substantially the same as that of the original patent, with the following exceptions: For the term "rollers" in the original specification, the words "supports or rollers "are substituted in the re-issued specification, and the word "mechanism" in the first claim of the re-issue. In the re-issued specification the requirement that the former" should be set eccentrically on a shaft, and the statement that the former projects further from the axis on one side than the other, are omitted. The claims of the re-issued patent are as follows: 1. In a machine for making counters or stiffeners for boots and shoes, a turning or revolving former in combination with mechanism for holding and shaping the blank over it. 2. The revolving or turning counter former A, in combination with a supporting roll or rolls for rolling or for rolling and flanging blank stock into heel stiffeners, substantially as shown and described. projects further from its axis on one side than on the other, so as to conform nearly to the general form of the curves of the inside of the shaped counter. This gives a rolling action in addition to the squeezing over the whole body of the counter.' The specification of the re-issued patent omits both of these statements, and thus allows a "former" to be made, if desired, with a circular cross section, and to be set concentrically on its shaft. It is, therefore, clear that it covers a contrivance essentially different from that described in the original specification and claim. The first claim of Moffitt's re-issued patent differs materially from the specification and first claim of the original patent in another particular. The original specification thus describes the means by which the blank stock is pressed against the former"; "Beneath the former I place a roller, C, having a profile, as shown, the converse of and conforming to that of the former, the shaft of the roller having its bearings in the main frame, D." It is also stated that 3. The process described of forming the heel" Instead of a single roll, a pair of auxiliary rolls seat of a counter by means of a former having a motion about a center, and which gives to the heel seat a drawing or rubbing action against a flange or bearing surface in addition to the rolling action. The infringement charged against the defendants was in the use by them of the device described in the re-issued letters patent of Louis Coté, dated June 2, 1874. The specification of this patent declares: "The invention or machine consists of a rotary head of a spherical, spheroidal or sphero-cylindrical shape, fixed upon and concentrically with a rotary shaft, in combination with a stationary mold correspondingly or approximately so concaved, whereby, by the revolution of the said rotary head within the mold, a piece of leather of suitable form introduced between | them may be drawn into and through the concavity of the mold, and receive a curved form lengthwise and withdrawn, and thereby be adapted for use as a stiffening for a boot or shoe." A clear idea of the contrivance covered by the Coté patent may be derived from the drawings which illustrated the specification. On final hearing of the cause the circuit court dismissed the bill and the complainant appealed. Messrs. George Harding, William A. Macleod and J. E. Maynadier, for appellant. Messrs. Chauncey Smith and Thomas L. Wakefield, for appellees. Mr. Justice Woods delivered the opinion of the court: The evidence leaves no doubt in our minds that the first claim of Moffitt's re-issued patent is broader than any claim of his original patent. The original patent covered an elongated heel shaped former, set eccentrically upon its shaft. This was an essential part of the invention described in the original patent. The specification declares: "I use a former,' A, of a shape adapted to give the desired shape to the counter, and set eccentrically on the shaft B." The"former" shown by the drawings is elongated and heel shaped in cross section. The specification further declares: "The 'former,' as will be seen, may be used, as in Fig. 4, one on each side of the single one." In the first claim of the re-issued patent the device of one or three rolls is expanded to cover "any mechanism for holding and shaping the blank over" the "former." It, therefore, appears that the specification and first claim of the original patent was intended to cover an elongated heel shaped former, eccentrically set upon its shaft, against which the material of which the counter was to be made was pressed by a revolving roller or rollers, and that the first claim of the re-issued patent was expanded so that it might cover a "former" circular in cross section, concentrically set, and revolving in the semi-circular groove of a stationary mold, by which the material was pressed against the former. The difference between the device covered by the specification and first claim of the original patent, and the device which might be embraced by the specification and first claim of the re-issued patent, is essential and palpable. If the evidence proves any infringement, it is of the first claim only of complainant's re-issued letters patent, and that such infringement is by the use of the machine covered by the Coté patent. The purpose of the complainant to cover by his re-issued patent the invention described in the Coté patent is clear and is not denied. It is evident that the Coté machine does not infringe the original patent of Moffit. The former described in the original specification of Moffitt being elongated in cross section and eccentrically set upon its shaft, could not have either a rotating or reciprocating movement in the semicircular grooved mold of the Coté patent, and by no stretch of construction could the stationary grooved mold of the latter patent be considered the equivalent of the cylindrical revolving rollers of Moffitt's original patent. The specification and first claim of the re-issued patent is a plain attempt to include a device which was not and could not be fairly covered by the original patent. That claim is, therefore, for that reason void. Gill v. Wells, 22 Wall., 1 [89 U. S., XXII., 699]; The Wood Paper Patent, 23 Wall., 566 [90 U.S., XXIII.,31]; Powder Co. v. Powder Works, 98 U. S., 126 [XXV., 77]; Ball v. Langles, 102 U. S., 128 XXVI., 104]; Miller v. Brass Co., 104 Ú. S., 350 [XXVI., 783]; James v. Campbell, 104 U. S., 356 [XXVI., 786]; Heald v. Rice, 104 U. S., 737 [XXVI., 910]; Bantz v. Frantz, 105 U. S., 160 [XXVI., 1013]; Johnson v. R. R. Co., 105 U. S., 539 [XXVI., 1162]. And the evidence shows no infringement of any other claim of the re-issued patent. The decree of the Circuit Court dismissing the bill was, therefore, right and must be affirmed. True copy. Test: James H. McKenney, Clerk, Sup. Court, U.S. Cited-107 U. S., 646. Ex Parte: IN THE MATTER OF THE BALTIMORE OHIO RAILROAD COMPANY, Petitioner. (See S. C., 16 Otto, 5-7.) Jurisdiction as to amount. When, in admiralty, distinct causes of action in favor of distinct parties, growing out of the same transaction, are united in one suit, distinct decrees in favor of or against distinct parties cannot be joined to give this court jurisdiction on appeal. [No. 4, Orig.] Argued Oct. 16, 17, 1882. Decided Oct. 30, 1882. PETITION for mandamus. The history and facts of the case sufficiently appear in the opinion of the court. Messrs. Eben J. D. Cross, John H. B. Latrobe and J. K. Cowan, for petitioner. Messrs. John H.Thomas and G. L. Thomas, contra. Mr. Chief Justice Waite delivered the opinion of the court: A collision occurred in the harbor of Baltimore, Maryland, between the steamer Knickerbocker, owned by the Baltimore & Ohio Railroad Company, and the barge J. J. Munger, owned by Jeannette Maxon. The barge was loaded with grain belonging to the partnership firm of J. & C. Moore & Company. Both the barge and her cargo were injured in the collision, and the owners of the barge united with the owners of the cargo in a libel against the steamer to recover the damages they had respectively sustained. The suit thus begun terminated in a decree in the Circuit Court for the District of Maryland in favor of the owner of the barge for $1,471.20, and in favor of the owners of the cargo for $3,709.13. The Railroad Company, as the claimant of the steamer, prayed an appeal to this court, which was refused by the circuit court on the ground that the value of the matter in dispute between the steamer and the respective libelants was less than five thousand dollars. The Company now asks a mandamus from this court requiring the circuit court to allow an appeal. NOTE.-Jurisdiction of U. S. Supreme Court depends on amount; interest cannot be added to give jurisdiction; how value of thing demanded may be shown; what cases reviewable without regard to sum in controversy. See note to Gordon v. Ogden, 28 U. S. (3 Pet.), 33. It is impossible to distinguish this case in principle from Oliver v. Alexander, 6 Pet., 143; Stratton v. Jarvis, 8 Pet., 4; Spear v. Place, 11 How., 522, and Rich v. Lambert, 12 How., 347, under which, for half a century, it has been held that when in admiralty distinct causes of action in favor of distinct parties, growing out of the same transaction, are united in one suit, according to the practice of the courts of that jurisdiction, distinct decrees in favor of or against distinct parties cannot be joined to give Bigelow, 5 Wall., 208 [72 Û. S., XVIII., 595]; this court jurisdiction on appeal. In Searer v. Paving Co. v. Mulford, 100 U. S., 147 [XXV., 591], and Russell v. Stansell, 105 U. S., 203 [XXVI., 989], this rule was applied to analogous cases in equity. The cases of Shields v. Thomas, 17 How.4 [58 U. S., XV.,94]; Market Co. v. Hoffman, 101 U. S., 112 [XXV., 782], and The Connemara, 103 U. S.,754 [XXVI., 322], relied on in support of the present application, stand on an entirely different principle. There the controversies were about matters in which the several claimants were interested collectively under a common title. They each had an undivided interest in the claim, and it was perfectly immaterial to their adversaries how the recovery was shared among them. If a dispute arose about the division, it would be between the claimants themselves and not with those against whom the claim was made. The distinction between the two classes of cases was clearly stated by Ch. J. Taney in Shields v. Thomas, and that case was held to be within the latter class. It may not always be easy to determine the class to which a particular case belongs, but the rule recognizing the existence of the two classes has long been established. Neither is the case of The Mamie, 105 U. S., 773 [XXVI., 937], an authority in support of this application. That was a suit by the owners of the pleasure yacht Mamie, to obtain the benefit of the Act of Congress limiting the liability of vessel owners. Rev. Stat., secs. 4283-4289. The aggregate of the claims against the yacht was $65,000, but no single claim exceeded $5,000. The theory of the proceeding authorized by this Act of Congress is, that the owner brings into court the fund which he says belongs to all who have claims against him or his vessel growing out of the loss, and surrenders it to them collectively in satisfaction of their demands. If he succeeds, all the claimants have a common interest in the fund thus created, and are entitled to have it divided between them in proportion to the amount of their respective claims. With this division the owner of the vessel has nothing to do. He surrenders the fund and calls on all who have claims against him growing out of the loss to come in and divide it among themselves. The controversy in the suit is not in respect to his liability to the different parties in interest, but as to his right to surrender the fund and be discharged of all further liability. His dispute is not with any one claimant separately, but with all collectively. He insists that his liability in the aggregate does not exceed the value of his interest in the vessel; that they must pay all their several demands amount to. He does not seek to have it determined how much he owes each one of them, but to what extent he is liable to them collectively. The difference between what he James H. McKenney, Clerk, Sup. Court, U. S. Cited–106 U. S., 155, 190, 270, 577, 582; 108 U. S., 548. AMERICAN COTTON TIE COMPANY (Limited), JAMES J. MCCOMB, Admr. of MARY F. MCCOMB, Deceased, ET AL., Appts., v. SIMEON W. SIMMONS ET AL. admits his liability to be, and the aggregate | March 2, 1872; re-issued letters patent No. amount of the demands against him, is the 5,333, granted to James J. McComb, as assignee amount in dispute. In the case of The Mamie of George Brodie, March 25, 1873, for an "imthis difference was more than $5,000 and we, provement in cotton bale ties" (the original consequently, took jurisdiction. patent having been granted to Brodie, as inIt follows that the Circuit Court properly re-ventor, March 22, 1859, and re-issued to him fused to allow the appeal, and the petition for a April 27, 1869, and extended for seven years mandamus is, therefore, denied. from March 22, 1873); and No. 31,252, granted True copy. Test: to J. J. McComb, January 29, 1861, for an "improvement in iron ties for cotton bales," and extended for seven years from January 29, 1875. They are severally known as the Cook, the Brodie, and the McComb patents. The Cook patent expired March 2, 1879; the Brodie patent, March 22, 1880; and the McComb patent, January 29, 1882. The plaintiffs are the American Cotton Tie Company, Limited, a British Corporation; James J. McComb, administrator of Mary F. McComb, deceased; and the said James J. McComb, Charles G. Johnsen and Emerson Foote, each in his own behalf and as a copartner in a firm called the American Cotton Tie Company. The defendants are Simeon W. Simmons and two other persons, doing business as the Providence Cotton Tie Company. The Cook patent was assigned to McComb March 21, 1872. The Brodie re-issue of 1869, with all rights to re-issue, renewal, and extension, was assigned to McComb March 19, 1873. On the 22d of June, 1874, McComb assigned to himself, Johnsen and Foote, who composed the firm called the American Cotton Tie Company, the Cook patent as extended, and the Brodie patent as re-issued in 1869 and as extended. Mary F. McComb became, in 1861, the owner of the McComb patent. She died in 1874 intestate, and McComb was appointed her administrator. On the first of March, 1876, the firm called the American Cotton Tie Company assigned to the Corporation called the American Cotton Tie Company, Limited, the Cook patent as extended, and the Brodie patent as extended and as re-issued in 1873. On the same day McComb, individually and as administrator, assigned to the said corporation the McComb patent and its extension. (See S. C., 16 Otto, 89-95.) Patent for cotton bale ties. Where a corporation, owner of three patents for making iron ties for cotton bales, consisting of a buckle and a band, sold such ties for use with the words indorsed, "Licensed to use once only," stamped into the body of the metal, and after use once, the ties are sold for old iron; held, that defendant who bought them as scrap iron, and straightened and welded and used them as ties for [No. 47.] cotton bales, infringed the patents. Submitted Oct. 24, 1882. Decided Nov. 6, 1882. APPEAL from the Circuit Court of the United The plaintiffs were the owners of patents for improvements in metallic cotton bale ties, each tie consisting of a buckle and a band. They granted no licenses to make the ties, but themselves made them and supplied the market. They stamped in the metal of the buckle the words, "Licensed to use once only." The defendants bought as scrap iron the buckles and bands at the cotton mills, after the bands had been severed to release the bale, and rolled and straightened the pieces of the bands, and riveted together their ends, and cut them into proper lengths for ties, and sold them, with the buckles, to be used as ties, nothing being done to the buckles. It was not decided that they were liable as infringers merely because they had sold the buckle considered apart from the band or from the entire structure as a tie. Mr. Samuel A. Duncan, for appellants. lees. Mr. Justice Blatchford delivered the opinion of the court: This is an appeal by the plaintiffs in a suit in equity from a decree dismissing the bill of complaint. The suit was brought for the infringement of three several letters patent: No.19,490, granted to Frederic Cook, March 2, 1858, for an "improvement in metallic ties for cotton bales," and extended for seven years from The bill is in the usual form, and was filed in November, 1876. It alleges that the defendants have made, used and sold to others to be used, the patented inventions and, also, metallic ties for cotton bales containing the patented inventions. No defense affecting the validity of the patents sued on is set up in the answer. The only defense pleaded or made is as to infringement. The Corporation plaintiff, since it acquired title to the three patents, in March, 1876, has carried on the business of making cotton bale ties under the patents. The form of tie it has principally made is the form of the McComb patent, which is called the "arrow tie," from the shape of the five sided hole, cut in the plate of the buckle. It has not granted any licenses to make the ties, but has itself supplied the demand for them. The tie consists of a buckle and a band, all made of metal. The band goes around the bale and the two ends of it are confined by means of the buckle. On each of the buckles which the Corporation has made and put upon the market it has placed the words "Licensed to use once only," stamped into the body of the metal. This practice was also observed by its predecessor, the copartnership firm. The tie, consisting of buckle and band, | ing in the side of the link. The band is thus is purchased by the person who desires to use it slipped sidewise through the opening into the to confine the cotton in the bale, and is placed slot instead of thrusting it through endwise." around the bale on the plantation or at the cot- The 3d, 4th and 5th claims of the Brodie reton press. It remains on the bale until the bale issue are in these words: "3. The combinareaches the cotton-mill, and the band of the tie, tion of an open slot for introducing the band which is of hoop iron, is then cut. The buckle sidewise, with a link having a single rectangu and the band, thus free, become scrap iron, and lar opening for holding both ends of a metallic are sold as such. The hoop is too short for the band and the band. 4. An open slotted link, length required for bailing, if it were to be when combined with metallic bands, the ends mended by lapping and riveting the two ends of which are turned under the link and held in at the place of severance, and to bale with it re- position by the expansion of the bale. 5. The quires that there should be a free end which method of baling cotton with metallic bands, may be confined at the buckle in the process of and taking up the slack of the band by bendbaling. The defendants buy the buckles and ing the same at any desired point into the severed hoops at the cotton-mills, as scrap iron, form of a loop, and passing such loop sidewise the hoops, when bought, being in bundles, through an open slit into the slot intended to bent, and being pieces of unequal lengths, some receive it and over the bar of the clasp intended cut at one distance from the buckle and some to hold it." at another. The defendants straighten the old pieces of hoop and roll them by cold rolling, and punch the ends with holes and rivet the pieces together, and form a band by cutting it to the proper length, which band, with the buckle accompanying it, makes a tie ready for use. In using the tie, one end of the band is attached to one end of the buckle by a loop in that end of the band, and then the band is passed around the bale, and its free end is slipped, by a loop made in it, through a slit in the buckle, around the other end of the buckle, while the bale is under pressure. When the pressure is removed, the expansive force of the compressed cotton holds the looped ends of the bands in place in the buckle, the looped ends being confined between the bale and the body of the band. The use of the arrow tie has been very extensive. The defendants sell to others to be used the ties which they so prepare, and do not themselves bale cotton with them. Baled cotton is sold in the United States without tare; that is, the iron of the buckle and the hoop is weighed with the cotton and the bagging, and the whole is sold by weight at the price of the cotton per pound. The scrap iron consisting of the buckles and cut hoops is sold at 14 cents per pound, while the Corporation sells its ties at 6 cents per pound. The specification of the Cook patent describes a buckle with a slot cut through one of its end bars, so that the end of the band may be slipped through sidewise instead of being pushed through endwise. The 3d claim is to The herein described slot,' cut through one bar of clasp, which enables the end of the tie or hoop to be slipped sidewise underneath the bar in clasp, so as to effect the fastening with greater rapidity than by passing the end of the tie through end wise." The specification of the McComb patent states that the nature of his invention "Consists in the use of a peculiarly shaped buckle as a fastening or tie for the ends of the iron hoops." It says that the "buckle is a piece of wrought iron or other metallic substance, about the eighth of an inch thick, an inch and three quarters wide, and two inches long (the size being modified to suit the width of the hoop used), with an oblong hole or aperture cut or punched through the center;" that the five sides of the plate of the buckle are equal and parallel; and that the two largest of the five sides of the oblong hole are of equal length, and are equal in length to the width of the hoop. The drawings show the two sides forming the arrow part as of equal length. The slit or slot is cut through one of the sides of the plate opposite one of the two longest sides of the central hole, so that one of the loops of the hoop stretches across and covers the slit. The claim of the patent is this: "Forming a link or tie with an oblong aperture, one end of which is arrow shaped, or rather presents two sides of an equilateral triangle, the design of this arrow shaped end being not only to force the loop or bend of the hoop over the slot, which it does with unerring precision when the bale expands after being released from the press, but, also, to secure an equal bearing upon the separated parts of the slotted side of the tie." A buckle without a band will not confine a bale of cotton. Although the defendants use a second time buckles originally made by those owning the patents and put by them on the market, they do not use a second time the original bands in the condition in which those bands were originally put forth with such buckles. They use bands made by piecing together several pieces of the old bands. The The specification of the Brodie re-issue states band in a condition fit for use with the buckle that his invention "Relates to the combination is an element in the 3d claim of the Brodie rewith open slot ties of metallic bands having issue. That claim is for a combination of the their ends free, and held in position by the ex- open slot arranged to allow of the sidewise inpansion of the bale." Some of the drawings troduction of the band, the link or buckle with show an open slotted link or buckle in connec- the single rectangular opening arranged so as to tion with a band, and the specification states hold both ends of the band, and the band. The that the ends of the band are "Turned under old buckle which the defendants sell has the the link and held in position by the pressure ex- slot of Cook, and the slot and rectangular openerted by the expansion of the bale.' It adds: ing of Brodie, and the slot and arrow shaped "In the latter mode of use, the slack may be opening of McComb. Whatever right the dereadily taken up by forming the loop in the iron fendants could acquire to the use of the old at the moment of making the fastening, and buckle, they acquired no right to combine it passing the end thus looped through the open-with a substantially new band, to make a cotton bale tie. They so combined it when they combined it with a band made of the pieces of the old band in the way described. What the defendants did in piecing together the pieces of the old band was not a repair of the band or the tie, in any proper sense. The band was voluntarily severed by the consumer at the cottonmill, because the tie had performed its function of confining the bale of cotton in its transit from the plantation or the press to the mill. Its capacity for use as a tie was voluntarily destroyed. As it left the bale it could not be used again as a tie. As a tie the defendants reconstructed it, although they used the old buckle without repairing that. The case is not like putting new cutters into a planing-machine, as in Wilson v. Simpson, 9 How., 109, in place of cutters worn out by use. The principle of that case was, that temporary parts wearing out in a machine might be replaced to preserve the machine, in accordance with the intention of the vendor, without amounting to a reconstruction of the machine. The defendants contend that they do not combine the band with the buckle, and do not infringe the 3d claim of the Cook patent, or the 3d, 4th and 5th claims of the Brodie re-issue, or the claim of the McComb patent, because they do not bale cotton with the tie. But they participate in combining the open slot, the buckle and the band, the whole being so ar ranged that the ends of the band can be turned under the buckle and held in position by the expansion of the bale, and that the slack of the band can be taken up by bending the band into the form of a loop, and passing the loop sidewise through the open slit into the hole and over the holding bar of the plate. They sell the tie having the capacity of use in the manner described, and intended to be so used. Only the bale of cotton and the press are needed to produce the result set forth in the specifications of the patents, and without the bale of cotton and the press the tie would not be made or sold. The slot through the end bar of the buckle in the Cook patent is of no practical use apart from the band and the bale of cotton, and the same thing is true of the link of the McComb patent with its arrow shaped aperture; and, although a person who merely makes and sells the buckle or link in each case may be liable for infringing those patents, he is so liable only as he is regarded as doing what he does with the purpose of having the buckle or link combined with a band and used to bale cotton. Because the defendants prepare and sell the arrow tie, composed of the buckle or link and the band, intending to have it used to bale cotton and to produce the results set forth in the Cook and the McComb patents, they infringe those patents. Saze v. Hammond, 1 Holmes, 456; Bowker v. Doue, 3 Bann, & Arden, 518. We do not decide that they are liable as infringers of either of the three patents merely because they have sold the buckle considered, apart from the band or from the entire structure as a tie. We are, therefore, of opinion that the defendants have infringed the 3d claim of the Cook patent, the 3d, 4th and 5th claims of the Brodie re-issue, and the claim of the McComb patent. The decree of the Circuit Court is reversed, with costs, with directions to enter a decree for the plaintiffs, in respect to those claims, for an acSee 16 OTTO. U. S., Book 27. v. NEW YORK CENTRAL AND HUDSON (See S. C., 16 Otto, 109-118.) Scrip dividend-tax thereon. The certificates of the New York Central R. R., Co., dated December 19, 1868 (form given), constituted a scrip dividend, which justified the assessment of an internal revenue tax and constituted a complete prima facie defense to an action to recover back the same; nevertheless, it was competent for the Company to show in such action what amount of the earnings of the Company accruing from September 1, 1862, to December 19, 1868, was represented by, and included in, the certificates; and this amount alone being subject to the tax, the plaintiff was entitled to recover all which in excess thereof had been exacted and paid. [No. 27.] Argued Oct. 20, 1882. IN ERROR to the Circuit Court of the United Decided Nov. 6, 1882. States for the Northern District of New York. This action was brought on May 23, 1873, in the Supreme Court of the State of New York, by the defendant in error, to recover certain assessments amounting to $550,173.36, alleged to have been illegally exacted under the Act of July 1, 1862, by the defendant as Collector of Internal Revenue. On petition of the defendant the cause was removed into the court below. The trial resulted in a verdict in favor of the plaintiff for the full amount claimed, with interest and costs, by direction of the court. The judgment entered on that verdict was reversed on error by this court, and the cause remanded with directions to issue a new venire. Bailey v. R.R. Co., 89 U. S., 604, XXII., 840. The second trial resulted in a verdict and judgment in favor of the plaintiff for $499,432.68 with costs, amounting in all to $518,940.99; whereupon the defendant sued out this writ of error. A further statement of the case appears in the opinion of the court. Messrs. Samuel F. Phillips, Solicitor-Gen., and Richard Crowley, for plaintiff in error. Messrs. Joseph H. Choate and Sidney T. Fairchild, for defendant in error. Mr. Justice Matthews delivered the opinion of the court: On December 19, 1868, the New York Central Railroad Company, afterwards merged by consolidation into a new corporation, the defendant in error, adopted a preamble, resolutions and certificate, of which the following is a copy: Whereas, this Company has hitherto expended of its earnings for the purpose of constructing and equipping its road, and in the purchase of real estate and other properties, 6 81 |