1. The surrender of a patent under the 13th section of the Act
of July 4, 1836, in judgment of law, extinguishes it -- is a legal
cancellation of it, and no right can afterwards be asserted upon
it.
2. Suits pending for an infringement of such a patent fall with
its surrender, because the foundation upon which they were
commenced no longer exists.
3. But moneys recovered or paid under a patent previous to its
surrender cannot be recovered back afterwards.
The plaintiff in error, who was also plaintiff below, filed a
declaration in case against defendants in error for the
infringement of letters patent of the United States, granted to him
November 30, 1852, for an improvement in grain separators. This
declaration was filed March 22, 1859. On the 25th of October
following, one of the defendants filed the following plea:
"And now comes the said John M. Garr and says that the said John
R. Moffitt ought not further to maintain this action against him
because, he says, that since the commencement thereof and before
the 17th day of May, 1859,
Page 66 U. S. 274
to-wit, on the ___ day of _____, the said John R. Moffitt
surrendered to the United States the patent before that time issued
to him, and for the alleged infringement of which this suit is
brought, and this he is ready to verify. Wherefore,"
etc. To this plea the plaintiff demurred, and the court
overruled the demurrer. Judgment for defendant. The plaintiff took
this writ of error.
Page 66 U. S. 282
MR. JUSTICE NELSON.
The suit was brought by Moffitt against the defendants for the
infringement of a patent for an "improvement in grain
separators."
The defendants plead to the declaration that since the
commencement of the suit, the plaintiff had surrendered his patent
to the United States for the alleged infringement of which the
action was brought. To which the plaintiff put in a general
demurrer. The court overruled the demurrer and sustained the plea,
and gave judgment accordingly.
The 13th section of the Act of Congress of July 4, 1836,
provides
"That if a patent shall be inoperative &c., it shall be
lawful for the commissioner, upon the surrender to him of such
patent, . . . to cause a new patent to be issued &c., and the
patent so reissued . . . shall have the same effect and operation
in law on the trial of all actions hereafter commenced, for causes
subsequently accruing, as though the same had been originally filed
in the connected form,"
&c.
Now the point in the case is whether or not the patentee may
maintain a suit on the surrendered patent instituted before the
surrender if he has not availed himself of the whole of the
provision and taken out a reissue of his patent with an amended
specification. The construction given to this section,
Page 66 U. S. 283
so far as we know, and the practice under it in case of a
surrender and reissue, are that the pending suits fall with the
surrender. A surrender of the patent to the commissioner within the
sense of the provision, means an act which, in judgment of law,
extinguishes the patent. It is a legal cancellation of it, and
hence can no more be the foundation for the assertion of a right
after the surrender, than could an act of Congress which has been
repealed. It has frequently been determined that suits pending,
which rest upon an act of Congress, fall with the repeal of it. The
reissue of the patent has no connection with or bearing upon
antecedent suits; it has as to subsequent suits. The antecedent
suits depend upon the patent existing at the time they were
commenced, and unless it exists, and is in force at the time of
trial and judgment, the suits fail.
It is a mistake to suppose that, upon this construction, moneys
recovered on judgments in suits, or voluntary payment under the
first patent upon the surrender, might be recovered back. The title
to these moneys does not depend upon the patent, but upon the
voluntary payment or the judgment of the court.
We are satisfied the judgment of the court below is right, and
should be
Affirmed.