Knutson v. Gallsworthy

• Decision Date: 15 September 1947
• Docket Number: No. 9422-9430.,9422-9430.
• Citation: 164 F.2d 497,82 US App. DC 304
• Parties: KNUTSON, et al. v. GALLSWORTHY, et al., and five other cases. COHEN v. SAME, and two other cases.
• Court: U.S. Court of Appeals — District of Columbia Circuit

82 US App. DC 304, 164 F.2d 497 (1947)

KNUTSON, et al. v. GALLSWORTHY, et al., and five other cases. COHEN v. SAME, and two other cases.

Nos. 9422-9430.

United States Court of Appeals District of Columbia.

Argued April 11, 1947.

Decided September 15, 1947.

COPYRIGHT MATERIAL OMITTED

Mr. Oscar C. Limbach, of Cleveland, Ohio, pro hac vice, by special leave of Court, with whom Mr. Almon S. Nelson, of Washington, D. C., was on the brief, for Amos T. Knutson, et al.

Mr. William D. Burrows, of New York City, pro hac vice, by special leave of Court, with whom Mr. Vernon M. Dorsey, of Washington, D. C., was on the brief, for Samuel J. Cohen.

Mr. Benjamin B. Schneider, of New York City, with whom Messrs. Lee B. Kemon, of Washington, D. C., R. J. Dearborn and Daniel Stryker, both of New York City, and Max Dressler, of Chicago, Ill., were on the brief, for Jimmiebel Gallsworthy and The Texas Company.

Mr. Edwin R. Hutchinson, of Washington, D. C., entered an appearance for appellees John W. Wolfe, et al.

Mr. Edwin L. Reynolds, United States Patent Office, of Washington, D. C., entered an appearance for appellee Casper W. Ooms.

Before EDGERTON, WILBUR K. MILLER and PRETTYMAN, Associate Justices.

PRETTYMAN, Associate Justice.

These are nine appeals from judgments in six¹ civil actions brought in the District Court under R.S. § 4915,² praying authorizations for the issuance of patents. The actions were consolidated for trial below and for argument and decision here. The invention is a chemical composition suitable as an extreme pressure lubricant. The controversies arose in four interference proceedings among applicants in the Patent Office, finally involving eleven claims or counts. Priority as to one count was awarded by the Patent Office to applicants Morell, et al.,³ as to three counts to applicant Cohen, and as to the other seven counts to applicant Gallsworthy. The District Court reached and entered conclusions that Cohen and Gallsworthy were entitled to receive patents upon all counts awarded to them by the Patent Office and that Gallsworthy was entitled to receive a patent on the count initially awarded to Morrell. It therefore dismissed all the bills of complaint, together with the crossclaims and counterclaims, except that in one action⁴ it reversed the decision of the Patent Office and authorized the issuance of a patent to Gallsworthy on the one claim which had been awarded by the Patent Office to Morell. The latter's motion to reopen was denied.

We are met first with the question whether the court must decide in this proceeding the patentability of the several claims involved. It is true that in a direct appeal from a decision of the Patent Office in an interference proceeding, only the question of priority is involved,⁵ but this is not true in equity suits brought in the District Court under Section 4915.⁶ This latter rule — specifically that no decree should authorize the issuance of a patent to either party to the interference unless invention is present — was established by the Supreme Court in 1890 in Hill v. Wooster.⁷ That case was referred to and distinguished recently in Hoover Co. v. Coe,⁸ but it is not our understanding that it was overruled, although there is language in the later opinion which may reflect a view contrary to the earlier one. For example, the Court said that "the effect of adjudication in equity is the same as that of decision on appeal",⁹ which would seem to imply that in an R. S. § 4915 proceeding the court might decide one question — such as priority — and leave all other questions for other determination, as does the Court of Customs and Patent Appeals.¹⁰ Again, the Court referred to cases in which federal courts have taken jurisdiction under Section 4915, "where it affirmatively appeared that further proceedings in the Patent Office would be necessary following adjudication in favor of the applicant, and where though it did not appear of record that further proceedings would be required in the Patent Office, it was evident that they might ensue adjudication, as where a patent was denied for want of invention."¹¹ We have reexamined the cases cited by the Court to the foregoing, but in none of them does it appear that the trial court declined to pass upon an issue raised in the pleadings before it. Hoover Co. v. Coe, supra, was concerned with jurisdiction to entertain a complaint, and not with jurisdiction over questions raised by the pleadings once the action itself is held proper. The answer to the specific question involved seems to be the full extent of the decision of the Supreme Court. The Court left the rule of Hill v. Wooster, supra, intact, distinguishing that case by saying:

"That case was one in which the Commissioner had decided an interference between the claims of two applicants in favor of one of them, and ordered that a patent issue. In an inter partes suit by the unsuccessful applicant against the successful one, this court held that if it appeared that neither application disclosed invention (a matter which should have moved the Commissioner not to declare an interference) the bill should be dismissed. The court did not purport to decide what Patent Office rulings are reviewable under R.S. § 4915."

Moreover, in a footnote, the Court said:

"Section 16 of the Act of 1836, 5 Stat. 123, supra, expressly provided that upon a bill filed as a result of Patent Office decision on an interference the court might adjudge either of the patents void in whole or in part. This language was evidently omitted in later acts as surplusage, for obviously if either patent was void for lack of invention or other cause, the question of interference disappeared."

This last-quoted language is a clear indication that if there be a dispute as to the validity of a patent upon an application involved in an interference proceeding, the court must not enter an affirmative decree unless it finds that invention is present. We note also that the Court referred with apparent approval to the decision of this court in Radtke Patents Corp. v. Cole,¹² in which we held that if an issue as to patentability is raised in the District Court in an action under R.S. § 4915, it must be decided. In the case at bar, the issue of patentability was raised in the District Court and is raised here, and so must be decided.

We fully realize that the consequences of the rule just indicated, when coupled with the doctrine of res judicata, may be far-reaching. That doctrine imposes finality of decision not only upon issues actually raised but upon issues which might have been raised. Fishgold v. Sullivan Drydock & Repair Corp., 1946, 328 U.S. 275, 282, 66 S.Ct. 1105, 90 L.Ed. 1230, 167 A.L.R. 110. Thus, it would seem that if any question as to the issuance of a patent can be raised in a Section 4915 proceeding, all questions as to that issuance would be foreclosed by the decision, in so far as the parties to the proceeding are concerned. We also realize that the consequences of res judicata in these circumstances may be in conflict with implications in Hoover Co. v. Coe, supra, that further proceedings in the Patent Office may occur after judgment in a Section 4915 proceeding. But we do not have a res judicata question before us. We go only so far as to say that patentability is a proper issue in a proceeding under Section 4915 and, if raised, must be decided, even though the Patent Office decision from which the case arose was in an interference proceeding. Non-patentability is "a matter which should have moved the Commissioner not to declare an interference."¹³

Upon these appeals, Morell contends that none of the claims involved is patentably distinct from the disclosures of a so-called "Lincoln patent"¹⁴ and that certain of the claims are unpatentable over others. Cohen makes the same contention as to the Lincoln patent and also says that none of the claims is patentable over the broad claim titled "composition of matter" and designated as Count 1 in Interference No. 78,460. Gallsworthy contends that the counts in the several interferences obviously differ in scope, that the Lincoln patent does not in fact disclose the subject matter of the claims here involved, and that all questions as to patentability were decided by the Patent Office and the District Court, the findings of which were supported by substantial evidence.

The elements of patentability as provided by the statute¹⁵ are not one but several. They include not only a patentable subject matter but also other characteristics, among them novelty. The invention must be "new" and "not described in any printed publication" before the claimed invention. It is not disputed in the present case that the subject matter of the claimed invention is within the patentable matters enumerated in the statute, but a dispute is presented as to the novelty of these claims in view of the prior art, the core of the dispute being the effect of the disclosures in certain publications prior to the pending applications. In addition, the statute, in prescribing the basic requisites to the issuance of a patent, provides that the person who has invented the new art, etc., may obtain a patent, and thus confines patentability to that one person. That consideration is pertinent to patentability in the present case, because a dispute exists here as to whether one person can obtain a patent on a specific claim to a composition of matter which is identical in its ingredients with a generic claim patented to another. The question is whether the eleven claims in the case involve only one invention and are therefore patentable to only one inventor,¹⁶ or whether they involve several inventions, of which there may be different inventors. Thus, the disputed features of patentability in this case are (1) whether the claims are patentable over the disclosures in prior art references and (2) whether the several claims are patentable to different persons. We think that under the...