opinion: COVER v. SCHWARTZ.
  Nos. 74, 75.
  Circuit Court of Appeals, Second Circuit.
  Dec. 17, 1942.
  Rehearing Denied Jan. 8, 1943.
  Joshua R. H. Potts, Eugene Vincent Clarke, and Basil H. Bruñe, all of Chicago, 111., and John M. Cole, of New York City, for appellant.
  Nathan Schwartz, pro se, for appellee.
  Before L. HAND, CLARK, and FRANK, Circuit Judges.
  FRANK, Circuit Judge.
  All three patents are concerned with a respiratory mask for miners, the purpose of which is to protect the wearer against dust and poisonous gases.
  1. Patent No. 2,065,304. The lower court held this patent invalid for lack of invention, finding as a fact that a prior patent, No. 2,019,918, issued on November 5, 1935 to Punton, showed “substantially the same arrangement, and what differences there are, are merely the result of mechanical skill.” We agree.
  The constituent elements of the Punton mask were a face-piece, covering the nose and mouth, an exhaust valve, and two filter units, attached to the face-piece. The filter units were a pair of cylindrical casings, each consisting of a base and side wall, a metal cover, and a circular paper filter supported around its edge -between the cover and the wall of the casing. The cover, which screwed on to the side wall, was perforated to permit the ingress of unfiltered air to the filter. This was the state of the prior art when, on January 9, 1936, appellant filed an application for the patent in issue, No. 2,065,304.
  Essentially, all that appellant has done is to remove the necessity for a perforated cover. When on oral argument, appellant’s counsel was asked whether appellant had done any more, he could not deny that appellant had not. Cover’s removal of the cover was no more than an act of mechanical skill. The man who first found out that it is unnecessary to burn down a house to roast a pig was perhaps a genius. But the discovery that certain parts of a process or device are useless is not necessarily evidence of invention. The discovery may involve no more than the ordinary skill of the art and that we think to be the case here. Cf. Cuno Corp. v. Automatic Service Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58. Someone has to be the first to hit upon an idea, even if it involves no more than such skill. In Buchanan v. Wyeth H. & M. Co., 8 Cir., 47 F.2d 704, 712, the court said: “It seems that no one did discover this exact use for the locknut in combination with other elements up to Buchanan’s time, but some one had to think of it first, even if it constituted merely mechanical skill. The fact that Buchanan was the first so to think bears on the question of invention, but is not at all decisive.”
  Appellant advances the “long-felt want” argument. But it has often been held that commercial success is a relatively poor test of invention and that it is only when invention is in considerable doubt, as it is not here, that that factor has any significance. See, e.g., Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474, 55 S.Ct. 449, 79 L.Ed. 997; DeForest Radio Co. v. General Electric Co., 283 U.S. 664, 685, 51 S.Ct. 563, 75 L.Ed. 1339; Textile Machine Works v. Louis Hirsch Textile Machines, 302 U.S. 490, 58 S.Ct. 291, 82 L.Ed. 382.
  2. Patent No. 2,120,230. This is a patent for a twin-filter respirator in the form of a transverse wedge, with a foldable rubber body. The prior art discloses that a British patent on a twin-filter device had been previously issued. See Goeke’s British Patent No. 323,164. Appellant simply added the characteristic of foldability to Goeke’s patent. But a foldable respiratory mask was already part of the prior art, for appellee had previously obtained such a patent on January 21, 1919. Certainly, thus to combine two ideas, both part of the prior art, was not invention. Cuno Corp. v. Automatic Service Corp., supra; Cf. Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 355, 356, 59 S.Ct. 897, 83 L.Ed. 1334; Powers-Kennedy Contracting Corp. et al. v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278.
  3. Patent No. 2,000,064. The appeal as to this patent must be dismissed for the following reasons: In his pleadings in the trial court, appellant alleged that appellee had infringed and still is infringing the patent and “will continue to do so unless enjoined by this court.” He made no alternative allegation to the effect that, while appellee had not yet infringed, he was threatening to do so in the future. He alleged a past and continuing infringement.
  The trial court denied appellant relief as to this patent on the ground that it was invalid; the-findings and judgment of the trial court are based solely on that ground. The trial court, however, in its memorandum opinion, did indicate that the patent was not infringed.
  Appellee filed a counterclaim setting up certain of his own patents which, he alleged, appellant was infringing. The trial court dismissed this counterclaim on the specific ground that appellee’s patents were invalid. From this judgment appellee did not appeal. Accordingly, this court, by order, directed that the counterclaim be excluded from the printed record on appeal.
  In appellant’s statement of points relied upon in this appeal, he stated that the trial court erred in finding and adjudging that the patent was invalid and in failing to find and adjudge that the patent was valid and infringed. However, in his brief filed in this court on this appeal, he stated that “appellant does not challenge that part of the judgment which holds the claims not infringed. Appellant challenges only the holding of invalidity of the claims involved.” This language can mean only that appellant has abandoned any contention that appellee has infringed or is infringing his patent. His position now is that, although there is an absence of any past, present or threatened future infringement, he is entitled to have this court determine that the judgment of the trial court as to invalidity was in error.
  In other words, appellant is stating that he is asking no relief against anybody before the court (or so far as we know against anyone else), that there is no real dispute, no case or controversy, but' that he wants an advisory opinion that his patent is valid. Of course, no federal court can constitutionally give an advisory opinion, since the Constitution confers jurisdiction on federal courts only where there exists a case or controversy. It is suggested that the words “cases” and “controversies,” contained in Article III, § 2 of the Constitution involve merely a “procedural technicality.” We cannot accept that suggestion. The Supreme Court has always given great weight to those words and has regarded them as imposing anything but a mere “procedural technicality.” It has rejected jurisdiction whenever there was no definite and concrete “controversy,” i.e., one “touching the legal relations of parties having adverse legal interests”; there must be “a real and substantial controversy admitting of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.” The Declaratory Judgment Act, 28 U.S.C.A. § 400, affords a new remedy of inestimable value. But that remedy must stay within the constitutional bounds of jurisdiction contained in Article III, § 2. In construing that Act, the Supreme Court noted that it was restricted by Congress to “cases of actual controversy” and that, in thus restricting it, Congress had had in mind the constitutional provision, so that the Act “is operative only in respect to controversies which are such in the constitutional sense.” In the case at bar, the elements necessary to give rise to an actual controversy, under the Declaratory Judgment Act and the constitutional provision, are non-existent.
  The situation is not like that which often confronts us where infringement and invalidity are both in issue before us. A patentee-plaintiff must, of course, lose unless he proves (a) that his patent is valid and (b) that the defendant has committed acts of infringement. In this respect, he is like a plaintiff in a suit for trespass to land who must prove (a) that he has a right to possession of the land and (b) that the defendant has committed acts of trespass; if he fails to prove either, he must lose. If the court decides against the plaintiff, there is no impropriety in resting the decision on either ground or on both grounds. If, however, a court (a trial court or an appellate court) holds against the plaintiff on either issue, it may not go on to decide the other issue in his favor, since the adverse decision on one of those issues means that there is no case or controversy which justifies a decision in the plaintiff’s favor on the other issue. And so in a patent suit: The court, in deciding against a patentee-plaintiff, may, with propriety, hold (1) that his patent is invalid, or (2) that the defendant has not committed acts of infringement, or (3) that not only is the patent invalid but also that the defendant has not infringed; there is no requirement that the court must first pass on the issue of infringement and, if it decides that there is no infringement, must refuse to decide that the patent is invalid. Indeed, since the public is affected, there is much to be said for a decision in such a case as to the invalidity of the alleged patent monopoly (either alone or in conjunction with a decision of non-infringement) whenever the issue of invalidity is before the court and the evidence warrants such a decision. For a decision as to invalidity will tend to discourage suits against others based on that patent, and mere threats of patent suits, due to the expense of defending such litigation, may often prevent lawful competition which will be in the public interest; the desirability of a decision as to invalidity is especially important because it is the general rule that the government cannot bring suit to have a patent declared invalid, except for fraud inducing its issuance (and perhaps in other unusual circumstances which need no discussion here).
  Where, however, the court finds against the plaintiff as to infringement, it cannot go on to hold in his favor as to validity. For, once the issue of infringement is decided against the patentee, there exists no case or controversy justifying a decision in his favor that the patent is valid.
  We cannot agree with the suggestion that, in a suit for infringement of a patent, the element of a past or threatened infringement (i.e., past or threatened invasion of the patentee’s rights) affects merely the question of damages. On the contrary, it is indispensable to the very existence of a case or controversy. The holder of a patent has no dispute with a person who is not infringing or threatening to infringe. A patentee, desirous of having a judicial opinion to the effect that his patent is valid, but aware that federal courts do not give advisory opinions, cannot obtain such an opinion by naming a non-infringer as defendant in order to create the appearance of a controversy where none exists. He might as well name a purely fictitious John' Doe as defendant.
  We are, then, without discretion to hear the appeal as to Patent No. 2,000,064, and the appeal must be dismissed. This is not a case where, a case or controversy existing, an appellant merely concedes that his grounds of error were not well taken; in such a case, of course, we would not dismiss for lack of jurisdiction but on the merits.
  United Carbon v. Binney & Smith Co., December 7, 1942, 63 S.Ct. 165, 87 L.Ed. —, is not in point. There the district court, in its findings, stated that, if the claims of the patentee were valid but strictly construed, there would be no infringement; it then went on to hold that those claims must be narrowly construed and dismissed the suit. 37 F.Supp. 779. The Court of Appeals reversed, holding that the claims must be broadly construed and that, thus construed, there was infringement. 4 Cir., 125 F.2d 255. The Supreme Court, in reversing the Court of Appeals, held that the claims were invalid for indefiniteness, and went on to say that there was no necessity for it to consider any other issue, including that of infringement.
  Nor is the situation here like that which confronted us in In re Barnett, 2 Cir., 124 F.2d 1005. There, on motion of a trustee in bankruptcy, the trial court made an order adversely affecting the bankrupt and the mother of the bankrupt. The bankrupt appealed, but the mother did not formally join in the appeal, although counsel for the bankrupt, in his brief in this court, stated that he was also appearing for the mother. As far as the bankrupt was concerned, the order of the trial court erred only in a minor respect, whereas, so far as the order affected the mother, there was a more substantial error. On oral argument of the appeal in this court, the trustee agreed to a modification of the order so far as it was erroneous with respect to the bankrupt. We refused to hold that that concession ended the appeal, but went on to consider and reverse the order on the more substantial grounds which affected the mother, stating that, were we to do otherwise, she would probably be without remed}'-. In those circumstances, we held, in effect, that there was a case or controversy still existing, and, accordingly, we refused to dismiss the appeal. But here, as we have noted, the plaintiff’s admission that there is no infringement means that there is no case or controversy before us for consideration.
  The parties to a suit cannot, of course, confer jurisdiction upon the court ■where the proper elements of jurisdiction are absent; and where the court becomes aware that there is no jurisdiction (whether initially or on appeal), it must, even of its own motion, dismiss. This is true where the jurisdictional requirement is entirely statutory. It must be at least equally true where the jurisdictional requirement, as here, is constitutional. And the Supreme Court has often held that a court’s awareness of its lack of jurisdiction of a case need not come from the record of the case ; so, in the instant case, the disclosure in appellant’s brief and oral argument cannot be ignored.
  [13] When, during the pendency of an appeal, a case becomes moot, so that there is no longer any case or controversy before this court, there is a loss of jurisdiction; this lack of jurisdiction results from the constitutional limitation contained in Article III, § 2 of the Constitution. If the circumstances which rendered the case moot, after the judgment in the trial court, are due to circumstances over which appellant had no control, then the Supreme Court has, in some circumstances, in order to avoid unfairness, reversed and remanded with directions to the trial court to dismiss the suit instead of dismissing the appeal. But that is not the invariable practice. And we think that it is not the proper course here. This case has not become moot because of intervening circumstances over which appellant had no control. It resembles one where, after an appeal is taken, the defeated plaintiff settles and compromises the action or executes a release of his right to appeal. For appellant, who asserted and tried to show infringement in the court below, so that there was a controversy before that court, in this court concedes that there is no infringement by defendant, which means that there is now no controversy. Although appellee did not ask for a declaratory judgment on the basis of threatened suits by appellant — so that Lances v. Letz, 2 Cir., 115 F.2d 916, is not in point — -nevertheless dismissal of the suit, as distinguished from dismissal of the appeal, might result in unfairness to appellee by subjecting him to other vexatious actions by appellant.
  The situation here is not like that in Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263. There the trial court held that a patent was valid but not infringed. An appeal by the defendants was dismissed by the Court of Appeals on the ground that the defendants had been awarded all the relief to which they were entitled because the litigation had terminated in their favor. The Supreme Court held that the decree of validity, in the absence of infringement, was improper, and, if not vacated, would stand as an adjudication against the defendants; accordingly, it held that they were entitled to have that portion of the decree eliminated and that, therefore, the Court of Appeals had jurisdiction to entertain the appeal, not at all for purposes of passing on the merits, but solely to direct the district court to reform its decree by striking out the decree of validity, in order to do justice to the defendants. In the instant case, where nothing in the judgment below is adverse to appellee, there is no need, in the interest of justice to the appellee, to require modification of the judgment. No unfairness to appellee will result if that judgment, which is in his favor, stands unaltered; it will be just as if, from that judgment, appellant had never appealed.
  We shall, therefore, merely dismiss the appeal, with the consequence that the judgment of invalidity made by the trial court will stand as entered.
  Judgment affirmed as to Patents No. 2,-065,304 and No. 2,120,230. Appeal v dismissed as to Patent No. 2,000,064.
  Appellant also claimed as invention, in this patent, a removable filter pad held in place by flanges, and the corrugation of the metal base plate of the filter to hold off the filter so as to allow a more rapid passage of air. But the idea of a removable filter pad held in place by flanges had already been disclosed in an advertisement of appellee in October, 1935. And appellee bad already suggested the corrugation of the base plate. (Patent No. 2,035,097, issued March 24, 1936. ) True, the base plate there was of corrugated rubber, rather than of metal, as here, but this distinction is of no significance.
  See Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240, 241, 57 S.Ct. 481, 81 L.Ed. 617, 108 A.L.R. 1000; Muskrat v. United States, o 219 U.S. 346, 31 S.Ct. 250, 55 L.Ed. 246; Federal Radio Comm. v. General Electric Co., 281 U.S. 464, 469, 50 S.Ct. 389, 74 L.Ed. 969; Federal Radio Comm. v. Nelson Bros., 289 U.S. 266, 53 S.Ct. 627, 77 L.Ed. 1166, 89 A.L.R. 406; Coleman v. Miller, 307 U.S. 433, 460-464, 59 S.Ct. 972, 83 L.Ed. 1385, 122 A.L.R. 695; cf. United States v. Appalachian Power Co., 311 U.S. 377, 423, 61 S.Ct. 291, 85 L.Ed. 243; 1 Encyc.Soc.Sc. 475; cf. Hayburn’s case, 2 Dall. 409, 1 L.Ed. 436.
  Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 238-241, 57 S.Ct. 461, 463, 81 L.Ed. 617, 108 A.L.R. 1000; Maryland Casualty Co. v. Pacific Co., 312 U.S. 270, 271, 272, 273, 61 S.Ct. 510, 85 L.Ed. 826; Commonwealth of Massachusetts v. State of Missouri, 308 U.S. 1, 17, 60 S.Ct. 39, 84 L.Ed. 3.
  In Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736, the majority of the court refused to consider whether the patent was invalid and restricted its decision to holding that there was no infringement; but that refusal was explicitly rested on the sole ground that the issue of invalidity had not been raised by petitioner in its petition for certiorari or in its brief filed in the Supreme Court.
  Cf. concurring opinion in Aero Spark Plug Co. v. B. G. Corp., 2 Cir., 130 F.2d 290, 292.
  Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263; see further discussion of this case infra.
  See, e. g., Clark v. Paul Gray, Inc., 306 U.S. 583, 59 S.Ct. 744, 83 L.Ed. 1001; United States v. Corrick, 298 U.S. 435, 56 S.Ct. 829, 80 L.Ed. 1263; Weinstein v. Black Diamond Corp., 2 Cir., 40 F.2d 590; Neustein v. Mitchell, 2 Cir., 130 F.2d 197; Goldstone Co. v. Payne, 2 Cir., 94 F.2d 855; Indianapolis v. Chase Bank, 314 U.S. 63, 62 S.Ct. 15, 86 L.Ed. 48.
  See, e. g., Lord v. Veazies, 8 How. 251, 12 L.Ed. 1067; Wood Paper Co. v. Heft, 8 Wall. 333, 336, 19 L.Ed. 379; Dakota County v. Glidden, 113 U.S. 222, 225, 5 S.Ct. 428, 28 L.Ed. 981; Elwell v. Fosdick, 134 U.S. 500, 10 S.Ct. 598, 33 L.Ed. 998.
  United States v. Alaska S. S. Co., 253 U.S. 113, 116, 40 S.Ct. 448, 64 L.Ed. 808.
  See discussion in Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240, 57 S.Ct. 461, 81 L.Ed. 617, 108 A.L.R. 1000, showing that the ruling as to mootness in United States v. Alaska S. S. Co., supra, is to be regarded as based on the constitutional provision.
  See Commercial Cable Co. v. Burleson, 250 U.S. 360, 39 S.Ct. 512, 63 L.Ed. 1030; United States v. Anchor Coal Co., 279 U.S. 812, 49 S.Ct. 262, 73 L.Ed. 971; Atherton Mills v. Johnston, 259 U.S. 13, 42 S.Ct. 422, 66 L.Ed. 814.
  See Mills v. Green, 159 U.S. 651, 16 S.Ct. 132, 40 L.Ed. 293; Chandler v. Wise, 307 U.S. 474, 477, 478, 59 S.Ct. 992, 83 L.Ed. 1407.
  Dakota County v. Glidden, 113 U.S. 222, 5 S.Ct. 428, 28 L.Ed. 981; Lord v. Veazies, 8 How. 251, 254, 12 L.Ed. 1067; Wood Paper Co. v. Heft, 8 Wall. 333, 336, 19 L.Ed. 379; Elwell v. Fosdick, 134 U.S. 500, 10 S.Ct. 598, 33 L.Ed. 998; cf. People of State of California v. San Pablo & Tulane Railroad, 149 U.S. 308, 13 S.Ct. 876, 37 L.Ed. 747; Mills v. Green, supra, 159 U.S. at page 654, 16 S.Ct. 132, 40 L.Ed. 293; Kimball v. Kimball, 174 U.S. 158, 162, 163, 19 S.Ct. 639, 43 L.Ed. 932.