Thomson Spot Welder Company v. Ford Motor Company/Opinion of the Court

This is a suit in equity brought by the Thomson Spot Welder Company in a Federal District Court in Michigan for the infringement of United States patent No. 1,046,066 for improvements in electric welding, issued December 3, 1912, to the plaintiff's predecessor in title, as assignee, upon an application filed by Johann Harmatta, December 3, 1903. The chief defenses were anticipation, lack of invention, prior public use, and estoppel. The District Court sustained all of these defenses, and dismissed the bill. 268 Fed. 836. The Circuit Court of Appeals-one judge dissenting-held the patent invalid for lack of invention, and, without considering the other defenses, affirmed the decree of the District Court. 281 Fed. 680. On account of a conflict with a prior decision of the Circuit Court of Appeals for the First Circuit, in Thomson Electric Welding Co. v. Barney & Berry, 227 Fed. 428, 142 C. C. A. 124, in which the patent had been held to be valid, this writ of certiorari was granted. 260 U.S. 718, 43 Sup. Ct. 96, 67 L. Ed. 479.

In the present case both the District Court and the Circuit Court of Appeals have held that Harmatta's improvement involved merely the exercise of mechanical skill and not invention. The question whether an improvement requires mere mechanical skill or the exercise of the faculty of invention, is one of fact; and in an action at law for infringement is to be left to the determination of the jury. Keyes v. Grant, 118 U.S. 25, 36, 37, 6 Sup. Ct. 974, 30 L. Ed. 54; Holmes v. Truman, 67 Fed. 542, 543, 14 C. C. A. 517; Hall v. Wiles (C. C.) 2 Blatchf. 194, 11 Fed. Cas. 280, 283; Poppen husen v. Falke (C. C.) 5 Blatchf. 46, 19 Fed. Cas. 1052, 1054; Shuter v. Davis (C. C.) 16 Fed. 564, 566; Blessing v. Copper Works (C. C.) 34 Fed. 753, 754. Ordinarily, therefore, the case would call for the application of the well-settled rule that the concurrent findings of the lower courts on questions of fact will be accepted by this court unless clear error is shown. Wright-Blodgett Co. v. United States, 236 U.S. 397, 402, 35 Sup. Ct. 339, 59 L. Ed. 637; United States v. State Investment Co., 264 U.S. 206, 44 Sup. Ct. 289, 68 L. Ed. --, and cases there cited. We think, however, that this rule should not be strictly applied in cases brought here because of a conflict of decision in the different circuit courts of appeal, and have therefore given consideration to the question as to which of the decisions upon this question of fact, in the light of the prior art, is based upon the sounder reasoning. At the outset it is to be noted that in the First Circuit there was not a concurrent finding on the question of patentability; the District Court having found, as did the two courts in the present case, that the patent was invalid for want of invention. 227 Fed. 428, 433.

Welding is the art, practiced immemorially, of uniting two pieces of metal in one piece by heating those portions which are to be welded to a temperature at which they become plastic and then pressing them strongly together so as to effect a union, as exemplified by a blacksmith when heating in a forge the two pieces to be welded and hammering them together.

The art of electric welding, which was invented in 1886, was well advanced when Harmatta filed his application, having been disclosed in various prior patents for uniting the abutting ends of metal bars, wires, etc., uniting the over-lapped edges of metal sheets, plates, etc., and other purposes.

The patent in suit relates to that branch of electric welding known as spot welding, by which two sheets or plates are welded together face to face, in spots, as a substitute for riveting; this being accomplished by placing the two sheets between two pointed electrodes applied to their exterior surfaces, opposite to one another, which heat the sheets to the welding temperature and exert the required pressure in the line between the points of the electrodes, resulting in welding together the inside faces of the sheets in the spot on that line.

The reasons for which the petitioner claims that this improvement is patentable are thus summarized in its brief:

'Harmatta produced a new result, namely a small round weld (a     spot weld) uniting two plane sheets of metal at any place in      their meeting faces. This was radically new. * *  * (2) To      make this spot weld Harmatta manipulated the articles with      which he dealt, namely the sheets, in a new way by      indiscriminately superimposing one upon the other and he made      his electrodes perform a function, which no electrodes, used      in electric welding, had ever before performed. (3) In so     doing he carried out a new technical process, that is, the      electric current, which generates the welding heat, behaved      and operated in an entirely new way, *  *  * and he applied the      welding pressure to a condition, which seemed to make such      application impossible.'

The opinions of the two District Courts and of the Circuit Court of Appeals for the Sixth Circuit holding that the patent in suit was lacking in invention, are based, in each instance, on a detailed and analytical consideration of the prior art. We take the following extracts from the well considered opinion of the Circuit Court of Appeals:

'The art of electric resistance welding was old and far     advanced in 1903, when the Harmatta patent was applied for. Prof. Elihu Thomson * *  * was a pioneer in that art. In 1886 he obtained process and apparatus patents *     *  * for so-called butt welding, which involved the uniting of      the abutting ends of metal wires, bars, etc., by applying      heat at the joint and the adjacent surfaces by means of      electrodes, and pressing the two pieces together when heated      to welding temperature. There was here true resistance     welding, with pressure of the parts involved, although the      electrode did not exert the welding pressure. In 1889 Thomson     obtained a patent *  *  * for electric riveting, which involved      the heating of the rivet when in place by means of a current      passed through it by the use of electrodes, under pressure      thereon, the effect being not only to swage the rivet and      weld it to the adjoining metal, but apparently (when desired)      to weld together, in part at least, the portions of the      plates immediately adjoining the rivet. In 1891 Thomson     obtained a patent *  *  * for what is called lap-welding. While     the specification states that the invention is specially      adapted to the welding of the overlapped edges of plates, it      *  *  * expressly includes 'welding together strips, sheets,      plates, or bars of metal where it is desirable to form a      joint of considerable length.' According to the      specification, 'the surfaces to be welded are pressed      together to form a union,' the work being fed in the      longitudinal direction of the joint 'through suitable      pressure devices (preferably roller electrodes), the work      being properly arranged, so that the pressure devices will      press the surfaces to be welded together and simultaneously      passing the electric current through the work at the point of      pressure, The electrodes were employed to exert the welding      pressure. The specification further states that 'as the work     is passed through such rolls with a continuous motion each      point, as it comes between the rolls, is heated and the      surfaces pressed together.' *  *  * In 1893 Thomson obtained a      patent *  *  * relating particularly to soldering sheet metal      pieces flatwiser, either by the use of solder or (when applied to tin plates) by      melting the tin sufficiently to establish union thereby. The     electrodes, in the form of clamps or otherwise, served not      only to supply the necessary heat, but to exert sufficient      pressure upon the overlapped sheets to effect their union. A     roller electrode is disclosed, performing the double function      of heating and pressing, and having its periphery corrugated      or grooved *  *  * This was, to say the least, electric      resistance spot soldering. In 1897 Robinson received a patent     *  *  * on so-called projection welding, as specially applied      to the welding of a splice bar to the web of a railroad rail,      the splice bar having upon its inner face a number of      projections which by the application of the heating current      are fused, and by pressure made to form welds between the      projections on the bar and the fused opposing portions of the      rail. Kleinschmidt, in 1898, took out a patent * *  * for a      similar process, and by methods not essentially unlike those      of Robinson.

'Whether or not the Thomson so-called lapwelding invention     should be regarded as an absolute anticipation of the      Harmatta patent, we think the state of the art to which we      have referred left no room for invention in Harmatta. * *  *      We see no distinction upon principle between plane-face      welding and lap-welding; the former certainly embraces the      latter. If Thomson's roller electrode device was capable of     welding a line or seam in a metal lap joint, it was readily      adaptable to line-welding together coterminous plane-face      plates. * *  * We think Thomson's lap-welding invention was in      essence a welding in points. In fact, his line seam was     merely a succession of adjoining points. * *  * It      satisfactorily appears that, although Thomson's roller      electrodes in the form shown in the patent were not      practicably adapted to commercial spot-welding as disclosed      by the Harmatta patent, they could readily be made to do such      spot-welding by the use of the suitable projections upon the face of the      rolls (Thomson later did spot-soldering by the use of such      projections); and assuming that pin electrodes were essential      to successful commercial spot-welding, that form of      electrodes was old, as illustrated by Thomson's electric      soldering patent. * *  * In our opinion the art of soldering      is analogous to that of welding. * *  * By the use of enough      more heat Thomson's soldering device could readily have      effected spot-welding. * *  * No essential difference in      principle between heating at points and heating in spots is      apparent. Projection welding partakes, though not in so     pronounced a sense, of the nature of spot-welding. We agree     with Judge Dodge [227 Fed. 428] that Harmatta's idea of     'making his electric welds small in area rather than large in      comparison with the areas of the opposed surface to be joined      and isolating them, so as to leave each surrounded by a      comparatively large area of unwelded surface,' does not      involve invention in view of the prior art. In other words,     given the desire for a welding in spots, naturally enough      suggested by the prior art and by its commercial development,      we think Harmatta's specific application of the principles of      that prior art involved only the skill of the expert      mechanic. Not only every principle, but every electric and     mechanical process, involved in the Harmatta claims, was well      known in the prior or directly analogous arts, or in      mechanical arts generally. We cannot think, in view of the     prior art, that invention is to be found in the      considerations, separately or collectively, that in Harmatta      no bodily movement of the sheets is required, that the      current is localized and pressure exerted solely by the      electrodes, or by the difference in the form of the      electrodes, or by the difference in amount of extruded metal,      as compared with some of the earlier applications of      resistance welding. Although invention is not necessarily     negatived by the fact that each element of the combination is old, the question of fact whether the      combination itself involves invention in view of the prior      art is always present.

'Our conclusion of noninvention, based upon a review of the     prior art, is materially strengthened by the serious doubt      whether Harmatta thought, when he filed his patent      application, that he had patentably invented anything by the      disclosure of spot-welding as a process or product distinct      from point-welding or linewelding, as well as by the fact      that others previous to the grant to Harmatta, and apparently      in ignorance of Harmatta's claimed invention, successfully      practiced the art of spot-welding. * *  *

'The patent issued nine years after the application was     filed, and after numerous vicissitudes and amendments      (including the entire elimination of the roller-electrode      feature), and after the application had been placed in      interference with the claims of Adolph Rietzel, to whom a      patent had previously been issued on July 20, 1909. * *  *      From the beginning Rietzel's application was owned by      plaintiff's predecessor. The interference was declared in     favor of Harmatta, for Rietzel's failure, as the junior party      to the interference, to take testimony in support of his      claim of priority; plaintiff's predecessor, at the time      owning both the Harmatta application and the Rietzel patent. * *  * But the fact that the award of priority was not based      upon an adjudication on the merits tends to weaken its force. It, however, convincingly appears * *  * that in 1898 (and      about five years before Harmatta's application) Rietzel,      while in the employ of plaintiff's predecessor, in several      instances successfully joined two pieces of lapped metal at      isolated spots by means of a Thomson buttwelding machine; the sheets of metal being united by pressing them together and at      the same time passing the heating current from one electrode      (or so-called contact) to the opposite electrode, at the      selected spot on the meeting surface of the plates, the spots      being restricted in area, so as to leave well-defined and      comparatively extensive areas of no-union completely      surrounding the spots-one of the electrodes or contacts used      being of standard size and form, the other being reduced by      cutting down to a diameter of about three-eighths of an inch. * *  * Rietzel's experience strongly discredits inventive      quality in what Harmatta did several years later, including      his disclosure of the use of pin-electrodes. The fact also     appears *  *  * that at various times, ranging from two years      to five or six years, before the issue of the Harmatta      patent, and apparently in ignorance of his asserted      invention, various manufacturers put out or used spot-welding      machines with commercial success. * *  * These experiences      also tend to discredit invention in Harmatta.

'It follows, in our opinion, from what has been said, that     the effect of the great commercial success of the Harmatta      invention in the hands of plaintiff is entitled to little      weight upon the question of invention, even were that      question otherwise in doubt, which we think it is not.'

281 Fed. 682 et seq.

The opinion of the Circuit Court of Appeals for the First Circuit, on the other hand, contains only general allusions to the prior art and no analysis of the prior patents. While, in considering the defense of anticipation, it is said that the soldering art was remote, the only statement in the opinion bearing directly upon the defense of want of invention, is that:

'In view of the further proposition that the presumptions in     favor of the patent are so far supported in this case by the      insistency of the defense, and the comparatively enormous      expense involved in maintaining it, we cannot question the      present validity of the patent with reference to all propositions      involved in the word 'patentability." 227 Fed. 436, 142 C. C.      A. 132.

The conclusion of fact reached by the Circuit Court of Appeals for the Sixth Circuit, as set forth in its opinion, that in the light of the prior art Harmatta's improvement was lacking in invention, commends itself to our judgment. It involves no error in law. Therefore, without considering the other defenses presented, the decree of that court is

Affirmed.