Wickman v. Vinco Corporation, 14168.

Citation288 F.2d 310,129 USPQ 43
Decision Date22 March 1961
Docket NumberNo. 14168.,14168.
PartiesAxel C. WICKMAN and Wickman, Ltd., Defendants-Appellants, v. VINCO CORPORATION and Joseph J. Osplack, Plaintiffs-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (6th Circuit)

Joseph K. Schofield, West Hartford, Conn., Allen & Allen, by Stanley H. Foster, Cincinnati, Ohio, on brief, for appellants.

W. B. Morton, Jr., New York City, Berrien C. Eaton, Jr., Miller, Canfield, Paddock & Stone, Detroit, Mich., and Pennie, Edmonds, Morton, Barrows & Taylor, New York City, on brief, for appellees.

Before MARTIN, CECIL and O'SULLIVAN, Circuit Judges.

MARTIN, Circuit Judge.

This appeal evolves from a dispute concerning the invention of and patent proceedings relating to a certain type of gear-grinding machine.

Appellant Axel Wickman, while in England in 1938, conceived an invention which he then thought to be new. The invention related to the subject matter of grinding gears in a specific manner with a grinding wheel characterized by having its periphery formed with a helix. On October 20, 1938, Wickman filed in the Patent Office of Great Britain a provisional application designated as No. 30,323/38. As part of the same application, he filed a complete specification on October 9, 1939. United States application, No. 302,251, was filed by Wickman on October 31, 1939, and by making therein specific claims to the prior British application, he claimed the benefit of the priority thereof under the terms of the then existing United States Statute.

However, Wickman abandoned both applications. The British application was abandoned on January 10, 1940; and the United States application on July 10 of that year.

The appellee, Joseph J. Osplack, had conceived the same invention in the United States and had produced a pencil layout of the complete machine by January 11, 1945. This layout embodies the invention in suit.

On March 30, 1945, Wickman filed a provisional specification under British application No. 8,116/45, which disclosed and claimed the invention in suit. He filed a complete specification in the British application on March 5, 1946. Then, on March 11, 1946, he filed United States application No. 654,259, corresponding to the complete specification of the above-mentioned British application. The application, No. 654,259, disclosed and claimed the invention involved here and matured into United States Patent No. 2,449,354, which is the subject of the present controversy.

Wickman's United States application No. 654,259, was disclosed to the appellee, Osplack, by Motor Tool Manufacturing Company on July 17, 1946; and on August 15, 1946, Osplack and the Vinco Corporation rejected Motor Tool's offer to sell rights based upon Wickman's application, No. 654,259, and disclaimed any interest in the now disputed invention. The appellees did not reveal the fact that Osplack had conceived the same invention on or about January 11, 1945; and that he intended to claim his reduction of the invention to practice before July 17, 1946 — the date on which Wickman's application had been disclosed to appellee, Osplack.

On March 5, 1947, Osplack filed United States application No. 732,521 which, it is stipulated, discloses the invention in suit; but appellant, Wickman, denies that the application claims the invention.

British Patent No. 591,916, based on Wickman's British application, No. 8,116/46, was published on October 27, 1947; and, on September 14, 1948, American Patent No. 2,449,354 (the patent controverted here) was issued to Wickman, based on application No. 654,259 which had been filed on March 11, 1946.

On November 9, 1948, Osplack filed United States application No. 59,166. It is agreed that this application disclosed the invention in suit; but there is disagreement as to whether the application also claimed the invention. The application was amended by appellee, Osplack, on November 28, 1949, to copy the claim of Wickman's United States Patent, No. 2,449,354, in an attempt to create an interference. Such interference was declared on January 26, 1950.

The interference was decided by the Board of Interference Examiners in favor of Wickman. Their decision in May of 1951 was reconsidered and affirmed by the Board in August of that year. Information relative to the 1938, 1939 and 1940 British applications by Wickman was not before the Interference Examiners. In order that new testimony could be taken, appellees elected to proceed by way of a civil action under section 146, Title 35, U.S.C.A. (1952), rather than by an appeal (under section 141 of Title 35) to the Court of Customs and Patent Appeals upon the record made in the Patent Office alone.

It is the claim of the appellee, Osplack, that Wickman's 1938 British application, No. 30,323/38, as supplemented by the complete specification of 1939 upon which United States application No. 302,251 was based, disclosed and claimed the invention in suit in such manner that the invention would have been obvious to a person skilled in the art. The appellant, Wickman, contends that the applications were for two different inventions. The United States District Court decided this fact issue in favor of Osplack.

An interesting question presented is whether an inventor's right of priority under the International Treaty is considered to be dated from an abandoned application, or from a subsequent application filed in a foreign country. Here, the application was filed in England and later abandoned. This question of law must be determined according to the findings of fact. If it is found that Wickman's British applications of 1939 and 1945 were for different inventions, the question as to which filing gives priority becomes moot, inasmuch as the same invention would not be involved and each proper filing, if seasonably exercised, would give rise to a different priority.

The district court found that the Wickman application of 1938, as supplemented by the complete specification in 1939 upon which United States application No. 302,251 was based, disclosed and claimed the invention with which we are concerned in such manner that the invention would have been obvious to a person skilled in the art. In so holding, the United States District Judge placed great reliance upon the testimony of Leonard J. Smith, a professional engineer of ten years' experience in the gear-grinding field. Determination of the question is an issue of fact; and this court will not disturb the finding of the district judge unless it be shown that such finding was clearly erroneous and not based on substantial evidence. The finding here was not clearly erroneous. The testimony of the witness, engineer Smith, constitutes substantial evidence upon which the trial judge could properly base his opinion.

Appellants contend that under applicable sections of the International Treaty (International Convention for the Protection of Industrial Property, Article 4A, secs. 1 and 2; 4C, secs. 1 and 2;1 implemented by the then-existing United States Statute, R.S. 4887, 35 U.S.C. § 32,2 later replaced by section 119, Title 35) and the law of England, the abandoned 1938 application was a nullity and could have no effect on Wickman's right of priority. Appellees counter that Article 4C(2) of the Treaty provides that "these periods shall start from the date of filing of the first application"; that the language is explicit and means just what it says; and that, when Wickman failed to pursue to maturity his application for an American patent within twelve months after the 1939 filing he lost all right to priority in this country.

In arguing that the "first" filing by Wickman in England and the subsequent application in the United States are nullities, the appellant insists that the law of England should control. The district court considered the rights of the parties to be dependent upon the provisions of the Treaty, as implemented by the laws of the United States. This position appears to be sound. It is true that we are here concerned with the provisions of the International Treaty. But the primary issue is the determination of rights of the parties under United States patent law, even though the possible right of one of the parties to a patent stems from an application filed in Great Britain.

It is logical that the court should look to the patent laws of the United States to determine issues concerning the award of a United States patent. While the original right is derived from the Treaty, we must look to the laws of the United States for the means of implementing that right. The British cases cited by the appellant are, therefore, not controlling. The purpose of the Treaty and of section 32, Title 35 U.S.C.A. (supplanted by section 119), seemingly is to give the same effect to a foreign application, if it meets the necessary requirements, as if it had been filed in the United States...

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    ...test is a question of fact. Sterling Aluminum Products, Inc. v. Bohn Aluminum & Brass Corp., 298 F.2d 538, 539-540, C.A. 6; Wickman v. Vinco Corporation, 288 F.2d 310, 312, C.A. 6; Cold Metal Products Company v. E. W. Bliss Company, 285 F.2d 244, 248, C.A. 6, cert. denied, 366 U.S. 911, 81 ......
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