McClaskey v. Harbison-Walker Refractories Co.

MARIS, Circuit Judge

(dissenting).

1 find myself unable to join in the majority decision because it seems to me that my brethren are giving judicial approval to what Justice Gray in the case upon which they rely (Ager v. Murray, 105 U.S. 126, 129, 26 L.Ed. 942) said had never received such approval and which did not receive approval from him, namely, that “a patent-right may be seized and sold in execution by the sheriff under a fieri facias”. Passing the question whether the Pennsylvania Act of April 7, 1870, P.L. 58, 12 P.S.Pa. § 1337, authorizes such a seizure and sale, as to which the Pennsylvania courts are in disagreement, I am satisfied that a Pennsylvania sheriff, elected by the- people and commissioned by the governor, is not acting as a legal representative of the patentee when he seizes and sells a- patent under a writ of fieri facias and gives a bill of sale therefor to the purchaser. His character is, in my view, in no sense analogous to that of a trustee specially appointed by a court of equity to sell and assign for and on behalf of a debtor his interest in a patent in case the debtor himself refuses to obey the court’s decree to do so.

In order that an assignment of a patent may be recognized it must, under the terms of Sec. 4898, Rev.Stats., 35 U.S.C.A. § 47, be made either by the patentee himself or by his assigns or “legal representatives”. Ager v. Murray held that a trustee appointed by a court of equity to assign a patent for the patentee in case the latter failed to obey its decree to do so was the patent-ee’s legal representative within the meaning of Sec. 4898. It is too far a cry from reality for me to hold that a sheriff who seizes and sells a patent at the instance of the pat-entee’s creditor does so as a representative, legal or otherwise, of the patentee. I should, therefore, hold that the bill of sale given by the sheriff to McClaskey in this case passed no title to the patent under Sec, 4898.

In recognition, as I think, of the proposition that a sheriff has no power to make an effective assignment of a patent under Sec. 4898, Rev.Stats. the Pennsylvania legislature passed the Act of May 9, 1889, P.L. 172, 17 P.S.Pa. § 294, which conferred upon the courts of common pleas jurisdiction in equity to assist a judgment creditor to reach a patent belonging to his debtor. Under this act McClaskey might have secured the effective sale of the patent through a decree directing its assignment by the patentee or, in case of his refusal to obey, by a trustee appointed to assign it for him, as authorized by Ager v. Murray. I do not find either in the record or *501in his brief any satisfactory explanation as to why he did not follow the procedure which the Act of 1889 authorizes.