Ronning Machinery Co. v. Winsor (76 F.2d 392, 1935)

BLAND, Associate Judge.

Appellant has appealed to this court from the decision of the Board of Appeals of the United States Patent Office, affirming that of the Examiner of Interferences, in awarding priority of invention in nine counts, which were copied by the appellee, Wins.or, on July 27, 1929, from appellant’s patent, of which count 2 is illustrative and follows:

“2. The combination with a tractor, of a frame secured to and extending forwardly from the tractor, a wheeled support for the forward end of the frame, a grader blade adjustably carried by the frame rear-wardly of the support, an operator’s station, and controls extending from said wheeled support and from said grader blade to within reach of the operator at said station.”

The senior party, Ronning Machinery Company, which will, for brevity, be hereinafter referred to as Ronning, is involved upon an application for reissue of patent No. 1,706,256, issued March 19, 1929, upon an application filed March 12, 1921. The junior party’s application was filed April 7, 1923. The two applications involved were copending, and Winsor, being the junior party, was under the burden of establishing his priority by a preponderance of the evidence.

The interference relates to the structure of a grader designed for one-man operation, and consists of a combination of a tractor, with the front wheels omitted, and an attached framework extending along the sides of the tractor and connected to the rear thereof, which frame extends forward and is supported by steering wheels. Between the steering wheels and the tractor is suspended the grader blade. A means attached to the frame is provided for lowering, raising, and adjusting the blade. The action of the blade and the steering of the grader is controlled by one man who is stationed on a platform about midway between the front and the rear of the grader.

Ronning made no attempt to prove a date of conception and reduction to practice prior to March 12, 1921, and is restricted to that date for conception and reduction to practice.

Winsor claims conception in 1918, and offered considerable evidence in support thereof, but the facts of record chiefly relied upon by Winsor as showing his conception and reduction to practice occurred in the year 1919, when Winsor claims he reduced the invention to practice by building a grader and thoroughly testing it. The sufficiency of the proofs of reduction to practice as early as 1919 on the part of Win-sor is severely criticized here, as it was in other interferences and actions relating to the same general subject-matter.

Appellant argues two main questions here: First, that the record does not establish that Winsor conceived and reduced his invention to practice in 1919, and that he has not therefore shown that he was the first inventor in fact, and that his long delay in claiming the invention after his alleged reduction to practice is persuasive, under the well-settled rule, that what he accomplished amounted to nothing more than an abandoned experiment; second, that even if Winsor did complete his invention in 1919, he is estopped from claiming the same in this interference. The estoppel is grounded upon three different theories: (a) That Winsor conceded priority of the subject-matter of these counts in an interference proceeding in Canada; (b) that Winsor delayed too long before claiming the invention, knowing at the time that Ronning claimed the invention and that Winsor’s conduct, hereinafter discussed, misled Ron-nmg to his great injury; (c) that Winsor failed to copy the claims of Ronning’s patent, No. 1,658,354, within two years of its issue date.

We will first consider the facts of record relating to Winsor’s conception and re-, duction to practice. The record is voluminous, and the Examiner of Interferences and the Board have discussed it in great detail, and, in view of the fact that we agree with the Examiner of Interferences and the Board in their understanding of what the evidence shows and the effect to be given it, it will not be necessary for us to comment extensively on certain unimportant features of the same.

Winsor testified that he was a mechanic with considerable experience in working on automobiles, motortrucks, tractors, and internal combustion engines; that he had been interested in one-man control, and nad applied the same to a passenger boat which he operated on Walloon Lake; that during a part of the years 1917 and 1918 he was in partnership with a party by the name of MacLean in Detroit, which partnership was dissolved in February, 1918; that he then went to Walloon Lake to cut and store ice; that in January, 1918, he made a drawing (Winsor Exhibit C) and explained the same to MacLean. This drawing discloses the structure involved in the counts at bar. Winsor stated that he explained the one-man tractor grader and showed the drawing to witnesses Hewitt and Williams in February, 1918, and that he talked over the tractor grader with one Robnolte, who was manager of the Quinlan ranch or farm located near Pellston, Mich., and that Rob-nolte gave him permission to use the Cleveland farm tractor which Robnolte had bought through Winsor while Winsor was working for the Homer Sly Auto Company.

MacLean’s, Williams’, and Hewitt’s testimony corroborates Winsor as to the disclosure made to them in the spring of 1918. They testified that they saw the drawing (Winsor Exhibit C).

The tribunals below did not regard it as necessary to determine whether or not the evidence as to Winsor’s 1918 activities should be regarded as sufficient to prove conception, since they concluded that Win-sor’s proof of what he did in June, 1919, was satisfactory proof of conception and reduction to practice; that the happenings in the spring of 1918 might be regarded as throwing some light upon the June, 1919, events, and that all these alleged happenings occurred before March 12, 1921, which' was the date to which Ronning was restricted.

Winsor testified that in June, 1919, he was in the employ of the Homer Sly Auto Company, Petoskey, Mich., and that during that month he constructed a one-man tractor grader, the tractor of which he borrowed from Robnolte, the manager of the Quinlan ranch; that he used a four-wheeled horse-drawn road grader belonging to the township, and that one McDermott, a blacksmith in Petoskey, made some of the parts. Winsor states that Robnolte, Eldred, McDermott, and Williams, as well as other persons, saw the completed machine. Winsor’s Exhibit D is a drawing made subsequent to that date, but which, according to the witnesses, shows the kind of machine which was built at that time. Winsor states that he and Robnolte operated the tractor grader on a section line dirt highway adjacent the Quinlan ranch to clean up the ditches and round up the road. Win-sor states that the operation was a complete success. After being operated parts of three or four days, the structure was dismantled and the tractor returned to Rob-nolte and the grader to the township. Each night after operating the grader it was necessary to disassemble it in order that the tractor might be ready for use on the ranch.

Robnolte completely corroborates Win-sor, and we have observed no particular in which his testimony was in any way weakened. Robnolte testified that the tractor used had been bought through Winsor, and that Winsor agreed to service it for one year, and that during (he fall of 1918 Win-sor talked to him about a one-man power grader; that during the planting season in the spring of 1919 he loaned the tractor to Winsor. Robnolte describes in' detail the structure of the tractor grader, and states that he assisted in the assembly .of it, and identified the sketch, Exhibit .D, as looking “like substantially the same thing in all details” as the machine constructed.' He stated that he saw the machine operate several times on' the township road south of the buildings on the ranch, and that he considered it worked very good and “it- did all the jobs necessary in grading roads. It did wonderful work.”

Eldred testified that he had known Win-sor since 1912; that in the spring of 1918 Winsor talked to him about a one-man grader, and that he saw the drawing, Exhibit C, at that time;' that in the spring of 1919, while driving in Northern Michigan, he saw- Winsor driving a tractor grader" similar to that shown in Exhibit D; that he looked at it for from twenty minutes ,tó a half hour and saw it driven about twelve to-fifteen rods -.along the, side of the ditch"; and that it “brought.. up a nice furrow of-dirt.” ; , ... :

McDermott, the blacksmith, stated-'that he made the iron parts for-a one-máh' -tractor grader in -which the grader was to be pushed ahead of the tractor; that he fixed the date as of June 3, 1919, by the notation “repairing tractor” in his daybook under that date; that Winsor and Williams helped him; and that about July, 1919, at the Quin-lan farm, he saw, on a grader, the braces which he had made, but that he never saw the machine operate.

Williams testified that Winsor explained his one-man grader idea to him in the spring- of 1918 and showed him the sketch (Winsor’s Exhibit C), and that in the spring of 1919 he helped McDermott make the irons'at the blacksmith shop and later saw these irons forming part of the one-man grader, that Exhibit D shows the same machine that he saw on the Quinlan farm, but that he did not see the machine operated.

Robert D. Scott worked with Winsor for the Andrew Manufacturing Company in the latter part of May or the early part of June, 1921. Scott testified that while at a hotel in Milwaukee, during this period, Winsor drew sketches of his invention and explained it to him. The sketches were not, however, produced in evidence. Scott testified that the details of a blueprint showing a machine responding to the counts at bar, which blueprint he was handed while testifying, might not be the same, but that “the general design is identical.” The blueprint, however, bore the date of May 21, 1924.

For the purpose of rebutting Winsor’s proof as to his activities in 1919, Ronning introduced five witnesses: Frank L. Grace, Fred Grauel, John Grauel, William Sydow, and Verne Ritter.

Witnesses Grace and Ritter were employed' on the Quinlan farm in the year 1919. They testified that they traveled on the road between Quinlan’s Corners and Grauel’s Corners during the summer of 1919, arid that they did not see any grading ór ditching'on that road. They also stated that they did' not hear the tractor being op-érated., •

Fred Grauel arid John Grauel testified that in June'and July of Í919 they lived at GrauelV Corners 'about a mile from the Quinlan farm, that they traveled the township road -during that period, and that they did riot see any signs*