278 F. 454 | 2d Cir. | 1921
(after stating the facts as above).
Curtiss has sought to meet this burden by new, and, in our opinion, conclusive, evidence as to when lie first reduced a hydro-aeroplane to practice by flying in one, and his counsel have not failed to point out dnat the Patent Office result was reached by a majority only of the District Court of Appeals, reversing the decision of Commissioner Ewing. We think that at the close of testimony in the District Court this case was ready lor decision upon a record new in several senses, and, as to the trial court’s liberty to reach its own conclusions, closely resembled Laas v. Scott (C. C.) 161 Fed. 122.
All discussion of the matter at bar, or of the previous litigation is unfruitful, until a clear understanding is reached of what each party says he invented, which is the same thing as interpreting the claim in suit. Here we agree with the District Court of Appeals in saying that it “is not a combination claim, calling for elements in combination with a hydro-aeroplane, but for a hydro-aeroplane containing certain elements.” •
As was pointed out in Hill v. Wooster, 132 U. S. 693, 10 Sup. Ct. 228, 33 L. Ed. 502, it is the duty of the.court, in proceedings under Rev. Stat. § 4915, not only to decide priority as between rival claims to invention, but to ascertain whether the parties or either of them has
All patentable inventions are defined by claims, but described, explained and disclosed by specification. The element of a hydro-aero-plane, about which this contest rages, is in claim language “a main water-borne central boat structure”; but, as the specifications show, there is a great distinction between Curtiss’ “boat structure” and that of Janin, and the vital questions, not only in this equity suit, but ever since interference began in the Office, is whether this obvious distinction entails a legal difference.
Curtiss proved before this suit that he reduced to practice by flying in a hydro-aeroplane on January 26, 1911, at San Diego, Cal.; and we agree with the court below that he has in this suit proved that he did the same thing with the same machine, but for shorter flights, several days earlier — as early as January 24th. In his specification of August 22, 1911, he describes the boat body of this reduction to practice, which was confessedly operative.
Janin’s was admittedly a “constructive reduction to practice,” consisting of filing his specification on the same-January 26; but, as (according to the District Court of Appeals) he had “conceived” his hydro-aeroplane as early as 1907, to him was awarded the invention. Some consideration of these words and phrases seems necessary. We agree with Mr. Macomber (page 785) that—
“The Patent Office rule that the filing of an allowable application is a constructive reduction to practice' is only the expression in another form, of the thought that the application for a patent, if it sufficiently describes the invention, is conclusive evidence that the invention was made at least as early as that date.”
As for the word “conceived,” it means that the inventor .“formed a distinct and correct notion of” whatever he thought he invented (Cent. Diet.), and its value in patent causes is fully stated by Eurton, J., in Standard, etc., Co. v. Peters, etc., Co., 77 Fed. 630, 645, 23 C. C. A. 367.
“first conceives, and in a mental sense first invents, a machino, art, or composition of matter, may date Ms patentable invention back to the time of its conception, if he connects the conception with its reduction to practice by reasonable diligence on his part, so that they are substantially one continuous act.”
Therefore, if it be admitted that defendant Janin had for years been conceiving hydro-aeroplanes, the question remains whether the device he disclosed on January 26, 1911, was something that would or could rise out of the water and fly; for we again agree with the District Court of Appeals in holding that—
“The law is well settled that where an invention is designed to perform a definite purpose, a construction embodying it must be capable, when operated, of performing that purpose.”
Janin disclosed no boat body; by his own evidence he never conceived a boat body, other than one like that of a swift small vessel (e. g. a torpedo boat). He speaks, even in his 1913 specification, only of a ‘‘hull-like body,” and his drawings only reveal the freeboard of something long and narrow of historic boat shape. Whatever may have
We agree with the lower court in finding in substance, that any body even suggested by Janin cottld not be lifted from the water; we do not agree that there is any evidence of his even thinking of using hydroplaning surfaces to lift the “hull-like body,” other than the stabilizing floats to port' and starboard which are common to both parties. Nor can we agree with the reasons finally assigned in the District Court for still preferring Janin, viz.: (1) If a hydroplaning bottom be given Janin’s boat, it would be a hydro-aeroplane, and there were such bottoms known to the art; (2) Janin had the right to “presuppose” or “assume” a proper boat structure. Both these reasons are insufficient, because they necessarily hold that the proper hydroplaning bottom, or the “assumed” boat, would and could be supplied by the man skilled in the art without the exercise of the inventive faculty.
There was no living man skilled in the art of hydro-aeroplaning, because (on this record) no one had ever flown from water, except Fabre, and he could only return by bi-eaking his machine; and hydroplaning did not teach hydro-aeroplaning. Men knew how to skim over water, but (as is sufficiently shown by the fact-findings below) It required much inventive skill to enable the hydroplane bottom to leave the water, and take “the last step that counts,” or to introduce into a long boat the “break” subsequently utilized.
Decision, both in the District Court of Appeals and the lower court, has rested on Janin’s “unchallenged reduction to practice of January 26, 1911.” It seems to have gone unchallenged in the interference, argument was rested on Curtiss’ earlier achievements in 1910; in this case it is successfully challenged, and we find that Janin reduced nothing to practice, because what he conceived and disclosed is, as an hydro-aeroplane, wholly inoperative, for it cannot get out of the water; the rest is immaterial.
Decision is grounded on this point, though we may say, further, that in view of the proven unreliability of Janin and his witnesses, we think no reduction or conception can be assigned him earlier than January 26, 1911, in which case Curtiss antedated him by at least two days.
Decree reversed, and cause remanded, with direction to grant the prayer of the bill. Under the statute, there are no costs; mandate to issue forthwith.