United Shoe Machinery Co. v. Duplessis Shoe Machinery Co.

• Decision Date: 02 August 1907
• Docket Number: 689.
• Citation: 155 F. 842
• Parties: UNITED SHOE MACHINERY CO. v. DUPLESSIS SHOE MACHINERY CO.
• Court: U.S. Court of Appeals — First Circuit

155 F. 842

UNITED SHOE MACHINERY CO. v. DUPLESSIS SHOE MACHINERY CO.

No. 689.

United States Court of Appeals, First Circuit.

August 2, 1907

Elmer P. Howe and Benjamin Phillips, for appellant.

T. Hart Anderson, for appellee.

Before COLT and PUTNAM, Circuit Judges, and BROWN, District Judge.

PUTNAM Circuit Judge.

This is a bill in equity based on an alleged infringement of letters patent No. 412,704, covering an invention for an alleged improvement in sewing machines, and issued to Zachary T French and William C. Meyer on October 8, 1889, on an application filed on July 30, 1888. The bill was filed on December 21 1903, and it alleged infringements on and after October 1 1903. The decree below was for the respondent.

The only question we need consider is whether, under section 4887 of the Revised Statutes, with its various amendments, the patent in suit was terminated on September 17, 1902, by reason of the termination of a certain British patent on that day. The legal questions involved relating to the identity of the patenting were fully discussed by us in Westinghouse Electric Co. v. Stanley Instrument Co., 138 F. 823, 71 C.C.A. 189, in an opinion passed down on June 14, 1905, and in Thomson-Houston Electric Co. v. McLean, in an opinion passed down on April 11, 1907, 153 F. 883. The learned judge of the Circuit Court correctly applied the principles stated in those opinions to the facts of this case. We have no occasion to reconsider anything said by him on that issue. This especially applies to his observation, not limited to any particular claim in either patent, but relating to the whole of each patent, to the effect as follows:

'I can find in neither patent here in question evidence of 'an essential, novel, and patentable improvement on what was claimed' in the other.'

The complainant maintains that the British patent was taken out by an intermeddler. The position on this point is as follows: It is not questioned that Mr. Gregory, a patent solicitor, was authorized to represent the inventor in England, and that he sent instructions to Brooks, his correspondent there, the purpose of which was to secure simultaneous patenting. At some time, not named, a letter was discovered from one Munyon and one Goodyear to Brooks of September 14, 1888, directing Brooks to disregard Gregory's instructions, and to file the application in each country as soon as possible. There is a failure to directly prove any authority of Munyon and Goodyear to thus override Gregory. Nevertheless the Circuit Court, and we on appeal, proceeding on a bill in equity of this character as finders of the facts, have as wide a range for drawing inferences as a jury. There is no evidence that the inventor, or whoever controlled the invention, ever repudiated the British patent until after this suit was commenced, or attempted to do so. As he, whoever he was, knew that there was to be an application for a British patent, and that there was a purpose to take it out, it is beyond reasonable probability to assume that he never informed himself as to the issue of such patent. On the other hand, the Circuit Court, and we, are entitled to assume that he obtained knowledge of what was done and acquiesced therein. Any hypothesis which would reject the conclusion of the Circuit Court in this respect, to the effect that the British patent was properly taken out, would be unreasonable.

The only other topic which we need consider is covered by the proposition of the complainant based on a series of conventions, or treaties, for the 'international protection of industrial property,' by which is meant especially trade-marks and patents. The first was signed at Paris on March 20, 1883, between various nations, to which ratification by the United States was completed on March 29, 1887. Articles 3, 4, and 5 of this treaty relate to patents for inventions. A subsequent treaty, which is of no consequence in this connection, as it related only to some details, was signed at Madrid on April 15, 1891. The treaty in which we are particularly interested was signed at Brussels on December 14, 1900, and was proclaimed by the President of the United States on August 25, 1902, 32 Stat. 1936.. By the agreement among the ratifying governments, this treaty which is ordinarily called 'An additional act,' went into effect on September 14, 1902, three days before the British patent in question here terminated. 32 Stat. 1943. Article 1, p. 1939, reads as follows:

'The International Convention of March 20, 1883, is modified as follows:

'I. Article 3 of the convention shall read as follows:

'Art. 3. Are assimilated to the subjects or citizens of the contracting states, the subjects or citizens of states not forming part of the Union, who are domiciled or have bona fide industrial or commercial establishments upon the territory of one of the states of the Union.

'II. Article 4 shall read as follows:

'Art. 4. Any one who shall have regularly deposited an application for a patent of invention, of an industrial model, or design, of a trade or commercial mark, in one of the contracting states shall enjoy for the purpose of making the deposit in the other states, and under reserve of the rights of third parties, a right of priority during the periods hereinafter mentioned.

'In consequence, the deposit subsequently made in one of the other states of the Union before the expiration of these periods cannot be invalidated by acts performed in the interval, especially by another deposit, by the publication of the invention or its working, by the sale of copies of the design or model, by the employment of the mark.

'The periods of priority above mentioned shall be twelve months for patents of invention, and four months for design or industrial models, as well as for trade or commercial marks.

'III. There is inserted in the convention an article 4 bis, 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 patents 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.'

The complainant maintains that the first paragraph of article 4 bis relates specifically to the topic we have under consideration, and that the declaration of independency is intended to prohibit any result by virtue of which a patent granted by one nation for a specified statutory term should be abbreviated as to its term by reason of the expiration of any patent granted by another nation. The paragraph relied on is obscure, because there are so many different aspects in which a patent, or anything, may be independent of or dependent on something else.

There were several international conferences between 1883 and 1900 on the topic of patents and trade-marks to which we need not refer, except the one at Brussels at which a convention was signed on December 14, 1897, never in force in the United States.

One question is the weight to be given to the article 4 bis under the Constitution of the United States. The Constitution speaks of treaties and statutes in the same breath; and they have always been practically put in the same class by the Supreme Court. More than 100 years ago, in United States v. The Schooner Peggy, 1 Cranch, 103, 110 (2 L.Ed. 49) the court said:

'But yet where a treaty is the law of the land, and as such affects the right of parties litigating in court, that treaty as much binds those rights, and is as much to be regarded by the court as an act of Congress.'

There never has been any doubt on this proposition. Consequently it was said absolutely in The Cherokee Tobacco, 11 Wall. 616, 621 (20 L.Ed. 227):

'The effect of treaties and acts of Congress, when in conflict, is not settled by the Constitution. But the question is not involved in any doubt as to its proper solution. A treaty may supersede a prior act of Congress, and an act of Congress may supersede a prior treaty.'

This has been repeated many times, the last in Hijo v. United States, 194 U.S. 315, 324, 24 Sup.Ct. 727, 48 L.Ed. 994. Consequently, so far as judicial action is concerned, a later treaty has the same effect on a prior statute as a later statute has; and, so far as the conventions pertinent here are concerned, the fact that the Constitution commits to Congress the power 'to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries,' is of no consequence, because all the powers of Congress are especially vested, either directly or indirectly, by the Constitution in similar manner; and to hold that a treaty could not abrogate a prior statute regarding patents because this particular legislative power is committed to Congress could not be permitted so long as the general rule as to statutes superseding treaties, and, vice versa, declared by the Supreme Court in the way we have pointed out exists. The rules which we have explained with reference to the relation of treaties to statutes, and as to treaties becoming immediately effective, are the necessary sequence of the decisions explained in United States v. Lee Yen Tai, 185 U.S. 213, 220, 221, 222, 22 Sup.Ct. 629, 46 L.Ed. 878.

But the respondent, now the appellee, maintains that article 4 bis of the convention of 1900 was not effectual until enacted into a statute by Congress. An examination of the decisions of the Supreme Court on this topic...