Price v. Symsek

Decision Date11 March 1993
Docket NumberNo. 91-1509,91-1509
Citation26 USPQ2d 1031,988 F.2d 1187
PartiesRichard C. PRICE, Appellant, v. Dale R. SYMSEK, et al., Appellee.
CourtU.S. Court of Appeals — Federal Circuit

Lynn J. Alstadt, Buchanan Ingersoll, P.C., Pittsburgh, PA, argued, for appellant. With him on the brief, was Michael L. Dever.

Donald M. Satina, USX Corp., Pittsburgh, PA, submitted, for appellee.

Before NIES, Chief Judge, ARCHER and MAYER, Circuit Judges.

NIES, Chief Judge.

Richard C. Price appeals from the August 7, 1991, decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences, awarding the subject matter of the count in Patent Interference No. 102,101 to Dale R. Symsek and Nancy P. Regelin (collectively "Symsek"). The board's decision is vacated and the case is remanded to the board.

I. BACKGROUND

On February 1, 1985, Symsek and Regelin, two engineers for the American Bridge Division of the United States Steel Corporation, filed a patent application entitled "Variable Temperature Waste Heat Recovery System." This application issued as United States Patent No. 4,628,869 (the '869 patent) on December 16, 1986, and was assigned to U.S. Steel. On December 11, 1987, almost one year after issuance of the '869 patent, Price filed United States Patent Application Serial No. 07/131,859, containing claims copied from the '869 patent to provoke the subject interference.

The invention defined in the count is a system for recovering and utilizing heat which is normally wasted from a process heater. In a typical closed-loop heat recovery system, a thermal fluid is heated in a first heat exchanger by hot exhaust gas as the gas leaves a process heater. The heated thermal fluid then preheats combustion gases in a second heat exchanger before the combustion gases enter the burners of the process heater, thus increasing the efficiency of the burners. Since many process heaters, such as blast furnaces, operate cyclically, the temperature of the hot exhaust gas varies considerably over time, thereby causing a wide deviation in the temperature of the heated thermal fluid. A large variance in the temperature of the heated thermal fluid decreases the efficiency of the heat recovery system and may cause degradation of the second heat exchanger.

The invention of the count addresses this problem by providing:

A waste gas recovery system for use with a process heater installation in which exhaust gases discharged from said installation are variable during each operating cycle, said system including a closed-loop heat transfer circuit through which a heat transfer liquid is circulated and having a first heat exchanger for extracting heat from said exhaust gases, a second heat exchanger adapted to pass a recipient fluid in heat transfer relation with said heat transfer liquid, and a reservoir for storing the heat transfer liquid circulated through said circuit, the improvement comprising said reservoir being operatively disposed in said heat transfer circuit intermediate the downstream end of said first heat exchanger and the upstream end of said second heat exchanger whereby heat transfer liquid heated in said first heat exchanger is passed to said reservoir prior to being passed to said heat exchanger and said reservoir containing an amount of heat transfer liquid in excess of that contained in the remainder of said heat transfer circuit whereby variations in the temperature of said heat transfer liquid exiting said first heat exchanger are damped prior to entry of said heat transfer liquid into said second heat exchanger.

(Emphasis added.) The improvement portion of the court requires that: (1) a reservoir be located between the first and second heat exchangers (the hot side), and (2) the reservoir contain more heat transfer fluid than that contained in the remainder of the heat transfer circuit. These reservoir location and size requirements act to dampen the temperature variation of the heat transfer fluid before the fluid enters Before the board, Price submitted affidavit and deposition evidence to prove that he conceived the invention before Symsek and that Symsek derived the waste gas recovery system of the count from him. Alternatively, Price sought to establish that he was entitled to an award of priority of invention because he conceived the system prior to any conception date asserted by Symsek and he was reasonably diligent in reducing the system to practice.

the second heat exchanger, thereby creating a more efficient and stable heat recovery system.

The board awarded the invention of the count to Symsek. In reaching this decision, the board required Price to prove the necessary elements of either theory, derivation or priority, beyond a reasonable doubt.

Price appealed the board's decision to this court, asserting, inter alia, that the board legally erred by imposing upon him the burden of showing prior conception, communication, and diligent reduction to practice according to the criminal standard of beyond a reasonable doubt. Further, Price asserts that the board improperly refused to consider documentary evidence even though the document's existence as of the relevant date was corroborated by a witness.

II. DERIVATION AND PRIORITY

Although derivation and priority of invention are akin in that both focus on inventorship and both may be resolved by the board in an interference action, they are distinct concepts. Applegate v. Scherer, 332 F.2d 571, 573 & n. 1, 141 USPQ 796, 798 & n. 1 (CCPA 1964). A claim that a patentee derived an invention addresses originality--who invented the subject matter of the count? Hedgewick v. Akers, 497 F.2d 905, 907, 182 USPQ 167, 168 (CCPA 1974). Under this attack on a patent or patent application, the proponent asserts that the patentee did not "invent" the subject matter of the count because the patentee derived the invention from another. Davis v. Reddy, 620 F.2d 885, 882 n. 2, 205 USPQ 1065, 1068 n. 2 (CCPA 1980). To prove derivation in an interference proceeding, the person attacking the patent must establish prior conception of the claimed subject matter and communication of the conception to the adverse claimant. Hedgewick, 497 F.2d at 908, 182 USPQ at 169; Mead v. McKirnan, 585 F.2d 504, 507, 199 USPQ 513, 515 (CCPA 1978). While the ultimate question of whether a patentee derived an invention from another is one of fact, Hedgewick, 497 F.2d at 908, 182 USPQ at 169; Beall v. Ormsby, 154 F.2d 663, 667, 69 USPQ 314, 318 (CCPA 1946), the determination of whether there was a prior conception is a question of law, Fiers v. Sugano, 984 F.2d 1164, 1168-69, 25 USPQ2d 1601, 1604 (Fed.Cir.1993), which is based upon subsidiary factual findings.

Contrasted to derivation, a claim to priority of invention does not question whether the patentee "invented" the subject matter of the count, but instead focuses on which party first invented the subject matter of the count. Priority goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice. 1 Lutzker v. Plet, 843 F.2d 1364, 1366, 6 USPQ2d 1370, 1371 (Fed.Cir.1988). Priority is a question of law which is to be determined based upon underlying factual determinations. See Brokaw v. Vogel, 429 F.2d 476, 480, 166 USPQ 428, 431 (CCPA 1970).

III. BURDEN OF PROOF

Before reaching the merits of Price's appeal, we must first address the question of Price's burden of proof before the board. Price argues that the board improperly required him to prove the facts required to establish conception, communication The issue of the quantum of proof required to establish priority in an interference with an issued patent, is one of first impression in the Federal Circuit. As articulated in California ex rel. Cooper v. Mitchell Bros.' Santa Ana Theater, 454 U.S. 90, 102 S.Ct. 172, 70 L.Ed.2d 262 (1981):

                and diligent reduction to practice beyond a reasonable doubt.   Price argues that the correct standard is the "clear and convincing evidence" standard.   We agree
                

Three standards of proof are generally recognized, ranging from the "preponderance of the evidence" standard employed in most civil cases, to the "clear and convincing" standard reserved to protect particularly important interests in a limited number of civil cases, to the requirement that guilt be proved "beyond a reasonable doubt" in a criminal prosecution. See Addington v. Texas, 441 U.S. 418, 423-424 [99 S.Ct. 1804, 1808, 60 L.Ed.2d 323] (1979). This Court has, on several occasions, held that the "clear and convincing" standard or one of its variants is the appropriate standard of proof in a particular civil case. See Addington v. Texas, supra, at 431 (civil commitment); Rosenbloom v. Metromedia, Inc., 403 U.S. 29, 52 [91 S.Ct. 1811, 1824, 29 L.Ed.2d 296] (1971) (libel); Woodby v. INS, 385 U.S. 276, 285 [87 S.Ct. 483, 488, 17 L.Ed.2d 362] (1966) (deportation); Chaunt v. United States, 364 U.S. 350, 353 [81 S.Ct. 147, 149, 5 L.Ed.2d 120] (1960) (denaturalization). However, the Court has never required the "beyond a reasonable doubt" standard to be applied in a civil case. "This unique standard of proof, not prescribed or defined in the Constitution, is regarded as a critical part of the 'moral force of the criminal law,' In re Winship, 397 U.S. , at 364 [90 S.Ct. 1068 at 1072, 25 L.Ed.2d 368 (1970) ], and we should hesitate to apply it too broadly or casually in noncriminal cases." Addington v. Texas, supra [441 U.S.], at 428 .

Id., 454 U.S. at 93, 102 S.Ct. at 173-74. A requirement of proof by clear and convincing evidence imposes a heavier burden upon a litigant than that imposed by requiring proof by preponderant evidence but a somewhat lighter burden than that imposed by requiring proof beyond a reasonable doubt. Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463, 7 USPQ2d 1325,...

To continue reading

Request your trial
344 cases
  • EI DuPont De Nemours and Co. v. Monsanto Co.
    • United States
    • U.S. District Court — District of Delaware
    • August 18, 1995
    ......priority of invention cannot, standing alone, rise to the level of clear and convincing proof." Price v. Symsek, 988 F.2d 1187, 1194 (Fed.Cir.1993). Instead, such inventor testimony must be supported by some type of corroborating evidence. Id. ......
  • Heden v. Hill
    • United States
    • U.S. District Court — Southern District of Texas
    • August 13, 1996
    ......1951); Rodgard Corp., 914 F.Supp. at 917; Sim Kar Lighting Fixture Co., 906 F.Supp. at 971; Maxwell, 880 F.Supp. at 1334; see also Price v. Symsek, 988 F.2d 1187, 1192-94 (Fed.Cir.1993). .         Groves maintains that there is no sole inventorship because there is joint ......
  • Transclean Corp. v. Bridgewood Services, Inc., Civ. 97-2298 RLE.
    • United States
    • U.S. District Court — District of Minnesota
    • November 12, 1999
    ...... Price v. Symsek, 988 F.2d 1187, 1194 (Fed.Cir.1993); see also, Finnigan Corp. v. International Trade Com'n, 180 F.3d 1354, 1367-68 (Fed.Cir.1999) ......
  • Mycogen Plant Science, Inc. v. Monsanto Co., CIV.A.96-505-RRM.
    • United States
    • U.S. District Court — District of Delaware
    • September 8, 1999
    ...... show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice." Price v. Symsek, 988 F.2d 1187, 1190 (Fed.Cir. 1993) (footnote and citations omitted). .         Conception is the formation in the inventor's ......
  • Request a trial to view additional results
6 firm's commentaries
  • First PTAB Decisions In Derivation Proceedings
    • United States
    • Mondaq United States
    • December 9, 2014
    ...him to construct and successfully operate the invention.'" Cooper v. Goldfarb, 154 F.3d 1321, 1332 (Fed. Cir. 1998); Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908 (CCPA 1974). In addition, the petitioner must identify which application or paten......
  • Inventorship Fight Club: Federal Circuit Finds Insufficient Evidence For Joint Inventorship
    • United States
    • Mondaq United States
    • January 10, 2022
    ...co-inventor on its own will generally not suffice as 'clear and convincing' evidence of joint inventorship." Citing Price v. Symsek, 988 F.2d 1187, 1194-95 (Fed. Cir. Ms. Wagner relied on three pieces of evidence to support her claim of co-inventorship. First, she pointed to the parent pate......
  • Inventorship Fight Club: Federal Circuit Finds Insufficient Evidence For Joint Inventorship
    • United States
    • Mondaq United States
    • January 10, 2022
    ...co-inventor on its own will generally not suffice as 'clear and convincing' evidence of joint inventorship." Citing Price v. Symsek, 988 F.2d 1187, 1194-95 (Fed. Cir. Ms. Wagner relied on three pieces of evidence to support her claim of co-inventorship. First, she pointed to the parent pate......
  • 'Competing Patents' Not Sufficient To Confer DJ Jurisdiction
    • United States
    • Mondaq United States
    • August 2, 2011
    ...or priority of invention cannot, standing alone, rise to the level of clear and convincing proof." Id. at 15 (citing Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993)). The Court concluded that, in the absence of any other factual basis for Creative's derivation defense, there were no g......
  • Request a trial to view additional results
12 books & journal articles
  • Evolutionary Tales: Times of the Best and Worst
    • United States
    • ABA General Library Landslide No. 10-1, September 2017
    • September 1, 2017
    ...articlesdetail.aspx?news=12c99bf6-30bc-4d6b-8956-e07b2fec420c. 21. Id. (citing Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993)). 22. Id. 23. 35 U.S.C. § 135(a)(1). 24. Id. § 135(a)(2). 25. See 37 C.F.R. § 1.324(a). 26. See id. § 1.324(b) (emphasis added). 27. See, e.g. , Vapor Point L......
  • Tesla, Marconi, and the great radio controversy: awarding patent damages without chilling a defendant's incentive to innovate.
    • United States
    • Missouri Law Review Vol. 73 No. 3, June 2008
    • June 22, 2008
    ...derivation or priority of invention cannot, standing alone, rise to the level of clear and convincing proof.'" (quoting Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. (317.) Stern v. Trs. of Columbia Univ., 434 F.3d 1375, 1378 (Fed. Cir. 2006) (quoting Hybritech Inc. v. Monoclonal Antibodi......
  • Chapter §7.11 Prior Invention Under §102(g)
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 7 Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]
    • Invalid date
    ...(Fed. Cir. 2007) (quoting Reese v. Hurst, 661 F.2d 1222, 1225 (C.C.P.A. 1981)).[851] Garner, 508 F.3d at 1380 (citing Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)).[852] Garner, 508 F.3d at 1377 n.2.[853] Garner, 508 F.3d at 1381 (quoting Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fe......
  • Righting Inventorship Wrongs?A Multijurisdictional Overview
    • United States
    • ABA General Library Landslide No. 10-1, September 2017
    • September 1, 2017
    ...articlesdetail.aspx?news=12c99bf6-30bc-4d6b-8956-e07b2fec420c. 21. Id. (citing Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993)). 22. Id. 23. 35 U.S.C. § 135(a)(1). 24. Id. § 135(a)(2). 25. See 37 C.F.R. § 1.324(a). 26. See id. § 1.324(b) (emphasis added). 27. See, e.g. , Vapor Point L......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT