BOUCHER INVENTIONS v. Sola Electric Co., Civ. A. No. 615.

• Decision Date: 26 July 1940
• Docket Number: Civ. A. No. 615.
• Citation: BOUCHER INVENTIONS v. Sola Electric Co., 35 F.Supp. 504 (D. D.C. 1940)
• Parties: BOUCHER INVENTIONS, LIMITED, et al. v. SOLA ELECTRIC CO. et al.
• Court: U.S. District Court — District of Columbia

35 F. Supp. 504

BOUCHER INVENTIONS, LIMITED, et al. v.SOLA ELECTRIC CO. et al.

Civ. A. No. 615.

District Court of the United States for the District of Columbia.

July 26, 1940.

Leslie W. Fricke, of Chicago, Ill., and Nelson J. Jewett, of Washington, D. C., for defendants.

John Howard Joynt and Herbert S. Ward, both of Washington, D. C., for plaintiffs.

BAILEY, Justice.

This cause having come on to be heard upon the pleadings, proceedings and proofs herein, filed on behalf of all parties, before Honorable Jennings BAILEY, Presiding Justice, sitting without a jury; and evidence having been received by the Court on April 15, 16 and 17, 1940; and briefs having been filed on behalf of all the parties, oral arguments by respective counsel having been waived, and the Court, being fully advised in the premises, after due consideration thereof makes these, its findings of fact and conclusions of law, as follows:

Findings of Fact.

The Court finds as a matter of fact:

1.PlaintiffCharles P. Boucher is a subject of the King of Great Britain and resides in Jersey City, New Jersey.

2.PlaintiffBoucher Inventions, Ltd., is a corporation organized and existing under the laws of the State of Delaware and has a place of business in Washington, D. C.

3.PlaintiffCharles P. Boucher filed an application for Letters Patent of the United States in the United States Patent Office on September 20, 1935, the same bearing SerialNo. 41,476, and covering an invention entitled "Electrical Transformer Apparatus."

4.PlaintiffBoucher Inventions, Ltd., is the sole owner of all rights in, to and under the aforesaid Charles P. Boucher patent application, subject to an outstanding license thereunder to the National Transformer Corporation of New York, N. Y.

5.DefendantJoseph G. Sola is a citizen of the United States and a resident of the State of Illinois.

6.DefendantSola Electric Co. is a corporation organized and existing under the laws of the State of Delaware and has its office and principal place of business at Chicago, Ill.

7.DefendantJoseph G. Sola filed an application for Letters Patent of the United States in the United States Patent Office on August 27, 1935, said application bearing SerialNo. 38,073, covering an invention entitled "Reactance Transformer," and having resulted in Letters PatentNo. 2,136,895, dated November 15, 1938.

8.DefendantSola Electric Co. is the assignee and the sole owner of the aforesaid Joseph G. Sola patent No. 2,136,895.

9.On April 4, 1936, the Commissioner of Patents declared an interference between the aforesaid Boucher patent application, the aforesaid Sola patent application and an application filed by one James A. Comstock, said interference being designated and known as Boucher v. Comstock v. Sola, No. 72,593, and involving three counts which corresponded respectively to claims 16, 17 and 5 of said Boucher application and claims 1, 2 and 7 of said Sola application and patent.

10.On April 4, 1936, the Commissioner of Patents declared an interference between the aforesaid Boucher patent application and the aforesaid Sola patent application, said interference being designated and known as Boucher v. Sola, No. 72,594, and involving four counts which corresponded respectively to claims 18, 19, 20 and 21 of said Boucher application, and claims 3, 4, 5 and 6 of said Sola application and patent.

11.Evidence, oral and documentary, together with physical exhibits, was taken and introduced before the Patent Office by the parties Boucher, Comstock and Sola in said interference 72,593, and by the parties Boucher and Sola in said interference 72,594, and a hearing was had in each of said interferences where all parties thereto were represented by counsel; and afterwards, on October 19, 1937, the Examiner of Interferences made a decision in interference 72,593, finding that the evidence submitted by Boucher and by Comstock was insufficient to overcome the earlier filing date of Sola and as senior party on the basis of his earlier filing and the evidence offered by him awarded priority of invention of the subject matter of each of the three counts there in issue to said Joseph G. Sola, and holding that neither said Charles P. Boucher nor said James A. Comstock was the first inventor of the subject matter of any of the three counts in issue; and, on October 19, 1937, the Examiner of Interferences made a decision in interference 72,594, finding that the evidence submitted by Boucher was insufficient to overcome the filing date of Sola and as the senior party on the basis of his earlier filing and the evidence offered by him awarded priority of invention of the subject matter of each of the four counts there in issue to said Joseph G. Sola, and holding that said Charles P. Boucher was subsequent in point of time to said Sola with respect to the invention of each of said counts.

12.Appeals from said decision in interference 72,593 were taken by said Boucher and said Comstock, and an appeal from said decision in interference 72,594 was taken by said Boucher to the Board of Appeals of the United States Patent Office; and the appeal of said Comstock having been subsequently dismissed, the Board of Appeals consolidated the two interferences under the number 72,593; and on August 6, 1938 said Board of Appeals affirmed the aforesaid decisions of the Examiner of Interferences awarding priority of invention of the subject matter of each of the seven counts in issue to said Joseph G. Sola.

13.DefendantJoseph G. Sola, early in the year 1933, conceived the invention set forth in each of the claims of his said patent No. 2,136,895, made sketches or drawings of a transformer embodying the invention of said claims and fully explained the invention of said claims to others skilled in the construction and operation of transformers.

14.DefendantJoseph G. Sola, early in the year 1933, constructed the transformer made Exhibit 5 herein, and in the summer of that year he constructed the transformer made Exhibit 17 in this cause, that each of said...