Professional Documents
Culture Documents
Frasch v. Moore, 211 U.S. 1 (1908)
Frasch v. Moore, 211 U.S. 1 (1908)
1
29 S.Ct. 6
53 L.Ed. 65
Section 8 of the act of February 9, 1893 (27 Stat. at L. 434, 436, chap. 74, U. S.
Comp. Stat. 1901, p. 573), provides:
'That any final judgment or decree of the said court of appeals may be reexamined and affirmed, reversed, or modified by the Supreme Court of the
United States, upon writ of error or appeal, in all causes in which the matter in
dispute, exclusive of costs, shall exceed the sum of five thousand dollars, in the
same manner and under the same regulations as heretofore provided for in
cases of writs of error on judgment or appeals from decrees rendered in the
supreme court of the District of Columbia; and also in cases, without regard to
the sum or value of the matter in dispute, wherein is involved the validity of
any patent or copyright, or in which is drawn in question the validity of a treaty
or statute of or an authority exercised under the United States.'
3
The decision of the court of appeals sought to be reviewed in the present case is
not final, but merely ended an interlocutory stage of the controversy, and sent
the applicant back to the Patent Office to conform to the meaning and effect of
the rule on division of claims as construed by the Commissioner of Patents, and
to pursue the application in the form required to allowance or rejection.
Section 780 of the Revised Statutes of the District of Columbia reads thus:
'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 sections forty-nine hundred and eleven to
section forty-nine hundred and fifteen, inclusive, of chapter one, title 60, of the
Revised Statutes (U. S. Comp. Stat. 1901, pp. 3391, 3392), 'Patents,
Trademarks, and Copyrights." Section 9 of the 'Act to Establish a Court of
Appeals for the District of Columbia, and for Other Purposes,' approved
February 9, 1893 (27 Stat. at L. 434, 436, chap. 74, U. S. Comp. Stat. 1901, p.
3391), is:
Thus, the special jurisdiction of the District supreme court in patent appeals
was transferred to and vested in the court of appeals, and decisions in
interference cases were also made appealable, which had not been previously
the case. Rev. Stat. 4911. The law applicable is 4914, Revised Statutes,
which provides:
'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.'
10
11
The final decision referred to is obviously the judicial decision on the bill in
equity, while in interference cases and in all others going up from the
Commissioner to the Court of Appeals there is no final judgment in the cause,
but one interlocutory in its nature, and binding only upon the Commissioner, 'to
govern the further proceedings in the case.' The opinion or decision of the
court, reviewing the Commissioner's decision, is not final, because it does not
preclude any person interested from contesting the validity of the patent in
court; and, if the decision of the Commissioner grants the patent, that is the end
of the matter as between the government and the applicant; and if he refuses it,
and the court of appeals sustains him, that is merely a qualified finality, for, as
we have seen, the decision of that court may be challenged generally and a
refusal of patent may be reviewed and contested by bill as provided.
12
The appeal given to the court of appeals of the District from the decision of the
In Rousseau v. Brown, 21 App. D. C. 73, 80, which was an appeal from the
Patent Office in the matter of an interference between two applications, the
court affirmed the decision of the Commissioner of Patents, ruling against one
of the claims on the ground that priority of invention must be awarded to the
other claimant, declined to allow a writ of error or appeal, and said, through
Chief Justice Alvey:
14
'There is no final judgment of this court rendered in such cases, nor is there any
such judgment required or authorized to be rendered, not even for costs of the
appeal. This court is simply required in such cases, after hearing and deciding
the points as presented, instead of entering judgment here, to return to the
Commissioner of Patents a certificate of the proceedings and decision of this
court, to be entered of record in the Patent Office, to govern the further
proceedings in the case. But it is declared by the statute that no opinion of this
court in any such case shall preclude any person interested from the right to
contest the validity of any patent that may be granted by the Commissioner of
Patents. D. C. Rev. Stat. 780, U. S. Rev. Stat. 4914.
15
16
17