A decision of the Court of Appeals of the District of Columbia
in an appeal from the Commissioner of Patents under Rev.Stat.
§§ 4914, 4915, § 9 of the Act of February 9, 1893,
c. 74, 27 Stat. 434, and § 780, Rev.Stat., District of
Columbia, is interlocutory and not final, and is not reviewable by
this Court under 8 of the Act of February 9, 1893, either by appeal
or writ of error.
Rousseau v. Browne, 21 App.D.C. 73,
approved. ,
Appeal from and writ of error to review, 27 App.D.C. 25,
dismissed.
Frasch applied for a patent for an invention of a new and useful
improvement in the art of making salt by evaporation of brine. He
expressed his alleged invention in six claims, three of which were
for the process of removing incrustation of calcium sulphate from
brine-heating surfaces, and three of them were for an apparatus for
use in the process.
Page 211 U. S. 2
At the time when the application was fired, Rule 41 of the
Patent Office did not permit the joinder of claims for process and
claims for apparatus in one and the same application. The examiner
required division between the process and apparatus claims, and
refused to act upon the merits. An appeal was taken to the
examiners in chief, but the examiner refused to forward it. A
petition was then filed asking the Commissioner of Patents to
direct that the appeal be heard. The Commissioner held that the
examiner was right in refusing to forward the appeal. From that
decision appeal was taken to the Court of Appeals of the District,
which held that it did not have jurisdiction to entertain it.
Frasch then filed a petition in this Court for a mandamus directing
the Court of Appeals to hear and determine the appeal, which
petition was dismissed.
Ex Parte Frasch, 192 U.
S. 566.
But in
United States ex Rel. Steinmetz v. Allen,
192 U. S. 543, it
was held that Rule 41, as applied by the Commissioner, was invalid,
and that the remedy for his action was by mandamus in the Supreme
Court of the District to compel the Commissioner to act.
Accordingly, the proceedings in the present case were resumed in
the Patent Office, and the applicant asked the Commissioner to
direct that the appeal theretofore taken to the examiners in chief
be heard by them. The Commissioner granted this petition. The
primary examiner furnished the required statement and a
supplementary statement of the grounds of his decision requiring
division. The examiners in chief affirmed the decision of the
primary examiner "requiring a division of these claims for an art
and for an independent machine used to perform the art;" one
examiner in chief, dissenting, held that division should not be
required. On appeal to the Commissioner, he affirmed the examiners
in chief in part only -- that is to say, he held that Process Claim
No. 1 must be divided from the other process claims and the
apparatus claims, but that Process Claims Nos. 2 and 3 and the
Apparatus Claims Nos. 4, 5, and 6 might be joined in one
application. Rehearing was denied, and an appeal was taken to the
Court of Appeals for
Page 211 U. S. 3
the District of Columbia, which affirmed the decision of the
Commissioner of Patents for reasons given at large in an opinion,
and directed the clerk of the court to "certify this opinion and
proceedings in this Court in the premises to the Commissioner of
Patents, according to law."
An appeal and a writ of error were allowed, the court stating
through Mr. Chief Justice Shepard:
"We are inclined to the view that this case is not appealable to
the Supreme Court of the United States, but, as the question has
never been directly decided, so far as we are advised, we will
grant the petition in order that the question of the right to
appeal in such a case may be directly presented for the
determination of the court of last resort."
The record was filed January 25, 1907, and on February 4 a
petition for certiorari.
Page 211 U. S. 7
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
Section 8 of the Act of February 9, 1893, 27 Stat. 434, 436, c.
74, provides:
"That any final judgment or decree of the said Court of Appeals
may be reexamined and affirmed, reversed, or modified by the
Supreme Court of the United States, upon writ of error or appeal,
in all causes in which the matter in dispute, exclusive of costs,
shall exceed the sum of five thousand dollars, in the same manner
and under the same regulations as heretofore provided for in cases
of writs of error on judgment or appeals from decrees rendered in
the Supreme Court of the District of Columbia, and also in cases,
without regard to the sum or value of the matter in dispute,
wherein is involved the validity of any patent or copyright, or in
which is drawn in question the validity of a treaty or statute of
or an authority exercised under the United States."
The decision of the Court of Appeals sought to be reviewed in
the present case is not final, but merely ended an interlocutory
stage of the controversy, and sent the applicant back to the Patent
Office to conform to the meaning and effect of the rule on division
of claims as construed by the Commissioner of Patents, and to
pursue the application in the form required to allowance or
rejection.
Section 780 of the Revised Statutes of the District of Columbia
reads thus:
"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.' "
Page 211 U. S. 8
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, 436, c. 74, is:
"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."
Thus, the special jurisdiction of the District Supreme Court in
patent appeals was transferred to and vested in the Court of
Appeals, and decisions in interference cases were also made
appealable, which had not been previously the case. Rev.Stat.
§ 4911. The law applicable is § 4914, Revised Statutes,
which provides:
"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 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."
By § 4915, a remedy by bill in equity is given where a
patent is refused, and reads as follows:
"SEC. 4915. Whenever a patent on application is refused, either
by the Commissioner of Patents or by the Supreme
Page 211 U. S. 9
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 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 proceeding shall be paid by the applicant, whether
the final decision is in his favor or not."
The final decision referred to is obviously the judicial
decision on the bill in equity, while in interference cases and in
all others going up from the Commissioner to the Court of Appeals
there is no final judgment in the cause, but one interlocutory in
its nature, and binding only upon the Commissioner, "to govern the
further proceedings in the case." The opinion or decision of the
court, reviewing the Commissioner's decision, is not final, because
it does not preclude any person interested from contesting the
validity of the patent in court; and, if the decision of the
Commissioner grants the patent, that is the end of the matter as
between the government and the applicant, and if he refuses it, and
the Court of Appeals sustains him, that is merely a qualified
finality, for, as we have seen, the decision of that court may be
challenged generally and a refusal of patent may be reviewed and
contested by bill as provided.
The appeal given to the Court of Appeals of the District from
the decision of the Commissioner is not, as Mr. Justice Matthews
said in
Butterworth v. United States,
"the exercise of ordinary jurisdiction at law or in equity on
the part of that court, but is one step in the statutory proceeding
under
Page 211 U. S. 10
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 in 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. § 4914), it 'shall
govern the further proceedings in the case.'"
In
Rousseau v. Brown, 21 App.D.C. 73, 80, which was an
appeal from the Patent Office in the matter of an interference
between two applications, the court affirmed the decision of the
Commissioner of Patents, ruling against one of the claims on the
ground that, priority of invention must be awarded to the other
claimant, declined to allow a writ of error or appeal, and said,
through Chief Justice Alvey:
"There is no final judgment of this Court rendered in such
cases, nor is there any such judgment required or authorized to be
rendered, not even for costs of the appeal. This court is simply
required in such cases, after hearing and deciding the points as
presented, instead of entering judgment here, to return to the
Commissioner of Patents a certificate of the proceedings and
decision of this court, to be entered of record in the Patent
Office, to govern the further proceedings in the case. But it is
declared by the statute that no opinion of this court in any such
case shall preclude any person interested from the right to contest
the validity of any patent that may be granted by the Commissioner
of Patents. Rev.Stat. §§ 780, 4914."
"There is no provision of any statute, within our knowledge,
that authorizes a writ of error or an appeal to the Supreme Court
of the United States in such case as the present. It would seem
clear that the case is not within the purview of § 8 of the
Act of Congress of February 9, 1893, providing for the
establishment of this Court. That section only applies to cases
where final judgments by this court have been entered, and not to
decisions to be made and certified to the Patent Office under the
special directions of the statute. "
Page 211 U. S. 11
We consider these observations as applicable to the present
case, and the result is
Appeal and writ of error dismissed, and certiorari
denied.
MR. JUSTICE WHITE and MR. JUSTICE McKENNA dissent.
MR. JUSTICE MOODY did not sit.
