782

FEDERAL REPORTER,

vol. 39.

on every other day's issue.. While it is clear that the statute does not impose a penalty of $100 for each imprint of the word "copyrighted" wrongfully made on an engraving or chromo, where numerous copies of the same chromo or engraving are struck off practically at the same time, yet we think it equally clear that the penalty is not strictly limited to $100, no matter how many copies have been published, in all cases where the charge to the same print, engraving, or chromo. The latter construction would sometimes defeat the purposes of the law, as persons might well afford in some instances to pay a single penalty for theprivilege of making a fraudulenti.lse of the word "copyrighted," or some equivalent expression, on many copies of an engraving, print, or chromo. Congress intended to punish each and every wrongful act that was a complete transaction in itself, and hence, under certain circumstances, more than one penalty may be recovered for fraudulently afiixing the word "copyrighted" to more than one copy of the same print, engraving, or chromo. 'When the continuity of an act is broken by lapse of time or other circumstances,-as where a number of chromos are struck off on one day for a particular customer with the word "copyrighted" wrongfully afiixed thereto, and on a succeeding day or several succeeding days other copies of the same are struck off for other customers, each bearing the fraud).llent mark in question,-the several acts are so far separate and distinct that each may, in our judgu1ent, be counted upon as a separate offense. We accordingly overrule the motion to strike out all of the counts but the first, holding that the plaintiff in his amended petition has sufiiciently alleged the commission of distinct offenses for which several penalties may be recovered.

PORI,

et aZ. v.

ANCHOR BREWING

Co.

(Oircuit Oourt, S. D. New York.

August 7,1889.)

PATENTS FOR INVEN'rIONS-LAPSE OF FOREIGN PATENT.

The" term" of a foreign patent referred to in Rev. St. U. S. § 4887, which requires letters patent issued for ·an invention previously patented abroad to be limited "to expire at the same time with the foreign patent," or, if there be more than one, "with the one baving the shortest term," is not the original term expressed in the foreign patent. but its period of actual existence, and the United States patent expires when the foreign patent. baving the shortest term, is terminated by lapse or forfeiture by failure of the patentee to comply with the requirements of the foreign patent law.

In Equity. Hearing on plea. Grosvenor Lowrey, Clarence A. Seward, and Joseph M. Duell, for complainants. ' W. J. Townsend, for defendant.
WALLACE, J. The of complaint alleges infrlngementby the defendant of letters patent of the United States dated March 18, 1879, for

PQHLc'II. ANCHOR BREWrKG C?

783

in barrel and cask scrubbing machines, granted to Carl P<;>hlof Dresden,Germany, upon an applicationfiled Jahuary 3, 1879, "subje9tto the limitation prescrIbed by section 4887 of the Revised Statutes,' by reason of German patent dated September 6, 1877, and Frell;chpatent dated September 3, 1877." The defendant has interposed a ,plea averring, in substance, that both the German and the French patent wE(reissued to Pohl for the same invention described in, and prior to his application for, the United States patent; and that the Gernlan patent lapsed, and the French patent became forfeited, prior to the comIl:1encement of the present suit,by reason of the failure of the patentee to pay the annuities and work the invention as required by the laws of Germany and France, III force when the foreig!1 patents were granted. The plea alleges that the original tetm of each of the foreign patents was for 15 years. The plea has been setdo'wn for argument, and the question for determination is whether, by section 4887, Rev. St., the United States patent expired when the foreign patent having the shortest term terminated by lapse or forfeiture, or whether it does not expire until the original term of such foreign patent expires; By the section in question the patent in suit is to be limited" to 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." Until the decision of the supreme court inRejrigerating Co. v. Hammond, 129 U. S. 151, \) Sup. Ct. Rep. 225, it was generally supposed that the time of expiration of this section was the time of expiration of the original term of the foreign patent, and that the duration of the United States patent was independent of the contingency that the foreign patent might cease to be an operative grant prior to the term specified on its face by the breach of a condition subsequent. This was so decided in several adjudged cases. Paillard v. Bruno, 29 Fed. Rep. 864; Refrigerating Co. v. Gillett, 31 Fed. Rep. 809; Protective Co. v. Alarm Co., 21 Fed. Rep. 458. These decisions interpreted the statute upon considerations of public policy and convenience so imperative that it was thought they could not have been disregarded by congress, and emphasized the effect to be given to the word "term" as'used in the section. It was supposed that when congress referred to the patent having the" shortest term" to define the time of expiration of the United States patent in case there should be two foreign patents, the time of expiration in all cases was the end of the tRrm of the foreign patent; that the term of a patent meant the period of duration eXl)ressed in the patent; that in a legal sense a patent does nol"expire" until its term expires; and that a construction of the section by which the duration of the United States patent should be fixed when the patent issues; by applying the rule, id certum eat quod certum reddi poteat, was the more reasonable one, and the one ll1tended by' congress. And it had been pointed out that, unless this was the true construction of the section, neither the owner of the patent nor the public would know the duration of the grant, and that the United States patent might expire, if there were two foreign patents, at the sarne time with the one having the longest term, notwithstanding the language of
"

784
the section thltt it. is expIre with the one having the s1wrtest term. The decisions of the circuit courts, whiph have been cited, were not referre.d to in the opinion of the supreine court in Refrigerating Co. v. Hammond; but other adjudications of circuit courts in construction of the section, which proceeded upon the same considerations, were distinctly disapproved. These were Henry v. Tool Co., 3 Ban. & A. 501; Reis8ner v.iSharp, 16 Blatchf. 383; Refrigerating Co. v. Gillett, 13 Fed. Rep. 553.-where it had been held that the time of expiration of the United States patent was the end of the term expressed in the foreign patent, notwithstanding the prolongation of the original term was a matter of right to the patentee, and hadaetually been obtained by him. It is now urged for the complainants that the decision of the supreme court does not overrule or discredit the decisions 'of the circuit court, whic1;1 were not referred to and distinctly considered in the opinion, and is to be read as merely deciding the precise question in the case, which was whether an extension of the term of a foreign patent, which by the foreign law was a matter of right to the patentee upon complying with certain conditions, prolonged the duration of the United States patent. The opinion does not discuss the reasons for the construction given to the section, but it states that the point in controversy is whether the United States patent expires "at the same time with theterm to which the foreign patent was in fact limited when the United States patent was granted," or expires" when the foreign patent expires, without reference to the limitation of the term of such foreign patent in actual force at the time the United States patent was granted," and it declares that the statute means "that the United .States patent shall not expire so long as the foreign patent c.ontinues to exist," and" is to be so limited by the courts as a matter to be adjudicated on evidence in pais, as to expire at tIle same time with the patent," and "is to be in force so long as the foreign patent is iI). force." The contention. for the complainants would be justified if the opinion had suggested that the term of a foreign patent, within the meaning of the section, may be deemed either the original term expressed in the patent,or a period of duration to which its life may be prolonged as a matter of right and law in the country of its origin; or that, although .a patent expires when its term expires, congress did not mean to limit the life of a United States patent to the original term of the foreign patent. But, in the absence of any such been given, it ::ieems plain suggestion, and by the extracts which that the supreme court has not to the interpretation adopted in the previous adjudications, as: well those not referred to in the opinion as those that were. The opinion cannot be reconciled with the view that the statute intends that the United, States patent have a fixed term,ascertainable when it issue,fl J;>y reference to the term of a foreign patent. It does Qot attach any significance to the word" term," as defining the period of duration of the foreign patent or of expiration of the United Stales patent, but treats that period as one to be ascertained de hots the foreign patent, by evidence in pais, and wi.thout reference to any supposed inconvenience or uilCertainty to the public or the patentee

to

JONES 'V. CLOW.

785

which may in consequence of their ignorance, whether the patent is or is not in life. The statute is capable of the meaning that the exclusive right to the invention here is to cease with the exclusive right of the patentee in any foreign country, or of the meaning that it shall continue to exist for such period, not exceeding 17 years, as coincides with the shortest term of any foreign patent. The supreme court seems to have adopted the first of these meanings. This is the view of the decision expressed in the recent case of Huber v . .Manufactmoing Co., 38 Fed. Rep. 830, and is the construction of the statute adopted by the commissioner of patents shortly after the passage of the act of July 8, 1870, in which the section first appears, in Case of Musket, 2 Com'rs Dec. 106. The conclusion thus reached is contrary to the impressions entertained at the argument of the plea, but a careful reading of the opinion of the supreme court constrains the conclusion that the plea must be held to be good.

JONES

et al. v. Cww et ale

(Circuit Court, N. D. Illinois.

July 22, 1889.)

PATEKTS FOR IKVEK'l'IOKS-PATENTABILITY -WANT OF NOVELTY.

Letters patent No. 208,376. granted f'eptember 24.1878, describe an "im· provement in heating apparatus," consisting of a portable heater or fire-pot mounted upon an oil reservoir by means of standards projecting upwards from the top of the reservoir. and a burner placed thereunder. consisting of a spiral coil 'Of iron pipe. with an inlet for combustible flnid at the top. and a burning jet in the center of the bottom of the coil. which is surrounded by a metal jacket with openings at the lower part to admit air. Air is also introduced into the upper part of the reservoir to force the fluid through a pipe leading from near the bottom of the reservoir to the top of the burner. where it is connected with the top of the coil. The flame from the jet in passing upward through the coil vaporizes the fluid as it passes from the inlet pipe to the jet. and produces a heating flame in the fire-pot. lIeld, that the combination was a mere aggregation of old parts of two prior patents.-one granted in June,1878, with a fire-pot and burner mounted on an oil reservoir, and the other granted in March, 1868. with the reservoir at the side, instead of under the burner and fire-pot, and is void for want of novelty. .

In Equity. Bill in equity by Thomas J. Jones and others against James B. Clow and others, for injunction and an accounting for infringement of patent for an "improvement in heating apparatus." John G. Elliott and W. A. Reading, for complainants. We.st & Bond, for defendants.
BWDGETT, J. The bill in this case asks for an injunction and accounting by reason of the alleged infringement of patent No. 208,376, granted Septem.ber 24, 1878, to Thomas Connelly, for an "improvement in heating apparatus." In his specification the patentee says: "My invention consists of a portable heater or fire-pot, serviceable for plumbers. and others, for heating solder, soldering-irons, and other articles, and for other purposes. I employ a fire· pot. an oil or fluid reservoir, and an v.39F.no.14-50