Butterworth v. United States Hoe

• Decision Date: 03 November 1884
• Citation: 5 S.Ct. 25,28 L.Ed. 656,112 U.S. 50
• Parties: BUTTERWORTH, Commissioner, etc., v. UNITED STATES ex rel. HOE and others
• Court: U.S. Supreme Court

112 U.S. 50

5 S.Ct. 25

28 L.Ed. 656

BUTTERWORTH, Commissioner, etc., v. UNITED STATES ex rel. HOE and others.

November 3, 1884.

Sol. Gen. Phillips, for plaintiff in error.

A. J. Willard, for defendant in error.

MATTHEWS, J.

This is a writ of error prosecuted for the purpose of reviewing and reversing the judgment of the supreme court of the District of Columbia, awarding a peremptory mandamus commanding the plaintiff in error, the commissioner of patents, to receive the final fee of $20 tendered by the relators, and cause letters patent of the United States to R. Hoe & Co., as assignees of Gill, to be prepared and sealed, according to law, for a certain invention therein particularly described, and to be presented to the secretary of the interior for his signature. The facts upon which the controversy arises are shown by the record to be as follows: On March 12, 1881, Gill, one of the relators, made application in due form to the commissioner of patents for letters patent for certain new and useful improvements in printing machines, of which he claimed to be the original and first inventor. An interference was declared with an unexpired patent, No. 238,720, granted to Walter Scott, March 8, 1881. A hearing was had before the examiner of interferences, who decided in favor of Scott, and, on appeal to the examiners in chief, that decision was affirmed. An appeal from that decision was taken by Gill to the commissioner of patents, who decided that Gill was the original and first in- ventor of the improvements claimed, and was entitled to a patent therefor; and on June 4, 1883, adjudged that such patent should issue to the relators, composing the partnership of R. Hoe & Co., as assignees of Gill, the inventor. On June 14, 1883, an appeal was taken by Scott from that decision of the commissioner of patents to the secretary of the interior, under rules prescribed by that officer, dated May 17, 1883, who, on March 7, 1884, reversed the decision of the commissioner of patents in favor of Gill, adjudged Scott to be the original and first inventor of the improvements claimed, and that Gill was not entitled to a patent therefor. In his return to the alternative writ the commissioner of patents, admitting that he had refused, in compliance with the demand of the relators, to accept their tender of the final fee, and to prepare the patent for signature, and to take any further steps therein, declares: 'That he so refused, not because he desired to make further inquiry, or to be further advised in that behalf, no motion or other proceeding for rehearing or review had been taken or was pending before him in that behalf, but that he based his refusal, and does so still, solely upon the ground that the honorable the secretary of the interior had entertained the appeal taken to him from said decision under the rules aforesaid, and had, in pursuance of said appeal, entered a decision reversing that of the commissioner of patents, and awarded priority of invention to Walter Scott.'

The return proceeds as follows: 'Your respondent further says that for many years, and until 1881, it was held, in pursuance of decisions and opinions of the honorable attorney general made in that behalf, that the honorable the secretary of the interior had, and therefore has, no legal authority to review on appeal a decision of the commissioner of patents wherein the commissioner has finally adjudged and applicant to be entitled to a patent as prayed for in his application; in other words, that the judgment of the commissioner of patents upon the right of an applicant to have an receive a patent is final and conclusive, subject only to review by the supreme court of the District of Columbia, and such other courts as have jurisdiction in that behalf, and by the commissioner; and the practice of the patent-office and of the honorable the secretary of the interior conformed thereto. This question, however, was again raised in the cases of Nicholson v. Edison and Le Roy v. Hopkins, and the honorable the attorney general of the United States, to whom the question was again referred, in an opinion signed on the twentieth day of August, 1881, held that the honorable the secretary of the interior had and could, on appeal to him, exercise the jurisdiction to review the decision of the commissioner of patents, and control his action in that behalf; and later on, to-wit, the twenty-sixth day of February, 1884, the honorable secretary, in an official letter, (a copy of which is hereto attached, marked E,) advised your respondent that he, the honorable secretary, had, in pursuance of the opinion of the honorable attorney general, exercised jurisdiction on appeal from the judicial action of the commissioner in determining questions devolved upon him by the statute. In deference to that opinion, and the action of the honorable the secretary of the interior in the case under consideration, your respondent refused, and does refuse, to accede to the demand of the relator. That, in view of the decisions and the uniform practice of the commissioners of patents and the heads of the department of the interior prior to 1881, doubt and uncertainty have arisen touching the legal obligations devolving upon your respondent in the case under consideration and those of like character. Your respondent further says that if the judgment of the commissioner of patents, which is that the relator is entitled to receive his patents as prayed for, is final, and if, upon such judgment, it is the lawful duty of the respondent to accept said final fee, and take the necessary and proper steps to prepare said patent for issued as prayed, then your respondent has improperly refused, and does improperly refuse, to prepare said patent for issue; but, if his decision is subject to review and reversal on appeal to the honorable the secretary of the interior, then such refusal on the part of your respondent to accept said fee and prepare said patent for issue is right and proper.'

The return of the commissioner also sets out as exhibits the decision of his predecessor in office awarding priority of invention to Gill, and adjudging him to be entitled to a patent; the appeal of Scott to the secretary of the interior; the rules governing such appeals as adopted and promulgated by that officer; the decision on that appeal by the secretary, communicated by letter to the commissioner, reversing the decision of the commissioner and awarding priority of invention to Scott, and a subsequent letter of the secretary to the commissioner, dated February 26, 1884, in which he states that at the request of his predecessor, Mr. Kirkwood, in connection with the case of Nicholson v. Edison and Le Roy v. Hopkins, the attorney general considered the question as to the extent of the supervisory authority of the secretary over the acts of the commissioner, and, in an opinion dated August 20, 1881, reached the conclusion that the final discretion in all matters relating to the granting of pattents is lodged in the secretary of the interior; that Secretary Kirkwood concurred in that opinion, and from that time to the present, appeals from the judicial action of the commissioner of patents have been considered by the secretary of the interior; that the attention of congress was particularly directed to this new practice in the annual report of the secretary of the interior for 1881, and that there has not since been any legislative expression of dissent from the interpretation the existing law had received; and that he does not feel justified in discontinuing a practice which he finds thus established. It is clear enough that if the action of the commissioner of patents, in the matter of controversy, is subject to the order of the secretary of the interior, the judgment of the supreme court of the District of Columbia must be reversed; for mandamus evidently will not lie to compel a public officer to do a particular thing which his superior in authority has lawfully ordered him not to do. The direct and immediate question, therefore, for our determination is whether the secretary of the interior had power by law to revise and reverse the action of the commissioner of patents in awarding to Gill priority of invention, and adjudging him entitled to a patent.

The authority and power claimed by the secretary of the interior are asserted and maintained upon these general grounds: That he is the head of the department of which the patent-office is a bureau; that the secretary is charged by section 441, Rev. St., with the supervision of public business relating to patents for inventions, in the same terms and in the same sense as in the cases of the various other subjects which in that section are classed together, to-wit, the census, the public lands, the Indians, pensions, and bounty lands, the custody and distribution of publications, etc.; that by section 4883 it is required that all patents shall be signed by the secretary, as the responsible representative of the government, in whose name the grant is made, and countersigned by the commissioner of patents only to attest the act of his superior; that by section 481, while the commissioner is required to superintend or perform all duties respecting the granting and issuing of patents directed by law, it is thereby also provided that it must be under the direction of the secretary of the interior,—a clause to be read, it is argued, as if it were expressly inserted as a qualification of every statutory duty imposed upon the commissioner; that by section 483 the regulations which from time to time the commissioner may establish for the conduct of proceedings in the patent-office, are subject to the approval of the secretary; that by section 487 the reasons for the refusal of the commissioner to recognize any person as a patent agent, either generally or in any particular case, are subject to the approval of the secretary; that this general relation of official...