Kling v. Haring, 1739.

• Decision Date: 01 February 1926
• Docket Number: No. 1739.,1739.
• Citation: 11 F.2d 202
• Parties: KLING v. HARING.
• Court: U.S. Court of Appeals — District of Columbia Circuit

11 F.2d 202 (1926)

KLING v. HARING.^*

No. 1739.

Court of Appeals of District of Columbia.

Submitted November 9, 1925.

Decided February 1, 1926.

D. P. Wolhaupter, of Washington, D. C., for appellant.

Ralph Munden and H. M. Huxley, both of Chicago, Ill., for appellee.

Before MARTIN, Chief Justice, ROBB, Associate Justice, and SMITH, Judge of the United States Court of Customs Appeals.

SMITH, Acting Associate Judge.

On the 11th of September, 1914, Fritz Haring filed an application in Germany to patent a means and method for the cleaning of blast furnace gases. On that application a patent dated October 6, 1916, was issued and made effective as of September 11, 1914.

Fred E. Kling on the 11th of December, 1915, filed an application in the United States for letters patent on an improvement in the means of separating dust from furnace gases, particularly the dust resulting from the operation of blast furnaces. That both applications disclosed and claimed the same invention is not disputed. Kling's application for a patent was granted by the United States Patent Office, and a patent was issued to him on February 13, 1917.

On the 26th of August, 1921, Haring filed in the United States Patent Office an application to patent the subject-matter of his German patent, and the result of filing that application was the declaration of an interference between said application and the patent granted to Kling. During the pendency of the interference proceeding, a motion was made to shift the burden of proof from Haring to Kling, on the ground that Haring's application for a patent was filed in Germany prior to the filing of the application by Kling in the United States. That motion was granted, and it was held that Haring was entitled to September 11, 1914, as the date of his constructive reduction to practice. As that date was prior to the earliest date alleged by Kling in his preliminary statement, Kling was required to show cause within 30 days why a judgment should not be entered against him.

Kling insisted that he had a right to submit evidence that Haring was not in fact the inventor of the subject-matter of the German application, and to present evidence to overcome the prima facie case made by Haring because of his German filing date. Kling's right to meet the prima facie case made against him was recognized by the Examiner of Interferences, but attention was called to the fact that Kling's petition for leave to make a showing made no statement as to what he expected to prove, or the names of the witnesses by whom he expected to make such proof. Kling's motion to present evidence to overcome the prima facie case made by Haring was therefore denied without prejudice to the renewal of the motion, accompanied by a satisfactory showing. Apparently no such showing was attempted, and on the 19th of September Kling moved that the burden of proof be shifted back to Haring, on the ground that the patent accruing to Haring expired in the year 1919, because of Haring's failure to pay the fourth year fee. Kling's motion to shift the burden of proof resulted in a motion for judgment on the record by Haring. That motion was granted on the 23d of October, 1923, and priority of invention of the subject-matter of the issue was awarded to Haring, the senior party. That decision, on appeal to the Examiners in Chief, was affirmed on the 22d of October, 1923, and their decision was affirmed by the Commissioner on the 22d of May, 1924.

From the decision of the Commissioner, this appeal was taken by Kling, and in support of his appeal he now contends, first, that Haring, by his failure to pay the tax, abandoned in 1919 the patent which was granted to him on October 6, 1916, and that, his patent having expired, he had no right to file an application for a patent in the United States; second, that Kling's right to the invention vested in him when a patent was issued to him on February 17, 1917, and that on that date he became entitled to the exclusive right to the invention; third, that he could not be divested of that right by any change in the law in force at the time the patent was issued; fourth, that the Nolan Act, which changed and extended the limitations prescribed by section 4887 of the Revised Statutes (Comp. St. § 9430), is unconstitutional and void, in that it is violative of the Fifth Amendment and section 8 of article 1 of the Constitution. We cannot agree with any of the contentions of the appellant.

Haring, by failing to pay the fourth annual fee, may have in the year 1919 forfeited or abandoned to the public his German patent, but, from the fact that he lost the patent rights, privileges, and advantages conferred by German laws, it does not follow at all that he lost the rights, privileges, and advantages granted by the patent laws of this country. In the United States an application for a patent and the right to an invention may be abandoned before the issuance of a patent. R. S. § 4894, 39 Stats. 348 (Comp. St. § 9438); Pennock et al. v. Dialogue, 2 Pet. 1, 15, 19, 23, 7 L. Ed. 327; Shaw v. Cooper, 7 Pet. 292, 319, 320, 321, 322, 8 L. Ed. 689; Kendall et al. v. Winsor, 21 How. 322, 328, 16 L. Ed. 165; United States Rifle & Cartridge Co. v. Whitney Arms Co., 6 S. Ct. 950, 118 U. S. 22, 24, 25, 30 L. Ed. 53; Planing-Machine Co. v. Keith, 101 U. S. 479, 485, 25 L. Ed. 939.

We are free to confess, however, that we know of no such thing as the abandonment of a patent legally issued. Under our laws rights legally conferred by a patent continue in force during the lifetime of the patent, regardless of whether the patentee uses or fails to use his invention. Haring's patent may have lapsed or have been forfeited by reason of nonpayment of fees or taxes, but it did not expire, in the sense that the term for which it was granted had ended.

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