Canon v. Robertson

• Decision Date: 30 March 1929
• Docket Number: 1370.,No. 1340,1360,1340
• Citation: 32 F.2d 295
• Parties: CANON et al. v. ROBERTSON, Commissioner of Patents. SENITHA v. SAME. SINCLAIR REFINING CO. v. SAME.
• Court: U.S. District Court — District of Maryland

32 F.2d 295 (1929)

CANON et al. v. ROBERTSON, Commissioner of Patents.

SENITHA v. SAME.

SINCLAIR REFINING CO. v. SAME.

Nos. 1340, 1360, 1370.

District Court, D. Maryland.

March 30, 1929.

Robert Ames Norton, of Pittsburgh, Pa., for plaintiffs Canon and another.

Hugo de Watteville Senitha, of New York City, in pro. per.

Pennie, Davis, Marvin & Edmonds, of New York City, for plaintiff Sinclair Refining Co.

A. W. W. Woodcock, U. S. Atty., of Baltimore Md., and T. A. Hostetler, of Washington, D. C., Sol., for Commissioner of Patents.

WILLIAM C. COLEMAN, District Judge.

The sole question here presented is whether this court has jurisdiction of the Commissioner of Patents in three suits in equity brought under section 4915, of the Revised Statutes (44 Stat. 1335; 35 USCA § 63), to compel the Commissioner to issue certain patents. The question is raised by motions to dismiss the bills of complaint for want of jurisdiction. The Commissioner, although a resident of Chevy Chase, Md., and therefore a resident of this district, has refused to accept service of subpœnas there, claiming that he can be sued only in the District of Columbia, his official residence.

In a similar proceeding, Martin v. Robertson, Commissioner, No. 1352 of the equity docket of this court (no opinion filed), the Commissioner filed a motion to dismiss the bill, identical with the motions now before the court. After argument before Judge Soper, the motion was granted March 7, 1928. Complainants in the present suits have asked for a complete review of the question, which appears not to have been directly passed upon, at least in any reported case, in any other jurisdiction, and they have presented lengthy arguments, both oral and written, as has also the Commissioner of Patents, in each case.

The Commissioner relies primarily upon the decision of the Supreme Court in Butterworth v. Hill, 114 U. S. 128, 5 S. Ct. 796, 29 L. Ed. 119, decided in 1885. This was a suit under section 4915 of the Revised Statutes, brought in the district of Vermont against the Commissioner of Patents, who was an inhabitant of the District of Columbia and was there served with process. He did not appear, and a decree of the lower court in favor of the complainant was reversed for want of jurisdiction. The court, in an opinion by Chief Justice Waite, decided three things: (1) That section 739 of the Revised Statutes (Act March 3, 1875), of which section 51 of the present Judicial Code is an amendment (28 USCA § 112), applied to suits brought under section 4915 of the Revised Statutes; (2) that the Act March 3, 1875, exempted a defendant from suit in any district of which he was not an inhabitant or in which he was not found at the time of the service of the writ; that such exemption might be waived, but, unless waived, the defendant need not answer, and would not be bound by anything which might be done against him in his absence; and (3) that the official residence of the Commissioner of Patents was at Washington, in the District of Columbia.

The court expressly declared that it did not decide, because unnecessary to do so, whether the jurisdiction of the District of Columbia court in suits under section 4915 was exclusive, saying, at page 131 of 114 U. S. (5 S. Ct. 797): "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." But the court added the following, upon which the Commissioner primarily relies in the present cases, at page 132 of 114 U. S. (5 S. Ct. 798): "The bill in this case was filed against the Commissioner alone, and it does not appear that he was an inhabitant of the district of Vermont. The Patent Office is in the Department of the Interior, Rev. Stat. § 475 35 USCA § 1, which is one of the executive departments of the government at the seat of government in the District of Columbia. Rev. Stat. § 437 5 USCA § 481. The Commissioner of Patents is by law located in the Patent Office. Rev. Stat. § 476 35 USCA § 2. His official residence is therefore at Washington, in the District of Columbia."

The text of that part of the Judicial Code with which we are now directly concerned (28 USCA § 112 (a) is as follows: "* * * Except as provided in sections 113 to 118 of this title which have no bearing upon the question at issue, no civil suit shall be brought in any district court against any person by any original process or proceeding in any other district than that whereof he is an inhabitant. * * *"

Comparing the above language with the earlier enactment, it will be seen that a defendant can no longer be sued wherever found, but only in the place where he is an inhabitant. The precise question before us is, therefore: Does a United States government official have a dual personality for the purposes of jurisdiction under this section, namely, does he have both an official and a private personality, separate and distinct from each other, and, when sued officially, may he be said to inhabit or to reside only where he carries on his official duties, although he may have his home and live as a private citizen elsewhere?

It is well settled that the word "inhabitant," as used in the statute, includes the idea of domicile or residence. Shaw v. Quincy Mining Co., 145 U. S. 444, 12 S. Ct. 935, 36 L. Ed. 768; United States v. Gronich (D. C.) 211 F. 548; Thomas v. South Butte Mining Co. (C. C. A.) 230 F. 968. There is some authority to the effect that interference proceedings brought under section 4915, as opposed to purely ex parte proceedings, such as the present, may be maintained in any district where valid service can be had on the defendant without regard to his place of residence, and this has been held to be so under section 51 of the Judicial Code, on the theory that, since the suit arises under the patent laws of the United States, it is within the exclusive jurisdiction of the federal courts, and therefore is not affected by the statutory provisions which it is claimed were intended to apply only to specified civil suits of which the federal and state courts have concurrent jurisdiction. See, for example, Lewis Blind Stitch Co. v. Arbetter Felling Machine Co. (C. C.) 181 F. 974; and Thoma v. Perri, (D. C.) 205 F. 632. But, in view of the express language of section 51 above quoted, and of its proviso governing actions based upon diversity of citizenship, the soundness of this theory is at least doubtful, although the court does not now pass upon this question, because unnecessary to a decision of the precise point before it.

Even stronger dicta than that in the Butterworth Case, supra, in support of the Commissioner's contention that, unless he consents to be sued elsewhere, he must be sued in the District of Columbia, is to be found in at least three cases. In Schmertz Wire Glass Co. v. Western Glass Co., 178 F. 973, decided in 1909, District Judge Sanborn, then sitting in the Circuit Court for the Northern District of Illinois, Eastern Division, said, at page 975: "Unless the Commissioner actually appears to the suit, it must be brought in the District of Columbia, in one of its courts, that being his official residence. Butterworth v. Hill, 114 U. S. 128, 5 S. Ct. 796, 29 L. Ed. 119." This statement, however, is unquestionably dictum, because not necessary to the decision. The suit was originally adversary in character, but afterward became an ex parte one by union of the adverse interests. Motions were made to dismiss the suit on the ground that the patents were procured by fraud and collusion in the proceeding brought to establish them, because there were no adverse interests. The court denied the motions, finding no fraud, and also finding that the adverse parties were originally within the jurisdiction of the court. Thus the question of service upon the Commissioner was not involved.

The next decision in which the precise question is referred to is Barrett Co. v. Ewing, 242 F. 506, decided by the Circuit Court of Appeals for the Second Circuit in 1917. There Commissioner Ewing accepted service in New York, a district of which he was not a resident, and the court held that a waiver of the right to object to the jurisdiction was not against public policy, and was therefore binding. One of the objections made in support of the Commissioner's argument that he had no power to consent to be sued in New York was that the Supreme Court had declared in Butterworth v. Hill, supra, that the Commissioner of Patents is by law located in the Patent Office, and has his official residence at Washington, in the District of Columbia. To this the court replied, at page 508: "It may be said of the first suggestion that, in as much as the Commissioner's official residence is in the District of Columbia, suits which are brought against him in his official capacity should be commenced in that district by virtue of the provision which requires suits to be brought in the district of which the defendant is an inhabitant. This, however, affords no light on the question whether he has the right, which other defendants are conceded to possess, to waive service in the district of his legal residence and to consent to be sued elsewhere." (Italics inserted.) Nothing more need be said to indicate that the above expression respecting the necessity for service in the District of Columbia is no more than dictum. Certiorari was denied in this case, 244 U. S. 661, 37 S. Ct. 746, 61 L. Ed. 1376.

Lastly we have the case of Hammer v. Robertson, Commissioner of Patents, 6 F. (2d) 460, a decision of the Circuit Court of Appeals for the Second Circuit, in 1925, affirming a decree of the lower court granting motions to dismiss the bills of complaint (291 F. 656; 300 F. 246). In this case the complainant, after having carried the appeals on his application to the Court of Appeals...