# Petition for Writ of Certiorari — Aktiebolaget Flymo v. Cody > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_0484%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1972 - **Citation:** 405 U.S. 990 ## Text 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. $ ° a ‘ 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 | | -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 . ae ™~s ’ x ") . te i ee . Sac vk i - ‘ a) _ 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. Pe 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 e 4 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 i - 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 ° -* y “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 : ae “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 | la APPENDIX UNITED STATES COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA CIRCUIT o.- No, 23,575, Joun. Be, Cony, EY AL. v. 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 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 fe 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 - 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 a >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). : r 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 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 ad 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 . . \ ‘ / fe 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 7 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 — © hold here only ee vores iry Judgment was not. improper 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 \. . 4 ‘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 i" 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 4 ~~ ‘ © % . r 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. Va . ol ~. ‘ — - 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 ,f ” “ 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¢ - es 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 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 © fits issue as well, Sites the amended application etroply 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 NT 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 % - ? 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 ? : . >. 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 . = . . 7. * : -* - nee aif - ; a * Crews, Williams and Capelli, Examiners of Interferencés Williams, Examiner of Interferences : ° . F o 2 : = = 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 A * 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 | © We believed when-reaching our original decision and we 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? i a . s oy , ” Pa 7 a - 4 2 e ° \ >» 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 " --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_0484%3A1. Public record. Not legal advice.