# Young v. Dworkin > Court of Customs and Patent Appeals · January 17, 1974 · 489 F.2d 1277 URL: https://www.frixlaw.com/law-library/cases/8891892 ## Case - **Full name:** Frank L. YOUNG v. Howard S. DWORKIN - **Court:** Court of Customs and Patent Appeals - **Decided:** January 17, 1974 - **Citations:** 489 F.2d 1277; 180 U.S.P.Q. (BNA) 388; 1974 CCPA LEXIS 205 - **Precedential status:** Published - **Opinion:** Concurrence by Rich - **Judges:** Miller, Rich - **Cited by:** 29 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8891892 ## Opinion text RICH, Judge (concurring). The United States patent system is a first-to-invent system, wherefore we have interferences to determine, in eases of conflict, who the first inventor is. But for at least a century it has been a *1283 qualified first-to-invent system. The de facto first inventor has not necessarily been adjudged to be the de jure first inventor. In Mason v. Hepburn, 13 App. D.C. 86 (D.C.Cir.1898), the court expressed its conclusion that the actual first inventor should not get the patent in two different ways. Its first statement was that “Hepburn must be held to be the first inventor in the sense of the law regulating the grant of patents.” (Mason was actually the first inventor.) Its second statement was that Hepburn must “be regarded as the real inventor and as such entitled to his reward.” Hepburn, it should be remembered, although the second inventor, already had his patent and the question before the court was whether Mason should get one on the same invention because he was in fact the first inventor. Though we are accustomed to talking about the Mason v. Hepburn doctrine, the court deciding that case in 1898 did not pull its holding out of its hat; it made it on the basis of consistent decisions going back at least to 1872, cited in its opinion, and some of the reasoning appearing in the opinions. Several of these were by Commissioners of Patents or Acting Commissioners and went off on various theories of law including forfeiture, abandonment, abandoned experiment, and estoppel based on laches. But whatever the theory on which the decision was based, the actual first inventor lost out to a second inventor who was being diligent in applying for a patent and making the invention available to the public while the first inventor was being dilatory in those matters. In view of the fact that the time interval in this case — about 27 months— seems short by comparison with Mason’s 7-year delay, I call attention to a few early cases cited in Mason v. Hepburn, the earliest being Monee v. Adams, 1 O. G. 1 , 1872 C.D. 1, opinion by Duncan, a perspicacious Acting Commissioner. One of the headnote headings of that opinion is “Forfeiture by laches.” The invention in that ease was a combination tool consisting of a handle with a putty knife at one end and a glass cutter at the other. The Commissioner found it to be of doubtful patentability but went ahead and decided the interference anyway. Both parties proved actual reduction to practice, Monee before Adams by about 10 months. The question posed was whether, nevertheless, Adams was “to be regarded as the prior inventor.” He was so regarded. The determining factor was the behavior of Monee during a period of 18 months from his actual reduction to practice to his filing date. The evidence showed that Monee never abandoned his invention and always intended to patent it. He had, in fact, consulted his patent attorney about how long it would be safe to wait and was told it had better not be more than two years, by analogy to the then two-year grace period following a public use. (R.S. 4886.) Monee also testified that he delayed taking any steps to make the invention public because he was manufacturing another glass cutter and wanted to fill the market “before introducing a new article.” He was spurred into filing by being approached by Adams who wanted Monee to purchase his invention. Monce’s 18-month delay for these reasons, during which time Adams proceeded diligently to reduce to practice and file, was fatal to his right to a patent. The opinion states: This, under the well-settled practice of the Office, must be regarded as working a forfeiture of his rights, unless, as he contends, he had an indefeasible right to delay two years after perfecting his invention before making an application upon it. [Emphasis mine.] It was held there was no such indefeasible right. The underlying policy was stated thus: It is true, as often announced, that mere delay, no matter how long continued, cannot impair an inventor’s right to a patent. It is only when, by reason of such delay, another party gains the opportunity to give the invention to the world, and actually becomes the first to do this, that the first inventor’s rights pass away. *1284 It is also true that the law looks with indulgence upon delays which arise from the circumstances of the party. Hence the requirement of reasonable diligence only; but in the present case there was no controlling necessity that compelled delay. It was an intelligent, deliberate act on the part of Monee, and done, not for the purpose of improving the invention before entering upon the manufacture of it, so that the public might eventually reap the greater benefit but for the less praiseworthy object of filling the market with inferior goods * * *. Thus at that early date, and probably earlier too, the law permitted an inventor a reasonable time within which to perfect his invention but not to sit around doing nothing with it. Another policy statement in the opinion is that the object of the patent law “is to reward that man from whom the public actually derives the benefit received, unless, in fact, another, prior in making the invention, is proceeding to give it to the world with no further delay than what is imposed by circumstances beyond his control.” Thus we see as already established in the Patent Office more than a century ago the policies underlying what we know as “the Mason v. Hepburn doctrine.” Even in those early days the controlling factor was not time but conduct. We also see in these early interferences that the concept of “diligence” was viewed as applying to two different periods: diligence in reducing the invention to practice and diligence in filing a patent application after a reduction to practice. It clearly appears to have been the rule that absence of the latter while a rival inventor industriously brought the invention to public attention through manufacture, or by proceeding with the filing of an application for patent, resulted in loss of the right to a patent by the first inventor unless he could show some good excuse for his inaction. In Mallett v. Cogger, 1879 C. D. 100 (Com’r.Pats.) we find the interesting concept that the second inventor “rescues the invention from oblivion and confers its benefits upon the public.” In Farmer v. Brush, 1880 C.D. 5 (Com’r.Pats.), Farmer appears to have been the first inventor to have completed the invention but since he did nothing with it for a bit more than two years thereafter, Brush, who already had a patent, received an award of priority “pro forma.” The case went off on an abandonment theory. In Sheridan v. Latus, 1883 C.D. 76 (Com’r.Pats.), the real parties left over from a three-party interference were Latus and one Clarke who was the actual first inventor. He lost out, however, through having given “no thought” to the invention from early 1879 to the summer of 1881, after what clearly appears to have been an actual reduction to practice. Commissioner Marble nevertheless ruled against him on an erroneous application of the “abandoned experiment” doctrine, holding Latus entitled to the patent “not because he was the first inventor, but because at the time he made his invention there was no one, so far as is shown, who had the right to make claim thereto, and that he used due diligence in prosecuting his claim therefor.” It will be noted that Mason v. Hepburn cites the 1890 text Robinson on Patents, § 390 (C.D. p. 516). In this section, which is entitled “Negligence in Applying for a Patent Does not Affect the Rights of an Inventor except by Es-toppel,” Robinson reviews the above and other cases, concluding that an inventor who has completed his invention is required “to proceed with reasonable diligence to disclose it by applying for a patent, if he desires to claim it as against a subsequent inventor” (p. 553, emphasis mine). Noting a conflict in the cases — some courts having refused to rule against a first inventor notwithstanding his laches on any ground short of actual abandonment of the invention to the public — Robinson favored applying an estoppel against a dilatory first inventor. He says (pp. 558-559): The former rule may on equitable grounds be regarded as the more cor *1285 rect, since an inventor who, having perfected his invention, voluntarily conceals it and unreasonably delays his application for a patent, thereby wilfully misleads subsequent and innocent inventors into the belief that the field covered by the invention is still open, and he therefore ought to be estopped from patenting the invention and appropriating its exclusive enjoyment to himself after their honest efforts in the same direction have succeeded. 3 I have set forth briefly some of the antecedents of Mason v. Hepburn because I think courts and the bar have recently too much concentrated on the precise facts of that case without appreciating the basic principles underlying the decision, which was far from unique in the annals of patent law in 1898, several years after Robinson expounded those principles. We should now try to understand those principles and not attempt to derive them from Mason v. Hepburn alone, which was but one episode in the development of the law. In delving into these old cases it becomes apparent that it is not the time elapsed that is the controlling factor but the total conduct of the first inventor. While only 27 months is involved in the case at bar it is clear that in the nineteenth century the Patent Office thought nothing of depriving the first inventor of his right to a patent as against a more diligent second inventor when the period involved from reduction to practice to filing was two years or less. It all depended on what the first inventor was doing during the period of delay. It is clear that it was regarded as a question of “diligence.” Robinson in § 390 treats of both diligence in reducing to practice and diligence in filing. Clearly use of the term should not be. restricted to the former period. In either case, the existence of diligence depends on what the inventor is doing and the circumstances under which he acts. It may also be a relative matter, taking into account what the later inventor is doing too. Review of our recent opinions on this issue will show that we have tried to take the whole picture into account. As we said in Brokaw v. Vogel, 429 F.2d 476 , 57 CCPA 1296 (1970), “What is involved is a policy question as to which of two rival inventors has the greater right to a patent.” And again, “it is a rule according to which the patent right goes to the most deserving.” Section 102(g) * under which we have been deciding these cases since 1953 is, without question, a broadly stated codification of previously existing law. It is in part based on a prior statute. The *1286 Revisers Note to § 102(g) states that it is derived from R.S. 4920, the second defense, which statute read: In any action for infringement the defendant may plead the general issue, and, having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters: * -X- * * * -X- Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same. The Revisers Note also says of § 102(g), “This paragraph retains the present rules of law governing the determination of priority of invention.” We thus have in the present statute, as we had in its predecessor, the concept of “reasonable diligence” in priority contests and we also have, from the body of ease law, the rule that a contestant loses, even if he is the first inventor, if he had abandoned, suppressed, or concealed his invention. The meaning of these terms is not to be derived only from dictionaries, even if published before 1952, but from the cases involving priority disputes showing what fact situations were judicially deemed to amount to abandonment, suppression, or concealment. I have touched on some of them but there are many more. If Congress understood anything about § 102(g), it was that it was codifying case law, as the Revisers Note told it, not that it was making law according to Webster’s Dictionary. Taking into consideration the facts of the present case as set forth in the opinion of Judge Miller and the principles which underlie the many decisions which have awarded “priority” to the second inventor in interferences, I conclude that priority in this case was properly awarded by the board to Dworkin and I therefore agree to an affirmance. In general, I agree with the reasoning of the majority opinion and I believe it intends to apply the law as I see it; but I wish to emphasize that what controls here is § 102(g) and not the Mason v. Hepburn case alone or its limited “doctrine.” For that reason, I particularly agree with the majority that “spurring” into activity by an opponent is not essential to a finding of suppression or concealment. I cannot agree with the board that the question in this case is whether Young “forfeited his right to a patent." (My emphasis.) But for Dworkin’s conflicting claim, Young forfeited nothing and would get a patent. All he forfeited, as I tried to point in Brokaw v. Vogel, supra, last paragraph of the opinion, was the right to rely on his prior actual reduction to practice in a priority dispute. Considering what Robinson said, quoted above, another, and perhaps better, way to have stated it would have been that Young was estopped by his conduct to rely on his reduction to practice in a priority dispute. In view of § 102(g), however, it is now enough to find that Young either suppressed or concealed. If he did either, he loses the interference and, by custom, “priority” — the magic word by which all interferences are terminated (even where there is only one inventor and the issue is derivation) — is awarded against him. (Cf. 35 U.S.C. § 135 .) Therefore, there is no need to become involved with forfeiture or estoppel or any other legal theory. To this extent the codification of the case law in § 102(g) has simplified matters. There is no longer a need to look to Mason v. Hepburn and its “doctrine” as the source of the law. It is but one of the many decisions codified in the statute, which, as stated above, “retains the present [1952] rules of law governing the determination of priority of invention.” The board decided this case under § 102(g) and we are doing likewise. The issue is, therefore, not forfeiture or estoppel or anything other than whether Young suppressed or concealed, since no question of abandonment has been raised. The only reason we have to look *1287 to prior cases is to gain an understanding of the meaning of “suppressed” and “concealed,” which concepts have been codified in § 102(g). Case law “doctrines” are no more; the question is now simply one of statutory construction. I may say that this approach to the law is one which has just occurred to mé in the study of this case and I present it in the hope of making the law simpler and clearer in the future by the exclusion from opinions of unnecessary legal theories like forfeiture. . There seems to be no good reason why the doctrine of estoppel should not be applied in its fullest extent to an inventor who, having completed his invention, voluntarily delays his application for a patent. In the present condition of industrial enterprise he may be fairly chargeable with knowledge that other persons skilled in the art to which his invention appertains have perceived the same want, that they are striving to discover means by which this want may be removed, and that their inventive efforts are very likely to result in the same art or instrument which he had already produced. If under these circumstances he wilfully keeps silent concerning his prior discovery and permits these later inventors to expend their money, time, and energy in endeavors which would be at once abandoned were he to disclose the character of his own invention, he is certainly not entitled, on any principle of justice and fair dealing, to urge against them his superior right after they have completed their inventive acts and diligently attempted to secure the benefit of the invention to themselves and to the public by applying for a patent. This doctrine would probably have long ago met with universal acceptation had it not been unnecessarily confounded with abandonment of the invention to the public * * *. § 102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— :¡; :¡: * :(< (g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or coiieealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who .was first to conceive and last to reduce to practice, from a time prior to conception by the other. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8891892. Public record. Not legal advice.