Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before EVANS, SPARKS, and TREANOR, Circuit Judges.
This action was instituted by appellee against appellant under Revised Statutes, section 4915, 35 U.S.C.A. § 63.*fn1 It sought the issuance of a patent on an application filed by one Jacke and assigned to appellee. The defendant denied the plaintiff's right to this relief on the ground that defendant owned a patent, No. 1,638,734, covering the same device issued to Heath the first inventor, who assigned it to defendant, who also owned Heath reissue patent, No. 17,531. The District Court entered a judgment in favor of the plaintiff holding that Jacke was the original, first and sole inventor of the invention in issue, and that plaintiff was entitled to receive a patent for the invention. From this decision the defendant has appealed.
There is no question either of infringement or validity presented in this appeal. The sole question is the right of priority of invention, arising out of the facts elicited in a series of interference proceedings to which the Heath reissue patent was subjected.
The original Heath patent No. 1,638,734, containing 12 claims, was issued August 9, 1927, on an application filed November 13, 1924. Jacke filed his application for a patent on November 20, 1928. It contained 12 claims. On February 23, 1929, Heath filed his application for a reissue of his original patent, and it was reissued with 55 claims on December 17, 1929, with the effective date of November 13, 1924. On February 3, 1930, Jacke added to his application claims 22 to 35, inclusive.
On May 24, 1930, the Examiner declared a two-party interference, No. 59, 991, between Jacke and Heath, containing 14 counts. They correspond to the claims which Jacke had added to his application on February 3, 1930, and they also correspond to claims 28 to 37, inclusive, and 50, 51, 52 and 54 of Heath's reissue patent. On July 27, 1930, Heath filed his preliminary statement before the Examiner of Interferences. Jacke took testimony, and Heath did not, because it was conceded that his record date was that of his original application.
In 1931 a second two-party interference, No. 65,590, was declared by the Examiner between Jacke and Heath. On June 23, 1931, the Patent Office dissolved Interference No. 59,991 as to counts 1, 2, 3, 4, 5, 6, 9 and 10, and on February 2, 1933, it dissolved count 8. On the same day the Patent Office declared Interference No. 59,991 to include an application of Edgar M. Butler, and the issue of that interference then comprised counts 7, 11, 12, 13 and 14.
On October 20, 1936, there was a final hearing in Interference No. 65,590. Jacke submitted the testimony theretofore taken in Interference No. 59,991. Heath offered none. On November 3, 1936, the Examiner of Interferences rendered his decision in which he awarded priority of invention of the subject matter in issue to Jacke. He therein stated, among other things:
"Having filed his application prior to the issuance of the Heath reissue patent and because the original Heath patent contained no interfering claims, * * * Jacke has the burden of proving his case by a preponderance of the evidence. * * * Heath Jacke has taken testimony. * * * Heath has taken no testimony and is therefore confined to his record date of November 13, 1924. * * *
"Having established a reduction to practice prior to the record date of * * * Heath, * * * Jacke is entitled to an award of priority."
On May 17, 1937, Jacke filed his motion for judgment against Heath in Interference No. 59,991, on the theory of res adjudicata by virtue of the Examiner's decision in Interference No. 65,590. A hearing on Interference no. 59,991 was had the next day following, before the same Examiner who had rendered the decision in No. 65,590. On September 15, 1937, he rendered his decision in which he denied Jacke's motion for judgment and awarded priority of invention of the subject matter in issue to Heath. Among other things he therein stated: " * * * Butler being a junior party and having taken no testimony is not entitled to prevail herein."
" * * * Jacke has moved for judgment against Heath on the grounds of res adjudicata. For the reasons as more fully discussed in the decision in Interference No. 61,976, Jacke vs. Rice vs. Heath, rendered ...