DECISIONS

OF THE

COMMISSIONER OF PATENTS,

FOR

THE YEAR 1896.

HOPKINSON. HUNTER.

Decided January 27, 1896.

74 O. G., 653.

1. INTERFERENCE BETWEEN PATENT AND APPLICATION BAR TO GRANT OF PATENT TO APPLICANT-APPEAL DISMISSED.

During the pendency of appeal in an interference between a patentee and an applicant it conclusively appeared that it is not possible in any contingency to issue a patent to the applicant. Held that the appeal should be dismissed without deciding the question of priority.

2. SAME-SAME.

The Commissioner has no power to determine the question of priority between contestants except they be applicants for patents or except one of them be an applicant to whom, if he should prevail, a patent might at the time of the decision be properly issued. (Bourne v. Goodyear, 9 Wall, 811; Mills v. Green, 16 S. C. R., 132; Cheong Ah Moy v. United States, 113 U. S., 216; Dakota Co. v. Glidden, 113 U. S., 222.)

APPEAL from the Examiners-in-Chief.

ELECTRIC RAILWAY.

Application of John Hopkinson filed July 23, 1892, No. 440,989. Patent granted to Rudolph M. Hunter June 26, 1888, No. 385,055.

Mr. Chas. A. Terry and Mr. H. S. Mackaye for Hopkinson.

Mr. R. M. Hunter, pro se.

SEYMOUR, Commissioner.

This case comes up on appeal by Hunter from the decision of the Examiners-in-Chief awarding priority of invention to Hopkinson.

Hunter's application for a patent upon the subject matter of this dispute was filed in the United States Patent Office February 24, 1888, and the patent involved in this interference was issued to him June 26, 1888.

H. Doc. 354.

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July 23, 1892, Hopkinson made application here for a patent upon the same improvement. He had filed a provisional specification in the British Patent Office on July 7, 1881, eleven years before, and a complete specification on January 7, 1882, upon which a patent was granted him for this invention and other allied inventions for fourteen years from the 7th day of July, 1881, and this British patent to Hopkinson expired by the lapse of its full term on July 7, 1895, and before the appeal in this case was taken. Hopkinson's British patent and his application in interference are for the same subject-matter, except that the British patent contains other and further applications of the invention not permissible under our practice.

By section 4887 of the Revised Statutes of the United States every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, and Hopkinson is therefore now in the position of one to whom it is not possible in any contingency to issue a patent for this invention in this country. On the other hand, Hunter has a patent which is beyond the control and jurisdiction of this Office.

Interference cases in the Patent Office are authorized and controlled by section 4904 of the Revised Statutes, which is as follows:

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.

The fair construction of this statute appears to authorize the Commissioner to determine the question of priority when he may issue a patent to one of the parties, if adjudged the prior inventor, and to warrant the conclusion that he may not determine that question whenever it has been judicially ascertained in the Patent Office or whenever it appears conclusively from the record in the case that no patent can issue as the result of the proceeding to any person.

It is the established practice in the Patent Office, once an interference has been declared, to proceed to the final determination of the question of priority before entering upon the investigation of any other question or of any statutory bar to the grant of a patent to him who may be adjudged the prior inventor. Full effect is given and intended to be given to these precedents where applicable, and yet it is now necessary to consider a record which upon its face shows that a patent has been issued to one of the contestants and that no patent can possibly issue to the other.

It is recognized that it would be convenient for the parties to have the question of priority determined now, with whatever force attaches

to the deliberate conclusions of the Patent Office, and it is also recognized that with the decision of the Board of Examiners-in-Chief against priority to Hunter an unfavorable side-light is thrown upon his unexpired patent for this invention; and in a matter within the discretion of this Office these considerations would warrant the exercise of that discretion in favor of terminating the dispute, not only in the interest of the parties, but of the public as well.

In Morgan v. Daniels (C. D., 1894, 285; 67 O. G., 811; 153 U. S., 120) it is held that the decisions of the Patent Office must be accepted as controlling in any subsequent suit between the parties, unless the contrary is established by testimony which in character and amount carries thorough conviction; and it is on account of the weight attaching to its decisions that the parties, or one of them, seek for the final determination of the Office upon this question; but to have such force, or any force, the conclusions of the Office must be reached upon a matter within its jurisdiction.

Upon the most careful deliberation it is concluded that the Commissioner has no power to determine the question of priority between contestants except they be applicants for patents or except one of them be an applicant to whom, if he should prevail, a patent might at the time of the decision be properly issued.

Some support for this doctrine may be found in the case of Bourne v. Goodyear, (9 Wall., 811.) In that case the Court said:

The extension having expired before the bill was filed, there is no equity to support the application to set it aside. The extension has ceased to be of any effect, and there remains nothing which can be the subject of a suit. The demurrer to the bill, therefore, must be sustained, and the decree of the circuit court by which the bill was dismissed must be affirmed.

In the case of Mills v. Green, in the Supreme Court of the United States, (not yet reported, but decided November 25, 1895, and found in the 16 Supreme Court Reporter, 132,) an appeal had been taken from a decree dismissing a bill the object of which was to secure a right to vote at an election of delegates at a State constitutional couvention. The defendant moved to dismiss the appeal, assigning as one ground of his motion that there was then no actual controversy involv ing real and substantial rights between the parties to the record and no subject-matter upon which the judgment of the Court could operate. The Court dismissed the appeal upon that ground, without considering any other question bearing on the record or discussed by counsel, and in the course of the opinion remarked:

The duty of this Court, as of every other judicial tribunal, is to decide actual controversies by a judgment which can be carried into effect, and not to give opinions upou moot questions or abstract propositions, or to declare principles or rules of law which cannot affect the matter in issue in the case before it. It necessarily follows that when, pending an appeal from the judgment of a lower court, and without any fault of the defendant, an event occurs which renders it impossible for this Court, if it should decide the case in favor of the plaintiff, to grant him any actual

relief whatever, the Court will not proceed to a formal judgment, but will dismiss the appeal. And such a fact, when not appearing on the record, may be proved by extrinsic evidence. (Lord v. Feazie, 8 How., 251; California v. San Pablo § T. R. Co., 149 U. S., 308; 13 Sup. Ct., 876.)

In the case of Cheong Ah Moy v. United States (113 U. S., 216) the plaintiff in error was a Chinese woman who was not permitted to land by reason of the acts of Congress of May 6, 1882, and the amendatory act of 1884, and, being forcibly kept on board the vessel, sued out a writ of habeas corpus to obtain her release. On a hearing in the Circuit Court it was ordered that she be returned on board the vessel in which she came or some other vessel of the same line, to be carried back to China, and she was placed in the custody of the marshal, who was directed to execute the order. While she was in jail for safe keeping her counsel applied to the Circuit Court for permission to give bail and have her released from custody. The judges of the Circuit Court were oposed in opinion on the question of granting this motion, and having overruled it, certified the division to the Supreme Court of the United States. In the meantime it was made to appear to the Supreme Court, by the return of the marshal and by affidavits, that three days after the order was made overruling the motion and ten days before the writ of error was served the marshal had executed the original order of the Court by placing the prisoner on board another vessel, and that she had departed. The Court dismissed the writ of error and observed:

The question, therefore, which we are asked to decide is a moot question as to plaintiff in error, and if she was permitted to give bail it could be of no value to her, as the order by which she was remanded has been executed, and she is no longer in the custody of the marshal or in prison. This court does not sit here to decide questions arising in cases which no longer exist, in regard to rights which it cannot enforce.

In Dakota County v. Glidden (113 U. S., 222) the suit was on county bonds issued in aid of a railroad. Judgment below was rendered for the plaintiff, whereupon the defendant brought a writ of error to reverse it. Subsequent to the judgment the county settled with the plaintiff and other bondholders by giving them new bonds bearing a less rate of interest, and the old bonds, which were the cause of action in the case, were surrendered and destroyed. A motion was made to dismiss the writ of error, which was granted, and the Court said of the intervening transaction:

It is a valid compromise and settlement of a much larger claim, but it includes this judgment necessarily. It extinguishes the cause of action in this case. If valid, it is a bar to any prosecution of the suit in the circuit court, though we should reverse this judgment on the record as it stands for errors which may be found in it. To examine these errors and reverse the judgment is a fruitless proceeding, because when the plaintiff has secured his object the relation of the parties is unchanged, and must stand or fall on the terms of the compromise.

It is said that to recognize this compromise and grant this motion is to assume original instead of appellate jurisdiction.