Sanford v. Kepner, 3370.

Decision Date09 July 1951
Docket NumberNo. 3370.,3370.
Citation99 F. Supp. 221
PartiesSANFORD v. KEPNER.
CourtU.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.

FOLLMER, District Judge.

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 burden is on the complainant to prove the truth of his bill, by evidence that is clear and conclusive * * *. Such an action has the characteristics of a proceeding to set aside a judgment and as such, is not to be sustained by a mere preponderance of evidence. * * *"

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:

"Count 1 In conveying mechanism, the combination with a trackway, a dumping conveyance movable along the trackway and including a lading body with a drop bottom door, and latch means for holding the door closed and movable to release the door for opening, of tripping mechanism including means for actuating the latch to release the door, and separate means laterally spaced from said release means and substantially in the same upright transverse plane as said release means and actuated by bearing engagement with the under portion of the vehicle moving over the tripping mechanism for controlling the release means.

"Count 2 In conveying mechanism, the combination with a trackway, a dumping conveyance mounted on the trackway and including a lading body with a drop bottom door and latch means for holding the door in closed position and movable to release the door for opening, said latch means being located wholly above the lowest portion of the lading body in the same longitudinal vertical plane of the conveyance, of tripping mechanism mounted at the trackway and including an engaging member mounted for upward movement relative to the trackway in position for engaging the latch means during movement of the conveyance over the tripping mechanism to release said door, yieldable means normally tending to hold said engaging member in an elevated position, and a contact member substantially fixed relative to the releasing member and movable therewith in position to be raised and lowered by engagement with the under surface of the conveyance during movement thereover.

"Count 3 In conveying mechanism, the combination with a trackway, a dumping conveyance movable along the trackway and including a lading body with a drop bottom door, and latch means for holding the door closed and movable to release the door for opening, of tripping mechanism mounted at the trackway and including latch release means in position to engage the latch means during movement of the conveyance over the tripping mechanism to release the door for opening, and means fixed relative to the latch release means and located at substantially the same elevation as said latch release means when said latch release means is in latch engaging position, and said means being in position for engagement by the under surface of the conveyance during movement thereof over the tripping mechanism for controlling the releasing position of the latch release means.

"Count 4 In conveying mechanism, the combination with a trackway, a dumping conveyance movable along the trackway and including a lading body with a drop bottom door, and latch means for holding the door closed and movable to release the door for opening, of tripping mechanism mounted at the trackway and including an engageing (sic) member mounted for upward movement to a position for engagement by the latch means during movement of the conveyance over the tripping mechanism, a contact member fixed relative to said engaging member and extending to substantially the same elevation to be guided along the under surface of the conveyance to depress the engaging member beneath the conveyance, and yielding means normally tending to hold said engaging member in a raised position relative to the trackway."

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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  • General Tire & Rubber Co. v. Firestone Tire & Rubber Co.
    • United States
    • U.S. District Court — Northern District of Ohio
    • October 3, 1972
    ...Bearfoot Sole Co., 311 F.2d 858, 869-870 (6th Cir. 1962), cert. den., 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed.2d 50 (1963); Sanford v. Kepner, 99 F.Supp. 221, 226 (D.Pa.1951), aff'd 195 F.2d 387 (3rd Cir. 1951), 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12 (1952); Minnesota Mining & Mfg. Co. v. Carboru......
  • Sanford v. Kepner
    • United States
    • U.S. Supreme Court
    • November 10, 1952
    ...a patent, the District Court declined to go further and consider Kepner's claim to a patent. Accordingly Sanford's bill was dismissed. 99 F.Supp. 221. Agreeing with the District Court, the Court of Appeals affirmed. 3 Cir., 195 F.2d 387. The circuits have different views concerning the duty......
  • Turchan v. Bailey Meter Company, Civ. A. No. 1703.
    • United States
    • U.S. District Court — District of Delaware
    • September 29, 1958
    ...to practice. While plaintiffs have attempted to raise the question of patentability of defendant's patent, in view of Sanford v. Kepner, D.C., 99 F.Supp. 221; 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12, I hold that where priority of invention is decided against the plaintiff, the patentability o......
  • United States v. Commonwealth, Civ. A. No. 9546.
    • United States
    • U.S. District Court — Eastern District of Pennsylvania
    • July 24, 1951
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