Appeal from the District Court of the United States for the District of New Jersey; William Clark, Judge.
Before BIGGS, MARIS, and JONES, Circuit Judges.
The plaintiffs, as the persons interested in Lorenz Patent (No. 2,084,446), one of two interfering patents, brought suit under Section 4918, Revised Statutes, 35 U.S.C.A. § 66, against the defendant as the owner of the other interfering patent (Ittner, No. 1,918,603). The bill of complaint prayed for an adjudication that Lorenz was the first and original inventor of the process set forth in his patent, that his patent is good and valid and that the Ittner patent is void, inoperative and invalid as to certain claims thereof, and for injunctive and further relief.
Both patents cover a process for the manufacture of soap and the recovery of glycerine. That they are interfering within the contemplation of Sec. 4918, R.S., is quite obvious. The nineteen claims of the Lorenz patent (no. 2,084,446) were copied verbatim from the first nineteen claims of the Ittner patent (No. 1,918,603). The circumstances under which these patents, embracing identical claims, were issued respectively to each of two different applicants were as follows.
On January 24, 1920, the party Lorenz, having conceived a method of making soap with attendant recovery of the glycerine by distillation, filed a patent application covering his alleged invention. With a view to interesting the defendant's predecessor (Colgate & Company) in the process, Lorenz contacted one Ittner, the chief chemist of Colgate & Company, and, on January 31, 1920, he gave Ittner an exact copy of his patent application. Ittner's only expressed reaction at that time to the method of soap-making disclosed by the lorenz application was an objection on commercial grounds that the soap, when made, would "have to be shoveled out of the apparatus, and that requires labor, and labor means money." Ittner retained the copy of the Lorenz application for two or three weeks and then returned it to Lorenz with the statement that his company was not interested. He did not claim to have already entered the field covered by Lorenz's conception or that the process lacked patentability. Lorenz, who had prepared and filed, and was personally prosecuting, his application, ran into difficulty in the Patent Office with respect to the patentability of his original claims; and, on May 28, 1928, his application was held to have been abandoned for want of prosecution.
On July 18, 1933, a patent was issued to the defendant company, the assignee of Ittner, covering a process for making soap and glycerine, for which patent Ittner had made application on Februry 19, 1931. Lorenz, upon learning of the Ittner patent and asserting that the claims thereof embodied the teaching of the Lorenz application of 1920, filed a new patent application on November 8, 1934, as a refiling of his abandoned 1920 application. In the new application Lorenz set forth, as his claims of invention, the claims specified in the Ittner patent and relied on his 1920 application as showing his prior conception of the alleged invention. Interference was declared by the Patent Office and a proceeding was duly had to determine the question of originality as between Lorenz and Ittner.The Examiner made a report finding that Lorenz was the original inventor as to the first nineteen counts in interference (Ittner's first nineteen claims), and decided that a patent therefor should issue to Lorenz. No appeal was taken and the patent issued accordingly. Ittner's additional claims for removing soap from the retort and replenishing the mass therein, while the process was in operation, form no part of any claim under the Lorenz patent. Our references to the Ittner patent should, therefore, be understood as embracing only the first nineteen claims thereof.
The learned court below made point of the defendant's allegation that the reason no appeal was taken to the Patent Office tribunals was because notice of the Examiner's report and decision was not mailed to the "active" counsel for the defendant. Even if the Patent Office had been derelict in not notifying "active" counsel for the defendant of the Examiner's decision, the matter could not be of any possible materiality to the question of fact whelther Lorenz or Ittner was first in conceiving the alleged invention. However, the Patent Office was not at fault. Notice of the Examinerhs decision was duly mailed to and received by the attorney of record for the defendant and, so, complied with the requirements under the rules of the Patent Office (rule 7, Rules of Practice). Moreovelr, the duty of the court below to hear and determine the controversy in the exercise of its power under Sec. 4918 R.S. in no way depended upon whether or not an appeal was first taken to Patent Office tribunals. Cf. Starlock Mifg. Co. et al. v. Kublanow et al., 3 Cir., 106 F.2d 495, 497.
In a case such as the present the merit of the Patent Office decision primarily invites consideration. In appraising the weight to be given to it, the courts are constrained by a well settled rule of law. The Supreme Court said in Morgan v. Daniels, 153 U.S. 120, 125, 14 S. Ct. 772, 773, 38 L. Ed. 657, that "Upon principle and authority * * * it must be laid down as a rule that, where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction." Quite understandably, this rule hals been respected and applied generally. Loughran v. Quaker City Chocolate & Confectionery co., inc., 3 Cir., 296 F. 822, 825; Curtiss Aeroplane & Motor Corp. et al. v. Janin et al., 2 Cir., 278 F. 454, 455; Gold et al. v. Newton, 2 Cir., 254 F. 824, 827; Gold et al. v. Gold, 7 Cir., 237 F. 84, 86.
No reasonable distinction can be drawn from the fact that the suit in Morgan v. Daniels, supra, was instituted under Sec. 4915, R.S., 35 U.S.C.A. § 63, to compel the issuance of a patent while here the suit is under Sec. 4918, R.S., and seeks an adjudication of priority of invention and patent validity. The reason underlying the rule as to the presumptive validity of a material Patent Office decision is the same in either instance. The thing of compelling importance is that the Patent Office decision represents the determination of an administrative body, based upon the findingls of an expert in the particular field of inquiry, made by him while acting in a quasi-judicial capacity, in a contested proceeding where the rights of interested parties were fully represented. See Gold et al. v. Gold, supra, 237 F. at page 86. Consequently, the rule was applied by this court without question in a case where the suit had been brought under Sec. 4918 R.S. Earles v. A. W. Drake Mfg. Co. et al., 3 Cir., 300 f. 265, 267. See also Ecaubert v. Appleton et al., 2 Cir., 67 F. 917, 921. Nor is the rule rendered any less applicable because, in determining the question of priority of invention, it becomes necessary for the Examiner to construe and interpret interfering patents. In determining priority of invention, "it is just such questions that the administrative tribunal is pre-eminently qualified to solve." Godl et al. v. Gold, supra, 237 F. at page 86.
Turning to the record now before us, we are unable to perceive wherein there is any testimony which carries thorough conviction that the Examiner's decision was in error.On the contrary, were it this court's duty to determine, de novo, the fact of priority, we should find from the evidence adduced in the court below precisely as the Examiner had theretofore found from substantially the same evidence. While we thus directly confirm the correctness of the Examiner's decision, the difference of opinion between us and the learned trial Judge, hereby indicated, as to what a "thoughtful and impartial scrutiny of the examiner's views" actually discloses, of itself, indicates a want of that certainty which is necessary to carry thorough conviction of error before a court may appropriately set aside a Patent Office decision upon a question of priority of invention in an interference proceeding. Cf. Gold et al. v. Newton, supra, 254 F. at page 827.
In the face of the Examiner's decision, it is unnecessary for us to go beyond the points of difference, as alleged by the defendant, between the process disclosed by the lorenz 1920 application and that described in the Ittner patent. That both processes relate to saponification of fats or fatty oils and the recovery of glycerine by distillation through the use of a vacuum and high temperatures admits of no doubt. The Examiner aptly described the invention as follows: "The gist of the invention in issue is the production of soap and glycerine by the saponification under reduced pressure of a fat or fatty oil by thorough agitation in the absence of air and in intimate contact with steam. The above conditions made it possible to carry out the saponification reaction at 'a temperature in excess of the melting point of the resulting anhydrous soap,' at a temperature to maintain the soap in 'a molten, substantially anhydrous state' or at 'a temperature producing an appreciable vapor pressure of glycerine.' Such a method permits a recovery of glycerine in undecomposed form and produces a soap which is not discolored."
It is the defendant's contention that the gist of the Ittner process was the use of temperatures so high that the resulting anhydrous soap was in thin liquid form and, hence, capable of thorough agitation by steam. Ittner prescribed a thermal range for the operation of his process of from 150 degrees C. to 350 degrees C., while Lorenz's range was 250 degrees C. to 270 degrees C. But, the defendant asserts that anhydrous soap does not become a thin liquid under 290 degrees C., or, if it is to become a thin liquid at temperatures within the Lorenz range (250 degrees C. to 270 degrees C.), it can do so only through the addition of a flux, which Lorenz did not specify. Yet, neither did Ittner prescribe a flux and his temperature range went well below the minimum of the Lorenz range. Consequently, if a flux is necessary to render the soap thinly liquid within the Lorenz range at reduced pressures, it is likewise necessary within the Ittner range, for the Ittner range embraces the Lorenz range. The defendant's contention, however, that anhydrous soap does not melt under 290 degrees C. is not in keeping with Ittner's representations during the prosecution of his patent. In an amendment thereto, he stated that the melting point of soap, when anhydrous, "is usually above 250 degrees C. and certainly never lower than 150 degrees C." According to Ittner's further disclosures "a temperature approximating 300 degrees C." would suffice, and he expressly stated that "the reaction described may be carried out at temperatures considerably under 300 degrees C." Moreover, these references are to temperatures at atmospheric pressure without any allowance for the reduced temperature required at a diminished air pressure.
The Examiner was warrnanted when he said that "it is not believed to be conclusive that the soap mass of Lorenz was solid rather than viscous or liquid." Nor was the effect of this to place the burden upon the proponents of Ittner who was senior to Lorenz with respect to the grant of patents. As the junior party, it was Lorenz's burden to establish priority of invention. But the burden of going forward with evidence in support of the affirmative defense interposed by the ...