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record so made by the several tribunals of the Patent Office and by the Court of Appeals of the District of Columbia, permission will not be granted thereafter to such party to take testimony upon the question of priority of invention. A submission of the case upon the stipulation after an opportunity was given to take testimony amounted to a waiver of the right to take testimony.

ON PETITION.

STEAM-TURBINE.

Messrs. Spear, Middleton, Donaldson & Spear for de Ferranti. Messrs. Harding & Harding for Lindmark.

MOORE, Commissioner:

This case is before me on a petition by Lindmark to vacate my decision rendered April 6, 1908, affirming the decision of the Examiner of Interferences denying Lindmark's petition that times be set for taking testimony in this case.

The record shows that preliminary statements were filed by both parties to this interference and that within twenty days after the approval of the preliminary statement Lindmark filed a motion to transmit an accompanying motion to dissolve the interference and also a motion for judgment of priority in his favor

upon the record dates of Lindmark and de Ferranti's applications and upon the allegations of de Ferranti in his preliminary statement.

At the hearing before the Examiner of Interferences on the motion for judgment the following stipulation was filed:

It is hereby stipulated and agreed by and between the respective parties to the above-entitled interference that the parties de Ferranti and Lindmark who are involved in this interference are the same parties, de Ferranti and Lindmark, who filed the applications for foreign patents specified in the oaths attached to their respective U. S. applications and in their preliminary statements, and that the de Ferranti and Lindmark named herein are the same de Ferranti and Lindmark named in interference No. 25,459.

This stipulation was accepted, and the Examiner of Interferences rendered a decision holding that neither De Ferranti nor Lindmark was entitled to the benefit of the filing dates of this foreign applications under the provisions of the act of March 3, 1903, and, inasmuch as Lindmark was the first to file an application in this country, awarded priority of invention to him. The decision of the Examiner of Interferences was affirmed by the Examiners-in-Chief, and their decision was, in turn, affirmed by the Commissioner. (C. D., 1907, 203; 129 O. G., 1610.) Upon appeal to the Court of Appeals of the District of Columbia the decision of the Commissioner was reversed, (post, 353; 134 O. G., 515,) the court holding that De Ferranti, who filed his application after the promulgation of the act of March 3,

1903, was entitled to the benefit of a foreign application which antedated Lindmark's filing date.

It is contended in behalf of Lindmark that the decision of the Examiner of Interferences was merely a decision upon a motion

for judgment on the record," involving only the question whether Lindmark or De Ferranti should prevail upon the facts appearing in the records of their respective applications.

This argument was presented in support of the former petition and was considered by me in the decision rendered April 6, 1908, in which it was held that the Commissioner had no authority to reopen a case for further testimony after a decision of the Court of Appeals of the District of Columbia on the question of priority of invention unless and until authorized by that court to do so.

Thereafter a petition was filed in the Court of Appeals of the District of Columbia praying—

that the Commissioner be instructed that the said decision of this court merely adjudged that your petitioner, the said Lindmark, is not entitled to judgment on the record, and is not a final judgment of priority in favor of de Ferranti

and, further, that the Commissioner be

instructed or authorized to fix times for the taking of testimony in this causeand that such other order, judgment, or decree be made as the condition of the case required.

The Court of Appeals in denying this petition said:

The issue in controversy between the above parties was decided by this court on appeal from a decision of the Commissioner of Patents on February 11, 1908. (Ante, 234; 134 O. G., 515.) Priority had been awarded to Lindmark in all the tribunals of the Patent Office on his motion for judgment on the record. On appeal, the decision of the Commissioner was reversed by this court, and the proceedings certified to the Patent Office, as by law required. Lindmark now comes here by an original petition, after the judgment of reversal has become final, asking us to instruct the Commissioner of Patents to allow him to proceed with the taking of testimony in order to establish his right to priority over de Ferranti. It is insisted that the judgment of reversal was not a final judgment awarding priority to de Ferranti; but a mere denial of the motion of Lindmark for judgment on the record, and that the case should be now opened and the parties allowed to proceed with the taking of testimony. This court has jurisdiction of appeals from the Commissioner of Patents in certain matters defined by statute, but it has no original jurisdiction to direct and supervise the administration of the affairs of the Patent Office. The allowance of this petition, and the issuance of an order, such as prayed for therein, would be an assumption of power which this court does not possess. The petition is denied, and it is so ordered. (Post 546; 137 O. G., 733.)

It appears from the text of the decision of the court of appeals upon the petition that the appeal was treated as an appeal from a final decision of the Commissioner on the question of priority of invention, and the proceedings of that court were "certified to the Patent Office as by law required."

The record of the case clearly warranted such consideration. It is to be noted that judgment was not rendered merely upon the application dates of the respective parties in this country, but upon consideration of the filing dates of their foreign applications also. The mere allegation by a party in his application for patent that he has filed an application for a patent for the same invention in a foreign country or the inclusion of such an allegation in his preliminary statement does not constitute proof of the fact alleged, and it is incumbent upon such party when involved in an interference proceeding, if he would rely upon his alleged foreign application, to establish by competent evidence that he is the party who filed the foreign application, and he also must show that the invention set forth in the foreign application is the same as that covered by his application in this country. (Rousseau v. Brown, C. D., 1903, 587; 104 O. G., 1120; Lauder v. Crowell et al., C. D., 1879, 177; 16 O. G., 405; ex parte Pauling, C. D., 1905, 131; 115 O. G., 1848.) In the present case the stipulation above quoted which was filed by the parties was accepted in lieu of testimony in respect to these facts, and the decision of the Examiner of Interferences and of the appellate tribunals was rendered upon this agreed statement of facts.

The record shows that opportunity was given to the parties to take testimony; but Lindmark, by taking the steps above set forth, clearly waived the right to take testimony and relied upon his stipulated evidence. This fact is apparent from the following statement in the decision of the Commissioner in De Ferranti v. Lindmark, (C. D., 1907, 203; 129 O. G., 1610:)

The invention in issue relates to an improvement in steam-turbines.

No testimony was taken by either party; but the facts as stated in the decision of the Examiner of Interferences and stipulated or conceded by the parties are as follows:

Lindmark applied for a Swedish patent on the invention in issue on June 18, 1902, and for a German patent on November 5, 1902. He filed his application in this country on January 16, 1903, and was granted a patent on November 1, 1904.

De Ferranti applied for a patent in Great Britain on November 11, 1902, and filed his application in this country on October 31, 1903.

Furthermore, the Court of Appeals of the District of Columbia while stating in their decision De Ferranti v. Lindmark (post, 353; 134 O. G., 515) that the case was before them on appeal from the decision of the Commissioner of Patents awarding priority of invention to appellee on a "motion for judgment on the record" stated:

It appears that both parties to this controversy are foreign inventors. No evidence was taken in the Patent Office. Both parties rely on their respective dates of filing their applications, either here or abroad

and, accepting the dates of the foreign applications as proven, rendered the decision above referred to.

Up to the present time the court of appeals has entertained appeals in interference cases only from the final decisions of the Commissioner upon the question of priority of invention. (Allen, Commissioner of Patents, v. The United States of America ex rel. Lowry and Planters Compress Co., C. D., 1905, 643; 116 O. G., 2253; 26 App. D. C., 8.) In the present case the decision holding that Lindmark was the first inventor was undoubtedly a final decision upon the question of priority. It is obvious from the facts above stated that this decision was rendered after the consideration of facts admitted by the stipulation, concerning which proof would have been required in the absence of such stipulation and not on the bare record of the applications for patent in this country. This stipulation, in my opinion, related to an agreed state of facts offered, at the instance of Lindmark, in the place of testimony.

His failure to present his entire case in the first instance can be charged to no one's fault but his own. It is well settled that the Office will not pass upon questions of priority in a piecemeal manner. It is incumbent upon a party to present the entire case in the first instance. As stated in the case of Roberts v. Bachelle, (C. D., 1902, 415; 101 O. G., 1831:)

After a case has gone to final hearing it is an injustice to the Office, as well as to the victorious party, to reopen the case and give it entirely new consideration merely because the defeated party has failed to realize that facts which were at all times within his possession were material to a determination of the case. (Estes v. Gause, C. D., 1899, 164; 88 O. G., 1336; McCallum v. Bremer, C. D., 1900, 186; 93 O. G., 1917.)

The decisions cited by petitioner in support of his contention are not believed to be in point. In none of the cases cited were decisions rendered upon an agreed state of facts, but rather upon the records of the cases or the pleadings themselves. After careful consideration of the question I find no reason to vacate my former decision denying Lindmark's request that times for taking testimony be set in this

case.

The petition is denied.

PICKARD . ASHTON AND CURTIS.

Decided October 30, 1908.

137 O. G., 732.

INTERFERENCE-PRIORITY-QUESTION OF JOINT INVENTORSHIP.

The question of the joint inventorship of one of the parties to an interference is not one that can be considered in an interference proceeding and a motion to take testimony on the question will not be granted.

ON PETITION.

OSCILLATING RECEIVER.

Mr. Philip Farnsworth and Messrs. Meyers, Cushman & Rea for Pickard.

Mr. J. Odell Fowler for Ashton and Curtis.

BILLINGS, Acting Commissioner:

This case comes up on a petition by Pickard that the Commissioner exercise his supervisory authority and grant a motion "to authorize, or procure authorization for, the oral deposition of the joint applicants Ashton and Curtis relative to the invention of the interference by them or either of them."

This motion was brought before the Examiner of Interferences and denied by him on the ground that he had no authority to grant it. The purpose of this motion is to require Ashton and Curtis to show by testimony that they are in fact joint inventors of the invention in issue. No reason whatever appears for the granting of such a motion. Pickard's rights could in no way be affected by establishing the fact that the invention was in reality the invention of Ashton alone and not that of Ashton and Curtis. Under the rulings of the Court of Appeals of the District of Columbia in Foster v. Antisdel (C. D., 1899, 413; 88 O. G., 1527; 14 App. D. C., 552) and Prindle v. Brown (C. D., 1904, 680; 112 O. G., 957; 24 App. D. C., 114) this question could not be considered in the interference. If it were established that Ashton alone were the inventor, this of itself would afford no ground whatever for the award of priority to Pickard. In any event it would be necessary for Pickard to establish priority of invention on his part to warrant a decision in his favor.

The petition is denied.

PEERLESS RUBBER MANUFACTURING COMPANY v. GORHAM RUBBER

COMPANY.

Decided October 26, 1908.

137 O. G., 733.

TRADE-MARKS OPPOSITION-APPEAL FROM DECISION OF EXAMINER OF INTER

FERENCES.

An appeal will not be allowed from a decision of the Examiner of Interferences granting a motion to amend a notice of opposition nor from a decision denying a motion to dismiss a notice of opposition.

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