Sanford v. Kepner, 3370.
Decision Date | 09 July 1951 |
Docket Number | No. 3370.,3370. |
Citation | 99 F. Supp. 221 |
Parties | SANFORD v. KEPNER. |
Court | U.S. District Court — Middle District of Pennsylvania |
J. Preston Swecker, (of Cyrus Kehr & Swecker) Washington, D. C., Marshall R. Anspach, Williamsport, Pa., for plaintiff.
Gilbert P. Ritter, (of Ritter, Mechlin & Muir), Washington, D. C., George R. Ericson, St. Louis, Mo., John C. Youngman, Williamsport, Pa., for defendant.
This action is the outgrowth of an interference proceeding in the Patent Office, No. 82,623, declared by the Commissioner of Patents between the party Sanford and the party Kepner to determine which of them was the prior inventor of certain patentable subject matter common to their respective applications for patent, namely, Kepner Application Serial No. 497,286, filed August 4, 1943, and Sanford Application Serial No. 571,170, filed January 3, 1945. Consequently, upon the decision of the Board of Interference Examiners of the Patent Office in Interference No. 82,623, awarding priority of invention of the subject matter in issue to Kepner, Patent No. 2,487,447 was granted to him as provided in R.S. § 4904, 35 U.S.C.A. § 52.
The complaint was filed under Section 4915 of the Revised Statutes, 35 U.S.C.A. § 63, and seeks a review of the action of the Patent Office in Interference No. 82,623, as aforesaid, and the issues raised are priority and patentability.
At the outset of the trial the Court indicated that it would hear the complete case, both as to priority and patentability, and if it became necessary in the determination of priority, the Court would consider the prior art so far as necessary for that purpose; that in the event the primary issue of priority would be determined adversely to the plaintiff, no consideration would then be given to the validity of the defendant's patent, since a 4915 action is not intended to test the validity of a patent. In other words, the Court took its position with the line of cases that holds that in a 4915 action patentability need not be considered where the claimed priority is not established, and, by the same token, when the one seeking the decree under 35 U.S.C. A. § 63 prevails in the trial court upon the question of priority, the patentability of his claim must be decided.1 With that concept in mind, after a full and complete trial, and on consideration of the evidence, oral arguments and briefs of counsel, I find it unnecessary herein to consider the question of patentability. The basic required formula to be followed in the attempted solution of a controversy such as we have here is that propounded in Morgan v. Daniels, 153 U.S. 120, at page 125, 14 S.Ct. 772, at page 773, 38 L.Ed. 657, as follows:
"Upon principle and authority, therefore, it must be laid down as a rule that where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction. * * *"
The parties to this action and to the above mentioned interference proceeding in the Patent Office are the same and the issue herein, to wit, priority of invention of the subject-matter involved in the said interference, is likewise the same as there decided.
Plaintiff as the junior party had the burden of proof in the Patent office proceeding; as the complainant here he has the burden of meeting the requirements of the Morgan v. Daniels, supra, formula. Walker on Patents (Deller's Edition) Vol. 2, Pages 971-972, states: * * *"
The general subject-matter of the patent applications disclosing the invention in controversy is a device for unlocking the door supporting latch of a mine car of the drop bottom type to allow the door to open for the discharge of lading. Specifically, the device consists of a tripping mechanism which is positioned in the trackway and is provided with a latch releasing member or element which is constantly pressed upwardly by a spring to an elevated position above the trackway so as to project into the path of the door latch as the car moves over the track for dumping and thus releases the door latch by coming in contact therewith as the car passes along the track.
The claims, directed to the invention common to the interfering applications, are stated in the four counts of Interference No. 82,623, Sanford v. Kepner, and are as follows:
Plaintiff contends that the counts of the interference involve the track, the conveyance, the latch at the back, and the tripping device, all as one combination; and that the patent involves the entire structure of the protected latch car. Defendant, on the other hand, takes the position that the issue here is solely, "who was the prior inventor of the invention for latch tripping mechanism disclosed in the Sanford...
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Sanford v. Kepner
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