Wiesner v. Weigert, Appeal No. 81-571.

• Decision Date: 10 December 1981
• Docket Number: Appeal No. 81-571.
• Parties: Leo WIESNER, Appellant, v. Hans WEIGERT, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

666 F.2d 582

Leo WIESNER, Appellant, v. Hans WEIGERT, Appellee.

Appeal No. 81-571.

United States Court of Customs and Patent Appeals.

December 10, 1981.

Charles W. Helzer, Arlington, Va., for appellant; William C. Crutcher, Waterbury, Conn., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

MARKEY, Chief Judge.

Junior party Wiesner appeals the determination of the Board of Patent Interferences (board) awarding priority to senior party Weigert. We affirm.

Background

Involved are Wiesner application filed March 10, 1975 and Weigert Patent No. 3,934,241 filed November 13, 1974. Wiesner filed a preliminary statement, took deposition testimony, filed a transcript and documentary exhibits, and submitted a brief for final hearing. He waived appearance at oral argument. Weigert did nothing, and is therefore restricted to his November 13, 1974 filing date. Wiesner attempted to prove conception and reduction to practice in late 1971 or early 1972.

The subject matter is defined by a single count drawn to an electronic timepiece having a liquid crystal display (LCD) device in which electrode segments are as radial lines. Successive actuation of the segments provides a visual simulation of the moving hands of a watch. Grouping and interconnection of the electrode segments avoids crossovers in the interconnections. A drive circuit achieves the necessary sequence of actuation.

Basically, the count defines the combination of an LCD and its driving circuit. Extensive functional language overlaps structural components. The count, corresponding to claim 1 of Weigert's patent and claim 15 of Wiesner's application, recites:

Count 1

Analog display utilizing liquid crystal material and for being multiplexed, comprising:

a plurality of groups of segments disposed adjacent to each other in a predetermined pattern, with regard to a predetermined direction, the segments in each group being disposed of in a sequence opposite to the sequence in which the segments of the next adjacent group are disposed, and each segment in each group corresponding to one of the segments in each of the other groups and all corresponding segments in all groups being connecting sic electrically in a series connection;

a plurality of sectors disposed adjacent to each other and in said predetermined pattern, each of said sectors disposed opposite to one of said groups of segments and displaced therefrom;

a body of liquid crystal material disposed between said plurality of input leads, each of said input leads being connected electrically with one of said series connections of said corresponding segments; and

a second plurality of input leads each of said input leads being connected electrically to one of said sectors, wherein said body of liquid crystal material is in a first optical state and wherein each portion of said body of liquid crystal material is in a first optical state and wherein each portion of said body of liquid crystal material disposed between one of said segments and one of said sectors is capable of changing into a second optical state upon an electric field being established thereacross by a first input signal being applied to said one segment and by a second input signal being applied to said one sector, and said analog display further comprising;

means for applying first input signals to said first plurality of input leads in a first predetermined sequence with regard to said predetermined direction upon a second input signal being applied to a predetermined one of said sectors, and for applying said first input signals to said first plurality of input leads in a sequence opposite to said first predetermined sequence and with regard to said predetermined direction upon said second input signal being applied to the sector next adjacent to said predtermined sic one of said sectors whereby the portions of said body of liquid crystal material disposed between said segments and said sectors change from said first optical state into said second optical state sequentially in said predetermined direction.

Upon review of Wiesner's preliminary proofs under Rule 204(c)¹ the board found them prima facie insufficient to entitle Wiesner to priority. The board cited deficiencies in Wiesner's affidavits, including unsupported conclusory statements about his alleged reduction to practice and failure to establish correspondence between whatever may have been actually reduced to practice and the combination of the count. The board therefore issued an order to show cause why summary judgment should not be issued against Wiesner under Rule 228.²

In response, Wiesner submitted additional affidavits and exhibits. The board found that those additional materials, "prima facie, establish conception and actual reduction to practice by the end of 1971 and efforts toward perfection of the invention and filing which would obviate a finding of unreasonable delay from then until filing in 1975." The interference was allowed to proceed.

In its determination of priority, the board reviewed all of Wiesner's submissions to ascertain whether he had met his burden by a preponderance of the evidence, noting that proof of priority of invention must encompass all structural and functional limitations of the count. The board refused to consider Wiesner's affidavits because they did not comply with the rules governing submission of evidence in an interference³, stating:

Several "exhibits" (Exhibits 1, 3, 4, 5, 6) are purported copies of affidavits which had been submitted under Rules 204(c) and 228. During the depositions the respective witnesses were asked to affirm the accuracy of their affidavits marked as exhibits but were not asked to read them into the testimony record. We will give no consideration to these affidavits for in our view they are barred by Rule 271 which prohibits noncomplying evidence under Rule 272. The testimony in this interference is required to be "by depositions on oral examination" under Rule 272(a) because there is no "agreement by the parties" under Rule 272(c) permitting testimony in affidavit form. The waiver provisions of Rule 285 do not apply to Rule 272 and the authority to otherwise waive the rules resides solely in the Commissioner and not in this board. It is the view of this board that a party should not be permitted to circumvent the clear mandate of Rules 271 and 272(a) by the mechanism of calling a witness in order to submit affidavit testimony under the guise of an exhibit. Cf. the concurring opinion in Inoue v. Lobur, 195 USPQ 256 (BPI 1976).

The board also refused to consider portions of the testimony of Rabinowitz and Willis. Because their competence in electronics had not been established, they were deemed unqualified to corroborate conception and reduction of the means for applying first input signals (driving circuit) defined by the count. Their testimony concerning the LCD display was accepted. The board found witness Cohen technically qualified in all respects. Affidavits affirmed by Rabinowitz, Willis and Cohen during their oral testimony were, as above indicated, refused consideration. A fourth affiant, Suppa, did not testify.

Cohen's oral testimony was found insufficient to corroborate conception or reduction to practice of the driving circuit. In response to counsel's questions concerning the operation of a driving circuit constructed in accordance with the count, Cohen recalled a problem occurring in February 1972 associated with leakage currents, causing undesirable lighting of segments of the LCD. Cohen's testimony is barren of any indication that the leakage problem was solved.

Though Cohen testified that he understood the invention described in exhibit "A" to function as recited in the count, he added that "I did not implement it that way...." Cohen's testimony does not reveal whether the driving circuit actually constructed functioned in accordance with the count.

The board found Cohen's testimony evidence of conception of only a result, and thus insufficient to corroborate conception of the invention defined in the count, because it failed to corroborate conception of means for putting the invention into practice. The board went on to note the absence of evidence on whether such means would have been within the ordinary skill of the art.

The board also found the entire testimony insufficient to corroborate a reduction to practice of the invention. Noting differences between the "generations" of LCD's and a series of driving circuits, the board concluded that there was no independent corroboration of successful operation of an LCD in combination with a driving circuit within the count language. The board also remarked upon Cohen's statements regarding leakage problems with the driving circuit as indicating that there was never a conviction of success in the combination actually tested.

Responding to Wiesner's proof of diligence and to counsel's assertions concerning suppression and concealment, the board said there was insufficient evidence to establish diligence between the alleged conception and filing dates or to overcome an inference of suppression or concealment following the alleged date of reduction to practice.

OPINION

Wiesner argues unpersuasively that the board erred in refusing to consider his preliminary statement and its attached exhibits. Rule 223(d)⁴ prescribes:

Rule 223 Effect of statement

* * * * * *

(d) The preliminary statement can in no case be used as evidence in behalf of the party making it.

In line with Moran v. Paskert, 205 USPQ 356, 359 (Bd.Pat.Int.1979); Brecker v. Jennings, 204 USPQ 668, 670 (Bd.Pat.Int.1978), the board correctly gave no consideration to the preliminary statement as part of Wiesner's proof of priority.

Equally unpersuasive is Wiesner's challenge of the board's refusal to consider, in determining priority, the affidavits submitted under Rules 204(c) and 228. Under Rule 228 the board considers affidavits filed...