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May 1, 1939


The opinion of the court was delivered by: MCVICAR

This is a civil action, the purpose of which is to restrain the defendant from alleged infringement of claims 1, 4, 12 and 13 of the McBerty patent No. 1,832,719, and for an accounting of profits and damages. The issues are the validity of said claims, whether the defendant has infringed the same and whether plaintiff is entitled to an accounting for profits and damages.

Defendant contends that said claims are invalid, and while the defenses vary slightly as to the different claims, the defense of invalidity, generally, is that said claims cover an exhausted combination; that they define a mere aggregation; that they are anticipated by prior use of the Fretz-Moon Tube Company, by the prior use of the Cleveland Welding & Manufacturing Company, and by others; also, that they are invalid in view of the prior patents.

 Plaintiff contends that the claims involved are valid; that the machines made by it, under the McBerty patent, produce a new and useful result that had been sought by those learned in the art without success, and that said machines are a commercial success.

 The McBerty patent, as stated therein, "relates to an improved combined electric welder and flash stripper which has been conceived for the purpose of butt welding together the ends of a continuously moving strip of material and thereafter removing from said strip the rough edges of flash which the welding operation leaves on the upper and under sides of the material at the point of the weld."

 The patent states further, "In the completed pipe the inner and outer surfaces must be smooth and accordingly it becomes necessary to remove from the strip the flash or burr which is the result of the welding operation which joins the ends of the strips together, and to accomplish this result the present machine includes in addition to the electric welder a flash stripper and the construction is such that the welding and stripping operation can be made while the strip is being continuously fed to either the pipe making machine or to a heating furnace or a pickling bath or some like step in the manufacture of the strip into the pipe tubing or other article."

 It is stated in the patent that the primary object of the patent is "the provision of a new and improved combined electric welder and stripper of a construction which makes its use possible with either idle or moving work or material." Another object, as stated therein, is "the provision of a stripper of a novel construction to be used in combination with a welding machine." Another object being "the provision of a novel form of shear as a part of the stripper." Another object specified is "the provision of a movable clamp of an improved and novel construction for use in conjunction with the shears of the stripper."

 The McBerty patent contains 13 claims of invention. Claim 1 reads: "In combination with an electric welding machine for butt welding the ends of material together, a flash stripper through which said material passes after the welding operation and comprising, a shear in engagement with the under side of said material, a shear adapted to engage the upper side of said material and clamp the material under pressure against said lower shear, and means forming part of said stripper adapted to engage said material and pull the same through said shears for removing the flash from both sides of said material." Claim 4 reads: "A combined welding and flash shearing machine for operation upon continuously moving material, comprising means to butt weld the material together, means to remove from said material the flash caused by said welding operation, and means to permit the continued movement of the material behind said machine during the welding and flash shearing operations." Claims 12 and 13 provide for "a pair of V-shaped shear blades" and how said blades shall be set, etc.

 In determining the issue of validity of the four claims involved, it is necessary to keep in mind, among others, certain rules of law:

 First, the rule stated by Mr. Chief Justice Hughes in Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 171, 57 S. Ct. 675, 676, 81 L. Ed. 983, that: "The issue of the patent is enough to show, until the contrary appears, that all the conditions under which a discovery is patentable in accordance with the statutes have been met. Hence, the burden of proving want of novelty is upon him who avers it. Walker on Patents, § 116. Not only is the burden to make good this defense upon the party setting it up, but his burden is a heavy one, as it has been held that 'every reasonable doubt should be resolved against him.' Id. Cantrell v. Wallick [117 U.S. 689, 6 S. Ct. 970, 29 L. Ed. 1017], supra; Coffin v. Ogden, 18 Wall. 120, 124, 21 L. Ed. 821; Barbed Wire Patent, 143 U.S. 275, 284, 285, 12 S. Ct. 443 [450], 36 L. Ed. 154; Adamson v. Gilliland, 242 U.S. 350, 353, 37 S. Ct. 169, 61 L. Ed. 356."

 Second, the rule laid down in Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 487, 55 S. Ct. 455, 459, 79 L. Ed. 1005, that: "Under the statute, it is the claims of the patent which define the invention. * * * And each claim must stand or fall, as itself sufficiently defining invention, independently of the others."

 Third, the rule stated in Expanded Metal Company v. Bradford, 214 U.S. 366, 381, 29 S. Ct. 652, 656, 53 L. Ed. 1034, that: "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 Company v. Higgins, 105 U.S. 580-591, 26 L. Ed. 1177-1181."

 See, also, Drumhead Co. of America et al. v. Hammond, D.C.W.D.Pa., 18 F.Supp. 734. Hammond v. Drumhead Co., 3 Cir., 89 F.2d 241. In Robinson on Patents, Sec. 237, it is stated: "Any diversity (of shape, size, proportions or annangements) which introduces a new function or a new ...

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