276 F. 455 | D.C. Cir. | 1921
Lead Opinion
This is an appeal from a decision of the Patent Office in an interference proceeding awarding priority to the appellee Wright. The invention relates to mechanism for controlling the computations of a totalizer in a combined typewriting and computing machine. More specifically, as stated by the Examiner of Interferences:
“It comprehends two controlling means, one automatic and the other manual, a means whereby one of those is made operative and the other inoperative at will.”
The issue originally contained 19 counts. The Examiner of Interferences found that counts 10, 11, 12, 13, 15, 18, 19, and 20 were not readable upon Wahl’s disclosure and awarded them to Wright. As to the other counts, he found that Wright was restricted to his filing date of June 29,1910, for conception and disclosure and that inasmuch as Wahl, on April 1, 1910, had completed and successfully operated a machine embodying the subject-matter of those counts,
Wahl introduced in evidence a drawing (Exhibit No. 14), which bore date of July 18, 1907. This drawing was delivered when made to Mr. Roberts, president and treasurer of the Wahl Adding Machine Company, who testified as follows:
“Of a lot of papers, including tracings and blueprints, handed to me at the time, this was the only one on heavy manilla paper. I thought that to fold it up in the small shape necessary to place it in the document files, where I kept such papers, would crease it and spoil the drawing; so I rolled it up and placed it in the cupboard in the vault, where I kept books, original patent papers and other documents which could not be readily placed in the document files.”
The drawing- therefore was not discovered until after the original preliminary statement had been made. We attach no importance to this fact. Several years had elapsed, the drawing was not in the place where such drawings usually were kept, and it was not at all strange that Mr. Roberts should have forgotten that it had been placed in the vault cupboard. He identified the drawing and stated that, so far as he could judge, it had not been changed.
A Mr. Stevens, formerly president of the Wahl Company, when asked about this drawing said:
“I would say that this is the drawing showed me, or one like it, at least, since it shows the mechanism as I understood Mr. Wahl to explain it.”
In cross-examination this witness said: “When Mr. Wahl showed me the drawing he explained to me how it operated.”- He further testified in considerable detail as to the disclosure made to him at the time, that is, in 1907.
A Mr. Eanphear, at the time in litigation with the Wahl Company, was called as a witness concerning this drawing. He also testified at considerable length for Wright, who characterized him as “one of the best-posted men” he “had come in contact with in connection with machines of this nature.” In 1907 Mr. Eanphear was connected with the Wahl Company in the capacity of salesman. He testified that in February or March of 1907 he discussed with Wahl the advisability of ■ perfecting a machine that would accomplish automatic subtraction, and that Wahl immediately began to design means to that end; that he “was in close, practically daily, consultation with him” and that he felt very positive that “that was not only the original subtraction machine commercially, but original automatic subtraction machine.” Asked whether Wahl had ever shown him a drawing of a
“My understanding was that it would, in a position at the right of the detail column, automatically subtract, or be set at subtraction; the actual subtracting operation, of course, being accomplished by striking 'the typewriter keys.”
Witness further testified that he understood the mechanism of the machine, how it worked to accomplish the functions it was designed to perform. He fixed the time as between March and September of 1907. He then was shown the 1907 drawing, and thereupon stated that, while he could not identify it in detail, he could say he had seen “such a drawing and it would accomplish these things”; that he could not definitely identify it, but “either saw this one or something like it — ■ 1 don’t know which.” He further testified that Wahl’s disclosure included means for disabling the automatic subtracting feature and for manual control. This witness was not cross-examined, nor was any objection whatever interposed as to the character of the questions propounded to him. It is significant that the activities of Wright in this particular field did not begin until a time subsequent to an interview which Mr. Ranphear had with him after he had seen the Wahl drawing. We do not intimate, however, that there was any breach of confidence on the part of Mr. Ranphear, as no secret of what he had accomplished was made by Mr. Wahl, who testified very fully as to his activities in conceiving and perfecting this invention.
Reversed.
Dissenting Opinion
(dissenting). Wahl is the junior party and therefore, if he would prevail, must sustain the burden of proof. His Exhibit 14 is relied upon by the court as establishing conception and disclosure in 1907. The three tribunals of the Patent Office united in rejecting this exhibit as not sufficiently identified. We have often said that where there are three concurring decisions of the office on a question of fact, we will not reverse the decision of the Commissioner unless he is manifestly wrong. Flora v. Powrie, 23 App. D. C. 195, Bourn v. Hill, 27 App. D. C. 291, Gammeter v. Thropp, 42 App. D. C. 564, and Jobski v. Johnson, 47 App. D. C. 230. The opinion takes no notice of this rule.
When in 1914 Wahl filed his preliminary statement, he was not aware of Exhibit 14, for he made no mention of it in the statement. Not until about a year and a half afterwards did he think of it. Then he asked and obtained leave to amend his statement so as to refer to it. It is a little singular that he should have forgotten so important a document if he ever believed that it existed, as it now is, in 1907 and disclosed the invention. A large part of the exhibit is drawn according to scale by rule and compass, while the other part is in rough and free-hand lines. Wahl, does not contend that the first part contains the issue. Every element relied upon by him is in the latter part. If the two parts were made at the same time, why was not a like style of drawing adopted? If not made contemporaneously, when was the addition placed there? These questions are not answered by the record, and this is a cause for suspicion.
Wahl, of course, testified to the existence of the exhibit in 1907 and that it disclosed the invention according to his interpretation. For corroboration he relies upon Roberts, Stevens, and Eanphear. Roberts said he discovered no material difference between the exhibit and the drawing which he saw in 1907, but added that he could not read mechanical drawings readily. He does not say why he was able to identify the exhibit, or that he ever looked at it with a view to seeing what kind of structure it represented. • Stevens testified: “ * * * My impression is that this drawing [Exhibit 14] has left out a great many parts.” Lanphear, the chief reliance of Wahl in this respect, is spoken of as a salesman of unusual intelligence, but one who is not a mechanic or a draftsman. According to his testimony, Wahl showed him the drawing in 1907, but when asked if he recognized Exhibit 14 as the drawing then shown to him, he said: “I don’t believe I could identify it in detail.” He did not differentiate between the parts he could identify and those he could not. In answer to a question calling for his understanding of the exhibit, he said that it would “automatically, subtract, or be set at subtraction automatically.” If that was all that it would do, it did not disclose the invention, be
“If this testimony be carefully scrutinized, it will be found that Lanphear does not enlighten on just the points necessary. He does not state that he understands this drawing, Exhibit 14, to disclose the invention he had in mind. At best, what he said in reply to leading questions may be construed as meaning that some drawing that Wahl showed him years before disclosed a manual control for disabling the subtracting feature. lie was unable to say whether a drawing which Wahl had shown him was the same as the present drawings of Exhibit 14, and so far as any other drawing that Wahl may have shown him is concerned, Lanpheár’g testimony is worthless, since the other drawing is not of record to show if it disclosed the invention in operative form.”
It is upon testimony thus characterized that the court overturns the three decisions of the Patent Office. In my judgment it does not establish by even a fair preponderance that Exhibit 14 as it now appears was in existence in 1907.
But if we assume that its existence at that time is established hy a sufficient quantum of evidence, does it disclose the invention? If not, Wahl cannot prevail. The Examiner of Interferences held that there was a serious doubt in his mind as to whether it “shows mechanism capable of carrying out the operation ascribed thereto.” The Board said that it failed to disclose the subject-matter of any of the counts, and the Commissioner declared that it was “insufficient to show whether it discloses the invention in operative form.” These men are all experts, especially the Commissioner, who was for years principal examiner of the division in the Patent Office in which the applications originated. If the Commissioner’s views with respect to it are right, his judgment should not be reversed. What are the views of the court upon the subject? The opinion does not say. Are not the parties entitled to know ?
Even if it is assumed that Exhibit 14 shows conception and disclosure by Wahl in 1907, he must still prove that he was diligent when and after Wright entered the field, or fail in the contest. He relies on his Exhibit 2 for proof of this, but the Examiner of Interferences and the Board found that it did not disclose the invention of some of the issues, and the Commissioner did not pass on the question. To overturn the presumption that Wright, being the senior party, is entitled to prevail, there must be a judgment of this court upon the matter; but none is expressly given.
For these and other reasons which might be stated I dissent.