Cameron Septic Tank Company v. City of Knoxville

• Decision Date: 20 January 1913
• Docket Number: No. 82,82
• Citation: 57 L.Ed. 407,33 S.Ct. 209,227 U.S. 39
• Parties: CAMERON SEPTIC TANK COMPANY, Appt., v. CITY OF KNOXVILLE, in the County of Marion and State of Iowa
• Court: U.S. Supreme Court

227 U.S. 39

33 S.Ct. 209

57 L.Ed. 407

CAMERON SEPTIC TANK COMPANY, Appt.,

v CITY OF KNOXVILLE, in the County of Marion and State of Iowa.

No. 82.

Argued December 11 and 12, 1912.

Decided January 20, 1913.

Mr. Henry Love Clarke for appellant.

Messrs. Wallace R. Lane, R. L. Welch, and Samuel H. Crosby for appellee.

Mr. Justice McKenna delivered the opinion of the court:

A bill in equity was brought by appellant as successor to the rights of an invention patented under United States letters patent to Edwin Cameron et al. for a process and an apparatus for treating sewage, No. 634,423, dated October 3, 1899. The bill contained the usual allegations and prayed for an injunction to restrain appellee from the use of the invention. Appellee filed a plea to the bill, in which it alleged that the invention had been previously patented in Great Britain by letters patent dated November 8, 1895, and that that patent had expired on or before the 8th day of November, 1909, being the expiration of the term for which it was granted, and that therefore the United States patent expired and became terminated by law, and it being stipulated that the bill should be considered as filed as of that date, and as the bill was not filed with the purpose or intention of applying for or obtaining an injunction before the expiration of the British patent, no injunctive or equitable relief could be had. A dismissal of the bill was therefore prayed. The decree of the court recited the facts of the plea and adjudged that the patent had expired as therein alleged, and that its expiration was not prevented 'by any effect of the treaty of Brussels of December 14, 1900 [32 Stat. at L. 1936], which treaty and the construction thereof was drawn in question on the plea in this cause;' and that therefore the court was without jurisdiction, the complainant having a plain and adequate remedy at law. This appeal was then prosecuted under § 5 of the circuit court of appeals act (26 Stat. at L. 826, chap. 517, U. S. Comp. Stat. 1901, p. 488).

The single question here is whether the United States patent expired with the British patent according to the laws which existed when it was issued, or whether its existence was preserved by the treaty of Brussels.

At the time the patent was issued, § 4884, Revised Statutes (U. S. Comp. Stat. 1901, p. 3381), made the term of a patent seventeen years; and by § 4887 it was provided that the receiving of a foreign patent did not prevent the granting of a United States patent. It was, however, provided 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.'

The section coming up for judicial consideration, it was decided that it assumed that the foreign patent previously granted was one granted for a definite term, that the United States patent should expire with that term, and that it was not to be limited by any lapsing or forfeiture of any portion of the term of the foreign patent, by means of the operation of a condition subsequent, according to the foreign statute. Pohl v. Anchor Brewing Co. 134 U. S. 381, 386, 33 L. ed. 953, 955, 10 Sup. Ct. Rep. 577. And it was held that the American patent is limited by law, whether it is so expressed or not in the patent itself, to expire with the foreign patent having the shortest term. Bate Refrigerator Co. v. George H. Hammond & Co. 129 U. S. 151, 167, 32 L. ed. 645, 650, 9 Sup. Ct. Rep. 225; Bate Refrigerator Co. v. Sulzberger, 157 U. S. 43, 39 L. ed. 613, 15 Sup. Ct. Rep. 508; Leeds & C. Co. v. Victor Talking Mach, Co. 213 U. S. 301, 325, 53 L. ed. 805, 815, 29 Sup. Ct. Rep. 495.

Appellee contends that these decisions and the cited sections of the Revised Statutes constituted the law of the United States patent to Cameron, and caused it to terminate with the expiration of the term of the British patent. The argument is that it was granted not for seventeen years, but for a term to be measured by that of the foreign patent, enduring the full term for which the latter was granted, but no longer, though on its face it was to run seventeen years. The appellant, opposing the contention, insists that the treaty of Brussels has superseded § 4887, and has freed the Cameron patent from subjection to the provisions of that section. It is the effect of the contention that, though the patent was issued for a definite term, as decided by the cited cases, the term was enlarged by the treaty.

Appellant candidly admits that there are cases adverse to its contention, but seeks to limit their strength of persuasion or authority to one only, and to that one opposes the reasoning and precedent of another. The cases so put in opposition are United Shoe Machinery Co. v. Duplessis Shoe Machinery Co. 84 C. C. A. 76, 155 Fed. 842, decided by the circuit court of appeals of the first circuit against the effect fect of the treaty contended for, and Hennebique Constr. Co. v. Myers, 97 C. C. A. 289, 172 Fed. 869, decided by the circuit court of appeals of the third circuit which is asserted to be the other way. But the cases do not present the antagonistic authority of two courts. Judge Archbald, whose views in the latter case are relied on by appellant, stated in a subsequent one (Union Typewriter Co. v. Smith, 173 Fed. 288, 299) that this opinion was not that of the court.

The other cases in which the Brussels treaty was considered, and in which it was decided that it did not enlarge the term of an American patent beyond the term of a foreign patent for the same invention, are the following: Malignani v. Hill-Wright Electric Co. 177 Fed. 430; Malignani v. Jasper Marsh Consol. Electric Lamp Co. 180 Fed. 442; Commercial Acetylene Co. v. Searchlight Gas Co. 197 Fed. 918. Appellant contends, as we have seen, that these cases do not express independent views, but follow United Shoe Machinery Co. v. Duplessis Shoe Machinery Co. as suthority. This is not true to the extent contended. In the first two cases an independent judgment was expressed. In the third case (197 Fed. 918) it was said of United Shoe Machinery Co. v. Duplessis Shoe Machinery Co. that it was 'well considered and very persuasive,' and was 'deemed to be the correct expression of the law for the purpose' of the hearing. Judicial opinion must therefore be ranged against appellant's contention, and is persuasive, at least, of its unsoundness.

Appellant, however, relies on the words of the treaty, which, it is insisted, have no ambiguity whatever, and which, it is contended, by the proclamation of the President of September 14, 1902, because the "supreme law of the land," The provision relied on reads as follows:

'Art. 4 bis. Patents applied for in the different contracting states, by persons admitted to the benefit of the convention under the terms of articles 2 and 3, shall be independent of the patent obtained for the same invention in the other states, adherents or nonadherents to the Union.

'This provision shall apply to patents existing at the time of its going into effect.

'The same rule applies, in the case of adhesion of new states, to patents already existing on both sides at the time of the adhesion.' 32 Stat. at L. 1940.

The Cameron patent existed at the time the treaty went into effect, and the British patent by which it was limited was a patent obtained in one of the states adhering to the treaty; namely, Great Britain. It is hence contended that all of the conditions necessary to the application of the treaty to the Cameron patent existed, and the limitation of its term to that of the British patent, as provided by law at the time it was issued, was removed, that law being repealed by the treaty, which, it is contended further, was self-executing, and the patent became a grant for seventeen years. Two propositions are involved in the contentions: (1) that the treaty applies to the Cameron patent; (2) that the treaty is self-executing. If either proposition be erroneous, appellant's contentions are untenable.

To say that the text of the treaty is without ambiguity does not carry us far. All of the conditions of a patent are not expressed in it, and when these are considered, construction is demanded and must be exercised. What is meant by the independence of a patent for the same invention in different states? It certainly was not intended to break down all of the provisions of law applicable to a patent; in other words, to interfere with the manner of its grant, and, it would seem by necessary implication, the extent of its grant as provided by the local law. A most essential attribute of a patent is the term of its duration, which is necessarily fixed and determined by the local law. And what difference in principle or effect is there if the term be expressed directly by a number of years or by something else, as a foreign patent which has a certain duration? The patent is no more contingent in one case than in the other. It is complete in both cases at the moment it is issued. In both cases its term has certain definition given by the local law. And this is the declaration of the cases, and that the integrity of its term and its independence were not affected by subsequent conditions which might terminate the foreign patent.

But it is contended that so to confine the treaty is to deprive it of significance and force because the decisions of this court had given to patents such independence. Pohl v. Anchor Brewing Co. 134 U. S. 381, 33 L. ed. 953, 10 Sup. Ct. Rep. 577. The answer is not sufficient. It might have been thought worth while to give conventional sanction to the...