Westinghouse Mach. Co. v. General Electric Co.

• Citation: 207 F. 75
• Decision Date: 14 June 1913
• Docket Number: 257.
• Parties: WESTINGHOUSE MACH. CO. et al. v. GENERAL ELECTRIC CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

207 F. 75

WESTINGHOUSE MACH. CO. et al. v. GENERAL ELECTRIC CO. et al.

No. 257.

United States Court of Appeals, Second Circuit.

June 14, 1913

Gifford & Bull, of New York (J. Edgar Bull, of New York City, of counsel), for appellants.

Charles Neave, of New York City (Albert G. Davis and A. A. Buck, both of Schenectady, of counsel), for appellees.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

This case grows out of an interference in the Patent Office entitled De Kando v. Armstrong, which was decided adversely to De Kando and his assignee, the Westinghouse Machine Company. The interference was between an application of De Kando filed July 3, 1906, and a patent to defendant Armstrong No. 811,758, dated February 6, 1906, on an application filed June 28, 1905.

there is controversy as to some of the important facts, but in view of the disposition we make of this cause we shall state them as they are found by the Court of Appeals District of Columbia, and by the District Judge, with some additional statements of them which complainant claims are established by the proof. In thus restating them it must be understood that we have not examined into the conflicting evidence or reached our own conclusions as to whether the testimony supports the findings of fact; our view of the law making it unnecessary for us to do so.

Quoting from the opinion below the facts there found are:

'(1) That De Kando actually made his invention in a foreign country and reduced it to actual practice and put it in actual use, prior to the spring of 1904 on the Valtellina Railway in Italy.

'(2) It was therefore an invention which could be and was seen understood, and known to be practical. There was not only the patentable conception but the idea of means and means.

'(3) That on March, 1904, Waterman went from the United States to Europe and met De Kando at Budapest, where the details of the invention were explained to him, and then, proceeding to Italy, Waterman saw the invention in actual use. In addition De Kando then furnished Waterman with an elaborate written description of the invention.

'(4) It appears from the evidence that Waterman was learned and skilled and fully capable of fully understanding and that he did understand the invention.

'(5) Waterman therefore 'knew' that the invention had been conceived and actually made and reduced to actual and successful practice.

'(6) That Waterman not only brought the information he had gained in Europe with him to the United States, when he arrived May 5, 1904, but also the said written description of such invention and notes which he had made relating to such invention while in Europe.

'(7) That Waterman made a written report as to this invention to Stillwell June 7, 1904, and during the year following he described same in the United States to a number of electrical engineers of standing, all capable of understanding same, and June 19, 1905, Waterman explained the invention to the American Institute of Electrical Engineers in the United States.

'(8) Prior to 1901 or 1902 Armstrong had conceived the same invention and in * * * June, 1905, he filed his application for a patent. There is no claim or pretense that Armstrong exercised reasonable diligence, or any diligence, or that he made any effort whatever to reduce his invention to practice prior to filing his application for a patent.'

Defendants, it may be noted, especially controvert the findings 3, as to what Waterman saw in Italy, and 8, as to the date of Armstrong's conception and the measure of his diligence. Waterman was an eminent electrician who went abroad to inform himself as to De Kando's invention on behalf of parties here who contemplated buying it. The testimony warrants a further finding of fact which complainant suggests, viz., that:

'(9) The knowledge of De Kando's invention and its use abroad was communicated by De Kando to Waterman for the specific purpose of introducing such knowledge into the United States and of having the invention put into use in the United States.'

Whatever other questions there are in the case, and many have been argued, it is manifest that the fundamental and crucial...