Appeal from District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
This appeal involves a contest between inventors, who dispute as to which is the first discoverer of certain "improvements in electrical furnaces." The suit, authorized by section 4915, Rev. St. (35 USCA § 63), was to secure the issuance of letters patent to Messrs. G. and B., Joint inventors, whose application for letters patent was denied by the Commissioner of Patents. Appellants, who were defendants in the District Court, are all interested in patent No. 1,490,732 issued to one Callaghan, which covers the same combination for which G. and B. made application for a patent. The two applications were copending, and an interference was declared. The issue -- who was the first discoverer -- was tried and decided in favor of C. to whom the above-numbered patent was issued.
Appellants contested appellees' suit, and by counterclaim sought to enforce the C. patent and obtain the usual decree for an injunction and an accounting due to infringements thereof. Upon the trial of the issues presented by these pleadings, the District Court found for appellees and entered a decree directing the Commissioner of Patents to issue a patent to appellees and dismissed appellants' counterclaim. This appeal followed.
Disposition of this appeal turns on the answer to the question, Who was entitled to a patent on the combination described in the two copending applications in the Patent Office? To settle this question two issues of fact necessitate an answer: (a) Who first discovered the new combination for which C. obtained the patent; and (b) if C. was the first discoverer, did he abandon his discovery before the patent to him was issued?
As the District Judge found for appellees, it is necessary, for appellants to prevail, that they satisfy us that C. was entitled to a favorable answer to both questions.
The history of the contest in the Patent Office is important. B. and G. filed their application first, to wit, June 5, 1918. C. filed his application October 23, 1918. C. fixed the date of his discovery as about September 15, 1917. G. and B. asserted the date of their invention was March 14, 1918, and actual reduction to practice, July 10, 1918. The dates submitted by G. and B. are not disputed. Controversy exists over the date of C.'s discovery.
The Examiner of Interferences in the Patent Office found C.'s date of discovery to be September 15, 1917. On three successive appeals the same issue was decided by the Board of Examiners in Chief, the Commissioner of Patents, and the Court of Appeals of the District of Columbia in the same way.
The question of abandonment, i.e., the issue of diligence, was found in favor of C. by the Examiner in the Patent Office and by the Court of Appeals of the District of Columbia. The Commissioner and also the Board of Examiners in Chief in the Patent Office found C. had not been diligent.
The District Judge in this suit found against C. on both issues.
There was small difference in the testimony presented at the five trials. While counsel for appellants asserted that additional evidence was presented to the District Court, we cannot believe it accounted for the difference in the findings.
The quantum of proof required to justify the court in setting aside the patent is stated in Morgan v. Daniels, 153 U.S. 120, 14 S. Ct. 772, 773, 38 L. Ed. 657, as follows:
"Upon principle and authority, therefore, it must be laid down as a rule that where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction. Tested by that rule the solution of this controversy is not difficult. Indeed, the variety of opinion expressed by the different officers who have ...