The principle that what is apparently mere matter of remedy in some circumstances, in others, where it touches the substance of the controversy, becomes matter of right, is familiar in our constitutional jurisprudence in the application of that provision of the Constitution of the United States which prohibits the passing by a State of any law impairing the obligation of contracts. For it has been uniformly held that "Any law which in its operation amounts to a denial or obstruction of the rights accruing by a contract, though professing to act only on the remedy, is directly obnoxious to the prohibition of the Constitution." McCracken v. Hayward,2 How., 612; Cooley, Const. Lim., 285.

Hence it is that a vested right of action is property in the same sense in which tangible things are property, and is equally protected against arbitrary interference. Whether it springs from contract or from the principles of the common law, it is not competent for the Legislature to take it away. A vested right to an existing defense is equally protected, saving only those which are based on informalities not affecting substantial rights, which do not touch the substance of the contract, and are not based on equity and justice. Cooley, Const. Lim.,362

369.

St., 629, where it was held, that under the Act | Adam v. Kerr,1 Bos. & P., 360; Bank v. Donrequiring compensation for causing death by nally, 8 Pet.,361; Douglas v. Oldham, 6 N. H., wrongful act, neglect or default, which gave a 150. In Le Roy v. Beard,8 How.,451, where it right of action, provided such action should be was held that assumpsit and not covenant was commenced within two years after the death the proper form of action brought in New York of such deceased person, the proviso was a con- upon a covenant executed and to be performed dition qualifying the right of action, and not a in Wisconsin, and by its laws sealed as a deed, mere limitation on the remedy. Bonte v. Tay- but which in the former was not regarded as lor, 24 Ohio St., 628. sealed, it was said by this court, that it was so decided "Without impairing at all the principle, that in deciding on the obligation of the instrument as a contract, and not the remedy on it elsewhere, the law of Wisconsin, as the lex loci contractus, must govern." It also regulates all process, both mesne and final. Ogden v. Saunders, 12 Wheat., 213; Mason v. Haile, Id., 370; Beers v. Haughton, 9 Pet., 359; Von Hoffman v. Quincy, 4 Wall., 553 [71 U. S.,XVIII., 409]. It also may admit, as a part of its domestic procedure, a set-off or compensation of distinct causes of action between the parties to the suit, though not admissible by the law of the place of the contract. Story, Confl. L., sec. 574; Gibbs v. Howard, 2 N. H., 296; Ruggles v. Keeler,3 Johns., 263. But this is not to be confounded, as it was in the case of Bank v. Hemingray, 31 Ohio, 168, with that of a limited negotiability, by which the right of set-off between the original parties is preserved as part of the law of the contract, notwithstanding an assignment. The rules of evidence are also supplied by the law of the forum. Wilcox v. Hunt, 13 Pet., 378; Yates v. Thomson, 3 Clark & F., 544; Bain v. R. Co., 3 H. of L. Cas., 1; Don v. Lippman, 3 Clark & F.,1. In Yates v. Thomson, supra, it was decided by the House of Lords that in a suit in a Scotch court, to adjudge the succession to personalty of a decedent domiciled in England, where it was admitted that the English law governed the title, nevertheless it was proper to receive in evidence, as against a will of the decedent duly probated in England, a second will which had not been proved there, and was not receivable in English courts as competent evidence, because such a paper, according to Scottish law, was admissible. In the case of Hoadley v. Northern Trans. Co., 115 Mass., 304, it was held that if the law of the place, where a contract signed only by the carrier is made for the carriage of goods, requires evidence other than the mere receipt by the shipper to show his assent to its terms, and the law of the place where the suit is brought presumes conclusively such assent from acceptance without dissent, the question of assent is a question of evidence, and is to be determined by the law of the place where the suit is brought. In a suit in Connecticut against the indorser on a note made and indorsed in New York, it was held that parol evidence of a special agreement, different from that imputed by law, would be received in defense, although by the law of the latter State no agreement different from that which the law implies from a blank indorsement could be proved by parol. Downer v. Chesebrough, 36 Conn.,39. And upon the same principle it has been held that a contract, valid by the laws of the place where it is made, although not in On the other hand, the law of the forum de- writing, will not be enforced in the courts of a termines the form of the action, as whether it country where the statute of frauds prevails, shall be assumpsit, covenant or debt. Warren unless it is put in writing. Leroux v. Brown, v. Lynch, 5 Johns., 239; Andrews v. Herriot, 4 12 C. B., 801. But where the law of the forum Cow., 508. Trasher v. Everhart, 3 Gill & J.,234; ❘ and that of the place of the execution of the

The general rule, as stated by Story, Confl. L., sec. 331, is, that a defense or discharge, good by the law of the place where the contract is made or is to be performed, is to be held of equal validity in every other place where the question may come to be litigated. Thus in fancy, if a valid defense by the lex loci contractus, will be a valid defense everywhere. Thompson v. Ketchum, 8 Johns., 190; Male v. Roberts, 3 Esp., 163. A tender and refusal, good by the same law, either as a full discharge or as a present fulfillment of the contract, will be respected everywhere. Warder v. Arell, 2 Wash. (Va.), 282. Payment in paper money bills, or in other things, if good by the same law, will be deemed a sufficient payment everywhere. [Anonymous] 1 Brown, Ch., 376; Searight v. Calbraith, 4 Dall., 325; Bartsch v. Atwater, 1 Conn., 409. And, on the other hand, where a payment by negotiable bills or notes is, by the lex loci, held to be conditional payment only, it will be so held even in States where such payment under the domestic law would be held absolute. So, if by the law of the place of a contract equitable defenses are allowed in favor of the maker of a negotiable note, any subsequent indorsement will not change his rights in regard to the holder. The latter must take it cum onere. Ory v. Winter, 4 Mart. (N. S.), 277; Evans v. Gray, 12 Mart. (La.), 475; Chartres v. Cairnes, 4 Mart. (N. S.), 1; Story, Confl. L., sec. 332.

contract coincide, it will be enforced, although a hypothecation of the cargo by the master of by the law of the place of performance required a ship. It was claimed that because the matter to be in writing, as was the case of Scudder v. to be proved was, whether there was a necessiBank, 91 U. S., 406 [XXIII., 245], because the ty which justified it, it thereby became a matter form of the contract is regulated by the law of of procedure, as being a matter of evidence. the place of its celebration, and the evidence of Lord Justice Brett said: "Now, the manner of it by that of the forum. proving the facts is matter of evidence, and, to my mind, is matter of procedure, but the facts to be proved are not matters of procedure; they are matters with which the procedure has to deal."

in that State to subscribe to shares in the capital stock of a railroad corporation established by the laws of another State, and having their

Ut res magis valeat, quam pereat, would be decisive of the present controversy, as conclusive of the question of the application of the law of Louisiana, by which alone the undertak-road and treasury there, is a contract to be pering of the obligor can be upheld.

At all events, it is a circumstance, highly persuasive in its character, of the presumed intention of the parties, and entitled to prevail, unless controlled by more express and positive proofs of a contrary intent.

It was expressly referred to as a decisive principle in Bell v. Packard, 69 Me., 111, although it cannot be regarded as the foundation of the judgment in that case. Milliken v. Pratt, 125 Mass., 374.

formed there, and is to be construed by the laws of that State. In Lanusse v. Barker, 3 Wheat., 146, this court declared that "Where a general authority is given to draw bills from a certain place, on account of advances there made, the undertaking is to replace the money at that place."

The case of Cox v. U. S., 6 Pet., 172, was an action upon the official bond of a navy agent. The sureties contended that the United States were bound to divide their action, and take If now we examine the terms of the bond of judgment against each surety only for his proindemnity, and the situation and relation of the portion of the sum due, according to the laws parties, we shall find conclusive corroboration of Louisiana, considering it a contract made of the presumption, that the obligation was there, and to be governed in this respect by the entered into in view of the laws of Louisiana. law of that State. The court, however, said: The antecedent liability of Pritchard, as sure- "But admitting the bond to have been signed ty for the railroad company on the appeal bond, at New Orleans, it is very clear that the obligawas confessedly contracted in that State, ac- tions imposed upon the parties thereby looked cording to its laws, and it was there alone that for its execution to the City of Washington. It it could be performed and discharged. Its un-is immaterial where the services as navy agent dertaking was, that Pritchard should, in certain were to be performed by Hawkins. His accontingencies, satisfy a judgment of its courts.countability for non-performance was to be at That could be done only within its territory and according to its laws. The condition of the obligation, which is the basis of this action, is, that McComb and Norton, the obligors, should bold harmless and fully indemnify Pritchard against all loss or damage arising from his liability as surety on the appeal bond. A judgment was, in fact, rendered against him on it in Louisiana. There was but one way in which the obligors in the indemnity_bond could perfectly satisfy its warranty. That was, the moment the judgment was rendered against Pritchard on the appeal bond, to come forward in his stead and, by payment, to extinguish it. He was entitled to demand this before any payment by himself, and to require that the fund should be forthcoming at the place where otherwise he could be required to pay it. Even if it should be thought that Pritchard was bound to pay the judgment recovered against himself, before his right of recourse accrued upon the bond of indemnity, nevertheless he was entitled to be re-imbursed the amount of his advance at the same place where he had been required to make it. So that it is clear, beyond any doubt, that the obligation of the indemnity was to be fulfilled in Louisiana and, consequently, is subject, in all matters affecting its construction and validity, to the law of that locality.

This construction is abundantly sustained by the authority of judicial decisions in similar

cases.

In Irvine v. Barrett, 2 Grant's Cas., 73, it was decided that where a security is given in pursuance of a decree of a court of justice, it is to be construed according to the intention of the tribunal which directed its execution, and in contemplation of law, is to be performed at the place where the court exercises its jurisdiction; and that a bond given in another State, as collateral to such an obligation, is controlled by the same law which controls the principal indebtedness. In the case of R. R. Co. v. Bartlett, 12 Gray, 244, the Supreme Judicial Court of Massachusetts decided that a contract made

the seat of government. He was bound to account, and the sureties undertook that he should account for all public moneys received by him, with such officers of the government of the United States as are duly authorized to settle and adjust his accounts. The bond is given with reference to the laws of the United States on that subject. And such accounting is required to be with the Treasury Department at the seat of government; and the navy agent is bound, by the very terms of the bond, to pay over such sum as may be found due to the United States on such settlement; and such paying over must be to the Treasury Department, or in such manner as shall be directed by the Secretary. The bond is, therefore, in every point of view in which it can be considered, a contract to be executed at the City of Washington, and the liability of the parties must be governed by the rules of the common law." This decision was repeated in Duncan v. U. S., 7 Pet., 436.

These cases were relied on by the Supreme Court of New York in the case of Kentucky v. Bassford, 6 Hill, 526. That was an action upon a bond executed in New York conditioned for the faithful performance of the duties enjoined by a law of Kentucky authorizing the obligees to sell lottery tickets for the benefit of a college in that State. It was held that the stipulations of the bond were to be performed in Kentucky, and that, as it was valid by the laws of that State, the courts of New York would enforce it, notwithstanding it would be illegal in that State.

The case of Boyle v. Zacharie, 6 Pet., 635, is a direct authority upon the point. There Zacharie and Turner were resident merchants at New Orleans, and Boyle at Baltimore. The latter sent his ship to New Orleans, consigned to Zacharie and Turner, where she arrived and, having landed her cargo, the latter procured a freight for her to Liverpool. When she was ready to sail, she was attached by process of law at the suit of certain creditors of Boyle, and Zacharie and Turner procured her release by

2. Where the original patent was for a mechanism to accomplish a specific result, and the re-issued patent is for the process by which that result is attained, and is, therefore, much broader than the original patent, and covers every mechanism which can be contrived to carry on the process, the re-is

3. These principles applied to the re-issued patent to Albert S. Southworth for improvements in taking photographic impressions. [No. 67.]

Argued Nov. 1, 2, 1882. Decided Nov. 13, 1882.

becoming security for Boyle on the attachment. | different invention from that described in the origUpon information of the facts, Boyle promised inal patent, the re-issue is void. to indemnify them for any loss they might sustain on that account. Judgment was rendered against them on the attachment bond, which they were compelled to pay, and brought suit against Boyle in the Circuit Court for Mary-sue is void. land, upon his promise of indemnity, to recover that amount. A judgment was rendered by confession in that cause and a bill in equity was subsequently filed to enjoin further proceedings on it, in the course of which various questions arose, among them whether the prom-APPEAL from the Circuit Court of the United ise of indemnity was a Maryland or a Louisiana contract. Mr. Justice Story, delivering the opinion of the court, said: "Such a contract would be understood by all parties to be a contract made in the place where the advance was to be made, and the payment, unless otherwise stipulated, would also be understood to be made there;" "that the contract would clearly refer for its execution to Louisiana."

The very point was also decided by this court in Bell v. Bruen, 1 How., 169. That was an action upon a guaranty written by the defendant in New York, addressed to the plaintiffs in London, the latter having made advances in the latter place of a credit to Thorn. The operative language of the guaranty was, "That you may consider this, as well as any and every other credit you may open in his favor, as being under my guaranty." The court said: "It was an engagement to be executed in England, and must be construed and have effect according to the laws of that country," citing Bank v. Daniel, 12 Pet., 54. As the money was advanced in England, the guaranty required that it should be replaced there, and that is the precise nature of the obligation in the present case. Pritchard could only be indemnified against loss and damage on account of his liability on the appeal bond, by having funds placed in his hands in Louisiana wherewith to discharge it, or by being repaid there the amount of his advance. To the same effect is Woodhull v. Wagner, Baldw., 296.

We do not hesitate, therefore, to decide that the bond of indemnity sued on was entered into with a view to the law of Louisiana as the place for the fulfillment of its obligation; and that the question of its validity, as depending on the character and sufficiency of the consideration, should be determined by the law of Louisiana, and not that of New York. For error in its rulings on this point, consequently, the judgment of the Circuit Court is reversed, with directions to grant a new trial.

New trial ordered.

True copy. Test:

James H. McKenney, Clerk, Sup. Court, U. S. Cited 109 U. S., 549; 111 U. S., 37; 114 U. S., 220.

SIMON WING ET AL., Appts.,

York.

States for the Southern District of New

Statement of the case by Mr. Justice Woods: This was a bill in equity to restrain the infringement by the defendants of re-issued letters patent dated September 25, 1860, granted to Albert S. Southworth, for certain improvements in taking photographic impressions. The original letters patent were dated April 10, 1855, the re-issue, September 25, 1860.

The answer of the defendants denied the novelty and the utility of the invention, denied infringement, and alleged that the invention described in the re-issued patent was not the same invention described in the original patent.

The circuit court upon final hearing dismissed the bill. To obtain a review of this decree, the complainants have appealed to this court.

It appears from the evidence in this case, and is a matter of general knowledge, that a camera is the principal instrument used in taking photographic pictures. This is a rectangular, oblong box, in one end of which is inserted a tube containing a double convex lens, while at the other end is a plate-holder, immediately in front of which is a sliding shield. A plate of glass receives in a dark room a chemical preparation which renders it sensitive to the action of light. The plate is then put into the plate-holder at the end of the camera opposite the lens, the shield in front of the plate is withdrawn, and the rays of light, passing through the lens from an object suitably placed in front of it, fall upon the plate and produce there an image of the object. This is then perfected by certain other chemical processes, and is called a negative, and from it many copies may be printed. Thus photographic pictures are produced.

The camera should be so arranged with relation to the object to be pictured, that a right line drawn from the center of the object will pass directly through the axis of the lens and fall upon the plate at right angles. In this manner the best pictures are obtained. If this method is not followed the picture will be distorted and otherwise imperfect.

It is conceded that, prior to the date of Southworth's invention, this object was accomplished by tilting the camera itself into different positions with respect to the object to be pictured, and in this manner bringing the center of the field of the lens upon different parts of the plate. Complainants contend that, prior to Southworth's invention, only one correct picture could be taken on the same plate, except in the manner just stated. The object of the invention covered by his original patent was, to provide Void patent-improvement in photography-re-efficient means by which several correct pictures

v.

EDWARD ANTHONY ET AL.

(See S. C., 16 Otto, 142-147.)

issued patent, when void.

could be taken on different parts of the same

1. Where the claim of a re-issued patent is for a plate.

the plate, while the plate remains stationary, so that different portions of the plate may be brought into the field of the lens. This I have tried, but do not consider it practically to be so good a plan as the foregoing, as it necessitates a change of position of the camera itself or of The claim of the re-issued patent was then stated as follows:

In the specification of his original patent he that my improvement may be embodied by declares his invention to be "A new and useful causing the lens of the camera to be made adplate-holder for cameras for taking photograph-justable in different positions with respect to ic impressions," and says: "The object of my invention is to bring in rapid succession different portions of the same plate, or different plates of whatsoever material prepared for photographic purposes, into the center of the field of the lens, for the purpose of either tinning them differently, that the most perfect may be select-the objects." ed, or of taking different views of the same object with the least delay possible, or of taking stereoscopic pictures upon the same or different plates with one camera." He then declares: "My invention consists of a peculiarly arranged frame in which the plate-holder is permitted to slide, by which means I am enabled to take four daguerreotypes on one plate and at one sitting, different portions of the plate being brought successively opposite an opening in the frame, the opening remaining stationary in the axis of the camera while the plate-holder and plate are moved."

The specification here proceeds to describe minutely the frame-holder by which the object of the invention is accomplished.

The claim of the original patent is as follows: "What I claim as my invention and desire to secure by letters patent is the within described plate-holder in combination with the frame in which it moves, constructed and operated in the manner and for the purpose substantially as

herein set forth."

*

*

*

"What I claim as my invention and desire to secure by letters patent is bringing the different portions of a single plate, or several smaller plates, successively into the field of the lens of the camera, substantially in the manner and for the purpose specified."

Messrs. John S. Abbott and Albert A. Abbott, for appellants.

Mr. Edmund Wetmore, for appellees.

Mr. Justice Woods delivered the opinion of the court:

It is manifest that the re-issued patent was taken out for the purpose of embracing under its monopoly what was not included by the original patent. The original patent was not, in the language of the statute,"Inoperative of invalid by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new."

The specification of the re-issued patent con- The original claim was for a mechanism tains the following passages which do not ap- namely: "A plate-holder in combination with pear in the original specification: "I have in- the frame in which it moves, constructed and vented certain improvements in taking photo-operating in the manner and for the purpose" graphic impressions." "In taking set forth in the specification. The claim of the daguerreotypes, photographs, etc., it has been re-issued patent is plainly for a process, namely: customary to use a separate plate for each im- "The bringing of the different portions of a sinpression, the plate being removed from the gle plate, or several smaller plates, successivecamera and replaced by another when several ly into the field of the lens of the camera, subimpressions of the same object were to be taken, stantially in the manner and for the purpose as in multiplying copies or for the purpose of specified." selecting the best-timed pictures. This caused considerable delay and trouble, to obviate which is the object of my present invention, which consists in bringing successively different portions of the same plate or several smaller plates secured in one plate-holder into the field of the lens of the camera.

"In carrying out my invention I have made use of a peculiarly arranged frame, in which the plate-holder is permitted to slide, and in which the position of the plate-holder is defi nitely indicated to the operator, so that he can quickly and accurately adjust the plate or plates, the accompanying drawings and description so explaining the same that others skilled in the art may understand and use my invention."

Then follows a description of the plate-holder, which is identical with the description contained in the original specification, and is illustrated by the same drawings.

This claim would cover any mechanism by which the different parts of the plate could be brought into the field of the lens. In fact, the specification of the re-issued patent suggests a different contrivance, namely: the causing of the lens of the camera to be made adjustable in different positions with respect to the plate, while the plate remains stationary, so that different portions of the plate may be brought into the field of the lens.

It is quite clear that the original patent covers a mechanism to accomplish a specific result, and that the re-issued patent covers the process by which that result is attained, without regard to the mechanism used to accomplish it. The re-issue is, therefore, much broader than the original patent, and covers every mechanism which can be contrived to carry on the process

In the case of Powder Co v Powder Works, 98 U. S., 126 [XXV., 77], it was held by this The re-issue specification further declares: court that when original letters patent were "In this case, however," that is, when it is de- taken out for a process, the re-issued patent sired to take more than four impressions on the would not cover a composition unless it were same plate," I use suitable grooves, stops or in- the result of the process, and that the invendices, by which the operator adjusts the position of one involved the invention of the other. tions of the plate substantially on the same prin- The converse of this proposition was decided ple that he uses the corners of the opening K by this court in the case of James v. Campbell, in the above described apparatus. It is evident 104 U. S., 356 [XXVI., 786]. In that case the