241 F. 252 | 3rd Cir. | 1917
This is an action for infringement. The patent in suit (No-. 1,120,462) was granted Powell Evans, December 8, 1914, on an application filed March 13, 1914. The defense is invalidity by reason of an alleged prior invention of one Arthur C. Rowley, whose application for a patent was filed May 22, 1913 (Serial No. 769,139) and1 is still pending. To overcome the effect of the prior application of Rowley (the defendant’s inventor), the plaintiff claimed and produced evidence to prove a prior conception and disclosure of his invention of a date not later than November 21, 1912, and a reduction to practice by January 1, 1913. Opposed to this, the defendant claimed that the invention of the patent had been conceived by Rowley even before that date and had been reduced to practice in 1905, and claimed a further disclosure and reduction to practice about November 6, 1912. The trial court found that the date of Evans’ invention was not before January 1913, while that of Rowley was some time prior to November 21, 1912, and accordingly held the patent invalid. 229 Fed. 1007. Error is charged to- the court in failing to find November 21, 1912 as the plaintiff’s date of invention, and in finding the date of the defendant’s invention any time prior to November 28, 1912.
Two questions are raised on appeal; one is a question of priority of invention, a question of fact as close as the dates upon which it turns; the other relates to the rule of evidence by which the question of priority is to he determined.
It appears that the applications of Evans and Rowley, involving the identical subject matter, were pending in the Patent Office at the same time. The conflict between the two was not observed, and through inadvertence the Evans patent upon a junior 'application was issued over the Rowley senior application without interference proceedings having been declared. Upon discovering its mistake, the Patent Office decláred an interference between the issued Evans patent and the pending Rowley application. In the meantime this action was brought for infringement of the patent, raising here the precise issue framed by the declaration of interference. The interference proceedings are still pending in the Patent Office, but have been suspended, with the approval of the Commissioner of Patents, to await the decision of this case, whereupon it is stipulated the losing party will file a concession of priority in favor of the other party, and thereby dispose of the interference.
While it thus appears, that we are really trying an interference issue raised but not prosecuted in the Patent Office, the defendant urges that we should not apply the rules of evidence there applicable in such an issue, but that Evans, because of the inadvertent issue of a patent to him upon his junior application, must overcome the senior application of Rowley and establish beyond a reasonable doubt his prior date of invention just as though Rowley had been regularly granted a patent on his prior application, sued Evans for infringement, and Evans in defense had denied the validity of the patent because of anticipation or priority or want of novelty.
We do not understand this to be the rule in respect either to the junior or senior applicant. Though a patent has been granted Evans, the controversy is still one between rival applicants for a patent for the same invention.- Evans, being the junior applicant, receives, and in fact, claims no advantage of position on account of the grant of the patent to him; while Rowley, having nothing more than an application, can claim only the advantage arising from its seniority.
We shall state merely in outline the evidence which we think controls the case.
Evans produced a drawing of a link which he claimed embodies his conception and constitutes his disclosure. Upon the drawing is the date of January 5, 1913. Added to the inference that the date appearing upon the drawing is the date of the conception and disclosure is the sworn Preliminary Statement of Evans filed in the interference proceedings in the Patent Office in which he said:
*256 “That lie conceived the invention set forth in the declaration of interference in or about the month of January 1913; that in or about the month of January 1913 he first made drawings of the invention; that in or about the month of January 1913 he first explained the invention to others; that he first embodied his invention in a full sized machine, which was completed and successfully tested in or about the month of January 1913.”
If Evans is bound by this evidence and is estopped to produce testimony different from1 and in conflict with it, we must hold with the court below that Evans was not the first inventor, for Rowley’s conception and disclosure were concededly anterior.
But Evans explained the date on the drawing (without satisfactorily explaining the damaging admission in his Preliminary Statement) by testifying that he selected the date and put it on the drawing more than a year after it was disclosed, in order to avoid raising an issue with an employer concerning a contract touching inventions, which contract, while nominally in force until December 31, 1912, had prior to that time been verbally rescinded, and that the real date of disclosure was November 21, 1912. Without finding error by the trial court in holding Evans to his admitted date of disclosure we are inclined to test the case by his claimed date of disclosure. On that date (November 21, 1912) it was shown quite persuasively that Evans handed the drawing (afterwards dated January 5, 1913) to his foreman and directed him to make dies for links pursuant to that disclosure and his supplemental instructions. The foreman proceeded with reasonable diligence to make dies for links first in three parts with corrugations in different numbers, but encountering the Hibbard patent for a similar three-part link, reduced it to two parts, thereby producing the link of the patent and reducing the invention to actual practice.
Rowley claimed that he conceived the idea of his invention as early as 1905 and disclosed it by drawings in 1907 and 1911, but because of lack of money did not(reduce it to practice until 1912. It is clear that Rowley could not stop with his early drawings and disclosures for what appears an unreasonable time, and then on his subsequent application for a patent hold his field of invention against a rival inventor whose conception of the same invention was later. Nor in this issue of priority can he succeed upon what amounts to his uncorroborated testimony. We shall therefore limit our consideration of Rowley’s date to the period'beginning November 1, 1912. Upon that date he and others testified that he went into the employ of the defendant company and upon disclosing his conception to its manager was at once set to work to make suitable dies. It appears that, like Evans, he began with a three-part link, and like him encountered the Hibbard patent for a similar three-part link, and again like Evans he avoided that patent by reducing it to a two-part link, producing in actual practice with due diligence the link in controversy. The date of November 1 as the date of Rowley’s employment was testified to by several witnesses. It was further testified that on November 4 he showed a drawing of the link to his employer, who instructed him to make the link. The date was fixed by the employer by the fact that the day following, being Election Day, was a holiday, and on that day he went to New York. He testified that upon his return on the
The decree below be affirmed.