Van Der Horst Corp. of America v. Chromium Corp. of America, 178

• Decision Date: 21 August 1952
• Docket Number: No. 178,Docket 22245.,178
• Citation: Van Der Horst Corp. of America v. Chromium Corp. of America, 198 F.2d 748, 94 USPQ 288 (2nd Cir. 1952)
• Parties: VAN DER HORST CORP. OF AMERICA v. CHROMIUM CORP. OF AMERICA.
• Court: U.S. Court of Appeals — Second Circuit

94 USPQ 288, 198 F.2d 748 (1952)

VAN DER HORST CORP. OF AMERICA v.CHROMIUM CORP. OF AMERICA.

No. 178, Docket 22245.

United States Court of Appeals Second Circuit.

Argued June 4, 1952.

Decided August 21, 1952.

J. Stanley Preston, New York City, for appellant.

Before SWAN, Chief Judge, and L. HAND and CLARK, Circuit Judges.

PER CURIAM.

The only question which seems to us to require discussion is whether we were wrong in saying that the doctrine of Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651, applies to an application for the same invention filed in a foreign country.We failed to take into consideration § 72 of Title 35, U.S.C.A. which provided that it should not "void" a patent that "the invention or discovery" had been previously "known or used in a foreign country, * * * if it had not been patented or described in a printed publication."It is reasonable to assume that Holmes, J., had § 72 in mind in Alexander Milburn Co. v. Davis-Bournonville Co., supra, 270 U.S. at page 402, 46 S.Ct. 324, 325, when he said that "The policy of the statute as to foreign inventions obviously stands on its own footing and cannot be applied to domestic affairs."It is not evident as an original proposition why, although an earlier application, viewed as anticipation, must appear in a printed publication, it need not so appear, viewed as evidence that the patentee is not the first inventor, but may be proved by an "unpublished" application for a patent upon it.We had attempted to distinguish the two situations by saying that the "invention" lay in the claims, and that the earlier applicant was not "an original and first inventor or...