concurring.
I am-in full agreement with Judge Newman’s opinion. I write in order to express some additional thoughts respecting 35 U.S.C. § 102(g) as a member of the group which drafted that section, which was new in the Patent Act of 1952, our current statute.
Section 102(g) is pivotal in deciding the priority issue in this case. In my view, considering what I know to have been the intent of the section, it has been thoroughly misapplied by the board and the dissent here, in a manner unsupported by any prior decision of which I am aware. This the board has done by applying to § 102(g) a kind of stultifying literalism, devising out of whole cloth novel propositions of law by misconstruing a section which was intended to be merely a codification of preexisting case law precedents well established in priority disputes, principally in interference practice, as I shall explain.
*1277The complete story of the drafting of the 1952 Patent Act is told in an article I wrote a decade after it came into effect, entitled “Congressional Intent — Or, Who Wrote the Patent Act of 1952?” published for the Southwestern Legal Foundation by BNA in a book entitled “Patent Procurement and Exploitation” (1963) and reprinted in Witherspoon, “Nonobviousness — The Ultimate Condition of Patentability” (BNA 1980). I assured the factual accuracy of the article by submitting it before publication for correction and supplementation to the people most involved. The key person was the late P.J. Federico of the then Patent Office. His official title was Examiner-in-Chief, meaning that he was a member of the Board of Appeals. But at the time involved (1949-1952), and earlier, he was more than that: he represented the Patent Office on legislative matters before Congress and was a close advisor to a succession of Commissioners of Patents. Because of this, in the regime of Commissioner Kingsland, when the House subcommittee on patents decided, in its other capacity as the Committee on Codification of the Laws, to codify Title 35, it fell to Federico to write the first draft of the 1952 Act. That draft was then taken in hand, in collaboration with Federico and the subcommittee staff, by a “Coordinating Committee” of the national patent bar chaired by Henry Ashton of New York. This committee had a two-man Drafting Committee, consisting of Paul A. Rose of Washington and myself, which worked with Ashton, Federico, and the subcommittee staff in putting together the several revisions of the bill which eventually became law. These people were the working nucleus of the full Coordinating Committee which consisted of representatives of thirty patent law associations, patent committees of general bar associations, and industrial associations, which met from time to time and provided much expert input on a nationwide basis. That, in brief, is the explanation of how I became familiar with the purposes and intents of the drafters underlying what I have to say here.
I should also like to explain some further and perhaps now little known facts with respect to Federico’s work. He not only wrote the first draft of the Act himself and actively participated for the next two years in every detail of its revisions but, having been made a special consultant to the House subcommittee in charge of the project, he was also a principal author of House Report No. 1923 on the bill, which was virtually copied by the Senate Judiciary Committee as its report No. 1979, and the author of the section-by-section Revisors Notes. He submitted the latter to Ashton and the Drafting Committee for suggestions. Federico, Ashton, and the members of the Drafting Committee then became principal witnesses at the hearings held by the House Subcommittee June 13-15, 1951, on H.R. 3760, the only hearings held. After enactment of the law, West Publishing Company asked Federico to write a commentary on it for publication in U.S.C.A., which he did, and it was published in 1954 in the first of the volumes containing the new Title 35.* Federico also submitted drafts of the commentary to Ashton and the Drafting Committee for suggestions and thus I became very familiar with it prior to its publication.
Against this background, I will now explain how and why § 102(g) got into the Patent Act. Federico’s first draft did not contain such a section. Early in the work of the Coordinating Committee, Federico pointed out that because the Act repealed all of the old patent statutes, including R.S. 4920, the “second defense” of which had always been assumed to be a justification for interference proceedings, the statutes would no longer contain such justification and something would have to be done about it. That section of the old statute, *1278which was § 61 of the Act of 1870, read in pertinent part as follows:
Sec. 4920. R.S. In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney thirty days before, may prove one or more of the following special matters.
Second: That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; ____
Federico therefore brought in a proposed new section, 22-A, to follow § 22 of his original draft, which was later to become § 102, containing, inter alia, the following:
(b) the invention was in fact invented before the applicant’s invention thereof by another who had not abandoned the invention and who was using reasonable diligence in adapting and perfecting the same.
The parallel with the second defense of R.S. 4920 is clear. The Coordinating Committee adopted it at a May 9-10, 1950, meeting and it was incorporated as § 102(g) in the first bill to be introduced in Congress, H.R. 9133, 81st Cong., 2d Sess., July 17, 1950. This bill was given wide circulation and many suggestions and criticisms resulted. One was that under existing law the prior invention by “another” must have been “in this country.” Therefore, § 102(g) of the next bill, H.R. 3760, 82nd Cong., 1st Sess., April 18, 1951, read:
(g) before the applicant’s invention thereof the invention was in fact made in this country by another who had not abandoned it and who was using reasonable diligence in this country in reducing it to practice or had reduced it to practice.
In the reported hearings on H.R. 3760, p. 31, Ashton told the House subcommittee that the Coordinating Committee had met May 22, 1951, and had adopted a list of suggested changes in the bill, which list had been previously submitted to the House subcommittee. The list is printed at p. 33 of the hearings and includes the following very pertinent item under § 102:
Paragraph (g): The Coordinating Committee was not satisfied with either the language of the Bill or the suggested changes proposed at the meeting since none of them wholly took care of the situation. The matter was left to Mr. Federico to prepare a redraft. After consultation with others Mr. Federico recommends the following paragraph which is intended to codify the existing law [emphasis mine]:
“(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”
That recommended language is the statute as it is today. Its exact origin is obscured by time. It is of interest to note, however, from the aforesaid hearings (p. 51), that it was also adopted in the proposal for changes made to the subcommittee on behalf of the National Association of Manufacturers committee on patents in the testimony of its advisor, Mr. George E. Folk, who was a very active member of the Coordinating Committee and whose expertise in patent law was manifest from his career of 53 years. It included 2 years as a Patent Office examiner, 5 years in the Interference Division thereof writing opinions on priority, 10 years in private practice, 22 years in the patent department of American Telephone & Telegraph Co., of which he became head, and 13 years with the NAM committee. (Hearings, p. 53.)
Testimony on § 102(g) before the subcommittee included: Federico: “Paragraph (g) relates to the question of priority of invention between rival inventors.” (Hearings, p. 38) The Revision Note in House Report No. 1923 says of paragraph (g):
*1279“This paragraph retains the present rules of law governing the determination of priority of invention” (p. 18). The text of the Report makes the same statement Federico made in his testimony. All that Federico had to say about § 102(g) in his 1954 U.S. C.A. Commentary was this:
Paragraph (g) relates to prior inventor-ship by another in this country as preventing the grant of a patent. It is based in part on the second defense in old R.S. 4920 ... and retains the rules of law governing the determination of priority of invention developed by decisions. [Emphasis mine.]
Charles J. Zinn, who was codification counsel to the House patents subcommittee during the drafting of the 1952 patent act and who was intimately familiar with it, also wrote a commentary published in the Dec. 20, 1952, U.S.Code Congressional and Administrative News as a special section. All he had to say about § 102(g) was this (p-7):
The provisions relating to the determination of priority of invention contained in subparagraph (g) are unchanged in substance. [Emphasis mine.]
That is to say, they were unchanged from existing priority law as the courts had made it. Nowhere in the whole legislative history is there even a hint of any concept of forfeiture such as the dissenting opinion herein would apply.
Anyone having a scholarly interest in the philosophy underlying the old law will find much of it in Robinson on Patents § 390 (1890) and the cases reviewed in its footnotes.
The Words “suppressed, or concealed” in § 102(g) Have No Definite Meaning
These words were included in the section with no other intention than to codify preexisting case law pertaining to priority determinations in interferences or infringement suits. One must, therefore, look to the prior cases and the fact situations involved in them to determine what is meant by “suppressed, or concealed.” Their import cannot be ascertained merely by con-suiting dictionaries or one’s inner consciousness. Those drafting the section were well aware that these terms do not explain themselves. In contemporaneously reporting on the Bill to the New York Patent Law Association in November, 1952, between its enactment and its effective date, January 1, 1953,1 explained, in a talk of which about 1000 copies were distributed:
The purpose of paragraph (g) is to codify the law on determining priority, and it also preserves in the statutes a basis for interferences. It uses the words (which are new in this connection in this statute) “abandoned, suppressed, or concealed.” And for the meaning of those words you will have to look into the case law, such cases, for example, as Mason v. Hepburn, 13 App.D.C. 86 [1898], and the cases following it and not following it.
In Mason v. Hepburn, there was a period of 7 years between Mason’s actual reduction to practice of the invention (a magazine clip for a gun) and his filing of a patent application. The court said:
Not having been given or abandoned to public use there was nothing in the mere lapse of time to prevent Mason receiving a patent. (Bates v. Coe [8 Otto 31], 98 U.S., 31, 46 [25 L.Ed. 68] [1878].) [My emphasis.]
What the Supreme Court said in Bates v. Coe was this:
Inventors may, if they can, keep their inventions secret; and if they do for any length of time, they do not forfeit their right to apply for a patent, unless another in the mean time has made the invention, and secured by patent the exclusive right to make, use, and vend the patented improvement. Within that rule and subject to that condition, inventors may delay to apply for a patent____ [Emphasis mine.]
I am merely reporting what the Court said; I do not subscribe to the notion that the second inventor must have secured a patent, for the law has clearly evolved a less stringent rule. I merely emphasize that *1280there is no rule of forfeiture from mere lapse of time without activity, nor has there ever been such a rule.
The Mason v. Hepburn decision was that Mason, the first inventor in fact, having “concealed” his invention for 7 years by doing nothing with it after an actual reduction to practice, and having filed his application only after seeing Hepburn’s patent in the Patent Office Official Gazette, was not entitled to the priority award in the interference. The court said “Hepburn must be held to be the first inventor in the sense of the law regulating the grant of patents (Rev.Stat. sec. 4886.).” The important fact is that Hepburn entered the field while Mason was doing nothing, which he would probably have continued to do but for having been spurred into activity by seeing Hepburn’s patent. Here, by contrast, Paulik was actively proceeding to patent before Rizkalla did anything (on the record before us). The court also rested its decision on equitable principles, winding up its opinion with the following:
The true ground of the doctrine, we apprehend, lies in the spirit and policy of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting in perfect good faith that which he and all others have been led to believe has never been discovered by reason of the indifference, supineness, or willful act of one who may, in fact, have discovered it long before. [My emphasis.]
Robinson On Patents § 390, supra, preceded that opinion by 8 years and was cited in it. It supplied the basic philosophy.
As Judge Newman has pointed out, the numerous CCPA/CAFC cases have applied equitable principles on a case-by-case basis to these priority problems. Doing the same here, the only sanction it is proper to apply against Paulik is to deprive him of the right, as against Rizkalla, to rely on the date of his earlier reduction to practice in establishing “priority” because of the long delay thereafter, while sustaining his right to rely on the time of his revived activity if it is connected by diligence to his filing date. If that revival date antedates the earliest date established by Rizkalla, given that diligence, Paulik is entitled to the priority award. This procedure would be far from novel. It is exactly what was stated to be the law over a century ago in Farmer v. Brush, 1880 C.D. 5 (digested in fn. 1, Robinson § 390, supra), where Commissioner Paine said (p. 8):
He [the inventor] may abandon or forget his invention, provided he resumes or recalls it before another makes the invention. But his rights do not, in either case, relate back through the intermediate “vacuum ” to the original invention, so as to give him the benefit of its date against a rival inventor.
The Mason v. Hepburn principles have been applied in several CCPA opinions applying the “suppressed or concealed” concept to a variety of fact situations of great diversity. It may truthfully be said that each case has given a new shade of meaning to the statutory words, as does the present case, and only thus is their true import evolved.
In short, “suppressed or concealed” means only what courts say it means in each case. It is like deciding obviousness or negligence. No prior case — as can be assumed from the fact that this is a case of first impression, nothing to the contrary having appeared — compels the meaning which has been given to these words by the board herein. Deciding whether a party has “suppressed or concealed” is arriving at a conclusion of law, not finding a fact. In each case, the question is whether the facts as to what was or was not done lead to the legal conclusion of “suppressed, or concealed.”
To put the finger on the crucial flaw in the board’s reasoning, I find it in these statements:
We agree with Rizkalla that even if Paulik demonstrates continuous activity from prior to the Rizkalla effective filing date, to his filing date that such *1281would have no bearing on ... priority....
It is of no significance in the case of a party who is not the last to reduce to practice. [My emphasis.]
It must be recognized that we are deciding a priority issue: which party is to be regarded as the “first” inventor in law, regardless of fact. The award, as the CCPA several times decided, should be to the one most deserving from a policy standpoint. In deciding who is prior in law, every fact has a “bearing” and is of “significance” and must be weighed on the scales of justice. It is of the utmost significance here whether Paulik was actively proceeding to patent his invention prior to any date established by Rizkalla, and thus the first to be on the way to giving the public the benefit of the invention. That is what a “priority” decision is all about.
Rizkalla and the board are simply playing games with the language of paragraph (g), which was not written to be given a hypertechnical construction but merely in an attempt to sum up concisely existing priority law based on over a century of precedents, an attempt which proved to be rather difficult even for experts.
With respect to the board’s playing with the words of paragraph (g), it was, of course, trying to make something out of the phrase “the reasonable diligence of one who was first to conceive and last to reduce to practice” (my emphasis), in effect saying that Paulik’s diligence from before Rizkalla’s earliest date to Paulik’s filing date is of “no significance” because Paulik was not the last but the first to reduce to practice! But the reason (g) was worded as it was, as I have explained above, is that it was an effort to restate concisely fundamental interference or priority law. In that law, it was, and still is, an elementary principle that one who is both the first to conceive and first to reduce to practice does not have to show diligence at all. Underwood’s Interference Practice § 74 (1928); Rivise and Caesar, Interference Law and Practice, Ch. XIII, especially §§ 173 and 174(2) (1940). To take a statement that diligence shall be considered in the situation where it had long been required and turn it into a prohibition to consider it, or a ground for refusing to consider it, is about as perverse a construction as can be imagined. The old rule just stated does not, of course, apply here to Paulik’s need to show diligence connecting his revived activity from just prior to Rizkalla’s earliest proven date to his filing date or a reduction to practice, according to the established law. The statute does not deal with the situation here.
Since the drafters of § 102(g) were only trying to provide a basis for interferences in the statute and state existing case law, no other “intent” can be attributed to Congress, especially an intent to create a forfeiture.
The Cases — None Has Decided This Issue
A case is binding precedent for what it decides, not for everything the author happens to say in the supporting opinion, especially when separated from its factual background.
Two cases are relied on. They are Peeler v. Miller and Shindelar v. Holdeman.
I wrote Peeler. It has been characterized as virtually identical to the present case in its significant aspects, but it definitely is not. Peeler filed his patent application while Miller was inactive and 9 months before Miller resumed activity directed toward filing. Whatever I said in the opinion was in connection with that fact situation. Had the facts been as they are here, I would have decided differently. Only by ignoring this significant difference can Peeler be made to resemble this case.
Shindelar, in which I of course participated, was decided, as the opinion makes amply clear (628 F.2d at 1343, 207 USPQ at 117), on the basis that it was indistinguishable from Peeler, and Shindelar was held to have “suppressed or concealed” by reason of a 2lk year delay between a reduction to practice of his hay baler and the filing of *1282the patent application, at least two years of which were “unaccounted for.” The fact situation before this court in the present case was, of course, not considered in the opinion, notwithstanding one could deduce that Shindelar’s assignee’s attorney must have done some work on the application more than 2 days before it was filed. (The parties filed within two days of each other.) However, if one takes that speculative approach to the case, it would also have to be speculated that Holdeman’s attorney must have been working more than two days also; and who could say who was prior? But cases must be interpreted according to the facts of record involved in them. Holdeman elected to rely on his earlier filing date, which had made him senior party, thus placing the burden of proof on Shindelar, and the CCPA decided the case accordingly. What I particularly point out about Shindelar is that the opinion both opens and closes with the admonition that “each case involving the issue of suppression or concealment must be considered on its own particular set of facts.” The set of facts here was not there considered. It is therefore no precedent here.
The Shindelar opinion (628 F.2d at 1342, 207 USPQ 116, col. 1) contains an erroneous statement of “public policy inherent in § 102(g),” with a footnote to dictum in Horwath v. Lee, 564 F.2d at 950, 195 USPQ at 703, where it was said:
Against the rule that mere delay will not alone establish suppression or concealment stands the linchpin of the patent system — early public disclosure— which is fostered by the § 102(g) codification of existing law____[My emphasis.]
These statements require modification or explanation or both. I think what the author probably had in mind is the patent system’s policy of inducing public disclosure of invention by offering a right to exclude, because as the Supreme Court has held, there is no requirement on an inventor for early filing. There is no statutory requirement for early filing. Section 102(g) deals only with priority disputes, which are between private parties, and with respect to them courts take into consideration which inventor is first to proceed toward patenting and thereby toward public disclosure.
An inventor can delay as long as he likes, in the absence of commercialization (see Metallizing Engineering Co. v. Kenyon Bearing and Auto Parts Co., 153 F.2d 516, 68 USPQ 54, cert. den., 328 U.S. 840, 66 S.Ct. 1016, 90 L.Ed. 1615 (1946)), if he is willing to risk having to show in an interference or in facing a defense of prior invention that he has the better right to the patent as between the contesting parties. On the facts shown by the present record, Paulik appears to have the better right when equities, rather than statements in opinions on unlike fact situations, are considered. And, finally, there is a question of fairness; why should Paulik be penalized for having done early work if, without reliance on it, he is still ahead of Rizkalla? There is more to § 102(g) than its bare words, namely, over a century of carefully thought out case law which must not be ignored in construing it. Two or three recent opinions dealing with entirely different fact situations do not control.
MARKEY, Chief Judge,additional views.
I agree with the opinions of Judges Newman and Rich. I write only to explicate the importance, as I see it, of those opinions to the functioning of the patent system and the effect of our decision on inventors whether self-employed, employed by small businesses, or employed by large corporations.
The sole issue is priority of invention. Though patents frequently issue after the conduct of interference proceedings, they need not. Patentability is not ancillary to priority. Correge v. Murphy, 705 F.2d 1326, 217 USPQ 753 (Fed.Cir.1983).
On this record, Paulik was the actual first inventor. Because his corporate employer took no action to file on the disclosure he made to its patent department for a period of about four years, the Board held that he had suppressed or concealed the *1283invention. The Board disregarded the renewed activity of Paulik’s patent department, even though that was one or two months before the earliest date relied on by Rizkalla in this interference (his March 10, 1975 filing date). Paulik’s renewed activity resulted in the filing of his patent application on June 30, 1975, which was fifteen weeks after Rizkalla’s earliest date. On that basis, the Board awarded priority of invention to Rizkalla, the second inventor on this record.
The notion that a period of inactivity following a reduction to practice or, as here, following disclosure to a patent department, cannot be cured before the earliest date of another is at best draconian. On the present facts, no basis exists for considering Paulik a Pariah.
A literal reading of § 102(g) is not here involved. That statute says not a word on whether a suppression or concealment can or cannot be cured before the filing date of another. The court is therefore presented with a choice. Operating in the interstices of the statute, the court may read § 102(g) as permitting or forbidding such curing. Given that choice, it would seem imperative that the court choose the rule least disruptive of the daily workings of the patent system.
Nothing in the statute or in the cases requires the promulgation by this court of a rigid rule describable only as “once a suppressor, always a suppressor.” If, for example, Paulik’s renewed activity had resulted in the filing of his application fifteen weeks and one day sooner, I cannot suppose that the Board or any court could properly require an award of priority to Rizkalla on the present record. Similarly, if Rizkalla had never filed, I cannot suppose that a patent issuing on Paulik’s application could be subsequently attacked on a suppression or concealment rationale. Again similarly, if Rizkalla had provoked an interference with that issued patent of Paulik, I cannot suppose that Paulik would not be entitled to rely at least on his date of renewed activity.
In this case, Paulik took steps, before Rizkalla’s earliest date, to make the invention publicly known. In Correge, supra, this court quoted this (at 1330) from the Court of Claims opinion in International Glass Co. v. United States, 408 F.2d 395, 403, 187 Ct.Cl. 376, 390, 159 USPQ 434, 441 (1968):
The courts have consistently held that an invention, though completed, is deemed abandoned, suppressed, or concealed if, within a reasonable time after completion, no steps are taken to make the invention publicly known. [Emphasis added.]
The patent system does not operate in a vacuum. Patent applications are expensive. Nothing in the law precludes a pause in a series of steps taken to make an invention publicly known. The risk that another may file during a pause period is sufficient to discourage suppressors and concealers. For this court effectively to require that applications be filed on every shadow of a shade of an idea immediately upon its conception, or risk loss of the opportunity to patent (and potentially the right to make, use, or sell the invention), would impose a new and onerous rule. To render a restart after a pause meaningless does not contribute to a smooth working of the patent system. That result is neither required by statute nor intended by Congress. The rich corporation might well be able to flood the Patent Office with rushed applications and with refilings of those applications, avoiding all pauses on the way to filing a patent application. Less affluent businesses and individual inventors, however, would find it extremely difficult, if not impossible, to participate in a patent system so conducted.
On the other hand, I can see no harm to the patent system in a determination that a period of inactivity can be cured by a resumption of activity before the filing date of another and a requirement that the question of priority be then fought out on the basis of the date of renewed activity on the one side and whatever may be the earliest date established on the other side.
In the replacement Title 35 volume supplied to subscribers within the past few months, the much-cited Federico Commentary On The New Patent Act has, for some inexplicable reason, been omitted. It is suggested that those still in possession of the old volume take pains to retain it.