BATE REFRIGERATING CO. V. GILLETT.
809
ferent occasions. Two of ,them say that they purchased from Peggy . Bonham; one of them, that he purchased from defendant. Peggy Bonham lives with the defendant. Some of the witnesses say that they think she was his wife; others swear that he never married her, and that she was his concubine. In orderto convict the defendant, the jury must be satisfied, from the evidence-First, that he sold the liquor as charged. If sales were made' by Peggy Bonham in his and were with his knowledge, and Peggy was his agent in doing s(), the his. If Peggy was his wife, the law will presume that she did this as his'agent; if Peggy is nofhis wife, then the jury must be satisfied, from the evidence, that she as his agent,-the eame does not arise as would arise were she his wife. State v. Col1JinB, 1. McCord,355; ,0i,ty 'Council 'v. Van Roven, 2, McCord, 466. Second, if the jury fui4 tllafthe.sales were made by defendant himself, or,py his agent,then they must further be satisfied from the evidence that the d(jfendant had the liquor 'on hand for the pUrP9se ofseUing it at retail. The facts proved must indicate that the defendan.t' had procured the, liquor with the intent to retail it, or, having"it on hand, had formed. the intent to 'retail it,and' carriedout the intent by one or more acts. If the defendant had the liquor on ,hand for his own use. and if he let .thewitn"lsses'have it as a matter of kindness, or from neighborly feeling,.he cannot be convicted,even if he took money, especially as no general practice has been proved. .
REFIGERATING
Co. v. GILLET» and others.
(Oircuit Oou1't, D. New J&r8e'J/. Augus.t 9,1887.)
1.
PATENTs FOR INVENTIONS-VACATING 'AND REmSTATmG INJUNCTION-EFFECT . OF FOREIGN PATENT AND LITIGATIONl'
. An injunction granted upon rendering an interlocutory decree for complainant, in a suit f.or infr.ingement of a.;p.atent. was dissolved upon its being shown that there was a prior foreign patent for the same invention whose term hadexpired,and thereby terminated the life of the domestic patent, but such order of dissolu,tion was afterwards vacated"by the court by reason of the fact that a ·court.()f the foreign country had. since the' makuIg of such order, declared the foreign patent voidab initio. Such decree of the foreign court, declaring the foreign patent void, haviu!1;'afterwards been VaCll.ted by tb,e same court on the ground that it was obtained by collusion, held that the order dissolving the injunction should n.ow be reinstated. .
2.
SAME-FoLLOWING FORMER DECISION IN CASE.
Upon a hearing on petition for such reinstatement before a jUdge other than the ope ,who origmally ordered tb;e dissolution of the injunction, held, that the decision of the former judge, holding that the provision of St. granted'for an invention 'which has'been preU. S. § 4887, that viouslypatented in a foreign countr, shall be so limited as toexpire.lj.t the Ilame time with the foreign patent,' includes foreign patents granted pending the application for the domestic patent. should be followed. without considering the question de novo; the question being at least a doubtful one. and , the former decision having been followed in other circuits. , , A Canadian patent takes effect from its. date. althougb the delivery6f' it to the patentee is postponed dn· accou'Ilt 'of' his neglect to file a model asre.:
8.
SAME"-oFoREIGN PATENT-TAKING EFl'ECT--c-TERM OF.
810
FEDERAL
REPORTER.
quired by law; ,and the term for which it.is originally granted should. as affecting the cpntinuance of an American patent afterwards lfranted for the. "same·invention, be considered as its whole term, although it IS subject to renewal; and is afterwards renewed.
4.
SAME-;-LEGISLATION EXTENDING TERM OF. FOREIGN PATENT.
An act of the Canadian legislature, passed after the issuance of a certain .Canadian patent, extending the term of patents theretofore issued, and providing tha.t such pa.tentsshall be oe.eme.dto have been originally issued for such increased term, can have no effect to extend the life of an American patent whose term is limited by the term of the Canadian patent.
II. SAME-FollFEITURE OF FOREIGN PATENT-EFFECT. If a foreign pattmtia granted for a term certain, provided that, if the patenteeshall n,ot pay duty within a certain time, the patent shall cease and determine, an American patent, afterwards granted for the same invention, will not be affected by a forfeiture of the foreign patent, subsequently incurred by failure to perform the condition.
W'here, a suit for of;a patent, the defendant was sued as a corporation under an erroheous corporate name, but appeared and answered under:tbatname, without exception: participated in taking testimony; reproceedings in :another court under ceived·noticllof :fl.nalllearing; the and, ".laps.e of fgur years,. sought to ,open the decree, and Bet aSIde'&ll it In the SUIt. because of the erroneous name indi character under WhICh it was sued, and.because of surprise and ignoranceof ,the. existence. of the patent; that. under the circumstances, . the defendant was estopped from denying 'the name and character in which it was sued'; that ignorance of the existence of the patent was no defense; and four vears Was an unreasonable delay.in seeking such relief. , '\
OF EXIBTENOIl OF PATENT.
.
.On t6 Dissolve etc: . John R. BeJnnett, for the motion. Olarence A. Seward, John Lowell, and William M. Evarts, contra. BRADLEY,dJuBtice. . This case, haVing undergone some vicissitudes, requires to be briefly rehearsed. On the twenti'eth day of November, 1877, letterS patent of the United (No. for. thetefill of 17 years weJ;e .granted anq i&sued to John J. Bate, of Brooklyn, in the state of. New York, for an imllr.ovenientitipt6cesses· for 'pTeservingmea,' during transportation and storage the a.coveripg fi.bi:olis or woven material,andsubjecting it to a continuous current of cold air, which patent was the'compl,ainant, the Oompany. On the fifth day,ofl\'ebruat:y; 1878" the bill was filed I'd the present case, alleging. 'iIifringementof the patent bYilthe defendants, and praying for an' injunction account bfprofits. 'Answers were filed' and put .at isday of November, 1881, an sue, and proots taken. On. the interlooutorydecree was made in favor orihe complainant, adjudging defendants had infringed it; that thepll,teht i#asgoodand valid; t4atthe cOq!.plaim\-nt profits and damages, with reference to a 'master for an: acCount; and that a perpetual injunction be issued against the their <?fficer!3 and agents.. ,Subsequently, in May, 1882, the defendants, filed a petition praying for a dissolution of the injunction, alleging that 'they had ,recently discovered that, prior to the issue of the patent on which the suit was brought, to-wit; on ninth p8.yof Janllary, 187l, Jetters patent of the dominion of Can-
of
BATE REPRIGERATING
V.GILLETT.
811
ada were granted' to the said john J. Bate for the sanie invention, for the term of five years, with. a privilege of extending the same for two other terms of five years each; and that the firstterin of five years expired on the ninth day of January, 1882. The defendants contended, therefore, that by force of section 4887, Rev. St. U. S., the complainants' patent should have been limited to expire at the same time with the Canadian patent, and had no validity for a longer period. The language of section 4887 is that "every patent granted for an invention, which has been previously patented in a foreign country, shall be so limited as to expire at the same time with the foreign patent." The complainant opposed the motion on three grounds: First, that the foreign' patents referred to in the section are only such as have been granted prior to the appli6ltion for the domestic patent, and not such as are granted between the application for, and, the date of issuing; the patent; and as, in the present case, the application for the domestic patent was filed December 1, 1876, the Canadian patent could not affect it. SeciYnd, that although the Canadian patent was' dated the ninth day of January, 1877, it was not out to the patentee until the eighteenth of June, 1878, because no model was filed until then as reqUired by law and by the patent-office. Third; that the extension of the Canadian patent, under the privilege given by the Canadian law, operated to make ita patent for fifteen years instead of five years. Judge NIXON, who heard the motion, decided that neither of these grounds was sufficient to prevent the application of section 4887 to the domestic patent. He held that this section, different from the acts of 1836 and 1839, refers to foreign.patents granted previously to the date of the American patent, and not merely to those granted pr,eviously to the filing of the application therefor. On the second point, he was equally decided that the invention was "patented" in Canada when the patent was signed and. issued as a patent, ready for delivery. The delay {)f delivering it out to the' patentee was entirely' caused by his neglect to file a model, which he had the power to do at any time. The third p'oint was also decided by Judge NIXON adversely to the complainant. He held that, as the patentee chose to take out his patent for five years only, relying on his' privilege of extending it further if he should wish to do so, it necessarily resulted that, when thus taken out, it was a patent for five years only. As this was its status when the American patent was issued, the latter was limited to the same term. The opinion of Judge NIXON is reported in 13 Fed. Rep. '553. Entertaining the views therein expressed, he dissolved the injunction by an order dated September 29, Thereupon, the complaina.nt changed, for a time, the scene of operations to Canada. First was procured, on the twenty-fifth of May, 1883, an amendment of the patent law, by which it was declared that the term of every patent should be 15 years, with an option of paying the full fee, or only a part; and, if the unpaid part should not be paid, the patent should then expire. It was further declared that "every patent heretofore issued by the patent-office, in respect of which the fee re-
812
... FEDERAL REPORTER.
quired for the whole or for' any unt;lxpired portion of the term of fifteen years, hasbelln duly paid according to the provisions oftha nowexisting law in,that behalf, has been and shall be deemed. to have been issued for the term of fifteen years, subject, in case a partial fee only has been paid, to cease on ,the same conditions on which patents hereafter to cease under the operation of this section." In addition to this legislation, the complainant, through its agents, procured the institution of proceedings, by scire.facias in the superior court for Lower Can'ada, in the name of tbeattorney general of the Dominion, to have the Canadian patent vacated 8J}<ldllclared void initio for want of a model filed.in the patent-office"before the granting of the patent. A deCree to this effect .was actually wade by the court on the ninth day of July, 1883. Thus the now had the benefit of a statute which;decIared that tIm was issued for a term of 15 years, andai a judicial decisiol1 -which declared that it had never iated itt all. . . ;, Armed with these docu\Ilents qomplainant applied to this court to vacate the order dissolving the injunction, and to have the injunction rainstatfld.JudgeNlXoN,befol'll whom this motion algocame, felt compelled to grant it, inasmu(jh l\\l:.the Canadian patent, which was the ground·o(his previous decisionl was now judioially declared to have never had an existence. No effect appears to have been given to the amendatory 'act of May 25, 1883. An order was made on the twentyprevious order dissolving the injuncfifth of March, 1884,vacating tion, and reinstating the original order granting the injunction. The defendants now followed .the example of the complainant, and removedithe conflict to Canada. ,According to the course and practice of the courts in that countr>" whiWl are modeled very much upon the civil law , they appliedJor leave to litigate the proceedings on scire facia8 as third opponents; that is, as. third persons having an interest affected by the judgment. Tbe complainant and. the other parties were notified of the application, and opposed it; but the court granted it, and allowed the defendants .to interplead. They did so, and set up collusion 'between the principal parties in t.he judgment which had been given, and contended that the Canadian patentwaa valid. The court sustained this defense, and declared that the forl11erjudgment had been arrived at "through the frauJ to the law and collusion of the said JohJ;l Jones Bate, Bate. Refriger:itipg Qompany, and Benjamin Holman, deceiving tbeattorney general, the advocates, and the court, employing and paying,counsel.on well seemingly against themselves as on their apparent behalf," and "that the deposit ofa model of the invention tQ be patented .not, according to our law, a matter essenti.al to of the patent, but .can be dispensed with at the discretion of the: .commissioner of· patents ; that the facts as they have occurred in this qase-that is,pr&paring, drMting, and registering the patent before the model wnsdeposited-would in themselves constitute a dispensation of model/' etc. jand thecourt .decreed that the patent of Jannary9, 1877, was legally iss,uEld t and had been legally renewedj
BA.TE
00. 11. GILLETT.
813
and, far from being null ab initio, had never ceased to be in full force and effect through the renewal of twelfth December, 1881, and as declared by the statute of 1883; and that the former judgment was n.ull and void, and of no effect.· to all legal intents and purposes, and especially as regards the said third opponents; and the court dismiss the -d suit on 8cire faciaB. This decree was pronounced on the thirtieth day of June, 1886. The defendants, on the faith of this decree, now COme before the court and ask that the order dissolving the injunction may be reinstated, and that the last order, vacating it, may itself be vacated. . It is clear that on the view of the law and of the case taken by Judge NIXON, in his previous rulings and decrees, the application of the defendants should be granted. As soon as the existence of the Canadian patent was judicially made known to him, he decided that the American patent terminated at the end of the five-years term of the Canadian patent, namely, on the ninth day of January 1 1882, and he forthwith dissolved the injunction which had been or.dered by the decree of. September, 1881; and 1)e only vacated that order of dissolution upon l,' the exhibition of the decree made by the superior court of Low Qa,nada, July 9, 1883, declaring the Canada patent void ab .initia. Mthat decree is now, by another decre.e of the same court, shown to have been. collusive, and to have been obtained by fraud, and has been vacated, and as the said court has adjudged the patent to have been valid, ·it should follow, of course, UpOll Judge NIXON'S view of the case, that the dissolution of the injunction should be restored. But r am very urgently pressed, in the argument of the able counsel for the complainant, to revise the rulings .of Judge NIXON, and to take up the case ab integra, both as to the construct1.on of section 4887, Rev. St. U. S., in reference to the time when a foreign patent must have been granted in order to affect the term of an American patent, and as to the time when the Canadian patent took effect, so as to eration under our law; and, finally, as to the term of the ent,-whether it was for five years or fifteen years,-'-especially in view of the amendatory act of May 25, 1883. r may say at once that r attach no importance tathe last-mentioned act. The American patent received its operative force and effect on the day it was issued, and no subsequent legislation in Canada or elsewhere could change it, whatever might be the effect of such legislation where made. The force and effect of the American patent could only be by the Canadian patent as the latter stood when and not as it · was afterwards modified by legislation. . r may also say that r entirely agree with Judge NIXON in his view of the Canadian patent, that it took effect at its date, January 9, 1877, and not at the time of filing the model in 1878. It was gra!ltedon the ninth of January, 1877. after which time the patentee could take,it out of the office whenever he chose to file the model. The term of the patent commenced to nm at its date; and I agree with Judge NIXQN that the term was for only five years, which expired in January, 1882, not-
814
FEDERAL REPORTER.
withstilnding the privilege which·the patentee had of continuing it for a longer period. ,With Jlegard to the construction of our own statute, (section 4887, Rev. St;;) if the question were an open one, I might have some hesitation; but, as it is at least a question of considerable doubt, I feel constrained, sitting at the circuit,to' follow the law of the case as held by Judge NIXON, especially as his judgment has been followed in other circuits. It is true that the complainant does not ask the reversal of any order heretofore made, on the ground of its being made on an incorrect view of the' law j but asks that the last order may stand, notwithstanding the'ocourrence of facts which',according to the previous view of the law, would require its revocation. I do not see, however, that this makes much difference in the position of the court. In view of the Canadian patent, Judge NIXON dissolved the When it was put out of view, for a time, by certain rubbish, the injunction was revived. That rubbish has now been cleared away, and the patent comes again into view. Not to dissolve the injunction again would be to repl1diate the former decision of the' court. In any case, a judge will be very reluctant to decide the law differently from what has been previously been decided in the same case, either by himself or byanother judge; although it has sometimes been done, especially for the purpose ofconforming to the decision of an appellate court. But where no such decision has been made, and where the question, to say the least, is quite a doubtful one, it would be very unseemly for one judge to overrule the decisions of another in the same cause. Therefore, without having come to any decided conclusion on the question in hand, considered as an onginal one, I feel bound to follow the previous rulings of this court, confirmed as they are by those of other circuit eourts, as safe precedents, until the law shall be differently settled by the appellate tribunal. This, of course, will require a vacation of the order of March 25, 1884, and a reinstatement of that dissolving the injunction; . The defendants have presented an additional petition praying for a dissolution of the injunction, and an order to limit the period of accounting for profits, on the ground that a previous English patent was granted for the same invention on the twenty-ninth of January, 1877, for the term of 14 yeaI'B; provided, that' if the patentee should not pay the stamp duty of£50 within 3 years, or of £100 within 7 years, the said letters patentsnould cease and determine. The petition alleged that the patentee failed to pay the said stamp duty of £50 within 3 years, and. that thereby the said patent became void on the twenty-ninth of January, 1880, and the defendants contend that the United States patent of the compla:inant did, by operation of law, cease and terminate at thesame time. I do not think that this position is maintainable. The Englishpatent was granted for a term of 14 years, subject to be defeated by the non-performance of a condition subsequent. I do not think that the AmeriCltn patent became subject to the same condition. The term of the English patent fixed the term of the.American patent; nothing more,
BATE REFRIGERATING CO.V. GILLETT.
815
nothing less. Tbesubsequent fate of the English patent had no effect upon the American. The life of each after its inception proceeded independently of the life of the other. See Protective 00. v. Burglar Alarm 0>., 21 Fed. Rep. 458; Paillard v. Brwno, 38 O. G. 900, 29 Fed. Rep. 864. A third. petition in the case is that of the British and North American Royal Mail Steam-Packet Company, who allege that they lire an unin<Jorporated association of individuals heretofore doing business under that name, and that they are the same body of persons who were made defendants herein under the name of the "Cunard Steam-Ship Company.)J They pray for an order vacating, as to them under the latter name, the interlocutory decree of November 14, 1881,and for a discontinuance of the suit as to them, and that the name of the Cunard Steam-Ship Company may be stricken from the' record in all further proceedings in the cause, and that they may be discharged from all further attendance,etc. The petitioners state, as grounds for relief, that the other defendants, Gillett j being exporters of fresh meat, had been accustomed to mak..e shipments by the steam-ships of the Cunard Line, but that the petitioners,being merely common carriers, in the habit of transporting whatever merchandise was offered to their ships, received s!lid l!hipmentswjthout being aware that the plaintiffs or John J. Bate had any patent 'of the kind set forth in the bill of complaint, or that it was claimed or pretended that said shipmentB'lVere made in violation of any such patent; that although they were made defendants under the erroneous name of the" C.utulrd Steam-Ship CQmpany," and appearlld and answered as such, the other defendants were the principal parties, whose acts were charged :as infringements; and the petitioners haying no substantial interest in the matter, and being content to allow the plaintiffs and the other defendants to litigate their respeetive rights,. substantially withdrewfroln all partiCIpation in the after having introduced testimony to show their subordinate position, and the fact that ,they were themselves dear of anyinfdngement; that the interlocutory decree against them was granted byinadvertence,. and without any sufficient proof thatthe patwas used on their ships; that it has since appeared, by the .evidepceof.BenjaminW. Gillett before the mas'ter:, thataU shipments made by the .Gilletts in ships of the Cunard Line pdor to the commencement of this suit were made prior to the patent itself, and that none of them were made since that time. In reference to this petition, it is to be observed.,....,.Fir8t, that the defendants, being sued as a corporation by the name of the Cunard SteamShipCot:hpany, answered under that name, without takinganyexception to the manner in which they were sued, and thereby arlmitted,their Besides, in their name and character to be such as the bill petition to the superior court of Lower Canada to be admitted as third -opponents in the acirefaciaB case, a copy of which petition appears in the proceedings, they call themselves the "Cunard Steam-Ship Company, a body politic and corporate,having its chief place of business in the city -of New York." It is plain that the decree cannot be on this
816
ground. The allegation that the defendants werp ignorant of the existenceof the patent is, of course, no defense. The patent was a public record, ofwhich all persons were bound to take notice. As to the allegation that there was no sufficient proof of their infringement to sustain the decree against the Cunard Company, it is too late for a motion to open the decree On that ground. The defendants were served with process, they appeared, filed an answer, took part in the taking of testimony, and were duly notified l>f the final hearing. They have, therefore, not the least ground for alleging surprise, or that any advantage was taken of them. The general' principle in relation to the time al'lowed for making a motion to correct or amend a decree is that the party must exercise due diligence, and make the motion in reasonable time. 2 Smith, Ch. Pro 15, note; 2 Daniel, Ch. Pro (3d Amer. Ed.) 1040, 1041. A lapse of more than four years is not reasonable time. A much shorter period has been held to be unreasonable; ld. The petitioners may go before the master and show that they are not responsible for any profits or damages, and may, in that way, perhaps, get off with merely nominal damages; but it is too late to try the cause over again on the merits upon the issue that they are ,not Iiableat all. The prayer' of the last-named petition is denied.
PAT£NT CLOTH'ING Co", Limited,
v. GLov£Rand another.
(Ch'rcuit (Jourt, 8. D. N6'IJ) York. May 14, 1887.) ,PATENTS FOR INVENTIONS-REISSUE-ExTENSION OF ORIGINAL CLAIM.
Reissued. letters patent No.. 9,616, issued March 22. 1881, were 1I,'ranted to Redmond Gibbons for an improvement in pantaloonssnd similar garments. by bridging the crotch of the fly·front with a check-piece of cloth, or other inelastic, pliable material, thus adding to the durability of the garment by the stretch of the cloth or stitch at the crotch. Claim 2 was de. signed to Include a check-piece which, instead of bridging the crotch, was, when integral with the button,hole strip, a continuation of it around, instead of across, the apex of the fly-opening. Held invalid, as ap. extension of the claim of the original patent, and therefore not infringed. by the defendants.' manufacture, which was substantially the same as that of clai'm No.2.
Oausten Brown and Wm. A. Jenner, for plaintiff. Gilbert M., Plympton, for defendants. SHIPMAN, J. This is a biHin equity to restrain the defendants from 'the alleged infringement of the second claim of reissued letters patent No. 9,616, applied for February 19, 1881, and issued March 22, 1881, :td Redmond Gibbons, for an improvement in pantaloons. The original . patent was dated June 6, 1876. The specification of the original pat,rent says that the Invention "relntmlto a fastening' for the crotch in the fly of pantaloons and similar garments, 'ahd it consists in bridging said ; crotch with a check-piece of cloth or, other inelastic, pliable material, as