Warren W. Fitzgerald v. Arbib

RICH, Judge

(concurring).

I agree with the result reached in Judge MARTIN’S opinion. I also agree that appellant did not establish diligence, assuming that he had to. But appellant’s principal argument is that his colored drawing of June 3, 1954, prior to the November 4, 1954 filing date of Arbib et al., on which they stand, should *767 be accepted as an actual reduction to practice, in which case Fitzgerald would not have to establish diligence.

I would not be satisfied to affirm in this case unless I felt that there is a good answer to appellant’s contentions. I think there is and I do not therefore, rest my opinion merely on the rule of stare decisis and the case of Dieterich v. Leaf, 89 F.2d 226 , 24 CCPA 1138, decided in 1937.

Appellant asks us to overrule or strictly limit the Dieterich case to its precise facts on the ground that it merely carries over into the field of designs the rules respecting actual reduction to practice in mechanical and similar cases, producing absurd results. The argument in support of this contention is that a design invention relates only to an impression made upon the eye of an observer and therefore a drawing which fully discloses that impression ought to be counted an actual reduction to practice. Appellant’s first example of the absurdity of a contrary rule is that his colored drawing, Exhibit 2, discloses his invention much more clearly than the drawings of his patent application, which constitute a constructive reduction to practice. His next example of absurdity is that said exhibit, in full color perspective, actually gives a much better impression of what the applied design looks like than the wooden pattern, Exhibit 5, assuming the latter to be an acceptable reduction to practice. Personally, I think the colored rendering gives the observer practically as complete an idea of the design invention as would viewing the finished commercial embodiment of it. But I do not think the rule of the Dieterich case, which we have decided to follow, produces absurd legal consequences, though it is possible by plausible argument to make the rule look logically absurd.

The trouble with appellant’s argument is that he makes the wrong assumption about the reason behind the rules relating to actual reduction to practice of non-design inventions. It is not true that the sole basis for the rules as to actual reduction to practice is the necessity of establishing that the invention will work, as he alleges. This puts the cart before the horse. There is no such necessity, as witness the effect of a patent application. While one cannot prove actual reduction to practice without establishing operativeness, in the case of a non-design invention, the real question is why there is such a rule and why there should be a rule that drawings cannot be a reduction to practice of a design for a three-dimensional article. There are also situations in which non-design inventions can be better understood from drawings than from seeing a physical embodiment of the invention, as anyone will realize who has seen a radio repair man, with a commercial radio in front of him, turn to the manufacturer’s circuit diagram to find out how the set is built and operates. But this is no reason for holding that as between two radio inventors the first to make a circuit diagram should be awarded priority, though the same diagram will suffice for a patent application, which will be given the same legal effect as an actual reduction to practice. This, too, could be made to seem an absurd situation, logically.

The seeming absurdity is removed by taking into account the fact that awards of priority in contests between rival inventors are made on policy grounds and that the rules we now have grew from the application of policy considerations. For example, in the case of Mason v. Hepburn, 13 App.D.C. 86 , 1898 C.D. 510, the inventor proved to have been the last to make the invention was held to be the “real inventor” or “the first inventor in the sense of the law regulating the grant of patents.” 1 In support of this seemingly anomalous result the court quoted *768 from Kendall v. Winsor, 21 How. 322 , 16 L.Ed. 165 , to show that the patent laws are so construed as to promote progi*ess in the useful arts, and concluded by saying:

“The true ground of the doctrine, we apprehend, lies in the spirit and policy of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting in perfect good faith that which he and all others have been led to believe has never been discovered by reason of the indifference, supineness, or wilful act of one who may, in fact, have discovered it long before.” (Emphasis mine.)

Through the years policy has led to the rule that filing an allowable patent application shall be treated as a reduction to practice. It is an important step in giving the public the benefit of knowledge of the invention. Likewise the building and successful testing of a device has been given similar legal effect, but this effect may be lost by abandonment, suppression or concealment. See 35 U.S.C. § 102 (g). Again, the policy consideration would seem to be that there has been sufficient progress in the direction of getting the invention into the hands of the public.

Notwithstanding dicta in a very few cases and corresponding statements in some old texts to the effect that drawings may be enough to constitute reduction to practice, all recent and much early authority is to the effect that they are not. The Dieterich case decided that they are not a reduction to practice of a three dimensional design. I am in favor of adhering to that rule for two policy reasons.

First, in all respects except one, the patentability of designs is subject to the same law as other inventions. 35 U.S. C. § 171, second paragraph. That one difference is that designs must be “ornamental” whereas other inventions must be “useful.” Compare sections 101 and 171. I therefore think it is desirable, simply for the sake of uniformity, to have the same rules as to actual reduction to practice with respect to all types of inventions obtaining protection under Title 35 of the United States Code.

Second, since we do not necessarily give the patent to the first inventor in fact anyway, I think it is sound policy to require, even in the case of a design invention, that an actual reduction to practice, which may prevail over one who has filed a complete allowable patent application, be based on something more than a drawing, no matter how completely that drawing may be capable of disclosing the invention. My legal conclusion is, therefore, that a “design for an article” under section 171, is not actually reduced to practice until it is embodied in the article. It is then much further on its way to the public as a commercial article than when it is in the drawing stage and such embodiment may reasonably prevail over the disclosure of a later filed patent application. Such a rule is in accord with the basic purpose of the patent system, which is to promote progress in the useful arts, not primarily to reward inventors. Motion Picture Patents Co. v. Universal Film Manufacturing Co., 243 U.S. 502 , 37 S.Ct. 416 , 61 L.Ed. 871 .

. It is interesting to note that in Mason v. Hepburn, 13 App.D.C. at p. 89 , it was said, “It is settled beyond all question, that a drawing of even the simplest machine or device, perfect in every detail, and plainly demonstrating the principle, efficacy and practical utility of the invention, will not constitute reduction to practice.”