Jorgensen v. Ericson

• Decision Date: 03 January 1949
• Docket Number: No. 4545.,4545.
• Citation: 81 F. Supp. 614
• Parties: JORGENSEN et al. v. ERICSON et al.
• Court: U.S. District Court — Eastern District of Missouri

81 F. Supp. 614

JORGENSEN et al. v. ERICSON et al.

No. 4545.

United States District Court E. D. Missouri, E. D.

January 3, 1949.

John H. Bruninga and John H. Sutherland, both of St. Louis, Mo., and Alex F. Baillio, of Detroit, Mich., for plaintiffs.

Hugh M. Morris, of Wilmington, Del., and George R. Ericson and Bertram H. Mann, Jr., both of St. Louis, Mo., for defendants.

DUNCAN, District Judge.

It appearing to the court that certain errors in the court's finding in the quotation of evidence and other factual information were made in the memorandum opinion filed on the 1st day of December 1948, said memorandum opinion is hereby set aside and the following amended memorandum opinion conforming to the facts as heretofore called to the attention of the court is filed:

This is a suit brought under Revised Statutes, § 4915 Title 35 U.S.C.A. § 63, to authorize the Commissioner of Patents to issue a patent embodied in claims which were the subject matter of an interference proceeding before the Patent Office to the General Motors Corporation, assignee of plaintiffs Clarence H. Jorgensen and Clarence H. Jorgensen, Administrator, pursuant to application No. 585,510, filed January 8, 1932.

The application refers to an automatic choke to regulate and control the flow of fuel and air into the carburetor of an automobile to facilitate the starting thereof in cold weather. As the common subject matter of the claims embodied in the interference proceedings were determined by the Patent Office, I see no reason for a more detailed description of the patents or claims in controversy.

Upon an adverse decision by the Board of Interference Examiners in the interference proceedings, the plaintiffs brought separate actions against George Ericson and Otto Henning, and by agreement the two suits were consolidated for purpose of trial, but this memorandum opinion deals only with the Ericson case. A separate opinion will be filed in the Henning case. Jorgensen v. Henning, D.C., 81 F.Supp. 621. The ultimate question for determination is one of priority — that is, who got there the "fustest with the mostest". To sustain their contention of priority, the plaintiffs introduced in evidence part, but not all, of the evidence presented to the Patent Office Tribunal in the form of depositions and exhibits, and also, in addition thereto, offered witnesses who had not testified before the Patent Office Tribunal.

A motion to dismiss was filed by defendants, prior to the introduction of evidence, attacking the jurisdiction of the court, and the motion was taken under consideration for determination with the cases.

Defendants insist that as the plaintiffs' original complaint did not state a cause of action and the amendment made on the day the trial began, being more than six months after the decision of the Board of Interference Examiners, did not date back to the filing of the original complaint and that their suits are barred by the Statute of Limitations. The plaintiffs' original complaint alleged in part:

"1. This action arises under United States Code, Title 35, Sec. 63 (Revised Statutes, Sec. 4915) as amended March 2, 1927, (44 Stat. 1336) and March 2, 1929 (45 Stat. 1476). * * *

"After due proceedings had, the Board of Interference Examiners in the Patent Office, on the 31st day of October, 1945, awarded priority of invention of all of the aforesaid counts to Otto Henning. Upon presentation of a Petition for Reconsideration, the Board of Interference Examiners refused to change its award of priority of invention and on December 26, 1945, denied said Petition. The Commissioner of Patents has refused to grant a patent to Plaintiff, General Motors Corporation, for the subject matter of said interference."

On the day of the trial, after objections had been made by defendants to the complaint, by leave of court, plaintiffs amended their complaint by adding the following language:

"1. By adding to paragraph 1, page 1 of said Complaint, the following: `and as amended August 5, 1939 (53 Stat. 1212)'

"2. By adding to paragraph 10, page 5, after the word `interference' the following: `in view of said decisions. In these premises, the plaintiffs, Clarence H. Jorgensen (also Administrator) and General Motors Corporation, affirm themselves to be dissatisfied with the decisions of the Board of Interference Examiners.'"

Defendants insist that no such statute existed as alleged in the complaint; that the statute referred to had been repealed, was nonexistent and that no cause of action could be based upon it; and that plaintiffs did not allege in their original complaint that they were dissatisfied with the decision of the Board of Interference Examiners; and that inasmuch as the statute provides that when the losing party is dissatisfied with the decisions of the Board of Interference Examiners, he may bring a suit in the District Court to authorize the Commissioner of Patents to issue a patent, the use of such language in a complaint is jurisdictional and the failure to do so deprives the court of jurisdiction. They further contend that an amendment adding such language made more than six months after the decision of the Board would not cure the original defect.

Before proceeding to a discussion of the facts and other legal questions raised by the defendants, the jurisdictional question should be determined. The section of the statute authorizing these suits, Title 35 U.S.C.A. § 63, was first passed in 1870, 16 Stat. 205, Sec. 52. It was amended in 1927, again in 1929 and finally in 1939. Of course, the defendants are right in their contention that in 1947, when this suit was brought, there was no such law as that enacted by the amendment of 1929 because another amendment had been made in 1939, and Title 35 U.S.C.A. § 63, as changed by the 1939 amendment was then the law. After the 1939 amendment became effective there was no reason to refer to the amendments of 1927 and 1929 when pleading the statute, in seeking to apply its provisions to acts occurring subsequent to its effective date. It seems to me that it was entirely unnecessary for the pleader, in referring to Rev.Stat. 4915, Title 35 U.S.C.A. § 63, to add the explanatory words as to when the act had been amended. Such language was simply surplusage. It was not even necessary to confer jurisdiction on the court to mention the section of the statute under which it was brought. If the allegations of fact in a complaint show jurisdiction in the court, nothing else is necessary. Should a pleader merely mention the statute as a basis for establishing jurisdiction and make no other allegations of fact applicable thereto, then he might be bound by such reference; but that is not the case here. A reading of the pleading clearly shows jurisdiction of the subject matter of the suit in the District Court.

Next we come to the question of whether it was necessary for the pleader to quote the words of the statute providing when suit may be brought by an applicant who had been denied a patent. Section 63, supra, provides that:

"Whenever a patent on application is refused by the Board of Appeals or whenever any applicant is dissatisfied with the decision of the board of interference examiners, the applicant * * * may have remedy by bill in equity, * * *."

Defendants cite no authority to sustain their contention. I do not believe it was necessary to quote the language of the statute in the complaint. The words are simply explanatory of the conditions which authorize the losing party to institute a suit in the District Court and are not jurisdictional. No particular words are necessary if the general allegations show that the Board of Interference Examiners has decided against him — that is, the allegation that the Commissioner of Patents (the only one who could grant a patent) had refused to do so would be sufficient. Under such circumstances the bringing of the action would clearly express dissatisfaction with the action of the Board of Interference Examiners. I think the allegations of the original complaint clearly stated a cause of action, the jurisdiction of which was in the District Court. The amendment was unnecessary, but having been made, it simply stated more clearly and spelled out in greater detail that which was already sufficient. In view of the foregoing the motion of the defendants to dismiss for lack of jurisdiction is overruled.

The defendants next contend that:

"Findings of the Patent Office Tribunal may not be set aside in these actions, in that not all the evidence on which they were made were presented to this court."

As heretofore stated, plaintiffs did not introduce all of the evidence which had been submitted to the Patent Office Tribunal. Defendants cite many cases to sustain their position, but with few exceptions they are cases where the court was reviewing the action of some governmental agency rather than trying the case de novo as we are here. It seems to me almost inconceivable that in view of the wording of the statute this court cannot proceed to a determination of the suit upon such evidence as is submitted to it; either all or any part of that which was before the Patent Office Tribunal. The statute is clear and unambiguous. It provides:

"In all suits brought hereunder where there are adverse parties the record in the Patent Office shall be admitted in whole or in part, on motion of either party, subject to such conditions as to costs, expenses, and the further cross-examination of the witnesses as the court may impose, without prejudice, however, to the right of the parties to take further testimony. The testimony and exhibits, or parts thereof, of the record in the Patent Office when admitted shall have the same force and effect as if originally taken and produced in the suit." (Emphasis supplied.)

The language concerning the introduction of the testimony and exhibits before the Patent Office first appeared in the 1927 amendment. Prior to that a...