127 F.2d 888 (1st Cir. 1942), 3744, Hanovia Chemical & Mfg. Co. v. David Buttrick Co.

Docket Nº3744.
Citation127 F.2d 888, 54 U.S.P.Q. 118
Party NameHANOVIA CHEMICAL & MFG. CO. v. DAVID BUTTRICK CO.
Case DateApril 23, 1942
CourtUnited States Courts of Appeals, Court of Appeals for the First Circuit

Page 888

127 F.2d 888 (1st Cir. 1942)

54 U.S.P.Q. 118

HANOVIA CHEMICAL & MFG. CO.

v.

DAVID BUTTRICK CO.

No. 3744.

United States Court of Appeals, First Circuit.

April 23, 1942

Harrison F. Lyman, of Boston, Mass. (William R. Woodward and Fish, Richardson & Neave, all of Boston, Mass., on the brief), for appellant.

Clair V. Johnson, of New York City (Robert L. Thompson and Roberts, Cushman & Woodberry, all of Boston, Mass., and Elmer R. Helferich and Leonard A. Watson, both of New York City, on the brief), for appellee.

Before MAGRUDER, MAHONEY, and WOODBURY, Circuit Judges.

WOODBURY, Circuit Judge.

This appeal is from a judgment for the defendant entered by the District Court in a suit for infringement of claims 1 and 4 of a patent (No. 2, 001, 555) issued to one Trebler on May 14, 1935, for a device for the irradiation of milk with the ultra-violet rays. The plaintiff is a New Jersey corporation engaged in the business of manufacturing scientific equipment, including mercury vapor lamps. Its title to the Trebler patent is admitted. The defendant, a Massachusetts corporation, is alleged to have infringed this patent by irradiating milk in its dairy with a device known as a 'Type Y.N. Milk Irradiator' manufactured by the National Carbon Company, Inc. The National Carbon Company, Inc., primarily a manufacturer of lamps and arc carbons, is openly defending this suit.

The District Court did not consider the question of infringement but based its judgment for the defendant solely on the ground that the Trebler patent was invalid in that it disclosed no patentable advance over the prior art. In its opinion that court said, 39 F.Supp. 646, 651: 'The evidence as to prior knowledge, use, and art leads to the conclusion that Dr. Trebler took certain obvious steps in the art and whatever changes he made did not amount to invention. He took no forward step in the art upon which invention could be predicated. There was no new mode of operation in the device described in the patent in suit. No new result was produced. The patentee's construction reflected nothing more than the mechanical skill of one versed in the prior art.'

The question for us is whether this conclusion of non-invention is to be sustained, and this raises the further question of how that conclusion is to be regarded, -- whether it is to be regarded as one of fact or as one of law. If it is one of law, it comes to us unweighted by the finding of the court below; if it is one of fact, we cannot reverse under Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A.following section 723c, unless we conclude that the result reached by the District Court is clearly erroneous.

In the recent case of B. F. Sturtevant Co. v. Massachusetts Hair & Felt Co., 122 F.2d 900, 906, we held, citing Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098, 1 that the question of patentable invention was one of fact, and, according face value to that statement, concluded that we ought not to set aside the District Court's answer to that question unless clear error appeared. This approach to the problem is clearly sanctioned by some of the

Page 889

authorities, 2 but in spite of this the fact remains that there are in the reports a great number of cases in which federal appellate courts 3 have themselves, on the records before them, decided the question of patentable invention without according any weight whatever to the conclusion thereon reached below. Cases of this sort are too numerous to cite but the case of Potts v. Creager, 155 U.S. 597, 15 S.Ct. 194, 39 L.Ed. 275, and the recent case of Weidhaas v. Loew's, Inc., 2 Cir., 125 F.2d 544, are typical.

We have been unable to find any analysis by any court justifying this latter technique of decision in view of the repeated general statements that the question of invention is one of fact, but the Supreme Court has sanctioned it in some situations. In the case of Heald v. Rice, 104 U.S. 737, 749, 26 L.Ed. 910, that court said: 'In the present case the question of the identity of the invention in the original and reissued patents is to be determined from their face by mere comparison * * * . That is, if it appears from the face of the instruments that extrinsic evidence is not needed to explain terms of art, or to apply the descriptions to the subject-matter, so that the court is able from mere comparison to say what is the invention described in each, and to affirm from such mere comparison that the inventions are not the same, but different, then the question of identity is one of pure construction, and not of evidence, and consequently is matter of law for the court, without any auxiliary matter of fact to be passed upon by a jury, if the action be at law.'

Then later, the same court in Singer Mfg. Co. v. Cramer, 192 U.S. 265, 275, 24 S.Ct. 291, 295, 48 L.Ed. 437, a case in which only the question of infringement was involved, said, citing Heald v. Rice, 'As in each of the patents in question it is apparent from the face of the instrument that extrinsic evidence is not needed to explain terms of art therein, or to apply the descriptions to the subject-matter, and as we are able from mere comparison to comprehend what are the inventions described in each patent and from such comparison, to determine whether or not the Diehl device is an infringement upon that of Cramer, the question of infringement or no infringement is one of law and susceptible of determination on this writ or error.'

Again in the very recent case of United States v. Esnault-Pelterie, 303 U.S. 26, 30, 58 S.Ct. 412, 82 L.Ed. 625, the above cases and Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 36, 50 S.Ct. 9, 74 L.Ed. 147, referred to in note 3 above, were cited by the Supreme Court as authority for 'the rule that where, with all the evidence before the court, it appears that no substantial dispute of fact is presented, and that the case may be de determined by a mere comparison of structures and extrinsic evidence is not needed for purposes of explanation, or evaluation of prior art, or to resolve questions of the application of descriptions to subject-matter, the questions of invention and infringement may be determined as questions of law.' (303 U.S. 26, 58 S.Ct. 414, 82 L.Ed. 625.)

It seems that the conflict between the frequently reiterated categorical statement that the question of invention is one of fact and the almost innumerable instances in which the courts have dealt with it as though it were one of law can only be explained by breaking the question of patentable invention down into its component parts. In the broad question there is first the double question; the 'auxiliary matter of fact' referred to in Heald v. Rice, supra, of what the prior art was and what the patentee did to improve upon it, that is, what the appliances of the prior art were, how they operated and what they did, and what the patentee's alleged invention is, how it operates and what it accomplishes, -- and then, when these questions have been answered, there arises the further question of whether what the patentee did is properly to be classified as an

Page 890

invention over the prior art and given protection as such or whether it is not. This is what the Supreme Court called the 'ultimate' fact in United States v. Esnault-Pelterie, 299 U.S. 201, 205, 57 S.Ct. 159, 81 L.Ed. 123.

The nature of the prior art and the nature of what the patentee did to improve upon it must always be questions of fact. They may be relatively simple ones or they may be exceedingly complicated and involved, but questions of fact they must always remain. The question of the name to be given to what was done by the patentee, whether it is to be called an invention over the prior art or whether it is not, is a question fundamentally of the meaning of the words used in the statute, 35 U.S.C.A. § 31, and as such would seem to be a question of law. Whatever it is, however, the second part of the question is for us to decide for ourselves, as the great number of authorities referred to above recognize, at least tacitly, and as the above quotations from decisions of the Supreme Court indicate. But, from those quotations it also clearly appears that the first part of the question, although one of fact, is not always for the District Court, subject only to review by us for clear error. The authorities quoted above establish that not only when there is no substantial dispute either as to the devices of the prior art or as to what the patentee did, but also when the prior art and what the patentee did is clearly apparent to us from the record and the exhibits, then it is for us to compare the alleged invention with the prior art and from our own comparison to say whether the patentee's structure is to be classified as a patentable invention over the prior art or whether it is not. See Butex Gas Co. v. Southern Steel Co., 5 Cir., 123 F.2d 954. On the other hand it is equally well established that when conflicting expert testimony must be heard and evaluated in order to understand the nature of the prior art and the nature of what, if anything, the patentee did to improve upon it, then it is for the court below to compare the devices and, unless its comparison is clearly erroneous, all that remains for us is to say, on that comparison, whether or not the thing patented is entitled to rank as an invention. See Trane Co. v. Nash Engineering Co., 1 Cir., 25 F.2d 267, 268, and cases cited in footnote 2 above.

The only cases in which the statement that the question of patentable invention is one of fact is literally applicable are those in which the findings of the District Court on obscure and disputed issues as to the nature of the device patented and as to the nature of the devices of the prior art are, unless clearly erroneous, decisive of the ultimate question of invention. That is to say, the broad...

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19 practice notes
  • 77 F.Supp. 861 (S.D.Cal. 1948), 7734, Blanchard v. J.L. Pinkerton, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit Southern District of California
    • 13 de Maio de 1948
    ...make weight to be thrown into the scale when invention is in doubt. ' Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888, 894. And see, Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 1937, 302 U.S. 490, 498, 499, 58 S.Ct. 291, 82 L.Ed. If the pr......
  • 360 F.2d 977 (8th Cir. 1966), 18054, American Infra-Red Radiant Co. v. Lambert Industries, Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • 20 de Maio de 1966
    ...Rohr Aircraft Corporation v. Rubber Teck, Inc., 266 F.2d 613, 618 (9 Cir. 1959); Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 127 F.2d 888, 890 (1 Cir. 1942); Fritz W. Glitsch & Sons v. Wyatt Metal & Boiler Works, 224 F.2d 331, 335 (5 Cir. 1955); Nickerson v. Bearfoot Sole......
  • 272 F.2d 254 (9th Cir. 1959), 16386, Rankin v. King
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 12 de Novembro de 1959
    ...82 L.Ed. 625; Heald v. Rice, 1881, 104 U.S. 737, 26 L.Ed. 910. Cf. Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888. [7] Vermont Structural Slate Co. v. Tatko Bros. Alate Co., 2 Cir., 1956, 233 F.2d 9, 10. And cf., Rothe v. Ford Motor Co., 1958, 102 U.S.App.......
  • 170 F.2d 34 (9th Cir. 1948), 11667, Faulkner v. Gibbs
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 8 de Outubro de 1948
    ...Inc., v. Caterpillar Tractor Co., 9 Cir., 85 F.2d 628, 630; Hanovia Chemical & Manufacturing Co. v. David Butterick Co., 1 Cir., 127 F.2d 888, 889. [2] Page v. Myers, 9 Cir., 155 F.2d 57. [3] See Wire Tie Mach. Co. v. Pacific Bos Corp., supra. See also Continental Paper Bag Co. v. Easte......
  • Request a trial to view additional results
19 cases
  • 77 F.Supp. 861 (S.D.Cal. 1948), 7734, Blanchard v. J.L. Pinkerton, Inc.
    • United States
    • Federal Cases United States District Courts 9th Circuit Southern District of California
    • 13 de Maio de 1948
    ...make weight to be thrown into the scale when invention is in doubt. ' Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888, 894. And see, Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 1937, 302 U.S. 490, 498, 499, 58 S.Ct. 291, 82 L.Ed. If the pr......
  • 360 F.2d 977 (8th Cir. 1966), 18054, American Infra-Red Radiant Co. v. Lambert Industries, Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • 20 de Maio de 1966
    ...Rohr Aircraft Corporation v. Rubber Teck, Inc., 266 F.2d 613, 618 (9 Cir. 1959); Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 127 F.2d 888, 890 (1 Cir. 1942); Fritz W. Glitsch & Sons v. Wyatt Metal & Boiler Works, 224 F.2d 331, 335 (5 Cir. 1955); Nickerson v. Bearfoot Sole......
  • 272 F.2d 254 (9th Cir. 1959), 16386, Rankin v. King
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 12 de Novembro de 1959
    ...82 L.Ed. 625; Heald v. Rice, 1881, 104 U.S. 737, 26 L.Ed. 910. Cf. Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888. [7] Vermont Structural Slate Co. v. Tatko Bros. Alate Co., 2 Cir., 1956, 233 F.2d 9, 10. And cf., Rothe v. Ford Motor Co., 1958, 102 U.S.App.......
  • 170 F.2d 34 (9th Cir. 1948), 11667, Faulkner v. Gibbs
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Ninth Circuit
    • 8 de Outubro de 1948
    ...Inc., v. Caterpillar Tractor Co., 9 Cir., 85 F.2d 628, 630; Hanovia Chemical & Manufacturing Co. v. David Butterick Co., 1 Cir., 127 F.2d 888, 889. [2] Page v. Myers, 9 Cir., 155 F.2d 57. [3] See Wire Tie Mach. Co. v. Pacific Bos Corp., supra. See also Continental Paper Bag Co. v. Easte......
  • Request a trial to view additional results