Sanford v. Kepner
Decision Date | 10 November 1952 |
Docket Number | No. 46,46 |
Citation | 344 U.S. 13,97 L.Ed. 12,73 S.Ct. 75 |
Parties | SANFORD v. KEPNER |
Court | U.S. Supreme Court |
Mr. J. Preston Swecker, Washington, D.C., for petitioner.
Mr. Hugh M. Morris, Wilmington, Del., for respondent.
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:
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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...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......
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