A United States patent was granted November 20, 1877, for
seventeen years, on an application filed December 1, 1876. A patent
for the same invention had been granted in Canada, January 9, 1877,
to the same patentee, for five years from that day, on an
application made December 19, 1876. On a petition filed in Canada
by the patentee December 5, 1881, the Canada patent was, on
December 12, 1881, extended for five years from January 9, 1582,
and, on December 13, 1881, for five years from January 9, 1887,
under § 17 of the Canada act assented to June 14, 1872 (35
Victoria, c. 26).
Held, under § 4857 of the
Rev.Stat., that, as the Canada act was in force when the United
States patent was applied for and issued,
Page 129 U. S. 152
and the Canada extension was a matter of right at the option of
the patentee, on his payment of a required fee, and the fifteen
years' term of the Canada patent had been continuous and without
interruption, the United States patent did not expire before the
end of the fifteen years' duration of the Canada patent.
It was not necessary to the validity of the United States patent
that it should have been limited in duration, on its face, to the
duration of the Canada patent, but it is to be so limited by the
courts, on evidence
in pais, as to expire at the same time
with the Canada patent, not running more than the seventeen
years.
This is a suit in equity, brought in the Circuit Court of the
United States for the District of Massachusetts December 16, 1886,
by the Bate Refrigerating Company, a New York corporation, against
George H. Hammond & Co., a Michigan corporation, founded on the
alleged infringement of letters patent No. 197,314, granted to John
J. Bate, November 20, 1877, for the term of seventeen years from
that day on an application filed December 1, 1876, for an
"improvement in processes for preserving meats during
transportation and storage."
The plaintiff is the assignee of the patent. The bill alleges
infringement, within the District of Massachusetts and elsewhere in
the United States, by the making, using, and vending of the
patented process, and alleges that the defendant has been engaged
in the business of shipping fresh meat from the port of Boston to
ports in Great Britain by means of the process claimed in the
patent. The claim is as follows:
"The herein-described process of preserving meat during
transportation and storage by enveloping the same in a covering of
fibrous or woven material and subjecting it when thus enveloped to
the continuous action of a current of air of suitably low and
regulated temperature, substantially as and for the purpose set
forth."
The defendant filed a plea setting up, among other things, that
on the 9th of January, 1877, letters patent of the Dominion of
Canada, No. 6,938, for the same invention as that described and
claimed in No. 197,314 were granted to the same John J Bate, for
the term of five years from the 9th of January, 1877; that after
No. 197,314 had expired,
Page 129 U. S. 153
at the end of the term of five years for which such Canadian
patent was granted, the Circuit Court of the United States for the
District of New Jersey, upon being advised of the grant of such
Canadian patent, vacated and set aside an injunction which it had
theretofore granted, by an interlocutory decree made in a suit in
equity founded on No. 197,314, brought by the Bate Refrigerating
Company against Benjamin W. Gillett and others; that thereafter
Bate and the Bate Refrigerating Company procured the rendition of a
judgment by the Superior Court for Lower Canada, declaring the
Canadian patent to have been void
ab initio and vacating
it and setting it aside; that such judgment of the superior court
for Lower Canada being brought to the attention of the Circuit
Court of the United States for the District of New Jersey, that
court reinstated said injunction, and that afterwards the Superior
Court for Lower Canada, in a suit brought by Sir Alexander
Campbell, Minister of Justice and Attorney General for the Dominion
of Canada against Bate and the Bate Refrigerating Company and
others, adjudged that its said prior judgment had been "arrived at
through the fraud to the law and collusion" of Bate the Bate
Refrigerating Company and another other person,
"deceiving the Attorney General, the advocates, and the court,
employing and paying counsel on both sides, as well, seemingly,
against themselves as on their apparent behalf,"
and revoked and annulled its said prior judgment. The plea
concluded by averring that No. 197,314 expired on the 9th day of
January, 1882, and that the circuit court, sitting as a court of
equity, had no jurisdiction to hear and determine an action in
equity for the infringement of the patent.
The bill was then amended by averring that the application for
the Canadian patent was not made until December 19, 1876, while the
application for No. 197,314 was made December 1, 1876, and that the
Canadian patent was not actually or legally issued until on or
about June 26, 1878, on or about which date a model of the
invention, as required by law, was filed in the Canadian Patent
Office. The amendment to the bill also set forth the two judgments
of the Superior Court for Lower Canada, and averred that, by virtue
of an act of the
Page 129 U. S. 154
Parliament of the Dominion of Canada assented to May 25, 1883,
46 Vict. c. 19, the original term of the Canadian patent was
actually fifteen years, instead of five years, and it would not
terminate before the 9th of January, 1892.
Subsequently the defendant filed an answer to the bill setting
up, among other defenses, want of novelty in the patented
invention, but not denying that it had used the invention
subsequently to the granting of the patent, and also setting up the
granting of the Canadian patent for five years from January 9,
1877; that No. 197,314 was void because it was issued for seventeen
years, and its term was not limited by the Commissioner of Patents
to five years from January 9, 1877; that the Canadian application
was not made until after the application for No. 197,314 was filed;
that Bate did not file a model in the Canadian Patent Office until
after the grant of the Canadian patent, and that the Canadian
patent was actually patented to Bate on the 9th of January, 1877,
and took effect on that date, although not actually delivered to
the patentee until after the filing of the model. It also sets
forth the two Canadian judgments, and avers that, on the 30th of
November, 1881, Bate made a petition to the Commissioner of Patents
for Canada for the extension of No. 6,938 in which he averred that,
on the 9th of January, 1877, he
"obtained a patent for the period of five years from the said
date, for new and useful improvements on apparatus and process for
ventilation, refrigeration, etc.,"
and that he was the holder of that patent in trust for the Bate
Refrigerating Company, and prayed that it might be extended "for
another period of ten years;" that, on the filing of that petition,
an extension of the patent was granted, on December 12, 1881, "for
a second period of five years" from January 9, 1882; that a further
extension of the patent was granted, December 13, 1881, "for a
third period of five years" from January 9, 1887; that the
plaintiff is thereby estopped from denying the fact that No. 6,938
was legally granted, January 9, 1877, for a period of five years;
that by virtue of the act of 46 Vict. c. 19, the original term for
which No. 6,938 was granted was not fifteen years instead of five
years; that said act can have no effect on the
Page 129 U. S. 155
duration of No. 197,314; that by reason of the prior patenting
of the invention by Bate in Canada for five years from January 9,
1877, No. 197,314, if valid at all, expired on January 9, 1882, and
that therefore this Court, sitting in equity, has no jurisdiction
to hear and determine an action for its infringement.
Without the filing of any replication to this answer, the
parties entered into a written stipulation setting forth as
follows:
"Whereas the answer of the defendant corporation in this cause
sets up, in addition to other defenses, that the patent on which
this suit is brought, being No. 197,314, granted to John J. Bate,
complainant's assignor and president, on the twentieth day of
November, A.D. 1877, expired on the ninth day of January, A.D.
1882, by reason of the prior grant to said John J. Bate of a patent
in the Dominion of Canada for the same invention, and prays the
same benefit of said defense as if the same had been pleaded to the
bill of complaint, and whereas both parties desire to have said
matter of defense argued and decided without incurring the great
expense of taking testimony necessary to present for final hearing
all the defenses raised in said answer, it is therefore stipulated
and agreed by and between the parties that the defense above named
shall be submitted to the court, as on plea set down for argument,
upon the following agreed state of facts."
The facts so agreed to were substantially as follows:
1. The patent in suit, No. 197,314, was granted to John J. Bate
on November 20, 1877, and the application therefor was filed in the
United States Patent Office, December 1, 1876, and said patent was
assigned to complainant before this suit was brought, the said Bate
being a citizen of the United States at the time of said
application, and the said invention having been made and reduced to
practice by him therein.
2. On December 19, 1876, said John J. Bate filed in the Patent
Office of the Dominion of Canada an application for a patent for
improvements in apparatus and processes for ventilation,
refrigeration, etc., including therein, as one feature, the process
described and claimed in said patent No. 197,314.
3. In pursuance of said application, the Commissioner of
Page 129 U. S. 156
Patents for the Dominion of Canada caused letters patent of the
Dominion of Canada, No. 6,938, for the invention set forth in said
application, and granting to said John J. Bate, his executors,
administrators, and assigns, the exclusive right, privilege, and
liberty of making, constructing, using, and vending to others to be
used, the said invention, to be signed and sealed with the seal of
the Patent Office on January 9, 1877, and the be registered on
January 11, 1877, and that the period of said grant expressed in
said patent was five years from and after January 9, 1877.
4. On January 12, 1877, said Commissioner of Patents called upon
said John J. Bate to furnish to the Patent Office a model of his
said invention, and such model was furnished by said Bate on June
26, 1878, on which day said patent No. 6,938 was mailed to said
John J. Bate.
5. On December 5, 1881, said John J. Bate filed a petition in
the Canada Patent Office, setting forth
"that on the 9th day of January, A.D. 1877, your petitioner
obtained a patent for the period of five years from the said date,
for new and useful improvements on apparatus and process for
ventilation, refrigeration, etc.; that he is the holder of the said
patent in trust for the 'Bate Refrigerating Company,' and therefore
prays that it may be extended for another period of ten years."
6. On December 12, 1881, said patent No. 6,938 was extended for
five years from January 9, 1882, under renewal No. 13,812, and on
December 13, 1881, said patent was further extended for five years
from January 9, 1887, under renewal No. 13,813, in pursuance of the
above-named petition.
7. On or about July 9, 1883, and June 30, 1886, the Superior
Court for Lower Canada rendered two judgments affecting said Canada
patent, to the purport set forth in the plea and the answer. The
stipulation further provided that if the decision of the circuit
court should be in favor of the plaintiff, it should have a
reasonable time thereafter to file a replication in the answer, and
the cause should proceed in the ordinary manner; that if the
circuit court should decide the cause in favor of
Page 129 U. S. 157
the defendant, a decree should be entered dismissing the bill,
so that the plaintiff might take an appeal therefrom to the Supreme
Court of the United States, and that if the circuit court should
decide the cause in favor of the defendant, and the Supreme Court
of the United States should, on appeal, reverse that decision, the
defendant should have a right to proceed in the circuit court,
under its answer, as to all defenses set up therein, except the one
mentioned in the stipulation, as it might have proceeded if the
stipulation had not been made.
The cause was heard on the pleadings and stipulation, and the
circuit court entered a decree dismissing the bill, 35 F. 151, from
which decree the plaintiff has appealed to this Court. The circuit
court gave no opinion on the merits of the case, but in deciding it
followed, as it stated, the decision of the Circuit Court of the
United States for the District of New Jersey, held by MR. JUSTICE
BRADLEY, in August, 1887, made in the case of
Refrigerating Co.
v. Gillett, 31 F. 809.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
The questions discussed at the bar arise under § 4887 of
the Revised Statutes, which is as follows:
"No person shall be debarred from receiving a patent for his
invention or discovery, nor shall any patent be declared invalid,
by reason of its having been first patented or caused to be
patented in a foreign country unless the same has been introduced
into public use in the United States for more than two years prior
to the application. But every patent granted for an invention which
has been previously patented in a foreign country shall be so
limited as 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, and in no case shall it be in force for more than
seventeen years."
Two propositions as to the construction of this section are
contended for by the appellant: (1) that the words "first patented
or caused to be patented in a foreign country" do not mean "first
patented or caused to be patented" before the issuing, or granting,
or date, of the United States patent, but
Page 129 U. S. 165
mean "first patented or caused to be patented" before the date
of the application for the United States patent; (2) that the
declaration of the section that
"Every patent granted for an invention which has been previously
patented in a foreign country shall be so limited as 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"
does not mean that the patent so granted shall expire at the
same time with the term to which the foreign patent was in fact
limited at the time the United States patent was granted, but that
it means that it shall expire 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.
We do not find it necessary to consider the first of these
questions, because we are of opinion that the proper construction
of § 4887 upon the second question is that the patent in the
present case does not expire before January 9, 1892, the time when
the Canadian patent, No. 6,938, will expire.
The Canadian patent was extended for the two periods of five
years each under the provisions of § 17 of the Canadian act
assented to June 14, 1872, 35 Vict. c. 26, which was in force when
the United States patent, No. 197,314, was applied for and granted,
and which read as follows:
"17. Patents of invention issued by the Patent Office shall be
valid for a period of five, ten, or fifteen years at the option of
the applicant, but at or before the expiration of the said five or
ten years, the holder thereof may obtain an extension of the patent
for another period of five years, and after those second five years
may again obtain a further extension for another period of five
years, not in any case to exceed a total period of fifteen years in
all, and the instrument delivered by the Patent Office for such
extension of time shall be in the form which may be from time to
time adopted, to be attached, with reference to the patent, and
under the signature of the Commissioner, or of any other member of
the Privy Council in the case of absence of the Commissioner."
This statute appears to have been strictly complied with in
Page 129 U. S. 166
the present case. The Canadian patent No. 6,938 ran, on its
face, for five years from January 9, 1877, and, prior to the
expiration of that time, and on the 5th of December, 1881, Bate
applied for its extension for ten years, and it was, before the
five years expired, and on the 12th of December, 1881, extended for
five years from January 9, 1882, and, on December 13, 1881, for
five years from January 9, 1887. The Canadian patent therefore has
never ceased to exist, but has been in force continuously from
January 9, 1877. It was in force when No. 197,314 was issued, and
it has, by virtue of a Canadian statute, in force when the
application for No. 197,314 was filed, continued to be in force at
all times since the latter patent was granted. This is true
although the Canadian patent, No. 6,938, as originally granted,
stated on its face that it was granted "for the period of five
years" from January 9, 1877, and although the instrument granting
the first extension of five years states that it is granted "for
another period of five years, to commence and be computed on and
from the ninth day of January, which will be in the year one
thousand eight hundred and eighty-two," and although the instrument
granting the second extension of five years states that it is
granted
"for another period of five years, to commence and be computed
on and from the ninth day of January, which will be in the year one
thousand eight hundred and eighty-seven."
By the language of § 17 of the Canadian act of 1872, what
was granted under it was "an extension of the patent" -- of the
same patent -- for a further term. Therefore the Canadian patent
does not expire, and it never could have been properly said that it
would expire, before January 9, 1892, and hence No. 197,314, if so
limited as to expire at the same time with the Canadian patent,
cannot expire before January 9, 1892.
Section 6 of the Act of March 3, 1839, 5 Stat. 354, provided
that a United States patent for an invention patented in a foreign
country more than six months prior to the application of the
inventor for the United States patent should be limited to a term
of fourteen years from the date or publication of the foreign
patent. Section 25 of the Act of July 8, 1870, 16
Page 129 U. S. 167
Stat. 201, provided that the United States patent for an
invention "first patented or caused to be patented in a foreign
country" should
"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 be in force more than seventeen
years."
Section 4887 of the Revised Statutes provides that
"Every patent granted for an invention which has been previously
patented in a foreign country shall be so limited as 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, and in
no case shall it be in force more than seventeen years."
These provisions of the act of 1870 and of the Revised Statutes
mean that the United States patent shall not expire so long as the
foreign patent continues to exist, not extending beyond seventeen
years from the date of the United States patent, but shall continue
in force, though not longer than seventeen years from its date, so
long as the foreign patent continues to exist. Under § 4887,
although, in the case provided for by it, the United States patent
may on its face run for seventeen years from its date, it is to be
so limited by the courts, as a matter to be adjudicated on evidence
in pais, as to expire at the same time with the foreign
patent, not running in any case more than the seventeen years, but,
subject to the latter limitation, it is to be in force as long as
the foreign patent is in force.
A contrary view to this has been expressed by several circuit
courts of the United States.
In October, 1878, in the Circuit Court for the District of Rhode
Island, in
Henry v. Providence Tool Co., 3 Ban. &
Ard.Pat. 501, it was held that the 25th section of the Act of July
8, 1870, meant that the United States patent should expire at the
same time with the original term of a foreign patent for the same
invention, without regard to any prolongation of the foreign patent
which the patentee might procure from the foreign government. In
that case, the United States patent was granted October 10, 1871. A
British patent for the same invention had been granted to the
patentee on the 15th of
Page 129 U. S. 168
November, 1860, for fourteen years, and expired November 15,
1874. Thirteen days after the latter date, an order was made for
the extension of the British patent for four years, the extension
bearing date as of the day after the expiration of the original
term; but the court held that the United States patent expired on
the 15th of November, 1874.
That decision was followed by the Circuit Court for the Southern
District of New York in
Reissner v Sharp, 16 Blatchford
383, in June, 1879, which case arose under § 4887 of the
Revised Statutes. In that case, the United States patent, granted
October 20, 1874, for seventeen years, was held to have expired on
the 15th of May, 1878, because a patent was granted in Canada,
under the authority of the patentee, for the same invention on the
15th of May, 1873, for five years from that day, although in March,
1878, the Canada patent was extended for five years from the 15th
of May, 1878, and also for five years from the 15th of May,
1883.
In
Bates Refrigerating Co. v Gillett, 13 F. 533, in the
Circuit Court for the District of New Jersey, in August, 1882, and
in the same suit in the same court in August, 1887, 31 F. 809, in
regard to the patent in question in the present suit and on the
same facts here presented, it was held, on the strength of the two
circuit court cases above referred to, that the United States
patent expired when the original term of the Canadian patent
expired
But we are of opinion that in the present case, where the
Canadian statute under which the extensions of the Canadian patent
were granted 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 fifteen-years term of the
Canadian patent has been continuous and without interruption, the
United States patent does not expire before the end of the
fifteen-years duration of the Canadian patent. This is true
although the United States patent runs on its face for seventeen
years from its date, and is not on its face so limited as to expire
at the same time with
Page 129 U. S. 169
the foreign patent; it not being necessary that the United
States patent should on its face be limited in duration to the
duration of the foreign patent.
In
O'Reilly v.
Morse, 15 How. 62, the patent to Morse was issued
June 20, 1840, for fourteen years from that day, while § 6 of
the Act of March 3, 1839, 5 Stat. 354, was in force, which required
that every United States patent for an invention patented in a
foreign country should be "limited to the term of fourteen years
from the date or publication of such foreign letters patent." Morse
applied for his United States patent April 7, 1838. He obtained a
patent in France for his invention October 30, 1838. The objection
was taken in the answer that the United States patent was void on
its face because not limited to the term of the French patent. The
circuit court held that the patent was not void, but that the
exclusive right granted by it must be limited to fourteen years
from October 30, 1838. The same objection was urged in this Court,
and the same ruling was made. In
Smith v.
Ely, 15 How. 137, which was a suit on the same
patent under the same facts, the same question arose and was
decided in the same way. A full and interesting discussion of the
question is to be found in
Canan v. The Pound Mfg. Co., 23
F. 185, in regard to § 4887, which contains the same word
"limited" found in § 6 of the act of 1839, which word is not
found in § 25 of the Act of July 8, 1870, from which §
4887 was taken.
Under this view, the time of the expiration of the foreign
patent may be shown by evidence
in pais, either by the
record of the foreign patent itself, showing its duration, or other
proper evidence, and it is no more objectionable to show the time
of the expiration of the foreign patent by giving evidence of
extensions such as those in the present case, and thus to show the
time when, by virtue of such extensions, the United States patent
will expire.
We find in the record in this case, among the papers which it
states were submitted to the court under the stipulation above
referred to, a certificate of the Commissioner of Patents, dated
July 3, 1883, appended to a certified copy of the United States
patent, stating that the term thereof is limited so that
Page 129 U. S. 170
it shall expire with the patent obtained by the patentee in
Canada, No. 6,938, dated January 9, 1877, for the same invention;
that the proper entries and corrections have been made in the files
and records of the Patent Office; that it had been shown that the
original patent had been lost, and that the certificate is made
because that patent was issued without limitation, as required by
§ 4887 of the Revised Statutes. While it may be proper, in a
case where the date of a foreign patent issued prior to the
granting of a United States patent to the same patentee for the
same invention is made known to the Patent Office prior to the
granting of the United States patent, to insert in that patent a
statement of the limitation of its duration, in accordance with the
duration of the foreign patent, it does not affect the validity of
the United States patent if such limitation is not contained on its
face.
It results from these views that
The decree of the circuit court must be reversed, and the
case be remanded to that court with a direction to take such
further proceedings as shall be in accordance with law and with the
stipulation between the parties, above referred to, and not
inconsistent with this opinion.
