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Insurance Companies v. Wright/Opinion of the Court

The only question submitted to the jury on the second trial, the record of which is now before us, was whether the Mary W., the vessel in which the loss occurred, did or did not rate below A 2, within the meaning of the policy. Some of the instructions prayed by the defendants, and refused by the court, proposed to submit to them another question. Having given testimony which tended to establish a usage, that the premium named in the policy was in all cases a mere nominal one, and that the insurer had a right, when the risk was reported, to vary the rate of premium as he might wish, they asked the court to instruct the jury that if such a usage were proved, then the defendants had the right to demand, as they had done, an increased rate, which plaintiff had refused to give, without any regard to the rating of the vessel above or below A 2; and that plaintiff could not recover. This is the substance of the seventh the eighth instructions prayed by defendants.

Their ninth prayer, assumed that such was the construction of the policy, without any aid from usage to assist in its interpretation.

We do not think that the policy on its face can be so construed. It is signed by the defendant, and not by the plaintiff. All its promises are made by the defendant in its own language. All its exceptions and reservations are those of defendant. The rule is that when in such cases the language requires construction, it shall be taken most strongly against the party making the instrument.

The various phrases which relate to this matter of premium, are scattered through the policy 'in most admired disorder.' They may be brought together and stated thus: The plaintiff is insured on one-fourth of five thousand bags of coffee, from Rio de Janeiro to a port or ports of the United States. The consideration of the insurance is acknowledged to be paid at the rate of 1 1/2 per cent.; an additional premium if shipped by vessels lower than A 2, or by foreign vessels; a return of 1/4 per cent., if shipped direct to an Atlantic port; the premium on risks to be fixed at the time of indorsement, and such clauses to apply as the company may insert, as the risks are successively reported. As it was not known that the coffee had been shipped, or on what vessels it had been or might be shipped, they were to be reported as soon as the owner received advices. Then the premium on the risks was to be fixed. But by whom and by what rule? The policy, we think, answers this, except in the case of a foreign vessel, or one rating below A 2. In either of these cases the premium was to be increased. If the shipment was direct to an Atlantic port, 1/4 of 1 per cent. was to be deducted. But if the vessel was not a foreign vessel, nor one that rated below A 2, nor the shipment direct to an Atlantic port, then the premium was already fixed, and the money paid, and nothing more remained to be done in that respect.

This provision, that the premium shall be fixed at the time of the indorsement of the risk on the policy, has its full use and function in the three contingencies above-mentioned, wherein it is expressly stipulated that the rate shall differ from one and one-half per cent. The very fact that these three contingencies are expressly named, in which a different rate of premium may or shall be charged, excludes the idea that one of the parties may vary the rule in all cases, or in any other case.

Much weight is attached in the argument in this connection, to the phrase 'such clauses to apply as the company may insert, as the risks are successively reported.' It is not necessary to determine here what is the character of the clauses referred to, or what effect that phrase might have under certain circumstances. A war, a blockade, or some other change of affairs occurring after the policy was signed, might justify the company in inserting some clause for its protection, but we do not think it can be so construed as to authorize a clause changing the rate of premium in a case where it is fixed by the other terms of the contract. No such clause was added, or proposed to be added to the policy by the company, and it is useless to speculate on what might or might not have been successfully claimed, in a case where no claim was made.

We have thus shown that the instrument has a well-defined meaning in reference to the rate of premium, and that it does not justify the ninth instruction asked by the defendants.

When we have satisfied ourselves that the policy is susceptible of a reasonable construction on its face, without the necessity of resorting to extrinsic aid, we have at the same time established that usage or custom cannot be resorted to for that purpose. In speaking of usages of trade, Greenleaf says: Their true office is to interpret the otherwise indeterminate intentions of parties, and to ascertain the nature of their contracts, arising not from express stipulation, but from mere implications and presumptions, and acts of doubtful and equivocal character, and to fix and explain the meaning of words and expressions of doubtful and various senses.' Again, he says, 'But though usage may be admissible to explain what is doubtful, it is not admissible to contradict what is plain.' In the case of the Schooner Reeside, Mr. Justice Story, after using language strongly condemning the tendency to introduce and rely on usages in courts of justice, and defining their true office in the language just cited from Greenleaf, proceeds to say: 'But I apprehend that it can never be proper to resort to any usage or custom to control or vary the positive stipulations in a written contract, and, a fortiori, not in order to contradict them. An express contract of the parties is always admissible to supersede, or vary, or control a usage or custom; for the latter may always be waived at the will of the parties. But a written and express contract cannot be controlled or varied or contradicted by a usage or custom, for that would not only be to admit parol evidence to control, vary, or contradict written contracts, but it would be to allow mere presumptions and implications, properly arising in the absence of any positive expressions of intention, to control, vary, or contradict the most formal and deliberate written declarations of the parties.' These views, in addition to the high source whence they came, commend themselves to our judgment by their intrinsic soundness. 'Not only is a custom inadmissible which the parties have expressly excluded, but it is equally so if the parties have excluded it by necessary implication. For a custom can no more be set up against the clear intention of the parties, than against their express agreement, and no usage can be incorporated into a contract which is inconsistent with the terms of the contract.'

Tested by these principles the usage attempted to be set up in the case at bar cannot be sustained. It contradicts directly the written contract. It proposes to set aside all that is said about the rate of premium, and substitute the discretion of one of the parties to the instrument. It goes upon the assumption that all that is written in the contract, which fixes, or ascertains, or limits the amount that may be claimed for premium of insurance by the company, is nugatory, and that the whole field is left open, and the power placed in the hands of one of the parties exclusively. No such usage can be admitted thus to contradict, vary, and control this contract.

The court below was right in refusing the prayers of the defendants which we have been considering, and in submitting as the only question for the jury to determine, the rating of the vessel in reference to A 2.

Upon this question the defendants below, in some five or six forms, prayed that the jury be instructed that it must be determined by the rating of the vessel on the books of the defendants, and other insurance companies in New York. The court refused the prayers, but told the jury, that 'if they should find that the rating of vessels on the registers of the companies in New York was always from personal examination by inspectors of the different companies, and should further find that by the long absence of the said vessel from New York, she had, in the understanding and usage of underwriters in New York no fixed rating on the registers of any of the insurance companies in that city in 1856,' (the date of the contract), 'but would have been rated there not lower than A 2, owing to her thorough repair, had she been there for examination, then the plaintiff is entitled to recover, although the jury may find that the said vessel was rated in 1848 and 1849 on the books of defendant, below A 2; and that it was the general usage and understanding of underwriters and commercial men in New York, that the words in their policies, 'not rating below A 2,' refer to the rate of vessels on the register of the company making the insurance.'

It is claimed by the plaintiffs in error, that the proposition submitted to the jury as to the rating of the vessel, must be determined exclusively by a reference to the books of the company making the policy. Although no such instruction was asked in the court below, it is urged upon this court that such is the true construction of the contract, and that the charge of the court was in conflict with this position.

There is nothing in the language of the policy itself to indicate the source to which we are to look for the determination of the rating of the vessel. The reasonable inference would seem to be, that, like any other question of value, or quantity, or quality, left open in a written contract, it should be decided by a reference to all the sources of information which enable the jury to fix the rate correctly. What is meant by the rating of vessels in insurance policies? It means the determination of their relative state or condition in regard to their insurable qualities. It is a matter which has excited much interest in the commercial world, although we are not aware that it has been often before the courts. In Great Britain there was established, in the year 1834, a department at the British Lloyds devoted to this very business. They have their inspectors in all the ports of the three kingdoms, whose reports are forwarded to a board at London, and this board fixes the rate of all vessels which are known to it, and whose owners are willing to have them examined. The register thus kept, is the one used and referred to in all contracts of insurance in that country. They, however, have a mode of rating entirely different from any adopted here. The testimony in this case shows that there is in New York an institution calling itself the American Lloyds, which is now attempting to establish the same position as the one referred to in England. But the proof is, that its rating is not generally adopted as yet, either by insurers or insured; and that each company in New York which does any considerable amount of business, has its own inspectors and its own register for rating vessels. The evidence shows that this rating differs very materially on the registers of the different companies. None of these registers have, or can have, any right to determine conclusively the rate of a vessel, when that question comes to be determined in a court of justice. It would seem that in a question of this kind, left open by one of these insurance companies, and the party whom it has professed to insure, equity would require the matter to be determined, if by the register of any company, by some other than that of the party interested. These registers are the private books of the companies. They are not for public use, and can only be seen by the courtesy of the companies' officers. Under these circumstances the justice of the principle which would refer the rating of the vessel exclusively to this register of a party to the suit, when no such provision is inserted in the policy, is not perceived. If they make their contracts, intending to assert such a claim, fair dealing requires that they insert it in their policy.

But testimony was introduced tending to show that, by the usage of underwriters and merchants in New York, the rating referred to was the rating on the register of the company which made the policy, and the court instructed the jury to disregard this usage, if they should find that there was no rating of this vessel on the books of one of the defendants, and none since 1849 on the books of the other company.

The testimony shows that the Mary W. left New York in 1849, and has never been there since, and that was the date of the last rating on the books of the 'Sun Mutual Insurance Company,' one of the defendants, and that the 'Orient Mutual,' the other defendant, came into existence in 1854, and the Mary W. never had a rating on its register.

It was also proved by several witnesses, and is uncontradicted, that a rating seven years old is regarded by all insurance men as no rating at all. Here is a case, then, where a party is seeking to incorporate into his contract a usage, that the rating mentioned in his policy must have exclusive reference to his own register, when the vessel supposed to be insured is not on that register at any rating whatever. It must be remembered that we are now trying to arrive at the intent of the parties at the time the policy was made, and that this usage is introduced to assist us in that effort. Can it be believed that the contracting party, who paid his money at that time for insurance on coffee, to be shipped on any vessel that was seaworthy, whether below A 2 or above it, whether foreign or domestic, had any idea that he was limited in the selection of his vessel, to such as might be found on the register of the company he was dealing with? Or that the company, which professed to insure the coffee on home vessels or foreign vessels, on vessels rating above or below A 2, on shipments to Atlantic ports or Gulf ports from Brazil, intended to limit the plaintiff to the use of vessels whose names might be found on their register? And this, too, when one of the companies had no register reaching back more than two years. Yet we must believe this, if we hold the usage mentioned in the instrument as controlling the case.

It is not, however, necessary to go any further in this case than to decide, as we do, that such usage, if it were admissible at all, could only apply to the case of a vessel which had an actual rating on the books of the company so recent as to be recognized by insurers as a valid rating. And that as the Mary W. had no such rating on the books of the defendants, the usage cannot apply to these contracts. Such was evidently the view of the court below, in which we think it was correct.

But the court was asked by the defendants below to instruct the jury, that in determining the rate of the Mary W., they must confine themselves to the registers of the defendant and the other insurance companies of New York.

The vessel had no rating on the books of any insurance company in New York, later than 1849, which was more than seven years before the risk was claimed to attach in these cases. It was, as we have already said, fully proved that such a rating was wholly disregarded by all insurance companies, as being of no value. The effect of the instruction would have been, to confine the jury to testimony which would give them no light on the subject they were directed to consider; indeed, to that which could not be called evidence at all. And the argument that plaintiff could not be supposed to have contracted with reference to any such rule as this, is quite as forcible as it is in regard to the claim to confine the evidence to defendants' own books. In this instance, there is no claim that the rule is supported by any usage. These registers differ among themselves, and those offered in evidence show that at the time the Mary W. left the Atlantic coast for California, in 1849, she had as many as three different ratings on the books of the five companies whose registers were offered in evidence. Which of these should prevail, even if they were recent enough to be admissible? Shall the jury be excluded from all other evidence to explain these differences, or to show the relative value or reliability of these different estimates? Can any sound reason be given for such exclusion? It is supposed that the few companies which may happen to have a vessel on their register have exhausted the means of information as to her character, and that no one else can throw any light on it? So far from restricting the jury in this manner, it seems to us that as the true object of inquiry is to fix the insurable character or status of the vessel, they should be at liberty to hear any testimony which would tend to show her capacity for resisting the perils insured against. It is therefore our opinion, that when the court instructed the jury to base their verdict on the fact to be ascertained by them, whether the Mary W. would or would not have rated below A 2 in New York, had she been there for examination, the rule was stated quite as favorably to plaintiffs in error as sound principle will justify.

It is objected that the testimony of certain persons in Rio, and especially the agreed statement that she was entitled to rate as high as A 2, at that place, was not competent under the issue. We think this fact might well be submitted to the jury with many others, none of which were conclusive, but all bearing on the question before them. The fact that she had been newly and thoroughly repaired, had been surveyed before and after the repairs, and the results of these surveys, the results also of examinations made by seamen long engaged in the trade between Rio and the United States, were the best, perhaps the only evidence, of her then condition and insurable status. When the court, in addition to these facts, admitted on the part of plaintiffs, in error, the opinion of New York experts on this testimony to go with it, and also the seven years' old rating of the plaintiffs in error, and other insurance companies, we cannot but conclude that the case went fairly to the jury on the testimony. None of it was held conclusive. No instruction was asked of the court or given as to its relative value, and as none of it was absolutely irrelevant, we see no error in its admission to the prejudice of the plaintiffs in error.

We have thus examined in detail, and with much caution, the points raised against the verdict below, and, as we find none of them tenable, the judgments are

AFFIRMED.

The policy in this case underwent a very full examination when it was formerly before the court. The evidence in that case showed, and the argument of the counsel proceeded upon the assumption, that the vessel rated in New York, the place of the contract, below A 2; and, inasmuch as the policy provided, in case of that rating, for an additional premium, the principal question was, whether or not the company had a right to fix the additional premium, or, in case of dissent by the insured, it was a question to be determined by the court and jury. This court held, upon a true construction of the policy, that the right belonged to the company. The judgment of the court below was reversed, and the cause remanded for a new trial. On this second trial, which is now before us for review, the plaintiff placed his right to recover upon the ground that, at the time the Mary W. was reported to the company for indorsement on the policy, she, in point of fact, rated A 2, and hence came within the description of vessels in the policy that were to be insured for the premium paid when it was issued, which was 1 1/2 percent. This ground was denied by the company, and, in addition, they also maintained that even if, as claimed, the vessel rated A 2 at the time of the report for indorsement, they had a right to add to the premium of the one and one-half per cent.; and inasmuch as the plaintiff had refused to pay this additional sum, no insurance of the coffee was effected. This latter position of the company assumed that, upon the true construction of this running policy, no binding contract of insurance existed in respect to a vessel reported for indorsement, whether she rated A 2 or not, until the company had fixed the rate of premium, and the insured had assented to it; and further, that whether the vessel rated A 2 or above that rate, they had a right to demand an additional premium to that mentioned in the policy.

We will reverse the order of the questions as stated, and inquire, first, whether or not the company are bound by the terms and conditions of the policy to insure a vessel for the premium mentioned on the report of her for indorsement, if at the time she rates at or above A 2?

The article insured, as specified in the policy, is coffee, to be shipped from Rio de Janeiro to a port or ports in the United States, the company to add an additional premium if by vessels lower than A 2, or by foreign vessels; 1/4 per cent. to be returned if shipped direct to an Atlantic port. The premium paid as the consideration for the insurance, as recited in the policy, is at and after the rate of one and one-half per cent.

If there were no other provisions in this policy relating to the premium than those above stated, it would seem to be plain the coffee shipped in a vessel rating A 2, or above, would come within the description required by its terms as a condition of its binding effect, for the right of the company to add an additional premium is limited to the case of a vessel rating below A 2. If A 2, or above, no addition is to be made, and, if not, the moment the vessel is reported for indorsement the contract is complete. The whole of the premium that could be demanded had been already received by the company.

But there is another clause in this policy, which it is supposed qualifies the above construction, and which is as follows: 'The premiums on risks to be fixed at the time of indorsement.' The company rely upon this clause as securing to them the right in all cases to fix the premium at the time the risk is reported; and consequently, unless that rate is assented to by the insured, there is an end to the incipient contract, and, as we have already said, the company claims also under this clause to add to the premium in the policy even if the vessel rates A 2, or above, even if she should rate A 1.

In order to understand the force and effect of this clause, it will be useful to refer, for a moment, to the usage of the company in taking these risks on their running policies, as proved in this case. The premiums specified in the body of the policies are regarded as nominal, or rather as average premiums, and the true premiums to be charged are fixed by increasing or reducing the average premiums when the risk is reported. This usage explains what is meant by the clause, 'The premiums on risks to be fixed at the time of the indorsement,' for, by recurring to the terms of the policy, it will be seen they provide for the case when an addition to the premium may be made, namely, when the vessel rates below A 2; and also, when the reduction is to be made, namely, in case the vessel rates A 2, or above, and the shipment of the coffee is to an Atlantic port, the reduction then is to be 1/4 per cent. This usage has been carried out, practically, during the running of this policy. The following vessels are indorsed on it: 'August 13, 1855, Bark Maine Law, from Rio de Janeiro to New Orleans, $15,750 at 1 1/2 per cent.; Brig Windward, from same place to Baltimore, $4750 at 1 1/4 per cent. Nov. 20, Brig T. Walters, from same place to Philadelphia, $2375 at 1 1/4 per cent.' This usage and the practice under it, furnishes a full explanation of the clause in question, and reconciles it with the previous parts of the policy, which were supposed to be in contradiction to it. It is true, the premiums are to be fixed at the time the risks are reported, but they are to be fixed in accordance with the stipulations in the policy, which, as we have seen, have specially provided for them. The company can make no additions to the premium except the vessel rates below A 2. If at or above this rate they are bound to deduct the 1/4 per cent., when the risks are reported, if shipment be to an Atlantic port.

As to the other provision relied on, namely, 'And such clauses to apply as the company may insert as the risks are successively reported.' I agree that they have no reference to the questions involved in this case, and may be left for construction when a case arises under them.

The next point in the case, and the only difficult one in my judgment, arises out of the position taken by the plaintiff in the court below, that the vessel Mary W., in point of fact, rated as high as A 2 at the time she was reported to the company.

We lay out of view all questions, so fully discussed on the argument, whether or not the rating of vessels referred to in the policy, related to the rating in the books of the company, or, if not, to the books of other companies in the city of New York; and whether resort must be had exclusively to these books for the purpose of ascertaining the rating of the vessels; for it appears from the evidence, and is not to be denied, that neither the books of the Orient, or of the Sun company, nor of any other of the insurance companies in the city, contained in contemplation of law a rating of the Mary W., at the time she was reported to the two companies, that could be of any controlling weight on the question. She was not rated in the books of the Orient at all, and had not been in those of the Sun for some seven years; and the same is true in respect to the other companies. There is not evidence in the case, therefore, to raise the questions as to the effect to be given to the rating of a vessel in the books of the company at the time of the insurance; and hence, it would be premature to express any opinion upon them, or upon the effect to be given to the like evidence in respect to the books of other companies at the place of the contract. These are important and interesting questions, and may well deserve the deliberate and careful consideration of the court when properly presented for decision.

The evidence, with a view to ascertain the rate of the Mary W. at the time she was reported for indorsement on the policy, 23d August, 1856, must of necessity be derived as well from other sources as from the books of insurance companies; and the questions are, in this posture and condition of the case, whether the court below admitted improper evidence against the objections of the defendants, and whether the charge of the court in submitting the case to the jury is subject to any of the exceptions taken to it.

As we have seen, there being no evidence in the record of this rating of the vessel on the books of the Orient company at all, nor upon those of the Sun at the time she was reported, within the period of some seven years, after the lapse of which time the rating bound neither the company nor the insured, the question whether the Mary W. rated at the time reported not lower than A 2, of necessity depended upon general evidence of the character and condition of the vessel, and could not be restrained to the rating in the books; so in respect to the other insurance companies in the city of New York, as the rating in these books was made also some seven years prior to this insurance transaction. And, as it respects this general evidence, the appellate court can only look at such parts of it as were objected to and exceptions taken at the time offered at the trial.

The only exception we find taken is in respect to the competency of the testimony on a commission to Rio de Janeiro, or rather to the admission of evidence as the substitute for the commission, and which is, that the Mary W., at the time she left Rio on the voyage in which she was lost, was in a seaworthy condition, fit for any voyage, and especially for the transportation of coffee; and was, by reason of thorough repairs at Rio, entitled to rate, and did rate A 2 there. We agree that the rating of the vessel at Rio was not the criterion to determine the question before the court and jury. But it was competent testimony, tending to prove the quality and condition of the vessel at the time of her report to the company. The proof of the rating of a vessel consists, not only of testimony as to her construction, materials, age, &c., but also, of the opinion of experts, such as ship-builders and ship-masters, and others familiar with the subject. The record in this case is full of examples of this description of evidence, and the opinion of the witnesses as to the rating of a vessel is but the expression of the result of their examination of her. The rating by official inspectors, with a view to an entry in the books of a company, is evidence of the same character.

Then, as to the charge of the court. It is certainly very comprehensive and involved, and must have been difficult for a jury to understand; but we will endeavor to state the substance of it, which is this: that if the jury should be of opinion from the evidence, that the Mary W. at the time she left Rio was seaworthy and in good condition, and after her repairs was specially fit for the transportation of coffee, and rated there A 2; and shall further find, that by the long absence of said vessel from the city of New York, there was no fixed rating on the registers of any of the insurance companies in that city in 1856; but that she would have been rated there not lower than A 2, owing to her thorough repairs, had she been there at the time, then the plaintiff was entitled to recover, notwithstanding she rated in the city of New York in 1848-9 on the books of defendants below A 2; and notwithstanding it was the usage and understanding of underwriters and commercial men in that city, that the phrase 'not below A 2,' referred to the rate of vessels on the books of the company making the insurance.

If this charge is examined with reference to the evidence in the case, we think it is unexceptionable. It must be remembered that there is no testimony found in the record of a rating in the books of the companies, defendants, or in other insurance companies in the city of New York, that could, in any aspect of the case, be controlling. It was necessary, therefore, to go outside of these companies, and resort to general evidence of the character and condition of the vessel, in order to find her rate at the time of the report for indorsement; and in this view of the case, and which we think the true one, the court instructed the jury, if upon this evidence they find that the Mary W. would have rated in the city of New York at the time of the report, the plaintiff was entitled to recover, otherwise not. We do not see how the case could, consistently with the evidence, have been put to the jury more favorably to the defendants. If these companies will undertake to insure vessels according to their rate, when no fixed rate is found in their books at the time, and no fixed standard exists, such as the British Lloyds, in England, by which to ascertain the rate, resort must necessarily be had to general evidence of the character and condition of them at the time of the insurance, with a view to the rate that would be assigned to her in the city of New York, the place of the contract.

For the reasons above given we think the judgment of the court below right, and should be affirmed.

Mr. Justice FIELD concurred in the opinion of Mr. Justice NELSON.

Finding myself unable to concur in the conclusions at which a majority of my brethren have arrived, I will state briefly the grounds of my dissent. My remarks will be confined to the case of the Orient company. The same objections apply in both cases.

[His honor here quoted the language of the policy, and stated the principal facts already set forth in the statement of the case, and proceeded]:

When the case was here, as reported in 23 Howard, 401, this court held that if the Mary W. were of a rate lower than A 2, 'unless the assured paid or secured the additional premium fixed by the underwriters, the contract of insurance did not become complete and binding.' The judgment of the court below was reversed and a venire de novo awarded. That adjudication is before us for our guidance, not for review. The reasoning of the court commands my assent.

Upon the retrial of the case in the court below, the main question necessarily was, whether the Mary W. was or was not below the rate of A 2. This proposition involved the further inquiry, By what standard the rate was to be determined? Was it by that of Rio de Janeiro whence she sailed? Was it by that of Baltimore, where the application for insurance was made? Was it by that of the city of New York, where the policy was issued? Or was the question whether she was A 2, to be answered only by the register of the company? and if that were silent, the consequence to follow, that she was not A 2 within the meaning of the contract? It was proved that the rules of rating at Rio and Baltimore were different from those of New York; that the standard at New York was the highest, and that a vessel might be rated A 2 at Rio and Baltimore, which would fall below that rate at New York. It was also proved that each of the marine companies of New York keeps constantly in its employment a salaried officer, whose business it is to examine and rate vessels, and that the rates of the vessels thus examined by him, are reported to the company and entered upon a book kept for that purpose. Mr. Swan, of the house of Grinnell, Minturn & Co., of New York, a witness examined in behalf of the plaintiff, testified as follows: 'The business of rating is a special one. The companies all have inspectors to ascertain the rating of vessels. When a policy speaks of the rate of vessels, it means the rate of the company and refers to that standard.' Other testimony to the same effect was given.

Upon the last trial the court instructed the jury that if they should find (1), 'That by the long absence of the said vessel from New York, she had, in the understanding and usage of underwriters in New York, no fixed rating on the registers of any of the insurance companies in that city in 1856, but would have been rated there not lower than A 2, owing to the thorough repairs, had she been there for examination, then the plaintiff is entitled to recover in this case. . . (2), although the jury find that it was the general usage and understanding of underwriters and commercial men in New York, that the words in these open policies of insurance, 'not below A 2,' refer to the rate of vessels on the register of the company making the insurance.'

For the present I pass by the second part of these instructions. A majority of my brethren hold both parts to be correct. Conceding the first to be so, then the testimony should have been confined to facts tending to show what the rate of the vessel would have been in New York, if she had been there for examination.

The plaintiff was permitted to prove that she was 'A 2,' according to the rating of Rio and Baltimore. The defendants objected and excepted. I think this testimony was incompetent and irrelevant. It was wholly immaterial what the rate of the vessel was according to the rules of rating at any other port than New York. The testimony must have tended strongly to mislead the jury. Having found that the vessel was 'A 2' at Rio and Baltimore, according to the standard of those places, it was but one step further to the conclusion, that she ought to have been and would have been rated A 2 at New York.

There are no cases in which it is more important to the right administration of justice that the rules of law should be carefully applied in trials by jury, than in those of the class to which this case belongs. The admission of this testimony, in my judgment, was an error. If such a usage existed as the second part of the instruction supposed, it entered into the contract. In that case it enlightens the ambiguity and ascertains the meaning of terms 'A 2' as used in the policy. 'It may also be laid down as clear law, that if a man deals in a particular market, he will be taken to act according to the custom of that market; and if he directs another to make a contract at a particular place, he will be presumed to intend that the contract shall be made according to the usage of that place.' 'Witnesses conversant with the business, trade, or locality to which the document relates, are called to testify that according to the recognized practice and usage of such business, trade, or locality, certain expressions contained in the writing have in similar documents a particular conventional meaning.' 'In resorting to evidence of usage for the meaning of particular words in a written instrument, no distinction exists between such words as are purely local or technical-that is, words which are not of universal use, but are familiarly known and employed, either in a particular district, or in a particular science, or by a particular class of persons,-and words which have two meanings, the one common and universal and the other technical or local. In either case, evidence of usage will be alike admissible to define and explain the technical, peculiar, or local meaning of the language employed. Though in the latter case, it will also be necessary to prove such additional circumstances as will raise a presumption that the parties intended to use the words, in what the logicians call the second intention, unless this fact can be inferred from reading the instrument itself.'

The learned judge, instead of directing the jury to disregard the custom, should have instructed them that if established to their satisfaction, and especially if known to the assured, from his previous transactions with the company or otherwise, it determined the meaning of the terms A 2, and was fatal to the right of the plaintiff to recover.

The construction claimed by the underwriters involved no hardship to the defendant in error. When the parties failed to agree as to the premium, he was at liberty to insure elsewhere. He refused to pay the premium demanded, yet insisted they were bound. The company had a right to guard against the alternative of submitting the rate of the vessel to the judgment of a jury; I think they intended to do so. In any view which I can take of the subject, there was error in the second part of the instructions. For these reasons, in my opinion, the judgment should be reversed, and the cause remanded for further proceedings.

I am requested to say that Mr. Justice DAVIS concurs in this opinion.


text: Talk:Insurance Companies v. Wright/Opinion of the Court

license: Creative Commons - Attribution Share-Alike - https://creativecommons.org/licenses/by-sa/4.0/


text:
Homer v. Collector

ERROR to the Circuit Court for the District of Massachusetts, the case being thus:

The Tariff Act of 1857, which was an act reducing duties, provided by its first section, that in lieu of the duties then existing, there should be imposed upon the articles in schedule B of the Tariff Act of 1846, a duty of 30 p. c.; and upon those in schedules C, E, and G, of said act, the duties of 24, 15, and 8 p. c. respectively, 'with such exceptions as are hereinafter made.'

The Tariff Act of 1846 had imposed a duty of 40 p. c. upon the articles enumerated in schedule B, among which were almonds (by name), 'currants,' 'dates,' 'figs,' 'prunes,' 'raisins.' It had imposed a duty of 30 p. c. upon those enumerated in schedule C, among which articles were 'grapes,' nuts, not otherwise provided for,' 'plums;' and a duty of 20 p. c. upon those enumerated in schedule E, including 'bananas,' 'cocoa-nuts,' fruit, green or ripe, not otherwise provided for,' 'oranges,' 'lemons and limes,' 'pineapples.'

By this first section, therefore, of the Tariff Act of 1857, the duties on almonds, currants, dates, figs, prunes, and raisins, were reduced from 40 to 30 p. c.; grapes, plums, 'nuts not otherwise provided for,' to 24 p. c.; bananas, oranges, lemons, &c., and 'fruit, green or ripe, not otherwise provided for,' in the statute of 1846, to 15 p. c.; unless these articles or any of them should come under the 'exceptions' afterwards made. The second section of the act of 1857 did make exceptions in favor of various articles, among them 'fruit, green, ripe, or dried,' which it enacted should be transferred to schedule G; thus making them liable to a duty of 8 p. c. No particular fruits were named in this section.

Tariff acts, prior to that of 1846-that is to say, the tariff acts of 1804, 1816, 1832, 1842-had all laid a duty on 'almonds' by name.

In this state of the tariff acts the plaintiff had made an importation of almonds, on which the defendant, Collector of the Port of Boston, charged 30 p. c. ad valorem. The plaintiff, considering that almonds were within the exception of 'dried fruit,' and so chargeable with but 8 p. c. ad valorem, paid the larger duty under protest, and brought suit to recover the difference. In the course of the trial the following questions were raised:

1st. Whether by law almonds were subject to a duty of 30 p. c. or of 8 p. c. only.

2d. Whether evidence should be admitted to prove that before and at the time of the passing of the Tariff Act of 1857, almonds were fruit, green, ripe, or dried, according to the commercial understanding of these terms in the markets of this country.

3d. Whether it should be left to the jury to determine whether almonds were fruit, green, ripe, or dried, according to the commercial understanding of these terms in our own markets when the Tariff Act of 1857 was passed.

A certificate of division of opinion in the judges as to these points brought the same questions here.

Mr. Welch, for the importer: Our position is, that an exception has been made on the article of almonds in the second section of the act of 1857; and that by this section it is transferred to schedule G, under the act of 1846, which imposed a duty of but 8 p. c.; and we ask to show this by evidence that 'almonds' were 'fruit,' green, ripe, or dried, according to the commercial understanding of our markets, and so within that schedule.

The general rule, which will be admitted, is, that Congress uses language in the revenue laws 'in its known and habitual commercial sense,' 'in that known in our own trade, foreign and domestic.' There are two qualifications to this rule. The first is, where Congress has, by its legislation, made it apparent that it did not intend to include a particular article under a name which, among commercial men, would include it. But this qualification has no application here. [The counsel here cited and commented largely on prior tariff acts to support this position.] The second is, when there is a known popular sense in which a word or phrase, designating some common article, is used accordantly with the etymology of the language and with the common understanding of all but a particular class. In those cases Congress may be presumed to use the word in that sense, and not in any peculiar commercial one. Maillard v. Lawrence, where it was decided that shawls were 'wearing apparel' in the sense of the revenue laws, is an illustration. But this qualification applies no more than the first one, for the term dried fruits in popular meaning includes almonds. They are popularly classed among the dried fruits of the table with raisins, dates, &c.: they are bought as such at retail shops with the same articles of dried fruit: they are defined in dictionaries as fruits, not in the general sense alone as fruits of the earth, but in the more limited sense as being the edible fruits of trees, shrubs, or vines: they are botanically treated as fruit in books of horticulture.

It is not important that 'almonds' are mentioned by name in the old tariff acts; for in legislation, previous to 1857, neither the terms 'fruit, green, ripe, or dried,' nor any similar terms were used; but 'almonds,' like the other dried fruits of commerce, were specifically enumerated, and were placed in companionship with those other dried fruits, and subjected to the same duty with all or most of them. Moreover, the general plan of statute of 1857 shows an intention to class them under the general term with the other dried fruits. And it may be added, that the same argument which would exclude almonds would exclude raisins, and all or most of the other dried fruits.

Mr. Bates, A. G., who submitted a brief of Mr. Woodbury, contra: The question really is, whether 'almonds' are almonds; for if they are, there is an end of the question; 'almonds' being by name charged 30 p. c. The inference from commercial nomenclature, that they have been transferred to a schedule providing for fruits, cannot operate in the face of a provision of a different kind for them by name.

The term 'dried fruits' means such fruits as have required skill in preparation. Almonds may be 'dry' when old, as hazel-nuts are, but they have gone through no process of preparation, and are not within the class.

The case is one of judicial construction of the revenue statutes. The proposition of leaving to the jury to determine, on evidence put before them, of a commercial understanding, whether an import, whose specific name is unquestioned, and is given specifically, bears also another name mentioned but generally, in the tariff, strikes at the roots of the judicial function of interpreting statutes. It places the construction of revenue laws at the mercy of commercial experts and unskilled juries, liable to vary in every district and at every term; and hence utterly incompetent to guide the Treasury in its obligation to require uniform duties.

Mr. Justice NELSON, after stating the case, delivered the opinion of the court:

title: Homer v. Collector


text: Talk:Homer v. Collector

title: Talk:Homer v. Collector


text:
Homer v. Collector/Opinion of the Court

The argument is, that almonds are dried fruit, and hence are provided for in the second section of the act of 1857; and evidence was offered on the trial to show that such was the commercial sense of the term. But this inquiry had nothing to do with the question, and, indeed, it is difficult to see how any such inquiry could take place except as matter of curiosity and speculation; for, certainly, such proof could not exist or be found in the sense of commercial usage under any of the tariff acts, as a duty has been imposed on almonds, eo nomine, almost immemorially, at least since the duty act of 1804, and continued in the duty act of 1816, 1832, 1842, 1846. The article, as we have seen, is charged specifically with a duty of 40 p. c. ad valorem in the act of 1846, and is not named in the changes in the act of 1857. Full effect can be given to the term 'fruit,' 'dried,' without the very forced construction to bring within it the article in question. Direction to the court below that almonds are subject to duty of 30 p. c. ad valorem. The other questions certified need not be answered.

DIRECTION ACCORDINGLY.

title: Homer v. Collector/Opinion of the Court


text: Talk:Homer v. Collector/Opinion of the Court


text: Turrill v. Michigan Southern C Railroad Company


text: Talk:Turrill v. Michigan Southern C Railroad Company


text:
Turrill v. Michigan Southern C Railroad Company/Opinion of the Court

THIS was a writ of error to the Circuit Court for the District of Michigan. The action was trespass on the case brought against the Michigan Southern and Northern Indiana Railroad to recover damages for the alleged infringement of a patent; the defence having been want of originality in the invention.

The patent, which was granted originally to one Cawood, dated September 9th, 1856, was for "a new and useful improvement in the common anvil or swedge-block, for the purpose of welding up and re-forming the ENDS of railroad rails when they have exfoliated or become shattered from unequal wear, occasioned by the inequalities of the road; six inches or so of the extreme end of the rail being frequently destroyed, while the remainder is perfectly sound." The schedule ran as follows:

'I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same, reference being had to the annexed drawings, making a part in this specification and giving a perspective view of the machine:

A, representing the bed-sill on which the anvil is placed; B the anvil or swedge-block of cast iron; C C recesses, or dies across the face, the shape of the side of the rail; D solid block, making a part of anvil, with its side shaped to the side of the rail, while placed in its natural position; E a movable press-block held down to anvil by dovetail tongues on the anvil and grooves in the movable press-block, and operated by two eccentric cams, F. back and forth, in a longitudinal direction, to press the rail together while forming its end, and with sufficient travel to extricate the rail without altering its vertical position; G a rail of the T form, in its position, between the press-blocks.

'I usually make my improved anvil and swedge-block of cast iron, between four and five feet long and sixteen inches across the face, with two forms or recesses C C at one end, right and left, of a form corresponding with the side of the rail. Close to these is cast a raised block D, nearly as high as the rail, and with its farthest edge also shaped to fit the side of the rail when it lays across the anvil in its natural position. Next this I attach to the face of the anvil, by dovetail tongues and grooves, or any other convenient manner, what I call a movable press-block E, with a similar but reverse-shaped edge, laying opposite the other so as to inclose the rail between the two, as in the jaws of a vice. This block I work by two eccentric cams F on a shaft, which is attached to the anvil by two standards H H, with bearings I I, either cast on or bolted to the edge of the same, so that half a turn of the crank will move the press-block over a space a little more than the extreme width of the rail. The mode of using this machine is extremely simple and effective. A piece of iron (being of a size suitable to the deficiency of the rail) having been prepared and put in the fire, the rail being suspended by its middle to the level of the anvil, is brought to a welding heat, and then swung round from the fire in the space between the two blocks, where it is, by a half turn of the crank, pinched together by means of the cams F; the welding-piece is then laid on the top of the rail and welded to the rail in the usual way, and levelled up and shaped by a swedge, held by the smith, of the form of that section which projects above the blocks, thus accomplishing at one heat what usually requires three or more. Should any imperfections remain, which is not usual if the first operation is properly gone through with, they can be removed by proper hand swedges after placing the rail in the recesses C C for that purpose.'

'I do not claim the anvil-block nor its recesses; but when I do claim as my invention, and desire to secure by letters patent, is the movable press-block E, having its edge formed to the side of the rail G, in combination with another block D, with its edge of a similar but reversed form (the movable blocks to be operated by two cams, F, or in any other convenient manner), for the purpose of pressing between them a T, or otherwise shaped rail; thereby greatly facilitating the difficult operation of welding and renewing the ends of such rails after they have been damaged, in the manner herein described and set forth.'

Having put the patent in evidence, shown an assignment of it to the plaintiff, and otherwise made out a prim a facie case, the plaintiff rested. The defendants then introduced models of certain machines, for the purpose of showing that the invention was not original. The models thus introduced were of the following machines: 1st. Of an angle-iron machine. 2d. Of an anchor machine. 3d. Of a bayonet machine. 4th. Of a machine patented in England to one Church.

On most or all of these, movable and fixed blocks were used; but it remained a question to be solved by inspection, whether the forms of these blocks and the manner in which they were combined, and the means by which they were moved and held, were or were not adapted to the welding up and re-forming the ends of railroad rails when exfoliated or shattered from unequal wear. The plaintiff, however, admitted, his admission being according to the bill of exceptions taken and sealed in the case, exactly in these words, 'that movable press-blocks, in combination with faces of various shapes, and used for various purposes, were older than the alleged invention of Cawood, the patentee.'

The evidence being closed, the plaintiff requested the court to charge the jury 'that the invention patented consisted of the movable press-block and the block D, in combination with the anvil or swedge-block B, described in said specification.' This instruction the court refused; and charged essentially as follows:

'In the view which the court takes of the case, there will be no question of fact for you to decide. According to the construction which the court has heretofore given to the patent, and which it now repeats, the patentee claims as his invention the movable press-block E, having its edge formed to the side of the rail G, in combination with another block D, the movable blocks to be operated by two cams, or in any other convenient manner. The specification shows that the block D is fixed and to be a part of the anvil or swedge-block, in combination with which, as well as with the fixed block, the movable block is to be used. Movable press-blocks in such combinations, with faces of various shapes, and used for various purposes, it is clearly proved and frankly admitted, are greatly older than the alleged invention of the patentee. The models exhibited in evidence of the 'angle-iron machine,' the 'anchor machine,' the 'bayonet machine,' and those made from the descriptions contained in the English patent of Church, are only some of the examples of their use and application. The patentee therefore claims that of which he is not the inventor. This fact is fatal to the patent, and entitles the defendant, as matter of law, to your verdict.

'If it be said that the claim is for the shape of the faces of the blocks, and the uses to which they are to be applied, the answers are:

'1st. A mere change of form is not a patentable subject.

'2d. The use of a machine or invention for a new purpose is also not patentable.

'3d. It was the duty of the patentee to describe clearly what he claims as his invention, so that it might be distinguished without doubt or difficulty from everything else to be used in connection with it. This has not been done. If the limited construction here under consideration be deemed the correct one, still this objection would be fatal, and your verdict the same. We are, however, satisfied that the true construction is the more comprehensive one, and that patentee claims the movable block in combination with the fixed one, and that the shape and proportions of the cheeks are only incidents and matters of detail.'

The plaintiff took exceptions to the following among other parts of the charge:

First. To so much as stated that 'the movable press-blocks in such combination, with faces of various shapes, and used for various purposes, being greatly older than the alleged invention of the patentee, was fatal to the patent, and entitled the defendant, as a matter of law, to the verdict of the jury.'

Second. To so much as stated that, 'in the view which the court takes of the case, there would be no question of fact for the jury to decide.'

The chief question, therefore, in error was, whether the court had or had not decided a question of fact; and so withdrawn the case improperly from the jury; and this chief question involved, as a previous one, the question whether the court had or had not rightly construed the patent?Mr. B. R. Curtis, for the plaintiff in error:

1. As to the construction of the patent. The claim is not one of any kind of movable press-block, combined and operating in any way, with any kind of fixed block, to accomplish any purpose. But it is a claim of such a movable press-block as is described, and such a movable fixed block as is described, arranged as described, and combined and operating in the particular way described, for the purpose of effecting the particular result indicated.

The patentee declares the sole purpose of the invention to be, 'welding up and re-forming the ends of railroad rails, when they have become exfoliated or shattered;' and in describing the manner of constructing and using the machine, he shows it to be designed for that purpose, and for that purpose only. At the conclusion of the claim, he again declares the object of the machine to be 'the difficult operation of welding and renewing the ends of such rails' (i. e. railroad rails), 'after they have been damaged.'

So far as respects the result to be effected, it is clearly shown to be, that single, special, and peculiar result of so placing and holding railroad rails, as greatly to facilitate the operation of renewing the ends of such rails by welding.

It is equally clear, that what the patentee intended to include in his claim was not any press-block or any fixed block, but the press-block and the fixed block which he has described.

I. Because the patentee, at the beginning of his specification, after stating that he has invented a new and useful improvement, says: 'And I do hereby declare that the following is a full, clear, and exact description of the construction and operation of the same.' When he comes to make his claim, it is but just to the patentee to believe that he does not intend to claim as his own anything which is entirely outside of what he has described as his invention.

II. Because the language of the claim itself is not extended to any movable or any press-block, but is clearly limited to 'the movable press-block E' 'and the block D'-thus identifying the two elements of the combination, as being such a press-block and such a raised fixed block as he had previously described, and had shown on the drawings by the designation of those letters.

Nor is the mode of arranging, combining, and operating these elements, which was intended to be claimed, left in any doubt. The patentee, in the specification, declares 'that the following is a full, clear, and exact description of the construction and operation of the same.' He gives also a clear description of his particular mode of arranging, combining, and operating the movable and the fixed block. And when he arrives at the claim, after saying he claims the movable block, in combination with the fixed block, he adds, 'in the manner herein described and set forth.' Specifications are entitled to a liberal construction; though there is no necessity for any special liberality here.

Then the blocks E and D, and the described mode of arranging, combining, and operating them, have peculiar characteristics. The specification says of block D that it is a 'solid block, making a part of the anvil, with its side shaped to the side of the rail, while placed in its natural position.' And again, 'Close to these (i. e. close to the recesses C C in the 'improved anvil') IS CAST a raised block D, nearly as high as the rail, and with its farthest edge also shaped to fit the side of the rail, when it lays across the anvil in its natural position.' It thus appears that this block D is a solid projecting part of the 'improved anvil;' it is cast with it; as the specification declares, it is 'a solid block, making a part of the anvil.' Its outer face is shaped to correspond with one side of the rail when laid upon the anvil; and its office is, not merely to resist the pressure exerted on the rail by the movable block, but to resist the force exerted upon the rail by the hammer in welding, and thus preserve the shape of the rail. Three characteristics are here set forth, and each is essential to enable the block D to perform its appropriate functions in the combination.

The specification describes block E as a movable press-block, held down to the anvil by dovetail tongues on the anvil, and grooves on the movable press-block. Again. 'Next this (i. e., next the block D), I attach to the face of the anvil, by dovetail tongues and grooves, or in any other convenient manner, what I call a movable press-block E, with a similar but reverse-shaped edge, lying opposite the other, so as to inclose the rail between the two, as in the jaws of a vice.' Here, too, are three characteristics, and each is also essential to enable the block E to enter usefully into the improved combination.

Then as respects the described mode of combining and working the blocks D and E. The specification declares that the block D is cast on and makes part of the anvil; and that the block E is held down to the anvil by dovetailed grooves and tongues. The two blocks are thus kept in certain relations to each other by and through the anvil, which thus forms one of the essential means of combining and operating them. They are connected with the anvil; and through that connection they are enabled to operate in combination, each performing its appropriate function, in harmony with the other, and their combined operation produces the specific desired result of holding and so supporting the rail on the anvil that it can be welded without destroying its peculiar form.

But, first, the block E must be moved on the anvil; and these means of motion must be such that the entire face of the block E shall be kept parallel with the entire opposite face of the block D, so as to exert the same pressure on every part of both faces of the rail. And second, the means of movement must be such, that when the block E has been advanced to its forward position, so as to grasp the rail and press it against the block D, the machinery shall hold E rigidly in position, not allowing it to be forced at all out of its position, otherwise the heavy blows necessary to weld the iron would destroy the shape of the rail. And a third result is, to produce the desired backward and forward movements and this rigidity, by simple and sufficient means, readily worked, either by hand or power.

All these necessities are met by means of the tongues and grooves, and the two eccentric cams, which cams, by a half revolution of a crank, advance the entire face of the block E parallel to the opposite face of the block D, until the rail is grasped, thus exerting the same pressure on every part of both faces of the rail, holding E rigidly in that position by the strength of the machine, so as perfectly to support every part of the rail against the force of the welding hammer, and by reversing the crank half a revolution, relieving the rail and placing the blocks E and D in position to receive another rail on the anvil.

What is the thing patented? The thing patented is described by its title to be 'a new and useful improvement in the common anvil or swedge-block, for the purpose of welding up and re-forming the ends of railroad rails when they have exfoliated or have become shatterced,' &c. By the description which the patentee declares describes 'his improvement,' it appears to be an improved anvil; one of the parts of which is the block D, having the characteristics before described; another part of which is the block E, having the characteristics before described; and these two parts are combined and operated in the manner described to produce the effects indicated.

The result of the whole is, that the patentee claims to have taken the common anvil or swedge-block, and to have improved it by his new combination; and that the combination consists in this, viz.: That he has raised on the anvil a block D, making a part of the anvil, having a face upon it suited to receive the side of the rail, and press equally on it so as not only to grasp but support every part of that face of the rail, under the blows of the welding hammer; that he has combined with this projecting block D, which is part of the anvil, another block E, which is at the same time attached to the anvil and is movable thereon; that this block E is so attached to the anvil as to be effectually a part of it when the anvil is used as an anvil, to resist the welding blows of the hammer, and to be movable when the objects to be accomplished require it to be moved; that while this block E is thus an effectual part of the anvil, it is also an effectual and sufficient support of the rail while undergoing the welding blows of the hammer; and in combination with the block D, not only grasps the rail and holds it on the anvil, but supports every part of the two faces of the rail, and keeps them from being forced out of shape by the blows upon the upper surface of the rail in welding its parts.

2. It is obvious that to compare any prior machine with this machine, it is necessary to see if any prior machine was adapted to accomplish the same, or an analogous result, by substantially the same means. Perhaps this is not the strictest possible abstract statement of the true inquiry. This is a patent for means, and viewed abstractly, the sole inquiry is, whether the patented means are substantially the same as previously existing means. But the application of the patent law rerely admits of such abstraction of means from ends. A new use of an existing machine is not patentable. A modification of an existing machine, whereby it is rendered capable of a new use, is patentable. One of these propositions is just as true as the other. Neither proposition can be safely applied, without careful regard to the facts of the case it is to govern. And, without going upon debatable ground, it is safe to assert, that if there was no prior machine which could accomplish the same, or an analogous result, by the use of substantially the same means, the machine is new, under our patent law. The practical results of inventions afford the reasons for the patent laws. They are designed to encourage progress in the useful arts; and therefore to disregard the practical results attained by a patentee would be to lose sight of the final cause of the system. And it is also true, and the more one is conversant with this peculiar subject the more impressed he will be with the truth, that means and ends are inseparably connected, and that it is not one of the cases ordinarily arising under the patent law that a new and highly useful end has been attained by the application of means already well known and before applied to an analogous end. It is a possible case; and therefore I stand on this proposition, that if there was no machine, prior to that of the patentee, which could accomplish the same useful purpose, or one substantially analogous to it, by the use of substantially the same means, then his patent is valid. Now, in looking at the rulings excepted to, two well-settled rules are to be kept in mind:

I. The question whether any machine, proved, or admitted to have existed before the patentee's invention, was substantially the same as the thing patented, was a question of fact for the jury.

II. The patent is prim a facie valid, and the burden of proof is on the defendant. Consequently the defendant was required by law to satisfy the jury, not only that the machine he relies on did exist before the patentee's invention, but that some one of them could accomplish the same useful purpose, or one substantially analogous to it, by the use of substantially the same elements, combined and arranged in substantially the same manner as he described and claimed in his specification.

As to the admission of the plaintiff. Upon such an admission as was made, the patent cannot be declared void, as a conclusion of law, unless it is a conclusion of law that after movable press-blocks, in combination with faces of various shapes, had been used for various purposes, there was no field of invention left unoccupied; or if any such filed was left, that the claim of the patentee is not within that field.

Now the first of these is manifestly not a conclusion of law. The law cannot determine it to be impossible to make a new combination to produce a new and useful effect because the principal elements have already been combined. A patent for a combination is for an entirety, formed out of the described elements, combined and arranged by the described means and operating in the described manner, to produce the described effect. Though all the elements had previously been combined in some way, to produce some effect, yet if the patentee modified one or more of the elements, to suit his new design, and combined the elements by different means, and so as to operate in a different way, to produce a new and useful result, it is a new combination and the subject of a patent.

It is manifestly possible there was a field of invention which could be occupied by a combination of the same elements used here, provided the patentee should modify those elements to adapt them to his new use, and should combine and operate them in a different way, so as to produce a new and useful result; and it must be a question of fact and not of law whether he has so done. If he has, he has made a patentable invention; and as a patent has been granted to him, after examination by the proper public officers, it is presumed he has made an invention, until the contrary is shown. Notwithstanding the admission, as there was a field of invention left, he is presumed to have occupied that field, unless upon the fair construction of his claim it appears he has passed out of that field, and included something which, by his admission, appears to be old. But it has already been shown that this claim cannot be so construed.

As to the models introduced by the defendant. Though on several of them movable and fixed blocks were used, we assert that on inspection it is obvious that the forms of those blocks, the manner in which they were combined, and the means by which they were moved and held, were not adapted to the new design of the patentee. But if all this should be denied, still it is a question of fact whether he has done this. How is the court to say, as matter of law, that a machine for holding and supporting rails, under a welding hammer, is substantially the same as a machine for making bayonets, or angle-irons, or anchors? The patent raises a presumption that they are not the same, and without the aid of the jury, how has this presumption been overcome? Yet, upon the introduction of these models, and upon the admission of the plaintiff, as given in the reporter's statement, the court did instruct the jury, as matter of law, that the patent was void. The instruction took the entire case from the jury, and no further instruction could be given to them, except the direction, which was given, that the defendant, as matter of law, was entitled to their verdict.

This instruction excepted to raises the question whether upon the introduction by the defendants of the models mentioned in the bill of exceptions, and the admission therein stated to be made by the plaintiff, it was a conclusion of law that the thing patented was substantially the same as was exhibited in either of the said models, or as was embraced in that admission; or whether there was still matter of fact to be passed on by the jury. If the claim is construed to be for such a press-block as is described, and such a fixed block as is described, combined and arranged in the manner described, to produce the effect described, no amount of evidence concerning the existence of prior machines could remove from the jury the question whether either of these machines included this thing claimed by the patentee. This is a distinct and substantive question, which could arise only after the prior existence of the other machines had been shown to and passed on by the jury.

Now upon this distinct and substantive question, as there does not appear to have been any evidence of experts, it was for the jury, upon an examination and comparison of the prior machines, to find whether either of them embraced the particular combination described and claimed by the patentee; and upon this question the burden of proof was upon the defendant.

The admission of the plaintiff 'that movable press-blocks, in combination with faces of various shapes and used for various purposes, were older than the alleged invention,' dispensed indeed with the production of evidence of the prior existence of those machines; but the question of fact still remained, whether either of them included the particular combination described and claimed by the patentee. It is true that if he had claimed a machine not distinguishable from any other having a press-block, in combination with a face of some shape, and used for some purpose, then his admission would have conclusively proved, not only the prior existence of such machines, but their identity with the thing claimed; and therefore, though it is not very clearly expressed in any part of the bill of exceptions, it would seem that the court did give this broad construction to the claim, holding it in effect to be a claim of a movable and a fixed block, without regard to any modification made by the patentee of those elements to fit them for his special use, and without regard to the particular manner in which the patentee had combined them so as from the whole to produce a new result, and without regard to the degree of utility of that result. But it has been shown that this is not the true construction.

The rule laid down by the court, that 'it was the duty of the patentee to describe clearly what he claims as his invention, so that it might be distinguished without doubt or difficulty from everything else,' seems hardly consistent with that liberality in the construction of claims, which has been often announced by this court, as due to the nature of the subject, and just to inventors, and which has been so constantly applied by the Circuit Courts in administering the patent laws. It is a rule which would destroy a very considerable proportion of meritorious patents. But still it might be applied to this specification and leave it valid. For, when it is borne in mind that each of the blocks is carefully described, both in words and by references to the drawings; that the manner of combining and operating them is also carefully and distinctly shown; that the new and useful result is also clearly described, and that the manner in which each part operates in the production of that result is pointed out and exhibited, and that the claim is for 'the press-block E, having its edge formed to the side of the rail G, in combination with another block D, with its edge of a similar but reversed form (the movable blocks to be operated by two cams, or in any other convenient manner), for the purpose of pressing between them a T or otherwise shaped rail, thereby greatly facilitating the difficult operation of welding and renewing the ends of such rails, after they have been damaged, in the manner herein described and set forth;' it would be doing violence to the clearly expressed intention of the patentee to hold that he has made a broad claim of press-blocks, and faces however formed, combined in any way, for any use.

1. The construction of the claim given by the court below is the true construction of the patent. The prayer to charge, when taken in connection with the charge, leaves no doubt as to the construction which was given to the claim of the patent by the court below. The court was requested to charge that 'the invention patented consisted of the movable press-block, and the block D, in combination with the anvil or swedge-block B, described in said specification.' The court refused so to charge, but did charge that the patentee claimed as his invention the combination of the fixed with the movable block or jaw, operated by two cams, or in any other convenient manner. And although the court, in the charge, did say that the specification shown that the stationary block or jaw is to be a part of the anvil or swedge-block, and to be used in that combination, nevertheless it is clear that the court refused to consider the anvil as one of the elements of the combination claimed by the patentee. The court below also clearly excludes, from the invention claimed, the shape and proportions of the jaws, holding that these were merely incidental to the use to which the machine was applied.

Now this construction is the true construction, because:

I. The Patent Act of 1836 (§ 6) requires the patentee to give not only a full, clear, and exact description of the manner of making, constructing, and using his invention, but that he shall also 'particularly specify and point out the part, improvement, or combination which he claims as his invention.'

This provision is based on the presumption that in giving a full, clear, and exact description of the manner of making and constructing a machine, the applicant, unavoidably, will be required to describe many things well known in the arts prior to his invention; hence the necessity for the other provision of the same section, which requires that out of all which he has thus described he shall specify and point out the part, improvement, or combination which he claims as his invention. In view of this provision the court could not include in the claim of a combination any element not named in the claim, however clearly such part may be presented in that portion of the specification which describes the manner of making, constructing, and using the machine.

II. The elements, which constitute the combination claimed by the patentee, are not only in terms the movable press-block, with its edge formed to the side of the rail, and the stationary block, with its edge of a similar but reversed form; but the better to exclude all other things from the combination intended to be claimed, the patentee has stated that the things so claimed, in combination are 'for the purpose of pressing between them a T or otherwise-shaped rail.' And although the machine, as an entirety, is stated to be for the general purpose of welding up and re-forming the ends of railroad rails, such general purpose will not justify the introduction of the anvil as one of the elements in the combination claimed, in the absence of all mention of the anvil in the claim, because the purpose specified in the claim, and the office assigned to the combination claimed, is that of pressing or griping the rail, and the anvil performs no office subserves no duty-in pressing the rail, and it is the duty specified in the claim, and not the use for which the entire machine is designed, which is to control in the construction of the claim.

III. That the patentee did not intend to include the anvil as one of the elements of the combination claimed, appears in the fact that, in the descriptive part of the specification, he designates the several parts by letters of reference to the drawings,-the anvil by the letter B, the stationary press-block by the letter D, and the movable press-block by the letter E-and that in specifying the combination which he claims as his invention, he designates the parts by the same letters, and the letter B does not appear in the claim.

IV. As the movable and the stationary press-blocks are specified in the claim in terms indicated by letters of reference, and perform the whole duty for which the combination is claimed, and as the anvil is not specified in terms in the claim, nor indicated by letter of reference, and can perform no duty in the purpose for which the combination is claimed, by no rule of construction can the anvil be introduced as one of the elements of the combination claimed.

V. The anvil or swedge-block, described and represented in the patent, could not be claimed in combination with the press-blocks, because it has no mechanical relation to, or dependence upon them. The anvil or swedge-block in indicated in the drawings by the letter B. It has recesses or dies formed in its upper face, in shape the reverse of the sides of the rail, so that when a rail is out of shape it can be laid in either of these recesses or dies, and hammered into shape. Now, in the specification, after describing the manner in which the ends of a rail are to be re-formed when griped between the stationary and the movable press-blocks, the patentee says: 'Should any imperfections remain, which is not usual if the first operation is properly gone through with, they' (the imperfections) 'can be removed by proper hand swedges, after placing the rail in the recesses C C for that purpose.' From this it will be seen that the anvil or swedge-block B, with its recesses C C, has no mechanical combination with, or relation to the press-blocks. It makes no part of an organized mechanism. It is simply a swedge-block or anvil of the usual construction, placed in convenient proximity to the press-blocks, so that if it should become necessary to swedge the sides of the rail it can be done conveniently. One might as well say that an improvement on an ordinary vice could be claimed in combination with an ordinary blacksmith's anvil, if used in the same shop and placed at a convenient distance, so that a piece of iron, after being forged, could be conveniently put in the vice to be filed.

2. The court below said rightly that, in the view which it took of the case, 'there could be no question of fact for the jury to decide.'

No exception was taken to that part of the charge in which the court below stated that 'movable press-blocks in such combinations, with faces of various shapes, and used for various purposes, it is clearly proved and frankly admitted, are greatly older than the alleged invention of the patentee.'

In view of the ruling of the court on the questions of law, there was but one material question of fact in the case, and that was whether, prior to the alleged invention by the patentee, similar combinations of press-blocks with faces of the required shapes were known and used in the United States, or patented or described in any printed publication in this or any foreign country. And that fact having been conceded by the plaintiffs, the case was left to stand alone on questions of law. It was, therefore, the duty of the court to direct the jury to render a verdict for the defendant.

Mr. Justice CLIFFORD delivered the opinion of the Court.

I. Patentee describes his invention as a new and useful improvement in the common anvil or swedge-block, for the purpose of welding up and re-forming the ends of railroad rails, when they have exfoliated or become shattered from unequal wear, occasioned by the inequalities of the road. Having made out a prim a facie case, the plaintiffs rested, and the defendants then introduced certain models of machines, for the purpose of showing that the patentee was not the original and first inventor of his improvement. Models of machines so introduced were the following, to wit: First, a model of an angle-iron machine. Secondly, a model of an anchor machine. Thirdly, a model of a bayonet machine. Fourthly, they also introduced a copy of an English patent granted to one Church, with the specifications and drawings annexed, and the statement in the bill of exceptions, in regard to all those machines, is that they were known prior to the invention of the patentee in this case. Bill of exceptions also states, and it is important to observe the fact, that in addition thereto the defendants also adduced evidence to show, and that it was admitted by the plaintiffs, that movable press-blocks, in combination with faces of various shapes and used for various purposes, were older than the alleged invention of patentee. Other evidence, it is stated in the bill of exceptions, was also introduced by the defendants, for the purpose of showing that the patentee was not the original and first inventor of the machine for which he obtained the patent; but the evidence is not given, and it is not perceived that the statement is of any importance at the present time.

II. Charge of the court is given entire in the record; but in the view taken of the case, it will only be necessary to refer to so much of it as relates to the construction of the patent, and the effect of the admission made by the plaintiffs. Construction of the patent, as given by the court, was that the patentee claimed as his invention the movable press-block, having its edge formed to the side of the rail in combination with the block D, the movable blocks to be operated by two cams, or in any other convenient manner. 'Specification shows,' said the court, 'that the block D is fixed and is a part of the anvil or swedge-block, in combination with which, as well as with the fixed block, the movable block is to be used.' Such is the substance of the charge so far as respects the construction of the patent; but the court added, in the same connection, that 'movable press-blocks in such combination, with faces of various shapes and used for various purposes, it is clearly proved and frankly admitted, are greatly older than the alleged invention of the patentee;' and in support of that proposition of fact, the presiding justice referred to the several models given in evidence by the defendants, and to the description contained in the English patent, as examples of their use and application. Following those references, and in connection therewith, the court told the jury that 'the patentee, therefore, claims that of which he is not the inventor, and this fact is fatal to the patent, and entitles the defendants, as matter of law, to your verdict.' Exceptions were seasonably and duly taken to all that portion of the charge of the court. Principal complaint against the charge is that the court decided a question of fact which belonged to the jury, and which should have been submitted to their determination under proper instructions.

III. Whether that complaint is well founded or not depends very much, if not entirely, upon the construction to be given to the patent. Patents for inventions are not to be treated as mere monopolies, and, therefore, odious in the eyes of the law; but they are to receive a liberal construction, and under the fair application of the rule, ut res magis valeat quam pereat, are, if practicable, to be so interpreted as to uphold and not to destroy the right of the inventor. (Ryan v. Goodwin, 3 Sum. C. C. R., 520.)

Claim of the patentee in this case is not for the anvil-block nor its recesses, as is expressly stated by him in his specification. On the contrary, what he claims as his invention is the movable press-block, having its edge formed to the rail, in combination with another block, which is described as a fixed block, and whose edge is of a similar but reversed form, for the purpose of pressing between them the railroad rail. Shape of the rail is immaterial, except that the inner face or edge of the respective blocks must be so made and formed as to fit the respective sides of the rail to be repaired. Statement of the claim is, that the movable blocks may be operated by two cams, or in any other convenient manner, and the representation is that the machine will greatly facilitate the operation of welding and renewing the ends of such rails, after they have been damaged in the manner herein described and set forth. Taking the description of the machine as set forth in the specification, it consists of the following elements: First, a bed-sill, on which the anvil is placed. Secondly, the anvil or swedge-block of cast iron, usually four or five feet long, and sixteen inches across the face. Thirdly, a solid block cast with and making a part of the anvil, nearly as high as the rail when it is laid across the anvil in its usual position. Fourthly, a movable press-block, attached to the face of the anvil by dovetailed tongues and grooves, having an inner edge or face shaped to fit the opposite side of the rail so as to inclose the rail between the two, as in the jaws of a vice. Press-block, as before remarked, is worked by two eccentric cams, which serve to advance the press-block upon its dovetailed tongues and grooves parallel to the opposite face of the fixed block. When the press-block has been thus advanced so far as to bring its face in contact with one side of the rail, the cams and the tongues and grooves hold the press-block in position, and the rail is firmly grasped between the inner faces of the two blocks. Inventor then goes on to describe the mode of using the machine, which he says is extremely simple and effective, and sufficient has already been remarked to show that his representation is correct, without reproducing the description. Immediately following that description, is the claim of the patent, as heretofore given, which need not be repeated.

IV. Evidently, the claim must be construed in connection with the explanations contained in the specification, and when viewed in that light, it is quite clear that it should receive a more restricted construction than was given to it in the charge of the court. Special devices are described as combined and arranged in a particular manner, and operate only in a special and peculiar way for a special purpose, and to effect a special result. Obviously, it is not a claim for any kind of movable press-block, combined and operating in any way with any kind of fixed block, to accomplish any purpose or effect any kind of result. Giving that construction to the claim, then indeed it would be true that the plaintiffs, when they admitted that movable press-blocks, in combination with faces of various shapes and used for various purposes, were older than the invention of the patentee, did admit away their whole case, and, if viewed in that light, would be equally true that there was no question of fact to be submitted to the jury. But such is not the true construction of the patent, as is obvious from every one of the explanations of the specification. Invention was of such a movable press-block as is described, having its edge formed to the side of the rail in combination with such other block as is described, with its edge of similar but reversed form arranged as described, and combined and operating in the particular way described, for the special purpose of effecting the described result.

When viewed in that light, it is equally clear that the charge of the court was erroneous, because there was an important question of fact which should have been left to the jury, whether the machines introduced by the defendants or any of them, or any of the prior movable pressblocks, as is shown in the admission, were substantially the same as the machine of the patentee. American authorities, at least, hold that every such question is one for the jury, and upon that ground alone we have come to the conclusion that the judgment in this case must be reversed.

Judgment of the Circuit Court is accordingly reversed, with costs, and the cause remanded with direction to issue a

NEW VENIRE.


text: Talk:Turrill v. Michigan Southern C Railroad Company/Opinion of the Court