Appendix — Knowles Electronics, Inc. v. Tibbetts Industries, Inc.

APPENDIX

|. Final Hearing : See Paper: No. 37

q x March 5, 1963 _GWB/dr

, IN THE UNITED STATES PATENT OFFICE.

‘BEFORE THE |

BOARD OF PATENT INTERFERENCES

Patent Interfotoune No. 91,812°

Knowles v. Tibbetts |

(Mailed May 31 1963 U.S. Patent Office)

*

Magnetic Translating Device —

Application of Hugh S. Knowles filed April 22, 1958, Ser. .

No. 730,082 7

Application of George C. Tibbetts filed August 28, 1957, :

Ser. No. 680,753

Mr. Wilfred S. Stone for Knowles

‘Messrs. Roberts, Cushman and Grover for. Tibbetts

& * chs :

This is an interference involving application No. 730,082,

filed by Knowles the junior party on April 22, 1958, and

application No. 680,753, filed by the senior party Tibbetts

on August 28, 1957.

The invention involved is a transducer, more particularly,

a device for converting acoustic energy into electrical en-

ergy or vice versa., That is, it may serve as either a micro-

phone or a receiver. It is intended primarily for use in

hearing aids. The class of ,transducers involved comprise

od

App. 2.

a magnetic, system including .a permanent magnet with

pole pieces and a flexible reed armature fixed’ at one

end and free to vibrate in, an air gap between the pole

pieces. at the other end with a bendable tab projecting

laterally from the fixed end for varying the reluctance of

the air gap between the pole pieces at the fixed end of the

reed. The object of the variation is to. equalize the flux

paths so that‘a minimum of flux passes through the reed

itself. The adjustment is intended to be done after as-

‘sembly and encasement of the unit when the reed itself is

inaccessible, but the bendable tab can be made accessible

' by providing a small hole in the case adjacent thereto. The

hole would be closed after the adjustment was made.

The issue comprises three. counts which read as follows:

Count 1

A magnetic translating device comprising an ‘elon-

gate armature, means for supporting one end of the ar-

mature with the other end free to vibrate transversely

of a predetermined plane, magnets extending length-

‘wise of the armature on the opposite sides thereof

which are intersected by said plane, the poles of the

magnets being directed transversely of the plane -in

corresponding directions, and bridges of magnetic ma-_ .

terial substantially bridging the space between the

poles of the magnets on opposite sides of said plane

respectively, said bridges presenting pole faces of op-

posite polarity to said vibratory end, said armature

having a tab projecting therefrom from said one end

along said plane and extending between said bridges,

the tab being bendable transversely of the plane toward.

either of. said bridges. ac

| Count 2

_ An electromagnetic transducer comprising a mag-

net, a pole piece flux-conductively engaging each pole of

the magnet, said pole pieces extending laterally of the

7 App. 3 ;

magnet to form a nonmagnetic gap therebetween, an

elongated, flux-conductive, elastic armature, means \

clamping one end of said armature in non-magnetic, —

‘spaced relationship to the pole pieces in fixed position

in said gap so that the other end of said arniature may

vibrate in another portion of said gap, there being a

bending line between the clamped end aid the vibrat-

able end of the armature, and means for varying the

reluctance between the pole pieces in the air gap at

the fixed end of the armature. oe

Count 3 °

The electromagnetic transducer of count 2 wherein .’.

the reluctance varying means is a T-shaped armature “

with the clamped portion between the’ arms. of sthe |

T which project laterally on both sides into the gap.

Both parties took testimony, filed briefs and were repre-

sented at the final hearing. As junior party, Knowles has ©

_ the burden of proving priority by a preponderance of the

evidence. ) | -—

In his preliminary statement Knowles alleged first draw-

ing and disclosure to others. between April 15. and 30, 1953

and actual reduction to practice between April 30 and

November 23, 1953. Tibbetts alleges first drawing April 3,

1956, disclosure to others March 31, 1956, first written.

description July 23, 1957 and reduction to practice October =

15, 1956. ae. ey

The record on behalf of Knowles includes the testimony

of various witnesses who were employed at Industrial Re-

search Products (hereinafter Industrial), the company of

‘which Knowles is president and director of research, dur-

ing the period in question, as well as that of Knowles him-

self. Knowles relies primarily on the testimony. of one’

Cronk who had been a project engineer and later assistant

chief engineer at Industrial.. He left the employ of In-

dustrial in August 1958. - Among other witnesses were

Ulrich who performed engineering tests including acous-

aomnet a + ee

ee as

—

tigated new desi

Ee OS Pek Saal Ae Oe ee

. .

| App.4 - |

tic response ff checks, Pratt who inves-

was a model maker and toolmaker at Industrial, all of

whom had left the employ of Industrial prior to the’ —

of testimony.

In 1953 Industrial was suai a ‘ela wiereshene

identified as model AH which utilized a reed of uniform

width. According to Cronk a modification of this reed was

suggested by Knowles which he incorporated. in pencil

lines on a diazo or blueprint copy of a tracing of the origi-

nal reed for the AH motor (K exhibit 3). The modifiea-

tion comprised providing short lateral extensiofis on the

_ fixed end of the reed ‘‘so that some -adjustable member

was available to change the effective gap length at either

side of the reed,’’ (KR/39, Q 173). Sixteen reeds were

made pursuant to the proposed modification and were jin-:

corporated in AH motors.’ From the pencilled date 4-30- 53,

Cronk thought that.these motors were made up within a

week thereafter. He also stated that they were tested and

met original expectations as.a means .of adjusting fhe

magnetic balance. He did not, however, indicate what those

expectations were. The proposal was not adopted for the

“mode? AH, the reason. given “being that the number of

rejects was low enough that it was not deemed economic to

introduce another adjustment step after enclosure of the

unit. The straight reeds were at that time adjusted. “after.

assembly of the motor, but before enclosure in a case, by

inelastic deformation ‘of the reed adjacent its fixed end.

As to the degree of adjustment attainable Cronk'stated :

‘Well, the tabs themselves were completely capable

- of bringing the motor back‘on magnetic centering from

most normal cases of production drift. as we call it.,

There might be exceptions to this at times, but in terms

of production feasibility it was entirely capable of.

oe. this. _ 49, . 222)

s, Carl Zapfe, who was in charge of:

the model shop and tool room, and Herbert Zapfe who ~

J

‘als 5

Initially tests were made by Knowles and Cronk of the

motor assembly, that is, of the magnetic assembly includ-

ing the reed and £oil. "The pnits were then turned over to

Ulrich for assembly with a diaphragm and encasement as

complete acoustical models. Cronk stated further that Ul-

rich would test the acoustical response to obtain a ‘‘sensi-

tivity versus frequencialvolume”’ curve, and that they were

_ Indistinguishable from wa A other reed. (KR 50, 51, Q

225-229) | :

Ulrich testified concerning the tests he, made in 1953.

He referred to an entry, Curve #448 in his- notebook on

page 47 (K exhibit 9) dated 7/24/53 as relating to an AH

microphone with a T reed. He also referred to the entry

identified as ‘‘Curve #652”’ on page 85 ( K exhibit 12) and .,

gave the date as December 11, 1953 from the date appear-

ing on the previous page, page 83. He stated that the

“tests started at 300 cycles and’ that the apparatus went

to 5,000 cycles but that the microphone responses didn’t

get that high. The curves themselves do not appear in the

record and Ulrich could not remember just what they:

showed although he stated that the microphone responded | |

( KR 220, Q 30). . He testified regarding results as follows:

RDQ 15 Mr. Ulrich, were these microphones satis-

factory microphones?’ .

A. Apparently they were or I would have made

some note.. (KR 226). *

Nothing further was done with the T-shaped ane for

some time. In November of 1954 Ulrich did some experi-'

mental work with ‘‘bent tail’ armatures which had been

suggested earlier that year by Knowles as a possible means

‘ of volume or sentivity control. ‘These armatures had an

extension or tail extending beyond the fixed portion as

indicated on page 125 of Ulrich’s notebook (K exhibit 14).

- Variation of the angular. position of the tail with. respect

to the adjacent pole piece by an adjusting screw was’ ex-

© 9 hae

eo.

ERIN A inches oilnae La

‘

a dis

i ta

*

58 etic di haatttac eb e Opa it ts 6s alt

.

App. 6 ‘

pected to control the volume of the output of the micro-

. phone. This was not found to be satisfactory for that pur-

. pose since Ulrich had noted that centering was not changed

appreciably even when the tail was bent into contact with

the pole piece. In a weekly progress report (K exhibit

15) Cronk noted with regard to the bent tait reed that it

* eaused very little effect and that it, ‘‘Could cause total

shift of pattern of Jess than .1/16” under any condition ~

of tail coupling.’”? When questioned regarding this note

he stated that the very little effect was in terms of what

was hoped for in terms of volume control but that the

effect was probably adequate for most production read-

justment procedures.

We do not firid this evidence convincing of an actual re-

duction to practice by Knowles up to this point. For one-

thing counts 1 and 3 clearly do not read on the bent tail

structure since count 1 requires that a tab extend be- °

tween the bridges, and count 3 requires a T armature. ©

Also there is serious question in our minds that the tail

entirely outside the air gap between pole pieces can prop-

erly be regarded as the ‘‘means for varying the reluc-

tance between the pole pieces in the air gap’’ as required

by’count 2. Moreover, we are of the opinion that the rec-

ord does not demonstrate any conviction of success with

regard to this structure. Certainly there is no indication

of it in either of the documentary exhibits mentioned. We

do not accord any substantial weight to Cronk’s oral

statement made almost eight years after the period in

question even though he may be regarded as unbiased. At

‘best it is a statement of opinion as to probability. We ~°

prefer to base our.conclusion on the contemporary docu-

mentary evidence the deficiency of which has been noted.

As to the activity in 1953, we are of. the opinion that.

- the record does not demonstrate an actual reduction to |

practice although we believe that it established conception

by Knowles in that year. Under the circumstances of this

iiimends" ~iepnOS

-

App. 7

case a more specific finding is unnecessary. Here, while

there is no evidence directly indicating lack of success,

- Ulrich’s notebook did not include any factual data or state-

ment as to results obtained and we are left to the inference -

suggested orally by Ulrich that the results. must have been |

- satisfactory or some contrary note would have been made.

We decline to draw that inference where other circum-

stances pointing in that direction are absent and where

the failure to adopt the proposal or to file an application

are circumstances which tend to-indicate the contrary.

In 1955 the T reed proposal was again considered in

@onnection with a smaller transducer designated AO.

It appears that at first a serious reject problem arose |

_ and a program was initiated towards utilizing T-shaped —

reeds, including tooling. It was carried forward to the ex-

tent of a pilot production of 200 for the purpose of a cost

analysis on all phases of adjustment. It appears further,

however, that for some reason the consultant..who was to

make the analysis was not present while the pilot run was

made. Cronk testified that other facets of the situation

were under study at the same time and that through modifi-

cation of the bulkhead or base and the pole pieces the me-

chanical instability. problem which ‘had caused the rejects

had been solved to an economically acceptable extent at

least so the T reed proposal was again shelved.

Knowles’ contention for a reduction to practice at that

time has somewhat more force than with respect to the

earlier activity since the decision to make the run for cost

analysis would seem to indicate that those in authority

were convinced of the efficacy of the T reed adjustment.

However, only Knowles testified in any detail concerning

the making of the decision which he states was made after

a conference between Cronk and himself.: His testimony (K

record 192-195) indicates much uncertainty and alsé that

when the run of 200 went through without the industrial

engineer consultant being present the matter was dropped —

fe Oe sy De

App. 8

without further serious consideration.. Cronk’s testimony

was to the effect that at this time the T reed was put into

units: for experimentation. (K record Q 285, 286, p.

64).. There is no evidence that the 200 units produced

were themselves tested at all. A review.of these :circum-

stances leaves us with the impression that an adequate

test resulting in conviction of success was not established

in 1959.

The next activity set out in the Knowles record occurred

in the fall of 1956 when Pratt was assigned to make a study

of approaches to the motor adjustment problems which are

outlined on page 53 of his notebook (K exhibit 16). He

z

- worked on modified AO models and by calculation trans- |

formed the results into predicted effects on the AT model

which was to be smaller. Parts for the AT were not yet

available. A brief note appears on his notebook page 52

(K exhibit 17) regarding tests of proposals T(A) and I(B),

presumably referring to exhibit 16. The first indicates that _

the change achieved was equivalent to .5 to .7 milliamperes. .

and the second states that the unit appeared.to work. In

explanation Pratt stated that the result- appeared on the |

oscilloscope which he was using. We do not regard this

evidence ‘as having sufficient specificity to have substantial

significance beyond being somewhat cumulative of the

previous work. It does not appear that either form would

satisfy the structural requirements of count 3 and support

for counts,1 and 2 would be doubtful since it is not clear

that the magnetic adjustment would be in the air gap be-

tween ‘polepieces as required by these counts.

The next activity at Industrial related to a modified T

reed shown in a drawing (K exhibit 18) dated 11/20/56.

_Various witnesses referred to this as the pitchfork -ar-

mature or reed. According to Cronk, bending of the

tabs of this reed would cause a pure reluctance adjust-

ment and could also. cause a deformation of the. reed. His

testimony also indicated that by the date on the drawing

App. 9

complete microphones had been assembled and tested. The

nature and results of the tests were not given however.

Referring to the drawing (K exhibit 20) of a case for

the AT model with a hole for post assembly adjustment;

Cronk stated that at that time (March 21, 1957) the AT

model was in ‘‘moderate scale production, pilot models, I

believe’. We do not regard this testimony as being sufti-

ciently specifie. and definite as to just what had-been done

at that time to establish a reduction to practice of the

structure required by the counts in issue. Knowles stated

that these microphones were released for sale in May of

1957, but this is not corroborated except to the extent of.

.Cronk’s testimony already reviewed. There is no docu-

mentary evidence as to such release.

Knowles also stated that later modifications as shown

in drawings, exhibits 22, 23 and 24, were considered, how-

ever there is no testimony as to this by a corroborating

witness except as to the fact of the drawings themselves

which were identified by Thielman who prepared them: The —

requirement that.in interference cases the testimony of a

party must be corroborated as to acts of conception, dili-

gence and reduction to practice has been reaffirmed many

' times, an example of which is found in Thurston v. Wulff

et al., 35 CCPA 794, 1948 C.D. 150, 164 F 2d 612, 76 USPQ

121. In view of this requirement and the noted deficiencies 7

in the Knowles record we feel that he has failed to es-

tablish a reduction to practice prior to his filing date.

We do not understand that he makes any contention for

diligence throughout the critical period. . Accordingly,

Knowles cannot prevail.

In view of our conclusion above a discussion of the Tib-

betts record becomes unnecessary. However, we have con-

sidered it and find it lacking testimony by a corroborating

witness regarding the structure of the transducers sold

under the model identifications given’ in connection with

the testimony’ regarding sales. -Neither do we find any

eA AR AS te Ciera IN a NES. art dal he oa

y,

App. 10

. statement by Sawyer who made the drawing (Tibbetts

exhibit D) which shows aT reed as part of a transducer

structure, that Tibbetts was the source of the structure

_ shown therein. Further, although Sawyer testified re-

rding the making of a punch and die (Tibbetts exhibit

by he failed to associate the T reeds made by them with

| any particular model number. Both Sawyer and Raymond

“—ibbetts (father of the party George Tibbetts) testified

briefly regarding a ‘‘Tab Adjust’’ item on a: checklist (‘Tib-

betts exhibit L1), but neither explained just what structure |

or testing was involved. The drawings (Tibbetts exhibits

J-9, J-10 and K-3) which were associated with certain

model numbers are merely external cases and do not estab-

‘lish any internal structure. For the reasons given above

we do not consider that the record’ for Tibbetts has estab-

lished either conception or reduction to practice prior. to

his filing date. | ,

In view of our conclusion that neither party has proven

- an actual reduction to practice prior to his filing date, the

senior party Tibbetts is entitled to prevail on thé basis

of his earlier constructive reduction to practice by the filing

of his application.

_ Accordingly, priority of invention of the subject matter

involved is hereby awarded to hate C. Tibbetts, the

senior party.

/3/ Warren H. Willner )

Warren H. Willner )

Examiner of Interferences )

/s/ George W. Boys —s) Board.

George W. Boys ) Of Patent

Examiner of Interferences ) Interferences

/s/ Maurice A. Crews ):

Maurice A. Crews ‘

* Examiner of Interferences )

App. 11

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

October Term, - 1964 are :

HUGH 8S. KNOWLES, ay

~ Appellant, | Patent Appeal No.

L ° 1377

Interference No.

91,812

vs.

GEORGE: C. TIBBETTS,

| -Appellee. :

| June 24, 1965 .

a

AutmonD, ‘Judge.

Hugh S. Knowles appeals from a decision of the Board

of Patent Interferences awarding -priority of inventien to

George C. Tibbetts. The Interference is between two

applications. The board based its award of priority on

its holding that the junior party, Knowles, had failed to

prove a reduction to practice prior to the senior party’s

filing date.

There are three counts in the interference. At oral

hearing, Knowles’ attorney abandoned the appeal as to

count 1. We thus are concerned only with counts 2 and

3 which read as follows: : :

2.. An electromagnetic transducer comprising a

magnet, a pole piece flux-conductively engaging each

? Tibbetts, serial No. 680,753 filed August 28, 1957 and Knowles,

serial No. 730,082 filed April 22, 1958. ae.

Persian Botte Peltonen, Mpeicetieillid OLS At DRAWN KRIS 8 Od he

Neer tet ate vty

* App. 12 ,

pole of the magnet, said pole pieces extending lateral-

* ly of the magnet to form a non-magnetic gap there-

between, an elongated fiux-conductive, elastic armature,

means clamping one end of said armature in non-

magnetic, spaced relationship to the .pole pieces in

fixed position in said gap so that the other end of

said armature may vibrate in another portion of said

gap, there being a bending line between the clamped

‘end and the vibratable end of the armature, and means

for varying the reluctance between the pole pieces in

the air gap at the fixed end of the armature.

3. The electromagnetic transducer of count 2

wherein the reluctance varying means is a T-shaped

armature with the clamped portion between the arms

of the T which project laterally on both sides into the

gap.

| It is clear from the applications in interference that the

invention relates to a transducer of the type shown in

. Figure 2 of the Knowles application:

nig

MRAM’ BRAN ABASNS

a

2 i ge ge

‘Y=

Ope

7

—~—.s —e

.4

\7Z

TT

Se ae

App. 13

A reed 27 i is clamped between washers 28W at one ‘al

and is-free to vibrate at its: other end. When used in a

microphone to convert acoustic energy into mechanical

energy, the reed is made to vibrate by diaphragm 31 and ~

drive link 32. Vibration’of the reed between magnetic poles

22 and 23 causes a variable magnetic flux in the reed. The

variable flux causes a current to be set up in coil 20. This

output eléctrical current from the coil varies with the input °

acoustical energy.

REDUCTION TO PRACTICE

An understanding of the problem solved by the inven-

tion is important in determining whether there was a

reduction -to practice. Both: applications in interference

indicate that two.kinds of flux are normally present in

the vibrating reed. There is a steady polarizing flux in the

region of the gaps between the magnetic poles and a

variable signal flux in other regions of the reed. It is

desirable that the reed carry as little steady flux as pos-

_ sible in regions outside the gaps. Knowles’ Figure 4 repre- »

sents a reed positioned between pole pieces :

According to Knowles, circulation of polarizing flux

through the-reed can be prevented by magnetically balanc-

ing the reed. Magnetic balance is obtained when the re-

luctance across each of the air gaps Gi, Gz, Gs, and Gu,

represented as Ri, Re, Rs and Rx, is in the relationship

Ri/Rz = Rs/Rs. A reed may be balanced by simple me-

chanical centering or by bending adjustments which pro-

duce strains in the reed. The invention described by the

Pal

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ER + A Meh 6 me ee he men me

+

Bt it Hel PU Ge le OTE AE IIELITD Fals M40

ect iad se toe Mme Rs de tee deem, Lee

| App. 14

applications in interference is another method for mag-

netically balancing the reed. Adjustable tabs 19 and 20

are provided to the fixed end of the reed as indicated by’

Tibbetts’, Figure 5: : |

a

_ Magnetic balance is obtained by bending the tabs. An im-

portant feature of the invention is that it allows adjust-

ment of the transducer after it has been assembled in a

casing if a small hole is placed in the casing to allow bend-

ing of the tabs.

Knowles’ Exhibit 3°’ dated ‘‘3-18-53”’ is a drawing of

a T-reed having bendable tabs. Herbert G. Zapfe, a model

maker employed by Knowles’ company, Industrial Re-

search Products, Inc., testified that he had made several

reeds in accordance with .Exhibit 3 and probably turned

them over to Knowles about April 30, 1953. Edward R.

Cronk, an engineer employed by Industrial, testified that

the T-reeds were placed in magnetic armature type motors

designated as model AH. The parties appear to be in

agreement that these AH motors ‘incorporating the.

T-reed’’ satisfy counts 2 and 3.2. There was testimony that

2Tibbetts does contend that, because of the type of washer

"used to hold the reed, magnetic adjustment alone is impossible.

This argument will be treated later.

App. 15 .

these AH motors were tested to determine whether mag-

netic ‘centering could be obtained by bending the tabs on

the T-reeds and that the motors were assembled in micro-

phones and tested acoustically by an engineer, Paul Ulrich.

The board held that this activity carried out i in 1953 estab- |

lished conception by Knowles but that it did not establish

reduction to practice. Conception is the formatior in -

the inventor’s mind of the complete operative invention,

Townsend v. Smith, 17 CCPA 647, 36 F.2d 292, 4 USPQ

269. Here the concept was not only in Knowles’ mind, it

was actually incorporated into a motor. Thus, it appears

that the board considered the AH motor containing the

T-reed to be a complete and operative embodiment of the

invention in counts 2 and 3. The board’s finding that re-

duction to practice had not been attained was expressed

as follows: ' sy

As to the ‘activity in 1953, we are of the opinion that

the record does not demonstrate an actual reductior to

practice although we believe that it established con-

ception by Knowles in that year. Under the circum-

' stances of this case a more specific finding is unneces-

sary. Here, while there is no evidence directly indi-

cating lack of success, Ulrich’s notebook did not in-

‘clude any factual data or statement as to results ob-

tained and we are left to the inference suggested

orally by Ulrich that the results must have been satis-

factory or some contrary note would have been made.

‘We decline to draw that inference where other cir-

cumstances pointing in that direction are absent and

where the failure to adopt the proposal or to file an

application are circumstances which tend to indicate.

the-contrary. |

This vague statement by the board appears to indicate

that only the acoustical tests by Ulrich were considered in

determining reduction to practice. This brings us to the

"© nub of the problem. We find, as apparently the board

PRT

%

App. 16

- did, that an operable transducer satisfying the counts was

made in 1953. The legal question we must determine is,

what proof of testing of this motor is required to estab-,

lish reduction to. practice?

Although tests under actual conditions \ of use are not

necessarily; a requirement for reduction to practice, the

tests must prove’ that the invention will perform satisfac- -

torily in the intended functional setting, White v. Lem-

_ merman,52.CCPA 968, 341 F.2d 410, 144 USPQ 409 and

Paivinen v. Sands, 52 CCPA 906, 339 F.2d 217, 144 USPQ 1.

Before considering Knowles’ proofs regarding redtction to

practice, we must-scrutinize the technical aspects to deter-

. mine just exactly what the intended functional setting of

_. the invention is. :

; There is some dispute o over the actual nature and pur-

‘pose of the invention. Knowles contends that the inven-

‘tion\is a transducer or in simpler terms merely a motor .

which -has. a wide variety ‘of applications and need only

- run to prove reduction to practice. Tibbetts, on the other

hand, apparently takes the ‘position that the primary util-.

ity of the invention’ is in a microphone or receiver and |

{3 would require, actual service tests in a hearing aid. The

| Knowles application states:

This invention pertains to the provision of improve- |

‘ments in‘electromagnetic devices such as transducers

employing an armature movable relative to polarized

pole pieces, and miore particularly, but not exclusively,

- to that class of transducers used as receivers and mi-

| crophones in hearing aids, and the like, in which the

armature may be a long thin. magnetic reed reacting

- relative to pole pieces condugting the main polarizing

flux,

The ‘entire invention, however, is directed to problems en-

countered in miniaturized equipment. Knowles states that

magnetic balancing 1 is ‘important in receivers. _where the

one

-

App. 17

alternating signal flux in the pole pieces becomes an appre-

ciable portion. of the steady polarizing flux.’’ Tibbetts, in

his application, describes the problem as follows:

_ As the size of certain types of transducer assem-

-blies is reduced, e.g. microphones, the sensitivity also

tends to reduce. One of the important means of main- .

taining sufficiently high sensitivity of such magnetic

transducers is to employ a magnetic instability factor

as high as practicable. ‘Hence the problem of ob-

taining a sufficiently low steady flux density in the

. armature of moving armature magnetic transducers

is greatly accentuated by the process of miniaturiza-

tion. ae

_ The principal object of my invention is to provide

means in a balanced armature magnetie translator

for adjusting accurately and permanently the mag-

netic state of the armature and hence of obtaining as

close an approximation to magnetic balance as may be

desired. ge |

The gist of the invention then appears to be magnetically

balaneing miniaturized transducers, and this balancing is

necessary when the transducers are used in ‘microphonés

and receivers. There seems to be no doubt that a minia-

turized transducer was made; Herbert Zapfe made the

T-reeds which were made up into modified AH motors ac-

cording to the testimony of Cronk. There is further evi-

dence that bending the tabs resulted in ‘‘varying the re-

luctance between the pole pieces in the air gap at the

fixed end of the armature’’ as called for by the count.

- Knowles testified that he bent the tabs and measured ‘the

shift in magnetic balance obtained by a laboratory test

. - setup. Cronk corroborated, stating that he had seen

Knowles make the magnetic centering tests and had made

them himself. Tibbetts questions whether a satisfactory

reluctance adjustment was. achieved. Tibbetts first points

to Knowles’ Exhibit 15, a-progress report allegedly made

by Cronk in 1954. Cronk’s testimony with regard to this

Teport was:

App. 18

Q259. Will you read into the record your comment

on this bent tail reed No. 3?' <A. ‘‘Bent tail reed

tried. Very little effect caused by tail. Probably ©

because permeance of tail clamp section. Could cause

total shift of pattern of less than 1/16th inch under

any condition of .tail coupling.’’

Q260. What were you after when you were testing

this particular bent tail,reed? A. Primarily we were

after a very large gross effect to operate as a volume

control rather than as a touch-up adjustment, as we

call it.

Q261.. Was this pure reluctance? A. Yes, this

' was definitely pure reluctance because it was complete-

ly isolated by the clamp from the balance of the reed.

Q262. Does the report you have there show that

the reluctance adjustment did occur? A. Yes. | In

fact I think the wording here as I read this thing is in

matter of concept. In other words, it says very little

but this is only in terms of what we were trying to get,

rather than what it actually did. I would say the

amount talked about here was probably adequate for

most production readjustment procedures.

We first note that a bent tail reed rather than the T-reed

involved in the 1953 test was being discussed. Further-

more, Cronk states that some rerastance adjustment was

obtained.

Tibbetts also argues that unless t - tab adjustment can

be made without introducing stresses in the vibratory por-

tion of. the reed, the results are unsatisfactory because of

mechanical instability of the reed. We do not feel that

he has pointed to any persuasive evidence which would

indicate that mechanical stress had been introduced during

the 1953 tests. He cites testimony by Cronk indicating

that both mechanical and reluctance adjustments were ob-

* tained but that testimony dealt with a ‘‘pitchfork’’ reed

designed to give both types of adjustment. - ‘

App. 19

We thus conclude that Knowles made ‘a miniaturized

transducer and tested to establish that reluctance could be

varied by manipulation of tabs on the T-reed. |

The next step by Knowles was to have acoustical tests’

performed on a microphone containing a T-reed trans-

ducer. It is not clear from the record just what Knowles

hoped to learn from the acoustical tests. Ulrich, at

Knowles’ request, placed the T-reed transducers in micro-

phones and ran acoustical tests to determine sensitivity as

a result of’ frequential volume. The results of these

tests were expressed by curves. The test was apparently

a standard practice. Ulrich’s notebook, Exhibits 9-12,

covers a period from ‘‘7/7/53”’ to **10/15/53”’ and ‘‘Curve

#441” through ‘‘Curve #661.”’ Two of the entries are:

7/22/53

Curve #448

flat drive pin : :

: wide base reed 3/16”

and |

12/11/53

Curve #649

production motor exept 3/16”’

reed —

Curve #652 -

same as #649 except 1/8” reed with

0/32” width @ pole faces

With regard to these tests, Ulrich testified:

RDQ15. Mr. Ulrich, were these. microphones satis-

factory microphones? A. Apparently they were or

I would have made some note.

RDQ16. You would have made some note that they

were not? A. That they were * * * unsatisfactory.

al

PG oo eae Sli iti

EF OORT, GIN CRNA IE OAS PREMIER EIR

oN P ‘

3 APRS ORT Ree A be ame

' App. 20

=

The curves are not in the record. Knowles testified that :

he saw the curves run on the T-reed transducers and was

satisfied that ‘‘sensitivity was up to par.”’ Cronk testified:

Q226. What tests did Mr. Ulrich ‘make on finished

acoustic models? A. He ran a finished acoustic re-

sponse test. - ‘

_ Q227. Which would be shown by some kind of

_ curve? A.’ Which would be sensitivity versus fre-

quential volume, yes.

e * *

a Q229, Did the curve show that the microphones

equipped with that T reed would work acoustically?

A. Yes, once they were in the acoustic. state they

were indistinguishable from any other reed.’

It was these acoustical tests alone which the board

- seemed to consider in holding that there was no reduction

_to practice. In its original opinion, the board stated that

Ulrich’s testimony and notebook failed to indicate suc-

cess of the acoustical tests. On reconsideration, the board

criticized Cronk’s corroboration of: the Ulrich test re-

sults because ‘‘the testimony does not, show that Cronk

recalled the nature of the tests.’ We would agree that Ul-

rich’s testimony is of little value as, to success of the

acoustical tests. We think, however, that Cronk corrobo-

rated Knowles’ testimony of success. In view of the large

number of sensitivity tests run by Ulrich, the curves from

which were all delivered to Cronk, we think that Cronk

must have known the nature of the test.

Tibbetts argues that the short acoustical test which

indicated that the operation’ of the T-reeds was acous-

tically indistinguishable from normal reeds is merely

a laboratory test insufficient to establish reduction to

practice because it didn’t prove whether tab adjustment

introduced mechanical strains or whether it would be af-

fected by eonatinte of ‘‘temperature, vibration ote. in

ae aA et SD Sh ee

IB. sss

App. 21

"normal Usage in a hearing aid.’’ We think, however, that

once Knowles established that fab adjustment provided

- reluctance adjustment and also that T-reeds operated in

the same manner as normal reeds, he had sufficiently

proved that the transducer would perform ii ai in:

its intended pues setting. 5

Tibbetts stints ‘to the fact that Knowles did not file a

patent application until ‘almost five years after the 1953

* reduction to practice as evidence that reduction to prac-

tice was not actually established. It is true that a long de- ©

lay in filing has been held to warrant the presumption

that experiments alleged to.be a reduction to practice were

actually unsuccessful. See Conner v. Joris, 44 CCPA 772,

'. 241 F.2d 944, 113 USPQ 56; Stewart v. Robinson, 19 CCPA

953, 55 F.2d 998, 12 USPQ 218 and Globe-Union, Inc. v.

Chicago Tel. Supply Co., 103 F.2d 722, 41 USPQ 366 (7th

Cir. 1939). , However, in a case like this where we are

éonvinced that there was a reduction to practice, we will

not hold otherwise because of the délay. To do so would

result in a double standard in an area where the standard

' is already elusive. We thus reverse the board’s holding

that there was no. reduction to practice by Knowles in 1953.

Léss of Right to Patent Under 35 USC 102 (9)

Having held that there was no reduction to practice, the

board did not consider whether Knowles had abandoned,

suppressed or concealed his invention from the time of re-

duction to practice in the latter part of 1953 until his filing

date of April 22, 1958. Tibbetts has raised that issue ~

throughout the interference and it must be decided. We

thus remand for consideration of the 35 U.S.C. 102(g)

issue.

Reversed And Remanded.

Yo NSE TI RIN ae sey

SY VET WP ns

.

OLRM ANT

Q eerreree

a.

App. 22

OFFICE OF THE CLERK | |

SUPREME COURT: OF THE UNITED STATES

. Washington, D.C., 20543

7 February 28, 1966

Re: TIBBETTS vy. KNOWLES,

No. 905, Oct. Term, 1965

(Filed wierd 8, 1967)

Dear Sir:

The Court today denied: the sibihinn for writ of certi-

_orari in the above-entitled case.

Kindly advise your associate.

Very truly yours,

John F.. Davis, Clerk

By: /s/ C. T, Lyddasee

Assistant

Wilfred S. Stone, Esq. ’

Stone, Zummer and Livingston

134 South LaSalle St.

Chicago, Tll. 60603

Airmail

z abn) La Tusa ew ue <

1 eet ti allcil

Paper No. 62

GWB/dt

IN THE UNITED STATES PATENT OFFICE

BEFORE THE |

BOARD OF PATENT INTERFERENCES

Patent Interference No. 91,812

- Knowles v. Tibbetts

(Mailed May 3—1966-U.S. Patent Office)

On Remand From The Court Of Customs And

Patent Appeals

This case has been remanded to us by the Court of

Customs and Patent Appeals for a consideration of whether

“or not Knowles had abandoned, suppressed or concealed his

invention from the time of his reduction. to practice in the

latter part of 1953 (as determined by the Court) until his

filing date of April 22, 1958, the Court having reversed

our holding that Knowles had not reduced the invention

- to practice, and according Knowles an actual reduction to

practice in late 1953.

Action on the remand: was ‘suspended when the party

Tibbetts filed notice that a petition for a writ of certiorari .

had been filed with the Supreme Court of the United States.

That petition was denied and we now take up the case for

: consideration of the matter indicated by the Court of

Customs and Patent Appeals in their decision remanding

the case to us. eee

”. In his brief the party Tibbetts asks for an aa hearing. ©

It is not our custom to grant rehearings and since the mat-

_ ter to be considered was briefed and argued prior to our

App. 24

decision in the first instance we find no reason here to de-

part from that custom. The requést is therefore denied.

The party Tibbetts filed a ‘‘Brief For Tibbetts On Re-

mand Re Suppression’’. The party Knowles filed a brief

in reply thereto and Tibbetts filed an answer to Knowles’

reply. —

As noted in Knowles’ brief, Tibbetts’ brief is directed

solely to the matter of suppression. There seems to be no

_ contention that Knowles concealed or abandoned the in-

vention although there is a certain relation between the:

three grounds set out as negative qualifications in 35

U.S.C. 102(g). It appears to us that-this limitation of the

issue is justified by the record. There is no testimony by .

any witness indicating the imposition of secrecy on any of

the Knowles employees with respect to the invention nor

to restrict knowledge of it to only selected persons. . Nor

is there any eyidence of confining embodiments of the in-

vention to an area access to which was restricted. Aban-

donment is negatived by the ultimate adoption of the in-

vention in transducers which were marketed.

It seems clear to us from the record as reviewed in the

decision of the Court of Customs and Patent Appeals, as

well as in our own original decision, that Knowles did’ not

_ utilize the invention in production until 1957 or 1958 be-

cause of his opinion that it would be uneconomical to dw

so. Tibbetts urges that Knowles was spurred into utiliza@

tion of the invention by the appearance on the market of

the Tibbetts device in 1956 and 1957, and that the Knowles

AY-AW models incorporating the invention were first sold

by Knowles in October of 1958 almost two years after the -

first Tibbetts models went on the market and after Tibbetts

had sold approximately 100,000 transducers.

This contention by Tibbetts requires the inference that

Knowles was aware of the appearance of the Tibbetts T-"

reed transducers and was spurred into activity thereby.

ee eT es

App. 25

While there is some slight basis for such. an inference we

do not believe the record -provides sufficient basis for an

award of priority in the absence of more positive evidence.

We have found no questions directed to any of the Knowles

witnesses seeking to determine whether or not they had

_ seen or heard of the Tibbetts devices during the period in -

question. The decision to finally use the invention might

logically have resulted purely from reduction in transducer

size in an attempt to compete with the transducers appear-

ing on the market of smaller size than those produced by

Knowles at the time. It is apparent from the record that

the need for the tab adjustment increased as the size of the

transducers decreased.

Tibbetts also urges that thé prosecution history of

Knowles patent 2,912,522 contains a paper (No. 6, amend-

ment B) dated May 29, 1957 including a drawing or sketch

showing a transducer allegedly like those sold by Tibbetts

to the extent of 16,651 by the end of May 1957. Knowles

has objected to consideration of this drawing’ on the ground

that it was not introduced in accordance with Rule 282 and

that he had no opportunity to cross-examine anyone on this

subject matter. ‘

We think that Knowles’ objection is well taken. The

identified patent was actually introduced in evidence by

both parties. Knowles introduced it as a printed copy as

his exhibit 2, and Tibbetts introduced a similar printed

copy by notice under Rule 282.: However, these printed

copies do not include the paper in question but merely the

final printed form of the specification, claims and draw-

ings. Rule 282 requires the filing of a notice,

specifying the record or the printed publication, the

page or pages thereof to be used, indicating generally

its relevancy, and accompanied by the record or au-

thenticated copy, or the printed publication or a copy.

tS VeltODE MB ss re

App. 26

In this case Tibbetts’ notice under Rule 282 merely lists -

Knowles patent No. 2,912,522 and several other Knowles

patents without identifying any particular page and> ‘was

accompanied only by a printed copy, which did not include

the paper in question. As an indication .of relevancy, the ~

notice includes only the following:

The relevancy of these patents i is to show that, while

not filing his interference application. for approximate-

ly five years after alleged conception, Knowles. filed

many other applications i in this aud ree countries

during that period.

It is therefore clear that in submitting his evidence Tibbetts

laid no foundation for a consideration of the amendment

. to which he now refers. We will therefore disregard this

contention, and in view of our conclusions above with re-

gard to the sales of Tibbetts’ devices, we are of the Opinion .

that the record before us does not provide sufficient basis

for a conclusion that Knowles was spurred into. activity

‘by the appearance on the market of the Tibbetts trans-_

ducers.

The Court of Custome and Patent Appeals in a recent

ease has held that although proof of spurring is not neces-

sarily a prerequisite to a holding of conggalment, it is

usually difficult to prove a case of concealment without it.

The Court then affirmed the decision of the Board of Patent

' Interferences holding that in that case, in the absence of a

showing of spurring, the remaining evidence was insuff-

- cient to support a holding of concealment. Dewey v. Law-

ton, 52 CCPA ; 146 USPQ 187; 347 F2d 629. We are

of the opinion that a similar holding must be made re-

garding the.contended suppression in th present case.

In view of: the above, priority of invention of the subject

matter involved is mney awarded to Hugh S. Knowles,

the junior aie

App. 27

Mr. La Verne Williams has been substituted for Mr. W.

H. Willner who has retired.

/8/ George W. Boys )

George W. Boys )

Examiner of Interferences )

)

“ /s/ Maurice A. Crews | Board

Maurice A. Crews - ) Of Patent

Examiner of Interferences ) Interferences

/s/ La Verne Williams | )

La Verne Williams )

Examiner of Interferences )

-

TO eT A RE 6 NNER RON NTE Fr

App. 28

In THE Unirep States Court oF

Customs anp Patent APPEALS

In the Matter of: fa drone )

Hueu §. Knowzss,” 3.

Junior Party-Appellant, +) Patent Appeal

Vv. _ ) Docket No. 7377

Georce C..TrssBetts, , )

- Senior .Party-Appellee ) —

(Filed June 29, 1966)

MOTION: TO. CONFIRM J URISDICTION

_ OF THIS COURT. . »

Now comes the party Knowles and moves as follows:

?

1. That this court affirm that it has sole jurisdiction of

_, the above-entitled cause,—after remand and after decision

by the tribunal below,—namely, the Board of Interference .

me Examiners of the United States Patent Office.

a That the party Knowles be restrained from seeking

and the Commissioner.of Patents from issuing any patent

under thé Knowles application. until final disposition of

~ this interference in Appeal No. 91,812 before this court.

3. That the filing date of the suit filed i in the United |

' States District Court for the Northern District of I]li-

nois, Eastern Division, No. 66 C 1077, on June 14, 1966, be

the filing date of the appeal to this court in order that

this court have jurisdiction in the event that a distriet court -

does not have jurisdiction.

This motion is denied June 30, 1966, Giles S. Rich, Judge.

4. That this motion either be “granted before the

July 5, 1966 date (the expiration- date of the sixty-day,

period from the decision of the Board of Interference Ex-

aminers of the United States Patent Office) without argu- —

ment, or that it be set for oral argument on that date be-

fore those judges of this court who are available. — .

&

a

ae

“App. 29

- support of the fovegoing motion, appellant Knowles oe

sets forth the following facts :

1.. The above-numbered appeal deriva donee an inter-

ference set up on the 29th day of March, 1961 by the United -

States Patent Office with Interference No. 91 812.

- 2. On'the 31st day of May, 1963, the Board of Inter-

ference Examiners ruled i in favor-of the party Tibbetts. A :

motion for réconsideration was denied, on lac 4,

. 1963. :

' 3. The party Knowles appealed to this court. on the

first day of October, 1963, and the case _was given the

above-identified No. 7377.

4. The party Tibbetts did not elect to compel Knowles

to go into a federal court: under 35 U.S.C. § 141. Had he

so elected, this case would have been brought in the United

States District Court for the State of Maine, the. scented

Pibbetts being located i in Carden, Maine.

5. ” (This court ruledsthat Knowles was the ; senior party,

but also found that tle Board of Interference Examiners

_ had made no finding upon abandonment, and that Tibbetts —

was entitled to such a finding. This court remanded the

case to the Patent Office. —

6. On the 13th day of January, 1966, the deity Tibbetts’.

filed a Petition for Writ of Certiorari to the United States

Supreme Court. . This petition was s denied on February 28,

1966.

7. The ieartise filed briefs under the remand and the

Patent Office ruled that Knowles had not abandoned, sup-

pressed or concealed the invention on the 3d day of May,

1966. Its decision is ‘attached.

th,

ty

9 eo a

App. 30

8. Tibbetts filea a complaint in the United States Dis-

trict Court for the Northern District of Illinois, Hastern

Division, on June 14, 1966, Civil Action 66°C 1077, Judge |

Decker, which was served on the parties Knowles . and

Knowles Electronics, Iné., on June 21, 1966. Count i of

this complaint asks that a patent be granted to Tibbetts

and not to Knowles; and Count 2 seeks a declaratory judg-

ment that any patent issuing from the Knowles application .

be declared invalid. !

9. Appearances for Knowles’ Electronics, Ine. and Hugh -

S. Knowles have been entered, bat they have taken no

further action to date. :

.

The party Knowles ‘submits that he appealed to’ this

court under 35 U.S.C..§141, and that his opponent Tib-

betts did not elect to-force Knowles ‘‘to have all further

_ proceedings conducted’’ in,a federal court, i.e., the South-

ern District of Maine at Portland, Maine; that 35 U.S.C. .

§146 is inapplicable ; that this court has ettin juris-

diction; that any .action by the United States District

‘ Court for the Northern District of Illinois ‘prior to July

5, 1966 is impossible because a motion and briefs cannot

be filed before said date. If the party Knowles is right

“that only this court has jurisdiction, Tibbetts possibly

may lose his right to appeal to this court on July 5, 1966.

Respectfully submitted,

Stone. ZumMer & Livineston

By Wilfred S. Stone

Wilfred S. Stone, for

Hugh S. Knowles

App. 31

PROOF OF SERVICE |

’ " e

Chicago, Minois

June 28, 1966

This is to certify that a copy of the foregoing Motion has

been served on the party Tibbetts and on the Commis-

sioner of Patents, Attention the Office of the Solicitor by

- Mailing a copy of each, postage prepaid to Charles S. cg.

Grover, Esq., Roberts, Cushman & Grover, 31 Milk Street, . |

- Boston,. Massachusetts 02109, and to The Commissioner t

of Patents, a D.C. 20231, this 28th day of J wae, | ,

1966.

/3/ Wilfred S. Stone

2

AE af thin a Caiitentis san

-" App. 32

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION |

: TIBBETTS Inpweraits, Inc., and

)

Georce C. Tisserts, . )

| Plaintiffs, *)

: vs. ) No. 66 C 1077

Know tes Execrronics, Inc., and

Hue 8S. Know zs, )

| Defendants. _)

e

MEMORANDUM OPINION "

Count I of this complaint raises a question of first im-

_ pression in the interpretation of the sections of the patent

- laws which provide for review of ‘decisions of the Board:

of Patent Interferences, Plaintiff filed this suit for re-

view under 35 U. S.C..§ 146. Defendant, the successful

party before the Board, moves to dismiss. The motion is

denied. |

Biden -ou an apifeation is made for a patent which

. would interfere with any pending application, or with

me unexpired patent,’’ the question of ‘‘priority of: in-

vention’’ must be determined. 35 U.S.C. § 135(a). This

question of “‘priority’’ requires resolution of the issues

of f‘cqnception,’’ ‘‘diligence,’’ ‘reduction to practice’?

and ‘‘abandonment.’’ A party first to conceive and dili-

_gently reduce to practice may nonetheless lose on the is-

sue of priority if he has concealed, abandoned or sup-

pressed his invention.

An ‘interference proceeding” is initiated and resolved

| by a special panel, the Board of Patent Interferences

(‘Board’). 35 U.S.C. §135(a). The Board’s decision

Be eee

App. 33

“awarding priority’? to one of the competing applicants |

is reviewable. through a comprehensive and, until today,

clear procedure. Appeal may be filed either in the United

States Court of Customs and Patent Appeals (‘““ECPA’?’),

under 35 U.S.C. §141, or, in the alternative, in a United

States District Court, under 35 U.S.C. § 146. Count I of.

this complaint was filed under § -146.

Resort to one forum plainly bars use of the other. Thus;

§ 146 states: 1s

‘‘Any party to an interference dissatisfied with the

decision of the board of patent interferences on the

- question of priority, may have remedy by civil ac- .

tion, if commenced within such time after such de- _— a

cision, not less than sixty days, as the Commissioner ~ a

appoints or as provided in section 141 ofthis title, --. -§

unless he has appealed to the United States Court of

Customs and Patent Appeals, and such appeal is

pending or has been decided.”’ 7

And, 28 U.S.C. § 1542 states: © |

“The Court of Customs and Patent Appeals shall

have jurisdiction of appeals from decisions .£: - —

‘“‘(1) the Board of Appeals and the Board of

Interference Examiners of the Patent Office as to oe

patent applications and interferences, at the in- of

stance of an applicant for a patent or any party to

a patent interference,-and such appeal by an ap-

plicant shall waive his right to proceed under sec-

tion 63.of Title 35.’ * :

‘It is clear that the reference to the old § 63 may be read

to include the present § 146. : .

Ae Oe a ee Senet

Other parties to the interference have the same choice -

‘provided for dissatisfied parties. Thus, § 141 states:

‘‘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

>

a

j a:

App. 34 —

Court of Customs and Patent Appeals, but ‘such ap-

peal 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 Commissioner that he

elects to have all further proceedings conducted as

. provided in section 146 of this title:”’ :

_-Amny party can bring the appeal to federal district court

and thereby bar resort to the CCPA.

Many characteristics of the two forums may influence a

party’s choice. One difference between them is particularly

; important: in district court new evidence can be introduced

while in the COPA it cannot. 35 U.S.C. § 146. A party

who wishes to bring in new evidence must remove the pro-

* ceedings to the district court.

Plaintiffs Tibbetts Industries, Inc., and George Tibbetts

(‘‘Tibbetts’’) and defendants Knowles Electronics, Inc.,

and Hugh.S. Knowles (‘‘Knowles’’) were parties to an

interference which was resolved by the. Board on May 31,

1963, with an’award of priority to Tibbetts.1 Knowles

appealed to the CCPA. Tibbetts also appealed to object

to the Board’s failure to make certain findings. The

CCPA reversed the Board, finding that Knowles was the _

‘first to conceive and reduce the invention to practice. How-~

ever, the case was remanded to.the Board to determine

whether Knowles, though prior, ‘had foreclosed a patent by

abandoning, ‘suppressing or concealing the invention. 35

U.S.C. § 102(g). This question was irrelevant as long as

Tibbetts was -held to be prior, and therefore the Board

- had ignored it. Given the CCPA’s reversal, the question

became of paramount importance. The Court said:

1 The individual and corporate party on each side are referred

to here as a single entity. The actions of each bind the other.

ss

ee a

App. 35

“‘Having held that there was no reduction to practice,.

the board did not consider whether Knowles had aban-

doned, suppressed: or concealed his invention from

the time of reduction to practice in the latter part of

. 1953 until his filing date of April 22, 1958. Tibbetts -

' * has raised that issue throughout, the interference and

‘it must. be decided. We thus remand for consideration . .

of the 35 U.S.C. § 102(g) issue.’’ |

On remand, the Board denied Tibbetts’ request for oral

hearing, considered ‘the previously ignored question and

awarded priority to Knowles. It is from this decision of

the Board that Tibbetts claims ‘a right to appeal in this

court pursuant fo § 146. The question is whether, when the

Board makes two separate’ decisions at different - times

involving different issues, a waiver of a § 146 suit as to

the first Board decision constitutes a waiver as to the

second decision as well. I think it does not. :

The statutory language does not preclude and slightly

favors Tibbetts’ right to sue here. No violence is done to.

§§ 141 and 146 by reading the word ‘‘decision’’ to refer

_ to every independent adjudication made by the Board.

Nothing in the statute requires a waiver following one de-

cision to reach.a-second decision in’ the same interference.

The statute speaks solely in terms of **decisions,’’ not inter-

ferences or proceedings.? It can hardly be debated that

the Board made two ‘‘decisions”’ in this case.

_ The legislative history favors Tibbetts’ right to sue here.

_ The purpose of requiring an election of remedies was to

foreclose redundant appeals. See Hoover v. Coe, 325 U.S.

- 79, 86-87 (1945). Permitting Tibbetts to sue here on the

* Under § 141, an appeal in the CCPA goes forward unless ‘a

party “elects to have all further proceedings conducted” in fed-

eral district court. However, the word “proceedings” in § 141

is clearly controlled by the prior word ‘‘decision” in: the section

. and is limited to proceedings on that decision.

6.

o> - + aul s one

Pini ite Siig Sai pheesr teat te dans in rere iin tenet on te 6 iru pas zhi

App-36 —

- Board’s second decision does not proliferate appeals since

there is certainly a right to one more appeal in this case

in some forum. The choice of this. one precludes later

, : resort ‘to the CCPA.

Sujt in federal district court was lis to save ‘ ‘to

%, litigants the option of producing new evidence in a court.”’

Hoover v. Coe, 325 U.S. 79, 87 (1945). The difficulty. with

_ Knowles’ reading of the statute is evident in light of this

provision. Following the first. Board decision, Tibbetts

saw no need to employ the special processes of this court.

-Tibbetts had won; evidence on questions of abandonment,

suppression and concealment was unnecessary. Tibbetts’

need for this forum became clear only later, after. the |

Board’s second decision; such a need could not have been’ |

discerned, except in pure prophecy, priér to that time. It

is unreasonable to attribute to Congress the intention to

- force a litigant to make his choice not only on the basis

‘ litigant’s. choice in light of the status of his case. There

is no reason to deny the benefits of that choice when condi-

tions have’ changed and the entire deéision-making process -

Dated: December 22, 1966.

of. present facts, but on uncertain future ones as well. The

statute cannot be read to give a waiver made in one set

of circumstances on one decision, binding effect in new,

radically different circumstances on another decision. Con-

gress must have thought that there were differences be- .

tween the two available forums which would influence a

has begun again.-on new questions.

For these reasons, Knowles’ motion to dismiss Count J

of the complaint is denied.

.

ENTER:

Bernarp M. Decker |

United States District: Judge

+ eT een

iar ase”

i: ie eee a App. 37

e

‘Mnited States On Court nf Appeals

| Sor the Srueathy Cirenit :

pean 1967 TERM AND SEssION

No. 16099

TIBBETTS Inpustaiss, Inc. and) Pe ape

Gerorce C. TrBBETTs, .| Appeal from the

Plaintiffs-Appellees,| United States Dis-

vy, _.. \ trict Court for the

are = 7 Northern District °

_Kwowtes Exzctronics, Inc. and | of Illinois, Eastern’

Huex S. Know gs, Division.

Defenidants-Appellants. |

November 29, 1967

Before Hesinves, Chief Judge, and ScHNACKENBERG and

; Famcump, Circuit Judges.

Husriwen, Chief Judge. The precise question for decision

. on this appeal can be best stated after a brief summary

of the prior proceedings had in the United States Patent

. Office, and thereafter.

George: C. Tibbetts and Hugh S. Knowles each filed

separate applications ‘in the United States Patent Office

’

App. 38 _ -

ie, ae

for a patent, stated in. general terms, on a.means of . |

-Inagnetically balancing the motor of a microphone or re-

ceiver. The Tibbetts application, serial No. 690,753, was’

filed August 28, 1957.. The Knowles application, serial

No. 730,082,. was. filed April 22, 1958.

The respective patent applications were placed i in inter-

ference pursuant to Title 35, US.C.A. § uahiids for the ;

determination of priority. of invention.

The Board of Patent Interferences iin priority

of invention to Tibbetts. It based its: award of priority

_on its holding that the junior party, Knowles, had failed

to prove a reduction to practice prior to the senior party’s

filing date. Having so held, the Board did nof reach or

consider Tibbett’s claim that Knowles had suppressed,

abandoned or concealed the invention.

Pursuant to Title 35, U.S.C.A: § 141, Knowles appealed

‘this decision to the United States Court ef Customs and

Patent Appeals, and Tibbetts filed a protective appeal

seeking affirmance and preserving alternate grounds for

: affirmance. The appeals related solely to the issues of con-

_ ception, reduction to practice and diligence.

. On appeal, the CCPA reversed the Board on the cat

of reduction to practice. However, it further held that

Tibbetts had raised throughout the interference the issue

of whether Knowles had abandoned, suppressed or con-

cealed his invention from the time of reduction to practice _

in the latter part of 1953-until his filing date of April

App. 39

22, 1958, and that issue must now be decided by the Board.

- Ht thus remanded the case to the Board for consideration ©

of this issue ‘as set out in Title 35, U.S.C.A. § 102(g).

Knowles v. Tibbetts, USCGPA, 347 F. 2d 591, (1965).

On remand; the Board’ of. Patent Interferences for the

first time considered the issues of abandonment, ‘suppres-

sion arid concealment., In.a second decision, after denying

Tibbett’s request for an oral hearing and considering only .

a closed record, the Board held tHat Knowles had not:sup-

pressed jhis invention and awarded priority to Knowles.

As will appear, this decision is the one under qiestion

before this court on the instant appeal.

‘Following the foregoing second decision of ‘the Board,

on Juné 14, 1966, pursuant to Title 35, U.S.C.A. § 146,

Tibbetts Industries, Inc. and George C. Wibbetts brought ©

this action in the United States District Court for the -

Northern District of Hlinois to review such second decision

of the Board. In Count.I, plaintiffs seek a judgment to

compel’ the issuance of the patent in question to. Tibbetts.

In Count Il, plaintiffs seek to declare invalid. the patent

issued to Knowles on the same invention.

Named as defendants in the: instarit daik: are Know ie.

Electronics, Inc. and Hugh 8. Knowles.

Following the filing of dis complaint, on June 29, 19667

Knowles filed an emergency motion in the CCPA asking

that court to confirm its sole jurisdiction in this matter.

This motion was summiarily denied by Judge Rich on June

30, 1966, through his handwritten notation on the original

petition. In short, this appears to have been an abortive

attempt #y Knowles to force this review before the CCPA..

Thereafter, on August 1, 1966, Knowles filed a motion

- to dismiss the complaint in this action. Knowles sought ©

dismissal of Count I on the ground that the district court

“

App. 40

lacked jurisdiction over the subject matter, claiming juris-

diction to. be in the CCPA under 35 U.S.C.A. § 141, since

it is alleged that Tibbetts waived his right to institute

the present action by filing a notice of appeal from the

first decision of the Board of Patent Interferences.

The grounds for dismissal of Count II are other than

those asserted against Count I. Count II is not before us

at this time and need not be further considered here.

The district court denied the motion of Knowles to

dismiss Count I. Knowles petitioned this court for leave

to appeal this order pursuant to Title 28, US.C.A. § .

1292(b). Upon proper. certification by the presiding dis-

trict judge, leave to appeal from such interlocutory order

was granted arid the matter is now before us...

It is clear that under 35 -U.S.C.A. §. 135(a), subject

to the conditions for patentability stated in 35 U.S.C.A.

§ 102(g), when two competing inventors file separate ap-

plications for a patent on a similar invention, the. first

to conceive and reduce the invention to practice is entitled

‘to an award of priority. and ‘the issuance of a patent,

unless he has abandoned, suppressed or concealed it. On

appeal to the CCPA, it was finally determined that Knowles

was the first to reduce to practice and that issue is no longer

before us. — ay: °

The relevant part of 35 U.S.C.A. § 146 reads:

'. “Any party to an interference dissatisfied with the

decision of the board of patent interferences on the -

question of priority, may have remedy by civil action,

if commenced within such time after such decision,

not less than sixty days, as the .Commissioner ap-

points or as provided in section 141 of this title, unless

he has appealed to the United States Court of Customs

and Patent Appeals, and such appeal is pending or has

been decided. * * *??. ,

~

App.41.:-:.

~ The relevant part of 28 U.S.C.A. § 1542 reads: *

_ The Court of Customs and Patent Appeals shall <a

have jurisdiction of appeals from decisions of :

(1) The Board of Appeals and the Board of Inter-

ference Hxaniiners of the Patent Office as to patent .

applications and interferences, at the instance of an

applicant for a patent or any party to a patent nter-

ference, and such appeal by an applicant shall waive his

right to proceed under section 63 of Title 35; * * *’”

The relevant part of 35 U.S.C.A. § 141 reads:

“¢* * * 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 sec-

tion 142 of this title, files notice with the Commissioner

that he elects to have all further proceedings conducted _

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.’’ :

It thus appears clear that appeal from the Board’s de-

vision in an interference proceeding lies either in the

CGPA, or by way of civil remedy in the federal district

court. It is also clear that neither party can compel the

other to accept CCPA review, but either party can compel...

the other to accept de novo review in the district court.

The precise question before us, as thé district court

stated in its memorandum opinion, ‘‘is whether, when

the Board makes two separate decisions ‘at different times -

_1Tt is understood that reference to § 63 now includes § 146 in

the present statute, hereinabove set out.

App. 42

involving different issuesy'a waiver of a § 146 suit as to

the first Board. decision constitutes a waiver as to the

second decision as well.’’ The trial court thought it did

,not. Tibbetts Industries, Inc. v. Knowles Electronics, Inc.,

D.C.N.D.IIl. E.D,, 263 F. Supp. 275, 277-78 (1966), Honor-

able Bernard M. Decker presiding.

The district court was of the view that this is a case

of first impression on this particular issue.

‘We quote with approval the following from J _ Deck-

- er’s memorandum opinion:

“The statutory language ; not paenern sad

slightly favors Tibbetts’ right to sue here. No vio-

lence is done~to §§ 141 and 146 by reading the word

‘decision’ to refer to every independent adjudication

made by the Board.. Nothing in the statute requires .

a waiver following’ one decision to reach a. second

decision in the same interference. The statute speaks

solely in terms of ‘decisions,’ not interferences or

proceedings.’ It can hardly be debated that the Beard ie

made two ‘decisions’ in this case.

: ‘Bhe legislative © history tonnes Tibbetts’ right to

sue here. The purpose of requiring an election of

remedies was to forecloge redundant appeals. See

_ Hoover Co. v. Cge, 325 U.S. 79, 86-87, 65 S.Ct. 955,

_ 89 L. Ed. 1488 (1945). Permitting Tibbetts to sue here

on the Board’s second decision does not proliferate ap-

peals since-there is certainly a right to one more appeal

in this case in some forum. The choice of this one

precludes later resort to the CCPA.

?Under § 141, an appeal in the CCPA goes forward unless a

party ‘elects to have all further proceedings conducted’ in fed-

eral district court. However, the word ‘proceedings’ in § 141 is

clearly controlled by the prior word ‘decision’ in the section and

is limited to proceedings on that decision,

- Board.

es arcs ig a inc tales nan

App. 43

‘‘Suit in federal district court was provided to save

‘to litigants ‘the option of producing new evidence

in a court.’ Hoover Co. v. (se, 325 U.S. 79, 87, 65

. S.Ct. 955, 89 L. Ed. 1488 (1945). The difficulty with

Knowles’ reading of the statute is evident in light

of this provision. Following the first Board decision,

Tibbetts saw no need to employ the special processes

of this court. Tibbetts had won; evidence on questions

' of abandonment, suppression and concealment was

unnecessary. Tibbetts’ need for this forum’ became

clear only later, after the Board’s second decision;

such a need could not have been discerned, except

in pure prophecy, prior to that time. It is unreason-

able to attribute to. Congress the intention to force

a litigant to make his choice not only on’ the basis

of present facts, but on uncertain future ones as

well. The statute cannot be read to give 9 waiver

made*in one set of circumstances on one ~ 2¢ision,

binding effect in new, radically different circumstances

on another decision. Congress must have thought

that there were-differences. between’ the two available

forums which would influence a litigant’s choice in

light of the status of his case. There is no reason

to deny the benefits of that choice when conditions

- have.changed and the entire decision-making - ‘Process

has begun again on new questions.”?

This becomes readily apparent in this case where it ©

appears that Tibbetts may have need to resort to evidence

now relevant in a de novo hearing in the district court

and could not make such showing on appeal on a closed

record in the CCPA. What’ may be readily apparent now

was not apparent prior to the second decision of the

ee ; $ " e °

We have carefully reviewed the several authorities cited

by Knowles, as well as his contentions asserted in support

of his arguments for reversal. We do not find the authori-

ties cited to be controlling here and we are not persuaded

bs asian ee ad kG

~~

‘ 4

1h ODE ADK SGM ie Ket A a ALE MeO *. ,

App. 44

by his arguments that the. district court was incorrect

‘in its holding.

For the foregoing reasons, and in reliance on the opinion.

of the district court, 263 ¥. Supp. 275, supra, the inter-

: seas 4 order appealed from is in all respects affirmed.

| | AFFIRMED. ..

A true Copy: | ; x |

‘Teste: : a

————

Clerk of the United States Court of

Appeals for the Seventh Circuit.

App. 45

- Calendar No. 1341

69TH C - : REPORT

24 Session | ___ SENATE _ ] Ne ust3

PROCEDURE IN PATENT OFFICE Bi

JANUARY 24, 1927.—Ordered to be printed

‘Mr. SHIPSTEAD, from the Committee on Patents, submitted the

following

REPORT

[To accompany S. 4812]

The Commits on Patents, to whom was referred the bill:

_ (S. 4812) amending the statutes of the United States as vo pro-

cedure in the Patent Office and in the courts with regard to the

° granting of letters patent for inventions and with regard to. in-

terfering patents, having considered the same, report favorably

thereon with the recommendation that the bill do pass with

* amendments. , me

“The bill has the approval of the Department of Commercé, as

will appear by the following letter, which is made a part of

this report: : , :

DEPARTMENT OF COMMERCE,

.OFEICE OF THE CHIEF CLERK,

ashington, December 20, 1926

HON. JESSE H. METCALF, -

Chairman Senate Committee on Patents, r

eae _ United States Senate.

' My Dear SENATOR: As requested by you, careful consideration has been

' given to the bill (S. 4812) for amending the statutes as to procedure in the

Patent Office and in the courts with regard to the granting of patents.

A report of Commissioner Robertson is appended hereto, aproving the bill.

This bill also meets the approval of the department, and I join in urging

its passage at the present session.

Yours faithfully,

‘ . HERBERT HOOVER,’

Secretary of Commerce.

DEPARTMENT OF COMMERCE, _ -

UNITED STATES PATENT OFFICE,

Washington.

(Memorandum for Secretary Hoove: )

Careful consideration has been given to Senate bill 4812.

For a quarter of a century efforts have been made to simplify the pro-

- cedure within ‘3 Patent Office with respect to appealed cases. The bill

Pe

ee : ‘ App. 46

under consideration makes this possible. It received practically the unani-

mous indorsement of the patent ‘and trade-mark section of the American

Bar Association at the Denver meeting and has also been favorably acted

upon by the Patent Law Associations of New York and Chicago.

+The bill also’ relates to appeals from the Patent Office and instead of

permitting a losing party in the Patent Office to appeal to the Couit of

Appeals of the District of Columbia and then start de novo in a United

States district court under ;section 4915 of the Revised Statutes and to

finally appeal therefrom, the bill provides that the applicant may appeal to

the Court of Appeals, or may file his bill in equity; but that he can not do™

both. I am inclosing a chart showing on one side the present course of.

- appeals and on the other side the proposed course of appeals.

I regard the bill as a great step forward in patent procedure and hope it -

will be pushed to passage at this session of Congress.

THomAs E. ROBERTSON, Commissioner.

DECEMBER 18, 1926.

PRESENT COURSE OF - PROPOSED COURSE OF

PATENT APPEALS PATENT APPEALS

. ——, re 3847

EXAMINER - 2

EXAMINER

- vy i at

APPEAL-TO BOARD OF . | *

EXAMINERS-IN-CHIEF | .

y

APPEAL TO NEW BOARD OF

APPEALS

IN PATENT OFFICE

Vv

APPEAL TO COMMISSIONER

! -OF PATENTS |

Vv ' ; Vv.

: APPEAL TO COURT OF APPEAL Bry In Equrry

APPEALS, D.C... . To CouRT OF Src. 4915

D. C.

Vv, * :

BILL IN EQUITY © °

SEC. 4915 e° +

APPEAL TO COURT OF

® _APPEALS .

APPEAL TO COURT

OF APPEALS ee

App. 47 ©

The amendments are as follows:

On page 4, line 1, strike out the words ‘“become final’’

and insert in lieu thereof ‘‘govern the further proceedings

in the case:’’ Z i !

On page 4, line 20, strike out the word ‘‘applications”’

and insert ‘‘application.’’

. On page 5, line 3, strike out the stars, and also the words

“For the’’ in line 25.

‘ On page 6, strike out lines 1, 2, 3, and 4; in line 18 strike

out ‘‘$10”’ and substitute ‘‘$15’’; after line 19 insert a new

paragraph: — : ¢

Sec. 14. That where the day, or the last day, fixed by statute for taking

any action or paying any fee in the United States Patent Office falls on

‘Sunday, or on a holiday within the District of Columbia, the action. may be

taken, or the fee paid, on the next: succeeding secular or business day.

On page 6, line 20, strike out ‘‘14’’ and insert ‘15.’

In the same line strike out the word ‘‘six’’ and insert in’

lieu thereof ‘‘two.’’ On the same page, line 22, after ‘ing,’ -

insert the words ‘‘and heard.’? In the same line, after

the word ‘‘or,’’ insert the words ‘‘pending before.”’

On page 7, line 1, after the word ‘‘Patents,”’ insert ‘‘or

for amendment or renewal of application.”’

- On page 7, line 2, after the word ‘“appeals,”” insert ‘‘and

other proceedings”’ 7

On page 7, line 2, after the word ‘‘force,”’ strike out the

words ‘‘prior thereto”’ and insert ‘‘at the time of approval

of this act as if such statutes had not been amended or ©

repealed.’’ : ” sieaag

The purpose of this bill is to lessén the ‘delays in the

Patent. Office, to simplify procedure in the Patent: Office,

und to simplify procedure in appeals from the Patent Office ’

to the courts. : MS ;

' The object of section 1 is to give an applicant only six

months to reply to an official letter instead of one year as

now. It sometimes happens that an application is acted

Seige 2d

App. 48

Pd

| upon a half. dozen or more times, and the applicant can now

wait one year to-reply to each official action, thus purposely

delaying: the: issuance of his patent since the term of his

patent does not begin to run until his patent actually issues.

Section -2 prevents an applicant who has already delayed

his application for four or five years prior to its being

allowed ‘from delaying it for two years additional after

allowance.. The amendment reduces the period of delay

from two years to one year.

Section 3 provides for a different course of procedure i in

appeals in the Patent Office. At present, there is an appeal

to five examiners in chief who are appointed by the Presi-

dent and confirmed by the Senate. If that appeal is unfa-

vorable, then the applicant’van appeal to the Commissioner

of Patents. Section 3 provides for combining the commis-

sioner and -assistant commissioners .with the examiners in

chief so as: to make only one appeal within the Patent Office.

Provision is made for the appeal. being heard by three

members of the board of appeals. The commissioner, or

one of the assistant cormmissioners, may sit with two mem-

bers of the board, and thus, by combining the commissioners

and the examiners in chief, two boards can sit simultane-

ously. This is vitally necessary since the. number of ‘ex

parte appeals has increased from 1 saad to 1,600 within. two

‘years. *

' Sections 4, 5, and 6 are made nevessary ie oe aa the

_ two existing appeals into one, as ‘set forth in section 3.

Section’7 repeals section 9 of the act of February 9, 1893,

since it is inconsistent with other sections of this act.

8 R—69-2—Vol 1-17 ae

Section 8 rewrites section-4911 of the Revised Statutes

so as to provide for a simplified appeal from the Patent

Office. Under present statutes an applicant whose case has .

been rejected or a losing party“in an intérference may ap-

peal to the Court of Appeals of the District: of Columbia ~

and then if he is dissatisfied he may start proceedings de

novo by filing a bill in equity in a United States district

. App. 49

court, under section 4915, and ffom the decision of that |

court he may appeal to.the court of appeals. This proce- -

dure makes for very vexatious delays and the object of the .

present bill is to permit one to have-the decision of. the

Patent Office reviewed either by the court of appeals or by

filing a bill-in equity; but not both. Therefore section 4911

has been rewritten to provide that an applicant may appeal

to the court of appeals, but if he does so he waives his right

_ to proceed under section 4915. Nevertheless, in order that

the other party may not be deprived from his remedy under

. Section 5915, it provides that he may serve notice upon the

one who is taking the’ appeal to the court of appeals which

would result in having the case transferred to the United:

States district court under section 4915.

Section 9 has been.amended to cure a defect in the present

law, but makes no change in the actual procedure.

Section 10 merely repeals obsolete law. :

Section 11 rewrites section 4915 to carry out the provi-

sions hereinbeforé’mentioned of permitting the case to pro-

ceed under section 4915. This. section also provides. for

procedure under such section. ,

‘Section 12. provides that when an action is brought under

section 4918 of the Revised Statutes the court may declare

either or both of the patents void, the present statute merely

reading that ‘either may be ‘declared void. =.=

Section 13 provides for the appeal fees in cases of appeal |

in the Patent Office.

Section 14 provides that when any action must be taken

or any fee paid within a certain time and that time falls

on a Sunday or legal holiday in the District of Columbia

the action may be taken or the fee paid on the next business

day. | ;

-

i GS bt i Acie le nde DN bel AED AE OO Rh NO een A's 0 ao Re netieer iwtan toning nk (ai ies Si ee

App. 50

| Section 15 sets forth when, the act shall take effect and

that it ‘shall not affect existing cases unfavorably.

‘One lawyer has expressed the fear that in providing in

lines 16-17, page 2 (sec. 482), that the board of appeals

shall have solé power to grant ‘‘rehearings,’’ the bill may

lessen the present supervisory power-of the commissioner, _

but it was agreed by_the other lawyers at the hearing, and ~

. the Committee on Patents concurs in this view, that the

supervisory power of the commissioner, as it has existed

for a. number of decades, remains. unchanged by the bill.

The present bill effects changes which have been the sub-

ject of discussion for over a quarter of a century. As far

back as 1900 the then Commissioner Duell (afterwards an

associate justice of the court. of appeals) recommended that

one appeal in the Patent Office should be abolished, and

10 years ago Commissioner Moore endeavored to obtain.

legislation to accomplish the same purpose.

The bar is now practically agreed ‘upon the present bill,

since it is sponsored by the American Bar Association and

is supported by the Amerigan Patent Law Association, the

w York, Chicago, Cleveland, and Boston Patent: Associa-

ios. It makes the biggest step in simplified. procédure

in the Patent Office for over 60 years, and your committee

believes that the bill should be passed at this session.

¢

%

App. af a 7

69ru Concress) § HOUSE OF - " . ‘Raponr

2nd Session { REPRESENTATIVES | No. 1889 |

m

AMEND STATUTES AS TO PROCEDURE IN.

PATENT OFFICE AND COURTS

ry

ad

_Janvary 28, 1927—Committed to the Committee of the Whole House on the

state of the Union and ordered to be printed

Mr. Perkins, from. the Committee on Patents, submitted

‘the following

REPORT

[To accompany H. R. 13487]

_ “The Committee on Patents, to which was referred the bill ©

(H. R. 13487) to amend the Statutes of the United States

as to procedure in the Patent Office and in the courts, with

regard to the granting of letters patent for inventions and

with ‘regard to interfering patents, having had the’ same

_ under consideration, reports it back to the House with

certain committee amendments and recommends that the

amendments be adopted and that the bill do pass.

_ ‘The bill is designed to remedy the procedure (a) in the

Patent Office and (b) in appeals from the Patent Office.

The procedure on appeals in the Patent Office is anti- rs

quated. It was established by an act passed in 1861. At

the time this act was passed the procedure was satisfactory

_ to the inventors and manufacturers. The number of ap-

plications: filed at that time was only 5,000 per year, and

the number of appeals about 400 per year. Applications

now amount to over 80,000 per annum and appeals to over

$900. ¢ *.

This antiquated procedure on patents in the Patent Office -

was from the examiner to (1) appeal to board of examiners

in chief; thence (2) to Commissioner of Patents; thence

(3) to the Supreme Court of the District of Columbia, by

~ .

rr @

%

App. 52

an act of 1893, changed to the Court of Appeals of the

District of Columbia.’ After these three appeals the de-

feated party could file a bill in equity under section 4915,

and if again defeated could appeal to the circuit court of

- appeals.

From this recital it will be obsérved that in patent cases

under this antiquated procedure, there are five appeals—

practically an unheard-of thing in the courts except in

patent cases’ The long drawn-out course of appeals per-

mitted by.the present procedure, of course, results in delay,

_ expense, and great uncertainty. It fosters appeals by those .

‘who can afford them to the disadvantage of those who can

not afford to appeal, and in some instances a poor applicant

can be delayed through five appeals.

The shortest time in which a case can go through the

entire course of patent appeals is from four to five years,

the time running approximately as follows: From examiner

to board of: examiners in chief at least nine months; from

examiners in chief to Commissioner of Patents six months;

from the commissioner to the Court of Appeals, District of

Columbia, from one to one. and one-half years; then if a

bill in equity, if filed, it may take a year in the District |

Court, and probably a year up to the time of final decision.

in the Court of Appeals. Of course, this may be greatly .

delayed and the time increased indefinitely.

_ The proposed bill has for its objective the simplification

and reduction of the number of appeals. It provides for

_ the creation of a new ‘‘Board of appeals’? m the Patent

Office, consisting of the examiners in chief, the’ commis-

sioner and assistant commissioners. Applicants may appeal

direct from the examiner’to this new board of appeals, thus

cutting out one appeal in the Patent Office. It then gives

the-option to the losing party to appeal to the Circuit Court

. of Appeals of the District of Columbia, or to file a bill in

equity under section 4915. If'the appeal goes to the Court

App. 53

of Appeals and is defeated, the applicant’s right to appeal

is ended. If on the other hand a bill in equity, if filed, under

section 4915, the losing party has preserved: his right to

again appeal to the Circuit Court of Appeals. :

It will thus be seen that under the proposed procedure

the defeated party has all the rights and remedies that he:

had under the old procedure, but the appeals are reduced

so that there are but three appeals. . ;

© No good reason now exists for the bringing of two appeals

in the Patent Office. The appellant has preserved all his

rights because the appeal proposed under the new act is to »

a board consisting of the two appellate tribunals under the

old act, namely, the board of examiners in chief, and the

Commissioner.of Patents. oe. |

The following diagram gives in pictorial form the present .

course of patent appeals and that proposed under the bill

in question, H. R. 13487. .

9

PE FORE TOP ROME ee me

le ick |

App. 54

_ PROCEDURE IN PATENT OFFICE AND COURTS

PRESENT COURSE OF PROPOSED COURSE OF

PATENT APPEALS PATENT APPEALS —

; Under H. R. 13847

EXAMINER §. 4812

EXAMINER

y

APPEAL TO BOARD OF

EXAMINERS IN CHIEF

y

APPEAL TO COMMISSIONER be

OF PATENTS APPEAL TO NEW BOARD OF

APPEALS

IN PATENT OFFICE

& a

- APPEAL TO COURT OF .

APPEALS, D. C.

ae y *t-

BILL IN EQUITY APPEAL ‘BILy In Equrry

SEC. 4915 TO COURT OF _ Sec. 4915

APPEALS~ -

: D. Cc. |

v tg ‘

APPEAL TO — OF APPEAL TO COURT OF

“ APPEAL . APPEALS

The old procedure was designed to work reasonably well in a

time when applications at the Patent Office amounted to a few

thousand a year and when appeals were relatively few. At the

present time the number of applications for patents every year:

‘amount to between 80,000 and 90,000, and the number of appeals

= the = of examiners in chief, 1,900, and to the commissioner

about 400. | }

_ The subject of changing the old: procedure has been under dis-

eussion for more than 25 years. Some 26 years ago Commissioner

Duell, afterwards justice of the Court of Appeals of the District

of Columbia, urged that one of the two appeals in the Patent

Office should be abolished, and later on Commissioner Moore

asked Congress to pass legislation to accomplish the same purpose.

__ The matter of procedure on appeals has been discussed by the

bar again and again and at the present time the bar is almost

°

a

" App. 55

unanimous in favor of the present bill, since it is advocated by

the American Bar Association, and has been approved by the

American Patent Law Association (the National Association of”

Patent Lawyers with members -in over 50 different American

cities) , as well. as the New York, Chicago, Cleveland, and Boston

Patent Law Associations. .

Taking up the bill section by section:

Section 1 reduces the time that an applicant is given to reply

to an official action from one year to six months. Frequently an

application is acted upon officially for half a dozen times or more,

and if the applicant:chooses to delay, the present statutes permit

him to wait one year to reply to each official action so that he can

purposely delay the issuance of his patent for a number of years.

In view of the fact that the term of a patent does not begin to run

uritil the patent actually issues, these ‘delays thus postpone the

. time when the patent expires. By reducing each period of delay

— i year -to six months, the delays will, of course, be

essened. ' ;

The present act reads: :

Sec. 4894. All applications for patents shall be completed and prepared

for examination within one year: after the filing.of the application and in

default thereof, or upon failure of the applicant to prosecute the same

within one year after any. action therein, of which notice shall have been

a the applicant, they shall be regarded as abandoned by the parties

ereto. ge

a> % -:

3

The proposed act reads as follows:

. SEc. 4894. All applications for patents shall be completed and prepared

for examinatioh within six months after the filing of the application, and in

default thereof, or upon failure-of the applicant to prosecute thé, same

within six months after any action therein, of which-notice shall have been

om @ the applicant, they shall be regarded as abandoned by the parties

ereto.

Section 2 of the act reads as follows:

Sec. 4897. Any person who has an interest in an invention or discovery

whether as inventor, discoverer, or assignee, for which a patent was ordered

to issue upon the payment of the final fee, but who fails to make payment

thereof within'six months from the time at which it was passed and allowed, ©

and notice thereof was sent to the applicant or his agent, shall have a right

to make an application for a patent for such invention or discovery the same

as in the case of an original application. But such second application must

be made within two years after the allowance of the original application.

But no person shall be held responsible in damages for the manufacture or

use of any article or thing for which a patent was ordered to issue under

such renewed application prior to the issue of the patent. And upon the

hearing of renewed applications preferred under this section, abandonment :

shall be considered as a question of fact,

slit Win A al tes

DE WDE Io tiene

@

App. 56

The proposed act changes the words “two years” in line 10 to

one year, and strikes out the last sentence, réading as follows:

Sec. 4897. Any person who has an interest in an invention or discovery,

whether as inventor, discoverer, or assignee, for which a patent was ordered

to issue upon the payment of the final fee, but who fails to make peymens

thereof within six months from the time at which it wes passed and allowed,

and, notice thereof was sent to the applicant or his arent, shall have a right

‘to make an application for a patent for such invention or discovery the same .

as in the case of an original application. But such second application must

be made within one year after the allowance of the original application. But

no person shall be held responsible in damages for the manufacture or use

of any article or thing for which a patent was ordered to issue;under such

renewed application prior to the issue of the patent. ;

Section 3 strikes out old section 482, which reads as follows: .

Sec. 482. The examiners in chief shall be persons of competent legal

knowledge and scientific ability, whose duty it s all be, on the written peti-

-tion of the appellant, to revise and determine upon the validity of the

adverse decisions of examiners upon applications for patents, and for re-

issues of patents, and in interference cases; and when required by the

‘commissioner they shall hear and report upon claims for extensions, and

perform such other like duties as’he may assign them.

and substitutes a new section 482, which reads as ‘follows:

Sec. 482. The examiners in chief shall be persons of competent legal

knowledge and scientific ability. The Commissioner of Patents, the first

assistant commissioner, the assistant commissioner, and the examiners in

chief shall constitute a board of. appeals, whose duty it shall be, on written

petition of the appellant, to review end determine upon the validity of the

adverse decisions of examiners upon applications for patents and for reissues

of patents and in interference cases, Each appeal shall be heard by at least

three members of the board of appeals, the members hearing such appeal to

be designated by the commissioner. The board of appeals shall have sole

power to grant rehearings.

It will be seen that the proposed new section combines the com-

missioner and his assistant commissioners with the examiners in

chief into one: board of appeals and ‘reduces the appeals in the

Patent Office from two to one. Under the present system it is’

utterly impossible for the present board of appeals to handle the - .

volume of work which in the last two years has increased from

1,200 to 1,600 appeals per annum.

Section 4 amends old: section 4904, which reads as follows:

Sec. 4904. 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 —- and patentee, as the case may be, and shall direct the primary

ner to proceed to determine the question of priority of invention. And

the commissioner may issue a patent to the party who is adjudged the prior

inventor, unless the adverse party appeals from the decision of the primary

examiner, or of the board of examiners in chief, as the case may be, within

such time, not less than twenty days, as the commissioner shall prescribe,

App. 57

The amendment merely strikes out of old section 4904 the

words “or of the board of examiners in chief, as the case may

be,” which elimination is made necessary by: the reduction of

the number of appeals. The amended section reads as follows:

Sec. 4904. 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, and shall! direct the.primary

examiner to pfoceed to determine the question-of priority of invention; And.

the commissioner may issue a patent to the party who is adjudged the prior

inventor, unless the adverse party appeals from the decision of the primary

examiner, within such time, not less than twenty days, as the commissioner

shall prescribe.

Section 5 amends section 4909 of the present act which reads

as follows:

Sec. 4909. Every applicant for a patent or for the reissue of a patent,

any of the claims of which have been twice rejected, and every party to an —

interference, may appeal from the decision of the primary examiner, or of

the examiner in charge of interferences in such case, to the board of

examiners in chief, having once paid the fee for such appeal.

The amendment consists merely in striking out the words “ex-

aminers in chief” and substituting the word “appeals” making.

the appeals to the board of appeals instead of to the board of ex-.

aminers in chief, as follows:

Sec. 4909. Every applicant for a patent or for the reissue of a patent,

any of the claims of which have been twice rejected, and every party to an

-interference, may appeal from the decision of the primary examiner, or of

the examiner in charge of interferences in such case, to the board of ap-

peals; having once paid the fee for such appeal.

Section 6 repeals section 4910 which reads as follows:

Sec. 4910. If such party is dissatisfied with the decision of the examiners

in chief, he may, on payment of the fee prescribed, appeal to the commis-

sioner in person. G . y

oBy reason of the consolidation of the appeals in the Patent

Office to one board of appeals section 4910 becomes unnecessary.

Section 7 repeals section 9 of the act of February 9, 1893,

which reads as follows: .

Sec. 9. That the determination of appeals from the decision of the Com-

missioner of Patents, now vested in the general term of the Supreme Court

ofthe District of Columbia, in pursuance of the provisions of section seven

hundred and eighty of the Revised Statutes of the. United States, relating to

the District of Columbia, shall hereafter be, and the same is hereby, vested

in the court of appeals created by this act; and in addition any party

aggrieved by decision of the Commissibner of Patents in any interference

case may appeal therefrom to said court of appeals.

The reason for the repeal of this section is that. section 4911,

which is also amended by this bill,: takes the place of this ‘re-

pealed section 9 of the act of 1893, °

~

FE PEI ee NT

EA I EAR

App. 58

Section 8 rewrites the present section 4911, which reads as

follows: : |

Sec. 4911.. If such party, except a party to an interference, is dissatisfied

with the decision of the commissioner, he may appeal to the Supreme Court

of the District of Columbia, sitting in banc. (See sec. 9, act of February 9,

1893, post, p. 23.) . :

The new section 4911 reads as follows: .

.

ppeal according to section 4912 of the -

Commissioner of Patents that he elects

to have all further proceedings conducted as provided in section 4915 of the

Revised Statutes. Thereupon the appellant shall have thirty days thereafter

within which to file a bill im equity under said section 4915, in default of

which the decisions appealed from shall govern the further proceedings in

the case. If the appellant shall file such bill within said thirty days and

shall file due proof thereof with th Commissioner of Patents, the issue of a

atent to the party awarded priorjty by said board of appeals shall be with-

eld paare the final determination of said proceeding under said

section . :

Section 4911 is repealed because the entire section is rewritten

vised Statutes, file notice with th

~ under the new act.

Section 9 of the bill amends the present section 4912 which

reads as follows: om

Sec. 4912. When an appeal is taken to the Supreme Court of the District

of Columbia, the appellant shall give notice thereof to the commissioner, and

file in the Patent Office, within such time as the commissioner shall appoint,

his reasons of appeal, specifically set forth in writing.

The new section 4912 amends the present section 4912 by

striking out the words “Supreme Court” and inserting instead .

thereof “the Court of Appeals” as fallows:

Sec. 4912. When an appeal is taken to the Court of Appeals of the District

of Columbia, the —_ ~— give notice thereof to the commissioner, and

file in the Patent Office, within such time as the commissioner shall appoint,

his reasons of appeal, specifically set forth in writing.

Section 10 repeals the last sentence of section 4913 because it

is obsolete and has not been in operation for the last five decades.

Sec. 4913. The court shall, before hearing such appeal, give notice to the

commissioner of the time and place of the hearing, and on receiving such

notice the commissioner shall give notice of such time and place, in such

manner as the court may prescribe, to all parties who appear to be interested

therein. The party appealing shall lay before the court certified copies of.

all the original papers and evidence in the case, and the commissioner. shall

furnish the court with the grounds of his decision, fully set forth in writing,

touching all the points involved by the reasons of appeal, And at the request

——__— oer _ ee nn eae

App. 59 ©

of my pew interested, or of the court, the commissioner and the examiners

may be examined under oath, in explanation of the principles of the thing

.for which a patent is demanded.

The amendment strikes out the last sentence, as follows:

SEC. 4913. The court shall, before hearing such appeal, give notice to the ©

commissioner ‘of the time and place of the hearing, and on receiving such

notice the commissioner shall give notice. of such time and -place, in such

manner as the court may prescribe, to all parties who appear to be interested

therein. The party appealing shall lay before the court certified copies of

all the original papers and evidence in the case, and the commissioner shall

furnish the court with the grounds of his decision, fully set forth in writing,

touching all the points involved by the reasons of appeal. :

Section 11. Section 4915 reads as follows:

Sec. “4915. Whenever a patent on application is refused, either by the

Commissioner of Patents or by the Supreme Court of the District of Colum-

bia upon appeal from the commissioner, the applicant may have remedy by

bill in equity; and the court having cognizance thereof, on notice to: adverse

parties and other due proceedings had, may adjydge that such applicant

is entitled, according to aw, to receive a patent for his invention, as specified

in his claim, or for any part thereof, as the facts in the case may appear.

And such adjudication, if it be in favor of the right of the applicant, shall

authorize the commissioner to issue such patent on the applicant filing in the

Patent Office a copy of the adjudication, and otherwise complying with the

‘requirements of law. In all cases, where there is no opposing party, a copy.

of the bill shall be served on the commissioner ; and all the expenses of the

: proqeting shall be paid by the applicant, whether the final decision is in

is favor or not.

The proposed section replacing old section 4915 reads as fol-

lows:

t>

. grevacion, however, to the right of the parties to take further testimony. —

Sec. 4915. Whenever a patent on application is refused by the Commis-

sioner of Patents, the applicant, unless appeal has beer taken from the

decision of the board of appeals to the Court of Appeals of the District of

Columbia, and such appeal is pending or has been decided, in which case no

action may be brought under this section, may have remedy by bill in equity,

if filed within six months after such refusal; and the court having cognizance '

thereof, on notice to adverse parties and other due proceedings had, may

adjudge that such applicant is entitled, according to law, to receive a patent

for his invention, as specified in his ¢iaim, or for any part thereof, as the

facts in the case may appear. And such adjudication, if it be in favor of the

right of the applicant, shall authorize the commissioner to issue such patent

on the applicant filing in the Patent Office a certified copy of the adjudica- —

tion and otherwise complying with the requirements of law. In all cases °

where there is no opposing party a copy of: the bill shall be served on the

commissioner; and all the expenses of the proceeding shall be paid by the

applicant, whether the final decision is in his favor or not. In all suits

brought hereunder where there are adverse parties the record in the Patent

Office shall be admitted in whole or in part,.or .motion of either party,

subject to-suéh terms and conditions as to the costs; expenses, and the

further cross-examination of the witnesses as the court may impose, without

he testimony and exhibits, or parts thereof, of the records in the Patent

Office when admitted shall have the same force and effect as if originally |

taken and produced in the suit, J ;

je eee ri.

~

App. 60: : -

Section 12 of the act amends section 4918 by inserting the two

words “or both.” Section 4819 reads: -

Sec. 4918. Whenever there are’interfering patents, any person interested

in any one of them, or in the working of the invention claimed under either

of them, may have relief against the interfering patentee, and all parties

interested under him, by suit in equity against the owners of the interfering

pres and the court, on notice to adverse parti:s, and other due proceedin

ad according to the course of equity, may adjudge and declare either of the

patents void in whole or in part, or inoperative, or invalid in any particular

part of the United States, oor gee | to the interest of the parties in the.

patent or the invention patented. But no such judgment or adjudication

_ shall affect the right of any person except the parties to the suit and those

‘ deriving title under them subsequent to the rendition of such judgment.

Section 4918, as amended, reads:

Sec. 4918. Whenever there are interfering patents, any person interested

in any one of them, or in the working of the invention claimed under either

of them, may have relief against the interfering patentee, and all parties:

interested under him, by suit in equity: against the owners of the interfering

atent; and the court, on notice to adverse parties, and other due proceed-

ngs had according to the course of equity, may adjudge and declare either,

. or both of th® patents void in whole or ir part, or inoperative, or invalid

in any particular part of the United States, according to the interest of the

parties in the patent or the invention patented; but no such judgment or

‘adjudication. shall affect the right of any person except the parties to the

suit and those deriving title under them subsequent to the rendition of

such judgment. : . a ‘

The object in amending this section is to enable the court to

declare both patents void where it appears to the court that both

are.void, whereas the old act merely gave the court the right to

declare one void. = ~

Section 13 changes the Schedule of fees found in section 4934

because there is now to be only one appeal provided in the Patent .

Office instead of two. The present fees are not sufficient to pay

-the cost of running the present appeal board, and hence the fees

have been increased to $15 for an appeal to the board of appeals

in ex parte cases and $25 in interference cases. The present

schedule of fees reads as follows: f

Sec. 4934. The following shall be the rates for patent fees:

. * * * - e

On an appeal for the first time from the primary examiners to the exam-

_ fners in chief, $10.

2 every appeal from the examiners in chief to the commissioner,

The new schedule of fees reads as follows:

Sec. 4984. The following shall be the rates for patent fees:

* * * e. |. ‘rt *° *

On an appeal for the first time from the primary examiner to. the board

of appeals, $15. On every appeal from the examiner of interferences to the

board of appeals, $25. * * * ;

.

A

App. 61

| \

if ’

Section 14 is an entirely new ‘section and provides that when

the time for taking any action or paying any fee falls on a Sun-

Sec. 14,. That where the day, or the last day, fixed by statute for taking.

any action or payifg any fee in the United States Patent Office falls on

Sunday, or on a holiday within the District of Columbia, the action may be

taken, or the fee paid, on the next succeeding secular or business day. .

% ad

Section 15 states the date when the act shall take effect and

provides that it shall not affect existing cases unfavorably.

_ SEC. 15. That this act shall take effect two motiths. from its approval; |

. but it shall not affect appeals then pending and heard before the examiners

in chief or pending before the Commissioner of Patents or in the Court of

, Appeals of the- District of Columbia, and that in all cases in which the time

under the statutes in forces at the time of approval of this act as if such

_Btatutes had not been amended ‘or repealed. 7,

ae tanlaa hn ii a

App. 62

Bates Mfg. @o. v. United States, 303 U.S. 567

Mr. Justice BLACK DELIVERED THE OPINION OF THE CouRT:

~The Revenue Act of 1926 provides that ‘‘No suit...

shall be maintained in any court for the recovery of any

interpal- -revenue tax alleged to have been sete etl or

illegally assessed or collected, . . . unless such suit .

is begun within two years after the’ disallowance of .

‘such claim...” —

The Tucker Act of March 3, 1887? as amended, gives

concurrent jurisdiction to the District Courts and the Court

of :Claims in suits against the United States jncluding

those for recovery of erroneous or illegally collected taxes.

Section 5 of the Tucker Act requires-a plaintiff bringing ~

suit against the government in the District Court to **file |

a petition, duly |verified rwith the clerk of the respective

court having jurisdiction of the case.”’ Section 6 ‘requires’

“that the. plai tiff . ‘ . cause a copy of his ia soe

to be served upon the district attorney . -, and... mail

a copy ... to the: Attorney General . . .', and cause to

be. filed with the clerk of the. court . a3 . affidavit of such .

service and . - mailing ..;% .

March 29, 1927, the petitioner’ S’ dlaim. for tax réfund

was disallowed. March 21, 1929, within two years after

the disallowance, a duly verified petition was filed in the

District Court claiming the refund. March 25, 1929, two

years and four days after the disallowance, the petition

"was served on the. United States Attorney and mailed to

tlie eiacacsered General.

1¢, 27, 44 Stat. 9, § 1113.”

2¢, 359, 24 Stat. 505; 506.

3U. §. C. Title 28, § 41 (20), (Judicial Code § 24 (20) as,

' i

ae

App. 63

The District)Court held suit was not. “begun”? by filing

the verified_petition and dismissed the cause of: action.‘

The Court of Appeals’ affirmed.®

& It is conceded that suit in the Court of Claims is “be-

gun’’ when the petition is filed. Yet, it is insisted that

suit is not ‘‘begun’” in the District Court when the petition

is filed although the Court of Claims and the District

Courts: are given concurrent jurisdiction by the Tucker

_ Act. Consideration of -the history and language of the —

statute leads us to a different conclusion. - :

Section 10 of the Act of March 3, 1863,° provides “That —

every claim against the United States, cognizable by the

. Court of Claims, shall be forever barred-unless the ——

‘ setting forth a statément of the claim be igaes . within

six years after the claim first accrues... 7? .

When the Tucker Act in 1887 greatly expanded the

jurisdiction of tle Court of. Claims and gave District

Courts concurrent: jurisdiction in all cases involving cer-

. tain amounts, its limitation in both the Court of Claims a

and the District Courts provided:

RR Le eee ee

‘* .. + no suit against the Government of the United

. States, shall be allowed under this act unless the same

» Shall have been brought within six years auc the right.

accrued . “i ’

The eubitatiial rights of claimants‘ are to be governed

‘alike whether suit is brought in the Court of Claims: or

the District Court. The author of: the Tucker Act in

declaring the statute of limitations applicable alike ‘‘to

“7 or all’’ of the cases arteing under the Act drew no

_ £19 F. Supp. 526.

593 F. (2d) 721.

* ©12 Stat. 765, 767.

Se te ee ee

| ape be.

distinction between nite: beosatt in the District Court

and in the Court of Claims.’

The purpose of giving the District Courts concurrent

jurisdiction ‘with the Courts of Claims was to provide

additional opportunity for the consideration, and deter-

mination of claims that had ‘‘long pressed upon the con-

sideration of Congress’” and to permitsuit to ‘‘be brought

in the District where the parties reside.’ After discussing

the benefits of previous legislation creating and extend-

_ ing-the jurisdiction of the Court of Claims, the Committee

on the Judiciary reported to the House:

‘*The history of this legislation and its results have been

given to show how much of benefit has been done in the

satisfactory decisions of claims against the Government

and in relief of-the Congress. But it has long been felt

that the benefits could be made much greater by extending

the jurisdiction of the Court. ... It is needless to say

more than has already been intimated as to the general

policy of this legislation. The large mass of business

now before Congress growing out of private claims con-

sumes its time year after year in committee work, rendered

useless by the lack of time to consider and pass upon

them. Just claims are painfully déferred without interest,

and the credit of the Government, so strictly upheld upon

its bonded debt, is justly-censured in neapaes to its honest

private claims.’’®

7 Congressional Record and Appendix, 49th Cong., 2nd Sess.,

’*March 3, p. 2679.

8 House Report No. 1077, 49th Cong., Ist Sess., by Mr. Tucker

on the Tucker Bill.. aa

® Congressional Record and Appendix, 49th Cong., 2nd Sess.,

March 3, p. 2679.

10 House Rep. No. 1077, gre, PP. 3-4,

e

App. 65

In response to the. needs disclosed by this report Con-

gress passed the Tucker Act, manifestly intending to pro-

vide adequate opportunity for expeditious and orderly. de-

termination of claims against the Government. This Act

not only expanded the jurisdiction of the Court of Claims,

but; for the first time, gave District Courts general au- .

thority to hear and determine claims against the Govern-.

ment. Relief of existing claim congestion and prevention -

of future congestion obviously demanded an integrated

Jurisdictional. plan by which the Court of Claims and ~~

District Courts could afford equal opportunities for ex-

peditious and fair trials of like claims within the juris--

dictional amount of the District Courts. The erection of

barriers to recovery in the District Courts which did not

exist in the Court of Claims would have tended to defeat

the prime objectives of the Act. Uniformity and equality

in substantial rights and privileges—for claimants in both

forums—were essential features in the system. Distinc-

tions between the opportunities for recovery afforded in

the two forums would have tended to mar the symmetry |

of the plan and to impair its effective and successful —

operation. As to substantial rights, Congress evidently

meant to give claimants an identical status in both Courts

where the amount. in controversy was included in the

jurisdiction of both. We find no support in the background

or objective of the Act for a construction under which a

claimant’s rights would be preserved by filing a petition

in the Court of Claims, but would be lost—without addi-

tional action—in the District Court.

As said by this Court in United States v. Greathouse,

166 U.S. 601, 606: | :

66

Courts of the United States should be different from that

applicable to like suits in the Court of Claims.’’

ba ede iN hs Sella file « bi Wey Rene

. it was not contemplated that the limitation

upon suits against the Government in the District...

Decne ee eee ee eS Ee Ee Fee

Pe ict ain Bhat ay ne Rane et as Ae ak

App. 66

As used in this statute the word:‘‘begun’’ should be

given its ordinary and accustomed meaning. To “begin

is.to start; to institute; to initiate; to commence. This

suit was begun—within two years after the refund claim

‘was disallowed—when the petition was filed in court in

good faith. Notice was mailed the Attorney General and

the District Attorney was promptly served—both within

four days after the verified petition was filed. Under these

circumstances, we do not consider what would be the effect

of lack of diligence in obtaining service."' The judgment

in the court below was not in harmony with the views

here expressed and is’

Reversed.

. Mr. Justice Carpozo and Mr. Justice Rezp took no

part in the consideration or decision of this. case.

11 Compare, Linn & Lane Timber Co. v. United States, 236 US.

574, 578.

7

App. 67

_ Chase et al. v. Coe, Com’r. Pats., 122 F.2d 128, 49 USPQ 590.

COURT OF APPEALS

FOR THE DISTRICT OF COLUMBIA

No. 7685 _ Decided May 26, 1941

Before Groner, Chief Justice, and Vinson and Epcerton,

Associate Justices.

Groner, Chief Justice: |

This is an action brought under R. S. 4915.1 Appellant

- George C. Chase was the applicant for a patent. Monroe

Calculating Machine Company (the other appellant) is —

his assignee. The Chase application was involved’in an

interference with an application of Harold T. Avery. The

Patent Office. awarded priority to Chase and—as the

result of a previous decision of the Court of Customs

and Patent Appeals—held against Avery’s contention

that there was an estoppel against Chase as to the claims

in issue, Avery then in turn appealed to the Court of

. Customs and Patent. Appeals. Chase made. no objection

_to the appeal proceedings being conducted in that court

and took no action, as he might have done, to have

135 U.S.C. A. 63.

*... If any party to an interference is dissatisfied with the

decisiéa ‘of the board of interference examiners, he may appeal

to the United States Court of Customs and Patent Appeals, pro-

vided that such appeal shall be dismissed if any adverse party to

such interference shall, within twenty days after the appellant

shall have filed notice of appeal according to section 60 of this

title, file notice with the Commissioner of Patents that he elects

to have all further proceedings conducted as provided in section

63 [R. S. 4915] .

R. S. 4911, as onenied by Act of March 2, 1927, c. 273, See. 8,

44 Stat. 1336; March 2, 1929, ¢. 488, Sec?2, 45 Stat. 1476; Aug. 5,

1939, c. 451, Sec. 3, 53 Stat. 1212; 35 U. S. C. A. 59a:

a |

Seite tobeee.,

App. 68

the appeal dismissed and the challenge of the Patent

Office’ decision heard only in a suit in equity in the.

District Court under 4915. He was content to have the

appeal proceed in the Patent Appeals Court, for on the ~

former appeal, to which we have referred, taken by him -

to that court—and which arose out of a prior interference _

on the identical claims in issue here and which involved —

also the identical legal question in issue in the later appeal

—the Patent Court had decided the question in his favor,

as the result of which the Patent Office, which had formerly

rejected his claims, had held he was entitled to them. On

‘the appeal of Avery from the Patent Office decision, Chase ~

doubtless anticipated that the court would adhere to its

former view. But the majority of the court, after elaborate

discussion of the point, held the former conclusion to be

error, and decided the estoppel question, on which it had

first ruled in favor of Chase, this time against him. The

Patent Office, under its duty to conform to the court’s opin-

ion, thereupon rejected his claims. And so it appears that.

Chase has twice chosen to have the Court. of Customs and |

Patent Appeals determine his right to a patent on the

claims in issue here, first by his direct ex parte appeal,

and second, by his failure to exercise his privilege to have

Avery’s appeal proceed under R. S..4915. All of which |

brings us to the question we have to decide, namely, |

whether in an interference proceeding between two appli-

cants for a patent, the applicant (Chase) who was success-

ful in the Patent Office but unsuccessful in the Court of

Patent Appeals, to which the other applicant (Avery)

appealed without objection on the part of his opponent,

e

App. 69

may thereafter again | have the entire question reviewed

in a proceeding under R. S. 4915. The District Court held

against the right, and dismissed for lack of jurisdiction.

The question is not new, -and:we had assumed that what ©

we had already said on the subject would be considered as

settling the point. For instance, in Jensen v.. Lorenz, 92

F. 2d 992, 68 App. D.C. 39, certiorari denied 302 U.S. 751

‘we said of R. S. 4911 that,? when ¢onsidered in connection

with R. S. 4915,‘ it is evidence of the intention of Congress

to require an election by the party as between the two

remedies offered to him; the one,,an appeal to the Court of

Customs and Patent patent the other, a suit in equity

under R. S. 4915; and that when’ an election is made and

there -is no protest by the adverse party, it is to be final.

‘We said as much in United States v. Coe, 95 F. 2d 347, 68

App. D.C. 218 and in Gams v. Coe, 105 F. 2d 46, 70 App.

D.C. 167. The Second Circuit in Bakelite Corporation v.

_ National Aniline & Chem. Co. 83 F. 2d 176, reached the

Same conclusion, and there is a further discussion by that

court of the problem, though under different circumstances,

in Wettlaufer v. Robins, 92 F. 2d 573, and likewise a review

of the legislative history of the several sections,—all of

which, we think, confirms the view we have hitherto ex-

pressed. —

3 A party in an sutartiwenes after an appeal by his adversary to

the Court of Customs and Patent Appeals shall have the right to

have the appeal dismissed and the proceedings consncted under

R. S. 4915.

* When a “patent is refused, the applicant, “unless appeal has

been taken to the United States Court of Customs and Patent

Appeals . . . in which case’ no action may be brought under this

section .. .” - S. 4915, as amended).

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App.70__

But appellant says that the phrase ‘‘all further pro- ~

ceedings’’ in R. S. 4911 refers only to further proceedings

in interference and not to subsequent ex parte prosecutions

of the application of either party to the interference. From

this stated premise, he deduces the conclusion that his

failure at the time of. the appeal by his adversary to

elect to have ‘‘all further .proceedings’’ conducted in ac-

cordange with R. S. 4915 does not, after the conclusion

of the appeal proceedings, bar him from pursuing his.

equitable remedy under the latter section. He says also

_ that the Court of Customs and Patent Appeals is merely

a part of the administrative machinery of the Patent Office

and that its decisions bind only the Office and may be

_ reviewed in an equity court at the instance of the losing

party in a proceeding subsequently. begun under R. S.

4915. And; finally, he says. that in any event his present

action is not really an appeal from the decision of the

Patent Court but a new and independent proceeding arising

out-of the refusal of the patent, which the statute pro-

vides may. be submitted to a District Court on a new

record, and that a new and different finding in that court:

is not a reversal of the decision of the Patent Court.

We have given careful consideration to these theories,

.and we are of the opinion they cannot be sustained. Both

the history of the court review sections of the patent.

statute and the language of the several sections clearly

indicate the purpose of Congress to require a defeated

applicant to elect between an appeal to the Court of

Customs and Patent Appeals and a suit under R. S. 4915,

but in no case to have both. And in an interference case

the limitation applies equally to his successful opponent.

The latter’s right to have the proceedings in equity is

preserved by the provision in R. S. 4911 authorizing ‘him

to have the appeal dismissed and to require his adversary

to resort to R. S. 4915. Nothing could be fairer than this.

App. 71

In short, the right to appeal to the Court of Customs and

Patent Appeals is an optional right, and election to pro-

ceed there must be mutual, and where this happens, it

confines all further proceedings to that court. If it were

otherwise, the obvious purpose of the amendment of

1927,° to reduce the number of appeals in patent appli-.

cation cases, would be nullified and litigation would be

prolonged. beyond reason. And, in addition to this, the

jurisdiction of the Court of Customs and Patent Appeals,

which includes the power to review decisions of the Patent —

Office and affirm, modify, or reverse the same (Sec. 194,

Judicial. Code; R. S. 4914), and to certify its decision to .

the Commissioner to the end that it shall **govern the fur-

ther proceedings in the case’’, would become a shadow .

without substance or being..” And this, we think, was not

the purpose Congress had in view. :

The ingenious argument, of counsel in this respect is

well done, but we are unable to find any legal or logical

basis on which to sustain it. We think, as we have said ‘

in our former opinions, that‘the decision of the Court of

Customs and Patent Appeals, after submission ‘of the

case to it without protest, is conclusive as to all the matters

adjudicated by it.. The anomalous procedure of a new

appeal through an equity proceeding never was intended

and, as we have already suggested, would defeat the pur-

pose of the 1927 amendments to R. S. 4915, which was to

limit resort to that section to cases in which the option

to go to the Court of Customs and Patent Appeals had

not been availed. of. .

| Affirmed.

5 See footnote 2.

ware

f i | App. 72

Taylor et al. v. Marzall, Comr. Pats., 196 F’. 2d 592,

, _ 93 USPQ 127 :

COURT OF APPEALS,

DISTRICT OF COLUMBIA

No. 11141 . : Decided Apr. 17, 1952

¥

Before Evcerton, BazeLon and WasHINGTON,

Circuit Judges.

Epvcerton, Circuit Judge:

Appellant Taylor was the successful party in a Patent

Office ‘interference proceeding involving one Josserand.

: Josserand appealed to the Court of Customs: and Patent

Appeals. That court reversed the Patent Office. Josserand

v. Taylor, 138.F.2d 58, 31 C.C.P.A. (Patents) 709. Taylor

afterwards filed in that court a petition, based on newly

discovered evidence, which the court said was ‘‘in effect

‘a bill of review or an application for leave to file a bill of

review in the Patent Office, it. being claimed that the party

Josserand perpetrated a fraud upon this court in the in-

terference proceeding in which priority of the invention,

defined by the count in issue, was awarded to him.’’

Josserand v. Taylor, 159 F.2d 249-250, 34 C.C.P.A. (Pat-

ents) 824: The Court of Customs and Patent Appeals

found that Taylor had failed to show ‘‘that any fraud was

committed by appellant . Josserand as to any material is-

sue’’ in the interference proceeding. 159 F.2d at 256. Ac-

eordingly the court. denied Taylor’s petition.

Taylor filed amended claims in the Patent Office. These

‘claims are plainly not patentable over the claims involved

in the interference proceeding, and were rejected. The

Patent Office refused to consider the evidence of fraud

“ TO ee

offered by Taylor. The District-Court dismissed, on the

ground of res judicata, appellant’s bill in equity subse-

quently brought under R. 8S. §4915, 35 U.S.C. § 63, to

obtain a patent on the amended “me. We om .

court was clearly right.

J osserand’s appeal to the Court of Customs and

Patent Appeals was taken under R.S. § 4911, 35 U.S.C.

§ 59a. By the express terms of*that section that appeal _

would have been dismissed if the appellee there, appellant

here, had elected ‘‘to have all further proceedings, con-

ducted as provided in section 63 of this _title’’, ie. by a

bill in equity in the District Court. By not doing that, the. |

present appellant chose-to have the dispute between him

and Josserand settled in the forum that Josserand had

chosén, which: was the Court of Customs and Patent Ap-

peals. It is now too late to choosé the District Court.‘ The

appellant says that the™Court of: Customs and Patent

Appeals, despite its broad language which we have quoted

above, could not consider ‘‘intrinsic fraud’’. However that

may be, that court’s original decision in Josserand’s favor

remains in effect. And‘‘‘The decision of the Court of---—~

Customs and Patent Appeals, after submission of the case

to it without protest, is conclusive as t6 all the matters —

adjudicated by it.’? Chase v. Coe, 74 App. D.C. 152, 154,

122 F.2d 198, 200. |

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