710
FEDERAL REPORTER.
would be carried out, and so all possibility of dissolving petitioner's lien put an end to, yet, if there was no reason to anticipate any difficulty in the carrying out of the composition agreement, the petitioner might have had his money. McGehee v. Hentz, 19 N. B. R. 137. But as this creditor took the law into his own hands, and appropriated the money without leave of the court, subject to. whose order it was held, the merits of his application for satisfaction of his lien must be determined 1;ly the state of facts existing now, when he first asks leave of the court to take the money. The circumstances have entirely changed. The bankrupts have entirely failed to pay the composition. They have been again ordered to do so, and proceedings are pending against them to have them punished for a wilful neglect to to pay the composition. There is now strong reason to anticipate that the compostition will be set aside and an assignee appointed, if the appointment already made is invalid, as is claimed by this petitioner, and in that case the petitioner's attachment will be dissolved and this money will be distributed among the creditors. Motion denied, without prejudice to its renewal in case, upon the termination of pending procet.:dings, the composition shall not be set aside.
In re 1.
STEVENSON
and others, Bankrupts. April 25, 1881.)
(District Court, W. D. Pennsylvania.
BANKRUPTCY COURT-POWElt TO SET ASIDE PnrvATE SAI,E.
For good cause shown the court may set aside a private sale of the real estate of a bankrupt made under its decree, evell where the sale has been consummated and a deed delivered to the purchaser, if application by a party in interest to set the sale aside is made in due time. 2. FIDE PURCHASER.
In such case the court may set aside thc sale and vacate the decree under which it was made. notwithstanding the purchaser frum the assignee. the next day after he received his deed, conveyed the title to his father, wiw daillled to be a bona fide purchaser.
IN RE STEVENSON.
711
In Bankruptcy. Sur petition of W. K. Jennings, administrator de bonis non Cltm testamento annexo of John Stevenson, deceased, to set aside a private sale of the real estate of the bankrupts, made by the assignee, as per order of COUl't, to William M. McElroy. W. K. Jennings, for estate of John Stevenson, deceased. John M. Kennedy, for assignee. John Barton, for purchaser. ACHESON, D. J. The order authorizing the private sale in was made during the present term of court, to-wit, on February 18, 1881, but it was not consutlimated by the delivery of the deed to the purchaser until February 26th, or later. The petition to set aside the sale Was' presented March 15, 1881. No report of the sale was made by the assignee to the court, and this, perhaps, was not However, I am clearly of opinion that for good cause shown the court has the power to set aside such sale, at least during' the term at which the order to sell is made. Act of June 22, 1874, § 5062u; Bump, - j Blumenstiel, 250 j In re Ryan, 6 B. R. 235. The act of June 22, 1874, declares "that, unless otherwise ordered by the cOurt, the assignee shall sell the property of the bankrupt, whether real br p.ersonal,· at public auction, in such parts or parcels, and at such times and places, as shall be best calculated to produce the greatest amount with the least expense. .· .· .. And the court, on the application of any party in interest, shall have complete supervisory power over such sales, including the power to set aside the same, and to order a resale, so that the property sold shall realize the largest sum." Undoubtedly, this latter provision' is broad enough to embrace a private sale of the real estate of a bankrupt made under an order of court authorizing it. And I am of opinion that, even where such sale has been consummated by a delivery of a deed, the court, in a proper case, may exercise the power to set aside the sale, if application is made within due time. Here, I think, was made in· due time j for we are in the same term at which the order to sell was made, and the application to set the sale aside, which is by a partyfu inter-
712
FEDERAL CEPOUTEn.
est, was made as soon as he learnecl the [act of the sale, and within 18 days after it was made. W. K. Jennings, as administrator of the estate of John Stevenson, deceased, it would seem, is much the largest creditor of the bankrupts. His debt as proved amounts to $32,081.16, while the whole amount of indebtedness proved is something less than $80,000. Mr. Jennings is a home creditor, residing within the city of Pittsburgh, and personally well acquainted with most of the real estate in question. Most certainly he was entitled to notice of the application for the order to make the proposed private sale,' and such was the view' of the assignee, for he testifies that he had reqnested his counsel to give information to Mr. Jennings, and was under the impression it had been given. But, by some misapprehension, notice was not given Mr. Jennings; he knew nothing of the application, order, or sale until within three days of the presenta,tion of his petition to set aside the sale. When the assignee stated in his petition for leave to sell - to William M. McElroy that he had "conferred with some of the principal oreditors of said bankrupts, and they advise him to accept said offer," the oourt had a right to assume that the assignee had not overlooked the principal home creditor. And, indeed, it is shown that both the assignee and his counsel had good reason to believe that Mr. Jennings knew and approved the proposed sale. In that belief the counsel acted. The evidence before the court justifies the conclusion that the price at which McElroy bought is grossly inadequate. Certainit is that authority to make the sale to him at his offer would not have been granted had the facts now shown appeared to the court. It now appears that Mr. McElroy was the nominal purchaser only; that he was acting for E. L. Barton, the brother-in-law of A. K. Stevenson, one of the bankrupts, and that Stevenson negotiated with the assignee for the purchase. As the court would not have authorized the sa.le to McElroy if the facts had been disclosed, it cannot now give its sanction to that sale or permit it to stand. It is, irideed, true, that on the first day of March, 1881, McElroy conveyed the interest he acquired under his deed from the
SMITH V.
MERRIAM.
713
assignee to E. L. Barton, who the next day made a conveyance for part of that interest to his father, John Barton, Esq. The consideration for the conveyance to the latter was. :au exchange of properties between the father and son. Mr. John Barton has been heard in opposition to the petition to set aside the sale to McElroy. In his answer and testimony he states that he was an entire stranger to the court proceedings, and knew nothing of the· matter until after McElroy got his deed froUl the assignee, and that he made the exchange of properties with his son and took the conveyance from the latter in entire good faith. But, in view of the relations between the parties, and the peculiar circumstances of the case as disclosed by the testimony, I am of opinion that he is chargeable with the notice that the sale to McElroy was impeachable, and liable to be set aside by the court. The conveyance to Mr. Barton, Sr., under all the facts, in my judgment ought not and does not constitute any obstacle to an order setting aside the sale to McElroy and vacating the decree under which it was made. Such order will be made, and a public sale ordered, upon the filing of a bond, with approved surety, to secure the bid at public auction offered in the stipulation which accompanies the petition of W. K. Jennings.
SMITH
and others v. MERRIAM and others. January 22, 1881.)
(Circuit Oourt, D. Massachusetts. 1. H.E-IssUE-COMMISSIONER OF PATENTS.
The decision of the commissioner of patents as to the mere necessity of a re-issue is conclusive. 2. SAllIE-SAME.
A mistake as to the necessity of such re-issue does not constitute· an excess of jurisdiction. 3. SAME-VARIATION OF CLAI1IIS.
Upon such re-issue the claims may be varied in order to express thtt real invention.
714 4., SAME-SA,ME.
FEPERAL REPORTER.
The grant of are-issue in order to enable the patentee to claim the actual operation of his tools in detail is authorized by statute. 5. HE-IBBUE No. 7,558-NoVELTY. Re-issue No. 7,558, for a presser-foot for a sewing machine, intended for sewing stay strips upon boots and shoes, held not void for want of novelty. -[ED.
In Equity. Geo. L. Roberts t1 Bros." for complainants. E. P. Brown, for defendants. LOWELL, C. J. The original patent in this case, No. 177,296, dated May 9, 1876, describes a presser-foot for a sewing machine, intended for sewing stay-strips upon boots and shoes. These are narrow strips of leather sewed over that seam of the upper leather of the shoe which covers the heel or the inste'p, to protect the seam from the wear of the dress. The strip is folded or doubled over and sewed on each side of the central ridge, or projection of an outward-turned seam, and has a groove on each side, in which the stitches are to be laid. The presser-foot has a groove to fit the projecting seam,and two ribs, or fillets, as they are called in the original patent, to form the grooves. The hole for the needle is made in one of these ribs. One row of stitches is laid, and then the work is turned round and the stitches are laid along the other edge. All this is shortly, but sufficiently, set forth. There is described, besides, a "folding mouth," or tunnel, through which the plain strip is to be passed, in order to be folded or doubled over into the requisite shape. The claim is for "a sewing machine presser-foot, provided with means, substantially as described, for folding and channelling a seamstay piece, such consisting of the fillets, e, e, and of the folder, composed of the tapering mouth, a, [and] the partition, d, all being arranged with the guide-groove, b, and needle-hole, 1, as set forth." Soon after this patent was taken out, it was found much more economical and convenient to fold and crease the stay. strip by a separate machine or operation, and then the plaintiff obtained the re-issue, No. 7,558, which is relied on in this case.
SMITH V. MERRIAM.
, 715
In the re.issue, the operation of sewing the stay-strip is described with more fulness of detail than in the patent, and the single claim is replaced by three. (1) A sewing machine presser·foot for use in sewing stay or saddle pieces to seams, the acting or under face of which is formed with a recess, consisting of a longitudinal central recession to receive the saddle part of the stay-strip, and of side recessions to contain the part of the strip intervening between its central saddle part and its edges, substantially as set forth. (2) The presser.foot, framed with central and side recessions, as described, and with parallel ribs intervening between the central recessions and side recessions, as set forth. The third is like the single claim of the original, and is not in issue here. Upon comparing the claims of the patent and the re-issue, it seems that the patentee has separated his folding mouth from his presser.foot proper; and has also claimed a presserfoot which has recessions or recesses calculated to receive the central and onter swells or beads, whether the grooves for the stitches are formed by the action of the ribs of the presserfoot in the operation of sewing, or had been made in the stay before it is brought to the sewing machine. The first question which arises is whether the re-issue is and valid. Supposing for the present that the thing described inthe two patents is the same,-that the presser-foot, which will fit over the seam and make the grooves, and cause the stitching to be made in them, will fit over the bead-shaped edges and cause the stitches to be laid in the grooves which have been made beforehand, and that it will work as a presser-foot upon a seam folded beforehand, independently of the action of the folding mouth,-can the patentee, by a re·issue, modify or divide his claims, so as to embrace these several distinct features of his tool? A case has been brought to my notice, decided by Mr. Justice Field, on his' circuit, which is supposed by the patent lawyers to indicate a new departure in the law of re.issued patents. The high authority and great importance of that
FEDERAL REPORTER. decision will be my apology for a discussion, which, a few "leeks since, would have been unnecessary. The case is The Giant Powder Co. v. The California Vigorit Powder Co. 18 O. G. 1339; S. C. 4 FED. REP. 720." In it the learned judge is understood to declare that if the court can discover, upon a comparison of the two instruments, that there was no defective specification to be amended, and that the claim was not broader than the invention, the action by the commissioner in granting a re-issue was in excess of his jurisdiction, and void; and that if the patentee claims too little, instead of too much, his specification is not defeotive by reason of that mistake, but all whioh he did· not claim was dedicated to the public. I do not mean to say that I consider the decision to be as extensive as this; but it is so understood by some members of the bar; and there are remarks in the opinion which lend a color to such a construction. The Revised Statutes simply re-enact the law upon this subject whioh. :has been in force since 1836: "Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, :accident, or mista.ke, and without any fraudulent or deceptive intention, the commissioner shall,on the surrender of such patent, a.nd the pa.yment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued." Section 4916. The most natural construction of this law would, perhaps, be, that if a patent should be inoperative by reason of a defectivespecification, or invalid for claiming too much, the defect might be supplied, or the excessive claim be reduced by reissue. But the courts have given a very different interpretation-much wider in most respects, and narrower in only one. They do not permit a defective specification to be supplied, -excepting from the drawings or model; but they do permit the claim to be varied, provided the same invention is See s. C.· 5 FED. HEP. 197.
SMITH V. HERnIAII.
717
described in both patents, and hold that the decision of, the office that the occasion had arisen for granting a re.issue if> final. The law is extremely liberal, perhaps too much so, but if we change it suddenly we and has been much shall make a destruction of titles which it is impossible to contemplate without dismay. If the court is to decide, by inspection of the original patent, that it was not defective, the result is this: That after a patentee, upon the best advice which he can obtain, has been instructed that his specification needs amendment, and obtains It new patent, the court may say, "Weare uriable to see any· defect, and your re-issue, however honestly' obtained, is bad, 'b'ecause your origina.l patent was so good." The mistake is one of law, and the commissioner does not usually debidlfthe law finally ; 'but 'as totha mere question of the necessity for a new patent itself to 'be unobjectionable, hiB decision has always been held to be' final:· and this for an unanswerable reason, that no pat. entee, -however honest or :caref.ul,' can be safe in obtaining a re"issue, If.he.{.J'to'be infOtnled, when-he gets into court, that t;be jridgeis 'U'tlable to s,OOwhy! have surrendered bis first pMent.Thesligbtep and more bbviously tionable chattge, the str01lge'twill be the argUment that there was no occasion to mh.keit;:so that honest and caieftil .patentees will be the most likeLy to suffar. : rt does not help the matter 'to call the action of the commissioner' an 'excess of j.urisdiotion.: I know that: the courts have ca,lledthese mistakes. jurisdictional; They did this to overrule, without positively saying so, the early cases which held the action of the commissioner within hisjnrisdictioll to be final. It is'obvious that the commissioner has' the same jurisdiction to issue a bad patent as to issue a good one. As his action is ex parte it does not bind the world, excepting in certain matters which it is both unjust and inconvenient to review. A mistake by bim as to the necessity of issuing a new patent is not an exoess of jurisdiction, but a mistake in a matter clearly within his jurisdiction; and the real ques-
''llS
,,Vi,lDERAL ;REPORTER.
tion is'whether it is one which the conrts will correct by destroying a new patent aftel" the old one has been surrendered. Upon questions of the validity of a patent, or of are-issue, in all great matters {If novelty and construction and patentability, the decision of the commissioner is not final, though his jurisdiction is undoubted; but I repeat that urgent reasons of justice require that upon the mere question whether the paper called a re-is8ue shall be given, his finding should be, as it has hithertoa,lwaYB been held to be, conclusive. Again, if it be found thatthe claims of the patent were valid, and that the re-issue. for the same invention states the claim or claims in a different way,-though it may be a better way for the patentee,-the change does not of itself vitiate the new patent; but, on the contrary, the original claims are conolusively presum.ed to have been made as they wera through inadvertence, aocident, or mistake. The law is so well settled that most of the reports do not contain the claims of the two patents; but,I l;luppose that no re-issue has ever contained the exact claims .of the original, and this can be discovered, incidentally, in many of the cases, and tively in some. where ,the very point is passed upon. See Allen v. Blunt; 3 Story, 742; Stimpson v. Westchester R. Co. 4 How. 380: O'Reiily v.MoTst-, 15 How. 62; Batten v. Taggert, 2 Wall. Jr. 101: S. C. 17 How, 74: Bennet v. Fowler, 8 WalL 444; The Goodyear ,Cases,2 Wall. Jr. 283, 356; 2 Cliff. 351: 9 Wall. 798: Seymour v. Osborne, 11 Wall. 516; Roberts v. Ryer, 91 U. S. 150; Marsh v. Seymour, 97 U. S. 348: remarks of Bradley, J., in Powder Co. v. Powder Mills, 98: U"S. same learned judge in Carlton v. Bokee, 17 Wall. 463, where he intimates that a re-issue may he good as to those' claims whioh agree with the invention, and void as to others which e1.ceeQ. it: Cochrane v. Deener, 94: U. S. 780; Conover v. Roach, 4 Fisher, 12; Stevens v. P1'itchard, 10 O. G.505: Herring v. Nelson, 14 BIatchf. 293; Johnso.n v. Flushing R. 00.15 BIatchf. 192: Analin Co. v. Higgins, Id; 290:. Pearl v. Ocean Mills, 11 O. G. 2. None of
SMITH .. V; .MERRIAM:.
these cases, unless it be BiLttenv. Taguert,.17 How. 74,which is perhaps inconsistent with Leggett v. A7?ery, 10lU. S. 256,-has been overruled ; and a great many cal?es could be cited. ' It been ,brought out a. little more decidedly by the later cases that the invention must be the same; but it has never been held in the supreme court,or any circuit court, 80 far as I can discover, t.hat the sioner's decision is Dot final as to the propriety of a re.issue, as distinguished from its validity upon what may,becq,Ued its merits; or that the claims may not:.. be varied to the real invention. The claim is part of the and if defective may be amended., R'IJ,88Cll v. Dodge, 9;3U. S. 460, in which the decision is given by Mr. Justice Field, and which is cited by him in the Powder, CO,'8 oase,merely decides that are-issue whieh claims a different inventioll is made at this, term of the void. A similar decision supreme court, in giving which,1i(r. Justice Strong states the law in the old way, that the c6mmissioner's:decisionis final as to the mistake; but ,not· as to the identity, of invention. Ball v. Langle8, 18 O. G. 1405.' .The only cases which, h!3 cites are Seymowr v. O.sborne and R'U88ell v. Dodge" which. he evidently considers. to 'be consistent with each othet. , I conclude, therefore, that the re-issue. was granted to correct some' inadvertence, accident or mistake. ' Whether it .is valid is quite another matter.: I have read with 4iligence the very voluminous record, and am'satisfied thaHhepJ;"esser. foot described and shown in the -original patent and :Q1odel has the functions claimed infilhe :It was a topl W4ich was fitted forapartic1il.lar pur!J?ose, and if the claim 1;J.ad, b.eAA well adapted to the invention it would not have beenj :lWCE);&sary to re-issue thepatent t for DO one could have justifjell a piracy of the presser.;foot by 'omitting to.usethe folderw4jc)l was attached to it. ThetooLWlJls not a combination,' but all aggregation of twoentirel'y distincttools t olleto fold. a,:p.d to press; that isthold tUe work, to bcsewed,'"The doubt whetilerthe presser-foot would work by:itself was e,vidence t and bya succesSlflllexperiment in Q.pep. aoqrt.
720
So it will operate and produce its results as a presser-foot, though not all the results, when the grooves have been made in the stay-strip before it is sewed. The re-issue, then, was granted in order to enable the patentee to claim the actual operations of his tool in detail, which is a perfectly legitimate reason for a. re-issue, until the law is changed by congress or the supreme court. One great dispute of fact is whether the invention was, in faot, new. One Turner swears that he made a presser-foot of the same sort seven years earlier. Turner was employed by the plaintiffs to sell their presser-foot, and, while :so employed, tried to undersell them with one of his own. For this fraud he was discharged, and went into the employ of the defendants, and procured a patent on his presser-foot. How this came to be granted, without an interference, I am not informed. The invention appears to me to be,in substance, identical with that of the plaintiff. However, Turner says that this was a revival of a presser"foot which he had made years before, and there is some testimony to support him. It is open to the criticism so often made upon such remembered inventions, which never went into general use. Against it, the plaintiffs bring strong negative evidence of many persons who must have seen and used the thing if it existed. They go further, and bring thirty witnesses to impeach the character of Turner for truth; and two who swear that he tried to bribe them to remember his presser-foot. None of, the evidence to character is met, or attempt'ed to be met, excepting by the testimony of one of the defendants. It is not made out, 'to my satisfaction, that Turner made his presser-foot before Sutherland made his. The respondents insist that Turner's presser-foot, whenever it may have been invented,.. !differs essentially bom .that of Sutherland, in that it has its central recession or depression much deeper than those upon the sides, so that it will fit much better the ordinary shape of an outward turned seam. This argument is used both as to novelty and as to infringement. I find, however, as matter of fact, that Sutherland's foot is
LOOKWOOD V. OLEAVELAND.
721
capable of doing the work; and, that being so, the precise relative proportions of the recessions are matters for the constructor. With this view of the patent, it is admitted that the respondents have infringed it. Interlocutory decree for the complainants.
LOOKWOOD
v.
CLEAVELAND.
(Oircuit Court, D. New 1.
February 28,.1881.)
INTERFERING PATENTS-CR08S-BILL-REV.
ST. § 4918. In a suit against an interfering patentee under section 4918 of the P.evised Statutes the defendant is not required to file a croSs-bill in order to obtain affirmative relief.
2.
CROBB-BILL DIBMI8SED-COSTB.
The crosB-bill was therefore dismisaed in this case, upon the motion of the. complainant, as having been improvidently filed, but, under the circuIll8tances, costs were not allowed.-[ED.
In Equity. Motion to Dismiss Cross-bill. Browne & Whitter, for complainant. Munson & Philipp, for defendant. NIXON, D. J. This is a motion to dismiss a cross-bill, as improvidently filed. The circumstances under which the bill was filed are as follows: On the seventh of September, 1875, the commissioner of patents issued to Rhodes Lockwood letters patent No. 167,455, for "Improvement in India-rubber erasers." On the twenty-fifth of May, 1877, one Francis H. Holton, claiming to be the original and first inventor of a certain improvement in erasive rubber, by an assignment in writing, sold and transferred unto Orestes Cleaveland all his right, title, and interest in and to said improvement,which assignment was duly recorded in the patent-office of the United, States, September 27, 1878, in Book J 23, p. 296, of transfers of patents. On the ninth of June, 1877, the said Holton made application to the commissioner for letters patent for said improvement. The commissioner being of the opinion that the application interfered with tho letters v.6,no.7-46