⚫407 Its made by the Infringer of a patent the comparison must be between the patented invention and what was known and open to the public at and before the date of the patent. If plaintiff be unable to recover damages for the infringement of a patent originally included in a suit, but upon which he elects not to proceed, it is difficult to see how he can recover for the infringement of one not made the basis of any action at all. It is true that the combination of the earlier patent in this case is substantially contained in the later. If it be identical with it, or only a colorable variation from it, the second patent would be void, as a patentee cannot take out two patents for the same invention. James v. Campbell, 104 U. S. 356. If it be for a different device, then plaintiff could not recover damages for its infringement without making it the basis of suit. We think, therefore, that for the purposes of this suit the earlier patent must be deemed open to the defendant, and no damages having been proved for the infringement of the improvement under the later patent, considered separately, the finding of the court below was correct. We do not wish to be understood as expressing an opinion whether, if there had been an earlier patent for coupling vessels outstanding at the date of this in defendant could claim that the device described in such patent was open to it. In such case it might, perhaps, be held that the plaintiff was entitled to stand upon the prima facie validity of the earlier pateut, and that presumptively the defendant would be bound to pay a royalty to the patentee, and, having elected to make use of the plaintiff's invention, would be bound to pay a like royalty to him. This question, however, is not presented in the case under consideration. The case of Seymour v. McCormick, 16 How. 480, while not exactly in point, is somewhat analogous to the one under consideration. This was an action at common law to recover damages for the infringement of certain improvements in reaping-machines. There were three patents issued, in 1834, 1845, and 1847 The earliest of these patents had expired. The first count charged an infringement of the patent of 1845; the second that of 1847. The plaintiff, to avoid delay, consented to go to trial on the second count only, which was for an improvement upon prior patents, consisting chiefly in giving to the raker of the grain a convenient seat upon the machine. The court permitted the jury to assess the damages as for the infringement of the entire machine, defendant insisting that he was liable only for the damages occasioned by the infringement of the improvement; in other words, that the plaintiff had the right to recover as great damages for the infringe-fringement, and owned by a third person, ment of the patent set forth in the second count as if he had proceeded upon both counts and shown infringement of all the patents claimed. The case was removed to this court by writ of error, and the plaintiff in error argued that for the purposes of that suit the defendant had a perfectly lawful right to use the machine described in the patent of 1834, (which bad, in fact, become public property.) and the improvements in the patent of 1845, | and a large portion of those included in that of 1847. These covered the whole of the improved reaper, except what related to the seat, and its combination with the reel. He further claimed that, as the plaintiff had decided not to proceed on his patent of 1845, that was, in effect, public property; that by waiving any right to proceed upon the first claim of his patent of 1847 he had limited himself to the seat, combined with the reel; and that the ruling of the court allowed the plaintiff damages to as great an extent as if the trial had been in a suit upon the old patents of 1834 and 1845, and upon the first claim of that of 1847 as well as the second, and was therefore erroneous. It seems that the defendant ought to attack the validity of the patent of 1845, but the evidence was ruled out; still the plaintiff was allowed to recover for the profits of the part of the machine covered by this patent, as if it had been included in the patent of 1847. This court adopted the reasoning of the plaintiff in error, reversed the judgment of the court below, and held that the plaintiff should be limited in his recovery to the damages occasioned by the infringement of the second claim of the patent of 1847. "The jury," said Mr. Justice GRIER in the opinion of the court, "gave a verdict for nearly double the amount demanded for the use of three several patents, in a suit where the defendant was charged with violating one only, and that for an improvement of small importance when compared with the whole machine. The decree of the court below must be affirmed. BRADLEY and GRAY, JJ., were not present at the argument, and took no part in the decision of this case. (141 U. S. 583) Ex parte LAU Ow Bew. CHINESE EXCLUSION ACT-CERTIFICATE OF IDEN- In view of the fact that the Chinese treaty of 1868 guarantied_ the right of all Chinese subjects to enter the United States without restrictions, and that the treaty of 1880 only restricted that right so far as Chinese laborers were concerned, a decision by the circuit court of appeals that a Chinese merchant domiciled here for 17 years, and having an established business of $100,000 a year, must, on returning from a visit to China, present to the collector the certificate required by the Chinese exclusion act, (Act Cong. May 6, 1882, $ 6, as amended by Act July 5, 1884,) notwithstanding that he has given that official satisfactory evidence of his status as a merchant here, presents a question of such importance as will justify the supreme court in requiring the circuit court of appeals to certify the case to it for review under Act Cong. March 3, 1891, establishing that court, and (section 6) making its decisions final in certain cases, but providing that the supreme court may require any such case to be certified to it for review as if it had been taken there on appeal or writ of error. Petition by Lau Ow Bew, a Chinese merchant, for a writ of certiorari to the 584 circuit court of appeals for the ninth cir- | held the petitioner in his custody "by di cuit to review its judgment, (47 Fed. Rep. 641,) affirming a decision of the circuit court for the northern district of California, (Id. 578,) denying him a right to land in this country without first presenting the certificate of identity required by the sixth section of the Chinese exclusion act. Writ granted. J. Hubley Ashton and Thos. D. Riordan or petitioner. rection of the customs authorities of the port of San Francisco, Cal., under the provisions of the Chinese restriction act." An intervention was filed on behalf of the United States, alleging that petitioner was lawfully detained because he had "failed to produce to the collector of customs, or to any other authorized officer, the certificate of identification required by the act of 1882 as amended by the act of 1884. The return to the writ and the intervention were traversed by the petitioner. The case was thereupon heard and determined upon the following agreed statement of facts: "(1) That the said FULLER, C. J. This is an application, upon uotice, for a writ of certiorari requiring the United States circuit court of appeals for the ninth circuit to certify to this court for its review and determina-Lau Ow Bew is now on board the steamtion the case of Lau Ow Bew v U. S., in which a final judgment was rendered by that court against the applicant on the 7th of October, 1891. 47 Fed. Rep. 641. The application is accompanied, in accordance with subdivision 3 of rule 37, by a certified copy of the entire record of the case. The petition states that the applicant is a person of the Chinese race, and a naturalborn subject of the emperor of China, who is now, and for the past 17 years has been, a resident of the United States, and of no other country, having his domicil in the city of Portland and state of Oregon, where, during all that time, he has been a merchant engaged in the wholesale and importing business; that on the 30th of September, 1890, he left the United States on a temporary visit to his relatives in China, with the intention of returning as soon as possible; and that he did return on the steam-ship Oceanic, which arrived at San Francisco on the 11th of August, 1891. That at the time of his departure he procured satisfactory evidence of his status in the United States as a merchant, under the regulations in that regard of the treasury department, adopted July 3, 1890, and on his return he presented his proofs to the collector of the port of San Francisco, who acknowledged their sufficiency, and admitted that petitioner was entitled to the protection of the treaty between the United States and China, concluded July 28, 1868, and the supplemental treaty concluded November 17, 1880, and the act of congress entitled "An act to execute certain treaty stipulations relating to Chinese, approved May 6, 1882, as amended July 5, 1884; but refused to permit petitioner to land, on the sole ground that he had failed and neglected to produce the certificate of the Chinese government mentioned in section 6 of the aforesaid act, as amended. The petition fur. ther states that thereupon, on the 14th of August, 1891, petitioner filed a petition in the circuit court of the United States for the northern district of California for a writ of habeas corpus to obtain his discharge from detention, alleging, among other things, that he was a merchant domiciled as aforesaid, and that it was claimed by the master of the steam-ship that he could not be allowed to land under the provisions of the sixth section of the art aforesaid as amended; and that the master of the steam-ship produced petitioner before the court on August 15, 1891, and made return to the writ that he ship Oceanic, which arrived in the port of " On the 14th of September, 1891, the circuit court rendered judgment that the petitioner be remanded to custody. An opin. ion was filed by the learned district judge holding the circuit court, from which it appears that the judgment in the case proceeded upon the ground of the controlling effect of the decision of this court in Wan Shing v. U. S., 140 U. S. 424, 11 Sup. Ct. Rep. 729. From this judgment an appeal was prosecuted to the circuit court of appeals, which, on the 7th of October, 1891, declined to certify any question of law in the case to this court for instruction, and affirmed the judgment of the circuit court. 587 By section 5 of the act of congress, entitled "An act to establish circuit courts of appeals, and to define and regulate in certain cases the jurisdiction of the courts of the United States, and for other purposes, approved March 3, 1891, (26 St. 826,) it is provided that appeals or writs of error may be taken from the district courts or from the existing circuit courts directly to this court in certain specified cases, including any case in which the constitutionality of any law of the United States, or the validity or construction of any treaty made under its authority, is drawn in question; and by section 6 that the circuit courts of appeals established by the act shall exercise appellate jurisdiction to review final decisions in the district and circuit courts in all other than the previous ly enumerated cases, unless otherwise provided by law; and that the judgments or decrees of the circuit courts of appeals shall be final in all cases in which the jurisdiction is dependent entirely upon the opposite parties to the suit or controversy being aliens and citizens of the United States or citizens of different states; as also in all cases arising under the patent laws, the revenue laws, and the criminal laws, and in admiralty cases; and that the circuit courts of appeals may at any time certify to this court any questions or propositions of law concerning which such court desires instruction, for proper decision; whereupon this court may either give its Instruction on the questions and propositions certified, or may require the whole record and cause to be sent up for consideration, and thereupon decide the whole matter in controversy as if it had been brought here for review by writ of error or appeal. And it is further provided by that section that any case in which the judgment of the circuit court of appeals is made final may be required by this court, by certiorari or otherwise, to be certified to it for review and determination, as if it had been brought here on appeal or writ of error. It is evident that it is solely questions of gravity and importance that the circuit courts of appeals should certify to us for instruction; and that it is only when such questions are involved that the power of this court to require a case in which the judgment and decree of the court of appeals is made final, to be certified, can be properly invoked. The inquiry upon this application, therefore, is whether the matter is of sufficient importance in itself, and sufficiently open to controversy, to make it the duty of this court to issue the writ applied for in order that the case may be reviewed and determined as if brought here on appeal or writ of error. Assuming, for the purposes of the present motion, that the court of appeals had jurisdiction, it will be perceived from what has been stated that the disposition of the case involves the application of the Chinese restriction acts to Chinese merchants domiciled in the United States who temporarily leave the country for purposes of business or pleasure, animo revertendi, in the light of the treaties between the gov ernment of the United States and that of China. By the treaty between the United States and China of 1868, all Chinese sub jects were guarantied the right, without conditions or restrictions, to come, remain in, and leave the United States, and to enjoy all the privileges, immunities, and exemptions enjoyed by the citizens of the most favored nation. 16 St. 740. The treaty of November 17, 1880, put no limitation upon this right, so far as Chinese other than laborers were concerned. 22 St. 12. To what extent was any limitation intended by the acts of 1882 and 1884, drawn into consideration here, bearing in mind the general rule that repeals by implication are not favored? The sixth section of the act of 1882, as amended by the act of 1884, (22 St. 58; 23 St. 115,) provided that "every Chinese person, other than a laborer, who may be entitled by said treaty or this act to come within the United States, and who shall be about to come to the United States, shall obtain the permission of and be identified as so entitled," in the mode stated, and the certificate therein provided for is made the sole evidence, as to those to whom the section is applicable, to establish a right of entry into the United States. Manifestly, the question whether this section should be construed, taken with the treaties, to apply to Chinese merchants already domiciled in the United States, and to whom no intention of voluntarily surrendering that domicil can be imputed, is one of great gravity and importance. The status of domicil in respect of natives of one country domiciled in another is a matter of international concern, and the acts of congress are to be considered, in view of general and settled principles upon that subject, in arriving at a conclusion as to the operation upon the treaties with China designed by congress in those enactments. Was it intended that commercial domicil should be forfeited by temporary absence at the domicil of origin, and to subject resident merchants to loss of rights guarantied by treaty if they failed to produce from the domicil of origin that evidence which residence in the domicil of choice may have rendered it difficult, if not impossible, to obtain? We refrain from particular examination of the point involved, and refer to it only so far as necessary to indicate its importance. In the case of Wan Shing v. U. S., 140 U. S. 424, 11 Sup. Ct. Rep. 729, Wan Shing came to this country at the age of 16, remained 2 years, and then returned to China, where he passed 7 years. Upon his own evidence, he appeared to be, not a merchant, but a laborer, and not to have gained a commercial domicil in this country; but, if he had, his departure at the age of 18, and his absence for 7 years, without any apparent intention of returning, brought him, in our judgment, within the category of those required to produce the certificate of identification of the government of his origin or of which he was the subject. Upon that state of facts, the precise-in-* quiry arising on this petition did not present itself for definitive disposition, and we do not feel justified, under the circumstances, in declining to afford the oppor. tunity for its full discussion, as now specifically pressed upon our attention. While, therefore, this branch of our jurisdiction *511 should be exercised sparingly and with great caution, we are of opinion that the grounds of this application are sufficient to call for our interposition. Let the writ of certiorari issue as prayed. (141 U. S. 510) SEITZ V. BREWERS' REFRIGERATING MACH. CO. (November 9, 1891.) SALE-COLLATERAL WARRANTY-PAROL EVIDENCE. 1. A contract in writing, by which a party agrees to furnish another with "a No. 2 size refrigerating machine, as constructed by the party of the first part, to be put up and put in operation in the brewery of the party of the second part," is complete and unambiguous, and parol evidence is not admissible to show an alleged collateral warranty that the machine should maintain a given quantity of air at a certain temperature, as that would add another term to the written contract. 2. Though there is evidence that the purchaser of the machine had theretofore used ice to cool his brewery to a certain temperature, and that the seller knew this, no warranty can be implied, under the contract, that the machine would produce the same temperature without the use of ice. In error to the circuit court of the United States for the eastern district of New York. Action by the Brewers' Refrigerating Machine Company against Michael Seitz. There was judgment for plaintiff on a verdict directed by the court, and defendant brings error. Judgment affirmed. STATEMENT BY FULLER, C. J. This was an action brought by the Brewers' Refrigerating Machine Company against Michael Seitz upon the following contract: "This agreement, made this 11th day of January, A. D. 1879, between the Brewers' Refrigerating Machine Company of Alexandria, Va., party of the first part, and Michael Seitz, of Brooklyn, N. Y., party of the second part, witnesseth: That the party of the first part hereby agrees and contracts to supply the party of the second part with a No. 2 size refrigerating machine, as constructed by the said party of the first part, by the 15th day of March next, or as soon thereafter as possible, the machine to be delivered at the depot or wharf in Philadelphia, Penn., and to be put up and put in operation in the brewery of the said party of the second part at 258-264 Maujer street, at Brooklyn, E. D., N. Y., under the superintendence of a competent man furnished by the said party of the first part. The party of the second part hereby agrees and contracts to pay to the said party of the first part for said machine the sum of nine thousand four hundred and fifty dollars ($9,450.00) in manner as follows, namely: Four thousand seven hundred and twenty-five dollars ($4,725.00) on the day when the machine is put in operation at the brewery of the said party of the second part, and the balance of four thousand seven hundred and twenty-five dollars ($4,725) in three equal installments; that is to say, one thousand five hundred and seventy-five dollars ($1,575.00) for each installment, payable, respectively, in one, (1,) two, (2,) and three (3) months after the day when the machine is put in operation at the brewery of the said party of the second part, for which installments the said party of the second part agrees and contracts to give his notes on the day last mentioned." De The complaint, after setting forth the execution of the contract on the 11th of January, A. D. 1879, alleged compliance therewith in every respect by the plaintiff, and breach of the promise to pay the purchase price. The defendant stated in his answer, among other things, "that the machine placed in defendant's brewery was worthless, and incapable of operating to produce the results represented by plaintiff to this defendant as an inducement to enter into the aforesaid agreement; that said machine has not been accepted by this defendant, nor operated, or attempted to be operated, by defendant, his agents, employes, nor any other person acting by or under his authority, aud did not pass out of the control of the plaintiff; nor has the said machine been used by him in his said brewery, because said machine was worthless, and incapable of And serving any useful purpose therein." defendant also averred, by way of counter-claim, that he had sustained damages by reason of false and fraudulent representations by plaintiff as to what the machine would accomplish, in reliance upon which he had permitted his brewery to be a subjected to the action of said machine, and suffered loss accordingly. Upon the trial before the circuit judge and a jury, plaintiff proved that a No. 2 size refrigerating machine, as constructed by the Brewers' Refrigerating Machine Company, was supplied defendant, and put up and put in operation in his brewery by it in accordance with the terms of the contract. fendant thereupon asked to amend his answer, "to set up that defendant entered into that contract by reason of fraudulent representations on the part of this company. The amendment was allowed, and was in substance that plaintiff represented that the machine was capable of cooling certain rooms in the brewery which had been examined by plaintiff; but the machine, when set up and operated, was not so capable, and failed to perform the work for which, upon the representations of the plaintiff, the machine had been contracted for by defendant; that defendant contracted to purchase the machine upon the guaranty by plaintiff to defendant that it would cool certain rooms, and it was upon that guaranty alone that defendant entered into the contract: that defendant entered into the contract upon the representations of the plaintiff to the effect that the No. 2 machine referred to in the contract set forth in the complaint would cool and was capable of cooling a space of 150,000 cubic feet of air continuously to a temperature sufficiently low for the purpose of brewing or manufacturing beer in the defendant's brewery or premises, that is to say, to a temperature in the neighborhood of 40° Fahrenheit; and that the plaintiff knew, at and before the time when the contract was made, that the representations made to the defendant were false and unfounded, and knew that the said No. 2 machine was not capable of performing the work which plaintiff represented it as 514 513 being capable of performing, and knew that the machine would be worthless to the defendant for the purposes for which defendant contracted for it and intended to use it. Evidence on defendant's behalf was then admitted, tending to show that, prior to the execution of the contract, plaintiff's agents had represented that the machine would cool 150,000 cubic feet to 40° Fahrenheit; that defendant had been cooling his brewery with ice, and wished the machine to cool the rooms to about the same extent; and that the machine did not cool the rooms as desired. On cross-examination of the defendant's " The agent, it appeared that on January 13, 1879, he wrote to the secretary of the refrigerating company: "In speaking to Mr. M. Seitz to-day he said that your agreement was very unsatisfactory to him; in fact, that before he would get the machine that he wanted a written guaranty from you that you would cool his building, which you have seen, to 3% R., and keep it at that all the time; otherwise he would not have the machine, as he would have no use for it, as he would have to put himself to great expense and great risk at the same time. To which plaintiff responded, January 20th: "I regret to hear that Mr. Seitz fes's dissatisfaction with the contract made with him. The guaranty he now asks for in addition it would not be proper for us to give, as Mr. Seitz himself will see on further reflection, we think. The maintenance of a certain temperature in his rooms is not solely dependent upon our machines; in fact, there are a great many other things entirely beyond the control of the machine which influence this temperature. mode of working the rooms, the water used for washing, the fermentation, and many other things might be mentioned in this connection as matters which we cannot control, and which nevertheless are most important considerations in the maintenance of a given temperature. We are confident, from the experience with the Portner machine during last summer and fall, that the machine sold to Mr. Seitz will not only give him the desired low temperature, but will, in addition, give him what he never before had in the warmer months, namely, pure and dry air. The machine we are building for him is in many respects far superior (aside rom size) to the Portner machine, and when he has had it a year we believe he would not part with it for any money, if he could not replace it. That we must decline to guaranty what Mr. Seitz asks for is simply for the reasons stated. There are too many side considerations entirely beyond the control of the machines. We would add that we have not in any instance been asked for such a guaranty as a condition of sale, but that all the parties to whom we have sold bought on our representations, and what they have seen and heard of the working of the Portner machine." On January 21, 1879, defendant's agent telegraphed plaintiff: "Will you defend any infringement suits against Mr. Seitz for using your machine?" and on January 23, 1879, wrote: "The machine sold to Mr. M. Seitz is all right, and can be sent at any time that it is ready." On the 16th of March he again wrote plaintiff: "Mr. Seitz would like to have you to commence at once putting up his machine." The defendant having rested, the court, on motion, directed a verdict for the plaintiff for the amount claimed. The circuit judge remarked to the jury that the only defense worthy of consideration was that the machine was sold to the defendant under fraudulent representations by the plaintiff's agents, but that there was no evidence of fraud whatever in the case; that there was evidence to show that the machine did not work satisfactorily, and the jury were doubtless authorized to infer that it did not have the capacity of cooling 150.000 cubic feet to the degree stated, but that there was a written contract in the case, which con. tained no warranty, and, consequently, if the machine did not fulfill the expectations of the defendant, or if it did not fulfill verbal representations made at the time the contract was entered into, nevertheless defendant had no defense; that there was no evidence that false or fraudulent representations had been made; that the machine had been built and put up pursuant to the written contract; and that the defendant could not be permitted, upon the general theory that the machine was not a satisfactory article, to defeat the plaintiff from recovery. The verdict having been rendered as directed, and judgment entered thereon, the cause brought here on writ of error. was Esek Cowen, for plaintiff in error. John H. V. Arnold, for defendant in error. *FULLER, C. J. If the defense were solely that the defendant was induced by false and fraudulent representations to enter into the contract in question, it is conced. ed that the circuit court did not err in directing a verdict for the plaintiff, as there was no evidence of fraud in the case. It is carnestly contended, however, that, under the answer as amended, the defendant was entitled to avail himself of the breach of an alleged contract of warranty or guaranty collateral to the contract of purchase and sale; or of an implied warranty that the machine should be reasonably fit to accomplish a certain result. Assuming the sufficiency of the pleadings to enable the questions indicated to be raised, we are nevertheless of opinion that the direction of the circuit court was correct. The position of plaintiff in error is, in the first place, that the evidence on his behalf tended to show an agreement between himself and defendant in error, entered into prior to or contemporaneously with the written contract, independent of the latter and collateral to it, that the machine purchased should have a certain capacity, and should be capable of doing certain work; that the inachine failed to come up to the requirements of such independent parol contract; that this evidence was competent; and that the case should therefore have been left to the jury. Undoubtedly, the exist ence of a separate oral agreement as to any matter on which a written contract is 516 |