. (Oircuit Court, E. D.Mi880'!lri, Pl. D. May 25,1889.)
PATENTS FonINvENTIONS-LAPBE OF FOREIGN PATENT.
Letters patent of the united Sta'tes. granted after an English patent for the same invention had lapsed alld become void by reason of non-payment of a stamp duty, held, granted without authority of law.
The commissioner of patents has no authority, under section 4887, Revised Statutes of the United .States, to grant letters patent for an invention pre-. viouslypatented abroad, after the f()reign patent has expired by reason of the failure of the inventor to comply with some requirement of the foreign patent law. Letters patent of the Unted States, issued pursuant to section 4887, only continue in force during the actual existence of the prior foreign patent having the shortest term.
SAME-DURATION OF LETTERS.
A patent for an invention cannot be reissued in such form as to enlarge the original claims, unless there has been a clear mistake inadvertently committed in wording the claims.' ' ,
fl. SAME-COMMISSTONEll'S DECISION..;....REVlEW.
On the .trial of an action for infringement of reissued letters patent, the finding of the commissioner of patents, that the original patent was inoperative by reason of inadvertence, accident,or mistake; may be reviewed to the extent of determining whether what was described and alleged to be a mistake when the reissue w.as applied for was such a mistake as warranted a reissue. 6. REISSUE- V ALJDITY. Where a patent was surrendered and reiss)led for the purpose of invalidating a subseq,uent patent for a similar invention; and one element of a combination claImed in the original letters was omitted in combinations claimed in the reissue, thereby enlarging certain claims; and it appeared that the element so omitted was intentionally included in the combinations as claimed in the original letters, for the purpose of describing a combination that. as a whole, would constitute an operative and useful'machine; and such element was in fact necessary to make the machine operative and useful,-held, that the enlarged claims of the reissue were void (a) because the original claims were not formulated through accident, inadvertence, or mistake; and (b) because the patentee had such full kilOwledge of all the facts, when the original claims were drafted, that his failure to claim the particular combination claimed in the reissue amounted to an abandonment of the same to the public.
In Equity. This was a bill filed to restrain the infringement of letters patent of the United States No. 260,232, issued June 27, 1882, to Henry Huber, assignee of Peters & Donald, as well as to restrain the infringement of reissued letters patent No. 10,826, issued April 19, 1887, to James E. Boyle. Both patents are for improvements in sanitary water-closets. Huber is owner of patent No. 260,232, and sole licensee under reissued letters patent No. 10,826. Rev. St. U. S. § 4887, provides that"No person shall be.debarred from receiving a patent for bis invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patl1nted in a foreign country, unless the Bame has been introducel into public use in the United States for more than two years prior to the application. But every patent granted for an inven-
N. O. NELSON
tion which has been previollsly patented in a foreign country shall be so limited as to expire at the same time with the foreign patent. or. if there be more than one, at the same time with the one bavlngthe shortest term, and in no case shall it be in force more than seventeen years. II Paul Bakewell, for complainants. Taylor &: Pollard and BenjarwinF. Rex, for defendant.
J. This case has been elaborately argued. Following the course that was pursued by counsel in the argument, the first question for consideration is whether letters patent No. 260,232, issued to Henry Huber, as assignee of Peters&: Donald, are valid. The facts in the light of that question must be determined are not dillputed. Peters & Donald are residents of Great .Britain. 'fhey secured a patent in England on Apri17, 1874, for the same invention covered by. ,American letters patent No. 260,232. On April 7, 1881, the English patent, by virtue of English laws, became null and void, on account of the failure of the patentees to pay the- stamp duty of £100 which became due on the patent on that day. On November 29, 1881, they filed an applicatioll. fora patent for the same invention in the United States, and a patent was subsequetly granted to Henry Huber as their assignee on June 27) 1882. Peters & Donald appear to have assigned all their interest in the invention, for a nominal consideration, to J. E. Boyle on the 27th of October, 1881, some six months after the English patent had lapsed and become void, and Boyle in turn assigned hie interest to Huber op. November 26, 1881. Can a patent issued under such circumstances be sustained as a valid grant? The precise question, so far as I am aware, has never been decided in a case arising under the twentyfifth section of the act of July 8, 1870, now section 4887, Rev. St. U. S. In severlil cases, however, where a foreign patent had been issued for a given term expressed on the face of the grant, but with a privilege under the foreign law of being extended for a further period, the question has arisen whether the life of the subsequent American patent was limited by the term expressed on the face of the foreign patent in force when the American patent was issued, or whether the American patent continued during the actual existence of the foreign patent, the same having been or renewed. Reissner v. Sharp, 16 O. G. 355; Rejrigerati'(lg G>. v. GilleU, 13 Fed. Rep. 553; Electrical Co. v. Electric Co., 17. Fed. Rep. 838. .In another class of cases the question has arisen whether the termination of a foreign patent prior to the time specified on the face of the grant. by the failure of the patentee to comply with some requirement of the foreign law, had the effect of terminating a subsequently issued American pateQt for the same invention. Paillard v. Bruno, 29 Fed. Rep. 864; Refrigerating Cb. v. Gillet. 31 Fed. Rep. 809; Electric Protective 00. v. Burglar Alarm 00.,21 Fed. Rep. 458. The decisions of all the circuit courts in the cases above mentioned proceeded consistently upon the theory first outlined by Mr. Justice CLIFFORD, in Hrmry v. TooZ Co., 3 Ban. & A. 501,-a case in which the court was dealillg with ,an American patent granted after an English patent, that
had been extended for four years after its expiratioIl , by order of the crown. The theory thus outlined was, in su};>stance, thli,t every American patent ought to run for a. definite period. that may :be ascertained as Soon as the patent issues, and that congress did not by section 4887 of the Revised Statutes. that patents should be granted for an uncertain p6riod. In accordance with that view it was held, in substance, in Henry v. Tool Co., and in the subsequent decisions, that the life of an American patent subject to the provisions of section 4887 is limited by the term expressed on the face of the prior foreign patent having the shortest term, and that the existence of the domestic patent, when issued, is not affected by any events that subsequently shorten or prolong the life of the foreign patent. Three of the cases above cited were expressly overruled by the recent decision of the United States supreme court in Refrigerating Co. v. Hammond, 129 U. S.151, 9 Sup. Ct. Rep. 225, and in my judgment the decision in that case overturns as well the principle on which the other circuit court decisions were predicated. The supreme court has clearly discarded the doctrine that an American patent must necessarily have a fixed term, which may be definitely ascertained at the time letters patent are granted, by holding (as in the cases cited) that the duration of an American patent is dependent upon circumstances that affect the duration of the foreign monopoly. Thus the court say: "Under section 4887, although '" III III the United States patent may on its face run for seventeen years from its date, it is to be so limited by the courts, as matter to be adjudicated on evidence in pais, as to expire at the same time with the foreign patent." And again: "Under this view the time of the expiration of the foreign patent may be shown by eVidence in pais, either by the record of the foreign patent itself, showing its duration, or·other proper evidence; and it is no more objectionable to show the time of the expiration of the foreign patent, by giving evidence of extensions such as thosfJ in the present case, and thus show the time when by virtue ohuch extensions the United States patent will expire." In accordance with such views the court held that, although an American patent had been granted subsequent to the issuance of a Canadian patent, which on its face purported to be a grant "for the period of five years," yet that the American patent did not expire at the end of the five years solimited, inasmuch as the patentee, in compliance with Canadian law, obtained an extension of the foreign patent for two additional terms of five years each, after the· grant of the American patent. The arguments used in the course of that decision lead logically to the con- '. elusion that United States letters patent issued subject to the provisions of section 4887 remain in force no longer than the foreign patent having the shortest term; that life of the domestic patent is measured by the actual duration of the foreign patent, and may be abridged, as well as lengthened, by circumstances which operate under the foreign law to abridge or lengthen the foreign monopoly. When it is conceded that it is not essential that the life of an Ameri-
RUBER ". N. O. NELSON· MANlJlj"GCO.
can patent shall be absolutely fixed at its inception, as by the term pressed on the face of the foreign grant having the shortest term, but may extend beyond that period in consequence of the extension of the foreign patent by acts in pais, done by the patentee in compliance with the foreign patent law, that is a concession that the duration of the domestic patent is dependent in one respect on the life of the foreign patent; and, if dependent upon it in one respect, it ought to be regarded as dependent upon it in all respects. At all events if acts done by the 'entee in conformity with the foreign law operate to extend the foreign patent beyond the term specified on the face of the original grant, and thereby to prolong the American patent, by parity of reasonin/l; an sion to do acts required by the foreign law, which works an absolute forfeiture of the foreign grant, ought to extinguish the domestic patent. No valid reason can be assigned, I apprehend, why the omission of acts required to be done by the foreign law in order to preserve the life of the foreign patent should have no effect on the duration of an American patent issued under section 4887, so as acts done by the patentee in compliance with the foreign law are allowed to give the American patent.a duration that it would not otherwise have. The whole controversy seems to hinge on the question whether the term of the domestic patent is fixed at its inception by the terms expressed on the face of the shortest foreign patent, or whether the life of the American patent may be to an extent uncertain, and is subject to contingencies affecting the life of the foreign patent. The supreme court of the United States appear to have adopted the latter view. It follows, of course, that if the true construction of section 4887 is that a patent subject to its provisions comes void when the foreign patent other words, if the life of the domestic patent is dependent upon that of the foreign then the commissioner of patents has no authority, under section 4887 , to issue American letters after the foreign patent· has ceased or determined. It would hardly be contended I suppose that the commissioner would be authorized to grant a monopoly of an invention after an event has occurred that in law determines the duration of the monopoly, and which event,if it had occurred after the grant was made, instead of before, would at once have rendered the same void. Commissioner FISHER in the Case 0] Musket, 2 Com. Dec. 106, shortly after the passage of the act of July 8, 1870, held that section 4887 was intended to allow foreign inventors to secure a monopoly of their inventions in this country after they had been patented abroad, but only for so long a period as the foreign monopoly continued; and that to a casual reader would seem to be the obvious purpose of the statute. The last clause of the section, "but. 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," etc., as I think, that there is a foreign patent for the invention in force when the American patent issues, the actual existence of which foreign patent is to determine the duration of the domestic patent. If there is no such foreign patent in force when the American patent but if a foreign patent v.38F.no.l0-53