(dissenting). I cannot concur in the opinion of the court. On August 8, 1893, a French patent No. 333,546, for concrete construction, was granted to Francois Hen-nebique for 15 years. Five years later Hennebique made another and distinct invention, but of the same general character as his above original patent. Under the French law this second invention could be patented either independently or as a certificate of addition to the original patent. This latter course Hennebique followed, and on April 6, 1898, was granted a certificate of addition (numbered 3) for this new invention, to expire August 8,1907. Under the French law:
“The certificate of addition has no existence of its own, and follows, in all its vicissitudes, the fate of the principal patent. If, then, the patent becomes forfeited, the certificate falls with it as a matter of law, even though the subject-matter of the certificate was itself both new and patentable.”
On December 39, 1897, Hennebique applied for an American patent on the invention covered by his second certificate of addition above described, and on October 4, 1898, the patent in suit, No. 611,907, for this invention, a “construction of joists, girders, and the like,” was granted to him. Now, it will be observed this patent was not for the invention covered by Hennebique’.s original French patent, No. 333,546, granted in 1893, but, as stipulated in the record (clause 5), for the same invention involved in his second addition granted iri 1898. Hen-nebique’s invention having thus, as stipulated, been previously patented abroad, the application became subject to, and the term of his patent fixed by, Rev. St. § 4887, which as then in force had this proviso:
“But every patent granted for an invention which has been previously granted in a foreign country shall be so limited as to 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, and in no case shall it be in force more than seventeen years.”
Now, clearly, this statute contemplated that the term for which a patent granted under it ran should be fixed by years when it was issued. The use of the word “term” — “at the same time with the one having the shortest term” — shows that and manifests an intent to fix, by reference to the existing term of the foreign patent, the term granted of the American one. “Id certum est quod certum reddi potest.” And the statute has been uniformly construed as granting a predetermined, and not a post-determinable, term. In Henry v. Providence Tool Co., Fed. Cas. No. 6,384, 3 Ban. & A. 501, Mr. Justice Clifford, sitting at circuit, had occasion to consider this act with reference to the question whether the term of the American patent was conclusively fixed when the patent issued. He there said:
“What is the true construction of the act of Congress under which the patent in suit is granted? * * * Congress employs the words ‘the foreign patent,’ evidently referring to the term of the foreign patent, to define the term of the domestic patent. Had Congress intended to grant a patent for *875an indefinite term, or for an i moer rain and undefined duration, they would have employed suitable words to express such an intent.”
After stating the purposes of the patent law and that the requirements of the specification were meant to fulfill them, he says:
“Adopt the theory of the complainant, and none of those requirements would be of any avail, as none could foreknow whether the term of the patent was for three and not for seven years, or for some indeterminate term of duration, the effect of which would be to make the rights of property in this country depend upon the discretion exercised by a foreign sovereign. Support to that view is derived from the words of the section, which refer not only to the foreign patent, but, if there he more than one, to the one having the shortest term, which, in effect, excludes the theory that the provision in any view can be held to include any subsequent prolongation or extension of tlie monopoly beyond what was then vested in the foreign patentee. If Congress has intended otherwise, the language would have been different, and words would have been employed to signify that the domestic patent should continue as long as the same invention was protected by the foreign government.”
Mr. Justice Clifford’s construction of the statute was cited and followed by Mr. Justice Blatchford (then Circuit Judge) in Reissner v. Sharp, Fed. Cas. No. 11,689, 4 Ban. & A. 366, saying:
“But Mr. Justice Clifford held that Congress never intended to extend the term of the United States patent beyond the legal term secured to the foreign patentee when tlie United States patent was granted, and that no act of a foreign sovereign, nor any act of a foreign legislature, could have the effect to prolong the term of a patent granted here beyond the term prescribed by the act of Congress. Mr. Justice Clifford refers, with force, to the considerations that, as the statute refers not only to the foreign patent, but, if there be more than one, to tlie one having tlie shortest term, it cannot be held to include any subsequent prolongation* or extension of the monopoly beyond that vested in the foreign patentee at the time of the granting of the United States patent; that, if Congress liad intended otherwise, the language would have been different, and words would hare been employed to signify that the domestic patent should continue as long as the same invention was protected by the foreign government; and that, under the opposite rule, neither the authorities of the United States, nor inventors, nor the public would ever be able to know what the patentee acquired under a patent granted by the United States, in a case where the invention had been previously patented in a foreign country.”
That Rev. St. § 4887, fixed unchangeably the term of the American patent was the view of Air. Justice Bradley, who in Bate Refrigerating Co. v. Gillett (C. C.) 31 Fed. 815, says:
“The term of the English jjatent fixed the term of the American patent, nothing more, nothing Jess. The subsequent fate of the English patent had no effect upon the American. The life of each after its inception prsceeded independently of the life of the other. See Protective Co. v. Burglar Alarm Co. (C. C.) 21 Fed. 458; Paillard v. Bruno (C. C.) 29 Fed. 864.”
In the case cited from 31 Fed. 458, Judge Wheeler said:
“The statute merely required that in such case [that is, where there is a prior foreign patent the patent shall be so limited as to expire at the same time with the foreign patent, Rev. St. § 4887. This seems to mean that the term of the patent shall be as long as tlie remainder of the term for which the patent was granted there, without reference to incidents occurring after the grant. Henry v. Providence Tool Co., Fed. Cas. No. 6,384, 3 Ban. & A. 501; Reissner v. Sharp. 16 Blatchf. 383. Fed. Cas. No. 11.689. It refers to fixing the term, not to keeping the foreign patent in force.”
*876And in Paillard v. Bruno, supra, Judge Wallace held:
“According to ttie construction thus placed upon the section, it should be read as though it declared that the United States patent is to expire at the same time with the term of the foreign patent previously obtained for the' same invention, or, if there be more than one, at the same time with the one having the shortest term. Upon this construction the duration of the term of the United States, patent fixed when the patent issues, according to the maxim, ‘Id certum est quod certum reddi potest.’ Under any other construction, neither the Commissioner of Patents, nor the patentee, nor the public would know the duration of the grant. The term of a patent is the period of duration expressed in the grant. It may be terminated by operation of law, or by the act of the parties, at- an earlier time; and consequently it might happen that of two patents the one having the shortest term may have the longest life.”
So, also, Judge Simonton, in Bonsack v. Smith (C. C.) 70 Fed. 892, held:
“In construing this section, the meaning of the words ‘expire’ and ‘term’ is controlling. Section 4887 makes the American patent ‘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.’ The Supreme Court of the United States, in one of the few cases on this point, construe this word ‘expire’ to mean cease to exist because of the termination of the duration of the original grant, and not to mean cease or determine by reason of some penalty or forfeiture' for the nonperformance of some condition subsequent. Pohl v. Brewing Co., 134 U. S. 381, 10 Sup. Ct. 577, 33 L. Ed. 953.”
To me it is clear that, as said above, the words “expire” and “term” are the controlling words of the statute, and that the word “expire” means an expiration by lapse of the time of the term. The words “so limited as to expire at the same time with the foreign patent” are equivalent to reading “so limited as to expire at the same time with [the expiration of the term of] the foreign patent”; or, in other words, “expire” refers solely to an ending at the end of the term by the passage of time. And that this is the proper construction of'the section is apparent from what was said in Pohl v. Brewing Company, supra. It is true the question there before the court was the alleged lapsing of the domestic patent by the subsequent forfeiture of the limiting foreign one. But in deciding that question it was held that no such lapse took place, because there was nothing in the statute to limit the duration of the domestic patent, save the duration of the legal term of the foreign patent in force at the time. Thus it is said:
“There is nothing in the statute which admits of the view that the duration of the United States patent is to be limited by anything hut the duration of-the legal term of the foreign patent in force at the time of the issuing of the Unite'd States patent, or that it is limited by any lapsing or forfeiture of any portion of the term of such foreign patent, by means of the operation of a condition subsequent, according to the foreign statute. In saying that ‘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,’ the statute manifestly assumes that the patent previously granted in a foreign country is. one granted for a definite term; and its meaning is that the United States patent shall be so limited as to expire at the same time with such term, of the foreign patent. * * * In the view that section 4887 is to be read as. if it said that the United States patent is to be so limited as -to expire at.the sainé time with the expiration of the term of the foreign patent, or, if there be more than one, at the same time with the expira-*877lion of the term of (he one having the shortest term, the interpretation we have given to it is in harmony with the interpretation of the words ‘expiration of term’ in analogous cases. Oakley v. Schoonmaker, 15 Wend. (N. Y.) 226; Beach v. Nixon, 9 N. Y. 35; Farnum v. Platt, 8 Pick. (Mass.) 339, 19 Am. Dec. 330. In those cases it was held that the words ‘expiration of term’ do not mean expiration of term through a forfeiture by breach of a condition, but mean expiration by lapse of time.”
And the case of Oakley v. Schoonmaker, supra, which is thus approved, brings out very clearly that the expiration of the,term is an expiration at its time limit, saying;
“The landlord cannot avail himself of the tenant’s violation of his agreement: as to cutting wood, if that were an act which would work a forfeiture. That is not the expiration of the time referred to in the 1st subdivision of the twenty-eighth section. The statute means expiration by lapse of time.”
These cases constrain us to hold that when the American patent was granted to Heuncbique, there then being a prior French patent to him which expired on August 8, 190 7, the American patent was unchange-ably fixed to expire on that day. Such became the contract between him and the government, and thereby the latter contracted to give Hen-nebiquc a monopoly of his invention until August 8, 1907. Such were the terms of the grant, and under all the foregoing cases such would have been the construction placed by them on that contract. Now, as the stipulation concedes the identity of the two inventions, Rev. St. § 4887, applies, and it necessarily follows that, if that contract is to he reformed or modified, it .must be so because the statute so provides. But the statute nowhere so provides.
It is said, however, in the majority opinion, that when the words “foreign patent” were used in the statute Congress in effect meant a valid foreign patent and one that on legal test should he adjudged valid. The simple answer to such a contention is that the act nowhere so says. By its silence it made no criterion of the void, voidable, or forfeiture character of the foreign patent, and the only feature thereof it does, by reference, adopt is its length of term,'and where there is more than one patent it takes the shortest as embodying the contract it makes with the foreign inventor. The intent of the statute is manifest. Finding an outstanding monopoly granted by a foreign government for the same invention, it contracted to grant a domestic monopoly for that term. Tt simply inquired whether this invention “has been previously granted in a foreign country.” Whether the patent was void or voidable, forfeitable or not, was not provided for by the statute. Length of term was the only test, or, as Justice Bradley put it in his direct, forcible words:
“The twin of the English (foreign) patent fixes the term of the American patent, nothing more, nothing less.’’
That: is the plain meaning of the words. There is no ground'for construction or the interjection of supposed intent. By the use of apt words of reference to the term of the foreign patent as a measure of time, and by its omission to refer to the terminable character of such foreign patent, Congress has made the then existing foreign time term the sole pertinent factor to fix the future time of the domestic *878patent. This, I submit, is in view with what was said in Bate v. Sulzberger, 157 U. S. 37, 15 Sup. Ct. 516, 39 L. Ed. 601:
' “Congress, in effect, by tbe existing law, says to an inventor seeking to enjoy tbe exclusive use in tliis country of his invention for tbe full term prescribed by law: ‘If your invention has not been introduced into public use in tbe United States for more than two yéars, you may, upon complying with tbe conditions prescribed, obtain an American patent, and you may, if you can, obtain a foreign patent. But tbe American patent will be granted on tbe condition that, if you obtain tbe foreign patent first, your invention shall be free to tbe American people whenever, by reason of tbe expiration of tbe foreign patent, it becomes free to people abroad; but in no case shall tbe term of tbe American patent exceed seventeen years.’ This we deem to be a sound interpretation of tbe statute, giving to tbe words used tbe meaning required by their ordinary signification. In our judgment tbe language used is so plain and unambiguous that refusal to recognize its natural, obvious meaning would be justly regarded as indicating a purpose to change tbe law by judicial action based upon some supposed policy of Congress.”
' On' March 4, 1903, the original patent of Hennebique was, in a suit in the French courts, adjudged to have been anticipated by an earlier patent to Monier, and was therefore null and void, and in appeals to higher courts that decision was finally affirmed in February, 1908. In this litigation the Hennebique second addition was neither mentioned nor made the subject of decree; but under the French law quoted such second addition fell, not because it did not involve invention, but because the original patent on which it was ingrafted had been annulled. The opinion of this court now holds that the effect of this annulment of the French patent in a proceeding begun after the American patent had issued was the same as if no foreign patent existed when Hennebique’s American patent was granted, and therefore Rev. St. § 4887 does not apply. The practical effect of this construction is that a statute which was intended (see Mushet’s Case, Commissioner of Patents’ Decisions, p. 105, approved in Huber v. Nelson, 148 U. S. 275, 13 Sup. Ct. 603, 37. F. Ed. 447) to place the American public on a parity with foreign countries with relation to foreign inventions by releasing the American monopoly as soon as it was released abroad is made to so operate that the release of the monopoly abroad, instead of releasing it here, actually extends it eight years longer than would have been the case had no steps been taken to release it abroad. And that this radical change in his patent was brought about in a suit honestly instituted by Hennebique himself still shows the grave dangers to which the.patent system is subject, when the fu-turé of an American patent-is not a matter of contract right, but one dependent upon the action of one of the parties to it. A result so at variance with the reason and spirit of the law is not to be imputed to Congress. It tends to unsettle rights, for when this patent was issued the public had a right to assume that 1907 was the limit of Henne-bique’s American patent. His French patent was then in force. The French law provided with reference to such patent:
“This right is established by deeds delivered by the government under the name of patents of invention.”
No step has been taken to annul it. It was on this status in France that Hennebique’s American patent was granted in 1898, to expire in *8791907. That the annulment of that French patent, begun three years later, should in any way affect the American patent, much less that it should extend its monopoly eight years, is a proposition whose statement seems to me its answer.