Bate Refrigerating Co. v. Gillett

• Decision Date: 09 August 1887
• Citation: 31 F. 809
• Court: U.S. District Court — District of New Jersey
• Parties: BATE REFRIGERATING CO. v. GILLETT and others.

31 F. 809

BATE REFRIGERATING CO. v. GILLETT and others.

United States Circuit Court, D. New Jersey.

August 9, 1887

John R Bennett, for the motion.

Clarence A. Seward, John Lowell, and William M. Evarts, contra.

BRADLEY Justice.

This case, having undergone some vicissitudes, requires to be briefly rehearsed.

On the twentieth day of November, 1877, letters patent of the United States, (No. 197,314,) for the term of 17 years, were granted and issued to John J. Bate, of Brooklyn, in the state of New York, for an improvement in processes for preserving meat during transportation and storage by enveloping the same in a covering of fibrous or woven material, and subjecting it to a continuous current of cold air, which patent was assigned to the complainant, the Bate Refrigerating Company. On the fifth day of February, 1878, the bill was filed in the present case, alleging infringement of the patent by the defendants and praying for an injunction and account of profits. Answers were filed and put at issue, and proofs taken. On the fourteenth day of November, 1881, an interlocutory decree was made in favor of the complainant, adjudging that the patent was good and valid; that the defendants had infringed it that the complainant recover profits and damages, with reference to a master for an account; that a perpetual injunction be issued against the defendants, their officers and agents. Subsequently, in May, 1882, the defendants filed a petition praying for a dissolution of the injunction alleging that they had recently discovered that, prior to the issue of the complainant's patent on which the suit was brought, to-wit, on the ninth day of January, 1877, letters patent of the dominion of Canada were granted to the said John J. Bate for the same invention, for the term of five years, with a privilege of extending the same for two other terms of five years each; and that the first term of five years expired on the ninth day of January, 1882. The defendants contended, therefore, that by force of section 4887, Rev. St. U.S., the complainants' patent should have been limited to expire at the same time with the Canadian patent, and had no validity for a longer period. The language of section 4887 is 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.'

The complainant opposed the motion on three grounds: First, that the foreign patents referred to in the section are only such as have been granted prior to the application for the domestic patent, and not such as are granted between the application for, and the date of issuing, the patent; and as, in the present case, the application for the domestic patent was filed December 1, 1876, the Canadian patent could not affect it. Second, that although the Canadian patent was dated the ninth day of January, 1877; it was not delivered out to the patentee until the eighteenth of June, 1878, because no model was filed until then as required by law and by the patent-office. Third, that the extension of the Canadian patent, under the privilege given by the Canadian law, operated to make it a patent for fifteen years instead of five years.

Judge NIXON, who heard the motion, decided that neither of these grounds was sufficient to prevent the application of section 4887 to the domestic patent. He held that this section, different from the acts of 1836 and 1839, refers to foreign patents granted previously to the date of the American patent, and not merely to those granted previously to the date of the American patent, and not merely to those granted previously to the filing of the application therefor. On the second point, he was equally decided that the invention was 'patented' in Canada when the patent was signed and issued as a patent, ready for delivery. The delay of delivering it out to the patentee was entirely caused by his neglect to file a model, which he had the power to do at any time. The third point was also decided by Judge NIXON adversely to the complainant. He held that, as the patentee chose to take out his patent for five years only, relying on his privilege of extending it further if he should wish to do so, it necessarily resulted that, when thus taken out, it was a patent for five years only. As this was its status when the American patent was issued, the latter was limited to the same term. The opinion of Judge NIXON is reported in 13 F. 553. Entertaining the views therein expressed, he dissolved the injunction by an order dated September 29, 1882.

Thereupon, the complainant changed, for a time, the scene of operations to Canada. First was procured, on the twenty-fifth of May, 1883, an amendment of the patent law, by which it was declared that the term of every patent should be 15 years, with an option of paying the full fee, or only a part; and, if the unpaid part should not be paid, the patent should then expire. It was further declared that 'every patent heretofore issued by the patent-office, in respect of which the fee required for the whole or for any unexpired portion of the term of fifteen years, has been duly paid according to the provisions of the now existing law in that behalf, has been and shall be deemed to have been issued for the term of fifteen years, subject, in case a partial fee only has been paid, to cease on the same conditions on which patents hereafter issued are to cease under the operation of this section. ' In addition to this legislation, the complainant, through its agents, procured the institution of proceedings, by scire facias in the superior court for Lower Canada, in the name of the attorney general of the Dominion, to have the Canadian patent vacated and declared void ab initio for want of a model filed in the patent-office before the granting of the patent. A decree to this effect was actually made by the court on the ninth day of July, 1883. Thus the complainant now had the benefit of a statute which declared that the Canadian patent was issued for a term of 15 years, and of a judicial decision which declared that it had never existed at all.

Armed with these documents the complainant applied to this court to vacate the order dissolving the injunction, and to have the injunction reinstated. Judge NIXON, before whom this motion also came, felt compelled to grant it, inasmuch as the Canadian patent, which was the ground of his previous decision, was now judicially declared to have never had an existence. No effect appears to have been given to the amendatory act of May 25, 1883. An order was made on the twenty-fifth of March, 1884, vacating the previous order dissolving the injunction, and reinstating the original order granting the injunction.

The defendants now followed the example of the complainant, and removed the conflict to Canada. According to the course and practice of the courts in that country, which are modeled very much upon the civil law, they applied for leave to litigate the proceedings on scire facias as third opponents that is, as third persons having an interest affected by the judgment. The complainant and the other parties were notified of the application, and opposed it; but the court granted it, and allowed the defendants to interplead. They did so, and set up collusion between the principal parties in procuring the judgment which had been given, and contended that the Canadian patent was valid. The court sustained this defense, and declared that the former judgment had been arrived at 'through the fraud to the law and collusion of the said John Jones Base, Bate Refrigerating Company, and Benjamin Holman, deceiving the attorney general, the advocates,...