# Appendix — Knowles Electronics, Inc. v. Tibbetts Industries, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385603_1163%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1968 - **Citation:** 390 U.S. 953 ## Text 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 Pee ee 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?' ‘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 % -: 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). > Oe ae re ee LON nab RE INC IA Basin ng Rene RO aI G MMeiy Be NS ak MENS enn ee 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. | y init aX a Daan --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385603_1163%3A2. Public record. Not legal advice.