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De Florez v. Raynolds.

founded on the re-issued letters patent. It was brought to a hearing on bill, answer, replication and proofs, and, on the 29th of June, 1878, a decree was made by the Court, (14 Blatchf. C. C. R., 505,) establishing the validity of the reissue and the fact of infringement by the defendants, and referring it to a master to take an account of the profits made by the defendants by the infringement, and awarding a perpetual injunction against the defendants from making, using or selling cans or boxes containing the patented invention.

There was introduced in evidence, by the defendants, a patent, granted in England to Bouvet, for the same inventions that are claimed in the re-issued United States' patent. This English patent was sealed January 6th, 1863, and dated September 19th, 1862. Bouvet filed, on the latter

. day, a provisional specification with the English Commissioners of Patents, and, on the 19th of March, 1863, he filed a full specification in the Great Seal Patent Office in England. The French patent to Bouvet, hereinafter referred to, was not introduced in evidence in the cause by either party. It covers the same inventions which are claimed in the re-issued United States' patent. It is now presented to the Court, and on it and on all the pleadings, proofs, and papers in the case, and sundry new affidavits, a motion is now made by the defendants, before the Court held by the Circuit Judge and Judge Wheeler, that the said decree be amended by inserting therein a finding that the plaintiff's re-issued patent is valid only for the term of 17 years from the date or publication of the prior patent, for the same invention, in France and England; that the defendants be permitted to amend their answer by setting up said prior French patent; that the decree and the proofs be opened in order to prove the same in the cause; and that the injunction herein be suspended pending said proof, or discharged; and for such other or further order or relief as may be just.

The answer to the bill sets up, that, by the act of, or by and with the consent of, Bouvet, the improvements described in the United States' re-issued patent were "patented in Great

De Florez v. Raynolds.

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Britain with date of September 19th, 1862, the British patent thereon having been sealed on the 6th day of January, 1863,” and that the said re-issued patent expired by limitation or operation of law on or before January 6th, 1875.

We have been furnished with a copy of the French patent, in the French language, in manuscript, duly authenticated by the proper authority in Paris, and with what purports to be a translation of it. The French law concerning patents, which was in force when the transactions took place in France in respect to said French patent, was that promulgated July 8th, 1814. Under that law patents are granted for 5, 10 or 15 years, according to the tax paid. Whoever wishes to take out a patent for an invention must deposit, under seal, at the office of the Secretary of the Prefecture, in a specified department, a petition, with a description of the invention, and necessary designs or patterns and a list of the pieces deposited. The patent begins to run from the time of such deposit. Within five days after such deposit the Prefect transmits all the pieces deposited to the Minister of Agriculture and Commerce. There they are opened and the petition is enrolled. If the application is regular, a decree of the Minister is delivered to the applicant and constitutes the patent. To such decree a duplicate of the description and designs is annexed. The patentee, during the duration of the patent, has a right to make additions, under the same regulations as to deposit of a petition, &c. A certificate of addition is delivered in the same form as the original patent, and has, from the dates of the demand and grant respectively, the same effect as the principal patent with which it expires. entee wishes to take out a patent for 5, 10 or 15 years, for an addition, instead of a certificate of addition expiring with the original patent, he must, besides the same formalities, pay a new tax, as on an original patent. In the French patent under consideration, there is, first, a patent granted to Bouvet for 15 years, and dated November 30th, 1861, with a description and a drawing annexed, referred to in the description. The text shows that the patent was “taken ” November 30th,

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De Florez v. Raynolds.

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1861. . The decree or grant appears to have been made by the Minister January 25th, 1852. Next, there is a certificate of an addition by Bouvet, of the date of December 21st, 1861, to the patent of November 30th, 1861, with a description and a drawing annexed. The text shows that the certificate of addition was taken ” December 21st, 1861. The certificate

“ appears to have been made by the Minister February 27th, 1862. Next, there is a certificate of an addition by Bouvet, of the date of November 27th, 1862, to the patent of November 30th, 1861, with a description and a drawing annexed, referred to in the description. The text shows that the certificate of addition was “taken” November 27th, 1862. The certificate appears to have been made by the Minister February 20th, 1863. It is apparent, from these papers, that the two certificates of addition expired at the same time the orig. inal patent expired, namely, at the end of 15 years from November 30th, 1861; that the first certificate of addition had effect as a patent from December 21st, 1861: and that the second certificate of addition had effect as a patent from November 27th, 1862

On the motion to amend the decree, it is insisted, by the defendants, that the plaintiffs' patent is valid only for 17 years from March 19th, 1863, (the date of the filing of the full specification of the English patent,) or only for 17 years from November 27th, 1862, (the date of the deposit of the description and drawing annexed to the second certificate of addition in the French patent) or only for 17 years from February 20th, 1863, (the date of the making of the certificate by the Minister.) On this view, it becomes unnecessary to consider, in respect to the English patent, any date earlier than March 19th, 1863, or, in respect to the French patent, any date earlier than November 27th, 1862, so far as the motion to amend the decree is concerned, or so far as the motion to amend the answer is concerned, or so far as the motion to open the decree and the proofs is concerned, or so far as the motion to discharge the injunction is concerned. The defendants do not contend, on any such motion, that the plaintiffs' patent is

De Florez v. Raynolds.

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valid only for 17 years from a date earlier than March 19th, 1863, in view of the English patent, or only for 17 years from a date earlier than November 27th, 1862, in view of the French patent and certificates of addition. No motion is now made to limit or define the time of the expiration of the United States' patent, in reference to the time down to which the accounting must extend, and we do not consider the question whether, for the purposes of such accounting, the United States' patent may not expire at a date earlier than 17 years from November 27th, 1862, namely, at a date 17 years from a date earlier than November 27th, 1862, in view of either the English patent or the French patent or certificates of addition. Norisit, under these views, necessary to consider the English patent at all. It is plain that the second certificate of addition to the French patent, taken in connection with the original French patent and the first certificate of addition, show fully and patent the same inventions patented by the United States' re-issued patent. Whether such inventions are fully shown and patented by the English provisional specification, or by the French original patent alone, or by the latter in connection with the first certificate of addition, we do not now consider or decide, for any purpose.

We determine, on inspection, and in the absence of any affidavit to the contrary on the part of the plaintiffs, that the inventions patented by the French patent and the two certificates of addition to it, all three taken together, are the same as those patented by the United States' re-issued patent, to an extent sufficient to warrant the granting of the motion to amend the decree, and to amend the answer, and to open the decree and the proofs, and to discharge the injunction. The French patent and certificates of addition are not now admitted, as a patent to a third party, to defeat the plaintiffs’ patent on the question of novelty, but only on the question of the extent of duration of the patent. The patent can have no life beyond the time limited by statute. The question of such life, in view of the French patent and certificates of addition, has not been before presented and passed

De Florez v. Raynolds.

upon. It can now be presented and passed upon, on a motion to vacate or limit the duration of the injunction, or on a motion by the plaintiffs for an attachment for violating the injunction. The words “perpetnal injunction,” in the decree, mean only for the life of the patent. That must be determined by the statute and all the facts of the case, and not merely by the terms of the grant in the patent; and an inter

; locutory decree is always open to amendment and correction. In this view, it seenis proper, that the answer should be amended, to set up the French patent and certificates of addition, and that the decree should be amended, by fixing a date beyond which, for the purposes of the injunction, the patent cannot have life, and by allowing the French patent and certificates of addition to be pnt in evidence in the proofs, with such relevant proofs respecting the same and their contents as either party may wish to offer. We think, that, in view of the subject matter of the application, the defendants have not been guilty of laches, that the application does not come too late, and that the reasons assigned in excuse for not making an earlier application are sufficient. But, this case is no precedent for the case of an application to set up a defence to defeat a patent for want of novelty.

The plaintiffs' patent runs, on its face, for 17 years from June 2sth, 1864. The question is as to when it expires. The plaintiffs contend, that, under the statute, it runs according to its tenor, and does not expire until the end of 17 years from June 28th, 1864. It becomes necessary, therefore, to examine the statutes on the subject.

By the Act of April 10th, 1790, (1 U. S. Stat. at Large, 109,) a patent was to be granted to the inventor “for any term not exceeding fourteen years.” By the Act of February 21st, 1793, (1 Id., 318,) it was required that the invention should have been “not known or used before the application," and the patent was to be granted "for a term not exceeding fourteen years,” and only to a citizen of the United States, as inventor, or his assigns. By the Act of April 17th, 1800, (2 Id., 37,) the privilege was extended to alien inventors,

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