JAMES ALGER FEE, Circuit Judge.
This was an action for infringement of letters patent. The answer denied infringement and raised the questions of lack of invention, novelty, utility and anticipation by devices in the prior art.
Both sides moved for summary judgment. The court granted motion for plaintiff, made findings of fact, conclusions of law and entered judgment. The questions of infringement and damages were not adjudicated.
The trial court exceeded the permissible limits of determination of disputed questions without trial. A motion for summary judgment cannot be granted simply because both sides move for it.
It is then said the proof was documentary and was all before the trial court. If this were conceded, there were still questions of fact to be resolved which an appellate court is not permitted to adjudicate. Trial de novo, which was formerly the rule in admiralty, ecclesiastical courts and in some chancery cases, is definitely abolished in civil cases in the federal courts by the rules constricting review. No authority is given except to District Courts to make new findings of fact. Presently our sole function as to such findings is to re-examine judicially, criticize and set aside if "clearly erroneous."
It is true that all the facts might have been stipulated. But even then, submission upon that basis would require a trial. At the trial an opportunity should be given to introduce evidence. Here, as we understand the record, there was an effort to present some testimony which was precluded because it was indicated the nature of a summary judgment prevents the trial of any issue of fact.
But it should not be conceived that this action is founded upon a technicality. The lawyers for the respective parties, by the cross-motions, superinduced the idea that no factual questions were involved. But the utmost which can be said in a patent validity case is that it is a "mixed question of law and fact." The implications of this phrase are misleading.
Because of the peculiar character of the process of reconsideration by a court in a field where presumption of validity of an administrative finding has, to say the least, been weakened,
The court must find facts which support three essentials: novelty, utility and invention. Mere conclusions in order to hold a patent valid, such as are contained in this record, are of no avail. No opinion was before this Court. There is indication neither why the trial judge thought the device was an invention nor why the patented article was differentiated from the prior art. It is well known that a single patent has been upheld in one circuit and held invalid in another.
The summary judgment is vacated, the petition for declaratory relief is reinstated and the cause remanded for trial and appropriate and specific findings of fact.