Thomson Spot Welder Co. v. Ford Motor Co.

• Decision Date: 05 October 1920
• Docket Number: 246.
• Citation: 268 F. 836
• Parties: THOMSON SPOT WELDER CO.v. FORD MOTOR CO.
• Court: U.S. District Court — Eastern District of Michigan

268 F. 836

THOMSON SPOT WELDER CO.v. FORD MOTOR CO.

No. 246.

United States District Court, E.D. Michigan, Southern Division.

October 5, 1920

Frederick P. Fish and J. L. Stackpole, both of New York City (H. F Lyman, of New York City, of counsel), for plaintiff.

Barthel Flanders & Barthel, of Detroit, Mich. (Melville Church and A S. Pattison, both of Washington, D.C., and O. F. Barthel, of Detroit, Mich., of counsel), for defendant.

KILLITS District Judge.

This is an action for infringement of United States patent No 1,046,066, allowed December 3, 1912, to the plaintiff's predecessor in title, as assignee, upon an application filed December 3, 1903, by Johann Harmatta. The patent is one for improvements in electric welding, and has 16 claims for process and 5 for product. The specific character of welding involved is that known as spot welding. The complaint alleges that all claims are infringed. Counsel for plaintiff treat and build their argument upon three claims as typical, namely:

'3. The herein described method of uniting two pieces of metal, consisting in pressing them together while passing a heating electric current from one to the other and localizing the flow of current and the heating throughout the operation in a spot or spots of circumscribed or limited area as compared with the area of the immediately opposed surfaces so as to limit the union of the pieces to a spot or spots.'

'8. The method of electrically welding two plates or sheets of metal together face to face between electrodes, consisting in restricting the area of contact of an electrode with said plates to a spot, passing a heating electric current from said electrode to the co-operating electrode through said spot to heat the work to welding temperature and applying pressure to the work in line with said spot to effect a welding of one plate to the other.'

'17. Metal plates fastened together by a number of distinct or isolated welds on their meeting surfaces and in spots comprising meeting portions of the metal plates, the backs of said plates being practically unaltered in their metallic condition and the spots on the meeting surfaces being separated from one another by distinct unwelded areas.' The defendant does not actively question title nor the truth of the more or less formal allegations of the complaint. The special defenses which we deem important are:

(a) Anticipation in the prior art, citing patents and publications which are hereafter discussed in some degree.

(b) Reduction to successful use prior to Harmatta's crucial dates by parties named, those particularly depended upon being F. B. McBerty, at Warren, Ohio, and Adolf Rietzel, at Lynn, Mass.

(c) The subject-matter, as finally set forth and claimed in the grant, was not set out in the application, and was not subsequently entered under cover of an oath of the inventor in the process of amendment.

(d) Lack of substantial variation from prior uses and publications, and hence lack of invention.

(e) Plaintiff, by the declarations and representations first made in its behalf, as assignee of United States patent 928,701 to Adolf Rietzel, issued July 20, 1909, upon an application filed February 24, 1905, and thereafter in interference proceedings between the Rietzel grant and the Harmatta application, is estopped to deny that Harmatta was effectively anticipated by Rietzel, and may not therefore assert the validity of the patent in suit.

The patent before us was adjudicated in 1915 at the suit of the Thomson Electric Welding Company (predecessor and privy in title to the plaintiff here) against Barney & Berry by a decision in the First Circuit Court of Appeals. Opinion by Judge Putnam, 227 F. 428, 142 C.C.A. 124.

There is substantial identity between the Thomson Electric Welding Company and plaintiff; wherefore, for brevity, we will hereafter refer to each as the Thomson Company in discussing transactions to which either was a party. Some of the questions in this case were determined in the adjudication referred to, but not all. Important references are not the same in the two actions, and the prior uses now alleged and specially depended upon here were not set up in the other case; besides, present defenses, as indicated above as (c), (d), and (e), are new. We have the record of the old case before us as part of this case.

The District Court in the former case (Circuit Judge Dodge sitting) found no patentability in Harmatta. It is regretted that the opinion of the Circuit Court of Appeals, reversing him, is so drafted that it is not helpful in elucidating the solution which it attempts. It is little more, in fact, than a formal reversal of Judge Dodge, who analyzed the prior art in finding anticipation. The Circuit Court of Appeals does not attempt to meet the reasoning of the District Court. Giving the opinion, however, all due respect, we still feel at liberty, in light of our larger and different record, to review the questions which the court in the First circuit has decided.

The application of Harmatta had many vicissitudes. It was filed December 3, 1903, and granted December 3, 1912. The specifications, as they finally appeared, are so different from those offered at the outset, that it is a matter of close analysis to trace their genealogy to the latter. Eight times was the application rejected, after original and amendments were under scrutiny of three different examiners. The allowing examiner (the fourth one in charge) finally passed the case, as it then stood, to an allowance with evident reluctance, venturing the opinion that certain citations anticipated many of the claims. He (examiner Rich) concludes in his allowance as follows:

'Inasmuch as the claims of this case have previously been considered allowable, and those noted above have been contested in an interference with a patent wherein similar claims were granted, a formal rejection is not now made, since upon consideration and explanation it may appear that the references cited have been formally or informally considered in the examining division earlier having jurisdiction of the applications and held not pertinent. It is thought best, however, to note them, in order that, if the claims do differ from the patents, such differentiation may appear in the record.'

February 9, 1909, the third examiner (Shaw), after the eighth rejection of the application, made this suggestion:

'It is thought that if there is any patentable matter in this case it resides in the securing of the sheet metal parts together by means of the small, round, sharply defined place of welding which answers the purpose of a rivet, as is set forth on page 6 of the original specification.'

The original specification was canceled May 9, 1904, and the specification and claims had been repeatedly amended and twice entirely rewritten before 1909; each time excluding that in the original which Examiner Shaw qualifiedly approved. At no time prior to the latter's suggestion, not even in the original specification, was any claim made for patentability upon this specific idea; but, January 27, 1910, more than 11 months after the hint came from the examiner, two claims attempting to specifically cover it, were offered by way of amendment. They were rejected March 22, 1910, by Examiner Shaw. In the meantime the Rietzel patent (928,701) had been allowed. The examiner suggested that, in accordance with rule 96 of the Patent Office, applicant adopt Rietzel's claims for the purpose of interference, directing attention to the rule that, unless that were done, the application would be finally rejected as covering nothing new. Harmatta's counsel followed the suggestion, taking altogether 11 claims from Rietzel, and interference proceedings were begun with a declaration dated April 26, 1910.

Final allowance to the Thomson Company, as assignee of Harmatta, resulted after the close of the interference in 1912, but under circumstances which not only take away most of the force of the presumption of invention and patentability which otherwise would follow allowance, but give opportunity to reflections upon the good faith of plaintiff itself in its dealings with the Patent Office. We discuss this matter at length hereafter. We think the presumption in question gets all the honor due it in this case, if we do no more than to keep in mind that it exists.

Something analogous in suggestive flavor attends the situation which finally developed in and from the litigation in Boston which adjudicated for the First circuit. The record shows that counsel for defense in that case prepared their work ably in their briefs against the validity of the patent. They are exhaustive and persuasive, but the presentation was lamentably lacking in the offering of known facts. Thus, while the McBerty alleged prior use, which figures so largely and importantly in this case, was known, it was neither pleaded nor vigorously offered. Likewise the Rietzel matter was ignored, although the losing counsel had also lately defended another client in a suit by the Thomson Company brought on the Rietzel patent.

Even if it be a fact that our views respecting the effect of the McBerty and Rietzel matters are in each instance unsound, it must be admitted that each is at least so significant in scope and application as to justify and very loudly suggest offering it to the court in a vigorous defense to a patent with which it is in seeming collision. After the adjudication in the case in Boston terminated, the successful litigant bought out its rival and gave the latter's responsible head, who, under his counsel, managed the defense, a most advantageous connection with the exploitation of the Harmatta process. This court does not permit itself to adjudge, to any extent,...