for reasons of his own, did not prove the amount of damages resulting to him from the use of his inventions, and the court, being in duty bound, aside from the stipulation, to fix as the amount of recovery such amount of damages as the testimony proved, in the absence of proof gave nominal damages. But the court did not thereby adjudge that one dollar was the value of the plaintiff's invention. The plea must therefore be overruled.

Plea overruled.

[United States Circuit Court-Southern District of New York.]

THE GRAMME ELECTRICAL COMPANY v. THE ARNOUX AND HOCHHAUSEN ELECTRIC COMPANY ET AL.

1. FOREIGN PATENTS GRANTED PRIOR TO THE GRANT OF THE UNITED STATES PATENT, AND NOT PRIOR TO THE Filing of thE APPLICATION IN THIS COUNTRY LIMIT THE DURATION OF THE PATENT GRANTED HERE.

The meaning of section 4887 R. S. (sec. 25 of the act of 1870) is that the United States patent shall expire at the same time with the foreign patent having the shortest term to run which was granted before the United States patent was granted, and not that it shall expire at the same time with the foreign patent having the shortest term to run which was granted before the time when the application for the United States patent was made.

2. DURATION OF PATENT UNDER LIMITATION OF SECTION 4887.

It was also the manifest intention of this section that the exclusive privilege under the patent here should expire with the exclusive privilege granted abroad to the same inventor having the shortest term.

3. SAME-FOREIGN PATENT PROLONGED BEYOND ITS MINIMUM BUT LESS THAN ITS MAXIMUM TERM.

An Austrian patent granted for one year may be prolonged to fifteen years; but a capacity of being prolonged so as to have a duration of fifteen years is not equivalent to having a term of fifteen years, and where the Austrian patent was prolonged so as to expire at the end of ten years the United States patent expired with it.

4. FOREIGN SECRET PATENTS-HOW REGARDED UNDER SECTIONS 4887 and 4886, RESPECTIVELY.

Although the Austrian patent was a secret patent, it was nevertheless a patent within the meaning of section 4887, however far it might come short of being a prior public foreign patent sufficient to defeat a patent granted here to another inventor.

Mr. Solomon J. Gordon for the plaintiff.

Mr. Charles H. Knox and Mr. Henry E. Woodward for the defendants. BLATCHFORD, J.:

This is a suit in equity, brought for an infringement of Letters Patent No. 120,057, granted to Zenobe Theophile Gramme and Eardley Louis Charles D'Ivernois, October 17, 1871, for seventeen years from that day, for an improvement in magneto-electric machines. It is set up as a defense in the answer that the patentees obtained a patent in Austria.

December 30, 1870, for the same invention as is covered by No. 120,057; that the Austrian patent has expired, and that, therefore, No. 120,057 has expired.

The Austrian patent and sundry documents pertaining to it, and the Austrian statute, are in evidence. The patentees took out a patent in France for the same invention for fifteen years on the 22d of November, 1869. On the 30th of May, 1870, they made oath in Paris, France, to their application for No. 120,057. The application and the oath recited the date and the term of the French patent. The application was filed in the United States Patent Office, August 17, 1870, with a specification, drawings, and model, and the proper fee was paid. On the 3d of October, 1870, they filed in Austria an application, dated September 30, 1870, for a patent for the same invention for the period of one year. On the 30th of December, 1870, "an exclusive patent" was issued to them in Austria "for the duration of one year" for the invention, "under all conditions and with all effects stated in the supreme patent law of August 15, 1852." An amended oath to the United States application was sworn to by the patentees at Paris, June 26, 1871, and filed in the Patent Office July 12, 1871. It referred to the French patent, and stated its date and term, but it did not mention the Austrian patent. The final fee for No. 120,057 was paid October 2, 1871. The Austrian patent was extended nine times, year to year, each extension being for one year, and till December 30 in each year, and it finally expired December 30, 1880.

The bill in this suit was filed in July, 1881. It is agreed that the Austrian patent applied for and granted was for the same invention that is claimed in No. 120,057.

The Austrian patent law of August 15, 1852, requires that the applicant for a patent shall state in his petition the number of years for which he demands a patent, which number cannot exceed fifteen, except by special grant of the Crown. The tax must be paid in advance and is in proportion to the duration of the privilege. The exclusive privilege secures to the patentee the exclusive use of his invention "for the number of years mentioned in his privilege." A patentee whose privilege has been granted for a short period may claim its prolongation for one or more years during the fixed longest period, provided he demands such a prolongation before the privilege has become extinct and pays in advance the tax for the required term of prolongation.

No. 120,057 was granted under the provisions of the act of July 8, 1870 (16 U. S. Stats. at Large, 198), and its validity and duration must be tested by those provisions. By section 22 of that act (p. 201) every patent is to be granted for the term of seventeen years. By section 25 (p. 201) it is provided as follows:

No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented, or caused to be patented, in a foreign country: Provided, The same shall not have

been introduced into public use in the United States more than two years prior to the application, and that the patent shall expire at the same time with the foreign patent; or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than seventeen years.

It is contended for the defendant that under the foregoing provisions No. 120,057 expired either on December 30, 1871, or on December 30, 1880, the date of the expiration of the Austrian patent, accordingly as that patent is to be regarded as a patent for one year or for ten years. To this the plaintiff replies that the application for No. 120,057 was filed before the application for the Austrian patent was filed. But the date of the application for No. 120,057 cannot affect the question. Under the act of 1870 a patent takes effect from the time when it is granted, and cannot be antedated. The meaning of section 25 of the act of 1870 is that the United States patent shall expire at the same time with the foreign patent having the shortest term to run which was granted before the United States patent was granted, and not that it shall expire at the same time with the foreign patent having the shortest term to run which was granted before the time when the application for the United States patent was made. Bate Refrigerating Co. v. Gillett, 13 Fed. Rep., 553.

It is also contended by the plaintiff that the Austrian patent, though granted for the duration of one year on its face, was really a patent for fifteen years. It might have been prolonged year by year, or otherwise, for five years beyond December 30, 1880. But it was not prolonged beyond that date, and at most it cannot be regarded as a patent which, when granted, had a longer term to run than till December 30, 1880, even if it could be considered as a patent having when granted a longer term to run than one year. A capacity of being prolonged so as to have a duration of fifteen years is not equivalent to having a term of fifteen years, when the patent is grauted for one year and then is prolonged so as to expire at the end of ten years. At latest the Austrian patent expired December 30, 1880, and it is not necessary to decide whether the term for which it was granted was not a term of only one year.

It is also contended for the plaintiff that the Austrian patent was a secret patent, and therefore not a patent within the meaning of section 25 of the act of 1870. The Austrian statute provides that the petition for a patent must contain a statement whether the invention is to be kept secret or not; that special care is to be taken for the observation of the required secrecy, and due precautions are to be adopted against any possible violation of the secret; and that specifications as to which secrecy is demanded are not open to the public or for the taking of copies until the patent is extinct. In the present case the petition for the Austrian patent stated that it was desired that the description be kept secret. But the Austrian statute also provides that an exclusive privilege secures to the patentee the exclusive use of his invention, as

laid down in his specification, for the number of years mentioned in his privilege. The Austrian patent in the present case states on its face that it is an exclusive patent, for the duration of one year, for the improvements in question, "in consonance with the description deposited" "under all conditions and with all effects stated in the" Austrian statute.

In view of these facts, however far the Austrian patent might have come short of being a prior public foreign patent sufficient to defeat a patent granted here to another inventor for an invention made after the granting of such prior foreign patent, it is not perceived how the question of secrecy or publicity in the foreign patent granted prior to the granting or the patent here can affect, under section 25 of the act of 1870, the question of the duration of the patent here. The Austrian patent conferred on the patentees an exclusive privilege. It was the manifest intention of section 25 of the act of 1870, that the exclusive privilege under the patent here should expire with the exclusive privilege granted abroad to the same inventor having the shortest term. De Florez v. Raynolds, 17 Blatchf. C. C. R., 436, 450.

As the Austrian patent expired at the latest on December 30, 1880, and before this suit was brought, and No. 120,057 continued to exist no longer, there was no ground for this suit in equity when it was brought, whatever ground there may have been for a suit at law against these defendants for infringement. (Root v. Railway Co., 105 U. S., 189.) The novelty of the invention patented is attacked, and it is also contended that the patent is invalid because it was issued for the term of seventeen years and not for a shorter term. But the consideration of these

questions is unnecessary, and the bill is dismissed, with costs.

[United States Circuit Court-District of Connecticut. ]

THE PARKER & WHIPPLE COMPANY ET AL. v. THE YALE CLOCK COMPANY ET AL.

Decided October 2, 1883.

25 O. G., 290.

1. BILL IN EQUITY TO RESTRAIN INFRINGEMENT OF REISSUE NO. 10,062 DisMISSED AND REISSUE DECLARED INVALID.

Reissue Letters Patent No. 10,062, granted March 14, 1882, to Arthur E. Hotchkiss, for an improvement in clock-movements, is invalid under the statute regulating reissues. A bill in equity to restrain its infringement was accordingly dismissed.

2. SAME-CLAIMS INVOLVING ÅBANDONMENT OF PRINCIPLE OF ORIGINAL INVENTION INVALID.

Where the claims of a reissued patent involve a total abandonment of the principles which are stated in the original patent to be those of the invention the reissued patent is invalid. Yale Lock Co. v. S vill Manufacturing Co. (18 Blatchf'. C. C. R., 248) cited and distinguished.

Mr. John S. Beach, Mr. Chas. E. Mitchell, and Mr. John K. Beach for the plaintiffs.

Mr. Benj. F. Thurston, Mr. Chas. R. Ingersoll, and Mr. S. H. Wagner for the defendants.

SHIPMAN, J.:

This is a bill in equity to restrain the defendants from the infringement of Reissue Letters Patent No. 10,062, issued March 14, 1882, to Arthur E. Hotchkiss, for improvements in clock-movements. The original patent was dated November 4, 1879. The application for the first reissue (No. 9,656) granted to said Hotchkiss, April 12, 1881, was filed in the Patent Office January 22, 1881. The application for the present reissue (No. 10,062) was filed July 19, 1881. The Parker & Whipple Company are exclusive licensees under the original and reissued patents.

At the date of the invention expensive clocks of tiny size were being made, which met with favor from the public. They were convenient and attractive, and the main object of the patentee (the original specification says a leading object) was to make a good time-keeping clock of the like small size which could be furnished to the public at the small price which characterizes the manufacture of Connecticut clocks. The clock was devised for this end unquestionably with much study and painstaking, and I shall assume that the invention as claimed in the reissue was both novel and patentable. Much skill and ingenuity have been displayed in attacking and defending these contested points, but, as I think that a vital point of the plaintiffs' case depends upon the validity of the reissue, I shall confine myself to that question.

The patentee in his original specification stated the nature of his invention as follows:

This invention relates to that class of time-keepers on which a fixed annular rack or internally-toothed wheel is employed to aid a spring barrel in rotating the train of wheels.

The nature of said invention consists, partly, in the combination of a fixed internally-toothed circular rack and a concentric going barrel or plate with a mainspring a transmitting wheel rotating with said barrel, and a fixed clock-movement.

It also consists in arranging the operating parts of the time-piece on a fixed plate and attaching the same to the back of the clock-case by means of tongues which extend out from said plate through perforations in the back of said case.

It also consists in providing said tongues with broad shoulders, which cause said plate to stand out from the back of the clock-case, so as to leave space for the mainspring between them.

It also consists in the combination of a mainspring having a perforated end with a lateral finger extending from the broad part of one of said tongues, whereby said mainspring is firmly held at its fixed end, yet easily detached.

It also consists in the combination, with a fixed plate, which confines the mainspring and supports the movement of a rotating plate arranged in front of said fixed plate, and provided with a hub which extends through said fixed plate and is connected to the winding end of the mainspring.

It also consists in adapting to and combining with the hub thus constructed a key