434
FEDERAL REPORTER.
Manysugg:Elstions were made in argument, on the part of the defendants, which have been considered, though not now adverted to, as none of them control the salient points on which the decision is rested. There must be the proper decree for the plaintiff in accordance with the foregoing views, and a like decree in the suit against Handy, and in the suit against Thornton.
DE FLOREZ and another v. RAYNOLDS and others. (Oircuie Court, S. D. N6'IO York.
February 2,1880.)
DE FLOREZ V. BAYNOLDB.
435
oils, and other articles." The date of the patentwQs June 28, 1864, and on its face it was granted for the term of 17 years from the twent.y-eighth day of June, 1864. The patent was re-issued to Pinner, November 1, 1864, the re-issue being gJ;'anted, on its face, for the term of 17 years from the twenty-eighth day of June,1864. This suit is founded on the re-issued letters patent. It was brought to a hearing on bill, answer, replication, and proofs, and on the twentyninth day of June, 1878, a decree was made by the court establishing the validity of the re-issue. and the fact of infringement by the defendants, and referring it to a master to take an account of the profits made by the defendants by the infringement, and awarding a perpetual injunction against the ·defendants from making, using, or selling cans or boxes containing the patented invention. . There was introduced in evidence ·by the defendants. a patent granted in England to Bouvet for the sameinventious that are in .the re-issued United States patent. 'rhis English was sealed January 6,1863, and dated September 19, 1862. Bouvet filed on the latter day a provisional specification with the English commissioners of patents, and on the nineteenth of March, 1863, he filed a full specificll.tion in the great seal patent office in England. The French patent to Bouvet, hereinafter referred to, was not introduced invenin evidence in the cause by either party. It covers thl3 tions which are claimed in the re-issued United States patent. It is n{}w presented to the court, and on it and on all the pleadings, proofs, papers in the case, and sundry new a motio:t;!,ia now made by the defendants before the court held by the circuit judge and Judge Wheeler, that the said decree be amend.ed by inseJ:'ting therein a finding that the plaintiffs' re-issued patent is valid only for the term of17 years from the date or publication of the prior patent for the same invention in France and England, and that the defendants be permitted to amend their answer by setting up said prior French patent; that the decree and the proofs be opened, in order to prove the same in the cause; and that the injunction herein be suspended pending said proof, or discharged; and for such other or fu,rther order or relief as may be just. The answer to the bill sets up that by the l,tct of, or by and with the consent of, Bouvet, the improvementEl described in the United States re-issued patent were patented in Great Br.itain with date of September 19, 1862, the British patent thereon having ,been sealed On .the .sixth day of January, 1863, and that patent
436
ilxpiredby limitation or operation of law on or before January 6, 1875. We have been furnished with a copy of the French patent in the French language, in manuscript, duly authenticated by the proper authority in Paris, and with" what purports to be a translation of it. The French law concerning patents, which was in force when the transactions took place in I!'rance, in respect to said French patent, was that promulgated July 8, 1844. Under that law patents are granted for five, ten, or fifteen years, according to the tax paid. Whoever wishes to take out a patent for an invention must deposit, under seal, at the office of the secretary of the prefecture, in a specified department, a petition, with a description of the invention, and necessary designs or patterns, and a list of the pieces deposited. The patent begins to run from the time of such deposit. Within five days after such deposit, the prefect transmits all the pieces deposited to the minister of agriculture and commerce. There they are opened, and the petition is enrolled. If the application is regular, a decree of the minister is delivered to the applicant, and constitutes the patent. To such a decree a duplicate of the description and designs are annexed. The patentee, during the duration of the patent, has a right to make additions, under the same regulations as to deposit of a petition, etc. A certificate of addition is delivered in the same form as the original patent, and has, from the dates of the demand and grant, respectively, the same effect as the principal patent, with which it expires. If a patentee wishes to take out a patent for five, ten, or fifteen years, for an addition, instead of a certificate of addition expiring with the original patent, he must, besides the same formalities, pay a new tax, as on an original patent. In the French patEJnt under consideration there is first l\ patent granted to Bouvet for 15 years, and dated November 30, 1861, with a description and a drawing annexed, referred to in the description. The text shows that the patent was "taken" November 30, 1861. The decree or grant appears to have been made by the minister January :z5, 1862. Next, there is a certificate of an addition by Bouvet, of the date of December 21, 1861, to the patent of November 30, 1861, with a description and a drawing annexed. The text shows that the certificate of addition was "taken" December 21, 1861. The certificate appears to have been made by the minister, February 27, 1862. Next, there is a certificate of an addition by Bouvet, of the date of November 27, 1862, to the patent of November 30, 1861, with
DE FLOREZ V. RAYNOLDS.
437
438
FEDERAL RKPORTER.
Lnited. States re-issued patent. Whether such inventions are fully shown and patented by the English provisional :specification, or by the French original patent alone, or by the latter in connection with the first certificate of addition, we do not now consider or decide, foll' any purpose. We determine on inspection, and in the absence of any affidavit to the contrary on the part of the plaintiffs, that the inventions patented by the French patent, and the two certificates of addition to it, all three taken together, are the same as those patented by the Uniteil. States re-issued patent, to an extent sufficient to warrant the granting of the motion to amend the decree, and to amend the answer, and to open the decree and the proofs, and to discharge the injunction. The French patent and certificates of addition are not now admitted as a patent to ·a third party, to defeat the plaintiffs' patent on the question of novelty, but only on the question of the extent of duration of thepatE\nt. The patent can have no life beyond the time limited by statute. The question of such life, in view of the French patent and certificates of addition, has not been before presented and passed upon. It can now be presented and passed upon on a motion to vacate or limit the duration of the injunction, or on a motion by the plaintiffs for an attachment for violating the tion. The words "perpetual injunction," in the decree, mean only for the life of the patent. That must be determined by the statute and all the facts of the case, and not merely by the terms of the grant in the patent; and an interlocutory d,ecree is always open to amendment and correction. In this view it seems proper that the answer should be amended to set up the French patent and certificates of addition, ,and that the decree shouLl be amended by fixing a date beyond which, for the purposes of the injunction, the patent cannot have life, and by allowing the French patent and certificates of addition to be put in evidence in the proofs, with such relevant proofs respecting the same and their contents as either party may wish to offer. We think that, in view of the subj9ct-matter of the application,; the defendants have not been guilty of laches; that the application does not come too late; and that th ' reasons assigned in excuse for not making an earlier application are flufficient. But this case is no precedent for the case of an applicati III to set up a defence to defeat a patent for want of novelty. The plaintiffs' patent runs, on its face, for 17 years from June 28.
489
1864. The question is as to when it expires. The plaintiffs contend that, under the statute, it tuns according to its tenor, and does not -expire until the end of 17 years from June 28, 1864. It becomes neoessary, thetefore, to examine the statutes on the subjeot. By the act of April 10, 1790, (St. at Large, 109,) a patent was to be granted to the inventor for any term not exceeding 14 years. By act of February 21, 1793, (1 St. at Large, 818,) it was required that' the invention should have been "not known or used before the application," and that the patent was to be granted "for a term not exceeding 14 years," and only to a citizen of the United States as inventor, or his assigns. By the act of April 17, 1800, (2 St. at Large, 87,) the privilege was extended to alien inventors who, at the time of petitioning, had reIMed for two years within the United States, and it was required that the. invention should not have been' known or used before the appli,By the act of July 18, 1832, (4 St. at Large, 577,) the was extended to every alien who, at the time of petitioning, should be resident in the United States and should have declared l;lls intention, according to law, to become a citizen thereof. These prior, acts were all of them repealed by section 21 of the act of July 4, 18a6, (5 St. at Large, 125.) By that act (section 5) patents were to be granted "for a term not exceeding 14 years." Any inventor could obtain a patent, whether an alien or citizen. It was required that the invention should not, at the time of his application for a patent f be in public use or on sale, with his consent or allowance, as the inventor. The commissioner could not grant the patent if it appeared, to him (section 7) that, the invention"Had been invented or discovered by any other person in this countrypri(l)r to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale with the applicant's consent or allowance prior to the application."
It was further provided as follows, (section 8:) , .. Nothing in this act contained shall beconstrued,to deprive an original and true inventor of the right to a patent for his invention, by reason of his having previously taken out letters patent therefor in a foreign country, and the same having been published, at any time within six months next preceding the filing of his specification and drawings. And whenever the applicant shall request it the patent shall take date from the time of the filing of the specification .and drawing; not, however, exceeding· six· months prior to the actual issuing of the patent:'
440
The effect of this legislation WAS to allow an inventor to take out patent in a foreign country for his invention, and subsequently to obtain a patent for it here, provided he filed his specification and drawings on his application here within six months after the taking out of his foreign patent. By section 6 of the act of March 3, 1839, (5 St. at Large, 354,) it was provided as follows: .. No person shall be debarred from receiving a patent for any invention or discovery, as provided in the act approved on the fourth day of July, 1836, to which thisis additional, by reason of the same having been Patented ina foreign country ll10rethan six months prior to his application: provided, that the same shall not have been introduced into public and coDim(m use in tbll" United States prior to the application for such patent: and provided, also, that in all such cases every such patent slwll be limited to the tene of 14 years from the date or pUblication of such foreign letters pataI1t." The effect of this provision was to allow an inventor to take out a, patent here for an invention which he had previously patented in a foreign country, no matter how long previously, but the duration of the patent granted here was limited to the term of 14: years from the' date or publication of such foreign patent. Then came the act of March 2, 1861, (12 St. at Large, 246,) the sixteenth sebtion of which provided as follows: "All patents hereafter granted shall remain in force for the term of 17 years from the date of issue: and all extensions of such patents is hereby prohibited." Section 17 of the same act repealed all acts and parts of acts theretofore passed which were inconsistent with the provisions of that act. Under this state of legislation the original patent, and the re-issued patent in this case, were granted. The view urged for the plaintiffs is that by section 16 of the act :>f 1861 all patents thereafter granted were to remain in force for 17 years from the date of issue; that the provision of section 6 of the act of 1839 was inconsistent with this new provision, and was therefore repealed; and that, consequently, the plaintiffs' patent does not expire until June 28, 1881. By section 22 of the act of July 8,1870, (16 St. at Large, 201,) now Statutes, every patent is to be granted section 4884 of the for the term of 17 years. It cannot be antedated. By section 25 of the same act, now section 4887 of the Revised Statutes, it is provided as· follows: " No person shaH be debarred from receiving a patent for his invention or discovery, nor shaH any patent be declared invalid, by reason of its been first patented, or caused to be patented, in a foreign country; provided
4:4:1
the same shall not have been introduced into public use in the United States for more than two years prior to the application, and that the patent shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than 17 years."
These provIsions of the act of 1870 apply only to patents granted after that act was passed, and do not apply to this case. Moreover, section 111 of that act, in repealing the acts of 1836, 1837, 1839, and 1861, provides that such repeal shall not "affect, impair, or take away any right existing under any of said laws." It is quite apparent that the idea running through section 16 of the act of 1861 is that no patent thereafter granted should be extended, but that, instead thereof, their original terms of duration should be 17 years instead of 14 years, with a privilege of extension for seven years more, which had been the prior law. The laQguage is "that all patents hereafter granted shall remain in force for the term of 17 years from the date of issue;" not that they shall by their terms, and on their face, be granted for 17 years from .a. date, but that they shall "remain in force" for the term specified. It was not improper, under this provision, to grant them for 17 years from a date, as came to be the practice. But the test is that, whatever be the ,term on their face, they shall re main in force for the term of 17 years from the date of issue. What is "the date of issue?" Under section 8 of the act of 1836, in force when the act of 1861 was passed, and when the patents in this case were issued, the patent could "take date" from a date earlier, though not exceeding six months earlier, than the "actual issuing of the patent." The actual date of issuing was one thing, one date. The date from which the patent took date, or its term began to run, was another thing, another date. The latter date may very properly be called "the date of issue." Such latter date need not, necessarily, be a date expressed on the face of the patent. Under section 6 of the act of 1839, such latter date is "the date or publication" of the foreign patent. Looking at the state of legislation before 1861, and at the evident scope of section 16 of the act of 1861, as a.imed at extensions of patents, it would be reasonable to say that "the date or publication" of the foreign patent spoken of in section 6 of the act of 1839 might be regarded, in reference to patents issued under such section 6, (as the one in this case was,) as "the date of issue" intended by section 16 of the act of lSu1,-the date from which, under such
FEDERAL
circumstances, the United States patent is to take its departure. And that,as before in practice, United States patents were granted for 14 years, and patents for inventions previously patented abroad to the same Inventor were before limited to H years from the .date or publication "of the foreign patent," so now, under the new systern introduced. by the act of 1861,Bucha patent (still to be granted, otherwise, in accordance with the provisions of the act of 1836 and 1839) was to remain in force 'for'17 years from "the date or publi" of the foreign patent, while the United States patents were to remain in force for 17 years, instead of 14 years, froni their "date of iSBue;"the'privilege of having them "take date" from a date not exceeding six months prior to the actual issue, as the "date of issue," under sectionS of 'the act of '1836, being still preserved, and such patents expiring 17 years from Buch "date of issue," and not 17 years from the actual issuing. There is nothing in these views that is, inconsistent with or does violence to the language of section 16 of the act of 1861,andthey are in harmony with the course of. legislation. Oontrary views would determine that there' was, by section 16 of the act of 1861, a sudden, unexpressed, and only impiied change of the policy of section 6 of the act of 1839, then in force for 22 years; such policy making the terms of patents, like'those in the present case, take date from the date or publication of the foreign patent, and ron from that time for the same time other United States patents ran, from their time of beginning to run. And such contrary views would establish an enlargement of term, by the act of 1861, in favor of an invention previously patented abroad; such enlargement remaining in force till 1870, and then curtailed iIl.1870 so as to be more narrow than under the act of 1839, and to make the United States patent expire at the same time with the foreign patent having the shortest term. No argument can be drawn in favor of the plaintiffs' view, from the fact that, in section 16 of the act of 1861, the expression is, "all patents hereafter granted." Literally, such expression covers future patents granted as re-issues. By section 13 of the act of 1836, (5 St. at Large, 122,) which continued in force after the act of 1861 went ointo force, a re-issue is authorized, and the re-issued patent is ther6 called "a new patent," and is authorized to be issued only for the residue of the period then unexpired, for which the original patent was granted. Yet it never was or could be supposed that under section 16 of the act of 18tH a re·issued patent was tv be granted for 1 ;
DE FLOREZ; V. RAYNOLDS.
U3
years from the date of the actual issuing of such re-issued patent, or for any other term than the residue of the 17 years granted by the original patent. The expression, "date of issue," as before defined, controls re-issues under said section 6, and the re-issue of an originai 17 years' patent is to run for 17 years from the date when the originai term of 17 years began to run, which date is to be considered "the date of issue," under section 16, for the purpose of a re-issue. So, again, "all patents" literally includes design patents granted under section 11 of the act of 1861. Yet it never was or could be supposed that section 16, though later in place in the act than section 11, varied' the terms defined in section 11 for the duration of design patents, namely, three and one-half years, seven years, or fourteen yeats j or that the provision in said section 16 as to extension applied to "all patents," when section 11 had authorized the extension of design patents for seven years. We are not referred to any judicial decis'ion, where the question now considered was directly involved, which holds to the contrary of the construction we thus give to section 16 of the act of 1861. In Weston v. White, 13 Blatchf. 364, the United States patent was granted August 6, 1867. A prior English patent for the same invention had been granted to the patentee and had been published, October 22, 1859. The question arose in May, 1876, whether the United States patent had expired October 22, 1873, at the expiration of 14 years from October 22, 1859, or whether, under section 16 of the act of 1861, it remained in force in May, 1876. If it should expire October 22, 1876, (being 17 years from October 22, 1859,) or if it should remain in force till August 6, 1884, (being 17 years from August 6, 1867,) it remained equally in force, in either case, in May, 1876. It was necessary, in May, 1876, only for the court to decide that the patent had not, under section 6 of the act of 1839, run out in 14 years from October 22, 1859, and the question whether it would run out October 22, 1876, or not till August 6, 1884, was not directly involved. .Nor does it seem to have been argued or considered, except as may be inferred from the fact that the court says teat the patent would not expire until October 22, 1876, and further says that the effect of the sixteenth and seventeenth sections of the act of 1861 was that patents issued after the passage of the act of 1861, and falling within the proviso of section 6 of the act of 1839, would run for 17 years from the date or publication of the foreign patent. The case was one in the circuit court of the Un'ited States for the district of Connecticut, before Judge Shipman. In
444
REPORTER.
Anilin v. Hamilton Ma,nuf'g Co. 13 O. G. 273, before Judge Shepley, in February, 1878, in the circuit court of the United States for the district of Massachusetts, the decis,ion was that section 25 of the act of July, 1870, now section 4887 of the Revised Statutes, did not apply to a re-issue granted by the United States in April, 1871, of a patent originally granted by the United States in October, 1869, and that, therefore, the re-issue did not expire in December, 1871, when the prior foreign patent, taken in June, 1869, expired. Nothing was said as to whether it would expire in June, 1883, or in June, 1886, or in Octobez:, 1886, or in April, 1888. In Goff v.. Stafford 14 O. G. 748, before Mr.·Justice Cliffol'd and Judge Knowles, in October, 1878, in the circuit court of the United States for the district of Rhode Island, the United States patent was granted October 3, 1865, for 17 Yfars from that day. An English patent· had been previously granted to the same patentee, for the same invention. The English patent was dated June 13, 1863, and was for 14 years; it was sealed Dec,ember 1863, and the complete specification was filed Decemberl2, The question arose as to whether the United States patent had It had expired December 12, 1877, if it remained in force for only 14 years from December 12, 1863. If it remained in force fo1' 17 years from December 12, 1863, 01' for 17 years from October 3, 1<s65, it was equally in force in October, 1878, for the purposes of the injunction, which the court granted. The only question raised, in pleading or argument, seems to have been as to whether the patent had expired. When in the future it would expire, was not directly involved. The contention of the defendant in the case s.eems, to have been that, because of the act of 1870, the United States patent had expired when the foreign patent expired, namely, June 13, 1877. The court held that the act of 1870 did not apply to the case, because the patent was granted before that act was passed. But Mr. Justice Clifford, in the decision, went on to say that the patent would remain in force for 17 years "from the time it was granted," because it was granted under the act of 1861. He seems to have meant for 17 years from October 3, 1865. We cannot regard the case, in that respect, as a decision on a point necessarily involved. With the highest regard for all the judicial views of so eminent a judge as Mr. Justice Clifford, particularly as to questions arising under the law of patents, our examination of the question directly involved in the present case has led us to different views, and to the belief that such question was not argued
445
before, or fuEy considered by, the court in Rhode Island, because not directly involved in the case. The views announced in this decision, which are concurred in by both of the judges, lead to the conclusion that the motion of the defendants must be granted, so as to direct that the decree be amended by inserting a finding that the plaintiffs' re-issued patent is valid, for the purposes of the injunction granted, only for the term of 17 years from November 27, 1862, without holding whether, for the purposes of the accounting ordered, it is valid for as a term as that, {and that the defendants be permitted to amend their answer by setting up said French patent and the two' certificates of addition, and that said decree and the proofs be opened, in order to allow them to introduce the same in evidence,and to allow either party to introduce any relevant testimony in respect to the same and their contents, and that the provision for the injunction and the injunction be now vacated and discharged. We fix the date of November 27, 1862, and not the date of Febru.ary 20, because we regard it as the clear intention of the provisions of law: limiting the duration of a United States patent, patenting an invention previously patented abroad to the same inyentor, to give to the patentee a specified term froirl{the da.te at which his foreign patent had effect as a foreign patent in his favor. In this case such date was November 27, 1862, and not February 20,1863. This view is not necessarily applicable to a case where a foreign patto one inventor is set up to defeat a United States' patent to a different inventor. In such case the manifest intention of the law is that the foreign patent shall apply only as of a date when the invention was published or was accessible to the public, and not as of an earlier date, from which the inventor may have enjoyed the benefit of the foreign patent as a patent. The language of section 16 of the act of 1861, in saying that the 17 years is to from "the date of issue," is a marked departure from the expression, "date or publication" of the foreign patent, in section 6 of the act of 1839; and in reading the two sections together, full effect must be given to the new expression.
446
UNION METALLIC CARTRIDGE CO. V. UNITED STATES CARTRIDGE CO.
(Circuit Court, D. Massachusetts.
July 2,1881.)
1.
DAMAGES-PROFITS ACCRUIlilG BETWEEN INTERLOCUTORY AND FINAL DECREE.
:Motion to recommit cause to master for statement of profits, to date of final decree, on machines enjoined subsequent to interlocutor)' decree, denied.
In Equity. . Browne, Holmes cf; Browne. and Wetmore, Jenner J; Thompson, for complainant. B. F. Butler, for defendants. LOWELL, C. J. After a final decree has been ordered, and after an appeal has been claimed, the complainants move to recommit the case to the master for a further. statement of profits, to bring the account down to the time of the flnal injunctioIl and decree. The master's account is made up to April 23, 18'7'7, and there are reasons of some validity for the omission of the complainants to move in the matter sooner. Some of the machines which the defendant has been using since April, 1877, being those concerning which the account is asked, were excepted by Shepley fiom the operation of the interlocutory injunction, and 'are' now enjoined by me upon evidence produced since the first decree was made. As a matter of convenience and economy it is often desirable to have the account taken as late as possible, to save further litigatiou. In this case there are many litigatetJ. questions upon which the supreme court must decide, and in my opinion the preponderance of convenience is against opening the case at this time, if I have power to open it, because such a course would, in all probability, postpone the appeal for a year, and there has already been more than enough delay. . The decree may be so drawn as to show that the decree is for prof. its to April 23, 1877, and that it is to be without prejudice to any claim for profits and damages for later infringement, though I suppose that would be the necessary intendment. Petition to recommit denied.