Jensen v. Lorenz

• Decision Date: 30 August 1937
• Docket Number: 6882.,No. 6881,6881
• Citation: 92 F.2d 992,68 App. DC 39
• Parties: JENSEN et al. v. LORENZ et al.
• Court: U.S. Court of Appeals — District of Columbia Circuit

68 App. DC 39, 92 F.2d 992 (1937)

JENSEN et al. v. LORENZ et al.^*

Nos. 6881, 6882.

United States Court of Appeals for the District of Columbia.

Decided August 30, 1937.

Rehearing Denied September 27, 1937.

Chas. E. Riordon and C. Russell Riordon, both of Washington, D. C., and Marston Allen, of Cincinnati, Ohio, for appellants.

Thomas J. MacKavanagh, of Washington, D. C., and Benjamin H. Sherman, of Chicago, Ill., for appellees.

Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices.

MARTIN, Chief Justice.

It appears that Jensen and Bye, the appellants, were involved in an interference in the Patent Office with the appellees Lorenz and Wodlinger involving competing claims to a certain patent for the use of Vitamin D as an element in soap. The interference was terminated against Jensen and Bye, who thereupon appealed to the Board of Appeals. The Board affirmed the decision of the Examiner of Interferences. Thereupon Jensen and Bye brought a bill in equity in the United States District Court for the District of Columbia under section 4915, Rev.St., as amended (35 U.S.C.A. § 63), praying for an award of a patent upon the article in question. In the bill it was stated that no appeal to the United States Court of Customs and Patent Appeals was pending or had been taken or decided by that court.

After a hearing duly had upon the bill and the motion to dismiss, the lower court sustained the motion and dismissed the bill. Whereupon the present appeal was taken.

It is conceded in this appeal that the plaintiffs below were not entitled to proceed in equity in the lower court for the granting of a patent unless it appeared that they had not taken an appeal from the decision of the Board of Appeals of the Patent Office to the United States Court of Customs and Patent Appeals and that no such appeal was pending or was decided by that court. The sole issue is whether or not the plaintiffs below had taken such an appeal and whether such an appeal was pending or had been decided. This requires an examination of statutes and rules of court governing such appeals.

It is provided in 35 U.S.C.A. § 60, as follows: "When an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall give notice thereof to the commissioner, and file in the Patent Office, within such time as the commissioner shall appoint, his reasons of appeal, specifically set forth in writing."

Pursuant to the foregoing section of the statutes the Commissioner of Patents by rule 149 set forty days within which appellants should file their reasons of appeal, and with this provision appellants duly complied.

In rule XXV established by the Court of Customs and Patent Appeals the following provisions apply:

"Any party desiring to appeal to this Court from a decision of the Board of Appeals or the Commissioner of Patents shall file in the Clerk's office a petition, addressed to the court, in which he shall briefly set forth and show that he has complied with the requirements of section 4912 and 4913 of the Revised Statutes of the United States as amended, 35 U.S. C.A. §§ 60, 61 to entitle him to an appeal, and praying that his appeal may be heard upon and for the reasons assigned therefor to the commissioner. Said reasons for appeal, having been filed with the Commissioner of Patents and made a part of the record, shall not be repeated in the petition of appeal. Said petition of appeal and certified copy of the record in the proceeding shall be filed in this court and the case duly docketed within 40 days (exclusive of Sundays and legal holidays) from the date upon which said reasons for appeal were filed with the Commissioner of Patents: Provided, That the commissioner may for special and sufficient cause extend such time to some definite and fixed date: Provided further, that in inter partes cases appellant shall, at the time of filing said petition of appeal in this court, or within 10 days thereafter, serve a copy thereof upon appellee or his counsel.

"If said petition of appeal and copy of said record shall not be filed within said period of 40 days, unless such time be extended by the commissioner as heretofore provided, the commissioner, upon such facts being brought to his attention by motion of the appellee in inter partes cases, duly served upon the appellant or his attorney, and upon his own motion in ex parte appeals, may take such further proceedings in the case as may be necessary to dispose of the same as though no notice of appeal had ever been given."

The party plaintiffs failed to comply with the above rule XXV and did not file a petition within forty days of March 16, 1936, for appeal to the Court of Customs and Patent Appeals, and did not file a certified copy of the record of the proceedings in the Patent Office. However, more than forty days after March 16, 1936, to wit, on May 6, 1936, the plaintiffs filed with the Commissioner of Patents a motion for extension of time as provided for in the rule above quoted. To this extension of time the defendants objected and instituted a proceeding in accordance with the second paragraph of the rule above quoted, and by motion duly filed brought to the attention of the Commissioner the fact that plaintiffs had not filed their petition for appeal or a certified copy of the record and served this motion upon the plaintiffs. Whereupon the Commissioner entered an order in accordance with the rule disposing of the interference as though no notice of appeal had ever been given. This order was dated May 19, 1936, approving the motion. The prayer of the motion reads as follows: "It is therefore respectfully submitted that this motion should be granted and in accordance with Rule XXV with regard to appeals from the Patent Office to the U. S. Court of Customs and Patent Appeals, the Honorable Commissioner should take such further proceedings in the case as may be necessary to dispose of the same as though no notice of appeal had ever been given by Jensen."

It is provided in 35 U.S.C.A. § 63, as follows: "Whenever a patent on application is refused by the Commissioner of Patents, the applicant, unless appeal has been taken from the decision of the board of appeals to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal; and the court having cognizance thereof, on notice to...