Paivinen v. Sands

• Decision Date: 11 February 1965
• Docket Number: Patent Appeal No. 7226.
• Parties: John O. PAIVINEN, Appellant, v. Eugene A. SANDS, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

52 CCPA 906, 339 F.2d 217 (1964)

John O. PAIVINEN, Appellant, v. Eugene A. SANDS, Appellee.

Patent Appeal No. 7226.

United States Court of Customs and Patent Appeals.

December 17, 1964.

As Corrected February 11, 1965.

Fidler, Bradley, Patnaude & Petherbridge, Chicago, Ill. (Raymond E. Fidler and Charles W. Bradley, Jr., Chicago, Ill., of counsel), for appellant.

Pennie, Edmonds, Morton, Taylor & Adams, New York City (J. Phillip Anderegg, New York City, of counsel), for appellee.

Before RICH, Acting Chief Judge, and MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

Appellee Sands, the senior party, obtained a patent¹ on August 5, 1958, based on an application filed January 30, 1953. The present interference involves this patent and an application² filed by appellant Paivinen on February 4, 1959.

To establish priority of invention, Paivinen took testimony and introduced other evidence purporting to prove actual reduction to practice of the invention defined in the six interference counts prior to the filing date of the Sands patent. Sands did not attempt to prove an actual reduction to practice but relies upon his application as establishing a constructive reduction to practice as of its filing date. Sands did, however, introduce testimony purporting to show the insufficiency of Paivinen's proofs. Paivinen responded with rebuttal testimony.

The Board of Patent Interferences considered only the testimony-in-chief on behalf of Paivinen, and awarded priority of invention to Sands, holding that "Paivinen has not proven reduction to practice of the invention defined by the counts in issue." The board also commented briefly on the nature of Paivinen's burden of proof. We shall deal with these matters separately. First, however, we shall consider briefly the subject matter of the counts, since a basic understanding of the invention defined in the counts is necessary for proper evaluation of the issues.

The Invention

Counts 1 and 6 are representative and read:

"1. In combination, a body of ferromagnetic material, at least one conductor disposed adjacent the body in position to send flux through the body, a load impedance, and three separate means to drive currents through at least one of said conductors, two of said means being adapted to drive currents through said conductors in such directions and of such magnitude and duration as to magnetize said body to saturation in substantially opposite directions regardless of its previous condition of magnetization, the third of said means having said load impedance in series therewith and being incapable of reversing the condition of saturation of said body.

"6. A circuit for the evaluation of a logical And function involving two variables of possible zero and unit values, said circuit comprising two saturable magnetic cores, two sensing field generators having a switch in common and having separate series-connected windings one on each of said cores, two set field generators including each one winding on one of said cores, and two reset field generators having a switch in common and having series-connected windings one on each of said cores."

Before considering the counts in relation to the disclosures, a brief consideration of certain technical background information will be helpful. The invention in issue is predicated on the known fact that certain magnetic materials become magnetized in such a manner that they are characterized as having a substantially rectangular hysteresis loop, frequently termed a "square loop." Such "square loop" magnetic materials exhibit a very useful property: namely, if they are placed in a saturated magnetic state in one direction, they will remain in that state until a subsequent magnetic field is applied in such manner as to reverse the state. If the subsequent magnetic field is of sufficient magnitude and duration, it will saturate the material in the reverse direction, and it will remain in that state until another field is applied to reset it to the first state, and so on. This property makes such materials useful for many purposes, including the storage of electrical signals, as in certain computer functions.

The invention defined in counts 1 through 5 can be best understood by considering Fig. 1 of the Sands patent:

The toroidal magnetic core 1 is composed of "square loop" material, and has three windings: S, a "set" winding; R, a "reset" winding; and S', an "inspect" winding. Each of the windings is connected to a corresponding current generator (numbered 5, 6 and 8, respectively). In addition, the circuit containing the inspect winding S' incorporates a load 7, across which are placed output terminals.

When current of predetermined magnitude and duration flows through S, it creates sufficient magnetizing force to drive the core to saturation in one direction, for example, a clockwise direction, and this regardless of the previous magnetic state of the core. When the current pulse ceases, the core retains this magnetic state and is said to be in a "set" state. To reset the core, a suitable current pulse is applied to winding R, and the core is driven to saturation in the opposite, or counterclockwise, direction. The inspect winding S' is arranged such that, when the core is in the set state, a low impedance path is presented to a current pulse flowing through S', and a signal is thus produced across load 7. On the other hand, if the core is in the reset state, most of the energy of a current pulse flowing through S' is absorbed by the core, and no effective signal appears across the load. Thus, by observing the presence or absence of a signal voltage across the load when an inspect pulse is applied through winding S', it can be determined whether the core was in the set or reset state.

Obviously, it is necessary that the magnitude and duration of the inspect pulse be kept below a value which would drive the core to saturation; otherwise, even if the core were in the reset state, the inspect pulse would switch the state, and a signal would appear across the output terminals.

Count 6 calls for two cores, each with a set, reset and inspect winding. Fig. 2 of the Paivinen application shows a typical multi-core arrangement (with three cores instead of two):

The reset windings 49, 50 and 51 are connected in series so that all three cores can be reset with one pulse. The inspect windings 46, 47 and 48 are likewise connected in series with a load 54. Such an arrangement is termed a logical "AND" circuit. When an inspect pulse is generated from source 52, a signal will appear across load 54 only if core 40 and core 41 and core 42 are all in the set state. (The set windings and their corresponding generators are 43 & 65, 44 & 66 and 45 & 67 for cores 40, 41 and 42, respectively.)

Burden of Proof

Essentially, the issue raised by the present appeal relates to the problem of the burden of proof as applied to the present record. The legal concepts as to burden of proof have caused much confusion when applied in patent interferences. It is properly recognized that in the usual case the junior party has the burden of proof with respect to the issue of priority of invention. This burden is actually broken down into two separate components: 1) a burden of coming forward with evidence, and 2) a burden of persuasion. E. g., I Jones on Evidence § 176 (4th ed. 1938).

A summary review of certain of the pertinent legal propositions will be helpful in resolving the issues here presented. Normally, the burden of persuasion is said to be satisfied if the junior party is able to make out his case by a "preponderance of the evidence." E. g., Creamer v. Kirkwood, 305 F.2d 486, 50 CCPA 715; Seeley v. Rennick, 314 F.2d 577, 50 CCPA 1214. See generally 3 Revise & Caesar, Interference Law and Practice § 462 (1947).

However, in situations where, as here, the junior party files his application subsequent to the issuance date of the senior party's patent, it is generally held that the junior party must prove priority "beyond a reasonable doubt." Conner v. Joris, 241 F.2d 944, 44 CCPA 772. See also cases cited in 3 Revise & Caesar, supra, § 467. In addition, the application of the junior party must clearly support the interference counts.³ Jepson v. Coleman, 314 F.2d 533, 50 CCPA 1051. The junior party can, however, escape the necessity of proving his case "beyond a reasonable doubt" by establishing for his application an effective filing date prior to the date of issuance of the senior party's patent. Thus, even where a junior party copies claims from an already-issued patent, he nevertheless need only prove priority by a "preponderance of the evidence," if he can show support for the counts in a co-pending or parent application with a filing date prior to the issue date of the patent. Sellner v. Solloway, 267 F.2d 321, 46 CCPA 897; 3 Revise & Caesar, supra, § 464.

In the case at bar, Paivinen's application in interference was filed subsequent to the date of issue of Sands' patent. However, this application is said to be a continuation of his own earlier-filed case⁴ (hereinafter termed "parent"), which has a filing date prior to the date of issuance of the Sands' patent. Appellant argues that his parent application contains clear disclosure in support of all of the six interference counts, and that his burden of proof is discharged by establishing a mere preponderance of the evidence. Appellee, on the other hand, argues that the parent application does not clearly support each and every limitation of the counts, and asserts that appellant must therefore prove priority beyond a reasonable doubt.

The board disposed of this problem with the rather cryptic statement that:

"The degree of burden of proof upon the junior party presents a peculiarity. It appears that Paivinen is entitled on the record to the filing date of an application filed during the pendency of the Sands application as to count 6, as to which

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