Petition — Shemitz v. Deere & Co.

I

Supreme Snurt U.S.

r)

80-287 AUG 26 1980

Miu,

a

No.

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1980

SYLVAN R. SHEMITZ,

Petitioner,

V.

DEERE & COMPANY, INC.,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Anthony P. DeLio, II

Mark F., Wachter

121 Whitney Avenue

New Haven, CT 06510

(203) 787-7462

Counsel for Petitioner

» att. CLERK

No.

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1980

SYLVAN R. SHEMITZ,

Petitioner,

v.

DEERE & COMPANY, INC.,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

The Petitioner, Sylvan R.

Shemitz, respectfully prays that a

Writ of Certiorari issue to review the

judgment and opinion of the United

States Court of Appeals for the

Seventh Circuit, entered in this

proceeding on May 28, 1980.

lias

y 2

QUESTIONS PRESENTED

Le Whether the Courts below

erred by applying a standard for

granting summary judgment lower than,

and in conflict with, that applied by

other Courts of Appeals.

aa Whether the Courts below

improperly invalidated patent claims

under 35 U.S.C. §103 by failure to

strictly adhere to the criteria

mandated by Graham v. John Derre Co., |

supra?

Le Whether invalidation of

patent claims by summary judgment, as

being "obvious" under 35 U.S.C. §103,

denied Patentee due process in the

first challenge to their validity?

3

TABLE O? CONTENTS

Questions Presented......... 2

GCOEMEONG BOTW sok cn vce odds 11

ee Eu ee eee ee eee 11

Constitutional, Statutory and

Regulatory Provisions

| Peeerer ere TTT TT Tre 12

Statement of the Case.......

Reasons for Granting the

FL Ieee eee ETS eT eee ee ee ee 22

1. The Decision Below

Conflicts With Decisions

of Other Courts of

Appeals as to Proper

Application of Summary,

Judgment and Fails to

Properly Apply the

Criteria of Graham v.

Page

John Deere Co., 383 U.S.

1 to Invalidate Patent

Claims under 35 U.S.C.

SiG Ss hee cacesreasvccves 22

2. Petitioner has been

Denied Due Process by

Summary Invalidation of

Patent Claims as being

Obvious over Prior Art

Structures and

Reference in First In-

Stance Raised Before Any

oy eee 29

CONCLUSION. .ccccccccccscccccs 36

ee ee ee eee Al

Opinion of Court of

Appeals, Appeal No.

be i ee Al

Page

Appendix to Opinion in

Appeal No. 79-1792,

Containing MEMORANDUM

OF DECISION AND JUDGMENT

Of District Court in

Civil Action No.

TB=-T032. ccccccccces eee A3

Judgment of Court of

AppealS...cccccccees A9

Claims 2 and 3 of U.S.

Patent 3,389,246.... All

6

TABLE OF AUTHORITIES

Page

Cases:

Adickes v. Kress & Co.,

398 U.S. 144 (1969)..... 25

Ag Pro, Inc. v. Sakraida,

437 F.2d 99, (5th Cir.

ROPE) p66 secs cnveciereees, 29

Blonder-Tongue Laboratories,

Inc. v. University of

Illinois Foundation, 402

O.8. FiZ (297i) cccccees 30,351

Blumcraft of Pittsburgh v.

Kawneer Company, Inc.

et al., 482 F.2d 542,

CSER CHE. BETZ) cccccccee Fl

Carter v. Stanton, 405

BiB. GOP TEPTZ) ccccccese 24

First National Bank v.

City Services Co., 391

U.S. 253 ih |) 25

Page

Fountain v. Filson, 336

B.8. GOL (19E 9} ccccccese 24

Graham v. John Deere Co.,

wee U8. 2 CiPSSy icccces 2p 3s 19,

CCereorececccccseccccccs Sh y9h5,40,

Cob Se eredccccoscesesesecsce Sh gbR gdb,

eocccrcccccccccccoseeses JO

Kaiser Industries Corpor-

ation et al. v. Jones &

Laughlin Steel Corpor-

ation, 515 F.2d 964 (3rd

Cif. 1975) ccccccccccese Jl

Plizer, Inc. v. Interna-

tional Rectifier Corp.,

538 F.2d 1980 (8th Cir.

AUTO hte onvosevessivads 25

Poller v. Columbia Broad-

casting System, 368

iB. S66 (196Z).cicsicce 22

Page

Sartor v. Arkansas Natural

Gas Corp., 321 U.S. 620

APRG) cncvccsevevescinsees 10

Soria v. Oxnard School

District Board of

Trustees, 488 F.2d 579

(Sth Cic. 1973), Cert.

denied 416 U.S. 951

IP TE) cccescsvessiscecess Of

Technitrol, Inc. v. Control

Data Corp., 550 F.2d 992

CSQR Clie. FETT). cceccssn OO

Tee-Pak, Inc. v. St. Regis

Paper Company, 491]

F.2d 1193 (6th Cir.

R974) cd cdveccsadsececeses BBgen

United States v. Bisset-

Berman Corp., 481 F.2d

764 (Sth Cir. 1973)..... 24

Page

United States v. Diebold,

Inc., 369 U.S. 654

GRPGR) cccccccseccecceces 29

Vickery v. Fisher Governor

Co., 417 F.2d 466 (9th

Bees TESS) cccccviccesces 8

Other Authorities

Constitution, 5th

RMONGMONE. cccccccocccecse Lt

BO BW.B.C. SLSSECL) wcccvcee Al

BO O.B.C. SW li cccccseses 22

Be Wael. Sls cccvcdcsces 15,16

ZB U.8.C. $2201. .cccccccce 16

ei: PESO Sceccceosscse 36

BS Us8.C. $1OZ..cccccscccee 33,34

Be GBiB.C. SOS. cccccccecese 254,12,

Peeketaesesocctncceosocoene 16 g8R SF,

SRUGEA Sew eeescoeesercccces SOg ee gees

eee tceoeveeeeweeweeneeneeeeeeeneeeeeee 33,34,35

10

Page

JO UBC. SRSaciccccsseoss

Fed. Rules Civ. Proc.,

RULE 3G. ccccvocsesssseovee 12,16,23

J. Moore, Federal Practice,

¥56.16 [3], (2nd ed,

SUT ssh 6 6b bee weus be ewe 25

ll

OPINIONS BELOW

The Opinion of the Court of

Appeals, not yet reported, appears in

the Appendix hereto. Incorporated in

the appendix of the Opinion of the

Court of Appeals is the Memorandum of

Decision and Judgment rendered by the

District Court for the Central Dis-

trict of Illinois.

JURISDICTION

The judgment of the Court of

Appeals for the Seventh Circuit was

entered on May 28, 1980. This Pet-

ition for Certiorari was filed within

90 days of that date. Accordingly,

this Court's jurisdiction is invoked

under 28 U.S.C. §1254 (1).

12

CONSTITUTIONAL, STATUTORY AND

REGULATORY PROVISIONS

U. S. Constitution, Amendment V

"No person . . . shall be deprived

of life, liberty or property,

without due process of law; ...

Title 35, United States Code §103:

"A patent may not be obtained

though the invention is not identi-

cally disclosed or described as set

forth in section 102 of this title,

if the differences between the

subject matter sought to be pat-

ented 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 neg-

atived by the manner in which the

invention was made."

Federal Rules of Civil Procedure, Rule

56(c):

". « »« The judgement sought shall

be rendered forthwith if the

Pleadings, depositions, answers to

interrogatories and admissions on

file, together with the affidavits,

if any, show that there is no

genuine issue as to any material

fact and that the moving Party is

entitled to a judgment as a matter

OF iam. . «*

13

STATEMENT OF THE CASE

In 1965, the Petitioner, Sylvan

R. Shemitz, invented a unit combining

Structural and lighting elements which

made it possible to arrange and

furnish office space in a new way.

These "Illuminated Room Divider

Partition" units not only improve

working conditions for the user, but

also provide energy efficiencies and

installation flexibility as a result

of the unique combination of

structural and lighting components.

U. S. Patent No. 3,389,246 was

duly issued to the Petitioner on June

18, 1968, Patent Claim 2 sets forth

the combination of components which

constitutes Petitioner's invention, as

follows:

“a

(a)

(b)

(c)

(d)

14

a "divider partition panel"

means;

a frame, which

(i) extends and is supported

along substantially the

entire length of the

"divider partition panel",

(ii) overhangs a portion of the

"divider partition panel"

means,

(iii) is open at the top and

bottom, and

(iv) is of a height from the

floor which is lower than

normal standing eye-

height, but higher than

normal seated eye-height;

illumination means positioned

and supported in the frame; and

either a deflector or reflector

supported by the frame.

15

Claim 3 specifies a range of 4.5 to

5.6 feet for the height of the frame

above the floor. See Appendix, pages

All to Al2, for the full text of

Claims 2 and 3.

Petitior2r's invention enjoyed

commercial success, with licenses

taken under the Patent and install-

ations made in new, large office

buildings.

Units infringing Petitioner's

Patent claims 2 and 3 were installed

and remain in use at the Moline,

Illinois headquarters of Respondent

Deere & Co., Inc. As a result,

Petitioner brought the instant action

in Federal Court in the Central

District of Illinois. Jurisdiction

was conferred under 28 U.S.C. §1338,

in this the first suit brought under

the Patent.

16

Respondent challenged the

validity of Patent Claims 2 and 3

under 35 U.S.C. §103 in a counterclaim

for declaratory judgment. Juris-

diction was claimed under 28 U.S.C.

§1338(a), 2201 and §2202. After

taking a discovery deposition of

Petitioner Shemitz, Respondent moved

for summary judgment under Fed. R.

Civ. P. 56(c). It's support for

summary judgment of obviousness under

§103 included, in addition to abridged

deposition responses by Mr. Shemitz,

U. S. Patent No. 1,457,061 to Guth and

"Carrel Divider" constructions located

in the library of Reed College, in

Portland, Oregon. None of this prior

art was known to either Petitioner or

the Patent and Trademark Office at the

time Petitioner's Patent was pros-

ecuted and issued.

a7

The abridged deposition re-

sponses indicated that some of the

components utilized in Shemitz'

invention were not themselves novel.

However, other portions of Shemitz'

deposition, as well as the subsequent

Shemitz Affidavit, specified that the

invention resided in the unique

combination of components.

The Guth patent discloses a

specialized type of lighting fixture

for mounting on a wall, or counter

framework, which permits light to be

adjustably directed upward and down-

ward, The affidavit of Petitioner's

patent expert concludes that the Guth

patent fails to teach, suggest or

disclose use of any “up/down"

lighting, in the context of Petit-

ioner's claimed invention,

18

The Reed College "Carrel Div-

ider" constructions were installed

more than one year before Petitioner

made his invention. However, their

existence remained unknown to him

until shortly after Respondent filed

its motion for summary judgment.

Petitioner opposed summary

judgment and filed affidavits placing

material facts in the record, which

disputed and opposed the position of

Respondent on several issues of

material fact. Most notably, Petit-

ioner provided factual evidence in the

record directed to determination of

the scope and content of the prior art

at the time of the invention, as well

as differences between such prior art

and the claims at issue. These

factual issues constitute the first

19

two factual inquiries of the three-

pronged test mandated by Graham v.

John Deere Co., supra.

In opposing summary judgment,

Petitioner in the record specified

Primary differences between his Patent

Claims 2 and 3 and the Reed College

constructions, which lack;

(a) a “divider partition panel"

means, and

(6b) a frame which overhangs a

portion of a "divider partition

panel" means,

Not only are both features recited in

the claimed combination, but they

interact most critically to provide a

unit capable of commercial utilization

by dividing work space into defined,

semi-private work areas having visual

and acoustical privacy. Petitioner's

opposing affidavits also set forth

20

evidence in support of the essential

issue of what constituted the "claimed

invention" to be measured against the

Prior art by the Graham v. Deere

standards,

Over Petitioner's objections,

summary judgment was granted. The

District Court adopted Respondent's

characterization of the "claimed

subject matter" as essentially per-

taining to a combination of components

which omitted critical elements

recited in the combination set forth

in Patent Claims 2 and 3. See App-

endix, page A4,

The District Court found that,

on the basis on the Shemitz deposition

statements, "essential features of the

claimed invention" were well Known,

that the Reed College constructions

21

demonstrate obviousness, and that the

Guth patent showed "up-down lighting

as in Shemitz".

The District Court also con-

cluded, over Petitioner's objections

and without comment or apparent

analysis of the record, that no

genuine issue existed as to any

material fact. The presumption of

validity was found to no longer exist,

because of "anticipating prior art"

which was not before the Patent

Examiner. Judgment was reached

without benefit of expert testimony,

which was rejected as being unnec-

essary, despite Petitioner's ob-

jections.

The district court ruled that,

measured against the criteria set

forth in Graham v. John Deere Co.,

22

supra, the "subject matter of the

claims at issue" was obvious, so that

summary judgment under 35 USC §103 was

appropriate.

The Court of Appeals reviewed

the lower court action, under 28

U.S.C. §1291, and held in a per curiam

decision that Petitioner had failed to

establish a genuine issue of material

fact, as is required to defeat a

motion for summary judgment. The

Court of Appeals adopted the District

Court Memorandum of Decision as its

own.

REASONS FOR GRANTING THE WRIT

1. THE DECISION BELOW CONFLICTS

WITH DECISIONS OF OTHER COURTS OF

APPEALS AS TO PROPER APPLICATION OF

SUMMARY JUDGMENT AND PAILS TO PROPERLY

23

APPLY THE CRITERIA OF GRAHAM V. JOHN

DEERE CO., 383 U.S. 1, TO INVALIDATE

PATENT CLAIMS UNDER 35 U.S.C. §103.

In Sartor v. Arkansas Natural

Gas Corp., 321 U.S. 620 (1944), the

Court enunciated the principles to be

applied in ruling on a motion for

summary judgment:

". . . Rule 56 authorizes summary

judgment only where the moving

party is entitled to judgment as a

matter of law, where it is quite

clear what the truth is, that no

genuine issues remain for trial,

and that the purpose of the rule is

not to cut litigants off from their

right of trial by jury iff they

really have issues to try."

321 U.S. at 627. Also see, Poller v.

Columbia Broadcasting System, 368 U.S.

464, 468 (1962).

The District Court is without

authority to grant summary judgment

where the standards set forth in Rule

56(c) have not clearly been met. A

motion for summary judgment must be

24

denied if a triable issue of material

fact exists. Fountain v. Filson, 336

U.S. 681 (1949); Also see, Carter v.

Stanton, 405 U.S. 669 (1972),

It is not the function of the

Court on a motion for summary judgment

to decide disputed issues of fact,

Soria v. Oxnard School District Board

of Trustees, 488 F.2d 579 (9th Cir.

1973) Cert. denied 416 U.S. 951

(1974); United States v. Bissett-

Berman Corp., 481 F.2d 764 (9th Cir.

1973); Vickery v. Fisher Governor Co.

417 F. 2d 466 (9th Cir. 1969),

All that is required for a

material fact to be in dispute is that

there be sufficient evidence in the

record to support the claimed factual

dispute so that the parties' differing

versions of the truth be resolved

25

after a trial. First National Bank v.

City Services Co., 391 U.S. 253, 289

(1968). Any and all doubts as to the

existence of an issue of material fact

must be resolved in favor of the

Petitioner, who was opposing summary

judgment. United States v. Diebold,

Inc., 369 U.S. 654 (1962), Adickes v.

Kress & Co., 398 U.S. 144, 157 (1969);

and J. Moore, Federal Practice, 456.15

[3] (2nd ed. 1966),

Summary judgment has been used

sparingly in patent cunen, with the

courts applying a high standard to

govern application of summary judgment

in such cases, Pfizer, Inc. v.

International Rectifier Corp., et al,

538 F.2d 180 (8th Cir. 1976); Tee-Pak,

Inc. v. St. Regis Paper Company, 491

F.2d 1193 (6th Cir. 1974); Ag Pro,

_—

26

Inc. v. Sakraida, 437 F.2d 99 (Sth

Cir. 1971); and Technitrol, Inc. v.

Control Data Corp., 550 F.2d 992 (4th

Cie. IFsI«

35 U.S.C. §103 received its

definitive interpretation in Graham v.

John Deere Co., supra, wherein the

Court, in calling for "strict observ-

ance" of its requirements, laid out

the analysis to be followed in cases

involving the obviousness standard:

"While the ultimate

question of patent validity

is one of law, A & P Tea Co.

v. Supermarket Corp. [cit-

ation omitted], the §103

condition, which is but one

of three conditions, each of

which must be satisfied,

lends itself to several

basic factual inquiries.

Under §103, the scope and

content of the prior art are

to be determined; difference

between the prior art and

the claims at issue are to

be ascertained; and the

level of ordinary skill in

27

the pertinent art resolved.

Against this backdrop, the

obviousness or nonobv-

iousness of the subject

matter is determined."

Here, the District Court exceeded

its proper function by resolving the

disputed issues as to the first two

factual inquiries of the test for

obviousness mandated by the Graham v.

John Deere Co., supra. It compared

differences between 1) the proffered

prior art with 2) an over simplified

and unsubstantiated characterization

of the Petitioner's "claimed subject

matter." In doing so it omitted

critical elements recited in the

Petitioner's claims thus failing to

observe the second "factual inquiry"

requirement of Graham v. Deere.

Petitioner built a record

opposing summary judgment which

28

creates doubt as to the propriety of

the District Court's evaluation of the

scope and content of the prior art and

its determination of differences

between such prior art with the

complete combination set forth in

Patent Claims 2 and 3. The facts in

Petitioner's record concerning these

issues require that resolution could

only properly take place after trial.

Thus, the legal error of the

courts below was two-fold. First,

they applied an insufficiently rig-

Orous standard, below and in conflict

with that applied by other Courts of

Appeals, to resolve genuine issues

between the parties' positions of

record by summary judgment. Second,

they found "obviousness" under 35

U.S.C. §103, without the required

29

strict adherence to the criteria of

Graham v. John Deere Co., supra.

2. PETITIONER HAS BEEN DENIED DUE

PROCESS BY SUMMARY INVALIDATION OF

PATENT CLAIMS AS BEING OBVIOUS OVER

PRIOR ART STRUCTURES AND REFERENCE IN

FIRST INSTANCE RAISED BEFORE ANY

TRIBUNAL.

The application of summary

judgment to invalidate Petitioner's

Patent claims on the basis of being

"obvious" under 35 U.S.C. §103 pre-

sents an important question of constit-

utionally protected due process, which

deserves the Court's review.

If due process can be denied a

patentee, as by the courts below,

confidence in and the strength of the

U.S. patent system will be undermined,

Disclosure of innovation, which is the

30

principle public benefit of the patent

system, will be discouraged,

The statutory presumption under

35 U.S.C. §282 that a properly issued

U. S. patent is valid should not be

dismissed by granting summary judgment

in the first judicial test of val-

idity, where the prior art was pre-

viously unknown to the Patentee and

the Patent and Trademark Office.

Following this Court's decision

in Blonder-Tongue Laboratories, Inc.

v. University of Illinois Foundation,

402 U.S. 313 (1971), a judgment of

patent validity has in rem conse-

quences. Once patent claims are

invalidated, re-examination of the

validity issue is effectively pre-

cluded in any other court, regardless

of any change of ownership of the

patent or the parties involved. See

Ja

Blumcraft of Pittsburgh v. Kawneer

Company, Inc., et al., 482 F.2d 542

(Sth Cir. 1973); and Kaiser Industries

Corporation et al. v. Jones & Laughlin

Steel Corporation, 515 F.2d 964 (3rd

Cit. -i9fs)%

The Court of Appeals for the

Sixth Circuit in Tee-Pak, Inc. v. St.

Regis Paper Co., 49] F.2d at 1196,

recognized the severe consequences of

in rem invalidity and reiterated this

Court's emphasis in Blonder-Tongue

Laboratories, Inc. v. University of

Illinois Foundation, supra., of the

importance of a patentee having a full

and fair opportunity to litigate the

validity of his patent.

Here, in the first attack upon

the validity of the Petitioner's

patent, the Court below precluded a

full and fair inquiry of the physical

=

—_—

ee

32

object constituting the prior art, by

deciding the case on summary judgment,

Adjudication in strict accord-

ance with the test mandated by Graham

v. John Deere Co., supra, under the

circumstances of the case below,

requires a trial. It requires the

full opportunity to present expert

testimony, to present and cross-

examine witnesses and to present

demonstrative evidence, particularly

that concerning the physical object

alleged to be prior art.

Constitutional due process

requires that a patentee nct be

deprived of his patent property

without a full and fair opportunity to

litigate the validity of his patent.

Trial certainly should not be

precluded where, as here, the patentee

rigorously and genuinely disputed the

33

position of Respondent concerning

factual] inquiries of the Graham v.

Deere test and documented his position

in the record.

A determination of patent

validity under 35 U.S.C. §102 based

upon “anticipation" is straight-

forward and perhaps more readily

adapted to adjudication by summary

judgment. However, the standards

required for judging validity under

§103, on the basis of “obviousness",

involves a highly subjective determin-

ation, even with strict adherence to

the Graham v. Deere test. The sub-

jective nature of the obviousness

Getermination mandates that a patentee

who raises and documents the exist-

erice, (or even doubt as to the exist-

ence), of genuine issues as to the

34

factual inguiries of the Graham v.

Deere test should not be denied his

day in court.

The District Court concluded

that the subject matter of the claimed

invention was obvious over prior art,

under §103. This prior art did not

anticipate the claimed invention under

§102.

Yet the District Court found

that the presumption of validity of

Petitoner's patent no longer existed,

due to “anticipating prior art". This

reasoning is faulty and clear error,

because obviousness, under §103, is

not the equivalent of anticipating,

under §102.

The District Court's miscon-

ception and confusion of §102 and §103

resulted, in first the erroneous

35

elimination of the presumption of

validity and, the consequent invalid-

ation of Petitioner's Patent under

§103. The adoption of this reasoning

by the Court of Appeals, further

denied the Petitioner due process by

summary invalidation of his issued

Patent.

The case below presents con-

flicting legal concepts. Summary

judgment could be utilized in cases

lacking any genuine issue of material

fact to facilitate the efficient

administration of justice. However,

the subjective nature of an inquiry

into obviousness under §103 of the

Patent Act, and this Court's proper

insistence upon strict adherence to

the standards of Graham v. John Deere

Co., supra, should not be compromised.

— as

36

Otherwise, the patentee will be

deprived of his patent property

without due process of law.

It is respectfully submitted

that this conflict must be resolved by

denial of summary judgment. Petitioner

must be given the full and fair

opportunity at trial to have his

patent's validity properly adjudicated

by resolution of the factual inquiries

mandated by the Graham v. Deere test.

If, such invalidation by summar y

judgment is permitted, the strength,

statutory presumption of validity and

resulting value of duly issued uU. s.

patents will be badly eroded,

CONCLUSION

For the reasons stated and

referred to above, it is respectfully

requested that the Petition for a writ

of Certiorari be granted in this case.

37

Respectfully submitted,

Anthony P. DeLio, ITI

Mark F, Wachter

121 Whitney Avenue

New Haven, CT 06510

(203) 787-7462

Counsel for Petitioner

—

APPENDIX

Al

Iu the

United States Court of Appeals

For the Seuenth Cirrnit

No. 79-1792

SYLVAN R. SHEMITZ,

Plaintiff-A ppellant,

DEERE & COMPANY, INC.,

Defendant-A ppellee.

Appeal from the United States District Court for the

Central District of Illinois.

No. 78 C 4032—Robert D. Morgan, Judge.

ARGUED JANUARY 7, 1980—DeEcIDED MAY 28, 1980

Before SWYGERT, SPRECHER and BAUER, Circuit

Judges.

PER CURIAM. This appeal is taken by the plaintiff

from an order of the district court concluding the

invalidity of the patent allegedly infringed and granting

the defendant’s motion for summary judgment. Mea-

sured against the criteria set forth in Graham ».

John Deere Co., 383 U.S. 1 (1966), the district court

determined that the patent in issue was invalid for

obviousness under 35 U.S.C. § 103.

Having examined the record, addressed the briefs,

and heard oral argument on behalf of the parties, we

agree with the district court that the plaintiff has failed

A2

2 No. 79-1792

to establish a genuine issue of material fact as is

required to defeat a motion for summary judgment

under F. R. Civ. P. 56(c). Accordingly, for the reasons

given in Judge Morgan’s Memorandum of Decision,

which we adopt as our own and append hereto, the

summary judgment for the defendant is affirmed.

AFFIRMED.

A3

No. 79-1792 3

APPENDIX

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF ILLINOIS

SYLVAN R. SHEMITZ, )

Plaintiff,

v. No. 78-4082

DEERE & COMPANY, INC.,

)

)

)

)

Defendant. )

MEMORANDUM OF DECISION AND JUDGMENT

On May 31, 1979, at hearing thereon, the court

announced allowance of defendant’s motion for summary

judgment herein and promised a memorandum of its

reasons therefor. This is that memorandum.

The following facts are not disputed. Plaintiff, Sylvan

R. Shemitz (hereafter Shemitz), is a citizen of Connecti-

cut, and since 1963 has been in the business of rendering

lighting, design, and consultation services. Defendant,

Deere ys Company, Inc. (hereafter Deere), is a Delaware

corporation having its principal place of business in

Moline, Illinois. Jurisdiction by the court over both of

the named parties and over the subject matter of the

patent infringement complaint and counterclaim for

declaratory relief is uncontested.

This action was instituted by a complaint filed by

Shemitz on July 13, 1978, charging Deere with infringe-

ment of his United States Patent No. 3,389,246, granted

June 18, 1968, on an application, Serial No. 521,068,

filed January 17, 1966. Said ‘saga is hereafter referred

to as the Shemitz patent. The basis for the charge of

infringement is that Deere purchased certain illumi-

nated wall partition dividers alleged to infringe the

Shemitz patent and is using same in its corporate head-

quarters. Although the said patent contains three

claims, the charge of infringement is only to claims 2

and 3 thereof.

4 No. 79-1792

Deere answered and counterclaimed, seeking a de-

claratory judgment that the Shemitz patent is invalid

and not infringed by Deere. Shemitz filed his reply to

said counterclaim, denying the allegations thereof.

Deere contends, inter alia, that Shemitz patent claims 2

and 8 are invalid, pursuant to 35 U.S.C. § 103, because

the differences between the claimed subject matter and

the prior art are such that the subject matter as a whole

would have been obvious at the time the alleged

invention was made to a person having ordinary skill in

the art to which such subject matter pertains. The

alleged invention was made in 1965, ie, it was

conceived in April, 1965, and was reduced to practice in

September, 1965. The art involved is room and desk top

illumination in relation to room dividing.

The claimed subject matter essentially pertains to a

room divider partition that divides a room into work

areas while at the same time providing direct illumi-

nation over a desk or the like positioned adjacent

thereto, as well as indirect illumination of the remaining

room area by means of a light fixture mounted in a

frame overhanging a portion of said partition and of a

height lower than normal standing eye height but

higher than normal seated eye height of an adult person.

A reflector is included in the light fixture to assist in

directing the light emanating therefrom. !

' Claims 2 and 3 of the Shemitz patent read as follows:

“2 A room divider partition for dividing a room having

a floor into work areas, at the same time providing direct

illumination over a desk or the like positioned adjacent

thereto and simultaneously providing fight for indirectly

illuminating the remainder of the room, the room divider

having a divider partition panel means, a frame extending

and supported along substantially the entire length of the

divider partition panel means, said frame overhanging a

portion of the divider partition panel means, the frame

open on the bottom and top thereof, and illuminating

means positioned and supported in said frame, a member

selected from the class consisting of deflector and reflector

means supported by said frame, the height of the frame

from the floor on which the partition is positioned such

that it is lower than the normal standing eye-height but

higher than the normal seated eye-height of an adult

person.

(Footnote continued on following page)

A5

No. 79-1792 5

The prior art relied upon by Deere to demonstrate

obviousness constitutes admissions by Shemitz; a carrel-

divider construction publicly used at the Reed College

Library, Portland, Oregon, as early as October 10, 1963:

and United States Patent No. 1,457,061, granted May

29, 1923, to E. F. Guth.

Shemitz admitted during his examination on deposi-

tion by defendant’s counsel that he did not consider

himself to be the first person to have devised a room

divider providing direct illumination overhanging a

desk while simultaneously providing light that con-

tributes to the indirect illumination of the remainder of

the room; nor does Shemitz consider himself the first

person to devise a height for the illuminator in such

divider that is lower than the normal] standing eye

height of an adult person positioned adjacent the divider

and higher than the normal seated eye height of an

adult person positioned at the desk. If this does not

constitute admission that the essential features of the

claimed invention were well known in the prior art, the

Reed College Library construction appears to this court

to demonstrate the obviousness of the claimed invention.

It is clear that such construction constitutes a carrel-

divider with built-in direct/indirect overhanging fluo-

rescent fixtures open at the top and bottom so as to

provide direct local task lighting on the associated desk

top area as well as simultaneous _ indirect general

illumination of the remaining room area. Furthermore,

' continued

“3 <A room divider partition for dividing a room having

a floor into work areas, at the same time providing direct

illumination over a desk or the like positioned adjacent

thereto and simultaneously providing light for indirectly

illuminating the remainder of the room, the room divider

having a divider partition panel means, a frame extending

and supported along substantially the entire length of the

divider partition panel means, said frame overhanging a

portion of the divider partition panel means, the frame

open on the bottom and top thereof, illuminating means

positioned and supported in said frame, and a member

selected from the class consisting of a reflector and a

baffle supported by said frame. the height of said frame is

between about 4.5 feet to 5.6 feet above the floor on

which the partition is positioned.”

Abo

6 No. 79-1792

the carrel-dividers are of a height such that they are

lower than standing eye height but higher than the

seated eye height of an adult person using the desk. The

Reed College Library lighted dividers, in use since 1968,

were not considered by the Patent Office during the

prosecution of the Shemitz patent.

The aforesaid Guth patent No. 1,457,061 discloses a

lighting fixture attached to a counter providing general

illumination of the room in which it is located, as well as

illumination of the counter. As stated in the patent, this

is accomplished by up-down lighting as in Shemitz,

wherein the upwardly directed lighting affords the

general room illumination and the downwardly directed

light provides localized illumination of the adjacent

counter area. Guth is of further significance in pro-

viding that the lighting fixture includes adjustable

reflectors on both sides of the light, which is an

incidental feature of the Shemitz patent claims in issue.

The Guth patent was not cited during the prosecution

history of the Shemitz patent application.

Such prior art, individually or in combination, demon-

strates that the differences, if any, between the claimed

subject matter of Shemitz patent claims 2 and 3 and the

prior art are such that the claimed subject matter as a

whole was obvious in 1965, at the time the alleged

invention was made, to a person having ordinary skill in

the art to which said subject matter pertains. Mr.

Shemitz, himself, specified that the art to which his

claimed subject matter pertains can be described as

“illuminated office furniture and partition systems,” and

also asserted that the level of ordinary skill in the art at

the time of his alleged invention was “knowledge of a

table or desk lamp and knowledge of wall, valance, or

ceiling lighting.” This may be slightly restricted, but

seems sufficient to render the claimed invention in

claims 2 and 8 invalid, as obvious under 35 U.S.C. § 103.

This court therefore concluded that it had jurisdiction

over both the named parties and over the subject matter

of the complaint and counterclaim. Rule 56(c), F. R. Civ.

I, provides in pertinent part that a motion for

summary judgment should be rendered “forthwith if the

pleadings, depositions, answers to interrogatories, and

A7

No. 79-1792 7

admissions on file, together with the affidavits, if any,

show that there is no genuine issue as to any material

fact and that the moving party is entitled to a Judgment

as a matter of law.” Rule 56 applies to patent cases and

is used where, as here, the structure and mode of

operation of the invention described and claimed in the

patent may be readily comprehended by the court

without need for technical explanation by expert

witnesses and in such circumstances; if said invention is

found invalid because of the prior art, then summary

judgment is proper. Research Corporation v. Nasco

Industries, Inc., 501 F.2d 358, 361-362 (7th Cir. 1974),

cert. denied, 419 U.S. 1096 (1974). Validity of patent

claims is not immune from disposition on motion for

summary judgment even though, in addition to prior art

patents, deposition testimony and affidavits are involved,

if no genuine issue of material fact is present. A R Ine.

v. Hlectro- Voice, Incorporated, 311 F.2d 508, 511 (7th

Cir. 1962).

35 U.S.C. § 282 provides that an issued patent shall be

presumed valid. However, where, as here, the anticipa-

ting prior art was not before the Patent Examiner,

there is no longer such a presumption. Rockwell».

Midland-Ross Corp., 438 F.2d 645, 650 (7th Cir. 1971).

35 U.S.C. § 103 provides that “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.”

Obviousness must be evaluated under the standards

adopted by the United States Supreme Court in Graham

. John Deere Co., 383 U.S. 1, 17 (1966), requiring an

evaluation of the scope and content of the prior art at

the time of the invention, the differences, if any,

between the prior art and the claims at issue, and the

level of ordinary skill in the art. Centsable Products, Ine.

v. Lemelson, Civ. No. 78-1969, decided January 23, 1979

(7th Cir.) at 3-4; Research Corporation v. Naseo In-

dustries, supra at 361.

A8

8 No. 79-1792

Measured against those criteria, the subject matter of

the claims at issue was clearly obvious at the time the

invention was made, to a person having ordinary skill in

the art to which said subject matter pertains, so that

summary judgment by reason of the provisions of 35

U.S.C. § 103 is appropriate. Centsable Products, Inc. v.

Lemelson, supra; Research Corporation v. Nasco In-

dustries, Inc., supra at 360-362; A R Inc. v. Electro-

Voice, Ine., supra at 511-512; Davison Chemical Corp. v.

Joliet Chemicals, 179 F.2d 793, 794-795 (7th Cir. 1950),

cert. denied, 340 U.S. 816 (1950); and Hancock Labora-

tories, Inc. v. American Hospital Supply Corp., 199

USPQ 279, 283-284 (N. D. Ill. 1978).

Invalid patent claims cannot be infringed, and therc-

fore the counterclaim for declaratory judgment, that

Shemitz patent claims 2 and 8 are invalid and not

infringed, must be granted in all respects, with a

recovery of costs against the plaintiff. The law is with

the defendant and against plaintiff on the complaint and

answer, as well as on the counterclaim and reply to said

counterclaim.

Accordingly, IT IS ORDERED that claims 2 and 3 of

the Shemitz patent are invalid and not infringed,

judgment is entered in favor of defendant and against

plaintiff on the complaint, answer and counterclaim,

with costs against the plaintiff.

ROBERT D. MORGAN

United States District Judge

Untered: JUNE 6, 1979

Nunc Pro Tune May 31, 1979

A true Copy:

Teste:

Clerk of the United States Court of

Appeals for the Seventh Circuit

USCA J512--Midwest Law Printing Co.. Ine.. Chicago —5-28-80 — 350

A9

Per Curiam Opinion

JUDGMENT —- ORAL ARGUMENT

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Chicago, Illinois

60604

May 28, 1980

Before

Hon. LUTHER sM., SWYGERT,

Hon. ROBERT A. SPRECHER,

Circuit Judge

Circuit Judge

Hon. WILLIAM J. BAUER, Circuit Judge

SYLVAN R. SHEMITZ,

Plaintiff-Appellant,

No. 79-1792 vs.

DEERE & COMPANY,

SWGes

Defendant-Appellee,

Appeal from

the United

States Dis-

trict Court

for the

Southern Dis-

trict of

Illinois,

Rock Island

Division

No. 78-C-4032

Robert D,

Morgan, JUDGE

A10

This cause was heard on the

record from the United States District

for the Southern District of Illinois,

Rock Island Division, and was argued

by counsel.

On considered 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, AFFIRMED, with

costs, in accordance with the opinion

of this court filed this date,

All

U.S. PATENT NO. 3,389,246

Claim 2

"2. A room divider partition for

dividing a room having a floor into

work areas, at the same time pro-

viding direct illumination over a

desk or the like positioned adjacent

thereto and simultaneously providing

light for indirectly illuminating

the remainder of the room, the room

divider having a divider partition

panel means, a frame extending and

supported along substantially the

entire length of the divider par-

tition panel means, said frame

overhanging a portion of the divider

Partition panel means, the frame

open on the bottom and top thereof,

and illuminating means positioned

and supported in said frame, a

member selected from the class

consisting of deflector and re-

flector means supported by said

frame, the height of the frame from

the floor on which the partition is

positioned such that it is lower

than the normal standing eye-height

but higher than the normal seated

eye-height of an adult person."

Claim 3

"3. A room divider partition for

dividing a room having a floor into

work areas, at the same time pro-

viding direct illumination over a

desk or the like positioned adjacent

Al2

thereto and simultaneously

providing light for indirectly

illuminating the remainder of

the room, the room divider

having a.divider partition panel

means, a frame extending and

supported along substantially

the entire length of the divider

partition panel means, said

frame overhanging a portion of

the divider partition panel

means, the frame open on the

bottom and top thereof, illum-

inating means positioned and

supported in said frame, and a

member selected from the class

consisting of a reflector and a

baffle supported by said frame,

the height of said frame is

between about 4.5 feet to 5.6

feet above the floor on which

the partition is positioned."