Cooper v. Robertson

• Decision Date: 31 January 1930
• Docket Number: No. 1362.,1362.
• Citation: 38 F.2d 852
• Parties: COOPER v. ROBERTSON, Commissioner of Patents.
• Court: U.S. District Court — District of Maryland

38 F.2d 852 (1930)

COOPER v. ROBERTSON, Commissioner of Patents.

No. 1362.

District Court, D. Maryland.

January 31, 1930.

COPYRIGHT MATERIAL OMITTED

A. Miller Belfield, of Chicago, Ill., and Semmes, Bowen & Semmes, of Baltimore, Md., for plaintiff.

A. W. W. Woodcock, U. S. Atty., of Baltimore, Md., and T. A. Hostetler and J. F. Mothershead, U. S. Patent Office, both of Washington, D. C., for defendant.

WILLIAM C. COLEMAN, District Judge.

This is a suit in equity brought under the provisions of section 4915 Revised Statutes (35 USCA § 63), whereby the plaintiff seeks to secure three design patents on three different fonts of type which the Commissioner of Patents refused to grant. The three fonts of type are known as Cooper Black, Cooper Old Style, and Cooper Italic, and each of them comprises from seventy-five to eighty different items, that is, a complete alphabet of capital, small, lower and upper case letters, characters, punctuation marks, and a complete set of numerals.

The Cooper Black application, No. 6262, was rejected by the Patent Office, an appeal was taken to the Court of Appeals for the District of Columbia, pursuant to the provisions of the statute, and there the action of the Commissioner of Patents was affirmed. The two remaining applications, namely, those covering Cooper Old Style (application No. 6784), and Cooper Italic (application No. 10689), after going through the Patent Office in the regular course of procedure and being rejected, were brought before this court by a supplemental bill of complaint, which the court allowed to be filed over the objection of the Commissioner of Patents, who claimed that these applications had not been the subject of an appeal to the Court of Appeals for the District of Columbia which, under the statute, he alleged, was a prerequisite to a proceeding of this nature. In taking this action, however, the court expressly reserved the right later to dismiss the supplemental bill, should it conclude that defendant's contention was correct. The supplemental bill further alleges that patents were allowed by the Patent Office in the regular course of procedure on two of the three fonts here involved, namely, Cooper Black and Cooper Italic, but that after such allowance the Commissioner of Patents interfered with the regular course of proceedings by arbitrarily exercising his authority, and preventing the actual issue of patents on these two allowed applications, and that also, by his hostile attitude, he prevented the securing of a patent on the other application.

The Commissioner, by way of answer, alleges, with respect to all three applications, that they have been anticipated by the prior art, and, in support of this, cites various references which he claims prove that the statutory bar of prior printed publication and public use precludes the granting of the patents; and, with respect to applications No. 6784 and No. 10689, as has already been pointed out, the Commissioner claims that, irrespective of any possible merit which they may have, this court is without jurisdiction to consider them, because no appeal has been taken from his decision to the Court of Appeals for the District of Columbia.

COOPER OLD STYLE, APPLICATION No. 6784, AND COOPER ITALIC, APPLICATION No. 10689.

The court now concludes that it must sustain the objection of the Commissioner of Patents to the supplemental bill of complaint made on the ground that Cooper Old Style, application No. 6784, and Cooper Italic, application No. 10689, have not been the subject of an appeal to the Court of Appeals of the District of Columbia, because it concludes that such an appeal, under the statute applicable to this proceeding, is a prerequisite to this court's jurisdiction.

The rights of the present complainant are controlled by the language of section 9 of the Act of February 9, 1893 (27 Stat. 436) and of section 4915 of the Patent Laws as they stood prior to the amendment of March 2, 1927 (44 Stat. 1335 35 USCA §§ 59 and 63), because at the time that amendment became effective, namely, two months after its approval, the two applications here in question were pending before the Commissioner of Patents, and that amendment expressly provides (section 15) that "it shall not affect appeals then pending and heard before the examiners in chief or pending before the Commissioner of Patents or in the Court of Appeals of the District of Columbia, and that in all cases in which the time for appeal from a decision of the examiners in chief or of the Commissioner of Patents or for amendment or renewal of application had not expired at the time this Act takes effect, appeals and other proceedings may be taken under the statutes in force at the time of approval of this Act as if such statutes had not been amended or repealed." See 35 USCA § 7, note. The wording of this provision does not permit of a construction whereby it is left optional with the unsuccessful applicant whether to invoke the old or the new law. But even were this true, since the plaintiff, in his original bill, is relying, and can only rely, upon the old law, it is inconsistent by supplemental bill, to attempt to introduce entirely new subject-matter and thereby to invoke the remedy of a different law.

The procedure governing the present case is as follows Section 4909 (35 USCA § 57) gave the applicant an appeal from the decision of the Primary Examiner to the Board of Examiners in Chief; section 4910 provided, in case the applicant was dissatisfied with the decision of the examiners in chief, he might appeal to the Commissioner in person, and the Act of February 9, 1893 (35 USCA § 59, now superseded by section 59a), gave a further appeal, in both ex parte and interference cases, in the event of dissatisfaction with the decision of the Commissioner, to the newly created Court of Appeals of the District of Columbia, by providing as follows: "The determination of appeals from the decision of the Commissioner of Patents is vested in the Court of Appeals of the District of Columbia; and in addition, any party aggrieved by a decision of the Commissioner of Patents in any interference case may appeal therefrom to said court of appeals." Section 4915 (35 USCA § 63) provided that: "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. * * *" Upon incorporation of this section into the Code, the words "Court of Appeals" were substituted for "Supreme Court" on the authority of the Act of February 9, 1893, above referred to.

It is to be noted that the Act of March 2, 1927 (35 USCA §§ 59a and 63), amended the law by providing that the remedy by a bill in equity, theretofore allowed, would only exist in the event that the applicant had not appealed to the Court of Appeals of the District of Columbia. The purpose of the 1927 amendment was to correct an anomalous and unsatisfactory result in the matter of appeals created by the statute as it stood prior to that time; namely, that, unless the Commissioner of Patents consented to be served in a district other than that of his official residence — the District of Columbia — the remedy of two appeals allowed to the applicant, namely, an appeal to the Court of Appeals of the District of Columbia and also by a bill in equity, amounted, in fact, to one and the same remedy, because the only suit in equity that could be prosecuted would be one in the courts of the District of Columbia, the highest court of which, namely, the Court of Appeals, would already have decided against him. See Canon v. Robertson, Commissioner (D. C.) 32 F.(2d) 295. The purpose and effect, however, of this amendment does not tend to clarify the precise question here presented, which is simply whether, under the law as it stood prior to this amendment, and as applicable to the present litigation, an applicant for a patent is permitted to resort to equity unless and until the remedy provided by appeal has been exhausted.

The question must be answered in the negative. When the distinction between the two classes of cases, namely, interference and so-called ex parte cases, was abandoned by the amendment of 1893, there was no longer any purpose in retaining the optional clause in the first sentence of section 4915; before that time this clause was, of course, necessary. We may, therefore, treat its retention as serving no purpose after the amendment. This is borne out by the construction that has been given to the section in an ex parte case prior to the amendment. For example, in Kirk v. Commissioner, 37 O. G. 451, decided by the Supreme Court of the District in 1886, an applicant for a patent in an ex parte proceeding brought a bill in equity without having taken an appeal to the Supreme Court of the District. The bill was dismissed on demurrer. The court said, page 451:

"The case of Kirk v. The Commissioner of Patents and Secretary of the Interior has been submitted upon briefs upon a demurrer to the bill, certified from the special term to be heard here in the first instance. The bill was filed against the Commissioner of Patents and the Secretary of the Interior for the purpose of obtaining a patent for certain claimed improvements in an invention alleged to have been made by one Samuel Strong, the complainant's assignor, which patent had been refused by the Commissioner of Patents in the year 1874, and finally refused, as it appears, in the year 1875. It was an ex parte application, and at various intervals from that time down to the year 1885 there were irregular applications to...