Gambino v. United States, 275 U.S. 310 (1927)

All that was done by officers of the United States in this case was done long after the seizure had been completed. Acceptance of the things seized was not an act which deprived petitioners of any right under the Fourth and Fifth Amendments. The Government might, with equal propriety, have allowed the seized articles to remain with the state officers and later secured their production by a subpoena duces tecum. Neither course would have encountered constitutional objection. Burdeau v. McDowell, 256 U. S. 465. Certainly the acceptance of this property by the government officer was not, a ratification of an unconstitutional act, for the arresting officers, acting independently of federal agents, did not p. 312have the capacity to commit an act violative of the Fourth and Fifth Amendments. It being well established that these Amendments do not apply to state officers, the act of the government officers, if it be a ratification of anything, must be considered as an adoption of an act constitutionally unobjectionable. Robinson v. U. 8., 292 Fed. 683.

On August 1, 1924, Gambino and Lima were arrested by two New York state troopers, near the Canadian border; their automobile (while occupied by Gambino and • therefore within the protection accorded to his person) was searched without a warrant; and intoxicating liquor found therein was seized. They, the liquor and other p. 313property taken were immediately turned over to a federal deputy collector of customs for prosecution in the federal court for northern New York. There, the defendants were promptly indicted for conspiracy to import and transport liquor in violation of the National Prohibition Act. They moved seasonably, in advance of the trial and again later, for the suppression of the liquor as evidence and for its return, on the ground that the arrest, the search and the seizure were without a warrant and without probable cause, in violation of the Fourth, Fifth and Sixth Amendments of the Federal Constitution. The motion was denied; the evidence was introduced at the trial; the defendants were found guilty; and they were sentenced to fine and imprisonment. The Court of Appeals affirmed the judgment. Neither court delivered an opinion. This Court granted a writ of certiorari, 274 U. S. 733.

The Mullan-Gage Law—the state prohibition act—had been repealed in 1923. Act of June 1, 1923, c. 871, 1923 N. Y. Laws, p. 1690. There is no suggestion that the defendants were committing, at the time of the arrest, search and seizure, any state offense; or that they had done so in the past; or that the troopers believed that they had. Unless the troopers were authorized to make the arrest, search and seizure because they were aiding in the enforcement of a law of the United States, their action p. 315would clearly have been wrongful even if they had had positive knowledge that the defendants were violating the federal law. No federal official was present at the search and seizure; and the defendants made no attempt to establish that the particular search and seizure was made in cooperation with federal officials. But facts of which we take judicial notice, compare Tempel v. United States, 248 U. S. 121, 130, make it clear that the state troopers believed that they were required by law to aid in enforcing the National Prohibition Act; and that they made this arrest, search and seizure, in the performance of that supposed duty, solely for the purpose of aiding in the federal prosecution.

In the memorandum filed by the Governor approving the Act which repealed the Mullan-Gage law, he declared that all peace officers, thus including state troopers, are required to aid in the enforcement of the federal law “ with as much force and as much vigor as they would enforce any State law or local ordinance ”; and that the repeal of the Mullan-Gage law should make no difference in their action, except that thereafter the peace officers must take the offender to the federal court for prosecution.1 Aid so given was accepted and acted on by the federal officials.12 p. 316It appears that one of the troopers who made the arrest and seizure here in question had been stationed at the Canadian border for eighteen months prior thereto, the greater part of that period being after the repeal of the Mullan-Gage law. It was also shown that immediately after the arrest and seizure, the defendants, their car and the liquor were, after they had been taken to the committing magistrate, turned over to the federal officers. In view of these facts, the statement, in the affidavit of one of the troopers, that at the time of the arrest and search “ there were no federal officers present, and that we were not working in conjunction with federal officers ” must be taken to mean merely that the specific arrest and search was not directly participated in by any federal officer.

We are of opinion that the admission in evidence of the liquor wrongfully seized violated rights of the defendants guaranteed by the Fourth and Fifth Amendments. The wrongful arrest, search and seizure were made solely on behalf of the United States. The evidence so secured was the foundation for the prosecution and supplied the only evidence of guilt. It is true that the troopers were not shown to have acted under the directions of the federal officials in making the arrest and seizure. But the rights guaranteed by the Fourth and Fifth Amendments may be invaded as effectively by such cooperation, as by the state officers’ acting under direction of the federal officials. Compare Silverthorne v. United States, 251 U. S. 385, 392. The prosecution thereupon instituted by the federal p. 317authorities was, as conducted, in effect a ratification of the arrest, search and seizure made by the troopers on behalf of the United States. Whether the laws of the state actually imposed upon the troopers the duty of aiding the federal officials in the enforcement of the National Prohibition Act we have no occasion to enquire.

Missouri Revised Statutes, 1909, §§ 4770, 4771, p. 318ure stands on a different ground.” In Burdeau v. McDowell, 256 U. S. 465, the books and papers admitted had been taken by private detectives. The District Court ordered the return " solely upon the ground that the Government should not use stolen property for any purpose after demand made for its return.” P. 472. This Court based its reversal on the finding that 11 the record clearly shows that no official of the Federal Government had anything to do with the wrongful seizure of the petitioner’s property, or any knowledge thereof until several months after the property had been taken from him and was in the possession of the Cities Service Company.” P. 475.

There have been many instances in which the lower federal courts have admitted evidence obtained by state officers through wrongful search and seizure, but only three reported cases have been found in which it could have been seriously contended, in view of the law of the State and the facts appearing in the opinion, that the search and seizure had been made solely for the purpose of aiding in the enforcement of the federal law. Schroeder v. United States, 7 F. (2d) 60; Greenberg v. United States, 7 F. (2d) 65; Katz v. United States, 7 F. (2d) 67. These cases, like the present one, were decisions of the Court of Appeals for the Second Circuit, and involved searches and seizures made by officers of New York subsequent to the repeal of the Mullan-Gage law.4 An examination of the record in the Schroeder case discloses that the sergeant of police who made the search and seizure was not acting solely to enforce the National Prohibition Act. He was a confidential investigator, charged with the task of detecting cor- p. 319310 Syllabus.

The patent sued on was issued to Ralph P. Thompson and William S. Thompson, of Leipsic, Ohio, assignors of one-third to Oliver P. Edwards, of Leipsic, Ohio. The application was filed October 10, 1912, and the patent was issued September 9, 1913, and numbered 1,072,791, and has since been assigned by the patentees to the Temco Company. The object of the patentees was to provide a shock absorber which would make riding in an automobile easy. They professed to accomplish this by supplying a set of quick-acting coiled springs in connection with the set of slow-acting and friction-retarded leaf springs originally built into the vehicle. The compression and recoil of the two sets of springs occurred at different times, in consequence of which their respective pulsations were not synchronous. The result was said, in the specifications, to be that the shock to the road wheel and axle was first absorbed by the coiled spring, and therefrom was transmitted to the body of the car and to the occupants through the slow-acting leaf spring. As the compression and recoil of the leaf spring were not the same» as those of the coiled spring, the recoil of the coiled spring began to. take place before the full effect of the shock to the road wheel could be transmitted through the leaf spring. This see-sawing action, as it were, between the quick-acting coiled spring p. 323and the slow-acting leaf spring, the specifications said, caused a large portion of the effect from vibrations to be nullified by the action of one and reaction of the other of these springs taking place simultaneously, thus absorbing within the spring element the sharper vibrations. The device was intended to be specially adapted for attachment to Ford automobiles. Its availability was claimed to be such that the owner of a Ford car, without the services of a mechanic and without disturbing the operation or construction of the car, might, with slight instruction, remove the usual hanger which supported each end of each leaf spring and insert in its stead the plaintiff’s attachment.

When the patent was issued there was a great demand to purchase the device and use it, and under the patentees, or under the K-W Ignition Company, which had a contract with the patentees, there were made and sold upwards of 134,000 sets of the shock absorbers, and about $2,250,000 was from time to time paid to the patentees for these absorbers, so that from 1912 for ten years or more a very large business was done in the sale and use of the patented device. There was litigation over it, especially in the districts of the Sixth Circuit, where the validity of the patent was generally sustained, the first case having been heard by a former Justice of this Court while a p. 324district judge of the Northern District of Ohio. His opinion is recorded in the record. The case involved not only the validity of the patent, which after some hesitation he sustained because of its general adoption and success, but also presented a question whether the defendants in that case, the K-W Ignition Company, were not so bound by contract with the patentees as to estop them from defending against the patent. The district judge held, however, that the contract had expired and the obligations growing out of it had also expired, so that the issue tried was that of the validity of the patent. The district court’s decree was affirmed by the Court of Appeals and the case was sent back for an accounting, and an accounting was had against the defendant in that case and a judgment given for $292,938 against the K-W Ignition Company, which was a defendant there. In the present suit the bill set up this litigation in Ohio as evidence of the validity of the patent, but a straight issue of validity was also made and all the defenses known were advanced.

The attack now made upon the patent is that it has been proved to be ineffective by ten years’ actual use, some injuries to the shock absorbers resulting from striking of the parts of the motor machine against the metal guides and cylindrical metal hangers in which the torsional spring is moved up and down. It appears that the real owners of the patent, realizing that there were defects in the operation of the absorber that should be remedied, applied to the Patent Office for a patent which should substitute for the stanchions or guides, on which the hanger around the torsional spring moved up and down in a vertical direction, a fixed radius link. The torsional spring of the p. 325patent enclosed within the casing or hanger attached to the upright guide did not, in moving or sliding up and down, retain a vertical direction but was sometimes tilted over by the weight of the car and its load. The change proposed, in regard to this, was that while the spring should be placed outside the upright or stanchion at the bottom of the spring, the upright stem or guide or stanchion inside the spring should be maintained in a vertical position by the addition of a radius link united to another by a toggle joint which fixed the guide rigidly and would hold the coil spring up permanently in a vertical position. This permitted a widening of the coil spring at the bottom so as to make it conical and gave the spring more stability in its vertical position. The difference between a conical coil spring and one that is not conical does not make the two structures different in any respect but in degree of stability only.

Storrie as patentee said in his specifications that his invention related to means for absorbing the vibrations p. 326and shocks in vehicle springs to such an extent as not to cause annoyance to the rider and strain to the springs of the vehicle, which would tend to cause such springs to crack or otherwise become disabled; that the invention provided a shock absorber embodying an expansible helical spring and supporting means therefor of novel formation, one of such supports being secured to the axle and the other being shackled or otherwise attached to the vehicle spring, the parts being arranged to control the vibrations or shocks not taken up quick enough by the main spring and thereby overcome the objectionable features therein mentioned. And then follow twelve different claims, most of which refer to a radius link pivoted to the support between the torsional spring and the main or laminated spring of the vehicle.

The claim made for the invention is that the real gist of it is in the arrangement of the parts, all of which were old, so that the first vibration and shock would be taken up from the axle by the torsional spring, and then, having been divided up into vibrations, would be communicated through the torsional spring and the absorber to the leaf spring and “dampened down,” as the expression is, by its slower action, so as really to take up and absorb and make to disappear the shocks otherwise directly communicated from the road and the axle to the leaf spring. It is argued that, as these were all old parts, there was nothing new in the patent. We have examined the art with a view to considering that particular point. We think that the theory, that the Thompson patent had and has its real value in the function of the torsional spring directly to take up all the vibrations from the road and axle and quickly to divide them for the dampening effect of the slow moving leaf spring of the car, was a sound one. There have been citations of early patents showing previous attempts of the same kind, but we have not been pointed to one in which the torsional spring was so p. 327arranged as to take all the ro.ad vibrations and divide them up before reaching the main car spring, except those which have come after the Thompson original patent. This is true of the Bussing, whether German, English or French patents, the Peugeot patent and the Cosset patent. It is true that by taking some of these structures or devices, notably the Bussing English patent, it may be possible to show how, by turning over on its back the specified device, the torsional spring could be made partly and ineffectively to perform this function, but as described in this or other cited patents there is no suggestion or recommendation of the arrangement in Thompsons’. They—all of them—use the main or leaf spring to take directly all or part of the vibrations from the axle and rely on the torsional spring to soften vibrations after they have passed or are passing through the main spring. The leaf spring in the Warner patent not only takes the greater road shocks directly but the entire spring arrangement is primarily built and put in at the factory while the axle is split into two parts, and the device is not made a separate or separable part, a feature which is an important and needed advantage to adapt the absorber to use in a Ford car.

With respect to the Storrie patent, it is said that the patent in suit is not broad enough to justify an allowance of equivalents which would make the radius link an equivalent to the casing and hanger of the Thompson absorber. p. 328It is urged that if it is not an equivalent, it is at least an improvement on the Thompson patent in suit and that this is what Thompson was seeking when the interference proceedings were had. It was upon that theory, that the Storrie patent was an improvement on the Thompson patent, that the Circuit Court of Appeals of the Sixth Circuit in the suit between the Temco Company and the K. W. Ignition Company decided that it could allow only recovery for royalties and not for profits, 283 Fed. 873, 876, 877. It is well established that an improver can not appropriate the basic patent of another and that the improver without a license is an infringer and may be sued as such. Cochrane n . Deener, 94 U. S. 780, 787; Cantrell v. Wallick, 117 U. S. 689, 694; Yancey v. Enright, 230 Fed. 641, 647; Reed v. Hughes Tool Company, 261 Fed. 192, 194.

It is argued that an estoppel works as against the Temco Company by the action of one of the Thompsons, an assignor of its patent, because, in applying for the second patent in what turned out to be the interference proceeding, he had said that the radius link device which was applied for related to an improvement “over” the construction disclosed in the original patent granted to them. If Thompson had said it was an improvement “upon” it would‘have been satisfactory, but the word “over” is supposed to indicate that he was making an p. 329application for a different patent. This is too fine a turn in language. In attempting to distinguish the new invention which he was seeking to have patented, he had said that the claims of the new patent were “ obviously different in mechanical construction and functional results.” This is said to estop the plaintiff from claiming that the Storrie radius link, which won in the interference proceeding, is only an improvement on the patent in suit as the basic patent upon which the Storrie patent was an improvement. But it was said in the Thompson application for a second patent in the Patent Office that the invention sought was of the general type disclosed, possessing certain advantages not possessed by the construction of the prior patent, and it was specifically stated therein that the radius link form was an improvement over a construction disclosed in the first Thompson patent, No. 1,072,791.

“ In automobile construction, wherein coiled springs are used auxiliary to leaf springs for absorbing shock to the road wheels, the combination of upright stanchions with the axle of the ground wheels, said stanchions being attached to the outer ends of said axle, leaf springs extending above the axle and between the stanchions, and supporting the chassis frame, the said stanchions being p. 330adapted to limit the end motion of the leaf springs and thereby prevent side sway of the chassis frame, hangers for the outer ends of said leaf springs, said hangers having a vertical movement and being guided therein by said stanchions, and coiled springs interposed between said leaf spring hangers and said axle of the ground wheels.”

Reading the claim with the specifications and the drawings, which are both clear {Howe Machine Co. v. National Needle Co., 134 U. S. 388, 394) its addition to the combination of coiled springs interposed between the leaf spring hangers having vertical movement and guided by stanchions, comprehends the link as shown in the drawings, or any suitable connection between each leaf spring and its hanger and casing surrounding the coiled spring which is interposed between the leaf spring and the axle and ground wheel. It does not seem to us that the claim is vague; nor do we find nullifying incompleteness in it. Turrill v. Railroad Company, 1 Wall. 491, 510; Rubber Company v. Goodyear, 9 Wall. 788, 795; McClain v. Ortmayer, 141 U. S. 419, 425; Walker on Patents (5th ed.) § 185. Neither did the Court of Appeals of the Sixth Circuit, nor did the district courts of that circuit so find. p. 331319 Syllabus.