Gowen v. Hendry

• Decision Date: 27 January 1930
• Docket Number: Patent Appeal No. 2216.
• Citation: 37 F.2d 426,17 CCPA 789
• Parties: GOWEN v. HENDRY et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 789, 37 F.2d 426 (1930)

GOWEN v. HENDRY et al.

Patent Appeal No. 2216.

Court of Customs and Patent Appeals.

January 27, 1930.

Samuel E. Darby, Jr., of New York City (C. M. Thomas and F. D. Thomas, both of Washington, D. C., of counsel), for appellant.

John G. Roberts, of New York City, and C. E. Tullar and H. E. Dunham, both of Schenectady, N. Y. (Irving MacDonald, of New York City, of counsel), for appellees.

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

HATFIELD, Associate Judge.

This is an appeal in an interference proceeding from the decision of the Commissioner of Patents. The Examiner of Interferences, the Examiners in Chief, and the Commissioner of Patents have concurred in holding that appellant was not entitled to an award of priority of invention.

The invention in issue relates to certain improvements in vacuum tubes or audions. The counts involved read as follows:

"1. A vacuum tube comprising a plurality of electrodes one of which is a plate electrode, insulating material supported by said plate electrode above one edge thereof, and a supporting connection from said insulating material to one of said other electrodes.

"2. A vacuum tube comprising a cathode, a grid and an anode, insulating material supported by said anode above one edge thereof, and supporting connections from said insulating material to said grid and cathode."

Appellant's application, No. 271,556, was filed January 17, 1919. In his preliminary statement appellant claimed conception and reduction to practice of the invention as follows: Conception September 2, 1918, and reduction to practice September 7, 1918.

King's application, No. 317,314, was filed August 13, 1919, and matured into a patent, No. 1,479,991, January 8, 1924, while appellant's application was pending in the Patent Office. In his preliminary statement, King alleged conception and reduction to practice as follows: Count 1, conception November 1, 1917, and reduction to practice November 27, 1917; count 2, conception December 1, 1917, and reduction to practice January 9, 1918.

Hendry's application, No. 217,565, was filed February 16, 1918.

It appears from the record that the King patent and the pending application of Hendry are owned by a common assignee, the Western Electric Company, Incorporated. The Gowen application is owned by the De Forest Radio Company.

The counts in the interference were copied by Gowen from the King patent, and the interference, as originally declared, involved the application of Gowen and the patent to King.

On July 26, 1926, King moved to dissolve the interference on the ground that Gowen had no right to make claims corresponding to the counts in issue.

On January 5, 1925, the law examiner denied the motion of King to dissolve the interference, and also denied the motion of the Western Electric Company, Incorporated, theretofore filed, to reform the interference by adding thereto the Hendry application. (The latter motion was filed by the attorney for King, and was considered by the tribunals of the Patent Office, and apparently by all of the parties, as a motion by King.) The decision in the case of In re Dunbar, 51 App. D. C. 251, 278 F. 334, was cited by the law examiner as authority for denying the motion to reform the interference. In that case it was held:

"Where two applicants each assigned their copending applications to the same assignee by an assignment which left no interest in the applicant, the election of the assignee to take the patent on one application, which contained narrow claims reading on the disclosure in the other application, is binding on him, and precludes his right to issuance of patent on the other application, containing broader claims covering the same features."

On appeal by King from the decision of the law examiner, denying the motion to reform the interference by adding the application of Hendry, the Examiners in Chief reversed the decision of the law examiner, and in their decision, among other things, said:

"The Hendry application was earlier filed, February 16, 1918, as a matter of fact earlier than any date that can be established by Gowen (conception September 2, 1918), so that, if the decision of the law examiner is affirmed, Gowen might secure a patent. As the record clearly shows that he is not the first inventor of the subject-matter of the counts as now interpreted by the law examiner, he should not be permitted and is not entitled to secure a patent through a mere technicality involving but a question of law — estoppel by election. * * *

"An estoppel against the assignee of the King patent, the Western Electric Company, if such exists, might be raised by the public, i. e., by the office, but not by a third party who is in no way injured by the patentee or the assignee, and who furthermore cannot be injured by the true facts of the case, those upon which the alleged estoppel is assumed or established, or by the determination of who is the first inventor. The determination of whether such an estoppel exists lies between the assignee and the office representing the public and is essentially and entirely an ex parte proceeding and has nothing to do with the question of priority, the sole issue in interference proceedings."

On appeal by the appellant, Gowen, the Commissioner of Patents affirmed the decision of the Examiners in Chief, and in so doing said:

"The holding of the Court of Appeals in the Dunbar Case is conclusive against King's assignee obtaining a patent to Hendry with these same claims therein as are now in the King patent. The common assignee is clearly estopped from thus prolonging its monopoly. This much was admitted by counsel for King at the hearing.

"The Examiners in Chief, in reversing the decision of the law examiner, did not specifically construe the claims of the issue, but did point out that the law examiner had made an interpretation of the claims at variance with that made by the primary examiner and that this was unexpected by King, who believed these claims were more specific. * * *

"In view of these conflicting opinions as to the true scope of the...