Gasifier Mfg. Co. v. General Motors Corporation

• Decision Date: 16 November 1943
• Docket Number: No. 12569.,12569.
• Citation: 138 F.2d 197
• Parties: GASIFIER MFG. CO. v. GENERAL MOTORS CORPORATION.
• Court: U.S. Court of Appeals — Eighth Circuit

138 F.2d 197 (1943)

GASIFIER MFG. CO. v. GENERAL MOTORS CORPORATION.

No. 12569.

Circuit Court of Appeals, Eighth Circuit.

October 25, 1943.

Rehearing Denied November 16, 1943.

Orla M. Hill, of Clayton, Mo. (Jesse L. England, of Clayton, Mo., and Robert M. Vaughan, of Washington, D. C., on the brief), for appellant.

Drury W. Cooper, of New York City (Allan C. Bakewell, of New York City, and John S. Leahy and William O'Herin, both of St. Louis, Mo., on the brief), for appellee.

Before SANBORN and RIDDICK, Circuit Judges, and LEMLEY, District Judge.

SANBORN, Circuit Judge.

The question for decision is whether there is a sufficient evidentiary basis to support a judgment in favor of the appellee, determining the invalidity of two patents issued to Maurice O. Smith, No. 1,405,633, applied for January 25, 1918, and issued February 7, 1922, and No. 1,477,724, applied for January 26, 1920, and issued December 18, 1923, relating to improvements in fuel vaporizers or heaters to be used with the carburetors of internal combustion engines.

In its complaint, the plaintiff (appellant) alleged ownership of the patents in suit, charged that the defendant (appellee) had infringed each of them, and prayed for damages. In its answer, the defendant denied infringement, and asserted the invalidity of the patents, and that the plaintiff had been guilty of laches in bringing its action. The court severed the issues and tried the issue of validity without a jury.

At the trial, the plaintiff introduced in evidence the patents in suit, and rested. The defendant, to sustain its burden of establishing the invalidity of the patents, introduced in evidence the file wrapper and contents of each of the patents in suit; patent to Bennett No. 1,463,035, together with its file wrapper and contents; patent to Sykora No. 1,099,271; patent to Russell No. 1,153,448; patent to Hickox No. 1,238,404; patent to Hoag et al. No. 1,303,559; Canadian patent to Loomis No. 182,687; and a manifold manufactured for Ford Model T engine. The purpose of these exhibits was to show the state of the art prior to Smith's alleged inventions and that the subject matter of his patents was old and was covered, in whole or in part, by earlier patents and by other prior art disclosures, and did not involve invention. The defendant also introduced expert testimony explanatory of its documentary evidence and exhibits and to show that the alleged inventions of Smith had been anticipated and were devoid of patentable novelty or usefulness, that the two Smith patents failed sufficiently to describe the alleged inventions, and that the alleged inventions were merely aggregations of old elements, and were not patentable combinations.

In rebuttal, the plaintiff introduced expert evidence tending to show that, while the elements of Smith's alleged inventions were old, his combinations of known elements produced new and useful results and constituted advances over the prior art.

In its findings of fact and conclusions of law, the District Court determined: (1) That the Bennett patent No. 1,463,035, applied for March 1, 1917, and issued July 24, 1923, shows and describes every element of the invention claimed by Smith in patent No. 1,405,633; and that the plaintiff had made no attempt to establish a date of invention for either of the patents in suit prior to the filing dates of the applications for those patents. (2) That each of the elements of the claims of the patents in suit was old in the art prior to the dates of the filing of the applications for the patents, and that one or more of such elements are disclosed in each of the patents introduced in evidence by the defendant. (3) That each of the claims of Smith patent No. 1,477,724 contains as an element a valve for permitting the introduction of air, which element was not included in the specifications and claims of the application, and was inserted in the claims subsequently by amendment not accompanied by the oath of the applicant that he was the inventor of the subject matter. (4) That the defendant had sustained the burden of establishing the invalidity of the patents in suit. (5) That Bennett, the patentee of patent No. 1,463,035, is the prior inventor of the subject matter of the claims of the Smith patent No. 1,405,633. (6) That Smith patent No. 1,405,633 is invalid for failure to adequately describe the invention claimed. (7) That the claims of each of the patents in suit "do not embrace subject matter which is novel and patentable over the prior art in evidence and are therefore invalid for lack of patentable invention." (8) That the claims of Smith patent No. 1,477,724 are for an unpatentable aggregation of elements, and are invalid.

Upon these findings and conclusions, judgment was entered for the defendant. The plaintiff has appealed from the judgment.

The plaintiff challenges the sufficiency of the evidence to support the judgment and each of the adverse findings and conclusions of the District Court. The plaintiff asserts that, under the law and the evidence, the judgment should have been in its favor. It concedes that the questions whether the subject matter of the patents in suit involved invention or mechanical skill and whether the invention was sufficiently described and claimed, were questions of fact. It is difficult, however, to determine whether its contention is that there was no evidence to support the findings and judgment or whether it is asserting that the court decided incorrectly questions of fact which, under the evidence, the court had power to determine.

In its brief, the plaintiff says: "The question of whether or not the construction of the device represented by the patents in suit were a matter of skill or invention, was a question of fact for a jury to determine, according to the United States Supreme Court in the case of Thompson Spot Welder Co. v. Ford Motor Co., supra 265 U.S. 445. The fact remains, however, that in so far as this record shows the patentee of the patents in suit was one of a large number seeking to accomplish the very thing that was accomplished by the invented combination, construction and functional operation thereof, to the end that it did produce an improved result. Likewise, the question of whether or not patent No. 1,405,633, in suit, describes the invention in such full, clear, concise and exact terms as to enable any person skilled in the art to construct the same, was a question of fact for a jury to determine and it was error for the Court to undertake to determine that question without a jury."

This would seem to be a concession that if the case had been tried to a jury, the questions whether the subject matter of the patents in suit was the result of invention or of mechanical skill, and whether the inventions were sufficiently described, would have been questions of fact for the jury. In a jury-waived case, the court is the trier of fact questions, and its determination of them, "unless clearly erroneous," is as conclusive upon review as is the verdict of a jury. The rule applicable to a review of such questions as are here presented was stated by this court in Strong-Scott Mfg. Co. v. Weller, 8 Cir., 112 F.2d 389, 395 (a case not unlike this case, except that the findings were in favor of the owner of the patent), as follows: "The defendants contend, however, that what the patent disclosed...