Eastman v. Bodfish.

ROBERT EASTMAN v. WILLIAM H. BODFISH.

Where a patent for the circular saw clapboard machine expired by lapse of time on the 15th of March, 1834, and Congress by the Act of 3d of March, 1835, ch. 86, renewed it to A for the space of seven years, from the time when it expired, and the declaration in the writ, which was dated on the 13th of January, 1838, recited the original patent and the subsequent Act of Congress, and then stated generally a violation of the patent right for a long time, to wit, for the space of three years and eight months, next preceding the date of the writ; It was held, that if the plaintiff intended to claim under the old patent, he should have filed a distinct and independent count; and that he had restricted himself to proof of a violation of the patent right during the space of the said three years and eight months, specified in the declaration.

Whenever time is material, whether in matters of contract, or of tort, the plaintiff is strictly bound by the time specified in the declaration.

CASE for infrigement of a patent right "for a new and useful invention called the Circular Saw Clapboard Machine." The cause was tried upon the general issue. The original patent was granted to the plaintiff, Eastman, and one Josiah Jaquith, as the original inventors, on the 16th of March, 1820. The patent expired by lapse of time; and Congress by the Act of 3d of March, 1835, ch. 86, Jaquith being then dead, granted to the plaintiff, as survivor, the full and exclusive right and liberty of making, constructing, and vending to others, to be used, the same invention for the term of seven years, from the 15th of March, 1834, when the original patent expired.

The declaration was founded upon the Act of 1835, ch. 86, and after reciting the original patent and the Act of Congress of 1835, and the new patent granted under the same, alleged as a breach, that the defendant "unlawfully, against the will of the plaintiff, and without any permission or license of the plaintiff, in infringement of the right and privilege secured to the plaintiff by the letters patent, &c., did make, construct, and use and vend to others to be used, the said saw and use

Eastman v. Bodfish.

ful invention and continue the use thereof for a long time previous to the date of the writ, to wit, for the space of three years and eight months next preceding the date thereof." The writ was dated the 13th of January, 1838.

Deblois, for the plaintiff, contended, that he was entitled under the allegations in the declaration, to go into evidence to establish a violation of the patent by the defendant, under the original patent, which had expired, as well as under that of the Act of 1835.

Fox and Codman, a contrâ, insisted, that the plaintiff could not go into evidence of any such violation of the original patent; but was confined to the time, since the grant of the patent under the Act of 1835; and at all events, that the breach itself tied up the inquiry to the period of three years and eight months before the date of the writ.

STORY J. I have no doubt whatsoever in the present case. By the frame of the declaration, the right of action is exclusively founded upon the Act of 1835; and there is nothing in the declaration, which points to any breach under the old patent, which expired on the 15th of March, 1834. In short, I cannot understand, that the declaration purports to found any claim under the old patent, but the latter is merely recited as introductory to the right and title under the Act of 1835, and the violation thereof. If the plaintiff intended to have made any claim under the old patent, he should have filed a distinct and independent count.

Moreover, I am of opinion in this case, that the plaintiff has by the breach, as stated in the declaration, tied himself up to a violation of the patent right within three years and eight months before the date of the writ; that is, before the 13th of January, 1838. In cases under the patent laws, I conceive, that the plaintiff is confined to giving evidence of 67

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Eastman v. Bodfish.

the making, constructing, or using the invention in violation of his patent right during the period, which he specifies in his declaration. If it were otherwise, the recovery in the suit would be no bar to another action for any anterior breach, since it could not judicially appear, that any damages had been recovered for any such anterior breach; and the form of the declaration itself, specifying the term, would repel any presumption to the contrary. Besides; The length of time of the use is, or at least may be, a very material ingredient in the ascertainment and assessment of the damages by the jury; and the plaintiff ought to give notice by his declaration of the term of the user, for which he seeks damages. It is by no means true, that the specification of time is in all cases immaterial to be proved, as laid in the declaration. Wherever time is material, not only in matters of contract, but in matters of tort, the plaintiff is strictly bound by that time. Now, in trespass with an allegation of a continuando, or diversis diebus, if the plaintiff insists upon proving repeated acts of trespass, he will not be allowed to give evidence thereof, unless committed within the time specified. In truth, the usual mode of declaring in actions for an infringement of a patent is, to allege, that the defendant on such a day (naming it)" and on divers other days and times between that day and the day of the commencement of the suit (or exhibiting the bill) did unlawfully, &c. make and sell and use, &c." The District Judge concurred in this opinion.

Mem. The cause afterwards proceeded before the jury, who found a verdict for the defendant.

1 1 Chitty on Plead. 3d edit. p. 258; 1 Saund. Rep. by Williams, p. 24, note 1; Brook v. Bishop (2 Ld. Raym. 823); Monkton v. Pashley (2 Ld. Raym. 974, 976); Com. Dig. Pleader, C. 19; 2 Starkie on Evid. 210, 2d Lond. edit.

22 Chitty Pl. 3d ed. p. 356, 357; Phillips on Patents, p. 522, ed. 1837.

CIRCUIT COURT OF THE UNITED STATES.

Summer Circuit.

RHODE ISLAND, JUNE TERM, 1841, AT NEWPORT.

Hon. JOSEPH STORY, Associate Justice of the Supreme Court.

BEFORE {Hon. JOHN PITMAN, District Judge.

CLARKE V. NEW JERSEY STEAM NAVIGATION COMPANY.

In all proceedings in rem, when a Court of Admiralty has jurisdiction over the thing itself, it is wholly unimportant, to whom it belongs.

By the common law, foreign corporations and non-resident foreigners cannot be served with process by any of the Courts of Common Law, nor can their property be attached to compel their appearance. The authority, whenever it exists, results from special custom or statute provisions.

It seems, that the principles of the common law are inapplicable to process and proceedings in Courts of Admiralty.

The District Courts of the United States, as Courts of Admiralty, may award attachments against the property of foreign corporations, found within their local jurisdiction.

It is well settled, that a foreign corporation may sue in another jurisdiction.

THIS was a suit in Admiralty, brought by an appeal from a pro formâ decree of the District Court, dismissing the libel. The original libel was brought in February, 1841, and prayed only for personal process against the corporation, and that Moses B. Ives, one of the directors of the company, might be summoned to appear and answer the libel. At the return day

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Clarke v. New Jersey Steam Navigation Company.

Moses B. Ives appeared, and declining to appear for the company, prayed that the writ might be dismissed; and thereupon it was dismissed against him personally; but the libel was retained for further process against the property of the compaAfterwards an amended libel was filed, praying for process against the property of the company to be found within the District; and, accordingly, the District Judge awarded a process of attachment against the property; and, upon that process, the Marshal attached a scow, the property of the company, found within the District.

The amended libel was in substance as follows:

First. That the respondents, in the month of January, in the year of our Lord one thousand eight hundred and forty, were common carriers of merchandise on the high seas, from the city of New York, in the State of New York, to Stonington, in the State of Connecticut, and were then owners of the steamboat Lexington, then lying at the port of New York, in the State of New York, and which vessel was then used by the defendants as common carriers as aforesaid, for the transportation of goods, wares, and merchandise on the high seas, from the said port of New York to the port of Stonington, in the State of Connecticut.

Second. That the Libellant, on the high seas and within the ebb and flow of the tide, and within the admiralty and maritime jurisdiction of the United States, and of this Court, on the 13th day of January, 1840, contracted with the respondents for the transportation by water, on board of the said steamboat Lexington, from the said port of New York to the said port of Stonington, of twenty bales of cotton to the libellant belonging, of the value of fifteen hundred dollars. And the said respondents, then and there, for a reasonable hire or reward, to be paid by the libellant therefor, contracted with the libellant, that they would receive the said twenty bales of