Ellis-Foster Co. v. Reichhold Chemicals

• Decision Date: 26 June 1952
• Docket Number: No. 10643.,10643.
• Citation: 198 F.2d 42
• Parties: ELLIS-FOSTER CO. v. REICHHOLD CHEMICALS, Inc.
• Court: U.S. Court of Appeals — Third Circuit

198 F.2d 42 (1952)

ELLIS-FOSTER CO. v. REICHHOLD CHEMICALS, Inc.

No. 10643.

United States Court of Appeals Third Circuit.

Argued May 9, 1952.

Decided June 26, 1952.

William D. Burrows, New York City (Lindabury, Steelman & Lafferty, Newark, N. J., on the brief), for appellant.

Harry C. Bierman, New York City, for appellee.

Before GOODRICH, KALODNER and HASTIE, Circuit Judges.

GOODRICH, Circuit Judge.

This is a suit for patent infringement, the subject matter a patent to Ellis, No. 2,063,542. The trial judge made extensive findings of fact, D.C., 88 F.Supp. 236, all of which favored the plaintiff except one and that one was fatal. He found that the Ellis patent was anticipated by the disclosure in Humphrey patent 2,025,947. This original finding was adhered to, D.C., 100 F.Supp. 594, when, at the plaintiff's request, we sent the case back, after appeal, for the reception of evidence alleged to be newly discovered and important.

The subject of the patent is interesting. It has been explained to us clearly in a very able presentation on behalf of the appellant, in which we have been led through the chemistry of the reactions of maleic acid on rosin and the esterification of the resulting tribasic acid by heating with glycerine. The chemistry involved is both theoretically interesting and commercially important in the lacquer and varnish industry.

The view we take of the case makes it unnecessary to consider whether Humphrey anticipated Ellis or not, or even to consider whether, as an original proposition, invention is involved in reacting maleic acid with rosin to form a tribasic acid before esterification with glycerine. We think the case turns on a question of law concerning a foreign invention for which patents were applied for in Germany, England and the United States prior to the Ellis date of invention in this country.

The plaintiff admits that his invention was preceded in time by the discovery of Krzikalla and Wolff in Germany. Applications for a patent on the invention were filed by Krzikalla in Germany on March 15, 1930 and in England on May 12, 1930. The United States application date for this invention is February 16, 1931. But the date for the Ellis invention, according to a finding by the trial judge, was September 8, 1931 and the date for patent application was May 20, 1932.

The following table presents the significant dates:

                                    Chronology
                  Krzikalla German Application      March 15, 1930
                  Krzikalla British Application     May 12, 1930
                  Krzikalla U. S. Application       February 16, 1931
                  Ellis invention date              September 8, 1931
                  Krzikalla British Patent issued   September 17, 1931
                  Ellis U. S. Application           May 20, 1932
                  Krzikalla U. S. Patent Granted    April 28, 1936
                  Ellis U. S. Patent Granted        December 8, 1936
                  German Krzikalla Patent Granted   June 29, 1939
                

These dates do not require further comment. They speak for themselves. They do not answer our legal questions but they provide the factual data out of which an answer can be built.

There is a general principle applicable to the right to a patent. It is that the patentee must be the first inventor.¹ This is the rule one would expect to find pursuant to the purpose declared in the Constitution:

"To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries". Article I, Section 8.

An important rule, applying the general principle just stated, is that, in a case where there is no foreign element involved, either as to invention or inventor, the application to the United States Patent Office speaks as prior invention as of the application date. Alexander Milburn Co. v. Davis-Bournonville, 1926, 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651.² The rule holds both as to inventions disclosed and claimed and to those disclosed but not claimed.

On facts not disputed Krzikalla was not only the first inventor of that which was claimed here, but he was the first applicant for a patent in Germany, England, and the United States. What, then, is to let Ellis in ahead of Krzikalla? Plaintiff says that R.S. § 4923, 35 U.S.C.A. § 72 makes him an exception to the broad general rule. It reads:

"Whenever it appears that a patentee, at the time of making his application for the patent, believed himself to be the original and first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country, before his invention or discovery thereof, if it had not been patented or described in a printed publication."

There is no dispute that Ellis believed himself to be the first inventor at the time of his application. It is clear also that a mere use or reduction to practice in a foreign country cannot invalidate a patent obtained under this statute.³

But that does not answer the questions raised in this case based on the date table set out above. We have here a domestic application, based, it is true, upon a foreign invention, but which precedes the plaintiff's domestic invention date, as it was found by the trial court.

The plaintiff, however, claims that the Supreme Court in the Alexander Milburn company case, above cited, indicates a result which supports the Ellis claim. Here is the language relied upon:

"The policy of the statute as to foreign inventions obviously stands on its own footing and cannot be applied to domestic affairs." 270 U.S. at page 402, 46 S.Ct. at page 325.

As we understand the court, it merely announces that there is an exception to the first inventor rule in the case of foreign inventions, as the statute says. This is certainly true in the case of a foreign reduction to practice which is not published or patented. But the court did not say the exception applied where the foreign invention was the basis of an application in this country. We are convinced that the above quoted statute refers only to practice and patenting abroad and has no bearing upon United States applications based on a foreign invention.

Another statute which is relevant to our consideration here is R.S. § 4887, 35 U.S. C.A. § 32, the second paragraph of which provides as follows:

"An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country: * * *."⁴

The Supreme Court has considered and discussed the policy inconsistency between this statute and 35 U.S.C.A. § 72 previously quoted. In Electric Storage Battery Co. v. Shimadzu, 1939, 307 U.S. 5 at page 13, 59 S.Ct. 675, 681, 83 L.Ed. 1075, Mr. Justice Roberts says, "Thus, if a diligent domestic...