Kelsey v. Forsyth. JAMES KELSEY and THOMAS P. HOTCHKISS, Plaintiffs in Error, v. ROBERT FORSYTH. 21 H. 85. JURISDICTION OF SUPREME COURT-AGREEMENT. 1. Parties to a suit in the circuit court cannot, by their own agreements, confer a jurisdiction on this court. 2. Therefore, where a jury had been waived in the court below in a common-law action, and all the facts submitted to the court, with leave to either party to except and to treat the evidence introduced as a special verdict on hearing in this court, the judgment of the court below cannot be reversed here. See Guild v. Frontin, 18 How. 135, 1 Miller, 118; Suydam v. Williamson, 20 How. 428, 2 Miller, 506. 3. Nor can the laws of the State regulating the proceedings in its own courts authorize the federal courts to depart from the modes of proceeding prescribed by acts of Congress. THIS case is a writ of error to the circuit court for the northern district of Illinois. It is sufficiently stated in the opinion. Mr. Ballance, for plaintiff. [ * 87 ] * Mr. Chief Justice TANEY 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 Illinois. An action of ejectment was brought by the defendants in error against the plaintiff, for a certain parcel of land described in the declaration, and upon the trial the verdict and judgment were for the plaintiff; a mot on was afterwards made to set aside the judgment and for a new trial, and the judgment was accordingly set aside, and a new trial granted upon the terms mentioned in the transcript. In the proceedings upon this new trial, the parties agreed to waive a trial by jury, and that both matters of law and of fact should be submitted to the decision of the court. The case was proceeded in according to this agreement, and the court, as the record states, found the issue in favor of the plaintiff, (Forsyth,) and entered judgment accordingly; and to this decision, and to all the rulings and decisions of the court in the previous stages of the cause, the defendants (Kelsey and Hotchkiss) excepted, and sued out a writ of error to bring the case before this court. It will be seen from this statement that in a common[88] law *action of ejectment the case was submitted to the court upon the evidence, without the intervention of a jury, leaving it to the court to decide the fact, as well as the law, upon the evidence and admissions before it. The case, therefore, is the same in principle with that of Guild and others v. Frontin, Winans v. New York and Erie Railroad Co. 18 How. 135. And the doctrine in that case was reaffirmed in Suydam v. Williamson, 20 How. 428, and the grounds upon which it rests fully set forth. It is unnecessary to repeat here what was stated in these two decisions. It is sufficient to say that the agreement of parties cannot authorize this court to revise a judgment of an inferior court in any other mode of proceeding than that which the law prescribes, nor can the laws of a State, regulating the proceedings of its own courts, authorize a district or circuit court sitting in the State to depart from the modes of proceeding and rules prescribed by the acts of congress. The judgment of the circuit court must therefore be affirmed. Ross WINANS, Plaintiff in Error, v. THE NEW YORK AND ERIE RAILROAD COMPANY. 21 II. 88. PRACTICE IN CIRCUIT COURTS-PATENT LAW. 1. A deposition cannot be rejected on the trial for want of a paper used by the witness to refresh his memory when the paper was not in his power. 2. Nor will a deposition be rejected for such matter, where, by the rules of the court, the other party had opportunity before trial to raise the objection, on motion to suppress the deposition. 3. The court is not bound to receive the testimony of ex parte witnesses in aid of the construction of a patent, though it may consult them if it thinks proper. The nature and value of such testimony explained and commented on freely. 4. The court having correctly construed the claim of plaintiff's patent, it was for the jury to say whether its novelty had been anticipated by others. THIS was a writ of error from the circuit court for the northern district of New York. The action was brought by plaintiff in error for an infringement of his patent. The defense was want of novelty, which was largely dependent upon the construction to be given to the plaintiff's claim of invention as set forth in his patent. Mr. Blatchford and Mr. Keller, for plaintiff. Mr. Davis and Mr. Whiting, for defendants. *Mr. Justice GRIER delivered the opinion of the court. [98] The patent which the defendants are charged to have infringed purports to be, "for a new and useful improvement in the construction of cars or carriages intended to travel upon railroads." The specification commences with an enumeration of the diffi Vol. ii-44 Winans v. New York and Erie Railroad Co. culties attending short curves in railroads from friction, and the consequent necessity of placing the wheels, where four only are used, near together. But in high velocities the shocks from obstructions or inequalities on the rails are thus greatly increased; so that a compromise is usually made between the evils consequent on too great a separation and too near approach, wherein the advantage of one is necessarily sacrificed for the sake of the other. The incessant vibration felt in traveling on railroad cars is mainly imputed to the minute obstructions which unavoidably exist, and the approximation of the wheels necessary to avoid friction tends to increase the effect of this motion, and its power to derange the machinery of the road. The important object which the plaintiff's invention seeks to obtain, as regards comfort, safety, and economy, "is to devise a mode of combining the advantages derived from placing the axles at a considerable distance, with those of allowing them to be situated near each other." The specification then states the methods heretofore used to remedy these difficulties; such as making the track wheels conical, which, in case of slow traveling, has been found an effectual correction. But in high velocities it caused a serpentine motion, not only on curves, but where the track was straight. To avoid this effect, an additional motive is furnished for placing the axles at a considerable distance apart. For this purpose the patentee proposes to construct two bearing carriages, each with four wheels, to sustain the body of the cars, one at or near each end thereof; the two wheels on either side of these carriages to be placed very near each other. These wheels [99] may be connected by a strong spring, double the * usual strength employed for ordinary cars. The use of this spring, though preferable, is not absolutely required, as the end in view may be obtained by constructing the bearing carriages in any of the modes usually practiced, provided the fore and hind wheels of each of the carriages be placed near together; because the closeness of the fore and hind wheels of each bearing carriage, coupled remotely from each other, is considered as the most important feature of the invention. On each of these carriages a bolster is placed, on which the car body rests, connected with each by a centre pin or bolt passing down through them, thus allowing them to swivel or turn upon each other. After this description of the improvement contemplated, and the objects to be gained by it, (of which we have given a brief sum Winans v. New York and Erie Railroad Co. mary,) the specification concludes with the following disclaimer and statement of what the patentee claims to have invented: "I do not claim as my invention the running of cars or carriages upon eight wheels, this having been previously done; not, however, in the manner or for the purpose herein described, but merely with a view of distributing the weight carried more evenly upon a rail or other road, and for objects distinct in character from those which I have had in view, as herein before set forth. Nor have the wheels, when thus increased in number, been so arranged and connected with each other, either by design or accident, as to accomplish this purpose. What I claim, therefore, as my invention, and for which I ask a patent, is, the before-described manner of arranging and connecting the eight wheels, which constitute the two bearing carriages, with a railroad car, so as to accomplish the end proposed by the means set forth, or by any others which are analogous and dependent upon the same principles." The defense set up in the pleadings does not deny that defendants use cars constructed as described in the patent, but takes issue on the originality of the invention, averring, among numerous other matters, that the same, or substantially the same, improvement had been previously made and used on the Quincy railroad, near Boston. * The first bill of exceptions taken on the trial is to the [*100] refusal of the court to reject a deposition taken on interrogatories, because the witness had not annexed to it a copy of a former deposition, which, in answer to a previous interrogatory, he admitted he had seen and had used to refresh his memory. There are two sufficient reasons why this exception cannot be sustained. 1. By the rules of practice in force in the circuit court, such an objection cannot be made on the trial of a cause, when the party, as in this case, had full time and opportunity to move for a suppression of the deposition or a re-examination of the witness. And, secondly, the paper was not in the power of the witness, but in that of the commissioner, or the plaintiff himself, who might have used it if he thought proper. After the parties had each given evidence tending to prove the issues between them, and the defendants had closed their testimony, the plaintiff's counsel made nine distinct offers of proof, which were severally overruled as irrelevant, and exception taken. They then proposed eight several instructions, which they requested the court to give to the jury, and took exceptions to the court's refusal. Besides all this, the charge was parceled out into fourteen paragraphs, and an exception taken to each. Winans v. New York and Erie Railroad Co. To state each one of these thirty-one propositions at length, and discuss them severally, would be a tedious as well as an unprofitable labor. There was in fact but one question to be decided by the court, viz: the construction of the patent; the question of novelty being the fact to be passed on by the jury. The testimony of experts which was rejected had no relevancy to the facts on which the jury were to pass, but seemed rather to be intended to instruct the court on some mechanical facts or principles on which the court needed no instruction, or to teach them what was the true construction of the patent. Experts may be examined to explain terms of art, and the state of the art, at any given time. They may explain to the court and jury the machines, models, or drawings exhibited. [*101] *They may point out the difference or identity of the mechanical devices involved in their construction. The maxim of "cuique in sua arte credendum" permits them to be examined to questions of art or science peculiar to their trade or profession; but professors or mechanics cannot be received to prove to the court or jury what is the proper or legal construction of any instrument of writing. A judge may obtain information from them, if he desire it, on matters which he does not clearly comprehend, but cannot be compelled to receive their opinions as matter of evidence. Experience has shown that opposite opinions of persons professing to be experts may be obtained to any amount; and it often occurs that not only many days, but even weeks, are consumed in cross-examinations, to test the skill or knowledge of such witnesses and the correctness of their opinions, wasting the time and wearying the patience of both court and jury, and perplexing, instead of elucidating, the questions involved in the issue. If the construction given by the court to the specification be correct, and in fact the only construction of which it is capable, as we think it is, it would be wholly superfluous to examine experts to teach the court, what they could clearly perceive without such information, that the necessity for coned wheels to avoid friction on curves was a consequence of the fact that the wheels were fixed to the axle. The improvement claimed by the patent being a device to remedy, among other things, the serpentine or wabbling motion of such wheels in high velocities, the testimony offered concerning them, if it would have any effect at all, would tend only to mislead both court and jury from the only issue in the case. The following extracts from the charge will show that the judge |