Hann v. Venetian Blind Corporation

• Decision Date: 15 April 1940
• Docket Number: No. 9186.,9186.
• Citation: 111 F.2d 455
• Parties: HANN v. VENETIAN BLIND CORPORATION et al.
• Court: U.S. Court of Appeals — Ninth Circuit

111 F.2d 455 (1940)

HANN v. VENETIAN BLIND CORPORATION et al.

No. 9186.

Circuit Court of Appeals, Ninth Circuit.

April 15, 1940.

Lyon & Lyon and Lewis E. Lyon, all of Los Angeles, Cal., for appellant.

J. Calvin Brown, of Los Angeles, Cal. (Frank M. Gunter, of Los Angeles, Cal., of counsel), for appellees.

Before GARRECHT, STEPHENS, and HEALY, Circuit Judges.

STEPHENS, Circuit Judge.

Appeal from the decree of the District Court dismissing plaintiff's complaint for infringement, and declaring certain claims of plaintiff's Patent No. 1,829,718, granted October 27, 1931, for a "Venetian Blind Bracket", invalid in law.

One of the grounds upon which the court declared said claims to be invalid, was that Edwin Anderson the claimed inventor was not the original or first inventor or discoverer of any material or substantial part thereof. In the view that we take of the case, that said conclusion of the trial court should be affirmed, it is necessary to examine only this claim of invalidity, for if the plaintiff's patent is invalid on any ground, the decree of the District Court dismissing the complaint must be affirmed.

The application for plaintiff's patent in suit was filed on July 26, 1930. The patent was granted on October 27, 1931. Prior to the date of the application for plaintiff's patent, and on February 26, 1930, application was made by one J. W. Dunn for a patent, which was subsequently issued as Patent No. 1,807,061, on May 26, 1931. It is clear that the Dunn application discloses the discovery claimed to have been made by plaintiff's patent, and covered by the claims in suit. In this situation, in order for plaintiff's patent to be declared valid, it is necessary that it be proved that Anderson's invention antedated the disclosure by Dunn. Alexander Milburn Company v. Davis-Bournonville Company, 270 U.S. 390, 400, 401, 46 S.Ct. 324, 70 L.Ed. 651. This the District Court found plaintiff had failed to prove. The finding of the District Court to the effect that Anderson, the claimed inventor of plaintiff's patent, did not make his invention prior to July 26, 1930, the application date of his patent, is assigned as error.

There is a considerable conflict in the cases dealing with the burden of proof in the situation just revealed. In this connection, the trial court stated 21 F. Supp. 913, 915,

"The date of the invention, on absence of evidence to the contrary, is presumed to be that on which the application was filed in the Patent Office, and where the date is carried back beyond the application, proof must be persuasive to a certainty, beyond a reasonable doubt. The Alexander Milburn Co. v. Davis-Bournonville Co., 270 U. S. 390, 46 S.Ct. 324, 70 L.Ed. 651."

We are not prepared to agree that in every case where the patentee of a patent is attempting to carry the date of his invention back beyond the date of his application, he must present proof "persuasive to a certainty, beyond a reasonable doubt" as stated by the trial judge.

In Willard v. Union Tool Co., 9 Cir., 1918, 253 F. 48, this court considered the question of the burden of proof in a case very similar to the instant one. In the cited case suit was brought claiming infringement of the Willard patent, which had been applied for on March 11, 1912. The defendants claimed that the Willard patent was invalid because anticipated by one Griffin. Griffin's patent was applied for on October 5, 1911, although it was granted subsequent to Willard. The Griffin patent disclosed, but did not claim the principle in suit. The trial court held that since Griffin's application was first, the presumption applied that he had reduced the same to practice as of that date, and that therefore the burden was on the plaintiff to show beyond a reasonable doubt that he had reduced his invention to practice prior to Griffin's application. This court refused to follow the "beyond a reasonable doubt" rule, and said (page 51 of 253 F.): "* * * We cannot agree that the rule is applicable here. We think the rule to be applied is that which governs contests between rival inventors for priority of invention whose applications are pending at the same time, which is that, where both inventors have reduced their conceptions to practice, the burden of proof is on him whose application is second to show that he was the first to reduce the invention to practice, and that in sustaining such burden he is controlled by the ordinary rules of courts of law with respect to the burden of proof, and is required to establish his priority only by a fair preponderance of the evidence, and not by proof conclusive in character, or beyond a reasonable doubt."

Turning now to the evidence presented by the plaintiff to sustain his claim that Anderson was the original and first inventor of the subject matter of the patent in issue, Anderson testified as follows:

That he received a letter from Mr. Dunn, then of the Consolidated Venetian Blind Co., dated November 22, 1928, a copy of which was admitted in evidence. This letter states that a model blind was being sent Anderson, outlines certain troubles in the operation of Venetian blinds, and then states, "I would like to have you spend a little time thinking about all that I have said above, and see if you cannot devise a means of supporting the blind from a die casting connection, and along the principle shown in the samples we are sending you, and embody in this some piece of hardware, a simple means for holding the blind tilted at any position." That after the receipt of said letter Anderson set to work to develop the invention; that it was developed in the month of December, 1928; that he kept it after it had been developed, without doing anything with it, for about five or six months; that after that period and in the fall or late summer of 1929 he made and sent Dunn a sample, at Dunn's request; that the sample was at the time of testifying in his Anderson's office, having been returned from Dunn; that after the return of the sample Anderson set to work and developed the dies and tools for making the parts; that the dies were completed some time in the fall of 1929; that after the completion of the dies, Anderson made up several thousand of the invented articles and sold them to Schatz Venetian Blind Company; that these sales took place prior to the end of 1929; that in the spring of 1930 Anderson sold some of the articles to the Western Venetian Blind Company; that at the time of the sale of said articles to the Western Venetian Blind Company, Dunn was connected with that company and that Anderson dealt with Dunn in making said sale. In support of his testimony to the effect that he developed the device in 1928, Anderson produced a photostat of a sketch which he claimed to have made in 1928. The sketch bears the words "Drawn by Edwin Anderson Dec. 27-1928" in handwriting which Anderson testified was his own. Anderson testified that a Mr. Williams and a Mr. Sams had seen the sketch about the time it was drawn. He also testified that Mr. Williams was a die maker employed by the Union Die Casting Company at the time of the trial. Mr. Williams was not called as a witness to support Anderson's testimony. Neither was the sample, which Anderson testified he had at his office, introduced into evidence.

J. W. Dunn was also called as a witness on behalf of the plaintiff in an effort to show that Anderson and not Dunn was the first inventor of the device. Dunn testified to the sending of the letter to Anderson, dated November 22, 1928, above referred to, and to the model blind which was forwarded Dunn at the same time. Dunn didn't recall that the model blind had any kind of tilting apparatus on it. The model was not introduced into evidence.

Dunn further testified that he Dunn was not the inventor of the device in suit, but that he procured the same from the Union Die Casting Company Anderson's company prior to his application and presented it to his draftsman.

On cross-examination Dunn was questioned about a letter, dated August 22, 1929, which he admitted sending Mr. Anderson. This letter recites,

"I received the model, and with one exception it is O.K. Some better means must be developed for fastening the tapes on the center connections, and I think I have that figured out. The enclosed crude sketch will show you.

"There is one more thing, and that is the grooved pulley through which the tilting cord operates. This pulley should be thicker, with a spiral groove in it so the cord will go around twice to prevent slipping. With just one wrap as it is now, the cord will stretch and wear to such an extent that eventually it will slip through, and inasmuch as it is desirable to have the cord arranged with tassels on the ends, it should not be allowed to slip through this pulley. I know you will understand this, so will not make any sketch.

"Again, the center connections are not spaced on your sample quite wide enough to allow the tape to go between the ends of the tilt rail pieces. Space for tape is shown on sketch enclosed.

"I do not exactly like the combination center connection and worm gear device. Tilting cords should go at the extreme end of the blind, so think it would be better to use two of the flat center connections and a separate worm gear tilting device at the end of the rail.

"Another thing, the hook on the center support which extends downward should be so designed that it is not possible for the rail to jump out when...