*1 patents second and third Zander’s They operate substantially as are invalid. prior art and if the
disclosed patent patentable over advance discloses before, the and 755 gone what has not, patents certainly operate for they do principles in accord the same are well before Zander. The disclosures patent merely permissible discloses a second change regulation non-inventive spray passes oil into the filter element, patent and the third discloses parts a down- accommodate reversal flow Their claims are carburetor. inventive. cross-appeal is and the dismissed
decree, validity and it sustains so far as patent, infringement of is reversed with instructions to dismiss the bill. al. v. SHANNON et STATES
UNITED (two cases). 6128, 6129. Nos. Appeals States Court Harrison, Atty., Department Harold S. Circuit Fourth Justice, (A. Washington, D. C. Devitt Argued Oct. 1950. Gen., Vanec'h, Atty. Ben Scott Asst. Whaley, Atty., Miller, Russell D. U. S. Jan. Decided Charleston, Atty., C., Asst. U. S. S. Atty., Department Marquis, Roger P. C., Justice, Washington, brief) D. appellant. Graydon, T. Grimball C. John
Columbia, C., appellees. S. PARKER, Judge, Before Chief DÓBIE, Judges. Circuit SOPER 'and PARKER, Judge. Chief appeals by
These
relating
damage to
real
es-
dissenting.
J.,
Soper, C.
tate, one of which was instituted under the
Act
U.S.C.A. §
[28
under the
and the other
Federal
2402]
U.S.C.A.
Tort Claims Act [28
§§
*2
con
damage.
that this
It is to be noted
seq.].
In
United States
et
tract,
awas
which
P. Boshamer
to
leased from Mrs. Kathleen
signed
land, excepting party,
an addendum
contained
and others a tract of
plaintiffs
damages
rights
to
an acre
their
two tenant houses and
which
therefrom
spe
during
government occupancy
surrounding
house.
each
land
cifically
turning
to
when
instituted
Act was
reserved.
suit under
owners,
back the
and investi
land to the
damages
lease contract
recover
under the
for which
gating the amount of claims
The suit
by the lease.
to the land covered
liable,
States
it was
obtained
Act was to
Federal Tort Claims
under the
vendors,
plaintiffs,
from the
but not from
two houses
damages
recover
to
arising
of occu
all
out
judge found the a release of
claims
The trial
covered
it.
pation
property.
until after
damage
covered
of the
Not
to the land
amount
any ques
$2,050and
the houses this had been done did it raise
by the lease
to
to
judg-
assignment.
$975,
validity
to
and entered
tion as to the
of the
not covered
in favor
ments for
these amounts
damages
All
in the
of the
awarded
States does not con-
The United
judgments
during the term
were incurred
finding as to
correctness of the
test the
acquisition
lease
and
to
right
plaintiffs
damages,
denies the
property by plaintiffs;
per-
and it is
provisions of
to recover because
fectly
clear that
statute, 31
anti-assignment
U.S.C.A.
plaintiffs
claims to
and in the other actions
Tucker Act case
judgment in the
203.
regard thereto,
plain-
taken with
both
recovery
for rents
embraces
$202.74
acting
tiffs and the vendors were
under
admitted to be
plaintiff which is
due
assumption
assign-
mistaken
such
proper.
perfectly
ments were
valid
would vest
plaintiffs
recover
to
respect
assign
to the
The facts
government any
amount for
that in 1946 Mrs. Boshamer
ment are
government might be liable thereon.
It
joined
land
owners of the
the other
assumption
that,
is a fair
ac-
also
when
plain
they conveyed it to'
in which
deed
tripartite
cepting
agreement
and obtain-
outstanding
to
the lease then
tiffs
vendors,
ing later the release from
plain
transferred
the United
agents of the United States knew that both
they might
action
tiffs
cause of
plaintiffs
laboring
and vendors were
damage
against the United States for
done
mistake of law.
this
property during the term of the lease.1
complaints
cases,
transaction,
By
filed in
agents
amended
Following this
the vendors were made defendants and it
States had the
to enter into
alleged that
contract2
was
transferred to
tripartite
written
with each oth
conveyance
plaintiffs, along with the
setting
with the United
forth
er and
land,
claims to
conveyance
their
recover from
of the land from Mrs.
plaintiffs, fixing
damages
United States on account of
Boshamer and others
paid
help plain-
thereto and
refused to
rent should be
date to which
on the claims.
after which it should be
tiffs recover
Vendors
filed
vendors
stating that
stating that vendors
answer
made no claim
plaintiffs,
released
any damages
States from
claims
to the
“having assigned
on ac
lands
rights,
damage
any,
plain-
to the land and
if
reserving their
to the
count of
plaintiffs
all claims on account
such
that “‘the
plaintiffs
tiffs”
admitted
necessity
agreed
having
cause
action
It was
refers
1.
convey
agreement
a contract
executed.
transferred
contains
reserving
plaintiffs
April
1946. The deed of con-
addendum
dated
veyance
arising
government occupancy
June
out of
was dated
.
use,
and counsel
contend
date of
2. This contract bears
June
this was added because
re-
evidently
sign
agreement
was
executed at a lat-
fused to
date,
er
since a letter of Dec.
reservation.
Porter,
Porter, Jr., have all
proceeds
claim for
C.
entitled to the
and N.
Joan
answered in this
suit,
owed
have all admitted
be established as
lease in
property
On the basis
the sale
States”.
question
plaintiffs. They
also admit
and the other facts to
these
admissions
*3
any
they
adverted,
Judge the
of
of action that
have
the District
sale
cause
we
may
precluded
against the
plaintiffs
'have
United States
held that
were not
plaintiffs
that
are wil-
anti-assignment
they
relief
state
statute>
saying
plaintiffs
any money
ling for the
:
receive
due them from the United States in this
of
appears
the cases
“It
from a review
parties, Kathleen
cause of action. These
interpreting
purpose of
this Act that the
Boshamer,
passive
P.
are
merely
et al.
not
Congress
prevent
passing
in
it was to
They
in
in
have
interest
suit.
this
position
being put
a
United States from
par-
brought
been
into this court as active
of
having to
to which
two claim
of
decide
ties-plaintiff by
Any
the other
money
it
pay
contested
ants would
a
judgment against
that
United States
claim;
liable for a like
and then
stand
may
not
in their favor will
be
be rendered
rejected
sum to
claimant should a court
Shannon,
Patti
decreed
favor of Samuel
party
claimant was the
decree
such
Shannon, by
Shannon and
L.
of
W.
virtue
paid.
money
whom the
should
been
have
Shannons,
claim,
assignment
an
of
Co., 300
Surety
National
Martin v.
Boshamer,
'by
Kathleen
al. and then
et
822. The
81 L.Ed.
courts
virtue
Bosha-
of the answer of Kathleen
as
the claimants
all decree that
between
mer
will
declared
judgment
et al. The
be
assignment
is valid.
themselves such
specifically
California,
Ass’n Com
Bank of
National
Boshamer,
favor of Kathleen
et al. and
Revenue, Cir.,
missioner of Internal
the admitted
of
claim to the
sale
their
Co., 52
F.2d
In Webber Motor
F.
re
proceeds arising
any
Shannons
therefrom
Rep.
Supp.
N.S. 340.
Am. Bankr.
will
the Shannons.”
be awarded
however,
case,
possible
this
We
holding
the United States
think
this
claimants
judi
Judge
District
the facts of the case be
now stand before the
cause of action
essentially
is
think
The United States will
fore us
correct. We
it
cial forum.
not
paid.
assignment
clear
claimant will
involved falls
choose which
be
anti-assignment
will
all of
claim within the terms
do so and
This court
impressed by
are
bound
the decree and
statute.3 And we
not
ants will be
those
tripartite
argument
will have
their
that under the
con
who are unsuccessful
independent
not
heard to return tract
day in
and will
be
a new and
claim was
unjust
up
and set
in favor of
which would
some later date
created
at
money
against the United States
not
statute. That instru
claim
merely
rights
recognized
not entitled. The
to which
are
possible
not
claimants and
claims which had
then
existing
been
of all
finally adjudicated
validity
will be
allowed and could have
more
that will be an
itself. Nor
suit and
end
the than the
are we
this one
Boshamer,
impressed
argument
P.
Kathleen
Eva
stat
matter.
P.
Lybrand,
waived; for,
Summers, Amy
Porter,
P.
I.
ute
while the stat-
Julia
claim,
any
anti-assignment
payment
in-
or
statute
3. The
here
thereof,
pertinent
share,
shall
absolute-
volved is 31 U.S.C.A.
part
or
ly
void,
freely
provides:
unless
are
of which
null
presence
“Ail transfers
made
executed
attesting witnesses,
or of
least
after
such,
ascertain-;
thereof,
claim,
part or share
or interest
conditional,
allowance
therein,
due,
issuing
or
whether absolute
ment of
amount
may
payment
be the consideration
of a
* * *
and whatever
warrant
thereof
powers
attorney,
therefor, and ail
or-
receiving
ders,
other authorities
or
beyond
peradventure,
agents
there
proper
tablished
ute
be waived
why
in law
the court
been al-
reason
or in morals
the claim has
after
lowed,
in advance of
not relieve
the mistake
not waived
Niblack,
grant
bene-
recovery
on the claim
Goodman
allowance.
fit
parties equitably
entitled to
proceeds.
Whether
the mistake
follows, however,
byIt
no means
here involved
war-
would he sufficient to
relief.
entitled to
rant
reformation
to serve
defense
to invali
The effect of the statute
equity,
necessary
it is not
decide.
merely
assign
their
date
sufficient,
.certainly
taken with
unquestionably
ment. The vendors could
case,
other facts and circumstances
*4
precluded
recover
them unless
allowing
plain-
warrant the
the
executed; and,
the releases that
bring
tiffs
the
into the case
vendors
assignment
good
is
between the
since the
requiring
prosecuted
and
that
in their
it be
parties although
against'
not
the United
name
the use
benefit of
and
States,4 any recovery
vendors
which the
connection,
noted,
It should be
in this
impressed
with a
obtain could
granted
plaintiffs.5
ground
relief
on the
of
It
is clear
the
trust
favor
primarily
private
mistake is
plaintiffs
between the
and
parties.
Vendors have the
re-
vendors were
releases executed
cover at law on
notwithstand-
the result of mutual mistake as to' the law
the claims
that,
ing
applicable
premises
assignment,
since the
in the
labor
effect
mistake,
assignment,
ing
plaintiffs
ac statute is to
not
both
invalidate
claims;
cepted
being
what is
done is to
executed
require them,
tripartite
regard
contract with
thereto.
It
because
mistake of
equity
acting
that a
under which all
unthinkable
court of
grant
making
assignment,
without power
relief under such
to sue on the claim
equitably
power
The
the benefit of those who are
circumstances.
relieve
agreement
mistakes of law well as of fact entitled under the
made.
It is
proper
argued
pow
well
vendors
cases is
settled.6
have released
equity
liability
er of a court of
to allow suits
under the claim
it;
assignor
maintain
the name
of claims not as
therefore cannot
suit on
that this
signable
law for
benefit of
as but the answer is
release was
signee
well
result mistake
equally
established.7 And
the vendors
court,
clearly
as their
before
answer
shows. This does
with
with
strong
equity arising
not mean that
is held lia-
out
mis
vendors,
estopped
take of both
ble or
reason
the mistake
es-
Co.,
Irving
Co.,
4. McKenzie v.
Trust
v.
Cas. Ins.
323 U.S.
Trust Co.
Commercial
Philippine Sugar
405,
305;
Cir.,
626;
365, 369,
4
F.2d
L.Ed.
40
63 S.Ct.
89
Development
Surety Co.,
Philippine
v.
National
300
Estates
Islands,
Martin v.
U.S.
Co.
513,
594-598,
531,
385,
588,
822;
L.Ed.
U.S.
S.Ct.
L.
S.Ct.
81
247
38
57
62
Lay
13,
1177;
Hazard,
Lay,
24,
Ed.
v.
Griswold v.
141 U.S.
248 U.S.
S.Ct.
39
63
260,
972,
678;
103;
Parish,
L.Ed.
v.
237
11
L.Ed.
Snell v.
McGowan
U.S.
S.Ct.
35
Co.,
285,
543,
955;
35
Fire & Marine Ins.
59 L.Ed.
Nation
Atlantic
98
S.Ct.
U.S.
52; Pomeroy’s
85,
Refining
Cir.,
Equity
al
v.
Ju
8
25
United
Co.
risprudence
p.
951;
seq.
2
Bank
4th
vol.
160 F.2d
of California
ed.
1711 et
v.
Cir.,
Revenue,
Com’r of
9
133
Internal
F.
City
7. Fourth
Street
Bank
432-433;
Nat.
428,
Bank
2d
California
v.
Yardley.
Philadelphia
634,
Cir.,
Co.,
v.
165 U.S.
F. & G.
129
States
9
855;
439,
Hinkle
752-753;
In
F.2d
re
Motor
Webber
Wanzer,
17
L.
Co.,
F.Supp.
v.
How.
D.C.,
367—
Am.Jur.Assignments
pp.
Ed.
Surety Co.,
5. Martin v. National
300 U.S.
269, 281,
232, 247,
cases
there cited.
S.Ct.
Affirmed. which, its assignable make claims before enactment, incapable assignment. SOPER, Judge (dissenting). Circuit Act The court said the words The the court further decision of invites every against “embrace claim discussion, since it nullify seems to arising, na- however of whatever 1853, Anti-Assignment Federal Statute may be, ture it wherever when- 3477, 203, R.S. 31 U.S.C.A. insofar as § § presented.” ever concerned, sug- the instant case is and to 3, 1887, of March c. The Act procedural gest pattern a for future cases 359, 505, gave 24 the District and destroy Stat. Cir- statute, virtually that will cuit of the United States concur- Courts principle may to violate that no one jurisdiction with the of Claims rent Court sue the United States without its consent. against the United when as to claims The statute declares that all transfers $10,000; the amount did not exceed any against claim suggested it has never been that this Act absolutely United States shall be null and repealed R.S. 3477. § pres void unless are executed in the 1946, Federal Claims The Tort Act of witnesses, ence of after allowance 842, upon 60 Stat. conferred the District claims, the ascertainment of the jurisdiction Courts of due, amount and the war issuance and determine claims hear payment rant for the primary thereof. Its property purpose prevent persons was to influential by employees; of its torts caused buying govern Co., held S. v. it was in U. Ætna Ins. urging ment and improperly them 370, page 210, at page 70 S.Ct. at government. the officers Another that neither the terms of the Act its nor purpose prevent multiple payment was to history precluded legislative the continued claims, to unnecessary make the investi 3477. application of R.S. § assignments, gation alleged and to en government only able the to>deal which The strictness characterized the Surety interpretation claimant. U. S. v. Ætna Cas. & statute Co., U.S. 366, 338 70 has been S.Ct. 207. It has earlier cases somewhat re- 436 has be- excepted from States which the insurer been
laxed and claims have by subrogated payment the in- be covered come scope might its seem which in- sured. include first took express They its terms. at. position operation law compelled assignments by voluntary assignments exempt assign- such as from the bar of the parties, act of the procedural title, only statute when dif- passing o>f devolution of heirs, in bank- ficulties are involved. assignees as to devisees or rejected This the au- subject to the contention was ruptcy, &c. were not thority and also on decisions Act was aimed.1 evil at which the ground Claims Act itself in- Tort interpretation of the statute voluntary subrogated dicates that 'be the relaxed, however, as claim as to subject regard of an action always been signments which have Next, took the the States. the Government prohibitions of ed position although subrogee rule in the Court has been the Act. This S., the name 96 recover it sued in U. if Elizabeth Smith v. Claims: S., use, it could re- 326; v. insured to Bolivar Cotton Oil Co. U. Ct.Cl. S., own name. The 182; 27 cover in suit in its Hitchcock U. Ct. 95 Ct.Cl. v. argument 3477 17 in effect was that R.S. 164 affirmed U.S. Cl. prevent of sub- 412; does not 142, 41 in the Federal L.Ed. Cir., S., rights against the United States 4 stantive Appeal; Courts Coates v. U. pro- merely method of 989; Bank Law but controls the Svgs. 53 v. F. Greenville. assignee recover. rence, Cir., cedure 4 S. v. South 76 F. U. say- Cir., rejected argument, Dept., The court 4 171 Highway also1 Carolina State S., ing: page S.Ct. at ; of Land v. U. U.S. F.2d 899 Tracts page 211, 8. Cir., Note F.2d “ * * * Surety Martin Nat’l U.S. square position is in This 588, 596-597, Kirk, Spofford conflict with that the strict the court made clear justified and is not where “the rule has not been abandoned Surety anything Martin v. National said in *7 Government, against were the which Co., never the of the had require Furthermore, it that would collected”; allowed, less much but been provisions party of the the real in interest payments been collected that “After Procedure, Federal of Civil rule Rules contractor in hands of the and are the U.S.C.A., 17(a), disregarded, de- be notice, subsequent payees assign or they specifical- the fact that are made spite heeded, at all events in ments ly applicable the Tort Claims to suits under ends equity, if will not frustrate the Act, against that the Govern- and suits prohibition was directed.” to which the subrogee in owns the sub- scope according and mean conducted The discussion stantive be. procedures in by old ing the statute Chief Vinson the common-law effect Justice to, Co., promulgation Surety the of the Federal Ætna in U. S. v. shows the to the solu Rules. Petitioner admits as much by 70 S.Ct. problem pending upon in the case. reliance v. American tion the Co., point was that noth Tobacco US. actually decided prevents say an 1081. This Insurance 41 L.Ed. is that ing in R.S. § by bringing ‘repealed’ Company from an action 3477 was the under R.S. Federal Rules, interpretation that Tort Claims Act in its own a new Federal the the incompatible against the insured is on claim of the statute which with the name 4, supra, in Note in States either to one the cited the United 1. See opinion In all of the court. of them to the or into the court. against the States had In none of the cases was claim as- claim money against government. had allowed and the been serted the suits are based controlling the fact incorporated Rules, expressly as adjudged it is justi- assignments and Act, clearly if must be Tort Claims tenable, will United States the are fied.” inquire relationship the required to into recent appears the most Thus parties, the and transactions between Supreme Court decision purpose Act will de- very statute, which provisions of the substantive feated. assignments invalidate great regard A in- deal is said in States, possessed are still the United equity injustice enforcing stat- vitality, circumvented not be upon parties ute who entered into the bringing suit procedural expedient of law, sup- transaction under a mistake of name States in the against the United posing that good. were pending cases assignor. In one of the Heretofore in upon this case one has relied complaint is based theory of on the of mistake. There was no to the land in breach damages Act for lease; plead- mention formal mistake in the other the contract of evidence, prop ings, judg- or or Act for Tort Claims Court, negli ment of the or in District the briefs erty lease caused outside the court, employees. doubtless reason that gence parties well that they and U. S. v. understood U. S. Gillis could decisions in ap not rid supra, Congress themselves of an Act of Surety therefore Ætna Nevertheless, showing plicable. unaware of it. ap “Mistake”, The authorities adopts the pending procedural cited opinion Note proach, good relate to claim transactions be- declares private parties tween assignee, and valid in the hands of the Gov- share, pay ernment requires it. The hence have no argument bearing pending on the supporting quite is that the statute case. It is claims, plain assign little only nothing or does void will be left of claims, plan the statute if ment of the United devised to relieve equitable principles, hence an under this case from its terms is given the assignor may on the sanction of the sue courts. All that assignee claim in his name for do will be to bring benefit need suit assigned assignee recovery be im on the will pressed join assignor trust in of the as States as party with a favor de- fendant signee. unwilling plaintiff Federal Procedure, Rules of ’Civil Rule premise argu- This on which U.S.C.A., and the statute will life- be as *8 based; directly opposed but it is repealed less if it by had been Act of ¿Etna Surety to the in U. S. v. decision Congress. Co., supra, that the was not de- statute require signed merely may helpful in It be to suit the name to state the facts in Moreover, pending chronological the so. assignor. the order that it clear- be ly by brought assignor was seen suit the the officers of the by part States had no assignee against the the United States whatsoever the trans- pointed It assignor. the out in the action the the opinion assigned all the United States of this that since were to plain- the parties assignments were to the tiffs and the before no to any blame for court, law, notion the Government the to mistaken par- the which the may have defense, setoff, ties entertained at assert counterclaim or time. The facts favorably most that it stated original claim- to the hardly say ants. It is worth while to are as follows: On January be these defenses would available to the the United States leased a tract of approximately United States in the claim land unless acres from negotiable. unescapabíe P. and Kathleen were Boshamer others at the no $250, change obligations real rights annual rental of renewable year thirty parties to year days’ assignments. pro- to notice to the It frame houses vided for the the lessors. Two small substitution in the lease belonging purchasers place to the lessors the an acre of land names May land; excepted from On' were the lease. names the sellers of up into that lease entered the rental to the 1946 should June amending Supplemental Agreement sellers, No. and thereafter to the plaintiffs; make it renewable from the lease so as to sellers should re- year year On liability further notice. lease the without Government from all Shannons, plaintiffs in April damages 1946 the to the land June case, bought to The part accepted the leased land Shannons o-n their from Mrs. an additional acre the terms original the lease and lease and other owners signed sellers, Boshamer and document was $30 recently purchasers The Shannons had then acre. officers of the Government. neighborhood Appended two- of land agreement separate sales was a acre, per statement, prices in excess of signed only by Shannons, $100 neighborhood they testified that land in which they released the Government liability and that the Bosh- was worth acre from all for .the restoration of the $100 tract, premises of 150 acres except amer which consisted that the release should not woodland, apply was the- of tillable beside damages land which the county. damages injury best farm in Shannons have for to the timber, holes, the small tract from fencing, digging land and leased &c. occupancy ac- the United States. witnesses, plaintiffs’ amount-- cording to the will noticed that the claims $3,125. that the Shan-. It is obvious ed to assigned Government long had be- assigned got bargain even if the nons supplemental agreement fore was exe- prove be valueless. These were government cuted and that the officers had part the land as of the con- included with share that transaction. The evidence price purchase without’ sideration indicates, however, that the Shannons were of the sellers concern much unwilling sign Supplemental Agreement pleadings in this case in their who stated appended No. until the paragraph was knowledge had added, prepared, and hence it was buyers willing that but were agreement by added to the government for whatever were worth. have them agents. opinion the court contact that the Shannons The first agreement that when assumed- was officers, place took aft- signed, agents of the United States executed, when assignments were er the knew assignments prepared a document called the officers laboring law; under a mistake of Agreement No. which was Supplemental if this the fact it bearing has no probably was 1946 but dated June validity since early part of 1947when until the executed previous year, were executed entire- preparing to was sur- Government ly intervention or as- *9 property return the the lease and render ' sistance. actually property was the owners. April or about 1947. The United States has never surrendered consented Agreement No. Supplemental made to be sued in a case like the one at bar.