Minnesota Mining & Mfg. Co. v. Carborundum Co.

Decision Date03 May 1946
Docket Number8923.,No. 8922,8922
Citation155 F.2d 746
PartiesMINNESOTA MINING & MFG. CO. et al. v. CARBORUNDUM CO. et al. SAME v. CARBORUNDUM CO.
CourtU.S. Court of Appeals — Third Circuit

Walter J. Blenko, of Pittsburgh, Pa. (George E. Stebbins and William H. Webb, both of Pittsburgh, Pa., and Arthur G. Connolly, of Wilmington, Del., on the brief), for appellants.

Harold J. Kinney, of St. Paul, Minn. (John Pearce Cann, of Wilmington, Del., and Mark Severance, of St. Paul, Minn., on the brief), for appellees.

Before BIGGS, McLAUGHLIN, and O'CONNELL, Circuit Judges.

BIGGS, Circuit Judge.

The court below, at its No. 273, found that Minnesota Mining & Manufacturing Company and Byron J. Oakes, were entitled to claims 1 to 6, inclusive, and claim 10 of Patent No. 2,111,006 issued March 15, 1938, to Norman P. Robie. At its No. 252 the court below found that Minnesota Mining and Oakes were entitled to claims 1 and 2 of Patent No. 2,111,272 issued March 15, 1938, to Paul M. Paulson. Minnesota Mining and Oakes were the plaintiffs in the two actions brought under R.S. Section 4915, 35 U.S.C.A. § 63, to compel the Commissioner of Patents to issue a patent embodying the claims enumerated to Minnesota Mining and Oakes. The defendants in the respective actions, the Carborundum Company at No. 273, and the Carborundum Company and E. I. DuPont De Nemours & Company at No. 252, have appealed. The appeal from the judgment of the District Court at No. 273 is at our No. 8923 and the appeal from the judgment at No. 252 is at our No. 8922. Since the cases were consolidated for trial in the court below it is appropriate to dispose of the appeals in one opinion.

The findings of fact, conclusions of law and discussion of the court below, reported in D.C., 59 F.Supp. 709-720, are so fully set forth that to avoid needless repetition reference is here made to that opinion. We think it is sufficient to state that questions of priority of invention having arisen between Oakes and Robie and Oakes and Paulson there were extended proceedings in the Patent Office.1 Oakes claimed that he was entitled to copy into his original application filed August 24, 1931, claims 1 to 10 of Robie's patent and claims 1 and 2 of Paulson's patent. Robie's patent was for "Abrasive Products and Methods of Manufacturing the Same". Paulson's patent was for "Abrasive Material". Oakes' patent application No. 558,872 filed on August 24, 1931, was for "Vinyl Resin Adhesive Sandpaper" and claimed, inter alia, a bond, consisting of a "polymerized vinyl compound",2 to hold the abrasive material in place. Robie's claims 5 and 10 and Paulson's claims 1 and 2 appropriated polyvinyl alcohol as a binder. Robie's claims 1 to 4 inclusive and claim 6 appropriated a polymerized vinyl compound or a polyvinyl compound3 as the bond.

The Patent Office tribunals decided that Oakes was not entitled to preempt Robie's or Paulson's claims concluding in the Robie interference that Oakes by his 1931 application could not "disclose a small number of chemical agents, state that they fall in a certain genus and later claim specifically a previously unnamed unspecified member of that genus which somebody else has found to possess desirable qualities.", and that Oakes' general monomeric and polymeric formulas, discussed hereinafter in some detail, could not be deemed to include polyvinyl alcohol. A like decision on substantially similar grounds was reached in the Paulson interference which was based on an application filed by Oakes in 1938, Oakes' 1938 application containing the substance of his 1931 application and being a continuation in part thereof.4

As we have stated only two of Robie's claims in issue, viz., 5 and 10, appropriated polyvinyl alcohol as a bond. The others claimed a "polymerized vinyl compound". None the less the parties to the Oakes v. Robie interference and the tribunals of the Patent Office seem to have agreed that if Oakes' 1931 application had disclosed polyvinyl alcohol, Oakes would have been entitled to all of Robie's claims sought to be preempted whether appropriating polyvinyl alcohol or not. Like positions seem to have been taken by the parties in the court below. The court concluded that Oakes' 1931 application did disclose the use of polyvinyl alcohol as the bond or binder and accordingly it adjudged Oakes to be the first original and lawful inventor of the invention described in claims 1 to 6 inclusive and claim 105 of Robie's patent and in claims 1 and 2 of Paulson's patent.

At the trial in the District Court the plaintiffs offered as new evidence the testimony of certain experts, to be discussed more at length hereinafter. By this testimony the plaintiffs sought to show that Oakes in the specification of his 1931 application did disclose the use of polyvinyl alcohol as a bond. The defendants objected to the receipt of this evidence, relying on Barrett Co. v. Koppers Co., 3 Cir., 22 F.2d 395. The defendants assert in substance that the expert testimony offered in the District Court was available to the plaintiffs at the time of the proceedings in the Patent Office and therefore should not have been received by the District Court. But as the learned District Judge pointed out the circumstances of the cited case are clearly distinguishable from those of the cases at bar for in the Koppers case the plaintiffs in the R.S. Section 4915 proceeding had instructed their witnesses in the interference not to answer questions which would disclose subsequent commercial practices and, thereafter, had endeavored to offer this very testimony in the District Court. R.S. Section 4915 provides that the trial before the District Court "shall be without prejudice * * * to the right of the parties to take further testimony". It should be noted that prior to the 1927 amendment to R. S. Section 4915, 44 Stat. 1336, Sec. 11, the evidence given in the Patent Office in an interference proceeding could be introduced in a District Court only as secondary evidence, after proper foundation laid. General Talking Pictures Corp. v. American Tri-Ergon Corp., 3 Cir., 96 F.2d 800, 811-812. To adopt the view contended for here by the defendants would be to change the nature of an R.S. Section 4915 proceeding and to rewrite the statute. Accordingly we reject it.

After stating that the narrow issue presented is whether page 5 of Oakes' 1931 application "makes a disclosure of PVA polyvinyl alcohol, i.e., a polyvinyl compound containing sufficient hydroxyl groups to be self-dispersible in water and usable as a bond for sandpaper.", and that "Other issues are substantially similar and will be decided by the determination of the issue posited.", the trial court went on to say, "This being so the issues of law drop from the case. What we have at bottom, is a fact question." We conclude that the court below, to some degree at least, misunderstood the principle of Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657. Mr. Justice Brewer stated the heart of the rule as follows: "Upon principle and authority, * * * it must be laid down as a rule that, where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction."

Morgan v. Daniels states a rule of law whereby a fact question must be judged. The question therefore is whether all competent evidence, "new" and "old", offered to the District Court carries "thorough conviction" that the Patent Office erred. General Talking Pictures Corp. v. American T. Corp., supra, at page 812 of 96 F.2d. A proceeding under R.S. Section 4915 is an anomaly. The trial in a District Court is a trial de novo. But the decision of the Patent Office may not be reversed unless the evidence before the court carries thorough conviction that the Patent Office erred.6 In other words, a District Court may not reverse the decision of the Patent Office on a mere preponderance of the evidence. More is required. The District Court must find that the decision of the Patent Office was without substantial basis in the evidence or was wrong as a matter of law. In the cases at bar the trial court does not seem to have applied such a rule. Though it carefully weighed all the testimony the district court seems to have reached its conclusions on what it deemed to be a preponderance of the evidence.

But quite apart from the foregoing the words of a patent or a patent application, like the words of specific claims therein, always raise a question of law for the court and may not be determined by the opinion of experts. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S.Ct. 9, 74 L.Ed. 147; Solomon v. Renstrom, 8 Cir., 150 F.2d 805, 807. The fundamental question in the cases at bar is whether Oakes' 1931 application fulfilled the requirements of R.S. Section 4888, 35 U.S.C.A. § 33; viz., whether Oakes in his 1931 application described his invention or discovery "in such full, clear, concise and exact" terms as to enable one skilled in the art to ascertain its nature. This is a question of law, open to this court, precisely as it was open to the court below.

Turning now to Oakes' 1931 application we find, as has been stated, that it is for a "Vinyl Resin Adhesive Sandpaper", the bond for which is to be supplied by "* * * condensation or polymerization products of organic compounds having the ethylene linkage which exhibits the property of polymerization under the influence of heat, light, pressure, etc., or combinations of the same." The application teaches that the compounds employed as bonds shall be waterproof and not water soluble; that they shall be thermoplastic, i.e., that they shall soften on heating, and that they shall be...

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