Cleveland Trust Co. v. Nelson

• Decision Date: 17 July 1931
• Docket Number: No. 4408.,4408.
• Citation: Cleveland Trust Co. v. Nelson, 51 F.2d 276 (W.D. Mich. 1931)
• Parties: CLEVELAND TRUST CO. v. NELSON et al.
• Court: U.S. District Court — Western District of Michigan

51 F.2d 276 (1931)

CLEVELAND TRUST CO. v. NELSON et al.

No. 4408.

District Court E. D. Michigan, S. D.

July 17, 1931.

Warren, Hill & Hamblen, of Detroit, Mich. (Richey & Watts, of Cleveland, Ohio, of counsel), for plaintiff.

Ramsey & Kent, of New York City, for defendants Nelson and Bohn Aluminum Co.

Carlos J. Jolly and Bruce G. Booth, both of Detroit, Mich. (Melville Church, of Washington, D. C., and George B. Schley, of Indianapolis, Ind., of counsel), for defendants Berry and General Motors Corporation.

SIMONS, District Judge.

The present suit was begun by bill in equity under section 4915, R. S., as amended by the Act of March 2, 1927 (35 USCA § 63), based upon certain interference proceedings in the Patent Office. Section 4915 is printed in full in the margin.¹ The parties to this suit and their relationship to the subject-matter is as follows:

The plaintiff is the assignee of one Jardine, who was an applicant in two antecedent interferences in the Patent Office. The defendants Nelson and Berry were also applicants in the interference proceedings; the latter being successful both before the Examiner and before the Board of Appeals. Nelson's application was assigned to the defendant Bohn Aluminum & Brass Corporation. The defendant General Motors Corporation is an exclusive licensee under the Berry application. The defendants Nelson and the Bohn Corporation, acting together, filed a counterclaim under section 4915. The successful applicant, Berry, and the General Motors Corporation, his licensee, are asking for no affirmative relief.

The cause is now before the court upon a motion made by Berry and the General Motors Corporation to dismiss the bill. This motion asserts that this court is a constitutional court as distinguished from a legislative court, and therefore has no jurisdiction in the present suit, for the reason that: (a) This suit is not a case or controversy, because not in such form that the judicial power is capable of acting upon it, since the contentions of all adverse parties are not submitted to the court for adjudication; (b) this suit calls for mere administrative or advisory or declaratory action. It is urged that, if either of these reasons is correct, suit must be dismissed.

Section 4915, either in its present or some other form, has been part of the law of the United States since 1836. It purports to give to an applicant for a patent, whenever his application has been refused by the Commissioner of Patents and an appeal has not been taken from the decision of the Board of Appeals to the Court of Customs and Patent Appeals for the District of Columbia, a remedy by bill in equity, and undertakes to empower the proper court in which such bill is filed to adjudge that the applicant is entitled according to law to receive a patent for his invention. The power of the Congress under the Constitution to grant such remedy as is by this statute sought to be given to a defeated applicant for a patent, and the power of the court within the grant of judicial power conferred by article 3, section 1, of the Constitution, to make such adjudication as is by the statute provided, is now for the first time directly challenged. It may at once be conceded, without argument or citation, that the constitutionality of an act of Congress is presumed, unless the contrary appears beyond all reasonable doubt, and that long custom and acquiescence reinforces this presumption. It must also be conceded that a mere assumption of jurisdiction by a court, however long continued, cannot confer a jurisdiction otherwise nonexistent under the constitutional grant of judicial power.

Such general aids to construction being understood, we come to the arguments advanced in support of the motion to dismiss. There has been an increasing tendency in recent years on the part of the Supreme Court to sharply distinguish between constitutional courts and legislative courts, and the respective limits of the jurisdiction which Congress may impose on them. Illustrative of this class of cases are the following: Postum Cereal Co. v. California Fig Nut Co., 272 U. S. 693, 47 S. Ct. 284, 71 L. Ed. 478; Liberty Warehouse Co. v. Grannis, 273 U. S. 70, 47 S. Ct. 282, 71 L. Ed. 541; Ex parte Bakelite Corporation, 279 U. S. 438, 49 S. Ct. 411, 73 L. Ed. 789; Old Colony Trust Co. v. Commissioner, 279 U. S. 716, 49 S. Ct. 499, 73 L. Ed. 918; Federal Radio Commission v. General Electric Co., 281 U. S. 464, 50 S. Ct. 389, 74 L. Ed. 969. The duty to give decisions which are advisory only, and that do not have force as judicial judgments, may not be laid on a constitutional court established under article 3 of the Constitution, such as is the United States District Court.

The Constitution extends the judicial power only to cases or controversies. The classification which the defendants make of their reasons upon which the motion is based is somewhat confusing. When it is said that this suit calls for mere administrative or advisory or declaratory action, it is but another way of saying that this suit is not a case or controversy within the meaning of article 3 of the Constitution, or that the court is not called upon to exercise judicial power. The two grounds for the motion may therefore be considered as one, and an inquiry made as to whether or not the suit is a case or controversy. Upon careful analysis of the moving defendants' arguments, it appears that the reasons they present for this suit not being a case or controversy include the following: A case or controversy implies the existence of present or possible adverse parties whose contentions are submitted to the court for adjudication. In the present case the Commissioner of Patents is not a party. The defendant Berry neither seeks nor under the law is he permitted to seek affirmative relief. Therefore there are neither present nor possible adverse parties to the present suit. The granting of a patent is a mere administrative duty. The proceeding provided for in section 4915 is a part of the proceeding by which a patent is granted. Therefore the adjudication provided for is not an exercise of judicial power, nor does it determine a case or controversy. The adjudication provided for in the statute authorizes the Commissioner to issue a patent, but does not command him to do it; therefore it is advisory or declaratory only, and not an exercise of judicial power. The statute does not contemplate the enforcement of the court's judgment by judicial process, and it becomes effective in any event only when the applicant otherwise complies with the requirements of law. Therefore the adjudication is not final, and is merely advisory or declaratory.

I cannot agree with the contention that there are in this suit neither present nor possible adverse parties. The plaintiff's assignor was a defeated applicant for a patent before the Patent Commissioner and the Board of Appeals. The defendant Nelson is also a defeated applicant, whose interests were adverse to the plaintiff's assignor. In this suit the interests of plaintiff and the defendant Nelson are clearly adverse. Berry is the successful applicant. It is idle to say that he is not an adverse party, because in this suit he neither does nor can seek affirmative relief. He won his case before the administrative tribunal. He is here defending his position. He does not require any affirmative relief. If the suit of the plaintiff fails, and if the suit of the cross-plaintiffs fails, he will secure his patent. He is in this suit in position that differs not at all from that of any other defendant who resists a plaintiff's claim, but asks for no affirmative relief. He is an adverse party. The Commissioner of Patents is not made a party to this suit. While he is not a present adverse party, he is always a possible adverse party. He could have been made a party. He may desire to become a party by filing a petition to intervene. Granted that this court has no jurisdiction at the present time over the person of the Patent Commissioner, that does not prevent him from subjecting himself to its...