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April 16, 1941


The opinion of the court was delivered by: SYMES

SYMES, District Judge.

This is an action under § 4915, Rev. Stats. of the United States, Tit. 35, § 63, U.S.C.A.

The complaint alleges the plaintiff Sherman, prior to May 28, 1932, was the true, original and first inventor of certain new and useful improvements in typewriting machines not known or used by others and not patented or described, etc. And being such first and sole inventor and thereby entitled to a patent thereof, he duly filed in the United States Patent Office on May 28, 1932, his application for patent. Said application was given a serial number 614,238. That after due proceedings in the Patent Office the Commissioner of Patents adjudged his invention described and claimed in said application in part interfered with certain other pending applications, namely, an application of one Claude C. Rose, Serial Number 612,103, filed May 18, 1932. The subject matter of the interference being defined by the Commissioner of Patents in a count as follows: "The combination with a writing machine having a platen and a writing position past which record material is progressively advanced, of a pin type feeding device for positively feeding the record material past the writing position in a predetermined path of travel, said pin type feeding device being mounted for bodily movement toward and from the path of travel of the record material into and out of the interengaging relation therewith."

 That said Rose assigned his entire right and interest in his application to the defendant, the American Telephone and Telegraph Company.

 It is then alleged that plaintiff Sherman duly presented to the Examiner of Interferences sufficient proof, as required by law, to establish the fact that he was the true, original and first inventor of the improvements constituting the subject matter of the interference, and that after due proceedings had and presentation of evidence the Commissioner denied priority of invention in the interference issues to Sherman and awarded priority to Rose. That he, Sherman, appealed from the decision of the Commissioner of Patents to the Board of Appeals of the United States Patent Office, which, after hearing, erroneously and contrary to law affirmed the holding of the Examiner of Interferences awarding priority to Rose.

 The claim involved in the interference, supra, had been allowed to Sherman in his application, Serial Number 708,902, filed January 29, 1934. The claim was suggested to Rose in August, 1936, by the Patent Office, in accordance with the practice then of setting up an interference. The interference was declared in October, 1936. In accordance with Rule 110 of the Patent Office in interference matters, the parties filed their preliminary statements, Sherman setting up as his dates a conception about May 1, 1931, a written description May 15, 1931, a disclosure to others May 1, 1931, and a reduction to practice by the filing of his application for patent No. 614,238, May 28, 1932. Rose filed his application for patent May 18, 1932, and in his preliminary statement states he made drawings and a written description and explained his invention to others on or about September 15, 1930. His reduction to practice was the filing of his application on the date above given -- a year and eight months later.

 Shortly therafter Sherman moved to add his earlier application No. 614,238 to the interference. The Patent Office ruled the motion should be denied, as he, Sherman, already had an application in the interference and that he must elect a single application for the interference. In accordance with this requirement Sherman elected that No. 614,238 be the one, and accordingly this was done May 21, 1937. The preliminary statements of the parties were laid open to each other and time set to take the testimony. Thereupon Sherman, because of the discovery of further facts, moved to amend his earlier preliminary statement to set up earlier dates, and filed a proposed preliminary statement alleging he had made the invention of the interference claim by a conception during February, 1929, by a drawing on February 28, 1929, and other drawings in October, 1929, April, 1930, and May, 1931, a first written description February 28, 1929, and a reduction to practice by construction of a full-sized operative machine, successfully tested and operated at the factory of the Standard Register Company at Dayton, Ohio, in the latter part of October, 1929.

 Ruling on this motion the Patent Office said it was "better to defer consideration of the motion until final hearing."

 Sherman took his testimony in November, 1937, while the testimony of Rose was stipulated. The Patent Office, through the Examiner of Interferences, and then upon appeal by Sherman, through its Board of Appeals, held against Sherman, ruling Sherman was restricted to May 1, 1932, as his first date in accordance with his first preliminary statement, and that Rose had shown an earlier date than this, to wit, September 15, 1930. Thereupon Sherman's motion to amend his preliminary statement was denied and the interference count was awarded to Rose.

 Sherman, the record discloses, claims to have found certain sketches relied on to show his earlier dates in his closed files of a patent No. 2,000,649. A machine constructed according to this patent had been marketed by Sherman and in the course of the interference he tried to get this construction (Ex. 3) admitted as showing an earlier date of invention. This machine did not have a pin-feeding mechanism mounted for body movement, as required by the count, and it was accordingly ruled out. Both the Examiner and the Board held Sherman should have looked into the files as to this issued patent before he filed his first preliminary statement, it appearing that if he had done so his recollection would have been refreshed by certain sketches he would have found there. His failure to do this appeared to the Board to be insufficient care. The Board held Sherman must show by evidence "clear and convincing" that he could not have made a correct preliminary statement in the first instance, and having failed to do so, he was denied the right to amend his preliminary statement. Following this Sherman filed this suit under Rev.Stats. 4915, supra, and at the trial relied solely upon the record made in the Patent Office proceedings.

 In this court plaintiff contends, as a matter of law, that questions of pleadings were all that were involved in the Patent Office proceedings, and secondly that the "award of priority" made in the Patent Office was in fact merely a ruling on the pleading, not based on the truth or falsity of Sherman's evidence in support of his claimed invention date of October, 1929. Hence, he argues, the Patent Office ruling is of no weight in this suit in this court. Plaintiff's counsel states in his brief (p. 8), however, that it has been the law, "where the Patent Office makes findings of ultimate facts against a party in an Interference, that on the same record the Court will support these findings unless very strongly impelled against it."

 The question stated on this record, as the court views it, is whether Sherman or Rose first completed the invention residing in the interference count, and that is largely determined by the question, did Sherman have this machine (Ex. 3) developed and reduced to practice as a fullsized, operative model, capable of performing the task in connection with the combination set forth in the claim. To prove this the plaintiff relies upon the testimony of Metzner that when he found this machine in the pent house, where it had been stored for many years, it had a tag on it, dated and signed by Sherman and Metzner, and that it was the habit and custom of the company of not completing developing work on a model until it was operative and had been fully reduced to practice, which was evidenced by the tag. Nobody testified that they had actually tested out the machine on the date in question back in 1929, and no witness was produced who had ever operated it under working conditions, and its existence was evidently forgotten from 1929 until its discovery in 1937.

 As plaintiff states in his brief an invention is now completed by merely thinking about it or making drawings, but by actually making a model of the device "which does not require further inventive work to make it serve the purpose desired."

 According to his quotation from Robinson on Patents, § 127, reduction to practice means reduction to successful practice. "Nothing must be left for the inventive genius of the public; and his invention must ...

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