Thomson Spot Welder Co v. Ford Motor Co, 120

• Decision Date: 02 June 1924
• Docket Number: No. 120,120
• Citation: 265 U.S. 445,68 L.Ed. 1098,44 S.Ct. 533
• Parties: THOMSON SPOT WELDER CO. v. FORD MOTOR CO
• Court: U.S. Supreme Court

265 U.S. 445

44 S.Ct. 533

68 L.Ed. 1098

THOMSON SPOT WELDER CO.

v FORD MOTOR CO.

No. 120.

Argued Dec. 5, 1923.

Decided June 2, 1924.

Mr. Frederick P. Fish, of Boston, Mass., for petitioner.

Mr. Melville Church, of Washington, D. C., for respondent.

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 Fed. 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 Fed. 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 Fed. 428, 142 C. C. A. 124, in which the patent had been held to be valid, this writ of certiorari was granted. 260 U. S. 718, 43 Sup. Ct. 96, 67 L. Ed. 479.

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, 6 Sup. Ct. 974, 30 L. Ed. 54; Holmes v. Truman, 67 Fed. 542, 543, 14 C. C. A. 517; Hall v. Wiles (C. C.) 2 Blatchf. 194, 11 Fed. Cas. 280, 283; Poppen husen v. Falke (C. C.) 5 Blatchf. 46, 19 Fed. Cas. 1052, 1054; Shuter v. Davis (C. C.) 16 Fed. 564, 566; Blessing v. Copper Works (C. C.) 34 Fed. 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, 35 Sup. Ct. 339, 59 L. Ed. 637; United States v. State Investment Co., 264 U. S. 206, 44 Sup. Ct. 289, 68 L. Ed. ——, 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 Fed. 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 over-lapped edges of metal sheets, plates, etc., and other purposes.

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 welding was old and far advanced in 1903, when the Harmatta patent was applied for. Prof. Elihu Thomson * * * was a pioneer in that art. In 1886 he obtained process and apparatus patents * * * for so-called butt welding, which involved the uniting of the abutting ends of metal wires, bars, etc., by applying heat at the joint and the adjacent surfaces by means of electrodes, and pressing the two pieces together when heated to welding temperature. There was here true resistance welding, with pressure of the parts involved, although the electrode did not exert the welding pressure. In 1889 Thomson obtained a patent * * * for electric riveting, which involved the heating of the rivet when in place by means of a current passed through it by the use of electrodes, under pressure thereon, the effect being not only to swage the rivet and weld it to the adjoining metal, but apparently (when desired) to weld together, in part at least, the portions of the plates immediately adjoining the rivet. In 1891 Thomson obtained a patent * * * for what is called lap-welding. While the specification states that the invention is specially adapted to the welding of the overlapped edges of plates, it * * * expressly includes 'welding together strips, sheets, plates, or bars of metal where it is desirable to form a joint of considerable length.' According to the specification, 'the surfaces to be welded are pressed together to form a union,'...