Automatic Weighing Mach. Co. v. Pneumatic Scale Corp.

• Decision Date: 05 January 1909
• Docket Number: 768.
• Citation: 166 F. 288
• Parties: AUTOMATIC WEIGHING MACH. CO. v. PNEUMATIC SCALE CORPORATION, Limited.
• Court: U.S. Court of Appeals — First Circuit

166 F. 288

AUTOMATIC WEIGHING MACH. CO. v. PNEUMATIC SCALE CORPORATION, Limited.

No. 768.

United States Court of Appeals, First Circuit.

January 5, 1909

Benjamin Phillips and Elmer P. Howe (Alfred H. Hildreth, on the brief), for appellant.

William K. Richardson (J. Lewis Stackpole, on the brief), for appellee.

Before COLT and LOWELL, Circuit Judges, and ALDRICH, District Judge.

COLT Circuit Judge.

This is a bill in equity brought under section 4920 of the Revised Statutes (U.S. Comp. St. 1901, p. 3394) for infringement of the first seven claims of the Thomas patent, No. 766,004, for improvements in automatic weighing machines. The invention consists, broadly speaking, in the addition of a second hopper with a time valve to the previous single-hopper weighing machine of the Doble and Watson patent, No. 556,258.

The only defense is priority of invention by Thomas W. Watson, to whom a patent was issued for the same invention. It is admitted that both Thomas and Watson were independent inventors of this improvement.

Section 4920 provides as follows:

'In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one or more of the following special matters:

'Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another who was using reasonable diligence in adapting and perfecting the same; or * * *

'Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented * * *

'And the like defenses may be pleaded in any suit in equity for relief against an alleged infringement.'

Under these provisions, the defendant contends, first, that Watson was the original and first inventor of the thing patented, and, second, that Thomas unjustly obtained his patent for that which was in fact invented by Watson, who was using reasonable diligence in adapting and perfecting the same. The first defense turns upon the respective dates of the Thomas and Watson inventions, and the second defense raises a question of fact as to Watson's diligence in adapting and perfecting his invention.

Thomas filed his application December 17, 1896, and his patent issued July 26, 1904.

Watson conceived his invention, illustrated it by a drawing, and disclosed it to others, as early as January 10, 1896. He reduced his invention to practice by the building of a machine in April, 1897. He filed his application March 11, 1898, and his patent issued September 26, 1899.

It may be noted, first, that Thomas' application antedates Watson's reduction to practice by 4 months, and Watson's application by 15 months; and, second, that Watson's conception antedates Thomas's application by 11 months.

The main controversy with respect to the Thomas invention is whether the date of his invention is the date of his application, December 17, 1896, and the main controversy with respect to the Watson invention is whether the date of his invention is the date of his conception, January 10, 1896.

On April 24, 1901, the Patent Office declared an interference between the Thomas application and the Watson patent, under section 4904 of the Revised statutes (U.S. Comp. St. 1901, p. 3389):

'Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the primary examiner, or of the board of examiners-in-chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe.'

Under a rule of the Patent Office, the filing of an allowable application is a constructive reduction to practice. In accordance with this rule, the date of the Thomas invention was fixed as of December 17, 1896, the date of his application; and the burden of proof was thrown upon Watson to establish the fact of reasonable diligence from the date of his prior conception, January 10, 1896, to the time Thomas filed his application.

Upon this issue of diligence on the part of Watson, the Examiner of Interferences and the Commissioner of Patents, two of the three Patent Office tribunals which passed upon the question, and the Court of Appeals of the District of Columbia, found against Watson, and adjudged Thomas to be the prior inventor; and accordingly a patent was issued to Thomas under section 4904. As a result of the interference proceedings, there are two outstanding patents for the same invention issued to independent inventors.

The decision in interference proceedings is not conclusive on the question of priority of invention. The same question may arise in subsequent suits instituted under sections 4915, 4918, and 4920 of the Revised Statutes (U.S. Comp. St. 1901, pp. 3392, 3394).

Section 4915 provides that the unsuccessful applicant may bring a bill in equity, for the purpose of determining his right to receive a patent for his invention. The remedy under this section is in effect an appeal from the decision of the Patent Office tribunals.

Section 4918 provides that where there are interfering patents any person interested in any one of them may bring a bill in equity against the interfering patentee, and the court may declare either of the patents void in whole or in part.

Section 4920 provides that the defendant in a suit for infringement may prove any of the special matters of defense therein enumerated.

In the present suit, as we have seen, the question of priority of invention is raised under paragraphs 2 and 4 of section 4920. In order to determine the question of priority under these paragraphs, we must, as already pointed out, ascertain the respective dates of the Thomas and Watson inventions. If we find the date of the Thomas invention is prior to the date of the Watson invention, then Thomas is the original and first inventor, unless Watson was using reasonable diligence in adapting and perfecting his invention from the time of his conception. On the other hand, if we find that the date of the Watson invention is prior to the date of the Thomas invention, then Watson is the original and first inventor. No question of diligence arises regarding the Thomas invention, because the complainant does not undertake to carry the date of the Thomas invention back of his application, while in the case of Watson it is sought to carry the date of his invention back to his conception.

In patented inventions there are several distinct stages of the invention. Some patented inventions comprise only three stages, namely, conception (evidenced by drawings, disclosures, or models), application, patent; while other patented inventions comprise four stages, namely, conception, reduction to practice, application, patent.

The date of the first class of patented inventions must be either (1) the date of the patent, or (2) the date of the application, or (3) the date of the conception; while the date of the second class must be either (1) the date of the patent, or (2) the date of the application, or (3) the date of the reduction to practice, or (4) the date of the conception.

When two patents for the same invention have been issued to independent inventors, we understand the rule to be that the dates of their respective inventions are, first, the dates of the patents; second, the dates of the applications, provided the application sufficiently describes the invention; third, the dates of actual reduction to practice; fourth, the dates of conception; with this qualification, that, if either patentee seeks to carry the date of his invention back to the date of his conception, he must show reasonable diligence in adapting and perfecting his invention, either by actual reduction to practice or by filing his application.

Applying this rule to the present case, we find that the date of the Thomas patent is July 26, 1904, and the date of his application is December 17, 1896. We also find that the date of the Watson patent is September 26, 1899, the date of his application is March 11, 1898, the date of his actual reduction to practice is April, 1897, and the date of his conception is January 10, 1896.

Upon a comparison of these dates, it appears that Thomas' application of December 17, 1896, carries the date of his invention back of Watson's application, March 11, 1898, and back of Watson's actual reduction to practice, April, 1897, but not back of Watson's conception, January 10, 1896. It follows, therefore, that Watson, in order to establish an earlier date than Thomas, must show that between the date of his conception, January 10, 1896, and the date of his actual reduction to practice, April, 1897, he was 'using reasonable diligence in adapting and perfecting' his invention.

The defendant contends that the courts have adopted another and a different rule for determining the dates of inventions under the patent laws, and that the rule is as follows: Inventions are divided into two classes, simple and complicated. Simple inventions may be completed by drawings or disclosure which sufficiently describe the invention, while complicated inventions require for their completion actual reduction to practice. Under this rule the date of an invention depends upon the character of the invention. If the invention is a simple one, the date may be (1) the date of the patent, (2) the...