Vandenberg v. EI DU PONT DE NEMOURS & COMPANY

• Decision Date: 11 June 1965
• Docket Number: Civ. A. No. 2794-64,2795-64.
• Citation: 242 F. Supp. 188
• Parties: Edwin J. VANDENBERG, and Hercules Powder Company, Plaintiffs, v. E. I. DU PONT DE NEMOURS & COMPANY, Montecatini Societa Generale Per L'Industria Mineraria E. Chimica, Phillips Petroleum Company and Standard Oil Company, Defendants. Edwin J. VANDENBERG and Hercules Powder Company, Plaintiffs, v. Edward J. BRENNER, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

242 F. Supp. 188

Edwin J. VANDENBERG, and Hercules Powder Company, Plaintiffs, v. E. I. DU PONT DE NEMOURS & COMPANY, Montecatini Societa Generale Per L'Industria Mineraria E. Chimica, Phillips Petroleum Company and Standard Oil Company, Defendants.

Edwin J. VANDENBERG and Hercules Powder Company, Plaintiffs, v. Edward J. BRENNER, Commissioner of Patents, Defendant.

Civ. A. Nos. 2794-64, 2795-64.

United States District Court District of Columbia.

June 11, 1965.

Paul L. Gomory, Washington, D. C., for defendant Phillips Pet. Co.

Solon B. Kemon, Washington, D. C., for plaintiffs Edwin J. Vandenberg & Hercules Powder Co.

Edward B. Beale, Washington, D. C., for defendant Standard Oil Co. of Indiana.

Frederick Schafer, Washington, D. C., for defendant E. I. DuPont DeNemours & Co.

Oscar Cox, Washington, D. C., for defendant Montecatini Societa Gen., and others.

Clarence W. Moore, Sol., U. S. Patent Office, Washington, D. C., for the Commissioner of Patents.

JACKSON, District Judge.

The motions to dismiss these two civil actions were consolidated for hearing. The actions arose from a decision by the Board of Patent Interferences on October 6, 1964, ruling that the plaintiffs were not the first inventors of subject matter with respect to which an interference had been declared. The interference (No. 89,634) was declared in September, 1958, and involved patent applications by Baxter (No. 556,548), Hogan (No. 558,538), Natta (No. 514,099), and Zletz (No. 462,480). The Board terminated the proceedings as to the plaintiffs because they could not allege a date of invention prior to the date on which Zletz filed his application.

Plaintiffs then, on November 10, 1964, instituted two civil actions. The first (2794-64) alleged jurisdiction under 35 U.S.C. § 146 and named the owners of the other applications in the interference as defendants. The second (2795-64) action alleged jurisdiction under 5 U.S. C. § 1009, the Administrative Procedure Act, and named the Commissioner of Patents as defendant. The latter Act applies only in instances where there is no "other adequate remedy in any court". (5 U.S. C. § 1009(c)).

The plaintiffs admit that if the Court has jurisdiction under 35 U.S.C. § 146, no remedy lies under the Administrative Procedure Act. Section 146 provides that "any party to an interference dissatisfied with the decision of the board of patent interferences on the question of priority, may have remedy by civil action." The "civil action" mentioned amounts to a trial de novo in the District Court.

In support of their motion to dismiss, the interference defendants in the 2794-64 action have contended that the decision of the Board of Interferences, which dropped the plaintiffs from the interference proceeding, was not a "decision * * * on the question of priority" within the meaning of Section 146. The Commissioner of Patents, in the 2795-64 action, has contended that the Board's decision was such a "decision * * * on the question of priority", and that Section 146 vested plaintiffs with the right to court relief at the time the decision was entered. Based on that, the Commissioner argued that no remedy existed against him under the Administrative Procedure Act.

The Court finds that Section 145 does vest a right to judicial relief in a party dropped from an interference proceeding as soon as the judgment adverse to him is entered. This is a "decision * * * on the question of priority" within the statute because the judgment's basic effect is to declare that the parties retained in the interference are prior to the party dropped. The judgment so declaring is the last action taken by the Patent Office with respect to the party dropped, and constitutes the sole entry on the record indicating the Patent Office's final position. It is from such a final position that judicial relief is in-intended to be available.

The private defendants in the 2794-64 action also have contended that the Board's decision was merely a discretionary matter of "administrative housekeeping", and thus inappropriate for judicial review. To this it is sufficient to answer that the ...