Petition for Writ of Certiorari — Aktiebolaget Flymo v. Cody

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ae. IN THE :

Supreme Court of the United

-Ocronea TERM, 1971. a

= 71-958 |

_—AKTEEBOLAGET FLYMO, ET AL., Petitioners,

° Vv. . % ; | ‘i

". Joun F. Copy, er au., Respondents, —

PETITION FOR WRIT OF CERTIORARI TO THE’ |

UNITED STATES COURT OF APPEALS FOR THE

DISTRICT OF COLUMBIA CIRCUIT iS.

‘ LAURENCE R. Brown |

1066 National Press Bldg. |

Washington, D.C. 20008.

ek Attorney for Petitioner i;

Of Counsel:

EvuceEne M. Bonp | 8

2001 Jefferson Davis Highway ' i ae

Suite 1105: | a

Arlington, Virginia 22202 "2a

-Press or Bykon S. ADAMS PRINTING, INc., WASHINGTON, D. C.

Nei rneic : : :

INDEX : Z —

ee Page

This Orinion Bevow ree ae Sasa Seeds Ba rte a Pade mgt iste

JURISDICTION 5.0 8...0.- Peer wiva oniieensseaes too a

QUESTIONS PRESENTED POI Review Seer eee eka sea 2°

Sravwres’ ani La ws INVOLVED ........ ; as eyeies 3S

Srarementt on THe CASE 6 Rey eee nee Gece tance 40

Anat MENT —— REASONS FOR Grastise THE Ws wn \ of tar

A. importangs OF the Cane .0..e osc ccadees *y ss

-B. Uniformity of Decisions and Confliets of Law .. 7° 8.

. Seope of Jurisdiction of the Federal Cireuit /

Courts in Considering Questions of Fact and

Not Questions of Law a * Pxeeyeeonee aurea

CONCLUSIONS eoriees a rr rare esegeepeeees EL.

‘APPENDIX ‘ a: “i fi’.

fourt of Appeats Decision 23,979 ca

September 9, 197]°....... Bie ee ere bvegetunie

District Court Decision, Civil Action 1654-67

June 19, ais Cnkgeeeewtute sana aées o Seas Gee: =

Court of pene ils. Orde T Denying Rohe: ring | Sy

November 2, FOIE... ins vases ees le eee

Patent Office Decision. tat. 94, 824 J : ens

Marek 23,-1967 .2. 065.568.5645; Se

‘Patent Office Reconsideration Int, 4, 824

* MOM DT oko ice eee es Sa rer wKe mes ‘Ala.

DahIman Patent 3,110,996 _

November 19, 1963... 0... ee Eee re .. Ba -

Court of Appeals Order of 90 Day Stay | aes

- December 15, 1: NA he Rar eeeiain Ce err 47a

‘

“il a Index Continued | | <y

LIST OF AUTHORITIES CITED Se

an Page *

Dobson v. Commissioner of Inte rnal Revenue (194: ty,

820 US 489, OF RY. BID ow cece cee eens ks aoe

Interctate Commerce Commission v. Union Pacific Rail

oad Co, (A912), 222 US DAL, S2S.CL 108 LL... 7,8.

Moraga. Daniels, 1hb3 US 120 (ISM%4) 2.6 e. Ue ageeepaes 3,4,5,8

“National tador Retations Bd. vy. Waterman SS Corp...

BOO US 206.60 SCL AOR eee -, 10

Phillips v. ommisstoner of Internal Revenue (1 O81), |

Bee Pas asd, SD S.C. GOS 22... SiGe Sie, eer ap yar ‘7,8

Radio. its. “poration of America we Radto Engineering

Laberate PLES; Tne., i ot ri 2), 66 FL. 708, seek ees 9)

STA’ arya:

Re ea xen ech oo ae

Publie Law 89-487, So Stat. 250 POP nae rn 34,9

35 USC 146 ....,...- +--+. iy Krodange eee Sis ..4, 10

PUBLICATIONS

Gerard C. Henderson, The- Federal Trade Commission,

Yale University Press’ (A924) pp. 92-102 2.2.6... 6.

f°

eee THK

posse Court uf the Vnited States

OCTOBER Pak .M, 1971

AK KBOLAGET KLYMO, BT An, Pelitioners,

J OWN. If, Copy, BT ALS Respondents,

Sma

- PETITION: FOR’ WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

| DISTRICT OF COLUMBIA CIRCUIT

eed

sevibieine: the seein nt of the C ‘ourt of pom als ee )

the District of Columbia Circuit ente red in the subject _

" case on Seana 9, 1971.

cee

THE OPINION BELOW

The September. 9, 1971 judgment of the Court of

Appeals No. 23575 inf a split decision now. sought bn be. :

reviewed is appénded: aud is reported in'171 TSPQ

206 and the June 19, 1969 opaen of the District C qurt Z

, »

ee”

* i

| for tine Distr iet of Colinihis \, “Civ il 1654 G7,.i8 3 appe tidied

anil reported In BOG TE. Supp. TR, 168 USPQ 607, A

petition for Re shearing, to the. Court of hisohales, lodged

by Petitioners on Septen! To oy) 1971, was denied ina

split decision: Nove mher 2107 (appended). . S

The original findings of the United St: shes Paton

‘OMee Board of Inter le renee Exanriners dated Match

23, 1967 and wee.) chee reconsideration dated haynes,

1967 are alsd Appel ed, together with 1 oo Pat

ent STLO996 involved in. these proceedings |

J URISDICTION -

By order of the Court of Appe sls: Sepember Term,

Wellap pe suded, the mi andate is st: wed for 90 days from

November 2, WT 1te pe rout filing of this pe tition.’

The jurisdiction of this ( ‘ort is invoked unde r 28

( SC 12 ACL).

QUESTIONS PRESENTED FOR REVIEW

4a: W hen an expert Administrative Body fully au

thorized by Congress and skilled in a specialty gives a

full hearing and makes a finding of faets ina contested,

proceeding, te what extent is the finding of facts

* binding upon a Federal Court on review, without, new

ev. idenee ina. tri ial de novo? '

2. Cana finding: of faets be set b jeide upon 5 Sumi: ary

Judgment in a District Court contrary to the. prev i- |

sions of the Administrative | >-rocedure Act, 80 Stat.

250; Title 5, ‘Chapter 7, Section 706, whieh specifically

provides a trial de novocas the procedure ‘of ‘setting

‘aside the action” if the ‘*findings and’ eonelusions are

found to be—unwarranted by the facts. to the. extent

that the farts are subject. to tri al de novo ‘by the

reviewing court.”’? eae

™~s ’ x ") . te i ee .

Sac vk i - ‘

_ Dav ‘Ss the Cirenit ( mount, lene: ‘rpretation of the deci. -

sion in Morgan v. Daniels, 158 US 120: (TROT), that a

decision inthe Patent ea Ontust lie aecepted as cone.

trolling: uporr dhat: “question of faet in any subsequen nt

suit between the same Parties unless the contiary % 18.

established: by. lestimony whieh in character and

amount: earries thorough “eoniicfion,” (oniphasis

added ) authorize a Distriet, Court, On Summary « ae

ent to overturn a findingof fret in the Pate nt Office 2.

without, presentation of any new testimony. to establis ni’

the! ‘vontrary ? » Cana new iiterpretation be placed

pon this case ‘consdatoniy followed. sinee 1894 by the

Cire nit.Court without a. Ruling hy the Supreme Cc ourt j ?

4, Cat a Mederal Conrt ove reule finnliniges of fact ifva

sum? nary review of an administrative, ua, mg do

coed ings W ithéut. a trial de Nove?

PD Does the Supreme Court dlécis S10n Morgan. v.

Danicls us the Cirenit’ Court interprets: ites tablish ine

“direct refutation of the theory that the presentation

of new evidence’ is a prerequisite to the’ trial eourt’s

“consideration of whether the Board? s factual eonelue

sions are erroneous???) eae he da

ra)

STATUTES AND LAWS INVOLVED |

3) USC 135,.a jutisdictional statute pr nvides that

‘Phe question of priority of invention shall be deter=

mined by a board of patent interferences Ceorisis ting

- of three ex: aminers of initerferendes) Whose detision,

if adverse to the-claim of an applieant, shall constitute

the final refusal-Wy the Patent. Office of ‘the claims

involved”’ and affords.that “Any discretiona Fy adtion

“of the Commissioner wider. this" subséction shall be

reviewable under Section 10 of the Administrative . Pro-

cedure‘ Act. (Amended October’ a 1962, Publie Law

87-831, 76 Stat./958)."" (Now Publie Law 89-487, 80

Stat. 250), -

a |

35. USC 146, a further jurisdictional statute provides

that any party dissatistied with the decision of the

board of patent interferences on the question of prior-

ity may have remedy’ by civil aetion with a trial de

80 Stat. 250, Federal Administrative Procedure Act,

Title 5, Section 706, Judicial Review Subsection. (e),

Scope of Review provides ouly for review of questions

of law and not findings of fact and sub-section (6)

should be interpreted that if a finding is unwarranted

by the facts then a trial de nove is the exclusive mamer

of proceeding in the reviewing court.

The Supreme Court ruling in Morgan v. Daniels,

long standing and followed frequently and consistently

- since 1894 provides that

“Upon principle and authority, therefore, it must

be laid dowu as a rule that where the question de-

- eided in the Patent Office is one between eontesting

parties as to priority of invention, the decision.

there made must be accepted. as eontrolling upen -

that question of fact in any sabsequent suit be-

tween the same parties, unless the contrary is

estdblished by testimony which in character and

anjount earries thorough conviction.”

- STATEMENT OF THE CASE

Long after Petitioner's patent issued on November

18, 1963 Respondent requested an interference proceed-

ing in the Patent Office. The Patent Office ruled for

Petitioner in a primary decision and upon reeonsidera-

tion. Respondent under jurisdictional provisions of

35 USC 146, went to the District Court of the District

———

_ of Columbia for review and made a motion for sum-

mary judgment on the record which was granted in a

‘ decision overruling the finding of-facts in the Patent

- Office which had resulted in an award of priorit?’ te

Petitigners.

The invention involved is found by the trial judge

to be ‘potentially a basie development of considerable

consequence in the absence of prior art’’ and involyes a

- lawn mower which has no wheels and rides by an air

cushion effect on the grass without blowing it flat so

that-the grass may be eut by a rotary blade.

The Court held as a matter of fact’ contrariwise to

the Patent Office that Respondent’s mower involved

@ cut grass satisfactorily and ** Efficiently cannot be ques-

tioned”’, whereas the Patent Office had held ““We do

not find from the record that the results of the machine

“built ini 1960 were aceeptable—it has not been proved

by a preponderance of the evidence that the machine’s

operation was satisfactory.” Upon reconsideration |

the Patent Office held ‘just -eutting grass, without re-

gard to its effectiveness is insufficient proof”. |

‘Upon review of the Court of Appeals, the District

Court decision was sustained in a split decisiori on the

majority rule that a summary judgment was a proper

method of overruling’ findings of fatt in the Patent

Office without introduction of Rew evidence.

The dissenting judge assigned error to the entry of

summary judgment on the basis that a judgment could

not be made without the determination of the -Cowt

as 4 fact finder and, thus, would remand the ease to the

\ District Court for findings of fact after trial.

The (Court of Appeals interpreted Vorgan v. Daniels

to be an authority that the presentation of new evidence

to the trial eourt need: net be a prere vquisite to the tri: ly

court in dete rrivininy factuat conclisions of the Pate oo

OMice are e rronCous, f

Petitioner has hot been able to find any. ps - author-

ity for this interpret: tien Whieh is contrary in result

to other Supeceme Court rulings heremafter discussed.

_ ARGUMENT- REASONS FOR GRANTING THE WRIT

we Importance of the Case The mavnitude of judi--

eial procedure in Kederal Administrative Agencies ts

sev \tenusive that itis amatter of printary publie corr

eera tocest lish elear and Hneqniveenble standards of

review of undings of facts in Administrative Pudicial

‘Proceedings by the Federal Courts, and the procedure

by whith administrative tindings of facts may be dyver-

turned. "The establishment ofta precedent contrary to

past Supreme Court holdings. in the Bederal Courts

new permitting a Federal Distriet Court upon sum

magy jndgment of new facts would impose a hampering

resttiction upon ‘the functioning of the administrative

process and prevent such -agencies froiu making

“tnel findings of f: et based upon the administrative

procedure, .

The reasons: for conferring upon an ageney such as

the Patent Office ofa typical judicial funetion by Con-

gress is the expectation that problems which would he

encountered would be of a technical and specialized

nature, ealling for technical experience and training

which a court might not possess. te thereby perform

more satisfactorily than a court the task of making

findings of fact in the special field over which it is given

jur isdiction, Thus. findings of fact should be binding

upon the eourts when supported by testimony, (Gerard

Henderson, The Federal Trade Commission, Yale

University Bress, 1920 pp. 92-102.) In the Patent

Office the Mxaminers on the Board of Dnterfereneecs are

J persons of competent legal kiowledee and seientifie

ability exclusively assigued to inte a Perence proceedings.

Dobson vy. Commissioner of Iuteraal Revenue (VON),

B20 US ESO, GES. Ot. 239, held in the Tax Court, an

expert body operating: simil: why to the Board of Duter-

ferenees upon a uiatter invelving both Liaw and farts,

that: “wher the court cannot separate the elements of

a decision so as to ide nitifye a eleareut mie yen sof law,

the deeisiow of the Tax Court mist stand? dn the

present eireumstanees, it is admitted by both: the Di-

trict and Appeals @ourts that findings: Of fact were

rave.

A long line of Supreme Court eases holds that whet n

él cone ‘lusion is supported hy evidener if ix eee pote] “4s

final, and ‘the courts will note Sani ne the feet. furthe r

than to dete rinine Whether there was: subs fanti: i} evi-

dence to sustain the eorder.”’ Tulerstate Commeree

Commission v. U nion Pac fie Re attroad Co, (1912), 299

US S41, S258. Ct. 108, 38

Mois clear that the legislative hody determines’ the.

poliey as 16 what administ¥ative findings Of faet shall

he made final Thus, when such bodies aie ereated |

with power to investigate and determine facts, “such

administrative findings on issues of fact are aecepted

by the court as conelus sive if the évidence was legally

snffici tient to sustain them and there was ho irregularity

in the proceedings.”” Phillips v. Commissions r of Tnter-

nal Revenue (1931), 283 US 589. 51 S. (t+. GOS,

It is therefore a matter of great pub lie importance

and a proper basis for i Issuance of a writ 6f certiorari

to aseertain a clear line of demareation between the

functions of the legislative, judicial and administra-

tive bodies in the my nite roof review of findings of Pet:

in connection with speeintty fields,

ORL WV antfermily of livvisions ahd ¢ ‘unflicte of law

Ifa Supreme Court decision is interpreted by a Crre wil

Court in a manner net originally held, and: if such

interpretation. is ineomsisternt with other i a

Court decisions, then a proper ground exists for

canes of a weit efeertiorart th the Tistant ease, cou

trary te the The Melinagess of Pobson vo. Commissioner of:

Internal Re venue, luterstate Commerce Commission V.

Union I acific Railroad Co., and Phillips vo C OMS

sioner of Luternal Revenues supra, the ¢ ‘irenit’ Court

has interpreted that the Morgan v. Dantels bocoledinace Chased

the decision of the Patent Office nist be aeeepted as

_ controlling unless the contrary ts est: tb lisshee! ly fests

mony which in character and amount ear Ties thorough

eouvietion’’ stands ‘tas direet refutation of the theory

that the. presentation of new ev idence is a prerequisite

“to the trial eourt’s consideration of whe ther the

Board's factual conclusions are erroneous,’ Pand holds

therefore that a summary judgme “it proceeding with

out atrial de neve or new evidence can summarily ove r-

rule the expert findings of facet below.

- It is proposes! that a precedent such as this iader rpre-

tation changes the entire weight granted by legislature

to administrative ageney proceedings i general, and

thtis. the decision should bé reviewed on A writ of cer-

® tiorari beeause the judiciary cannot lawfully exertise

legislative powers or change the scope of legislation.

As a matter of fact, the ¢ Srenit Court in this matter

has expressly held eontrary to the Morgan v. Daniels

Supreme Court holding, to wit:

“Tndeed. the variety of opinion expressed by the

different officers who have examined this testimony

“persuasive Use. Pf the ques Aion of priority ie

bey and if doubtful the dee ‘inion of the Patent ~.

Oi fhee ut control”?

The conelusions of thie. Ina jority has refieed: to follow

this ruling, sinee the Patent Offiee on two oeeasions,

supported fy the dissenting Cirenit, Court Judge, be *“s

on the question of priority for | elitioner,

The ceeond eirenit. in Radio Corporation of America

Vv. Radio Kngmecring Laboratories, Inc., 66 V2 THK, «

vlates speettieally the Supreme Court tteelf must alter

the houbbinge of the: Morgan v. Daniels decision if iti dn te

bree ecbacenageeed,

The Vole til ‘Administrative Procedure Act section

on Judicial Review (which eovers this action tinder 25

USC 15) grants the eourt’s upon review only the.

power ty cet aside ayency = found to be “anwar

anited by the facts to the extent that the faete are sub.

Jc Lie trial de‘ Nove hy the re viewing court, - »

Thus, if the: decision stands it appears sandinntey ty

the intent of the Legislature. |

('. Seope of garisdiction of the Pederal Circuit

-Courls in conside ring questions of fact and not qubs

lions of law only. ‘ ;

“The Federal Administrative Procedure Act defines

the fe) Seope of Review not to include findings of fact.

but review of questions of law:

: So far as nece ssary to decision and where presented

the rerie wing court shall decide all. rtlev and YUE S-

tions of law, Interpret constitutional and stat utory

provisious,. and determine the meaning or appliez-

bility of the terms of any ageney action—and as

aside agency action, findin: gs, and conelusions

found to he (1)- arbitrary. capricious. un abuse of

“10

‘

diseretion, or otherwise ane in such nee with law,

or (0) unwarranted by the facts to the catent

that the facts are subject to trial de nove by the

reviewing court, (eo maples savddedy i

The decisions cited above all xapppword the review of

findings of law upon review but hot: the Hiniclinages of Fae ‘f

~Uhe Court of Appeals states |r ive only ft: neti issue

in dispute was the ultimate: question whether: appel

lant’s showing coustituted fvetual reduetion to prae.

fee The Distriet Court\took issue with the Board

both as toe its Cnetual conelus dons and with respeet to

its velianee on Elmore, We agree with the eourt on

both aeeowtuts."*

Thus, a writ of certiorari should, i ‘inepedd on the.

basis: that the Court of Appe: Us has exceeded. its. statu

tory authority and is limited to finding errors of daw

and cannot enter Without trial de novo or new f: vetual

ev ide nee decisions on the fnets. :

89 USC 16 provides for ih trial de nove in the ed.

eral Distriet Court if ; L entrty is dissatisfied with the

Pateht Odice decision in an Infterferenee proceeding,

but nothing therein permits the Court to overrule the

findings of facts by the Patent Office on thet ree cord with-

out. new evidence ora trial-de novo,

In Nefional Labor Relations Ba. vy. Waterman SS

Corp. 809 US 206, 60 S.0t. 493, under soitie what sim-

ilar cireumstances it was held a matter of high imipor-

tane ¢ affecting the interest of the nation and proper to

grant a writ of certiorari where a United States Cir-

euit Court of Appeals has execeded its proper function

- of determining questions of law only, gud has invaded

the authority conferréd upon an: Administrative

Ayeney hy Congress to make findings fof. faet. The

Supreme Court there abated;

ae ‘

“Hoi of pans snot, innipent: ee threat divas not

eneoueh upon this exelusive power of the Board

Cfinglinng of Poets if supports “bby ¢vidence.shadl be

conelius ave if offert Incto be piven the inte ution of

Congress fo apply an orde i Informed ana spe

vializedt procedure to fhe complex administrative

problems arising in tye colition of tndusteial dis

pifes, As itdid in setting: up ed administrative

bodies, Congress has left questions of law whieh.

arise before phe Board nt not more ultimately’

lor the tradifional review of the judie jary.? ;

CONCLUSIONS |

I has been shown that. this is an importient ease with

ca split. decision of the Cirenit Court Invelving matters

of great. publie intere: nf that there are confliets of laws

ane inte rprefations of opinions of thi- court involved

in the Ciréeuit, Court, findings and the scope of the re-

- view and-overturning of: facts found ina judicial ad-

ministrative proceeding exceeded the scope of author-.

ity given the Cirenit Court, and therefore, ibis re spent.

fully. petitioned that a writ of. ce rtiorari should be

granted, : re * : ;

‘ Respestfully submitted,

LAr RENCE. R. Brows

1066 National Press Bldg.

Washington, @. C: QO

A torn cy for Petitioner

Of Counsel :

Evucene M. Bonxp

2001 Jefferson Davis ticks vay

Suite 1105 oon

Arlington, Virginia 22002 |

APPENDIX

UNITED STATES COURT OF APPEALS

FOR THE DISTRICT OF COLUMBIA CIRCUIT

o.-

No, 23,575,

Joun. Be, Cony, EY AL.

AK TIERODAGET MLy Mo, BT Alay AprEnaxts

‘“«

a » 2. Appeal from the United States: District Court

ee for the District of Columbia

Judgme nt entered this date— Decide d Septe mbe ry, 1971

sl; Messrs. Lawrence R. Brown and Solu H. Lewis, Jr. for

appellants, 0 Can eer

Messrs. Georac M. Hopkins and Edwin L. Reynolds for .

appellees. Mr. Lawrence L. Colbert also entered an appear-

anee for: appellees. =~ : . | a

‘ Before McGowan’ and sccusik: Circuit “Judges, and

‘HRISTENSEN,” . United States District Judge, District of

‘Utah. ‘

teas. | Opinion filed by McGow AN, Circuit Judge.

‘ . ~ Dissenting opinion filed “9 C HRISTENSEN, District

Pg _ dudge. - an Fe -

McGowan, Circuit Juiper This is ‘an appeal from a re-

ve ersal by the District, Court in a patent inference case

7 Sitting by designation pursuant to 28 U.S.C,

_—

+ |.

of ne oruling of the Board of Patent Enterterenees.. We are

confionted on this appeal wath dificult ques Aen) rear

Anise botti the procedural Paopriety of the Ir: trtets Courts

dleersaiin, ad, KC applicdthle burden of proof anne

Standard of review, ( safictones of appedlees” proof gl

reduttiop to practice. Were abo cabled on-by appellants”

to decide two issues, reselted neither in (hie. Psvtacnat Ollie:

~ nor in the Distriet Cotrt, re Jatine to (ie patentability of

appellees: Tvention. lor the ven sidvaans sshastanl below, we afl

. -

of ] . .

the puddemment of the Distriet Court, Pa im

e |

\ppethints are Aktieholaset Miyine, a Swedish ‘corpora

tions tid Karl Ro Dahlia? an inventor and himself! a resi

dent of swe lew, Ap pre ‘Hhees olin Cols vue (ie ‘corere Sites are:

the 4 inventors of one of the devices in ue Aion te thik ete,

"That Invention, elated by beth parties, isa wheelless Lawn

Smower sustained at the appropriate be nf above Cie: wround

oma thimeushion of air. Appe Hants filed Kheir pte mtoap

plication on Mareh t2) 1962 and, boeause’ {Thess were (he.

first to baye on the devise, took on the statis of t senior

party in Chest preeetdings. Appellees, the ** junior party’

herqen, filed ther application en November 7, r62, SOME

severr tionths after appellants* tiling, On November 19),

L9GS, while the applic QHOMS “Were co pe uddinis, the Ratent

Oties awarded & patent to appellants.

it t

~ Several nonths thereafter, in epnformance with appli

eable procedures. for ere ating an interference, .appellees

ened their original application, ‘Claiming that their

device titted the dese ‘iptions offappell: mts invention, they

copied thirteen claims: fot the ’ “rocontly issted patent and

requested that interference proceedings he instituted. On

March 1 1965,-following the additional filing by appellees

ef several. neeessary supplemental affidavits, the Mxaniiner

= of Patent Interferences declared an interference as to three

OS id

of ae ’ ;

; : P se e , f

. ; ~ $b." bbe

. 2. : ? ‘ :

. OF Che thirteen elaine. Mroce elaine, eon Vitiatansge thee poe

Hnent counts in interferences, ave reprinted ‘tn the gusrcygy.!

a ‘ : i = : . ' e :

’ s . # 2 . “ , .

The central toone between the. partion as iia call patent

nferferenee:, wal wheller the one or the other wis the

- orginal piventoriof the frac culling tuaehine, Recolutwon -?

OF that tooue depends upon, the determination as to. whieh

: ¢ : ’ ° As

e . ;

Count Noo) sfAppellaiite’ Claan o Ne “from “patent, Ag

pallees’ Chine No 1 from amended appleatiecn t

“A praia cuttin machine Compriine it how ante hacuie a

Hotton openrnige the peripheral elie Of whieh ia doratesgt

‘ ob ratially ina plane, a rebar | an Papel mona tedt 7

ae Ono a hah a cand hota a rolary cutter mounted in

>» :. ; cad howe below card aur mapedier on the same haf) aged?

= , 5 a ~ Se’

(driving dean, for sar hers air smpeller. aad” dawd potars

CUlber, sau air ciepettior beni ceom trietod ty expel air thread

‘

ot bottom opentiug ony paths and’ at rates sustable for

5 J Sh thy elewatinye cad) howe ane parts wearcicd thereby os

, © from the ground boy vrotund effect ™ ,

Coun Noo 2 (Appellants Clan: NOD Protn patent Aopedle: ,

Clann Noch from: amended apptieation, ae sha

A yrass cutting machine comprising a hood ha ine tts

e , . ‘ . i

COver porhion came a odopré port oh tt Celatter bens Hryut

tially Shaped asa vertieddly slisgpasedd evlinder terry i

» . 2 mar . ; j ; -

its bottom With a Supporting rin. Yietyr attached ta j

top cover portgon, sand MOtOr having a \ miealahalyt exts o

“ r ‘ - r _ ©

Wter the sper owathin cod’ ob rt. partion, an air i? i

ae POP tae pee ; Ta 2

» mounted On said’ shaft below said alr imp®@lios. an. as

e ee ‘ an “e ae

‘openine disposed yeventrally of said top heer ofr, .

: é ti air bmi pelier bering CON Prieto Vy jf; no omair the SU5P05 ist

. * . . wept 2 * .

. gir inlet Opening and ty exe] dich through, the rpc $<

* s bd

~oOf said dood at arate suffieient thy ale thy legate the 5

of said hood, moter air impeller and rotary cotter. fron:

ground hy ground efect 7

Count No. 3 (Appellants’ Claint No. 2 from mates Ape

° . . g° @ os; % 3

- Claim No. 22 from ie application :

. . ~

’ % “ 5 a “ ‘ 7 °

“A wheeless grss cutting mathine having & poche Frese:

retary cutter and commonly driven air impelling means for 9

. °° producing ground effett to sipport sa°4@ machine ong hon

ete PES, ey amit 2

‘. of air at-a, distance above. the ground.

Ae . . °

e . = rs : a ** ; : ie _>

s - 2 . .

. ye

Py a s oF

: : sa

party first, in point of fine, reduced his invention te prac

gee.) Appellants reliedion Mareh 16, IGT, the date on whieh.

their invention hac been giade the subject of a patent ap

plrgation in Sweden, as them earliest date af const ructive

reduetign te practice” — Appellees, seeking fo best appel

lant*s Showing, relied on fects comdueted in the spring ane

fall gf 160 as evide nem a prior reduction to practieé Tf

was upon the suffiere nev of their showing on that seere that

the question of prierity turned, :

\s the juaier party in Interference, appellees’ Inarelens

before the Board of Patent Interferences: was te establish

their claim of prier reduction to yractioe ly a preponder

aned of the evidence.’ Consistent with the standard prae

tice incsuch proceedings, all of appicllees* eWidence was sub

mitted in deposition and exhibit form.@ 37 OBR SS 12ot

me. L2TESE CITT). Aithoush appellants submitted medi

reel ev intone at their counsel was present when’ depositions

were being taken and -brie tly cress examined several « of

appellees witfiesses, After liearing oral argument, the

Boardof Patent Interferences held in appellants’ faver on

Mareh 23, 1967. The Board’s finelinges emphiasizedl that

appe Hees hatl tailed to demonstrate that the hownmewer

they buily in Mio operated in an acceptable manner for its

intended purpese, ic. they failed to meet their burden of

>The procedtire for relying en a forvien application is sef out

in Rule 216.6) of the Patewt Office Rules of practice, 37 CLERK,

S21) STD). See ALS Deuce, Wanker On Parents § 204,

af 285 (ist ad. 1939). at ; d

* The rules regarding burdins of, canal in such proceedings in

» Patent OPfce are well establ shed. If the junior party files

a application eff the patent is awarded to the setfier party

_ she must d@menstrate his rediktjon to practice bevond % " reasonable,

doubt. 1f, a was the case here, the junior party files his applica-

tion before a patent issttes to the senior party, the customary pre-

¢ ponderanee test applies. Ser. ¢.g..*Conner v. Joris, 241 F.2d 94,

948, 953 C.CPLA. 1957): Pierre v. Harvey, 233 F.2d ass, 338

C.C.P.A. 1956). :

ont . >

proof on the question of priority. The Board reaffiraned its

postion two months Later a a tert opinion ce "my ing ap

protees” reque A for reconsideration.

* -

Paced with the fatutery alternative. of appealing the

; ' . ~ a - , ‘

Doard’s folios fo the Court of Cuttom. dud Patent Ap

peal’ or bringing a civil action im the Distriet: Court’

appellees elected te pap ue the Lutter course, Poblowing

the filing of the Law suits ame after the pasavi- of nearly

fwe years of prelioninary parting between the parties,

appellees filed a wetion for surenary jadrmen). Applic

copped) thee nation ane. files! ae surmtary judgement motion

of their own, _ Peeynie fing, in tae alternative, that The eourt

cithér afirm the Board or, of were te sathicliaile that the

junior party had met bi- durden defore the agenev, to

conmside Fr sappe Hants > twee elation thiset thie eleviee im que wtiinin

Was net patentable To i Heelan any event. By Meme,

rtnelunm (Opin ren elites: “ume 1 , 1900 aged Order of Jude

nient dated July 7, VOCS, the Distriet Court granted appel

ees” maction, rhversed the Board, une reuantlerd the ence,

The court refus ml te pass oon the two patentability ques

fiens raised by appellants on the ground. that they hie

net beer ‘“dexeloped in any detail before thy Board” and

that such wiatter Were not Within the scope of review of

“aifestions of priority “of invention.” This appeal followed,

II a: :

Before acklressing eurselees ta the <ub-tantive Teasnes—~

priority and patentability —~in this cause, we eoern-ider two

preliminary questions. First, what measuriny red or stand-

card of review has been establish tq enide the diet rict

courts Im serutinizing the Board’~ action- in the-¢ some-

+35 es $141- (1964. .

*45 U.S.C. §146 (1°

* Cody v. Aktiebolaget F Ivme, 163 v “Pu 6 fe. Ws DD. 189

(see note 1 infra). ~ :

a ; — os

what unusual We nore proc eodings? Second, given that

- standard of ‘review, can disposition, short of a fullev iden-

jliary hearing, by way of summary judgment ever be ap-

propriate in a case in which the Board's conclusion is to

be ove riurned ! P es

A Saprome Court, precedent, whic h has been consistently

applied-by th - Sederal' courts in-reviewing the Board's in-

terference rules for over se venty vears, provides the cor-

nerstone for our consideration of the: first question. In

Moraan v. Daniels, loa US. 120, 125 (1804), the Court ina

unanimous opinion held:

“Upon principle and authority, therefore, it-must by

laid down as a rule that where the question decided

in the Patent Office is one be Hween | contesting parties

-as to priority of* invention, the devision there made

must be aceepted as controlling upon that question of

feet in any subsequent suit. between ‘the same parties,

z —anless the contrary is established by le stimony which

in character and amount carries tliorough conviction.

(Emphasis supplied.) The ; applic: ibility of this ‘thorough

conviction’ standard to the district court’s deliberations in

such cases can hardly be questioned.’ Appellants acknowl-

edge that standard, and argue that it was not satisfied here,

and indeed ean never be satisfied in the absence of the pres-

entation « the district court-of new eridence not previously

considered by the Board. Stated differently, the argument

is that the Board's factual conclusions in an eterfapepoe

proceeding are conclusive on the district court if the, dis-_

satisfied party elects, as here, to rely on the” record dint

before the Board.

review proceedings finds its source in the statutorily es-

7 See, . United States v. Sznees, 100 U.S. App.D.C. - 24, -240

F.2d S86 “(1957 : Radio © orp. of America v. International Stand-

ard Elec. Corp.. 239 “2d 726, 729 (3d Gir, 1956). .

= ; . > XZ : a . a

° o ‘ ,

The notion that a new-evidence test inheres in-de noro.

tablished alternate routes of appeal open to a party dis-

- Satisfied with a Patent Office degision. He may either ap-

peal to the Court of Customs and Patent Appeals, 35 UNC,

$§ 141-44, or Tile a-civil action in the district court, 35 U.S.C.

$146.) Should he do -the former, the statute makes clear

that. the Court of Patent Appeals “shall hear and determine

such appeal onthe evidence produced before the Patent Of-

fice” 35 USC. §144 (emphasis supplied). When one

chooses to proceed in the district court, however, his proof

may earry him well beyond the confines of the administra-

- tive record, “. 4 AWA;

It is this difference regarding the comparative seope of

the matters the two tribunals may consider which meaning- :

fully: distinguishes the one from the other, and often is'the

determinative factor in the -dissatisfied patty’s choice of

forum. That this factor lies at the center of the differences

betw%en the two alternatives is evidenced by the Supreme

Court’s diseussion in Hoover v. Coe. 325 U.S. 79, 83 (1945) ;

“Tt is evident that alternative rights of review are

accorded an applicant—one by appeal to the United

States Court of Customs and Patent Appeals, and the

other by bill in equity filed in one of the federal district

courts. wy first the hearing is summary and solely

on the record made in-the Patent Office; in the other a

formal trial\ is afforded on proof which may include

‘evtdence not presented in the Patent:Offiee.”? ( Empha-

= SIs supplied.) |

Tf its examination of the legislative history of. these re-

view statutes, the Court noted that in 1927 an effort was

- made in Congress to abolish one alternative or the other

but that it proved unsuccessful, thus ‘*saving to litigarits

the option of producing new evidence in a court, by retain-

ing the equity procedere.”’ Id:at 87. -

As a practical matter there would appear to be little

incentive for a party to come into the district court unless

ear conteriplated ‘a further, evidentiary presentation. fn

‘tially, as feflected in the following exchange between court,

and contisel at the Sumunary jude ni hheserines, that eon

sideration seems te have occasioned ‘pope Hees” deetsion te. -

come inte the Distriet Court in this ease:

e [COUNSEL FoR APP AAD S| asked for ree

amside ‘ration Sl. amd was refused... Then | took: aan

appeal te the Distriet Court for the District of Colum

bia. Leontemplated gore to the ‘ourt of Customs ved

: Patent Appeals, but since | could put on “addition: ue

. proof as te the favt that this machine was cutting grass

all over . ears . .

“THE COURT: Yes, that is why we eet a lottof them.

» “COUNSEL |]: Leame to you folks. ,

“THE COURT: LT understand that."*>

We ean only speculate as to the cireumstanees that led ap

pellees to change their tack and to. rely on the administra

tive reeord, but, whatever those reasons might have been,

we doubt the wisdem of a rule that would %Sther force

them te go to trinland produce new evidence or to suffer *

the conelusive resolution against them of all questions of

fact. S35 &

“We tind that Morgan v. Daniels itself stands as direct

refutation of the'theery that the presentation of new evi-

denee is a prerequisite to the trial eourt’s consideration of

whether the Board's faetual conelusions are erroneous.

~Appellants: focusing on this brief exchange, have -argued

that it demonstrates that appellees were, in [essence, subverting

~ administrative process by withholding relevant evidence from

» Board and then. planning te introduce it later in the. trial

court, W hile We gree that parties must net be permitted to

raise hew issues or to submit ‘evidence omitted at the agene v level

out of negligent disregard for the administrative process, we

: de not place so sinister an interpretation on appellees’ conduet

here. See’ DeSevesky v. Brenner, 137 U.S.App.D.C.- 369,. 424

F.2d- 857 (1970 , j

e - gus eS ee RS RE ERE CNS ee 7

Pee RE

That case is similar to our own in that novevidence was pre

sented to the court there that had not been broaght out in

the interference proceeding, Id. at 12. Nevertheless, the

Court did exactly what appellants argue the: Distret Court

in our case was without authority fo do if examined all

the evidence and nieasured tts saffiereney under the “thor

ough conviction’ test. The language of the Court’. eon

cluding paragraph is particvlarly instruetive: oh

“Thott enough to say that the testimony as a whole is

net of a character or sufficiency 16 produce a elear

convietion that the Patent Offiee made a mistake in

awarding prionty of invention to the defendant.”

Id at 129 (emphasis supplied. The implieation is unmis-

takably clear that had Nhat evidence carried thorough con-

Vietion even though rent of it was “new evidence”?

‘the Patent OMee’s ruling would have been overturned,

- Appellants have relied on several cases in this jurisdie-

* tion in support of theireontention that an evidentiary. show-

ing going beyond that presented before. the Board Vis

_ essential”- In none of those eases, however, was Abe faibure.

“to produce new evidence the determinative factor, ic., those

cases cannot be read-to held that, but for the absence. of

new evidenee, the court might have. reversed the Patent

Offiee. . These were all enses, tg the contrary, te which -

nothing presented to the district cotirt—cither old or new

Was supportive of a-conelusion that, under the thorough

conviction standard, tht Board had erred: More impor:

tantly, all of those cases purport to rely on this gourt’s

discussion of the. Morgan v. Daniels te=t in Esso Standard

Oil Co. v. Sun Oil Co., K% US.App D.C. 154s 158-59, 229

_ F.2d 57, 41-42 (1956), cert. denied.- 354 U.S. - 973° 1956).

* Pro-Col Corp. v. Commissioner ‘of Patents, — U.S.App.D.c.

—, $56 Pi2d 296 (1970); National Distillers & Chem. Corp v.

Brenner, 128 U.S:App.D.C. 386. 389 F.2d 9927 (1967 - irs. ¥.

Brenner, 123 U.S.App.D.C. 96. 357 F.2d 287 (1966 - Zenith

* Radio Corp. v. Ladd, 114 U.S.App.D.C. 54, 310° F.24 sh AS62

109

Woe, foo, rely on that ease and tind tts language dispositive

of the ease before us, Ba

Esso’ was an appeal froma Patent Ofiee ruling ina

trademark ease in whieh the only substantial issue was

whether two trademarks, were eoutusinedy similar. “Phe

Pivtent Ofiee held that they were confusmely similar, but

supon de vere review in the district court that deeision wis -

2 reversed, . After snnenmnae that the thorough conviction

standard of review applied i such) eases, this court

viewed all oo evidenee tnd cone res d that neither the new

evidenee nor the evidenee of record before the Patent (lice

supported the district court's deetsian, ote

“We find no basis, therefore, fos the action-of the

trial court in overturning the ruling of the Patent

Oniee, Certainly there was no evidence te the contrary.

which “carries thorough convietion,” as the Supreme

Court has teld us there miust be Morean ve Daniels,

supra. The evidence before the Distriet Cour Wis

the same vas that before the Patent Ofliee, except for

-eertain additional evidence ‘not of a kind to change

the result." ~Tmsueh a eases the Patent Offiee ruling

should nerm: rally be followed, Of course, if the decision

4 of the Patent Op “IS not warrduted on the eridence

before if, or if the new ev idence reaches the nee essary

standard, the Distriet Court may rule cas the. totality

of the evidenee may require. But the present is not

such a case."" ec: ee - 4

Q7 T.S.App D.C! at 158-49, 229 F.2d at 41-42) (emphasis

supplied).”” It should be‘eclear, then, that the failure to

See. e.g, Cakfornia Researeh C orp. v. Ladd, 123 U.S. App.D.C.

60, 63, 356. F.2d S13, STS 61966) Pierce v. Watson, 107 U.S. App.

D4: 226. 228. rt Tas ae | S90, Sov 61960): Potter Instrument Co. —

v. Mohawk Data Seiences Corp. 309 F.Supp! 866, 867) (S.DINVY.

~ 1969) (Patent, Office record forms the ‘*nucleus of the evidence

hefore. the District Court.”"" but ‘tadditional .evidence may be

submitted *).. eee ite

xr A '

lla

. . \ ‘ /

introdue e additional evidenee cannot, by the force of that

cireumstanee alone, be conclusive against the party chal-

lenging the Board, and it should further be apparent that

the thorough convietion inquiry uutst focus on the whole

record."

Given this stwndard of review, the second related ques-

tion whether the dissatisfied party may attempe fo meet

that burden in a summary judgment procecding “raises no

difficulties, We are unable to find fault with the Use of

summary judgment under the peeuliar circumstances pre-

sented in eases like the one before us. The only factual

Issue in dispute was the ultimate question whether appel-

lants’ showing constituted an-aetual reduction to practice.

Neither party had additional testimonial or tangible evi-

dence that he wished to present to the court,!2 - Althom®

appellants opposed appellees’ motion for summary judg-

¢ .

"We are fortified in our conclusion on this sepre because of

the serious opportunity for injustice present under appellants’

newevidence theory, The two alternative review provisions dis-

eussed above, in addition to permitting the dissatisfied party

to choose his forum in the first instanes,. also provide that, if the

“dissatisfied party appeals to the Court of Castoms and) Patent

Appeals, his adversary has the power to. demand that the case be

heard instead by the distriet court. 35 U.S.C. 5 441 1964. Ex

sentially that proviso means that the appellee ins an interfe rence

review can compel the dissatisfied party to. seck dé novo ve} yiew in

the distriet court. Sco. Tibbets: Industries, Ine. v. Raseles Elee-

tronies, Ine. 386 2d P09, 212 (ith Cir. 1967). cert.edenied, 390

VS. 953+ (1968). Under appellants’ theory, if the dissatisfied

party Rete only to challenge the propriety of the Board ’s find-’

ings on the reeord and had no new inaterial to proffer, he eould

not prevail. Therefore, by. effecting a change of forum, the ap

pellee could impose a higher, and in Some Cases BEES ACERT E a

, standard of review, :

This is not, therefore, a case in whieh it could. fairly be argued

that the litigants: had been cutoff from their right to a trial on

gennine unresolved factual issues . See,-£.9.,. Sartor v. Arkansas

Nat. Gas Corp., 321 U.S. 620, 627 (1944).

‘ ; - Ia

ment, they did not contend that there were material issues

Velyingeas they were on fhe Patent OMe reeord, had not

met their burden of proof on the eritieal issue of priority.

-ef fact in dispute, but) simply ceentended that: appellees,,

Certainly nothing that) eventuated during the hearings: ~

before the distriet judge could have alerted hint to any

existing opposition to his resolution of the merits of the

ease on the basis of the mate rial before Tim

With the erase in this posture our holding in Mow v.

pennprte & Wimsatt Ihe 7 US AppDG.. 26, 20s 19,

Pa i, 736 37 (IME), would seem to hear cone ‘Husively

on ss hike “question, ee ae

“There was contliet concerning inferpertation of the

+ faets and the timate” conclusion fo be drawn from

them... But there way uone as fo the facets them

‘selves. Inother words, the evidentiary facts were not

subst; anti: ally in dispute. . 2. Coffliet concerning the

ultimate and decisive canelusion to be drawn from

the undisputed facts does not prevent renditign of ae.

“summary judgement, when the conclusion if ane to be

drawn by the eourt. The eourt had before it all the

* faets*whieh formal trial would have produced. Going

through the motions of triaPwould have been futile’?

% . - \ e.. : e

See also 3 Bannon & Hourzerr, Fepkran Pracnen & Pro-

" ~ ws ~ : \

CEDURE $ 1254, at 128 (1% sia .

e. ° ~ F a Y sf

Hi.

On the hots of the reduction to practicé igsue. we have

reviewed thereeord and find that, under the. applic: ible

thorough conviction standard, the District-Court —

on es reduction to practice issue. The peculiar procedural ance

}

of the two subsidiary issues’ coneerned - with patentabitity wilk be

discussed in Part IV of this 0j yinion.

j % . \

, eee \.

‘ha

is Well supported. Demonstration of endl aap to

of the ive nlion as defined i nothe-eounts i ini interference:

practice requires proof shere by a preponderance of the

evidence before the Board se fwo general elements: sa

he eerste Cent tings machine must have been embodied int a

phycieal ort tingible form ue every essential eleme ont

and (2) the maehine must be shown to havreoperated 6ffee

lively for its intended use? See, Revise & Av Carsar,

Pereneenesecr Daw AND Priagvien, £3 31-32, at 395.97 (1940),

The Board « 17,

isspe, that oh proof had been submitted to esnelude

Afemt: Interferences found, ‘on the first

“that the ‘fying’? Kwimower was aefually builtin the

spring of 1960 and that if contained, at that time, “every

Poature of the invention as defined in the counts’? On the

cecond issue, however, the Board found that +: junior

party had failed to prove that the machine operated ea ffee.

y 6

lively”? satisfactorily.?? "Greatest emphasis was placed

on the fet that the inventors continued after their 1960:

fests fo experiment with a great munber of different com

ponent parts, On the request for reconsideration the Board

apeain stated that, While some grass waa eut in 1960, those

experiments otlcied the inventors nothing more than en:

couragement and reason to predict that ‘the invention

would: probably be successful if and when it could be put to

_Kmphasiziny its reliance on. Elmore +.

practical use?

Schall, 278 FB. | 510 (CLACLPLA, 1960), thesBoard held that

reduction to practice required more than ‘a mere basis for

predittion.”? The District Court took issue with the Board

bathe as te its faetuad conchisions and with respect th ifs

reliance on Elmore. We agres with’ the court. on both

accounts. . Meee,

The pertinent deposition and’ exhibit evidence can be

briefly summarized. The. two inventors, John Cody and

bos

‘

George Sites, were not inventors by’ trade anc

* their machine only during their off-work hours._ Cody was _

14 Sec note 1 supra. ner

an agricultural pilot and was able to‘seeure spaee ina

Ida

hangar at the airport in’ whieh they could) work on, the

mower and store their tools and equipment, Because neither

aman had a great deal of money, many parts of the machine

operated: satisfactorily ;

wereSmade out of disearded serap metal and any other

readily available materials. ‘The snume Li propelfors:

experime nto with, for instanee, were all hi: ndearved,? and

aowishtub was used as the mold for forming the fiberglass:

shell: whie h was to funetion us the housing.

Five w nesses, including the inventors, testified to havi ing

seon the experiments conducted ino the spring. or fall

of 1960. Cody testified that Jiis mower did eut: grass in the

experiment condneted in-fieldosnear the airport) in the

spring of 1960, He stated that ‘tthe machine flew and

the machine didtfly and did

operate; oo. Weewere Very: pleased with dhe, results of it.”’

In nddition to the airport triak Cody stated that another

sueeesstul test was eondueted at a farm in the fall of 1960,

His testimony also’ ine lidegte ‘ferences to some of the prob-

lems they “confronted. Tle ‘indie ated. that they were not

getting a eut over the full leneth of the blade but that the

‘machine was entting thore toward thecenter of the blade.

This problem, and toa losser Oxtent a torque problem, were

- stubsequently eorreeted by the addition of baffles within the

housing. Although-he listed several other changes, he miin- -

tained that ‘*there were no-major alterations. ~ Basic: lly,

it was the same machine, Pre eN a

Cody. was: the only deponent to. be cross-examined:at any

length by appellants’ counsel, Tle ’was asked whether his

propeller blew the air straight downward against. the sur’

face orwhether it sent the air off the tips of the propeller

by centrifugal.action. Cody responded that he did not’.

M Appellee Cody testified that the propellers were built “Qout

-of ‘laminated wood and rasp and sandpaper and everything but

teeth and fingernails.’ - He also testified that the handlebars were

constructed out of OXCLSS steel tubing found at the airport.

‘

—

ws"

—

know how the air moved ardund inside the housing and

that, while he did ul | design the propellers with dimy pare’

ficular aerodyn: ante resull in mind, he eoneluded that the

ur most prodatity moved: both downward and off the tips,

Connsel fore appell ints addressed) no que stions” to Cody

Fogarding the snecess of the ri ass cutting experiments),

George Sites also. testified th: it thie device mace a “fs tir

3 Zeawath? and that the engine woul “pick up {the housing]

cand if would cul eri ass. Uf JWasn’t as efficient as what wee

wanted and wasn’t what we would want to put on the

market?” Ile, foo, spoke about the addition of baffles to

improve the efficiency of fhe mae ‘hine by allowing it’ to’ent

aewide aaa, ana abort other improve riches mile afte Y the

1960 experiments. Te was riot .e ross-examined. >”

“John Neill a erop dusterswho was invited to’ wate the .

airport experiment, testified as follows:

*#The machine actually, PE thonght the first machine flew

just as well as the one-they built today. It wasn"tias

nedr as gdod looking in appearance . AT he lawn

mower did fly good and it pe formed good and ‘it did

-eut good. °

Rig 2 definitely. was cutting: | ePAss, Lik®T say, I think

the first one did WS goody: 1 job, ora hetter.job, as some

- of the ones he produced later aes

”

“

Meowas not, CrOss- examine “las AS the de tails of. his observa-.

tions at the airport, * Ree:

Another witness ‘* the, spring, 1960, experiment, D; iniel

Martin, testified that he. saw a ’‘‘machine on the airport

‘ cutfing grass that wasn’t touching the ground.”’ Althoygh

he was acquainted with Cody and had done ae

work for him on several occasions, hi preeence at the

airport at the time of the-experiment ’ Avas occasidned by

some work he was then performingsfor the local. chamber

of ecommerce. He was so ‘‘astonished”’ at what he saw that

1¢

lba Z °°

he took a closer look in order to verify thai it was indeed a

“ flying lawnmower.

The final corroborating witness was James Tloward

Agerton, Sites’ Tather-i m-law, who testified that he vigwed

“experiments in’ the ‘Yale of 1960 at his farm and ‘that, at

fhat time, the machine was entting grass. Substantial

ngible evidence was also introduced, ineluding a written

esertptlion of the machine which was signed by the inven»

tors and witnessed by a third party 4n Febraary, 1960;

photographs of pty of the parts experimented with over

the period of developnient; cancelled cheeks, invoices and

sabes sli} for the various items whieh Were purchased and

used in the machine: and several of the essential parts of

the original mower. - .

We are unable to see how this evidence can be said to

fall short 6f the required proof of reduction to ‘actual

practice.” O% course, as appyllees readily Admitted, the

lawnmower was not commercially marketable in 1960.. But

U ix well established that markefability is not the erueial

teat. Ste. ea. Krarvia +. Henderson, 362. FP2d 1015, 1025

“. CPAs 1966). Toledi Scale Corp, estinghouse Elec.

Corp, 341 Fld 9723. 182 (6th Cie 5). Nor is the weight

of appellees’ proof mitizat

was crudely constructed or hecanse subsequent refinements

were undertaken to iniprove its ‘efficianey. s Seé. o.9., Lawd v.

Reaan, 342 Feld 92, 8 (C.CP. = aaa Farrand OpPical

Co. v. United States » 325 F.2d 328, 332-33-(2 1 Cir. 1963).

Appellants’ primary cortention throughout these pro- .

ceedings on the issue of priority has “been that the machine

‘ built and enetneied in the “pring ‘of. 1960- , not

— ae lack af aor sotianattan of the } inve ntérs’ sl f-

eT’ oe ae rtions is frequently a central isefe in patent interfer-

ene Smarty on the hasix of. the {ully dete ‘oped record in this

fasf?wecannot take seriously appe Nagrts”. i argument that*the allega-

‘toons were (¢ adevpis ate ‘ly corroboraterl See oem folly ic. Reviskr

& A. Carsgr, [NTERFrRE: ver Law AND Pract e (1947).

. mw

heeause the original machine ~

J I7a ! ave

possibly have operated effectively for its intended use be-_

cause it lacked: befiles. Sinxe- their contentions regarding

the necessity of bafflés also sthnd at the heart of the issues

of patentability subsequentlx/to be corsidered, it may. be

helpful to explain their position more fully. Appellants

assert that there isa critical dig@ferenee between their

invention and appellées’. Their inyention axes a “radical

. impeller,” lesigned to shoot the air out around the edge of

~ . the housing by centrifagal foree, thus creating «a vacuum

* jweard of the honsing wall which holds the blades.of grass

in an upright position in the path of the entting blade.

Appellees* deviec, so appellant<" contAnd, 8 instead a

mere propeller which, in the process of lifting the housing,

blows the air straight dewn and consequently flattens t

-. grass so that it ¢annot be eut. To counteract this effect fit-

is argu, appellees found it neeessary to install deflectors

or baffles inside the housing to direct the air flow off of its

downward ¢ourse and thore toward the sides of the housing.

Appellants tlaim that, until such time as those baffles were

* initiated into’ the device, the machine physieally could not

perform its intended task. mie

. Appellants have, however, introduced no évidenee in sup-

port of their aerodynamic thest< and, on the one occasion

when they broached the subject ‘in the course of briefly.

cross-examining Cody, they were told by himhat his experi-

3 ence did nof square with their theory. Second. all of the

evidence on the questien whether the machine eut grass

points only one way, and it ix elear and undisputed that on

the-oceasion of the first demonstration there were no baffles

in the housing.” Third, appelfoes’ original patent applica

. z° - : :

‘ Appellants have suggests} that, these who testifed- that they

saw the nm chine cutting grass only thenght that the grass had

heen ent. They postulated that. it reality. the force of the down-

warl blast of air mar have merely flattened the blade< of irae

~ ereating.the impressie§ that they had been severed.e No evidence -

y _ Whatsoever has been introduced in support of thisespeenlation and

/ the theory was not explored in the course of efos-eXamination.

We sée no reason to credit it hefe. -

. @

re | ie Isa.

tien provides an explanation which is consistent with the

evidence, Necording to their theory and they admit: thea

lack ef complete understanding of fhe etreulation patterns

within the housing the whirling motion of the propeller

- erentes a partial vaenuim at the vertex af the machine, lift

ing the erass in the more central portion of the surface

beneath the housing but blowime if Mat around the rim,

The addition of bafles, in addition te correcting the torque

problem, detleets the air in such a manner that these hades

nearer the rom are shielded from the blast of air so that

they alse may beet. JPhis brief explanation is ‘consistent

with’ the aetu: al experience that, without) the baflles, the

THachinecut a relatively uarrewer swath. Given this artieu

lation ofthe machine's operation, the baffles were no} essen

sito a showing of reduction to practice bht only operated

ta improve the machitie'’s eficieney,

Kinally, in conjunction with our conclusion sustaining the

Distriet. Court's finding against the Board wou the facts,

we also agree with us determingtion that the Board had

misapplied the only easwvited in either of its two opinions

Elinere v. Sclanitt, supra, Phe: invention there was a

bitsy counter whieh had utility as a component part when

usyd in cenjunetion with, computers, radar equipment,

. »- Geiger counters, er television ejreuits. “The invention was

vetested in. Laboratory experimen} bul was never tested in

conjunetion with amy one of the devices named. . Until sueh

time as the device was tried out under oper: ation: il cireum-

stanees, the-court, held that the requirement that an-inven- |

tion must be demonstrated until actual working conditions

had net heen met. Laboratory tests provided no mere than

a basis for predicting that the invention wauld be suecess-

ful **when put to some prae tical use.’ Jat 650, -

The invention i this case, unlike the deview in. Elivore,

. Was a cemplefe unit possessing demonstrable utility. It

was Temonstrated-under actual operating conditions whieh

could ir ne way be analogized to mere laboratory experi-

Tments offering only a hope of future worth. Although the

machine was erude and Jacking in eflicieney, if did funetion

satisfactorily for its intended purpose. * We conelude that.

under appropriate legal standards the testimony in this

reegrd ts such that it amply supports a therough eonvietion

that the Board erred in Bailing to fined that apyettors hind

Shown’ reduction to spractioe hy a preponde raner of the

evidence,

Thaving concluded that appellees were the original inven

“tors of tlie devieg in question, we are now faced with the

question. of @hether that machine is patentable to therm,

Appellants have claimed throughout that, under Nhe patent.

ability rubric, appellees eannot prevail for two reasons:

-(1) the lawnmoyer as deseribedsin the pertinent counts in

interference is wot an operable deviee, 25 USL 2 I12;

amd €2) appellees are darred from. receiving a pate nt be.

cause their amended application was filed oulside the «tata

“tory one-year period, 35 USC. £10206). Before we TE

resolve these matters on thé merit< jt-is essential that ‘ewee-

find that they fall within the jurisdiction: of this eourt and

the Distriet Court in reviewing interference rulings.

e .

First, it will be helpful te {race briefly the manner in

whieh the issues were handled by the Patcut Offiee and the

. . —

Distriet Court in this case. The question was first raj-ed

by appellants in September, 1965, shortly after the inter-

ference was declared and before *siny evidence bad been

subinitted in the proceeding. Pursnarit to the Patent Ofie

- Rules of Praetieg, 37 CLFLRS § 1.231 (1971), appellants fled”

‘a motion to dissalve the interference on fhe two grounds

staled above. “The motion was con- <ide ‘red Dy a Primary

Examiner who concluded against appellants-on both issues

and denied the motion. Phe Board.of Patent Prterferences,

in its initial opinion, briefly outlined the Examiner’. find-

ings but did not comment on them ‘one way-or the other.

Resolution of the pate ‘ntability claims was. unnec essare 1

- °

- +) os. - .h

the Board’ 8 decision since it found, he sedon the: priarity of

reduetion to practice issue, that appellees were net cntatlod

fo a patent. Ino the Distriet Court, after reversing the

Board on the question of priority, the trial Jule “stated

Urat, in view of the faet that the pecttecnntcaboafady contentions

were net fully explored’ by the Board, he —_ tert fined af

Cappropriate fo examine that aspect of the ease,

We find that the Supreme Court, hits definitedy resolved

this question ina manner coutfary te the Distriet Court's

eonelusian. Tn dell y. Worster, 12 US. 695 CIS90), on

review of aysuit in, equity under. the predecessor of the

review statute Inissie tn this cise, the G'ourt bre: sully beled

that . .

“| Njo adjudication éat be made in favor of the apply

7 eat, unless the allied invention for whielt a patent

is sought isa patentable invention. The litication . . .

cannet be coneladed ley seabed determining an issue as

“te whic hoof fthe parties |oin faet first made the jinven

tien |.* F

I? at Gos,

The wider jmplieations ofthat ruling were elreumeseribed:

in Sanfondiy. Neprer, MAUS, 18 srg There the party

whe had lost before the Board of | "alent: Interferences

claimed in the district court that he deviee was not patent

able to the partywhe had prevailed before the agency. The

list riet court refused to consider the i issue and the Court's

op nion sustained that abstention on the vrownd that //i#

Code v. Nktiebolaget: Flymo, 16s USPQ 607, 6s (DD.

1 tee . sig

“Other defenses are urged: by Flymo ¢hallenging the

rat en sof the Board's decision but these ware net deve ‘loped

in any defail before the Board. It is net fer the Court in

this proceeding, to reexamine all 3 aspeets of the. Board's deei-

sion but only te review the Board's ruling on the céntral issue .

of priority

pre ewe std «we « « *. ~ maue

aah a. % :

. : .

. Warste r did nol require that every issue.of patentability

rated ina de nore proceeding must be resolved, Rather,

the prinetiple of that deeicion was said to be that only in

the ciremmstanee imawhieh the los sg party before the Board

prevail. tn the dictriet court on the iscue of priority does

thie goes Hemtability ‘ies te become spertinent.!". Since that is

preetoely the emeumstances ino whieh the parties found

Hhemielve. in this ease, the District Court ‘Should have

paced on the merit of the pitentability elaims, See, e&q.,

(ieneral Molors Corpo ve ROB. Deite Ca. ABE a

o- "The ren serene ot hoth thee ODS relrer| het aly on the ternnys

of thy Matete whieh authorized de porn review Gf interPerenee |

rules O08 partrenlar pertinence. was the lanvuave. contained

the Law om et. prevent form, that if the dissatisfied party sureceds

“yor the detepet eorrt stich adgucheation .. . Shall wmithorize the

Tp soner to pote Such pateyt, on the yplicant filing in The

patent offier a eopy of the adjudication. and otherwise compl: ny

wrth the reepureine Hts of law 16 Stat. 205. 6 5% 1x WH). Com

pore 6 ISO 1G 19G4). Tnder such eireamstanees. as the

Court om Hall ¥ Werster noted, : . :

“TAI &t rin, ation of | the proyrity | Issue alone, in favor of

the applicant earcyine with it, as it) does. authority ta the

Commissioner to issue a patent to him for ‘the elaims in the

inteelorenee, monld: weed ssarily ques the saurtion of the court

fa the patentalility af the mvention me ylred.??

1 ELS at Gm» femphasis supplied). See alsa Sanford v. Kepner

“SIE ES. at 15 0° judicial authorization of issuance jmplies juditial

J J } :

sanetion of patentability’. As the distinetion drawn by the ca

makes clear, no such implication arises when -the distriet eourt

merely affirms the Board's decision.

“This view, that the Patent Office is required tm issue. a Tas em?

to the successful plaiatiff in an interferenee suit, has been disputed

‘in other contexts. See Jeffrey Mig. Co. v. Kingsland. «6 17S

AppALe. Bi, 129 F.2d 35 (194%) ; Glass v.-De Roo, 239 F 2d Pp

CPLA. W956). Sinie Hill v. Worster, ann Sanford v. Kapner

are controlling here: we have no Occasion to “onsider the more

general question pedarding the extent of the Patent Of i=" act} or-

ity writs er ports proceedings to decline to Soa a patent following

a suceessinl attack in the district court on a ruling.of the Boar’

of Patent Interferences. :

‘ °

der, ~~

asasth .

100,120 qed S08 (1oGO), Rouce Vv. Jbaderson, AOD at GOD,

HOS CM Cir AMOS) ; Sperry fand Vo Bell Tele. Labs., 208

loSupp. aos, Go (S. Le ee hd ‘appeal dism “dl, 117 ¥. std

401 498 CALC ie, 1962

. . ; ®

Ordinarily, with the toares in) this posture we would

renin the ease ta the District Court in order that it med

consider the evtdenee on the pefentabilty questromema the

‘first tnstamee, See ePidewater Ratent Development Co. v.

Cig lle ie Co, 272 Po 856, Cth Cir T9600 | Here, how

Over, both partied have prassed this vourt to te lye I Tiere

questions. [ndeed, appelbints uree most ctremuvomdy that

Wwe dose. Murthermere, neither party appears ta be of

the view that-the record is inadequate to this ene, Minally,

Weare fortified in-our melination te reach these es Toms

on their merits by the fact that both contentions appesr to.

revelve areund and. we lind, are controlled by our dis

position resarding the. honessentiality of baMles to appeb.

lows” invention, a, OY ,

Appelkints’ (ast claim, based on So UUS.Cl § EP2, is<thad

the machine ‘as capypre lle tes*have destened ite usine > pro.

peller rather than an impeller? Is a ol rable without baflles,

‘and that. the .counts in — ‘renee do not inelude this

eritiqal element. While it is true that appellees’ origin: al

application did refer to is battles and that. the amended

chums setting up the interference do not,” this considera,

mare is immraterial in vie w of the fact, which we have found

to be fully sustained on ‘this record, that the machine op

erate ‘ed etfective ly without them.’ The bafiles merely: in

creased the eficieney of the machine. Furthermore, there

ean be no doubt, as the Primary Examiner found, that Yhe

counts in interferences-are readable on the invention as

disclosed by appellees. . ig * |

Appellants” second claim is that appellees are barred

from receiving a pafent becuse ‘the invention was pat-

SY Nee

~~ *

pond

> ) enpra.

me goes A a tae eee ee

7 ’

whit : .

ented or dece ihed inca printed pubheation in this ior a

Porgies docary more than one year prior to the diate

of the application coon PULSE, 810). Agni their

conttntion stam er fall can the strength of their as ertion

iat bafile: were an indi pencable element of appedbecs?

orisinad application, The thread.eof their argument 7

that) for the caine reasons relied on in their elaimn: on hig.

.' operabitity and priogity iene the amended ap plication

fleck in TOG tn oder to cet Hpan mferherenen, w beiechy rniz lade

Pail no references to baffle, com tituted a man denwe, —.

ni cei

- ’

Ho that were the ence, then the “date of npiplieilion? re

2 ferreckto in the leis eonki I hethe date of the amendment,

Appellees would then be barred fron obtaining a poatenit

» heeansce a period Of more than a year ceparated the filing of

the aimendment and appellant.” receipt of a Belgium patent

covering the lawumower (Mareh est a 2), and the publi

cation of an article dict ‘oop The iuvention in a Stedi h

leclmical journal (Novembe PL, 1962). See Paling Device.

‘Ine. v, Sun Ray Drug Co, 204 KF Hat 164, 776 77% (BD

1’; em oy af} a ASS FF, aT | 272 (2d 1s 1979), ‘Br’. denied 4)

LS cas (1971). What we have ai above reygarding the

iNOOn equentiabity of the baffle structures ji. dispositive of

did not deseribe a new device, the erities|.date For deter

- mining Whether statutory bars exi-t i- the date of the

erivginal application. [tis net contended that, viewed a» of

' that date, the applieation is, subject te way such infirmity,

. Therefore, it is our conclusion that, at least In-ofs;

‘any Of the issue s raised here are coneerned, app

. vention is. patentable. Pay Vee eoncluded that ADD Mees alen

met their hurden j in establishing. prior road ietlon tg ;

= the judgment of the District Court is

be - 24a

CURISTENSEN, District Judae, dissenting: I concur with

most of what has-been stated in the prevailing opinion con

cerning burdens of proof and the subst: antive rules of patent

haw involved; but TL must dissent from its application of the

; rules of stimmiaty judgme ut. Tt seems Likely thats the

' deeision will prove more signitic ant as a precedent in the

latter aspect than in the former, for the. substantive “gs .

invelved is pereeptively analyzed, and aceur: ately stated i

aecordainee with the prevailing view, while if the decision is

.. Widely followed with respeet tothe, proprie ty of suminary.

jinlament tlie trials of nume Tous types of ¢ ases which. here

. to Vater ive been thought to-invelve questions of. ft wh not.

pe arenes toe summary (Hsposition will be renderetL un.

Necessary, ‘ , & “

The prey: ailing opinton, before conZidering the substan

tive issues of Pxtorrty and patentability, aleals with elwo

preliminary. questlyns: the first as te the burden of proof

rin the trial de neve before the digtriet courts the second:

being detined as fellows s*Given that standard of review,

. ean dispesition, short of a full evidentiary hearing, by way

(Armas judgment. ever he appropriate in ae ase in.

whieh the Board's conclasion is to be overturned? Agree.

ing with ‘the statement of the first question and its answer,

I suggest that the second should not be based tipoen abstract

ultim: ites but should gonsider whe ther under the ciream

stanees of this partienlyr case summ: iry judgment could he

xr anfed without unacee ptable violence to the edoverning

eoneept and principle of summary judgment. In lay Opinion,

in view of that caneept and principhy the etry of summary

judgment constituted error in light of the gyneertain nature

of, tlie, proof, v arying, ijferenees w laich eduld*hbe .dri awn by

reasonable minds, the absence of documentation on the —

“eritieal que stion of when baffles were added, the presump-

tive corre etness ofthe Patent Office’ action,’ Cody's hea Wy

late case of Pro-Cal Corp. v. Commissioner, 436 F.2d

US.P.Q. 17 (D.C. Cir. 1970).

a | 20a

burden of proof before the district eourt® especially on a

canotion Jor summary judyment, the lack Of a full explora

lion of the f facts beenuse Summary judgment. denied an’

opportunity to deve lop them fully ata trial de nono, and

the limited office of summary judgme mt except where itis

clear ‘that theres are no gentiines issues Of material fact.

Without deciding that summery judgment on an appeal

from the Board's determination Should’ never be rranted

it is betieved that ons the record before us the required

“thorough ecouvie tion” Npuld not be prope hy enterfainedsas

aomatter of law and without the determination of the court

as a fact finder,

Fox vy. Johnson & Whimsatt, 127 F.2d 729 (D.C, Cir. 1942),

con the basis of whieh the crucial problem of summary judg. |

smeut is resolved in the prevailing épinion, is distinguishable

“from the casé ‘at bars Nonethelesay it may epitomize my

point of deps idan’ as it seoms bi. Cc apon-two-: assumptions:

Which do not represent the peeCailing, and what I think 1s

the better, view today: (1) that if both sides file motions

for Summary jadgment each concedes that there is no £en-

ine issue as s any material fact and in effect consents to

a waiver of trial; (2) that- where there is no ‘dispute as to

circumstantial erg a ease can. be deetded on sinmmary

judgment even though different-infereraes on erucial mat-

ters might be drawn by reasonable minds from the estab-

lished facts. Motion.of loth parties for summa ry judgment

did not convert pre- trial proecedings into a trial nor waive

the right to trial if the case could not otherwise be resolve da

summarily, for a‘party may concede that there-is no issue

of fact if <s legal theory is aceépted and yet maintain that

there is genuine ee to material facts if the oppo-

*f.g., Morgan vy. Daniels, 133 U.S. 120 (1894) - - United States

v. Szuccs, 100 U.S. App. DAG 24, 240 F.2d 86, 112 US. SPQ s

(1957); see Esso Standard Oil Co.-v. Sun Oil Co.. 97 US! oa

}

D.C. 154, 229 F.2d 37, 108 U.S.P.Q. 161, cert. denied, 375 US.

973 (1956). aor : ~

‘ +), . ‘ ‘ . ; v

| won ray s 7 .

| Heit ; e ;

nents theary bs adopted. Vinerican Widelity & eis oe, Nees

Loudon & Mdinburgh sg uC, 4 ea 24 lth « Who).

©. Summary judyietit £ preelucded ly conflicting ‘fe reneds

drawable by. cea minds Crom undisputed) mivterial

: Bee xia Whie h if sat tled irs tiast the moving party _— deny

a, ne jdment. Miya inp. Op. Comm ni. tited Xess tn of

od. & AC of Plan, Mte., re Md 109d (6th Ae INO) iy

Columbus Serviees 3 Preferred Parilelviisy Vsrintennines, nae

Bovd so (oth Gir TGS), brey vy. Mratket, S60 lid 377

, -: (toth Cir. 106) oN. me “Groves & Sons nig v. Olio {

| Turnpike Commission, 35 Wate 2so Cath Cir 1). Vhs

is not ai esoterie-prinerple, “Dut dine thit pee nae the entire

- daw with reference to the propriety oof cirawine isses |

from fnet finders. ‘Thus, 4 pleading must be conside aa is

ae aswinst aomotion for sum: ry elispeds ition in the ‘hight most’.

favor able: to-the pleader and with all rensonabje inferences |

to be resolved in his favor ya motion Tor aalirected verdict

See ae for judgement notwithstanding avove diet is confronted:

i e = wifh-similar: ‘intendmrye ants, and ity oN: rnin ‘the sufficiency. ¢

of evidence fo support a judgement on appeal, appellate

courts consider evidenee. and mfere nees that may ti vinly be

ee drawn therefrom im the light most favorable fo tlie party

who prey nied before the faet tinder. Ae motion for sume:

‘ . mary. judeme nt prese a issues’ of law, not of faety and

| “theypurpose of Rule 36, ER. Cive 2, is to pe rn e xpeditions

disposition of cases Where ne uibet intial issue of fact is

‘ "presente d for rs termini ition: it Is not mete snide dl that litigants

shall be deprived of their righ{.te a full hearing before a

tact finder-free to draw reasonable inferenecs among: con-

rones if any material issue of het is fendered. See

Black, Sivalls & Bryson, Ine. v. National, Tank Company,

2 — ioe - (10th Cir. 191). The confining: of Grudements

within sueh, limits seems to me to be an enhancement of

the judi ¢ fal process rather opie its frustration.

- Lhelieve there, were mi: aterial i issu vs of fact vith ye ference

to. the vital questions of the time ‘and sufficiency of redue-

eunder ordinary Working ¢oditions. Thus, Co

oF ta ’ -, . oe + * . a2

.@ .e* te , : ~% Zia.

fien 16 practice whieh were adequate to prechigde. Grimary

jucyirent laud (he edeeis ton of the Board been before the nigh

OTE Wwibligut any pre: Winiption. or intendment in it favor;

“ander the rule that its derision Should be aeeeptedk as cont”

frolline unless on trial de nore. the Tourk ap, fact’ finder.

maifertaiis thorough. conviction fo the contrary, i seem

Inappropriate ane Hp Posen. “On the. facts of this case to

hare, resolved the queation: on Mary Judgment,

No ‘i wed. sane factorule as to the proof eenfial fy sdiow

recduetion to prs aeliee: cin In: laid down, and thie present

The primeipal diflic ulty in ruling on Sieh matter hay teeny

“mary (Grey Whe decision i aioe’ shui one: of faet?

in tight of the Smee sable law. Dt bias -begn

saute thi il wy P} hie oxic exe ut of testing: nece.-ary to effect

noreduetion: to practice. bs matte ro whieh nowt byes deter

mined by the eirengn tances: ot ene - eae Har chee and the

nature, of the device. involved.’ 1. Pierng v. Hietrvey, 255

I aed iy W3 CLCLDLA, “918, 110 2 S. SQ. 47. (1956).

“My reading. of the eases dndieales that the Patent Office

did rol SO HELSCONCE ive tine Osse nttad elements of a re ‘actor

to practice that its decision as lo the law. Ww as clearly errane

ous and thus reve sible by summary judetnent dipart. fron

AULY tte sstion of fact. The trial, court’: memernndurg per

coptively. “aniilyzed tie vevieral require ments not incon ee

sistently with. the eaitihorities : but - the court clencree

*fonded. fo adnee the que-fion to an ove rly : neues ne of

whether the Cody machine was de monstrated 40 cut eee at

all, whie H question if dispositive ‘ly answe red in, the canes

dive, On the other hand, the, I} rGayel of 'p atent Interferences

emphasized the requirement of practical. demons eat in

~ terms of satisfactory ope ration. Confirmitig: its decision

on reconsideration, however, the Board rested Its eonchision’

on’ the proposition that {‘... ,: Just cutt

Ti¢

practical utihty of the machine for its intended pUrpose

regard for its. effectiveness, is insufficient, proof of wh,

ae es i

- et al. did

. " . : ee ae Da

eee we \ Na ft oh

> % - ?

net sustain ther barden of proof and did net prove actual

foduction ty praction of the itvention te tsscmnes, °? e..

’ . *.

i :

7 -

2 Despite the vauricent Ropresstoms of the reeptna rertgaee nis, we

think that neither the Bowed ner the eourt “essentially Te

Scorecard theagverniger b: x which, on the one hand, Would,

_ fender ansuflicient as redaction ta prpetice aomere tera

euttifirol bd: ake ~ of ae be lbeewever few or insieenifiesnt and

Irfespwetiae ‘at uuy pry elie al\udility in relation te tts wm

he nicdead drurpaost, amd yet, on theather hal, reqoecnines there

cay Noes sn Shevedanet tone toy pr ative bey gan crnbeotinne wl whieh’,

oper: ates Jmperfeetly ar erudelyyat long as it ‘dennmnst rates

~antnis sulstitntial deere of practical utility for “dts intemled ¢

pIrprse. It cloes mot appear that the: devi stem of the Berd

of Patent diterferenees was pre: wtised on such a definable

‘ervor of law as.do free the distriet eonrt from apptying the

“charh erroneous” or ¢hronch conviction” test, See

‘Sting t. Commissioner, V22 US. app. DAC. 361, 353 Fd.

rs 17 PPA. SM UN): are ‘

Vegol we Jaqnime that thu: Bait erred in a tog riscidl

of limited de tinttion. of the teduction to persist iene respuire

ments, slmmary jadgment would net be authorized none

theless <jneo “ont if there wert tie facts in is am which

word fave precluded sulnary judwwment under a proper

‘detinitien or standard I for reduction to practice could .the

judgment pe Suesterryerts_ Png

Mor a earetul ‘readéng,. the transetipt of the tostintony

befote the Board is convincing to me that reasonable minds

could differ as to its sufficiency to ‘show reduction ta ‘prac-

tee under the proper. standards. The testimony tending

te sugpert a reduction to practice i¢ in many respeets vague

aunh insatisfgetory. In its assential aspeets the proof rests

‘ippertantly non the testimony of Cody, -he being a highly

interested: party. Ev identé, as to the time baffling was

added to fhe device, which the testimony suggests was

originally of dubious utility for its intended purpose, its ‘not

"aft P * “in ms “ .

deengrented, consisting of a rather en-ual In

snedelgt ieoes, the etenbecvedi ern nt ito “Doseed pyeel bores pores ere “dl for

Thre Paet-fireder corked eonmcicber the a er other

bie rere tng at ae puelserent w liether the jrrmior

pourtye feed scete faietorily srpet tea beteredente. srernay: rally

_Sarter ¥. Arkansas Nabirad4tias Corp. S21 FS. 6: yf Vit):

oo § Nevise and Caesar, Loberferenee Law & Practier, Chapter

NNNGDD S GOD ef seg, CTYIS). Scvorles Mie Xener v. The chke,

rds ~*~ App. Bp.d*. 388, 9.38 a | “Sie, cst S9° 4) 29) (oe.

“ir, PE), ated” Degen Beeky, SA Pid O87, 4 =f cS es ¥

Hee ESET D. chad ci iy, nee ermine the « SEER

requitedl in interference proceeding. OF. Poterchemicn?

(dep. v. Watson, lin o. Supp. WO UTD Se 7s ODO,

1, af A. We TS. App. DO 14, 21 Pot oo (1455).

Coly\enls attentjon te the Faet that Fay ioe did net ern.-

: the Wil espe le-fore the Board and tha- Fiasderd tt

rm fore “here

tte preedion,

Arete tater

' Sow

e\ann

? - - ‘ * “ee = ag

-° ee 8. “Aleout- when way i? thart ® yen anti John LD talgend t Pye

becifile-. cvnn thee reanecbe cftee thot wou re talking about Tee .

“A. That was im the fall or « pitter,"t felieve 1 was It? was

‘after Jobin @xcusg Thes projert, wasn) worked ‘on gist? dleringy

the heart of the ‘ aston dobn wasn't in Pip afea_2' tha

-mnygl Fle lve"wt that tree. toe, I

knew [went to stmmaner emmy that-wear : o-

nG. Wheat wort of baal did Gon wustall in the fall of Tt

A. They were Some. that wa. attar “hev] Yor the You ‘ler und thet

+ tin

Li Tt)

ane J

was Stell us. the (riearehs

« ny attached te the ansede of.the hetsrng 7 ey Were air + Oe eturs

te correct the torque of the rmeeech ine A , A

37. The oes thal were attae lend th the. spider, wat. were

they for !. .~ 2»

A. For terque. : : :

5S. And the ones attached te the beqcaigd what gr-re t} fag?

A. Partially for torque, ten», and to jet the ver; tips of the cytfing

ne out, : :

% 4. Did it accomplish | that? : a oe ‘

”_A. Yes.*it did.- but stilt again it stj-wasn't as «ficient we

St was eMieient but it watn't what we wantei. It wes apes ont

‘to thehoint where it would ent grass okay but Pee alwars br, “a

_ person that if its" worth ‘doing it’s worth doing t right amd «

always “strived for the best.” Ti ate x

SS cata 73. i ee

* *

‘ C = ; . '

z ea 7 7

clarify any questions left by their afireet testimony. “Tean

accept this ws aeitier shifting the bitreden bo the senior party.

or djex ing Cody ef his, neras requirtrg the Paarl as the

fact finder to accept withaut question the testimony before

it, This is especially se in Fiew of the interest af the party

te sity iar cored thie Jonas” yee ried whieh had elapsed between

hs stime of the testumeny and the eve ut in ie tian.

‘

if ‘the. trial court were the facet finder, as ingle ed tt would

lee at-the suthunars judeme nt had een set ‘aside and. the ease

permitted ty pracec alto trial, there may hate been. saflicient

factital que stion in the evidence alrendy before it from: the

“Board lhe aring in thegabsenee, of other eVideneesto pe romt ai

_ thorough conviction in faver of Corly despite the Boird*s

dete rminatiogd te the eontr: ary, But. gbher-evidence at dhie

trinko ora different but pe srintissth he appre aixal of the record

hey the fact finder could well re sult. 12 an absence of Sane aL

conviction on its: part.

In Poller v. Colum cin Broadeasting System, Ine. 368

US. 404 (1962), the Supreme Court emphasized that sum

- mare judgment under Rule 6 eam be et: anted only where

the moving party is entitled to judgment as a matter of Taw,

where it iS quite elear what the truth is and where no

gernine issue retains for. trial, and that the purpose of

ew fit rule isnot Jo-cut litigants off from the rigtt to trial

if thet really have issues to try (citing Sartor v. Arkansas

Natural Gas Corp. -3215U 8. 620, 627 (1944)).- See also

Edwards v. Mazer Masterpieces, Ine. 111 U.S. App. D.C

ond, Ma Beds (1961); Valev. Bonnett, pgs App. DLC.

116, 191 F. ee Nhe (1951). Dewe vy. Clark, 86 U. . App. DC,

31, 180° F. , 766 (1950). ty he ers

The Court was of the view in Poller ‘that summary pro-

- eedutes sfould: he used sparingly in complex anttrust litt

gation. | think ‘that poliey considerations, although assen-

tially for other reason’, require that same view here, where ,

the “thorough conviction ’’ as a foundation for overturning

. a = - ie vin -

Ss J = se .

nds

‘se

areney ne lien ae l rare ‘ly de. entertaine “ without according: :

opportunity for develope nto of Pacts “beyond the record

av hie vl lect the ageney to tts ss sumnplively correct conch

Sion,' same a weishing of the testimany before thre board

either with or without supplementation and the reasomatile

inferences ta be drawn therefrom. . &@

Kor the reasens Stated’ DP woult re angude the cane to the

disttiet oun for findings of Tact, concede lions of law, ane

judgment after triah

IN TE UNITED. STATES DISTRICT COURT

ok THE DISTRICT OF COLUMBEA | 4

Civil Acfion NoLW6o46700

Jous F. Copy er at. Plamliffs :

Vv -

AgrignsoLacer FLYMO ET AL, Defendants

fe - e

; Piled; Jung 19, 1969) Robert M. Stearns, Clerk

Memorandum Opinion - eae

his matter comes before the Court on ¢ro-- motion-=

for sunimury judgment. Plaintiffs (Cody) who are re=t-

dents of various states sue re ssident= of Sweden (Ferma)

under 25 T.S.G. & #46 challenging a decizion of the Tt ird

of Patent” baterte srences dated March 25, 1967. The Board

rejectiod the claims of Cocky, tht junior party, whith had

‘been set up in interference with a patent award: “d FF lemo.

The snvention hete relates to a . wheelle <5 grass ¢ utting

niachine having 2 commonly dr} yen rotary cutter ane al ir

- . -

- .

+f. Stieg v Commissioner,

122 U.S. App. D.C. 1. 353 F248

899, 147 U.S#P.Q. 356 6.1965). | s

, $5 4

- “ ie 2

i a = e+. +t

impelling means The fir impeltine means produc exon

Hund foree against the evrigend.te Hppert thre inert Venn anne oe

cushion of aur at a distance thwove the round cluvnne the

eultiner eperidgen. The ubttmate ebyoet of the invention

ison oerass eulline mitehine without wheel. wheedi os ded

off VYhe eras. bw air pressure megqenuted op soeh Pasdien -

=a . - ee

that the machine rematie- in preper pesturt for euttine

“ wethent the air pre caure Matfenttis: the wrass feo i prevnnid

thet make 24 wat tities seuapor me tie al.

Mivine bad a fitine date of noe 16, 191, and coukd mol?

i behind that date” Cody" ehiims were based ea a otrae

leveloped on P60) “Phe Board found that the miaeTimne

Codvetn EGO inelided: structure to stpport. the

_ the imterferenee amd showed es ory feature of

tie ihvention as defined in the. eunts. The osrel, however,

ale mied Cody's elaine beedwtse Cody hurd Failed te prove

“Ay alpre fiotchs rance of TheTexidence that the ¢ ‘oly machine

Was “tacefptahle or. ‘satisfactory’? in operation. On.

leberpepelierses by the Boiird this view of the proofs was .

tated somy What différeptly. The Beard indicate do there -

hs ad not heow anoaetual reduction’ to) pri etic ew] bieh was

onpl: pine din the following terms: EAS

No‘douht the tests in Aprilet 1960 amd «at later un

. preven dates were of sin encouraging nature and may

have justitied a prediction that. the invention would

probably be-suecessful Ho and when i could Tr pout to

¢ practical use. However reduetion te practices requires

‘more than that.. What is required js net a mere basis

for prediction but an actual demonstration, See

raat v. Sehmidtt, 47 COPA. 98; TAT OG. 288 3

O78 F.2d 510: 1 US. 053; 1960 °C De 243 a0.

tie) ee te .

- = . . * e °

-. These determinations are erroneous in law and fact. The

hs : of, wl heelles ‘Ss gTass cutting machine invelved ir ‘the ”

‘ference Was poterti tally a hasie deve ‘lopment. of con-

a BS ty aa ; oe . ~~

umd the validity of Cody’s pos ition gs n

“yey, . = ;

a shen - d =

* ° .. «4 - ~ . » -

iderable concequences in the absence of prior art.” The

contraliccue before the Board was whether Cody, the junior

- " » ° 2 " »

party with the earher conception date, had a machine of

practwial ae and utility. Callison vo Dean, TO bid oo.

(10th Cor, Td : Burson v. “Vogel »2duS. App. D.C. 388

(107). Mflicieney cannot be questioned, 'T hie ( lody machine

cul grass catiofae ‘tory auder operating condifions although

the with of the enuf was notin relation to the leyeth of the

blade at the optimum desired. The machine alse diad ufility

in that if was nel a frivelaws idea but was capable of being

applied in prhetieal affairs and had an apparent industrial

value. The fact that further exptrimehtation and. refine

ment was deemed necéss&ry for the machine to peach: its

fall potential is of tie consequence. The inventor was not

*proeceding on Taborafory theory; there was actual physical

practice beeanmse if was*shown that the invention werked.

The niterference coants did not ‘biol. “4 width of sent

dest roye “ hy

jhe inventer’s recognition That improvements were des

bike. Dhiddveth vy. MaStoras, 87 US. 27 (1921 -

The Board's reliance, on Elmore x. Schanitt, supra, is

See Without. reviewing the facts of that case ID -

_ theta, wt ors le ar thet thy: Court of Cis toms and? Patent ¢

Ap seals rejected the counts in. interference because the

invention liad net ‘been reduced’ te an ‘actual de ‘monsira

fien such as eneounte redin its pyactical Ree but wis = up-

ported sole ly on a basis of prediction founded on. laboratory

tests. The” nub of the invention in thix instance is a Inachine

- that eyts ¢rass and Cody’s machine ents gras in actual

- all of the m: ajor elements of the claims in: inte rfe re Boe,

me Bivime’ s counts were not based® upow the u tility , of.

Flym®'s invention under any specified opefating conti:

tions of terrain, Slopes, type of grass or the like. Accord-

ingly, it Was not proper-for-. the Board to reject the Cody

claims. zwerely because the Boardeaynare ntly felt: that

Flymo’s machine would. work better than Cody*s. Cody

has the prier conception date and his structure embodies

bd Set ;

Other defenses are urged by Flymo chatleneine: the

ritionale of The Board's deemion hut these were pot dee

veloped -in any detail before the: Board. Tis net fer the

Uo no this phoeeeding to re examine all aspeets of the

Board’ decision but onty to review the Board's. ruling en

the. central tague of priority: Priority was elearly ‘estab.

Lisshoad seri phease was a Saflicient ‘reduetian te practiee as

WY imatter of law, ae es

Summeiry judetient willbe erantedefor-the plumtitfs and

* defendants” eress motor for summary judement is dened.

“The Board's determination ts reversed and the naatter is

femanded to the Bostrd: for further proceedings consistert

with this judgement, : ;

4eounsel shialk submit an approprrite order.

(Sigtred) COPEL AT X. (iesei

, i : United Stites Distri / Jide

June 19, 190e. roe ae oP

: : ;

so 292 (e).

2) P % z

Pararie . _

| ited Nov, 3, 19é 1

NITED STATES COURT O1 ABPEALS e

FoR TIE DISTRICT OF COLE MBEA ¢ Piney re ie : xs

September Pern, bel | -

=") eh ote” ls

‘Jous BL Cony, er an

ee V. . ’ . , a *o

Anubnowacer hiyao, er ai, lopellauts

Before: MeGownn ane Robinson, Cirenit Judges ; 4 ‘bri

ensen,” United States Distytet Judge for the District of

Utah

= . . Order ce

“Qn considetation of appellant’s petition’ for, rehearing, ’

¥ sc, | ; : : .

Onpene » by the Court th: if appellant’s aforesaid pétition

is denied. 2 ae ; h Silene

\ oe a Boos: Per Curiam

Mailed. Mar. 29, 1967, U.S. Patent Office}

ae ek ee

. e . \ ‘ *

in Paveh No. 2%

9 . : ’ &

. is

* Sitting’ hy designation pursuant to’ Title 28 TS. Code Seetion

“Distr iet Judge Christensen woulk l erant appe lant” S petition for:

, re thee uring. is

— “a4 Soa, ne

. ; ° 2+

7 . ic ms ag Sr

. eat Pr THES NITED STAKES PATENT OFFICE

act = - i "3

a 2 BEFORE THE. BOARD OF PerPENT INTERFERENCES

Patent Interferenee No, 94,824

= . io

—* oa

Cowy anp ‘Serres vo DariimMan

? : . >. PT: ’ 4 re

a GRASS CUTTING MACHINES, *

wit

Final Hearing :

: 7 . danvary Iti, 1967 | .

ae ‘ation of John F. eee George W, Sites filed Now

vember 7, 1962, No. 236.108

." > Patent granted Karl Ronit? Bato: November 1, 1963, ey

. f No. 8,110,996, on applicaffon fled Mareh: bons 1962, No.

- { j 1s 885

- ‘ ‘ —____

on *

Mr. Rdward Raylor Newton for Cody ef al,

Messrs. Watson, Cole, Grindle. and Watson for DahIman

tts

. = .

* : -* - nee aif - ; a *

Crews, Williams and Capelli, Examiners of Interferencés

Williams, Examiner of Interferences :

° . F o

2 : = <

This interference invelyés patent No. 3,110,996 issued to:

DahIman, the seni@r party, on November 19, 1963 on an_

schist filed on March 12, 1962 and application. No.

36, 108 filed by Cady et, al.,.the Junior party, om November .

: 1962. Onky the junigr oanty Cady et al. took testimony.

Both parties have- filed briefs for and were represented by

counsel-at the final hearing.

During the motion period the senior party, Dahiman,

moved to dissolve the interference on the grounds, (1) that

a, SO a * os il °

the junior. party’. s dise losure was nof suffici ‘ent to support

the breadth of the counts and, (2) that the coimts are tWn-

epatentable foo the junior party. The Mxaminer denied the

motion- holding, as to the first ground, that the counts are

clearly readable on the junior party?s disclosure and, as to

the Second wround, that the junior party copied the.counts

In issue from the senioy party’s pagent within the one year

period provided by 35 U.S.C. 135, .

ere eae . Se

~~ “The invention here in issue relates to acwheelless grass _

entiing maching having a commonly driven rotary cutter

and air impelling means, The air ‘impelling means vpro-

ducessa Mnid force’ against the eround fo.support the tma-

chine ona cushion of air ata distance: above the ground.

duritig the cutting ope ration,

The issie be fore us is set forth-in thre “¢ counts. « Count 1

Neittiralive ona =k S ——

Count t

“2

A grass cutting machine comprising a housing hav-

ing a bottom opening, ‘the peripheral edge of which is *

located Substantially in a plane, a cutter. mounted

said housing, driving means for said entter, and a-

radial discharge “type fan driven -by* said ‘means for’:

producing a flow of air radially t6 strike the-honsing

_and flowing out through said bottom opening. there-

from along the. peripheral-edgé at rates suitable for

keeping said pe ripheral edge. é at a: small dist tance above |

the ground. by ground effect :

As junior party, ‘Cody et al. have the bure cA of \. mg

._ priority by. a preponderance of the evidence. We have -

considered .the senior party’s conteStion that C ody et al.

should be Fequired to prove their-case beyond any reason-

able doubt. However, since ‘Cody et al’s apy plication was

filed prior to the issuance of the senior 5 eh s patent ,and—

: <&

"ae

i Be . .

*oo>

= S ) * . Ooh ~

. >

las a sutic ‘lent diselosure to’ — the patent hae

copied lv ¢ ‘ody chat, within-one Vedr after the j Isstiance of -

~ this ‘patent, Cody ef al’s Jairden of proof need onty be. by

the pre pondorance of the evidence. See Wirkler y. P er kins

etal, 44 COPA 1005; 114 ULS.P.Q. 284. 1957. 5. Spd; 240.

EM’ (2) 502 and Paivinen Vv. Sands, 2 ae PA 906. SIZ Of.

ASL, 339 F.2d 217: 144-0 SPQ 1; 1965 CD (31.

Thi senior pi inty, bd: allie: in, relies solely on the be nef of

the filiue-date of his corresponding Swedish application,

“We find no question as to a. corresponding disclosure in thie

Swedish application nor dias any que stion been raised: ‘by

Cody et al. ag toan tdequi ue basis in-either of Dahlman’s

applications. WR therefore find that Dahhnan, is entitled

the benefit of the filing di ile, March 16, 1961, of his Swe ish

application.

The juntor party, Cody ef a/., bases. Rts ease for an award

-of priority on a contended actual re «duction to practice dur-

ing the springfand fall of 1960. Three w ,{nesses, Danicl

EDS ith ‘ind Saas Howard Ageton, have {esti-

fied to aes, os na machine brijlt by ¢ ‘ody ek al, during

1960. We Siar their testimony to establish that the mia- .

chine built by, Cody ef al. in 1960 ihe ‘ude d ‘structure to- SUp-

port the counts. Howe ‘ver, in order to ‘prove an actual re-

duction to practice it is not only nee essary that a party

SJprove that the constructed physical embodime “nt, which: is,.

relied upon, show's every: featur e-of the.invention as defined

in the counts of the interference, but also it must be proved

that the tflachine ope rafed in an acceptable manner for -its

inrtendec uurpose; The intended*purpose of the invention

here Wf issue is to eut grass. All of the above named wit-

“nesses-testified to the fact that the 1960 Cody ef al. machine

did operate to eut grass. However, we do not find from

the record that the results of the machine built in 1960

were acceptable, Considering the inventors’ own. testi-

sian with réspect to: the machine built in 1960 we note

; , 39a ee :

‘that’ tiie coimventer Cody testified. (R. 49, Q.120). to the

operation as follows: -. >, ae ae

5 “* 120: Would, you Acse ribe the operation of the’ mae shine

when you eut grass and I think you did siiy thi at. Vour

out Tus in April of, 1960, didn’t you!

A. -Yes. Well? we were vot. getting gat over the full’

leneth of the cutter blade. We were cutting: more -to

the.center and the maéhine had’ quite a bit of torque

and we knew? that wes would “have to correct ‘both of

oS. these, things. i p ar: ee one es an.

"We, also find similar’ testimony “by the. coinventot Sites °

us er D4, Q 40):

40), Let? s go hae k tothe heat machine vou" batite With-

out the Skiat and you, tried it.’ I believe. you told’ me it

' i actually cut grassy is that right? noe ae

ov Ns “, «°) A, Yes, sir; it cut'grass. Tt had a.torgue problem and:

™ 2 -it didn’t cut the-egrass to the best possible, what you'd

really want, T riean it waist "t the ultimate in cutting

x 9 grass but it did cut ‘grass. “It made a fair swath; but ¢ ;

‘it wasp’t giving us exactly what we wanted so'we went :

: “inside ind had.a torque problem which we tried*or-

recting and did correet the torque by putting air de--

fle ctors. in. it. ie = ee ie

ie We note that hoth Cody" and’ Sites : testified, (R.. 49-503,

_ . Q-Y21, -2) and (R 94, Q:41) srespectiveTy, that air r deflectors

: and ae were subsequently added. to -evercomie, thes ‘torqu e

and cutting problems, Howeves, from their OW te stimpny “i

and exhibits it. is clearly evident. that a great de aul of cs eae

ptrimentation wis carried on “subseque nt to the coastrue:

tion of the machine built in 1960. * eve

For example Sites testified (R 98 Q) 63-4) :

63. T meant to say the machine; did vou. modify. the

original machine after that? - >. A

som 8 ;

f : nee :

a i Ta

40a -

*A. Oh, yes; the original machine has been -modified

many times, ree oh

O64. Tlave you and John built any other mifehines ?

-A. Yes, we ‘ve built 1 don't know how m: uny different -

models, an e: sy dozen different models from this first

original one we ‘re ti — about up to day we've built.

many ditfe rent mode Is. .

Further, we find. Exhibits 20-22 to illustrate many dilfer-

ent forms of propellers, torque fins, baflles and torque tabs

: Ss got Pp | l

that were accumulated as a result of the juntor party's

Various experiments. Tlowever, we.are unable to ascertain

from the reeord when ‘and whieh parts were included ina

machine that resulted in satisfactory operation. We there

fore tind that while it is. clear from the record that the

junior party's deviee built-in 1960 did) inelude structure

r ‘ — °

that would support the counts of the interference, it has

‘not been proved by a preponderance of the evidence tlint

the machine’s operation was satisfactory,

We therefore find that the patty Cody ef al. has failed

to sustain their burden of proof and the senior party Dahl

man must prevail on the basis of his constructive redue-

‘tion to practice of counts 1-3 by the filing of his involved

appheation.

Priority of invention of the subject matter in issue is

hereby awarded to Karl Rudolf DakIman, the senior party.

sree oe ’Mavrice’A, Crews

“——~_____-- Examiner of Inte = renees

~Tox-Verne Wiaiams

Examiner of interferences

SrerneN W. Careuui-

Examiner of Interferences

Board of Patent Interferences

[Mailed Jun, 1, 1967, U.S. Patent Office]

Paper No. 26

” at ‘

. ae Ne EE Ce ENE TTS, rites. Pe

Wee oth da

IN THE UNITED STATES PATENT OFFICE

BEFORE THE BOARD OF PATENT INTERFERENCES

— | Patent Interference No. 94,824 |

foby AND Srres V. Da tiMAN

. ees Reconsideration

On Mareh 30, 1907, Cody ef al. filed a peel for recon:

sideration of our decision (paper No, 23) mailed on “Marelt

23. 1967. On April 12, 1967, Dahlman filed a repky to the

above-noted request, |

aS 7

‘In their request Cody ef al, alskorequest an oral hearing.

[tis not our usual practice to grant an oral hearing on a

request for reconsideration and we have found no facets or

cireumstances in thiS case which would warrant a depar-

ture from that practice. The request for oral hearing is

denied.

In their request, Cody et al. assert (page 2) that. the

Board overlooke ul the two facets that ~

(i. . the April, 1960 «machine operated very well -

and a wean tid , *

(2)... by the fall of 1960, the wisahilias was cutting”

at the tip of the blade.

They then point to certain testimony .of Cody, Sites,

Neill, and Martin relating to-machine operation and argue

at length that the Board’s conclusions and decision are in

error.

_, We did not overlook the testimony referred to by Cody

ct al. and we regard it as being obvious from our quotations

of portions of the testimony and the discussion on pages

4-6 of. our decision that the overall record was -considered

P a 3 42a

: by us. Such consideration did not eonvinee us that Cody

ifat. had proved, with the required preponderance of evi

denve, that the machine built and used in April of 1966),

or as modified “in some indeterminate manner at any par

tieukar prover date in the fall or winter of 1960 61, did in

fact operate ina satisfactory manner for its intended

purpose,

oe rs e : ; 7 ; ~~

No doubt the tests in April of 1960 and at later unprove my

~ dates were of an ereouraging nature and may have justi

fied a prediction that) the invention would) probably be

snevesstut-if and when it-ecould be put to practical use.

towever reduction to practice requires more than dhat,

What is required is not a mere basis for predietion but an

aetual demonstration, See Khuore v. Schmitt, 47 COPA

O98 2757 OG, 288; 27 8 Be2d ot0; 125 USPQ. 6555 1960

oryele C.D. 296 (300). : oe |

still believe that just cutting grass, without réeard for its

effectiveness, is insufficient proof of the practical utility of

the machine for its intended purpose under ordinary work-

ing conditions. ‘Thus, Cody ef al. did not sustain their

burden of proof and did not prove actual reduction to pr: le

tice of the invention in issue. 3

The request for reconsideration is*eranted to the extent

* *. that we have reconsidered, our decision; it is de nied with

Tespeet to mi king a any change therein.

: Rei Mavrrer A: Crews

Examiner of lnterferenées

os? La Verne Winns ’

Examiner of Interferences

Sreruen W. Capeiir

Examiner of Interferences

Board of Patent Interferences

: | AM op ee ass

Nov. 19, 1963 K. R. DAHLMAN . 3,110,996 —

’ GRASS CUTTING MACHINES One

Filed March 12, 1962

0 Figf

= ie :

yt Bball i

ATi roeuers

Ga Bos tEoAE?

- the bottom edge.

Bib REN EIB A Mp he A ae

dda : ee

Patented Nov. 19, 1963

| United States Patent Office )

: 2

3,110,996 ea

GRASS CULLING MACHINES

Karl Rudolf Dahiman, Malmo, Sweden; assignor to Abtic-*

bolaget Flymo, Malmo, Sweden, a corporation of

+ Sweden ‘

Filed Mar. 12, 1962, Ser. No. 178,883

Claims priority, application Sweden Mar. 16, 1961

: 13 Claims. (Cl. 56—25.4)

This invention relates to a grass cufting machine, ¢.g. 10

for use as a lawn, mower or a crop harvesting machine.

More particularly, the invention relates to a grass Cyt-

ting machine of the type having a power operated cutter. .

Such grass cutting machines are usually constracted with

said frame being supported on roilers to keepthe cutter

at a suitable distance above the ground. The said. framg

and rollers are of considerable inconvenience in various

_respects.. Thus, they form an obstacle to the cleanness

; ; 2

trally of the cover portion 3 there is provided an opening

4, which js surrounded by an axial flange § forming an air

inet chamber. -An air inlet opening 6 is provided along.

. Part of the circumference of the flange 5, said opening be-

6 “ing covered by a protecting grid 7 which is-held in posi-

3,110,996

tion around the flange $ by means of a spring 8. Two —

mutually parallel sypporting bands 9 are.mounted on the

inner side of the cover portion 3 of the hood 1 in posi-

ions to ext&nd across the opening 6, said supporting bands

serving for the attachment of a motor 10 such as a gaso-

line Operated engine. The shaft 11 of the motor 10 ex-

tends centrafly into the hood 1 and carries a ventilating

wheel and a cutter 12. According to FIGURE 1, the ven-

-tilaung wheel or blower consists of two circular discs _

a trame surrounding the-operating area of the cutter. the 15 13 and 14 having a plurality of substantially radially: ex-

tending ventilator blMdes 15 mounted therebetween. Hach

of the ventriator blades 15 is wider at its end facing thé

shaft 11 than at its end remote therefrom. ‘The upper

circular disc 14 is provided with a central opening 16 for

of cutting around trees and-along walls, borders cf a 20 the intake of air.

' FIGURES 3 and 4 show diametrical sections through

Jawn etc. Morcover,the frame and rollers add consider-

ably to the Weight atd manufacturing costs of the erass

cutting machine. A further disadvantage +s that the

’ cutting result will depend very. much on the smoothness’ ya

of the ground. Also, in the case of rugged er stony "25. ward flow of air is obtained:

ground, it is difficult to control the movement of the

grass cutting Machine. It may be mentioned, also, that

in the case of grass cutting machines in which the Cutter

is surrounded by an open’ botiomed hood, it Is usually

two different forms of, the ventilating wheel and the hood.

at its periphery at 21, whereby a more powerful down-

In FIG. 4, the upper-disc

14” is slightly conical and the wall of the hood is con-

structed with a rounded portion 22 at the transition be-- .

tween the Cover portion 3 and the cylindrical skirt por-

tion extending downwards therefrom. Moreover, the bot-

necessary to arrange the supporting rollers in such a man- 3 tom end of the hood is bent slightly inwards’at 23 so that

ner as to heep the bottom edge of the hood at a consider-

- i: uble distance above the ground an order to prevent icci-

__*_——-dentat bumping of the hood into the ground. It is there-

fore often felt necessary to provide protective screening

the mouth of the hood becomes somewhat restricted. In

this manncr the -wall of the hood has a slight inward in-

-clination along ‘its inner edge and the flow of air dis-

charged from the ventilator is deflected by the rounded

means to prevent access to the interior of the hocd under 35 portion 22 and the inciined wall portion-of the hood to-

Such screening means furiher add to

the encumbrance, weight and manufacturing costs of the

machine. ° aan ;

It is an object of the invention to provide, a grass cut-

ting machine in which the above mentioned drawbacks are 40

eliminated or reduced,

According to the invention, in order to eliminate the

necessity of supporting rollers or similar-supporting struc-

ture, use is made of the, so-called ground: effect, ic. the

ata

duc

ground beneath the object.

d- by a flow of air generally directed’ towards the

Thus, according to the inven-

lion, a grass cutting maviine of the type referred to ys _

istance above the ground on a cushion of air prot -

wards the centre of the grass cutting machine, whereby

the grass coming in under the flange 2 is automatically

lifted so that the cutter 12 will cut more cleanly and effi-

ciently. .* A .y

' FIG. 4 also illustrates the provision, on the top of the

hood, of an inclined auxiliary supporting roller 24 which

is mounted on the hood by means of a bracket 25. The -

supporting roller 24 is intentled for facilitating the trans-

portation of the grass cutting machine when its motor is

such a manner that the whole of the machine is supported

on the. supporting roller 24, as illustrated in FIG. S.

* The hood is constructed with a handle bar 27 which is

preferably connected to the portion of the hood diametrzj-

na phenomenon that an Object can be supporied 4° stationary. The grass cutting machine is then tilted in

cushion of air under the machine. .

Other features, objects and -advantages of the invention

will be apparent to those skilled in the art from the

following detailed description of one embodiment thercof,

and various modifications, reference being mude to the

accompanying drawings in which :

FIG. 1 shows a grass cutting machine partly in sec-

tion, ; :

FIG. 2 a section along the line I?—II in FIG. 1,

ulator wheel showing a somewhat modified consiruction

oi the latter, i

FIG. 4 illustrates the provision of an auxiliary support-,

ing’ roller on the top of the hood of the machine, and

595

+ Supporting rolicr 24. ;

In operation, ‘when the motor of the grass cutting ma-

chine is started, a cushion of air is formed under the -

machine by the so-called ground tffect, whereby the ma-

chine is supported on said air\cushion at.a small distance

above the ground. The machine can easily be manocu-

vred by means of the handle bar 27, and a certain stabi-

lization in the lateral direction is obtained by the fact

that the air intake is directed in the

sit will.be scen that in the embodiment shown, the

grcund effect is produced by means of a ventilator in the

forin of fhe centrifugal blower having distinct radial pas-

Sages Opening at a small distance from the peripheral wall

tilted position with stationary motor.

In the drawing; 1 is a hood which is canstructed sub-

stantially in the form of.a short cylinder. At one-end of

the hood, the edge of the latter is bent outwards and-

Which form the principal cutting zone; ate located sub-

stantially dircctly below the discharge openings ofthe

passages. ‘This fan is a radial discharge type blower as

the conical-plate-fan'type described in FIGURE 6 of page

rolled upon itself to form a supporting rim 2 surrounding 79 335 in the publication Engineers’ Illustrated Thesaurus,

the open bottom of the hood. At its other end, the hood

* comprises a slightly domed roof or cover portion 3. Cen-

published 1952 by Chemical Publishing Co., “Inc., New

York, N.Y: . .

presumed prinajpak

FLG. 3 a partial section through the hood and the,ven- 60 direction ef movement of the machine. : a

_It might be expected that the power required for the»

operation of the ventilator or air impelling means would

necessitate the use of a bigger and heavier motor than

in known machines of the type considered, but in prac-

tice it has been found that this is not at all so. On the 5

contrary, it has been found that a machine according to

the invention, when equipped with a motor of a.certain-

size, has a cutting capacity at least equalling that of a

known machine supported on rollers, when equipped with

an identical motor.

It has also been found that with a grass cutting ma- .

chine constructed as described. groufhd effect of an appre-

ciable value: will be produced even if part of the area

of the bottom opening of the hood is at a considerable

distance from the ground, e.g. when grass is to be cut 135

along -the edge of-a. lawn which is clevated relative tq

the surroundings, or when grass cutting is to be effected

on a curved or irregular surface of the scil. The reason

for this probably is that the radial passages ‘of the blower

will producé positive flows of’ air down along the cylin- 2

drical wall of the hood so‘that tround effect willbe pro-

duced along such edge portions of the hoo us areata

small distance from the ground. ;

The supporting roller 24 nced not néccssarily be” pro-

vided, but on the contrary will ustially be superfluous in 25

the case of Jlawn-mowers for ordinary garden work, since

these will be sufficiently light-weight for carrying by hand.

_ For larger size machines, however, the supporting roller-

sis of interest though other means may also be used for the

transportation of the machine. - E.f, the machine may be

constructed with a special carrying handle for transporta-

tion by one or two persons.

It will be understood that it is an advantage of the

grass cutting machine according to the invention that no.

. Supporting means have to be provided outside the hood

ef the machine so that tHe machi ne niay be run closer

to trees and other obstacles than macHines constructed

. with such supporting means. Moreav¢r, special screens

or other safety arrangements to prevenVacce:s to the inte-

rior of the hood under tbe bottom edge thereof are super- 10

fluous because in operation the edge will only be lifted

slightly from the ground. For the same reason there is

-no danger of stones being hurled out from under the ma-

chine sothat no safety measures have 4o be taken to safe-

guard against accidents arising therefrom.

The grass tops cut off by means of the blades will be

blown out from under the machine by the same flow of |

air as that producing the ground effect. and wll there-

-fore be uniformly spread over a large area and will net

collect in heaps necessitating raking of a lawn after it Aas

been mowed.

‘Additional advantages of*the new grass cutting machine

are its simplicity of construction permitging the machine

“to be manufactured at low ‘cost, as wel asthe reduced

encumbrance of the machine for a i i

I claim:

1. A grass cutting machine Eomprising a housing hav-

ing a: bottom. opening, the peripheral edge of which is

located substantially in a plane. a cutter mounted in said

housing, driving means for said cutter, and/a radial dis-

charge type fan driven by said means for producing a

. flow of air radially to strike the housing ‘and fldwing out

through said botfom opening therefrom along the periph-

eral edge at rates suitable for keeping said peripheral ,-

edge at a small distance above the ground by ground

effect.

2A grass cutting nethien comprising a housing hav-

ing a bottom opening, the peiipheral edge of which is

located substantially in a plane, a rotary air impeller

mounted on a shaft in said housing, a rotary cutter

mounted in said housing below said air impeller on the

same shaft, and driving means for said rotary air impeller

and said rotary cutter, said air ianpeller being consiructed

to expel air through said bottom opening along paths and 7

-1

3,110,996 - ee

at rates suitable for slightly elevating said housing and

parts carried thereby from the ground by ground effect.

3. A grass cuiting-machine as in claim 2, in which said

housing lecated above said cutter and substantially radi-

ally outside tie operating area thereof. —-

4. A grass cutting machine comprising a housing hav. -

ing a substantially vertical -cylindrical wall defining a

cylindrical compartment within said housing and

nated at its bottom with a substantially. circular edge, a

‘centrifugal blower mounted substantially co-axially in said

cylindrical compartment and constructed with radial pas-

_sages having their outlet ends located at a.small distance

from said cylindrical wall, a rotary cutter mounted in said

cylindrical compartment below and co-axially with said

blower, common driving means for said- centrifugal

blower and\said rotary cutier, said rotary cutter being

constructed With blades having their endsfacated at a

small distance from said cylindrical wall, said centrifugal

blower being constructed to discharge air at a rate sulti-

cient for slightly elevating said housing and parts carried

thereby from the ground by ground effect. te

5. A grass cutting’ machine comprising a hood having

a top cover portion and a skirt portion, the latter being

substantially shaped as a vertically disposed cylinder ter-

-minated at its bottom with a Supporting rim, a, motor at-

tached to said top cover. portion, said motor having a

vertical shaft extending into the space within said skirt’

portion, an air impélier mounted on said shaft, a rotary

cutter. mounted on<$aid shaft below saia air impeller; an

"air inlet opening disposed centrally of said top cover por-

tion, said air impeller being constructed to suck-in air’

through said air inlet opening and to-expel air through |

the open bottom of said hood at a rate sufficient to slightly

rotary cutter from the ground by ground effect.

6. A grass cutting machine comprising a hood having

a top cover Portion and a skirt portion, the latter being

tagminated at its bottom with a supporting rign,.a rotary

radial discharge type fan air impeller mounted in said

hood, a rotary cutter mounted in said hood below said

air impeller, means for driving said rotary .air: impeller

and said rotary cutter, an air inlet on the top of said top

cover and connecting with a central opening thereof, said

air inlet having a laterally disposed air intake opening,

said air impeller beigg constructed to suck in air through

said air‘inlet to discharge the air radially against said skirt

portion and to.expel air through the open bottom of said

hood at a rate sufficient to slightly elevate the atsembly

of said hood, driving means, air impeller and rotary cutter

from the ground by ground effect.

7. A grass Cutt ting machine as in claim 6 comprising a

protecting: grid to cover said lateral air intake opening.

8. A grass cutting machine compfising a hood having

a top cover portion and a skirt portion, the latter being

terminated at its bottom with a supporting rim, a rotary -

air. impeller mounted .in said hood, a. rotary cutter

mounted in said ,jhood below said rotary air impeller,

driving means for said rotary air impeller and said rotary

cutter, a radially disposed inlet passage provided outsidé

said top cover and connecting with a centrally disposed

opening therecf. said radially disposed passage: having an

irltake opening at the end thereof remote from said open-

ing of the cover portion, said rotary air impeller being

arranged to suck in air through said passage and said

opening of the cover portion and to expel air through the

epen bottom of said hood at a rate sufficiem to slightly

elevate the assembly of said hood, driving means, air im-

peller and rotary cutter from the ground by ground effect.”

9. A grass~cutting machine as in claim 8 coniprising a

protecting grid to cover said air intake opening.

10. A grass cutting machine as in claim 1 comprising °

a handle bar pivoted to said“housing for pivoti::, about a

substantially horizontal axis.

11. A grass cutting machine asin claim 1 and further

‘

. ? Ld

. impeller is constructed to discharge: into a. zone in said - -

3#elevate the assembly of said hood, motor, air impeller and :

aa eg

"i 5 ° .

compeising an auntliary enti wheel mounted on the

top of sant housing and having tts aaty directed at an

angle to permit said housing to be,suppotted on said roller

in ~ tilted position for transpprtatron.

A wheéelless grass cuftigg machine having a power.

‘cn rotary cutter and commonly driven air impelhng

_ means for producing .ground effect to support said ma-

chine on a cushion of air at a distance above the ground.

13, A grass cutting machine comprising.a hood having

a top cover portion and a skist portion, the latter being

terminated at its bottom with a smooth supporting mm

located in a plane and being of a cross-sectional shape- —

‘ smitable for sluling on the ground, a radial discharge type

a a, ’

rn : “3,110,096 ae

blower mounted in said hoed on a shaft perpendicular to ee

the plane of said’ rim, a rotary cutter mounted on said

shaft below ‘said one, and a driving motor for sad

shaft. e

9 References Cited in the file of this patent

UNITED STATES PATENTS

SS neh. ee June 25, 1957

2,862,376 Thelander_............-.. Dec. 2, 1958

ees) = Oe ... Aug. 21,-1962

FOREIGN PATENTS

219,133 = Australia _..____- ans tile Nov. 24, 1958

‘ ‘ y

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47a ; hie

eo 7". 0 * [Ried Dee. 15, 1971]

UNITED STATES COURT OF APPEALS

FOR THE DISTRICT20# COLUMBIA CIRCUTT

September Term, 1971

. Civil 1654-67

No. I35TD is)

Joun ¥. Copy, BT AL

Vv. > : : ae

AKTIEBOLAGET FLYMO, wr AL, Appellants

Bofore: MeCiowan and Robinson, Cireuit Judges; hrist-.

ensen,” U nited States District roe for the District, of

Utah.

Order : mal ea

On consideration of appellants’ motion for stay of man-

date and assessment of casts and -it: appearing that ‘this

-Court’s opinion and certified copy of the judgment was °

issued lo the District Court on November 11. 1 Q71, it As

Orperey by the Court that the Cle rk of the District C eid

is direéted to return the aforesaid opinion and judgment

to ‘this Court. —_ | oo 3 .

‘Fu RTIER Ouse RED by the Court that the C forte 3 is directed

to stay the reissuance there of for a period of 90 days from.

November 2, 1971, said: &tay to. be subject to the. provisions .

of Rule 41(b) of the weder ‘al Rules of oe Proceduré

and, it i is ; pe sence

~Furtier OnprrEp by the Court that appellants? motion

for costs to be assessed against the appellee on the basis

that the District Court was reversed in part, is denied, -

. * P ing

Per. Curiam:

* Sitting by designation pursuant to Title 28 US. Code Section

292(¢),

0 yeerevinemmenpenpes ~ ae mene

ri "

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