figuring the plug, therefore one could not be exchanged for another, and it could be removed by the consumer when that part of the plug should be reached, and which would not affect the quality of th4 tobacco at all. This could not be wrought out from the means at hand before without thought and contrivance enough to warrant the decision of the patent-office that they constituted invention. No one had done this before him. Therefore, as the case now stands, the patent must be adjudged to be valid. With the reissue valid there is no question about infringement. Let there be a decree for an injunction and an account according to the prayer of the bill, with costs.
November 15, 1881.)
LETTERS PATENT-EXTENDED TERM-STATUTE OF LIMITATION.
Where the statute of limitation provides that all actions shall be brought during the term for which the letters patent shall be granted or extended, or within six years after the expiration thereof, the lapse of six yeal's after the expiration of the original term is a good defence to an action for the recovery of damages for tIle infringement of a patent-right during such term, though the term has been extended subsequently, and the statute has not yet run as to such extended term. The original term and the extended term are two distinct terms.
BARR, D. J. This is an action on the case to recover damages for an alleged infringement of a patent-right. The patent is for an "improvement in railroad car-brakes." This patent was issued July 6, 1852, and was reissued and extended July 6,1866, for the term of seven years. The plaintiff alleges that the defendant used this patent car-brake from July 6, 1864, until the expiration of the extended term-July 6, 1873. The defendant pleads the lapse of five years, and relies upon the Kentucky statute of limitation in bar of the action. The plaintiff demurred to this plea, and the defendant has amended his plea by pleading the lapse of six years after the expiration of the original term of the patent, and relying upon the statute of limitation passed by congress and approved July 8, 1870. The parties have agreed to the facts, and the only question for the court to decide is the applicability of the statute of limitation. The Kentucky statute of limitation does not apply to this case; because, if for no other reason, an act of congress has prescribed the limita-
BAYLES V. LOUISVILLE CITY R. CO.
tion in such actions. The Revised Statutes, § 721, using the language of the act of 1789, provides that "the laws of the several states, exoept where the oonstitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at common law in the courts of the United States, in cases where they apply." The state law is, therefore, not the rule of decision where an act of congress has provided the rule. Whether, if ther.e were no national statute of limitation applicable to the ease, the state statute would be a bar, does not arise and is not decided. The fifty-fifth seotion of the act of congress, approved July 8, 1870, provides that "all actions shall be brought during the term for which the letters patent shall be granted or extended, or within six years after the expiration thereof." This was omitted from the Revised Statutes, and is therefore re. pealed; but section 5599 provides that "all acts of limitation · · · embraced in said revision and covered by said repeal shall not be affected thereby, but all suits · · · for causes arising, or acts done or committed, prior to said repeal may be commenced and prosecuted within the same time as if said repeal had not been made." This suit was brought June 18, 1879, within the six years after the expiration of the extended term, and plaintiff's counsel insist that when the term was extended the extension had the same effect in law as though the patent had been originally granted for 21 years, and the plaintiff may recover for the infringement of the patent during the original term as well as the extended term. He reads the act as if the words had been, "all actions shall be brought during the term of the monopoly, or within six years after the expiration thereof." If, however, the statute had been intended to mean that there is in law but one term-whether that term should be 14 or 21 years-it would have been only necessary to omit the words "or extended," and then the act would have read, "all actions shall be brought during the term for which the letters patent shall be granted, or within six years after the expiration thereof." The subsequent section, which provided that when an extension was granted that "thereupon the said patent shall have the same effect in law as though it had been originally granted for 21 years," would, perhaps, have applied, and made an extended term a part of the original term, and might, under this theory, been construed as
one term in the meaning of the act. If, however, we are to give ::Lny effect to the words "or extended," in this enactment, it must be that the term for which the letters patent shall be granted originally, and the term for which the letters patent is extended, are two distinct terms. Instead of construing this clause as if it read "all actions shall be brought during the term of the monopoly, or within six years after the expiration thereof," it should be construed as if it read, "all actions shall be brought during the term for which letters patent shall be granted, or during .the term for which letters patent shall be extended, or within six years after the expiration thereof;" "thereof" referring to the original orex,tended term, as the case may be.' It is not true that letters patent run for only one term when the patent is extended. In such a case there are two terms,-the nal term and the extended term,-and, though the law provides that when a patent is extended it shall have the same effec.t in law as tliough it had been originally granted for 21 years, that does not change this fact, nor dO'es it change, the fact that the original term was for 14 years, and not 21 yeats. The act does not provide that the two terms shall be considered as one term in. law, but simply effect in provides that the extension of a patent shall have the law as though it had bMn originally granted for 21 years. I think congress has, in the clause under consideration, clearly recognized that an extended term and the original term of letters patent are distinct terms. An extended term of letters patent can have the same effect in law as though it had been granted for 21 years, in the granting of a monopoly, without extending the time of .the bar of the statute of limitation on existing causes of action. The patent right is quite distinct from the causes of action which a patentee may have for its infringement, and because a patent right may be extended it does not follow that the time within which such causes of action should be brought should also be extended. If we are not correct in our construction of this act, then congress has given the commissioner of patents the power to extend, in his discretion, the time in which the statute of limitation bars existing causes of action. This would be an extraordinary delegation of authority, and one which the courts should hesitate to recognize unless the legislative will was clearly expressed. There is some conflict in the decision as to the proper construction of this clause of the act of 1870, but the weight of authority sustains
BAYLES V. LOUISVILLE OITY R. 00.
the construction now given. See Sayles v. L. S. rf: M. S. R: ('0." Justice Harlan, MS. op.;'" Sayles v. D. x S. O. R. 00., Judges Dillon & Love, MS. op. contra;t Judge Hughes, 8 Hughes, 172. I therefore consider that the six yeMs' limitation, as pleaded, is a bar to plaintiff's recovery of damages for the infringement of the original term of his patent, and that he can only recover damages for his extended term-from July, 1866, to July, 1873. .Let judgment go for $393, which is the sum agreed upon by the parties if the plea of the statute was sustained as to the original term of the patent.
SAME V. CHICAGO
& MICHIGAN SOUTHERN Ry. Co, & NORTHWESTERN B,y. C().
SAME V. CHICAGO, BURLINGTON & QUINCY RY. Co.
(Cz"reuit COU1't, N, D.IUirwis. October 'ferm,
, In Chancery.
EXTRACT OF DECISION OF JUSTICE HARLAN ON DEMURRER TO BILL.
The third ground of demurrer is a question of limitation under the act of 1870. The act of 1870 contains this short provision: "All actions shall be brought during the term for which the letters patent shall be granted or extended, or within six years,after the expiration thereof." I am not referred by counsel on either side to any adjudication bearing directly upon the question. It is a question within a very small and narrow compass, and must be determined by a fair and reasonable construction of the language. I have reached a conclusion entirely satisfactory to my own mind, and I think that statute means that where the party sues for any infringement under the original term, he must bring his action within six years after the expiration of that term; and when he sues for anything that has occurred under the extended term, he must sue within six years after the expiration of that extension; and that the statute does not mean, as contended for by the learned counsel for the complainant, that the party has the right to sue for an infringement, either under the original or extended term, within six years after the expiration of the extended term, and thus bring the suit within 27 years. I do not think that was the purpose of congress, and I therefore sustain the grounds of demurrer as to all causes of action. Mr. Walker; interrupting the court in the delivery of its opinion, said : "In the case of Sloan v. Watterson the supreme court of the United States, in an opinion delivered by Mr. Justice Bradley, held that statutes of limita tion began to run as to rights of action that accrued prior to their passage, not at the time they accrued, but at the time the act was passed; so that, inasmuch as this statute of limitations was eI)acted in July, 1870, the case of Sloan v. Watterson will cause your honor to conclude, I think, that we had six years from the time it was enacted in which to bring our suits, and inasmuch as we brought our suits within six years from the time it was enacted, these suits, even as far as they refer to the rights of action under the first term, are not
barred. I did not make that point in the argument, for the simple reason that I desired to secure from your honor an expression on the subject for the benefit of the profession at large." The Court-" Counsel has my opinion upon the showing as it was made, and. if there is any other view to be presented, I will hear him upon a petition for rehearing; but at present I should adhere to that opinion." Now, one of the grounds of demurrer also is that for anytime prior to July 7, 1865, the plaintiffs are barred by reason or by force of the statute of Illinois of February 4, 1849. I confess that as I thought about that question I could not understand logically why the provision of the state statute did not apply if there were no statute of the United States; but the weight of authority'is the other way, and I think my business here holding this court is to be governed by the weight of authority. Purely upon the weight of authority, therefore, I overrule that View, and hold that the' state statute of limitations has no application.
V. D'L'13UQUE & SIOUX CITY R. Co. , (C'h'cuit Court, D. Iowa. In Chancery.)
PER CURIAM, (DILLON AND LOVE, .TJ., confYUrring.) We have considered the points made in argument upon the demurrer to the bill. We have no time to elaborate our views. It must suffice to state our conclusions. We do this at this time so that the cause may proceed. 'rhese conclusions are not on all, the points so fixed as to preclude further argument and consideration on the final hearing. The views which we now entertain of the questions made are as follows.: * * * Fourth. As to the statute of limitations. WEl are of opinion that the state statute of limitation has no application to suits in respect of the rights granted by letters patent for inventions. This bill was brclUght in February, 1877. The original term expired July 6,1866; the extended term, July 6, 1873,_ ,The act of congress of 1870, section 55, prescribed that "all actions shall be brought during the term for which the letters patent shall be granted or extended, or six years after the expiration thereof." 'fhis limitation continued in force until the first day of December, 1873, when the H.evised 'Statutes took effect, repealing it. Since the original and extended term of a patent may be and often is held by different persons, and since the language of the limitation statute of 1870 is ambiguous,-in view of the injustice to defendants of requiring them to account for profits made any time since the date of the original patent in 1852, a period of 25 years, where the proofs may be lost,-we are of opinion that their right is barred to recover for profits oJ' damages during the original term. An inquiry of profits or gains within a period of five years is difficult, as the profits gained depend upon many conditions. When we come to carry snch an investigation back for almost a quarter of a century, accuracy of results is almost impossible, and the laches of a patentee coming forward at such a late date does not give him a very favorable position in a court of equity. What is the proper rule to measure compensation in a court of equity is a question not arising on the demurrer, and it is not implied from the use of the words" profits and gains."
IRWIN and another v. METROPOLITAN TELEPHONE & TELEGnAPH Co. and another.
(Circuit Com'f, 8. D. New York.
Neither claims 1 and 2 of letters patent No. 209,266, nor claim 3 of letters patent No. 225,388 are infringed by the defendant's instrument.
F. H. Betts, for plaintiffs. O. Smith and J. J. Storl'OlV, for defendants. BLATCHFORD, C. J. I think the proper and necessary construction of claims 1 and 2, of No. 209,266, is that the normal pressure of the electrodes must be obtained by means of gravity, counteracted partly by a delicate retractile spring, elastic in the direction opposed to gravity. The spring must suspend the needle against the force of gravity. The defendants' instrument does not employ gravity to secure pressure, nor a spring to modify the force of gravity, but it obtains the normal pressure of the electrodes by the direct strain of a flat spring. As to No. 225,388, there is no infringement of claim 3. The vibrating disk of the defendants does not have free edges, and is not capable of vibrating bodily, in the sense of the patent. In consequence of being held by the spring and the clamp, it bends, and some parts between the center and the edge move more than others. The bill will be'dismissed, with costs, when the case is disposed of as to the Bell Company.
THORSON and another v·. PETERSON and others.
(District Court, N. D. iUinois. November 26, 1881.)
Courts will take judicial notice of the boundaries of the different states.
Seamen's contracts to ship on a sailing-vessel for the voyage are terminable at the will of the parties, on her arrival at a port of safety, by the dismasting of the vessel in a collision.
W. H. Condon, for libellants. C. E. Kremer, for respondents. BLODGETT, D. J., (orally.) This is a libel for wages, and charges that on the sev,!3nteenth of November, 1880, libellants shipped on the schooner Winnie Wing, of which respondents were owners, and the