The provision in § 739 that no suit shall be brought in a
circuit or district court of the United States against an
inhabitant of the United States, by original process, in any other
district than that of which he is an inhabitant
Page 114 U. S. 129
or in which he may be found at the time of serving the writ
applies to suits in equity under § 4915 Rev.Stat. to procure the
issue of letters patent for an invention after rejection of the
The official residence of the Commissioner of Patents is at
Washington, in the District of Columbia.
A written acceptance by the Commissioner of Patents at
Washington of service of a subpoena issued by the Circuit Court of
the United States for the District of Vermont on a bill in equity
filed in that court, "to have the same effect as if duly served on
me by a proper officer," has no other effect than the regular
service by a proper officer would have had, and waives no objection
to jurisdiction, and gives no consent to be sued away from his
residence or from the seat of government.
A notice by the Commissioner of Patents to counsel that he has
accepted service of a subpoena in manner above described, and has
received a copy of the bill, and that he shall not appear in
defense notifies him that further proceedings will be taken without
consent of the Commissioner to the jurisdiction of the court.
Bill in equity originally commenced against Mr. Marble as
Commissioner of Patents. Mr. Butterworth, his successor,
subsequently appeared below and brought the cause here on appeal.
The cause was argued here on its merits and on the jurisdictional
question on which it turned. The facts as to the latter are stated
in the opinion of the Court.
MR. JUSTICE WAITE delivered the opinion of the Court.
This is an appeal from a decree on a bill in equity filed in the
Circuit Court of the United States for the District of Vermont
against the Commissioner of Patents under § 4915 of the Revised
Statutes. That section is 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
Page 114 U. S. 130
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 proceeding shall be paid
by the applicant, whether the final decision is in his favor or
On the filing of the bill, a subpoena was issued commanding the
"Commissioner of Patents of the United States of America" to appear
before the court in Vermont and answer. On the 18th of October,
1883, the Commissioner made the following endorsement on the
"WASHINGTON, D.C., October 18, 1883"
"I hereby accept service of the within subpoena, to have the
same effect as if duly served on me by a proper officer, and I do
hereby acknowledge the receipt of a copy thereof."
"E. M. MARBLE"
"Comm'r of Patents
"(Office of Commissioner of Patents. Received Oct. 18,
And afterwards, and on said 23d day of October, A.D. 1883, a
letter from the Commissioner of Patents was filed, which said
letter is in the words and figures following:
"DEPARTMENT OF THE INTERIOR"
"UNITED STATES PATENT OFFICE"
"WASHINGTON, D.C. October 18, 1883"
"SIR: I am in receipt of your letter of the 16th instant
enclosing copy of a bill of complaint entitled Hill &
Prentice et al. v. The Commissioner of Patents of the United States
in the United States Circuit Court for the
District of Vermont, praying that said court direct the
Commissioner of Patents to issue a patent to the assignees of Hill
Page 114 U. S. 131
for the invention disclosed and claimed in their application
filed in this office March 30, 1880, for an improvement in milk
coolers; also a subpoena to appear and answer to said bill on the
5th proximo and a certified copy of said subpoena. I herewith
return the subpoena, service accepted, and have to inform you that
I shall not appear in defense in said bill."
"E. M. MARBLE, Commissioner
"Mr. W. E. Simonds, Hartford, Conn.
No other service of process was made on the Commissioner, and he
made no other appearance in the cause than such as may be implied
from his acceptance of service and his letter as above. In due
course of proceeding, a decree was entered adjudging that
"Samuel Hill and Benjamin B. Prentice, as inventors, and the
Vermont Machine Company, as assignee of said inventors, are
entitled to have issued to them letters patent . . . as prayed for
in the petition and bill of complaint."
No one was made defendant to the bill except the Commissioner of
Patents, and Hill, Prentice, and the machine company, the
complainants, were all citizens of Vermont. Benjamin Butterworth,
the Commissioner of Patents, took this appeal, and the only
question presented under it for our consideration is whether the
Circuit Court of the District of Vermont had jurisdiction so as to
bind the Commissioner by the decree which was rendered.
It is contended that the Supreme Court of the District of
Columbia has exclusive jurisdiction of suits against the
Commissioner brought under this section of the Revised Statutes. In
the view we take of this case, however, that question need not be
decided. By § 739 of the Revised Statutes, as well as by the Act of
March 3, 1875, c. 137, § 1, 18 Stat. 470, it is provided in
substance that, with some exceptions which do not apply to this
"No civil suit shall be brought before either of said courts
[the circuit or district courts of the United States] against an
inhabitant of the United States by any original process in any
other district than that of which he is an inhabitant or in which
he may be found at the time of serving the writ."
Page 114 U. S. 132
no doubt that this statute applies to suits brought under §
4915. The applicant is to have his remedy under that section by
bill in equity, and by the adjudication "of the court having
cognizance thereof, on notice to adverse parties, and other due
proceedings had." A bill in equity implies a suit in equity, with
process and parties. The prayer for process is one of the component
parts of the structure of a bill, and its purpose is to compel the
defendant to appear and abide the determination of the court on the
subject matter of the proceeding. Story, Eq.Pl. § 44.
The bill in this case was filed against the Commissioner alone,
and it does not appear that he was an inhabitant of the District of
Vermont. The Patent Office is in the Department of the Interior,
Rev.Stat. § 475, which is one of the executive departments of the
government at the seat of government in the District of Columbia.
Rev.Stat. § 437. The Commissioner of Patents is by law located in
the Patent Office. Rev.Stat. § 476. His official residence is
therefore at Washington, in the District of Columbia.
The subpoena in this case was delivered to him in the District
of Columbia, and his acceptance of service was made there. That is
apparent from the face of his endorsement and the letter which was
written afterwards, and filed in the cause undoubtedly as proof of
a delivery of a copy of the bill which the law required should be
served on him. Both the endorsement and the letter purport to have
been written at Washington, and the letter in the Patent Office.
Unless, therefore, the acceptance of service as endorsed on the
writ is to be treated as a voluntary appearance by the Commissioner
in the court in Vermont, without objection to the jurisdiction, the
case stands as it would if the process had been actually served on
him in the District of Columbia by some competent officer. The
circuit court was of opinion that by his acceptance of service, the
Commissioner waived all objection to the jurisdiction and consented
to be sued away from the seat of government and from his residence.
In this we think there was error. The fair meaning of the
endorsement on the writ is that the Commissioner admits the service
with the same effect it would have if
Page 114 U. S. 133
made by an officer in the District of Columbia. No appearance is
thereby entered in the cause. Service of the subpoena in the
District is acknowledged, but nothing more. In the letter which
followed the endorsement of service, both counsel and the court
were informed that the Commissioner declined to appear. The parties
proceeded therefore at their own risk and without the consent of
the defendant to the jurisdiction of the court. Such being the
case, we are of opinion that the court was without jurisdiction,
and had no authority to enter the decree which has been appealed
from. The act of Congress exempts a defendant from suit in any
district of which he is not an inhabitant or in which he is not
found at the time of the service of the writ. It is an exemption
which he may waive, but unless waived, he need not answer, and will
not be bound by anything which may be done against him in his
absence. What is here said, of course, does not apply to cases
where the suit is brought and service is made under §§ 736, 737,
and 738 of the Revised Statutes.
Without considering any of the other questions which have been
presented in the argument or which might be suggested under the
We reverse the decree of the circuit court and remand the
cause, with instructions to dismiss the bill without prejudice, for
want of jurisdiction.