Horwath v. Lee

• Decision Date: 10 November 1977
• Docket Number: Appeal No. 77-561.
• Citation: 564 F.2d 948
• Parties: Robert O. HORWATH and James C. Chen, Appellants, v. Chin K. LEE, Lawrence E. Hayes and Margaret E. Long, Appellees, v. Margaret E. LONG, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

564 F.2d 948

Robert O. HORWATH and James C. Chen, Appellants, v. Chin K. LEE, Lawrence E. Hayes and Margaret E. Long, Appellees, v. Margaret E. LONG, Appellee.

Appeal No. 77-561.

United States Court of Customs and Patent Appeals.

November 10, 1977.

Louis F. Reed, Fish & Neave, Aaron B. Karas, New York City, attys. of record, for appellants.

John J. Cavanaugh, Neuman, Williams, Anderson & Olson, Chicago, Ill., attys. of record, for appellees.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

Appeal from the decision of the Board of Patent Interferences (board) awarding priority to Long under 35 U.S.C. § 102(g) because Horwath et al. (Horwath) suppressed or concealed the invention. We affirm.

Background

Horwath is junior by virtue of application serial No. 207,573 filed December 13, 1971, entitled "Process for Enzymatically Isomerizing Glucose to Fructose." Lee et al. (Lee) are senior by virtue of patent No. 3,645,848 issued February 29, 1972, entitled "Process for Preparing Glucose Isomerase," on application serial No. 877,474 filed November 17, 1969. During the motion period, Lee moved to substitute application serial No. 361,548, filed by Long for reissue of Lee patent No. 3,645,848,¹ it having been discovered that Long was the sole inventor of the counts in issue. The primary examiner treated the motion to substitute as a motion to add the Long reissue application to the Lee-Horwath interference and granted it. Lee admitted that as between Lee and Long, "Long is the original and sole inventor of the subject matter of all of the counts in interference." Thus, this interference is a contest between Horwath and Long.

Long took no testimony and is restricted to her November 17, 1969, filing date. Frilette v. Kimberlin, 412 F.2d 1390, 56 CCPA 1242 (1969). Horwath's testimony, the board found, established an actual reduction to practice prior to November 17, 1969.

Counts and Subject Matter

Six counts are involved. Counts 1 and 2 are directed to a process for preparing a glucose-isomerizing enzyme, using a microorganism of the genus Arthrobacter. Counts 3-5, and phantom count 6, are directed to a process for isomerizing glucose to fructose, using the glucose-isomerizing enzyme derived from the microorganism Arthrobacter.

Counts 1, 3 and 6 are representative:

1. A process for preparing a glucose-isomerizing enzyme which comprises inoculating a carbohydrate-containing nutrient medium with a micro-organism belonging to the genus Arthrobacter, maintaining the inoculated medium for a period of time under conditions suitable for production of said enzyme by said organism and recovering said enzyme.

3. A process for converting glucose to fructose which comprises incubating a glucose-containing liquor with a glucose-isomerizing enzyme derived from a microorganism belonging to the genus Arthrobacter and recovering a fructose-containing liquor.

6. A process for converting glucose to fructose which comprises incubating a glucose-containing liquor with a glucose-isomerizing enzyme derived from a micro-organism belonging to the genus Arthrobacter and recovering a fructose-containing liquor said incubation is carried out at a temperature of about 45° to about 90° C in a pH range of approximately 6.0 to 10.0 and said enzyme is derived from an Arthrobacter micro-organism grown in a nutrient medium containing xylose or xylan.

The board held that Horwath established actual reduction to practice, by a preponderance of evidence² and that Long had sustained her burden of proving that Horwath abandoned, suppressed, or concealed the invention.

Issue

The dispositive issue is whether the record sustains Long's burden or proving suppression or concealment by Horwath.

OPINION

We agree with the board that Horwath reduced the invention to practice prior to November 17, 1969. Because we also agree with the board's conclusion respecting suppression or concealment, a discussion of the reduction to practice issue raised by Long on appeal is unnecessary.

Fact situations surrounding suppression or concealment issues require consideration on a case-by-case basis. Young v. Dworkin, 489 F.2d 1277 (CCPA 1974); Myers v. Feigelman, 455 F.2d 596, 59 CCPA 834 (1972). That mere delay will not establish suppression or concealment, and that proof of "spurring" is not essential to a finding of suppression or concealment, are guidelines set forth in Young, 489 F.2d at 1281.

Against the rule that mere delay will not alone establish suppression or concealment stands the linchpin of the patent system—early public disclosure—which is fostered by the § 102(g) codification of existing law:

By deliberate concealment or suppression of the knowledge of his invention the inventor * * * subordinates his claim, in accordance with the general policy of the law in the promotion of the public interest, to that of another and bona fide inventor who during the period of inaction and concealment shall have given the benefit of the discovery to the public. Viewed in the light of "the true policy and ends of the patent laws," the latter is the first to invent, and therefore entitled to the reward.

Thomson v. Weston, 19 App.D.C. 373, 1902 C.D. 521 (1902). See, also, Mason v. Hepburn, 13 App.D.C. 86, 1898 C.D. 510 (1898).

The man who secretes his invention makes easier and plainer the path of no one. He contributes nothing to the public. Over and over it has been repeated that the object of the patent system is through protection to stimulate invention, and inventors ought to understand that this is for the public good. Where an invention is made and hidden away it might as well never have been made at all, at least so far as the public is concerned. The law owes nothing to such an inventor, and to permit him to lie in wait, so to speak, for one who independently and in good faith proceeds to make and disclose to the public the same invention would be both unjust and against the policy of the patent laws. In the eyes of the law he is not the prior inventor.

Brown v. Campbell, 41 App.D.C. 499, 501-02, 1914 C.D. 170, 171-72 (1914).

When an inventor actually reduces to practice an invention, public policy dictates that if he would have the benefits of the patent system vis-a-vis rival independent inventors he must file his application for patent promptly. The longer he delays the greater are the equities that may be raised on behalf of one who made the same invention and promptly disclosed it in the Patent and Trademark Office. The theory is not forfeiture, estoppel, or other legal rule by which one is deprived of a property right; it is the simple rule that the property right shall reside in the second inventor who disclosed and not in the first inventor who concealed, i. e., the law prefers and will reward earlier disclosure over earlier invention. See Rich, J., concurring, in Young v. Dworkin, supra.

Before us, Horwath's principal argument is a response to the board's assertion that his patent application did not reflect improvements over an April, 1967 invention disclosure. Horwath directs our attention to four portions of his patent application³ said to reflect such improvement.

The first portion is a list of eight preferred Arthrobacter species of which two were used in 1966. Though screening additional species may have started prior to 1971, the bulk of the work was performed during 1971. An unexplained five year delay in performing the additional screening is inconsistent with an intent to provide early public disclosure.

The second portion mentions cobalt salt as a source of metal ions for propagating the microorganism. Use of a source of metal ions is not, however, mentioned in any claims. More importantly, a cobalt salt was used in Horwath's 1966 research. The result of work done prior to actual reduction to practice cannot serve to explain a five year delay in disclosing that result.

The third portion is the general statement, "The glucose isomerase may also be bound to an inert carrier and used for the isomerization." It is inconceivable that five years of research were required to support that statement.

The fourth portion is an example and table, reflecting glucose isomerizing activity of various Arthrobacter species and said to support the broad claims in Horwath's application. The record fails, however, to demonstrate or point out consistent Horwath efforts to develop the information in the example and table over the five year span preceding his filing date.

Horwath began the research leading to his invention in November, 1965, and reduced it to practice in five months. Factors necessitating a period of sixty-six months to refine and perfect the invention, if such factors existed, are simply not adequately supported in the record.

Horwath repeats here the argument made to the board that Long has not sustained her burden of proving suppression or concealment. The board correctly held that an unreasonable or excessive delay raised an inference of intent to suppress and shifted to Horwath the burden of explaining the delay. Peeler v. Miller, 535 F.2d 647, 655-56 (CCPA 1976) (Miller, J., concurring).

On that issue we adopt as our own the applicable portion of the board's unpublished opinion: Footnotes re findings of fact omitted. Remaining footnotes renumbered. "18C" was a test sample designation used by Standard Brands. "G.I.E." refers to glucose-isomerizing enzyme.

OPINION AND DECISION OF BOARD OF PATENT INTERFERENCES, NOVEMBER 30, 1976.

Gaston and Modance, Examiners of Interferences and McKelvey, Acting Examiner of Interferences.

McKelvey, Acting Examiner of Interferences.

* * * * * *

We turn now to the second issue raised by Long: "suppression" or "concealment" of the invention by Horwath et al. Under the facts of this case, we hold that the evidence has raised at least an inference of suppression or concealment of the invention by the party Horwath et al. and their assignee, Standard...