American Steel Foundries v. Robertson, 291

• Decision Date: 21 May 1923
• Docket Number: No. 291,291
• Citation: 262 U.S. 209,43 S.Ct. 541,67 L.Ed. 953
• Parties: AMERICAN STEEL FOUNDRIES v. ROBERTSON, Commissioner of Patents, et al
• Court: U.S. Supreme Court

262 U.S. 209

43 S.Ct. 541

67 L.Ed. 953

AMERICAN STEEL FOUNDRIES

v ROBERTSON, Commissioner of Patents, et al.

No. 291.

Argued April 19, 1923.

Decided May 21, 1923.

Mr. Geo. L. Wilkinson, of Chicago, Ill., for appellant.

Mr. Nathan Heard, of Boston, Mass., for certain appellees.

Mr. Chief Justice TAFT delivered the opinion of the Court.

This is a direct appeal under section 238 of the Judicial Code (Comp. St. § 1215) from a decree of the District Court of the United States for the Northern District of Illinois dismissing a bill in equity. The District Judge certifies that the motion to dismiss the bill was sustained solely for lack of jurisdiction.

The bill was filed by the appellant, the American Steel Foundries, against the Commissioner of Patents to secure an adjudication that the appellant is entitled to have its trade-mark 'Simplex' registered and authorizing the Commissioner of Patents to register the same. The Commissioner appeared as defendant and by stipulation the Simplex Electric Heating Company was allowed to intervene as the real party in interest. The bill averred that the American Steel Foundries had duly filed an application in the Patent Office for the registration, that the Examiner of Trade-Marks had refused the application, that the Commissioner of Patents had affirmed this refusal, and that on appeal the Court of Appeals of the District of Columbia had affirmed the action of the Commissioner, that a petition for certiorari had been filed in this court and granted, and that thereafter the cause was dismissed by this court for lack of jurisdiction, on the ground that the decree of the Court of Appeals was not a final one.

The appellant then filed this bill under section 9 of the Trade-Mark Act of February 20, 1905 (33 Stat. 724, c. 592 [Comp. St. § 9494]), and section 4915, Revised Statutes (Comp. St. § 9460). The intervener based its motion to dismiss on the lack of jurisdiction 'over the subject-matter or alleged cause of action,' and the motion was granted without opinion.

Section 9 of the Trade-Mark Act reads as follows:

'Sec. 9. That if an applicant for registration of a trade-mark, or a party to an interference as to a trade-mark, or a party who has filed opposition to the registration of a trade-mark or party to an application for the cancellation of the registration of a trade-mark, is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the Commissioner by an applicant for a patent, or a party to an interference as to an invention, and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable.'

Section 4915 of the Revised Statutes reads as follows:

'Sec. 4915. Patents obtainable by bill in equity. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme 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 question in this case is whether the closing words of section 9, 'and the same rules of practice and procedure shall govern in every stage of such proceedings, as far as the same may be applicable,' are broad enough in their scope to include 'the remedy by bill in equity' granted to unsuccessful applicants for a patent in section 4915.

In Gandy v. Marble, 122 U. S. 432, 7 Sup. Ct. 1290, 30 L. Ed. 1223, an unsuccessful applicant for a patent who had carried his application by appeal to the Supreme Court of the District, which was dismissed on its merits January 30, 1880, on May 3, 1883, filed a bill of equity in the District Supreme Court under section 4915 against the Commissioner of Patents. That court dismissed the bill on the ground that the applicant had failed to prosecute his application within two years after the dismissal of his appeal from the Commissioner by the Supreme Court of the District, basing it on section 4894 of the Revised Statutes, reading as follows:

'Sec. 4894. All applications for patents shall be completed and prepared for examination within two years after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable.'

This section applies to proceedings in the Patent Office and before the Commissioner, and it was pressed upon this court that it could not apply to such an independent proceeding as the bill in equity provided for in section 4915. But this court held that section 4894 did apply. Mr. Justice Blatchford, speaking for the court, admitted (122 U. S. 439, 7 Sup. Ct. 1292, 30 L. Ed. 1223), following Butterworth v. Hoe, 112 U. S. 50, 61, 5 Sup. Ct. 25, 28 L. Ed. 656, that the proceeding by bill in equity, under section 4915, 'intends a suit according to the ordinary course of equity practice and procedure, and is not a technical appeal from the Patent...