Stated differently, the argument is that the Board's factual conclusions in an interference proceeding are conclusive on the district court if the dissatisfied party elects, as here, to rely on the record made before the Board. See, e. g., United States v. Szuecs, 100 U.S.App.D.C. 24, 240 F.2d 886 (1957); Radio Corp. of America v. International Standard Elec. Corp., 232 F.2d 726, 729 (3d Cir. 1956). The notion that a new-evidence test inheres in de novo review proceedings finds its source in the statutorily established alternate routes of appeal open to a party dissatisfied with a Patent Office decision. He may either appeal to the Court of Customs and Patent Appeals, 35 U.S.C. ยงยง 141- 144, or file a civil action in the district court, 35 U.S.C. ยง 146. Should he do the former, the statute makes clear that the Court of Patent Appeals "shall hear and determine such appeal on the evidence produced before the Patent Office."
Morgan, 153 U.S. 120, 125 (1894) (emphasis added) (determining the standard of review for a Patent Office decision when no additional evidence was put forth to the Circuit Court). Our Circuit Court, in United States v. Szuecs, 240 F.2d 886 (D.C. Cir. 1957), upheld the Morgan standard of proof that must be applied by a District Court when reviewing a decision of the Patent Office pursuant to 35 U.S.C. ยง 146. "To reach a conclusion contrary to that of the Patent Office," the Morgan standard requires the evidence to carry "`thorough conviction.'" Szuecs, 240 F.2d at 887 (citing Morgan, 153 U.S. at 125) (reversing and remanding the case to the District Court to apply the correct standard of proof).
The most common in the federal system are civil actions to obtain patents or to contest a Patent Office interference determination, and tax suits, the latter including cases, in which de novo evidence is offered to prove that the Commissioner of Internal Revenue abused discretion specifically delegated to him, as well as cases in which the taxpayer seeks to overcome the general presumption running in favor of the Revenue Service's assessments. See, e.g., California Research Corp. v. Ladd, 123 U.S.App.D.C. 60, 356 F.2d 813 (1966); Reynolds v. Aghnides, 123 U.S. App.D.C. 28, 356 F.2d 367 (1966), and cases cited; United States v. Szuecs, 100 U.S.App.D.C. 24, 240 F.2d 886, 887 (1957). An applicant for a patent or both parties to an interference may waive the right to a civil action and appeal to the Court of Customs and Patent Appeals. See 35 U.S.C. ยง 141 (1964).
The civil action before the District Court is intended to be a trial de novo, though the decision of the Patent Office must be accepted as controlling on issues of fact unless the contrary is established by testimony which in character and amount carries thorough conviction. United States v. Szuecs, 100 U.S. App.D.C., 24, 240 F.2d 886 (D.C.Cir. 1957). The dissatisfied party must be afforded the opportunity to elicit and introduce additional evidence, and the court cannot freeze the record on the proceedings before the Board.
On the first appeal we reversed because, in saying that Szuecs was the first inventor, the District Court had applied the wrong standard of proof. United States v. Szuecs, 1957, 100 U.S. App.D.C. 24, 240 F.2d 886. On remand, the trial court used the "thorough conviction" standard which we had prescribed instead of the "preponderance of evidence" standard previously employed, and again awarded priority to Szuecs.
3. The Court cannot overturn the Board's decision "unless the contrary is established by testimony which in character and amount carries thorough conviction." Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894); United States v. Szuecs, 100 U.S.App.D.C. 24, 240 F.2d 886 (1957); Esso Standard Oil Co. v. Sun Oil Co., 97 U.S.App.D.C. 154, 229 F.2d 37 (1956); Abbott v. Coe, 71 App.D.C. 195, 109 F.2d 449 (1939); Polaroid Corp. v. Horner, 197 F. Supp. 950 (D.D.C. 1961). 4. The "thorough conviction" standard imposes a heavy burden on plaintiffs in an action under 35 U.S.C. ยง 146. Union Carbide Corp. v. Traver Investments, Inc., 238 F. Supp. 540 (S.D.Ill. 1965); Shell Development Co. v. Pure Oil Co., 111 F. Supp. 197 (D.D.C. 1953), aff'd, 94 U.S.App.D.C. 86, 212 F.2d 454 (1954).
This doctrine has been applied in numerous cases. Among them are the following: United States v. Szuecs, 100 U.S.App.D.C. 24, 25, 240 F.2d 886, 887; Shell Development Co. v. Pure Oil Co., D.C., 111 F. Supp. 197, 201; Minnesota Mining Mfg. Co. v. General Electric Co., D.C., 167 F. Supp. 37, 40; and Polaroid Corp v. Horner, D.C., 197 F. Supp. 950, 957. We shall now take up the various contentions advanced by the plaintiffs as a basis for overruling the decision of the Patent Office tribunals. It is claimed, first, that defendants Kamp and Jahn, are not entitled to the benefit of the filing date of the German application, because that application was filed not by them but by Alex Kamp and Company. The oath attached to the American application, however, recites that the German application was filed in their behalf.
That principle has been restated and followed in enumerable cases subsequent to Morgan. E.g., Globe-Union, Inc. v. Chicago Telephone Supply Co., 7 Cir., 103 F.2d 722, 727; General Motors Corp. v. Bendix Aviation Corp., N.D.Ind., 123 F. Supp. 506, 515-516; United States v. Szuecs, 100 U.S.App. D.C. 24, 240 F.2d 886; Esso Standard Oil Co. v. Sun Oil Co., 97 U.S.App.D.C. 154, 229 F.2d 37, 40. Upon an interference, the question is which of the competing applicants was the first to conceive and reduce to practice the invention described.
An action under 35 U.S.C. ยง 146 contesting a decision of the Patent Office which has decided a question of priority is tried de novo in the District Court. United States v. Szuecs, 1957, 100 U.S.App.D.C. 24, 240 F.2d 886, 887. In such an action further evidence may be received which strengthens contentions already fully made and supported by testimony before the Patent Office where there has been no suppression, bad faith or gross negligence on the part of the party offering it. Minnesota Mining Manufacturing Co. v. General Electric Co., D.C. 1958, 167 F. Supp. 37.
In other words, the standard of proof to reach a conclusion contrary to the Board on a question of fact is more than just a preponderance of the evidence. United States v. Szuecs, 1957, 100 U.S.App.D.C. 24, 240 F.2d 886, 887. It does not follow, however, that the Court is thereby circumscribed by the Board's interpretations of court decisions or its conclusions of law. Not only does the above rule concerning findings of fact operate to the defendant's benefit but the defendant also has the further advantage in this proceeding of submitting additional evidence.