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The American Diamond Rock Boring Company v. Sheldon.

THE AMERICAN DIAMOND ROOK BORING COMPANY

VS.

CHARLES SHELDON AND OTHERS.

IN EQUITY.

Letters patent for an invention were granted in England, dated September 3d,

1862. The specification was filed in the Great Seal Patent Office there, March 3d, 1863. Letters patent for the same invention were granted by the United States, July 14th, 1863, for 17 years. The date of the application for the

United States patent was not shown: Held, (1.) That the date of the filing of the specification in England must be taken

as the date of the patenting in England, for the purposes of $ 6 of the Act of

March 3d, 1839, (5 U. S. Stat at Large, 353 ;) (2.) That the invention was, therefore, not patented in England more than six

months before the United States patent was applied for, and so the Act of 1839 did not apply, and the United States patent was valid for 17 years from

July 14th, 1863. The burden of proof is upon a party who claims that a patent should be limited

in duration, to show the facts which would limit it. (Before WHEELER, J., Vermont, November 12th, 1879.)

WHEELER, J. This cause has been further heard upon a motion of the plaintiff for an injunction, which is opposed on the ground that the patent has expired. The patent was granted July 14th, 1863, for seventeen years, and would expire, according to its own terms, July 14th, 1880. English letters patent for the same invention were granted, dated September 3d, 1862, pursuant to which the specification was filed in the Great Seal Patent Office, March 3d, 1863.

The Act of July 4th, 1836, § 7, (5 U. S. Stat. at Large, 119,) provided for issuing patents if the inventions had not . been patented or described in any printed publication in this or any foreign country, but, (8 8,) that nothing in that Act should deprive an inventor of the right to a patent by reason of his having previously taken out letters patent in a foreign country, and the same having been published, at any time

The American Diamond Rock Boring Company v. Sheldon.

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within six months next preceding the filing of his specification. The Act of March 3d, 1839, $ 6, (5 U. S. Stat. at Large, 354,) provided that no person should be debarred from receiving a patent for an invention by reason of the same haring been patented in a foreign country more than six months prior to his application, but that, in all cases, every such patent should be limited to the term of fourteen years from the date or publication of such foreign letters patent. Patents were, at that time, granted for fourteen years, and might be extended seven years more. By the Act of March 2d, 1861, § 16, (12 U. S. Stat. at Large, 249,) all patents thereafter granted were to remain in force seventeen years, without extension. In Weston v. White, (13 Blatchf. C. C. R., 364,) it was held, that the effect of the Act of 1861 was to change the term of fourteen years to seventeen, as well in respect to patents limited by prior foreign patents, as in respect to others. The defendants claim, that, under these statutes and that holding, this patent is limited to seventeen years from the date of the English patent, which would expire September 3d, 1879, or, at least, to seventeen years from the filing the full specification of that patent, which would expire March 3d, 1880. The plaintiff insists that it is not limited by that patent at all. The Act of 1839, by its express terms, applies only to patents for inventions patented in some foreign country more than six months prior to the application for a patent in this country. The date of the application in this country does not appear, but it must have been earlier than the date of the patent, or fully as early. Assuming that it was co-eval with the patent, then the question arises whether the invention was patented in England more than six months before that. The English patent was dated more than six months before, but the full specification was not filed until within six months before. English patents are granted upon condition that a full specification shall be filed at some time within six months from the date. (Agnew on Pat., 32; Woodbury, J., in llogg v. Emerson, 6 How., 479.) As said by Grose, J., in Hornblower v. Boulton, (8 D. & E., 105,) the

The American Diamond Rock Boring Company v. Sheldon.

English patent was nothing without the specification, and the patentee could gain no advantage by it. The question is, was it patented there before the specification was filed. In Howe V. Morton, (1 Fish. Pat. Cas., 586,) it was held, in an elaborate opinion, that an invention was not patented abroad until there was a full and perfected patent. And, in Smith v. Goodyear Dental Vulcanite Co., (3 Otto, 486,) the question seems to be settled, or treated as settled before, in the same way. Mr. Justice Strong said, page 498: “Of the English patent of Charles Goodyear it is enough to say, that, though the provisional specification was filed March 14th, 1855, the completed specification was not until the 11th of September following. It was, therefore, on the last mentioned date that the invention was patented."

So, this patent does not depend at all upon the Act of 1839. It was grantable under the provisions of the Act of 1836, without resorting to the Act of 1839, and does not come within the latter Act. By the terms of the two Acts, inventions patented abroad more than six months before were limited to fourteen years from the date or publication of the foreign patent, while those patented abroad within six months before were not affected at all by the foreign patent. This patent is one of the latter class, and, so far as now appears, is good for the term of seventeen years from its date, under the Act of 1861. In Weston v. White, the foreign patent was several years before the application in this country.

This case, as it now stands upon this question, is open to the further remark, that the Act of 1839 applied only to patents for inventions patented in a foreign country more than six months prior to the application for the patent here. As the date of the application does not appear apart from the date of the patent, it does not appear that the date of, or the application for, the English patent was more than six months, or any other space of time, prior to the application liere, unless the date of the patent is to be taken as the date of the application, upon this question. Upon a question of priority of invention, the presumption, in the absence of proof, would

VOL. XVII.-20

In re The Petition of Frederick Pentlarge and William Beeston,

be, that the application was of the same date as the patent; but there the burden of proof would be upon the party claiming a prior application describing the invention, to show it. Here, the burden rests upon the party claiming that the patent should be limited, to show the facts which would limit it. This would include showing the application, and that the invention was patented abroad more than six months prior to it. These essential facts, necessary to limit this patent, are lacking, so far as the English patent is concerned ; and, as that is the only foreign patent shown by the record, for this invention, they are lacking, so far as this question, as now presented, is concerned. These considerations obviate all necessity for considering the question as to whether the term of the patent would begin to run from the date of the English patent, or from the time of the filing the full specification under it, which would arise, if this patent came within the Act of 1839, and was supposed to arise, until the connection and application of that Act were particularly noticed.

This objection is overruled, but the injunction is withheld to await the decision on a motion made by the defendants in respect to the French patent.

Charles F. Blake, for the plaintiff.

E. J. Phelps and W. G. Veazey, for the defendants.

IN THE MATTER OF THE PETITION OF FREDERICK PENTLARGE

AND WILLIAM BEESTON.

R. having sued F., in equity, for the infringement of a patent, F., in writing,

admitted R's righi, and agreed on the damages to be paid, and to consent to a decree therefor and for a perpetual injunction. Such consent was given and the decree was entered, the damages were paid, and the injunction was issued. Many terms of Court having elapsed since the entry of the decree, F.

In re The Petition of Frederick Pentlarge and William Beeston.

applied for leave to file a supplemental bill, to set aside the decree, on the

ground that the agreement was entered into under a mistake of fact: Held, (1.) That the application was really to file a bill of review and was too late,

under Rule 88, in Equity; (2.) That, the decree having been entered by consent, a bill of review to set it

aside could not be entertained; (3.) That the agreement operated as an estoppel.

(Before BENEDICT, J., Eastern District of New York, November 14th, 1879.)

BENEDICT, J. The petitioners, being parties defendant to an action brought against them by Rafael Pentlarge, to recorer damages for the infringement of a certain patent, entered into a written agreement, under seal, with the plaintiff, wherein they expressly admitted the validity of the plaintiff's patent, and his exclusive right to the invention described therein, and agreed upon the amount of damages to be paid for their infringement, and to consent to a decree upholding the patent, and adjudging the sum of $2,000 to be due as damages, and awarding a perpetual injunction against future infringement by them. In accordance with this agreement, a consent to the decree described therein was given, and, upon it, such a decree was duly entered. The damages awarded by the decree were thereafter paid, and the perpetual injunction awarded by the decree was duly issued. The defendants now, many terms of Court having elapsed since the entering of the decree, apply, by petition, for leave to file a supplemental bill, for the purpose of procuring the decree so entered by consent to be set aside, upon the ground that the agreement above-mentioned was entered into under a mistake of fact. To such an application there are several fatal objections. In the first place, the application is, in substance, for leave to file a bill of review. It is, therefore, governed by the 88th Equity Rule, and comes too late. In the second place, a bill of review, for the purpose of 'setting aside a decree entered by consent, without fraud, will not be entertained. “A decree taken by consent cannot be set aside by a bill of review, or a bill in the nature of review.” (2 Daniell's Ch. Pr., 4th Am. ed., 1575; French v. Shotwell, 5 Johns. Ch. R., 555.)

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