The English letters patent dated January 22, 1861, and sealed
July 19, 1861, issued to Charles William Siemens and Frederick
Siemens for "improvements in furnaces," and the American letters
patent No. 41,788, dated March 1, 1864, issued to C. W. and F.
Siemens for "improved regenerator furnaces" describe the same
furnace in all essential particulars, and are substantially for the
same invention.
When American letters patent are issued covering the same
invention described in foreign letters patent of an earlier date,
the life of the American patent is not prolonged by the fact that
it also covers improvements upon the invention as patented in the
foreign country.
The condition imposed by the Act of July 4, 1836, 5 Stat. 117,
that the term of a patent for an invention which has been patented
in a foreign country shall commence to run from the time of
publication of the foreign patent was not repealed or abrogated by
the Act of March 2, 1861, 12 Stat. 246.
In the construction of a statute, although the words of the act
are generally to have a controlling effect, yet the interpretation
of those words must often be sought from the surrounding
circumstances and previous history.
In equity for an account and for an injunction to restrain
infringement of letters patent. Decree dismissing the bill from
which the complainants appealed. After the cause was docketed in
this Court, one of the appellants died and his administrator with
the will annexed appeared and prosecuted his appeal. The following
is the case as stated by the court.
This is a suit on a patent granted to the appellants,
Charles
Page 123 U. S. 277
W. and Frederick Siemens, of Great Britain, on the 12th day of
January, 1869, being a reissue of a patent originally granted to
the appellants on the 1st day of March, 1864. This patent was for
an improved regenerator furnace, so called, intended to be used
where a high degree of heat is required. By the arrangements of
this invention, the products of combustion, after passing through
the furnace, and before entering the chimney, are utilized in
heating what are called the regenerators, consisting of bricks, or
other refractory materials, loosely piled up in two pairs of
separate chambers though which, alternately, after being thus
heated, the air and gases are made to pass on their way to the
furnace, and thus become raised to an intense degree of heat before
entering it. While one pair of regenerators is being thus heated by
the outgoing products of combustion or flame, the other pair are
giving out their heat to the air and gases which are passing into
the furnace, and then, by a reversal of dampers, the current is
changed, and the air and gases are made to pass through the newly
heated regenerators, and the products of combustion or flame
through those that have become partially cooled, and so on
alternately.
The apparatus has various incidental appliances necessary to its
successful operation. Thus, as the regenerator chambers are placed
underneath the furnace, spaces are formed between them and the
furnace bottom for the purpose of admitting a circulation of air to
cool the parts and prevent their being destroyed by the intense
heat. Another arrangement is that of a separate and distinct
furnace, of peculiar form, for the consumption of the raw fuel, so
constructed and operated that the gases produced thereby are
carried over by a suitable flue to one of the heated regenerators,
while atmospheric air is admitted into the other regenerator of the
same pair. The air and gases are thus kept separate until about to
enter the furnace by separate flues, when they meet and commingle
and produce a rapid combustion and a most intense heat.
This is the general nature the invention, and this explanation
will be sufficient for understanding the claims of the patent,
which are four in number, and are as follows, to-wit:
Page 123 U. S. 278
"We claim, in combination with a furnace A and its chimney or
smoke-discharge flue P, a system or series of air and gas
regenerators B1 B2 B3 B4 constructed substantially as specified and
having conduits and dampers arranged so that air and gas may be led
into and through such regenerators and furnace and out of the
chimney in manner and so as to be operated as and for the purpose
or purposes hereinbefore described."
"We also claim the arrangement and combination of the air space
or open chamber
C with the furnace and its system of
regenerators, arranged and applied together substantially in manner
and so as to operate as described. same and the space, E, with the
furnace, regenerators, conduits, and damper chests applied thereto,
the whole being substantially as specified. [The air chamber D
admits the atmospheric air to the regenerator.]"
"We also claim the combination of a furnace with one or more
regenerators or means of receiving its waste smoke and gaseous
products and intercepting or receiving heat therefrom, and also
with means or devices by which all or a portion of the heat so
intercepted or received may be absorbed by the influent air or gas
during its passage into or to such furnace for the purpose of
improving or promoting combustion therein."
The defendants do not deny that the appellants were the authors
of the very ingenious invention claimed by the patent, and they do
not seriously deny that they use it. The principal defense which
they set up is that the appellants took out an English patent for
the same invention dated January 22, 1861, and sealed July 19,
1861, and that, by force of the acts of 1839 and 1861, the American
patent expired at the end of seventeen years from the sealing of
the English patent -- namely on the 19th day of July, 1878, and
they deny that they used the said invention before the
last-mentioned date, and no evidence is given that they did so.
Page 123 U. S. 282
MR. JUSTICE BRADLEY delivered the opinion of the Court.
The questions to be decided therefore are whether the English
patent (which was given in evidence) was for the same invention as
the American patent, and if so whether the latter is limited to
expire at the end of seventeen years
Page 123 U. S. 283
from the sealing of the former. We think that both of these
questions must be answered in the affirmative.
As to the first question, we have carefully compared the two
patents, the English and American, and can see no essential
difference between them. They describe the same furnace in all
essential particulars. The English specification is more detailed
and the drawings are more minute and full, but the same thing is
described in both. There is only one claim in the English patent,
it is true. But that claim, under the English patent system,
entitled the patentees to their entire invention, and is at least
as broad and comprehensive as all four claims in the American
patent. It is in these terms:
"Having now described the nature of our invention and the best
modes we are acquainted with of performing the same, we wish it to
be understood that we do not confine ourselves to the precise
details shown on the accompanying drawings, but we claim as our
invention the various arrangements of regenerative furnaces worked
by the gases resulting from an imperfect combustion of solid fuel
in separate places, as hereinbefore set forth."
It is contended by the counsel of the complainants that the
American patent contains improvements which are not exhibited in
the English patent. But if this were so, it would not help the
complainants. The principal invention is in both, and if the
American patent contains additional improvements, this fact cannot
save the patent from the operation of the law which is invoked, if
it is subject to that law at all. A patent cannot be exempted from
the operation of the law by adding some new improvements to the
invention, and cannot be construed as running partly from one date
and partly from another. This would be productive of endless
confusion.
We have, then, to examine the question whether the term of the
American patent was limited to run from its own date, or from the
date (or sealing -- which is equivalent to the publication) of the
English patent. The reissued patent sued on is dated January 12,
1869, but the original patent, which is
Page 123 U. S. 284
the one to be looked at, was dated March 1, 1864. It was issued,
therefore, before the act of 1870, by which the patent laws were
revised, and while the acts of 1836, 1839, and 1861 were in force.
The act of 1836, as well as previous acts, made the term of a
patent fourteen years; but it authorized an extension of the term
for seven years longer if it should appear that the patentee,
without neglect or fault on his part, failed to obtain a reasonable
remuneration for his invention. By the same act (§ 7), if an
invention for which a patent was sought had been patented in a
foreign country before the application for a patent here, it was a
bar to obtaining a patent in this country unless (§ 8) such
foreign letters patent had been taken out by the applicant himself
within six months previous to the filing of his specification and
drawings. The act of 1839, § 6, removed the limitation of six
months and allowed a patent to be taken out here at any time after
the inventor had taken out a patent for the same invention in a
foreign country, provided it should not have been introduced into
public and common use in the United States prior to the application
for a patent here,
"
and provided also that in all cases, every such patent
shall be limited to the term of fourteen years from the date or
publication of such foreign letters patent."
The act of 1861 introduced several changes in the administration
of the Patent Office, and gave a right to patents for designs. The
last section (§ 16) declared as follows, to-wit:
"That all patents hereafter granted shall remain in force for
the term of seventeen years from the date of issue, and all
extension of such patents is hereby prohibited."
The act of 1870, which was a revision of all previous laws
relating to patents, continued the period of seventeen years as the
term of a patent, and, in case a foreign patent had been previously
issued, declared that the American patent should expire at the same
time with the foreign patent, or, if more than one at the same time
with the one having the shortest term, but in no case for a longer
term than seventeen years. This provision is substantially carried
forward into the Revised Statutes, § 4887.
Page 123 U. S. 285
The appellants contend that the act of 1861 repealed that
portion of the act of 1839 which declared that a patent should be
limited to the term of fourteen years from the date or publication
of prior foreign letters patent for the same invention. So far as
the period of fourteen years is concerned, this is undoubtedly
true. Prior to 1861, all patents, as we have seen, were granted for
the term of fourteen years, with a right under certain
circumstances to an extension for seven years longer. This right of
extension was attended with many inconveniences and much expense to
meritorious patentees, and Congress, by the act of 1861, cut it
off, and made the term of all patents seventeen years (a compromise
between fourteen and twenty-one years). The act had nothing to do
with the question of foreign patents, but only with the term for
which patents would ordinarily run, and the period of seventeen
years, without any privilege of extension, was adopted in lieu of
fourteen years, with a provisional right of extension. That was the
sole point before the legislative mind. Seventeen years limit was
substituted for fourteen years. That was all that was intended or
thought of. We are of opinion, therefore, that the condition
imposed by the act of 1839, that the term of a patent for an
invention which has been patented in a foreign country shall
commence to run from the time of publication of the foreign patent,
was not repealed or abrogated by the act of 1861. If it was, it
follows that there was a period of nine years, from 1861 to 1870,
in which our patent system presented the anomaly of allowing
patents to be taken out in this country at any length of time after
the invention had been patented abroad, and without being subject
to any condition, limitation, or restriction. This can hardly be
supposed to have been the intention of Congress.
No doubt the words of a law are generally to have a controlling
effect upon its construction, but the interpretation of those words
is often to be sought from the surrounding circumstances and
preceding history. From the history of the law in this case, as
exhibited in previous enactments, and from the evident object and
purpose of § 16 of the act of 1861,
Page 123 U. S. 286
we are satisfied that the words there used to define and limit
the term during which patents thereafter granted should remain in
force -- namely "seventeen years from the date of issue" -- were
only intended to change the length of the term, and not the point
of its commencement. The latter continued as before at "the date of
issue," as defined by previous laws -- referring either to the
issue of the American patent itself, when no foreign patent had
been obtained. This view of the construction and meaning of the act
of 1861 was fully explained and enforced by MR. JUSTICE BLATCHFORD
in the case of
De Florez v. Raynolds, 8 F. 434.
The decree of the circuit court is affirmed.
