son commenced suit in the District Court of the United States for the District of Columbia, under section 4915 R. S., and joined with him, as plaintiff, the Texas Company, his assignee, and joined, as defendants, Wayne, Cannon, and the Standard Oil Development Company; and Robinson alleged in his complaint that the latter company presently owned the Cannon application; and it appeared that Cannon and Wayne resided in Houston, Texas, but that the Standard Oil Development Company was incorporated in Delaware, and had a place of business in the Southern District of New York, Held that the Standard Oil Development Company was an adverse party; that it did appear from Robinson's complaint that there were adverse parties to the suit, residing in a plurality of districts not embraced within the same state, as required by 35 U. S. C. A. § 72a; and that the District Court of the United States for the District of Columbia had jurisdiction of the suit.

2. SAME-SAME.

"We have no doubt that one who is the 'the present owner of the title' to one of the applications which were joined in an interference proceeding is an adverse party, within the meaning of the statute, when joined as a party in a section 4915 proceeding to challenge the decision of the Patent Office."

3. SAME SAME APPEARANCE OF ADVERSE PARTY NOT REQUIRED.

"The statute does not require that the adverse parties appear; neither does it make jurisdiction depend upon appearance. It provides, simply, that if, upon the filing of a bill, it shall appear that there are adverse parties residing in a plurality of districts not embraced within the same state, the court shall have jurisdiction thereof. Obviously, the purpose of the statute is to make jurisdiction depend upon the situation which is revealed by the complaint. If the party upon whom the court's jurisdiction depends was, at that time, actually an adverse party, within the meaning of the statute, that is sufficient. If he chooses, thereafter, to default, that does not deprive the court of jurisdiction."

4. SAME SAME AMENDMENT OF COMPLAINT TO INCLUDE EXCLUSIVE LICENSEE.

"When Wayne's appearance in the district court revealed that Visco Products Company is the exclusive licensee under Wayne's application, and that Visco is a resident of Delaware, appellants were entitled to join that company as a defendant. Their motion to amend should, therefore, have been granted." 5. SAME SAME PURPOSE OF 35 U. S. C. A. § 72a.

"The purpose of the statute is to make possible the adjudication of all issues involved, between all adverse parties, in one proceeding and in one forum. The District of Columbia was selected by Congress as being the forum in which this fundamental objective of equity can best be achieved, when adverse parties reside in a plurality of districts not within the same state. That prerequisite having been satisfied in the present case, the district court for the District of Columbia has jurisdiction."

APPEAL from the District Court of the United States for the District of Columbia. Reversed.

Mr. Benjamin B. Schneider (Mr. Lee B. Kemon of counsel) for Robinson, Jr.; The Texas Company.

Mr. John H. Sutherland (Messrs. John H. Bruninga and Charles E. Riordon of counsel) for Wayne et al.

Before PARKER, Circuit Judge, sitting by designation, and MILLER and EDGERTON, Associate Justices.

MILLER, A. J.:

The important question of this appeal is whether it appeared from appellant's complaint in the district court that there were adverse parties to the suit, residing in a plurality of districts not embraced within the same state. Following a three-party interference proceeding in the Patent Office, priority was awarded to appellant Robinson on two counts, and to appellee Wayne, on fifteen of the seventeen counts involved in the proceeding. Cannon, the third applicant, received no award. Robinson then commenced suit in the district court, under Revised Statutes section 4915,2 joining with him, as plaintiff, The Texas Company, his assignee; and joining, as defendants, Wayne, Cannon, and the Standard Oil Development Company; which company, the complaint alleged, is the present owner of the Cannon application. Cannon resides in Houston, Texas, as does Wayne. Standard was incorporated in Delaware, and has a place of business in the Southern District of New York. If Standard is an adverse party, within the meaning of the statute, then the district court had jurisdiction, and appellants must succeed on this appeal.

The Court of Appeals for the Second Circuit has decided the question favorably to appellants' contention, in the case of Nachod & United States Signal Co. v. Automatic Signal Corporation. But the trial judge, in the present case, decided in favor of the appellees, basing his decision expressly upon the dissenting opinion in the Nachod case. In our view, the position taken in the majority opinion in that case was correct; and we rest our decision, in part, upon its reasoning.

[1] [2] In addition, we note that the allegations of the complaint in the present case bring it even more clearly within the language of the applicable statute than was true in the Nachod case. There the question turned on the adverse interest of an exclusive licensee. Here the complaint alleged that Standard "is the present owner of the title to said application." The distinction is especially significant in that the dissenting judge recognized it in his opinion in the Nachod case, apparently conceding that an assignee or owner of an application is an adverse party.

We have no doubt that one who is "the present

135 U. S. C. A. § 72a: "Upon the filing of a bill in the District Court of the United States for the District of Columbia wherein remedy is sought under section 63 or section 66 of this title, without seeking other remedy, if it shall appear that there is an adverse party residing in a foreign country, or adverse parties residing in a plurality of districts not embraced within the same state, the court shall have jurisdiction thereof 44 Stat. 1394, 49 Stat. 1921.

135 U. S. C. A. § 63.

$35 U. S. C. A. § 72a.

105 F. (2d) 981.

$105 F. (2d) 981, 984: "For years it has been the practice for an applicant who has been defeated in interference proceedings in the Patent Office to bring suit under this statute, making the person who won the interference proceeding or his assignee the party defendant. See Morgan v. Daniels, 153 U. S. 120, 14 S. Ct. 772, 38 L. Ed. 657, Prior to

owner of the title" to one of the applications which were joined in an interference proceeding is an adverse party, within the meaning of the statute, when joined as a party in a section 4915 proceeding to challenge the decision of the Patent Office."

[3] The point is made, also, that, as Cannon and Standard Oil Development Company did not appear and answer the complaint, there was actually no adversity of parties. However, the statute does not require that the adverse parties appear; neither does it make jurisdiction depend upon appearance. It provides, simply, that if, upon the filing of a bill, it shall appear that there are adverse parties residing in a plurality of districts not embraced within the same State, the court shall have jurisdiction thereof. Obviously, the purpose of the statute is to make jurisdiction depend upon the situation which is revealed by the complaint. If the party upon whom the court's jurisdiction depends was, at that time, actually an adverse party, within the meaning of the statute, that is sufficient. If he chooses, thereafter, to default, that does not deprive the court of jurisdiction. [4] When Wayne's appearance in the district court revealed that Visco Products Company is the exclusive licensee under Wayne's application, and that Visco is a resident of Delaware, appellants were entitled to join that company as a defendant. Their motion to amend should, therefore, have been granted.

[5] The purpose of the statute is to make possible the adjudication of all issues involved, between all adverse parties, in one proceeding and in one forum.8 The District of Columbia was selected by Congress as being the forum in which this fundamental objective of equity can. best be achieved, when adverse parties reside in a plurality of districts not within the same state. That prerequisite having been satisfied

the Parker Rust Proof Co. case it had not been suggested that an exclusive licensee under the adverse patent must also be joined as a defendant. The suit is ordinarily brought in the district whereof the owner of the prevailing application is an inhabitant, [Italics supplied.]

Hazeltine Corporation v. White, E. D. N. Y., 2 F. Supp. 94, aff'd 68 F. (2d) 715; see Muskrat v. United States, 219 U. S. 346, 357, 361; Old Colony Trust Co. v. Commissioner of Internal Revenue, 279 U. S. 716, 724; Wood-Paper Co. v. Heft, 75 U. S. 333, 336; Cleveland v. Chamberlain, 66 U. S. 419, 426. Cf. Coe v. Hobart Mfg. Co., 70 App. D. C. 2, 3, 102 F. (2d) 270, 271, 502 O. G. 3: "It is contended that the Commissioner, if not a necessary party, is at least a proper and therefore an adverse party. But even if he were a proper party to a suit to review his award of priority, we think he would not be 'adverse' within the meaning of the statute. The Commissioner has not the slightest interest adverse to plaintiff; whether plaintiff or defendant gets a patent, the Commissioner neither gains nor loses." [Italics supplied.]

Hart v. B. F. Keith Vaudeville Exchange, 262 U. S. 271, 273: "The jurisdiction of the district court is the only matter to be considered on this appeal. That is determined by the allegations of the bill, and usually if the bill or declaration makes a claim that if well founded is within the jurisdiction of the court it is within that jurisdiction whether well founded or not."; Geneva Furniture Co. v. Karpen, 238 U. S. 254, 258-9, 217 O. G.

1343.

& Underwood, Intereference Practice (1928) § 164, pp. 418-419.

in the present case, the district court for the District of Columbia has jurisdiction. The case will be remanded, therefore, with instructions to proceed consistently with this opinion.

Reversed.

[U. S. Court of Appeals for the District of Columbia]

VIETTI ET AL. v. WAYNE ET AL.

No. 8,235. Decided May 29, 1943

553 O. G. 770; 136 F. (2d) 769

1. SUIT UNDER SECTION 4915 R. S.-JOINDER OF DEFENDANTS IN CONFORMITY WITH 35 U. S. C. A. § 72a.

Where three applications, that of Wayne (under which Visco Products Company is an exclusive licensee), that of Vietti and Garrison (assigned to The Texas Company), and that of Cannon (assigned to Standard Oil Development Company), were included in an interference proceeding; and the U. S. Patent Office awarded priority to Wayne on six counts, to Vietti and Garrison on one, and to Cannon on one Held that Cannon and the Standard Oil Development Company properly were joined with Wayne, as parties defendant, in a suit under section 4915 R. S., brought by Vietti et al. in the District Court of the United States for the District of Columbia, in conformity with 35 U. S. C. A. § 72a. 2. SAME

SAME,

"The fact that certain defendants may be sued separately does not necessarily require that they be sued separately. The very purpose of the applicable statute in the present case is to permit the bringing together, in one proceeding, of all parties whose interests are adverse; whether their adversity arises out of interfering patents or because they were adverse parties in an interference proceeding; in order that the interests of all may be determined. For this purpose the controversy is inseparable."

3. SAME-SAME.

"The important consideration is not, as appellees contend, what the Patent Office awarded at the conclusion of the interference proceeding. It is, instead, what the parties to the interference claimed. Appellants claimed, and alleged in their complaint in the district court, that Vietti and Garrison are the 'original, first, and joint inventors of the subject matter of said interference as defined in the above counts.' * In the prayer of their complaint they asked the district court to decree that they are the first inventors of the subject matter of all counts. The case is one which comes clearly within the statute, and the district court had jurisdiction of it."

APPEAL from the District Court of the United States for the District of Columbia. Reversed.

Mr. Benjamin B. Schneider (Mr. Lee B. Kemon of counsel) for Vietti et al. Mr. John H. Sutherland (Messrs. John H. Bruninga and Charles E. Riordon of counsel) for Wayne et al.

Before PARKER, Circuit Judge, sitting by designation, and MILLER and EDGERTON, Associate Justices

MILLER, A. J.:

This is a companion case to No. 8,236, Robinson et al. v. Wayne et al., decided this day. It involves the same fundamental question concerning adverse parties. For the reasons set out in our opinion in that case, our decision is the same in the present case, for far as it involves that question. In this case, however, there is an additional question, which arises out of the following facts: The interference proceeding in the Patent Office involved eight counts; upon an application of Wayne, under which Visco is an exclusive licensee; and application of Vietti and Garrison, assigned to The Texas Company; and an application of Cannon, assigned to Standard Oil Development Company. The award of the Patent Office was to Wayne on six counts; to Vietti and Garrison on one count, and to Cannon on one count.

Appellees contend that the count awarded to Cannon and Standard is for subject matter separable from the subject matter of the remaining counts; that Cannon and Standard have, at most, an interest which is separable from that of Wayne, and should not be joined in the same suit with Wayne, as parties defendant. The theory of this contention is that every claim in an application for patent represents a separate invention; that in controversies concerning such claims each claim involves a separate controversy; and that separable controversies are wholly determinable between the parties thereto.

2

[1] [2] While each of the propositions asserted, standing alone, is correct for certain purposes, the result contended for by appellees does not follow. The fact that certain defendants may be sued separately does not necessarily require that they be sued separately.1 The very purpose of the applicable statute in the present case is to permit the bringing together, in one proceeding, of all parties whose interests are adverse; whether their adversity arises out of interfering patents or because they were adverse parties in an interference proceeding; in order that the interests of all may be determined. For this purpose the controversy is inseparable."

3

[3] The important consideration is not, as appellees contend, what the Patent Office awarded at the conclusion of the interference proceeding. It is, instead, what the parties to the interference claimed. Appellants claimed, and alleged in their complaint in the district. court, that Vietti and Garrison are the "original, first, and joint inven

1 Pullman Co. v. Jenkins, 305 U. S. 534, 538. See also, Geneva Furniture Co. v. Karpen, 238 U. S. 254, 258-9, 217 O. G. 1343.

U. S. C. A. § 72a, 44 Stat. 1394, 49 Stat. 1921.

3 35 U S. C. A. § 66.

+35 U. S. C. A. § 63.

Hazeltine Corp. v. White, 2 Cir., 68 F. (2d) 715, 716–717.