Kingsland v. Dorsey 18 8212 19, 1949

Decision Date21 November 1949
Docket NumberNo. 53,53
Citation70 S.Ct. 123,338 U.S. 318,94 L.Ed. 123
PartiesKINGSLAND, Commissioner of Patents, v. DORSEY. Argued Oct. 18—19, 1949
CourtU.S. Supreme Court

See 338 U.S. 939, 70 S.Ct. 341.

Mr. Robert L. Stern, Washington, D.C., for petitioner.

Mr. William E. Leahy, Washington, D.C., for respondent.


Acting under the provisions of § 487 of the Revised Statutes, 35 U.S.C. § 11, 35 U.S.C.A. § 11, the Commissioner of Patents found after hearings that petitioner, an attorney, had been guilty of gross misconduct, and entered an order barring him from practice before the United States Patent Office. Pursuant to authority granted by the same provisions, the District Court reviewed the Commissioner's order. Concluding that the hearings had been fairly conducted after due notice of charges and that there was substantial evidence to support the findings and action of the Commissioner, the District Court affirmed the order. 69 F.Supp. 788. The Court of Appeals reversed, 84 U.S.App.D.C. 264, 173 F.2d 405, 410. A majority of that court thought the notice of charges inadequate and the proceedings before the Commission unfair. It also held that the District Court had too narrowly restricted its scope of review in holding that substantial evidence was sufficient to support the findings. It apparently drew a distinction between the phrases 'substantial evidence' and 'substantial probative evidence.' Measuring the findings by the latter phrase, it held that the Commissioner's findings were not supported by 'substantial probative evidence.' Judge Edgerton, dissenting, thought the hearings had been fairly conducted and 'the result just.' He agreed with the District Court that 'substantial evidence' would have been sufficient but went on to say that he thought the 'proof conclusive.'

The statute under which the Commissioner acted represents congressional policy in an important field. It relates to the character and conduct of 'persons, agents, or attorneys' who participate in proceedings to obtain patents. We agree with the following statement made by the Patent Office Committee on Enrollment and Disbarment that considered this case: 'By reason of the nature of an application for patent, the relationship of attorneys to the Patent Office requires the highest degree of candor and good faith. In its relation to applicants, the Office * * * must rely upon their integrity and deal with them in a spirit of trust and confidence * * *.' It was the Commissioner, not the courts, that Congress made primarily responsible for protecting the public from the evil consequences that might result if practitioners should betray their high trust. Having serious doubts as to whether the Court of Appeals acted properly here in nullifying the Commissioner's order, we granted certiorari.

After an examination of the record we are satisfied that the findings were amply supported whether the measure be 'substantial evidence' or 'substantial probative evidence.' The charge of unfairness in the hearings is, we think, wholly without support.

Since the narration of evidence and discussion of the proceedings sufficiently appear in the District Court's opinion, reiteration here can serve no good purpose either for the parties or for the law.

The judgment of the Court of Appeals is reversed, and that of the District Court affirmed. It is so ordered.

Judgment of Court of Appeals reversed.

Mr. Justice DOUGLAS took no part in the consideration or decision of this case.

Mr. Justice JACKSON, whom Mr. Justice FRANKFURTER joins, dissenting.

I agree that the privilege of practicing before the Patent Office is one that may and should be withdrawn for professional misconduct. In defense of his privilege it also is true that the lawyer may not demand that conclusiveness of proof or invoke all of the protections assured to an accused by the criminal process. But while society may expect that his judges will show him no favor because he has lived respectably for eighty years and devoted fifty-nine of them to practice of his profession without blemish, an accused lawyer may expect that he will not be condemned out of a capricious self-righteousness or denied the essentials of a fair hearing.

The court below thought Dorsey had not been fairly judged and indignantly reversed his disbarment. Dorsey v. Kingsland, 84 U.S.App.D.C. 264, 173 F.2d 405. All questions of fact seem to have been resolved against Dorsey by his departmental triers, and I shall not here review all of those issues, even if on some of them Dorsey would seem entitled to prevail. Accepting the findings against him at their full face value, I think the disbarment order was properly set aside.

Back in 1926 the Haftford-Empire Co. conceived and executed a scheme to prepare and publish, over the signature of an apparently disinterested labor leader, an article to be published and then used in support of the company's pending patent application. Such a dissertation, entitled, 'Introduction of Automatic Glass Working Machinery; How Received by Organized Labor,' was prepared. It purported to be authored by one Clarke, president of a glass workers' union. It was published in a trade journal and then presented to the Patent Office as recognition by a 'reluctant witness' of the success of the device under consideration. Several years later, involved in litigation testing the validity of its patent, Hartford-Empire took steps to suppress evidence of the real authorship of the Clarke essay. It made a gift of $8,000 to Clarke, who had told investigators employed by Hartford-Empire's adversary that he had written the article and would so testify if called upon as a witness. Ultimately, this Court reviewed the actions of Hartford-Empire and held that the sum total of acts attributable to it constituted a fraud on the Patent Office and the federal courts. Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322 U.S. 238, 64 S.Ct. 997, 88 L.Ed. 1250, reversing Hartford-Empire Co. v. Hazel-Atlas Glass Co., 3 Cir., 137 F.2d 764. See also United States v. Hartford-Empire Co., D.C., 46 F.Supp. 541.

Dorsey was one of counsel for Hartford-Empire in the 1926 patent application and, shortly following our decision in Hazel-Atlas, supra, proceedings to suspend or ex- clude him from further practice before the Patent Office were commenced under 35 U.S.C. § 11, 35 U.S.C.A. § 11. Identical but separate proceedings were instituted against three other members of the patent bar involved in the transactions. All were disbarred. Only the Dorsey case is here.

Dorsey was charged with gross misconduct in that, as particularized in the notice which instituted the proceeding, he '* * * participated in the preparation of (the Clarke) article and/or the presentation thereof to the United States Patent Office during the prosecution of said patent application knowing that said article was not written by said William P. Clarke, and with the purpose of deceiving the Patent Office as to the authorship of said article and influencing the action of the Patent Office on said application. * * *'

A view of the facts least favorable to Dorsey indicates that he inspected and criticized a few details of an early draft of the Clarke article and that later, with knowledge that it had been prepared by a Hartford-Empire employee, he submitted it to the Patent Office as being what on its face it purported to be....

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  • Divided Federal Circuit Panel Creates Patent Agent Privilege
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