281 F. 680 | 6th Cir. | 1922
Suit for infringement of United States patent No. 1,046,066, December 3, 1912, to Tohann Harmatta, assignor to Thomson Electric Welding Company, which is the predecessor of plaintiff company. The invention relates to that branch of electric resistance welding known as spot welding, by which two sheets of metal are welded together in spots, as a substitute for riveting. Generally speaking, the welding is accomplished by the application of pressure and heating current, localized in spots on the opposite plane facts of the two metal sheets. Specifically, two pointed electrodes are applied to the opposite faces of the sheets, the electrode which feeds the electricity into the work and heats the metal to the welding point being caused to exert the pressure required to accomplish the weld. The specification states that—
“The necessary pressure may be exerted at the place of welding by the aid of any of those technical means which are suitable for producing or transmitting pressure—e. g., with a press either direct or by means of indirect transmission by levers; or it may be by means of simple hand levers, that is to say, by means of direct or indirect manual power, or by other means.”
The 21 claims of the patent relate some to the process, the others to the product. Plaintiff relies on claims 3, 8, 12, and 17 as typical. They are printed in the margin.
The patent has been adjudicated in but one other suit, viz., Thomson Electric Welding Co. (plaintiff’s predecessor) v. Barney & Berry, in the First Circuit, decided in 1915. In that case Circuit Judge Dodge, who presided in the District Court, held the patent void for lack of invention. The Circuit Court of Appeals’ held that the patent was not anticipated and that it involved invention, and reversed the judgment of the District Court. The opinions of both the District Court and of the Circuit Court of Appeals are reported in 227 Fed. 428 et seq., 142 C. C. A. 124. _
welding, with pressure of the parts involved, although the electrode did .not exert the welding pressure. In 1889 Thomson obtained a patent (No. 396,015) 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 (No. 444,928) 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 is not so limited, but 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,” the work being fed in the longitudinal direction of the joint “through suitable pressure devices [preferably roller electrodes], the work being properly arranged, so that the pressure devices will press the surfaces to be welded together and simultaneously passing the electric current through the work at the point of pressure.” The electrodes were employed to exert the welding pressure. The specification further states that “as the work is passed through such rolls with a continuous motion each point, as it comes between the rolls, is heated and the surfaces pressed together,” etc. By way of further description of one of the figures it is said that—
“The electric current being now turned on as it passes from one roller to the other and across the point of pressure will heat the work to the welding temperature * * * after which the screw can be given a few more turns to effect a solid union. The work having been thus started, may now be mov*683 ed along through or between the rolls so as to bring successive parts of the joint into position to be pressed and heated at the same time.”2
In 1893 Thomson obtained a patent (No. 496,019) relating particularly to soldering sheet metal pieces flatwise, either by the use of solder or (when applied to tin plates) by melting the tin sufficiently to establish union thereby. The electrodes, in the form of clamps or otherwise, served not only to supply the necessary heat, but to exert sufficient pressure upon the overlapped sheets to effect their union. A roller electrode is disclosed, performing the double function of heating and pressing, and having its periphery corrugated or grooved. As stated in the specification:
“The rollers exert pressure while the current heats the thin metal pieces at successive points between the rollers.”
This was, to say the least, electric resistance spot soldering.
In 1897 Robinson received a patent (No. 574,942) on so-called projection welding, as specially applied to the welding óf a splice bar to the web of a railroad rail, the splice bar having upon its inner face a number of projections which by the application of the heating current are fused, and by pressure made to form welds between the projections on the bar and the fused opposing portions of the rail. Kfeinschmidt, in 1898, took out a patent (No. 616,436) for a similar process, and by methods not essentially unlike those of Robinson.
Whether or not the Thomson so-called lap-welding invention should be regarded as an absolute anticipation of the Harmatta patent, we think the state of the art to which we have referred left no room for invention in Harmatta. Thomson’s lap-welding patent is criticized as not plane-face welding, much less spot-welding. We see no distinction upon principle between plane-face welding and lap-welding; the former certainly embraces the latter. If Thomson’s roller electrode device was capable of welding a line or seam in a'metal lap joint, it was readily adaptable to line-welding together coterminous plane-face plates. Harmatta’s original application (made in ignorance of Thomson) disclosed roller electrodes broadly enough to include that very use. We think Thomson’s lap-welding invention was in essence a welding in points. In fact, his line seam was merely a succession of adjoining points. The specification repeatedly speaks of the “point of pressure,” says that “each point as it comes between the rolls is heated,” etc.; “the current passes across the point of pressure.” It satisfactorily appears that, although Thomson’s roller electrodes in the form shown in the patent were not practicably adapted to commercial spot-welding as disclosed by the Harmatta patent, they could readily be made to do such spot-welding by the use of suitable projections upon the face of the rolls (Thomson later did spot-soldering by the use of such projections); and assuming that pin electrodes were essential to successful commercial spot-welding, that form of electrodes was old, as illustrated by Thomson’s electric soldering patent referred to.
Our conclusion of noninvention, based upon a review of the prior art, is materially strengthened by the serious doubt whether Harmatta thought, when he filed his patent application, that he had patentably invented anything by the disclosure of spot-welding, as a process or product distinct from point-welding or line-welding, as well as by the fact that others previous to the grant to Harmatta, and apparently in ignorance of Harmatta’s claimed invention, successfully practiced the art of spot-welding. Harmatta’s application was filed December 3, 1903. For “continuous welding,” the specification disclosed roller electrodes for exerting pressure “whereby the advancing series of single points of the seam to be welded is united to a whole with a minimum amount of current.” It also showed pin-shaped electrodes, “which may be adapted to work on the smallest possible surface of contact,” which could be used for the “welding of two metal sheets of equal thickness, intermittently or at certain spots only,” and by the
But none of the claims contain in terms any reference to spot-welding. The first claim related to the process of electric welding “consisting in employing the electrodes, not only to conduct the current to the objects being welded, but also to exert a regulable pressure on the same”; the second, to an apparatus for electric welding “comprising two electrodes between which the objects to be welded are introduced and means whereby one of the electrodes can be approached to and receded from the other”; the third, to an “electrode apparatus for electric welding, comprising two roller electrodes between which the objects to be welded are introduced, and means for pressing the electrodes to the work”; the fourth, to an “electrode apparatus for electric welding, comprising two roller electrodes between which the objects to be welded are introduced, and means for rotating one or both of the rollers for the purpose of advancing the work in its path between the electrodes.” Each of the four claims would literally read upon Thomson’s lap-welding or roller-electrode device. The natural inference would be that Harmatta regarded the principle employed in roller-electrode and pin-electrode welding as the same. The Patent Office found nothing patentable in Harmatta’s application until six years later.
It, however, convincingly appears in the record before us that in 1898 (and about five years before Harmatta’s application) Rietzel, while in the employ of plaintiff’s predecessor, in several instances successfully joined two pieces of lapped metal at isolated spots by means of a Thomson butt-welding machine; the sheets of metal being united by pressing them together and at the same time passing the heating current from one electrode (or so-called contact) to the opposite electrode, at the selected spot on the meeting surface of the plates,
The fact also appears in this record that at various times, ranging from two years to five or six years, before the issue of the Harmatta patent, and apparently in ignorance of his asserted invention, various manufacturers put out or used spot-welding machines with commercial success. Some of these uses antedated the issue of the Rietzel patent. These experiences also tend to discredit invention in Harmatta.
It follows, in our opinion, from what has been said, that the effect of the great commercial success of the Harmatta invention, in the hands of plaintiff is entitled to little weight upon the question of invention, even were that question otherwise in doubt, which we think it is not.
Our conclusion of noninvention makes it unnecessary to consider the alleged McBerty prior use, the defense of equitable estoppel asserted against plaintiff, the standing of the De Eerranti patent, or any of the other defenses presented.
The decree of the District Court is affirmed,
DENISON, Circuit Judge, dissents.
“3. The herein described method of uniting two pieces of metal, consisting in pressing them together while passing a heating electric current from one to the other and localizing the flow of current and the heating throughout the operation in a spot or spots, of circumscribed or limited area as compared with the area of the immediately opposed surfaces so as to limit the union of the pieces to a spot or spots.”
“8. The method of electrically welding two plates or sheets of metal together face to face between electrodes, consisting in restricting the area of contact of an electrode with said plates to a spot, passing a heating electric current from said electrode to the co-operating electrode through said spot to heat the work to welding temperature and applying pressure to the work in line with said spot to effect a welding of one plate to the other.”
“12. The method of electrically welding two pieces of sheet metal to one another, consisting in pressing the sheets,, together by pressure applied and localized in a distinct well-defined point or spot on the rear surface of a sheet while passing an electric current through them in the line of the pressure, thereby localizing the path of the heating current from one to the other of the meeting surfaces of the sheets to cause the said sheets to be heated to welding temperature by the electric resistance of the work at said spot, and applying pressure localized over said spot whereby the pieces are welded together at a distinct well-defined spot in their meeting surfaces answering the purpose of a rivet.”
“17. Metal plates fastened together by a number of distinct or isolated welds on their meeting surfaces and in spots comprising meeting portions of the metal plates, the backs of said plates being practically unaltered in their metallic condition and the spots on the meeting surfaces being separated from one another by distinct unwelded areas.”
All italics in this opinion are ours.