Kislyn Corporation v. Eastman Kodak Co.

• Decision Date: 25 February 1942
• Citation: 43 F. Supp. 552
• Parties: KISLYN CORPORATION v. EASTMAN KODAK CO.
• Court: U.S. District Court — District of New Jersey

43 F. Supp. 552

KISLYN CORPORATION v. EASTMAN KODAK CO.

District Court, D. New Jersey.

February 25, 1942.

Gifford, Scull & Burgess, and Newton A. Burgess, all of New York City, for plaintiff.

Pennie, Davis, Marvin & Edmonds, and W. B. Morton, all of New York City, for defendant.

SMITH, District Judge.

This is a suit under R.S. § 4915, 35 U.S.C.A. § 63, by the Kislyn Corporation, assignee of one Kurt Rantsch, against the Eastman Kodak Company, the assignee of one John G. Capstaff, to establish the priority of invention and the right to a patent.

The said Kurt Rantsch, the senior party, filed his application, Serial No. 689,336, in the United States Patent Office on September 14, 1933; the said John G. Capstaff, the junior party, filed his application, Serial No. 703,268, in the United States Patent Office on December 20, 1933. It was thereupon determined that claims No. 14, 5 and 8 of the Rantsch application, and claims No. 6, 15 and 16 of the Capstaff application, were directed to common patentable subject matter, and an interference was declared. The junior party, Capstaff, presented testimony in proof of the ultimate facts hereinafter summarized; the senior party, Rantsch, presented no testimony, but, under R.S. § 4887, 35 U.S.C.A. § 32, elected to rely on the filing date of a corresponding German application, to wit, July 6, 1933, for his date of conception and constructive reduction to practice. The Examiner of Interferences awarded priority to Rantsch; on appeal, however, the Board of Appeals awarded priority to Capstaff.

The plaintiff offers no testimony in the instant case, but, as did Rantsch in the interference, relies on the filing date of the German application for the date of conception and constructive reduction to practice. This proof fails to overcome the evidential effect and weight of the decision of the Patent Office as expressed by the Board of Appeals. The rule enunciated by the Supreme Court in Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657, is particularly applicable. The question of priority is one of fact, and its determination by the Patent Office, although not decisive, is persuasive, and must be accepted as controlling, unless the contrary is established by testimony which in character and amount carries thorough conviction. Abbott et al. v. Coe, 71 App.D.C. 195, 109 F.2d 449; Nichols v. Minnesota Mining & Manufacturing Co., 4 Cir., 109 F.2d 162; Century Distilling Co. v. Continental Distilling Co., 3 Cir., 106 F.2d 486; Cleveland Trust Co. v. Berry et al., 6 Cir., 99 F.2d 517; General Talking Pictures Corp. et al. v. American Tri-Ergon Corp. et al., 3 Cir., 96 F.2d 800. The decision of the Patent Office is presumptively correct, and the presumption may be overcome only by clear and convincing proof of palpable error. Abbott et al. v. Coe; Century Distilling Co. v. Continental Distilling Co.; General Talking Pictures Corp. et al. v. American Tri-Ergon Corp. et al., all supra; Bayer v. Rice et al., 64 App. D.C. 107, 75 F.2d 238; Powell v. McNamara, 2 Cir., 74 F.2d 750; Syracuse Washing Machine Corp. et al. v. Vieau et al., 2 Cir., 72 F.2d 410. A careful examination of the record fails to reveal such error; in fact, it is the opinion of the Court that the decision of the Patent Office was amply supported by the evidence.

It is contended by the plaintiff that the Act of March 2, 1927, 44 Stat. 1336 (the 1927 amendments), abrogated the rule enunciated by the Supreme Court in the case of Morgan v. Daniels, supra. The contention is untenable; it is well established that the rule remains unaffected and is still applicable. Nichols v. Minnesota Mining & Mfg. Co.; Century Distilling Co. v. Continental Distilling Co.; General Talking Pictures Corp. et al. v. American Tri-Ergon Corp. et al.; Powell v. McNamara; Syracuse Washing Machine Corp. et al. v. Vieau, et al., all supra. A full discussion of the question appears in the case of General Talking Pictures Corp. et al. v. American Tri-Ergon Corp. et al.

The defendant, not content to rest upon the record in the Patent Office, presents further testimony, which the plaintiff moves to exclude. The plaintiff, relying on Barrett Co. et al. v. Koppers Co. et al., 3 Cir., 22 F.2d 395, argues that the defendant is estopped from offering additional testimony in the instant case. The argument does violence, not only to the statutory provisions, but to the decision upon which the plaintiff relies. This is a trial de novo and the statute under which the suit is brought expressly provides that the record in the Patent Office shall be admitted "without prejudice * * * to the right of the parties to take further testimony." Nichols v. Minnesota Mining & Mfg. Co.; General Talking Pictures Corp. et al. v. American Tri-Ergon Corp. et al.; Powell v. McNamara, all supra; American Steel...