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Vol. IV.)


(No. 4.



[FEBRUARY, 1877.]



The formal expression 6 as shown and described " is not to be taken to limit a claim to

the exact construction shown and described. Hence where the claim of the patent was for a plug of tobacco having a hard label pressed into one of its faces as specified," the description setting forth that the label was to be applied underneath the wrapper, and it appeared that defendant applied his label outside of the wrapper, it was held that the claim was infringed and a preliminary injunction was granted.

THE facts are sufficiently stated in the opinion. George Harding, for complainant. Leonard Myers, contra. McKENNON, J. This is a motion for an interlocutory injunction, to restrain infringement of the patent set up in the complainant's bill.

An original patent was granted Charles Seidler, on the 12th of January, 1875, which was surrendered and reissued to him October 24, 1876. The invention is thus described : “I have discovered and successfully developed in practice, a means of marking and distinguishing tobacco in plugs. I prepare labels or distinguishing pieces of separate material, and impress them into the body of the plugs, one label into each plug, preferably putting the label under the outside wrapper, and giving it a character by raised letters or analogous device, which is recognizable through the flexible covering. The material of which these labels are composed is preferably sheet iron tinned, cut into a circular form, and having points or prongs bent backward from their edges, and with raised or sunken letters or marks upon their upper face to indicate the quality, origin, or trade-mark. Before the plug of tobacco is subjected to its final pressure, one of these labels is placed upon it in proper position, and, by powerful pressure, the prongs of the label are sunk into the tobacco so that its face is about flush with the outer surface of the plug, and adheres firmly to it. An outer leaf of properly dampened tobacco is then wrapped around the plug, which is subjected to a powerful pressure, and the label is seen beneath this wrapper, and is rendered thereby difficult of removal. The invention is therefore claimed under five heads, the first and third of which are:

“1. A plug of tobacco having a hard label pressed into one of its faces as specified.

"3. A plug of tobacco having letters or other decorative or distinguishing marks produced on a hard metallic surface, and pressed as specified.”

These claims the respondents are alleged to have infringed, and construing them, as I think they must be construed, to indicate the impressment of a hard or metallic label upon either the inner or outer face of a plug of tobacco, the fact of infringement is clearly made out, both by the

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affidavits read in support of the motion and by an inspection of the tobacco manufactured and sold by the respondents.

This construction of the patent has been very earnestly contested upon the ground that the specification describes only the mode of applying the label to the plug underneath the outer covering, and that the words “ as specified " limit the scope of the claims to that particular mode ; but the patentee must be understood as merely describing what he regards as the best mode of practising his invention, as the law requires him to do, and not as excluding a method different from it only in a single detail, which produces the same result and is distinctly within its object. He claims to have discovered a new method of identifying tobacco, which consists in the attachment of a hard label to each plug by pressing into it the points or prongs which project from the under surface of the label, and thus the fundamental object of his invention is fully effectuated. When this is done the outside wrapper is applied ; but the label is thus placed underneath the wrapper, not as auxiliary in any way to the specific office of the label, but avowedly only to render it more difficult of removal. It is obvious then that to dispense with the additional safeguard, and to apply the label outside of the wrapper, does not differentiate the devices, nor does it vary the method of attaching them to the plug in any essential degree.

Of the objections to the validity of the patent, but little need be said at this stage of the case. The first of these is to the novelty of the invention, or rather that it is a double use of an old device. But it is not shown to have been used for any purpose analogous to that contemplated by the patentee, or even remotely suggestive of such use. It was the result of considerable thought and of careful and repeated experiments, and supplied a perfect means of distinguishing the quality and origin of plug tobacco, which had not before been furnished to either the manufacturer or consumer.

Nor does the denial of its patentability seem to me to have any firmer foothold. Simple as it is, it nevertheless involved reflection and experiment to bring it to practical maturity; and its evident utility, indicated by its prompt displacement of other identifying devices, and its very extensive use even by the respondents, strongly attests its patentable merit.

The remaining objection, that the reissue is void as not being for the same invention described in the original patent, is clearly untenable. The drawings in both are the same, and the specifications of both are substantially the same. They both describe, as the invention, a hard or metallic label, applied to a plug of tobacco before it is subjected to its final pressure, with characters impressed upon it, indicating its quality, origin, or trade-mark, while in the original patent the claim is limited to tobaccos to which the label is applied underneath the wrapper. To remedy this restriction, inadvertively imposed, as the commissioner of patents has conclusively found, the reissue was properly granted, with an expanded claim to secure to the patentee the full benefit of the invention described, but not claimed in the original.

The motion for a preliminary injunction must therefore be allowed.

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[No. 4.


[FEBRUARY, 1877.]




It is within the power of a state to fix by law the maximum of charges for the storage of grain in warehouses in the state, although the grain is stored in bulk in such manner

that the identity of different lots is not preserved. A statute fixing such maximum is not repugnant to any of the provisions of the Consti

tution of the United States. 1. It does not "regulate commerce,” within the meaning of section 8, article I. 2. It does not give a “ preference .... to the ports of one state," within the meaning of section 9, article I. 3. It is not contrary to that part of the XIVth Amendment which provides that no state shall " deprive any person of life, liberty, or property, without due process of law."

In error to the supreme court of the State of Illinois.
Mr. Chief Justice WAITE delivered the opinion of the court.

The question to be determined in this case is whether the general assembly of Illinois can, under the limitations upon the legislative power of the states imposed by the Constitution of the United States, fix by law the maximum of charges for the storage of grain in warehouses at Chicago and other places in the state having not less than one hundred thousand inhabitants, “ in which grain is stored in bulk, and in which the grain of different owners is mixed together, or in which grain is stored in such a manner that the identity of different lots or parcels cannot be accurately preserved.”

It is claimed that such a law is repugnant

1. To that part of sec. 8, art. I. of the Constitution of the United States which confers upon Congress the power to regulate commerce with foreign nations and among the several states ; ”

2. To that part of sec. 9 of the same article, which provides that “no preference shall be given by any regulation of commerce or revenue to the ports of one state over those of another;” and

3. To that part of Amendment XIV. which ordains that no state shall “ deprive any person of life, liberty, or property, without due process of law ; nor deny to any person within its jurisdiction the equal protection of the laws.”

We will consider the last of these objections first.

Every statute is presumed to be constitutional. The courts ought not to declare one to be unconstitutional unless it is clearly so. If there is doubt the expressed will of the legislature should be sustained.

The Constitution contains no definition of the word “ deprive,” as used in the fourteenth amendment. To determine its signification, therefore, it is necessary to ascertain the effect which usage has given it when employed in the same or a like connection.

While this provision of the amendment is new in the Constitution of the United States, as a limitation upon the powers of the states, it is old [No. 4.

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as a principle of civilized government. It is found in Magna Charta, and, in substance if not in form, in nearly or quite all the constitutions that have been from time to time adopted by the several states of the Union. By the fifth amendment it was introduced into the Constitution of the United States as a limitation upon the powers of the national government, and by the fourteenth as a guaranty against any encroachment upon an acknowledged right of citizenship by the legislatures of the states.

When the people of the United Colonies separated from Great Britain, they changed the form but not the substance of their government. They retained for the purposes of government all the powers of the British parliament, and, through their state constitutions or other forms of social compact, undertook to give practical effect to such as they deemed necessary for the common good and the security of life and property. All the powers which they retained they committed to their respective states, unless in express terms or by implication reserved to themselves. Subsequently, when it was found necessary to establish a national government for national purposes, a part of the powers of the states and of the people of the states was granted to the United States and the people of the United States. This grant operated as a further limitation upon the powers of the states, so that now the governments of the states possess all the powers of the parliament of England, except such as have been delegated to the United States or reserved by the people. The reservations by the people are shown in the prohibitions of the constitutions.

When one becomes a member of society he necessarily parts with some rights or privileges which, as an individual not affected by his relations to others, he might retain. “A body politic,” as aptly defined in the preamble of the Constitution of Massachusetts, " is a social compact by which the whole people covenants with each citizen, and each citizen with the whole people, that all shall be governed by certain laws for the common good.” This does not confer power upon the whole people to control rights which are purely and exclusively private ; Thorpe v. R. f B. R. R. Co. 27 Vt. 143 ; but it does authorize the establishment of laws requiring each citizen to so conduct himself and so use his own property as not unnecessarily to injure another. This is the very essence of government, and has found expression in the maxim, Sic utere tuo ut alienum non lædas. From this source come the police powers, which, as was said by Chief Justice Taney in the License Cases, 5 How. 583, " are nothing more or less than the powers of government inherent in every sovereignty, .... that is to say, .... the power to govern men and things." Under these powers the government regulates the conduct of its citizens one toward another, and the manner in which each shall use his own property, when such regulation becomes necessary for the public good. In their exercise it has been customary in England from time immemorial, and in this country from its first colonization, to regulate ferries, common carriers, hackmen, bakers, millers, wharfingers, innkeepers, &c., and in so doing to fix a maximum of charge to be made for services rendered, accommodations furnished, and articles sold. To this day statutes are to be found in many of the states upon some or all these subjects, and we think it has never yet been successfully contended that such legislation came within any of the constitutional prohibitions against interference Vol. IV.]


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with private property. With the fifth amendment in force, Congress, in 1820, conferred power upon the city of Washington “ to regulate .... the rates of wharfage at private wharves, .... the sweeping of chimneys, and to fix the rates of fees therefor, .... and the weight and quality of bread;" 3 Stat. 587, sec. 7; and, in 1848, “to make all necessary regulations respecting hackney carriages and the rates of fare of the same, and the rates of hauling by cartmen, wagoners, carmen, and draymen, and the rates of commission of auctioneers." 9 Stat. 224, sec. 2.

From this it is apparent that down to the time of the adoption of the fourteenth amendment it was not supposed that statutes regulating the use or even the price of the use of private property necessarily deprived an owner of his property without due process of law. Under some circumstances they may, but not under all. The amendment does not change the law in this particular; it simply prevents the states from doing that which will operate as such a deprivation.

This brings us to inquire as to the principles upon which this power of regulation rests, in order that we may determine what is within and what without its operative effect. Looking, then, to the common law, from whence came the right which the Constitution protects, we find that when private property is affected with a public interest it ceases to be juris privati only.” This was said by Lord Chief Justice Hale more than two bundred years ago, in his Treatise De Portibus Maris (1 Harg. Law Tracts, 78), and has been accepted without objection as an essential element in the law of property ever since. Property does become clothed with a public interest when used in a manner to make it of public consequence and affect the community at large. When, therefore, one devotes his property to a use in which the public has an interest, he in effect grants to the public an interest in that use, and must submit to be controlled by the public for the common good to the extent of the interest be has thus created. He may withdraw his grant by discontinuing the use, but so long as he maintains the use he must submit to the control.

Thus, as to ferries, Lord Hale says, in his Treatise De Jure Maris (1 Harg. Law Tracts, 6), the king has “a right of franchise or privilege, that no man may set up a common ferry for all passengers, without a prescription time out of mind, or a charter from the king. He may make a ferry for his own use or the use of his family, but not for the common use.of all the king's subjects passing that way, because it doth in consequent tend to a common charge, and is become a thing of public interest and use, and every man for his passage pays a toll, which is a common charge, and every ferry ought to be under a public regulation, viz., that it give attendance at due times, keep a boat in due order, and take but reasonable toll ; for if he fail in these he is fineable.” So if one owns the soil and landing places on both banks of a stream he cannot use them for the purposes of a public ferry, except upon such terms and conditions as the body politic may from time to time impose, and this because the common good requires that all public ways shall be under the control of the public authorities. This privilege or prerogative of the king, who in this connection only represents and gives another name to the body politic, is not primarily for his profit, but for the protection of the people and the promotion of the general welfare,

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