1881. DAVIS V. FRIEDLANDER. the sale at which the defendant became the purchaser of the land. Upon this state of facts it was ruled that the proceedings in bankruptcy did not operate to dissolve the attachment; that the debtor's title passed to the assignee, subject to the lien created by the attachment, and that a judgment could be entered for the sale of the property, notwithstanding a discharge had been previously granted and was pleaded in bar of the action. It was said by the court that, "Where the power of a state court to proceed in a suit is subject to be impeached, it cannot be done except upon an intervention by the assignee, who shall state the facts and make the proof necessary to terminate such jurisdiction. If the assignee had intervened in the suit he would have been entitled to the property or its proceeds, subject to this [the attachment] lien. He did not, however, intervene or take any measures in the case. He allowed the property to be sold under the judgments in the attachment suits, and those under whom the defendant claims purchased it, obtaining a perfect title to the same." the right to real or personal property with him, These doctrines were further elaborated in Clafin v. Houseman, 93 U. S., 133 [XXIII., 837], where it was held that the assignee in bankruptcy, under the Act of 1867, had authority to bring a suit in the state courts, wherever those courts were invested with appropriate jurisdiction suited to the nature of the case. See, also, Jerome v. McCarter, 94 U. S., 737 [XXIV., 137], and McHenry v. La Société Francaise, etc., 95 U. S., 58 [XXIV., 370]. The principles announced in the foregoing cases would seem to be decisive of the main questions arising on this appeal. What are the controlling facts disclosed by the record? Appellees, Friedlander, Stich & Co., sued In Scott, Assignee v. Kelly, 22 Wall., 57 [89 U. S., XXII., 729], it appears that the assignee Kaufman, their debtor, in the Law Court of in bankruptcy became a party to an attachment Memphis, taking out an attachment, which was suit in a state court, commenced shortly before levied, November 30, 1866, upon certain real the defendant was declared a bankrupt. The estate, in that city, belonging to him. Subseattachment was issued and levied after the ad- quently, on different days in December, 1866, judication. The assignee claimed the attached and January, 1867, other creditors of Kaufman property, but the decision in the state court was the present appellants-brought suits against adverse to him. Upon writ of error to this him in the chancery court of the same city, court, we said that "The assignee in bankruptcy each creditor taking out an attachment, which voluntarily submitted himself and his rights to was promptly levied on the same real estate as the jurisdiction of the state court. Being sum- that covered by the attachment in favor of the moned, he appeared without objection, and pre-present appellants. On the 14th day of July, sented his claim for adjudication by that court. No effort was made to remove the litigation to the courts of the United States. It is now too late to object to the power of the state court to act in the premises and render judgment." 1868, Kaufman was adjudged a bankrupt upon his voluntary petition, filed the 30th of May, previous; more than a year after the levy of the last of the attachments in the state courts. His assignees were Cirode and Coronna, to whom was In Eyster v. Gaff, 91 U. S., 522 [XXIII., made an assignment of the rights, property and 404], the main question considered was wheth- effects of the bankrupt. On the 21st of Novemer a state court, in which a foreclosure suit was ber, 1868, the assignees having received written pending at the time of the bankruptcy of the notice of the pendency of the suits in the defendant, had jurisdiction to proceed without chancery court-then consolidated and about bringing the assignee before the court. The to be heard-appeared therein and, with their question arose in an action of ejectment insti- consent, an order was entered making them, in tuted by the assignee against the purchaser at their capacity as assignees in bankruptcy of the decretal sale in the foreclosure suit. Re- Kaufman, parties defendant, with the benefit ferring to the authority expressly given the as- of any defense they might at any time have had, signee by statute, to prosecute or defend all they assenting that the hearing of the cases prosuits in which the bankrupt was a party, the ceed. Subsequently, on the 21st day of Decourt said: "If there was any reason for inter-cember, 1868, a final decree was entered in the posing, the assignee could have had himself chancery court ascertaining the amount of substituted for the bankrupt, or made a defend- Kaufman's indebtedness to the respective comant on petition. If he chose to let the suit pro- plainants, and adjudging that the attached propceed without such defense, he stands as any erty be sold, free from any right or equity of other person would on whom the title had fallen redemption in Kaufman, or in any of the other since the suit was commenced. It is a mistake defendants, the proceeds to be applied in satisto suppose that the bankrupt law avoids, of its faction of the debts due the attaching creditors; own force, all judicial proceedings in the state the surplus, if any, to be paid to Cirode and or other courts the instant one of the parties is Coronna, as the assignees in bankruptcy of adjudged a bankrupt. There is nothing in the Kaufman. Friedlander, Stich & Co., on the 1st of March, Act which sanctions such a proposition. The court, in the case before us, had acquired ju- 1869, the day fixed by the master's advertiserisdiction of the parties and of the subject-mat- ment of the sale of the attached property, pre* * Having such juris-sented to the Chancellor of the chancery court ter of the suit. * diction, and performing its duty as the case (at his chambers, we suppose) a petition in stood in that court, we are at a loss to see how which-after asserting. in virtue of their prior its decree can be treated as void." Again; "The attachment in the law court, a lien superior to debtor of a bankrupt, or the man who contests that acquired by the present appellees under 819 their respective attachments in the chancery court-they prayed that the sale, so far as it related to the property covered by their attachment, be postponed; that they be made parties to the consolidated equity suits; and that their priority of lien be established. The Chancellor declined to order the postponement asked, but indorsed upon the petition that The sale will proceed, and the complainants to this bill may file this, or a petition, in the consolidated causes to establish their priority, if such exists, to the fund." It does not appear that Friedlander, Stich & Co. availed themselves of the right thus accorded, or that they gave any further attention to or had any further connection with the suits in the chancery court. The sale took place as advertised, Hill becoming the purchaser of a part of the property at the price of $2,500, while the remainder was struck off to Carter, Kirtland & Co., attaching creditors of Kaufman, at the price of $12,520. The bids were less, by nearly one half, than the aggregate debts of the attaching creditors in the equity suits. No exceptions were filed to the report of sale. Hill having complied with the terms of sale, his purchase was confirmed. A decree was entered declaring all the right, title and interest of the parties, in and to the property purchased by Hill, devested out of them and vested in him. It does not appear, from the transcript before us, that Carter, Kirtland & Co. complied with the terms of sale, or that any final action was taken by the court as to their purchase. In July, 1869, Friedlander, Stich & Co. obtained judgment in the law court against Kaufman for the sum of $19,311.81, the amount of their claim against him; and, also, an order for a sale of the attached property, the same previously sold under the decree of the chancery court. But that order was suspended to await the consent of the court in bankruptcy to its execution, or until the further order of the law court. The present suit was commenced on the 20th of August, 1870, by petition of Friedlander, Stich & Co. filed in the district court, sitting in bankruptcy, and to which the attaching creditors in the suit in the chancery court, the purchasers at the decretal sale of March 1, 1869, and the assignees in bankruptcy of Kaufman were made defendants. The manifest object of the suit is, to secure an adjudication, establishing the prion lien of Friedlander, Stich & Co., as against the other attaching creditors, upon the real estate attached, alike, in the suits in the Law and Chancery Courts of Memphis. To that end, a decree is asked declaring the sales under the order of the latter court to be void, and placing the attached property in the possession of Kaufman's assignees, to be by them sold, under the order of the bankruptcy court; the proceeds of sale to be applied first to the satisfaction of the judgment of Friedlander, Stich & Co. in the law court. The district court disregarding the sale made under the decree of the state court, gave those parties all the relief asked, and its decree was affirmed by the circuit court. There are many other facts disclosed by the record, but, in the view we take of the case, it is unnecessary to make a more detailed statement than we have done. We are of opinion that the decree below is radically wrong. It cannot be sustained consistently with the settled doctrines of this court. It rests, necessarily, upon the ground, that immediately upon the assignment of the bankrupt's property to his assignees, the state court of chancery, although the attachments therein were sued out more than four months preceding the bankruptcy, had no jurisdiction to determine the relative rights of the attaching creditors and the assignees in bankruptcy, or to order a sale of the attached property, and apply the proceeds to the satisfaction of the debts of those creditors. But no such position can be maintained. It was competent for the assignees, upon their appointment and qualification, by appropriate proceedings, directed against individual creditors, suing in other courts, to have brought all the property in which the bankrupt had an interest, including that attached in the suits in the state courts, under the direct control of the bankruptcy court, to be disposed of under its orders, with due regard, however, to the previously acquired rights and equities, in whatever way arising, of all the creditors of Kaufman. But they were not bound to pursue that course. Consistently with the bankrupt law, as interpreted by this court, they were at liberty to appear in the state court, and assert there whatever rights they, as assignees, had in the attached property. Electing to pursue the latter course, they voluntarily submitted to the jurisdiction of the state court, which had ample authority to adjudicate, between the attaching creditors and the assignees in bankruptcy, upon all matters arising in the suits before it. Without questioning (as they do not now) the debts of the attaching creditors or the validity of their attachments, the assignees became parties defendant in the equity suits. They neither filed nor offered to file any formal pleading. Nor did they advise the chancery court of the attachment of Friedlander, Stich & Co. in the law court. They left that court to adjudge what were their rights in the property attached. Its final decree secured to them whatever surplus might remain after applying the proceeds of sale to the demands of the attaching creditors. If the bankrupt owed the attaching creditors the sums by them respectively claimed, and if the attachments were so issued and levied as, under the laws of the State, to create a valid lien upon the property, it is clear that the state court gave the assignees all that could have been awarded them. It results from what has been said, that the sale, under that decree-whoever became the purchasers of the attached property, whether third persons, or parties to the suits-devested the assignees of whatever interest or title they had in the property. That decree, having been passed by a court of competent jurisdiction as to parties and subject-matter, and never having been modified by the court which rendered it. or by any court having authority to review its action, the assignees are precluded from asserting in any other court any interest or title whatever in the property thus sold. Had the present suit been instituted directly by the assignees, for the purpose of setting aside the sale made under the order of the state court, and of procuring another sale of the attached property, under the orders of the court in bankruptcy, the proceedings in the state court would have been a conclusive answer to such an, the date of his application, will be fatal to the validity of the letters when issued. action. Plainly, therefore, the present suit by Friedlander, Stich & Co. is an attempt to invoke the jurisdiction of the district court, sitting in bankruptcy, to the end that they may establish, as against other creditors of Kaufman, their priority of lien upon property, in which, as we have seen, the assignees can now assert no right or interest for the benefit of general or unsecured creditors. Whether appellees have such priority of lien in virtue of their attachment in the law court; whether the proceedings in that court were such as, under the laws of Tennessee, gave them a lien superior to that acquired by the respective attaching creditors in the suits in the state chancery court; whether, by reason of their petition addressed to the Chancellor of the latter court, and his action thereon, they became, in any proper sense, parties to the suits in the chancery court, or bound by the decree therein rendered; or, whether their rights were altogether unaffected by that decree; are all questions in which the assignees have now no interest. They are questions which concern only the respective attaching creditors in the law and chancery courts. For the determination of those questions the present appellees may not invoke the jurisdiction or aid of the bankruptcy court. The decree of the chancery court and the sale thereunder, withdrew the attached property from the assets of the bankrupt. The property brought less than the claims of the attaching creditors; and since the assignees cannot question, collaterally, the proceedings in the state court, to which they voluntarily became parties, they have no possible interest in this litigation. It is, we repeat, a contest exclusively between attaching creditors as to priority of liens upon property in the disposition of which, so far as we can ascertain from the present record, the assignees have not the slightest pecuniary interest. The decree of the circuit court is, therefore, reversed, with directions that the petition of Friedlander, Stich & Co. filed in the district court, sitting in bankruptcy, be dismissed with costs to the present appellants, but without prejudice to any claim they may assert, by any proper proceedings in a court of competent jurisdiction, to a prior lien as against appellants, or others, upon the property levied upon by the attachment in the Law Court of Memphis. Decree reversed. True copy. Test: 3. The inventor cannot relieve himself of the con sequences of the prior public use of his patented invention, by assigning an interest in his invention or patent, to the person by whom the invention was [No. 196.] thus used. Argued Jan. 5, 1882. Decided Jan. 16, 1882. APPEAL from the Circuit Court of the United States for the Eastern District of Missouri. Mr. S. S. Boyd, for appellees. Mr. Justice Woods delivered the opinion of the court: The bill of complaint averred that on August 22, 1876, letters patent of that date were issued to Christian Worley and Henry McCabe, the complainants, for an improvement in the mode of finishing plug tobacco, of which Worley was the inventor, and McCabe was his assignee of an undivided half, and that the defendants were infringing said patent, and prayed for an injunction to restrain further infringement, and for damages and an account of profits. The answer asserted the invalidity of the patent and denied infringement. Upon final hearing the circuit court dismissed the bill, and the complainants have appealed to this court. The specifications on which these letters patent were issued declare as follows: "The common way to proceed in finishing plug tobacco is to press the bunches into plugs having the form seen in the retail stores. The plugs are next removed from the molds in which they are pressed, and packed in boxes, and the boxes placed in a room, where the tobacco is sweated and cured. The plugs are afterward taken from the boxes, and subjected to a second pressing before they are packed in the boxes for sale. My improved mode consists in finishing tobacco by placing the plugs in a box in alternate layers with thin metal plates, applying extreme pressure thereto, and subjecting the plugs to dry heat for several hours, while they are tightly compressed between the plates, which are in contact with the broad sides of the plugs; and finally removing the box, and leaving the contents therein until cold, the whole process being adapted to give a fine and smooth finish to the wrapper and, by putting the plug in proper condition, doing away with its tendency to James H McKenney, Clerk, Sup. Court, U. s. bulge out at the sides, as plugs are apt to do Cited-105 U. S., 469. CHRISTIAN WORLEY ET AL., Appts. V. LOKEK TOBACCO COMPANY ET AL. Void letters patent-public use—effect of. when they have not been thus treated.' "I am aware that there is not any novelty in: first, the simple finishing of tobacco by placing it in a heated room; and, secondly, the simple pressing of tobacco between metallic plates and, therefore, I do not claim this distinct heating and pressing of tobacco broadly; but what I do claim as new and of my invention, and desire to secure by letters patent, is: The mode of finishing tobacco substantially as described, consisting of placing the plugs in a box in alternate layers with thin metal plates, applying extreme pressure thereto, and subjecting the plugs to dry heat of about 140° Fahrenheit for several hours while they are tightly compressed between the plates, which are in contact with the broad sides of the plugs, and finally removing the box and leaving the contents therein until cold." It will be seen that the patent disclaims the simple pressing of tobacco between plates, and the finishing of it by simply placing it in a heated room. What appellants insist is new is this, namely: that while the plugs of tobacco are still confined in the finisher (which is the name given to the box in which they are placed before being subjected to extreme pressure), and while still tightly compressed between the metallic plates, they are placed in a sweat room, and allowed to remain several hours, and before being removed from the finisher are taken from the sweat room and allowed to cool. This process, it is contended, brings the oil of the tobacco to the surface of the plug, and gives it a glossy coating which improves its appearance and keeps the tobacco from moulding or swelling. The patent is, therefore, for the process described and nothing more. None of the appliances by which it is carried on are claimed as new, and the evidence abundantly shows that they are all old devices. The appellees insist that the patent is void, because the improvement described therein was in public use at the factory where Worley, the patentee, was employed for more than two years prior to his application therefor. The law applicable to the case is section 24 of the Act of July 8, 1870 [16 Stat. at L., 201], now embodied in the Revised Statutes as section 4886, which declares, Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement thereof, not known or used by others in this country; and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor." Neither the bill of complaint nor the evidence shows the date of Worley's application for his patent, nor of the assignment of an undivided half of his invention to McCabe. The patent itself bears date August 22, 1876, and this must, consequently, be taken as the date of the application and of the assignment. The question is, therefore, whether the improvement patented to Worley was in public use for more than two years prior to that date; that is to say, whether a public use prior to August 22, 1874, is proven. We think that the testimony of the appellants themselves shows that this question must be answered in the affirmative. From their depositions the following state of facts appears: McCabe was the proprietor of a tobacco manufactory in the City of St. Louis, and Worley was in his employment as a workman in the factory. In the summer of 1869, McCabe moved his factory from Second Street to Cass Avenue, and lost about two months of good working weather in so doing. The work of the factory was, consequently, carried on pretty late in the fall, and McCabe told Worley that they should have to go to work early in the spring. It was to prevent the sweating of tobacco which was manufactured in the spring of the year that Worley, in the fall of 1869, conceived the process for which he afterwards obtained his patent. It was at the suggestion of McCabe that he turned his attention to the subject, and the process was contrived for McCabe's benefit. It is not pretended that Worley and McCabe were joint inventors. The invention was made by Worley alone. He at once began using his invention in McCabe's factory. He testifies that it was complete, and he became satisfied with its results, in 1871. It is true that after that date he made experiments to decide upon the best mode of constructing his finishers so as to secure the requisite strength, but the finisher constituted no part of his patented invention. In 1871 his invention was complete, and in his opinion successful, and was adhered to from that date, without change. The process was used in the factory of McCabe under the direction of Worley until the applica tion was filed for the patent in 1876, and according to the testimony of McCabe, Worley continued the process for McCabe's benefit, who paid him a salary larger than was usual for his knowl edge as a tobacco manufacturer. During all the time from 1870 to 1876 thousands of pounds of tobacco finished by means of this process in the factory of McCabe were sold in the market every year. No injunction of secrecy was laid on McCabe by Worley, no one was excluded from the factory where his process was carried on and, at least, one manufacturer learned the process from observing it in McCabe's factory, and adopted it and used it in his own. Worley, it is true, testifies that he told several of the hands employed in the factory not to say any thing about what they were doing, and McCabe says that before the patent was obtained there was "an outside understanding" that they were "to keep it away from the public eye as much as possible." The testimony of the appellants on this point is most vague and unsatisfactory, and it is evident that no means were taken by them to keep the process invented by Worley a secret, and it was not kept a secret. Worley, according to his own testimony, communicated his process not only to McCabe but to others, and used it openly in McCabe's factory, for a period of six years before applying for his pe tent. It has been repeatedly held by this court, that a single instance of public use of his invention by a patentee, for more than two years before the date of his application for his patent, will be fatal to the validity of the patent when issued. McClurg v. Kingsland, 1 How., 202; Consdidated Fruit Jar Co. v. Wright, 94 C. S., 92 [XXIV.,68]; and Egbert v. Lippman [ante, 755]; decided at the present Term. We think the testimony of the appellants themselves, shows such a public use of the process covered by Worley's patent, as to render it invalid. This evidence brings the case clearly within the terms of the decision of Me Clurg v Kingsland, ubi supra, where it was declared that if a person employed in the manufactory of another, while receiving wages, makes experiments at the expense and in the manufac tory of the employer has his wages increased in consequence of the useful result of the experi ments, makes the article invented, and permits his employer to use it, no compensation for its use being paid or demanded, and then obtains a patent for it, the patent is invalid and void. Suppose Worley had not assigned an interest in his invention to McCabe and, after obtaining his patent, had brought suit against the latter for infringement; it is perfectly clear that McCabe could have defended the suit successfully on the ground of his own public use of the invention for two years before the date of the patent. If such defense could be made by McCabe, it could be made by any one else, for the facts relied on would render the patent void. The fact that McCabe, just before the patent was applied for, became the assignee of an interest in it, does not make this defense any the less effectual; for the assignee of a patent-right takes it subject to the legal consequences of the previous acts of the patentee. McClurg v. Kingsland, ubi supra. The inventor cannot relieve himself of the consequences of the prior public use of his patented invention, by assigning an interest in his invention or patent to the person by whom the invention was thus used. We think the evidence of the appellants themselves establishes clearly the defense under consideration. The decree of the Circuit Court must, therefore, be affirmed. True copy. Test: Mr. Chief Justice Waite delivered the opinion of the court: This was a suit begun by Ruble and Green, on the 6th of March, 1880, in a State Court of Minnesota against all the plaintiffs in error, who were the defendants below, upon an alleged contract of bailment made by all the defendants as partners. The amount involved was a little more than $500. The plaintiffs were both citizens of Minnesota. One of the defendants, Rowell, was a citizen of Minnesota, but the others were citizens of Wisconsin and Iowa. The business of the alleged partnership was carried on in Minnesota. Rowell filed a separate answer to the complaint, in which he denied the existence of any partnership between himself and the other defendants, and set up a full performance of the contract on his part. The other defendants joined in a separate answer for themselves, in which they denied any partnership with Rowell and any contract between themselves and the plaintiffs. They also denied generally all the allegations of the complaint. On the 12th of April, 1880, after these answers were in, all the defendants, including Rowell, filed in the state court a petition for the removal of the suit to the Circuit Court of the United States for the District of Minnesota, on the ground of the citizenship of the parties. At the next Term of the circuit court the cause was remanded to the state court. This order was James H. McKenney, Clerk, Sup. Court U. S. entered in the circuit court on the 31st of July, Cited-108 U. S., 466. SAMUEL Y. HYDE ET AL., Piffs. in Err., v. JOHN RUBLE ET AL. (See S. C., 14 Otto, 407-410.) Removal of cause-citizenship of parties-two causes united-repeal of Act. 1. A case is not removable, under the 1st clause of the 2d section of the Act of 1875, where all the parties on one side of the controversy are not citizens of different States from those on the other. 2. To entitle a party to a removal under the 2d clause of the same section, there must exist in the suit a separate and distinct cause of action in respect to which all the necessary parties on one side are citizens of different States from those on the other. 3. When two causes of action are found united in one suit, there can be a removal of the whole suit on the petition of one or more of the plaintiffs or defendants interested in the controversy, which, if it had been sued on alone, would be removable. 4. The 2d clause of section 639, of the Revised Statutes, was repealed by the Act of 1875. [No. 1010.] Submitted Dec. 1, 1881. Decided Jan. 16, 1882. IN ERROR tote District of Minnesota. N ERROR to the Circuit Court of the United The case is stated by the court. Mr. Angus Cameron, for plaintiffs in error. Mr. Gordon E. Cole, for defendants in 1880, and a copy thereof filed in the state court This action is clearly one sounding in contract and not in tort. According to the allegations of the complaint, the plaintiffs stored their wheat with the defendants at an agreed rate for storage, the defendants undertaking to buy the wheat and pay for it at the market price, whenever the plaintiffs wanted to sell. The action is brought to recover what is alleged to be due on the price according to the terms of this contract. All the allegations of wrongful conversion are immaterial, and in no way change the character of the suit. The suit, then, as it stands on the complaint, is in respect to a controversy between the parties as to the liability of the defendants on a single contract. One ground of defense is, that there was no partnership between the defendants, and that Rowell alone was bound by the contract that was made; and another, that the |