Barrett Co. v. Koppers Co.

• Decision Date: 09 November 1927
• Docket Number: 3518.,No. 3517,3517
• Citation: 22 F.2d 395
• Parties: BARRETT CO. et al. v. KOPPERS CO. et al. KOPPERS CO. et al. v. BARRETT CO. et al.
• Court: U.S. Court of Appeals — Third Circuit

22 F.2d 395 (1927)

BARRETT CO. et al. v. KOPPERS CO. et al.

KOPPERS CO. et al. v. BARRETT CO. et al.

Nos. 3517, 3518.

Circuit Court of Appeals, Third Circuit.

September 30, 1927.

Rehearing Denied November 9, 1927.

R. T. M. McCready, of Pittsburgh, Pa. (W. B. Morton, of New York City, of counsel), for Barrett Co.

Byrnes, Stebbins & Parmelee, of Pittsburgh, Pa. (George E. Stebbins, of Pittsburgh, Pa., and Henry Love Clarke, of Baltimore, Md., of counsel), for Koppers Co.

Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.

WOOLLEY, Circuit Judge.

The invention in controversy is a process for the manufacture of artificial resin whose novel feature is the addition of an intermediate step to the previously known polymerization process involving an acid treatment and distillation whereby certain impurities which affect the color of the resin are removed. Marc Darrin conceived and reduced the invention to practice on July 1, 1918, and filed an application for a patent on September 6 of the same year. On March 16, 1919, patent No. 1,297,328 issued to his assignee, the K. Koppers Company, one of the defendants in this action.

On May 6, 1919, Clark M. Dennis filed an application for a patent for the same invention covered by six claims which he had copied from the Darrin patent. The Patent Office declared an interference on six counts framed upon those claims. In the interference Dennis and the Barrett Company, a corporation to which he had assigned his rights in his patent application, claimed that he had conceived the invention and had, in the laboratory, reduced it to practice in the latter part of the year 1916, but expressly refused to disclose and to allow their witnesses to answer questions which would disclose subsequent commercial practices. Regarding Dennis' laboratory work merely as experiments and having nothing more before them to show actual reduction to practice, the Examiner of Interferences and then the Board of Examiners in Chief and finally the Commissioner of Patents all found that Dennis was first to conceive the invention but last to reduce it to practice, and, accordingly, awarded priority to Darrin. On appeal the Court of Appeals of the District of Columbia was of the same opinion and affirmed the decision of the last Patent Office tribunal. Then the Barrett Company and Dennis brought this action in the District Court under section 4915, R. S. (35 USCA § 63; Comp. St. § 9460) praying that the Commissioner of Patents be directed to issue to them, as inventor and assignee respectively, a patent on the Dennis application.

The record in the instant case consists of the record in the case before the Court of Appeals of the District of Columbia and, in addition, evidence of commercial practices to show actual reduction to practice through the year 1917 following the laboratory experiments of 1916 and for a year before Darrin's claimed date, the very subject-matter concerning which, at the interference hearings, witnesses for the Dennis application were asked questions and the Barrett Company forbade them to answer. The learned trial court held that the Barrett Company and Dennis were estopped to present this evidence for the purpose of overcoming the evidential effect of the decision of the Court of Appeals of the District of Columbia under the doctrine of Morgan v. Daniels, and, first dismissing the plaintiffs' bill, found on a counterclaim pleaded by the defendants that certain claims of the Darrin patent were valid and infringed and awarded an accounting but refused an injunction. Both parties appealed, the defendants solely on the court's refusal to issue an injunction against future infringement by the plaintiffs.

Although at the argument on appeal several shadowy issues were raised, we shall confine our discussion and decision to the one question; whether the plaintiffs by withholding evidence at the interference proceeding which was then in their possession and control are estopped to present that evidence in this action to overcome the decision of the Court of Appeals and thereafter obtain a patent. As there are no precedents directly or remotely bearing on this question, we shall decide it on principle.

Experience has shown that two men wholly unknown to each other may at different times make the same invention. Certainly both are not entitled to patents, for a patent issues only to the first and original inventor. To meet such a case the law specifically provides a forum and a proceeding for hearing and deciding which was the first and original inventor and which, therefore, is entitled to a patent. Of such a proceeding Dennis availed himself when he applied for a patent and copied in his application claims of the Darrin patent already issued. As he intended, that created a situation...