Sanford v. Kepner, 344 U.S. 13 (1952). · Go Syfert
Sanford v. Kepner, 344 U.S. 13 (1952). Cases Citing This Book View Copy Cite
G Cite
175 citation events (1 in the last 25 years) across 20 distinct courts.
Strongest positive: John F. Cody v. Aktiebolaget Flymo (cadc, 1972-03-20)
Treatment trajectory · 1954 → 2026 · click a year to view as-of
1954 1990 2026
Top citers, strongest first. 13 distinct citers. How cited ↗
examined Cited as authority (verbatim quote) John F. Cody v. Aktiebolaget Flymo (4×) also: Cited "see, e.g."
D.C. Cir. · 1972 · signal: see also · quote attribution · 2 verbatim quotes · confidence high
judicial authorization of issuance implies judicial sanction of patentability
discussed Cited as authority (rule) Curtis Mfg. v. Plasti-Clip
D.N.H. · 1995 · confidence medium
As such, the standards guiding this court's 35 U.S.C. § 146 review of an interference proceeding are inapplicable as premature.5 See Sanford v. Kepner, 344 U.S. 13, 15 (1952) (civil action remedy 5That is, district court review under section 146 does not come into play until the Board issues a final decision pursuant to 37 C.F.R. § 1.658 (a).
discussed Cited as authority (rule) Wm. T. Burnett & Co. v. General Tire & Rubber Co.
D. Maryland · 1978 · confidence medium
There is no real issue of invention between the parties here and we see no reason to read into the statute a district court’s compulsory duty to adjudicate validity. 344 U.S. at 15-16 , 73 S.Ct. at 76-77 (emphasis added.) When Kepner was decided, the statutory review provisions did not explicitly state that review was available for the dissatisfied party in interference “on the question of priority.” The addition of this phrase gives added force to Kepner .
discussed Cited "see" Nitto Boseki Co. v. Owens-Corning Fiberglas Corp. (2×)
D. Del. · 1984 · signal: see · confidence high
See Sanford v. Kepner, 344 U.S. at 15-16 , 73 S.Ct. at 76-77 .
examined Cited "see" Standard Oil Company (Indiana) v. Montedison (3×)
3rd Cir. · 1981 · signal: see · confidence high
Hill v. Wooster, 132 U.S. 693, 698 , 10 S.Ct. 228, 230 , 33 L.Ed. 502 (1890); see Sanford v. Kepner, 344 U.S. 13, 15 , 73 S.Ct. 75, 76 , 97 L.Ed. 12 (1952).
examined Cited "see" Standard Oil Co. v. Montedison, S.p.A. (3×)
3rd Cir. · 1981 · signal: see · confidence high
Hill v. Wooster, 132 U.S. 693, 698 , 10 S.Ct. 228, 230 , 33 L.Ed. 502 (1890); see Sanford v. Kepner, 344 U.S. 13, 15 , 73 S.Ct. 75, 76 , 97 L.Ed. 12 (1952).
discussed Cited "see" General Motors Corporation v. R. E. Dietz Company (2×)
D.C. Cir. · 1969 · signal: see · confidence high
See 344 U.S. at 15 , 73 S.Ct. at 76 : The obvious purpose of the quoted part of R.S. § 4915 is to give a judicial remedy to an applicant who has been finally denied a patent because of a Patent Office decision against him and in favor of his adversary on the question of priority.
discussed Cited "see" Boyce v. Anderson (2×)
9th Cir. · 1969 · signal: see · confidence high
See Sanford v. Kepner, 344 U.S. 13, 15 , 73 S.Ct. 75 .
discussed Cited "see" Boyce v. Anderson (2×)
9th Cir. · 1968 · signal: see · confidence high
See Sanford v. Kepner, 344 U.S. 13, 15 , 73 S.Ct. 75 .
examined Cited "see" Sperry Rand Corp. v. Bell Telephone Laboratories, Inc. (3×)
S.D.N.Y. · 1962 · signal: see · confidence high
See Sanford v. Kepner, 344 U.S. 13, 15 , 73 S.Ct. 75 , 97 L.Ed. 12 (1952). 6 .
examined Cited "see, e.g." Struthers Patent Corp. v. Nestle Co., Inc. (3×)
D.N.J. · 1981 · signal: see also · confidence low
See, also, Sanford v. Kepner, 195 F.2d 387, 389 (3d Cir.), affirmed, 344 U.S. 13 , 73 S.Ct. 75 , 97 L.Ed. 12 (1952): Such reference in a patent claim to the structural setting within which a particular invention has been designed to operate is proper and familiar, but does not enlarge the invention.
examined Cited "see, e.g." E. I. du Pont de Nemours & Co. v. Celanese Corp. (3×)
S.D.N.Y. · 1968 · signal: see, e.g. · confidence low
See, e. g., Sanford v. Kepner, 195 F.2d 387, 390-391 (3d Cir.), aff’d, 344 U.S. 13 , 73 S.Ct. 75 , 97 L.Ed. 12 (1952); Union Carbide Corp. v. Traver Investments, Inc., supra; Ferree v. Shephard, 384 F.2d 1019 (C.C.P.A.1967).
examined Cited "see, e.g." Radio Corporation of America and United States of America v. International Standard Electric Corporation (3×)
3rd Cir. · 1956 · signal: see also · confidence low
See also Sanford v. Kepner, 3 Cir., 1952, 195 F.2d 387, 389 , affirmed Nov. 10, 1952, 344 U.S. 13 , 73 S.Ct. 75 , 97 L.Ed. 12 ; Ocumpaugh v. Norton, supra note 8 . 10 .
Retrieving the full opinion text from the archive…
Sanford
v.
Kepner
46.
Supreme Court of the United States.
Nov 10, 1952.
344 U.S. 13
1952 U.S. LEXIS 2785
J. Preston Swecker argued the cause and filed a brief for petitioner., Hugh M. Morris argued the cause for respondent. With him on the brief were Wilmer Mechlin and George R. Ericson.
Black.
Cited by 212 opinions  |  Published
Mr. Justice Black

delivered the opinion of the Court.

Claiming he was the original and sole inventor of a mechanical device, the respondent Kepner asked the United States Patent Office for a patent. Later the petitioner Sanford filed a similar application making the same claim. As authorized by R. S. § 4904, 35 U. S. C. § 52, the Commissioner of Patents directed a board of interference examiners to hold hearings and determine the[*14] dispute over priority of invention — which of the two first used the device. The Board decided for respondent Kep-ner. Sanford’s application for patent was accordingly refused. As authorized by R. S. § 4915, 35 U. S. C. § 63, Sanford brought this bill in equity praying that he be adjudged inventor of the device and entitled to a patent. Sanford also prayed that Kepner’s claims be adjudged unpatentable, charging that many previous patents had been granted on Kepner’s device, some of which had expired. Agreeing with the Board of Interference Examiners, the District Court found against Sanford on the issue of prior use. Since this was enough to justify refusal to issue Sanford a patent, the District Court declined to go further and consider Kepner’s claim to a patent. Accordingly Sanford’s bill was dismissed. 99 F. Supp. 221. Agreeing with the District Court, the Court of Appeals affirmed. 195 F. 2d 387. The circuits have different views concerning the duty of district courts to consider and adjudicate questions of invention and patentability when parties urge them in R. S. § 4915 proceedings. * To settle these differences we granted certiorari. 343 U. S. 976.

So far as relevant to the precise question here, R. S. § 4915, as now contained in 35 U. S. C. § 63, reads:

“. . . whenever any applicant is dissatisfied with the decision of the board of interference examiners, the applicant . . . may have remedy by bill in equity . . . and the court . . . may adjudge that such applicant is entitled, according to law, to receive a patent for his invention .... And such[*15] 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.”

The obvious purpose of the quoted part of R. S. § 4915 is to give a judicial remedy to an applicant who has been finally denied a patent because of a Patent Office decision against him and in favor of his adversary on the question of priority. When the trial court decides this factual issue of priority against him and thus affirms the refusal of the patent by the Patent Office, he has obtained the full remedy the statute gives him. Only if he wins on priority may he proceed. In that event, the statute says, the court may proceed to “adjudge that such applicant is entitled, according to law, to receive a patent for his invention . . . .” So adjudging, it may authorize issuance of the patent. But judicial authorization of issuance implies judicial sanction of patentability and for this reason this Court has said, “It necessarily follows that no adjudication can be made in favor of the applicant, unless the alleged invention for which a patent is sought is a patentable invention.” Hill v. Wooster, 132 U. S. 693, 698. The principle of the Hill case is that the court must decide whether claims show patentable inventions before authorizing the Commissioner to issue a patent. No part of its holding or wording nor of that in Hoover Co. v. Coe, 325 U. S. 79, requires us to say R. S. § 4915 compels a district court to adjudicate patentability at the instance of one whose claim is found to be groundless. Sanford’s claim was found to be groundless.

It is unlikely that this equity proceeding would develop a full investigation of validity. There would be no attack on the patent comparable to that of an infringement action. Here the very person who claimed an invention[*16] now asks to prove that Kepner’s similar device was no invention at all because of patents issued long before either party made claim for his discovery. There is no real issue of invention between the parties here and we see no reason to read into the statute a district court’s compulsory duty to adjudicate validity.

Affirmed.

*

In accord with the Court of Appeals, Heston v. Kuhlke, 179 F. 2d 222; Smith v. Carter Carburetor Corp., 130 F. 2d 555; Cleveland Trust Co. v. Berry, 99 F. 2d 517. Contra: Minneapolis Honeywell Regulator Co. v. Milwaukee Gas Specialty Co., 174 F. 2d 203; Knutson v. Gallsworthy, 82 U. S. App. D. C. 304, 164 F. 2d 497.