Bate Refrigerating Co. v. Hammond, 129 U.S. 151 (1889)
U.S. Supreme CourtBate Refrigerating Co. v. Hammond, 129 U.S. 151 (1889)
Bate Refrigerating Company v. Hammond
Argued January 2-4, 1889
Decided January 21, 1889
129 U.S. 151
A United States patent was granted November 20, 1877, for seventeen years, on an application filed December 1, 1876. A patent for the same invention had been granted in Canada, January 9, 1877, 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 was, on December 12, 1881, extended for five years from January 9, 1582, and, on December 13, 1881, for five years from January 9, 1887, under § 17 of the Canada act assented to June 14, 1872 (35 Victoria, c. 26). Held, under § 4857 of the Rev.Stat., 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 fifteen years' term of the Canada patent had been continuous and without interruption, the United States patent did not expire before the end of the fifteen years' duration of the Canada patent.
It was not necessary to the validity of the United States patent that it should have been limited in duration, on its face, to the duration of the Canada patent, but it is to be so limited by the courts, on evidence in pais, as to expire at the same time with the Canada patent, not running more than the seventeen years.
This is a suit in equity, brought in the Circuit Court of the United States for the District of Massachusetts December 16, 1886, by the Bate Refrigerating Company, a New York corporation, against George H. Hammond & Co., a Michigan corporation, founded on the alleged infringement of letters patent No. 197,314, granted to John J. Bate, November 20, 1877, for the term of seventeen years from that day on an application filed December 1, 1876, for an "improvement in processes for preserving meats during transportation and storage."
The plaintiff is the assignee of the patent. The bill alleges infringement, within the District of Massachusetts and elsewhere in the United States, by the making, using, and vending of the patented process, and alleges that the defendant has been engaged in the business of shipping fresh meat from the port of Boston to ports in Great Britain by means of the process claimed in the patent. The claim is as follows:
"The herein-described process of preserving meat during transportation and storage by enveloping the same in a covering of fibrous or woven material and subjecting it when thus enveloped to the continuous action of a current of air of suitably low and regulated temperature, substantially as and for the purpose set forth."
The defendant filed a plea setting up, among other things, that on the 9th of January, 1877, letters patent of the Dominion of Canada, No. 6,938, for the same invention as that described and claimed in No. 197,314 were granted to the same John J Bate, for the term of five years from the 9th of January, 1877; that after No. 197,314 had expired,
at the end of the term of five years for which such Canadian patent was granted, the Circuit Court of the United States for the District of New Jersey, upon being advised of the grant of such Canadian patent, vacated and set aside an injunction which it had theretofore granted, by an interlocutory decree made in a suit in equity founded on No. 197,314, brought by the Bate Refrigerating Company against Benjamin W. Gillett and others; that thereafter Bate and the Bate Refrigerating Company procured the rendition of a judgment by the Superior Court for Lower Canada, declaring the Canadian patent to have been void ab initio and vacating it and setting it aside; that such judgment of the superior court for Lower Canada being brought to the attention of the Circuit Court of the United States for the District of New Jersey, that court reinstated said injunction, and that afterwards the Superior Court for Lower Canada, in a suit brought by Sir Alexander Campbell, Minister of Justice and Attorney General for the Dominion of Canada against Bate and the Bate Refrigerating Company and others, adjudged that its said prior judgment had been "arrived at through the fraud to the law and collusion" of Bate the Bate Refrigerating Company and another other person,
"deceiving the Attorney General, the advocates, and the court, employing and paying counsel on both sides, as well, seemingly, against themselves as on their apparent behalf,"
and revoked and annulled its said prior judgment. The plea concluded by averring that No. 197,314 expired on the 9th day of January, 1882, and that the circuit court, sitting as a court of equity, had no jurisdiction to hear and determine an action in equity for the infringement of the patent.
The bill was then amended by averring that the application for the Canadian patent was not made until December 19, 1876, while the application for No. 197,314 was made December 1, 1876, and that the Canadian patent was not actually or legally issued until on or about June 26, 1878, on or about which date a model of the invention, as required by law, was filed in the Canadian Patent Office. The amendment to the bill also set forth the two judgments of the Superior Court for Lower Canada, and averred that, by virtue of an act of the
Parliament of the Dominion of Canada assented to May 25, 1883, 46 Vict. c. 19, the original term of the Canadian patent was actually fifteen years, instead of five years, and it would not terminate before the 9th of January, 1892.
Subsequently the defendant filed an answer to the bill setting up, among other defenses, want of novelty in the patented invention, but not denying that it had used the invention subsequently to the granting of the patent, and also setting up the granting of the Canadian patent for five years from January 9, 1877; that No. 197,314 was void because it was issued for seventeen years, and its term was not limited by the Commissioner of Patents to five years from January 9, 1877; that the Canadian application was not made until after the application for No. 197,314 was filed; that Bate did not file a model in the Canadian Patent Office until after the grant of the Canadian patent, and that the Canadian patent was actually patented to Bate on the 9th of January, 1877, and took effect on that date, although not actually delivered to the patentee until after the filing of the model. It also sets forth the two Canadian judgments, and avers that, on the 30th of November, 1881, Bate made a petition to the Commissioner of Patents for Canada for the extension of No. 6,938 in which he averred that, on the 9th of January, 1877, he
"obtained a patent for the period of five years from the said date, for new and useful improvements on apparatus and process for ventilation, refrigeration, etc.,"
and that he was the holder of that patent in trust for the Bate Refrigerating Company, and prayed that it might be extended "for another period of ten years;" that, on the filing of that petition, an extension of the patent was granted, on December 12, 1881, "for a second period of five years" from January 9, 1882; that a further extension of the patent was granted, December 13, 1881, "for a third period of five years" from January 9, 1887; that the plaintiff is thereby estopped from denying the fact that No. 6,938 was legally granted, January 9, 1877, for a period of five years; that by virtue of the act of 46 Vict. c. 19, the original term for which No. 6,938 was granted was not fifteen years instead of five years; that said act can have no effect on the
duration of No. 197,314; that by reason of the prior patenting of the invention by Bate in Canada for five years from January 9, 1877, No. 197,314, if valid at all, expired on January 9, 1882, and that therefore this Court, sitting in equity, has no jurisdiction to hear and determine an action for its infringement.
Without the filing of any replication to this answer, the parties entered into a written stipulation setting forth as follows:
"Whereas the answer of the defendant corporation in this cause sets up, in addition to other defenses, that the patent on which this suit is brought, being No. 197,314, granted to John J. Bate, complainant's assignor and president, on the twentieth day of November, A.D. 1877, expired on the ninth day of January, A.D. 1882, by reason of the prior grant to said John J. Bate of a patent in the Dominion of Canada for the same invention, and prays the same benefit of said defense as if the same had been pleaded to the bill of complaint, and whereas both parties desire to have said matter of defense argued and decided without incurring the great expense of taking testimony necessary to present for final hearing all the defenses raised in said answer, it is therefore stipulated and agreed by and between the parties that the defense above named shall be submitted to the court, as on plea set down for argument, upon the following agreed state of facts."
The facts so agreed to were substantially as follows:
1. The patent in suit, No. 197,314, was granted to John J. Bate on November 20, 1877, and the application therefor was filed in the United States Patent Office, December 1, 1876, and said patent was assigned to complainant before this suit was brought, the said Bate being a citizen of the United States at the time of said application, and the said invention having been made and reduced to practice by him therein.
2. On December 19, 1876, said John J. Bate filed in the Patent Office of the Dominion of Canada an application for a patent for improvements in apparatus and processes for ventilation, refrigeration, etc., including therein, as one feature, the process described and claimed in said patent No. 197,314.
3. In pursuance of said application, the Commissioner of
Patents for the Dominion of Canada caused letters patent of the Dominion of Canada, No. 6,938, for the invention set forth in said application, and granting to said John J. Bate, his executors, administrators, and assigns, the exclusive right, privilege, and liberty of making, constructing, using, and vending to others to be used, the said invention, to be signed and sealed with the seal of the Patent Office on January 9, 1877, and the be registered on January 11, 1877, and that the period of said grant expressed in said patent was five years from and after January 9, 1877.
4. On January 12, 1877, said Commissioner of Patents called upon said John J. Bate to furnish to the Patent Office a model of his said invention, and such model was furnished by said Bate on June 26, 1878, on which day said patent No. 6,938 was mailed to said John J. Bate.
5. On December 5, 1881, said John J. Bate filed a petition in the Canada Patent Office, setting forth
"that on the 9th day of January, A.D. 1877, your petitioner obtained a patent for the period of five years from the said date, for new and useful improvements on apparatus and process for ventilation, refrigeration, etc.; that he is the holder of the said patent in trust for the 'Bate Refrigerating Company,' and therefore prays that it may be extended for another period of ten years."
6. On December 12, 1881, said patent No. 6,938 was extended for five years from January 9, 1882, under renewal No. 13,812, and on December 13, 1881, said patent was further extended for five years from January 9, 1887, under renewal No. 13,813, in pursuance of the above-named petition.
7. On or about July 9, 1883, and June 30, 1886, the Superior Court for Lower Canada rendered two judgments affecting said Canada patent, to the purport set forth in the plea and the answer. The stipulation further provided that if the decision of the circuit court should be in favor of the plaintiff, it should have a reasonable time thereafter to file a replication in the answer, and the cause should proceed in the ordinary manner; that if the circuit court should decide the cause in favor of
the defendant, a decree should be entered dismissing the bill, so that the plaintiff might take an appeal therefrom to the Supreme Court of the United States, and that if the circuit court should decide the cause in favor of the defendant, and the Supreme Court of the United States should, on appeal, reverse that decision, the defendant should have a right to proceed in the circuit court, under its answer, as to all defenses set up therein, except the one mentioned in the stipulation, as it might have proceeded if the stipulation had not been made.
The cause was heard on the pleadings and stipulation, and the circuit court entered a decree dismissing the bill, 35 F. 151, from which decree the plaintiff has appealed to this Court. The circuit court gave no opinion on the merits of the case, but in deciding it followed, as it stated, the decision of the Circuit Court of the United States for the District of New Jersey, held by MR. JUSTICE BRADLEY, in August, 1887, made in the case of Refrigerating Co. v. Gillett, 31 F. 809.