Corley v. Robinson

• Citation: 3 F. Supp. 176
• Decision Date: 21 April 1933
• Docket Number: No. 285.,285.
• Parties: CORLEY et al. v. ROBINSON.
• Court: U.S. District Court — District of New Hampshire

3 F. Supp. 176

CORLEY et al. v. ROBINSON.

No. 285.

District Court, D. New Hampshire.

April 21, 1933.

J. Edward Flynn, of Concord, N. H., and Nathaniel Frucht, of Providence, R. I., for plaintiffs.

Emery, Booth, Varney & Townsend, and Lawrence G. Miller, all of Boston, Mass., and Donald Knowlton of Concord, N. H., for defendant.

MORRIS, District Judge.

This is a bill in equity, filed November 29, 1932, under the provisions of Revised Statutes, § 4915 (35 USCA § 63), to determine priority of invention with respect to a portable turret standpipe or water gun and appliances of the type used by fire departments in extinguishing fires.

On January 7, 1929, the defendant, Robinson, filed an application for a patent, No. 330,856. On March 5, 1929, the petitioner Corley filed an application, No. 344,338, for a patent covering practically the same appliance with minor differences. His rights were assigned to the J. M. Baker Pattern Company. Each of the applicants claimed invention of a water-gun device similar in construction. An interference between the two applications was declared April 4, 1930 (patent interference No. 59718). In the interference proceedings there were ten counts in issue between the parties, but counts 2 and 10 are said to be illustrative:

Count 2. "A portable turret standpipe for fire hose, including a horizontal tubular body including a member having inlet openings at one end and an elbow member at the other end for directing the flow of water through the body upwardly, a head swiveled on said elbow member and a nozzle mounted on said head, and a pair of support arms lying generally in the plane of the body and pivotally mounted on opposite sides of the standpipe to swing horizontally from a folded position lying along the body to an extended standpipe-supporting position at an angle to the body."

Count 10. "A water gun comprising a pipe having a horizontal portion terminating in an elbow, a monitor carried by said elbow, holding means positioned on each side of said elbow and adapted to vertically support a pivot pin, pivot pins in said holding means, legs pivotally mounted on said pivot pins to swing horizontally thereon, and adapted selectively to lie adjacent said horizontal portion or swing outwardly therefrom substantially in the plane thereof to provide in cooperation with said horizontal portion a base considerable area whereby to support the monitor on the upstanding end of the elbow, and catches for retaining said legs in folded position."

The device in issue is so constructed that a stream of water may be played in any direction without moving the gun from a set position. Stability is accomplished by means of hinged legs so attached to the elbow of the gun that they can be opened out at right angles to the axis of the barrel of the gun, and when it is not in use, the legs can be swung to a position adjacent to the barrel of the gun and parallel to its longitudinal axis. The device is of a character to be readily carried by a fireman and, when positioned on the ground, needs no other support. Its stability is due to the fact that the folding legs when unfolded furnish a base broad enough to support the appliance, particularly as the action of the water passing through the elbow and so upward through the yoke and nozzle has a downward pressure.

The specific portions of the device in issue are the rounding elbow providing for a perpendicular attachment for the yoke and nozzle and the longitudinal folding legs to give the gun stability when placed on the ground.

The case was first heard by the Examiner of Interference, who awarded priority to Robinson. Corley appealed from the examiner's decision to the Board of Patent Appeals, which board on June 3, 1932, handed down an opinion sustaining the decision of the examiner. Thereupon Corley filed this bill in equity.

Whether or not the form of the elbow and leg attachments are of such form and character as to disclose invention is a question not involved in this proceeding.

The defendant relies in part upon newly discovered evidence. Other than newly discovered evidence and supporting depositions of numerous witnesses, the testimony offered before the court consists of a transcript of the oral testimony introduced before the examiner, the exhibits, the decision of the examiner, and the opinion of the Board of Appeals. The evidence used before the examiner and opinions were admitted by agreement of parties.

The law applicable to the issues involved in the case appears to be fairly well settled in this jurisdiction dating back to an opinion of Judge Putnam in the case of Greenwood et al. v. Dover et al. (C. C. A.) 194 F. 91, wherein it was held, following Morgan v. Daniels, 153 U. S. 120, 14 S. Ct. 772, 38 L. Ed. 657, that the rule applicable to a suit in equity brought under the provisions of R. S. 4915 as amended, to obtain a patent which was awarded to another by the Court of Appeals of the District of Columbia in interference proceedings, is that such decision must be given weight in the nature of a departmental decision, and, to overcome it, the evidence must be of such character, and sufficient at least to require a clear conviction that it was erroneous. In the case of United Shoe Machinery Corp. v. Muther, 288 F. 283, 287, Judge Johnson, speaking for the Circuit Court of Appeals for the First Circuit, says: "The Commissioner of Patents is an administrative officer of the government, charged with the duty of administrating the patent laws of the United States, and the same presumption should be applied to his acts and decisions as to those of any other administrative officer to whom Congress has committed the administration of any law." For authorities in other jurisdictions, see Roth v. Harris (C. C. A.) 168 F. 279; Hillard v. Remington Typewriter Co. (C. C. A.) 186 F. 334; Novelty Glass Mfg. Co. v. Brookfield et al. (C. C. A.) 170 F. 946; Rousso v. Barber (C. C. A.) 3 F.(2d) 740; Gold v. Gold (C. C. A.) 237 F. 84; Uihlein v. General Electric Co. (C. C. A.) 47 F.(2d) 997.

In determining the question of priority of invention in interference proceedings, with respect to the weight to be given to the decision of administrative heads, the courts have used varying language. The language of Morgan v. Daniels is that there must be a clear conviction on the record that the conclusions of the Court of Appeals was erroneous. This language was adopted by Judge Putnam in Greenwood v. Dover, supra. In the case of Automatic Weighing Machine Co. v. Pneumatic Scale Corp. (C. C. A.) 166 F. 288, 304, Judge Colt of this circuit said: "Upon this question of fact the decision of the Patent Office tribunals and the Court of Appeals of the District of Columbia is entitled to great weight, if it is not absolutely controlling." Another court (Hillard v. Remington Typewriter Co. C. C. A. 186 F. 334, 336) says: "When the decision is finally made it carries a strong presumption in favor of the successful party." In another case (Novelty Glass Mfg. Co. v. Brookfield C. C. A. 170 F. 946, 955) it is said: "The decision in the interference proceeding, which, while not conclusive, is for the defendants to overcome." In another case (Computing Scale Co. v. Standard Computing Scales Co. C. C. A. 195 F. 508, 515) it is said: "An interference award * * * should be adopted by the courts in subsequent litigation between the same parties unless there is thorough conviction to the contrary."

While the point has been expressed in different language, the conclusion reached, however phrased, is the same. We therefore conclude in the instant case that unless the evidence before the commissioner taken in connection with the new evidence so far satisfies the court that the decision of the Examiner of Interference affirmed by the Board of Appeals was clearly wrong, priority of invention must be awarded to Robinson. The burden of proof is upon the petitioner. Morgan v. Daniels, supra.

In the case of Automatic Weighing Machine Co. v. Pneumatic Scale Corp., supra, Judge Colt lays down the following rules for guidance in determining the question of priority: "When two patents for the same invention have been issued to independent inventors, * * * 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 inventions; 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." The court sees no reason why these suggestions are not as applicable to an interference proceeding as to a contest between rival patentees.

In approaching the sole question at issue in this case, viz., that of priority of invention, it seems proper to first consider the testimony introduced before the examiner in the interference proceedings to determine whether or not the ruling of the examiner concurred in by the Board of Appeals, awarding priority to Robinson, is so clearly wrong that the court ought to reach a different conclusion. If the determination of the administrative bodies is sustained, then it becomes the duty of the court to consider the additional evidence with respect to its bearing upon the original testimony with a view of determining whether such additional testimony so clearly elucidates controversial questions as to show that the earlier result is clearly wrong.

The Examiner of Interference has allowed Robinson the date of conception and reduction to practice as of October 13, 1928, and held that he was active from that date to January 7, 1929, the date of filing his application. The court understands that Corley concedes such dates.

By "reduction to practice" is meant the...