parts of the frame being so painted as to represent the outstretched wings of the eagle, the legs and claws of the eagle coming out below, and there being on its breast a shield with stars and stripes. Mechanically, this structure contains all that there is in claims 1 and 2 of the plaintiff's reissue, although it contains no idea of a horse. But, whether the side frame be in the form of a horse 01' of an eagle, or of another bird or animal, is a mete matter of design, and has nothing to do with any mechanical element or combination found in either of those. claims. It is shown that Brown made half a dozen structures like No.5, and sold ana before Orandall's invention; that he also made half a dozen others, like No.5, before Crandall's invention, except that they had representations of swans instead of eagles; and that the eagleawere some ofithem shipped and some put ill the show-room; and the swans were put'-in the show-room. The evidence is also satisfactory that the structure, like No.5, had a hinged. toybox in front of the seat, serving to hold the child in place and forminga receptacle for playthings. It aould' be turned over to let the child out, and did not differ from that in ,the plaintiff's reissue. Tibbals does not remember but it is sufficiently proved by Brown, Cowry, and Allen. Claims:3 and 5 are, therefore, antici. pated by the structures like No.5. l' deem it unnecessary to consider any of the otber structures, or any of the prior patents set up in defence, as, on those above considered, the bill must be dismissed, with costs.
NEW AMERICAN FILE Co. v. NICHOLSON FILE Co.
(Uircuit Court, D. Rhode I8land.
PATENT No; 29,236-FILE-CUTTING MACHINE-LwrEATION OF FOREIGN UPON UNITED STATES PATENTS-ExTENSION - PRIVATE ACT EXTENDING ORIGINAL GRANT-DEMURRER TO BILL.
Etieme Bernot, the inventor of a machine for cutting files, patented his invention in France, August 31,1854, and in England, March 27,1855. On July 24, l&lO,Un1ted States letters patent .No, 29,236 were issued to him for 14 years from that date. Under the statutes of and 1839, governing this issue, such a patent would have expired in 14 years from the date of the French patent, i. e., August 31, 1868; but in July, 1862, a private act of congress was passed, enacting that the grant should be valid for 14 years from its date. On .July 23, 1874, before its expiration, the commissioner of patents extended the patent for seven years from July 24, 1874. A demurrer to the bill, denying the right ot the commissioner to extend the patent, overt'uled.
NEW AMERICAN FILE CO.
NICHOLSON FILE CO.
2. SECTION 15, ACT OF 1836, CWSTRUED-ExTENSION. The act of 1836, providing that extensions of letters patent might be granted to any patentee, subject to certain conditions, held, Dot to discriminate against those which, by the act of 1839, providing for the granting of patents for inven-
tions previously patented abroad, are limited to 14 years from the date of such foreign patent.
PREVIOUS FOREIGN PATENTS-LIMITATION OF, UPON UNITED STATES PATENTS -EARLIER FOREIGN PATENT-SUBSEQUENT FOREIGN PATENT.
The act of 1839 requirinj:\' the commissioner to limit a preViously patented abroad, not to the shortest term of any suchforeigtf patent,'but to 14 years from the date of the earliest of such patents, the existence of. any subsequent foreign patent is immaterial; therefore, the private act of congress passed July, 1864, enacting that the grant of the 'United States patent should be valid for 14 years from its date, rather than from the date-of the French patent. cured . the only defect in the grant th8.t existed.
In Equity. Demurrer. Wm.' M. Dougw'a and Ohauncey Smith, for complainant. for defendant. . Benj. F. Before LOWELL and COLT, JJ. LOWELL, C. J. The facts set out in the bill and admittedhy the demurrer are as follows:
Etieme Bernot, of Paris, France, was the inventor of a new and useful machine for cutting files,and obtained letters patent therefor in ;France, August 31, 1854, and in Great Britain, :March 27, 1855. On the third day of July, 1860, he applied for letters patent of the United States. They were granted him July 24, 1860, for 14 years from that gay. He assigned this American patent to George Somerville Norris, of llaltin:lOre. In July, 1862, a private act of congress was· passed (12 St. 909) reciting the grant of' the American patent, and enacting that it should be a valid grant for the full term of 14 years from its date,notwithstanding the fact that it ought to have been granted only for tbe term of 14 years from the date of the French patent. The second section prOVides that the title of Norris, the assignee, should be good and valid to vest in him the" executiv:e right under the 'said patent for,the full period of the term of 14 years from the date of said patent, in like manner and to the same extent as if the said when originally issued, had been validly granted for 14 years from the date thereof." Bernot died ill 1873, and his administrator, before the twenty-third day of July, 1874, presented his petition to the commissioner of patents for an extension of said letters patent, and the commissioner did extend them, accordingly, for the term of seven years from July 24,1874. They have been dUly assigned to the plaintiff corporation, and the defendants have infringed upon the rights thereby granted.
The demurrer raises the question whether the commissioner had power to extend this patent? The statute of 1886, § 15, (5 St. 124,) gave to every patentee the right to apply for an extension, and it was to be given him if he satisfied the official persons therein mentioned v.8,no.l1.,-52
of certain facts touching his remuneration, etc., provided that :nO extension of a patentshould be granted after the expiration of the term for which it was originally limited. This was the law until the act of March 2, 186,1, by .whieh, the policy was 'adopted of granting patents for 17 years, and not extending them under any circumsta.nces; to grants after March 2, 1861, (12 St: 249.) but this applied When the statutes con'cerning pat(lnts were revised and consolidated in 1870, section 63 of the statute reserved the right to apply for an extension to all inventors whose patents were granted before March 2,1861, (16 St. 208;) and, this is repeated in Rev. St. §§ 4924-,.4928. The language of all these statutes is broa<l, and makes no ex.ception of persons who have taken out patents in foreign oountries, and it is admitted by the defendants that no disorimination was made at the patent-offioe down to 1870, ,but that any' inventor might have an extensIOn who could prove the necei)sary facts, without regard" to the question whether he held a foreign patent. Many ,sucn extended and no objection appears to have been patents havt;j been taken to the power of the office' to extend thl;lm. By the law in 1836, and before and since,a patent can be granted; generally speaking, o1\ly to' ongin,lOtl and. first inventor, and invention must not haye elflewhere, or described in a printed publication. The statute of 1836, § 8, (5 St. 121;) provided that nothing therein contained should deprive an original and true inventor of a right to ,a patent by reason of his having taken out lettel's'patentthel'efor ina foreign country, and the same having six months. next preceding the been published at· any ,time iiling of his specificatio1\ an.d drawingl:\in this oountty. By the act of 1839, § 6, (5 St. 354,) the lapse 'M Bix months after the invention had been patented abroad was declared not to be fatal, provided the invention bad not been introduce,d;'into public and commontise in the Unit'ed States, and pr6vide!l')hat all such patents should limited to the term, of, 14 years froUl' the date or publication of the foreign lettElrs patent. We have no more ,doubt than counsel have that the general ahd broad provision for extending patents made no discrimination against those which were' limited' toa years from the dat'e bfa foreign patent. Congress probably took for granted that all foreign patents were limited to 14 years'; and they intended that the American patent; but in respect to extenpatent should expire with sions they failed to legislf.1,te. -Oertainly there would be no justice in providing that an inventor, who had been diligent enotlgh' to obtain a
· ·. ,,). I · ' ,
foreign patent, should lose this right merely because the invention was free in foreign countries, when all inventions are free there, if the inventors do not choose, to patent them. They contented themselves with declaring that if an inventor had a monopoly abroad, the originjl,l term here should coincide with what they assumed to be the term there. In the Revision of 1870, section 25, it is enacted that no person shall be debarred from receiving a patent for his invention, nor shall been first Plitt. any patent be ,declared invalid by reai;lon of its ented in a foreign counb:.Y, it shall not have been introduced into public use in the UI,lited States for more than two years priort(} the application, and ,t1,lat the 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 he in force for more than 17 years. 16 St. 201. We have alreaqy Iilaid that this, same statute reserved toa.ll inventors, whose patents had been before March 2, 1861, the right to apply for an extension. See sections 63-67. The able and learned commisioner of patents, Mr. Fisher, who was in office for '" shor.t time ,after the statute was passed, held that, notwithstanding the broad language of sections; 63 to 67, and though !'laction 25 was yet the law ,of 1870hadintroduced a not, in his opinion, this class of patents free here when they new policy to make became so abroad; and therefore, in the exercise of his discretion, contempo,he would not extend a patent which would expire Re Mushet, Com. Dec. 1870, p. raneously with 106; Be Ward, ld. 126;' R" Id. 130. The defendants insist that the commissioner was not only wise in this use of his discretion, if he ,had any" but that hehad, none to extend such a patentltfter 1870. We cannot admit the cogency of this reasoning. of There can be no reasonable doubt that congress, in the 1870, intended to leave patents granted before MaJ;oh 2, exactly where they were. They used apt language for thispnrpose, and if the commissioner had power to extend any such patent before 1870, he had exactly the same afterwards, for it is entirely clear that sec· tion 25 is not retroactive. The intent of congress is fully carried. out; since March 2, 18tl1, there ;be no extenbecause, for all sion, and therefO)l'e, if they expire at the end of the13arliest foreign patent, that is the end of· them. The fallacy lies in applying; to old patents a which is, in terms, confined to llew ,qnes. rrhepatits inthe;sarp.eyeal1, aner,Mf· lla.d.
retired from office, and the reasoning of the later opinion appears to us sound. Re Apperly, Com. Dec. 1870, p. 163. Even if the office should be thought to have exercised its discretion improvidently in this case, Wf!, have no power to reverse the decision. Bernot's patent was granted in 1860, while the statute of 183&, g 6, (5 St. 354,) was in operation; it should, therefore, have been lim. ited to 14 years from August 31, 1854, the date of the French pat. ent. This was not done. If the private act of congress had not been passed, the patent would have expired August 31, 1868, because the law considered that to be done which swuld have been done, and read the statute into the patent. O'Reilly v. Morse, 15 How. 62. In that event, an extension could 'have been granted before the ehd of August, 1868,but not a.fterwards.' Be Gessner, Com. Dec. 1871,.p. 48. This decision is cited in the defendant's supplemental brief, as if it coincided with Mr. Fisher's ruling against extending a patent which is about to expire abroad. This is a misreading. The patent had expired two years before theappliC:ation, by the expiration of the foreign patent, under the decision in· Morse v. O'Reilly, which is cited ' by the commissioner as his authority in the premises. Again, it contended that the priva:teact of congress merely cured the defect arising out oftha grant of the French patent, omitting, 'by inadvertence or design, all mention oftbeEnglish patent, arid there. fore the American patent expired in 1869. ,If we were dealing with a patent issued since 1870, it would be true that if, by any means, the French grant, and that only, were removed from the case, the patent would yet expire with the English! grant; but, as we have said; the law of 1839 required the commissioner to limit Bernat's patent, not to the shortest term of any foreign patent, which might be 3 or 5 or 10 years, nor to any term of foreign patents at all, but to 14 years from the date of the foreign patent, and, if there were two, the term should begin to run from the earlier,-in this case, the French patent,-and the existence of the later or English patent was immaterial; and when congress said that Bernot's patent ought to have heen limited to 14 years from the date of the French patent, they stated the case with entire accuracy, and mentioned the only defect that existed. Finally it was argued that the act of congress was a special exer. cise of sovereign power, giving a prolonged term to the Bernot patent; and that, as the act itself does not provide for an extension, there can be none, any more than there could be if the act had authorized 'an entirely new patent, which authority, being granted after the pol.
OALIFORNIA ART:tFICIALBTONlil PAVING 00.
icy of non-extension had been established, in 1861, would carry with it no implied power of renewa.l. But upon this last the grant would have been for a new term of 17 years, and this was for the remainder of a term of 14 years. We think the f.air and obvious construction of the act is that the patent was to be It'good grant for 14 .years from its date, with the right, of course, in the public to dispute its validity for want of patentability in the invention,or want of novelty, and so on, and with the usual right of the patentee to procure an extension, if the circumstances shonld justify the patent-office in granting it, of which the oomrilissioner}wa.s the judge. Demurrer overruled. "
(OirlJuit Oourt, D. Oalifornia. May 7, lSSl,}
LETTERS PATENT-ARTIFICIAL 8'l'ONE PAVEMENTS-INFRINGEMENT.:!! '
The method adopted by the 4efendants in layIlIgartificial stOne pavement was as follows: They first laid down. a section as blocp:.swere wanted, and tamped it down solid. When partially set these'sections were cut into blocks of, proper length with a trowel, the trowel cutting to a greater or less depth, according to the cllaracter of the. material. Into the open joint thus made by the trowelwas flQated Or rubb.ed of the same which the block was composed. Then a top layer of finer a larger portion of cement, was laid on the lower section, pressed Clown, and smoothed over. The trowel was then passed along the top layer, cutting partially or wholly through it, directly over the cutting below. The. joint. thus made ill. the upper layer was then smoothed over, and a joint marker, having a tongue from a sixteenth to an eighth of an inch in depth, was run' over the line of the cuttings, marking off the joints. Artificial stone pavements con. structed in the mode described, as used by the defendants, are infringements of the Schillinger patent.
SOO-INVENTION-TITLE TO UNsPECIFmD BENEFITS.
The patentee is entitled to all the benefits which result from his invention, whether he has specified all th9 benefits in his patents or not. . 3.
The respondents having so constructed theJr pavements as to gain the advantages secured by the SChillinger patent, and by SUbstantially the same means, they are infringers ofthe patent. .
Wheaton & Scrivner, for complainant. Parker, Shafter, and Duprey, for defendants.
by S. C.HoughtOll, Esq.