Appeal from the District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
Appellant sued to enjoin the infringement of three patents: No. 1,648,560, issued November 8, 1927, covering electric arc welding; No. 1,278,985, issued September 17, 1918, covering portable electric arc welding apparatus; No. 1,648,562, issued November 8, 1927, covering electric arc welding control methods and means; and to collect damages for past infringements. All three patents were issued to H. D. Morton and covered methods and means for automatically welding with the electric arc.
Appellee in its arc welding work used three different metallic arc welding mechanisms referred to in the record as the C-1 system, the BM system, and the Exhibit 1 system. The court at the close of the trial announced its decision and made findings of fact favorable to appellee. Below appear material quotations from the opinion.*fn1
Appellant has fully appreciated, as is evidenced by its two lengthy briefs, covering nearly 300 pages, the heavy task with which it is confronted.
The District Court chose to rest its decision solely on noninfringement. It did not pass upon the defense of invalidity.
We quite agree with it that in patent suits Equity Rule 70 1/2 (28 USCA § 723) does not necessitate specific findings on the issues determinative of validity, if the court be satisfied that the patent is not infringed. There may be cases where both issues should be met and covered by findings. Other cases, however, do not call for findings on validity. There exist reasons for not passing on validity unless required to do so. Time may reveal the existence of prior art not shown upon the trial. The greater utility and usefulness of the invention, if a longer time be allowed, may in a doubtful case determine validity. It is for these and other reasons that a court ordinarily disposes of a patent suit on the issue of infringement, if the facts permit it so to do. It must be admitted, however, that there are patent suits, and many of them, where the question of infringement is so dependent upon the state of the prior art that a court can hardly fix the status of the patent without determining its validity.
Infringement here depends largely upon the status of the Morton patents. If they cover pioneer inventions, as contended for by appellant, the argument for infringement is greatly strengthened. The standing of the inventions in the art turns upon (1) the scope to be given the prior Sessions patent and (2) whether the electrode feed regulation in the carbon are lamp and other fields is analogous art.
In reaching its decision, the court in its short memorandum put its finger upon the three vital issues, the disposition of which determines this issue of infringement.(a) Was electric feed regulating means developed in the carbon arc lamp and electric furnace art analogous to that in which Morton worked? (b) The dominant position of the Sessions patent in the metallic arc welding art. (c) The separate considerations of appellee's three structures, known as C-1, BM, and Exhibit 1.
The court said appellant no longer claimed infringement by appellee's structure known as Exhibit 1. It likewise found, independently of such concession, that said model (Exhibit 1) did not infringe.
Without stating our reasons at length, we will limit ourselves to expressing our conclusion, which is that the holding of noninfringement by Exhibit 1 was clearly right. Appellant's contention that Exhibit 1 might be easily changed so as to infringe needs no comment.
We likewise agree with Judge Geiger in his conclusion respecting analogous art. We think the apparatus found in the regulation of the feed of a carbon electrode in an arc lamp and the electrode feed regulation in a moving picture machine was a part of the prior art which confronted Morton.
As the disposition of this appeal turns somewhat upon the soundness of this conclusion, a statement of our reasons for reaching it is justified.
The determination of what is analogous art involves somewhat the same tests as are applied to ascertain patentable novelty. Numerous standards have been laid down, but no rule of thumb is satisfactory. This court attempted to define a test in A.J. Deer Co. v. U.S. Slicing Machine ...