Greenwood v. Dover

• Decision Date: 12 December 1911
• Docket Number: 880.
• Citation: 194 F. 91
• Parties: GREENWOOD et al. v. DOVER et al. [1]
• Court: U.S. Court of Appeals — First Circuit

194 F. 91

GREENWOOD et al. v. DOVER et al. ^[1]

No. 880.

United States Court of Appeals, First Circuit.

December 12, 1911

Wilmarth H. Thurston, for appellants.

Alexander P. Browne (Horatio E. Bellows, on the brief), for appellees.

Before COLT and PUTNAM, Circuit Judges, and ALDRICH, District Judge.

PUTNAM Circuit Judge.

This is a proceeding under section 4915 of the Revised Statutes (U.S Comp. St. 1901, p. 3392), amended as hereinafter set out. The section has been so fully stated or abstracted in the decisions to which we will refer that we do not deem it necessary to recite it here. We will describe the parties as Greenwood and Dover. The patent issued to Greenwood, and Dover filed a bill in equity under section 4915 in the Circuit Court, and there prevailed, and Greenwood appealed to us. Dover claims that the proceeding in the Circuit Court was in no way in the nature of an appeal, but an independent suit in equity, as to which proposition there is no doubt.

This is the first proceeding properly on plea and proof as known where the common law prevails, which has occurred with reference to the patent in issue. The proposition is too plain to require discussion that there is no peculiarity as between this and any other independent suit in equity. By the very nature of the suit the proceeding is according to the usual and ordinary course of equity. Morgan v Daniels, 153 U.S. 120, 14 Sup.Ct. 772, 38 L.Ed. 657 which will be referred to further, was based on the same section 4915, before it was amended, and is full of expressions to this effect. Although, by agreement of the parties, Morgan v. Daniels was submitted to the Circuit Court in part on the testimony used in the proceedings in the Patent Office, yet the opinion says that the suit there was 'in the nature of a suit to set aside a judgment. ' Again it says:

'It is an application to the court to set aside the action of one of the executive departments of the government.'

The opinion concludes at page 129 of 153 U.S., at page 775 of 14 Sup.Ct. (38 L.Ed. 657), as follows:

'There is other testimony on both sides of this controversy. It is unnecessary to notice it in detail. It is enough to say that the testimony as a whole is not of a character or sufficient to produce a clear conviction that the Patent Office made a mistake in awarding priority of the invention to the defendant; and because of that fact, and because of the rule that controls suits of this kind in the courts, * * * we remand the case with instructions to dismiss the bill.'

Therefore any suggestion that any proceeding of the kind now before us, whether it includes the testimony used in the Patent Office or not, and whether it includes it with or without other testimony or not, is differentiated from an ordinary suit in equity, is immaterial.

The patent in controversy was issued on June 28, 1904, to Thomas F. Greenwood, assignor, on an application filed on February 1, 1902. There are several claims. The only ones to which we need refer to are 1, 2, and 3, reading as follows: '1. A pin-tongue having one end bent over, said bent end being provided with a substantially cylindrical bore or aperture, and a pivot-pin secured in said bore or aperture by pressure.

'2. A pin-tongue having one end provided with a bend, and a pivot-pin secured in said bend solely by pressure.

'3. A pin-tongue having one end provided with a bend, and a pivot-pin secured in said bend by spring-pressure.'

The apparent differences are that claim 1 ends with the words 'by pressure,' claim 2 with the words 'solely by pressure,' and claim 3, 'by spring pressure.' In either case the pin-tongue revolves through a part of a circle with what is called the pivot-pin, to which it is firmly secured by pressure, described in Claim 3 as 'spring-pressure.' The main purpose seems to have been to accomplish a simple and inexpensive contrivance, and the pith of the invention to secure the end of the pivot-pin around the pivot, or pindle, so that the pin and pindle would turn together, and so that the pin would be held in place by its resiliency alone, or what is called in the patent 'spring-pressure.'

Dover filed an application for the same invention on September 11, 1901, thus preceding by several months the date of Greenwood's application. On April 15, 1902, an interference was declared between Greenwood and Dover; and the Examiner of Interferences found in favor of Greenwood. On appeal to the board of examiners this was reversed, and its decision was sustained by the commissioner, who awarded priority to Dover. Thereupon an appeal was taken to the Court of Appeals of the District of Columbia, according to the following statutes:

Section 780 of the Revised Statutes of the District of Columbia, approved June 22, 1874, reads as follows:

'Sec. 780. The Supreme Court, sitting in banc, shall have jurisdiction of and shall hear and determine all appeals from the decisions of the Commissioner of Patents, in accordance with the provisions of sections forty-nine hundred and eleven to section forty-nine hundred, and fifteen, inclusive, of chapter one, Title LX, of the Revised States, 'Patents, Trade-Marks and Copy-Rights."

Section 9 of the act approved February 9, 1893 (chapter 74, 27 Stat. 434), reads as follows:

'Sec. 9. That the determination of appeals from the decision of the Commissioner of Patents, now vested in the general term of the Supreme Court of the District of Columbia, in pursuance of the provisions of section seven hundred and eighty of the Revised Statutes of the United States, relating to the District of Columbia, shall hereafter be and the same is hereby vested in the Court of Appeals created by this act; 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. ' U.S. Comp. St. 1901, p. 3391.

The Revised Statutes of 1874 excluded from the jurisdiction of the Supreme Court of the District of Columbia the decisions of the commissioner in interference cases; but this jurisdiction was given to the Court of Appeals by the act of February 9, 1893, which we have just quoted. It never has been disputed that the proceeding as under section 4915 applies to interference cases which come up to the Court of Appeals of the District of Columbia equally with those proceedings which came up under the Revised Statutes of 1874 to the Supreme Court, from which interference cases were excluded. This must be conceded by Dover in the present case. Otherwise Dover would have been without remedy under that section, and the patent issued to Greenwood could not be disturbed on the present proceeding. This result is clearly involved in Re Hien, Petitioner, 166 U.S. 432, 439, 17 Sup.Ct. 624, 41 L.Ed. 1066, decided in April, 1897. It was evidently also involved in Prindle v. Brown, 155 F. 531, 84 C.C.A. 45, decided by us on August 2, 1907.

The opinion in the Court of Appeals for the District of Columbia is found in 23 App.D.C., at page 251, decided March 1, 1904. With reference to the effect of this decision, and with reference to the question of introducing any part of the record in the Patent Office to which it related, and with reference to all questions of that character, the views of the Circuit Court were clearly correct, and we need not go over them. Nevertheless, it will be permissible for us to refer to some expressions of the Court of Appeals, and also to the proceedings in the Patent Office, for the purpose of illustrating propositions which we may find it desirable to state.

It is to be regretted that Congress has not provided that decisions like that in the Court of Appeals in Greenwood v. Dover should be conclusive, in the same way in which any decisions of the superior courts of federal or state jurisdiction are ordinarily held to be effectual. While the proceedings in the Patent Office out of which this decision arose were not strictly in accordance with the practice either at law or in equity in the jurisdictions where the common law prevails, yet they have all the elements of the fundamental principles of the 'law of the land,' and might well have been pronounced by Congress to end the litigation accordingly, and thus to avoid the opportunity of further holding up of patents, and of leaving the rights of both the public and the patentee indecisive for another series of years. The entire proceeding contains the great elements required by the 'law of the land,' namely, opportunity for both parties to be heard, and finally a decision by a court of high authority, endowed with all the machinery of superior courts of judicature. As it is, however, we are compelled to accept in this single particular the view claimed by Dover, that the judgment of the Court of Appeals stands akin to a departmental decision, although no court could avoid the impression that in a certain sense and to a certain extent it is of greater weight. It is sufficient for us, however, to apply to this case the rule of Morgan v. Daniels, that there must be a clear conviction on this record that the conclusion of the Court of Appeals was erroneous. In saying this we need not trouble ourselves about the varying expressions of various courts with regard to analogous cases, some of which would even require Dover to maintain his position by proofs beyond a reasonable doubt. We are satisfied to reduce all such expressions to the one used in Morgan v. Daniels, to the extent that the record in this case should establish by a clear conviction that Dover is entitled to maintain his bill.

The conclusion in Morgan v. Daniels was not a peculiar outgrowth of the patent system. It was simply a phase of the general rules with reference to the determinations of the...