stamp, so far as the relation between the stamp proper and the stub is concerned, nor in the identifying marks which constituted the written and printed matter upon both; and the expedient of using a paper backing which prevented the adhesion to the package of the part intended to be detached and removed, it is manifest would be adopted by any skilled person having that end in view. The idea of detaching that portion of the stamp, with the double effect of destroying the stamp by mutilation and preserving the evi. dence of the identity of the package on which it had been first placed in use, which is all that remains to constitute the invention, seems to us not to spring from that intuitive faculty of the mind put forth in the search for new results or new methods, creating what had not before existed, or bringing to light what lay hidden from vision; but, on the other hand, to be the suggestion of that common experience which arose spontaneously, and by a necessity of human reasoning, in the minds of those who had become acquainted with the circumstances with which they had to deal. Cutting out a portion of the stamp, as a means of defacing and mutilating it so as to prevent a second use, was matter of common knowledge and practice before the date of this patent; and cutting out a particular portion on which the identifying marks had been previously written or printed was simply cutting a stub from the stamp instead of cutting the stamp from the stub, as before. So that when the frequency and magnitude of the frauds upon the revenue, committed by the removal of tax-paid stamps from packages on which they had been originally placed by the officer to others surreptitiously substituted for them, or by emptying the packages of their original contents and fraudulently refilling them with spirits on which no tax had been paid, attracted the general attention of the revenue department, the answer to the problem of prevention was found by immediate inference from the existing regulations, in the adoption of the expedient now in question. As soon as the mischief became apparent, and the remedy was seriously and systematically studied by those competent to deal with the subject, the present regulation was promptly suggested and adopted; just as a skilled mechanic, witnessing the performance of a machine, inadequate by reason of some defect, to accomplish the object for which it had been designed, by the application of his common knowledge and experience perceives the reason of the failure and supplies what is obviously wanting. It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice; and is in no sense the creative work of that inventive faculty which it is the purpose of the constitution and the patent laws to encourage and reward. On this ground the decree of the circuit court is reversed, and the cause remanded, with directions to enter a decree dismissing the bill; and it is so ordered.

(113 U. S. 713)

Ex parte FISK, Petitioner.1
(March 2, 1885.)

1. STATE LAWS, WHEN RULES OF DECISION.

The principle that in actions at law the laws of the states shall be regarded as rules of decision in the courts of the United States, (section 721, Rev. St.) and that the practice, pleadings, and forms and modes of proceedings in such cases shall conform as near as may be to those of the courts of the states in which the courts sit, (section 914,) is applicable only where there is no rule on the same subject prescribed by act of congress, and where the state rule is not in conflict with any such law.

18. C. 19 Fed. Rep. 235.

2. SAME-EXAMINATION OF PARTY TO SUIT-NEW YORK STATUTE.

The statute of New York, which permits a party to a suit to be examined by his adversary as a witness at any time previous to the trial in an action at law, is in conflict with the provision of the Revised Statutes of the United States which enacts that "the mode of proof in the trial of actions at common law shall be by oral tes timony and examination of witnesses in open court, except as hereinafter provided." Section 861.

3. SAME-REV. ST. U. 8. 22 861, 863, 866, 867.

None of the exceptions afterwards found in sections 863, 866, and 867, provide for such examination of a party to the suit in advance of the trial as the statute of New York permits.

4. BAME-POWER OF UNITED STATES COURT.

*The courts of the United States sitting in New York have no power, therefore, to compel a party to submit to such an examination, and no power to punish him for a refusal to do so.

5. SAME-ORDER OF STATE COURT BEFORE REMOVAL.

Nor can the United States court enforce such an order made by a state court before the removal of the case into the circuit court of the United States.

6. SAME CONTEMPT-RELEASE-HABEAS Corpus.

Where a person is in custody, under an order of the circuit court, for contempt in refusing to answer under such an order, this court will release him by writ of habeas corpus on the ground that the order of imprisonment was without the jurisdiction of that court.

Petition for Writs of Habeas Corpus and Certiorari.

Wheeler H. Peckham, for petitioner. John R. Dos Passos, for respondent. MILLER, J. This is an application on the part of Clinton B. Fisk for a writ of habeas corpus, to be directed to the marshal of the Southern district of New York, in whose custody the petitioner is held under an order of the circuit court for that district. The history of the case which resulted in this order, so far as it is necessary to the decision of the matter before us, may be briefly stated as follows: Francis B. Fogg brought suit in the supreme court of the state of New York against Fisk to recover the sum of $63,250, on the allegation of false and fraudulent representations made by Fisk in the sale of certain mining stocks. In the progress of the suit, and before the trial, the plaintiff obtained from the court the following order: "Ordered, that the defendant, Clinton B. Fisk, be examined and his testimony and deposition taken as a party before trial, pursuant to sections 870, 871, 872, 873, etc., of the Code of Civil Procedure, and that for such purpose he personally be and attend before the undersigned, a justice of this court, at the chambers thereof, to be held in the new county court-house, in the said city of New York, on the thirty-first day of January, 1883, at 11 o'clock in the forenoon of that day." A motion to vacate this order was overruled, and the judgment finally affirmed by the court of appeals. Thereupon the defendant appeared before the court and submitted to a partial examination, answering some questions and objecting to others, until, pending one of the adjournments of the examination, he procured an order removing the case to the circuit court of the United States. In that court an order was made to continue the examination before a master, to whom the matter was referred. The defendant refusing to be sworn and declining to be examined, he was brought before the circuit court on an application for attachment for a contempt in refusing to obey the order.

Without disposing of this motion, the circuit court made another order, towit: "It is hereby ordered and adjudged that the motion to punish the said defendant for such contempt stand adjourned to the next motion day of this court, to-wit, on the twenty-eighth day of March, 1884. It is further ordered that the defendant Clinton B. Fisk, be, and he is hereby, directed and required to attend personally on the fourteenth day of March, 1884, before the Honorable ADDISON BROWN, one of the judges of this court, at a stated term thereof, at his chambers in the post-office building, in said city of New York, at eleven o'clock in the forenoon of that day; then and there, and on such

*718

other days as may be designated, to be examined, and his testimony and deposition taken, and continued as a party before trial, pursuant to section 870 et seq. of the Code of Civil Procedure, and for the purposes mentioned in said order of January 12, 1883, and February 12, 1884, heretofore made in this action." The defendant appeared before the court in pursuance of this order, and, stating that he was advised by counsel that the court had no jurisdiction to require him to answer in this manner to the questions propounded to him by the counsel for plaintiff, he refused to do so. For this, on further proceeding, he was held by the court to be in contempt, and fined $500, and committed to the custody of the marshal until it was paid. It is to be relieved of this imprisonment that he prays here the writ of habeas corpus.

The jurisdiction of this court is always challenged in cases of this general character, and often successfully. There can be no doubt of the proposition that the exercise of the power of punishment for contempt of their orders by courts of general jurisdiction is not subject to review by writ of error, or appeal to this court. Nor is there, in the system of federal jurisprudence, any relief against such orders, when the court has authority to make them, except through the court making the order, or possibly by the exercise of the pardoning power. This principle has been uniformly held to be necessary to the protection of the court from insults and oppressions while in the ordinary exercise of its duties, and to enable it to enforce its judgments, and orders necessary to the due administration of law, and the protection of the rights of suitors. When, however, a court of the United States undertakes, by its process of contempt, to punish a man for refusing to comply with an order which that court had no authority to make, the order itself, being without jurisdiction, is void, and the order punishing for the contempt is equally void. It is well settled now, in the jurisprudence of this court, that when the proceeding for contempt in such a case results in imprisonment, this court will, by its writ of habeas corpus, discharge the prisoner. It follows, necessarily, that on a suggestion by the prisoner that, for the reason mentioned, the order under which he is held is void, this court will, in the language of the statute, make "inquiry into the cause of the restraint of liberty." Section 752, Rev. St.

That the case as made by the petitioner comes, for the purposes of this inquiry, within the jurisdiction of this court, under the principles above mentioned, is established by the analogous cases. Ex parte Rowland, 104 U. S. 604; Ex parte Lange, 18 Wall. 163. But did the court transcend its jurisdiction in fining the petitioner for contempt? Or, rather, did it have the power to make the order requiring him to submit to the preliminary examination? For, if it had that power, it clearly could enforce obedience to the order by fine and imprisonment if necessary. The record of the entire proceeding in this branch of the case, both in the state court and the circuit court, is before us, and we are thus enabled to form an intelligent opinion on the question presented.

The power of the court to continue the examination of the defendant, after the removal of the case into the court of the United States, is asserted on two grounds: (1) That the order for his examination, having been made by the supreme court of New York, under its rightful jurisdiction, while the case was pending in it, is still a valid order, partially executed, which accompanies the case into the circuit court, and that in that court it cannot be reconsidered, but must be enforced. (2) That if this be not a sound proposition, the circuit court made an independent order of its own for the examination of the defendant, which order is justified by the principle that the Code of Civil Procedure of New York, under which both orders were made, is a part of the law governing the courts of the United States sitting within that state.

We will inquire into the latter proposition first, for the points to be considered in it lie at the foundation of the other also. The general doctrine that

remedies, whose foundations are statutes of the state, are binding upon the courts of the United States within its limits, is undoubted. This well-known rule of the federal courts, founded on the act of 1789, (1 St. 92; Rev. St. § 721,) that the laws of the several states, except when the constitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at common law, was enlarged in 1872 by the pro vision found in section 914 of the Revision. This enacts that "the practice, pleadings, and forms and modes of proceeding in civil cases, other than equity and admiralty causes, in the circuit and district courts, shall conform as near as may be to the practice, pleadings, and forms and modes of proceeding existing at the time in like causes in the courts of record of the state within which such circuit or district courts are held, anything in the rules of courts to the contrary notwithstanding." In addition to this, it has been often deIcided in this court that in actions at law in the courts of the United States the rules of evidence and the law of evidence generally of the states prevail in those courts. The matter in question here occurred in the court below in regard to a common-law action. It was in regard to a method of procuring and using evidence, and it was a proceeding in a civil cause other than equity or admiralty. We entertain no doubt of the decision of the court of appeals of New York that it was a proceeding authorized by the statutes of New York, under which, in a New York court, defendant was bound to answer. The case, as thus stated, is a strong one for the enforcement of this law in the courts of the United States. Ex parte Boyd, 105 U. S. 647. But the act of 1789, which made the laws of the states rules of decision, made an exception when it was "otherwise provided by the constitution, treaties, or statutes of the United States." The act of 1872 evidently contemplates the same exception by requiring the courts to conform to state practice as near as may be. No doubt it would be implied, as to any act of congress adopting state practice in general terms, that it should not be inconsistent with any express statute of the United States on the same subject.

There are numerous acts of congress prescribing modes of procedure in the circuit and district courts of the United States at variance with laws of the states in which the courts are held. Among these are the modes of impaneling jurors, their qualifications, the number of challenges allowed to each party. Two chapters of the Revised Statutes, (17 and 18,) embracing sections 858 to 1042, inclusive, are devoted to the subjects of evidence and procedure alone. The case before us is eminently one of evidence and proced ure. The object of the orders is to procure evidence to be used on the trial of the case, and this object is effected by a proceeding peculiar to the courts of New York, resting alone on a statute of that state. There can be no doubt that if the proceeding here authorized is in conflict with any law of the United States, it is of no force in the courts of the United States. We think it may be added further, in the same direction, that if congress has legislated on this subject and prescribed a definite rule for the government of its own courts, it is to that extent exclusive of any legislation of the states in the same matter. A striking illustration of this effect of an act of congress in prescribing rules of evidence is to be found in section 858 of the Revised Statutes, originally enacted in an appropriation bill in 1864, and the amendment to it passed in 1865. It now reads: '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." This act of congress, when passed, made competent witnesses in the courts of the United States many millions

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of colored persons who were not competent by the laws of the states in which they lived, and probably as many more persons, as parties to suits, or interested in the issues to be tried, who were excluded by the laws of the states. It has never been doubted that this statute is valid in all the courts of the United States, not only as to the introduction of persons of color and parties to suits; but, in the qualification made by the proviso where its language differs from provisions somewhat similar in state statutes, the act of congress, critically construed, has always been held to govern the court. Monongahela Bank v. Jacobus, 109 U. S. 275; S. C. 3 SUP. CT. REP. 219; Potter v. Bank, 102 U.S. 163; Page v. Burnstine, Id. 664; King v. Worthington, 104 U. S. 44. Coming to consider whether congress has enacted any laws bearing on the question before us, we find the following sections of the Revised Statutes, in Chapter 17, on evidence, which we here quote together:

"Sec. 861. The mode of proof, in the trial of actions at common law, shall be by oral testimony and examination of witnesses in open court, except as hereinafter provided."

"Sec. 863. The testimony of any witness may be taken in any civil cause, pending in a district or circuit court, by deposition de bene esse, when the witness lives at a greater distance from the place of trial than one hundred miles, or is bound on a voyage to sea, or is about to go out of the United States, or out of the district in which the case is to be tried, and to a greater distance than one hundred miles from the place of trial, before the time of trial, or when he is ancient or infirm." The remainder of this section, and sections 864 and 865, are directory as to the officer before whom the deposition may be taken, the notice to the opposite party, and the manner of taking, testifying, and returning the deposition to the court.

"Sec. 866. In any case where it is necessary, in order to prevent a failure or delay of justice, any of the courts of the United States may grant a dedimus potestatum to take depositions according to common usage; and any circuit court, upon application to it as a court of equity, may, according to the usages of chancery, direct depositions to be taken in perpetuam rei memoriam, if they relate to any matter that may be cognizable in any court of the United States."

Section 867 authorizes the courts of the United States, in their discretion, and according to the practice in the state courts, to admit evidence so taken; and sections 868, 869, and 870 prescribe the manner of taking such depositions, and of the use of the subpana duces tecum, and how it may be obtained. No one can examine these provisions for procuring testimony to be used in the courts of the United States and have any reasonable doubt that, 30 far as they apply, they were intended to provide a system to govern the practice, in that respect, in those courts. They are, in the first place, too complete, too far-reaching, and too minute to admit of any other conclusion. But we have not only this inference from the character of the legislation, but it is enforced by the express language of the law in providing a defined mode of proof in those courts, and in specifying the only exceptions to that mode which shall be admitted. This mode is "by oral testimony and examination of witnesses in open court, except as hereinafter provided." Of course the mode of producing testimony under the New York Code, which was applied to petitioner, is not oral testimony and examination of a witness in open court, within the meaning of this act of congress. This obviously means the production of the witness before the court at the time of the trial, and his oral examination then; and it does not mean proof by reading depositions, though those depositions may have been taken before a judge of the court, or even in open court, at some other time than during the trial. They would not, in such case, be oral testimony. The exceptions to this section, which all relate to depositions, also show that proof by deposition cannot be within the rule, but belongs exclusively to the exceptions.