patent disclosed, and the preceding patents of Frasch did not disclose, sulphur rock porosity. In view of what we have already said as to sulphur rock porosity being known to Frasch, and that his former patents were not restricted to tight and nonporous rock, it follows that these claims have no ground on which to rest, and they must also be held invalid.

And we may add that a study of the file wrapper of this patent confirms us in this view, for it discloses earmarks of a not infrequent effort, when the term of a primary patent is near expiration, to obtain an extension for another term of years, that has already been enjoyed. In this case Frasch's original patent expired in 1908. If the claims of the present patent, granted in 1908, were sustained, the plaintiff would have. a monopoly of underground sulphur mining of 31 years. This would have been effected by the filing of his second series of patents in 1897, introducing therein claims based on porosity in 1903, and by a consistent series of delays in procedure, whereby the grant of such patents was delayed until 1905. While such course is legal, and involves nothing censurable, yet when the practical effect, if the patent it enforced, as now contended for, be, as we have said, to shut out the public from the field of underground sulphur liquefying for 31 years, it behooves a court, before following such a course, to take great care to avoid being led to a decision which, instead of fulfilling the constitutional purpose of promoting the progress of science and useful arts, in reality blocks the path of improvement.

Turning to the second patent, No. 800,127, for apparatus for mining sulphur, of which claims 2, 3, 7, 11, 21, and 24 are in issue, we are of opinion that claims 2 and 3 embody means necessarily incident to the use of the original, and which, in substantial equivalency, were used in the practice of Frasch's original patents as described in testimony heretofore quoted. As to the several combinations embodied in claims 7, 11, and 21, which embrace delivery of hot water at different levels, we are of opinion they do not involve patentability, and as to claim 24 we are also of opinion that it lacks inventive substance. This leaves for discussion claims 7, 26, and 28 of the third patent in suit, No. 1,008,319, applied for February 6, 1905, granted November 14, 1911, for mining sulphur. Referring to claims 7, 26, and 28, which are alone in issue, we find they include, in combination and in liquefaction mining, a perforated lining which distributes the outgoing hot water over a wider zone, and by its many and widely scattered holes prevents clogging, where the surrounding substances cave in as liquefaction proceeds. The use of a perforated pipe for such general purposes is too manifestly such a mere mechanical expedient that we cannot find any inventive act in using such a strainer in mining by liquefaction. We accordingly hold these claims void.

Arriving at the foregoing conclusions, it follows that, without alluding to the other and many interesting questions discussed in the briefs and at bar, the several claims of said patents must be decreed invalid, and the bill dismissed.

MORSE v. SMYTH et al.

(District Court, E. D. Kentucky. December 21, 1918. On Petition for Rehearing, January 10, 1919.)


A deed by a grantor of "all his interest" in a tract of land, excepting what he had previously sold "by written contract," held to convey the mineral rights in a portion of the tract which he had previously contracted to sell to another, reserving the mineral rights.


A grantee of the surface of a tract of land by a conveyance reserving the minerals to the grantor is estopped to deny the grantor's title to the minerals.



An owner of property is not chargeable with laches for not asserting his ownership so long as his rights therein are not invaded.

In Equity. Suit by N. C. Morse, trustee, against Jesse M. Smyth, Douglas B. Crained, and F. B. Creamer. On motion to dismiss bill. Denied.

Martin T. Kelly, of Lexington, Ky., and Worthington, Cochran & Browning, of Maysville, Ky., for plaintiff.

Kelly Kash, of Irvine, Ky., B. R. Jouett and Pendleton & Bush, all of Winchester, Ky., and J. H. Hazelrigg, of Frankfort, Ky., for defendants.

This cause is before me on defendPlaintiff characterizes his pleading as pleading is known to this court, and given their proper names.

COCHRAN, District Judge. ants' motion to dismiss the bill. a "petition in equity." No such pleadings in this court should be The questions to be decided by me on this motion have been diminished in the course of discussion. The parties agree that prior to the making of the deed by Duckham to Breck of date July 17, 1838, Duckham had sold by title bond to Crawford 1,000 acres in the Carnan 29,000-acre patent, which includes the 400 acres conveyed by Crawford to Smyth, February 15, 1847, which 400 acres includes the 140 acres conveyed to defendant Jesse M. Smyth in the division of his father's estate, the oil and gas rights in which 140 acres is in dispute herein, reserving to himself the minerals therein. They further agree that on July 17, 1838, Duckham conveyed to Breck all his interest in the Carnan patent, and by this exception in the covenant of special warranty of those to whom the grantor had previously "sold by written contract," Breck had notice of Crawford's previous title bond. They still further agree that on October 16, 1839, Duckham conveyed to Crawford the 1,000 acres reserving the minerals. Such is plaintiff's claim put forth in briefs filed on his behalf, and defendants expressly agree to these three facts in the response brief filed on their behalf. Defendants, however, have it that the reservation of the minerals in the Crawford deed is to the grantor Duckham. But it is not said in the deed that the minerals are so reserved. The statement is simply that they are reserved without saying to or for whom they are reserved. If, as claimed by plaintiff, they were covered by the

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deed of Duckham to Breck so that Duckham did not own them, the reasonable inference is that they were reserved to Breck, or rather that the meaning of the reservation was that they were excepted out of the conveyance and not intended to be thereby conveyed. If they were so covered, so far as Breck was concerned no reservation or exception need have been made. The only need of making the reservation was on Duckham's account, and that to keep him from warranting them to Crawford.

The parties did well in so agreeing. Such is the reasonable inference from the undisputed facts. The fact that in 1839 Duckham conveyed the surface in the 1,000 acres to Crawford after he had the year before conveyed his entire interest in the Carnan patent has to be accounted for. It is accounted for, if before the making of the deed to Breck he had given Crawford a title bond for the surface in the 1,000 acres. The exception from this special warranty in the deed to Breck indicates that previous to the making of that deed Duckham had given at least one title bond as to lands in the Carnan patent. The reasonable inference is, therefore, that such title bond was one to Crawford in relation to the 1,000 acres. And the reasonable inference further is that the title bond only covered the surface right in such land, which is all that was covered by the deed. What then are the questions left open for determination on the motion?

[1] 1. Did the minerals pass by the deed of Duckham to Breck? Possibly, though Duckham still had the legal right to the surface right in the 1,000 acres, it did not pass thereby. If it did, nothing was left to pass by the deed of Duckham to Crawford. This would come about by limiting the word "interest" in the deed to Breck to his beneficial interest therein. Thereby his legal title to the surface right in the 1,000 acres would be left to be conveyed by his deed to Crawford.

I understand the defendants to limit their position that the minerals did not pass to Breck to the consideration that the question is controlled by the decision of the Court of Appeals of Kentucky in the case of Kincaid v. McGowan, 88 Ky. 91, 4 S. W. 802, 13 L. R. A. 289. Is such the case? There Duckham in 1843 conveyed to Kincaid and Plummer "all of the twenty-two thousand acres survey of land only deducting therefrom what Duckham had sold and made deeds to prior to that date."

In 1842 Duckham had made two deeds to McGowan for two specific boundaries in the survey, reserving the minerals, one-half the timber, and a mill site in the one, and one-half the minerals and certain of the timber in the other. The question was whether these reservations in these two specific boundaries passed by the deed to Kincaid and Plummer, or whether that deed was limited to that portion of the survey outside of those two boundaries. It was held that it was so limited and that those reservations did not pass.

Judge Bennett said:

"Now it seems to us clear that the deed from Duckham to Kincaid and Plummer did not embrace the separate and distinct mineral and timber interest and mill site that Duckham owned in these two tracts of land, which had been previously separated from the portion of the survey sold to Kincaid and Plummer."

Again he said:

"So it seems that the mineral and timber interest and mill site reserved by Duckham, in these two tracts of land, being a distinct interest from the surface right conveyed, and also being separated from the balance of the 22,000acre survey by designated boundaries, it would require apt words to convey these separate interests. To illustrate, suppose the mill site reserved had had upon it a fine flouring mill, or there had been a valuable stone quarry (which is a mineral interest) opened on the land, or a fine lead or silver seam on it, worth thousands of dollars, would it be contended that the conveyance of the adjoining portion of the survey-we say adjoining, because the two tracts had become separated from it by metes and bounds-would include these interests? Surely not. The unhesitating answer would be that these were distinct and separate interests, which could only be conveyed by apt words."

The ground upon which it was held that the reservations in the two previous deeds did not pass by the deed in question was because it contained "no apt words" covering them. The deed was in effect no more than a conveyance of that portion of the survey which adjoined the two tracts previously conveyed. We have no such case here. The deed to Breck contained "apt words" which covered the minerals in the 1,000 acres, the surface of which Duckham had theretofore sold by title bond and subsequently conveyed to Crawford. It conveyed "all his" (Duckham's) interest in a tract of land in the county of Estill patented in the name of John Carnan containing twenty-nine thousand acres." The minerals in the 1,000 acres were part of the Carnan patent and then held by Duckham. So far as now appears, they may have been his entire interest therein apart from the legal title to the surface. I can conceive of no more apt words by which the minerals could have been conveyed. If one conveys all his interest in a tract of land, then all his interest therein, whatever its nature, passes thereby. A decision that a deed conveying the portion of a survey adjoining two specific parcels thereof theretofore conveyed does not cover the minerals in those parcels reserved by the grantor in his deeds thereto is not a decision that a deed conveying all his interest in such survey does not cover such minerals. Possibly, if Duckham had theretofore sold the minerals in the 1,000 acres by title bond, the deed to Breck did not cover them on the idea suggested that the interest conveyed was not a mere naked interest but one that was beneficial. But it does not appear that he had so done, and I do not think it is incumbent on plaintiff to make out that he had not so done.

I conclude therefore that the minerals in the 1,000 acres passed by the deed from Duckham to Breck.

[2] 2. Is it essential for plaintiff to allege and prove title in Duckham to the minerals back to the commonwealth?

What we have is a sale and conveyance by Duckham to Crawford of the surface in the 1,000 acres, with a reservation to himself of the minerals therein. Is not Crawford and those claiming under him estopped to deny the title of Duckham and those claiming under him to such minerals? Defendants think that they are not so estopped because they do not claim the minerals under Duckham. But such result does not follow therefrom. What they are claiming is the surface right under a deed from Duckham which reserved the minerals to the

grantor. I have a distinct impression that by reason thereof Crawford and those claiming under him are estopped to deny that those claiming under Duckham are entitled to the minerals. The plaintiff has given me no assistance on this point. But the impression is so distinct that I feel justified in acting on the idea that the impression is correct, so far as the motion is concerned.

[3] 3. Is plaintiff's claim barred by laches? There is no room for the application of the doctrine of laches in this case. No lapse of time bars one's right to property. It is only in case his right has been invaded that he can be barred of his right thereto. It does not appear from the bill that the invasion of which he complains is other than a very recent one, certainly not long enough to give rise to any claim that he is barred by laches from complaining of such invasion.

These are all the questions which I understand the defendants to raise on this motion. I do not understand that they are now claiming that, if the minerals passed by the deed from Duckham to Breck, they did not pass from Breck to Morse for himself and as trustee by the deed of 1865. There is no room to claim that they did not, for that deed conveyed the grantor's "interest in any reservation of coal, iron, oil or other minerals made by persons who may have heretofore sold and conveyed land" in the Carnan patent.

Possibly the bill is defective in not connecting plaintiff with the grantee in the Breck deed. What he alleges along this line may be no more than a conclusion of law. I do not pass on this question because defendants make no point of it.

The motion to dismiss is overruled.

On Petition for Rehearing.

This cause is before me on petition for rehearing. I treat the additional brief filed since I handed down the opinion herein as such.

The decisions of Brown v. Darling (Ky.) 52 S. W. 936, and Towns v. Brown (Ky.) 114 S. W. 773, are not against any position I have taken. If I had held that plaintiff takes title to the minerals in dispute by virtue of the reservation in the deed from Duckham to Crawford made in 1839, those cases might be in point. But I have not so held. Plaintiff takes nothing by virtue of such reservation. If there had been no such reservation at all, still plaintiff would have been the owner of the minerals. That is so because of the deed from Duckham to Breck in 1838. By virtue of that deed Breck acquired the minerals. He did not need the reservation to give him the minerals. He already owned them.

This being so, the sole significance of the reservation was to limit Duckham's covenant of warranty in his deed to Crawford. This accounts for Duckham reserving the minerals without saying that he reserved them to himself.

The reservation in the deed to Crawford, however, has evidential value. It shows that the title bond to Crawford given before the deed to Breck covered the surface only. It did not cover the minerals. And this being so, the deed to Breck passed them.

The petition for rehearing is overruled.

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