Boucher Inventions v. Sola Electric Co.

• Decision Date: 30 June 1942
• Docket Number: No. 7827.,7827.
• Parties: BOUCHER INVENTIONS, Limited, et al. v. SOLA ELECTRIC CO. et al.
• Court: U.S. Court of Appeals — District of Columbia Circuit

131 F.2d 225 (1942)

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

No. 7827.

United States Court of Appeals for the District of Columbia.

Decided June 30, 1942.

Mr. Herbert S. Ward, with whom Messrs. John Howard Joynt and Scott D. Kellogg were on the brief, all of Washington, D. C., for appellants.

Mr. Leslie W. Fricke, of Chicago, Ill., with whom Mr. Nelson J. Jewett, of Washington, D. C., was on the brief, for appellees.

Before STEPHENS, VINSON and RUTLEDGE, Associate Justices.

RUTLEDGE, Associate Justice.

The suit is to obtain letters patent, filed by Boucher¹ pursuant to Rev.Stat. § 4915 (1878), 35 U.S.C. 63 (1934). The question is one of priority, which in turn rests on reduction to practice.

The invention eliminates the danger of burning out from short circuits in the secondary coils of transformers used in lighting electric neon lights or neon tubes. Sola conceived it early in 1933. His application was filed August 27, 1935. Boucher's on September 20, 1935. The Commissioner of Patents declared an interference between Boucher as junior and Sola as senior party. The Patent Office found in Sola's favor and issued a patent to him. The District Court also decided for him. Its findings and conclusions are reported in 1940, 35 F.Supp. 504. The chief issue here is whether the evidence sustains the finding that Sola reduced his invention to practice before Boucher did. We think it does, and the judgment should be affirmed.

It is admitted that Sola was prior in conception. In 1933 he built two models, Exhibits 5 and 17. He claims that these were sufficient to reduce the invention to practice. Plaintiff says they were insufficient. Sola apparently did nothing further until August 27, 1935, when he filed his application. Boucher claims he conceived and reduced the invention to practice in May and June of 1935. To sustain the claim he relies upon his Exhibits B and AR. The former was in evidence before the Patent Office, but was never tested, apparently because it was never insulated properly to avoid danger from testing.² Exhibit AR was not in evidence before the Patent Office, but was received in the trial court. It was tested both in plaintiff's laboratory and in that of Underwriters' Laboratories. There was some evidence of commercial use. Exhibits B and AR were constructed in May and June, 1935, and the latter was tested in June or early July of that year.

Boucher's burden was to show two things: first, that Sola's reduction to practice was not sufficient; second, that his own was successful. We consider first the evidence relating to Sola's exhibits. It is hardly necessary to note that reduction to practice does not require commercial success or usage.³ We think the evidence clearly shows that Sola's models (Exhibits 5 and 17) work, and worked when they were made in 1933.

Two tests, or series of laboratory tests, were made, one in 1933, one during the trial at plaintiff's insistence. Taken together, the results of the two tests or series demonstate workability beyond question. In the 1933 tests, the models were hooked up with neon tubes, which they lighted successfully, and were operated for fifteen minutes. The models did not burn out. Plaintiff says this length of time was not sufficient to show they would not burn out under conditions of practical operation. It is said several hours, perhaps even days, of continuous operation would be required to demonstrate that they would withstand short circuiting.

We need not determine whether such a degree of perfection would be required,⁴ or whether the evidence concerning the 1933 tests, standing alone, would be sufficient. It does not stand alone. During the trial plaintiff demanded that Exhibit 5 be subjected to further tests of several hours' continuous operation. Plaintiff was confident, apparently, that the model would not withstand the test. Defendant was reluctant to comply, because the model was then several years old and counsel feared the factor of age and deterioration might affect the operation adversely. But defendant met the challenge when plaintiff repeated it insistently.

The test was run for full six hours, during an afternoon when the court was not in session, in accordance with the agreement for submitting to it. Plaintiff and his attorneys were present. The verdict of the test was against them. But they did not accept it. Instead, they insisted the test continue all night. Defendant's attorney declined on the grounds this was unreasonable and the agreement had been complied with fully. At the oral argument plaintiff's attorney conceded if the test made during the trial had been made in 1933, "I would not be in this court now." The position is taken that this test cannot relate back to the date of the laboratory tests in 1933 to show that the invention was then reduced to practice.

Whatever might be true under other circumstances, plaintiff is in no situation to urge this position after demanding and insisting upon the test, and then insisting it continue beyond the agreed time, when the result was not to his liking. Had the result been the contrary one, it may be assumed without violence to the facts in this case that plaintiff's position would be equally insistent that the test during trial be taken as evidence that the invention was not reduced to practice in 1933. Having demanded the test, insisted upon it, received compliance at grave risk to the opposing party, and having no reasonable basis for questioning the sufficiency of the test or that the models were in the identical condition they had in 1933, plaintiff must accept the consequences. In the absence of any evidence of alteration or tampering, the test during trial showed that the identical exhibits with which the 1933 tests were made worked in 1940, though then several years old, and the clear inference is that they were workable and the invention had been reduced to practice in 1933.

This is sufficient to dispose of the appeal. But we may point out that Boucher's action in resting his case before the Patent Office on his untested Exhibit B, withholding the tested Exhibit AR until the trial in the District Court, would raise serious question whether, in the peculiar circumstances, the latter should have been received in evidence, and therefore whether there was sufficient evidence, apart from that relating to Exhibit AR, to sustain a finding that Boucher had reduced the invention to practice before Sola's application was filed. Again at the oral argument the only explanation which was offered for this unusual conduct was that counsel appearing here had not acted before the Patent Office, and his associate who presented the matter there may have failed to submit the tested exhibit through oversight or inadvertence. The explanation is not convincing. Boucher's invention and reduction to practice rested on two, and only two, exhibits. One was B, never tested, and therefore no evidence of workability. The other was AR, tested and, it may be assumed, shown by the test to be fully workable. If only one model was to be presented, the clearly indicated and only sufficient one for the purpose was the model kept without the Patent Office's purview. It seems impossible that an exhibit of such importance could have been overlooked or left out by inadvertence.

The practice, under Section 4915 as well as within the Patent Office itself, contemplates a full disclosure to that office, so far as is reasonably possible, particularly in relation to models, exhibits, drawings, etc. While the 4915 suit is de novo and permits introduction of evidence not presented to the Patent Office, it does not contemplate the suppression or the withholding of evidence so readily available and of such importance as was Exhibit AR or oversight of such glaring proportions.⁵ We have added these views, first, to indicate that if the evidence concerning Sola's reduction to practice were less conclusive than it is, still there would be serious question whether the record contains admissible evidence to show that Boucher reduced the invention to practice prior to the filing of Sola's application. We have added them also, though not strictly necessary for decision of the cause, to avoid by admonition, if possible, the necessity for making decision on such a ground in another case, in which the consequences might be more serious.

Other questions presented are not of sufficient importance to require statement or consideration in the opinion. The evidence is clearly sufficient to sustain the findings, and the judgment is affirmed.

STEPHENS, Associate Justice, dissenting.

I think this case should be remanded for further findings. The pertinent dates are as follows:¹ Sola's conception was in January, 1933; Sola's alleged reduction to practice was February 1, 1933; Boucher's conception was in March or April, 1935. Boucher's alleged reduction to practice was in March or April, 1935 (in respect of Exhibit B), June or July, 1935 (in respect of Exhibit AR); Sola's filing date (constructive reduction to practice) was August 27, 1935; Boucher's filing date (constructive reduction to practice) was September 20, 1935.

The finding below was in favor of Sola on the ground that he alone had made an actual reduction to practice. I think this finding was not warranted by the evidence. The essential purpose of the invention in question is that of preventing burning out of the secondary coils of a transformer as the result of the increased current which is occasioned by the lowered resistance which follows upon a short circuit. Sola's asserted reduction to practice is based upon tests of Exhibits 5 and 17 in 1933. The test of Exhibit 5 is shown, so far as the results are concerned, in Exhibit 6, a penciled tabulation. What this shows, so far as it relates to the secondary coils, is merely this: When both secondary coils were short circuited, current flowed through them at a rate of 27.7 milliamperes. When...