Senitha v. Robertson

• Decision Date: 17 November 1930
• Docket Number: No. 3002.,3002.
• Citation: 45 F.2d 51
• Parties: SENITHA v. ROBERTSON, Commissioner of Patents.
• Court: U.S. Court of Appeals — Fourth Circuit

45 F.2d 51 (1930)

SENITHA v. ROBERTSON, Commissioner of Patents.

No. 3002.

Circuit Court of Appeals, Fourth Circuit.

November 17, 1930.

Curley C. Hoffpauir, of New York City, for appellant.

T. A. Hostetler, Sol. U. S. Patent Office, of Washington, D. C. (Charles B. Rugg, Asst. Atty. Gen., and J. F. Mothershead, of Washington, D. C., on the brief), for appellee.

Before PARKER, Circuit Judge, and GRONER and SOPER, District Judges.

GRONER, District Judge.

This is an appeal from a final decree entered by the District Court of Maryland on the 10th of April, 1929, setting aside a decree pro confesso, and dismissing the bill of complaint.

On February 11, 1928, pursuant to section 4915, Rev. St., as amended by Act March 2, 1927, § 11 (35 USCA § 63), appellant filed a bill of complaint on the equity side of the District Court of Maryland against the Commissioner of Patents praying for a decree directing the Commissioner to issue to him a patent in accordance with an application which had theretofore been filed in the Patent Office, and denied. The Commissioner is a resident of Maryland, and process was served upon him in the district of his residence on the 7th day of March, 1928. The summons, in accordance with Equity Rule 12 (28 USCA § 723), required him to file his answer, or other defense, on or before the twentieth day after service. No answer, or other defense, was filed, nor any appearance made within the twenty days. One day after the expiration of the time provided in the rule, the Commissioner appeared specially by the United States Attorney, and moved to quash the return of the summons on the ground that the Commissioner could not be sued except in the District of Columbia — the place of his official residence. Apparently no proceedings were had on this motion, and, at the October term, 1928, on motion of the plaintiff, and without notice, the district court entered an order taking the bill of complaint pro confesso. On October 11, following, the Commissioner filed a motion to set aside the decree pro confesso, principally because it had been obtained without notice and during the pendency of the plea to the jurisdiction, and plaintiff, after the expiration of thirty days from the entry of the default, applied for a final decree in accordance with Equity Rule 17 (28 USCA § 723), and, on April 10, 1929, after a full hearing by the court, a decree was entered setting aside the decree pro confesso and dismissing the bill of complaint, the court holding that it was without jurisdiction because the suit was not maintainable in the District of Maryland, but only in the District of Columbia.

There are two questions for decision: First, with relation to the action of the court in dismissing the bill; and, second, whether, in the event this was error, that part of the order setting aside the decree pro confesso should be approved and the case remanded for trial on the merits.

On the first question, both parties rely on the case of Butterworth v. Hill, 114 U. S. 128, 5 S. Ct. 796, 797, 29 L. Ed. 119. That was a suit in equity commenced against the Commissioner of Patents by citizens of Vermont in the District Court of Vermont. Summons was issued, and delivered to the Commissioner in Washington, who indorsed thereon his acceptance of service "to have the same effect as if duly served on me by a proper officer," and, with the return of the summons, the Commissioner filed in the proceedings a paper writing in which, after reciting the nature and character of the suit, he stated: "I herewith return the subpoena, service accepted, and have to inform you that I shall not appear in defense in said bill." There was no further process on the Commissioner, and no appearance by him, but the Circuit Court concluded that, by his acceptance of service, he waived all objection to jurisdiction, and consented to be sued in Vermont, and this the Supreme Court found was error, holding that his indorsement on the summons amounted to no more than actual service by a proper officer in the District of Columbia, and that section 739, Rev. St. (now, as amended, section 51 of the Judicial Code 28 USCA § 112), applied to suits brought under section 4915, Rev. St. (the patent statute), and therefore could be brought only in the district of which the defendant — the Commissioner — is an inhabitant, or is found. In concluding the opinion, the Chief Justice, speaking for the court, said: "In the letter which followed the indorsement of service, both counsel and the court were informed that the commissioner declined to appear. The parties proceeded, therefore, at their own risk, and without the consent of the defendant to the jurisdiction of the court. Such being the case, we are of opinion that the court was without jurisdiction, and had no authority to enter the decree which has been appealed from. The act of congress exempts a defendant from suit in any district of which he is not an inhabitant, or in which he is not found at the time of the service of the writ. It is an exemption which he may waive, but unless waived he need not answer, and will not be bound by anything which may be done against him in his absence."

Since the decision in the last-mentioned case, the statute (Jud. Code, § 51) has been amended by striking out the provision permitting suit in the district in which the defendant is found, and the present statute limits the proceeding to the district whereof the defendant is an inhabitant, and this raises the query — whether the residence of the Commissioner, for the purpose of suit, is in the state of which he is in fact a resident, or in Washington where he is officially stationed during his term of office.

In the Butterworth Case, the Supreme Court declined to pass upon the contention that the courts of the District of Columbia had exclusive jurisdiction of suits against the Commissioner of Patents, and that question is still open, and this too, notwithstanding section 4915, Rev. St. has been substantially amended in other respects. But see Hammer v. Robertson, Commissioner (D. C.) 291 F. 656, in which Judge Garvin, of the Eastern District of New York, held that suit may be instituted only in the District of Columbia. But we do not think it necessary to pass upon the question in this case. There is no doubt that the statute (Judicial Code, § 51) is one prescribing venue and not limiting jurisdiction, and that the Commissioner may waive his right to object to suit in a district other than the one in which he is properly suable. We think it is equally true that waiver may be either by appearing generally and defending on the merits, or, as was the case in Commercial Co. v. Consolidated Co., 278 U. S. 177, 49 S. Ct. 98, 99, 73 L. Ed. 252, by remaining passive after service of summons, and neither answering nor appearing, but suffering judgment by default. In that case a corporation of Indiana brought a law action against a corporation of New Jersey in a federal District Court in Ohio. The action was founded on diversity of citizenship, and the process was served on an agent of the defendant in Ohio. The defendant not appearing, judgment went against it by default. It then appeared and moved that the judgment be vacated, and the action dismissed, because not brought within the district of its residence. The motion was denied, and on appeal the Supreme Court held that the provisions of the statute requiring that suit or action...