Stewart v. Thomas ( 1914 )

Mr. Justice Robb

delivered the opinion of the Court:

If the claim read “an insulating body capable of carrying within it a lamp-receiving terminal and capable of having attached wire terminals,” it could not reasonably be contended that the failure of Thomas to install those old elements in his model would have precluded a finding that such model amounted to a reduction to practice. We think the claim should be thus construed. That this view is the correct one is apparent from subsequent developments.

When Mr. Goodridge, who was the general superintendent of the Bryant Company, examined and tested this model, he informed Mr. Thomas that “while his device was perfectly satisfactory from a mechanical point of view, in operation,” it would be rather expensive to make, and he therefore advised Mr. Thomas, after he had finished other models which were then in the model room and. for which there was a great rush, to devise some way to cheapen the construction. In October of 1909, Mr. Seeley, assistant general superintendent of the Bryant Company, suggested a modification of the device of Mr. Thomas, and he and Mr. Thomas thereupon jointly made out another model card, and had made another model embodying the simplified construction. This model contains the screw shell and wire terminals, but the evidence does not show that a lamp and wires were actually attached to it. The Examiners in Chief and the Commissioner, however, accepted it as a reduction to practice. In their opinion the Examiners in Chief said: “The invention might well be regarded as one which, as disclosed in this exhibit, would require' no test to determine its practicability, but it is not necessary to so consider it, as we are of the opinion that all that would be required as a test, for such a device would be to clamp it in position and see that it would be properly held therein. It is not necessary to attach a lamp and wires and operate the lamp, for these features form no part of the invention, although included in the issue, and as the device did not differ in those particulars from the lamp sockets in use, their successful operation was a foregone conclusion.”

Because the modified device, therefore, contained the screw thread and wire terminals, the Examiners in Chief and the Commissioner were satisfied to accept it as a reduction to practice, even though the evidence did not show that a lamp and wires had been attached and the lamp operated. Their reason for this ruling was that the screw thread and wire terminals weré' old and their mode of operation certain. While we are fully satisfied with this reasoning, we thiuk it logically follows that the first device of Thomas amounted to a reduction to practice; for, had he attached thereto those old elements in the old way, as was" done in the second device, it would have been unnecessary for him to have demonstrated their operation. The new device differed from the old merely in the manner in which it was adjusted to the plate. In all other respects it was the same. To rule that the failure of Thomas to attach those old elements to his first device, when they formed no part of his invention and would not have aided in the slightest degree in demonstrating its practicability, would be a splitting of hairs unworthy of a court of justice. When Thomas finished and tested this model his invention was complete. The problem confronting him was solved. Gaisman v. Gillette, 36 App. D. C. 440. The fact that a more desirable commercial result was subsequently obtained is of no consequence, because the first result demonstrated the utility and practicability of the device. The Corn-planter Patent, 23 Wall. 181, 23 L. ed. 161; Sydeman v. Thoma, 32 App. D. C. 362, 373.

Since Mr. Stewart did not enter the field until January, 1909, a time subsequent to tbe conception and reduction to practice of Thomas, and as the invention was neither secreted nor abandoned by Mr. Thomas, it is apparent that Mr. Thomas must prevail, as lack of diligence is not chargeable against one of the parties in an interference where he was the first to conceive and the first to reduce to practice. Hubbard v. Berg, 40 App. D. C. 577.

Decision affirmed. Affirmed.

On April 28, 1914, a motion for a rehearing was denied.

Mr. Justice Anderson sitting for Mr. Chief Justice Shepard.