testimony, that either Frisbee or Arnold had undertaken to associate themselves with the illegal combination of settlers, or to use any other unlawful means, to enable Walworth to buy the land in question at a reduced price. But if it had been otherwise, and the State court had committed so gross an error as to say that a contract, forbidden by an act of Congress, or against its policy, was not fraudulent and void, and that it might be enforced in a court of justice, it would not follow that this writ of error could be maintained. In order to bring himself within the twenty-fifth section of the act of 1789, he must show that he claimed some right, some interest, which the law recognizes and protects, and which was denied to him in the State court. But this act of Congress certainly gives him no right to protection from the consequences of a contract made in violation of law. Such a contract, it is true, would not be enforced against him in a court of justice ; not on account of his own rights or merits, but from the want of merits and good conscience in the party asking the aid of the court. But to support this writ of error, he must claim a right which, if well founded, he would be able to assert in a court of justice, upon its own merits, and by its own strength. No such right is claimed in the answer of the plaintiff in error. And indeed it would be a novelty in legislation and in public policy if Congress had taken so much pains to provide for the protection of persons who had combined with others to perpetrate a fraud on the United States, and found themselves in the end the sufferers by the speculation ; or who, by the error of a State court, had been compelled to share its gains with their associates in the fraud. The right or interest claimed in the State court mus be of a very different character, to entitle him to the pro> ection of the act of 1789. It has already been so decided in this court in the case of Udell and others v. Davidson, 7 ow., 769. _ ... Neither can the writ of error be supported on tne ground that *Walworth was unable to purchase, at one 374 DECEMBER TERM, 1853. 354 Carter v. Bennett. dollar and twenty-five cents per acre, another portion of the land mentioned in the contracts, in consequence of its subsequent cession by the United States to the territory of Wisconsin. Whether that cession, and the enhanced price at which it was held, absolved him from the obligation of performing any part of the contract, depended altogether upon its construction. The rights of the parties did not depend on the act of Congress making the cession, but upon the contract into which they had entered. And the construction of that agreement, and the rights and obligations of the parties under it, were questions exclusively for the State court; and over its decree in this respect this court has no control. The writ of error must be dismissed for want of jurisdiction. ORDER. This cause came on to be heard on the transcript of the record from the Supreme Court of the State of Wisconsin, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that this cause be, and the same is hereby, dismissed for the want of jurisdiction. Farise Carter, Plaintiff in Error, v. Archibald T. Bennett. A perron was sued in the Territorial court of Florida. After the admission of Florida as a State, the case was transferred to a State court. The defendant appeared, and pleaded the general issue. Ihe verdict was given against him. He then moved in arrest of judgment, upon the ground that the case ought to have been transferred to the District Court of the United States, instead of a State court. The motion was overruled, and judgment entered up against him. Upon an appeal to the Supreme Court of Florida, this judgment was affirmed. This court has no jurisdiction under the 25th section of the judiciary act, to review that decision. What the State court decided, was the motion in arrest of judgment, where the record only is examined, and no new evidence admitted. There was nothing in the pleadings to show that the defendant was a citizen of Geor-£ia> and n0 defect of jurisdiction was apparent. ihe defendant might have pleaded in abatement, that he was a citizen of Georgia, but not having done so, it was too late to introduce the matter upon a motion in arrest of judgment. s it does notappear, therefore, that the Supreme Court of the State r*orr must have decided adversely to the party now claiming the interposi- L ° ion of this court, and decided so upon the construction of an act of Congress, the writ of error must be dismissed for want of jurisdiction.1 1 See Commercial Bank v. Buckingham, 5 How.. 317, n. 375 355 SUPREME COURT. Carter v. Bennett. This case was brought up from the Supreme Court of the State of Florida, by a writ of error issued under the 25th section of the judiciary act. The case is set forth in the opinion of the court. Mr. Davis made a motion to dismiss it, for want of jurisdiction, which motion was resisted by Mr. Johnson. Mr. Chief Justice TANEY delivered the opinion of the court. This case comes before us upon a writ of error directed to the Supreme Court of the State of Florida; and a motion has been made to dismiss it for want of jurisdiction. The suit was brought by Bennett, the defendant in error, against Carter, the plaintiff in error, in December, 1842, while Florida was yet a territory, and was continued from term to term, until she was admitted into the Union as a State. The action was trover for certain property. The declaration was in the usual form, and the defendant pleaded the general issue of not guilty. After Florida became a State, and the territorial court, in which the suit was pending, ceased to exist, the papers were transmitted by the clerk to the Circuit Court of the State for the same county. The plaintiff and the defendant both appeared in the Circuit Court, and the case was continued until December, 1848, when the parties proceeded to trial—and the jury found for the defendant in error, and assessed his damages at $19,999.66. Several exceptions were taken to the rulings of the court on the trial, which it is not necessary to mention, because they relate to the laws of the State, over which this court can exercise no jurisdiction upon this writ of error. After the verdict was rendered against him, the plaintiff in error moved for a new trial. But the motion was overruled by the court. He thereupon offered to prove that he was a citizen of Georgia at the time the suit was instituted in the territorial court, and had continued to be so, and still was a citizen of that State. And this fact being admitted by the opposite party, he moved in arrest of judgment, and that the case be dismissed from the court, with an order to the clerk to transfer the papers to the District Court of the United States for the Northern District of Florida, or hold the papers and proceedings subject to any order of transfer or demand from the said court. *This motion was refused, and judgment entered on J the. verdict. Whereupon he appealed to the Supreme 376 DECEMBER TERM, 1853. 356 Carter v. Bennett. Court of the State ; and the judgment of the Circuit Court being there affirmed, he has brought the case before this court by writ of error. In support of this writ the plaintiff in error contends, that as he was a citizen of Georgia at the time the suit was brought in the territorial court, and also when the act of Congress of February 22d, 1847, was passed, the suit was, by operation of that law, transferred to the District Court of the United States for the Northern District of Florida, and that the Circuit Court of the State had no right to take possession of the papers in the case, nor any authority to try and decide it; and that, by moving in arrest of judgment upon this ground, he had claimed a right under a law of the United States; and that, as the decision was against the right claimed, he is entitled to a writ of error under the 25th section of the act of 1789. Upon this motion to dismiss the writ of error, the construction of the act of Congress of 1847 is not before us. In this stage of the case we are not called on to decide whether this act of Congress did or did not, proprio vigore, transfer the case to the District Court of the United States. The only question presented by the motion is, whether, upon the record before us, we have a right to reverse the judgment of the State Court. And in order to give this court jurisdiction over the judgment of the State court, it must appear by the record that the right now claimed by the plaintiff in error to remove the case to the District Court of the United States, was so drawn in question in the State court, that it must have been decided in the judgment it has given. Now, there is nothing in the pleadings to show that Carter was a citizen of Georgia. It is not so stated in the declaration or plea. And when the papers were transmitted to the State court, he appeared there and defended himself upon the plea of the general issue, which he had put in, in the territorial court. This plea admitted the jurisdiction of the court; and the ease was tried and the verdict rendered upon these pleadings. And upon a motion in arrest of judgment the court cannot look beyond the record; and the judgment Cpno.t be arrested, unless there is some error in law or defect ot jurisdiction apparent in the proceedings. And here there was no error or defect of jurisdiction apparent on the record, even if the construction of the act of 1847, contended for by e plaintiff in error, is the true one. Both parties, by their p eadings, admitted the jurisdiction of the court; and there was no averment, in any part of them, that Carter was a 377 356 SUPREME COURT. Carter v. Bennett. citizen of Georgia. And after a verdict is rendered, the *3^71 judgment cannot be arrested by the introduction *of J new evidence on a new fact. It may, in a proper case, lay the foundation of a motion for a new trial, but not in arrest of judgment. It is evident, therefore, that the State Court, in proceeding to give judgment on the verdict, could not legally have decided upon the validity of the plaintiff’s objection to its jurisdiction. They could not hear evidence, in that stage of the case, to prove that Carter was a citizen of Georgia, nor judicially notice it when admitted by the opposite party. And we are bound to presume that they proceeded to judgment on this ground, and did not consider the right claimed by the plaintiff in error as properly before them. In an action in a Circuit Court of the United States, where the jurisdiction depends upon the citizenship of the parties, it has always been held, that where the plaintiff avers in his declaration that he and the defendant are citizens of different States, if the defendant means to deny the fact and the jurisdiction, he must plead it in abatement; and if he omits to plead it in abatement, and pleads in bar to the action, he cannot avail himself of the objection at the trial. Still less could he be permitted to do so upon a motion in arrest of judgment. And the same principles which this court sanction in such cases in the courts of the United States, upon questions of jurisdiction depending upon personal privilege, we are bound to apply to the proceedings in the State court. Undoubtedly it was in the power of the plaintiff in error, when he appeared to the suit in the Circuit Court of the State, to have pleaded to the jurisdiction, upon the ground that he was a citizen of Georgia. Whether such a plea could have been maintained or not, it is not necessary for us to say.. But it would have brought before the court the construction of the act of 1847, and it must have been judicially decided. And if the decision had been against the right he claimed under it, this court would have had jurisdiction to hear and determine that question. But upon the record, as it comes before us, it does not appear that this question was ever presented to the State court in a manner that would enable it judicially to notice or decide it. And the writ of error must therefore be dismissed for want of jurisdiction. ORDER. This cause came on to be heard on the transcript of the record from the Supreme Court of the State of Florida, an 378 DECEMBER TERM, 1853. 357 Forsyth v. Reynolds et al. was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that this cause be, and the same is hereby, dismissed, for the want of jurisdiction. *Robert Forsyth, Appellant, v. John Reynolds, Josiah E. McClure, and John McDougall. >- By two acts, passed in 1820 and 1823, Congress granted a lot in the village of Peoria, in the State of Illinois, to each settler who “ had not heretofore received a confirmation of claim or donation of any tract of land or village lot from the United States.” Lands granted to settlers in Michigan, prior to the surrender of the western posts by the British government, and which grants were made out to carry out Jay’s treaty in 1794, were not donations so as to exclude a settler in Peoria from the benefit of the two acts of Congress above mentioned. This was an appeal from the Circuit Court of the District of Illinois, sitting as a court of equity. The case was this. On the 4th day of June, 1850, John Reynolds, Josiah E. McClure, and John McDougall, appellees in the court, filed their bill in the Circuit Court of the United States, for the district of Illinois, against Robert Forsyth, appellant in this court. The bill sets forth that the complainants claim title to a tract of land situated in the village of Peoria, State of Illinois, and particularly described in said bill, their claim of title commencing with a patent from the United States to one John L. Bogardus, on a preemption established by him at the land office, in Quincy, Illinois; said patent bearing date January 5, 1838; a copy of which, and also of all the intermediate conveyances from Bogardus to said complainants, are filed with said bill as exhibits. The bill also avers that said complainants have been for several years in possession of said land, and made valuable improvements thereon, amounting to over three thousand dollars. The bill further sets forth that in the year 1848, Robert orsyth commenced an action of ejectment in the said Circuit Court of the United States against one James Kelsey and oshua P. Hotchkiss, then occupants of said premises, for le??veDf a portion of said premises, to which the said For-n claimed title under French claim number seven, in said vi lage of Peoria, which claim covered the larger portion of 379 358 SUPREME COURT. Forsyth v. Reynolds et al. the premises above referred to; the said Forsyth claiming by virtue of an act of Congress, approved May 15th, 1820, entitled “ An act for the relief of the inhabitants of the village of Peoria, in the State of Illinois,” and also by virtue of another act of Congress, approved March 3, 1823, entitled “An act to confirm certain claims to lots in the village of Peoria, in the State of Illinois,” in pursuance of which acts a patent issued on the 16th December, 1845, to the legal representatives of one Thomas Forsyth, and to their heirs, a copy of which patent is filed as an exhibit with said bill. The bill further alleges that said Robert Forsyth, derived *3591 bitle said French claim by inheritance from -* the said Thomas Forsyth, the said Robert being one of the sons of the said Thomas, and by purchase from the other heirs of the said Thomas. The bill further charges that the act of Congress of March 3, 1823, before referred to, excluded the right or claim of any settler in the village of Peoria, who had, before the date of the said act, received a confirmation of claims or a donation of any tract of land or village lot from the United States, and that the grant made by said act was only to such settler, provided he had not received any prior grant, confirmation, or donation. The bill further charges that, by a regulation of the General Land Office, the appellant, Forsyth, in August, 1845, filed an affidavit with the Receiver of the Land Office, at Edwardsville, to the effect that Thomas Forsyth had not received a prior confirmation or donation, and that said Thomas Forsyth was an inhabitant or settler on lot seven, within the meaning of the act. The bill further charges that the claim of the said Robert Forsyth, made before the Register of the Land Office at Edwardsville, Illinois, on the 7th September, 1820, and the evidence in support of said claim, show that the same was made by said Forsyth in his own right, and not as the legal representative of any other person. The bill further charges that the said Thomas Forsyth had, prior to the passage of the act of the 3d March, 1823, received from the United States donations and confirmations of two claims in the Territory of Michigan, under an act of Congress entitled “An act regulating grants of lands in the Territory of Michigan,” approved March 3, 1807, and tha patents for said claims, were duly issued to the said Thomas Forsyth, in the year 1811, certified copies of which paten s are filed as exhibits with said bill. The bill, after propounding certain interrogatories, con-380 DECEMBER TERM, 1853. 359 Forsyth v. Reynolds et al. eludes with a prayer for a perpetual injunction against the said Robert Forsyth, restraining him from prosecuting his said action of ejectment. The patent, after the usual grant to Bogardus, concludes with the following proviso: “ subject, however, to the rights of any and all persons claiming under the act of Congress of 3d March, 1823, entitled “ An act to confirm certain claims to lots in the village of Peoria, in the State of Illinois.” The patent recites Thomas Forsyth as claiming “under John Baptist Maillet, and in right of his own occupancy and cultivation,” and also recites that it appears from the certificate of the register that “ John Baptist Maillet was the inhabitant or settler within the purview of said act of Congress of 1823,” and that “ it *has appeared to the satisfaction of the register and receiver that the said inhabitant or L settler did not, prior to said act of 1823, receive a confirmation of claims or donation of any tract of land or village lot from the United States, and that the legal representatives of said Thomas Forsyth, under said Maillet, in virtue of the confirmatory act aforesaid, are entitled to a patent.” On the 31st August, 1850, Forsyth filed his answer, admitting the possession of the premises by complainants, as stated by them, and that the value of the improvements was three thousand dollars, as stated by complainants, that the action of ejectment was brought, as stated in the bill, and that the complainants claimed title under the Bogardus patent. The answer further sets forth that respondent claims title to the premises, by settlement and occupation, of John Baptist Maillet, previous to the year 1790, and from that time to 1801, and a sale of such possession and occupancy to John M. CoursoIl, and from him to Thomas Forsyth, and Forsyth's occupancy, under such purchases, from 1802 to 1812; also, by the act of Congress, of May 15th, 1820, above referred to; also, by the report of Edward Coles, Register of the Land Office at Edwardsville, Illinois, in pursuance of said acts of Congress, said report, properly authenticated, being filed with the answer; also, by the act of Congress of March 3, 1823; also, by the survey of the village of Peoria, and of said premises, by the surveyor of public lands in Illinois and Missouri, plats of which are filed with said answer, marked “B and “C”; also, by the patent to Thomas Forsyth, exhibited with said bill, and by devise from said Thomas to •v/’ ^.e sister respondent, and by death of said Mary without issue, whereupon the premises descended to respondent and his brother, and, by deed, to respondent from his brother, for his interest, duly certified copies of the will of 381 360 SUPREME COURT. Forsyth v. Reynolds et al. Thomas Forsyth, and of the deed from respondent’s brother to him, being filed as exhibits with the answer, and the heirship of respondent and his brother fully appearing in the proof. The answer further states that respondent can produce no deeds from Maillet to Coursoll, and from Coursoll to Thomas Forsyth, and that it was the custom among the French inhabitants, prior to 1812, to transfer the occupancy of real estate by verbal contract and delivery of possession merely. The answer further states that respondent knows nothing of the donations and confirmations mentioned in said bill as having been made to said Thomas Forsyth, in Michigan, and never heard of such except from said bill, or a short time before it was filed. The answer further sets up that said Bogardus never occupied said premises in his own right, but as tenant to one Jacques Mette, and that the said Mette had, on the 4th day *8611 March, *1847, received a patent from the United J States for that portion of the premises occupied by said Bogardus, and therefore said Bogardus having never occupied said land in his own right, but only as tenant to said Mette, the said preemption claim of Bogardus, and the patent issued thereon to him, were void, of all which the answer avers the complainant had notice. The answer further sets up that even if it should appear in proof that the Thomas Forsyth, referred to in said bill, and respondent’s father were the same person, and that said Thomas Forsyth did receive the confirmations in Michigan, described in said bill, nevertheless, said confirmations would not prevent the said Thomas Forsyth from holding said premises in Peoria, under a proper construction of the act of 3d March, 1823. Exhibits were filed with the answer and proof taken, showing the defendant’s title under Thomas Forsyth. On the 7th June, 1850, the complainants filed an amendment to their bill, setting forth that the John Baptist Maillet mentioned in the patent to the legal representatives of Thomas Forsyth, died about the year 1801, and that neither the said Maillet nor his legal representatives, nor any other person, except the said Thomas Forsyth, ever presented any claim to said lot seven before the officers oi the land office at Edwardsville, under the provisions of the acts of Congress before referred to. On the 26th December, 1850, the respondents filed an answer to the amendment, admitting the death of sai Maillet, as therein stated, but insisting that Thomas hoi-syth was the legal representative of said Maillet, and author- 382 DECEMBER TERM, 1853. 361 Forsyth v. Reynolds et al. ized to claim said premises before the land officers at Edwardsville, under the act of Congress. Much proof was taken, by the complainants in the case, to show the identity of the Thomas Forsyth who received the confirmations in Michigan, with the Thomas Forsyth to whose legal representatives the Peoria lot was patented, and who was the father of Robert Forsyth, the defendant. The defendants took the depositions of Lisette Mette, Antoine Smith, Joseph Aubuchon, Sarah Bouche, and others, by whom it was clearly proven that about sixty years ago John Baptist Maillet occupied the premisesat Peoria; that he sold to Coursoll; that Coursoll sold to Thomas Forsyth, who continued to occupy the lot; that these sales were made in the ordinary mode of selling real estate among the French at Peoria at that time, by verbal sale and delivery of possession. The said Lisette Mette also proved that the said Robert Forsyth, defendant, was the son of said Thomas. Forsyth, that she was present at his birth, which took place on the lot in controversy. *It is also proven that Thomas Forsyth died in 1833, leaving three children, to wit: Thomas, Mary, •-and appellant, and that Mary died without issue, leaving Thomas and appellant her sole heirs. There is no controversy on this point. The case was heard before the district judge, holding the Circuit Court at the December term, 1852, who decreed a perpetual injunction against the defendant Robert Forsyth, enjoining him from prosecuting said action of ejectment, the decree being on the ground that the confirmation in Michigan to Thomas Forsyth rendered invalid the Peoria patent to his legal representatives, under the act of March 3, 1823. From this decree Forsyth appealed to this court. /he cause was argued by Mr. Williams, for the appellant. Briefs were also filed upon that side by Mr. Lincoln and Mr. (ramble. Mr. Chase argued the case for the appellee ; and a brief was also filed by Mr. Purple. The following is the notice of the main point in the case, taken from one of the briefs on the part of the appellant. The objection made to the patent to Forsyth’s representa-ives is, that Forsyth in his life obtained two confirmations lands in Michigan Territory. If the act of 1823 designed to exclude from the grant all se tiers who had previously received confirmations or dona-wns of lands or lots, in any part of the Territory of the 383 362 SUPREME COURT. Forsyth v. Reynolds et al. United States, such design was strangely singular. If it excludes all who had received confirmations, it excludes them without reference to the character of the title confirmed or the consideration for the confirmation. It would place on the same footing those who, under treaties made by the United States with foreign nations, had obtained confirmations of titles which the United States were bound to confirm; and those who had received from the United States lots or lands as mere gratuities. It should not receive a construction that would make it operate so absurdly, unless such construction is unavoidable. No similar act, with such a restriction upon its operation, can be found among the acts of Congress. It is apparent, from the history of the Michigan titles of Thomas Forsyth, which are employed in this case to defeat the title to this lot in Peoria, that if they can have the effect given to them by the Circuit Court, then a confirmation of a Spanish grant in any part of Louisiana, made by the United States under the clear obligation of the Louisiana treaty, would equally defeat a title to a lot in Peoria claimed under the act of 1823. The titles in the Michigan land, held by Thomas Forsyth, *0^0-1 *were held under the second section of the act of March 3d, 1807, (2 U. S. Stat., 438,) and they were founded upon possession and improvement of the property prior to July 1st, 1776. The tracts are situated at Gross Point, in the Detroit district. Now, the part of Michigan Territory, in which this land was situated, had been occupied by the British authorities up to June or July, 1796, and the possession and improvement of the land which were to be the basis of the title under the act of 1807, were under British sanction. How then did such occupancy of property, undoubtedly within the territorial limits of the United States, become the foundation of a grant by our government. The treaty of 1794, which provided for the evacuation of all places within our territory occupied by the British troops, required, in its second section, that traders and settlers should be protected in the enjoyment of their property, and should be free to settle the same or retain it for their own benefit. This obligation, assumed by the treaty, was recognized and discharged by the act of 1807, as far as that act extended, and the titles thus acquired were not mere gratuities, but had for their consideration all stipulations in the treaty which our government regarded as beneficial to itself. In respect to their consideration, these titles stand upon the same footing as any others which have been acknowledged and confirmed by our government, under any of the treaties 384 DECEMBER TERM, 1853. 363 Forsyth v. Reynolds et al. by which we have acquired territory, and by which we become bound to acknowledge and perfect the titles initiated under the former government. When an individual has acquired a title from our government under the obligation of a treaty with a foreign nation, and therefore for a consideration which that foreign nation has given, we would not expect our own government to make the title, so acquired, a ground for excluding that citizen from any benefit conferred upon a class of citizens in a distant part of the country, upon altogether different considerations, when he belongs to the class intended to be benefited, and has himself given the consideration for the benefit. It would appear to be an unnatural supposition that such was ever the design of our government. The language of the act of 1823, which excludes from the benefit of the grant those who have obtained previous confirmations or donations, does not require such construction as would exclude a person claiming property in Michigan under the act of 1807. A title to property in Michigan under that act is not a donation, for it rests upon the considerations that moved two sovereign powers to the conclusion of a treaty. The term “ confirmation ” is applied in different acts of Congress to titles of different origin. In the second section of the act, 3d March, 1807, in relation to land titles in Louisiana, it is used with Reference to titles where there is no other foundation for the claim than possession. 2 L United States Stat., 440. In the first section of the act 13th June, 1812, (2 United States Stat., 748,) it is applied in like manner to rights, titles, and claims, resting only upon possession. There are very many acts in which the term is used for the purpose of perfecting claims, when, according to law, the person in possession of the property had no title to it, or right to the possession, and therefore, in such case, the con-firhiation is a mere gratuity. The counsel for the appellees thus briefly noticed the point in question. The claims confirmed to Forsyth, at Gross Point, under the act of the 3d March, 1807, are of the same class and character as the one which he now seeks to enforce in Peoria. Settlement and occupation were necessary to establish the validity of both. No other claim, equitable or legal, is advanced in favor of either. In the one case, the right depends th*011 a se^ement prior to the 1st day of January, 1813; in , ® °ther, upon a settlement, and continued occupancy, from 3d IvT July, 1796, to the passage of the act of ° March, 1807. In neither case, at the time of the passage Vol. xv.—25 - 385 364 SUPREME COURT. Forsyth v. Reynolds et al. of the acts, had the settlers or occupants any title to the lands, derived from any source which the Government of the United States were legally or morally bound to respect. Both were gratuities—mere boons; not at all allied to those cases where grants, concessions, or donations have been made by the officers of foreign governments, under the authority of such governments, previous to the time of the acquisition of the Territory in which they were located by the United States. It is apparent that the object and design of the reservation in the act of 1823, was to prevent any one from becoming the recipient of the bounty of the government, in lands or lots, more than once; and it is not confined in its operation to any special location, or particular class of cases. Mr. Justice CATRON delivered the opinion of the court. The bill seeks to set aside a patent to the legal representatives of Thomas Forsyth, because he had obtained from the United States two other donations of land situate in Michigan, previous to his donation of the village lot in Peoria; and it is alleged that for this reason, his donation certificate and patent were fraudulent, as against the complainants, and should not be set up to their prejudice; and so the court below held. Waiving, for the present, all consideration of the fact that Forsyth claimed the village lot as assignee of Maillet, who had not obtained any previous “ confirmations, or donation ”; *3651 and *secondly, that the patent to Bogardus was made -I subject to the rights of all persons claiming lots in Peoria, under the act of 1823; and placing the case on the ground that the Circuit Court did, and then how does the claim to relief stand? It was assumed by the court below, that Forsyth had received as a donation, the two tracts of land in Michigan, within the meaning of the act of 1823. That the act contemplated a donation we think is true. A donation is a gift and gratuity, and not a grant of land founded on a consideration, as where the government is bound to make it by treaty stipulation conferring mutual benefits. Thomas Forsyth and his family were Canadian settlers and British subjects, residing on our side of the line, established by the treaty of peace of 1783; they professed allegiance to Great Britain, as all that population did at the date of Jay’s treaty, in 1794, and up to July, 1796. By the sixth article of the treaty of 1783, it was provide that no one should suffer by reason that they took part wi Great Britain in the war, “in person or property.” 386 DECEMBER TERM, 1853. 365 Forsyth v. Reynolds et al. As Great Britain held possession of the country in Michigan, regardless of the treaty of 1783, a principal object of Jay’s treaty was to obtain actual possession, and to do this it was necessary to secure the removal of the British troops, and an evacuation of the military posts of that power from our side of the line. The second article expressly provided for these objects, and at the same time, and as matter of justice, it was declared, that all settlers and traders, within the precincts or jurisdiction of said posts shall continue to enjoy, unmolested, all their property of every kind, and shall be protected therein by the American government; that they may sell their lands and houses, or retain the property thereof at discretion; and that those who continue in the country for one year, after the date of the treaty, shall be considered as having elected to become citizens of the United States. The 9th article is reciprocal and general, and further provides that British subjects holding lands in the United States shall continue to hold them, according to the nature and tenure of their respective estates and titles therein, and that they may sell or devise the same as if they were natives. As, from 1783 to 1794, no title could be made by Great Britain to lands on our side of the line, within the jurisdiction of the posts, it was for mere settlers, to a great extent, that the 2d article of the treaty provided: persons residing there usually having no other evidence of title than possession, improvements, and actual residence on the land. To execute in good faith this part of the treaty, Congress *provided, by the act of March 3, 1807, (sec. 2,) that pggg to every person or persons in possession at that date *-of any tract of land, in his own right, in Michigan Territory, which tract of land was settled, occupied, and improved by him or them prior to the 1st day of July, 1796, or by some other person under whom he or they hold or claimed the right of occupancy or possession thereof, and which occupancy or possession had been continued to the time of passing that act, then the said tract or parcel of land thus possessed, occupied, and improved, should be granted, and such occupant should be confirmed in the title to the same as an estate of inheritance in fee-simple. . The act of 1807 pointed out the mode by which those seeking title under it should proceed. Forsyth’s two claims were rought strictly within the terms of the act; he got certifi-?a.es from the commissioners to that effect, and in 1811 obtained his patents. The larger tract of 600 acres he claimed by a deed of con- 387 366 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. veyance from his father, William Forsyth; and the other tract for 336 arpens he held, as one of his father’s heirs, by a deed of partition. Both tracts front on lake St. Clair, and were within the jurisdiction of the British posts. We suppose it is free from controversy, that these two tracts of land were the property of Thomas Forsyth, in 1807, by virtue of the treaty of 1794, and just as plainly property as lands held by a concession in Louisiana, under the Spanish government, by force of the treaty of 1803. In neither case could a donation be assumed to have been made. As Forsyth obtained no donation in Michigan, he was not within the prohibition prescribed, by the'act of 1823, to settlers in the village of Peoria, and, therefore, the decree below must be reversed, and the bill dismissed, but without prejudice to either party, in prosecuting and defending the suit at lawT, sought to be enjoined by the bill, in regard to matters not hereby decided. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Illinois, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, reversed, with costs, and that this cause be, and the same is hereby, remanded to the said Circuit Court, with directions to dismiss the bill of complaint without prejudice to either party, in prosecuting and defending the suit at law, sought to be enjoined by the bill, in regard to matters not hereby decided. *The Executors of John McDonogh, deceased, AND OTHERS, V. MARY MURDOCH AND OTHERS, Heirs of John McDonogh, deceased. McDonogh, a citizen of Louisiana, made a will, in which, after bequeathing certain legacies not involved in the present controversy, he gave, wi , and bequeathed all the rest, residue, and remainder of his property corporations of the cities of New Orleans and Baltimore forever, on to each, for the education of the poor in those cities. , .g The estate was to be conveyed into real property, and managed by six g > three to be appointed by each city. , nonaltv No alienation of this general estate was ever to take place, unu P 388 DECEMBER TERM, 1853. 367 Executors of McDonogh et al. v. Murdoch et al. of forfeiture, when the States of Maryland and Louisiana were to become his residuary devisees for the purpose of educating the poor of those States. Although there is a complexity in the plan by which the testator proposed to effect his purpose, yet his intention is clear to make the cities his legatee^ ; and his directions about the agency are merely subsidiary to the general objects of his will, and whether legal and practicable or otherwise, can exert no influence over the question of its validity. The city of New Orleans, being a corporation established by law, has a right to receive a legacy for the purpose of exercising the powers which have been granted to it, and amongst these powers and duties is that of establishing public schools for gratuitous education.1 The civil and English law upon this point compared : The dispositions of the property in this will are not “ substitutions, or Jidei commissa,” which are forbidden by the Louisiana code. The meaning of those terms explained and defined: The testator was authorized to define the use and destination of his legacy. The conditions annexed to this legacy, the prohibition to alienate or to divide the estate, or to separate in its management the interest of the cities, or their care and control, or to deviate from the testator’s scheme, do not invalidate the bequest, because the Louisiana Code provides that “ in all dispositions inter vivos and mortis causa, impossible conditions, those which are contrary to the laws or to morals are reputed not written.” The difference between the civil and common law, upon this point, examined : The city of Baltimore is entitled and empowered to receive this legacy under the laws of Maryland; and the laws of Louisiana do not forbid It. The article in the code of the latter State, which says that “Donations may be made in favor of a stranger, when the laws of his country do not prohibit similar dispositions in favor of a citizen of this State,” does not most probably apply to the citizens or corporations of the States of the Union. Moreover, the laws of Maryland do not prohibit similar dispositions in favor of a citizen of Louisiana. The destination of the legacy to public uses in the city of Baltimore does not affect the valid operation of the bequest in Louisiana. Ihe cities of New Orleans and Baltimore, having the annuities charged upon their legacies, would be benefited by the invalidity of these legacies. Upon the question of their validity, this court expresses no opinion. But the parties to this suit, viz., the heirs at law, could not claim them. In case of the failure of the devise to the cities, the limitation over to the States of Maryland and Louisiana would have been operative. This was an appeal from the Circuit Court of the United States, for the Eastern District of Louisiana, sitting as a court of equity. The bill was filed by the appellees, as the heirs at law of John McDonogh, to set aside his will. The will itself is too long to be inserted in this report of the case ; it would, of itself, occupy more than thirty printed pages. The reporter adopts the following statement of it, Made out by *the following French jurists, whose opin-ion was requested upon the whole case, viz.: Coin- *- 1 Followed. Per in v. Cary, 24 Relied on in dis op., ^States v- Railroad Co., 17 wall., 335. See also Russell v. Allen, 17 Otto, 169; People v. Ashburner, 55 Cal,, 523. See Vidal v. Girard’s Exrs., 2 How., 127, and cases cited in the notes. 389 368 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. Delisle, Advocate, late of the Council of the Order of Advocates of Paris ; Delangle, late Bastonier of the Order of Advocates of Paris; Giraud, LL.D., a member of the National Institute; Duranton, P&re, Advocate, Professor in the Law Faculty of Paris; Marcad^, Advocate, late Advocate in the Court of Cassation. Statement of the facts of the case. John McDonogh, a native of Baltimore, an inhabitant of McDonoghville, State of Louisiana, made his olographic will at McDonoghville aforesaid, on the 29th of December, 1838, according to the forms prescribed by the local law. No question is raised about the form of the instrument; nor could it be otherwise. The Civil Code of Louisiana gives every man the right of making an olographic will. Such a will, in Louisiana, as in France, is one written by the testator himself; and, in order to be valid, it must be entirely written, dated, and signed by the testator’s own hand. (Art. 1581.) This kind of will is subject to no other form, and may be made anywhere, even out of the State. (Same art.) These are the same rules as those contained in arts. 970 and 999 of the French Civil Code. John McDonogh died in October, 1850. His will was proved in due form of law. This will has been printed at New Orleans, at full length, with the testator’s instructions appended, under the title of “The last Will and Testament of John McDonogh, late of McDonoghville, State of Louisiana; also his Memoranda of Instructions to his Executors, &c.” We do not mean to give it here in extenso, deeming a synopsis of it quite sufficient for our purpose. The testator, after having called on the holy name of God, commences, by declaring that he was never married, and that he has no heirs living, either in the ascending or the descending line. So that, according to the laws of the State, his power of willing away his property was unlimited. Civil Code of Louisiana, 1843. He orders that, immediately after his death, an inventory shall be made of his property, by a notary public, assisted by two or more persons, whom his executors shall appoint; the same to be done on oath. First comes a devise to the children of his sister Jane, the widow of Mr. Hamet, of Baltimore, of land which he pui-chased on the 29th of February, 1819, of one John Payne, in Baltimore county. This lot, containing ten acres, more or 390 DECEMBER TERM, 1853. 3G8 Executors of McDonogh et al. v. Murdoch et al. less, together with the improvements, goes to his nephews aforesaid, a life estate in the same being, however, reserved to their mother. *He also bequeathes to his said sister, widow Hamet, six thousand dollars, recommending to her so to place *-the capital as to make the interest support her in her old age. He then bequeathes their freedom to certain slaves, fixes a fifteen years’ term of service to be performed by certain others on his plantations, and orders the remainder of his black people to be sent to Liberia by the American Colonization Society. And now, in language expressive of piety towards God, and charity towards mankind, the testator (after having made these deductions for his sister, Mrs. Hamet, for the children of his sister, and for the freedom of a certain number of slaves) goes on to lay down what may be called emphatically his will. He gives, wills, and bequeathes, all the rest, residue, and remainder of his estate, real and personal, present and future, as well that which is now his, and that which may be acquired by him hereafter, at any time previous to his death, and of which he may die possessed, of whatsoever nature it may be, and wheresoever situate, unto the Mayor, Aidermen and Inhabitants of New Orleans, his adopted city, and the Mayor, Aidermen and Inhabitants of Baltimore, his native city, and their successors forever, in equal proportions of one half to each of the said cities of New Orleans and Baltimore. He wills, at the same time, that the entire mass of property thus bequeathed and devised, shall remain charged with several annuities or sums of money, to be paid by the devisees of his general estate, out of the rents of said estate. He adds, that the legacies to the two cities are for certain purposes of public utility, and especially for the establishment and support of free schools in said cities and their respective suburbs (including the town of McDonogh, as a suburb of New Orleans), wherein the poor, and the poor only, of both sexes, of all classes and castes of color, shall have admittance, tree of expense, for the purpose of being instructed in the knowledge of the Lord, and in reading, writing, arithmetic, "18r^01y, geography, and singing, &c., &c. This is the principal object of the testator’s bounty, as appears by the words which usher in the general devise : “ And or fhe more general diffusion of knowledge, and consequent well-being of mankind, convinced as I am, that I can make no t isposition of these worldly goods which the Most High has 391 369 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. been pleased so bountifully to place under my stewardship, that will be so pleasing to him, as that by which the poor will be instructed in wisdom, and led into the path of virtue and happiness, I give,” &c. For the execution of his will, and with the unequivocal intent of increasing his real estate, after his death, the testator *^701 aPP°ints *executors, to whom he gives the seizin of all J his personal estate, corporeal and incorporeal, and clothes them with the most extensive powers, without the interference of judicial or extrajudicial authority. ' As relates to his real estate, such as it will be found to be at his death, which estate he has just devised to the cities of New Orleans and Baltimore, he expressly forbids the Mayor, Aidermen and Inhabitants of each of the cities, and their successors, ever to alienate or sell any part thereof; but the cities shall let the lots improved with houses, to good tenants, by the month or year; they shall let the unimproved lots in New Orleans, its suburbs, town of McDonogh, or elsewhere, for a term not to exceed twenty-five years at any one time, the rent payable monthly or quarterly, and to revert back, at the end of said time, with all the improvements thereon, free of cost, to the lessors; and, as to the lands, wherever situate, in the different parishes of the State, the cities shall lease them in small tracts, for a term not to exceed one to ten years, revertible back with their improvements, to be released for a shorter time, and at higher rates. As concerns his personal estate, (which, as we have seen in the general bequest above, also belongs to the cities of New Orleans and Baltimore,) the testator instructs his testamentary executors to invest his personal estate of all kinds, as well as the amount of all debts owing to him, as fast as they are received, together with the interest and increase, in real estate of a particular description, to wit: lots of ground, improved and unimproved, lying in the city or suburbs of New Orleans, and to hand over said real estate, with the title-deeds, to the commissioners and agents of his general estate, so that, by said means, the whole of his estate, real and personal, shall become a permanent fund on interest, as it were, (viz., a fund in real estate affording rents) ; no part of which fund shall ever be touched, divided, sold, or alienated, but shall forever remain together as one estate, termed in his will, “ the general estate,” and be managed as hereinafter directed. The net amount of the revenues collected annually shall 'je divided equally, half and half, between the two cities of New Orleans and Baltimore, by the commissioners and agents o the general estate, after paying the several annuities and sums 392 DECEMBER TERM, 1853. 370 Executors of McDonogh et al. v. Murdoch et al. of money hereinafter provided for, and applied forever to the purposes for which it is intended. The testator, dividing into eight equal portions the revenues of his estate, thus made up of the immovables left at his decease, and of those which shall be acquired by his executors, with the aid of his personalty and the interest accruing on his *credits, gives and bequeathes the first eighth r*o7-| part of the net yearly revenue of the whole, during L forty years, to the American Colonization Society for colonizing the free people of color of the United States; but the society shall not receive or demand, in any one year, a larger sum than $25,000. He gives and bequeathes the second eighth part of the net yearly revenue of the whole to the Mayor, Aidermen, and Inhabitants of the city of New Orleans, until said eighth part of the net yearly revenue of rents shall .amount to the full and entire sum of $600,000; and that for the express and sole purpose of establishing an asylum for the poor of both sexes, and of all ages and castes of color. He gives and bequeathes the third eighth part of the net yearly revenue of the whole to the Society for the Relief of Destitute Orphan Boys of New Orleans, for the express and sole purpose of its being invested in real estate, until the annuity shall amount to the full sum of $400,000, exclusive of the interest which may have accrued on it. He gives and bequeathes the fourth eighth part of the net yearly revenue of the entire estate to the Mayor, Aidermen, and Inhabitants of the city of Baltimore, for the express and sole purpose of establishing a School Farm, on an extensive scale, for the destitute male children of Baltimore, of every town and village of Maryland, and of the great maritime cities of the United States, until the said eighth part shall amount to the sum of $3,000,000. There now remains the revenue of one half or four eighths of the revenue of what the testator styles his general estate. The two cities of New Orleans and Baltimore being the principal legatees, it is obvious that they are entitled to the four eighths not bequeathed by a particular title ; consequently, it is laid down that, until such time as these four annuities, bequeathed under a particular title, shall have been paid off and expire, the cities of New Orleans and Baltimore shall receive, for the establishment and support of said free schools, one half only of the net yearly revenue of rents of the general estate, and no more. Moreover, the total amount to be received by each of the cgatees of one eighth of the revenue, until the respective sums 393 371 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. of $25,000, $600,000, $400,000, or $3,000,000 are realized, shows that one of the annuities is to determine before the others are paid off. The testator, therefore, orders that, as soon as any one of the annuities shall be filled and'paid off, the proportions of the net yearly revenue of rents of the general estate, which were payable under the extinct annuity, shall go and be payable to the annuity, bequeathed to the city *^791 Baltimore, for *the establishment of a School Farm; J so that the $3,000,000 may be made up in as short a space of time as possible. It will not be till the full and entire discharge of the annuities, that the two cities will divide between them the net yearly revenue of rents of the general estate. We will now turn our attention to the means and devices adopted by the testator to improve the condition of his particular legatees. He forbids the alienation of the real estate which he leaves at his death to the two cities ; and points out how the houses shall be let for short terms, the unimproved lots let for twenty-five years, at most, so as to be revertible, together with all improvements, to the mass of his estate ; and the lands leased out, so as to bring in returns more and more ample. He also orders his testamentary executors to invest his personalty in houses and building lots in New Orleans and its suburbs. He has not ordered any thing of the kind for the $25,000 of the Colonization Society (first eighth). The sum is a small one, and can be paid off in a short time. But as respects the Society for the Relief of Destitute Orphans, (third eighth,) he gives this third eighth part of the revenues to be first deposited in one or more of the banks in New Orleans, which allow interest on deposits; and then, always with the approbation of the Mayor, Aidermen, and Inhabitants of New Orleans, who shall become parties to the deeds, the said society shall invest the money, as good purchases offer, in houses and lots lying in New Orleans and its suburbs, so that such real estate, once acquired, shall be in-alienable, and shall for ever be retained and held by it, and remain its property, in order that the revenue of the said real estate may be sufficient for the support of the institution. . With respect to the particular legacy bequeathed to the city of New Orleans, for the purpose of establishing an Asylum for the Poor, (second eighth,) he orders that, annually or semiannually, the amount of the fractions of eighths be invested, as the commissioners receive it, in bank stocks, or other good securities on landed estate, on interest, so that the 394 DECEMBER TERM, 1853. 372 Executors of McDonogh et al. v. Murdoch et al. capital of $3,000,000 may be thereby augmented up to the time when the last of the annuity shall be received from the general estate; that, after this period, (or even earlier, if a favorable opportunity occur,) one third of the whole (not more) be invested in the purchase of landed estate, in the erection of buildings, and the furnishing of necessary articles; and the remainder, or two thirds at least, invested in the purchase of such houses and building lots, in New Orleans and its suburbs, as will probably *greatly augment in value; which real estate, when purchased, shall never be alien- *-ated, but a permanent revenue derived therefrom for the support of the institution. Again, as regards the particular legacy bequeathed to the city of Baltimore for a School Farm, (fourth eighth,) which legacy is to reach the amount of $3,000,000, to be taken out of the eighth charged therewith, and out of the other three eighths as soon as the other three legacies are finally paid off, the fund must be increased as it is received, by investing the moneys in bank stocks, or other good securities on landed estate, on interest; and this capital, with its increase, shall be invested, for one sixth part at the utmost, in the purchase of such land, animals, and agricultural implements as the institution shall need; and the other five sixths invested in the purchase of houses and building lots situated in the city, suburbs, and vicinage of Baltimore, or of tracts of land in its immediate neighborhood, viz., such lots or lands (to be all purchased under fee-simple titles) as will probably greatly augment in value. And, in this instance, too, the real estate, when purchased, is never to be sold or alienated, but is to remain forever the property of the institution, to the end that a permanent revenue may be derived therefrom. We will now examine the measures taken by the testator to prevent the cities from giving the moneys a different destination from that prescribed by the testator. Not content with appointing testamentary executors, Mc-Donogh, wishing to debar the city corporations from the handling of moneys, has ordered that there be commissioners x*8 es^e’ having a principal and central office in the city of New Orleans, where all the muniments and papers relating to his affairs may be kept, as well for the Asylum for the P°?.r’/Or the investment of the moneys due to the Orphan Relief Society, for the School Farm of Baltimore, as for the management of the general estate, or fund for the education 0 the poor. These commissioners are to have the sole management of the general estate, the leasing and renting of its 395 373 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. lands and houses, the cultivating of its estates, the collecting of its rents, the paying of the annuities bequeathed as above, and are to do all acts necessary to its full and perfect management. These commissioners cannot be members of the City Councils ; but they shall be appointed by the City Councils of New Orleans as regards the Asylum for the Poor; by the Mayor and City Councils as respects the School Farm at Baltimore, with the style of Directors; by the respective City Councils of New Orleans and Baltimore, as to the management of the fund for the education of the poor. *New appointments shall be made annually, on a -I day fixed by the will. The city councils shall have a supervision over their operations ; and to them the commissioners are liable for the performance of all their duties, and must annually render an account of their administration. Besides these commissioners, each city shall have agents on the spot to represent its commissioners ; and these agents shall also be appointed by the mayors and city councils. And, after the payment of the annuities, the respective commissioners, or the agents representing them, shall receive one moiety of the net revenue of the year, to be disposed of conformably to the will. As for the purchases to be made, before the full payment of the annuities by the Commissioners of the Asylum for the Poor, they must be approved by the Mayor and City Councils of New Orleans. The same rule is laid down for the purchases to be made by the Directors of the School Farm. They must be approved by the Mayor and City Council of Baltimore. The testator recommends to the Commissioners of the Asylum for the Poor to apply to the legislature of the State of Louisiana for an act of incorporation, subject always, however, to the conditions provided for in the will. He has also recommended, in the same language and under the same conditions, to the Directors of the Farm School, to apply, for the same purpose, to the legislature of the State of Maryland. He recurs to the same idea, using the same phraseology; and with the intent, no doubt, that his general estate should become a juridical person, he also recommends to the commissioners to sue out an act of incorporation for said SenePl estate, always subject to the conditions laid down in the wi • We omit a variety of minute regulations concerning e publication of the annual accounts, the building and loca i y of school-houses and residences for teachers, the school oigani 396 DECEMBER TERM, 1853. 374 Executors of McDonogh et al. v. Murdoch et al. zation, the immense lands for the Poor Asylum, together with the high-flown disquisitions in which tfle testator indulges. All this matter appears to be foreign to the controversy. The whole may be reduced to these few words: “ The cities are the devisees; but the administration of the property devised shall be carried on forever by commissioners appointed by the cities, and accountable to them; and it shall be the duty of said commissioners to hand over the moneys to the new public institutions which the testator orders to be created.” The testator goes on to say: “Nocompromise shall ever take place between the Mayor, Aidermen, and Inhabitants of *Baltimore, and those of New Orleans, or their sue-cessors, in relation to their respective rights to my gen- *-eral estate.” “ Neither party shall receive from the other, by agreement, a certain sum of money annually or otherwise, for its respective proportions. Neither party shall sell its respective rights under this will, to the general estate, to the other or others; but said general estate shall forever remain, and be managed, as I have pointed out, ordered, and directed. “And should the Mayor and Aidermen of New Orleans, and the Mayor and Aidermen of Baltimore, combine together, and knowingly and wilfully violate any of the conditions hereinbefore and hereinafter directed, for the management of the general estate, and the application of the revenue arising therefrom, then I give and bequeathe the rest, residue, remainder, and accumulations of my said general estate, (subject always, however, to the payment of the aforementioned annuities,) to the States of Louisiana and Maryland in equal proportions, to each of said States, of half and half, for the purpose of educating the poor of said States, under such a general system of education as their respective legislatures shall establish by law (always understood and provided, however, that the real estate thus destined by me for said purpose of education, shall never be sold, or alienated, but shall be kept, and managed as they, the said legislatures of said States, shall establish by law, as a fund yielding rents forever; the rents only of which general estate shall be taken and expended for said purpose of educating the poor of said respective States, and for no other). And it is furthermore my wish and desire, and I hereby will, that in case there should be a lapse of both the legacies to the cities of New Drleans and Baltimore, or either of them, wholly or in part, by refusal to accept, or any other cause or means whatsoever, hen, both or either of said legacies, wholly or partially lapsed, shall inure, as far as it relates to New Orleans, to the 397 375 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. State of Louisiana, .and, as far as it relates to Baltimore, to the State of Maryland, that the legislatures of those States, respectively, may carry out my intentions, as set forth in this my will, as far and in the manner which will appear to them most proper.” In October, 1852, the Judge of the District Court, sitting as a Circuit Judge, passed the following decree, viz. That all that part of the olographic will of John McDonogh, beginning at the second paragraph with the words “ It is my will and I direct my executors (hereinafter named), immediately after my death, to correspond,” &c., on the second page, numbered as the sixth page of the printed copy of the will on file, and ending with the words “ or otherways, and held and owned by said corporations,” on the 33d page said Panted *copy of said will, being all and -* every portion of said will relative to the city of New Orleans, the city of Baltimore, the State Louisiana, and the State of Maryland, the “general estate,” the Colonization Society, a projected asylum in New Orleans, the Society for the relief of Destitute Orphan Boys, a projected school farm in Maryland, free public schools in New Orleans and .Baltimore, and the appointment of various boards of commissioners, agents, directors, &c., and for the investment and accumulation of the estate, be, and all said provisions are, declared illegal, null, and of no force and effect whatever; and that as to all the estate of said deceased, except such as is disposed of in the first paragraph of said will, the deceased died intestate, and his estate fell, by his death, to his heirs at law. That complainants are heirs at law of the deceased John McDonogh, in the following proportions, to wit: Maria Louisa Ord, wife of Pacificus Ord, Laura J. Welsh, Thomas Welsh, Frank E. Welsh, and William P. Welsh, minors, represented by their guardian, William F. Murdoch, are heirs of twelve seventieths, (||) > one half °f sa^ portion being for the said Maria Louisa, and the other half being equally divided between said minors. Anne Cole, Mary Murdoch, wife of William F. Murdoch, Eliza Hayne, wife of George Hayne, George F. Cole, Louisa Sheffey, wife of Hugh W. Sheffey, and the children of Margaret Cole, the deceased wife of George. P-Jenkins, namely, George Jenkins, Mary McDonogh Jenkins, and Conway M. Jenkins, minors, represented by their father, George T. Jenkins, are heirs of twelve seventieths of. the estate. The said Anna, Mary, Eliza, George F., and Louisa, eac i to take one sixth part of said portion, and the remaining one sixth part thereof to be equally divided between said minors. Sarah Day, wife of Nicholas Day, is heir of twelve seventie s 398 DECEMBER TERM, 1853. 376 Executors of McDonogh et al. v. Murdoch et al. of the estate. Jane Beaver, wife of William Beaver, Sarah Beaver, wife of Jacob Beaver, Robert H. Hammett, Jesse Hammett, Anne Maria Snook, wife of Peter Snook, Eliza Anderson, wife of Joseph C. Anderson, and the children of Margaret Hammett, deceased, (said children not being parties,) are heirs of twelve seventieths of the estate; the said Jane, Sarah, Robert, Jesse, Ann, and Eliza, to take each a seventh part of said portion, and the remaining seventh to be reserved for the children of said Margaret, when they shall make themselves parties, and on due proof. Rosalba P. Lynch, wife of Andrew H. Lynch, is heir of twelve seventieths of the estate ; the remaining ten seventieths to be reserved for the heirs of the half-blood, when they shall make themselves parties, and on due proof. That the said complainants recover of the defendants’ executors of the will of the deceased all and singular the property, real and [-*077 *personal, corporeal and incorporeal, composing the L estate of the deceased, and especially all and singular the property of the deceased, in the several parishes of the State of Louisiana, mentioned or comprised in the inventory of the succession, prepared by Thomas Layton and Adolph Mazu-reau, notaries public, a copy of which is in evidence; and that said complainants have execution, and be put in possession of the same, in conformity with law and the rules of court. That reference be made to the master in chancery for an account of the administration of the said executors, from the death of the deceased to the execution of this decree ; and that said executors account to the said master in the premises, and that said master report to the court ; and so much of the said bill as demands said account and the recovery of any moneys in the hands of said executors, is retained for further decree. That any other person or persons, not now parties to the proceedings, claiming title to the estate of the deceased, or any part thereof, be allowed to present their claims respectively before this court, to make due proofs thereof, and to become parties to the proceedings for the due establishment and adjudication thereof. That the costs of the complainants and of the executors, be paid out of the succession of said deceased, and the costs of the other parties defendant by themselves respectively. Decree rendered 7th October, 1852. Signed 26th October, 1852. [seal.] Theo. H. McCaleb, United States Judge. From this decree, the executors appealed to this court. 399 377 SUPREME COURT. Executors of McDonogh et al. r. Murdoch et al. It was argued by Mr. Brent, Mr. May, and Mr. Hunt, for the appellants, and by Mr. Benjamin and Mr. Johnson, for the appellees. There were also briefs filed, being adopted by the counsel in this cause, prepared by the Frenph jurists above spoken of, by Mr. Pierce and Mr. Grailhe which were used before the Supreme Court of Louisiana, in a case wherein that State contended that the legacies had become lapsed, and consequently inured, in part, to the benefit of that State. From all this mass of materials, the reporter can only extract notices of some of the most important points which were discussed. The counsel for the appellants arranged their arguments under the following heads : First. That the validity of these legacies and annuities depends exclusively on the local laws of Louisiana. Secondly. That the exposition of those laws, written or unwritten, by the courts of Louisiana, form part of the local *070-1 *law, and as such will be followed and respected by -I the Federal courts, and this, whether expressed by a series of decisions or a single one, pronounced, by the State court “ post litem motam” or even after the decision of this cause in the United States Circuit Court. Thirdly. That by the laws of Louisiana, legacies for the benefit of the poor, or for education, or establishments of public utility, are legacies to pious uses, and, as such are preeminently favored and protected by law, so much so, that they shall not be suffered, in any event, to fail, unless found liable to be annulled, as “ substitutions or fidei commissa." Fourthly. That the universal legatees (the cities) have legal capacity to take the legacies bequeathed to them. Fifthly. That legacies like these are, in no respect, subject to the prohibitions against substitutions and fidei commissum. Sixthly. That whatever conditions are found in the annuities or legacies, of an illegal or impossible character, are to be considered as erased from the will, by operation and judgment of law, and no illegal or impossible clause, which is not a condition to the legacies, can prove prejudicial. Seventhly. That even the lapse or annulment of the annuities, from any cause, they being distinct from the universal legacies, so far from affecting their validity, would benefit them, by inuring, entirely and exclusively, to their increase and benefit. • . . Eighthly. That the two cities are invested with a sufhcien 400 DECEMBER TERM, 1853. 378 Executors of McDonogh et al. v. Murdoch et al. legal title as universal legatees, which is not impeached, either by any subsequent provisions, repugnant to the nature of the ownership instituted in them, or by any illegal or impossible conditions annexed by the testator to his legacies, because the title bequeathed, can well stand without, and discharged from the conditions thus imposed, wherever they may be illegal or impossible. Ninthly. That this very will of McDonogh has been finally and authoritatively adjudicated by the Supreme Court of Louisiana, to be valid under the laws of that State ; and such being the judgment of the highest State tribunal, it is conclusive upon this court, upon all questions involving the laws of Louisiana, and can only be revised, or its authority denied, on the ground that it is, in some respect, in conflict with the Constitution or laws of the United States. Fifth point. Legacies like these are, in no respect, subject to the prohibitions against substitutions and^rfez commissa. Both substitutions and fidei commissa are prohibited by the Civil Code, Art. 1507. The legacies to the cities cannot be brought within the category of either of the four classes of substitutions, known to the civil or Spanish Law. Johnson’s Civil Law of Spain, 132. *The vulgar substitution would apply to the substi- r^qyq tuted legacies over to the States. Johnson’s Civil Law, *-132. And the States, therefore, could not take, in the face of the prohibition of Art. 1507, but for the express saving contained in Art. 1508, which declares, that “the deposition by which a third person is called to take the gift, the inheritance, or the legacy, in case the donee, the heir, or the legatee, does not take it, shall not be considered a substitution, and shall be valid.” Nor is there any thing of the “ substitution, fidei commis-sana, which is made by giving it in trust to some one appointed heir, to hold the inheritance for a given time, that he may deliver it afterwards to another.” Johnson’s Civil Law, 126; Beaulieu v. Ternoir, 5 La. Ann., 480. See also the case decided by the Court of Cassation in France, cited in the appendix to this brief. ,. e.re therefore, nothing of a prohibited substitution in cit'S an<^ esPecially none in respect to the title of the Fidei commissa are equally prohibited by Art. 1507, but ther(fl1S difference, that a prohibited substitution annuls e first legacy, in respect to which there is a substituted Vol. xv.—26 401 379 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. legatee, while in the case of a fidei commissum, the first legacy is not avoided if the trust or fidei commissum be to a third party for the benefit of the second, or substituted legatee, and distinct from the first legacy. 5 La. Ann., 480-1; DuP'es-sis v. Kennedy, 6 La., 247. Therefore, to avoid the title of the cities on this ground, there must be either a bequest, in trust for them, or to them in trust for a third party. Let us examine the decisions on this question. In the case of Franklin’s will, Chief Justice Eustis declared, that “the prohibition certainly embraced the substitutions, and the fidei commissum of the Roman, the French, and the Spanish laws.” See page 21 of his opinion. And, in the same case, he considers fidei commissum synonymous with trust, under the English law. And this court has decided the prohibition to extend only to express trusts. Graines v. Chew, 2 How., 650. Now, to constitute a case of strict trust, under the English law, or of fidei commissum, under the civil law, the trust must not be for the benefit or use of the trustee. If a legacy is to A, in trust for his own use, it would not be a trust, either under the English or civil law. Legacies to corporations, or funds in their possession for public purposes will be enforced in equity as charitable funds. 2 Spence, Eq., 34; see Attorney-Greneral v. Heelis, 2 Sim. & St., 76 ; Attorney-Greneral v. Carlisle, 2 Sim., 427; Attorney- Greneral v. Brown, 1 Swanst., 297. *3801 true ^at, in the parlance of English chancel- -* lors, a devise to a corporation for the benefit of its poor, or for any charitable purpose connected with the purposes of the corporation, is loosely termed a trust, which chancery will enforce ; but though such a dedication to charitable uses be fiduciary in its nature, yet we confidently submit, that a legacy to a corporation for the benefit of its poor, or any establishment of public utility, is not that sort of express trust to which the prohibition in the code of Louisiana has reference. If an individual is the trustee for a third person, or for the poor, it might be safely admitted, that in both cases it was a fidei commissum, because he was a stranger to the beneficiaries, but not so when corporations are the legatees, and the legacies, in the words of this court in Vidal v Grirard, 2 How., 186, are for purposes “germane to the objects of the incorporation,” and “relate to matters which wi promote and aid and perfect those objects.” . , „ One of the illustrations is furnished in the same opinion o this court, 2 How., 189, where it supposes the case of a de- 402 DECEMBER TERM, 1853. 380 Executors of McDonogh et al. v. Murdoch et al. vise to Philadelphia “ to supply its inhabitants with good and wholesome water.” That might, in some sense, be called a trust, but, “ relating to matters which promote, aid, and perfect the objects of incorporation,” it could not be considered that sort of trust in which the beneficiary is foreign to the trustee, and therefore prohibited. But it seems to us that this very question has been conclusively settled by the Supreme Court of Louisiana, in the case . of DePontalba v. New Orleans, 3 La. Ann., 662, decided in 1848. See D. R. Richard v. Milne, 17 La., 320. In that case the testator bequeathed a hospital to the city for the use of lepers, and the city having afterwards, when there were no lepers, converted it into a cemetery, the court held “ that the city had a legal title to the property as against the heir at law, though the purpose of the legacy had failed.” Now that was undoubtedly a legacy in trust for the benefit of a particular class of the community of New Orleans, and would have been termed by English chancellors a trust, still it was held by the Supreme Court of Louisiana to be a valid title in the city, notwithstanding the prohibition against “fidei commissa,” which is not even noticed. This decision, made under Spanish laws reenacted, is the very civil code which is now relied on to destroy legacies to the same city for the support and education of its poor, has, therefore, in our humble judgment conclusively and clearly exempted from the prohibition of article 1507 all legacies to a city for the benefit of its poor, or any work of public utility, or any purpose “germane to the objects of incorporation.” *If these legacies for the “ establishment of free r^ooi schools in Baltimore and New Orleans” be stamped *-with the character of the prohibited “fidei commissa” then you must, under the same article of the code, annul every legacy in trust for any legitimate purpose of the corporation, or for establishments of utility and benefit, and to accomplish that end you must not only declare that legacies to corporations for their own benefit are trusts in the meaning of the aw, and as such within the prohibition, but you must reserve strike down the well-settled construction by her courts ot the Civil Code of Louisiana. A doubt would escape the prohibition. Cole v. Cole, 7 Mart. (La.), N. s., 418. We will here beg leave to incorporate into this argument so much of the opinion of Chief Justice Eustis, pronounced n his will of McDonogh, as relates to this question, and wmch seems to us unanswerable: hat, without a positive prohibition, municipal corpora- 403 381 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. tions in Louisiana should be incapacitated from receiving legacies for the public purposes of health, education, and charity, seems to me repugnant of all sound ideas of policy and to the reason of the law. “What legacies could they be expected to receive except for some public or humane object? Who would give a city a legacy, to be absorbed by its debts or appropriated to common expenses? Certainly, so far as the conscience of the public is concerned, a legacy of money to a city without any designation would be held to have been given for some object of charity or beneficence. “ I think there are articles in the code which exclude the conclusion as to the incapacity of the city of New Orleans to take legacies of this kind. “ The article 1536 provides that donations for the benefit of a hospital of the poor of a community, or of establishments of public utility, shall be accepted by the administrators of such communities or establishments. “ Provision is made by this article to give effect to donations for the poor made by living persons, inter vivos, because in donations of this kind the donor is not bound, and the donation is without effect, until the act of donation is signed and accepted by a party competent to receive the donation. The article relates to the form of the act and provides for its acceptance and the completion of the donation, and is not its legality presupposed ? Is it not predicated upon the legality of this mode of property for pious uses? Such appears to me to be the obvious intendment of the article. “There is not the slightest ground for any distinction as to the legality of the holding or ownership by donation inter *009-1 vivos *and mortis causa—that is, that the property "'J could be acquired by one donation and not by the other. “ Nor does the law make any distinction between a legacy to the poor of a city, and a legacy to a city for the poor.. For in both cases it is a legacy to pions uses, and the city is the recipient. Domat, lib. 4, tit. 2 ; Sect. 2, § 13; Id., Sect. 6, § 1 et seq. . . “ The article 1543 provides that when the donation is mane to minors, to persons under interdiction, or to public establishments, the registry shall be made at the instance of curators, tutors, or administrators. “ The article 607 provides that the usufruct granted to cor po’rations, congregations, and other companies which are deemed perpetual, lasts only thirteen years. If these corpo rations, congregations, and companies are suppressed, abo 404 DECEMBER TERM, 1853. 382 Executors of McDonogh et al. v. Murdoch et al. ished, or terminate in any other manner, the usufruct ceases and becomes united with the ownership. “ The legislation concerning the powers of the city of New Orleans, I think, is in the same sense. “Doubts having existed as to the power of the city to hold property out of its limits, the corporation was declared ‘ capable of holding or possessing real estate without its limits, and of acquiring, retaining, and possessing, by donation or legacy, any property, real or personal, whether situate within or without the limits of the city.’ Act of 1830, p. 50. Digest of Stat. 144, § 150. “ I have no doubt of the legality of the testamentary disposition under consideration. “ I think it would follow, as a necessary consequence from the definition, origin, and nature of legacies to pious uses, that if those in favor of the cities are of that sort, those in favor of the States, in the contingency provided, are of the same character. The difference is, that in the former the mode of administration is regulated by the will, in the latter it is left to the wisdom and discretion of the legislative power. “ The administration of property devoted to pious uses by a legacy, through the instrumentality of overseers, commissioners, or a quasi corporation, makes no difference as to the title; both in fact are legacies to pious uses, and not unlike the Girard legacy maintained by this court in 2 La. Ann., 898. Girard Heirs v. New Orleans.” This opinion was concurred in by Mr. Justice Dunbar. Ninth Point—The conclusiveness and binding effect of the judicial decisions of the State Courts of Louisiana upon the construction and exposition of the Civil Code and the Unwritten Laws of that State. In elucidating the above proposition, our remarks will-necessarily *be confined exclusively almost to a considera-tion of the decisions of the Supreme Court of the United States. This case depends on the construction to be given to the laws of Louisiana, composed of a written code, and of so much of the Roman, Spanish, and French laws, as are judicially recognized as of authority in that State. The Supreme Court of Louisiana, in the case of the State of Louisiana against the executors of McDonogh, has given a construction to this very will, founded on the local law, which, in effect, defeats the claim of the heirs at law. 405 :83 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. But before that judgment was pronounced, the Circuit Court of the United States for the District of Louisiana, in a cause instituted in that Court by the heirs at law against the executors, decreed in favor of the heirs. That decree is now before the Supreme Court of the United States on appeal, and the important inquiry is, whether the decision of the Supreme Court of Louisiana is not conclusive upon all the questions in the case, depending on the construction of either the written, or unwritten law of that State. In cases depending on the laws of a particular State, the Supreme Court of the United States has uniformly adopted the construction which the supreme judicial tribunal of the State has given to those laws. And the reason on which this rule is founded, is stated by Chief Justice Marshall to be, that “ the judicial department of every government is the appropriate organ for construing the legislative acts of that government.” 10 Wheaton, 159. The cases in which the Supreme Court has conformed to the decisions of State courts are very numerous. The following list of references may save the trouble of search, though it does not comprise the whole: 5 Cranch, 22; Id., 221; Id., 255: 6 Id., 165; 9 Id., 87; 2 Wheat., 316; 5 Id., 270; 6 Id., 119 ; 7 Id., 361; 10 Id., 152; 11 Id., 361; 12 Id., 153 ; 2 Pet., 492 ; Id., 89 ; 4 Id., 124; 6 Id., 291 ; 15 Id., 449 ; 5 How., 134; 6 Id., 1; 7 Id., 198, 219; Id., 812, 818; 10 Id., 401; 13 Id., 271; 14 Id., 485, 504. In St. John v. Chew, 12 Wheat., 153, it is said “ This court adopts the local law of real property, as ascertained by the decisions of the State courts, whether those decisions are grounded on the construction of the statutes, or form a part of the unwritten law of the State.” In Elmendorf v. Taylor, 10 Wheat., 165, the court say: “We must consider the construction as settled finally by the courts of the State; and this court ought to adopt the same rule, should we even doubt its correctness.” Neves v. Scott, 13 How., 271, decided that this court, on *aPPeal from the Circuit Court, would not be governed J by the decision of the Supreme Court of the State, upon any question dependent upon general chancery principles; but the court clearly intimate that it would be otherwise if the case had depended upon “ the legislation of Georgia, or the local laws or customs of that State. . In Nesmith v. Sheldon, 7 How., 812, in which the cour , in an equity cause, held a single decision of the Supreme Cour of Michigan on the same question to be conclusive, a 406 DECEMBER TERM, 1853. 384 Executors of McDonogh et al. v. Murdoch et al. question depending on the construction of the constitution and local laws of the State. The court will not demand a series of State decisions, but will hold itself bound by a single decision of the highest State tribunal. In the Bank of Hamilton n. Dudley, 2 Pet., 492, there was but a single decision, and that by a divided court, and yet it was regarded as conclusive. In Gardner v. Collins, 2 Pet., 89, the court say: “If this question had been settled by any judicial decision in the State where the land lies, we should, upon the uniform principles adopted by this court, recognize that decision as part of the local law.” In the United States v. Morrison, 4 Pet., 124, and Green v. 'Neal, 6 Pet., 291, a single decision of the highest State court was held sufficient. Again: in the Bank of Hamilton v. Dudley, 2 Pet., 492, after the case had been argued in the Supreme Court, the court hearing that the same question was depending before the highest judicial tribunal of the State, (Ohio,) held the case under advisement till the next term, to receive the opinion, and after it had been given, conformed to it. See also 7 How., 812, 818. Again, the decision of a circuit judge, though made prior in time to the decision of a State court, upon the same question, does not affect the conclusiveness of the latter. Thus, in the United States v. Morrison, 4 Pet., 124, the Circuit Court of the United States for Virginia (Chief Justice Marshall, presiding) made a decision upon the construction of a State statute, in regard to which different opinions had been entertained; subsequently to which, the same question was decided the other way by the court of appeals of Virginia. And though this State decision had not been reported, but was quoted in manuscript, when the case came before the Supreme Court of the United States, Chief Justice Marshall, delivering the opinion, reversed his own judgment in the Circuit Court. The rule was afterwards conformed to in a still stronger case. The Supreme Court had twice decided the same question, as to *the true construction of the statutes of poor limitations of Tennessee, upon the authority of two decided cases in the Supreme Court of that State, in 1815. But in 1832, in the case of Green v. Neal, 6 Peters, 291, it appearing that these decisions were made under such circumstances that they were never considered, in the State of Tennessee, as fully settling the construction of the statutes; and 407 385 SUPREME COURT. Executors of McDonogh et al. v. Murdoch et al. that in 1825 the Court of Appeals, by a single decision, had ruled the point differently, the Supreme Court overruled its two former decisions, and adopted that of the State court, as the last and authoritative. In the case of Grove v. Slaughter, 15 Pet., 449, the court did not depart from this established rule. The State decision relied on, as settling the construction of a provision in the Constitution of Mississippi, was the decision of a divided court—was extrajudicial, and contrary to the legislative construction of the provision, and we will add especially, that it was made after the date of the contract in controversy in that case, and impaired the obligation of the contract. In Groves and Slaughter, the note in suit was dated December 20th, 1836, (15 Pet., 449,) and the State decision, relied on to invalidate the note, was that of Glidewell 14th day of October, 1845, stated and set forth in the pleadings in this cause, executed by the said Henry Burden and the said defendants, did not, in legal effect or otherwise, or by just construction, license, impart, authorize, or convey a right to the said defendants to use the said improvements in the manufacture of the hook-headed spikes, by the machinery mentioned in the said bill of complaint, or any rights secured to the said Henry Burden by the said letters-patent, and assigned or transferred to the said complainants, as aforesaid. And it is further adjudged and decreed, that the said defendants have infringed and violated the said patent, so granted to the said Henry Burden, as aforesaid, by making and vending the said hook-headed spikes by the said machinery patented to the said Burden on the 2d September, as aforesaid. And it is further adjudged and decreed, that the said defendants do account to the said complainants for the damages or use and profits, in consequence of the said infringements by the said defendants. And it is further adjudged and decreed, that an account of the damages, or use and profits, be taken and stated by Marcus T. Reynolds, Esq., counsellor at law, as master of this court, pro hac vice, and that the defendants attend before the said master, from time to time, under the direction of the said master, and that the said complainants may examine the said defendants under oath as to the several matters pending on the said reference, and that the said defendants produce before the said master, upon oath, all such deeds, books, papers, and writings, as the said master shall direct, in their custody or under their control, relating to said matters, which shall be pending before said master. And it is further ordered and decreed, that a perpetual injunction issue out of and under the seal of this court, against he said defendants, commanding them, their attorneys, agents, and workmen, to desist and refrain from making, using, or vending any machine containing the new and useful improve 483 456 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. ment for which letters-patent were granted to the said Henry Burden on the second day of September, 1840, and from in any manner infringing or violating any of the rights or privileges granted or secured by said patent. And it is further ordered, that the said complainants re-cover *°f ^ie sa,id defendants the damages or use and J profits which shall be reported by the said master, and that upon the confirmation of his report or decree, be entered against the defendants therefor, and also for the costs of the complainants in this suit in this court, and that the said complainants have execution therefor and for the costs in the said Supreme Court. And it is further ordered and decreed, that such other proceedings be had herein, in conformity to the opinion of the said Supreme Court, as to law and justice may appertain, and that the parties and master may apply, upon due notice, to this court, upon the foot of this decree, for such other and further orders, instructions, and directions, as may be necessary. (A copy.) A. A. Boyce, Cleric. And deponent further says, that on the fifth day of October, 1853, the solicitor for the defendants served upon Henry Burden, the president of the said complainants, a petition of appeal and a citation thereon, in the words and figures following : To the Supreme Court of the United States of America: The petition of Erastus Corning, John F. Winslow, and James Horner, respectfully represents, that a decree was lately made in the Circuit Court of the United States for the Northern District of New York, in equity, bearing date the fourth day of September, 1850, in a certain cause pending in said court, wherein The Troy Iron and Nail Factory were complainants, and your petitioners were defendants, certain parts of which decree, as hereinafter specified, are as your petitioners are advised, erroneous, and ought to be reversed. . And your petitioners further show, that the matters in dispute in said cause, exclusive of costs, exceed the sum of two thousand dollars. Whereupon your petitioners pray that the said decree, together with the pleadings, depositions, and a other proceedings in said cause, may be sent to the said supreme Court of the United States and filed therein on e first Monday of December next, and that so much or sucn parts of said decree as declares, orders, adjudges, and deciees 484 DECEMBER TERM, 1853. 457 Corning et al. v. The Troy Iron and Nail Factory. as follows, to wit: “ And it appearing to the said court that the said Henry Burden was the first and original inventor of the improvement on the spike machine in the bill of complaint mentioned, and for which a patent was issued to the said Henry Burden, bearing date the 2d September, 1840, as in said bill of complaint set forth, and that the said complainants have a full and perfect title to the said patent for said improvements, by assignment from the said Henry Burden, as is stated and set forth in the *said bill of complaint, puro may be reversed, and that the appellants may be re- *■ stored to all things which they have lost by reason thereof.” Daniel L. Seymour, Solicitor for Appellants. Dated Troy, Sept. 8, 1853. By the Honorable Samuel Nelson, one of the Judges of the Circuit Court of the United States for the Northern District of New York. Whereas, Erastus Corning, John F. Winslow, and James Horner, lately filed in the Circuit Court of the United States for the Northern District of New York, a petition of appeal directed to the Supreme Court of the United States o,f America, stating that a decree was lately made in the Circuit Court of the United States for the Northern District of New York in Equity, bearing date the 4th day of September, 1850, in a certain cause therein pending, wherein the Troy Iron and Nail Factory were complainants, and Erastus Corning, John F. Winslow, and James Horner, were defendants, certain parts of which said decree are alleged to be erroneous and ought to be reversed, and further, stating that the matters in dispute in said cause, exclusive of costs, exceeded in value the sum of two thousand dollars; And whereas the said Erastus Corning, John F. Winslow, and James Horner, by their said petition prayed that the said decree, together with the pleadings, depositions, and all other proceedings in said cause may be sent to the said Supreme Court of the United States, and filed therein on the first Monday of December next, and that the said parts of said decree may be reversed, and the said appellants restored to all things which they have lost by reason thereof; You are therefore hereby cited to appear before the said Supreme Court of the United States at the City of Washington, on the first Monday of December next, to do and receive what may appertain to justice to be done in the premises. Given under my hand, in the Circuit Court of the United 485 458 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. States for the Northern District of New York, the 23d day of September, 1853. S. Nelson. And deponent further says, that he has been informed and believes that the record and. proceedings in said appeal have been duly filed with the clerk of this court. Samuel Stevens. Sworn before me this 16th day of November, 1853. Leonard Kip, Master and Examiner in the Circuit Court of the Northern District of New York. *459] * Supreme Court of the United States. The Troy Iron and Nail Factory v. Erastus Corning et al. In Equity. Ser,—Be pleased to take notice that upon the pleadings, papers, and proceedings in this cause in the Circuit Court of the United States for the Northern District of New York, and upon the record, and proceedings returned to this court by the clerk of the said Circuit Court on the appeal by the complainant to this court, and upon the affidavit hereto annexed, and copy of which is herewith served upon you,—this honorable court will be moved at the next term thereof to be held at the Capitol, at the City of Washington, District of Columbia, on the first Monday of December next, at the opening of the court on that day, or as soon thereafter as counsel can be heard for a rule or order dismissing the appeal of the defendants to this court of or such other and further rule or order as may be agreeable to equity. Albany, November Qth, 1853. Samuel Stevens, Solicitor for Complainants. To D. L. Seymour, Defendants' Attorney. Upon this motion to dismiss the appeal, the cause was taken up. It was argued by Mr. Stevens and Mr. Johnson, for the motion, and Mr. Seymour and Mr. Seward against it. Mr. Stevens, in support of the motion to dismiss, made the following points: . . The only ordering part of the decree—the only judgmen pronounced by the court below—was a decree dismissing e 486 DECEMBER TERM, 1853. 459 Corning et al. v. The Troy Iron and Nail Factory. complainants’ bill, with costs; from that decree the complainants duly appealed to this court, which decree was reversed, and a decree ordered according to the prayer of the bill, which was duly entered in the Circuit Court, before the defendants made the present appeal. Preceding the ordering part of the decree, certain recitals were made by the Circuit Court, showing the reasons or grounds upon which that court pronounced the ordering part of the decree. It is from the recitals preceding the decree in this cause, and not from the decree, that this appeal has been made. The complainants, the respondents to this appeal, now move to quash or dismiss it upon the following grounds: * First. This court has appellate jurisdiction only upon appeals from final judgments or decrees of the *-Circuit.Court. 1 United States Stat, at L., p. 84, § 22. The ordering part of a decree is the only final decree or judgment of the court. The preliminary recitals preceding the ordering part of the decree is no part of the decree or judgment of the court. Such recitals are simply the reasons or grounds of the decree. Those reasons or grounds of the decree cannot be appealed from. A party might as well claim to appeal from the opinion of the court, as from a synopsis of the opinion which constitutes the recitals upon which the ordering part of the decree is based. The only decree in this case was a decree dismissing the complainants’ bill, with costs. Seaton’s Forms of Decrees, pp. 8, 9. From the whole of that decree the complainant appealed, the whole of which decree was reversed by this court at its last term, and the Circuit Court was ordered by the mandate of this court to enter a decree in said cause, according to the prayer of complainant’s bill, and such decree was entered by the said Circuit Court, at the June term thereof, 1853, in compliance with said mandate of this court. . The defendants cannot have that decree of this court reviewed or altered by an attempt to appeal from the reasons upon which the Circuit Court pronounced its decree. oeeonc?. But if the recitals preceding the ordering part of he decree of the Circuit Court could be appealed from, the eiendants should have brought a cross appeal, which would e heard by this court with, and at the same time of, the original appeal, and one decree only would be pronounced by e appellate court. 1 Barb. Ch. Prac., 397; Uguart’s Prac. 487 460 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. in House of Lords on Appeals and Writs of Error, pp. 37-40 ; Palmer’s Prac. in House of Lords on Appeals and Writs of Error, p. 33; Hawley v. James, 16 Wend. (N. Y.), 85-274; Mapes v. Coffin, 5 Paige (N. Y.), 296. A party cannot have a decree of the Circuit Court reviewed by this court two, three, or more times, by appealing from different parts of the decree at different times. Every ground which he might have urged on the hearing of the first appeal, will be deemed to have been made by him, or if not made, to have been abandoned. The Santa Maria, 10 Wheat., 443-4; Ex parte Sibbald, 12 Pet., 488. This attempt at an appeal by the defendants from the reasons of the decree, is analogous to an application to this court for a rehearing upon the original appeal, which is never granted after the cause has been remitted to the Circuit Court. McArthur v. Browder, 4 Wheat., 488. *4611 * Third. The decree of the Circuit Court entered in -• this cause on the 4th September, 1850, was reversed by this court at its December term, 1852, and the proceedings were remitted to the Circuit Court, and that court, at its June term, 1853, entered a new decree, in pursuance of, and in compliance with, the mandate of this court. Therefore, on the 5th of October, 1853, the date of defendants’ present appeal, there was no such decree of the Circuit Court as that entered by said court, of the 4th of September, 1850, from parts of which the defendants claim to appeal. Fourth. The only decree existing in the Circuit Court in this cause, since its June term, 1853, is an interlocutory, and not a final decree, and cannot be appealed from. Kane v. Whittick, 8 Wend. (N. Y.), 219; 9 Pet., 1; 15 Id., 287. Appeals from the Circuit Court to this court can only be from final decrees or judgments. 1 U. S. Stat, at L., p. 84, §22. Mr. Seymour and Mr. Seward opposed the motion to dis' miss the appeal, upon the following grounds :— I. The decree of the Circuit Court, made on 4th September, 1850, disposed of the whole cause on the merits, and was, therefore, a final decree, and an appeal may be taken from it. See act of Congress, March 3, 1803. By this act, an appeal to the Supreme Court is given “ from all final judgments or decrees rendered, or to be rendered, in any Circui Court.” See also act 24th February, 1789; The San Bffiaro, ^ Wheat., 132; see act of 1819 (3 U. S. Stat, at L., p. 481, ch. 19); see Patent act of 1836, § 17 (5 U. S. Stat, at L., p. 124); Laws United States Courts, 117, 118, 119. This as 488 DECEMBER TERM, 1853. 461 Corning et al. v. The Troy Iron and Nail Factory. act enlarges the right of appeal in patent cases. It gives the court a discretion to allow the appeal in cases other than those already provided for by law. The appeals authorized by this law are only allowed from a final decree in United States courts. Patterson v. Gaines and others, G How., 585. A decree dismissing a bill is a final decree. 2 Dan. Ch. Pl. and Pr., Perkins’s ed., pp. 1199, 1200 ; McCollum v. Eager, 2 How., 64. The decree, therefore, of the Circuit Court, in this cause, may be appealed from, under the acts of Congress aforesaid. 11. This decree consists of three parts: the introductory part; the part declaring the rights of the parties, as this does of the complainants ; and another part ordering or directing a thing or things to be done. See 2 Dan. Ch. Pl. and Pr., Perkins’s ed., pp. 1210 to 1214, as to the forms of decrees. The rules of this court do not allow of recital. See rule 85; *so, too, Stat. 3 and 4 William IV., cited in 2 Daniel’s [-*4^9 Pr., 1212 ; Seaton’s Decrees, 159. It declares the right of complainants to the patent-right, and the right of the defendants to use the patented machinery, under the agreement of October 14, 1845. This decree proceeds and adjudges and determines two important matters of defence which had been distinctly set up in the pleading, and upon which much testimony had been given, to wit: First. “That the said Henry Burden was the first and original inventor of the improvement on the spike machine in the bill of complaint, mentioned, and for which a patent was issued to the said Henry Burden, bearing date the 2d day of September, 1840, as is in said bill of complaint set forth.” Second. “ That the said complainants have a full and perfect title to the said patents for said improvements, by assignment from the said Henry Burden, as is stated and set forth in the said bill of complaint.” These portions of the decree are final decisions on the merits of the case, giving to the complainants the full and complete title to the machinery; a vital point, which, if decided for the defendants, decides the whole case for them; no matter what may be the decision as to the agreement of October 14, 1845. . An appeal will lie from the decision of the Court, upon either or both of these contested points. 3 Dan. Ch. Pr., 1606. F .®.ven. the adjudication contained in the decree of the originality of the invention in question, and of the 489 462 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. complainants’ title to the patent, need not have been inserted in the decree, yet they were inserted by the Circuit Court, upon the special motion of the complainants, and against the opposition of the defendants, who should therefore not be prejudiced by it. See affidavits read on this motion by the defendants. IV. The appeal by the complainants brought up only the questions decided to their prejudice. Buckingham v. McLean, 13 How., 150, 151. The equity practice of the Supreme Court of the United States is regulated by the laws of the United States, the rules of the court, and in the absence of any provision in them applicable to a given case, by the practice of the English High Court of Chancery. Rule 90, Supreme Court. The State of Rhode Island n. The State of Massachusetts, 14 Pet., 210; Bein v. Heath, 12 How., 168; Dorsey v. Packwood, 12 How., 126. By the practice, both of the American and the English Courts of Chancery, this is a proper case for a cross appeal to be brought by defendants. 1 Turner and Venable’s Ch. Pr., 733, edit. 1835; 2 Smith, Ch. Pr., p. 31, edit. 1837; *3 Dan. Ch. Pr., 1685, 1688, 1606; Blackburn v. -* Jepson, 2 Ves. & B., 359; Hawley v. James, 16 Wend. (N. Y.), 61, 85; Mapes v. Coffin, 5 Paige (N. Y.), 296; Clowes v. Dickinson, 8 Cow. (N. Y.), 330. V. The present is the proper time to bring it. 1. The decree of the Circuit Court being final, the laws of March 3, 1803, and of 1819 and 1836, give an unrestricted and unqualified right of appeal to either party for five years. 2. Because an appeal now taken from the latter decree would bring up for review only the proceedings subsequent to the mandate. The Santa Maria, 10 Wheat., 31; Ex parte Sibbald, 12 Pet., 488. There is no rule of the Supreme Court adopting the rules of the House of Lords. VI. The decision of this court, on the appeal of the complainants, affects only the part of the decree complained of by them, to wit, the construction of the agreement of October 14, 1845; and, while the declaratory parts of the decree of the Circuit Court, in favor of the complainants, remain unreversed, the right to sustain their bill for a perpetual injunction, and to recover damages, followed as a consequence, from the construction given by this court to the agreement of October 14, 1845. VII. The defendants are entitled to an appeal at some time within five years from the decision of the Circuit Court 490 DECEMBER TERM, 1853. 463 Corning et al. v. The Troy Iron and Nail Factory. against them, on the validity of the patent in question. Now, if the complainants’ position is true, that nothing is appealed from but the order directing the bill to be dismissed, these defendants have not now, and never have had, an opportunity to appeal at all; because that decree was in their favor, and a party cannot appeal from a decree in his own favor. It is a mere subtlety to say that because the decree, deciding the validity of the patent and the title of the complainants in their favor, ordered no relief; but, on the contrary, for a different reason, directed their bill to be dismissed, that, therefore, the decision of the validity of the patent and the title of the complainants is mere recital, and not a substantial part of the decree, and proper subject of an appeal. The test is this: Are the validity of the patent and the title of the complainants now open to dispute by the defendants in the Circuit Court ? Certainly they are not. But, according to the complainants, those points are not open to appeal; so that a decision on a vital point against the defendants is not the subject of appeal at all. Again. If what the complainants allege is correct, that there is no decree now remaining in the court below but the decree which is entered on the mandate; and, also, that, on appeal *from that decree so entered on the mandate, the party aggrieved can review only the proceedings L subsequent to that decree, then it results that the defendants can have no appeal at all from a decree in which the material issue upon the invention is found against them by the court below. Again. In answer to this, it is said that, on the appeal brought by the complainants upon the issue as to a license found against them, the defendants were at liberty to fall back, and contest the issue of the invention found against them; but, in reply, we say that, by the rules of courts of equity, as well as by statute, it is optional to the defendants whether they will so fall back, and contest the issue found against them on the hearing of the appeal of the complainants, or whether they will bring their own distinct appeal. VIII. The respondents’ motion should be denied. Mr. Justice GRIER delivered the opinion of the court. The Troy Iron and Nail Factory filed their bill in the court below, claiming to be assignees of a patent granted to Henry Burden, for a “ new and useful improvement in the machinery for manufacturing wrought nails or spikes.” The mil charges, that the appellants, Corning & Company, have infringed their patent, and prays for an injunction and 491 464 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. an account of profits, &c. The answer of the respondents below took defence on two grounds—first, that Burden was not the first and original inventor of the machine patented; and, secondly, that the respondents used their machine under a license from the patentee. The court below sustained the defence on the latter ground, and entered the following decree : “ Therefore, it is ordered, adjudged, and decreed, that the said bill of complaint is hereby dismissed, with costs to be taxed, and that the defendant have execution therefor.” The case is now before us on a motion to dismiss the appeal. Looking at the case as exhibited to us by the record, it appears to be an appeal by respondents from a decree dismissing the complainants’ bill with costs. It often happens that a court may decree in favor of a complainant, but not to the extent prayed for in his bill, and he may have just cause of appeal on that account. But the prayer of the respondent’s answer is, that “ he be hence dismissed, with his reasonable costs and charges, on this behalf most wrongfully sustained.” And, having such a decree on the present case, he cannot have a more favorable one. It is true that the petition for the appeal in this case prays only, “ that so much of such parts of said decree, as declares, orders, adjudges, and decrees as follows, to wit, “And it *4651 *aPPearing f° said court that the said Henry Bur- J den was the first inventor of the improvement, &c., may be reversed, and that the appellants may be restored to all things which they have lost by reason thereof.” But the matter complained of forms no part of the decree of the court below. It shows only, that the judge, in reciting the inducement or reasons for entering a decree in favor of the respondents below, was of opinion that they were entitled to such decree, because they had succeeded in establishing one only of the two defences alleged in their answer.' It is the opinion of the court, on a question of fact involved in the case, but not affecting the decree. If the decree be correct, the party in whose favor it is given, has no right to complain ; yet his appeal. prays that it “ may be reversed, and the appellants restored to all things which they have lost by reason thereof , and the record shows they have lost nothing. If the decree be reversed, according to the prayer of the appellants, the court must necessarily enter a decree for t ic complainants below. This would, probably, not meet e views of the appellants. They have put themselves in e anomalous position either of asking for the affirmance of e 492 DECEMBER TERM, 1853. 465 Corning et al. v. The Troy Iron and Nail Factory. decree from which they have appealed, or of requesting this court to reverse a decree in their favor, and send back the record to the court below, with directions to enter the very same decree, but to assign other reasons for it. The court were not bound to give any reasons for their decree. The law gives the party aggrieved an appeal from a final decree of an inferior court. But it does not give the party who is not aggrieved an appeal from a decree in his favor because the judge has given no reasons, or recited insufficient ones for a judgment admitted by the appellant to be correct. There is a part of the history of this case which does not appear on the record; but, being known to the court, and assumed by counsel on both sides to make part of the case, it will be necessary to notice the case- under that aspect. The decree in favor of the appellants, which is now appealed from, has already been before this court on an appeal by the complainant below. The parties were then fully heard, the decree of the Circuit Court reversed, and the case remanded for further proceedings. It is reported in 14 How., 194. It appears, therefore, that there is no such decree as that which is now complained of. The decree of the Circuit Court has been entirely annulled, reversed, and set aside by this court. Before that was done, the appellants had a full hearing on every point of defence set up in their answer. The court below had *decided that the defendant had a good defence under his plea of license, but not under •-the plea that Burden was not the first inventor of the patented machine. This court has decided, that the appellant’s defence was insufficient on both pleas. The language of the court is, (14 How., 208,) “ That the defendants have failed to prove that Burden was not such first inventor; and, in our opinion, the evidence given by them on that point rather serves to establish the originality of the invention than to impair it. The appellants stand upon the patent, as the first which was granted for the bending lever; and they may well do so, until other evidence than that in this record shall be given to disprove its originality.” It is plain, therefore, that, under the guise of an appeal from the decree of the Circuit Court, this is an appeal, in fact, from the decision of this court. For there is no other decree existing in the case except the decree of this court. There must be an end of litigation some time. To allow a second appeal to a court of last resort, on the same questions which were open to dispute on the first, would lead to endless 493 466 SUPREME COURT. Corning et al. v. The Troy Iron and Nail Factory. litigation.1 It is said by this court, in Martin v. Hunter, (1 Wheat., 355,) “A final judgment of the court is conclusive upon the rights which it decides, and no statute has provided any process by which this court can revise its judgment.” See, also, Sibbald v. United States, 12 Pet., 488. It follows, therefore, that, when a complainant has a decree in his favor, but not to the extent prayed for in his bill, and the respondent appeals; if the complainant desires a more favorable decree, he must enter a cross appeal, that, when the decree comes before the appellate court, he may be heard. For, when the decree is either affirmed or reversed by the appellate court, it becomes the decree of that court, and cannot be the subject of another appeal. But, in this case, where the decree of the court below dismissed the bill, no appeal by the respondent was necessary. He had a full opportunity to urge every defence set up in his answer. The printed arguments show that the defence, for want of originality in the patent, was relied upon as a ground for affirming the decree of the court below, and, as we have already shown, was distinctly passed upon and overruled by this court. A second appeal lies only when the court below, in carrying out the mandate of this court, is alleged to have committed an error. But, on an appeal from the mandate, it is well settled, that nothing is before the court but the proceedings subsequent to the mandate. Whatever was formerly before the court, and was disposed of by its decree, is considered as finally disposed of.2 See Himely v. Rose, 5 Cranch, 313; Canter v. The Ocean Ins. Co., 1 Pet., 511; The Santa Maria, 10 Wheat., 431; Rice v. Wheatly, 9 Dana (Ky.), 272. *4C71 ^Moreover, as it is admitted that the court below -I have not yet acted upon the mandate of this court, and entered a final decree in pursuance thereof, there is no final decree, from which only an appeal can be taken. See The Palmyra, 10 Wheat., 502 ; Chace v. Vasquez, 11 Id., 429. , There are, therefore, three conclusive reasons for dismissing the present appeal: 1. The appellants have already been heard in this court on a former appeal. 2. There is no such decree as that from which the appeal purports to be taken. 3. There is no final decree in the case, from which an appeal can be taken. The appeal is therefore dismissed. 1 Followed. Roberts v. Cooper, 20 How., 481; Tyler v. Maguire, 17 Wall., 284. 494 2 Followed. Supervisors v. Kenni-cott, 4 Otto, 499. DECEMBER TERM, 1853. 467 United States v. Dawson et al. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Northern District of New York, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that this cause be, and the same is hereby, dismissed, with costs. The United States, Plaintiffs, v. James L. Dawson and John R. Baylor. In June, 1844, Congress passed an act, by virtue of which the Circuit Court of the United States for the District of Arkansas, was vested with power to try offences committed within the Indian country. In July, 1844, it was alleged that a murder was committed in that country. In April, 1845, an indictment was found by a grand jury, in the Circuit Court of the United States for the District of Arkansas, against a person charged with committing the murder. In March, 1851, Congress passed an act erecting nine of the Western counties and the Indian country into a new judicial district, directing the judge to hold two terms there, and giving him jurisdiction of all causes, civil or criminal, except appeals and writs of error, which are cognizable before a Circuit Court of the United States. The residue of the State remained a judicial district to be styled the Eastern District of Arkansas. This act of Congress did not take away the power and jurisdiction of the Circuit Court of the United States for the Eastern District to try the indictment pending.1 This case came up from the Circuit Court of the United States for the Eastern District of Arkansas, upon a certificate of division in opinion between the judges thereof.2 *The two following questions were certified, viz. r*46R 1st. Did the act of Congress, entitled “An act to L divide the district of Arkansas into two judicial districts,” approved the third day of March, in the year of our Lord one thousand eight hundred and fifty-one, whereby the Western District of Arkansas was created and defined, take away the power and jurisdiction of the Circuit Court of the United As to the jurisdiction of State and federal courts, over offences, by or against Indians, committed within the boundaries of a State, see State v. Dortater,! Crim. L. Mag., 84; State v. Harris, 2 Wis. L. N., 2; United States v. Berry, 2 Crim. L. Mag., 187; United States v. Bridleman, Id., 673; United States v. Kan-gi-shan-ci, 14 Chic. L. N., 83; United States v. McBratney, 14 Otto, 621. See post, *488 n. 2 Reported below, Hempst., 643. 495 468 SUPREME COURT. United States v. Dawson et al. States for the Eastern District of Arkansas, so that it cannot proceed to hear, try, and determine a prosecution for murder, pending against the prisoner, James L. Dawson, a white man and not an Indian, upon an indictment found, presented, and returned into the Circuit Court of the United States for the District of Arkansas, by the grand jury impanelled for that district, upon the 16th day of April, in the year of our Lord one thousand eight hundred and forty-five, against said James L. Dawson, a white man, for the felonious killing of Seaborn Hill, another white man and not an Indian, on the eighth day of July, A. d., 1844, in that country belonging to the Creek nation of Indians, west of Arkansas, and which formed a part of the Indian country annexed to the judicial district of Arkansas by the act of Congress approved the seventeenth day of June, A. d., 1844, entitled “An act supplementary to the act entitled ‘ An act to regulate trade and intercourse with the Indian tribes, and to preserve peace on the frontiers, passed thirtieth June, one thousand eight hundred and thirty-four,” in which cause, so pending, no trial has as yet been had. 2d. Can the District Court of the United States for the Western District of Arkansas take jurisdiction of the case aforesaid, upon the indictment aforesaid, so found in the year 1845, in said Circuit Court for the District of Arkansas. Although the name of Dawson only was mentioned in the question certified, yet the record showed that Baylor was indicted at the same as aiding and abetting in the murder A motion was made in the Circuit Court to quash the indictment upon the ground that this honourable court has no jurisdiction or power to hear, try, or determine this case and prosecution, and that all its jurisdiction and power in that behalf ceased and was extinguished on the third day of March, 1851, when that part of the Indian country, in which the offence is charged to have been committed, was severed from this district, and made part of a new district, under the jurisdiction of the District Court of the United States, for the Western District of Arkansas.” . . , It was upon this motion that the judges differed in opinion and certified the two questions, above stated, to this court. The motion to dismiss the case was argued by J/r. Lawrence and Mr. Pike, for Dawson, and by Mr. Cushing, (Attorney-General,) for the United States. *Mr. Pike, in his brief, made the following argu-mentative statement of preexisting laws upon the subject. 496 DECEMBER TERM, 1853. 469 United States v. Dawson et al. This is an indictment against James L. Dawson for a murder alleged to have been committed at the Creek agency, in the Creek country, west of Arkansas, on the 8th day of July, A. d., 1844. The bill was found by the grand jury for the Arkansas district, at the April term, 1845, of the Circuit Court of the United States for the District of Arkansas. At the April term, 1853, present Mr. Justice Daniel, and the honorable Daniel Ringo, district judge, a motion was made to quash the indictment for want of jurisdiction, on which motion the judges dividing in opinion, the prisoner was admitted to bail in an amount which he has been wholly unable to giveand upon a certificate of division of opinion the case has come into this court. By the act of March 3d, 1817, (3 Stat, at L., 383,) jurisdiction and power of trial, in cases where offences were committed in any town, district, or territory belonging to any nation or tribe of Indians, were given to the courts of the United States “in each territory and district of the United States in which any offender against this act shall be first apprehended or brought for trial.” The Constitution, art. III., sect. 2, No. 3, had provided that “ the trial of all crimes, except in cases of impeachment, shall be by jury; and such trial shall be held in the State where the said crime shall have been committed; but when not committed within any State, the trial shall be at such place or places as the Congress may by law have directed.” The States and people not thinking this a sufficient guaranty for a fair and impartial trial, art. VI. of the amendments to the Constitution provides that “in all criminal prosecutions, the accused shall enjoy the right to a speedy and public trial by an impartial jury of the State and district wherein the crime shall have been committed, which district shall have been previously ascertained by law.” The Intercourse Act of 30th June, 1834, (4 Stat, at L., 733,) by the 24th section, after making divers provisions, defining the limits of the “Indian country,” and imposing penalties for sundry offences, provides “ that, for the sole purpose of carrying this act into effect,” certain Indian country, bounded east by Arkansas and Missouri, west by Mexico, north by the Osage country, and south by Red River, “ shall be, and hereby is annexed to the territory of Arkansas; ” and by section 25 it was provided “ that so much ot the laws of the United States as provides for the punishment of crimes committed within any place within the sole and exclusive jurisdiction of the United *States shall r*,r,k be in force m the Indian country; provided the same L Vol. xv—32 497 470 SUPREME COURT. United States v. Dawson et al. shall not extend to crimes committed by one Indian against the person or property of another Indian.” Power to apprehend offenders in the Indian country, and take them into “the judicial district having jurisdiction,” was given by sec. 26. Under this act the Superior Court of the Arkansas Territory took and exercised jurisdiction as to offences committed in the Indian territory so annexed to Arkansas. But, by act of June 15th, 1836, (5 Stat, at L., 50, 51,) Arkansas was admitted as a State; and sec. 4 provided “ that the said State shall be one judicial district, and be called the Arkansas District, and a District Court shall be held therein, to consist of one judge, who shall reside in the said district, and be called a district judge.” It was provided that lie should hold semiannual sessions at Little Rock, and that he should “ in all things have and exercise the same jurisdiction and powers which were by law given to the judge of the Kentucky district, under an act entitled An act to establish the judicial courts of the United States.” That was the act of September 24th, 1789, (1 Stat, at L., 73.) That act gave to the District Court of Kentucky the jurisdiction of a circuit court, except on appeals and writs of error, in addition to the ordinary district-court jurisdiction. Sec. 10, and sec. 29, provided that in cases punishable with death, the trial should be had in the county where the offence was committed; or, where that could not be done without great inconvenience, twelve petit jurors at least should be summoned from thence. There was, in the act of 1836, no express repeal of so much of the act of 1834 as applied to Arkansas; but the legislature, by expressly limiting and defining the bounds of the Arkansas district, and making it to be composed of the State, cut away the Indian country, and severed its connection with Arkansas. It was therefore held by the District Court of Arkansas that it formed no part of the district, and that the court had no jurisdiction to try and determine cases upon indictments found in the Superior Territorial Court, foi offences committed in the Indian country prior to the 15th June, 1836; and all prisoners so indicted were dis charged* To remedy this, by act of March 1, 1837, (5 Stat, at L., 147,) it was provided, that the District Court of Arkansas should have “the same jurisdiction and power in all respec s whatever that was given to the several district courts, y the intercourse act of March 30, 1802, “or by any su se quent acts of Congress, concerning crimes, offences, or mis 498 DECEMBER TERM, 1853. 470 United States v. Dawson et al. demeanors, which may be committed, against the laws of the United States in any town, *settlement, or territory, belonging to any Indian tribe in amity with the United *- * States, of which any other district court of the United States may have jurisdiction.” Section 15 of this act of 1802, like the act of 1834, gave the jurisdiction of offences committed against its provisions to the territorial, circuit, and other courts of the United States, in each district in which the offenders should be apprehended, or into which, agreeably to the provisions of the act, they should be brought for trial. By sec. 19, persons apprehended in the Indian country were to be taken into one of the three adjoining States or districts for trial. If apprehended in any district, they were, by sec. 17, to be tried there. By the act of March 3, 1837, (5 Stat, at L., 176,) the districts of Alabama, Mississippi, and Arkansas, and the Eastern District of Louisiana, were erected into the ninth circuit; and. provision being made for holding a circuit court at Little Rock, it was further, by the third section, provided, that so much of any act or acts of Congress as vested in sundry district courts, including that of Arkansas, “ the power and. jurisdiction of circuit courts,” should be, and was thereby repealed, and like jurisdiction was given to the Circuit Court of Arkansas as to other circuit courts, and to the District Court of Arkansas as to other district courts. Under these acts it was held by the Circuit Court for the District of Arkansas, in 1842, I think, present Mr. Justice Daniel and the honorable Benjamin Johnson, district judge— that the court had no jurisdiction as to offences committed in the Indian country. By act of August 23, 1842, (5 Stat, at L., 517,) concurrent jurisdiction with the Circuit Court was given to the district courts in prosecutions for offences not capital. And by act of June 17, 1844, (a few days before the day on which the offence in this case is charged in the indictment to have been committed,) 5 Stat, at L., 680, the courts of the t nited States in and for the district of Arkansas were vested with the same power and jurisdiction, to hear, try, determine, and. punish, all crimes committed within the Indian country designated in the 24th section of the intercourse act of June 0,1834, and therein and thereby annexed to the territory of rkansas, as were vested in the courts of the United States or that territory before it became a State; and the act went ?n, 0 "?c^are: “ That for the sole purpose of carrying this act th ° e-/je(o’ ^n^an territory heretofore annexed by e said 24th section of the act aforesaid to the territory of 499 471 SUPREME COURT. United States v. Dawson et al. Arkansas, be, and the same hereby is annexed to the State of Arkansas.” Under this act, the Circuit Court assumed jurisdiction of *4.791 *°ffences committed in the Indian country; and, among J other indictments, this was found. But on the 3d of March, 1851, a new act passed, (9 Stat, at L., 594,) by which it was enacted—Sec. 1. That from and after the passage of this act, the counties of Benton, Washington,. Crawford, Scott, Polk, Franklin, Johnson, Madison, and Carroll, and all that part of the Indian country lying within the present judicial district of Arkansas, shall constitute a new judicial district, to be styled ‘The Western District of Arkansas ’; and the residue of said State shall be and remain a judicial district, to be styled ‘ The Eastern District of Arkansas.’ ” By sec. 2 of this singularly worded act, “ the judge of the District Court of Arkansas,” is directed to hold two terms “of said court” in each year, at Van Buren, in Crawford county, and special and adjourned sessions when needed. By sec. 3 it is provided, that “ the District Court of the United States for the Western District of Arkansas, hereby established,” shall have, besides district-court jurisdiction, “ within the limits of its respective district,” circuit-court jurisdiction, except in cases of appeals and writs of error, and proceed like a circuit court, with right of appeal to the Supreme Court. By sec. 4 a marshal and district-attorney “for said Western District of Arkansas,” were provided for, and the district judge was empowered to appoint a clerk “ of said court hereby established.” Since the passage of this act, and the establishment of the District Court for the Western District of Arkansas, that court has taken jurisdiction of indictments found there for capital offences committed in the Indian country prior to the passage of the act, and has tried, convicted, and sentenced the parties, and had them executed. And at the same time a Circuit Court for the Eastern District of Arkansas has been opened and held, succeeding o the business of the Circuit Court for the District of Arkansas, and the cases pending there when the act passed had been proceeded in as still in the same court. Persons have been tried for offences committed in the Indian country, and upon indictments found in the Circuit Court for the Distric o Arkansas, prior to the passage of the act of 1851; al? °” ’ convicted of manslaughter, is still imprisoned under the s 500 DECEMBER TERM, 1853. 472 United States v. Dawson et al. •tence. But in the case of. Dawson, the question of jurisdiction was formally raised, and comes up here for consideration. At common law, in criminal cases, the venue was local, and matter of substance affecting the jurisdiction and power of the grand jury, who were to find the indictment or make the presentment, as well as of the court who were to try the cause and carry into effect the law. 1 Chitty, Cr. Law, 177, 190. . *(After examining the English authorities upon 1-^470 this point, the counsel proceeded to the American.) • *- One of the grounds of complaint, set forth in the Declaration of Independence against the English king was “ for transporting us beyond seas to be tried for pretended offences.” ' After the Constitution was framed, it did not seem to the ■States' and people that the rights of the citizen were sufficiently guarded, by the provision which gave Congress, where an offence was not committed within any State, the power to direct, as well after as before the offence was committed, at what place the trial should be had. The objections to this were obvious. In every case where an offence was committed beyond the limits of a State, as on the high seas or in a territory, .Congress might virtually decide the case against the accused by directing that he should be tried in a remote or unfriendly district. If the offence were a political one, especially, this was a power dangerous and odious in the extreme. The sixth article of the amendments wisely took away this whole power, and provided that the trial of all criminal prosecutions should be by an impartial jury of the State and district wherein the crime should have been committed, and required that such district should have been previously ascertained by law. It is obvious that the phrase means, previously to the commission of the offence, because, if Congress could create or ascertain the district after its commission, that was continuing their , power to direct the trial to be had at whatever ■place they might think most apt and fit for the particular ■case. • ■! It will occur to every one, that it would be intolerable if a power existed by which, if a man committed an offence in Oregon or Florida, Congress might, in order to strike him down with perfect certainty, attach the particular place where he committed the offence to the District of Maine, so as to carry him to Portland for trial; retaining, of course, ne power to sever again from the district the country so attached, so soon as the political or other offender should be 501 473 SUPREME COURT. United States v. Dawson et al. immolated, and the ends of public or party vengeance attained. And it will also occur, that it would be equally dangerous to concede to Congress a power, when an offence has been committed, to sever the particular place at which it was committed from the district of which it then formed a part, and so, disenabling the court to send beyond its district for jurors, utterly deprive the accused of the right to a jury of the vicinage. It was not intended by the amendment to leave the rights of the accused to be settled by the caprice or hostility of Congress, and by laws enacted on the spur of the moment, to *4.74.1 su^ *particular occasion, reach the particular case, -* and strike the particular individual. The amendment is, therefore, peremptory. No man can be tried, under any circumstances, elsewhere than in the State or district where he committed the offence. Nor can new districts be created, ad libitum, after the offence is committed, to carry the trial to whatever remote point Congress may please, for reasons of prejudice, ill will, or favoritism, in order to acquit or convict, as inward feeling or outward pressure may dictate, giving to the particular party, at the option of Congress, friendly or unfriendly juries and judges, and allowing or taking from him a jury of his vicinage. Such a power, in a free country, would be intolerable. . Congress could acquit or condemn at its pleasure. The district within which the crime was committed must have been previously ascertained by law. Thus, and thus only, will a possibility of special legislation for the particular case be avoided, and this power of attainder in disguise taken away. There have never been but two districts in which it could be said that the offence in this case was committed. The Eastern District of Arkansas is limited to certain specified counties of the State; and it is not the district within which the offence was committed. It was committed in the former District of Arkansas, and in what now forms a part of the Western District of Arkansas. If Dawson is now tried in the Eastern District, certainly he is not tried in the district within which he committed the offence. The notion upon which the claim to jurisdiction appears to rest is, that the Circuit Court for the Eastern District is eithei the same court as the former Circuit Court for Arkansas, or its successor. But so is the District Court for the Western District its successor; for the judge of the District Cour o Arkansas is to hold two terms of said court at Van Buren. This idea does not even sound the question, to see ho 502 DECEMBER TERM, 1853. 474 United States v. Dawson et al. deep it is. To create a circuit or district court, and confer upon it all power to punish crimes within the power of Congress to bestow, would be wholly unavailing, until the territory was defined within whose limits its jurisdiction should operate. No jurisdiction whatever could be exercised until a district was established and defined. The continued existence of the court avails nothing, if its jurisdiction is compressed into narrower territorial limits. Its power shrinks within these limits at once. If the particular place in which the offence was committed is, after the commission of the offence, severed from the district, or left outside of the jurisdiction by the process of compression, and the offence is still tried in the court whose jurisdiction is so *narrowed, r*47c the offence, we may admit, would be tried in the same *-court as if it had been tried there before the excision of territory ; but the fact still remains, that it will not be tried in the district, previously ascertained by law, in which the offence was committed. It is said that it is the district in which the offence was committed. That is not so, because it is a new and different district altogether; the district in which the offence was committed no longer exists, but two new districts exist in lieu of it It might as well be said that, if you sever a man in the middle, he still exists. Suppose, however, that the act had merely taken off from the Arkansas District the Indian country, and left the former district to stand with its old name, still the Arkansas District, as it was before—totus teres atque rotundus—still, although the Arkansas District, it would not be the district in which the offence was committed. If you cut off a man’s hand, the man remains, identical and one, as before; because the man, the individual, the me, is something different and distinct from each of his members. You may even imagine that a particular faculty or part of the soul poidd. be cut away, and yet the residue would continue the identical individual which existed before. But if you cut a tract of land or country in two, you may call one half by the name previously borne by the whole, and for some purposes it may be the same tract or country; but *°r others it is not so. Take from Arkansas a county, or half a dozen counties, and in many senses the residue would be he same Arkansas that existed before. Suits in her favor would not abate, nor her contracts be annulled, because the ^ereignty or municipal corporation which constitutes the ate does not lose its individuality by parting with a portion its territory. But the word district does not mean a corporation, or a 503 475 SUPREME COURT. United States v. Dawson et al. being, but a mere tract and extent of country; and, when it is divided, one half of it is no more the same district that existed before than the other is. A half is not the whole; nor can two halves continue to be each the previous whole. This may be made more plain, and the fallacy of the notion more striking, by reflecting that it operates both ways; and, if the district remains the same when part of its territory is cut away, so it would if a vast extent of new territory was added. Suppose Congress had chosen to annex the Indian country to the District of the Columbia, the argument would be thus: The crime was committed at the Creek agency; that is now made part of the District of Columbia by annexation. The District of Columbia is a corporation, one and identical, the same now as before; consequently, it is the District of *47R1 Columbia in which *the offence was committed. On -* the other hand, it could be said the offence was committed in the District of Arkansas; the place where it was committed no longer forms part of that district; but the fact still remains, that the crime was committed in the District of Arkansas. All the reason of the thing would be in favor of the District of Columbia; because the locus of the offence now forming part of that district, the accused might have a jury of the vicinage ; while, if tried in the maimed District of Arkansas, he could not. The truth is, that the continued existence and identity of the metaphysical ens, called district, territory, state, or of that other called the court, has nothing to do with the question. If it has, the right guaranteed amounts to nothing. The trial is to be in the district where the offence was committed, in order that the party may have, if not the reality, at least the possibility or fiction of a right to a jury of the vicinage. A constitutional provision, without a reason for it, would be a monster. The right is one that continues to the trial; it is, indeed, a right of the trial. The right is, that the identical place, and fixed solid ground, or unstable water, where the offence was committed, shall then be within the district in which the party is to be tried. If there is any district in which this person could now be tried, it is the Western District of Arkansas. The only way to avoid the difficulty would have been, as the cases we have cited show, for ^on-gress to have declared the old district to continue, with i s original territorial extent, for all the purposes of this an similar cases. .... 4. The courts of the United States have no jurisdiction as o crimes, except such as is expressly conferred by statute. n 504 DECEMBER TERM, 1853. 476 United States v. Dawson et al. such cases, they have no implied powers, nor any derived from the common law. Hudson v. Goodwin, 7 Cranch, 32 ; United States v. Worrall, 2 Dall., 384; United States v. Coolidge, 1 Wheat., 415; 1 Kent, 337—8—9; United States v. Bevans, 3 Wheat., 336. And it is equally indispensable that the law should put the place where the crime occurs within the jurisdiction of the court which is to try the case. United States v. McGill, 4 Dall., 426; United States v. Bevans, 3 Wheat., 336 ; Ex parte Bollman and Swartwout, 4 Cranch, 75, 131; United States v. Wiltberger, 5 Wheat., 76. It is a well-settled principle, that where a statute creating an offence is repealed, and no provision is made for carrying forward prosecutions commenced under it, all such prosecutions are absolutely ended with the repeal of the law. Such was decided to be the effect of the act repealing the *bankrupt act of 1803, in United States v. Passmore, 4 Dall., 372. L 477 And the same decision was made in Miller's case, 1 W. Bl., 451. No proceedings are pursuable under a repealed statute, which commenced before the repeal. These decisions, and others to which we shall refer, do not proceed upon any peculiar principle especially applying to penalties imposed by repealed acts, or to the destruction of the criminal character of acts done before the repeal, but upon a broad general principle of universal application. And that principle is simply that stated by Lord Tenterden, in Surtees v. Ellison, 9 Barn. & C., 752, where he said : ** It has been long established that, when an act of parliament is repealed, it must be considered, except as to transactions passed and closed, as if it had never existed. That is the general rule; and we must not destroy that by indulging in conjectures as to the intention of the legislature. We are therefore to look at the statute, 6 Geo. 4, ch. 16, as if it were the first that had ever been passed on the subject of bankruptcy.” His lordship felt the pressure of the consequences of the decision, but the law was too well settled to be disregarded ; and he added: “ It is certainly very unfortunate, that a statute of so much importance should have been framed with so little attention to the consequences of some of its provisions. It is said that the last will of a party is to be favorably construed, because the testator is inops consilii. That we cannot say of the legislature; but we may say that it is magnas inter opes inops.'" See also Dwarr. on Stat., 673, 505 477 SUPREME COURT. United States v. Dawson et al. The counsel then proceeded to examine other analogous principles, which there is not room to insert. Mr. Cushing, (Attorney-General,) insisted that the act of 3d March, 1851, has not taken away the jurisdiction of the Circuit Court to hear and determine the said indictment then found and pending. The said act of 3d March, 1851, did not create a new Circuit Court. It created a new District Court, having the ordinary powers of the District Court of the United States within the territory assigned to it, with an anomalous increase of jurisdiction; but it left the then existing Circuit Court unrepealed, in being and activity. The general powers of the then existing Circuit Court remained unimpaired as to cases begun and pending; its future jurisdiction was limited to cases originating within a smaller territorial district. The territory within which the Circuit Court then existing should exercise its powers over new suits *4781 *an(^ prosecutions thereafter to be instituted, was -* lessened; but the powers which belonged to it as a circuit court, and as common to all the other Circuit Courts of the United States, were not diminished. The general rule is, that where the jurisdiction of a court over the subject-matter has once vested, it is not divested by a subsequent change of circumstance. United States v. Myers, 2 Brock., 516; Morgan n. Morgan, 2 Wheat., 290; Mollan n. Torrance, 9 Wheat., 537; Clarke v. Matthewson, 12 Pet., 165. Thus, where the complainants, being citizens of a State other than Kentucky, sued citizens of the State of Kentucky in the Circuit Court of the United States for the Kentucky District, and pending the suit one of the complainants voluntarily removed to, and became a citizen of, the State of Kentucky, the Supreme Court of the United States decided unanimously “ that the jurisdiction of the court having once vested, was not divested by the change of residence of either of the parties.” Morgan's heirs v. Morgan, 2 Wheat., 293, 297. There are no words in the act of 1851 to give it a retrospective effect, to make it retroact upon pending suits and prosecutions, rightfully commenced in the preexisting and continuing Circuit Court. To give, by implication, a retrospective effect to the newly-created District Court, whereby to divest a preexisting and continuing superior Circuit Court of its cognizance over suits, actions, and prosecutions rightfully begun therein, and undetermined,, would violate the rules of just construction and right reasoning. 506 DECEMBER TERM, 1853. 478 United States v. Dawson et al. Heretofore when a circuit court has been established, within a district wherein only a district court had been established with the powers of a district court and of a circuit court, in order to divest the District Court, of its cognizance of cases pending, which belonged to the proper cognizance and jurisdiction of a circuit court, and transfer them into the newly-created Circuit Court, or when new courts have been established, whether circuit courts or district courts, and it was intended by the Congress of the United States to transfer cases pending in the old or preexisting courts into the newly-created courts, there to be heard, tried, and determined, it has been deemed necessary and proper to employ express and. positive enactments to effect such purposes, and they have been used invariably to that end. Thus in the act of Congress of 13th February, 1801, (2 Stat, at L., 89,) two sections, viz. sec. 20 and 24, were introduced as specially applicable. This act was repealed by 8th March, 1802, (2 Stat, at L., 132,) and the preceding judicial system reinstated, and sections 4 and 5 introduced to provide for the case. *The act of 24th February, 1807, (2 Stat, at L., 420,) established Circuit Courts and abridged the *-jurisdiction of the District Courts in the District of Kentucky, Tennessee, and Ohio, and sec. 3 provided for the transfer of cases. The act of April 20th, 1818, (3 Stat, at L., 462,) divided Pennsylvania into two districts, and sections 4 and 6 provided for the transfer of cases. The act of March 10th, 1824, (4 Stat, at L., 9,) divided Alabama into two districts, and sec. 5 made the necessary provisions. The act of 3d March, 1837, (5 Stat, at L., 176,) erected twelve new Circuit Courts. The third and fourth sections provided for this case. In these six statutes, last quoted, we have examples of two classes, relative to the divisions of districts and the establishment of courts therein: one class containing enactments for transferring cases, begun and pending in one District Court, to another District Court, established in a part of the territory formerly composing one district; the second class containing express provisions to take away the jurisdiction of district courts, acting as circuit courts, over cases, civil and criminal, begun and pending in such inferior district courts, and to transfer the cognizance thereof to the superior circuit courts newly established in the same districts. If positive enactments were necessary and proper to divest 507 479 SUPREME COURT. United States v. Dawson et al. the jurisdiction of inferior district courts over causes, actions, and pleas rightfully begun and pending therein, and to transfer the cognizance thereof to superior circuit courts newly established in the same districts, d fortiori, express and positive enactment wrould be necessary to divest the jurisdiction .of a superior court over cases rightfully begun and pending therein, and to transfer the cognizance thereof, from such existing continuing superior court, to an inferior district court newly established within the same territory which composed the district when the proceeding was instituted in the Circuit Court. We have examples of legislation by Congress by which new judicial districts have been formed out of the old, with total silence as to the cognizance of actions or prosecutions pending in the old, viz. The act of April 9th, 1814, (3 Stat, at L., 120,) and the act of February 21st, 1823 (3 Stat, at L., 726). In these acts, cases were left to be heard, tried, and determined under the general rule that when once the jurisdiction of a court has rightfully attached by action, writ, or prosecution, instituted, it is not divested by change of circumstances, by mere implication, or otherwise than by express enactment. *The two acts of May 26th, 1824, (4 Stat, at L., 50,) and May 26th, 1824, (4 Stat, at L., 48,) took away certain counties and attached them to another district, and no special provision was thought necessary respecting cases then pending. Furthermore, we have examples of the legislation of the Congress of the United States in dividing one judicial district, in the States of North Carolina, into three judicial districts; thereafter, in consolidating the three into one, and afterwards in dividing that one into three judicial districts, viz. The act of 9th June, 1794, (1 Stat, at L., 396) ; the act of 3d March, 1797, (1 Stat, at L., 518); the act of 29th April, 1802, (2 Stat, at L., 156). In these acts there are provisions that there shall be no failure of justice by abatement or discontinuance of the process or lapse of jurisdiction. The act of 3d April, 1794, (1 Stat, at L., 352,) transfers jurisdiction from one court to another and provides for the trial of cases. The various acts of Congress for dividing judicial districts, and for taking off territories or counties from one judicial district and adding them to another, and for consolidation ot judicial districts into one, and again for dividing that one into several, and for creating new courts by abolishing some preexisting, and substituting others in their stead, when com-508 ' DECEMBER TERM, 1853. 480 United States v. Dawson et al. pared each with the others, evince, beyond doubt, that the legislature, in framing those statutes, understood and acted upon the following principles and rules of law, viz. 1st. That to abolish the jurisdiction of one existing and continuing court over any of the subjects originally committed to its cognizance, and to transfer such jurisdiction to another court, it was necessary and proper to use words aptly and clearly expressive of such intent. 2d. That when the jurisdiction of a court had once rightfully vested over a cause begun and pending, it was not divested by change of circumstance, but continued with the court, until plainly taken away by the legislature, or until the court itself was abolished. By these rules the acts of the legislature are to be construed. Otherwise the most unexpected, inconvenient, nay, calamitous consequences would result, with miserable confusion of all justice. / If taking off territory from one judicial district and adding to another ipso facto abrogates the jurisdiction of the courts (district and circuit) holden for such diminished district over cases then pending and originated in such territory so taken from one judicial district and added to another, then the people of Virginia, of New York, and of Pennsylvania, would have been thrown into a strange predicament. *The statutes before cited for dividing the judicial districts in Virginia, New York, and Pennsylvania, A respectively, and afterwards for diminishing the one and enlarging the other in each State, made no special provision for, but were silent as to, cases then pending. The courts wherein they were pending, supposing their jurisdiction to have continued, went on to hear and determine them. But if the doctrine now contended for by the counsel for Dawson is to prevail, the said courts had no jurisdiction ; their decisions are absolutely void, confer no right, bar no right, and all concerned in executing them were trespassers; for such are the consequences of decisions and sentences of courts not haying jurisdiction. Elliot v. Piersol, 1 Pet., 340; Wise v. Withers, 3 Cranch, 337; Rose v. Himely, 4 Cranch, 269. A question arose upon the before-mentioned act of 1824, May 26, taking away certain counties from the eastern district of Pennsylvania and adding them to the western district in an action of ejectment pending in the Circuit Court for the district of Pennsylvania, for land lying in Union county, on§ of the counties so taken from the eastern and added to the western district. The question was made at the first sitting of the Circuit Court for the district of Pennsylvania after the 509 " - 481 SUPREME COURT. United States v. Dawson et al. passage of the act of 1824, whether the said ejectment so instituted and pending at the passage of that act should be retained in the Circuit Court, or be sent to the western district court, acting as a Circuit Court. Upon argument, Mr. Associate Justice Washington and Judge Peters decided that the case should be retained ; that the said act had not transferred it to the western district. Lessee of Rhodes and Snyder v. Selin, 4 Wash. C. C., 725. To combat this decision, the counsel for the accused cites the cases of Picquet v. Swan, 5 Mason, 35, and Toland v. Sprague, 12 Pet., 300. The case of Piquet v. Swan is cited to prove “ that title to real estate, by the general principles of law, can be litigated only in the State where the land lies, and where the process may go to find and reach the land and enforce the title of the party.” This extract, quoted by the counsel for the accused, is connected with the next preceding and the next succeeding sentence, to actions, in their nature, “purely local”; and immediately afterwards Judge Story explains himself further, by saying “ collateral suits for other purposes, binding the conscience, or controlling the acts of the party personally, maybe brought and decided elsewhere.” 5 Mason, 42. The case did not involve the question of a rightful jurisdiction vested, and sought to be divested by matter subsequent. It was a case brought in the federal court, and district of Massachusetts, by an alien, against a citizen of the United States, then out of the United States, *4821 late °f the city of Boston, by color of the *State -I law and a process called the trustee process, or foreign attachment, and returned by the marshal that he had attached the real estate of the defendant in the district of Massachusetts, summoned the supposed trustees and agent of the defendant, Swan, but that, “ the said Swan has not been an inhabitant or resident of this district (Massachusetts) for three years last past.” Such a suit, Judge Story decided, could not be so commenced in the federal court contrary to the federal law, although allowed by the law of the State of Massachusetts. In Penn v. Lord Baltimore, in the High Court of Chancery of England, respecting the title to land in Maryland, Lord Hardwicke decided that it was no objection to the decree for settling the right between the parties, that the land was in Maryland, and not itself to be reached by the process of that court. Penn v Lord Baltimore, 1 Ves. Sr., 454, 455. By the 6th section of the act of 3d March, 1797, (1 Stat, at L., by L. & B., p. 515, ch. 20,) writs of execution, upon any judgment obtained for the use of the United States in one 510 DECEMBER TERM, 1853. 482 United States v. Dawson et al. State, may run and be executed in any other State, or in any of the territories of the United States. Subpoenas for witnesses may run from one district to any other, by act of March 2,1793, (1 Stat, at L., by L. & B., p. 835, ch. 22, § 6). And executions “ upon judgments or decrees obtained in any of the district or circuit courts of the United States, in any one State, which shall have been, or may hereafter be, divided into two judicial districts, may run and be executed in any part of such State ” ; act of 20th May, 1826, (4 Stat, at L., by L. & B., p. 184, ch. 123). So that the question of jurisdiction was not involved in the case of Picquet v. Swan; but only the sufficiency of the process by foreign attachment against the absentee, not served personally with the process, to entitle the plaintiff to judgment by default. The case of Toland v. Sprague, 12 Pet., 300, cited by the counsel of the accused, was not a case of jurisdiction once rightfully vested and sought to be divested by matter subsequent ; but a question whether, according to the acts of Congress, a citizen of Pennsylvania could commence a suit in the Circuit Court of the United States for the Eastern District of Pennsylvania, by process of attachment of property within the State, (as authorized by a law of the State,) belonging to the absentee, who was a citizen of the State of Massachusetts. The defendant appeared and pleaded to issue, having moved to quash the process. The court below rendered judgment in chief for the plaintiff for his demand. This court decided that the process of attachment had issued improperly; but as the defendant had appeared and pleaded to issue, this court said: *“Now if the case were one of a want of jurisdiction in the court, it would not, according to the well-estab- L lished principles, be competent for the parties by any act of theirs to give it. But that is not the case. The court had jurisdiction over the parties, and the matter in dispute; the objection was, that the party defendant not being an inhabitant of Pennsylvania, nor found therein, personal process could reach him; and that the process of attachment could only be issued properly against a party under circumstances which subjected him to process in personam. Now this was a personal privilege or exemption which it was competent for the party to waive, . . . and that appearing and pleading will produce that waiver.” 12 Pet., 330, 331. And thereupon the judgment was affirmed. Ihese cases do not shake the opinion in the case of Rhodes v. Selin, 4 Wash. C. C.,. 725. The principle on which it stands, that a jurisdiction once rightfully vested, is not divested by after circumstances, but only by express transfer to 511 483 SUPREME COURT. United States v. Dawson et al. some other tribunal, or by express repeal is sustained by the case of Morgan's heirs v Morgan, 2 Wheat., 297; Tyrell v. Roundtee, 7 Pet., 467, 468. The conclusion in the case of Rhodes v. Selin, and which is here maintained, is not a novelty or anomaly, as seems to be assumed in behalf of the defendant; it is but a single instance of a general doctrine of statute construction, which is this: If part of a defined territory, having functions or duties political, judicial, municipal, or other, be separated from it, either by annexion to another, or by being converted into a new political, judicial, municipal, or other entity, then the remaining part of the territory, or the former public body, retains all its property, powers, rights, and privileges, and remains subject to all its obligations and duties, unless some express provisions to the contrary be made by the act authorizing the separation. The counsel for the accused relies upon the Constitution of the United States as amended, for an argument against the jurisdiction of the Circuit Court of Arkansas. The Constitution, in art. 3, sec. 2, provides: “ The trial of crimes, except in cases of impeachment, shall be by jury; and such trial shall be held in the State, where the said crimes shall have been committed; but when not committed within any State, the trial shall be at such place or places as the Congress may by law have directed.” This provision authorized the act of Congress, which prescribed that the trial of the crime charged in the indictment as committed in the Indian country, out of the limits of any State, should be had in the Circuit Court of Arkansas. The 6th article of the amendments to the Constitution, that *4.84.1 *“ ^ie accuse(l shall enjoy the right to a speedy and J public trial, by an impartial jury of the State and district wherein the crime shall have been committed, which district shall have been previously ascertained by law,” does not conflict with the law for defining the place and district for the trial of Dawson. He committed the crime in no State. He was indicted within a district defined and ascertained by law before the crime itself was committed; therefore within the letter and within the spirit and meaning of the Constitution, howsoever the words—“ which district shall have been previously ascertained by law ”—may be construed to mean before the crime was committed, or before trial. The Constitution does not intend that crimes committed by citizens o the United States on board of our vessels on the high seas, or out of any State, or in the Indian nations and tribes within the United States, should go unpunished. 512 DECEMBER TERM, 1853. 484 United States v. Dawson et al. This amendment of the Constitution applies only where the offence has been committed in a State. Then the trial must be in that State, and the district “ previously ascertained by law ” must be within that State. But where the crime is not committed in any State of this Union, the trial may be wherever within the jurisdiction of the United States the Congress shall by law direct. Finally, it is insisted for the United States that the jurisdiction vested rightfully in the Circuit Court of Arkansas, by the indictment therein found; and as that court is in being, unrepealed, and continuing in full power and activity as a Circuit Court of the United States, that jurisdiction and cognizance to try the crime charged in the indictment continues ; that it is neither abrogated nor transferred to any other tribunal by the said subsequent act of 1851. If the legislature had intended to transfer the cognizance of pending cases, civil or criminal, they would have used the express words and enactments to that end, which they had employed in so many previous like cases. Mr. Justice NELSON delivered the opinion of the court. The defendant was indicted, in the Circuit Court of the United States for the District of Arkansas, for the alleged murder of one Seaborn Hill, in the. Indian country west of the State of Arkansas. The defendant is a white man, and so was Hill, the deceased. At a Circuit Court held at the city of Little Rock, on the 28th of April, 1853, the indictment came on for trial before the judges of that court; whereupon a motion was made, on behalf of the defendant, to quash the indictment, for want of jurisdiction of the court to try the same. And, upon the argument, the judges being divided in opinion, *the following question was certified to this rMQ(-court for its decision. L 1. Did the act of Congress entitled “ An act to divide the District of Arkansas into two judicial districts,” approved the 3d of March, 1851, by which the Western District of Arkansas was created, take away the power and jurisdiction of the Circuit Court of the United States for the Eastern District to try the indictment pending against the prisoner, James L. Dawson, a white man, found in the Circuit Court of the united States for the District of Arkansas, by a grand jury mipanelled on the 16th April, 1845, for feloniously killing eaborn Hill, a white man, on the 8th of July, 1844, in the country belonging to the Creek nation of Indians west of Vol. xv.—33 513 485 SUPREME COURT. United States v. Dawson et al. Arkansas, and which formed a part of the Indian country annexed to the judicial district of Arkansas, by the act of Congress approved on the 17th of June, 1844, “An act supplementary to the act entitled ‘ An act to regulate trade and intercourse with Indian tribes, and to preserve peace on the frontiers,’ ” passed 30th of June, 1834. To state the question presented for our decision in a more simple form, it is this: At the time the State of Arkansas composed but one judicial district, in which the federal courts were held, the Indian country lying west of the State was annexed to it for the trial of crimes committed therein by persons other than Indians. In this condition of the jurisdiction of these courts, the crime in question was committed in the Indian country, and the indictment found in the Circuit Court, at the April term, 1845, while sitting at the city of Little Rock, the place of holding the cpurt. Subsequent to this, the State was divided into two judicial districts, the one called the Eastern, the other the Western District of Arkansas. The Indian country was attached to and has since belonged to the western district. The question presented for our decision is, whether or not the Circuit Court for the Eastern District is competent to try this indictment, since the change in the arrangements of the districts. By the 24th section of act of Congress, June 30th, 1834, (4 Stat, at L., 733,) it was provided, that all that part of the Indian country west of the Mississippi river, bounded north by the northern boundary of lands assigned to the Osage tribe of Indians, west by the Mexican possessions, south by Red River, and east by the west line of the Territory of Arkansas, and State of Missouri, should be annexed to the territorial government of Arkansas, for the sole purpose of carrying the several provisions of the act into effect. And the 25th section enacted, that so much of the laws of the United States as provides for the punishment of crimes com-knitted within any place within *the sole and exclusive J jurisdiction of the United States, shall be in force in the Indian country, provided the same shall not extend to crimes committed by one Indian against the person or property of another Indian. The act of Congress, June 7th, 1844, (5 Stat, at L., bob,) which was enacted after the Territory of Arkansas became a State, provided, that the courts of the United States for e District of the State of Arkansas, should be vested with the same power and jurisdiction to punish crimes committed wi in the Indian country designated in the 24th section ot e 514 DECEMBER TERM, 1853. 486 United States v. Dawson et al. act of 1834, and therein annexed to the Territory of Arkan-sas, as were vested in the courts of the United States for said territory before the same became a State ; and that, for the sole purpose 6f carrying the act into effect, all that Indian country theretofore annexed by said 24th section to the said territory, should be annexed to the State of Arkansas. As we have already stated, the crime in question was committed in this Indian country after it was annexed, for the purposes stated, to the State of Arkansas ; and the indictment was found in the Circuit Court of the United States for the District of Arkansas, which, we have seen, was coextensive with the State. And, if no change had taken place in the arrangement of the district, before the trial, there could, of course, have been no question as to the jurisdiction of the court. But by the act of Congress, 3d March, 1851, it was provided, that the counties of Benton and eight others enumerated, and all that part of the Indian country annexed to the State of Arkansas for the purposes stated, should constitute a new judicial district, to be styled “The Western District of Arkansas,” and the residue of said State should be and remain a judicial district, to be styled “ The Eastern District of Arkansas.” The 2d section provides, that the judge of the District Court should hold two terms of his court in this western district in each year at Van Buren, the county seat in Crawford county. And the third confers upon him, in addition to the ordinary powers of a district court, jurisdiction within the district, of all causes, civil or criminal, except appeals and writs of error, which are cognizable before a circuit court of the United States. The fourth provides for the appointment of a districtattorney and marshal for the district, and also for a clerk of the court. It will be seen, on a careful perusal of this act, that it simply erects a new judicial district out of nine of the western counties in the State, together with the Indian country, and confers on the district judge, besides the' jurisdiction already possessed, circuit court powers within the district, subject to the limitation as to appeals and writs of error; leaving the powers and jurisdiction of the circuit and district [-*407 courts as they existed in the remaining portions of the *-btate, untouched. These remain and continue within the district after the change, the same as before ; the only effect being to restrict the territory over which the jurisdiction exends. Hence no provision is made as to the time or place of holding the circuit or district courts in the district, or in re 515 487 SUPREME COURT. United States v. Dawson et al. spect to the officers of the courts, such as district-attorney, marshal, or clerk, or for organizing the courts for the despatch of their business. These are all provided for under the old organization. 5 Stat, at L., 50, 51, 176, 177, 178. We do not, therefore, perceive any objection to the jurisdiction of these courts over cases pending at the time the change took place, civil and criminal, inasmuch as the erection of the new district was not intended to affect it in respect to such cases, nor has it, in our judgment, necessarily operated to deprive them of it. It has been supposed that a provision in the sixth amendment of the Constitution of the United States has a bearing upon this question, which provides, that “ In all criminal prosecutions, the accused shall enjoy the right to a speedy and public trial, by an impartial jury of the State and district wherein the crime shall have been committed, which district shall have been previously ascertained by law.” The argument is, that, since the erection of the new district out of the nine western counties in the State, together with the Indian country, it is not competent for the Circuit Court, in view of this amendment, to try the prisoners within the remaining portion of the old district, inasmuch as that amendment requires the district within which the offence is committed, and the trial is to be had, must be ascertained and fixed previous to the commission of the offence. But it will be seen from the words of this amendment, that it applies only to the case of offences committed within the limits of a State; and, whatever might be our conclusion if this offence had been committed within the State of Arkansas, it is sufficient here to say, so far as it respects the objection, that the offence was committed out of its limit, and within the Indian country. The language of the amendment is too particular and specific to leave any doubt about it: “ The accused shall enjoy the right to a speedy and public trial by an impartial jury of the State and district wherein the crime shall be committed, which district shall have been previously ascertained by law.” The only regulation in the Constitution, as it respects crimes committed out of the limits of a State, is to be found in the 3d art., sec. 2, of the Constitution, as follows: “ The trial of crimes, except in cases of impeachment, shall be by jury, and *400-1 such trial *shall be held in the State where the said -* crimes shall have been committed; but when not committed within any State, the trial shall be at such place or places as the Congress may, by law, have directed.” 516 DECEMBER TERM, 1853. 488 United States v. Dawson et al. Accordingly, in the first crimes act, passed April 30, 1790, § 8, (1 Stat, at L., p. 114,) it was provided, that “ the trial of crimes committed on the high seas, or in any place out of the jurisdiction of any particular State, shall be in the district where the offender is apprehended, or into which he may first be brought.” A crime, therefore, committed against the laws of the United States, out of the limits of a State, is not local, but may be tried at such place as Congress shall designate by law.1 This furnishes an answer to the argument against the jurisdiction of the court, as it respects venue, trial in the county, and jury from the vicinage, as well as in respect to the necessity of particular or fixed districts before the offence. These considerations have no application or bearing upon the question. In this case, by the annexation of the Indian country to the State of Arkansas, in pursuance of the act of 1844, for the punishment of crimes committed in that country, the place of indictment and trial was in the Circuit Court of the United States for that State, in which the indictment has been found, and was pending in 1851, when the Western District was set off; and as that change did not affect the jurisdiction of the court, as it respected pending cases, but remained the same after the alteration of the district as before, it follows that the trial of the indictment in this court will be at the place and in the court as prescribed by law, which is all that is required in the case of an offence committed out of the limits of a State. We shall direct, therefore, an answer in the negative, to be certified to the court below, to the first question sent up for our decision, as we are of opinion the court possesses jurisdiction to hear and give judgment on the indictment. The second question sent up in the division of opinion is as follows: Can the District Court of the United States, for the Western District of Arkansas, take jurisdiction in the case aforesaid, upon the indictment aforesaid, so found, in the year 1845, in said Circuit Court, for the District of Arkansas ? As our conclusion upon the first question supersedes the necessity of passing upon the second, it will be unnecessary to examine it, and shall, therefore, confine our answer and certificate to the court below to the first. 1 Cited. United States v. Jackalow, 1 Black, 486. See also Trapier v, Waldo, 16 S. C., 285. 517 489 SUPREME COURT. United States v. Dawson et al. *489] *Mr. Justice McLEAN dissented. Mr. Justice McLEAN, The facts and law of this case, as I understand them, have led me to a different conclusion from that of a majority of the court. The twenty-fourth section of the act of the 30th June, 1834, after making various provisions, defining the limits of the Indian country, and imposing penalties for several offences by white persons, provides, “that for the sole purpose of carrying this act into effect, the Indian country, bounded east by Arkansas and Missouri, west by Mexico, north by the Osage country, and south by Red River, shall be, and hereby is, annexed to the Territory of Arkansas.” On the 8th of July, 1844, a murder was committed at the Creek agency, in the Creek country, west of Arkansas, for which the grand jury found a bill of indictment in the Circuit Court of Arkansas, at April term, 1845. By an act of March 3, 1851, it is provided, “ that from and after the passage of this act, the counties of Benton, Washington, Crawford, Scott, Polk, Franklin, Johnson, Madison, and Carroll, and all that part of the Indian country lying within the present judicial district of Arkansas, shall constitute a new judicial district, to be styled, the Western District of Arkansas; and the residue of said State shall be and remain a judicial district, to be styled, the Eastern District of Arkansas.” After the division of the district, Dawson, the defendant, was arrested for the alleged murder: and the question, whether the Circuit Court of the United States, sitting within the Eastern District, has jurisdiction to try the case, has been referred to this court. When the offence was committed, and the indictment was found, the District of Arkansas included the State and the Indian country described; but when the defendant was arrested, and the case was called for trial, the district had been divided; and the question is raised in the Eastern District, the murder having been committed in the Western. In the act dividing the district, Congress had power to provide that all offences, committed in the district before the division, should be tried in the Eastern District. But no such provision being made, the question is, whether the jurisdiction may be exercised in that district without it. Since the division of the district, capital punishments been inflicted in the Western District for offences committed before the division. This deprived the accused of no ng s 518 DECEMBER TERM, 1853. 489 United States v. Dawson et al. which they could claim under the constitution of the United States, or the laws of the Union. The sixth article of the *amendment to the Constitution declares that, “ in all criminal prosecutions, the accused shall enjoy the right *-to a speedy and public trial, by an impartial jury of the State and district wherein the crime shall have been committed, which district shall have been previously ascertained by law.” As the State and district are connected by the copulative conjunction, in this provision, the case before us is not technically within it. The crime is alleged to have been committed within the Indian country, which the district includes, but it is not within the State. But the case appears to me to be within the policy of the provision. Nine counties of the State of Arkansas are within the district, and from which the jury to try the defendant might be summoned. This brings the case substantially within the above provision. Had the place of the murder been within one of the above counties, the constitutional provisions must have governed the case. All the rights guaranteed by the Constitution would have been secured to the criminal by a trial in the Western District ; but those rights are not realized by him on a trial in the Eastern District. And that is made the place of trial because the alleged murder was not committed within the State. In the 2d section of the 3d article of the Constitution, it is declared that “ the trials of all crimes, except in cases of impeachment, shall be by jury; and such trial shall be held in the State where the said crimes shall have been committed; but, when not committed within any State, the trial shall be at such place or places as the Congress may by law have directed.” The latter clause of this provision covers the case now before us. The crime charged was not committed within any State; but it was committed within a district, within which, such offences are to be tried, as “directed by Congress.” And there seems to me to be no authority to try such an offender in any other district, or at any other place. The act of 1834 provides that an offender, under the act, when arrested, should be sent for trial to the district where-jurisdiction may be exercised. The punishments inflicted in the Western District of Arkansas, for crimes committed before the division of the dis-nct, were in accordance with the above provision of the constitution and the principles of the common law, both of w ich are opposed to a trial of the same offences in the Eastern District. The tribunal is the same in both districts, 519 490 SUPREME COURT. United States v. Dawson et al. except the circuit judge may not be bound to attend the Western District; but the Western District includes the place of the crime, which, by the laws of England and of this country, is the criterion of jurisdiction in criminal cases. This is never departed from, where the limits of the jurisdiction are prescribed. *4011 *On ground can jurisdiction be exercised in the -* Eastern District? Not, I presume, on the ground that the crime was committed before the district was divided. If this be assumed and sustained, the capital punishments which have been inflicted in the Western District, for similar offences, have been without authority. The offenders have been tried, and they have had, substantially, the benefits secured by the Constitution. They have a jury from the district, and as near the vicinage as practicable. These privileges they would not have realized had they been tried in the Eastern District. If tried in the Eastern District, the jury must have been summoned from that district, and not from the district in which the offence was committed. The con siderations in favor of the Western District, as the legal place of trial, greatly outweigh, it seems to me, any that can arise in favor of the Eastern District. There is, however, a fact which may be supposed of great weight in deciding the question; and that is, the indictment was found before the division of the district. I will examine this. It is admitted the jurisdiction was in the Circuit Court for the entire district, when the indictment was found. This gave jurisdiction; but every step taken in the cause, subsequent to the finding of the bill, is as much the exercise of jurisdiction as the finding of the bill. The establishment of the Western District, in effect, repealed the jurisdiction of the Eastern District, as to causes of action arising in the Western District, as fully as if the law had declared, “ no jurisdiction shall hereafter be taken in any case, civil or criminal, which is of a local character, and arises in the Western District. Offences committed in that district are made local by the acts of Congress. This is not a case where, if jurisdiction once attaches, the court may finally determine the matter. There seems to me to be no reason for such a rule in a criminal case, especially when it is opposed to the policy of the Constitution and to the principles of com mon law. A case lately decided in this court may have some bearing on this question. Under the fugitive slave law of 1793, certain penalties were inflicted for aiding a fugitive from mboi to escape. A number of actions were brought in several o 520 DECEMBER TERM, 1853. 491 United States v. Dawson et al. the States—in Ohio, Indiana, and Michigan—for the recovery of this penalty; but is was set up in defence, that this penalty was repealed by repugnant provisions in the law of 1850, on the same subject, and this court so held. The actions which had been pending for years were stricken from the docket. But it may be said the repeal, in the case stated, operated on the right of action. This is admitted. And so, it may be said, the Western District was repugnant to the Eastern, so far as causes of *local actions arise in the Western District; and is not this repugnancy as fatal L to the trial, as the repeal of the penalty in the act of 1793? All this difficulty arises from an omission of Congress to make, in the law dividing the district, the necessary provision ; and it appears to me that we have no power, by construction or otherwise, to supply the omission. This could not be done in an action of ejectment. A writ of possession, in such a case, could not be issued to the Western District on a judgment entered in the Eastern. And if such a jurisdiction could not be sustained in a civil action, much less could it be sustained in a criminal case. If a person guilty of a crime in the Indian country, before the division, could not be indicted and tried in the Eastern District, it follows, that the fact of the crime having been committed in the Indian country, can afford no ground of jurisdiction in the present case. It must rest alone, then, it would seem, for jurisdiction, on the ground that, the indictment having been found in the Eastern District, the same jurisdiction may try the defendants, and, if found guilty, sentence them to be executed. This view must overcome the locality of the crime, and the right which the defendants may claim, to have a jury as near the vicinage as practicable, at least a jury from the district where the crime was committed. These appear to me to be objections entitled to great consideration. A jurisdiction in so important a case should not be maintained under reasonable doubts of its legality. Ine cases referred to in the argument to retain the jurisdiction, do not, as it appears to me, overcome the objections. Numerous instances are cited where the territory of a judicial district has been changed, provision being made in the act, that the jurisdiction should by continued where suits had been commenced. This shows the necessity of such a provision, and is an argument against the exercise of the jurisdiction, where no provision has been made. And in those cases, like the present, where a district has been changed, without any provision, as to jurisdiction, there is no exercise of it 521 492 SUPREME COURT. United States v. Dawson et al. shown, in a criminal case, especially where the punishment is death. Where jurisdiction attaches from the citizenship of the parties, a change of residence does not affect the jurisdiction. The case of Tyrell v. Roundtree, 7 Pet., 464, seems to have no bearing upon this question. That action was commenced by an attachment, which was laid upon the land before the division of the county; and this court said, the land remained in the custody of the officer subject to the judgment of the court. An interest was vested in him for the purposes of that judgment. *The judgment was not a general -• lien on it, but was a specific appropriation of the property itself. And they say the division of the county could not divest this vested interest, or deprive the officer of the power to finish a process, w’hich was rightly begun. There maybe cases where counties have been divided after jurisdiction was taken in a local action, and the suit has been carried into judgment, but such cases afford no authority in the present case. The case relied upon as in point in 4 Wash. C. C., 725, the court said, “at the first or second session of this court, which succeeded the passage of the act of 1824, which added this and other counties to the western judicial district, we were called upon to decide, whether the present action, together with some others, then on our docket for trial, together with the papers belonging to them, should be sent to the Western District or retained here. After hearing counsel on the question, the opinion of the court was, that those cases were not embraced either by the word or by the obvious intention and policy of the act.” This does not appear to be a well-considered case. The counties were annexed to another jurisdiction, and yet the court speak of “ the obvious intention and policy of the act, and on that ground entertain jurisdiction over cases pending in the former district. This was right in regard to transitory actions, but not where the actions were of a local character. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States, for the Eastern District of Arkansas, and on the points or questions, on which the judges of the said Circuit Court were opposed in opinion, and which were certified to this court for its opinion, agreeably to the act of Congress, in such case made an provided, and was argued by counsel. On consideration 522 DECEMBER TERM, 1853. 493 Kearney et al. v. Taylor et al. whereof, it is the opinion of this court, that the act of Congress entitled “ An act to divide the District of Arkansas into two judicial districts,” approved the third day of March, in the year of our Lord one thousand eight hundred and fifty-one, whereby the Western District of Arkansas was created and defined, did not take away the power and jurisdiction of the Circuit Court of the United States for the Eastern District of Arkansas, so that it can proceed to hear, try, and determine a prosecution for murder, pending against the prisoner, James L. Dawson, a white man and not an Indian, upon an indictment, found, presented, and *returned [-*404 into the Circuit Court of the United States, for the L district of Arkansas, by the grand jury impanelled for that district, upon the 16th day of April, in the year of our Lord one thousand eight hundred and forty-five, against said James L. Dawson, a white man, for the felonious killing of Seaborn Hill, another white man and not an Indian, on the eighth day of July, A. D., 1844, in that county, belonging to the Creek nation of Indians, west of Arkansas, and which formed a part of the Indian country annexed to the judicial district of Arkansas by the act of Congress, approved the seventeenth day of June, A. d., 1844, entitled “ An act supplementary to the act entitled ‘ An act to regulate trade and intercourse with the .Indian tribes, and to preserve peace on the frontiers, passed thirtieth June, one thousand eight hundred and thirty-four,’ ” in which cause, so pending, no trial has yet been had. And that this answer to the first question supersedes the necessity of any answer to the second question. Whereupon it is now here ordered and adjudged by this court, that it be so certified to the said Circuit Court. Thomas Kearney, Thomas Jordan, and Catherine his wife, Anastasia K. Thomas, Anne E. K. Cheeseborough, and Horatio N. Kearney, Appellants, v. John I. Taylor and others. Where land was sold in New Jersey by order of the Orphans Court of one of the counties, the conveyance was made not to the actual bidders, but to a person whom they appointed to represent them. terwards, the Supreme Court of the State having decided that such a prac-*ce was irregular, the legislature passed a law enacting that, upon proof of e , sence of fraud, such deeds might be given in evidence. This cured the defect in the title. 523 494 SUPREME COURT. Kearney et al. v. Taylor el al. The purchasers were a company organized for the purpose of improving the land, and in their purchase there was neither actual or constructive fraud. The law examined with respect to the bidding of associations at sales by public auction. t In this instance the price obtained was greater than any previous estimate of the value of the property. There was no constructive fraud because, according to the evidence, the guardian of the minor children and the commissioners who decided that the property ought to be sold, did not become interested in the company until some time after the sale. The circumstance that these persons became interested in the company before the first half of the purchase-money was due, is not a sufficient reason for setting aside the sale. According to the preponderance of the evidence, “the grave charge that the auctioneer who made the sale was one of the company, is not sustained.1 This was an appeal from the Circuit Court of the United *4951 *^^es f°r fhe District of New Jersey, sitting as a -I court of equity. The bill was filed by Thomas and Horatio Kearney, and their sisters, Catherine, Anastasia, and Anne, who were the children of Edmund Kearney, deceased. The complainants were citizens of several States, viz.: Thomas and Catherine of Mississippi, Anne of Connecticut, Anastasia of Michigan, and Horatio of Ohio. The defendants were all citizens of New Jersey, and were as follows, viz.: John I. Taylor, Edward Taylor, Isaac K. Lippincott, Ezra Osborne, John Hopping, Daniel Holmes, and also the heirs of the following persons, viz. : of Leonard Walling, of John W. Holmes, of James Hopping, and of Joseph Taylor. The bill was dismissed by the Circuit Court, and the complainants appealed. The case was this: On the 30th of December, 1822, Edward Kearney, then of the county of Monmouth, in the State of New Jersey, died intestate, seised in fee uf a tract of land situated in that county, called Key Grove, containing 781 acres. The land bordered upon Rariton Bay, at the foot of Staten Island, for a mile or more, with water of sufficient depth for the near approach of vessels. At the time of his death Kearney left the following children : James Kearney, born in December, 1801; Horatio N. Kearney, born in October, 1803; John Kearney, born in November, 1805; Mary Kearney, born in November, 1808; Thomas Kearney, born in September, 1810; Anastatia Kearney, born in October, 1813; Catherine Kearney, born in June, 1816; Anne E. Kearney, born in June, 1818. 1 See Forster v. Forster, 129 Mass., 565; Smith n. Ullman, 58 N. H., 190. 524 DECEMBER TERM, 1853. 495 Kearney et al. v. Taylor et al. In May, 1828, James Kearney sold all his interest in the land to Daniel Holmes and John W. Holmes. A law of New Jersey, passed in 1820, (Revised Statutes of New Jersey of 1821, page 776 et seq.~) directs that upon application made by the heirs of a person dying seised of lands, or by any person duly authorized in their behalf, or claiming under them, a division may be ordered; and the 19th section authorizes a sale when the land is so circumstanced that, in the opinion of the commissioners, partition cannot be made without great prejudice to the owners, and upon satisfactory proof of that fact being made to the court. On the 15th day of April, 1829, Daniel Holmes, on behalf of himself and John W. Holmes, filed a petition for partition in the Orphans Court for the county of Monmouth, at the April term, 1829, against the heirs of Edmund Kearney, setting forth their purchase of the undivided one seventh part of the estate from James P. Kearney; that by reason of the minority of some of *the tenants in common, no divi-sion could take place by agreement, and praying the L court to order a division. At the time of these proceedings, Joseph Taylor was the administrator upon the estate of Edmund Kearney and the guardian of all his infant children who resided in the State of New Jersey. (The court granted the petition, and appointed James Hopping, Edward Taylor, and Leonard Walling, commissioners. The commissioners took the necessary oath to perform their duty faithfully, on the 2d of June, 1829. On the 10th of July, 1829, the commissioners reported to the court that they had caused a survey and map of the premises to be made, and that in their judgment the said premises were so circumstanced that a division thereof could not be made without great prejudice to the interest of the owners. At July term, 1829, the court passed an order that the commissioners should make the sale, at public auction, to the highest bidder, giving at least sixty days’ notice of the time and place of such sale, by advertisements put up in five of the most public places in the county, and also in one public newspaper circulating in the same county. In January, 1830, the commissioners reported that they had sold the land, as follows: Lot No. one, containing 224^- acres, to Isaac K. Lippincott, at $30 per acre .... $6,744.60 525 496 SUPREME COURT. Kearney et al. v. Taylor et al. Lot No. two, containing 56-^% acres, to Thomas Carhart, for $28.25 per acre . . ; 1,593.86| Lot No. three, containing 32T8^ acres, to Amos Walling, for $26.75 per acre .... 878.73f Lot No. four, containing 18T%% acres, to Jonathan Tilton, at $38.50 per acre .... 709.55J Lot No. five, containing 59/^ acres, to Ezra Os- born, Esq., for $22.50 per acre .... 1,339.20 Lot No. six, containing 56T8^ acres, to Ezra Os- born, Esq., for $13.25 per acre .... 753.13 Lot No. seven, containing 48p^ acres, to Isaac K. Lippincott, for $25.25 per acre . . . 1,223.61J Lot No. eight, containing 24Ty$- acres, to Richard S. Burrowes, for $43 per acre .... 1,036.73 Lot No. nine, containing 7yo% acres, to Isaac K. Lippincott, for $18.50 per acre .... 135.79 Lot No. ten, containing 16fV(r acres, to Ezra Os-. born, Esq., for $11.75 per acre .... 194.69J Lot No. eleven, containing 59T^ acres, to James Sproul, at $33.50 per acre . . . • l,980.85| *4071 *Lot No. twelve, containing 26T^3- acres, to 1 Thomas J. Walling, for $33 per acre . 858.56 Lot No. thirteen, containing 49acres, to Amos Walling, for $29.50 per acre .... 1,457.89 Lot No. fourteen, containing 40/^ acres, to Joseph Carhart, for $7 per acre ..... 282.45 Lot No. fifteen, containing 61t3^j- acres, to Horatio Kearney, for $12.25 per acre . . • • 751.41 $19,941.19 Amounting, in all, to the sum of nineteen thousand nine hundred and forty-one dollars and nineteen cents, the one half of which, by the conditions of sale, was made payable on the first day of April next, when deeds were to be made, and possession given to the purchasers ; the other half was made payable in one year from the first of April next, without interest, by the purchasers giving approved security for the payment thereof. . In witness whereof we have hereunto set our hands and seals, this twentieth day of January, in the year of our Lord one thousand eight hundred and thirty. James Hopping, [l. s.J Edward Taylor, [l. s.] Leonard Walling, [l. s.] 526 DECEMBER TERM, 1853. 497 Kearney et al. v. Taylor et al. The court ratified the sale, and ordered the commissioners to execute deeds to the purchasers accordingly. The lots numbered 5, 6, 7, 8, 9, and 10, were the subjects of the present suit. On the 1st of April, 1830, the commissioners executed a deed for the above lots to John I. Taylor, reciting that they did so at the request of Osborn, Lippincott, and Burrowes. About the time of the sale, in the preceding November, a company was organized, under circumstances which will presently be explained, for the purpose of purchasing the above lots and laying out a town upon them. The company consisted of the following persons, viz. Joseph Taylor, administrator and guardian; John I. Taylor, his son; Leonard Walling, commissioner; David S. Bray; Ezra Osborn, son-in-law of Joseph Taylor; James Hopping, commissioner; John Hopping, his brother; Primrose Hopping, another brother and auctioneer; Isaac R. Lippincott. The time, manner, and object of the formation of the company are thus stated, in the answers of some of the defendants : And the said John I. Taylor, for himself, further saith, that some time after the said sale, and before the deed to him from *said commissioners was executed, but the precise r^jno time when, this defendant cannot now remember, he bought of Ezra Osborn the share of Richard C. Burrowes, by verbal agreement, the said Osborn having, as this defendant understood, bought out th’e said Burrowes, and he, the said J. I. Taylor, paid said Burrowes $40 for it, as an advance thereon. And the said John I. Taylor further says, that he has no recollection of anything else relating to the purchase of said Key Grove property, until, as he thinks, the meeting of the surveyors to lay out roads, in February, 1830, when it was proposed, by some one interested, that the deed for lots o, 6, 7, 8, 9, and 10, should be made to the said J. I. Taylor, as he was then young and unmarried, for the convenience of transfers and to save expense.. And this defendant, in further answering, says, that he does not know, of his own knowledge, how the said Ezra Osborn, David S. Bray, John Prim-^ese, and James Hopping, Isaac K. Lippincott, Leonard Vv ailing, came to [be] interested in the property, but believes, anj has always so heard and been informed, that on the second day of the sale, viz. the fourth November, 1829, Daniel Holmes, who was anxious, and whose interest it was to make he property bring as much as possible, prevailed upon several gentlemen to join for the purpose of bidding for lot No. 8, a oresaid, and that John Hopping, Ezra Osborn, Richard C. 527 498 SUPREME COURT. Kearney et al. v. Taylor et al. Burrowes, Isaac K. Lippincott, Horatio N. Kearney, Septimus Stephens, and Primrose Hopping, joined for that purpose; and this defendant believes, and so charges the truth to be, that the only object of said Holmes in getting up said company was to increase the price of the property by creating competition ; and that, but for the said company, the lot No. 8 would have been struck off to persons interested against improvement in that neighborhood, for about twenty-nine dollars per acre. And this defendant, the said John I. Taylor, in further answering, says, that said lot number 8 was a poor, barren, sandy soil, with wood of but very little value upon it, scarcely of value enough to pay for its own cutting, and worth but little for agricultural purposes; and that, in the opinion of this defendant, no other plan could have been hit upon which would have made the said lots 5, 6, 7, 8, 9, and 10, bring as much as they did bring. And the said John Hopping, in further answering for himself, says, that so far as he is himself concerned, he did not combine with any per son whatever to bring about a sale of the Key Grove property, nor does he know or believe that anybody else did; that this defendant did not attend the said sale on either day of the sale, and previous to the said sale he did not know and had not heard that any company had been or would be formed for the purchase or sale of said Key Grove property; nor had he *4q€)l any idea or belief that the said Key Grove property -I could be converted into a seaport town. And the said John Hopping further says, that in the evening of the first day’s sale, after the adjournment, or the morning of the next day, and before the sale commenced, in a conversation between this defendant and his brother, James Hopping, the said James Hopping told him that Daniel Holmes and Septimus Stephens talked of making up a company to buy the fishing point lot, viz. No. 8. This defendant then asked said James Hopping if he was going to take a share, to which the said James replied that he could not, as he was a commissioner-; said James then said he expected that this defendant could have a share if he wished. This defendant then tola him to tell Daniel Holmes that he would take a share ; ana this defendant, the said John Hopping, expects that his brother did so report him. And the said John Hopping, for himself, says, that the said James Hopping had no interest in said purchase of lots No. 5, 6, 7, 8, 9, and 10, at the time o said sale, nor until about three months after, when he consented to come in and advance a part of the purchase-money, at the instance and request of this defendant and his bro er Primrose. And this defendant, in further answering or 528 DECEMBER TERM, 1853. 499 Kearney et al. v. Taylor et al. himself, says, that neither the said commissioners, nor the said guardian, nor any or either of them, to the best knowledge or belief of this defendant, were interested, directly or indirectly, in said purchase at the time thereof, nor had he ever heard, until after the reading of the bill in this cause, that there had been any combination, unlawful or otherwise, to bring about a sale of said Key Port property. And these defendants, in further answering, say, that the said sale was in every respect fair, as far as these defendants know, and as they verily believe, and that they never heard of any allegation to the contrary, until about the time of the commencement of the suits in ejectment referred to in the bill of complaint ; and this defendant, the said Ezra Osborn, answering for himself, absolutely denies that previous to said sale he combined with any person whatever to procure a sale of said property, nor did he ever know, hear, or believe, that such combination had been entered into by any person or persons whatever, nor did he know or believe at the time of said sale, nor does he now know or believe, that the said commissioners and guardian, or either or any of them, were at the time of said sale interested, directly or indirectly, in said purchase. And this defendant, Ezra Osborn, in further answering, says, that his object in attending said sale was to bid for lot No. 1, and that he did bid for it until it got up, in the opinion of this defendant, to its full value, when this defendant stopped bidding, and Isaac Lippincott bidding higher, it was struck off to the said Lippincott just before dinner on the *second r*r nn day of sale. And this defendant, in further answer- *-lng, says, that according to his best memory and belief, said lot No. 1 was adjourned on the first day of sale at twenty-three dollars per acre on this defendant’s bid, and that he became acquainted with said Lippincott for the first time at said sale. Lippincott, in his answer, thus describes the formation of the company. And that this defendant, inasmuch as he had then become the purchaser of lot No. 1, and it was evidently his interest that lot No. 8 should not fall into the hands of persons whose interests were adverse to the Key Grove property, consented to be one of the several others to join and buy said lot No. 8; that said Daniel Holmes then proceeded to hunt for others to joip in the said purchase, and left us for that purpose, as he th ’^^er a sh°i't time the said Holmes returned, and reported at he had found several who would join with us in buying said, lot No. .8, and mentioned the names of Osborn and Burrowes ; and in a consultation between said Stephens, Holmes, Vol. xv.—34 529 500 SUPREME COURT. Kearney et al. v. Taylor et al. Burrowes, Osborn, and this defendant, it was then agreed that lot No. 8 should be purchased on said joint account, and that said Burrowes should be the bidder. And this defendant charges the truth to be, that said Holmes did not speak to either of the said commissioners or guardians to join in said purchase, or if he did, that they declined it, and that there was no understanding, directly or indirectly, that said commissioners or guardians should be interested in said purchase; or if there was, or if said Holmes spoke or agreed with either or any of them, this defendant expressly avers that it was without the knowledge and consent of this defendant. And this defendant further says, that he was induced to join in said purchase by the said representation of said Holmes and Stephens, and that he did not want, and had no intention of bidding for or buying said lot No. 8, nor did he want it on his individual account, and should not have joined in it but for the said solicitation of said Holmes and Stephens. And this defendant in further answering says, that according to the best of his recollection and belief, that upon said sale being re-opened in the afternoon of said 4th November, 1829, said Burrowes bid for said lot No. 8 in pursuance of said agreement, and that it was struck off and sold by the said commissioners, openly.and fairly, to the said Burrowes, for the said sum of $43 per acre, as the highest bidder. And as this defendant then thought and believes, and as he still thinks and believes, the said Burrowes was the only person then known to the commissioners as the purchaser; and this defendant charges that he was the only person legally *5011 *resPonsible for the purchase-money, and amply able -• to pay the same. Holmes, in his answer, thus speaks of it. And this defendant in further answering says, that after he got upon the ground, upon the second day of sale, he went to work, by going first to one person and then another, to get up a company to bid for said lot No. 8, in opposition to the persons who it was understood were bidding from Middletown Point; and finally, after lot No. 1 was struck off to I. K. Lippincott, and with considerable difficulty, the following persons agreed verbally to join with this defendant in purchasing said lot No. 8: Isaac K. Lippincott, Richard C. Burrowes, Horatio In. Kearney, Ezra Osborn, Septimus Stephens, and he thinks Primrose Hopping. And this defendant says that, after the adjournment of the first day of sale he spoke, also to James Hopping, one of said commissioners, to be interested, this defendant not then knowing that there was any thing illegal 530 DECEMBER TERM, 1853. 501 Kearney et al. v. Taylor et al. in his becoming so, but the said James Hopping absolutely refused on account of his being a commissioner; this defendant then requested him to speak to his brother John Hopping, when he went home, and see if he would not come in. And this defendant says that some one, either James or Primrose Hopping, reported next day that John Hopping would come in, and he was accordingly considered as one of the company at the sale. And this defendant in further answering says, that said company was got up by this defendant on the spur of the occasion, and for no other purpose whatever but to create competition and make property bring more, and extended originally only to lot No. 8. And this defendant in further answering says, that neither James Hopping, Leonard Walling, [n] or Joseph Taylor, were [was] at the time of the sale a part of said company, or interested in any way in the purchase of any part of said lots 5, 6, 7, 8, 9, and 10. The evidence of Primrose Hopping was as follows : Primrose Hopping being sworn, says: I was the crier of this vendue. I struck off No. 8 to Richard C. Burrowes. He was the highest bidder. William Walling and Richard C. Burrowes were the only two bidders some considerable time before it was struck off; one stood on my right hand and the other on the left. William Walling was on the left hand and Richard C. Burrowes on the right. They were bidding twenty-five or fifty cents per acre. William Walling was last bidder except Richard C. Burrowes. Burrowes bid openly and Walling by a wink. I had a timepiece, and gave warning that if I had not another bid I would strike it off to the highest bidder; and after I got a bid from Burrowes, I immediately turned to Walling *to get a bid, and pcno did this repeatedly; and dwelt an unusual time to get *-a bid, but could get none. I dwelt because he looked at me as if anxious, but never bid; and finally I struck it off to Richard C. Burrowes. I gave fair warning that I was going to strike it off. I think it was put up at the first day, but don t recollect the amount it bid up to. I had no instructions from commissioners to strike it off to Burrowes. I had instructions from Edward Taylor several times not to dwell so long upon the property. The whole farm was struck off o the. highest bidder, to my certain knowledge. Neither of commissioners or Joseph Taylor were interested in this proper y at the time it was sold. I got the highest possible price or each section of the property. It was much better to ave the property sold than partitioned. I did not consider 531 502 SUPREME COURT. Kearney et al. v. Taylor et al. myself interested in this property at the time it was struck off. I think Richard C. Burrowes spoke to me about it. I don’t recollect what I said. I don’t recollect what the precise words were. I don’t think I gave him a decided answer. I think Burrowes spoke to me on the second day of sale. I don’t recollect that he told me who were concerned in the company. I can’t say if any of the company lots had been sold when Burrowes spoke to me. I am not sure if Burrowes said it to me, or if it was the common talk to try to make a landing there. When Burrowes asked me, I think I did not tell Burrowes I would not join. I extended the time several times in the sale of No. 8. I gave further time after Burrowes’ last bid. I think Walling was a little farthest off. I did not know Van Pelt as a bidder. Van Pelt claimed the bid. I requested the property to be set up again. That was my custom. It was referred to commissioners, and they decided that it was stricken off fair and should not be set up again. I did have an interest in company property afterwards. I never paid any of the purchase-money. James, and John, and self had two-thirds. They were my two brothers. My share was sold to Capt. Vanderbilt with the rest in 1839. I depended on my brothers. They made payments. Brothers received purchase-money, and accounted to me at our settlement after. There was a balance paid me. We had other dealings. I can’t remember when I came in partner with them. I can t say whose share of these lots James and John got. I don t know which of my brothers I got the share of, John or James. I don’t know when, or if before deed to John I. Taylor. I have no knowledge when I came in a partner. John I. Taylor gave me some land in exchange for lot No. 17, and some money. He and Joseph Taylor gave me 7^- acres back, next to Vandine’s. The trade was made several years ago, before the commencement of suit, &c., &c., &c. *KAO-1 *In April, 1830, twenty-four building lots were laid 1 out upon part of lot No. 8, sixteen of which were distributed in severalty amongst the members of the company, and the residue left to be sold by John I. Taylor for their benefit. Other measures of improvement were adopted which it is not necessary to state particularly. In the case of Doe v. Lambert, 1 Green (N. J.) loZ, the Supreme Court of New Jersey decided, that a deed made by the commissioners in partition proceedings to any other person than the one reported as purchaser, was void. 532 DECEMBER TERM, 1853. 503 Kearney et al. v. Taylor et al. In consequence of this decision, the heirs of Edmund Kearney instituted actions of ejectment in the Circuit Court of the United States for the District of New Jersey, in order to recover the property; whereupon the company applied to the legislature for relief. In March, 1841, the legislature passed an act which recited that deeds were sometimes made to other persons than the reported purchasers, and then declared as follows:— “ Sec. 1. Be it enacted by the Council and General Assembly of this State, and it is hereby enacted by the authority of the same, that, upon proof being made to the satisfaction of the court or jury before whom any such deed or conveyance may be offered in evidence, that the lands or real estate therein mentioned were sold fairly and without fraud, and that such deed or conveyance was made and executed in good faith, and for a sufficient consideration, and with the consent of the person or persons reported to the court as the purchaser or purchasers, the said deed or conveyance shall have the same force and effect as though the same had been made and executed to the purchaser or purchasers reported to the court.” In October, 1841, the bill in this cause was filed by the heirs of Edmund Kearney, charging a fraudulent combination between Daniel Holmes, Joseph Taylor, Leonard Walling, James Hopping, John I. Taylor, and others named in the bill, for the purpose of bringing about a compulsory sale of the Key Grove estate, with a view to establishing a seaport town on a part thereof; that, to that end, Holmes made the purchase of James P. Kearney, instituted the proceedings in partition, and, through the fraudulent cooperation of Joseph Taylor, the guardian, and Leonard Walling and James Hopping, two of the commissioners, and Primrose Hopping, the crier, and others confederating with them, wrongfully and fraudulently brought about, under pretext and color of law, a sale of the entire estate, under the proceedings in partition. The bill makes a case of fraud in fact, as well as of fraud in law, growing out of the fiduciary relations which the guardian and commissioners and auctioneer Respectively sustained to the estate and to the heirs to whom it *-belongs. The prayer is for an account of the proceeds of all wood and timber cut from the six lots conveyed by the commissioners to John I. Taylor; for an injunction to restrain waste; that the conveyance to John I. Taylor, and the sale of these lots by the commissioners, be declared void; and for other relief. 533 504 SUPREME COURT. Kearney et al. v. Taylor et al. Extracts from the answers of the principal defendants have already been given. In April, 1842, the trial at law of the ejectment came on before Judges Baldwin and Dickenson; and the court held that, under the provisions of the act of 1841, the defendant must prove that there was no fraud of any kind in the sale, in order to avail himself of the provisions of the act; but the jury not agreeing, no verdict was rendered in the case. Whilst the present suit was pending, viz. on the 14th of February, 1844, the legislature passed a private act, entitled “An act to confirm the sales of the real estate whereof Edmund Kearney, deceased, late of the county of Monmouth, died ‘ seised.’ ” This act recited the circumstances of the sale, and that doubts had arisen respecting the title to the lots, and then declared: “ Section 1. Be it enacted by the council and general assembly of this State, and it is hereby enacted by the authority of the same, that the several deeds, so given by the said commissioners for the said several lots, shall be deemed and taken, and the same are hereby declared to be valid and effectual in law, to convey the estate therein and thereby, intended to be conveyed; and that the said deeds, or any of them, and all subsequent conveyances of the said estate, or any part thereof, shall not be impeached in any court whatever for any such alleged interest in the said commissioners, or any of them, in the property so sold by them, as aforesaid, or for any alleged defect or informality in the execution of the powers of the said commissioners, or in the proceedings of the said orphans court; and that the said deeds, or any of them, shall not be invalidated or impeached upon any other ground than that of absolute, direct, and actual fraud on the part of the said commissioners.” The defendants then filed a supplemental answer, averring that there was no fraud, and praying to be allowed the benefit of this act; and also filed a cross bill, the proceedings under which it is not material to notice in this report. In September, 1851, the Circuit Court decreed that the bill should be dismissed with costs, from which decree the complainants appealed to this court. *It was argued by JZr. Converse and Mr. Ewing, for J the appellants, and by Mr. Dayton and Mr. Johnson, for the appellees. The arguments of the counsel on both sides were directed, 534 DECEMBER TERM, 1853. 505 Kearney et al. v. Taylor et al. in a great measure to an examination of the facts in the case, as disclosed in the answers and evidence. The points of law for the appellants were the following: I. That the courts of the United States, having full jurisdiction of the case conferred on them by the Constitution, and the case being actually pending in the Circuit Court, the legislature of New Jersey had no power, by private act or special edict, enacted or pronounced while the case was so pending, to interfere with or to control the decision of the United States court therein. That it could not itself directly pronounce or dictate to the court what judgment it should pronounce in the case; nor could it, by changing the principles of law, or the rules of evidence governing it, by such special edict, indirectly make or control the judgment or decree of the court; and that, such being the purport and end of the act of February 14, 1844, the same is void. II. That there was an actual fraud by the commissioners in the execution of their trust, and that, if we admit the special act of February 14, 1844, to be valid, the sale and conveyance, made by the commissioners to themselves and their partners, are void under its provisions. III. That material recitals, in the preamble to that act, appear to be false; and, it being a private act, and the legislature deceived, and induced by false pretences to pass it, it is void. I. We contend, then, that the act of February 14,1844, is void; and, 1st. Because it violates the 22d article of the constitution of New Jersey, which declares that the common law of England shall remain in force in that State, until altered “ by a future law of the legislature.” This act is not a law, but a mere legislative edict interposed between two parties litigant, directing what manner of decree shall be made between them—a taking the property from one and giving it to the other. To be a law, it must be general a rule affecting property, generally, in like circumstances. This act is in violation of the principles of the common law, and, not being itself a law, is therefore void. 1 Bl. Com., 44, 138; Taylor v. Porter, 4 Hill (N. Y.), 140; Regents of University of Maryland v. Williams, 9 Gill & J. (Md.), 412; Ervine’s Appeal, 16 Pa. St., 257 ; McNutt v. Bland, 2 How., 16-17; Webster v. Cooper, 14 Id., 503; Proprietors of Kenne-beck *v. Laboree et al., 2 Greenl. (Me.), 288-295; At-tomey-G-eneral v. Stevens, 1 Saxt. (N. J.), 369, 380. L 000 bee further authorities, post, p. 23. 535 506 SUPREME COURT. Kearney et al. v. Taylor et al. 2d. It also violates that clause of the same article of the constitution of New Jersey which declares, “that the inestimable right of trial by jury shall remain confirmed, as a part of the law of this colony, without repeal, for ever.” Scudder v. Trenton Delaware Fadis, 1 Saxt. (N. J.), 696, 726, 727; Arrowsmith v. Burlingim, 4 McLean, 489; Embury v. Conner, 3 N. Y., 511, 516, 517; Benson v. Mayor, &c., 10 Barb. (N. Y.), 223, 224; People v. White, 11 Id., 26, 30; Parkman v Justices, 9 Ga., 341, 349, 350, 351; McLeod v. Burroughs, 9 Id., 213, 215, 216; Vanzant v. Waddle, 2 Yerg. (Tenn.), 260, 269, 270, 271; Walley v. Kennedy, % Id., 554, 555, 556; Jones v Perry, 10 Id., 59, 71, 72 ; Holden v. James, 11 Mass., 396; Hake v. Henderson, 4 Dev. (N. C.), 15; 2 Kent, 1-13 and n. (b), p. 13, and n., p. 4. 3d. This act, not being a law, is not to be regarded as a rule of decision in the courts of the United States, under the provisions of the 34th section of the judiciary act, even “ in a trial at common law.” 4th. It violates the 2d section of the 4th article of the Constitution of the United States, which declares, “that the citizens of each State shall be entitled to all the privileges and immunities of the citizens in the several States.” This act is a special edict against citizens of States, other than New Jersey, divesting them of their inheritance, or laying down special rules applicable to their estate only, which may have that effect. If the act were general against all parties, citizens of other States, who might hold property so circumstanced, it would be clearly unconstitutional. We think the objection loses none of its force because the act is special, and applied to a single case. It declares that the property of these parties, who are citizens of other States, shall not be entitled to the protection which the laws of the State extend to the property of its own citizens. 4 Johns. (N. Y.) Ch., 430. 5th. It is against the spirit, if not the letter, of the 2d section of the 3d article of the Constitution of the United States, which gives to the courts of the United States jurisdiction in all cases “between citizens of different States.” The national tribunal would be, in effect, ousted of its jurisdiction, and the citizens of other States deprived of its protection, if the State legislature could interpose, pending the case, and, by special edict, pronounce a decree, or lay down new principles of law and new rules of evidence for that case alone, which would dictate to and control the court in the decree it *should pronounce. . This would defeat J the end and purpose of this provision of the Constitution. For every one is aware that the citizens of other States 536 DECEMBER TERM, 1853. 507 Kearney et al. v. Taylor et al. are much safer from injustice and. wrong where their rights are adjudicated by the judiciary, than the legislature of a State. United States v. Peters, 5 Cranch, 15; Ogden v. Blacklege, 2 Cranch, 194; Suydam v. Broadnax, 14 Pet., 67, 74, 75; Rhode Island v. Massachusetts, 12 Id., 751. 6th. The right to pass an act such as this is inconsistent with a republican, constitutional government, or any government with limited powers, for it deprives the citizen of one of his absolute rights—the possession and enjoyment of property. It is admissible only in a purely Asiatic despotism. People n. Supervisors of Westchester, 4 Barb. (N. Y.), 64; Norman n. Heist, 5 Watts & S. (Pa.), 171; Burnt) erg er v. Clippenger, 5 Id., 311; Ervine's Appeal, 16 Pa. St., 257. II. We contend, that there was actual fraud by the commissioners in the execution of their trust; and if we admit the special act of February 14, 1844, to be valid, the sale and. conveyance made by the commissioners to themselves and their partners are void. A trustee who becomes a purchaser of the trust estate is, in the estimation of law, a fraudulent purchaser; and, because of the temptation and opportunity to commit fraud, and the ease with which he can cover it from detection, such purchase is of itself a fraud, and a title procured under it is void, at the option of the cestui que trust. The special act of February 14, 1844, declares that this sale and the deeds made under it, “ shall be valid in law,” unless “impeached for absolute, direct, and actual fraud.” It does not, however, require this court to change the rules of evidence applicable in all like cases, where the question is, whether there was or was not actual fraud on the part of the trustee in dealing with the property and funds of his cestui que trust. The special act merely relieves the trustee from the judgment of law consequent upon their purchase. It leaves all incidental questions open, to be dealt with according to general principles. And the trustees stand, in an inauspicious relation to the property; they are vendors of the estate of others, and they are purchasers for themselves; a court of equity will, therefore, examine their acts with jealous caution, and in dubious matters it can allow them the benefit of no favorable presumption. Michaud v. G-irod, 4 How., 503. And if the trustees have resorted to artifice or falsehood to conceal their interest; or if, contrary to their duty, they have retained the trust fund, and used it for their own benefit or that of their friends; or if they combined with others to pre- 537 507 SUPREME COURT. Kearney et al. v. Taylor et al. *^081 vent investigation, *or to postpone accountability, they J will be held chargeable with actual fraud. 1st. Two of the commissioners, Leonard Walling and James Hopping, were undoubted partners at the time the sale was reported to the court; if not so, by a secret understanding among themselves on the day of sale. But to cover and conceal their interest and that of the guardian, Joseph Taylor, they reported to the court that Ezra Osborn was the purchaser of lots 5, 6, and 10; Isaac K. Lippincott of lots 7 and 9, and Richard S. Burrowes of lot No. 8; which report was false. And in the deed which they executed to John I. Taylor, April 1st, 1880, they recite that Osborn, Lippincott, and Burrowes, bid off lots 5, 6, 7, 8, 9, and 10, for John I. Taylor, as his agent, which recital was false, and, together with the conveyance to him, intended to conceal their interest in the purchase. This falsehood and concealment was for their own advantage. Had they reported the sale and the parties in interest truly to the court, it could not have been confirmed. 2d. They retained the trust fund for a long time in their hands, and used it for the benefit of themselves and their families. No costs appear to have been taxed in the case; and the amount is left to conjecture. We suppose that $341.19 will be more than sufficient to cover them. This deducted will reduce the net proceeds of sale to $19,600. (The counsel then went into a long examination of the state of the accounts, which is omitted.) 3d. In order the better to secure to themselves the use of the trust fund, and to enable them to purchase and improve a portion of the estate with its proceeds, the commissioners associated themselves, and combined with Joseph Taylor, the guardian of four of the minor children and heirs, and through his connivance and participation avoided investigation and postponed accountability. The record shows that, from April 1st, 1830, to April 1st, 1831, there was in the hands of the commissioners and guardian, of the funds of the estate............$6,025.29 From April 1st, 1831, to April 1st, 1832 . . • 10,017.56 There is no evidence in the record that any part of this fund passed out of the bands of the members of the partnership prior to the 7th of April, 1837. The record shows tha there did certainly remain in their hands, until the las named date, at least $7,994.59. . , The estate was thus made to pay for itself and improve 538 DECEMBER TERM, 1853. 508 Kearney et al. v. Taylor et al. itself; and it is not surprising that one of the partners (Primrose Hopping) testifies that he never paid any thing on his purchase, and that John Hopping does not know when, where, or to whom he paid. *It is not at all probable that either of the commis- r*rnn sioners, or their brothers, or the guardian, his son, or L son-in-law, ever paid a dollar towards their purchase. The proceeds of the estate could not have been thus held to pay for the estate without combination between the commissioners and guardian. 4th. We will endeavor to show, that the report of the commissioners that these premises could not be divided without great prejudice to the interest of the owners was untrue, and induced by a purpose to possess themselves of a portion of the property. There were seven shares. The commissioners divided the property into fifteen parts before making their report that it could not be divided. 5th. There was a controversy at the bidding, which was first decided by Primrose Hopping, a secret partner; and afterwards, on appeal, by the commissioners, (two of them, as we think we have shown,) also secret partners. It was decided in their own favor. HI. The recitals of the act of February 14th, 1844, show that the legislature was decided, and passed the act under a mistake as to the facts. McIntire Poor School v. Zanesville Canal and Manuf. Co., 9 Ohio, 289-290 ; 2 Bl. Com., 345-6. 1st. The act contemplates that the deed which it confirms had been made to a party to whom the interest in the property had been transferred, for a valuable consideration—not to a person who received the conveyance to conceal the interest of others. 2d. The combination between the commissioners and the guardian to unite in the purchase of the estate—a combination fraudulent in itself—was not made known to the legislature. 3d. The sale and conveyance by the commissioners were not made in good faith. There were suppress™ veri and suggest™ falsi in all their several papers relating to both. 4th. The purchase-money was not honestly and fully paid to the persons entitled. The counsel for the appellees bestowed a great deal of attention upon the act passed by the legislature of 1844. Having given the views of the opposite counsel upon this point, it is pioper to state also the views taken bv the counsel for the appellees. 539 509 SUPREME COURT. Kearney et al. v. Taylor et al. The act of March, 1841, required proof, to the satisfaction of the court or jury, that the lands were sold fairly and without fraud—that the deed was executed in good faith, for a sufficient consideration, and with, the consent of reported purchasers. The obvious meaning of this act, as we contended, was *^101 a°tual *fraud, actual good faith. It was so understood -J by the legislature, and so understood by the remonstrants, who opposed it to the last. Yet Judge Baldwin ruled, in effect, that our condition was made worse rather than better by this act. He said, first, that the act was a legislative recognition of Doe v. Lambert; second, that we must convince both court and jury that there was no fraud; third, that the act did not designate the character of fraud, which was to affect such deeds; that in consequence, all fraud, actual or legal, would vitiate the deed; that if the commissioners were interested in the sale, (before their duties were discharged,) however innocent or ignorant, or however large the price and fair the sale, it was a fraud in law, and vitiated the deed. This opinion of Judge Baldwin, involved a necessity for further legislation. Notice of application for a private law, was published six weeks in the Monmouth Democrat, (in the county where the lands lie,) under a rule of the house. The bill, after such notice, was introduced and passed into a law, 14th February, 1844. First. Does that act conflict with the Constitution of New Jersey or the United States? Second. Was there “absolute, direct, and actual fraud on the part of said commissioners”? Another point is made by the answer to the cross bill, to wit : Third. Was the act of 1844 a fraud on the legislature, and can it be avoided for that cause ? 1. Does the act of 1844 violate the Constitution of New Jersey? The act is purely remedial. It relieves against a technical exception, to wit, the making of a deed to a person other than the bidder; and it relieves from a legal or constructive fraud, (if there be any,) though not from actual fraud. It; is nn-portant to remember that even if the commissioners did become interested (which is expressly denied) the deed was no void, but voidable only by the heirs, and them only. v. McKnight, 6 Halst. (N. J.) R., 386. And equity even then would put them on terms. f Our constitution, July 2d, 1776, gives plenary powers o 540 DECEMBER TERM, 1853. 510 Kearney et al. v. Taylor et al. legislation. Nothing is reserved from their power except the rights of conscience and trial by jury. New Jersey had no bill of rights. Her constitution did not even separate the legislative and judicial departments of government. There was no provision against interference with vested rights or against retrospective laws. 1 Kent, Com., 448; 3 Story on Cont., 266; Bennett v. Boggs, 1 Baldw., 74; Bonaparte v. C. A. B. B. Co., Id., 220. Under her constitution of 1776 her *courts and jurists have even held her power of legislation absolute, as of British Parlia- *-ment. So much of the common and statute law of England was adopted as theretofore in use in the province, and until changed. Sec. 22 of constitution of 1776. The act of 1844 did not violate the common law. Private acts are a common-law assurance or conveyance. So treated in British legislation. 5 Cruise Dig., p. 1 to 15; title “ Private Acts.” It shows that Parliament legislated by private acts as extensively as we do. But if the common law "were otherwise, the constitution of New Jersey adopted so much thereof only as had been in use in the province. This principle had not been in use. Where a power to legislate and cure defects has been long exercised, as in the past history of New Jersey, it is the strongest evidence of its existence. Briscoe v. Bank of Kentucky, 11 Pet., 257; State v. Mayhew, 2 Gill (Md.), 487. Commencing after the surrender by the proprietors of New Jersey of the powers of government in 1702, we have a series of these remedial acts of the most extended character. The following public acts are still on the statute book. (Then followed a reference to fifty-nine private acts.) This long list of private acts shows the constant exercise of legislative power over wills, deeds, partitions, trusts, and other cases. They do not cure the evidence merely, but in many cases make the law to meet the case; affecting legal interests vested in minors, married women, and others, in various forms and without assent. I may add here that all the adjoining States and Congress itself has passed many such remedial acts, confirming land titles, &c. 14 Pet., 353, 382. ■ ’ . 3. The restriction in the constitution in behalf of trial by jury is not violated. The object of this act was to cure a mere legal fraud (if any), not that actual fraud, or fraud in tact, of which the jury is the judge. It determines a prin-C1lde, not a fact, and ft leaves trial by jury as it was. 1 urther, “ trial by jury,” spoken of in that constitution, re-ters only to such trial by jury as-had been theretofore prac-541 511 SUPREME COURT. Kearney et al. v. Taylor et al. tised in the colony. It is evident, from previous as well as subsequent legislation hereinbefore referred to, that trial by jury must have been ever held in this colony, subject to such power of legislation. There are many cases of civil right where trial by jury is directly taken away; as in appraisement of lands taken for public purposes; it was so before the adoption of the constitution of 1776. It was so under, the proprietary government. Leam & Spi., 440. Also under the royal government. Allison’s Laws of New Jersey, 273, sec. 3. Also since the constitution of 1776. Saxt. (N. J.), 694. Scudder v. Trenton Delaware Falls Co. and cases cited there. 91 *^’ This law does not encroach on the judicial depart- J ment (if it shall be thought that by the theory of our government, without constitutional provision, these departments are distinct). The act does not declare what the law was theretofore, but what it shall be in future, and it applies such law to existing cases, or in other words, affects existing rights. It comes back to the same question, viz. the power of the legislature as respects rights vested in law, though subject to certain equities. It is not a judicial act to rectify a bad sale. Wilkinson v. Leland, 2 Pet., 660. All that class of laws which are held void as encroachments on the judicial departments of government, are aside the question. But aside from this, where there is no constitutional restriction, as in New Jersey, the legislature may, in some qualified degree, exercise judicial power, &c. 2 Root (Conn.), 350; 3 Dall., 386 ; 3 Greenl. (Me.), 334, and the acts hereinbefore cited, shows that New Jersey has always done so. There is nothing in the Constitution of the United States against it. 3 Story on Cont., 266, 267. 5. The next and a principal point is, as to the question whether the act conflicts with the Constitution of the United States. Does it destroy the obligation of a contract? All else ends in arguments looking to the propriety of such special legislation. The object of this law is not to disturb or impair contracts, but enforce them. The commissioners who sold, were the agents of the court. They sold and received the purchase-money in full, and made a deed. This law is to enforce that contract. It confirms existing rights only in favor of the purchaser, who paid his money. The heirs became seized, it is said, by reason of the detective character of the proceedings; but such seizin was subject to an equity, which this act recognizes and enforces. Kent, Com., 455; Goshen n. Stonnington, 4 Conn., 209; Lang-542 DECEMBER TERM, 1853. 512 Kearney et al. v. Taylor et al. don v. Strong, 2 Vt., 234; 3 Story on Cont., 267 ; Underwood v. Lilly, 10 Serg. & R. (Pa.), 97 ; Beade v. Walker, 6 Conn., 190; Booth v. Booth, 7 Id., 350; 3 McLean, 212; 7 Blackf. (Ind.), 474; 8 Mass., 472-9; Id., 360; 2 Harr. & J. (Md.), 230; 6 Gill & J. (Md.), 461; 3 Scam. (Ill.), 443. A court of equity often exercises this power in favor of him who pays the purchase-money. This law does no more. It only says, a deed made by request of the purchasers to John I. Taylor, as their agent, shall be good. Legislation often does what a court of equity may do ; and to control property of infants, and order sale of their estates and deeds therefor, is or was of constant occurrence. See acts hereinbefore cited, and 15 Wend. (N. Y.), 436 ; 20 Id., 365. *There were many such acts before the adoption of « the Constitution of the United States; and that instru- *-ment did not mean to destroy remedial State legislation. We must look to the history of the times for its meaning, if doubtful. Rhode Island v. Massachusetts, 12 Pet., 557. The Supreme Court of the United States has repeatedly held such acts valid, and that too even after judgment. Sat-terlee v. Matthewson, 2 Pet., 380 ; Wilkinson v. Leland, 2 Id., 657, 661; Calder and wife v. Bull and wife, 3 Dall., 386 ; Watson et al. v. Mercer, 8 Pet., 98, 108; Charles R. Bridge v. Warren Bridge, 11 Id., 420; Watkins v. Holman, 16 Id., 62; 3 Story, Com. on C., 266, collects cases up to 2 Pet.; Bennett v. Bogs, Baldw., 74: Fletcher v. Peck, 6 Cranch, 67, 134. Dicta in this case reviewed in later cases above cited. Second Point. Was there “absolute, direct, and actual fraud on the part of said commissioners ” ? Outside of the pleadings, this had been heretofore scarcely pretended. The evidence is all the other way. The charges of fraud in the original bill are of the grossest character. The answers, which are directly responsive, are evidence. Edward Taylor is the only surviving commissioner. He has answered fully, and been likewise sworn as a witness. He denies all fraud on the part of the commissioners, and says the property brought more than it was worth, in ehis judgment, and more than it would bring in the same condition at that time (April, 1844). The company who bought the lots in question, were Daniel Holmes, Ezra Osborn, Isaac K. Lippincott, Richard C. Burrowes, Horatio N. Kearney, Septimus Stephens. Ihey all answer, expressly denying all fraud, except Stephens, who declined his share, and died before any question. 543 513 SUPREME COURT. Kearney et al. v. Taylor et al. Horatio N. Kearney was the brother and one of the heirs, and has answered, disclaiming any knowledge of fraud at the time. The answers and evidence show, in brief, this state of facts. Edward Kearney died in 1822. His whole personal estate was but $1,080.33. His real estate was 781 acres of light sandy land, 431 of which only were cleared—which had been in possession of himself and ancestors for many years. In 1829, there were living six children, I think, interested in the estate, of whom three or four were minors, and three of these minors were girls, with no means of support. One of the children had sold his entire share (one seventh) to Daniel Holmes, for $1,600. The highest price any witness has put on the whole real estate was $15,000. It rented for many years prior to the sale for $260 to $300 only. *5141 *Holmes applied for a partition, and commissioners having reported it could not be divided without prejudice, they were ordered to sell. The laws of New Jersey required only that the commissioners should advertise in one newspaper in the county where the lands lie. They did, in addition, advertise in two newspapers in the City of New York, and had 100 large puffing handbills set up, showing the advantages of the property. There was a large attendance on the sale, aud the property brought $19,941.19. The money was paid, and the heirs have had the benefit of it. Every witness who had been examined says the sale was fair, and the price much exceeded public expectation, and was more than Horatio Kearney, one of the heirs, said it was worth. The judgment of the company, who bought lots 5 to 10, inclusive, may be gathered from the disposition they made of their shares at different times afterwards. Holmes, the prime mover, sold his interest to Joseph Taylor for a net profit of $25. Burrowes sold his to Osborn for $40. Horatio Kearney sold his to Bray for $40. Stephens backed out, and Lippincott says the company have saved themselves from actual loss on the purchase only by the earnings of certain vessels they have since run in connection. Yet after the gross charges of fraud and speculation in their bill, made without knowledge, were fully met both by answers and by evidence, these same charges are reckless y 544 DECEMBER TERM, 1853. 514 Kearney et al. v. Taylor et al. repeated, again and again, in the answer to the cross bill, but without the slightest evidence to sustain them. I cannot, in the mere statement of points, comment on the evidence in detail, but commend this part of the case to the careful examination of the court. It will show clearly there was no actual fraud on the part of the commissioners. Third Point. Was the act of 1844, a fraud on the legislature ? 1. The first answ’er is, if it were so, the party can’t get clear of it in this way. No case can be found, to show by evidence aliunde a law void because the legislature did not know what it was about. 2. The legislature understood the whole question. Six weeks’ notice of the application was given. The evidence of Mr. Sullivan shows his remonstrance was read and filed, with all its charges of fraud, before the act in the House of Assembly was referred to the judiciary committee. Yet afterwards the act passed unanimously. And a reference to the legislative journal of council of same year, shows it passed the other branch of the legislature, also upon the ayes and noes, unanimously. ^Besides this, Mr. Sullivan immediately filed his petition for repeal, and it was at once referred to the *-judiciary committee. The council journal shows, after full consideration, it was unanimously denied. No private law has ever passed our legislature after a more full and thorough discussion. The minutes of these bodies are referred to as evidence by Mr. Sullivan, the witness, counsel, and attorney at law, and in fact, on part of the complainants. Mr. Justice NELSON delivered the opinion of the court. This is an appeal from a decree of the Circuit Court of the United States for the District of New Jersey. The bill was filed in the court below by the heirs of Edmund Kearney, deceased, against the defendants, to set aside a sale of a part of a farm descended to them, situate on Raritan Bay, in New Jersey, under an order of the Orphans’ Lourt in that State, in a case of partition, a sale having been ordered upon the ground that partition could not be made without prejudice to the interest of the heirs. The farm, consisting of some seven hundred and eighty-one acres, was ivided by the commissioners into fifteen allotments, prepara-HkTo sa^e’ anT which sold for the aggregate price of ’r“*19. The bill seeks to set aside six of these allotents, Nos. 5, 6, 7, 8, 9, and 10, embracing about two hun-Vol. xv.—-35 6 545 515 SUPREME COURT. Kearney et al. v. Taylor et al. dred and eleven acres, and which sold for the aggregate sum of $4,683.15. At the time of the application to the Orphans’ Court for the partition, April term, 1829, there were seven surviving heirs of the estate, four of whom were minors. Daniel and John W. Holmes, who had purchased some year previously the interest of Janies P. Kearney, one of the heirs, made the application for the partition. The act of New Jersey, conferring the powers upon the Orphans’ Court, provides that the application may be made by the heirs, for any person claiming under them, and further, that if, in the opinion of the commissioners, partition cannot be made without great prejudice to the owners, and on satisfactory proof to the court of the same, a sale of the premises shall be ordered. It is not material to refer particularly to the proceedings before the Orphans’ Court, as we do not understand that any serious question has been made upon them. It has, indeed, been objected that no personal notice of the application, or of any of the proceedings before the court, was given to the heirs, whether adults or minors; and also, that no guardian ad litem was appointed for the latter. But, it is conceded, neither of these steps, however judicious, and proper for the purpose of protecting the interest of the parties concerned, are required by the statute of New Jersey or practice of the court. *The main ground relied upon for setting aside the -> sale, is to be found in the allegations and proofs of fraud in the proceedings that took place at the commissioners sale of the premises, under the order of the court. It is claimed that this sale is void, and should be set aside, on the ground of either actual or constructive fraud, or both. This sale took place in November, 1829, and was confirmed by the court on the report of the commissioners the January term following. . Deeds of conveyance were made of the premises sold in the month of April thereafter, when one half of the purchasemoney was paid; the remaining half has been since paid in pursuance of the conditions of sale, and order of the Orphans Court; and the whole of the purchase-money received by the heirs. All of them, except three, became of age as early as at, or before, September, 1831. Another became of age in 1834. This bill was filed October, 1841, some twelve years since the sale took place, and eleven since most of the pur chase-money was paid. Actions of ejectment had . een brought in the early part of that year, the precise date is nor given. e The case has increased very much in importance since 546 DECEMBER TERM, 1853. 516 Kearney et al. v. Taylor et al. sale by the commissioners in 1829, on account of the large and valuable erections and improvements made upon that part of the premises which is sought to be recovered. A town has sprung up on the bay, called Key Port, containing a population of several hundred inhabitants, with their dwellings, public edifices, docks, or wharves; and a great portion of the property has passed into the hands of bond fide purchasers. These six lots were purchased at the commissioners’ sale by a company organized pending the sale, and who made the purchase with a view to the laying out and establishment of a town at that point on the bay ; and after the confirmation by the court in the name of the bidders, it was agreed between all persons interested in the purchase, and the commissioners, that these lots should be conveyed to John I. Taylor, one of the company, in trust for the owners, on account of the greater convenience in granting town lots, after the town should be laid out and these lots put into the market. The deed was executed accordingly. But, it appears that some two years subsequent to this conveyance, it was decided by the Supreme Court of New Jersey, (1 Greene (N. J.), 182,) that a deed made by the commissioners in partition to any one, other than the person reported as the purchaser, was void. The law was supposed to be otherwise in New Jersey down to this decision, as it is in several of the States. 5 Paige (N. Y.), 620 ; 1 Dana (Ky.), 261; 2 Dev. & B. (N. C.), 103 ; 11 Id., 616. The title was first attacked solely on account of this flaw. It led to the institution of the actions of ejectment. The *defendants, however, applied to the legislature for relief, and in March, 1841, a general act was passed, *-providing, upon proof being made to the satisfaction of the court or jury before whom such deed was offered in evidence, that the lands were sold fairly, and without fraud, and the deed executed in good faith, and for a sufficient consideration; and with the consent of the persons reported as purchasers, the deed should have the same effect as though it had been made to the purchaser. This act, as is admitted, is unobjectionable, and cured this defect in the deed; and the case, therefore, is brought down to the simple question of fraud, actual or constructive, at the commissioners’ sale. The whole of the evidence to be found in the record, except what may be derived from the pleadings, bearing upon this question, consists in notes of the testimony taken by the counsel in two trials in the ejectment suits, the one in October, 1842, and the other, in April, 1844. These notes, being 547 517 SUPREME COURT. Kearney et al. v. Taylor et al. an abridgment of the testimony of the witnesses at these trials, are not always free from obscurity and doubt as to the meaning, and having been taken by the opposing counsel are, in some instances, inconsistent, and contradictory. But, upon an attentive examination of them, and making all due allowance for the circumstances under which they were taken, we are satisfied, the clear weight of the evidence is against the charge of actual fraud in the proceedings before the Orphans’ Court, or in the commissioners’ sale. An attempt was made on the argument to impeach the good faith of the report of the commissioners, which recommended a sale of the property instead of making partition. But it is not pretended, that the report contained any facts bearing upon this question which were untrue or had the effect to mislead the judgment of the court. The law authorizes a sale, when the land is so circumstanced,-that, in the opinion of the commissioners, partition cannot be made without great prejudice to the owners, and upon satisfactory proof of that fact being made to the court. The commissioners caused a survey, and map of the premises to be made which accompanied their report, and they express the opinion, after an examination of the same, the partition could not be made without injury to the owners. We may presume the judges had satisfactory evidence before them that this opinion was well founded before they granted the order of sale ; for, until some facts are shown going to impeach it, and with which the commissioners or parties interested were privy, such is the legal effect of the order. Besides, if this question could be regarded as an open one now, in the absence of any evidence going to impeach the *51 RI or(^ei> *°f the Orphans’ Court, the result would not J be changed; for every witness examined on the subject concurs in the opinion that the farm could not have been divided among the heirs without great prejudice to their interest. By the law of New Jersey, and the order of the court, the commissioners were required to give sixty days’ notice of the sale, by posting advertisements in five of the most public places, and publishing the same in one newspaper in the county. The commissioners, in conjunction with. Joseph Taylor, the guardian of the infant children, in addition to this notice, caused the sale to be published in two newspapers in the city of New York, and also published and circulated some one hundred handbills throughout the country. The greatest pains seems to have been taken to give the widest publicity of the day and place of sale, and to secure 548 DECEMBER TERM, 1853. 518 Kearney et al. v. Taylor et al. the fullest attendance of bidders. The farm was divided into fifteen allotments, and, according to the evidence, in the most judicious manner for the purposes of the sale, and which were struck off, not only at full prices, but at prices considerably exceeding the highest estimate of those well acquainted with the premises. On this subject the evidence is all one way. Every witness, to whom the question is put, affirms the fact. The highest estimate of value is $15,000. The sales amounted $19,941.19. The highest rent the farm had previously brought was $300 per annum, for most of the time it had been rented for $260. The soil was light, • sandy, and unproductive, and it is agreed, by all the witnesses who speak on the subject, that, independently of the improvements made since the sale, it would not, at the time they were speaking, sell for more, if for as much, as it had brought at the commissioners’ sale. This may account for the circumstance, that the bill of complaint is not filed to set aside the sale of the entire farm, but only as to that portion of it upon which the large and valuable improvements have been made, and the parts connected with it; as, independently of these, there can be no inducement to disturb the sale. Success would be rather a misfortune. The reason why the premises sold for some $5000 over the estimates and expectations of those best acquainted with them, was owing to the fact, that some enterprising men in the neighborhood foresaw that the Raritan Bay, at that point, was capable of being made a port of some business; and that, by an expenditure of sufficient capital to accomplish this, a town might be built up, which would afford a remuneration for the outlay, and the port afford convenience and facilities to the people of that neighborhood, as well as, probably, add something to the value of their property. The practicability of this scheme was the inducement held out by the commissioners and guardian of *the r*r-tq infants, and persons immediately interested in the prop- *-erty, to the purchasers; and, as is manifest upon the proof, furnished the leading motive for competition in the biddings at the sale. This enterprise, however, required a considerable outlay of capital in the construction of docks, or wharves, and in the erection of a warehouse, and other edifices, for the accommodation of the public, beyond the means of any individual in that somewhat retired locality, or of any one who ^pt be inclined to take an interest in it. To overcome this difficulty, those interested in the sale, and who were desirous the property should bring the highest price, exerted them- 549 519 SUPREME COURT. Kearney et al. v. Taylor et al. selves to form an association or company, composed of persons in the neighborhood who had a common and general interest in the object in view, viz., the building up of this little port and town, for the purpose of bidding in the property, and engaging in the enterprise. Holmes, the owner of one seventh, H. N. Kearney, one of the heirs, and Joseph Taylor, the guardian of the minors, were more or less active in getting up this association, and no doubt with the knowledge and approbation of the commissioners. There was, also, another circumstance that operated in the formation of this company. A little port and town had sprung up at a neighboring point on the bay called Middletown point; and it was given out that the people of this town had associated to bid off the site of this new one at the sale, in contemplation and with a view to prevent a rival place of business in that vicinity. Under these circumstances, the company in question was formed, and bid at the sale in competition with the Middletown point association; and, being the highest bidders, the property was struck off to them. There are some cases deriving their principles from the severe doctrines of Bexwell v. Christie, Cowp., 396, and Howard v. Castle, 6 T. R., 642, to be found in books of high authority in this country, that would carry us the length of avoiding this sale, simply on the ground of this association having been formed for the purpose of bidding off the premises, for the reason that all such associations tend to prevent competition, and thereby to a sacrifice of the property. 3 Johns. (N. Y.) Cas., 29; 6 Johns. (N. Y.), 194; 8 Id., 444; 13 Id., 112; 2 Ohio, 505; 5 Halst. (N. J.), 87; 2 Kent, 539; 1 Story Eq. Jur., § 293. Later cases, however, have qualified this doctrine, by taking a more practical view of the subject and principles involved, and have placed it upon ground more advantageous to all persons interested in the property, while at the same time affording all proper protection against combinations to prevent competition. 2 Dev. (N. C.), 126; 3 Mete. (Mass.), 384; 25 Me., 140; 2 Const. (S. C.), 821; 3 Ves., 625; 12 Id., 477; 11 Serg. & R. (Pa.), 86. *^901 *s t'rue that in every association formed to bid 1 at the sale, and who appoint one of their number to bid in behalf of the company, there is an agreement, express or implied, that no other member will participate in the bidding; and hence, in one sense, it may be said to have the effect to prevent competition. But it by no means necessarily follows that if the association had not been formed, and eac member left to bid on his own account, that the competition a 550 DECEMBER TERM, 1853. 520 Kearney et al. v. Taylor et al. the sale would be as strong and efficient as it would by reason of the joint bid for the benefit and upon the responsibility of all. The property at stake might be beyond the means of the individual, or might absorb more of them than he would desire to invest in the article, or be of a description that a mere capitalist, without practical men as associates, would not wish to encumber himself with. Much of the property of the country is in the hands of incorporated or joint-stock companies; the business in which they are engaged being of a magnitude requiring an outlay of capital that can be met only by associated wealth. Railroads, canals, ship channels, manufacturing establishments, the erection of towns, and improvement of harbors, are but a few of the instances of private enterprise illustrating the truth of our remark. It is apparent that if, for any cause, any one of these or of similar masses of property, should be brought to the stake, competition at the sales could be maintained only by bidders representing similar companies, or associations of individuals of competent means. Property of this description cannot be divided, or separated into fragments and parcels, so as to bring the sale within the means of individual bidders. The value consists in its entirety, and in the use of it for the purposes of its original erection; and the capital necessary for its successful enjoyment must be equal not only to purchase the structures, establishments, or works, but sufficient to employ them for the uses and purposes for which they were originally designed. These observations are sufficient to show that the doctrine which would prohibit associations of individuals to bid at the legal public sales of property, as preventing competition, however specious in theory, is too narrow and limited for the practical business of life, and would oftentimes lead inevitably to the evil consequences it was intended to avoid. Instead of encouraging competition, it would destroy it. And sales, in many instances, could be effected only after a sacrifice of the value, until reduced within the reach of the means of the individual bidders. t We must, therefore, look beyond the mere fact of an association of persons formed for the purpose of bidding at this sale, as it may be not only unobjectionable, but oftentimes meritorious, if not necessary, and examine into the [-*591 object and purposes of it; and if, upon such examina- *-tion, it is found, that the object and purpose are, not to prevent competition, but to enable, or as an inducement to the persons composing it, to participate in the biddings, the sale should be upheld—otherwise if for the purpose of shutting out com-551 521 SUPREME COURT. Kearney et al. v. Taylor et al. petition, and depressing the sale, so as to obtain the property at a sacrifice. Each case must depend upon its own circumstances; the courts are quite competent to inquire into them, and to ascertain and determine the true character of each. Applying these principles to the sale before us, it is quite clear, upon the evidence, that it should be maintained. The leading motive of the association, and purchase, was the construction of a little port and town upon the bay in their neighborhood, which, it was believed, besides the convenience afforded to their business transactions, would tend to enhance the value of the property in the vicinity. The association was composed, chiefly, of the farmers in the neighborhood, *who had not the means individually to meet the expenses of the enterprise, as the necessary outlay, to afford any chance of success, would be considerable. Hence the agreement to join in the purchase and in the expense. From ten to twelve thousand dollars were, in point of fact, laid out by the company at an early day, in the construction of a dock, warehouse, and tavern-house, with a view to the encouragement of the settlement of the town. The members composing it did not regard the purchase as a speculation of any great value at the time, as three of them sold out their interest soon afterwards at an advance only of from twenty-five to forty dollars each, and others withdrew from it. Holmes, one of the most active in getting it up, sold his interest for $25, and H. N. Kearney, one of the heirs, his, for $40. And, as it appears from the evidence, none of the parties concerned in the purchase, and in the building up of the town, have made profits of any account out of the enterprise. It has been, as a whole, rather an unfortunate concern, aside from the costs of this litigation, and the chances of losing the town itself, with all its erections and improvements, as the final result of it. The only fortunate parties concerned, are the heirs, who have realized a very large price for their property—a price which, it is admitted upon the evidence, it would not sell for at the present time, aside from the new and expensive improvements. They had rented ft, for a series of years, at $260 a year. The proceeds of the sale, at interest, produces nearly $1400 per annum. Each heir had been in the receipt of less than $40 a year, as his or her share of the rent since *,991 the sale, nearly *$200 each, thus receiving an annual -* income equalling almost, if not quite, the net en ire income of the seven. 552 DECEMBER TERM, 1853. 522 Kearney et al. v, Taylor et al. We are satisfied that no actual fraud has been shown in the case, and that the sale cannot be disturbed on this ground. Then, is the sale void, and liable to be set aside on the ground of constructive fraud? It is said that the commissioners, and guardian of the minor children, were interested in it, and that from the relation in which they stood to the property, and to the heirs, this interest infected the purchase with illegality as matter of law, so as to compel a court of equity to set it aside. Admitting the facts to be true, the conclusion is not denied. But the answer is, the proofs fail to make out the allegation. Taylor, the guardian, and two of the commissioners, James Hopping and Leonard Walling, took an interest in the company some three months and more after the sale, namely, in the February following. Taylor bought out the interest of Holmes, for which he gave him an advance of forty dollars. Leonard Walling took the interest of Stevens, and James Hopping of another of the members, at the same time. The company were then about commencing the improvements with a view to the laying out of the town and construction of the dock or wharf. This is the first time these persons are spoken of in the evidence as having any interest in the concern, and these are the circumstances under which it was taken. The three died some years before the institution of this or of the ejectment suits, and we have not, therefore, the benefit of their explanation. Taylor, the guardian, died in 1836, and Hopping and Walling, the two commissioners, a year-or two later. Edward Taylor, the only surviving commissioner, was examined as a witness in the ejectment suit, and expresses his confident belief that neither of these persons had any interest in the purchase at the time of the sale, and has again affirmed the same in his answer to this bill. The fact is denied in the answers of all the defendants; and there is not only no proof to contradict it, but affirmative evidence, as we have seen, sustaining the answers in this respect. Doubtless, if these persons were living, and we could have had the benefit of their own account of the matter, the explanation would have been more full and satisfactory. But the circumstance should not operate to the prejudice of the defendants. The delay in the commencement of the litigation and in the impeachment of the conduct of three of the principal parties to the transaction, until after their decease, is alone attributable to the complainants. It would be unjust to indulge in presumptions against the fairness of their conduct under such circumstances. It has been said, also, that inasmuch as the trust imposed 553 522 SUPREME COURT. Kearney et al. v. Taylor et al. uPon *these commissioners had not expired at the time -J they became interested in the company in February, 1830, even admitting their interest then commenced, the case is still within the principle, forbidding the trustee to purchase. The one half of the purchase-money was to be received from the purchasers on the first of April thereafter; and the security to be taken for the remainder. But, we think this conclusion would carry the application of the principle beyond the reason upon which it is founded. The only consequence of the interest taken in the purchase by the commissioners at this period was to subject themselves personally to the first payment of the purchase-money, which we do not see could operate prejudicially to the heirs. It is also said that Primrose Hopping, the auctioneer at the sale, was interested in the company, and hence a purchaser, and, that for this reason the sale should be set aside. We are free to admit, if it clearly appeared that he was one of the association, who bid off the property at the time of the sale, there would be very great difficulty in upholding it, even in the absence of any actual fraud in the case. The reasons for this conclusion are too obvious to require explanation. We have accordingly looked with some care and interest into the record, for the purpose of ascertaining whether this allegation is well founded, and although we regard this as the most doubtful and unsatisfactory portion of the defence, and one upon which different minds might arrive at different results, in this very complicated and confused mass of pleadings and of proofs, yet, the inclination of our mind after the most attentive examination is, that he was not a member of the association, and had no interest in it at the time the sale took place. Primrose himself was a witness in the ejectment suits and denies his interest, and this is substantially confirmed by Holmes, the most active man in getting up the company. Some of the answers admit, upon information and belief, others more directly, while some deny, that Primrose was a member of the company. The truth is, the association was got up suddenly by a mere verbal understanding at the time, and no one seems to have known with any certainty the exact number or persons comprising it. Hence scarcely any two of the defendants in their answers, or witnesses agree, as to the individuals engaged in it. . Mr. Lippincott, who appears to have been one of the most intel-ligent and responsible members, says, in his answer, that the particular persons concerned in it were not finally settled upon or fixed until about the time the first payment of the purchase-money in April; and this is the first time he men- DECEMBER TERM, 1853. 523 Kearney et al. v. Taylor et al. tions Primrose as having become a member. As we haye already said, the evidence in the case consisting of the *notes of the opposite counsel in the ejectment suits, is very much abridged, and some parts of it of doubt- *-ful meaning, and frequently inconsistent and contradictory; but we think the fair construction and weight of it confirms the testimony of Primrose himself. It is very probable, and indeed is virtually admitted by himself, that he was aware at the time of the sale, he could have an interest in the company if he wished; and, if this was a case that fairly admitted the question of actual fraud to be raised, this expectation, or contemplation of a possible future interest, would be entitled to great weight. But, in the absence of actual fraud, and with the admitted fact, that the property was sold not only for a full, but, for a very large price, and which the heirs have received, and been in the enjoyment of for the l^st eight or ten years, we think it would be pressing the principle of constructive fraud to a refinement in its practical application, beyond the reason of it, as it certainly would be in utter subversion of the justice in the particular case, to concede to it the effect claimed. The conduct of the auctioneer is also impeached in respect to the biddings upon lot No. 8, one of the most valuable lying on the bay, and in striking it off to the bidder on behalf of this company. But nearly all the witnesses examined on this subject concur in disproving the charge. Taylor, the only surviving commissioner, and who has never had any interest in the premises in dispute, and was superintending the sale at the time, says the lot w*as cried audibly several times to get another bid after the bidding had ceased; and that, after it was thus cried, timely notice was given by the auctioneer, that if none other was made, it would be struck off. It is also said that, after bids had been made upon this lot the first day of the sale, the sale was stopped, and adjourned until the next day. But all the witnesses agree, that this was for the purpose of preventing a sacrifice of the property, and to secure greater competition. The bid was at twentyeight dollars per acre when the adjournment took place. The next day it sold for forty-three dollars per acre. Without pursuing the case further, we are satisfied that the decree below in favor of the defendants is right, and should be affirmed. Mr. Justice McLEAN, Mr. Justice WAYNE, and Mr. Justice CURTIS dissented. 555 524 SUPREME COURT. Delauriere v. Emison. ORDER. This cause came on to be heard on the transcript of the jisrnK-i record *from the Circuit Court of the United States -I for the District of New Jersey, and was argued by counsel. On consideration whereof, it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs. Auguste F. Delauriere, Plaintiff in Error, v. Thomas Emison. The several acts of Congress, passed in relation to claims to land in Missouri, under Spanish concessions, reserved such lands from sale from time to time. But there was an intermission of such legislation from the 29th of May, 1829, to the 9th of July, 1832; and, during this interval, lands so claimed were upon the footing of other public lands, as to sale, entry, and so forth. By an act of the 6th of March, 1820, (3 Stat, at L., 545,) Congress gave a certain amount of land to the State of Missouri, to be selected by the legislature thereof, on or before the 1st of January, 1825; and by another act, passed on the 3d of March, 1831, (4 Stat, at L., 492,) the legislature were authorized to sell this land. Before the 1st of January, 1825, the legislature selected certain lands, which were then claimed under Spanish concessions, and reserved from sale under the acts of Congress first mentioned. In November, 1831, the land so selected was sold by the legislature, in conformity with the act of Congress of the preceding March. This sale having been made in the interval between May, 1829, and July, 1832, conveyed a valid title, although the claimant to the same land was subsequently confirmed in his title by Congress, 1836. This case was brought up from the Supreme Court of the State of Missouri, by a writ of error issued under the 25th section of the judiciary act. It was an action of ejectment brought by the plaintiff in error, Delauriere, against Emison. Both parties claimed titles under acts of Congress. The case was carried to the Supreme Court of Missouri, where the decision was against Delauriere, and he sued out a writ of error to bring the question before this court. Delauriere claimed under a Spanish concession, granted bj Delassus, and subsequently confirmed by Congress ; and E™1" son, under an act of Congress granting certain land to Missouri, and sold by that .State. The history of the laws relating to the adjustment of land titles in Missouri is giy6*1 with great particularity in the report of the case of £ o 556 DECEMBER TERM, 1853. 525 Delauriere v. Emison. dard v. Chambers, 2 How., 285. The following is the history of the two titles in this case, as exhibited in the court below: Plaintiff’s Title. The plaintiff claimed title by virtue of a concession from Carlos Dehault Delassus, Lieutenant Governor of Upper *Louisiana, to Louis Labeaume and Charles Fremon Delauriere, for 10,000 arpens of land, at a place called L La Saline Ensanglantee (The Bloody Saline). The tract was surveyed by James Rankin, Deputy Surveyor, and certified by Antonio Soulard, Surveyor-General. Fremon Delauriere and his family resided upon the land, and made salt upon it in 1800, and for several years afterwards. The claim was filed with the Recorder of Land Titles, before the 1st July, 1808, and was reserved from sale by the acts of 3d March, 1811, and 17th February, 1818. It was confirmed to the claimants, or their legal representatives, by the act of the 4th July, 1836. Louis Labeaume conveyed his interest in the land to Fremon Delauriere, by a deed dated 15th July, 1806, and the present plaintiff purchased the entire interest of Fremon Delauriere at sheriff’s sale. Defendant's Title. The defendant set up a title derived from the United States, as follows: By the 6th section of an act of Congress, approved March 6,1820, entitled “ An act to authorize the people of Missouri Territory to form a constitution,” &c., it was enacted that certain propositions be, and the same thereby were offered to the convention of said Territory of Missouri, when formed, for their free acceptance or rejection, which, if accepted by the convention, should be obligatory upon the United States. Among said propositions was one, as follows, viz. “ That all salt-springs, not exceeding twelve in number, with six sections of land adjoining to each, shall be granted to said State, for the use of said State, the same to be selected by the legislature of said State, on or before the 1st day of January, in the year 1825; and the same, when so selected, to be used, under such terms, conditions, and regulations as the legislature of said State shall direct: Provided, That no salt-spring, the right whereof now is, or hereafter shall be, confirmed or adjudged to any individual or individuals, shall by this section be granted to said State. 557 526 SUPREME COURT. Delauriere v. Emison. And provided, also, “ That the legislature shall never sell or lease the same, at any one time, for a longer period than ten years, without the consent of Congress.” Story’s Laws, vol. 3,1762, (U. S. Stat, at L., vol. 3, p. 545). This, with all the other propositions, was duly accepted by said convention of Missouri, by an ordinance adopted July 19, 1820. Laws of Mo., (by Edwards,) vol. 1, p. 632. Six of said salt-springs, with the sections of land adjoining, were selected by the Legislature of Missouri, on or before the 12th day of January, 1822. The seventh, with the land adjoining, (six sections,) was selected December 14,1822, by said legislature, as appears by an act approved *that day. Laws of Missouri of -* 1822, p. 59; Edward’s edition, vol. 1, p. 83. Under this last act, and another approved the day next previous, commissioners were appointed for the purpose of selecting the remaining, with the six sections of land adjoining to each, to which the State was entitled under said act of Congress. Laws of Mo., (by Edwards,) vol. 1, p. 981. These acts made it the duty of the commissioners to select five springs and adjoining lands, and make their report to the legislature at the next session, to commence the third Monday of November, 1824. They also made it the duty of the commissioners to file with the register of the land office of the district, where any salt-spring might be selected, a notice of the same, and of the land adjoining each spring, describing as precisely as practicable the locality of the same. See § 4, Act December 13, 1822. The commissioners were required to meet in the town of Franklin on the first Monday in September, 1823, or as soon thereafter as might be, and from thence proceed to select the five salt-springs and land adjoining. Laws of Missouri, 1822, p. 57, Edward’s ed., vol. 1, p. 983. Said commissioners made the selections and reported to the next session of the legislature, as required, after which, but during that session, by an act approved January 14,1825, it was enacted as follows: “That the following salt-springs, with the lands adjoining to each, as hereinafter mentioned, are hereby declared to be selected and accepted for the use of this State, under the provisions of an act of the Congress of the United States, entitled ‘An act to authorize th© people of the Territory of Missouri to form a constitution, (giving the full title of the act,) approved the 6th day o March, in the year one thousand eight hundred and twenty, that is to say, ‘ First Section.’ ” Then follows, in regular order, an enumeration and description of the entire twe ve 558 DECEMBER TERM, 1853. 527 Delauriere v. Emison. springs and the lands adjoining each, which had been selected at various times, as before stated. The land in controversy in this suit, is a part of that selected through the commissioners appointed under said acts of 1822. By an act of the Legislature of Missouri, approved January 15, 1831, entitled “ An act to provide for the sale of the saline lands,” it was enacted, so soon as Congress should raise the restriction thereon, and assent to the sale for the benefit of the State, the twelve salt-springs, together with six sections of land attached thereto, obtained from the United States for the benefit of the State, the whole of the said lands should be offered for sale in a manner particularly described in said act. Laws of Missouri, (by Edwards,) vol. 2, p. 179. *By the 8th section of an act of Congress, approved r*rno March 3, 1831, entitled “An act to create the office of *-surveyor of public lands for the State of Louisiana,” it was enacted that “the legislature of said State of Missouri shall be, and is hereby, authorized to sell and convey in fee-simple all or any part of the salt-springs, not exceeding twelve in number, and six sections of land adjoining to each, granted to said State, by the United States, for the use thereof, and selected by the legislature of said State on or before the 1st day of January, 1825.” Story, Laws, vol. 4, 2259; Stat, at L., vol. 4, p. 493, 494. On the 29th day of November, 1831, the land in controversy was, in the mode prescribed by said act of the legislature, of January 15,1831, sold to James Emison, under whom the defendant holds, and patents therefor, from the State of Missouri, dated April 26, 1832, were duly executed to said Emison. The plaintiff asked for the following instructions, which the court refused to give, and to which refusal the plaintiff excepted: 1st. That if the land in controversy had been, before the 20th day of December, 1803, conceded by the Spanish government to Fremon Delauriere and Louis Labeaume, and that said land had been surveyed before the 10th day of March, 1804, and that said Delauriere and Labeaume, or their legal representatives, had filed with the Recorder of Land Titles, prior to 1st of July, 1808, notice of said claims; then said claim was reserved, and could not be lawfully selected by the State of Missouri, under provisions of the act of Congress of the 6th March, 1820, provided said claim of Fremon Delauriere and Louis Labeaume has since been confirmed. 2d. That, by the act of Congress of the 6th of March, 1820, the legislature of Missouri could not lawfully select any land 559 528 SUPREME COURT. Delauriere v. Emison. which had been, or was thereafter, confirmed or adjudged to any individual or individuals. 3d. That, unless the legislature of the State of Missouri made its selection of the land in question, on or before the 1st of January, 1825, it was illegal, and is not a valid title against a confirmation under the act of the 4th of July, 1836. 4th. That the act of Congress of the 3d March, 1831, conveys no title in any lands to the State of Missouri; said act only authorizes said States to sell, absolutely, lands already granted by the act of the 6th of March, 1820. The defendant asked, and the court gave, the following instructions to the jury, to the giving of which the plaintiff excepted. The defendant, by his counsel, first moves the court to instruct the jury: 1st. That if they believe, from the evidence in this cause, that the State of Missouri selected the land, on or before the *5291 day *°f January, 1825, under the 2d clause of the J 6th section of an act of the Congress of the United States, entitled “ An act to authorize the people of the Missouri Territory to form a constitution, &c., approved the 6th of March, 1820 ”; and that said State of Missouri sold and patented the said land in controversy in fee-simple to the said defendant, after the 3d day of March, 1831, and before the 9th day of July, 1832, they should find for the defendant. 2d. That, if they shall believe from the evidence, that said land was selected by the State of Missouri, under said act, on or before the 1st of January, 1825, and that said State afterwards, and between the 3d of March, 1831, and the 9th of July, 1832, sold and patented the said land to the defendant, they ought to find for the defendant, although they may believe the said land was confirmed to the plaintiff’s landlord by the act of July 4, 1836. The jury found a verdict for the defendant, which the court refused to set aside, to which refusal the plaintiff excepted. The judgment of the Circuit Court was affirmed by the Supreme Court of the State of Missouri, and the case was removed thence to this court by writ of error. It was submitted upon a printed brief by Mr. Wells..for the plaintiff in error, and argued by Mr. Geyer, for the defendan in error. Mr. Wells, for the plaintiff in error, made the following points: . j 1. The plaintiff in error says that the Circuit Court errea in refusing the first instruction asked by him. 560 DECEMBER TERM, 1853. 529 Delauriere v. Emison. That instruction asserts the principle, that if the land had been by the Spanish government granted to Labeaume and Delauriere prior to the 20th December, 1803, and surveyed prior to the 10th March, 1804, and a notice of the claim filed with the recorder of land titles on or before the 1st July, 1808, that it was reserved from sale and could not have been lawfully selected by the State under the act of 6th March, 1820. The first branch of the proposition is true beyond all doubt. That these circumstances would bring the claim within the provisions of the acts of 1811 and 1818, and entitle it to be reserved from sale, will not be controverted. The question is, if reserved, could the State lawfully select it under the act of March 6th, 1820. That claims of this description were protected by the treaty of 1803, has long since been settled by this court. See Delassus v. United States., 9 Pet., 130 ; and also 12 Pet., 410. And that the acts of 1811 and 1818 were intended to carry out this provision of the treaty is clear. When the act *of 6th March, 1820, passed, the act of 1818 was in full force. Could the act of 1820 have L operated to repeal the act of 1818 ? In the case of the United States v. Gear, 3 How., 131, this court says: “ The rule is, that a perpetual statute, (which all statutes are, unless limited to a particular time,) until repealed by an act professing to repeal it, or by a clause or section of another act bearing in terms upon the particular matter of the first act, notwithstanding an implication to the contrary may be raised by a general law which embraces the subject-matter, is considered to be still the law in force, as to the particulars of the subject-matter legislated upon—a power to sell all lands, given in a law, subsequent to another law expressly reserving lead-mine lands from sale, cannot be said to be a power to sell the reserved lands when they are not named, or to repeal the reservation.” In the present case there are two laws—the first a general one, reserving lands of this class from sale—the second a special one, not referring to the former, and not necessarily conflicting with it. Each can be enforced without affecting the other. In 6 Port. (Ala.), 231, the court remarks; “ The law never favors the repeal of a statute by implication, unless the repugnance be quite apparent.” In this case there is no repugnance whatever. The State might have selected its s|It-springs without interfering with private claims. The act 0 n 1$ reserved private claims “ until after the final decision oi Congress thereon.” This final decision was provided for y the act of 26th May, 1824, and that act repealed the reservation. The land in question, then, being reserved land when vol. xv.—36 561 530 SUPREME COURT. Delauriere v. Emison. the State appropriated it, the appropriation was unlawful: and, according to the doctrine of this court in the cases of Stoddart's Heirs v. Chambers, 2 How., 318, and of Bissell v. Penrose, in 8 Howard, the location was not protected by the 2d section of the act of 4th July, 1836. The doctrine of those decisions is, distinctly, that to save a location by virtue of the act of July 4,1836, it must have been made in conformity to law. 2d. The court erred in refusing to give the plaintiff’s second instruction. This instruction asserts that it was not lawful for the State to select any lands which had been or were thereafter confirmed to an individual. These are the terms of the proviso of the very act which made the grant to the State. The act of 1820 not only did not repeal the laws reserving private claims, but it in express terms protected those reservations from the operations of the act. If the act of 1820 had declared to the State of Missouri, that it should not appropriate Labeaume and Delauriere’s claim—that if it did select it, and the claim should ever thereafter be confirmed, that the State -* should get no title, the act could not have been more plain and explicit: “ Provided, that no salt-spring, the right whereof now is or hereafter shall be, confirmed or adjudged to any individual or individuals, shall, by this section, be granted to said State.” This is a part of the grant itself a part and parcel of the very act upon which the State claim is founded. Does it mean anything? Does it protect claims which have been confirmed ? It equally in its terms extends to those which might afterwards be confirmed! The language is the same as to both. If it has any effect at all, it must protect all private claims, whether confirmed before or after the act of 1820. I Cannot enforce this proposition by argument. It is a simple question, whether this proviso shall he held valid or void. The Circuit Court held that the grant was made good to the State by the 2d section of the act of 4th July, 1836. That decision is at open war with the decisions of this court already cited, in which it is distinctly held, that to bring a location within the saving of that section, it must have been made in conformity to law. So far from this location having been made in conformity to law, it was ma e in open and direct violation of an express and positive law. The State selects Fremon’s lick by name. _ . 3d. The court erred in refusing plaintiff’s third instruction. The law of 1820 required that the legislature of the State should make its selection on or before the 1st January, 1 • The third instruction asked the court to decide that, un es 562 DECEMBER TERM, 1853. 531 Delauriere v. Emison. the selection was made within this time, it was void as against the plaintiff’s confirmation. This the court refused to do. The rule for construing powers, whether derived from an act of the legislature or from a private instrument, is the same. They must be strictly construed. No further or greater power must be exercised than has been given. Any other principle of construction would render all limitations of power nugatory. To say that a grant of power to the State, to be exercised within a specified time, amounts to a grant to be exercised without limit of time, is repugnant to all ideas of limited powers. The Legislature of Missouri had full power to act up to the 1st January, 1825. After that time the power had ceased, any act done afterwards was wholly unauthorized and void. See 4 Pick. (Mass.), 45-47, 156; 6 T. R., 320; 2 Burr., 219. In the last case the court says: “ The proviso is a limitation of power, and amounts to a negation of all authority beyond its prescribed and clearly defined limits. It cannot be that the proviso is directory merely, for that would be to set at naught all the guards provided by the legislature against the abuse of authority conferred by the act.” *If, then, the selection was made after the power to r*KQQ make it had ceased, it was not made in conformity to *-law, and is therefore not protected by the 2d section of the act of the 4th July, 1836. But it is said that the approval of the selection by the Secretary of the Treasury cured all these defects in the State title. To this it may be answered, 1st, that the act of Congress gave to the Secretary no power whatever over the subject. His action in the matter was wholly unauthorized by law. 2d. His approval, even if he had the power to approve, came too late. It was made on the 22d August, 1837, after the confirmation of the plaintiff’s title; and it was obviously made to heal the defects in the title of the defendant. Its only effect is to render those defects the more conspicuous. . 4th. The Circuit Court erred in refusing the plaintiff’s 4th instruction. That instruction simply requested the court to decide that the act of the 3d March, 1831, conveyed no title to the State. It will be seen that the act of 1820, making the grant to the State, prohibited the State from selling the land, or leasing it for a longer period than ten years. The 8th section of he act of 3d March, 1831, (Land Laws, 491,) removes this restriction, and authorizes the State to sell, in fee-simple, the ands granted to the State, “ and selected by the legislature 0 said State on or before the 1st day of January, 1825,”— 563 532 SUPREME COURT. Delauriere v. Emison. another evidence that Congress did not regard that provision as nugatory, for the' power to sell, like the original grant, was confined to lands selected within the time prescribed. This is the whole scope of this act, and it would be a perversion of its meaning and design to attach to it any other. 5th. The Circuit Court erred in permitting the defendant to read from the journals of the Senate of Missouri a report of commissioners appointed under an act of the legislature of 1822, to make a selection of salt-springs for the use of the State. It was allowed to be read, for the purpose of showing that the selection by the State had been made within the prescribed time. It was illegal evidence, 1st, because the law required the legislature to make the selection, and that was a power which the legislature could not delegate to commissioners. The rule of law is the same when a power is conferred upon a legislative body, as if conferred on an individual person. The power conferred cannot be delegated. 2d. The report had no date, and therefore did not tend to show, even when they, the commissioners, made the selection. 3d. It was the journal of one branch of the legislature only, and could furnish no evidence of legislative action. 4th. It *5381 *was not an authentic copy of the original report. . The -I journals of the senate are only evidence of the action of the senate. But, 5th, the legislature did, by an act approved February 14,1825, make the selection of the land in question, and this was the best and only legal evidence of the action of that body. See Revised Laws of Missouri of 1825, vol. 2, pages 697 and 700. 6th. The court erred in refusing to grant a new trial. The new trial should have been granted because the action of court in refusing the plaintiff’s, and in giving the defendant s instructions, was contradictory. In refusing the plaintiff’s 3d instruction, the court decided that it was not material that the selection should have been made on or before the 1st January, 1825. In giving the defendant’s, it assumed that it was necessary. Again—the court, in giving the defendant s instructions, held that if the defendant obtained his title from the State, between the 3d of March, 1831, and the 9t July, 1832, it made his title good. Upon what principle this instruction is founded it is difficult to perceive. . The question here is not whether the defendant had obtained a S00 title from the State, but whether the State had any title o convey. If the State obtained a title under the act oil© » it is sufficient to defeat the plaintiff. But if the selec ion o the State was void, and the State got no title thereby, i cou 564 DECEMBER TERM, 1853. 533 Delauriere v. Emison. never, at any time, convey a good title to the defendant. What magic there was in the particular period that elapsed between these two acts, that enabled the State, when it had no title to convey a good one to the defendant, it would, I think, be difficult to show. It was decided by this court in Barry n. G-amble, that a patent issued to a tract of land after the reservation had been removed, was valid. But this was a patent emanating from the general government, in whom the title was. In this case the patent comes from the State, and it is the title of the State that is questioned. It is clearly a misapplication of the principle invoked, and in this the court erred. Mr. Greyer, for the defendant in error, contended, That the selection by the State of Missouri of the land in controversy, on or before the 16th day of January, 1825, and the sale and conveyance thereof by the said State, after the 3d day of March, 1831, and before the 9th day of July, 1832, vested in the purchaser a title valid against the United States, which has not been divested by the subsequent confirmation of a claim embracing the same land, by the act of 4th July, 1836, although the same may have been reserved from sale by the act of 3d March, 1811. 1st. The 2d clause of section 6, of the act of 6th March, 1820, *and the ordinance of the Convention of Mis- [-*^94 souri, of 19th July, 1820, operate as a grant to the L State of Missouri of the number of salt-springs and quantity of land therein mentioned, leaving the selection of the springs and land to the State legislature. No act of the Federal Government was necessary to locate or designate the granted lands, the selection by the legislature within the time prescribed, severed the land selected from the domain, and vested the title in the State of Missouri. 2d. The act of the 6th March, 1820, does not except from the grant to, or selection by the State, the lands reserved from sale by the act of 1811. By the terms of the grant, lands embraced by claims, of which notice had been filed, are subject to appropriation by the State, as well as those embraced by claims of which no notice had been filed, or to which there was no claim whatever. The reservation by the act of 1811, vested no title in any person; it suspended the authority of the executive officers to sell, but did not affect the power of Congress over the sub-565 534 SUPREME COURT. Delauriere v. Emison. ject; the land belonging to the domain, notwithstanding the reservation, and was subject to disposition by law. 3d. The confirmation of the claim embracing the land in controversy, after the selection by the State, and especially after the 3d March, 1831, neither vested a title in the claimant nor divested that of the State of Missouri or, her vendee. The first proviso excepts from the grant any salt-spring, the right whereof was, at the date of the act, or should be before the grant was completed by the selection, confirmed, or adjudged to an individual or individuals. It does not except the adjoining lands, nor does it contemplate that the selections shall be subject indefinitely to defeat by confirmations of claims, whether there had been a reservation of the land from sale or not. 4th. The act of Congress of 3d March, 1831, (Stat, at L., vol. 4, p. 494,) authorizing the State to sell and convey in fee-simple the salt-springs and lands granted by the act of 1820, and selected on or before the 1st January, 1825, is a confirmation of the selection made ; and the sale and conveyance by the State vested the title in the purchaser, even if the land was not subject to selection, by reason of the reservation from sale by the act of 3d March, 1811. The act authorizing the State to sell was passed, and the land in controversy sold and conveyed after the 26th of May, 1829, when the reservation ceased, and before it was revived by the act of 1832. The title of the defendant is therefore valid as against the confirmation. Stoddard n. Chambers, 2 How., 285 ; Midis v. Stoddard, 8 How., 345. *5351 *5th. The act 4th July, 1836, conferred no title to 1 the land in controversy as against the purchaser from the State of Missouri, by virtue of the act of Congress of 3d March, 1831, because the title of such purchaser was vested prior to the 9th day of July, 1832, and could not be divested by any subsequent act of Congress, and because the land in controversy had been located and appropriated by the State of Missouri, and surveyed and sold under and in conformitv with the laws of the United States. Any appropriation ot land in conformity with the law of the United States, is a location under a law of the United States, and, protected against a confirmation by the act of 1836. Les Bois n. Bram-mell, 4 How., 449, 456. Mr. Justice McLEAN delivered the opinion of the court. This case is before us on a writ of error to the Supreme Court of Missouri, under the 25th section of the judiciary ac . 566 DECEMBER TERM, 1853. 535 Delauriere v. Emison. The plaintiff claims title by a Spanish concession to Louis Labeaume and Charles Fremon Delauriere, for ten thousand arpens of land, at a place called La Saline Ensanglantee. The tract was surveyed and regularly certified by the Surveyor-General. The plaintiff resided upon the land in 1800, and for several years afterwards. The claim was filed with the Recorder of Land Titles before the 1st of July, 1808, and was reserved from sale by the acts of 3d March, 1811, and the 17th February, 1818. It was confirmed to the claimants, or their legal representatives, by the act of the 4th of July, 1836. Louis Labeaume conveyed his interest in the land, to Fremon Delauriere, by a deed dated 15th July, 1806; and the present plaintiff purchased the entire tract of Fremon Delauriere at sheriff’s sale. The defendant claims under an adverse title, derived from the State of Missouri. By an act of Congress, approved the 6th of March, 1820, entitled “ An act to authorize the people of Missouri Territory to form a State Government, and for its admission into the Union,” it was among other things provided—that all salt-springs not exceeding twelve in number, with six sections of land adjoining to each, shall be granted to the said State, the same to be selected by the legislature of the State, on or before the first day of January, 1825; and the same so selected, to be used under such terms, conditions, and regulations, as the legislature of such State shall direct, &c. By another act of Congress, approved 3d March, 1831, the Legislature of the State of Missouri were authorized to sell, in fee-simple, the lands granted by the above act. Under this act the State sold the land in controversy to the defendant. The questions arise under instructions prayed for by the *plaintiff, and refused by the court; and also the instruc-tion given on the prayer of the defendant. *- “1. That if the land in controversy had been, before the 20th day of December, 1803, conceded by the Spanish Government to Fremon Delauriere and Louis Labeaume, and that said land had been surveyed before the 10th March, 1804, and that said Delauriere and Lebeaume, or their legal representatives, had filed with the Recorder of Land Titles, prior to the 1st July, 1808, notice of said claim, then said claim was reserved, and could not lawfully be selected by the State of Missouri under the provisions of the act of Congress of die 6th March, 1820, provided said claim of Fremon and Labeaume has since been confirmed. u 2. That by the act of Congress of the 6th March, 1820, the Legislature of Missouri could not lawfully select any land 567 536 SUPREME COURT. Delauriere v. Emison. which had been, .or was thereafter, confirmed or adjudged to an individual or individuals. “3. That unless the Legislature of the State of Missouri made its selection of the land in question on or before the 1st of January, 1825, it was illegal, and is not a valid title against a confirmation under the act of the 4th July, 1836. “4. The act of Congress of the 3d of March, 1831, conveys no title to any lands to the State of Missouri. Said act only authorizes the State to sell, absolutely, lands already granted by the act of the 6th of March, 1820.” “The defendant, by his counsel, moves the court to instruct the jury that if they believe, from the evidence in this cause, that the State of Missouri selected the land in controversy on or before the first day of January, 1825, under the second clause of the 6th section of an act of the Congress of the United States, entitled ‘ An act to authorize the people of the Missouri Territory to form a Constitution,’ &c., approved 6th March, 1820, and that said State of Missouri sold and patented the said land in controversy, in fee-simple, to the said defendant, after the 3d day of March, 1831, and before the 9th day of July, 1832, they should find for the defendant. That if they shall believe, from the evidence, that said land was selected by the State under said act on or before the first day of January, 1825, and that said State afterwards, and between the 3d of March, 1831, and the 9th July, 1832, sold and patented the said land to the defendant, although they may believe the said land was confirmed to the plaintiffs’ landlord by the act of the 4th July, 1836.” And this instruction was given by the court. We think the court did not err in refusing the instructions prayed by the plaintiff, nor in giving that, which was asked by the defendant. *Notice of the plaintiff’s claim was, on the 30th of -I June, 1808, given to the Recorder of Land Titles for the Territory of Louisiana, and the grant, survey, and title papers, were filed with the recorder and duly recorded. On the 27th of December, 1811, the claim was taken up for consideration by the board of commissioners for the adjustment of land titles, under the act of March 2d, 1805, and rejected. The claim was again presented to the board of commissioners, organized in pursuance of the act of Congress ot July 9th, 1832; and afterwards, on the 13th of November, 1833, the board were unanimously of the opinion, that the claim ought to be confirmed to the said Charles F. Delauriere 568 DECEMBER TERM, 1853. 537 Delauriere v. Emison. and L. Labeaume, or their legal representatives, according to the concession. This proceeding of the commissioners was reported to the Commissioner of the General Land Office ; and on the 18th of January, 1834, it was communicated to Congress; and the decision was confirmed by the act of Congress of July 4th, 1836. By the act of 2d March, 1805, all persons claiming land under the French or Spanish government, were required to file their claim in the land office—and by the act of 3d March, 1807, the time was extended to 1st July, 1808. By the act of 15th February, 1811, the President was authorized to have the lands which had been surveyed in Louisiana, offered for sale—reserving those tracts for which claims had been filed in the land office, as above required, till after the decision of Congress thereon. The same reservation was contained in the act of the 17th February, 1818. The act of 26th of May, 1824, authorized claimants, under French or Spanish grants, concessions, warrants, or orders of survey,” in Missouri, issued before the 10th of March, 1804, to file their petitions in the district courts of the United States, for the confirmation of their claims. And every claimant was declared by the same act to be barred, who did not file his petition in two years. By the act of the 24th May, 1828, the time for filing petitions was extended to the 26th of May, 1829. On the 9th of July, 1832, an act was passed, “for the final adjustment of land titles in Missouri, which provided that the Recorder of Land Titles, with two commissioners, to be appointed, should examine all the unconfirmed claims to land in Missouri, which had heretofore been filed in the office of the said recorder, according to law, prior to the 10th of March, 1804. On the 29th of November, 1831, the land in controversy was, in the mode prescribed by act of the Legislature of Missouri, of the 15th January, 1831, sold to Emison, under whom the defendant holds, and a patent was duly issued by the State. The reservation under the act of 1811, was extended by the *act of the 17th of February, 1818, to the act of 26th of May, 1824; which authorized claimants to file *-a petition in the district court—and this right was limited to two years; it was afterwards extended to the 26th of May, 1829. The reservation then expired, or in other words, the bar to the right was interposed. On the 9th of July, 1832, a further provision was made for the adjustment of such claims. But after the interposition of the bar, and before 569 538 SUPREME COURT. Adams v. Otterback. the passage of the act of 1832, the land in controversy was purchased from the State of Missouri, and a patent obtained. During this period there was no protection to the inchoate right of the original claimants. When the State of Missouri selected the land it was reserved from sale, but that impediment was removed, when the limitation expired in 1829. The confirmation of the claim by Congress, in 1836, had relation back to the origin of the title; but it could not impair rights which had accrued, when the land was unprotected by a reservation from sale ; and when, in fact, the right of the claimant was barred. This point was settled in the cases of Stoddard v. Chambers, 2 How., 285; and of Mills v. Stoddard, 8 Id., 345. As the instructions prayed by the plaintiff in the State court were in conflict with the law as above stated, they were properly overruled; and as the instruction given, at the instance of the defendant, was substantially in accordance with the above views, it was correct. The adjustment of the State court is, therefore, affirmed with costs. ORDER. This cause came on to be heard on the transcript of the record from the Supreme Court of the State of Missouri, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Supreme Court in this cause be, and the same is hereby, affirmed, with costs. *James Adams, Plaintiff in Error, v. Philip J Otterback. Where a note was given in the District of Columbia on the 11th of March, payable sixty days after date, and notice of its non-payment was given to the indorser on the 15th of May, (being Monday,) the notice was not in time. Although evidence was given that since 1846, the bank which was the holder of the note, had changed the preexisting custom, and had held the paper until the fourth day of grace, giving notice to the indorser on Monday, when the note fell due on Sunday. This was not sufficient to establish an usage. An usage, to be binding, must be general, as to place, and not confined to a particular bank, and, in order to be obligatory must have been acquiesced in, and become notorious. This case was brought up by writ of error from the Circuit 570 DECEMBER TERM, 1853. 539 Adams v. Otterback. Court of the United States for the District of Columbia, holden in and for the county of Washington. It was an action of assumpsit brought by Adams, the plaintiff in error, upon a promissory note drawn by Haw, Yellott & Company, in favor of Philip Otterback, the defendant in error, and discounted by the Bank of Washington. The proceeds of the discounted note were paid by the bank upon the check of Otterback. After the note had been protested for non-payment, and notice of protest had been given to the indorser, it was assigned to Adams, the plaintiff in error. On the trial of the cause the plaintiff gave in evidence the note, the handwriting of drawers and indorser being admitted, and proved that the note was discounted on the 11th of March, 1848, the day of its date, and the proceeds paid on defendant’s check; that the note (which was payable at sixty days) was unpaid at maturity, and was delivered to George Sweeny, a notary, on Monday, the 15th day of May, 1848, after 3 o’clock, who on that day demanded payment, which was refused, and thereupon, on the same day, he delivered a notice for the indorser at his dwelling. The plaintiff also gave in evidence by the teller and bookkeeper of the bank, that after the decision of the case of Cook-endorfer v. Preston, and about two years prior to the date of the note in controversy, the bank changed the custom which had previously prevailed in regard to the demand and protest of negotiable discounted notes held by the bank, and that in all cases of discount they had up to that time held the paper until the fourth day of grace ; and by the change, if that fourth day of grace happened to fall on Sunday, it became the custom of the bank to retain them till Monday, and on that day deliver the same to the notary to demand payment and give notice. And on cross-examination it appeared that only four instances of practice under this custom were shown. *Upon this state of facts the court instructed the jury that if they should “find the whole evidence *-aforesaid to be true,” yet the plaintiff has not thereby shown that he has used due diligence in demanding payment, and giving notice of the non-payment of said note, and is not entitled 1,0 recover in this action. To this instruction the plaintiff excepted, and the case was now to be argued upon it. It was argued by Mr. Lawrence, for the plaintiff in error, and Mr. Bradley, for the defendant in error. Mr. Lawrence, for the plaintiff in error, contended that the 571 '540 SUPREME COURT. Adams v. Otterback. instruction was erroneous. It is difficult to understand the ground upon which the instruction was bottomed; whether, in the opinion of the court, the plaintiff could not recover admitting the custom to be proved, because the plaintiffs had not conformed to it; or whether, in the opinion of the court, the custom itself was not, as a fact, proved by the evidence ; or whether, lastly, it was not legally competent for the bank to change an ancient custom and introduce a new one. Upon one or other of these grounds the instruction must have been given, and upon either of them it was erroneous. 1. That the court may instruct the jury that the plaintiff cannot recover against the indorser of a promissory note if they believe the evidence, and that evidence proves a particular custom, and at the same time proves that the plaintiff did not conform to that custom, we are not called upon to deny, because such is not the case here. The evidence clearly proves that the demand of payment and the notice of protest were in conformity with the altered usage, if that altered usage is itself established. 2. If the meaning of the instruction was that the custom itself, as alleged, was not proved by the evidence in the cause, then it was erroneous, because it was an invasion of the province of the jury. There was certainly evidence tending to prove that the old custom had been changed, and the new custom introduced. Whether that evidence did prove it, was for the jury to determine. It was not one of those cases in which a demurrer to evidence would lie, upon the ground that the quality of the evidence was not such as is required by law, whatever might be its tendency. For in all the cases in this court, it has been held that it was competent to prove the custom of a bank by parol evidence. Renner v. Bank of Columbia, 9 Wheat., 587, 588 ; Mills v. Bank of United States, 11 Wheat., 431. Nor was the instruction proper upon the ground that the *5411 *number instances which had occurred within the -1 two years since the adoption of the new custom were not sufficient in number to prove a new custom, or to bring it to the knowledge of the defendant. Because if it be admitted that a custom may be changed, there must be a time when the change must commence, and there must be a first and single instance of the new custom ; and in the case ot Mills n. Bank of United States, and Bank of Washington v. Triplett and Neale, 1 Pet., 25, this court has already decided that it is not necessary that a custom should have actually been brought to the notice of an indorser. But on the con- 572 DECEMBER TERM, 1853. 541 Adams v. Otterback. trary, it is the duty of the indorser to acquaint himself, by inquiry, with the custom of the bank with which he deals. 3. It was competent for the bank to change its custom whenever in its discretion the interests of the bank should require it. There is no inexorable rule of law which binds down such an institution to one eternal routine of business, notwithstanding the changing interests of commerce may demand a modification. On the contrary, this court has held that which the sound principles of commercial business dictate, viz., that a bank may change its custom, and may prove that change in the same manner as they may prove the original custom. Cookendorfer v. Preston, 4 How., 326. The plaintiff in error would therefore submit, that if it is competent for a bank to change its usages ; if there is evidence in the case tending to prove such change; if there is evidence in the case tending to show that the bank had made demand and given notice in accordance with such altered usage, then the instruction, that if the jury find the whole evidence of the plaintiff to be true, yet he was not entitled to recover, was erroneous. Mr. Bradley, for defendant in error. This case turns upon the right of a bank, without notice, public or otherwise, given to the persons dealing with it in the way of discounting negotiable paper, to change the usage and custom of the bank in respect to the demand of payment of the notes, and giving notice to the indorsers, so as to bind the indorsers by such change. In other words, to maintain the plaintiff’s case, it must appear that when a man procures a note to be discounted by a bank, by that act alone, the usage and custom of that bank are incorporated into the contract of discount, and become a constituent part of that contract between the parties to that note and the bank. And this is the case, although the parties never before had dealt with that bank; the paper was not made payable or negotiable at the bank; the usage and custom of that bank differed, in that respect, from those of all the other *banks in the same community; and this particular usage and *-custom had been introduced by that bank within a short period, without notice, public or otherwise, and was unknown to the parties to the note; and before such change, that bank had conformed to the usage and custom of the other banks in that community ; or, in other words still, a party applying to a bank to discount for him negotiable paper, is bound to inquire, it he does not know, the special usage of that particular bank in respect to negotiable paper discounted by it, at the 573 542 SUPREME COURT. Adams v. Otterback. time of such discount, and he is not to rely either on the known and established usage and custom of all the other banks in the same community, or upon the particular usage of that particular bank up to the day before such discount, but he must ascertain if any change has been made in such usage, as he will be bound by it whether he knows it or not. It is conceded by the defendant in error— That a custom or usage of a bank, brought home to the knowledge of a person dealing with the bank, in respect to the discount of negotiable paper, enters into the contract, becomes a constituent part of it, and must have its due weight in the exposition of it. Bank of Columbia v. Magruder, 6 Har. & J., 180. This knowledge may be proved directly, or may be implied from the dealings of the parties. It may be inferred from persons dealing with the bank, which has a well-established usage. Lincoln f Kennebec Bank v. Page, 9 Mass., 155 ; Same v. Hammatt, Id., 159; Smith v. Whiting, 12 Mass., 8. From the parties being accustomed to transact business of that kind with the bank. Blanchard v. Hilliard, 11 Mass., 88; Jones v. Pales, 4 Mass., 252 ; Widgery v. Munroe, 6 Mass., 450; Bank of Columbia v. Fitzhugh, 1 Har. & G. (Md.), 239; Hartford Bank v. Stedman, 3 Conn., 489; City Bank v. Cutter, 3 Pick. (Mass.), 414; Bank of Columbia v. Magruder, 6 Har. & J. (Md.), 172 ; Whitwell v. Johnson, 17 Mass., 452.. From the negotiable paper being made payable or negotiable at the particular bank. In addition to the cases cited, see also Yeaton v. The Bank of Alexandria, 5 Cranch, 52; Renner v. The Bank of Columbia, 9 Wheat., 585; Brent's Executor v. The Bank of the Metropolis, 1 Pet., 93; Mills v. Bank of United States, 11 Wheat., 431. But it is contended by the defendant: I. In all cases the usage to bind the parties must be a known, established, and invariable usage. See all the cases cited. II. It is not strictly a rule of judicial decision, but is compounded of law and fact, and is admissible in evidence to show the contract of the parties, and their assent to such usage. See *11 Mass., 88; 4 Mass., 252; 6 Mass., 450 , 1 Har. & G. (Md.), 239; 3 Conn., 489; and the cases in this court above cited, and those cited by plaintiff in erroi. III. A usage may be changed; Cookendorf er v. Preston,,4 How., 317. But the knowledge of that change must be brought home to the party to be affected by it. This may be in any of the modes already mentioned, or in some other 574 DECEMBER TERM, 1853. 543 Adams v. Otterback. mode from which it may justly be inferred that the party knew or ought to have known it. IV. In this case it is admitted that, by the usage of the bank, existing up to the spring of 1846, the demand and notice set up in this action would have been insufficient. It is admitted that no notice, public or otherwise, was given of the alleged change; it is not shown how the change was made ;• and there are but three instances of practice under the alleged change, all of which were in the spring of 1848. It is not pretended that defendant ever had any dealings with the bank prior to this time; the note was not made payable or negotiable at the bank; and the court is now asked to go, for the first time, the length of saying that every man to whose credit a note is discounted by a bank, is bound by all the usages of that bank in regard to demand and notice of that note, although he has never dealt with the bank before, and the note was not made negotiable or payable there, and there is no fact or circumstance in the case from which it can legally be inferred that he knew the said usage. It will not do to say he received the avails. If the law binds him it binds all the intermediate parties between him and the maker. Nor does it follow, that because the avails ostensibly went to his credit, that he derived any benefit from them. He was the payee, and last indorser. They must have gone to his credit. But the money was on the same day paid to bearer on his check. It may well be inferred that it was paid to the makers; that the note was made for their benefit, to be discounted wherever they could get it done, having no reference to this particular bank, or it would have been made payable and negotiable there. The check also is for “proceeds of” this note, discounted this day for $800, the usual form in which the proceeds of a discounted note would pass to the credit of the maker. Nor will it do to say that it was discounted on his credit. He then stood in the condition of a surety. As surety he is not to be bound beyond the terms of his contract. His contract was made with reference to the existing and well-known commercial usage, and the banking usage of the community in which he lived. It is a general note, so to speak—not a note payable or negotiable at any particular bank, or having any reference to *any particular or special usage. His 44 contract bound him to the general usage on its face, and as surety he is entitled to all the benefits of that general usage. It was, that if the maker did not pay at maturity he would, provided demand was made on the maker, and notice given to him as indorser, according to the general usage. 575 544 SUPREME COURT. Adams v. Otterback. The plaintiff sets up another contract, not apparent on the face of the paper, nor to be inferred from any dealings, nor exhibited in any knowledge brought home expressly or by any recognized implication, to the defendant. It is submitted that the Circuit Court was right in giving the instruction. Mr. Justice McLEAN delivered the opinion of the Court. This was a writ of error to the Circuit Court of the United States for the District of Columbia. This action was brought on a promissory note dated the 11th March, 1848, given by George W. Yellett, Henry Haw, and William B. Scott, in the name of Haw, Yellett & Co., in which they promised to pay to Philip Otterback, Esquire, or order, sixty days after date, the sum of eight hundred dollars, for value received ; which note, before it became due, was assigned to the plaintiff. The general issue was pleaded, and the cause was tried by a jury. The note was discounted by the Bank of Washington, the proceeds of which were drawn by the defendant. The following facts appear in the bill of exceptions. The note was unpaid at maturity, and on Monday, the 15th of May, after three o’clock of that day, was delivered by the bank to George Sweeney, the notary employed by said bank to demand payment thereof, and for protest if not paid. The notary stated that he demanded payment at the United States Hotel, and was answered, “ neither of the proprietors are within, and it cannot be paid.” On the same day notice was left at the dwelling of the indorser. The witness further stated, that he had been teller of the bank since the year 1836, and that after the decision of the case of Cookendorfer v. Preston, by the Supreme Court, in 1846, the said bank changed the usage and custom which had theretofore prevailed therein, in regard to the demand and protest of negotiable paper held and discounted by it; and in all cases of discount they thereafter held the paper until the fourth day of grace ; and if the said fourth day fell on Sunday, it was under the said change the custom of the bank to retain it until Monday, and on that day to deliver the same to the notary to *demand payment and give notice; and -I Sylvester B. Bowman, bookkeeper of the bank, states that since the decision of said case, the usage had been changed by the bank, as above stated. . No notice of such change had been given, so far as the। wi ness knew; and it was further stated, that four cases had oc-576 DECEMBER TERM, 1853. 545 Adams v. Otterback. curred in which the notes becoming due on Sunday, the notice was given on Monday. On the evidence, this court instructed the jury that the plaintiff had not used due diligence in demanding payment and giving notice of non-payment to the indorser—to which the plaintiff excepted. This court, by several decisions, have sanctioned the usages of banks in this district, in making demand and giving notice of non-payment, varying from the law merchant. Renner v. Bank of Columbia., 9 Wheat., 587-588 ; Mills v. Bank of the United States, 11 Wheat., 430 ; and in some instances where, in this respect, notes left in a bank for collection, have been placed on a different footing from notes discounted. Cooken-dorfer v. Preston, 4 How., 324. But these usages had been of long standing and of general notoriety. Rights had grown up under them which could not be disregarded without injury to commercial transactions. In the case before us the usage relied on, and under which notice to the indorser was given, had been adopted by the bank two years before the note in question was discounted, but it seems only four cases had occurred under it. No public notice was given at the time of its adoption, and no presumption can arise from the facts stated, that the indorser could have had notice of the usage. It is said, if a bank may establish a usage, it may change it; and that there must be a beginning of acts under it. This may be admitted, but it does not follow that a usage is obligatory from the time of its adoption. To give it the force of law, it requires an acquiescence and a notoriety, from which an inference may be drawn that it is known to the public, and especially to those who do business with the bank. It is unnecessary to consider whether a usage adopted might acquire force from public notices generally circulated. No such notice was given in this case. But to constitute a usage, it must apply to a place, rather than to a particular bank. It must be the rule of all the banks of the place, or it cannot, consistently, be called a usage. If every bank could establish its own usage, the confusion and uncertainty would greatly exceed any local convenience resulting from the arrangement. , In this country and in England, three days of grace are given by the general commercial law, and the day the note matures *is not one of them. In Hamburg, the day the bill falls due makes one of the days of grace. No- L $46 tice must be given to the drawer or indorser on the day the dishonor takes place, or on the next day. If notice be given through the post-office, it must be forwarded by the first mail vol. xv.—37 m 546 SUPREME COURT. Livingston et al. v. Woodworth et al. after the demand of payment. If the note fall due on Sunday, under the general law, the demand of payment must be made on Saturday. The usage is not proved in this case. Four instances, in the course of two years, are insufficient to establish a usage. Such a rule would, in effect, abolish the commercial law, in regard to demand and notice on promissory notes and bills of exchange. There is ground to doubt whether any deviation from the general law has not been productive of inconvenience. No explanation is given, why the demand of payment on the note was made at the United States Hotel, in this city. Such a demand would seem to be insufficient. We are, therefore, of the opinion, that there was no error in the instructions of the court to the jury; the judgment of the Circuit Court is therefore affirmed. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Columbia, holden in and for the County of Washington, and was argued by counsel. On consideration whereof, it is now here ordered and adjudged by this court, that the judgment of the said Circuit Court in this cause be, and the same is hereby, affirmed, with costs. William Livingston and Ebenezer N. Calef, Appellants, v. William W. Woodworth, Administrator of William Woodworth, deceased, James G. Wilson, Artemas L. Brooks, and Ignatius Tyler, Appellees. Where the assignors of a patent-right were joined with the assignee for a particular locality, in a bill for an injunction to restrain a defendant from the use of the machine patented, and the defendant raised, in this court, and after a final decree, an objection arising from a misjoinder of parties, the objection comes too late. . . Moreover, in the present case, the parties consented to the decree under which the account in controversy was adjusted. That consent having been given, however, to a decree by which an should be taken of gains and profits, according to the prayer of the bill, e defendant was not precluded from objecting to the account upon ground that it went beyond the order. . . The report having been recommitted to the master, with instructions to as 578 DECEMBER TERM, 1853. 546 Livingston et al. v. Woodworth et al. tain the amount of profits which might have been realized with due diligence, and the *master having framed his report upon the theory of awarding damages, this report, and the order of the court confirming L ’ it, were both erroneous. Under the circumstances of this case, the decree should have been for only the actual gains and profits during the time when the machine was in operation, and during no other period.1 This was an appeal from the Circuit Court of the United States for the District of Massachusetts. All the facts of the case are stated in the opinion of the court, to which the reader is referred. It was argued by Mr. Schley, for the appellants, and by George T. Curtis, for the appellees. Mr. Schley made the following points : 1. The account ought not to have been taken from the date of the patent. The title of the complainant, Tyler, was not complete until 1st July, 1848, nor the title of Brooks until the 10th May, 1848. At the furthest, the account ought not to h&ve been taken from a period prior to the latter day. 2. The account ought not to have been continued beyond the time of the filing of the bill. There are cases, undoubtedly, in which the account is continued to the date of the report; but this is not such a case. 3. It was clearly erroneous to allow interest, from the day of filing the bill, on the whole amount; as part of the amount accrued after that date. 4. Upon the case, as it stood in court, actual “gains and profits,” and nothing more, ought to have been charged against the defendants. If damages, beyond actual gains and profits, were asked, the complainants should have sought another forum. Curtis on Pat., § 348; Hindmarsh on Pat., 361-365; Crossley v. The Derby Gras Light Company, 3 Myl. & C., 428,433 ; Bacon v. Spotswood, 1 Beav., 387; Colborn v. Simms, 2 Hare, 560; 2 Eden on Injun c., 251; Phillips on Pat., 457; Webster on Pat., 119, 168, 238; Lee v. Alston, 1 Ves., 82. 5. The allowance of one dollar per thousand was not warranted by the evidence in the cause; even if, in other respects, 1 Approved. Dean v. Mason, 20 How., 203. Reviewed. Root v. Railway Co., 15 Otto, 194, 203. Cited. Rubber Co. v. Goodyear, 9 Wall., 802 ; Birdsall v. Coolidge, 3 Otto, 70; City of Elizabeth v. Pavement Co., 7 Id., 139 ; Magic Ruffle Co v. Elm City Co., 2 Bann. & A., 158; Sayles v. Richmond frc. Co., 4 Id., 244; Burdett v. Estey, 5 Id., 312. 579 547 SUPREME COURT. Livingston et al. v. Woodworth et al. the decree was right. The allowance was excessive, upon the merits, as disclosed in evidence. The points made by Mr. Curtis, for the appellees, were the following: I. The first point that will be submitted, on behalf of the appellees, will be, That this being a bill for an injunction and an account, and a decree having been entered by consent of *^481 Parties> * (Record, p. 68,) that the complainants were -* entitled to the injunction and account prayed for in the bill, an appeal does not lie from the final decree, which merely ascertains the items of the account which the appellants consented should be taken. That an appeal cannot be taken from a decree entered by consent, counsel will cite 2 Dan. Ch. Pr., 1179, 1180 ; Bra-dish v. Gree, Amb., 229; Harrison v. Rumsey, 2 Ves., 488; Atkinson v. Marks, 1 Cow. (N. Y.), 693 ; Corning v. Cooper, 7 Paige (N. Y.), 587. There is a case in Ohio which is otherwise, founded on the peculiar provisions of the statute allowing apneals. Brewer v. The State of Connecticut and others, 9 Ohio, 189. But there is nothing in the provisions of the judiciary act of 1789, or in the act of March 3,1803, § 2, allowing and regulating appeals in equity, to prevent the application by this court of the rule, that when a decree has been taken by consent, it cannot be disturbed by an appeal or a rehearing. The object of the act of 1803 is stated in the case of The San Pedro, 2 Wheat., 141, 142. The only question in this case is, whether the consent decree, entered May term, 1849, (p. 18,) does not render the final decree (p. 51, 52) a decree by consent also. It will be contended that it does : 1. Because, by the first decree, the appellants consented that the appellees were entitled to the perpetual injunction, and “ the account prayed for in the bill ” ; and all that remained to be done was to ascertain what account was prayed for in the bill. 2. Because, by the first decree, it was expressly declared, that the parties consented to have the account commence at such a time as should be found by the master, and be confirmed by the court—a stipulation as binding on both parties as if they had made the same point the subject of arbitration. But if the appeal was rightly taken, counsel for the appe -lees will contend, ... II. That the second decretal order to the master, by whic he was directed to ascertain “ the amount of profits whic i may have been, or, with due diligence and prudence, mig 580 DECEMBER TERM, 1853. 548 Livingston et al. v. Woodworth et al. have been, realized by the defendants for the work done by them ” with the machine complained of, taken in connection with the principles laid down by the court in their opinion, (see appendix to this brief,) stated the true rule for this case. 1. It appears, by an account filed with the master at the first hearing, that the appellants had been using the machine complained of from July, 1845, to July, 1848, and had planed therewith 3,962,760 feet of boards during that time. It also appears that they had received an average of $2 per thousand feet for this work; and in their answer they state, that this work was done at an average expense of $1.50 per *thousand feet, leaving 50 cents, only, as the net profit r*rqg actually realized on a thousand feet. But they do not *-profess to do this with entire accuracy, but as an “ approximate estimate.” In this state of the facts, the master, assuming that he was to find only the actual net profits realized, heard evidence on the part of the complainants which tended to show that a thousand feet of boards could be planed for a less cost; and, also, evidence on the part of the respondents, tending to show that it would costas much as they had stated in their answer; but he held, that the result of tho whole evidence did not authorize the conclusion that the respondents had not truly stated the actual cost, and, accordingly, he reported $1.50 as the cost per thousand, leaving an actual profit of 50 cents only. _ As it stood on the master’s first report, therefore, there was evidence tending to show that, in charging $1.50 per thousand as the cost of planing, the respondents had conducted the business with less skill and prudence than it might have been conducted. The master’s conclusion was based wholly on the idea that the actual net profits furnished the rule, and that the evidence did not control the statement of the answer as to the amount of such actual profits. An exception being taken and argued, it appeared to the court that here was a state of facts which required the application of a different rule, and the cause was recommitted to the master, by the second decretal order, and the accompanying instructions. The rule announced was, that the master was to report the profits which the respondents might have made with due diligence and prudence ; and the principle adopted by the court was, that the respondents were to be charged as involuntary trustees, accountable, like mortgagees in possession and other similar trustees, for the profits which might have been received with due care and prudence. 581 549 SUPREME COURT. Livingston et al. v. Woodworth et al. To apply this rule rendered it necessary to hear evidence on both sides, and to take the average given by all the testimony of what it would cost to plane 1,000 feet. The result of the whole evidence, given to the master at both hearings, may be thus stated. (The counsel then went into some long calculations respecting the cost of planing.) 2. There is no technical difficulty in a court of equity in adopting and applying such a rule as that directed by the 2d decretal order to the master. Where the court has jurisdiction to give the principal relief sought, it will make a complete decree, and give compensation for the past injury. As in bills for specific perform-ance. * Newham v. May, 13 Price, 749; Nelson v. -I Bridges, 3 Beav., 239; Phillips v. Thompson, 1 Johns. (N. Y.) Ch., 150; Parkhurst v. Van Cortlandt, Id., 273; Pratt v. Law $ Campbell, 9 Cranch, 456 ; Cathcart v. Robinson, 5 Pet., 269; 2 Story, Eq. Jur., § 796. So also in injunction bills for waste. Jesus College n. Bloom, 3 Atk., 262; Garth v. Cotton, Id., 751; Lee v. Alston, 1 Bro. Ch., 194. The jurisdiction in equity conferred upon the circuit courts in patent causes, by statute, contemplates full power to give the plaintiff as ample redress as he could have at law, except that the damages cannot be trebled. Patent Act of July 4th, 1836, § 17, 14. 3. There being no technical difficulty in applying a rule that involves elements of computation, and gives an approximate compensation to the party injured, the question is simply one of principle, viz. What rate of profits shall a party, who has long infringed a patent, be required to account for in equity ? The court below did not direct the master to find damages, nor did he go into that inquiry. He inquired, as he was directed to do, whether the profits actually made by the respondents were as large as they might have been with the exercise of due care and prudence. a. Any other rule, in a case of this kind, would put the patentee entirely in the power of the trespasser, and enable the latter to fix the rate at which he should account for the use of the machine. b. The rule applied in this case by the court below was correct in principle. It was to hold the party accountable, as an involuntary trustee, for what the patentee might have realized by the same exercise of the right, the evidence showing that he had made the cost of the w’ork excessive.. The principle is well settled that a court of equity sometimes forces the 582 DECEMBER TERM, 1853. 550 Livingston et al. v. Woodworth et al. character of a trustee upon an intruder, or wrongdoer, or one who is in possession under color of right, and who takes rents or profits which belong to another, or might have taken them. The particular class of trustees referred to in the opinion of the court below are mortgagees. The following authorities show the application of the rule. Anonymous, 1 Vern., 45; Chapman v. Tanner, Id., 267 ; Coppring v. Cooke, Id., 270; Jenkins v. Eldredge, 3 Story, 325, 329, 330, 331; Dexter v. Arnold, 2 Sumn., 108, 130. c. This is a case of first impression. All the authorities and precedents which declare that the infringer is to account in equity for the “profits” made by the unlawful use of the invention, contemplate a case where the actual profits are all that could have been made, or else that question has not been raised. *This is a case where the evidence shows that the respondents so conducted their business that *-the actual profits were less than half what might have been realized by the patentee from the same business. III. The objection that the account ought not to have been taken from the date of the (reissued) patent, viz., July 8th, 1845, but should have commenced May 20th, 1848, (the date of Wilson’s deed of confirmation to Brooks, one of the complainants,) is now too late. By consent of parties, the account was to commence at such time as should be found by the master and confirmed by the court. (P. 18.) The master found the facts, and the court directed the account to commence at the date of the reissued patent. No appeal lies from the decree thus consented to. Besides, the bill was brought in the name of the original owner of the reissued patent, Wood worth’s administrator, Wilson, his assignee, and Brooks and Tyler, the sub-assignees; and by consent, the respondents admitted the right to the injunction and account prayed for. IV. If the appeal can open this question, it is submitted that the decree was right. The first patent to Woodworth, the inventor, was granted December 27th, 1828. November 16th, 1842, Woodworth’s administrator obtained from the commissioner, under the statute of 1836, § 18, an extension for seven years from December 27th, 1842. December 7th, 1842, the administrator granted to Brooks an exclusive territorial right for the residue of the extended term, viz., to December 27th, 1849. January 11th, 1844, the administrator conveyed all his interest to Wilson. July 8th, 1845, the administrator surrendered the renewed 583 551 SUPREME COURT. Livingston et al. v. Woodworth et al. patent granted to him by the commissioner, and obtained a reissue under the act of 1836, § 13, on account of a defective specification. July 20th, 1847, Brooks assigned to Tylor one-half of his territorial right. May 20, 1848, Wilson, by his deed, confirmed Brooks’s title, and Brooks, by his deed dated July 1st, 1848, confirmed his previous grant to Tyler. The bill was filed July 10th, 1848, in the name of the administrator, Wilson, Brooks, and Tyler, to obtain an account for infringements commenced at least at the date of the surrender and reissue, and steadily continued to the time of filing the bill. The court directed the account to commence with the date of the reissued patent. Three positions will be maintained : 1st. That the complainants, who sought this redress, jointly rn-i Represented the whole legal and equitable title, and -* were jointly entitled to the relief from the date of the reissued patent. Even if it were true that a reissue does not give a legal title to the assignee whose grant was taken before the reissue, (which is not admitted,) it still leaves his equitable title, as against strangers and trespassers, as valid as it was before. 2d. An assignee of the whole existing interest under a patent has the same legal title in the reissued patent, granted under the act of 1836, § 13, for a defective specification, which he had before the reissue, without any confirmatory grant from the patentee. Woodworth v. Stone, 3 Story, 749 ; Woodworth v. Hall, 1 Woodb. & M., 248. The two cases of Wilson v. Rousseau, 4 How., 646 ; and Bloomer v. McQuewan, 14 How., 539, deny to previous assignees a legal title under an extension, and recognize only their right to continue the use of the specific machines purchased. They admit, therefore, that the extension is a grant of a new estate to the patentees. A reissue under the 13th section of the statute is not a new grant in any sense, but merely the correction of errors or omissions in the specifications; and the statute merely restricts the right of recovery to infringements committed after the correction has been made. 3. If the complainants, Brooks and Tyler, needed any confirmation of their title, they had it before the bill was filed, and it relates back to the earliest period when the statute will permit recovery for infringements under a reissued patent. V. The objection that the account ought not to have been taken beyond the time of filing the bill, covers the work done 584 DECEMBER TERM, 1853. 552 Livingston et al. v. Woodworth et al. in the course of fifteen days. The bill was filed July 10th, 1848, and the account covers the work done to July 25th. It appears that the injunction was served on the last-mentioned day. (Record, pp. 13, 14.) The amount planed in the month of July, was 73,821 feet; so that, at the rate of 4,200 feet per day, the respondents must have worked their machine more than seventeen days in the month of July—that is to say, they did more than seven days’ work after the bill was filed. (Record, p. 19.) It does not appear precisely why the master took the account to the 25th of July, but probably it was because the respondents rendered it to that time, they not having stopped before. After the bill was filed they had notice of the complainant’s rights, and on their own admission they were infringers and bound to account. To allow the present objection to prevail would be to say, that in a suit for an injunction and account, the right being admitted, the respondent may go on working after the bill is filed, and the complainant must file another bill to recover for what is done after the first bill is filed, and before the account *is taken. There is no technical necessity for this, and it would be most onerous, as leading to endless litiga- *-tion. VI. The objection as to the interest allowed on the items which accrued after the filing of the bill, assumes that work was done by the respondents after the bill was filed. By their own admission they had no right to use the machine. The master brought the account down to the time when the respondents rendered it, July 25th; and if a part of the items thus covered accrued after the respondents were notified, those items must, in contemplation of law, be treated as if they had already accrued when the bill was filed, in taking a continuing account. Mr. Justice DANIEL delivered the opinion of the court. The appellees, on the 24th of July, 1848, obtained from the court above mentioned an injunction to restrain the appellants from using or vending one or more planing machines substantially the same in construction and mode of operation as the machine which had been patented to William Woodworth, deceased. In their bill they allege the originality of the invention of the patentee, the extension of the patent after his death for the space of seven years beyond its original limitation to the appellee, William W. Woodworth, as administrator of the inventor, and the grant by said administrator to the appellee, Brooks, of the exclusive right to construct and use the inven-585 553 SUPREME COURT. Livingston et al. v. Woodworth et al. tion within certain specified limits for the entire period of that extension. The bill further alleges a second extension by act of Congress of the patent to the said administrator for the term of seven years from the 27th day of December, 1849; but states that in consequence of doubts entertained as to the correctness of the specification, and of the fact of said letters-patent having been found to be inoperative, they were duly surrendered, and new letters-patent bearing date on the 8th day of July, 1845, were issued to the appellee, William W. Woodworth and his assigns, for the residue of the term of 28 years from 27th of December, 1828; that subsequently to this last renewal the appellee William W. Wood worth, had granted to the appellee, Wilson, and to his assigns, all the right and title acquired by him by the issue of the last letters-patent with the amended specification. That the appellee, Brooks, by his deed of the 20th of July, 1847, had granted and assigned to the appellee, Tyler, one half Brooks’s right in the patent to Woodworth for the term ending on the twenty-seventh of December, 1849, to be used within the town of Lowell, and not elsewhere. That the appellee, Wilson, by deed of the 20th of May, 1848, assigned and confirmed to Brooks and his assigns, the exclusive right *5541 consbmcting and using *twenty planing machines -* according to the letters-patent with the amended specification, and gave authority to Brooks, in Wilson’s name, to execute all such deeds of confirmation to the assignees of any rights and privileges within the county of Middlesex as he should deem fit, and that in virtue of this power and authority, he, Brooks, did by his deed of July 1st, 1848, grant and confirm to the appellee, Tyler, in the name and behalf of the said Wilson, as well as in his own name, all the rights and privileges described in the deed from Brooks to Tyler of the 20th of July, 1847. The bill further alleges that the appellants were then using, and for some time had used, within the city of Lowell, one of the machines substantially the same in construction and mode of operation as the planing machine in the said last mentioned letters-patent described, the exclusive right to make, use and vend which, is by law vested in the appellees. The bill also charges that theretofore two actions at law had been instituted in that court, the one against a certain James Gould, and the other against Rodol-phus and James Edwards and Cyrus Smith, for the violation of the exclusive privileges granted to the plaintiffs in those actions under patent last aforesaid, by using a machine substantially the same with the said planing machine invented by the said William Woodworth, and that, upon issues made 586 DECEMBER TERM, 1853. 554 Livingston et al. v. Woodworth et al. up in both these actions, the jury found that the defendants had infringed the patent, and subjected them to the payment of damages. It avers the use, as before stated by the appellants of their machine, to be an infringement of the Woodworth patent, and a violation of the exclusive rights and privileges of the appellees; and concludes with a prayer that the appellants may be decreed to account for and pay over to the appellees all gains and profits which have accrued from using their said machines since the expiration of the said original patent; that they may be restrained, by injunction, from using or vending any one or more of said machines; that the machine or machines, in the possession or under the control of the appellants, may be destroyed or delivered over to the appellees, who ask also for general relief. The appellants, by their answer, state, that during a part of the time which has elapsed between the autumn of 1841 and April 1st, 1844, they have used in their mill at Lowell a single planing machine constructed according to a patent granted to James H. Hutchinson on the 16th of July, 1839, which machine, in some of its combinations, substantially resembles the machine specified in the patent granted to Woodworth in 1845, but is unlike any machine specified in the patent to Woodworth in 1828. They aver, also, that the planing business had been carried on as aforesaid, in virtue of the Hutchinson machine, at *Lowell, with the full knowledge of r^rrr the appellee, Brooks, and without objection from him *-until within a short time previously; and that they had no knowledge or belief of any infringement by them of the patent ‘to Woodworth, until after the decision in Gould’s case; after which decision, they were informed that the patent to Woodworth had been surrendered and reissued with a new specification, the validity of which reissued patent had not, within their knowledge or belief, been established until the decision of the suit against the said Edwards and Smith. The answer denies the originality of Woodworth’s claim, by averring that James, Joseph, Aaron, and Daniel Hill, and Leonard Gilson, in the District of Massachusetts, as early as 1827, and John Hale of Bloomfield, in the State of New York, in the year 1828, had knowledge of and had made and used planing machines essentially the same and prior to the pretended invention of William Woodworth, deceased. At the May term of the court, 1849, this cause coming on uPon the bill, the answers, replications, and exhibits, by the consent of the parties it was decreed by the court, that the appellees (the complainants below) were entitled to the perpetual injunction and to the account prayed 587 555 SUPREME COURT. Livingston et al. v. Woodworth et al. for by the bill; said account to commence at such time as shall be found by the master, to be confirmed by the court. The decree proceeds that, the master in taking said account shall have power to require the parties to produce before him, on oath, all books and papers relating thereto, and to hear such oral evidence as either party may produce, and on motion of either of the parties, to examine either of the other parties, upon interrogatories. And all farther directions are reserved until the coming in of the master’s report. In pursuance of this decretal order, upon the examination of the parties on oath, and upon evidence produced aliunde, the master reported that the amount of gains and profits received by the defendants below upon 3,962,700 feet of plank, the number of feet planed by them, was at the rate of fifty cents per thousand feet, no exception being taken to the amount of the work stated to have been done by the said defendants, or to the gross amount at which the work was charged by them per thousand, but exception being taken to the report of the master upon the ground that the rate of profit charged to the defendants below should have been one dollar instead of fifty cents per thousand, the court by a farther decretal order recommitted the report to the master, with instructions to ascertain the amount of profits which may have been, or with due diligence and prudence might have been, realized by the defendants, for the work done by *5561 ^hem or their servants, by the machines *described in -I the complainant’s bill, and that the account of profits should commence from the date of the letters-patent issued with the amended specifications. In obedience to the decretal order last mentioned, the master made a second report, by which he charged the defendants for profits on the work done by their machine at the rate of one dollar per thousand feet, instead of fifty cents, as in his former report, from the 8th day of July, 1845, the date of the reissued patent. He says it is true that the rate of profit adopted by him is conjectural, “ but that he does not think he has infused into the case any element too unfavorable to the defendants. That by the decision of the court they were trespassers and wrongdoers, in the legal sense of the words, and were consequently in a position which might make them liable to be mulcted in damages greater than the profits they have actually received; the rule being not what benefit they have received, but what injury the plaintiffs have sustained.” To this second report of the master, exceptions were filed by the appellees, the plaintiffs below, founded upon the departure of the master from the safe and just rule of actual profits, as prayed for by 588 DECEMBER TERM, 1853. 556 Livingston et al. v. Woodworth et al. the bill, and the adoption of a rule of proceeding which was vague and conjectural, and unsustained by the evidence in the cause. At the May term, 1851, the Circuit Court decreed that this report of the master, except so far as interest is thereby disallowed, should be confirmed, and that the appellants should, within ten days, pay to the appellees the sum of $3,962.96, with interest thereon from the day of filing the bill, with costs. It is this decree, founded upon the antecedent proceedings herein adverted to, that we are to review; and it may here be remarked, that the statement of those proceedings has been unavoidably protracted from the necessity for considering two questions of a preliminary character raised in the argument, and which it is proper to dispose of before deciding upon, and before reaching the merits of, this cause. 1st. It has been insisted, on behalf of the appellants, that the appellee, Tyler, claiming as assignee under Wood worth, Wilson, and Brooks, and asserting a title complete in himself, within a certain locality, could not regularly unite in his bill those persons whom he had shown had no title within the same locality, and who could not therefore be embraced in a decree in his favor; a decree which, in its terms and effect, must exclude every kind of interest in those co-plaintiffs within the same limits. It is true, as a rule of equity pleading, that none should be made parties, either as complainants or defendants, who have no interest in the matters in controversy, or which can be affected by the decree of the court. Vide Story, Eq. Pl., ch. 4, § 231; so too in § 232 of the same work *it is said: “In cases where the want of interest applies, it is equally fatal when applicable to one of several plaintiffs as it is when, applicable to one of several defendants. Indeed, the objection in the former case is fatal to the whole suit, whereas, in the latter case, it is fatal (if taken in due time) only as against the defendant improperly joined.” In the same work, § 544, it is said that, “ In cases of misjoinder of plaintiffs, the objection ought to be taken by demurrer, for if not so taken, and the court proceeds to a hearing on the merits, it will be disregarded, at least if it does not materially affect the propriety of the decree.” The language of Lord Langdale, in the case of Raffity v. King, as reported in the Law Journal, vol. 6, p. 93, is very clear upon this question, where he says, “ As to the objection to John Raffity being made a plaintiff, I am not satisfied it would, under any circumstances, be considered of such importance as to deprive the other plaintiffs of the relief they are entitled to. There have been cases, in which the court, with a view to special 589 557 SUPREME COURT. Livingston et al. v. Woodworth et al. justice, has overcome the difficulty occasioned by a misjoinder of plaintiffs; ” and in the case of Morley v. Lord Hawke, cited in 2 Younge & J., 520, before Sir William Grant, the rule is thus stated as to the misjoinder of plaintiffs. “ The defendant objected to any relief being granted in that state of the record; and, without determining the effect of the objection if brought forward earlier, I think it is now too late. If the objection had been stated in the answer, the plaintiffs might have obtained leave to amend their bill, and might have made John Raffity a defendant instead of a plaintiff, for which there is an authority in the case of Aylwin v. Bray, (2 Younge & J., 518, n.,') and in such a case as this, where the objection is reserved to the last moment, I think it ought not to prevail.” In the case before us the objection of misjoinder of the plaintiffs nowhere appears upon the pleadings, nor, for aught that is disclosed, was it insisted upon even at the hearing: it is urged for the first time after the hearing and after a final decree, and to allow this objection at so late a stage of the proceedings, would be a surprise upon the appellees, and might operate the most serious mischiefs. In this case, and at this time, the allowance of such an objection would be peculiarly improper, for here the objection cannot be viewed as having been merely waived by reasonable and ordinary implication, but the defendants have expressly consented to a decree between the parties as they were then arrayed upon the record. As to this objection, therefore, we think it comes too late to be of any avail, and should not affect the cognizance of the court either as to the parties or the subject-matter of the controversy. 2d. On the part of the appellees (the *5581 *c°mplainants in the Circuit Court), it has been in- -* sisted, that the decretal order, made in this cause by consent, covered and ratified in advance all the subsequent proceedings on the part of the court, rendering those proceedings inclusive of the final decree, a matter of consent, which the appellants could have no right to retract, and from which therefore, they could not legally appeal. In order to try the accuracy of this argument and of the conclusions sought to be deduced therefrom, it is proper to examine the order which is alleged in support of them. The words of that order are as follow: ... “This cause came on, &c.—and by consent of parties it is declared by the court”—what? “That the complainants are entitled to the perpetual injunction- and the account prayed for by the bill.” It seems to us incomprehensible, that by this consent of the defendant below, he had consented to any-590 DECEMBER TERM, 1853. 558 Livingston et al. v. Woodworth et al. thing precise and unchangeable beyond the perpetual injunction, much more so that he had thereby bound himself to acquiescence in any shape or to any extent of demand which might be made against him under the guise of an account. Indeed the complainants below, and the Circuit Court itself, have shown by their own interpretation of this decretal order, that they did not understand it to mean, as in truth by no just acceptation it could mean, anything fixed, definite and immutable; for the complainants below excepted to the report of the master, and the court recommitted that report with a view to its alteration. Nor can we regard the reference to the master as in the nature of an arbitration ; for if so deemed, the award of that officer must have been binding, unless it could be assailed for fraud, misbehavior, or gross mistake of fact. In truth, the account consented to was the account prayed for by the bill, and in the plain words of the bill, viz., “ that the defendants may be decreed to account for and pay over all such gains and profits as have accrued to them from using the said machines since the expiration of said original letters-patent.” This language is particularly clear and significant—such gain and profits, and such only, as have actually accrued to the defendants; and we are unable to perceive how, by such an assent, the appellants, the defendants below, could have been concluded against exceptions to anything and everything which might have been evolved by that report, however illegal or oppressive. Considering next the decretal order for the recommitment of the first report, the second report, made in obedience to that order, and final decree founded upon the second report, we are constrained to regard them all as alike irreconcilable with the prayer of the bill, with the just import of the consent decree, and with those principles, which control the action of courts of *equity. In the instructions to fhe [-*550 master it will be seen, that he is ordered “ to ascertain *-and report the amount of profits which may have been, or with due diligence and prudence might have been, realized, by the defendants for the work done by them or by their servants by means of the machines described in the complainant’s bill, computing the same upon the principles set forth in the opinion of the court, and that the account of such profits commence from the date of the letters-patent issued with the amended specification.” The master, in this report made in pursuance of the instructions just adverted to, admits that the account is not constructed upon the basis of actual gams and profits acquired by the defendants by the use of the inhibited machine, but upon the theory of awarding 591 559 SUPREME COURT. Livingston et al. v. Woodworth et al. damages to the complainants for an infringement of their monopoly. He admits, too, that the rate of profits assumed by him was conjectural and not governed by the evidence; but he attempts to vindicate the rule he had acted upon by the declaration, that he was not aware that he had “ infused into the case any element too unfavorable to the defendants. That by the decision of the court they were trespassers and wrongdoers, in the legal sense of these words, and consequently in a position to be mulcted in damages greater than the profits they have actually received: the rule being not what benefit they have received, but what injury the plaintiffs have sustained.” To what rule the master has reference in thus stating the grounds on which his calculations have been based, we do not know. We are aware of no rule which converts a court of equity into an instrument for the punishment of simple torts; but upon this principle of chastisement the master admits that he has been led, in contravention of his original view of the testimony, and upon conjecture as to the reality of the facts, and not upon the facts themselves, to double the amount which he had stated to be a compensation to the plaintiffs below, and the compensation prayed for by them, and the Circuit Court has, by its decree, pushed this principle to the extreme by adding to this amount the penalty of interest thereon from the time of filing the bill to the date of the final decree. We think that the second report of the master, and the final decree of the Circuit Court, are warranted neither by the prayer of the bill, by the justice of this case, nor by the well-established rules of equity jurisprudence. If the appellees, the plaintiffs below, had sustained an injury to their legal rights, the courts of law were open to them for redress, and in those courts they might, according to a practice, which however doubtful in point of essential right, is now too inveterate to be called in question, have claimed not compensations merely, but vengeance, for such injury as they could show that they had sustained. But before a tri-*580T hunal which refuses *to listen even to any, save those -* whose acts and motives are perfectly fair and liberal, they cannot be permitted to contravene the highest and most benignant principle of the being and constitution of that tribunal. There they will be allowed to claim that which ex cequo et bono, is theirs, and nothing beyond this. In the present case it would be peculiarly harsh and oppressive, were it consistent with equity practice, to visit upon the appellants any consequences in the nature of a penalty. 592 DECEMBER TERM, 1853. 560 Livingston et al. v. Woodworth et al. It is clearly shown that the appellants, in working their machine, were proceeding under an authority equal to that (the same indeed) which bestowed on Woodworth and his assignees the right to their monopoly. The appellants were using a machine patented by the United States to Hutchinson, and. might well have supposed that the right derived to them from such a source was regular and legitimate. They were, then, in no correct sense, wanton infringers upon the rights of Wood worth, or of those claiming under him. So soon as the originality and priority of the Woodworth patent was ascertained by law, the appellants consented to be perpetually enjoined from the use of their machine, (the Hutchinson machine,) and to account for whatever gains and profits they had received from its use. Under these circumstances, were the infliction of damages, by way of penalty, ever consistent with the practice of courts of equity, there can be perceived in this case no ground whatever for the exercise of such a power. On the contrary, those circumstances exhibit, in a clearer light, the propriety of restricting the account, in accordance with the prayer of the bill, to the actual gains and profits of the appellants, (the defendants below,) during the time their machine was in operation and during no other period. We are therefore of the opinion, that the decree of the Circuit Court is erroneous; and should be, as it is hereby, reversed, with costs; and that this cause be remanded to the Circuit Court, with instructions to proceed therein in conformity with the principles ruled in this opinion. ORDER. This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the District of Massachusetts, and was argued by counsel. On consideration whereof it is now here ordered, adjudged, and decreed by this court, that the decree of the said Circuit Court in this cause be, and the same is hereby, reversed, with costs; and that this cause be, and the same is hereby, remanded to the said Circuit Court, for further proceedings to be had therein, in conformity to the opinion of this court. Vol. xv.—38 593 INDEX TO THE MATTERS CONTAINED IN THIS VOLUME. The references are to the Star (*) pages. APPEAL. 1. Where the respondent in a chancery suit in the Circuit Court took two grounds of defence, and the judge, in giving his reasons for a decree dismissing the bill, upon one of the two grounds, expressed his opinion that the respondent had not established the other ground, he cannot appeal from this as a part of the decree. Corning et al. v. The Troy Iron and Nail Factory, 451. 2. The decree was in the respondent’s favor, dismissing the bill with costs, and no appeal lies from an opinion expressed by the judge upon the facts of the case, not affecting the decree. Ib. 3. Moreover, the decree complained of has already been argued before this court upon the appeal of the other party, and both grounds of defence decided to be insufficient, and the decree reversed. There is, therefore, no such decree as that appealed from. Ib. 4. Besides, the court below has not acted upon the mandate and entered a final decree; therefore there is no final decree to appeal from. Ib. ARBITRATION. See Award. ARKANSAS. See Constitutional Law. 1. In June, 1844, Congress passed an act, by virtue of which the Circuit Court of the United States for the District of Arkansas was vested with power to try offences committed within the Indian country. United States v. Dawson, 467. 2. In July, 1844, it was alleged that a murder was committed in that country. Ib. 3. In April, 1845, an indictment was found by a grand jury, in the Circuit Court of the United States for the District of Arkansas, against a person charged with committing the murder. Ib. 4. In March, 1851, Congress passed an act erecting nine of the Western counties and the Indian country into a new judicial district, directing the judge to hold two terms there, and giving him jurisdiction of all causes, civil or criminal, except appeals and writs of error, which are cognizable before a Circuit Court of the United States. Ib. 5. The residue of the State remained a judicial district to be styled the Eastern District of Arkansas. Ib. 6. This act of Congress did not take away the power and jurisdiction of the Circuit Court of the United States for the Eastern District to try the indictment pending. Ib. attorney. 1 Where a contract was made with an attorney for the prosecution of a claim against Mexico for a stipulated proportion of the amount recovered, and services were rendered, the death of the owner of the claim did not dissolve the contract, but the compensation remained a lien upon the money when recovered. Wylie v. Coxe, 415. 2 . A court of equity can exercise jurisdiction over the case if a more adequate remedy can be thus obtained than in a court of law. Ib. 596 INDEX. AWARD. 1. In the settlement of complicated partnership accounts by means of an arbitrator, Bispham was charged with one half of certain custom-house bonds, which Archer, the other partner, was liable to pay, and which obligations had been incurred on partnership account. Bispham v. Price, 162. 2. There was a reservation in the settlement as to certain liabilities, but this one was not included. Ib. 3. Archer’s estate was afterwards exonerated from the payment of these bonds by a decision of this court, reported in 9 How., 83. Ib. 4. A bill cannot be brought by Bispham against Archer’s executor, to refund one half of the amount of the bonds, upon the ground that Archer had never paid it. Ib. 5. The reference to an arbitrator was lawful, and his award included many items which were the subject of estimates. It was accepted as perfectly satisfactory, and acquiesced in as such until long after the death of Archer. Ib. 6. No fraud or mistake is charged in the bill; and if an error of judgment occurred, by which the chance was overrated, that the custom-house bonds would be enforced against Archer, this does not constitute a ground for the interference of a court of equity. Ib. 7. The statute of limitations, also, is a bar to the claim. Ib. BALTIMORE. For McDonogh’s Will, see “Wills.” BANKS. See Constitutional Law. BILL OF EXCEPTIONS. 1. In order to make a bill of exceptions valid, it must appear by the transcript not only that the instructions were given or refused at the trial, but also that the party who complains of them excepted to them while the jury were at the bar. Phelps v. Mayer, 160. 2. The bill of exceptions need not be drawn out in form and signed before the jury retire; but it must be taken in open court, and must appear by the certificate of the judge who authenticates it, to have been so taken. Ib. 3. Hence, when the verdict was rendered on the 13th December, and on the next day the plaintiff came into court and filed his exception, it is not properly before this court. And no error being assigned or appearing in the other proceedings, the judgment of the Circuit Court must be affirmed, with costs. Ib. BILLS AND NOTES. See Commercial Law. BONDS. 1. When the bonds of collectors of the customs begin to be effective, see Broome v. United States, 143. 2. Where a clerk of a court was sued upon his official bond, and the breach alleged was, that .he had surrendered certain goods without taking a bond with good and sufficient securities, and the plea was, that the bond which had been taken was assigned to the plaintiffs, who had brought suit, and received large sums of money in discharge of the bond,—this plea was sufficient, and a demurrer to it was properly overruled. Bevins v. Ramsey, 179. CHANCERY. . . . 1. Where a widow filed a bill in chancery, complaining that, immediately upon the death of her husband, the son of that husband, together with another person, had imposed upon her by false representations, and induced her to part with all her right in her husband’s estate for an inadequate price, the evidence in the case did not sustain the allegation. Eyre et.al. v. Potter et al., 42. _ 2. It is not alleged to be a case of constructive fraud, arising out of the relative position of the parties towards each other, but of actual fraud. Ib. INDEX. 597 CHANCERY—(Continued.) 3. The answers deny the fraud, and are made more emphatic by the complainants having put interrogatories to be answered by the defendants, and the evidence sustains the answers. Zb. 4. It will not do to set up mere inadequacy of price as a cause for annulling a contract made by persons competent and willing to contract; and, besides, there were other considerations acting upon the widow to induce her to make the contract. Ib. 5. The testimony offered to prove the mental imbecility of the widow, should be received with great caution, and is not sufficient. Ib. 6. In the settlement of complicated partnership accounts by means of an arbitrator, Bispham was charged with one half of certain custom-house bonds, which Archer, the other partner, was liable to pay, and which obligations had been incurred on partnership account. Bispham v. Price, 162. 7. There was a reservation in the settlement as to certain liabilities, but this one was not included. Ib. 8. Archer’s estate was afterwards exonerated from the payment of these bonds by a decision of this court, reported in 9 How., 83. Ib. 9. A bill cannot be brought by Bispham against Archer’s executor, to refund one half of the amount of the bonds, upon the ground that Archer had never paid it. Ib. 10. The reference to an arbitrator was lawful, and his award included many items which were the subject of estimates. It was accepted as perfectly satisfactory, and acquiesced in as such until long after the death of Archer. Ib. 11. No fraud or mistake is charged in the bill; and if an error of judgment occurred, by which the chance was overrated that the custom-house bonds would be enforced against Archer, this does not constitute a ground for the interference of a court of equity. Ib. 12. The statute of limitations, also, is a bar to the claim. Ib. 13. The Michigan Central Railroad Company, established in Michigan, made an agreement with the New Albany and Salem Railroad Company, established in Indiana, that the former would build and work a road in Indiana, under the charter of the latter. Northern Indiana Railroad Company v. Michigan Central Railroad Company, 233. 14. Another company, also established in Indiana, called the Northern Indiana Railroad Company, claiming an exclusive right to that part of Indiana, filed a bill in the Circuit Court of the United States for the district of Michigan, against the Michigan Company, praying an injunction to prevent the construction of the road under the above agreement. Ib. 15. The Circuit Court had no jurisdiction over such a case. Ib. 16. The subject-matter of the controversy lies beyond the limits of the district, and where the process of the court cannot reach the locus in quo. 17. Moreover, the rights of the New Albany Company are seriously involved in the controversy, and they are not made parties to the suit. The act of Congress, providing for the non-joinder of parties who are not inhabitants of the district, does not apply to such a case as the present. Ib. 18. Black, as agent for the owners, contracted to sell a large quantity of land in Maine, which contract was assigned by the vendee, until it came, through mesne assignments, into the hands of Miller and others. Garrow v. Davis, 272. 19. Payments were made from time to time on account; but at length, in consequence of a failure to make the payments stipulated in the contract, and by virtue of a clause contained in it, the contract became void. Ib. 20. In this state of things, Miller employed one Paulk to ascertain from Black the lowest price that he would take for the land, and then to sell to others for the highest price that he could get. Ib. 21. Paulk sold and assigned the contract to Davis for $1,050. Ib. 22. Upon the theory that Paulk and Davis entered into a fraudulent combi- 598 INDEX. CHANCERY—(Continued.) nation, still, Miller and others are not entitled to demand that a court of equity should consider Davis as a trustee of the lands for their use. They had no interest in them, legal or equitable, nor any thing but a good will, which alone was the subject-matter of the fraud, if there was any. Ib. 23. But the evidence shows that this good will did not exist; for Black was not willing to sell to Miller and others for a less price than to any other person. Ib. 24. Although Paulk represented himself to be acting for Miller and others, when in reality he was representing Davis, yet he did not obtain the land at a reduced price thereby; but, on the contrary, at its fair market value. Ib. 25. The charges of fraud in the bill are denied in the answers, and the evidence is not sufficient to sustain the allegations. Ib. 26. Where the respondent in a chancery suit in the Circuit Court took two grounds of defence, and the judge, in giving his reasons for a decree dismissing the bill, upon one of the two grounds, expressed his opinion that the respondent had not established the other ground, he cannot appeal from this as a part of the decree. Corning v. Troy Iron and Nail Factory, 451. 27. The decree was in respondent’s favor, dismissing the bill with costs, and no appeal lies from an opinion expressed by the judge upon the facts of the case, not affecting the decree. Ib. 28. Moreover, the decree complained of has already been argued before this court upon the appeal of the other party, and both grounds of defence decided to be insufficient, and the decree reversed. There is, therefore, no such decree as that appealed from. Ib. 29. Besides, the court below has not acted upon the mandate and entered a final decree; therefore there is no final decree to appeal from. Ib. 30. Where land was sold in New Jersey by order of the Orphans’ Court of one of the counties, the conveyance was made not to the actual bidders, but to a person whom they appointed to represent them. Kearney v. Taylor, 494. 31. Afterwards, the Supreme Court of the State having decided that such a practice was irregular, the legislature passed a law enacting that, upon proof of the absence of fraud, such deeds might be given in evidence. This cured the defect in the title. Ib. 32. The purchasers were a company organized for the purpose of improving the land, and in their purchase there was neither actual or constructive fraud. Ib. 33. The law examined with respect to the bidding of associations at sales by public auction. Ib. 34. In this instance the price obtained was greater than any previous estimate of the value of the property. Ib. 35. There was no constructive fraud because, according to the evidence, the guardian of the minor children and the commissioners who decided that the property ought to be sold, did not become interested in the company until some time after the sale. Ib. 36. The circumstance that these persons became interested in the company before the first half of the purchase-money was due, is not a sufficient reason for setting aside the sale. Ib. 37. According to the preponderance of the evidence, the grave charge t a the auctioneer who made the sale was one of the company, is not sustained. Ib. . . 38. Where the assignors of a patent-right were joined with the assignee ior a particular locality, in a bill for an injunction to restrain a deien an from the use of the machine patented, and the defendant raised, in court, and after a final decree, an objection arising from a of parties, the objection comes too late. Livingston v. Woodworth, • 39. Moreover, in the present case, the parties consented to the decree under which the account in controversy was adjusted. Ib. INDEX. 599 CHANCERY—(Continued.) 40. That consent having been given, however, to a decree by which an account should be taken of gains and profits, according to the prayer of the bill, the defendant was not precluded from objecting to the account upon the ground that it went beyond the order. Ib. 41. The report having been recommitted to the master, with instructions to ascertain the amount of profits which might have been realized with due diligence, and the master having framed his report upon the theory of awarding damages, this report, and the order of the court confirming it, were both erroneous. Ib. 42. Under the circumstances of this case, the decree should have been for only the actual gains and profits during the time when the machine was in operation, and during no other period. Ib. CHARTERS. See Constitutional Law. COLLECTOR. See Customs, &c. COMMERCIAL LAW. 1. Where a note was given in the District of Columbia on the 11th of March, payable sixty days after date, and notice of its non-payment was given to the indorser on the 15th of May, (being Monday,) the notice was not in time. Adams v. Otterback, 539. 2. Although evidence was given that since 1846, the bank which was the holder of the note, had changed the preexisting custom, and had held the paper until the fourth day of grace, giving notice to the indorser on Monday, when the note fell due on Sunday. This was not sufficient to establish an usage. Ib. 3. An usage, to be binding, must be general, as to place, and not confined to a particular bank, and, in order to be obligatory must have been acquiesced in, and become notorious. Ib. CONSTITUTIONAL LAW. 1. In 1836, the Legislature of Arkansas incorporated a bank, with the usual banking powers of discount, deposit, and circulation, the State being the sole stockholder. Curran v. State of Arkansas, 304. 2. The bank went into operation, and issued bills in the usual form, but in November, 1839, suspended specie payments. Ib. 3. Afterwards, the legislature passed several acts of the following description : 1843, January, continuing the corporate existence of the bank, and subjecting its affairs to the management of a financial receiver and an attorney, who were directed to cancel certain bonds of the State, held by the bank, for money borrowed by the State, and reduce the State’s capital in the bank by an equal amount. 1843, February, directing the officers to transfer to the State a certain amount of specie, for the purpose of paying the members of the legislature. 1845, January, requiring the officers to receive the bonds of the State, which had been issued as part of the capital of the bank, in payment for debts due to the bank. 1845, January, another act, taking away certain specie and par funds for the purpose of paying members of the legislature, and placing other funds to the credit of the State, subject to be drawn out by appropri-at ion. 1846, vesting in the State all titles to real estate or other property taken by the bank in payment for debts due to it. 1849, requiring the officers to receive, in payment of debts due to the bank, not only, the bonds of the State, which had been issued to constitute the capital of the bank, but those, also, which had been issued to constitute the capital of other banking corporations, which were then insolvent. Ib. 4. Upon general principles of law, a creditor of an insolvent corporation can pursue its assets into the hands of all other persons, except bona 600 INDEX. CONSTITUTIONAL LAW—(Continued.) fide creditors or purchasers, and there is nothing in the character of the parties in the present case, or in the laws transferring the property, to make it an exception to the general rule. For the Supreme Court of Arkansas has decided that the State can be sued in this case. Ib. S. The bills of the bank being payable on demand, there was a contract with the holder to pay them ; and these laws, which withdrew the assets of the bank into a different channel, impaired the obligation of this contract. Ib. 6. Nor does the repeal or modification of the charter of the bank by the legislature prevent this conclusion from being drawn. But in this case the charter of the bank has never been repealed. Ib. 7. Besides the contract between the bill-holder and the bank, there was a contract between the bill-holder and the State, which had placed funds in the bank for the purpose of paying its debts, and which had no right to withdraw those funds after the right of a creditor to them had accrued. Ib. 8. The State had no right to pass these laws, under the circumstances, either as a creditor of the bank, or as a trustee taking possession of the real estate for the benefit of all the creditors. Ib. 9. The several laws examined. Ib. 10. The Supreme Court of the State held these laws to be valid, and consequently, the jurisdiction of this court attaches under the 25th section of the judiciary act. Ib. 11. The soil under the public navigable waters of East New Jersey belongs to the State and not to the proprietors. This court so decided in the case of Martin v. Waddell, 16 Pet., 367; and the principle covers a case where land has been reclaimed from the water under an act of the legislature. Den v. Jersey Company, 426. CONTRACT. 1. Black, as agent for the owners, contracted to sell a large quantity of land in Maine, which contract was assigned by the vendee, until it came, through mesne assignments, into the hands of Miller and .others. Garrow v. Davis, 272. 2. Payments were made from time to time on account; but at length, in consequence of a failure to make the payments stipulated in the contract, and by virtue of a clause contained in it, the contract became void. Ib. 3. In this state of things, Miller employed one Paulk to ascertain from Black the lowest price that he would take for the land, and then to sell to others for the highest price that he could get. Ib. 4. Paulk sold and assigned the contract to Davis for $1,050. Ib. 5. Upon the theory that Paulk and Davis entered into a fraudulent combination, still, Miller and others are not entitled to demand that a. court of equity should consider Davis as a trustee of the lands for their use. They had no interest in them, legal or equitable, nor any thing but a good will, which alone was the subject-matter of the fraud, if there was any. Ib. 6. But the evidence shows that this good will did not exist; for Black was not willing to sell to Miller and others for a less price than to any other person. Ib. 7. Although Paulk represented himself to be acting for Miller and others, when in reality he was representing Davis, yet he did not obtain the land at a reduced price thereby; but, on the contrary, at its fair market value. Ib. 8. The charges of fraud in the bill are denied in the answers, and the evidence is not sufficient to sustain the allegations. Ib. 9. The city of New Orleans sold a lot in the city fora certain sum of money, the payment of which was not exacted, but the interest of it, payable quarterly, remained as a ground rent upon the lot. It was furt er stipulated, that if two of these payments should be in arrear, the city should proceed judicially for the recovery of possession, with damages, and the vendees were to forfeit their title. Anderson v. Bock, 323. INDEX. 601 CONTRACT—(Continued.) 10. Six years afterwards, the city conveyed the same lot to another person, who transferred it to an assignee. Ib. 11. The title of the first vendee could not be divested without some judicial proceeding, and the dissolution of the contract could not be inferred merely from the fact that the city had made a second conveyance. Ib. 12. Therefore, the deed to the second vendee, and from him to his assignee, were not, of themselves, evidence to support the plea of prescription. The city, not having resumed its title in the regular mode, could not transfer either a lawful title or possession to its second vendee. Ib. CUSTOMS, COLLECTORS OF THE. 1. The act of Congress, passed on 2d March, 1799, (1 Stat, at Large, 705,) requires the bond given by a collector of the customs to be approved by the Comptroller of the Treasury. Broome v. United States, 143. 2. But the date of such approval is not conclusive evidence of the commencement of the period when the bond began to run. On the contrary, it begins to be effective from the moment when the collector and his sureties part with it in the course of transmission. Ib. 3. Hence, where the surety upon the bond of a collector in Florida, died upon the 24th of July, and the approval of the comptroller was not written upon the bond until the 31st of July, it was properly left to the jury to ascertain the time when the collector and his sureties parted with the bond to be sent to Washington; and they were instructed that, before they could find a verdict for the surety, they must be satisfied from the evidence that the bond remained in the hands of the collector, or the sureties, until after the 24th of July. Ib. 4. Collectors are often disbursing officers; and they and their sureties are responsible for the money which a collector receives from his predecessor in office; and also for money transmitted to him by another contractor upon his representation and requisition that it was necessary to defray the current expenses of his office, and advanced for that purpose. Ib. CUSTOM. See* Usage. DEED. 1. The city of New Orleans sold a lot in the city for a certain sum of money, the payment of which was not exacted, but the interest of it, payable quarterly, remained as a ground rent upon the lot. It was further stipulated, that if two of these payments should be in arrear, the city could proceed judicially for the recovery of possession, with damages, and the vendees were to forfeit their title. Anderson v. Bock, 323. 2. Six years afterwards, the city conveyed the same lot to another person, who transferred it to an assignee. Ib. 3. The title of the first vendee could not be divested without some judicial proceeding, and the dissolution of the contract could not be inferred merely from the fact that the city had made a second conveyance. Ib. 4. Therefore, the deed to the second vendee, and from him to his assignee, were not, of themselves, evidence to support the plea of prescription. The city, not having resumed its title in the regular mode, could not transfer either a lawful title or possession to its second vendee. Ib. ERROR. 1. Where a case was decided in a State court against a party, who was ordered to convey certain land, and he brought the case up to this court upon the ground that the contract for the conveyance of the land was contrary to the laws of the United States, this is not enough to give jurisdiction to this court under the 25th section of the judiciary act. Walworth v. Kneeland, 348. 2. The State court decided against him upon the ground that the opposite party was innocent of all design to contravene the laws of the United States. Ib. 3. But even if the State court had enforced a contract, which was fraudulent and void, the losing party has no right which he can enforce in this court, which cannot therefore take jurisdiction over the case. Ib. 602 INDEX. ERROR—(Continued.) 4. A person was sued in the Territorial court of Florida. After the admission of Florida as a State, the case was transferred to a State court. The defendant appeared, and pleaded the general issue. The verdict was given against him. He then moved in arrest of judgment, upon the ground that the case ought to have been transferred to the District Court of the United States, instead of a State court. The motion was overruled, and judgment entered up against him. Upon an appeal to the Supreme Court of Florida, this judgment was affirmed. This court has no jurisdiction under the 25th section of the judiciary act, to review that decision. Carter v. Bennett, 354. 5. What the State court decided, was the motion in arrest of judgment, where the record only is examined, and no new evidence admitted. There was nothing in the pleadings to show that the defendant was a citizen of Georgia, and no defect of jurisdiction was apparent. Ib. C. The defendant might have pleaded in abatement, that he was a citizen of Georgia, but not having done so, it was too late to introduce the matter upon a motion in arrest of judgment. Ib. 7. As it does not appear, therefore, that the Supreme Court of the State must have decided adversely to the party now claiming the interposition of this court, and decided so upon the construction of an act of Congress, the writ of error must be dismissed for want of jurisdiction. Ib. EVIDENCE. 1. In a suit brought for an infringement of a patent-right, the defendant ought to be allowed to give in evidence the patent under which he claims, although junior to the plaintiff’s patent. Corning v. Burden, 252. 2. Burden’s patent, for “a new and useful machine for rolling puddler’s balls and other masses of iron in the manufacture of iron,” was a patent for a machine, and not a process, although the language of the claim was equivocal. Ib. 3. The difference explained between a process and a machine. Ib. 4. Hence, it was erroneous for the Circuit Court to exclude evidence offered to show that the practical manner of giving effect to the principle embodied in the machine of the defendants was different from that of Burden, the plaintiff; that the machine of the defendants produced a different mechanical result from the other; and that the mechanical structure and mechanical action of the two machines were different. Ib. 5. Evidence offered as to the opinion of the witness upon the construction of the patent, whether it was for a process or a machine, was properly rejected. Ib. 6. A statute of Mississippi, passed in 1846, declares that no record of any judgment recovered in a foreign court against a citizen of that State, shall be received as evidence after the expiration of three years from the time of the rendition of such judgment, without the limits of the State. Murray v. Gibson, 421. 7. This statute has no application to judgments rendered before its passage. Hence, where it was pleaded as a defence in a suit brought upon a judgment recovered in Louisiana, in 1844, the plea was bad and a demurrer to it sustained. Ib. EXCEPTIONS. See Bill of Exceptions. EXECUTION. 1. Three judgments were entered up against a debtor on the same day. One of the creditors issued a capias ad satisfaciendum in February, and the other two issued writs of fieri facias upon the same day, in the ensuing month of March. Under the ca. sa. the defendant was taken and imprisoned, until discharged by due process of law. The plaintiff then obtained leave to issue a fi.fa., which was levied upon the same land previously levied upon. The marshal sold the property , under all the writs. The executions of the first fi. fa. creditors are entitled to be first satisfied out of the proceeds of sale. Bockhill v.Hanna, 189. 2. Each creditor having elected a different remedy, is entitled to a precedence in that which he has elected. Ib. INDEX. 603 EXECUTION—(Continued.) 3. Besides, the ca. sa. creditor, by imprisoning the debtor, postponed his lien, because it may happen, under certain circumstances, that the judgment is forever extinguished. If these do not happen, his lien is not restored as against creditors who have obtained a precedence during such suspension. Ib. 4. A plaintiff in a judgment, having the defendant in execution under a ca. sa., entered into an agreement with him that the plaintiff should, without prejudice to his rights and remedies against the defendant, permit him to be forthwith discharged from custody under the process, and that the defendant should go to the next session of the Circuit Court of the United States, and on the law side of that court make up an issue with the plaintiff, to try the question whether the defendant was possessed of the means, in or out of a certain marriage settlement, of satisfying the judgment against him. Magniac v. Thompson, 281. 5. The debtor was released; the issue made up; the cause tried in the Circuit Court; brought to this court, and reported in 7 Peters, 348. Ib. 6. By suing out the ca. sa., taking the defendant into custody, entering into the arrangement above mentioned, and discharging the defendant from custody, the plaintiff, in all legal intendment, admitted satisfaction of his demand, released the defendant from all liability therefor, and destroyed every effect of his judgment as the foundation of legal rights, lb. 7. In such a state of things, a court of equity will not interfere at the instance of the plaintiff. Ib. 8. The allegation of fraud in the marriage contract is not sustained by the evidence; nor was the refusal of the defendant to apply the property which accrued to him upon the death of his wife, to the discharge of the debt, a violation of the agreement under which he was released. Ib. 9. The averment in the bill, that the rights of the plaintiff under the judgment remained unimpaired, is incompatible with a right to resort to a court of equity. Ib. FRAUD. 1. Where a widow filed a bill in chancery, complaining that immediately upon the death of her husband, the son of that husband, together with another person, had imposed upon her by false representations, and induced her to part with all her right in her husband’s estate for an inadequate price, the evidence in the case did not sustain the allegation. Eyre et al. v. Potter, 42. 2. It is not alleged to be a case of constructive fraud, arising out of the relative position of the parties towards each other, but of actual fraud. Ib. 3. The answers deny the fraud and are made more emphatic by the complainant’s having put interrogatories to be answered by the defendants, and the evidence sustains the answers. Ib. 4. It will not do to set up mere inadequacy of price as a cause for annulling a contract made by persons competent and willing to contract, and, besides, there were other considerations acting upon the widow to induce her to make the contract. Ib. 5. The testimony offered to prove the mental imbecility of the widow, should be received with great caution, and is not sufficient. Ib. INDIAN COUNTRY. See Jurisdiction. INTERVENTION. 1. A person cannot intervene here who was no party to the suit in the court below. United States v. Patterson, 10. JUDGMENT. 1. A plaintiff in a judgment, having the defendant in execution under a ca. sa., entered into an agreement with him that the plaintiff should, without prejudice to his rights and remedies against the defendant, permit him to be forthwith discharged from custody under the process, and that the defendant should go to the next session of the Circuit Court of the United States, and on the law side of that court make up 604 INDEX. JUDGMENT—(Continued.) an issue with the plaintiff, to try the question whether the defendant was possessed of the means, in or out of a certain marriage settlement, of satisfying the judgment against him. Magniac v. Thompson, 281. 2. The debtor was released; the issue made up; the cause tried in the Circuit Court; brought to this court, and reported in 7 Peters, 348. Ib. 3. By suing out the ca. sa., taking the defendant into custody, entering into the arrangement above mentioned, and discharging the defendant from custody, the plaintiff, in all legal intendment, admitted satisfaction of his demand, released the defendant from all liability therefor, and destroyed every effect of his judgment as the foundation of legal rights. Ib. 4. In such a state of things, a court of equity will not intefere at the instance of the plaintiff. Ib. 5. The allegation of fraud in the marriage contract is not sustained by the evidence; nor was the refusal of the defendant to apply the property which accrued to him upon the death of his wife, to the discharge of the debt, a violation of the agreement under which he was released. Ib. 6. The averment in the bill, that the rights of the plaintiff under the judgment remained unimpaired, is incompatible with a right to resort to a court of equity. Ib. JURISDICTION. 1. Where a citizen of New Jersey was sued in a State court in New York, and filed his petition to remove the case into the Circuit Court of the United States, offering a bond with surety, the amount claimed in the declaration being one thousand dollars, it became the duty of the State court to accept the surety, and proceed no further in the cause. Kanouse v. Martin, 198. 2. Consequently, it was erroneous to allow the plaintiff to amend the record, and reduce his claim to four hundred and ninety-nine dollars. Ib. 3. The case having gone on to judgment, and been carried by writ of error to the Superior Court, without the petition for removal into the Circuit Court of the United States, it was the duty of the Superior Court to go behind the technical record, and inquire whether or not the judgment of the court below was erroneous. Ib. 4. The defendant was not bound to plead to the jurisdiction of the court below; such a step would have been inconsistent with his right, that all proceedings should cease when his petition for removal was filed. Ib. 5. The Superior Court being the highest court to which the case could be carried, a writ of error lies to examine its judgment, under the 25th section of the judiciary act. Ib. . 6. The Michigan Central Railroad Company, established in Michigan, made an agreement with the New Albany and Salem Railroad Company, established in Indiana, that the former would build and work a road in Indiana, under the charter of the latter. Northern Indiana Railroad Company v. Michigan Central Railroad Company, 233. 7. Another company, also established in Indiana, called the Northern n i ana Railroad Company, claiming an exclusive right to that part oi Indiana, filed a bill in the Circuit Court of the United States for the district of Michigan, against the Michigan Company, praying an injunction to prevent the construction of the road under the above agreement. Z6. . T1 8. The Circuit Court had no jurisdiction over such a case. lb. 9. The subject-matter of the controversy lies beyond the limits oi tne ms-trict, and where the process of the court cannot reach the locus in g 10. Moreover, the rights of the New Albany Company are seriously in the controversy, and they are not made parties to the sui . of Congress, providing for the non-joinder of parties who are habitants of the district, does not apply to such a case as the present. • 11. In 1836, the Legislature of Arkansas incorporated a bank with the us banking powers of discount, deposit, and circulation, the State being sole stockholder. Curran v. Stale of Arkansas, 304. INDEX. 605 JURISDICTION—(Continued.) 12. The bank went into operation, and issued bills in the usual form, but in November, 1839, suspended specie payments. Ib. 13. Afterwards the legislature passed several acts of the following description : 1843, January, continuing the corporate existence of the bank, and subjecting its affairs to the management of a financial receiver and an attorney, who were directed to cancel certain bonds of the State, held by the bank, for money borrowed by the State, and reduce the State’s capital in the bank by an equal amount. Ib. 1843, February, directing the officers to transfer to the State a certain amount of specie, for the purpose of paying the members of the legislature. Ib. 1845, January, requiring the officers to receive the bonds of the State, which had been issued as part of the capital of the bank, in payment for debts due to the bank. Ib. 1845, January, another act, taking away certain specie and par funds for the purpose of paying members of the legislature, and placing other funds to the credit of the State, subject to be drawn out by appropriation. lb. 1846, vesting in the State all titles to real estate or other property taken by the bank in payment for debts due to it. Ib. 1849, requiring the officers to receive, in payment for debts due to the bank, not only the bonds of the State, which had been issued to constitute the capital of the bank, but those, also, which had been issued to constitute the capital of other banking corporations, which were then insolvent. Ib: 14. Upon general principles of law, a creditor of an insolvent corporation can pursue its assets into the hands of all other persons, except bond fide creditors or purchasers, and there is nothing in the character of the parties in the present case, or in the laws transferring the property, to make it an exception to the general rule. For the Supreme Court of Arkansas has decided that the State can be sued in this case. Ib. 15. The bills of the bank being payable on demand, there was a contract with the holder to pay them; and these laws, which withdrew the assets of the bank into a different channel, impaired the obligation of this contract. Ib. 16. Nor does the repeal or modification of the charter of the bank by the legislature prevent this conclusion from being drawn. But in this case the charter of the bank has never been repealed. Ib. 17. Besides the contract between the bill-holder and the bank, there was a contract between the bill-holder and the State, which had placed funds in the bank for the purpose of paying its debts, and which had no right to withdraw those funds after the right of a creditor to them had accrued. Ib. 18. The State had no right to pass these laws, under the circumstances, either as a creditor of the bank, or as a trustee taking possession of the real estate for the benefit of all the creditors. Ib. 19. The several laws examined. Ib. 20. The Supreme Court of the State held these laws to be valid, and consequently, the jurisdiction of this court attaches under the 25th section or the judiciary act. Ib. 21. Where a case was decided in a State court against a party, who was ordered to convey certain land, and he brought the case up to this court upon the ground that the contract for the conveyance of the land was contrary to the laws of the United States, this is not enough to give jurisdiction to this court under the 25th section of the judiciary act. Walworth v. Kneeland, 348. 22. The State court decided against him upon the ground that the opposite party was innocent of all design to contravene the laws of the United States. Ib. 23. But even if the State court had enforced a contract, which was fraudu- 606 INDEX. JURISDICTION—(Continued.) lent and void, the losing party has no right which he can enforce in this court, which cannot therefore take jurisdiction over the case. Ib. 24. Where a contract was made with an attorney for the prosecution of a claim against Mexico for a stipulated proportion of the amount recovered, and services were rendered, the death of the owner of the claim did not dissolve the contract, but the compensation remained a lien upon the money when recovered. Wylie v. Coxe, 416. 25. A court of equity can exercise jurisdiction over the case if a more adequate remedy can be thus obtained than in a court of law. Ib. 26. The want of jurisdiction should have been alleged in the court below, either by plea or answer, if the defendant intended to avail himself of it. It is too late to urge it in an appellate court, unless it appears on the face of the proceedings. Ib. 27. A person was sued in the territorial court of Florida. Carter v. Bennett, 354. 28. After the admission of Florida as a State, the case was transferred to a State court. Ib. 29. The defendant appeared, and pleaded the general issue. Ib. 30. The verdict was given against him. Ib. 31. He then moved in arrest of judgment, upon the ground that the case ought to have been transferred to the District Court of the United States, instead of a State court. Ib. 32. The motion was overruled, and judgment entered up against him. Ib. 33. Upon an appeal to the Supreme Court of Florida, this judgment was affirmed. Ib. 34. This court has no jurisdiction under the 25th section of the judiciary act, to review that decision. Ib. 35. What the State court decided was the motion in arrest of judgment, where the record only is examined, and no new evidence admitted. There was nothing in the pleadings to show that the defendant was a citizen of Georgia, and no defect of jurisdiction was apparent. Ib. 36. The defendant might have pleaded in abatement, that he was a citizen of Georgia, but not having done so, it was too late to introduce the matter upon a motion in arrest of judgment. Ib. 37. As it does not appear, therefore, that the Supreme Court of the State must have decided adversely to the party now claiming the interposition of this court, and decided so upon the construction of an act of Congress, the writ of error must be dismissed for want of jurisdiction. Ib. . 38. In June, 1884, Congress passed an act, by virtue of which the Circuit Court of the United States for the District of Arkansas, was vested with power to try offences committed within the Indian country. United States v. Dawson, 467. 39. In July, 1844, it was alleged that a murder was committed in that country. Ib. 40. In April, 1845, an indictment was found by the grand jury, m the Circuit Court of the United States for the District of Arkansas, against a person charged with committing the murder. Ib. 41. In March, 1851, Congress passed an act erecting nine of the Western counties and the Indian country into a new judicial district, directing the judge to hold two terms there, and giving him jurisdiction ot all causes, civil or criminal, except appeals and writs of error, which are cognizable before a Circuit Court of the United States. Ib. 42. The residue of the State remained a judicial district to be styled the Eastern District of Arkansas. Ib. , 43. This act of Congress did not take away the power and jurisdiction ot tne Circuit Court of the United States for the Eastern District to try the indictment pending. Ib. LANDS—PUBLIC. , . . . 1. Two grants of land in the country known as the neutral territory, lying between the Sabine River and the Arroyo Hondo, confirmed, namely, INDEX. 607 LANDS, PUBLIC—(Continued.) one for La Nana, granted in 1798, and the other for Los Ormegas granted* in 1795. United States v. Davenport’s Heirs, 1. 2. These grants were made by the commandant of the Spanish post of Nacogdoches, who at that time had power to make inchoate grants. Ib. 3. In both cases, the grants had defined metes and bounds, and the grantees were placed in possession by a public officer, and exercised many acts of ownership. Ib. 4. The evidence of the grants was copies made by the commandant of the post, and also copies made by the land-office in Texas. These copies, under the circumstances, are sufficient. Ib. 5. At the date of these grants, it was necessary to obtain the ratification of the civil and military governor before the title became perfected. This not having been done in the present case, the title was imperfect, although the petition alleges that it was perfect, and the District Court had jurisdiction under the acts of 1824 and 1844. Ib. 6. But the District Court ought not to have decreed that floats should issue where the United States, had sold portions of the land, because these vendees were not made parties to the proceedings. Ib. 7. A claimant of a share of the grants spoken of in the preceding case, having failed to produce evidence of the right of his grantor to convey to him, cannot have a decree in his favor. United States v. Patterson, 10. 8. A person cannot intervene here who was no party to the suit in the District Court. And even if the practice of this court sanctioned such intervention, there is nothing to show his right to do so in this case. Ib. 9. The heirs of D’Auterieve claimed a tract of land near the river Mississippi, upon two grounds, viz. 1st, Under a grant to Duvernay, by the Western or Mississippi Company, in 1717, and a purchase from him by D’Auterieve, the ancestor, accompanied by the possession and occupation of the tract from 1717 to 1780: and 2d, Under an order of survey of Unzaga, Governor of the province of Louisiana, in 1772, an actual survey made, and a confirmation thereof by the governor. United States v. D’Auterieve, 14. 10. With respect to the first ground of title, there is no record of the grant to Duvernay, nor any evidence of its extent. It is therefore without boundaries or location; and, if free from these objections, it would be a perfect title, and therefore not within the jurisdiction of the District Court, under the acts of 1824 and 1844. Ib. 11. With respect to the second ground of title, if the proceedings of Unzaga be regarded as a confirmation of the old French grant, then the title would become a complete one, and beyond the jurisdiction of the District Court. Ib. 12. If they are regarded as an incipient step in the derivation of a title under the Spanish government, then the survey did not extend to the back lands, which are the property in question, but only included the front upon the river, which was surrendered to the governor in 1780. Ib. 13. Neither the upper or lower side line, nor the field notes, justify the opinion that the survey included the back lands. A letter addressed to Unzaga by the surveyor is so ambiguous, that it must be controlled by the field notes and map. Ib. 14. The neglect of the parties to set up a claim, from 1780 to 1821, and the acts of the Spanish government, in granting concessions within the limits now claimed, furnish a presumption of the belief of the parties, that the whole property was surrendered in 1780. Ib. 15. Under the laws of 1824 and 1844, relating to the confirmation of land titles, where a claimant filed his petition, alleging a patent under the French government of Louisiana, confirmed by Congress, and claiming floats for land which had been sold, within his grant, by the United States to other persons, the mere circumstance, that the court had jurisdiction to decree floats in cases of incomplete titles, did not give it jurisdiction to decree floats in cases of complete titles. United States v. Roselius et al., 31. 608 . INDEX. LAND S, PUBLIC—(Continued.) 16. This title having been confirmed by Congress, without any allowance for the sales of lands included within it, the confirmation must’be considered as a compromise accepted by the other party who thereby relinquished his claim to floats. Ib. 17. If the title be considered as a perfect title, this court has already adjudged (9 Howard, 143) that the District Court had no jurisdiction over such titles. Ib. 18. The claimant in this case prayed that the side lines of his tract might be widened by diverging instead of parallel lines; but this court, in this same case, formerly (3 Howard, 693) recognized the validity of a decree of the Supreme Court of Louisiana, which decided that the lines should be parallel, and not divergent. The District Court of the United States ought to have conformed its judgment to this opinion. Ib. 19. Moreover, the claimant in this case did not state in his petition what lands had been granted by the United States, nor to whom, nor did he make the grantees parties; all of which ought to have been done before he could have been entitled to floats. Ib. 20. Where a party claimed title to a tract of land in Louisiana, under a judicial sale in 1760, and alleged that he and those under whom he claimed, had been in peaceable possession ever since the sale, a case of perfect title is presented which is not within the jurisdiction of the District Court, under the acts of 1824 and 1844. Ib. 21. Upon the sufficiency of the evidence to sustain the title, no opinion is expressed. Ib. 22. A grant of land in Louisiana, by the French authorities, in 1764, is void. The province was ceded to Spain in 1762. (See 10 Howard, 610.) United States v. Duer os, 38. 23. In 1793, certain legal proceedings were had before Baron de Carondelet, in his judicial capacity, wherein the property now claimed is described as part of the estate of the grantor of the present claimant. But this did not amount to a confirmation of the title in his political character; and if it did, the title would be a perfect one, and beyond the jurisdiction of the District Court, under the acts of 1824 and 1844. Ib. 24. By two acts, passed in 1820 and 1823, Congress granted a lot in the village of Peoria, in the State of Illinois, to each settler who “had not heretofore received a confirmation of claim or donation of any tract of land or village lot from the United States. Forsyth v. Reynolds, 358. 25. Lands granted to settlers in Michigan, prior to the surrender of the western posts by the British government, and which grants were made out to carry out Jay’s treaty in 1794, were not donations so as to exclude a settler in Peoria from the benefit of the two acts of Congress above mentioned. Ib. . 26. In 1841, Congress passed an act (5 Stat, at Large, 455) declaring that there shall be granted to each State, &c. (Louisiana being one), five hundred thousand acres of land. Foley v. Harrison, 433. 27. This act did not convey the fee to any lands whatever; but left the land system of the United States in full operation as to regulation of titles, so as to prevent conflicting entries. Ib. t T • 28. Hence, where a plaintiff claimed under a patent from the State ot Louisiana, and entries only in the United States office; and the defendan claimed under patents from the United States, the title of the latter is the better in a petitory action. Ib. 29. The defendant has also the superior equity; because his entries were prior in time to those of the plaintiff, and the decision of a board, consisting of the Secretary of the Treasury, the Attorney-General, and the Commissioner of the Land Office, to whom the matter had een referred by an act of Congress, was in favor of the defendant, /o. 30. The several acts of Congress, passed in relation to claims to land m Missouri, under Spanish concessions, reserved such lands from sale irom time to time. But there was an intermission of such legislation irom the 29th of May, 1829, to the 9th of July, 1832; and, during this inter- INDEX. 609 LANDS, PUBLIC—(Continued.) val, lands so claimed were upon the footing of other public lands, as to sale, entry, and so forth. Delauriere v. Emison, 525. 31. By an act of the 6th of March, 1820, (3 Stat, at L., 545,) Congress gave a -certain amount of land to the State of Missouri, to be selected by the legislature thereof, on or before the 1st of January, 1825; and by another act, passed on the 3d of March, 1831, (4 Stat, at L., 492,) the legislature were authorized to sell this land. Ib. 32. Before the 1st of January, 1825, the legislature selected certain lands, which were then claimed under Spanish concessions, and reserved from sale under the acts of Congress first mentioned. Ib. 33. In November, 1831, the land so selected was sold by the legislature, in conformity with the act of Congress of the preceding March. Ib. 34. This sale having been made in the interval between May, 1829, and July, 1832, conveyed a valid title, although the claimant to the same land was subsequently confirmed in his title by Congress, in 1836. Ib. LEASE. 1. When broken, the lessor must recover possession and regain title by a judicial proceeding. Anderson v. Bock, 323. LOUISIANA. 1. McDonogh, a citizen of Louisiana, made a will, in which, after bequeathing certain legacies not involved in the present controversy, he gave, willed, and bequeathed all the rest, residue, and remainder of his property to the corporations of the cities of New Orleans and Baltimore forever, one half to each, for the education of the poor in those cities. McDonogh’s Executors v. Murdoch, 367. 2. The estate was to be converted into real property, and managed by six agents, three to be appointed by each city. Ib. 3. No alienation of this general estate was ever to take place, under penalty of forfeiture, when the States of Maryland and Louisiana were to become his residuary devisees for the purpose of educating the poor of those States. Ib. 4. Although there is a complexity in the plan by which the testator proposed to effect his purpose, yet his intention is clear to make the cities his legatees; and his directions about the agency are merely subsidiary to the general objects of his will, and whether legal and practicable, or otherwise, can exert no influence over the question of its validity. Ib. 5. The city of New Orleans, being a corporation established by law, has a right to receive a legacy for the purpose of exercising the powers which have been granted to it, and amongst these powers and duties is that of establishing public schools for gratuitous education. Ib. 6. The civil and English law upon this point compared: The dispositions of the property in this will are not “ substitutions, or fidei commissa,” which are forbidden by the Louisiana code. Ib. 7. The meaning of those terms explained and defined: The testator-was authorized to define the use and destination of his legacy. Ib. 8. The conditions annexed to this legacy, the prohibition to alienate or to divide the estate, or to separate in its management the interest of the cities, or their care and control, or to deviate from the testator’s scheme, do not invalidate the bequest, because the Louisiana Code provides that “ in all dispositions inter vivos and mortis causa, impossible conditions, those which are contrary to the laws or to morals, are reputed not written.” Ib. 9. The difference between the civil and common law, upon this point, examined : The city of Baltimore is entitled and empowered to receive this legacy under the laws of Maryland; and the laws of Louisiana do not forbid it. The article in the code of the latter State, which says that “ Donations may be made in favor of a stranger, when the laws of his country do not prohibit similar dispositions in favor of a citizen of this State,” does not most probably apply to the citizens or corporations of the Vol. xv.—39 610 INDEX. LOUISIANA—(Continued.) States of the Union. Moreover, the laws of Maryland do not prohibit similar dispositions in favor of a citizen of Louisiana. Ib. 10. The destination of the legacy to public uses in the city of Baltimore, does not affect the valid operation of the bequest in Louisiana. Ib. 11. The cities of New Orleans and Baltimore, having the annuities charged upon their legacies, would be benefited by the invalidity of these legacies. Upon the question of their validity, this court expresses no opinion. But the parties to this suit, viz., the heirs at law, could not claim them. Ib. 12. In case of the failure of the devise to the cities, the limitation over to the States of Maryland and Louisiana would have been operative. Ib. MISSISSIPPI. See Statutes, Construction of. NEW JERSEY. 1. The soil under the public navigable waters of East New Jersey belongs to the State and not to the proprietors. This court so decided in the case of Martin v. Waddell, 16 Pet., 367; and the principle covers a case where land has been reclaimed from the water under an act of the legislature. Den v. Jersey Company, 426. NEW ORLEANS. For McDonogh’s Will, see “ Wills.” PARTNERSHIP. See Award. PATENTS FOR LAND. 1. In 1841, Congress passed an act (5 Stat, at L., 455) declaring that there shall be granted to each State, &c., (Louisiana being one,) five hundred thousand acres of land. Foley v. Harrison, 433. 2. This act did not convey the fee to any lands whatever; but left the land system of the United States in full operation as to regulation of titles, so as to prevent conflicting entries. Ib. 3. Hence, where a plaintiff claimed under a patent from the State of Louisiana, and entries only in the United States office; and the defendant claimed under patents from the United States, the title of the latter is the better in a petitory action. Ib. 4. The defendant has also the superior equity; because his entries were prior in time to those of the plaintiff, and the decision of a board, consisting of the Secretary of the Treasury, the Attorney-General, and the Commissioner of the Land Office, to whom the matter had been referred bv an act of Congress, was in favor of the defendant, lb. PATENT-RIGHTS. 1. Morse was the first and original inventor of the electro-magnetic telegraph, for which a patent was issued to him in 1840, and reissued in 1848. His invention was prior to that of Steinheil of Munich, or Wheatstone or Davy of England. O'Reilly et al. v. Morse et al., 63. 2. Their respective dates compared. Ib. 3. But even if one of these European inventors had preceded him for a short time, this circumstance would not have invalidated his patent. A previous discovery in a foreign country does not render a patent void, unless such discovery, or some substantial part of it, had been before patented or described in a printed publication. And these inventions are not shown to have been so. Ib. f 4. Besides, there is a substantial and essential difference between Morse s and theirs, that of Morse being decidedly superior. Ib. 5. An inventor does not lose his right to a patent because he has made inquiries or sought imformation from other persons. If a combination of different elements be used, the inventors may confer with men, as well as consult books, to obtain this various knowledge. Ib. 6. There is nothing in the additional specifications in the reissued patent of 1848, inconsistent with those of the patent of 1840. Ib. 7. The first seven inventions, set forth in the specifications of his claims, are not subject to exception. The eighth is too broad, and covers too INDEX. 611 PATENT-RIGHTS—(Continued.) much ground. It is this: “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specifications and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for making or printing intelligible characters, signs, or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer.” Ib. 8. The case of Neilson et al. v. Harford et al., in the English Exchequer Reports, examined; and also the American decisions. The acts of Congress do not justify a claim so extensive. Ib. 9. But, although the patent is illegal and void, so far as respects the eighth claim, yet the patentee is within the act of Congress, which gives him a right to disclaim, and thus save the portion to which he is entitled. No disclaimer having been entered before the institution of this suit, the patentee is not entitled to costs. Ib. 10. In 1846, Morse obtained a second patent for the local circuits, which was reissued in 1848. It is no objection to this patent, that it was embraced in the eighth claim of the former one, because that eighth claim was void. Nor is it an objection to it, that it was an improvement upon the former patent, because a patentee has a right to improve his own invention. Ib. 11. This new patent and its reissue were properly issued. The improvement was new, and not embraced in the former specification. Ib. 12. These two patents of 1848, being good, with the exception of the eighth claim, are substantially infringed upon by O’Reilly’s telegraph, which uses the same means, both upon the main line and upon the local circuits. Ib. 13' The preceding case of O’Reilly and Morse having settled the principles involved in the controversy between them, this court declines to hear an argument upon technical points of pleading in a branch of the case coming from another State. Smith v. Ely, 137. 14. The case is remanded to the Circuit Court. Ib. 15. A machine for planing boards, and reducing them to an equal thickness throughout, which was patented by Norcross, decided not to be an infringement of Woodworth’s planing machine, for which a patent was obtained in 1828, reissued in 1845. Brooks et al. v. Fiske, 212. 16. The operation of both machines explained. Ib. 17. In a suit brought for an infringement of a patent-right, the defendant ought to be allowed to give in evidence the patent under which he claims, although junior to the plaintiff’s patent. Corning v. Burden, 252. 18. Burden’s patent, for “ a new and useful machine for rolling puddler’s balls and other masses of iron in the manufacture of iron,” was a patent for a machine, and not a process, although the language of the claim was equivocal. Ib. 19. The difference explained between a process and a machine. Ib. 20. Hence, it was erroneous for the Circuit Court to exclude evidence offered to show that the practical manner of giving effect to the principle embodied in the machine of the defendants was different from that of Burden, the plaintiff; that the machine of the defendants produced a different mechanical result from the other; and that the mechanical structure and mechanical action of the two machines were different. Ib. 21. Evidence offered as to the opinion of the witness upon the construction of the patent, whether it was for a process or a machine, was properly rejected. Ib. r J 22. A patent was taken out for making the body of a burden railroad car of sheet iron, the upper part being cylindrical, and the lower part in the form of a frustum of a cone, the under edge of which has a flange secured upon it, to which flange a movable bottom is attached. Winans v. Denmead, 330. 23. The claim was this: “ What I claim as my invention, and desire to secure 612 INDEX. PATENT-RIGHTS—(Continued.) by letters-patent, is, making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which, also, the lower part is so reduced as to pass down within the truck frame and between the axles, to lower the centre of gravity of the load, without diminishing the capacity of the car, as described. I also claim extending the body of the car below the connecting pieces of the truck frame and the line of draught, by passing the connecting bars of the truck frame and the draught bar, through the body of the car substantially described.” Ib. 24. This patent was not for merely changing the form of a machine, but by means of such change to introduce and employ other mechanical principles or natural powers, or a new mode of operation, and thus attain a new and useful result. Ib. 25. Hence, where, in a suit brought by the patentee against persons who had constructed octagonal and pyramidal cars, the District Judge ruled that the patent was good for conical bodies, but not for rectilinear bodies; this ruling was erroneous. Ib. 26. The structure, the mode of operation, and the result attained, were the same in both, and the specification claimed in the patent covered the rectilinear cars. With this explanation of the patent, it should have been left to the jury to decide the question of infringement as a question of fact. Ib. 27. Where the assignors of a patent-right were joined with the assignee fora particular locality, in a bill for an injunction to restrain a defendant from the use of the machine patented, and the defendant raised, in this court, and after a final decree, an objection arising from a misjoinder of parties, the objection comes too late. Livingston v. Woodworth, 546. 28. Moreover, in the present case, the parties consented to the decree under which the account in controversy was adjusted. Ib. 29. That consent having been given, however, to a^. decree by which an account should be taken of gains and profits, according to the prayer of the bill, the defendant was not precluded from objecting to the account upon the ground that it went beyond the order. . Ib. 30. The report having been recommitted to the master, with instructions to ascertain the amount of profits which might have been realized with due diligence, and the master having framed his report upon the theory of awarding damages, this report, and the order of the court confirming it, were both erroneous. Ib. 31. Under the circumstances of this case, the decree should have been tor only the actual gains and profits during the time when the machine was in operation and during no other period. Ib. PLANING-MACHINE. 1. A machine for planing boards, and reducing them to an equal thickness throughout, which was patented by Norcross, decided not to be an infringement of Woodworth’s planing machine, for which a patent was obtained in 1828, reissued in 1845. Brooks et al. v. Fiske, 212. 2. The operation of both machines explained. Ib. PLEAS AND PLEADINGS. . 1. Where a clerk of a court was sued upon his official bond, and the breacn alleged was, that he had surrendered certain goods without taking a bond with good and sufficient securities, and the plea was, that the on which had been taken was assigned to the plaintiffs, who had brought suit, and received large sums of money in discharge of the bon , this plea was sufficient, and a demurrer to it was properly overruled. Bevins v. Ramsey, 179. • -\r v v 2. Where a citizen of New Jersey was sued in a State court in New xotk, and filed his petition to remove the case into the Circuit Court or tne United States, offering a bond with surety, the amount claimed in tne I INDEX. 613 PLEAS AND PLEADINGS—(Continued.) declaration being one thousand dollars, it became the duty of the State court to accept the surety, and proceed no further in the cause. Kanouse v. Martin, 198. 3. Consequently, it was erroneous to allow the plaintiff to amend the record, and reduce his claim to four hundred and ninety-nine dollars. Ib. 4. The case having gone on to judgment, and been carried by writ of error to the Superior Court, without the petition for removal into the Circuit Court of the United States, it was the duty of the Superior Court to go. behind the technical record, and inquire whether or not the judgment of the court below was erroneous. Ib. 5. The defendant was not bound to plead to the jurisdiction of the court below; such a step would have been inconsistent with his right, that all proceedings should cease when his petition for removal was filed. Ib. 6. The Superior Court being the highest court to which the case could be carried, a writ of error lies to examine its judgment, under the 25th section of the judiciary act. Ib. 7. Prescription cannot be pleaded, where the assignor of the party who offers to plead it was a lessor, and had not regained possession, by a judicial proceeding, of the property which had been previously leased, Anderson v. Bock, 323. 8. A statute of Mississippi, passed in 1846, declares that no record of any judgment recovered in a foreign court against a citizen of that State, shall be received as evidence after the expiration of three years from the time of the rendition of such judgment, without the limits of the State. Murray v. Gibson, 421. 9. This statute has no application to judgments rendered before its passage. Hence, where it was pleaded as a defence in a suit brought upon a judgment recovered in Louisiana, in 1844, the plea was bad and a demurrer to it sustained. Ib. PRACTICE. See Appeal and Chancery. 1. The preceding case of O’Reilly and Morse having settled the principles involved in the controversy between them, this court declines to hear an argument upon technical points of pleading in a branch of the case coming from another State. Smith v. Ely, 137. 2. The case is remanded to the Circuit Court. Ib. 3. In order to make a bill of exceptions valid, it must appear by the transcript not only that the instructions were given or refused at the trial, but also that the party who complains of them excepted to them while the jury were at the bar. Phelps v. Mayer, 160. 4. The bill of exceptions need not be drawn out in form and signed before the jury retire; but it must be taken in open court, and must appear by the certificate of the judge who authenticates it, to have been so taken. Ib. 5. Hence, when the verdict was rendered on the 13th December, and on the next day the plaintiff came into court and filed his exception, it is not properly before this court. And no error being assigned or appearing in the other proceedings, the judgment of the Circuit Court must be affirmed, with costs. Ib. 6. Three judgments were entered up against a debtor on the same day. Rockhill v. Hanna, 189. 7. One of the creditors issued a capias ad satisfaciendum in February, and the other two issued writs of fieri facias upon the same day, in the ensuing month of March. Ib. 8. Under the ca. sa. the defendant was taken and imprisoned, until discharged by due process of law. The plaintiff then obtained leave to issue a ft. fa., which was levied upon the same land previously levied upon. The marshal sold the property under all the writs. Ib. 9. The executions of the first fi. fa. creditors are entitled to be first satisfied out of the proceeds of sale. Ib. 614 INDEX. PRACTICE—(Continued.) 10. Each creditor having elected a different remedy, is entitled to a precedence in that which he has elected. Ib. 11. Besides, the ca. sa. creditor, by imprisoning the debtor, postponed his lien, because it may happen, under certain circumstances, that the judgment is forever extinguished. If these do not happen, his lien is not restored as against creditors who have obtained a precedence during such suspension. Ib. 12. The Circuit Court having instructed the jury that, in its opinion, and the written proofs and law of the case, the plea of prescription must prevail, and the written proofs not being in the record, this court cannot test the accuracy of its conclusion. Anderson v. Bock, 323. 13. Where the assignors of a patent-right were joined with the assignee for a particular locality, in a bill for an injunction to restrain a defendant from the use of the machine patented, and the defendant raised in this court, and after a final decree, an objection arising from a misjoinder of parties, the objection comes too late. Livingston v. Woodworth, 546. RAILROADS. 1. A patent was taken out for making the body of a burden railroad car of sheet iron, the upper part being cylindrical, and the lower part in the form of a frustum of a cone, the under edge of which has a flange secured upon it, to which flange a movable bottom is attached. Winans v. Denmead, 330. 2. The claim was this: “ What I claim as my invention, and desire to secure by letters-patent, is, making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which, also, the lower part is so reduced as to pass down within the truck frame and between the axles, to lower the centre of gravity of the load, without diminishing the capacity of the car, as described. I also claim extending the body of the car below the connecting pieces of the truck frame and the line of draught, by passing the connecting bars of the truck frame and the draught bar, through the body of the car substantially described.” Ib. 3- This patent was not for merely changing the form of a machine, but by means of such change to introduce and employ other mechanical principles or natural powers, or a new mode of operation, and thus attain a new and useful result. Ib. 4. Hence, where, in a suit brought by the patentee against persons who had constructed octagonal and pyramidal cars, the District Judge ruled that the patent was good for conical bodies, but not for rectilinear bodies, this ruling was erroneous. Ib. . ,, 5. The structure, the mode of operation, and the result attained, were the same in both, and the specification claimed in the patent covered the rectilinear cars. With this explanation of the .patent, it should have been left to the jury to decide the question of infringement as a question of fact. Ib. REMOVAL OF CAUSES. See Jurisdiction. STATUTES, CONSTRUCTION OF. 1. A statute of Mississippi, passed in 1846, declares that no record ot any judgment recovered in a foreign court against, a citizen of that c a e, shall be received as evidence after the expiration of three years r0*11 the time of the rendition of such judgment, without the limits o e State. Murray v. Gibson, 421. 2. This statute has no application to judgment rendered before its passage. Hence, where it was pleaded as a defence, in a suit brought upon a ju g ment recovered in Louisiana, in 1844, the plea was bad, and a demurrer to it sustained. Ib. SURETIES. \ „ x x t wiki 1. The act of Congress, passed on 2d March, 1799, (1 Stat, at Large, 76 ,) INDEX. 615 SURETIES—(Continued.) requires the bond given by a collector of the customs to be approved by the Comptroller of the Treasury. Broome v. United States, 143. 2. But the date of such approval is not conclusive evidence of the commencement of the period when the bond began to run. On the contrary, it begins to be effective from the moment when the collector and his sureties part with it in the course of transmission. Ib. 3. Hence, where the surety upon the bond of a collector in Florida, died upon the 24th of July, and the approval of the comptroller was not written upon the bond until the 31st of July, it was properly left to the jury to ascertain the time when the collector and his sureties parted with the bond to be sent to Washington; and'they were instructed that, before they could find a verdict for the surety, they must be satisfied from the evidence that the bond remained in the hands of the collector, or the sureties, until after the 24th of July. Ib. 4. Collectors are often disbursing officers; and they and their sureties are responsible for the money which a collector receives from his predecessor in office; and also for money transmitted to him by another collector upon his representation and requisition that it was necessary to defray the current expenses of his office, and advanced for that purpose. Ib. TELEGRAPH. See Patent-Rights. TREATY. 1. By two acts, passed in 1820 and 1823, Congress granted a lot in the village of Peoria, in the State of Illinois, to each settler who “ had not heretofore received a confirmation of claim or donation of any tract of land or village lot from the United States. Forsyth v. Reynolds, 358. 2. Lands granted to settlers in Michigan, prior to the surrender of the western posts by the British government, and which grants were made out to carry out Jay’s treaty in 1794, were not donations so as to exclude a settler in Peoria from the benefit of the two acts of Congress above mentioned. Ib. USAGE. 1. Where a note was given in the District of Columbia on the 11th of March, payable sixty days after date, and notice of its non-payment was given to the indorser on the 15th of May, (being Monday,) the notice was not in time. Adams v. Otterback, 539. 2. Although evidence was given that since 1846, the bank which was the holder of the note, had changed the preexisting custom, and had held the paper until the fourth day of grace, giving notice to the indorser on Monday, when the note fell due on Sunday. This was not sufiicient to establish an usage. Ib. 3. An usage, to be binding, must be general, as to place, and not confined to a particular bank, and, in order to be obligatory, must have been acquiesced in, and become notorious. Ib. VENDOR AND PURCHASER. See Contract. WILLS. 1. McDonogh, a citizen of Louisiana, made a will, in which, after bequeathing certain legacies not involved in the present controversy, he gave, willed, and bequeathed all the rest, residue, and remainder of his property to the corporations of the cities of New Orleans and Baltimore forever, one half to each, for the education of the poor in those cities. McDonogh’s Executors v. Murdoch, 367. 2. The estate was to be converted into real property, and managed by six agents, three to be appointed by each city. Ib. 3. No alienation of this general estate was ever to take place, under penalty of forfeiture, when the States of Maryland and Louisiana were to become his residuary devisees for the purpose of educating the poor of those States. Ib. 4. Although there is a complexity in the plan by which the testator pro- 616 INDEX. WILLS—(Continued.) posed to effect his purpose, yet his intention is clear to make the cities his legatees ; and his directions about the agency are merely subsidiary to the general objects of his will, and whether legal and practicable, or otherwise, can exert no influence over the question of its validity. Ib. 5. The city of New Orleans, being a corporation established by law, has a right to receive a legacy for the purpose of exercising the powers which have been granted to it, and amongst these powers and duties is that of establishing public schools for gratuitous education. Ib. 6. The civil and English law upon this point compared: The dispositions of the property in this will are not “ substitutions, or fidei commissa,” which are forbidden by the Louisiana code. Ib. 7. The meaning of those terms explained and defined: The testator was authorized to define the use and destination of his legacy. Ib. 8. The conditions annexed to this legacy, the prohibition to alienate or to divide the estate, or to separate in its management the interest of the cities, or their care and control, or to deviate from the testator’s scheme, do not invalidate the bequest, because the Louisiana Code provides that “ in all dispositions inter vivos and mortis causa, impossible conditions, those which are contrary to the laws or to morals, are reputed not written.” Ib. 9. The difference between civil and common law, upon this point, examined: The city of Baltimore is entitled and empowered to receive this legacy under the laws of Maryland; and the laws of Louisiana do not forbid it. The article in the code of the latter State, which says that “ Donations may be made in favor of a stranger, when the laws of his country do not prohibit similar dispositions in favor of a citizen of this State,” does not most probably apply to the citizens or corporations of the States of the Union. Moreover, the laws of Maryland do not prohibit similar dispositions in favor of a citizen of Louisiana. Ib. 10. The destination of the legacy to public uses in the city of Baltimore, does not affect the valid operation of the bequest in Louisiana. Ib. 11. The cities of New Orleans and Baltimore, having the annuities charged upon their legacies, would be benefited by the invalidity of these legacies. Upon the question of their validity, this court expresses no opinion. But the parties to this suit, viz. the heirs at law, could not claim them. Ib. M2. In case of the failure of the devise to the cities, the limitation over to the States of Maryland and Louisiana would have been operative, lb.