For it is just such questions that the administrative tribunal is preeminently qualified to solve. Even then, of course, the court is not absolved from the duty of examination; but, unless it be perfectly clear that the final expert administrative body, the court of appeals, erred, relief should not be granted under section 4915. On a careful consideration of the record, we hold that the sound construction of the application is not free from doubt. The varying conclusions by the several administrative officials would alone raise this doubt; but, far from finding the decree of the court of appeals without support in the record, if it were essential for us to determine the question as an original proposition, we should agree with the conclusions therein reached for the reasons given in the opinion rendered by that court.

(3) But even a contrary conclusion on the construction of appellant Gold's patent application would not necessarily result in a decree in favor of appellee. For in the interference proceedings, if it be finally held that one of two applicants covers, but the other does not cover, the invention in his application, the former must be successful, not necessarily because of any inherent right, but because of the complete absence of right in the losing party. In other words, the issue in the interference proceedings is priority as between the inventions covered by the two applications; if one fails to cover it, the other is necessarily successful. But, as the Commissioner of Patents pointed out, the decision on the interference issue does not determine the right to the patent. In the further ex parte consideration of the successful party's application, actual priority of invention must be established. An earlier reduction to practice, whether by a third person or by the unsuccessful contestant in the interference case, will prevent the grant of a patent. And so, too, in a case under section 4915; the issue is not limited to priority of the invention covered by the two applications. To obtain a decree for a patent, the complainant must fully establish his right thereto.

(4) But in this case the Court of Appeals of the District of Columbia has found that appellant Gold made and publicly exhibited a device embodying the invention a year before appellee had reduced his invention to practice by. filing his application and that appellee saw and examined the device at that time; in other words, that irrespective of the application, appellant Gold, and not appellee, was the inventor of the device covered by claims 1 to 5. If this finding be correct, then appellee would under no circumstances be entitled to Letters Patent.

We deem it unnecessary to review the evidence; for while it is conflicting, that offered by appellee tending to support his claim of conception and communication to appellant Gold in 1892, and reduction to practice in 1901, or early in 1902, as well as his charge, both that

the device exhibited by appellant in June, 1902, was merely a subsequently abandoned experiment, and that it did not embody the essential feature of the invention, yet, in the light of appellant Gold's contradictory testimony on each of these points, we cannot hold that the court of appeals was clearly wrong in its conclusions or that they lack substantial support in the record. On the contrary, any conclusion other than that reached by the court of appeals, namely, that appellee's reduction to practice cannot be carried back of his filing date, and that appellant Gold fully embodied the invention in an operative device in June, 1902, and thereby reduced it to practice before appellee, even if the application of April, 1902, failed to disclose the invention of these claims, would be subject to the gravest doubt.

It follows, therefore, that the decree must be reversed, and the cause remanded, with directions to dismiss the bill.

[U. S. Court of Appeals.-Third Circuit.]

AMERICAN CASTING MACH. Co. v. PITTSBURGH COAL WASHER CO.

Decided November 13, 1916.

237 O. G., 621; 237 Fed. Rep., 590.

1. PATENTS-VALIDITY-APPARATUS FOR CASTING METAL.

The Scott patent, No. 788,334, for an apparatus for casting metal, Held void on the ground that the patentee had caused the invention to be patented in a foreign country more than seven months prior to his application for the United States patent.

2. SAME

RIGHT TO PATENT-PRIOR PATENTING IN FOREIGN COUNTRY-" CAUSED TO BE PATENTED."

While an application for a patent in the name of three persons as joint inventors was pending one of such persons, representing also the other two, caused the invention to be patented in Great Britain. Afterward the joint application in this country was abandoned, and more than seven months after the British application was filed one of the joint applicants filed an application for a patent for the same invention in his name as sole inventor. Held that the foreign patent was caused to be issued by such sole applicant within the meaning of Revised Statutes, section 4887, as amended by act of March 3, 1897, (c. 391, sec. 3; 29 Stat., 692 Comp. St., 1913, sec. 9431, note,) which was then in force and was a bar to the granting of a United States patent on such application.

3. SAME INVENTION-LINKS FOR CONVEYERS.

The McKennan and Helander patent, No. 806,700, for links for conveyers, Held void for lack of invention.

APPEAL from the District Court of the United States for the Western District of Pennsylvania; Charles P. Orr, Judge.

STATEMENT OF THE CASE.

The following is the opinion of Orr, District Judge:

This patent suit originally involved three patents. Plaintiffs, prior to the trial, gave notice to the defendant that they would withdraw from consideration United States Patent No. 629,480, issued July 25, 1899, to E. A. Uehling and James W. Miller, for " casting and conveying apparatus." No objection was made by the defendant to the withdrawal of such a patent. While no amendment of the bill was made, the bill must be deemed to have been amended in accordance with the notice. It is also deemed to have been amended by striking out the name of the plaintiff Fannie S. Miller as administratrix. These amendments upon the eve of trial have scarcely tended to clarify the issues between the parties, because the pleadings are weighted by irrelevant averments. Moreover, the affidavits of the experts now contain many immaterial matters.

The suit as it now stands involves United States Patent No. 788,334, issued April 25, 1905, to James Scott, for " apparatus for casting metal" and United States Patent No. 806,700, issued December 5, 1905, to J. B. McKennan and A. H. Helander, for "links for conveyers." Both of said patents are owned by the plaintiffs.

The answer denies conjoint or other use by the defendant, denies notice by the plaintiffs to the public, and denies that the patentees either solely or jointly were the original inventors of the apparatus shown in the respective patents. It admits notice to the defendant by the plaintiffs of the latter's claim of title. It sets forth in detail as prior disclosures forty-three United States patents, seven British patents, and one German patent. By stipulation dated a month or more before the trial, but filed thereafter, it was agreed that the answer might be amended by the addition of five more prior patents and by adding averments that the Scott patent, No. 788,334, is void because the application therefor was not filed within seven months of the filing of the application for British Patent No. 3,880 of 1898, dated February 16, 1898, granted to James W. Miller, partly as communication through Edward A. Uehling and James Scott; that said Scott patent in suit, if valid when issued, expired with the limitation of said British patent, to wit, February 16, 1912; and that the acts charged in the bill occurred after said date, and after the alleged invention of the said patent in suit had become public property. By the stipulation it was further agreed that the application for British Patent No. 3,880 of 1898 was filed February 16, 1898, and was accepted May 20, 1898, and that the patent, in pursuance thereof, was sealed on August 2, 1898. It was further stipulated that said E. A. Uehling, James W. Miller, and James Scott, named in the several United States and British patents involved in this case, are the persons named in the patents here in suit, and further that the subject-matter of claims 2 and 5 of the Scott patent in suit is disclosed in the application for United States Letters Patent of said Uehling, Miller, and Scott filed December 7, 1897, Serial No. €26,022, which application never matured into a patent. The answer was never amended, but is deemed to have been, because the trial proceeded as if such amendment had been made.

The departures by the solicitors of both parties from the rule that the allegata and probata should agree in material matters has created a condition which may confuse a court in which the case was not originally brought. For that reason especially this court calls attention to them, and as well also that the members of the bar may be reminded of the rule mentioned. The stipulation contains a provision that proof of the facts referred to therein is waived. The stipulation was offered at the trial, but the facts were not, except infer

entially, through the medium of the writing in which they are contained. The stipulation, and not the official notes of the stenographer, must be examined to find them.

Now, giving attention to the two patents in suit, it is to be first observed that they are by no means pioneer patents. They relate to improvements in apparatus for casting and conveying metals. But the apparatus described therein (for the improvements are capable of conjoint use) is chiefly used in the casting and handling of pig-iron.

It is sufficient to refer to an expired United States patent of the above-named E. A. Uehling, No. 548,146, under date of October 15, 1895, where the disadvantages of casting pigs in the open sand molds upon the floor in front of the blast-furnace is pointed out, and where the advantages of pouring the molten metal into molds of a uniform size, which are presented by mechanical operation, immediately under the metal as it flows from the furnace or ladle, and which carry the pigs formed therein to a proper dumping end, where they are automatically delivered into a suitable conveyance, are set forth. That patent of Uehling seems to be so broad in its scope that the subsequent patents referred to in this record, and relating to the same subject-matter, must be limited to the actual construction shown therein, if any invention be found.

The application for the Scott patent, No. 788,334, was filed August 31, 1899. More than seven months prior to that time, the application for the British patent, No. 3,880 of 1898, was filed. As appears from a copy of said English patent, James Willard Miller, as the applicant, states that the specifications are "partly as communication from Edward A. Uehling * * * and James Scott of Pittsburgh, * * U. S. A." By section 3 of the act of Congress of 1897 (29 Stats. at L., p. 692, c. 391) section 4887 of the Revised Statutes was amended so as to read as follows:

*

"SEC. 4887. No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than seven months prior to the filing of the application in this country, in which case no patent shall be granted in this country,"

By section 8 of the said act it is provided that such section of the Revised Statutes as amended should not apply to any patent granted prior to January 1, 1898, nor to any application filed prior to said date, nor to any patent granted on such application. If, therefore, James Scott had made an invention in accordance with the application for the patent in suit, and had the same first patented or caused to be patented by himself or his legal representatives or assigns more than seven months prior to the date of such application, he had no right to receive the patent in suit for such invention. It is necessary, therefore, to determine whether James Scott authorized the application for the British patent. If he did, then the patent procured upon the application of Mr. Miller can fairly be considered to have been Mr. Scott's act within the meaning of the said act of Congress.

The subject-matter of the Scott patent in suit was disclosed in the English patent. Without giving much weight to the fact that Mr. Scott is named in the English patent, we must conclude from the evidence that Mr. Scott authorized and approved the application therefor. There is in evidence a certified copy of an application made by said Uehling, Miller, and Scott to the United States for a patent for “apparatus for casting metal.” That application was filed December 7, 1897, and is No. 661,022. The seventeen drawings which accom

panied that application appear to be, in all respects, like the seventeen drawings which became part of said British patent. On the 10th of November, 1897, said Scott, as well as each of the others, made an affidavit in support of that application that the three named were joint inventors. That the application for the United States patent never ripened into a patent and seems to have been abandoned is perhaps immaterial here.

Mr. Scott, who at that time was in the employ of the Carnegie Steel Company, testified in this case upon cross-examination as follows:

66

'Q. I understand from you that Mr. Uehling established an office in Pittsburgh, and had a draftsman, and made drawings in connection with these castings machines. Is that correct?

"A. Yes.

"Q. Who was the draftsman?

"A. If you will kindly ask Mr. White, he will give you the draftsman's name Prochasky, I think.

"Q. Mr. Miller worked with Mr. Uehling?

"A. Oh, yes, yes. He was supposed to be the salesman. He was the fellow that went to Europe and tried to introduce it in Europe."

Again:

"Q. Will you please state what the circumstances were which led you to make that joint application with these three men?

"A. On account of the company saying they were to have access to all the improvements we were making on the machine, naturally; but I can't remember of going directly and swearing and giving them that, I can't remember.

66

'Q. Then you can't remember as to whether or not you did make the application for patents with them?

"A. I don't remember that.

"Q. Do you remember who was the attorney that drew up that application? "A. I do not know, sir; I do not know.

"Q. Do you know why the application for patent was never granted?

"A. I really don't know anything about it. It never gave me any concern. My concern was to make the thing good, and to get it up the best that could be. The patent was a secondary consideration."

Again:

"Q. Well, now, did you ever talk with Mr. Uehling and Mr. Miller about Mr. Miller going to Europe to introduce the invention?

"A. I suppose that just came up. We would have to do something about it, naturally. I suppose they may have had a talk with me about going to Europe. I knew Miller did go to Europe to introduce the patents, but I don't remember that he was going to take out any patents. I am not sure about that. I don't know whether he did or not. I never spoke to Miller but once afterward, after he came back from Europe.

"Q. I am speaking about before he went to Europe.

You and Miller and Uehling had talked together about his going to Europe, and about the introducing of the invention over there in Europe, had you? "A. I may have. I wouldn't deny that, but I can't remember. We were friendly enough while the thing was being put through, and no doubt exchanged ideas."

It is a proper inference from all that testimony that Mr. Scott knew and approved of the introduction of the subject-matter of the patent in countries outside of the United States, of course, including England. It must be inferred that he authorized the protection of such rights as he might have in the invention in the best way, and it must be inferred that he knew that the best way