Tidewater Patent Development Co. v. Gillette Company, 7843.

• Decision Date: 10 December 1959
• Docket Number: No. 7843.,7843.
• Citation: 273 F.2d 936
• Parties: TIDEWATER PATENT DEVELOPMENT COMPANY, Incorporated, Appellant, v. GILLETTE COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fourth Circuit

273 F.2d 936 (1959)

TIDEWATER PATENT DEVELOPMENT COMPANY, Incorporated, Appellant, v. GILLETTE COMPANY, Appellee.

No. 7843.

United States Court of Appeals Fourth Circuit.

Argued October 8, 1959.

Decided December 10, 1959.

As Corrected January 7, 1960.

George B. Finnegan, Jr., New York City (Worthington & White, Norfolk, Va., and Albert H. Brodkin, New York City, on the brief) for appellant.

Bruce Bromley, New York City (Willcox, Cooke, Savage & Lawrence, Richard B. Spindle, III, Norfolk, Va., Cravath, Swaine & Moore; John D. Calhoun; Fish, Richardson & Neave, Henry R. Ashton, Edgar H. Kent and Rynn Berry, New York City, on the brief), for appellee.

John M. Friedman, New York City (Harry Martin, pro se, on the brief), for Harry Martin, amicus curiae.

Adolph A. Rubinson, Chicago, Ill., for Helene Curtis Industries, Inc., by permission of the Court.

Before SOBELOFF, Chief Judge, and SOPER and BOREMAN, Circuit Judges.

SOPER, Circuit Judge.

This appeal is taken from a judgment of the District Court in an action brought under 35 U.S.C. § 146 (derived from R.S. § 4915) to determine the correctness of a decision of the Board of Patent Interferences in the United States Patent Office whereby priority was awarded to Everett G. McDonough over Harry Martin with respect to an invention relating to the permanent waving of human hair. After a hearing in the District Court the judge came to the opposite conclusion and accordingly held that Martin was the first inventor and authorized the Patent Office to issue a patent to him or his assignee upon his application.

In the Patent Office an interference was declared by the Commissioner of Patents on February 15, 1952, between application No. 255,725 filed by Martin on November 9, 1951, and application No. 110,239 filed by McDonough on August 13, 1949. Priority was awarded to McDonough and accordingly patent No. 2,736,323 was issued to him on February 28, 1956. The application for this patent was filed as a continuation in part application based on patent No. 2,577,710 previously issued to McDonough on December 4, 1951, on an application filed June 16, 1941. Both of the McDonough patents relate to permanent waving solutions and methods. They have been the subject of protracted litigation in the Second Circuit where both were declared invalid in suits for declaratory judgments filed sub nomine Helene Curtis Industries v. Sales Affiliates. The cases in which patent '710 was declared invalid are reported in D.C., 105 F.Supp. 886, affirmed 2 Cir., 199 F.2d 732; D.C., 121 F.Supp. 490; D.C., 131 F.Supp. 119, affirmed 2 Cir., 233 F.2d 148. In an effort to cure the defects in patent '710, the second McDonough patent '323 was obtained but it was also declared invalid as the result of further litigation in cases reported in D.C., 148 F.Supp. 340; 2 Cir., 247 F.2d 940; D.C., 159 F.Supp. 582; 2 Cir., 254 F.2d 470, and D.C., 161 F.Supp. 345.

In the present appeal, McDonough's claim to priority is represented by Tidewater Patent Development Company, the appellant, which acquired title to the two McDonough patents through a series of assignments. Martin's claim to priority is represented by Gillette Company, the substituted appellee, which acquired title to Martin's application No. 255,725, above mentioned.

Martin was also the holder of patent No. 2,350,178 issued to him on May 30, 1944, on an application filed March 13, 1941. This patent also relates to a hair waving solution but, as will hereafter appear, does not claim the precise invention on which the interference proceeding was based.

The litigation in the Second Circuit was in progress during the pendency of the present suit in the District Court below and was completed before the judgment therein was entered; but only the decision in Helene Curtis Industries v. Sales Affiliates, Inc., D.C., 121 F.Supp. 490, seems to have been called to the judge's attention. The pending appeal was taken by Tidewater notwithstanding the declaration of invalidity of both McDonough patents in the Second Circuit for the apparent purpose of protecting the owner of the patents in such further litigation as may ensue; and an earnest effort has been made to establish McDonough's priority. The Gillette Company, the appellee, on the other hand, has made only a nominal attempt in this court to support Martin's claim to priority or to defend the judgment of the District Court, for the reason apparently that, pending the appeal, it has not only acquired Martin's interest in Martin's application No. 255,725 but has also come to an agreement with Tidewater by which Gillette is released from all liability for past or future infringements of the McDonough patent. Indeed, Gillette, relying on the New York decisions, asserts that there is no patentable invention in the discovery so that neither McDonough nor Martin is entitled to a patent; and it argues, for the reasons set out below, that this court should pass not only on the issue of priority but also upon the issue of patentability, and should join the Second Circuit in holding that the discovery does not involve patentable invention, and direct the dismissal of the pending suit. Accordingly, we have been obliged to confine our examination to the findings and conclusions of the District Judge on the one hand and the findings and conclusions of the Board of Patent Interferences on the other without assistance from the appellee in this appeal.

We have considered the question of priority and have reached the conclusion that the judgment of the District Court overturning the decision of the Patent Office tribunal should not be sustained. When the losing party in an interference proceeding in the Patent Office, instead of taking an appeal to the Court of Customs and Patent Appeals under 35 U.S.C. § 141, chooses to bring a civil action in a District Court of the United States under 35 U.S.C. § 146, it is the duty of the court, under Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657, to accept as controlling the decision of the Patent Office on the question of priority, "unless the contrary is established by testimony which in character and amount carries thorough conviction." See also Sanford v. Kepner, 3 Cir., 195 F.2d 387, affirmed 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12. The District Court is directed by the statute, upon motion of either party, to receive in evidence the testimony and exhibits of the record in the Patent Office, and in the pending case this was done in the District Court and, although additional evidence was taken, the facts brought out in the Patent Office proceeding constituted by far the greater part of the evidence.

In this case the issue is whether McDonough or Martin is entitled to priority in the discovery of the subject matter precisely defined in the following two counts of the interference:

"Count 1: The method of permanently changing the configuration of hair on the living human scalp without damage to the hair structure, including the steps of imparting the desired configuration to the hair and treating of the hair with a permanent waving solution comprising ammonia and an amount of thioglycolate equivalent to about 2% to about 10% of thioglycollic acid, said solution having a pH between 7 and 9.5 and then fixing said configuration.

"Count 2: A permanent waving composition comprising a water solution of ammonia and about 6% of thioglycollic acid, said solution having a pH of about 9."

In deciding this issue, the District Judge, speaking in general terms, notes in his opinion that both contestants, that is Martin, a practical but untrained worker in chemistry, and McDonough, a trained chemist with extensive educational background including a degree of Ph.D., were working in the same general field of permanent hair waving before Martin's application for patent was filed on March 13, 1941, and McDonough's application for patent was filed on June 16, 1941; and that the voluminous record was complicated by the fact that opposite conclusions had been reached by two tribunals which had considered the contest between the claimants, the federal courts in the Second Circuit, in D.C., 121 F.Supp. 490; 2 Cir., 233 F.2d 148, having reached the conclusion "that Martin first discovered the formula in controversy" and the Board of Patent Interference of the Patent Office having decided in favor of McDonough.¹ In reaching his own conclusion upon the issue, the District Judge does not purport to follow the rule laid down in Morgan v. Daniels, which imposes a heavy burden upon one who sues in the District Court to upset a priority finding of the Patent Office. Instead he applies the ordinary rule that the burden of proof rests on the plaintiff in an action; and he states the conclusion that Martin "was the first to conceive and reduce to practice the formula involved * * * without at this time discussing in detail the testimony of the various witnesses and the documentary evidence". The precise finding ultimately reached without discussion of the evidence was that Martin conceived and reduced to practice the invention prior to June 1940, whereas McDonough did not arrive at this point in his period of experimental research until shortly before his application filed June 16, 1941.

Some months later more detailed findings of fact were filed which were prepared by Martin's attorney and submitted to the opposing counsel at the judge's request. These findings, however, do not discuss the evidence so as to show that Martin's discovery antedated McDonough's. They do not discuss or examine McDonough's evidence at all except to say that his conception and reduction to practice did not occur until shortly before June 16, 1941, his work theretofore consisting of experimentation. With respect to Martin, the findings state the general conclusion that his conception and reduction to practice of the invention occurred prior to June 1940, and in support of this conclusion the following...