dissenting.
In my opinion, the exclusion at the district court level of the proffered testimony of Barnas and Berliner, without more, is sufficient to require a reversal and remand for a new trial and I therefore respectfully dissent. In holding that the evidence was properly excluded, it appears to me the majority opinion rests its decision on matters not reached or considered by the district court, goes beyond the plain language meaning of a trial “without prejudice to the right[s] of the parties to take further testimony” as provided by 35 U.S.C. § 146, and, in finding that case law has put a judicial gloss other than the plain meaning on the phrase, has created a new and stultifying standard for the litigant who desires to appeal a decision of the board of patent interferences. The majority opinion without real support in the record characterizes the appellant’s failure to bring two witnesses before the board as gross negligence when at most it was a reasonable mistake in judgment as to the point at which cumulative evidence becomes wasteful of everyone’s time. Indeed, the district court in the present litigation expressed the opinion in denying the introduction of the testimony of Barnas and Berliner that their testimony would be “cumulative at most.”
Apparently Monsanto did not believe that this court would hold that the failure to produce all witnesses who had knowledge of the proceedings would in and of itself be the basis for its subsequent exclusion in a district court trial, for it argues in its brief that “it is clear that plaintiff made a conscious, deliberate decision not to call Barnas and Berliner as witnesses in the administrative proceeding, and plaintiff is now bound by that decision.” Monsanto then proceeds with an analysis of the facts pertaining to the two witnesses in an effort to support the assertion that there was a deliberate, conscious decision not to call them. This, however, was not the basis of the district court’s decision, nor does the majority opinion of this court, in my reading thereof, rely on a deliberate, conscious withholding decision.
The district court’s ruling in rejecting the proposed evidence was as follows:
The first of defendant’s motions seeks to preclude plaintiff’s use of two witnesses who were not called by it in the interference proceeding referred to above. Krenzer v. Stouffel et al., Patent Interference No. 96,419 (Oct. 24, 1974). These witnesses, Dr. Barnas and Mr. Berliner, are former employees of the plaintiff. Although both left plaintiff’s employment prior to filing the interference, they were known to the plaintiff and its attorney and were available to it as witnesses. *1052The Board of Patent Interferences at p. 8 of its decision referred to plaintiffs failure to call these two witnesses and was therefore required to decide the case with “unwitnessed self-serving statements of the inventor”. Furthermore, plaintiff’s house counsel, Robert Schwartz, testified at p. 14 of his deposition in this case that he believed plaintiff’s best witness would be Dr. Richter, that he was the person in charge of the laboratory and knew everything which was going on, and that the case could be proven up by him. Therefore, any testimony by Barnas or Berliner would apparently be cumulative at most. Under 35 U.S.C. § 146, the record of the Patent and Trademark Office is the record in this case, subject to further cross-examination or the right to introduce further testimony, so long as this right has not been waived. In our opinion, the right has been waived in the case at bar with respect to the witnesses Barnas and Berliner, although plaintiff may make a written offer of proof if it desires. F.R.A.P. 43(c). We find and conclude that defendant’s objection to their testimony should be sustained in the trial of this case. See Globe-Union Inc. v. Chicago Telephone Supply Co., 103 F.2d 722, 728 (7th Cir. 1939); Aqua-Chem Inc. v. Baldwin-Lima-Hamilton Corp., 167 U.S.P.Q. 257 (N.D.Ill.1970). [Emphasis added.]
Indeed, it appears as stated above, that the district court was actuated substantially by the belief that the testimony was of no great consequence: “Therefore, any testimony of Barnas or Berliner would apparently be cumulative at most.” Yet, this conclusion follows by only a few lines the court’s recognition that the board of patent interferences bad, in effect, by specific reference to the failure to call the two witnesses, indicated that as a decisional matter the board thought their testimony was important. Under the board’s approach the excluded testimony filled the alleged void in Krenzer’s proof which had been noted by the board when it indicated that that proof had been lacking only in the one respect of the Berliner and Barnas testimony. It is clear from the Monsanto brief that the missing testimony had become important:
Also, plaintiff had no difficulty locating other less important witnesses who were no longer employed by plaintiff at the time the testimony was taken. Nor did the Board have any difficulty in discerning the significance of the two witnesses who were never contacted.
The majority opinion also recognizes the importance of the evidence by referring to it as having been “proved to be far from cumulative.” Ironically, the district court, which did not admit the evidence, thought it was merely cumulative and, at least in part, justified the exclusion on that basis. The determination of how much to offer at the administrative level now, under the majority opinion, appears to be dependent to a considerable extent upon the hindsight ability possessed by counsel.
The district court did cite in its order the law of this circuit applicable to the present issue as found in Globe-Union, Inc. v. Chicago Telephone Supply Co., 103 F.2d 722, 728 (7Ih Cir. 1939). It is clear from a reading of that case that this court in following the leading case of Barrett Co. v. Koppers Co., 22 F.2d 395 (3d Cir. 1927), was not prepared to abandon all aspects of trial de novo in these proceedings when in the district court, and that this court regarded Barrett as clearly involving conduct approaching intentional or deliberate withholding:
Counsel goes further and insists that the court in the Barrett case did not restrict the principle announced to situations where the evidence was deliberately withheld or otherwise procurable by the use of due diligence. We disagree with counsel. Every opinion must be read with reference to the facts upon which it is based. The Barrett case stands on facts clearly showing intentional withholding of evidence. In fact, even if counsel were correct, we would not go that far. To hold with counsel’s contention is tantamount to judicial abrogation of R.S. § 4915, 35 U.S.C.A. § 63. Such a contention would make it impossible for a plaintiff to meet the test laid down by the doctrine of Morgan v. Daniels, i. e., *1053that the interference-judgment can be overcome “by testimony which in character and amount carries thorough conviction.” [153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657.]
Id. at 728. That this court properly interpreted Barrett is indicated in a later case in the Third Circuit under R.S. Section 4915 (now 35 U.S.C. § 146) in which that court, pointing out that the statute provides that the trial in the district court shall be without prejudice to the right to take further testimony, emphasized that in Barrett the plaintiffs had specifically instructed witnesses not to answer certain questions. Minnesota Mining & Mfg. Co. v. Carborundum Co., 155 F.2d 746, 748 (3d Cir. 1946). It is also to be noted that the Third Circuit, substantially tracking the approach of this court in Globe-Union, observed that “[t]o adopt the view contended for here by the defendants would be to change the nature of an R.S. Section 4915 proceeding and to rewrite the statute.” Id.
The defendant in the present ease attempts to distinguish Globe-Union and Minnesota Mining on the basis that the evidence offered in those cases was that of expert witnesses. This appears to me to be a distinction without a difference; in both cases the contention was unsuccessfully made that the witnesses were available and not offered in the administrative proceedings and therefore under Barrett should not have been heard. Yet that is the standard, i. e., awareness of availability and failure to offer, which the majority opinion, in essence, is adopting.
It is also to be noted in Globe-Union that this court did not specify a stringent standard on procurability or availability:
It seems undisputable that evidence may be available and existent at a given time, and yet not be within the knowledge or “possession and control” of the person desiring to make use of it.
103 F.2d at 728.
It is true that the court in Globe-Union refers to evidence otherwise procurable by the use of due diligence. Nevertheless the parallels between the facts upon which the holding in Globe-Union was based and those in the present case are striking. In the former case the diaries which were attacked in the district court by the expert witness were the subject of a discrediting attempt before the board. The opposing party pointed out in Globe-Union that this additional evidence was available in the Patent Office and under Barrett’s standard he should “produce all the testimony he has on that issue,” and the evidence should have been excluded. The holding of this court in Globe-Union was that the offerer of the evidence “did not intentionally withhold the evidence which he later produced in court,” and the court was not prepared to say that he did not exercise due diligence in procuring the evidence sooner. Id. at 728. In the case before us, Velsicol had produced the diaries before the board and they were subject to attack there. Unfortunately Velsi-col did not bring in two former employees who had witnessed the work because of what appears to be a reasonable mistake of judgment that the diaries were otherwise sufficiently corroborated by the evidence introduced at the board level. This is far from an intentional withholding and unless this court is now prepared to hold to a per se rule that any evidence available at the time of the board proceedings must be introduced, which Globe-Union does not require, the district court judgment should be reversed. While the present majority opinion draws the inference that Velsieol’s failure to introduce the evidence supports an inference that it was guilty of gross negligence, this is a matter that was not determined at the trial level where the determination should have been made, and I do not conceive that the record at the appellate level supports the inference. As this court observed in Globe-Union, “[T]he estoppel principle has its limitations. It should not be used to penalize an innocent party.” Id. at 728.
As I read the majority opinion, it appears to me that the underlying rationale on the present issue, although not perhaps explicitly so stated, is that while originally Barrett was concerned with a deliberate and con*1054scious withholding, later cases have broadened the factual situations in which evidence would not be admitted in the subsequent “without prejudice” district court trial. In this connection, principal reliance upon case law is placed upon Kirschke v. Lamar, 426 F.2d 870 (8th Cir. 1970). Because of the truncated nature of the quotation from this Eighth Circuit case as it appears in the majority opinion, I deem it necessary to set forth the full quotation as to the gamut of conduct requiring exclusion:
Definition of conduct requiring exclusion has run the gamut from “suppression, bad faith, or gross negligence,” Shell Development Co. v. Pure Oil Co., 111 F.Supp. 197, 199 (D.D.C.1953); accord, Polaroid Corp. v. Horner, 197 F.Supp. 950, 954 (D.D.C.1961); Minnesota Mining & Manufacturing Co. v. General Electric Co., 167 F.Supp. 37, 40 (D.D.C.1958); to “fraud, bad faith, or gross negligence,” Monsanto Co. v. Kamp, 269 F.Supp. 818, 822 (D.D.C.1967); to “the suppression or the withholding of evidence so readily available and of such importance * * or oversight of such glaring proportions,” Boucher Inventions, Ltd. v. Sola Electric Co., 76 U.S.App.D.C. 160, 162, 131 F.2d 225, 227 (1942), cert. denied, 318 U.S. 770, 63 S.Ct. 762, 87 L.Ed. 1140 (1943); accord, Schilling v. Schwitzer-Cummins Co., 79 U.S.App.D.C. 20, 22-23, 142 F.2d 82, 84-85 (1944); to “concealed or deliberately withheld,” Jorgensen v. Ericson, 81 F.Supp. 614, 618 (E.D.Mo.1949), aff’d, 180 F.2d 180 (8th Cir. 1950); to “bad faith * * * such as deliberate withholding for some tactical reason,” Knutson v. Gallsworthy, 82 U.S.App.D.C. 304, 164 F.2d 497, 509 (1947); to “negligent in failing to submit,” California Research Corp. v. Ladd, supra. Compare Barrett Co. v. Koppers Co., 22 F.2d 395, 397 (3d Cir. 1927), and Eastman Kodak Co. v. E. I. DuPont de Nemours & Co., 284 F.Supp. 389, 395 (E.D.Tenn.1968), with Nichols v. Minnesota Mining & Manufacturing Co., 109 F.2d 162, 166-167 (4th Cir. 1940), and Globe-Union Inc. v. Chicago Telephone Supply Co., 103 F.2d 722, 728 (7th Cir. 1939), and with Perkins v. Lawrence Sperry Aircraft Co., 57 F.2d 719 (E.D.N.Y.1932). Id. at 874.
With the exception of one reference therein to “negligent in failing to submit,” all of the gamut of characterizations connote some considerable egregiousness at the administrative proceedings level: fraud, bad faith, gross negligence, suppression, deliberate withholding, readily available and of such importance, oversight of glaring proportions, and concealed. Turning to the one reference to “negligent,” which might at first blush appear to indicate that simple negligence would be sufficient, the citation is to California Research Corporation v. Ladd, 123 U.S.App.D.C. 60, 67-68, 356 F.2d 813, 820-21 n. 18 (1966). In that case, there was a reversal to permit the introduction of additional evidence, although the standard of negligence was not deeisionally involved. The reference to negligence is in a marginal note which cites on a “see” basis, Killian v. Watson, 121 U.S.P.Q. 507 (D.D.C.1958). In Killian, a district court decision, the court declined to admit the evidence on its conclusion of law that “the plaintiff was grossly negligent in failing seasonably to submit, during the proceedings in the Patent Office, evidence to overcome the Drown patent . . . .” Id. at 509 (emphasis added). Thus, despite the reference to “negligent” in Kirschke, it appears there is no firm authority for a less egregious negligence standard than that of gross negligence.
Nevertheless, while the majority opinion does not explicitly recognize a simple negligence test, and while the opinion refers to an inference of gross negligence, the ultimate standard set by the majority opinion is that unless the evidence is “new,” whatever that means, or unless the offerer’s diligence has brought in all known evidence no matter how cumulative and repetitious the result may be he is now prejudiced, despite the wording of the statute, in taking further testimony in the district court. One cannot quarrel with estoppel or waiver, as the situation is variously called, being applicable to the deliberate and intentional *1055withholding of evidence for tactical purposes, or, indeed, for no purpose at all. The quest for truth in litigation, however, is not aided by the rigidity of the rule now enunciated in the majority opinion.
While the defendant in the present case, as I have previously indicated, has argued on this appeal that Velsicol made a conscious, deliberate decision not to call the two witnesses, I do not read the record as supportive of this assertion. Certainly the district court, which rested basically on the concept that the evidence was cumulative, did not so find.1
While I do not happily extend the length of this dissent, I feel it is necessary to look at the pertinent testimony in the Schwartz deposition:
Q. Did you argue the case before the CCPA?
A. Yes, sir.
Q. Did you ever discuss with anyone the question of whether Messrs. Berliner or Barnas should be used as a witness in the interference?
A. The only time it came up, in one instance Mr. Parker did show me one notebook entry with Mr. Barnas’ signature as the witness, and he asked me if he was still with the company, and I explained he had been let go. That was all I know of it until I heard the deposition.
Q. How about Berliner, was there any discussion of his testifying at all?
A. His name never came up.
Q. Yet you were aware, were you not, that Mr. Berliner’s signature appeared on certain pages of Dr. Krenzer’s notebook?
A.. My memory is the first time I recall them being on the books was during the taking of the depositions. Mr. Parker did not show them to me, and I don’t recall seeing them before. I may have, but I don’t remember.
Q. Did you ever discuss the possible weakness in the Velsicol case vis-a-vis the proofs, and ultimately found by the Board of Interferences, because of an inability to prove up the things that you were trying to prove?
A. It was my belief on that issue that the best witness would be Dr. Richter. As Dr. Barnas told you today, he was always in that lab. Dr. Krenzer reported to him, and he knew everything going on. I felt that the ease would be proven up by Dr. Richter.
The majority opinion, nevertheless, on the basis of the cold record disagrees with counsel and makes its own independent determination at the appellate level that Barnas and Berliner were the most logical sources of corroboration. Even with hindsight with which counsel are not blessed, but which judges have the opportunity of exercising, I have difficulty in determining how Dr. Richter could be so easily brushed under the carpet.
The majority opinion in addressing the question of whether there “was ample support for the trial court’s finding that Velsi-col had waived its right to introduce the testimony of the two witnesses,” adverts to the above statement of Velsicol’s in-house counsel as supporting an inference that Vel-sicol was aware of the possibility of attempting to procure the testimony of Bar-nas and Berliner. This inference, respectfully, is weak as to Barnas and non-existent as to Berliner. Nothing in the Schwartz testimony indicates more than that he thought that Dr. Richter, the supervisor of Krenzer, the inventor, who had contact with Krenzer, was the best possible corroborator of the inventive work. This is a far cry from either a conscious and deliberate withholding or a gross negligence situation. In Kirschke, on the other hand, the appel*1056lant did not call as witnesses the engineers who had carried out the actual work in reducing the invention to practice. I find nothing more here than that there may have been simple negligence in not engaging in an overkill of evidence by bringing in the two ex-employees. Velsicol did not conceal the fact at the board level that the work of Krenzer had been witnessed from time to time by Barnas and Berliner. That fact was no secret to those involved including Monsanto. It would seem that if Velsi-col was fearful that the testimony of the two would have been detrimental to its cause, Monsanto, who would have been perfectly free to approach the potential witnesses who were no longer employees of Velsicol, could have itself utilized the testimony to defeat the Velsicol priority contention. There is no indication in the record that Velsicol’s failure to call the witnesses stemmed from any motivation other than a good faith belief that the testimony was unnecessary because Dr. Richter, who was always in the laboratory, was the best source of corroboration.
It appears to me from a review of the authorities dealing with the present issue that judicial curtailment of the statutorily stated right under 35 U.S.C. § 146 of a trial “without prejudice to the right[s] of the parties to take further testimony” may well have followed from a blurring of the distinction between a trial with additional evidence and one which is completely de novo. As the majority opinion points out, correctly in my opinion, the section 146 civil action is a hybrid proceeding combining elements of a de novo trial and an appellate review.2 A full scale trial de novo as that term is ordinarily used means a new trial or retrial had in an appellate court in which the whole case is gone into as if no trial whatever had been had in the court below. Black’s Law Dictionary, Rev. 4th Ed. at 1677 (1968). [Emphasis added.] With this definition in mind I refer to marginal note 5 in the majority opinion quoting from Del-ler’s Walker on Patents to the effect that an action under section 146 is conducted as a trial de novo rather than an appeal. This would not seem to be entirely correct as a trial de novo has a broader meaning than that of a lack of prejudice to the submission of additional evidence. The next statement in Deller appears to me to be the key to the present situation in that the district court trial is essentially a review of the board decision and an extension of the Patent Office proceedings.
The meaning of the author becomes clear by reference to his supporting citation, omitted in the majority opinion footnote, Radio Corporation of America v. Philco Corporation, 201 F.Supp. 135, 143 (E.D.Pa., 1961). That case spells out that while under the statute the district court trial has aspects of trial de novo, the statutory mandate is not broad enough to include the raising of totally new issues. While I agree that the de novo aspects should not permit the submission of new issues, this should not cause a blurring without good cause of that phase of a trial de novo which the statute does permit, the submission of additional evidence. In sum, I think good cause has not been shown here.
I should add that I also find the rigidity demonstrated with regard to records kept in the ordinary course of the business of the laboratory somewhat distressing in the light of modern day rules of evidence and the avowed intention of the rules of procedure to facilitate a quest for the truth.
Finally, while I have not based my dissent on the denial by the majority of the applicability of the “rule of reason,” that rejection all the more would seem to indi*1057cate that the plaintiff should have been given the opportunity to demonstrate by witnesses the correctness or incorrectness of its assertion of priority of invention. Very candidly, it appears to me that the district court unnecessarily abandoned its duty to permit a fair trial in overabundant deference to procedural rules (termed by the district court as substantive rules) of the board. Compare Radio Corporation of America, supra.
I do not intend to indicate that Velsicol would prevail upon a new trial. I merely indicate that I think they should have had the opportunity to have presented in the district court the excluded evidence in the interest of fairness and justice.
. The district court in its order of April 14, 1976, the pertinent portion of which is quoted above, ruled that the witnesses would not be permitted to testify. In its final judgment entered November 1, 1976, the court found no reason to change its April ruling, but also with reference to the offer to prove observed that the offer did not show that Barnas witnessed many of the experiments recorded on various pages of the notebooks. It appears to me to fly in the face of reason that laboratory workers who have signed pages of notebooks indicating observation of experiments can be expected many years after the event to have independent recollection of each specific experiment.
. Nevertheless, decision have referred to the district court trial as one de novo. Thus in Kislyn Corporation v. Eastman Kodak Co., 42 F.Supp. 552, 553 (D.N.J., 1942), the defendant’s effort to introduce additional evidence was resisted by its opponent upon the basis of Barrett. The district court there disposed of the contention promptly and firmly:
The argument does violence, not only to the statutory provisions, but to the decision upon which the plaintiff relies. This is a trial de novo .
The district court cited in support of its position, inter alia, Globe-Union, supra.