Argued Jan. 2, 1866. Decided Jan. 22, 1866. N ERROR to the Circuit Court of the United States for the District of Massachusetts. The defendant in error, who was plaintiff in the court below, declared in his first count on letters patents, which are designated in the bill of exceptions as patent B; and in his second count on letters patent, designated in the bill of exceptions as patent C. At the trial, patent C was withdrawn from the case and the verdict was rendered on patent B only. The first question which arises on the bill of exception respects the validity of patent B. The material facts are that, on the 11th day of December, 1854, the plaintiff, being the orig inal and first inventor of new and useful improvements in cotton cleaners, made application to the commissioner for letters patent therefor designated in the bill of exceptions in patent A. The nature of these improvements may be characterized as consisting in certain described changes made by Hayden in the interior arrangements of an elongated trunk for cleaning cotton. While this application for patent A was still pending, Hayden made another improvement, in the form of the trunk. Hayden claimed this new improvement both separately and in combination with his application for patent A. On November 1, 1855, he filed his application for letters patent, and on the 17th day of March, 1857, letters patent for patent "A" were issued to him, in the specification whereof he claims the improvement in the form of the trunk, both separately, and in combination with his other improvements; but he makes no claim in this specification to his improvements in the interior arrangements of the trunk, because an application for letters patent for those interior arrangements had been pending before the commissioner ever since the 11th of December, 1854. Hayden was not in any default whatever in reference to the delay of the commissioner to act on his first application for patent A. On the 15th of June, 1857, Hayden made another application for letters patent for what the judge at the trial, at the request of the defendant, ruled to be the same improvements previously applied for on the 11th of December, 1854; and upon this second application, the letters patent (B) were granted, December 1st, 1857, being the same declared on in the first count of the declaration, and on which the verdict for the plaintiff was found. At the trial, the defendants' counsel requested the judge to rule that patent B is inoperative and void, because the improvements in the interior arrangement of the trunk, which are described and claimed in patent B, being also described and not claimed in patent A, by the legal operation of patent A, were surrendered to the public use. The judge refused so to rule, and this refusal raises the first question. There was also a question which is fully stated in the opinion of the court. Messrs. C. Cushing and C. Browne, for the plaintiff in error: The result of the comparison of the patents A and B is submitted to be that the subjectmatter of patent B is described, but not claimed, in patent A. This being so, we submit that, by operation of patent A, said subject-matter was surrendered to public use (saving the right of re-issue), and that the subsequent and independent patent B, taken for said subject-matter, is void; and for the following reasons: 1. The right so to take a subsequent, independent patent gives a patentee the right to extend his term of protection unlawfully. 2. The right to take a subsequent, independent patent, is incompatible with the statute rights of assignees. Suppose the original patent containing two features described and but one claimed, passes to an assignee. The assignee has a statute right to re-issue that patent and cover both features. Act of 1836, § 13; Woodworth v. Stone, 3 Story, 750; McBurney v. Goodyear, 11 Cush. 569. Now, if the assignor had also a statute right to secure the second one of those two features by a subsequent patent, there are two parties entitled to separate patents for the same thing. 3. The right so to take a subsequent, independent patent, is in derogation of the right of the public acquired by the grant of the first patent, to practise the invention as there described. 4. The right so to take a subsequent, independent patent, is excluded by the language of the acts of Congress giving to the commissioner the power to grant original patents. Act of 1836, § 6. He is not bound to describe any more than is necessary to make, construct and use the invention. He may take his patent for as little as he pleases, and may describe, model and draw no more than is necessary to make, construct and use that little. But of that which he does so describe and model and draw, he must particularly specify what he claims as new. The purpose is twofold: (1) That when the term has expired, and the invention has become public property, the public may have, at the Patent Office, the knowledge of the best way of practising the invention; and (2) that, during the term, the public may know just what the patentee claims and what they are prohibited from using. Parker v. Stiles, 5 McLean, 55; Brooks v. Jenkins, 3 McLean, 441; Evans v. Eaton, 3 Wash. 453; S. C. 7 Wheat. 434. When the patentee states what part of the thing described he does claim, it is saying, in effect, that he does not claim the remainder. He makes a voluntary communication to the public of certain things, and by declaring that he claims as his own only some of them, he surrenders to public use the remainder, except as he may be relieved by the law of re-issue. Battin v. Taggert, 2 Wall. Jr., 101, 17 How. 74, 15 L. ed. 37; Smith v. Ely, 5 McLean, 87; Odiorne v. A. N. Factory, 2 Mason, 31; Morris v. Huntington, 1 Paine, 349; Dixon v. Moyer, 4 Wash. 73; Langdon v. De Groot, 1 Paine, 207. 5. The right so to take a subsequent independent patent is implicitly denied by the provisions relating to re-issues. 6. The right so to take a subsequent independent patent, makes the law of re-issue nugatory. That law is expressly made for the purpose of making his patent operative to secure to him the whole of that which was really new with him in the thing modeled, drawn and described; and where a statute prescribes a peculiar remedy, that alone can be resorted to. 2 Saund. Pl. & Ev. 1012, and cases cited; Gregory v. Des Anges, 3 Bing (N. C.) 85; Albon v. Pyke, 4 M. & G. 421; Newton v. Holford, 6 Q. B. (N. S.) 926. Mr. B. Curtis for defendant in error. Mr. Justice Nelson delivered the opinion of the court: This is a writ of error to the circuit court of the United States for the district of Massachusetts, held by the district judge. The suit is brought upon a patent granted to Hayden, the plaintiff below, on the 1st of December, 1857, for an improvement in long trunks for cleaning cotton, which consists "in covering the bottom or partitions on the bottom, with woven screen which has the scores formed by the warp crossing the weft, or at the junction of the warp and weft filled with metal or some kind of cement so as to prevent the fibers of cotton or other materials being passed over the screen, from catching and hanging in said scores." On the trial the plaintiff produced and proved the patent and gave evidence tending to prove an infringement, and rested. The defendants, in the course of their defense, gave in evidence another patent to the plaintiff, dated 17th March, 1857, for a prior improvement in the long trunk, enlarging one end of the same; and in the specification, a description was given of the improvement patented the December following, and on which the present suit is brought; but in which elder patent the improvement was not claimed; and insisted that the description and the omission to claim in the earlier patent, operated as an abandonment or dedication of it to the public, and that for this reason the subsequent patent of 1st December was void. But the answer to this ground of defense is, that it appeared that Hayden, the patentee, had pending before the commissioner of patents an application for this same improvement at the time he described it in the specification of the 17th March, which was, doubtless, the reason for not claiming it in this patent. The description in no sense affected this application thus pending before the commissioner; and, while it remained before him, repelled any inference of abandonment or dedication from the omission to again claim it. *This original application before the [*319 commissioner for a patent, among other things, for an improvement in the screen of the long trunk, not having been acted upon by that officer, a new application was made by Hayden, separately, for this improvement, and which resulted in the patent of 1st December, 1857, on which the present suit is brought. We do not perceive any objection to this proceeding. It simplified the application, and disembarrassed it from its connection with other improvements claimed; and, doubtless, hastened the granting of the patent. The office, however, subsequently acted upon this original application and, on the 11th September, 1860, granted a patent to the plaintiff and, as is alleged, for the same improvement embraced in the patent of the 1st December, 1857, the one in question. And it is insisted that, for this reason, this prior patent for the same improvement is void. This is, obviously, a misapprehension. The last, not the first, is void. We may add, on looking at the patent of 11th September, 1860, it does not appear that it was granted for the same improvement. It is a patent for a combination of this improvement with other devices. As to the question of damages: it appeared that no sales had been made of the patent right by the plaintiff, or licenses for the use of it, so as to establish a patent or license fee as a criterion by which to ascertain the measure of damages; and the court below permitted evidence after objection, as to the uses and advantages of this improvement over the previous method of cleaning cotton; and an expert testified that "the results were: a more thorough cleaning of the cotton; the saving of all the good fibers; less damage of the staple, the freeing of the room from dust and machinery from dust, dirt and sand, the keeping of the machinery in better order at less cost, and dispensing with one grinder of the cards in consequence of the diminution of the dirt and sand; expelling the fine dust and dirt not before got out; less breakage of the yarns," etc. There was, also, evidence of the amount of cotton that had been cleaned at the defendants' mills by the plaintiff's improvement, within the period for which the damages were claimed. The court below, in its charge to the jury, stated the rule as prescribed by the statute, which is the actual damages that the plaintiff has sustained from the infringement, and among other things observed: "Then you will look at the value of the thing used, and ascertain that value by all the evidence as to its character, op eration and effect. You will take into view the value of that which the defendants have used, belonging to the plaintiff, to aid you in forming the judgment of the actual damage the plaintiff has sustained." States for the Northern District of CaliN ERROR to the Circuit Court of the United fornia. This action was brought in the United States district court for the northern district of Cali feiture of certain champagne wine. A verdict was rendered in favor of the claimant, on which judgment was entered. The judgment was affirmed by the circuit court, and is brought by writ of error to this court for revision. The case further appears in the opinion. Messrs. James Speed, Atty. Gen., and Delos Lake for plaintiff in error. Mr. Justice Nelson delivered the opinion of the court: This is a writ of error to the circuit court of the United States for the northern district of California. The libel of information was filed against One Hundred and Twenty-Five Cases of Champagne Wines seized for undervaluation, imported from France to the port of San Francisco, and entered at the customs, 15th of November, 1864. It is supposed by the counsel for the defend-fornia, to procure the condemnation and forants that the court, in the instructions quoted on preceding pages, gave a latitude to the jury in the estimate of damages beyond that of the use or value of the improvements embraced in the patent in question; that they might take into consideration the improvements on the patent of the 17th March, 1857, for widening one end of the trunk. But it is quite apparent that the court was speaking all the time with reference to the improvement in the patent in suit, and the only one in contestation. It is also urged that the value of the improvement was not a proper subject for the consideration of the jury in estimating the damages. This may be admitted. But looking at the term "value," in the connection in which it was used, it is quite clear that it had reference only to the utility and advantages or value of the use of the im320*] provement over the old mode of cleaning cotton; not the value of the patent itself. This question of damages, under the rule given in the statute, is always attended with difficulty and embarrassment both to the court and jury. There being no established patent or license fee in the case, in order to get at a fair measure of damages, or even an approximation to it, general evidence must necessarily be resorted to. And what evidence could be more appropriate and pertinent than that of the utility and advantage of the invention over the old modes or devices that had been used for working out similar results? With a knowledge of these benefits to the persons who have used the invention, and the extent of the use by the infringer, a jury will be in possession of material and controlling facts that may enable them, in the exercise of a sound judgment, to ascertain the damages, or, in other words, the loss to the patentee or owner, by the piracy, instead of the purchase of the use of the invention. It is proper to say, as was said in the court below, that the jury, in ascertaining the damages upon this evidence, is not to estimate them for the whole term of the patent, but only for the period of the infringement. A recovery does not vest the infringer with the right to continue the use, as the consequence of it may be an injunction restraining the defendant from the further use of it. The judgment of the court below affirmed. v. THE UNITED STATES, Plff. in err., ONE HUNDRED AND TWENTY-FIVE BASKETS OF CHAMPAGNE, J. Bollinger, Claimant. The 1st section of the act of March 3d, 1863, provides that "if any such owner, consignee, or agent of any goods, wares, or merchandise, shall knowingly make or attempt to make, entry thereof by means" "of any invoice which shall not contain a full statement of all the particulars hereinbefore required, or by means of any false or fraudulent document or paper, or any other false or fraudulent practice or appliance whatsoever, said goods, etc., or their value, shall be forfeited and disposed of as other forfeitures, for violation of the revenue laws." The goods in question were imported under the tariff act of June 30th, 1864, which provides as follows: "On wines of all kinds, valued at not over fifty cents per gallon, twenty cents per gallon, and twenty-five per cent ad valorem; valued at over fifty cents, and not over $1.00 per gallon, fifty cents per gallon and twenty-five per cent ad valorem; valued at over $1.00 per gallon, $1,00 per gallon, and twenty-five per cent ad valorem, provided that no champagne or sparkling wines in bottles shall pay a less rate of duty than $6.00 per dozen bottles, each bottle containing not more than one quart, and more than one pint, or $6.00 for two dozen bottles, each bottle containing not more than one pint." It will be perceived that the duty imposed is both specific and ad valorem; and, according to the proviso, as it respects champagne or sparkling wines, in bottles, of a given quantity in each, not less than $6.00 per dozen, or $6.00 per two dozen, as may be the quantity, shall be imposed as the duty. The effect of the proviso is that, if the specific duty upon the gallon, and the ad valorem duty on the appraised value, in the aggregate, as it respects the article of champagne or sparkling wines, as the case may be, (See S. C. "Bollinger's Champagne," 3 Wall. 560- in bottles, exceed the sum of $6.00 per dozen, 564.) False invoice of imports. Where the invoice of imported goods is false, the penalty for under valuation attaches, although the value of the duty required by law has been paid. [No. 322.] or two dozen, the rate thus estimated will be the duty imposed; but if the rate falls under the sum of $6.00, then, by virtue of the proviso, not less than that sum shall be exacted. It will be observed that, in order to carry into effect this act, an appraisal at the customs, in the case of the specific duty on the gallon, is as Argued Jan. 12, 1866. Decided Jan. 29, 1866. essential as the appraisal in the case of an ad valorem duty. For the specific duty is appor- | importers or their agent, is as applicable to the tioned according to the value of the article; present case as to any other importation and wines valued at not over fifty cents per gallon, entry. pay twenty cents per gallon; valued at over fifty, and not over $1.00 per gallon, fifty cents specific duty, and so on. Now, evidence was given on the trial, tending to prove that the wines in question were knowingly invoiced by their manufacturers at prices below their market value at the time and place where the same was produced or manufactured; and further, that he knowingly entered them at the customs on an invoice that did not state the actual value. Also, that the actual market value was forty-eight francs per case of twelve bottles, each bottle containing one quart; and thereupon the district court charged the jury that under the act of June 30th, 1864, the undervaluation did not affect the amount or rate of duties chargeable on the wines; that if they had been invoiced and entered at their true and actual market value, they would still have been subject only to a specific duty of $6.00 per dozen bottles of one quart each, and therefore the wines were not forfeited by reason of their having been knowingly entered on a false invoice. In other words, as the specific and ad valorem duty in the aggregate, of property appraised and estimated as appraised on the value, was under $6.00 per dozen, no higher duties would have been charged by the government than that sum, and which was paid on the entry to the collectors. The principle involved in the ruling is, that no matter how much fraud and imposition may have been practised upon the officers of the customs or, however false may have been the invoice, or other papers of the shipment, and oath of the importer or agent upon which the entry of the goods is made, if it turns out in the result, that the value of duty required by law has been paid, no penalty attaches. We think that the court below erred and that the judgment should be reversed. EVANS ROGERS, Piff. in Err., บ. THE CITY OF BURLINGTON. (See S. C. 8 Wall. 654-672.) Writ of error on decision of demurrer, rèviewable-practice on-legislative power over corporations to authorize municipal corporations to aid railroads-statute construed to grant such power method of disposing of bonds given in aid of railroad estoppel as to bona fide holder of bonds. 1. Where a demurrer to a declaration in the circuit court is improperly sustained or overruled, and judgment is rendered for the wrong party, the without any formal bill of exceptions. case may be re-examined here upon a writ of error 2. Principal corporations are created by the legislature, and they derive all their power from the source of their creation. 3. Their powers, as originally conferred, may be enlarged or diminished, and are at all times subject to modifications or repeal. such they have, by common consent, become essen4. Railroads are but improved highways, and as tial to the growth and prosperity of communities. 5. State legislatures, unless prohibited by some thorize municipal corporations to aid a railroad constitutional provision, possess the power to aucompany in constructing such an improvement for the general benefit of the citizens of the munici pality, 6. They may be so authorized because the enterprise, if connected with the municipality, tends to improve the means of travel and transportation, and, consequently, to promote one of the primary objects for which the municipality was created. 7. Unrestricted power "to borrow money for any public purpose," gives undoubted authority to such a corporation to grant material aid to such a railfor that purpose they may purchase stock, and pay road, as a way for travel and transportation, and for the same, or they may issue their bonds as a means of borrowing money to accomplish the same object. 8. Bonds issued under that authority may be sold by the corporation to raise the money, or be deliv ered to the railroad company for the same purpose, and in either mode the transaction as between the municipal corporation and purchasers of the bonds, is a contract of borrowing money within the terms of the charter. 564*] *We cannot agree to this construction of the act of 1863, which prescribes this penalty, nor of the act of 1864 imposing the duty. The penalty of forfeiture is annexed to the act of making an entry knowingly by means of false invoices, or false certificate of the consul, or of any other invoice which contains an undervaluation, or by means of any other false or fraudulent documents or papers. No doubt one of the objects of the provision is to secure to the government the duties imposed by the statute, but another is, to protect the officers against im- Agreement to amend record, filed Dec. 15, 1865. position and fraud by the importer or agent, and to inculcate and enforce good faith and 9. Power to issue the bonds being clearly shown, the defendants, as against bona fide holders of the securities, are estopped to deny that the power was properly executed. [No. 96.] Decided Jan. 29, 1866. honest dealing with those officers while engaged States for the District of Iowa. IN ERROR to the Circuit Court of the United in the execution of their duties. This is a suit brought on interest coupons upon certain bonds issued by the Mayor and Recorder of the City of Burlington, Iowa, under ordinance No. 44, of said City. To plaintiff's petition defendant demurred. Besides, under this provision of the act of 1864, the result which is assumed in the instruction to the jury, as the only material fact in disposing of the case, is one to be ascertained by the officers of the customs, and this, after the entry of the goods upon the invoice duly verified, and an appraisal and estimate of the amount of the duties. This is the way prescribed by the law to determine whether or not the duties in the aggregate fall under the rate of $6.00 per dozen bottles. The reason, therefore, for integrity in all the documents and papers of the shipment and fair dealing on the part of the corporations to aid railroads-see note, 14 L. R. A. The demurrer was sustained by the circuit court, and the plaintiff electing to abide by his petition, judgment was rendered for defendant. *Headnotes by Justice Clifford, who delivered the opinion. NOTE. Legislative power to authorize municipal 479. The ordinance under which the bonds were issued is as follows: "Number 44. "An ordinance to authorize a loan of city bonds to the Burlington & Missouri River Railroad Company, etc. "Whereas, at a meeting of the city council of the city of Burlington, held on the 19th day of May, A. D. 1856, a resolution was adopted authorizing the mayor of said city to call an election, and to submit the question whether or not the city issue and lend to the Burlington & Missouri River Railroad Company, $75,000 in the bonds of said city, said bonds made payable in twenty years from date of issue, and with an interest of ten per cent per annum, payable semi-annually, and said loan to be secured by the first mortgage bond of said company on the second section of the road of said company; and whereas, said election was duty and legally held on the 2d day of June, A. D. 1856, and said question was legally decided in favor of the same, whereby said loan is duly authorized to be made; therefore, "Be it ordained by the city council of the city of Burlington: "1st. That the bonds of the city to the extent of $75,000, and in such amounts as the mayor may direct, bearing interest and payable as aforesaid, and duly signed, sealed, and authenticated, and with coupons for interest, be issued by said city. "2d. That the mayor execute, with the said company, a contract of loan thereof, taking therefor the obligation of said company, and as collateral security therefor the mortgages aforesaid, and deliver said bonds to said company, and receive said mortgages. "J. L. Corse, Mayor. "Attest: J. D. Sales, Recorder. "Passed June 23d, 1856." The clause of the city charter under which power to issue the bonds is claimed, is as follows: "Sec. 27. Whenever, in the opinion of the city council, it is expedient to borrow money for any public purpose, the question shall be submitted to the citizens of Burlington. The nature and object of the loan shall be stated, and a day fixed for the electors of the said City to express their wishes; the like notice shall be given as in case of an election; the loan shall not be made unless two thirds of all the votes polled at such election shall be given in the affirmative." Vide Laws of Iowa, session of May 5, 1845, p. 73, for charter. The security for the loan required by the ordinance was never given. A copy of the above ordinance and § 27 of the charter is printed on the back of the bonds. This is conceded by counsel for plaintiff in er ror: Mr. F. A. Dick, for plaintiff in error: The city of Burlington, under its charter, had full capacity to borrow money to subscribe to the stock of the Burlington & Missouri River Railroad Company, and issue bonds in payment of such subscription. The power to borrow money granted in the city charter, authorized the issuance of the bonds in question to the Burlington & Missouri River Railroad Company. Gelpcke v. Dubuque, 1 Wall. 175, 17 L. ed. 520; Meyer v. City of Muscatine, 1 Wall. 385, 17 L. ed. 564. There is no provision in the Constitution of the state of Iowa rendering invalid or limiting the authority contained in the acts of the legislature, to issue bonds for railroad subscriptions. Gelpcke v. Dubuque, 1 Wall. 175, 17 L. ed. 520; Dubuque Co. v. Dubuque & Pac. R. 4 Greene, 1; State v. Bissell, 4 Greene, 328; Clapp v. Co. of Cedar, 5 Ia. 15; Ring v. Co. of Johnson, 6 Ia. 265; McMillen v. Boyles, 6 Ia. 304; McMillen v. Co. Judge of Lee Co. 6 Ia. 391; Games v. Robb, 8 Ia. 193; Stokes v. Co. of Scot, 10 la. 166. The bonds in question are regular, valid, and binding upon the defendant. Comrs. of Knox Co. v. Aspinwall, 21 How. 539, 16 L. ed. 208; White v. Vt. & Mass. R. 21 How. 575, 16 L. ed. 221; Zabriske v. Col. & C. R. Co. 23 How. 391, 398, 16 L. ed. 497; Bissell v. Jeffersonville, 24 How. 287, 298, 300, 16 L. ed. 664, 671, 672; Moran v. Comrs. of Miami Co. 2 Black, 722, 730-732, 17 L. ed. 342, 346, 347; Gelpcke v. Dubuque, 1 Wall. 175, 17 L. ed. 520; Same v. Same, No. 81, 1 Wall. 220, 17 L. ed. 530; Same v. Same, No. 79, 1 Wall. 221, 17 L. ed. 510; Mercer Co. v. Hackett, 1 Wall. 83, 17 L. ed. 548; Seybert v. Pittsburgh, 1 Wall. 272, 17 L. ed. 553; Van Hostrup v. Madison, 1 Wall. 291, 17 L. ed. 538; Meyer v. City of Muscatine, 1 Wall. 384, 16 L. ed. 564. Messrs. Browning, Ewing, & Phelps, for defendant in error: 1. A corporation can bind itself only in pursuance of the powers given by the act of incorporation. Dartmouth College v. Woodward, 4 Wheat. 636; Bank v. Earle, 13 Pet. 584; Runyan v. Costar, 14 Pet. 129; Beaty v. Knowler, 4 Pet. 168; Perrine v. The C. & D. Can. Co. 9 How. 184; N. Y. F. Ins. Co. v. Ely, 2 Cow. 709. 2. All persons dealing with a corporation are bound to notice the extent of its powers. They are bound, at their peril, to know whether the corporation has competent authority to make the contract. Knox Co. v. Aspinwall, 21 How. 543, 16 L. ed. 210; British Bank v. Turquand, 6 Ell. & B. 327; Meyer v. Muscatine, 1 Wall. 393, 17 L. ed. 564; Broughton v. Salford Water Works, 3 B. & Ald. 1; Welland Can. Co. v. Hathaway, 8 Wend. 485. 3. Every corporation is limited as to its powers by the objects to be accomplished by its charter. Ang. & Ames, Corp. §§ 111, 257, 258; 0. L. I. & T. Co. v. Merchants' Ins. & Trust Co. 11 Humph. 19; Broughton v. Salford Water Works, 4. These principles are applicable to public, private, municipal, and commercial corporations. Newling v. Francis, 3 D. & E. 198; King v. Pasmore, 3 D. & E. 242. 5. The powers of a corporation can never be extended, by implication, beyond the objects of its creation. Its charter must be limited, in its construction to the purposes of its creation. 70 U. S. |