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Opinion of the court.

i, or smoke-pipe, which is made to descend to that point. The patentee then speaks of certain irregularities that would still exist in the distribution of the heat around the oven, to prevent which he places a plate, A, in front of the cold-air chamber, so as to form a flue in front, whose mouth is at the same distance from the flue above the oven that the lower end of the pipe i in the back part of the stove is below the oven; and these flues being at all times unobstructed, their action will be uniform, and the heat be equally distributed under all circumstances on the several sides of the oven. The patentee then states that he claims as new, and for which he desires a patent, "the combination of the diving pipe i with the flues F, arranged as herein described, for the purpose of evenly distributing and equalizing the heat on four sides of the oven, without using or requiring any dampers, as herein set forth." The main point in the case turned upon the question of infringeThe defendants' stove had no plate A in front of the coldair chamber, forming a front flue; and, hence, one of the elements of the plaintiff's combination was not used; and, if so, there would be no infringement. The plaintiff, however, sought to get rid of the objection by proving that that part of his contrivance and claim were immaterial and useless, and that the diffusion of the heated air around all sides of the oven would be as effectual without as with it. Assuming this proof to be competent to help out the infringement, the patent would stand on the combination of the diving pipe i and flues, as arranged, without the front flue, formed by the plate A in front of the cold-air chamber, and the division of that flue called the "mouth" in the specification.

ment.

Now, the plaintiff, in his declaration, sets out the patent, specification, and claim, as issued to him by the Government, and founds his action upon them as thus set out, and charges the defendant as having infringed the invention as thus claimed. The infringement as charged is denied. This is the issue presented for trial, and which the defendants were called upon and were bound to prepare to meet. This issue involved the question whether or not the defendants had infringed the improvements in the cooking stove, consisting of a combination of the diving pipe i with the flues, as arranged, one of which was a flue in front of the stove formed by plate A, the flue being one of peculiar construction. It is quite apparent, if this part of the combination is abandoned, and the remaining part of it relied on alone, the issue is changed and the defendants surprised, the pleadings misleading instead of advising them of the question to be tried.

It is true, by the ninth section of the act of 1837, (5 U. S. Stat.,

Opinion of the court.

p. 194,) it is provided that the suit shall not be defeated where the patentee claims more than he has invented. It must be, however, in a case where the part invented can be clearly distinguishable from that claimed, but not invented.

This provision cannot be applied to the present case, for, unless the combination is maintained, the whole of the invention fails. The combination is an entirety. If one of the elements is given up, the thing claimed disappears.

Besides the above view, it is most apparent, from an examination of the specification, that the patentee not only described, but claimed the front flue formed by the plate A, fig. 2, as a material and important part of the arrangement for distributing equally the hot air on the several sides of the oven. To prevent irregularities, referred to and particularly described, he observes: "I place the plate A as in fig. 2, so that it will form a flue in front of the cold chamber, whose mouth (as it is called) is at the same distance from the flue above the oven that the lower end of the pipe i is above the flue below the oven; and these flues being at all times unobstructed, their action is uniform, and the heat is equally distributed, under all circumstances, on the several sides of the oven." The patentee might as well have undertaken to prove any other part of the combination immaterial and useless as the part above, and its uses so particularly described. Indeed, according to the doctrine contended for, a patent would furnish no distinct evidence of the thing invented, as that would depend upon what part of the specification and claim the jury might think material or essential.

Several exceptions were taken to the admissibility of evidence offered by the defendants, but without referring to them specially, it will be a sufficient answer to say that it was competent and relative as showing the state of the art in respect to improvements in the manufacture of cooking stoves at the date of the plaintiff's invention. No notice was necessary in order to justify the admission of evidence for this purpose.

The plaintiff, in the course of the trial was offered as a witness, and objected to by the defendants as incompetent, and his testimony was excluded. It is admitted that the testimony of the parties to the suit is competent, according to the rules of evidence in the State courts of Ohio.

The thirty-fourth section of the judiciary act provides that the laws of the several States, with the exceptions there stated, shal! be regarded as rules of decision, in trials at common law in the courts of the United States. This section has been construed to include the rules of evidence prescribed by the Jews of the State in

Statement of the case.

all civil cases at common law not within the exceptions therein mentioned. The point has not been, perhaps, expressly decided in a case reported in this court, but the principle has been recognized in several cases. 12 Peters, 89; 6 How., 1; 12 How., 361.

The facts which this witness offered to prove are not stated in the bill of exceptions. We cannot, therefore, disregard the exception upon the idea that the testimony could not have been material, or could not have changed the result of the verdict.

JUDGMENT REVERSED-VENIRE DE NOVO.

HAUSSKNECHT v. CLAYPOOL ET AL.

(1 Black, 431.)

1. The rules of evidence prescribed by the laws of a State are rules of decision for the United States courts while sitting within the limits of such State, within the meaning and subject to the exceptions contained in the 34th section of the judiciary act. 2. Where a bill of exceptions sets forth that a witness was produced, was asserted to be competent by his counsel, and was rejected by the court, a court of error will imply that the witness was material to sustain the issue without a direct statement to that effect in the bill of exceptions.

3. Brevity in bills of exception commended.

ERROR to the Circuit Court of the United States for the Southern District of Ohio.

Haussknecht brought trespass on the case against Claypool and Lynn, in the year 1859, for an infringement of his patent for an improved running gear for carriages. The suit was commenced in the Circuit Court of the United States for the Southern District of Ohio, and the damages laid at $5,000. The defendants pleaded the general issue, and brought divers witnesses to prove that the plaintiff was not the original inventor of the thing he had patented, but that it had been described in printel works, and was in actual public use at a time anterior to the date of his patent. The plaintiff himself was produced as a witness to sustain his own case. His counsel asserted that by the law of Ohio (sec. 310, code of civil procedure) he was a competent witness in his own behalf. The defendants objected on the grounds: First, that he was a party to the cause, and, therefore, incompetent even by the laws of Ohio. Second, that no notice of his intention to testify had been given to the defendants or their attorney; and, third, that by a rule of the court, parties to suits were incompetent witnesses. These objections the court sustained, and the plaintiff's counsel took a bill

Argument for the defendant in error.

of exceptions. Verdict for defendants. Writ of error to Supreme Court of the United States sued out by plaintiff.

Messrs. Lee and Fisher, of Ohio, for plaintiff in error: Section 310 of the Ohio code of civil procedure reads thus: "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 interest or conviction may be shown for the purpose of affecting his credibility." The 34th section of the judiciary act of 1789 provides 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." It would seem to require no proof to show that a rule of evidence was "a rule of decision," within the meaning of this act. But this court has expressly decided that question. McNiel v. Holbrook, 12 Pet., 84. "The rules of evidence prescribed by the statute of a State are always followed by the courts of the United States when sitting in the State in commercial cases, as well as in others." Sims v. Hundley, 6 How., 1. But it may be said that there was a rule in the court below which disqualified this witness. It is only necessary to reply to this that the court below could not abrogate or overcome a statute of the State by a general rule any better than by a decision. The rule and the ruling stand on the same footing. No notice that the plaintiff would testify as a witness was necessary in the court below. Section 313 of the Ohio code, which requires such notice, was repealed April 12, 1858. See section 3d of the statute of Ohio, of said date, entitled "An act to amend the 313th and 314th sections of the code of civil procedure."

It is objected that the bill of exceptions does not aver that the rejected evidence was material to the plaintiff's cause.

In Smith v. Carrington, 4 Cranch, 62, this court held that, if evidence were illegally admitted, the court could not inquire into its weight or importance, but would reverse the judgment; and we suppose the converse of this proposition is equally true, and if evidence be illegally rejected, this court will not inquire into its importance, but will reverse the judgment.

Mr. Lincoln, of Ohio, for defendant in error: It is true, as claimed on behalf of the plaintiff in error, "that the laws of the several States, except where the Constitution, treaties, or statutes

Argument for the defendant in error.

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." And it is also true that the code of civil procedure of the State of Ohio provides, in its 310th section, 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." But the same code, in its 604th and 605th sections, enacts, that its provisions shall not affect "any special statutory remedy," and that "where by statute a civil action, legal or equitable, is given, and the mode of proceeding therein is prescribed, this code shall not affect the proceedings under such statute, until the Legislature shall otherwise provide; but the parties may, if they see fit, proceed under this act, and in all such cases, as far as it may be consistent with the statute giving such action, and practicable under this code, the proceedings shall be conducted in conformity thereto." And it is provided in the same code, section 106, "that every pleading of fact must be verified by the affidavit of the party, his agent or attorney;" and in sections 83, 85, and 92, "that the rules of pleading heretofore existing are abolished," and that the pleadings shall contain "a statement of the facts constituting the cause of action, (or the defense,) in ordinary and concise language." Is an action for the infringement of rights secured by a patent, in which the pleadings are specifically regulated by the act of Congress, a case to which the provisions of the Ohio code necessarily apply?

It will be perceived that the provisions of the statute of Ohio, which makes the parties to the record competent witnesses, are by no means of universal application. The design of the new system of civil procedure was to abolish all distinctions between the pleadings in cases at law and in equity, and to simplify issues, by requiring the pleadings to be in ordinary language, and to be verified by oath, and to abbreviate trials by permitting the parties to testify. But it was not designed to apply the new rules of evidence to cases where the new system of pleading is inapplicable. The right of the court below, under its power "to make and establish all necessary rules for the orderly conducting of business, provided such rules are not repugnant to the laws of the United States," to prevent by rule the parties to the record from testifying, is very clear.

It would have been manifestly improper for the court below to have adopted the provision of the Ohio code changing the law of evidence in the "civil action," without at the same time adopt

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