Electric Storage Battery Co. v. Shimadzu , 123 F.2d 890 ( 1941 )

GOODRICH, Circuit Judge

(dissenting)-

With the development of propositions in this case which lead up to the ultimate issue, I entirely agree and think the analysis clear and complete. If there were no question involved concerning Japanese patents 41,728 and 42,563 I take it that United States patent 1,584,149 would be valid, since in the words of the majority, it “constituted invention of a high order”. My difficulty arises in the conclusion that T49 has been disclosed by Japanese ’563. If this is right, the conclusion that T49 is invalid must be accepted for the reasons stated in the majority opinion.

. The District Court thought that ’563 must be read “as a disclosure of the use of an inert * * * medium * * * and * * * nothing more”. The majority opinion rightly says that if this is correct T49 and ’563 do not disclose the same invention. We all agree that an inventor is not required to know why his invention works if, in fact, he has produced invention. But did Shimadzu in ’563 offer invention? Could it not equally be said, as the learned District Judge thought, that he was at that time still working on the notion that all he needed was temperature control and removal of lead particles by “wind” from an inactive gas? The majority opinion says that one skilled in the art would construe the teachings of the patent in accordance with the laws of physics and chemistry. But Shimadzu, himself, was not, at that time, construing his own teachings that way. In fact he was, it is believed, not clear about what he wanted to teach. Or, at best, he was teaching something which was of little importance, that is, temperature control and particle removal from a rotating drum by mechanical action of an inactive gas.

i do not see why it follows that if ’563 be said to disclose two processes that one skilled in the art would choose the operable one. It might be argued with equal plausability that he would choose the inoperable one in the belief that* it was safer. That is, he might doubt the point that air would be inactive under the circumstances, but feel that nitrogen surely would. And in view of the existing art, the use of any wind blast would be an improvement.

It seems to me, therefore, it may well be said that Shimadzu had not got down to the substance of his invention in ’563 and that what was said there and in T49 are not substantially identical. At least it seems to me sufficiently doubtful and difficult to find the identity which the majority opinion, itself, states must be established. I cannot but think that Shimadzu would have had a bad time if the American patent had been issued in the terms of ’563 and been subsequently attacked. If he could not have upheld it then, it seems to me that it should not stand in his way now.