text:
Brandies v. Cochrane (112 U.S. 344)

John S. Monk, for appellants.

''Geo. W. Smith, and E. F. Bagley'', for appellees.

This is a bill in equity, filed by the appellants, the object and prayer of which is to quiet their title to the real estate described, situated in Chicago, as against the adverse claims of the appellees. The question in the case is whether the appellants have the legal title to the premises in controversy. The facts necessary to its determination are as follows:

In March, 1866, the complainants below, now the appellants, recovered a judgment in the circuit court of the United States for the Northern district of Illinois against Robert Forsythe, one of the appellees, and George T. Braun, for $9,665.49 and costs, on which execution was issued during the year, and returned not levied, because no property was found on which to levy. Prior thereto, in 1861, Robert Forsythe had purchased the real estate described in the bill, with his own means, from Horatio G. Loomis, and, according to his directions, a deed was made by Loomis conveying the property to William R. Arthur, as trustee, and to his heirs and assigns, upon the following trusts therein expressed: 'To permit Mary E. Forsythe, wife of Robert Forsythe, of Chicago, to use and occupy, enjoy and receive, the rents and profits of said lands and premises, for her life and to her own use, and at any and all times, upon the order or request in writing of said Mary E. Forsythe and the said Robert Forsythe, jointly, to convey said lots, or either or any part of them, to such person or any persons as they may designate; and in case said Mary E. shall die without issue in the life-time of her said husband, then to convey said lands to said Robert Forsythe for life, immediately after the decease of said Mary E., to hold to him and his use for life, and to his child or children, if any lawfully begotten, in fee-simple and remainder, to their use and to them equally as tenants in common. But if said Robert shall die without lawful issue, then to the children of his brother, Leonard E. Forsythe, and the children of Lydia T. Warrack, who may be in being at the time of said Robert's decease, in fee-simple and remainder, to their use and to them equally as tenants in common. And in case said Robert shall die without lawful issue in the life-time of said Mary E., then to convey said lands and premises to her for life immediately after the death of said Robert, to hold to her and her own use for life, and to the children of said Leonard E. Forsythe, and the children of said Lydia T. Warrack, who may be in being at the time of said Mary's decease, in fee-simple and remainder as aforesaid, to their use and to them equally as tenants in common. But if hereafter said Robert shall have child or children born of his said wife or of any future wife, then instead of the conveyance aforesaid to the children of said Leonard E. Forsythe and Lydia T. Warrack, said trustee is to convey said lands to said Mary E. or to said Robert, (as the one may chance to survive the other,) to her or his use for life as aforesaid, and to the child or children who may be so born to them or him, in fee-simple and remainder, to their use and to the equally as tenants in common.'

Subsequently, upon proper proceedings for that purpose, this deed was reformed and corrected by a decree in chancery, whereby it was provided that the conveyance of said Arthur, the trustee, to be made on the request of the said Robert and Mary E. Forsythe, when made, should be in fee-simple absolute, and should operate to cut off the several trusts thereafter specified in said original conveyance to Arthur. This property was improved by Robert Forsythe by the erection thereon of a dwelling-house, and was occupied by himself and wife as a residence at the date of the recovery of the appellants' judgment and subsequently during the life of Mrs. Forsythe. Robert Forsythe, on March 26, 1868, was, on his own petition, adjudged a bankrupt by the district court of the United States for the Northern district of Illinois, and on July 21, 1868, obtained his discharge.

On November 3, 1869, Robert Forsythe and Mary E. Forsythe joined in a written request to Arthur, the trustee, directing him to convey the premises in controversy to Nathan Corwith, in fee-simple. Mrs. Forsythe died on January 1, 1870, leaving no issue, and on January 4, 1870, Arthur, in pursuance of the appointment previously made, conveyed the property to Corwith, as directed. This conveyance was in form absolute, but it is claimed that it was intended merely as security for an indebtedness due to Corwith from Forsythe. At any rate, Corwith conveyed the property to Robert Forsythe by a deed dated March 12, 1870, and the latter, by a deed of trust dated March 10, 1870, in anticipation of the conveyance to himself, conveyed it to George Scoville, as trustee, to secure to John Cochrane $15,000 which the latter had lent to Forsythe, and out of which Corwith had received the amount due him. On May 9, 1870, the appellants caused an alias execution to be issued on their judgment and levied on the premises as the property of Robert Forsythe; on June 7, 1870, it was sold under this execution to them, on a bid of the amount due on their judgment, and on September 9, 1871, the time for redemption having elapsed, they received a deed from the marshal conveying the title to them. Robert Forsythe being in default for non-payment of interest on the debt to Cochrane, Scoville executed the power of sale under the deed of trust to him, by a sale to James D. Wallace on April 17, 1872. The latter had, just prior thereto, on March 8, 1872, acquired whatever title to the premises, if any, had vested in the assignee in bankruptcy, by a sale and conveyance thereof from him. Thereupon Wallace reconveyed the premises, with some additional property, to George Scoville, as trustee, to secure the whole amount of principal and interest due to Cochrane, amounting, with the expenses of the transaction, to $17,000, the amount specified in the deed of trust. This arrangement was made for the better security of the debt due to Cochrane; John Forsythe having become, in consideration thereof, a guarantor of the notes given therefor.

On May 27, 1872, the complainants, having taken possession under their claim of title, filed the present bill of complaint, to which Wallace and Robert Forsythe were made defendants, praying to have their title quieted as against them.

On May 1, 1876, Scoville executed the power of sale under the deed of trust to him, and sold the property embraced therein, including the premises in controversy, to Cochrane, who, on July 13, 1876, was admitted as a party defendant, and filed his answer and cross-bill, claiming title in himself, and praying for a decree for relief. On final hearing, the original bill was dismissed and a decree rendered upon the cross-bill of Cochrane as prayed for. To review that decree is the object of the present appeal.

[Argument of Counsel from pages 347-349 intentionally omitted]

MATTHEWS, J.

title: Brandies v. Cochrane (112 U.S. 344)


text: Talk:Brandies v. Cochrane (112 U.S. 344)

license: Creative Commons - Attribution Share-Alike - https://creativecommons.org/licenses/by-sa/4.0/


text:
Brandies v. Cochrane (112 U.S. 344)/Opinion of the Court

It is manifest that it is vital to the appellants' case that they should maintain and establish a judgment lien upon the estate of Robert Forsythe, in the premises in controversy, at the date of the recovery of the judgment in 1866; because the discharge in bankruptcy of Forsythe, in 1868, released him from all personal liability on account of the judgment, so that the subsequent levy of an execution in 1870 could have no effect except to enforce a lien subsisting at the time of the adjudication in bankruptcy. It is accordingly contended, on behalf of the complainants, that their judgment took effect at its rendition as a lien upon an equitable estate for life, reserved to Robert Forsythe by the terms of the deed of trust to Arthur, which was not and could not be displaced by the appointment by virtue of which the conveyance was made by Arthur, the trustee, to Corwith; that the power of appointment secured to Forsythe and wife operated to subject the entire estate, which could be disposed of under that power, and which was the fee-simple, to the claims of creditors reduced to judgment; and that Robert Forsythe had an equitable reversion in fee in the trust estate by reason of the failure of the ultimate limitations alleged to be void for remoteness, as they were to take effect, according to the terms of the trust, only after an indefinite failure of issue, which reversion in fee was subject to the lien of judgments against him.

The statute of Illinois in force at the time and governing the case was section 1, c. 57, Rev. St. 1845, which, after providing that judgments should be a lien on the real estate of the judgment debtor, provided as follows: 'The term 'real estate' in this section shall be construed to include all interest of the defendant or any person to his use, held or claimed by virtue of any deed, bond, covenant, or otherwise, for a conveyance, or as mortgagee or mortgagor of lands in fee, for life or for years.' Except so far as modified by this act the common law on the same subject was in force in Illinois by express adoption. Rev. St. 1845, p. 337, § 1.

In Spindle v. Shreve, 111 U.S. 542-547, S.C.. 4 SUP. CT. REP. 522, it was stated to be the law in Illinois that where the legal title to lands is in trustees, for the purpose of serving the requirements of an active trust, the judgment creditor had no lien and could acquire none at law, but could obtain one only by filing a bill in equity for that purpose, according to the provisions of section 49 of the chancery practice act of that state. Rev. St. 1845, p. 97. It was otherwise if the trust was merely passive, such as those described in the section defining real estate as subject to the lien of judgments, already quoted. Miller v. Davidson, 3 Gilman, 518; Baker v. Copenbarger, 15 Ill. 103; Thomas v. Eckard, 88 Ill. 593. The rule at common law and the corresponding jurisdiction of chancery as to equitable estates are fully explained in Morsell v. ''First Nat. Bank, 91 U.S. 357; Lessee of Smith v. McCann'', 24 How. 398; Freedman's Savings & Trust Co. v. Earle, 110 U.S. 710; S.C.. 4. SUP. CT. REP. 226.

In the present instance the trust was an active one, not merely passive. At no time during the life-time of his wife could Robert Forsythe call for, or compel from the trustee, a conveyance of the legal title. On the contrary, the trustee was required by the terms of the trust, subject to the power of appointment, to retain the legal title in himself, and to permit Mrs. Forsythe to use and occupy the property, and to enjoy and receive the rents and profits thereof during her life and to her own use; language which, if it cannot be properly construed to devote it to her separate use, all the more required the protection secured to her actual right by the legal title being vested in a trustee. The estate of Robert Forsythe, therefore, under the trust, whether for life or in fee, whether vested or contingent, was equitable merely, and of that nature which could not be subject to sale for payment of his debts except by the aid of a court of equity. In such cases no lien arises by operation of law from the judgment, but only on the filing of the bill.

On the contrary supposition, that the estate of Robert Forsythe, under the deed of trust to Arthur, was subject at law to the lien of the appellant's judgment, their title still must fail. Prior to the enactment of 1 & 2 Vict. c. 110, it was settled in England that at law a judgment against the party having a power of appointment, with the estate vested in him until and in default of appointment, was defeated by the subsequent execution of the power in favor of a mortgagee. Doe v. Jones, 10 Barn & C. 459; Tunstall v. Trappes, 3 Sim. 300. And it was held to be immaterial that the purchaser had notice of the judgment, (Eaton v. Sanxter, 6 Sim. 517;) or that a portion of the purchase money was set aside as an indemnity against it. Skeeles v. Shearly, 8 Sim. 153; S.C.. on appeal, 3 Mylne & C. 112. In this case Sir JOHN LEACH, the vice-chancellor, decided that the effect of the transmission of the estate by appointment was that the appointee takes it in the same manner as if it had been limited to him by the deed under which the appointer takes in default of appointment, and consequently free and disconnected from any interest that the appointer had in the tenements in default of appointment; that as the appointee is in no sense the assignee of the appointer, he cannot be affected by judgments which affect only the estate and interest of the appointer, and, that being so, the circumstance of his having notice of such judgments is immaterial. The statute of 1 & 2 Vict. c. 110, altered the law in this respect by making judgments an actual charge on the debtor's property, where he has at the time the judgment is entered up, or at any time afterwards, any disposing power over it which he might, without the assent of any other person, exercise for his own benefit, so that it would continue to bind the property, notwithstanding any appointment. 2 Sugd. Powers, (7th Lond. Ed.) 33; Burton, Real Prop. (8th Lond Ed.) 283; Hotham v. Somerville, 9 Beav. 63.

In Illinois the definition of that real estate which is made subject at law to the lien of judgments, was enlarged by the act of July 1, 1872, (Hurd's Rev. St. 1883, p. 676,) so as to include 'all legal and equitable rights and interests therein and thereto;' but the rights of the parties in this suit are not affected by it, and must be governed by the principles of the common law in force when they became fixed. It is, indeed, a rule well established in England, and recognized in this country, that where a person has a general power of appointment, either by deed or by will, and executes this power, the property appointed is deemed, in equity, part of his assets, and subject to the demands of his creditors in preference to the claims of his voluntary appointees or legatees. This rule is stated by Mr. Justice GRAY in Clapp v. Ingraham, 126 Mass. 200, to have had its origin, perhaps, in a decree of Lord SOMERS, affirmed by the house of lords, in a case in which the person executing the power had, in effect, reserved the power to himself in granting away the estate. Thompson v. Towne, Prec. Ch. 52; S.C.. 2 Vern. 319. But it was frequently afterwards applied to cases of the execution of a general power of appointment by will of property of which the donee had never any ownership or control during life. In re Harvery's Estate, L. R. 13 Ch. Div. 216. That doctrine, however, has no application in the present case for several reasons. The appellants did not seek such relief in equity as against the $w353 estate created by the exercise of the power of appointment by Robert Forsythe, but claimed a lien at law upon the antecedent estate, which that exercise of the power had displaced and defeated. At the time when that might have been done, their judgment had ceased to be a debt against him by reason of his discharge in bankruptcy, and the appointees, Corwith and Cochrane, were not volunteers, but purchasers for value.

It is further said, however, that the bankruptcy itself cut off the power of appointment in Forsythe. If so, it passed to the assignee in bankruptcy for the benefit of the estate and its general creditors, was exercised by the sale at which Wallace became the purchaser, and vested in him a complete title by virtue of the appointment, displacing and defeating the limitations under the original deed of trust to Arthur, and then passed to the appellees by virtue of the conveyance from Wallace to Scoville. But it was held in Jones v. Clifton, 101 U.S. 225, that such a power of appointment does not pass to an assignee in bankruptcy of the person in whom the power resides. The case of White v. McPheeters, 75 Mo. 286, cited and relied on by counsel for appellants, does not decide the only question involved here. That case arose under the Missouri statute, which appears to be borader than that of Illinois in its definition of real estate subject to seizure and sale on executions at law; and was, in fact, a proceeding in equity by a creditors' bill to subject the estate, which was subject to the power of appointment, and had been conveyed to a volunteer in pursuance thereof, to the satisfaction of judgments.

On the whole case, we are of opinion that the decree of the direct court was correct, and it is accordingly affirmed.


text: Talk:Brandies v. Cochrane (112 U.S. 344)/Opinion of the Court


text:
Mahn v. Harwood

''Thos. Wm. Clarke'', for appellant.

J. E. Maynadier, for appellee.

BRADLEY, J.

title: Mahn v. Harwood


text: Talk:Mahn v. Harwood

title: Talk:Mahn v. Harwood


text:
Mahn v. Harwood/Opinion of the Court

This suit was brought on a patent relating to leather covers of 'base-balls and other similar articles.' The patent was originally issued to one James H. Osgood, of Boston, under date of May 21, 1872. The bill states that Osgood afterwards assigned this patent to Louis H. Mahn, the complainant below, appellant here. On the eleventh of April, 1876, it was reissued, and the suit is brought on the reissue against the Harwoods, charging infringement. Except in stating the nature of the invention, and the claims, the specifications of the original and reissued patents are precisely alike. The description and accompanying drawings are not changed. Briefly stated, the specification describes a leather ball-cover composed of two hemispherical parts, each being moulded into form when in a wet state, and, after being dried, sewed together on to the ball by a peculiar stitch, called a double nerring-bone stitch; then a second cover made in precisely the same manner, and sewed on to the ball, outside of the first cover, in such manner that the stitches of the two covers may cross each other at right angles.

In the original patent it is stated that the nature of the invention consists-First, in the employment of a new stitch, called the double herring-bone secured stitch, whereby only one stitch can be broken at a time; second, in the employment of a binder of leather next the yarn of a base-ball, or as a first cover to other round articles, so stitched and put on that the outer covering when applied shall have its seams at right angles, or breaking joints, with the seams of the first cover; third, in making the leather covers of a hemispherical shape, by compression and crimping in properly shaped moulds with plungers, while wet, after which they are dried in shape and then softened by moisture, stretched on and sewed. The claims of the original patent are the two following, namely: '(1) A ball exterior, composed of two crimped hemispherical covers, A and B, having their respective seams, x and y, break joints, substantially as set forth. (2) In combination with a ball whose exterior is composed of two hemispherical covers, A and B, with their respective seams, x and y, breaking joints, I claim the double herring-bone stitch formed of two threads, in the manner herein set forth.' The letters, A and B, in the drawing, designate the two covers, one outside of the other; and the letters, x and y, designate the respective stitches of those covers. The whole invention claimed, therefore, in the original patent, was-First, the two leather covers, (an outside one and an inside one,) with their respective seams crossing at right angles: and, second, the double herring-bone stitch in combination with the two covers.

In the reissue it is stated that 'the nature of the invention consists-First, in the cover of a base-ball formed of two pieces of leather suitably secured to each other; second, the seams of a base-ball united by the double herring-bone knotted lock-stitch; third, a base-ball covering consisting of an outer and an inner covering applied to the ball independently of each other; fourth, a base-ball covering consisting of independent outer and inner coverings made of hemispherical sections, the seams of the inner and outer covers arranged relatively to each other to break joints;' and this reissue has the four following claims, namely: '(1) A base-ball cover formed of two pieces of leather, secured to each other by a single seam, substantially as and for the purpose specified. (2) A base-ball cover having its seam united by the double herring-bone knotted lock-stitch, substantially as and for the purpose specified. (3) The covering of a base-ball consisting of an outer and an inner covering, each of which is composed of two pieces of leather, and applied to the ball independently of each other, substantially as and for the purpose specified. (4) A base-ball covering composed of independent inner and outer coverings, made up of hemispherical sections, the seams of the inner and outer covers arranged relatively to each other, to break joints, substantially as and for the purpose specified.' It is apparent that, in the reissue, the claim of invention is greatly enlarged. The patentee claims therein-First, any and every single base-ball cover formed of two pieces of leather, fastened together by a single seam, substantially as and for the purpose described; secondly, any and every base-ball cover having its seam united by the double herringbone stitch, substantially, etc.; thirdly, every and any use of two covers on a base-ball, each made of two pieces of leather, and applied to the ball independently of each other, substantially, etc. The fourth claim is nearly equivalent to the first claim of the original patent. The others are all new.

It is clear, therefore, on the face of the patents, that the only object of the reissue was to enlarge the claims. The description was not altered in the least. The claims in the original patent were clear and explicit, one of them being substantially retained in the reissue. Nothing was altered, nothing was changed, but to multipl the claims and to make them broader. And this was done, not for the benefit of the original patentee, but for that of his assignee; and was done after the lapse of nearly four years from the granting of the original patent. The case seems to come clearly within the principles lait down in Miller v. Brass Co. 104 U.S. 350, and if we were right in the conclusions arrived at in that case, we do not see how we can sustain the patent sued on in this. The counsel for the appellant seems to be aware of this, and, in his argument, directs his efforts mainly to attack the principles there expressed, although they have been frequently reiterated in subsequent cases. We deem it proper, therefore, to say, once for all, that the views announced in Miller v. Brass Co., on the subject of reissuing patents for the purpose of expanding and enlarging the claim. were deliberately expressed and are still adhered to. As the reasons for those views were quite fully gone into at that time, it is unnecessary to repeat them at large. A few additional observations will suffice. It was not intended then, and is not now, to question the conclusiveness, in suits for infringements of patents, of the decisions of the commissioner on questions of fact necessary to be decided before issuing such patents, except as the statute gives specific defenses in that regard. But the statutory defenses are not the only defenses which may be made against a patent. Where it is evident that the commissioner, under a misconception of the law, has exceeded his authority in granting or reissuing a patent, there is no sound principle to prevent a party sued for its infring gement from availing himself of the illegality, independently of any statutory permission so to do. This is constantly done in land cases where patents have been issued which the land officers had no authority to issue; as, where the lands have been previously granted, reserved from sale, or appropriated to other uses. Stoddard v. Chambers, 2 How. 318; Easton v. Salisbury, 21 How. 426; Reichart v. Felps, 6 Wall. 160; Silver v. Ladd, 7 Wall. 219; Meader v. Norton, 11 Wall. 442; Best v. Polk, 18 Wall. 112; Morton v. Nebraska, 21 Wall. 660; Leavenworth R. Co. v. U.S. 92 U.S. 733; Newhall v. Sanger, Id. 761; Sherman v. Buick, 93 U.S. 209.

In cases of patents for inventions, a valid defense, not given by the statute, often arises where the question is whether the thing patented amounts to a patentable invention. This being a question of law, the courts are not bound by the decision of the commissioner, although he must necessarily pass upon it. See Brown v. Piper, 91 U.S. 38; Glue Co. v. Upton, 97 U.S. 3; Dunbar v. Myers, 94 U.S. 187, 197-199; Atlantic Works v. Brady, 107 U.S. 199; S.C.. 2 SUP. CT. REP. 225; Slawson v. Grand St. R. Co. Id. 652; S.C.. 2 SUP. CT. REP. 663; King v. Gallun, 109 U.S. 101; S.C.. 3 SUP. CT. REP. 85. In this very matter of reissued patents it has also been frequently decided that it is a good defense in a suit on such a patent to show that the commissioner exceeded his authority in granting it. Such a defense is established by showing that the reissued patent is for a different invention from that described in the original; inasmuch as the statute declares that it must be for the same invention. Burr v. Duryee, 1 Wall. 531, 574; Gill v. Well, 22 Wall. 1; Collar Co. v. Van Dusen, 23 Wall. 530, 560; Wood Paper Patent, Id. 566; and many other subsequent cases. The same defense may be established by showing from the record that there was no inadvertence, accident, or mistake in drawing up the specification of the original patent; for the statute only gives a reissue when the original is defective by inadvertence, accident, or mistake. Thus, in Leggett v. Avery, 101 U.S. 259, the reissued patent embraced a claim which had been presented on the application for the original patent and rejected. It was apparent, therefore, that the omission of that claim in the original was not, and could not have been, the result of inadvertence, accident, or mistake, but was the result of design on the part of the commissioner and acquiescence on the part of the patentee; and, so far as that claim was concerned, the reissued patent was properly held to be void. See, also, James v. Campbell, 104 U.S. 368. The proper remedy of the patentee, when a claim applied for is rejected, is an appeal, and not an application for a reissue.

Such are some of the instances in which a patent issued contrary to law is held to be void. And it is no doubt a general rule that where the commissioner has exceeded his authority in granting or reissuing a patent, such fact furnishes a good defense to a suit brought for its infringement. There are stronger reasons for this defense against patents for inventions, which directly affect the citizen, than exist in the case of patents for land, which directly affect the government, and only indirectly the citizen. Now, in our judgment, a patent for an invention cannot lawfully be reissued for the mere purpose of enlarging the claim, unless there has been a clear mistake inadvertently committed in the wording of the claim, and the application for a reissue is made within a reasonably short period after the original patent was granted. The granting of such reissues after the lapse of long periods of time is an abuse of the power, and is founded on a total misconception of the law. The commissioner of patents has evidently proceeded, in these cases, on the view that a patent may be reissued after any lapse of time, for the purpose of making a broader claim, by merely showing that the claim might have been broader than it was, and that it was inadvertently made too narrow at the time. In this we think he has been entirely in error. Lapse of time may be of small consequence on an application for the reissue of a patent on account of a defective specification or description, or where the original calim it too broad. But there are substantial reasons, not applicable to these cases, why a claim cannot be enlarged and made broader after an undue lapse of time. The rights of the public here intervene, which are totally inconsistent with such tardy reissues; and the great opportunity and temptation to commit fraud after any considerable lapse of time, when the circumstances of the original application have passed out of mind, and the monopoly has proved to be of great value, make it imperative on the courts, as a dictate of justice and public policy, to hold the patentees strictly to the rule of reasonable diligence in making applications for this kind of reissues.

Conceding that it is for the commissioner of patents to determine whether the insertion of too narrow a claim rose from inadvertence, accident, or mistake, unless where the matter is manifest from the record, the question whether the application for correction and reissue is or is not made within reasonable time is, in most, if not all, of such cases, a question which the court can determine as a question of law by comparing the patent itself with the original patent, and, if necessary, with the record of its inception. The reason for this was fully explained in the case of Miller v. Brass co. The taking out of a patent which has, as the law requires it to have, a specific claim is notice to all the world, of the most public and solemn kind, that all those parts of the art, machine, or manufacture set out and described in the specification, and not embraced in such specific claim, are not claimed by the patentee; at least, not claimed in and by that patent. If he has a distinct patent for other parts, or has made application therefor, or has reserved the right to make such application, that is another matter not affecting the patent in question. But, so far as that patent is concerned, the claim actually made operates in law as a disclaimer of what is not claimed; and of all this the law charges the patentee with the fullest notice. Then, what is the situation? The public is notified and informed, by the most solemn act on the part of the patentee, that his claim to invention is for such and such an element or combination, and for nothing more. Of course, what is not claimed is public property. The presumption is, and such is generally the fact, that what is not claimed was not invented by the patentee, but was known and used before he made his invention. But, whether so or not, his own act has made it public property, if it was not so before. The patent itself, as soon as it is issued, is the evidence of this. The public has the undoubted right to use, and it is to be presumed does us, what is not specifically claimed in the patent. Every day that passes after the issue of the patent adds to the strength of this right, and increases the barrier against subsequent expansion of the claim by a reissue under a pretense of inadvertence and mistake. If any such inadvertence or mistake has really occurred, it is generally easily discernible by an inspection of the patent itself, and any unreasonable delay in applying to have it corrected by a surrender and reissue is a just bar to such correction. If the specification is complicated, and the claim is ambiguous or involved, the patentee may be entitled to greater indulgence; and of this the court can rightfully judge in each case. No precise limit of time can be fixed and laid down for all cases. The courts will always exercise a proper liberality in favor of the patentee. But, in any case, by such delay as the court may deem unnecessary and unreasonable, the right to a reissue will be regarded as having been abandoned and lost, and the commissioner will be held to have exceeded his authority in granting it. Whenever it is manifest from the patent itself, compared with the original patent and cognate documents of record, or from the facts developed in the case, that the commissioner must have disregarded the rules of law by which his authority to grant a reissue in such cases is governed, the patent will be considered as void to the extent of such illegality. It is, then, a question of law, not a question of fact. As before stated, the case is entirely different from that of a reissue by reason of a defective specification or description, or on account of the claim being too broad. In these cases, the public interest is promoted by the change; while a reissue for the purpose of making a claim more broad and comprehensive is injurious to the public, since it takes from the public the use of that which it previously enjoyed, and which the original patent acknowledged its right to enjoy. We repeat, then, if a patentee has not claimed as much as he is entitled to claim, he is bound to discover the defect in reasonable time, or he loses all right to a reissue; and if the commissioner of patents, after the lapse of such reasonable time, undertakes to grant a reissue for the purpose of correcting the supposed mistake, he exceeds his power, and acts under a mistaken view of the law; and the court, seeing this, has a right, and it is its duty, to declare the reissue pro tanto void in any suit founded upon it.

The truth is (as was shown in Miller v. Brass Co.) that this class of cases, namely, reissues for the purpose of enlarging and expanding the claim of a patent, was not comprised within the literal terms of the law which created the power to reissue patents. But since the purpose of the statute undoubtedly was to provide that kind of relief which courts of equity have always given in cases of clear accident and mistake in the drawing up of written instruments, it may fairly be inferred that a mistake in a patent whereby the claim is made too narrow, is within the equity if not within the words of the statute. Yet no court of equity, considering all the interests involved, would ever grant relief in such a case without due diligence and promptness on the part of the patentee in seeking to have the error corrected. It is just one of those cases in which laches and unnecessary delay would be held to be a bar to such relief. And in extending the equity of the statute so as to embrace the case, the courts should not overlook or disregard the conditions on which alone courts of equity would take any action, and also on which alone the commissioner of patents has any power to grant a reissue. As we have already stated, no invariable rule can be laid down as to what is reasonable time within which the patentee should seek for the correction of a claim which he considers too narrow. In Miller v. Brass Co., by analogy to the law of public use before an application for a patent, we suggested that a delay of two years in applying for such correction should be construed equally favorable to the public. But this was a mere suggestion by the way, and was not intended to lay down any general rule. Nevertheless, the analogy is an apposite one, and we think that excuse for any longer delay than that should be made manifest by the special circumstances of the case.

In the present case there was a delay of nearly four years. The application for a reissue, though made in the name of the patentee and signed by him, was not made for his benefit, but for the benefit and apparently at the instance of his assignee, the present appellant. The specification is very plain and free from complexity, and, as we have already stated, the claims in the original patent were clear and explicit. There was no ambiguity, and nothing to prevent the patentee from seeing at once, on inspecting his patent, whether his whole invention was claimed or not. We can see no possible excuse, and none has been attempted to be shown, for allowing the patent to stand the length of time it did without any attempt to have it amended. The reissue was made against law apparent on its fact, and nothing is shown in the record to remove this illegality. The case is clearly within the principle laid down in Miller v. Brass Co., and the patent must be regarded as void so far as the new and expanded claims are concerned. As this leaves only the fourth claim to be considered, and as it is clear from the evidence in the case that the appellants did not infringe that claim, the decree of the circuit court must be affirmed.

In this case I avail myself of the first occasion which has fairly required it to give expression to my views in opposition to those expressed by the court in several cases in which reissues of patents have been held invalid. The principle on which the present case is decided, and which, if not the only ground of that decision, is emphasized in the opinion as the controlling ground, is that of laches in the application for the reissue. It is quite clear from the opinion that, if in all other respects the patentee had been entitled to the reissue of the patent on which he relies in this case, it would give him no protection, because this court is of opinion that, under the circumstances, the application for it came too late. This proposition of the court does not grow out of any statute of limitation governing such applications, nor because the original patent, and of course the reissue, does not have a considerable time to run before it expires by law, but because the court, applying to the transaction, as it came before the commissioner of patents, the equitable doctrine of laches,-of improper delay,-holds that, on that principle, the party came too late, and the reissue is invalid. The distinction between the instrument being void, and merely voidable, is so well known that it can hardly be supposed to have escaped the attention of the court; and, since the judgment in this case can bind no one but the parties to it, the patentee, in another suit on the same patent, against another party, by showing reasonable excuse for his delay, may prove his patent to be valid, and in that suit he must recover, though he fails in this. Thus, every infringer will have the right to retry, when he is sued, the question of whether the commissioner of patents exercised a sound discretion in allowing the surrender and reissue of the patent. Such a doctrine renders the labors of the patent-office, with its commissioner and corps of trained examiners, of very little value; and subjects the final decision in favor of a patentee to the re-examination of any number of juries on the very facts which were passed upon by the officers appointed by law for the purpose of deciding the questions necessary to the validity of the patent.

The doctrine is well established that a grant by the government, within its lawful authority, evidenced by a patent under its seal, and the signature of the executive, cannot be impeached collaterally. It must be recognized as valid in all courts when it is introduced as evidence of the right which it confers, and can only be avoided by a direct proceeding by way of scire facias, or bill in chancery to set aside the grant for some of the reasons which made its original issue a wrongful act. In such case, the government which issued the patent, by its attorney general or other proper officer, in a court of competent jurisdiction, obtains a decree setting the patent aside, whereby it is rendered of no avail against all persons interested in the matter, as well as the government. For decisions which establish this doctrine, if there could be any doubt about it, I refer to the following cases: U.S. v. Stone, 2 Wall. 525; U.S. v. Throckmorton, 98 U.S. 61, 70; Mowry v. Whitney, 14 Wall. 434, which is the case of a patent for invention, and where the whole subject is fully discussed. Undoubtedly there are cases of patents, with all the solemn formalities attesting their validity, which are properly rejected by the courts when offered in evidence, because they show, upon their face, that no authority existed for their issue. The power to grant the rights which they profess to confer did not exist. Either it did not exist at all, or it did not exist in the officers or tribunal which issued the patent. In such cases, the court can see, from the face of the instrument, the nature of the grant, and the power which the law confers on the officer who issued it, that it is wholly void; and that no evidence to be now produced, or which could have been produced, before that officer, could authorize the grant or make it valid. Such an instrument is void ab initio,-is void always and everywhere, for want of power in those who made it. Can the present case come under this exception? Clearly not. The question of laches-of undue delay in making application to correct 'a mistake, accident, or inadvertence,' by reason of which the patentee does not get the full benefit of his invention-must depend on many circumstances which cannot appear on the face of the reissued patent. No mistake can be corrected until it is discovered. The period of this discovery is always a matter of proof, which may be of the most varied character. If the discovery of the mistake was soon after the issue of the patent, and the delay defeated the right to the reissue, this was a matter into which the patent-office should inquire. The duty to do so devolved on it, and the right to decide it necessarily followed. While the dates of the original patent and of the application for a reissue might seem to show an unreasonable delay, this appearance might have been removed by evidence which afforded a full justification for it. Very long delays have been justified by the decisions of this court, when set up as objections to patents. See Smith v. Goodyear D. V. Co., 93 U.S. 486.

That patents for inventions were intended by congress to have this conclusive and unimpeachable character is manifest from the legislation on this very point. Section 4920 of the Revised Statutes, which was originally enacted in 1836, sets forth five distinct defenses, which may be pleaded to an action for infringement of a patent-right. They are as follows: '(1) That, for the purpose of deceiving the public, the description and specification filed by the patentee in the patent-office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or (2) that he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting or perfecting the same; or (3) that it had been patented or described in some printed publication prior to his supposed invention or discovery thereof; or (4) that he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or (5) that it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public.' The statute also requires the defendant in such cases to give the patentee notice with great particularity of the persons who are prior inventors, or have knowledge of prior use of the invention, and when and by whom it has been used.

It will be observed that while these defenses go to the validity of the patent, they all resolve themselves into want of novelty, or of priority of invention, or discovery, except the first and the last. Neither laches nor fraud is here mentioned as a defense to the patent. Why were these five points made matter of defense by statute? and why were no others mentioned? The answers to these two questions are obvious, and they are conclusive of the question before us.

The answer to the first question is that these defenses go to impeach the patent and destroy its value as evidence in that case; and by the law, as it stood then, and as it stands now, this cannot be done without a special statute to authorize it. And the reason why no other grounds for impeaching the patent were allowed to be set up in defense was that congress intended that all other causes for impeaching the patent should be prosecuted in the usual mode of scire facias, or bill in chancery, brought by the proper law officers of the government to set it aside and annul it. If congress had intended that the patent, issued with all the necessary formalities, should be assailed collaterally for every reason that might have been urged against its issue originally, it would have said so in short terms, and not have enumerated particular or special reasons for which it may be so attacked. That laches is not one of these reasons is clear, and affords an unanswerable argument that it was not intended that it should be a ground of defense for its infringement in such actions.

The careful and studied enumeration of matters going to impeach the patent, where a suit is brought to enforce rights granted by it, is the strongest affirmation that no others are admissible for that purpose in that kind of suit. In U.S. v. Throckmorton the court said that 'in so important a matter as impeaching the grants of the government under its seal, its highest law officer should be consulted, and should give the support of his name and authority to the suit.' In Mowry v. Whitney, 14 Wall. 441, it is said that a suit by an individual could only be conclusive in result as between the parties, and would leave the instrument valid as to all others, and the patentee might be subjected to innumerable vexatious suits to set aside his patent. 'It would seriously impair the value of the title which the government grants, after regular proceedings before officers appointed for the purpose, if the validity of the instrument by which the grant is made can be impeached by any one whose interest may be affected by it, and would tend to discredit the authority of the government in such matters.'

If the principles of the opinion in the present case are sound, then, in every case where an action at law is brought, the jury must sit in judgment on the action of the commissioner of patents, as to the existence of laches, where that is alleged; and as there may be a dozen jury trials in suits against as many different parties for infringing the same patent, each jury deciding on its own impression of the evidence before it, the question of the validity of the reissue can never be settled, nor the patentee or the public know whether his patent is valid or worthless. Such a departure from the settled rules of law as applicable to these instruments cannot be justified in a court until authorized by legislative power. In several cases which have preceded this one, especially Miller v. Brass Co., 104 U.S. 350, where this doctrine has been stated in the opinion, other grounds were also given as the foundation of the judgment. I had hoped, when we came to a case where the question must be decided, my brethren would not adopt it, on full consideration. This must be my apology for any apparent acquiescence in it heretofore. I am of opinion that reissued patents are entitled to the same consideration as other patents issued by the government.

title: Mahn v. Harwood/Opinion of the Court


text: Talk:Mahn v. Harwood/Opinion of the Court


text:
Mackall v. Richards (112 U.S. 369)

W. Willoughby, for appellant.

W. B. Webb and Enoch Totten, for appellees.

HARLAN, J.

title: Mackall v. Richards (112 U.S. 369)


text: Talk:Mackall v. Richards (112 U.S. 369)

title: Talk:Mackall v. Richards (112 U.S. 369)


text:
Mackall v. Richards (112 U.S. 369)/Opinion of the Court

The present suit involves the title to that part of square 223, in the city of Washington, designated as lot 7, at the south-west corner of New York avenue and Fourteenth street. Its building line on the avenue is about 152 feet and 9 inches in length, and on Fourteenth street a little less; while the south line, which is at right angles with Fourteenth street, is about 100 feet, and the west line, which is at right angles with the avenue, is about 97 feet 5 inches, in length. In June or July, 1864, the lot was subdivided by Brooke Mackall, Jr., under whose control it then was, into five smaller lots, each fronting on New York avenue. This subdivision was not recorded in any public office, but a rough plat of it, exhibited in the record, appears upon the books of Mr. Forsythe, a surveyor and civil engineer, who made it at the instance of Mackall. In the same year, shortly after this subdivision, Mackall commenced the erection of a building at the south-west corner of the avenue and Fourteenth street, which is now known as the 'Palace Market.' That building, he testifies, was 'to cover two of the sub-lost on New York avenue.' In 1867, Plant and Emory, having furnished materials and performed labor on the building, commenced suits at law in the supreme court of this district to enforce liens for the amount of their claims, and each obtained judgment therefor against Mackall. The part of lot 7 upon which Plant asserted a lien is thus described in his declaration: 'Beginning for the same at the north-east corner of the said square; running thence south 44 feet; thence west to the west line of the said lot; thence, in a northerly direction with the west line thereof, to the north line of the said lot; and thence, in a north-easterly direction with the said north line, to the place of beginning.' The description in Emory's suit is this: 'Part of lot 7, in square No. 223, beginning for the same at the north-east corner of said lot, and running thence south 44 feet; thence west to the west line of said lot; thence, with a line at right angles to New York avenue, to the north line of said lot; and thence, in a north-easterly direction with the said north line, to the place of beginning.' Subsequently, A. & T. A. Richards obtained judgment in the same court against Mackall for $897.42, with interest and costs, execution upon which was levied on the same property on which Plant and Emory claimed to have liens. Under executions in favor of these several creditors the property was sold by the marshal. Alfred Richards became the purchaser at $2,500, and received a conveyance. The proceeds of the sale were sufficient to discharge in full the claims of Plant and Emory, and $646.89 of the judgment obtained by A. & T. A. Richards.

This suit was brought in 1871 by A. & T. A. Richards, a part of whose judgment remained unpaid, and other judgment creditors of Mackall, for the purpose of subjecting to the claims of themselves and other creditors who might become parties and share the expenses of the litigation, such part of lot 7 as remained 'after taking or carving out therefrom the aforesaid piece or part thereof so as aforesaid taken, sold, and conveyed by the marshal of the District of Columbia to Alfred Richards,' etc. The bill sets forth that the title to the lot is really in Mackall, but that, for the purpose of hindering and defrauding his creditors, he withholds all evidence of it from the public records of the district. The prayer is that he be required to discover and place on record all conveyances, or other evidences of his title, and that the remainder of lot 7, not sold by the marshal to Richards, be sold, and the proceeds applied, first, to the discharge of existing incumbrances, and then to the judgments of complainants. Such proceedings were had that, by final decree in special term, on the first day of May, 1873, it was adjudged that the title 'to all of lot numbered 7, in square numbered 223, in the city of Washington, not heretofore sold by the marshal of the District of Columbia to the complainant Alfred Richards, is vested in the defendant Brooke Mackall, Jr., and that the same be sold,' etc. Trustees were designated by whom the sale should be conducted. That decree was affirmed in general term. Upon appeal to this court, the decree in general term was itself affirmed, without modification, and the cause remanded for such proceedings as would be consistent with right and justice. In this court, the only dispute was as to the sufficiency of the evidence to show title in Mackall, and no question was made as to the indefiniteness of the description of the interest or property decreed to be sold, or as to the validity of the marshal's sale. Subsequently, the trustees named in the original decree executed the order of sale and made report of their acts; but, upon exceptions filed, the sale was, on July 24, 1877, set aside, the order providing that before sale can be made 'the amount to be sold must be definitely ascertained by some proper legal procedure.' The sale was set aside partly because it appeared upon the hearing of the exceptions that the trustees announced at the biddings that they did not know, and did not undertake to state, what were the precise lines or boundaries of the ground to be sold, and would not undertake to do more than sell such part of lot 7 as was outside of that embraced by the marshal's deed to Alfred Richards, leaving purchasers to find out as best they could the extent of their purchase. Bidders were informed that, 'whether the south line of Richards' purchase runs south-westerly from the front or south-east corner of the building along the line of the fence * *  * parallel to and 44 feet from New York avenue, or whether it runs due west along the south side of the building to its rear end, and from thence westerly to the rear end of the lot, is a legal question which the trustees do not undertake to determine.'

By an order entered July 13, 1878, the cause was referred to a special auditor to report 'the proper metes and bounds of that portion of lot No. 7, in square 223, which was sold by the marshal of the District of Columbia to Alfred Richards, and also that other portion of said lot not so sold, and which is directed by the decree in this case to be sold by the present trustees.' He reported that, upon examining the testimony, the proceedings in the mechanics' lien suits, the returns upon the executions under which Richards had purchased, the advertisement of sale, and the marshal's deed of conveyance, he could not reach a conclusion as to how much ground was intended to be sold or conveyed to Richards. Exceptions by the complainants to this report were sustained, and the court, 'proceeding to determine the said boundaries in accordance with the said order of July 24, 1877,' directed the trustees to sell, in accordance with the terms and provisions thereof, all that portion of lot 7 lying south of a line drawn from a point on Fourteenth street 44 feet south of the north-east corner of said lot, and running thence parallel with New York avenue to the west line of lot 7. This order was made 'without passing upon the validity of the said marshal's sale.' A similar decree was passed in general term, accompanied by a recital that it should be construed 'as not determining any question of title to any portion of said lot 7 lying north of said line.' The present appeal is from the latter decree. The action of the court below directing the sale of only so much of lot 7 as lies south of a line running from a point 44 feet south of its north-east corner parallel with New York avenue to the west line of the lot, leaving undetermined the question of the title to that part of the lot lying north of that parallel line, is subject to review, upon this second appeal, if, as appellant contends, the proceedings, subsequent to the decision here, are erroneous and prejudicial to his substantial rights in respect to matters not concluded by the original decree. His claim is that the natural and established front of lot 7 is on New York avenue, and that the sale of the piece south of the said parallel line, separately from the ground north of it, will materially, as well as needlessly, impair the value of both, especially the former. We are of opinion that this claim is, in all respects, well grounded; and that the appellant is entitled to a reversal, unless it appears from the record that the ground north of the said line running from Fourteenth street parallel with New York avenue-which ground was, in effect, withdrawn from the operation of the original decree-was embraced by the sale of the marshal to Richards. Unless sold heretofore by the marshal, it is covered by the original decree, which this court affirmed.

The question as to what part of lot 7 was not sold by the marshal to Richards is attended with difficulty and embarrassment. But it is one which the court below was bound under the issues to determine, in order that its decree of sale might be properly executed. Upon examination of the marshal's advertisement of the sale at which Richards purchased, and of the deed which the latter received, we find no such description of the property sold and conveyed as will certainly embrace that part of lot 7 which lies west and westerly of the building erected at the corner of New York avenue and Fourteenth street, and north of the line described in the final order as commencing from a point on Fourteenth street 44 feet south or the north-east corner of said lot, and running thence parallel to the line of New York avenue to the west line of said lot. The advertisement of sale thus describes that part of lot 7 then proposed to be sold: 'Beginning at the north-east corner of said square [223] and running thence south 44 feet; thence west to the west end of the lot; thence in a northerly direction with the west line thereof to the north line of said lot; thence with said north line to the place of beginning.' The description in the marshal's deed to Richards is the same as that in the advertisement of sale, except that instead of the words, 'thence west to the west end of the lot,' the call in the deed is, 'thence westerly to the west end of the lot.' The line running south from the north-east corner of the lot along Fourteenth street is aptly described. But what is meant by the words 'west to the west end of the lot' in the advertisement of sale? If by 'west end of the lot' is meant its north-west corner where its west line meets New York avenue, and if by 'west' is meant due west, then a line running due west from Fourteenth street will not strike the west end of the lot, but will intersect New York avenue some distance north-east of the north-west corner of the lot. Further: If 'west to the west end of the lot' means 'westerly to the west end of the lot,' then there would be left outside of the ground upon which the building stands, and north of the line thus drawn, a narrow, irregular slip of ground, diminishing in width as the line runs westerly, and which it cannot be supposed it was within the contemplation of the marshal, or of any of the parties interested, to sell.

But we do not suppose that by 'west end of the lot' was meant its northwest corner, where its west line meets New York avenue; because the next call which appears in the levies, in the advertisement of sale, and in the marshal's deed-'thence in a northerly direction with the west line thereof to the north line of said lot'-would then be meaningless. We incline to think that by 'west end of the lot' was meant 'west line of the lot.' Such, as we have seen, is the call in the mechanics' lien suits. This would make intelligible the succeeding call, 'thence in a northerly direction with the west line thereof.' But even this interpretation does not dissipate the confusion which arises from these inconsistent descriptions of the property; for, if the line starting from Fourteenth street is run due west, it will not strike any point in the west line of the lot. And if it be run westerly, which may mean north of west or south of west, to what point on the west line of the lot must it be run? The appellee contends that it should be run parallel with New York avenue. The answer to that suggestion is that the descriptions in the lien suits, in the levies, and in the marshal's advertisement and conveyance will be satisfied by running north or south of that parallel line to any one of numerous points on the west side or line of the lot. We are here met with the suggestion that the sale was made in discharge of certain mechanics' liens, and that the description of the property in the marshal's advertisement and deed should be held to include all the ground which could have been included under the laws in force in this district on the subject of such liens. That law provides, in respect of a building in the city of Washington or Georgetown, that 'the ground on which the same is erected, and a space of ground equal to the front of the building and extending to the depth of the lot on which it is erected, shall also be bound by the said lien,' subject to the condition that the land, at the time of the erection or repair of the building, is the property of the person contracting for such erection or repairs. Rev. St. Dist. Col. § 704, (11 St. 377.)

The argument implies that the statute gave a mechanic's lien upon so much of the lot as would constitute a parallelogram bounded on the east by the line of 44 feet on Fourteenth street, on the south by a line parallel with New York avenue, on the west by the west line of the lot, and on the north by the line of New York avenue. But the inherent difficulty in this view arises from the description in the marshal's advertisement and in his deed for the property actually sold and conveyed. That description will not cover the ground included in the supposed parallelogram. Further, if the front of the building is conceded to be on Fourteenth street, the lot over which the statute extended the mechanic's lien would not be the ground between New York avenue and a line running parallel with and 44 feet from it. In such case, the ground covered by the lien would rather be that which lies north of a line commencing 44 feet south of the north-east corner of the lot, and extended at right angles from Fourteenth street until it strikes New York avenue. But a conclusive answer to the suggestion, based upon the mechanic's lien law, is that, so far as the record discloses, Plant and Emory did not, when enforcing their claims, assert a lien upon the ground within the beforementioned parallelogram.

We are of opinion, upon the whole case, that the record fails to show that any part of lot 7, outside of the piece upon which the building at the northeast corner of the lot stands, was sold or conveyed by the marshal to Richards; consequently, for the purposes of this suit, and as between the parties thereto, all of lot 7, except the part actually covered by the building, must be deemed to be embraced by the original decree, and to be subject to sale, as therein adjudged, in satisfaction of the demands of complainants. Whether that part of the lot upon which the building stands is still the property of Mackall-that is, whether the sale and conveyance of the marshal is valid in respect, at least, of that part of the lot-we do not determine. We forbear any expression of opinion upon that question, because it is evident that the complainants did not seek, nor the court below intend, by the original decree, to subject to sale the ground on which the building stands; and also because the validity of the marshal's sale is directly involved, as we are informed by counsel, in a distinct suit upon our docket, not yet reached.

The decree must be reversed, and the cause remanded, with directions to the court below to set aside the decree from which this appeal is prosecuted, and to order the sale, in satisfaction of the complainants' demands, and in such mode as may be consistent with the practice of the court and with law, of lot 7 outside of the part upon which the building known as the Palace Market stands. It is so ordered.


text: Talk:Mackall v. Richards (112 U.S. 369)/Opinion of the Court


text:
Chicago St. Railway Company v. Ross

J. W. Cary, for plaintiff in error.

C. K. Davis and Enoch Totten, for defendant in error.

[Argument of Counsel from pages 378-379 intentionally omitted]

FIELD, J.

title: Chicago St. Railway Company v. Ross


text: Talk:Chicago St. Railway Company v. Ross