Weller Manufacturing Company v. Wen Products, Inc.

• Decision Date: 30 March 1956
• Docket Number: No. 11115.,11115.
• Citation: 231 F.2d 795
• Parties: WELLER MANUFACTURING COMPANY, a limited partnership consisting of the following general partners: Carl E. Weller, Emily I. Weller, Everett C. Weller, and Robert E. Miller, Plaintiff-Appellee, v. WEN PRODUCTS, INCORPORATED, and Nicholas T. Anton, Defendants-Appellants.
• Court: U.S. Court of Appeals — Seventh Circuit

231 F.2d 795 (1956)

WELLER MANUFACTURING COMPANY, a limited partnership consisting of the following general partners: Carl E. Weller, Emily I. Weller, Everett C. Weller, and Robert E. Miller, Plaintiff-Appellee, v. WEN PRODUCTS, INCORPORATED, and Nicholas T. Anton, Defendants-Appellants.

No. 11115.

United States Court of Appeals Seventh Circuit.

March 30, 1956.

COPYRIGHT MATERIAL OMITTED

Charles B. Cannon, Carl S. Lloyd, Robert E. Burke, Chicago, Ill., Daniel V. O'Keeffe, Chicago, Ill., Kirkland, Fleming, Green, Martin & Ellis, Chicago, Ill., Wallace & Cannon, Chicago, Ill., of counsel, for defendants-appellants.

John Rex Allen, Chicago, Ill., Charles R. Fenwick, Thomas B. Van Poole, Washington, D. C., Schroeder, Hofgren, Brady & Wegner, Chicago, Ill., Mason, Fenwick & Lawrence, Washington, D. C., of counsel, for plaintiff-appellee.

Before LINDLEY and SWAIM, Circuit Judges, and PLATT, District Judge.

LINDLEY, Circuit Judge.

Defendants appeal from a judgment entered in pursuance of the District Court's opinion reported in Weller Mfg. Co. v. Wen Products, Inc., 121 F. Supp. 198, in which the court held reissue patent 23,619 of August 13, 1946 valid and infringed. Inasmuch as the trial court has fully and carefully considered and disposed of the questions of fact, and described the claims of the patent, the nature and method of operation of the patented device and complicated electrical matters involved, under well-known governing principles, we might well dispense with further elaboration. We say this, because, inasmuch as Judge Barnes had before him in a 9 days' trial, the extended controversial testimony of expert witnesses on behalf of the respective parties, as well as that of the patentee, certain witnesses skilled in technical learning and other witnesses concerning certain pertinent factual matters, in addition to extensive documentary evidence, models and other physical exhibits, the rule we announced in Hazeltine Research, Inc., v. Admiral Corp., 7 Cir., 183 F.2d 953, certiorari denied 340 U.S. 896, 71 S.Ct. 239, 95 L.Ed. 650, is applicable to the present situation. In other words, just as, in that case, we felt that, in view of the conflicting testimony of expert witnesses and other controversial testimony, we were not at liberty to deny the applicability of Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C., so here, after an examination of the record and consideration of the conflicts between the witnesses, we have no right, we think, to redetermine the findings of fact of the District Court or to say, as a matter of law, that they are clearly erroneous. The circumstances of this case take the issue out of that category of decisions where the evidence consists entirely of documentary evidence, such as Lewyt Corporation v. Health-Mor, Inc., 7 Cir., 181 F.2d 855, certiorari denied 340 U.S. 823, 71 S.Ct. 57, 95 L.Ed. 605, and Charles Peckat Mfg. Co. v. Jacobs, 7 Cir., 178 F.2d 794, certiorari denied 339 U.S. 915, 70 S.Ct. 575, 94 L.Ed. 1340. Inasmuch as there was substantial and adequate evidence, though controverted, to support the findings, we might well terminate this opinion at this stage. However, defendants have so zealously argued various alleged errors of law and fact upon the part of the District Court that we feel impelled, in deference to their argument, to add our comment upon the contentions made.

Defendants ask us to re-examine these issues: whether the claims are valid; whether any valid claim is infringed; whether defendants have acquired intervening rights by reason of their assertion that Claim 3, the only claim of the reissue patent appearing in the original grant, is not infringed or is invalid, and whether the reissue is invalid because of the addition of new matter, or because, as they say, its claims are indefinite and functional, or because it is "a broadened reissue applied for more than two years after the issuance of the original patent." They seek also to have set aside the finding that the infringement was wanton and willful, and that defendant Anton, an officer of the defendant corporation, was personally responsible for it.

In attacking the finding of validity, defendants assert that the trial court erroneously inferred and held that "the idea of using copper in the soldering tip in which heat was to be generated" was new with the patentee and that the court built its finding upon this false premise and upon the patentee's provision that the heating tip be made of smaller cross-section than the secondary winding of the transformer, and wrongfully evolved an elaborate theory of operation which is not within the conception disclosed in the original patent, or inherent in the original disclosure. We might well dispose of this postulate by saying that this finding resulted from examination of controverted questions of fact. The District Court's opinion, supplemented by extended detailed formal findings of fact, we find, fully discloses the court's reasoning in this respect and was justified by the record. Thus, the court expressly found that the provisions for the structure of the device in suit were inherent in the patentee's original disclosure, and examination of the record shows complete justification, we think, for the court's conclusion that the patentee disclosed a new and sharp departure from the former prevailing concept, in which the recognized defect arose from the storing of heat to an extent highly undesirable and deleterious in the operation and use of soldering guns because of the use of high electrical resistance material. The evidence was such as to justify the finding that Weller provided a heating element which, for the first time, served as both heating element and soldering tip, avoiding any reservoir for storage of large quantities of heat, for the reason that, by his novel construction and operation, in his device he substituted low electrical resistance material for the high resistance material of the prior art. Rather he succeeded in producing and supplying such quantities of heat as were needed, without creating any undesirable surplus. He eliminated the large body of metal, filled with heat, of prior devices, making use of a step-down transformer and a small copper peen. This was a new concept which produced a new result.

The evidence, we think, completely justifies the conclusion that the theory of operation described in the reissue patent constituted a correct exposition of the inherent method of operation of the device disclosed in the original patent. The testimony of plaintiff's expert was in itself sufficient to support the court's finding in this respect. And, in this respect, we think he was corroborated by the testimony of defendants' expert on cross-examination. The patentee originally suggested the advisability of the use of copper, with its low resistant qualities, as the essentially desirable element. In this respect, the District Court aptly said that the idea of using copper in the tip was directly contrary to typical thinking at that time in regard to the use of copper in electrical circuits. We think it clear that Weller suggested originally that, to overcome the defects in earlier soldering irons, copper was necessary in the tip, for the reason that it is a good conductor, offers relatively little resistance to the flow of current, avoids the storing up of unnecessary amounts of heat, and thus eliminates the undesirable feature of a material slow to heat and slow to cool which had led to dissatisfaction with earlier devices.

Though the court may have believed that each of the elements in the patented device was old, it does not follow that the combination was unpatentable. We need not elaborate upon the rule that a novel combination of old elements which so cooperate with each other so as to produce a new and useful result or a substantial increase in efficiency, is patentable. See Lewyt Corp. v. Health-Mor, Inc., 7 Cir., 181 F.2d 855, certiorari denied 340 U.S. 823, 71 S.Ct. 57, 95 L.Ed. 605; Blaw-Knox Co. v. Lain Co., 7 Cir., 230 F.2d 373. Thus, the Board of Appeals in its decision expressly found that the prior art did not disclose any approximation of the combination called for by the claims of the original patent.

In this connection, defendants insist that the accused device does not infringe claim 3, and criticize the District Court's conclusion to the contrary. In its essence, defendants' argument is that their structure does not include any of the elements of the tip-mounting structure mentioned in claim 3, and that the doctrine of equivalents cannot be resorted to in order to expand the claim, since they were the details patentee relied upon in order to distinguish that claim over the prior art, and that to ignore these limitations of the claim would result in it being the same as claim 17 of the original Weller application which had been rejected and cancelled.

An examination of the record convinces us that this argument is specious. Without going at length into the details of the construction of the infringing device, we direct attention to the District Court's finding, upon conflicting expert testimony, that claim 3 of the reissue patent "reads directly on defendants' devices, except that the spaced fixed plugs" in those devices "have a longitudinal rather than a transverse recess for receiving the offset portions of the soldering tip and the threaded takeup means are threaded on rather...