Butterworth v. Hill

• Decision Date: 30 March 1885
• Citation: 114 U.S. 128,5 S.Ct. 796,29 L.Ed. 119
• Parties: BUTTERWORTH, Com'r of Patents, v. HILL and others
• Court: U.S. Supreme Court

114 U.S. 128

5 S.Ct. 796

29 L.Ed. 119

BUTTERWORTH, Com'r of Patents, v. HILL and others.

March 30, 1885.

Sol. Gen. Phillips and Frank T. Brown, for appellant.

W. E. Simonds.

for appellee.

WAITE, C. J.

This is an appeal from a decree on a bill in equity filed in the circuit court of the United States for the district of Vermont against the commissioner of patents, under section 4915 of the Revised Statutes. That section is as follows. 'Sec. 4915. 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.' On the filing of the bill, a subpoena was issued commanding the 'commissioner of patents of the United States of America' to appear before the court in Vermont and answer. On the eighteenth of October, 1883, the commissioner made the following indorsement on the writ:

'WASHINGTON, D. C., October 18, 1883.

'I hereby accept service of the within subpoena, to have the same effect as if duly served on me by a proper officer, and I do hereby acknowledge the receipt of a copy thereof.

E. M. MARBLE, Com'r of Ratents.

'(Office of Com'r of Patents. Received Oct. 18, 1883.)'

And afterwards, and on said twenty-third day of October, A. D. 1883, a letter from the commissioner of patents was filed, which said letter is in the words and figures following:

'DEPARTMENT OF THE INTERIOR,

'UNITED STATES PATENT-OFFICE,

'WASHINGTON, D. C., October 18, 1883.

'SIR: I am in receipt of your letter of the 16th instant, inclosing copy of a bill of complaint entitled Hill & Prentice et al. v. The Commissioner of Patents of the United States of America, in the United States circuit court for the district of Vermont, praying that said court direct the commissioner of patents to issue a patent to the assignees of Hill & Prentice for the invention disclosed and claimed in their application filed in this office March 30, 1880, for an improvement in milk-coolers; also a subpoena to appear and answer to said bill on the 5th proximo and a certified copy of said subpoena. I herewith return the subpoena, service accepted, and have to inform you that I shall not appear in defense in said bill.

'Very Respectfully,

E. M. MARBLE, Commissioner.

'Mr. W. E. Simonds, Hartford, Conn.'

No other service of process as mdae on the commissioner, and he made no other appearance in the cause than such as may be implied from his acceptance of service and his letter as above. In due course of proceeding a decree was entered adjudging that 'Samuel Hill and Benjamin B. Prentice, as inventors, and the Vermont Machine Company, as assignee of said inventors, are entitled to have issued to them letters patent * * * as prayed for in the petition and bill of complaint.' No one was made defendant to the bill except the commissioner of patents, and Hill, Prentice, and the machine company, the complainants, were all citizens of Vermont. Benjamin Butterworth, the commissioner of patents, took this appeal, and the only question presented under it for our consideration is whether the circuit court of the district of Vermont had jurisdiction so as to bind the commissioner by the decree which was rendered.

It is contended that the supreme court of the District of Columbia has exclusive jurisdiction of suits against the commissioner brought under this section of the Revised Statutes. In the view we take of this case, however, that question need not be decided. By section 739 of the Revised Statutes, as well as by the act of March 3, 1875, c. 137, § 1, (18 St. 470,) it is provided in substance that, with some exceptions which do not apply to this case, 'no civil suit shall be brought before either of...