Deep Welding, Inc. v. Sciaky Bros., Inc.

• Decision Date: 24 November 1969
• Docket Number: No. 16707.,16707.
• Citation: 163 USPQ 144,417 F.2d 1227
• Parties: DEEP WELDING, INC., Plaintiff-Appellee, v. SCIAKY BROS., INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

163 USPQ 144, 417 F.2d 1227 (1969)

DEEP WELDING, INC., Plaintiff-Appellee, v. SCIAKY BROS., INC., Defendant-Appellant.

No. 16707.

United States Court of Appeals Seventh Circuit.

August 13, 1969.

Rehearing Denied November 24, 1969.

COPYRIGHT MATERIAL OMITTED

Edmund C. Rogers, Laurence C. Kingsland, John T. Rogers, St. Louis, Mo., Russell H. Clark, Chicago, Ill., Kingsland, Rogers, Ezell, Eilers & Robbins, St. Louis, Mo., Hume, Clement, Hume & Lee, Chicago, Ill., of counsel, for appellant.

William D. Hall, Elliott I. Pollack, Washington, D. C., Thomas A. Reynolds, Jr., Winston, Strawn, Smith & Patterson, Chicago, Ill., Moore & Hall, Washington, D. C., for appellee.

Before FAIRCHILD, CUMMINGS and KERNER, Circuit Judges.

KERNER, Circuit Judge.

Plaintiff (Deep Welding) sued defendant (Sciaky) charging infringement of plaintiff's United States Patent No. 2,987,610 (Steigerwald) covering a method of welding using a controlled electron beam. Defendant asserted as affirmative defenses the invalidity of the patent, laches, and unclean hands (allegedly resulting from the establishment of a limited monopoly in unpatented electron beam welding machines by a parent corporation of plaintiff through improper use of the patent). The trial court found the patent valid, rejected Sciaky's other defenses, found some infringement and ordered the case referred to a master for an accounting. Sciaky appealed asserting as error the finding of validity of the patent. On this ground, we reverse.

It is axiomatic that findings in patent cases are like those in any other case in that they are entitled to our respect and should not be set aside unless clearly erroneous under Federal Rule of Civil Procedure 52(a). Armour Research Foundation v. C. K. Williams & Co., Inc., 280 F.2d 499, 503 (7th Cir. 1960), and O'Brien v. O'Brien, 202 F.2d 254, 256 (7th Cir. 1953). See also 41 Mod.Fed. Prac.Dig., Patents key nos. 324(5 5/8) (a)-(c) (1961 and supps.). The major exception to this axiom is in situations where the evidence is documentary or where it involves the actual examination of a product or a device in operation. In such situations, the Court of Appeals has the right to interpret such evidence for itself and is as equally competent as the trial court to do so. See, e. g., Southern States Equipment Corp. v. USCO Power Equipment Corp., 209 F.2d 111, 117-118 (5th Cir. 1953); Plax Corp. v. Elmer E. Mills Corp., 204 F.2d 302, 308 (7th Cir. 1953); Stewart-Warner Corp. v. Lone Star Gas Co., 195 F.2d 645, 647-648 (5th Cir. 1952); Falkenberg v. Golding, 195 F.2d 482, 486 (7th Cir. 1952); and Armour Pharmaceutical Co. v. Richardson-Merrell, Inc., 396 F.2d 70, 72 (3rd Cir. 1968). See generally 15 Mod.Fed.Prac.Dig., Courts key no. 406.3(12) (1960 and supps.). Careful analysis of the evidence below, both documentary and testimonial and by way of exhibits showing welds made by the process in question, convinces us that this case is determinable upon its documentary evidence. We find ourselves in the same position as did an earlier panel of this Court in Charles Peckat Mfg. Co. v. Jacobs, 178 F.2d 794, at 802 (7th Cir. 1949), cert. denied, 339 U.S. 915, 70 S.Ct. 575, 94 L.Ed. 1340 (1950), which held:

Findings of fact are not to be upset unless they are clearly erroneous; a court of review will not interfere with them, in the absence of a very obvious showing of error. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L. Ed. 672. But the ultimate question of patentability is whether the device meets the requirement of the statute. 35 U.S.C.A. § 31. Here we have a finding of fact of anticipation because of existing prior art patents. Each of these documents was before the trial court and is before us. Their interpretation, in view of the statute, is as open to us as to the District Court. True, there was some parol testimony in the court below, but we find that it did not in any way throw light upon the question of anticipation by the prior art. Consequently we feel free to review the evidence bearing upon anticipation by the prior patents.

1. THE PROCESS IN ISSUE

The process here involved is one in which a particle accelerator (electron gun) utilizing electron beam currents ranging from approximately 9 to 250 milliamps supplies accelerating voltages to the electrons of as little as 10 and as high as 30 KeV.¹ The beam thus generated passes through a focusing coil which narrows it at the impingement site on the pieces to be welded so as to put the greatest amount of power into the smallest possible area. The welding process is performed in a vacuum chamber reduced to a pressure on the order of 1 × 10-4 mm. Hg so as to minimize contamination and beam interference and scattering. Lastly, the machine is set so that either the gun or the work moves at a speed which insures that a weld will be achieved rather than a hole or a channel. Beam current and focus, accelerating potential, and welding speed are all variable and the correct settings for any given operation will depend on the characteristics of the metals to be joined and the thickness to be penetrated by the beam. The latter depends not only on the thickness of the metal pieces but also upon the type of weld to be made.²

The process represents a considerable advance over older methods of welding which depended upon heat transfer by conduction. In older welding methods, e. g., metal inert gas welding, in the absence of bevelling, the heat of the torch flame melts a surface portion of the metal creating a molten puddle. Continued application of the flame causes the puddle to propagate itself by continuing to melt solid metal with the heat of the molten metal at the interface of the two. Such welds typically exhibit a hemispherical shape in which the ratio of width to depth is on the order of 2 to 1 though, in some cases, unity may be achieved. Width is measured at the widest part of the weld.

In electron beam welding, two modes are available. In the first, beam strength is low and the weld is caused by the propagation of heat from a molten puddle formed at the point of beam impact. Welds thus achieved are substantially similar to metal inert gas welds.

In the second mode, electron beam welding is performed by the process at issue. The beam is set above a "threshold value" for the pieces to be joined and penetrates deeply into them diffusing its energy throughout the depth of penetration. The penetration of the beam into the material affords the electrons an opportunity to transfer energy and create heat throughout the depth of penetration thus creating a deep narrow molten zone which quickly solidifies.³ The resultant weld is deep, rather than shallow, narrow, rather than wide, and exhibits typical width to depth ratios from 1 to 3 through 1 to 30 and, in some instances, more.⁴ These welds are known as "deep welds."

The crucial factor involved in the production of deep welds is the threshold value of the material to be welded. Unless this value is exceeded, the beam will not be of sufficient strength to penetrate the material faster than the heat created by surface impingement can form a molten puddle and the resulting weld will display the hemispherical welds achieved by older methods of heat propagation welding. This threshold value is expressed in terms of the amount of power brought to bear on a given area and is usually expressed in terms of kilowatts (KW) per square millimeter (mm2). The kilowatt power of the beam is determined by multiplying the accelerating potential or voltage of the electron measured in thousands of electron volts (KeV) by the beam current measured in milliamps (ma). Thus the value of the beam's power (P) on a square millimeter of metal surface with a constant resistance using the numerical unknowns "X" and "Y", can be expressed by the formula:

P = XKeV • Yma _____ _______________ mm2 mm2

Expanding the terms to unity, the formula reads:

P = X • 103eV • Y • 10-3a _____ __________________________________________________________ mm2 mm2 or P = XY W _____ ____ mm2 mm2 Thus, either the wattage or the voltage and amperage per square millimeter defines a parameter of power per square millimeter.⁵ Since we have based our holding of invalidity, in large part, on our analysis of the prior art, it is important to realize that prior discussions of either type of parameter would, in the proper context, anticipate the patent in suit.

2. STANDARDS OF PATENTABILITY

The date of invention in the United States is crucial as the state of the prior art is measured as of that date. The trial court was correct in determining that the date of invention was not the date of application for the United States patent (May 29, 1959), but the date the invention was first introduced into the United States and thereafter quickly reduced to practice. Since that determination here properly rested, at least in part, on oral testimony, we are content to adopt the lower court's findings on this issue. Deep Welding, Inc. v. Sciaky Bros., 155 U.S.P.Q. 561, 569-70 (N.D.Ill.1967) (Findings of Fact 49-56). Accordingly, Steigerwald is entitled to a date of invention of June 28, 1958.

The standards concerning determinations of validity based on obviousness as based upon prior art were clearly stated in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). An excellent summary of the standards is set forth in Appleton Elec. Co. v. Effengee Elec. Supply Co., 412 F.2d 579, 581 (7th Cir. June 23, 1969):

In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Supreme Court construed § 103 of the Patent Act, 35 U.S.C. § 103, and set out the standards for determining the presence or absence of obviousness. After a scholarly analysis of the history of patent legislation and judicial interpretation thereof, Justice Clark, speaking for a unanimous Court, noted that § 103 was relatively unambiguous and that its test of "no

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