Kemnetz: Electric Battery Storage Petitioner's Reply Brief Notes

"Claims of Patents Nos. 1,584,149, 1,584,150 and 1,896,020 are invalid"

Point 1:

• The court likewise apparently failed to observe that the issue of priority “in any action for infringement” under *10 paragraph 4th of R. S. 4920, is the identical issue in interference proceedings in the Patent Office under R. S. 4904.

• Again, the court assumed that which was to be proved: namely, that the defendant was “an infringer” instead of a member of the American public who was entitled to rely, in support of his defence of invalidity of the patent there in suit, on the patents granted prior to the importation into this country of the then unpatented and unpublished foreign invention.

Point 2:

• Yet, Shimadzu continued “to withhold (R. II, 1172) the really essential steps of the invention” from the American public for years thereafter and until long after like inventions were brought into commercial use by petitioner in Philadelphia in June 1921.

• Respondents' arguments on these points leave them on the horns of a dilemma. Either Shimadzu did not have the inventions of the claims here in issue until about the time he filed his applications for the patents containing them, or if he did, he withheld, suppressed, and concealed them from the American public until long after some member or members of the American public had here made the inventions and brought them into commercial use. In neither case are the patents in suit valid.

Point 3:

• If the matters there asserted to evince an experimental state and to negative complete invention, have that effect, then respondents have established completely that the patents here in suit are wanting in invention; for those patents make no disclosures of the facts which respondents, on pages 56-58 of their brief, would make indispensable to the existence of the invention.

• Indeed, Shimadzu's patents here in suit show to the point of demonstration that Shimadzu had not arrived, even at the time he filed his several applications for these patents, to that state of knowledge in lead dust manufacture, which petitioner had attained as early as July 24, 1917. DX78 (R. III, 26-29) is a report made in July 1917 by Mr. Kershaw, an employee of petitioner, of the processes employed and the results obtained by petitioner's operation of its so-called Tudor Mill which was a duplicate or reproduction of mills *19 long theretofore in use in Germany for the manufacture of lead dust. (R. I, 539.)

• Patents 1,584,150 and 1,896,020 are, therefore, invalid also because of two years public use of the alleged inventions thereof before the applications therefor were filed (R. S. 4886, and 4887).