be applied to extended patents, an additional complexity arises. Does the national statute of limitation treat the first fourteen years of a patent separately from the last seven years, or does it treat both spaces of time as one term of twenty-one years? This inquiry is immaterial to the welfare of rights of action under the extended term of a patent; but it may be vital to those which arose under an original term. If the statute means, that actions based on an original term must be brought within six years after the expiration of that term, they are barred seven years sooner than they are if the statute means that all actions under a particular patent, may be brought during any part of the life of that patent, or within six years after its final expiration. Whether the statute has the one or the other of these meanings, is an unsettled question. The best of the arguments in favor of the first view are contained in a decision of Judge BARR;' and some of those supporting the second view are to be found in an opinion of Judge HUGHES. The only other decisions of the point which are contained in the reports, are those of Justice HARLAN,' and of Judges DILLON and LOVE,' and of Judge COLT. All of these jurists held the first view of the question: held that actions for infringements of the first term of an extended patent, must, according to the national statute of limitation, be brought during that term, or within six years after the expiration thereof.

2

§ 476. State statutes of limitation can never apply to any right of action under a patent, if that particular right is subject to the running of a national statute of limitation.* This point of law follows from the fact that the States have

1 Sayles' Executor v. Railroad Co. 9 Fed. Rep. 512, 1881.

Sayles v. Richmond, Fredericks. burg & Potomac Railroad Co. 4 Bann. & Ard. 431, 1879.

3 Sayles v. Lake Shore and Michigan Southern Railway Co. 9 Fed. Rep. 515, 1879.

Sayles v. Dubuque and Sioux

City Railroad Co. 5 Dillon, 562, 1887.

5 Hayden v. Oriental Mills, 22 Fed. Rep. 103, 1884.

6

Sayles. Oregon Central Railroad Co. 4 Bann. & Ard. 429, 1879; Hayden v. Oriental Mills, 22 Fed. Rep. 103, 1884; May . County of Logan, 30 Fed. Rep. 256, 1887.

no right to control the operation of the patent laws;' and from the fact that Congress never adopted State laws for the goverment of Federal courts, in any case where the Constitution, treaties, or statutes of the United States specially attend to the subject.' The rule of this section applies even to rights of action that were old enough, at the time of the approval of the national limitation, to have been fully barred by some State limitation, if they had been sued upon, and if the State limitation had been pleaded, and had been held to be applicable. This last point follows from the rule that the statute in force when the suit is brought, determines the right of a party to sue for a claim.' If, therefore, for example, an action is begun after July 8, 1870, and before July 8, 1884, for infringement committed before July 8, 1865, of a seventeen years patent, granted July 8, 1861; that action will not be barred by any five years State statute of limitation; because the case is still provided for by the national statute on the subject of limitation of actions for infringements of patents; and because the statute in force when the action is begun, and not any statute which might have been in force when it might have been begun, is the one to determine whether it can be sustained. Nor will such a right of action be barred by the national limitation, if it was sued upon before July 8, 1884, because, in that event, it was sued upon within six years after the expiration of the patent. It follows from the foregoing that an action may still be successfully brought for any infringement which was committed before June 22, 1874, of any seventeen-years patent which has not yet expired, or which expired less than six years before such action is brought. It follows also, that no action can hereafter be commenced, for any infringement committed before the last-mentioned day of any unextended fourteen

1 M'Culloch v. Maryland, 4 Wheaton, 436, 1819.

Revised Statutes, 721; Section 34 of the Judiciary Act of 1789; 1

Statutes at Large, Ch. 20, p. 92.

3 Patterson v. Gaines, 6 Howard, 601, 1848.

years patent, because every such patent expired more than six years ago. Whether any action can still be sustained upon any infringement, committed before the last-mentioned day, of the first term of any extended fourteen-years patent, depends first upon whether the extension expired more than six years before such suit was brought, and if it did not, then the question depends upon the answer to the question stated and explained in Section 475 of this book. Whether any action can still be sustained for any infringement committed before the last-mentioned day of the extended term of any fourteen-years patent, depends upon whether that extended term expired more than six years before such action was begun. Thus it appears that all suits for infringements which were committed before June 22, 1874, may stand or must fall according to the national statute of limitation. Actions based on infringements committed since the last-named day, are subjected to no statute of limitation, or to those of the States alone.

§ 477. Whether State statutes of limitation apply to such rights of action for infringements of patents, as are not subject to any national limitation, is a very important and much controverted question. It has never been decided or discussed in any Supreme Court case; but on the circuit, it has five times been decided in the affirmative,' and twelve times in the negative,' and once the judges leaned strongly to the negative opinion, though they left the point open to further debate. The fourth of the affirmative decisions was

1 Parker v. Hall, 2 Fisher, 62, 1857; Parker v. Hawk, 2 Fisher, 58, 1857; Rich v. Ricketts, 7 Blatch. 230, 1870; Hayden v. Oriental Mills, 15 Fed. Rep. 605, 1883; Royer v. Coupe, 29 Fed. Rep. 362, 1886.

Parker v. Hallock, 2 Fisher, 543, 1857; Collins v. Peebles, 2 Fisher, 541, 1865; Read v. Miller, 2 Bissell, 16, 1867; Wetherill v. Zinc Co. 1 Bann. & Ard. 489, 1874; Anthony v. Carroll, 2 Bann. & Ar. 195, 1875; Sayles v. Lake Shore and Michigan Southern Railway Co. 9 Fed. Rep.

515, 1878; Adams v. Stamping Co. 25 Fed. Rep. 270, 1885: May e County of Fond du Lac, 27 Fed. Rep. 692, 1886; May . County of Buchanan, 29 Fed. Rep. 469, 1886; May v. County of Logan, 30 Fed. Rep. 257, 1887; May . County of Cass, 30 Fed. Rep. 762, 1887; May e County of Ralls, 31 Fed. Rep. 473, 1887.

Sayles v. Dubuque and Sioux City Railroad Co. 5 Dillon, 562, 1878.

delivered by Judge LOWELL, and is abler than either of the other opinions on that side of the question; while his predecessor, Judge SHEPLEY, delivered the fifth of the opinions which support the negative view.

Those who hold the affirmative of the question, must base their argument on Section 721 of the Revised Statutes, which is a substantial and nearly literal transcript of Section 34 of the Judiciary Act of 1789, and which provides: "That the laws of the several States, except where the Constitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at common law, in the courts of the United States, in cases where they apply." This language appears to be broad enough to cover the application to a patent suit, of a State statute prescribing the time within which actions of trespass on the case must be begun. But the Supreme Court has held that: "The section above quoted was merely intended to confer on the courts of the United States, the jurisdiction necessary to enable them to administer the laws of the States." If that doctrine is adhered to by that court, it will follow that State statutes of limitation do not apply to patent actions in the Federal courts. But the holding in the case of the United States v. Reid, does not seem to have been constantly remembered by the Supreme Court justices, for while Chief Justice TANEY, who delivered that opinion, still sat upon the bench, the court three times decided that State statutes relevant to rules of evidence are applicable to patent actions at law in Federal courts."

1

In view of the foregoing contradictory authorities, it is certain that the question is deeply enveloped in doubt. The point ought therefore to be decided in the negative, for rights of property ought not to be cut off by any statute of

1 United States v. Reid, 12 Howard, 363, 1851.

Vance o. Campbell, 1 Black, 430,

1861; Haussknecht v. Claypool, 1 Black, 435, 1861; Wright v. Bales, 2 Black, 535, 1862.

limitation, unless that statute is clearly applicable to those rights.'

§ 478. Replications and subsequent pleadings are seldom required in patent cases, because most of the pleas applicable to such cases, are pleas in bar by way of traverse, and not by way of confession and avoidance. The principal exceptions are the plea of a license; the plea of a release; and the plea of a statute of limitation. If the plaintiff purposes to deny the existence of a license or release, as the case may be, his replication should be by way of traverse to the plea, and should conclude to the country, and thus tender issue. So, also, if the plaintiff can show that the license or release covered only a part of the infringement covered by the declaration, the general replication by way of traverse will be sufficient. If the plaintiff cannot deny the existence of a full paper, but purposes to show that it was obtained by duress or by fraud, or that it has been effectually revoked, his replication will state the facts by way of confession and avoidance of the plea, and will conclude with a verification. It will then be the duty of the defendant to file a rejoinder to the replication. If he can deny the duress, or the fraud, or the revocation, as the case may be, his rejoinder will be by way of traverse, and will conclude by tendering issue. If, however, he cannot deny the truth of the replication, but can avoid its effect by showing that the plaintiff freely ratified the license or release after the alleged duress terminated, or the alleged fraud became known to him, or that he annulled the revocation after making it, then the defendant's rejoinder will be by way of confession and avoidance, and will conclude with a verification, and will render necessary a sur-rejoinder from the plaintiff, denying the truth of the rejoinder, and putting himself upon the country.

§ 479. When pleaded to an action based on an infringe

1 Bedell v. Janney, 4 Gilman (Ill.) 208, 1847; Elder v. Bradley, 2 Sneed (Tenn.), 253, 1854; Ludwig v. Stew

art, 32 Michigan, 28, 1875.

2

1 Chitty on Pleading, 596.