Petition — Dual Manufacturing & Engineering, Inc. v. Burris Industries, Inc.

OCTOBER TERM, 1979

DUAL MANUFACTURING & ENGINEERING, INC.

AND THE BERKLINE CORPORATION,

Petitioners,

VS.

BURRIS INDUSTRIES, INC. aANp LEGGETT

& PLATT, INCORPORATED,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SEVENTH. CIRCUIT

*

CORNELIUS J. HARRINGTON, JR.

Davip D. ‘KAUFMAN ,

JoHN E. ANGLE

Attorneys for Petitioners

Of Counsel:

KIRKLAND & ELLIS

200 East Randolph Drive

Chicago, Illinois 60601

(312) 861-2000

Davip D. KAUFMAN

Room 1425

39 South LaSalle Street

Chicago, Illinois 60603

(312) 372-8113

Gunthorp-Warren Printing Company, Chicago e Financial 6-6565

IN THE

Supreme Court of the Gnited States

OCTOBER TERM, 1979

DUAL MANUFACTURING & ENGINEERING, INC.

AND THE BERKLINE CORPORATION,

Petitioners,

VS.

BURRIS INDUSTRIES, INC. anp LEGGETT

& PLATT, INCORPORATED,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

SEVENTH CIRCUIT.

il

Petitioners, Dual Manufacturing & Engineering, Inc. and

The Berkline Corporation, pray that a writ of certiorari issue

to review the en banc judgment and opinion of the United States

Court of Appeals for the Seventh Circuit entered in this cause

on April 22, 1980, which reversed the earlier panel decision

of the same court.

QUESTIONS PRESENTED

I. Were the petitioners deprived of their constitutional right

to a jury trial when the Court of Appeals substituted its own

view of obviousness without finding that the jury’s verdict of

patent validity was against the manifest weight of the evidence?

II. Was the jury’s verdict of patent validity binding on the

reviewing court where the respondents assigned no error to sub-

mitting the issue of patent validity to the jury as a fact question

and the reviewing court made no finding that the verdict was

against the manifest weight of the evidence?

INDEX

PAGE

fg er eres ares te ii

COMMONS TOW i icin cidic ci vc avtWabariecsriavbvsveewe 1

PUTIN TI i 6S heh ea Cee oS J

Constitutional Provision and Statute Involved .......... 1

ORE OF TD TANS oi Sane s cee eee rnb cage taanel 2

Reasons for Granting the Petition ...............605. 4

fT EET TERT URE eee EET CT Cee ee 4

1. The Decision Below Denies Petitioners Theic Con-

stitutional Right to a Jury Trial.............. 4

2. The Decision Below Conflicts with Decisions of

Other Circuits in Patent Cases............... 7

3. The Decision Below Conflicts with Decisions of

pp te er ety eee ee re 10

4. The Public Interest Requires the Intervention of

ek DNS COE sie oecrewereswas hese 11

POSTE T ENTER ES EE SETS ere re eee 14

Seventh Circuit En Banc Opinion. ........-...cecee0- Al

Seventh Circuit Panel Opinion... ........ccccccssecs Al7

Seventh Ciscuit Judgment... ....sccscccensccccvcces A32

TABLE OF AUTHORITIES

Cases

Armour & Co. v. Wilson & Co., 274 F. 2d 143 (7th Cir.

| RPP SPR BRED intr gr aap MEN roe eine ema eoy re Ree 9

Baker v. Texas & P. R. Co., 359 U.S. 227 (1959) .... I1

Beacon Theatres v. Westover, 359 U.S. 500 (1959) .... 5

iv

Commissioner v. Duberstein, 363 U.S. 278 (1960) .... 6

Control Components, Inc. v. Valtek, Inc., 609 F. 2d 763

(5th Cir. 1979), reh. den., 616 F. 2d 892 (1980)..... 4,8

Dairy Queen v. Wood, 369 U.S. 469 (1962) .......... 5

Graham v. John Deere & Co., 383 U.S. 1 (1966) ..2, 5,7, 11

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

er PE a ek ae es een aes Bh he A

Lavender v. Kurn, 327 U. S. 645 (1946) ............. 10

Marconi Wireless Co. v. United States, 320 U.S. 1

Serle eco aip es Sask ds aoe aan ee ee eae 12

McVeigh v. McGurren, 117 F. 2d 672 (7th Cir. 1941),

i a Dee Oh ee PE ok as bed ye oe ee he Ree 10

Moore v. Shultz, 491 F. 2d 294 (10th Cir. 1974), cert.

Ay AL ge Te eee nr ore ee 4,8

Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc.,

ge we Bey Cm By 2 ee 5, 6, 8, 9, 12

Republic Industries Inc. v. Schlage Lock Co., 592 F. 2d

ee Oe I rs So Sawa od t1s oe ae eee bw os 7

Senko v. LaCrosse Dredging Corp., 352 U.S. 370, reh.

i, Be Wn ee OR CMO D kik cd elec ek Seer ies 11

Spound v. Mohasco Industries, Inc., 534 F.2d 404 (Ist

Cm. 1975) cert. Gem. G29 U.S. COG oo. ccc cceeces 7

A. & G. Stevedores v. Ellerman Lines, 369 U.S. 355

Rey, es Cig: UE Es Gs WE ho 'e.0 WA A ca eee s 11

Tights, Inc. v. Acme-McCrary Corp., 541 F. 2d 1047 (4th

Cir. 1976), cert. den. 429 U.S. 980 .............. 9

Tights, Inc. v. Stanley, 441 F.2d 336 (4th Cir. 1971),

es a NE a NE hie hee 6d oss ewes se uens 7

United States v. Kaiser, 363 U.S. 299 (1960) ........ 4,10

White v. Mar-Bel, Inc., 509 F.2d 287, reh. den., 511

Pee Be Ce Ga AO) wad oencki eee devcuewevs 6

Statutes

cS ee > Pr rere ee ee ey

oe i ee SD BREED 6 65s 00805 0ak cae eee wae

Se Ui Gale OE on hei hes 0p 0 ced Waeeren eewonwern

IS ee Sr ee ee, er oe ers

Oe -r G G S TD on ks cce nwt eds feviasaenwen nes

Constitutional Provision

U.S. Constitution, AMOMMNNOME TF ccc ccc cccecsce woes

Legislative History

H. R. No. 1923, 82nd Cong. 2d Sess, on H. R. 7794.....

Other

Banner, “Address Before The American Bar Association

Patent, Trademark, and Copyright Section” 60 Journal

Of The Patent Office Society (J. P.O. S.) 477 (1978)

Fortas, “The Patent System In Distress,” 53 J. P.O. S. 810

CRRVED - aka i cnacen ven eck peak teas Cea

Green, “Judge and Jury” 270 (1930).........-......

Markey, “Science and Law,” 59 J. P.O. S. 343 (1977)..

Popovich, “Patent Quality: An Analysis of Proposed

Court, Legislative and PTO—Administrative Reform—

Reexamination Resurrected”, 61 J. P.O. S. 248 (1979)

Ropski, “Constitutional And Procedural Aspects Of The

Use Of Juries In Patent Litigation (Part Il—Conclu-

Genh.” SES. P. A B. GIS CiBMee s sso akdaduwcuncae

Schneider, “Non-Obviousness, The Supreme Court, and the

Prospects for Stability,” 60 J. P.O. S. 304 (1978) ...

—- ~~ ~a) — WN

12

12

12

13

OPINIONS BELOW.

The en banc opinion of the Seventh Circuit has not been of-

ficially reported and is reproduced at Appendix A (App.,

pp. Al-16). The July 20, 1979 opinion by a panel of the

Seventh Circuit is reported at 202 USPQ 708 (7th Cir. 1979),

and is reproduced at Appendix B (App., pp. Al7-31). There

was no opinion at the trial court level.

JURISDICTION

Jurisdiction of this Court is invoked under 28 U.S.C.

§ 1254(1). The en banc judgment of the Seventh Circuit was

entered on April 22, 1980, and is reproduced at Appendix C

(App., pp. A32-33).

CONSTITUTIONAL PROVISION

AND STATUTE INVOLVED

I. U.S. Constitution, Amendment 7:

In suits at common law, where the value in controversy

shall exceed $20, the right of trial by jury shall be pre-

served and no fact tried by a jury shall be otherwise re-

examined in any court of the United States, than according

to the rules of common law.

II. United States Code, Title 35, § 103:

A patent may not be obtained though the invention 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 art are such

that the subject matter as a whole would have been ob-

vious at the time the invention was made to a person

having ordinary skill in the art to which said subject matter

pertains. Patentability shall not be negatived by the man-

ner in which the invention was made.

STATEMENT OF THE CASE

This consolidated and bifurcated patent case was tried to

a jury.’ Two reissue patents were involved (28,210 and 29,483)

which covered an invention of Mr. Frank M. Re of a “close to

the wall” reclining chair that can be placed several inches from

a wall and reclined without striking the wall. Prior to Mr. Re’s

invention, reclining chairs were cumbersome and had to be

positioned or moved away from a wall before they could

recline. Mr. Re’s invention enjoyed great commercial success

and has had a profound and lasting impact on the furniture in-

dustry.* The petitioners alleged infringement and sought dam-

ages and injunctive relief.

The jury heard the testimony of sixteen witnesses, including

three experts, and observed countless demonstrations of the

many physica! exhibits received in evidence. As in any jury

trial, the jurors weighed the testimony and determined the

credibility of the witnesses. At the conclusion of a nineteen day

trial, the jury returned a special verdict finding that the two

reissue patents were valid and infringed and the district court

entered judgment based on the jury’s special verdict. A timely

motion for judgment notwithstanding the verdict or a new trial

was denied by the trial judge.

The jury instruction on obviousness tracked Graham Vv.

John Deere & Co., 383 U.S, 1 (1966), and “was drafted and

submitted by the appellants [respondents here] and given as

1. The original suit was brought by petitioners against Burris

Industries. Thereafter, Leggett & Platt, Jiic. commenced an action in

the District of Massachusetts seeking a declaratory judgment. The

second suit was transferred to the Northern District of Illinois and

consolidated with the original action. On motion of the respondents,

the issues of liability and damages were ordered to be tried sepa-

rately.

2. Indicative of this is the fact that the respondent, Leggett &

Platt, obtained its own patent on the chair found to infringe.

3

tendered with some slight modification” (App., p. A3). Ac-

cordingly, the parties agreed to submit the question of obvious-

ness to the jury as an issue of fact. When the jury held the

patents valid, it necessarily decided the Graham factual in-

quiries in favor of the petitioners.

No error was assigned on appeal to any of the instructions

given the jury; the respondents “did not object to submitting

the question of obviousness to the jury” (viz., treating it as a

question of fact); nor did they assign error on appeal on this

ground (App., p. A4). Moreover, respondents did not assert

on appeal that the jury’s verdict of validity was against the

manifest weight of the evidence.

A divided panel of the Seventh Circuit affirmed “on the basis

that the jury’s verdict was not against the manifest weight of

the evidence” (App., p. A2). The dissenting opinion, authored

by the circuit judge who wrote the subsequent en banc opinion,

“took the position that obviousness was a question of law, that

the evidence demonstrated the patents were obvious under the

prior art, that the patents should have been found invalid by

the district court, and that the judgment contrary thereto should

have been reversed by this court” (App., p. A2).

On April 22, 1980, the Seventh Circuit sitting en banc

reversed, one judge dissenting. The court ruled that the patents

were invalid as a matter of law, although the court made no

finding whatsoever that the jury’s verdict was against the mani-

fest weight of the evidence. Indeed, the opinion indicates that

the court had not even read the thirteen volumes of transcript

which constituted the plaintiffs’ case in chief (App., p. A4);°

and acknowledges sub silentio that the verdict was supported

by substantial evidence.

3. In contrast, the panel’s decision in this case Stated, “We have,

however, examined the record and found a reasonable basis for the

jury’s special verdict that the patent is valid” (App. p. .422). More-

over, the panel acknowledged and discussed differences. between the

invention and the prior art (App. p. A21).

1.

REASONS FOR GRANTING THE PETITION

The Seventh Circuit’s en banc opinion effectively denies

petitioners their constitutional right to a jury trial by com-

pletely ignoring the jury’s factual determinations on obvious-

ness in favor of the patentee. Unless redressed by this Court,

this deprivation of constitutional rights will continue to

recur in the Seventh Circuit and the other circuits where

courts of review feel free to substitute their subjective reac-

tion to obviousness for the jury’s verdict.

The Seventh Circuit’s en banc opinion is in clear conflict

with decisions of other circuits, such as Control Components,

Inc. v. Valtek, Inc., 609 F. 2d 763 (Sth Cir. 1979), reh.

den., 616 F. 2d 892 (1980); and Moore v. Shultz, 491 F. 2d

294 (10th Cir. 1974), cert. denied, 419 U.S. 930; which

hold that a properly instructed jury’s determination of valid-

ity is binding on the reviewing court unless the verdict is

against the manifest weight of the evidence. This conflict

between the circuits is irreconcible, of long standing and will

not be resolved without action by this Court.

The Seventh Circuit’s en banc opinion, by applying a scope

of review unique to patent cases, is in clear conflict with

numerous decisions of this Court, such as United States v.

Kaiser, 363 U.S. 299 (1960), which hold that a reviewing

court’s authority over a jury verdict is exhausted once it

determines that the jury was properly instructed and there

is substantial evidence to support the verdict. See also, dis-

senting opinion, Justice Douglas, Moore v. Shultz, supra.

ARGUMENT

1. The Decision Beiow Denies Petitioners Their

Constitutional Right to a Jury Trial.

This case presents questions: of fundamental importance for

every patent case tried to a jury. There is no dispute that the

5

petitioners had the constitutional and statutory right to have

their case, including the issue of validity, tried to a jury.

Beacon Theatres v. Westover, 359 U.S. 500 (1959); Dairy

Queen v. Wood, 369 U.S. 469 (1962); 35 U.S.C. § 284.

However, the Seventh Circuit’s en banc opinion, which totally

disregards the jury’s determination of validity, virtually abolishes

that right and distorts the meaning of Graham v. John Deere

& Co., supra, Moreover, such a result is obtained without re-

gard to what happened in the trial court by simply invoking

the incantation that “obviousness” is a question of law. Yet, we

submit that the mere application of a label cannot be used to

deny petitioners their right to a jury trial and the benefit of

the jury’s factual determinations; especially when, as here,

“[a]ll issues relating to validity and infringement were treated

as issues of fact and submitted to the jury.” Panther Pumps &

Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225,

227 n.2 (7th Cir. 1972), cert. denied, 411 U.S. 965.

The starting point of any discussion of obviousness is Graham

v. John Deere & Co., supra, where this Court, in now famous

language, asserted (at 17):

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 ascertained; and the level of

ordinary skill in the pertinent art resolved.

Graham stated that this three-step process involves “basic fac-

tual inquiries” to be made by the trier of fact based on the

evidence received at trial. Graham, however, was a non-jury

case that did not require this Court to further define a jury’s

role in applying the three-step process or the appropriate scope

of review to be applied to the jury’s findings.

Nonetheless, when any jury, instructed pursuant to Graham,

decides the question of validity in favor of the patentee it neces-

sarily finds as fact:

1. That certain art constitutes the relevant prior art; and

6

2. That there are significant differences between the prior

art and the invention; and

3. That the ordinary skill in the particular field is at a cer-

tain level. See, Panther Pumps & Equipment Co. v. Hydrocraft,

Inc., supra at 228; White v. Mar-Bel, Inc., 509 F.2d 287,

rehearing denied, 511 F. 2d 1402 (Sth Cir. 1975).

If these factual determinations are to have any meaning (and

accordingly afford the patentee his right to a jury), then a

court of review cannot simply impose its independent view of

obviousness without at least finding that these factual determina-

tions are against the manifest weight of the evidence. Indeed,

the only permissible purpose for reviewing factual determina-

tions is to ascertain whether substantial evidence exists to sup-

port the verdict; a reviewing court has no warrant to review the

evidence to see if it would have decided the case differently.

As this Court stated in Commissioner v. Duberstein, 363 U. S.

278, 290-291 (1960), “Where a jury had tried the matter upon

correct instructions, the only inquiry is whether it cannot be

said that reasonable men could reach differing conclusions on

the issue.”

The en banc opinion attempts to blunt the effect of the jury’s

factual determinations by making the wholly unwarranted as-

sumption that the facts pertaining to obviousness were not much

in dispute (App., pp. Al3, 26-27, 30). In fact, each factual

determination required by Graham was hotly contested. More-

over, the factual disputes on obviousness were by no means

restricted to the competing opinions of expert witnesses.* None-

theless, the Seventh Circuit felt free to independently re-evaluate

the facts in order to arrive at its decision of obviousness. The

extent to which the court was willing to go in de novo review of

4. The jury viewed countless demonstrations of physical exhibits

including full scale models of prior art structures. Additionally, there

were fundamental conflicts in the testimony of skilled workers in the

art produced by the opposing parties that only a jury, not a reviewing

court, could resolve.

7

facts is demonstrated by the statement, “It appears to us that

the other patents do have some relevance and under that cir-

cumstance we can give very little weight to the presumption of

validity in this case” (App., p. All).° Although it was clearly

the function of the jury to determine the scope and content of

the prior art, this statement illustrates the manner by which

the Seventh Circuit invaded the province of the jury and denied

petitioners the benefit of the jury’s evaluation of the facts.°

2. The Decision Below Conflicts with Decisions of

Other Circuits in Patent Cases.

Since 1966 federal courts have attempted to apply the teach-

ings of Graham to jury verdicts on validity and to determine the |

appropriate scope of review to be applied to such verdicts. Al-

though Graham states that “. . . the ultimate question of patent

validity is one of law . . .,”" at least four circuits (the First,

Fourth, Fifth and the Tenth) appear to hold that obviousness

is a question of fact. See, Spound v. Mohasco Industries, Inc.,

534 F.2d 404 (1st Cir. 1975) cert. denied, 429 U.S. 886;

Tights, Inc. v. Stanley, 441 F.2d 336 (4th Cir. 1971), cert.

5. Mr. Re’s invention was subjected to five separate examination

procedures by an experienced primary examiner, including two

reissue applications during the litigation and in which respondents

had the opportunity to participate.

6. It appears that the court’s negative attitude toward Mr. Re’s

invention as influenced by the fact that the invention was a combi-

nation patent. Despite the fact that the court cites its recent opinion

in Republic Industries Inc. v. Schlage Lock Co., 592 F. 2d 963 (7th

Cir. 1979) for the proposition that § 103 is the exclusive test for

non-obviousness, the court nonetheless quotes with approval and

as “valid law” the language from Great A&P Tea Co. v. Super-

market Equipment Corp., 340 U.S. 147, 152-153 (1950) concern-

ing combination patents. We respectfully suggest that the time has

come for the Supreme Court to make clear that the test of patent-

ability set forth in § 103 (adopted after Great A&P Tea Co.) is to

be applied equally to all types of inventions.

7. The statement included §§ 101 and 102 as well as § 103.

8

denied, 404 U.S. 852; Control Components, Inc, v. Valtek,

supra; Moore V. Schultz, supra, And in those circuits, including

the Seventh, that hold that obviousness is a question of law,°

the treatment of jury verdicts on validity has been anything but

uniform and the results conflicting and confusing.® Compare,

e.g., Panther Pumps & Equipment Co., supra, with this case.

As one of the circuit judges observed in Control Components,

supra, a “Serbonian bog . . . threatens to engulf patent litigation.”

Although the conflict between the circuits is long standing,

the instant case and the Fifth Circuit’s recent opinion in Control

Components, Inc., supra, serve to dramatically illustrate the

chaotic situation that exists. There, the jury returned a general

verdict that the differences between the prior art and the in-

vention would not have been obvious to one of ordinary skill

in the valve art and the trial judge entered judgment in favor of

the patentee. A divided panel affirmed on the ground that the

jury’s findings were supported by substantial evidence. In dis-

cussing the appropriate standard for review, the majority stated

(at 789):

If findirgs of fact on the scope of the prior art and the

uniqueness of the claim are supported by substantial evi-

dence, a legal conclusion consistent with those findings is

likely to follow.

“Full review’ in this context amounts to an inquiry

whether the judge ‘correctly applies the law set out in

Graham.’ Like the trial court, we are aided in our inquiry

by the jury’s findings of fact. If supported by substantial

evidence, these findings are apt to strengthen the trial

court’s legal conclusion. This case is no exception. Our

independent review of the record discloses competent sub-

8. As Dean Green noted the terms “iaw” and “fact” have

rendered great service to the legal profession because, “They readily

accommodate themselves to any meaning we desire to give them. . .”

L. Green, “Judge and Jury” 270 (1930).

9. A comprehensive list of cases dealing with this problem is

found in 58 J. P.O. S. 695, n. 201.

9

stantial evidence to support the jury’s findings on the factual

inquiries underlying the determination of validity.

Thus, the Fifth Circuit in effect ruled that the jury’s determina-

tion was conclusive unless it was against the manifest weight

of the evidence, a ruling consistent with the Seventh Amend-

ment, The same concern for that Constitutional guarantee and

the sanctity of jury verdicts is found in Tights, Inc. v. Acme-

McCrary Corp., 541 F. 2d 1047, 1055-1056 (4th Cir. 1976),

cert, den, 429 U.S. 980.

On April 23, 1980 (one day after the Seventh Circuit’s en

banc opinion in this case) all but four of the Fifth Circuit's

twenty four judges declined to reconsider the panel’s decision

by voting to deny a petition for a rehearing en banc. The four

judges dissented on the ground that the ultimate issue of patent

validity is one of law and observed, in language equally ap-

plicable to this case, that, “This case is of exceptional impor-

tance because the issues it presents arise in every jury trial of

a patent case.’’° Control Components, Inc. v. Valtek, Inc., 616

F. 2d 892 (Sth Cir. 1980).

It is manifest that the basic approaches of the Fourth, Fifth

and Seventh Circuit to the identical problem are antagonistic

and irreconcilable. Indeed, it is apparent that if Mr. Re’s inven-

tion had been judged in the Fourth or Fifth Circuit, instead of

the Seventh, the petitioner would now hold valid patents rather

than worthless pieces of paper.

Although the Seventh Circuit pays lip service to the notion

that jury verdicts in patent cases are to be treated no differently

than jury verdicts in non-patent cases, Armour & Co. v. Wilson

& Co., 274 F.2d 143 (7th Cir. 1960); Panther Pumps and

Equipment Co. v. Hydrocraft, Inc., supra, it is not possible to

reconcile what the Seventh Circuit’ did here with what it in

10. Counsel for petitioners have been advised that a petition for

certiorari will be filed in Control Components. Since Control .Com-

ponents represents “the opposite side of the coin,” the opportunity

exists for this Court to consider this case and Control Components

as companion cases.

10

fact does in non-patent cases. Thus, for example, in McVeigh

Vv. McGurren, 117 F.2d 672 (7th Cir. 1941), cert. denied,

313 U.S. 573, the Seventh Circuit asserted (at 676):

We can only examine the record to determine whether

there was sufficient evidence to support the verdict. The

record being clear in that respect, it is beyond the proper

scope of our authority to disturb it.

It is illuminating to compare this language from McVeigh with

the statement in the en banc opinion, “that this court has never

felt it was bound by a determination of non-obviousness at the

trial court level resulting in validity...” (App., p. A7).

3. The Decision Below Conflicts with Decisions of This Court.

Not only does the Seventh Circuit’s treatment of jury verdicts

in patent cases conflict with that afforded by other circuits, but

it cannot be squared with decisions of this Court concerning the

sanctity of jury verdicts generally. Thus, for example, in United

States v. Kaiser, 363 U.S. 299 (1960), this Court reviewed a

jury determination that strike assistance was a “gift” within the

meaning of the Internal Revenue Code and asserted (at 304-

305):

We need not stop to speculate as to what conclusion we

would have drawn had we sat in the jury box rather than

those who did. The question is one of the allocation of

power to decide the question; and once we say that such

conclusions could with reason be reached on the evidence,

and that the District Court’s instructions are not over-

thrown, our reviewing authority is exhausted, and we must

recognize that the jury was empowered to render the ver-

dict which it did.

And in Lavender v. Kurn, 327 U.S. 645 (1946), this Court

stated (at 653):

Whenever facts are in dispute or the evidence is such that

fair-minded men may draw different inferences, a measure

of speculation and conjecture is required on ‘the part of

those whose duty it is to settle the dispute by choosing

II

what seems to them to be the most reasonable inference.

Only when there is a complete absence of probative facts

to support the con.!usion reached does a reversible error

appear. But where, as here, there is an evidentiary basis

for the jury’s verdict, the jury is free to discard or dis-

believe whatever facts are inconsistent with its conclusion.

And the appellate court’s function is exhausted when that

evidentiary basis becomes apparent, it being immaterial that

the court might draw a contrary inference or feel that

another conclusion is more reasonable.

Similar decisions of this Court are: Senko v. LaCrosse Dredging

Corp., 352 U.S. 370, reh. den., 353 U.S. 931 (1957) (jury

determination that plaintiff a “seaman” within meaning of the

Jones Act); Baker v. Texas & P. R. Co., 359 U.S. 227 (1959)

(jury determination that plaintiff “employed” within meaning

of Federal Employers’ Liability Act); A. & G. Stevedores v.

Ellerman Lines, 369 U.S. 355 (1962), reh. den., 369 U.S.

882 (jury determination of negligence and seaworthiness). In-

deed, in Graham vy. John Deere this Court logically equated the

question of obviousness with negligence and scienter (383 U. S.

at 18).

These decisions show that, at least in non-patent cases, a

properly instructed jury’s determination of an issue, however

characterized, is conclusive unless it is against the manifest

weight of the evidence. It can scarcely be argued that the type

of questions involved in these cases (é.g., interpretation of In-

ternal Revenue Code or negligence) are any less “legal” than

the question of obviousness in patent cases. Yet, unless the

Seventh Circuit’s en banc decision is reversed, this Court will

have placed it imprimatur on a sui generis approach to patent

cases.

4. The Public Interest Requires the Intervention

of the Supreme Court.

Twenty eight years have elapsed since Congress enacted

§ 103 and it has been fourteen years since Graham v. John

12

Deere was decided. During the intervening years, the application

of § 103 by lower federal courts, especially in jury cases, has not

fulfilled the hope of Congress that its adoption would produce

“uniformity and definiteness” and would have a “stabilizing

effect and minimize great departures which have appeared in

some cases.”'' During the same period of time, there has been

a decline in technological advances and, in some fields, the race

may have already been lost to others.’* Several respected com-

mentators attribute this situation, at least in part, to an anti-

patent attitude displayed by many courts.'® Fortas, “The Patent

System In Distress,” 53 J. P.O. S. 810 (1971).

11. H.R. No. 1923, 82nd Cong. 2nd Sess., on H. R. 7794, May

12, 1952, pp. 7, 18.

12. Even within the United States, 37% of the U.S. Patents

issued in 1977 went to non-nationals. Banner, “Address Before

the American Bar Association Patent, Trademark, and Copyright

Section.” 60 J. P.O. S. 477, 478 (1978).

13. The inordinately high percentage of adjudicated patents held

invalid would seem to justify the widely held belief that the federal

courts are “anti-patent.” See Popovich, “Patent Quality: An Analysis

of Proposed Court, Legislative and PTO-Administrative Reform-

Reexamination Resurrected”, 61 J. P.O. S. 248, 255 (1979). If a

patentee now seeks to exercise his right to trial by jury, he will find

that the courts are additionally “anti-jury” in patent cases. The

Seventh Circuit’s bias against juries in patent cases is exemplified by

its gratuitous quote in the en banc opinion from its earlier opinion

in Panther Pumps & Equipment Co. v. Hydrocraft, Inc., supra at

n. 9, that “members of the patent Bar have wisely avoided jury trials

in patent litigation.” Moreover, the court assumes, citing numerous

Seventh Circuit opinions, that the expertise of a trial judge on the

question of obviousness “presumably would be well above that

possessed by a lay jury.” (App. p. A7). We are at a loss to

understand why training and experience in the law imparts any

special expertise in physics, chemistry or engineering superior to that

possessed by non-lawyers. See, Marconi Wireless Co. vy. United

States, 320 U.S. 1, 60 (1943). Indeed, in most patent cases,

including this one, the jurors are better, or at least equally, qualified

than federal judges to understand the technology involved. See,

Markey, “Science and Law,” 59 J. P.O. S. 343, 353 (1977).

13

At the very least, this Court should introduce stability by

resolving the conflict between the circuits so that those of ordi-

nary skill in the arts will have some idea by what standard their

achievements will be judged. If, “He who seeks to build a better

mousetrap today has a long path to tread before reaching the

Patent Office’ (Graham at 19), he is at least entitled to pursue

a single path rather than a maze. As one experienced patent

lawyer and law professor has observed, “The public interest in

an even-handed administration of the patent law deserves a

consistent application of the Graham v. John Deere & Co.

methodology.” Schneider, “Non-Obviousness, The Supreme

Court, and the Prospects for Stability,” 60 J.P.O.S. 304

(1978).

We do not believe that the statement in Graham that “the

ultimate question of patent validity is one of law” was intended

by this Court as a license to lower federal courts to ignore jury

findings or the Seventh Amendment. Nor do we believe that it

was an invitation to circuit judges to substitute their instinctive

feeling of obviousness for that of a jury without at least examin-

ing the trial record and holding that the jury’s findings were

against the manifest weight of the evidence. We do suggest that

in jury cases it was intended to mean only that the jury must be

properly instructed on the law to be applied to the facts.

If jury verdicts in patent cases are to be treated differently

than verdicts in non-patent cases, then this Court must provide

guidance as to how this is to be accomplished consistent with

the Seventh Amendment. If jury trials in patent cases are to be

abolished, then that can be done only by a constitutional amend-

ment. If, on the other hand, patent cases are to be treated no

differently than other cases, this Court must make that unmis-

takably clear. In any event, the current intolerable situation

demands the attention of the Supreme Court and reversal of the

Seventh Circuit’s en banc decision.

14

CONCLUSION

For the foregoing reasons, it is respectfully submitted that the

requested writ should be granted.

Respectfully submitted,

CORNELIUS J. HARRINGTON, Jr.

Davip D. KAUFMAN

JOHN E, ANGLE

Attorneys for Petitioners

Of Counsel:

KIRKLAND & ELLIS

200 East Randolph Drive

Chicago, Illinois 60601

(312) 861-2000

Davip D. KAUFMAN

Room 1425

39 South LaSalle Street

Chicago, Illinois 60603

(312) 372-8113

APPENDIX

Al

APPENDIX A

In the

UNITED STATES COURT OF APPEALS

For the Seventh Circuit

No. 79-1136

DUAL MANUFACTURING & ENGINEERING, INC., and

THE BERKLINE CORPORATION,

Plaintiffs-A ppellees,

vs,

Burris INDUSTRIES, INC.,

Defendant-A ppellant.

LEGGETT & PLATT, INCORPORATED,

Plaintiff-Appellant,

Ay

DUAL MANUFACTURING & ENGINEERING, INC.,

Defendant-Appellee.

Appeal from the United States District Court for the Northern

District of Illinois, Eastern Division. Nos. 73 C 2667,

76 C 1828—J. Sam Perry, Judge.

REHEARD EN BANC DECEMBER 3, 1979—

DECIDED APRIL 22, 1980

Before FAIRCHILD, Chief Judge, SwYGERT, CUMMINGS, PELL,

SPRECHER, TONE, BAUER, Woop, and CUDAHY, Circuit Judges.

PELL, Circuit Judge. These are consolidated appeals from

two judgments entered in consolidated patent infringement cases

tried to a jury. The jury found both patents in suit to be valid

and infringed. The patents related to chairs which could be

A2

reclined without striking a nearby wall. The judgment of the

district court was affirmed by a divided panel of this court on

July 20, 1979, on the basis that the jury’s verdict was not against

the manifest weight of the evidence. The dissenting opinion

took the position that obviousness was a question of law, that

the evidence demonstrated the patents were obvious under the

prior art, that the patents should have been found invalid by

the district court, and that the judgment contrary thereto should

have been reversed by this court. Dual Manufacturing & Engi-

neering, Inc. v. Burris Industries, Inc., 202 USPQ 708 (7th

Cir. 1979).

By way of more specific background, we note the following.

The original suit was brought by the Berkline Corporation and

its subsidiary Dual Manufacturing & Engineering, Inc. (collec-

tively, the appellees) alleging that the Wall Hugger chair manu-

factured by Burris Industries, Inc. (Burris) infringed two Re

patents: Reissue Patent No. 28,210 and Reissue Patent No.

29,483.! Thereafter the predecessor in interest of Leggett &

Platt, Inc. (together with Burris, collectively referred to as the

appellants), which manufactures parts used in the Wall Hugger

chair, brought an action seeking a declaratory judgment that

the patents owned by Berkline were invalid. The second case,

originally commenced in the district court for the District of

Massachusetts, was transferred to the Northern District of

Illinois, after Dual had counterclaimed, charging infringement

of both patents. The two cases thus involved the same issues

with the parties reversed.

According to Berkline, Frank Re, the inventor, discerned in

1969 the problem of developing a chair that would “recline

1. The original complaint specified Patent No. 3,758,151, which

was later reissued as Reissue No. 28,210, the complaint being

amended to reflect that change. A supplemental complaint included a

charge of infringement of Patent No. 3,874,724. When that patent

was reissued as Reissue No. 29,483, a third and final complaint

was filed.

A3

and wall” and after testing a great many models the “Wallaway”

chair was developed. The essential design principle embodied

in this chair was that the seat was placed on a rolling base with

a linkage attaching the backrest to the base. Then as the chair

occupant leaned back the seat would roll forward on the base

and the back would be pulled into a reclining position by the

linkage without the back touching a nearby wall. The Burris

Wall Hugger chair is also designed to recline even though placed

close to a wall.

Although we will leave the matter for a more thorough

discussion later herein, initially we note that at least at the

time of the en banc rehearing there was no serious dispute that

determination of the question of obviousness under patent law

is a question of law. Pederson v. Stewart-Warner Corp., 536

F. 2d 1179, 1180 (7th Cir. 1976), cert. denied, 429 U.S. 985,

and cases cited therein. The appellees, however, on the en

banc rehearing have taken the position that even though it be

acknowledged that obviousness is a question of law, this does not

compel the conclusion that a reviewing court is free to sub-

stitute its determination on obviousness for that of the jury,

“when, as here, appellants agreed to submit the question of ob-

viousness to the jury with instructions from the trial judge

that appellants could concede were proper.” The appellees point

out that as a matter of fact the instruction on obviousness was

drafted and submitted by the appellants and given as tendered

with some slight modification.

Because the jury was instructed on the elements bearing on

the issue of obviousness and because some attention was directed

to that matter during oral argument on the en banc rehearing,

we turn first to whether or not the appellants are now precluded

from contending as a matter of law that the inventions encom-

passed in the patents in issue were invalid because of obvious-

ness.

We do not understand the appellees to be arguing that the

appellants are bound by a waiver in the strict legal sense of

A4

that term, although they nevertheless find support for their

position in the fact that the appellants did not object to sub-

mitting the issue of obviousness to the jury. The appellants,

on the other hand, admit that the jury was instructed on the

issue of obviousness and no objection was lodged against the

instruction as required by Rule 51, Fed. R. Civ. P. They do

say, however, that because the district court had declined to

take the case from the jury they had no choice except to see

that the jury was properly instructed on the elements of obvious-

ness, and that they had no objection to the form of the instruction

insofar as it related to those elements. They also say, as they

must, that they are not seeking reversal on the ground of

erroneous instructions.

As the factual background for consideration of this initial

issue the record demonstrates the following. At the conclusion

of the appellants’ evidence, the appellees moved for a directed

verdict. The oral motion which was briefly argued to the trial

court and was quickly denied, raised a number of issues not

involved in the present appeal. It also raised the question of the

validity of the patent for noncompliance, inter alia, with the pro-

visions of 35 U.S.C. § 103, the statutory basis for nonob-

viousness precluding a patent.? Because at the time the initial

motion for directed verdict was presented the appellants had

not yet presented any evidence and had only had the opportunity

to cross-examine the appellees’ witnesses, we may safely assume

without reading the some thirteen volumes of transcript de-

veloped to that point, that it would have been inappropriate to

2. 35 U.S.C. § 103 reads as follows:

A patent may not be obtained though the invention 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 art 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 pertains. Patentability shall not be nega-

tived by the manner in which the invention was made.

—

AS

have directed a verdict. At the conclusion of all the evidence,

the appellants again moved for a directed verdict, arguing “that

the only reasonable conclusion that can be drawn from the

evidence in this case is that at the time that Re made his chair,

it would have been obvious to someone skilled in the art.” Their

argument, although not extended, pointed out reference to a

much older Hendrickson chair and that the patents in issue

were merely a conbination of old elements and that they were

“a pure cut-and-paste job.” Specifically they pointed out to the

court that the recliner chair was old and when this was put

with the old slide and link the previous functions were merely

combined. Again the court promptly overruled the motion for a

directed verdict.

Thereafter the appellants in due course filed their motion

for a judgment notwithstanding the verdict. In their brief sup-

porting this motion the movants specifically directed the atten-

tion of the trial court to Pederson and other cases to the effect

that obviousness is a question of law and that judgment n.o.v.

was proper in a jury-tried case where the patent in suit was

directed to an obvious combination of old elements. The briéf

then extensively set forth an analysis of the evidence with particu-

lar regard to that which was shown by the prior art.* This

motion was also denied.

3. In their brief supporting the motion for judgment notwith-

standing the verdict in the district court, the appellants also con-

tended that there was no synergistic effect producing a result greater

than the sum of the parts, and that under Seventh Circuit authority

and two Supreme Court cases believed to be supportive (Anderson’s-

Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)

and Sakraida v. Ag Pro, Inc., 425 U.S. 282 (1976)) the lack of

the synergistic effect precluded patentability. Subsequent to the judg-

ment in the present case, this court in Republic Industries, Inc. v.

Schlage Lock Co., 592 F. 2d 963 (7th Cir. 1979) made it clear that

synergism is not the sine qua non of patentability but rather that the

analysis of Graham v. John Deere Co., 383 U.S. 1 (1966) will be

the exclusive means by which to measure nonobviousness under 35

(Footnote continued on next page.)

A6

Under the circumstances just set forth we hold that the ques-

tion of obviousness is preserved for review by this court. This

issue was presented in Coca Cola Bottling Co, of Black Hills v.

Hubbard, 203 F.2d 859 (8th Cir. 1953). In that case the

plaintiff asserted that because no exceptions were taken to the

instructions of the trial court, those instructions became the law

of the case for determining the sufficiency of the evidence to

support the verdict in judgment. The court rejected this con-

tention, expressly overruling earlier cases to the contrary, and

stated the following:

It is true, of course, that an appellant may not challenge

on review the correctness of instructions to which he took

no exceptions or only a general exception. Rule 51 of the

Federal Rules of Civil Procedure, 28 U.S.C. A.; Palmer

v. Hoffman, 318 U.S. 109, 119, 63 S. Ct. 477, 87 L. Ed.

645 and cases cited; Palmer v. Miller, 8 Cir., 145 F. 2d

926, 930. In that sense, and in that sense only, it may be

said that the instructions to which no exceptions are taken

become the law of the case for determining whether the in-

structions are subject to review on appeal. See Union

Pacific Railroad Co. v. Denver-Chicago Trucking Co.,

Inc., 8 Cir., 202 F.2d 31, 37-38. But in determining

whether a trial court has erred in denying a motion for a

directed verdict made at the close of the evidence, it is the

applicable law which is controlling, and not what the

trial court announces the law to be in his instructions.

This Court must ascertain for itself what the applicable

law is, whether the instructions were excepted to or not.

A proper motion for a directed verdict and its denial will

always preserve for review the question whether under the

law truly applicable to the case there was an adequate evi-

dentiary basis for the submission of the case to the jury.

(Footnote continued from preceding page.)

U.S.C. § 103. This court stated that the concept of synergism was

employed only as a figure of speech to express the truism that “when

all the parts of a claimed invention are known, the combination (and

the act of combining) is likely to be more obvious to one reasonably

skilled in the art.” 592 F.2d at 972.

A7

203 F. 2d at 862. See also Johnson v. United States, 434 F. 2d

340, 343 (8th Cir. 1970) (citing Coca Cola with approval);

Gorsalitz vy. Olin Mathieson Chemical Corporation, 429 F. 2d

1033, 1040 (Sth Cir. 1970), cert. denied, 407 U.S. 921

(1972) (holding that the question was preserved for review by

the motion for a directed verdict).

In 9 Wright & Miller, Federal Practice and Procedure: Civil

{| 2558 at 670-71 (1971), the controlling law in the discussion

of appellate review is succinctly put as follows:

Many decisions say that an instruction not objected to

becomes the law of the case. This may be merely one way

of phrasing the general principle that failure to object

ordinarily bars later challenge to an instruction. It appears

to have no meaning beyond that.

[Footnotes omitted. |

Returning to the proposition of law originally adverted to

in this opinion that obviousness is a question of law, we see

little reason for extending the discussion too much beyond the

clear statement in Pederson, supra, other than to observe as ap-

plicable to the present issue, that this court has never felt it was

bound by a determination of nonobviousness at the trial court

level resulting in validity even where that finding that been made

by a district court judge, whose expertise in the subject pre-

sumably would be well above that possessed by a lay jury. See,

e.g., Skil Corporation v. Lucerne Products, Inc., 503 F. 2d 745

(7th Cir, 1974), cert. denied, 420 U.S. 974 (1975); Panduit

Corporation Vv. Burndy Corporation, 517 F.2d 535 (7th Cir.

1975), cert. denied, 423 U.S. 987; Gettelman Mfg. Inc. v.

Lawn ‘N’ Sport Power Mower Sales & Service, Inc., 517 F. 2d

1194 (7th Cir. 1975); and Burland v. Trippe Mfg. Co., 543

F. 2d 588 (7th Cir. 1976).

The appellees on rehearing en banc relied extensively albeit

selectively, on Panther Pumps & Equipment Co. v. Hydrocraft,

Inc., 468 F. 2d 225 (7th Cir. 1972), a case in which the issue

A8

of obviousness had been submitted to a jury which had returned

a verdict that the patents were valid. The appellees assert that this

court affirmed the jury verdict and made no effort whatsoever

independently to examine or determine obviousness. We regard

the reliance on Panther Pumps as misplaced. Panther Pumps

itself makes it clear that the law of this circuit, following Armour

& Co, v. Wilson & Co., 274 F.2d 143, 151-157 (7th Cir.

1960), is that the issue of obviousness is a question of law. /d.

at 227. This was not disputed in Panther Pumps. The holding

in that case insofar as it is germane to the present case is that if

the resolution of the issue of obviousnéss, although a question

of law, turns upon disputed factual questions, then a general

verdict of validity will be taken as a4 decision that the disputed

factual questions had been resolved favorably to the party in

whose favor the verdict was returned. See Pederson, supra, 536

F. 2d at 1180. Indeed Panther Pumps itself states that if there are

no disputed fact issues affecting validity, the court may simply

instruct the jury that the patent is either valid or invalid.

Panther Pumps, supra, 468 F. 2d at 228 n. 8. In Panther Pumps

the defendants did not argue that it was error to submit either

the entire case or any specific issue to the jury nor did they

contend that the jury was permitted improperly to decide ques-

tions of law. Rather, the thrust of the contention in that case

was that the trial court erred as a matter of law or at least

abused its discretion by refusing to submit thirty-two special

interrogatories to the jury. Under these circumstances this court

found no error in the procedure followed by the trial judge in

submitting the case to the jury. Inasmuch as the trial judge was

not required as a matter of law to submit special interrogatories,

the court held he did not abuse his discretion in refusing to do so.

The present appellees attempt to buttress their position with

regard to Panther Pumps by stating that one of the grounds

listed in the petition for a writ of certiorari in the Supreme

Court was whether a court of appeals can decline judicially to

review a legal conclusion on patent validity when the conclusion

A9

was made by a jury rather than by a trial judge. Aside from

well-established law that the denial of a petition for certiorari

is no indication of the position of the Supreme Court on any

issue presented in the petition, this particular reason listed in

the petition was not an issue in the Panther Pumps case in this

court. There is no indication in the opinion of this court that

any effort was made on the part of the defendant to show that

there were no disputed subsidiary fact questions. As this court

said: “In such event, as in other cases tried by a jury, the

reviewing court will presume that the disputed matters of fact

have been resolved favorably to the prevailing party in accord-

ance with the trial judge’s instructions.” /d., 468 F.2d at 228.

The matter of lack of disputed questions of fact in the present

case will be discussed subsequently.

On the present issue, the appellees also rely upon a recent

case in the Fifth Circuit, Control Components, Inc. v. Valtek,

Inc., 609 F.2d 763 (Sth Cir. 1980). This case does not

contradict or disagree with the position taken in Panther Pumps.

The Fifth Circuit made it clear that a preliminary factual de-

termination is to be made on the scope and content of the prior

art and on the difference between the prior art and the claims

at issue, but that when these factual determinations are made

the trial judge determines as a matter of law whether the im-

provement would have been obvious at the time of the in-

vention to a person having ordinary skill in the art. The court

also observed that the legal conclusion is fully reviewable by

the appellate court. The difficulty in Control Components as in

Panther Pumps was that there were disputed subsidiary facts

and a general verdict. Under these circumstances the court pre-

sumed that the disputed matters of facts had been resolved

favorably to the prevailing party, citing Panther Pumps. As the

concurring opinion of Judge Rubin pointed out, id. at 775, be-

cause the trial judge in addressing the motion for a judgment

notwithstanding the verdict necessarily considered and rejected

the contention that the invention was obvious as a matter of

Al10

law, and because the majority opinion demonstrated there was

adequate evidence in the record to support the conclusion of

obviousness, he joined the majority in holding that the patent

was valid.

Under these authorities it is clear that if subsidiary facts are

determined after a dispute with regard thereto, the court must

then decide the issue of nonobviousness. Before analyzing the

record in the present case on the matter of whether there were

any of the preliminary or subsidiary facts in dispute we must

first consider some other preliminary matters reflecting upon

the ultimate decision.

These preliminary matters are outlined in Republic Industries,

Inc. v. Schlage Lock Co., 592 F.2d 963, 972-73 (7th Cir.

1979), and we adopt here what this court said there:

We begin this analysis by noting that a patent is presumed

valid. 35 U.S.C. § 282. That presumption, however, is

not conclusive, St. Regis Paper Co. v. Bemis Co., 549 F.

2d 833, 838 (7th Cir.), cert. denied, 434 U.S. 833, 98

S. Ct. 119, 54 L. Ed. 2d 94 (1977); it merely shifts the

burden of proof to the party attacking the validity of the

patent. Maxon Premix Burner Co, v. Eclipse Fuel En-

gineering Co., 471 F.2d 308, 312 (7th Cir. 1972), cert.

denied, 410 U.S. 929, 93 S. Ct. 1365, 35 L. Ed. 2d 591

(1973). Furthermore, that presumption does not exist

against evidence of prior art not before the Patent Office.

The Allen Group v. Nu-Star, Inc., 575 F.2d 146 (7th

Cir. 1978) (per curiam); Ropat Corp. v. McGraw Edison

Co., 535 F. 2d 378, 383 (7th Cir. 1976). “Even one prior

art reference not considered by the Patent Office can suffice

to overthrow the presumption.” Henry Manufacturing Co.

v. Commercial Filters Corp., 489 F.2d 1008, 1013 (7th

Cir. 1972).

In applying this applicable law to the present situation, we

note the appellants state that in considering the Re patents

the Patent Office did not consider several pertinent items of

prior art patents and publications, including Stark Patent No.

All

370,095, Karpin Patent No. 632,053, Englander Patent No.

1,061,533, and Vorher German Patent No. 831,009. Accord-

ing to the appellants each of these patents was directed to a

movable piece of close-to-the-wall household furniture, and show

that it was old to use the combination of a propeller link, fixed

base, and sliding chassis to construct an article of furniture

which could be placed to a wall and reclined without having the

back hit the wall. The appellees answer this contention by

stating that although these other patents were not listed on

the face of the patents in suit there was no basis for the asser-

tion that this body of art was not considered by the examiner.

It is further asserted that the examiner did conduct exhaustive

searches and that it is just as likely as not that he did review

these patents and concluded that they were not particularly rele-

vant. It appears to us that the other patents do have some rele-

vance and under that circumstance we can give very little weight

to the presumption of validity in this case.

Having reached this point we see little purpose in launching

into an extended technical dissertation on the prior art. We

regard it as sufficient that the record reflects prior art falling into

two distinct categories. The first category includes prior art

showing the basic reclining chair without a propelling mechan-

ism. The second category of prior art shows the propelling

mechanism for shifting a chair back away from the wall. Indeed,

in the original brief in this court the appellees conceded the

situation with regard to the prior art when they said:

Defendants stress the fact that the components of the Re

chair are old and perform no new function. Plaintiffs freely

admit that the individual components are old and that each

functions, in isolation, as it always has.

We hasten to add that we in no way mean to suggest that

there cannot be an invention qualifying for patent status in a

combination of old elements. To say this would have eliminated

many valid patents in the past and certainly many more in the

future. What we have here, however, is not a combination of

Al2

various old elements such as screws, nuts, bolts, levers, cog

wheels and so forth, but very simply, the direct combination of

two well known mechanical procedures, both of which were

in the prior art. Even before Graham v. John Deere Co., 383

U.S. 1 (1966), the Supreme Court in Great A & P Tea Co. Vv.

Supermarket Equipment Corp., 340 U.S. 147, 152-53 (1950)

laid down the dispositive test for the situation involved in the

present litigation:

Courts should scrutinize combination patent claims with

a care proportioned to the difficulty and improbability of

finding invention in an assembly of old elements. The func-

tion of a patent is to add to the sum of useful knowledge.

Patents cannot be sustained when, on the contrary, their

effect is to subtract from former resources freely available

to skilled artisans. A patent for a combination which only

unites old elements with no change in their respective

functions, such as is presented here, obviously withdraws

what already is known into the field of its monopoly and

diminishes the resources available to skillful men. This

patentee has added nothing to the total stock of knowledge,

but has merely brought together segments of prior art and

claims them in congregation as a monopoly.

That this analysis is still valid law is indicated by the later

case of Sakraida v. Ag Pro, Inc., supra, 425 U.S. at 282, which

cites Great A & P in connection with a determination of in-

validity of a patent which, according to the Court, “simply ar-

ranges old elements with each performing the same ‘unction it

had been known to perform, although perhaps producing a more

striking result than in previous combinations.” The Court ob-

served that “[sJuch combinations are not patentable under

standards appropriate for a combination patent.”

The preliminary or subsidiary questions of fact as originally

outlined in Graham v. John Deere Co., 383 U.S. 1, 17 (1966),

are:

Under § 103, the scope and content of the prior art are

to be determined; differences between the prior art and

Al3

the claims at issue are to be ascertained; and the level

of ordinary skill in the pertinent art resolved.

We have noted that the subsidiary fact of the scope and con-

tent of the prior art does not present a factual dispute in this

case, nor has it been established that there is any particular

disputed factual determination with regard to the differences

between the prior art and the claims at issue. The only remain-

ing factor is the level of ordinary skill and the pertinent art.

If we accept arguendo the contention of the appellees that the

level of ordinary skill in the art of reclining chair design con-

sists of people who have no formal engineering education, who

have been either carpenters, mechanics, or tool-and-die maker

type people who, by experience in the business, have built up

their knowledge, the prior art in the present case shows that

the combination achieved here is nothing more than “the work

of the skilful mechanic, not that of the inventor.”' Sakraida,

supra, 425 U.S. at 282 (quoting Hotchkiss v. Greenwood, 11

How., at 267).

The appellees also contend on appeal that the Re invention

enjoyed great commercial success and that the Wallaway type

of chair had been widely accepted in the furniture industry.

As a matter of no surprise, the appellants argue vigorously that

there was no commercial success shown to be attributable to

any patent features of the Re chair, and that there was not in

fact any such long felt want. Irrespective of the correctness of

the two positions the secondary considerations are of no avail

4. We also note that the appellees called an expert witness who

testified that the design of the Wallaway chair was not obvious. At

this point, however, we cannot treat the witness as testifying as an

expert witness on a disputed factual matter for he was giving an

opinion on the ultimate legal question for decision, that of obvious-

ness. As this court said in Pederson, supra, 536 F. 2d at 1180:

Because obviousness is a question of law, opinions of experts

on that question are not among the facts presumptively decided

in the winning party’s favor. .. .

Al4

to the appellees in the present case. The words of the Supreme

Court in Anderson’s Black-Rock, supra, 396 U.S. at 61, are

appropriate:

It is, however, fervently argued that the combination filled

a long felt want and has enjoyed commercial success. But

those matters “without invention will not make patentabil-

ity.”

(Citing Great A & P Tea Co., 340 U.S. at 153). See also

Republic Industries, Inc., supra, 592 F. 2d at 975-76.

In sum, this record presents a case in which there is only

left for the reviewing court the matter of determining as a ques-

tion of law whether the patents were obvious under prior art.

We hold that they were and therefore were invalid.

In considering this case we feel compelled to remark that

it is an excellent illustration of the wisdom of this court’s ob-

servation that “members of the Patent Bar have wisely avoided

jury trials in patent litigation.”® A persuasive clue as to the jury’s

misunderstanding of what was involved in this case is provided

by the fact that the jury found infringement by a chair which

everyone agrees did not infringe. We do, because of the trouble-

some questions which seem to arise frequently where a complex

patent case is submitted to a jury of lay people, think, under

our supervisory power, that it is appropriate to make the fol-

lowing observations on the use of special verdicts in patent cases

when the issue is obviousness.

Because only issues of fact subsidiary to the legal question

of obviousness are within the province of the jury, its resolu-

tion of those issues of fact should ordinarily be articulated in

special verdicts under Rule 49(a), Fed. R. Civ. P.° The same

5. Panther Pumps & Equipment Co. v. Hydrocraft, Inc., 468

F, 2d 225, 228 n.9 (7th Cir. 1972), cert. denied, 411 U.S. 965

(1973).

6. Special verdict forms were submitted and answered in the

present case but they amounted to little more than a general verdict

; (Footnote continued on next page.)

Al5

result may be achieved by special interrogatories returned with

a general verdict under Rule 49(b), a device primarily designed

to test the jury’s application of the law in reaching a general

verdict, see 5A J. Moore, Federal Practice 4 49.04 (2d ed.

1979). When the issue is obviousness, a general verdict, with

or without answers to special interrogatories, will ordinarily

serve no purpose, because the court will still have the responsi-

bility of deciding obviousness.’ A general verdict, without more,

will of course give rise to the presumption that material fact

issues have been resolved in favor of the prevailing party; but

specific findings are more likely to be useful than presumptions

to a court exercising its obligation to decide the ultimate issue

of obviousness.

It must be recognized, of course, that at best special verdicts

will help some; they will not make trial by jury an effective

way of resolving the issue of obviousness. Their limitations

are suggested by the provision of Rule 41(a) that in taking

special verdicts “the court may submit written questions sus-

ceptible of categorical or other brief answer or may submit

written forms of the several special findings which might properly

be made under the pleadings and the evidence.” It is true that

the rule goes on to say that, alternatively, the court “may use such

other methods of submitting the issues and requiring the written

findings thereon as it deems most appropriate.” It is apparent,

(Footnote continued from preceding page.)

as they only were directed to whether the patents were valid and, if

so, whether they were infringed. The validity issue, of course,

included the matter of obviousness, a question of law. Special ver-

dicts should be concerned only with questions of fact.

7. Compare 5A J. Moore, Federal Practice § 49.05, discussing

the virtues of special verdicts and interrogatories as compared with

general verdicts, and disagreeing with the views of Judge Jerome

Frank expressed in Skidmore v. Baltimore & Ohio Railroad, 167

F, 2d 54 (2d Cir. 1948). Judge Frank favored making either special

verdicts or written interrogatories compulsory in civil cases. Professor

Moore disagrees.

Al6

however, that the draftsmen recognized the lack of flexibility

that is inevitable when the fact finder responsible for resolving

complex and detailed fact issues cannot be expected to compose

detailed findings. Nevertheless, the special verdict device may

allow the jury, if one is utilized, to serve a useful function in re-

solving specific contested issues as to the concrete facts, and it

should be used.

For the reasons hereinbefore set out, the judgment of the

district court is Reversed. Costs shall be awarded to the appel-

lants.

SPRECHER, Circuit Judge, dissenting.

I dissent on the basis set forth in the panel’s original decision

in Dual Manufacturing & Engineering Industries, Inc., 202

USPQ 708 (7th Cir. 1979).

I would affirm the judgment of the district court.

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit

Al17

APPENDIX B

In the

UNITED STATES COURT OF APPEALS

For the Seventh Circuit

No, 79-1136

DUAL MANUFACTURING & ENGINEERING, INC., and THE

BERKLINE CORPORATION,

Plaintiffs-A ppellees,

VS.

Burris INDUSTRIES, INC.,

Defendant-A ppellant.

LeEGGETT & PLATT, INCORPORATED,

Plaintiff-A ppellant,

vs.

DUAL MANUFACTURING & ENGINEERING, INC.,

Defendant-A ppellee.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

Nos. 73 C 2667 & 76 C 1828—JosEPH SAM PERRY, Judge.

ARGUED JUNE 5, 1979—DecipEp JuLy 20, 1979

Before PELL and SPRECHER, Circuit Judges, and CAMPBELL,

Senior District Judge.*

* Senior District Judge William J. Campbell of the Northern

District of Illinois is sitting by designation.

Al8

SPRECHER, Circuit Judge. The issue raised by this case is

whether to uphold a jury verdict finding that Berkline Corpora-

tion’s patent was valid and that Burris Industries had infringed

it. Since we do not find this verdict to be against the manifest

weight of the evidence, we affirm the verdict.

I

Berkline’s “better mousetrap” is a reclining chair that can

be placed several inches from the wall and yet still recline

without striking the wall. Although the invention of such a

chair admittedly contributed little to the advancement of modern

technology, Berkline extols its virtues in jointly indulging the

consumer’s desire to place all his furniture against the wall as

well as his desire to avoid the exertion of pulling the recliner

from the wall in order to reach the “television” position or the

“fully-reclined” position.

According to Berkline, Frank Re, the inventor of this chair,

discerned in 1969 the problem of developing a chair that would

“recline and wall” and after 3 years of work, involving “dozens

and perhaps hundreds” of models, the “Wallaway” chair was

developed. The essential design principle embodied in this

chair is that the seat is placed on a rolling base and a linkage

attaches the backrest to the base. Thus, as the chair occupant

leans back, the seat rolls forward on the base and the back is

pulled into a reclining position by the linkage. These patents

are not owned by the Berkline Corporation, a furniture manu-

facturer.

Burris Industries also manufactures a chair designed to recline

even though placed close to a wall. This chair is marketed under

the brand name “Wall Hugger.” Although we will discuss later

the significance of any differences between the chairs, both the

Wallaway and Wall Hugger chairs have several similarities in

design. The Wall Hugger, like the Wallaway, is mounted on a

rolling base and utilizes a fixed linkage to propel the chair

Al19

along the base as the back of the chair reclines. The principle

embodied in the Vallaway chair is set out by Figure 1. The Wall

Hugger chair is illustrated by Figure 2. The parts of these chairs

marked with numbers 234 and 60, respectively, show the means

whereby the backrest is linked to the rolling base.

Figure 1

A20

Figure 2

The similarity of these chairs gave rise to the two actions

under review here. The first suit was brought by Berkline and

its subsidiary Dual against Burris alleging that the Wall Hugger

chair infringed two Re patents: Reissue Patent No. 28,210 and

Reissue Patent No. 29,-483.' Thereafter the predecessor in in-

terest of Leggett & Platt, which manufactures parts used in the

Wall Hugger chair, brought an action seeking a declaratory

judgment that the patents owned by Berkline were invalid. Since

these two cases involved the same issues, albeit with parties

reversed, they were consolidated for trial.

1. The original complaint specified Patent No. 3,758,151, which

was later reissued as Reissue No. 28,210, the complaint being

amended to reflect that change. A supplemental complaint included

a charge of infringement of Patent No. 3,874,724. When that patent

was reissued as Reissue No. 29,483, a third and final complaint

was filed.

A21

II

At trial, and in the briefs before this court, Burris and Leg-

gett & Platt argued that the Re patent was invalid. The validity

argument was that the Wallaway chair was merely an obvious

combination of prior well-known concepts: the principle used to

effect close-to-the-wall operation in railway compartment seats

and convertible sofa beds was merely incorporated into the

standard design for a reclining chair with an “automatic” fowt-

rest. Both the railway compartment seats and the sofa bed

patents relied on by Burris utilized a rolling base and a fixed

linkage. Dual and Berkline attempted to rebut these arguments

by finding differences in prior art. The sofa beds, they argued,

required the occupant to get out of the furniture in order to pull

it into a reclining position, and the railway car device used a

release latch to prevent the chair from rolling into the reclined

position when the occupant sat down in it. Both of these distinc-

tions were argued to be sufficient to distinguish the prior art from

the Re patent, in which the reclining actioa is effected by the

occupant by pushing on the chair arms while seated in the

chair.

The invalidity argument forwarded by Burris is unconvincing.

Burris, in effect, is asking this court to reconsider the validity

issue and find that, as a matter of law, the patent was obvious,

citing our statement in Penderson v. Stewart-Warner Corp.,

536 F.2d 1179, 1180 (7th Cir. 1976), that “[o]bviousness is

a question of law.” Even if obviousness is ultimately a legal

question, it is nonetheless a question which ineluctably requires

the determination of several underlying factual issues. In Sakraida

Vv. Ag Pro, Inc., 425 U.S. 273 (1976) the Supreme court said

that although “[t]he ultimate test of patent validity is one of

law... , resolution of the obviousness issue necessarily entails

several basic factual inquiries. . . .” Jd, at 280. Thus, the Supreme

Court applied the standard of review appropriate for factual

findings to the district court’s finding that a patent was invalid

A22

as an obvious combination of prior art and, as a result, held

that the Court of Appeals “erroneously set aside the district

courts findings.” We are similarly bound to respect the factual

basis of the jury’s special verdict that the patents involved here

are valid and not void for obviousness.

Since Burris misperceived the appropriate standard, it did

not provide any factual basis for the argument that the jury’s

verdict was without a reasonable basis or against the manifest

weight of the evidence. Cf. Hickory Springs Manufacturing Co.

v. Fredman Brothers Furniture Co., 509 F.2d 55 (7th Cir.

1975); Reese v. Elkhart Welding & Boiler Works, Inc., 447

F, 2d 517 (7th Cir. 1971); Kennatrack Corp. V. Stanley Works,

314 F.2d 164 (7th Cir. 1963). We have, however, examined

the record and found a reasonable basis for the jury’s special

verdict that the patent is valid. Dual called an expert witness

who testified that the design of the Wallaway chair was not

obvious. Further, even though Burris called an expert who testi-

fied that the design was derivable from prior patents and a

design treatise, we do not find that this deprives the verdict of a

reasonable basis. The standard set out by Graham v. John Deere

Co., 383 U.S. 1, 17 (1966) requires that obviousness be judged

with reference to “the level of ordinary skill in the pertinent art

resolved.” The jury could have believed Dual’s expert’s testimony

that the level of skill among reclining chair designers was rather

low and that such designers could not have made the sophisticated

deductions made by the Burris expert.’ In any event, even

when we view the record in the light most favorable to Burris,

2. Dual’s expert described the level of ordinary skill in the art

of reclining chair design as encompassing only those people “who

have no formal engineering education and [who] . . . have either

been carpenters, mechanics, or tool and die maker type people, who

by experience in the business have built up their knowledge.” This

description is certainly congruent with the level of skill possessed by

the inventors involved in this case: none of them had any college

training, some had no more than a grammar school education, and

one could not even read.

A23

we are confronted merely by a conflict in testimony on the

factual question of obviousness. Such a credibility determination

is within the province of the jury even in a complex patent case.

U.S. Phillips Corp. v. Ferro Corp., 522 F.2d 1100, 1101-02

(6th Cir. 1975).

Ill

Burris’s second argument is that even if the Re patents were

valid there was no proof that the Wall Hugger chair infringed

the Re patents under which Dual and Berkline are suing. Al-

though Burris’s presentation of this argument in its brief before

this court is, at best, inartfully and confusingly presented, we

believe the essence of this argument to be as follows. The linkage

in the Re patent is connected to the chair base from behind the

backrest of the chair, whereas the linkage in the Burris chair is

attached to the base in front of the backrest of the chair. Al-

ieyedivy Dual and Berkline did not present any evidence show-

ing that this forward linkage was sufficiently equivalent to the

backward linkage to bring it within the terms of the Re patent.*

3. There is little question but that the Wall Hugger forward

linkage comes within the broad perimeters of the “means” clause

in the Re patents:

means operatively connecting the body-supporting unit and base

for moving the chassis forwardly and progressively away from

the wall and the body-supporting unit relative to the wall as

transition is made from upright sitting position toward a position

of reclination and for moving the chassis rearwardly and pro-

gressively toward the wall and the body-supporting unit relative

to the wall as transition is made from a position of reclination

toward upright sitting position.

Nevertheless, in the case of such a broad patent formulation, the

converse application of the doctrine of equivalents is appropriate:

“where a devic. . . . performs the same or similar function in a

substantially different way, but nevertheless falls within the literal

words of the claim, the doctrine of equivalents may be used... .”

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605,

(Footnote continued on next page.)

A24

Once again we must note that the question of infringement

is a question of fact and that we are bound to respect a jury

determination of infringement if it is founded on a reasonable

basis in the evidence. Hickory Springs Manufacturing Co. V.

Fredman Brothers Furniture Co., 509 F.2d 55, 58 (7th Cir.

1975). See generally Graver Tank & Manufacturing Co. V.

Linde Air Products Co., 339 U.S. 605, 610-11 (1950). Dual’s

expert witness explicitly testified that he believed that all “the

defendants’ chairs infringe this [the Re] claim.”* Furthermore,

he continued by engaging in several demonstrations indicating

the functional similarity among the various chairs produced

by the parties. Finally, he expressed his opinion that the dif-

ferent paths traced by the backrest of the chairs as they re-

clined—the factor principally stressed by Burris’s expert in his

argument that the Burris chair did not infringe the Berkline

chairs—was not a significant functional difference. We cannot

say that the jury was not entitled to rely on this testimony to

support its conclusion that the means used by the Burris chairs

was substantially similar to those used in the Berkline chairs

based on the Re patent.

(Footnote continued from preceding page.)

608-09 (1950). Thus, the appropriate inquiry here was one of

equivalence—that is, whether “the two devices do the same work in

substantially the same way, and accomplish substantially the same

result... .” Id. at 608. The jury was correctly apprised of this

standard by the trial court’s instruction:

To prove infringement the plaintiff must prove each and every

of the following conditions:

The chair mechanisms must accomplish the same result in

substantial!y the same way by substantially the same means

as the propeller link or stationary cam slot disclosed in

the patent in this suit.

4. Tr. at 2549. Burris claims that the expert testimony as to

infringement did not encompass all the accused chairs. This record

citation, however, reveals that a general claim of infringement was

supported in the record.

A25

Burris, however, urges that the jury’s verdict of infringement

should be set aside because the jury failed to follow the court’s

instructions. This argument depends on the difference between

“two-way” and “three-way” reclining chairs, In a “three-way”

chair the backrest and the seat are attached together by a move-

able joint which allows the angle between the backrest and the

seat to vary. In a “two-way” chair, the seat and backrest are

directly attached and accordingly no such variation is possible.

Burris points out that although one of the Re patents only

covers “three-way” chairs, the jury delivered a special verdict

that one of Burris’s “two-way” chairs infringed that patent. All

parties concede that no such infringement is possible, and ac-

cordingly the district court did not enter judgment on the er-

roneous special verdict. We do not believe that the jury’s

delivery of one verdict inconsistent with the record requires us

to set aside the remainder of the verdicts. Such an improper

verdict is appropriately addressed by granting judgment not-

withstanding the erroneous special verdict. See Fox v. Kane

Miller Corp., 398 F.Supp. 609 (D. Md. 1975). This is par-

ticularly the case where the potentiality of error should have

been apparent to Burris at the time it allowed the special ver-

dict—to which there could only have been one answer—to go

to the jury without bringing that fact to the court’s attention.

AFFIRMED.

PELL, Circuit Judge, dissenting.

This case is an excellent illustration of the wisdom of this

court’s observation that “members of the Patent Bar have wisely

avoided jury trials in patent litigation.”' A persuasive clue as

to the jury’s misunderstanding of what was involved in this case

is provided by the fact that it found infringement by a chair

1. Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc.,

468 F. 2d 225, 228 n.9 (7th Cir. 1972), cert. denied, 411 U.S.

965 (1973).

A26

which everyone agrees did not infringe. Perhaps the statement

of this court quoted above should be modified to include an

exception for those members of the Patent Bar who recognize

a weakness in their position on the issue of obviousness and

who might be aided by possible confusion on the part of a jury.

However that may be, I think the majority opinion has

reached an incorrect result, inconsistent with prior authority.

I therefore respectfully dissent.

This circuit has consistently taken the position that obvious-

ness is a question of law. Pederson v. Stewart-Warner Corp.,

536 F.2d 1179, 1180 (7th Cir. 1976), cert. denied, 429

U. S. 985, and cases cited therein. My research has failed to

indicate any authority holding otherwise. Of course, as in most

any situation in which the ultimate test is one of law, factual

matters have to be established first for there to be some corpus

to which the law will be applied. Pederson itself, speaks of the

necessity in deciding the question of law of the making of

determinations of fact. Jd. The preliminary questions of fact

are those originally outlined in Graham v. John Deere Co.,

383 U.S. 1, 17 (1966):

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 ascertained; and the level of

ordinary skill in the pertinent art resolved.

Here, the scope and content of the prior art were fully de-

veloped. There was no dispute as to what the prior art was and

the question remaining was one of law, i.e., whether that prior

art precluded the existence of an invention. Likewise, the dif-

ferences between the prior art and the claims at issue were fully

developed as a part of the record. The differences, while a

matter of argument in the trial court, consisted of a legal argu-

ment concerning the significance of the undisputed fact that

the prior art did have the same elements of inventiveness. In

other words, there was no factual dispute here as to what the

A27

prior art was or as to whether there were factual differences

between the prior art and the claims at issue.

Deferring for the moment the third factor mentioned in

Graham, this record reflects prior art falling into two categories.

The first category included prior art showing the basic reclining

chair without a propelling mechanism. The second category of

prior art showed the propelling mechanism for shifting a chair

back away from a wall. Indeed, in their brief here the patent

proponents concede the situation with regard to the prior art

when they say:

Defendants stress the fact that the components of the Re

chair are old and perform no new function. Plaintiffs

freely admit that the individual components are old and

that each functions, in isolation, as it always has.

This, of course, does not mean that there cannot be an inven-

tion qualifying for patent status in a combination of old ele-

ments, Whether the combination does qualify is where obvious-

ness enters the picture, or whether in the words of § 103, “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 pertains.”

The majority opinion based upon an examination of the

record finds a reasonable basis for the jury’s special verdict that

the patent was valid, which is necessarily to say the claimed

invention was nonobvious. The first aspect the majority opinion

considers is that the jury could have relied upon the propo-

nent’s expert witness who testified that the design was not

obvious. At this point, however, the witness was not testifying

as an expert witness on a disputed factual matter but was

giving an opinion on the ultimate legal question for decision,

that of obviousness. As this court said in Pederson supra, at

1180:

Because obviousness is a question of law, opinions of ex-

perts on that question are not among the facts presump-

tively decided in the winning party’s favor... .

A28

The majority opinion then refers to the testimony of a wit-

ness for the plaintiffs who described the level of ordinary skill

in the art of reclining chair design as people, “who have no

formal engineering education and they have either been car-

penters, mechanics, or tool and die maker type people, who by

experience in the business have built up their knowledge.” This

testimony, while introduced as having a bearing on the level

of skill, rather obviously was brought in to neutralize the effect

of the Burris expert who was a professor of engineering and

a “kinematic engineer.” That the persons having the level of

skill prevailing among reclining chair designers had no formal

engineering education does not mean that their level was “rather

low,” as it was characterized in the majority opinion.

Putting aside the fact that one of the foremost inventors on

the American scene, Thomas Alva Edison, had virtually no

formal education,” the majority opinion fails to note, that the

level of skill to which the proponents’ witness testified included

specialized “knowledge” acquired by “experience in the busi-

ness,” rather than by formal education of a highly technical

or theoretical variety. To be inventors these “carpenters, me-

chanics, or tool and die makers” still had to have the touch

of genius to discover something new. 35 U. S.C. § 101.

In the present case nothing new had to be discovered. No

different functions had to be devised. There was nothing un-

expected or surprising involved. Two well-known mechanical

procedures were combined, both of which were in the prior art.

The majority opinion treats the recent Supreme Court case

of Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976), from the

point of view of not disturbing the district court’s finding that

2. Edison, when seven years old moved with his family to

Michigan. There he received his only formal education which ended

abruptly after three months when the school master expelled him as

“retarded.” His mother, a former school teacher tutored him for

several years. His inventions resulted in more than a thousand

patents. 6 Encyclopedia Britannica 308 (15th ed. 1975).

A29

a patent was invalid. It is true that this was the result that the

Court’s decision reached. My reading of that case, however,

indicates to me that what the Court was doing, as we should

have done here, was, as a reviewing court, independently ap-

plying the law to the established facts of a combination of old

elements. Thus, in language particularly applicable here, the

Court stated:

. . this patent simply arranges old elements with each

performing the same function it had been known to per-

form, although perhaps producing a more striking result

than in previous combinations. Such combinations are not

patentable under standards appropriate for a combination

patent.

425 U.S. at 282.

The Court cites for the above proposition A. & P. Tea Co.

v. Supermarket Corp., 340 U.S. 147 (1950), indicating that

this pre-Graham case is still controlling law. In A. & P., the

Court used strong language which is also most pertinent in the

consideration of the patent hereunder review:

Courts should scrutinize combination patent claims with

a care proportioned to the difficulty and improbability of

finding invention in an assembly of old elements. The func-

tion of a patent is to add to the sum of useful knowledge.

Patents cannot be sustained when, on the contrary, their

effect is to subtract from former resources freely available

to skilled artisans. A patent for a combination which only

unites old elements with no change in their respective

functions, such as is presented here, obviously withdraws

what already is known into the field of its monopoly and

diminishes the resources available to skillful men. This

patentee has added nothing to the total stock of knowl-

edge, but has merely brought together segments of prior

art and claims them in congregation as a monopoly.

This is not just another patent case. It appears to me that it

will have an unfortunate significance suggesting as it does that

because it is necessary to make certain preliminary “basic factual

inquiries,” before the ultimate test of validity as a matter of

A30

law is reached, a reviewing court has its hands tied by the result

below even though that result has been reached by a misapplica-

tion of law to what are essentially undisputed facts. Here there

really was no dispute. In fact, it was admitted by the patent

holder as noted above, that the patent involved old components

each functioning as it always has.

The Supreme Court has had no difficulty in differentiating

between matters of fact and of law in the patent law area. Thus,

in A. & P., the district court explicitly found that each element

in the device was known to prior art. Nevertheless, that court

found that the combination was a new and useful one. The court

of appeals, as the majority opinion here in effect does, regarded

the district court’s finding of invention as one of fact, sustained

by substantial evidence, and affirmed it as not clearly erroneous.

Id. at 149. The Supreme Court, in reversing, stated:

The questions of general importance considered here are

not contingent upon resolving conflicting testimony, for the

facts are little in dispute. We set aside no finding of fact

as to invention, for none has been made except as to the

extension of the counter, which cannot stand as a matter

of law. The defect that we find in this judgment is that a

standard of invention appears to have been used that is less

exacting than that required where a combination is made

up entirely of old components.

240 U.S. at 153-54.

This court has never heretofore felt it was bound by a deter-

mination of nonobviousness resulting in validity even where

that finding has been made by a district court judge, whose

expertise in the subject presumably would be well above that

possessed by a lay jury. See, e.g., Skil Corporation v. Lucerne

Products Co., 503 F.2d 745 (7th Cir. 1974), cert. denied,

420 U.S. 974 (1975); Panduit Corporation v. Burndy Cor-

poration, 517 F.2d 535 (7th Cir. 1975), cert. denied, 423

U. S. 987; Gettleman Mfg. Inc. v. Lawn ‘N’ Sport Power Mower

Sales & Service, Inc., 517 F.2d 1194 (7th Cir. 1975); and

A31

Burland v. Trippe Mfg. Co., 543 F.2d 588 (7th Cir. 1976).

Skil and Panduit both refer to well established law in this cir-

cuit that a claimed invention consisting of old elements must

pass a “rather severe test.” This test plainly and simply was not

passed by the patent under review and it is unfortunate, in my

opinion, that the majority opinion has blurred an essential and

fundamental differentiation between the factual aspects and the

legal aspects applicable to a validity determination.

Finally on the present matter, I note the majority opinion’s

reliance on U. S. Philips Corp. v. Ferro Corp., 522 F. 2d 1100

(6th Cir. 1975). That case, however, did not involve a ques-

tion of validity but rather involved a claim of infringement as

to which there was conflicting factual evidence involving credi-

bility of witnesses. The case has no application on the ultimate

question of law of validity. Here to the extent that the majority

Opinion points out that there was conflicting evidence it was

on the matter of the experts testifying on obviousness which as

this court said in Pederson, as noted above, was an expression

of opinion on a matter of law which, of course, is beyond the

proper scope of an expert’s opinion. In sum, the judgments

entered in the district court should be reversed with directions to

enter judgments for the defendant Burris and for the plaintiff

Leggett & Platt.

I do not because of the conclusion I have reached consider it

necessary to advert to the issue of infringement although I agree

with the majority opinion that Burris’ presentation of its argu-

ment on this phase of the case “is, at best, inartfully and con-

fusingly presented.”

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit

A32

APPENDIX C

Opinion by Judge Pell

Judge Sprecher dissenting

UNITED STATES COURT OF APPEALS

Hon.

Hon.

Hon.

Hon.

Hon.

Hon.

Hon.

Hon.

Hon.

Dual Manufacturing & Engineering, )

Inc., and the Berkline Corporation,

Appeal from the United

vs. States District Court

Burris Industries, Inc., for the Northern Dis-

Leggett & Platt, Incorporated, Nos. 73-C-2667 and

Dual Manufacturing & Engineering,

For the Seventh Circuit

Chicago, Illinois 60604

April 22, 1980,

Before

THOMAS E, FAIRCHILD, Chief Judge

LUTHER M. SwyGeErT, Circuit Judge

WALTER J. CUMMINGS, Circuit Judge

WILBUR F. PELL, JR., Circuit Judge

ROBERT A. SPRECHER, Circuit Judge

PuiLip W. Tone, Circuit Judge

WILLIAM J. BAUER, Circuit Judge

HARLINGTON Woop, JR., Circuit Judge

RICHARD D. CupbaAHy, Circuit Judge

No. 79-1136

Plaintiffs-A ppellees,

Defendant-A ppellant. trict of Illinois, East-

ern Division

Plaintiff-A ppellant, 716-C-1828

VS.

J. Sam Perry, Judge

Inc.,

Defendant-Appellee. )

A33

This cause came on to be heard on the transcript of the

record from the United States District Court for the Northern

District of Illinois, Eastern Division, and was argued by

counsel.

On consideration whereof, it is ordered and adjudged by this

court that the judgment of the said District Court in this cause

appealed from be, and the same is hereby, Reversed, with costs

awarded to the appellants, in accordance with the opinion of

this court filed this date.