The opinion
On Application for Rehearing.
Complainant moved for a rehearing on a number of grounds, chiefly that when the Patent Office, having issued one patent, grants another for the same invention, “this latter grant is a deliberate adjudication that the second applicant is the true first inventor, and raises a prima facie presumption that the later patent is valid rather than the first.” On the contrary, the true and only presumption is that the patents are different. If they cover the same patentable field, the last is void. Thus in Miller v. Eagle Mfg. Co., 151 U. S. 186, 196 , 14 Sup. Ct. 310, 314 ( 38 L. Ed. 121 ), Justice Jackson says:
“The drawings in each of the patents are identical, and the specification in each is substantially the same. Under these circumstances, can it be held that the second patent has any validity, or must it be treated as having been anticipated by the grant of the 1879 patent? If, upon a proper construction of the two patents — which presents a question of law to be determined by the court (Heald v. Rice, 101 U. S. 737 , 740 [ 26 L. Ed. 9101 ), and which does not seem to have been passed upon and decided by the court below — they should be considered as covering the same invention, then the later must be declared void, under the well-settled rule that two valid patents for the same invention cannot be granted either to the same or to a different party.”
*646 This case was approved in the copyright case of Caliga v. Inter Ocean Newspaper Co., 215 U. S. 182, 189 , 30 Sup. Ct. 38, 40, 54 L. Ed. 150, 152 , where it is said:
“The first patent exhausts the statutory right secured by the act of Congress.”
These rulings would seem to govern this case in all its respects. The only possibility of a different conclusion arises from the fact that there was an interference proceeding, as shown in the foregoing opinion, followed by Cropp’s disclaimer and Reed’s purchase of Sanborn’s rights, thus leaving Reed entitled to the interference issue. No actual decision as to priority was made by the examiner of interferences or any other officer or board in the Patent Office as a matter of judicial action, but only by reason of the disclaimer and settlement. The matter all comes down to the effect of Cropp’s disclaimer, which I think has already been correctly disposed of. A decision on interferences is not res judicata in the courts, although it is final on a later proceeding in the Patent Office. The peculiar character of such a decision will appear from three cases presenting different aspects of the question: Morgan v. Daniels, 153 U. S. 120 , 14 Sup. Ct. 772, 38 L. Ed. 657 ; Blackford v. Wilder, 28 App. D. C. 535; Id., 127 O. G. 1255 ; Westinghouse v. Hien, 159 Fed. 936 , 87 C. C. A. 142 , 24 L. R. A. (N. S.) 948 (Seventh Circuit). In this particular case the decision awarding priority to Reed was at the most a judicial action by consent, and not by the judgment of the examiner. Lawrence Mfg. Co. v. Janesville Cotton Mills, 138 U. S. 552 , 11 Sup. Ct. 402, 34 L. Ed. 1005 . Even in the Patent Office an award of priority is not an estoppel as between broad and narrow claims covering the same invention. Corry & Trout v. McDermott, 110 O. G. 306 .
The motion for retrial should be denied.