Thomson Electric Welding Co. v. Barney & Berry, Inc.

• Decision Date: 05 October 1915
• Docket Number: 1115.
• Citation: 227 F. 428
• Parties: THOMSON ELECTRIC WELDING CO. et al. v. BARNEY & BERRY, Inc.
• Court: U.S. Court of Appeals — First Circuit

227 F. 428

THOMSON ELECTRIC WELDING CO. et al. v. BARNEY & BERRY, Inc.

No. 1115.

United States Court of Appeals, First Circuit.

October 5, 1915

Appeal from the District Court of the United States for the District of Massachusetts; Frederic Dodge, Judge.

Suit in equity by the Thomson Electric Welding Company and another against Barney & Berry, Incorporated, for infringement of letters patent No. 1,046,066, for a method of electric welding, issued to J. Harmatta December 3, 1912. Decree for defendant, and complainants appeal. Reversed.

PATENTS 328-- VALIDITY-- ELECTRIC WELDING.

The Harmatta patent, No. 1,046,066, for process of electric welding, was not anticipated, discloses invention, and is not invalid because of amendments of the application while pending in the Patent Office.

The following is the opinion of the District Court:

The Thomson Electric Welding Company owns United States patent No. 1,040,066, for improvements in electric welding, issued to Johann Harmatta December 3, 1912, upon his application filed December 3, 1903. It acquired Harmatta's rights in February, 1912, while his application was still pending. The other plaintiff, Universal Electric Welding Company, is, and has been since 1909, exclusive licensee under all patents then or thereafter owned or controlled by the Thomson Company, including the patent whereon the present suit is brought.

There are 21 claims in all; the first 16 being for a method or process described, and the last 5 for the product thereof. Infringement of all the claims is charged, but the plaintiffs ask the court to consider only 8 of the process claims (Nos 3 to 6, 8, 9, 11, and 12) and only 4 of the product claims (Nos. 17, 18, 19, and 21). The defenses are lack of invention, anticipation, invalidity because of changes made in the application before issue, and noninfringement.

Introductory statements in Harmatta's specification are that his invention relates to the manufacture of metal articles of all kinds, and consists in a novel method of fastening their component parts together by the process of electric welding; also in the new article produced thereby. The invention is further said to afford a cheap and practical substitute for riveting.

Consideration of former methods of uniting metals by electric welding is therefore required, in order to determine the precise scope of Harmatta's invention. For the purposes of such inquiry, his own definition of 'electric welding' may be adopted. He says in his specification:

'By the term 'electric welding,' as used herein, I mean that well-known process in which the work is brought to the welding temperature by internal heat generated by the resistance of the work itself to the passage of an electric current at the place of contact between the parts to be joined by the welding pressure.'

And this is immediately followed by his express disclaimer of 'those processes of fastening pieces of metal together in which the parts are heated and practically melted down by an electric arc generated on the back of the piece by 'drawing' an arc by means of the electrode, as well as other processes in which the welding heat is generated externally and electrically in a resistance material and is imparted to the work by heat conduction from said resistance material in contact with the work.'

The electric welding art may be said to have begun with the inventions of Elihu Thomson, disclosed in two United States patents issued to him on August 10, 1886-- Nos. 347, 140 and 347, 141. The first of these describes the process of 'butt-welding,' wherein the ends of wires or bars held by suitable electrodes, are butted together under pressure, raised to welding heat by an electric current of small voltage and large volume passed through them from one electrode to the other, and caused to unite into one mass over their entire area of contact, while thus plastic, by the pressure applied. A slight burr or flange of metal, extruded while plastic at the junction point, is left in the welded article. The second of the above patents covered the apparatus for carrying out the process described in the first.

Five years later (January 20, 1891) another United States patent No. 444,928, was issued to Thomson, covering a process of joining two strips, sheets, plates or bars of metal by continuous electrically welded seams. Roller electrodes were used, between which the two strips or sheets to be joined were fed during the passage of current from one to the other. Suitable pressure devices enabled the opposed electrodes to hold the two strips or sheets in close contact between them at the point of the current's passage, The use of roller electrodes permitted an uninterrupted current to be passed through all points within the line of the desired seam successively and without relaxation of the pressure. Electrodes not provided with means to permit this could not have produced a continuous seam, but only, at most, a series of more or less frequent welds along its line, each requiring separate application and interruption of pressure and current.

A still later United States patent to Thomson, No. 496,019, issued April 25, 1893, covered a process of soldering (instead of welding) two overlapped sheets of metal together by the passage of current through them, so as to produce the necessary heat where the desired junction was to be made between two electrodes arranged to hold them there in contact while the current passed. Less heat, and therefore less current, is required for soldering than for welding. The process described in this patent might have been used to produce a welded, instead of a soldered, union between the sheets merely by an increase in the amount of current passed between the electrodes.

All the above patents have belonged to the Thomson Company since their issue. The two 'butt-welding' patents expired August 10, 1903, shortly before Harmatta's application was filed. There was reference to them and to others of the above patents in the patent in suit, made in connection with the patentee's statement of the scope of his invention.

The patent states that in general terms the invention may be said to consist 'in fastening the pieces together by an electric weld at one or more distinct or well-defined spots, each of small area or extent in their juxtaposed or opposite plane faces, by the application of pressure and heating current localized in such spots, and in the special method of localizing the heating and pressure in the spot or spots as hereinafter described,' etc.

The substance of the description then following is contained in the following passage quoted from the plaintiffs' brief:

'Harmatta's invention may be thus described:--

'Two comparatively thin sheets of metal can be joined together by one or more isolated welds in their meeting surfaces, made by applying electrodes of limited facial area to the backs of the sheets, pressing the electrodes and sheets together, and passing a welding current from one electrode to the other, whereby a weld is made between the sheets at the spot, the area of which is determined by the area of the electrodes in contact with the metal sheets.'

The patentee's references to former patents are:

'It has been before proposed to electrically weld two rods of metal together by a butt-welding process, the area of union effected being substantially co-extensive with the cross-section of the pieces at their meeting ends; that is to say, the weld has been made over substantially the whole area of the opposed portions of said pieces. It has also been proposed to make a lap joint between the ends of two strips of metal by electrically uniting them together over substantially the whole area of the lapping surfaces.'

'I am also aware of patent to H. F. A. Kleinschmidt, No. 616,436, dated December 20, 1898, and do not wish to be understood as claiming anything disclosed in said patent.'

The patent here referred to does not appear to have belonged, like the others, to the Thomson Company but to the Lorain Steel Company, whereof Kleinschmidt was an employe. In using his patented method commercially, however, he testified that he used an electric welding machine made by the Thomson Company. His patent covers a process of attaching splice bars to rails. Two splice bars, each having on one side three projections or 'bosses,' one at each end and one in the middle, are placed, one bar against each side of the abutted rails, so that their projections are opposite each other and their middle projections opposite the junction of the rails. Their contact with the rails is through their projections only. Electrodes of much greater facial area than the projections are applied against the backs of the splice bars opposite each pair of projections. Pressure applied to the electrodes in the direction necessary to force them toward each other holds the webs of the rails and the splice bar projections in contact with the electrodes and each other; the required current transmitted between the electrodes heat the projections, and so much of the webs of the rails as lies between them at the contact points, to welding heat, and the pressure applied as above causes union at those points.

To the remaining patents in evidence as part of the prior art briefer reference will be sufficient. Of United States patent 363,320, to Benardos and another, May 17, 1889, and the German patent to Benardos, 50,509, February 19, 1890, it is enough to say that neither relates to electric welding in the sense of the patent in suit, and that both processes described are of the kinds expressly disclaimed by Harmatta, as above.

United States patent No. 670,808, to Perry, March 26, 1901, covers a method and machine for electrically welding the...