U.S. Circuit Court- October 20, 1884 to use the said patent above mentioned granted to Lyman R. Blake on the sixth day of July, 1858, and also the patents granted to the said Lyman R. Blake on the fourteenth day of August, A.D. 1860, on the process of making a boot or shoe, and on the article so made, for the term of the existence of said patents or any of them, and of all renewals and extensions of the same, said patents having been assigned by said Lyman R. License of patent Construction of terms-Blake to said Gordon McKay, trustee, and also Implied meaning-Jurisdiction of Circuit all patents which the said party of the first Court-Bill for discovery and account-Citi-part now has or may hereafter obtain, whether zenship. as original patents or by assignment or license, applicable to said machine and all extensions and renewals of the same." McKay, Trustee, v. Mace et al. the same, .... A license granted the use of a certain shoe sewing machine embodying a patent which was specified by its number, date, and the name of the patentee; " said machinery also embodying other patents which the said party of the first part now has, or may hereafter obtain, applicable to the said machine or either of them." The license then gave the use of the above-mentioned patent, and also other patents granted to Lyman R. Blake Aug. 14, 1860, for the term of the existence of the said patents or any of them and of all renewals or extensions of . . and also all patents which the said party of the first part now has or may hereafter obtain, whether as original patentee or by assignment or license, applicable same." The license also provided, "that this lease and license shall continue (provided the lessee comply with the terms thereof) until the expiration of all the letters patent which the lessees are here by licensed to use or any extensions or renewals of the same." The Blake patents of 1860 expired Aug. 14, 1881, but the machine, at the execution of the license, embodied other patents not specifically designated in the license, which did not expire until Sept. 6, 1887: to said machine and all extensions and renewals of the Held, that the license did not expire on Aug. 14, 1881, the date of the expiration of the Blake patents of 1860, but continued in force until Sept. 6, 1887, the date of the expiration of the term of the youngest patent embodied in the leased machine. A bill praying discovery and account for refusal to pay royalties under such a license is sustainable in the Circuit Court when the parties are citizens of different States. Bill in equity for discovery and an account, brought by Gordon McKay, trustee, as owner and licenser of certain patents, against Charles Mace and others as licensees. By the license, dated April 29, 1872, the plaintiff leased to the defendants "the McKay Sewing Machine No. 1278 for uniting the soles of boots and shoes to their vamps or uppers, constructed according to the specifications and embodying the invention contained and set forth in letters patent of the United States, granted to Lyman R. Blake on the sixth day of July, 1858, channelling machine No. 822, and bobbin winder No. 176, said machinery also embodying other patents which the said party of the first part now has or may hereafter obtain applicable to the said machine or either of them." "And the said party of the first part doth also hereby license the said party of the second part It was further provided, "that this lease and license shall continue (provided the lessees comply with the terms and conditions thereof) until the expiration of all the letters patent which the lessees are hereby licensed to use, or any extensions or renewals of the same, and the upon expiration thereof, the lessees shall deliver to the lessor, his successors, legal representatives or assigns the machines hereby leased in good order, natural wear and tear alone excepted, and the said lessees shall thereupon, if they have kept all the conditions of this lease and license, have the right to purchase said machines for the sum of one dollar." machines and for the license to use the patents, The licensees agreed to pay as rent for the the sum of ten cents for every pair of shoes made on the machines, or instead thereof, to purchase and apply to every pair of shoes thus made a license stamp according to the schedule annexed to the license. They also covenanted to keep a daily account of all boots and shoes sewed on the machine, and to send a copy of the account to the licenser on the first of every month. The defendants accepted this license, and continuously from its date enjoyed the use of the licensed machines. But after August 14, 1881, they refused to render any account or to pay license fees. They claimed that as August 14, 1881, was the date of the expiration of the Blake patents of 1860, which were specifically designated in the license, it followed that the license expired on that date. On the other hand, it was contended by the plaintiff that the machinery embodied other patents, not designated by name in the license, but included under the general language of the licensing clause, the terms of which had not yet expired, and that the license remained in force until the expiration of the youngest of these. The patents not mentioned in the license but alleged to be included under the licensing clause, were the McKay and Mathies patent of August 12, 1862, the McKay and Blake improvement of December 13, 1864, and the Blake patent of September 6, 1870. The name of each of these patents was conspicuously the existence" of the Blake patents or any of stamped on the machine used by the defendants. them. The phrase which limits the term of the The defendants also set up as a defence, that in license is connected with the description of the this case there could be no equitable jurisdiction. Blake patents, and is expressly applicable to Elias Merwin (Francis Rawle and Walter them, and it is not, therefore, unreasonable to George Smith with him), for plaintiff. hold that the entire license is terminable by the expiration of these patents. Francis T. Chambers and Furman Sheppard (George Harding with them), for defendants. October 27, 1884. THE COURT. The right of the complainant to the relief for which he prays depends upon the ascertainment of the date at which a license granted by him to the respondent expires. The construction of this license is not unattended with difficulty, growing out of the inaccuracy of some of its phraseology, and collocation of the phrase defining its duration, but with the assistance of an argument of uncommon vigor and clearness on both sides, we have reached a conclusion which in our judgment effectuates the intention of the parties and a just solution of the controversy. The license is dated April 29, 1872. [The Court here quoted the material provisions of the license, ut supra.] At the date of the license other patents than these individuated by specific designations were owned or controlled by the licenser, were actually embodied in the leased machine, and were essential to its profitable use. They were the McKay and Mathies patent of August 12, 1862, the McKay and Blake improvement patent of December 13, 1864, and the Blake patent of September 6, 1870, for seventeen years, and expiring September 6, 1887. These patents are within the general description of the licensing clause, and are therefore comprehended by its terms as fully as if they had been specifically identified. The Blake patents of 1860 were extended until August 14, 1881, when they finally expired. Since that date the respondents have continued the use of the leased machines and the above recited patents, without the payment of the royalties agreed upon, or rendering any account of them, according to the requirements of the license, upon the hypothesis that it was then terminated by its own limitation. Considering the clauses of the license above quoted by themselves, this contention is not without at least plausible warrant. The right to use all the patents referred to is conferred by the license, without restriction, but the duration of such use is apparently referred to "the term of On the other hand, the consideration is not without great weight, that the licenser could not have intended to concede to the licensees the uncompensated use of patents which imparted to the leased machines its chief value and had many years to run, after the lapse of two years, when the Blake patents expired, or even after the possible extension of them for seven years, for the meagre consideration of a moderate royalty payable only during these periods. However this may be, the parties have, in a subsequent part of the license, declared their own understanding of its terms, and that is decisive of its meaning. In sub-division No. 3, under the eighth head in the license, it is agreed: "That this lease and license shall continue (provided the lessees comply with the terms thereof) until the expiration of all the letters patent which the lessees are hereby licensed to use, or any extensions as renewals of the same." This language is unambiguous and applies to all the patents whether specifically or generally described, the right to use which is authorized by the license. In this category are several patents as before stated, which were embodied in, or engrafted upon, the leased machine. The youngest of them, the Blake patents of September 6, 1870, continues in force until September 6, 1887, and must therefore be taken as the measure of the duration of the license. Of the remaining ground of defence, it is sufficient to say that it is unsustained. Nor is a more extended discussion of the pleas to the jurisdiction of the Court required. The parties are citizens of different States, and the bill prays for a discovery and account. These are recognized heads of equity jurisdic tion and are cognizable in this Court, although the ground work of the relief sought is a contract touching the use of letters patent because adequate relief cannot be obtained in a court of law. There must therefore be a decree in favor of the complainants for discovery and an account as prayed for, and counsel will accordingly prepare one. Opinion by MCKENNAN, Cir. J. WEEKLY NOTES OF CASES. VOL. XV.] THURSDAY, MARCH 19, 1885. [No. 32. Supreme Court. Jan. '85, 300. Objected to; objection sustained; exception. The Court charged the jury that the plaintiff was precluded by the recovery on the mortgage, and that that judgment could not be attacked collaterally. Verdict and judgment for defendant. The plaintiffs took this writ, assigning for error, the refusal of their offer of evidence and the charge of the Court as above. Anderson, Frank J. Lowe, and Geo. F. DavFebruary 5, 1885. enport, for plaintiffs in error. Michaelis et ux. v. Brawley. Mortgage-Defective acknowledgment of by wife -Effect of judgment on scire facias. After judgment in a scire facias upon a mortgage, the mortgagors cannot set up, in another action, that the mortgage was invalid because not separately acknowledged by one of the mortgagors, a married woman. Error to the Common Pleas of Crawford County. Ejectment, by Charles Michaelis and Lucy his wife, against Francis Brawley, for an acre of land, with dwelling-house thereon, in Vernon. Township. At the trial, before GALBRAITH, P. J., the following facts appeared: On the 9th of February, 1866, Charles Michaelis entered into articles of agreement for the purchase of the land in dispute, and at the same time paid $100 on account. In February, 1869, the deed was made and delivered to Lucy Michaelis, the wife. On March 3, 1866, Michaelis and wife mortgaged the property to William Painter, to secure the payment of $620. The certificate of acknowledgment to this mortgage was defective in not certifying to the separate examination of the wife. The mortgage was put on record. Under a judgment against Charles Michaelis the property was sold at sheriff's sale, in January, 1870, as his property, and a sheriff's deed was executed to Pearson Church, who, in September, 1870, conveyed his interest to Cyrus Kitchen. In January, 1871, Kitchen brought ejectment for said premises, against Charles and Lucy Michaelis, and at the trial the defendants confessed a conditional judgment for the premises, and subsequently surrendered possession. On April 2, 1872, a sci. fa. was issued on the above-mentioned mortgage, judgment by default entered, and the property sold under a lev. fa. to Kitchen. Brawley, the defendant in the present case, derived title through Kitchen. The plaintiffs relied on the defective acknowledgment of the mortgage; and they offered to show that the articles of agreement were made by Michaelis for his wife, and that the payments for the property were made from her own separate property. The Court below ruled the case on the au- Rumfelt v. Clemens, 10 Wright, 455. which does not on its face show her liability is void. Swayne v. Lyon, 17 Smith, 436. If the judgment is void for reasons appearing February 16, 1885. THE COURT. The acknowledgment of a mortgage is no part of its execution. The acknowledgment need not be recited in the scire facias on it. (Miner v. Graham, 12 Harris, 491.) After judgment thereon, its execution is a matter adjudicated. (Id.) The Act of 1705 gives a scire facias on a mortgage. It does not refer to a recorded mortgage. The scire facias lies on all mortgages, whether recorded or unrecorded. The writ is on the mortgage and not on the registry thereof. (Tryon v. Munson, 27 P. F. S. 250; Lancaster v. Smith, 17 Id. 427.) Hence, the proper plea is non est factum and not nul tiel record. (Id.) An unauthorized satisfaction of the mortgage on the record is no defence to a scire facias. (Id.) It is true the mortgage of a married woman is invalid unless properly acknowledged. If such be the fact, it may be successfully interposed against a recovery on the mortgage. If, however, judgment be recovered on scire facias issued on the mortgage, the judgment is conclusive that it was volunteers as should enter the army of the United properly executed. (Miner v. Graham, supra.) States issued bonds to the amount of $50,000 Hence, it was held in Butterfield's Appeal (27 with interest coupons attached, bearing date Id. 197) that although the mortgage of the married woman was void, yet it was merged in the judgment recovered in scire facias thereon. Its execution is thereby conclusively established. The judgment cannot be collaterally impeached except for fraud. (Hartman v. Ogborn, 4 Id. 120.) As the judgment in question was conclusive as a lien on the wife's interest in the land, there was no error in rejecting the evidence offered nor in directing a verdict for the defendant. Judgment affirmed. Opinion by MERCUR, C. J. GREEN, J., absent. Jan. '84, 335. C. C. S. February 27, 1884. Commonwealth ex rel. Featherman v. Borough of Hyde Park. Mandamus-Practice-Bonds-Boroughs. Where in a petition for a mandamus a good prima facie case appears the ordinary practice is to direct an alternative mandamus. When, however, a rule to show cause why a peremptory mandamus should not issue is granted and served, the Court may in a proper case issue a peremp tory mandamus in the first instance. April 1, 1864; the coupons payable at intervals of six months, and the bonds being payable on January 1, 1874. The relator showed title to a portion of the bonds, giving the number and amount of each he owned, and also stated that he was the owner of divers judgments, describing them, obtained on coupons and bonds, part of the aforesaid issue; that he had repeatedly demanded payment of said bonds and coupons and caused mandamus executions to be issued on the said judgments, yet the Council and Burgess had been utterly negligent of their duty in the premises; wherefore, having exhausted all other legal remedies, and being without power to enforce payment of his just claims in any other manner, he prayed that a mandamus be issued, directed to the said Burgess and Council, requiring them to proceed to levy and collect a sufficient tax to discharge the indebtedness aforesaid. A rule to show cause why a mandamus should not be awarded was granted, and duly served on the Burgess and Council. The case was argued on June 2, 1883, without answer filed, and the opinion of the Court was filed January 28, 1884, refusing the mandamus. Thereupon the relator took this writ, assigning for error the refusal of the Court to award a peremptory mandamus as prayed for in the petition. H. M. Hannah, for plaintiff in error. Pursuant to an Act of Assembly a borough council passed an ordinance to raise moneys for the payment of bounties, and issued bonds, with coupons attached, payNo answer was made on behalf of the borough, able at intervals of six months, but failed to make any no denial of the facts alleged in the petition, no payments upon the same. The relator showed title to certain of these bonds; that he was the owner of divers reason assigned for refusing and neglecting to judgments obtained on said coupons and bonds; also that perform a clear duty. It is not a matter of dishe had repeatedly demanded payment, and caused man-cretion with the Council whether they will damus executions to be issued on the judgments, but that collect tax to pay a debt ascertained to be due the borough councils had been utterly negligent of their duty and failed to meet said demands, wherefore he by an action at law duly prosecuted to judgment. prayed that a mandamus be issued to the councils requir- In the case of Commonwealth ex rel. Hamilton ing them to levy a tax sufficient to discharge the indebted- v. Councils of Pittsburgh (10 Casey, 496), the ness: Held, that as a clear legal right was shown in the relator, and a corresponding duty in the respondent, and as there was a want of any other adequate and specific remedy, it was a proper case for a peremptory mandamus. Error to the Common Pleas of Lackawanna County. Mandamus by the Commonwealth of Pennsylvania ex rel. Charles Featherman against D. M. Jones, Burgess, and Thomas Phillips et al., Town Council of the Borough of Hyde Park, to require them to levy and collect a tax to pay and satisfy certain judgments held by said Charles Featherman against said borough. The petition for the mandamus set forth the following facts: In pursuance of the Act of Assembly of March 25, 1864 (P. L. 84), the Burgess and Borough of Hyde Park in order to raise money for the payment of bounties to such whole subject was carefully considered by this Court, and nearly all the questions that could possibly arise were fully and finally settled. The right to a writ of peremptory mandamus in a case of this character could not be made clearer than it is in that case. v. Com. ex rel. Thomas v. Commissioners, 8 Casey, 218. Com. ex rel. Middleton v. Commissioners, I Wright, 237. Com. ex rel. John B. Gest v. Councils of Pittsburgh, 7 Wright, 391. Dillon on Municipal Corporations, 685-690. Under the decision in the case of Keasy et al. Bricker et al. (10 Smith, 9), the Court should have awarded an alternative mandamus in the present case, and on the return to that writ the defendants could have presented any explanation or excuse for their failure to perform their duty; (Defendant in in error did not appear, and presented no paper-book.) March 10, 1884. THE COURT. The petition | ing public duty, and of late is getting to be quite sets forth that in pursuance of certain Acts of fashionable. It must not, however, be encourAssembly the Burgess and Council of the aged. This case is not yet ripe for mandamus. Borough of Hyde Park, in order to raise money We must have some positive proof that the for payment of bounties to such volunteers as borough authorities absolutely refuse to perform should enter the army of the United States, their official duty. Simply waiting for the Court issued bonds to the amount of fifty thousand to tell them to proceed is not sufficient to wardollars, with interest coupons attached, bearing rant us in allowing this extraordinary writ." date April 1, 1864, the coupons payable at in- All the allegations respecting the borough tervals of six months, and the bonds being pay-officers contained in the foregoing, may be true, able on January 1, 1874. He shows title to a but they are not put in by way of plea or answer, portion of the bonds, giving the number and and had they been, a demurrer thereto would be amount of each he owns; also states that he is sustained. The relator is appealing to the Court the owner of divers judgments, describing them, for remedy. Nobody denies the facts in his obtained on coupons and bonds, part of the issue petition. His claim is founded on bonds that aforesaid; that he has repeatedly demanded pay- have been due for ten years. Although prodded ment of said bonds and coupons, and caused by mandatory executions upon the judgments, mandamus executions to be issued on the said and often reminded by requests for payment, the judgments, yet the said Burgess and Council have borough officers have entirely neglected their been utterly negligent of their duty in the pre- duty in the premises. Nine months after the mises; wherefore, having exhausted all other petition was presented, nearly seven months after legal remedies, and being without power to argument upon the rule, the prayer of the relaenforce payment of his just claims in any other tor was denied for no other reason concerning manner, he prays that a mandamus be issued, his case than that he had not adduced positive directed to the said Burgess and Council, requir-proof of absolute refusal by the borough authori ing them to proceed to levy and collect a ties to perform their duty. The proof was clear sufficient tax to discharge the indebtedness enough of long-continued neglect, and if the aforesaid. design on the part of the defendants to avoid the censure of grumblers, would be as unjust as unprecedented. Court's remarks were correct respecting the A clear legal right in the relator, a correspond- cause of their neglect, they were unlikely to ing duty in the Burgess and Council, and the declare an absolute refusal. What then? Not want of any other adequate and specific remedy, a delay or denial of the relator's right, but an are fully shown, the facts verified by affidavit, immediate issue of the writ. To deny relief to and this is a fit case for mandamus. (Common-a meritorious creditor because of real or fancied wealth v. Pittsburgh, 34 Pa. St. 496.) The ordinary practice is to direct an alternative mandamus where good cause prima facie appears, and this gives the parties an opportunity to do the act, or show cause, at the return of the writ, why they should not. (Commonwealth v. Commissioners, 37 Pa. St. 277; Keasy et al. v. Bricker et al., 60 Id. 9.) But instead of awarding an alternative writ, as ought to have been done, the Court granted a rule to show cause. That rule was served on each of the defendants, on May 7, 1883. No answer, plea or demurrer was filed, nor any cause shown in other form why the writ should be denied. The case was argued on June 2, 1883; and on January 28, 1884, the opinion of the Court was filed and a writ of mandamus refused. The reasons for refusal of the writ nowhere appear save in the opinion of the learned Judge, and seem to be embodied in the following: "It is, however, conceded by the borough officers that they are willing to go on, levy and collect sufficient tax to pay this indebtedness, but prefer before doing so to receive a judicial kick in the shape of a mandamus. This for the purpose of assuring the grumblers that no one but the Court is to blame. Well, this is one way of perform If the defendants have appeared to a rule or notice of an application for a mandamus, and have been heard, and there is no controversy in respect to the facts, and the right of the relator is clear, a peremptory writ may, in the discretion of the Court, be issued in the first instance. (Dillon on Mun. Corp. § 707; Ex parte Rogers, 7 Cowan, 526; Lutterloh v. Commissioners, 65 N. C. 403.) In such a case as this an alternative writ, as already stated, should have been awarded. The usual practice was unobserved. The defendants were duly notified, have been heard in argument, and in this Court their counsel suggested nothing which would be a plausible excuse for their neglect or refusal. Under the extraordinary circumstances it seems necessary to the ends of justice that the relator be no longer delayed. The judgment refusing the writ is reversed', and judgment for the Commonwealth and peremptory mandamus awarded. The record is ordered to be remitted for the enforcement of this judgment. Opinion by TRUNKEY, J. H. P. |