OF THE Supreme Court of the United States AT DECEMBER TERM, 1870. (Names of Counsel who actually appeared and argued the case, as shown by the Minute Book, are given in heavy faced type.] WILLIAM COOK et al., Plff. in Err., บ. ALBERT T. BURNLEY and Royal A. Porter. (See S. C. 11 Wall. 659-672.) Merican title of Juan Cano, valid-insufficient adverse possession-plea in abatement, when too late-former suit-objection to deposition -continuous possession-Texas decisions as to innocent purchaser-decision on discretionary questions, not available as error. Title of Juan Cano, a colonist, in the empressario grant of Martin De Leon, and to whom the commissioner of that colony conveyed the league of land Apr. 11, 1835, as decided in White et al. v. Burnley, 20 How. 235, is valid. Where a defendant sets up title under a landwarrant, which he had located within the boundaries of the grant to plaintiff's grantor. and relied on adverse possession of three years under the junior title, such defense is insufficient. A plea in abatement of a suit put in after the defendants had pleaded to the merits is too late. Where the parties to a suit in a state court were not the same as in the present case, the suit in the state court cannot be pleaded in abatement. Where, in a deposition taken under the 30th section of the judiciary act, there is no certificate by NOTE-Piea in abatement of another suit pending, ichen good. The law abhors multiplicity of actions and, therefore, whenever it appears on record, that the plaintiff has sued out two writs against the same defendant for the same thing, the second writ shall abate. 9 H. 6; Mo. 418, 539,; 5 Co. 61; Doctr. Pl. 10, 67: Renner v. Marshall, 14 U. S. (1 Wheat.), 213: Johnston v. Bower, 4 H. & M. 487. Plea of a prior action pending for the same cause between the same parties is a good plea in abatement, and, if true when filed, cannot be defeated by a subsequent discontinuance of the prior action. Frogg v. Long, 3 Daua, 157; S. C. 28 Am. Dec. 69; 1 Cait. 443; 1 Salk. 329; 2 Raym. 1014. Pendency of a suit in a foreign court or in a Court of the United States is not pleadable in abatement or in bar of a proceeding in a state court. Mitchell v. Bunch, 2 Paige, 606 S. C. 22 Am. Dec. 66: Maule v. Murray, 7 Term, 470; Imlay v. Ellefsen. 2 East, 453; Trubee v. Alden, 6 Hun, 78: B'k of Australia v. Nias, 16 Q. B. 717; Ld. Dillon v. Alvares, 4 Ves. 357; Foster v. Vassall, 3 Atk. 587: Cox v. Mitchell, 7 C. B. N. S. 55; Eaton, &c. R. Co. Hunt, 20 Ind. 457; Lyman v. Brown, 2 Curt. 533. l'endency of an action for same cause in U. S. circuit court, having jurisdiction, is a good plea in abatement in the state courts for the same district. the magistrate that he reduced the testimony to writing himself, or that it was done by the witness in his presence, such omission is fatal to the deposition. What is a continuous possession is a mixed ques tion of law and fact. Where a survey of a plat granted by the commissioner was laid down on the public map of the district, which was deposited in the general land office as a matter of record, this, according to the decisions in the courts of Texas, deprives the junior locator of the character of an innocent purchaser; so does actual notice of the prior grant. Exceptions to the rulings of the court on motions to postpone the trial and to change the venue are not available on writ of error. [No. 13. Dec. Term, 1867]. Submitted Dec. 6, 1867. Decided Dec. 23, 1867. IN the Court the | ed States for the Eastern District of Texas. The case is further stated by the court. The suit was brought by Burnley and Porter, to recover a league of land situate on the western shore of Matagorda Bay, near the mouth of the River Levaca, in Calhoun County, Texas. Messrs. W. & A. L. Merriman, George W. Paschal, and A. H. Evans for plaintiffs in error. Messrs. Greene Adams and W. P. Ballinger, for defendants in error: The parcel in immediate controversy lies Smith v. Atl. Mut. F. Ins. Co. 22 N. H. 21; otherwise if it be for a district in another state. Sloan v. McDowell, 75 N. C. 29; Loyd v. Reynolds, 29 Ind. 299. The pendency of an action in a state court is not a bar to a suit in U. S. circuit court or in supreme court of District of Columbia for same cause of action between same parties. Stanton v. Embry, 93 U. S. 548; White v. Whitman, 1 Curt. 494: Parsons v. Greenville, etc. R. Co. 1 Hugh, 279; Loring v. Marsh, 2 Cliff. 311. The pendency of a suit in another state is not matter of abatement to a suit upon the same cause of action. West v. McConnell, 5 La. 424, 25 Am. Dec. 191; Chatzel v. Bolton, 3 McCord, 33; Salmon v. Wooton, 9 Dana, 422; Davis v. Morton, 4 Bush, 442 Bowne v. Joy, 9 Johns. 221; Walsh v. Durkin, 12 Johns. 199; Newell v. Newton, 10 Pick. 470; Telverton v. Conant, 18 N. H. 123; De Armond v. Bonn, 12 Ind. 607; Drake v. Branduer, 8 Tex. 351; Smith v. Lathrop. 44 Pa. St. 326; Humphries v. Davis, 38 Ala. 199; McJilton v. Love, 13 Ill. 486; Allen v. Watt, 69 Ill. 655; Trabee v. Short, 5 Cold. 293. Tendency of a proceeding in rem in a foreign jurisdiction may be pleaded in abatement of the same cause of action, so also may a proceeding in a mixed action in which a specific thing as well as the performance of a personal obligation is de north and adjoining Powderhorn Bayou, com- | of action, including the defendant, Cook, in the prising some one hundred and seventy nine acres. Mr. Justice Nelson delivered the opinion of the court: The plaintiffs derived their title in this case from Juan Cano, a colonist, in the empressario grant of Martin DeLeon, and to whom the commissioner of that colony conveyed the league of land on the 11th of April, 1835. Several objections are taken to this deduction of title, but it is not material to notice them particularly, as they were before the court in the case of White et al. v. Burnley, 20 How. 235, 15 L. ed. 886, already reported, in which these several objections were overruled. The only difference between that case and the present is, that the plaintiffs, Burnley and Jones, there claimed under a deed by the commissioner 668*] to a colonist by the name of *Benito Morales for a league of land lying on the Matagorda Bay, north and adjoining this grant to Cano. Both these colonists conveyed to Leonardo Manso, one on the 27th, the other on the 20th May, 1835, from whom the present plaintiffs derived title to both tracts. Porter, in the present suit, represents the interests of Jones in the former, and Cook, the principal defendant in this, was a defendant in that one. We find no question here, as it respects the deduction of title under the grant of the commissioner, but was taken in the former case, fully considered and overruled. White, one of the defendants there, and who is a defendant here, set up title under a land-warrant, which he had located within the boundaries of the grant to Morales, and, besides his objections to the deduction of the plaintiffs' title, relied on adverse possession of three years under the junior title. In the present case, Cook sets up a like defense under the location of a head right and survey, which is within the boundaries of the grant to Cano. Among other defenses relied on in the present case, not in the former, is a plea in abatement of a suit, commenced by Burnley & Jones, against certain defendants, for the same cause manded. Lowry v. Hall, 2 Watts & S. 129, 37 Am. Dec. 495. Pendency of a suit in a state court of another state for same cause, in which property enough has been attached to satisfy the demand, is ground for abatement of a suit in U. S. circuit court. Lawrence v. Remington, 6 Biss. 44; Nelson v. Foster, 5 Biss. 44; U. S. v. Dewey, 6 Biss. 501. To sustain the plea of a former action pending it must appear that the first action is for the same cause as the second. It is not enough that the property in controversy in both actions is the same. Dawley v. Brown, 79 N. Y. 390; Stowell v. Chamberlain, 60 N. Y. 272; Kelsey v. Ward, 16 Abb. Pr. 98. The pendency of an action for goods sold at one date is not a defense to an action for goods sold at a subsequent date. Zimmerman v. Erhard, 83 N. Y. 74. Both actions must be for the same cause and against the same parties. Owens v. Loomis, 19 Hun, 606; Gardner v. Clark, 21 N. Y. 403; Geery v. Webster, 11 Hun, 428; Harris v. Johnson, 65 N. C. 478; Prosser v. Chapman, 29 Conn. 515. Where two suits are brought and the subject of the action and the parties are the same and the entire relief sought for in one can be obtained in the other, the last one brought should be stayed. Burlingame v. Parce, 12 Hun, 149; People v. Northern district court for the county of Calhoun. This plea was stricken from the record on the ground that it was put in after the defendants had pleaded to the merits, upon general principles, and came too late. And, further, that if it had been pleaded in season it would have constituted no bar to the suit in this court. White v. Whitman, 1 Curt. 494; Piquignot v. Penn. R. Co. 16 How. 104, and Wadleigh v. Veazie, 3 Sum. 165. It also appears that the parties to the suit in the state court were not the same as in the present case. The defendants, in the course of the trial, offered in evidence the deposition of H. Beaumont, taken under the 30th section of the judiciary act, which was objected to and excluded. There is no certificate by the magistrate that he reduced the testimony to writing himself, or that it was done by the witness in his [*669 presence, which omission is fatal to the deposition. Elliott v. Piersol, 1 Pet. 335, 336. The following portions of the depositions of Moore, Schwartz, and Howeston were excluded, on objections taken by the court. The testimony had reference to the possession of the locus in quo. "Witness knows that said Cook and his tenants had continued possession of said land since the fall of the year 1849, or early part of the winter of 1849-50; say December, 1849, and down to the present time." This is in the deposition of Moore; the portions of the testimony of the other two are substantially the same. The depositions had been taken de bene esse, without notice, in December, 1852. In January following the depositions of these same witnesses were taken on notice to the plaintiffs, and these were given in evidence by the defendants. On looking at the testimony in the first depositions, it will be seen that the witnesses had testified to the fact of the possession of Cook, and of his tenants, naming them; and of the time the tenants held the possessión; and when they left the premises; also, the fact of the tenancy under the agreement with Cook; and of the improvements made by the tenants. Whether or not these facts constituted a continuous posR. R. Co. 53 Barb. 98; McCarthy v. Peake, 18 How. Pr. 138. Proceedings in personam and in rem to collect the same demand do not necessarily interfere until satisfaction is obtained in one. Nelson v. Couch, 15 C. B. (N. S.) 99; Harmer v. Bell, 7 Moore, 267; 22 Eng. L. & E. 62; The Kalorama, 10 Wall. 204, 19 L. ed. 941. A statutory arbitration is a good defense in abatement to a subsequent action between the parties to recover a demand included in the submission. Fahy v. Brannagan, 56 Me. 42. Party cannot defeat suit brought against him by pleading the pendency of a suit brought by himself against the other party. New England Screw Co. v. Bliven, 3 Blatchf. 240. It is no ground for the abatement of an action at law, that a suit in equity is pending, in which the plaintiff asks for a decree of the same money, where the result of the action may be necessary for the perfecting of a decree in that suit. Kittredge V. Race, 92 U. S. 116. But see Williamson v. Paxton, 18 Gratt. 475. Plea in abatement of pendency of suit for same cause of action will not be sustained, if such suit is a nullity, or where the first writ or complaint is so defective that no recovery could be had, or where court had no jurisdiction of former suit. Phillips v. Quick, 68 Ill. 524; Rogers v. Hoskins, 15 Ga. 270 Reynolds v. Harris, 9 Cal. 338. may be used by the jury for its shape and boundaries. It appears to have been surveyed by magnetic courses and, if the survey returned by Beaumont was not surveyed by the magnetic, but by the true, course, the jury must make allowance for the difference, and Beaumont's cannot be regarded as showing the original survey. The fourth call is from the end of the third line with the bend of the Laguna Madre of Matagorda, to the beginning.' session by Cook and his tenants from the time | nation and character of the land granted, and they entered into possession, within the meaning of the statute of limitations, can scarcely be regarded as a simple question of fact, especially in connection with the previous testimony of the witnesses on the subject of their actual possession. We are inclined to think the question was rather one for the jury under proper instructions from the court. All the facts as it respects the possession had already been testified to by the witnesses from the commencement to its termination. Whether they constitute a continuous possession would seem to be a mixed question of law and fact. We come now to the charge of the court to the jury. The defendants put in four prayers for instructions. 670*] *1. "If L. Manso was an alien enemy at the time he executed the deed to Grayson, he conveyed no title through which the plaintiff's could recover." This question was before the court in the case of White et al. v. Burnley, 20 How. 235, 15 L. ed. 886, already referred to, very fully considered, and overruled. We need only to refer to that case. 2. "If the plaintiffs' title was not on record in the county where the land lies, or in the General Land Office, at the time the defendant located his land-warrant, and completed his survey, and obtained his patent, he is in the position of an innocent purchaser, and entitled to recover." The point of the objection to this charge is that the court permitted the jury to depart from the survey of the league of land by Beaumont, who had been appointed by an order of the court to make it according to the courses, distances, and landmarks in the original survey by the government at the time the grant was made. The survey on the ground was made by Beaumont in pursuance of this order, but a civil engineer, by the name of Thelipapa, made the map from field notes. He was examined as a witness, and stated that he made the map from field notes furnished him by Beaumont. But, on comparing these field notes with those accompanying the order of survey, they were found to be different. He states that he made the map from courses and distances without any call for corners. In this respect the field notes of Beaumont differed from the original field notes, as they specified, in addition to distances, the corners of the league in the survey by the government. There was, also, some evidence that the original survey was made by magnetic courses, and the one by Beaumont by the true course, which might account for the difference between the two surveys. The court, as will be seen, suggested this to the jury, but left the question to them to make an allowance for the difference. We perceive no objection to this instruction. The location of Cook under his land-warrant of the premises in question, was made on the 12th September, 1849, and the survey thereon the 15th May, 1850. The first location was under a land-warrant issued to Gwartney, certificate No. 990, and made 5th January, 1847. But this was abandoned, and a new one made at the time above mentioned, under a certificate to J. A. Wells, No. 5072. It appears from the Upon the subject of this survey, it is quite testimony of E. Linn, who has been the legal apparent on the evidence, that the whole of the surveyor of the district in which the premises controversy between the parties consisted in a are situate, from 1838 to 1840, and from 1847 difference of opinion as to what line constituted to the time when his deposition was taken, that a boundary upon the bay of Matagorda. The as early as 1838, this survey of the plat of eight defendants insisting that there is a distinction leagues of L. Manso, Cano and Morales, granted to be made between the lagunas, some of them by De Leon, the commissioner, was laid down small, others of considerable magnitude, which on the public map of the district, and which are formed by tidal currents extending into the was deposited in the General Land Office as a land from the bay, and sometimes connecting matter of record. This, according to the de- with each other along the greater part of this cisions in the courts of Texas, deprives the coast, and the waters of the bay itself. while junior locator of the character of an innocent the plaintiffs insist that these lagunas belong to purchaser. So does actual notice of the prior the bay and are parts of it, and that *a [*672 grant, which is also proved in the pres-line bounded on the lagunas is the same as ent case. Guilbeau v. Mays, 15 Tex. 410, 14 Tex. 391. 3. "If the plaintiffs' title includes an island surrounded by water, it is bad as to the island." There is no testimony in the case tending to prove the fact. 4. "If the jury, from the evidence, can fairly and justly construe both the plaintiffs' and defendants' title, so that each can stand, it is their duty to do so." 671*] There is no evidence in the case warranting such an instruction. Besides, it was the duty of the court to construe the paper titles of the parties. The court gave but one instruction to the jury, which was "that the diagram attached to plaintiffs' grant is evidence to show the de..ig bounded on the bay. It seems in this case quite plain that the grant to Cano was bounded or intended to be bounded on the bay, as the first line given in the description of the tract commences on the bay and terminates at the place of beginning, following down the bends of the Laguna Madre, which designates the bay or great lake of Matagorda. There were other exceptions taken in the case to the rulings of the court in the progress of the trial, such as motions to postpone the trial, and to change the venue, which it is not material to notice further than to say that they are not available on a writ of error. After the best consideration we have been able to give the case, we think there is no error in the judgment below, and it must be affirmed. 678*] *WILLIAM N. WHITELEY et al., wheel and cutting apparatus were made to fol The case is stated by the court. Mr. Samuel S. Fisher for appellants. Mr. Justice Nelson delivered the opinion of the court: This is an appeal from the circuit court of the United States for the southern district of Ohio. The bill was filed in this case, to enjoin the defendants below, Whiteley and others, from infringing the complainant's patent, originally issued to Byron Dinsmore February 10, 1852, assigned to the complainant, Kirby and Osborn, July 2, 1859, and surrendered in 1859, and reissued 28th January, 1862. The patent is for improvements in harvesting and mowing machines, and consists chiefly in this, namely: The construction and combination of two frames, the one for supporting the driving-wheel, and the other for supporting the cutting apparatus, and hinging the same together in such a manner that the driving-wheel and cutting apparatus may each follow the inequalities of the ground independently of each other, and to be bolted rigidly together for supporting the cutting apparatus at any desired height. After giving a description of the machine sufficiently exact and precise to enable anyone skilled in the art to construct it, the claim is as follows: "The hanging of the driving-wheel in a supplemental frame or its equivalent, which is hinged at one end to the main frame, whilst its opposite end may be adjusted and secured at various heights, or be left free, as desired, whereby the cutting apparatus may be held at any given height for reaping, or be left free to 679] *accommodate itself to the undulations of the ground, for mowing, as substantially described." The surrender of this patent was made by the assignees on account of a defect in the claim, the patentee having failed to embrace within it the hanging of the driving-wheel in the supplemental frame, and its connections with the main frame to which the cutting apparatus is at tached, and by means of which both the driving low the inequalities of the ground independently of each other. These devices were fully described in the spcification, drawings, and model, and were embodied in the construction of the first machines. The patent, we have seen, was granted February 10, 1852. The first machine was built and successfully tried in the harvest of 1850. Twenty-one were made and sold the next year (1851), and fifty or sixty the year following, all entirely successful. The defendants set up in their answer, and gave in evidence, two patents for harvesters, which they claimed antedated this invention of Dinsmore. 1841. or The first, Nelson Platt's of La Salle county, Illinois, June 12, 1849; the second, Alfred Churchill's, Kane county, same state, March 3, There is no proof in the record in respect to these patents. Whether any machine was ever constructed under either of them, or went into practical use if constructed, whether each were but an imperfect and abandoned experiment, are matters apparently regarded by the counsel who introduced them as of no great importance. Nothing appears to be known in respect to them, except that they were found among the records of the patent office, and have relation to the subject of grain harvesters. Whatever may have been their merit, however, as harvesters, they can have no material bearing that we can perceive upon this invention of the complainants, for, as it respects the peculiar device for which the present patent was granted, it is not to be found in either of them; neither in the specification nor claims. A rejected specification and drawing were also given in evidence of E. P. Covett, [*680 of Philadelphia, on the part of the defendants, on the point of novelty; but this was an application made to the patent office as late as 1852, two years after the invention of Dinsmore. This closes all the evidence in the case on the question of novelty, and which requires no further comment. The only remaining question is as to the infringement. The defendant's answer itself goes far towards making out an infringement, stripped of the coloring generally given to a case stated in the pleadings. It is admitted, the defendant's harvester is constructed with a main frame which carries the working parts of the machine that is, the cutting apparatusand to this main frame is attached a secondary (supplemental) frame, which carries the driving wheel. The secondary frame, it is said, is not left free to play up and down, but is prolonged beyond the driving-wheel to a standard in the form of an arc, that rises from the rear of the main frame. This standard is provided at various heights with holes, which secure said secondary frame, and with it, the axle of the driving-wheel, at certain fixed distances above the main frame. Defendants say that their driving-wheel is not hung upon a crank shaft, and that their main and secondary frames are hinged in the opposite direction from that in which they are attached in the machine patented to Dinsmore. We have a model of the defendant's machine before us, and the above is a pretty fair description of it; and it will be seen to embrace every substantial element found in the construction and arrangement of the Dinsmore machine. There are the two frames, the main and secondary, or supplemental, the one supporting the cutting apparatus, the other the driving-wheel, hinging the two frames together in such a way that the driving-wheel and cutting apparatus may each follow the inequalities of the ground independently of each other, and may also be bolted rigidly together for support ing the cutting apparatus at any fixed height. Every advantage in reaping or mowing uneven or stony ground by the new and peculiar device of Dinsmore in the construction and arrangement of his machine, is found in that of the 681] defendants. The form in some parts is changed; their two frames are hinged at different ends, different names are given to the same things, and different mechanical arrangements in the gearings are used to produce corresponding results, and, as is claimed, better results, although we perceive no evidence of this in the record. An expert, Mr. Young, an experienced machinist, engaged in building this class of machines, who had a model of the defendants before him, was inquired of if he found in its construction two powers--the one for supporting the driving wheel, and the other for supporting the cutting apparatus. He answered that he did. He was inquired of if he found the two frames hinged together in such a manner that the drivingwheel and cutting apparatus may each follow the irregularities of the ground independently; and also, if they were bolted rigidly together for supporting the cutting apparatus at any desired height. He answered that he did. He vas asked if he found the driving-wheel represented in the model as hung in a supplementary frame. He answered that he did. Also, if he found the supplementary frame hinged at one end to the main frame. He answered that he did, and that its opposite end could be adjusted at various heights, or left free as desired. Do you find these several parts so constructed and arranged that the cutting apparatus may be held at any desired height for reaping, or be left free to accommodate itself to the undulations of the ground, for mowing? He answered, he did. Another witness, Mr. Dunning, supports in all respects the evidence above given; and there is no substantial contradiction of this account of the construction and arrangement of the defendant's machine. There is a good deal of conflicting evidence on a point that is not at all controlling in the case, namely: whether the defendants' machine would work well in mowing without adjusting the wheel frame to the standard firmly at a given height. There are respectable witnesses on both sides of this question. The decree below affirmed. -question for court in equity actions-new and useful improvement, what is-first inventor, who is-reaping machines-magazine as evidence. A patent is of itself prima facie evidence that the patentee is the original and first inventor of that which is therein described and secured to him as his invention. Recital in letters patent, that the required oath was taken before the same was granted, in the absence of fraud, is conclusive evidence that the necessary oath was taken by the applicant before the letters patent were granted. Where inventions secured by letters patent embrace an entire machine, it is sufficient if it appear that the claim is coextensive with the invention. Where inventions embrace only one or more parts of a machine, the part or parts claimed must be specified and pointed out. Where the commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for infringement, is final and conclusive, and is not re-examinable in such a suit. All matters of fact involved in the hearing of an application to reissue a patent, and in granting it, are conclusively settled by the decision of the commissioner granting the application. Whether a reissued patent is for the same invention as that embodied in the original patent, or for a different one, is a question for the court in an equity, suit to be determined as a matter of construction, on a comparison of the two instruments, aided, if necessary, by the testimony of expert wit nesses. The claim may be construed in connection with the explanations contained in the specifications. The requirement of the patent act, that the improvement must be new and useful, is satisfied, if the combination is new and the machine is capable of being beneficially used for the purpose for which it was designed. He is the first inventor and entitled to a patent for his invention, who first perfected and adapted the same to use; and until the invention is so perfected and adapted to use, it is not patentable under the patent laws. magazine, not sufficient to give the nature and Mere vague and general representations in a operation of the invention, will not support a defense that the patentees are not the original and first inventors. Bona fide inventors of a combination may suppress every other combination of the same ingredients to produce the same result, not substantially different from what they have invented and caused to be patented. Seymour's and Palmer's and Williams's patents for improvements in reaping machinery, held valid. [No. 65.] Argued Nov. 23, 1870. Decided Jan. 9, 1871. PPEAL from the Circuit Court of the United States for the Northern District of New A York. The bill in this case was filed in the court below, by the appellants, to recover for an alleged infringement of a certain patent. A de cree having been entered dismissing the bill, the complainants took an appeal to this court. The case is very fully stated in the opinion of the court. Messrs. Geo. Gifford and E. W. Stoughton, for appellants: The law respecting the necessary quantity of invention to sustain a patent is well settled, and 516*] *WILLIAM H. SEYMOUR et al., Appts., has been ever since the first administration of the patent laws in England. There has been one unbroken line of decisions, to the effect that, if the thing invented be new, the quantity of invention employed to produce it cannot be measured from the appearance of the thing itself, but that the change made must be taken in connection with the usefulness of the thing produced by the change. 33 |