Reese v. Hurst

BALDWIN, Judge,

concurring.

I agree that the evidence amassed by appellants is deficient, as the majority opin *1238 ion suggests, in substantiating an actual reduction to practice. But I feel the majority improperly derogates the evidentiary significance of the Katz notebook. In particular, I believe the majority misapplies the law by concluding that the fact “[tjhat ‘Katz had no incentive to report to Reese and Roger tests which were not actually conducted’ goes to the weight of the evidence * * *, but does not satisfy the need for corroboration that is not dependent solely on Katz, as required even under the rule of reason.”

Corroboration Requirement

The majority follows the board in effectively according no weight to the Katz notebook as “independent corroboration” of an actual reduction to practice by appellants before July, 1970. Averring to Mikus and Thruston, the majority justifies its position by stating that the requirement for “independent corroboration” remains unaltered by the court’s adoption of the “rule of reason,” and may be satisfied by “evidence of surrounding facts and circumstances independent of information received from the inventor.” However, before this distillation of legal doctrine is accepted on face value and applied to the present facts, we would do well to seek some perspective on the origin and purpose of the corroboration requirement as interpreted under the rule of reason.

The need for corroboration in priority cases was enunciated early on in Mergenthaler v. Scudder, 11 App.D.C. 264 (1897). While often cited for its definition of conception, the Mergenthaler decision also considers the qúantum of proof sufficient to demonstrate conception, stating that:

The fact of conception by an inventor, for the purpose of establishing priority, can not be proved by his mere allegation, nor by his unsupported testimony, where there has been no disclosure to others or embodiment of the invention in some clearly perceptible form, such as drawings or model, with sufficient proof of identity in point of time. For otherwise such facile means of establishing priority of invention would, in many cases, offer great temptation to perjury, and would have the effect of virtually precluding the adverse party from the possibility of rebutting such evidence. Hence it has been ruled in many cases that the mere unsupported evidence of the alleged inventor, on an issue of priority, as to the fact of conception and the time thereof, can not be received as sufficient proof of the fact of prior conception. [ 11 App. D.C. at 278 .]

In Petrie v. De Schweinitz, 19 App.D.C. 386 (1902), the D.C. Court of Appeals adopted its own reasoning from Mergenthaler to rationalize a corroboration requirement in an interference that, like the one before us, involved a process invention. The junior party-appellant in Petrie testified to actually reducing to practice a process for improving “tobacco of inferior quality,” but the Commissioner found appellant’s evidence unpersuasive, stating that:

The testimony of the witness as to what Petrie told them he was doing or intended to do may be taken as showing that he had a conception of the invention at that time, but it cannot be accepted as showing a reduction to practice. Petrie himself is the only one who testifies to an actual performance of the process of the issue. None of the others saw it, and all that they know of it was derived from Petrie’s statements. The testimony of these witnesses does not corroborate Petrie’s present statement that he successfully performed the process, and his unsupported statement to that effect is insufficient to establish the fact. From the nature of the invention, the result of his experiments performed in secret could not be preserved to show what was done and whether or not it amounted to a reduction to practice of the invention, and his present statement of his conclusion that his experiments were successful and constituted a reduction to practice of the invention is not capable of being rebutted any more than would be the statement of an inventor as to his conception. Considering the natural bias of a party and the incentive to color the testimony *1239 in his own interest, it has been repeatedly held that the unsupported testimony of the inventor is insufficient to establish facts of this kind.

19 App.D.C. at 388-389 . 1 The court fully concurred in the Commissioner’s analyses, concluding that:

The evidence of self-serving declarations concerning an invention, whilst admissible as disclosures tending to establish the fact of conception, are clearly incompetent to prove the independent fact of reduction of that conception to practice.

It is worth emphasizing, however, that the “self-serving declarations” mentioned in the court’s opinion were alleged statements by appellant that several witnesses testified he had made to them regarding “what he had done or was doing in the way of practicing and perfecting his process * * *.” ' 19 App. D.C. at 388 . In particular, appellant in Petrie presented no contemporaneous documentation of his work, such as an experimental notebook, so that the testimony as to appellant’s statements was offered for the truth of those statements, i. e., as hearsay evidence that appellant’s experimentation amounted to a reduction to practice within the limitations of the counts.

The language, if not the rationale, of the Petrie decision was employed by this court in Kear v. Roder, 28 CCPA 774, 115 F.2d 810 , 47 USPQ 458 (1940), where appellant in an interference over the invention of an aircraft radio guidance system sought to prove a prior reduction to practice via third-party testimony and references to appellant’s notebook and time cards from the relevant period. The Kear court, requiring “independent corroboration,” discounted both testimony and documentation as based, in part or in whole, on information derived from appellant, and specifically characterized the latter evidence as “merely self-serving declarations of appellant, they having been made by him.” 115 F.2d at 817 , 47 USPQ at 466 . The excerpt from Petrie quoted above was cited by the Kear court in support of its lending no evidentiary weight to appellant’s laboratory notebook, despite the fact that Petrie dealt with testimony from memory of statements, supposedly made thirteen years earlier, that provided little detailed information concerning an alleged reduction to practice. 2

Seven years later, the ruling in Kear was reiterated in Thurston v. Wulff, 35 CCPA 794, 164 F.2d 612 , 76 USPQ 121 (1946), a case relied upon by the majority here. In Thurston, the board had concluded that deposition testimony by witnesses called on behalf of Thurston, the junior party, was insufficient as a matter of law 3 to substantiate an actual reduction to practice. Apparently unable to meet the board’s substantive objections, Thurston argued on appeal that no corroboration of his own testimony was necessary, since:

[I]n well-conducted, large laboratories such as the one involved in the ease at bar and in other well-operated business establishments where well-kept books and records are prepared and complete data *1240 on experiments properly compiled and filed there is not much opportunity for fraud being perpetrated and that, under such circumstances, there is little likelihood that the inventor’s testimony would involve perjury. [ 164 F.2d at 617 , 76 USPQ at 126.]

However, the court declined Thurston’s invitation to abrogate the corroboration requirement, stating in dictum that:

An inventor’s testimony * * * might be corroborated by facts and circumstances other than by an independent witness. Such proof or evidence should be independent of the testimony of the inventor and should not consist of self-serving documents prepared by him or under his direction, nor should it be based upon facts the truth of which depends upon information received from the inventor.

Id. (Emphasis added.) Thus, between Petrie and Thurston, there occurred, largely without critical analysis, a progression in judicial pronouncements regarding the corroboration of an actual reduction to practice. We proceed from a rejection, as corroborating evidence, of unverifiable testimony recalling oral communications from over a decade earlier (Petrie) to an ab initio denial of weight to a research notebook, i. e., a contemporaneous document, without any reasoned consideration of the circumstances bearing on the authenticity or reliability of the document (Thurston).

The Rule of Reason

I submit that the mechanical disposition of the evidentiary issues presented by appellant’s notebook in Thurston, and by Katz’s notebook in the present case, is inconsistent with the “rule of reason,” as promulgated by us on a case-by-case basis. In accordance with this general approach to evidentiary analysis, the goal of corroboration “is simply to establish that the inventor actually [reduced the invention to practice] and knew it would work, by proof that could not have been fabricated or falsified. All the evidence must be considered in determining whether * * * appellant has met such requirement.” Gianladis v. Kass, 51 CCPA 753, 324 F.2d 322 , 139 USPQ 300 , 303 (1963).

In particular, thorough consideration of all circumstances reflecting on the reliability of documentary evidence is deemed obligatory under the rule of reason; factors other than mere authorship of a proffered document by a party in interest must be weighed. For example, in Berry v. Webb, 56 CCPA 1272, 412 F.2d 261 , 162 USPQ 170 (1969), the court was confronted with witnessed pages from an inventor’s lab notebook, offered by appellant Berry as corroboration of an alleged reduction to practice of certain new types of crystalline x-aluminum oxide which were the subject of interference counts. The board had rejected as uncorroborated the claim by Berry that his crystals were of the width specified by a count, on the ground that Berry’s evidence on this point was “a report or notes by the inventor,” i. e., Berry’s research notebook.

The court in Berry disallowed the board’s reasoning as follows:

The purpose of the rule requiring corroboration is to prevent fraud. Keeping that purpose in mind, we examine the facts of record in the present appeal. Berry’s notebook is a contemporaneous record of his thoughts and actions during the performance of an organized research endeavor. What incentive, one may ask, would there be to falsify the observations regarding the dimensions of the crystals produced by the experiments? Surely, it would not be reasonable to imagine that Berry had in mind, at the time he recorded the experiments’ results, this interference with its limited counts. Moreover, Berry’s laboratory partner, Simmons, testified to having observed the experimental work being performed, understanding the recorded results, and witnessing the notebook records. This establishes that the notebook was in existence and properly kept at the time alleged. To require more corroboration than that set forth above would not, in our view, serve to dispel the possibility of fraud to any significantly greater extent than has already been done in this instance, and would rather appear only to lead to an unjust result.

*1241 412 F.2d at 267 , 162 USPQ at 174 .. The points of departure for the analysis of the Berry court warrant emphasizing: first, any motivation for appellant to shade the results of his experiments recorded years before the present controversy is discounted; second, the signature of a witness who understood the recorded results is relied upon as evidencing the authenticity (not the accuracy) of the notebook’s contents. 4

I consider the reasoning in Berry regarding the adequacy of an inventor’s notebook as corroborative evidence to be exemplary of the sort of evidentiary analysis which is appropriate under the rule of reason. 5 A very similar line of reasoning can be traced in Ritter v. Rohm & Haas Co., 271 F.Supp. 313 , 154 USPQ 518 (S.D.N.Y.1967), where corroboration of an alleged conception was at issue. 6 See also Cleeton v. Hewlett-Packard Co., 343 F.Supp. 1215 , 173 USPQ 534, 539-541 (D.Md.1972). The relevant portions of Judge MacMahon’s persuasive exposition in the Ritter decision are reprinted in the margin. 7

*1242

Conclusion

In this case, the board has stated that the notebook pages in question were not “witnessed, signed or otherwise authenticated,” and that the notebook itself apparently had not been seen by anyone other than Katz before the present controversy arose. However, I feel there is sufficient circumstantial evidence of record (Reese’s May 28, 1969, letter to Katz; Roger’s testimony concerning Katz’s disclosure at the June 9, 1969, luncheon meeting; the forwarding of phosphoric acid samples to Ledoux for analysis) to substantiate the existence of the notebook as of the dates appearing in the record of Katz’s experiments. Therefore, following the reasoning of Berry and Ritter , I consider the fact that the notebook was not witnessed to be of little consequence.

Moreover, we should be mindful of the fact that the invention in question, unlike that in Berry , is a process yielding no unique end product. Even a knowledgeable “over-the-shoulder” observer of an experiment during which the process was conducted would be hard-pressed to verify exactly how it was carried out (e. g., the amount of steel wool used or the actual concentration of the acid solution employed); consequently, his signature on an experimental record would hardly be determinative of the accuracy of the record. The absence of a third person’s signature from the pages of Katz’s notebook therefore should not be the basis for discounting the notebook as a factual account of Katz’s experiments.

Finally, I conclude that any motivation conceivable for Katz to misrecord, either purposefully or inadvertently, the nature of his experiments in his personal notebook is far outweighed by the pressures inherent in his position as Reese’s employee. Clearly, as an independent contractor hired by Reese to conduct investigations intended by Reese for commercial application, Katz would be strongly encouraged to accurately report his results, which Reese would have been expected to verify. The candid postmortem of the April/May 1969 experiments represented in the exchanges between Katz and Reese evidences a reality of their relationship — Katz could shade his results only at substantial risk of being discovered and having his employment terminated. Perhaps more importantly, Katz, who owned no share in URC, had little expectation in May 1969 of a proprietary interest in any commercial developments based on his work for Reese; accordingly, he was less subject to undue influence stemming from a strong personal desire to see the project succeed in a financial sense.

Therefore, absent evidence of a motivation for Katz to fabricate the contemporaneous reports of his experiments, the sufficiency of the notebook’s contents as corroborative evidence should be assessed in light of the whole record. For the reasons set out in footnotes 9 and 10 of the majority opinion, I agree that appellant’s evidence fails to demonstrate an actual reduction to practice. I therefore concur in the conclusion reached by the majority.

. Like the junior party in Petrie , appellants in the present case seek to prove a reduction to practice of a process, the results of which yield no tangible end product to “be preserved to show what was done.” Appellants are also said to have researched “in secret,” and it is apparently true that URC in 1969 did not have a systematic procedure for disseminating basic research data throughout a diverse corporate hierarchy. Be that as it may, one can hardly characterize Katz’s work as other than “an organized and supervised program of research” —Katz was, after all, hired by URC to do specific experiments, with a particular goal in mind, using funds provided Howard University under a formal grant from URC.

. The Kear court also relied on Collins v. Olsen, 26 CCPA 1017, 102 F.2d 828 , 41 USPQ 220 (1939). However, the documentation offered by appellant (and rejected by the court) as corroboration in Kear took the form of reports by appellant to his superior concerning successful testing of a new gelatin mixture. Characterized as “self-serving” by the court, the test reports in Collins are nevertheless clearly distinguishable, from the standpoint of reliability, from the sort of contemporaneous record of experimentation as was summarily discounted in Kear .

. More specifically, the board in Thurston found appellant’s evidence regarding the identity of a newly-synthesized compound to be defective.

. Compare our rationale for denying corroborating weight to an unwitnessed notebook in Gortatowsky v. Anwar, 58 CCPA 1266, 442 F.2d 970 , 170 USPQ 41, 43 (1971):

In this case * * * we do not see how the laboratory notebook of Gortatowsky could be said to provide the necessary corroboration. In particular, it is noted that the notebook pages were not read and witnessed by anyone. In addition, Gortatowsky testified that he only attempted to keep his notebook entries in chronological order “to a degree” and that it was his practice at times to leave blanks in the notebook which might be filled in at a later date. Thus, there isn’t even adequate evidence here that the notebook itself was in existence and properly kept at the time alleged, let alone sufficient evidence in the notebook itself to in turn corroborate Gortatowsky’s testimony. We, therefore, conclude that the board was correct in holding that Gortatowsky’s proof of reduction to practice fails for lack of proper corroboration. [Emphasis added.]

. Also noteworthy in this vein is the rationale used by this court in Anderson v. Pieper, 58 CCPA 1221, 442 F.2d 982 , 169 USPQ 788 , 790 (1971), to justify accepting as corroborating evidence notebook entries, concerning the analysis of a new compound, where the entrant, an associate of the co-inventors Anderson and Truett, had died by the time of trial:

We agree with Anderson that application of the rule of reason in this case compels the conclusion that the notebook entries of Merckling [the deceased] corroborate the inventors’ testimony that a solid polymer was produced. The entries were thoroughly authenticated, a complete foundation for admissibility was laid, and the entrant was unavailable to testify. The circumstances surrounding the making of the entries are in this case convincing as to reliability of the entries for their truth. [Emphasis added.]

. Ritter was distinguished by this court on its facts only in Frilette v. Kimberlin, 56 CCPA 1242, 412 F.2d 1390 , 162 USPQ 148 (1969).

. Defendant asserts that Ritter’s notebook is of no evidentiary value, regardless of how persuasive it may be, because it is a “self serving” document and not the “independent corroboration” the law demands. We note at the outset that this is different from defendant’s legal contention at the pre-trial conference (January 27, 1967 Tr. 13-14). There is no question that Ritter’s oral testimony, standing alone, is insufficient to prove conception. The notebook is the only corroborative evidence introduced by plaintiff; if it is legally insufficient to establish corroboration, Ritter cannot prove an invention date prior to the French patent, and his patent is invalid.

We have found no case in this circuit expressly dealing with the nature of the corroborative evidence required. Decisions elsewhere are split. Some rigorously demand “independent” evidence; any documents prepared by, or under the supervision of, the inventor are “self serving” and cannot provide corroboration. Others stress that it is the oral testimony of the inventor which must be corroborated, and this can be done by any means, including the use of diaries, notebooks, and records prepared by the inventor, as long as this evidence is “clear and convincing.”

We are disinclined to rely on quantitative rules of evidence in our search for truth. Their appeal of simplicity is outweighed by the vice of blindness. Rather, we look to the purpose behind the rule requiring corroboration for guidance in its application. The manifest purpose of the rule is to prevent fraud. When the validity of a patent turns on the exact date a certain event occurred, or discovery was made, there is an inherent risk of perjury if after-the-fact oral testimony by the most interested party, the alleged inventor, can carry the invention date back beyond the filing date.

In light of that purpose, it would be absurd to hold that Ritter’s notebook is not sufficient corroboration, but that “independent” evidence of his conception date is required. The *1242 issue here is the exact date when, in late 1944, almost twenty-three years ago, Ritter conceived his invention. His notebook, a document of uncontested authenticity, is a contemporaneous record of his thoughts and actions. It is hard to imagine what more reliable corroborative evidence could be found. [Footnotes omitted.]