Before SPARKS, MAJOR, and KERNER, Circuit Judges.
This action was brought under § 4915 of the Revised Statutes, 35 U.S.C.A. § 63, by the plaintiff Klumb, the unsuccessful party in a Patent Office interference, to ajudicate the question of priority between interfering applications for Letters Patent filed by the plaintiff and the defendant Roach. The issues before the District Court related to the question of priority of invention.Such issues were found in favor of the plaintiff and judgment entered accordingly.
Upon appeal to this court, defendants (appellants) on February 5, 1944 moved that the judgment entered by the District Court be reversed and the suit dismissed for want of jurisdiction by reason of the failure of plaintiff to file the complaint and prosecute the suit against all the adverse and indispensable parties known to the plaintiff within the statutory period prescribed by the section upon which the action was predicated. This court entered an order denying such motion, without prejudice, however, to the right of defendants to renew the same upon a hearing on the merits. This has been done, and it is urgently insisted that the motion should be allowed.
A troublesome and difficult question is thereby presented which must first be disposed of. To do so requires a consideration of § 4915, which determines the jurisdiction of a District Court in a suit of the instant character. The section, so far as here material, provides:
"Whenever a patent on application is refused by the Board of Appeals or whenever any applicant is dissatisfied with the decision of the board of interference examiners, the applicant, unless appeal has been taken to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal or decision; 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."
The pertinent requirement of this section is that an interference suit shall be filed "within six months" after the final decision in the Patent Office "on notice to adverse parties and other due proceedings." The final decision in the Patent Office awarding priority of invention to Roach was entered March 25, 1941, and the complaint in the instant action was filed April 4, 1941. The complaint is barren of any allegation as to adverse parties. The sole allegation as to Roach who is named as a defendant is that he was a party to the interference proceeding before the Patent Office. There is an allegation that the complaint is filed in accordance with § 4915. The defendant Tower as attorney for Roach filed an answer to the complaint on behalf of his client. Such answer makes no specific attack upon the complaint but does contain the allegation that it was not filed in accordance with the provisions of § 4915. With the record thus made, the trial commenced December 3, 1942, and on April 10, 1943, the court rendered its opinion. On June 5, 1943, a motion was filed by plaintiff to reopen the case and to make Tower a party-defendant, which motion, over the objection of Tower, was allowed June 16, 1943. Thereupon, a supplemental complaint was filed which was answered by the defendants.
On June 4, 1936, by a recorded written assignment, a one-half interest in and to the Roach application in interference and any patent issued thereon was assigned to Tower, who has since owned such interest in and to said application and any patent issued thereon. Plaintiff concedes that he at the time the suit was commenced had knowledge of this assignment and that Tower by reason thereof was the owner of a one-half interest. As stated, Tower was not made a party until after the suit was tried and decided, which was long subsequent to the six months' period contained in § 4915.
Defendants contend that Tower was an adverse and indispensable party within the meaning of § 4915 and that the failure to make him a party within the designated time deprived the court of jurisdiction. Plaintiff rather feebly opposes the contention that Tower was an adverse and indispensable party but relies more strongly upon his contention that this being an equitable suit, a court should ignore the provisions of the statute so as to prevent a plain miscarriage of justice. This so-called equitable theory of the plaintiff, together with some further facts upon which it is predicated, will be referred to later.
In Nachod & United States Signal Co., Inc., et al. v. Automatic Signal Corporation et al., 2 Cir., 105 F.2d 981, the sole question was whether a licensee of an assignee was an indispensable party under § 4915. The court held in the affirmative and sustained an order of the District Court dismissing the suit for failure to make such licensee a party thereto. The court thus held, in face of the fact that the licensee was originally a party but succeeded in having the cause dismissed as to it on the ground that it was not an inhabitant of the district. In other words, the licensee was dismissed from the suit for the latter reason and the action was then dismissed on the motion of other parties-defendants because of the absence of the licensee, an indispensable party. It is interesting to note that one Judge dissented from the court's decision that a licensee was an indispensable party, but even the dissent recognizes (105 F.2d at page 984), "The present owners of the conflicting patent, whether original applicants or later assignees, are manifestly indispensable defendants."
In Robinson et al. v. Wayne et al., 78 U.S.App.D.C. 15, 136 F.2d 767, it was held that an assignee was an indispensable party. Concerning the holding in the Nachod case, the court stated, 78 U.S.App.D.C. at page 16, 136 F.2d at page 768:
"The Court of Appeals for the Second Circuit has decided the question favorably to appellants' contention, in the case of Nachod & United States Signal Co. v. Automatic Signal Corporation. But the trial judge, in the present case, decided in favor of the appellees, basing his decision expressly upon the dissenting opinion in the Nachod case. In our view, the position taken in the majority opinion in that case was correct; and we rest our decision, in part, upon its reasoning."
In United States v. Washington Institute of Technology, Inc., 3 Cir., 138 F.2d 25, an action under § 4915 was dismissed for failure to make proper party-defendants. It appears that one of the joint owners of an invention assigned his interest, and in connection therewith had an agreement with his assignee by which the assignor was to receive certain benefits accruing from his assignee's use of the invention. The court, in holding that such assignor was an indispensable party, cited with approval the Nachod case. The opinion does not disclose whether plaintiff had knowledge of the assignor's interest.*fn*
The recent case of Solomon v. Schlicker, D.C., 58 F.Supp. 444, was also an action based on § 4915. A motion was made to dismiss on the ground that because of the absence of an indispensable party the court was without jurisdiction. The party in the interference proceeding had assigned his interest to a corporation and the latter as assignee was not made a party. The court in sustaining the motion to dismiss held that it was an indispensable party. Plaintiff contended that the failure to make the corporation a party was through inadvertence. The court pointed out that the assignment was on record in the Patent Office and that the burden was on the plaintiff to bring in all adverse parties. The court refused to follow the so-called equitable doctrine of the Parker case (next referred to), and in so doing stated, 58 F.Supp. at page 445:
"Consequently, we have here in this suit a situation where, with full prior knowledge and ample time in which to bring in an indispensable party, plaintiff has failed to avail itself thereof and the hardship of a dismissal, if any there be, after what has previously taken place, ...