Sanford v. Kepner

Decision Date10 November 1952
Docket NumberNo. 46,46
Citation344 U.S. 13,97 L.Ed. 12,73 S.Ct. 75
PartiesSANFORD v. KEPNER
CourtU.S. Supreme Court

Mr. J. Preston Swecker, Washington, D.C., for petitioner.

Mr. Hugh M. Morris, Wilmington, Del., for respondent.

Mr. Justice BLACK delivered the opinion of the Court.

Claiming he was the original and sole inventor of a mechanical device, the respondent Kepner asked the United States Patent Office for a patent. Later the petitioner Sanford filed a similar application making the same claim. As authorized by R.S. § 4904, 35 U.S.C. § 52, 35 U.S.C.A. § 52, the Commissioner of Patents directed a board of interference examiners to hold hearings and determine the dispute over priority of invention—which of the two first used the device. The Board decided for respondent Kepner. Sanford's application for patent was accordingly refused. As authorized by R.S. § 4915, 35 U.S.C. § 63, 35 U.S.C.A. § 63, Sanford brought this bill in equity praying that he be adjudged inventor of the device and entitled to a patent. Sanford also prayed that Kepner's claims be adjudged unpatentable, charging that many previous patents had been granted on Kepner's device, some of which had expired. Agreeing with the Board of Interference Examiners, the District Court found against Sanford on the issue of prior use. Since this was enough to justify refusal to issue Sanford a patent, the District Court declined to go further and consider Kepner's claim to a patent. Accordingly Sanford's bill was dismissed. 99 F.Supp. 221. Agreeing with the District Court, the Court of Appeals affirmed. 3 Cir., 195 F.2d 387. The circuits have different views concerning the duty of district courts to consider and adjudicate questions of invention and patentability when parties urge them in R.S. § 4915 proceedings. 1 To settle these differences we granted certiorari. 343 U.S. 976, 72 S.Ct. 1075.

So far as relevant to the precise question here, R.S. § 4915, as now contained in 35 U.S.C. § 63, 35 U.S.C.A. § 63, reads:

'* * * whenever any applicant is dissatisfied with the decision of the board of interference examiners, the applicant * * * may have remedy by bill in equity * * * and the court * * * may adjudge that such applicant is entitled, according to law, to receive a patent for his invention * * *. 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.'

The obvious purpose of the quoted part of R.S. § 4915 is to give a judicial remedy to an applicant who has been finally denied a patent because of a Patent Office decision against him and in favor of his adversary on the question of priority. When the trial court decides this factual issue of priority against him and thus affirms the refusal of the patent by the Patent Office, he has obtained the full remedy the statute gives him. Only if he wins on priority may he proceed. In that event, the statute says, the court may proceed to 'adjudge that such applicant is entitled, according to law, to receive a patent for his invention * * *.' So adjudging, it may authorize issuance of the patent. But judicial authorization of issuance...

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31 cases
  • General Tire & Rubber Co. v. Firestone Tire & Rubber Co.
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Northern District of Ohio
    • 3 Octubre 1972
    ...84 S.Ct. 48, 11 L.Ed.2d 50 (1963); Sanford v. Kepner, 99 F.Supp. 221, 226 (D.Pa.1951), aff'd 195 F.2d 387 (3rd Cir. 1951), 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12 (1952); Minnesota Mining & Mfg. Co. v. Carborundum Co., 155 F.2d 746, 749 (3rd Cir. 1946). Findings 63-79 set out the circumstance......
  • Standard Oil Co. (Indiana) v. Montedison, S.p.A.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • 14 Octubre 1981
    ...district court may ignore. Hill v. Wooster, 132 U.S. 693, 698, 10 S.Ct. 228, 230, 33 L.Ed. 502 (1890); see Sanford v. Kepner, 344 U.S. 13, 15, 73 S.Ct. 75, 76, 97 L.Ed. 12 (1952). Moreover, following the announcement of its initial decision in an opinion issued January 11, 1980, and before ......
  • Standard Oil Company v. Montedison
    • United States
    • United States District Courts. 3th Circuit. United States District Court (Delaware)
    • 28 Febrero 1980
    ...any differently than it was in Hill v. Wooster. Case law has, however, limited the situations in which it must be applied. In Sanford v. Kepner,821 the Supreme Court held that as long as the reviewing Court agreed with the Board's Opinion it need not consider patentability. Thus if this Cou......
  • Cody v. Aktiebolaget Flymo, 23575.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (District of Columbia)
    • 9 Septiembre 1971
    ...made the invention." Id. at 698, 10 S.Ct. at 230. The wider implications of that ruling were circumscribed in Sanford v. Kepner, 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12 (1952). There the party who had lost before the Board of Patent Interferences claimed in the district court that the device ......
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