Before EVANS and SPARKS, Circuit Judges, and WOODWARD, District Judge.
Appellee brought suit to restrain the infringement of four patents and to recover damages for their past infringements. The patents sued upon were No. 1,680,370 covering a radio supply unit, No. 1,682,492 covering a radio battery eliminator, No. 1,682,778, and No. 1,699,523. All patents were issued to P. E. Edelman and were by him assigned to appellee before suit was begun. Appellee did not press his suit on patent No. 1,682,778, and the court held the claims of patent No. 1,682,778 relied upon to be invalid.
The court upheld claims 1, 2, and 3 of No. 1,680,370 and claims 3 and 4 of No. 1,682,492, sustained appellee's motion to dismiss his complaint without prejudice as to patent No. 1,699,523, and dismissed the suit as to patent No. 1,682,778.
Appellant denies validity and infringement of the claims of both of the patents sustained.
The date of Edelman's discovery of his earlier patent is sharply controverted, and its exact flxation is of vital importance in view of the issuance of other patents prior to his filing date. The court found that "Edelman first conceived his invention defined in claims 1, 2, and 3 of patent No. 1,680,370 on April 10, 1922 * * * and immediately thereafter set out to reduce the same to practice, the first working device having been built by the 20th day of April, 1922. * * *"
After the appeal was perfected, appellant sought leave from this court to apply to the District Court to reopen the hearing and to submit further evidence upon this issue of the date of Edelman's discovery. Such leave was granted, but upon condition that the District Court prescribe the terms and conditions upon which the rehearing might be allowed. The District Court thereupon granted appellant leave to reopen the hearing and permit the introduction of further evidence, but upon condition that the witnesses be produced and examined in open court. A hearing was thereupon had, at the conclusion of which the court filed a memorandum, the material portions of which are as follows:
"Without discussing the details of such evidence, I am satisfied that nothing therein included is sufficient to warrant alteration or modification of the findings and conclusions heretofore adopted. Though there appear in the record some sharp conflicts so far as parole testimony is concerned, I am of the opinion that such controversies are explainalbe upon the ground that human recollection as to events ten years old, at the best, is faulty and subject to error. The documents submitted by plaintiff directly bearing upon the issue of the date of invention * * * impel the court to the findings and conclusions heretofore adopted. There will be no modification or alteration thereof."
The decree was re-entered, and a second appeal from such interlocutory decree was taken. The two appeals were presented and heard at the same time.
The first question which necessitates review is the above finding that the date of Edelman's discovery, disclosed in patent No. 1,680,370, was April 10, 1922. This finding must be accepted. There is evidence to support it. The trial judge, upon the second hearing, had the benefit of seeing and hearing the witnesses testify in open court. As there was but a single issue to be tried, the parties were fully prepared. Discrepancies in the testimony of certain witnesses on this and the previous hearing appeared. They were, however, as the trial judge observed, or at least might have been, traceable to the uncertainties of human memories. Certainly, the District Judge gave both parties full opportunity to be heard, and he was in far better position than we to weigh the oral testimony. While the burden was upon appellee to carry back his effective date to April 10, 1922, we are unable to say that the judge failed to place upon him the proper burden, or to say that his evidence did not overcome this burden. It is true appellant has made a rather persuasive attack upon Edelman's story as to the date of his invention. The discrepancy in the testimony of plaintiff's witnesses and the conflict between Edelman's recollection of dates and that of his former employees have been duly considered. However, in view of Edelman's positive statement, the finding becomes one that is extremely hard to upset on appeal. Uihlein v. General Electric Co. (C.C.A.) 47 F.2d 997, 1002.
Accepting then, as we do, April 10, 1922, as the effective date of appellee's discovery, much of the prior art which appellant cited is eliminated.
With this fact issue settled, we approach the study of the claims and the specifications with only such art as existed April 10, 1922, for their background. The opinion of the District Court, 49 F.2d 331, describes appellee's power pack, its operation, and its purposes. It greatly shortens this opinion, for repetition of the very satisfactory statement there appearing would be inexcusable. In view of that opinion our consideration of the arguments presented on this appeal and applicable to this patent may well be limited to the single contention that the combination of elements described in each of the three claims under consideration spelled aggregation instead of a patentable combination. This urge of appellant was not passed on by the District Court in its opinion.
Edelman generally described the invention in this language:*fn1
Three claims are involved. They read:*fn2
It is apparent from a reading of the claims that each combination describes an apparatus to harness, control, regulate, change the gait of, slow down, or step up that miracle of modern times -- the wonder-worker electron -- in its ceaseless and irresistible activity. True, the regulation and control of a current of electricity are in this case for the purpose of using it in a radio set; that is, in a device adapted to receive undulations similar in form to sound waves and to translate them into sound waves as perfectly as possible. Nevertheless, the elements of the combination describe apparatus through which runs a current of electricity. It is, roughly, the same current which entered the first element that comes out of the last element. It has been at one place "stepped up" inductively and at another its voltage has been varied by resistances. It has been changed from an alternating to a direct current. Its undulations have been smoothed out, and the even flow of the incoming voice current undulations, is the boast of its producer.
But how has this been accomplished? By a combination of elements coacting, one on the other, or by successive steps through old means, each producing its result independently of the other? We think the answers to these questions must be unfavorable to the inventor.
The differences between aggregation and patentable combination have been defined times without number. Siekert & Baum Stationery Co. v. Stationers Loose Leaf Co. (C.C.A.) 51 F.2d 326; Palmer v. Corning, 156 U.S. 344, 15 S. Ct. 381, 39 L. Ed. 445; Grinnell Washing Machine Company v. E. E. Johnson Company, 247 U.S. 426, 38 S. Ct. 547, 62 L. Ed. 1196; Powers-Kennedy Contracting Corp. v. Concrete, etc., Co., 282 U.S. 175, 51 S. Ct. 95, 75 L. Ed. 278. Particularly interesting is the opinion in Sachs et al. v. Hartford Electric Supply Co., 47 F.2d 743 (C.C.A. 2).
A few tests are decisive.
A new combination of elements, if it produces new and useful results, may be patentable, although all of the elements of the combination were old and in common use before the new combination was conceived. In other words, a new combination may consist of an association of elements one or more of which are new, or it may consist of an association of elements all of which are old but arranged in a new or novel manner. The discovery may be (not always) patentable. The result, however, to a certain extent supplies the test by which the said new combination is to be measured. To be patentable, the new combination must produce a result which is the production of the combination and not a mere aggregation of several results, each the complete product of one of the combined elements. The combined results of various elements of a ...