source: Caselaw Access Project

author: Mr. Justice Story

license: Public Domain

text:
    The Philadelphia and Trenton Railroad Company, Plaintiffs in error, vs. James Stimpson, Defendant in error.
    Action for the violation of a patent right, granted to the patentee for “ a new and useful improvement in turning short curves on railroads.”
    On the 26th September, 1835, a second patent was granted, the original patent, granted in 1831, having been surrendered and cancelled on account of a defective specification; . the second patent being for fourteen years from the date bf the .original patent. The second patent was in the precise form of the Srigihal, except the recital of the fact, that ' the former patent was cancelled “ on account óf a defective specification,” and the statement of the time the second patent was to begin to run. It was objected that the ’ second patent should not be admitted in eyidence on the trial of the case, because^it did not contain any recitals that the- prerequisites of the act of Congress of 1836,’authorizing the renewal of patents, had been complied with. Held: that this objection cannot,' in point of law, be maintained. The patent was issued under the . great seal of the United States, and is signed by the President, and countersigned by. the Secretary of State. It is a presumption of law, that all public offieers, and especially such high functionaries, perform their proper official duties, until the contrary is proved. Where an act is to be done, or patent’granted upon evidence and proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act, in granting the patent, is prima facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs,’ when the law has made the officer the proper judge of their sufficiency and’competency. .
    Patents for lands, equally with patents for inventions, have, in’ Courts of justice, been deemed prima facie evidence that they have been regularly granted, whenever they have been produced under the great seal of the government, without any recitals or proofs that the, prerequisites of the acts under which they have been issued have been duly observed. In cases of patents, the United States have gone one step further; and as the patentee is required' to make oath that he is. the true inventor, before he can obtain a patent, the ■ ■ patent has been deemed prima facie evidence that he has made the invention.
    It is incumbent on those who seek to show that the examination of a witness has been improperly rejected, to establish their right to have the evidence admitted; for the Court will be presumed to have acted correctly, until the contrary is established.
    To entitle a party to examine a witness in a patent cause, the purpose of whdse testimony is to disprove tjie right of the patentee to the invention, by showing its use prior to the patent by others, the provisions of the patent act of 1836, relative to notice, must be strictly complied with.
    It is incumbent on those who insist upon the right to put particular^questions to a witness, to establish that right beyond any reasonable doubt, for the very purpose stated by them; and they, are not afterwards at liberty to desert that purpose, and to show the pertinency or relevancy of the evidence for any other purpose not then suggested to the Court.
    A party has no right to cross-examine any witness, except as to facts and circumstances connected with the matters stated in his direct examination. If he wishes to examine him on other matters, he must do so by making the witness his Own; and calling him as such, in the subsequent progress’of the cause. A party cannot, by his own omission to take an objection to the admission of improper evidence, brought out on a cross-examination, found a right to introduce testimony in chief, to rebut it or explain it.
    Parol evidence, bearing upon written contracts and papers, ought not to be admitted in evidence, without the production of such written contracts or papers; so as to enable both the Court and the jury to see whether or not the admission of the parol evidence in "any manner, yvill trench upon the rule that parol evidence is not admissible to vary or contradict written contracts or papers.
    As a general rule, and upon general principles, the declarations and conversations of the .plaintiff ore not admissible evidence in favour of his own rights. This is, however, but . a general rule, and admits and requires various exceptions. There are many cases in which a party may show his declarations comport with, acts in his own favour, as a part of the res geste. There are other oases in which his material declarations have been admitted.
    In an action for an assault and battery and wounding, the' declarations of the plaintiff to his internal pains, aches, injuries, .and symptoms, to the physician attending him, are admissible for the purpose of showing the nature and extent of the injuries done to him. In many cases of inventions, it is hardly possible in any other manner to ascertain the precise time and exact origin of the invention. .
    The conversations and declarations of a patentee, merely affirming that at some former period he had invented a particular machine, may well be objected to. But his conversations and declarations, stating that he had made an invention, and describing its details, and explaining its operations, are properly deemed an assertion of his right, at that time, as an inventor, to the extent of the facts and details which he then makes known, although not of their existence at an anterior time. Such declarations, coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestee, and legitimate evidence that the invention was then known and claimed by.him; and thus its origin may be fixed at least as early as that period.
    If the rejection of evidence is a matter resting in the sound discretion of the Court, this cannot be assigned as error.
    The mode of conducting trials, the order of introducing evidence, and the times when it is to be introduced, are properly matters belonging to the practice of the Circuit Courts, with which the Supreme Court ought not to interfere; unless it shall chose to prescribe some fixed general- rules on the subject, under the authority of the act of Congress. The Circuit Courts posséss this discretion in as ampié a manner as other judicial tribunals. ’ '
    Testimony was not .offered by a defendant, or stated by him as matter of defence, in the stage of the cause when it is usually introduced according to the practice of the Court. It was offered after the defendant’s counsel had stated, in open Court, that they had closed their evidence, and after the plaintiff, in consequence of that declaration, had discharged his own witness. The Circuit Court refused to admit the testimony. Held, that this decision was proper.
    IN error from the Circuit Court of the United States for the Eastern District of Pennsylvania.
    At the April session of the Circuit Court, James Stimpson instituted an action against the plaintiffs in error, for the recovery of damages, for the violation of a patent granted to him by the United States, on the 26th day of September, 1835, for “a new and useful improvement in the modé of turning short curves on railroads.”
    The case was tried on the 16th day.of February, 1839; anda Verdict was rendered for the plaintiff, for the sum of four thousand two hundred and fifty dollars. On the 6th of May, 1839, a remit-liter was entered on the docket of the Coiirt, for the sum of one thousand dollars; and a judgment was entered for the plaintiff for three thousand two hundred and fifty dollars.
    On the trial of the cause, the defendants tendered a bill of Exceptions to the decision of the Court, on their admitting the patent to the plaintiff in evidence; and to other rulings of the Court in the course'of the trial. The defendants prosecuted this writ of error.
    The patent granted by the United States to James Stimpson was as follows :
    “The United States of America; to all to whom these letters patent shall come.
    “ Whereas, James Stimpson, a citizen of the United States, hath alleged that he has invented a new and useful improvement in the mode of turning short curves on railroads, for .which letters patent were granted the twenty-third day of August, 1831; which letters being hereby cancelled' on account of a defective specification; which improvement, he states, has not been known or used before his application, hath made oath that he does verily believe that he is the true inventor or discoverer' of the said' improvement, hath paid into, the treasury of the United States, the sum of thirty dollars, delivered a receipt for the same, and presented a petition to the Secretary of State, 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 James Stimpson, his heirs, administrators, or assigns, for the term of fourteen years from the twenty-third day of August, 1831, 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 James Stimpson himself, in the schedule hereto annexed.”-
    Tested at Washington, under the seal of 'the United States, on the 26th day of September, 1836, by . the President of the United States; and certified in the usual form by the Attorney General of' ■the -United .States.
    “ The schedule referred to in these letters patent, and making a part of the same,” .contained “a description in the words of the said James Stimpson himself, of his improvement, in the mode of turning short curves on railroads, for' which letters patent -were granted, dated the twenty-third day of August, 1831, which letters patent being hereby cancelled, on account of a defective specification.”
    The specification describes the invention with minute particularity, “and concludes: “What I claim as my invention, or improvement, is the application of the flanches of the wheels on one side of railroad carriages, and of the treads of the wheels on the other side, .to turn curves upon railways, .particularly such as turning the corners of the streets,.wharves, &e., in cities and elsewhere, operating upon the principle herein set forth.”.
    The bill of exceptions stated, that the counsel for the plaintiff offered in evidence the patent and specification, to the admission of which in evidence, the counsel for .the defendant objected; but the objection was overruled by the Court, and the evidence was. admitted.
    ‘ 2. The defendants offered to give in evidence, by Josiah White, the description of a flange upon one side of the railroad cars, and the running upon the tread of the wheel upon the other side, with the flange in a groove, for the turning.of curves, which he had seen in use before the date of plaintiff’s patent; which was objected-to by- the counsel for the plaintiff, and the objection sustained by the Court. . The objection of the counsel for the flaintiff to the introduction of the testimony of Josiah White, was founded on the absence of the notice required by the act of Congress of the use of the machine at Mauch Chunk; at which .place, it was said, his testimony would show it had been used.
    3. The third exception was to the refusal of the Court to allow the defendants to introduce proof of the conversations between the patentee >and the counsel of the Baltimore and Ohio Railroad Company, while an arrangement of a suit against the Company was made, as to the character and effects of the arrangements.
    4. The counsel for the plaintiff, by rebutting evidence, to extend his claim to the invention prior to the time at which, the defendants had. proved the reduction of the same into use and practice by others, offered to give evidence by witnesses of the conversations of the patentee on the subject of his invention at an anterior period; which conversations were intended to show the making of the invention by the patentee, before and at the period when the sáme took place. The counsel for the defendants objected to the admission of this testimony; but the Court overruled the objection.
    5. The fifth exception was to the refusal of the Court to admit the examination of-Dr. Thomas P. Jones. The plaintiff had discharged his witnesses on the declaration of the defendants’ counsel that they had closed their evidence. The testimony asked from Dr. Jones, was to new facts. The Court refused to admit the testimony, on the ground that the testimony was improper, and that it was offered too late.
    The case was argued by Mr. Coxe, and Mr. Southard, for the plaintiffs in error; and by Mr. J. R. Ingersoll, for the defendant.
    Mr. Coxe and Mr. Southard, on the first exception.
    The patent should not have been admitted in evidence. On its face it is inoperative, and invalid. ■ It is not a patent under the act of Congress of 1793'; but it purports to be a substituted patent for one which had been surrendered. It gives to the patentee the same privileges as those which were given by the first patent. It, therefore, should be in strict arid exact conformity with the law of 1793, as well as with the subsequent act of Congress, authorizii g the surrender of a patent for an imperfect specification, and the issue of another.
    The act of 21st February, 1793, requires, by its third section, that the applicant shall be the true inventor of the machine, &c. This is made a sine qua non to the granting the patent, and the oath of the claimant is required to this fact. This provision makes the oath necessary, before the Secretary of State has authority to grant the pateut. There is no remedy, if this has been omitted.
    There was no decision before the case of Morris vs. Huntington, Paine’s Reports, 348, which affirmed the right of a patentee to surrender his patent for an erroneous or imperfect specification. After this case, Congress authorized such a surrender. Act of Congress of July 3d, 1832. By this- act the cause of the surrender must be made ■ out to the satisfaction of. the Secretary- of State, when a second patent is asked for. It has been decided, that a patent- is prima facie, evidence of th¿ statements on the face of the patent. This does not give any other validity to those statements; and it is not sufficient that some of the requirements of the act of Congress ■are stated. All must be set forth, and an averment must.be made that every thing has been done. There is no halting'point. Those requirements exist as to any patent granted after the surrender of a patent. The errors or imperfections in the specification, on which, the surrender- has been made, should be stated. Grant vs. Raymond, 6 Peters, 218. In the case cited, there was a recital of the surrender of the patent, and the cause of its surrender.
    There is in the patent which was before the Circuit Court, no recital of the imperfections of the first specification; no allegation that there was no fraud in the transaction. There is nothing shown but the gratuitous act of the officer in granting the second patent. And yet all the prerequisites to the grantihg of a second patent should appear in it, as well as be of record in the patent office.
    Without thSse essential features in a patent given on the surrender of a previous one for the same invention, it camiot be read in evidence to a jury. The requirements in both the acts of Congress of 1792, and 1832, must appear in it. If.all those matters are not shown,' the second patent stands as a new patent: and by allowing- it to be given in evidence, the Court altogether disregard the law. If the patent, in this imperfect form, is admitted as prima facie proof, all the burden of contradicting it is thrown on' the opposite party. Cited, on these points,- Shaw ws.-Cooper, 7 Peters, 245.
    ■' -In support of the second exception, the counsél contended that A>the notice given was sufficient to authorize the introduction of the testimony of Josiah White. Cited, on this point, Evans vs. Eaton, Peters’ C. C. R. 322. Wheat. Rep. S. C. The notice would have been'sufficient under the act of Congress of 1793, arid why not under the act of July 3d, 1836 ?
    ■The objection to the introduction of the evidence by the counsel for the-defendants,-which was sustained by the Court, and which is the subject of the defendants’ third exception, was well, taken. It was- in the power of the plaintiff to have produced his contract with the Baltimore and Ohio Railroad Company, and have rendered this evidence unnecessary.' He did not do so.
    As to the fourth exception. It is admitted, that it was the right of the plaintiff to prove,-b.y legal rebutting evidence, that the invention made by him, and for which he held the patent, was in use before the period in which the defendant had proved the invention by him. Butlhis evidence could not be given; by showing the conversations of the plaintiff on the subject of the invention before the date of the first patent. '
    Conversations on the subject of an invention aré not the invention; nor are the ideas of the invention, its actual development. There must be an application of the thought, in the construction of the- machine.
    This is an attempt to give the declarations of a party in evidence, after the actual occurrence of the transaction. No declaration of a person that he intended to take' out a patent, could be given in evidence. Cited,-on this point, 1 Wheat. Rep. 313. 10 Serg. and Rawle, 27. 5 Serg. and Rawle, 295. Roscoe on Evidence, 21. 4 Washington C. C. R. 58. 5 Mason, 6. 1 Gallis, C. C. R. 438.
    As to the fifth exception, the counsel contended, that the evidence of Dr. Jones was rebutting evidence, and was regular; as it was offered to meet and to disprove the plaintiff’s declarations, which the Court had admitted as testimony.
    Mr. Ingersoll, for the defendants in error.
    1; The.objection to the certificate of the Secretary of State should apply rather to the effect than the admissibility of the document. That officer is authorized by law to issue patents, and the presumption is, that he has done so rightfully. Possession of the document does not affect the intrinsic rights of any one. Every question of merjt is still open. It enables the-patentee to sue; but it neither secures him in the enjoyment of the alleged invention, nor preludes other’s from contesting the validity of his claims. In the different cases cited, the patent appears to have been received in evidence exactly in the form now exhibited, although it may have availed nothing to the plaintiff afterwards.
    1 Sullivan vs. Redfield, 1 Paine, 447: “The patent is prima facie evidence off the right.” The Margaretta, 2 Gall. 519: Remission, though not valid, was given in evidence. See also Bingham vs. Cabot, 3 Dali. 19. Bell vs. Morrison, 1 Peters, 355. Keene vs. Meade, 3 Peters, 6. The United States 'vs. Liddle, 2 Wash. C. C. Rep. 205.
    2. The testimony of Josiah White would have been admitted under the sixth section of the law of 1793. But the fifteenth (or corresponding) section of the law of 1836, requires notice of place, person, and residence. As the law previously stood, great injustice might have been done, unless the Court had construed it* so as to invest the .judge with power to prevent the plaintiff from being taken by surprise. Evans vs- Eaton, 3 Wheat. 505. The law now wisely anticipates the necessity for .an exercise of judicial discretion and possible’delay; and requires notice of the place where the improvement is supposed by a defendant to have been previously used. This was not given, and the testimony was necessarily rejected.
    3. Although, in truth, the offer to examine Mr. Latrobe upon certain points was not rejected by the Court, but withdrawn by the Counsel, yet as it appears by the record to have been a point decided, I'will submit to treat it accordingly.. The testimony would no doubt have been rejected if the offer had been persisted in, and the delay that would be requisite to put the record right would be deeply injurious to my client.
    (1.) The inquiries suggested for the witness are impracticable, and they lead to impracticable results. The inquiry refers to a “ negotiation,” “arrangement,” and “settlement.” It asserts the fact that a “grant” or “contract,” was made. Negotiation is the necessary preliminary to a contract, is absorbed in it, and forms a part of it. How can you separate them ? Out of one identified existence, two things are to be made, essentially distinct from each other. That is impossible.
    (2.) The inquiries are irrelative. The arrangement'contemplated was res inter alios acta. The plaintiffs in error were altogether strangers to it. Many inducements may lead to a settlement with •one person which would not render it desirable with another. If it were not that Ross Winans had previously been cross-examined by the-counsel for the plaintiffs in the Circuit Court, to the point of settlement with the Baltimore and Ohio Company, no pretence for the inquiry would -exist. If that was wrong, this will not make it right. It was not objected to. If not strictly cross-examination, we , had no right to resort to it. Ellmalrer vs. Buckley, 16 Serg. and Rawle. If it was regular cross-examination, it cannot justify the proposed irregularity. But we were bound to put the witness on his guard as to a'collateral fact which might impeach his testimony.. Rule in the Queen’s case.

      (3.) The object attempted to be proved was a mere entity; an abstraction: nothing actually done, but at best something omitted or avoided: a conclusion or construction: a contingencv without a substantial thing to support it.
    (4.) It was an attempt to prove by parol some known written arrangement, which was susceptible óf being produced.
    4. Explanations of the patentee himself w.ere good evidence to prove the genuineness of his claims to.originality. It is necessary to understand the manner in which this testimony was produced. Plaintiff at first simply produced his patent, and called a witness who proved its utility and the infringement by the defendants. Then the defendants went at large into proof of alleged priority of invention by other persons. All of this went to show a use before the date of the plaintiff’s patent. A necessity was therefore thrown upon him of proving that his invention existed, and was communicated by him to different persons at a still earlier period. No doubt. of the importance of such proof. It consisted of evidence of plaintiff’s invention prior to defendants’ knowledge, or the knowledge of those persons on whom they relied. To meet this particular exigency, that is, to show invention, it is difficult to conceive what can be authentic except what comes from the inventor himself. He therefore produced several individuals, who stated that he described the improvement to them at a period 'considerably earlier than defendants had fixed for its earliest use. If he described it, he must have known it. If he knew it before any other person, he must have invented it. That prior knowledge was invention; and that was the very thing to be proved.
    Two objections were taken to the character of the proof: 1st. That it was derived from the plaintiff himself,; 2d. That the alleged improvement was not then brought into practical use by him.
    . Answer 1st. It was an invention; else not patentable: in other words, it must spring from him.self. An exhibition' of it must necessarily in some shape or other be his act. Whatever might be said or done by others could not be available to him. The exhibition might be effected by deeds, signs, or words. It matters not in what particular manner the effect is produced, but the discovery .must make manifest its paternity; and it can do so only through the medium of its-proper parent.
    This may be done by his works — a machine constructed. Let it be produced; original, practical, perfect in all its parts. Nothing is gained by the author uriless something more than all this appears, viz. authorship. However eloquent the machine may be as to its uses, it cannot speak for itself, as to its author. The nearest it can come to speech would be an inscription or label on its front: “ J. S. fecit, for example.
    - That would at best be a written declaration. What difference would it make that the writing, or stamping, or printing, should be in a book ? That description of evidence in a sister department of the law, is conclusive of important rights. In maintaining copyrights, the writing of the party is the essence of the discovery, and the sole proof <of invention or originality. If, instead of writing with his own hand, the same author dictates to another person, cannot the'- amanuensis prove the dictation, and hence the authorship ? A blind author has often given to the world the result of his genius, through the pen of another. On a question of authorship, surély the testimony of the scribe would be received as competent.
    Amother species of proof of invention remains, namely, oral explanation alone.- Why may it hot be received ? It is the very thing itself. To speak it, was to create it, if it did not already exist in thought; and if it did, it must prove it. The proof was given to counteract the allegation of earlier discovery. It produces the effect by showing that the earlier discoverers, as they are regarded, received'from the plaintiff the information which enabled them to.put the invention in use, and then attempt to deny the right of showing how the information was communicated and obtained. One of the very pieces of testimony objected to consisted of a conversation with the person who claimed to be an inventor in,preference to the plaintiff..
    The declarations did not stand alone; they were accompanied by two drawings and a model. The date of the existence of these monuments is clearly proved. The conversations became but a part of the res gestae.
    There are many occasions on which one’s own sayings and doings are good evidence; in some instances the best, and in others the only evidence. The present is an anomaly unless it concurs. It does not follow that the expressions of an individual are the illegal creation of testimony for himself. Such are, 1. Various kinds of declarations ante litem motam; 2. When the sayings are the doings, as in cases of notice; 3. Where the expressions of an individual are the test of a given state of things, as intellect; 4. Proof of a contract, as marriage, by words de presentí; 5. Almost any other discovery or invention, • not connected with the useful arts. A reward is offered for lost property: the finder informs of the finding of it: the declarations can be proved.
    Answer 2d. As to the objection that the explanations were not • reduced to practice. Here, too, the objection loses sight of the fact that our evidence was not original, but merely designed to meet a. collateral issue as to the period of invention, and not exactly as to invention itself. On any ground, howeyer, the question of invention does not depend upon whether the thing has been reduced to practice, but whether it can be. Not whether it is actually practised, but practicable. Drawings, descriptions, and models are sent' to the patent office. These áre miniature likenesses, not the thing itself. Any other course would, in many instances, be quite impracticable. A ship, a house, a town, are often the recipients of an improvement which cannot be practically exhibited, except in connection with the .vast object to which it is applied. Sometimes the reducing to practice might be destructive of life or property. A guillotine need, not be rehearsed in order to prove its power.
    Besides, it might destroy the very intention, to insist on practical exercise. . It might be regarded as giving the invention to the pub-. lie, and then the patent right is gone forever.
    5. Thomas P. Jones was called by the defendants after all the testimony in chief, on both sides; and the plaintiff’s rebutting testi-' mony also had been given, and hi's witnesses dismissed; and much time had been occupied in giving rebutting testimony for the defendants. The declared object was to prove that the invention described in the plaintiff’s patent of 1835, was different from the invention described by him in his patent of 1831: in other words, that the patent which purported to be a mere- correction of form, was in substance a totally different thing. We are struck at once with an inconsistency between this point, and the whole tenor of the defendants’ cáse. The notice which they gave, the aim of their evidence, their great design, is to show that.the thing relied on by the plaintiff, which was patented by him in 1835, was well known and used in 1831; known to everybody, publicly, notoriously. Yet we are now told that it was not known even to the plaintiff himself; but that he found it necessary four years afterwards to desert the alleged invention of 1831, and surreptitiously to foist in a different thing, which then became known to him for the first time. Unl'ess this is the true meaning of the point, it-has none.
    The evidence offered was original and direct. It contradicted nothing already asserted in evidence. It was directed to a point in no way collateral. It went immediately to the essential' merits of the case. It was of grea( importance, undoubtedly. Nothing could be more .conclusive against the plaintiff. Not only would it be destructive of his claim to originality; but it would prove á most audacious fraud, abortively attempted, and calculated, when detected, to deprive him of all standing in or out of Court, and to render his defeat as disgraceful as it was inevitable.
    Notice of all this ought to have been given; perhaps. It is not urged, however,-as an argument, that none was received; although it might have been calculated to take the plaintiff by surprise. But it was a fact above all others, requiring, and in its nature admitting of countervailing proof. Not a clerk in the office, probably, could have failed to give material testimony in reply. These persons were at a distance ; and, we should have been left to the question of probability, whether a man, in any extremity of impudent-fraud, would have ventured to place two totally different patents side by side in the office, asserting that they were in substánce identical.
    ' The evidence offered was not the best the nature of the case admitted of. Contradiction was to be proved between two written instruments, with, perhaps, a model accompanying each of them. Copies would be the proper sources of illustration. Were copies not accessible? We do not know. No inquiry was made. A thousand, copies may have been.made before the'patent office was destroyed. Plaintiff himself, no doubt, had such copies in his possession. No notice was given to him to produce them, before this violent attempt. was made to introduce secondary evidence.
    To get rid of all this; the argument was that the difference was only to be inferred between the patents from a difference between the conversation and one of them. But that would, rebut nothing. No person denied that plaintiff’s conversations with the witnesses he produced, were as they were sworn to be. Other conversations with other persons might show descriptions of othér inventions; but they could not possibly show that the first conversations did not take place. The judge gave two reasons for rejecting the testimony. One .was, that it was offered at too late a stage of the cause. That was ruled in his sound discretion.. From the exercise of that discretion there is no appeal. No attempt was made to take one. On both of his grounds he was right. But one was sufficient to cover the whole question, and it is inaccessible to review here. ■
   Mr. Justice Story

delivered the opinion of the Court.

This is a writ of error to the judgment of the Circuit Court for the Eastern District of Pennsylvania, rendered in an action brought by Stimpson, the defendant in error, against the plaintiffs in error, for a violation of a patent right granted to him for a new and useful improvement in the mode of turning short curves on railroads.

A patent was originally granted to Stimpson, for the same invention, on the 23d day of August, 1831; and the renewed patent, upon which the present suit is brought, was granted on the 26th of September, 1835, upon the former letters patent “ being cancelled on account of a defective specification;” and the renewed patent was for the term of fourteen years from the date of the original. patent. With the exception of'the recital of the fact that the former letters patent were cancelled “on account of a defective specification,” and the statement of the-prior date from which the renewed patent was to begin to run, the renewed patent is in the precise form in which original patents are granted.

At the trial upon the general issue, a bill of exceptions was taken to certain rulings of the Court upon points of evidence, to the consideration of which we shall at once proceed without any further preface.

The first exception taken is to the admission of the renewed patent as evidence in the cause to the jury. The patent act of 1832, ch. 162, sec. 3," under which this patent was obtained, provides, that whenever any patent shall be inoperative or invalid, by reason that any of the terms or conditions prescribed by the prior acts of Congress, have not, by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the inventor, it shall be lawful for the Secretary of State, upon the surrender to him of such-patent., to cause a new patent to be granted to the inventor, for the- same invention, for the residue of the period then unexpired for which the original patent was granted, upon his compliance with the -terms and conditions prescribed by the third section of the act of the 21st of February, 1793, ch. 55.

Now, the objection is, that the present patent does not contain any recitals that the prerequisites thus stated in the act have been complied with, viz. that the error in the former patent has arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention; and that without süch recitals, as it is the case of a special authority, the patent is a mere nullity, and inoperative. .We are of opinion that the objection cannot, in point of law, be maintained. The patent was issued under the great seal of the United States, and is signed by the President, and countersigned by the Secretary of State. It is a presumption of law, that all public officers, and especially such high functionaries, perform their proper official duties until the contrary is proved. And where, as in the present case, an act is to be done, or patent granted upon evidence and proofs'to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent, is prima facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency. It is not, then, necessary for the patent to contain any recitals that the prerequisites to the grant of it have been duly complied with, for the law makes the presumption; and- if, indeed, it were otherwise, the recitals would not help the case without th auxiliary proof that these prerequisites had been, de facto, complied with. This has been the uniform construction, as far as we know in ali our Courts of justice upon matters of this sort. Patents for lánds, equally with patents for inventions, have been deemed prima facie' evidence that they were regularly granted, whenever they have'been produced under the great seal of the government; without any recitals or proofs that the- prerequisites of the acts under which they have been issued have been duly observed. In cases of patents, the Courts of the United States have gone one step further, and as the patentee is required to make oath that he is the true inventor, before he can obtain a patent, the patent has been deemed prima facie evidence that he has made the invention. This objection, then, is overruled; and there was no error in the Circuit Court in the admission of the patent.

The next exception is to. the refusal of the Court to allow a witness, Josiah White, to give a description of an invention which he had seen on the Mauch Chunk railroad, in 1S27, which had a groove on one side, and run on the other on a flange for crossing, for the purpose of showing that the supposed invention of the plaintiff was known and in use by others, before the date of his patent. By the patent act of 1836, (which was applicable to the present point,) it is provided in the fifteenth section,- that whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or- use of the thing patented, he shall state in his notice of special matter to be used in his defence, the names and places of residence of those, whom he intends to prove to have possessed -a prior knowledge of the thing, and where the same had been used. The object of this most salutary provision is to prevent patentees being surprised at the trial of the cause, by evidence of a nature which they could not be presumed to know, or be prepared to meet, and thereby to subject them either to most expensive delays, or to a loss of their cause. It is incumbent on those who seek to show that the examination of a witness has been improperly rejected, to establish their right to have the evidence admitted; for the Court will be presumed to have acted correctly, until the contrarv is established.

In the present case, there is no proof on the record that notice had been given according to the requirements of the statute, that White was to be a witness for the purpose above stated. Unless such notice was given, it is plain that the examination could not be rightfully had. The onus probandi is on the defendants to show it, and unless they produce the notice, the objection must fail. In point of fact, it was admitted by counsel, at the argument, that no such notice was, given. In either view, then, from the admission, or from the defect of the preliminary proof of notice in the record,' the exception is not maintainable.

The next exception is to the refusal of the Court to allow certain questions to be put by the defendants to John H. B. Latrobe, a witness introduced by the defendants to maintain the issue on their part. Latrobe, on his examination, stated, “ I know Mr. Stimpson by sight and character. He granted to the. Baltimore. and Ohio Railroad Company the privilege of using the curved ways oh their railroad, and all lateral roads connected therewith. I fix the date of the contract in the early part of October, 1834, because I have then a receipt of Mr. Stimpson’s counsel, for two thousand five hundred dollars. Mr. Stimpson laid his claim against the Baltimore Company for an infringement of his patent, in 1832. It was referred to me by the Company, and I advised them.” The counsel for the defendants then offered to prove by the same witness, the declarations of the plaintiff and his agent, to the witness, that the settlement made with the Baltimore and Ohio Railroad Company with the plaintiff,’was not an admission by the said company of the plaintiff’s right in the alleged invention, but a mere compromise of a pending suit, disconnected with a grant, in writing, made by the plaintiff'to the said company; and to that end proposed to put the following questions, respectively, and in order, to the witness: “ 1. Do you know who was the agent or attorney of James Stimpson, in negotiating the arrangement and settlement between him and the company referred to? Who was he? '2. State if any conversations occurred between James Stimpson, or his agent or counsel, at any time, during the negotiations, regarding the rights claimed by him in the patent for curved ways; without reference to the existence of a written contract, or its contents? 3. What were they-?” The Court refused to allow these questions to be put, for the purpose aforesaid.

Now, (as has been already intimated,) it is incumbent upon those who insist upon the right to put particular questions to a witness, to establish that right beyond any reasonable doubt,,for the very purpose stated by them; and they are not afterwards at liberty to desert that purpose, and to show the pertinency or relevancy of the evidence for any other purpose, not then suggestéd to the Court. It was not pretended at the argument, that the evidence so offered was good evidence in chief, in behalf of the defendants upon the issue in the cause. It was res inter alios acta,’ and had no tendency to disprove the defendant’s title to the invention, or to support any title set up by the defendants; for no privity was shown between the defendants and the Baltimore Company. As evidence in chief, therefore, it was irrelevaht and inadmissible. The sole purpose for which it was offered, so far as it was then declared- to the Court, was to show, that the compromise with the Baltimore Company was not founded on any admission of the plaintiff’s right in the invention. Be it so; it was then inconsequential; for it certainly had no just tendency to disprove his right. If the compromise had been offered on the part of the plaintiff, for the purpose of establishing; his right to the invention, there is no pretence to say that it would have been admissible against.the defendants. In the converse case, it is equally inadmissible for the defendants.

But it is now said that the evidence was in fact offered for the purpose of rebutting or explaining certain statemer ?s made by one Ross Winans, a witness called by the defendants, in his answers upon his cross-examination by the plaintiff’s counsel. Now, this purpose is not necessarily, or even naturally, suggested by the purpose avowed in the record. Upon his cross-examination, Winans stated: “I understood.there -were arrangements made with thé Baltimore Company.- I heard the Company paid five thousand dollars.” Now, certainly these statements, if objected to by the defendants, would have been inadmissible upon two distinct grounds. 1. First, as mere hearsay; 2. And, secondly, upon the broader principle, now well established, although sometimes lost sight of in' our loose practice at trials, that a party has no right to cross-examine any witness except as to facts and circumstances connected with the matters stated in his direct examination. If he wishes to examine him to other matters, he must do so by making the' witness his own, and calling him, as such, in the subsequent progress of the cause. The question then is presented, whether a party can, by his own omission to tatte an objection to the admission of improper evidence brought out on a cross-examination, found a- right to introduce testimony in chief to rebut it or explain it. If upon the cross-examination, Winans’. answer had been such as was unfavourable to'the plaintiff, upon the collateral matters thus asked, which were not founded in the issue, he would have been bound by it, and not permitted to-introduce evidence to contradict it.. There is great difficulty in saying that the defendants ought to be in a more favoured predicament, and to acquire rights founded upon the like evidence to which they did not choose to make-.; ¿y objection, although otherwise it could not have been in the causm- But waiving this consideration, the grounds on which we''think the refusal of the Court was right, are; first, that it was not distinctly propounded to the Court, that* the evidence was offered to rebut or explain.Winans’ testimony; and, secondly, that in the form in which it was put, it proposed to separate the written contract of compromise from the conyersations and negotiations which led to it, and to introduce the latter without - tSé former, although it might turn out that the written paper miglifraost materially affect or control the presumptions deducible from those conversations, and negotiations. We think, that upon the settled principles of- law, parol evidence bearing upon written contracts and papers, ought not to be admitted without the production of such written contracts or papers, so as to enable both the Court and the jury to see whether or not the admission of the parol evidence in any manner will trench upon the rule, that parol evidence is not admissible to vary or contradict written contracts or papers.

The next exception is to the admission of the evidence of William A. Stimpson, Richard Catón, and George Neilson, as -to certain declarations, and statements, and conversations of the plaintiff, as to his invention prior to the date of his original patent; in order to rebut the evidence of the defendants, as to the invention or use by other persons of the same contrivance, before that date. The objection is, that, upon general principles, the declarations and conversations of a plaintiff, are not admissible evidence in favour of his own rights. As a general rule, this is undoubtedly true. It is, however, but a general rule, and admits, and requires various exceptions. There are many cases in which a party may show his declarations conflict with acts in his own favour, as a part of the res gestae. There are other cases, again, in which his material declarations have been admitted. Thus, for example, in the case of an action for an assault and battery, and wounding, it has been held, that the declarations of the plaintiff, as. to his internal pains, aches, injuries, and' symptoms, to the physician called to prescribe for him, are admissible for the purpose of showing the nature and extent of the injuries done to him. See 1 Phillips on Evidence, ch. 12, sec. 1, p. 200—202, eighth ed., 1838. In many cases of inventions, it is hardly possible in any other manner to ascertain the precise time and exact origin of the particular invention. The invention itself is an intellectual process or operation; and,.like all other expressions of thought, can in many cases scarcely be made known, except by speech. The invention may be consummated and perfect, and may be susceptible of complete description in words, a month, or even a year before it can be embodied in any visible form, machine, or composition of matter. It might take a year to construct a steamboat, after the inventor had completely mastered all the details of his invention, and had fully explained them to all the various artisans whom he might employ to construct the different parts of the machinery. And yet from those very details and explanations, another ingenious mechanic might be able to construct the whole apparatus, and assume to himself the priority of the invention. The conversations and declarations of a patentee, merely affirming that at some former period he invented that particular machine, might well be objected to. But his conversations and declarations, stating that he had made an invention, and describing its details and explaining itáSoperations, are properly to be deemed an assertion of his right, at that time, as an inventor to the extent of the' facts and details which he then makes known; although not of their existence at an antecedent time. In short, such conversations and declarations, coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestas; and legitimate evidence that the invention was then known to and claimed by him, and thus its origin may be fixed at least as early as that period. This view of the subject covers all the parts of the testimony of the witnesses objected tp in the Circuit Court; and we are of opinion, that the Court were right in admitting the evidence.

The next and last exception is, to the rejection of the evidence of Dr. Jones, who was offered to prove that there were material differences between the patent of 1831, and the renewed patent of 1835, and to explain these differences. No doubt can be entertained that the testimony thus offered was, or might be, most material to the merits of the defence. And the question is not as fo the competency or relevancy of the evidence, but as to the propriety of its being admitted at the time when it was offered. It appears that the testimony was not offered by the defendants, or stated by them as a matter of defence, in the stage of the cause when it is usually introduced according to the practice of the' Court. It was offered after’ the defendants’ counsel had stated in open Court, that they had closed their evidence, and after the plaintiff, in consequence of that declaration, had discharged his own witnesses. The question, then, is, whether it was at that time admissible on the part of the defendants as a matter of right; or whether its admission was a matter resting in the sound discretion‘of the Court. If the latter, then it is manifest that the rejection of it canno.t be assigned as error.

The mode of conducting trials, the order of introducing evidence, and the times when it is to be introduced, are, properly, matters belonging to the practice of the Circuit Courts, with which this Court ought not to interfere; unless it shall choose to prescribe some fixed, general rules on the subject, undér the authority of the act of Congress. Probably the practice in no two states of the Union is exactly the same; and then - ore, in each state, the Circuit Courts must necessarily be vested with a large discretion, in the regulation of their practice. If every party had a right to introduce evidence at any time, at his own. election, without reference to the stage of the trial’ in which it is, offered, it is obvious that the proceedings of the Court would often be greatly embarrassed, the purposes of justice be‘obstructed, and the parties themselves be surprised by evidence destructive of their rights, which they could not have foreseen, or in any manner have guarded against. It seems to us, therefore, that all Courts ought to be, as indeed they generally are, invested with a large discretion on this subject, to prevent the most mischievous consequences in the administration of justice to suitors; and we think that the Circuit Courts possess this discretion in as ample a manner as other judicial tribunals. We do not feel at liberty, therefore, to interfere with the exercise of this discretion; and, indeed, if we were called upon to say upon the present record, whether this discretion was, in fact, misapplied or not, we should be prepared to say, that we see no reason to doubt that it was, under all the, circumstances, wisely and properly exercised. It is sufficient for-us, however, that it was a matter of discretion and practice, in respect to which we possess no authority to revise the decision of the Circuit Court.

Upon the whole, we are of opinion, that the judgment of the Circuit Court ought to be affirmed with costs.


author: Mr. Chief Justice Taney

text:
    The United States vs. Isaac Morris.
    Indictment under the second and third sections of the act of Congress, entitled, “An Act to prohibit the carrying on the Slave-trade, from thé United States to any foreign Place or Country;” passed'10th May, 1800.
    The schponer Butterfly, carrying the flag of the United States, and documented as a vessel of the United States, ahd having the usual equipments of vessels engaged in the slave-trade, sailed from Havana towards the coast of Africa, on the 27th July, 1839. She was captured by a British brig of war, and sent into Sierra Leone, on suspicion of being Spanish property. At the time of the capture, Isaac Morris was in command of the vessel, and was described in the ship’s papers, and described himself, as a citizen of the United States. The vessel was sent, by the British authorities at Sierra Leone, to be dealt with by ■ the authorities of the United States. Held, that to constitute the offence denounced, in the (second section of the act of 10th May, 1800, it was not necessary that there should have been an actual transportation or carrying of slaves in the vessel of the United States, in which the party indicted served. 2. The voluntary service of an American citizen on board a vessel of the United States, in a voyage commenced with intent that the vessel should be employed in the slave-trade, from" one foreign place to another, is an offence against the second section of the law, although no slaves had been transported in such vessel, or received on board of her. 3. To constitute the offence-under the third section of the act, it was not necessary that there should be an actual transportation of slaves in a foreign vessel, on board of which the party indicted served. 4. The voluntary service of an American citizen on board a foreign vessel, in a voyage commenced with intent that the vessel should be employed and made use of in the transportation of slaves, from one foreign country to another, is in itself, and- where no slaves have been transported in such vessel, or received on board of her, an offence under the third section of the act.
    In expounding a penal statute, the Court, certainly, will not extend it beyond the plain meaning of its words; for it has been long and well settled that such statutes must be construed strictly. Yet the evident intention of the legislature ought not to be defeated by a forced and over strict construction.
    ON a certificate of division from the Circuit Court of the United States for the Southern District of Nevy York.
    The defendant, Isaac Morris, was indicted under the second and third sections of the act entitled “An Act in addition to an Act entitled‘An Act .to prohibit the carrying on the Slave-trade' from the United States to any foreign Place or Country,’ ”• approved on the 10th of May, 1800.
    The first count of the indictment charges that the defendant did, on the high seas, from the 15th day of June, until thé 26th day of August, in the year 1839, voluntarily serve on board of the schooner Butterfly, a vessel of--the United States; employed and made use of in the transportation of slaves from some foreign country or place to some other foreign country or place: the-said defendant being a citizen of the United States.
    The second count charges, that the defendant did, 'on the high seas, from the 15th day of June to the 2&th day of August, voluntarily serve on board of the schooner Butterfly, being a foreign vessel employed in the slave-trade: the defendant being a citizen of the United States.

      It was proved, on the trial, on the part of the prosecution, that the schooner Butterfly, carrying the flag of the United States, and documented as.a vessel of the United States, (her register being dated the 24th day of May, 1839, and issued by the collector of New Orleans to Nathan Farnsworth, a citizen of the United States, as owner,) was boarded and examined, on the 26th day of August, 1839, on the high seas, in latitude 5° 25' north, longitude 30° east, near Cape St. Paul’s, on the coast of Africa, by the British brig of war Dolphin, on suspicion of being a Spanish vessel engaged in the slave-trade, in contravention of the treaty between Great Britain and Spain for the suppression of the slave-trade. That on such examination,'the vessel was found to be on her voyage from Havana, in the island of Cuba, which port she had left on the 27th day of July, 1839,,bound to St. Thomas, in the island .of Principe, near the coast of Africa; that the vessel had on board twenty-four large leagers capable of containing each from two hundred and fifty to three hundred gallons of water; eighteen of these were in shocks, that is, the staves were in bundle not fitted; four of them contained water, and two contained bread; there was a quantity of plank stowed away in the hold, similar to the planks used in framing slave-decks, but this plank could not have been fitted as a slave-deck until the vessel had discharged her cargo; and that such leagers and slave-decks were commonly found to be a part of the equipments and fittings of vessels engaged in the slave-trade on the coast of Africa; that she had on .board a full cargo, consisting of various commodities, adapted either to the traffic in negroes, or to any la,wful trade carried, on by trading vessels upon the coast of Africa; that the prisoner was in command of the vessel; that he was described in the ship’s papers, and represented himself .as a citizen of the United States; that the rest of the ship’s company were represented in the crew-list as Spaniards, or Portuguese, who had been shipped at Havana; that there were also on board fourteen Spaniards who had been received at Havana as passengers; that the cargo had been shipped at the same place, and according to the invoice and bill of lading was to have been delivered at St. Thomas, in the island of Principe, aforesaid, and appeared, by the documents, to be owned by persons .residing at Havana; that two log-books, one in English and the other in Spanish, were found on board; that various documents-in the Spanish language were also found on board; that under these circumstances, the vessel was captured by the Dolphin, suspecting the same to be Spanish property, and sent for adjudication to Sierra Leone to be proceeded against in the Mixed Commission Court at that place, which Court declined taking cognisance of the case on account of the vessel being documented as an American vessel; that she was then sent to the port.of New York, to be dealt with by the authorities of the United States as they might think proper.
    No slaves were found on board the vessel at the time of her capo-tare ; and it was testified • by the witnesses for the prosecution, that from the cargo and situation in which the vessel was found, no slaves could have been carried or transported in her at any time during the voyage on which she was then engaged: that it would have been necessary to have discharged the cargo before slaves could have been taken on board: that the vessel was short of water, having only about eleven gallons on board when she-was captured: and that Cape St. Paul’s is a common watering place on that-coast, being about five hundred miles distant from the island of Principe.
    Upon the foregoing state of facts, the judges were divided in opinion upon the four following questions; which were presented on the fact? aforesaid for their decision:
    1st. Whether it is necessary, in order to constitute the offence denounced in the second section of the act of the 10th of May, 1800, above referred to, that there should be an actual transportation or carrying of slaves in the vessel of the United States on board of which the party indicted is alleged to have served.
    2d. Whether it is necessary,- in order to constitute the offence denounced in the third section of the act of the 10th of May, 1800, above referred to, that there should be an actual transportation or carrying of slaves in a foreign vessel, on board of which the party indicted is alleged to have served.
    3d. Whether the voluntary service of an American citizen on board a vessel of the United States, on a voyage commenced with the intent that the vessel should be employed and made use of in' the transporting or carrying of slaves from: one foreign country or place to. another, is in itself, and where no slaves had been transported in such vessel, or received on board her, an offence under the said, second section.
    4th. Whether the voluntary service of an American citizen, on board a foreign vessel, on a voyage commenced with the intent that the vessel should be employed and made use of in the transportation and carrying of slaves, from one foreign country or place to another, is in itself, and where no slaves had been transported in such vessel, or received on board her, an offence under the said third section.
    Which points were stated under the direction of the Court, at the request of the counsel for the parties in the cause, and ordered to be certified into the Supreme Court of the United States, pursuant to the act in such cases made and provided.
    The case was argued by Mr. Gilpin, Attorney. General of the United States, for the plaintiffs; and by Mr. Nelson, for the defendant. Mr. Philip Hamilton submitted a written argument for' the defendant.
    Mr. Gilpin, for the United States.
    The questions that present themselves in this case are these:
    1. Whether the voluntary service on boaid of an American vessel, on a voyage commenced with the intent that she shall be employed in the transportation and carrying of slaves, is a violation of the second section of the act of 10th May, 1800, (1 Story’s Laws, 7S0,) without any slaves being actually transported or carried.

      2. Whether the voluntary service on board of a foreign vessel, on a voyage commenced with the intent that she shall be employed in the slave-trade, is a violation of the third section of the same act, without any slaves being actually transported or carried.
    In the construction of a statute, the first inquiry is, what was the intention of the legislature ? The second, whether that- intention is so clearly expressed as to embrace within its prohibition the acts complained of.
    I. The whole scope of the enactments of Congress shows their intention to punish every American citizen who engages in the slave-trade. As early as 1794, they passed an act “ to prohibit carrying on the slave-trade.” 1 Story’s Laws, 319. This was followed, in 1800, by an additional act for the same purpose. 1 Story’s Laws, 780. In 1807, and in 1818, acts were passed, “to prohibit the im-’ portation of slaves into the United States.” 2 Story’s Laws, 1050. 3 Story’s Laws, 1698. In 1819, additional prohibitions against “the slave-trade” were adopted. 3 Story’s Laws, 1752. And, finally, in 1830, it was declared to be piracy. 3 Story’s Laws, 1798. This series of acts evinces the evident intention of Congress to prevent the slave-trade, the traffic; whether to the United States, or to foreign countries.
    When we examine the particular provisions of these various laws, the same intention is' yet more apparent. The fitting out of vessels for the trade, their_sailing outward, .their employment in the actual traffic, their bringing slaves to the United States, or taking them to foreign ports, are all matters' of minute regulation. • No citizen can fit out or equip-a vessel for the-slave-trade, either-in any part of the United States, dr in any other place, to sail -from the United-Stat is; nor can he hold any property-, directly or indirectly j in a vessel engaged in transporting slaves between t.wo foreign countries ; nor can a vessel sail from the United' States to engage in such traffic; and if she clears out for the coast of Africa, security against her engaging in such traffic may be required,’and must be given. 1 Story’s Laws, 319. 780. 3 Story’s Laws, 1698. These are provisions to guard against, prevent, and punish the preparatory or previous steps connected with this traffic; Again, the President is to cause an armed vessel to cruise on the African coast, and to bring into our ports all American vessels intended to transport slaves; severe penalties are provided against any citizens who shall there take slaves on board, or transport them to a foreign country, or to the United States; or be found with any so brought for the purposes of sale, in any of our ports or bays; or hold, sell, or dispose oí them. 1 Story’s Laws, 319. 2 Story’s Laws, 886. 1050. 3 Story’s Laws, 1698. 1752. Here, then, is a series of enactments, providing against every contingency in which American citizens can be connected with this traffic, except their service in American or foreign vessels, during the outward voyage. Is it possible that Congress could omit to provide for this also? Yet such is the fact, unless they have done so by the second and third sections of .the act of 10th Mav, 1800. 1 Story’s Laws, 780. It is a Well established rule, that the cause ^producing a law, and the general object to be attained, are to be considered in construing it. Preston vs. Browder, 1 Wheat. 124. If this rule, be applied, the inference is irresistible that the legislature. intended by these sections to include that portion of the traffic which is not elsewhere provided for; that they intended the voluntary participation, of our citizens in it should be punished, independently or equally with other conduct connected with such participation.
    II. Is this intention so expressed in the act, as to subject an offender to its penalties ? Is he adequately warned'by its language of the nature of the offence ? No doubt is expressed as to, the clearness with which the intention of Congress is made known on all points but one. The persori, the service, the vessel, are clearly designated. But “the voyage,” which it was intended to prohibit, is supposed to be doubtful. • It is alleged, that, “ employment in the transportation and carrying of slaves,” cannot refer to the outward voyage; but delates exclusively to one during which’the vessel has slaves actually on board. Is this'the import of the words ? Are they not a general designation of the prohibited traffic ? D.o they not signify the business in which the vessel/is employed’ ? Coaches are engaged “ in the transportation of passengers:” surely, the occasional want of a passenger does not change the character or description of their employment. Carriers are engaged in the transportation of merchandise, though their vehicles may be sometimes empty. Vessels are engaged in the fisheries, though a voyage of thousands of miles is necessary before they reach the place where they are actually employed in fishing. Carriers of the mail are properly so designated, though no mail be at á particular moment in their charge. Persons are employed .in the post-office, though not performing at every instant the duties annexed,to their office. Tonnage duties are payable by vessels “ employed in he transportation of goods coastwise,” at every entry, though they may be occasionally without a cargo. This construction is sanctioned by’ numerous acts’ of Congress, relating to navigation, the fisheries, and the post-office establishment. , 1 Story’s Laws, 5. 208. 2 Story’s Laws, 1353. 3 Story’s Laws, 1986. 4 Story’s Laws, 2256.
    But this signification is made more obvious by an examination of the particular statutes on this subject. The act of 1794 is cnti tied, “to prohibit carrying on the slave-trade,” (1 Story’s Laws, 319;) yet it provides' against the “ fitting out” of vessels in our ports. How is this “ carrying on the slave-trade,” unless all parts of the general design are included in that phfase ? So the act of 3d March, 1819, (3 Story’s Laws, 1752,) was passed “to prohibit the slave-trade;” yet it subjects vessels.“intended for the purpose of carrying slaves,” to forfeiture. So the act of 10th May, 1800; (1 Story’s Laws, 780,) upon the construction of which the present case turns, and which provides both for the punishment of persons, and the forfeiture of vessels; condemns a vessel for being engaged in the business of the slave-trade. Can it be contended that the outward voyage of a vessel fitted out for the slave-trade, is not included in that language; and, if so, is it possible to exclude'from the punishment prescribed by the act, a person voluntarily and knowingly serving on board the vessel, when its object was evidently to reach the one as well as the other ? ■ Again, the third section punishes a citizen of the United States who voluntarily serves on board of a foreign vessel engaged in the slave-trade; the second section punishes a citizen of the United States who voluntarily .serves on board of an American vessel engaged in transportation and carrying of slaves. Could Congress intend to make the same act of a citizen of the United States more or less criminal in the one case than in the other ? Yet so it must do, if a different meaning is to be given to the language used in the two sections.
    The construction contended for is also sanctioned by judicial decisions. The case of the Alexander, 3 Mason, 175, was an indictment for holding a right of property in a vessel “ employed in the transportation and carrying of slaves.” The vessel was prepared for that purpose, but had taken no slaves on board.; yet the defendant was convicted. In the case of the Fortuna, 1 Dodson, 81, the outward voyage was held to be a violation of the slave-trade acts. In the case of the Donna Marianna, 1 Dodson, 91, Sir William Scott condemned, a vessel on the outward voyage, arid not having taken any slaves on board,' under the act of 23d May, -1806, (23 Raithby’s Stat. at Large, 326,) although the words of that act only embrace a vessel in which slaves “shall be exported, transported, carried,” &c. These are direct judicial decisions on the point in question.' The same principle of interpretation may be recognised in other cases. The Emily and Caroline, 9 Wheat. 381, was a libel under the act of 22d March, 1794, which condemns a vessel if she shall be fitted out for the slave-trade. Her fitting out was but just begun, yet it was held sufficient. In the Merino, 9 Wheat. 391, two points are established: that, the act of 10th May, 1800, was meant to prevent any citizen' of the United States from participating in or affording facilities for the slave-trade^; and that this general intent was. to be regarded in its construction. The Plattsburgh, 10 Wheat. 133, was condemned for being fitted out, under the act of 22d March, 1794, though the equipment was only commenced. In the United States ws. Gooding, 12'Wheat. 460, the vessel sailed from Baltimore without any fitments, they being sent in another vessel to St. Thomas, where she was to put them on board; yet this was held to be a fitting out at Baltimore. In the United States vs: Quincy, 6 Peters, 464, an indictment for fitting out a vessel, with intent to employ her in committing hostilities, was sustained, although the fitments were admitted to be insufficient.
    The result is, that where the general intent of a statute is to prevent certain acts, the subordinate proceedings, necessarily connected with them and coming within that intent, are embraced in its provisions. It is true, that in penal laws a more rigid rule of construction prevails than in relation to other statutes; but that rule does not authorize or contemplate a merely literal interpretation, at the expense of an evident intent, so expressed as to be w.ell known to a person violating it. 5 Wheat. 76. 95. 2 Mason, 144. Paine, 209. The act forbidden tó be done was, voluntarily serving in this voyage,, which was a voyage for the purpose of transporting slaves; whether or not that purpbse was fully effected (is immaterial, if it has-been proved to'the satisfaction of the jury that such was in fact the purpose of the voyage then in progress; and that the participation of the defendant in it was voluntary on his part, with a knowledge of that purpose.
    Mr. Philip Hamilton, for the defendant,
    submitted the following .written argument:
    Though four points' are presented on the record, there are substantially but two, viz. the first and fourth. These decided, dispose of the others.
    1. To sustain the prosecution, the case of the Alexander, 3 Mason, is chiefly relied on! The analogy, .though ingenious, does not seem just; as between a fostered trade and a pursuit denounced by a penal statute, to interpret that statute.
    The language used by Congress in reference to the fisheries should not be adopted in reference to the slave-trade; as the act in relation to the former speaks of “carrying on fisheries;” “employed in the fisheries;” “ a fishing voyage;” without defining any acts that shall constitute- the pursuit or employment: it is otherwise in regard tq the slave-trade. See acts of Congress of 18th February, 1793, (1 Story’s Laws U. S. 285;) act of June 19th, 1813, sec. 1, 2, (2 Story’s Laws, 1315.)

      2: If is improbable that the act of .1800, section third, aimed to reach intent; as the intent could not have been manifested in any other manner than by the precise acts inhibited by the second section, viz. the carrying, &c.
    The honest and the guilty trade would have been precisely similar to a certain point. Both vessels would go to the coast. Both would be similarly equipped.; Both would there take slaves on board.
    The next movement indicates the intent, and is the very carrying trade denounced by. the second section. It would- be a strange anomaly to legislate in regard to intent, after having legislated *in regard to the particular fact, when the intent could only be established by the consummation of the act forbidden.
    Contemporaneous circumstances and interests repel the idea that intent was ajmed at,.as the friends of the trade would never jeopard it by exposing the lawful trader to be captured on her outward voyage, in order to discover, from the vessel, evidence that she intended to prosecute an unlawful trade.
    3. If Congress aimed at intent, it .would have been so expressed in the act. No acts were ever more deliberated on, or more artifidaily prepared than the early slave acts.- . The friends of the trade watched the legislation with too much jealousy, not to detect that lurking object if it had existed. Refer to all the. acts, and it will be found that wherever intent has been dimed at, it has beén distinctly expressed. 1st, 2d, and 3d sec. of the act of March, 1794, (1 Story’s Laws U. S. 319 ;) 2d and 3d sec. of the act of 20th April, ISIS, (3 Story’s,Laws U. S. 1698.)
    4. If the prosecutor can claim that intent was involved in the third section of the act of 1800, why may he not say it wasialso the subject of the fourth section of the act of May 15th, 1820 ? both acts using synonymous expressions — the act of 1800, “employed in the slave-trade;” act of 1S20, “carrying on the slave-trade.”
    So the third section of the same act subjects the offenders to capital punishment, who, “ engaged in a piratical cruise or enterprise,” shall land and commit robbery. The expressions are as general as “ carrying on fisheries;” “ a fishing voyageyet, could a man be guilty of the capital offence who was on board of a vessel designed for “ carrying on the slave-trade,” who did not decoy; or land and forcibly seize slaves; or who was “engaged in a piratical cruise or enterprise,” and did not land and commit robbery ?
    In this prosecution, the United States seek, by blending the second and third sections of the act of 1800, to sustain.-the construction that intent was aimed at. With the same propriety they might coiitend, that the moment this vessel sailed from her home port she was guilty of piracy, under the act of 1820, because she might have been designed for the purposes therein specified.
    This expanding and enlarging of statutes by construction; this adaptation of statutes to the varying facts and circumstances of each case, rather than applying‘the varying facts to the immutable statute, is wholly inadmissible; especially so in criminal jurisprudence.
    5. In the case of the Alexander, the learned judge interprets the first and second sections by the third and fourth, and thinks Congress intended the same thing. Admitting that to a certain extent they mean the same, we still contend that the third and fourth sections are to be interpreted by the first and second. The meaning of the second section we get from the act itself, viz. the actual carrying of slaves. Section first (1800) gives double the. value of slaves which may have been transported or carried. Section, fourth forfeits alb but the slaves which may have been found on board :■ also, precludes the right to claim slaves found on board. The' language of the second section so clearly and explicitly expresses the. offence intended to be denounced, that every man who reads must' understand what is forbidden: hence there is no room for construction ; and the language must be taken in its natural sense and ordinary signification and import. ■, 1 Kent’s Com. 462. The words of a statute are to be .taken in their natural sense, and ordinary signification and import..
    In the United States vs. Wilberger, 5 Wheat. 96, it is held: Where there is no ambiguity in the words, there is no room for ronstructioih The case must be a strong one indeed to justify a Court in departing from the plain meaning of words, especially in a penal act, in search of an intention which the words themselves did not suggest.
    That the second section is limited to, the actual transportation as we claim for it, will appear from a brief historical view of the slave acts.
    The Constitution, article one, section nine, declares, that the migration or importation of such persons, as any of the states now existing (1789) shall think proper to admit, shall not be prohibited by Congress prior to the year 180S. That article secures the import trade for a given period. In 1794, the current of public sentiment became irresistible, and by the act of that date the traffic was cut up so far as measures suggested themselves to the wisdom of Congress, and were consistent with the sacred obligation of that instrument. The cardinal objects of the trade which could be reached, were the export and carrying trade. • The subjects in regard to which Congress could legislate, were vessels and persons. They, might legislate over the property of citizens and foreigners residing within the United States, as well as over their persons.
    By sec. 1 of the act of 1794, vessels of citizens or foreigners fitted out from the United States' to be employed in the export or carrying trade, were forfeited. By the second section of that act, they reached the persons of citizens or foreigners in the United State's, by a severe .penalty, who should fit out the vessels. Thus the subject rested until the year 1800, when it was ascertained that the áct of 1794, did not effectually accomplish its object; as ingenuity, sharpened by the hope of gain, soon devised means to evade that law. The carrying trade was found so lucrative, that though vessels might not be fitted out from the United States, still American capital, might be embarked in foreign vessels. - By sec. 1 of the act of 1800, all right and property directly dr indirectly owned in any vessel (American or foreign) employed in the carrying trade,’ was forfeited. Thus American capital and American vessels being excluded, Congress determining still further to cut up the trade, prohibited American citizens from rendering their personal services to promote it, and did so by the second and third sections of the act of 1800. The act of 1800 was merely auxiliary to the act of 1794; and from a careful examination of both, it will appear, that Congress therein exhausted all their powers of legislation on the subject, embarrassed as it was by the Constitution.
    6. It thus appearing that to prevent American citizens from serving on board of American, vessels employed in the carrying trade, was an essential link in the system, it. is obvious, that the second section is to be expounded precisely as the concise and perspicuous language expresses, and that there is no room for construction. Jn the third section a different form of expression is adopted. It would perhaps, be assuming too much to say, that the change was not a change of substance, rather than a loose and inartificial employment of language.
    We contend, that the third section means the same thing as the second, and something more. It means the slave-trade in foreign vessels, in all its illegal branches, so declared by Congress. The second section is confined to one portion of it. It, could not refer to the slave-trade prohibited by the laws of any other country, for two obvious reasons: 1. Because American citizens are not to be punished by the laws of the United States, for a violation of, the municipal laws of any other power. 2. If otherwise, in point of fact, the slave trade was a lawful trade in all its branches throughout the worid. until long after this period. In 1807, the first act of the Parliameni'of England was passed on this subject. !

    If this preposition be correct, then the slave-trade punished by the third section, was the trade prohibited by Congress, viz.: the carrying trade and the export trade on board of foreign vessels; to embrace these two branches, the general expression, “slave-trade,” was peculiarly appropriate. Whatever might have been the object of Congress, it is evident, by collating the acts and the sections of each, that the construction claimed for it by the prosecution cannot be sustained.
    7. In addition to these considerations, the defect of yrisdom should not be attributed to Congress of passing a law that irrUst inevitably fesult in the consummation of a wicked purpose. Once embarked in the pursuit, it is more dangerous to recede than to advance; when to go forward presents tire alluring prospects of gain, with the same, and, perhaps, greater chances of impunity.
    Mr. Nelson, for the defendant,
    stated that he would only ask the attention of the Court to the acts of Congress.
    The act of 1794, was intended to embrace two descriptions of cases. First, transporting of slaves from a foreign country to the ,-United States. Second, transporting slaves to foreign countries., _It also applies to fitting out vessels to carry on the slave-trade. This was the condition of the law when the act of 1800 was passed; and the object of that act was to riiake the penalties of the former act applicable to vessels not built in the United States.
    The'purpose of this prosecution is not to forfeit the vessel, but to punish persons serving on board of a vessel engaged in the slave-trade. The employment of a person on board a vessel engaged in the transportation and carrying of slaves, is a very different thing from the employment of a vessel, or person on board of a vessel, designed to be employed in the slave-trade. Whenever the legislature design to punish intention, they so express it.
   Mr. Chief Justice Taney

delivered the opinion of the Court.

This case comes before us upon a certificate of division from the Circuit Court of the United States, for the Southern District of New York, in the second circuit.

The defendant, Isaac Morris, is indicted under the second and third sections of the act. entitled “ An Act in addition to an Act entitled ‘ An Act to prohibit the carrying on the Slave-trade from the United States to any foreign Place or Country,” approved on the 10th of May, 1800.

The first count of the indictment charges that the defendant did, on the high seas, from the 15th of June until the 26th of August, in the year 1839, voluntarily serve on board of the schooner But»terfly, a vessel of the United States, employed and made use of in the transportation of slaves from some foreign country or place, to some other foreign country or place, the said defendant being a citizen of the United' States.

The second count charges that the defendant did, on the high seas, from the 15th day of June to .the 26th day of August, voluntarily serve on board of the schooner Butterfly, being a foreign vessel employed in the slave-trade; the defendant being a citizen of the United States. , •

It was proved on the trial, on the part of the prosecution, that the schooner Butterfly, carrying the flag' of the United States,, and documented as a vessel of the United States, sailed from Havana, for the-coast of Africa, on the 27th of July, 1839, having-on. board the usual and peculiar equipments of vessels engaged in the transportation of slaves from the coast of Africa to other places. Before she reached the African coast, and before any slaves were taken on .board, she was captured by the Dolphin, a British brig of wár, and carried into Sierra Leone; upon suspicion of being Spanish property, to be proceeded against in the Mixed Commission Court at that place. At the time of her capture, Isaac Morris was in command of the vessel, and was described in the ship’s papers and represented himself as a citizen of the United States. The Court at Sierra Leone declined taking cognisance of the case, because .the vessel was documented as an American vessel; and she was then sent to-New York, to be dealt with by the authorities of the United States, as they might think proper.

Upon the foregoing state of facts, the judges were divided in opinion upon the four following questions, which were presented on the facts aforesaid for their decision:

1. Whether it is necessary in order to constitute the offence denounced in the second section of the act of the 10th of May, 1800, above referred to, that there should be an aptual transportation or carrying of slaves in the vessel of the United States, on board of which the party indicted is alleged to- have served.

2. Whether it is necessary in order to constitute the offence denounced in the third section of the act of the 10th of May, 1800, above referred to, that there should be an actual transportation or carrying of slaves in a foreign vessel, on board of which the party indicted is alleged to have served.

3. Whether the voluntary, service of an American citizen, on board a vessel of the United States, in a voyage commenced with the intent that the vessel should be employed and made use of in the transporting or carrying of slaves from one foreign country or place to another, is in itself, and where no slaves had been transported in such vessel, or received on board her, an offence under the said second section.

4. Whether the voluntary service of an American citizen, on board a foreign vessel, in a voyage commenced with the intent that the vessel should be employed and made use Of in the transportation and carrying of slaves from one foreign country or place to another, is in itself, and where no slaves have been transported in such vessel, or received on board her, an offence under the said third section.

And these points having been certified to this Court, we proceed to express our opinion upon them.

■ The second section of the act of Congress above mentioned, declares, “that it shall be unlawful for any.citizen of the United States, or other person residing therein, to serve on board any vessel of the United States, employed or made use of in the transportation or carrying of slaves from one foreign country or place to anothér; and'any such\citizen or other person, voluntarily serving as aforesaidyshall be liable to be indicted therefor, and on conviction thereof •shall be liable to a fine not exceeding two thousand dollars,-and be imprisoned not exceeding two years.”

The first-and third points certified from the Circuit Court, depend on the construction of this section.

, In expounding a penal statute the Court certainly will not extend it beyond the plain meaning of its words; for it has been long and well settled, that such statutes must be construed strictly. Yet the evident intention of the legislature ought not to be defeated by a forced and overstrict construction. 5 Wheat. 95.

The question la this case is, whether a vessel, on her outward voyage to tne coast of Africa, for the purpose of taking on board a cargo of slaves, is “ employed or made use of” in the transportation or carrying of slaves from one foreign country or place to another, before any slaves are received oh board ?

To be “ employed” in any thing, means hot only the act of doing it, but also to be engaged to do it; to be under contract or orders to dp it. And this is not only the ordinary meaning of the word, but it has frequently been used in that sense in other acts of Congress. Thus; for example, the seébnd section of the act of March 3d, 1825, entitled, “ an act to reduce into one, the several acts establishing and regulating the post-office department,” declares, “ that the Postmaster-general, and all other persons ‘ employed’ in the general post-office, or in the care, custody, or conveyance of the mail, shall, previous to entering upon the duties assigned to them,” take the oath prescribed by that section. Here the persons who have contracted to. perform certain duties in the general post-office, are described as "employed” in that department, before they enter upon the duties assigned them. So, also, in the twenty-first section of the same law, various offences, .such as the embezzling or destroying any letter, are enumerated, and the punishment prescribed, when com? mitted by any person “ employed in any of the departments of the post-office establishment.” Yet it cannot be supposed that the party must be actually engaged in transacting his official duties when the letter was embezzled or destroyed, in order to constitute the offence described in this section.

Again, tlfe act of July 2d, 1813, .sec: 8, (2 Story, 1353,) declares, that certain yessels_“employed” in the fisheries, shall no't be entitled to thé bounties therein granted, unless the master makes an agreement, in writing or in print, with every fisherman employed therein before he proceeds on any fishing voyage. Here the vessel is spoken of as “ employed” in the fisheries, before she sails on the voyage.

So, also, the act of March 3d, 1831, (4 Story, 2256,) entitled, “an act concerning vessels employed in the whale fishery,” authorizes vessels owned by any incorporated company, and “ employed wholly in the whale fishery,” to. be registered or enrolled, and licensed in a particular manner, “ so long as any such vessel shall be wholly employed in the whale fishery.” The register or enrolment and license, must be obtained before the vessel sails on her outward voyage to the whaling grounds; and, consequently, in that voyage she must be “ employed” in the whale fishery, in the sense in which these words ^ire used in the act of Congress; otherwise, she would not be entitled to the register or enrolment' and license authorized by this law.

In like, manner, the vessel in question was employed in the transportation of slaves, within the meaning of the act of Congress of May 10th, 1800, if she was sailing on her outward voyage to the African coast) in order to take them on board, to be transported to another foreign country. In such a voyage,, the vessel is employed in the business of transporting and carrying slaves from one foreign country to another. In other words, she is employed in the slave-trade. And any citizen .of the United States, who shall voluntarily serve on board any vessel of the United States, on such a voyage, is guilty of the offence mentioned in the 'second section of this act of Congress. It is hardly necessary to ádd, that “ voluntarily,” in this section, means, “ with knowledge” of the business in which she is employed. And in order to constitute the offence, the party must have knowledge that the vessel was ’ bound to the coast of Africa, for the purpose of taking slaves on board, to be transported to some other foreign country.

The same reasoning aóplies to the third section of the law, under which the second and fourth points certified, to this Court have arisen.. The vessel is “ employed in the slave-trade” when sailing to the African coast for the- purpose of taking the slaves on board.

We therefore answer the first and second questions in'the negative, and the third and fourth in the affirmative; and it will be certified accordingly to the Circuit Court.

This cause came on to be heard on the transcript of the record from the Circuit Court of the United States for the Southern District of New York, and on the points and 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 and provided, and was argued by counsel. On consideration whereof, it is the opinion of this Court:

1. That it is not necessary, in order to constitute the offence denounced in the second section of the act of the 10th of May, 1800, referred to, that there' should be- an actual transportation or carrying of slaves in the vessel of the United States, on board of which the party indicted is alleged to have served.

2. That it is. not necessary, in order to constitute the offence denounced in the third section of the act of the 10th of May, 1800, above referred to, that there should be an actual transportation or carrying of slaves in a foreign vessel, on board of which the party indicted is alleged to have served.

3. That the voluntary service of an American citizen on board a vessel o{ the United States, in a voyage commenced with the intent that the vessel should be employed and made use of in the transporting or carrying of slaves from one foreign country or place to another, is in itself, and where no slaves had been transported in such vessel, or received on board her, an offence under the said second section.

4. That the voluntary service of an American citizen on board a foreign vessel, in a voyage commenced with the intent that the vessel should be employed and made use of in the transportation and carrying of slaves from one foreign country or place to another, is in itself, and where no slaves had been transported in such vessel, or received on board her, an offence under the said third section.

Whereupon, it is now here ordered and adjudged that it be so certified to the said Circuit Court accordingly.


author: Mr. Justice Baldwin!-

text:
    The United States, Appellants, vs. The Heirs of Eleazer Waterman, Appellees.
    A grant of land by the government of Florida, made before the cession of Florida to the United States by Spain, confirmed.1 every point involved in the ease having been conclusively settled by the Court in their former adjudications in similar cases. •
    APPEAL from the Superior Court of East Florida.
    The case was submitted to the Court, on the record, by Mr. Gil-pin, Attorney General, for the United States.
   Mr. Justice Baldwin!-

This cáse comes up by appeal from the Superior Court' of East Florida, in which the claim of the appellees to a tract of land described in. the record, was confirmed by a decree of that Court, proceeding pursuant to the acts of Congress for the final adjustment of claims to land in that territory.

It has been very candidly and properly admitted by the. Attorney General, that every point involved in the case has been conclusively settled by this Court,-in their former adjudications on similar cases; it therefore becomes unnecessary-to state the nature of the claim now before us, further than that it is founded on' a lawful grant, on conditions which have been fully performed by the grantee. This Court therefore orders, adjudges, and decrees, that the decree of .the Court below, adjudging that the title of the appellees is valid under the treaty of 22d February, 1821,. between the United States and Spain, the laws and customs of Spain, the law of nations, and of the United States, be, and the same is hereby, affirmed; and the cause is remanded to the Court below, with directions-to further proceed therein, and to cause such further proceedings to be had as by law is directed.