Gandy v. Marble

On a bill in equity filed under § 4915 of the Revised Statutes, to obtain an adjudication in favor of the grautrag of a patent, the plaintiff must allege and prove that a delay of two years and more in prosecuting the application after the last action therein of which notice was given to him was unavoidable, or the application will be regarded as having been abandoned, within the provision of § 4894.

APPEAL FROM THE SUPREME COURT OF THE DISTRICT OF COLUMBIA. This was an appeal by the plaintiff in a suit in equity brought in the Supreme Court of the District of Columbia against the Secretary of the Interior and the Commissioner of Patents, from a decree of the general- term of that court dismissing the bill. The suit was brought by Maurice Gandy against II. M. Teller, as Secretary of the Interior, and E. M. Marble, as Commissioner of Patents. The bill was founded upon § 4915 of the .Eevised Statutes, which provides as follows: “ 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 filing 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.” The facts of the case were these: On the 1st of December, 1877, Gandy filed in the Patent Office an application for a patent for “ improvements in belts or bands for driving machinery.” The application was rejected on the merits. ' After due proceedings, an appeal was taken to the Commissioner of Patents in person, who, on the 7th of April, 1879, affirmed the decision rejecting the application. Gandy appealed to the Supreme Court of the District of Columbia, which, on a hearing, and on the 30th of January, 1880, dismissed the petition of Gandy, and directed that a copy of its decree be transmitted to the Commissioner of Patents. The bill stated that the ground of the action of the Patent Office and of the Supreme Court of the District of Columbia in rejecting the application was, that the invention was not patentable, having been anticipated in prior patents. The bill alleged that the application was erroneously rejected, and prayed that the court would hear and determine the right of the plaintiff to a patent for what he claimed, or for such parts thereof as he might' be justly entitled to, and would decree accordingly. The bill was filed on the 3d of May, 1883. A subpoena was issued upon it, and served upon the Secretary of the Interior and the Commissioner of Patents, on the 5th of May, 1883. On the 19th of October, 1883, the solicitor for the plaintiff served on the Secretary of the Interior and the Commissioner of Patents, in person, a notice that he would, on the next day, move the court for leave to enter their default in the case, and thereupon to proceed with the cause ex parte to final hearing. On the 20th .of October, 1883, the court made an order setting forth, that the process of the court and a copy of the bill had been duly served upon the defendants, that they had not appeared or answered, and that, on proof of service of the above named motion, no' one appearing for the defendants, it was ordered that the plaintiff have leave to enter the default of the defendants and to proceed with the cause ex parte, and that he have sixty days to take and put in his proofs. It also specified the officers before whom proofs might be taken. Documentary and oral proofs were put in, the former including a copy of the proceedings in the Patent Office; by which it appeared that the date of the last proceeding in the application was the making of the decree of January 30, 1880, by the Supreme Court of the District of Columbia. No one appeared for the defendants on the taking of any of the proofs. On the 14th of April, 1884, the Supreme Court, in special term, no one appearing for the defendants, made an order that the cause be heard in the first instance by the general term. On the 30th of April, 1884, Benjamin Butterworth, having succeeded Mr. Marble as Commissioner of Patents, moved the court, in general term, to dismiss the bill and set aside the order entering the default of the defendants, and for leave to maleé a defence in the cause, assigning as grounds for the motion that the Secretary of the Interior was not a proper party to the suit; that Mr. Butterworth had succeeded Mr. Marble as Commissioner of Patents; and that the application for the patent had been abandoned by reason of the failure to prosecute the same within two years after the last action thereon, of which notice was duly communicated to the applicant. The court in general term made an order allowing the plaintiff to amend his bill, striking out the name of the Secretary of the Interior as a defendant and adding as a defendant the successor in office of Mr. Marble. On the same day, the court in ^general term made a decree, on a hearing of-counsel for bothxparties, dismissing the bill, with costs. Prom that decree the.plaintiff appealed to this court.