Eachus v. Broomall, 115 U.S. 429 (1885)

“ Be it known that I, James Eachus, of Coatesville, in the county of Chester, State of Pennsylvania, have invented a new p. 430and useful Machine for Cutting Paper Boards, of which the following is a specification:

The drawings accompanying the specification, which formed part of the reissued patent, were the same as the original, except one described as Figure 4, which was added, but was p. 432unimportant. The specification of the reissued patent was as follows:

“ For the purpose of operating this machine, shafts D and F are provided with pulleys P P. Motion is communicated by belts H H, Fig. 2, from a shaft G, on which are pulleys PP • “ The paper to be cut is put upon the carriage A. The pile is composed of a number of large sheets as they are taken from the paper-making machine in a very wet condition. The p. 433carriage is then drawn upon the guides B B, saws BBS cutting through the paper; thence at right angles to the first direction upon guides T T, saws C C C cutting through the pile in the new direction, the result of the operation being to trim the edges of the sheets and cut each sheet into four parts.

vol . cxv—28 p. 434validity of the reissued patent, and a denial of the alleged infringement.

From that evidence', it appears that, at the time of the alleged invention of the appellant, and for many years prior thereto, paper boards for bookbinding or for making boxes were cut, trimmed or separated, while in a wet or moist state, as the paper in sheets came from the mill, by means of a hand saw, sometimes with teeth, and sometimes ground with a curved line to a sharp edge. This was the mode or process m universal use. Heavy paper coming from the machine m a p. 435dry condition was cut, for similar purposes, in one direction by means of rolling shears; that is, revolving circular discs, operated on a shaft, their edges ground to an angle of about sixty degrees, the same as a pair of scissors; and in the other direction by straight shears, acting like ordinary scissors.

But none of these parts, either in their construction or mode of operation, or general function, are novel; for saws and shafts, and frames for carrying material to be cut, had been in common use for cutting other material, and were well known. Accordingly, the appellant, in his specification, enters an express disclaimer as to all such uses, and the combinations and arrangements of well-known machinery by which they had been effected. He says: “ I make no claim to the arrangement of circular saws and carriages, working upon guides for the purpose of cutting logs, blocks of wood, wood of any kind, or any other material except paper.” And thereupon states bis claim, precisely, as follows : “ The combination of shaft J), p. 436shaft F, saws S S S and C C C, carriage A, and frame E, for the purpose of cutting binders’ and box-makers’ paper, substantially as shown and described.” . It is plain, then, that the only invention exhibited in the drawings, or described in the specifications of the original patent, consists in the particular organization of the machine described, whereby the various parts are combined and adjusted, so as to fit it to accomplish the specific result of cutting heavy paper when in large sheets and in a wet condition, as received from the paper-making machine, into smaller sizes and other shapes, for use as boards in book-binding and box-making.

We turn now, for the purpose of comparison, to the reissued patent. In the specification thereto the patentee declares that he has invented, not a machine, but “ a new and improved process of cutting paper boards,” of which a description follows; that the drawings referred to are views of “ my machine for conducting my process; ” that the invention consists m subjecting paper, while in a wet state, as it is taken from the paper-making machine, to the action of circular cutters having serrated edges, whereby the sheets are cut evenly and economically, and the trimmings can be returned to the paper machine without regrinding or other treatment; ’’ that, in the annexed drawings, “ I have represented one practical form of a machine p. 437for conducting my process, but I desire to be understood as not confining myself to the precise construction of such machine, nor to the number of serrated cutters shown.” After describing the construction and operation of the machine, by reference to the drawings, the specification proceeds: “ It will be seen from the above description that I take sheets of paper, while they are in a wet condition, directly from the paper-making machine and pass the saws over them, thereby trimming their edges and leaving them of an equal thickness throughout and dividing them into smaller sheets. This process of sawing cannot be performed successfully and without tearing the surface of the sheets, unless the sheets are wet and in the condition in which they leave the paper-making machine.”

A comparison of the two patents makes it very clear, that, if the patentee had in fact conceived the idea of enlarging the p. 438scope of his invention by development from a machine into a process, he has taken no pains to conceal or disguise his purpose. For he entitled his original patent as for a new and useful machine for cutting paper boards, while w’ith equal explicitness, in his reissue, he declared that he had invented a new and improved process of cutting paper boards. This is at least a prima facie departure from the original grant, which would seem to be serious, if not fatal, under a law that limits the power of the Commissioner of Patents so as to issue a new patent only for the same invention, when the original has been surrendered, as 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 mistake, and without any fraudulent or deceptive intention. If there had been any doubt, as to how the matter was understood by the patentee himself, it has been removed by his testimony in the case, in which, in answer to the question, “ For what purpose did you ask a reissue of your patent?” he said, “ I was told that a process would cover more than a mere machine, and so I applied for a process.”

The attempt is made, in argument on behalf of the appellant, by construction to convert the original patent into a patent for a process, in which the real invention described “ consisted in operating upon a peculiar kind of material with a peculiar kind of cutter,” and in which the claim was inadvertently framed, so as to cover merely the machine itself, and not the process in which it was one only of the factors. But we have already shown, by reference to the state of the art, according to which heavy paper in a wet condition was cut by means of a saw, that the original patent could not be construed as including such a process without invalidating it; and, from the terms of the specification itself, that no such process is described as the invention intended to be claimed. The patent p. 439is plainly limited by its language to the combination, arrangement and adjustment of the particular parts of the very machine described, for the uses to which it is declared to be applicable. On the other hand, the claim of the reissued patent is broad enough to cover the process of sawing paper boards in a wet state by means of a hand-saw; and if, for the purpose of saving it from the necessary consequences of such a claim, it is restrained by construction so as to include only the process described when performed by means of circular cutters having serrated edges—terms of limitation to be found in the specification—it is still broad enough to cover every arrangement, combination and adjustment in which these elements may be found; and this surely is not the same invention as that described in the original patent.

2. In 1862 George W. Roberts died, and on the 17th of December, 1863, his heirs presented a petition to the Orphans Court of Philadelphia County for leave to sell the above premises under the act of April 18, 1853, clear and discharged of all liens in the hands of the purchaser. On January 13, 1864, the said premises were sold, to John Rice for the sum of $10,500, which sale was, on January 15, 1864, approved and p. 441confirmed by the Orphans’ Court aforesaid, and security approved and entered in the sum of $21,000. The conveyance to the said John Rice was made January 30, 1864, in consideration of the sum of $5500, “ and under and subject to the payment of the mortgage debt or sum of $5000, with interest, made and executed by the said George W. Roberts to the Reliance Mutual Insurance Company, of Philadelphia, dated April 13, 1861, and recorded in mortgage-book A. C. H., No. 9, page 71, &c.” This provision is made in the habendum of the deed, but not in the premises. On the fifth day of February, a .d . 1864, this conveyance was duly acknowledged before the Orphans’ Court aforesaid.

Whereupon a decree was entered “that an injunction be granted as prayed for to restrain the sheriff’s sale, of the property mentioned and referred to in the bill, and that the said p. 442injunction do stand until the defendants, Lyon and Taylor, do execute an assignment of the bond and mortgage referred to in the bill, and a transfer of the suit brought upon the said mortgage, upon receiving payment of the debt and interest secured thereby, together with all costs, upon the execution of which assignment and transfer the said injunction shall be dissolved, &c.,” which said decree was affirmed by the Supreme Court, February 23, 1869, and & procedendo awarded.

On December 4, 1869, the sheriff’s deed for the premises p. 443Nos. 1 and 2 was duly acknowledged and delivered to the said defendants. No disposition was made of lot No. 3.

Mr. David C. Harrington [Mr. J. Carroll Brewster and Mr. George W. Biddle were with him] for plaintiff in error, cited Lyon’s Appeal, 61 Penn. St. 15; Brewer v. Fleming, 51 Penn. St. 102; Gilbert v. Hoffman, 2 Watts, 66; Mevey's Appeal, 4 Penn. St. 80; Quinn? s Appeal, 86 Penn. St. 447; p. 444Menges v. Oyster, 4 W. & S. 20; Cadmus n . Jackson, 52 Penn. St. 295, 303; McLanahan v. McLanahan, 1 Penn. 96; Bowen v. Oyster, 3 Penn. 239; Mode's Appeal, 6 W. & S. 280; Kinley n . Hill, 4 W. & S. 426; Anderson v. Neff, 11 S. & R. 208; Maule v. Weaver, 7 Penn. St. 329; Shoenberger v. Hay, 40 Penn. St. 132; Samms v. Alexa/nder, 3 Yeates, 268; Fetterman v. Murphy, 4 Watts, 424; Hoffman v. Shohecker, 7 Watts, 86; Caldwell v. Walters, 18 Penn. St. 79; Swayne n . Lyon, 67 Penn. St. 436; Parke v. Kleeber, 37 Penn. St. 251; Finley's Appeal, 67 Penn. St. 453; Keiper v. Helfricher, 42 Penn. St. 325; Steinman v. Ewing, 43 Penn. St. 63; Hecker v. Haak, 88 Penn. St. 238; Hugus n . Dithridge Glass Co., 96 Penn. St. 160; Gilmore v. Rodgers, 41 Penn. St. 120; Dixey v. Laning, 49 Penn. St. 143 ; Leedom v. Lombeart, 80 Penn. St. 381; Lockhart v. John, 1 Penn. St. 137; West v. Cockran, 104 Penn. St. 482; Gardner v. Sisk, 54 Penn. St. 506; Simons v. Kern, 92 Penn. St. 455; Girard Life Ins. Co. v. Farmers' do Mechanics' Ba/nk, 59 Penn. St. 388; Thompson v. Lorein, 82 Penn. St. 432.

Before proceeding to consider this case, as presented by the findings of fact, it is necessary to dispose of an assignment of error based on a ruling of the Circuit Court during the progress of the trial. It appears from a bill of exceptions that “ the plaintiff offered to prove that a tender of the money, under decree of the Supreme Court of Pennsylvania, in suit No. 60, January term, 1868, was made about the end of May, 1869, by Charles H. Muirhead; that the assignment was returned from Lyon and Taylor executed in blank; that said C. H. Muirhead required that an assignment of said mortgage, with the blanks filled in, should be signed by said Lyon and Taylor; that A. V. Parsons, Esq., representing the parties, Lyon and Taylor, agreed to procure the assignment so p. 445completed, but that such an assignment was not made, and the parties, Lyon and Taylor, absolutely refused to make the assignment and receive the money. Counsel, on being asked, say that the money was ready, but was not actually shown Lyon and Taylor, or their attorney, and aver that an actual tender was not necessary under the refusal of Lyon and Taylor to take the money and make the assignment.”

The former judgment in ejectment is not a bar to the present action, according to the law of Pennsylvania, where the subject p. 446is regulated by statute. 1 Brightly’s Burdon’s Digest Laws of Pennsylvania, 535.

It is true that the statute of Pennsylvania, by which the sale ordered by the Orphans’ Court was authorized, act of April 18, -1853, 2 Brightly’s Purdon’s Digest of Pennsylvania Laws, 10th ed. 1242, Section 5, p. 1244, provides that “by every such p. 447public sale the premises sold shall be discharged from all liens; ” and it is also true that the sale prayed for in this instance was of the premises, “ clear and discharged of all liens in the hands of the purchaser,” and that the sale to Rice, approved and confirmed by the court, was for the sum of $10,- 500, the full price and consideration of the purchase; yet, it is equally true, as appears from the recitals in the deed to Rice, which was duly acknowledged before the Orphans’ Court, that of the consideration, as finally agreed upon between the parties, there was actually paid in cash only $5500, the remainder being represented by the existing mortgage to the Reliance Mutual Insurance Company, under and subject to which the conveyance was made, approved, and accepted. The proceedings,and judgment of the Orphans’ Court must be taken as a whole, and to include the execution, acknowledgment, and delivery of the deed. The sanction of the court to the fact and form of the conveyance was a judicial act, necessary to perfect the proceeding, for, without the deed, the sale would not have been consummated, and no title would have been divested and passed. Foster v. Gray, 22 Penn. St. 9, 15; Brown's Appeal, 68 Penn. St. 53. If the whole proceeding be void, because the court confirmed a sale upon terms not authorized by law, the plaintiff below had no title on which to base a recovery, and the defendants below were mortagees in possession within the protection of the decision in Brobst v. Brock, 10 Wall. 519; if it be erroneous merely, and therefore only voidable, it is good and stands until reversed, and cannot be questioned collaterally. If it be contended that the sale is good, but had the necessary legal effect of discharging the preexisting mortgage, it cannot be denied that the mortgage debt was unpaid, and the mortgage security continued, in the face of the recital in the conveyance, under which the plaintiff in error claims his title. If that recital does not create a personal liability for the payment of the debt, enforceable against the purchaser in an action of covenant, it is, nevertheless, a condition upon which his title vested and depends. He certainly cannot be permitted to claim both under and against the same deed; to insist upon its efficacy to confer a benefit and p. 448repudiate a burden with which it has qualified it; to affirm a part and reject a part. The whole title of the plaintiff in error rests upon that conveyance, and the continued existence of the mortgage as an encumbrance forms part of it. The deed comes into the case as evidence on behalf of the plaintiff, as the necessary support of any title whatever, and when he proves it for that purposej he proves the existing mortgage of the defendant by the same act. The defendant’s title, in other words, is part of the plaintiff’s title, and by the very document relied on to establish the latter, the former is shown to be its superior, for it declares the title of the plaintiff to be subject to that of the defendant. It is a plain case of an estoppel. This view is supported by the decisions of the Supreme Court of Pennsylvania, in which the objections to it, presented in argument here, have been fully met. Stackpole v. Glassford, 16 S. & R 163; Zeigler’s Appeal, 35 Penn. St. 173; Crooks v. Douglass, 56 Penn. St. 51; Ashmead v. McCarthur, 67 Penn. St. 326. In Crooks n . Douglass, ubi supra, it was said to be “ just a case, when, if the price of the estate belonging to the mortgagee is still in the purchaser’s hand, he is in equity estopped from denying that the sale was made subject to the mortgage: ” and, “ having bought the estate with the understanding that he bids so much less for it, and should hold that much in his hands to be applied to the excepted mortgage, it does not lie in his mouth, at least, to say he takes the land discharged of it, under the operation of the general rule, that a judicial sale discharges all encumbrances except those expressly saved by statute.” In that case the circumstances of the sale rested in parol, proof being admitted of what took place, while here they constitute recitals in the very deed which furnishes to the plaintiff in error the foundation of his title.

But the sheriff acted strictly within the command of his writ. That was to seize and sell the mortgaged premises. If be proceeded to sell more than was sufficient to pay the debt, it was at most but a mere irregularity, even if it could be so p. 451considered. He had no judicial authority to determine questions that might arise upon the sale, or questions of distribution. The sale of lot No. 1 might, so far as he or any one could know, be set aside, and the proceeds of lot No. 2 might prove to be necessary to satisfy the execution. His duty was merely ministerial, and so long as he pursued only the literal precept of the writ, he cannot be said to have acted without authority, and be converted thereby into a wrongdoer. For aught that he might know, and for aught that we can tell from the present record, the whole proceeds of the sale of both lots may have been necessary to pay other liens upon the property, entitled to satisfaction on distribution. The presumption certainly is, in accordance with the maxim, Omnia pr&sumuntur rite et solenniter esse acta, that the surplus was either so applied, in which case, no more property was sold than was necessary; or, it was paid, as the law directs, to Mrs. Jermon, its owner, and in that event, she certainly is not in a situation to complain of the invalidity of a sale the fruits and proceeds of which she received, and has ever since continued, to claim and hold as her property. She was a party to the proceeding, and had the opportunity then to present to the court the very objection now made to the validity of the sale, that more property had been sold than was in fact necessary to answer the exigency of the writ and satisfy the demands entitled to the proceeds. That was a question peculiarly for that court to determine, and that was the appropriate time for its determination. It was either then made or waived, and, in either view, the action and judgment of the court in directing the acknowledgment and delivery of the deed was conclusive. We conclude, therefore, that the objections to the title acquired by the sale of these two lots cannot be maintained.

A different question arises upon the title to lot No. 3. Although part of the mortgaged premises, it was not included in the sheriff’s sale under the judgment and execution for the mortgage debt. It was sold in virtue of the judgment and proceedings described in the seventh finding of fact, being an action by one Arnold against Jermon and his wife to charge the wife’s property. It is objected that this judgment, and p. 452consequently all proceedings under it, including the sale on execution to the defendants, are void, because the declaration, one count of which was for materials furnished to the premises sold at the request of the wife, does not sufficiently allege a contract binding upon her as a married woman, and because the judgment was confessed, and not rendered upon a verdict or finding of the facts.

These questions, as to this very proceeding, were fully considered and, as we think, satisfactorily decided by the Supreme Court of Pennsylvania in the case of Swayne n . Lyon., 67 Penn. St. 436. That was an action by Lyon, the purchaser at this sale of the property in question, against the defendant, who had entered into a contract for its purchase, to compel a specific performance of that agreement. The defence which prevailed was that the title was not marketable. The court held that, although the title might be good, yet, if the purchaser would be exposed to litigation to support it, he ought not be compelled to take it. Shaesw ood , J., delivering the opinion of the court, said: “ Unless, then, in this case, Mrs. Jermon, or those claiming under her, would be absolutely concluded by the judgment under which the sheriff’s sale took place, which constitutes the foundation of the vendor’s title, from controverting her liability for the debt for which that judgment was confessed, in an action of ejectment to be hereafter brought for the property, the purchaser will be exposed to the annoyance and peril of such litigation,” pp. 439-40. The first and second counts of the declaration, it is then stated, set out a contract by Mrs. Jermon, or by her husband at her instance and request, for materials furnished and work and labor done in and about the improvement, and for the benefit of her real estate; and as a married woman is liable on such a contract, it is further said, that it may logically follow that a judgment rendered against her for it, whether by default, confession or verdict, will have all the leading characteristics of a judgment against a person sui juris. The case, therefore, was made to turn upon the question whether Mrs. Jermon or those claiming under her, in an action of ejectment to be brought against the vendee, could be permitted to show that the debt for which p. 453the judgment was confessed was not contracted by herself or her husband at her instance for the improvement of her separate estate. This question was answered in the affirmative, on the ground that evidence to that effect would not contradict the record. This was apparent, for the reason that the third count, which was the common count for goods sold and delivered on the joint promise of herself and husband, showed no good cause of action against her; and in a collateral proceeding, she would be at liberty to prove that the recovery was upon this count, and not upon the first or second, which would be consistent with the record. It was accordingly held that this judgment might be avoided by Mrs. Jermon in a collateral proceeding, but only by proof that the actual recovery was upon a contract void as to her, that is, under the third count. In that event, it would not be supported by her confession, and on the other hand, it was not invalidated thereby, so far as it rested upon the counts which set forth a good cause of action against her. This judgment was followed by the decision of the same court, in the case of Jermon n . Lyon, 81 Penn. St. 107, where, speaking of the title to this lot, it said: “ As to the premises number three, it may be conceded that the judgment against Mrs. Jermon was erroneous and might have been reversed upon a writ of error, but this would not destroy the sheriff’s sale made under the judgment while standing in full force and unreversed. This judgment was obtained by W. A. Arnold, with whom Lyon and Taylor had no connection.” The opinion in Swayne v. Lyon, ubi supra, is cited with approval also in Quints Appeal, 86 Penn. St. 447, 453.