Petition for Writ of Certiorari — Bates Industries, Inc. v. Daytona Sports Co.

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; = [ B RA f Y ft Supreme Court, U.S.

FILED

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Supreme Court of the Unite States *° 8"

E, ROBERT SEAVER, CL-RK

October Term, 1971

No. A-78

71-419

BATES INDUSTRIES, INC.,

Petitioner,

VS.

DAYTONA Sports Co. and DAYTONA PRODUCTS, 1NC.,

and PAULSON MANUFACTURING CORPORATION,

Respondents.

Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit.

GEORGE McGLLL,

3605 Long Beach Boulevard,

Suite 412,

Long Beach, Calif. 90807,

(213) 427-4375,

Attorney for Petitioner.

Parker & Son, Inc., Law Printers, Los Angeles. Phone 724-6622

SUBJECT INDEX

Page

I II cleidaces ccna. Ce eee ees ]

I ricci tclet eater ee Pee 1

NE NE ie 2

Statutory Provisions Involved .....................--.sc-0000- 2

I Oe TI ID is eceinisciecnicensvesencsiaesddaeade 3

Reasons for Granting the Writ -...............00.....-.0....- 7

1. The Statutory Presumption of Patent Validity

Must Always Be Overcome ...................--.---- 7

2. The Proper Focus Is Upon the Invention as

a Whole, and Not Upon the Individual Ele-

ments or Features Disclosed Singularly in the

OE WII ieciiticedckiabincnnn Gane et. 9

3. Simplicity Is No Proper Criterion of Obvi-

I EE TR MO 16

4. Hindsight Reconstruction May Not Be Em-

ployed in Assessing Obviousness .................. 19

5. The Teachings and/or Application Dis-

closures of the Patent in Issue Should Not

Be Considered in the Course of the Judicial

Weighing of Obviousness .......................... 22

6. In Applying the Standard of Nonobvious-

ness, the Practical Criteria and Subtests

Are Not to Be Judicially Ignored ............ 23°

7. Primary Functionality Does Not Without

More Invalidate a Design Patent ............ 26

8. Patent Litigation Should Not Be Adjudicated

Piecemeal by Partial Summary Judgment .. 28

ii.

9. This Court’s Graham and Other Decisions

Require the Lower Federal Courts to Exer-

cise Great Caution in Dealing With the Sec-

tion 103 Obviousness Issue on a Motion

for Summary Judgment, Summary Judgment

Not Ordinarily Being Appropriate in Patent

I aiisinnssrnsicnctenccenirinntiadienthinbachininnainanaintion

SE LT TELE T e N T

Appendix A. Opinion of the United States Court

of Appeals for the Ninth Circuit -........... App. p.

Page

30

35

iii.

TABLE OF AUTHORITIES CITED

Cases Page

Abington Textile Machinery Works v. Carding Spe-

cialists [Canada] Ltd., 249 F.Supp. 823 .............. 21

Adams v. Columbus Manufacturing Company, 169

PIN SUM cecnsccscinssisbsiiashoiengabsiaiien 34

American Safety Table v. Schreiber, 269 F.2d 255,

cert. den. 361 U.S. 915, 80 S.Ct. 259, 4 ‘.ed.

ne iia elias ae sannsastinanede adic bis 24

American Securit Company v. Hamilton Glass Com-

I niacin ns saccacncncscccenceace .. 34

AMP Incorporated v. Vaco Products Co., 280 F.2d

518, cert. den. 364 U.S. 921, 81 S.Ct. 286, 5

ca atl caain sds inadansinaneacanene 17

Arthur J. Schmitt Found. v. Stockham Valves & Fit-

tings, Inc., 292 F.Supp. 893 2.0.0... eeeeeceeeceenee 8

Artmoore Co. v. Dayless Mfg. Co., 208 F.2d 1 ........ 9

Aufhauser, Application of, 399 F.2d 275 .......... 14, 23

Bates Industries, Inc. v. Daytona Sports Co., 441

TE OE etd sishcecsidicseanacake SPI a RTO 1

Baum, In re, 123 F.2d 662 -2...02.....ceceeccceececceeeeeceeeeee 18

Baut v. Pethick Construction Company, 262 F.Supp

NSIS EE SSDI RL Ce et 12

Bede v. Beck, 11 F.R.D. 293 .................................. 34

Bela Seating Company v. Poloron Products, Inc.,

i cacasnepaceincilldicssncadanncssnasnns 8

Bernardo v. Bethlehem Steel Co., 169 F.Supp. 914 29

Blaw-Knox Company v. I. D. Lain Company, 230

I ee ais albatda hid aiks ssDearscniineannaanane 14

Blumcraft of Pittsburgh v. Citizens & South. Nat.

Bank of S. C., 276 F.Supp. 448, rev’d 407 F.2d

557, cert. den. 395 U.S. 961, 89 S.Ct. 2103, 23

L.ed.2d 747, reh. den. 396 U.S. 870, 90 S.Ct. 39,

BP OD nsec nvndensesntinedicacnarsenene 12, 20, 27

iv.

Page

Boyajian v. Old Colony Envelope Company, 279

asl acasatemmislibeneneniadnabs 33

Bridgeport Brass Co. v. Bostwick Laboratories, 181

I IS Aiea aieiecisill idipasinahiatainsensannbentencnmininenes 32

Bucky v. Sebo, 97 F.Supp. 277 .............--------------++- 34

Bulina, Application of, 362 F.2d 555 ..................---- 11

Burgans v. N.Y. Central R.R. Co, 192 F.Supp.

a aca caanceemniinbainenianencmnmnnnien 29

Burt v. Bilofsky, © F.R.D. 299 ...........-........---...-- 34

Cable, Application of, 347 F.2d 872 ........ 19, 23, 25

Calhoun v. State Chemical Manufacturing Com-

pany, 153 F.Supp. 293 ............--------1--:----+++- 19, 24

Carnegie Steel Company v. Cambria Iron Company,

185 U.S. 403, 22 S.Ct. 698, 46 L.ed. 968 ........ 16

Cee-Bee Chemical Co. v. Delco Chemicals, 263 F.

IIIT a acaiaentncsoninanphenkiabanenseennssaendsoneenen 31

Charles Blum Advertising Corporation v. L. & C.

Mayers Co., 25 F.Supp. 934 ...........------------e00---+- 34

Charles Peckat Mfg. Co. v. Jacobs, 178 F.2d 794,

cert. den. 339 U.S. 915, 70 S.Ct. 575, 94 L.ed

ID cnnncisnnncsahesssasootwanssneostocnongesesesssnsnasscstassnennen 9, 17

TOD wesssnnisasnnthintsctsibedansncionsrenscncnscapessesenenetes conaneene 34

Supp. 814 .......-...........--cc-ccceseceeeecenececceeeceencseseseees 31

Colgate Palmolive Co. v. Carter Products, Inc., 230

F.2d 855, cert. den. 352 U.S. 843, 77 S.Ct.

OF DI FO wiseeecenencnicnnnscessseeesesncenscnsnnnsnscene 26

Consolidated Packing Machinery Corp. v. General

Mills, 36 F.Supp. 112 .............---..-------e0---00-se0200- 28

Page

Continental Can Co. v. Anchor Hocking Glass

i, I, Faia cseciincteseneiuapent 25

Copease Mfg. Co. v. American Photocopy Equip-

MS GA, FD Ie FED vecsssncnsstisincacesectoatel 8, 14, 15

Copeman Laboratories Co. v. General Plastics -

oO UE 8 fg RR Seen 65

Dairy Engineering Corporation v. De-Raef Corp., i

GENET: MEU etsieiaccisbitieabsiidelue isecmiaiscidl ah eal 34

Devex Corporation v. Houdaille Industries, Inc.,

382 F.2d 17

Diamond International Corporation v. Walterhoef-

C8, ZED FSeapp. SSO nena nsncssncnacccecenncecceneecccceee 17

Diamond Rubber Co. of New York v. Consolidated

Rubber Tire Co., 220 U.S. 428, 55 L.ed. 527,

31 S.Ct. 444 iulitlaliiiddaaintanats eas 12, 19

Duo-Flex Corp. v. Building Service Co., 322 F.2d

iP” seieatinineieoncaisaniguaileancdiesemi ea ttt oe 21

E. I. du Pont de Nemours & Company v. Celanese

Corporation, 291 F.Supp. 428 —..000.00..00..000.0...... 29

E. W. Bliss Co. v. Cold Metal Process Co., 47 F.

EINE: “SITE: scilbssecucsieniuhatioestindiiasesatedeiemiielas 34

Fibel Process Co. v. Minnesota & Ontario Paper

Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.ed. 523 ...... 12

Fimco Corporation v. Peterson Filters and Engineer-

ing Co., 406 F.2d 431, cert. den. 395 U.S. 963, 89

S.Ct. 2105, 23 L.ed.2d 749 ooo eee 11, 15

Electronized Chemicals Corp. v. Rad-Mat, Incor-

porated, 228 F. Supp. 781 ........... .. 33

Engineering Develop. Lab. v. Radio Corp. of Amer-

By BAe I PIO wriicccnndsthsascancteesosincceseananiicns costes 34

Fluid Systems v. Great Lakes Equipment Co., 98

PR SP seceigncticnidiiinccdvaiial 34

Fraver v. Studebaker Corp., 11 F.R.D. 94 ..... ease 29

Garrett Corporation v. United States, 422 F.2d 874.. 18

Gatch Wire Goods Co. v. W. A. Laidlaw Wire Co.,

a osc sa umsdecinsmantacunaainee 8

Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,

321 U3. Zio, G4 SAX. 393; 88 Lied 72! ........ 16

Graharm v. John Deere Co., 383 U.S. 1, 15 L.ed.2d

a ee oii seats cians 72% to 22

Gray Tool Co. v. Humble Oil & Refining Co., 186

F.2d 365, cert. den. 341 U.S. 934, 71 S.Ct. 854,

Be te IN os hse ladcxcnccmcesticpacersicensedereneraconetaes 34

Hazeltine Research, Inc. v. Dage Electric Company,

ee pb Boy” ie: Sep emiRatmennartiiette nemrennennlnguat eevrnnni 8

Hazeltine Research v. General Electric Co., 183

fe” He SR RRR ISR ce nt mene ah erite RIE ORR pent A nRToST wren 25, 32

Hirs v. DeLaval Turbine, Inc., supra, 286 F.Supp.

FE ieee ip cide netlan cei nigkccesanaidakiien nokden papi ansaeat ae 21

Holley v. Outboard Marine Corporation, 241

PI OTE ass cn csiss senses tnseesndanerannnnsnacinstiin: suiase 8

Honolulu Oil Corporation v. Shelby Poultry Com-

CN, ZOD DA UT oseeccscas sstctsnscensansocsnnsnsannsansen 21

Hughes, In re, 345 F.2d 184 ............--.----------------- 9

Hughes Aircraft Co. v. General Instrument Corp.,

EE MN, DG insti ess acsannnssnanesnanancidboeracsnnsnne 8

Hughes Blades, Inc. v. Diamond Tool Associates,

Be i Ue pn is sae leita snc aneencaciccconesamens 33

Intermountain Research & Eng. Co. v. Hercules In-

corporated, 406 F.2d 133 .................--..-------+-+-- 30

irani, Application of, 427 F.2d 806 ..............---..---- 18

Keuffel & Esser Company v. Charles Bruning Co.,

DED Fee, TDD nase enscnsccenassincssnessesicnsannivensinananaane 33

Page

Kierulff Associates v. Luria Brothers & Company,

Oe FN Oe iccceer nse

Xing-Seeley Thermos Co. v. Tastee Freez Industries,

Wg, BF We WOW cecvn casas ccrsacc ceeds

Kollsman Instrument Corp. v. Astek Instrument

Comep, 225 Ftea, S56 onc cccccecsccccaseccsvcscessesers

L. F. Strassheim Co. v. Gold Medal Folding Fur-

niture Co., 294 F.Supp. 708 ...0..............-...cc0cc.0-

Lachance, Application of, 390 F.2d 990 ................

Lange, Application of, 280 F.2d 165 ....................

Long, Application of, 347 F.2d 651.000.0200... eee

Long v. Arkansas Foundry Company, 247 F.2d 366

Lorenz v. F. W. Woolworth Co., 305 F.2d 102 ....

Marvel Specialty Company v. Bell Hosiery Mills,

Bg ED TU GI ose escsensncccsasnsensnicnacsnssasouss

Matherson-Selig Co. v. Carl Gorr Color Card, Inc.,

en IY BE Seles

Mercantile National Bank of Chicago v. Quest, Inc.,

FOR FRU. FBG. ccccscicnvecnnsn te 8, 14

Merck & Co. v. Chase Chemical Company, 273 F.

I S iiteticas nisi cane eee ees

Monroe Auto Equipment Co. v. Heckethorn Mfg. &

Supply Co., 332 F.2d 406, cert. den. 379 USS.

888, 85 S.Ct. 160, 136 L.ed.2d 93-00.

Mott Corporation v. Sunflower Industries, Inc., 314

ee OE scicicinsisl es aeiaiond aera eaiaaegn es 8,

Mumm v. Jacob E. Decker & Sons, 301 U.S. 168,

BE BAA, GIS, BE EM, GOS cis csccssccccnspncdnntacns

National Dairy Products Corp. v. Borden Co., 394

Fe EF. chscakesnascomestcon issih sheitchaiedienicaees

29

Page

National Screen Service Corp. v. Poster Exchange,

TT UID cede actahicbatnbienaclaiacineatieiniasaiahnanensiene 33

National Sponge Cushion Co. v. Rubber Corp., 286

F.2d 731, cert. den. 368 U.S. 976, 82 S.Ct. 480,

I I i ins San comeganbonsabenibennnnnneninanes 19

Neff Instrument Corporation v. Cohu Electronics,

I Si sasiannnannaenanimennicceninninnn 19, 26, 33

Ortman v. Stanray Corporation, 371 F.2d 154 ...... 33

Paul E. Hawkinson Co. v. Dennis, 166 F.2d 61 ..28, 31

Plax Corp. v. Elmer E. Mills Corp., 204 F.2d 302 .. 25

Poller v. Columbia Broadcasting System, Inc., et al.,

368 U.S. 464, 82 S.Ct. 486, 7 L.ed.2d 458 ...... 30

Pyle Nat. Co. v. Lewin, 92 F.2d 628 .............. 17, 25

Radio Corporation of America v. Radio Laborato-

ries, 293 U.S. 1, 55 S.Ct. 928, 79 L.ed. 163... 7

Radio Corporation of America, et al. v. Radio En-

gineering Laboratories, Inc., 292 U.S. 1, 54 S.Ct.

Dts Fe Bh, CD cicreeccaancncrntsaccnccccnncccsveconscnsssences 7

Rains v. Cascade Industries, Inc., 402 F.2d 241

Ss ancialnbsnenaldnindshnninnsonanenneestdagee 26, 27, 32

Refractolite Corporation v. Prismo Holding Corpo-

ration et al., 25 F.Supp. 965 ..............------.------0- 30

Reiner v. I. Leon Co., 285 F.2d 501 ...............--- 13, 23

Reiser v. McKee Glass Co., 1 F.R.D. 170 .......... 33

Reynolds Pen Co. v. W. A. Sheaffer Pen Co., 22

PBRD. SOD .2nnnnccccnencensosecnccsecccceceseocscensssssnscccscccccs 34

Ry-Lock v. Sears Roebuck & Co., 227 F.2d 615,

cert. den. 350 U.S. 987, 76 S.Ct. 474, 100 L.ed.

OG rinccainsnninacannernsistannnanacacsasacesnncensenaccssanacssonnnccsne 10

Page

S. H. Kress & Company v. Aghnides, 246 F.2d 718,

cert. den. 355 U.S. 889, 78 S.Ct. 261, 2 L.ed.2d

BF wissinictese ecient ersnsastedecha iach ane ie ick eee 21

Safety Car Heating & Lighting Co., Inc. v. General

Eesetsic Co, 155 P26 SOF acccvccsccssiccscccce cM. 32

Schlumberger Limited v. Douglas Furniture of Cal., .

Oe PA Fe concen ceeded A k®

Sealectro Corporation v. L. V. C. Industries, Inc.,

Ste FT Ge etcntiiactinenead 33

Servaas & Company v. Dritz, 185 F.Supp. 61 .... 33

Shaw v. E. B. & A. C. Whiting Company, 417 F.2d

DFT misiaeneaneeeee iZ, 22

Shelby, Application of, 311 F.2d 807 .................... 18

Smith v. Whitman Saddle Co., 148 U.S. 674, 13

AA, FOR, FF Lit GD aoc inctevstcaseeceness 26

Sponnoble, Application of, 405 F.2d 578 ................ 15

Sporck, Application of, 301 F.2d 686 ....11, 17, 18, 22

Staffin Lewis Corporation v. Rose Derry Co., 9

SS FUE sepetncadular han cameee ei tale eae tet! 34

Tatko Brothers Slate Co. v. Hannon, 157 F.Supp.

277, rev'd, 270 F.2d 571, cert. den. 361 U.S.

915, 80 S.Ct. 260, 4 L.ed.2d 185 .......... 11, 18, 24

Technicon Instruments Corp. v. Coleman Instru-

ments, Inc., 255 F.Supp. 630 .......................:.... 8, 24

Technograph Printed Circuits v. Methode Elect.,

Inc., 356 F.2d 442, cert. den. sub nom. Cro-

name, Inc. v. Technograph Printed Circuits, Ltd.,

384 U.S. 950, 86 S.Ct. 1570, 16 L.ed.2d 547 .... 33

Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36

RI IE Ssieneinsicioy nsesncnacen spuheiienes teaphsashingviphibuemdibacoeaninn 10

Page

Traylor v. Black, Sivalls & Bryson, Inc., 189 F.

RE cece bases s ven cock cniactansiletanencienlaeines 34

Try-Me Beverage and Compound Co. v. Metropole,

pF Ee Samar iaure eterna ete Remo RINE C DT Te 27

Union Nat. Bank of Youngstown v. Superior Steel

Com, 9 FID. AGG scsi 34

United States v. Adams, 383 U.S. 39, 15 L.ed.2d

572, 86 S.Ct. 708 ...........----.-n---nosceecsesecscsenenenseees 45-33

United States Gypsum Co. v. Dale Industries, Inc.,

TR) Fe indicia 8

Van Brode Milling Co. v. Kravex Manufacturing

Comm, Fi FERED. BO wsncscrsessscascercesserennrenntncnianss 30

Van Dette v. Aluminum Air Seal Mfg. Co., 11

TN FO cvinisanccsessiceresssmindionassanbitnencnaniinanaicmaias 34

Van Wanderham, Application of, 378 F.2d 981 ...... 17

Van Wormer v. Champion Paper & Fibre Co., 28

I GED as acsssssssescscenncecsessssssansnhescinnnanseccniens 31

Vermont Structural Slate Co. v. Tatko Bros. Slate

Co., 134 F.Supp. 4, aff'd. 233 F.2d 9, cert. den.

353 U. S. 917, 77 S.Ct. 216, 1 L.ed. 2d 123 .... 34

Vernay Laboratories, Inc. v. Industrial Electronic

Rubber Co., 234 F.Supp. 161 2222.....22.00cccccceesece 28

Wagner, Anplication of, 371 F.2d 877, cert. den.

389 U.S. 1057, 88 S.Ct. 811, 19 L.ed.2d 857,

rehear. den. 396 U.S. 1000, 88 S.Ct. 1201, 20

Oy Fi oii ication sch ciasnnnnntactoniabenasnnnansnn 11

Walt Disney Productions v. Fred A. Niles Communi-

cations Center, 369 F.2d 230 ....................-- 8, 15, 21

Warner, Application of, 379 F.2d 1011, cert. den.

389 U.S. 1057, 88 S.Ct. 811, 19 L.ed.2d 857, reh.

den. 390 U.S. 1000, 88 S.Ct. 1201, 20 L.ed.2d

DN sciences cccsateatiasenadansioabonackatmmaanertaaeens 14, 21

Page

Warner v. Swasey Company v. Held,-256 F.Supp.

WP —" Sslcvciscs puacdpecacos ic asune tampa aaiedg eae amene ae cee 33

Weil v. N. J. Richman Co., 34 F.Supp. 401 ............ 31

Wham-O-Mfg. Co. v. Paradise Mfg. Co., 327 F.2d

PEE scahciedsbsaasucsaileeias aceasta eaten 27

Zegers v. Zegers, Inc., 365 F.2d 156, cert. den. 385

US. 948, 87 S.Ct. 320, 17 L.ed.2d 226 ............ 21

Zero Manufacturing Co. v. Mississippi Milk Pro-

ducers Association, 358 F.2d 853 .......00.0.0002..0.- 14

Rules |

Federal Rules of Civil Procedure, Rule 56(b) .... 3

RM OE Cert, PRUNE SG sasnccccccccanesnecaccassccencsasacctanen 30

Statutes

Peet Abt COE POSE, Bi. HD vccnceiceceissctadassuteetees 2

PONE ACE GE BOGS, BOO, FTE cvscccseemscicccoerccens 2

WAM AiGt GE DOTA, BOG. Fe wecsccnaceinsakssnntnnttcncseccace 3

United States Code, Title 28, Sec. 1254(1) -......... 2

United States Code, Title 35, Sec. 102 .................... 9

United States Code, Title 35, Sec. 103 -.................

seadiaahadeeniinebaiellandaniadids 2,5, 9, 10, 19, 21, 23, 26, 30

United States Code, Title 35, Sec. 171 .............. 2, 26

United States Code, Title 35, Sec. 282 ......00.000022... a» 8

Textbook

112 University of Pennsylvania Law Review (1964),

Approach to Patent Validity, pp. 1169-1184 ...... 24

IN THE

Supreme Court of the United States

October Term, 1971

No. A-78

BATES INDUSTRIES, INC.,

Petitioner,

vS. oe

DAYTONA SPORTS Co. and DAYTONA PRODUCTS, INC.,

and PAULSON MANUFACTURING CORPORATION,

Respondents.

Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit.

The petitioner Bates Industries, Inc. respectfully

prays that a writ of certiorari issue to review the judg-

ment and opinion of the United States Court of Ap-

pels for the Ninth Circuit entered in this proceeding

on April 26, 1971.

Opinion Below.

The opinion of the Court of Appeals is reported as

Bates Industries, Inc. v. Daytona Sports Co., 441 F. 2d

1110 (9 Cir. 1971), and appears in Appendix A

hereto. The District Court’s opinion is reported at 310

F. Supp. 311 (D.C. Cal. 1969).

Jurisdiction.

The judgment of the Court of Appeals for the Ninth

Circuit was entered on April 26, 1971. This petition

_ for certiorari was filed within ninety days thereof for

ae

jurisdictional purposes, such ninety-day period having

been extended by order of Mr. Justice Douglas dated

August 21, 1971. This court’s jurisdiction is invoked

under 28 U.S.C. section 1254(1).

Questions Presented.

1. Whether the courts below improvidentiy granted

and erroneously affirmed summary judgment invalidat-

ing certain claims of petitioner’s utility patent and a

related design patent on the ground of obviousness.

2. Whether in making such determination of ob-

viousness the courts below failed to apply and properly

bring to bear upon the issue of validity of petitioner’s

patents the guidelines, considerations and criteria re-

quired by this Court to be employed in such cases.

Statutory Provisions Invcived.

Section 103 of the Patent Act of 1952, 35 US.C.

section 103:

“A patent may not be obtained . . . if the dif-

ferences 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 hav-

ing ordinary skill in the art to which said subject

matter pertains. . . .”

Section 171 of the Patent Act of 1952, 35 U.S.C.

section 171:

“Whoever invents any new, original and orna-

mental design for an article of manufacture may

obtain a patent therefor, subject to the conditions

and requirements of this title.

—

“The provisions of tnis title relating to patents

‘for inventions shall appiy to.patents for conem,

except as otherwise provided.”

Section 282 of the Patent Act of 1952, 35 U.S.C.

section 282:

“A patent shall he presumed valid. The burden

of establishing invalidity of a patent shall rest on

a party asserting it.” |

Federal Rules of Civil Procedure, 28 U.S.C., Rule

56{b):

“A party against whom a claim . . . is asserted

. may, at any time, move with or without sup-

porting affidavits for a summary judgment in his

favor as to all or any part thereof.”

Statement of the Case.

The utility and design patents in suit, issued in

1963 and 1965, afford a trim and attractive as well as

effective solution to the problem of protecting motor-

cyclists and other wearers of headgear from the sun

and wind. The inventors, Walter R. Hiatt and Michael

M. King, and petitioner as their assignee, believed at

the time of issuance of the patents and now assert that

petitioner’s protective helmet with pivotally attached

flip-up face shield represents a substantial advance over

the ineffective sun visor-helmet combinations of the

British “Stadium” brand visor and the “McHal assem-

bly”, these being the sole prior art cited to or relied

upon by the courts below. The District Judge accurate-

ly described the results of petitioner’s invention as fol-

lows, 310 F. Supp. at 312-313:

“The 918 patent claims a combination con-

sisting of three elements: (1) a standard crash

allio

- helmet with three male snap fasteners rigidly

mounted: on the forehead portion, said helmet

being old in the art, (2) an adapter band using

snap fasteners on the helmet, the adapter band

continuing around to the sides of the helmet with

snap fasteners located on its ends, to which the

shield is pivotally attached, and (3) a transparent

plastic shield which is pivotally mounted to the

adapter band so that it can be rotated up and

away from the wearer’s face, but is ordinarily held

in place by a stop mez 1s so that it substantiaily

covers and protects the face of the wearer.

“The snap fasteners on the adapter band are

not rigidly mounted; two of the three snap fasten-

ers that mount the assembly to the helmet can slide

a small distance along the length of the band.

This permits the adapter band to be attached

easily to helmets of various sizes and shapes,

_ wherein the distance between the three standard

snap fasteners may vary to a small extent. The

stop means used to lock the shield in place consists

of a male element of a snap fastener which locks

into a corresponding hole on the visor or shield.”

The District Court found the stop means utilized by

petitioner’s helmet was not “a mere transposition of

elements” and accordingly that genuine issues of fact

material to the validity of Claim 3 of the utility patent

precluded summary judgment with respect thereto (310

F.Supp. at 316). Claims 1 and 2, however, were found

to be “merely a combination of old elements which did

not accomplish a new result” (310 F.Supp. at 315;

441 F.2d at 1111). Although the District Court based

a

caniitien

its invalidation of petitioner’s design patent upon lack

of newness and originality under 35 U.S.C. § 171

(310 F.Supp. at 316), the Court of Appeals consid-

ered the finding (except to the extent involving the ad-

ditional finding of primary functionality of the design)

actually to be bottomed upon the same factual con-

siderations as those underlying the striking down of the

utility patent (“The differences relied upon are not

non-obvious”, 411 F.2d at 1112).

In reaching its conclusion of obviousness the District

Court made several clearly erroneous factual determina-

tions (illustrative is the finding that the McHal assembly

accomplished all of the objectives the patentees listed

in the utility patent application, 310 F.Supp. at 314;

the uncontroverted fact was rathe- that such applica-

tion included as a chief object thereof the elimination

of the cumbersome, unpivotable peaked sun visor which

principally characterized the McHal assembly, as noted

at 310 F.Supp. 313). Most pertincnt herein, however,

are the District Court’s separate, not-less-than-five-times

reiterated findings that “it was not a new idea” to elim-

inate the peaked visor structure, as petitioner’s helmet

did; or to slidably mount snap fasteners on an adapter

band such that the adapter band could readily be used

interchangeably with different helmets; or to extend the

‘ adapter band to the sides of the helmet and to place

fasteners on the ends of the band in order to pivotally

mount a transparent shield; or to use a stop means to

hold the flip-up shield in place over the wearer’s face;

or to eliminate the peaked visor in order to position the

NR EEE

poe San

transparent shield close to the wearer’s face (310 F.

Supp. at 315). A cursory reading of the opinions below

demonstrates that the ultimate conclusion of obvious-

ness is predicated entirely upon findings that the sepa-

rable “not new idea” elements of petitioner’s patents

existed in, or were anticipated by, one or the other of

two prior art references. Petitioner respectfully submits

that the decisions below were properly rendered only if,

as a matter of law, such findings of non-newness or

existence in the prior art of individual elements of

petitioner’s new combination alone suffice to compel a

holding that the statutory command of nonobviousness

has not been met.

po, So

R_ASONS FOR GRANTING THE WRIT.

Granting certiorari herein will (1) serve to settle nn-

portant issues of patentability as to which the Circuits

have tended to diverge; (2) enable this Court to ex-

pand upon the guidance to the lower federal courts in

interpreting the nonobviousness requirement provided

by Graham v. John Deere Co., 383 U.S. 1, 17-18, 15

L.ed.2d 545, 556, 86 S.Ct. 684 (1966) and United

States v. Adams, 383 U.S. 39, 51-52, 15 L. ed.2d 572,

580, 86 S.Ct. 708 (1966); and (3) promote the uni-

form administration of the patent system.

Granting certiorari will afford this Court an op-

portunity in the exercise of its supervisory function to

deliver a cautionary admonition directing adherence to

the following patent law principles, none of which was

observed by the lower courts herein.

+

1. The Statutory Presumption of Patent Validity Must

Always Be Overcome.

The courts below omitted even to mention, and en-

tirely ignored, the statutory presumption ot validity aris-

ing from the issuance of a nt and conferred by 35

U.S.C. § 282. As Mr. Justice Cardozo remarked in

Radio Corporation of America v. Radio Laboratories,

293 US. 1, 7, 55 S.Ct. 928, 931, 79 L.ed. 163: “A

patent regularly issued * * * is presumed to be valid

until the presumption has been overcome by convincing

evidence of error.” And in Radio Corporation of Amer-

ica, et al. v. Radio Engineering Laboratories, Inc.,

292 US. 1, 7-8, 54 S.Ct. 752, 755, 78 L.ed. 1453,

1458: “. . . [O]ne otherwise an infringer who as-

sails the validity of a patent fair upon its face bears a

heavy burden of persuasion, and fails unless his evi-

dence has more than dubious preponderance.”

—

Every reasonable doubt should be resolved against

the defendant who is attempting to show invalidity.

Mumm v. Jacob E. Decker & Sons, 301 U.S. 168,

171, 57 S.Ct. 675, 81 L.ed. 983, 985. The presumption -

has been said to be “. . . not an idle gesture . . . and

is not to be overthrown except by clear and cogent

evidence. . . .” Copease Mfg. Co. v. American Photo-

copy Equipment Co., 298 F.2d 772, 777 (7 Cir. 1961).

“If the burden on the defendant to overthrow

the presumption of validity ‘is a heavy one,’ it fol-

lows that courts should be slow to hold any patent

which has been duly issued, void on its face.”

Gatch Wire Goods Co. v. W. A. Laidlaw Wire Co.,

108 F.2d 433, 435 (7 Cir. 1939).

Also so holding are Mercantile National Bank of

Chicago v. Quest, Inc., 303 F.Supp. 926, 932 (D.C.

Inc. 1969); Bela Seating Company v. Poloron Products,

Inc., 297 F.Supp. 489, 507 (D.C. Ill. 1968); United

States Gypsum Co. v. Dale Industries, Inc., 383 F.2d

497, 502 (6 Cir. 1967); Hughes Aircraft Co. v. Gen-

eral Instrument Corp., 275 F.Supp. 961, 972-973 (D.C.

R.I. 1967); Walt Disney Productions v. Fred A. Niles

Communications Center, 369 F.2d 230, 234 (7 Cir.

1966); King-Seeley Thermos Co. v. Tas:ce Freez Indus-

tries, Inc., 357 F.2d 875, 879 (7 Cir. 1966); Arthur

J. Schmitt Found. v. Stockham Valves & Fittings, Inc.,

292 F.Supp. 893, 906-907 (D.C. Ala. 1966); Techni-

con Instruments Corp. v. Coleman Instruments, Inc.,

255 F.Supp. 630, 640 (D.C. Ill. 1966); Holley v. Out-

board Marine Corporation, 241 F.Supp. 657, 662 (D.C.

Ill. 1964); Mott Corporation v. Sunflower Industries,

Inc., 314 F.2d 872, 877 (10 Cir. 1963); Hazeltine Re-

search, Inc. v. Dage Electric Company, Inc., 271 F.2d

a

218, 224 (7 Cir. 1959); Artmoore Co. v. Dayless Mfg.

Co., 208 F.2d 1, 3 (7 Cir. 1953); Charles Peckat Mfg.

Co. v. Jacobs, 178 F.2d 794, 801 (7 Cir. 1949), cert.

den. 339 U.S. 915, 70 S.Ct. 575, 94 L.ed. 1340.

2. The Proper Focus is Upon the Invention as a

Whole, and Not Upon the Individual Elements or

‘Features Disclosed Singularly in the Prior Art:

Preliminarily it may be noted that the courts below

are clearly in error to the extent their holdings sustain

respondents’ contention (310 F.Supp. at 314) that peti-

tioner’s patents were “anticipated” by the prior art.

The anticipation doctrine is generally used in connec-

tion with 35 U.S.C. § 102 and is considered inap-

propriate to the issue of obviousness under 35 U.S.C.

§ 103. Application of Lachance, 390 F.2d 990, 993-

994 (C.C.P.A. 1968); In re Hughes, 345 F.2d 184

(C.C.P.A. 1965). The doctrine is in any event inap-

posite here, as the District Court’s opinion itself reveals

that the peaked visor structure of the prior art McHal

assembly did not contain the adapter band and all

other elements of petitioner’s patents united in the same

way to perform an identical function:

“ _ . anticipation is strictly a technical defense.

As set forth in Walker v. General Motors Corpora-

tion, 362 F.2d 56, 58 (9th Cir. 1966),

‘«“* * * Unless all of the same elements are

found in exactly the same situation and united

in the same way to perform the identical func-

tion” in a single prior art reference “there is

no anticipation.” Stauffer v. Slenderella Systems

of California, Inc., 254 F.2d 127, 128 (9th

Cir. 1957); see also National Lead Co. v. West-

ern Lead Prods. Co., 324 F.2d 539, 554 (9th

=

Cir. 1963); McCullough Tool Co. v. Well Sur-

veys, Inc., 343 F.2d 381, 398 (10th Cir.

1965).’

See also Ceramic Tilers Supply v. Tile Counsel of

America, 378 F.2d 283, 284, 285 (9th Cir.

1967); and Ling-Temco-Vought v. Kollsman In-

strument Corp., 372 F.2d 263, 267 (2nd Cir.

1966).

“Accordingly, in order for the summary judg-

ment here sought by Defendant to be proper,

there must be found in one of the Stedman and

Cohen patents, relied on by Defendant, ‘all of

the elements’ of Plaintiff's claimed invention

‘united in the same way’ to perform the ‘identical

function” . . .” [Emphasis added.] Schlum-

berger Limited v. Douglas Furniture of Cal., 275

F.Supp. 73, 75, 76 (D.C. Cal. 1967).

And as has been noted with regard to the doctrine

of anticipation: “. . . [A] finding which * * * picks

out one element in one prior patent and another ele-

ment in another prior patent as a demonstration of

anticipation, is manifestly insufficient to overcome the

presumption arising from the issuance of the patent

...” Ry-Lock v. Sears Roebuck & Co., 227 F.2d 615

(9 Cir. 1955), cert. den. 350 U.S. 987, 76 S.Ct. 474,

100 L.ed. 854. See also, Topliff v. Topliff, 145

U.S. 156, 161, 12 S.Ct. 825, 827-828, 36 L.ed. 658.

The obviousness test of 35 U.S.C. § 103 merely

means that a patent may not be obtained if the dif-

ferences 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

REA POT St OLRM TI

Per ard 4

— ,

invention was made to a person having ordinary skill

in the art to which said subject matter pertains. Tatko

Brothers Slate Co. v. Hannon, 157 F.Supp. 277, 282

(D.C.Vt. 1957), rev'd on other grounds, 270 F.2d 571,

cert. den. 361 U.S. 915, 80 S.Ct. 260, 4 L.ed.2d 185.

As this Court’s Graham decision has pointed out,

obviousness to the hypothetical person having ordinary

skill in the art is an illusive factua! matter to be de-

termined by a trial court. To be ascertained are the

scope and content of all of the prior art and the dif-

ferences between such prior art and the claims at issue;

the level of ordinary skill in the pertinent art must be

factually determined; and such considerations as com-

mercial success, long felt but unsolved needs, and the

failure of others to accomplish the claims at issue

should also be taken into account. Graham v. John

Deere Co., 383 U.S. at 17, 15 L.ed.2d at 556, 86 S.

Ct. 684; Eimco Corporation v. Peterson Filters and

Engineering Co., 406 F.2d 431, 435 (10 Cir. 1968),

cert. den. 395 U.S. 963, 89 S.Ct. 2105, 23 L.ed.2d

749; Application of Sporck, 301 F.2d 686, 690

(C.C.P.A. 1962); Application of Wagner, 371 F.2d

877 (C.C.P.A. 1967), cert. den. 389 U.S. 1057, 88

S.Ct. 811, 19 L.ed.2d 857, rehearing denied 390 US.

1000, 88 S.Ct i291, 20 L.ed.2d 101; Application of

Bulina, 362 F.2d 555, 558 (C.C.P.A. 1966).

The District Court in applying the obviousness. test

herein appears to have considered only that (1) each of

the individual elements of petitioner’s patents “was not

a new idea” and (2) such combination of old elements

did not “accomplish a new result” (310 F.Supp. at

315). It is well established, however, that patentabil-

ity is not dependent upon either or both “new ideas”

RTA iar MRT EES PTAC CERI D IRRE EREDAR

=

or “new results”. Since at least as early as this Court's

decision in Eibel Process Co. v. Minnesota & Ontario

Paper Co., 261 U.S. 45, 67, 43 S.Ct. 322, 67 L.ed.

523, the questidn of patentability has been held proper-

ly to focus upon “the invention as a whole”. In United

States v. Adams, 383 U.S. 39, 15 L.ed. 2d 572, 86 S.

Ct. 708, concepts which were all old individually were

united, “. . . each of the elements of the Adams battery

[being] well known in the prior art. . .”, 383 US.

at 51-52, 15 L.ed.2d at 580, 86 S.Ct. 708. In Diamond

Rubber Co. of New York v. Consolidated Rubber Tire

Co., 220 U.S. 428, 55 L.ed. 527, 31 S.Ct. 444, 451, this

Court said: “. . . the elements of a combination may

be all old. In making a combination the inventor

has the whole field of mechanics to draw from.” [Em-

phasis added. ]

“ | That the elements are old does not preclude

patentability. . . .” Baut v. Pethick Construction Com-

pany, 262 F.Supp. 350, 357 (D.C.Pa. 1966); “. . .

The mere recital of the known elements in the art does

not, without more, invalidate the patent under Section

103... .” Shaw v. E. B. & A. C. Whiting Company,

417 F.2d 1097, 1104 (2 Cir. 1969); “. . . separate

presence in the prior art of each element of combination

will not prevent a finding of invention. Wham-O-Mfg.

Co. v. Paradise Mfg. Co., 327 F.2d 748 (9th Cir.

1964).” Blumcraft of Pittsburgh v. Citizens & South.

Nat. Bank of S. C., 286 F.Supp. 448, 456 (D.C.S.C.

1968), rev'd on other grounds 407 F.2d 557, cert. den.

395 US. 961, 89 S.Ct. 2103, 23 L.ed.2d 747, rehear-

ing denied 396 U.S. 870, 90 S.Ct. 39, 24 L.ed.2d

125; “. . . It is idle to say that combinations of old

elements cannot be inventions; substantially every inven-

tion is for such a ‘combination’: that is to say, it con-

BME Rk rcrscs om. SEROTONIN Pee

_!

sists of former elements in a new assemblage. All the

constituents may be old. . . .” Reiner v. I. Leon Cos

285 F.2d 501, 503-504, per L. Hand, J. [Emphasis

added}.

“At best, one could only say that the elements

of Plaintiffs’ combination are disclosed singularly

in the prior art. This, however, is not enough and,

if the patented combinations would not have been

cbvious, then the patents are valid. United States

v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d

572 (1946).” Hirs v. DeLaval Turbine, Inc., 286

F.Supp. 754, 759-760 (D.C.Fla. 1968).

“The fact that the Podlesak method combined

separate steps that were old and revealed in the

prior art does not negate patentability. Copease

Mfg. Co. v. American Photocopy Equip. Co., 298

F.2d 772 (7th Cir., 1961). In addition, that no

one discovered the patented method until Podle-

sak, though the individual steps were available for

so long, is evidence of nonobviousness. See United

States v. Adams, 383 U.S. 39, 51, 52, 86 S.Ct.

708, 15 L.Ed.2d 572 (1966).” National Dairy

Products Corp. v. Borden Co., 394 F.2d 887,

890 (7 Cir. 1968).

« . as stated by Mr. Justice Clark in United States

vy. Adams, 383 US. 39, 50, 86 S.Ct. 708, 713, 15

L.ed.2d 572 (1966). whether the individual elements

of a combination are old ‘begs the question,’ as ‘Tf such

a combination is novel, the issue is whether bringing

them together as taught by Adams was obvious in the

light of the prior art.’ Thus, where the invention sought

to be patented resides in a combination of old ele-

ments, the proper inquiry is whether bringing them

TERETE PN OB NRE tN RTT a NT ASN A MR gM Lge

—14—

together was obvious and not, whether one of ordinary

skill, having the invention before him, would find it ob-

vious through hindsight to construct the invention

from elements. of the prior art.” Application of

Warner, 379 F.2d 1011, 1016 (C.C.P.A. 1967), cert.

den. 389 U.S. 1057, 88 S.Ct. 811, 19 L.ed.2d 857,

rehearing denied 390 U.S. 1000, 88 S.Ct. 1201, 20

L.ed.2d 101. See also, Long v. Arkansas Foundry

Company, 247 F.2d 366, 370 (8 Cir. 1957); Mercan-

tile National Bank of Chicago v. Quest, Inc., supra, 303

F.Supp. 926, 932 (D.C. Ind. 1969); Copease Mfg. Co.

v. American Photocopy Equipment Co., supra, 298 F.

2d 772, 780-781 (7 Cir. 1961); Application of Auf-

hauser, 399 F.2d 275, 280-281 (C.C.P.A. 1968); Zero

Manufacturing Co. v. Mississippi Miik Producers Asso-

ciation, 358 F.2d 853 (5 Cir 1966); Blaw-Knox Com-

pany v. I. D. Lain Company, 230 F.2d 373 (7 Cir.

1956); Matherson-Selig Co. v. Carl Gorr Color Card,

Inc., 301 F.Supp. 336, 341-342 (D.C. Ill. 1967).

Emphasis by the courts below upon the alleged fact

that petitioner’s patents did not “accomplish a new

result” was also misplaced, and certainly not determina-

tive of patentability.

“Whether the elements are old or new, the new

arrangement or combination of them is an entity

entirely distinct from the elements and is patentable

if it either produces a new result or performs an

old result in an improved manner. . . .” [Emphasis

added.} Marvel Specialty Company v. Bell Hosiery

Mills, Inc., 216 F.Supp. 824, 826 (D.C.N.C.

1963).

“. . . when elements old in the art are combined

_ together in a manner which secures a new and

useful result or an old result in a more facile,

tide

. economical and efficient manner, there is a patent-

able combination. McCullough Tool Co. v. Well

Surveys, Inc., supra; Oliver United Filters, Inc. v.

Silver, 10 Cir., 206 F.2d 658, cert. denied 346

U.S. 943, 74 S.Ct. 308, 98 L.Ed. 416.” [Emphasis

added.] Eimco Corporation v. Peterson Filters and

Engineering Co., 406 F.2d 431, 434 (10 Cir.

1968), cert. den. 395 U.S. 963, 89 S.Ct. 2105, 23

L.ed.2d 749. :

“, .. A patentable invention, within the ambit

of 35 U.S.C § 103, may result even if the inventor

has, in effect, merely combined features, old in

the art, for their known purpose, without producing

anything beyond the results inherent in their use.

... [Emphasis added.] Application of Sponnoble,

405 F.2d 578, 585 (C.C.P.A. 1969).

“A novel combination of old elements which so

cooperate as to produce a. . . substantial increase

in efficiency is patentable. Lewyt Corporation v.

Health-Mor, Inc., 7 Cir., 181 F.2d 855, 857, 858;

Helms Products v. Lake Shore Mfg. Co., supra, 227

F.2d 681; Weller Mfg. Co. v. Wen Products, Inc.,

7 Cir., 231 F.2d 795, 798; Mojonnier Dawson Co.

v. United States Dairies Sales Corp., 7 Cir., 251

F.2d 345.” Copease Mfg. Co. v. American Photo-

copy Equipment Co., supra, 298 F.2d 772, 781-782

(7 Cir. 1961). See also Mercantile Nationcj Bank

of Chicago v. Quest, Inc., supra, 303 F.Supp. 926,

932 (D.C.Ind. 1969); Walt Disney Productions v.

Fred A. Niles Communications Center, supra, 369

F.2d 230, 234 (7 Cir. 1966).

3.

a

Simplicity Is No Proper Criterion of Obviousness.

Petitioner believes the courts below to have been be-

guiled by the seeming simplicity of its patented helmet

structures. It is of no significance, however, that “viewed

after the event, the means * * * adapted seem simple

and

such as should have been obvious to those who

worked in the field, but this is not enough to negative

invention.” Goodyear Tire & Rubber Co. v. Ray-O-Vac

Co.,

721.

321 U.S. 275, 279, 64 S.Ct. 593, 594, 88 L.ed.

' “. |. But it is plain from the evidence, and from

the very fact that it was not sooner adopted and

used, that it did not, for years, occur in this light

to even the most skillful persons. It may have been

under their very eyes; they may almost be said to

have stumbled over it; but they certainly failed to

see it, to estimate its value, and to bring it into

notice. * * * Now that it has succeeded, it may

seem very plain to anyone that he could have done

it as well. This is often the case with inventions

of the greatest merit.” Carnegie Steel Company v.

Cambria Iron Company, 185 U.S. 403, 446, 22

S.Ct. 698, 715, 46 L.ed. 968.

In overturning the lower court’s invalidation of an

“old” device for a windshield sun visor designed to

clamn onto an i.utomobile without welding or perfora-

tion of the automobile budy, the Seventh Circuit noted:

“That Peckat’s device now seems comparatively

simple, of course, is no criterion of his invention.

‘The apparent simplicity of a new device often

leads an inexperienced person to think that it

would have occurred to anyone familiar with tne

subject; but the decisive answer is that with dozens

and perhaps hundreds of others laboring in the

dialed PELLET EL ELIE LET it IERIE TAS STN RE gL OIA DE MY pO AEE on age ENE ye ONG

‘. _— =

same field, it had never occurred to anyone before.

The practiced eye of an ordinary mechanic may

be sufficiently trusted to see what ought to be

apparent to everyone.’ Potts v. Creager, 155 U. S.

597, 608, 15 S.Ct. 194, 39 L.Ed. 275.

Charles Peckat Mfg. Co. v. Jacobs, supra, 178

F.2d 794, 801 (7 Cir. 1949), cert. den. 339 US.

915, 70 S.Ct. 575, 94 L.ed. 1340.

“The fact that the invention seems simple after it is

made is not determinative of the question of obvious-

ness. If this were the rule, many of the most beneficial

patents would be stricken down. . . .” Application of

Van Wanderham, 378 F.2d 981, 987 (C.C.P.A. 1967);

Application of Sporck, supra, 307 F.2d 686, 690

(C.C.P.A. 1962). “. . . [S]implicity, far from being

an objection to invention, ‘may constitute its great ex-

cellence and value.’ Chesapeake & Ohio Railway Co.

v. Kaltenbach, 4 Cir. 1938, 95 F.2d 801, 804; ‘* * *

some of the simplest advances have been the most non-

obvious.’ [Citations omitted.]” Diamond International

Corporation v. Walterhoefer, 289 F.Supp. 550, 553

(D.C.’4d. 1968). “. . . But the fact that the solution

was simple does not mean the solution was obvious. . .

Courts have rejected as a test of invention the apparent

simplicity of an invention when viewed in retrospect.

[Citations omitted.]” AMP Incorporated v. Vaco

Products Co., 280 F.2d 518, 520-521 (7 Cir. 1960),

cert. den. 364 U.S. 921, 81 S.Ct. 286, 5 L.ed.2d 260.

“It is also insisted that the idea involved in appellee’s

device is so simple and obvious it does not constitute

invention. True, ii now has that appearance. The fact,

however, that this improvement was long overlooked,

using devices far less satisfactory, cannot be ignored.”

Pyle Nat. Co. v. Lewin, 92 F.2d 628, 630 (7 Cir. 1937).

LN ASME GP Stat BE ANIM

oO

*. . . [A] ‘little modification’ can be a.most unobvious

one.” Application of Irani, 427 F.2d 806, 809 (C.C.P.A

1970). “. . . [O]ften, as here, simple changes are

unobvious when viewed in light of the history of the

art. Eibel Process Co. v. Minnesota & Ontario Paper

Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923),

...” Garrett Corporation v. United States, 422 F.2d 874

884 (C.C. 1970). “. . . [I]t is elementary that small

changes in a crowded art may constitute invention.”

In re Baum, 123 F.2d 662, 664 (C.C.P.A. 1941);

Application of Lange, 280 F.2d 165, 168 (C.C.P.A.

1960). “. .. The fact that, viewed after the event, the

means which the patentee adopted seem simple and such

as should have been obvious to those skilled in the trade,

is not enough to negative invention. . . .” Tatko Broth-

ers Slate Co. v. Hannon, supra, 157 F.Supp. 277, 283

(D.C. Vt. 1957), rev’d on other grounds, 270 F.2d

571, cert. den. 361 U.S. 915, 80 S.Ct. 260, 4 L.ed.2d

185. “The simplicity of this useful invention is, in

retrospect, some evidence that it was not obvious to a

person of ordinary skill in the art. . . . Expanded Metal

Co. v. Bradford, 214 U.S. 366, 29 S.Ct. 652, 53 L.Ed.

1034.” Application of Shelby, 311 F.2d 807, 810

(C.C.P.A. 1963).

In Application of Sporck, supra, it was said, 301

F.2d at 689:

“Once appellant’s solution to the problem of

making a tapered wall frusto-cone is disclosed, it

is easy to see how the prior references can be modi-

fied and manipulated to produce this type of cone.

The change admittedly is simple and by hind-

sight seems obvious. However, the simplicity of

new inventions is oftentimes the very thing that is

not obvious before they are made. . . .” See also,

eC te

~~

Application of Cable, 347 F.2d 872, 878 (C.C.P.A

1965); National Sponge Cushion Co. v. Rubber

Corp., 286 F.2d 731, 735 (9 Cir. 1961), cert.

den. 368 U.S. 976, 82 S.Ct. 480, 7. L.ed.2d 438;

Neff Instrument Corporation v. Cohu Electronics,

Inc., 298 F.2d 82, 88 (9 Cir. 1961); Calhoun v.

State Chemical Manufacturing Company, 153 F.

Supp. 293, 296 (D.C. Ohio 1957).

4. Hindsight Reconstruction May Not Be Employed

in Assessing Obviousness.

Closely related is the prohibition against the use of

hindsight in 35 U.S.C. § 103 evaluations, for as this

Court has observed:

“, . » Knowledge after the event is always easy,

and problems once solved present no difficulties,

indeed, may be represented as never having had

any, and expert witnesses may be brought for-

ward to show that the new thing which seemed to

have eluded the search of the world was always

ready at hand and easy to be seen by a merely

skillful attention. But the law has other tests of

the invention than subtle conjectures of what might

have been and yet was not. . . .” Diamond Rubber

Co. of N. Y. v. Consolidated Rubber Tire Co.,

supra, 220 U.S. 428, 435, 31 S.Ct. 444, 447, 51

L.ed. 527.

Petitioner believes the courts below “slipp[ed] into

hindsight” in the manner cautioned against by Gra-

ham v. John Deere Co., supra, 383 U.S. at 36, 15 L.

ed.2d at 566, 86 S.Ct. 684 and Monroe Auto Equip-

ment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d

406, 412 (6 Cir. 1964), cert. den. 379 U.S. 888, 85

S.Ct. 160, 136 L.ed.2d 93.

—20—

Such use of hindsight reconstruction of the prior art

to arrive at a conclusion of obviousness has often been

held to be impermissible.

“.. . But only through hindsight does the design

appear obvious, which of course is not the test.

In applying the test of invention over prior art,

we must bear in mind that hindsight is more re-

vealing than foresight. Preformed Line Products

Co. v. Fanner Mfg. Co., 328 F.2d 265, 271 (6th

Cir. 1964), cert. den’d. 379 U.S. 846, 85 S.Ct.

56, 13 L.Ed.2d 51... .” Blumcraft of Pittsburgh

v. Citizens & South. Nat. Bank oj S.C., supra, 286

F.Supp. 448, 455 (D.C.S.C. 1968), rev'd on other

grounds 407 F.2d 557, cert. den. 395 U.S. 961,

89 S.Ct. 2103, 23 L.ed.2d 747, rehearing denied

396 U.S. 870, 90 S.Ct. 39, 24 L.ed.2d 125.

“«e * * “Hindsight” is not a proper basis for

determining patentability. While a particular solu-

tion to a problem may seem simple in retrospect,

after its disclosure, foresight applied as of the date

of the invention is the only proper test of invention.

* * *'” Matherson-Selig Co. v. Carl Gorr Color

Card, Inc., supra, 301 F.Supp. 336, 343 (D.C.

Ill. 1967).

“‘* * * Obviousness does not mean that one

skilled in the art can perceive the solution after

it has been found and pointed out by someone

else; the test of obviousness is as of an earlier

time, when the search is on. * * *’

“(35 U.S.C. § 103] . . . provides that a patent

may not be obtained if, in the light of the prior

art, the subject matter as a whole would have

been obvious to a person having ordinary skill

in the art. The Courts must provide an answer to

a

that question, but they should not do so on the

basis of subjective speculation as to what, after

everything has been disclosed to it, might have

seemed obvious to it. . . .” Honolulu Oil Corpo-

ration v. Shelby Poultry Company, 293 F.2d 127,

131 (4 Cir. 1961); S. H. Kress & Company v.

Aghnides, 246 F.2d 718, 723 (4 Cir. 1957), cert.

den. 355 U.S. 889, 78 S.Ct. 261, 2 L.ed.2d 189.

In appraising obviousness under Section 103, the

prior art must be viewed from a point in time just

before the invention was perfected. Since many things

may seem obvious after they have been made, courts

must guard against the use of hindsight. Merck & Co.

v. Chase Chemical Company, 273 F.Supp. 68, 84

(D.C.N.J. 1967). “Nothing in this world is more ob-

vious than that which is obvious by hindsight after the

fact of making an invention.” Abington Textile Ma-

chinery Works v. Carding Specialists [Canada] Ltd.,

249 F.Supp. 823, 834 (D.C.D.C. 1965); Walt Disney

Productions v. Fred A. Niles Com. Ctr., Inc., supra,

369 ©.2d 230, 234 (7 Cir. 1966). “. . . A method

of analysis, dissection and reassembly through hind-

sight always needs close scrutiny. [Citations omitted.]”

Hirs v. DeLaval Turbine, Inc., supra, 286 F.Supp.

754, 759 (D.C.Fia. 1968). See also, Application of

Warner, supra, 379 F.2d 1011, 1015 (C.C.P.A. 1967),

cert. den. 389 U.S. 1057, 88 S.Ct. 811, 19 L.ed.2d

857, rehearing denied 390 U.S. 1000, 88 S.Ct. 1201,

20 L.ed.2d 101; Zegers v. Zegers, Inc., 365 F.2d 156,

159 (7 Cir. 1966), cert. den. 385 U.S. 948, 87 S.Ct.

320, 17 L.ed.2d 226; Mott Corporation v. Sunfiower

Industries, Inc., 314 F.2d 872, 879 (10 Cir. 1963);

Duo-Flex Corp. v. Building Service Co., 322 F.2d 94

(5 Cir. 1963).

5.

~~

The Teachings and/or Application Disclosures of

the Patent in Issue Should Not Be Considered in

the Course of the Judicial Weighing of Obvious-

ness.

In resolving the obviousness issue herein the District

Court gave extensive consideration to the disclosures

contained in the application for petitioner’s utility pat-

ent (310 F.Supp. at 313). This was clearly improper.

“

.

. The question of obviousness must be

weighed without recourse to the disclosure of the

applicant's application. In re Sporck, 301 F.2d

686, 49 CCPA 1039. . . .” [Emphasis added.]

Application of Long, supra, 347 F.2d 651, 655-

656 (C.C.P.A. 1965).

. In resolving the question of obviousness,

the judicial view must not include the knowledge

contributed by the patentee; the teachings of his

patent are irrelevant when determining what

‘would have been obvious’ to one skilled in the

prior art before he created his ‘manufacture.’ Ap-

plication of Aufhauser, 399 F.2d 275, 277 (C.C.

P.A. 1968); ‘Application of Warner, 379 F.2d

1011, 1016 (C.C.P.A. 1967).” [Emphasis

added.] Shaw v. E. B. and A. C. Whiting Com-

pany, 417 F.2d 1097, 1105 (2 Cir. 1969).

. This [the obviousness test of 35 U.S.C.

103] requires us to view the prior art without

reading into that art the teachings of appel-

lant’s invention. In re Murray and Peterson, 268

F.2d 226, 46 CCPA 905.” [Emphasis added. |

Application of Sporck, supra, 301 F.2d 686, 689

(C.C.P.A. 1962).

a

The federal courts oft-times have been enjoined to

. Tesist the temptation to read into the -prior art

the teachings of the invention in issue.” Graham v.

John Deere Co., supra, 383 U.S. at 386, 15 L.ed.2d at

566, 86 S.Ct. 684; Application of Aufhauser, supra,

399 F.2d 275, 277 (C.C.P.A. 1968). 7

“

.

6. In Applying the Standard of Nonobviousness, the

Practical Criteria and Subtests Are Not to Be

Judicially Ignored,

The practical difficulties in application of the 35

U.S.C. § 103 nonobviousness test have not gone un-

noted:

“The test laid down is indeed misty enough. It

directs us to surmise what was the range of in-

genuity of a person ‘having ordinary skill’ in an

‘art’ with which we are totally unfamiliar. . . .

There are indeed some sign posts: e.g. how long

did the need exist; how many tried to find the

way; how long did the surrounding and accessory

arts disclose the means; how immediately was the

invention recognized as an answer by those who

used the new variant? . . .” [Emphasis added.]

Per L. Hand, J., Reiner v. I. Leon Co., 285 F.

2d 501 (2 Cir. 1960); Application of Cable, supra,

347 F.2d 872, 880 (C.C.P.A. 1965).

Additional reference to the economic, motivational

and non-technical issues to be interstitially found in

the obviousness issue and to be canvassed as a practical

aid to the resolution thereof has been made by this

Court, Graham v. John Deere Co., 383 U.S. at 36, 15

L.ed.2d at 566, 86 S.Ct. 684, and by the writers, see

Note, Subtests of “Nonobviousness”: A Nontechnical

r NOTE LS SRT EL PE OS SAL PITY Eee, Par OND PO er EDI re LIN" OORT

ee ll

24

Approach to Patent Validity, 112 U.Pa.L.Rev. 1169-

1184 (1964).

Particular attention has been given to the appropriate- :

ness of determining the questioned patent’s commercial i

success or lack thereof. “Commercial success of the

patentee’s device, coupled with a showing that the in-

vention filled a long-sought need, is supporting evi-

dence which may be utilized to determine that the in-

vention was not obvious. . . .” Technicon Instruments

Corp. v. Coleman Instruments, Inc., supra, 255 F.Supp.

630, 640 (D.C. Ill. 1966).

“ . the marked commercial success of the in-

vention . . . is entitled to substantial weight in

determining whether an improvement amounts to

invention. Goodyear Tire & Rubber Co. v. Ray-

O-Vac Co., 321 US. 275, 64 S.Ct. 593, 88

L.Ed. 721.” Calhoun v. State Chemical Manufac-

turing Company, 153 F.Supp. 293, 297 (D.C. Ohio

1957). See also, American Safety Table v. Schreii-

er, 269 F.2d 255, 261 (2 Cir. 1959), cert. den. |

361 U.S. 915, 80 S.Ct. 259, 4 L.ed.2d 185.

The District Court herein, however, failed to give

any consideration whatever to petitioner’s demonstrated

commercial success with. the patents in issue.

The nature and extent of prior experimentation and

the failure of others to devise the structure in question

despite repeated attempts is also appropriately to be

considered. “. . . One criterion of invention is that

others have sought and failed, even where the discovery

is simple. . . .” Tatko Brothers Slate Co. v. Hannon,

supra, 157 F.Supp. 277, 283 (D.C.Vt. 1957), rev'd on

other grounds 270 F.2d 571, cert. den. 361 U.S. 915,

80 S.Ct. 260, 4 L.ed.2d 185. |

—25—

.. . AS was said in Expanded Metal Company

v. Bradford, 214 U.S. 366, on page 381, 29 S.Ct.

652, 656, 53 L.Ed. 1034: ‘It may be safely said

that if those skilled in the mechanical arts are

working in a given field, and have failed, after

repeated efforts, to discover a certain new and use-

ful improvement, that he who first makes the.

discovery has done more than make the obvious

improvement which would suggest itself to a me-

chanic skilled in the art, and is entitled to pro-

tection as an inventor.’” Pyle Nat. Co. v. Lewin,

supra, 92 F.2d 628, 630 (7 Cir. 1937).

“To say now in retrospect that the patented

combination was ‘obvious’ is totally to ignore the

evidence that though the means were well

known, none of the many who worked for years

to obtain the result achieved by Schliephacke

thought of mcking this allegedly ‘obvious’ com-

bination. . . .” [Emphasis added.] Medina, J., dis-

senting in Lorenz v. F. W. Woolworth Co., 305 F.

2d 102 (2 Cir. 1962); Application of Cable, supra,

347 F.2d 872, 881 (C.C.P.A. 1965). See also

Copeman Laboratories Co. v. General Plastics

Corp., 149 F.2d 962, 964 (7 Cir. 1945); Plax

Corp. v. Elmer E. Mills Corp., 204 F.2d 302,

310 (7 Cir. 1953): Continental Can Co.: v.

Anchor Hocking Glass Corp., 255 F. Supp. 67, 75

(D.C. Ill. 1965).

But the District Court herein, after comparing and

assigning evidentiary weight to the deposition testimony

of Victor Paulson and Frederick F. Welsh and the af-

fidavit of Marlin H. Wykoff (310 F.Supp. at 315) [in

violation of the doctrine of Hazeltine Research v. Gen-

eral Electric Co., infra, 183 F.2d 3, 7 (7 Cir. 1950)],

om

summarily rejected substantial evidence of the failure

of others to perfect a helmet structure similar to peti-

tioner’s. All the evidence in the record before the Dis-

trict Court tended to establish the inability of others to

devise a satisfactory adapter band and flip-up assembly

equivalent to petitioner’s.

The District Court declined to give any effect -what-

ever to evidence (deposition of Jack Latta, affidavit of

Marlin H. Wykoff) that a substantial market demand

pre-existed the development of petitioner’s helmet; in-

appropriately rejected evidence of the use of petitioner’s

structure by another who had been trying to develop a

similar product (Colgate Palmolive Co. v. Carter Prod-

ucts, Inc., 230 F.2d 855 (4 Cir. 1956), cert. den.

352 US. 843, 77 S.Ct. 43, 1 L.ed. 2d 59; Neff Instru-

ment Corporation v. Cohu Electronics, Inc., supra, 298

F.2d 82, 87 (9 Cir. 1961); and failed to consider at

all such criteria as the existence of a felt need for an

advancement in the art, the extensiveness of the search

for improvements therein, and whether petitioner’s

device was recognized as valuable in its market.

7. Primary Functionality Does Not Without More

Invalidate a Design Patent.

Petitioner does not contend that the District Court

erred herein in considering the test as to petitioner’s

design patent to be essentially one of obviousness,

even though its opinion is stated in terms of lack

of originality under 35 U.S.C. § 171 (310 F.Supp. at

316); the previously developed standard of invention,

now included within the 35 U.S.C. § 103 nonobvious-

ness standard, often has been used synonymously with

Originality. Smith v. Whitman Saddle Co., 148 U.S.

674, 679, 13 S.Ct. 768, 37 L.ed. 606; Rains v. Cas-

RES SS

= a

cade Industries, Inc., 402 F.2d 241, 245 (3 Cir.

1968). | '

Petitioner does assert, howéver, that in the same

manner as in connection with the utility patent, the

courts below erroneously focused upon the “oldness in

the prior art” of individual elements of petitioner’s de-

sign structure, to the exclusion of a proper attention to

petitioner’s new design as a whole.

“, . . [S]eparate presence in the prior art of

each element of combination will not prevent a

finding of invention... .

“e

‘It is not necessary for a design patent that

all the elements of the design be new; it is es-

sential that the elements, whether new or old,

be grouped or combined in such a manner as to

produce a pleasing appearance, different from

what has preceded it. The fact that the elements

of a design patent were old does not establish

want of invention in assembling them. The

decisive question is whether or not the design

imparts a pleading impression to the eye of

ordinary observers.’ (Citations omitted.)” [Em-

phasis added.] Blumcraft of Pittsburgh v. Citi-

zens & South. Nat. Bank of S.C., supra, 286

F.Supp. 448, 456 (D.C.S.C. 1968), rev’d on

other grounds 407 F.2d 557, cert. den. 395 U.S.

961, 89 S.Ct. 2103, 23 L.ed.2d 747, rehearing

denied 396 U.S. 870, °9 S.Ct. 39, 24 L.ed.

2d 125; Wham-O-Mfg. Co. v. Paradise Mfg.

Co., 327 F.2d 748 (9 Cir. 1964); Try-Me Bev-

erage and Compound Co. v. Metropole, 25

F.2d 138, 139 (D.C.S.C. 1928).

—_

Even more importantly, the courts below (310 F.

Supp. at 317; 441 F.2d at 1112) ignored the well estab-

lished principle that not merely primary, but rather en-

tire utility or functionality, without any non-functional

features, is required to invalidate a design patent.

“_.. the patented feature need not be primarily

ornamental, as the plaintiff suggests; it suf-

fices that the patented configuration does not in-

volve its utility alone. Spaulding v. Guardian

Light Co., 267 F.2d 111 (7th Cir., 1959)... .”

L. F. Strassheim Co. v. Gold Medal Folding

Furniture Co., 294 F.Supp. 708, 714 (D.C. Wis.

1968).

8. Patent Litigation Should Not Be Adjudicated

Piecemea! by Partial Summary Judgment.

The courts below summarily invalidated Claims 1

and 2 of petitioner’s utility patent, but denied summary

judgment as to Claim 3 thereof. Sound judicial adminis-

tration, however, should prompt denial of a motion

for summary judgment on certain patent claims when

they are intertwined with another claim which is not

susceptible of summary adjudication. Consolidated

Packing Machinery Corp. v. General Mills, 36 F. Supp.

112 (D.C.Del. 1940). “. . . The entire patent contro-

versy between the parties should be settled at one trial.

.. .” Vernay Laboratories, Inc. v. Industrial Electronic

Rubber Co., 234 F.Supp. 161, 167 (D.C. Ohio 1964).

Or as said in Paul E. Hawkinson Co. v. Dennis, 166

F.2d 61, 63 (5 Cir. 1948):

| since this is a patent suit and as such

there is a public interest involved, instead of being

tried and determined piecemeal, as was attempted

here, it ought to be determined as a whole on the

»-

—_— om

issues of patent validity, infringement and misuse.

Tried and determined as a whole, the questions

raised upon the issue of plaintiffs unjust and un-

fair uses and practices in respect of the patent

could then be considered in the light of the realities

as to whether plaintiff has a patent and whether

defendant has infringed it, and not, as was done

on this record, by a kind of shadow boxing in

vacuo.”

“The situation thus seems inappropriate for par-

tial summary judgment. It is like that ‘where a

portion of an action may be ripe for summary

judgment but it is intertwined with another

claim(s) that must be tried’. 6 Moore’s Federal

Practice (2d ed.) 2165. The principle has been

found frequently to require denial of motions for

summary judgment... .”

Kollsman Instrument Corp. v. Astek Instrument

Corp., 225 F.Supp. 534, 536 (D.C.N.Y.

1964).

In E. I. du Pont de Nemours & Company v. Cel-

anese Corporation, 291 F.Supp. 428, 432 (D.C.N.Y.

1968), the court said: “. . . [S]ince the complaint as-

serts a single claim for relief and the portions sought

to be dismissed may affect the portions which will be

tried, partial summary judgment is in any event inap-

propriate. . . .” See also, Fraver v. Studebaker Corp.,

11 F.R.D. 94 (D.C.Pa. 1950); Burgans v. N.Y. Cen-

tral R.R. Co., 192 F.Supp. 222 (D.C.N.Y. 1961);

Bernardo v. Bethlehem Steel Co., 169 F.Supp. 914

(D.C.N.Y. 1959).

—30—

9. This Court’s Graham and Other Decisions Require

the Lower Federal Courts to Exercise Great Czu-

tion in Dealing With the Section 103 Obviousness

Issue on a Motion for Summary Judgment, Sum-

mary Judgment Not Ordinarily Being Appropriate

in Patent Cases.

The Rule 56 summary judgment procedure is not

ordinarily appropriate for the disposition of a patent

case. Van Brode Milling Co. v. Kravex Manufacturing

Corp., 21 F.R.D. 246, 249 (D.C.N.Y. 1957). This

Court’s insistence in Graham on an inquiry “beamed

with greater intensity on the requirements of §103”

(388 U.S. at 19, 15 L.ed.2d at 557, 86 S.Ct. 684)

dictates caution as to the issue of obviousness upon a

motion for summary judgment. Intermountain Research

& Eng. Co. v. Hercules Incorporated, 406 F.2d 133,

136 (9 Cir. 1969). In Poller v. Columbia Broadcasting

System, Inc., et al., 368 U.S. 464, 467, 82 S.Ct. 486,

488, 7 L.ed.2d 458, this Court said:

“This rule 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, * * * [and where] no genuine issue re-

mains for trial * * * [for] the purpose of the

rule is not to cut litigants off from their right of

trial by jury if they really have issues to try.’”

In perhaps the earliest case involving the applicabil-

ity of Rule 56 in patent infringement actions it was

held: “The issues involve the validity and alleged. in-

fringement of two unadjudicated patents, and such

questions can only be adequately determined after a

trial.” Refractolite Corporation v. Prismo Holding Cor-

poration et al., 25 F.Supp. 965 (D.C.N.¥/ 1938). “. . .

[I1]n a case where there »ppears to be an infringement,

pe: ae

the court should not pass on the question of prior art

in the validity of the patent, without giving the plain-

tiff an opportunity to establish his proof at trial. . . .”

Weil v. N. J. Richman Co., 34 F.Supp. 401, 402

(D.C.N.Y. 1940). See also, Van Wormer v. Champion

Paper & Fibre Co., 28 F.Supp. 813, 815 (D.C. Ohio

1939).

Very numerous later cases have been to like effect.

“, . . [I]f summary judgment procedure is to be ef-

fectively used by an infringer to permit him to continue

to infringe without accountability, the case for sum-

mary judgment must be made out clearly and beyond

the peradventure of a doubt. . . .” Paul E. Hawkinson

Co. v. Dennis, supra, 166 F.2d 61, 63 (5 Cir. 1948).

“. . . [A] summary judgment on the issue of patent

validity should be entered ‘only where the matter is

free from doubt and where invalidity so clearly appears

that no testimony can change its legal aspect.’ . . . The

complete absence of any genuine issue of fact must be

apparent and all doubts thereon must be resolved

against the moving party.” Chiplets, Inc. v. June Dairy

Products Co., 89 F.Supp. 814, 816 (D.C.N.J. 1950).

“The public is a silent but an important party in in-

terest in all patent litigation, and we think a patent

should neither be invalidated nor sustained except

after a trial and upon evidence and a full disclosure of

all pertinent facts. . . .” Long v. Arkansas Foundry

Company, 247 F.2d 366, 369 (8 Cir. 1957). “..

[T]he presence of a single genuine issue as to a material

fact precludes disposition of a case by summary judg-

ment. . . . What the prior art was and what the patentee

did to improve upon it are questions of fact. . . .”

Cee-Bee Chemical Co. v. Delco Chemicals, 263 F.2d

150, 153 (9 Cir. 1958).

a

—_33—=

Or in the language of two very noted federal judges,

ae Renae Se Spent <ee

. if liability is dependent upon any disputed

questions of fact, the party opposing the motion

has the = to have those questions determined

upon a trial. .

“Were we skilled in the art it might be simple

to determine whether there was any ‘genuine

issue’ as to any material fact with respect to the

anticipation of the second Rotheim patent, but we

lack that special knowledge which would permit

us to read the patents so understandingly. .. .”

Bridgeport Brass Co. v. Bostwick Laboratories, 181

F. 2d 315, 316, 319 (2 Cir. 1950).

. . . In determining whether summary judg-

ment should be granted judges may not leap be-

yond the boundaries marked by experts and de-

clare as laymen in the art that a new article or

design is either obvious or non-obvious. As L.

Hand, J., remarked: ‘Courts, made up of laymen as

they must be, are likely either to underrate, or to

overrate the difficulties in making new and profit-

able discoveries in fields with which they cannot be

familiar * * *.’” Rains v. Cascade Industries, Inc.,

supra, 402 F.2d 241, 247 (3 Cir. 1968); Safety

Car Heating & Lighting Co., Inc. v. General Elec-

tric Co., 155 F.2d 937, 939 (2 Cir. 1946).

Although it is well established that on motion for

summary judgment the court’s function is not to decide

issues of fact but merely to determine whether there are

such issues to be tried, Hazeltine Research v. General

Electric Co., supra, 183 F.2d 3, 7 (7 Cir. 1950), the

LB LLLLLLL LE LET LLL DIC LE FC IILE LTIEL E P EE TSI TT PE SIE ES

ili

opinion of the District Court herein clearly indicates that

Court did decide factual issues by comparing statements

of the various deponents and assigning evidentiary

weight to each. This error was not cured by the lower

courts having physically viewed and examined (441

F.2d at 1111) the two helmet structures involved. Reiser

v. McKee Glass Co., 1 F.R.D. 170 (D.C.Pa. 1940).

See also, denying summary judgment as to patent

validity, Electronized Chemicals Corp. v. Rad-Mat, In-

corporated, 228 F. Supp. 781, 785 (D.C. Md. 1968);

Kierulff Associates v. Luria Brothers & Company,

272 F.Supp. 537, 540 (D.C.N.Y. 1967); Sealectro Cor-

poration v. L. V. C. Industries, Inc., 271 F. Supp.

835, 842 (D.C.N.Y. 1967); Devex Corporation v.

Houdaille Industries, Inc., 382 F.2d 17, 21 (7 Cir.

1967); Ortman v. Stanray Corporation, 371 F.2d 154,

156 (7 Cir. 1967); Technograph Printed Circuits v.

Methode Elect., Inc., 356 F.2d 442, 447, 449 (7 Cir.

1966), cert. den. sub nom. Croname, Inc. v. Techno-

graph Printed Circuits, Ltd., 384 U.S. 950, 86 S.Ct.

1570, 16 L.ed.2d 547; Warner v. Swasey Company v.

Held, 256 F.Supp. 303, 308 (D.C.Wis. 1966); Kolls-

man Instrument Corp. v. Astek Instrument Corp.,

supra, 225 F.Supp. 534, 536 (D.C.N.Y. 1964); Keuf-

fel & Esser Company v. Charles Bruning Co., 219

F.Supp. 195, 198-200 (D.C.N.J. 1963); National

Screen Service Corp. v. Poster Exchange, Inc., 305 F.

2d 647, 651 (5 Cir. 1962); Hughes Blades, Inc. v.

Diamond Tool Associates, 300 F.2d 853, 854 (9

Cir. 1962); Servaas & Company v. Dritz, 185 F.Supp.

61, 63 (D.C.N.Y. 1960); Boyajian v. Old Colony

Envelope Company, 279 F.2d 572, 575 (1 Cir.

1960); Neff Instrument Corporation v. Cohu Elec-

tronics, Inc., supra, 269 F.2d 668, 669 (9 Cir. 1959);

=o

American Securit Company v. Hamilton Glass Com-

pany, 254 F.2d 889, 892 (7 Cir. 1958); Adams v.

‘Calumbus Manufacturing Company, 169 F.Supp. 346,

348 (D.C. Ga. 1958); Reynolds Pen Co. v. W. A.

Sheaffer Pen Co.,22 F.R.D. 502,504 (D.C.N.Y. 1958);

Vermont Structural Slate Co. v. Tatko Bros. Slate Co.,

134 F.Supp. 4,5 (D.CN.Y. 1955), aff'd. 233 F.2d

9, cert. den. 353 U. S. 917, 77 S.Ct. 216, 1 L.ed.2d

123; Chenault v. Nebraska Farm Products, 107 F.Supp.

635, 638 (D.C. Neb. 1952); Traylor v. Black, Sivalls

& Bryson, Inc., 189 F.2d 213, 216 (8 Cir. 1951);

Van Dette v. Aluminum Air Seal Mfg. Co., 11 F.R.D.

558, 559 (D.C. Ohio 1951); Bucky v. Sebo, 97 F.Supp.

277, 279 (D.C.N.Y. 1951); Bede v. Beck, 11 F.R.D.

293, 294 (D.C. Ohio 1951); Gray Tool Co. v. Humble

Oil & Refining Co., 186 F.2d 365, 366, 370 (5 Cir.

1951), cert. den. 341 U.S. 934, 71 S.Ct. 854, 95 L.ed.

1363; Fluid Systems .. Great Lakes Equipment Co., 98

F.Supp. 220, 221 (D.C. Ohio 1951); Staffin Lewis

Corporation v. Rose Derry Co., 9 F.R.D. 704, 705-706

(D.C. Mass. 1950); Burt v. Bilofsky, 9 F.R.D. 299,

300 (D.C.N.J. 1949); Union Nat. Bank of Youngstown

v. Superior Steel Corp., 9 F.R.D. 123, 124 (D.C. Pa.

1949); Engineering De eclop. Lab. v. Radio Corp. of

America, 153 F.2d 523, 525 (2 Cir. 1946); E.. W.

Bliss Co. v. Cold Metal Process Co., 47 F.Supp. 897,

899 (D.C. Ohio 1942); Dairy Engineering Corpora-

tion v. De-Raef Corp., 1 F.R.D. 679 (D.C. Mo. 1941);

Charles Blum Advertising Corporation v. L. & C.

Mayers Co., 25 F.Supp. 934, 935 (D.C.Pa. 1938).

willlani

Conclusion. a

For the foregoing reasons a writ of certiorari should

issue to review the judgment and opinion of the Ninth

Circuit. - | ee

| Respectfully submitted,

GEORGE MCGILL,

Attorney for Petitioner.

APPENDIX A.

Opinion of the Court of Appeals for the Ninth Circuit.

United States Court of Appeals for the Ninth

Circuit. >

Bates Industries, Inc., Appellant, v. Daytona Sports

Co. and Daytona Products, Inc., and Paulson Manu-

facturing Corporation, Appellees. NO. 25096-97.

Appeal from the United States District Court for

the Central District of California.

Before: MERRILL, ELY and TRASK, Circuit Judges.

PER CURIAM:

This is an appeal from the granting of a summary

judgment in a patent infringement action which held

invalid a utility patent and a related design patent,

both of which covered a motorcycle-type protective

helmet with a pivotally attached flip-up face shield. The

district court found that the patented invention was not

really inventive over the prior art, but mefely a com-

bination of old elements which did not accomplish a

new result. According to both parties herein, the dis-

trict court found, in effect, that the helmet in ques-

tion was “obvious” in light of the prior art (35 U.S.C.

§ 103). The action arises out of the patent laws of

the United States. Jurisdiction is based upon 28 U.S.C.

§ 1338(a).

135 U.S.C. § 103 provides, in part:

“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 . . .”

/0Te ae

Daytona Sports Co. and Daytona Products, Inc.

(Daytona) contend the appellant’s utility patent and

design patent are invalid. Daytona asserts that the

utility patent. was obvious from an unpatented visor |

assembly commonly known and so:d publicly more

than a year prior to the date of plaintiff's application.

It was produced and sold by McHal Enterprises.

Daytona contends that the design patent is invalid

because the distinctive features relied upon by the

plaintiff are essentially functional in nature and not

new and original.

The district court carcfully examined the claims of

the plaintiff for its product and compared them with

- the McHal visor, and viewed the two products.* This

court did likewise. The district court held that the

utility patent claimed by the plaintiff was invalid be-

cause it was not inventive over the prior art. It held

that the design patent was invalid because it was not

new and original and also because its claimed distinc-

tive features are primarily functional. We agree as to

both patents.

The patented invention of the plaintiff consists of a

transparent plastic shield made to curve around the

face and attach at the top to a crash helmet. It is

constructed so that it may be flipped up over the

helmet and away from the face if desired. The prior

art consisting of the McHal product has a similar face

shield which also flips up but it also has a narrow

visor or brim. Both products were displayed in court,

demonstrated at length and explained in detail. A

photograph of a similar helmet and visor from a

_£The district court’s opinion may be found in 310 F.Supp.

311 (C.D. Cal. 1969).

a wen

British cycle magazine was also pointed to as a ane of

the prior art.

The scope of the court’s factual inquiries has been

well defined under 28 U.S.C. § 103, supra: :

“Under § 103, the scope and content of the priot

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 v. John Deere

Co., 383 U.S. 1, 17-18 (1966).

Appellant contends that the evidence demonstrates

that there is an issue of material fact as to the level

of ordinary skill in the pertinent art which could not

be resolved on a motion for summary judgment.

Intermountain Research & Enginegering Co., Inc. v.

Hercules, Inc., 406 F.2d 133 (9th Cir. 1969). That is,

there exists an issue respecting the capacity of one with

ordinary skill in the art to alter, modify or combine

the prior art to duplicate the patented device.

Appellees contend that where the subject matter and

the differences between “4e alleged invention and the

prior art are so simple and requiring of no explanation

that the claimed invention would have suggested itself

to those with ordinary skill in the art, even if that

skill is postulated at the minimum conceivable levei,

there can be no genuine issue of fact and summary

judgment is proper. Walker v. General Motors Corp.,

362 F.2d 56, 59 (9th Cir. 1966). In other words,

appellees argue that there can be no genuine issue of

fact as to the level of skill in the art because the

claimed invention herein would be obvious even if the

ordinary skill was at a very primitive level. The fact

that others failed in attempts to devise a similar

an

structure is immaterial if the claimed patent is obvious.

Jeddeloh Brothers Sweed Mills, Inc. v. Coe

Manufacturing Co., 375 F.2d 85 (9th Cir.), cert.

denied, 389 U.S. 823 (1967); Alladin Plastics, Inc.

v. Jerrold Stephan Co., 362 F.2d 532 (9th Cir. 1966).

With respect to the claimed design patent this court

has stated:

“In order for a design patent to be valid, it

must be: (1) new, (2) original, (3) ornamental,

(4) non-obvious to a person of ordinary skill in

the art, and (5) not primarily for the purpose

of serving a functional or utilitarian purpose.”

Barofsky v. General Electric Corp., 396 F.2d

340, 342 (9th Cir. 1968), cert. denied, 393 US.

1031 (1969).

The same considerations which compel a conclusion

against appellant with respect to the utility patent

prevail as to the design patent. The differences relied

upon are not non-obvious and also, as to design, are

primarily in the functional field.

The only remaining issue is the trial court’s refusal

to award attorney fees to Paulson on its cross appeal.

Patent law provides that only in “exceptional cases”

may a court award reasonable attorney fees to the

prevailing party. 35 U.S.C. § 285. That determination

is primarily a matter for the exercise of district court

discretion. Ashcroft v. Papermate Mfg. Co., 434 F.2d

910, 915 (9th Cir. 1970). The district court here

declined on the evidence to award attorney fees. We

do not disturb that action.

Judgment affirmed.