CHASE, Circuit Judge.
The decree was based upon two grounds, non-infringement and invalidity of Claim 2, which is the only claim in issue.
Kasarjian's patent involves spark plugs for use in airplane engines. The usual aviation spark plug assembly has a core in the center consisting of a metal rod or spindle. The lower end of this spindle constitutes one of the electrodes at the spark gap, and therefore the whole must be insulated from the other electrode known as the ground electrode. Because of the intense heat in aviation engines, mica is used as an insulator. Several thin laminations of mica are first wound around the spindle. This is known as the mica "cigarette." About midway on this "cigarette" is a tight-fitting brass bushing to hold it in place on the spindle. Above the bushing, and sometimes both above and below it, is placed a stack of mica washers the inner circumference of which fits snugly around the "cigarette." This constitutes the insulation of the center electrode.
An extremely high voltage is required in aviation engines to create a satisfactory
Although Kasarjian calls this parasitic discharge or flashing a "corona discharge" which is technically an incorrect term, that is relatively unimportant for there can be no doubt from his specifications that what he means is this jump spark which causes the engine to miss fire. A patentee may use such terms as to him best describe what he means and when he thus makes his meaning plain it will be given effect. Cf. H. J. Wheeler Salvage Co., Inc. v. Rinelli & Guardino, Inc., D.C., 295 F. 717, 727.
Claim 2 of the patent calls for an aviation spark plug of the usual sort "and means for precluding corona discharges through the plug comprising an insulating refractory substance filling the air pockets within the insulating element to exclude residual air from said element." A reading of this claim leaves no doubt but that Kasarjian's theory was to exclude all the air so that none could become ionized and afford a path for the flashing. This was to be done by displacing all the air with a liquid or semi-liquid refractory substance such as liquid porcelain. That the gist of his invention was to exclude all air and prevent the discharge in that way is repeatedly evidenced by his specifications. On page 1 at line 102 says, "I find it essential to the carrying out of this invention that the presence of air pockets within the plug structure be eliminated and thus according to this invention, the presence of air within the plug structure is eliminated by the actual filling of all spaces within the plug structure with a suitable substance of high di-electric value under the temperatures prevailing in the plug during operation." Page 1, line 91: "I have discovered that by eliminating these air pockets, the silent or coronar discharge within the plug structure is entirely eliminated * * *" The scope of every patent is limited to the invention which is covered in the claims read in the light of the specifications. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132; Keith v. Charles E. Hires Co., 2 Cir., 116 F.2d 46, 49. And when claim 2 is so read there is no doubt that the only advance from the old to be found in Kasarjian's construction of the spark plug is that all the air spaces be filled with a refractory insulating substance.
Assuming, without deciding, that claim 2 is valid, we agree that infringement has not been shown. The general structure of the accused plug is that of the conventional aviation spark plug, but in it the parasitic discharge is prevented by placing a refractory substance at only two places, one just above and one just below the brass bushing which holds the mica "cigarette" in place. In actual practice this is done by placing a small amount of the refractory cement in the shape of a doughnut around the "cigarette" at either end of the bushing. The washers are then pressed on and the whole is then compressed as part of the usual assembly method. The theory is that these refractory "doughnuts" will act as an insulating barrier to prevent either the leakage of electricity or parasitic discharge regardless of the presence of air which in the patented construction has been excluded. No effort is made to fill the air spaces completely and that result is not attained. The purpose and the final end of both methods are to prevent flashing, but with that their similarity ends. To eliminate harmful air spaces is one thing and to make the residual air in such spaces harmless is quite another and so different a method that it does not infringe. Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568, 18 S.Ct. 707, 42 L.Ed. 1136; E. Van Noorden Co. v. Cheney Co., 1 Cir., 75 F.2d 298, 302.
The appellant relies on Weiss v. R. Hoe & Co., Inc., 2 Cir., 109 F.2d 722, where the patentee taught the use of an "air-tight" structure in an ink fountain for printing presses, and where this court found infringement in a structure that was not entirely air-tight. But in that case it was
Since there is no infringement even if the patent be valid, we do not decide the question of validity. See S. S. Kresge Co. v. Davies, 8 Cir., 112 F.2d 708, 711. But cf. dissent in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137, 62 S.Ct. 513, 86 L.Ed. 736.
FRANK, Circuit Judge (concurring).
I concur. But I think we should also hold the patent invalid. That issue was squarely raised in the court below and in this court. When such an issue is raised, and when the patent is invalid, I think it is our duty so to decide. In Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736, a majority of the court refused to consider whether a patent was invalid for want of invention while holding there was no infringement; but that refusal was explicitly rested on the sole ground that the issue of lack of invention was not before the court as it had been raised by the alleged infringer neither in its petition for certiorari nor in its brief filed in the Supreme Court. That, however, is unlike the situation here.
As we said recently in Picard v. United Aircraft, 2 Cir., May 28, 1942, 128 F.2d 632, 636, "there is more at stake [in a patent case] than the issues between the two parties." The decision of my colleagues relieves appellee, but leaves appellant free to sue others as alleged infringers, putting them to the expense — notoriously great in patent suits — of defending themselves. It is well known, too, that threats of such suits, because of that expense, often induce alleged infringers to accept licenses on onerous terms rather than to engage in litigation. As the exercise of a patent monopoly is publicly injurious when an invalid patent remains at large, the public interest is, therefore, deeply involved. And as, under the existing patent statute and decisions, no one, on behalf of the public, can institute a suit to have a patent declared invalid, we should, I think, avail ourselves of this opportunity to wipe out the patent here.
That it is invalid seems clear in the light of Picard v. United Aircraft, supra. The appellee's brief in the instant case states that the patentee hit on the use of the refractory material "only as a last resort," and adds, "Indeed, as it proved to be, it was not a problem solvable by deduction but only by experimentation; and, as often happens, it was solved in the end by trying something that did not seem practicable." That statement brings the patentee's method directly within the description of what this court, the other day, held not to constitute invention. See Picard v. United Aircraft, supra, where we said (per Judge L. Hand) that nothing is an invention which is the product of "the slow but inevitable progress * * * through trial and error" and of "the exercise of persistent and intelligent search for improvement."
It has been said that, where there is a decision of no infringement, the better practice is for a judge to leave "the legal status of the * * * patent as he had found it, clothed with the presumption of validity arising from the fact of the grant." Irvin v. Buick Motor Co., 8 Cir., 88 F.2d 947, 951; Shakespeare Co. v. Perrine Mfg. Co., 8 Cir., 91 F.2d 199, 200; S. S. Kresge Co. v. Davies, 8 Cir., 112 F.2d 708,
It is true that, in ordinary private litigation, courts sometimes confine their decisions narrowly, and, if one point is sufficient to support a decision, other points are not discussed. Even if that could be said to be the usual practice, it loses much of its pertinence in patent cases. A patent is a "public franchise,"
Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263, decided that it is improper for a court, after holding that there is no infringement, to hold the patent valid; and it reversed a decision of this court in which we refused to direct the District Court to reform its decree by expunging that part of it which sustained validity. For to hold a patent valid, if it is not infringed, is to render a mere advisory opinion, to decide a hypothetical case. The crucial fact in the Electrical Fittings Corp. case was that a finding of validity in no way aided the plaintiff's position or weakened the defendant's, as to the cause of action sued upon. It could not conceivably have been used as a ground of decision, either alone or as an alternative to another ground. But a holding of invalidity is entirely different. It is an alternative ground of decision; a complaint can be dismissed either because of invalidity or because of non-infringement. If a court chooses to avail itself of one possible ground rather than another, does it commit reversible error? Suppose the issue of infringement is difficult. Cannot we decide on the other ground? But, even if both are clear grounds, what rule confines us to one rather than the other?
All that the Supreme Court held in the Electrical Fittings case was that, if there is a decision of non-infringement, there cannot properly be a decision of validity. In Irvin & Co. v. Westinghouse Air Brake
If the point decided in the Irvin case were still open, I would be for deciding it the other way. It is, indeed, perhaps still open (or it has been opened and closed in a new way); for this court, in Hazeltine Corporation v. Emerson Television-Radio, Inc., 2 Cir., July 29, 1942, 129 F.2d 580, has just rendered an opinion in which, after holding a patent not to be infringed, it went on to say that, "even had we come to a different conclusion as to infringement, the decree would have to be affirmed" because of the patent's invalidity. In any event, the ruling in the Irvin case should not be extended so that a court must, in all cases, select one rather than another ground of decision, since, even in saying that a court cannot, in a patent case, decide on two grounds, the Irvin case is not supported by the Electrical Fittings case (cited in the Irvin case as controlling), and it is out of line with our everyday practice, in ordinary suits, of giving several grounds of decision when we so choose.
It is true that where a case presents both a constitutional and another ground of decision, courts often (and properly) prefer to avoid the constitutional issue if they can. That practice is far from crystallized into a rule that it is reversible error to rely on unconstitutionality alone, or to rely both on unconstitutionality and on a non-constitutional ground. And even as a practice, it is plainly inapplicable to patent cases: A finding of unconstitutionality is a grave step because it involves a nullification of the action of the legislative branch of the government; wherefore courts should shrink from facing that issue, and should side-step it so far as possible. In this it is comparable with Supreme Court jurisdiction over state decisions alleged to invade a federal right; the federal issue must be necessarily presented. There is no such sanctity attached to a patent's validity. The presumption arising from its issuance by the Patent Office is a faint one.
It is no adequate answer to say that courts should not concern themselves with the protection of persons not parties to suits pending before them. The fact is that courts daily do so concern themselves, and in circumstances where the desirability of doing so is far less obvious than here and the means far less effective. Because I think that to hold invalid a patent which is obviously void is a matter of major public importance, I think it desirable to elaborate that point:
Perhaps the central theme in most discussions of the judicial process is the obligation of judges to consider the future consequences of their specific decisions. Such discussions usually stress the "rule" or precedent aspect of decisions. Thus Dickinson, in 1927, paraphrasing (it may be unconsciously) Aristotle's remarks made almost twenty-two hundred years earlier,
Although much can be said for that attitude — of considering a decision primarily with reference to its significance in future cases — it is sometimes given too much weight. Excessive concentration of attention, by some upper court judges, on the formulation in their opinions of so-called legal rules, with an eye chiefly to the impact of those rules on hypothetical future cases not yet before the court, sometimes results in their allotting inadequate attention to the interests of the actual parties in the specific existing cases which it is the duty of courts to decide. Such judges never quite catch up with themselves; for, in cases which actually occur, they are deciding future cases that may never occur. Legal history shows that such an attitude leads to judicial pronouncements which, at times, are none too happy in their effects on future cases. For the future develops unanticipated happenings; moreover, it does not stay put, it refuses to be trapped.
The intended consequences of efforts to govern the future often fail; the actual consequences — which may be good or evil — are, frequently, utterly different. Results are miscalculated; there is an "illusion of purpose."
And the paradox is that when judges become unduly interested in the future consequences of their rulings, they are (as Walter Bingham pointed out years ago) doing precisely what they say they must avoid — they are deciding not real but hypothetical cases, with no one present to speak for the imaginary contestants.
Dean Leon Green's tentative analysis of the factors which affect upper court decisions helps to reveal the extent to which the judges of those courts, when deciding cases, often interest themselves in the future at the expense of the present.
The elaborate (and sometimes fatuous) concern with the future potentialities of expressions
Stare decisis, within limits, has undeniable worth. As we said recently, "Of course, courts should be exceedingly cautious in disturbing (at least retrospectively) precedents in reliance on which men may have importantly changed their positions."
Fortunately, wise judges have devised escapes from improvidently formulated rulings.
But, no matter what is done, the problem of deciding cases so that decisions will not be hurtful, as precedents, to future litigants, is not too easy of solution. It is surprising, then, that my colleagues, who like all judges, seek, every day, as they must, to solve that difficult problem, refuse, in the case at bar, to tackle a problem the solution of which is far simpler and with results far more easily foreseeable: Here the question is not of the future consequences, on litigants in possible future suits, of a general rule articulated in an opinion accompanying a decision, but of how a decision as to the specific rights of a particular person before the court may affect others not in court against whom that same person may, in the future, attempt to assert those very rights. It resembles the question of revoking the license to drive an automobile of a man who has been proved to be an incompetent driver: In deciding whether that specific man should be permitted to drive in the future, it is necessary to consider those who may be injured by his future conduct if his license is not revoked, and the precedential effect of the decision on future litigation, not relating in any way to that specific man, is, relatively, unimportant. The public interest in his later activities should be a paramount consideration. His potential future victims are not present, and, for that very reason, their interests should be a major concern of the tribunal called upon to render decision.
Consequently, if we must here choose between deciding that the patent is not valid or is not infringed — a choice I think we are not required to make — our choice should be the former. By such a choice, we will do no harm to the patent system. It is under fire today, and may not survive attack unless its major abuses are removed. Among such abuses is the persistence of cancerous "spurious" patents.
In deciding whether or not there was something more than "the exercise of persistent and intelligent search for improvement," courts should be careful not to rely too much on their own reactions, for the fact that a device "may seem remarkable, or new, or profound, to lawyers or to the public generally, is not sufficient to constitute invention." Radtke Patents Corp. v. Coe, 74 App.D.C. 251, 122 F.2d 937, 946, certiorari denied 314 U.S. 695, 62 S.Ct. 411, 86 L.Ed. ___; cf. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437, 22 S.Ct. 698, 46 L.Ed. 968.
The doctrine that quasi-judicial administrative determinations of fact are entitled to great weight has and should have little bearing on the findings of the Patent Office, because its hearings are not public (interested third persons having, except to a limited extent in "interference" proceedings, no opportunity to be heard) and because of the nature of Patent Office procedures generally. See Hamilton, Patents and Free Enterprise (T. N. E. C. Monograph, No. 31) 123-127; Woodward, A Reconsideration of the Patent System as a Problem of Administrative Law, 55 Harv.L.Rev. 950 (1942). Cf. Rosenberg v. Groov-Pin Corp., 2 Cir., 81 F.2d 46, 47, 48. But cf. Williams Mfg. Co. v. United Shoe Machinery Corp., 6 Cir., 121 F.2d 273, 276.
But, as we also there noted, some of the pressure for stare decisis stems from the desire of lawyers to protect their vested interest in their laboriously acquired knowledge of previous judicial rulings. See Wigmore's remarks quoted in the Barnett case, supra, at 1011, and also note 15.
Here the influence of the legal profession is of importance. Cf. Seagle, The Quest for Law (1941) Ch. XI.
Doubtless where lawyers draft instruments, there is reliance on the decisions as interpreted by the lawyers. Our larger institutions probably therefore are often reliers. But the great majority of men seldom consult lawyers before acting. Perhaps, even so, some vague knowledge of what the courts have decided filters through to them, but no one knows how much.
Patterson, who is keenly aware of the relatively small amount of actual reliance, seems, at times, to imply that, nevertheless, the judicial formulations often reflect community attitudes; but that implication appears to be a matter of faith not of proof. But he concludes that "definite rules and precedents have guidance value, if not for laymen, at least for lawyers and judges in the orderly functioning of the law." Constructive Conditions in Contracts, 42 Col.L.Rev. (1942) 903, 954. Is his reference, so far as it relates to lawyers, to their vested interests in their acquired knowledge or to the reliance of clients on their lawyers? And, so far as he refers to judges, does he have in mind what Green calls the "administrative factor"?
The new rule could be made applicable, as Wigmore suggests, to cases arising after a given date, or to future cases in which there is no proof of actual reliance on the old rule.
Prospective over-ruling would relieve the courts of the embarrassment which retroactive over-ruling now occasions. For a recent reference to such embarrassment, see dissenting opinion of Mr. Justice Jackson in State Tax Comm. of Utah v. Aldrich, April 27, 1942, 62 S.Ct. 1008, 86 L.Ed. ___.
It is of interest that Hobbe's criticism of the uncritical use of authorities, including Aristotle, on the ground that "the praise of ancient authors proceeds not from the reverence of the dead, but from the competition and mutual envy of the living," is a sort of echo of Aristotle himself. See Hobbes, Leviathan (1651) 395; Aristotle, Rhetoric, Bk. 2, Ch. 10, 1388b, 4-10.
I confess that, at one time, I voiced the conventional comments on scholastic thinking.
Of course the selection of the relevant "facts" of a case is not a simple process, especially where the evidence is conflicting. The choice of a pertinent legal rule may affect the selection of the "facts," and vice versa. The inter-action of those two choices may be highly complicated. And the process may not always be 100% conscious; intuition often plays an important role. Perkins v. Endicott Johnson Corp., 2 Cir., 128 F.2d 208, 220 and note 46.
In this connection, it is tempting, but unsound, to classify judges as those who are stimulated primarily by rules — i. e., the general aspects of cases — and those who are activated primarily by particulars. Such a classification recalls Maurois' description of the differences between Gladstone and Disraeli: "Gladstone liked to choose an abstract principle and from that to deduce his preferences. Disraeli had a horror of abstract principles. He liked certain ideas because they appealed to his imagination. He left to action the care of putting them to the test. When Disraeli changed his views, he admitted the change and was ready to appear changeable; Gladstone fastened his constancy to blades of straw and thought they were planks. * * * Disraeli, the doctrinaire, prided himself on being an opportunist; Gladstone, the opportunist, prided himself on being a doctrinaire." Whether such clear-cut differences between those two men actually existed may be doubted. But assuming that they did, it might be said that every judge is in part a Gladstone and in part a Disraeli. The percentage of those components seems to vary from judge to judge — and even in a particular judge from time to time.
Undoubtedly, the usual two-sided contentious mode of court procedure does often help to bring out most of the points. In re Barnett, supra, 124 F.2d at page 1011. But, for the reasons noted above, in the text, that is not what invariably happens in law suits.
Moreover, there are sometimes more than "two different aspects" of a case. As Demogue suggests, the "duellistic" nature of litigation may create a false dualistic attitude towards the facts or the pertinent legal rules. Demogue, loc. cit., 397, 565. Cf. Green, loc. cit. 27 note 2, 197, 198.