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in New York Scaffolding Co. v. Liebel-Bin- | 145 U. S. 156-161, 36 L. ed. 658, 660, 12 ney Construction Company, ante, 112.

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such function.

Topliff v. Topliff, 145 U. S. 156-161, 36 L. ed. 658-660, 12 Sup. Ct. Rep. 825. Not only must the device of the patent in suit be found in a prior patent, to constitute anticipation of invention, or to establish want of patentable novelty, but it must be found there in its operative entirety.

Continental Paper Bag Co. v. Eastern Paper Bag Co. 210 U. S. 405, 408, 52 L. ed. 1122, 1123, 28 Sup. Ct. Rep. 748. The combination is a composition of elements, some of which may be old and others new, or all old or all new. It is, however, the combination which is the invention, and it is as much a unit in contemplation of law as a single or noncomposite instrument.

Leeds & C. Co. v. Vietor Talking Mach. Co. 213 U. S. 325, 332, 53 L. ed. 816, 818, 29 Sup. Ct. Rep. 503.

Invention is measured by the new results produced. If a new result is produced, and it is a useful result, it does not matter how radical a change has been made over the devices of the prior art. It may be only a step, but if it is the last step, it wins.

Expanded Metal Co. v. Bradford, 214 U. S. 366, 381, 53 L. ed. 1034, 1039, 29 Sup. Ct. Rep. 652; Topliff v. Topliff,

Sup. Ct. Rep. 825; Barbed Wire Patent (Washburn & M. Mfg. Co. v. Beat 'Em All Barbed Wire Co.) 143 U. S. 283, 36 L. ed. 158, 12 Sup. Ct. Rep. 443, 450; C. & A. Potts & Co. v. Creager, 155 U. S. 597-608, 39 L. ed. 275, 279, 15 Sup. Ct. Rep. 194.

Messrs. Robert H. Parkinson and Wal

lace R. Lane argued the cause, and, with Mr. George Mankle, filed a brief for respondents.

Mr. Justice McKenna delivered the

opinion of the court:

Suit by petitioner against Chain Belt Company et al., for infringement of a patent considered in No. 22 [254 U. S. 24, ante, 112, 41 Sup. Ct. Rep. 18.] The bill contains the usual allegations, and prays for an accounting, for damages, and injunctions, preliminary and final.

A copy of the opinion of the circuit court of appeals for the eighth circuit in the suit of the Scaffold Company against Egbert Whitney, expressing the judgment of the court sustaining the validity of the patent, and adjudging Whitney to be an infringer of it, is attached to the bill.

The answer denied invention, and sets forth a number of patents as anticipations; among others, a patent to William Murray. A dismissal of the suit was prayed.

A trial was had upon the issues thus made, which resulted in an interlocutory decree awarding an injunction, adjudging infringement, and an accounting.

The injunction decreed is as follows: "That an injunction be issued under the seal of this court unto the said Chain Belt Company, and the said Egbert Whitney, [34] enjoining them, and each of them, their several agents, officers, employees, and all persons in privity with them, and each of them, from making or selling, or causing to be made or sold, the machine known as machines" "Whitney Scaffold Hoist and "Little Wonder" machines, to be used in the combinations of claims 1 and 3 of said U. S. Patent No. 959,008, or from using or causing said machines to be used in the combinations of said claims, or from infringing upon said claims in any manner whatsoever."

The circuit court of appeals agreed with the district court that the Henderson patent exhibited invention, expressing the view, however, that, while its advance was slight, it was "not so wholly wanting in invention or novelty as to justify a finding contrary to the pre

The court, however, decided that the decree was "erroneous in finding infringement in the manufacture or sale or in any use of the Little Wonder machine." The decree of the district court was reversed, with directions to enter a decree in accordance with the views expressed.

sumptive validity of the grant to him." Henderson's testimony, which [35] we The court fortified its views by the insert in the margin somewhat fully, as decision of the circuit court of appeals it cannot be adequately represented in of the eighth circuit in New York condensation or by paraphrase.2 [36] Scaffolding Co. v. Whitney, 140 C. C. From his testimony, it is certain that A. 138, 224 Fed. 452, citing, however, to his scaffold did not cause him sleepless the contrary, the decision of the circuit nights or laborious days. He was not court of appeals of the third circuit, in experienced in the art of which it is an New York Scaffolding Co. v. Liebel- example. It may be that the conceptions Binney Constr. Co. [254 U. S. 24, ante, of invention cannot be tested by such or 112, 41 Sup. Ct. Rep. 18], the decision by moments of time, and that originaliwe have just affirmed. ty does not [37] need the aid or delay of drudgery; but one is forced to think that where a change is readily made in any composite instrumentality, the change is not the prompting or product of invention. Indeed, it is a common experience in patent cases that mere mechanical facility can alter or change the form in which originality and merit expressed themselves, and assert for it the claim of invention. This case is an example of such pretension. We may repeat counsels' question and ask what did Henderson do that Murray did not do? He made the U-frame which supported the hoisting device of continuous metal instead, as Murray did, of several pieces riveted together, and in the stirrup which it formed Hotel, and that shortly after he went down to the hotel.

The Henderson patent was made the basis of recovery in New York Scaffolding Co. v. Liebel-Binney Constr. Co. No. 22, just decided, and there we estimated its inventive quality as tested by the prior art, and as representative of that we took the patent of William Murray, accepting it as an advance upon the prior art.

We need only add to what was there said that our conclusion is confirmed by

2 After stating the schools and colleges he had attended, and that he was admitted to the bar in 1910, he testified as follows:

3 Q. Will you state when you first acquired any knowledge of the scaffolding busi

ness and how it came about?

A. The first time I had any occasion to consider scaffolding on buildings was about in February, 1910-February, 1909. I was having dinner with Mr. Merrill, then president of the Noel Construction Company, and I explained to Mr. Merrill a certain gas engine I was designing, attempting to get a patent at that time, and Mr. Merrill, whom I had known while I was at the academy at Annapolis, put up to me a proposition of scaffolding on the city hall, which the Noel Construction Company was then building in Chicago, and explained to me the great expense of building up a scaffold from the ground, and stated that it was much more convenient and cheaper to scaffold by swinging the scaffold from an overhead outrigger. He said there was such a scaffold in use and being put up by a New York concern, but that the rental charged by the New York concern was prohibitory of its use on the city hall, and said with my mechanical training I ought to be able to devise a means of swinging a scaffold, and instructed me to go ahead and see what I could do.

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A. This was in February, 1909.

He further testified that Mr. Merrill called his attention to devices that were then in use in Chicago at the Blackstone

He further testified:

A. On the north side of the building there was a scaffold suspended by overhead outriggers, cables led down to a drum, the cable passed over a little pulley wheel on the top cross member of the scaffold down to a drum, and the drums were in pairs opposite at right angles to the building. These drums were supported above a U-frame which was held in place, bolted, with two angle irons, the bolts passed through the U-frame, and then the planking were laid along the scaffold on top of the angle irons, which was bolted to the U-frames, and the drums were operated by means of the ratchet lever, to which the men put a pipe, making an extension, and pumped it up and down.

13 Q. Just how were the putlogs supported relative to the U-frame concerning which you have testified?

A. The putlogs were bolted alongside of the U-frame, and the bolts passed through the U-frame.

14 Q. Did you see the machines operate? A. Yes, the men were laying brick along the scaffold; a couple of laborers hoisted one end of the scaffold.

15 Q. So you saw it raised during the time you were there?

A. Yes, sir.

16 Q. At that time had you done any work on what later developed into your patent in suit?

A. I had not.



JAMES BUTT, alias Wong Sing.

(See S. C. Reporter's ed. 38-42.)

ers -


immigration · Chinese laborExclusion and Immigration

he rested the putlogs or beams loosely, UNITED STATES OF AMERICA, Piff. in making a hinged joint connection between the stirrup and the hoisting machines, with a resulting flexibility. This consequence and its advantage, if it have such, it is admitted he did not discern, and naturally. His purpose was evasion. To evasion he was prompted. Beyond what was necessary to that he exerted no vision or conception. He had had no experience in the art, and what knowledge of the Murray scaffolding he had was obtained by a thirty minutes' observation of it in operation. We yield to the assertion of counsel that he cannot be deprived of an advantage because he did not discern it, but the same concession must be given to Murray. He was entitled to all of the benefit that he claimed for his device, or that can be given to it by formal changes. It will be observed that the Circuit Submitted October 18, 1920. Court of Appeals and the District Court disagreed in their views of the relation [38] of the Little Wonder ma

chine to the Henderson device, the latter considering it an infringement, the former determining otherwise, and to that extent reversing the decree of the District Court. Both courts, however, concurred in ascribing invention to the Henderson device. In this both courts erred, and the decree of the District Court is therefore reversed, and the case remanded to that court with directions to dismiss the bill of complaint on the ground that the Henderson patent is invalid, it exhibiting no invention.

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ideas. I told him no, that I had not.
said, "I have been depending upon you to
design something, and I have got to have
something." So he called in Mr. Peterson,
the superintendent, took me over to the
city hall and showed me the wall he wanted
to scaffold in the court there, and I then

A person bringing Chinese laborers into the United States, who, because of failure actually to land the aliens in the United States, did not proceed far enough to violate the Chinese Exclusion Act of July 5, 1884, § 11, may be prosecuted under the the latter section being broader and more Immigration Act of February 5, 1917, § 8, comprehensive in its terms. [For other cases, see Aliens, VI. b, in Digest Sup. Ct. 1908.]

[No. 275.]

vember 8, 1920.

Decided No

N ERROR to the District Court of the United States for the Northern District of California to review a judgment quashing an indictment for bringing Chinese laborers into the United States. Reversed.

The facts are stated in the opinion.

Assistant Attorney General Stewart and Mr. Harry S. Ridgely submitted the cause for plaintiff in error.

No brief was filed for defendant in


Note. As to who are alien laborers within the meaning of the contract labor laws-see notes to Scharrenberg v. Dollar S. S. Co. 62 L. ed. U. S. 189, and United States v. Union Bank, 8 A.L.R. 1442.

the windlass to the putlog, I found I could utilize pieces of 2 x 10 around the building for putlogs and place them in the U-frame, and would make the scaffolds easier to put into the building and much simpler to dismantle,-to take off.

Q. Where did you get your knowledge of the U-frame being used in this line of


A. I saw U-frames on the Blackstone Hotel. It was just an ordinary stirrup.

went over to Carpenter & Company and in spected some winches he had there to see if it was practicable to bolt the winches to wooden putlogs. And owing to the fact that Carpenter & Company wanted more There is a denial of advantage, and it money than Merrill could pay for scaffold, was admitted at the argument that rigidity didn't make a deal with him. Then I went of the putlog and frame was sometimes rehome and made up the design for the scaf- sorted to. Counsel tried to minimize the fold that I subsequently applied for a patent necessity or practice by saying that it was on, and took it down to Brown & Williams, accomplished by a ten-penny nail. Maniattorneys, and asked them if I could get a festly it was the effect and its necessity or patent on it. They thought I could. Mr. advantage which were important, not the Merrill said he would have Parker & Carter | means of their accomplishment, and the investigate if there would be no infringe- necessity or advantage cannot be estimated ment on the winch, and instead of bolting

by the size of the nail.

[41] Mr. Justice McKenna delivered, the opinion of the court:

Error to review a judgment of the district court, quashing an indictment against defendant in error, Butt, which charged him with feloniously bringing four Chinese aliens into the United States, in violation of the Immigration Act of February 5, 1917 (chap. 29, 39 Stat. at L. 874, 880, Comp. Stat. §§ 42891a, 4289łdd, Fed. Stat. Anno. Supp. 1918, pp. 212, 220.

The legality of the ruling depends upon the coexistence of that act with the Chinese Exclusion Act of July 5, 1884 (23 Stat. at L. 117, chap. 220, 2 Fed. Stat. Anno. 2d ed. p. 76).

We may use in exposition of the case the memorandum of the district court (Judge Rudkin). It appears therefrom that an earlier indictment was presented against Butt, charging him in three counts with having brought the same four Chinese aliens into the United States. The first two counts were based on § 8 of the Immigration Act of February 5, 1917, and the third count on § 11 of the Chinese Exclusion Act. All of the counts were based on the unlawful landing of four Chinese laborers into the United States. A motion to quash the first and second counts on the grounds of misjoinder, and on the further ground that the several acts did not state facts sufficient to constitute a crime, was granted. The ruling was based on a decision of the circuit court of appeals for the eighth circuit (Stoneberg v. Morgan, 158 C. C. A. 324, 246 Fed. 98).

Upon the trial of the third count a

verdict of not guilty was directed by the court (Judge Farrington), the government having failed to prove that the Chinese were actually landed in the Unit

ed States.

On June 11, 1919, the indictment in controversy was found. As we have said, it charged Butt with bringing the same Chinese aliens into the United States, and all of its counts were based on the Immigration Act. A motion to quash was made, accompanied by the record in the former case, in the nature of a plea of former jeopardy. [42] To this procedure the government consented, but contended that, inasmuch as defendant did not proceed far enough to violate & 11 of the Exclusion Act, he was subject to prosecution under § 8 of the Immigration Act, it being broader and more comprehensive in its terms. To this contention the court replied, and we quote its language: "In my opinion Congress did not intend that the


courts.should indulge in any such refinement as this. In other words, Congress either intended that persons bringing Chinese laborers into the United States should be prosecuted under the Immigration Act, or that they should not. Such was manifestly the view of the circuit court of appeals for the eighth circuit in the case already cited." The court considered that it was its duty to follow that decision until the question should be decided by the circuit court of appeals for the ninth circuit or by this court. The motion to quash was sustained.

This ruling is attacked and that of the case adduced in its support, by the citation of United States v. Wong You, 223 U. S. 67, 56 L. ed. 354, 32 Sup. Ct. Rep. 195, and United States v. Woo Jan, 245 U. S. 552, 557, 62 L. ed. 466, 467, 38 Sup. Ct. Rep. 207.

The cases support the contention for which they are cited, and it follows, therefore, that the ruling of the District Court in the case at bar, sustaining the motion to quash the indictment, was error, and it is reversed.

So ordered.

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1. No recovery can be had under the

Note. On the constitutionality, ap


plication, and effect of the Federal EmLamphere v. Oregon R. & Nav. Co. 47 ployers' Liability Act-see notes R. Co. v. Horton, L.R.A.1915C, 47. L.R.A. (N.S.) 38, and Seaboard Air Line

of risk-see notes to Pidcock v. Union Generally, as to servant's assumption. P. R. Co. 1 L.R.A. 131; Foley v. Pettee Mach. Works, 4 L.R.A. 51; Howard v. Delaware & H. Canal Co. 6 L.R.A. 75; Hunter v. New York, O. & W. R. Co. 12 L.R.A. 342; Kehler v. Schwenk, 13 6 L.R.A. 246; Georgia P. R. Co. v. Dooly, L.R.A. 374; and Southern P. Co. v. Seley, 38 L. ed. U. S. 391.

and rules of law to actions under the On the applicability of state statutes Federal Employers' Liability Act-see note to McLain v. Chicago G. W. R. Co. 12 A.L.R. 693.

On what questions the Federal Supreme Court will consider in reviewing the judgments of state courts-see note to Missouri ex rel. Hill v. Dockery, 63 L.R.A. 571.

Federal Employers' Liability Act of April 22, 1908, by an employee who was injured as the result of defects in a claw bar he was using, where such defects were

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obvious that an ordinarily prudent employee

would not have used it.

[For other cases, see Master and Servant, II b, in Digest Sup. Ct. 1918 Supp.] Commerce conflicting state and Fedemployers' liability.

eral law

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servant assumes extraordinary risks incident to his employment, or risks caused by the master's negligence which preciated by him. And the defense of are obvious or fully known to and apassumption of risk, according to the rule of common law, is available in a case under the Federal Employers' Liability Act, except in the circumstances de

2. The requirement of the Federal Em-scribed in § 4 of the act. ployers' Liability Act of April 22, 1908, as to the effect as a defense of the assumption of risk by an employee, prevails over any

state law.

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3. A judgment of the highest court of a state, which affirmed a judgment of the trial court in favor of plaintiff in an action under the Federal Employers' Liability Act of April 22, 1908, in which the trial court refused to instruct the jury that the effect of the assumption of risk by such employee,

Seaboard Air Line R. Co. v. Horton, 233 U. S. 492, 58 L. ed. 1062, L.R.A. 1915C, 1, 34 Sup. Ct. Rep. 635, Ann. Cas. 1915B, 475, 8 N. C. C. A. 834; Jacobs v. Southern R. Co. 241 U. S. 229, 60 L. ed. 970, 36 Sup. Ct. Rep. 588; Chesapeake & O. R. Co. v. DeAtley, 241 U. S. 310, 313, 60 L. ed. 1016, 1019, 36 Sup. Ct. Rep. 564; Erie R. Co. V. Purucker, 244 U. S. 320, 324, 61 L. ed. 1166, 1167, 37 Sup. Ct. Rep. 629; Boldt v. Pennsylvania R. Co. 245 U. S. 441, 445, 62 L. ed. 385, 389, 38 Sup. Ct. Rep.


incident to the use of a defective claw bar, and the circumstances under which it was The defense of assumption of risk in used, was to relieve defendants from liability for the resulting injury, amending such actions under the Federal Employers' instruction by adding that such fact is to Liability Act is a matter of substance, be considered by the jury in determining the and not subject to control by the statamount of plaintiff's recovery, if any, un-utes or the local rule of law adopted by der all of the instructions, must be re- the courts of the several states. It is versed by the Federal Supreme Court where the duty of the courts of the several such refusal and modification were assigned as error in the highest state court, and that states to give effect to the defense of court considered and decided that the fact assumption of risk, in actions under such was of no determining importance, and, if act, in accordance with the rule of the it existed, constituted only contributory common law as adopted and enforced by negligence, and could operate only in re- this court. duction of the amount of recovery, not to defeat recovery.

[For other cases, see Appeal and Error, 5127

5141, in Digest Sup. Ct. 1908.]

[No. 26.]

Seaboard Air Line R. Co. v. Horton, Supra; Atchison, T. & S. F. R. Co. v. Harold, 241 U. S. 371, 377, 60 L. ed. 1050, 1054, 36 Sup. Ct. Rep. 665; New York C. R. Co. v. Winfield, 244 U. S. 147, 150, 61 L. ed. 1045, 1048, L.R.A.

Argued October 8, 1920. Decided November 1918C, 439, 37 Sup. Ct. Rep. 546, Ann.


8, 1920.

N WRIT of Certiorari to the Supreme Court of the State of Missouri to review a judgment which, reversing a judgment of the Kansas City Court of Appeals, in that state, affirmed a judg

ment of the Chariton Circuit Court in favor of plaintiff in an action under the Federal Employers' Liability Act. Reversed and remanded for further proceedings.

See same case below, 272 Mo. 613, 200

S. W. 53.

The facts are stated in the opinion.

Mr. Frederic D. McKenny argued the cause, and Messrs. James L. Minnis and N. S. Brown filed a brief for petitioners: By the rule of the common law as adopted and enforced by this court, a

Cas. 1917D, 1139, 14 N. C. C. A. 680; New Orleans & N. E. R. Co. v. Harris, 247 U. S. 367, 371, 62 L. ed. 1167, 1170, 38 Sup. Ct. Rep. 535.

Mr. Roy W. Rucker argued the cause and filed a brief for respondent:

The record shows that the judgment was for the right party, and therefore it will not be disturbed.

252 U. S. 18, 64 L. ed. 430, 40 Sup. Ct. Chicago, R. I. & P. R. Co. v. Ward, Rep. 275.

Mr. Justice McKenna delivered the opinion of the court:

Action for personal injuries based on Employers' Liability Act. Negligence is charged against petitioners as receivers of the Wabash Railroad Company.

Respondent Williams, plaintiff in the

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