Accumulator Co. v. Julien Electric Co.

Decision Date18 July 1893
Citation57 F. 605
PartiesACCUMULATOR CO. v. JULIEN ELECTRIC CO. et al.
CourtU.S. District Court — Southern District of New York

The first claim of the patent granted to Camille A. Faure January 3, 1882, as limited by a disclaimer to an electrode of a secondary battery to which the active layer is applied in the form of a paint, paste or cement, insoluble in the electrolytic liquid, was sustained by this court March 18 1889. 38 F. 117. It was again sustained on rehearing. 39 F 490. On the 19th of October, 1891, an order was made permitting the defendants to amend their answer by setting up the grant and expiration of a Spanish patent issued to Faure June 27, 1881, for the term of 10 years. 47 F. 892. Proofs were taken on this new issue, and the cause now comes on for rehearing upon this issue alone.

Frederic H. Betts, for complainant.

C. E. Mitchell, William H. Kenyon, and Robert N. Kenyon, for defendants.

COXE District Judge.

It is proved beyond question that a Spanish patent was issued to Camille A. Faure June 27, 1881, for a term of 10 years, and that this patent expired June 27, 1891. If the Spanish patent was for the same invention as the patent in suit, it is manifest that the latter expired June 27, 1891. This is the only question: Was the Spanish patent for the same invention? Section 4887 of the Revised Statutes provides:

'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.'

In the leading cases of Siemens' Adm'r v. Sellers, 123 U.S. 276, 8 S.Ct. 117, and Commercial Manuf'g Co. v. Fairbank Canning Co., 135 U.S. 176, 10 S.Ct. 718, the supreme court has made the test of identity to depend upon the following propositions: Is the principal invention of the domestic patent found in the foreign patent? Is the subject-matter of the one the same in all essential particulars as that of the other? In other words, will a structure made pursuant to the foreign patent infringe the domestic patent? Could both the patents have been granted in this country?

Would a person skilled in the art, after reading the description of the invention covered by the Spanish patent, be able to construct the electrode described and claimed in the United States patent? In approaching the subject of identity, it should be remembered that Faure is a Frenchman, and that the first description of his invention was written in the French language. From this original it was translated into Spanish and English. Making allowance for philological differences, for errors and unavoidable changes in translation, and for dissimilarities in patent-office procedure, it could hardly be expected that the United States and Spanish patents would emerge from such an ordeal in identical garb, even though it were the avowed purpose of the inventor to make them the same. There seems to be no doubt that the application as filed in the patent office at Washington was almost an exact counterpart of the Spanish patent, and that both the patent and the application were translated from one and the same French original. 'It is evident,' says the complainant's brief, 'that the original American application was very much like the Spanish patent. The claims were differently phrased, but it is quite possible that they were intended by the translator to cover the same subject-matter.' Faure's invention was described by him in the same language, and was presented for their approval to the patent officials of three countries differing widely in their methods for the protection of inventors. If he had made any new discoveries between the date of the French patent and the dates, respectively, of his application in Spain and in the United States, he certainly failed to note the fact in either specification. The proof that he did make such discoveries is very unsatisfactory.

This being so, it precludes the idea that Faure had made many kindred inventions along the same lines, which he was desirous of protecting. Like Mr. Brush for instance. 47 F. 48, 51, 54. Clearly it was his intention to take out a patent for the same invention in the two countries. This is not disputed. One of the experts for the complainant says: 'These patents (Faure's] intended to cover the same invention, differ widely.'

Faure had taken an important step forward in the construction of secondary batteries, which may be broadly stated as an improvement on the method of Planté, by adding directly to the support the layer of active material which Planté produced by disintegration after weeks and months of effort. This invention Faure described; this invention he endeavored to have patented in France, Spain and the United States. It is now said that he failed in this undertaking; that he patented one invention in Spain, and another in France and in this country. It is argued that this result was accomplished because Faure failed to patent in Spain the invention in the form in which he had actually embodied it, and in which its success had been proved in France--the one form which makes it thoroughly practical and useful. In other words, that he failed to describe the most valuable part of his invention although fully known to him at the time. The inquiry naturally suggests itself, how can this be? How can such a result be reached--an attempt to patent one invention and the actual patenting of another--without the participation or knowledge of the inventor? It will be found on examination that the supposed differences, which are so greatly magnified, are differences of form and not of substance and grow out of different environments and forms of expression. The inventor has described several ways in which the active layer may be applied and it is not surprising that the officials of Spain should have given prominence to one way and those of this country to another way.

Again, there is an express admission that the United States and French patents are the same, the specification of the former stating that the invention was 'patented in France, October 20, 1880,' and in the oath attached to the application Faure swears that the invention 'has been patented to him by letters patent of the French government.' There is also an admission, at least, by implication, that the Spanish and French patents are the same. The Spanish law permitted a patent for 20 years, 'if it has for its object new and original inventions,' but if the inventor had obtained a patent therefor in one or more foreign countries the term was for 10 years only. The French patent had been granted, (October 20, 1880,) when the application for the Spanish patent was filed, (April 16, 1881.) The inventor asked for a 10 years' term in Spain presumably because he knew that he was not entitled to a 20 years' term, the invention having been patented in France.

Furthermore, the proceedings instituted on behalf of the complainant to reinstate the Spanish patent proceeded upon the theory that the French and Spanish patents were for the same invention. A concession that the French and Spanish patents are the same, is also a concession that the United States and Spanish patents are the same. The latter two cannot both be like the French patent without being like each other also. The description of what Faure discovered was the same in both cases. If the domestic patent is for another invention, the patent should have been granted to the patent-office officials and not to Faure; the changes are theirs and not his. Not only are the two descriptions from the same source, but the drawings, except in a few unimportant details, are identical.

It is a mistake to start out with the hypothesis that the United States patent in terse and perspicuous language, describes the application of the active material in the form of paint, paste or cement, and stops there. It is a mistake to compare the Spanish patent with a patent thus assumed to be clear in language and limited in scope, for it will be found on examination that neither patent is free from ambiguity, and that the real invention of Faure is as plainly proclaimed in the one as in the other. The comparison should be instituted between the patents as they were issued, and not between the Spanish patent and the United States patent as it now exists after being cut down by a disclaimer, and limited by an art existing in this country, of which the inventor knew nothing. If a patent, when granted, covers an invention which has been previously covered by a foreign patent, it expires with the foreign patent, notwithstanding the fact that it has subsequently been pared down to cover only one method of practicing the invention, or restricted to a single claim. A disclaimer cannot add a new invention to the patent. Assume the case of a foreign patent and a United States patent subsequently granted in language precisely identical. Assume that, pursuant to the decision of the court or for other reason, the inventor has disclaimed all of the claims but one and that one is so restricted that it covers only one feature not made prominent in the original patent; can it be said that this proceeding wholly changes the scope and purport of the patent, making it, in fact, a patent for a different invention? If so, disclaimers will be put to new and important uses never dreamed of before. When it is remembered that Faure intended to claim broadly in both patents all described methods of adding the active material, giving no especial preference to any one, there will be less difficulty in perceiving that 'the principal invention is in both.'

But let it be assumed that the inquiry is: Was the invention of the United States patent, as now...

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