tool, which was subsequently embodied in the Rudolph patent, No. 1,372,197. About the same time, or a little later, Dobrick, who was an executive employee in charge of manufacturing, also designed and made a model of a tool, which was later embodied in his patent. Both designs were submitted to Mr. McNellis, the president of the company, and he selected and approved the Rudolph tool, for the curious reasons that Dobrick's was too simple, and that the Rudolph tool "was boxed up and it looked like a high grade tool, * * * more of a tool of the class our trade would buy."
The patent for the Rudolph tool was applied for, and the Company took up its production. Dobrick was instructed to put his device "away where we might have it if we wanted it at some future day to develop it further and take it up in case the other tool did not hold the market, or that a simpler tool was wanted at a later day." In pursuance of this, his model and his original drawings were kept by him in his desk, and the head of one of the sales divisions who had been consulted by him in making the tool testified that he said to him, "let's just wait and see how the other tool sells, and maybe our judgment will be vindicated after all.' So he just took the tool and put it away in his office, I presume." After marketing the Rudolph tool over a period of about eight years, the Company found its sales petering out and decided to take up and produce the Dobrick tool. The patent was applied for in April, 1927, or about eight and one-half years after the invention. The tool was successful in a highly satisfactory degree, and it is quite evident, from comparison with the sales of the Rudolph tool, that the merit of the device itself was the principal cause of its success.
Of course, eight years is a long time to withhold an invention, but it has been held in scores of decisions that mere lapse of time before an inventor applies for a patent does not, per se, constitute abandonment. It may, but not where the delay is explained in such a manner as to show that there was no intention to abandon. The whole question is one of fact, and depends upon the intention of the inventor. Electric Battery Co. v. Shimadzu, 307 U.S. 5, 15, 59 S. Ct. 675, 83 L. Ed. 1071; McGrath v. Burke, 56 App.D.C. 320, 12 F.2d 161; J.E. Hanger, Inc. v. J.F. Rowley Co., 54 App.D.C. 336, 298 F. 359. As respects abandonment, every reasonable doubt should be resolved in favor of a patent. Cleveland Trust Co. v. Schriber-Schroth Co., 6 Cir., 92 F.2d 330, reversed on other grounds, 305 U.S. 47, 59 S. Ct. 8, 83 L. Ed. 34.
In the present case it seems to me that the facts indicate rather definitely an intention not to abandon. At any rate, they do not present a case of unexplained delay under circumstances from which the only reasonable inference is that of an intention to abandon. Dobrick was an employee of the Brass Company. He was obviously in no position to market his device except through the Company's taking it up. Of course, he had his position to consider and could not be expected to risk it by competing with his employer or by exhibiting his device for sale to another manufacturer. There is no ground on which to reject the entirely reasonable explanation that he was holding his device in reserve, either for his employer or some other in case his employment should be terminated.
This is not the case of an attempt to prolong a monopoly such as invalidated the grant of the patent in Macbeth-Evans Glass Co. v. General Electric Co., 6 Cir., 246 F. 695. None of the decisions cited by the defendant which find abandonment on the basis of an undue prolongation of the monopoly are based on situations where the inventor who refrains from patenting his device for an extended period makes no effort whatever to exploit it during that period or to get any advantage from the delay.
Nor is the case that of an inventor stimulated into activity by the appearance on the market of another device embodying his invention. The Helminiak patent issued before Dobrick's, but there is no evidence that Dobrick knew anything about it until long after he had made his application. The cause which moved him to apply was the altogether simple one that his Company was ready to take up his patent and market it.
Nor was there laches, or estoppel grounded upon the intervening rights of third parties or upon the misleading of others into expenditure of money in the belief that the invention was free to the public.
My conclusions of law are:
1. That the patent in suit is valid.
2. That the plaintiff is entitled to a decree as prayed for.
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