Brief for the Respondent in Opposition — Long Manufacturing Co. v. Lilliston Implement Co.

INDEX

Page

L Opinions Below ...........sseeeeecceeceeecees a

MMMMOGIOOR 6c rccccesncccccsccccccccccesccses te

fil. Constitutional Provision, Statutes and Rule

DINE dhhovesscveccasoscéscccdoccsbesece

TV. Questions Presented .........ssessccescesceves 3

¥. Counter Statement of the Case ........... ssccee- O

Ree Ue NE &, cdc cccdscocesanace 6

eS EE EE oo cccnccossascoepecs 7

RES SS eee nn

ED ici ebsbbbsedusineneieopiavetnne ie ae

CASES CITED

Anderson’s-Black Rock, Inc. v. Pavement Salwage Co.,

AE AED code esccccsntesseceus 5, 16, 17, 18,

; 19, 20, 21

Graham v. John Deere Co. of Kansas City, 383 U.S. 1

iE Mutiht hiner sarreneennes 4, 5, 11, 12, 13, 14,

16, 17, 18, 19, 20, 21

Hotchkiss v. Greenwood, 11 How. 248 (1851) ...... 16, 18

Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U.S. 147 (1950) ..... 4, 5,11, 14, 15, 16

17, 18, 19, 20, 21

CONSTITUTIONAL PROVISION, STATUTES, AND

RULE CITED

ConsTITUTION oF THE Unrtep Sratzs:

Article I, Section 8, Clause 8 ................0005 2

I cae 2

eg i saa coe tes sud 2, 11, 12, 17, 18

PRCA ce in hndke ses earesecsbehbsuh ene 3

Ruiz or THE Supreme Court:

enh aids Jd icedegietbindbeedenn.ecs 3

|

ii Index Continued

ABBREVIATIONS AND DESIGNATIONS

Pet. Petition for Writ of Certiorari.

Pet. A. Appendix to Petition.

p. page designation to Petition or Appendix to Petition

Note: i ion of of Appendix to Petition

fallowel by the “o, ra

(IIIA...) refers to Volume III of the Appendix j

Court of Appeals, each page of which is identified by

(PX...) refers to Plaintiff’s exhibits.

(DX ...) refers to Defendant's exhibits.

Lone ManvuractuRine Company, Petitioner

v.

Laiston LupLemMEent Company, Respondent

BRIEF FOR RESPONDENT IN OPPOSITION TO PETITION

FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

The opinion of the Court of Appeals for the Fourth

Gireuit, of which review is sought (now officially re-

ported at 457 F.2d 1317 (1972) ) is reprinted in the Ap-

pendix to the Petition (Pet. A. p. la).

The opinion of the District Court, E.D.N.C., officially

reported at 328 F.Supp. 268 is reprinted in the Appen-

dix to the Petition (Pet. A. p. 2a-40a).

The jurisdictional requisites for filing the Petition

are adequately stated in the Petition, namely 28 U.§.¢.

1254(1) reprinted in the Appendix to the Petition

(Pet. A. p. 42a) ; however, there is no valid reason for

review as provided by Supreme Court Rule 19(1)(p).

CONSTITUTIONAL PROVISION, STATUTES AND

RULE INVOLVED

This case involves Article I, Section 8, Clause 8 of

the Constitution, and Sections 108 and 282 of the

Patent Code, 35 U.S.C. §§ 103 and 282.

Constitution

Article I, Section 8. The Congress shall have Power

8. To promote the Progress of Science and

Useful Arts, by securing for limited Times to

Authors and Inventors the exclusive right to their

respective Writing and Discoveries;

Patent Code

35 U.S.C. 103. Conditions for patentability; non-obvi-

ous subject matter

A patent may not be obtained though the inven-

tion 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

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 ordi-

nary skill in the art to which said subject matter

pertains. Patentability shall not be negatived by

the manner in which the invention was made.

3.

95 U.S.C. 282. Presumption of validity; defenses

A patent shall be valid. The burden

of establishing invalidity of a patent shall rest

on a party asserting it.

The following shall be defenses in any action

apy bint = ein ce, coocemmtad aac

and be pleaded:

+. = + =

(2) Invalidity of the patent or any claim in

suit on any ground specified in part II of this title

as a condition for patentability,

= = = =

Supreme Court Rules

Rule 19. Considerations governing review on cer-

tiorari

A review on writ of certiorari is not a matter of

right, but of sound judicial discretion, and will be

granted only where there are special and im-

portant reasons therefor. The following, while

neither controlling nor fully measuring the court’s

discretion, indicate the character of reasons which

will be considered :

= = oa =

(b) Where a court of appeals has decided a

federal question in a way in conflict with applic-

able decisions of this court;

> & 2 @

iv

QUESTIONS PRESENTED

1. Whether the Courts below have decided a Federal

question in a way which conflicts with applicable deci-

sions of this Court ?

Note: Petitioner in setting out particulars to the

above generic question asks:

“1.(a) Whether a novel combination of elements

may properly be held unpatentable where the

+

Court relies on A. & P. Tea Co. v. Supermarket

Corp., 340 U.S. 147 (1950) and does not ap

Gr v. John Deere Co., 383 U.S. 1 (1966),

(Pet. p. 2)

This is not in conformity with decisions below. The

Court of Appeals found agreement with the decision

of the District Court which did not find a novel com.

bination of elements but only a new or different ar-

rangement of old elements all of which were previously

combined in prior art machines.

Moreover, Graham v. John Deere Co., 383 U8. 1

(1966) was applied and copious references made

thereto.

Petitioner further asks:

**1.(b) Whether, assuming the question of part

(a) is answered affirmatively, the Court below

erred in its oe of A & P by its failure to

make any finding as to whether Long’s admittedly

novel combination of elements ‘perform any addi-

tional or different function in the combination

than they perform out of it’. (340 U.S. 147 at

152)”’ (Pet. p. 2)

As pointed out with respect to 1.(a) above, the Dis-

trict Court did not find any admittedly novel combina-

tion of elements.

Furthermore, the District Court did make findings

with respect to each patent in suit that the old elements

which make up the device did not perform any addi-

tional or different function in combination than they

performed out of it. Therefore, the District Court did

not err in its application of A & P.

—

5.

In view of the discrepancies in Petitioner’s particu-

lars 1.(a) and 1.(b), only the broad question appears

proper.

9, Whether there is a conflict between this Court’s

rulings in Anderson’s-Black Rock, Inc. v. Pavement

Salvage Co., 396 U.S. 57 (1969) (including A & P)

and Graham?

Vv

COUNTER STATEMENT OF THE CASE

This is a case of alleged patent infringement. Two

separate patents of the Petitioner are involved, namely,

US. Patent No. 2,974,467 hereinafter referred to as

“467” and U.S. Patent No. 3,007,475 hereinafter re-

ferred to as ‘475’. The action was commenced in the

United States District Court for the Eastern District

of North Carolina on August 26, 1967. Jury trial was

waived and the case came on regularly to be tried by

the Honorable Walter E. Hoffman, Judge, by designa-

tio from the Eastern District of Virginia. The Dis-

trict Court filed a written memorandum opinion of its

findings, conclusions and decision in June, 1971 (Pet.

A. p. 2a-40a). Judgment was entered in August, 1971

adjudging both patents in suit and each claim thereof

invalid; that Defendant has not and is not now infring-

ing Patent No. ‘‘467’’; and decreed that Plaintiff take

nothing of the Defendant and that the action be dis-

missed on the merits. However, the Trial Court held

that had it determined Patent No. ‘‘475’’ valid, then

in that event the Defendant would be infringing said

patent under'the doctrine of equivalents. The Court

denied the Defendant, as the prevailing party, attor-

neys’ fees. (Pet. A. p. 41a)

6

The Plaintiff appealed and the Defendant eroggs.

appealed from the portions of the judgment order that

were adverse to each.

In a per curiam opinion decided April 4, 1972, after

full consideration of the briefs and oral argument, the

Court of Appeals for the Fourth Circuit agreed with

the decision of the District Court that both of the

patents in suit are invalid on the ground of obvious.

ness to persons reasonably skilled in the art. In June,

1972, the Petition for Writ of Certiorari was filed.

The Long “467” Patent

Patent ‘‘467”’ relates to the front or pickup end of a

peanut combine. As best shown in Figure 1 (IIIA 1)

of this patent, the combine comprises front and rear

threshing cylinders and an intermediate stripper cylin-

der which strips the vines from the front cylinder and

passes them over the imperforate portion 59 of a breast-

plate 51 shown in Figure 8 (IIIA 4) to the rear cylin-

der. The vines are fed to the front threshing cylinder

by the pickup 15-22 which includes spring fingers 19

which pick up the vines from the ground and deliver

them directly to the front threshing cylinder. The

threshing cylinders cooperate with curved sections of

breastplate 51, which portions have perforations

through which spring fingers project and cooperate

with spring fingers on the threshing cylinders to de-

tach the peanuts from the vines. The openings in the

breastplate adjacent the rear cylinder are large enough

to permit peanuts to fall through.

Claims 1-4 of the ‘‘467’’ patent (IITA 10) were as-

serted.

Petitioner’s argument basing validity on the simul-

taneously elevating and threshing theory raised on

ae

appeal and again presented here has no merit in fact.

None of the four claims of the ‘‘467” patent (IIIA

10) are directed to this so called or alluded to ‘“‘dual

function’. Contrary to Petitioner’s contention that

the prior art did not have threshing cylinders arranged

on an incline effective to elevate (Pet. p. 4), the Dis-

trict Court found:

“Tike the Long combine, the Livermon patent has

a series of two cylinders whereby the rearward one

is a little higher than the first. It should also be

noted that the configuration of the two cylinders

with a transfer cylinder between found in the

Livermon patent, along with arcuate and perfor-

ated breastplates under each of the threshing cyl-

inders and an imperforate plate which attaches the

two arcuate perforated b lates, is almost

identical to the pattern used by Long.” ”’ (Pet. A

p. 10a-11a)

7

The Livermon patent, which was before the Exam-

iner, was for a peanut picker. However, the same

threshing cylinder arrangement was embodied in the

Livermon combine DX 108 (IITA 212-219) which was

part of the pertinent art relied upon by the District

Court that was not before the Examiner in the Patent

Office.

The Long “475” Patent

Patent ‘‘475”’ (IITA 11) is directed to the rear end

of acombine where the peanuts are separated from the

vines. This portion includes a stepped pan 85 which

receives peanuts falling through the openings 67 in

breastplate 51 under the rear threshing cylinder. As

the vines leave that cylinder, they are received by a vine

tack 74 which moves them to the rear of the combine

where they are discharged by the members 80. The

peanuts on pan 85 are fed rearwardly onto screen 95

8

which has perforations through which air from blower

98 is forced under pressure to blow away lightweight

material from the peanuts. Peanuts discharged from

screen 95 pass down an incline and through a grill 111,

whence they pass into a flared member 112 and are

then supposed to fall into discharge pipe 113 where air

under pressure from a second blower 130 is said to

move them across the combine in pipe 113 and up to the

top of the combine in an inclined portion of that pipe,

where the air pressure is lowered and the peanuts are

released and collected for bagging.

All eight claims (IITA 17) of the ‘‘475”’ patent were

asserted. Petitioner relied on at Trial and on Appeal

and relies here on what he calls a ‘‘downwardly in-

clined stepped screen’’. No claim of the ‘‘475”’ patent

is directed to such a structure. The only claim that

mentions a stepped screen is Claim 1 which is silent as

to any inclination. The other claims variously recite a

screen, an inclined screen, or a downwardly inclined

screen; but are silent as to any stepped configuration.

Although, as discussed above, none of the claims of

the ‘‘475”’ patent call for a ‘‘downwardly inclined

stepped screen’’, the District Court adequately consid-

ered Petitioner’s contention in this regard and found

as follows:

‘“‘Of the three aforementioned elements which

the Plaintiff contends makes his machine different

from the prior art, Long mainly relies on what he

calls a ‘downwardly inclined stepped screen.’ Al-

though it is true that the Plaintiff has the first

machine with a stepped screen inclined toward the

rear, it has already been shown that this is not the

first combine to contain a stepped screen; nor 1s tt

the first combine where the screen works im connec-

tion with a blower in the cleaning process, which

gees

9

Long alleges is one of the advantages of his par-

ticular arrangement. Furthermore, this is not the

first combine which has suggested a slanting screen.

In fact, in some combines the stepped sereen, al-

though usually horizontal, was made so that it

could be adjusted to a slanting position. In others,

the sereen was made to be slanted but slanted to-

ward the front rather than toward the rear. In

light of this evidence, we conclude that not only

was this not a novel idea, but also that it was ob-

vious to one of ordinary skill in the art. If any-

thing, this arrangement only showed mechanical

ability which, of course, will not suffice for inven-

tion.”? (Emphasis added—Pet. A. p. 31a-32a)

Petitioner infers that the industry is dependent upon

its combine; that it supplants prior combines; that it

alone reduced the hazard of rain damage to the crop;

and that the combines of the prior art were discon-

tinued when Petitioner’s alleged invention became

known.

Such was not the finding of the courts below. Many

of the prior art combines had come and gone before

Petitioner entered the field and the finding of the Trial

Court was as follows:

“Around 1945, the idea developed that labor could

further be reduced by producing a combine which

would move through the fields and harvest the

peanut vines, which would previously be plowed

up and placed in windrows rather than operating

the machines in a stationary position. In addition

to saving labor, another attractive feature about

this method of harvesting is that the peanut vines

could be harvested only a short period of time after

having been dug up, since they would dry more

quickly in the windrows than while piled up

around stakes. Accordingly, the hazard of rain

damage to the exposed peanuts would be reduced.

Pursuant to these ideas and advantages, many ma-

10

chines were developed and patented, among which

are the combines involved a this litigation

‘““W. R. Long, the president of the plaintiff com.

pany started working on the patented combine in

1956 and, by 1957, had built his first prototype,”

(Emphasis added—Pet. A. p. 5a)

ee, Bele Te ee

‘‘Secondly, in our case most of the patents and

combines of the prior art which are being dealt

with were created within a decade of the time when

Long’s combine was patented. During this time

new ideas were rapidly being developed and re-

evaluated in the field of peanut combines. In the

development of successive machines and particu-

larly in an area crowded with patents as the pea-

nut combine field is, it is clear to the Court that as

new ideas and devices are developed, older ones

are phased out or may even prove utterly worth-

less. This may well be what happened here, and to

allow the knowledge that the older patents im-

parted to then be patented would be to withdraw

what is readily known and disclosed from the pub-

lic domain contrary to the dictates of the constitu-

tion.”’ (Pet. A. pp. 37a, 38a)

VI

ARGUMENT

The per curiam opinion of the United States Court

of Appeals for the Fourth Circuit states that after full

consideration of the briefs and oral argument, it is in

agreement with the decision of the District Court that

both of the Appellant’s patents are invalid on the

ground of obviousness to persons skilled in the art. It

is submitted that the District Court’s decision on the

issue of validity was correct in every material respect.

The first reason alleged by the Petitioner for grant-

ing the writ requested is that the lower courts relied on

—

11

A age

Great Atlantic and Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147 (1950) (hereinafter re-

ferred to as A & P) and did not apply Graham v. John

Deere Go. of Kansas City, 383 U.S. 1 (1966) (herein-

after referred to as Graham).

This allegation is not correct since the District Court

did rely on and apply the Graham decision. Thus, the

District Court said:

“The recent case of Graham v. John Deere Co.,

383 U.S. 1 (1966) established the test to be applied

for cases arising under 35 U.S.C., section 103. In

Graham, Mr. Justice Clark said:

‘Under § 103, the scope and content of the

prior art are to be determined; differences be-

tween the prior art and the claims at issue are

to be ascertained; and the level of ordinary

skill in the pertinent art resolved. Against

this background, the obviousness or nonobvi-

ousness of the subject matter is deter-

mined,’**’? (Pet. A. p. 9a)

* * * * *

‘As has been seen earlier, Graham v. John Deere

Co., supra, explicitly states that when 35 U.S.C.,

section 103, was enacted in 1952, the test of non-

obviousness was added to the previously estab-

lished tests of novelty and utility which must be

met in upholding the validity of a patent. It is

under the test of nonobviousness that the Court

here invalidates the patents in question, ...’’ (Pet.

A. p. 37a)

With respect to Patent No. 2,974,467, the District

Court found :

“Applying the Graham test to the case at hand,

it is clear that all the working parts of the out-

standing features of Patent Nymber 2,974,467 ap-

pear in previous patents and combines, which must

12

be aoa part of the prior art.“” (Pet, A.

p.

‘‘This examination of the prior art as compared

with each element of the patent in question compels

the conclusion that each element was obvious to

one of ordinary skill in the art, and therefore

would not be patentable separately. Even so, a com-

bination of these old elements could be patentable

if invention can be found in the combination”

(Pet. A. p. 11a)

Ce Nie EN ie

‘‘While the patentee should be commended for

his success in arranging these old elements into a

mechanically functional and most desirable com-

bine, the new arrangement is only evidence of me-

chanical skill and falls short of the test of inven-

tiveness.”’’ (Pet. A. p. 14a)

S38 6 28.

Thus, as to the Patent No. 2,974,467, the District

Court recognized the Graham case as establishing a

test to be applied and correctly applied that test by

ascertaining the differences between the prior art and

the claims at issue and resolving the level of ordinary

skill in the pertinent art, resulting in a holding that

mechanical skill only was involved.

Similarly, with respect to Patent No. 3,007,475, the

District Court said:

‘““Under 35 U.S.C., section 103, and the Graham

case, which sets forth the test to be applied thereto,

it is clear that all of the significant features of

patent number 3,007,475 appear time and again in

the prior art, and that Long has simply combined

old elements, otherwise not patentable by them-

selves, into a new machine. An in-depth compari-

son of the prior art, with what Long claims, will

reveal the lack of novelty and nonobviousness and

18

hence the lack of invention of any single elemient.”’

(Pet. A. p. 29a)

a ee

‘‘From the foregoing survey of the prior art as

compared with each element in the patent, it is

clear that each feature of the patent was obvious

to one skilled in the art and therefore would not be

patentable by itself. It is equally clear, however,

that if invention can be found in the combination

of these old elements, then. the patent is valid.®”’

(Pet. A. p. 30a)

* &*© * &

“In concluding that patent number 3,007,475 is

anticipated by the prior art and therefore invalid,

it is noted that every significant feature of this

patent appears not only in various combines

throughout this history of the art, but also that

they all appear in a single device in the prior art—

the Frick combine, which, incidentally, was not be-

fore the patent examiner when Long’s application

was being processed. These points are particularly

significant here in light of the factual situation

that arose in Graham. There the Supreme Court

examined the had art and found that every essen-

tial element of the claimed patent was part of the

prior art. In fact, the Court found that all of the

items were included in the same patent (which was

not before the patent examiner) except that two of

the elements were reversed. Even so, however, the

Court noted that their mechanical operation was

identical and the same function was served. The

patent was held invalid. In following the reason-

ing and result of Graham and holding that all

eight claims of patent number 3,007,475 are invalid

as anticipated by the prior art, it is also appro-

priate to conclude, as the Supreme Court did, that

the patent in question ‘presents no operative me-

chanical distinctions, much less nonobvious differ-

ences.’ ”’ (Pet. A. p. 33a)

_ eee

—

14

The Petitioner also alleges that the District Court

did not “‘give any weight to secondary. considerations

as set forth in Graham.’’ These considerations are

**ecommercial success, long felt but unsolved needs, fail-

ure of others, etc.’’ and were clearly recognized by the

District Court in its statements that:

‘*. .. we take cognizance of the fact that some of

the combines considered here as part of the prior

art had been discontinued around the time tbat

Long received his patent.”’? (Pet. A. p. 37a)

‘We are also mindful of the fact that while many

peanut combines previous to Long’s were not com-

mercially feasible, Long’s machine has enjoyed

substantial commercial success.’’ (Pet. A. p. 38a)

These circumstances did not convince the Trial Court

that the claimed subject matter was nonobvious.

In view of the foregoing, and of the entire content of

the District Court’s decision, it is submitted that the

contention that the Trial Court did not apply the test

of the Graham decision is untenable. Apparently, the

results of such application were not what the Petitioner

considers they should have been.

It is the findings of fact of the Trial Court that

spells the invalidity of the patents in suit. The law

as determined by the decisions of this Court applied

to the facts as found by the Trial Court inevitably

results in a judgment of invalidity. The Petitioner

cannot demonstrate that there has been a misapplica-

tion of law to the facts as found. Given the findings

of fact as determined by the Trial Court or conceding

that they are not clearly erroneous as the Petitioner

must do here renders the District Court’s Judgment

and Conclusion obviously sound.

The Petitioner’s second alleged reason for granting

the writ is that assuming the viability of A ¢& P, the

District Court erred in its application of A ¢& P. Here

the Petitioner says:

“Thus, in the case at bar there was no finding

whether the elements perform any additional or

different function in the combination than they

eg out of it”. (Emphasis quoted Pet.

p. 11

Petitioner’s statement seems clearly incorrect. With

respect to Patent No. 3,974,467, the District Court said:

“In addition, the functions of the elements in

Long’s combine are the same as the functions they

im) performed in other combines.’’ (Pet. A. p.

13a

With respect to Patent No. 3,007,475, the District

Court said:

“In addition to the fact that every important

feature of patent number 3,007,475 appears in the

prior art, no new and different function or result

ean be found in any of these elements in Long’s

- machine, either separately or as a combination.”

(Pet. A. p. 31a)

And then, with respect to both of the patents in suit,

the District Court said:

“In essence, both of these patents involve a com-

bination of old parts or elements well known in the

art. Although these combinations are recognized

as forming a commercially profitable machine, no

new function, operation or result can be found in

either combination.”’ (Pet. A. p. 39a.)

Clearly the Trial Court’s findings answered the

question of whether the elements of the claimed com-

bination perform any additional or different function

in the combination than they perform out of it. The

findings were adverse to the Petitioner but such fur-

nishes no basis for granting the petition to review the

decision below.

16

The third reason alleged in the petition for granting

the writ is that there is a ‘“‘basic conflict’”’ between the

A & P case and Anderson’s-Black Rock on one hand,

and the Graham case on the other.

It is submitted that there is no conflict, basic or other-

wise, between the three decisions in question. The

A & P case was cited in each of the other two cases aud

that case, as weil as the Graham case, was cited in the

Anderson’s-Black Rock case, and nowhere is there any

intimation that any conflict was thought to exist. On

the contrary the opinion in Anderson’s-Black Rock

discusses both of the other cases in detail and relies on

both of them in reaching its conclusion.

The A & P case asserts the principle that a combina-

tion of old elements is not patentable unless the fune-

tion of the whole combination in some way exceeds the

sum of the functions of its parts. This principle of

synergistic effect was reaffirmed in the Anderson’s-

Black Rock case. It is to be noted that this is not a

universal test of patentability, but applies only to com-

binations of old elements.

This Court, in the Graham case, made it clear that

the Congress by the Patent Act of 1952 added a third

statutory dimension to the two requirements of novelty

and utility that had been sole statutory tests since the

Patent Act of 1793, namely the test of obviousness.

In considering what effect the 1952 Act had upon

traditional statutory and judicial tests of patentability

and what definitive tests are now required, this Court in

Graham said: -

“We have concluded that the 1952 Act was in-

tended to codify judicial precedents embracing the

principle iong ago announced by this Court in

Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683

17

(1851), and that, while the clear language of § 103

places emphasis on an inquiry into obviousness,

the general level of innovation necessary to sustain

patentability remains the same.’? Graham at 3

and

This Court, further elucidating in Graham as to the

basic factual inquiries to be considered under the § 103

condition, stated:

‘While the ultimate question of patent validity

is one of law, Great A. & P. Tea Co. v. Supermarket

Equipment Corp., supra, 340 U.S. at 155, 71 S.Ct.

at 131, the $103 condition, which is but one of

three conditions, each of which must be satisfied,

lends itself to several basic factual inquiries. Un-

der § 103, the scope and content of the prior art

are to be determined ; differences between the prior

art and the claims at issue are to be ascertained ;

and the level of ordinary skill in the pertinent art

resolved. Against this background, the obvious-

ness or nonobviousness of the subject matter is de-

termined. Such secondary considerations as com-

mercial success, long felt but unsolved needs, fail-

ure of others, etc., might be utilized to give light to

the circumstances surrounding the origin of the

subject matter sought to be patented. As indicia

of obviousness or nonobviousness, these inquiries

may have relevancy.’’ (Emphasis added) Graham

at 17 and 18

The expression of this Court in Graham in no way

indicates any conflict with A & P but sets forth guide

lines to determine the obviousness or nonobviousness

of the subject matter which is an added condition re-

quired by the Patent Act of 1952.

The A & P and Anderson’s-Black Rock cases, on one

hand, relate to the specific situation in which a com-

bination of old elements is involved, and both cases, as

7

18

above noted, hold that in such a situation the total fune-

tion must in some way exceed the sum of the individug)

functions. That holding was by no means new, but was

based on a number of prior cases cited in the A & P

opinion. It is not reasonable to suppose that this Court,

by its pronouncements as to obviousness in the Graham

decision, intended to overrule that established principle

in general, and the A & P decision in particular; and

the reaffirmance of the A & P principle in the Ander-

son’s-Black Rock case, together with a citation and dis-

cussion of the Graham decision, makes it clear that

there was no such intention and that this Court did not

consider that there was any conflict between A ¢ P,

Graham, or Anderson’s-Black Rock.

Moreover, any contention that this Court, in the

Graham opinion, intended to impose any new standard

of patentability is effectively negatived by the follow-

ing express statement in that opinion:

‘*We believe that this legislative history, as well

as other sources’ shows that the revision was not

intended by Congress to change the general level of

patentable invention. We conclude that the section

[35 U.S.C. 103] was intended merely as a codifica-

tion of judicial precedents embracing the Hotch-

kiss condition, with congressional directions that

inquiries into the obviousness of the subject matter

sought to be patented are a prerequisite to patent- .-

ability.’? Graham at 17

The A & P and Anderson’s-Black Rock cases simply

state a rule to be applied in a specific case, namely that

it will always be within the skill of the art to assemble

old elements in combination if each element of the as-

sembly merely performs its old function in the old way

and the aggregate result is the sum of the functions of

the elements. This is simply a rule of thumb for deter-

_—

mining obviousness or nonobviousness in one of the

many types of situations in which such a determination

must be made. It is not at variance with anything con-

tained in the Graham decision but is an aid in applying

the principle of that decision to a specific kind of case ;

and it was so properly used by the District Court in the

instant case.

To sum up, the Graham case holds that, in determin-

ing obviousness or nonobviousness, the scope and con-

tent of the prior art are to be determined, differences

between such art and the claims are to be ascertained

and the level of ordinary skill in the pertinent art is

to be resolved, while the A & P and Anderson’s-Black

Rock cases hold that if, as the result of such a deter.

mination, it is found that the claims are drawn to a

combination of elements, each of which is shown to be

old in the prior art, then it would be obvious to combine

those elements unless the combination produces a result

different from the sum of the functions of the separate

elements. This does not involve any conflict of ¢+ci-

sions and does not present a situation in which the

granting of certiorari would be appropriate.

The petitioner alleges that the Anderson’s-Black

Rock case has had the effect of causing the Court of Ap-

peals for the Fourth Circuit to hold all patents coming

before it invalid.

The number of cases involved appears to be too small

to be significant, particularly since it is not shown how

many of the cases decided involved combinations of

old elements; but, so far as they might be considered

as establishing any trends, they do not support the Peti-

tioner’s contentions. Thus, in the five year period pre-

ceding Graham, when the authority of the A & P was

presumably unquestioned, the Fourth Circuit Court of

19

ay

20

Appeals held: seven out of twenty-two, or more than

thirty percent of the patents considered, to be valid,

while in the period between Graham and Anderson’s-

Black Rock, when the supposedly salutary effect of the

Graham decision was in full force, only two out of four-

teen, or less than fifteen percent of the patents consid-

ered were held valid. If this has any significance it

could be that the Graham decision, rather than creating

a more liberal standard, as the Petitioner seems to con-

tend that it did, imposed a stricter one.

Assuming, as contended in the petition (Pet. p. 12)

that Graham was “‘shoved aside’’ by Anderson’s-Black

Rock, thus reinstating A & P in full effect, then it is

proper to consider those cases before Graham and after

Anderson’s-Black Rock as a unit; and when so consid-

ered, they show seven favorable holdings in thirty deci-

sions, or twenty-three percent of favorable decisions,

which is substantially more than the fifteen percent of

Petitioner’s supposedly golden age of the Graham

decision.

It follows that the figures cited by Petitioner, if

they have any material significance, tend to weaken the

Petitioner’s position rather than to strengthen it.

VII

CONCLUSION

Respondent submits that the opinion of the Trial

Court shows a very able and scholarly application of

the applicable law has been made to the controversy

involved in this suit and that the Petitioner has re-

ceived careful judicial consideration of all its conten-

tions. Further that the approval of the Court of

Appeals of the Trial Court’s decision was entirely just

and involves no error or misapplication of the law, nor

is there any conflict between decisions of this Court

rere

which were relied upon, nor any question of possible

interest or importance which should absorb the time of

this Court.

Furthermore, Graham was properly considered and

the obviousness test properly applied by the District

Court; A & P was properly considered and properly

applied in a case involving a combination of old ele-

ments; and there is no conflict between A ¢& P and

Anderson’s-Black Rock on one hand and Graham on

the other.

It is submitted that the public interest has been

served by the holding of the Court of Appeals for the

Fourth Circuit that the patents in suit are invalid, and

that the Petition is wholly without merit and should be

denied.

Respectfully submitted,

Epwarp Taylor Newton

Wiuu1am J. Ormssy, JR.

4010 The Equitable Building

100 Peachtree Street

Atlanta, Georgia 30303

Attorneys for Respondent

Of Counsel:

Epwin L. REYNOLDS

GrorceE M. Hopkins

Newton, Hopkins & Ormspy

1010 The Equitable Building

100 Peachtree Street

Atlanta, Georgia 30303

Cyrus F’. Ler

Connor, Ler, Connor & REECE

First Union National Bank Building

Wilson, North Carolina 27893