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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 apon 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 con
veyed 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 of 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  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.
(112 U. S. 354)
MAHN . HARWOOD and others.
(December 1, 1884.)
1. PATENTS FOR INVENTIONS-OSGOOD BALL-COVERS.
A patent for ball-covers, issued to James H. Osgood, May 21, 1872, reissued April 11, 1876, held invalid as to the new and enlarged claims, because there was unreasonable delay in applying for it, the only object of the reissue being to enlarge the claims.
2. SAME-REISSUE-ENLARGING CLAIMS.
The principles announced in the case of Miller v. Brass Co. 104 U. S. 350, in reference to reissuing patents for the purpose of enlarging the claims, reiterated and explained.
3. SAME-DECISION OF COMMISSIONER OF PATENTS.
It was not intended in that case to question the conclusiveness, in suits for infringement, of the decisions of the commissioner of patents on matters of fact necessary to be decided before issuing the patent, except as the statute gives specific defenses; but those defenses are not the only ones that may be made; if it appears that the commissioner has granted or reissued a patent without authority of law, this will be a good defense; as, where the thing patented is not a patentable inves
tion, or where a reissue is for a different invention from that described in the original patent, etc.
4. SAME-ENLARGEMENT OF CLAIMS In Reissue.
A patent cannot be lawfully 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 reissue is made within a reasonably short time. Whether there has been such an inadvertent mistake is, in general, a matter of fact for the commissioner to decide; but whether the application is made in reasonable time is matter of law, which the court may determine by comparing the reissued patent with the original, and, if necessary, with the records in the patent-office, when presented by the record.
5. SAME-APPLICATION, WHEN MADE.
The application for a reissue in such cases must be made within a reasonable time, because the rights of the public, conceded by the original patent, are directly affected and violated by an enlargement of the claim; and the patentee's continued acquiescence in the public enjoyment of such right for an unreasonable time justly deprives him of all right to a reissue, and the commissioner of lawful authority to grant it.
6. SAME-WHAT IS A REASONABLE TIME.
No invariable rule can be laid down as to what is a reasonable time within which the patentee must seek for the correction of a claim which he considers too narrow. It is for the court to judge in each case, and it will exercise proper liberality towards the patentee. But as the law charges him with notice of what his patent contains, he will be held to reasonable diligence. By analogy to the rule as to the effect of public use before an application for a patent, a delay of more than two years would, in general, require special circumstances for its excuse. 7. SAME-DELAY OF FOUR YEARS.
*As, in the present case, there was a delay of nearly four years, and the original patent was plain, simple, and free from obscurity, it was held that the delay in seeking a correction by reissue was unreasonable, and that the commissioner had, therefore, no authority to grant it; and the patent was held invalid so far as the claims were broader than those in the original patent.
Appeal from the Circuit Court of the United States for the District of Massachusetts.
Thos. Wm. Clarke, for appellant. J. E. Maynadier, for appellee.
BRADLEY, J. 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, chargng 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 consistsFirst, 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 fol. Icwing, namely: "(1) A ball exterior, composed of two crimped hemispher
ical 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, r 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 consistsFirst, 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-hall 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 multiply 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 laid 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