MCINTYRE v. PERRY.

Decided July 19, 1911.

169 O. G., 943.

INTERFERENCE-DECISION ON PRIORITY-BILL IN EQUITY UNDER PROVISIONS OF SECTION 4915, REVISED STATUTES-GRANT OF PATENT TO OPPOSING PARTY NOT SUSPENDED.

Where after a decision on priority by the Court of Appeals of the District of Columbia the defeated party files a bill in equity under the provisions of section 4915, Revised Statutes, Held that the issuance of a patent to the successful party to the interference cannot be suspended pending the final determination of the suit.

ON MOTION.

VEHICLE-SPRING.

Messrs. Bates, Fouts & Hull and Mr. Melville Church for McIntyre. Mr. A. S. Pattison for Perry.

TENNANT, Assistant Commissioner:

This is a motion by McIntyre that further proceedings in this cause be suspended and stayed and a patent to the party John A. Perry withheld until the termination of a pending suit brought under section 4915 of the Revised Statutes by said McIntyre and his assignee, The Perfection Spring Company, against John A. Perry and his assignee, The Winton Motor Carriage Company, in the United States Circuit Court for the Eastern Division of the Northern District of Ohio.

The record of this interference shows that the case came on for final hearing before the Examiner of Interferences and was decided by him in favor of McIntyre on May 27, 1909. On appeal to the Examiners-in-Chief the decision of the Examiner of Interferences was reversed, and upon appeal to the Commissioner the decision of the Examiners-in-Chief was affirmed. Appeal was taken from the decision of the Commissioner to the Court of Appeals of the District of Columbia, and upon May 29, 1911, that court rendered a decision. affirming the decision of the Commissioner of Patents, (post 432; 170 O. G., 927; 37 App. D. C., 372,) which was duly certified to the Commissioner in accordance with law.

It is contended in behalf of McIntyre that, although it had been the established practice in the Patent Office to refuse to suspend proceedings in an interference case after a decision by the court of appeals on the question of priority of invention, (ex parte Sargent, C. D., 1877, 125; 12 O. G., 475; Wells v. Boyle, C. D., 1888, 36; 43 O. G., 753; Northall v. Bernardin, Gourick's Digest, vol. 8, 34,) since the above decisions it has been held by the Supreme Court of

the United States that the decisions of the court of appeals in interference cases are not final decisions, as further proceedings may be had by a bill in equity under section 4915 of the Revised Statutes. (Frasch v. Moore, C. D., 1908, 609; 137 O. G., 230; 211 U. S., 1; Johnson v. Mueser, C. D., 1909, 556; 145 O. G., 767; 212 U. S., 283; Moore, Commissioner of Patents, v. United States, ex rel. Newcomb Motor Company, 216 U. S., 608.)

It is urged that since an appeal allowed by statute in an interference case has always operated as a supersedeas of the judgment appealed from, although no statute specifically declares that it shall so act, section 4915 of the Revised Statutes should be regarded as merely one further step in the prosecution of an applicant's remedy in an interference case, and the decision of the Court of Appeals of the District of Columbia not being regarded as final, that the filing of a bill under section 4915, Revised Statutes, should operate as a supersedeas of the judgment of the court of appeals sought to be reviewed by the proceedings under such bill.

It is contended in behalf of Perry that the decision of the court of appeals awarding priority of invention to him terminated the interference and that the Commissioner of Patents is without authority to reinstate the interference for any purpose.

The contention of McIntyre is based upon the interpretation placed upon section 4915 of the Revised Statutes by the Supreme Court of the United States in Frasch v. Moore, supra, which is as follows:

By section 4915 a remedy by bill in equity is given where a patent is refused, and reads as follows:

"SEC. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceedings shall be paid by the applicant, whether the final decision is in his favor or not.”

The final decision referred to is obviously the judicial decision on the bill in equity, while in interference cases and in all others going up from the Commissioner to the court of appeals there is no final judgment in the cause, but one interlocutory in its nature and binding only upon the Commissioner "to govern the further proceedings in the case." The opinion or decision of the court reviewing the Commissioner's decision is not final, because it does not preclude any person interested from contesting the validity of the patent in court, and if the decision of the Commissioner grants the patent that is the end of the matter as between the Government and the applicant; and if he

refuses it and the court of appeals sustains him, that is merely a qualified finality, for, as we have seen, the decision of that court may be challenged generally and a refusal of patent may be reviewed and contested by bill as provided.

It is urged that this interpretation of section 4915, Revised Statutes, is, in effect, a ruling that the bringing of a bill in equity under said section amounts to an appeal from the decision of the court of appeals and that the bringing of such a bill should act as a supersedeas to stay further proceedings in the interference.

This contention is not believed to be well founded. The Supreme Court of the United States in Frasch v. Moore, above cited, specifically referred to its prior decision in the case of Butterworth v. Hoe, (C. D., 1884, 429; 29 O. G., 615; 112 U. S., 50,) and there appears to be nothing in the later decision which either modifies or reverses the rulings in the prior decision in respect to this matter. In the case of Butterworth v. Hoe, supra, the Court said:

It is evident that the appeal thus given to the Supreme Court of the District of Columbia (now the Court of Appeals of the District of Columbia, section 9 of the act of February 9, 1893,) from the decision of the Commissioner is not the exercise of ordinary jurisdiction at law or in equity on the part of that court, but is one step in the statutory proceeding under the patent laws whereby that tribunal is interposed in aid of the Patent Office, though not subject to it. Its adjudication, though not binding upon any who choose by litigation in courts of general jurisdiction to question the validity of any patent thus awarded, is, nevertheless, conclusive upon the Patent Office itself, for, as the statute declares, Revised Statutes, section 4914, it "shall govern the further proceedings in the case." The Commissioner cannot question it. He is bound to record and obey it. His failure or refusal to execute it by appropriate action would undoubtedly be corrected and supplied by suitable judicial process. The decree of the court is the final adjudication upon the question of right; everything after that dependent upon it is merely in execution of it; it is no longer matter of discretion, but has become imperative and enforceable.

It is thus seen that so far as the Patent Office is concerned a decision of the court of appeals is binding upon it. In further commenting upon the provisions of section 4915, Revised Statutes, in the same case the Court said:

It is thereby provided that the applicant may have remedy by bill in equity. This means a proceeding in a court of the United States having original equity jurisdiction under the patent laws. according to the ordinary course of equity practice and procedure. It is not a technical appeal from the Patent Office, like that authorized in section 4911, confined to the case as made in the record of that Office, but is prepared and heard upon all competent evidence adduced and upon the whole merits. Such has been the uniform and correct practice in the circuit courts. (Whipple v. Miner, C. D., 1883, 303; 23 O. G.. 2236; 15 Fed. Rep., 117; er parte Squire, 3 Ban. and A., 133; Butler v. Shaw, 21 Fed. Rep., 321.)

It is observed that from the portions of the decision in Butterworth v. Hoe above quoted the Supreme Court not only recognized

the fact that the decision of the court, to which appeals from the Commissioner in interference cases were provided by statute, was binding upon the Commissioner of Patents, but also that the additional remedy provided for by section 4915 of the Revised Statutes constituted an original bill, distinct and independent from proceedings had in the Patent Office, which were reviewable by the appellate court. Such a construction has been uniformly placed upon bills under section 4915, Revised Statutes.

In the case of Bernardin v. Northall (C. D., 1897, 327; 78 O. G., 1740; 77 Fed Rep., 849) the Court said:

The ninth section of the act to establish the Court of Appeals for the District of Columbia presents no such case of irreconcilable conflict with section 4915 of the Revised Statutes as to work an implied repeal of the latter. An appeal may be prosecuted to the appellate court without taking away from the circuit court the original jurisdiction conferred upon it. The purpose of an appeal is simply to have a review of the decision of the Commissioner of Patents on the identical record before the latter officer. It is in no just sense a substitute for the trial provided for by a bill in equity in the circuit court.

The trial before the court of appeals is restricted and is in aid of an executive duty rather than a judicial hearing. The trial in the circuit court is in the strictest sense a judicial hearing by original bill, with all the powers of a court of equity at the service of the parties to the suit.

In the case of Appert v. Brownsville Plate Glass Co., Schmertz v. Appert, (44 Fed. Rep., 115) which involved a bill and cross-bill under section 4915 of the Revised Statutes, the Court said:

Under the authorities (Butterworth v. Hoe, C. D., 1884, 429; 29 O. G., 615; 112 U. S., 50; 5 Sup. Ct., 25; 28 L. Ed., 656; Butler v. Shaw, C. C., 21 Fed. Rep., 321; Wheaton v. Kendall, C. C., 85 Fed. Rep., 761; Bernardin v. Northall, C. C., C. D., 1897, 327; 78 O. G., 1740; 77 Fed. Rep., 849) the present case is not an appeal from the proceedings in the Patent Office, but one of original equity jurisdiction.

In view of the rulings above cited it is obvious that the filing of a bill under section 4915 of the Revised Statutes by one of the parties previously involved in an interference in which a decision has been rendered by the Court of Appeals of the District of Columbia is in no sense an appeal from the decision of that court. It cannot, therefore, act as a supersedeas of the judgment of the court of appeals. Since, then, the bill in equity does not so operate, the Commissioner is without authority to withhold a patent from Perry pending the determination of that suit. Furthermore, there is no equitable reason why the Commissioner should withhold the issuance of a patent on this ground. The parties to the interference were given the right under the law to establish their respective claims of priority of invention. Testimony was adduced by each of the parties and the case tried in conformity with the law. The numerous appeals provided for from the decisions of the various tribunals of the Patent Office

were taken and a decision rendered by the United States court of jurisdiction equal to that of a circuit court of appeals. To now withhold the grant of a patent to the successful party upon the possibility that his adversary might prevail in a different suit, based upon different pleadings, and in which the judgment would be rendered upon a different record, would be contrary to all theories of justice. The number of appeals already provided for by the statutes places a burden upon applicants for patents and often delays for many years the granting of a patent to the real inventor, and, consequently, delays the time when the public may enjoy the benefit of the invention. To suspend the granting of a patent to the successful party to an interference would still further deprive the public of the right to enjoy this invention and would discourage rather than promote the making of useful inventions and discoveries.

I am clearly of the opinion that after the decision of the Court of Appeals of the District of Columbia in this interference, which, under the statute, must "govern the further proceedings in the case," the Commissioner is without jurisdiction to entertain motions of this character, (Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D., 1908, 108; 134 O. G., 255,) and that, therefore, this moion is without standing.

The motion is accordingly dismissed.

EX PARTE THE WILLOWCRAFT SHOPS.

Decided July 15, 1911.

170 O. G., 243.

TRADE-MARKS-REGISTRATION REFUSED BY COMMISSIONER-AMENDMENT OF LAW— CANNOT BE REOPENED IN VIEW THEREOF.

Where a trade-mark was refused registration by the Commissioner on the ground that it was merely the name of the applicant and thereafter the Trade-Mark Act was amended so as to permit the registration of an applicant's name or a portion thereof if otherwise registrable, Held that this amendment constitutes no ground for reopening the case.

ON PETITION.

TRADE-MARK FOR WILLOW AND RUSH FURNITURE.

Mr. Walter E. Lombard for the applicant.

TENNANT, Assistant Commissioner:

This is a petition that the abové-entitled case be reopened and the Examiner of Trade-Marks directed to further consider the application, in view of the amendment to the trade-mark law approved February 18, 1911, and that he be authorized to grant the registration.