354 F.2d 464 (5th Cir. 1965), 22536, Gladrow v. Weisz

Docket Nº:22536.
Citation:354 F.2d 464, 148 U.S.P.Q. 110
Party Name:GLADROW et al., Appellants, v. WEISZ, Appellee.
Case Date:December 10, 1965
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 464

354 F.2d 464 (5th Cir. 1965)

148 U.S.P.Q. 110

GLADROW et al., Appellants,

v.

WEISZ, Appellee.

No. 22536.

United States Court of Appeals, Fifth Circuit.

December 10, 1965

Page 465

Harry McCall, Jr., Chaffe, McCall, Phillips, Burke, Toler & Hopkins, Harry McCall, Jr., New Orleans, La., for Gladrow, and others, Kenyon & Kenyon, New York City, of counsel.

Peter H. Beer, New Orleans, La., Ells-worth H. Mosher, Washington, D.C., Montgomery, Barnett, Brown & Read, New Orleans, La., for Weisz, Stevens, Davis, Miller & Mosher, Washington, D.C., of counsel.

Before HUTCHESON, RIVES and WISDOM, Circuit Judges.

RIVES, Circuit Judge:

This appeal is from an order requiring the production of a page or pages of a certain notebook incident to cross-examination of a witness in a pending proceeding before a board of patent interferences of the United States Patent Office. 1

The question to be determined by the board is that of 'priority of invention.' 35 U.S.C.A. § 135(a). The appellant Gladrow 2 was the first party to file application for the patent and is presumptively the inventor. He is denominated the senior party in the interference proceeding. The other applicant, appellee Weisz, is called the junior party. He has the burden to come forward with evidence to overcome the senior party's prima facie case.

Testimony in an interference proceeding is taken by oral deposition, first by the junior party, then by the senior party, and lastly rebuttal testimony by the junior party. There is no administrative provision for discovery.

In this interference, the junior party Weisz has completed his testimony in chief. The senior party Gladrow has taken some testimony and has moved in the patent office to extend his testimony period. Gladrow testified that he had conceived the invention by October 11, 1956, and in support of his testimony offered an office memorandum bearing that date, signed by Gladrow and his coinventor Parker, and witnessed by Patricia

Page 466

Barnett. He did not intend to offer proof of an earlier date of conception, but the office memorandum bore the following schedule:

------------------------------------------------------------------ "Date of Conception Classification "September 13, 1956 P-2.12 ------------------------------------------------------------------ "Date First Written Herewith or Filed at Description "September 13, 1956 Page 148 Notebook No. 8568 ------------------------------------------------------------------ "Date First Sketch or Herewith or Filed at Drawing ------------------------------------------------------------------ "Date First Disclosure To Whom and Where to Others "September 19, 1956 R.F. Stringer, Esso Standard Oil Co., Baton Rouge, La. ------------------------------------------------------------------ (A) "Reduction Laboratory Scale Where to (Date) Baton Rouge, Louisiana Practice ------ Sept. 13, 1956 ---------------- ------------------------------------ (B) Plant Scale Where (Date) " ------ ------------------------------------------------------------------

On cross-examination, Weisz called upon Gladrow to produce for examination page 148 of the notebook ' and such other pages as may relate to material of pertinence to this interrogatory.' Gladrow's counsel refused to permit him to produce the notebook and stated to Weisz' counsel, 'We are not relying upon the notebook page, and there is no possible reason for you to see it.' Substantially similar proceedings occurred upon Weisz' cross-examination of Gladrow's co-inventor, Parker.

Weisz then moved in the district court for an order requiring Gladrow to produce for inspection and copying the page or pages of the notebook. After a hearing, the order was entered from which this appeal is prosecuted. (See footnote 1, supra.)

In this Court, Weisz first moved to dismiss the present appeal on the ground that the order appealed from was interlocutory and not final. Another panel of this Court ordered the motion carried with the case. Weisz later undertook to withdraw the motion. However, an...

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