Amicus Brief — Sakraida v. Ag Pro, Inc.

IN THE

Supreme Court of the United States

OCTOBER TERM, 1975

No. 75-110

BERNARD A. SAKRAIDA,

Petitioner,

versus

AG Pro, INC, „

Respondent.

MOTION FOR LEAVE TO FILE BRIEF AMICUS CURIAE

AND BRIEF AMICUS CURIAE

OF THE TEXAS FARMERS UNION

MARY HELEN SEARS

IRONS AND SEARS

1801 K Street, N.W.

Washington, D. C. 20006

Telephone 202-296-8855

Attorney for

Amicus Curiae

WILSON - Eres PRinTinG Co.. Inc. - RE 7-6002 - WASHINGTON. D. C. 20001

—

— —xstęv2 —

— —

IN THE

Supreme Comt of the United States

OCTOBER TERM, 1975

No. 75-110

BERNARD A. SAKRAIDA,

Petitioner,

versus

AG Pro, INC.,

Respondent.

MOTION FOR LEAVE TO FILE BRIEF AMICUS CURIAE

The Texas Farmers Union, of 800 Lake Air Drive,

Waco, Texas 76710, respectfully moves under the provi-

sions of Rule 42(3) for leave to file a brief amicus cu-

riae in order to present information and arguments gen-

erally supportive of the petitioner in this case which com-

plement and supplement the petitioner’s brief, but are

not presented therein and which, moreover, will not be

presented by respondent or any amicus that may support

respondent. Consent to the filing of this brief has been

granted by petitioner’s counsel, but refused by respond-

ent’s counsel.*

from petitioner’s counsel consenting on petitoner’s

behalf to the filing of the brief is understood to be in the mail

and will be lodged with the Clerk promptly.

1-A

2-A

The movant Texas Farmers Union is comprised of

approximately 7500 members primarily engaged in oper-

ating family-size commercial farms in the State of Texas

with heavy concentration in its Great Plains area. These

farmer members of the union engage in raising grain,

cotton, livestock feed crops and livestock, including beef

cattle, dairy cattle, goats, sheep, etc. These farmers, and

especially those who are engaged in dairy farming, are

among the segment of the public that would be directly

affected if the patent involved in this case were upheld.

Hence, the Texas Farmers Union is directly concerned in

insuring correct adjudication of the issues of the case.

A more detailed statement of the reasons why the Union

wants to be heard appears in the section entitled “inter-

est of the Amicus Curiae” in the appended brief and is

incorporated herein by reference.

The material presented by the Union in the appended

brief which will not be presented by petitioner includes

(a) a full discussion of the history and purpose of the

constitutional standard for patentable invention now

codified in 35 U.S.C. 103 and its relationship to so-called

“aggregations” of old and well-known elements; (b) a

discussion of various factors which contribute to the

continuing failure of the United States Patent Office to

apply the constitutional standard of patentable invention

codified in 35 U.S.C. 103 in refusing the grant of pat-

ents, including the influence on that Office of the “over-

ruling” of key decisions of this Court by the Court of

Customs and Patent Appeals; (c) a description of post-

1966 legislative developments relative to § 108, demon-

strating that Congress has refused to adopt a legislatively

denigrated standard of invention, and (d) a development

of the public policy underlying the patent system which

disqualifies any interpretation of Rule 60(b) in patent

cases that would result in fostering enforcement against

the public of constitutionally and statutorily invalid pat-

ents.

— —

8-4

Because the Union believes that the arguments pre-

sented in the appended brief are of major importance to

the correct adjudication of this case, the Court is re-

quested to receive and consider it.

Respectfully submitted,

MARY HELEN SEARS

Attorney for Amicus Curiae

TABLE OF CONTENTS

Interest of the Amicus Curiae

Constitutional and Statutory Provisions Involved

Statement of the Case

Argument

I. The Unvarying Constitutional Standard of Pat-

entable Invention

II. Some Reasons for the Dereliction of the Patent

Office in This Case “

III. Unsuccessful Efforts to Change 35 U.S.C. 103

IV. The Important Public Policy Which Demands

That only Valid Patent Monopolies be Enforced.

Conclusion

—

17

TABLE OF AUTHORITIES

Page

“a Bellaire Stamping Co., 141 U.S. 539

13

Aligeyer v. Louisiana, 165 U.S. 578 (1897

Anderson's Black Rock V. Pavement Sahegs Ga.

396 U.S. 57 (1969) 6, 10, 15, 16, 20

7 * * 27

Atlantic Works v. Brady, 107 U.S. 192 (1883) * 10

1 of Bernhart, 417 F.2d 1395 (CPA

— — aa 21

1 of Gustafson, 331 F.2d 905 (CCPA *

40 19, 20

Application of Tarczy-Hornoch,

(CCPA 1968) . 2 17

Bassick Mfg. Co. v. R. M. Hollingshead

f US. 416 (1986) 2 16

Mfg. Co. v. Atwater Mfg.

* A... fg. Co., 114 US. *

londer- Tongue Laboratories, Inc. v. University

of IU. Foundation, 402 U.S. 313 ꝙ—— 31

Brinkerhoff v. Aloe, 146 U.S. 515 1 13

— — 133 U.S. 349 (1890) 13

nion Co. v. Crescent Ci

— caine City Co., 111 U.S. a

Carbice Corp. of America v. American Patents

Dev. Corp., 283 U.S. 175 (1930) 14

ca Appliances Co. v. Gomery, 269 U.S. 177

Corning v. Burden, 56 U.S. 252 (1853) —

Cuno Eng’r Corp. v. Automotive Devices Corp

314 U.S. (1941) 10, 14, 24

Deepsouth Packing Co. V. Laitram Corp. 306 US.

P 518 (1972) 29

ohn Deere Co. v. Graham, 333 F.2d 529 (1

Dow Chemical Co. v. Halliburton, 324 US. 32 5

) -

Dunbar v. Meyers, 94 U.S. 187 (1876) —

Ex parte Barber, 187 U.S. P. Q. 244 (1974) — 21

Ez parte Nolden, 149 U.S.P.Q. 378 (P. O. Bd. App

1965) | 20

m

TABLE OF AUTHORITIES—Cited

Page

Graham v. John Deere Co., 383 U.S. 1 (1966) ...2, 3, 6, 7,

8, 10, 11, 15, 21, 24, 25, 27

Great A&P Tea Co. v. Supermarket Equipment

Corp., 340 U.S. 147 (1951) 9, 14, 20

Greene v. McElroy, 360 U.S. 474 (1959 11

Grinnell Washing Machine Co. v. Johnson Co., 247

U.S. 426 (1918) 14

Hailes v. Van Wormer, 87 U.S. (20 Wall.) 353

(1873) 13

Hendy v. Golden State and Miners’ Iron Works,

127 U.S. 370 (1888) 13

Hill v. Wooster, 132 U.S. 693 (1890) 10

Hollister v. Benedict & Burnham Mfg. Co., 113

U.S. 59 (1885) 9

Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248

(1850) 6, 9, 24

Lear v. Adkins, 395 U.S. 653 (1969) 31

Lincoln Eng’r Co. v. Stewart -Marner Corp., 303

U.S. 545 (1938) 14, 16, 21

Mahn v. Harwood, 112 U.S. 354 (1884) 10, 31

Marconi Wireless Telegraph Co. v. United States,

320 U.S. 1 (1943) 14

Mercoid Corp. v. Mid-Continent Investment Co.,

320 U.S. 662 (1944) 30

Motion Picture Patents Co. v. Universal Film Mfg.

Co., 243 U.S. 502 (1917) 29

Office Specialty Mfg. Co. v. Fenton Metallic Mfg.

Co., 174 U.S. 492 (1899) 14

Pickering v. McCullough, 104 U.S. 310 (1881) 13

Powers-Kennedy Contracting Corp. v. Concrete

Mizing & Conveying Co., 282 U.S. 175 (1930) 14

Reckendorfer v. Faber, 92 U.S. 347 (1875) ......12, 13, 14

Richards v. Chase Elevator Co., 58 U.S. 299

(1895) .......... 14

Thatcher Heating Co. v. Burtis, 121 US. 286

(1887) -.... 13

9

Thompson v. Boisselier, 114 U.S. 1 (1885).

IV

TABLE OF AUTHORITIES—Cited

Page

Toledo Pressed Steel Co. v. Standard Parts, I

307 U.S. 350 (1939) 1

* Setter Co. v. Keith, 139 U.S. 530

— — ' 13

= — v. Masonite Corp., 316 U.S. 275

8 — 30

Vinton v. Hamilton, 104 U.S. 485 1 13

Other Authorities

Constitution of the United — Article I, -

tion 8, Claus 8 . — 3, 9

Repealed Statutes

1 Stat. 109, ch. 7, § 1, Act of April 11, 1790

1 Stat. 281, Act of Febresry 21,178 1

5 Stat. 117, Ch. 357, § 7, Act of July 4, 188668 12

United States Code

e 2, 3, 6, 9, 15, 16, 1

35 U.S.C. 112 so — ae

Jl | __ A 17

i _- § __ A 17

3 — —Ü;— — 22

FRCP

Rule 60(b) (2), Federal Rules of Civil Procedure. 3, 27,

28, 31

Congressional Reports

— „ 24th Cong., Ist Sess. 6 (1836),

rin in its entirety at 34 J. Pat.

1 = — 7

Articles and Studies

Gausewitz, R.L., Brief in Support of Proposed

Amendments to Section 103, Title 35 U.S.Code,

51 J.Pat.Off.Soc’y 290 (1969) 25

Vv

TABLE OF AUTHORITIES—Cited

Page

Irons and Sears, The Constitutional Standard of

Invention—The Touchstone for Patent Reform,

1973 Utah L. Rev. 653 10

Kayton, The Crisis of Law in Patents, Pt. I, at 5

and App. 2 at 13-14 8

Letters of Thomas Jefferson, Washington Ed., Vol.

VI, 1814, p. 296 —.-------------..------------------ 12

Manual of Patent Examining Procedure * 18, 20

Marquis, Improving the Quality Control for Pat-

ents, 59 Minn.L.Rev. 67 (1974) .........-.......-- 7

Patent, Trademark and Copyright Journal, BNA,

Sept. 13, 1973 .

Patent Law Revision, 93d Cong., Ist Sess. (1973)

8 2

Scott and Unkovic, Patent Law Reform: A Legis-

lative Perspective of an Extended Gestation, 16

Wm.&Mary L.Rev. 937 (1975) —_ 20

Rich, Change, 2 APLA Q.J. 214 (1974) 18, 19

Rich, Congressional Intent—Or, Who Wrote the

Patent Act of 1952, Patent Procurement and

Exploitation (1963) 18

Rich, The Principles of Patentability, 28 Geo.Wash.

L.Rev. 393 (1960) 18

Rich, The Vague Concept of “Invention” as Re

placed by § 103 of the 1952 Patent Act, 8 Idea

136 (1964) 18

Rich, Laying the Ghost of the “Invention” Require-

ment, 1 APLA Q.J. 26 (1972) 18

Sears, One Litigation Lawyer’s View of Ex Parte,

Secret Patent Procedures, 2 APLA QJ. 242

(1974) 7

Sears, Tinkering With the Invention Standard:

No Solution to Problems of Patent Quality, 59

Minn.L.Rev. 965 (1975) 7

Washington Star, § A at 1, col. 1, March 10, 1975.. 8

——

Supreme Court of the Buited States

OcTOBER TERM, 1975

No. 75-110

BERNARD A. SAKRAIDA,

Petitioner,

versus

Ac Pro, INCc.,

Respondent.

BRIEF AMICUS CURIAE

INTEREST OF THE AMICUS CURIAE

The Texas Farmers Union of 800 Lake Air Drive,

Waco, Texas 76710 is composed of approximately 7500

members who are primarily engaged in operating family

size commercial farms in the State of Texas, and espe-

cially in its Great Plains area. The members of the union

engage in raising grain, cotton, livestock feed crops and

a a SS a, Grey Sa

The union and its members are concerned that farm-

ers, and particularly farmers engaged in family size

:

F

80

15

h

2

and invalid patents of the ilk of patent 3,223,070. Be-

cause the particular dairy barn system claimed in that

patent—which involves as its “crucial element” the re-

lease of a sheet of water from a pool by a conventional

sluiceway to sweep cow manure off a dairy barn floor—

would find practical application only in a relatively mild

climate where severe, subfreezing winter temperatures

do not occur, such as that of, e.g., Texas or California,

the Texas Farmers Union is specifically interested in see-

ing that patent correctly adjudicated. In addition, it is

self-evident that if this Court should erroneously reach

the conclusion that dairy farmers are to be subjected to

the expensive toll of this patent of obviously minimal

technical merit, similar structures particularly adapted

to the needs of livestock other than dairy cattle will soon

also be made the subject of equally nonmeritorious pat-

ents—with concomitant hardship upon the family farm-

ing community.

In its opinion in John Deere & Co. v. Graham, 333

F.2d 529, 535 (1965)—an opinion later affirmed by this

Court in Graham v. John Deere Co., 383 U.S. 1 (1966)—

the Eighth Circuit pointed out that the public is a silent

but an important and interested party in all patent litiga-

tion and is entitled to protection against the monopoliza-

tion of what is not lawfully patentable”. This union de-

sires to be heard in this case as a representative of the

interested segment of the public, to present a full exposi-

tion of the history and purpose of the constitutional

standard for patentable invention now codified in 35

U.S.C. 103 as it applies to alleged inventions constituting

mere combinations of old and well-known elements each

of which functions in its known and conventional manner.

In addition, the union presents information concerning

the activities by the Court of Customs and Patent Appeals

and the Patent Office in implementing a standard of

patentable invention approaching novelty, which have

continued apace even after this Court’s decision in

Graham, supra, disapproved the indiscriminate grant of

nonmeritorious patents that fail to meet the constitu-

tional invention standard. Information is also presented

concerning the refusal of Congress to lower the inven-

tion standard legislatively. The union also develops the

compelling public policy reasons for interpreting Rule

60(b) in patent cases so as to insure presentation of all

facts that tend to show the infirmities of a particular

patent monopoly, whether or not developed post-trial.

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

Article I, Section 8, clause 8 of the Constitution pro-

vides :

“The Congress shall have Power

“To promote the Progress of Science and useful

Arts, by securing for limited Times to Authors and

Inventors the exclusive Right to their respective

Writings and Discoveries ;”

35 U.S.C. 103 provides:

“$103. Conditions for patentability; non-obvious

subject matter

“A patent may not be obtained though the inven-

tion is not identically disclosed or described, as set

forth in section 102 of this title, if the differences

between the subject matter sought to be patented

and the prior are are such that the subject matter

as a whole would have been obvious at the time the

invention was made to a person having ordinary

skill in the art to which said subject matter per-

tains. Patentability shall not be negatived by the

manner in which the invention was made.”

4

STATEMENT OF THE CASE

The Fifth Circuit Court of reversi trial

4 Appeals, ng a

“ « © * that said [Gribble and Bennett] Patent No.

3,223,070 held by Plaintiff does not constitute in-

vention, is not patentable, and is not a valid patent,

it being a combination patent, all of the elements of

which are old in the dairy business, long prior to

1963 and the combination of time [sic them] as de-

scribed in the said patent being neither new nor

meeting the test of non-obviousness, Defendant is

entitled to judgment (Pet. 10a)

has held valid a patent for a dairy barn flushing system

which admittedly “does not embrace a complicated techni-

cal improvement” (Pet. 22a) but allegedly “does achieve

a synergistic result through a novel combination” (ibid)

—an ultimate conclusion apparently premised on the ap-

pellate court’s own assessment that “The little expert

testimony at trial supports the conclusion that the sys-

tem was initially viewed with disbelief” (ibid.)

In the Fifth Circuit’s own words

“The patent is limited to the construction and ar-

rangement of the floor areas of the barn and the

means for storing a volume of water on or imme-

diately above the floor so that, when the water is

suddenly released, it will clean all of the barn floor

areas without the use of hand labor. According to

the letters patent, all barn floor areas can be thor-

oughly cleaned in a very few minutes, where previ-

ously it took hours of labor and use of larger quan-

tities of water to achieve an inferior result. The

patent contains three claims, but only Claims 1 and

* Unless otherwise indicated, all emphasis in quotations herein is

3 [footnote omitted] are here involved. (App. 18).

In simplified form, those two claims call for a dairy

barn having the following elements:

(1) a paved, sloped barn floor with downhill

drains;

(2) individual cow stalls elevated above floor

level but designed to facilitate accumula-

tion of cow excrement on the dairy floor;

(3) paved feeding and milking areas integrated

into the flush system;

(4) a dam which collects water in a pool uphill

from or directly on the dairy floor and

abruptly openable to send a sheet of water

cascading through the dairy sweeping the

manure to the downhill drains.

Admittedly, all the elements are old. However, prior

to this patent, the concept of a controlled sheet of

water to do the scouring and washing of the floor

had not been used in barn construction.* The prior

art involved the use of spot delivery of water by

high pressure hoses. None of the prior art docu-

ments shows a floor washing means constructed to

collect a pool of water uphill from or on the floor so

that, when the water is abruptly released, it will

flow as a sheet to wash almost instantaneously all

barn floor areas and discharge cow offal into drains.

That is the crucial element of this patent.” (Pet.

10a-12a).

In short, the patent covers the use of a convention

weir dam or sluiceway arrangement in an otherwise con-

ventional sloped floor dairy barn equipped with drains

2 This assertion ignores the admission of respondent’s counsel in

his opening remarks at the September 13, 1971 trial that the use

of water as a “flushing agent” to remove manure deposits from

cattle barns dates back at least to ancient Greek civilization which

credited the aprocrypal Hercules with such use in his cleaning of

the Augean stables. See A. 57.

6

positioned at the bottom of the slope, the purpose of the

dam being equally conventional—i.e., to accumulate

water in a pool behind the dam and then to release the

water in a surging cascade or sheet when the weir

closure or sluice is opened.

It is the type of simple “combination” device that hu-

man beings routinely construct by merely juxtaposing

old parts in an expedient manner, whenever it seems

desirable or appropriate to do so.

ARGUMENT

The patent in suit epitomizes two seemingly perpetually

recurrent blemishes on the operation of the patent laws—

to wit:

(1) the obdurate failure of the United States Patent

Office to exercise its “primary responsibility for sifting

out unpftentable material” either by following this

Court’s admonition “to adhere strictly to the 1952 [Pat-

ent] Act as interpreted” by this Court in Graham v. John

Deere Co., 383 U.S. 1 (1966) and Anderson’s Black Rock

v. Pavement Salvage Co., 396 U.S. 57 (1969) or by tak-

ing cognizance of “changed conditions” resulting from

the “remarkable rapidity” of technological advance over

the last half century,“ and

(2) the equally determined disinelination of the Fifth

Cireuit Court of Appeals to comprehend and follow the

acknowledged “basic standard” (Pet. 16a) of Hotchkiss

v. Greenwood, 52 U.S. (11 How.) 248 (1850) codified in

35 U.S.C. 103 and carefully explicated by this Court in

Graham, supra.

The Patent Office breakdown is of particular concern.

The agency was created by Congress in 1836 to remedy

All quotations in this paragraph are from Graham, supra, 383

U.S. 1 at 18-19.

—ů——

7

the evils perpetrated in the name of patents under the

1793 Patent Act by insuring that nonmeritorious patents

would be refused at the threshold in lieu of spawning

troublesome, expensive and unproductive litigation in the

courts. As said in the Senate Report accompanying the

implementing legislation:

“The present law waits till infringements and

frauds are consummated—nay, it even aids them ;

and then it offers an inadequate remedy for the in-

jury, by giving an action for damages. It ought,

rather, by refusing to grant interfering patents, to

render prosecutions unnecessary. Instead of sanc-

tioning the wrong by granting the privilege to com-

mit it, it should arrest injury and injustice at the

threshold, and put an end to litigation before it

begins.“

Far from putting an end to litigation before it be-

gins”, Patent Office operations as conducted today in-

volve the implementation of a standard of patentability

that approaches mere novelty and the concomitant in-

discriminate issuance of ever-greater number of trivial

patents, which in turn clog the courts with frequent and

pointless litigation.“ Saying that “To await litigation is—

See S. Rep. No. 338, 24th Cong., Ist Sess. 6 (1836), reprinted in

its entirety at 34 J. Pat. Off. Soc’y 853 (1953).

5 See Marquis, Improving the Quality Control for Patents, 59

Minn. L. Rev. 67, 104 (1974) who proposes Congressional legiti-

matization of patents on merely novel subject matter as a cure-all

and the rebuttal by Sears, Tinkering With the Invention Standard:

No Solution To Problems of Patent Quality, 59 Minn. L. Rev. 965

(1975) ; see also Sears, One Litigation Lawyer's View of Ex Parte,

Secret Patent Procedures, 2 APLA Q.J. 242, 251 (1974) proposing

that anachonistic ex parte, secret prosecution be replaced by an

open, inter partes procedure in which all interested members of

the public could participate.

„ The reply brief in Calmar, Inc. v. Cook Chem. Co., No. 37,

October term, 1965, heard and decided with Graham, 383 U.S. at

26-37, noted at p. 8 “the manifest proclivity of the Patent Office for

for all practical purposes—to debilitate the patent sys

tem”, 383 U.S. at 18, this Court in Graham recognized

this sorry state of Patent Office operations and as noted

supra, p. 6, urged strict adherence to the Patent Act

as interpreted in this Court. The very existence of the

patent in suit is eloquent testimony that the Patent Office

has still not changed its course in the ten years since

Graham.

The Patent Office allowance in this case of Gribble and

Bennett patent 3,223,070 for a combination of old and

well-known mechanical elements, each of which performs

its known function in an old and recognized way in the

combination, is tantamount to granting a patent on the

symbolic “better mouse trap” in direct derogation of

Graham.’

issuing patents on any trivial device or trivial modification of a

device on which there is not the most direct of anticipations.” and

cited in a footnote statistics showing that such Office granted pat-

tents on 68% of applications filed in fiscal 1965 and anticipated

an increased percentage in fiscal 1966, approaching a number in

the order of 67,000 patents, at that time “the approximate limit of

the Government Printing Office to print patents“.

Statistics published by the Bureau of National Affairs in its

weekly Patent, Trademark and Copyright Journal on September 13,

1973 covering fiscal 1971 showed that 75-80% of the patent appli-

cations filed in this country matured into patents, as contrasted

with 30-35% in West Germany and 40% in Japan in the same

period.

On March 10, 1975, the Washington Star, § A at 1, col. 1, reported

that last year” the Patent Office received 103,979 applications and

granted 78,898 patents.

Patents of commercial importance, however trivial they may

be from a technological point of view, are almost always litigated.

Recent statistics show that at least 50% and probably nearer 75%

of litigated patents are ultimately held invalid. See Kayton, The

Crisis of Law in Patents, pt. I, at 5 and app. 2 at 13-14; see also

“Patent Law Revision“, 93d Cong., Ist Sess. (1973) at 196-273.

As the Court put it, “He who seeks to build a better mouse trap

today has a long path to tread before reaching the Patent Office”,

383 U.S. at 19. The whole Court thus echoed the sentiments of

former Justice Douglas and the late Justice Black, concurring in

The Fifth Circuit, feigning total confusion as to the

standing of patentable invention under 35 U.S.C. 103,

says that “Although the Court in Graham clearly rejected

the Fifth Circuit rationale that an invention is patent-

able when it produces an ‘old result in a cheaper and

otherwise more advantageous way’ what precise test, if

any, that Court substituted is unclear” (Pet. 21a). The

Fifth Circuit thus effectively confesses its own adherence

for some 115 years after this Court in Hotchkiss, supra,

one justice dissenting, expressed flat disapproval to the

proposition “if the invention was cheaper and better than

what preceded it, that protection should be given to it as

patentable . . . , 52 U.S. (11 How.) at 268 (dissenting

opinion). Despite its occasional lip service, as in this

case, to “the condition that a patentable invention must

evidence more ingenuity and skill than that possessed by

an ordinary mechanic acquainted with the businesses

(Pet. 16a) laid down by the Hotchkiss majority, the

Fifth Circuit does not follow that standard of patentable

invention. It is accordingly totally out of step with this

Court’s own unvarying application of the standard which

is constitutionally derived and has been implemented since

Thomas Jefferson’s activities as a member, of a three-man

board thatythe — Pajent Act of 1790.) -<

(alls 2F

I. The Unvarying Constitutional Standard

The Hotchkiss prohibition upon the grant of patents for

alleged inventions produced by exercising ordinary skill

in the adaptation and application of old knowledge has

been consistently perceived in this Court to derive from

Article I, 88, cl. 8 of the Constitution itself. See

Hollister v. Benedict & Burnham Mfg. Co., 113 U.S. 59,

73 (1885); Thompson v. Boisselier, 114 U.S. 1, 11

Great A & P Tea Co. v. Supermarket Equipment Corp., 340 U.S.

147, 156-158, regarding the “incredible patents which the Patent

Office has spawned” over the years and calling for an end to their

proliferation.

10

(1885) ; Hill v. Wooster, 132 U.S. 693, 701 (1890) ; Cuno

Eng’r Corp. v. Automotive Devices Corp., 314 U.S. 84, 91

(1941); A & P, supra, (concurring opinion); Graham,

supra, Anderson’s Black Rock, supra.*

As this Court has also recognized, such manifestations

of mere ordinary skill do not and could not “promote the

progress of science and useful arts”. As explained by this

Court in Atlantic Works v. Brady, 107 U.S. 192, 200

(1883) :

“The design of the patent laws is to reward those

who make some substantial discovery or invention,

which adds to our knowledge and makes a step in

advance in the useful arts. Such inventors are

worthy of all favor. It was never the object of those

laws to grant a monopoly for every trifing device,

every shadow of a shade of an idea, which would

naturally and spontaneously occur to any skilled

mechanic or operator in the ordinary progress of

manufactures. Such an indiscriminate creation of

exclusive privileges tends rather to obstruct than to

stimulate invention. It creates a class of speculative

schemers who make it their business to watch the

advancing wave of improvement, and gather its foam

in the form of patented monopolies, which enable

them to lay a heavy tax upon the industry of the

country, without contributing anything to the real

advancement of the arts. It embarrasses the honest

pursuit of business with fears and apprehensions of

concealed liens and unknown liabilities of lawsuits

— vexatious accountings for profits made in good

aith.“

* For a detailed discussion of the history of this constitutional

standard, see Irons and Sears, The Constitutional Standard of

Invention—The Touchstone for Patent Reform, 1973 Utah L. Rev.

653.

In Mahn v. Harwood, 112 U.S. 354, 358-9 (1884), this Court

pointed out that the “valid defense” to an infringement suit of

whether the Commissioner has exceeded his authority” in granting

pate nbable,

se un

— —

sme

ategorits

Matter “DOES |

these 0

eh

—

“A

11

The need for distinguishing meritorious and patent-

worthy inventions from mere exereises of ordinary skill

arose in the context of the earlier Congressional efforts

to implement the constitutional patent elause through

legislation. Perceiving that —as this Court recognized in

Graham, 383 U.S. at 5—the patent power is limited and

does not extend to every new and useful invention or dis-

covery, the first Congress, which contained a significant

complement of constitutional framers, enacted into the

first Patent Act of 1790 a requirement that patents might

be conferred only upon inventions that were “sufficiently

useful and important” in addition to being new and use-

ful.“ This statutory criterion was implemented by a

three-member board on which Thomas Jefferson sat, so

as to weed out, as insufficiently useful and important to

“promote progress in science and useful arts” and hence

per se unpatentable, various categories of subject matter.

were aggregations of old and well-known elements where-

in each old element performed its customary known

function in a known way, of which Jefferson himself said:

„. . . If we have a right to use three things sepa-

rately, I see nothing in reason, or in patent law,

which forbids our using them all together. A man

a patent is stronger in the case of patents for inventions “which

directly affect the citizen” than patents for land, which have only

an indirect effect.

The same point, that the citizenry is directly affected by invalid

patents because they interfere with the inalienable right of every

citizen to pursue an ordinary calling unhampered by baseless and

unjustified monopolies—of which nonmeritorious patents are obvi-

ously an example—was made in the dissenting opinion of Justice

Bradley in Butchers Union Co. v. Crescent City Co., 111 U.S. 746,

762 (1884). That dissent was adopted by the Court in Allgeyer v.

Louisiana, 165 U.S. 578, 589-590 (1897), which in turn was relied

upon in Greene v. McElroy, 360 U.S. 474, 492 (1959).

It follows that the indiscriminate and unchecked proliferation of

baseless patents raises serious due process problems vis-a-vis the

citizen.

10 Act of April 11, 1790, ch. 7, § 1, 1 Stat. 109.

12

has a right to use a saw, an axe, a plane separately;

may he not combine their uses on the same piece

of wood?

Attempting to make the determination as to what did

and did not “promote progress” in the constitutional sense

a judicial rather than an executive function, Congress in

the 1793 Act turned to a registration system whereby

patents issued automatically and all questions of patent-

ability and validity were consigned to the courts. When

the 1798 Act proved unworkable and Congress decided

to create a Patent Office with the duty to screen out

unworthy “inventions” before patenting, it reinstated the

“sufficiently useful and important” criterion first set

forth in the 1790 Act and laid the initial responsibility

for implementing it in the lap of the Patent Office.“ The

criterion remained in the patent statutes until the 1952

Act when it was deleted “as unnecessary, the require-

ments for patentability being stated in sections 101, 102

and 103.” See the Revisor’s Note to 35 U.S.C. § 131.

In Reckendorfer v. Faber, 92 U.S. 347 (1875), a case

involving an unpatentable aggregation of old elements,

this Court emphasized that the Hotchkiss test is a defini-

tion of the extent of utility or importance that an alleged

invention must possess in order to merit a patent—and

rejected the patentee’s argument that the Patent Office

determination on that point is conclusive in later litiga-

tion, holding

Letter to Oliver Evans, from Letters of Thomas Jefferson,

Washington Ed., Vol. VI, (1814), p. 298. Jefferson’s question is

equally apt in this case. If sloped floors with “downhill drains”,

cow stalls, feeding and milking areas and weir dams or sluiceways

are each old, what is to prevent their tion in any combina-

tion or permutation? Indeed, it seems almost axiomatic that no

more than ordinary skill could be entailed in juxtaposing these

old elements in any desired manner.

Act of Feb. 21, 1793, 1 Stat. 321.

Act of July 4, 1836, ch. 357, § 7, 5 Stat. 117.

13

. The argument. .. that proof that there is no

„„

has no importance, cannot be made [by the defend-

ant in an infringement action], is quite unsound.

Proof that there is no invention or discovery strikes

at the root of the whole claim. The patent is based

on an affirmative fact, of which this is the direct

negative. It needed no statute to aid or justify this

defense. It is provable when it exists under any

general denial, like the fact of not guilty . in

cases where guilt . .. is first to be established.”

In Reckendorfer his Ont also emphasized that old

elements must combine to produce a new and unpre-

dictable result in order for the combination to support a

patent, saying

“The combination, to be patentable, must produce a

different force or effect or result in the combined

forces or processes, from that given by their sepa-

rate parts. There must be a new result produced

by their union.” [87 U.S. at 357]™

This test in substance had been implemented even

earlier in Hailes v. Van Wormer, 87 U.S. (20 Wall.)

353 (1873); it was reiterated by this Court in a plurality

of subsequent cases, including Dunbar v. Meyers, 94 U.S.

187, 195 (1876); Pickering v. McCullough, 104 U.S. 310,

318 (1881); Vinton v. Hamilton, 104 U.S. 485, 492

(1882) ; Beecher Mfg. Co. v. Atwater Mfg. Co., 114 U.S.

528, 524 (1885); Thatcher Heating Co. v. Burtis, 121

U.S. 286, 294 (1887) ; Hendy v. Golden State and Miners’

Irons Works, 127 U.S. 370, 375 (1881); Burt v. Evory,

133 U.S. 349, 358 (1890); Union Edge Setter Co. v.

Keith, 139 U.S. 530, 538, 539 (1891); Adams v. Bellaire

Stamping Co., 141 U.S. 539, 542 (1891); Brinkerhoff v.

1¢ Similarly, the trial court in this case found that “all of the ele-

ments” of the patent in suit “are old in the dairy business” and

“the combination of time [sic them]” is “neither new nor meeting

the test of non-obviousness” (Pet. 10a).

14

Aloe, 146 U.S. 515, 516 (1892); Richards v. Chase Ele-

vator Co., 58 U.S. 299, 302 (1895); rehearing, 159 U.S.

477, 487 (1895); Office Specialty Mfg. Co. v. Fenton

Metallic Mfg. Co., 174 U.S. 492, 498 (1899); Grinnell

Washing Machine Co. v. Johnson Co., 247 U.S. 426,

434 (1918); Concrete Appliances Co. v. Gomery, 269

U.S. 177, 185 (1925) ; Powers-Kennedy Contracting Corp.

v. Concrete Mixing and Conveying Co., 282 U.S. 175,

186 (1930); Carbice Corp. of America v. American Pat-

ents Dev. Corp., 283 U.S. 420, 421 (1931) ; Lincoln Eng’r

Co. v. Stewart-Warner Corp., 303 U.S. 545, 549-550

(1938) and Toledo Pressed Steel Co. v. Standard Parts,

Inc., 307 U.S. 350, 356 (1939), Cuno, supra, Marcon

Wireless Telegraph Co. v. United States, 320 U.S. 1, 32

(1943) and Dow Chemical Co. v. Halliburton, 324 U.S.

320, 330 (1945).

In similar vein to Reckendorfer, this Court in Cuno,

supra, reviewed what was “well known to the art when

Mead made his device”, a “cordless” cigarette lighter and

held:

“To incorporate such a thermostatic control in a

so-called ‘wireless’ or ‘cordless’ lighter was not to

make an ‘invention’ or ‘discovery’ within the mean-

ing of the patent laws. As we have shown, both the

thermostatically controlled heating unit and the

lighter with removable plug bearing the heating unit

were disclosed by the prior art. More must be done

than to utilize the skill of the art in bringing old

tools into new combinations. [Citing cases] ... [314

U.S. at 89] . : a

“Certainly the use of a thermostat to break a cir-

cuit in a ‘wireless’ cigar lighter is analogous or the

same in character as the use of such a device in elec-

tric heaters, toasters, or irons, whatever may be the

difference in detail of design. . .” [314 U.S. at 91]

In A & P, Mr. Justice Jackson, speaking for the Court,

said:

15

„. . . The conjunction or concert of known elements

must contribute something; only when the whole in

some way exceeds the sum of its parts is the ac-

cumulation of old devices patentable. . . . This case

is wanting in any unusual or surprising conse-

quences from the unification of the elements here

concerned, and there is nothing to indicate that the

lower courts scrutinized the claims in the light of

this rather severe test.

“Neither court below has made any finding that

old elements which made up this device perform any

additional or different function in the combination

than they perform out of it. This counter does what

a store counter always has done—it supports mer-

chandise at a convenient height while the customer

makes his purchases and the merchant his sales. The

three-sided rack will draw or push goods put within

it from one place to another—just what any such

rack would do on any smooth surface—and the guide

rails keep it from falling or sliding off from the

counter, as guide rails have ever done. Two and two

have been added together, and still they make only

four.” [340 U.S. at 152)"

Anderson's Black Rock, supra, reaffirms A & P and

Graham to emphasize that the Constitution, on which

Section 103 rests, disqualifies from patentability any

‘alleged “combination” invention which falls short of pro-

ducing “an effect greater than the sum of the several

effects taken separately —i. e., a “synergistic result”. The

logic is self-evident. Merely additive “combinations” or

as they are descriptively called, “aggregations” are pre-

1 Of course, the “crucial” sheet of water in the Gribble and

Bennett dairy barn acts just the way such sheets always have when

weir dams or sluiceways are opened, i.e., to wash away all non-

stationary items in its path. No one, including the Fifth Circuit,

alleges that the sloping barn floors, downhill drains, cow-stalls or

feeding and milking areas perform any additional or different.

function in the patented barn than they did in pre-existing dairy

barns.

16

dictable and producible with ordinary skill—hence con-

stitutionally unpatentable because they fail to “promote

progress

Anderson’s Black Rock also reaffirms Lincoln Engineer-

ing Co., supra, which, within the fabric of the established

law on the treatment of “combination inventions, empha-

sized that an already known combination of elements,

even if patentable when new, cannot be re-patented when-

ever one of its elements is improved. The underlying

rationale that there is no “new or different function” as

a result of the substitution, but only an improved result

traceable to the improved element, is squarely in accord

with 35 U.S.C. 103 since the substitution is per se a mat-

ter of ordinary skill and patentable invention may be

found, if at all, only in the improved element. Lincoln,

in its turn, reaffirmed and followed Bassick Mfg. Co. v.

R. M. Hollingshead Co., 298 U.S. 415 (1936) to hold

specifically that “. . the improvement of one part of an

old combination gives no right to claim that improvement

in combination with other old parts which perform no

new function in the combination. . . .” 303 U.S. at 549.

The Fifth Circuit decision that the Gribble and Ben-

nett patent is valid wholly ignores the established law

on “combination” patents to hold that an aggregation of

admittedly old elements, each performing a known and

conventional function in a conventional way, is unob

vious under 35 U.S.C. 108, and hence a patentable in-

vention. The particular aggregation in issue is also an

“old combination” in the sense that dairy barns, having

cowstalls, feeding and milking areas, inclined floors

equipped with “downhill” drains and means for flushing

cow offal off the floor were admittedly known previously,

so that the sole alleged improvement” resides in the

particular flushing means employed.“ Either way, one is

% The trial court so held and the Fifth Circuit agreed. The

latter characterized as “the crucial element” of the patent “the

17

constrained to ask wherein “progress” in science

ful arts has been promoted—and to conclude,

this Court’s undeviating pronouncements that the

invention is constitutionally as well as statutorily

patentable.

115

II. Some Reasons for the Derelietion of

the Patent Office in this Case

A major contributing faetor, if not the major one, to

the Patent Office grant of such flimsy patents as No.

3,223,070, in derogation of this Court’s consistent con-

trary precedent is the deliberate and unreasoned repudia-

tion by the Court of Customs and Patent Appeals

(“CCPA”)—one of two alternative tribunals charged by

statute ** with reviewing Patent Office refusals—of all

pre-1952 decisions of this Court as the foundation for

interpreting 35 U.S.C. 103. Thus, over a year before the

December 14, 1965 issuance of patent 3,223,070, the

CCPA gratuitously abolished the “aggregation doctrine”

as a basis for refusing patent protection. The Patent

Office, which considers CCPA decisions binding on it, fol-

lowed its frequent practice of docile obedience.

concept of a controlled sheet of water” to flush the barn floor. See

pp. 4-6, supra.

35 U.S.C. 141. The review in the CCPA is strictly appellate

on the record created in the Patent Office. The alternative review

is by civil action against the Commissioner of Patents under 35

U.S.C. 145 in the United States District Court for the District of

Columbia and on appeal in the United States Court of Appeals

for the District of Columbia Circuit.

For example, in Application of Tarcry-Hornoch, 397 F.2d 856

(CCPA 1968), the Court of Customs and Patent Appeals in a three

to two decision repudiated the doctrine, established in an unbroken

string of decisions of this Court, commencing with Corning v.

Burden, 56 U.S. 252 (1853) that the inherent function of a machine

is a per se unpatentable process. The reason for the repudiation

was that the doctrine is “the product of an essentially illogical

distinction unwarranted by, and at odds with, the basic purpose

18

The excuse for CCPA repudiation of “aggregation” as

a ground for refusing patents was the professed inability

of the Court to understand the word as a legal term of

art. The CCPA, in an opinion authored by Judge Rich,

also said:

“On January 1, 1953, all of this mental anguish

[purportedly requisite to an understanding of the

term ‘agrregation’ as a patent law concept] ceased

to be necessary. The test of the presence or absence

of the patent system and productive of a range of undesirable re-

sults from the harshly inequitable to the silly. . .”. (397 F.2d at

867). No supporting precedent was cited.

As a result, and notwithstanding a dissenting judge’s comment

that “the majority’s newly charted course is contrary to the basic

constitutional objective of promoting the progress of the useful

arts. (397 F. ad at 870), the Patent Office modified its Manual

of Patent Examining Procedure on February 10, 1969, directing all

of its approximately one thousand examiners to abjure that ground

of rejecting applications. The notice said:

“In view of the decisions of the Court of Customs and Patent

Appeals in In re Tarezy-Hornoch appearing at 158 USPQ 141,

process and method claims will no longer be subject to a re-

jection by Patent Office Examiners solely on the ground that

they define the inherent function of a disclosed machine or

apparatus. Accordingly, the subject matter of MPEP 706.03(r)

is inapplicable and hereby cancelled.”

Judge Giles S. Rich, the writer of the opinion, has recently pub-

licly characterized this overruled doctrine as “intellectual rub-

bish”, observing that “There is still a lot of antique nonsense

floating around awaiting cases to bring it up”. Rich “Change”,

2 APLA QJ. 214, 222 (1974).

Judge Rich, who was a participant in the preliminary drafting

of the 1952 Patent Act, has consistently professed a unique knowl-

edge of its true meaning and intent and has viewed that act as

having rendered much, if not all of the antecedent precedent obso-

lete and ineffective. See Rich, Congressional Intent—Or, Who Wrote

the Patent Act of 1952, Patent Procurement and Exploitaticn

(1963), pp. 61-78; see also Rich, The Principles of Patentability,

28 Geo. Wash. L. Rev. 393, (1960); Rich, The Vague Concept of

‘Invention’ as Replaced by $103 of the 1952 Patent Act, 8 Idea 136

(1964) ; and Rich, Laying the Ghost of the ‘Invention’ Requirement.

1 APLA QJ. 26 (1972).

19

of ‘invertion’, and along with it the subordinate

question of whether a device or process was or was

not an ‘aggregation,’ or a ‘combination,’ or an ‘un-

patentable combination’ for ‘want of invention,’ was

replaced by the statutory test of 35 U.S.C. § 103.”

Application of Gustafson, 331 F.2d 905, 909 (em-

phasis by the court).

Judge Rich has since listed the abolition of the ag-

gregation doctrine “as one of the changes [in the patent

law] I have seen—and in some cases have helped along—

during the past 18 years that I have been on the Court of

Customs and Patent Appeals”, and with specific refer-

ence thereto, has observed:

“Old-timers will remember and the old texts explain

that ‘combinations’ are patentable and ‘aggrega-

tions’ are not, and rejections were often made on

the ground that the invention is a ‘mere aggrega-

tion.’ That was, of course, a lot of silly nonsense

and a mere labeling after the decision on patent-

ability had been subjectively made for some other

reason. The CCPA therefore did away with it in

1964 in In re Gustafson, pointing out that with the

passage of § 103 the mental anguish of determining

what was a combination and what an aggregation

ceased to be necessary; that what one really has to

determine is obviousness of the claimed subject

matter.“

% Both quotations are from “Change” op. cit. supra, note 18,

at pp. 215 and 220 respectively. Judge Rich is particularly critical

of “the people who currently put out publicity for proposed innova-

tions in the [patent] system prefaced by the comment that nothing

much has changed since 1836” id. at 215—an apparent reaction to

the remarks of Senator Philip Hart at the opening cf the September

1973 hearings before the Subcommittee on Patents, Trademarks and

Copyrights Committee of the Judiciary in September 1973 that

“No system designed in 1836 can remain viable under the

economic and technological conditions of 1973, and that is

why the patent system is under attack. Unless it is reformed to

create procedures, safeguards and mechanisms to weed out the

Based on Gustafson, the Patent Office Board of Ap-

peals went one step further to hold, in square repudiation

of A & P and its long string of antecedents that “it is

not essential to a patentable combination that there be

inter-dependency between the elements of the claimed

device or that all the elements operate concurrently to-

ward the desired result”. Ex parte Nolden, 149 USPQ

378, 380 (P.O. Bd. App. 1965)

Though Anderson’s Black-Rock has since that time

demonstrated that this Court views the aggregation doc-

trine—and its corollary, the old combination doctrine—

as very much alive, the Patent Office and the CCPA re-

main committed to Gustafson.

Indeed, in the very year that Anderson’s Black-Rock

was decided, the CCPA in Application of Bernhart, 417

F.2d 1395 (CCPA 1969), abolished the “aggregation”

doctrine’s corollary, “old combination”, as a basis for re-

fusing patent protection. Bernhart acknowledges that:

“The rationale.of a ination rejection is

stated in MPEP 06840 follows: ‘The fact

bad patents before issuance—whether fraudulent or not—and

to insure the expeditious and impartial issuance of patents that

meet the constitutional and statutory standards, the patent

system will die of atrophy”. Patent Law Revision (1973) at

p. 1

Interestingly, Judge Rich appears to have welcomed and “helped

along” those alleged changes that have resulted in granting more

patents by overruling decisions of this Court. Senator Hart’s view

of the lack of essential changes since 1836 has recently been echoed

by Senator Scott. See Scott and Unkovic, Patent Law Reform:

A Legislative Perspective of an Extended Gestation, 16 Wm. &

Mary L.R. 937 (1975), which states that:

“Since passage of the original Patent Act of 1836, the essential

structure of the United States patent system has remained

unaltered. Although Congress made some changes in 1952

when it enacted the Patent Code as Title 35 of the United States

Code, it did not attempt comprehensive reform but only a codi-

fication of patent law.”

20“MPEP” stand for Manual of Patent Examining Procedure

the “Bible” of the Patent Office examining corps.

21

that an applicant has improved one element of a

combination which may be per se patentable does

not entitle him to a claim to the improved elements

where the elements perform no new function in the

combination.’ This statement has the support of

many cases. See, e.g., Lincoln Engineering Co. v.

Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662,

82 L.Ed. 1008 (1938)... . (417 F.2d at 1402)

It nevertheless asserts,

“Our primary concern, however, is not with the

soundness of the underlying policy, if any, for old

combination rejections; it is with whether such re-

jections are proper under the present statute. .. .”

and proceeds to conclude they are not without citation of

a single supporting authority. (417 F.2d at 1403).

As recently as July 1974 in Ex parte Barber, 187 U.S.

P.Q. 244 the Patent Office Board of Appeals, one mem-

ber dissenting, reversed a Patent Examiner’s rejection of

claims drawn to an internal combustion engine on the

ground the engine was an old combination, the sole im-

proved element of which had already been patented. The

majority relied on Bernhart as authority and did not

even acknowledge this Court’s contrary Anderson’s Black-

Rock decision. The dissenter likewise ignored Anderson’s

Black-Rock, but nonetheless felt Bernhart was not “the

last word on this subject” because subsequent decisions in

the federal circuits cite Lincoln Engineering—specifically

reaffirmed in Anderson’s Black-Rock—and “[i]n no in-

stance has a court questioned. . . [its] viability . . .”

(187 U.S.P.Q. at 247)

It is small wonder in the face of such determined ad-

herence to heresy that this Court in Graham perceived

“a notorious difference between the standards applied by

the Patent Office and by the Courts. 383 U.S. at

18—and even less wonder that the gap is growing wider

as time passes.

The CCPA influence upon the Patent Office is undoubt-

edly a factor in the statistics demonstrating that about

25% of patents actually litigated are held invalid based

on the very prior art references that the Patent Office

considered.“

In addition, there are many factors indigenous to the

present management of the Patent Office that contribute

to the poor quality of patent examination work presently

reflected in the low incidence of validity among issued

patents. These factors include (i) the existence of a

quota system requiring that each examiner complete a

given number of units of work (“actions” and “allow-

ances”) within a certain unit of time regardless of the

complexity of the technology involved, (ii) the offer of

cash bonuses (“bounties”) to examiners that exceed their

assigned quotas, (iii) recognized inadequacies in the con-

tent and completeness of the Patent Office search files,

(iv) incomplete written records of patent application

prosecution which make it impossible for the public, in-

cluding the courts, to learn why a particular patent was

21 Dr. Alan C. Nixon testifying before the Senate Subcommittee

on Patents, Trademarks and Copyrights in 1973 in his capacity at

that time of President of the American Chemical Society referred

to “the finding by Professor Irving Kayton of the George Washing-

ton University National Law Center that, when the courts consider

no prior art other than that known to the Patent Office during

examination of the patent application, 75 percent of litigated patents

are upheld.” “Patent Law Revision”, 93d Cong., Ist Sess. (1973)

at 349. Certainly if a proper standard of patentable invention were

being implemented, patent examiners judgments should show greater

than 75% concurrence with those of the courts on the same facts.

These statistics hence provide a meaningful perspective against

which to assess the statutory presumption of patent validity (35

U.S.C. 282) that is one of the nove’ features of the 1952 Patent

Act. Manifestly, there can be no presumption of validity—or of

administrative correctness—when the agency is utilizing incorrect

legal standards that are in the teeth of controlling interpretations

by this Court.

23

grantea, (v) the present relatively low ratio of examiners

with legal training, and the like.“

At the conclusion of the 1973 hearings on patent law

revision held by the subcommittee on Patents, Trademarks

and Copyrights of the Senate’s Committee on the Judici-

ary and after hearing from representatives of the De-

partment of Commerce, the Department of Justice, vari-

ous patent law associations, various industries, a sprin-

kling of former commissioners of patents and other in-

terested parties, Senator Phillip Hart summed up certain

Patent Office deficiencies, as follows:

“A fair reading of the hearing record, I believe,

shows remarkable agreement as to the patent sys-

tem’s main vices. They interact and result in a game

of blind man’s bluff on a motorcycle, the objective

seemingly being to find the edge of the cliff as quick-

ly as possible. These vices include:

1. The ex parte manner in which patents issue.

2. The failure to disclose material information by

persons dealing with the Patent Office.

3. The lack of modern search facilities and com-

pulsory process to enable the Patent Office to obtain

or compel the furnishing of such material informa-

tion.

4. A tendency by Patent Office management to

emphasize production goals: quantity rather than

quality.

5. A lack of interest and understanding by the

Patent Office of the public impact of spurious pat-

ents.

22 For a complete discussion of these factors, see the testimony

of Milton Weissman, Editor of the Journal of the Patent Office

Society and a patent examiner for some 29 years published in

“Patent Law Revision” op. cit. supra at 445-567.

6. Submergence of Patent Office needs to the

broader objectives of the Department of Com-

merce.” *

III. Unsuccessful Efforts to Change

35 U.S.C. 103 Legislatively

This Court’s decision in Graham dashed the hopes of

many proponents of a denigrated standard of patentable

invention that 35 U.S.C. 103 itself might be a vehicle for

overruling or at least relaxing the essential constitutional

standard of patentable invention first implemented by

Jefferson aud his cohorts on the 1790 Patent Board and

first articulated by this Court in Hotchkiss.*

Since at that time, as the Graham opinion itself notes,

383 U.S. at 19, n. 10, a presidentially appointed Com-

mission on the Patent System was engaged in studying

possible legislative reform, the disgruntled proponents of

a lowered standard for patentable invention turned to

lobbying Congress for changes in 35 U.S.C. 103.

Patent Law Revision“, 93d Cong., Ist Sess. (1973) at 568.

2% As noted supra, p. 9, the Fifth Circuit as late as 1955 was

not following Hotchkiss, but rather was utilizing “its rule that

when a combination produces an ‘old result in a cheaper and other-

wise more advantageous way’ that is patentable. Jeoffroy Mfg.,

Inc. v. Graham, 219 F.2d 511. Graham, supra, 383 u 92

The Fifth Circuit’s tenacity in clinging to this rejection test of

patentable invention is perhaps best appreci in context of the , yis/T9

fact that the “better and cheaper” rationale ted by this

Court, in Cuno, supra, 90 years after Hotchkiss. In Cuno, moreover,

the patentee made an impassioned argument that the Hotchkiss ra-

tionale was wrong and should be overruled.

In Graham, the Court was faced with five amicus briefs from

proponents of a lowered standard of patentable invention filed on

behalf of the American Bar Association, the Illinois State Bar

Association, the New York Patent Law Association, the Patent,

Trademark and Copyright Section of the State Bar of Texas and

E. Ernest Goldstein, then a professor of law at the University of

Texas. Rejecting the blandishments of these amici, this Court none-

theless adhered to the position it had always consistently taken in

the past.

The Scott and Unkovic article, supra, note 19, traces

the history “during the past 23 years” of attempts “to

legislate a comprehensive patent reform bill” (p. 937),

including those which have taken place since this Court’s

Graham decision.

Of particular interest insofar as efforts to denigrate the

constitutional invention standard now codified in 35

U.S.C. 103 are concerned is the proposal originally ad-

vanced by the Los Angeles Patent Law Association, that

the statute be modified by adding the following pro-

visions :

“Patentability shall not be negatived . . . because

the invention has simplicity or is the last step in an

evolutionary development, nor because it is not revo-

lutionary, basic, scientific, or technical in character.

Claims for a new combination or assemblage of

known mechanical or other elements shall be sub-

jected to the same standard of patentability as is

applied to claims for other types of subject matter.”

See Gausewitz, R. L., Brief in Support of Proposed

Amendments to Section 103, Title 35 U.S. Code, 51 J. Pat.

Off. Soc'y. 290 (1969). The proposal was an important

feature of S. 643, 92d Cong. Ist Sess. (1971), introduced

by Senator McClellan and supported by the Department

of Commerce but opposed by the Department of Justice.

After hearings, the Senate Subcommittee reported an

amended version of S. 643 to the full Committee on

the Judiciary of the United States Senate. In that

amended version, as noted by Scott and Unkovic supra,

the subcommittee “rejected the changes S. 643 would

have made in existing law concerning . the ‘obvious-

ness’ standard of invention... (p. 941). The modified

bill was never reported out of committee.

As Scott and Unkovie recount, however, the effort in-

volved in arriving at this modified bill sparked Senators

McClellan and Scott into requesting President Nixon in

26

1972 to “direct the appropriate departments and agencies

of the Executive Branch to undertake renewed efforts to

formulate an administration position on patent law re-

vision” (p. 942).

The result was a comprehensive administration patent

reform bill, S. 2504, 93d Cong., 2d Sess. introduced

jointly by Senators McClellan and Scott in the United

States Senate on October 1, 1973. This Administration

bill continued the present 35 U.S.C. 103 unchanged.

Subsequent efforts to revive the Los Angeles amendment

were made in S. 2930, 93d Cong. 2d Sess. (1974) and

S. 4259, 98d Cong. 2d Sess. (1974). All of the various

bills introduced in the Ninety-Third Congress were al-

lowed to die without being reported to the full Committee

on the Judiciary of the Senate.

Further efforts toward patent reform legislation were,

however, initiated promptly upon the convening of the

Ninety-Fourth Congress on January 14, 1975. Senator

McClellan that day introduced a bill desig-ated S. 23,

94th Cong. Ist Sess. (1975) which, as Scott and Unkovic

put it, “did not change the much-litigated and well-

understood Section 103 which sets out the standard of

invention necessary for the issuance of a patent” (p.

953). S. 23 was utilized by the Senate Subcommittee as

the basis for a markup session that resulted in essential

agreement among four of the five members of the sub-

committee, to wit: Senators McClellan, Scott, Hart and

Burdick. It is understood that the marked up version of

the bill, including Section 103 in a form identical to the

current statutory section, will shortly be reported to the

full Committee on the Judiciary of the Senate, with the

blessing of the present administration.

The Scott and Unkovic article particularly stresses the

recognized need under the patent clause of the Constitu-

tion for Congress to adhere to a statutory system that

requires a purported “invention to be not only new and

27

useful but also a truly inventive step beyond that which

was known previously. . . . (p. 956).

These legislative efforts are of interest to this Court in

this case because the language that the Los Angeles

Patent Bar Association proposed to add to 35 U.S.C. 103,

supra, p. 25, is per se a recognition that current law

does not authorize the grant of patents without regard

to the degree of technical advance involved, nor does it

authorize any relaxed approach toward the patentability

of combinations or assemblages of old and well known

elements.

To put it shortly, the Court and Congress are in full

agreement as to the constitutional requisites of the stand-

ard for patentable invention. The time has come to bring

the Fifth Circuit, a court that has far too long been on

an aberrant course, the CCPA, another aberrant court,

and the Patent Office into strict concurrence.

IV. The Important Public Policy Which Demands

That Only Valid Patent Monopolies Be Enforced

The Gribble and Bennett patent can and should be dis-

posed of as invalid because not in accord with § 103’s

minimum standard for patentable invention as explicated

in Graham, Anderson’s-Black Rock and antecedent deci-

sions of this Court discussed in Section I hereof.

The petition also raises the propriety of the Fifth Cir-

cuit’s reversal (Pet. la-6a) of the district court’s grant

of a new trial under Rule 60(b) (2) for consideration of

alleged newly discovered evidence as to the existence at

Mission Dairy in Carmel, California, more than one year

before the filing of the Gribble and Bennett patent ap-

plication, of an identical dairy barn assemblage to that

covered by the patent claims. The Fifth Circuit appears

to have conceded that the trial court correctly found that

this evidence is material, non-cumulative and would, if

considered, probably result in a holding that patent

3,223,070 is invalid. Its reversal was on the ground that:

„the exercise of a reasonable amount of dili-

gence would have armed Sakraida with the same

information he belatedly seeks to put before the

court.

“That spirit of finality which is implicit in all

judgments, commands that courts be cautious in ex-

ercising the discretion vested in them to reopen pro-

ceedings for a new trial based on newly discovered

evidence. While the sound discretion of a district

judge in granting such a motion is not to be re-

versed except for clear abuse of discretion, Lloyd v.

Gill, 406 F.2d 585 (5th Cir. 1969), that exercise is

not free from review. In the case at bar, the evi-

dence produced to show due diligence by Sakraida,

taken in a light most favorable to the finding by

the court below that the judgment following a com-

pleted trial should be set aside, is insufficient. The

‘new’ facts were easily available prior to the trial,

and the defendant had reliable information that they

were so available. His half-hearted effort to uncover

them is legally not enough. Sakraida did not exer-

cise due diligence in preparation of his prior art

defense. The grant of a new trial accordingly must

be reversed... .” (Pet. 5a-6a)

We do not dispute the soundness of the ruling in an

ordinary suit between private interests in which the out-

come would have no consequential direct effect upon other

members of the public. We do suggest that the constitu-

tional purpose underlying the patent system, as inter-

preted in apposite decisions of this Court, so thoroughly

imbues the validation and enforcement of a patent mo-

nopoly with primary public consequences that the trial

judge was required to give weight to that factor in the

proper exercise of discretion under Rule 60(b), as he

did—and that the Fifth Circuit accordingly lacked pre-

rogative to disturb his ruling.

As succinctly stated in Motion Picture Patents Co. v.

Universal Film Mfg. Co., 243 U.S. 502, 510-11 (1917):

“Since Pennock v. Dialogue, 2 Pet. 1, 7 L. ed. 327,

was decided in 1829, this court has consistently held

that the primary purpose of our patent laws is not

the creation of private fortunes for the owners of

patents, but is ‘to promote the progress of science

and the useful arts’ (Constitution, art. 1 § 8)—an

object and purpose authoritatively expressed by Mr.

Justice Story, in that decision, saying:

‘While one great object [of our patent laws]

was, by holding out a reasonable reward to in-

ventors and giving them an exclusive right to

their inventions for a limited period, to stimu-

late the efforts of genius, the main object was

“to promote the progress of science and useful

“Thirty years later this court, returning to the

subject, in Kendall v. Winsor, 21 How. 322, 16 L.

ed. 165, again pointedly and significantly says:

‘It is undeniably true, that the limited and

temporary monopoly granted to inventors was

never designed for their exclusive profit or ad-

vantage; the benefit to the public or commu-

nity at large was another and doubtless the pri-

mary object in granting and securing that mo-

nopoly.“

This court has never modified this statement of

the 8 * of the „* and private in-

terests invo every grant à patent, even

while declaring that, in the construction of patents

and the paten* laws, inventors shall be fairly, even

liberally, treated. Grant v. Raymond, 6 Pet. 218,

241, 8 L. ed. 376, 384; Winans v. Denmead, 15 How.

330, 14 L. ed. 717; Walker, Patents, § 185.” *

The primacy of the public interest in the patent system has

been reiterated frequently over the years—most reecntly in Deep-

south Pacing Co. v. Laitram Corp., 406 U.S. 518, 530-531 (1972).

In strikingly similar language, this Court in United

States v. Masonite Corp., 316 U.S. 275, 278 (1942)

observed :

“As stated by Mr. Justice Story in Pennock v.

Dialogue, 2 Pet. (US) 1, 19, 7 L. ed 327, 333, the

promotion of the progress of science and the useful

arts is the ‘main object;’ reward of inventors is sec-

ondary and merely a means to that end. Or in the

words of Mr. Justice Daniel in Kendal v. Winsor,

21 How (US) 322, 329, 16 L. ed. 164, 168, “Whilst

the remuneration of genius and useful ingenuity is

a duty incumbent upon the public, the rights and

welfare of the community must be fairly dealt with

and effectually guarded. Considerations of individu-

al emolument can never be permitted to operate to

the injury of these.’ ”

These guiding principles led the Court in Mercoid

Corp. v. Mid-Continent Investment Co., 320 U.S. 661,

670 (1944) to refuse to apply the doctrine of res judi-

cata in a manner that would preclude infringement of a

misused patent. The Court said:

“Should such a decree be entered, the Court would

be placing its imprimatur on a scheme which in-

volves a misuse of the patent privilege and a viola-

tion of the anti-trust laws. It would aid in the con-

summation of a conspiracy to expand a patent be-

yond its legitimate scope. But patentees and li-

censees cannot secure aid from the court to bring

such an event to pass, ‘unless it is in accordance

with policy to grant that help.’ Beasley v. Texas &

P. R. Co. 191 US 492, 497, 48 L ed 274, 275, 24

S Ct 164. And the determination of that policy is

not at the mercy of the parties (id. 191 US p.

498, 48 L ed 276, 24 S Ct 164) nor dependent on

the usual rules Ir the settlement of private

litigation. ‘Courts of equity may, and frequently

do, go much farther both to give and withhold re-

lief in furtherance of the public interest than they

31

are aceustomed to go when only private interests are

involved.“ Virginian R. Co. v. System Federation,

R. E. D. 300 US 515, 552, 81 L ed 789, 802, 57

S Ct 592. ‘Where an important public interest

would be prejudiced,’ the reasons for denying in-

junetive relief ‘may be compelling.’ Harrisonville

v. W. S. Dickey Clay Mfg. Co., 289 US 334, 338, 77

L ed 1208, 1211, 53 8 Ct 602. And see United

States v. Morgan, 307 US 183, 194, 83 L ed 1211,

1218, 59 S Ct 795. That is the principle which has

led this Court in the past to withhold aid from a

patentee in suits for either direct or indirect in-

fringement where the patent was being misused.

Morton Salt Co. v. G. S. Suppiger Co. supra (314

US p. 492, 86 L ed 365, 62 S Ct 402). That prin-

ciple is controlling here. The parties cannot fore-

close the courts from the exercise of that discretion

by the failure to interpose the same defense in an

earlier litigation. Cf. Sola Electric Co. v. Jefferson

Electric Co. 317 US 173, 87 L ed 165, 63 S Ct 172.”

The same principles require that the availability of

Rule 60(b) relief on the issue of patent validity, which

has far-reaching and direct public consequences trans-

cending the private inteersts of the litigants, not be “at

the mercy” of the parties. See Mahn v. Harwood, supra,

note 9. That principle, moreover, has led this Court

to abjure licensee estoppel to challenge patent validity in

Lear v. Adkins, 395 U.S. 653 (1969) and to invoke col-

lateral estoppel against relitigation of patents once held

invalid in a fairly tried case in Blonder-Tongue Labora-

tories, Inc. v. University of Ill. Foundation, 402 U.S. 313

(1971). It is manifestly available to prevent hypertech-

nical or overzealous application of Rule 60(b) which

would have the effect of rendering a naked monopoly

lacking in statutory and constitutional justification, such

as respondent’s “patent” monopoly No. 3,223,070 on dairy

barn assemblages, enforceable against the public.

32

CONCLUSION

The Fifth Circuit decisions should be reversed and

patent 3,223,070 held invalid.

Respectfully submitted,

MARY HELEN SEARS

Counsel for Amicus