Hammer v. Robertson

• Decision Date: 10 July 1923
• Citation: 291 F. 656
• Parties: HAMMER v. ROBERTSON, Commissioner of Patents.
• Court: U.S. District Court — Eastern District of New York

291 F. 656

HAMMER v. ROBERTSON, Commissioner of Patents.

United States District Court, E.D. New York.

July 10, 1923

Supplemental Opinion, July 16, 1923.

Hauff &amp Warland, of New York City (William E. Warland, of New York City, of counsel), for plaintiff.

Ralph C. Greene, U.S. Atty., of Brooklyn, N.Y. (Howard Osterhout Asst. U.S. Atty., of Mineola, N.Y., of counsel), for defendant.

GARVIN District Judge.

This is a motion by defendant for an order dismissing the bill of complaint herein for want of jurisdiction. The action, to compel the issue of a patent, was brought in the Eastern district of New York against the defendant, as Commissioner of Patents. The defendant contends that this court has no jurisdiction, inasmuch as the action must be brought in the federal court of the District of Columbia, where the Commissioner of Patents has his official residence.

The real objection of the plaintiff to bringing suit in the District of Columbia is that the Court of Appeals of that District has affirmed a decision of the Patent Office refusing plaintiff a patent, and naturally may be expected to decide similarly any action brought by plaintiff to compel the issue of the same patent. From a decision in the lastmentioned action, plaintiff asserts that there is no appeal to the Supreme Court of the United States, while defendant as stoutly maintains that such an appeal lies.

The contention of the defendant that this court has no jurisdiction is based upon his claim that section 739 of the United States Revised Statutes controls, and is a bar to the instant suit in this district. That section reads as follows:

'Civil Suits-- Where to be Brought.-- Except as provided in the five succeeding sections, no person shall be arrested in one district for trial in another, in any civil action before a District Court; and, except as provided in the six succeeding sections, 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 but where the jurisdiction is founded only on the fact that the action is between citizens of different states, suit shall be brought only in the district of the residence of either the plaintiff or the defendant.'

The case of Butterworth v. Hill, 114 U.S. 128, 5 Sup.Ct 796, 29 L.Ed. 119, is relied upon by the government. The facts there are similar to those involved in the question now before the court, and unless the decision therein has been overruled or modified by later judicial expression or by statute it must be held to control here. The plaintiff answers the government's contention by a reference to section 4915 of the United States Revised Statutes (Comp. St. Sec. 9460) which reads as follows:

'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.'

This section refers to the right of an unsuccessful applicant for a patent having 'remedy by bill in equity, and the court having cognizance thereof' on notice to parties, etc., may adjudge that such applicant receive a patent.

The plaintiff contends that Butterworth v. Hill, supra, does not now control, for the reason that the decision in that case was rendered in 1886, and that under the then existing law an appeal could be taken as of right to the United States Supreme Court from the Supreme Court of the District of Columbia; that in 1893 the Court of Appeals for the District of Columbia was established by an act which provided that the right of appeal from the Commissioner of Patents previously vested in the Supreme Court of the District of Columbia should be vested in the Court of Appeals for the District of Columbia. It is settled in matters involving a decision of the...