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Defendant's charge that plaintiff abandoned and/or forfeited his right to a patent because:

After plaintiff filed, and while the application was pending in the Patent Office, plaintiff further unduly delayed issuance of a patent on the invention in suit *

will be discussed hereinbelow.

However, for the moment, appears only necessary to emphasize that the last-men

tioned cases do not involve the question of whether a "mere delay" by an inventor between the time that he reduces his invention to practice and files for a patent is a sufficient basis for a finding that he has abandoned his invention or forfeited his right to a patent.

In sum, after reviewing the cases cited, both pro and con, involving abandonment, it must be repeated that defendant has not shown, by clear and convincing evidence, that plaintiff abandoned his invention within the meaning of 35 U.S.C. §102(c).

Moreover, assuming that forfeiture is a viable doctrine that can be used as a defense to a patent infringement charge, none of the cases cited indicate that it has been applied to a situation which involves pure and simple delay - regardless of the length or duration of the delay — between the time that an inventor reduces his invention to practice and the time that he files for a patent application.

To the contrary, a great number of cases involving both applicants before the Patent Office or patentees in patent infringement actions have recognized the principle that mere delay is not per se bad. This principle was announced in terms which are as accurate and correct today as they were in 1878 when the Supreme Court stated in Bates v. Coe, 98 U.S. 31, 46 (1878):

Inventors may, if they can, keep their invention secret; and if they do for any length of time, they do not forfeit their right to apply for a patent, unless another in the mean time has made the invention, and secured by patent the exclusive right to make, use, and vend the patented improvement. Within that rule and subject to that condition, inventors may delay to apply for a patent;

Similarly, as recently as 1974, when discussing the interplay between trade secrets and patents, the Supreme Court in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 490-91 (1974), 181 USPQ 673, 681-82,

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again recognized that the keeping of an invention secret was not violative of any patent law by the following language:

Even were an inventor to keep his discovery completely to himself, something that neither the patent nor trade secret laws forbid,**

Also, Adelman, in Trade Secrets and Federal Pre-emption The Aftermath of Sears and Compco, Vol. XLIX, No. 10, JPOS (Oct. 1967), at 727, states:

The time periods for which trade secret protection is available are significant for distinguishing between pre-emption and limited Section 101 secrets and pre-emption and potentially perpetual Sec. 101 secrets. Trade secret protection may be available as soon as the secret is developed, but patent protection is of necessity preceded by the filing of a patent application, and a period of some years of prosecution in the Patent Office. Furthermore, the patent laws do not require that an application be filed within a reasonable time after the completion (actual reduction to practice] of the subject invention. Instead, a patent application may be filed on a secret invention at any time as long as it is filed within a year after the invention has been placed in commercial use. [Footnotes omitted and emphasis added.]

A very good treatment of the subject, in a patent interference context (35 U.S.C. §102(g)),' is found in the case of Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974). The majority, at 1281, 180 USPQ at 391-392, noted:

First, the length of time from reduction to practice to filing of an application for a patent is not determinative. Woofter v. Carlson, supra; Schnick v. Fenn, 277 F.2d 935, 47 CCPA 1174, 125 USPQ 567 (1960). Mere delay, without more, is not

"§102. Conditions for patentability; novelty and loss of right to patent

"A person shall be entitled to a patent unless

"(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

83-362 0 - 81 - 14

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sufficient to establish suppression or concealment. Gallagher v. Smith, supra. However, the warning has been sounded that one who delays filing his application does so at the peril of a finding of suppression or concealment due to the circumstances surrounding the delay. Woofter v. Carlson, supra. See also Watson, Commissioner of Patents v. Allen, 103 U.S.App.D.C. 5, 254 F.2d 342, 117 USPQ 68 (1958); International Glass Co., Inc. v. United States, 408 F.2d 395, 187 Ct.Cl. 376, 161 USPQ 116 (1968). In his concurring opinion, Judge Giles Rich expands on the problems which can result by an inventor who delays in filing for a patent after reducing his invention to practice. After a review of a number of the early cases, Judge Rich states (at 1284, 180 USPQ at 393-394):

We also see in these early interferences that the concept of "diligence" was viewed as applying to two different periods: diligence in reducing the invention to practice and diligence in filing a patent application after a reduction to practice. It clearly appears to have been the rule that absence of the latter while a rival inventor industriously brought the invention to public attention through manufacture, or by proceeding with the filing of an application for patent, resulted in loss of the right to a patent by the first inventor unless he could show some good excuse for his inaction. In Mallett v. Cogger, 1879 C.D. 100 (Com'r. Pats.) we find the interesting concept that the second inventor "rescues the invention from oblivion and confers its benefits upon the public." Later, at 1285-87, 180 USPQ at 394-396, Judge Rich profoundly observes:

In delving into these old cases it becomes apparent that it is not the time elapsed that is the controlling factor but the total conduct of the first inventor. While only 27 months is involved in the case at bar it is clear that in the nineteenth century the Patent Office thought nothing of depriving the first inventor of his right to a patent as against a more diligent second inventor when the period involved from reduction to practice to filing was two years or less. It all depended on what the first inventor was doing during the period of delay. It is clear that it was regarded as a question of "diligence. ” * * * “What is involved is a policy question as to which of two rival inventors has the greater right to a patent."

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And again, "it is a rule according to which the patent right goes to the most deserving.

I cannot agree with the board that the question in this case is whether Young "forfeited his right to a patent. (My emphasis.) But for Dworkin's conflicting claim, Young forfeited nothing and would get a patent. All he forfeited, as I tried to point in Brokaw v. Vogel, supra, last paragraph of the opinion, was the right to rely on his prior actual reduction to practice in a priority dispute. Considering what Robinson said, quoted above, another, and perhaps better, way to have stated it would have been that Young, was estopped by his conduct to rely on his reduction to practice in a priority dispute.

The issue is, therefore, not forfeiture or estoppel or anything other than whether Young suppressed or concealed, since no question of abandonment has been raised. The only reason we have to look to prior cases is to gain an understanding of the meaning of "suppressed and "cc.cealed," which concepts have been codified in §102(g). Case law "doctrines' are no more; the question is now simply one of statutory construction.

Finally, and significantly, it is possible to distinguish all of the cases cited by the parties from the case at bar by noting that in each of the cited cases the invention was in the public domain at the time that the first inventor filed his application for a patent. Specifically, the invention was in the public domain because of acts by the inventor which are now proscribed by 35 U.S.C. §102 or because during the inventor's delay, others working independently made the same or substantially the same invention.

Levinson, supra, for example, is a case where the invention was reduced to practice by plaintiff in 1957 and an application filed in the Patent Office on September 23, 1963. However, as noted hereinabove, defendant, by at least December 4, 1962, was attempting to sell the same invention. Accordingly, since the Levinson invention had already come into the public domain by the acts of defendant, the primary purpose for the granting of a patent no longer existed.

However, in the case at bar, at least as can best be determined from the record at trial, defendant has not demonstrated that Moore's invention was already in the public

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domain at the time that he filed for a patent in 1955.

While defendant has introduced a number of alleged prior art references, they at best show that others were working in the same general field during the years 1942-55. None of the references show that the invention covered by the Moore patent was made by another during the 1942-55 period.

Based on the record before me, I must conclude that the public would still benefit by the public disclosure which would result from Moore's 1955 filing for a patent, notwithstanding the many years which had passed from his 1942 reduction to practice. This being the case, it is in keeping with the pronouncements of the Supreme Court, and as well, with U.S. Const. art. I, §8, cl. 8, that a patent be granted to plaintiff for the disclosure of his invention to the public.

In sum, defendant has not demonstrated that plaintiff has either abandoned and/or forfeited his right to a patent by merely waiting from 1942 to 1955 to file for a pat

ent.

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grounds, and received an indication that his application contained allowable claims.

After the Patent Office indicated that the six claims in Serial No. 818,254 were allowable, Moore tried to increase his patent coverage by adding two claims directed to an embodiment using flowable rubber. The Patent Office refused to consider these claims. Moore, as a result, filed a continuation-in-part application that included all of the six allowed claims and added several more. The Patent Office not only refused to allow the new claims in this application, but, as well, rejected the six claims that had previously been allowed. Finally, Moore filed yet another continuation-in-part application, Serial No. 165,456, on January 10, 1962.

In Serial No. 165,456, the Patent Office allowed the six claims previously allowed in Serial No. 818,254, plus two additional claims. No claims to the flowable rubber embodiment were, however, allowed. This application issued as Patent No. 3,135,634.

Moore, however, persisted in his attempts to patent his flowable rubber embodiment

Alleged Acts by Plaintiff to Delay Issuance of and, therefore, before allowance of the Patent

Defendant also argues that plaintiff has abused certain Patent Office practices to deliberately keep his application pending for as long as possible and thus postponing the time when the public would be entitled to free use of his invention. In order to be able to evaluate defendant's charge, it is necessary to briefly, but thoroughly, review the facts and circumstances surrounding plaintiff's continuation-in-part applications.

[14] Moore filed a series of patent applications in connection with the invention at bar. On September 7, 1955, Moore filed application 533,028. Because of rejections on a number of different bases, no I claims were found allowable by the examiner. In fact, it was not until four continuation-in-part applications later, in application Serial No. 818,254, filed June 5, 1959, that Moore first overcame all the rejections based on new matter, insufficient disclosure,' prior art, as well as other

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3,135,634 patent and, specifically, on May 20, 1963, he filed continuation-in-part application 281,748. The continuation-inpart application 281,748 was directed to the flowable rubber embodiment as well as others. When the Patent Office refused to allow claims in this continuation-in-part, Moore filed still another continuation-inpart on December 30, 1964. This last-mentioned continuation-in-part application, No. 422,056, eventually was abandoned with no claims indicated as being patentable, and the chain of continuity terminated. In the meantime, on May 19, 1965, Moore filed an application to reissue his 3,135,634 patent. That application not only included the eight claims of his patent, but also added the additional claims.

Although Moore filed a large number of continuing applications, defendant has not shown or complained of a particular abuse by Moore as a result of the Patent Office proceedings. In fact, as the above analysis indicates, the first four continuations-inpart were necessary to place the first application into condition for allowance.

It is, of course, the burden of the patentee to show affirmatively that material that is asserted to be entitled to the earliest filing date is, in fact, com. mon to all links in the chain of continuity.

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[15] On October 21, 1960, Moore did file a continuation-in-part following an indication by the Patent Office of allowable claims in an effort to cover inventions which could have been claimed earlier. This, however, is not, by itself, antagonistic or contrary to the proper use of continuation-in-part applications. It should also be pointed out that the change in position by the Patent Office in continuation-in-part application 63,984 of October 21, 1960, with respect to claims that it had previously found to be allowable/patentable also added to the confusion. Finally, the filing of continuationin-part applications 281,748 and 422,056 should not enter into any consideration concerning alleged abuses by Moore of Patent Office proceedings since these applications are not in the chain of continuity leading to the reissue patent in suit.

The above analysis illustrates that the practices of Moore are clearly distinguishable from the purpose and practices in Ex parte Hull, 191 USPQ 157 (P.O. Bd. App. 1975), Vitamin Technologists, supra, or Wirebounds Patents Co., supra. Those cases all turned on clear abuses in the use of continuing applications to circumvent the benevolent aims of the patent laws, whereas Moore was using continuation-in-part applications in a normal manner.

In Wirebounds, supra, the inventor abused established Patent Office practice by filing a continuing application to obtain patent claims which the court held he could only obtain by way of a reissue application. This act by the inventor resulted in his having two patents with different expiration dates on a single invention. Moore, of course, did not attempt to extend his period of patent protection by obtaining more than one patent on the same invention.

In Vitamin Technologists, supra, the court felt that the inventor was attempting to hide the invention in the Patent Office through needless continuation-in-part applications. The applicant persisted in these practices even after a second inventor published the invention and purported to dedicate it to the public. In fact, it appears that rather than coming forward and publicly asserting his rights, the applicant remained silent and filed yet another continuationin-part application. Moore, on the other hand, was using continuation-in-part applications to correct deficient applications and otherwise overcome objections raised by the Patent Office examiner in the hope that a patent would ultimately issue.

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While it is true that two continuation-inpart applications were filed following an indication by the Patent Office that six claims were allowable in application 818,254, at least one of the continuation-in-part applications resulted from a change in position by the Patent Office with respect to the allowed claims. Moore filed the first of these continuations-in-part in order to add an additional embodiment. In the present case most of the continuation-in-part applications were filed in order for Mr. Moore to overcome rejections of the Patent Office examiner. The filing of the numerous continuations-in-part was, under the circumstances, necessary and was not the type of unconscionable conduct that would render the resulting patent invalid.

In Ex parte Hull, supra, the Patent Office in the very first application indicated that a number of the claims were patentable. Instead of allowing a patent to issue with the allowable claims, the inventor carried these claims over into a continuation-in-part application which added refinements to the original invention. When claims to these refinements were indicated allowable, the inventor again carried all the allowable claims over to another application which added still further refinements. In total, Hull filed six continuation-in-part applications. Hull admitted that he filed the chain of continuation-in-part applications to prevent others from seeing his invention and improving upon it.

The Patent Office Board of Appeals ruled, after questioning if a court would enforce such a patent, that Hull's actions did not bar his right to a patent, but did issue a warning that the filing of additional continuations-in-part by Hull, without permitting the present application to issue, might result in a rejection based on conduct that is contrary to the purpose of the Constitution and patent laws. To the contrary, Moore's continuation-in-part applications were not filed to cover up allowed claims, but in attempt to obtain allowed claims.

Thus, Moore's long string of continuing applications cannot be tied to any attempt to hide a patentable invention, but must be viewed as part of the arduous route undertaken by an applicant upon the filing of a patent application in the Patent Office. The court sees no conduct on Moore's part that

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436

Aloe Creme Laboratories, Inc. v. Matafleur, Inc.

would cause a loss of patent rights. In fact, if anything, the observation of the Supreme Court in the Overland Motor Co. case, supra, at 424-25, relating to a different complaint of abuse" by applicants before the Patent Office, quoted with approval the following language from United States v. American Bell Tel. Co., 167 U.S. 224 (1896):

Neither can a party pursuing a strictly legal remedy be adjudged in the wrong if he acts within the time allowed, and pursues the method prescribed by the statute. *** Under section 4886, Rev. Stat., an inventor has two years from the time his invention is disclosed to the public within which to make his application, and unless an abandonment is shown during that time he is entitled to a patent, and the patent runs as any other patent for seventeen years from its date. He cannot be deprived of this right by proof that if he had filed his application immediately after the invention the patent would have been issued two years earlier than it was, and the public therefore would have come into possession of the free use of the invention two years sooner. The statute has given this right, and no consideration of public benefit can take it from him. His right exists because Congress has declared that it should. A party

seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one. These are questions not of natural but of purely statutory right. Congress, instead of fixing seventeen had the power to fix thirty years as the life of a patent. No court can disregard any statutory provisions in respect to these matters on the ground that in its

"Counsel for the alleged infringer says, that even with the time limit for action on the part of the applicant thus reduced to one year, it becomes easily possible for an applicant, after an action by the Patent Office upon his application, to delay for the full period of a year his response to such action, and however promptly the Patent Office may again act, he can delay another full year before replying to it, and thus, by waiting a year after each official action. (1) keep his application pending so as to enable him to withhold, indefinitely, his invention from the public, (2) add claims to his application covering the independent intervening developments of others, and (3) postpone the time when the public may enjoy the free use of the invention all contrary to sound public policy."

194 USPQ

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10 "To assure a rapid initiation of the trial in chief in the event that plaintiff prevails on the separate trial, the motion is granted on the understanding that defendant agrees and stipulates that a trial on all remaining issues will commence within 90 days after the undersigned's decision in the separate trial, if adverse to defendant; and that defendant's rights to appeal will be held in abeyance until a decision is rendered on the entire case. In this way defendant will get its separate trial and plaintiff's position would be taken into consideration since defendant's right to appeal would be merged into its right to appeal from a decision on the entire case.

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