Young v. Dworkin

• Decision Date: 14 February 1974
• Docket Number: Patent Appeal No. 9004.
• Citation: 180 USPQ 388,489 F.2d 1277
• Parties: Frank L. YOUNG, Appellant, v. Howard S. DWORKIN, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

180 USPQ 388, 489 F.2d 1277 (1974)

Frank L. YOUNG, Appellant, v. Howard S. DWORKIN, Appellee.

Patent Appeal No. 9004.

United States Court of Customs and Patent Appeals.

January 17, 1974.

Rehearing Denied February 14, 1974.

Paul Maleson, Maleson, Kimmelman & Ratner, Philadelphia, Pa., attorney of record, for appellant.

Howard S. Dworkin, pro se.

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

MILLER, Judge.

This is an appeal from the Board of Patent Interferences¹ which awarded priority to the senior party-appellee on the grounds that the junior party-appellant had suppressed or concealed the invention. 35 U.S.C. § 102(g). We affirm.

FACTS

The invention is an expansible envelope formed from single blanks of foldable material. The envelope is open at the top and has a gusset (an inward bellow-type fold forming a triangular insert) on each of the two sides plus one at the bottom, thereby permitting expansion into a box-like configuration.

It appears that sometime prior to November 4, 1965, appellant conceived the invention which, according to his testimony, would be adaptable to machine folding and gluing of the bottom gusset. Existing three-gusseted envelopes, which were of a different construction from the invention, were only partially manufactured, by machine, the bottom gusset requiring a hand folding and gluing operation. Thus, appellant's objective was to design a three-gusseted envelope which could be entirely machine-manufactured. Upon receipt by his company of an order for 15,000 three-gusseted filing envelopes from the School District of Philadelphia on November 4, 1965, appellant constructed a model of the envelope. This was introduced into evidence and found by the board to be a completed article, capable of actual use, and further found to have constituted a reduction to practice.

In November, 1965, appellant showed the model to the company vice-president for production and to the plant superintendent, who made a drawing and had a die prepared for the new design. Using the die, paper blanks for the entire order were prepared, and about the last week of November, 1965, were run through one of the company machines. However, the glue did not register in the right positions, the paper blanks were scrapped, new blanks were re-die-cut for hand-fold manufacture, and the order was completed by hand. Nothing further was done with the invention until after August 26, 1966, when an order for 6,000 envelopes was received from the Social District of Philadelphia. Appellant decided to make this run with the new design on another company machine, with new gears and new belts designed to overcome the glue problem encountered in the first run nine months earlier. However, the glue problem was not overcome, and this run (made in September, 1966) was unsuccessful. The paper blanks were thrown away, and again the order was completed by hand, using new blanks for hand-fold manufacture.

No further attempt was made by appellant to produce the invention on the company's existing machines. However, some eight months later appellant attended an international paper-converting machinery show in Dusseldorf, Germany, for the purpose, as he testified, of looking for a standard folding and gluing machine which would answer the glue problem. Appellant testified that he felt all of the machines that he saw there would handle the problem, but, upon his return, he directed his vice-president for production to get in touch with the International Paper Box Machine Company in New Hampshire, because it was the only company from the United States at the show and would probably provide better service. In the first week of August, 1967, the vice-president visited the International plant in New Hampshire. He made subsequent trips to the plant and ordered a machine on September 13, 1967. The machine was delivered late in December, 1967, assembled, and put into operation in January, 1968. Appellant testified that approximately 25,000 envelopes of the invention design were successfully run off during January.

Meanwhile, on October 31, 1967, some five months after attending the show in Dusseldorf, appellant wrote to his patent lawyer, enclosing samples "to show the style and construction of the expanding envelopes which can be manufactured on the new machine" and saying, "I think we should apply for a patent very soon." However, no showing was made of when the lawyer was directed to proceed in drawing up the application. It was not until February 7, 1968, following the successful runs on the new machine the month before, that appellant filed his application for a patent.

Under cross-examination appellant testified that he had been in touch with his patent lawyer prior to writing the letter of October 31, 1967, and that "I told him I had invented a new design and that we had experimented with it; we knew that it was a practical design but we were unable to manufacture it with our present equipment." (Emphasis supplied.)

When asked on cross-examination whether it was his usual practice to delay a period of two years after conception before taking up an invention with his patent solicitor, appellant responded: "I do not apply for a patent until I am positive that we can manufacture the item."

When asked on cross-examination whether it was correct that his reason for not seeking out the services of his patent solicitor in 1965 was his "doubts" that the envelope could be manufactured at that time, appellant testified: "I had no doubts that it could be manufactured. My doubts were that we could not manufacture it with our present equipment, and the patent itself would be of no value to us unless we could manufacture it."

Under cross-examination appellant testified, "Oh, yes," in response to the question: "During the time from November, 1965, to May, 1967, was there a continuous demand for gusseted envelopes?" He also said, "That is correct," in response to the question: ". . . I understand that it is much cheaper to make these envelopes by machine than it is by hand; is that correct?"

The board noted that the record shows all of appellee's activity to have occurred between January 31, 1967, and the date of filing his application for a patent on December 28, 1967, with reduction to practice no later than October 6, 1967, at which time an envelope constructed according to the terms of the count was delivered and explained to his patent lawyer.

There is no evidence in the record to indicate that either party knew of the other party's activities regarding the present invention until the Declaration of Interference by the Patent Interference Examiner dated June 9, 1969. There is no evidence that appellant disclosed his invention to anyone outside his company, except for a representative of the International Paper Box Machine Company, until it was made known to his patent lawyer in October of 1967.

OPINION

The record before us supports the board's finding that appellant's invention was reduced to practice and, further, that this occurred in November, 1965.

The sole remaining question is whether the board correctly held that junior party-appellant suppressed or concealed his invention within the meaning of 35 U.S.C. § 102(g). Here, senior party-appellee bears the burden of proof by a preponderance of the evidence, notwithstanding junior party-appellant's burden on the issue of priority of invention which he has sustained. Gallagher v. Smith, 206 F.2d 939, 41 CCPA 734 (1953).

In considering the question, we point out that section 102(g) is concerned with the subject of priority of invention and, for interference purposes, provides that a person shall be entitled to a patent unless "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." By its enactment as part of the Patent Act of 1952, Congress codified the body of law which had accumulated on the subject of priority of invention, including the legal concept of "suppression or concealment."

We note that commencing with the first edition of Webster's dictionary in 1828² and continuing to the present the definition of "suppress" has included the idea of keeping from public knowledge. It is to be expected, of course, that the courts would be aware of the definition, which fits very well with their statements on the clear policy against suppression underlying our interference laws, both prior to and including 35 U. S.C. § 102(g). Long ago this policy was explained by the U.S. Supreme Court in Kendall v. Winsor, 62 U.S. (21 How.) 322, 328, 16 L.Ed. 165 (1858) as follows:

The true policy and ends of the patent laws enacted under this Government are disclosed in that article of the Constitution, the source of all these laws, viz: "to promote the progress of science and the useful arts," contemplating and necessarily implying their extension, and increasing adaptation to the uses of society. . . . By correct induction from these truths, it follows, that the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and, if aided in his design, would impede, the progress of science and the useful arts.

Mason v. Hepburn, 13 App.D.C. 86, 1898 C.D. 510 (1898) has generally been regarded as the origin of the suppression and concealment doctrine. There the court (13 App.D.C. at 96), after quoting from Kendall v. Winsor, emphasized the "policy and spirit of the patent laws" underlying the doctrine as follows:

The true ground of the doctrine, we apprehend, lies in the policy and spirit of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting,

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