Petition — Osmose Wood Preserving Co. of America, Inc. v. City of Los Angeles

ee ant

"" Raprome Court, UL

FILED

if NOV 28 1979

MICHAL ROBAK, JR., CLERK

In The

Supreme Court of the United States

October Term 1979

No 9-812

OSMOSE WOOD PRESERVING CO., OF

AMERICA, INC., et al.,

Petitioners

VS.

CITY OF LOS ANGELES, California,

a municipal corporation,

Respondents.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

FRANCIS A. UTECHT

Suite 910, Fidelity Federal Plaza

555 East Ocean Boulevard

Long Beach, California 90802

Attorney for Petitioners

LONG BEACH REPORTER

TOPICAL INDEX

Page

ERR AR REA dr ea 1

a ai TEE AN Oe 2

oe et 2

oe ee 8 aR ee tO | | . 8

REASONS FOR GRANTING THE WRIT .................0..00...... 6

Nee ns inensgubwenusessureed 9

a. en Uskoseuidecboncapnne 11

1. Opinion of U.S. District Court

Central District of California 20.00.0000... 11-22

2. Opinion, U.S. Court of Appeals

Pe Re I onan scsckacaccsevasaconconsooecones 23-27

3. Seventh Circuit Decision in A.M.P.,

eT 6 aE 29-35

TABLE OF AUTHORITIES CITED

Decisions

Page

A.M.P., Inc. v. Bunker Ramo Corp.,

Appeal No. 78-1846, decided August 22, 1979 ................ 2,6

Anderson’s - Blackrock, Inc. v. Pavement Salvage Co.,

kB: gh ROE Ue et ss es

Champion Spark Plug. Co. v. Gyromat Corp.,

—_F2d. __, 202 U.S. Patent Quarterly 785, 793

ak Re SUISSE INURE UT oe On RO 8

Graham v. Deere

take TE CARRETERA ei ol Le, 12 ED 5, 6, 7,8

Plastic Container Corp. v. Continental Plastics of

Oklahoma, Inc., __ F.2d __, 203 U.S. Patents

i a 8

Republic Industries, Inc. v. Schlage Locks Co.,

Hee ae Wy EO CP. E, BOF aici iicccacsbacsrecesncoconeende 7

Sakraida v. Agpro, Inc.

425, U.S. 278, 189 USPQ 449 (1976) 0... eee 2

Statutes

Se Sa A RED cedinice ha ia aii cess hai oe cel ek ce a 2

Be RI api I sasdctnsinntd piabice cdsnlusbadnbucbiseneslonass aisles ndgoady 2, 5, 6,8

In The

Supreme Court of the United States

October Term 1979

OSMOSE WOOD PRESERVING CO., OF

AMERICA, INC., et al.,

Petitioners

Vs.

CITY OF LOS ANGELES, California,

a municipal corporation,

Respondents.

PETITION FOR WRIT OF CERTIORARI TO THE

‘UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Petitioners pray that a writ of certiorari issue to

review the Judgment of the United States Court of

Appeals for the Ninth Circuit entered on September

17, 1979, affirming the Summary Judgment of the

United States District Court for the Central District

of California entered May 27, 1977.

Opinions Below

The opinion of the District Court was unreported

and appears at Appendix 1 herein. The opinion of the

United States Court of Appeals for the Ninth Cir-

cuit, presently unreported, appears at Appendix 2,

herein.

pis ies

Jurisdiction

The Judgment of the Ninth Circuit Court of Ap-

peals was entered on September 17, 1979, and the

Petition for a Writ of Certiorari was filed within 90

days of that date. 3

The jurisdiction ~f this Court is invoked under 28

U.S.C. § 1254(1).

Questions Presented

This Court in Anderson’s - Blackrock, Inc. v. Pave-

ment Salvage Co., 396 U.S. 57 (1969) and again in

Sakraida v. Agpro, Inc., 425 U.S. 278 (1976), ap-

parently ruled that a patented invention comprised of

eld elements must be held invalid unless such elements

provide a synergistic result.

The Seventh Circuit Court of Appeals in A.M.P.,

Inc. v. Bunker Ramo Corp., Appeal No. 79-1846, de-

cided August 22, 1979, refused to apply the synergis-

tic result requirement and instead ruled that obvious-

ness should be determined solely in accordance with

35 U.S.C. 103.

The Ninth Circuit Court of Appeals in this case,

held the patent in suit invalid solely for lack of

a synergistic result without any regard for the pro-

visions of 35 U.S.C. 103.

onli

These decisions are in direct and irreconcilable

conflict giving rise to the question:

May a patent be held invalid for obviousness

solely for lack of a synergistic result?

Statement of the Case

This is an action for infringement of U.S. Patent

No. 3,027,610, filed June 4, 1958, and issued April 3,

1962 for a “Method of Protecting Timbers Against

Marine Borer Attack”. The patent is directed to a

method of protecting installed, submerged wooden

pilings against marine borer attack which essentially

consists of securing a sheet of synthetic plastic

material around the pile in reduced diameter condi-

tion to define a generally circumferential water-filled

space between the pile and the sheet. Circulation be-

tween the space and the water surrounding the out-

side of the sheet is thereby so restricted as to main-

tain the water stagnant. The stagnant boundary

layer is toxic to the marine borers in the pile, so as

to kill such borers and stop further destruction of

the pile.

The patented method permitted the life of installed

piles to be increased many years even where such

pilings had undergone serious marine borer attack.

Replacement of weakened pilings is not only expen-

sive, but requires temporary dismantling of the dock

structures supported by such pilings. The patented

oiilcses

method provided for installation of the protective

sheets on the submerged pilings without disturbing

the structure supported by such pilings.

Originally, the defendant City of Los Angeles pur-

chased plastic sheets and the fastening means there-

for from plaintiff Osmose and utilized such material

to carry out the patented method thereby successfully

stopping marine borer attack on thousands of wooden

pilings in the Port of Los Angeles. After the patented

method had been proven, defendant copied such meth-

od, fabricating its own sheets and fastening members

so as to infringe the patent in suit. The patented

method has saved the Port of Los Angeles several

million dollars.

Plaintiffs brought this action for patent infringe-

ment May 19, 1976. Defendant on December 20, 1976

filed a Motion for Summary Judgment seeking to

have the patent in suit held invalid solely as being

directed to a combination of elements which did not

provide a synergistic result. Plaintiffs filed memor-

anda opposing defendant’s motion for Summary

Judgment. The hearing on defendant’s motion for

Summary Judgment took place April 18, 1977. At

this hearing, the District Court held that the patented

combination “does not produce any synergistic result.

No inventive spark, no inventive genius is required”’,

and granted defendant’s motion for Summary Judg-

ment, but pointed out that defendant’s findings sub-

mitted with its motion for Summary Judgment were

tile,

“somewhat sketchy”, and defendant was given an op-

portunity to enlarge them.

Pursuant to the District Court’s suggestion, de-

fendant’s counsel prepared a completely new set of

findings of fact and conclusions of law and a SUM-

MARY JUDGMENT. Defendant’s new findings and

conclusions were not limited solely to the question of

synergism, as were defendant’s original findings and

conclusions, but instead additionally described in de-

tail prior art, copies of which had not previously ap-

peared in the record and had not even been seen by

the District Court. Defendant’s proposed conclusions

charged plaintiff’s patent in suit to be invalid not

only as failing to provide a synergistic result, but also

as being obvious in view of the newly-introduced

prior art. Defendants’ findings were adopted without

change by the District Court holding the patent in

suit invalid for obviousness not only for lack of syner-

gism, but also for obviousness under 35 U.S.C. 103.

Such findings were deficient, however, since they did

not inquire into the factual questions set forth in |

Graham v. Deere, 383 U.S.1, i.e. the scope of the prior

art, the difference between the prior art and the

claims at issue, and the level of skill in the pertinent

art.

An appeal to the Court of Appeals for the Ninth

Circuit was filed June 18, 1977. The appeal was heard

October 10, 1978. On September 17, 1979 the Appel-

late Court filed its MEMORANDUM affirming the

sani

Summary Judgment granted by the District Court.

The Appellate Court’s opinion completely ignored

the aforementioned deficient obviousness findings of

District Court based on 35 U.S.C. 103. Instead, the

Appellate Court held the patent in suit to be obvious

solely as being directed to a combination of old ele-

ments which failed to provide a synergistic result.

Reasons for Granting the Writ

This Writ should be granted to resolve the direct

conflict between the Seventh and Ninth Courts of Ap-

peals as to the propriety of holding a patent invalid

for obviousness solely for lack of a synergistic result.

A copy of the Seventh Circuit decision in A.M.P.,

Inc., v. Bunker Ramo Corp. appears at Appendix 3

hereto. In A.M.P., just as in the present case, the Dis-

trict Court held the patent in suit invalid by means

of a Summary Judgment solely for lack of a synergis-

tic result without any consideration of the criteria

set forth in Graham v. Deere for determining valid-

ity under the provisions of 35 U.S.C. 108. The Sev-

enth Circuit Court of Appeals explicitly refused to

find that synergism is a requirement for non-obvious-

ness and reversed the Summary Judgment. More spe-

cifically, the Court held that it was an error for the

District Court to find the patent invalid solely for

lack of synergism, rather than making the factual in-

quiries required by Graham v. Deere under 35 U.S.C.

103. The Seventh Circuit in A.M.P. reaffirmed its re-

nlite

fusal to require synergism as a requirement for non-

obviousness set forth in Republic Industries, Inc. v.

Schlage Locks Co., 592 F.2d 963 (Feb. 1, 1979), speci-

fically holding:

“This court never intended that synergism be ap-

plied literally or that synergism is the sine quo

non of patentability.”

The Ninth Circuit Court of Appeals in this case

just as explicitly ruled that synergism is required

to find non-obviousness, completely ignoring the fac-

tual inquiries of Graham v. Deere, specifically hold-

ing:

“Non-obviousness remains unachieved unless the

result of the combination can be properly char-

acterized as synergistic.”

A comparison of the above pronouncements clearly

establishes the square and irreconcilable conflict be-

tween the Seventh and Ninth Circuits as to the syn-

ergism requirement.

It should be further noted that the Second and

Tenth Circuit Court of Appeals have recently indi-

cated in dictum that they will no longer go along with

this Court’s synergism requirement. Instead, these

circuits have now reverted to the pre Anderson-Back-

rock and Sakraida test for obviousness set forth in

Graham v. Deere.

g | sailed

Thus, the Second Circuit in Champion Spark Plug to be nonobvious, the result achieved by the com-

Co. v. Gyromat Corp., — F2d. —, 202 U.S. Patents bination must be synergistic.”

Quarterly 785, 793 (July 2, 1979) stated:

The conflicting decisions of the Second, Seventh,

“Citing Sakraida v. Ag Pro, Inc., 425 U.S. | Ninth and Tenth Circuits have and will continue to

273, 189 USPQ 449 (197¢), Champion argues cause massive consternation among members of the

that claims 5 and 6 of the Norris ’276 patent Judiciary and of the Patent Bar. This chaos was

simply define “an arrangement of old elements,” | caused by this Court and should be promptly resolved

each performing “the same function it had been | by this Court.

known to perform,” and that such combinations |

are not patentable. In the factual setting of the- | Conclusion

Sakraida case, we have no difficulty with the .

holding that the invention there involved was For the reasons set forth hereinabove, this Peti-

not patentable. However, we do not agree with tion for Certiorari should be granted.

what amounts to an oblique suggestion that the |

dicta in the Supreme Court’s opinion overruled | Respectfully submitted,

the statutory test of nonobviousness established i

by 35 U.S.C. §103 along with the analytical FRANCIS A. UTECHT

guidelines for that test established in Graham v. | Suite 910 Fidelity Federal Plaza

John Deere Co.” | 555 East Ocean Boulevard

Pe ene | Long Beach, California 90802

Similarly, the Tenth Circuit Court of Appeals in | (213) 482-0453

Plastic Container Corp. v. Continental Plastics of |

Oklahoma, Inc., — F.2d —, 203 U.S. Patents Quar- ¢ Counsel for Petitioners

terly 27, 43, stated:

“The obviousness or nonobviousness of the Hall

Reissue claims can then be determined in accord-

ance with the analytical guidelines established by |

the Supreme Court in Graham v. John Deere Co.,

supra. We note that these guidelines do not re- |

quire that, for a combination of known elements |

APPENDIX

—_) om

APPENDIX 1

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Civil Action No. 76 1604 AAH

OSMOSE WOOD PRESERVING CO.

OF AMERICA, INC., et al,

Plaintiffs,

V.

CITY OF LOS ANGELES, .

Defendant.

FINDINGS OF FACT AND CONCLUSIONS

OF LAW

DEFENDANT HAVING MOVED FOR SUM-

MARY JUDGMENT, briefs having been filed and

oral arguments having been heard, the Court being

advised in the premises, makes the following findings

of fact and conclusions of law:

Findings of Fact

I.

Plaintiff, Osmose Wood Preserving Co. of Ameri-

ca, Inc., is a corporation of the state of New York

having a main place of business at 980 Ellicott Street,

Buffalo, New York.

~~ -— + oe ae SL _

pn ae

IT.

Plaintiff, Harry W. Stiritz, Jr., Trustee of trust

established by Declaration of Trust dated July 15,

1970 (Liddell trust), is a citizen of the United States

residing in this district.

ITl.

Defendant, City of Los Angeles, operates the Port

of Los Angeles, California, within this district,

IV.

This court has jurisdiction over the cause of action

on file herein by reason of the provisions of § 1388

of Title 28, United States Code, this being a civil ac-

tion arising under the Patent Laws of the United

States.

V.

On April 3, 1962, United States Letters Patent No.

3,027,610 entitled Method Of Protecting Timbers

Against Marine Borer Attack was issued to Orval E.

Liddell.

VI.

Plaintiff, Harry W. Stiritz, Jr., Trustee of trust

established by Declaration of Trust dated July 15,

oo

1970 (uiddell trust) has exclusively licensed Osmose

Wood Preservation Co. of America, Inc. to make, use

and sell plastic pile wrappings under said patent No.

3,027,610.

VIL.

The claims of the patent in suit each recite a com-

bination of elements set forth as a series of steps.

VITl.

Claim 1 of the patent in suit defines a method of

protecting against borer attack a partially submerged

structure-bearing wooden pile, the upper end of which

is obstructed, comprising: positioning a sheet of pli-

able substantially waterproof material alongside of a

section of said pile to be protected, wrapping said

sheet around said pile section to dispose opposite lon-

gitudinal edges of said sheet in substantial juxta-

position extending generally longitudinally of said-

pile, overlapping the opposite longitudinal edges of

said sheet, drawing said sheet about said pile section

to reduce the effective diameter enclosed by said sheet

until said sheet engages said pile throughout a sub-

stantial portion of the length of said pile section,

securing said sheet about said pile section in reduced

diameter condition to define a generally circumferen-

tial water-filled space between said pile and said

sheet, and retaining water within said space with

circulation between said space and the water sur-

pen Te

rounding said sheet being restricted to thereby main-

tain the water in said space stagnant to prevent ma-

rine borer attack on the submerged portion of said

pile encased by said sheet.

IX.

Claim 2 is substantially identical to claim 1 except

for the further provision of a step of forming a crater

lower than the mud line adjacent the pile and lower-

ing the sheet wrapped about the pile into the crater

so formed.

X.

Claims 3 and 4 are also substantially identical with

the addition of the step of stiffening the opposite lon-

gitudinal edges of the sheet of waterproof material.

XI.

The claims of the patent in suit define a combina-

tion wherein the whole does not contribute anything

which is not contributed by the sum of the claim ele-

ments.

XII.

Plaintiffs admit the existence of prior art wherein

sheets are wrapped about pilings, wherein a space

exists between the sheets and the pilings and wherein

pe ae

the entrance to that space is necessarily limited to

prevent the entrance of marine borers.

XIII.

Sheathing around pilings is abundantly disclosed in

the prior art: (1) a printed publication entitled Ex-

tending Service Life of Wood Pilings in Sea Water

by Wakeman & Whiteneck, published in the American

Society for Testing Materials, 1959, shows that stag-

nation is provided about a piling by the disclosure of

the patent in suit. This same article shows a myriad

cf early devices for providing barriers positioned

about wood piless; (2) United States Patent No.

511,372, showing a composite covering banded to a

wooden pile, Exhibit A hereto; (3) United States Pat-

ent No. 395,866, discloses a metal sheeting held about

a pile, Exhibit B hereto; (4) United States Patent

No. 1,353,598, discloses a mechanism for holding

sheet material about a post, Exhibit C hereto; United

States Patent No. 2,181,526, to Upton, Exhibit D

hereto, in column 1, beginning at line 36, states:

“It is well known that when a pile as sur-

rounded by sand or other divided inert material

which will pack closely about a pile, circulation

of water thereabout is checked and destrucutive

animal life present in the pile is promptly elim-

inated, as the animals die upon the exclusion of

of oxygen which would normally be brought to

them by water circulating about the pile. Thus,

nei

we dind that the portion of a pile which is im-

bedded in the bottom is not attacked and like-

wise, if that portion of a pile extending from the

bottom to the high water mark is surrounded by

a column of sand which may be retained in posi-

tion by a tubular member, the latter portion will

also be preserved from attack by these marine

worms, or, if the worms have been present in

the pile they will die shortly after the applica-

tion of the column of sand or simiar material.”

XIV.

Defendant asked plaintiffs to identify the synergis-

tic result of what was claimed in each claim of the

patent in suit in Interrogatory No. 50.

XV.

Plaintiffs failed to provide any result in response

to Interrogatory No. 50.

XVI.

Defendant moved for further answers and again

plaintiffs had the opportunity to identify the syner-

gistic result from that which was described in the

patent in suit.

XVII.

Plaintiffs supplemented their response to Interrog-

=

a

atory No. 50 but again failed to provide any result

suggesting synergism.

XVIII.

Defendant subsequently brought on the present mo-

tion for summary judgment for lack of invention in

the patent in suit.

Conclusions of Law

I.

This Court has jurisdiction over the subject matter

of this cause of action.

Il.

This Court has jurisdiction over plaintiffs and de-

fendant.

III.

United States Letters Patent No. 3,027,610 was is-

sued on April 3, 1962.

IV.

At all times material herein plaintiff Harry W.

Stiritz, Jr. has been the Trustee of trust established

by the Declaration of Trust dated July 15, 1970, by

mo

the patent owner and plaintiff Osmose Wood Preserv-

ing. Co. of America, Inc. has been the exclusive li-

censee.

V.

United States Letters Patent No. 3,027,610, and

each of the claims thereof are invalid and void.

VI.

A patented combination must be viewed in its en-

tirety as to patentability. The presence or absence of

new elements in the combination is of no consequence

unless there is created a patentable whole. Great At-

lantic & Pacific Tea Company v. Supermarket Equip-

ment Corp. (1950) 340 U.S. 147, 150; Stukenborg v.

Teledyne, Inc. (9 Cir. 1971) 441 F.2d 1069, 1072).

VII.

The Supreme Court established a standard for pat-

entability of claimed combinations in Graham v. John

Deere Co. (1966) 383 U.S. 1, 15 L.Ed.2d 545. The

scope and content of the prior art is first determined

and applied to develop the differences between the

prior art and the claims at issue. The ordinary skill

in the pertinent art is also ascertained. From this, the

legal conclusion of obviousness or nonobviousness of

the subject matter of the claims in question is deter-

mined.

eee

IX.

More recently, in Sakraida v. AG PRO, Inc.

(1976) — US. —, 96 U.S. 1532, 47 L.Ed.2d 784,

189 U.S.P.Q. 449, the Supreme Court reiterated the

test for claimed combinations. The test is one of law

requiring that the patented combination claimed pro-

vides a synergistic result, a result having an effect

greater than the sum of the several effects taken sep-

arately.

X.

The claims of the patent in suit are to a combina-

tion to which the standards of Graham v. John Deere

and Sakraida v. AG PRO apply.

XI.

The clear relevance of the scone and content of the

prior art referred to above and the level of skill nec-

essary to effect the present invention relative to the

level of skill in the field of pile protection as exhibited

by the patents and articles before the Court make the

invention of the patent in suit obvious in view there-

of.

XIi.

By plaintiff’s own admission, prior art directed to

barriers for pilings with space between the barrier

sein.

and the piling and restricted access thereto was

known. This, along with the remaining art referred

to above, made obvious the concept of creating a stag-

nant zone about a piling using plastic sheet drawn

tightly thereabout.

XITI.

The claims of the patent in suit define a combina-

tion of elements wherein no synergistic result is real-

XIV.

Plaintiff has been unable in response to interroga-

tories to identify any synergistic result realized by the

combination of elements defined by the claims of the

patent in suit.

XV.

Plaintiffs’ counsel’s assertion that synergism re-

sides in the concept of creating a stagnant zone about

a piling does not establish a synergistic result as the

concept was taught in the prior art.

XVI.

There is no genuine issue as to any material fact

and defendant is entitled to a judgment as a matter

of law.

a | ee

XVII.

Defendant is entitled to a judgment against plain-

tiffs that United States Letters Patent No. 3,027,619,

and each of the claims thereof are invalid.

XVIII.

Defendant is entitled to recover from plaintiffs its

costs incurred herein

Dated this ___. day of »-k0a t.

UNITED STATES DISTRICT JUDGE

SUBMITTED BY:

SUMMARY JUDGMENT

DEFENDANT HAVING MOVED FOR A SUM-

MARY JUDGMENT, briefs having been filed, oral

arguments having been had, the pleadings and other

documents on file herein establishing that there is no

genuine issue as to any material fact and that de-

fendant is entitled to a judgment as a matter of law,

findings of fact and conclusions of law being entered;

It is hereby ordered, adjudged, and decreed as fol-

lows:

snl a

1. This Court has jurisdiction of the subject mat-

ter of the cause of action raised by the Complaint on

file herein and of the parties to these proceedings.

2. United States Letters Patent No. 3,027,610, is-

sued April 3, 1962, for Method of Protecting Timbers

Against Marine Borer Attack and each of the claims

thereof are invalid and void.

3. The Complaint on file herein is dismissed with

prejudice.

4. Defendant is entitled to recover from plaintiffs

costs incurred herein in an amount to be determined

by the Clerk of this Court in accordance with Rule

15 of the Central District of California, which

amount when ascertained shall be entered in this

judgment and become a part thereof,

Costs awarded: $

Dated this ___. day of , 1977.

UNITED STATES DISTRICT JUDGE

SUBMITTED BY:

ae

APPENDIX 2

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 77-2504

OSMOSE WOOD PRESERVING CO. OF

AMERICA, INC. and HARRY W. STIRITZ, JR.,

Trustee of trust established by Declaration of

Trust dated July 15, 1970 (Liddell Trust),

Plaintiffs-Appellants,

V.

CITY OF LOS ANGELES, CALIFORNIA,

Defendant-Appelee.

MEMORANDUM

Appeal from the United States District Court

for the Central District of California.

Before: HUFSTEDLER and TANG, Circuit Judges,

- and SOLOMON,”* District Judge

Osmose Wood Preserving Co. of America, Inc (‘“Os-

mose’”’), the exclusive licensee of patent No. 3,027,610,

and Stiritz, trustee of the trust owning the patent in

suit brought this action against the City of Los An-

*Honorable Gus J. Solomon, Senior United States District

Judge, District of Oregon, sitting by designation.

—) )

geles for patent infringement. (Osmose and Stiritz

will be referred to collectively as “Osmose.”) The City

averred that the patent was invalid under the pro-

visions of 35 U.S.C. §§ 102 and 103. Osmose appeals

from summary judgment in favor of the City invali-

dating the patent.

Osmose contends that material issues of fact fore-

close summary judgment and that the undisputed

facts did not sustain the district court’s holding that

the patent was invalid for obviousness under 35

U.S.C. § 103. Osmose also argues that procedural de-

ficiencies prevented the district court from granting

summary judgment.

The patent in suit claimed a method of protecting

submerged wood pilings from marine borer attack

by wrapping the pilings with strips of waterproof

plastic material, thereby creating a pool of stagnant

water around the pilings which killed marine borers

by depriving them of oxygen. The protective covering

also prevented new borers from reaching the pilings.

The patent in suit was a combination patent, and,

as such, the patentee has an uphill battle to sustain

the patent against the obviousness challenge. Unobvi-

ousness is a question of law, but that question cannot

be resolved without examining the facts defining the

scope and content of the prior art, the differences be-

tween the prior art and the claims in suit, and the

level of skill in the pertinent art. (Graham v. John

-

I Rs SO i Nitin aa Cao Pe owes BOD at

_—

a

Deere Co., 383 U.S. 1, 17 (1966); Austin v. Marco

Dental Products, Inc., 560 F.2d 966, 970 (9th Cir.

1977).) “A patent for a combination which only

unites old elements with no change in their respec-

tive functions . . . obviously withdraws what it al-

ready known into the field of its monopoly and dimin-

ishes the resources available to skillful men.” (Great

A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147,

152-53.) A combination patent does not avoid invalid-

ity for obviousness even if the rearrangement of old

elements performs “a more striking result than in

previous combinations.” (Sakraida v. Ag Pro, Inc.,

425 U.S. 273, 282 (1976).) Non-obviousness remains

unachieved unless the result of the combination can

be properly characterized as synergistic, “an effect

greater than the sum of the several effects taken sep-

arately.” (Id. at 282. Accord: Satco, Inc. v. Trans-

equip, Inc., 594 F.2d 1318 (9th Cir. 1979).)

No one can successfully contend that there was

anything new about the knowledge that wood borers

die without oxygen, or that stagnant water is oxygen-

poor. Putting sleeves or other kinds of shields around

wooden pilings to protect them from marine borers

had been known for many years. The use of plastic

in sheets or strips to protect the thing covered is also

well known. The patent in suit did not claim any in- |

vention in creating a pool of stagnant water around |

a piling to deprive the borers of oxygen. Rather, the |

claim of non-obviousness was based upon the method

of creating that pool of water by using plastic strips,

which produced the same result as rubber sleeves, but

—_96—

had the advantage over rubber sleeves of ease and

economy of application.

No synergistic result was accomplished by the use

of these several old elements. Any kind of shield

placed around the piling in such a Way as to contain

water would produce results identical to a plastic

wrapper: Marine borers surrounded by the stagnant

water would die, and new borers could not get close

to the piling. The creation of a stagnant water layer

to prevent marine borers attack was known to the art

long before the Osmose patent. The rubber sleeve

method to accomplish that result was publicly used at

the Tuna Club dock in Avalon in July, 1956, as Os-

mose acknowledged in its answer to interrogatory No.

67. Nothing new or surprising occurred when Osmose

substituted plastic strips for rubber sleeves or tubes

in creating stagnant water around pilings to kill

marine borers. In short, there was no synergistic ef-

fect in the use of this combination of old materials.

Osmose attempts to avoid the requirement of syn-

ergistic effect by contending that “at least one ele-

ment of the claimed combination was new, namely the

provision of a stagnant water space around a wooden

piling by means of a plastic sheet.” The argument is

unavailing because, as we have earlier noted, the Os-

mose patent did not make that claim. But, even if it

did, Osmose cannot escape the combination of old ele-

ments law because neither the use of stagnant water

space nor wrapping of the object to be protected by

plastic is new. Osmose has tried to create a triable

eR Bs nt ee PR RSet ci

a Bod

issue of fact by claiming that the prior art failed “to

disclose the concept of surrounding a wooden piling

with a body of stagnant water to render the water

lethal to marine borers.” Osmose points to a finding

by a United States District Court for the Northern

District of California in a companion case that the

prior art failed to make that disclosure. No triable

issue is created by that finding, which necessarily de-

pends on the art that was brought to the attention of

the district court in that action. Osmose also relies on

an affidavit of John W. Storer in which the affiant

stated that a new element was the provision of stag-

nant water space around the wooden piling by means

of a plastic sheet. The statement is a conclusion of

law redefining the legal meaning of elements in a

combination. Two old elements (stagnant water and

wrapping objects in plastic) do not equal a new ele-

ment, even if the old elements were used in a new

combination and the results were more striking than

prior combinations.

We cannot discover any prejudice to Osmose from

the claimed failure of the district court to follow Lo-

cal Rule 3 of the Central District of California. Os-

mose’s method or process patent was entirely com-

posed of old elements, and its rearrangement of those

elements did not produce the requisite synergistic ef-

fect. No evidence could successfully have been offered

by Osmose to prove that stagnant water, plastic

sheets or strips to make a shield, shields, or wrapping

methods were new.

AFFIRMED.

cell

APPENDIX 3

In the

UNITED STATES COURT OF APPEALS

For the Seventh Circuit

No. 78-1846

AMP INCORPORATED, a corporation,

Plaintiff-Appellant

Vv.

BUNKER RAMO CORPORATION, a corporation

Defendant-Appellee

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 75 C 2204—Bernard M. Decker, Judge.

ARGUED FEBRUARY 23, 1979—DECIDED

AUGUST 22, 1979

Before SWYGERT and SPRECHER, Circuit

Judges, and NOLAND, District Judge.*

NOLAND, District Judge. AMP, Inc., the owners

of the Roberts patent, U. 8. Patent No. 3,760,335, in-

stituted this infringement action against the Bunker

Ramo Corporation. Bunker Ramo counterclaimed al-

4 leging noninfringement and invalidity of the Roberts

| patent. After oral arguments, the district court en-

tered a summary judgment for the defendant on May

ae Oe

*District Judge James E. Noland of the Southern District of

Indiana is sitting by designation.

A I = eenenlte eset “

niin

18, 1978, ruling the Roberts patent invalid after find-

ing that it was a combination of prior art that failed

to demonstrate a necessary synergistic effect. In light

of this court’s recent decision in Republic Industries,

Inc. v. Schlage Lock Company, 592 F.2d 963 (7th

Cir. 1979), we must find that the summary judgment

was inappropriately granted.

In Republic Industries, this court addressed the re-

curring question of what criteria are to be applied in

determing the nonobviousness of combination patent

claims under section 103 of the Patent Act of 1952.

35 U.S.C. §103. Recognizing that the district courts

of this circuit were increasingly taking the view that

a demonstration of synergism and not the criteria set

forth in Graham v. John Deere Co., 388 U.S. 1

(1966), was the controlling test in determining the

validity of combination patent claims, this court

stated the following:

[T]his court never intended that synergism be

applied literally or that synergism is the sine qua

non of patentability. Rather, the concept was em-

ployed only as a figure of speech to express that

truism that when all the parts of a claimed in-

vention are known, the combination (and the act

of combining) is likely to be more obvious to one

reasonably skilled in the art. See Reeves Instru-

ment Corp. v. Beckman Instruments, Inc., 444

F.2d 263, 271 (9th Cir.), cert. denied, 404 U.S.

951 (1971). However, because synergism has

aon. - res -

canal:

prevented the development of a consistent, pre-

dictable body of law under section 108, and be-

cause the concept does not bear any logical ipso

facto relationship to obviousness, the term has

little, if any, utility. Therefore until Congress

shall otherwise specifically hold, this court will

continue to apply the Graham analysis as the ex-

clusive means by which to measure nonobvious-

ness under section 103.

Republic Industries, 592 F.2d at 972 (footnote omit-

ted). In fairness to District Judge Decker, we must

point out as we did in Republic Industries that prior

to that decision this court was less than clear and con-

sistent in its expressed standards for judging the non-

obviousness of combination patent claims. While the

Graham criteria have always been explicitly or im-

plicitly applied we, have also occasionally mentioned

the prsence or absence of a requirement resembling

synergism. Republic Industries, 592 F.2d at 971. In

fact, the treatment of synergism as a separate and

distinct prerequisite to establish the validity of a

claimed combination patent can find support in our

decision in St. Regis Paper Co. v. Bemis Co., 549 F.2d

838 (7th Cir.), cert. denied, 434 U.S. 883 (1977).

However, it is our recent clarifying pronouncement in

Republic Industries against which we must now judge

the district court’s entry of summary judgment in

this case. AMP, Inc., has raised several issues for our

review; however, we find the synergism issue to be

dispositive and therefore we need not discuss the re-

maining issues presented.

lies.

On October 7, 1977, the district court first con-

sidered and denied Bunker Ramo’s motion for sum-

mary judgment by an order and accompanying mem-

orandum opinion. Among the issues raised and dis-

cussed by the district court in denying Bunker Ramo’s

motion were the synergistic aspects of the Roberts

patent and its obviousness under secfion 103. Within

its opinion, the court stated it was undisputed that

the Roberts patent is a combination of the prior art

and as such would be patentable only if it produced

some synergistic result. The court determined that the

inventor’s affidavit, stating the commercial embodi-

ment of the Roberts patent demonstrated the requisite

Synergistic effect, was sufficient to establish a genuine

material issue of fact for trial, thus preventing sum-

mary judgment upon this ground.

In a separately headed section of its memorandum,

the district court went on to review the following fac-

tual inquiries set forth in Graham for determining

the obviousness of claimed combination patents:

~~

Under § 103, the scope and content of the prior

art are to be determined; differences between the

prior art and the claims at issue are to be ascer-

tained; and the level of ordinary skill in the

pertinent art resolved.

Id. at 17. The district court determined that there are

no genuine issues of material fact as to the scope

and content of the prior art, or as to the differences

an eR aie Be ca i TAN -

ee

he ora a aN

Pe ae

Wate

elie:

between the prior art and the claims at issue. How-

ever, the court did state that it found a genuine issue

of material fact exists concerning the level of ordi-

nary skill in the art pertinent to the Roberts patent.

Thus, the court stated it was unable to grant Bunker

Ramo’s request for summary judgment on the ground

that the Roberts patent was obvious under section

103.

On May 18, 1978, following oral arguments upon

Bunker Ramo’s motion to reconsider, the district

court vacated its order of October 7, 1977, granted

Bunker Ramo’s motion for summary judgment,

amended its memorandum opinion, and entered judg-

ment accordingly. The court’s reversal of its previous

decision was based upon its determination following

rehearing that the inventor’s affidavit claiming that a

synergistic effect is demonstrated by the commercial

embodiment of the Roberts patent could not serve as

the basis for validity when the claimed effect was not

disclosed by the patent itself. In other words, AMP,

Inc. failed to establish a prima facie showing that

their patent produced a synergistic effect.

Without further discussion of the district court’s

finding upon rehearing, we must conclude that sum-

mary judgment was inappropriately granted. It is

axiomatic that summary judgment is inappropriate

when there are genuine issues of material fact. And,

particularly in patent cases, genuine issues of fact

usually emerge, requiring a full trial. See Techno-

oe. ee

graph Printed Circuits v. Methode Elec., Inc., 356

F.2d 442 (7th Cir. 1966). That is the situation in the

instant case.

Left unaltered by the court’s May 18, 1878, order

and amended memorandum opinion is its determina-

tion that a genuine issue of material fact exists con-

cerning the level of skill in the art pertinent to the

Roberts patent, which remains a necessary factual

inquiry under Graham for determining whether the

Roberts patent is obvious under section 103. We must

conclude, therefore, that the district court’s entry of

summary judgment was based upon the premise that

a demonstration of synergism is a necesary and sep-

erate prerequisite to a demonstration of nonobvious-

ness under section 103 for establishing the validity of

a claimed combination patent. Although such a prem-

ise was argualy supportable at the date of District

Judge Decker’s decision, it is now in conflict with our

decision in Republic Industries.

Because the district court’s own findings other than

those relating to its now-erroneous view of the syn-

ergism test establish that a genuine issue of material

fact remains for trial, we cannot conclude that Bunk-

er Ramo is properly entitled to summary judgment.

For this reason, we must REVERSE the judgment of

the district court and REMAND this cause for fur-

ther proceedings and trial.

~%

incase

a

Circuit Rule 18 shall apply.

REVERSED AND REMANDED.

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit