An appeal to the Court of Appeals of the District of Columbia
from the decision of the Commissioner of Patents in an interference
controversy presents all the features of a civil case, a plaintiff,
a defendant and a judge, and deals with a question judicial in its
nature, in respect of which the judgment of the court is final so
far as the particular action of the Patent Office is concerned, and
such judgment is nonetheless a judgment because its effect may be
to aid an administrative or executive body in the performance of
duties legally imposed upon it by Congress in execution of a power
granted by the Constitution.
In deciding whether a patent shall issue or not, the
Commissioner of Patents acts on evidence, finds the facts, applies
the law and decides questions
Page 172 U. S. 577
affecting not only public but private interests, and likewise as
to reissues, or extension, or on interference between contesting
claimants, in all of which he exercises judicial functions.
Butterworth v. Hoe, 112 U. S. 50,
held to be directly in point, and the language on page
112 U. S. 59
held to be also in point in which the Court, speaking of
that clause in Article I, Section 8 of the Constitution, which
confers upon Congress the power
"to promote the progress of science and useful arts by securing
for limited times to authors and inventors, the exclusive right to
their respective writings and discoveries"
says:
"The legislation based on this provision regards the right of
property in the inventor as the medium of the public advantage
derived from his invention, so that in every grant of the limited
monopoly, two interests are involved -- that of the public, who are
the grantors, and that of the patentee. There are thus two parties
to every application for a patent, and more when, as in case of
interfering claims or patents, other private interests compete for
preference. The questions of fact arising in this field find their
answers in every department of physical science, in every branch of
mechanical art; the questions of law necessary to be applied in the
settlement of this class of public and private rights have founded
a special branch of technical jurisprudence. The investigation of
every claim presented involves the adjudication of disputed
questions of fact upon scientific or legal principles, and is
therefore essentially judicial in its character, and requires the
intelligent judgment of a trained body of skilled officials, expert
in the various branches of science and art, learned in the history
of invention and proceeding by fixed rules to systematic
conclusions."
In an interference proceeding in the Patent Office between
Bernardin and Northall, the Commissioner, Seymour, decided in favor
of Bernardin, whereupon Northall prosecuted an appeal to the Court
of Appeals of the District of Columbia. That court awarded Northall
priority, and reversed the Commissioner's decision. 7 App.D.C. 452.
Bernardin, notwithstanding, applied to the Commissioner to issue
the patent to him, and tendered the final fee, but the Commissioner
refused to do this in view of the decision of the Court of Appeals,
which had been duly certified to him. Bernardin then applied to the
Supreme Court of the District of Columbia for a mandamus to compel
the Commissioner to issue the patent in accordance with his prior
decision, on the ground that the statute providing for an appeal
was unconstitutional and the judgment of the Court of Appeals void
for want of jurisdiction. The application was denied, and Bernardin
appealed to
Page 172 U. S. 578
the Court of Appeals, which affirmed the judgment. 10 App.D.C.
294.
Seymour resigned as Commissioner, and was succeeded by
Butterworth, and Bernardin recommenced his proceeding, which again
went to judgment in the Supreme Court and the Court of Appeals. 11
App.D.C. 91. The case was brought to this Court, but abated in
consequence of the death of Butterworth.
169 U.
S. 600. Bernardin thereupon brought his action against
Duell, Butterworth's successor, and judgment against him was again
rendered in the District Supreme Court, that judgment affirmed by
the Court of Appeals, and the cause brought here on writ of
error.
The following sections of the Revised Statutes were referred to
on the argument:
"SEC. 4906. The clerk of any court of the United States, for any
district or territory wherein testimony is to be taken for use in
any contested case pending in the Patent Office, shall, upon the
application of any party thereto or of his agent or attorney, issue
a subpoena for any witness residing or being within such district
or territory, commanding him to appear and testify before any
officer in such district or territory authorized to take
depositions and affidavits at any time and place in the subpoena
stated. But no witness shall be required to attend at any place
more than forty miles from the place where the subpoena is served
upon him."
"SEC. 4907. Every witness duly subpoenaed and in attendance
shall be allowed the same fees as are allowed to witnesses
attending the courts of the United States."
"SEC. 4908. Whenever any witness, after being duly served with
such subpoena, neglects or refuses to appear, or after appearing
refuses to testify, the judge of the court whose clerk issued the
subpoena may, on proof of such neglect or refusal, enforce
obedience to the process or punish the disobedience, as in other
like cases. But no witness shall be deemed guilty of contempt for
disobeying such subpoena unless his fees and traveling expenses in
going to, returning from, and one day's attendance at the place of
examination
Page 172 U. S. 579
are paid or tendered him at the time of the service of the
subpoena, nor for refusing to disclose any secret invention or
discovery made or owned by himself."
"SEC. 4909. Every applicant for a patent or for the reissue of a
patent, any of the claims of which have been twice rejected, and
every party to an interference may appeal from the decision of the
primary examiner, or of the examiner in charge of interferences in
such case, to the board of examiners in chief, having once paid the
fee for such appeal."
"SEC. 4910. If such party is dissatisfied with the decision of
the examiners in chief, he may, on payment of the fee prescribed,
appeal to the Commissioner in person."
"SEC. 4911. If such party, except a party to an interference, is
dissatisfied with the decision of the Commissioner, he may appeal
to the Supreme Court of the District of Columbia, sitting in
banc."
"SEC. 4912. When an appeal is taken to the Supreme Court of the
District of Columbia, the appellant shall give notice thereof to
the Commissioner, and file in the Patent Office, within such time
as the Commissioner shall appoint, his reasons of appeal,
specifically set forth in writing."
"SEC. 4913. The court shall, before hearing such appeal, give
notice to the Commissioner of the time and place of the hearing,
and on receiving such notice, the Commissioner shall give notice of
such time and place in such manner as the court may prescribe to
all parties who appear to be interested therein. The party
appealing shall lay before the court certified copies of all the
original papers and evidence in the case, and the Commissioner
shall furnish the court with the grounds of his decision, fully set
forth in writing, touching all the points involved by the reasons
of appeal. And at the request of any party interested or of the
court, the Commissioner and the examiners may be examined under
oath, in explanation of the principles of the thing for which a
patent is demanded."
"SEC. 4914. The court, on petition, shall hear and determine
such appeal, and revise the decision appealed from in a summary way
on the evidence produced before the Commissioner at such early and
convenient time as the court may
Page 172 U. S. 580
appoint, and the revision shall be confined to the points set
forth in the reasons of appeal. After hearing the case, the court
shall return to the Commissioner a certificate of its proceedings
and decision, which shall be entered of record in the Patent Office
and shall govern the further proceedings in the case. But no
opinion or decision of the court in any such case shall preclude
any person interested from the right to contest the validity of
such patent in any court wherein the same may be called in
question."
"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 filling 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 not."
Section 780 of the Revised Statutes of the District of Columbia
reads thus:
"SEC. 780. The Supreme Court, sitting in banc, shall have
jurisdiction of and shall hear and determine all appeals from the
decisions of the Commissioner of patents, in accordance with the
provisions of sections forty-nine hundred and eleven to section
forty-nine hundred and fifteen, inclusive, of chapter one, Title
LX, of the Revised Statutes, 'Patents, Trademarks, and
Copyrights.'"
Section 9 of the "Act to establish a Court of Appeals for the
District of Columbia, and for other purposes," approved February 9,
1893, 27 Stat. 434, c. 74, is:
Page 172 U. S. 581
"SEC. 9. That the determination of appeals from the decision of
the Commissioner of Patents, now vested in the general term of the
Supreme Court of the District of Columbia, in pursuance, of the
provisions of section seven hundred and eighty of the Revised
Statutes of the United States, relating to the District of
Columbia, shall hereafter be, and the same is hereby, vested in the
Court of Appeals created by this act, and in addition, any party
aggrieved by a decision of the Commissioner of Patents in any
interference case may appeal therefrom to said Court of
Appeals."
MR. CHIEF JUSTICE FULLER, after stating the facts in the
foregoing language, delivered the opinion of the Court.
The Court of Appeals for the District of Columbia adjudged that
Northall was entitled to the patent. By section 8 of the act
establishing that court, 27 Stat. 434, c. 74, it is provided that
any final judgment or decree thereof may be revised by this Court
on appeal or error in cases wherein the validity of a statute of
the United States is drawn in question. The validity of the act of
Congress allowing an appeal to the Court of Appeals in interference
cases was necessarily determined when that court went to judgment,
yet no attempt was made to bring the case directly to this Court,
but the relator applied to the District Supreme Court to compel the
Commissioner to issue the patent in disregard of the judgment of
the Court of Appeals to the contrary; and, the application having
been denied, the Court of Appeals was called on to readjudicate the
question of its own jurisdiction.
The ground of this unusual proceeding, by which the lower court
was requested to compel action to be taken in defiance
Page 172 U. S. 582
of the court above and the latter court was called on to
prejudge its own judgment, was that the decree of the Court of
Appeals was utterly void because of the unconstitutionality of the
statute by which it was empowered to exercise jurisdiction.
Nothing is better settled than that the writ of mandamus will
not ordinarily be granted if there is another legal remedy, nor
unless the duty sought to be enforced is clear and indisputable,
and we think that, under the circumstances, the remedy by appeal
existed, and that it is not to be conceded that it was the duty of
the Commissioner to disobey the decree because in his judgment the
statute authorizing it was unconstitutional, or that it would have
been consistent with the orderly and decorous administration of
justice for the District Supreme Court to hold that the Court of
Appeals was absolutely destitute of the jurisdiction which it had
determined it possessed. Even if we were of opinion that the act of
Congress was not in harmony with the Constitution, every
presumption was in favor of its validity, and we cannot assent to
the proposition that it would have been competent for the
Commissioner to treat the original decree as absolutely void and
without force and effect as to all persons and for all
purposes.
But as in our opinion the Court of Appeals had jurisdiction, we
prefer to affirm the judgment on that ground.
The contention is that Congress had no power to authorize the
Court of Appeals to review the action of the Commissioner in an
interference case, on the theory that the Commissioner is an
executive officer, that his action in determining which of two
claimants is entitled to a patent is purely executive, and that
therefore such action cannot be subjected to the revision of a
judicial tribunal.
Doubtless, as was said in
Murray v. Hoboken Land &
Improvement Co., 18 How. 284, Congress cannot bring
under the judicial power a matter which, from its nature, is not a
subject for judicial determination; but at the same time, as Mr.
Justice Curtis, delivering the opinion of the Court, further
observed,
"There are matters involving public
Page 172 U. S. 583
rights which may be presented in such form that the judicial
power is capable of acting on them and which are susceptible of
judicial determination, but which Congress may or may not bring
within the cognizance of the courts of the United States, as it may
deem proper."
The instances in which this has been done are numerous, and many
of them are referred to in
Fong Yue Ting v. United States,
149 U. S. 714,
149 U. S. 715,
149 U. S.
728.
Since, under the Constitution, Congress has power
"to promote the progress of science and useful arts, by securing
for limited times to authors and inventors the exclusive right to
their respective writings and discoveries,"
and to make all laws which shall be necessary and proper for
carrying that expressed power into execution, it follows that
Congress may provide such instrumentalities in respect of securing
to inventors the exclusive right to their discoveries as in its
judgment will be best calculated to effect that object.
And by reference to the legislation on the subject, a
comprehensive sketch of which was given by Mr. Justice Matthews in
Butterworth v. Hoe, 112 U. S. 50, it
will be seen that from 1790, Congress has selected such
instrumentalities, varying them from time to time, and since 1870
has asserted the power to avail itself of the courts of the
District of Columbia in that connection.
The Act of April 10, 1790, c. 7, 1 Stat. 109, authorized the
issue of patents by the Secretary of State, the Secretary for the
Department of War, and the Attorney General, or any two of them,
"if they shall deem the invention or discovery sufficiently useful
and important," and this was followed by the Act of February 21,
1793, c. 11, 1 Stat. 318, authorizing them to be issued by the
Secretary of State, upon the certificate of the Attorney General
that they were conformable to the act. The ninth section of the
statute provided for the case of interfering applications, which
were to be submitted to the decision of there arbitrators, chosen
one by each of the parties, and the third appointed by the
Secretary of State, whose decision or award, or that of two of
them, should be final as respected the granting of the patent.
Then came the Act of July 4, 1836, c. 357, 5 Stat. 117,
creating
Page 172 U. S. 584
in the Department of State the Patent Office, "the chief officer
of which shall be called the Commissioner of Patents," and
"whose duty it shall be, under the direction of the Secretary of
State, to superintend, execute, and perform, all such acts and
things touching and respecting the granting and issuing of patents
for new and useful discoveries, inventions, and improvements, as
are herein provided for, or shall hereafter be, by law, directed to
be done and performed. . . ."
By that act, it was declared to be the duty of the Commissioner
to issue a patent if he "shall deem it to be sufficiently useful
and important," and in case of his refusal, the applicant was (sec.
7) secured an appeal from his decision to a board of examiners, to
be composed of three disinterested persons appointed for that
purpose by the Secretary of State, one of whom at least to be
selected, if practicable and convenient, for his knowledge and
skill in the particular art, manufacture, or branch of science to
which the alleged invention appertained. The decision of this board
being certified to the Commissioner, it was declared that "he shall
be governed thereby in the further proceedings to be had on such
application." A like proceeding, by way of appeal was provided in
cases of interference. By section 16 of the act, a remedy by bill
in equity, still existing in sections 4915, 4918, Rev.Stat., was
given as between interfering patents, or whenever an application
had been refused on an adverse decision of a board of examiners. By
section 11 of the Act of March 3, 1839, c. 88, 5 Stat. 354, as
modified by the Act of August 30, 1852, c. 107, 10 Stat. 75, it was
provided that in all cases where an appeal was thus allowed by law
from the decision of the Commissioner of Patents to a board of
examiners, the party, instead thereof, should have a right to
appeal to the chief judge or to either of the assistant judges of
the Circuit Court of the District of Columbia, and by section 10,
the provisions of section 16 of the act of 1836 were extended to
all cases where patents were refused for any reason whatever,
either by the Commissioner or by the Chief Justice of the District
of Columbia upon appeals from the decision of the Commissioner, as
well as where the
Page 172 U. S. 585
same shall have been refused on account of, or by reason of,
interference with a previously existing patent.
By the act of March 3, 1849, c. 108, 9 Stat. 395, the Patent
Office was transferred to the Department of the Interior. The act
of March 2, 1861, c. 88, 12 Stat. 246, created the office of
examiners in chief
"for the purpose of securing greater uniformity of action in the
grant and refusal of letters patent, . . . to be composed of
persons of competent legal knowledge and scientific ability, whose
duty it shall be, on the written petition of the applicant for that
purpose being filed, to revise and determine upon the validity of
decisions made by examiners when adverse to the grant of letters
patent and also to revise and determine in like manner upon the
validity of the decisions of examiners in interference cases, and
when required by the Commissioner in applications for the extension
of patents, and to perform such other duties as may be assigned to
them by the Commissioner, that from their decisions appeals may be
taken to the Commissioner of Patents in person, upon payment of the
fee hereinafter prescribed; that the said examiners in chief shall
be governed in their action by the rules to be prescribed by the
Commissioner of Patents."
The Act of July 8, 1870, c. 230, 16 Stat. 198, revised,
consolidated, and amended the statutes then in force on the
subject, and by section 48, an appeal to the Supreme Court of the
District of Columbia sitting in banc was provided for, whose
decision was to govern the further proceedings in the case (sec.
50), and the provisions of the act material to the present inquiry
were carried in substance into the existing revision.
By the Act of February 9, 1893, c. 74, 27 Stat. 434, the
determination of appeals from the Commissioner of Patents, which
was formerly vested in the general term of the Supreme Court of the
District, was vested in the Court of Appeals, and in addition it
was provided that "any party aggrieved by a decision of the
Commissioner of Patents in any interference case may appeal
therefrom to said Court of Appeals."
As one of the instrumentalities designated by Congress in
Page 172 U. S. 586
execution of the power granted, the office of Commissioner of
Patents was created, and though he is an executive officer,
generally speaking, matters in the disposal of which he exercises
functions judicial in their nature may properly be brought within
the cognizance of the courts.
Now in deciding whether a patent shall issue or not, the
Commissioner acts on evidence, finds the facts, applies the law,
and decides questions affecting not only public but private
interests, and so as to reissue or extension, or on interference
between contesting claimants, and in all this he exercises judicial
functions.
In
Butterworth v. Hoe, supra, Mr. Justice Matthews,
referring to the constitutional provision, well said:
"The legislation based on this provision regards the right of
property in the inventor as the medium of the public advantage
derived from his invention, so that in every grant of the limited
monopoly, two interests are involved -- that of the public, who are
the grantors, and that of the patentee. There are thus two parties
to every application for a patent, and more when, as in case of
interfering claims or patents, other private interests compete for
preference. The questions of fact arising in this field find their
answers in every department of physical science, in every branch of
mechanical art. The questions of law necessary to be applied in the
settlement of this class of public and private rights have founded
a special branch of technical jurisprudence. The investigation of
every claim presented involves the adjudication of disputed
questions of fact, upon scientific or legal principles, and is
therefore essentially judicial in its character, and requires the
intelligent judgment of a trained body of skilled officials, expert
in the various branches of science and art, learned in the history
of invention, and proceeding by fixed rules to systematic
conclusions."
That case is directly in point, and the
ratio decidendi
strictly applicable to that before us. The case was a suit in
mandamus brought by the claimant of a patent, in whose favor the
Commissioner had found in an interference case, to compel the
Commissioner to issue the patent to him. The Commissioner
Page 172 U. S. 587
had refused to do this on the ground that the defeated party had
appealed to the Secretary of the Interior, who had reversed the
Commissioner's action and found in appellant's favor. This Court
held that while the Commissioner of Patents was an executive
officer, and subject in administrative or executive matters to the
supervision of the head of the department, yet his action in
deciding patent cases was essentially judicial in its nature, and
not subject to review by the executive head, an appeal to the
courts having been provided for. And, among other things, it was
further said:
"It is evident that the appeal thus given to the Supreme Court
of the District of Columbia 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 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 is 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, Rev.Stat. ยง 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 binds the whole department -- the Secretary as
well as the Commissioner -- for it has settled the question of
title, so that a demand for the signatures necessary to
authenticate the formal instrument and evidence of grant may be
enforced. It binds the Secretary by acting directly upon the
Commissioner, for it makes the action of the latter final by
requiring it to conform to the decree."
"Congress has thus provided four tribunals for hearing
applications for patents, with three successive appeals, in which
the Secretary of the Interior is not included, giving
jurisdiction
Page 172 U. S. 588
in appeals from the Commissioner to a judicial body, independent
of the department, as though he were the highest authority on the
subject within it. And to say that, under the name of direction and
superintendence, the Secretary may annul the decision of the
Supreme Court of the District, sitting on appeal from the
Commissioner, by directing the latter to disregard it, is to
construe a statute so as to make one part repeal another when it is
evident both were intended to coexist without conflict."
"
* * * *"
"No reason can be assigned for allowing an appeal from the
Commissioner to the Secretary in cases which he is by law required
to exercise his judgment on disputed questions of law and fact, and
in which no appeal is allowed to the courts, that would not equally
extend it to those in which such appeals are provided, for all are
equally embraced in the general authority of direction and
superintendence. That includes all or does not extend to any. The
true conclusion, therefore, is that, in matters of this
description, in which the action of the Commissioner is
quasi-judicial, the fact that no appeal is expressly given
to the secretary is conclusive that none is to be implied."
We perceive no ground for overruling that case or dissenting
from the reasoning of the opinion, and as the proceeding in the
Court of Appeals on an appeal in an interference controversy
presents all the features of a civil case -- a plaintiff, a
defendant, and a judge -- and deals with a question judicial in its
nature, in respect of which the judgment of the court is final so
far as the particular action of the Patent Office is concerned,
such judgment is nonetheless a judgment
"because its effect may be to aid an administrative or executive
body in the performance of duties legally imposed upon it by
Congress in execution of a power granted by the Constitution."
Commission v. Brimson, 154 U.
S. 447.
It will have been seen that, in the gradual development of the
policy of Congress in dealing with the subject of patents, the
recognition of the judicial character of the questions involved
became more and more pronounced.
Page 172 U. S. 589
By the acts of 1839 and 1852, an appeal was given not to the
Circuit Court of the District of Columbia, but to the Chief Judge
or one of the Assistant Judges thereof, who was thus called on to
act as a special judicial tribunal. The competency of Congress to
make use of such an instrumentality or to create such a tribunal in
the attainment of the ends of the Patent Office seems never to have
been questioned, and we think could not have been successfully. The
nature of the thing to be done being judicial, Congress had power
to provide for judicial interference through a special tribunal,
United States v. Coe, 155 U. S. 76, and,
a fortiori, existing courts of competent jurisdiction
might be availed of.
We agree that it is of vital importance that the line of
demarcation between the three great departments of government
should be observed and that each should be limited to the exercise
of its appropriate powers, but in the matter of this appeal, we
find no such encroachment of one department on the domain of
another as to justify us in holding the act in question
unconstitutional.
Judgment affirmed.
