Where a party excepts to a ruling of the court, but, not
standing upon his exception, elects to proceed with the trial, he
thereby waives it.
The statutes of limitation of the several states apply to
actions at law for the infringement of letters patent.
This was an action at law for the infringement of letters patent
No. 42,920, issued May 24, 1864, to James Knibbs for an improvement
in fire engine pumps, of which patent plaintiffs were the
assignees. The patent expired May 24, 1881. The action was begun
May 20, 1887, in the name of Ruel Philbrook and several others,
among whom was Christopher
Page 155 U. S. 611
C. Campbell, the plaintiff in error, claiming to be at different
times assignees of the patent and of claims for infringements of
the same.
Defendant pleaded, among other things, that "the cause of action
mentioned in the plaintiffs' declaration did not occur within six
years before the suing out of the plaintiffs' writ."
Upon the trial, the plaintiffs introduced evidence to show that
Philbrook, by assignments, had received all the title, as assignee,
held by the several assignors to him during the life of the patent,
and claimed the right to proceed in one suit in the name of all his
prior assignors.
The court ruled that the action could not be maintained, and
that Philbrook could not sue in the name of all the assignors, but
only in the name of the party or parties who held the entire title
to the patent in suit for the time being.
To this ruling the plaintiff Philbrook excepted, and his
exception was then and there allowed, and thereupon, by leave of
the court, the plaintiff, for the purposes of that trial,
discontinued as to all the plaintiffs named in the writ except
Christopher C. Campbell, and proceeded in his name. It was admitted
for the purposes of the trial that the entire title in the patent
vested in Christopher C. Campbell, individually or as trustee, from
the 10th day of October, 1877, to the 20th day of December, 1880,
and for the purposes of the trial no claim for damages was made in
behalf of said Campbell after December 20, 1880.
The defendant then asked the court to direct a verdict for the
defendant on the ground that the action was barred by the statute
of limitations of the Commonwealth of Massachusetts, as all claims
for action under the admission terminated December 20, 1880, and
the writs were dated May 20, 1887, and were served on the 23d day
of May, so that more than six years had elapsed. The court acceded
to this view, decided that the Massachusetts statute of limitations
was a defense to the suit, and directed a verdict for the
defendant. Whereupon plaintiff Campbell sued out this writ of
error.
Page 155 U. S. 612
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
1. Although the plaintiffs upon the trial excepted to the ruling
of the court that Philbrook could not sue in the name of all the
assignors, but only in the name of the party or parties who held
the title to the patent for the time being, they did not stand upon
such exception, but elected to discontinue as to all the plaintiffs
except Campbell, and proceeded in his name. We think the plaintiff
must be held to abide by his election, and to have waived the first
error assigned by him. We have repeatedly held that where a party
upon a trial excepts to a ruling of the court. but does not stand
upon such exception, and acquiesces in the ruling and elects to
proceed with the trial, he thereby waives his exception.
Grand
Trunk Railway v. Cummings, 106 U. S. 700;
Accident Ins. Co. v. Crandal, 120 U.
S. 527;
Robertson v. Perkins, 129 U.
S. 233;
Columbia & Puget Sound Railroad v.
Hawthorne, 144 U. S. 202.
These were all cases in which the defendant moved at the
conclusion of the plaintiff's case to take the case from the jury,
and, upon the court's refusing, acquiesced in the ruling, and
introduced testimony in defense. But in
United
States v. Boyd, 5 How. 29, there was a demurrer to
a rejoinder, which was sustained by the court below, and the
defendant by leave of the court filed an amended rejoinder and went
to trial. Upon writ of error, defendant asked this Court to revise
the judgment of the court below in sustaining the demurrer to the
original rejoinder, but it was held that the withdrawal of the
demurrer, and going to issue upon the pleading, operated as a
waiver of the judgment. "If," said the Court,
"the defendants had intended to have a review of that judgment
on a writ of error, they should have refused to amend the
pleadings, and have permitted the judgment on the demurrer to
stand."
To the same effect are
Cook v.
Page 155 U. S. 613
Castner, 9 Cush. 266, in which the plaintiffs
voluntarily changed their form of action, and in the appellate
court attempted to show that the original action had been properly
begun;
Brown v. Saratoga Railroad, 18 N.Y. 495, wherein
the defendant's demurrer to the complaint was overruled, with leave
to withdraw the demurrer and put in an answer, which was done, and
the court said:
"When a pleading is amended, the original pleading ceases to be
a part of the record, because the party pleading, having the power,
has elected to make the change;"
Campbell v.
Wilcox, 10 Wall. 421, wherein this Court held that
the filing of a plea to the merits, after a demurrer was overruled,
operated as a waiver of the demurrer. To same effect are
Clearwater v.
Meredith, 1 Wall. 25,
68 U. S. 42;
Aurora City v.
West, 7 Wall. 82,
74 U. S. 92;
Young v.
Martin, 8 Wall. 354;
Marshall
v. Vicksburg, 15 Wall. 146;
Stanton v.
Embrey, 93 U. S. 548.
These rulings apply to this case and render it unnecessary for
us to consider the alleged error error of the court below in
holding that the action could not be maintained by Philbrook.
2. The case, then, is reduced to the naked question whether the
statute of limitations of the several states apply to actions at
law for the infringement of patents.
The question has arisen in a large number of cases, and the
circuit courts have been nearly equally divided. This is the first
time, however, that it has been directly presented to this Court.
It was most carefully considered by the circuit court of
Massachusetts, holding in favor of the applicability of the
statute, in
Hayden v. Oriental Mills, 15 F. 605, and by
the Circuit Court of Connecticut in
Brickill v. City of
Hartford, 49 F. 372, against it. In view of this conflict of
opinion, which seems to be wholly irreconcilable, we shall dispose
of it as an original question.
Prior to 1870, no federal statute existed limiting the time in
which actions for the infringement of patents must be brought. In
the general patent act of that year, however, a clause was inserted
in section 55 to the effect that
"all actions shall be brought during the term for which the
letters patent shall be granted or extended, or within six
years
Page 155 U. S. 614
after the expiration thereof."
16 Stat. 206. This clause was omitted, however, in the
compilation of the Revised Statutes, and therefore expired after
the passage of the Revision, June 22, 1874, section 5996 enacting
that all acts prior to December 1, 1873, any portion of which was
embraced in any section of the revision, should be repealed. But
under section 5599, the statute was left in force as to all rights
of action in existence at the date of its repeal. It follows that
the federal statute of limitation has no application to any
infringement committed since June 22, 1874. As no claim was made
for infringements in the present case except such as occurred
between October 10, 1877, and December 20, 1880, it is obvious that
the statute has no application. Does the statute of Massachusetts,
requiring actions of tort to be begun within six years from the
time the cause of action accrued, operate as a defense to this
action?
The argument in favor of the applicability of state statutes is
based upon Rev.Stat. § 721, providing that "the laws of the several
states, except," etc., "shall be regarded as rules of decision in
trials at common law, in the courts of the United States, in cases
where they apply." That this section embraces the statutes of
limitations of the several states has been decided by this Court in
a large number of cases, which are collated in its opinion in
Bauserman v. Blunt, 147 U. S. 647. To
the same effect are the still later cases of
Metcalf v.
Watertown, 153 U. S. 671, and
Balkam v. Woodstock Iron Co., 154 U.
S. 177. Indeed, to no class of state legislation has the
above provision been more steadfastly and consistently applied than
to statutes prescribing the time within which actions shall be
brought within its jurisdiction.
It is insisted, however, that by the express terms of section
721, the laws of the several states should be enforced only "in
cases where they apply," and that they have no application to
causes of action created by congressional legislation and
enforceable only in the federal courts. The argument is that the
law of the forum can only apply to matters within the jurisdiction
of the state courts, and that the recognition given by Congress to
the laws of the several states does not
Page 155 U. S. 615
make such laws applicable to suits over which the state courts
have no jurisdiction because, for want of jurisdiction over the
subject matter of the suit, the tribunals of the state are
powerless to enforce the state statutes with respect to it; in
other words, that the states, having no power to create the right
or enforce the remedy, have no power to limit such remedy or to
legislate in any manner with respect to the subject matter. But
this is rather to assert a distinction than to point out a
difference. Doubtless such an argument would apply with peculiar
emphasis to statutes, if any such existed, discriminating against
causes of action enforceable only in the federal courts; as if they
should apply a limitation of a year to actions for the infringement
of patents, while the ordinary limitation of six years was applied
to all other actions of tort. In such case, it might be plausibly
argued that it could never have been intended by Congress that
section 721 should apply to statutes passed in manifest hostility
to federal rights or jurisdiction, but only to such as were uniform
in their operation upon state and federal rights and upon state and
federal courts. This question was touched upon incidentally in
Metcalf v. Watertown, 153 U. S. 671, in
which it was claimed that the statute of limitations of Wisconsin
discriminated against judgments rendered in the federal courts, but
the case went off upon the point that no such discrimination
existed. Perhaps under the final words of section 721, "in cases
where they apply," the court may have a certain discretion with
respect to the enforcement of state statutes such as was exercised
by this Court in several cases arising under § 914, respecting
pleadings and forms and modes of proceeding.
Nudd v.
Burrows, 91 U. S. 426;
Indianapolis & St. Louis Railroad v. Horst,
93 U. S. 291;
Phelps v. Oaks, 117 U. S. 236. So
too, it has been held that statutes of limitations must give a
party a reasonable time to sue, and if a particular statute should
fail to do so it would be within the competency of the courts to
declare the same unconstitutional and void.
Koshkonong v.
Burton, 104 U. S. 668;
Wheeler v. Jackson, 137 U. S. 245;
Cooley on Const.Limitations, c. 11. But as no such discrimination
is attempted by this statute,
Page 155 U. S. 616
and no claim made that the time was unreasonably limited, the
point need not be further noticed.
Recurring, then, to the main proposition above stated, it may be
well questioned whether there is any sound distinction in principle
between cases where the jurisdiction is concurrent and those where
it is exclusive in the federal courts. The section itself neither
contains nor suggests such a distinction. The language of the
section is general that the laws of the several states shall be
regarded as rules of decision in every case to which they apply,
and it is at least incumbent upon the plaintiff to show that, for
some special reason in the nature of the action itself, the section
does not apply. But why should the plaintiff in an action for the
infringement of a patent be entitled to a privilege denied to
plaintiffs in other actions of tort? If states cannot discriminate
against such plaintiffs, why should Congress, by its silence, be
assumed to have discriminated in their favor? Why, too, should the
fact that Congress has created the right limit the defenses to
which the defendant would otherwise be entitled? Is it not more
reasonable to presume that Congress, in authorizing an action for
infringement, intended to subject such action to the general laws
of the state applicable to actions of a similar nature? In creating
a new right and providing a court for the enforcement of such
right, must we not presume that Congress intended that the remedy
should be enforced in the manner common to like actions within the
same jurisdiction?
Unless this be the law, we have the anomaly of a distinct class
of actions subject to no limitation whatever -- a class of
privileged plaintiffs who, in this particular, are outside the pale
of the law and subject to no limitation of time in which they may
institute their actions. The result is that users of patented
articles, perhaps innocent of any wrong intention, may be fretted
by actions brought against them after all their witnesses are dead,
and perhaps after all memory of the transaction is lost to them.
This cannot have been within the contemplation of the legislative
power. As was said by Chief Justice Marshall in
Adams v.
Woods, 2 Cranch 336,
6
U. S. 342, of a similar statute:
"This would be utterly repugnant to the
Page 155 U. S. 617
genius of our laws. In a country within which not even treason
can be prosecuted after the lapse of three years, it can scarcely
be supposed that an individual would remain forever liable to a
pecuniary forfeiture."
Whatever prejudice there may have been in ancient times against
statutes of limitations, it is a cardinal principle of modern law
and of this Court that they are to be treated as statutes of
repose, and are not to be construed so as to defeat their obvious
intent to secure the prompt enforcement of claims during the lives
of the witnesses, and when their recollection may be presumed to be
still unimpaired. As was said of the statute of limitations by Mr.
Justice Story (
Bell v.
Morrison, 1 Pet. 351,
26 U. S.
360):
"It is a wise and beneficial law, not designed merely to raise a
presumption of payment of a just debt, from lapse of time, but to
afford security from stale demands, after the true state of the
transaction may have been forgotten, or be incapable of
explanation, by reason of the death or removal of the
witnesses."
This language is peculiarly applicable to patent cases, in which
questions of anticipation frequently rest in oral testimony only,
and are required to be proved to the satisfaction of the court by
something more than a mere preponderance of evidence.
If these actions be exempted from the state statute of
limitations, it would undoubtedly follow that other statutes of a
similar nature, adopting the local practice for certain purposes,
would be equally inapplicable. Yet it was held by this Court in
Vance v.
Campbell, 1 Black 427;
Haussknect
v. Claypool, 1 Black 431, and in
Wright v.
Bales, 2 Black 535, that under section 721, rules
of evidence prescribed by the laws of the states were obligatory
upon the federal courts in patent cases, and that the plaintiff was
a competent witness in his own behalf where, by the law of the
state, parties may be sworn.
Indeed, if the local statutes of limitations be not applicable
to these actions, it is difficult to see why the process,
declarations, and other pleadings in the code states should not be
in common law form, notwithstanding section 914, adopting the state
practice in that particular; or why attachments should
Page 155 U. S. 618
be permitted, though authorized by state laws (sec. 915); nor
why a
capias ad respondendum should not issue immediately
upon rendition of a judgment, notwithstanding sec. 916, entitling
parties recovering judgments to remedies similar to those
authorized by state laws; or why parties, arrested or imprisoned
upon execution issued in these cases, should be entitled to
discharge under sec. 991, or why in every other respect the suit
should not be conducted regardless of the laws of the particular
state.
The truth is that statutes of limitations affect the remedy
only, and do not impair the right, and that the settled policy of
Congress has been to permit rights created by its statutes to be
enforced in the manner and subject to the limitations prescribed by
the laws of the several states. As was said by Mr. Justice Wayne in
McElmoyle v.
Cohen, 13 Pet. 312,
38 U. S.
327:
"Is it [the statute of limitations] a plea that settles the
right of a party on a contract or judgment or one that bars the
remedy? Whatever diversity of opinion there may be among jurists
upon this point, we think it well settled to be a plea to the
remedy, and consequently that the
lex fori must
prevail."
It was held in this case that the statute of limitations of the
State of Georgia could be pleaded in an action brought in the
Circuit Court of the United States for the District of Georgia on a
judgment recovered in South Carolina.
Not only is this so, but we have repeatedly held that rights
created by Congress are subject to the police power, as well as to
the taxing and licensing laws, of the several states. In
Patterson v. Kentucky, 97 U. S. 501, it
was held that a party to whom letters patent were issued for "an
improved burning oil" whereof he claimed to be the inventor was
properly convicted in Kentucky for selling the oil, it having been
condemned by the state inspector as unsafe for illuminating
purposes, and that the enforcement of the statute interfered with
no right conferred by the letters patent. In
Webber v.
Virginia, 103 U. S. 344, it
was held that the tangible property in which an invention or
discovery may be exhibited or carried into effect was properly
taxable under the laws of the
Page 155 U. S. 619
state, although a statute requiring an agent for the sale of
articles manufactured in other states to obtain a license was
unconstitutional as in conflict with the commerce clause of the
Constitution. So in
Ager v. Murray, 105 U.
S. 126, it was held that a patent right might be
subjected by bill in equity to the payment of a judgment debt of
the patentee. "The provisions of the patent and copyright acts,"
said the Court,
"do not exonerate the right and property thereby acquired by him
[the patentee] . . . from liability to be subjected by suitable
judicial proceedings to the payment of his debts."
The rights of a patentee have also been held to pass to an
assignee in insolvency under the state law, if the court so orders.
Asheroft v. Walworth, 1 Holmes 152;
Barton v.
White, 144 Mass. 281;
In re Keach, 14 R.I. 571. In
Beatty's Administrators v.
Burnes' Administrators, 8 Cranch 98, an action was
brought in the Circuit Court for the District of Columbia to
recover moneys paid defendant by the City of Washington for land
taken by the government. Plaintiffs sought to support their action
under a statute of Maryland of 1791. Defendant pleaded the statute
of limitations of the State of Maryland. "It is contended," said
Mr. Justice Story,
"that the present suit, being a statute remedy, is not within
the purview of the statute of limitations. But we know of no
difference in this particular between a common law and statute
right. Each must be pursued according to the general rule of law
unless a different rule be prescribed by statute, and where the
remedy is limited to a particular form of action, all the general
incidents of that action must attach upon it. Upon any other
construction it would follow that the cases would be without any
limitation at all. . . . Now the statute of limitations has been
emphatically declared a statute of repose, and we should not feel
at liberty to break in upon the general construction by allowing an
exception which has not acquired the complete sanction of
authority."
Still nearer in point is
McCluny v.
Silliman, 3 Pet. 270, in which the plaintiff sued
the defendant, as register of the United States land office in
Ohio, for damages for having refused to note on his books
applications
Page 155 U. S. 620
made by him for the purchase of land within his district.
Defendant pleaded the statute of limitations. Upon writ of error
from this Court, plaintiff claimed that the statute of limitations
of the state was not pleadable in an action brought for malfeasance
in office,
especially where the plaintiff's rights accrued to
him under a law of Congress. The statute was held to be a good
defense. "In giving a construction to this statute," said the
Court,
"where the action is barred by its denomination, the court
cannot look into the cause of action. . . . By bringing his action
on the case, the plaintiff has selected the proper remedy for the
injury complained of. This remedy the statute bars. Can the court
then, by referring to the ground of the action, take the case out
of the statute?"
So too, causes of action arising under acts of Congress
permitting suits to be brought by importers against collectors of
customs to recover duties illegally assessed have always been
treated by this Court as subject to the statutes of limitations of
the several states.
Andreae v. Redfield, 98 U. S.
225;
Barney v. Oelrichs, 138 U.
S. 529.
Indeed it is only within the present century that Congress has
vested exclusive jurisdiction of patent causes in the circuit
courts, since by the Act of February 21, 1793, c. 11, § 5, 1 Stat.
322, it was provided that damages in patent suits might be
recovered by "action on the case founded on this act, in the
circuit court of the United States, or any other court having
competent jurisdiction." This remained the law until April 17,
1800, when Congress for the first time vested exclusive
jurisdiction in the circuit courts, but of actions at law only, Act
of April 17, 1800, c. 25, 2 Stat. 37, and finally, by Act of
February 19, 1819. c. 19, 3 Stat. 481, extended the same
jurisdiction to cases in equity. Even upon the theory of the
plaintiffs in this case, the statutes of limitations of the states
would have been a good defense so long as the jurisdiction was
concurrent, but would cease to be so as soon as the jurisdiction of
the federal courts became exclusive. The bare statement of this
proposition is sufficient to show its untenableness.
Page 155 U. S. 621
In fine, we are all of the opinion that the statute of
limitations was a good plea to this action, and the judgment of the
circuit court is therefore
Affirmed.