# Application of John W. Hession, Jr > Court of Customs and Patent Appeals · December 21, 1961 · 296 F.2d 930 URL: https://www.frixlaw.com/law-library/cases/9448271 ## Case - **Full name:** Application of John W. HESSION, Jr. - **Court:** Court of Customs and Patent Appeals - **Decided:** December 21, 1961 - **Citations:** 296 F.2d 930; 49 C.C.P.A. 809 - **Precedential status:** Published - **Opinion:** Concurrence by Worley - **Judges:** Worley, Rich, Martin, Smith, Kirkpatrick - **Cited by:** 8 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/9448271 ## How later opinions describe it (automated extraction) - explaining that federal courts are courts of “limited jurisdiction and, as such, must have statutory basis to exercise jurisdiction” ## Opinion text WORLEY, Chief Judge (concurring). While I am not in complete agreement with everything said in ' the majority opinion, I am satisfied it reaches the only result the record will fairly support. Hession’s contention below, and here, that he invented the aerosol device but lost his rights through fraud, goes to the very heart of this appeal and deserves careful review by this court. That the board gave full and detailed consideration to Hession’s proofs before holding them inadequate is evident from the following: “We see no merit in appellant’s contention relating to fraudulent action as to the inception of the Ziherl application, and cannot accept this as a determinative factor here. While there may be other tribunals where a question of fraud could be suitably investigated and evaluated, *938 as by "the exhaustive examination of those parties involved as well as other witnesses, we do not have either the machinery or the authority for any such procedure. Furthermore, even apart from this matter, • insofar as the actual record before us is concerned, we find no positive factual evidence therein tending to • establish any fraud, but only what appear to be statements of conclusion by appellant in this direction, presumably based on merely his own personal beliefs. We note in this connection appellant’s comment that prior to the issuance of the Ziherl patent he had no knowledge of the Ziherl application “or that any question of priority of inventorship existed with reference to the subject matter” hereof. It appears, however, that it is stated in the record of this application in the amendatory paper submitted June 16, 1955 presenting claims 14 through 27, that preparatory to the election by Z & W appellant was contacted by their house attorney as to his dates of invention and the evidence in collaboration thereof, and that appellant indicated he was not then able to produce the same after diligent search and investigation. As we see ' it, the implications of such contact ■ as to probable conflict with some ,, t , j i XI other disclosure owned by the as- ,, , , signee should reasonably have been clear to appellant. “Further, in our treatment of the instant issue, we feel that we should call attention to another matter that has not been mentioned by either the examiner or appellant. Regardless of all else, the fact remains that there is in existence the Ziherl patent document having an effective date earlier than the fling date of appellant. In accordance with Section 102 of the Patent Statute, this document by its very existence is a bar to appellant unless properly anteiated. Yet, even in the face of such far, we do not find appellant to have submitted any proper factual evidence to denote his invention of the instant subject matter earlier than the effective date of the patent document in question. This would be a prerequisite even where, as here, there is common claiming, and in view of the nature of the matter before us it would be reasonable that the factual evidence required have the full character specified in Rule 131. While Ziherl may have submitted an affidavit in this application to the effect that he was not the inventor of the subject matter of the patent, this would not of itself impute earlier inventorship of such subject matter to appellant. Thus, even if we were in accord with appellant as to his particular contentions advanced in this case (we are not, as pointed out herein), the absence of a showing as noted to establish appellant’s inventorship earlier than the effective date of the Ziherl patent would itself preclude any holding in appellant’s favor.” (Italics supplied.) in reqUest for reconsideration, Hession challenged the correctness of those holdings. In its final decision, the board again disposed of Hession’s contentions as follows: , ,, , , , , ,, , Appellant also contends that we erred m not finding fraud to exist , ,, , , , . ,, , here as alleged by him, on the basis that the facts as pointed out by ap_ pellant therein would point up to the fraud that was committed both with respect to Hession as well as the Patent Office. We see no merit in this contention. In this respect, in-so far as the actual record of this application is concerned any such position as to fraud as taken by appellant must be reached only on a basis of mere implication. As we stated in our decision, there is no positive factual evidence in the actual record before us tending to establish any fraud. “Appellant additionally urges that our comments in our decision relat *939 ing to failure to antedate the effective date of the Ziherl patent document constituted a new ground of rejection, and that on this basis the instant application should be remanded to the examiner to permit appellant to present additional evidence to antedate the Ziherl application filing date. We do not agree with appellant that the comments in question involve any new ground of rejection. It appears to us that it would stand to reason that in any contention such as here involved of entitlement to a patent because of earlier inventor-ship than another, a necessary concomitant to such contention would be an affirmative establishment of the fact of such earlier inventorship. Hence, in referring to a lack of such prerequisite, our comments would not involve anything in the way of a new ground, but would clearly relate only to consideration of a fundamental matter inherently part and parcel of appellant’s initial basic contention. Thus, we find no basis for any remand such as mentioned by appellant.” (Italics supplied.) Although the instant record is incomplete in some respects, it still has its share of conflicts and inconsistencies. For example, an initial search for corroboration of Ziherl as the inventor was successful, but “after diligent search and investigation” no corroboration could be found for Hession. Although a later search revealed evidence which allegedly supported Hession, that evidence is more in the nature of an assumption by counsel than actual' proof, and certainly would not nullify the corroborating evidence that Ziherl was the inventor. The record is further complicated by two completely contradictory statements by Ziherl as to his inventorship, along with the following from Hession’s request for reconsideration below: “We admit that the statement of Hession under oath conflicts with the statement in the amendment submitted June 16, 1955, by the then attorneys for Hession and Z & W that applieant Hession was contacted as to his dates of invention. * * * ” On such a record, I hardly see how it can be said that the board erred in holding that Hession had failed to properly prove his case. Another element worthy of consideration is the use to which Ziherl put his patent from its issuance until his disclaimer. The record is silent as to how many, if any, licenses were granted innocent third parties. Hession’s patent rights should be crystal clear before this court would be justified in putting him in a position whereby he could subject to legal harassment those who, in good faith, relied on the validity of the Ziherl patent. I submit that this record does not provide that degree of proof. On this , record I am unable to see how Hession’s rights would be “extinguished.” If anyone “extinguished” those rights it was Hession himself. Long before this controversy was born, he willingly and voluntarily sold, for value, his every right, title, and interest, real or imagined, in and to his aerosol device. ■ As I understand the present posture of this appeal, the Ziherl patent now belongs in the public domain, or, as put by Hession’s counsel, “ * * * the Ziherl patent has been disclaimed in its entirety and is a nullity.” In other words, the invention, through no fault of Hession, now belongs to the public. But, as I un-' derstand the dissenting view, it would be withdrawn and a patent given to Hession until 1972. I am aware of no precedent for such action. Certainly this record will not support such a result. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9448271. Public record. Not legal advice.