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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1980
- **Citation:** 449 U.S. 870

## Text

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.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385007_0068%3A1. Public record. Not legal advice.