EDISON ELECTRIGLIGH'r 00. t1. PEBKIN$ ELEoi.'RIC LAHP
EDISON ELECTRIC LIGHT CO.
v. PERKINS ELECTRIC Nos. 655, 656:)
(Circuit Oourt, D. Oonnecticut. May 20, 1890.;
Rev. St. U. S. § 4887, provides that "every patent granted for an invention which has been previously pateDl,ed in a foreign country ehall be so limited as to expire at the same time with the foreign patent." Held, that, where a foreign statute, nnder which a foreign patent has heen in force at the time a United States patent for the same invention was appliea for and issued, and where by such statute the extension of the foreign patent was., in the absence of unfulfilled condi- . tions, a matter entirely of right, at the option of the patentee, on his payment of a required fee, and such fee has been accepted by the foreign government, and the patent extended, the United States patent does. not expire until the expiration of such extension, though the foreign patent, before the extension was granted, had lapsed by non-obsorvance or the happening ofa subsequentcondition prescribed by the statute.
INvENTIONS-DuRATION Oll' .RIGHT.
In Equity. Eugene H. Lewis, for plaintiff. E. D. Robbins and Edmund Wetmore, for SHIPMAN, J. These causes are in equity, .for alleged infringement oC letters patent. The questions now at issue arise upon the defendant's pleas, which the plaintiff has set down for argument. in equity in No. 655 avers that theJetters patent upon which The the suit is based were dated January 27, 1880; that a previous Canadian patent for the same invention was granted for the term of 15 years from its date; that said term has not expired; and that the same is in full force and The plea in that case alleges that the Canadian patent was . granted on November 17,1879; that said Canadian patent was originally granted for the term of five years, with the privilege of extending the same, after the expiration of the said period, upon the payment of a further fee; that it bore upon its face its lil,lbility to be terminated before the expiration of five years by the non-observance of two conditions subsequent, similar to those which are recited in Pohl v. Brewing Co., 10 Sup. Ct.. Rep. fj77; and that said two conditions were not fulfilled. Its actual attempted extension by the Canadian government is not denied. The plea further alleges that during said period of five years the Canadian patent expired by virtue of the expiration of a subsequent Swedish patent for the same invention, !J,nd that the Canadian patent was incapa;. ble, under tlle Jaw ofCanada , of extension beyond said original term of, five years; and that any attempt to extend the same by any officer of the Canadian government was void, and of no efl:ect. It is understood that the Swedish patent was issued after the date of the United States patent, and that the Canadian statute of 1872 in regard to the e;g:tension of pat.., ents by of fees, which is. recited in the Bate Case, is the statute' under which the Canadian patent was issued. In Bate Re.frigerating Co. v. Hammond, 129 S. 151,.9 Sup. Ct. Rep.'; 225; it was held that. . . ,
.. Where the Canadian statute. under whIch the extensions of the Canadian patent was in force when the United States patent was issued, and also when that patent was applied for, and where, by the Canadian statute. the extension of the patent for Canada was a matter entirely of right, at the option of the patentee, on his payment of a required fee, and where the term of the Canadian patent has been continuous and without interruption, the United States patent does not expire before the end of the lifduration of tbe Canadian patent." ' " This decision, confined to the facts which are therein stated, d;oes not control the present case. In Poltl v. Brctcing Co., 10 Sup. Ct. Rep. 5.77, (decided at the Ociober term, 1889, of the supreme court,) it 'fas held that a patent of the United States subject to the limitations prescribed by section 4887,l by reason of a previous German and a prev;ious French patent, did not expire prior to the expiration of the 15 years for which the German patent was issued,although each of said patents had theretofore expired by virtue of the operation of conditions subsequent which, by the law of the respective countries, made said respective foreign patents void. The court says "there is nothing in the statute which admits of the view that the duration of the United States patent is to be limited by anything but the duration of the legal term of the foreign patent in force at the. time of the issuing of the Uuited States patent, or that it is to be limited by any lapsing or forfeiture of any portion of the term of such foreign patent by means of the operation of a condition subsequent according to the foreign statute," and furtherItloi-Ei eonstrues the words in section 4887, "having the shortest term," ttl mean the foreign patent which, at the time the United States patent is granted, has then the shortest term to run, irrespective of the fact that the foreign patent may afterwards lapse or become forfeited by the nonObservance ora condition subsequent prescribed by the foreign statute. The facts in this case are not the same with those in the Pohl Case, because the French and German patents were on their face for the term ot 15 years. It is said in the plea ,that,the Canadian patent was for the term of five years, with the privilege of renewing the same, upon the payment ofa fee, for a further term, and that, previous to the expiration 6[t11e first five years, it had expired by means of the provisions of the Canadian statute, and therefore could not be renewed, and that two of these conditions subsequent were expressed upon the face of the patent. Aided by such light as the decisiorts which I have quoted furnish, I am of opinion that, when the Canadian statute under which the extensions of the Canadian patent were granted, or attempted to be granted, was in force when the United States patent was issued, and when it was applied for, and when, by the Canadian statute, the extension of the patent for Canada was. in the absence of unfulfilled conditions, a matter entirely of right, at the option of the patentee, on his payment of a required fee, and when the 15-years term of the Canadian patent has been, by the affirmative action of the government ill apparently renewing the
Rev. St. U. S. § 4887, provides that "every patent Il'ranted for an invention which has preViously patented in a foreign country shall be 80 limited as to expire at. ll'Wle time with the foreign patent. "
patent, continuous and uninterrupted, the United States patent does not expire before the end of the 15-years duration of the Canadian patent, although the Canadian patent, before the expirationof the first five years, may have lapsed or become forfeited by the non-observance of a condition subsequent, or by the happening of a subsequent condition, prescribei by the statute of Canada. If the Canadian government has in fact accepted the renewal fee, and renewed the patent for a continuous and uninterrupted period of 15 years, as though the subsequent conditions had been complied with. the United States patent has not expired hefore the expiration of said 15 years. I am confirmed in the construction which I have given by the hardship of a construction which should compel the life of United Statespateuts to be determined by the operation of conditions subsequent in prior foreign patents which may secretly affect, or be claimed to affect,. the life of such foreign patents, although . they are apparently, upon their face, in full and have apparently :been uninterruptedly continued in existence by the. government which ,granted; t h e m . , InNo.,656 the dates of the respective patents differ from those in No. 655. The plea in No. 656 sets up, mutatis mutandis, have been heretofore stated, omitting those in regard to the Swedish patent. 1. understand the facts to be substantially those of the PohlGue, . except tha,tin the plea the conditions sUbsequent are alleged to be stated upon the face of the Canadian patent. I do not regard this as a vital difference. The pleas are ollerruled, and the defendant will answedn 30 days.
(p(rcuit Oourt, E.D.· MiSSOUri, E. D. October 80, 1889.)
.L P A':"ENTB .FOR INVENTIONS-PATENTABILITy-UTILITY-PRESUMPTION. . In the abllllnce of satisfactory evidence to tbe contrary, the subject-matter of every patent is presumed to be useful. and patentable. . 2. SA.ME-INFRINGEMENT-ORNA.MENTAL CEILINGS. . Letters patent No. 861,438, granted April 19, 1887, to Mesker & Bro., for an improvement in sheet-metal ceilings, walls, or panels, valid, and infrI.llged !'y ' ceilings made in accordance with letters patent No. 876.1Ill6, granted January 24, 1888, for an improvement in metallicooilings.
In Equity· . This waa a suit for the infringement of letters patent of the United States No. 361,438, granted April 19, 1887, to the firm of Mesker & Bro., for an improvement in sheet-metal ceilings, walls, or panels, by ceiling manufactured and sold by defimdants, made in accordance with the letters patent No. 376,926, granted to Charles Thuener, January 24, 1888. The claim of the patent sued on is as follows: . , . "The combination of the sheets, A, A, A, and the cross-bars, B, are sheet, A, the fold, a 2, and· receiving the edge of the I'djoining sheet,-A,