In Re Yarn Processing Patent Validity Litigation , 360 F. Supp. 74 ( 1973 )

360 F.Supp. 74 (1973)

In re YARN PROCESSING PATENT VALIDITY LITIGATION.
SAUQUOIT FIBERS CO.
v.
LEESONA CORP. et al.
KAYSER-ROTH CORP. et al.
v.
LEESONA CORP. et al.
LEESONA CORP.
v.
DUPLAN CORP. et al.

M.D.L. Docket No. 82, Civ. Nos. 72-563, 72-641^[*] and 72-691.

United States District Court, S. D. Florida.

April 25, 1973.

Henry Burnett, Fowler, White, Humkey, Burnett, Hurley & Banick, Miami, Fla., local counsel for Kayser-Roth. William K. West, Jr., and John W. Malley, Cushman, Darby & Cushman, Washington, D. C., counsel for Kayser-Roth.

William W. Beckett and Gene W. Stockman, Schuyler, Birch, Swindler, McKie & Beckett, Washington, D. C., and George W. F. Simmons, Rohm & Haas, Philadelphia, Pa., for Sauquoit Fibers Co.

Willis Flick, Blackwell, Walker, Gray & Powers, Miami, Fla., local counsel and Nolan E. Clark, James H. Wallace, Jr., Kirkland, Ellis & Rowe, Washington, D. C., general counsel for Leesona Corp.

ORDER GRANTING MOTIONS FOR PARTIAL SUMMARY JUDGMENT

ATKINS, District Judge.

Two motions for partial summary judgment of patent invalidity have been filed in this consolidated proceeding by the parties opposing United States Letters Patent 2,803,105, 2,803,108, and 2,803,109, and they have been the subject of thorough discovery and briefing almost from the time these cases were consolidated.^[1] The grounds upon which the motion is based are derived entirely from Section 102(b) of Title 35, United States Code, wherein it is provided:

A person shall be entitled to a patent unless—

* * * * * *

(b) the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . . .

While this section reads simply enough, there is much case law both construing and applying these two standards that must be discussed before the Court can intelligently decide the question at hand. Fortunately in this instance the question presented is a relatively narrow one with most of the essential facts being either stipulated to or admitted. The real contest lies in the application of the patent validity and summary judgment standards to those essentially non-disputed facts. Based on the reasons more fully set out below, the Court is of the opinion that summary judgment must be granted in favor of Sauquoit and the New York "plaintiffs"^[2] declaring these "single heater" patents invalid.

I

It is appropriate at this point to detail the facts surrounding this critical period in the history of yarn processing, not so much for the purpose of showing that they are not in dispute, but rather to put the material facts in perspective.

Although Leesona now owns these patents, the applications for the three patents listed above [hereinafter referred to as '105, '108, and '109 patents] were filed by Warren A. Seem and Nicholas J. Stoddard on January 4, 1954, with the patents themselves issuing on August 20, 1957. Jointly characterized in many instances as the "single heater" patents, they disclose both an apparatus and various methods for processing thermoplastic yarns (i. e., polyamide substances such as nylon, orlon and dacron) to impart of the fluffiness, crimp, and elasticity characteristic of "false twist" yarns in a single, continuous, rapid fashion.^[3] A detailed discussion of the precise language of the various claims in each patent, and how that language would withstand the other tests of patent validity, is unnecessary at this juncture. When the charge of invalidity centers on the "public use" or "on sale" provision of § 102(b), as this summary judgment motion does, most of the technical ramifications of patent law are pretermitted, making this grossly simplistic explanation of false twisting sufficient for the Court's purposes.

The applications for these patents were the result of many years of work, both part and full-time, by Mr. Seem and Mr. Stoddard. The two men had extensive experience in the throwing industry^[4] prior to their work together on what finally culminated in the patents in suit. At one time in the middle 1930's Stoddard worked under Seem at the Georgetown Silk Company, and it was during this period that their experiments in this area were first conducted jointly. In 1938 they became separated because of Stoddard's promotion and transfer to another plant, although Seem has testified that communication between the two continued. They were reunited in Philadelphia six years later, at which time the experiments resumed and a loose partnership was formed between Seem and Stoddard, the inventors, and Fred Tecce and Harold Berger, the financiers. With this partnership arrangement set up, the two inventors were able to construct and operate two successive bench models between 1944 and 1947, the latter of which incorporated "the entire apparatus as a first step toward construction of a full-scale commercial size machine."^[5] Experimentation on the scale model continued for the next several years, during which time Berger and Tecce sold their hosiery mills and started a throwing operation called Marionette Mills.

After moving their equipment to a protected area at the Marionette location in 1950^[6], Seem and Stoddard borrowed a demonstration up-twister for conversion into a full-scale production model and moved it into the plant. Ten of the forty spindle^[7] positions were converted to "single heater" false twisters with the conversion being completed in July of 1950. This machine was operated on an experimental basis for several months, but was dismantled and returned to its owner when the Permatwist partners decided to build eight full-size machines and operate them in the yet-to-be-constructed basement of Marionette. In fact only one machine was actually built—an Atwood 220 spindle up-twister—and moved to the basement. The machine was not completed until early 1952. About this same time Mr. Seem mentioned to a representative of Synthetic Yarns that he had developed this particular machine and the methods to operate it to produce stretch yarn from thermoplastic yarn in a continuous fashion,^[8] and a visit from four Synthetic Yarn representatives was arranged for May 20, 1952 at which time Permatwist "made it a point to have [the machine] covered and running and in real good shape with yarn so that the demonstration would be impressive." Following some further negotiations with Synthetic's owners over the next few months, Permatwist entered into an agreement on December 15, 1952 with Synthetic Yarn that provided Synfoam, Inc. with a license to use this false twist process.^[9]

II

Before the facts, as summarized briefly above, can be interpreted under the § 102(b) tests, it is necessary to conclude that this early disposition is both possible and proper. Rule 56 of the F.R.Civ.P. provides that after a time period not herein relevant

. . . The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. (emphasis supplied)

The Courts must be wary of granting motions for summary judgment unless both of these requirements are met because it naturally deprives the resisting party of the right to a full "trial" on the merits. However if the requirements are met, the motion should be decided. See Insurance Company of North America v. Bosworth Construction Co., 469 F.2d 1266 (5th Cir. 1972); Burleson v. Mead Johnson & Co., 463 F.2d 180 (5th Cir. 1972). It is admitted that neither of these cases involved the validity of patents, but the application of the rule would not, and should not, vary. Leesona cites Ag Pro, Inc. v. Sakraida, 437 F.2d 99, 101 (5th Cir. 1971), finding on remand rev'd, 474 F.2d 167 (5th Cir. 1973), for the proposition that "[s]ummary judgment is the rare exception, see Ronel Corporation v. Anchor Lock of Florida, Inc., 5 Cir. 1963, 325 F.2d 889, and not the rule in patent infringement cases." Of course that decision reversed a summary judgment determination of invalidity based on the test of "obviousness", a much more factually oriented inquiry than the § 102(b) tests. "Thus obviousness is a question of law determined against the factual background of the state of the prior art and the claimed improvement on it." Stamicarbon N.V. v. Escambia Chemical Corp., 430 F.2d 920, 924 (5th Cir. 1970), quoted with approval in Ag Pro, supra. (emphasis added). In the appropriate circumstances even the "obviousness" test may be applied in a summary judgment decision. See Inject-O-Meter Mfg. Co. v. North Plains Fertilizer & Chemical, Inc., 439 F.2d 1138, 1139 (5th Cir. 1971).

With these precautions in mind then, the Court is of the opinion that if summary judgment can ever be justifiable in patent litigation, it is justifiable here where the determination is not made against an uncertain factual background.^[10]See Strong v. General Electric Co., 434 F.2d 1042 (5th Cir. 1970), aff'g mem. 305 F.Supp. 1089 (N. D.Ga.1969), cert. denied, 403 U.S. 906, 91 S.Ct. 2207, 29 L.Ed.2d 681 (1971).

III

While the test set forth in § 102(b) is easy to comprehend, a short summary of its parameters is essential before applying it to the particular facts involved in this instance. The date that this decision revolves around is January 4, 1953—the "critical date". The statute allows an inventor one year's leeway following the completion of this invention to file the application for a patent, and in this instance the application was made on January 4, 1954. Prohibited under subsection b are both "sales" and "public uses", and a single instance of either before the critical date may result in an invalid patent. Consolidated Fruit Jar Company v. Wright, 94 U.S. 92, 24 L.Ed. 68 (1877); Hobbs v. United States Atomic Energy Commission, 451 F.2d 849, 857 (5th Cir. 1971); Strong v. General Electric Co., supra, 434 F.2d at 1046-1047. Although the two separate statutory bars derive from a common purpose, Woodbridge v. United States, 263 U.S. 50, 55-56, 44 S.Ct. 45, 68 L.Ed. 159 (1923); Cali v. Eastern Airlines, Inc., 442 F.2d 65 (2d Cir. 1971); Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516, 520 (2d Cir. 1946), cert. denied 328 U.S. 840, 66 S.Ct. 1016, 90 L.Ed. 1615, the standards employed in each are not identical. In this Circuit "[t]he mere existence of a sales contract is insufficient to establish a placing ``on sale'. The invention that is the subject of the sale must be a reality in the sense that it must be beyond the stage of experimentation." Hobbs, supra 451 F.2d at 859. Some courts have indicated that they will not, in applying the "on sale" test, be bound by the "overly-refined distinctions" of commercial law, Philco Corp. v. Admiral Corp., 199 F.Supp. 797, 817 (D.Del.1961), but the Hobbs case leads this Court to believe that reference to a type of "general contract law" in order to determine what amounts to a sale is the better part of discretion, especially when the decision is made in the granting of a summary judgment motion. Hobbs, supra 451 F.2d at 857, n. 4.^[11]

To establish the "public use" defense, the potential infringer may proceed in either of two ways: (1) demonstrate to the Court that some person (not necessarily the inventor) has made a nonsecret, nonexperimental use of the invention prior to the critical date; or (2) establish the fact that the inventor has used the patent for trade and profit, whether the use has been secret or not.^[12] The former derives from Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 7 L.Ed. 327 (1829) and followed by Bates v. Coe, 98 U.S. 31, 25 L.Ed. 68 (1878); Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 8 S.Ct. 122, 31 L.Ed. 141 (1887); General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175, 58 S.Ct. 849, 82 L.Ed. 1273 (1938); Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 59 S.Ct. 675, 83 L.Ed. 1071 (1939), and the latter from Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th Cir. 1917). That decision has been followed by the Second Circuit in Metallizing Engineering, supra, along with several other circuits in later cases, although the Fifth Circuit does not appear to have expressly adopted the holding.

Implicitly accepted in the discussion of the "on sale" and "public use" defenses is the qualification that neither of the two may be shown to exist while the invention is still in the experimental stage. City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1878).

A use which is primarily experimental and no more than incidentally for trade or profit is not a public use. E. g. Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 8 S.Ct. 122, 31 L.Ed. 141 (1887). This is the so-called "experimental use exception". Viewed in light of the policy underlying the public use provision, however, it is no exception at all. A bona fide experimental use involves no commercial exploitation. . . .

Pickering v. Holman, 459 F.2d 403, 406 (9th Cir. 1972). See Hobbs, supra 451 F.2d at 859.

Summarized as it is above, the task the Court has been called on to perform in applying the law to the facts as developed in the pleadings, affidavits, depositions and interrogatories should be fairly clear-cut. There are, however, two areas of disagreement that need to be resolved before any decision can be made.

a). The first disagreement relates to the question of who has the "burden of proof" to establish the disputation of a material fact.^[13] The moving parties argue that they have shown a prima facie case of invalidity, making it incumbent on Leesona, the patent owner party, to come forward and show to the Court that there exists a material question of fact concerning the experimental condition of the invention during 1952. This of course would make a summary judgment decision premature. Leesona counters this argument by reminding the Court of the burden—and a heavy one it is, Eagle Iron Works v. McLanahan Corp., 429 F.2d 1375 (3rd Cir. 1970)— that one must bear in requesting a declaration of patent invalidity, with the extrapolation of this argument being the assertion that the burden cannot shift to Leesona. This argument is a non sequitur.

The Court is not concerned specifically with the presumption of validity that is mandated by Section 282 of Title 35, United States Code, or with the burden of proof arising thereunder. The Fifth Circuit case law makes it clear that the burden that must be borne by one who would seek to invalidate a patent will bring to their knees all but the most indomitable opponents,^[14] but that is not the issue here. The request for a summary judgment puts the movant to an even more severe test—he must show not only that § 102(b) has been violated by "clear and convincing evidence" or "beyond a reasonable doubt", but as a matter of law. If the Court, after reviewing the evidence gathered and the pleadings submitted so far, is convinced that there are no material facts in dispute and that there has been the requisite showing of a sale or public use, the opponent of the motion has clearly failed to meet his "burden" set forth in Local Rule 10(J)(2) which requires that:

. . . The papers opposing a motion for summary judgment shall include a memorandum of law, necessary affidavits, and a concise statement of the material facts as to which it is contended that there exists a genuine issue to be tried. All material facts set forth in the statement required to be served by the moving party will be deemed admitted unless controverted by the opposing party's statement.

See, e. g., Atlas v. Eastern Air Lines, Inc., 311 F.2d 156, 160 (1st Cir. 1962); National Biscuit Co. v. Crown Baking Co., 105 F.2d 422, 425 (1st Cir. 1939); and Minnesota Mining & Manufacturing Co. v. Kent Industries, Inc., 274 F.Supp. 993, 997 (E.D.Mich.1967), aff'd, 409 F.2d 99 (6th Cir. 1969). Whether the parties have met their respective "burdens" will be discussed below.

b). A decision was rendered on February 28, 1964 by President Thorson in Ernest Scragg & Sons Limited v. Leesona Corporation, formerly known as Universal Winding Co., in the Exchequer Court of Canada, No. 143,891 [hereinafter referred to as Exchequer Opinion], holding the Canadian counterparts of the '105, '108, and '109 [respectively 552,105, 552,103, and 552,104] valid and infringed. The main dispute in that litigation centered around the date of the inventions defined by the claims in issue. The applications for the Canadian patents were filed on September 27, 1954, although to prevail Leesona had to prove a date some years prior to that filing date. In the opening discussion of the opinion, the judge noted that "it is asserted on behalf of the defendant [Leesona] that the inventions in issue were in fact made in July, 1947." Exchequer Opinion at 8.

To some extent the Court has relied on various findings made by that Court relating to the actual completion date of the inventions. In that case it was to Leesona's advantage, as the assignee of the patents awarded to Mr. Seem and Mr. Stoddard, to urge the earliest invention date possible in order to qualify Seem and Stoddard as the original inventors. Leesona prevailed and evidently convinced that court as follows:

. . . In my opinion, the 10-spindle false twist conversion that was completed in July, 1950, was simply a full scale commercial exemplification of the invention that Mr. Seem and Mr. Stoddard had made in July, 1947 or shortly thereafter.

Exchequer Opinion at 29. In order to assure the success of this finding Leesona constantly attempted to minimize the effect of the various minor changes and substitutions that were sometimes carried out during the time that the different models were being run. As the court found,

. . . There were some differences between [the machines built for Synfoam] and the single 220-spindle machine, as I have already set out, but there were no differences in the essentials and no difference in their functioning.

Exchequer Opinion at 31-32.

With the motions before this Court now alleging the invalidity of the patents based on the § 102(b) tests, Leesona retreats from its previous position and now urges that the inventions were still in their experimental stages during this six year period prior to the critical date. The opposition to the summary judgment motions goes to great lengths to pick out those portions of previously taken depositions in order to prove that the inventions were not considered perfected until sometime in 1953. The Court, however, finds Leesona collaterally estopped to deny the findings of the Exchequer Court and for that reason cannot give Leesona's argument of experimental use any credence.

One definition of the doctrine relied on here has been provided by Professor Moore:

. . . The essence of collateral estoppel by judgment is that some question or fact in dispute has been judicially and finally determined by a court of competent jurisdiction between the same parties or their privies. Thus the principle of such an estoppel may be stated as follows: Where there is a second action between parties, or their privies, who are bound by a judgment rendered in a prior suit, but the second action involves a different claim, cause, or demand, the judgment in the first suit operates as a collateral estoppel as to, but only as to, those matters or points which were in issue or controverted and upon the determination of which the initial judgment necessarily depended.

1B Moore's Federal Practice ¶ 0.441[2] (2d ed.), p. 3777 (footnotes omitted). Leesona, of course, is the same party that was involved as a defendant in the case in Canada. As to the opposing parties in this proceeding, the Court is convinced that if privity is still necessary, it can be found here in the substantial identity of the patents in suit both in Canada and the United States. A finding of privity is superfluous, however, since collateral estoppel no longer appears to hinge, especially in federal question cases such as this, on the old doctrine of mutuality. See, e. g., Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 324-326, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971); James Talcott, Inc. v. Allahabad Bank, Ltd., 444 F.2d 451, 461-463 (5th Cir. 1971); Rachal v. Hill, 435 F. 2d 59, 61-63 (5th Cir. 1970), cert. denied, 403 U.S. 904, 91 S.Ct. 2203, 29 L. Ed.2d 680 (1971); Seguros Tepeyac, S. A. Compania Mexicana v. Jernigan, 410 F.2d 718, 727 (5th Cir. 1969), cert. denied, 396 U.S. 905, 90 S.Ct. 219, 24 L. Ed.2d 181 (1969); Herbert Rosenthal Jewelry Corp. v. Zale Corporation, 323 F.Supp. 1234, 1237 (S.D.N.Y.1971).

The determination made by the Canadian Court concerning the date of invention and the date of reduction to practice was necessary for that judgment— the dates were both in issue and controverted. The application of the collateral estoppel bar is appropriate, Poster Exchange, Inc. v. National Screen Service Corp., 456 F.2d 662, 666 (5th Cir. 1972), but only if Canada meets the test of comity set down by the Supreme Court in Hilton v. Guyot, 159 U.S. 113, 16 S.Ct. 139, 40 L.Ed. 95 (1895). Canada does meet that test. The result will be somewhat unusual in this instance in that the fact findings made by President Thorson that allowed Leesona to prevail against Scragg contribute to Leesona's failure here, but the collateral estoppel theory serves the same salutory objectives without regard to the final outcome. See generally Wilson v. Retail Credit Co., 474 F.2d 1260 (5th Cir. 1973).

IV

Based on all of this preliminary discussion, then, the Court is called upon to review all of the facts presented in order to determine whether a material fact still remains in dispute, and if not, whether the patents are invalid as a matter of law. In accordance with the local rules of this Court, the movants have submitted proposed findings of material fact as to which they assert there is no genuine issue. These facts are summarized in paragraphs 1-14 of Appendix A of the motion by the New York plaintiffs. As was required by those same rules, Leesona, in its opposition to the motion, listed those material issues of fact as to which there does exist a genuine issue of fact to be tried, with that listing comprising paragraphs 1-11. None of those paragraphs directly controverts the facts submitted by the moving parties. Following the procedures outlined in Local Rule 10(J)(2), the Court must consider paragraphs 1 through 14 admitted by Leesona.

a). The material issues of fact listed by Leesona will be dealt with one by one, since they purport to demonstrate to the Court that summary judgment is not proper now. The first issue is "[w]hether or not the partnership of Warren A. Seem, Nicholas J. Stoddard, Harold P. Berger, and Fred D. Tecce, the Permatwist Company, was formed for the purpose of bringing to completion the development of Stoddard's and Seem's false twist process." According to Mr. Berger's testimony and Leesona's own memorandum, a "loose partnership" was formed in 1944. Even assuming that the issue as phrased was decided in Leesona's favor it would have no effect on the outcome of this motion. Having already admitted sufficient facts to justify a conclusion that the invention embodied in the '105, '108 and '109 patents was "on sale" prior to the critical date, the only material fact is whether the invention was still in the experimental state in order to negate the otherwise invalidating effect of the sale.

b). As to the issue of whether the 1947 bench model was experimental in character, the moving parties are willing to concede, for the purpose of this decision, that the model was experimental. That has no relevancy, however, since we are concerned with an admitted sale in 1952.

c). Leesona next poses the same question in relation to the Fletcher uptwister used in 1950. For the same reason that was stated above the issue is irrelevant. Even if that issue was decided in Leesona's favor it would not affect the resolution of this motion.

d). The fourth question posed must be quoted to appreciate the full scope of it:

Whether various actions and statements by the Permatwist partners (a) show intent to sell or market the inventions immediately or (b) indicate confidence that the process would eventually be developed for commercial production and use.

The question as framed is much too expansive —the Court is concerned with the narrow time frame around the sale of the invention. Statements made by the inventors or their partners prior to 1952, if they indicated the latter, would not be relevant to the intent of the partners during 1952 because the invention could obviously have lost its experimental qualities in the intervening period prior to May 20, 1952. Rephrasing the question in light of this the question should contain the words "during 1952" after "partners" in the second line.

After this bit of semantic gymnastics is Leesona in any better position to resist the granting of this motion? I think not. The test as set forth in Hobbs requires only (1) a sale of an invention that (2) is no longer at the experimental stage. Hobbs, supra 451 F. 2d at 859. Already satisfied is the first requirement; the whole thrust of this motion is directed toward a determination of the second. It could be persuasively argued that a determination of "[w]hether various actions and statements by the [inventors] . . . indicate confidence that the process would eventually be developed for commercial production and use" would contribute not one whit towards answering the primary question. However, even assuming that the "actions and statements" of the inventors could assist the Court in finding an invention "experimental", no such assistance is found here. At the urging and insistence of Leesona, the Canadian judge ruled that

The fact that Mr. Seem and Mr. Stoddard continued to work on [the bench model] and its accompanying equipment and make further experiments does not affect the fact that they had made the invention of the apparatus defined in Claim 3 at the asserted date. They were obviously anxious to make improvements. When they had satisfied themselves, as they did, that they could use the apparatus that they had invented to produce very satisfactory stretch nylon yarn that was permanently crimped and more uniform in appearance than nylon yarn produced by the step-by-step process and that knitted fabric made from it could stand washing and boiling and still maintain its uniform crimp they proved that it was possible to put their invention into full scale commercial operation when they completed the false twist conversion of the 10 spindles of the 40-spindle up-twister that they had borrowed from the Fletcher Works. In my opinion, the 10-spindle false twist conversion that was completed in July, 1950, was simply a full scale commercial exemplification of the invention that Mr. Seem and Mr. Stoddard had made in July, 1947 or shortly thereafter.

Exchequer Opinion at 29-30.

Leesona further made the representation that

By the latter part of July 1950 Seem and Stoddard had converted ten positions, or spindles, of this machine to false twist operation. This machine, constructed in July of 1950, include[d] all of the elements of Claim 3 of Patent 552,105 [Canadian counterpart of '105] and its operation practice[d] the process of Claims 1, 2, 3, 5 and 8 of Patent 552,104 [Canadian counterpart of '109] . . . . This 1950 machine produced very satisfactory permanently crimped stretch nylon.^[15]

There are many other examples of actions and statements by the Permatwist partners, although not recited here, that conclusively establish that the practice of the invention prior to 1952 was "mainly for the purposes of trade and profit, and the experiment [was] merely incidental to that . . . ." Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 126, 31 L.Ed. 141 (1887). See Pickering v. Holman, 459 F.2d 403, 406 (9th Cir. 1972). Any material fact raised by that question, if indeed there is one, cannot be disputed.

e). Next Leesona argues that a jury must decide "[w]hether the first 220-spindle machine converted in the basement of Marionette Mills, Inc., (a) was used as part of a sales program or (b) was used only in connection with continuing experimentation and development of the false twist process." This question cannot justify a denial of the motion. If the Court were to assume that the two subparts were mutually exclusive, as they were obviously designed to be, then of course it would have to instruct the jury that it must find the existence of subpart a since Leesona has already admitted that the machine was used to establish a business relationship with Synfoam. However they need not be mutually exclusive but for the use of the word "only"—one may use an invention as part of a sales program while continuing experimentation. Even in that instance, though, the question would not be relevant unless subpart (b) was worded in this fashion:

(b) was used primarily in connection with continuing experimentation and development of the false twist process related solely to the patented features of the invention and only incidentally for trade and profit.

With the question posed thusly, analysis of this material fact can be examined to see if a dispute is justifiable. There is no question that the 220-spindle machine embodied the inventions in litigation here. In many instances, either in previous depositions or pleadings, the Permatwist partners have acknowledged the identity of the two. The 220-spindle machine was, after all, the machine used by them to demonstrate the invention to Synfoam.^[16] Even if that were not the case, the failure to controvert the material fact that the machine would constitute an infringement if used during the life of the patents affirmatively establishes the embodiment. In the Canadian litigation Leesona argued to the Court that

. . . Construction of the single 220 spindle machine was started early in 1951 and was completed the early part of 1952 in that basement. The machine still remains in the basement in operation in the same location it had when completed early in 1952.^[17]

The Court adopted that argument when it noted that the machine was "completed in the spring of 1952. . . . And it [was] clear that on May 20, 1952, the date of the secret disclosure, Mr. Seem showed the machine in operation to the representatives of Synthetic Yarns Inc. and described its parts."^[18] These representations by Leesona were not made without the consent of the inventors, but were based on the testimony given by Mr. Seem and his partners in that litigation.^[19]

Leesona cannot have it both ways. It has not only failed to show that the continuing experimentation on the false twist process related to the invention revealed in these patents, but it has utterly ignored the cardinal prerequisite that any use for trade and profit be only incidental to the experimental use, if any.^[20]

f). The sixth question posed by Leesona in its opposition to the two separate motions for partial summary judgment involves the demonstration of the 220 spindle machine to the four representatives of Synthetic Yarns on May 20, 1952—was it carried out in secret? The issue is legally irrelevant to the motion by the New York plaintiffs; they rely only on the fact that the invention was on sale and the Hobbs decision makes it crystal clear that secrecy is just not a consideration.

. . . His argument is basically an attempt with no support from precedent to construe the statute so that "public" in the phrase "in public use or on sale" modifies not only "use" but also "sale". This unrealistic construction has been urged elsewhere and rejected. Piet v. United States, 1959, S.D.Cal., 176 F.Supp. 576, aff'd 9 Cir. 1960, 283 F.2d 693. We cannot attach any relevance to any conditions of secrecy which may have existed at the time the G valve was placed "on sale."7

7. Secrecy may be relevant to the issue of "public use." See Kardulas v. Florida Machine Products Co., 5 Cir. 1971, 438 F.2d 1118; Watson v. Allen, 1958, 103 U.S.App.D.C. 5, 254 F.2d 342.

451 F.2d at 860.

As the above quote indicates, the Court states that the issue "may be" relevant to the motion by Sauquoit, relying as it does on both the "on sale" and in "public use" provisions of § 102(b). In this instance, however, whether the demonstration was carried out in secret is both irrelevant and immaterial, and can be no justification for denying the motion as it relates to the "public use" defense. Leesona argues that there cannot be a "public use" when the disclosure was protected by securing a promise of secrecy, citing both Kardulas and Watson, supra. Kardulas is not authority for this statement. Judge Dyer remarked there that

. . . The use may be public where it is exposed to persons other than the inventor, including customers and salesmen, who are under no obligation of secrecy, Watson v. Allen, . . . and where no attempt is made to keep the device from the knowledge of the public.

438 F.2d at 1123-1124. This obviously was not the holding of that case, and does not necessarily support the converse of the statement, i. e., that a use may not be public where it is exposed to persons other than the inventor who are under an obligation of secrecy. That comment in Kardulas, intended as a short introduction to the law of public use, was correct as far as it went, but just did not go far enough. The citation to Watson is also of no help. Judge Burger (now Chief Justice) stated, in an attempt to summarize the law on public use, that

. . . It may be fair to conclude that public use exists where the invention is used by, or exposed to, anyone other than the inventor or persons under an obligation of secrecy to the inventor.8

254 F.2d at 345. In the footnote to that sentence, it continued:

8. Use by persons under an obligation of secrecy to the inventor is probably not public use. See National Tube Co. v. Steel & Tubes, Inc., 3 Cir., 1937, 90 F.2d 52. Cf. Journeaux, Public Use in Private or Vice Versa, 23 J. Pat.Off.Soc'y. 514 (1941), who states "With due caution it may be considered that an invention is in public use when it is used openly by the inventor for its intended purpose and also when it is used by anyone beyond the control of the inventor." . . .

254 F.2d at 345. Not only was this dicta, because the Court went on to hold that the use in question was still experimental [primarily?], but the dicta was clearly labelled as such by insertion of the word "probably" in the footnote. Obviously Journeaux's admonition to use "due caution" in stating a test for establishing a public use was not heeded—his summary does not even mention secrecy as an element.

The National Tube case cited in that footnote did make the following finding in a similar situation:

. . . This testimony reveals that Mr. Smith, a representative of Johnston, demonstrated to him several small pieces of tubing manufactured by the Johnston process without, however, disclosing the process. These demonstrations were made preliminary to the execution of a contract with Mr. Simmons in which he was given exclusive right to use these inventions in the manufacture of bedsteads and allied articles. The process was disclosed to Mr. Simmons in the contract which bound him to secrecy. The showing of these pieces of tube to Mr. Simmons and the demonstration of their fitness for his use without disclosing the process did not amount to public use. The defendant did not bear the burden required of him in establishing prior public use for more than two years prior to the application for the patent. The Barbed Wire Patent, 143 U.S. 275, 285, 12 S.Ct. 443, 450, 36 L.Ed. 154.

90 F.2d at 54 (emphasis added). Because the process was not disclosed, the finding loses much of its impact here. In any event, the case appears to have been overruled sub silentio in U. S. Chemical Corp. v. Plastic Glass Corp., 243 F.2d 892 (3d Cir. 1957) where, prior to the Watson decision, the panel, by Chief Judge Biggs, adopted the Second Circuit's view of the "public use" defense when it said:

The issue is what is a public use or sale within the purview of the statute. This question was cogently discussed by Judge Learned Hand in the Metallizing Engineering Co. case, supra. We can add little of value to what Judge Hand said in the cited decision. We are in accord with what he stated. . . .

243 F.2d at 894.

As was discussed earlier, one of the statements made by Judge Hand in the Metallizing case was that the public use defense has two facets: (1) it exists when anyone, the inventor or a third party, practices the invention in a nonsecret, nonexperimental fashion prior to the critical date; or (2) it exists when the inventor practices the invention for trade or profit whether the use has been secret or not. Metallizing Engineering Co., 153 F.2d at 520. See Robine v. Apco, Inc., 386 F.2d 267, 269 (2d Cir. 1967); Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th Cir. 1917). Judge Hand went on to say:

It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes or his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all.

153 F.2d at 520. That certainly is not the situation here.

Whether the disclosure to the Synthetic Yarn representatives on May 20, 1952 was secret or not is irrelevant to a decision on either of the two motions, so this question is not a material fact in issue.

g). Question No. 7:

Whether the demonstration of the 220-spindle machine to representatives of Synthetic Yarns, Inc., on May 20, 1952, was part of a sales effort or (b) was for the purpose of obtaining additional assistance to aid in further development of the false twist process.

This proposed "material issue" suffers from the same malady affecting question 5. Subpart b should read:

(b) was used for the purpose of obtaining additional assistance to aid primarily with continuing experimentation and further development of the false twist process related solely to the patented features of the invention and only incidentally for trade or profit.

This, however, is not the only fatal disease infecting the question. By constructing the question in this way Leesona hopes to make the subparts mutually exclusive, when in fact they need not be. The demonstration could have been part of a sales effort, but the "on sale" defense wouldn't materialize unless the invention was through the experimental stage. The sales effort is conceded. The only remaining portion concerns whether the demonstration was made in hopes of "obtaining additional assistance to aid with continuing experimentation . . . related solely to the patented features of the invention . . . ." The burden is on Leesona to establish the experimental exception and it has not met that burden.^[21]

. . . But for this [experimental] exception to be applicable, the use must be an experiment on the patented device itself and not a use of the patented device in connection with experiments on other devices. A. Schrader's Sons, Inc. v. Wein Sales Corp., 9 F.2d 306 (2 Cir. 1925). Once it has been established that the invention itself functions satisfactorily, the one-year limit on commercial use applies, and the inventor should not be allowed to evade this limit by performing further tests on nonpatented features of the machine in which his invention is incorporated.

Robine v. Apco, Inc., 386 F.2d 267, 269 (2d Cir. 1967). The evidence relied on by Leesona is really no evidence at all— it amounts to nothing more than a citation to a law review note that states

. . . In a borderline case where it is unclear whether the invention has been reduced to practice, the inventor's purpose becomes an important consideration.

Note, New Guidelines for Applying the On Sale Bar to Patentability, 24 Stan.L. Rev. 730, 744 (1972), and the recent deposition testimony of the Permatwist partners and their associates. The Ninth Circuit said it all when it affirmed a summary judgment of invalidity in Super Mold Corp. v. Clapp's Equipment Division, Inc., 397 F.2d 932, 934-935 (9th Cir. 1968):

Super Mold admits the facts as recited above [concerning a sale to Sears], but it claims, notwithstanding, that [the inventor's] testimony in his deposition that "[t]he sale and use of my thread aligners to Sears was a good faith use for experimental purposes and not a public use" created a genuine issue of material fact. We cannot agree. . . . [The inventor's] testimony concerning his subjective intent has no probative force when weighed against the overwhelming objective evidence to the contrary.

See, e. g., Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 8 S.Ct. 122, 31 L.Ed. 141 (1887); Atlas v. Eastern Air Lines, Inc., 311 F.2d 156, 160 (1st Cir. 1962); Minnesota Mining & Mfg. Co. v. Kent Industries, Inc., 274 F.Supp. 993, 998 (E.D.Mich.1967).^[22]

h). The eighth proposed material fact issue fails for the same reason that the fifth and seventh proposed issues fail. For the question to be of any relevance at all it must focus in on the experimental exception, and that it does not do. Even if it did, however, it is impossible for Leesona to show that that exception has any application to these activities. See subparts e and g supra.

i). Question 9, concerned as it is with whether the uses of the patented process prior to the critical date were in secret is irrelevant under the law of "public use", since the uses were commercial in nature. See subpart f supra.

j). The next question relates primarily to the "public use" defense. It is directed to a determination of whether or not the apparatus and/or process were used in commercial production before the critical date. Leesona states that "[i]f the quality of the yarn was not suitable for successful use in garments, the inventions were not commercially viable." With this test in mind, the Court need only look at Leesona's arguments to the Canadian court:

It is abundantly clear from the agreement signed May 20, 1952 by the four employees of Synthetic Yarns Inc., Z-166, that a machine was in being and operating at Marionette Mills, Coatesville, Pennsylvania, on May 20, 1952. It is also clear that that machine was a false twist machine for the manufacture of stretch yarn by a continuous process. That the machine and process were successful is established by the fact that Synthetic Yarns Inc. arranged for the purchase of six machines and The Permatwist partners decided to build seven additional machines to complete the installation they originally contemplated. (Seem, Vol. 27, p. 3696, 1.3-12.) As further proof of the existence of this machine, defendant entered as its Ex Z-163, Z-164 and Z-165 samples of fabric knit from yarn produced on the 220 spindle machine in the early summer of 1952. . . .^[23]

Based on these and many similar arguments made by Leesona in that litigation the Court made the finding quoted on pages 83 and 84 supra. If the commercial status of the apparatus or process is material to either test, it certainly is not in doubt. Both were in commercial use prior to the critical date.

k). The final question posed by Leesona is

11. Whether the dealings of the Permatwist partners with Archibald Graustein, Synthetic Yarns, and Synfoam Yarns constituted (a) an effort to sell the Stoddard and Seem false twist process or (b) an effort to obtain financial and experimental assistance to complete development of the inventions.

If the reader notes a distinct feeling of deja vu, he should not be alarmed. This is essentially a rehash of question number eight, which is in turn disposed of by questions five and seven. The one new aspect of this question seems to be the implication that a sale that amounts to an "effort to obtain financial and experimental assistance" negates the statutory "on sale" bar or brings the activity within the experimental use exception. To justify this necessary implication, Leesona cites a 1964 Court of Claims decision, Ushakoff v. United States, 327 F.2d 669, 164 Ct.Cl. 455 (1964), and a recent student article in the Stanford Law Review to the effect that:

. . . If the inventor offered to sell the invention in order to gain a competitive advantage, it was probably complete; if, however, he was merely seeking funds to enable him to reduce the invention to practice, it probably was not complete.

Note, supra at 744.

At first glance this statement may appear to be a radical departure from the law governing the "on sale" bar, but a little reflection will indicate that it is nothing more than rephrasing of that comment in Hobbs quoted earlier in this opinion:

The mere existence of a sales contract is insufficient to establish a placing "on sale". The invention that is the subject of the sale must be a reality in the sense that it must be beyond the stage of experimentation. . . .

451 F.2d at 859. If Leesona can just show that the apparatus and/or processes were in the experimental stage, there can be no "on sale" bar. But alas, Leesona can no more make that showing to qualify question 11 as a material fact in dispute than it could make the same showing for questions three, five, seven, eight or ten.

CONCLUSION

The pleadings and exhibits filed in this cause are quite voluminous. Nevertheless the Court has made a diligent effort to review the memoranda, depositions and exhibits in order to familiarize itself with the facts and the law. One should not infer that the omission of any particular argument from this opinion means that the argument was ignored or not considered. Rather it only means that not every point raised could be dealt with directly and still keep this opinion within manageable boundaries.

Accordingly, it is ordered and adjudged that United States Letters Patent 2,803,105, 2,803,108, and 2,803,109 shall be and they hereby are declared to be invalid because they were "on sale" and in "public use" more than one year prior to the date of the application for patent in the United States.

APPENDIX A

APPENDIX B

THIS AGREEMENT made this 15th day of December, 1952, by and between

WARREN A. SEEM, of Gwynodd, Pennsylvania, NICKOLAS J. STODDARD, FRED TECCE and HAROLD P. BERGER, all of Philadelphia, Pennsylvania, (hereinafter called "Licensors"), parties of the first part, and SYNFOAM YARNS INC., a corporation organized and existing under the laws of the State of Delaware, (hereinafter called "Licensee"), party of the second part.

WITNESSETH:

1. (a) The Licensors represent that they have developed and are the sole owners (free from all encumbrances) of novel methods and means of processing nylon and other thermo-plastic yarns in such a manner as to impart a substantially permanent crimp or fluff thereto, which methods and means (including the improved spindle) are hereinafter referred to as the invention, and that the invention includes a spindle, an electric heating unit, a yarn tension device and auxiliary equipment required to convert conventional up-twisting machines to enable them to produce crepe or crimped or fluffed thermal-set yarns, which spindle, unit, device and equipment are herein collectively hereafter referred to as the improved spindle except as otherwise noted.

(b) The hereinabove methods and means were recently disclosed on May 20, 1952, in whole or in part, to Messrs C. R. Steedman, T. Leo Power, Wm. J. Hoag and Wm. A. Griffin, all representing the Licensee and a copy of the secret disclosure signed by all of them is attached hereto and becomes part of this agreement.

(c) References to the invention include both the invention as above set forth and all improvements therein made or acquired by the Licensors and also the improved spindle as above defined, and all improvements therein made or acquired by the Licensors, all insofar as such improvements in the invention or in the improved spindle apply to the invention or the improved spindle referred to in paragraph 1(a) or paragraph 1(b) above or to the utilization of the improved spindle in the production of thermoplastic crepe yarns by adding twist to a previously highly twisted yarn, thermosetting and removing the same amount of twist as added; but such references do not include either (i) the inventions covered by U.S. Patents Nos. 2,353,666 and 2,411,132, both of which are owned by Crepe de Chine, Inc., a Pennsylvania corporation, or (ii) the use of the methods and means aforesaid for thermal shrinking, thermal stretching or thermal stabilizing of thermoplastic yarns other than incidentally to the production of crepe yarns as aforementioned or incidentally to imparting thereto a crimp or fluff as aforesaid. The Licensee agrees to refrain from any use, other than herein specifically licensed.

(d) To properly effect the intent hereof the Licensors agree that any improvements that they have made or may make in the future in the invention or in the improved spindle, all insofar as such improvements apply to the invention or the improved spindle referred to in paragraph 1(a) or paragraph 1(b) above or to the utilization of the improved spindle in the production of crepe yarns as aforesaid will be divulged to and made available, free of charge, to the Licensee.

2. The Licensors within three months from the date hereof will apply for a United States patent or patents in respect of the invention, and will prosecute such application or applications with all possible diligence. The Licensors agree that they will be sole owners free of encumbrances of the exclusive right to make, use and sell under (which right they will not exercise) and the exclusive license to grant to others the right to make, use and sell under said applications and under all patents which may issue therefrom so far as they pertain to methods and means of producing crepe, crimped or fluffed thermalset yarns by twisting and untwisting. When serial numbers have been designated by the U.S. Patent Office to such patent applications the Licensors will promptly advise the Licensee of the serial numbers so designated.

3. The Licensors hereby license and authorize the Licensee, within the United States and its possessions, to the extent limited above, i. e., for the production of crepe, crimped or fluffed thermalset yarns, to use the invention at all times during the term of this agreement (including the right to make or have made for its own use as provided herein improved spindles and all parts thereof, the right to operate them and the right to make, use and sell any product processed thereon whether or not patent protection is obtained in respect of such product) and on the request of the Licensee will confirm this license and authorization after the issue of any patent or patents on the invention or any improvements as a license and authorization under such patent or patents. Without limitation of the foregoing Licensors agree at the request of the Licensee at any time and from time to time (a) to use their best efforts to procure for the Licensee as promptly as feasible such number of the improved spindles or parts therefor as the Licensee shall from time to time order, all at cost to the Licensors and without any profit to the Licensors or any charge for their services, the cost to the Licensee per improved spindle or part to be as low as the cost to anyone else with whom the Licensors deal at the time, and (b) at their own cost and expense to furnish the Licensee as and when requested by it with information, advice and assistance for the proper installation, maintenance, operation and use of the improved spindles and for the practice of the invention.

4. The Licensee hereby authorizes the Licensors to procure for the Licensee 1,000 of the improved spindles for installation on frames now owned by D. W. Rich & Company, Incorporated, a New York corporation, hereinafter called "Rich". The Licensors will order such improved spindles for the Licensee for delivery as soon as practicable and as soon as any other improved spindles are delivered to anyone. The Licensors estimate but cannot guarantee that the cost of such improved spindles installed will not exceed $20 a spindle inclusive of the heating unit and all parts. The Licensors will not actually place any order without the approval of such order by the Licensee, but such approval shall not be unreasonably withheld. The Licensee will use its best efforts to complete the installation of such improved spindles as soon as reasonably practicable without undue expense.

5. The Licensors will at all times at the request of the Licensee, without charge and to the best of their ability, assist it in any marketing problems by giving it all data available to the Licensors in respect of the suitability of yarn processed on the improved spindles for various purposes and full details of the best methods of weaving, knitting and using the same for such purposes, and otherwise.

6. The Licensors will likewise use their best efforts to assist the Licensee to obtain a position with DuPont for a supply of nylon to the Licensee, but will not commit the Licensee in any way.

NOTES

[*] Master Case For Twenty-Four Consolidated Actions.

[1] The motion by Sauquoit was filed in the Eastern District of Pennsylvania in Sauquoit Fibers Co. v. Leesona Corp., et al., Civil No. 70-1728 on April 29, 1971. When that action was transferred here for discovery, the motion was pending although a final response had not been filed. Following the completion of the expedited discovery on the § 102(b) issues, the law was exhaustively briefed by all parties; the issue is now properly before the Court for decision.

[2] For the purposes of this opinion, the term New York plaintiffs will be used to designate those members of the throwing industry who originally challenged the validity of these patents in the Eastern District of New York. See note 4 infra.

[3] It is necessary for thermoplastic yarns to be given a so-called "false twist" property in order for them to be satisfactory for textile manufacturing purposes because of the lack of any natural crimp or fluffiness in the synthetic yarns. The false twist mechanically imparted to the thermoplastic yarns, whether achieved via the continuous single heater process or the more costly and inefficient batch process familiar in the industry prior to the extremely wide acceptance of these patents, enables the knitted finished product to display the bulk and elasticity so characteristic of the fabrics manufactured from natural fibers.

[4] "Throwing is the business of processing yarns consisting of continuous filament fibres and those who are engaged in it are known as throwsters." Ernest Scragg & Sons Limited v. Leesona Corp., in the Exchequer Court of Canada, No. 143,891, at 9.

[5] Memorandum of Leesona In Opposition to Motions by Sauquoit Fibers Company and the New York Throwsters for Partial Summary Judgment at 16.

[6] Seem, prior to this move, had sold his interests in Synthetic Yarns, Inc., a throwing company located in Massachusetts, to the company's attorney, Archibald Graustein. The significance of this sale will be apparent following the discussion on the next page.

[7] The spindle is a portion of the false twist machinery, designated as capital P in figure 1 of the diagram of the '108 patent apparatus attached as Appendix A. When used in connection with a particular model, it indicates the total number of separate means for processing the yarn, each spindle increasing arithmetically the amount of yarn that may be processed at the same time on the same machine.

[8] Mr. Seem testified in the Canadian litigation that the announcement was made to Mr. Steedman of Synthetic Yarns after Mr. Steedman told him "that Synthetic Yarns had been offered a license under certain French patents owned by French people, patents that originated in France."

[9] The agreement entered into by Permatwist and Synfoam is a 30 page document, the first six paragraphs of which are reproduced as Appendix B. The entire document is Exhibit 14 to the Sauquoit motion for partial summary judgment.

[10] "The district court incorrectly treated the question of novelty solely as one of law without proper consideration of pertinent factual background." Van Gorp Mfg., Inc. v. Townley Industrial Plastics, 464 F.2d 16, 18 (5th Cir. 1972).

[11] The reliance in this opinion on Hobbs v. United States Atomic Energy Commission supra is not meant to indicate an unawareness of the case law relating to § 102(b) so ably developed by the United States Courts of Appeals for the Second and Third Circuits, from whose jurisdiction these cases originally came. Rather it only serves as a manifestation of this Court's understanding that the test of invalidity as set forth in Hobbs, and the Fifth Circuit in general, is somewhat more rigorous than the test that would have been applied by the original transferor district. The briefs of the moving parties in the cases cited therein demonstrate the slightly increased burden placed on the moving parties by Hobbs.

[12] In this regard see the discussion of the inventor-third party dichotomy by the panel in Hobbs, 451 F.2d at 859-860.

[13] The usage of the term "burden of proof" in this argument is somewhat confusing since it can have two different applications, and each party is using it in a different way. The New York plaintiffs mention it in discussing the motion for summary judgment and the opponent's burden, while Leesona dwells on the burden of proof that § 282 places on one challenging the validity of a patent. The discussion following has attempted to analyze each in its appropriate sphere.

[14] That, however, is about all that they make clear. To borrow from Judge Wisdom's comments in Hobbs:

. . . The presumption of patent validity is rebuttable. 35 U.S.C. § 282; Radio Corp. of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163. The courts, however, have not distinguished themselves for consistency in their determination of the quantum of proof necessary to rebut the presumption.

. . .

Hobbs v. United States Atomic Energy Commission, 451 F.2d 849, 856 (5th Cir. 1971). See Harrington Mfg. Co., Inc. v. White, 475 F.2d 788, 793 (5th Cir. 1973) and Railex Corp. v. Speed Check Co., 457 F.2d 1040 (5th Cir. 1972).

[15] Exhibit 3 to Sauquoit Fibers Motion for Partial Summary Judgment at 17. [hereinafter referred to as Sauquoit Exhibit]

[16] Sauquoit Exhibit at 11.

[17] Sauquoit Exhibit at 21.

[18] Exchequer Opinion at 30-31.

[19] Memorandum of Points And Authorities In Support of New York Plaintiffs' Motion for Summary Judgment at 16.

[20] The Ninth Circuit Court of Appeals has remarked recently that "[a] bona fide experimental use involves no commercial exploitation." Pickering v. Holman, 459 F.2d 403, 406 (9th Cir. 1972) (emphasis supplied). While this may be somewhat strong, it nonetheless serves to emphasize the duty of the patentee to come forward to dispell any doubt concerning the invention's use for trade or profit.

[21] See pp. 80-81 supra.

[22] The self-serving comments of the inventors should be given even less weight when those associated with them disclaim any independent recollection of occurrences or conversations taking place during the time frame in question. Although extended citation to the many deposition pages of the numerous witnesses deposed during this discovery period to indicate just how pervasive the lapse of memory has been would serve little purpose, one example may prove illuminating. This colloquy took place concerning events in 1966, but it amplifies a condition that has been more or less symptomatic throughout the entire discovery process.

THE COURT: Mr. ________, it is perfectly proper for Mr. Irons to keep repeating these questions because either you are not being candid and forthright in your testimony when you testify to a total lack of recollection or your total lack of recollection would raise serious doubt about your competence to serve as an attorney.

Now, I do not want you to argue with Mr. Irons any more. If he repeats a question a second or third time, simply answer it. I need no observations from you as to whether the questions are repetitious.

Now, I would also suggest to you that you be a little more honest in your testimony here.

THE WITNESS: Your Honor, I am being perfectly honest.

THE COURT: I am noting for the record that insofar as my observation is concerned, you are not being candid. Now, you will simply continue to testify.

THE WITNESS: Your Honor, I resent that. I am being perfectly honest.

THE COURT: You may resent it, Mr. ________. I am suggesting to you that you are not being candid and forthright.

THE WITNESS: And I think you are being perfectly unfair in accusing me of being dishonest about my recollection of what happened in 1966, Your Honor. I have tried to be as honest as I can possibly be in these proceedings, and I have no recollection of what I did six years ago.

THE COURT: Fine, then you continue so to testify. I am noting for the record my observation that in my view you are not being candid and forthright in your testimony. If you persist, that is your answer, you do not recollect.

You may continue, Mr. Irons.

* * * * *

THE WITNESS: Your Honor, with all due respect, and this is why I think that maybe we are having a problem here, I have just been handed an agreement that I have not reviewed—as I say, I have never ever in my life been accused of being dishonest.

THE COURT: You have been accused today either—

THE WITNESS: Yes, sir, the first time in my life.

THE COURT: —either of lacking forthrightness and candor in your testimony or of suffering from such a lack of recollection that it raises serious doubt as to your competence to serve as an attorney, and I stand on that. You may take all the time you wish to review that document.

THE WITNESS: Sir, you do not understand, maybe I—

THE COURT: I am simply suggesting to you you take the time that it takes to review that document in order to be able to answer the question.

[23] Sauquoit Exhibit at 23-24.