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NATIONAL BRAKE & ELECTRIC COM- mode of reviewing in the Federal Supreme PANY, Petitioner,

V.

Court a judgment of the circuit court of appeals upon an application for leave to

NEILS A. CHRISTENSEN and Allis-Chal- file in the district court a petition in the

mers Company.

(See S. C. Reporter's ed. 425-433.)

Bill of review — grounds.

1. The unsuccessful defendant in

a

patent suit, in which a Federal circuit court of appeals has affirmed the decree below, upholding the patent, and directing an accounting, has the right to apply by pe tition to the circuit court of appeals for leave to file a bill in the district court in the nature of a bill of review, setting up as a bar to the former proceedings a decree in another circuit, adjudging the patent to be invalid.

[For other cases, see Review, III. in Digest Sup. Ct. 1908.]

Review leave of court —

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· discretion.

2. An application in an appellate court for leave to file a bill of review in the court below is addressed to the sound discretion of the appellate tribunal, and should be decided upon considerations addressed to the materiality of the new matter and diligence in its presentation.

[For other cases, see Review, IV. c, in Digest Sup. Ct. 1908.]

Bill of review - leave of appellate court - petition.

3. A petition to a Federal circuit court of appeals by which defendant in a patent suit seeks, after that court has affirmed a decree below, upholding the patent and directing an accounting, to obtain the benefit of a decree in another circuit as res judicata, should be treated by the circuit court of appeals as an application for leave to file in the district court a petition in the nature of a bill of review, invoking the consideration of the effect of such decree. [For other cases, see Review, IV. c, in Digest Sup. Ct. 1908.] Certiorari to circuit court of appeals patent case ancillary proceeding. 4. Certiorari, not appeal, is the proper Note. As to when and for what a bill of review may be brought-see notes to Shelton v. Van Kleeck, 27 L. ed. U. S. 269, and Bank of United States v. Ritchie, 8 L. ed. U. S. 891. .

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As to bill of review for newly discovered evidence-see notes to Smith v. Rucker, 30 L.R.A. (N.S.) 1030, and Safe Deposit & T. Co. v. Gittings, 4 L.R.A.(N.S.) 865.

As to certiorari in United States courts-see note to Clark v. Hackett, 17 L. ed. U. S. 69.

On certiorari from Federal Supreme Court to circuit courts of appeals-see notes to United States v. Dickinson, 53 L. ed. U. S. 711, and Furness, W. & Co. v. Yang-tsze Ins. Asso. 61 L. ed. U. S. 409.

nature of a bill of review in a patent suit, since such proceeding was ancillary to the original jurisdiction invoked, and was still, in its essence and nature, a suit involving the validity of a patent, which is expressly made final in the circuit court of appeals. [For other cases, see Certiorari, II. a; Appeal

and Error, III. d, 2, e, in Digest Sup. Ct. 1908.] Certiorari -to circuit court of appeals - review of merits - disposition of cause.

an

5. The Federal Supreme Court, upon reversing on certiorari the judgment of a circuit court of appeals on a petition which that court should have regarded as application for leave to file in the district court a petition in the nature of a bill of review, invoking a consideration of the effect of a decree in another district as res judicata, will not pass upon the merits of the petition, but will remand the cause to the circuit court of appeals for a determination of the effect of such decree. [For other cases, see Certiorari, II. c, in Digest Sup. Ct. 1908.]

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ON WRIT of Certiorari to the United

States Circuit Court of Appeals for the Seventh Circuit to review a judgment denying a petition for an order directing a dismissal of the bill in a suit for the infringement of a patent, brought in the District Court for the Eastern District of Wisconsin. Reversed and remanded for further proceedings.

See same case below, 169 C. C. A. 600, 258 Fed. 880.

The facts are stated in the opinion.

Mr. John S. Miller argued the cause, and, with Messrs. Edward Osgood Brown, Paul Synnestvedt, and Charles A. Brown, filed a brief for petitioner.

Messrs. Joseph Bell Cotton and Louis

Quarles argued the cause, and, with Messrs. William R. Rummler and Willet M. Spooner, filed a brief for respond

ents.

Messrs. Charles Neave and Clarence D. Kerr filed a brief for the General Electric Company as amici curiæ.

Mr. Justice Day delivered the opinion of the court:

Suit was brought by Christensen and the Allis-Chalmers Company in the district court of the United States for [427] the eastern district of Wiscon

sin against the National Brake & Electric Company for infringement of patent to Christensen No. 635,280 for improvement in a combined pump and motor. After answer, the petition was amended so as to set up that Christensen, before the issue of the patent No. 635,280, had obtained a patent for the same invention under No. 621,324, and that, because of defects, the same had been returned to the Commissioner of Patents, and the new letters issued for the same invention, and that the Commissioner of Patents canceled letters patent No. 621324 and issued letters patent No. 635,280 for the full term of seventeen years from October 17, 1899.

In the amended bill it was prayed that the patent monopoly to Christensen be adjudged to be valid for seventeen years from March 21, 1899, the date of the first patent, and the second letters patent be held by the court to be evidence of the grant for the term of seventeen years from that date. Answer was filed, testimony taken, and a decree was rendered in favor of Christensen, the district court holding that whether the patent monopoly was evidenced by one or the other or both of the two letters patent was immaterial. Appeal was taken to the circuit court of appeals for the seventh circuit, where the decree of the district court was affirmed (144 C. C. A. 24, 229 Fed. 564), and mandate was duly issued to the district court. After a petition for rehearing was denied, an application was made to this court for a writ of certiorari, which was denied February 21, 1916. 241 U. S. 659, 60 L. ed. 1225, 36 Sup. Ct. Rep. 447. On the remand to the district court, a master was appointed and an accounting begun. On March 11, 1916, Christensen and the Allis-Chalmers Company filed a bill of complaint against the Westinghouse Traction Brake Company in the district court of the United States for the western district of Pennsylvania. Issues were made up, and evidence was taken.

We do not deem it necessary for present purposes to [428] recite the history of the litigation in the proceed ings in Pennsylvania. Thereafter, the Brake & Electric Company made application in the district court in Wisconsin, asking to have the benefit of the decree in Pennsylvania dismissing the bill by setting up that decree as res judicata. The district court denied the petition. Afterwards, on August 19, 1918, the Brake & Electric Company presented and filed a motion and petition upon which the circuit court of appeals, seventh circuit, rendered the decree which is now the subject of review.

The petition alleges that the decree in the Pennsylvania suit was one presenting the same issues as were presented and considered in the Wisconsin suit; that the plaintiffs were the same, and the defendants were in privity; that in the Pennsylvania suit it was adjudged, in accordance with the mandate issued by direction of the circuit court of appeals of the third circuit, that patent No. 635,280 was issued without warrant, and that the bill of complaint as to that patent should accordingly be dismissed; that, upon further proceedings had in the court of appeals in the third circuit and the district court in Pennsylvania, as to patent No. 621,324, the bill upon that patent was dismissed for want of prosecution. A transcript of the proceedings in the district court of the United States for the western district of Pennsylvania was presented, and petitioner stated that it was advised that the district court for the eastern district of Wisconsin had no power or authority, without the assent of the circuit court of appeals for the seventh circuit, to entertain the motion or application to set aside or modify the former decree of such district court, affirmed by the circuit court of appeals, but that the circuit court of appeals had such jurisdiction and power, and that, because of the final adjudication in the district court for the western district of Pennsylvania, the suit in the district court of the eastern district of Wisconsin should be dismissed on the [429] motion of the petitioner. The petition recited the proceedings in the district court of Wisconsin, and the fact that that court was proceeding to take an accounting under the former decree. The prayer of the petition was that the circuit court of appeals take jurisdiction of the petition, and inquire into and determine the status of the case, and the force and effect of the final judgment of the district court of the western district of Pennsylvania, and hold the same to be a final adjudication, and that the petitioner was entitled to a final decree in the suit in Wisconsin, dismissing the same for want of equity; that the district court be directed to proceed and act accordingly, and the court was asked to issue such orders in the premises, and such writ or writs of certiorari or otherwise, as might be necessary or proper, and such further and different orders, directions, writs, or belief as should seem proper or necessary.

The circuit court of appeals for the seventh circuit refused to grant any relief upon the petition, holding that the decree of the Wisconsin court was final in its character, notwithstanding it was inter

locutory in form, and that the decree in the third circuit could not be set up as res judicata between the parties. 169 C. C. A. 600, 258 Fed. 880. From that decree the writ of certiorari brings the case to this court.

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the same ground as a bill of review, as to which Mr. Justice Nelson, speaking for this court in Southard v. Russell, said: 'Nor will a bill of review lie in the case of newly discovered evidence after the publication, or decree below, where a It thus appears that in a suit upon a decision has taken place on an appeal, unpatent, and one subsequently issued, al- less the right is reserved in the decree of leged to be for the same invention, Chris- the appellate court, or permission be given tensen had obtained a decree in the Wis- on an application to [431] that court consin district court, sustaining the right directly for the purpose. This apto a patent monopoly and an accounting. pears to be the practice of the court From this decree appeal had been taken of chancery and House of Lords, in to the circuit court of appeals for the England; and we think it founded seventh circuit, where the decree was in principles essential to the proper affirmed, and the cause remanded to the administration of the law, and to a district court, where the accounting was reasonable termination of litigation bein progress. Subsequently Christensen tween the parties in chancery suits.' 16brought the suit in Pennsylvania upon the How. 570, 571, 14 L. ed. 1062, 1063. So, patent rights in controversy, which re- in United States v. Knight (United States sulted in a decree which, it is contended, v. Moorhead) 1 Black, 488, 489, 17 L. ed. [430] is binding upon Christensen, and 80, Chief Justice Taney said that, in a res judicata as to the invalidity of the case brought before this court, exercising patent. general jurisdiction in chancery, 'the defeated party, upon the discovery of new evidence, may, after a final decree in this court, obtain leave here to file a bill of review in the court below to review the judgment which this court had rendered.' "

In Re Potts it was held that unless application was made to this court within twenty days for leave to file a petition for a rehearing in the circuit court, the writ of mandamus would issue as prayed.

In such case the Brake & Electric Company, if it wished to avail itself of the Pennsylvania decree, had the right to apply by petition in the appellate court of the seventh circuit for leave to file a bill in the court of original jurisdiction, in the nature of a bill of review, setting up the new matter as a bar to further proceedings. Such applications are addressed to the sound discretion of the appellate tribunal, and should be decided upon consid- In C. & A. Potts & Co. v. Creager, 38 erations addressed to the materiality of C. C. A. 47, 97 Fed. 78, 79, it appears the new matter and diligence in its presen- from the statement of subsequent proceedtation. Goodyear Rubber Co. v. Good-ings in the case that this court, upon apyear, 9 Wall. 805, 19 L. ed. 828; Replication, granted leave to file a petition Gamewell Fire-Alarm Teleg. Co. 20 C. C. for rehearing in the circuit court. A. 111, 33 U. S. App. 452, 73 Fed. 908; Keith v. Alger, 59 C. C. A. 552, 124 Fed. 32; Society of Shakers v. Alger, 23 C. C. A. 263, 47 U. S. App. 170, 77 Fed.

512.

The matter was considered in Re Potts, 166 U. S. 263, 41 L. ed. 994, 17 Sup. Ct. Rep. 520, where this court reversed a decree of the circuit court, dismissing a bill upon a patent, holding that the patent was valid and had been infringed by the defendant, and remanding the cause to the circuit court for further proceedings. It was held that the circuit court had no authority to grant or entertain a petition filed without leave of this court, for a rehearing for newly discovered evidence, and that mandamus was the proper remedy to set aside the order of the circuit court failing to execute the mandate of this court. The authorities were reviewed by Mr. Justice Gray, speaking for the court. Among other things, he said: "In this respect, a motion for a new trial or a petition for a rehearing stands upon

That leave to file a supplemental petition in the nature of a bill of review may be granted after the judgment of the appellate court, and after the going down of the mandate at the close of the term at which judgment was rendered, was held in Re Gamewell Fire-Alarm Teleg. Co. 20 C. C. A. 111, 33 U. S. App. 452, 73 Fed. 908, in a carefully considered opinion rendered by the circuit court of appeals for the first circuit, reciting the previous consideration of the question in cases in this court. We think these cases settle the proper practice in applications of this nature.

This case is unlike the one before us in Hart Steel Co. v. Railroad Supply Co. 244 U. S. 294, 61 L. ed. 1148, 37 Sup. Ct. Rep. 506, in which it was held that a decrce in a patent infringement suit affirmed by the circuit court of appeals for the sixth circuit, while a like decree was pending, but not yet heard, before the circuit court of appeals for the seventh circuit, upon a [432] motion seasonably made in the

latter court of appeals, should have been | held to be res judicata because of the legal identity of the subject-matter and privity of the parties.

In the instant case the circuit court of appeals for the seventh circuit, treating the application as an original petition to have the decree made in the third circuit pronounced res judicata; held that the former decree in the seventh circuit was final, and denied the prayer of the petition.

In our view the proper practice in matters of this sort required the circuit court of appeals to regard the petition, taking all of its allegations together, and with its prayer for general relief, as an application for leaye to file in the district court a petition in the nature of a bill of review, invoking a consideration of the effect of the judgment in the third circuit. Such consideration the circuit court of appeals may well be directed to undertake in the exercise of its proper function in determining the rights of the parties, and for that purpose its judgment should be reversed, without passing in this court upon the merits of the petition. This procedure is sanctioned by former decisions of this Lutcher & M. Lumber Co. V. Knight, 217 U. S. 257, 54 L. ed. 757, 30 Sup. Ct. Rep. 505; William Cramp & Sons Ship & Engine Bldg. Co. v. International Curtis Marine Turbine Co. 228 U. S. 646, 57 L. ed. 1006, 33 Sup. Ct. Rep. 722; Brown v. Fletcher, 237 U. S. 583, 59 L. ed. 1128, 35 Sup. Ct. Rep. 750.

court.

Court of Appeals should be reversed, and the case remanded to that court for further proceedings upon the petition filed by the National Brake & Electric Company, in conformity with the opinion of this court.

Reversed.

BARTHOLOMEW SULLIVAN, Margaret
Tholen, John Martin, et al., Appts.,

V.

JANE KIDD.

(See S. C. Reporter's ed. 433-443.) Treaties · construction.

1. Treaties are to be interpreted upon
the principles which govern the interpre
tation of contracts in writing between in-
dividuals, and are to be executed in the
utmost good faith, with a view to making
effective the purposes of the contracting
parties, and all parts of the treaty are to
receive a reasonable construction, with a
view to giving a fair operation to the whole.
[For other cases, see Treaties, II. in Digest
Sup. Ct. 1908.]

Treaties — executive construction.
2. While the question of the construc
tion of treaties is judicial in its nature,
and courts, when called upon to act, should
be careful to see that international engage
ments are faithfully kept and observed, the
construction placed upon a treaty and con-
sistently adhered to by the executive de-
partment of the Federal government, charged
with the supervision of foreign relations,
[For other cases, see Treaties, II. in Digest
should be given much weight.

Sup. Ct. 1908.]

Aliens

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effect of treaty inheritance by Canadian.

A motion was made to dismiss the writ of certiorari upon the ground that this case is one in which an appeal might have been had. But we are of opinion that, in view of the nature of the application, and 3. British subjects, citizens and resi the status of the case brought for infringe- dents of Canada, do not inherit real prop ment of the patents in question, the pro-laws, by virtue of the stipulations of the erty in the United States, contrary to local ceeding was not of that character in which treaty with Great Britain of March 2, 1899, an appeal would lie to this court. We nor by reason of the most-favored-nation held in Macfadden v. United States, 213 clause of said treaty, in the absence of U. S. 288, 53 L. ed. 801, 29 Sup. Ct. Rep. notice of adhesion to the treaty on behalf 490, that the line of division between cases of the Dominion of Canada, as required by appealable from the circuit court of ap- art. 4, which provides that the stipulations peals and those made final in that court of such treaty shall not be applicable to was determined by the [433] source unless notice to that effect shall be given any British colonies or foreign possessions of original jurisdiction of the trial on behalf of such colony or foreign posses court, and not by the nature of the sion by the British representative at Washquestions of law raised or decided.

In our view the petition filed in the circuit court of appeals was ancillary to the original jurisdiction invoked, and was still in its essence and nature a suit involving the validity of a patent, which is expressly made final in the circuit court of appeals, subject to the right of this court to review by writ of certiorari.

Note. As to effect of treaty on right of alien to inherit-see notes to Johnson v. Olson, L.R.A.1915E, 327, and Rixner's Succession, 32 L.R.A. 177.

On treaty guaranties to aliens-see note to Gandolfo v. Hartman, 16 L.R.A. 277.

On alien's right to inherit-see note It follows that the decree of the Circuit' to Easton v. Huott, 31 L.R.A. 177.

ington to the Secretary of State of the allegiance to the government, rather than in the sense of mere domicil.

United States.

[For other cases, see Aliens, III. b, 4, in Digest Sup. Ct. 1908.]

[No. 65.]

Argued and submitted April 27, 1920. Re stored to docket for reargument May 17, 1920. Reargued December 10, 1920. De cided January 3, 1921.

APPEAL from the District Court of

the United States for the District of Kansas to review a decree upholding the right of a Canadian to inherit real property in the United States. Reversed. The facts are stated in the opinion. Messrs. George F. Beatty and B. I. Litowich submitted the cause for appellants. Messrs. C. W. Burch and La Rue Royce were on the brief:

Under the common law, an alien cannot inherit. In the absence of the treaty, the right of inheritance is governed by statute.

Blythe v. Hinckley, 180 U. S. 333, 45 L. ed. 557, 21 Sup. Ct. Rep. 390; Jones v. Jones, 234 U. S. 615, 58 L. ed. 1500, 34 Sup. Ct. Rep. 937; Johnson v. Olson, 92 Kan. 819, L.R.A.1915E, 327, 142 Pac.

256.

Mr. H. M. Langworthy argued the cause, and, with Messrs. O. H. Dean, R. B. Thomson, R. D. Williams, J. E. Madden, and W. D. McLeod, filed a brief for appellee:

An alien can take lands by purchase, and there is no distinction whether the purchase be by grant or by devise.

Fairfax v. Hunter, 7 Cranch, 603, 619, 3 L. ed. 453, 458; Johnson v. Olson, 92 Kan. 822, L.R.A.1915E, 327, 142 Pac. 256; State v. Ellis, 72 Kan. 285, 83 Pac. 1045.

Treaties must receive a fair and liberal interpretation, and a sensible construction which will accomplish the obvious intent of the parties is to be preferred as against one which is contrary to the obvious spirit and intent. 1 Kent, Com. 174; Shanks v. Dupont, 3 Pet. 242, 7 L. ed. 666; Hauenstein v. Lynham, 100 U. S. 483, 487, 25 L. ed. 628, 630; Geofroy v. Riggs, 133 U. S. 258, 33 L. ed. 642, 10 Sup. Ct. Rep. 295; Re Ross, 140 U. S. 453, 475, 35 L. ed. 581, 590, 11 Sup. Ct. Rep. 897; United States v. Texas, 162 U. S. 1, 36, 40 L. ed. 867, 879, 16 Sup. Ct. Rep. 725.

There can be no doubt that the terms "citizens and subjects" and "citizens or subjects," used in the treaty under consideration, are used in the broader sense, based upon nationality and permanent

Dicey, Confl. 2d ed. 1908, 166-191; United States v. Wong Kim Ark, 169 U. S. 649, 42 L. ed. 890, 18 Sup. Ct. Rep. 456; MacKenzie v. Hare, 239 U. S. 299, 311, 60 L. ed. 297, 391, 36 Sup. Ct. Rep. 106, Ann. Cas. 1916E, 645; Harding v. Standard Oil Co. 182 Fed. 421; Hammerstein v. Lyne, 200 Fed. 165.

Under the most-favored-nation clause of the treaty, Margaret Ingoldsby was entitled to inherit.

McEvoy v. Wyman, 191 Mass. 276, 114 Am. St. Rep. 601, 77 N. E. 379; McGovern v. Philadelphia & R. R. Co. 235 U. S. 389, 59 L. ed. 283, 35 Sup. Ct. Rep. 127, 8 N. C. C. A. 67; Re Lobrasciano, 38 Misc. 415, 77 N. Y. Supp. 1040; Re Fattosini, 33 Misc. 18, 67 N. Y. Supp. 1119.

A treaty should be construed as a whole, and in the light of the circumstances and conditions existing at the

time it was entered into.

"Treaties," 38 Cyc. 961; Re Ross, 140 U. S. 453, 35 L. ed. 581, 11 Sup. Ct. Rep. 897; Strother v. Lucas, 12 Pet. 410, 9 L. ed. 1137; United States v. Payne, 8 Fed. 883; 1 Oppenheim, International Law, p. 560.

Solicitor General Frierson, by special leave, submitted the cause for the United

States.

Mr. Justice Day delivered the opinion of the court:

This is an appeal from a decree of the United States district court for the district of Kansas. It involves the construction of the Treaty between Great Britain and the United States of March 2, 1899, relating to the tenure and disposition of real and personal property. Compilation of Treaties in Force 1904, 375 (Malloy); 31 Stat. at L. 1939.

The case arises from the following facts:

Peter Martin died at Osawatomie, Kansas, January 29, 1915, owning real estate situated in the county of Saline, Kansas. He left surviving him certain relatives, among others a sister, Margaret Ingoldsby, a resident of the township of Sheffield, county of Lennox-Addington, province of Ontario, Canada. After the death of Peter Martin, and on July 28, 1916, Margaret Ingoldsby died at her home in Canada, and by her last will and testament, duly probated, she named the appellee, Jane Kidd, her sole devisee and legatee. The real estate in Kansas has been sold in partition sale, and the question to be decided is whether Jane Kidd,

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