Oliver Machinery Co. v. Gellman

• Decision Date: 07 April 1939
• Docket Number: No. 7763.,7763.
• Citation: 104 F.2d 11
• Parties: OLIVER MACHINERY CO. v. GELLMAN.
• Court: U.S. Court of Appeals — Sixth Circuit

104 F.2d 11 (1939)

OLIVER MACHINERY CO. v. GELLMAN.

No. 7763.

Circuit Court of Appeals, Sixth Circuit.

April 7, 1939.

Frank E. Liverance, Jr., of Grand Rapids, Mich. (Liverance & Van Antwerp, of Grand Rapids, Mich., on the brief), for appellant.

Clarence E. Threedy, of Chicago, Ill. (Clarence E. Threedy, of Chicago, Ill., and Fred P. Geib, of Grand Rapids, Mich.), for appellee.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

ALLEN, Circuit Judge.

Appeal from a decree holding Claims 4 and 5 of Gellman Patent No. 2,024,414 valid and infringed, and ordering an injunction and accounting.

The patent in suit, issued December 17, 1935, on an application filed July 1, 1931, relates to a bread-slicing machine in which the bread is forced through vertically reciprocating knives alternately disposed in two series, so that one series moves upward while the other series moves downward, thus counteracting the tendency of the upwardly moving knives to lift or shift the loaf. The bread is fed to and through the machine by an inclined chute. The device thus utilizes the force of gravity to push the loaves up to and beyond the knives.¹

Appellant denies infringement and claims invalidity on the ground that the patent is anticipated and lacks patentable novelty.

Appellant relies upon Criner, No. 1,942,955, issued January 9, 1934, on an application filed December 10, 1930, as an anticipation. But appellee contends, and the District Court held, that this patent, though prior to appellee's in its filing date, was applied for subsequent to the conception by appellee of a machine embodying the main features of the patent. The Criner patent discloses the reciprocal movement of the two sets of knives moving in the same vertical plane, and the gravity feed, which are the principal features of the patent in suit.

Appellee relies upon the fact that Criner in 1934, in an interference proceeding, disclaimed two counts of the interference, describing a bread-slicing machine with reciprocally moving knives and gravity feed chute. Applying the rule that the patent, after entry of the disclaimer, must be construed as if the matter so disclaimed had never been claimed (Dunbar v. Meyers, 94 U.S. 187, 24 L.Ed. 34), and assuming that disclaimer in interference proceedings has the same effect as disclaimer after issue, the fact still remains that the patent as allowed to Criner fully describes the basic features of Gellman. If the date of conception and reduction to practice of Gellman is not clearly shown to be prior to Criner, Gellman is anticipated.

We think the character and weight of the testimony adduced upon this point does not attain to the degree of persuasiveness requisite to establish appellee's patent as prior to Criner. Where a patentee relies, as does appellee, upon a date of invention and reduction to practice earlier than his filing date, the burden of proof is on the patentee to show that he conceived his device and reduced it to practice prior to the date of the earlier application. Columbus Dental Mfg. Co. v. Ideal Interchangeable Tooth Co., Inc., 1 Cir., 294 F. 422. In such cases the courts require a certainty of proof which "is seldom demanded elsewhere." United Shoe Machinery Corp. v. Brooklyn Wood Heel Corp., 2 Cir., 77 F. 2d 263. Here appellee's testimony in his own behalf is substantiated only by a diagram of his alleged working machine, dated February 5, 1930, and signed by two witnesses who were not called to testify. Apart from appellee's own statement, there is no proof as to the time and circumstances surrounding the making and dating of the diagram. The date when the diagram was signed has vital bearing upon the question of priority. The failure to secure corroboration upon this point by the two witnesses whose names are affixed to the drawing is in no way explained. There is no showing that their testimony could not have been secured. As pointed out in Barber v. Otis Motor Sales Co., D.C., 271 F. 171, 179, 180:

"The rule as to the burden cast upon the appellee in endeavoring to fix such a date is very strict. It is so easy to fabricate or color evidence of prior invention, and so difficult to contradict it, that proof has been required which does not admit of reasonable doubt."

The unsupported testimony of the patentee as to priority in such case is not enough. Charles Hunnicutt Co. v. A. B. Gaston Co., 3 Cir., 218 F. 176; Columbus Chain Co v. Standard Chain Co., 6 Cir., 148 F. 622, 629; National Machine Corp., Inc. v. Benthall Machine Co., Inc., 4 Cir., 241 F. 72. Cf. T. H. Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 39 S.Ct. 542, 63 L.Ed. 1045; Twentieth Century Machinery Co. v. Loew Mfg. Co., 6 Cir, 243 F. 373.

In addition, while the paper purports to show the date of conception, no evidence except that of appellee shows the actual reduction to practice of his machine prior to the filing date of Criner. But mere priority of date of conception...