1. Certain flux claims of Jones patent No. 2,043,960, for an
electric welding process and for fluxes, or compositions, to be
used therewith,
held valid and infringed. Pp.
336 U. S.
273-276.
(a) This Court, being a court of law, rather than a court for
correction of errors in factfinding, cannot undertake to review
concurrent findings of fact by two courts below in the absence of a
very obvious and exceptional showing of error. Pp.
336 U. S.
274-275.
(b) While the ultimate question of patentability is one of
meeting the requirements of the statute, the facts found by the two
courts below with respect to these claims warrant a conclusion by
this Court as a matter of law that those statutory requirements
have been met. P.
336 U. S.
275.
(c) The two courts below found that these claims were infringed,
and this Court finds no cause for reversal. Pp.
336 U. S.
275-276.
2. Certain other flux claims of the same patent
held
invalid as being too broad and comprehending more than the
invention. Pp.
336 U. S.
276-277.
(a) While vain repetition is no more to be encouraged in patents
than in other documents, and claims, like other statements, may
incorporate other matters by reference, their text must be
sufficient to "particularly point out and distinctly claim" an
identifiable invention or discovery. P.
336 U. S.
277.
(b) When claims overclaim the invention to the point of
invalidity and are free from ambiguity which might justify resort
to the specifications, they are not to be saved because the latter
are less inclusive. P.
336 U. S.
277.
3. All process claims of the same patent
held invalid.
Pp.
336 U. S.
277-279.
4. Both courts below having found that the patent had not been
abused so as to forfeit the right to maintain an infringement suit
based on the claims held valid, this Court affirms their judgment
on that point. Pp.
336 U. S.
279-280.
167 F.2d 531, affirmed in part and reversed in part.
Page 336 U. S. 272
In a suit for infringement of a patent, the District Court held
that certain claims were valid and infringed, and had not been
forfeited by misuse, but that certain other claims were invalid. 75
U.S.P.Q. 231. The Court of Appeals affirmed in part and reversed in
part. 167 F.2d 531. This Court granted certiorari. 335 U.S. 810.
Judgment of the Court of Appeals reversed insofar as it
reverses that of the District Court and judgment of the District
Court reinstated in toto. P.
336 U. S.
280.
MR. JUSTICE JACKSON delivered the opinion of the Court.
Writs of certiorari have been granted, 335 U.S. 810, to review
two judgments of the Court of Appeals for the Seventh Circuit
involving the same patent. What we shall call the Jones patent was
No. 2,043,960, issued to Lloyd Theodore Jones and others for an
electric welding process and for fluxes, or compositions, to be
used therewith. The patent is now owned by The Linde Air Products
Company, which brought an action for infringement against the
Lincoln and two Graver companies.
The District Court held four of the flux claims valid and
infringed, and concluded that the patent owner had not misused the
patent so as to forfeit its claims to relief therefor. It held
certain other flux claims and all of the process claims invalid. 75
U.S.P.Q. 231.
Page 336 U. S. 273
The Court of Appeals affirmed the findings that four flux claims
were valid and infringed and that the patent had not been abused,
but reversed the trial court and held valid the process claims and
the remaining contested flux claims. 167 F.2d 531.
The petitioners contend not only that the Court of Appeals'
judgment should be reversed, but that we should also reverse the
District Court's finding of partial validity, and should declare
the patent entirely invalid and not infringed.
At the trial, the electric welding prior art and the nature of
the Jones invention were explored at length, and opinions of the
two courts below, already in the books, adequately discuss the
technology of that art and the scientific features of the claims
involved. We shall confine this opinion to a statement of the legal
principles which lead to our decision.
I
. FLUS CLAIMS 18, 20, 22, AND 23 HELD VALID
AND INFRINGED BY TWO COURTS BELOW
Electric welding was an established art before this invention,
but one with serious limitations which the industry sought to
overcome. The known method was slow and laborious, and permitted
welding of only relatively thin plates. It was of different types,
but each had such deficiencies as a dazzling open arc, smoke, and
splatter, which made operation unpleasant and somewhat
hazardous.
Three scientifically trained individuals, Jones, Kennedy, and
Rotermund, set out purposely to discover a cure for the
deficiencies and inadequacies in the method of flux welding, then
the most successful method known. They collaborated for some six
months in conducting a series of about 500 experiments, in the
course of which they compounded 75 different flux compositions.
They finally produced the invention for which a patent was
sought.
Page 336 U. S. 274
The trial court noted that the results produced by their
invention contrasted with those possible under all prior methods in
that
"there is no glare, no open arc, no splatter, and very little,
if any, smoke in the Jones,
et al. method."
"The truly remarkable difference, however, between what Jones,
Kennedy, and Rotermund invented and what had gone on before is
perhaps best manifested by the performance achievement of their
invention. For instance, only through its use can plates as thick
as two and one-half inches be welded in a single pass. Furthermore,
the welding speeds made possible by it dwarf those of any other
method, and the welds produced by it are of the highest quality, in
contrast to the great amount of porosity contained in the welds
produced by the so-called clay flux process."
The trial court continued:
"Since the patentees did invent something patentable over the
prior art of electric welding, the collateral questions of what
constitutes their invention and what are its boundaries become
pertinent."
He concluded that what was really invented was that which was
claimed and bounded by the composition claims Nos. 18, 20, 22, and
23. His findings and conclusion were affirmed by the Court of
Appeals. We are now asked to hold that there has been no such
invention.
Rule 52(a) of the Federal Rules of Civil Procedure provides in
part:
"Findings of fact shall not be set aside unless clearly
erroneous, and due regard shall be given to the opportunity of the
trial court to judge of the credibility of the witnesses."
To no type of case is this last clause more appropriately
applicable than to the one before us, where the evidence is largely
the testimony of experts as to which a trial court may be
enlightened by scientific demonstrations. This trial occupied some
three weeks, during which, as the record shows, the trial judge
Page 336 U. S. 275
visited laboratories with counsel and experts to observe actual
demonstrations of welding as taught by the patent and of the
welding accused of infringing it, and of various stages of the
prior art. He viewed motion pictures of various welding operations
and tests, and heard many experts and other witnesses. He wrote a
careful and succinct opinion, and made findings covering all the
factual issues.
The rule requires that an appellate court make allowance for the
advantages possessed by the trial court in appraising the
significance of conflicting testimony, and reverse only "clearly
erroneous" findings. These are manifestly supported by substantial
evidence, and the Court of Appeals found them supported by the
weight of the evidence -- indeed found the evidence to warrant
support of the patent even in matters not found by the trial court.
A court of law, such as this Court is, rather than a court for
correction of errors in factfinding, cannot undertake to review
concurrent findings of fact by two courts below in the absence of a
very obvious and exceptional showing of error.
Goodyear Tire
& Rubber Co. v. Ray-O-Vac Co., 321 U.
S. 275;
District of Columbia v. Pace,
320 U. S. 698;
Williams Mfg. Co. v. United Shoe Machinery Corp.,
316 U. S. 364;
Baker v. Schofield, 243 U. S. 114,
243 U. S.
118.
No such showing is made. While the ultimate question of
patentability is one of meeting the requirements of the statute,
R.S. § 4886, as amended, 35 U.S.C. § 31, the facts as found with
respect to these four flux claims warrant a conclusion here that,
as matter of law, those statutory requirements have been met.
Accordingly, we affirm the judgment insofar as it holds claims
numbered 18, 20, 22, and 23 define an invention for which patent
has validly issued.
Turning to the question of infringement, the District Court
found that the Lincoln Electric Co. made, and the
Page 336 U. S. 276
other petitioners used and sold, a flux substantially identical
with that set forth in the valid composition claims of the patent
in suit, and which could be made by a person skilled in the art
merely by following its teachings. The petitioners introduced no
evidence to show that their accused flux was derived either from
the prior art, by independent experiment, or from any source other
than the teachings of the patent in suit. The court found
infringement of each of the four claims, and concluded that the
respondent was entitled to a permanent injunction against future
infringement and to an accounting for profits and damages. These
findings and conclusions were affirmed by the Court of Appeals, and
we find no cause for reversal.
II
. FLUX CLAIMS HELD INVALID BY THE DISTRICT COURT
AND VALID BY THE COURT OF APPEALS
The District Court held invalid claims to a flux for use in the
process, numbered 24, 26, and 27. The Court of Appeals reversed as
to these, and held them valid. Remaining flux claims, numbered 19,
21, 25, 28, and 29, were not in issue, and claim 27 we consider
along with the process claims.
The difference between the District Court and the Court of
Appeals as to these findings comes to this: the trial court looked
at claims 24 and 26 alone, and declined to interpret the terms
"silicates" and "metallic silicates" therein as being limited or
qualified by specifications to mean only the nine metallic
silicates which had been proved operative. The District Court
considered that the claims therefore were too broad, and
comprehended more than the invention. The Court of Appeals
considered that, because there was nothing in the record to show
that the applicants for the patent intended by these claims to
assert a monopoly broader than nine metallic silicates named in the
specifications, the court should have construed
Page 336 U. S. 277
the claims as thus narrowed and limited by the
specifications.
The statute makes provision for specification separately from
the claims, and requires that the latter "shall particularly point
out and distinctly claim the part, improvement, or combination
which he claims as his invention or discovery." R.S. § 4888, as
amended, 35 U.S.C. § 33. It would accomplish little to require that
claims be separately written if they are not to be separately read.
While vain repetition is no more to be encouraged in patents than
in other documents, and claims like other statements may
incorporate other matter by reference, their text must be
sufficient to "particularly point out and distinctly claim" an
identifiable invention or discovery. We have frequently held that
it is the claim which measures the grant to the patentee.
See,
for example, Milcor Steel Co. v. George A. Fuller Co.,
316 U. S. 143,
316 U. S. 145;
General Electric Co. v. Wabash Appliance Corp.,
304 U. S. 364,
304 U. S. 369;
Altoona Publix Theaters v. American Tri-Ergon Corp.,
294 U. S. 477,
294 U. S. 487.
While the cases more often have dealt with efforts to resort to
specifications to expand claims, it is clear that the latter fail
equally to perform their function as a measure of the grant when
they overclaim the invention. When they do so to the point of
invalidity, and are free from ambiguity which might justify resort
to the specifications, we agree with the District Court that they
are not to be saved because the latter are less inclusive.
Cf.
General Electric Co. v. Wabash Appliance Corp., 304 U.
S. 364,
304 U. S.
373-374;
see McClain v. Ortmayer, 141 U.
S. 419,
141 U. S.
424-425;
Cimiotti Unhairing Co. v. American Fur
Refining Co., 198 U. S. 399,
198 U. S.
410.
We think the District Court correctly applied this principle to
claims 24 and 26.
III
. PROCESS CLAIMS
All process claims were held invalid by the District Court;
those numbered 1, 3, 4, 7, 8, and 9, because they
Page 336 U. S. 278
make no specific reference to the essential chemical
constituents of the welding composition to be used in the claimed
welding process, a conclusion with which we agree. Process claim 2
was held invalid for the reason applicable to flux claims 24 and
26, with which we also agree. Others, namely 5, 6, 11, 12, 13, 14,
15, 16, and 17, and composition claim 27, were held invalid because
they erroneously imported that the sole conductive medium through
which electric current passes from the electrode to the base metal
is the welding composition, which is in a molten state, and that no
electric arc phenomenon is present.
The court found that the procedural steps in the process taught
by the patent are identical in all respects with those followed in
prior automatic electric welding processes, and that the only
invention or discovery resides in the use of a different welding
composition. It sustained the patent for the composition, as we
have shown, but denied its validity insofar as it claimed the old
procedure.
The trial court gave extensive consideration to the process
claims. It agreed that a radically new process would have been
discovered if it could be said that the electric current passed
between the electrode and the base metal through a welding
composition in a liquid state and that no electric arc is present.
All of the previous art had used the electric arc. But, with full
appreciation of the critical nature of the inquiry and after long
litigation of the technology of the art, the court concluded that
no such finding of departure from the prior art could be made, and
said that the evidence is persuasive that no such basic difference
in phenomena is present in the Jones method.
The District Court reinforced its conclusion by pointing out
that the inventors themselves initially did not conceive their
invention to embody any such radical departure
Page 336 U. S. 279
from known phenomena, and that their first application for a
patent was replete with references to the presence and use of an
electric arc in the new method. It was only after they had assigned
their rights to the respondent that the suggestion of a basically
new phenomenon, other than an arc, was made. Just what happens in
the Jones method admits of controversy, for there is no visual
evidence of an electric arc after the welding operation commences,
because what actually occurs between the electrode and the metal
base is hidden from view by the flux. The court concluded that it
is impossible to say with complete certainty that there is not an
arc, and one of the plaintiff's expert witnesses gave substantial
support to the idea that the arc is still present, although it is
shielded by the flux in the Jones patent.
The same deference is due to the findings of the trial court
which overturn claims as to those which sustain them. Technicians
may, and probably will, continue to debate with plausible arguments
on each side as to what this obscure process really is. But the
record in this case, while not establishing to a certainty that the
findings are right, fall far short of convincing us that they are
clearly erroneous. We think that the rules that govern review
entitle the trial court's conclusions to prevail, and that the
process claims are invalid under the statute.
IV
. ABUSE OF PATENT
Contentions are made that the patent has been abused through
efforts to broaden the patent monopoly by requiring the purchase of
unpatentable material for use in connection with it. The trial
court found, however, that the plaintiff does not impose on
licensees, either as a condition of a license or otherwise, any
requirement, condition, agreement, or understanding as to the
purchase or use of unpatentable commodities, and that its licensees
are free to buy and use any materials and equipment
Page 336 U. S. 280
from any source. The court recognized that an appearance of such
freedom is not conclusive if it conceals a subterfuge, and that
there is a real, although informal, restraint. But, examining the
conduct of the plaintiff, it found no such obstacle to the
maintenance of an action for infringement on that part of the
patent which was valid. The Court of Appeals affirmed, and we
accept the conclusion of the two courts below on this branch of the
case.
Our conclusion is that the judgment of the Court of Appeals,
insofar as it reverses that of the District Court, should be
reversed and that the judgment of the District Court be in all
things reinstated. To that extent the judgment below is
reversed.
It is so ordered.
MR. JUSTICE BLACK, with whom MR. JUSTICE DOUGLAS joins,
concurring.
I concur in the Court's judgment in this case and in parts II,
III and IV of the Court's opinion. But my concurrence in the
holding that Claims 18, 20, 22, and 23 are valid does not rest
merely on findings of the District Court and the Court of Appeals
that those claims were valid. While accepting the findings of those
two courts on what I consider to be questions of fact, it is my
view that determination of the ultimate question of patentability
cannot properly be classified as a finding of fact. I would adhere
to this Court's earlier pronouncement that "whether the thing
patented amounts to a patentable invention" is a question of law to
be decided by the courts as such.
Mahn v. Harwood,
112 U. S. 354,
112 U. S. 358,
and see dissenting opinions in
Goodyear Tire &
Rubber Co. v. Ray-O-Vac Co., 321 U. S. 275,
321 U. S. 280,
note 1, and
Williams Manufacturing Co. v. United Shoe Machinery
Corp., 316 U. S. 364,
316 U. S.
383.
Page 336 U. S. 281
I agree, however, that the facts found here justify the holding
that Claims 18, 20, 22, and 23 do show patentable discovery when
measured by the standards announced by this Court in
Cuno
Engineering Corp. v. Automatic Devices Corp., 314 U. S.
84. For this reason, I concur in affirming the judgment
to the extent that it held these claims valid.