Potter v. Dixon

| U.S. Circuit Court for the District of Southern New York | Jul 2, 1863

NELSON. Circuit Justice.

The 7th section of Act July 4, 1S36 (5 Stat. 119), provides that, on an application for a patent, if the commissioner shall be satisfied that the applicant is the original and first inventor, he shall be entitled to a patent; that if, upon the application, the commissioner shall refuse the patent, the applicant may appeal to a board of examiners provided for in the act; that the board shall have power to reverse the decision of the commissioner; and that, if it is reversed, a certificate shall be made of the fact, and “he shall be governed thereby in the further proceedings to be had on such application.” The 8th section provides, that when an application shall be made to the commissioner for a patent which, in his opinion, would interfere with any unexpired patent which has been previously granted, it shall be his duty to give notice to the applicant or patentee, and that, if either party shall be dissatisfied with the decision of the commissioner, he may appeal from such decision, on like terms as in the preceding section, and the like proceedings shall be had to determine which, if either of the parties, is entitled to the patent. The 11th section of the act of March 8, 1839 (5 Stat. 354), substitutes the chief justice of the district court of the United States for the District of Columbia for the board of examiners, and makes special provision for a full hearing before him, and also provides that, on the return of the papers and of his decision to the patent office, the decision shall be entered of record, and “shall govern the further proceedings of the commissioner in such case.” The 10th section of the act of 1S3G provides, that when there snail be two interfering patents, any person interested in any such patent may have a remedy by bill in equity, and that the court having cognizance thereof may adjudge and declare either of the patents void, in whole or in part, or inoperative and invalid in any particular part of the United States.

The motion for a preliminary injunction in this case is placed on two grounds: (1) That the commissioner had no authority to receive the surrender of the patent to Akins and Felt-housen, and reissue one to James G. Wilson, inasmuch as the order of Judge Dunlop was a nullity; and (2) that, if otherwise, the reissue was erroneous, as Allen B. Wilson was the first and original inventor.

1. By the Sth section of the act of 1830, already referred to, it is made the duty of the commissioner, on an application for a patent which in his opinion would interfere with a patent already granted, to give notice to the parties interested, receive proofs, and determine the question of priority of invention. The party against whom he decides may appeal to the chief justice. It is supposed, by the learned c~.ex justice, that there can be but one interference declared by the commissioner, on an application for a patent, and that the decision of the chief justice is conclusive upon the commissioner, though, in the meantime, and before the patent issues, another case of interference should appear or be presented. There is certainly nothing in the statute limiting the power ox me commissioner in tills respect, and the reason for the hearing in the second case is as strong as for that in the first. The object of the provision is one that pervades the whole of the statute, namely, to secure to the real inventor the exclusive privileges therein provided for. Besides, a hearing and decision between the applicant for a patent and A., whether in favor of the one or the other, forms no rule for a decision between the applicant and B., in case of an interference declared between them. The proceedings are independent and inter alios. The effect sought to be given to the decision of Judge Dunlop would not be admitted if the proceedings had taken place in a suit at law or in equity, much less should it be allowed where they are' informal and summary, with a view to the truth and merits of the ease. The section is broad and unqualified: “That whenever an application shall be made for a patent, which, in the opinion of the commissioner, would interfere,” &c., “with any unexpired patent,” &c., “it shall be the duty of the commissioner to give notice,” &c. IIow the commissioner is to obtain information of the interfering patent is not provided for in the statute, and hence the matter is necessarily left in his discretion, and he must obtain the information in the best jvay he can. If the party interested knows of the application, he can bring the interference to the notice of the commissioner; or, if the commissioner happens to recollect the issuing or existence of the previous patent, he may-act upon that information. It would be very unreasonable to require him to recollect at the time all the previous patents that may interfere with the one applied for, or to require the party interested to know that an application is pending in the office for a patent interfering with his.

The interference declared between the patent of Akins and Felthousen and that of Singer, presented simply an issue between those two patents and nothing more, and the proofs did not necessarily extend, or might not have extended, beyond this issue. The decision of the chief justice in favor of the former was, doubtless, binding on the commissioner as between those parties, but no further. The 11th section of the act of 1839 does not provide that the commissioner shall issue a patent to the applicant if the decision of the chief justice is in his favor, but simply declares that such decision shall “govern the further proceedings of the commissioner in such case;” and so it should, as it respects the parties concerned, but not as to other parties who may come in and claim the benefit of the same provision.

I am quite clear, therefore that the learned chief justice erred in refusing to entertain the appeal in the case of the interference declared with the Allen B. "Wilson patent, and that his order to the commissioner dissolving that interference, and directing his order in the case of the interference with the Singer patent to be executed, was a nullity, and hence that the patent issued to James G. Wilson by the commissioner was without authority and void, and should be enjoined.

2. Even if the question in the case turned upon the merits, namely, whether or not the invention of A. B. Wilson was prior to that of Akins & Felthousen, I should have felt bound to interfere and enjoin the patent; for in several cases before me on a final hearing decided in August, 1860, — Potter v. Wilson [Case No. 11,342], — involving this question of priority, and in which J. G. Wilson was one of the defendants, I came to a clear conviction, upon the proofs, against the claim of Akins & Felthousen. The decision has been generally acquiesced in, and the invention gone into very general and extensive use, as appears from the papers in this case.

It may be proper to refer to section 8 of the act of March 3, 1837, which confers on the commissioner the same power on a reissue, over the question of granting it, which he possessed in the case of an original application for a patent.

It was argued on this motion by the learned counsel for the defendants that section 16 of the act of 1836. amended by section 10 of the act of 1S39, did not authorize this court to grant an injunction, and that the power was confined to the specific remedy pointed out in the section. We do not assent to this view. It has been frequently decided that the power conferred on the United States circuit court to entertain .bills in equity in controversies arising under the patent act, is a general equity power, and carries with it all the incidents belonging to that species of jurisdiction. The power conferred not only enables the court to decree a final remedy but to take care that the subject of the controversy shall not be rendered valueless pending the litigation.

Let an injunction issue according to the prayer of the bill.