Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 LARSON ET AL.
JOHENNING ET AL.
Patent Interference No. 101,913
September 24, 1990
Final Hearing May 02, 1990
Waterbed Mattress Molded Top Sheet
Application of Lynn D. Larson, Ronald Lee Larson and Terry L. Stentz, Serial No. 06/897,923 filed August 19, 1986.
Application of John B. Johenning and Charles P. Hall, Serial No. 06/810,081 filed December 17, 1985.
Donald H. Zarley, Bruce W. McKee, Dennis L. Thomte, Michael G. Voorhees, Edmund J. Sease, John A. Beehner, Mark D. Hansing and Mark D. Frederiken. Oral Arugment by John A. Beehner
James B. Kinzer, Alfred H. Plyer, Jr., Thomas E. Dorn, Daniel C. McEachran, Robert V. Jambor, Edward M. Keating and Joel H. Bock. Oral Arugment by Daniel C. McEachran
Bole, R. Smith, McCandlish and Caroff
This interference involves an unassigned application of Larson et al and an application of Johenning et al, assigned to Advanced Sleep Products.
The sole count in issue reads as follows:
In a waterbed mattress including an elongated top sheet having head and foot ends, a bottom sheet and side walls defining a fluid tight receptacle, the improvement comprising, said top sheet including a plurality of elongated depressions and riser portions formed therein and arranged to impart extensibility to said top sheet, said depressions and riser portions being arranged in a non-uniform distribution across the surface of said top sheet so that the extensibility of said top sheet varies at different positions therealong.
The claims of the parties which correspond to the count are:
Larson et al: Claims 1 through 9.
Johenning et al: Claims 19, 23 through 32, 52 through 54, 57 through 65 and 70 through 76.
Both parties submitted evidentiary records pursuant to 37 CFR 1.653, filed briefs under 37 CFR 1.656 and appeared at final hearing for oral argument.
THE JOHENNING ET AL MOTION TO SUPPRESS
Johenning et al filed a motion to suppress the affidavit and cross-examination testimony and identified exhibits [FN2] of junior party witness James Bailey. Johenning et al assert that the above cited testimony and exhibits should be suppressed because Bailey and counsel for Larson et al knew sometime after Bailey signed the affidavit and before his cross-examination deposition that paragraph 10 of his affidavit (LR 10) was false and this fact was not communicated to the senior party. Counsel for Larson et al has submitted his own declaration with the opposition wherein he avers that he was notified by Bailey four days before the cross-examination deposition that additional documents had been found that refreshed Bailey's recollection of the fact that the mold shown in the photographs in evidence as LX 6-1 through 6-6 (also designated as LX 12-1 through 12-3) had been modified to the condition shown therein after July 1985 rather than during July 1985 as stated by Bailey in paragraph 10 of his affidavit. According to the declaration submitted by counsel for Larson et al, he talked to Bailey on the telephone on May 19, 1989 about the newly found documents but did not see them until the morning of the cross-examination deposition on May 23, 1989, and he informed counsel for Johenning et al prior to the deposition that additional documents had been discovered that indicated that the mold had been modified in September 1985. The testimony by Bailey quoted in counsel's declaration is deemed to show that Bailey was not aware of the error in the affidavit when he signed it and that no attempt was made to deceive counsel for Johenning et al about the error during the cross-examination deposition of Bailey.
*2 The motion is denied.
THE LARSON ET AL CASE FOR PRIORITY
Since this interference involves copending applications, the burden is on Larson et al, the junior party, to prove their case for priority by a preponderance of the evidence. Morgan v. Hirsch, 728 F.2d 1449, 221 USPQ 193 (Fed.Cir.1984).
As will be apparent from the discussion hereinafter, there is a controversy in this interference as to whether the inventive entity for the party Larson et al consists of only the Larson brothers or of the Larson brothers and Stentz. The Larson et al application names Lynn D. Larson, Ronald Lee Larson and Terry L. Stentz as joint inventors; however, the preliminary statement submitted on behalf of Larson et al only names the two Larsons as the inventors of the subject matter of the count in issue. All of the claims of the Larson et al application were designated as corresponding to the count on declaration but Larson et al have not filed a motion under 37 CFR 1.633(c) to designate any claim as not corresponding to the count or a motion under 37 CFR 1.634 to delete Stentz as a named inventor.
Johenning et al contend and we agree on the record before us that Stentz is a coinventor with the Larsons of the subject matter in the count and, therefore, he is not available to corroborate the testimony of either of the Larsons with respect to conception or a reduction to practice. Counsel for Larson et al takes the position that Stentz is not a coinventor of the subject matter of the count but argues that he is available as a corroborating witness regardless of whether or not he is a coinventor. Although we hold that Stentz is a coinventor with the Larsons, we have, for the sake of completeness, first considered the evidence as if he were available as a corroborating witness and then point out why we think he is a coinventor and not available as a corroborating witness.
Larson et al conceded during oral argument at final hearing that Johenning et al reduced the invention in issue to practice no later than August 23, 1985. Accordingly, Larson et al must establish a reduction to practice prior to that date in order to prevail. They have not alleged that they are entitled to prevail on the basis that they were the first to conceive coupled with reasonable diligence to a reduction to practice subsequent to that established by Johenning et al (35 USC 102(g)).
Larson et al contend that the evidence presented establishes reductions to practice by them as of December 31, 1979, July 31, 1985 and October 1985. Since Johenning et al reduced the invention to practice by August 23, 1985, Larson et al cannot prevail on the basis of the alleged October 1985 reduction to practice. That purported reduction to practice involves the mold shown in LX 6- 1 through 6-6 and also shown in LX 12- 1 through 12-3, the exhibits mentioned above with respect to the motion to suppress. The mold shown in those exhibits was made in September 1985 (LR 178) and was designed to produce a pattern like that shown in Figure 1 of the Larson et al application with larger diamond shapes in the head and toe regions and smaller diamond shapes in the central region of the top sheet of a mattress.
*3 Lynn Larson testified that the subject matter in issue was reduced to practice in June or July 1985 by using the molds shown in LX 4 and 5. Bailey did not testify with respect to the molds shown in the LX 4 and 5 series of photographs. The testimony of Bailey at LR 188 that "Lynn did other ones before July 1985, that's before I worked with him on these projects"D' referred to by Larson et al on page 10 of the reply brief does not constitute corroboration of a reduction to practice since Bailey was not testifying as to acts that he had performed or observed but was merely stating what one of the inventors had told him. Reese v. Hurst, 661 F.2d 1222, 211 USPQ 936, 940 (CCPA1981). Bailey's testimony is not relied upon to corroborate the purported reduction to practice in 1979. Accordingly, the testimony of Bailey does not provide adequate corroboration of a reduction to practice by Larson et al prior to the August 23, 1985 reduction to practice by Johenning et al.
As noted above, Bailey was not asked any questions about the molds shown in the LX 4 and 5 series of photographs. Stentz stated only that he thought those molds preceded the mold shown in the LX 6 series (LR 112) without indicating any particular date. Thus, even assuming that Stentz is available to corroborate the testimony of the Larsons, he has not established that the molds shown in LX 4 and 5 were in use prior to the Johenning et al reduction to practice. We further note that Ron Larson guessed that the molds of LX 4 and 5 were not made until the spring of 1987 (LR 204). Thus, Lynn Larson's testimony to the effect that the molds of LX 4 and 5 were made in June or July 1985 is completely uncorroborated.
Larson et al rely only on the testimony of joint applicant Stentz to corroborate the testimony of Lynn Larson to the effect that he and his brother Ron conceived the invention of the count and reduced it to practice by the end of 1979. The evidence with respect to this purported reduction to practice consists of the oral testimony of Lynn Larson and Stentz. LX 2-1, 2-2 are copies of photographs taken in 1987 of a thermoforming mold with a flat surface which was being used by the Larsons when Stentz started working for them in June 1979. LX 2-3 is a drawing made by Lynn Larson in 1987 which he says corresponds to a drawing which he made prior to 1984. Since LX 2-1, 2-2 and 2-3 were not in existence in 1979 or at any time prior to the August 23, 1985 reduction to practice by Johenning et al, they are merely considered to be visual aids accompanying Lynn Larson's oral testimony. None of the other witnesses were asked any questions about LX 2-1, 2-2 or 2-3. According to Lynn Larson, LX 2-3 shows an embodiment where the top sheet is varied "to duplicate the form, the profile of the back of the human body. And so we formed an area for the small of the back and another one for the buttocks. And so we had extra material in places where the body would need more material to conform to its shape on the top surface."D' (LR 42). He further testified "[t]hese depressions were made, we had a foam rod in the factory at the time. And we just taped those to the bottom of the mold to create these risers and depressions.....We had flexible foam rods, so we could contour it to the pattern of the outline of the form. And also it would create the corrugation effect from side to side." D' (LR 44-45).
*4 Stentz testified that a thermoforming mold was being used by the Larsons for making production mattress tops when he started working for their company, Land & Sky, in 1979. The tops produced thereby were flat with no impressions in them. The mold was also being used to produce prototypes where objects would be fastened to the flat surface of the mold to form bumps or variable humps in the top sheet to see how it would support a human body in such configuration (LR 100). After the Larsons learned how to use the thermoform mold to make the flat sheets, Stentz says they started throwing shapes into the mold and molding the tops over the shapes. He says the shapes included circles, different shaped bumps, football shaped things, kidney shaped things and they varied the patterns along the top (LR 101). He was not asked whether he had seen a top sheet molded like that shown in LX 2-3 any did not say anything about using foam rods to form the depressions and riser portions as testified to by Lynn Larson. Stentz testified that tops were made using both uniform and nonuniform patterns of depressions and risers, but he said tops made with the depressions and risers arranged in a random fashion proved to be inferior and that concept was dropped relatively early in the game (LR 118). He described the concept at the time as being merely that the human body in the supine position could be supported in a variable fashion (LR 101).
According to Stentz, mattresses made from these top sheets were tested by having people lie on them and determine what was comfortable and what was uncomfortable. Stentz also participated in the tests to determine how it supported his body and how it did not (LR 103).
In our view, the testimony of Stentz fails to corroborate either conception or a reduction to practice on behalf of the Larsons by the end of 1979 or at any time before the date of the Johenning et al reduction to practice. It is not clear from the testimony of Stentz what the Larsons had purportedly conceived of in the sense of what function the top sheet was intended to perform. Lynn Larson testified to the effect that what they wanted to accomplish was to provide more material in the areas of the top sheet where the heavier parts of the body would be located in use. Stentz, on the other hand, said that the concept was to support the human body in the supine position in a variable fashion. Ron Larson did not testify specifically about his pre-1980 activities but described the concept or goal as being for a person to be able to replicate the standing body posture while lying on a waterbed mattress. He said the waterbed mattress of count 1 achieves this goal "[b]y varying the levels of support and slack in the body. In a typical waterbed, you get a concave of the body. And if you don't allow the head and lower body to sink into the water by allowing more slack and less internal support and raising the mid-section of the body, then you're not going to achieve this alignment that we were pursuing."D' (LR 202). Thus, there is a conflict in the testimony of Lynn and Ron Larson as to what goal they were trying to achieve by modifying the top sheet.
*5 In any event, the testimony of Stentz fails to provide corroboration for an actual reduction to practice regardless of the purported goal, since it does not establish that a waterbed mattress having a top sheet "including a plurality of elongated depressions and riser portions formed therein"D' with the depressions and risers "arranged in a non-uniform distribution across the surface of the top sheet"D' was made prior to the end of 1979 or at any time prior to the Johenning et al reduction to practice. In this respect, he did not corroborate Lynn Larson's testimony as to the use of foam rods to form the risers and depressions. The circles, kidney shaped and football shaped bumps referred to by Stentz do not satisfy the count requirement for "elongated"D' depressions and riser portions and are inconsistent with the testimony of Lynn Larson who said nothing about any top sheets having been molded using those shapes. Although he said he had lain on several of the mattresses to see how they supported his body, he did not say what the goal was of the test or whether it had been achieved. His testimony to the effect that patterns with a random, i.e., non-uniform, distribution of depressions and riser portions were found inferior and dropped rather early on is inconsistent with a successful reduction to practice of mattresses so formed. Accordingly, we find that Larson et al have not established that they made or successfully tested a mattress meeting the terms of the count prior to the Johenning reduction to practice. Accordingly, Johenning et al are entitled to judgment in this proceeding.
Although we have determined that Larson et al are not entitled to prevail herein even assuming Stentz may be relied upon as a proper corroborating witness, we will nevertheless point out why we think he is a not only a joint applicant but also a joint inventor with the Larsons of the subject matter of the count and thus not available for corroboration under the circumstances of this case.
As pointed out above, the preliminary statement filed by Larson et al (Paper No. 14) names only the two Larson brothers as the inventors of the subject matter of the count even though all of the claims of the Larson et al application have been designated as corresponding to the count and no motion under 37 CFR 1.634 to delete Stentz as an inventor has been filed. Johenning et al contend that Stentz is a joint inventor with the Larsons and, therefore, cannot provide independent corroboration of conception and/or reduction to practice on the part of the junior party.
Counsel for Larson et al contends that since Stentz was not named as an inventor of the subject matter of the count in the preliminary statement, he is available as a corroborating witness. He cites Paine v. Inoue, 195 USPQ 598 (Bd.Pat.Int.1976); Desch v. Dickinson, 99 USPQ 218 (Bd.Pat.Int.1950); and Lemp v. Randall, 33 App.D.C. 430, 1909 C.D. 455 (1909) for the proposition that joint inventors may corroborate each other's testimony on questions of joint inventorship and says these cases also indicate that coinventors may corroborate each other's testimony concerning reductions to practice (main brief, page 25). We fail to find any indication in the cited cases to the effect that coinventors may corroborate each other's testimony concerning either conception or reductions to practice. In fact the Desch case specifically held that a coinventor is not available as a corroborating witness with respect to conception or a reduction to practice. The testimony of one inventor as to the inventive acts of another joint inventor with respect to conception and/or a reduction to practice cannot, in our view, satisfy the requirement for corroborative evidence independent of the inventor(s), set forth in cases such as Garrels v. Freeman, 21 App.D.C. 207, 1903 C.D. 542 (1903); Reese v. Hurst, supra.; and Coleman v. Dines, 754 F.2d 353, 224 USPQ 857, 862 (Fed.Cir.1985).
*6 Prior to the 1984 change in 35 USC 116 permitting joint applications to be filed even though "each [applicant] did not make a contribution to the subject matter of every claim of the patent"D', it was well settled that an opposing party could rely on the rule that conception and reduction to practice must be corroborated by evidence other than that given by joint applicants. Manny v. Garlick, 135 F.2d 757, 57 USPQ 377, 388 (CCPA1943). Where it was determined that the invention was made by less than all of the named joint applicants, they were required to diligently reform the interference by deleting the noninventor(s) therefrom. In view of the above noted change in the statute, we foresee some relaxation in the rule prohibiting corroboration of conception and reduction to practice by joint applicants. However, in an interference such as this where all of the claims of Larson et al have been designated as corresponding to the count, all of the joint applicants must prima facie be deemed to be coinventors of the subject matter of the count. In other words, the burden is on the party asserting that the joint applicant relied upon as a corroborating witness is not a joint inventor of the subject matter of the count to establish that fact through convincing evidence in the record. Cf. Vanderkooi v. Hoeschele, 7 USPQ2d 1253, 1256 (BPAI1987).
The evidence of record shows that Stentz considers himself to be a coinventor of the subject matter of the count (LR 106-108, 119-120) as do both of the Larsons (Lynn at LR 75-76, 90 and 91; Ron at LR 208).
We note that the molds shown in LX 4, 5 and 6 which Larson et al have tried to rely upon for reductions to practice all include the feature purportedly contributed by Stentz, i.e., the concept of less extensibility in the longitudinally centered portion than at the head and foot ends of the top sheet which is, in fact, the only embodiment of the invention illustrated and described in the Larson et al application. Thus, in our view, Larson et al have not met their burden of showing that Stentz is not a coinventor of the subject matter of the count with the result that he cannot properly be relied upon by them as a corroborating witness.
Since no preliminary statement was filed on behalf of the entity consisting of the Larson brothers and Stentz, that entity is restricted to the filing date of the Larson et al application for purposes of priority.
THE JOHENNING ET AL BENEFIT APPLICATIONS
Since Johenning et al are entitled to judgment on the basis of their August 23, 1985 reduction to practice, the questions as to whether they are entitled to the benefit of their parent application Serial No. 06/591,013 filed March 19, 1984 and/ or their New Zealand application Serial No. 212,977 filed August 2, 1985 are moot. However, for the sake of completeness, we will briefly consider these questions.
*7 Larson et al filed a motion (Paper No. 13) to deny Johenning et al the benefit of the '013 application which was granted by the examiner-in-chief (EIC) in Paper No. 19. In the motion, Larson et al argued that the '013 application disclosed a uniform distribution of depressions and risers portions rather than a nonuniform distribution as recited in the count. The EIC agreed with the position taken by Larson et al. We have reviewed the arguments presented by Johenning et al in the brief but we are not persuaded of any error in the decision of the EIC in denying them benefit of the '013 application and hold that Johenning et al are not entitled to the benefit of said application.
The motion for benefit of the New Zealand application (Paper No. 31) was belatedly filed and was deferred to final hearing in Paper No. 40. The period for filing preliminary motions ended October 26, 1988, the EIC's decision on preliminary motions was mailed January 26, 1989, the junior party's testimony period ended on May 1, 1989 (Paper No. 19) and then this motion was filed June 8, 1989. Johenning et al say the motion was not filed during the period for filing preliminary motions because they had been accorded the benefit of '013 application, which has an earlier filing date than the New Zealand application, on declaration of the interference and thus saw no need to move for benefit of the New Zealand application at that time.
In our view, Johenning et al have failed to show sufficient cause (37 CFR 1.645(b)) to excuse the belatedness of the motion. Since the disclosure in the '013 application does not include Figures 8 through 11 or the description thereof found in their involved application, they should have anticipated a motion by Larson et al to deny the benefit thereof and filed the present motion in a timely manner. Certainly there was no reason to hold off filing the motion once the Larson et al motion attacking benefit of the '013 application was served on them on or about October 26, 1988. However, they did not even file the motion for several months after the EIC granted the Larson et al motion to deny benefit. Thus, Johenning et al have not shown sufficient cause to excuse the belatedness of the motion, and we decline their request to consider the motion under the provisions of 37 CFR 1.655(c). Myers v. Feigelman, 455 F.2d 596, 172 USPQ 580, 584 (CCPA1972).
Judgment as to the subject matter in the count in issue is hereby awarded to John B. Johenning and Charles P. Hall, the senior party. Based on the record before us, they are entitled to a patent containing claims 19, 23 through 32, 52 through 54, 57 through 65 and 70 through 76 corresponding to the count. On the other hand, Lynn D. Larson, Ronald Lee Larson and Terry L. Stentz, the junior party, are not entitled to a patent containing claims 1 through 9 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
James R. Boler
Ronald H. Smith
Harrison E. McCandlish
Marc L. Caroff
FN1. The three member panel which heard oral argument consisted of Examiners-in-Chief Boler, McCandlish and Caroff. Vice Chairman Calvert and Examiner-in-Chief R. Smith were added to the panel for purposes of rendering the decision. Legal support for adding panel members, without reargument, can be found in In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985). Ex parte Remark, 15 USPQ2d 1498 (BPAI1990).
FN2. The Larson et al record will referred to as "LR"D' followed by the page number and the Larson et al exhibits will be referred to as "LX"D' followed by the exhibit number.
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