In re Dunbar

278 F. 334, 51 App. D.C. 251, 1922 U.S. App. LEXIS 2742

• Court: Court of Appeals for the D.C. Circuit
• Decided: February 6, 1922
• Docket: No. 1399
• Status: Published

Opinion

VAN ORSDEE, Associate Justice.

Appellant, Dunbar, filed the present application for patent October 9, 1905. One Dtyson filed a co-pendiug application Maxxh 19, 1906, on which a patent was issued December 12, 1916. Both applicants assigned to Kellogg Switchboard & Supply Company, and both applications have been prosecuted through the Patent Office by the same attorneys.

It is unnecessary to consider the mechanism or the line of division between the Dunbar and Dyson claims, or the right of the common assignee to disclaim the invention of the claims in .the Dyson patent, since this appeal turns upon a question of law. The Dyson application, which went to patent, contained certain narrow claims which would read upon the earlier application of Dunbar. Dunbar has broad claims, covering the same features of the invention, and he is here insisting upon the allowance of his claims.

The tribunals below recognize the dilemma in which Dunbar finds himself, and the Commissioner in his opinion states the grounds upon which relief was refused, as follows:

“By taking out tile Dyson patent, an election was made on the question of priority between Dyson and Dunbar, and the common assignee is just as much bound by that election as if an interference had been declared and priority decided in favor of Dyson. The reason for the rule holding that interferences will not be declared between coassignors is that the presentation of the testimony on behalf of each assignor is in control of the common as-signee, and that there are, therefore, no parties having adverse interests. If an assignee, is to be allowed, after having made such election and taken out the patent, to repudiate the election and present the claims in another application, monopoly would obviously be extended.”

The record is silent as to the nature of the assignment from Diunbar to the Kellogg Company. In this situation we must assume that the assignment was absolute and conveyed all the right, title, interest, and claim in the patent to the assignee. Dunbar has, therefore, no interest left in the invention which he can now assert. The case resolves itself into the right of the assignee to a patent upon the present Dunbar claims. To grant these claims to the assignee, after the as-signee, by its own election, had accepted the Dyson patent, would be, as held by the Commissioner, a clear extension of the monopoly. If the assignment from Dunbar to the Kellogg Company was a conditional one, whereby Dunbar would be prejudiced by the election of the assignee to accept the Dyson patent, a different question might be presented; but in the state of the record Dunbar has no interest left upon which he can personally claim protection.

The decision of the Commissioner of Patents is affirmed.

Mr. Justice IITTZ, of the Supreme Court of the District of Columbia, sat in the place of Mr. Justice ROBB in the hearing and determination of this appeal.