Morgan v. Hirsch

• Decision Date: 02 March 1984
• Docket Number: Nos. 83-909,83-910,s. 83-909
• Citation: 221 USPQ 193,728 F.2d 1449
• Parties: John E. MORGAN, Appellant, v. Harry HIRSCH, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1449

728 F.2d 1449

221 U.S.P.Q. 193

John E. MORGAN, Appellant, v. Harry HIRSCH, Appellee.

Appeal Nos. 83-909, 83-910.

United States Court of Appeals, Federal Circuit.

March 2, 1984.

Robert B. Frailey, Philadelphia, Pa., argued for appellant.

Robert E. Burns, New York City, argued for appellee.

Before MARKEY, Chief Judge, and FRIEDMAN and RICH, Circuit Judges.

RICH, Circuit Judge.

This appeal is from two decisions dated December 8, 1982, of the Patent and Trademark Office (PTO) Board of Patent Interferences (board) in two interferences, Nos. 99,909 and 99,910, awarding priority of the counts to the senior party, Harry Hirsch. We affirm.

The subject matter, generally speaking, is thermal underwear. The time period involved, during which the events leading to the filing of the parties' patent applications took place, is 1974-1977. Hirsch filed his application, serial No. 780,463, on March 23, 1977. Morgan filed his patent application, serial No. 793,863, on May 6, 1977, and a divisional application, serial No. 823,711, August 11, 1977. All three applications were based on the same knitting machine which was procured for Morgan by Hirsch, under circumstances to be described, and delivered in March 1976. It was a circular knitting machine on which was produced the thermal fabric from which underwear was made in Morgan's factory, The J.E. Morgan Knitting Mills, Inc., of Tamaqua, Pennsylvania.

Prior to the development of the machine described in the applications in the interferences, Morgan's plant had consumed large quantities of a thermal fabric known as raschel, which was made on warp knitting machines which are larger and more complicated and expensive than circular knitting machines. Morgan did not make raschel but bought it from others and desired to make something like it on circular knitting machines. As early as 1973 he was searching for ways to do it, finally succeeding through the efforts of Hirsch. Both Morgan and Hirsch regarded themselves as inventors and filed the above applications.

Interference 99,909 involves the Hirsch application and the Morgan divisional application, the sole count being directed to a weft-knitted thermal fabric simulating raschel.

Interference 99,910 involves the Hirsch application and Morgan's parent application, the sole count being directed to a method of forming yarns into a weft-knitted thermal fabric simulating raschel.

Due to the close relationship of the subject matter, the interferences were consolidated in the PTO and argued together, both there and in this court. The board, however, wrote separate and lengthy opinions, which in all essentials duplicate each other. In the course of doing so, the board came to the conclusion that neither Hirsch nor Morgan invented the subject matter of the counts, concluding each opinion by saying it was making a recommendation to the Commissioner under 37 CFR 1.259 ¹ that the claims corresponding to the counts be rejected Morgan filed requests for rehearing and/or reconsideration and a motion to reopen testimony in both interferences and the board denied them in a 5-page opinion. These appeals followed.

                under 35 U.S.C. Sec. 102(f). 2   It then proceeded to prepare and file, on the same day as the opinions in the interferences, a lengthy "Recommendation Under Rule 37 CFR Sec. 1.259," stating in full detail all of its reasons for making it
                

OPINION

Since the interferences involve pending applications, Morgan, as junior party, had the burden of proving his case for priority by a preponderance of the evidence. Shindelar v. Holdeman, 628 F.2d 1337, 207 USPQ 112 (Cust. & Pat.App.1980); Davis v. Reddy, 620 F.2d 885, 205 USPQ 1065 (Cust. & Pat.App.1980); Horwath v. Lee, 564 F.2d 948, 949 n. 2, 195 USPQ 701, 703 n. 2 (Cust. & Pat.App.1977); 37 CFR 1.257.

Both parties have based their application disclosures and the counts in issue on a circular knitting machine built by Alber & Bitzer, a German manufacturer, at the instigation of Hirsch, its American representative, and brought to this country for sale to Morgan through Hirsch's company, Albi Knitting Machine, Inc. (Albi), and on the knitted product produced by that machine, which machine was capable of producing only a single product.

The board accorded Hirsch a conception date of mid-April 1976 by which date his knitting machine technician, Nolle, had received and translated drawings and instructions from Alber & Bitzer and had set up the machine for Morgan, apparently treating Nolle as a corroborating witness and assigning the conception date as of the time when Nolle must have had an understanding of the invention. For a Hirsch reduction to practice date, the board selected mid-July 1976 by which time, in its view, the machine must have been used to produce a satisfactory product (i.e., it was adequately tested) because at that time Morgan ordered fifteen more machines from Albi. We agree with these conclusions of the board.

Mid-July 1976 is, therefore, the date to be overcome by Morgan by showing that he had earlier made the inventions of the counts.

We have carefully studied the briefs and reviewed the evidence relied on by Morgan to support his contention that he had invented the fabric and the method of making it prior to the date accorded Hirsch. We find it insufficient to show that he invented the subject matter of the counts prior to Hirsch's date, or at any other time. He has therefore not sustained his evidentiary burden.

The first activity relied on by Morgan was in the period from the summer or early fall of 1973 to January 14, 1974. In this period, approached by personnel from the Trabal Company, manufacturer of circular knitting machines in Spain, and being a heavy consumer of warp-knit raschel thermal fabric, Morgan showed them a sample of raschel fabric and asked whether they had any machines which could make that kind of fabric. The initial answer was that they did not, but they would see what the factory could come up with. In due course, Trabal supplied a first sample of fabric to Morgan which was not what he wanted. As a result of his "prodding and instructions," to quote Morgan's brief, Trabal, after submitting successive samples, eventually produced a fabric to Morgan's liking from which he had one of his employees make a shirt on January 2, 1974, Morgan Exhibit 1.

The board expressed two reasons for giving this evidence no weight and for holding that Morgan had not conceived the invention of the counts before Hirsch's date: (1) he had not analyzed the stitch pattern of the Trabal fabric and (2) there is no evidence that he had in mind a specific stitch structure in accordance with the counts when the Exhibit 1 shirt was made. We agree with those reasons, but a more fundamental question is whether there is any evidence to support Morgan's contention that he was the inventor of...