and with a cylinder valve and a waste-water valve connected and operated in combination, substantially as herein specified.

"(2) The arrangement of the parts, A, B, valve, D, case, C, and stuffingbox, H, as herein described, for the purpose specified."

"(2) In combination with a hydrant or fire-plug, pipe, A, the supply pipe, B, and cylinder valve and waste-valve, connected and operated substantially as herein shown and described.

"(3) The combination of the hydrant or fire-plug pipe, A, supply pipe, B, valve, D, casing, C, and stuffing-box, H, substantially as and for the purpose shown."

The drawings of the original and of the reissue are also here placed side by side:

[merged small][merged small][ocr errors][merged small][merged small][graphic][subsumed][merged small][merged small][merged small]

The material difference between the descriptive parts of the two specifications is that, in the reissue, it is stated that the casing, C, is movable, and that sufficient space is left between the bead, a, upon the hydrant proper, and the upper terminus of the casing, C, to permit of sufficient up and down play of the casing, C, to allow it to slide loosely up and down, to accommodate the upward and downward movement of the earth during the process of freezing and thawing, without any liability to derange the plug or hydrant. The casing could not thus slide loosely up and down unless sufficient space were left between the bead, a, and the upper terminus of the casing. No suggestion of such arrangement is found in the specification of the original patent, and the drawing of that patent shows no space between the upper terminus of the casing and the bead or flange ahove it. This is new matter introduced into the specification of the reissue, contrary to the express inhibition of section 4916 of the Revised Statutes. Claim 1 of the reissue is for an invention not indicated or suggested in the original patent, namely, the independent up and down motion of the casing. In addition to this, the drawing of the original patent shows a close contact between the top of the casing and the bead or flange above it, so as absolutely to forbid any such independent up and down motion of the casing as is covered by the first claim of the reissue, while the drawing, Fig. 1, of the reissue, shows a sufficient space between the top of the casing and the bead or flange above it to admit of such independent up and down motion. Issue having been joined, proofs were taken on both sides, and the circuit court entered a decree dismissing the bill, from which the plaintiffs have appealed. Its opinion accompanies the record, and is reported in 22 Fed. Rep. 292. It held that the reissued patent was invalid, as matter of law, upon a comparison of the original with the reissue. We concur in this view.

It is sought to sustain the validity of the reissue by attempting to show that the model filed in the patent-office with the original application exhibited the invention covered by the first claim of the reissue. It is doubtful whether that fact is satisfactorily established. But, irrespective of this, the case falls directly within the recent decision of this court in Parker & Whipple Co. v. Clock Co., 123 U. S. 87, ante, 38. It was held in that case that what was suggested in the original specification, drawings, or patent-office model is not to be considered as a part of the invention intended to have been covered by the original patent, unless it can be seen from a comparison of the two patents that the invention which the original patent was intended to cover embraced the things thus suggested or indicated in the original specification, drawings, or patent-office model, and unless the original specification indicated that those things were embraced in the invention intended to have been secured by the original patent. See, also, Hoskin v. Fisher, 125 U. S. 217, ante, 834. In the present case it cannot be seen from a comparison of the two patents that the original specification indicated that what is covered by the first claim of the reissue was intended to have been secured by the original. In the present case, also, the reissue was not applied for until nearly eight years after the original patent was granted, and the reissue was taken with the manifest intention of covering, by an enlarged claim, structures which in the mean time had gone into extensive public use, and which were not covered by any claim of the original patent. Infringement is alleged only of claims 1 and 3 of the reissue. As to the casing, C, of the third claim, it cannot, any more than the casing, C, of the first claim, be held to cover a casing which has the independent up and down motion referred to. Such casing must be construed to be the casing exhibited in the drawing annexed to the original patent; that is, one in which the up and down play is restricted by the overlapping bead or flange. On any other construction" claim 3 is an unlawful expansion, in regard to the casing, of what is found in the original patent. In addition to this, if the casing of claim 3 is only a

casing which has no end-play, it is anticipated by what is shown in letters patent No. 19,206, granted to Race and Mathews, January 26, 1858, which patent was the subject of the decision of this court in Mathews v. Machine Co., 105 U. S. 54. The decree of the circuit court is affirmed.


(May 14, 1888.)




B. deposited with defendant bank, as collateral security for a loan, certain bonds secured by a deed of trust on real estate executed by B. to a third person as trustee, with power of sale. The loan not having been paid when due, the trustee, at the request of defendant and others who then held the bonds, sold the real estate in strict pursuance of the terms of the deed, and D., acting as agent of defendant and the others, purchased at the sale. D. subsequently conveyed a portion of the property to defendant, and the trustee indorsed as a credit on the bonds of D., which defendant held, its proportionate share of the amount bid, which credit, as to the portion so conveyed, was the only payment made under the purchase. Held, that defendant did not stand in any trust relation in respect to the real estate covered by the trust deed, but was a mere creditor, and had a perfect right to bid at the sale, and was not liable to account to D., or his assignees, for the proceeds of a subsesequent sale by it of the portion conveyed to it by D.

Appeal from the Circuit Court of the United States for the Southern District of New York.

On April 14, 1875, the firm of Bowen Bros., of Chicago, borrowed of the German-American Bank of New York the sum of $27,500, for which they gave their promissory notes, payable, respectively, in two, three, and four months from date. As collateral security for the payment of the loan they deposited with the bank 40 bonds executed by themselves, payable to bearer five years from date, with interest semi-annually, of the denomination of $1,000 each, dated April 1, 1873, the payment of which was secured by a deed of trust made by the individual members of the firm to George W. Smith, conveying to him certain real estate therein described, situated in Cook county, Ill. By the terms of the written agreement, under which the collateral security was deposited, the bank was authorized, on non-payment of the notes at maturity, to sell the bonds either at the board of brokers, at public auction, or at private sale, and without notice, and to apply the proceeds of the sale to the payment thereof. These collateral bonds, thus deposited, were part of a series of 100 of like tenor and amount, all secured by the deed of trust to Smith. That deed of trust provided that, in case of default in the payment of the bonds or interest, it should be lawful for the trustee, on the application of the holder of any of the bonds, to sell the real estate, or any part thereof, and all the right and equity of redemption of the grantors therein, at public vendue, to the highest bidder, for cash, and, upon making such sale, to execute and deliver a deed of conveyance in fee of the premises sold. In January, 1877, the trustee in the trust deed, upon the application of the State Savings Institution of Chicago, the holder of 32 of the bonds upon which there had been a default for non-payment of interest, sold the real estate in strict conformity with the terms of the power in the trust deed, after due notice, at public auction, to Wirt Dexter, for the sum of $50,000, and conveyed the premises to the purchaser in pursuance of the same. Dexter, in making the bid and purchase of the premises at public auction, acted as agent for the holders of all the bonds, including the German-American Bank, he having been authorized by them to bid for and purchase the property for them jointly. Thereafter he conveyed an undivided forty-one hundredths of the property purchased by him, and in a partition suit that interest in the real estate was

1Affirming 24 Fed. Rep. 523.


set off to the German-American Bank in severalty. Dexter paid no money in bidding in the property except the actual costs of the sale, but the trustee credited upon the bonds held by the German-American Bank forty one hundredths of the amount of the bid, being $472 upon each bond; and the whole sum, amounting to $18,880, was indorsed as a payment on the three notes. The German-American Bank continued to hold title to the real estate conveyed to it by Dexter until February 8, 1881, when, in consideration of $56,000, the bank conveyed the same in fee to John C. Dore, and thereafter, in February, 1882, also delivered to Dore the 40 bonds then in its possession, with the credits indorsed thereon. These bonds were delivered to Dore in accordance with an agreement dated February 19, 1881, which recited that Dore "desires to obtain possession and ownership of said forty bonds in connection with the purchase of said property from said bank." In the mean time, the members of the firm of Bowen Bros., on November 10, 1877, were adjudged bankrupts on a petition filed on June 2d of that year, and during 1878 they severally received their final discharges in bankruptcy. On April 21, 1880, Robert E. Jenkins, assignee in bankruptcy of the Bowen Bros., by an order of the court, sold all his right, title, interest, and claim as assignee, and all right, title, interest, and claim of the bankrupts in and to the land described in the trust deed, to Carl F. Hermann for the sum of $840, and afterwards conveyed the same to him by deed dated and acknowledged May 13, 1880. The assignee, also on April 21, 1880, sold to the appellant, Charles L. Easton, for the sum of five dollars, the claim against the German-American Bank of New York "for interest in all collaterals pledged with said bank by said bankrupts, or either of them;" and by a deed dated May 15, 1880, assigned the same by the same description to him. It is not denied that John C. Dore purchased the land from the German-American Bank with knowledge of the previous conveyances by the assignee in bankruptcy to Hermann and to Charles L. Easton. On February 24, 1881, James H. Easton, a brother of the appellant, having succeeded to the title of Hermann to the land in question, filed a bill in equity in the circuit court of the United States for the Northern district of Illinois, against the German-American Bank, to which, by an amended and supplemental bill, John C. Dore was also made a defendant, in which were set forth substantially the facts stated in the present bill of complaint, and praying for an account against the German-American Bank, and that the complainant might be permitted to redeem the land on payment of what might be found due on the original loan to Bowen Bros. It is admitted that this suit was brought in the name of James H. Easton, for the benefit of Josiah H. Helmer; the latter having previously acquired the title of Hermann, and conveyed it to James H. Easton in order to enable the suit to be brought in the circuit court of the United States. Helmer himself had previously brought an action of ejectment to recover possession of the land. The ejectment suit was abandoned when the bill in equity was filed; and pending the bill, in September, 1883, before the commencement of the present suit, a settlement was made between Helmer and Dore, whereby, in consideration of a certain sum paid by Dore, both Helmer and James H. Easton, the latter at Helmer's request, by separate deeds, released all their right, title, and interest in and to the lands in question to one Berger for the benefit of Dore. On January 27, 1884, the present bill in equity was filed, wherein Charles L. Easton, claiming title by virtue of deed of assignment made to him by Jenkins as assignee in bankruptcy of the Bowen Bros., seeks to hold the GermanAmerican Bank accountable to him for the sum of $56,000, as the proceeds of the collaterals held by it, realized from the sale of the real estate conveyed to the bank by Dexter, and a decree for any sum found due to it by reason thereof after payment from the said proceeds of the original indebtedness of Bowen Bros. to the bank. The case was heard in the circuit court upon the pleadings and proofs disclosing the state of facts already recited, when a de

cree was rendered dismissing the bill for want of equity. From this decree the present appeal has been taken.

Charles P. Crosby, J. M. Wilson, and Charles L. Easton, for appellant. Edward Salomon, for appellee.

Mr. Justice MATTHEWS, after stating the facts as above, delivered the opinion of the court.

The right of the complainant to the relief prayed for is based upon the contention that the German-American Bank originally held the bonds secured by the deed of trust as a pledge given by way of security for the repayment of the loan to Bowen Bros.; that it has never sold that pledge, in pursuance of the terms of the agreement between the parties, and as required by law; that the land itself, the title to which was conveyed by Bowen Bros. to Smith in trust, was a mere incident to the pledge and a part of it; that, notwithstanding the form of a sale under the trust deed by the trustee to Dexter, there was no sale in fact, and in law the conveyance by Dexter to the bank operated only to convey the title to the bank in the same capacity in which it held the bonds as collateral, that is, as trustee for the debtors; that the subsequent sale by the bank to Dore was the first effective conveyance of an absolute title, but was made by the bank in its capacity as trustee for the Bowens; and that, as such, the complainant, having succeeded to the Bowens' rights, is entitled to require the bank to account for its proceeds. Where personal property is pledged, the pledgee acquires the legal title and the possession. In some cases, it is true, it may remain in the apparent possession of the pledgeor; but, if so, it can be only where the pledgeor holds as agent of the pledgee. By virtue of the pledge, the pledgee has the right by law, on the default of the pledgeor, to sell the property pledged in satisfaction of the pledgeor's obligation. As in that transaction the pledgee is the vendor, he cannot also be the vendee. In reference to the pledge and to the pledgeor, he occupies a fiduciary relation, by virtue of which it becomes his duty to exercise his right of sale for the benefit of the pledgeor. He is in the position of a trustee to sell, and is, by a familiar maxim of equity, forbidden to purchase for his own use at his own sale. The same principle applies, with a like result, where real estate is conveyed by a debtor directly to a creditor as security for the payment of an obligation, with a power to sell in case of default. There the creditor is also a trustee to sell, and cannot purchase the property at his own sale for his own use. In the present case the bonds of the Bowen Bros., secured by the deed of trust, were pledged to the German-American Bank as security for the repayment of the loan made to the Bowen Bros., but those bonds have not in fact been sold, unless the transfer of them by the bank to Dore be considered a sale. It was not such, however, in point of fact or of law. Nothing was paid for them, and they were delivered to Dore merely as muniments of title in connection with his purchase of the real estate. At that time they were of no value, for they were merely the personal obligations of the Bowen Bros., from which they had been released by the discharge in bankruptcy. No suit could have been maintained upon them as against the only obligors by whose discharge in bankruptcy they had lost their character as well as their value as property. The equity of the complainant, therefore, if he have any, must be considered as transferred from the bonds themselves, viewed as instruments and obligations, to the money which had been received on account of them by virtue of the sale of the real estate by the bank to Dore. Whether the complainant can now assert any equitable interest in that money depends, in the first place, on the nature of the title which the bank acquired by the conveyance to it from Dexter; and whether the principles of a pledge, and of a trust arising thereon, apply to the real estate conveyed by the Bowens to Smith as a trustee to secure the payment of the bonds. It is very plain, we think, that these principles do not apply.

« ForrigeFortsett »