Willard v. Union Tool Co.

• Decision Date: 05 August 1918
• Docket Number: 3131.
• Citation: 253 F. 48
• Parties: WILLARD et al. v. UNION TOOL CO.
• Court: U.S. Court of Appeals — Ninth Circuit

253 F. 48

WILLARD et al. v. UNION TOOL CO.

No. 3131.

United States Court of Appeals, Ninth Circuit.

August 5, 1918

Rehearing Denied October 30, 1918.

Raymond Ives Blakeslee, of Los Angeles, Cal., for appellants.

Frederick S. Lyon, of Los Angeles, Cal., for appellee.

Before GILBERT, ROSS, and HUNT, Circuit Judges.

GILBERT Circuit Judge.

The appeal in this case involves the decrees of the court below in two suits for infringements of patents, namely, Willard and Wilson against the Union Tool Company, and the same plaintiffs against the Oil Well Supply Company and R. H Herron. Both suits are upon patent No. 1,064,270 issued to Willard and Wilcox on June 10, 1913, on an application filed March 11, 1912. Submitted with these cases in the court below was the case of Griffin et al. v. Wilson et al., upon patent No. 1,067,330, issued July 15, 1913, to T. J. griffin, on his application which was filed October 5, 1911. From the decree in the latter case which held the Griffin patent void as anticipated by the prior art, no appeal has been taken.

The appellants' patent is for a well-boring apparatus, and relates to well borers which are provided with rotary tops whereby the rotation of the boring tool and the string of pipe sections extending from the same is caused; the rig being employed in raising and lowering the boring tool and string in performing the operations incident to drilling. The patent contains two general groups of claims. The second group, which embraces claims 6, 7, 8, and 9, will be first considered. The nature of those claims is fairly represented by claim 6, which is as follows:

'In improvements of the character disclosed, the combination with a rotary table and a well-boring string; of a bushing fitting within the table and formed to surround and grip the string and impart rotation from the table thereto; and a member upon the string formed and disposed in a position to engage with said bushing and withdraw the same from the table upon the elevation of of the string.'

The court below found that all of this combination was covered by the patent to Griffin of July 15, 1913, except the last element, the 'member upon the string formed and disposed in position to engage with said bushing and withdraw the same from the table upon the elevation of the string,' and held that, although that element was not mentioned or claimed in the Griffin patent, it was plainly disclosed therein, and that Griffin had the conception of all the claims involved in the patent in suit at the time of the filing of his application which was prior to the application for the appellants' patent, and that the presumption arose therefrom that Griffin had then reduced the same to practice, and held that where the contest is between a patentee or his successors in interest and another person, or his successors in interest, and such other person has been shown to have reduced to practice the combination claimed prior to the filing date of the application of the patentee, the burden rests upon those suing under the patent to show a reduction to practice prior to that of the alleged infringer, and that, since such reduction to practice was not shown by the high degree of proof required, it followed that the claims of the Willard and Wilcox patent were void. In brief, the position of the trial court was, not that the combination described in the appellants' patent did not involve invention and was not patentable, but that Willard and Wilcox were not the first inventors thereof, and that, since Griffin made no claim for that element of the combination which would have rendered his invention patentable, he thereby relinquished the combination to the public, and all were free thereafter to use it.

The contest here does not arise between two rival patentees. It is not between the owners of the patent to Willard and Wilcox, and a manufacturer under the Griffin patent. It is between the owners of the former patent and persons who are admittedly infringers if the claims of that patent are sustainable. It is not claimed that Willard and Wilcox got from Griffin the idea of their combination, or that they were not original inventors of the same.

The contention is that inasmuch as Griffin's application for patent was prior in time and therein the combination was described, although one of its elements was not claimed as part of the invention, it follows that Willard and Wilcox were not the inventors of the combination. If it be assumed that the Griffin invention covers the combination here in question, we have the situation of two independent inventors whose applications were pending at the same time, both of whom, in the absence of proof to the contrary, will be presumed to be original inventors. Where two bona fide applications are pending at the same time, neither is prior in art to the other, for neither can know of the contents of the other's confidential communication on file in the Patent Office. Mergenthaler Linotype Co. v. International Typesetting Mach. Co. (D.C.) 229 F. 168.

When two patents for the same invention have been issued to independent inventors, the rule is that the dates of their inventions are: (1) The date of the patents; (2) the dates of the applications, provided the application sufficiently describes the invention; and (3) the dates of actual reduction to practice. In the absence of other proof, the filing of the application is taken to be a constructive reduction to practice. In Kearney v. Lehigh Valley R. Co. (C.C.) 32 F. 321, 322, Mr. Justice Bradley said:

'The date of the application, if it describes the invention sufficiently, is conclusive evidence that the invention was made prior to such date.'

The date of the Willard and Wilcox patent was prior to that of Griffin, but the latter's application was first in time. There was no evidence that the Griffin invention was ever reduced to practice otherwise than by the filing of his application. There was evidence that the Willard and Wilcox invention was reduced to practice prior to the date of Griffin's application; but the court below held that the evidence was not of that high degree which was required, and applied the rule which the appellee herein contends for, that the evidence must be of that conclusive character which is required to establish the defense of anticipation or of prior public use, to which contention the appellee cites authorities which hold that in suits for infringement of patents the defense of anticipation or prior use must be established by proof, clear, positive, and unequivocal, and that nothing must be left to speculation or conjecture. We cannot agree that the rule is applicable here. We think the rule to be applied is that which governs contests between rival inventors for priority of invention whose applications are pending at the same time, which is that, where both inventors have reduced their conceptions to practice, the burden of proof is on him whose application is second to show that he was the first to reduce the invention to practice and that in sustaining such burden he is controlled by the ordinary rules of courts of law with respect to the burden of proof, and is required to establish his priority only by a fair preponderance of the evidence, and not by proof conclusive in character, or beyond a reasonable doubt. Wurts v. Harrington,...