Petition — Shindelar v. Holdeman

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Office-Supreme Court, U.S.

es ae a

FEB 18 1981

ALEXAND:i:.¢ L. STEVAS,

No. CLERK 3

IN THE

Supreme Court of the United States

OCTOBER TERM, 1980

JosEPH JOHN SHINDELAR, Petitioner,

ApIN F. HOLDEMAN, MELVIN V. GAEDDERT, Howarp J.

RATZLAFF, MARTIN E. PRuITT and Howarp R.

LOHRENTZ, Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS AND

PATENT APPEALS

ROBERT S. SWECKER

Counsel of Record

KirK M. HUDSON

BuRNS, DOANE, SWECKER &

MATHIS

George Mason Buildin

Washington & Prince Streets

Alexandria, Virginia 22313

(703) 836-6620

H. VINCENT HARSHA

JOHN M. NOLAN

DEERE & COMPANY

John Deere Road

Moline, Illinois 61265

Counsel for Petitioner

LARA TREN STN LEE ETE CLE SIL OLIN IT EEO SLES LLL A SES ELIS

PRESS OF BYRON S. ADAMS PRINTING, INC., WASHINGTON, D.C.

QUESTIONS PRESENTED

1. Is there a Constitutionally mandated public policy

expressed in the Patent Laws favoring as between com-

peting inventors the first to invent over the first to file a

patent application?

2. Has the Court below violated the mandate of

Congress and improperly engrafted a requirement on the

statute, 35 U.S.C. §102(g), that in an interference the

first inventor who is the second to file will be deprived

of his patent rights unless he can prove he ‘‘promptly’’

filed and/or is the ‘‘more deserving’’ inventor?

3. Does the ‘‘prompt filing/more deserving’’ ‘Te-

quirement created by the Court below violate due pro-

cess as applied in the present case?

4. Is intent or time the controlling factor in deciding

a question of ‘‘suppression or concealment’’ under 35

U.S.C. §102(g)?*

* The parties to the proceeding in the United States Court of

Customs and Patent Appeals were those listed in the caption. The

real party in interest as to the party Shindelar is Deere & Company

and as to the party Holdeman et al is Hesston Corporation, which

is partly owned by Fiat, an Italian corporation.

iii

TABLE OF CONTENTS

PAGE

QUESTIONS PRESENTED... .. 06-0: se eee eee cree ec reeeeee i

oo RR es a ee ]

JURISDICTION OF THIS COURT ..........ccecceceseees |

CONSTITUTIONAL PROVISIONS, STATUTES AND RULES IN-

Th, A eee

Sra reeeeryT Ce Ti ei inc eee ews mec cnvcsescess 2

REASONS For GRANTING THE PETITION ........-+-+++55 6

1. The Decision Of The CCPA Awarding The

Patent To A Later Inventor Is Contrary To

Statutory Authority And Constitutional Policy . . 6

2. Only Congressional Action Can Authorize A

Change From A First To Invent To A First To

File Patemt System... cs csc ccc cece ec esones 12

3. Favoring The First To Invent Over The First

To File Is Consistent With And Fosters The

Ultimate Purpose Of The Patent Laws........ 13

4. The CCPA’s Prompt Filing Rule As Applied In

The Present Case Violates Due Process........ 14

5. The CCPA’s prompt Filing Rule Does Not

Serve The Public Interest ................00-- 15

Ot) Me 8, eee 19

APPENDIX A

Opinion and Decision of the United States Court of

Customs and Patent Appeals, September 4, 1980... la

APPENDIX B

Opinion and Decision of the Board of Patent In-

terferences, August 28, 1979 ..........2ceeeeeeeee lla

APPENDIX C

Testimony on Behalf of Petitioner in the Board of

Patent BGGPEOUUIIIEE fico ccc cc cece ccc cccccccnns 23a

PRECEDING PAGE WAS BLANK

Table of Contents Continued

PAG

APPENDIX D

Order of The United States Court of Customs and

Patent Appeals Denying Petition for Rehearing,

NEE NS OTE CAAA echasSks Sis KAP ae 4 alka hee os 43a

APPENDIX E

Constitutional Provisions, Statutes and Regulations

SI a) Ee i Se oo oid kino ace Rawoeel 45a

TABLE OF AUTHORITIES

CASES: PAGE

Allen v. W.H. Brady Co., 508 F.2d 64 (7th Cir. 1974) .. 7

Altorfer v. Haag, 74 F.2d 129 (C.C.P.A. 1934)... 0. 10, 11

Amerline Corp. v. Cosmo Plastics Co., 407 F.2d 666

(Tth Cir. 1969): . 0. cece cc ccewecesccccnerecesenns 7

Dolbear v. American Bell Telephone Co., 126 U.S. 1

COUR a ores cc eens des Cha viy Vas Bob slece ewe FEN e 7

Gallagher v. Smith, 206 F.2d 939 (C.C.P.A. 1953)... 10, 11

Gould v. Hellwarth, 472 F.2d 1383 (C.C.P.A. 1973) .... 7

Gould v. Schawlow, 363 F.2d 908 (C.C.P.A. 1966) ..... 7

Horwath v. Lee, 564 F.2d 948 (C.C.P.A. 1977) .....--- 9

Hughes Aircraft Co. v. General Instrument Corp., 275

F.Supp. 961 (D.R.I. 1967), modified, 399 F.2d 373

(ist Cir, 1968)... ... ccc cece cece cee e reece nenccen 7

International Glass Co. v. United States, 408 F.2d 395

elt Me. | eee eee ore eee 7

Kendall v. Winsor, 62 U.S. 322 (1858) ......--0 eee cues 10

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470

ERB err Ree ee ec eee, Ss. a7

Marconi Wireless Telegraph Co. of America v. United

States, 320 U.S. 1 (1943) ......c cece eee ee ee eeeee 8

Mason v. Hepburn, 13 App. D.C. 86 (1898) .....-. 10, 11

In re Natta, 388 F.2d 215 (3d Cir. 1968)........-+000: 7

Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) ..... 6, iz,

13, 14, 15

Precision Instrument Manufacturing Co. v. Automotive

Maintenance Machinery Co., 324 U.S. 806 (1945) .. 15

RCA v. Radio Engineering Laboratories, Inc., 293 U.S.

ERNE rhe ces keevns pas tesewss i oy 5s nee ee A 7, 8

Rhinevault v. Pfiester, 65 F.2d 161 (C.C.P.A. 1933).. 10, 11

Woofter v. Carlson, 376 F.2d 436 , 447 (C.C.P.A.

0 REAR rere eee Tr te ee ty ee 11

Table of Authorities Continued

STATUTES: PAGE

CONSTITUTIONAL AND STATUTORY PROVISIONS:

Article I, Section 8 of the United States Constitution ... 7

Amendment V, United States Constitution............. 14

RS oF Ra er oth ee 2

la a boc cghin ss a cadences bs 4, 13, 17

ta NS ov ons wine td 0 Rd bares CAR ee 17

ee aac isn’ So's on wih Teo

Na ds 6 ae be dg Rae an dh eae ee ebea 14

See Ey Bie bee Pa a iain esos Aa ehawhian aun 5

REGULATIONS:

ce sie wan pedals sche Osea den 15

Gh Oc Cn eon kie weebeneceweun 14

a oe Leys vv a ceua sakes saceks what 14

TREATISES AND ARTICLES:

3 Chisum, Patents $10.02 (1900)... 0. occ cccccccccss 8

Frederico, Commentary on the New Patent Act, 35

EE a. oso cas boss Gandhi koe aaa ae 9

Storey, Note on the Patent Laws, 16 U.S. 655 (1818) ... 7

LEGISLATIVE HISTORY:

Hearings on H.R. 5924 before the Comm. on the

Judiciary, House of Representatives, 90th Congress, |

SN I ds Newslines on ia bas cute s's 8

Hearings on S. 1042 before the Patent, Trademark and

Judiciary, 90th Congress, Ist Sess. (1967).......... 8

Vii

Table of Authorities Continued

LEGISLATIVE HISTORY: PAGE

H.R. Rep. No. 1923, 82d Cong., .d Sess., Revision

PRGGe. Oe. TT-8G CIGSE) nono ccc neccce sn ces onus 9

Patent Reform Bill S. 1042 (H.R. 5924), 90th Cong., Ist

NE ra ie era a eee reer eee at eee

Act of April 10, 1790, ch. 7, 1 Stat. 100......0..0 00085

Act of February 21, 1793, ch. 11, 1 Stat. 318 ..........

Act of July 4, 1836, ch. 357, 5 Stat. 117.........00005.

coo co Cc 0CO

IN THE

Supreme Court of the United States

OCTOBER TERM, 1980

No.

JosEPH JOHN SHINDELAR, Petitioner,

ApIN F. HOLDEMAN, MELVIN V. GAEDDERT, HOWARD J.

RATZLAFF, MARTIN E. PRuITT and HOWARD R.

LOHRENTZ, Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS AND

PATENT APPEALS

The Petitioner, Joseph John Shindelar, respectfully

prays that a Writ of Certiorari issue to review the judge-

ment and opinion of the United States Court of Customs

and Patent Appeals entered in this proceeding on

September 4, 1980.

OPINIONS BELOW

The opinion of the Court of Customs and Patent

Appeals appears in Appendix A, and is reported in 628

F.2d 1337 and 207 U.S.P.Q. 112.

JURISDICTION OF THIS COURT

The judgement of the Court below (Appendix A, p.

10a) was entered on September 4, 1980. A petition for

rehearing was timely filed on September 25, 1980.

Rehearing was denied by order entered on November 20,

1980 (Appendix D, p. 43a). This Court’s jurisdiction is

invoked under 28 U.S.C. §1256 (Appendix E, p. 45a).

CONSTITUTIONAL PROVISIONS, STATUTES

AND RULES INVOLVED

This case involves the following provisions of the

United States Constitution: the Patent and Copyright

clause of Article I, Section 8; and the Due Process

Clause of Amendment V.

This case involves the following statutes: 28 U.S.C.

§1256 and 35 U.S.C. §102(b), §102(c), §102(g), §135(a)

and §141.

This case involves the following regulations: 37

C.F.R. §1.56(a), §1.257(a) and §1.258(a).

All of the above cited Constitutional provisions,

statutes and regulations are set out verbatim in Appen-

dix E.

STATEMENT OF THE CASE

In the fall of 1972, Joseph J. Shindelar conceived

his invention of a hay baler mounted on wheels to be

drawn behind a tractor (Appendix A, p. 3a). The new

concept involves rolling the hay into a bale along the

ground and after the bale reaches a predetermined size,

the mechanism lifts the bale into a bale chamber where

the formation of the bale continues (Appendix A, p.

2a). Shindelar made sketches of his concept and discuss-

ed it with a project engineer and a machinery designer,

both of whom were employed by Deere & Company

(Appendix B, p. 17a).

A hay baler incorporating Shindelar’s concept was

constructed by Deere & Company in January, 1973 and

the machine was shipped to Florida for testing. During

January and February, 1973, the machine was operated

successfully in baling hay in Florida (Appendix A, p.

3a). The machine was then returned to the Deere &

Company factory in Iowa (Appendix C, p. 25a).

Shindelar’s invention was actually reduced to practice in

January, 1973 as a result of the Florida tests.

On June 11, 1975, Shindelar filed in the United

States Patent and Trademark Office a patent application

on his hay baler invention. Just two days earlier, the

Respondents, Holdeman et al, filed a patent application

in the United States Patent and Trademark Office claim-

ing the same invention (Appendix A, p. 3a). Since only a

single patent can be issued, the Patent and Trademark

Office initiated an interference proceeding in accordance

with established procedures to determine which of the in-

ventors were entitled to the patent. In the interference

proceeding, Shindelar presented evidence of the reduc-

tion to practice in January, 1973, which established that

Shindelar was the first inventor. Holdeman et al offered

no evidence of a prior reduction to practice and simply

relied upon the filing date of their patent application,

June 9, 1975, as the date on which their invention was

reduced to practice (Appendix A, p. 3a).

The Patent and Trademark Office Board of Patent

Interferences found that the Shindelar invention was

reduced to practice in January of 1973-(Appendix B, p.

20a). Shortly after the reduction to practice, an invention

disclosure was submitted to the Patent Department of

Deere & Company and an attorney, Mr. Nolan, was

assigned the task of preparing and filing a patent ap-

plication covering the invention. He had a backlog of

patent application disclosures, and it was his practice

generally to draft patent applications in the order in

which the disclosures were received, except for inven-

tions facing impending statutory bars (Appendix A, p.

4a), such as public use or sale under 35 U.S.C. §102(b)

(Appendix E, p. 45a). In the course of working through

his backlog and attending to several litigation matters,

Mr. Nolan discussed the Shindelar disclosure materials

with the inventor and with the inventor’s assistant

engineer (Appendix B, p. 16a). In January, 1974, Mr.

Nolan arranged for a search of prior patents and

publications to be made to determine whether the inven-

tion was novel and patentable. The application was then

prepared and the completed application filed in June of

1975. Neither Mr. Nolan nor Shindelar were aware of

any activity by the Respondents, or their employer,

Hesston Corporation, in regard to this invention (Ap-

pendix A, p. 4a). There is no evidence in the record

whether Respondents or Hesston Corporation were

aware of the activity of Shindelar or Deere & Company

in regard to the invention. Furthermore, there is no

evidence in the record as to any activity by the

Respondents, and in particular, as to whether the

Respondents actually reduced the invention to practice

prior to the filing of the application, or as to how

promptly the application was filed, since Respondents

claim only the filing date of their patent application as

the date of their invention.

The Board of Patent Interferences determined that

Respondents are entitled to the patent on the ground

that the delay of 2 years and 5 months between

Shindelar’s reduction to practice in January, 1973, and

the filing of the patent application in June, 1975, is

**prima facie’’ an ‘‘unreasonable’’ delay which was not

overcome by the workload of the Deere patent attorney,

and thus suppression or concealment under 35 U.S.C.

§102(g) (Appendix B, p. 22a). The Board and the CCPA

found as a fact that there was always an intent by Deere

& Company to file a patent application on the Shindelar

invention, and the only reason Mr. Nolan did not file

the application earlier was his work load in the Deere &

Company Patent Department (Appendix A, p. 4a, Ap-

pendix B, p. 20a).

In reaching its decision, the Board acknowledged

that it could find no case in which an intent to suppress

or conceal was inferred where the period between the

reduction to practice and the filing of the application

was less than four years. The Board went on to state

(Appendix B, p. 21a):

‘‘Nor have we found any specific guidelines in any

case as to what the lower limit of an unreasonable

period might be, except to the extent stated in the

discussion on the subject of suppression or conceal-

ment in the concurring opinion of Judge Rich in the

case of Young v. Dworkin, 489 F.2d 1277, 180

U.S.P.Q. 388 (C.C.P.A. 1974).

Petitioner appealed to the Court of Customs and

Patent Appeals (CCPA) under 35 U.S.C. §141 (Appen-

dix E, p. 46a). The CCPA affirmed. In its opinion, the

Court first referred to a public policy purportedly in-

herent in 35 U.S.C. §102(g) (Appendix A, p. 6a), favor-

ing the inventor who files his patent application prompt-

ly. In other words, the Court stated that the law prefers

and will reward earlier disclosure over earlier invention

(Appendix A, p. 7a). The Court acknowledged that

‘there is no law requiring an inventor to apply for a pa-

tent or to apply within any particular time .. .’’ (Ap-

pendix A, p. 7a). Nevertheless, the Court concluded that

in an interference context, suppressiou or concealment

under 35 U.S.C. §102(g) may be found when ‘“‘one is

not disclosing or acting to disclose the invention to the

public or to the PTO in a patent application where the

failure to disclose is unexcused’? (Appendix A, p. 7a).

The Court adopted a three-month benchmark as a

reasonable standard and then concluded that Petitioner’s

delay of 2 years and 5 months between the reduction to

practice and the filing of the patent application was not

excused by the patent attorney’s workload. The Court

failed to comment on the fact that, as found by the

Board of Patent Interferences, there was always an in-

tent by Shindelar and Deere & Company to file the pa-

tent application (Appendix A, p. 8a-9a). The Court,

nevertheless, concluded that the length of the delay rais-

ed an inference of intent to abandon or suppress, citing

its prior decision in Peeler v. Miller, 535 F.2d 647

(C.C.P.A. 1976) (Appendix A, p. 9a).

REASONS FOR GRANTING THE PETITION

1. The Decision Of The CCPA Awarding The Pa-

tent To A Later Inventor Is Contrary To

Statutory Authority And Constitutional Policy.

The present case relates to interference practice,

which is the child of a fundamental policy underpinning

the pacent laws — that the first inventor is entitled to

the patent for an invention. The only purpose of an in-

terference is to determine priority of invention between

competing inventors. Patentability of the invention is

not involved. The decision of the CCPA in this case has

the effect of negating the basic policy of the patent laws

which favors the first to invent, and of replacing that

policy with one which favors the first to file for a

patent.

Interferences have arisen only relatively infrequently

and interference law has acquired a certain reputation,

even notoriety, as an arcane subject. However, the issue

here presented of first to invent versus first to file can-

not be dismissed as involving an obscure point of law.

To the contrary, it is a question of vital importance

which goes to the heart of the patent system. Some of

this country’s most important inventions have been the

subject of interferences,' including, to name but a few,

the telephone,’ the first practical radio circuits,’ poly-

propylene plastics,‘ and the laser.*

Moreover, the policy of favoring the first to invent

is rooted in the Constitution,® and the patent statutes in

this country ave been structured on the first to invent

' The statute in question, 35 U.S.C. §102(g) (Appendix E, p.

46a), also is applied in patent infringement litigation as a defense to

the validity of the patent, e.g., Allen v. W.H. Brady Co., 508 F.2d

64 (7th Cir. 197. Amerline Corp. vy. Cosmo Plastics Co., 407 F.2d

666 (7th Cir. 196¥); Int’! Glass Co. v. United States, 408 F.2d 395

(Ct. Cl. 1969); Hughes Aircraft Co. v. Gen. Instrument Corp., 275

F. Supp. 961 (D.R.I. 1967), modified, 399 F.2d 373 (Ist Cir. 1968).

2 Dolbear v. Am. Bell Tel. Co., 126 U.S. 1 (1888).

' RCA v. Radio Eng’r Laboratories, Inc., 293 U.S. 1 (1934).

* Jn re Natta, 388 F.2d 215 (3d Cir. 1968).

‘ Gould v. Schawlow, 363 F.2d 908 (C.C.P.A. 1966); Gould v.

Hellwarth, 472 F.2d 1383 (C.C.P.A. 1973).

* The Patent and Copyright Clause, Article 1, Section 8 (Appen-

dix E, p. 45a). The recognition of the first to invent is implicit in

this Constitutional language since, as was noted by Justice Storey in

his famous Note on the Patent Laws, 16 U.S. 655 (1818), the patent

law in this country is founded on the corresponding English law,

which is embodied in an exception to the Statute of Monopolies

that limits the general rule prohibiting monopolies to exclude

patents made to ‘‘true and first’? inventors. The requirement that

the patentee must be the ‘‘true and first’’ inventor reflects a basic

~~ =

policy from the outset.’ In addition, since the enactment

of the present statute, Congress has specifically rejected

the first to file concept.* There is thus a clear and un-

policy decision concerning who should be entitled to the extraor-

dinary privilege of a disfavored monopoly, and has been repeatedly

recognized by this Court. E.g., Marconi Wireless Tel Co. of Aim. v.

United States, 320 U.S. 1 (1943); RCA v. Radio Eng’r

Laboratories, Inc., supra note 3, and the cases cited therein.

’ The country’s first patent act, the Act of April 10, 1790, ch. 7,

1 Stat. 109, provided in Section 1 that inventions ‘‘not before

known or used’’ were patentable; provided in Section 5 that District

Court judges could repeal patents ‘‘obtained surreptitiously’’, such

as where ‘‘the patentee was not the first and true inventor’’; and

provided in Section 6 that infringement suits could be defended by

showing that the patentee was not the ‘‘first and true inventor’’.

The next patent act, the Act of February 21, 1793, ch. 11, 1 Stat.

318, contained similar provisions referring to ‘‘true inventor’’ in-

stead of ‘‘first and true inventor’’, and providing in Section 9 for

binding arbitration ‘‘in case of interfering applications.’’ The next

patent act, the Act of July 4, 1836, ch. 357, 5 Stat. 117, which was

the predecessor of the present act, and the substance of which re-

mained essentially unchanged for over 100 years, created the Patent

Office examination system and, in Section 8, procedures for resolv-

ing ‘‘the question of priority of right of invention.’’ The first-to-

invent concept was expressly recognized in Section 15, which pro-

vided as one defense to an infringement suit that the plaintiff ‘‘had

surreptitiously or unjustly obtained the patent for that which was in

fact invented or discovered by another, who was using reasonable

diligence in adapting and perfecting the same.’’ Similar language

has remained in the statute ever since and is reflected in Section

102(g) of the present act. See generally 3 Chisum, Patents §10.02

(1980).

* In 1967, the so-called Patent Reform Bill S.1042 (H.R. 5924),

90th Cong., Ist Sess. (1967), which included provisions converting

the U.S. patent system to a first-to-file concept, was rejected by

Congress after extensive hearings. See Hearings on S. 1042 before

the Patent, Trademark and Copyright Subcomm,. of the Senate

Comm. on the Judiciary, 90th Congress, Ist Sess. (1967), and Hear-

ings on H.R. 5924 before the Comm. on the Judiciary, House of

Representatives, 90th Congress, Ist Sess. (1967).

equivocal Congressional mandate favoring the first to

invent over the first to file.

The authority cited by the CCPA for its decision in

the present case is the ‘‘abandonment, suppression and

concealment”’ exception to the first to invent rule which

is embodied in 35 U.S.C. §102(g) (Appendix E. p. 46a).

In its opinion, the CCPA based its denial of the patent

to the first inventor on the ‘‘public policy inherent in 35

U.S.C. §102(g)’’, explaining in a footnote that ‘‘early

public disclosure . . . is fostered by the §102(g) codifica-

tion of existing law’? and ‘“‘the law prefers and will

reward earlier disclosure over earlier invention’’, citing

its own decisions in Horwath v. Lee, 564 F.2d 948

(C.C.P.A. 1977) and Young v. Dworkin, 489 F.2d 1277

(C.C.P.A. 1974). (Appendix A, p. 6a.) The Court’s

error is in misinterpreting the ‘abandonment, suppres-

sion and concealment’ exception to the rule favoring

the first to invent as a legislative expression of a supe-

rior countervailing public policy.

It is clear from the legislative history of the statute

that Section 102(g) is merely a codification of the then

existing decisional law.’ The existing law, as reflected in

Section 102(g), followed the basic principle that the first

to invent is entitled to the patent for an invention. The

only exception to this rule which was recognized in the

case law existing at the time Section 102(g) was enacted,

and the only exception which was included in Section

102(g), is that the first inventor forfeits his right if

he has ‘‘abandoned, suppressed or concealed’’ his

invention.

* H.R. Rep. No. 1923, 82nd Cong., 2d Sess., Revision Notes, pp.

17-18 (1952); see also Federico, Commentary on the New Patent

Act, 35 USCA 1, 19 (1952).

The abandonment, suppression or concealment ex-

ception has its genesis in Mason v. Hepburn, 13 App.

D.C. 86 (1898), which in turn relied on the policy enun-

ciated by this Court in Kendall v. Winsor, 62 U.S. 322,

328 (1858):

... [t}hat the inventor who, designedly, and with

the view of applying it indefinitely and for his own

profit, withholds his invention from the public,

comes not within the policy or objects of the Con-

stitution or acts by Congress. He does not promote

and, if aided by his design, would impede the prog-

ress of science and the useful arts; and with very

bad grace could he apply for favor or protection to

that society which, if he had not injured, he certain-

ly had neither benefited nor intended to benefit.

Hence, if during such a concealment an invention

similar to or identical with his own should be made

or patented or brought into use without a patent,

the latter could not be inhibited nor restricted upon

proof of its identity with a machine previously in-

vented and withheld and concealed by the inventor

from the public.

The clear thrust in Kendall is that the inventor by

his willful concealment of his invention has forfeited his

right to protection under the patent laws. Moreover,

with the exception of the CCPA’s most recent decisions,

Mason v. Hepburn and the decisions of the CCPA

subsequent thereto are consistent in measuring the first

inventor’s conduct in terms of deliberate acts or omis-

sions demonstrating an intent to abandon, suppress or

conceal, and not in terms of the promptness of

disclosure or of whether the second inventor is more

deserving of a patent. See, e.g., Gallagher v. Smith, 26

F.2d 939 (C.C.P.A. 1953); Altorfer v. Haag, 74 F.2d

129 (C.C.P.A. 1934); and Rhinevault v. Pfiester, 65

F.2d 161 (C.C.P.A. 1933). In Altorfer, the court ex-

~~ S

pressly considered and discounted the significance of the

first inventor’s lack of promptness (four years) in filing

(74 F.2d at 134-135). In Gallagher, the court awarded

priority to the first inventor, who had delayed seven

years in filing his application following actual reduction

to practice, because there was no showing that the first

inventor willfully or intentionally suppressed or conceal-

ed the invention. The Gallagher court emphasized that

suppression and concealment must be affirmatively

established by direct proof, and cannot be inferred or

presumed merely from the fact of an extended delay in

applying for a patent where the invention has been

previously reduced to practice (206 F.2d at 946, 947). As

codified in 35 U.S.C. §102(g), the doctrine of Mason v.

Hepburn had been sparingly applied only in extreme

cases. The CCPA has always recognized, until now,

‘« |. the danger that might flow from its loose applica-

tion, and that, unless great caution is observed, it might

be gradually extended until its application resulted in far

greater inequities than it was designed to cure.”

Rhinevault, 65 F.2d at 164.'° In the present case, the

Board of Patent Interferences specifically found that the

invention had been reduced to practice, and that Deere

& Company always had the intent to file a patent ap-

plication on the invention (Appendix B, p. 20a). It is un-

disputed that Deere & Company did not intend to sup-

press the invention.

'’ Also see Woofter v. Carlson, 367 &.2d 436, 447 (CCPA 1966).

2. Only Congressional Action Can Authorize A

Change From A First To Invent To A First To

File Patent System.

The CCPA’s decision in Peeler v. Miller, supra, on

which the Court also relies in the present case, also

awarded the patent to the second inventor on the basis

of the Court’s ‘‘policy question: which of the rival in-

ventors has the greater right to a patent?’’ (535 F.2d at

653.) A noteworthy concurring opinion in that case was

written by Judge Miller, in which he points out that the

CCPA has consistently held that suppression or conceal-

ment must be deliberate or intentional to overcome the

right of the first inventor to the patent (535 F.2d at 655).

Judge Miller takes issue with the dictum in the majority

opinion which would ‘‘engraft onto the statute a policy

“‘favoring ... the party who expeditiously starts his in-

vention on the path to public disclosure .. . by filing a

patent application’’ (535 F.2d at 656). Judge Miller goes

on to criticize the policy announced by the Court as an

attempt to usurp the legislative function, 535 F.2d at

656:

The ‘‘expeditious’’ standard created by the ma-

jority is not the standard of deliberate or intentional

suppression required by the statute. Nor do the

cases cited by the majority support it. In Pingree v.

Hull, supra, intent to suppress was found as a result

of a five-and-a-half year delay and spurring; similar-

ly, in Young v. Dworkin, supra, intent to suppress

was found as a result of a two-and-a-half year delay

during which the inventor prepared for commercial

production. If the standard prescribed by the statute

is to be changed, that is a matter for the Congress.

In re McKellin, 529 F.2d 1324, 1332, 188 USPQ

428, 436 (CCPA 1976) (Markey, C.J., concurring).

~~ =

Rather than heed the warning of Judge Miller in

Peeler, the CCPA in the present case has reaffirmed its

reliance on Peeler and has abandoned intent in favor of

time as the measure of suppression and concealment.

Moreover, the CCPA has set an unreasonably short time

as the standard for presumptive suppression and conceal- |

ment of an invention.

3. Favoring The First To Invent Over The First

To File Is Consistent With And Fosters The

Ultimate Purpose Of The Patent Laws.

The ultimate purpose of the patent laws, as express-

ed in the Constitution, is to promote the progress of

science and the useful arts. The quid pro quo for the

privilege of a patent grant is disclosure of the invention

to the public.'' Congress has structured the patent laws

to favor the first to invent rather than the first to file so

as to encourage the full disclosure of completely realized

inventions. Thus, rather than making early application

for patent the paramount objective, Congress has con-

sistently chosen instead to allow inventors a reasonable

grace period within which to develop their inventions

and to pursue their patent rights.'? Only such deliberate

and willful activity as evidence an intent to forego patent

protection has been deemed appropriate to warrant a

forfeiture of an inventor’s patent rights. The goal is full

disclosure, not promptness of disclosure, and the stan-

dard for forfeiture is abandonment, suppression or con-

cealment, not the degree of promptness or relative merit

of the inventor.

'' Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484 (1974).

' E.g., 35 U.S.C. $102(b) (Appendix E, p. 45a).

4. The CCPA’s Prompt Filing Rule As Applied In

The Present Case Violates Due Process.

The CCPA has violated basic principles of fairness

and due process'’ in the present case by adopting and

applying retroactively a fundamentally new rule of

priority governing interferences, and by failing to pro-

vide both parties a reasonable opportunity to present

evidence under the new rule.

Under the new rule, 35 U.S.C. §102(g) rewards

“‘earlier disclosure over earlier invention’’ (Appendix A,

p. 7a), but the second to file can nonetheless prevail if

he was ‘‘prompt’’ in filing, presumably on the basis of

the ‘‘more deserving’’ inventor policy relied on in Peeler

v. Miller, supra.

The CCPA has thus adopted a qualified first-to-file

rule in which the relative promptness of the competing

inventors is controlling. Although 35 U.S.C. §102(g) by

its terms applies equally to both parties, in the present

case Respondents were allowed to rely simply on their

two-day earlier filing date and Petitioner was denied any

opportunity under current interference procedure'* to

present evidence on the issue of Respondent’s prompt-

' ness in filing.

In radically altering the interpretation of 35 U.S.C.

§102(g) from the literal interpretation of abandonment,

suppression and concealment reflected in the CCPA

decisions prior to Peeler v. Miller, supra in 1976, to the

perceived first-to-file public policy interpretation em-

'’ The Due Process Clause, Amendment V, United States Con-

stitution (Appendix E, p. 45a).

'* 35 U.S.C. §135(a), 37 C.F.R. §§1.257(a), 1.258(a) (Appendix

E, p. 46a, 47a-48a).

bodied in Peeler and the present case, the CCPA has ig-

nored the unfairness to inventors and their assignees

who are investing vast sums of money in turning inven-

tions into commercial products. These are the inventors

that the patent system was designed to encourage. Their

business practices in managing inventions and filing pat-

ent applications are based on the fundamental principle

that the patent is awarded to the first person to reduce

the invention to practice, either actually or constructive-

ly, provided he has not abandoned, suppressed or con-

cealed. Inventors have been lulled by the heretofore

limited abandonment, suppression and concealment ex-

ception of 35 U.S.C. §102(g) into a false sense of securi-

ty, only to find that under the CCPA’s new rule merely

the delay of the first-to-invent but second-to-file inven-

tor, as measured by a three month promptness standard,

is now the test of suppression or concealment. This shift

of interpretation of Section 102(g), of course, applies

retroactively to patent applications already filed. Such

an important change in the law should not be permitted

by this Court, not only because it is contrary to

legislative intent, but also because of the unfairness to

those who have established their commercial practices

on the law as it existed for over 100 years and the denial

of due process that is inherent in the CCPA’s decision.

5. The CCPA’s Prompt Filing Rule Does Not

Serve The Public Interest.

A fundamental obligation of patent applicants,

which is recognized by this Court!’ and which is codified

in the rules of the Patent and Trademark Office,'® is the

'S Precision Instrument Mie. Co. v. Automotive Maintenance

Mach. Co., 324 U.S. 806 (1945).

‘© 37 C.F.R. §1.56(a) (Appendix E, p. 47a).

duty of candor and good faith. One aspect of this duty

is the disclosure of pertinent prior art of which the ap-

plicant is aware. Under the CCPA’s prompt filing rule,

the pressure to file earlier will encourage applicants to

dispense with the preliminary patentability search which

is presently standard practice in order both to save time

and to minimize the burden of drafting their patent ap-

plications so as to distinguish over the prior art.

Under the CCPA’s prompt filing rule, the financial

resources of the inventor become a factor determining

his right to a patent, since the better funded inventor

necessarily has the advantage over a poorer inventor in

the race to the Patent and Trademark Office. In addi-

tion, the CCPA’s prompt filing rule discriminates

against the fertile inventor and in favor of the inventor

who has made only one invention. The fertile inventor

must apply his available resources among his many in-

ventions, and will often be involved in promoting and

protecting completed inventions as well as in developing

new inventions, whereas the one-time inventor can con-

centrate his efforts on preparing and filing his patent

application. In order to ensure compliance with the

CCPA’s prompt filing rule, the fertile inventor must

either retain surplus patent counsel to handle overflow

work, forego the experience and expertise of counsel

who are familiar with the subject matter and prior art in

favor of other counsel whose only attribute is a lesser

workload, compromise the quality of the applications

which are filed, or pursue a piecemeal filing program.

Implementing a first to file policy piecemeal, as the

CCPA is doing, disrupts the operation of the patent

system and inadvertently threatens other basic rights of

applicants since the first-to-invent, as opposed to the

first-to-file, principle is embodied not just in 35 USC

§102(g), but rather throughout a series of interrelated

provisions of the statute.'’

Further, the prompt filing rule of the CCPA does

not ensure prompt disclosure of an invention, or pro-

mote science and the useful arts as dictated by the Con-

stitution. Since the CCPA’s rule places a premium on

the earliest possible filing of an application, there is

substantial pressure to prepare and file patent applica-

tions before the inventions are even tested and

evaluated. This Court in Kewanee, supra note 11, 416

U.S. at 488-489, specifically condemned any policy

which would encourage inventors to file patent applica-

tions on inventions of doubtful patentability. If there

were a public policy favoring early filing of patent ap-

plications, as the CCPA contends, this Court would

have so stated in Kewanee.

Inevitably, under the CCPA’s prompt filing rule,

less complete applications will be filed, and applications

will be filed at earlier and earlier stages in the develop-

ment of inventions, to be supplemented by a continuing

stream of continuation-in-part applications as the inven-

tions are refined and further developed. Ironically, the

pressure to file early and to file multiple applications

covering the same invention will be greatest for the most

valuable inventions, since such inventions represent solu-

'? For example, under 35 U.S.C. §102(b) (Appendix E, p. 45a),

Congress has allowed inventors a grace period before forfeigure is

imposed in which to file applications following their own disclosure

or commercial use of their inventions. Similarly, ‘‘abandonment’’,

rather than the failure to promptly disclose, is the condition for

forfeiture under 35 U.S.C. §102(c) (Appendix E, p. 45a-46a) in the

absence of independent development of an invention by another.

tions to urgent problems, and there is thus the greatest

amount of competitive research and development

directed thereto and therefore the greatest probability of

multiple independent development of the same inven-

tion. The result will be a flood of applications to an

already overburdened Patent and Trademark Office.

Substantial additional time and effort will be required of

the Patent and Trademark Office to weed out clearly

unpatentable inventions which would not have been filed

if the applicants had conducted patentability searches

prior to filing, to weed out insufficient disclosures, and

to examine the multiplicity of applications relating to

the same invention. The net effect will be to needlessly

prolong an already protracted examination process, and

to result in patents being issued for incomplete inven-

tions or with less complete disclosures. In any event, the

public suffers. The disclosure of a// inventions, not just

those which may be subject to interferences, is delayed,

and the adequacy of the disclosures which are eventually

made is compromised.

CONCLUSION

This Petition seeks review of a decision of the

CCPA that is clearly contrary to the law and of extreme

national importance in its effect on the patent system.

Accordingly, this Petition for Writ of Certiorari should

thus be granted.

Respectfully submitted,

ROBERT S. SWECKER

Counsel of Record

KirK M. HUDSON

BuRNS, DOANE, SWECKER &

MATHIS

George Mason Building

Washington & Prince Streets

Alexandria, Virginia 22313

(703) 836-6620

H. VINCENT HARSHA

JOHN M. NOLAN

DEERE & COMPANY

John Deere Road

Moline, Illinois 61265

Counsel jor Petitioner

APPENDIX

APPENDIX A

UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS.

PATENT APPEAL No. 80-522.

JOSEPH JOHN SHINDELAR, Appellant,

Vv.

ADIN FRANK HOLDEMAN, MELVIN VICTOR GAEDDERT,

HOWARD JAMES RATZLAFF, MARTIN EUGENE PRUITT AND

HOWARD Roy LOHRENTZ, Appellees.

Sept. 4, 1980.

Rehearing Denied Nov. 20, 1980.

Before MarKEy, Chief Judge, -RicH, BALDWIN and

MILLER, Associate Judges, and RE, Chief Judge. *

BALDWIN, Judge.

This is an appeal from the decision of the United States

Patent and Trademark Office (PTO) Board of Patent

Interferences (board) which awarded priority of invention of

the count in issue to the senior party-applicants Holdeman et

al.' based on its holding that, while the junior party-applicant

Shindelar? had actually reduced the invention of the count to

practice prior to the earliest date proven by Holdeman et al.,

Shindelar had suppressed or concealed the invention within

the meaning of 35 U.S.C. §102(g)’ and, therefore, lost the

right to a patent as against Holdeman et al. We affirm.

* The Honorable Edward D. Re, United States Customs Court,

sitting by designation.

' Application Serial No. 584,870, filed June 9, 1975, entitled

‘Method and Apparatus for Making Large Round Crop Bales,”’

assigned to Hesston Corporation, a Kansas corporation.

? Application Serias No. 585,851, filed June 11, 1975, entitled

‘‘Machine for Rolling Hay into Cylindrical Bales,’’ assigned to

Deere & Company (Deere), an Illinois corporation.

> According to 35 U.S.C. §102(g), an applicant is not entitled to

a patent on his invention if ‘‘before the applicant’s invention

thereof the invention was made in this country by another who had

not abandoned, suppressed, or concealed it.’’

Background

The Invention

The invention in interference relates to a hay baler

wherein hay is first rolled along the ground adjacent to a rear

conveyor to start the bale. After the bale reaches a certain

diameter, it engages a front conveyor so that the bale is

elevated between the front and rear conveyors into a chamber

off the ground. Within the chamber, hay is continuously fed

to the periphery of the rotating bale until the cylindrical bale

reaches the desired size, at which time the bale can be

discharged out the rear of the baler.

The sole count‘ is as follows:

A machine for removing crop material from the ground

and rolling it into large cylindrical bales comprising; [sic] a

mobile frame having opposite sides and a shiftable rear gate

structure; a rear conveyor means including a first axially

transverse rotary element extending between the opposite sides

adjacent the ground; crop pickup means operatively

associated with said rotary element, for engaging crop

material on the ground; drive means drivingly connected to

the rear conveyor means and the crop pickup means so that

the pickup means raises the crop material from the ground as

the machine advances and the pickup means and rear

conveyor means initially roll the crop material along the

ground into a spiral cylindrical bale in advance of the pickup

means; a second axially transverse rotary element extending

between the opposite sides forwardly of the first rotary

element and adapted to engage the forward side of the bale

when the bale reaches a predetermined size, whereupon the

rear conveyor means raises the bale from the ground so that it

is at least partially supported above the ground on the first

and second rotary elements while it continues to rotate and

increase in size as the machine continues to advance and the

‘ The single count was claim 1 in Shindelar’s application and, at

the suggestion of the examiner, added to Holdeman et al.’s applica-

tion as claim 24 for the purpose of interference.

pickup means feeds additional crop material thereto, said first

rotary element and the crop pickup means being mounted on

the rear gate structure and shiftable therewith from a lower

operating position, wherein the pickup means is adapted to

engage the crop material on the ground, and an upward and

rearward discharge position, wherein the first rotary element

_and pickup means clear a formed bale to permit the rearward

discharge of the bale from the machine.

Proceedings Below

As noted above, Holdeman et al. filed their application

on June 9, 1975. Two days later on June 11, 1975, Shindelar

filed his application. Subsequently, this interference was

declared.

Shindelar filed an evidentiary record with the board for

the purpose of overcoming Holdeman et al.’s earlier filing

date, while Holdeman et al. elected to rely solely on their

filing date for priority.

Shindelar’s evidentiary record concerned his conception

and the reduction to practice of the invention of the count

and the handling of the invention disclosure and filing of

Shindelar’s application in the two years and five month period

between reduction to practice and filing of the application

with the PTO. The record included the depositions of

Shindelar and various personnel of Deere including one of

Deere’s patent department attorneys; and also included

various exhibits.

Facts Concerning Conception and Reduction to Practice

Shindelar conceived the invention of the count in the fall

of 1972, after which he discussed the concept with Deere’s

project engineer in the baler division. A ‘“‘line sketch”’ and

subsequent layout drawing of the concept were prepared by

November 17, 1972. Deere built the subject hay baler by

January 12, 1973, in Iowa and shipped it to Florida for

testing which began on January 24, 1973. The testing of the

baler was successful. Therefore, the invention of the count

was actually reduced to practice by Deere on behalf of

Shindelar in January of 1973.

Facts Concerning Alleged Suppression or Concealment

On January 17, 1973, after Deere built the subject hay

baler, a patent disclosure of the invention signed by Shindelar

was forwarded to the patent attorney in Deere’s patent

department responsible for preparation of the Shindelar

application. Upon receipt of the invention disclosure, the

patent attorney docketed it in accordance with Deere’s

standard practice.

Normally, the patent attorney took the cases up for

application preparation in the order in which they were

received except where potential statutory bars required earlier

filing.

After receiving the disclosure, the patent attorney visited

Shindelar and discussed the matter with him on one occasion.

Then a prior art patent search was conducted at Deere’s

patent library by a Deere draftsman in January of 1974, and a

written report was made to the patent attorney on January 25,

1974. Subsequently, the attorney prepared the application

which was filed on June 11, 1975, approximately two years

and five months after his receipt of the invention disclosure.

During the two year and five month interim, the patent

attorney was involved in his patent prosecution docket and in

several patent litigation matters which required a considerable

amount of his time away from the prosecution docket.

While there was intent to file the application by both

Shindelar and the patent attorney, the application filing was

delayed by the patent attorney’s workload. During the two

year and five month delay period, there were no patent or

commercial activities known by Shindelar or his attorney to

spur them to proceed with the application preparation and

filing.

Board

The parties to the interference raised the following issues

before the board:

1) Did Shindelar conceive the invention of the count in

the fall of 1972?

2) Did Shindelar actually reduce the invention to

practice in January of 1973?

3) If so, did Shindelar suppress or conceal the invention

within the meaning of 35 U.S.C. §102(g) and,

therefore, lose his right to a patent as against

Holdeman et al.?

After both parties had submitted briefs and presented

oral argument at the final hearing, the board found that, by

corroborated and uncontradicted testimony of Shindelar and

his witnesses, the invention of the count was conceived by

Shindelar in the fall of 1972 and was actually reduced to

practice by Deere on behalf of Shindelar in January of 1973,

which is prior to the earliest date proven by Holdeman et al. '

However, the board denied an award of priority to Shindelar

by finding the two year and five month period between the

reduction to practice and the filing of his application ‘‘to be,

prima facie, an ‘unreasonable’ period which has not been

overcome by the mere showing that the workload of [the .

patent attorney] * * * prevented him from filing the

application earlier.’’ Therefore, the board held that Shindelar

had suppressed or concealed the invention within the meaning

of 35 U.S.C. §102(g)' and awarded priority of invention to

Holdeman et al.

OPINION

On appeal, Shindelar contests the board’s holding that he

suppressed or concealed the invention within the meaning of

35 U.S.C. §102(g). Holdeman et al., of course, argue that the

§102(g) finding is proper. Additionally, they argue that the

board erred in holding that Shindelar had actually reduced to

practice the invention of the count.® Thus there are two issues

before this court: 1) Did the board correctly hold that

Shindelar reduced to practice the invention of the count in

‘The board supported its finding of prima facie

unreasonableness by citing Judge Rich’s concurring opinion in

Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974).

* While Holdeman et al. filed no cross-appeal, the reduction to

practice issue is properly before us. A winning interference party

January of 1973? 2) Did the board correctly hold that

Shindelar suppressed or concealed his invention within the

meaning of 35 U.S.C. §102(g)?

Reduction to Practice

Shindelar, as junior party whose application is co-

pending with that of Holdeman et al., bears the burden of

proof regarding reduction to practice by a ‘‘preponderance of

the evidence,’’ as the board properly stated. Horwath v. Lee,

564 F.2d 948, 949 n.2, 195 USPQ 701, 703 n.2 (CCPA 1977).

The record before us supports the board’s holding that

Shindelar’s invention was reduced to practice in January of

1973. On that issue, the decision of the board is affirmed.

Suppression or Concealment

Fact situations surrounding a suppression or concealment

issue must be considered on a case-by-case basis. Horwath v.

Lee, supra; Young v. Dworkin, supra note 5.

Under the facts of this case, which are simple, undisputed

and based on a very short record, and in light of the public

policy inherent in 35 U.S.C. §102(g),’ we hold that the

not required to cross-appeal with respect to issues raised by him

before the board and decided adversely to him. Clauss v. Foulke,

54 (CPA 1514, 379 F.2d 586, 154 USPQ 85 (1967).

’ Speaking for a unanimous court in Horwath v. Lee, Chief

Judge Markey noted that ‘‘the linchpin of the patent system-early

public disclosure — * * * is fostered by the §102(g) codification of

existing law’’ (564 F.2d at 950, 195 USPQ at 703) and went on to

state:

When an inventor actually reduces to practice an invention,

public policy dictates that if he would have the benefits of the

patent system vis a vis rival independent inventors he must file

his application for patent promptly * * *, The theory is not

forfeiture, estoppel, or other legal rule by which one is depriv-

ed of a property right; it is the simple rule that the property

right shall reside in the second inventor who disclosed and not

in the first inventor who concealed, i.e., the law prefers and

will reward earlier disclosure over earlier invention. See Rich,

J., concurring in Young v. Dworkin, supra. [564 F.2d at 950,

195 USPQ at 704. Emphasis added.]

evidence has raised an inference of suppression of the

invention by Shindelar’s assignee (Deere)* which has not been

rebutted.

As this court has stated repeatedly, though there is no

law requiring an inventor to apply for a patent or to apply

within any particular time, ‘‘one who delays filing his

application does so at the peril of a finding of suppression or

concealment due to the circumstances surrounding the delay.”’

See, for example, Young v. Dworkin, 489 F.2d at 1281, 180

USPQ at 391, and cases cited therein.

As is stated in Peeler v. Miller, supra note 8:

A delay [between reduction to practice and filing of an

application] may be of no legal consequence [under

§102(g)}] because it is not long enough. Or the delay may

be excused by activities of the inventor or his assignee

during the delay period. * * * There may be other

factors. But * * * the unreasonable length of a delay

may [emphasis in original] be ample circumstance in itself

[emphasis added] to find suppression. [535 F.2d at 655,

190 USPQ at 123.]

Thus, in interference situations involving another party who

was first to file an application with the PTO, suppression or

concealment may be found when one is not disclosing or

acting to disclose the invention to the public or to the PTO in

a patent application where the failure to disclose is unexcused.

In the present case, Shindelar assigned the rights to his

invention and patent application to Deere. After the baler had

been actually reduced to practice, Shindelar forwarded an

invention disclosure to a patent attorney in Deere’s patent

department. Upon receipt of the disclosure, the patent

attorney docketed it in accordance with Deere’s standard

practice. Two years and five months later, on June 11, 1975,

he application was filed with the PTO.

* Deere’s dilatory corduct here is imputable to Shindelar. Peeler

v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976); Wilson v.

Goldmark, 36 CCPA 849, 172 F.2d 575, 80 USPQ 508 (1949).

In an effort to excuse the long delay period, Shindelar

introduced evidence that the patent attorney discussed the

invention with Shindelar on one occasion; that the attorney

then had a Deere draftsman conduct a prior art patent search

in Deere’s patent library after which a written search report

was made to the patent attorney on January 25, 1974,

approximately one and a half years before the application was

filed; that the application filing was delayed by the patent

attorney’s heavy workload; and that neither Shindelar nor

Deere were spurred into filing the application. Evidence was

also introduced that, throughout the delay period, there was

always an intent to file the patent application both by the

inventor and by the patent attorney.

In our opinion, the two year and five month delay from

the time the invention was actually reduced to Practice and an

invention disclosure received by Deere’s patent attorney and

the time Deere filed the patent application is unreasonably

long in an interference with a party who filed first.

Looking at the facts, it cannot be said that Shindelar has

sufficiently excused the delay. One discussion with the

inventor, an order to a draftsman to search the patent files,

and the preparation of a search report could possibly account

only for a few days. In many circumstances, one month

would be ample allowance to a patent attorney to draft the

application. Another month could be ample for a draftsman

to prepare the drawings. To be generous, perhaps another

month could be allowed to have the application placed in

final form, executed by the inventor and filed with the PTO.

Thus a period of approximately three months could possibly

be excused during the twenty-nine month delay in which any

meaningful, time-consuming acts toward application filing

took place. However, more than two years of the delay period

remains unaccounted for. Apparently, due to the patent

attorney’s workload, the Shindelar application matter merely

lay dormant in Deere’s patent department for at least two

years.

The patent attorney’s workload will not preclude a

holding of an unreasonable delay. Nor will the showing of

intent to file — someday — negative a holding of suppres-

sion. Peeler v. Miller, supra note 8.

Additionally, the showing of absence of spurring into

filing the Shindelar application does not negative a holding of

suppression nor excuse the dealy.’

We are persuaded that there is no reasonable basis on

which to differentiate this case from Peeler v. Miller, and the

same result is therefore compelled, i.e., a holding of

suppression as a matter of law. In that case the board (one

member dissenting) stated that Miller had not suppressed his

invention, and we reversed. Miller’s invention and application

were assigned to the Monsanto Company which had a patent

department. There was no specific intent to suppress or

conceal the invention; however, four years elapsed between

Miller’s submission of an invention disclosure to the Patent

department, which classified it ‘‘A (Ready [to file])’’, and the

application filing. Three attorneys left the patent department,

but before they had gone and a new patent attorney arrived,

two and a half years had elapsed. Miller presented no

evidence covering that period. The new patent attorney, after

being assigned a heavy docket, eventually prepared and filed

the application some fifteen months after his arrival. We

found the delay period unreasonable, not excused, and that

Miller had, therefore, suppressed his invention. In both Peeler

and this appeal, the patent attorney responsible for filing the

application was an employee under the direct control of the

inventor’s assignee and was not an independent contractor.

Peeler v. Miller, supra note 8, 535 F.2d at 654, 190 USPQ at

123. As a result, the delay in filing in Peeler and here was

directly occasioned by the real party in interest.

* While spurring into filing an application for patent by

knowledge of another’s entry into the field (e.g., by commercial ac-

tivity or by issuance of a patent) is not essential for a finding of

suppression, Young v. Dworkin, that is not to say that the presence

or absence of spurring is not relevant to the issue of suppression or

concealment.

10a

Citing Peeler v. Miller to support the position that an

attorney’s workload will not preclude a holding of an

unreasonable delay, and Young v. Dworkin to support the

position that a delay period as little as two years is prima

facie unreasonable, the board concluded:

[I]n the present case we find the two year and five month

period between Shindelar’s reduction to practice and the

filing of his application to be, prima facie, an

‘‘unreasonable’’ period which has not been overcome by

the mere showing that the workload of [the patent

attorney] * * prevented him from filing the application

earlier. Accordingly, we find that Shindelar suppressed or

concealed the invention within the meaning of 35 U.S.C.

§102(g) and therefore has lost his right to a patent as

against Holdeman et al.

We agree with the board’s conclusion; however, we

caution that any attempt to establish a rule that a certain

specified length of time is per se unreasonable is contrary to

the previous holdings of this court. We reiterate that each

case involving the issue of suppression or concealment must

be considered on its own particular set of facts.

The decision of the board awarding priority to Holdeman

et al. is affirmed. |

AFFIRMED.

lla

APPENDIX B

Opinion and Decision of Board of Patent

Interferences, August 28, 1979

Champion, Calvert and Urynowicz, Examiners of In-

terferences.

Champion, Examiner of Interferences.

This interference is between an application of the junior

party Shindelar, filed June 11, 1975, and an application of the

senior party Holdeman et al. filed June 9, 1975.

The Shindelar application is assigned to Deere & Com-

pany and the Holdeman et al. application to Hesston Cor-

poration.

Shindelar filed an evidentiary record for the purpose of

overcoming the earlier filing date of Holdeman et al., while

the latter elected to rely solely on their filing date for

priority. Both parties filed briefs and both made an ap-

pearance through counsel at final hearing. As the junior party

whose application is copending with that of the senior party,

Shindelar bears the burden of proof by a preponderance of

the evidence.

The Subject Matter

The invention in issue is a hay baler that removes crop

material from the ground and rolls it into a round or cylin-

drical bale as the baler advances over the ground. A single

count forms the. issue of the interference. It adequately

describes the invention and reads as follows:

Count |

A machine for removing crop material from the

ground and rolling it into large cylindrical bales com-

prising, a mobile frame having opposite sides and a shift-

able rear gate structure; a rear conveyor means including

12a

a first axially transverse rotary element extending be-

tween the opposite sides adjacent the ground; crop pickup

means operatively associated with said rotary element,

for engaging crop material on the ground; drive means

drivingly connected to the rear conveyor means and the

crop pickup means so that the pickup means raises

the crop material from the ground as the machine ad-

vances and the pickup means and rear conveyor means

initially roll the crop material along the ground into a

spiral cylindrical bale in advance of the pickup means; a

second axially transverse rotary element extending be-

tween the opposite sides forwardly of the first rotary

element and adapted to engage the forward side of the

bale when the bale reaches a predetermined size,

whereupon the rear conveyor means raises the bales from

the ground so that it is at least partially supported above

the ground on the first and second rotary elements while

it continues to rotate and increase in size as the machine

continues to advance and the pickup means feeds ad-

ditional crop material thereto, said first rotary element

and the crop pickup means being mounted on the rear

gate structure and shiftable therewith from a lower

operating position, wherein the pickup means is adapted

to engage the crop material on the ground, and an up-

ward and rearward discharge position, wherein the first

rotary element and pickup means clear a formed bale to

permit the rearward discharge of the bale from the

machine.

Issues

The parties have raised the following issues:

(1) Did Shindelar conceive the invention of the count in

the fall of 1972?

(2) Did Shindelar actually reduce the invention to prac-

tice in January of 1973?

l3a

(3) If (2) above is answered in the affirmative, did Shin-

delar suppress or conceal the invention within the meaning of

35 USC 102(g)* and therefore lose his right to a patent as

against Holdeman et al.?

The Shindelar Record

Shindelar has been the manager of product engineering at

Deere & Company’s Ottumwa Works since 1968 (R 3), and has

worked for the company as an engineer since 1955 (R 3). The

Ottumwa Works produces hay and forage harvesting equip-

ment, including balers of the type here in issue (R 4, 5). Gust

Soteropulos is a project engineer in the baler division under

Shindelar (R 40).

Shindelar testified that in the fall of 19.72 two types of large

round balers were on the market, one of which formed the

bale by rolling it along the ground and the other of which

formed the bale in the chamber of the baler off the ground (R

8). He stated thai during this period he conceived a large

round baler in which “the bale would be partially formed

directly on the ground and as the bale reached some predeter-

mined size that the bale would be forced up into a partial bale

chamber created by two conveyors, in which the bale—and

the remaining bale would be formed within this cavity” (R

10); that he made sketches of his concept at the time and

described the concept to Soteropulos (R 11), and that Shin-

delar Exhibit | is a “line sketch” of the concept although he

did not know who made the sketch (R 12).

Shindelar Exhibit 2 is a layout drawing, dated Novem-

ber 17, 1972. Shindelar testified that the drawing was made by

Gerald Meiers, an employee of Deere & Company, and that it

shows the frame of the round baler conceived by him (SR 15).

* 35 USC 102(g) states in part: :

(g) before the applicant's invention thereof the invention was made in

this country by another who had not abandoned. suppressed. or con-

cealed it.

l4a

Shindelar Exhibits 3, 4 and 5 are pages from the Deere &

Company project schedule listing the baler conceived by

Shindelar as project number “BB21RO”. With the aid of in-

formation contained in the exhibits, Shindelar testified that a

baling machine according to his concept was completed at

Deere & Company on the 12th of January 1973 (R 19) and that

the actual testing of the machine was to begin on January 24,

1973. Shindelar stated that he saw the machine soon after it

was completed on January 12 and that it was the same

machine shown in six photographs introduced into evidence

as Exhibits 7 to 12 (R 20).

According to Shindelar’s testimony, soon after the baler

was completed it was shipped to Florida for testing (R 21).

Although he stated that he did not recall witnessing any tests

(R 21), Shindelar testified that he did receive several

favorable reports on the tests, that “we were elated that it

worked so well” (R 22); and that the machine was returned to

the Ottumwa Works after it had been in Florida for about two

months (R 23).

At pages 23 to 26 of the record, the Deere & Company

attorney, Mr. Nolan, reads each limitation of the count to

Shindelar, and after each limitation asks Shindelar if the

limitation is supported by the machine built at Deere & Com-

pany and shipped to Florida where it was tested. Shindelar’s

answer to each question is “yes”.

Shindelar Exhibit 13 is a letter transmitting an Invention

Disclosure to Mr. Nolan of the Patent Department at Deere &

Company. Shindelar Exhibit 14 is the Invention Disclosure

that was transmitted. Both are dated as having been received

in the Patent Department on January 19, 1973. The Invention

Disclosure is signed by Shindelar and witnessed and signed by

Soteropulos. Shindelar testified that the document was

prepared by Soteropulos at his direction (R 27).

15a

Soteropulos has been employed at the Deere & Company’s

Ottumwa Works for 26 years (R 40). He corroborates the

testimony of Shindelar that the concept disclosed in Exhibits

| and 2 were the concepts Shindelar had described to him in

the fall of 1972 (R 45). Soteropulos also corroborates the

building of the prototype baler at Deere & Company by the

12th of January, 1973. He stated that he was responsible for

the design of the baler (R 46) and that he personally observed

the machine during its construction (SR 49).

Soteropulos testified that after its completion the baler

was sent to Florida where he observed its testing (R 50), that

“between,twenty to forty bales, in that range”, were formed

with the Baler, that from his observation of the baler it

“worked as planned” (R 52), and that he “believed” he took

photographic Exhibits 7 to 12 because his handwriting dates

the slides (X 6) from which the photographs were made (R

52).

At pages 53 to 56 of the Shindelar record, Mr. Nolan reads

each limitation of the count to Soteropulos and after each

limitation asks if the baling machine built at Deere & Com-

pany and tested in Florida supports the limitation.

Soteropulos answers “yes” to each question.

Soteropulos testified that he prepared the transmittal letter

(X 13) to Mr. Nolan (R 56), and that he prepared the Exhibit

14 Invention Disclosure, which he signed as a witness, under

the direction of Shindelar (R 57).

Both Shindelar (at R 31) and Soteropulos (at R 58) testified

that a “two and a half” year period between the transmittal of

an Invention Disclosure to the Deere & Company patent

department and the filing of a patent application was not

unusual.

Gerald Meiers, an advanced designer in the engineering

department, has been employed by Deere & Company for

16a

nineteen and one-half years. He testified that in October of

1972 (R 67) Shindelar described to him with the aid of

sketches ‘‘a round baler that would start forming a bale on the

ground, and later it would pop up and continue forming the

bale off the ground” (R 69), and that the concept is embodied

in Exhibit | (R 69). Meiers corroborates Shindelar’s

testimony that he (Meiers) prepared the Exhibit 2 drawing on

November 17, 1972 (R 70).

Meiers also testified that he prepared a complete set of

prints, layouts and sketches of the baler (R 70, 71), that a

baling machine was built therefrom; that he observed the

machine as it was being built (R 71), and that the baling

machine actually worked to form a bale (R 74).

Mr. Nolan testified that as the Deere & Company attorney

he received the Exhibit 14 Invention Disclosure on January

19, 1973 and that he filed the Shindelar application on June

11, 1973; that except for certain cases filed in foreign coun-

tries to comply with those countries’ laws, he filed the cases

on his docket in the same sequence he received the Invention

Disclosures (R 84).

Mr. Nolan also testified that sometime after he received the

Invention Disclosure he took a trip to the Ottumwa Works to

discuss the invention with Shindelar and Soteropulos (R 83),

that at his direction a “novelty and invention” search was

made by Fred DePotter in January of 1974, as evidenced by a

search report introduced into evidence as Shindelar Exhibit

15 (R 86), that during the two and a half year period between

the receipt of the Invention Disclosure and the filing of

the Shindelar application, he was involved in other duties

such as patent litigation and the taking of depositions (R 87).

and that he was not “spurred” into filing the Shindelar ap-

plication by learning of the existence of “any other machine

or patent on the market place” (R 89).

17a

Opinion

Shindelar’s Conception

The definition of a conception is stated as follows in the

case of Mergenthaler v. Scudder, 11 App. D.C. 264, 276, 1897

C.D. 724, 731 (1897):

The conception of the invention consists in the complete

performance of the mental part of the inventive act. All

that remains to be accomplished, in order to perfect the

act or instrument, belongs to the department of con-

struction, not invention. It is therefore the formation, in

the mind of the inventor, of a definite and permanent

idea o° the complete and operative invention, as it is

thereafter to be applied in practice, that constitutes an

available conception, within the méaning of the patent

law.

See also Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA

1978).

In the present case, we find that Shindelar has established a

conception of the invention in issue in accordance with the

above definition. We find that conception has been

established by Shindelar’s corroborated testimony that

in the fall of 1972 he conceived a baler where “the bale would

be partially formed directly on the ground and as the bale

reached some predetermined size that the bale would then be

forced up into a partial bale chamber created by two con-

veyors, in which the bale—and the remaining bale then would

be formed within this cavity’, when such testimony is con-

sidered in light of (1) Shindelar’s corroborated testimony that

he made sketches to convey his concept to Soteropulos and

Meiers, (2) the testimony of Soteropulos and Meiers to the ef-

fect that Exhibits 1 and 2 disclose the essential features of the

invention and together are representative of the concept Shin-

delar disclosed to them, (3) the extensive background

18a

knowledge and experience of corroborating witnesses

Soteropulos and Meiers at Deere & Company in the baler

field, which would enable them to. readily understand the

Shindelar concept and its application, (4) the fact that a baler

supporting the count was built at Deere & Company from the

Shindelar concept (see infra) and (5) the fact that an invention

disclosure (X 14) supporting the count was submitted to the

Deere & Company Patent Department on January 19, 1973.

We are of the opinion that the record supports a conclusion

that Shindelar conceived the invention in the fall of 1972, but

in any event no later than the January 12, 1973 date on which

the baler was completed at Deere & Company or the January

19, 1973 date on which the invention disclosure (X 14) was

submitted to the Patent Department.

Holdeman et al. argue that Shindelar merely suggested

“a desired result” or “a desired function” without any con-

crete direction as to the means for accomplishing the result or

function. While the record fails to establish that Shindelar

suggested all the detailed construction of the bailer, we think

his suggestions to Soteropulos and Meiers, as explained in

their testimony with the aid of Exhibits 1 and 2, completed

the “mental part of the inventive act”, and the work of

Soteropulos and Meiers in building the baler belonged to the

“department of construction, not invention”. The contention

of Holdeman et al. that Soteropulos and Meiers invented, and

not Shindelar, involves the question of third party in-

ventorship which is not ancillary to priority and therefore is

not entitled to consideration at final hearing. Sheffner v.

Gallo, 515 F.2d 1169, 185 USPQ 726 (CCPA 1975). Even so,

we find no evidence in the record that Soteropulos or Meiers

conceived the invention.

19a

Shindelar’s Actual Reduction to Practice

The record establishes that a round baler was built at Deere

& Company by the date of January 12, 1973, and was shipped

to Florida and tested on the date of January 24, 1973. The

testing was conducted by Soteropulos and Meiers, both of

whom testified that the baler performed its intended

function of baling hay as expected and as recited in the count.

Soteropulos testified that the baler as it operated to bale hay

supported every limitation of the count. Mr. Nolan’s reading

of each limitation of the count to Soteropulos and after each

limitation asking if the baling machine built at Deere & Com-

pany and tested in Florida supported the limitation, to which

each answer was “yes”, is testimony that is accorded full

weight in this instance. Holdeman et al. failed to make any

objection as to the form of the questions and answers during

the taking of Soteropulos’ testimony, and thus are not entitled

to raise an objection at final hearing. See 37 CFR 1.285(c){2).

see also Rimbach v. Wanmaker, 53 CCPA 1552, 362 F.2d 561,

150 USPQ 302 (1966).

Moreover, we find in this instance that the Exhibit 7 to 12

photographs of the baler taken by Soteropulos in Florida,

when considered together with the testimony of Soteropulos

and Meiers, are sufficient to establish an actual reduction to

practice in January of 1973. Upon viewing the photographs,

we find all of the structural limitations of the count; nor have

Holdeman et al. pointed out wherein any structural limitation

is not supported by the baler shown in the photographs. We

do not find any difficulty in visualizing that the baler shown

in the photographs would perform the functions recited in the

counts in view of the testimony of Soteropulos and Meiers

that the baler performed its intended function

satisfactorily. Exhibit 12 showing a bale after it has been

discharged from the baler is clear proof that the baler would

perform the function of forming a round bale.

20a

Accordingly, we find that the invention of the count was

actually reduced to practice by Deere & Company on behalf

of Shindelar in January of 1973.

Suppression or Concealment

The facts on which Holdeman et al. base their assertion of

suppression or concealment by Shindelar are simple and are

not in dispute. Shindelar reduced the invention to practice in

January of 1973 and filed an application on June 11, 1975, a

period of approximately two years and five months. During

this period, the only work in any way connected with the in-

vention was the making of a novelty and invention search (X

15) and the preparation of a patent application, no actual

work having been performed on the invention itself. Mr.

Nolan, the Deere & Company attorney to whom the invention

disclosure (X 14) was assigned for the preparation and filing

of a patent application, took his cases up in order during the

two year and five month period between the January, 1973

date the Shindelar case was assigned to him and the June 11,

1975 date he filed the application. There was always an intent

by Deere & Company to file an application on the Shin-

delar invention, and the only reason Mr. Nolan did not file

the application earlier was his workload in the Deere & Com-

pany Patent Department.

The sole issue is whether an inference of an intent by Shin-

delar to suppress or conceal the invention has been established

as the result of Mr. Nolan’s and Deere & Company’s two

year and five month delay in filing an application after Shin-

delar’s reduction to practice. See Peeler v. Miller, 535 F.2d

647, 190 USPQ 117 (CCPA 1976). Mr. Nolan and Deere and

Company’s conduct is, of course, imputable to Shindelar.

Peeler v. Miller, supra.

We are of the opinion, and we think the Peeler case makes it

clear, that an attorney’s workload will not preclude a holding

2la

of an “unreasonable” delay between a reduction to practice

and the filing of an application. Failure of a company to

hire sufficient attorneys to file their applications within a

reasonable time after their inventions have been reduced to

practice is inescusable where public policy inherent in 35 USC

102(g) and the rights of other inventors are concerned. Peeler

v. Miller, supra.

In reviewing the cases where “spurring” into filing an ap-

plication was not involved and an intent to suppress or con-

ceal was inferred due to the fact that the period between

reduction to practice and filing was deemed to be

unreasonable, we find no case where the period was less than

the four years in the Peeler case. Nor have we found any

specific guidelines in any case as to what the lower limits of

an unreasonable period might be, except to the extent stated

in the discussion on the subject of suppression or concealment

in the concurring opinion of Judge Rich in the case of Young

v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974).

There, the period was 27 months and suppression or con-

cealment was held on the ground that Young actually intended

to wait for an indefinite period after his reduction to prac-

tice before filing an application. Judge Rich, in his con-

curring opinion, discusses a number of early cases where the

period between reduction to practice and filing was two years

or less and then makes the following statement at 180 USPQ

395:

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 in-

ventor where the period involved from reduction to

practice to filing was two years or less. (Emphasis added).

In our view, this statement indicates that Judge Rich con-

siders a period of at least as little as two years between reduc-

22a

tion to practice and filing to be, prima facie, unreasonable.

Judge Rich had stated earlier in the concurring opinion that

“[t}hus at that early date [1872], 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.” (180 USPQ 394). In any event, in the present case we

find the two year and five month period between Shindelar’s

reduction to practice and the filing of his application to be,

prima facie, an “unreasonable” period which has not been

overcome by the mere showing that the workload of Mr.

Nolan, the Deere & Company patent attorney, prevented him

from filing the application earlier. Accordingly, we find that

Shindelar suppressed or concealed the invention within the

meaning of 35 USC 102(g) and therefore has lost his right to a

patent as against Holdeman et al.

Award of Priority

Priority of invention of the subject matter defined by the

count in issue is hereby awarded to Adin Frank Holdeman,

Melvin Victor Gaeddert, Howard James Ratzlaff, Martin

Eugene Pruitt and Howard Roy Lohrentz, the senior party.

MARVIN A. CHAMPION )

Marvin A. Champion )

Examiner of Interferences )

)

IAN A. CALVERT ) BOARD

Ian A. Calvert ) OF PATENT

Examiner of Interferences ) INTERFERENCES

)

STANLEY M. URYNOWICZ, JR. )

Stanley M. Urynowicz, Jr. )

Examiner of Interferences )

23a

APPENDIX C

Testimony on Behalf of Shindelar

28 Mail Room

Jan 9 1978

Pat. & Trademark Off.

IN THE

UNITED STATES PATENT AND TRADEMARK OFFICE

Before the Board of Patent Interferences

ADIN FRANK HOLDEMAN, et al,

vs.

JOSEPH JOHN SHINDELAR.

Interference No. 99,523

Deposition of JOSEPH JOHN SHINDELAR, taken before

Mervin E. Vaughn, Certified Shorthand Reporter, com-

mencing at 9:00 a.m., July 19, 1977, at the John Deere Ot-

tumwa Works, Ottumwa, lowa.

Appearances:

Adin Frank Holdeman, et al, by: Gordon D. Schmidt and

Stephen D. Timmons, Attorneys at Law, .1400 Mercantile

Bank Tower, 1101 Walnut Street, Kansas City, Missouri

64106.

Joseph John Shindelar by: John M. Nolan and Harold M.

Knoth, Attorneys at Law, Deere & Company, Moline,

Illinois.

24a

Reported by: Mervin E. Vaughn, Certified Shorthand

Reporter.

* * 6

[2] JOSEPH JOHN SHINDELAR, called as a witness,

having been first duly sworn, testified upon his oath as

follows:

Direct Examination by Mr. Nolan:

* * a

[13] Q48. Mr. Shindelar, I will hand you a document

that’s been identified as Shindelar Exhibit 2 and ask you

whether you recognize this document? A. Yes.

Q49. Could you describe what the document is? A. It’s a

layout of the machine described in the patent.

Q50. Can you tell me who made the layout? A. According

to a note on the drawing, it was made by Jerry Meiers, who

works for Gus Soteropulos.

Q51. How can you tell that? A. The initials “GFM” on the

drawing.

Q52._ Is there a date on the drawing? A. Yes, 17 November

1972.

Q53. And, to the best of your belief that was the ap-

proximate date when this drawing was made? A. Yes.

Q54. Now, this drawing is apparently only of the frame

[ 14] of a machine. Are you able to tell the particular machine

that included this frame by the nature of the frame? A. I’m

able to say that it embodies the idea—the invention described

in the patent, yes.

* * 6

[19] Q75. Now, referring to Exhibit 5 and again directing

your attention to the top line identified as “BB21RO test,” I

ask you whether this document tells you anything about the

building of the test machine? A. Yes, it does. It says that on

the—that the 12th of January, 1973, it was completed.

25a

Q76. Does the document refer to the testing of the

machine? A. Yes, it indicates that it originally was scheduled

to begin on the 10th of January and it says the actual begin-

ning was on the 24th of January, 1973.

{ 20] * > as

Q78. Is the machine shown in the photographs on Exhibit

6 and Exhibits 7 through 12 the machine that was built in the

experimental shop at John Deere Ottumwa Works? A. Yes.

Q79. Did that machine embody the concept shown on

Exhibit 1? A. Yes, it did.

Q80. Did that machine embody the concept that’s in-

volved in the interference proceedings we’re involved in

here? A. Yes.

Q81. After the machine was built in the experimental shop

at John Deere Ottumwa Works, what was then [21] done with

the machine? A. As I recall, the machine was shipped to a test

site in Florida, where it underwent evaluation.

[23] Q92. How long was the machine kept in Florida for

tests? A. I don’t recall exactly, We had other machines there.

My estimate now would be six weeks to two months.

Q93. Then, after the tests were conducted or completed in

Florida, do you know what was done with the machine? A.

The machine was eventually returned to Ottumwa. I can’t tell

you just exactly when, but probably within that framework of

about two months.

Q94. Mr. Shindelar, the machine shown in Exhibits 6

through 12, was it a machine for removing crop material from

the ground and rolling it into a large cylindrical bale? A. Yes.

Q95. Did that machine have a mobile frame with opposite

[24] sides and a rear gate structure? A. Yes.

26a

Q96. Did that machine have a rear conveyor means? A.

Yes.

Q97. Did that rear conveyor means include a first axially

transverse rotary element extending between the opposite

sides adjacent the ground? A. Yes.

Q98. Did that machine have crop pickup means

operatively associated with said rotary element for engaging

crop material on the ground? A. Yes.

Q99. Did that machine have drive means drivingly con-

nected to the rear conveyor means and the crop pickup means

so that the pickup means raises the crop material from the

ground as the machine advances and the pickup means and

the rear conveyor means initially roll the crop material along

the ground into a spiral cylindrical bale in advance of the

pickup means? A. Yes.

Q100. Did that machine have a second axially transverse

rotary element extending between the opposite sides for-

wardly of the first rotary element? A. Yes.

[25] Q101. And was that second element adapted to

engage the forward side of the bale when the bale reached a

predetermined size? A. Yes.

Q102. When that engaged the bale, did the rear conveyor

means raise the bale from the ground so that it was at least

partially supported above the ground on the first and second

rotary elements? A. Yes.

Q103. Then, did the bale continue to rotate and increase

in size as the machine continued to advance and the pickup

means feed additional crop material thereto? A. Yes.

Q104. Was the first rotary element and the crop pickup

means mounted on the rear gate structure? A. Would you

please repeat that?

Q105. Was the first rotary element and the crop pickup

means mounted on the rear gate structure? A. Yes.

Q106. And were they shiftable with the rear gate structure

from a lower operating position, wherein the pickup means

was adapted to engage the crop material on the ground, and

~ =

27a

an upward and rearward discharge position, wherein the first

rotary element [26] and the pickup means cleared a formed

bale to permit the rearward discharge of the bale from the

machine? A. Yes.

Q107. Mr. Shindelar, I hand you an exhibit document

that’s been labeled as Exhibit 13 and ask you whether you can

identify Exhibit 13? A. Yes, it’s a letter transmitting the

disclosure for the patent under consideration.

Q108. I hand you Exhibit 14 and ask you whether you can

identify Exhibit 14? A. Yes, this discloses the invention

described in the patent.

Q109. Would Exhibit 14 have sae nisi Exhibit 13? A.

It would have, yes.

Q110. Who prepared Exhibit 13? A. Gus Soteropulos.

Q111. Did you receive a copy of Exhibit 13? A. Yes.

Q112. To whom was Exhibit 13 addressed? A. To John

Nolan in our Patent Department, Deere and Company.

Q113. And Mr. Nolan is a patent attorney in the Patent

[27] Department of Deere and Company? A. That’s correct.

Q114. Is Mr. Nolan the attorney who normally handles

the patent matters for John Deere Ottumwa Works? A. He is.

Q115. Would this be a typical method of forwarding a

patent disclosure to the Deere and Company Patent Depart-

ment? A. It’s our normal practice.

{28} Q125. After the Documents 13 and 14 were .:orwarded

to Deere and Company Patent Department, do you know

[29] what was done relative to the disclosures? A. I don’t

recall specifically, but the normal practice would be to review

these periodically throughout the development and complete

the necessary documentation that’s required for obtaining a

patent.

28a

Q126. As a result of the disclosure shown in Exhibits 13

and 14, was a patent application, in fact, prepared? A. Yes, it

was.

Q127. And is that the patent application that’s involved in

the present interference? A. Yes, it is.

Q128. Do you recall discussing with Mr. Nolan as to when

a patent application would be filed on this disclosure? A. At

least on one or two occasions the subject came up in review of

this and other patents that we had in process—or, ap-

plications that we had in process.

Q129. Was there a decision made as to this particular

disclosure during these discussions? A. It was our decision to

proceed.

Q130. At any time did you ever decide that you shouldn’t

file a patent application on this particular disclosure? A. No.

{30} Q131. Did you ever advise Mr. Nolan or any member

of the patent department to delay filing? A. No.

Q133. Are you familiar with the type of round balers of-

fered by Hesston Corporation? A. General knowledge, yes.

Q134. Have you ever seen a Hesston machine embodying

this particular concept that we’ve been discussing here today?

Strike that question. Let me phrase it this way: During the

period between the date that Exhibits 13 and 14 were for-

warded to the patent department and the date that the patent

application was actually filed, did you ever see a Hesston

Corporation machine embodying this concept? A. No.

Q135. Did you ever see a machine offered by any other

manufacturer embodying this concept? A. No.

Q136. Did you ever see any patent applications or patents

[31] issued embodying this concept? A. No.

Q137. Would it be safe to say that there was nothing in

either the patent area or the actual commercial—or com-

mercial machines that spurred the filing of this particular

patent application? A. None that I was aware of.

29a

Q138. Now, Exhibits 13 and 14 are dated in January of

1973 and the present patent application was filed in June of

1975, which leaves a gap of approximately a little over two

years between the date that the disclosure was sent into the

patent department and the date of the filing of the patent

application. Is this an unusual length of time for patent ap-

plications? A. I don’t believe so. I believe we have others that

have exceeded that time. Just patent load, I believe, could

possibly be the reason.

Mr. Nolan: ‘I would like to offer Exhibits 13 and 14

into evidence.

Mr. Schmidt: No objection.

Q139. I believe you testified that there wasn’t anything

unusual about the interval between the disclosure and the ac-

tual filing date. Are you generally familiar with the patent ap-

plications originating [32] from John Deere Ottumwa Works?

A. Generally and, of course, specifically those relating with

Ottumwa-initiated applications, but only in a general sense. I

would have a difficult time giving you an average time

required.

Q140. But you didn’t view this as an unusual or an ab-

normal interval? A. No, I don’t believe I did then and I don’t

now.

30a

IN THE

UNITED STATES PATENT AND TRADEMARK UFFICE

Before the Board of Patent Interferences

ADIN FRANK HOLDEMAN, et al,

vs.

JOSEPH JOHN SHINDELAR.

Interference No. 99,523

Deposition of Gust Soteropulos, taken before Mervin E.

Vaughn, Certified Shorthand Reporter, commencing at 10:20

a.m., July 19, 1977, at the John Deere Ottumwa Works, Ot-

tumwa, Iowa.

Appearances:

Adin Frank Holdeman, et al, by: Gordon D. Schmidt and

Stephen D. Timmons, Attorneys at Law, 1400 Mercantile

Bank Tower, 1101 Walnut Street, Kansas City, Missouri

64106.

Joseph John Shindelar by: John M. Nolan and Harold M.

Knoth, Attorneys at Law, Deere & Company, Moline,

Illinois.

Reported by: Mervin E. Vaughn, Certified Shorthand

Reporter.

[40] GUST SOTEROPULOS, called as a witness, having

been first duly sworn, testified upon his oath as follows:

3la

Direct Examination by Mr. Nolan:

[46] Q41. I hand you a document that’s been previously

identified as Shindelar Exhibit 2 and ask you whether you

recognize this document? A. Yes.

Q42. Do you know who drew this particular drawing? A.

GFM would be Gerald Meiers.

Q43. Do you know the approximate date when the

drawing [47] was made? A. November 17th, 1972. I ask all of

my men to put dates on their layouts, so I know that that was

made then.

Q44. Can you tell me why this particular drawing was

made? A. This is when we started to design—we call it Joe’s

machine, actually, this type of machine that would start the

bale on the ground and lift it up at a predetermined diameter.

Q45. Can you describe what is shown in this drawing? A.

This is the main frame of that particular machine.

{53} Q88. This machine that you observed in Florida, was

it a machine for removing crop material from the ground and

rolling it into large cylindrical bales? A. Yes.

Q89. Did this machine have a mobile frame? A. Yes.

Q90. Did the frame have opposite sides? A. Yes.

Q91. Did the frame have a shiftable rear gate structure?

A. Yes.

Q92. Now, did the machine have a rear conveyor means

including a first axially transverse rotary element? A. Yes.

[54] Q93. Did that rotary element extend between the op-

posite sides of the frame? A. Yes.

Q94. Did that machine have crop pickup means associated

with the rotary element? A. Yes.

Q95. Did that pickup means engage crop material on the

ground? A. Yes.

32a

Q96. Did the machine have a drive means connected to

the rear conveyor means and the crop pickup means so that

the pickup means raised the crop material from the ground as

the machine advanced? A. Yes.

Q97. Did the pickup means and the rear conveyor means

initially roll the crop material along the ground into a spiral

cylindrical bale? A. Yes.

Q98. Did the machine have a second axially transverse

rotary element extending between the opposite sides for-

wardly of the first rotary element? A. Yes.

Q99. This rotary element, was it adapted to engage the

forward side of the bale when the bale reached a predeter-

mined size? [55] A. Yes.

Q100. When the bale reached the predetermined size, did

the rear conveyor means raise the bale from the ground so

that the bale was at least partially supported above the

ground on the first and second rotary elements? A. Yes.

Q101. While it was so supported, did it continue to rotate

and increase in its size as the machine continued to advance—

A. Yes.

Q102. —and as the pickup means fed additional crop

material to the bale? A. Yes.

Q103. Now, was on that machine the first rotary element

and the crop pickup means mounted on the rear gate struc-

ture? A. Say that again.

Q104. Was the first rotary element and the crop pickup

means mounted on the rear gate structure? A. Yes.

Q105. Were they shiftable with the rear gate structure

from a lower operating position, wherein the pickup means

engaged material on the ground, and an upward and rearward

discharge position, wherein [56] the rotary element and the

pickup means cleared the formed bale to permit the rearward

discharge of the bale from the machine? A. Yes.

33a

{57} Q116. After you sent the disclosure to the patent

department and, say, in the ensuing two and a half years, did

you ever see a machine in the field embodying this concept

other than the machine that we talked about? A. No.

Q117. You saw no competitive machines embodying this

particular concept? A. No.

Q118. Have you ever been the inventor on a patent ap-

plication obtained through the Deere and Company Patent

Department? A. Yes.

Q119. Approximately how many patent applications have

you been the named inventor on? A. Oh, I quit keeping track

of them. I think about twenty-five.

Q120. So you are familiar with the procedure for ob-

taining [58] a patent through the Deere and Company Patent

Department? A. Yes.

Q121. Would you say from your ied experience with

patent applications that a two and a half year period between

the time when the invention disclosure was sent to the patent

department and the actual filing date of the patent ap-

plication was unusual? A. No, it wasn’t unusual. As a matter

of fact, it’s probably more common that it would be that long.

34a

| IN THE

UNITED STATES PATENT AND TRADEMARK OFFICE

Before the Board of Patent Interferences

ADIN FRANK HOLDEMAN, et al,

vs.

JOSEPH JOHN SHINDELAR.

Interference No. 99,523

Deposition of Gerald Meiers, taken before Mervin E.

Vaughn, Certified Shorthand Reporter, commencing at 10:55

a.m., July 19, 1977, at the John Deere Ottumwa Works, Ot-

tumwa, Iowa.

Appearances:

Adin Frank Holdeman, et al, by: Gordon D. Schmidt and

Stephen D. Timmons, Attorneys at Law, 1400 Mercantile

Bank Tower, 1101 Walnut Street, Kansas City, Missouri

64106.

Joseph John Shindelar by: John M. Nolan and Harold M.

Knoth, Attorneys at Law, Deere & Company, Moline,

Illinois.

Reported by: Mervin E. Vaughn, Certified Shorthand

Reporter.

[64] GERALD MEIERS, called as a witness, having been

first duly sworn, testified upon his oath as follows:

35a

Direct Examination by Mr. Nolan:

[69] Q37. I hand you a document that’s previously been

[70] identified as Shindelar Exhibit 2 and ask you whether

you can identify this document? A. ‘Yes.

Q38. Will you describe what it is? A. That is a welded

main frame of this machine.

Q39. When you say “this machine,” you’re referring to the

machine embodying the concept described to you by Mr.

Shindelar? A. Yes.

Q40. Who prepared this drawing? A. I did.

Q41. Can you tell when you prepared it? A. Yes, 17th of

November. It was completed the 17th of November of °72.

Q42. Did you make any other drawings of the machine at

that time? A. Yes. 2

Q43. What would be on the other drawings of the

machine? A. Well, this was a detailed—or, this was a layout,

actually, of a machine and it was also used in the shop to weld

up the main frame, but there would be other layouts that

would show all of the—the complete machine broken down

into areas like this main frame, a complete set of layouts and

sketches. .

Q44. But, from looking at this particular drawing, can

[71] you tell that this was a machine embodying the concept

that Mr. Shindelar described to you? A. Yes.

[73] Q63. Did you observe the machine in Florida? A.

Yes.

Q64. How long were you in Florida? A. I was in Florida

the one week.

Q65. During that one week period, did you observe the

machine in actual operation in the field? A. Yes.

Q66. Did the machine actually form a bale? [74] A. Yes.

Q67. Did the machine work? A. Yes.

36a

Q68. Did the machine initially roll the bale along the

ground and, then, after it reached a certain size raise the bale

and thereafter form the bale in a chamber above the ground?

A. Yes.

* * *

Q74. I hand you a series of prints which have been [75]

previously stipulated to be prints made from these slides and

ask you whether these prints show the machine that was being

tested in Florida? A. Yes, they do.

Q75. Does the machine shown in these prints embody the

concept described to you initially by Mr. Shindelar? A. Yes.

e * *

IN THE :

UNITED STATES PATENT AND TRADEMARK OFFICE

Before the Board of Patent Interferences

ADIN FRANK HOLDEMAN, et al,

vs.

JOSEPH JOHN SHINDELAR.

Interference No. 99,523

Deposition of John M. Nolan, taken before Mervin E.

Vaughn, Certified Shorthand Reporter, commencing at 11:15

a.m., July 19, 1977, at the John Deere Ottumwa Works, Ot-

tumwa, Iowa.

vw"

37a

Appearances:

Adin Frank Holdeman, et al, by: Gordon D. Schmidt and

Stephen D. Timmons, Attorneys at Law, 1400 Mercantile

Bank Tower, 1101 Walnut Street, Kansas City, Missouri

64106.

Joseph John Shindelar by: John M. Nolan and Harold M.

Knoth, Attorneys at Law, Deere & Company, Moline,

Illinois.

Reported by: Mervin E. Vaughn, Certified Shorthand

Reporter.

* * *

JOHN M. NOLAN, called as a witness, having been

first duly sworn, testified upon his oath as follows:

Direct Examination by Mr. Knoth:

Ql. Will you state your name, please? A: John M. Nolan.

Q2. Would you give us just a brief summary of your

education after high school? A. I have an Engineering Degree

from the University of Notre Dame and also a Law Degree

from the University of Notre Dame, which I received in 1957.

Q3. What is your present occupation? A. I’m a patent at-

torney employed by Deere and Company in Moline, IIlinois.

Q4. How long have you been so employed? A. Ap-

proximately thirteen years.

Q5. What in general is the nature of your duties in the

patent department? A. I prepare patent applications,

primarily for inventions originating at John Deere Ottumwa

Works and John Deere Harvester Works. I also am involved

in some trademark work and from time to time I am [82] in-

volved in patent litigation work involving Deere and Com-

pany.

Q6. Did you have any connection with the present in-

terference? A. Yes, I was the patent attorney who prepared

38a

the application and I have been working on the patent in-

terference as well.

Q7. Are you the John Nolan identified in the Power of At-

torney as well as in the Notice of Taking Testimony? A. Yes.

Q8. Could you give us a brief rundown of the

organization of the John Deere Patent Department? A. The

patent department is divided in a manner so that each patent

attorney is responsible for patent matters arising out of one or

more of the John Deere factories and in some cases an older

or more experienced patent attorney has an assistant helping

him with one or more of the factories.

Q9. Give us a general rundown of the docket system. A.

Well, when a patent application—or, disclosure is received

from a factory, the patent attorney normally fills out an in-

formation sheet and the information is then transferred to a

computer and [83] each disclosure receives a file number as

it—as it comes into the patent department.

Q10._ I believe you’re familiar with Exhibits 13 and 14? A.

Yes.

QIl. Are those typical of the normal, routine invention

disclosures? A. Yes.

Q12. Is there any system of taking up certain applications

in any kind of an order? A. Yes, in a rather vague way. Nor-

mally, they’re handled somewhat in the order in which they’re

received. However, there are many exceptions to that,

primarily because some of the inventions embody machines

soon to go into production or maybe even machines already

in production. In this case, there is an approaching statutory

bar so that that particular application or disclosure would

have to be taken out of sequence.

Q13. Are you familiar with the procedures involved in

filing applications in countries outside of the United States,

particularly Europe? A. Yes.

Q14. Does that change the sequence of filing ap-

plications? A. Yes. If a patent applica:ion is going to be filed

39a

[84] in foreign countries, it is necessary that the patent ap-

plication be filed before the machine goes into production or

is offered for sale and, therefore, that particular application,

in many cases, has to be moved ahead of other applications.

Q15. Why is that particularly important with respect to

novelty situations? A. Because in most foreign countries they

have what is known as absolute novelty countries wherein the

application has to be filed before the machine is

publicly disclosed in any manner.

Q16. Referring again to Exhibits 13 and 14, go into a little

more detail of particularly the date that the disclosure was

received by the patent department. A. Well, this particular

disclosure was received by me on January 19, 1973, as in-

dicated by the date stamp on the cover letter and on the

patent disclosure. , .

Q17. Now, I think you testified before that you would

place it on your agenda? A. Yes. i

Q18. Did you keep an agenda individually or separate

from the other attorneys? A. No, only in that I retain the file

in my possession and—lI guess I would just leave it there. I

[85] retain the file in my possession.

Q19. It would be correct to say that you are in control of

the files from your particular factories, which you said were

Ottumwa and Harvester Works? A. Yes.

Q20. Did you do anything with this disclosure after you

received it other than place it in your file? A. Well, I don’t

have any specific recollection, except I do recall that at some

time after receiving this I took the disclosure with me on a

trip to Ottumwa Works and discussed the file with Mr. Shin-

delar and I believe Mr. Soteropulos, also.

Q21. You don’t remember the date? A. I don’t remember

the date.

Q22. Did you ever make a search as to novelty and in-

vention on this disclosure? A. I didn’t personally. In some

cases, I personally make a search. In other cases, especially

40a

where I am involved in other matters and am short of time, I

have other persons in the office make the search for me. In

this particular case, I gave the file to one of our draftsmen

and had him make a patent search through our own patent

library in Deere and Company.

{86} Q23. I refer you to what I would like to have iden-

tified as Exhibit 15, Shindelar Exhibit 15, and ask you to

identify that. A. Yes, this is a brief written search report that

was made by Mr. Fred DePooter, who was the patent drafts-

man that I assigned to make the search.

Q24. That is dated? A. That is dated January 25th, 1974.

Q28. Now, it’s a matter of record that the filing date of

this application is in 1975, I believe? A. Yes, June of 1975.

Q29. Have you made any kind of a check at all on your

docket looking at cases that were filed with reference to the

order relative to the date of disclosure? A. Yes.

Q30. Do you find some that were submitted later, but

[87] were filed earlier than the present case? A. There were

some applications that I filed prior to this application that I

did receive the—wherein I received the disclosure after I

received this particular disclosure.

Q31. That were filed before this one? A. That were filed

before this one.

Q32. Can you explain that? A. Yes. In each case where

this occurred, there was an approaching statutory bar that I

had to be concerned with and so I had to take the case out of

its natural order.

Q33. Would you say that was kind of a normal or an ab-

normal procedure? A. This was normal procedure.

Q34. In that particular period between the date of the

disclosure and the date of filing, do you recall any particular

work other than prosecution of applications that would in-

volve any portion of your time? A. Yes. We were—at that

time I was directly involved in several patent litigation mat-

4la

ters that took a large part of my time, one of them involving

Hesston Corporation, the other party to the present in-

terference.

[88] Q35. Did those situations take you out of Moline? A.

Yes. |

Q36. Was this a relatively extended or relatively short

period? A. Well, the trips were usually, say, of less than a

week’s duration, but there was frequent trips involving in-

terference—I mean, I shouldn’t say interference—involving

discovery depositions and. similar matters. We were also

preparing interrogatory answers and preparing in-

terrogatories.

Q37. Having reference to the subject matter at hand,

when did you first become aware of the Hesston application

in interference? A. When we received the notice from the

patent office instituting the interference proceedings.

Q38. You had never seen that application before? A. No.

Q39. Had you ever seen or had called to your attention

the fact that there was in existence, if there was, in fact, the

Hesston machine? A. No, I’ve never heard of the Hesston em-

bodying the concept covered by this particular patent ap-

plication. ©

Q40. Would it be correct to say that your decision to file

the application was not spurred in any way by [89] the

presence or absence of the Hesston machine? A. No, it was

not spurred by the—not only the Hesston machine, it was not

spurred by any other machine or any patent or machine on the

marketplace.

Q41. So, so far as you’re concerned, Joe Shindelar’s in-

vention was the first and only type involving that concept? A.

Yes.

Q42. Had you had situations previously in your ex-

perience in which you had a gap of, say, two, two and a half

years between disclosure and filing? A. Yes. This definitely

wasn’t abnormal. There are many instances where there’s a

longer gap between disclosure receipt and filing date.

43a

APENDIX D

UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS

717 MADISON PLACE NW.

WASHINGTON, D.C. 20439

November 20, 1980

George E. Hutchinson Telephone: 347-1552

Clerk Area Code 202

RoBERT S. SWECKER, Esq.

BuRNS, DOANE, SWECKER & MATHIS

George Mason Building

Washington & Prince Sts.

Alexandria, VA 22313

Re: Appeal No. 80-522

Shindelar v. Holdman et al.

Dear Mr. Swecker:

The court denied today the petition for

rehearing in the above appeal.

Very truly yours,

/s/ George E. Hutchinson

GEH:df

ce: John M. Nolan, Esq.

Stephen D. Timmons, Esq.

William T. Bullinger, Esq.

| PRECEDING PAGE WAS BLANK

4Sa

APPENDIX E —

CONSTITUTIONAL PROVISION. STATUTES AND

REGULATIONS INVOLVED IN THE CASE

The United States Constitution:

The Patent and Copyright clause of Article I, Section 8:

The Congress shall have Power

* * *

To promote the progress of science and the useful

arts, by securing for limited times to authors and in-

ventors the exclusive right to their respective writings

and discoveries;

The Due Process Clause of Amendment V:

No person shall be . . . deprived of life, liberty, or prop-

erty, without due process of law...

Statutes

28 U.S.C. §1256:

Cases in the Court of Customs and Patent Appeals may

be reviewed by the Supreme Court by writ of certiorari.

35 U.S.C. §102(b):

A person shall be entitled to a patent unless —

* *~ *

(b) the invention was patented or described in a

printed publication in this or a foreign country or in

public use or on sale in this country, more than one year

prior to the date of the application for patent in the

United States,

35 U.S.C. §102(c):

A person shall be entitled to a patent unless —

* * *

PRECEDING PAGE WAS BLANK.

46a

35 U.S.C. §102(g):

A person shall be entitled to a patent unless —

a ” +

(g) before the applicant’s invention thereof the inven-

tion was made in this country by another who had not

abandoned, suppressed, or concealed it. In determining

priority of invention there shall be considered not only

the respective dates of conception and reduction to prac-

tice of the invention, but also the reasonable diligence of

one who was first to conceive and last to reduce to prac-

tice, from a time prior to conception by the other.

35 U.S.C. §135(a):

Whenever an application is made for a patent which,

in the opinion of the Commissioner, would interfere with

any pending application, or with any unexpired patent,

he shall give notice thereof to the applicants, or applicant

and patentee, as the case may be. The question of prior-

ity of invention shali be determined by a board of patent

interferences (consisting of three examiners of inter-

ferences) whose decision, if adverse to the claim of an

applicant, shall constitute the final refusal by the Patent

and Trademark Office of the claims involved, and the

Commissioner may issue a patent to the applicant who is

adjudged the prior inventor. A final judgment adverse to

a patentee from which no appeal or other review has

been or can be taken or had shall constitute cancellation

of the claims involved from the patent and notice thereof

shall be endorsed on copies of the patent thereafter

distributed by the Patent and Trademark Office.

35 U.S.C. §141:

An applicant dissatisfied with the decision of the

Board of Appeals may appeal to the United States Court

of Customs and Patent Appeals, thereby waiving his

47a

right to proceed under section 145 of this title. A party

to an interference dissatisfied with the decision of the

board of patent interferences on the question of priority

may appeal to the United States Court of Customs and

Patent Appeals, but such appeal shall be dismissed if any

adverse party to such interference, within twenty days

after the appellant has filed notice of appeal according to

section 142 of this title, files notice with the Commis-

sioner that he elects to have all further proceedings con-

ducted as provided in section 146 of this title. Thereupon

the appellant shall have thirty days thereafter within

which to file a civil action under section 146, in default

of which the decision appealed from shall govern the

further proceedings in the case.

Regulations

37 C.F.R. §1.56(a):

A duty of candor and good faith toward the Patent

and Trademark Office rests on the inventor, on each at-

torney or agent who prepares or prosecutes the applica-

tion and on every other individual who is substantively

involved in the preparation or prosecution of the applica-

tion and who is associated with the inventor, with the

assignee or with anyone to whom there is an obligation

to assign the app’ tion. All such individuals have a

duty to disclose to the Office information they are aware

of which is material to the examination of the applica-

tion. Such information is material where there is a sub-

stantial likelitood that a reasonable examiner would con-

sider it important in deciding whether to allow the appli-

cation to issue as a patent. The duty is commensurate

with the degree of involvement in the preparation or

prosecution of the application.

37 C.F.R. §1.257(a):

(a) The parties to an interference will be presumed to

have made their inventions in the chronological order of

the filing dates of their applications for patents involved

- |

48a

in the interference or the effective filing dates which such

applications have been accorded; and the burden of

proof will rest upon the party who shall seek to establish

a different state of facts.

37 C.F.R. §1.258(a):

(a) In determining priority of invention, the Board

of Patent Interferences will consider only priority of

invention on the evidence submitted. Questions of

patentability of a claim generally will not be con-

sidered in the decision on priority; and neither will

the patentability of a claim to an opponent be con-

sidered, unless the nonpatentability of the claim to

the opponent will necessarily result in the conclusion

that the party raising the question is in fact the prior

inventor on the evidence before the Office, or relates

to matters which have been determined to be an-

cillary to priority and must be considered. A party

shall not be entitled to raise such nonpatentability

unless he has duly presented a motion for dissolu-

tion under §1.231 upon such ground or shows good

reason (e.g., that such nonpatentability became evi-

dent as a result of evidence extrinsic to an involved

application) why such a motion was not presented;

however, to prevent manifest injustice the Board of

Patent Interferences may in tis discretion consider a

matter of this character even though it was not

raised by motion under §1.231.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.