[325 U.S. 79, 80] Messrs. Richard R. Fitzsimmons and William D. Sellers, both of Chicago, Ill., for petitioner.
Mr. T. Hayward Brown, of Washington, D.C., for respondent.
Mr. Justice ROBERTS delivered the opinion of the Court.
The question presented is whether a District Court has jurisdiction of a suit under R.S. 49151 to review the refusal of a claim for patent as not reading on the application. The court below answered in the negative.
The respondent confesses error. The language of the Act, its legislative history, administrative practice, and judicial construction, constrain us to hold that the District Court had jurisdiction of the suit and that the Court of Appeals should have reviewed its decision upon the merits.
January 10, 1941, the petitioner's assignor filed application for a reissue of a patent granted November 7, 1939, on an original application of August 8, 1936. The alleged invention is for improvements in a refrigerating system. A number of claims included in the application for reissue were copied, or substantially copied, from several later patents, in order to provoke interferences therewith and a contest as to priority of invention.
The Primary Examiner finally rejected four of the claims, stating that they were rejected 'as not reading on applicant's disclosure ... .' The Board of Appeals of the Pat- [325 U.S. 79, 81] ent Office affirmed the Examiner's decision. The petitioner then brought suit against the Commissioner of Patents under R.S. 4915 in the United States District Court for the District of Columbia, to compel him to allow the four claims, to the end that interference proceedings might be instituted. The case was heard on the Patent Office record and additional evidence. The court entered findings of fact and conclusions of law and dismissed the complaint on the ground that the claims did not read on, that is, did not accurately describe, the disclosure in the application.
On appeal the court below on its own motion raised the question 'whether (R.S. 4915) confers jurisdiction on the District Court to enter a decree which does not determine the right of the applicant to receive a patent but which instead directs the examiner to allow claims for the purpose of provoking subsequent interference proceedings.' The parties were heard upon this question and the court decided that the District Court lacked jurisdiction of the suit, and on that ground affirmed its judgment of dismissal. 2
R.S. 4915, 35 U.S.C.A. 63, is in part:
The court below held that in conformity to the general rule, a court of equity ought not to afford piecemeal relief pending completion of the administrative process, and consequently ought not to entertain a suit under the statute unless its adjudication would conclude all possible questions as to the right to a patent.
1. On its face the statute confers the right to sue 'Whenever a patent on application is refused by the Board of Appeals ....' The patent applied for (that is, the claims in question) was finally refused by the Board of Appeals. No appeal was taken to the United States Court of Customs and Patent Appeals, and petitioner filed its bill within the time limited in the section.
Two matters may be noted respecting R.S. 4915. These are the denial of jurisdiction if appeal has been taken to the United States Court of Customs and Patent Appeals and the statement that adjudication in favor of the applicant shall authorize the Commissioner to issue a patent. These provisions require reference to R.S. 4911, as amended, 35 U.S.C.A. 59a. That section provides:
It is evident that alternative rights of review are accorded an applicant,- one by appeal to the United States Court of Customs and Patent Appeals, the other by bill in equity filed in one of the federal district courts. In the first the hearing is summary and solely on the record made in the Patent Office;3 in the other a formal trial is afforded on proof which may include evidence not presented in the Patent Office. 4 Every party adversely affected by a ruling on the merits may, if he so elect, proceed by bill rather than by appeal. In the one case the adjudication in equity authorizes issue of a patent on the applicant's 'otherwise complying with the requirements of law.' In the other the decision 'shall govern the further proceedings in the case' in the Patent Office. 5
The question is whether the differences in the character of the proceedings and the statutory effect of decision or adjudication require a holding that as to all decisions on the merits adverse to the applicant, other than the final action as to the issue of a patent, the applicant must obtain review by appeal to the Court of Customs and Patent Appeals, and can proceed by bill under R.S. 4915 only when every step requisite to issue has been taken. If so, [325 U.S. 79, 84] the language of R.S. 4915 is ill chosen. 'Whenever a patent on application is refused' states precisely this case. The petitioner's application was refused. 'Whenever any applicant is dissatisfied with the decision of the board of interference examiners' states a case where the examiner's decision may be only one of a series of rulings in the Patent Office prior to issue of a patent. It can hardly be that these phrases have no effect and are to be read as 'Whenever, after all administrative steps are complete and a patent is about to issue, any person aggrieved may have remedy by bill in equity.' If that be the correct construction, one finally denied a patent could not resort to the specified remedy, since, even if his contention were sustained, he might thereafter have to leap the hurdles in the Patent Office of interferences, later references, and other obstacles to patentability.
On the face of the statutes the applicant is given alternative remedies resulting in the same sort of relief so far as concerns the further prosecution of the application in the Patent Office.
2. The legislative history confirms the view that Congress so intended.
That history cannot be stated briefly. It has its origin in the Patent Act of 18366 which afforded an applicant aggrieved by a ruling of the Commissioner an appeal to a board of examiners. 7 By a later section it was provided that 'whenever a patent on application shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent,' the applicant might have remedy by bill in equity; and the court might adjudge the applicant entitled to a patent, according to his claim or any part of it. Adjudication favorable to the applicant was to 'authorize the Commissioner to issue such patent' on the applicant's filing a copy of the adjudication 'and [325 U.S. 79, 85] otherwise complying with the requisitions of this act.' 8 It will be noted that a bill might be filed under this statute only where the rejection of a claim was for interference with an outstanding patent. By the Act of March 3, 1837,9 the same remedy was afforded an applicant for patent for an improvement or for 'correction and re-issue.'
By the Act of March 3, 1839,10 the same remedy was extended 'to all cases where patents are refused for any reason whatever, either by the Commissioner of Patents or by the chief justice of the District of Columbia, upon appeals from the decision of said Commissioner,' as well as where the refusal was based on asserted interference. The reason for adding the phrase concerning the decision of the Chief Justice was that, by Sec. 1111 of the same Act, a summary appeal on the Patent Office record to this judicial officer was substituted for the former appeal to a board of examiners given by the Act of 1836.12
Thus a District Court might set aside, on bill filed, any ruling refusing a patent, either on interference or otherwise, whether the ruling were that of the Patent Office or of a judge of the Circuit Court of the District of Columbia on appeal from the Patent Office decision.
The Act of July 8, 1870,13 amended, revised, and consolidated existing law. In Sec. 4814 it enacted that in ex parte cases an applicant for patent or reissue whose claims had been twice rejected might appeal to the Supreme Court of the District of Columbia. The hearing was to be summary, to be on the office record, and the decision [325 U.S. 79, 86] was to 'govern the further proceedings in the case.' 15 In Sec. 52 it provided that whenever a patent on application 'is refused, for any reason whatever', either by the Commissioner or by the Supreme Court of the District upon appeal, the remedy by bill in equity should be available. The adjudication was to authorize the issue of a patent on the applicant's filing a copy in the patent office 'and otherwise complying with the requisitions of law.' This statute was construed to require an appeal to the District Supreme Court as a condition procedent to the maintenance of a bill in equity. 16
The provisions of the Act of 1870 were codified in the Revised Statutes of 1873.17 In the process the words 'for any reason whatever' were deleted from Sec. 52, which became R.S. 4915. The omission was evidently because the words were surplusage, since the purpose of the revisers was not 'to attempt any change whatever in the existing law' except 'mere changes of phraseology not affecting the meaning of the law.'