1. A federal district court has jurisdiction of a Suit under
R.S. § 4915 to review a decision of the Board of Appeals of the
Patent Office rejecting a claim as not reading on the disclosure in
the application for a patent. Pp.
325 U. S. 80,
325 U. S.
83.
Jurisdiction is not defeated by the fact that an adjudication
favorable to the applicant might not conclude all possible
questions as to the applicant's right to a patent.
2. The right of the applicant in such case to sue under R.S. §
4915 is supported by the language of the statute, its legislative
history, administrative practice, and judicial construction. Pp.
325 U. S. 80,
325 U. S.
84.
3.
Hill v. Wooster, 132 U. S. 693,
distinguished. P.
325 U. S.
89.
144 F.2d 514, reversed.
Page 325 U. S. 80
Certiorari, 323 U.S. 697, to review the affirmance of a judgment
dismissing a suit against the Commissioner of Patents under R.S. §
4915.
MR. JUSTICE ROBERTS delivered the opinion of the Court.
The question presented is whether a District Court has
jurisdiction of a suit under R.S. § 4915 [
Footnote 1] to review the refusal of a claim for patent
as not reading on the application. The court below answered in the
negative.
The respondent confesses error. The language of the Act, its
legislative history, administrative practice, and judicial
construction, constrain us to hold that the District Court had
jurisdiction of the suit, and that the Court of Appeals should have
reviewed its decision upon the merits.
January 10, 1941, the petitioner's assignor filed application
for a reissue of a patent granted November 7, 1939, on an original
application of August 8, 1936. The alleged invention is for
improvements in a refrigerating system. A number of claims included
in the application for reissue were copied, or substantially
copied, from several later patents, in order to provoke
interferences therewith and a contest as to priority of
invention.
The Primary Examiner finally rejected four of the claims,
stating that they were rejected "as not reading on applicant's
disclosure. . . ." The Board of Appeals of the Patent
Page 325 U. S. 81
Office affirmed the Examiner's decision. The petitioner then
brought suit against the Commissioner of Patents under R.S. § 4915
in the United States District Court for the District of Columbia to
compel him to allow the four claims, to the end that interference
proceedings might be instituted. The case was heard on the Patent
Office record and additional evidence. The court entered findings
of fact and conclusions of law and dismissed the complaint on the
ground that the claims did not read on -- that is, did not
accurately describe, the disclosure in the application.
On appeal, the court below, on its own motion, raised the
question
"whether [R.S. § 4915] confers jurisdiction on the District
Court to enter a decree which does not determine the right of the
applicant to receive a patent, but which instead directs the
examiner to allow claims for the purpose of provoking subsequent
interference proceedings."
The parties were heard upon this question, and the court decided
that the District Court lacked jurisdiction of the suit, and on
that ground affirmed its judgment of dismissal. [
Footnote 2]
R.S. § 4915 is, in part:
"Whenever a patent on application is refused by the Board of
Appeals or whenever any applicant is dissatisfied with the decision
of the board of interference examiners, the applicant, unless
appeal has been taken to the United States Court of Customs and
Patent Appeals, and such appeal is pending or has been decided, in
which case no action may be brought under this section, may have
remedy by bill in equity, if filed within six months after such
refusal or decision, 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
Page 325 U. S. 82
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 court below held that, in conformity to the general rule, a
court of equity ought not to afford piecemeal relief pending
completion of the administrative process, and consequently ought
not to entertain a suit under the statute unless its adjudication
would conclude all possible questions as to the right to a
patent.
1. On its face, the statute confers the right to sue "Whenever a
patent on application is refused by the Board of Appeals. . . ."
The patent applied for (that is, the claims in question) was
finally refused by the Board of Appeals. No appeal was taken to the
United States Court of Customs and Patent Appeals, and petitioner
filed its bill within the time limited in the section.
Two matters may be noted respecting R.S. § 4915. These are the
denial of jurisdiction if appeal has been taken to the United
States Court of Customs and Patent Appeals and the statement that
adjudication in favor of the applicant shall authorize the
Commissioner to issue a patent. These provisions require reference
to R.S. § 4911, as amended. That section provides:
"If any applicant is dissatisfied with the decision of the board
of appeals, he may appeal to the United States Court of Customs and
Patent Appeals, in which case he waives his right to proceed under
section 63 [R.S. 4915] of this title. If any party to an
interference is dissatisfied with the decision of the board of
interference examiners, he may appeal to the United States Court of
Customs and
Page 325 U. S. 83
Patent Appeals,
Provided, that such appeal shall be
dismissed if any adverse party to such interference shall, within
twenty days after the appellant shall have filed notice of appeal
according to section 60 of this title, file notice with the
Commissioner of Patents that he elects to have all further
proceedings conducted as provided in section 63 [R.S. 4915].
Thereupon, the appellant shall have thirty days thereafter within
which to file a bill in equity under said section 63 [R.S. 4915],
in default of which the decisions appealed from shall govern the
further proceedings in the case."
It is evident that alternative rights of review are accorded an
applicant -- one by appeal to the United States Court of Customs
and Patent Appeals, the other by bill in equity filed in one of the
federal district courts. In the first, the hearing is summary, and
solely on the record made in the Patent Office; [
Footnote 3] in the other, a formal trial is
afforded on proof which may include evidence not presented in the
Patent Office. [
Footnote 4]
Every party adversely affected by a ruling on the merits may, if he
so elect, proceed by bill, rather than by appeal. In the one case,
the adjudication in equity authorizes issue of a patent on the
applicant's "otherwise complying with the requirements of law." In
the other, the decision "shall govern the further proceedings in
the case" in the Patent Office. [
Footnote 5]
The question is whether the differences in the character of the
proceedings and the statutory effect of decision or adjudication
require a holding that, as to all decisions on the merits adverse
to the applicant, other than the final action as to the issue of a
patent, the applicant must obtain review by appeal to the Court of
Customs and Patent Appeals, and can proceed by bill under R.S. §
4915 only when every step requisite to issue has been taken. If
so,
Page 325 U. S. 84
the language of R.S. § 4915 is ill chosen. "Whenever a patent on
application is refused" states precisely this case. The
petitioner's application was refused. "Whenever any applicant is
dissatisfied with the decision of the board of interference
examiners" states a case where the examiner's decision may be only
one of a series of rulings in the Patent Office prior to issue of a
patent. It can hardly be that these phrases have no effect, and are
to be read as "Whenever, after all administrative steps are
complete and a patent is about to issue, any person aggrieved may
have remedy by bill in equity." If that be the correct
construction, one finally denied a patent could not resort to the
specified remedy, since, even if his contention were sustained, he
might thereafter have to leap the hurdles in the Patent Office of
interferences, later references, and other obstacles to
patentability.
On the face of the statutes, the applicant is given alternative
remedies resulting in the same sort of relief so far as concerns
the further prosecution of the application in the Patent
Office.
2. The legislative history confirms the view that Congress so
intended.
That history cannot be stated briefly. It has its origin in the
Patent Act of 1836, [
Footnote
6] which afforded an applicant aggrieved by a ruling of the
Commissioner an appeal to a board of examiners. [
Footnote 7] By a later section, it was
provided that,
"whenever a patent on application shall have been refused on an
adverse decision of a board of examiners, on the ground that the
patent applied for would interfere with an unexpired patent,"
the applicant might have remedy by bill in equity, and the court
might adjudge the applicant entitled to a patent, according to his
claim or any part of it. Adjudication favorable to the applicant
was to "authorize the Commissioner to issue such patent" on the
applicant's filing a copy of the adjudication "and
Page 325 U. S. 85
otherwise complying with the requisitions of this act."
[
Footnote 8] It will be noted
that a bill might be filed under this statute only where the
rejection of a claim was for interference with an outstanding
patent. By the Act of March 3, 1837, [
Footnote 9] the same remedy was afforded an applicant for
patent for an improvement or for "correction and reissue."
By the Act of March 3, 1839, [
Footnote 10] the same remedy was extended
"to all cases where patents are refused for any reason whatever,
either by the Commissioner of Patents or by the chief justice of
the District of Columbia, upon appeals from the decision of said
Commissioner,"
as well as where the refusal was based on asserted interference.
The reason for adding the phrase concerning the decision of the
Chief Justice was that, by Sec. 11 [
Footnote 11] of the same Act, a summary appeal on the
Patent Office record to this judicial officer was substituted for
the former appeal to a board of examiners given by the Act of 1836.
[
Footnote 12]
Thus, a District Court might set aside, on bill filed, any
ruling refusing a patent, either on interference or otherwise,
whether the ruling were that of the Patent Office or of a judge of
the Circuit Court of the District of Columbia on appeal from the
Patent Office decision.
The Act of July 8, 1870, [
Footnote 13] amended, revised, and consolidated existing
law. In Sec. 48, [
Footnote
14] it enacted that, in
ex parte cases, an applicant
for patent or reissue whose claims had been twice rejected might
appeal to the Supreme Court of the District of Columbia. The
hearing was to be summary, to be on the office record, and the
decision
Page 325 U. S. 86
was to "govern the further proceedings in the case." [
Footnote 15] In Sec. 52, it provided
that, whenever a patent on application "is refused, for any reason
whatever," either by the Commissioner or by the Supreme Court of
the District upon appeal, the remedy by bill in equity should be
available. The adjudication was to authorize the issue of a patent
on the applicant's filing a copy in the patent office "and
otherwise complying with the requisitions of law." This statute was
construed to require an appeal to the District Supreme Court as a
condition precedent to the maintenance of a bill in equity.
[
Footnote 16]
The provisions of the Act of 1870 were codified in the Revised
Statutes of 1873. [
Footnote
17] In the process, the words "for any reason whatever" were
deleted from Sec. 52, which became R.S. § 4915. The omission was
evidently because the words were surplusage, since the purpose of
the revisers was not "to attempt any change whatever in the
existing law" except "mere changes of phraseology not affecting the
meaning of the law." [
Footnote
18]
By the Act of February 9, 1893, [
Footnote 19] the Court of Appeals for the District of
Columbia was created, and jurisdiction of summary appeals from
Patent Office rulings was transferred to that court. Thus, the
remedy by bill in equity was now to be pursued in a District court
only after an appeal to the Court of Appeals of the District had
resulted adversely to the applicant, and an adjudication in the
equity suit was subject to review on appeal.
So matters stood until the passage of the Act of March 2, 1927.
[
Footnote 20] In the
hearings on the bill which became the statute, it was proposed that
Congress eliminate either the
Page 325 U. S. 87
appeal or the bill in equity, some interested parties suggesting
abolition of the one remedy, others advocating dropping the other.
Congress decided not to do away with either, but to allow an
applicant "to have the decision of the Patent Office reviewed
either by the court of appeals or by filing a bill in equity, but
not both." [
Footnote 21] It
is evident that no alteration in respect of the rulings which could
be reviewed was intended, but the number of possible appeals was to
be reduced, while saving to litigants the option of producing new
evidence in a court, by retaining the equity procedure. [
Footnote 22]
Finally, the Act of March 2, 1929, [
Footnote 23] transferred from the Court of Appeals of
the District to the Court of Customs and Patent Appeals
jurisdiction of appeals from the Patent Office, but,
ex
industria, provided:
"Nothing contained in this Act shall be construed as affecting
in any way the jurisdiction of the Court of Appeals of the District
of Columbia in equity cases."
This was, of course, to make it plain that suits in the District
Court of the District of Columbia should be appealable as are suits
under R.S. § 4915 instituted in district courts in circuits outside
the District.
Thus, it is clear that, throughout more than a century, Congress
has, for correction of erroneous adverse rulings which, if
unreversed, would end the proceedings in the Patent Office,
preserved the remedy by bill in a District Court
Page 325 U. S. 88
either as additional to or alternative to that by summary
appeal, and has made the effect of adjudication in equity the same
as that of decision on appeal.
3. The Commissioner of Patents states that,
"when claims are finally rejected by the examiner and his action
is affirmed by the Board of Appeals, the grounds then stated for
such rejection, as well as any other grounds in support thereof,
may be set up by this Office in answer to a subsequent suit by the
applicant under Rev.Stat. § 4915. If the adjudication by the court
is favorable to the applicant, it is the practice of this Office to
treat that judgment as conclusive with respect to any ground of
rejection urged before the court in defense of the refusal to allow
the claims in issue. In the usual case, following such
adjudication, the application is allowed, and, upon payment of the
prescribed fee, the patent is issued. However in rare instances
where, after termination of the suit, new reference is discovered
which shows lack of patentability of the claims for a reason not
considered by the court, this Office considers itself under a duty
to reject the claims on the newly discovered ground, and to refuse
a patent on those claims unless the applicant can overcome the new
ground of rejection. Similarly, if another applicant or a patentee
is claiming substantially the same subject matter as that held
patentable in the Rev.Stat. § 4915 suit and a question of priority
arises, interference proceedings may be necessary under Rev.Stat. §
4904 to determine which of the adverse claimants is the first
inventor. . . . The foregoing is believed to have been the
consistent practice of this Office for many years."
4. This court has repeatedly indicated a view of the meaning of
R.S. § 4915 which is inconsistent with the decision below,
[
Footnote 24] although the
exact question here presented
Page 325 U. S. 89
was not involved in the cases under adjudication. The lower
federal courts have consistently construed the section as
conferring jurisdiction in cases which are indistinguishable from
that at bar. [
Footnote 25]
They have so held in cases where it affirmatively appeared that
further proceedings in the Patent Office would be necessary
following adjudication in favor of the applicant, [
Footnote 26] and where, though it did not
appear of record that further proceedings would be required in the
Patent Office, it was evident that they might ensue adjudication,
as where a patent was denied for want of invention. [
Footnote 27] And where an applicant has
succeeded in a bill filed under R.S. § 4915, the courts have not
questioned the power of the Patent Office subsequently to disallow
the claims for want of invention over a newly discovered reference
to the prior art. [
Footnote
28]
The court below relied upon
Hill v. Wooster,
132 U. S. 693, for
its holding that a suit under R.S. § 4915 cannot select a single
issue which affects the applicant's right to a patent without
determining all the other issues on which that right depends. That
case was one in which the Commissioner had decided an interference
between the claims of two applicants in favor of one of them, and
ordered that a patent issue. In an
inter partes suit by
the unsuccessful applicant against the successful one, this
Page 325 U. S. 90
court held that, if it appeared that neither application
disclosed invention (a matter which should have moved the
Commissioner not to declare an interference), the bill should be
dismissed. [
Footnote 29] The
court did not purport to decide what Patent Office rulings are
reviewable under R.S. § 4915. [
Footnote 30]
The ruling of the Board of Appeals in the instant case was
neither a procedural ruling [
Footnote 31] nor an interlocutory one [
Footnote 32] as to which the District Court
should not entertain a suit under R.S. § 4915. On the contrary, it
finally denied a patent on the claims presented. In this respect,
it was like a dismissal of a suit in a court. Unless the applicant
could sue to correct error in that dismissal, he could never sue
under R.S. § 4915. That he was accorded a right of suit in this
case the language of the statute, its history, the administrative
construction, and judicial decision unite in affirming.
The judgment is reversed, and the cause remanded for further
proceedings in conformity to this opinion.
Reversed.
[
Footnote 1]
35 U.S.C. § 63.
[
Footnote 2]
App.D.C. 144 F.2d 514.
[
Footnote 3]
See R.S. § 4914, 35 U.S.C. § 62.
[
Footnote 4]
Butterworth v. Hoe, 112 U. S. 50,
112 U. S.
61.
[
Footnote 5]
R.S. § 4911,
supra.
[
Footnote 6]
5 Stat. 117.
[
Footnote 7]
Sec. 7, 5 Stat. 119, 120.
[
Footnote 8]
Sec. 16, 5 Stat. 123.
[
Footnote 9]
5 Stat. 191.
[
Footnote 10]
Sec. 10, 5 Stat. 354.
[
Footnote 11]
5 Stat. 354.
[
Footnote 12]
By the Act of August 30, 1852, 10 Stat. 75, such summary appeal
might be heard by any judge of the Circuit Court of the District of
Columbia.
[
Footnote 13]
16 Stat. 198.
[
Footnote 14]
16 Stat. 205.
[
Footnote 15]
Sec. 50, 16 Stat. 205.
[
Footnote 16]
Kirk v. Commissioner of Patents, C.D. 440;
Fekete
v. Robertson, 17 F.2d 335;
Cooper v.
Robertson, 38 F.2d
852.
[
Footnote 17]
The relevant sections are 4911-4915 inclusive.
[
Footnote 18]
2 Cong.Rec. 646.
[
Footnote 19]
27 Stat. 434, 436.
[
Footnote 20]
44 Stat. 1335.
[
Footnote 21]
H.R. No. 1889, pp. 2-3; S.R. No. 1313, p. 4, 69th Cong., 2d
Sess.
[
Footnote 22]
See H.R.1889,
supra, p. 3; Hearings, House
Committee on Patents, on H.R. 6252 and H.R. 7087, 69th Cong., 1st
Sess., pp. 21-22; Hearings, House Committee on Patents, on H.R.
7563 and H.R. 13487, 69th Cong., 2d Sess., p. 11; Hearings, Senate
Committee on Patents, on S. 4812, 69th Cong., 2d Sess., p. 15;
Hearings, House Committee on the Judiciary, on H.R. 6687, 70th
Cong., 1st Sess.,
passim; cf. Hearings, House Committee on
Patents, on H.R. 7563 and H.R. 13487, 69th Cong., 2d Sess., p. 31;
Hearings, House Committee on Patents on H.R. 6252 and H.R. 7087,
69th Cong., 1st Sess., p. 79.
[
Footnote 23]
45 Stat. 1475.
[
Footnote 24]
Gandy v. Marble, 122 U. S. 432,
122 U. S. 439;
In re Hien, 166 U. S. 432,
166 U. S. 439;
Frasch v. Moore, 211 U. S. 1,
211 U. S. 8-9;
American Foundries Co. v. Robertson, 262 U.
S. 209,
262 U. S.
212-213;
United States ex rel. Baldwin Co. v.
Robertson, 265 U. S. 168,
265 U. S.
180-181.
[
Footnote 25]
Dilg v. Moore, 34 App.D.C. 106;
E. I. Du Pont De
Nemours & Co. v. Coe, 89 F.2d 679;
Pitman v. Coe,
68 F.2d 412;
Power Patents Co. v. Coe, 110 F.2d 550;
Tully v. Robertson, 19 F.2d 954;
Monopower Corp. v.
Coe, 33 F. Supp. 934;
Booth Fisheries Corp. v. Coe,
114 F.2d 462;
Forward Process Co. v. Coe, 116 F.2d
946.
[
Footnote 26]
Pitman v. Coe, supra; International Cellucotton Co. v.
Coe, 85 F.2d 869;
American Cyanimid Co. v. Coe, 106
F.2d 851.
[
Footnote 27]
American Steel & Wire Co. v. Coe, 105 F.2d 17;
Abercrombie v. Coe, 119 F.2d 458;
General Motors Corp.
v. Coe, 120 F.2d 736;
Radtke Patents Corp. v. Coe,
122 F.2d 937;
Hydraulic Press Corp. v. Coe, 124 F.2d 521;
Minnesota Mining & Mfg. Co. v. Coe, 125 F.2d 198;
Poulsen v. McDowell, 142 F.2d 267.
[
Footnote 28]
Gold v. Newton, 254 F. 824.
[
Footnote 29]
Section 16 of the Act of 1836, 5 Stat. 123,
supra,
expressly provided that, upon a bill filed as a result of Patent
Office decision on an interference the court might adjudge either
of the patents void in whole or in part. This language was
evidently omitted in later acts as surplusage, for, obviously, if
either patent was void for lack of invention or other cause, the
question of interference disappeared.
[
Footnote 30]
This is equally true of
Radtke Patents Corp. v. Coe,
122 F.2d 937, on which the court below relied.
[
Footnote 31]
Butterworth v. Hoe, 112 U. S. 50;
Shoemaker v. Robertson, 54 F.2d 456;
Chessing v.
Robertson, 63 F.2d 267;
Cherry-Burrell Corp. v. Coe,
143 F.2d 372.
[
Footnote 32]
American Cable Co. v. John A. Roebling's Sons Co., 62
App.D.C. 168, 65 F.2d 801;
Synthetic Plastics Co. v.
Ellis-Foster Co., 78 F.2d 847.