STITT V. EASTEaN Do GO.
649
was correct. The jurisdiction of the district court, in matters of naturalization, does not depend upon facts stated, but is derived from the statutes of the United States. Whether the court will grant naturalization papers in a given case depends upon the facts; but it has jurisdiction over the matter even if the facts be insufficient for a favorable result to the application. Nor did the court err in not di· recting a verdict of not guilty on the second count, as requested by the respondent's counsel. It is not the practice in the federal courts, ordinarily, to instruct the jury to bring in a specific verdict; but the court will instruct the jury upon the law and the competency of the evidence, and leave it to the jury to find the verdict accordingly. In this case the:1;e were two counts in the indictment. Under the second count no evidence was given, be· cause of a variance between the count and the evidence offered, and the jury were instructed that they could not find the respondent guilty on that count.' It cannot be presumed that they did so. The position of the government was that the respondent did not arrive in this country until 1879, and that he was not then a minor. The respondent 'contended that he arrived in 1869, and was then a minor.. To estab· lish the position of the government the prosecution called witnesses who testified that they first knew the respondent in 1879, in November; that he was employed in a mill with them; and three or more of them also testified that when he sought employment at that time he, and a friend with him, in his presence, said he was just from the "old country." The court instructed the jury that, in determining the weight to be given to this testimony, they might consider that the respondent had offered no evidence to show where he was before 1879, or between 1869 and 1879. This instruction was right. It was a matter peculiarly within his knowledge, and, failing to show it, it was competent for the jury to infer that the testimony of the wit. nesses was true, and that he came to this country in 1879, or that. he was just then "from the old country." We think, upon the whole case, there was sufficient evidence to convict the respondent, and that there should be judgment on the verd,ict. .
STITT,
Trustee,
'V. EASTERN
R. Co.
(C'ircuit C'ourt, D. Massadtuseets.
December 18, 1884.)
Where it is shown that a prior invention was Ule same as that described in a patent, that it was complete, and capable of producing the same result, and was known in this country, the defense of want of novelty will be sustained. 2. SAME-PERCHES FOR DUMPING CARS-PATENT No. 147,863. Patent No. 147,863, granted to George Richards, February 24. 1874, for an improvement in perches for dumping cars, is void for want of novelty
1.
PATENTS FOR INVENTIONS-NOVELTY.
650
.
REPORTER.
At Law. C. M. Reed, for. complamant. A. McCall1tm, for defendant. COLT,J. Thisis an action at law to recover damages for alleged infringement of letters patent No. 147,863, granted to George Richards,.Februar,Y 24, 1874, for "improvement in perches for dumping cars." The only question before the court is whether the patent is void for want of novelty under the following circumstances contained in the agreed statement of facts: "That in the year 1868 one William Parker, then a resident of Aspinwall, in the republic of Columbia, and superintendent of the Panama Rallroad Company, sent from Aspinwall to the Portland Company, a corporation doing business as manufacturers of cars and locomotives at Portland, in the state of Maine, an order for forty dump cars, to be made for said railroad company in accordance with the description contained in a drawing sent with said order, a copy of which, marked · Exhibit A,' is filed herewith, and which shows the same invention described and claimed in said letters patent No. 147,863. "That, in compliance with said order, working drawings were made at said Portland Company's works, of which copies, marked ·Exhibits Band C,' . are filed herewith, and that forty cars were built, iron perches, made substantially as shown in said drawing's, (Exhibits Band C,) and embodying in their construction the same invention described and claimed in said letters patent No. 147,863. "That all the separate parts of each of said cars were completely finished; that all the parts of the first car made were put' together with temporary fastenings. in the shop of said company, for the purpose of ascertaining that parts fitted; and that of the remaining cars the iron-work only was set up for the same purpose; that the several parts of all said cars, after such fitting, were taken apart. The perches were complete structures, ready for use when fitted to the cars; but after being fitted were separated from the trucks for the purpose of shipment, and that in this condition they were sent by steamer to New York, and thence to Aspinwall. One set of wheels only was used in setting up all said cars. None of said cars were attached to a locomotive or to other cars, or otherwise used in any manner in the United States, except as aforesaid. . "That the drawings above mentioned, of which liJxhibits A. B, and Care copies. have ever since been, and now are, at the shop of said Portland Company, in said Portland."
By section 4886 of the Revised Statutes, to entitle a person to a patent, the invention must be one "not known or used by others in this country." The plaintiff contends that, upon a proper construction of the patentlaw as a whole, both prior knowledge and use must be proved to negative novelty. We think this statement of the rule somewhat too brqad. The prior invention relied upon as a defense must be complete, and capable of producing the result to be accomplished. ,It must. not be inchoate, or rest in speculation or experi. menta Coffin v. Ogden, 18 Wall. 120. The evidence is sufficient to support the defense of prior knowledge and use, if it proves the invention was, complete and capable of working ;if it had been put· to use, and was known to any considerable number of persons; . Judson
WOLLIIlNSAE 'D. REIHIIlB.
v. Bradford, 16 O. G. 174. If the construction of the prior thing of itself demonstrates that it is within the principle of the patent, then, perhaps, no use need be established, for it might be said to prove itself. Sayles v. Ohicago et N. W. R. 00. 4 Fisher, 584. It is not necessary that the prior invention should have been actually used for the purpose contemplated, but it must have been capable of such use. Pitts v. Wemple, 2 Fishel', 10. In Parker v. Ferguson,l Blatchf. 407, Mr. Justice NEL£ON charged the jury, in substance, that if they believed the prior device was constructed the same as that described in the patent, and was taken away to be used, the evidence was sufficient to establish the fact of a want of novelty, although there was no proof of actual use. The primary inquiry is one of identity between two things. If the identity can only be known by actual use, such use should be proved. If the identity is apparent on inspection, it is not necessary to prove actual use. If there is a reasonable doubt as to identity, want of novelty is not made out. Walk. Pat. § 72. By the weight of authority and of reason, it would seem that if the prior invention was the same as that described in the patent; if it was complete, and capable of producing the same result, and was known in this country,-it is sufficient to sustain the defense of want of novelty. In the present case it is admitted that dump cars embodying the same invention were constructed some years before the date of the patent. It appears that 40 such cars were ordered to be built at car-works in this country by a foreign railroad company, and shipped to that company presumably for use. In our opinion the admitted facts prove that the prior invention was the same as that described in the patent; that it was complete, and capable of the same practical use, and that, therefore, the defense of want of novelty is made out. Judgment for defendant.
WOLI.ENSAK 'V. REIHER.
«(Jlreuit Oourt, N. D. Illinois. October Term, 1884.\ PA.TENT!'! FOR INVENTIONS-REISSUE-LACHES.
Reissued patent No. 10,264, granted to John F. Wollensak for transom-Jlfters, held void by reason of his allowing eight years to elapse without applying therefor; following Miller v. BrasB Co. 104 U. S. 850.
Bannin.fJ et Banning and L. L. Bond, for complainant. Oha,rles T. Brown, for defendant.
In Equity.
GRESHAM, J. The bill avers that on the tenth day of March, 1874, patent No. 148,538 issued to the complainant fora new and useful iniprovement in "transom-lifters;" that afterwards; finding this pat
