Dirkes v. Eitzen

Tex., Bonner, Houston, Wm. N. Gordon, Tex., Beaumont, W. D. Orleans, Andrew Martinez, R. of New La., appellants. for Lloyd Wright, both Cobb and Morris J. La., appellee.

of New Orleans, for SIBLEY, HOLMES, Before and Mc-

CORD, Judges. Circuit

PER CURIAM. judgment will enter court below respective their con- due under the the balance terests in tract, legal $100,000, computed This interest shall interest. on May $100,000 from $50,000 Interest day due. became 1935, the due $50,000, which remaining .became proceeds derived from the payable lease, shall be produced from oil amount a sufficient

computed from time sum. The produced pay this oil was regard. Since opinion is corrected in who concurred judges neither motion rehearing, the desire therefor denied. Judge, dissents.

SIBLEY, Circuit (Patents) A. C.C.P.

DIRKES et al. v. EITZEN. Appeal No. 4054. Appeals. of Customs and Patent

Court

May 3, 1939. Eugene Brown, Washington, C. of D. C. (M. Reynolds Presson, of and N. F. of both J. City, appellants.

New counsel), York Drews, City (Hans Gustav of New York Briesen, City, New counsel), of York of appellee. GARRETT, Before Presiding Judge, BLAND, HATFIELD, LENROOT, and JACKSON, Judges. Associate JACKSON, Judge. Associate This is an a decision Board States United Pat- affirming ent Office decision the Ex- awarding priority aminer Interferences invention of the matter appellee Eitzen. 71,872 The interference No. patent appellants, 1,968,818, a August No. dated 7, 1934, upon application an Serial 554,574, 1931, August 1, No. filed and a application appellee, reissue 745,600, Serial No. September 26, 1934, patent filed September 8, 1,822,769, 1931,up- No. dated application 357,448, on April Serial No. filed 23, 1929. Appellants junior party. are the originated 1, three counts as claims 3 and 5 patent appellants. The interfer- 6, was ence declared December 7, 1935, January On an interference No. 69,776 pat- declared between appellants application ent 338,065, pellee, 7, February Serial No. filed single in which interference the was claim of patent. count the said interference, 69,- There was another No. 7, 1935, January also volving the same application of Decker, an Serial one W. James 253,306, February 10, 1928, filed which interference the count patent. applications 9 of claim Eitzen and Decker, in the said former inter- appellee, Terences, peals. The examiner’s was filed statement Eitzen, are December November owned or controlled board reversed the decision of interest. examiner right the to make the three claims which pre- the interferences In both former copied he had appellant’s patent. appellants alleged liminary of statement Whereupon present the interference was filing subsequent the conception date of declared. the Decker and dates of Eitzen and both Appellants, 12, junior party, did not al- the February on Examiner of Interferences lege prelim- conception a date of in their why 1935, cause issued order to show inary prior filing of statement date be en- should not judgment-on record original application appellee of and the On and Roberts. against tered Dirkes n why priority usual order to show cause 1935, motion 14, day of the March the last appellee should not was is- be awarded to a .motion period, filed and Roberts Dirkes against of sued Examiner In- them inter- former of said to dissolve in each moved, Thereupon, appellants and terferences. ground Eitzen on that ferences on several dissolve the interference respectively to make Decker grounds, appellee was ground being one that counts issue. estopped of make reason 24, 1935, May 22, 1935, re- May On and pri- proceed of said failure to one spectively, Primary of Examiners Ex- parties or interferences between the same amining 7 16 the mo- granted Divisions and patentable relating and Appeals Upon appeal, of tions. the Board provisions matter, in accordance with Primary Ex- the decisions of the reversed In view 109 of the Patent Office. of Rule 8, 1936, Examiner April aminers on necessary to set is not of our conclusion it judgment against of entered Interferences upon the mo- grounds which other out the 1936, 14, April and Dirkes and Roberts on 13 necessary to was based. Neither tion May respectively, in On both interferences. of interference. set out the counts 2, 1936, appeals Board were taken 1936, which, 27, of Appeals November on and motion to dissolve was denied The of Examiner of affirmed the decisions Appeals appeal reversed the Board priority Eit- Interferences and awarded Primary on Examiner decision of respectively. zen and Decker 109, Rule hold- ground estop- ing follows: the matter as “On appealed to this Dirkes and Roberts then although Eitzen pel, that considered court, interfer- the record of the said two original al. dis- prior et rec- ences into consolidated involved, invention he failed closure Ap- The of the Board of decisions ord. peals, timely incorporate motion make Decker, re- Eitzen and into an interference between these counts spectively, to make the counts were entitled - period during parties the motion affirmed this Court. issue were parties which these interferences and Dirkes al. Dirkes et al. et v. Eitzen is now es- involved were C.C.P.A., Patents, Decker, 849, 25 96 F.2d counts topped these to contest the 1176. party Dirkes et al.” said, it From what has heretofore been on present rehearing Upon petition interfer- will be observed that the 1935, placed 6, ence, appellants co- had been un- ground December the two show cause pending the Patent Office with der an order to 16, 1937, September apply the Board could not interferences until a case former decision and Appeals it was noticed reversed the date not lie for the said peal to this court. petition and awarded set forth reason appellee, desir- In appellee. invention to The priority appli- ing an filed his reissue petition then board denied 26, 1934, September including cation from its rehearing decision for a 1, 5 of the said therein claims appellee awarding forming appellants. The claims was taken. finally re- the interference counts of we are under the cir- proceeding the ex- Since in an ex jected appellee heretofore set November cumstances On December aminer failure 19.34, appealed Ap-. because to the Board move provisions of Rule a basis for under the another interference between of this the necessary other issue same Temple to discuss Ex Goodrum, appeal. supra; Frickey Ogden, supra; Departure Manufacturing New v.Co. ap reissue Robinson, 504; App.D.C. Capen, re In having September pellee filed heen App.D.C. 342; Wasserfallen, In re pending application was a App.D.C. 367, 826, 828; Application 298 F. period for said of both the entire motion Doble, App.D.C. 10, 16 F.2d 350.” expiring interferences, mer When 69,- the Board of made its March 1935. Interference decision herein it was without benefit as is was between the of our Avery Chase, decision in v. 101 F.2d present proceeding and while 205, Patents, C.C.P.A., 26 -. In that 69,956 appellants and these was between No. case we party a Decker, that when to inter- an application was Decker one the ference proceeding fails the motion by the interests as the owned same bring to forth claims which should application. have been determined in the interference question but that the There can he has forfeited his to claim the sub- in one application and those involved here ject irrespective matter involved, of the interferences could or the other question of priority. pro- single interference merged in a been lengthy In view of the an- detailed applications each three ceeding. Since the alysis pertinent of the authorities set out ap- from the took claims Avery Chase, supra, v. we do not deem no doubt that the pellants can be necessary opinion to it extend this a aft- assignee have known that common estoppel. further discussion of declared the prior interferences er the pend- application was then involved herein areWe far that as pertained it to ing and deemed that concerned, observance of Rule 109 is parties, the same subject matter between holding view of our su 69,776 in- directly in interference pra, junior party is immaterial that the it ownership in directly by reason of common was under order to show cause. The an 69,956. interference No. fundamentally pro order to show cause is requires merely junior rule and cedural under clear us that decisions It is to why, record, party to show cause com- court it was of this priority should be awarded to the senior not applica- assignee have amended its mon appellee party. give This does not interfer- the said former tion in either Rule The case of Ex ignore 109. adding its instant ences 284, Johnson, Quarterly 20 relied Patent of un- plication in order avoid evil decision, upon by in its second is the board litigation Rule intend- necessary 109 is controlling In case. not stop. ed to find in we are unable to deed Johnson law was set The on this why case, supra, any or other a reason Austin, 40 case of In re changes the an order to cause status show 1202, Patents, 759, C.C.P.A., 756, F.2d parties Rule 109. under Neither has * “* * long 1209, has as follows: change reason for occurred sound to re practice in Office been the object prevent of Rule is to to us. if assignee, desires to quire a common litigation. unnecessary and vexatious priority, bring into raise party under an order is to show fact that a party, is all to which it applica presents no obstacles cause which patents, and claims applications, rule. tion of inter should made basis it deems impressed areWe with the con parties and the other between it ference appellee to the effect once a final tention Goodrum, Temple Ex thereto. ly rejected appealed has 176 O.G. November decided 63(d), subsequent under the board Rule 70; Frickey Ogden, C.D. 1912 C.D. 19, under Rule connection with motion Furthermore, if O.G. Vol. prohibited is under another comply fails to an interference Rule 95. Patent Office relative rules of the , nothing presentation of such it is There is the rules of claims estopped presenting pre- from or the statutes them Patent Office thereafter proceeding party, in a For the eludes a while reasons herein we are set forth rights Rule convinced 63(d), protecting from the board should have junior conforming provisions parties of Rule awarded Dirk- . be- es and has been declared Roberts. after an interference parties. of Rule tween the It The decision of the Appeals Board of expedite procedure in interferences accordingly reversed. of the Patent Office Reversed. in all inter require to partes proceeding. controversies in a BLAND, (dissenting). Judge Associate quite that on December true respectfully I must dissent parte appeal ex majority reversing decision of the de- only remedy available taken it cision the Board of protect rights. to him to No interfer- that Eitzen was make ence time be- declared at that because them under the fact he did However, tween terferences rule 109 one of two former January 1935 were interferences. aforesaid, certainly opin- appellee was as ion my purpose is not to here discuss parte appeal con- claims on any great my length chief reasons for be- subject matter patentable tained common lieving opinion majority is un- appellants. Otherwise with great sound since in de- those views are appeal. Since would not have taken opinion tail in dissenting stated of Pre- duty un- opinion it was was of such Avery Judge myself siding Garrett and in of this court der the decisions C.C.P.A., Chase, Patents, v. 26 F.2d have moved of the Patent Officeto there, position -. We took and I take period which during the motion amend here, position application the the that the expired in with March accordance Avery doctrine in placed This not him would have Rule supra, wholly was unwarranted was the disadvantage for reason at a unpopular which extension doctrine have add should motion to strongly (Jenks v. has intimated examiner he again been denied 654, C.C.P.A., Patents, Knight, 90 F.2d appeal the inter in could have taken an extending. 1227,) it was in favor of not Appeals. partes proceeding the Board pointed opin- dissenting in practice* the board It was our As understand the we ion in the that rule action on the v. Chase case deferred would then have already adopted, permissive was rule taken and decide a partes appeal, applied in there- and when doctrine was first the inter issues bring of Rule forward a clear intent connection with failure by carrying out the litigation settling upon all claim under the rule it based expeditifig was 109 of is, sin- ground judicata of res what had issues between of the —that Later, adjudicated. doc- actually been proceeding. gle was to include trine modified extended ignore the appellee elects If the equitable estoppel, so-called which had a its basis the observing estoppel in not possible effect of pais. respect In that' prepared to abide be he must Rule 109 applied in was similar doctrine to that not a under Rule A motion result. Hepburn, App.D.C. 86. At Mason pro is a of interference. declaration only not es- later toppel was held that dates or not matter, whether which determines ceeding apply where the matter had been ad- subject patentable common there and whether Wilder, judicated as it was Blackford v. proposed the counts not or App.D.C. (the ques- on the first case in an interference incorporated should be applied subject that it all tion), but mat- adjudicated been ter could have in an Subsequently, be interference. extend- contention If the matters, have ed that would when the affirmed, which could been adjudicated not partes might go on as ex issue could inter considered ensuing particular appeals interference if the claims were proceedings here, brought so involve, happened as to subse- not about which quent, partes another proceedings declaration of unnecessary inter other, adjudicat- issue could have been which the an undue burden place Office and courts. ed. party, the goes majority But no case as far as the Obviously, if any right gone has in this case where the mo- a doctrine of estoppel for failure to come tion interferences the forward under rule 109 it is based disputed matter of the counts had theory, or least, should be at unpatentable party against to an ought permit- sought. majority whom the The ted to conceal inventions of op- which his opinion states: “It is clear to that under ponent us apprised is not and avoid an inter- the decisions of this court it was the ference at a time should seek to assignee amended show and then later be allowed application either of the said former claims, which, invention of by adding interferences the claims of its ordinary circumstances first made in order to avoid the evil another. unnecessary litigation that Rule 109 is As I point shall out, hereinafter based stop.” intended to facts, some of are not cited or board indicates last discussed majority, Eitzen, on this that it was of the view that the instant is- record, has position never stood in either sue could have been tried concealing anything or attempting to avoid the declara- interferences an interference for of avoid- tion of another interference such as the ing the trial of an issue might which he lose. necessary. instant one would have been my mind, To facts this case recit appellee argues majority ed suggest, plainly too could not have been tried without the dec- argument, call for extended that no kind of of an additional laration interference. estoppel known to properly the law can my No reason been called to atten- has imposed against Eitzen. It seems unusual why, corresponding if the claims tion ly impose clear to that the doctrine under counts, they had been allowed radical, circumstances of this case presented could not have been and is- unwise and unsound of extension a doctrine adjudicated prior sue in the interference in which needs restriction rather than exten and the sole pointed IAs Avery Chase, sion. in out v. But, in it clear that supra 216], F.2d get in order away to [101 in interference which Decker was a party, from the mischief that the extension of though assignee there was a common even bringing doctrine was about' — applications, for the Decker and Eitzen results “not consistent with the doctrines instant could not have been tried and equity which it rests” —the Patent separate interference would have been de- at Secretary Office the solicitation of the This, think, I clared. is the well-settled adopted of Commerce has rule 116. In the any event, in the Patent Office. In case at bar the Board of has re if the claims stood had allowed and had fused extend saying to the doctrine in brought forward rule 109 under in ei- might put substance have what in a ther preliminary additional similar rule to rule 116. Its reason not required statements would have been since applying estoppel up case was based matter of the claims con- alleged conception on the fact that the date tested in the forms no subsequent filing of Dirkes was to et al. part issue. date the Eitzen that Eit Chase, While Inin re 71 F.2d 21 C. estopped should be for not bringing zen not C.P.A., Patents, 1183; Long, In re 83 F.2d claims when Dirkes et al. stood C.C.P.A., Patents, 1078; v. Jenks order show under to cause. supra, Knight, and International Cellucotton position Avery I took the Coe, App.D.C. 248, Products Co. v. 85 F. supra, had the Patent Office no 869, by special circumstances, 2d reason estoppel applies say rule necessary here, not discuss the doctrine apply. party If the when it does not stood applied, was not in several oth law, court, Office the Patent rule Austin, er cases of this such as In re might give would Patents, notice that it it C.C.P.A., 40 F.2d Shimer, certain circumstances but if 556, C.C.P.A., under it In re 69 F.2d Pat could ents, 979, existed all effect not be avoided greatly the doctrine was extended promulgation mere of a rule. language some these decisions that, me if restriction rather indicates me that it was extended seems to than much desired, proper. further the rule there is than was extension declining apply the logic copying about as much doctrine of the Patent Office them for the he was party requested of. to a senior interference and show junior party order to stands under interfer- before the other cause as circumstances ences were there is Patent Office declared. The announced, outlined before courts considered to an rule 116. the claims with .the view, adoption that it won rule interference in the he had and when Office, recited under the circumstances it the Patent as Alexanderson, discretionary authority do, 69 F.2d rule. See In re declared Patents, 541, C.C.P.A., copied 983. interference. When the claims pointed duty of the out that it was the by further ex- be conceded that previously Patent Office decisions, as done tending certain court an interference et al. Chase, supra, estop- case of patent allowed which cov- par- pel spelled against a senior out may application. ered the Dirkes et al. ty though by virtue of the record dates even junior .party is show In under order to view of of the Patent Of- attitude why cause, particular to me the Pat- fice and of obvious it circumstances course it has in the this in- ent has seems clear me it is Office taken equitable proceeding, and in Ex bar Eitzen because he did John- son, Quarterly forward claims Patent when no trial of Commerce, Secretary priority and issue of profession, could have Un- resulted. properly became der the obviously the Patent Office itself circumstances did not gradual rely clearly justifiable exten- alarmed at the results belief that if which, many in- proceeding in so he won of the doctrine he would sion stances, first be entitled to depriving inventor in an interference win grounds. rights upon kept be declared. The faith legal insufficient Patent Office him. When the claims were allowed may in fa- be said Regardless all they they declared the interference as Office to of the Patent vor of the refusal expected should Is done and were do. against party a senior doctrine junior apply the to be now the Patent Office under order stood when the authority exceeded its and that the first my cáuse, is sufficient for I -show think (and law) ventor in penalized I fact think in is to point case .purposes here futile, doing for not unnec- has ever def- Officeor the courts thing essary bringing claims This, my contrary. to initely held to the an interference trial as to when hold- mind, conclusion that the warrants the could not have resulted? any beyond majority goes decid- ing of the Eitzen, majority when case, is extension admits that and therefore an ed only parte appealed thing ex did the he unpopular doctrine. he most this protect rights. do He availed could to is believing My chief reason right granted of a It himself statute. apply the doctrine to 'Eitzen to erroneous practice of suggested it is the the Pat- and rule under rule 95 because Office, proceedings interference ent be found patentable subject matter must involving parte instituted claims ex- are appeal, applications involved be- be the claimed suspend parte appeal the ex un- may any interference be declared. One fore pro- final interference til ceedings. decision the for the bring forward claims required law Whether there warrant in into getting an interference. party ex depriving right a of his to an But, provide there shall the rules where appeal parte manner I need not dis- patentable until common be no interference here, I feel win- those cuss certain exist, found and it is subject matter is appeals under such circumstanc- ning their Primary definitely by the Examiner deprived of the es fruits should not commonallowable sub- there is no suggested the victory their manner matter, ject logically how be held can majority. applicant of such an is the that it Concededly, Eitzen Of- forward his claims. Eitr disallowed upon theory, proceeded hap- patent al. as upon seeing Dirkes et. fice both pens zen immediately if subject proceedings, like claimed He in numerous matter. party appealing ap- ex try won his to avoid an interference. He the copied opportunity try- peal, have the he would sought interference when priority in an ing inte. ference to be time .other claims at .-when wa.s get Patent Office knew his al- could told declared. The into. .He subject broadly the patent lowed claimed Some of the decisions, like In re Shini- the two er, knew supra, matter these counts. point stress the that the doctrine proceeding when interferences were other is a wholesome prevents one because it It did parte appeal not multiplicity his ex was decided. of proceedings appeals. as the then doctrine Eitzen had appeal taken one had done. it should have majority holds in effect right to take it before had been presented declared. If he had parte ap- As the effect of Eitzen’s claims stated, at majority time the peal, what I think it is well to remember course no interference would have been de- Chap- Supreme was man Court clared on these claims and since he had al- Wintroath, al. v. U.S. et ready expense been to the of preparing a 234, 236, 491, quoting 40 S.Ct. L.Ed. appeal record for parte case, in the ex it is United from the earlier-decided case of not seen how multiplicity the undue of liti- Co., Telephone v. American Bell States U.S. gation argument applies in the case. instant 144: 17 S.Ct. L.Ed. Moreover, upon if the ex patent seeking “A under the rejection examiner’s of the had claims pro- may their statutes visions, avail himself of all affirmed, no litigation further would have may deny him and the courts necessary. ques- of a These are the benefit one. purely statutory In this natural Eitzen (or tions not of right. Congress, but’ his assignee) won the two fixing instead of seven- interferences and as the party, teen, senior power years fix had the under the in the Pat- patent. disregard ent Office he is life No can entitled to have allowed to him any statutory provisions respect subject all common these matter in the two applications. ground judgment that in matters they its remembered that prejudicial patent 1,822,769, are unwise or in- in Eitzen’s Sep- 8, 1931, public.” terests of tember of which Dirkes et al. must knowledge had full in view of its cita- Unquestionably, upon the record tion as art in Dirkes et al. Eitzen is subject the first inventor of the plication, he enough broad matter of pending counts. Has he done cover the Dirkes et al. disclosure. The ex- anything in law to warrant taken definitely aminer the record before us away judicial him Is fiat? going held after into the matter great with doctrine of to be extended in cases care, patent that the Eitzen covered broad- like this where tribunals divide ly the invention disclosed the Dirkes et question it and where patent. pointed al. He out where the counts question is so doubtful that Board bar are more limited than reverses itself reconsidera- patent. After Eitzen had been diligence tion? kind of What and fore- granted for the broad mat- sight party litigant must a in order al. ter et aft- keep up dangerous swift and devel- had er he won two interferences as the opment unpopular of this doctrine? In party upon showing senior the clear that supra, it sufficiently application filing date far-fetched against doctrine by al., claimed date Dirkes et and after he clearly who came forward and showed took an ex and was allowed the separate was the first inventor in a issue, possible upon any claims in is it that up terference set the Patent Office tri- equitable theory he can be from very purpose bunals of determining claiming proceed- the matter him adversary, and his ing? majority case the going even The fact when the holding further than case that two interferences granted that it is his were declared Eitzen had been patent, in interferences which were declared which Dirkes al. had after full et knowledge, Primary containing had been told enough Examiner broad possibly them, application, that he could not cover the et al. seems not- to Dirkes important withstanding consideration, the fact me to be an the mo- to vigorously regarded evidently tion an he was contesting in which is not so parte appeal majority since no is made have the mention claims for the of an is because of these facts that urges interference. matter. It This, my way thinking, pertinency here de- running Eitzen estoppel. Knight, -wild with the doctrine of this su- cision Jenks Ap- pra, subject Court allowed his issued mat- the decision Chap- applica- ter peals of the of Columbia covered the et al. District F. tion. Beede, App.D.C. responsibility such cir- What man v. against a placed cumstances was Dirkes et under? where was not al. had party for reason that the sole So, up in summing me seems to inven- broadly claimed beginning apply either basis does not on the rule cases the in those tion. true judicata pais res or nor can after more copying claims reference to with com- on account the failure to involved. elapsed was years had ply than two with rule 109 since was a definite Eitzen hold unjustifiable wholly no com- seems there was allowable majority claim subject mon matter at the time failure estopped because estopped. says he had involv- where Eitzen No case stood something he had matter, comparable bar has ing facts to those at allowable way majority my cited and been always invention broad claimed thinking decision was sound According of the board’s patent for it. allowed be reversed. and should not examiner, Dirkes et holding of the they were the time known al., joins GARRETT, Presiding Judge, contests losing interference in the two foregoing dissent. claimed Eitzen

Case Details

Case Name: Dirkes v. Eitzen

Court Name: Court of Customs and Patent Appeals

Date Published: May 3, 1939

Citation: 103 F.2d 520

Docket Number: Patent Appeal 4054

Court Abbreviation: C.C.P.A.