GRAY, Circuit Judge.
The appellant, as complainant below, on September 16, 1907, filed its bill in the United States Circuit Court, for the Eastern District of Pennsylvania, against the defendants, the appellees here, alleging that letters, patent of the United States, bearing date the 4th day of October, 1898, and numbered 611,907, had been issued to it for a certain invention, particularly mentioned and described in the specifications attached thereto, which letters patent granted to the complainant the exclusive right to make, use, and vend the same for the term of 17 years from the said 4th day of October, 1898. The bill then charges defendant with infringement of said letters patent, and prays for the usual injunctions, preliminary and final, restraining the said defendants, their agents, servants, etc., from further infringement or violation thereof, and for an accounting.
The defendants, after having filed an answer to the bill, by consent withdrew the same and filed a so-called plea to the jurisdiction of the court, alleging that under the provisions of section 4887 of the Revised Statutes, before its amendment by Act March 3, 1897, c. 391, § 3, 29 Stat. 692 (U. S. Comp. St. 1901, p. 3382), and as applicable thereto, the patent in suit expired August 8, 1907, prior to the filing of the bill of complaint, by reason of the expiration on that date of a French certificate of addition to a French patent, wherein and whereby the invention of the patent in suit had been previously patented by Hennebique in France.
The replication by complainant to the defendants’ answer, was allowed to stand as a replication to the plea. The case was heard upon [871]*871an agreed statement of facts, which presented two points of law for decision, viz.:
First, whether a certificate of addition to what was in form a regularly issued French patent, lmt which has been authoritatively and Anally adjudged by the French courts to be a nullity and óf no effect in law, can limit the term of a later United States patent for the same Invention, under section ■1887 of the Itevised Statutes, before iis amendment by the act of March ,‘S, 1807?
Second, whether the said section 4887 has been abrogated by the treaty known as “An Additional Act for the Internationa] Protection of Industrial Property” (32 Stat. 1930), In so far as It provided for the limitation by prior foreign patents of the term of a United States patent which was existing at, the time the said treaty went into effect?
The court below sustained defendants’ plea and directed the dismissal of complainant’s bill, without filing ail opinion, or otherwise stating the ground of its action.
'Pile agreed statement above referred to brings into the record, by stipulation, all the facts necessary to the determination of the points of law above stated, including the pertinent provisions of the French law and the decisions of the French courts interpreting the same, and applicable to the French patent, and the addition thereto, referred to in the plea, the effect of which jilea was to admit also the allegations of the bill of complaint. From the facts thus fully stated, it appears that the patent in suit was issued to Hennebique, October 4, 1898, upon an application filed December 29, 1897, for the full term of 17 years. It also appears that a French patent, No. 223,fid (i, was issued to Hennebique, in 1892, for a term of 15 years from August 8, 1892, and therefore limited to expire on August 8, 1907. The first certificate of addition thereto was issued to said 1 lennebique in 1893, and a second certificate of addition on April 6, 1898, upon an application therefor filed December 18, 1897. It is also admitted that, by French law, certificates of additions expire with the expiration of the original patent, it also appears that the invention which’is the subject of the ¡latent in suit — -
“is the same invention which the same inventor, Iiennobique, attempted to patent in France, by filing on December IS, 1897, in full compliance with ihe law of France then in force, ¡he second certificate of addition to his prior French patent, No. 223,346, which said second certifícate of addition was issued April 6, 1898. and granted to him such right as could legally result from such patent and certifícate.”
It is also established, in the stipulated record, that the original French ¡latent and the first certificate of addition have been declared mill and void by the French courts. This was first done on March 4, 1903, in an action brought by said Francois Hennebique against certain persons, for the infringement of said French patent, No. 223, 546, hv the Civil Tribunal of First Instance for the Department of the Seine; then, on an appeal taken by the said Hennebique from the said judgment of March 4, 1903,_ by the French Court of Appeals, on December 14, 1906, a duly certified copy of the decree of ihe latter court being embraced as an exhibit in the stipulated record. And again, on July 20, 1905, in an action brought by certain complainants against [872]*872said Hennebique, under the provisions of article 34 of the French law of July 5, 1844, for the annulment of said French patent, No. 223,546, and said first certificate of addition of August*?, 1893, the Civil Tribunal of First Instance for the Department of the Seine rendered a judgment referring the cause to a board of experts, to examine and report as to the validity of the said French patent, in view of certain prior French patents, and on appeal taken by the complainants from the said judgment, and on cross-appeal taken by said Hennebique, the French Court of Appeals, on December 14, 1906, rendered a decree, in which they held that the reference to a board of experts was unnecessary, reversed the.judgment of the Tribunal of First Instance, and held and adjudged that said French patent, No. 223,546, was null and void, in view of a certain prior French patent, and that said first certificate of addition, of August 7, 1893, was also null and void, since, being only an accessory, it could not exist independently of the principal patent. A duly certified copy of said decree is embraced as an exhibit in the stipulated record. Appeals to the Court of Cassation, taken by the said Hennebique, from the said decree of December 14, 1906, were dismissed in February, 1908.
It further appears, by the stipulated record, that the effect in law of the above judgments and decrees, adjudging the nullity of said French patent, No. 223,546, was to -render said certificate of addition thereto, of December 18, 1897, equally null and void, and that, by the French law, there is always this difference between the nullity and the forfeiture of a patent, that the forfeiture only affects the future of the patent, while the nullity affects it in the past as well, and that a patent which is null is a patent which is found never to have had an)r existence, one which in law never had any reason for existing, while, a patent which has become forfeited, on the other hand, is a patent which had a legal existence up to the time when the cause of forfeiture became a fact.
It follows, then, from the agreed statement of facts, that the French patent of 1892, as thus authoritively and finally adjudged, is and always a nullity, and the certificate of addition thereto, of December 18, 1897, as well as that of 1893, never existed in legal effect, because it could receive no life from the dead patent, upon which it was ingraft-ed.
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GRAY, Circuit Judge.
The appellant, as complainant below, on September 16, 1907, filed its bill in the United States Circuit Court, for the Eastern District of Pennsylvania, against the defendants, the appellees here, alleging that letters, patent of the United States, bearing date the 4th day of October, 1898, and numbered 611,907, had been issued to it for a certain invention, particularly mentioned and described in the specifications attached thereto, which letters patent granted to the complainant the exclusive right to make, use, and vend the same for the term of 17 years from the said 4th day of October, 1898. The bill then charges defendant with infringement of said letters patent, and prays for the usual injunctions, preliminary and final, restraining the said defendants, their agents, servants, etc., from further infringement or violation thereof, and for an accounting.
The defendants, after having filed an answer to the bill, by consent withdrew the same and filed a so-called plea to the jurisdiction of the court, alleging that under the provisions of section 4887 of the Revised Statutes, before its amendment by Act March 3, 1897, c. 391, § 3, 29 Stat. 692 (U. S. Comp. St. 1901, p. 3382), and as applicable thereto, the patent in suit expired August 8, 1907, prior to the filing of the bill of complaint, by reason of the expiration on that date of a French certificate of addition to a French patent, wherein and whereby the invention of the patent in suit had been previously patented by Hennebique in France.
The replication by complainant to the defendants’ answer, was allowed to stand as a replication to the plea. The case was heard upon [871]*871an agreed statement of facts, which presented two points of law for decision, viz.:
First, whether a certificate of addition to what was in form a regularly issued French patent, lmt which has been authoritatively and Anally adjudged by the French courts to be a nullity and óf no effect in law, can limit the term of a later United States patent for the same Invention, under section ■1887 of the Itevised Statutes, before iis amendment by the act of March ,‘S, 1807?
Second, whether the said section 4887 has been abrogated by the treaty known as “An Additional Act for the Internationa] Protection of Industrial Property” (32 Stat. 1930), In so far as It provided for the limitation by prior foreign patents of the term of a United States patent which was existing at, the time the said treaty went into effect?
The court below sustained defendants’ plea and directed the dismissal of complainant’s bill, without filing ail opinion, or otherwise stating the ground of its action.
'Pile agreed statement above referred to brings into the record, by stipulation, all the facts necessary to the determination of the points of law above stated, including the pertinent provisions of the French law and the decisions of the French courts interpreting the same, and applicable to the French patent, and the addition thereto, referred to in the plea, the effect of which jilea was to admit also the allegations of the bill of complaint. From the facts thus fully stated, it appears that the patent in suit was issued to Hennebique, October 4, 1898, upon an application filed December 29, 1897, for the full term of 17 years. It also appears that a French patent, No. 223,fid (i, was issued to Hennebique, in 1892, for a term of 15 years from August 8, 1892, and therefore limited to expire on August 8, 1907. The first certificate of addition thereto was issued to said 1 lennebique in 1893, and a second certificate of addition on April 6, 1898, upon an application therefor filed December 18, 1897. It is also admitted that, by French law, certificates of additions expire with the expiration of the original patent, it also appears that the invention which’is the subject of the ¡latent in suit — -
“is the same invention which the same inventor, Iiennobique, attempted to patent in France, by filing on December IS, 1897, in full compliance with ihe law of France then in force, ¡he second certificate of addition to his prior French patent, No. 223,346, which said second certifícate of addition was issued April 6, 1898. and granted to him such right as could legally result from such patent and certifícate.”
It is also established, in the stipulated record, that the original French ¡latent and the first certificate of addition have been declared mill and void by the French courts. This was first done on March 4, 1903, in an action brought by said Francois Hennebique against certain persons, for the infringement of said French patent, No. 223, 546, hv the Civil Tribunal of First Instance for the Department of the Seine; then, on an appeal taken by the said Hennebique from the said judgment of March 4, 1903,_ by the French Court of Appeals, on December 14, 1906, a duly certified copy of the decree of ihe latter court being embraced as an exhibit in the stipulated record. And again, on July 20, 1905, in an action brought by certain complainants against [872]*872said Hennebique, under the provisions of article 34 of the French law of July 5, 1844, for the annulment of said French patent, No. 223,546, and said first certificate of addition of August*?, 1893, the Civil Tribunal of First Instance for the Department of the Seine rendered a judgment referring the cause to a board of experts, to examine and report as to the validity of the said French patent, in view of certain prior French patents, and on appeal taken by the complainants from the said judgment, and on cross-appeal taken by said Hennebique, the French Court of Appeals, on December 14, 1906, rendered a decree, in which they held that the reference to a board of experts was unnecessary, reversed the.judgment of the Tribunal of First Instance, and held and adjudged that said French patent, No. 223,546, was null and void, in view of a certain prior French patent, and that said first certificate of addition, of August 7, 1893, was also null and void, since, being only an accessory, it could not exist independently of the principal patent. A duly certified copy of said decree is embraced as an exhibit in the stipulated record. Appeals to the Court of Cassation, taken by the said Hennebique, from the said decree of December 14, 1906, were dismissed in February, 1908.
It further appears, by the stipulated record, that the effect in law of the above judgments and decrees, adjudging the nullity of said French patent, No. 223,546, was to -render said certificate of addition thereto, of December 18, 1897, equally null and void, and that, by the French law, there is always this difference between the nullity and the forfeiture of a patent, that the forfeiture only affects the future of the patent, while the nullity affects it in the past as well, and that a patent which is null is a patent which is found never to have had an)r existence, one which in law never had any reason for existing, while, a patent which has become forfeited, on the other hand, is a patent which had a legal existence up to the time when the cause of forfeiture became a fact.
It follows, then, from the agreed statement of facts, that the French patent of 1892, as thus authoritively and finally adjudged, is and always a nullity, and the certificate of addition thereto, of December 18, 1897, as well as that of 1893, never existed in legal effect, because it could receive no life from the dead patent, upon which it was ingraft-ed. The question then recurs, can the delivery of such certificate of addition, which was a patent in form only, but which granted no monopoly whatever, because it was null and of no effect in law, be regarded as such a prior patenting of the invention of the patent in suit, as will limit the term of that patent under the provisions of section 4887 of the Revised Statutes ? That section reads as follows:
“Sec. 4887. No person shall be debarred from receiving a patent for bis 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, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country, shall be so limited as to expire at the same time with the foreign patent,” etc.
The French patent law confers exclusive rights, under the conditions set forth, for the invention or discovery of a new industrial prod[873]*873uct, or of a new means or new application of old means for-obtaining: an industrial result or product. It also provides that patents demanded in due form shall be delivered, without previous examination,. at the applicant’s own risk, and without guaranty as to either the reality, novelty, or merit of the invention; and it also declares that patents delivered shall be null and void whenever the discovery, invention, or application is not new. And it also gives to all parties having an interest therein, a right of action in civil tribunals of first instance, for the annulment thereof.
It was on the express ground that the alleged invention or device of the French patent here in question was not new that said patent was declared by the French courts to be null and void, and that the letters patent were a nullity. The exclusive privilege which purported to be conveyed by the French patent, and the certificates of addition thereto, never legally existed in contemplation of the French law. There was no monopoly, substantial or otherwise, that could withstand challenge; none that could successfully be asserted against the use by the public of the invention purporting to be patented. The words “foreign patent” and “patented in a foreign country,” in. section 4887, must be taken to connote matters of substance, and not of mere form, and the French patent and the addition thereto, though regular in form, conferred no such privilege or monopoly as would bring them within the purview of the section referred to. They conveyed to the patentee no substantial rights, and secured to him no valuable monopoly which he could enforce in the courts. Société Anonyme v. Gen. Elec. Co. (C. C.) 97 Fed. 604.
There is nothing on the face of the letters patent to show that it is limited to expire at the same time with a foreign patent which limits its life. All letters patent are issued to a qualified inventor for the full term of 17 years, pursuant to the provisions of section 23 of the patent act of 1870 (Act July 8, 1870, c. 230, 16 Stat. 201). Further provisions of the act, as embodied in section 1887 of the Revised Statutes, providing in effect that, when the patentee has been granted in a foreign country such a valid and substantial exclusive privilege or patent as we have above described, the life of a United States patent will expire with the expiration of such foreign patent. No such condition is shown to exist in relation to the patent in suit. The second certificate of addition, of December 18, 1897, covering the same invention as the patent-in suit, is shown to have been, by the French law, as set forth in the stipulated record and as adjudged and decreed by the French court, prior to the filing of this bill, a nullity, and void ab initio. It is impossible to hold, therefore, that the term of the patent in suit is limited by the said second addition to the French patent, and the plea to that effect is without merit.
The view we have thus taken makes it unnecessary to consider the second point of law raised by the appellant, viz., whether the said section 4887 had been abrogated by the treaty known as “an additional act for the international protection of industrial property.” But, if it is called for in order to support our judgment, I may say that I [874]*874agree with the views on the subject expressed in the concurring opinion of Judge Archbald.
The decree of the court below, therefore, sustaining the defendant’s plea and dismissing the bill of complaint, is hereby reversed.