263 F. 639 | D.C. Cir. | 1920
This appeal is from the decision of the Commissioner of Patents in an interference proceeding awarding priority of invention to appellee, Shelly.
The invention relates to a stop mechanism by means of which the turntable of a phonograph may be automatically stopped when the reproduction of sound from the record has been completed. It is unnecessary to consider the invention or the counts of the issue, since the appeal turns upon questions of law.
Appellant, Duncan, alleges conception of the invention in May, 1914, and reduction to practice in June, 1914. He filed his application for patent April 21, 1915. Appellee, Shelly, alleges conception, in April, 1914, reduction to practice May 17, 1914, and a written description of the invention June 15, 1914. He filed his application April 5, 1916, and is, therefore, the junior party in this interference.
It appears that in May, 1914, Shelly produced an automatic stop for a phonograph, which was experimented with and proved to be op-, erative. There is a division of opinion in the .tribunals below as to. whether it amounted to a reduction to practice of the present invention. But in our view of the case this is unimportant. After this May test appellee caused an application for a patent to be prepared, which was never filed. This device, the structure of which is not clearly disclosed, was not preserved. In regard to it appellee testified in answer to a question:
“No, sir; 1 did not intend to use these parts over again, because they were too bulky and clumsy. These parts were simply used to show that my theory or experiment was right.”
The following question was then propounded:
“By ‘no, sir,’ as used in your last answer, you mean that you were not much concerned with what became of your original stop mechanism. Is that right?”
To which he answered:
“That is right.”
It will be observed that it was at the time Shelly was experimenting with the invention that Duncan came into the field and with commendable promptness reduced his invention to practice and filed his application. On April 19, 1916, Duncan granted the Thos. A. Edison, Incorporated, a license upon a royalty basis to use the invention on its
According to his own record, Shelly did nothing from June, 1914, until February, 1916, when he made a second machine, which was submitted to the Edison Company about February 18, 1916, and which was purchased outright by the Edison Company for the sum of $540 by contract dated March 9, 1916. He also agreed to execute any applications for patent which the Edison Company might prepare and have prepared.
“It Is the settled doctrine of the Court of Appeals for the District of Columbia that when an inventor perfects and reduces to practice an invention, and fails for an unreasonable period to take steps to give it to the public, and until some one else has independently invented and patented it, the earlier inventor forfeits his rights to a patent as against the later inventor.”
The same rule applies, also, where a patent has not issued to the other party. Gordon v. Wentworth, 31 App. D. C. 150; Howard v. Bowes, 31 App. D. C. 619; Dreckschmidt v. Schaeffer, 46 App. D. C. 295; Brown v. Campbell, 41 App. D. C. 499.
The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required.
Reversed.