# United States Bernardin v. Duell

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United States Supreme Court
172 U.S. 576
United States Bernardin v. Duell
In an interference proceeding in the patent office between Bernardin and Northall, the commissioner, Seymour, decided in favor of Bernardin, whereupon Northall prosecuted an appeal to the court of appeals of the District of Columbia. That court awarded Northall priority, and reversed the commissioner's decision. 7 App. D. C. 452. Bernardin, notwithstanding, applied to the commissioner to issue the patent to him, and tendered the final fee; but the commissioner refused to do this, in view of the decision of the court of appeals, which had been duly certified to him. Bernardin then applied to the supreme court of the District of Columbia for a mandamus to compel the commissioner to issue the patent in accordance with his prior decision, on the ground that the statute providing for an appeal was unconstitutional, and the judgment of the court of appeals void for want of jurisdiction. The application was denied, and Bernardin appealed to the court of appeals, which affirmed the judgment. 10 App. D. C. 294.
Seymour resigned as commissioner, and was succeeded by Butterworth; and Bernardin recommenced his proceeding, which again went to judgment in the supreme court, and the court of appeals. 11 App. D. C. 91. The case was brought to this court, but abated in consequence of the death of Butterworth. 169 U.S. 600, 18 Sup. Ct. 441. Bernardin thereupon brought his action against Duell, Butterworth's successor; and judgment against him was again rendered in the District supreme court, that judgment affirmed by the court of appeals, and the cause brought here on writ of error.
The following sections of the Revised Statutes were referred to on the argument:
'Sec. 4906. The clerk of any court of the United States, for any district or territory wherein testimony is to be taken for use in any contested case pending in the patent office, shall, upon the application of any party thereto, or of his agent or attorney, issue a subpoena for any witness residing or being within such district or territory, commanding him to appear and testify before any officer in such district or territory authorized to take depositions and affidavits, at any time and place in the subpoena stated. But no witness shall be required to attend at any place more than forty miles from the place where the subpoena is served upon him.
'Sec. 4907. Every witness duly subpoenaed and in attendance shall be allowed the same fees as are allowed to witnesses attending the courts of the United States.
'Sec. 4908. Whenever any witness, after being duly served with such subpoena, neglects or refuses to appear, or after appearing refuses to testify, the judge of the court whose clerk issued the subpoena may, on proof of such neglect or refusal, enforce obedience to the process or punish the disobedience, as in other like cases. But no witness shall be deemed guilty of contempt for disobeying such subpoena, unless his fees and traveling expenses in going to, returning from, and one day's attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret invention or discovery made or owned by himself.
'Sec. 4909. Every applicant for a patent or for the reissue of a patent, any of the claims of which have been twice rejected, and every party to an interference, may appeal from the decision of the primary examiner, or of the examiner in charge of interferences in such case, to the board of examiners in chief; having once paid the fee for such appeal.
'Sec. 4910. If such party is dissatisfied with the decision of the examiners in chief, he may, on payment of the fee prescribed, appeal to the commissioner in person.
'Sec. 4911. If such party, except a party to an interference, is dissatisfied with the decision of the commissioner, he may appeal to the supreme court of the District of Columbia, sitting in banc.
'Sec. 4912. When an appeal is taken to the supreme court of the District of Columbia, the appellant shall give notice thereof to the commissioner, and file in the patent office, within such time as the commissioner shall appoint, his reasons of appeal, specifically set forth in writing.
'Sec. 4913. The court shall, before hearing such appeal, give notice to the commissioner of the time and place of the hearing, and on receiving such notice the commissioner shall give notice of such time and place in such manner as the court may prescribe, to all parties who appear to be interested therein. The party appealing shall lay before the court certified copies of all the original papers and evidence in the case, and the commissioner shall furnish the court with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal. And at the request of any party interested, or of the court, the commissioner and the examiners may be examined under oath, in explanation of the principles of the thing for which a patent is demanded.
'Sec. 4914. 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 fur her 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.
'Sec. 4915. Whenever a patent on application is refused, either by the commissioner of patents or by the supreme court of the district of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filling in the patent office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.'
Section 780 of the Revised Statutes of the District of Columbia reads thus:
'Sec. 780. The supreme court, sitting in banc, shall have jurisdiction of and shall hear and determine all appeals from the decisions of the commissioner of patends, in accordance with the provisions of sections forty-nine hundred and eleven to section forty-nine hundred and fifteen, inclusive, of chapter one, title LX, of the Revised Statutes, 'Patents, Trade-Marks, 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. 434, c. 74), is: 'Sec. 9. That the determination of appeals from the decision of the commissioner of patents, now vested in the general term of the supreme court of the District of Columbia, in pursuance, of the provisions of section seven hundred and eighty of the Revised Statutes of the United States, relating to the District of Columbia, shall hereafter be and the same is hereby vested in the court of appeals created by this act; and in addition, any party aggrieved by a decision of the commissioner of patents in any interference case may appeal therefrom to said court of appeals.'
J. C. Dowell and Geo. C. Hazelton, for plaintiff in error.
Sol. Gen. Richards, for defendant in error.
J. M. Wilson, for Northall.
Mr. Chief Justice FULLER, after stating the facts in the foregoing language, delivered the opinion of the court.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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