This is an action seeking a declaration of a patent brought under § 4915, Revised Statutes, 35 U.S.C.A. § 63 (1951), (1952 Revision, 35 U.S.C.A. §§ 145, 146), and later amended to include a count under § 4918, Revised Statutes, 35 U.S. C.A. § 66 (1951) (1952 Revision, 35 U.S. *846 C.A. § 291). To this was added a common law claim, based on diversity only, for damages alleged to have beеn suffered from a conspiracy among the defendants.
The case has had a long history. It first broke into the reports in 1945,
So the case went back to the district court, again to Judge Follmer. He made additional findings of fact answering the questions which the opinion of this court had suggested to him and re-affirmed the findings which he had made when the case was first tried on the merits. 1954,
Now the case is here again on appeal and the defendants-appellants have brought to us all the problems which they cоuld find in it. They range from an application of the rule of res judicata to the date upon which a cat named “Sudie” bore kittens. We shall not discuss them all but the parties may be sure that none have been overlooked.
1. Conspiracy Count.
One matter we can get out of the case véry promptly. It has to do with the conspiracy charge. In his first opinion the district judge, while he found reprehensible conduct by some of the persons involved herein, said he was “constrained under the circumstances of the case to deny plaintiff's claim for damages on the ground of conspiracy” and judgment was entered accordingly. The losing defendants took an appeal as recited above. But the plaintiff did not appeal from the judgment dismissing his common law claim for damages. It is not, therefore, befоre us and we see no reason for expending printers ink in discussing it.
2. The Washington, D. C., Suit.
The defendants claim that the plaintiff cannot recover here on the ground the action is barred because of a suit begun against these defendants and others in Washington, D. C., on October 22, 1943. This suit was dismissed by consent and the defendants say that the principles of res judicata bar the plaintiff from recovery now. This position is not well taken. We have looked up all the documents concerning this Washington suit some of which the appellants furnished and some of which they did not. It is clear from the documents, including the supporting affidavits filed there, that the reason for the dismissal was lack of jurisdiction over the person of some of the defendants. It is likewise perfectly clear that where a suit is dismissed for a reason which does not go to the merits, a further suit is not barred. Restatement, Judgments, § 49 and comments thereto; West Coast Life Ins. Co. v. Merced Irr. Dist., 9 Cir., 1940,
3. The Lost Assignment.
The assignments back and forth among the plaintiffs herein, resemble a well played tennis game where the ball is not allowed to hit the ground. No wonder that *847 this court on a previous occasion referred to the “labyrinth.” The situation is very greatly cleared by the careful series of findings made by the district court upon remand.
One of the bases upon which Etten claims he is entitled to sue in the 4915 proceeding is that there was an assignment tо him from the now co-plaintiff, Chamberlain, on September 22, 1943, back at a time before Chamberlain became a party to this litigation. This assignment, plaintiffs say, was lost and affidavits as to its contents were filed “nunc pro tunc” in the patent office on September 6, 1946. This was some three years after the alleged date of execution, but before the trial of the present action. The defendants say there is insufficient evidence to prove the execution of this document. That is wrong. The finding of fact by the trial court is amply substаntiated on this point.
Then the defendants say that the assignment was never delivered. Now the statute requires the assignment of a patent to be in writing. 35 U.S.C.A. § 47 (1951) (1952 Revision, 35 U.S.C.A. § 261.) It says nothing about delivery. But the Supreme Court has likened the safeguards surrounding the transfer of patent property with thosе usually attached to the transfer of land. Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co., 1924,
This trаnsaction entitled Etten to sue under § 4915 as an applicant. Becker v. General Chain Co., 1 Cir., 1921,
4. The 4918 Suit.
This statute, 35 U.S.C.A. § 66, is very broad and gives the right of suit to “any person interested” in any one of the interfering patents or in thе working of the invention claimed under either of them. If Etten had not assigned back to Chamberlain there could be no difficulty about the right to maintain action under this section as well as 4915. As indicated above, however, he did reassign prior to Chamberlain’s entrance into thе lawsuit. But he is certainly still an interested party. He has royalty rights. He has a reversionary interest. Also he has, by the terms of the 1929 contract, the right to protect and prosecute his patent rights. This is enough. The following cases and authority are helpful on this point: Victor Talking Machine Co. v. Brunswick-Balke-Collender Co., D.C.Del., 1923,
5. Patent Appeals Decision as Res Judicata.
The appellants urge upon us that the plaintiffs are precluded from suing
*848
here by an earlier decision of the Court of Customs and Patents Appeals in Etten v. Jantz, 1944,
6. Public Use Argument.
Appellants urge that the plaintiffs’ right to a patent on claim 13 on Application SN 38932 is barred because of two years of public use prior to Etten’s' date of application (September 3, 1935). The basis of this contention is that claim 13 was incorporated in the Jantz Model “T” wringer (Exhibit “0”). The validity of this argument depends, obviously, on the date of conception and completion of the Jantz Model “T.” Now this was the subject of a great deal of evidence in the trial of this case. If the defendants’ dates were acсurate there would be something to the argument. But the district court in a carefully prepared set of findings has found that the alleged date of conception by Jantz (April, 1932) was falsely asserted by reason of pressure on Jantz to change the date which he originаlly fixed (April, 1933). The dates of public use asserted by defendants are June 10th and 20th, 1933. But the district court found that the date of completion was after September 21, 1933, because the dies from which the parts of the wringer were made were not in existence until sometime after that date. With these findings, supported by the evidence cited by the district court in its opinion,- disappears the argument.
7. Morgan v. Daniels.
It would not be patent litigation without the introduction by one or both parties of Morgan v. Daniels, 1894,
This question the district judge thoroughly considered. Here we do not have difficult questions of scientific fact and theory such as those involved in the case from which the quotation was taken. We have instead an examination of evidence that looks to lack of truth-telling, concealment of testimony and other deceptive conduct. The conclusion of the trier of the fact was that the picture presented was a sordid one. This evidence was-not before the patent office. We have no-trouble in sustaining the conclusion that the sеvere test that one must meet before rejecting patent office conclusion on facts has here been met. The decision of *849 the district court is not contrary to Morgan v. Daniels. The conclusion of the court that fraud was shown on the part of the dеfendants is clearly established and, therefore, conclusions based upon the absence of such testimony as was available in the court below, do not stand in view of the new testimony.
8. Attorneys Fees.
The appellants complain that the district court allowed attornеys fees. The authority here, of course, is 35 U.S. C.A. § 70 (1951), (1952 Revision, 35 U.S. C.A. §§ 283-286, 290), which permits the court in exceptional cases to award attorneys fees to the prevailing party. This provision was discussed by us in Pennsylvania Crusher Co. v. Bethlehem Steel Co., 3 Cir., 1951,
As said at the beginning of this оpinion, many points have been raised by the appellants. What we have said, we believe, disposes of the case without further discussion.
The judgment of the district court will be affirmed.
On Petition for Rehearing
The first two grounds alleged in the petition for rehearing filed on behalf of Lovell Manufacturing Company and Walter L. Kauffman, 2d, are overruled. We find them without merit.
The third ground asserted by the petitioner is that the order for counsel fees was too broad when it included these “in connection with Interference 75,433 and 76,987.” This point is well taken. The award of an attorney fee may not be made in cоnnection with a cause of action over which the court had no jurisdiction. Dubil v. Rayford Camp & Co., 9 Cir., 1950,
Paragraph 8 of the order of the district court is vacated and case remanded with directions to delete from paragraph 8 the allowance for counsel fees in connection with the interference proceedings above specified. In all other respects the judgment is affirmed. The judgment of this Court will be modified in accordance with this opinion.
Notes
. Appellants also urge that plaintiff Etten’s complaint should bе’dismissed because Ohamberlain Corporation had the sole responsibility for prosecution of the suit and that Etten is not the real party in interest. The basis of this argument is a sworn statement made in an answer to written interrogatories. The interrogatories and the resрonse to them concern the role, in these and prior proceedings, of Ohamberlain Corporation and its parent corporation, the American Wringer Corporation. As to these two entities, the answer states that the Chamberlain Corporation has the sole responsibility. There is no other evidence to indicate that Etten is not a real party in interest, and, therefore, we must reject this argument.