John F. Cody v. Aktiebolaget Flymo

rule in Blue rationale Court’s sought to had There Blue examined. et al. John CODY F. altogether, prosecution on which

bar the opinion “So commented: the Court’s al., et AKTIEBOLAGETFLYMO marginally might step drastic a advance Appellants. exclusionary by some of the ends served rules, No. 23575. increase it would also Appeals, United States Court of degree, tolerable District Columbia Circuit. having public guilty interest brought wari- The Court’s to book.” Sept. 14, Argued 1970. extending exclusionary ness of rule Sept. Decided 1971. by again underscored Justice White Rehearing Petition for Denied in any those nor Alderman: “Neither cases Nov. 1971. anything de- hold others March 1972. Denied Certiorari illegal thereby ters searches is command- 92 S.Ct. 1254. ed the Fourth Amendment.” Far extending rule, exclusionary I believe we should heed the advice Burger that, apart

Chief Justice even

from the existence of some alternative illegal

remedy seizures, searches and

“the has time come re-examine the scope Exclusionary Rule and narrowing

sider at least some of its

thrust so as to eliminate the anomalies produced.” has

Extending exclusionary rule on a ground

Fourth apply Amendment witness-petitioner would have the damaging

same impact feared Jus- White, tices Harlan and described length by Burger, Chief Justice what already grand has jury occurred in these proceedings crystal makes clear.

majority ruling giving here, witnesses right challenge such as these a lit- igate grand phase jury at the the source evidence, the Government’s a new right Congress not intended and never Christensen, Judge, dissent- Egan, yet

known before adds tool another opinion. ed and filed expanding legal weapons arsenal of which obstructionist re- elements sort justice. to frustrate the ends of would affirm the Dis- holding trict Court in civil witnesses

contempt until grand answer the

jury’s questions. Id. 388, 424, 79. 403 U.S. 91 S.Ct. (1971) (dissenting opin- 29 L.Ed.2d 619 165, 174, 961, 967, ion). 89 S.Ct. L.Ed.2d Washing- Brown, Laurence R. Messrs. Lewis, Jr.,

ton, C., Ar- D. and John H. lington, Va., appellants. for George Atlanta, Hopkins, Appellees Cody M. Messrs. Sweden. John Washington, Ga., Reynolds, George of one Edwin L. are the inventors Sites C., appellees. D. Mr. Lawrence L. of the devices in in this case. C., Colbert, invention, Washington, parties, D. also entered That claimed both appearance appellees. is a wheelless lawnmower sustained at the ground appropriate level on above the ROBINSON, and Before McGOWAN Appellants a thin cushion of air. filed Judges, CHRISTENSEN,* Circuit patent application their on March Judge, United States District and, they because were the first to of Utah. device, file on the on took the status of party” proceedings. Ap- “senior in these McGOWAN, Judge: Circuit pellees, “junior herein, party” filed appeal This is an from a reversal application their on November patent the District Court in a interfer- appellants’ some months seven after fil- ruling ence of a of case the Board of ing. 19, 1963, On while the November Patent Interferences. We are confronted applications co-pending, the Patent appeal questions on this with difficult patent appellants. Office awarded a to regarding procedural propriety both the thereafter, Several months in conform- decision, and, of the District Court’s applicable procedures ance with for creat- given applicable proof burden of ing interference, appellees amended review, sufficiency standard original application. Claiming their appellees’ proof practice. of reduction to their descriptions device fitted the by appellants We are also called appellants’ invention, they copied thir- issues, decide two resolved neither teen recently pat- claims from the issued Court, Patent Office nor in the District requested ent and pro- relating patentability appellees’ ceedings be instituted. On March below, invention. For the reasons stated 1965, following filing by the additional we affirm the of the District necessary supplemen- of several Court, F.Supp. affidavits, tal the Examiner of Patent Interferences declared an interference as to three of the thirteen claims. Those Appellants Aktiebolaget Flymo, are claims, a constituting pertinent counts corporation, Swedish and Karl R. interference, Dahl- reprinted are in the mar- man, an gin.1 inventor and himself a resident * Sitting by designation pursuant (Appellants’ to 28 Count No. Claim No. 5 292(e). U.S.C. patent; Appellees’ from Claim No. application) from amended : (Appellants’ 1. Count No. 1 grass cutting comprising Claim 2No. “A machine a patent; Appellees’ from having top portion Claim No. 13 hood a cover and a application) portion, amended : being skirt the latter substan- grass cutting comprising “A tially shaped vertically machine disposed a as a housing having opening, cylinder a bottom terminated bottom with peripheral edge of supporting rim, which is located sub- a motor attached to stantially plane, rotary impel- top portion, in a air said cover said motor hav- ler housing, mounted ing on a extending shaft said a vertical shaft into rotary housing space portion, cutter mounted in said within said skirt an air impeller rotary below said air impeller shaft, on the same mounted on said shaft, driving means for said ro- cutter mounted on said shaft said below tary impeller rotary air opening impeller, and said cut- air an air inlet dis- ter, impeller being posed centrally top por- said air constructed of said cover expel through open- tion, impeller being air said bottom said air constructed ing along paths through and at rates inlet suitable to suck in air said air slightly elevating housing opening expel through said and to air parts thereby ground open carried from the of said hood at a rate suffi- bottom by ground slightly assembly effect.” cient elevate parties, issue failed to central between demonstrate that the lawnmower interferences, they patent operated accepta- wheth- built in an all original e., ble purpose, er one or the other was the manner its intended i. grass-cutting proof machine. failed meet their inventor burden of upon depends priority. of that issue Resolution Board first, position as to which reaffirmed its determination later two months time, opinion point denying his invention in a appellees’ reduced short re- practice. Appellants quest March relied on for reconsideration. their invention the date statutory Faced alternatives subject had been made the appealing ruling Board’s application Sweden, earliest as their Appeals4 Court of Customs and Patent prac- date of constructive reduction bringing or a civil action in the District seeking appel- Appellees, tice.2 to best Court,5 appellees pursue the elected showing, conducted lant’s relied on tests Following filing latter course. the of spring in as the and fall of 1960 evi- suit, passage the and law after the of dencing practice. prior a reduction years nearly preliminary sparring two of upon sufficiency of their parties, appellees between the filed a showing question on that score that summary judgment. Appel motion for priority of turned. opposed lants the motion and file a sum junior mary judgment own, party

As the in interfer motion of re their ence, questing, alternative, in appellees’ the Board burden before or, affirm if of Interferences to establish court either the Board Patent junior party prior practice their of were to conclude that claim reduction to by agency, preponderance had his of the evidence.3 met burden before the appellants’ practice in Consistent with the to consider two claims that standard patentable proceedings, appellees’ such in all of was not evi device appellees any By deposition dence was submitted and Memoran event. 1.251-57, Opinion 19, exhibit form. dum dated and Or 37 C.F.R. June §§ Judgment (1971). Although July 7, appellants 1.271-81 der of dated granted evidence, appellees’ submitted direct their coun District Court mo present tion, Board, depositions sel was when were reversed the and remanded being briefly pass taken and on cross-examined case. court refused to appellees’ patentability questions of several After the two raised witnesses. hearing argument, appellants grounds oral had Board of appellants’ “developed Patent not before Interferences held in been detail favor and on March Board’s the Board” that such matters 1967. The findings emphasized ques scope had within review hood, impeller regarding proof in of said motor air and The rules burdens of rotary ground ground proceedings cutter from the are such Patent Office junior party effect.” If files well established. (Appellants’ application patent Count his is awarded No. Claim No. after patent; Appellees’ .party from No. he Claim to the senior must demonstrate practice beyond application) amended his a reason- : reduction If, here, grass cutting “A wheelless able doubt. as was the case machine hav- power ing operated rotary junior application party files his cutter before commonly party, impelling issues to the air senior driven means producing preponderance ground support customary applies. test effect Joris, See, g., said machine air e. Conner 241 F.2d cushion of at a ; (1957) ground.” distance above St. CCPA 772 Harvey, Pierre v. procedure relying foreign (1956). on a CCPA application 216(c) is set out in Rule (1964). § 4. 35 U.S.C. Practice, the Patent Office Rules of 1.216(e) Deller, C.F.R. A. 5. 35 § § U.S.C. (1st Patents ed. § Walker on at 925 1939). priority invention.6 This considered

tions Board. Stated differ- argument ently, appeal is that the Board’s followed. factual in an conclusions II proceeding are conclusive district party elects, if dissatisfied addressing ourselves to the sub- Before here, rely the record made priority patentabil- stantive issues — the Board. pre- case, ity consider two —in The notion that a new-evidence test First, liminary what measur- questions. proceedings inheres novo de review ing been of review has rod or standard statutorily finds its source in the es- guide the district courts established appeal open tablished alternate routes scrutinizing actions the Board’s to a with a dissatisfied Patent pro- de novo unusual these somewhat appeal Office decision. He either given Second, ceedings? that standard Ap- to the Court of Customs Patent review, disposition, of a short can 141-144, peals, 35 or hearing, file a by way U.S.C. evidentiary sum- §§ full court, 35 civil action in the district U.S.C. mary appropriate ever former, 146. Should he do the conclusion the Board’s in which case statute makes clear tois be overturned? Appeals “shall hear deter- precedent, has Supreme A Court which appeal pro- mine' such evidence consistently applied by the federal been duced the Patent 35 Office.” reviewing inter the Board’s courts in (emphasis supplied). U.S.C. 144 When rulings seventy years, for over ference proceed one in the chooses to district provides for our consid the cornerstone court, however, may proof carry his him question. Mor first In eration of the beyond well confines adminis- 125, gan Daniels, 14 v. U.S. trative record. S. L.Ed. 657 Ct. regarding is opinion this difference in a unanimous held: Court comparative scope the matters the two authority, principle “Upon and may meaning- tribunals which consider therefore, laid down as must be fully distinguishes the one from the decided rule where other, and often is the determinative in one con- patent office is between party’s in factor the dissatisfied choice testing priority of inven- parties as of forum. That this factor lies at tion, must be there made the decision center of the between differences the two upon controlling ques- accepted as that by Supreme alternatives is evidenced any subsequent suit be- in tion of fact Coe, Court’s discussion in Hoover Co. v. parties, the con- unless the same tween 79, 83, 65 S.Ct. by testimony trary which is established (1945): L.Ed. 1488 amount carries thor- in and character ough conviction.” rights “It is that alternative evident applicabil- (Emphasis supplied.) applicant,— of review are accorded an ity “thorough stand- conviction” appeal of this one to the United States in ard court’s deliberations to the district Appeals, Court of and Patent Customs hardly questioned.7 such can equity cases in the other bill in filed standard, Appellants acknowledge that one of the federal district In courts. here, argue hearing it was not satisfied summary the first is in the solely indeed can never satisfied in record made the Patent presentation Office; the dis- absence of the a formal other trial previously trict new court of evidence not proof is afforded on in- Cody Aktiebolaget Flymo, F.Supp. 6. Corp. Radio of America v. International (D.D.C.1969) (see infra). Corp., note 19 Standard Elec. (3d 1956). Cir. See, g., Szuecs, 7. e. United States U.S.App.D.C. 24, (1957) ; 240 F.2d 886 go produce presented elude evidence not trial and new evidence (Emphasis supplied.) or to suffer Patent Office.” resolution conclusive against questions them of all of fact. legislative his- In examination of the Morgan statutes, tory of these v. Daniels itself the Court We find that review theory noted that an effort was made stands as refutation direct Congress presentation one alternative abolish new evidence proved prerequisite or other but unsuc- is trial court’s cessful, litigants “saving to thus sideration of whether the factual Board's producing option of new evidence conclusions That is are erroneous. case court, proce- retaining equity similar to our in that own no evidence Id. at presented dure.” at to the court there brought had not been out in the inter- practical As a matter there proceeding. Id. ference U.S. appear would to be little incentive Nevertheless, 14 S.Ct. Court to come the district into argue exactly appellants did what contemplated unless he a further eviden our District Court case was without tiary presentation. Initially, as reflected authority examined all evi- to do —it exchange following between court sufficiency dence and un- measured its summary and counsel at “thorough der the conviction” test. The hearing, that consideration seems to have language concluding para- of the Court’s appellees’ occasioned decision to come in graph particularly is instructive: to the District in this case: enough say “It the testi- “[COUNSEL FOR APPELLEES]” mony as a whole not of a character * * * asked for reconsideration produce or sufficient a clear convic- * * * and was Then I took refused. tion that office made appeal to the District Court awarding priority mistake in the District of I contem- Columbia. to the defendant.” vention plated going to the Court of Customs 129, Id. at (emphasis 14 at S.Ct. 775 Appeals, and Patent but since I could supplied). implication is unmistaka- put proof on additional as the fact bly clear that had that carried evidence cutting grass that this machine was thorough though conviction —even none all over— of it was evidence” —the Patent “new Yes, why “THE that COURT: ruling Office’s would have been over- get a lot of them. turned. you I came folks. “[COUNSEL]: Appellants relied on cases have several “THE I understand that.”8 COURT: jurisdiction support of their only speculate showing We can evidentiary as to the circum- contention that an change going beyond presented stances that led their the that before 9 rely tack and to Board is In administrative essential. none of those record, but, cases, however, pro whatever those reasons the failure to was might been, have we doubt the wisdom duce new the fac evidence determinative tor, e., a rule that would i. either force them those cases cannot be read Appellants, focusing DeSeversky conduct here. on this brief ex- v. Bren- change, argued ner, 369, U.S.App.D.C. that 424 demonstrates 137 F.2d 857 appellees were, essence, subverting (1970). process withholding the administrative Corp. relevant evidence the 9. Pro-Col Commissioner of Board and then v. Pat- planning ents, U.S.App.D.C. to introduce it later in the trial 436 F.2d agree parties (1970) ; court. While we Distillers & Chem. must National permitted Corp. Brenner, U.S.App.D.C. be to raise new issues or to v. Hays Brenner, agency ; (1967) submit evidence omitted the F.2d v. negligent disregard U.S.App.D.C. level out of for the 357 F.2d Corp. process, place (1966) ; Ladd, administrative we do not Zenith Radio v. so interpretation appellees’ U.S.App.D.C. sinister an 310 F.2d 859 thorough contrary ‘carries that, of new absence but hold conviction,’ Supreme has might as the Court evidence, have reversed court Morgan cases, must there be. all told us Daniels, supra. Those were Office. the Patent nothing pre before evidence contrary, in which to the same as the District Court old court—either district sented Office, except the Patent that before a conclusion supportive of or new was ‘not of thorough additional evidence for certain conviction under * * * change the result.’ More im a kind standard, had erred. Board case, rul- purport the Patent Office In such a cases those portantly, all of ing normally followed. should discussion rely on this court’s Of course, Patent decision Standard Morgan test Esso Daniels if U.S.App.D.C. Co., the evidence is not warranted on Oil Oil Co. v. Sun Office it, reach- 158-159, 41-42 or if the new evidence standard, necessary the District denied, 76 We, es cert. rely too, totality L.Ed. 1491 rule language dis- pres- may require. and find But the evidence on that case us. case before positive of the ent not such case.’ 158-159, U.S.App.D.C. at Of- 97 appeal from a Esso was supplied).10 It (emphasis at 41-42 in which ruling case trademark in a fice clear, then, that the failure should be whether only issue was substantial cannot, confusingly to introduce additional evidence similar. were trademarks two alone, force that circumstance held that Office The Patent confusingly against challeng- similar, upon novo be de conclusive ing Board, decision and it should further review district establishing thorough apparent that the conviction After reversed. inquiry of re- must focus record.11 thorough on whole standard conviction cases, re- this court applied in such view review, this standard Given and concluded all the evidence viewed second related —whether nor new evidence that neither party may attempt dissatisfied to meet the Patent of record before evidence summary burden de- court’s supported the district Office proceeding no difficulties. We —raises cision. use are unable to find fault with the therefore, basis, peculiar summary judgment find “We under the in over- presented trial court of the the the action turning circumstances in cases like ruling Of- only Patent of the issue the one before us. The factual Certainly dispute no evidence was in there was the ultimate fice. Corp. g., See, Appeals, v. e. Research. California Customs and Patent his adver 60, 65, sary power Ladd, U.S.App.D.C. F.2d the 123 356 has the to demand that Watson, (1966) ; 107 the Pierce case be heard instead district court. 818 Essentially 226, 228, (1964). U.S.App.D.C. F.2d that U.S.C. § (1960) ; appellee proviso Co. v. Potter Instrument the means that Corp., compel 309 F. review can the dis Mohawk Data Sciences (Patent (S.D.N.Y.1969) Supp. 866, party de novo satisfied to seek review court. See Tibbetts Indus record forms “nucleus of the district Office Court,” tries, Electronics, Inc., evidence before Inc. v. Knowles submitted”). 1967), (7th cert. evidence be Cir. “additional denied, appellants’ are fortified in our conclusion on We L.Ed.2d 1146 Under oppor- theory, party score because the serious wished if the dissatisfied injustice present appel- tunity only challenge propriety under of the to theory. findings lants’ two the record and had new-evidence Board’s provisions proffer, discussed he could not alternative review new material to change permitting by effecting above, prevail. Therefore, in addition to dis- impose party forum, appellee to choose his forum in the could satisfied insurmountable, provide that, instance, higher, first if the cases also some party appeals dissatisfied to the Court of of review. standard showing that, applicable find under the appellants’ constituted record and whether thorough standard, Dis- conviction practice. Neither to reduction an actual supported. tangi- testimony decision well trict Court’s or had additional reduction to present of actual Demonstration he wished that ble evidence pre- proof Although op- practice requires appellants to the court.12 —here summary ponderance before of the evidence appellees’ motion for posed (1) general elements: that two judgment, they not contend Board—of did grass-cutting must machine have fact issues of material there were tangible physical ap- or in a simply that been embodied contended dispute, but containing every element essential Pat- form pellees, relying were on the as in the counts record, defined met their as had not invention ent Office interference;14 (2) machine issue of proof the critical burden operated effec- nothing Certainly that even- must to have priority. be shown See, hearing Re- during tively C. the dis- its intended use. tuated Caesar, him to Law judge alerted A. Interference could have vise & trict 31-32, existing opposition his resolution of at Practice 395-397 §§ on the of the case basis the merits Interferences The Board of him.13 material before issue, found, sufficient first posture our hold- in this the case With proof to conclude submitted had been Wimsatt, Inc., ing in Fox Johnson & “flying” actual- that the lawnmower was 218-219, U.S.App.D.C. ly spring and that in the of 1960 built seem to bear would 736-737 “every time, contained, feature conclusively question. on this defined the invention concerning however, issue, inter- was conflict the second “There counts.” On junior party ultimate pretation of the facts and that the found the Board from them machine prove to be drawn conclusion had failed operated * * “effectively” none as there was or “satisfactor- *. But words, placed emphasis In other ily.” themselves. facts Greatest evidentiary not facts were substan- the tially inventors continued fact * * * dispute. experiment Conflict tests to after their 1960 concerning component and decisive great ultimate of different number undisput- drawn request conclusion parts. for reconsidera- theOn prevent rendition again ed facts does while stated the Board tion summary judgment, when grass of a ex- those cut some nothing drawn is one to be conclusion periments offered inventors it all encouragement had before court. reason than more prob- formal trial would facts which would predict that “the invention through Going produced. motions it could ably if and when be successful futile.” Emphasizing been trial would have practical put use.” Schmitt, 278 on Elmore v. its reliance Holtzoff, Federal See also Barron & CCPA 960 1234, at 128 Practice Procedure & practice re- to held that reduction Board quired pre- for than “a mere basis more Ill issue Court took diction.” The factual to its the merits of the both as On reduction with the Board practice respect to its reli- issue we reviewed and with conclusions summary judg- only therefore, not, 12. a case which 13. hold here This is We fairly argued litigants improper the reduction it on' could not ment was peculiar procedural right practice The their to a issue. had been cut off from subsidiary genuine issues unresolved factual issues. of the two trial stance See, g., patentability will be discussed e. Nat. Gas cerned with Sartor v. Arkansas opinion. Corp., 64 S.Ct. in Part IV of this U.S. 88 L.Ed. 967 supra. 14. See note agree lants’ He asked anee on Elmore. We with counsel. was whether propeller straight his the air blew down- on both counts. against ward or whether surface deposition pertinent and exhibit tips propeller sent the air off the briefly summarized. evidence can be centrifugal Cody responded action. George inventors, Cody and two John did not he know how the air moved Sites, and not trade were inventors housing around inside the and while during only on their machine worked design propellers he did not with agri- Cody their off-work hours. was any particular aerodynamic result pilot to secure and was able cultural mind, he concluded that the air most hangar space airport in a probably moved both downward and off they on the mower could work tips. appellants for Counsel ad- equipment. and their tools and store regarding questions Cody dressed no great had deal Because neither man grass-cutting experi- success money, parts many of the machine ments. scrap metal were made of discarded out George.Sites readily also testified and other available materials. propellers experimented device made a “fair swath” and that The numerous engine “pick handcarved,15 up housing] with, instance, would all [the were grass. it would cut wasn’t as efficient and a washtub used as the mold was forming fiberglass what we wanted wasn’t what shell which was housing. put He, would want on the market.” as the function too, spoke about the addition of baffles including witnesses, Five inven- improve efficiency of the machine tors, having experi- testified to seen the by allowing area, it to cut a wider spring or fall ments conducted improvements about other made after Cody testified that his mower experiments. the 1960 He was not cross- grass experiment did cut in the conducted examined. airport spring in a field near the Neill, crop John duster who was in- of 1960. He that “the machine stated * * * airport experiment, vited to watch the satisfactorily; operated flew and testified as follows: operate; fly did machine did the * * * very pleased we were actually, thought “The machine I airport results it.” In addition just first machine flew as well as the trial, Cody that another successful stated they today. one built It wasn’t as test conducted at a farm in the fall good looking appearance near as testimony * * * His also includes fly lawnmower did [T]he they problems references to some of the good good performed and it and it did confronted. He indicated that were good. cut getting length of a cut the full over definitely cutting grass. “It Like cut- the blade the machine was say, good I think the first one did as ting more toward the center the blade. job, job, or a better as some of the problem, This and to a lesser extent ” * * * produced ones he later. torque problem, subsequently cor- were He was not cross-examined as to the rected of baffles within the addition details of airport. his observations at the Although housing. he listed several changes, other he “there maintained that spring, Another witness major Basically, alterations. experiment, Martin, Daniel testified that was the same machine.” airport cutting he saw “machine on the Cody only deponent grass was the touching to be ground.” that wasn’t any length by appel- cross-examined Although at acquainted Cody he was Appellee Cody propel- 15. testified that the fied that the handlebars were constructed lers tubing were built “out of laminated wood out of excess steel found at the rasp sandpaper everything and and airport. and fingernails.” but teeth and He also testi- primary Appellants’ him photographic contention work done and had throughout presence proceedings occasions, at the these his the is- on several experiment priority sue of has been that airport machine time of spring then built and demonstrated work he was in the some was occasioned possibly operated com- of 1960 could not have chamber of performing for the local effectively at what for its intended use because He was “astonished” merce. so it order lacked baffles. Since their a closer look in contentions that he took he saw regarding flying necessity verify it indeed of baffles also that was pat- at the heart stand of the issues lawnmower. entability considered, subsequently to be corroborating witness final helpful explain posi- it their Agerton, Sites’ father-in- James Howard fully. Appellants tion more assert that experi- law, that he viewed testified who there is a critical difference between his farm 1960 at the fall of ments in appellees’. their invention and Their time, machine was at that impeller,” uses a vention “radial de- tangible grass. cutting evi- Substantial signed to shoot the air out around including introduced, also dence was edge housing centrifugal of the description which the machine written force, creating thus a vacuum inward of signed by and wit- the inventors housing wall which holds the blades February, party in by a third nessed grass upright position in an many parts 1960; photographs path cutting Appellees’ blade. period experimented of de- with over appellants device so contend instead uses checks, ; velopment cancelled invoices propeller process a mere slips for items which sales the various housing straight lifting the blows the air machine; purchased used in the were grass consequently down and flattens the parts of the several of the essential so that it cannot be To cut. counteract original mower. argued appellees effect it found necessary to install deflectors or baf- are unable to see how this We housing fles inside direct to fall short evidence can be said air flow off of its downward course and required proof reduction actual housing. more toward the sides practice.16 course, readi Of Appellants claim that until such time ly admitted, the lawnmower was as those baffles were initiated into the commercially marketable in 1960. But physically the machine could not device marketability is well established perform its intended task. See, g., Kravig e. is not test. the crucial Henderson, 1015, 1023, Appellants v. 362 F.2d however introduced have (1966); Corp. support aerodynamic CCPA 1534 Toledo Scale of their evidence in Westinghouse they Corp., Elec. thesis and the one occasion when (6th 1965). subject is the in the course of Cir. Nor broached weight cross-examining Cody appellees’ proof mitigated briefly they were be original crudely experience cause the machine was him that his did not told subsequent square theory. Second, or because re with their all of constructed improve finements undertaken whether evidence efficiency. See, g., Regan, grass way, e. points only Land cut one machine 92, 98, (1965); undisputed 342 F.2d and it is clear and that on CCPA States, Optical Farrand Co. v. United of the first demonstration occasion (2d housing.17 1963). 332-333 Cir. there were no baffles in the Although adequate quately generally lack of corrobora- corroborated. III Caesar, self-serving Revise & A. Interference Law tion of the inventors’ C. asser- frequently pat- tions is a central issue in and Practice disputes, ent on the basis of fully developed suggested Appellants those record in this case we seriously appellants’ argu- cannot take the machine who testified saw thought grass allegations cutting grass only ment were not ade- original patent Third, appli- appellees’ “put specific successful when some explanation practical provides is use.” Id. at 513. cation According the evidence. consistent with case, in invention unlike the they theory admit to a to their —and Elmore, complete device in was a unit understanding complete lack of possessing utility. was demonstrable housing— patterns within the circulation operating demonstrated under actual whirling propeller the motion of the way conditions which could in no partial at the creates a vacuum vortex analogized laboratory experi- to mere machine, lifting grass the offering only hope ments future portion more central of the surface be- Although worth. crude machine was housing blowing neath the but it flat lacking efficiency, in it did function around the fles, The addition baf- rim. satisfactorily purpose. for its intended correcting torque in addition to legal appropriate We conclude that under problem, the air in such a man- deflects testimony standards the in this record ner the rim these blades nearer thorough amply supports such that it are shielded from the blast of air so conviction that the in Board erred fail- they may also be cut. This brief ing appellees to find that had shown explanation is consistent with the actual practice by preponderance reduction to experience that, baffles, without of the evidence. relatively machine cut a narrower swath. Given this articulation of the machine’s operation, IV not the baffles essential were showing Having practice to a only of reduction to concluded that original operated improve the machine’s in inventors of the device efficiency. question, are we now faced with question of whether that machine Finally, conjunction with our patentable Appellants have them. sustaining clusion finding against the District Court’s throughout claimed under facts, Board patentability rubric, appellees cannot agree we also with its determination prevail (1) two reasons: lawn- misapplied only that the Board had pertinent mower as described opinions— case cited either of its two operable counts in interference is not an Schmitt, supra. Elmore v. The invention device, 112; (2) appel- U.S.C. § binary there utility awas counter which had receiving lees are barred from component part as a when used application because their amended was conjunction computers, with radar one-year statutory pe- filed outside the equipment, Geiger counters, or television riod, 102(b). 35 U.S.C. Before we circuits. The invention tested in a may resolve these merits matters on the laboratory experiment but was never they it is essential that find that conjunction tested in one jurisdiction fall within of this court the devices named. Until such time as reviewing and the Court in opera- device was tried out under rulings. terference circumstances, tional the court held that First, helpful will be trace requirement that an invention must briefly the manner in which the issues working demonstrated under actual were handled Office Laboratory conditions had not been met. provided District Court this case. tests more than a basis for by appellants predicting was first raised invention would be support They postulated that, has been introduced had been reality, whatsoever cut. theory speculation and the the force of the of this downward blast explored merely in the course of cross-exam- of air flattened grass creating impression blades no reason to credit ination. We see had here. been severed. No evidence

1285 predecessor shortly September, 1965, after of the in review statute in any case, broadly issue in this was declared before held pro- that in the evidence had been submitted ceeding. to the Patent Office Pursuant adjudication “[N]o can be made in Practice, 1.231 Rules of 37 C.F.R. § applicant, favor of the the al- unless (1971), appellants filed to dis- a motion leged patent invention for which is grounds interference on the two solve the sought patentable is a invention. The * * * The motion was consid- above. stated litigation cannot be con- Primary ered Examiner who by solely determining cluded an issue against appellants on issues cluded both parties] as to in [the fact and denied the motion. Board first made [the invention].” Interferences, opin- in its initial Id. at 10 at S.Ct. 230. ion, briefly find- outlined the Examiner’s ruling implications The wider of that ings did comment on them one not were Kep- circumscribed in v. Sanford way pat- of the or the other. Resolution ner, 344 U.S. 73 S.Ct. L.Ed. 97 unnecessary entability claims (1952). party had lost There who found, based on Board’s decision since it before Board of Patent Interferenc- priority practice is- of reduction to es claimed in the district court that sue, not entitled to a that patentable party device was not to the patent. Court, after re- In the District prevailed agency. who had versing question of the Board on the The district court refused to consider priority, judge in the trial stated opinion the issue and the Court’s sus- patentability that view of the fact ground tained that abstention explored by fully contentions were not jHitt Wooster v. require did not appropri- Board, not find it he did every patentability issue of raised aspect ate to examine that of the case.18 in a de novo proceeding must be re- Rather, Supreme principle solved. of that find Court has de-

We only cision definitely was said question in a to be that in the resolved this losing party circumstance in contrary which the manner to the Court’s prevails Wooster, before the Board in the district conclusion. In Hill priority court on the issue of does the 10 S.Ct. 33 L.Ed. 502 patentability pertinent.19 equity issue become review of a suit under Cody Compare Aktiebolaget Flymo, § Stat. 306 F. Supp. 728, (D.D.C.1969) U.S.C. Under such cir- : by Flymo cumstances, urged as the Court Hill v. Woos- “Other defenses are noted, supporting ter the rationale of the Board’s developed priority] not determination “[A] [the decision but these were alone, applicant, issue detail before the Board. favor of the carrying it, does, authority proceeding as it the Court aspects patent all of the Board’s re-examine commissioner issue only interference, him would decision but ruling to review the Board’s claims priority. necessarily give central the sanction the court on the issue of patentability the invention $ $ >> # involved.” (empha- reasoning at at both decisions relied U.S. S.Ct. Kep- heavily supplied). sis See also Sanford v. terms statute which (“judi- ner, de of interference authorized novo review 344 U.S. at implies judi- rulings. particular pertinence of issuance cial authorization Of language, original patentability”). As the cial sanction of contained in statute pres- the cases makes distinction drawn over into the law in its carried form, implication clear, arises when ent if the dissatisfied no such merely affirms the district succeeds the district court “such ad- * * * judication shall Board’s decision. authorize view, patent, the Patent Office This commissioner to issue such patent applicant filing required to the success- office issue suit, copy adjudication, plaintiff has in an interference otherwise ful complying requirements disputed contexts. See Jeff- with the in other been law.” merely increased the them. The baffles precisely the circumstances Since that is Furthermore, eficiency the machine. parties found themselves in which Primary doubt, there can be no as the have should case, the District this found, in inter- the counts patentability Examiner passed merits on the e, Corp. are on the invention ferences readable See, g., Motors General claims. by appellees. U.S.App.D.C. as disclosed Co., Dietz 137 v. R. E. Boyce (1969); 100, 420 F.2d 1303 Appellants’ second claim is that (9th 605, Cir. 608 Anderson, 405 F.2d receiving appellees a are barred Corp. Tel. 1968); Bell Sperry Rand pat patent “the invention because (S.D.N.Y. 598, Labs., F.Supp. 602 208 printed publica ented or a described 491, dism’d, 1962), 493 appeal F.2d * * * 317 foreign country tion this or a 1963). (2d Cir. prior year to the date more than one ** pos- Ordinarily, application in this 35 U.S.C. with the issues Again ture, 102(b). remand the case their contention we would stands § might strength in order that on of their asser- District Court or falls patenta- indispensable consider the evidence bility tion that were an baffles original appellees’ application. instance. See in the first element Development argument Co. v. that— Tidewater The thread of their is Co., (4th F.2d 942 Cir. on in for the same reasons relied their Gillette 1960). howevei’, parties Here, priority have operability both claims on the ques- pressed application court to resolve these this issues—the amended filed urge Indeed, appellants interference, most up tions. 1964 in order to set Furthermore, strenuously baffles, that we do so. which made no reference to party appears of the view neither to be stituted newa device. inadequate to this end. that the record is case, If that then the “date Finally, in our inclina- we are fortified application” referred to the statute questions their tion to reach these the amendment. would the date of contentions the fact that both merits Appellees would then from ob be barred find, appear and, to revolve we around— taining patent period more a because disposition re- are controlled —our filing year separated than a garding nonessentiality of baffles receipt appellants’ amendment and appellees’ invention. Belgium patent covering the lawnmower claim, Appellants’ first based (March 30, 1962), publication is that the machine as U.S.C. disclosing of an article invention designed using pro have journal (November a Swedish technical it— peller impeller- inop rather than an 1962). Package Devices, Inc. v. —is baffles, Drug erable without and that Ray Co., F.Supp. Sun include counts in interference do not this aff’d, (E.D.Pa.1969), F.2d 776-778 critical element. it is true that (3 denied, While 1970), 272 Cir. cert. original appellees’ application did refer 28 L.Ed.2d amended and that regarding baffles we have What said above setting up claims the interference do inconsequentiality of the baffle struc not,20 this consideration is immaterial dispositive tures is of this issue as well. fact, in view of the which we have found application simply Since the did amended record, fully to be sustained on device, critical not describe a new operated effectively the machine without determining statutory date for whether

rey U.S.App. Mfg. Kingsland, authority Co. v. ex tlie Patent Office’s (1949) ; parte jiroceedings D.C. F.2d 35 Glass v. to decline to issue Roo, following De CCPA 723 attack in a successful Wooster, ruling Since Hill v. and San of the Board district controlling Kepner here, ford v. are of Patent Interferences. the more no occasion to consider general question regarding the extent of supra. 20. See note original ap- answer, suggest bars exist the date of the is the second should plication. that, upon is contended view- not be based abstract ultimates but date, application ed as should sub- consider whether under cir ject any infirmity. particular such cumstances of this ease sum mary judgment granted could be without Therefore, it is our conclusion unacceptable governing violence least insofar raised issues concept principle summary judg concerned, appellees’ here are invention my opinion, ment. In in view of that patentable. Having ap- concluded that concept principle, entry of sum pellees also met their burden establish- mary judgment light constituted error in ing prior practice, judg- reduction to proof, uncertain of nature ment of the District Court is varying inferences which could be drawn Affirmed. minds, reasonable of absence doc umentation the critical of Judge (dis- CHRISTENSEN, District added, when presump baffles were senting) : tive correctness of the Patent Office act I concur with most of what has been ion,1 Cody’s heavy proof burden of be opinion prevailing stated in the concern- fore the especially district court2 on a ing proof of and the burdens substan- summary motion for judgment, the lack involved; tive rules of law I exploration a full of of the facts because application must dissent from summary judgment opportu denied an summary judgment. rules of It seems nity develop fully them at a trial de likely prove decision will more novo, and summary the limited office of significant precedent as a in the latter judgment except where it is clear that former, aspect for the than sub- genuine there no are issues of material perceptively stantive law involved ana- is deciding fact. summary Without lyzed, accurately stated in accord- judgment appeal on an from the Board’s view, prevailing ance with the if while granted determination should never be widely the decision is followed with re- it is believed that on the record before spect summary judg- propriety of required “thorough us the conviction” types ment trials numerous properly could not be entertained as a thought cases which have been heretofore matter of law and- without the determi questions suscepti- involve fact not nation of the court as a fact finder. summary disposition ble to will be ren- Wimsatt, Fox v. Johnson unnecessary. & 75 U.S. dered 211, App.D.C. 127 F.2d 729 prevailing opinion, before consid- problem of which the basis crucial ering priority the substantive issues of summary judgment is resolved patentability, prelim- deals with two prevailing opinion, distinguishable is inary questions: the first as to the bur- Nonetheless, the case at bar. proof de novo den the trial before may epitomize my point departure court; being the district the second de- upon it seems assumptions based two fined as follows: “Given that standard represent prevailing, which do not review, disposition, can short of a better, and what I think is the view hearing, by way evidentiary full of sum- today: (1) if both file motions sides mary judgment appropriate ever in a be summary judgment for each concedes case in which the Board’s conclusion is to genuine any there is no as to issue Agreeing be overturned?” question and its material fact and in effect statement of the first consents Szuecs, U.S.App.D.C. Corp. United States v. See the late case of Pro-Col v. Com- U.S.App.D.C. (1957) ; Patents, see missioner of 240 F.2d 886 Esso Stand Co., U.S.App. ard Oil Co. Sun Oil F.2d denied, cert. D.C. g., Morgan Daniels, S.Ct. 100 L.Ed. 1491 E. U.S. ; (1894) 38 L.Ed. trial; issue (2) cases where no substantial of fact that where there waiver determination; facts, presented is is dispute circumstantial is as to litigants judg- deprived summary intended that shall be decided on a case can be right hearing though full of their to a inferences different ment even might free to draw rea- fact finder reasonable drawn crucial matters among conflicting if ferences ones facts. the established minds from sonable summary parties material issue of fact is tendered. Motion of both Black, Bryson, pro- pre-trial Inc. v. Sivalls & National convert did not (10th right Company, ceedings Tank Cir. nor waive into a trial 1971). confining judgments with- not otherwise if case could trial limits en- summarily, seems to me to be an for a such resolved judicial process hancement of rather of fact is no issue concede that there yet legal theory accepted than its frustration. if his genuine dispute there is maintain that issues believe there were material opponent’s if the as to material facts ques- of fact with reference the vital Fidelity theory adopted. & American sufficiency tions of the time and of re- Co., Edinburgh Ins. v. London & Cas. Co. practice adequate duction to which were 1965). Summary (4th 354 F.2d Cir. judgment preclude summary to had the conflicting judgment by precluded is of the decision the Board been before by minds drawable reasonable ferences any presumption court or intend- without if undisputed facts which material from favor; ment in its under the rule that its moving against party would settled the accepted decision should be as control- Emp. Op. deny judgment. Equal him a ling on de trial novo the court as unless Journeymen of Com’n Ass’n v. United thorough fact finder entertains convic- etc., Plumb., Apprentices of contrary, inapprop- tion to the it seems 1970); (6th Columbus F.2d 1091 Cir. priate improper on of the facts Building Mainte- v. Preferred Services questions on case to have the resolved Frey 1968); nance, (6th 398 F.2d Cir. summary judgment. (10th Frankel, F.2d 437 Cir. proof hard and No fast rule to the Company 1966); S. & Sons J. Groves practice essential to to show reduction Turnpike Commission, 315 F.2d v. Ohio down, presents can laid be and this the (6th 1963). This not an Cir. is difficulty ruling principal on such pervades principle, one that esoteric summary judgment. matters The de- pro- the reference entire law with light principally cision is one of fact withdrawing priety from fact of issues applicable principles of law. Thus, pleading finders. must be been said exact extent has that “[T]he against for sidered as a motion sum- testing necessary of to effect a reduction light mary disposition in most fa- the practice to ais matter which must be de- pleader and with all rea- vorable to the termined the circumstances of each in his inferences to resolved sonable particular case and the nature of the favor; verdict a motion for a directed Harvey, device involved.” St. Pierre v. notwithstanding judgment or for ver- C.C.P.A. intend- dict is confronted with similar My reading of the cases indicates sufficiency examining and in ments did not so misconceive Office judgment support of evidence to the essential elements of a reduction appeal, appellate evidence courts consider practice the law its decision as to may fairly drawn and inferences that clearly reversible erroneous and thus light favorable therefrom in the most summary judgment apart prevailed fact who question of court’s memo- trial fact. summary judg- finder. A motion gen- analyzed perceptively randum fact, law, not presents of of inconsistently ment issues requirements eral not F.R.Civ.P., ultimately authorities; purpose of court Rule but the overly question to an tended to reduce the expeditious permit disposition is to “clearly applying or Cody erroneous” machine simple one of whether Stieg all, “thorough grass conviction” test. cut was demonstrated Patents, 122 U.S. dispositively v. Commissioner answered hand, App.D.C. F.2d 899 other affirmative. On Yet, Interferences em- the Board Board of Patent if we assume that practical requirement phasized rigid or limited definition erred a too satisfactory practice require- terms demonstration the- reduction Confirming operation. decision summary judgment ments, would not be reconsideration, however, only rest- the Board if there authorized nonetheless since proposition that ed its conclusion were no facts which would issue “ * * * cutting grass, just without summary judgment precluded under effectiveness, regard is insuffi- for its re- proper or definition standard utility proof practical practice cient duction to could purpose under for its intended machine be sustained. Thus, working ordinary conditions. transcript reading, After a careful Cody their burden et al. did sustain testimony before the Board prove proof actual reduc- and did not convincing minds to me that reasonable practice in is- of the invention tion sufficiency to show could differ as to its sue.” proper practice reduction to under tending testimony expressions standards. Despite variant support practice a reduction requirements, that neither think unsatisfactory. many vague respects essentially nor the mis- the Board aspects proof governing rests which, In its essential conceived the law — testimony Cody, importantly upon hand, the of one render insufficient would being highly party. Ev- he interested practice as to a mere literal reduction baffling cutting grass, idence as to the added time was of of however few blades device, sug- testimony insignificant irrespective to which the or and utility gests originally practical utility was dubious in to its intend- relation hand, purpose, for its intended is not docu- purpose, yet, and on the other ed mented, consisting recognizes rather casual to there can reduction addition, In practice by oper- reference.3 the embodiment which embodiment long preserved inspec- crudely for imperfectly itself had been as it ates or as degree The fact finder could consider tion. some substantial demonstrates practical utility other in arriv- purpose. these and circumstances intended for its ing judgment junior appear It whether does not that the decision of satisfactorily party his had met burden. Board of Interferences was generally premised Sartor v. Natur- See Arkansas error on such a definable Corp., 64 al Gas 321 U.S. to law free district as you 57. The ones that were attached to 3. “54. when was it that and About they spider, what were for? on the machine John installed baffles torque. you’re talking A. For that about? winter, 58. And the ones attached to hous- I A. That was the fall or in ing, what were for? it after sea- believe was. John’s Partially torque, too, right and let project A. for to wasn’t worked son. very tips cutting out. during of the blade of the season. John the heart accomplish it that? Did that time and I wasn’t area at again Yes, did, it too, but still still time, A. I believe at that was still well, efficient it was wasn’t efficient as I I went to summer the Guards and know * * * camp year. we wanted. It was it wasn’t what point you it would cut where efficient What sort of baffles did always person okay grass been but I’ve stall the fall ’60? doing doing it’s worth They worth if it’s A. some was attached always right strived for spider and and then some attached housing. They best.” were air the inside of the torque of the ma- to correct deflectors chine. 1290 Corp., Natural (1944); and Cae v. Arkansas Gas 4 Revise Sartor L.Ed. 88 967 620, 627, Practice, Chap 88 L.Ed. 64 S.Ct. sar, Law & Interference (1944)). (1948). also v. Ma seq. See Edwards 967 et 641 XXXIII ter Inc., U.S.App.D.C. U.S.App. Masterpieces, zor Hoschke, 76 v. also Miessner Jep (1961); (1942), Bon F.2d 547 Vale v. F.2d 865 D.C. nett, U.S.App.D.C. F.2d Egley, 947, 43 C.C.P.A. son (1951); Dewey Clark, U.S.App. concerning corrobora proceed D.C. 180 F.2d 766 required tion Watson, Corp. v. ings. Interchemical Cf. of the in Potter view aff’d, (D.D.C.1956), F.Supp. 179 summary procedures used should be U.S.App.D.C. F.2d 390 litiga- sparingly complex antitrust fact Cody calls attention considerations, policy tion. I think that Flymo the witness did not cross-examine reasons, although essentially for other failed to thus Board and es before here, require that where the same view clarify any questions their direct left “thorough a foundation conviction” accept testimony. this as neither I can overturning agency for rare- action could party shifting to the senior the burden according ly op- be entertained without his, requir Cody relieving nor as or portunity development be- facts accept ing fact finder as the the Board agency yond the record which led the testimony it. before

without conclusion,4 presumptively correct inter especially view This is so weighing testimony and a long testifying est of sup- or Board either with without elapsed period had between plementation infer- and the reasonable testimony the event time of the ences to be drawn therefrom. question. remand For stated would reasons findings finder, the case to the district court the fact If the trial court were law, summary fact, judgment conclusions of if the it would as indeed and the case after trial. aside had been set trial, there permitted proceed question in factual sufficient have been already from the the evidence hearing of other Board the absence thorough permit conviction

evidence to Cody despite de-

in favor of Board’s contrary. But other termination Petitioner, PRESS, The ASSOCIATED trial, a different but at the or evidence appraisal permissible record The FEDERAL COMMUNICATIONS an ab- result the fact finder could well and United States COMMISSION part. on its sence of conviction such America, Respondents, Broadcasting In Poller v. Columbia Telegraph Co., Telephone and American System, Inc., 464, 82 S.Ct. Intervenor. Supreme 7 L.Ed.2d 458 No. 22860. summary judgment emphasized un- Appeals, States Court United granted only where der Rule 56 can be Circuit. Columbia moving is entitled Argued Oct. 1969. quite law, as a matter of where where clear truth is and what Sept. Decided genuine trial, and that issue remains purpose to cut the rule is litigants right if to trial off from the (citing try they really have issues U.S.App.D.C. Patents, Stieg v. Commissioner Cf.

Case Details

Case Name: John F. Cody v. Aktiebolaget Flymo

Court Name: Court of Appeals for the D.C. Circuit

Date Published: Mar 20, 1972

Citation: 452 F.2d 1274

Docket Number: 23575

Court Abbreviation: D.C. Cir.