WOODRUFF, Circuit Judge.
A rehearing was ordered in this case for the mere purpose of bringing under consideration the effect of the act of Jiffy, 1S68, entitled “an act to authorize the temporary supplying of vacancies in the executive department,” upon the rights of the parties. It was not intended to consider further the questions of fact or law which were raised and discussed on the original hearing of the cause upon the pleadings and the proofs then taken. On the face of the statute, as it appears in the authorized publication thereof, and as it now seems on the act as received from the president of the United States by the secretary of state, it appeared that the act was approved on July 23, 1868, and prima facie at least, it was to be deemed to have become operative as the law of the land on that day. And, as the proofs then stood, the extension of the patent on which the plaintiff relies in his supplemental bill was made after that date, and when, by force of the act, as construed by the defendant, the power of the chief clerk of the patent office by whom the extension was made had ceased. If the alleged extension was invalid, then, although the original patent to Mellier was valid, and the defendant was found to have infringed it, the plaintiff was not entitled to an injunction on the final decree, because the original patent expired on August 7, 1868, and the plaintiff was not entitled, by reason of the defendant’s infringement, to an account of profits, except so far. as profits arose out of a use made of the patented invention prior to the last-named day.
On the application for a rehearing, the plaintiff not only insisted that the act of July, 1868, did not (even though it became a law on the 23d of July) impair the validity of the extension of the patent, but the right was claimed to produce proofs from which it would result, by legal consequence, that the act did not take effect as law until July 24, 1868; that the authority of the chief clerk was in- full force when the extension was made, and that the extension was in every view of the subject valid. It seemed to me just to permit both parties to produce further proofs to the end that the actual facts might appear, and that all legal questions, whether of the propriety of inquiring beyond what appeared on the act Itself as the date of approval, or of the effect of the facts developed ■ on such inquiry, might be raised and appear by the record to have been presented for consideration. Numerous in-[738]*738teres ting and delicate questions of great importance to tliese parties, and some of them of moment to tlie citizens of the United States, are now suggested. Among them are the questions, whether an act of congress becomes the law of the land eo instante the president puts his name thereto; whether during the ten days, for which by the constitution he is at liberty to retain a bill for consideration, the bill is so far under his control that, notwithstanding he may hare first affixed his signature, he may, if subsequent information or subsequent reflection lead him to disapprove', erase such signature and return the bill with his objections; whether if he have affixed his name at his residence or in the executive chamber, and the bill remains in his drawer, it is nevertheless operative as a law; whether during the whole number of ten days it is entirely under his control, so that he may approve or disapprove, his signature only operating when he surrenders the possession of the bill; whether the act of September 15, 1789 (1 Stat. 68), providing that whenever a bill having been approved and signed shall become a law or take effect, it shall forthwith thereafter be received by the secretary of state from the president, and, as soon as conveniently may be, published, has or can have any effect to determine when the president has lost control of the question, or when his approval has legal operation (as matter of appropriate legal evidence); or whether such act imports, or can constitutionally import, that delivery to the secretary of state must be made before the law can operate; and whether any promulgation whatever is necessary to make an act of congress or the president’s approval thereof operative? These questions, or multiplied forms of substantially the same question, are of great interest. So, also, whether when a statute takes effect on a given day, it is to be deemed in operation during the whole of that day, so as to affect the validity of acts done on the same day but at an hour prior to the actual enactment; and whether the court may recognize fractions of a day in declaring the effect, and inquire at what hour of the day the statute became operative; and if so, what are the sources of evidence; if the statute takes effect from the signing by the president, may the hour at which his signature was affixed be proved by parol, and the effect of the statute so be made to depend upon proofs necessarily somewhat unreliable.
These and other kindred questions discussed herein are of general interest. In more immediate relation to the subject of the extension of patents, it is of some interest to inquire what in law amounts to an extension. Is it the written decision or order of the commissioner, or is it the executed certificate of extension, or is the record of such decision and certificate an essential prerequisite? My conclusions upon the case, as now developed, render it unnecessary that I should express an opinion upon these various questions above stated. The legal effect of the act of 1S68 upon the rights of the parties, if it was in operation when Mr. Stout, chief clerk, made the extension; whether any thing done before July 24, 1868, operated as a legal extension of the patent; and whether, assuming that the plaintiffs are right in their claim that the act had no legal operation -until the president had signed and delivered the bill to the secretary of state, the extension was made after that time, are questions which, whatever may be my opinion on the other questions, may be decisive of the present case.
On these last-named questions I state my conclusions very briefly.
1. The act of 1868, from the time it took effect as a law, operated to deprive the chief clerk of the patent office of power and jurisdiction to extend a patent. Looking to the object of the act, and the repeal of all existing acts on the subject of supplying vacancies, it is to my mind clear that the act, in all its principal provisions, must apply to existing vacancies caused by death or resignation. It embraces heads of departments, chiefs of bureaus, and other officers thereof, and if the authority conferred did not reach existing vacancies, then the repeal of all prior laws on the subject of temporarily supplying vacancies, left such vacancies unfilled, and without authority in any person to perform the duties, and the functions of the office could be discharged by no one. The reason for the enactment applied with the same force to an existing vacancy as to one which should thereafter occur. The words, “in case of death, resignation, absence, or sickness’’• of an officer, are as appropriate to describe existing facts as those which may occur in the future, and no reason occurs to me for confining it to the latter class. It may not be of much importance, but it is not impertinent to observe that this construction of the act was contemporaneously given to it by congress and by the patent office itself.
2. It is entirely clear that upon the pleadings and the proofs, in this case, it must be held that nothing done by Mr. Stout, the chief clerk, as acting commissioner, before the 24th of July, operated as a legal extension of the patent.
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WOODRUFF, Circuit Judge.
A rehearing was ordered in this case for the mere purpose of bringing under consideration the effect of the act of Jiffy, 1S68, entitled “an act to authorize the temporary supplying of vacancies in the executive department,” upon the rights of the parties. It was not intended to consider further the questions of fact or law which were raised and discussed on the original hearing of the cause upon the pleadings and the proofs then taken. On the face of the statute, as it appears in the authorized publication thereof, and as it now seems on the act as received from the president of the United States by the secretary of state, it appeared that the act was approved on July 23, 1868, and prima facie at least, it was to be deemed to have become operative as the law of the land on that day. And, as the proofs then stood, the extension of the patent on which the plaintiff relies in his supplemental bill was made after that date, and when, by force of the act, as construed by the defendant, the power of the chief clerk of the patent office by whom the extension was made had ceased. If the alleged extension was invalid, then, although the original patent to Mellier was valid, and the defendant was found to have infringed it, the plaintiff was not entitled to an injunction on the final decree, because the original patent expired on August 7, 1868, and the plaintiff was not entitled, by reason of the defendant’s infringement, to an account of profits, except so far. as profits arose out of a use made of the patented invention prior to the last-named day.
On the application for a rehearing, the plaintiff not only insisted that the act of July, 1868, did not (even though it became a law on the 23d of July) impair the validity of the extension of the patent, but the right was claimed to produce proofs from which it would result, by legal consequence, that the act did not take effect as law until July 24, 1868; that the authority of the chief clerk was in- full force when the extension was made, and that the extension was in every view of the subject valid. It seemed to me just to permit both parties to produce further proofs to the end that the actual facts might appear, and that all legal questions, whether of the propriety of inquiring beyond what appeared on the act Itself as the date of approval, or of the effect of the facts developed ■ on such inquiry, might be raised and appear by the record to have been presented for consideration. Numerous in-[738]*738teres ting and delicate questions of great importance to tliese parties, and some of them of moment to tlie citizens of the United States, are now suggested. Among them are the questions, whether an act of congress becomes the law of the land eo instante the president puts his name thereto; whether during the ten days, for which by the constitution he is at liberty to retain a bill for consideration, the bill is so far under his control that, notwithstanding he may hare first affixed his signature, he may, if subsequent information or subsequent reflection lead him to disapprove', erase such signature and return the bill with his objections; whether if he have affixed his name at his residence or in the executive chamber, and the bill remains in his drawer, it is nevertheless operative as a law; whether during the whole number of ten days it is entirely under his control, so that he may approve or disapprove, his signature only operating when he surrenders the possession of the bill; whether the act of September 15, 1789 (1 Stat. 68), providing that whenever a bill having been approved and signed shall become a law or take effect, it shall forthwith thereafter be received by the secretary of state from the president, and, as soon as conveniently may be, published, has or can have any effect to determine when the president has lost control of the question, or when his approval has legal operation (as matter of appropriate legal evidence); or whether such act imports, or can constitutionally import, that delivery to the secretary of state must be made before the law can operate; and whether any promulgation whatever is necessary to make an act of congress or the president’s approval thereof operative? These questions, or multiplied forms of substantially the same question, are of great interest. So, also, whether when a statute takes effect on a given day, it is to be deemed in operation during the whole of that day, so as to affect the validity of acts done on the same day but at an hour prior to the actual enactment; and whether the court may recognize fractions of a day in declaring the effect, and inquire at what hour of the day the statute became operative; and if so, what are the sources of evidence; if the statute takes effect from the signing by the president, may the hour at which his signature was affixed be proved by parol, and the effect of the statute so be made to depend upon proofs necessarily somewhat unreliable.
These and other kindred questions discussed herein are of general interest. In more immediate relation to the subject of the extension of patents, it is of some interest to inquire what in law amounts to an extension. Is it the written decision or order of the commissioner, or is it the executed certificate of extension, or is the record of such decision and certificate an essential prerequisite? My conclusions upon the case, as now developed, render it unnecessary that I should express an opinion upon these various questions above stated. The legal effect of the act of 1S68 upon the rights of the parties, if it was in operation when Mr. Stout, chief clerk, made the extension; whether any thing done before July 24, 1868, operated as a legal extension of the patent; and whether, assuming that the plaintiffs are right in their claim that the act had no legal operation -until the president had signed and delivered the bill to the secretary of state, the extension was made after that time, are questions which, whatever may be my opinion on the other questions, may be decisive of the present case.
On these last-named questions I state my conclusions very briefly.
1. The act of 1868, from the time it took effect as a law, operated to deprive the chief clerk of the patent office of power and jurisdiction to extend a patent. Looking to the object of the act, and the repeal of all existing acts on the subject of supplying vacancies, it is to my mind clear that the act, in all its principal provisions, must apply to existing vacancies caused by death or resignation. It embraces heads of departments, chiefs of bureaus, and other officers thereof, and if the authority conferred did not reach existing vacancies, then the repeal of all prior laws on the subject of temporarily supplying vacancies, left such vacancies unfilled, and without authority in any person to perform the duties, and the functions of the office could be discharged by no one. The reason for the enactment applied with the same force to an existing vacancy as to one which should thereafter occur. The words, “in case of death, resignation, absence, or sickness’’• of an officer, are as appropriate to describe existing facts as those which may occur in the future, and no reason occurs to me for confining it to the latter class. It may not be of much importance, but it is not impertinent to observe that this construction of the act was contemporaneously given to it by congress and by the patent office itself.
2. It is entirely clear that upon the pleadings and the proofs, in this case, it must be held that nothing done by Mr. Stout, the chief clerk, as acting commissioner, before the 24th of July, operated as a legal extension of the patent. The plaintiff in his bill relies upon an extension of the patent made on the 24th of July, and he has not averred any thing as a ground of claim that any prior act, decision, or adjudication gave him any right beyond the term of the original patent The proofs place him in no different situation if he were not concluded by the pleadings; the certificate of extension relied upon bears date on the 24th of July, and was certainly not executed before that day. I think the proofs show that it was signed after that day. The decision or order entered upon the file wrapper (as the disposition of the contest touching the extension), as finally settled and approved by Mr. Stout, as acting [739]*739commissioner, bears the deliberate and final date of the 24th July. The apparent endeavor to give it earlier effect, through the testimony of Mr. Stout to his belief or conviction that he wrote it on the 20th, having made up his mind to grant the extension unless his mind should be changed, will not avail. It is manifest, from the proofs in the cause, that there had been a vigorous contest, and that the acting commissioner expected to receive an argument from the contestants. The rules of the patent office provided for it I have already held in this case that I could not go into any inquiry touching the validity of the patent founded on any irregularity, or failure, to conform to those rules. But this reference to the rules conforms to, and confirms what the witness in substance states, that nothing was done prior to the 24th, which was either understood to be, or was intended to be, conclusive as a decision. The idea of a judgment or decision in its nature judicial, being made provisionally, while the question whether any, or what judgment, should be pronounced, was kept open to await argument, would be a novelty. The entry, if made on the 20th, may have been a minute of views the acting commissioner then entertained; but he says himself that they were not promulgated, and that he did not intend to promulgate them until the 24th, when he thinks he made the date “24th,” for the purpose of giving the decision some effect. I add what his testimony fairly imports, that the applicant was almost daily urging a decision; the acting commissioner was waiting for the appearance of the counsel for the contestants, and the final decision was withheld, he “retaining his power over it,” until the 24th, when, under the influence of apprehension that his power would cease by force of the act then already passed both houses of congress, and known to have been laid before the president, and a desire to have the extension made, which he thought the applicant justly entitled to, he made his decision final on that day.
3. Having reached a conclusion that the patent was a valid patent; that the defendants are infringers of that patent; having no reason to doubt that the decision of the acting commissioner that the applicant was entitled to an extension was just and proper, I have come to the examination of the question of fact, as to when the extension was actually made, without impulse or possible prejudice unfavorable to the plaintiff. I trust, also, without any impression on my mind unfavorable to a just view of the evidence. If, then, the claims of the plaintiff as to the time when or the event upon which an act of congress becomes operative as the law of the land be conceded, and be fixed at the time when the act is received by the secretary of state, and the extension of a patent be held to create a vested right in the applicant not to be defeated by any retroactive legislation, by legal fiction or otherwise, even for an hour or other part of a day, the question of fact remains, when was the act in question, with the approval of the president, delivered and received by the secretary of state? And when, in fact, was the patent extended by the chief clerk as acting commissioner. On the first of these questions the proof is entirely convincing, and there is no contradiction to this extent, viz: it was not later than four o’clock in the afternoon. Although one of the witnesses ventures the opinion that the message to the senate, announcing the approval of the bill, did not reach the senate before half-past four, the grounds of his opinion are not very obvious, and if a mere opinion founded on the business done in that body after that message was received, and before five o’clock, is of any moment, I think the inference that it arrived there earlier much better warranted. And the fact that the bill sent by another messenger was filed in the office of the secretary of state on that day, and that the office hours were from nine-to four, ought to be deemed to settle that question.
On the other question, it is pertinent to say that I deem it doubtful that the making of the decision which is indorsed on the file wrapper, is the official act which operates as a legal extension of the patent, even though it be deemed to establish his right to such extension. It may be a final decision, and if made while the chief clerk had jurisdiction and power to make it, might perhaps be conclusive upon his successor in the discharge of the duties of commissioner. Whether even the certificate of extension grounded thereon had not such relation back to that decision that it might be signed by such chief clerk after his power had ceased, the same being treated simply as the embodiment of that decision in proper form as evidence of the title of applicant, I express no opinion. Taking all this most favorably to the claim of the plaintiff, when was the decision, in fact, made.? The testimony satisfies me, and I must, therefore, find that it was made between seven and eleven o’clock in the evening of the 24th of July, and, therefore, after the act of congress had been approved, signed, and filed in the office of the secretary of state. On the 20th or 21st, Hay (administrator of Mellier), the applicant, had been heard upon the subject of the granting of his application. The matter was kept open to enable the counsel for contestant to be heard under the rules. Those rules contemplated the giving of even more time to the contestants. Hay was nevertheless “almost daily urging a decision.” An apprehension had arisen that the act of congress, taking away the power of the chief clerk, would be signed by the president. On that evening, between seven and eleven o’clock, Hay and others were present in the office. Hay had no business there “but to urge the extension of this patent” Mr. Stout was devoting his attention to the [740]*740papers in the application for such extension. One of the clerks in the office was present, and read to him some papers connected with the case. He also devoted- some attention to another application for an extension of a patent. That he decided adversely to the applicant under the same date, July 24, and as to that it is obvious there was no occasion for further attention if he had already, at an earlier hour of the day, actually made an adverse decision, for that terminated his duties in relation thereto. A rumor reached the office in the course of the evening that the act of congress above referred to had been signed by the president, and some one volunteered to go to the capítol .to inquire. One witness thinks he returnfed with a confirmation of the rumor, but the witness, Pennebacker, testifies that he himself volunteered to go, and went, and was told that the persons inquired of had no notice of such signing, and that he returned and delivered the message. Mr. Stout is quite positive that he did not know of such signing until the next day. This would leave him at liberty to act in the matter of the extension. And all these circumstances indicate most strongly that it was then and there that his decision was made and intended to be operative and final.
[NOTE. For reference to other cases involving the patents and reissues passed upon in this case, see note to American Wood-Paper Co. v. Fibre Disintegrating Co., Case No. 320.]
This conclusion renders an opinion upon most of the questions discussed unnecessary, and therefore I do not inquire further whether the act is, as matter of law, to be deemed the law of the land during all the 24th day of July, or on whom is the burden of showing whether the decision was before or after the time at which the bill was filed in the office of the secretary of state, if that be the hour and moment when it took effect. Nor whether the operation of an act of congress shall be made to depend upon evidence - in parol to matters lying in the memory of witnesses, and not in the record. Notwithstanding my conclusion, the case may, perhaps, illustrate the uncertainty attending such inquiries touching the law of the land, and often, it may be, when very grave consequences will flow from the opening of such a question to parol proof. It may be argued, with some force at least, that a law enacted by congress, approved and signed by the president, is to be taken as the expression of what is wisest and best, and that if an official act in contravention of its provisions or requirements be insisted upon, he who relies upon such act as valid, should, if .he be permitted to divide the day of enactment into portions, show on his part, by very clear evidence, that the official act relied upon preceded the enactment of the law. The plaintiff must have a decree herein in conformity with the former decision, so far as it affirms the validity of the original patent and the infringement thereof, and directs an account of profits down to August 7, 1868, when that original patent expired, but no injunction restraining the defendants in the future use of the invention in question should be granted.