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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Brief for the Respondent in Opposition
- **Published:** January 1, 1972
- **Citation:** 409 U.S. 874

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1008%3A2. Public record. Not legal advice.