*298 of June 14, 1880, c. 213, that act is amended competency of the two witnesses who had been previously convicted and sentenced for felony,-the one in North Carolina, and the other in Texas,-the plaintiffs in error relied on article 730 of the Texas Code of Criminal Procedure of 1879, which makes incompetent to testify in criminal cases "all persons who have been or may be convicted of felony in this state, or in any other jurisdiction, unless such conviction has been legally set aside, or unless the convict has been legally pardoned for the crime of which he was convicted.” By an act of the congress of the republic of Texas of December 20, 1836, § 41, "the common law of England, as now practiced and understood, shall, in its application to juries and to evidence, be followed and practiced by the courts of this republic, so far as the same may not be inconsistent with this act, or any other law passed by this congress. 1 Laws of Republic of Texas, (Ed. 1838,) 156. That act was in force at the time of the admission of Texas into the Union, in 1845. The first act of the state of Texas on the incompetency of witnesses by reason of conviction of crime appears to have been the statute of February 15, 1858, c. 151, by which all persons convicted of felony in Texas or elsewhere were made incompetent to testify in criminal actions, notwithstanding a pardon, unless their competency to tes 4. The plea of former jeopardy was rightly held bad. It averred that the discharge of the jury at the former trial without the defendants' consent was by the court, of its own motion, and after the jury, having been in retirement to consider their verdict for 40 hours, had announced in open court that they were unable to agree as to these defendants. The further averment that "there existed in law or fact no emergency or hurry fortify had been specifically restored. Ger, the discharge of said jury, nor was said discharge demanded for the ends of public justice," is an allegation, not so much of specific and traversable fact, as of inference and opinion, which cannot control the effect of the facts previously alleged. Upon those facts, whether the discharge of the jury was manifestly necessary in order to prevent a defeat of the ends of public justice, was a question to be finally decided by the presiding judge in the sound exercise of his discretion. U. S. v. Perez, 9 Wheat. 579; Simmons v. U. S., 142 U. S. 148, 12 Sup. Ct. Rep. 171. Laws 7th Leg. Tex. 242; Oldham & W. The question whether the existing statute of the state of Texas upon this subject is applicable to criminal trials in the courts of the United States held within the state depends upon the construction and effect of section 858 of the Revised Statutes of the United States, which is as follows: "In the courts of the United States no witness shall be excluded in any action on account of color, or in any civil action because he is a party to or interested in the issue tried: provided, that in actions by or against executors, administrators, or guardians, in which judgment may be rendered for or against them, neither party shall be allowed to testify against the other as to any transaction with or statement by the testator, intestate, or ward, unless called to testify thereto by the opposite party, or required to testify thereto by the court. In all other respects, the laws of the state in which the court is held shall be the rules of decision; as to the competency of witnesses in the courts of the United States in trials at common law, and in equity and ad 5. As the defendants were indicted and to be tried for a crime punishable with death, those jurors who stated on voir dire that they had "conscientious scruples in regard to the infliction of the death penalty for crime" were rightly permitted to be challenged by the government for cause. A juror who has conscientious scruples on any subject, which prevent him from standing indifferent between the government and the accused, and from trying the case according to the law and the evidence, is not an impartial juror. This court has accordingly held that a person who has a conscientious belief that polygamy is rightful may be challenged for cause on a trial for polygamy. Rey-miralty." nolds v. U. S., 98 U. S. 145, 147, 157; Miles v. U. S., 103 U. S. 304, 310. And the principle has been applied to the very question now before us by Mr. Justice STORY in U. S. v. Cornell, 2 Mason, 91, 105, and by Mr. Justice BALDWIN in U. S. v. Wilson, Bald w. 78, 83, as well as by the courts of every state in which the question has arisen, and by express statute in many states. Whart. Crim. Pl. (9th Ed.) § 664. 6. In support of the objection to the In the provision, at the beginning of this section, that "in the courts of the United States no witness shall be excluded in any action on account of color, or in any civil action because he is a party to or interested in the issue tried," the distinction between "any civil action" in the second clause and "any action "in the first clause shows that the first clause was intended to include criminal actions, or, as they are more commonly called, “crim *247 open at its ends and top," corresponding | corrugations or groovings shall take; it to the open-slotted lug of the Benham is a mere matter of taste or mechanical patent. "The said bracket has externally skill. a nearly cylindrical figure, and its ends are furnished with convex screws. # On each side of the middle flattened part of the handle-bar is a sliding collar milled externally, and screwed internally with a concave screw proper to fit on the convex screw at the end of the hollow or trough bracket on the head." The screw collars of this patent correspond very closely with the sleeve-nuts of the Benham patent. Upon the whole, it does not seem to us that there was any patentable difference between these two devices, and, if there were, we agree with the opinion of the court below, that it is certainly not infringed by the defendants, who, while they use an undivided handle-bar, have adopted a different method for fastening the same to the steering head, and do not use either the complainant's open-slotted lug and two sleeve -nuts or their detent. 5. Patent No. 323,162, of July 28, 1885. to Emmit G. Latta, relates to a form of protecting or cushioning the pedals of a velocipede with India rubber. There are eight claims to this patent, the second and third only of which are alleged to be infringed. They are as follows: "(2) The combination, with the pedalframe, of a rubber pedal-bar, H, provided with a central longitudinal groove, h, and two bearing surfaces, h1 h1, on opposite sides of the groove, h, substantially as set forth." "(3) The combination, with the pedalframe, of a rubber pedal-bar, H, pivoted to the frame by a rod, i, and provided on each of its sides with a longitudinal groove, h, and two bearing faces, h1 h1, on opposite sides of the groove, whereby the bar, H, is adapted to receive the pressure at its sides or edges and be compressed on opposite sides of the rod, i, substantially as set forth. 90 The invention in these claims consists in the pedal-bar, combined with the pedalframe, the pedal-bar being rubber, constructed with grooves and bearing faces; the second claim providing for the bar being pivoted to the frame, so that it works easily either side up, and will turn on its bearings as the foot presses on the front face or the rear face of the pedal. The pedal | is centrally grooved, and has two bearing faces, one on each side of the center-rod on which it is pivoted. If there be any novelty at all in the Latta patent it must receive such an exceedingly narrow construction that the defendants cannot be held to have infringed it. In short, the patents which are made the basis of this bill are, in view of the state of the art, all of them of a trivial character, and, so far as they possess any merit at all, are not infringed by the devices employed by the defendants. The decree of the court below dismissing the bill is, therefore, affirmed. (144 U. S. 248) POPE MANUF'G Co. v. GORMULLY & JEFFERY MANUF'G Co. et al. (No. 207.) (April 4, 1892.) PATENTS FOR INVENTIONS-ASSIGNMENT OF SINGLE CLAIM-LIMITATION OF CLAIM-BICYCLE SEATS. 1. One owning a patent with several claims cannot assign a single claim only, so as to convey the legal title, or enable the assignee to sue thereon in his own name, and such an assignment will be construed as a mere license. 2. Letters patent No. 314,142, issued March 17, 1885, to Thomas J. Kirkpatrick, claim "the combination, with the perch or backbone of a bicycle, or similar vehicle, of independent front and rear springs secured to said perch or backbone, and a flexible seat suspended directly from said springs at the front and rear, respectively. substantially as set forth." In the specifications the patentee states that in order to extend the flexible seat as far forward as possible, and at the same time secure the full elasticity of the forward spring, "I construct the said springs with two wings adapted to extend forward of the head, and turn upward and backward to connect with the forward end of the seat." Held, that in view of the Fowler patents of 1880 and 1881, and the Veeder patent of 1882, the patent must be limited to a forward spring adapted to extend forward of the head and turn upward and backward, "substantially as set forth." 34 Fed. Rep. 893, affirmed. Appeal from the circuit court of the United States for the northern district of Illinois. Affirmed. STATEMENT BY MR JUSTICE BROWN. This was a bill in equity for the infringement of two letters patent, namely, No. 216,231, issued to John Shire, June 3, 1879, for an improvement in velocipedes; and, second, patent No. 314,142, issued March 17, 1885, to Thomas J. Kirkpatrick, for a bicycle saddle. Both patents were contested by the defendants upon the grounds of their inva tion thereto it was insisted that plaintiff had no title to the Shire patent. Upon the hearing in the court below the bill was dismissed, and plaintiff appealed to this court. 34 Fed. Rep. 893. L. L. Coburn and Edmund Wetmore, for appellant. C. K. Offield, for appellees. The application of India rubber to foot-lidity and non-infringement, and in addi pedals is shown in the English patent to Harrison of July, 1877, to prevent the slipping of the feet on the pedals. This rub. ber is made corrugated, and is placed in the same position upon the pedals as the ordinary smooth surface rubber had been placed. The English patent to Jackson, of 1876, also shows a treadle cast in one piece, having suitable grooves formed therein to allow of India rubber being affixed within them by means of cement. It is entirely clear that the coating of pedals to prevent slipping being once conceded to be old, there is no novelty in the particular shape in which these rubber coverings are made, or the form which the v.12s.c.-41 Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court. There are two patents involved in this case, both of which relate to what is known as hammock saddles for bicycles. 1. The second claim of the Shire patent, No. 216,231, which is the only one alleged to *248 •250 be infringed, and the only one to which the plaintiff appears to have the title, is as follows: "(2) In a velocipede, an adjustable hammock seat, J, substantially as set forth." Plaintiff derives its title to this patent by assignment from Thomas Kirkpatrick, who himself claimed title to it from Shire, the patentee, under the following instrument. that in order to enable the assignee to sue, the assignment must convey to him the entire and unqualified monopoly which the patentee held, in the territory specified, and that any assignment short of that is a mere license." For," said Chief Justice TANEY, "it was obviously not the intention of the legislature to permit several monopolies to be made out of one, and divided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions upon persons who desired to purchase the use of the improvement, and would sub "Be it known that I, John Shire, of Detroit, Wayne county, Michigan, for and in consideration of one dollar and other valuable considerations to me paid, do hereby sell and assign to Thomas J. Kirkpat-ject a party who, under a mistake as to rick, of Springfield, Clark county, Ohio, all my right, title, and interest in and to the letters patent on velocipedes granted to me June 3, 1879, and No. 216,231, including all rights for past infringement so far as said patent relates to or covers the adjust able hammock seat or saddle, except the right to use said seat or saddle in connection with the velocipede made by me under said patent, in my business at Detroit. "Signed and delivered at Detroit, this 10th day of July, 1884. JOHN SHIRE. 64 99 Witness: J. M. EMERSON. *The instrument should evidently be read as though there were a comma after the word "infringement," as the following words are evidently intended as a limitation upon the prior granting clause. It is then only so far as this patent "relates to or covers the adjustable hammock seat or saddle" that the patentee conveys his right to the same to Kirkpatrick. The | patent itself contains four claims, and covers not only the adjustable hammock seat mentioned in the second claim, but three combinations set forth in other claims, of which the hammock seat is an element in only one. Did this instrument, then, vest in Kirkpatrick the legal title to that element in the patent embodied in the second claim, or was this a mere license, giving him a right to make, use, and sell the device in this claim, but not vesting in him the legal title, or enabling him to sue thereon in his own name, nor to convey such right to the plaintiff? It really involves the question, which is one of considerable importance, whether a patentee can split up his patent into as many different parts as there are claims, and vest the legal title to those claims in as many different persons. This question has never before been squarely presented to this court, but, in view of our prior adjudications, it presents no great difficulty. The leading case upon this subject is that of Gayler v. Wilder, 10 How. 477, 494, wherein it was held that the grant of an exclusive right to make and vend an article within a certain territory, upon paying to the assignor a cent per pound, reserving to the assignor the right to use and manufacture the article by paying to the assignee a cent per pound, was only a license, and that a suit for the infringement of the patent-right must be brought in the name of the assignor. While that, of course, was a different question from the one involved in this case, the trend of the entire opinion is to the effect that the monopoly granted by law to the patenee is for one entire thing, and his rights, used the invention without authority, to be harassed by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons holding different portions of the patentright in the same place. Unquestionably, a contract for the purchase of any portion of the patent-right may be good as between the parties as a license, and enforced as such in the courts of justice. But the legal right in the monopoly remains in the patentee, and he alone can maintain an action against a third party who commits an infringement upon it." As the assignment was neither of an undivided interest in the whole patent, nor of an exclusive right within a certain territory, it was held to be a mere license. In Waterman v. Mackenzie, 138 U. S. 252, 11 Sup. Ct. Rep. 334, an agreement by which the owner of a patent granted to another “the sole and exclusive right and license to manufacture and sell" a patented article throughout the United States, (not expressly authorizing him to use it,) was held not to be an assignment, but a license, and to give the licensee no right to sue in his own name. The language used by the court in this case was a reaffirmance of that employed by Chief Justice TANEY in Gayler v. Wilder, to the effect that the monopoly granted by the patent laws is one entire thing, and cannot be divided into parts, except as authorized by those laws; and that the right of the patentee to assign his monopoly was limited, either, first, to the whole patent, comprising the exclusive right to make, use, and vend the invention throughout the United States; or, second, to an undivided part or share of that exclusive right; or, third, to the exclusive right under the patent within and throughout a specified territory. Rev. St. § 4898. “A transfer," said the court," of either of these three kinds of interests, is an assignment, properly speaking, and vests in the assignee a title in so much of the patent itself, with a right to sue infringers; in the second case, jointly with the assignor; in the first and third cases, in the name of the assignee alone. Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement." We see no reason to qualify in any way the language of these opinions. While it is sometimes said that each claim of a patent is a separate patent, it is true only to a limited extent. Doubtless separate defenses may be interposed to differ *253 ent claims, and some may be held to be good and others bad, but it might lead to very great confusion to perinit a patentee to split up his title within the same territory into as many different parts as there are claims. If he could do this, his assignees would have the same right they now have to assign the title to certain territory, and the legal title to the patent might thus be distributed among a hundred persons at the same time. Such a division of the legal title would also be provocative of litigation among the assignees themselves as to the exact boundaries of their respective titles. We think the so-called assignment to Kirkpatrick was a mere license, and did not vest in him or his assigns the legal title to the second claim, nor the right to sue in his own name upon it. This disposition of the assignment renders it unnecessary to discuss the validity of the patent. 2. Patent No. 314,142, to Thomas J. Kirkpatrick, issued March 17, 1885, contains four claims, the first one of which is relied upon to sustain this bill. This claim is as follows: "(1) The combination, with the perch or backbone of a bicycle or similar vehicle, of independent front and rear springs secured to said perch or backbone, and a flexible seat suspended directly from said springs at the front and rear, respectively, substantially as set forth." 99 "My invention," says the patentee in his specification, "consists in a peculiar arrangement of front and rear springs secured independently to the reach or backbone of the machine in connection with the flexible seat suspended at the front and rear from said springs. These springs, D and E, are secured independently to the perch or backbone, A, each spring being preferably secured as nearly as practicable under the end of the saddle to which said spring is attached. * In order to extend the suspended flexible seat as far forward as possible, and at the same time secure the full elasticity of the forward spring, D, I construct the said spring with two wings, b1 b2, adapted to extend forward of the head, B, and turn upward and backward to connect with the forward end of the seat, C. If this claim be extended, as is insisted by the appellant, to include every device by which a flexible seat is suspended upon the perch or backbone of a bicycle by independent springs at the front and rear ends of such seat, it is anticipated by several patents put in evidence by the defendants. Thus, in the Fowler patent of 1880, a saddle seat is shown to be suspended above the perch or backbone upon a coil spring in front and with a grooved leaf spring in the rear, these springs being entirely independent of each other. In the Fowler patent of 1881 there is exhibited a saddle seat suspended from the backbone by independent front and rear springs, though there may be some doubt whether the seat in either of these cases is flexible. There is no doubt, however, that in the Veeder patent of 1882 there is a flexible saddle seat carried upon the perch or backbone of a bicycle, and resting upon two part of the same springs, which, however, cannot be said to be entirely independent of each other. Evidently, however, the feature of flexibility cuts no figure in this case, since it would manifestly require no invention to adapt the Fowler saddles to a flexible seat. In view of these patents, the Kirkpatrick patent cannot be sustained for the combination indicated without the qualification, "substantially as set forth," at the end of the claim, which limits it to a forward spring adapted to extend forward of the head and turn upward and backward to connect with the forward end of the seat; the effect of this being to throw the seat as far forward as possible, and to render unnecessary any intervening mechanism or device betwen the forward end of the saddle and the perch. Limited in this way, it is clear the de. fendants do not infringe, making use, as they do, of springs which are not only quite different from the Kirkpatrick springs in their design, but omit the important particular of projecting in front of the steering post. There was no error in the action of the court below, and its decree is therefore affirmed. (144 U. S. 254) POPE MANUF'G Co. v. GORMULLY & JEFFERY MANUF'G Co. et al. (No. 208.) (April 4, 1892.) PATENTS FOR INVENTIONS- - ANTICIPATION ELTY-MECHANICAL ADAPTATION. -Nov 1. Letters patent No. 249,278, issued November 8, 1881, to Albert E. Wallace, cover, in claims 2 and 3, a ball-bearing device for vehicles, the balls running in V-shaped grooves, the groove upon the axle being made by two sleeves sliding towards each other, the inner sleeve resting upon the hub of the axle and the outer one connected with the crank, both the crank and the sleeve being threaded with a screw, whereby the sleeve may readily be moved towards or from its fellow, furnishing a means of adjustment to compensate for any wear of the grooves and balls. Held, that the patent is void for want of novelty over the English patent of November 14, 1878, to James Bate, in which the axle groove is formed by two cones, one being adjustable by means of a screw, in substantially the same manner. 2. Letters patent No. 280,421, issued July 3, 1883, to the same inventor, cover, in claim 2, an improvement on the device covered by his patent of 1881, consisting in providing the inner sleeve of that patent with a flange annulus, and attaching to the hub and wheel a locking button, which engages with notches or teeth on the edge of the annulus and locks it to the hub so that the sleeve will always turn with the axle or hub. The in ner sleeve was also made adjustable as well as the outer one. Held, that these were mere mechanical adaptations of the device shown in the English patent of 1880 to Monks. 3. In the patent of 1881, the bearing-box, having a V-shaped groove, was attached directly to the frame of the machine, but claim 3 of the 1883 patent covered a combination wherein the bearing box was free, and was placed within and attached to a shell, which was itself fixed to the frame. Held, that this improvement was anticipated by the Salamon bearing patent of 1880, and the Jeffery patent of 1883. 34 Fed. Rep. 896, affirmed. Appeal from the circuit court of the United States for the northern district of Illinois. Affirmed. may not again arise in the same form. Judgment reversed, and case remanded to the circuit court, with directions to set aside the verdict, and to order a new trial. defendant held to answer for an infamous | involve no question of public interest, and crime without presentment or indictment of a grand jury, of which this court has said: "The question is whether the crime is one for which the statutes authorize the court to award an infamous punishment, not whether the punishment ultimately awarded is an infamous one. When the accused is in danger of being subjected to an infamous punishment if convicted, he has the right to insist that he shall not be put upon his trial, except on the accusation of a grand jury. F: parte Wilson, 114 U. S. 417, 426, 5 Sup. Ct. Rep. 935. It is unnecessary, however, in this case, to express a definitive opinion upon the question whether the omission to deliver the list of witnesses to the defendants would of itself require a reversal of their conviction and sentence for less than a capital offense, inasmuch as they are entitled to a new trial upon another ground. 8. The court went too far in admitting testimony on the general question of conspiracy Doubtless, in all cases of conspiracy, the act of one conspirator in the prosecution of the enterprise is considered the act of all, and is evidence against all. U. S. v. Gooding, 12 Wheat. 460, 469. But only those acts and declarations are admissible under this rule which are done and made while the conspiracy is pending, and in furtherance of its object. After the conspiracy has come to an end, whether by success or by failure, the admissions of of past facts, are not admissible in evidence against the others. 1 Greenl. Ev. § 111; 3 Greenl. Ev. § 94; State v. Dean, 13 Ired. 63; Patton v. State, 6 Ohio St. 467: State 7. Thibeau, 30 Vt. 100: State v. Larkin, 49 N. H. 39; Heine v. Com., 91 Pa. St. 145; Davis v. State, 9 Tex. App. 363. Tested by this rule, it is quite clear that the defendants on trial could not be affected by the admissions made by others of the alleged conspirators after the conspiracy had ended by the attack on the prisoners, the killing of two of them, and the dispersion of the mob. There is no evidence in the record tending to show that the conspiracy continued after that time. Even if, as suggested by the counsel for the United States, the conspiracy included an attempt to manufacture evidence to shield Logan, Johnson's subsequent declarations that Logan acted with the mob at the fight at Dry creek were not in execution or furtherance of the conspiracy, but were mere narratives of a past fact. And the statements to the same effect, made by Charles Marlow to his companions while returning to the Denson farm, after the fight was over, were incompetent in any view of the case. There being other evidence tending to prove the conspiracy, and any acts of Logan in furtherance of the conspiracy being, therefore, admissible against all the conspirators as their acts, the admission of incompetent evidence of such acts of Logan prejudiced all the defendants, and entitles them to a new trial. Upon the other exceptions taken by the defendants to rulings and instructions at the trial we give no opinion, because they Mr. Justice LAMAR did not concur in the opinion of the court on the construction of section 5508 of the Revised Statutes. Mr. Justice BREWER was not present at the argument, and took no part in the decision of this case. (144 U. S. 224) POPE MANUF'g Co. v. GORMULLY. (No. 204.) (April 4, 1892.) PATENTS FOR INVENTIONS-LICENSE-EQUITY-UNCONSCIONABLE STIPULATIONS-VALIDITY. 1. The owner of some 65 patents for improvements on bicycles and tricycles granted a license to another to manufacture and sell under 15 of them, in consideration whereof the licensee expressly admitted the validity of all the licensor's patents, covenanted not to manufacture or sell machines covered by any of them after the license expired or was in any way terminated, even after the patents themselves expired, and agreed that on violation of such covenants the licensor might treat him as liable for the breach, or as a mere infringer, and that, in either case, upon suit brought, an injunction might issue against him without notice. Held, that these stipulations were oppressive and unconscionable, and, it appearing that the licensee was probably unaware of their legal import, equity will not lend its aid to enforce them. 15 2. Whether or not an action could be maintained at law for a breach of the covenants not to manufacture and sell the specific devices, the stipulation not to set up any defense to an action under any of the patents was void as against public policy. 34 Fed. Rep. 877, affirmed. Appeal from the circuit court of the United States for the northern district of Illinois. Affirmed. STATEMENT BY MR. JUSTICE BROWN. This was an appeal from a decree dismissing a bill in equity, wherein the plaintiff sought an accounting upon a contract, and an injunction prohibiting the defendant from manufacturing and selling bicycles and tricycles containing certain patented devices, in violation of a contract entered into between the parties on December 1, 1884. A copy of this contract is printed in the margin.1 The bill alleged that the plaintiff was engaged in the manufacture and sale of bicy. cles and tricycles of superior quality; that 1"This agreement, made this first day of December, 1884, by and between the Pope Manufacturing Company, a corporation established under the laws of Connecticut and having a place of business in Boston, Massachusetts, party of the first part, and R. Philip Gormully, of Chicago, Illinois, party of the second part, witnesseth: "That whereas letters patent of the United States, numbered and dated as in the following list, were duly granted for the inventions therein set forth, and by certain good and valid assignments the same are now owned by the party of the first part: [Here follows a descriptive list of sixty-five patents.] "And whereas said party of the second part is desirous of making, using, and selling to others to be used, bicycles embodying in their construction and modes of operation certain of the said 3 |