Owen v. Heimann

• Decision Date: 05 April 1926
• Docket Number: No. 1758.,1758.
• Parties: OWEN v. HEIMANN.
• Court: U.S. Court of Appeals — District of Columbia Circuit

12 F.2d 173 (1926)

OWEN v. HEIMANN.^*

No. 1758.

Court of Appeals of District of Columbia.

Submitted November 10, 1925.

Decided April 5, 1926.

W. A. Scott and C. M. Candy, both of Chicago, Ill., for appellant.

Hans V. Briesen and Paul Kolisch, both of New York City, for appellee.

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

SMITH, Acting Associate Justice.

George Heimann, on the 30th of December, 1913, filed an application in Austria for a patent for a semiautomatic or automatic graded service telephone exchange system and telephone substation with graded service facilities. On the 7th of January, 1914, Heimann filed an application in Great Britain to secure a patent for the same invention, and on that application a patent was issued, known as No. 450 of 1914.

On May 7, 1917, William Walter Owen filed an application in the United States Patent Office, praying for a patent to new and useful improvements in "measured service telephone systems." Owen's application was granted, and letters patent were issued to him by the Patent Office on October 26, 1920.

On the 16th of August, 1921, Elsie Hecht, formerly Heimann, administratrix of the estate of George Heimann, deceased, of Berlin, Germany, filed an application in the Patent Office of the United States in behalf of the estate for letters patent for a semiautomatic or automatic graded service telephone system, claim 29 of which, as amended, corresponded to claim 26 of the patent issued to Owen. Because those claims were substantially the same, and substantially claimed the same invention, an interference was declared on the 3d of August, 1922.

On the ground that Owen's filing date and consequent constructive reduction to practice was subsequent to December 30, 1913, the date of George Heimann's Austrian application and the date of his constructive reduction to practice, a motion was made on October 18, 1922, by the applicant, Elsie Hecht, formerly Heimann, to shift the burden of proof to Owen, the senior party. As it appeared from Owen's preliminary statement that he conceived the subject-matter of the count in interference on or about January 31, 1917, and that the invention was constructively reduced to practice on the 7th of May, 1917, the date of filng his application, the motion was granted. Owen declined to assume the burden of proof imposed upon him by that ruling, and, having failed to make any showing why a judgment on the record should not be entered against him, priority of invention of the subject-matter in issue was awarded by the Examiner of Interferences to the administratrix of the estate of George Heimann, deceased. The Board of Examiners in Chief affirmed the decision of the Examiner of Interferences, and the Board's decision was affirmed by the Commissioner. From the Commissioner's decision this appeal was taken.

The appellant in support of his appeal contends (1) that the German citizenship of Heimann was not proven; (2) that no evidence was submitted to the tribunals of the Patent Office, proving or tending to prove, that the German empire or the German republic granted to American citizens rights and privileges substantially the same as those accorded by the Nolan Act; (3) that the Nolan Act did not intend to make, and by its terms did not make, the date of the filing of Heimann's Austrian application effective as Heimann's date of invention in the United States; and (4) that to construe the Nolan Act so as to make the date of Heimann's Austrian application effective in the United States as Heimann's date of invention, would render the act unconstitutional.

The motion to shift the burden of proof alleged that George Heimann and Elsie Hecht, administratrix of his estate, were German citizens. Elsie Hecht's application for a patent and the oath attached...