Opposition Brief — Dixie Cup Co. v. Paper Container Mfg. Co.

he. bs Wr y oo ae

IN THE

| CHARLES £:

— $upreme Court of the United-States :

October Term, 1948.

No. 483.

DIXIE CUP COMPANY,

Petitioner,

v.

PAPER CONTAINER MFG. COMPANY,

Respondent.

BRIEF OF RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI.

Z

Ar THOMAS COOCH,

212 Delaware Trust Building,

Wilmington 28, Delaware,

Attorney for Respondent.

Franxuin M. Wanpen,

\ Casper W. Ooms,

Of Counsel for Respondent.

International, 236 Chestnut St., Phila. 6, Pa.

INDEX.

Page

JURISDICTIONAL STATEMENT .............. 1

SUMMARY OF ARGUMENT ................... 2

SEI LS WN oe cua dh oon vali ce ce heats 3

A. Regardless of the Status of R. F. C., Respond-

ent Was an Indispensible Party Plaintiff

and the Only Real Party in Interest, and

Had Sufficient Rights Under the Terms of

the Assignment to Enable It to File This

Suit, Although Perhaps the Suit Could Not

Go Forward Until R. F. C. Had Been

NE x dunk n cece kee ch dake ee cds 3

B. The Provisions of R. S. 4915 Have Been Fully

Complied With, Even Assuming Such Pro-

visions to Be Jurisdictional ............. 6

C. Petitioner’s Several Reasons or Points of Its

Argument Are Not Sound or Do Not Bear

on the Question Presented ............... 8

NNT ini Kadina anealevad cc adeecvataccies 15

TABLE OF CASES CITED.

Page

Biedler v. Photostat Corporation, 10 F. Supp. 628.... 14

Forsyth v. Hammond, 166 U. S. BOS nc ccccccccccccee 1

Gandy v. Marble, 122 U. S. 482 .......+++++seeseee5s 13, 14

Hughes v. Edwards, 9 Wheat. GBD on cccccccccccesces 3

Mas v. The Coca-Cola Company, 163 F. (2d) 505..... ll

Missouri, K. & T. R. Co. v. Wulf, 226 U. S. 570....--. 13

Nachod & U. S. Signal Co. v. Automatic Signal Cor-

poration, 105 F. (2d) 981 ......-.++eeeeeeeeeees 7

Overman Cushion Tire Co., Inc., et al. v. Goodyear

Tire and Rubber Co., Inc., 59 F. (2d) 998; cert.

den, Kelly-Springfield Tire Co. v. Overman, 287

i 4 | Perera, 10

Parker Rust-Proof Co. v. Western Union Telegraph

Co., 105 F. (2d) 976 ©... cece eee ee eee rece ences 8

Root v. Lake Shore & M. S. R. Co., 105 U. S. 189, 212 10

Sheilds v. Barrow, 17 How. 130 ......--++-eeseeeeees 6

Spiller v. Atchison, T.&8. F. R. Co., 253 U.S. 117.... 1

Waterman v. Mackenzie, 138 U. S. er 4, 9, 10

STATUTES AND AUTHORITIES CITED.

Dobie, Federal Procedure, Sec. 16, p. 28 .......5-05 8

Judicial Code, Section 240 (a) as amended (28 U.S. C.

Bee. BAZ) ....ccccsccccncccccccccsccccescasess

Title 28 U. S. C., See. 1919 ... 0... eee e eee eeeees

Title 28 U. S. C., Sec. 1254 (Chapter 646, Public Law

773, 80th Congress, Approved June 25,1948)... 1

R. S. 4915 [35 U. S. C. § 68]... 6... eee 2, 3, 5, 6, 8, 12, 15

JURISDICTIONAL STATEMENT.

Petitioner states (P. B. 4) that the jurisdiction of this

Court is invoked under Section 240 (a) of the Judicial Code,

as amended (28 U. S. C. Sec. 347). It is believed by re-

spondent that petitioner intended to invoke the provisions

of Title 28, United States Code, Section 1254 (Chapter 646,

Public Law 773, 80th Congress, Approved June 25, 1948).

While the cases cited by petitioner as believed to sus-

tain jurisdiction do not do so, respondent believes that this

Court does have jurisdiction under such cases as:

Spiller v. Atchison, T. € S. F. R. Co., 253 U. 8.

117;

Forsyth v. Hammond, 166 U. 8S. 506.

These cases granted writs of certiorari where the de-

crees of the respective Courts of Appeals were, as in this

case, not final decrees. However, they serve to point out

that the power of this Court to review non-final decrees of

Courts of Appeals is to be exercised only in ‘*extraordinary

cases’’ and that the fact that the decree sought to be re-

viewed is not final may, of itself alone, furnish sufficient

ground for the denial of the application.

Summary of Argument

SUMMARY OF ARGUMENT.

While petitioner has set forth eight questions as being

those arising because of the decision of the Court of Ap-

peals for the Third Circuit, respondent believes that they

may be restated as the following single question:

Must Reconstruction Finance Corporation, as the as-

signee of an unsuccessful application for Letters Patent, be

joined as a party plaintiff in a suit under R. S. 4915 [35

U. S. C. § 63] within six months after an adverse decision

of the Board of Interference Examiners where such suit

otherwise was properly filed within that time by the as-

signor, where the assignment was made solely for the pur-

pose of securing a loan, and where substantial rights were

retained by (or reassigned to) the assignor?

Petitioner contends in effect that this question should

have been answered in the affirmative.

Respondent urges that the Court of Appeals for the

Third Cireuit correctly answered this question in the

negative.

Respondent first will affirmatively show that the Court

of Appeals for the Third Circuit was correct in reaching

the result that petitioner complains of. Following that,

respondent will briefly point out the fallacy contained in

each of petitioner’s reasons or points of its argument.

Respondent’s argument may be summarized as follows:

A. Regardless of the status of R. F. C., respondent was

an indispensible party plaintiff and the only real party in

interest, and had sufficient rights under the terms of the

assignment to enable it to file this suit, although perhaps

the suit could not go forward until R. F. C. had been joined.

B. The provisions of R. S. 4915 have been fully com-

plied with, even assuming such provisions to be jurisdic-

tional.

C. Petitioner’s several reasons or points of its argu-

ment are not sound or do not bear on the question pre-

sented.

Argument 3

ARGUMENT.

A. Regardless of the Status of R. F. C., Respondent Was

an Indispensible Party Plaintiff and the Only Real

Party in Interest, and Had Sufficient Rights Under the

Terms of the Assign nent to Enable It to File This Suit,

Although Perhaps the Suit Could Not Go Forward

Until R. F. C. Had Been Joined.

At the outset of its argument, respondent wishes to

point out that a suit under R. S. 4915 [35 U.S. C. § 63] is

of an equitable nature, made so by the terms of the statute

itself: ‘‘* * * the applicant * * * may have remedy by bill in

equity ** *.’’ Petitioner apparently agrees (P. B. 26).

**A court of equity looks at the real object and inten-

tion of the conveyance * * *’’ Hughes v. Edwards, 9 Wheat.

489, 495.

To determine the status and nature as a party of re-

spondent, it is necessary to examine the provisions of the

assignment executed by respondent to R. F. C. (R. 12-21)

just as the Court of Appeals did (R. 47-51). Such an

examination discloses:

That the assignment was a defeasible one made for

the purpose of securing a loan (R. 13, 14).

That respondent retained, by Reservation (a) (R. 14-

15), ‘‘a personal non-exclusive, non-assignable and royalty-

free right and license * * * to make, use and vend the sub-

ject matter of * * * [the] applications for Letters Patent

and patents issuing thereon * * *.”’

That respondent retained the right, by Reservation (b)

(R. 15), to bring suits for infringement of the, Letters.

Patent ‘‘in the name of [respondent] and of R. F. C.””

That under Reservation (c) (R. 15), ‘‘no other license

under said Letters Patent, applications for Letters Patent,

or any of them, shall be granted by R. F. C. to any other

party or parties to engage in the manufacture or sale of

products or articles or the use of methods or processes

4 Argument

directly competitive with the products, articles and methods

of [respondent] without the approval in writing of the

[respondent].’’

That by Covenant 5 (R. 17), respondent specifically

agreed and covenanted with R. F. C. ‘‘at [respondent’s]

own expense diligently to prosecute all said applications

for Letters Patent now owned or hereafter acquired by it,

in the United States Patent Office and Appellate Tribunals,

to pay the final fees and other disbursements in connec-

tion therewith, and not to permit any abandonment of said

applications without the written consent of R. F. C.”’

That by Covenant 6 (R. 17), respondent must, ‘‘upon

the request of R. F. C., give to R. F. C. or the attorneys and

representatives selected by it, power to inspect the files of

any such applications in the United States Patent Office,

and shall upon request of R. F. C. furnish copies of papers

filed or to be filed in any of said applications, and shall

give associate powers of attorney to attorneys selected by

R. F. C. to prosecute such applications in the United States

Patent Office and all Appellate Tribunals to a final conclu-

sion. Any expense incurred by R. F. C. in the prosecution

of any of said applications shall be charged against the

[respondent].”’

-It seems abundantly clear to respondent that the Court

of Appeals for the Third Circuit had strong and sufficient

bases for finding in its Opinion:

a. ‘** * * We cannot say, as [petitioner] contends, that

under Waterman v. Mackenzie, 138 U. 8. 252, that [re-

spondent] is a mere non-exclusive licensee under the Hulse-

man application and for that reason had no right to insti-

tute the action at bar or that R. F. C. is the only real party

in interest, an indispensible party that alone was entitled

to institute and maintain the instant suit. The Supreme

Court in the Waterman case recognized that the assignor

of a patent by an assignment couched in general terms con-

summates an act ‘equivalent to delivery of possession’ of

corporeal property and makes the title of the assignee

a ——— ON Ri NRG a

Argument 5

‘complete towards all other persons, as well as against’ the

assignor, but the Court added the qualifying phrase ‘unless

otherwise provided in the mortgage.’ 138 U. S. at p. 260.

The qualifications in the assignment in the case at bar are

substantial and, in our opinion, are sufficient to constitute

[respondent] as a real party in interest, an indispensible

party.’’ (R. 51-52.)

b. ‘** * * Although the license reserved to [respondent]

is designated in the assignment as a ‘non-exclusive license’,

it is a good deal more than that and comes close to being

an exclusive license, defeasible only by [respondent’s] fail-

ure to repay the loan in accordance with its terms or to

observe the other covenants of the assignment.’ (R. 49.)

ce. ‘‘The indication is clear that both R. F. C. and

[respondent] understood and agreed that [respondent]

should prosecute the Hulseman application to a final con-

clusion.’’ (R. 51.)

d. ‘** * * It was the intention of the parties to include

a district court of the United States sitting ‘in review’ of

the refusal of the Patent Office to grant a patent in an

R. S. §4915 proceeding within the phrase appellate tri-

bunals as used in the covenants.’’ (R. 50.)

e. “** * * It makes no legal difference to [petitioner]

whether [respondent] or R. F. C. is the real and therefore

indispensible party in interest or whether both are real and

indispensible parties. Upon answer filed and hearing

[petitioner] will have its day in court and whether a patent

be issued to [respondent] or to R. F. C. or to both of them,

if any patent can issue on the Hulseman application, is a

matter of no legal import to [petitioner].’’ (R. 56.)

It is to be noted that the Court of Appeals failed to

find that R. F. C. was ‘‘a real party in interest,”’ and stated

(R. 52) (without showing its reasoning) that both respond-

ent and R. F. C. are indispensible parties.

An indispensible party is one who not only has an

interest in a controversy, but an interest of such a nature

that a final decree cannot be made without either affecting

6 Argument

~

- tlidt interest or leaving the controversy in such a condition

that its final determination may be wholly inconsistent with

equity and good conscience. Sheilds v. Barrow, 17 How.

130, 139.

R. F. C. was joined as a party plaintiff after its consent

thereto had been obtained (R. 27) because of the possibility

that R. F. C., being the holder of legal or record title to the

application, might be considered to be an indispensible

party. While respondent believes and argued in the Court

of Appeals that R. F. C. was only a ‘‘necessary party,’’ as

that term is defined in Sheilds v. Barrow, supra, respondent

had no wish to insist on a technical position or to delay

the progress of the action. If the absence of R. F. C. as a

party plaintiff would obstruct the action from going for-

ward, respondent quite naturally wanted to remove that

obstruction.

B. The Provisions of R. S. 4915 Have Been Fully Complied

With, Even Assuming Such Provisions to Be Juris-

dictional.

In pertinent part, R. S. 4915 (35 U. S. C. § 63) pro-

vides :

««* ® * Whenever any applicant is dissatisfied with

the decision of the board of interference examiners,

the applicant * * * may have remedy by bill in equity,

if filed within six months after such refusal or deci-

sion; 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 * * *.”’

Petitioner’s counsel has conceded (R. 23) and the Court

of Appeals decided (R. 53) that R. F. C. is not an ‘‘adverse

party.”’

Petitioner argues that petitioner has no right to sue;

that R. F. C. is the real party in interest; that R. F. C. is

an indispensible party and the only one which can sue

(R. 23).

—_— mau

Argument 7

Stated another way, petitioner’s contention is that

since the only person (from petitioner’s view) entitled to

bring suit did not do so within six months, the suit brought

by respondent was a nullity and the joinder thereafter of

the person so entitled could not have a retroactive effect

(P. B. 11).

Respondent’s first answer to this argument is that the

premises are false, that it, respondent, being the real party

in interest and an indispensible party, had the full right

to bring this suit, and did so within the allotted six months.

[See section A of this Argument.]

Respondent’s second answer to this argument is that

R. S. 4915 is not applicable where a missing indispensible

party is not an ‘‘adverse party.’’ For the purposes of

this brief, respondent invites the Court’s attention to the

provisions of the section and, additionally, states that it

has not been able to find any case which holds the statute

applicable under such circumstances. All of the cases either

deal with missing indispensible parties defendant—adverse

parties—or go off on the question of who is the indispensible

party, the real party in interest.

Respondent’s third answer is that even assuming R. S.

4915 to be applicable, it nevertheless is not ‘*jurisdictional’’

—in other words, it does not forbid the addition of a miss-

ing indispensible party after six months have elapsed, it

does not even require notice to adverse parties within that

time. Again attention of the Court is directed to the pro-

visions of the section, with the suggestion that they are

directory rather than mandatory. There are several cases

decided by Courts of Appeal or by District Courts which

state that the provisions are jurisdictional. All of these

cases, however, deal with missing indispensible parties de-

fendant and all may be explained or distinguished on gen-

eral equitable principles.

Two cases, decided by the same Court of Appeals (Sec-

ond Circuit) within a span of four months, will suffice to

8 Argument

illustrate this point. The cases are Nachod & U. S. Signal

Co. v. Automatic Signal Corporation, 105 F. (2d) 981, and

Parker Rust-Proof Co. v. Western Union Telegraph Co.,

105 F. (2d) 976. The former refused to permit the joining

of a missing indispensible party defendant on the basis

that the section is jurisdictional, while the latter did per-

mit such joining on the basis that a court of equity would

not permit ‘‘the rule respecting indispensible parties’’ to

be applied ‘‘as to defeat the very purposes of justice.’’

The case first cited was the later one to be decided, but

the earlier decision apparently was not later qualified, in

fact the Court of Appeals indicated it would make the

same ruling again under the same circumstances (ex-

tremely inequitable conduct on the part of the missing in-

dispensible party).

However, jurisdiction of a federal court cannot be cre-

ated by inequitable conduct, or by estoppel. The only

power possessed by a court without jurisdiction is to dis-

miss the action. Title 28 U. S. C., Sec. 1919; Dobie, Fed-

eral Procedure, Sec. 16, p. 28. The failure of the court to

dismiss in the Parker case clearly demonstrates its hold-

ing that the six months provision is not jurisdictional. The

two apparently divergent holdings can be explained on the

basis that, on general equitable principles, the court exer-

cised its discretion one way in one case and the other way

in the other.

C. Petitioner’s Several Reasons or Points of Its Argument

Are Not Sound or Do Not Bear on the Question Pre-

sented.

As suggested by respondent in its Summary of Argu-

ment (supra, p. 2), only one question is raised by the de-

cision of the Court of Appeals:

Must R. F. C., as the assignee of an unsuccessful ap-

plication for Letters Patent, be joined as a party plaintiff

__—— siethlliainiaiieeimemaaneentaanin an

Argument 9

in a suit under R. S. 4915 within six months after an ad-

verse decision of the Board of Interference Examiners

where such suit otherwise was properly filed within that

time by the assignor, where the assignment was made

solely for the purpose of securing a loan, and where sub-

stantial rights were retained by (or reassigned to) the

assignor?

Petitioner says ‘‘yes’’; respondent says ‘‘no’’.

Petitioner has advanced several reasons why this

Court should grant its petition for a Writ of Certiorari.

Respondent will, seriatim, comment briefly on each of these

reasons:

Petitioner’s Reason 1 (P. B. 10-13):

In substance, this reason is that the Court of Appeals

disregarded the jurisdictional nature of R. S. 4915 and is

founded on the premises that respondent did not have suffi-

cient interest in the application to bring this suit and that

the section is applicable where the missing indispensible

party is not an ‘‘adverse party’’—a party defendant. Re-

spondent has already answered each of these contentions.

The cases cited to this reason are all distinguishable

in that they all involved missing parties defendant, adverse

in interest to the plaintiff.

Petitioner’s Reason 2 (P. B. 13-17):

In substance, this reason is that the Court of Appeals

erred in its interpretation of the assignment when it found

that respondent was the real party in interest and an in-

dispensible party. Respondent has already shown that the

Court of Appeals has good and sufficient bases for finding

as it did (supra, pp. 3-5).

Waterman v. Mackenzie, supra, while distinguishable

because it was a suit for infringement in which legal, rather

than equitable, principles were applied (page 260 of 138

10 Argument

U. S.), was recognized as a leading case by the Court of

Appeals. The Court of Appeals quite properly saw that

the instant suit fitted into the exception stated in the Water-

man case that its rule applied ‘‘* * * unless otherwise

stated in the mortgage * * *’’ (R. 52).

Petitioner’s Reason 3 (P. B. 17-21):

In substance, this reason is that the decision of the

Court of Appeals is in conflict with the decision of this

Court in Waterman v. Mackenzie, supra, and with a de-

cision of the Court of Appeals for the Second Circuit.

The Waterman case has been distinguished by respond-

ent in its answer to petitioner’s reason 2, above. The

Second Circuit case, Overman Cushion Tire Co., Inc., et

al. v. Goodyear Tire and Rubber Co., Inc., 59 F. (2d) 998;

cert. den. Kelly-Springfield Tire Co. v. Overman, 287

U. S. 651; was likewise a suit for infringement and likewise

was decided on legal, not equitable, principles.

Petitioner’s Reason 4 (P. B. 21-24):

In substance, this reason is that the Court of Appeals

used faulty reasoning when it considered a mortgage of a

patent to be analogous to a mortgage of real estate. It is

implicit in this reason of petitioner that the Court of Ap-

peals erred in finding that it was ‘‘otherwise provided in

the mortgage’’ that respondent was the real party in in-

terest, an indispensible party.

The discussion of mortgages by the Court in Water-

man v. Mackenzie, supra, is much more lengthy than peti-

tioner indicates (P. B. 22). The Court devotes about two

and one-half pages to the subject (pages 258-260 of 138

1. “There can be no doubt that [the mortgagee] is ‘the party interested either

as patentee, assignee or grantee,’ and as such entitled to maintain an action at

law to recover damages for an infringement; and it cannot have been the inten-

tion of Congress that a suit in equity against an infringer to obtain an injunction

and an account of profits, in which the court is authorized to award

when necessary to fully compensate the plaintiff, and has the same power to

treble the damages as in an action at law, should not be brought by the same

ferone R. S. §§ 4919, 4921; Root v. Lake Shore & M. S. R. Co., 105 U. S.

— EI

Argument 11

U. S.), and compares the situation of a mortgagee in pos-

session with that of a mortgagee out of possession. The

right to bring suit depends generally on the right to pos-

session and this was the background for the holding of the

Court that recording of a patent assignment is equivalent

to delivery of possession (‘‘unless otherwise provided in

the mortgage’’). Again, it is pointed out that the Water-

man case was a suit for infringement under different sec-

tions of the patent statutes.

Petitioner’s Reason 5 (P. B. 24-27):

In substance, this reason is really three reasons: (1)

The Court of Appeals erred in finding that respondent and

R. F. C. had agreed, inter partes, that respondent was the

proper person to bring such a suit as this; (2) The Court

of Appeals erred in its construction of the term ‘‘any ap-

plicant’’ as used in R. S. 4915; and (3) The decision of the

Court of Appeals in this suit is in conflict with a decision

of the Court of Appeals for the Fourth Circuit.

(1) Respondent has already shown (supra, pp. 3-5)

that the Court of Appeals had good and sufficient bases for

finding as it did (R. 50-51).

(2) The Court of Appeals did not have the benefit of

briefs of counsel on this point. While petitioner may be

correct in the construction it suggests, the Court of Ap-

peals expressly made its own construction an alternative

basis for reaching a result later reached on other grounds

(R. 54-55).

(3) The Fourth Circuit case, Mas v. The Coca-Cola

Company, 163 F. (2d) 505, held that a R. S. 4915 suit was

subject to the incidents and limitations of an ‘‘ordinary”’

equity suit (specifically, ‘‘unclean hands”? but, presumably,

including the Rules of Civil Procedure). Respondent

agrees, and so did the Court of Appeals for the Third Cir-

cuit (R. 55). There is no conflict here.

12 Argument

Petitioner’s Reason 6 (P. B. 28-31):

In substance, this reason is that the Court of Appeals

improperly decided that R. S. 4915 applied only to missing

indispensible parties defendant and that this is an impor-

tant question of Federal Law which has not been, but

should be, decided by this Court. Respondent earlier in

this brief (p. 7) has given the argument opposed to the

applicability of the statute to missing indispensible par-

ties plaintiff.

While this question may be important to petitioner, it

is not important from the point of view of this Court be-

cause, although the section has been in force for many

years, the question has never before been raised, as far as

the reported decisions indicate, and none are cited by peti-

tioner. All of the cases involve missing indispensible par-

ties defendant, none involve missing indispensible parties

plaintiff.

Petitioner’s Reason 7 (P. B. 31-37):

In substance, this reason is that the Court of Appeals

‘thas gone so far astray from the accepted course of ju-

dicial proceedings’’ that this Court should exercise its

supervisory powers and give a decision to clarify the situa-

tion. Four examples, denominated by petitioner (a), (b),

(c) and (d), are given. These will be commented on sepa-

rately:

(a) The Court of Appeals ‘‘contradicted itself’’ by

assuming R. S. 4915 to be jurisdictional and then holding

that it did not apply so as to prevent R. F. C.’s joinder

after six months. Respondent suggests that this is normal

efficient judicial technique. When a party advances what

the court considers an immaterial argument, there is no

point in deciding the validity of the argument as though it

were material—the better way is to ‘‘confess and avoid’’,

by analogy with common law pleading.

——

LAE PRISE ETE SS Pay §

CRE PTs Low

LAPORTE

Argument 13

(b) The Court of Appeals ‘‘ignored settled law’’ as

to when an amendment dates back to the filing of the origi-

nal complaint. Respondent concedes that this is true, in the

sense that the court’s opinion is silent on the subject.

Petitioner ignores this Court’s case of Missouri, K. &

T. R. Co. v. Wulf, 226 U. S. 570, which held that an amend-

ment to the complaint changing the capacity in which plain-

tiff sued was properly allowed after the running of the

statute of limitations. Plaintiff sued in her individual ca-

pacity by right of a Kansas statute, whereas her action

could legally rest only on the Federal employers’ liability

act of 1908 which required the action to be brought in the

name of the personal representative of the deceased. The

Court pointed out that the original complaint sufficiently

averred the negligence of the defendant and the damages

caused and that the amendment did not introduce any

change in substance or set up ‘‘any different state of facts

as the ground of action [emphasis supplied] and therefore

it related back to the beginning of the suit’’ (576).

The Court’s attention is invited to pages 28-32 of the

Record wherein is set forth the Complaint as amended with

deletions and additions indicated. It will be seen that the

‘ground of action’’ is contained solely in paragraphs 6 to

11 inclusive and that these were not amended in any re-

spect whatsoever.

(c) The Court ‘‘took no cognizance’’ of R. S. 4894.

In Gandy v. Marble, 122 U. S. 432, this Court held that

the [then two year] period of R. S. 4894 (the ‘‘abandon-

ment’’ section) applied to suits under R. 8S. 4915. How-

ever, at that time R. 8. 4915 did not provide its own limita-

tion, as it does now. The case is not applicable now on

that point.

This is simply another way of saying what petitioner

has said already: If R. F. C., and not respondent, was the

person who should have brought this suit, then R. F. O.

has abandoned the application.

14 Argument

Petitioner apparently has misconstrued the holding of

the District Court in Biedler v. Photostat Corporation, 10

F. Supp. 628, which it cites as relying on Gandy v. Marble,

supra, to hold an application abandoned. The suit was for

infringement and the holding of the court was that some

claims were invalid while other claims were not infringed.

The complaint was then dismissed on the merits. Further-

more, the language petitioner apparently had in mind (top

of column 2, page 632 of 10 F. Supp.) was a statement of

what the unsuccessful applicant might have done several

years before (at a time before R. S. 4915 contained its own

limitation) but which he never did attempt to do.

(d) The Court of Appeals ‘‘completely disregarded the

public interest.’’ Petitioner first says it has a right to know

within six months whether the decision of the Board of

Interference Examiners is to be final, to which respondent

replies that petitioner knew that it might not be as soon as

respondent filed this suit—within the six months. Then

petitioner says the general public has a right to know when

the monopoly of the successful applicant is to end, and to

have that be as early as possible, with which respondent

agrees.

Petitioner says that over two years and four months

have elapsed since the interference decision and ‘‘R. F. C.

is not yet a party.’’ Of course, that depends on one’s point

of view—from respondent’s point of view R. F. C. became

a party on June 9, 1947 (R. 24) only eleven months after

the decision of the Board of Interference Examiners (R.

6). Also from respondent’s point of view, petitioner has

delayed these proceedings over nineteen months by insist-

ing on what respondent considers unsound contentions and

what the Court of Appeals called ‘‘a matter of no legal im-

port to [petitioner]’’ (R. 56).

Conclusion 15

CONCLUSION.

Respondent respectfully submits that the Court of Ap-

peals had good and sufficient bases for holding under the

terms of the assignment between respondent and R. F. C.

that respondent was the real party in interest and had

properly brought this suit within the period permitted by

R. S. 4915; that the statute did not prohibit the later

joinder of R. F. C. upon its absence from the suit being

questioned ; and that this case, having been decided on the

basis of its own peculiar facts, is not one of general impor-

tance which this Court ought to review, there being no con-

flicting decision by any court in any circuit or by this Court.

Txomas Coocn,

212 Delaware Trust Building,

Wilmington 28, Delaware,

Attorney for Respondent.

Frankuin M. Warpen,

Casper W. Ooms,

Of Counsel for Respondent.

Dated at Wilmington, Delaware, January 20, 1949.