Kohn v. Eimer, 141.

• Decision Date: 28 February 1920
• Docket Number: 141.
• Citation: 265 F. 900
• Parties: KOHN v. EIMER et al.
• Court: U.S. Court of Appeals — Second Circuit

265 F. 900

KOHN v. EIMER et al.

No. 141.

United States Court of Appeals, Second Circuit.

February 28, 1920

The invention related to small electric furnaces, and was aimed at providing a furnace consisting of separate heating units such that, if any one of them should become defective, it might be replaced by a standard form. In general, it consisted of a vertical cylindrical outer body of nonconducting material, with a circular space within, fitted to receive a cylindrical pot. The inner and heating wall of the furnace were formed of duplicate units or forms made of nonconducting material standing upright around the inside. The concave or inner face of these forms had vertical grooves, within which passed the resistance coils to carry the current, in a way well known. The coil was continuous from one end of each form to the other, and the terminals of the four forms were so arranged that they could be used either in multiple or in series at will. As each form could be separately removed, and the coil of each itself removed from the form, the device offered an easy means for correcting any defect in the wiring in any single form.

Upon the trial the plaintiff confined the case to four of the claims, Nos. 1, 3, 8, and 11, which are as follows The defendant Eimer in 1903 took out a patent (No. 736,509) for a similar furnace, horizontal and lying on a flat bottom. The top, however, consisted of an arch or dome, making the whole a half cylinder lying upon its flat side. The base plate was of refractory material, and could be slid in and out. and the wires were so arranged that they could be removed from the base plate, if broken, and rethreaded. The arched dome could also be removed, and in it the conductor might be threaded in grooves, so as to be removed, if broken.

On the same day Eimer took out another patent (736.917) for a modified form of furnace. This was composed of three horizontal sections end to end; each section having three heating walls, apparently removable, one at the base and one on each side. The heating wires in the refractory material might be sunk in longitudinal grooves, which permitted them to be removed and rethreaded, if broken. Proper connections permitted the three longitudinal sections to be used, either in series or multiple. Likewise the conductors in each section might be separated, and could then be used either in series or in multiple.

Capek 449,035, showed an upright furnace, which might be of any shape, containing a pot within, a heater at the base, made up of two forms, which might be arranged in either multiple or series. In several prior art furnaces the chamber was a cylinder, as in Hatch (640,283), Conlin (677,399), Hatch (741,333), and Marsh (861,744).

The relations of the parties were as follows: On June 15, 1910 Kohn assigned his patent to the Multiple Unit Electric Company, a corporation, with the following reservation: 'In the event of the dissolution or other termination of the party of the second part within five years from the date of these presents, that said patents and property rights shall revert to and again be the sole property of the party of the first part' (Kohn). The corporation continued business for 18 months, but finally, on January 31, 1902, sold all its tangible assets to the defendant Eimer. In February the corporation wrote to several of its customers that it was no longer in active business and had sold its plant to Eimer. All its books were taken to the office of its attorney and its business office was closed. Eimer took over the business and eventually organized a corporation, the Electric Heating Apparatus Company, the other defendant. The plaintiff went to work for the two defendants until, because of certain differences between them, he was discharged on June 30, 1913. On July 2, 1913, possibly in fear of some action of the plaintiff, Eimer obtained a license from the Multiple Unit Electric Company under the patent in suit, and paid license fees until May 22, 1914. The defendants' manufacture was a frank copy of the patent in suit, except that they did not supply the cylindrical pot which fitted into the middle of the furnace proper. The bill was filed in February, 1918.

1. An electric heater, comprising a body portion a plurality of forms which are duplicates of each other, a heating element located in each of said forms and removable therefrom without injury thereto, means located in said body portion for connecting the ends of said heating elements, and a lining wall adjacent to said forms and having a chamber formed therein.'

3. An electric heater, comprising a body portion having an upwardly extending wall, a plurality of forms located adjacent to said wall, an electric conductor carried by each form, means for connecting the conductors in one form to that of an adjacent form, means for covering and holding said forms in position within the body portion, and means for connecting said conductors in series or multiple circuit arrangement.'

8. An electric heater, comprising a body portion having an upwardly extending wall, a plurality of forms located adjacent to said wall, an electric conductor carried by each form, means for connecting the conductors in one form to that of an adjacent form, and means for covering and holding said forms in position with the body portion.'

11. A heater, comprising a body portion having an upwardly extending cylindrical wall, a plurality of removable forms shaped to conform to said upwardly extending wall and each provided with an electrical conductor, a separable inner wall located adjacent to said forms, and means for covering the top ends of said forms.'

In claims 1 and 11 the phrase, 'inner wall located adjacent to said forms,' refers to the cylindrical pot which slipped up and down within the furnace and held the forms in place. Electrical furnaces of this general character have been familiar for some time in the art. Patent No. 589,048, to C. A. Timme, issued in 1897, disclosed one form. The furnace was cubical with the opening at one said. Wires were imbedded in removable horizontal heating plates of refractory material at the bottom and top, and there might be vertical plates along the sides as well. The resistance of these wires created the heat within the furnace. The form of the furnace was different from that of the plaintiff's, and the wires could not be removed from the plates as in the plaintiff's case.

Ralph L. Scott, of New York City (C. A. L. Massie and Clifford E. Dunn, both of New York City, of counsel), for appellant.

Rose & Paskus, of New York City (Conrad A. Dieterich, of New York City, of counsel), for appellees.

Before ROGERS and MANTON, Circuit Judges, and LEARNED HAND, District judge.

LEARNED HAND, District Judge (after stating the facts as above).

At the outset the appellant challenges our right to examine the prior art patents at all, because the appellee called no expert at the trial to explain them. Waterman v Shipman, 55 F. 982, 987, 5 C.C.A. 371. We have not the slightest wish to minimize the vital importance of expert testimony in patent suits, or to suggest that we are not absolutely dependent upon it within its proper scope; but that scope is often altogether misapprehended, as the appellant has misapprehended it here. Specifications are written to those skilled in the art, among whom judges are not. It therefore becomes necessary, when the terminology of the art is not comprehensible to a lay person, that so much of it as is used in the specifications should be translated into colloquial language; in short, that the judge should understand what the specifications say. This is the only permissible use of expert testimony which we recognize. When the judge has understood the specifications, he cannot avoid the responsibility of deciding himself all questions of infringement and anticipation, and the testimony of experts upon these issues is inevitably a burdensome impertinence.

Now the question whether the judge needs the assistance of experts to understand the specifications is for him to decide. Doubtless he ought to be chary of assuming too readily that he does understand what he may not; but, if he is too confident, his mistake eventually transpires. The important point is that it is he who must determine when he needs the help of experts and when he does not, and that decision, except in the clearest case, we should not be disposed to disturb. Waterman v. Shipman, supra, was written when no judges presided at the trial, and when, therefore, there was no one to decide whether or not expert testimony was necessary. It has no application whatever since the new equity rules (198 F. xix, 115 C.C.A. xix), the whole purpose of which, in this regard, was to render suits in equity less oppressive to suitors by some control over the admission of evidence. One of the chiefest scandals of the old procedure was the interminable examination of experts, to extract their opinions upon the very issues which the courts alone could decide. The logomachy which resulted from the cross-examination of an expert by the opposing lawyer was arid beyond belief. No one read it, every one was annoyed by it, and some one paid for it.

In the case at bar we see no reason whatever to differ from the learned District Judge in his conclusion that the specifications of all these patents speak a language comprehensible enough, without experts, for the disposal of the case. As this was all that he ought to have used it for in any event, we do not see how he could have done differently.

Kohn's invention depends upon the shape of the furnace, the interchangeability of the duplicate forms, the removability of the coils from each form, and the possibility of change from multiple to series...