DECISIONS OF THE UNITED STATES COURTS IN PATENT CASES FOR THE YEAR 1918. [Supreme Court of the District of Columbia.] UNITED STATES OF AMERICA, ex rel. JOHNSON, v. EWING, COMMIS SIONER OF PATENTS. Decided May 8, 1918. 256 O. G., 451. 1. MANDAMUS DOES NOT LIE WHERE NO LEGAL INJURY IS SHOWN. Where after a number of motions and appeals in an interference in which the relator was involved a decision on priority adverse to certain parties was entered and thereafter the Commissioner dissolved the interference as to these parties, Held that mandamus would not issue to compel him to set aside his action and proceed to a judgment of priority, since the relator had sustained no legal personal injury by such action. 2. SAME DISCRETIONARY ACTION OF THE COMMISSIONER NOT CONTROLLED BY. Where after a judgment of priority had been entered in an interference the Commissioner vacated that order and dissolved the interference as to certain of the parties, Held that his action involved the exercise of judgment and discretion and cannot be controlled by mandamus. Mr. John M. Coit and Mr. Albert H. Graves for the plaintiff. Mr. A. C. Paul, Messrs. Macleod, Calver, Copeland & Dike, and Messrs. Emery, Booth, Janney & Varney amici curiæ. GOULD, J.: The determining facts, as gathered from the record, are as follows: On June 21, 1911, the petitioner, Johnson, filed an application for patent for an improvement in union-suits. On February 2, 1913, the 84150°-19-9 93 application was placed in interference with applications of Lewis, Rosenthal, and Boyer. The preliminary statements of these four parties showed that Johnson alleged conception of the invention in the early part of April, 1910, while the other three alleged prior dates. Lewis filed a motion to dissolve the interference on several grounds, including non-patentability of the issue in view of several prior patents. The Primary Examiner held the issue unpatentable and dissolved the interference. On appeal by Johnson, the Board of Examiners-in-Chief reversed the Primary Examiner, and reinstated the interference. When the case came back to the Primary Examiner, the latter, accepting the construction of the issue given by the Board, added to the interference sixteen new parties, among whom were Rood, Chatfield, and Perkins. Chatfield and Rood filed their statements which showed the dates of their inventions to be subsequent to relator's (Johnson) filing date. On February 2, 1914, the Examiner of Interferences issued a rule to show cause within thirty days why judgment should not be entered against them. On March 4, 1914, in answer to this rule, they filed motions to dissolve, alleging among other things that the issue was unpatentable, and that relator had no right to make the claims. On June 2, 1914, the Examiner denied the motions to dissolve, holding the claims patentable, and the Examiner of Interferences entered judgment of priority under date of June 12, 1914. They appealed from the final judgment on July 13, 1914, and on July 28, 1914, the Examiners-in-Chief affirmed the judgment. On August 28, 1914, Chatfield and Rood filed an appeal to the Commissioner from this last decision as a result of which the Commissioner remanded the interference to the Examiners-in-Chief, to hear arguments upon the patentability of the issue. In connection with these appeals, they filed a petition claiming that they had not received an unbiased hearing on their motions, alleging that the claims of the issue were unpatentable in view of the Hill patent, but that the Examiner in denying that motion felt bound by the previous decision of the Examiners-in-Chief on the Lewis motion. With regard to this petition, the Commissioner said: I think the parties are entitled to a hearing on the question of patentability in spite of the holding of the Primary Examiner in favor of patentability, from which no appeal lies. The Board of Examiners-in-Chief, on March 12, 1915, denied the motions of Chatfield and Rood to dissolve, and held the issue patentable. Their reasons are not without significance in view of subsequent actions in the case. They said: The parties, Rood and Chatfield, do not seriously contend that the issue of the interference is unpatentable if given the construction which we have They do placed upon it in holding the Hill patent not to be an anticipation. urge, however, that the Primary Examiner evidently placed a broader construction than ourselves upon the counts when he added to the interference Chatfield and Rood and certain other parties, particularly Perkins and Stevens. They make this argument because they assert that they believe the constructions of the added parties in question, including their own, to be substantially identical with the construction of Hill, in so far as the features thereof are relevant to the subject matter of the counts. They say that if the patent to Hill is not a reference for the counts, as we have held, then certain designated parties to the contest should be eliminated, for their constructions are practically identical with the construction of Hill. Our conclusion that the issue is a comparatively narrow one may logically lead to a further conclusion that certain of the parties should be excluded from the interference. Relator's Ex. No. 1.) Thereupon, on April 3, 5, and 6, 1915, Chatfield, Rood, and Perkins filed motions before the Examiner of Interferences to dissolve the interference on the ground, in each case, that the moving party had no right to make the claims of the issue. Each motion specifies the particulars in which his construction differs from Johnson's, as the latter is construed by the Board of Examiners-in-Chief; and each gives as the reason for bringing the motion at that time the decision of the Board of Examiners-in-Chief above quoted. These motions were transmitted to the Law Examiner, with the approval of the Commissioner. Johnson, the relator, then filed an appeal to the Commissioner from the action of the Examiner of Interferences in transmitting the motions of Chatfield et al. to the Law Examiner, and, also, a petition in which the Commissioner was asked to exercise his "supervisory authority" to set aside the action of the Examiner of Interferences in so transmitting the motions aforesaid. On March 24, 1915, the Commissioner rendered a decision in which he stated that he would hear the motions of Chatfield, Rood, and Perkins. Following this hearing the Commissioner rendered an opinion on June 25, 1915, in which he denied the motion of Johnson, the relator, to dismiss the motions to dissolve, set aside the interference as to Chatfield, Rood, and Perkins. In the course of his opinion he said: There are many parties to this interference, some of whom, among them Rood, Chatfield, and Perkins, were added after the interference was declared. One of the original parties moved to dissolve on the ground that the issues were not patentable over the patent to Hill, No. 642,227. The Primary Examiner held the issue to be unpatentable. On appeal by Johnson, the Examinersin-Chief reversed the Primary Examiner. Their opinion did not make clear the theory upon which the claims were distinguishable from Hill. The Primary Examiner thereupon included the additional parties, above referred to in the interference; among these additional parties, Rood, Chatfield, and Perkins moved to dissolve on the ground that the issues were not patentable over Hill, and I sent the motion to the Examiners-in-Chief to be heard. In the opinion of the Examiners-in-Chief upon the second hearing, the Johnson structure as defined in the issue was distinguished from the Hill structure. I have not reconsidered the question of patentability and accept the conclusion of the Examiners-in-Chief both as to the issue being patentable and as to the difference of structure upon which patentability rests. These parties having been brought into the interference at a time when the Examiner was placing a broad construction on the issues, urged that the issues were unpatentable and that Johnson had cut himself off from contending for a construction sufficiently narrow to exclude Hill. The Examiners-in-Chief having held against them on this point, they now argue that on the narrow construction set forth by the Examiners-in-Chief they do not fall within the terms of the issue. While their proceedings may not be strictly consistent throughout, it seems to me that the modification of the construction placed upon the issue by the Office relieves them and that to deny them the right to present the contention now urged would be inequitable. The motion by Johnson to dismiss the petitions is overruled. The judgments of record against Chatfield and Rood are set aside, and the interference is dissolved as to the parties, Perkins, Chatfield, and Rood. The relator, Johnson, upon this record seeks the writ of mandamus. to compel the Commissioner of Patents to set aside his action dissolving the interference as to the parties Chatfield, Rood, and Perkins and to proceed to a judgment of priority in the interference. The writ is refused on two grounds: 1st. The relator Johnson, has not sustained a legal personal injury by the action of the Commissioner. The case of Seymour v. Brodie (C. D., 1897, 372; 79 O. G., 509; 10 App. D. C., 567) is quite similar in its facts to the instant case. In that case a patent was issued to one Brodie. Later, one Coburn filed an application in the Patent Office for a patent for substantially the device covered by Brodie's patent. An interference was declared. This took its usual course until it reached the Commissioner, who dissolved the interference. Brodie thereupon petitioned this court for a writ of mandamus to require the Commissioner to reinstate the interference proceedings and to decide the question of priority. In the opinion of the court of appeals it is stated: Without entering into the merits of the controversy, we are unable to see wherein the relator is entitled to the writ of mandamus. Indeed, it is very clear to us that he is not entitled to it under the showing made in his petition. The function of the writ of mandamus in the law is well settled. It lies simply for the enforcement of the performance of some act or duty required by law to be performed, in the performance of which the applicant for the writ is interested, or by the non-performance of which he is aggrieved or injured, and when there is no other specific legal remedy. (Citing authorities.) But we fail to see wherein, in the present case, the relator is interested in contemplation of law, or wherein he has been deprived of any legal right, or wherein the respondent has failed in the performance of any legal duty due to him. He had a patent. He has that patent not legally impaired. Attack was made upon that patent by the adverse claim of another party. The attack took the shape of interference proceedings in the Patent Office, in accordance with the forms and provisions of law. Those interference proceedings have been dissolved and the attack is at an end. The relator remains in full possession of all his legal rights to the same extent as before he was summoned to defend those rights. We find it impossible to see wherein he has been aggrieved or injured in any legal sense. Nor is it apparent to us how, in a legal sense, it could benefit the relator to have the action of which he seeks the performance. If a reinstatement of the interference were ordered, the results would be necessarily either that the Commissioner would hold that he was not the original inventor of the device in controversy, and that this court likewise would so hold, or else that judgment of priority might finally be awarded in his favor; but certainly the first alternative would not benefit him, and the second would not place him in any better position legally than that in which he is now. His patent would simply be sustained against the attack upon it. By the action already taken by the Commissioner it has been so sustained. He has suffered no legal injury whatever. So in the instant case, any right to a patent which he may have is exactly the same as it was before the parties Chatfield, Root, and Perkins were added to the interference. An attack was made upon his right to the patent by the addition of these parties to the interference. They have now been removed and the attack is at an end. Clearly, therefore, the relator, Johnson, has suffered no legal injury. 2d. The actions of the Commissioner complained of involved the exercise of judgment and discretion. Since the instant case was argued, the Supreme Court has handed down an opinion which seems conclusive upon the question involved. (Ewing v. United States, ex rel. The Fowler Car Company, C. D., 1917, 409; 238 O. G., 983; 244 U. S., 1.) Fowler had on file an application for a patent relating to car-floor construction. There was another application pending claiming substantially the same invention as that defined in certain claims of Fowler. The Commissioner refused to declare an interference. In sustaining his refusal, the Supreme Court said: Section 4904 Rev. Stats. provides: "Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with an 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 the 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." Priority of invention is necessarily the essential thing, and to determine it interference proceedings are provided. But are they considered as a matter of course on the mere assertion or appearance of a conflict? Upon the answer to the question the controversy here turns. The Commissioner contends for a |