practice of the invention prior to Shepherd's date of March 19, 1934; also, that Abbott had failed to prove diligence in reducing the invention to practice, especially throughout the period from March 21, 1934 until May 29, 1934.
14. The evidence presented before this Court consists of the Patent Office Record with certain additional matter. So far as physical evidence is concerned, the sole addition to the Patent Office Record is an exhibit comprising some samples of sized rubber yarn said to have been newly discovered. To plaintiff Abbott and his assistant Burke, both of whom had testified in the Patent Office proceeding, gave further oral testimony before the Court and were cross-examined at length. One new witness (Burke's wife) testified by deposition in support of some of the early work claimed to have been done by Burke on Abbott's behalf, and an attorney testified that he made a novelty search for Abbott (long after Shepherd's date).
15. Attott had not reduced the invention to practice prior to Shepherd's date of March 19, 1934. He never made the fabric nor a sufficient amount of sized yarn to weave in fabric, nor tested it in weaving or knitting, although the facilities for doing all these things were readily available to him.
16. The plaintiffs' evidence fails to establish diligence, regardless of the purpose of the alleged activities. This is especially true of the period between March 21, 1934 and May 29, 1934, to which the new evidence was in part directed.
17. The testimony that many experiments were made for determining a satisfactory formula for the size was not convincing either as to the time when made or the need for them.
Conclusions of Law.
1. The Court has jurisdiction of the parties and of the cause of action.
2. The Shepherd U.S. application, Serial No. 15,340, filed April 8, 1935, which resulted in patent No. 2,182,996, was duly filed as a copending division of Shepherd's U.S. application, Serial No. 724,814, filed May 9, 1934, and under the provisions of the International Convention and the Revised Statutes, Section 4887, 35 U.S.C.A. § 32, said application, Serial No. 15,340, was entitled to the effective date of March 19, 1934, as based on the Shepherd British application of the latter date.
3. The plaintiffs have failed to prove that Abbott was the prior inventor of the subject matter of any of claims 5 to 9 of the Shepherd patent No. 2,182,996 and that Abbott or his assignee is entitled to a patent for that subject matter.
4. The plaintiffs have failed to sustain the burden of proving by evidence which in character and amount carries thorough conviction, that the Board of Appeals erred in holding Shepherd to be the prior inventor and entitled to a patent for the invention in issue.
5. A final decree should be entered dismissing the complaint for want of equity, with costs to the defendants to be taxed.
So far as any question of reduction to practice of the invention involved in this case is concerned, I am satisfied that Abbott had not reduced it to practice before March 19, 1934. He had never made the fabric nor a sufficient amount of sized yarn to weave a fabric, nor tested it in weaving or knitting.
The evidence of plaintiff as to diligence is largely based upon memory; the documentary evidence consisting in part of memoranda and letters which are connected by oral testimony with the facts in issue. When it is borne in mind that the plaintiff Abbott had had experience in obtaining patents and his employee Burke was a research chemist, it is difficult to understand why more accurate entries were not made showing the progress of the work. I am not satisfied that plaintiffs have maintained the burden of proof either of reduction to practice or of diligence. As to the latter this is especially true of the period between March 21, 1934 and May 29, 1934. I think, too, that suspicion always attaches to testimony introducing memoranda which it is claimed were not discovered until after a former hearing.
I think that the plaintiffs have failed to sustain the allegations of the complaint, and that it should be dismissed with costs.
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