EXPANDED METAL CO. v. BRADFORD(1909)
[214 U.S. 366, 367] Mr. Ernest Howard Hunter for the Expanded Metal Company.
[214 U.S. 366, 370] Messrs. Thomas W. Bakewell, Frederick P. Fish, and E. Hayward Fairbanks for the General Fireproofing Company.
Mr. Justice Day delivered the opinion of the court:
These cases involve opposing decisions as to the validity of letters patent of the United States No. 527,242, dated Octo- [214 U.S. 366, 374] ber 9, 1894, granted to John E. Golding for an alleged improvement in the method of making expanded sheet metal. In case No. 66, here on writ of certiorari to the circuit court of appeals for the third circuit, a decree of the circuit court of the United States for the eastern district of Pennsylvania, sustaining the patent, was reversed, and the patent held invalid. The opinion of the circuit judge sustaining the patent is found in 136 Fed. 870. The case in the court of appeals is found in 77 C. C. A. 230, 146 Fed. 984. After the decree in the circuit court of appeals for the third circuit, the Expanded Metal Company having filed a bill against the General Fireproofing Company in the circuit court of the United States for the northern district of Ohio, the case was heard and the patent held invalid on the authority of the case in the circuit court of appeals for the third circuit. 157 Fed. 564. The circuit court of appeals for the sixth circuit reversed the United States circuit court for the northern district of Ohio, and held Golding's patent valid and infringed. 164 Fed. 849. These writs of certiorari bring these conflicting decisions of the courts of appeal here for review.
The patent in controversy relates to what is known as expanded sheet metal. Expanded metal may be generally described as metal openwork, held together by uncut portions of the metal, and constructed by making cuts or slashes in metal and then opening them so as to form a series of meshes or latticework. In its simplest form, sheet metal may be expanded by making a series of cuts or slits in the metal in such relation to each other as to break joints, so that the metal. when opened or stretched, will present an open mesh appearance. It may be likened to the familiar woven wire openwork construction, except that the metal is held together by uncut portions thereof, uniting the strands, and the whole forms a solid piece.
In the earlier patents different methods are shown for cutting the metal, which cuts were afterwards opened by a separate operation of pulling or stretching. These crude methods [214 U.S. 366, 375] are shown in the earlier American and English patents which appear in the record. While nothing more than such methods was accomplished in the art there was little general or commercial use for expanded metal.
It was apparent that if a method could be devised by which the metal could be simultaneously cut and expanded, such method would be a distinct advance in the art, and this record discloses that the desirable result of simultaneously performing these operations was accomplished in the Golding and Durkee patent No. 320,242. In that patent the operation was performed by means of knives arranged in a step order, the sheet to be fed obliquely. The inventors described the Golding and Durkee method as follows:
The result was to produce expanded metal, as shown in this figure: [214 U.S. 366, 376]
With this patent as the advanced state of the art, Golding set about making further improvements, and the result was the patent in suit. The specifications of the patent in suit state:
It is thus apparent that the method covered by the claim of the patent is accomplished by the two operations indicated and performed in the manner pointed out in the specifications. The first operation of cutting, bending, and stretching the strands simultaneously produces a series of stretched loops or half diamonds. Thus:
This series of half diamonds is then supplemented by the second operation, which consists in making a second series of cuts and expansions for stretching the strands back of and opposite the parts of the metal left uncut by the first operation. The result is that the series of one- half diamonds is converted into the series of full diamonds and because of the manner in which the stretching is done, while the ends of the strands are still firmly attached to the sheet, there is no material shortening of the length of the sheet. Thus:
What has Golding accomplished by this alleged improvement? These records leave no doubt that there are substantial advantages in the method of the patent in suit. As the sheet is not shortened, the completed product is regular [214 U.S. 366, 379] in form and ready for many uses to which the shortened sheet of the old method could not be put. The metal worked upon can be much heavier than that which could be successfully manipulated by the old process. The meshes are formed in a uniform and regular way, so that a line drawn through their intersections in one direction is at right angles with a line drawn through their intersections in the other direction. There is no irregularity in the width of the strands. Put to the test of actual use, this record discloses that while the method of the Golding and Durkee patent is still in use in some places in this country, the method disclosed in the patent in controversy is largely in use in the United States, Great Britain, and Continental Europe; that it has greatly increased the use of expanded metal in this country, and opened new fields for use where sheets of a regular shape can be used to a greater advantage than they could be when made under the old process.
The learned circuit court of appeals for the third circuit seems to have regarded the invention as consisting merely of the improvement of the process in the manufacture of expanded metal by stretching certain portions of the metal when the slit is cut and the mesh is opened. A broad claim of that character was made in the patent Office, and the file wrapper and contents show that it was disallowed by the examiner. The claim in its present form, framed by the examiner as sufficient to cover the real invention of the patent, was accepted by the applicant, and is now the claim of the patent.
If all that Golding did was to show a method of simultaneously cutting and stretching the metal, the examiner was doubtless right in holding it to have been anticipated by former inventions, notably the patent to Ohl, No. 475,700, and in a degree in the previous patents to Golding and to Golding and Durkee.
But the patent in suit, embraced in the claim allowed, shows more than a mere method of making open meshes by simultaneously cutting and stretching the metal. It shows a method by which the metal is first cut and stretched in the [214 U.S. 366, 380] manner indicated to make the half diamond, and then a second operation, co- ordinating with the first, and completing the mesh by the manner in which it is performed in connection with the first. It is the result of the two operations combined which produces the new and useful result covered by the claim allowed in the Patent Office, and, which, when read in connection with the specifications, shows substantial improvement in the art of making expanded metal work.
But it is said that the patent in suit discloses no means of practically operating the method shown, and therefore, as said by the learned judge in the third circuit, 'it is but the expression of a happy thought;' but the requirement of the patent law, in order to make a method or process patentable, is that the patent shall indicate to those skilled in the art the adaptation of means to put it into practice.
We think this record amply discloses, while no complete mechanism is pointed out in the specifications, enough to indicate to those skilled in such matters a mechanism whereby the method of the patent can be put into operation. As said by Judge Severens, delivering the opinion of the court in No. 606, in the circuit court of appeals for the sixth circuit:
Golding testifies that he at first executed his process by [214 U.S. 366, 381] hand. Other witnesses, skilled in the art, say that they could do likewise from the information found in the patent.
The important thing in this patent is a method of procedure, not the particular means by which the method shall be practised. Golding's machine patent was not applied for for more than a year and a half after the issue of the patent in suit.
It is suggested that Golding's improvement, while a step forward, is nevertheless only such as a mechanic skilled in the art, with the previous inventions before him, would readily take; and that the invention is devoid of patentable novelty. It is often difficult to determine whether a given improvement is a mere mechanical advance, or the result of the exercise of the creative faculty amounting to a meritorious invention. The fact that the invention seems simple after it is made does not determine the question; if this were the rule, many of the most beneficial patents would be stricken down. It may be safely said that if those skilled in the mechanical arts are working in a given field, and have failed, after repeated efforts, to discover a certain new and useful improvement, that he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor. There is nothing in the prior art that suggests the combined operation of the Golding patent in suit. It is perfectly well settled that a new combination of elements, old in themselves, but which produce a new and useful result, entitles the inventor to the protection of a patent. Webster Loom Co. v. Higgins, 105 U.S. 580 -591, 26 L. ed. 1177-1181.
To our minds, Golding's method shows that degree of ingenuity and usefulness which raises it above an improvement obvious to a mechanic skilled in the art, and entitles it to the merit of invention. Others working in the same field had not developed it, and the prior art does not suggest the combination of operations which is the merit of Golding's invention.
It is lastly contended, and this is perhaps the most important question in the case, that, in view of the former declara- [214 U.S. 366, 382] tions and opinions of this court, what is termed a process patent relates only to such as are produced by chemical action, or by the operation or application of some similar elemental action, and that such processes do not include methods or means which are effected by mere mechanical combinations, and a part of the language used in Corning v. Burden, 15 How. 252, 14 L. ed. 683, and Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 , 39 L. ed. 899, 15 Sup. Ct. Rep. 745, is seized upon in support of this contention. We have no disposition to question the decision in those cases.
An examination of the extent of the right to process patents requires consideraion of the object and purpose of the Congress in exercising the constitutional power to protect, for a limited period, meritorious inventions or discoveries. Section 4886 of the Revised Statutes (U. S. Comp. Stat. 1901, p. 3382) provides:
This is the statute which secures to inventors the rights of protection; and it is not the province of the courts to so limit the statute as to deprive meritorious inventors of its benefits. The word 'process' is not used in the statute. The inventor of a new and useful art is distinctly entitled to the benefit of the statute as well as he who invents a machine, manufacture, or composition of matter. The word 'process' has been brought into the decisions because it is supposedly an equivalent form of expression, or included in the statutory designation of a new and useful art.
What, then, is the statutory right to a patent for a 'process' when the term is properly considered? Curtis, in his work on the Law of Patents, says:
In Robinson on Patents, vol. 1, 167, it is said:
And Walker on Patents, 4th ed. 3, states that valid process patents may be granted for 'operations which consist entirely of mechanical transactions, but which may be performed by hand or by any of several different mechanisms or machines.'
It is undoubtedly true, and all the cases agree, that the mere function or effect of the operation of a machine cannot be the subject- matter of a lawful patent. But it does not follow that a method of doing a thing, so clearly indicated that those skilled in the art can avail themselves of mechanism to carry it into operation, is not the subject- matter of a valid patent. The contrary has been declared in decisions of this court. A leading case is Cochrane v. Deener, 94 U.S. 780 , 24 L. ed. 139, in which this court sustained a process patent involving mechanical operations, and in which the subject was discussed by Mr. Justice Bradley, speaking for the court. On page 787 that learned justice said:
This clear and succinct statement of the rule was recognized and applied (Mr. Justice Bradley again speaking for the court) in the case of Tilghman v. Proctor, 102 U.S. 707 , 26 L. ed. 279. In the course of the opinion the learned justice tersely says:
That this court did not intend to limit process patents to those showing chemical action or similar elemental changes is shown by subsequent cases in this court.
In Westinghouse v. Boyden Power Brake Co. 170 U.S. 537 , 42 L. ed. 1136, 18 Sup. Ct. Rep. 707, the opinion was written by the same eminent justice who wrote the opinion in Risdon Iron & Locomotive Works v. Medart, 158 U. S. supra, and, delivering the opinion of the court, he said:
These cases [ 158 U.S. 68 , and Wicke v. Ostrum, 103 U.S. 461 , 26 L. ed. 409] assume, although they do not expressly decide, that a process, to be patentable, must involve a chemical or other similar elemental action; and it may be still regarded as an open question whether the patentability of processes extends beyond this class of inventions.'
And added these significant words:
And the same learned justice wrote the opinion of the court in Carnegie Steel Co. v. Cambria Iron Co. 185 U.S. 403 , 46 L. ed. 968, 22 Sup. Ct. Rep. 698, and sustained a process patent. If, by any construction, that process could be said to involve a 'chemical or other similar elemental action,' no stress was laid upon that fact. This court, speaking through Mr. Chief Justice Waite, sustained a patent in the Telephone Cases, 126 U.S. 1 , 31 L. ed. 863, 8 Sup. Ct. Rep. 778, for a method of transmitting electrical undulations similar in form to the vibrations of the air accompanying vocal sounds, and at the same time the patent for the apparatus by which the method was operated was sustained.
In Leeds & C. Co. v. Victor Talking Mach. Co. decided at this term, 213 U.S. 301, 318 , 53 S. L. ed. --, 29 Sup. Ct. Rep. 495, 500, this court said: 'A process and an apparatus by which it is performed are distinct things. They may be found in one patent; they may be made the subject of different patents.'
We therefore reach the conclusion that an invention or discovery of a process or method involving mechanical operations, [214 U.S. 366, 386] and producing a new and useful result, may be within the protection of the Federal statute, and entitle the inventor to a patent for his discovery.
We are of opinion that Golding's method was a substantial improvement of this character, independently of particular mechanisms for performing it, and the patent in suit is valid as exhibiting a process of a new and useful kind.
As to the infringement, little or no question was made in case No. 606. In case No. 66 the circuit court held that there was some evidence of infringement, enough, at least, to warrant the decree sustaining the patent and awarding an accounting. With this conclusion we agree. It follows that the decree of the Circuit Court of Appeals for the Third Circuit (No. 66) should be reversed, and that of the Circuit Court of Appeals for the Sixth Circuit (No. 606) should be affirmed, and the cases remanded to the Circuit Courts of the United States for the Eastern District of Pennsylvania and the Northern District of Ohio, respectively, for further proceedings consistent with this opinion.