THE DECISIONS

OF THE

Supreme Court of the United States,

AT

OCTOBER TERM, 1894.

Authenticated copy of opinion record strictly followed, except as to such reference words and figures as are inclosed in brackets.]

FERDINAND SULZBERGER, Samuel Argued Nov. 15, 16 and 19, 1894. Decided Weil, and Frederick Joseph, doing business under the firm name of Scharzchild & Sulzberger.

As to what constitutes infringement of patent; similarity of devices; designs; combinations; machines; As to what reissue may cover, see note to O'Reilly construction of patent, see note to Royer v. Coupe, v. Morse, 14: 601.

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the better understood, and it can be the better | the language of the provision, taken by itself, determined whether it admits of more than seems plain. one interpretation.

Church of Holy Trinity v. United States, 143 U. S. 457, 458 (36: 227); United States v. Lacher, 134 U. S. 624 (33: 1080); Atkins v. The Fibre Disintegrating Co. 85 U. S. 18 Wall. 272 (21:

841).

Pennock v. Dialogue, 27 U. S. 2 Pet. 1 (7: 327); Guarantee Ins. T. & S. D. Co. v. Sellers |(“Siemens v. Sellers") 123 U. S. 276 (31: 153).

The main question in this case, and upon the same patent, was before this court in the case of Bate Regrigerating Co. v. Hammond, If one interpretation involves an unreason-129 U. S. 151 (32: 645). The court expressly able, and a different one an entirely reasonable result, the court should say that the latter was the true meaning of Congress.

Endlich, Stat. Interp. SS 25, 27; Bate Refrigerating Co. v. Gillett, 31 Fed. Rep. 809.

Any unjust result or consequence which would flow from a particular interpretation of a statute has always been regarded as a reason which, of itself, justifies and requires the work of interpretation.

Wilson v. Rousseau, 45 U. S. 4 How. 646 (11: 1141).

declined to decide it, from which it may be inferred that it is probable the court regarded the question as one of doubt.

The statute (§ 4887) is, therefore, open to interpretation; and the inquiry is what Congress intended by the words "first patented or caused to be patented in a foreign country;" and by the words "previously patented in a foreign country." Do they mean patented in a foreign country before the issue of the patent here, or before the application for it? A review of the course of legislation upon the subject, in the

Section 4887 is a mere revision and re-enact-light of justice and reason, and the clear polment of section 25 of the Act of 1870, and means precisely what that section means.

icy of the law, will leave no reasonable doubt that the latter meaning was the one intended. As the section in question was substantially framed by the same hands, in the prior revis

Edison Electric Light Co. v. United States Electric Lighting Co. 35 Fed. Rep.134; Guaran tee Ins. T. & S. D. Co. v. Sellers ("Siemens v. Seling statute of July 8th, 1870, and must be taken lers") 123 U. S. 276 (31: 153).

All revisions are open to examination, in order that it may be more clearly seen whether the pre-existing law is really changed; and, upon such examination, there is a fixed presumption that the prior law is not changed, unless there be evidence that such was the legislative intent.

to have the same meanings as the corresponding provision in that statute. Edison Electric Light Co. v. United States Electric Lighting Co. 35 Fed. Rep. 134; Guarantee Ins. T. & S. D. Co. v. Sellers ("Siemens v. Sellers" ) 123 U. S. 276 (31: 153). The inquiry should be directed to what the law had been, and was, at the time when the revision of 1870 was framed.

McClurg v. Kingsland, 42 U. S. 1 How. 202, Pennock v. Dialogue, 27 U. S. 2 Pet. 1 (7: 327); 211 (11: 102, 105); Taylor v. Delancey, 2 Cai. Shaw v. Cooper, 32 U. S. 7 Pet. 292 (8: 689). Cas. 143; Yates' Case, 4 Johns. 316; Goodell v. The taking out of a patent in another counJackson, 20 Johns. 693, 11 Am. Dec. 351; Retry, before application for a patent here, would Brown, 21 Wend. 316, 319; Douglass v. How efectually defeat that application, because it land, 24 Wend. 35; Theriat v. Ilart, 2 Hill, would be a voluntary and complete disclosure, 380; Croswell v. Crane, 7 Barb. 191; Elwood v. as much as a publication of the discovery Klock, 13 Barb. 50; Dominick v. Michael, 4 abroad by the inventor would be. Sandf. 374; Taggard v. Roosevelt, 8 How. Pr. 141; Jenkins v. Fahey, 73 N. Y. 355; The L. W. Eaton, 9 Ben. 289; The Brothers, 10 Ben. 400.

This section of the statute of 1870 (25) declared that the "the patent shall expire" with the foreign patent. Rev. Stat. 4887 enacted that "the patent shall be so limited as to expire,"

etc.

Pennock v. Dialogue, 27 U. S. 2 Pet. 1, 22 (7: 327, 334); Shaw v. Cooper, 32 U. S. 7 Pet. 292, 313 (8: 689, 697); O'Reilly v. Morse, 56 U. S. 15 How. 62, 127 (14: 601, 629).

The Act of 1832 made no distinction between citizens and foreigners in respect to the privilege of applying for a patent.

It made, however, the language "not before known or used" refer, not to the date of the application, but to the date of the discovery.

Compare section 1 of chap. 7 of Statute of 1790, sections 1, 3 and 6 of chap. 2 of Statute of 1793; sections 6 and 7 of chap. 357 of Stat

A change of plan or policy is not to be de duced from a revision unless the language is not only apt, but so plain and unequivocal to demonstrate that intention beyond a doubt. In other words, the use in a revision of lan-ute of 1836. guage plain enough, if taken by itself, to effect a change in the law, will not be allowed to have the effect, unless the court is satisfied that Congress in fact realized that effect, contemplated it and actively intended it.

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A slight further change of policy was introduced by the Act of 1836 in respect to the requirement that the applicant should be the first inventor.

Pennock v. Dialogue, 27 U. S. 2 Pet. 1, 11 (7: 327, 331).

Canan v. Pound Mfg. Co. 23 Blatchf. 173; United States v. Bowen, 100 U. S. 508 (25: After the Act of 1839, those who applied for 631): Blake v. National City Banks of New the American patent, within six months after York, 90 U. S. 23 Wall. 307 (22: 119); Meyer obtaining a foreign patent, were entitled to rev. Western Car Co. 102 U. S. 1 (26: 59); But-ceive one for the same period as patents ran in terworth v. United States, 112 U. S. 50, 58 (28: 656, 658).

Courts will go beyond the particular language in which a statutory provision is expressed to ascertain its meaning, even when

other cases. Those guilty of laches and not making application within this period, might still apply, provided their inventions had not got into "public and common use;" but, even when thus entitled to apply, the patent granted

was to be limited to a period of fourteen years from the date of the foreign letters.

Ex parte Cochran (1889) U. S. Pat Com. Dec; Kendrick v. Emmons, 2 Banning & A. 208; (1876) U. S. Pat. Com. Dec. 204.

A well settled procedure grew up under this construction of the law. The ordinary course was to apply here and hold back the proceed ings, take out the foreign patent meantime (and, therefore, without risk of losing it from premature publication) and then complete the proceedings and take the U. S. patent.

O'Reilly v. Morse, 56 U. S. 15 How. 62, 126 (14: 601, 629).

After this plan had stood without objection for more than thirty years, the commissioners appointed to revise the laws of the United States completed a revision of the laws relating to patents, which was enacted as the Act of 1870.

It was re-enacted in the general revision of 1873, without any change, save a slight and wholly unimportant one in mere phraseology. The provision contained in it relative to foreign patents is easily susceptible of an interpretation which makes it, what it was declared to be, a re-enactment of the prior law without material change of plan or substance. It is our contention that it is such a re-enactment. The history of the Statute of 1870, and the incidents attending its passage, demonstrate with a certainty which leaves no room for doubt that the words "first patented" mean and only mean, patented "before application." (A history of the passage of this Act is here given by counsel.)

This method of ascertaining the intent designed to be expressed by the language of section 25 of the Act of 1870, is in accordance with the rules of legal interpretation..

Kendall v. Winsor, 62 U. S. 21 How. 322 (16: 165).

The Patent Act treats everything in the Patent Office, when done, as if done the moment the application is filed. The right is always to be determined as of the date of the application.

Adams v. Jones, 1 Fisher's Pat. Cas. 527, 530; Woodbury Patent Planing Mach. Co. v. Keith, 101 U. S. 485 (25: 941); Root v. Ball, 4 McLean, 179.

The delay which may occur in the Patent Office in making out the patent cannot operate to the injury of the applicant.

Gray v. Brignardello, 68 U. S. 1 Wall. 627 (17: 693); Fishmonger's Co. v. Robertson, 3 C. B. 970; Mitchell v. Overman, 103 U. S. 62, 64 (26: 369, 370); Coughlan v. District of Coiumbia, 106 U. S. 7, 11 (27: 74, 75); Clay v. Smith, 28 U. S. 3 Pet. 411 (7: 723).

It is a rule of interpretation to assign a meaning, if it be possible, to all the language which a legislature employs.

Montclair Tup. v. Ramsdell, 107 U. S. 147, 152 (27: 431, 432).

The patent system creates contract relations; they are of its very gist and substance. Our reading of the statute gives force to those relations. The defendant's reading destroys the obligations and the substance of any contract relation. The Patent Act, offers a reward to those who will supply the public with new inventions. Rev. Stat. SS 4884, 4886, 4888, 4893. The acceptance of the offer is made by the performance by the offeree of the consideration. It is this performance which converts the offer into a binding contract.

Langdell, Summary of the Law of Contracts, 4.

Under the Patent Law this performance is fully effected by the filing of the application, accompanied with the required fee.

Grant v. Raymond, 31 U. S. 6 Pet. 218 (8: 376).

It is one of the highest functions of the judicial office to ascertain the true meaning of the language actually employed by bringing to bear on it those lights and guides which are to be found outside of the language.

United State v. Kirby, 74 U. S. 7 Wall. 482 (19: 278).

Guarantee Ins. T. & S. D. Co. v. Sellers ("Siemens v. Sellers”) 123 U. S. 276 (31: 153); Furman v. New York, 5 Sandf. 516, aff'd 10 N. Y. 567; United States v. Lynde, 78 U. S. 11 Wall. 632 (20: 230); Cutting v. Cutting, 86 N. Y. 522, 527; Blake v. National City Bank of New York, 90 U. S. 23 Wall. 307 (23: 119). To hold out to an inventor the promise of a patent for seventeen years as a stimulant to effort, to call upon him to apply with promptitude in this country, to encourage him also to make application abroad, and then, when he has accepted the invitations, to punish him by shortening his term because, in consequence of delays which have been caused by the neglect of the government itself, the foreign patent is first issued, would make the public take advantage of its own administrative carelessness in the Patent Office. This should not be imputed to a government. Grantv. Raymond, 31 U. S. 6 Pet. 218, 244123 U. S. 276 (31: 153). (8: 376, 385).

The interpretation asserted by the appellant is supported by every just consideration, and is in harmony with every rule of construction. It should be unhesitatingly accepted. It is an easily admissible interpretation. It is argued that this would be to read into the statute words not found there. Let it be so. Noth ing is more common. It is in conformity with reason and justice, and with the general relation of the law.

All laws should receive a sensible construction. The general terms should be so limited in their application as not to lead to injustice.

United States v. Babbitt, 66 U. S. 1 Black, 55 (17: 94); Stowel v. Zouch, Plowd. 366; Bloomer v. McQuewan, 55 U. S. 14 How. 539 (14: 532); Union Paper Bag Mach. Co. v. Nixon, 105 U. S. 766 (26: 959); Guarantee Ins. T. & R. D. Co. v. Sellers (" Siemens v. Sellers")

The words of a law are generally to have a controlling effect upon its construction; but the interpretation of those words is often to be sought from the surrounding circumstances and preceding history.

Nash v. Towne, 72 U. S. 5 Wall. 689, 699 (18: 527, 529); Mobile & M. R. Co. v. Jurey, 111 U. S. 584 (28: 527); Chesapeake & O. Canal Co. v. Hill, 82 U. S. 15 Wall. 94 (21: 64); Grant v. Raymond, 31 U. S. 6 Pet. 218 (8: 376); Shaw v. Cooper, 32 U. S. 7 Pet. 292 (8: 689); Wilson v.

Bate Refrigerating Co. v. Gillett, 13 Fed. Messrs. Wheeler H. Peckham, Edward Rep. 553, 31 Fed. Rep. 809; Gramme ElectriWetmore and Leonard E. Curtis, for ap-cal Co. v. Arnoux & H. Electric Co. 17 Fed. pellees:

were filed July 26th, 1877; the other, for the 18]*term of five years, by the government of the Dominion of Canada to Bate himself under date of January 9th, 1877.

After these foreign patents were issued, namely, on the 20th day of November, 1877, Bate received a patent from the United States, expressed to be for the term of seventeen years, and assigned it to the Bate Refrigerating Company, the plaintiff in this suit.

The present suit was brought by that company, July 25th, 1892, for an injunction against the infringement of the American pat ent, as well as for an accounting. It was heard in the circuit court on pleas to the bill, and a decree was passed dismissing the suit. From that decree an appeal was taken to the circuit court of appeals.

Both foreign patents for the Bate invention having expired before the expiration of the seventeen years specified in the United States patent, the following questions arose in and have been certified by the circuit court of appeals: Whether the invention for which the patent from the United States was issued had been "previously patented in a foreign country," within the meaning of those words in section 4887 of the Revised Statutes; and whether the American patent expired under the terms of that section before the expiration | of seventeen years from its date.

tion shall be completed and prepared for examination. SS 4888, 4892, 4894.

The plaintiff insists that an invention patented or caused to be patented in a foreign country before being patented in this country should not be deemed to have been " previously patented in a foreign country," within the meaning of section 4887, unless the foreign patent was granted prior to the application for the American patent.

The defendants contend that the respective dates of the American and foreign patents, and not the date of the American application, determine the question whether an invention, patented here, has been "previously patented in a foreign country."

Counsel for the respective parties have deemed it necessary to refer very fully to the principal statutes relating to patents for inventions. In our consideration of the case the same method will be pursued-reserving any observations we may make upon the words of particular acts until we shall have given an outline of the history of such legislation by Congress as is supposed to bear upon the questions certified.

persons to whom, under that Act, patents could be issued were those inventing or discovering any useful art, manufacture, engine, machine, or device, or any improvement therein "not before known or used.' The applicant was required, at the time the patent was granted, to deliver to the Secretary of State such specification in writing containing a description of the invention or discoveryaccompanied, when necessary, with drafts or models, and explanations of the thing invented or discovered-as would distinguish the

The first Act of Congress passed under the authority given by the Constitution to promote the progress of science and useful arts, by securing for limited times to authors and inventors *the exclusive right to their respective[20 The Revised Statutes of the United States writings and discoveries, was approved April provide that any person inventing or discover-10th, 1790. 1 Stat. at L. 109, chap. 7. The ing any new and useful art, machine, manufact ure, 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 obtain a patent therefor, which shall contain a grant of the exclusive right for the term of seventeen years to make, use, and vend such invention or disinvention or discovery from other things "becovery throughout the United States and the territories thereof, and bear date as of a day not later than six months from the time at which it was passed and allowed and notice thereof sent to the applicant or his agent. S 4884, 4885, 4886.

fore known and used," and enable one skilled in the art or manufacture to make, construct, or use the same, "to the end that the public may have the full benefit thereof after the expiration of the patent term." S$ 1, 2.

The Act of February 21st, 1793, which took 19] *By section 4887 it is provided that "no the place of the Act of 1790, made no material person shall be debarred from receiving a patent change except to restrict the right to a patent for his invention or discovery, nor shall any to citizens of the United States, and to propatent be declared invalid by reason of its vide that the invention or discovery sought to having been first patented or caused to be be patented should be one "not known or used patented in a foreign country, unless the same before the application." 1 Stat. at L. 318, has been introduced into public use in the chap. 11. In Pennock v. Dialogue, 27 U. S. 2 United States more than two years prior to the Pet. 1, 19, 21 [7: 327, 333, 334], Mr. Justice application. But every patent granted for an Story, speaking for the court, said that the adinvention which has been previously patented dition made by the Act of 1793 of the words in a foreign country shall be so limited as to "before the application," after the words "not expire at the same time with the foreign pat-known or used" in the Act of 1790, was made ent, 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."

Other sections prescribe what the application for a patent shall contain, the nature of the oath or affirmation to be made by the ap plicant, and the time within which an applica

ex industria with the intention "to clear away a doubt, and fix the original and deliberate meaning of the legislature," which was that the invention should be one not known or used by the public before the application.

Then came the Act of April 17th, 1800, which extended the provisions of the Act of 1793 to all aliens residing for two years in the