187 F. 273 | 2d Cir. | 1911
Rehearing
We see no occasion for a reargument. The bill as originally filed made the Commissioner of Patents a party defendant and was held multifarious on demurrer as it asked for a decree upon the question of reissue as well as upon that of interference. The bill was then amended by omitting the Commissioner of Patents as a defendant. The defendant again demurred.
The issue presented by the amended bill and demurrer is clear and simple. The demurrer attacked llie amended bill in three particulars: First, multifariousuess; second, double patenting; third, abandonment.
The court overruled the first and third grounds of demurrer and sustained the second ground with leave to the complainant to amend. The complainant declined to amend, stating in open court that he elected to stand by his amended bill, which was thereupon dismissed.
The only issue before us was whether, if the patent as prayed for in the amended bill were issued, if would embrace the specific devices covered by the patent granted to the complainant in October, 1904. We decided that the Circuit Court was right in holding that it would embrace such devices and would be void for double patenting. We decided nothing else and, under the issue joined by the pleadings, we could decide nothing else. It is said that our decision “is incomplete in that it fails to decide whether or not the bill of complaint can be sustained upon its allegations as to said application for reissue." Counsel do not explain how this issue arises upon an appeal from an order sustaining a demurrer which presents a totally different question.
The reissue question was not passed upon by the Circuit Court further than to say that the allegations in the bill relating to the proceedings in the Patent Office for a reissue though unnecessary, might be proper to negative the inference that the complainant had abandoned his right to a patent for the generic invention. The contention of the demurrer that the bill was multifarious was overruled upon the express ground that the relief prayed for is single, viz., “that the court will direct the patent the complainant has applied for to be issued to him.”
The court held further that a reissue could in no event be adjudged by the Circuit Court because the Commissioner of Patents is not a party to the action. It will be remembered "that in the original bill the Commissioner was a party and the bill was held multifarious for this reason. The complainant acquiesced in this decision and amended the bill by omitting the Commissioner as a defendant. Tn other words, the result of his action was to abandon the demand for a reissue by dropping the defendant who was held to be a necessary party in such an action, and proceed upon the cause of action for a patent on the interference alone. The Circuit Court so understood it and ruled accordingly. We affirmed its ruling that if a patent were issued to the complainant it would be obnoxious to the charge of double patenting. We think the confusion has arisen from the fact that the complainant has two antagonistic theories and is unable to determine upon which to proceed. In the action at bar, the bill is clearly for a patent on the
As the complainant seems to be in doubt as to what was decided, we have endeavored at the expense of prolixity and repetition to make plainer what we had supposed was plain before. We treated the bill as the Circuit Court treated it, as demanding the single relief “that the court direct the patent the complainant has applied for to be issued to him.” The bill so construed was held bad on demurrer as involving a case of double patenting. On appeal we affirmed this decision. Nothing more can be said.
The petition for a rehearing is denied.
Lead Opinion
Owing to the fact that the briefs discuss a number of propositions which are not directly involved in this appeal, the appearance of unusual complexity is given to what, in reality, is a comparatively simple question.
The Circuit Court was entirely justified in awarding costs to the defendant. It is enough that the demurrer was sustained. The fact that the defendant presented several grounds of demurrer which the court thought untenable is immaterial in view of the controlling fact that the demurrer was upheld and the bill dismissed.
The decree is affirmed with costs.