Minnesota Mining & Mfg. Co. v. Nichols, 2552.

• Decision Date: 26 May 1939
• Docket Number: No. 2552.,2552.
• Citation: 28 F. Supp. 105
• Parties: MINNESOTA MINING & MFG. CO. v. NICHOLS.
• Court: U.S. District Court — District of Maryland

28 F. Supp. 105

MINNESOTA MINING & MFG. CO. v. NICHOLS.

No. 2552.

District Court, D. Maryland.

May 26, 1939.

Hershey, Donaldson, Williams & Stanley, Raymond S. Williams and Kenneth H. Ekin, all of Baltimore, Md., and J. T. Basseches, of New York City, and William H. Abbott, of Chicago, Ill., for plaintiff.

Omer T. Kaylor, of Hagerstown, Md., Morton P. Fisher, of Baltimore, Md., and Horace C. Chandlee and Ralph Burch, both of Washington, D. C., for defendant.

COLEMAN, District Judge.

This is a patent suit brought under Revised Statute Sec. 4915, as amended by the Acts of March 2, 1927, and March 2, 1929, 35 U.S.C.A. § 63, following refusal by the Commissioner of Patents to grant a patent to the plaintiff company as assignee of one George W. Swenson. The patent application involved relates to alleged improvements in granular material such as is particularly used as a surfacing for asphalt shingles and other forms of asphalt roofing, known as roofing granules.

The defendant, Ernest H. Nichols, is the owner of a patent on roofing granules and method of producing same, No. 1,954,778, issued to him on April 10, 1934, upon application dated November 1, 1932, embracing ten claims, the first six being article claims and the remaining four process claims.

The procedure in the Patent Office affecting the Swenson application and defendant's patent may be summarized as follows: On March 22, 1934, that is, less than a month prior to the issuance of the patent to defendant, Nichols, Swenson prepared an application for a patent in identical language as to claims, with the Nichols patent, and on March 26th the present plaintiff, assignee of Swenson, filed a petition asking that the issuance of the patent to Nichols be withheld. That is to say, plaintiff endeavored to institute what is commonly known as a public use proceeding, on the ground that Nichols' invention had been in use and on sale by a third party for more than two years prior to the filing of his application. On March 28, 1934, this petition was denied, whereupon on the same day Swenson filed his patent application No. 717,851, which is the one here involved, asking that it be placed in interference with the Nichols patent. Prior to the filing of this application, Swenson had attempted to introduce, by amendment, the identical claims of the Nichols patent now in suit into a prior application that had been filed by Swenson on December 19, 1932, Serial No. 647,967, but the Patent Office Examiner held that the specifications of this prior Swenson application could not support the claims of the Nichols patent, and thereupon refused to admit the same. On April 6, 1934, the plaintiff filed a bill in equity in the Supreme Court of the District of Columbia against the Commissioner of Patents, asking that he be required to institute public use proceedings. On April 7th, the bill was dismissed, and on April 10th the patent issued to Nichols. Following Swenson's request, the Commissioner of Patents declared an interference on August 28, 1934, and after the taking of testimony by both parties, the Examiner of Interferences in the Patent Office on February 20, 1937, awarded priority of invention to Nichols. Thereupon, on March 22, 1937, an appeal from this decision was taken by Swenson to the Board of Appeals of the Patent Office. That Board, after due hearing on January 13, 1938, affirmed, by written opinion, the decision of the Examiner. Thereupon the plaintiff company, invoking, as it had a right to do, the provisions of Section 4915 of the Revised Statutes, as amended, since it had not appealed from the decision of the Board of Appeals to the United States Court of Customs and Patent Appeal, filed, on July 5, 1938, the present suit, the object being to obtain a reversal of the findings of the Patent Office, and more specifically of the final appellate tribunal of that Office, namely, the Board of Appeals, including an order upon the Commissioner of Patents to issue to the plaintiff a patent on the same invention now patented to the defendant Nichols.

There is a procedural question to be first disposed of. It is as follows: Defendant claims that plaintiff is estopped in this proceeding to assert priority of invention because such assertion is inconsistent with the position taken by plaintiff in the Patent Office when it or its assignor Swenson filed a petition for public use proceedings. In other words, defendant claims that one may not deny patentability on the ground of prior public use and upon being defeated upon that issue, assert that he himself is in fact the first and original inventor.

We do not find any merit in this contention. It is the same one that was stressed before the Patent Office in the interference proceedings at the time Nichols moved to dissolve those proceedings and the Patent Office, rightly we think, held that no basis existed on which that interference could properly be dissolved without a determination of the question of priority. The facts are that plaintiff's original and renewed petition for public use proceedings were both denied by the Patent Office because that Office concluded that the evidence was insufficient to make out a prima facie case of public use of the invention in interference. The bill in equity filed in the Supreme Court of the District of Columbia was likewise based on the facts set forth in those petitions, and that Court refused mandamus against the Commissioner simply on the ground that the matter of instituting public use proceedings rested in the discretion of the Commissioner of Patents. When Nichols moved for reconsideration of the Patent Office's action on his motion to dissolve the interference proceedings on the alleged admission by Swenson of non-patentability, because of his attempts to cause the institution of public use proceedings, the Patent Office, through the Examiner of Interferences, again considered this question and reached the same conclusion. In his opinion the Examiner said: "From the motion to dissolve and the motion for reconsideration, it appears that the party Swenson or his present assignee attempted to prevent issuance of the Nichols patent by bringing public use proceedings and attempted by means of mandamus proceedings to compel the Commissioner to grant the petition to institute public use proceedings. Upon refusal of the Commissioner to institute public use proceedings the party Swenson filed his application which is now involved in the interference. Although attempts to institute public use proceedings were continued after the filing of the Swenson application, that filing is deemed to constitute no more than the act of a prudent inventor where it appeared so plain that his attempts to block issuance of the Nichols patent might fail. Having been refused the opportunity of proving public use against the Nichols application, it certainly would not be equitable to thereafter prevent the party Swenson from contesting priority with Nichols, and his prior abortive attempt to institute public use proceedings can not fairly be taken nunc pro tunc to be such an admission as to warrant dissolution of the interference under the practice outlined in the decisions cited by the party Nichols. Now that the attempts to introduce public use proceedings have failed, this failure being prior to the setting up of the interference, it does not appear that Swenson does not desire or expect the allowance of a patent to him, which was the situation in Weston v. Jewell, 1902 C.D. 20.

"Furthermore, in the opinion of the examiner of interferences, the party Swenson is not exactly under the restrictions of the usual applicant in interference with a patentee, because when he initiated his petition denying the patentability of the claims which later became the issue, Nichols was not a patentee.

"Upon full reconsideration of the motion, it is found that no such admission appears as will warrant dissolution of the interference."

We believe that the reasoning of the Examiner is entirely sound and equally applicable to the present proceeding. At most, all that plaintiff has done, both before the Patent Office and in this Court, is first to seek an opportunity to prove public use against the Nichols application and having failed in this, to contest priority with Nichols. The plaintiff cannot be said to have done anything which gives rise to an estoppel, for an estoppel contemplates reliance by one party upon another party's conduct which, if allowed to be repudiated or altered, would cause detriment to the one relying upon it.

Furthermore, it is not without certain significance that, while the plaintiff's petition for public use proceedings was made part of the record in the interference proceedings, and while this whole record is before the Court as one of the defendant's exhibits, this question of estoppel or inconsistency in plaintiff's position as a bar to the present suit has not been raised in any pleading therein.

Turning to the merits of the controversy, the basic question presented is whether the plaintiff's assignor Swenson was, in fact, the inventor of the subject matter of the Nichols patent prior to the first conception date claimed by Nichols which is November 1, 1932. It is to be noted that the claims of the Nichols patent and the claims of the Swenson application, which are identical, relate to both process and article claims. Plaintiff does not contest defendant's claims 9 and 10 which involve certain additional steps in regrinding the quartzitic material, so these are not in issue. Claims 7 and 8 are process claims. Claims 1, 2 and 3 are intermediate article claims, that is, they relate to the granular roofing material, the character of which is here in issue. Claims 4, 5, and 6 are article claims, embracing roofing material mineralized with the granules as set forth in claims 1, 2 and 3. In short, as stated in the specifications, the object of the alleged invention is twofold: (1) to...