Victor Talking Mach. Co. v. Brunswick-Balke-Collender Co.

• Decision Date: 07 May 1923
• Docket Number: 458.
• Citation: 290 F. 565
• Parties: VICTOR TALKING MACH. CO. v. BRUNSWICK-BALKE-COLLENDER CO. et al.
• Court: U.S. District Court — District of Delaware

290 F. 565

VICTOR TALKING MACH. CO. v. BRUNSWICK-BALKE-COLLENDER CO. et al.

No. 458.

United States District Court, D. Delaware.

May 7, 1923

William Houston Kenyon, Frederick Bachmann, George W. Schurman, and George T. Bean, all of New York City, John D. Myers, of Camden, N.J., and Charles F. Curley, of Wilmington, Del., for plaintiff.

Melville Church, of Washington, D.C., George W. Case, Jr., of New York City, and William G. Mahaffy, of Wilmington, Del., for defendants.

MORRIS District Judge.

The issue in an interference declared bye the Patent Office between claim 19 of patent No. 946,442, issued to Eldridge R Johnson, assignor to Victor Talking Machine Company, and claim No. 30 of application No. 411,454, filed by John Bailey Browning, was decided by the Court of Appeals of the District of Columbia in favor of Browning. 50 App.D.C. 335, 271 F 1017. Thereafter patent No. 1,402,738, containing, as claim 1, the claim in interference, was issued to Browning assignor by mesne assignments of 51/100 to the Brunswick-Balke-Collender Company. Thereupon the Victor Company instituted against Browning and the Brunswick-Balke-Collender Company this interference suit in equity under R.S.U.S. Sec. 4918 (Comp. St. Sec. 9463), to have claim 1 of the Browning patent adjudged invalid and void. The answer of the defendants prays for like relief with respect to claim 19 of the Johnson patent. The case has been heard upon bill, answer, exhibits, depositions, and testimony on the part of the plaintiff taken in open court.

The defendants, relying upon the decision of the Court of Appeals of the District of Columbia (put in evidence by the plaintiff probably to show an exhaustion of Patent Office remedies, Smith v. Muller (C.C.) 75 F. 612; McKnight v. Metal Volatilization Co. (C.C.) 128 F. 51; Prindle v. Brown (C.C.) 136 F. 616), rested their case without offering any evidence. They contend that the decision of the Court of Appeals is a judgment with all the incidents and consequences of a judgment; that it is conclusive herein until set aside; that it may be set aside only on the grounds of fraud, accident, mistake, or other grounds sufficient to afford equitable relief against any other judgment; that this suit is, in legal effect, a suit in the nature of a suit to set aside a judgment, but that the plaintiff, misconceiving its nature, has adduced evidence, not of the character required to set aside a judgment, but only of the kind that would tend to uphold plaintiff's patent, had there been no prior adjudication with respect thereto. They further contend, as I understand it, that if the decision of the Court of Appeals is not technically a judgment, yet its decision is in the nature of a judgment, was rendered by a tribunal of great dignity in a proceeding of like character between the same parties, and should be controlling, unless overcome by evidence that carries thorough conviction or conviction beyond a reasonable doubt, and that upon this theory, also, the plaintiff has failed to make out a case for relief.

The position of the plaintiff is that the decision of the Court of Appeals is not a judgment; that in this suit the interference issue is tried de novo upon new evidence; that the decision of the Court of Appeals is without evidential or other value in this case, save that based upon comity (see Walker on Patents, Secs. 635, 634); and that, the evidence before the Court of Appeals not having been admitted as a whole in this case, new evidence having been here produced by the plaintiff, and no evidence having been produced by the defendants, a different state of evidence exists, and the decision of the Court of Appeals is here wholly without effect.

As the Patent Office interference proceeding is purely statutory, and as the jurisdiction of the Court of Appeals of the District of Columbia in such proceedings is likewise statutory, the first step in the solution of these problems must consist of an examination of the statutes pertaining thereto, the more important of which are:

'Sec. 4904. Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the primary examiner, or of the board of examiners in chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe. ' Comp. St. Sec. 9449.

'Sec. 4909. Every applicant for a patent or for the reissue of a patent, any of the claims of which have been twice rejected, and every party to an interference, may appeal from the decision of the primary examiner, or of the examiner in charge of interferences in such case, to the board of examiners in chief, having once paid the fee for such appeal. ' Comp. St. Sec. 9454.

'Sec. 4910. If such party is dissatisfied with the decision of the examiners in chief, he may, on payment of the fee prescribed appeal to the Commissioner in person. ' Comp. St. Sec. 9455.

'Sec. 4911. If such party, except a party to an interference, is dissatisfied with the decision of the Commissioner, he may appeal to the Supreme Court of the District of Columbia, sitting in banc.'

'Sec. 4912. When an appeal is taken to the Supreme Court of the District of Columbia, the appellant shall give notice thereof to the Commissioner, and file in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal, specifically set forth in writing. ' Comp. St. Sec. 9457.

'Sec. 4913. The court shall, before hearing such appeal, give notice to the Commissioner of the time and place of the hearing, and on receiving such notice the Commissioner shall give notice of such time and place in such manner as the court may prescribe, to all parties who appear to be interested therein. The party appealing shall lay before the court certified copies of all the original papers and evidence in the case, and the Commissioner shall furnish the court with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal. And at the request of any party interested, or of the court, the Commissioner and the examiners may be examined under oath, in explanation of the principles of the thing for which a patent is demanded. ' Comp. St. Sec. 9458.

'Sec. 4914. The court, on petition, shall hear and determine such appeal, and revise the decision appealed from in a summary way, on the evidence produced before the Commissioner, at such early and convenient time as the court may appoint; and the revision shall be confined to the points set forth in the reasons of appeal. After hearing the case the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office, and shall govern the further proceedings in the case. But no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question. ' Comp. St. Sec. 9459.

'Sec. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. 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. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not. ' Comp. St. Sec. 9460.

'Sec. 4918. Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment. ' Comp. St. Sec. 9463.

Section 780 of the R.S.U.S., relating to the District of Columbia:

'The Supreme Court, sitting in banc, shall have jurisdiction of and shall hear and determine all appeals from the decisions of the Commissioner of Patents, in accordance with the provisions of section forty-nine hundred and eleven to section forty-nine hundred and fifteen, inclusive, of chapter one, title LX, of the Revised Statutes, 'Patents, Trade-Marks, and Copyrights."

Section 9 of 'An act to...