Winkelmann v. Calvert (129 F.2d 536, 1942)

BLAND, Associate Judge.

This is a United States Patent Office interference proceeding relating to an invention of a rubber product and the method of making the same, the issue being comprised in twenty-five counts, of which twenty-one are method counts and four are article counts, and involves certain Winkelmann patents, from which all the counts are taken, and an application of Calvert, Serial No. 133,172, filed March 26, 1937.

Counts 1 to 19, inclusive, are taken from a patent to Winkelmann, No. 2,046,986, issued July 7, 1936, on an application filed March 18, 1935. Counts 20 to 22, inclusive, are taken from a patent to Winkelmann, No. 2,075,251, issued March 30, 1937, on an application filed May 11, 1936, and counts 23 to 25, inclusive, are taken from a patent to Winkelmann, No. 2,075,-254, issued March 30, 1937, on an application filed May 20, 1935.

The decision of the Board of Appeals and the decision of the Examiner of Interferences resulted in what is termed “split decisions,” i. e., priority of invention in counts 1 to 7, inclusive, and 13 to 25, inclusive, was awarded to Calvert, and priority of invention as to counts 8 to 12, inclusive, was awarded to Winkelmann. Winkelmann appealed to this court from that part of the board’s decision which awarded counts 1 to 7, inclusive, and 13 to 25, inclusive, to Calvert; and Calvert appealed as to that part of the decision awarding priority of invention in counts 8 to 12, inclusive, to Winkelmann.

The invention relates to the processing (such as milling, molding and calendering) of rubber hydrochloride. Rubber hydrochloride was old before either of the parties hereto began their work relied upon here. The invention is more particularly directed to the use of certain stabilizers which prevent decomposition of the rubber hydrochloride at elevated temperatures, which thus permits the formation of products from this material by the steps of milling, calendering and molding (which steps are familiar to the rubber industry), without the defects which have heretofore been observed in the prior art attempts' to use such rubber hydrochloride for such purposes. The processing is done in the presence of certain basic substances. Magnesium oxide is a good example of such a basic substance. The outstanding feature of the involved invention is that if certain basic substances are used in processing rubber hydrochloride, the product remains stable and no hydrochloric acid is thrown off. Certain minor features relating to the invention, such as the use of sulfur, which have been regarded as of importance by the tribunals below and the parties, will be referred to more particularly hereinafter.

On account of the several issues raised which require discussion here, we think the counts may be divided into three classes. The first class consists of counts 1 to 7, inclusive, and 13 to 19, inclusive, and relates, generally, to milling rubber hydrochloride with a basic substance which retards the heat disintegration or decomposition of the rubber hydrochloride. Some of the counts name specific basic substances, such as magnesium oxide, calcium oxide, hexamethylene tetramine, and the like. Of this group, count 1 is regarded by us as illustrative. It follows: “1. The method of making a homogeneous thermoplastic composition adapted for molding, calendering and the like, which comprises milling a halogen containing rubber derivative with a basic substance of such character and in such amount as to retard Theat disintegration of the halogen containing rubber derivative.”

The second group consists of counts 20 to 25, inclusive, and relates generally to the use of sulfur with rubber hydrochloride or other rubber hydrohalide. Count 21 is illustrative of this group and reads: “21. The method which comprises milling a rubber hydrohalide with elemental sulfur.”

The third group comprises counts 8 to 12, inclusive, which have to do with calendering into thin sheets the aforesaid mixture of rubber hydrochloride and a basic substance. Count 8 is illustrative of this group and follows: “8. The method of making a thin sheet, suitable for wrapping purposes which comprises callendering into 'thin sheet form a mixture of a halogen containing rubber derivative and a basic substance of such character and in such amount as to retard heat disintegration of the rubber hydrochloride.”

As is shown above, Calvert’s application was not filed until after the issuance of the patent from which counts 1 to 19 were copied. Counts 20 to 25, inclusive, are from the two patents which issued after the filing of Calvert’s application. The Examiner of Interferences stated that as to the counts copied from the first-named patent, the burden was upon Calvert to prove priority beyond a reasonable doubt and that as to the counts which originated in the latter two patents, issuing subsequently to the filing of Calvert’s application, Calvert was only under the burden of proving his case by a preponderance of the evidence. The board made no distinction in this respect, and in view of our conclusion it is not necessary for us to do so. The last statement is made here by reason of the contention of Winkelmann that he had disclosed, but not claimed, the subject matter of counts 20 to 25, inclusive, (the “sulfur” counts) in the patent which issued prior to Calvert’s filing date.

As we view it, the case is primarily one of originality. Both parties took testimony at great length. Calvert attempted to prove that he had reduced to practice the invention by his work beginning in 1931 and continuing to 1934. He also contended that he had disclosed the subject matter of certain of the counts in an earlier-filed application, Serial No. 682,116 (filed July 25, 1933) which was copending with his instant application.

The Examiner of Interferences, at great length, carefully went into this testimony and pointed out lack of corroboration and other defects of the proof and held that the party Calvert had not proved a reduction to practice at any time prior to the filing of his application, but held that with the exception of counts 8 to 12 he had established a conception date prior to any date to which Winkelmann was entitled, and had disclosed the subject matter surreptitiously to Winkelmann’s assignee, or its predecessors.

The Board of Appeals agreed with the examiner upon all of said holdings but found it unnecessary to repeat in its decision all the evidence and reasons stated by the examiner. We (like the board) think that no useful purpose would be served by a recapitulation of what the Examiner of Interferences has so clearly and fully stated in his decision. We agree that the exhibits and testimony presented by Calvert show that he had a conception of all the subject matter of all the counts in which he was awarded priority before any inventive date to which Winkelmann is entitled, and in addition we are of the opinion that he has satisfactorily shown sufficient knowledge of the controverted subject matter in counts 8 to 12, inclusive, as to enable him to have communicated the subject matter of such counts to Winkelmann or his parties in interest. This latter holding on our part will be more particularly referred to hereinafter.

The facts relating to originality are somewhat involved. They have been gone into by the Examiner of Interferences in great detail. The hoard has referred to the more important ones, and we will confine ourselves to a condensed statement of the evidence on the subject of originality, and will omit many circumstances, and facts stated by the witnesses, which may have some bearing on the issue but are not of sufficient importance to' require detailing here.

Calvert, the junior party, was conducting research and in charge of part of the research department of the Goodyear Tire & Rubber Company at Akron, Ohio, as a full-time employee. ' Calvert’s application is assigned to the Wingfoot Corporation, which is an affiliate of the Goodyear Tire & Rubber Company. While working as rubber research chemist for the Goodyear Tire & Rubber Company, he, in 1931, first began working with rubber hydrochloride, which is a combination of rubber and hydrochloric acid; and during that time he had become interested in the development of a rubber hydrochloride film known as Pliofilm, which was developed and put on the market by the Goodyear company. The process was patented and involved spraying or casting the rubber hydrochloride so as to form a sheet. He continued to work in the Goodyear employ until March 1, 1935, when he became the full-time employee of the Marbon Corporation (formerly called the Marbo Products Company), the predecessor of which corporation was the Marsene Corporation. In the latter part of 1933, without the knowledge of the Goodyear company, Calvert accepted part-time employment with the Marsene Corporation. He claims that he was employed as a consultant to work on protein films. During the continuance of his part-time employment with the Marsene Corporation, Calvert was concerned with numerous experiments with rubber hydrochloride in the Goodyear laboratories. Calvert’s assignee, the Wingfoot Corporation, relies upon these experiments to establish conception and reduction to practice. It also relies principally upon evidence relating to these experiments, made while Calvert was in that employment, for the knowledge which Calvert had acquired and which, it now alleges, was the subject matter conveyed to Winkelmann or his assignee.

During the period while serving as a part-time employee of the Marsene Corporation, and ostensibly as a full-time employee of Goodyear, Calvert kept in close touch with the Marsene Corporation and certain, of its officers and employees. He had a number of conversations with its officers and employees and much correspondence passed between them, some of which is definitely shown to be closely related to the invention here at bar. Apparently from the evidence, Calvert originally was somewhat in doubt as to just who was his part-time employer. He appears to have been retained as a consultant by Mr. Borg or Mr. Williams, who were officials of the Marsene Corporation at the time. Winkelmann became an employee of the Marbon Corporation about the time it was formed, November 1, 1934. Mr. Borg of Borg-Warner Corporation was president of the Marsene Corporation.

The Marsene Corporation had, prior to the employment of Calvert, been interested in making a thin, transparent film from casein, and at the time of the employment of Calvert, or soon thereafter, became much interested in using rubber hydrochloride and was confronted with the problem of finding something that would prevent decomposition of the material and the throwing off of hydrochloric acid, which the composition contained, when it was subjected to heat. The Marsene Corporation was financed by Borg, who was a director and chairman of the board of the Borg-Warner Corporation. Borg owned Marsene and sold out to the Borg-Warner Corporation in the fall of 1934 when the Marbo Products Company was formed as a successor corporation. The Marbo Products Company later became the Marbon Corporation.

Borg was president and Floyd E. Williams was vice-president of the Marsene Corporation. Williams was in active charge of the company. Williams was a vice-president of the successor Marbo Products Company and Marbon Corporation. Bor^’ visited the Marsene plant at Gary, Indiana, about once a month and received reports from time to time in Chicago.

Williams began correspondence with, the Goodyear company, and he and a Dr. Gebauer, chief chemist of the Marsene Corporation, went to Akron to interview the Goodyear people. They were concerned’ with obtaining a waterproof film. During the negotiations which followed, Williams learned that Goodyear was working on a transparent film of rubber hydrochloride and sought to make arrangements with Goodyear to manufacture the rubber hydrochloride solution and sell it to the Marsene Corporation for use in making the films. The negotiations fell through, and it was during these negotiations that Williams made the acquaintance of Calvert, who, as before stated, was a research chemist working on rubber hydrochloride. In July 1933 the Marsene Corporation dismissed three of the chemists it was then employing, which is explained by Williams as the result of a desire not to go on with an extensive program on the old lines. None of the men who were let out had been working on rubber hydrochloride. Of the old employees, Dr. Gebauer and his assistant, Dr. Moffett, were the only ones who worked on rubber hydrochloride after the date when the other employees quit.

In July 1933 Calvert made a trip to the World’s Fair in Chicago. He stopped off at Gary to see Williams about getting a job with the Marsene Corporation and at that time talked with Mr. Borg and Mr. Williams and also Dr. Gebauer. It will be remembered that at that time the Marsene Corporation wanted to make transparent sheets from rubber and was interested in employing a chemist who had had experience in rubber compounds. Some time later, an agreement was entered into with Calvert for employment as a consultant, and Williams consulted Borg before employing Calvert. For about a year this employment with Marsene continued and was concealed from the Goodyear company, and extra precautions were taken to keep such employment, in secrecy. As before stated, Calvert did not know definitely who his part-time employer was. He received his payment from ■ Mr. Borg or Mr. Williams, and he stated that he did not know who officially was paying the money. Some of the checks that came to him at Akron came from Chicago. He received for his services about $1,200 on a monthly basis of $100. Payments were somewhat irregular. Williams stated that the books of the Marsene Corporation would not show the payments made to Calvert and that no record of them was kept.

Calvert admits that his contract with Goodyear obligated him to keep all matters which belonged to that company secret, which, it would seem, would have been known to Borg and Williams. Calvert admits that he told no one in the Goodyear company about his relations with the Marsene Corporation.

In the latter part of 1934, at Williams’ wired request, Calvert met Williams at Cleveland. There, Williams says, Calvert asked him for a full-time job. Calvert says that his trip to Cleveland was a month or two before he decided to go with Marbon. He then decided to leave Goodyear and notified Goodyear a month before he left them. It would seem that this trip to Cleveland was around the latter part of the year —probably December 1934, which is the date of the last payment which Williams made to him. There are other circumstances which might be related as throwing light upon the relationship between Calvert and his said part-time employer and the purposes of that employment, but they need not be stated here.

During the period of the year or more of Calvert’s surreptitious employment, he, according to his own admission, wrote some twenty reports or letters, mostly to Mr. Williams — one or two of them to Borg. They were written on the typewriter and for part of them carbons were made. Williams’ letters to Calvert were similarly typewritten. They were dictated to a stenographer and later transcribed.

Calvert and Williams were asked to produce the correspondence. They stated that all the correspondence and reports had been lost or destroyed, and that they could not find any of them. Winkelmann admitted that the Calvert correspondence was in the files of the Marbon Corporation in April 1935, at which time he stated that he went through it. Winkelmann left the Marbon Corporation in July 1937; and when he left, the said correspondence was still there. In response to a subpoena, Mr. Keck, secretary of the Marbon Corporation, stated that the Calvert correspondence file could not be found. From this testimony it appears that the Calvert-Williams correspondence disappeared after the present interference was declared (May 13, 1937).

Calvert’s assignee urges, in substance, that these facts show that Calvert and Williams, by reason of the disappearance of the correspondence, thought that they were in a position to completely hide their clandestine dealings and that their statements that Calvert’s dealings with Williams had nothing to do with rubber hydrochloride could not be disproved.

Certain of the original stenographic notebooks of the stenographer who wrote Williams’ letters to Calvert during the period in question had not been destroyed and were produced and proved, and the letters were transcribed. The letters dealt mainly with rubber hydrochloride and we think show that Calvert was keeping Williams informed about everything that Goodyear was doing in connection with rubber hydrochloride. One of the earliest of said letters to Calvert stated: “* * * we are now about ready to make a transparent sheet from rubber and naturally would be interested in adding a chemist to our organization who has had experience with rubber compounds.”

His letter suggested that Calvert should get in touch with Williams for a personal interview on July 15, (1933). Later in the month of July, Williams acknowledged a letter from Calvert written on the 25th of July and stating that he was taking up with Mr. Borg immediately Calvert’s employment, and that he, Williams, hoped to be in Akron within the next ten days and “will bring with me a contract as per your suggestion for execution.” The contract is among the lost papers. Much of interest could be detailed concerning said letters,