Huber v. Nelson Manuf Co

• Decision Date: 27 March 1893
• Docket Number: No. 143,143
• Citation: 148 U.S. 270,37 L.Ed. 447,13 S.Ct. 603
• Parties: HUBER et al. v. N. O. NELSON MANUF'G CO
• Court: U.S. Supreme Court

148 U.S. 270

13 S.Ct. 603

37 L.Ed. 447

HUBER et al.

v N. O. NELSON MANUF'G CO.

No. 143.

March 27, 1893.

Paul Bakewell, A. S. Browne, Anthony Pollok, and Philip Mauro, for appellants.

S. N. Taylor and B. F. Rex, for appellee.

Mr. Justice BLATCHFORD delivered the opinion of the court.

This is a bill in equity, filed October 3, 1887, in the circuit court of the United States for the eastern division of the eastern district of Missouri, by Henry Huber and James E. Boyle, as plaintiffs, against the N. O. Nelson Manufacturing Company, a Missouri corporation, for the alleged infringement of two patents.

The first patent sued upon was granted June 27, 1882, No. 260,232, for an 'improvement in water-closets,' to Henry Huber, one of the plaintiffs, as assignee of Stewart Peters and William Donald, of Glasgow, Scotland. That patent sets forth that Peters and Donald had presented a petition for the grant of a patent for such improvement, and had assigned their right, title, and interest in it to Huber, and that a description of the invention was contained in the specification annexed to the patent, and the patent granted to Huber, his heirs or assigns, for 17 years from June 27, 1882, the exclusive right to make, use, and vend the invention throughout the United States and the territories thereof, 'subject to the limitation prescribed by section 4887, Rev. St., by reason of English patent, dated April 7, 1874, No. 1207.'

The answer of the defendant avers that although the British patent, No. 1207, was granted to Peters and Donald on April 7, 1874, for 14 years from that date, it was subject to the provisions and conditions of section 2 of chapter 5 of the act of 16 Vict., approved February 21, 1853, and to the condition thereunder that if Peters and Donald, their executors, administrators, or assigns, did not pay a stamp duty of £100 on the patent before the expiration of seven years from its date, it should become void; that such duty was not paid, but the patentees voluntarily allowed the patent to expire at the end of seven years from its date; and that it became void thereby, and since April 7, 1881, has been of no force or effect.

The English patent covered the same invention which is covered by United States patent No. 260,232. Peters and Donald assigned all their interest in the invention to James E. Boyle, October 27, 1881. The application for the United States patent was filed November 29, 1881; and, after the patent was granted, Boyle assigned his interest to Huber, November 26, 1881. Thus it appears that the application for No. 260,232 was filed more than seven months after the English patent to Peters and Donald had become void, and that the invention was assigned by Peters and Donald to Boyle more than six months after that patent had become void.

Sections 4886 and 4887 of the Revised Statutes, which were taken from sections 24 and 25 of the act of July 8, 1870, (chapter 230, 16 St. p. 201,) read as follows:

'Sec. 4886. Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.

'Sec. 4887. 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 more than seventeen years.'

It was contended for the defendant in the circuit court, and was so held by that court, that patent No. 260,232 was void, under section 4887 of the Revised Statutes, because it was granted after the English patent to Peters and Donald had ceased to exist. The opinion of Judge Thayer, who held the circuit court, is reported in 38 Fed. Rep. 830. The facts above set forth are undisputed. Judge Thayer held that, under the decision of this court in Refrigerating Co. v. Hammond, 129 U. S. 151, 9 Sup. Ct. Rep. 225, patent No. 260,232 was void.

In Refrigerating Co. v. Hammond, a United States patent had been granted November 20, 1877, for 17 years, on an application filed December 1, 1876. A patent for the same invention had been grated in Canada, January 9, 1877, to 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, on December 12, 1881, was extended for five years from January 9, 1882, and on December 13, 1881, for five years from January 9, 1887, under section 17 of the Canada act assented to June 14, 1872, (35 Vict. c. 26.) On those facts, this court held, under section 4887 of the Revised Statutes, that as the Canada act was in force when the United States patent was applied for and issued, and the Canada extension was a matter of right, at the option of the patentee, on his payment, of a required fee, and the 15-years term of the Canada patent had been continuous and without interruption, the United States patent did not expire before the end of the 15-years duration of the Canada patent. Of course, the Canada patent was in force when the United States patent was granted, and the question presented in the present case did not distinctly arise. Judge Thayer held that it was a logical conclusion from the decision in Refrigerating Co. v. Hammond that a United States patent which was issued subject to the provisions of section 4887 remained in force no longer than the foreign patent having the shortest term; and that the omission to do an act required by the foreign law, which worked an absolute forfeiture of the foreign grant, extinguished the United States patent.

The circuit court also held that, as section 4887 enacted that the United States patent granted for an invention which had been previously patented in a foreign country should be so limited as to expire at the same time with the foreign patent, it presupposed that, at the date of the United States patent, there was in force a foreign patent for the invention; and that, if there was no such foreign patent in force when the United States patent issued, but only though theretofore granted for the invention, theretofore granted for the invention, there was no authority in law for the United States grant. In other words, the moment patent No. 260,232 was granted, section 4887 took effect upon it, and caused it to expire in the same instant in which it was created, or to be strangled in its birth.

The final decree of the circuit court in the present case was entered May 25, 1889. It decreed, among other things, that No. 260,232 was issued without authority of law, and was null and void. Since that time, and on March 24, 1890, this court decided the case of Pohl v. Brewing Co., 134 U. S. 385, 10 Sup. Ct. Rep. 577, in which we held that a United States patent ran for the term for which the prior foreign patent was granted, without reference to whether the latter patent became lapsed and forfeited, after the grant of the United States patent, by reason of the failure of the patentee to comply with the requirements of the foreign patent law. But that case did not distinctly cover the presont one, because in that case the foreign patent was in force when United States patent was granted, and it became lapsed or forfeited thereafter, in consequence of the failure of the patentee to comply with the requirements of the foreign patent law.

We are of opinion that, as in the case at bar the foreign patent was not in force when the United States patent was issued, the latter patent never had any force or validity. The delay in applying for the United States patent, until after the foreign patent expired, amounted to an abandonment of the right to a United States patent. This is in accordance with the view of the commissioner of patents in Mushet's Case, Com. Dec. 1870, p. 106.

The other patent sued on in the present case is reissued letters patent No. 10,826, granted to James E. Boyle, April 19, 1887, for an improvement in flushing apparatus for water-closets, claims 1 and 2 of which are alleged to have been infringed. The original patent, No. 291,139, was granted to Boyle, January 1, 1884, and the application for the reissue was filed January 2, 1885.

The answer sets up the invalidity of such reissue, and avers that the original patent was not inoperative or invalid by reason of an insufficient or defective specification, but was surrendered, after unreasonable delay, solely for the purpose of enlarging the specification and claims, and to cover improvements not within the contemplation of Boyle when he filed his original application and received his original patent; that the claims of the reissue unduly broadened the original patent; that the further design of Boyle in asking for the reissue was to cover apparatus placed upon the market before such reissue was applied for, by Frank B. Hanson, under letters patent No. 308,358, issued to Hanson, November 25, 1884, but applied for June 12, 1883; that said reissue No. 10,826, and especially claims 1, 2, and 4 thereof, were not for any invention described, indicated, or suggested in the original patent No. 291,139; that the commissioner...