Beidler v. Caps

• Decision Date: 19 December 1929
• Docket Number: No. 2156.,2156.
• Citation: 36 F.2d 122,17 CCPA 703
• Parties: BEIDLER v. CAPS et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 703, 36 F.2d 122 (1929)

BEIDLER v. CAPS et al.

No. 2156.

Court of Customs and Patent Appeals.

December 19, 1929.

Frank S. Appleman, of Washington, D. C. (Charles J. Williamson, of Washington, D. C., of counsel), for appellant.

Edward H. Cumpston, of Rochester, N. Y., for appellees.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents in an interference proceeding, affirming the unanimous decisions of the lower tribunals of the Patent Office awarding priority of invention to the senior parties, Caps and Leininger, appellees herein.

The invention in controversy relates to photographing apparatus, and more specifically to a film holding means which is capable of holding the film in the focal plane of said apparatus, and in so mounting the means as to permit its movement while in the camera to present the two sides of the film (sensitized on both sides) alternately to the light admitting means of the camera.

The subject-matter in issue is more particularly defined by the counts, which read as follows:

"1. The combination with a camera body and a support for a sheet of double coated sensitive material in the focal plane thereof, of means for rotating said support within the camera body to present first one side and then the other side of the sensitive material to exposure.

"2. In a camera having a chamber and a lens, a member for holding film in the focal plane of the lens, and means for mounting the holder for movement in situ whereby the sides of the film are successively exposed to light admitted by the lens.

"3. In a photographic camera, the combination with the casing and lens, of a frame mounted on the casing to rotate on an axis transverse to the optical axis of the lens, means carried by said frame for supplying photographic material, and means carried by said frame and projecting into the casing across the optical axis of the lens for reversibly positioning such photographic material in the focal plane of the lens.

The application of appellant was filed on April 4, 1924; appellees filed on May 25, 1923. Appellees therefore are the senior parties, and the burden was upon appellant to establish by a preponderance of evidence a date of conception prior to that of appellees, and a reduction to practice thereafter with reasonable diligence from on or about May 25, 1923, when appellees entered the field.

Both parties introduced testimony. All of the interference tribunals of the Patent Office united in finding the following: That appellant was the first to conceive and disclose, but the last to reduce the invention to practice; that there was not the requisite proof of conception or reduction to practice by appellees prior to their filing date of May 25, 1923, and therefore said filing date must be held to be the date of conception and a constructive reduction to practice; that appellees actually reduced the invention to practice between September 20 and October 1, 1923; that appellant reduced the invention to practice in March, 1924; that appellant failed to exercise due diligence in reducing the invention to practice; that appellant failed to establish that he had disclosed the invention to the party Leininger, as charged, prior to appellees' date of conception; that appellees were joint inventors of the invention; that by reason of lack of due diligence upon the part of appellant in reducing the invention to practice priority should be awarded to appellees, the senior parties, although appellant's date of conception and disclosure was prior to that of appellees.

The findings of fact of the three tribunals of the Patent Office, being unanimous, will not be disturbed by this court unless manifestly wrong. Leonard v. Everett, 52 App. D. C. 90, 281 F. 594; Greenawalt' v. Dwight, 49 App. D. C. 82, 258 F. 982. Under this rule we must accept the findings of the Patent Office that appellant did not disclose the invention to Leininger, and that appellees were joint inventors of the invention in issue, as set out in their application, for clearly the evidence and the law warranted such findings.

As to joint invention by appellees, the rule is that an application in due form, made by two persons claiming to be joint inventors, is prima facie evidence that they were such. Lemp v. Randall, 33 App. D. C. 430.

As to the alleged disclosure of the invention by appellant to Leininger, the evidence was sharply contradictory, and we find no ground upon which to hold that there was manifest error in finding that the alleged disclosure was not made.

Another contention of appellant is that the Commissioner erred in not finding that the invention in issue was known and discussed by the officials of the Cameragraph Company (a corporation of which appellees were employees, prior to its acquisition by the Photostat Corporation, of which appellees are now employees) prior to May 25, 1923, appellees' date of conception. The Commissioner held that the evidence did not support such a finding, and an examination of the record fully sustains the Commissioner in this respect. Furthermore, it has been held that the question of whether a senior party to an interference may be entitled to priority as against all persons is not an issue in an interference proceeding, but the question is whether the junior applicant has sustained the burden of establishing his own priority over that of his opponent. Prindle v. Brown, 24 App. D. C. 114.

There are certain other errors alleged by appellant, which even if found by us to exist would not warrant a reversal of the decision of the Commissioner, because such errors clearly did not affect the conclusion reached. The principal error of this character charged is a finding by the Commissioner that appellant was chargeable with diligence in reducing the invention to practice from the date of his conception thereof, whereas in law he was so chargeable only from the time that appellees entered the field, or from May 25, 1923. Appellant is correct in this, but we think it clear from the Commissioner's decision that he found there was lack of diligence by appellant from immediately prior to May 25, 1923, when his duty of diligence began to run. However this may be, we shall discuss the proof of diligence later.

Another error alleged by appellant is that the Commissioner found that appellant had actual knowledge of the law requiring diligence in reducing his invention to practice. It is immaterial whether he had such actual knowledge or not. Ignorance of the law would not affect the measure of diligence required.

Another error charged is that the Commissioner found that appellees conceived the invention on December 10, 1922. It is true that the Commissioner was in error in so holding, for there was no corroborative proof of such conception as the law requires, but the error was immaterial for it in no wise affected the conclusion reached, and the result would have been the same had he held, as did the other tribunals of the Patent Office, that the date of conception by appellees was May 25, 1923. We would further observe that we do not think the Commissioner intended to hold that there was a conception and disclosure by appellees in December, 1922.

This leaves but a single question remaining, and that is: Did the appellant submit such proof of diligence in reducing the invention to practice that there was error on the part of the Commissioner in holding that he did not? The burden was upon appellant to show such diligence by a preponderance of evidence.

Appellant is president of the Rectigraph Company of Rochester, N. Y., and has for many years controlled its activities, giving to it his undivided attention. Said company has for over 20 years been engaged in the photo copying art. Appellant was a creator of this art and has had many patents issued to him relating to copying machines. He conceived and disclosed the invention here in issue in the fall of 1909, but did nothing toward reducing the same to practice until March, 1923. The Rectigraph Company, of which he was president and...