Harper v. Zimmermann

• Decision Date: 07 May 1930
• Docket Number: No. 698.,698.
• Citation: 41 F.2d 261
• Parties: HARPER v. ZIMMERMANN.
• Court: U.S. District Court — District of Delaware

41 F.2d 261 (1930)

HARPER v. ZIMMERMANN.

No. 698.

District Court, D. Delaware.

May 7, 1930.

Leonard E. Wales, U. S. Atty., of Wilmington, Del., and John W. Loveland, Asst. to Atty. Gen., for plaintiff, Brown, and the United States.

Josiah Marvel, of Wilmington, Del., and W. P. Preble, of New York City, for defendant.

MORRIS, District Judge.

On November 22, 1921, Paul G. Zimmermann filed an application for a patent on "Airplane Wings and Art of Mechanical Flight." On April 3, 1922, Carl Brown Harper filed an application for a patent on "Airplanes." Thereafter, on May 16, 1924, the Patent Office declared an interference between the copending applications upon three counts. The Examiner of Interferences decided in favor of Zimmermann. The Board of Appeals confirmed, June 23, 1928, the decision of the Examiner. Thereupon Harper filed this suit in equity under R. S. § 4915, as amended (35 USCA § 63), praying that he be adjudged entitled to receive a patent for the invention defined in the counts in issue. Zimmermann filed his answer and later the United States, to which Harper had granted a nonexclusive license, intervened as a party plaintiff.

At the trial no evidence was presented by or on behalf of Zimmermann. He here relies upon his application date, the decision of the Patent Office in his favor, and upon patent No. 1,697,674, issued to him as a consequence of that decision. Harper, however, asserts that he (Harper) was the first to conceive and disclose the invention of the counts in issue; that he reduced the invention to practice prior to Zimmermann's filing date; that, even if his acts prior to Zimmermann's filing date did not constitute an actual reduction to practice, he used reasonable diligence in adapting and perfecting the invention; and that, in either event, he is entitled upon the issue of priority to an earlier date than Zimmermann.

The invention constituting the subject-matter of the interference and of this suit is an improvement in airplane wings growing out of the fact or principle that thin, flat-surfaced wings have low lifting power but are essential for high speed, while wings having upper surfaces of high camber or curvature are conducive to high lift but low speed. The first consequence, probably, of the discovery of this principle was the conception or realization that a wing whose curvature or camber could be changed by the pilot during flight would permit the use of the high camber when needed in getting off the ground and in alighting and the use of the low camber or relatively flat wing surface during the flight proper. This thought, however, antedated both Harper and Zimmermann. Before they entered the art, it had been proposed to bend the whole wing from front to rear, but this required a flexible structure that was deemed unsafe. Patent to Holle, No. 1,225,711, granted May 8, 1917, disclosed aerofoils "constructed with a flexible rear or trailing edge and a rigid front or entering edge, said front edge having a continuous undeformable under surface and a continuous deformable upper surface so that the camber of said upper surface can be varied." The starting point of Harper and Zimmermann was in effect the Holle structure. The upper surface of the Holle wing, though flexible, was continuous and unbroken. The improvement of Harper and Zimmermann divides that part of the wing into segments and provides pivoted or hinged connections between the segments. Each of the three counts defining the invention is limited to this improvement. Count 1 calls for "adjustable ribs pivoted at their front and rear ends and determining the shape of the upper side." Count 2 is limited to having the upper section "hinged at the leading edge" and "hinged at the rear region." Count 3 has the same limitations as count 2. The segments are raised and lowered as desired by the pilot by means of toggles.

Harper states that his conception of this invention was had in 1917 while he was a student at the Massachusetts Institute of Technology; that he then made a sketch of his idea in a notebook, exhibited the sketch to his fellow students, Aldrin and Brown, and explained to them its objects and purposes. The notebook has been lost, but at the trial Harper, Aldrin, and Brown each reproduced the sketch from memory. Aldrin and Brown each testified that he understood from Harper's sketch and statement how the construction was to be made and operated. Brown further testified that from the sketch and information disclosed to him by Harper he (Brown), as a practical engineer, could have made and operated a wing embodying all the counts in issue, without further help from Harper and without the exercise of inventive skill.

But early in January, 1918, Harper enlisted in the United States Navy. He was directed to remain for two or three months at the Massachusetts Institute of Technology to complete his engineering course. In April, 1918, he was ordered to the Aviation Section of the Bureau of Construction and Repair of the Navy Department at Washington and was assigned to engineering problems having to do with the production of aircraft. He there spent five years on duty in connection with the design, construction, and testing of aircraft and their accessories. During that time he became the head of the Engineering Section of the Aircraft Division. Yet, during the war he was inhibited by his commanding officer from proceeding with the development or actual reduction to practice of his conception. This inhibition was removed about July, 1920, but during that month Harper's back was broken in an airplane crash and for a long time thereafter he was entirely incapacitated. While Harper was so incapacitated, he explained his variable camber wing idea to Stetler, a draftsman of the Navy Department, and delivered to him one or more sketches roughly illustrating his conception. From the information so obtained, Stetler prepared in August, 1920, a full-sized, cross section drawing, Exhibit 17, of a wing embodying all the features disclosed to him by Harper.

This drawing was delivered to Lybrand, another Navy Department draftsman, who prepared from it complete full-sized working drawings, Exhibits 18A-L, for the purpose of building a full-sized plane. Subsequently, the drawings for the Patent Office application were made from these working drawings. They embodied every detailed feature and element of the counts in issue and are admitted by the defendant to show the invention of those counts. With respect to them, the only question is as to the time of their completion.

From these drawings, Exhibits 18A-L, Lybrand later made other drawings, Exhibits 19-21, for the purpose of making a model embodying the invention to be sand load tested. These drawings likewise disclosed the invention, but here, too, the question is whether they were made before or after the date of Zimmermann's application. The machine constructed in accordance with them was completed and delivered to the Bureau of Aeronautics of the Navy on March 22, 1922, and was successfully subjected to the wind tunnel tests on March 25, 1922, and later.

The conclusion of the Examiner of Interferences was based upon a finding that Harper's reproduction of the sketch made in his notebook in 1917, the Stetler drawing, Exhibit 17, and certain other rough drawings introduced in evidence before the Examiner, did not disclose a conception of the invention, in that, as the Examiner found, such drawings did not disclose an outer wing surface having pivoted or hinged sections and upon the further finding that the Lybrand drawings, Exhibits 18A-L and 19-21, were not completed prior to Zimmermann's filing date. The affirmance of the decision of the Examiner of Interferences by the Board of Appeals was predicated upon the same subordinate findings.

The decision of the Board of Appeals is not conclusive of priority, and the doctrines of res judicata and estoppel are without application to a subsequent suit under R. S. § 4915, as amended (35 USCA § 63). A suit under this section is an original independent action in which the questions in issue are tried de novo upon all competent evidence new and old. Victor Talk. M. Co. v. Brunswick-Balke-Collender Co. (D. C.) 290 F. 565, 569, 570. In the case at bar the record in the Patent Office proceeding was introduced in evidence not, however, to establish the facts therein testified to, but solely for the purpose of showing what was before the Patent Office tribunals. The evidence here adduced includes substantial evidence that was not before the Patent Office. But such evidence is not of the character condemned in Barrett Co. v. Koppers Co. (C. C. A.) 22 F.(2d) 395. Harper here contends, not only that the evidence before the Patent Office tribunals was adequate to establish that the notebook sketch of 1917, the Stetler drawing of 1920, and the subsequent Lybrand drawings all embodied all the elements of the counts in issue and that they were all completed before Zimmermann's filing date, but also that the additional new evidence here presented has removed both these questions from the realm of reasonable controversy.

The notebook sketch of 1917 was but a rough drawing. The reproductions of that lost sketch were made from memory and the oral testimony with respect thereto was given after the lapse of many years. While I do not question the belief of Harper, Aldrin, or Brown with respect to the accuracy of their recollection, I must not ignore the well-established fact that, other things being equal, memory fades with the lapse of time. The picture drawn from memory after the lapse of years is frequently colored all unconsciously by present knowledge. It is difficult to winnow with accuracy the early information from the later. Moreover, it is unnecessary in the case at bar to base the decision upon unaided memory, for, if the Stetler drawing, Exhibit 17, does not disclose the invention, it would be difficult to believe that the...