Opinion of the court. ing the modes of pleading established by the same code, by which each party, in advance of the trial, is advised of the nature of the testimony to be expected from the adverse party, by the verification under oath of the statement of his case, in ordinary and concise. language. And the court, in establishing a rule which excludes such testimony from the jury, was equally within the bounds of the law, and within the rules of propriety. But, at all events, the judgment in the present action cannot be reversed because of the exclusion of the plaintiff's evidence. The record discloses nothing more than that the plaintiff offered himself as a witness, that the court refused to permit him to testify, and that he excepted. It is not shown that his evidence, if admitted, would have been material; nor does it appear that the exception was taken at the time. And all presumptions are against the existence of error. Mr. Justice NELSON. This suit was brought by the plaintiff in error against the defendants for the infringement of a patent for an improvement in the running gear of carriages. The verdict and judgment were for the defendants. The only question presented in the bill of exceptions is, whether or not the plaintiff was a competent witness to give testimony in his own behalf. According to the law of Ohio, parties are competent witnesses. The case falls within the opinion of the court just delivered in the case of Vance v. Campbell and others. It is objected that the bill of exceptions does not state that the witness was material, and hence there could be no error in his exclusion. The bill of exceptions is brief, presenting only this single question, and stating no more of the case than is necessary to present it, which practice the court commends. The bill states that on the trial the plaintiff, to sustain the issue on his part, offered himself as a witness, and his counsel claimed he was competent, &c. Though it would have been more in conformity with the usual practice to have stated that the witness was material to sustain the issue, we think that enough is stated to imply the materiality, and that this objection cannot be maintained. JUDGMENT REVERSED-VENIRE DE NOVO. Opinion of the court. WRIGHT v. BALES. (2 Black, 535.) The statutory enactments of the States of the Union, in respect to evidence in cases at common law, are obligatory upon judges of the courts of the United States, who are bound to apply them as rules of decision. ERROR to the Circuit Court of the United States for the Southern District of Ohio. On the 31st of May, 1859, Matthias B. Wright and John Conner brought trespass on the case in the Circuit Court of the United States for the Southern District of Ohio, against Moses Bales, alleging in their declaration an infringement by defendant of a certain patent right to make and vend a draining plow of their invention. The defendant pleaded not guilty. Verdict for defendant, with costs. Plaintiff, in his exceptions, assigned, among other grounds of error, the refusal of the court to allow Wright, one of the plaintiffs, to testify in the cause. Writ of error issued April 2d, 1860. Mr. Lee and Mr. Fisher, of Ohio, for plaintiff in error. By the law of Ohio, the parties to a cause are competent witnesses in it. State laws of evidence are rules of decision in civil trials at the common law before courts of the United States. Civil Code of Ohio, § 310; Act of April 12, 1858, amending code; McNiel v. Holbrook, 12 Peters, 84; Sims v. Hundley, 6 How., 1; U. S. v. Dunham, Monthly Law Reporter, July, 1859; Smith v. Carrington, 4 Cranch, 62. No counsel appeared for defendant in error. Mr. Justice WAYNE. The plaintiff in error seeks for a reversal of the judgment in this case, for errors alleged to have occurred upon the trial of it in the court below, but our attention having been called to the rejection of a witness, we shall confine ourselves to that assignment of error, without considering such of them as relate to the merits of the litigation or to the admission of the deposition of A. B. Dickerson, taken de bene esse, as evidence in the case. The error complained of is, that the court erred in refusing to allow one of the plaintiffs, Matthias B. Wright, to testify as a witness in the cause. The cause was tried in the Circuit Court of the United States, sitting in Cincinnati, Ohio. In the year 1853, the Legislature of Opinion of the court. that State passed a statute entitled "An act to establish a code of civil procedure," in which it is declared that "no person shall be disqualified as a witness in any civil action or proceeding by reason of his interest in the event of the same, as a party or otherwise, or by reason of his conviction of a crime, but such entries or conviction may be shown for the purpose of affecting his credibility." This statute was in force at the time of this trial. Wright, one of the plaintiffs, was offered as a witness under it, but was rejected by the court as incompetent to testify, by reason of his interest in the event of the suit, and because of a rule of court, which it was said excluded such a witness from examination unless previous notice had been given to the opposite party of an intention to examine him. It appears, however, whatever may have been the intended application of that rule, under the "code of civil procedure" or otherwise, that it had become inoperative by the repeal in the year 1858 of that section of the Ohio code which required such a notice to be given. The repealing act of 1858 is a statute to amend the 313th and 314th sections of the code of civil procedure. The rejection of Wright, then, as a witness, for incompetency to testify in his own behalf, raises again, in this court, the question whether the statutory enactments of the States of the Union, in respect to evidence in cases at common law, are not obligatory upon judges in the courts of the United States to apply them as rules of decision in the trials of such cases. The 34th section of the judiciary act of the 24th September, 1789, (Statutes at Large,) is in these words: "that the laws of the several States, except where the Constitution, treaties, or statutes of the United States shall otherwise require or provide, shall be regarded as 'rules of decision' in trials at common law in the courts of the United States, in cases where they apply." Meaning by the word trials, as this court has said in Wayman v. Southard, 10 Wheat., matters of controversy, and not to executions and the mode of executing them. As to the application and the extent of the allowances of the laws of the States in such cases, this court gave its interpretation of the 34th section very fully in McNiel v. Holbrook, 13 Peters, 84. We then said: "We do not perceive any sufficient reason for so construing this act of Congress as to exclude from its provisions those statutes of the several States which prescribe rules of evidence in civil cases in trials at common law. Indeed, it would be difficult to make the laws of the State in relation to the rights of property the rule of decision in the Circuit Court, without associating with them the laws of the same State, prescrib Syllabus. ing the rules of evidence by which the rights of property must be decided. How could the courts of the United States decide whether property had been legally transferred, unless they resorted to the laws of the State to ascertain by what evidence the transfer must be established. In some cases the laws of the States require written evidence, in others it dispenses with it, and permits the party to prove his case by parol testimony; and what rule of evidence could the courts of the United States adopt to decide a question of property but the rule which the Legislature of the State has prescribed? The object of the law of Congress was to make the rules of decision in the courts of the United States the same with those of the States; taking care to preserve the rights of the United States, by the exceptions contained in the same section. Justice to the citizens of the several States required this to be done, and the natural import of the words used in the act of Congress includes the laws in relation to evidence, as well as the laws in relation to property. We think they are both embraced in it, and as by a law of Georgia the indorsements on these notes were made prima facie evidence that they had been so indorsed by the proper party, we think that the Circuit Court was bound to regard this law as a rule of evidence." The same ruling was repeated by this court in Sims v. Hundley, 6 Howard, 1, upon a question whether a notary's certificate, made evidence by a statute of Mississippi, was admissible in the Circuit Court of the United States for that State. We said, it is true that upon general principles of commercial iaw, this certificate would not be admissible. But it is made evidence by the statutes of Mississippi; and the rules of evidence prescribed by the statute of a State are always followed in the courts of the United States when sitting in the State in commercial cases as well as in others. Since these decisions were made, the judges of the United States courts have administered the laws of evidence of the States in conformity with them, and there was error in this case by the court below for not having done so. For such ruling, we direct that the judgment be reversed and order a venire facias de novo. APPLETON V. BACON & NORTH. Parties engaging the services of an inventor under an agreement that he shall devote his ingenuity to the perfecting of a machine for their benefit, can lay no claim to improvements conceived by him after the expiration of such agreement. Statement of the case. THIS was an appeal from the Circuit Court for the District of Columbia. On the 7th of December, 1858, the appellants, Appleton, filed their bill in the Circuit Court of the United States for the District of Columbia for an injunction to restrain the defendant, Bacon, from using, selling, or trading with, or otherwise employing a certain patent right for a new and improved mode of folding paper invented by defendant, North, which had been issued by the Patent Office to the defendant, Bacon, on the 10th of August, 1858. And also from constructing or authorizing to be constructed any machine or machines, having or containing the said improvement, &c., as aforesaid patented to him, until the further order of the court; that he be decreed to surrender and deliver up the said letters patent to be canceled, that they be declared void, and for general relief on the ground that the complainants were assignees of the invention, and the patent should have been issued to them, but the defendant, Bacon, had fraudulently procured it to be issued to himself. The defendant, North, admitted all the facts stated in the bill. The defendant, Bacon, denied all fraud and set up title in himself by reason of certain contracts alleged to have been made by North, (the inventor,) with a company called the American Book and Paper-Folding Company, which he alleged had been assigned to him, and that North had recognized and was acting under the said assignments at the time he made the said improvements. No replication was filed, but evidence was taken on both sides. North was examined as a witness by complainants, under an agreement saving exceptions to his competency, and his testimony was by the court ruled to be inadmissible. The court held that when part of the improvements were made by North he was in the employment of Bacon, under some agreement, (either express or implied,) and that all improvements made by him while so employed should be the property of Bacon. As to those improvements, they decreed that they rightfully belonged to Bacon, and as to those discovered after he went out of Bacon's employment, they belonged to the complainants. From this decree cross-appeals were taken by the respective parties to the Supreme Court. Mr. Bradley and Mr. McCalla, of Washington city, for appellants, Bacon and North. Mr. Carlisle and Mr. Webb, of Washington city, contra. |