265 U.S. 445 (1924), 120, Thomson Spot Welder Company v. Ford Motor Company

Docket NºNo. 120
Citation265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098
Party NameThomson Spot Welder Company v. Ford Motor Company
Case DateJune 02, 1924
CourtUnited States Supreme Court

Page 445

265 U.S. 445 (1924)

44 S.Ct. 533, 68 L.Ed. 1098

Thomson Spot Welder Company

v.

Ford Motor Company

No. 120

United States Supreme Court

June 2, 1924

Argued December 5, 1923

CERTIORARI TO THE CIRCUIT COURT OF APPEALS

FOR THE SIXTH CIRCUIT

Syllabus

1. The question whether an improvement in the arts involved invention or only mechanical skill is a question of fact. P. 446.

2. The rule in this Court to follow concurrent findings of fact made by the district court and the circuit court of appeals unless clear error is shown should not be strictly applied in a case brought here by certiorari to settle a conflict between decisions of two circuit courts of appeals concerning the validity of a patent for an invention. Id.

3. Patent No. 1,046,066 issued December 3, 1912, to Thomson Electric Welding Company, assignee of Harmatta, for improvements in electric welding, viz., for the process known as "spot welding," whereby sheets or plates of metal are welded together in spots, in lieu of riveting --is void for want of patentable invention. P. 448.

281 F. 680 affirmed.

Certiorari to a decree of the circuit court of appeals affirming a decree of the district court which held void a patent and dismissed a bill for infringement.

Page 446

SANFORD, J., lead opinion

MR. JUSTICE SANFORD delivered the 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 F. 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 F. 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 F. 428, in which the patent had been held to be valid, this writ of certiorari was granted. 260 U.S. 718.

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; Holmes v. Truman, 67 F. 542, 543; Hall v. Wiles, 2 Blatchf.194, 11 Fed.Cas. 280, 283; Poppenhusen

Page 447

v. Falke, 5 Blatchf. 46, 19 Fed.Cas. 1052, 1054; Shuter v. Davis, 16 F. 564, 566; Blessing v. Copper Works, 34 F. 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; United States v. State Investment Co., 264 U.S. 206, 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 F. 428, 433.1

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 overlapped edges of metal sheets, plates, etc., and other purposes.

Page 448

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...

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81 practice notes
  • 255 F.2d 342 (5th Cir. 1958), 16555, Inglett & Co. v. Everglades Fertilizer Co.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Fifth Circuit
    • May 7, 1958
    ...Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672, 673; Thompson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098; Bryan v. Garrett Oil Tools, Inc., 5 Cir., 245 F.2d 365, 370; Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d ......
  • 112 F.2d 389 (8th Cir. 1940), 11632, Strong-Scott Mfg. Co. v. Weller
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • June 10, 1940
    ...to be determined by the court below (Heyes v. Grat, 118 U.S. 25, 36, 6 S.Ct. 974, 30 L.Ed. 54; Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 45 S.Ct. 533, 68 L.Ed. 1098; Wire Tie Mach. Co. v. Pacific Box Corp., 9 Cir., 102 F.2d 543), and its determination in that regard will not ......
  • 395 F.2d 362 (5th Cir. 1968), 23861, Swofford v. B & W, Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Fifth Circuit
    • May 22, 1968
    ...702; United States v. Esnault-Pelterie, 1936, 299 U.S. 201, 57 S.Ct. 159, 81 L.Ed. 123; Thomson Spot Welder Co. v. Ford Motor Co., 1924, 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098; Continental Paper Bag Co. v. Eastern Paper Bag Co., 1908, 210 U.S. 405, 28 S.Ct. 748, 52 L.Ed. 1122. The Suprem......
  • 180 F.2d 529 (8th Cir. 1950), 14021, Trico Products Corp. v. Delman Corp.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • March 8, 1950
    ...the United States District Courts, 28 U.S.C.A., conclusive on appeal unless clearly erroneous. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446, 44 S.Ct. 533, 68 L.Ed. 1098; Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274-275, 279, 69 S.Ct. 535; Hal......
  • Request a trial to view additional results
81 cases
  • 255 F.2d 342 (5th Cir. 1958), 16555, Inglett & Co. v. Everglades Fertilizer Co.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Fifth Circuit
    • May 7, 1958
    ...Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672, 673; Thompson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098; Bryan v. Garrett Oil Tools, Inc., 5 Cir., 245 F.2d 365, 370; Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d ......
  • 112 F.2d 389 (8th Cir. 1940), 11632, Strong-Scott Mfg. Co. v. Weller
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • June 10, 1940
    ...to be determined by the court below (Heyes v. Grat, 118 U.S. 25, 36, 6 S.Ct. 974, 30 L.Ed. 54; Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 45 S.Ct. 533, 68 L.Ed. 1098; Wire Tie Mach. Co. v. Pacific Box Corp., 9 Cir., 102 F.2d 543), and its determination in that regard will not ......
  • 395 F.2d 362 (5th Cir. 1968), 23861, Swofford v. B & W, Inc.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Fifth Circuit
    • May 22, 1968
    ...702; United States v. Esnault-Pelterie, 1936, 299 U.S. 201, 57 S.Ct. 159, 81 L.Ed. 123; Thomson Spot Welder Co. v. Ford Motor Co., 1924, 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098; Continental Paper Bag Co. v. Eastern Paper Bag Co., 1908, 210 U.S. 405, 28 S.Ct. 748, 52 L.Ed. 1122. The Suprem......
  • 180 F.2d 529 (8th Cir. 1950), 14021, Trico Products Corp. v. Delman Corp.
    • United States
    • Federal Cases United States Courts of Appeals Court of Appeals for the Eighth Circuit
    • March 8, 1950
    ...the United States District Courts, 28 U.S.C.A., conclusive on appeal unless clearly erroneous. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446, 44 S.Ct. 533, 68 L.Ed. 1098; Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274-275, 279, 69 S.Ct. 535; Hal......
  • Request a trial to view additional results