GRAHAM v. JOHN DEERE CO.

Print this transcript Transcript: 

Argument of Orville O. Gold

Chief Justice Earl Warren: William T. Graham, et al., Petitioner, versus John Deere Company of Kansas City, et al.

Mr. Gold, you may proceed.

Mr. Orville O. Gold: Mr. Chief Justice, may it please the Court.

The patent before this Court in this case generally referred to as the Graham '798 patent because there was another Graham patent that was cited against us just prior to Graham's patent.

This patent has been held valid twice in the Fifth Circuit Court of Appeals.

In the second case before the Fifth Circuit, the same prior art was considered as was considered by the Eighth Circuit and the case has been brought here by certiorari.

The record on page 15 had a stipulation and it was -- number 7, it's stipulated that this prior art was the same in the Fifth Circuit and the Eighth Circuit.

With the same prior art before the two circuits, it necessarily made -- means then that there is a clear difference between the circuits as to their test of patentability or the requirements for patentability.

Of course, this brings us to Sections 101, 102 and 103 with the Patent Act of 1952.

The question primarily is then whether the Eighth Circuit applied the proper test the requirements for patentability when they substituted their judgment to that of the trial court, reversed the trial court and held the '798 patent invalid.

Respondents in their brief on page 27, suggests that petitioners are argument at Section 103 established a statutory test to patentability.

It changed existing law.

We don't quite say that.

But we do say that it changed the law as applied by the Eighth Circuit and we think the Eighth Circuit is wrong in their test and have been for many years.

A few brief comments regarding to the statute since 1790 Congress has enacted the Patent Laws.

And the first one was entitled an Act to promote the progress of useful arts and in that Act and all subsequent patent statutes until 1952 Act they had statutory requirements for patentability have now the end-utility.

There was no other statutory requirement since the early 1952 Act.

However, this Court in 1850 in the Hotchkiss versus Greenwood applied as a requirement of patentability that the invention be more than they worked over the mechanic in the art.

In other words, in addition of being new and useful it had to involve a greater degree of skill and ingenuity than that possessed by the ordinary mechanic acquainted with the business.

Down through the years this same rule has been applied with this Court with some verbal variance.

There's been associated comments in the different opinions and I believe that some of these comments have been taken up by the lower courts and thereby had departed from what this Court has been holding.

We say the Eighth Circuit is one that has been doing this.

Even prior to 1952, the Eighth Circuit took position that this Court had raised the standards of originality necessary to sustain patents.

In the record, in this case before in the Court on page 925 the Eighth Circuit in its opinion stated this Court has adhered to the position that since Cuno Engineering Corporation versus Automatic Devices Corporation the amount of originality and ingenuity over and beyond now the -- and utility which will constitute invention necessary to sustain a patent for a combination of old elements such as we have here in a crowded art has increased.

We also reported from another case in the Eighth Circuit and the part of that quotation they said, “The Supreme Court as we think raised the standards of originality necessary to sustain patents for improvements such as those involved in the instant cases regardless of their usefulness or commercial success.”

Justice Hugo L. Black: -- I understand you that in the beginning it might have been just, don't do it.

If you could state what state succinctly what you claim proper standard is and what change you claim the Eighth Circuit has made in the standards?

Mr. Orville O. Gold: Yes, sir.

I can do that Mr. Justice Black by referring to that decision which I was going to do.

On page 930 of the record, there is a quotation from the Eighth Circuit case a General Browns Corporation versus --

Justice Byron R. White: Is that in volume 5?

Mr. Orville O. Gold: Yes, sir.

Justice William J. Brennan: Volume 5?

Mr. Orville O. Gold: Yes sir, Volume 5 of the record.

They bring in together --

Justice William J. Brennan: (Inaudible)

Mr. Orville O. Gold: 930, Mr. Justice Brennan.

The bringing together of old elements in a mechanism involving no new principle to produce an old result, however, skillfully done even though the result marks in advance and efficiency and utility is but an exercise of mechanical skill and not convention.

Now, I answered your question Mr. Justice Black.

Justice Hugo L. Black: Now that is the one you claim is wrong?

Mr. Orville O. Gold: Yes, sir.

My point is that they have said that it has to produce a new result in order to be patentable.

I don't think that this Court in any of its decisions has ever said that it had to produce a new result.

It has mentioned function, new function or different function but never has this Court requires that a patent produce a new result.

The Eighth Circuit in effect is saying that if an improvement, a different arrangement of parts, a given operation produces the same result then automatically it's obvious to anyone's skilled in the art or having ordinary skill in the art.

We say that is wrong.

We say that an invention can be made in a device that produces the same result as another older device and still involve a different structure and be patentable.

Justice Potter Stewart: You say that Mr. Gold that because of the decisions of this Court or because of Section 103 of the Act or because of both?

Mr. Orville O. Gold: Mr. Justice Stewart, I say that we can do that with both.

Justice Potter Stewart: What do you (Voice Overlap) --

Mr. Orville O. Gold: I think that you will find in all three of the cases that you have here before you today that the briefs of all the parties have not been greatly in cont or -- in dispute here.

Justice Potter Stewart: It seems the basic agreement largely as an (Inaudible) --

Mr. Orville O. Gold: Yes, sir.

That primarily this Court has held that in order to be patentable you have to be beyond the ordinary skill of the man in that art.

Some of the wording has been beyond the skills of the colleague.

We think that the statute in effect has the same test of patentability.

Justice Potter Stewart: That's to say, I gather Mr. Gold that however phrased, the statute indicates to include the old Hotchkiss case, is that correct?

Mr. Orville O. Gold: Yes, sir.

And I think that in the Cuno case, the AP case, all of the cases before this Court since the Hotchkiss case as Time really had the same basic holding that it had to be non-obvious in order to be patentable.

And that's -- we are being -- it were that and I think that everyone of the parties before this Court in these cases are in agreement with that as I read the briefs I read all of them.

I do say, however, that the Eighth Circuit is one of the departures that were referred to by Congress in their reports in connection with the statute when they said that they hoped that the statute particularly Section 103 would bring rare uniformity and reduce these departures that had occurred before.

We say that the Eighth Circuit has departed and set up there own standard.

They have in effect placed additional conditions on the statute and we don't think the Eighth Circuit can do that.

They have not followed this Court or have they followed the statute.

They have not even applied the statute in connection with our case.

They pay lip service to the statute but when it comes right down to what they have said in their decision, all they have said is that the finding of the trial court was that we had an improved functional result and this was not a new result and therefore, the Court had not applied the stricter standards of the Eighth Circuit and so the patent was automatically invalid in that search.

In order to bolster their opinion, they took the position at even assuming the trial court's findings that valued a significant difference or a new result that they still felt it would be obvious.

He made the statement that they were making that assumption on page 931 of the record.

I will read the first four lines of the paragraph starting on that page.

Furthermore, even assuming that the trial court's findings of a quote, “a slight but significant difference in the flexing of the forward portion of the shank that is not found in the prior art,” can be construed as finding a new result.

And then they went on to discuss the case and say that this was an erroneous finding at the lower court.

However, I want to call your attention to the fact that after they had discussed what the case and what the structure did.

That they then concluded from that assumption that it might provide a new result.

Well, perhaps more efficient, the inversion of the parts so as to allow the shank to flex downwardly away from the plate above it did not bring about a significant new or different result and would have been obvious to a person having ordinary skill in the art.

We think that probably made an assumption that was a new result they turn right around and said, his stewardess and provided new results so it's obvious and that's all they did in their test in which they were applying with that assumption.

It is our position that the Eighth Circuit has applied a standard or test in the requirements of patentability that they have set up themselves.

It is stricter than anything that this Court has ever applied.

It does not comply with a statute and that this Court didn't get supervisory authority should reverse the Court on that point and didn't help to bring out more uniformity under these decisions on patent cases.

Justice Potter Stewart: Has the Eighth Circuit expressed their view on -- I don't believe it did in this case but has it expressed a view as to the effect to the 1952 Act on the existing patent case law?

Mr. Orville O. Gold: Yes, sir.

In some of their cases they have made indications that they felt that the statute made no change and in each of their decisions they've cite the Cuno case and the AP case as according to their standard.

I say that they have gone beyond those two cases.

If they had applied merely to what had been held in the Cuno case or the AP case then they would have said that if it was beyond the calling of the person's skill in the art at the time of the invention it would be obvious but they wouldn't say it had to provide a new result because neither of those cases say that.

Justice Potter Stewart: There is not involved in this case is there, the final sentence of Section 103?

Mr. Orville O. Gold: No, sir.

The final sentence refers only to the manner in which the invention was made.

There's nothing in the record in this case to indicate how it was made when it was quickly or whether it involved a long time of experimentation.

Justice Tom C. Clark: Your patents on an (Inaudible)?

Mr. Orville O. Gold: Yes, sir.

Mr. Justice Clark.

Justice Tom C. Clark: Improvement of a -- in order to might not be -- in getting caught in their office and things that --

Mr. Orville O. Gold: Yes, sir.

I will go into that.

I want to make one more comment on the statute in the Eighth Circuit and I'll go right into the trial court.

I want to call attention to the fact that in the last 15 years, the Eighth Circuit has considered approximately 40 patents and all those 40 it has sustained the validity of only six and each of those six, there was a trial court finding of a new result.

I think that the Eighth Circuit has been consistent throughout all these years even prior to the statute of knocking down patents if they did not provide a new result.

Justice Potter Stewart: How far had they gone of course carried to a ridiculous extreme that would mean if the -- I supposed the electric light was not a patent because previously that electric light gives light and so the kerosene lamps?

Mr. Orville O. Gold: Mr. Justice Stewart, I think we'll have to say that in this application we're talking about structures wherein they are made up of a combination of old elements.

Justice Potter Stewart: It's confined to a combinat --

Mr. Orville O. Gold: Yes sir.

Justice Potter Stewart: -- mechanical combination of patents made up of all old elements.

Mr. Orville O. Gold: Yes, sir.

Justice Potter Stewart: The doctrine of the Eighth Circuit.

Mr. Orville O. Gold: Yes, sir.

I don't -- I'm not suggesting that it would apply to any other situation.

Justice Potter Stewart: I see.

Mr. Orville O. Gold: And that is the situation in our case.

Justice Hugo L. Black: May I ask you one other question (Inaudible) -- you stated as I understand it that if the Court would charged a jury to try the patents to -- that the quotation you gave from the opinion 930 would be an improper instruction that wouldn't give the correct standards.

And do you have anywhere in writing of -- when you've given it succinctly what you say would be a proper charge instead of that far standard?

Mr. Orville O. Gold: Mr. Justice Black, I don't know that I would have anything in writing.

I won't be (Voice Overlap) --

Justice Potter Stewart: Section 103, wouldn't that be a proper charge to the jury?

Mr. Orville O. Gold: Yes, sir.

I think it would Mr. Justice Stewart.

It's a question of whether or not the invention when it was made would have been obvious to a person having ordinary skill in the art.

That is what the statute says.

I think that is a different way of saying exactly what this Court has held in the Hotchkiss case and in the --

Justice Hugo L. Black: In which case?

Mr. Orville O. Gold: Hotchkiss versus Greenwood.

Justice Hugo L. Black: Yes.

Mr. Orville O. Gold: And all --

Justice Hugo L. Black: In an early case?

Mr. Orville O. Gold: Yes, sir.

And I think it's the same thing that Mr. Justice Douglas said in the Cuno case that it had to be beyond the skill of the calling at the time of the invention.

Justice Hugo L. Black: Now, when they thought -- when they -- that's tried before the jury or the court without a jury and goes up to the appellate court in passing on it, what does that court, this -- that -- can that Court just say, "We find and it does not meet the standard."

They were wrong if the evidence didn't support it.

And therefore we set them aside.

That would be the final standard you would suggest?

Mr. Orville O. Gold: Yes, sir.

Of course, Mr. Justice Black the way your question was worded I think it might be a question of whether or not this was a matter of law or a matter of fact.

I think that the final decision as to whether or not it involves patentability is a question of law and so if there was a question of law that was applied by the trial court or by the jury I think that that could be reversed by the Appellate Court.

Justice John M. Harlan: In other words what you're saying that the clearly erroneous rule is not a limitation upon the power to review in a patent case on the issue of non-obviousness.

Mr. Orville O. Gold: On the issue as to patentability Mr. Justice Harlan I think that there are facts that have to be considered in arriving at the conclusion.

I think that the actual decision as to whether or not it is a valid patent is a conclusion of law.

Justice Hugo L. Black: In other words (Inaudible) -- your position here, the final or when you have subsidiary crimes and when you get down to the ultimate question of whether it's tangible that is the true question of law?

Mr. Orville O. Gold: Yes, sir.

Of course, there are questions of facts that definitely should be considered in arriving at that conclusion.

I think that in this case if the Court of Appeals in their decision have fairly reversed it on a question of law that the trial court did not apply the standard, the strict standard that they admittedly apply in their cases and therefore did reverse it.

The trial court did not find a new result.

Now I would like to go into the patent.

I had hoped to use some easels to point this out but I decided that it would be difficult to see it and so if I may I would like to refer to the record particularly volume three in page 577 shows some drawings of our patent that was in suit.

We say that the Eighth Circuit did not actually give consideration to this patent.

The structure was new.

The respondents admitted in their brief on page 28 that the particular arrangement of the elements shown in the '798 patent was not shown in the prior art.

The '798 structure had utility.

There was a Jeff Roy clamp, I think it's Exhibit C which was held to infringe in an earlier suit and it was stipulated that it was a commercial success.

That was stipulation number four in the record page 14.

So there's no dispute that a structure such as these clamps and the respondent's clamps also were successful.

They were useful.

So there we come primarily to a question as to the obviousness of the structure.

In a -- talking about that I would like to comment first on the problem involved.

In the wheat countries they do what they call chisel plowing.

These are frames matted on wheels that have big shanks that go back and rip open the ground.

Originally, where there was not much rocks they had the front end of the shank which if you please is about 2 inches wide and three-quarters to an inch thick.

They were held immobile on the frame but they would rip through the ground and there were some flexibility in the shank back behind a framework.

There's no difficulty when there was no rocks but when these cut valves are moved into the rocky erritory the glacial country up in North Dakota and Montana, South Dakota, those valves were torn up.

When you move a plow at maybe 6 miles an hour across the ground ripping down deep in the ground and it catches onto a rock its immobile, something has to give and it's going to be the plow.

So, there was an effort made to try to eliminate the breakage.

Our client Mr. Graham did arrive at a structure that solved their problem.

That was the '811 patent as we call it.

Then he wasn't satisfied, he continued his efforts and made the '798 patent.

This '798 patent as shown in the -- particularly in Figure 2, 1 and 2 of the drawings on page 577, is a --

Justice Hugo L. Black: Page 577.

Mr. Orville O. Gold: Yes, sir, Justice Black

Unknown Speaker: (Inaudible)

Mr. Orville O. Gold: That is rather unusual structure.

That was a complete change from anything that had been done before in the way of knotting the (Inaudible) with plates and absorb all the shock that would happen when you struck a rock.

The structure has a member that's fixed to the frame.

Under that there is a hinge like member, it's pivoted to this fixed member and mounted on that hinge member is a shank of the plow.

The only connection between the shank and this hinge member is a bolt at the forward end at the place of the hinge and the shank is coming back behind it, you can see here the -- forward in is a bolt.

That leaves the shank free to move relative to the plate.

Justice Potter Stewart: Which is the bolt on -- in Figure 1?

What's this -- not how --

Mr. Orville O. Gold: That picture Justice Stewart, look at Figure 2 right at -- they forward in, which would be at the right hand side of the drawing, Number 55 refers to the bolt.

Justice Potter Stewart: 55?

Mr. Orville O. Gold: 55 (Voice Overlap) --

Justice Potter Stewart: And where does it appear in Figure 1?

Mr. Orville O. Gold: It still at -- the left hand end of the figure towards the north part of the figure.

Its -- a bolt right -- they forward in or right inside.

Justice Potter Stewart: I see.

I see.

Mr. Orville O. Gold: Maybe I can help to show it by showing a chart.

Here is the bolt.

The green member is the hinge plate.

It's hinged on the blue pivot.

The shank is colored in pink.

Now, when you -- there is a bolt, a spring bolt at the forward end.

It has a spring that tends to urge the shank and the plate up against the fixed member and that's what we have referred to as home based position

Normal plowing would have the point of the plow in the ground and the spring hold this forward end up against the plate.

Now, if you hit hard spots in the ground there's going to be a tendency for the plate to hinge downwardly and it will cause the spring here, this Number 65 to compress.

That allows the -- an opening you might say of this hinge member.

That will occur and there would be some flexibility in the shank some bending back behind the plant.

The main thing is when the point of this plow hits the rock.

When that hits a rock it's going to have to move up to go over the rock and that can be done as the hinge is down here compressing the spring and that will help to jump over this rock.

If it doesn't completely jump, with the compression of this spring and the bending of the shank then you can still have damage and shock.

Now, our structure is such that when it's -- in move -- hinging it up it will flex down in this portion of the shank below that plate member.

That is the flexibility that we say, it's different than anything that was ever made in the prior structures.

Justice Tom C. Clark: How they do in the structures?

Mr. Orville O. Gold: In a patent in 1883, Mr. Justice Clark.

It was a Rick's patent.

There was also in the same year a Cob patent and it was -- in our judgment the same structure that was later made by Glencoe.

And you will hear the respondents say that all we have done is turn over the shank and this hinge plate that in effect is the difference.

In the Glencoe structure, the shank is above the plate but in such a way that the -- (Inaudible) -- in such a way that the -- when it flexes or when it swings up, the shank will be against the plate and it will tend to push it against it and keep it from flexing.

It will hold down solid so all the stress is back behind the plate that gets then into a position such as we had with the fixed clamps where this excessive bending in the back will cause stress and break each of the shanks, be -- bend beyond the elastic limit.

They do have some bending above the shank but -- if Your Honor please, there is a sketch in Volume 3 of the record, that would be plaintiff's Exhibit W on page 653.

That will go -- that would tend to show a form of what would be similar to Rick's, Glencoe, and those prior patents.

That particular sketch was a rough sketch to show an idea of what would happen with the old structures and in those -- when it swung down the stirrup or loop that goes over the shank forms a fulcrum.

Now, and it forces up on the left of the drawing in the rear of the clamp, it tends to force forward end of the shank down against the plate of the hinge as it force it down, the bending is back at the rear of the clamp so you have all of the excessive bending at that point.

I would like to reserve some for rebuttal sir.

Chief Justice Earl Warren: You may.

Mr. Morris.

Argument of S. Tom Morris

Mr. S. Tom Morris: Mr. Chief Justice and members of the Court.

Let me answer quickly to our three statements that were made before we commence the formal presentation of our case.

A question was asked to Mr. Gold concerning the test applied in the Eighth Circuit and he read a statement from the opinion of the Eighth Circuit wherein the Eighth Circuit disapproved a rule which would find invention for mere improvement as long ago as 1876.

This Court in Reckendorfer versus Faber said, "Perfection of workmanship however much it may increase the convenience extend the use or diminish expense is not patentable.

That has been think a consistent rule in this Court from that day to this."

Justice Potter Stewart: But he was talking about something else, he was talking about perfection of workmanship.

Mr. S. Tom Morris: Well, the question asked if perfection of workmanship improvement, increase of efficiency, economy, those things this Court has always said are not enough --

Justice Potter Stewart: Well, if all you have --

Mr. S. Tom Morris: -- in (Voice Overlap) case --

Justice Potter Stewart: -- is protection of workmanship.

Mr. S. Tom Morris: Alright.

Justice Potter Stewart: But that's beginning with the answer.

Mr. S. Tom Morris: Now, then we will come to the answer of that specific question by analysis.

My point here is to show that it has long been the rule of this Court that mere perfection of workmanship mere improvement, mere increased deficiency or economy is not enough for patentability.

Now, then another remark counsel made which I would like to answer specifically before turning to the body of the case, I believe, he stated that he did not contend that 10 -- Section 103 changed the law and it's rather difficult to understand that statement when at page 23 of the brief he says, "Congress in Section 101, 102, and 103 of the Patent Act of 1952 provided a statutory definition under requirements of patentability."

This was a change from the standards of invention of the judicial opinions expressed from the decades immediately preceding the Patent Act of 1952.

The Patent Act was expression of the clear intent by Congress to return or restore the old requirements laid down in Hotchkiss versus Greenwood.

My point simply is and I believe we have traced it in chronological order through the brief that since Hotchkiss versus Greenwood right straight down through the last expression of this Court in A&P the rule has been to determine patentability in a combination of old elements case.

The question they rule has been or the question has been whether or not the combination amounts to an advance beyond that which would be expected of a person having ordinary skill in the art.

And I say that the Court if that's exactly what Section 103 says, there isn't there maybe some change in the language of it but there cannot be any change in the meaning of it.

I think all of the circuits with the exception of the Second Circuit and two decisions by Justice Learned Hand have reached that conclusion and I believe that in following the history of it the position is irrefutable that that is what Section 103 means.

That's what Congress said in the Committee Reports and with one or two exceptions.

Justice Byron R. White: Well, Mr. Morris how about the Eighth Circuit's test, let's assume the Eighth Circuit haven't said that the test where there's an old -- with the combination of old element is whether a new result is produced.

Mr. S. Tom Morris: I don't think the Eighth Circuit has said that --

Justice Byron R. White: I didn't -- I did --

Mr. S. Tom Morris: -- necessarily, Your Honor.

Justice Byron R. White: I didn't say it did.

I said assume it did, is that wrong?

Mr. S. Tom Morris: Let me address that very specific problem because it's an excellent question.

Its -- it gets us down to the heart of the problem.

Now, we can free the test any way we want to when you come to apply to specific factual situations.

As the Court said, as Mr. Justice Jackson said in A&P case, Mr. Justice Douglas said in his concurring opinion there, as was said in several of the cases prior to that time, when you come to a combination situation where there is nothing new, there is no new element, no new mechanical element and all that is new if there is anything new is merely in the arrangement, the particular combination of those mechanical elements.

Then, how do you determine whether or not it is above and beyond the expected skill the ordinary man having normal expected capacity in the industry.

And this Court has said when you come to that situation in Lincoln Engineering for example it said it's not enough if all it does is produce an old result in a more efficient way.

And in A&P it said, "Only, only in that type of case can it amount to invention?

Can it be an advance beyond the expected skill of the art if it does produce some new unexpected or surprising result or consequence, some new unexpected or surprising function of a part or combined functions of parts?"

That's what the Eighth Circuit is saying.

It is merely saying the same thing this Court said in A&P.

Justice Byron R. White: So obviousness is a -- obviousness to the one test of obviousness is whether if there's a new result or not.

Mr. S. Tom Morris: One test of obviousness as applied to this narrow area, a narrow area of a combination of old elements.

And if it does produce a new unpredictable, unexpected consequence then it may amount to invention.

Justice Byron R. White: Even if --

Mr. S. Tom Morris: I think that's all the Eighth Circuit is saying.

Justice Byron R. White: Even if the -- even if the new arrangement is, let's say obvious.

Mr. S. Tom Morris: Well, you would have a good question there, if the arrangement was obvious and that might be true, that's not --

Justice Byron R. White: It might produce a very new result.

Mr. S. Tom Morris: It might produce a new result.

For example I think in one of the cases coming half (Inaudible) at least there is certainly a contention on the part of the patentee that while there wasn't -- while the arrangement might have been obvious the result was wholly unexpected and even unexplainable.

The experts don't even know and it may be, I don't know the record in that case.

Justice Byron R. White: Yes, but producing --

Mr. S. Tom Morris: It may be that that's --

Justice Byron R. White: -- producing a new result is different from producing a non-obvious result?

Mr. S. Tom Morris: Is it?

Is non-obvious anything different from new?

Justice Byron R. White: Well, the Act seemed to treat new and obvious as different?

Mr. S. Tom Morris: Does that -- does the -- do the words which were used in defining it really mean anything?

Do they really get us any closer to solving the issue in the given case of whether or not this is an advance beyond the expected skill of the calling which entitles a person to a statutory monopoly?

Unknown Speaker: (Inaudible)

Justice Potter Stewart: Are you suggesting that novelty and the invention are the same thing?

Mr. S. Tom Morris: Synonymous?

Not by any means, Your Honor.

Certainly there can be something noble in this case.

We have no hesitation in saying it that the '798 arrangement is noble in the sense that you can't find a picture of it in the prior art.

There are some different little arrangements which are spelled out with picture words in the claims.

And consequently since you can't point to another patent which shows it precisely, it's noble in the sense as defined in Section 102 of the statute, we don't challenge that.

Justice Potter Stewart: I want to be sure that I understand your answer to my Brother White's question.

He said that assuming that the Eighth Circuit unambiguously had explicitly said that a -- one of the distinct, discrete requirements of patentability is that the in the case of a mechanical combination patent of all elements is that the device produce a new result, is that as -- would you say that's a correct statement of the law?

Mr. S. Tom Morris: I would say that is more narrow perhaps than is necessary to state the rule of law.

Now, I think that is precisely what this Court said in A&P.

Justice Potter Stewart: Well, now you don't -- I can't find that at least in the statute in Section 101, Section 102 or Section 103 and earlier you told us that the statute codified the case laws.

Mr. S. Tom Morris: Well, it's a matter of trying to apply the basic test to the specific property.

The broad and basic test is they expected something beyond the expected skill of the calling as it's been stated in the case --

Justice Potter Stewart: Well, but --

Mr. S. Tom Morris: -- all the way through or as stated in the statute, non-obvious.

Now then --

Justice Potter Stewart: Well, those are two different -- to me those have two different meanings, those two phrases for something which produces a new result and something which was not obvious.

They may or may not overlap in any given patent.

Mr. S. Tom Morris: Well, that is entirely true.

I think that's -- may be a correct statement as applied to a specific case.

As Mr. Justice White posed a question a moment ago, you may have a situation where you could say that the arrangement would have been obvious to one having skill in the art yet the result was unexpected.

That might be true.

In another situation, it might be possible to say that the arrangement or the combination would be unobvious though it's rather difficult for me to imagine a case of that kind where you have -- where you're dealing with everyday stock of mechanical elements.

Now, if I may, let me turn the Court's attention to the patent here in issue.

I know that this patent is not of any great national significance yet, nevertheless, these questions must be decided in the context of the facts and the patents before the Court.

Let's see what happened here.

Let's see what the problem was and what was done.

Now, let's eliminate a little chat to before we start.

This is a spring clamp for attaching the shank of a ground working tool to the frame of a plow so that it may pivot under forces from rocks or other obstructions in the soil and return to operating position by means of a spring.

Now, in a simple language that's all it is.

Now, the first thing I want to make absolutely clear is that's not new with this fact.

That goes back, that business of a spring clamp or (Inaudible) resiliently attaching a shank to a -- to the frame of a tool is at least since 1875 that goes back at least that far.

There's not any new plowing result here.

This is a chisel plow, chisel plow is a -- in a modern sense at least go back to 1935, spring clamps or chisel plows at least go back to 1946 or 1947.

So this didn't bring about a new plowing result.

It was not a new idea on a mounting of a shank.

It was not a new spring clamp or a chisel plow.

None of those broad things were present here or accomplished here.

And in order to define anything inventive or that might even approach inventiveness in this case.

We have to come down to the elements that are involved in their arrangements and their accomplishments.

Now, here again let's eliminate chat.

It is conceded and found that every single mechanical element here is old and that couldn't be -- there couldn't be any question about that to at least 75 years old in this particular art.

There isn't even any contention or could there be any contention here that this was the first time all of these elements had been confined in a spring clamp or a chisel plow because that had all been done by Mr. Ralph in the Glencoe clamp at least 2 years earlier than Mr. Graham by stipulation.

So what is it here?

And the only way you can answer that question I think is to look at it from the standpoint of the problem unless thus examined.

Mr. Graham had an old spring clamp which is called '811.

Working on these plows, for these shanks and he had some problems with it.

He had some wear problems with it.

He had a rather unusual arrangement in that the shank pivoted about a point on the heel of the clamp rather than around its pivot pin.

And also, he didn't have a true fastening means to fasten his shank to his hinge member so that there was a sliding movement as the thing worked.

Well, he had two problems of wear, one at the rear where the shank scrubbed on the butt of his clamp and one at the front where it pulled on its spring rod.

So, what did he do?

He set out to solve that problem, those problems.

He turned his hinge member upside down and fastened it together with a bolt at the front and a loop underneath to hold it up at the rear.

Now that's what he did and nothing else.

You could study this record and you can phrase it any way you want to and that's all you can make of it.

He took these old elements which were ready available right there in the art and rearrange them slightly and that's all.

Now, then what did that accomplish?

Well, first of all let's address ourselves to the obviousness of that questions, of the structure itself aside from what happened to it.

Now, if you have a shank which pivots about a point and it's rubbing at that point, what would be the obvious and common sense thing for anybody to do?

It would be to put a pivotal bearing there wouldn't it to eliminate the rubbing contact instead of a sliding pivot to have a full pivot, an ordinary full pivot.

That's what he did.

That's what the art did.

That's what we use in all of the art except his own '811 patent.

And his other problem was the slipping and sliding of the shank and pulling on his spring rod which caused to wear at the front.

But what would be the obvious answer to that if your -- if you have a one spring rod coming through here which carries all this big (Inaudible) to the -- of the shank if it works back and forth and that binds the spring rod so that It can't go up and down as he wants it to, to carry the spring pressure.

What would you do?

What would anybody do?

Fasten them together to take the load off the spring rod.

Well now, when he did those two things he accomplished it wear reduction as a relay to his '811 clamp, his old clamp.

Yes, he improved his old '811 clamp.

He reduced some wear.

But, that had been fully accomplished in the Glencoe clamp.

Glencoe had a rotating pivot.

Glencoe had a hinge member which did exactly that same thing.

Glencoe had fastened the shank to the hinge member to take fully load off the spring clamp before Graham did.

So, not only did he use the obvious aside from any art, in addition to that, those things were taught in the very art in which he was working.

Now, I'm not overlooking what he now asserts in the courthouse as the heart of his inventive concept.

I've left that because it must be dealt with and it must be destroyed as the Eighth Circuit destroyed it.

He says now and this has never raised or mentioned in the Patent Office.

It's not mentioned in the specifications of the patent.

It's not mentioned in the (Inaudible) or history or proceedings before the Patent Office.

It's not mentioned in the claims but in the courthouse now he says, "Yes, but when I turned the plate and shank upside down that permits my shank to bend down away from the plate in this area where it contacts the plate and that makes a more resilient shock absorbing structure than I had before and consequently that is a new accomplishment.

That is a significant consequence which entitles me to a patent."

Well in the first place, I think it's rather strange that if that was such an important feature, that it would never have been mentioned at all until it got to the courthouse and you can search the record from front to back and that's -- you will see that its never been mentioned until it got to when it got to the Courthouse and it also strikes me as strange that that could be relied upon as a feature of importance to sustain this patent an accomplishment in advance beyond the expected skill of the art.

An unobvious result if you please, or a non-obvious structure if you please, which would entitle him to a patent when his own expert says, “Do you regard the small degree of flex in the in the forward end of the shank that lies between the pivot point and the point of spring attachment to be of any significance or any importance to the functioning of a device such as '798?”

Answer: Unless you're approaching the elastic limit I think the flexing will reduce the maximum stress at the point of pivot there where the maximum stress does occur.

I think it were reduced that, I don't know how much.

Question: Do you think it is a substantial factor, a factor of importance in the functioning of the structure?

Answer: Not a great factor, no.

And in the Jeffrey case which had been tried sometime earlier a similar testimony was given and is also reported in this record that you consider this portion that you call a resilient action of the shank Mr. Fenton in the forward 8 or 9 inches that's up inside the mounting of the bracket important to the function of the device?

Answer: Not to important.

It's present but it's not too important.

Question: It would function just as well whether that were there or not, wouldn't it?

Answer: In this particular case of this device, yes, sir.

Question: I think it would essentially, yes.

So, this great important thing that's been the advance beyond the art now even it's own expert says it's unimportant.

Well now, looking at this device in summation of what was done and what was accomplished.

It didn't change the way it plowed.

It didn't the way it pivoted except that it pivoted around the bearing instead of a point.

It didn't change the action of the shank.

It didn't change the plowing result.

It didn't change the main body of the clamp.

It didn't change the springs.

It didn't change anything except the relative position of the shank and the hinge member and the fastening means and that's all.

Now, if that be an invention, if that be an advance which any Court will say would entitle a man to a 17-year monopoly then it seems to me that we have gone up long way down the road of destroying any validity of the patent system.

Now, let me turn my attention or if I may to the history of this litigation just a bit.

Of course, we recognize that we have here former decisions of the Fifth Circuit upholding this patent twice.

But I don't' think there can be any doubt whatsoever about the basis of validity in the Fifth Circuit.

You can search both opinions in the first of the Jeffrey cases and in Hotchkiss case both of which I have set out the -- in principle part in the brief to find the basis for the holding of validity in the Fifth Circuit and you can come up with only conclusion.

And that is that the patent was sustained in the Fifth Circuit because it produced as it thought a more efficient and more economic result.

Listen to these words.

It still seems to us that it's hybrid type structure combining the wear resisting rotating pivot in part reminiscent of the prior art with a new shank and stirrup arrangements permitting some of the same advantageous flexibility inherent of the old '811 structure reveals sufficient indicia of novelty and invention to justify limited protection.

The further rule and this is the only place you can find anything that looks like a rule in that opinion.

The further rule along recognized by this Court that an improvement combination is patentable even though its constituent elements are singularly revealed by the prior art where as here it produces an old result in a cheaper and otherwise more advantageous way.

And if that weren't enough to establish what the real rule is, look on to the Hotchkiss case which followed some three years later and the Court said this, “It is only because this particular arrangement of these known elements adopted by Graham achieves the result better than the prior art afforded, better than the prior art afforded that Graham was entitled to a patent.”

That's the rule in the Fifth Circuit.

There was no attempt to follow the statute.

There was no attempt to apply the rule --

Justice Potter Stewart: What does the statute say about result one way or the other?

Mr. S. Tom Morris: They didn't say anything at all about it.

Justice Potter Stewart: Well, then so --

Mr. S. Tom Morris: Well, was there any --

Justice Potter Stewart: -- isn't it quite right that there was no attempt to follow the statute.

Mr. S. Tom Morris: Your Honor, was there any --

Justice Potter Stewart: That was (Voice Overlap) -- I'm talking about results so far as the statute goes, isn't that correct, both courts, both the Fifth Circuit and the Eighth Circuit?

Mr. S. Tom Morris: I don't quite understand.

Well, no, sir.

Your Honor, that's not true.

As I construe the opinions.

In the first place, you will not find any attempt in the Fifth Circuit to apply any standard of the statute or prior cases or anything except its own old standard of a better result or any improved result.

Now, let me turn quickly to this problem that you're pointing --

Justice Potter Stewart: As I read what you said for the Fifth Circuit they weren't talking about a new result.

They were talking about achieving an old result in a new or more efficient way.

Mr. S. Tom Morris: That's exactly what I've said.

I believe that's the way I read it and I say that's wrong.

Now that doesn't call anybody's test.

It doesn't call it a test laid down by this Court or by the statute or any other test.

It's the only circuit that I know anything about that says that, "A better result alone is now enough, is enough."

It's only Court I know off that says such a rule as that.

Now turning to the Eighth Circuit, if I may, I'd like to direct the Court's attention to the square and true and complete holding of the Eighth Circuit and let's not take it the tidbits to find out what the true context is.

Here is what the Court said, “Furthermore, even assuming that the trial court's finding of a slight but significant difference in the flexing of the forward portion of the shank, that is not found in the prior art can be construed as a finding of a new result.

The Court's further finding, now if the Court followed this, the Court's further finding that patent '798 exhibits invention and would not have been obvious to a person having ordinary skill in the art is clearly erroneous.

The alleged patentable difference between the '798 structure and the prior art lies in the arrangement in the '798 structure of the shank below the plate of the pivoted member permitting the shank to flex throughout it's link and particularly permitting the forward portion of the shank to flex downwardly away from the plate theoretically.

And listen to this, theoretically, at least, when the plate is below the shank as in the prior art there is a tendency of the shank to bend against the plate and when the plate is above as in '798 there is a tendency of the shank to bend away from the plate.

And let me stop there and direct our attention to the question again of obviousness under the statute.

If the plate lies underneath the shank in the prior art and the shank bends downwardly against the plate, what will happen if you change the positions and move the plate above retaining a fulcrum point above as is was done.

What's going to happen?

Which way can it be in?

The only way and the obvious way is it will now been away from the plate instead of toward it, is that predictable?

Is that the expected?

Is that what any high school physic student would say would happen?

By any imagination can that be construed as an unexpected structure or an unexpected result an unobvious things?

Let's finish then with what the Eighth Circuit said about this fact.

But it's this difference, they pointed out the difference in the bending.

But is this difference significant enough to support the patent.

We think not.

Painstaking examination of the entire record including the testimony of the experts convinces us that the changes in the prior art and the '798 involved only the application and mechanical ability.

There's no adequate evidentiary support for the Court's findings and going on that says and would have been obvious to a person having ordinary skill in the art.

Let me sum up by bringing in some other ancillary things.

Frequently, if a case is a closed case the Court's rely upon these make weights, I call them validity crutches in the brief.

Such thing as commercial excess -- success, a long felt want, inability of others to solve the problem, immediate solving of the problem by this device, immediate copying and adoption by others, none of which are present in this case.

Graham has never manufactured or sold this device at all or regardless of what he says about his merits.

And all these years he's never done it.

There, the only commercial success was commercial success achieved by Jeffrey Manufacturing Company who are only -- market with their device more than a year prior to the time this patent even issued.

There's no finding of any copying in this case by anybody.

As a matter of fact the only way that there was a finding of infringement in the trial court was upon adoption of equivalence not because the claim to the patent could be read upon these devices.

There's no evidence of any long felt want here when the problem arose.

It was solved immediately by some sketching and the filing of a patent application.

There's no evidence here of any long experimentation or wrestling with a tough problem that just didn't exist.

I say to the Court that this patent represents a derelict which the Eighth Circuit after a full and careful review has said is not entitled to stand.

And under the record, the undisputed facts in this case, the achievement of this device if there is any at all is so nominal and so clear and would have been so obvious to even a high school physics student that its simply is not entitled to a statutory monopoly for 17 years or any other years.

Justice Hugo L. Black: May I ask you if the picture of the plow or the equipment any where, I'm not talking about this map, this diagram in its application of a patent?

Mr. S. Tom Morris: Your Honor, I think you will find in the record several brochures and so on that are in the Fifth Volume.

There are some pictures probably in there although I can't put my hand on any right off the bat.

Justice Hugo L. Black: But now that both of you've argued it, would you mind telling me in in plain Layman's language if you can exactly what the plow was before and what the it became afterwards?

Mr. S. Tom Morris: Yes, sir, I certainly can very easily.

Justice Hugo L. Black: Not according to any artistic language used in giving the patent.

Mr. S. Tom Morris: Plain and simply as I know how Your Honor.

The plow is what's called a chisel plow.

It consist of a mobile frame, in other words, a frame mounted wheels drawn by a tractor.

Justice Hugo L. Black: It's always drawn by a tractor?

Mr. S. Tom Morris: Always drawn by a tractor in modern times although it could be small enough for horses I suppose but a tractor.

It has multiple cross beams to which a multiple ground working spring shanks are attached.

Justice Hugo L. Black: What do you mean by multiple cross beams and (Voice Overlap) --

Mr. S. Tom Morris: It has three of them.

Generally speaking there is -- the plow is drawn this way by the tractor.

It has two or three cross beams or transverse beams, transverse the direction of how this plow travels and on these beams that's the frame of the plow.

Justice Hugo L. Black: That's the frame and all –-

Mr. S. Tom Morris: That's --

Justice Hugo L. Black: -- the beams are --

Mr. S. Tom Morris: All the beams are mounted that shanks that come back and curve and work the soil.

Justice Hugo L. Black: Are they -- that's what goes in the soil, is that it?

Mr. S. Tom Morris: That's a tie -- that's not the precise one Your Honor that's a forerunner.

Unknown Speaker: Is this in here?

Unknown Speaker: Well, is there -- is there one up in here any way?

Mr. S. Tom Morris: Well, I think if you look at page 5 -- 819 you'll see a picture of the Jeffrey Plow which is as substantially similar plow or there's a brochure there showing the arrangements.

818 and 819, Your Honor, there are pictures there.

Also 821.

So --

Justice Hugo L. Black: And now you call us --

Mr. S. Tom Morris: Not the --

Justice Hugo L. Black: You brought us down to where you (Voice Overlap) --

Mr. S. Tom Morris: Not a complete -- my definition --

Justice Hugo L. Black: -- (Inaudible) in the -- down underneath in a --

Mr. S. Tom Morris: Alright.

Justice Hugo L. Black: -- things that go in the ground.

Mr. S. Tom Morris: Now then we --

Justice Hugo L. Black: That's the old-fashioned plow?

Mr. S. Tom Morris: That's the old-fashioned plow except the reason this is --

Justice Hugo L. Black: Down there?

Mr. S. Tom Morris: Excuse me.

Justice Hugo L. Black: But down where the thing, it goes in the ground.

Mr. S. Tom Morris: Oh, that's a -- generally speaking, these plow has used what's called a chisel point and that's where the name chiseling comes from.

It's a sharp type of tool that is designed to penetrate the ground and go through and break the hard pan or supposed to.

Now that's the ground working element.

But the heart of this lawsuit now is not that plow, that's an ancient thing.

The heart of this lawsuit is the clamps which attach those ground working elements to the frame.

Justice Hugo L. Black: Well, now you've -- we've got the plow, that's the way it was.

Mr. S. Tom Morris: Alright.

Justice Hugo L. Black: And they -- their claim of improvement is that they -- as I understand it, because -- see if I'm wrong and when the old plow would get in a rock or something that's covered, it wouldn't factually, it wouldn't give like it should.

Is that the idea, it wouldn't give?

Mr. S. Tom Morris: Would pivot, that's correct.

Justice Hugo L. Black: And they wanted to discover some way to make it give and work some way to make it give so that it move over.

Mr. S. Tom Morris: Right.

Justice Hugo L. Black: And what's been done here as to --

Mr. S. Tom Morris: But Your Honor, let me --

Justice Hugo L. Black: But -- yes?

Mr. S. Tom Morris: May I interrupt you because --

Justice Hugo L. Black: Yes.

Mr. S. Tom Morris: -- you're leaving out a crucial and important step.

This manufacturer devising of a spring clam to do that job that is to let shank pivot and return to action is old.

It wasn't done first with Graham in this patent.

It was -- has been done for years.

It was done in an earlier Graham patent as applied to earlier plows in 1947.

It was done by a Jeffrey.

It was done by other people.

So this patent involves merely an improvement of a prior spring clamp which performed that job.

Justice Hugo L. Black: Well, does it -- make it give that?

What does it do Layman's language about it?

Mr. S. Tom Morris: I think --

Justice Hugo L. Black: I can't understand it, the --

Mr. S. Tom Morris: Your Honor, if you can search this record and find any testimony in the record which will show you anything that it does other than this little reduction and wear and other than this so-called difference in the flexing --

Justice Hugo L. Black: Well, what's the difference in the flexing, is it --

Mr. S. Tom Morris: The difference is that it --

Justice Hugo L. Black: What if -- when the farmer gets hold of this, (Voice Overlap)

Mr. S. Tom Morris: It doesn't make any difference at all when a farmer gets hold of that, it's immaterial.

Justice Hugo L. Black: What --

Mr. S. Tom Morris: The difference is --

Justice Tom C. Clark: Well, he is the one that's doing the plowing.

Mr. S. Tom Morris: Sir?

Justice Tom C. Clark: He's the one who's doing the plowing.

Mr. S. Tom Morris: Well, --

Unknown Speaker: What does he get out of it when he gets this --

Mr. S. Tom Morris: Not any.

Unknown Speaker: -- new improvement?

Mr. S. Tom Morris: Nothing.

Not only that, I defy that it even exist beyond such an infinitesimal amount that it's not even measurable, some efforts were made to measure the thing.

These shanks swing back 12-13 inches when they're coming clear of those rocks.

The flex that they're talking about in the shank, the maximum that anybody has been able to measure it is about 35,000ths of an inch, 35,000ths of an inch.

Justice Hugo L. Black: You mean, it flex to a 35,000ths of an inch difference.

Mr. S. Tom Morris: 35,000ths of an inch away from this pivoted member different from what it was before.

That's it.

A farmer would never know any thing --

Justice Hugo L. Black: Do you say that's all the difference in it?

Mr. S. Tom Morris: Your Honor, you can search this record and that's all there is, that's all the trial court found as a basis to support this patent.

Justice Hugo L. Black: Well, now what advantages does the farmer get out of this?

Mr. S. Tom Morris: Oh, the advantage and the only advantage is one which is the figment of counsel's imagination and that is --

Justice Hugo L. Black: Of course, he's not a farmer.

What I want to know is what the farmer is (Voice Overlap) -- what this farmer is looking at it, reusing it would find, he had a benefit.

Mr. S. Tom Morris: He'll find none Your Honor and it's never been proven that there is any by any farmer.

There's no farmer anywhere has ever testified that it does anything.

Justice Hugo L. Black: What did the Fifth Circuit says here?

Mr. S. Tom Morris: The Fifth Circuit says it reduces wear?

Justice Hugo L. Black: Who wrote that opinion?

Mr. S. Tom Morris: I believed Mr. Justice Reed wrote that opinion --

Justice Hugo L. Black: Yes.

Mr. S. Tom Morris: -- who brought the first opinions?

Justice Hugo L. Black: Who wrote the second?

Mr. S. Tom Morris: You've got me, I don't remember.

Chief Justice Earl Warren: Why does a respondent want to use it if it doesn't function?

Mr. S. Tom Morris: Well, that's just -- Your Honor, you're assuming something that hasn't been decided and that is that we want to use it.

We say to you that when we came to design our clamp the patent had been issued.

We didn't copy that clamp.

We deliberately set about to design around that patent.

We made a careful search.

Everything was done was carefully checked and tested.

We studied this patent to determine what its heart was and we avoided that patent.

Now, the trial court found that we infringed.

Chief Justice Earl Warren: Now, how -- what --

Mr. S. Tom Morris: The Eighth Circuit and reach that point.

Justice Hugo L. Black: Why did the trial court find you infringed and why?

And why do you say that's wrong?

Mr. S. Tom Morris: Well, Your Honor that's another long, long story.

Justice Hugo L. Black: Well, I don't want to know.

Mr. S. Tom Morris: You see --

Justice Hugo L. Black: The claims are too long for me (Voice Overlap)

Mr. S. Tom Morris: Well, they're really not.

Let me --

Unknown Speaker: (Inaudible) in the claim.

Mr. S. Tom Morris: So let me call to your attention something that is -- well, this could go forever and I've already used my time but the Court's question goes to the (Voice Overlap) --

Justice Hugo L. Black: Well, I don't want to get a lot of time.

I just wanted to see if I can get a picture --

Mr. S. Tom Morris: Well, let me read you what the --

Justice Hugo L. Black: -- of the thing and it did and what it didn't do?

Mr. S. Tom Morris: Let me read to you what the claim itself says about the relationship of this pivoted member and this shank.

And I'm coming down to the element that element, the one element where it would be.

Claim one says, means connecting the elongated plate portion that's the hinge member with the shank for maintaining the upper phase of the shank in constant continuous contact with the under phase of said plate portion of the shank attaching members.

Justice Hugo L. Black: Will do what?

Mr. S. Tom Morris: For maintaining constant continuous contact with the under phase of said plate portion of the shank attaching member.

Justice Hugo L. Black: So that means all of that, what is -- does that mean fastened it -- to it somewhere?

Mr. S. Tom Morris: That's what it means to me Your Honor it says, connect means connecting for a constant, continuous contact.

Justice Tom C. Clark: And that's the bolt we've been hearing about?

Mr. S. Tom Morris: That's the bolt and --

Justice Hugo L. Black: What the -- you mean the --

Mr. S. Tom Morris: -- the stirrup at the rear through which the shank passes.

And yet here that's what the claim says yet the argument is that the secret to it, the heart of the improvement is that it bends away from it.

Here it says means maintaining constant, continuous contact.

I've more than used my time and I hope I haven't exhausted the Court's patience.

Chief Justice Earl Warren: Mr. Gold.

Rebuttal of Orville O. Gold

Mr. Orville O. Gold: Mr. Chief Justice, if the court please.

I would like to make one comment first.

The respondent's attorney has indicated that the respondent didn't care about making this device.

They designed around it.

The record shows that the respondent was making what was called a pigtail shank type of plow for it had a coil in the shank behind the clamp.

Other than that it was a fixed clamp and that is a device that were shown in the record, in the catalogues in the page put out in the first (Inaudible) that they weren't satisfied with that type of device because it wasn't selling.

Justice Hugo L. Black: Wasn't what?

Mr. Orville O. Gold: It wasn't selling.

The market has gone to Graham and Jeffrey and these other small companies.

They sent men out in the field and made surveys.

Those surveys are in the record.

There were two of them.

One start at page 799, the other one start at page 823.

Their extensive surveys made at the plows that were in the field.

They were familiar with --

Unknown Speaker: Who made the surveys?

Mr. Orville O. Gold: The surveys -- one was the defendant's Exhibit 30 starting on record page 799.

Justice Hugo L. Black: You said they made the survey, (Inaudible)

Mr. Orville O. Gold: The respondents, John Deere.

They made a second survey and it started on page 823 of the record.

Those were rather extensive surveys Mr. Justice Black.

In addition to that they made up a prototype and sent a drawing to that prototype to their patent department and got letters back telling them that their device infringed the '798 patent.

So with full knowledge of the patent they still designed one like it.

They still wanted to use it.

They were found by their own people that they infringed, they went back and changed two little tiny parts by putting a little bit of metal on it, so it would contact the fixed -- the frame instead of the fixed member that was fastened rigidly to the frame just a little bit of point difference in contact.

They said we are out of the range of the claims.

We're free, we can use the idea.

I think that the record clearly indicates that they did want to use this structure.

I would like to make one other comment or two if I may.

There was a contention that this was something that was brought forth in the courthouse.

The patent disclosed the structure.

There was no contention any place that it didn't teach how to make it.

And I believe that that's all the statute requires us to do in describing an invention we must disclose it so that is sufficient for others to make it.

And that was the case here and we feel that you don't necessarily describe all the functions.

You certainly don't claim functions.

That has been criticized in the past.

You claim structure.

We did that in this case.

Thank you, Your Honors.

Print this transcript Transcript: 

Argument of Dennis G. Lyons

Chief Justice Earl Warren: Number 37 Calmar Incorporated, Petitioner, versus Cook Chemical Company.

Mr. Lyons.

Oh, yes and number 43, Colgate-Palmolive Company, Petitioner, versus Cook Chemical Company.

Mr. Lyons.

Mr. Dennis G. Lyons: Mr. Chief Justice, may it please the Court.

This case started as two declaratory judgment actions in the District Court for the Western District of Missouri.

They were brought by Calmar and by Colgate-Palmolive Company against Cook Chemical.

Cook Chemical Company was the assignee of U.S. patent number 2870943 which was originally issued to Baxter I. Scoggin Jr.

The declaratory judgment suit was brought after Cook had threatened these parties with an action for a patent infringement.

And the declaratory judgment actions sought a declaration that the patent in question was invalid and a declaration that it was not infringed by the device that Calmar was making.

Calmar was a maker of plastic spraying devices.

Colgate-Palmolive was one of its costumers.

It purchased these devices and used them on insecticide bottles.

The -- there was then a counterclaim by Cook as there frequently is in patent declaratory judgments suits.

A counterclaim for infringement and that injunction and damages were sought.

The District Court found that the patent was valid; found that it wasn't infringed.

Before passing on the question of damages under the Rule 54(b) the District Court certified that there was no reason for entering there -- that there is no reason for delay in entering a judgment on the issues of validity and infringement and under it such a judgment which was an appealable order.

The Eighth Circuit on appeals by Calmar and Colgate affirmed the judgment of the Eighth Circuit.

There were then petitions for certiorari presented to this Court, urging the Court to grant the petitions and to find the Scoggin patent invalid.

And that was the question presented to the Court this morning.

We have here a picture of the device that is disclosed in Mr. Scoggin's patent.

This is on page 381 of the record.

The device is essentially a sprayer of the sort that you buy in supermarkets that comes mounted in a bottle of insecticide were like.

Here is the -- actually this is the -- yes this is the assignee of the patent, but this is a Cook Chemical's product sitting in this bottle here.

What this consist of is a pump which goes down into the bottle -- the bottle would be down here.

The pump itself is not patented.

The pump is an old pump.

There is nothing new about pump.

What is new supposedly in the Scoggin patents is the idea of putting this cap over the pump and holding the pump down during shipment --

Justice William O. Douglas: I didn't hear you, putting the what?

Mr. Dennis G. Lyons: Putting this cap.

Justice William O. Douglas: Cap?

Mr. Dennis G. Lyons: Yes sir cap over the pump.

Supposedly the new feature was putting that capital of the pump and affecting a seal within the cap.

Justice William J. Brennan: Now, before Mr. Lyons that there was no cap at all?

Mr. Dennis G. Lyons: Well, actually about 20 years before there was a device with cap on it in the bottle.

In the manufacture of insecticides during the 1950's, neither of the -- of the companies that were making plastic dispensers were -- were making them with a cap.

That was a cap in place.

However, about 20 years before there was a comparable structure which we will show in a few moments.

Previously the merchandizing technique, if you will, had been to take the bottle of insecticide, have a plain cap on it, have a paper collar attached to that cap, and have a sprayer attached to that paper collar.

And there were certain commercial problems with that the --

Justice John M. Harlan: (Voice Overlap)

Mr. Dennis G. Lyons: Right.

There are certain commercial problems with that the sprayers supposedly would fall off and go light so the idea that Scoggin suppose to come up with is to put the plunger into the bottle and put a cap on the bottle to hold the plunger down during shipment.

So that when bought the insecticide or whatever product, you bought it with the pump already in place.

Justice Potter Stewart: This was for shipping and storage purposes not for use by the consumer, right?

Mr. Dennis G. Lyons: Well, in order for the consumer to use it, the consumer, of course, have to remove the cap --

Justice Potter Stewart: It is the function, you have to protect the business during a shipment and storage, is that it?

Mr. Dennis G. Lyons: Yes, sir.

The device a little closer is this device here.

Justice John M. Harlan: That's with the cap.

Justice William J. Brennan: The white thing?

Mr. Dennis G. Lyons: The white thing is capped.

It's a cap with the screw thread of the inside and there was a little -- oh I suppose the patent bar, we'd call a protuberance.

There is a little thing inside here that affects a seal with the cap.

Now the reason why there had to be a seal within that cap --

Justice John M. Harlan: A washer?

Mr. Dennis G. Lyons: It's not a washer; it's just a -- a part of the -- the plastic cap.

It's just the way the plastic cap is molded, so to speak.

The reason why there has to be a seal was that in the pumps at this time, there was no way of preventing the fluid from flowing up through the pump and out of the nozzle of the sprayer during shipment.

Scoggin did go of any way to stop that.So the way that he chose to prevent leakage was to put a seal inside this cap.

He put that seal right here up above the screw threads.

Now, if you're going to have a cap sitting on top the --

Justice John M. Harlan: (Inaudible)

Justice William J. Brennan: Even though he put a seal there, would something still come out of that orifice in the pump and --?

Mr. Dennis G. Lyons: Something would come out thought -- something would come out of the hole in the pump here and it would -- it could fill up in here.

Justice William J. Brennan: But then the seal (Voice Overlap)

Mr. Dennis G. Lyons: If the seal were perfect.

There certainly was the question about that.

If the seal was perfect, it would stop it from flowing out and soiling during shipment.

Now, starting from scratch, if there had been no prior right or whatsoever, we contend that it would be a very good to this proposition to hold about Scoggin's bottle cap, put down over the plunger and affecting a seal.

It appears to be one of the very obvious places to put seal above the screw threads which is the same place where your seal exists in a garden hose company.

Even without any prior art we would suggest very strongly that -- that would be an obvious thing to do.

That that would not be an invention and that accordingly there would be no basis to issue Mr. Scoggin a patent.

Justice Potter Stewart: To -- you don't question that this is narrow or as utility?

You question only its quality of invention?

Mr. Dennis G. Lyons: It's certainly useful that there -- it had imperfection where it was certainly useful and the utility --

Justice Potter Stewart: So the only issue goes to --

Mr. Dennis G. Lyons: Goes to invention.

Justice Potter Stewart: Invention or whatever it is that's probably covered by Section103.

Mr. Dennis G. Lyons: What ever it a -- it's the standards.

One might wonder -- anyway I've never thought of this before and actually the answer is, yes.

In 1938, there was a patent issued to a gentleman called Mr. Lohse and this figure appears on page 477 of the record.

This patent has all of the elements of the Scoggin patent.

Here we have a plunger sitting on the bottle.

Here we have a cap which is put down over the plunger and which holds the plunger down during shipment.

Mr. Lohse, like Mr. Scoggin, didn't know how to seal down here inside the pump and to prevent the fluid from coming up and getting into the cap here.

So he had to have the seal in the cap and actually there are two places where you could put the seal; you could put the seal below the threads or you can put the seal up here above the threads.

What Mr. Lohse did was to put the seal down here below the threads and as what we've just seen what Mr. Scoggin did was to put the seal up here above the threads.

I think if you're talking about places where you might put a seal in a bottle cap of the sort that that exhausts the two possibilities.

Now when Mr. Scoggin first put in his patent application to the Patent Office, he had about 15 claims.

Now, the function under the patent statute of the claims is to define the invention as to which the inventor claims a monopoly punishments of the patent.

The first 15 claims that he put in were really broad enough to make -- to describe the Lohse device.

There were entirely broad terms and they've described the function of a pump with an over-cap with a seal in an arrangement -- neutral arrangement, either like this or like his own.

The Patent Office, to its credit, rejected that by citing the Lohse patent against us.

Then there were a few other actions back and forth with the patent examiner writing to Mr. Scoggin.

Mr. Scoggin taking up aggressively narrower and narrower claims until finally, the Patent Office issues him a patent when his claims have been narrowed down to describe the specific technique of his seal that is his placement of the seal up here, and the fact that he put a cap down there so that you could pack it.

So that you could screw the cap down and before you got to the container cap itself, this seal here would catch, so to speak and he put the -- put a cap in there so that that wouldn't happen.

Essentially, that was what the --

Justice John M. Harlan: (Inaudible)

Mr. Dennis G. Lyons: There was no evidence that the Lohse device lead to it and in fact there was evidence from the one of the officials of the company that merchandized the Lohse device that it was satisfactory.

According to his recollection, this was a long time ago it was in the late 30s before the Second World War.

But that was his testimony and it was not the --

Justice Potter Stewart: The record of the claims of the patent in suit.

Mr. Dennis G. Lyons: The patent in suit starts at page 510 and the basic claim is the claim that appears denoted as number one on page 512.

It's all one sentence and it's about 350 words long I believe.

Justice Potter Stewart: Are all four claims of the patents in --

Mr. Dennis G. Lyons: The suit -- the claims one and two were the claims that were charged against per class.

Justice William J. Brennan: -- anything about the Lohse arrangement, did not do?

Mr. Dennis G. Lyons: No it did not, sir.

Now, there -- as we say there are really only two places in which Scoggin put a -- could have put the seal in the bottle cap, below the threads or above the threads.

I don't know if any further demonstration is necessary to show that it was an obvious thing to put the seal above the threads but we have found a few patents which disclose the idea of putting a fluid seal up above screw threads.

The first one of these is a patent issued to Mr. Mellon in 1952.

Here we have an arrangement which is quite like Lohse and quite like the ultimate Scoggin patent except that what you have here is a cap that fits directly down on the bottle rather than on the underlying bottle cap.

In other words, in this arrangement you don't have the second bottle cap here but you have it in the Scoggin and the Lohse devices.

But we cite this to show the positioning, the prior art in positioning a seal in an arrangement of this sort.

Here, we have the seal put up here above the screw threads in a hold-down cap that holds down a pump which is exactly the same place and exactly the same technique that Mr. Scoggin's patent teaches.

Actually, as I mentioned before the common garden hose is now even Mellon drawing as at page 457 of the record.

The garden hose I believe uses the same technique with the washer inside.

You will have a coupling with a screw thread and up above the coupling that you would have a rubber washer.

So that when you plug the other element in, tighten them up the end of the one half of the garden hose would fasten and seal in your washer up here.

There are other examples besides the Mellon patent of the particular technique of positioning the seal where Mr. Scoggin positions his.

One rather interesting one is the patent, it's disclosed in the patent issued to a Mr. Livingston.

This was in 1955 and again a few years before Mr. Scoggin's patent was applied for it.

Mr. Livingston was dealing with hydrofluoric acid.

Apparently, he was either an employee or on retainer; he had some relationship with the company that had to deal with hydrofluoric acid which is highly toxic.

Now, this was dealt within flasks or bottles that have to have pouring spouts on the top, this is a pouring spout.

And the pouring spout can be, in this patent, can be put into the bottle itself, here's the bottle, through a -- an arrangement which -- which holds it.

Now, what Livingston's idea was, was to again take an over-cap or hold-down cap and depressed the pouring spout of it.

And then effect a seal up here, in the very same place that Mr. Scoggin effected it, up above the screw threads that join the over-cap to the housing of the pouring spout here.

Now, what this -- incidentally, what this was trying to achieve was as follows, The hydrofluoric acid would leak out of the pouring spout.There was no seal up here.

And if you didn't have this arrangement here, which allowed it to flow black into the bottle, the fellow who opened up the cap would get the hydrofluoric acid on his hands.

Now this permitted it to flow back down to the bottle.

There was a seal up here which prevented it from getting out of the having the arrangement here.

This seal, I think, is in the same position and performs the same function like the seal in the Scoggin patent.

Justice Potter Stewart: How much a standing involved this prior art you discussed so far was before the examiner?

Mr. Dennis G. Lyons: The Lohse patent was before the examiner, that was the basis for his rejection all the early claims of Scoggin.

The Livingston patent was not before the examiner.

Mellon was before the examiner in the late stages.

He does not that refer to it in the early stages.

But, in the later stages of the examiner he surely did but Livingston was not.

The examiner never found Livingston.

Somewhat graphic way of showing what Scoggin did here and what Calmar did at about the same time though it's only a partial showing of what Calmar was doing.

It is describe by this part.

Here, we have a sprayer sitting in the bottle.

This is a non-patented sprayer, the sort of sprayer was known in the prior art.

The two prior sprayers that would -- did not have over-caps of these two manufactures.

Calmar is just 20.

It was shown here the prior to Cook, sprayers quite like that the Cooks sprayers called the Bakan 1.

This advice here, that commercial device made under the Scoggin patent is called the Bakan 2.

Bakan is a trade name of chemical uses.

The -- take a Livingston type cap with your screw thread and you seal up here.

And if you build up the surface here in order to receive what that is by putting the other element of the screw thread there and putting some element that will key into that.

There what you produce equally is the device in which Scoggin got a patent and the device that Calmar produced that was held to infringement.

Actually --

Justice William J. Brennan: Calmar got a patent of that?

Mr. Dennis G. Lyons: I think Cal -- Calmar later achieved the patent which was basically on the elements lower down in the bottle to which I'll address myself in a moment.

The -- actually, the prior art thought of better type seal than the one that Scoggin had put in though this is hardly dispositive.

It's -- Scoggin had the simple pressure type seal just to surface inside the bottle cap.

Calmar, like the Livingston cap, had sort of the tongue-and-groove arrangement like this such as what you have in high quality wood flooring and the -- and the like, the tongue-and-groove arrangement.

Actually, what Calmar did in the SS-40 that was important in the SS-40 did come out after the Bakan 2.

Well, what Calmar did in the SS-40 was to provide internal seals, that is, it seals down in the bottom part of the pump and seals up inside here inside the pump and these seals prevent the fluid from getting into the bottle cap in the first place.

And actually, that in turn is important because besides containing the fluid inside the bottle cap is a further question in this area, it's the question, what happens to the housewife when she opens the cap and the fluid that's in the cap might come out under the Bakan 2 arrangement.

There is nothing that prevents it from getting up here into the cap under the Calmar arrangement.

It would not get into the cap.

If there were any commercial problems here and the respondent has talked about them rather than talking about the prior art.

If there are any commercial problems here, they resolve by keeping the fluid inside the pump.

Our contentions in this case are quite simple.

Whichever way you phrase the standard, the Scoggin device is not an invention.

Put it in the terms of Section 103, the modification that Scoggin did of the prior art of the Lohse patent simply consisted of an obvious modification.

Taking a sealing technique that was taught in a number of prior art patents and in fact probably needed no teaching and simply using that is a modification of the Lohse device.

The repositioning of the seal was obvious.

It was not an invention.

We suggest to the Court that there are two principal fallacies that were committed by the Patent Office and by the lower courts here that have combined and created the -- we submit, the necessity of this Court's reviewing and reversing the judgment here.

The first, of course, is the fallacy of the Patent Office in granting countless patents while they can be counted there about 60 or 65,000 a year now.

Most of which cover trivial modifications of prior art devices and a shocking number of which cover gadgets with the sort of this, that is involve in the suit.

The claims as allowed in other Patent Office frequently are very, very narrow.

But what happens is that these patents are licensed to sue.

You can't bring a patent suit without a patent.

Once these patents get into the courthouse there are these attempts to broaden them and to refer to the commercial history of what went on.

And that I think is the fallacy that the lower courts committed which compounded the error that the Patent Office committed.

The question is far as the lower courts were concerned and I have no quarrel with most of the language, they've cited all the right cases and they -- their quotations are accurate.

But the -- again it's a case of the difference between the letter and the spirit.

The basic question that the lower courts decided really was which manufacturer of plastic sprayers for insecticides in the late 1950s was the first to reach the market with the sprayer that could be shipped in place.

And Bakan Cook Chemical did come out of the whole bit before Calmar.

The lower courts lost cite of what is the essential question whether in terms of the prior art, there was an invention, there was an advance that was not obvious.

There was an advance that was not part of the everyday work of the engineer whether working in plastics or working in whatever fields.

Whether there was something here that transcended the routine.

That is, we suggest, the basic error that was committed by the lower court.

We submit that it was an error of law and that this Court is perfectly free to correct it.

Justice John M. Harlan: Now, what is this test, the commercial test that this problem is irrelevant to the equation of obvious and not obvious --

Mr. Dennis G. Lyons: They're not totally irrelevant.

I think this Court has not said they are totally irrelevant.

This Court has said they are adequate.

Justice William J. Brennan: Why the industry have to keep working so hard when they have the Lohse device for so many years?

Mr. Dennis G. Lyons: Well, the reason why Calmar was working, it was because they wanted to develop the internal sealing in this device.

There are lots of prior efforts that the respondent cites were unsuccessful on the part of Calmar.

But all of those efforts were not aimed in the direction of simply putting a cap over the plunger and holding the fluid inside the cap.

They were --

Justice William J. Brennan: They were related to the Scoggin's device --

Mr. Dennis G. Lyons: -- they --

Justice William J. Brennan: You told me earlier that the Lohse device had worked just as effectively as Scoggin.

He didn't add anything to the commercial value of the Lohse device.

Mr. Dennis G. Lyons: Right.

Justice William J. Brennan: Am I correct in that instance?

Mr. Dennis G. Lyons: That's correct, sir.

Justice William J. Brennan: Well, why -- why they keep pressing at it so far that I didn't quite understand.

What --

Justice Byron R. White: Why --

Mr. Dennis G. Lyons: What --

Justice Byron R. White: -- didn't use those (Inaudible)?

Mr. Dennis G. Lyons: Because they're attempting to make a -- the reason why Calmar was not -- was to -- because they wanted to make a seal down below and inside the bottle.

And not free allow the flow to get up into the cap.

Justice William J. Brennan: But why -- why --

Mr. Dennis G. Lyons: I suppose there were reasons of -- there may have been reasons of a company as to -- as to why Cook used its positioning of the seal which of course again is an old positioning of the seal.

In Lohse, you have to have a washer on top of the bottle cap and in their device even though at first it didn't work until they later adopt the seal which was like the petitioner's.

In their device you could get by -- simple by molding the plastic and as a result that they really bring out the device according to the record that cost about depending on the piece.

But that -- the claim was the only --

Justice William J. Brennan: Well, let me see that -- really I guess Lohse just wasn't used, is that it?

Mr. Dennis G. Lyons: Lohse was used in the late 1930s and then wasn't used again.

Justice William J. Brennan: And that's all?

And meanwhile they were using other things and the bottles leaked until they came up with this one, isn't it?

Mr. Dennis G. Lyons: Until they -- in effact rediscovered Lohse, I don't know if he actually knew about the Lohse patent or not, but by doing some -- by using something that was available in the common stock of prior inventions or was an invention even in 1938.

But in the prior stock of knowledge this --

Justice Potter Stewart: Lohse doesn't (Inaudible) of something like (Inaudible) into Columbus?

Mr. Dennis G. Lyons: I can't -- I can't get into that question, Your Honor.

If Your Honors please, we appreciate the opportunity and regret the necessity of coming before you this morning and telling you about a series of bottle caps.

But for the reasons we have set forth, we believe that this exemplifies the situation both in the Patent Office and in some of the opinions of the lower courts.

Justice Potter Stewart: Mr. Lyons, was there any -- I think you're concluding but before you do, was there any talk in the Eighth Circuit opinion in this case about the necessity of a new result?

Mr. Dennis G. Lyons: No, I don't believe that -- as I remember of that it should not --

Justice Potter Stewart: That didn't get into this opinion.

Mr. Dennis G. Lyons: -- (Voice Overlap) by this panel of the Eighth Circuit.

Justice Hugo L. Black: (Inaudible) the Eighth Circuit have decided in favor to that (Inaudible)?

Mr. Dennis G. Lyons: I think this may have been a little bit after -- after the Graham case but I -- it was one of the Eighth Circuit decided in favor of the patentee.

Justice William J. Brennan: That's a different panel, the one --

Mr. Dennis G. Lyons: It's an entirely different panel from the one in the --

Justice William J. Brennan: New judges --

Mr. Dennis G. Lyons: From the -- the one in Deere, yes.

Justice Hugo L. Black: All of them?

Mr. Dennis G. Lyons: I believe all three.

There's no -- no overlap.

Thank you, Your Honors.

Chief Justice Earl Warren: Mr. Schmidt.

Argument of Gordon D. Schmidt

Mr. Gordon D. Schmidt: Mr. Chief Justice, may it please the Court.

I think if respondent's position were to be boiled down to a word, it would be that we consider this to be a key case not from the standpoint of this invention be in world shaking or that the world could not have got along without it.

That because in this case, it is now possible for the Court in our opinion to remove a substantial amount of confusion that has been going on for years in the lower courts.

This Court has the opportunity in this case to set some guidelines and some rules and some regulations that the lower court is looking for their needing help.

They want help by a compassion for the problem that they have in determining whether or not an invention is obvious or whether it is not obvious.

It is our position that the Eighth Circuit in this case took the right approach.

Certain Negro doctrines were set forth that this Court can adopt and can do so without having to change any laws or without having to dig up some new principle not heretofore heard of.

What the Cir -- Eighth Circuit did in this case, was to first look at the statute, finding that statutorily, there are three conditions for patentability.

It must be new, it must useful and then under 103, it must not be obvious.

But the Fifth Circuit did not stop there.

As soon as it applied the statute, it went into a determination of what this Court, the Supreme Court, had said in the patent.

And it said that, “In order to be patentable, an invention must meet high standards.”

A mention was made earlier this morning of whether or not the last sentence of 103 is of any consequence.

And the question was raised as to whether or not 103 changed the law.

The Eighth Circuit went back from 35 years and I find the Eighth Circuit has been applying exactly what 103 has said for smaller than 35 years.

They cited a case of Pearce versus Mulford which we set forth in our brief at pages 31 and 42 and which the language, almost identical language of 103, is used.

Now, if there's any change in 103 over and above what has always been the law of this Court would perhaps be in the last sentence and we can only say that maybe the Supreme -- the Congress was intending to say, “We don't like to hear the Court say flash of genius.”

Well, the irony of that is the only reason this Court ever use the word “flash of genius” was to make a point.

This Court has said over and over again the standard must be high.”

They have used all kinds of language to make that point clear.

And one way to do it is to say there must be a “flash of genius”.

So Congress early in the last sentence had in mind that there shall be no more “flash of genius”.

But be that as it may, that is not our argument in this case.

We go along with the concept that there must be a high standard of invention.

103 merely says that the condition for patentability that has not before been in the statutory law is that it shall not be obvious to one skilled in the art.

Now, how was the law applied in the Eighth Circuit?

In this case, first of all, the Eighth Circuit found that the Scoggin invention was new.

Now, it's not very difficult.

The law is clear, any eighth grade school boy could understand what you mean when say that a device must be new as distinguished from something that is old.

Number two, the Eighth Circuit followed 102 in determining that there was novelty that -- and that there was utility, I'm -- I'm sorry 101 on utility.

And the way they found out was to determine if there was widespread use, that there had been a success, and there had been acceptance.

Certainly, if there were no utility, those conditions would not have existed and for that reason the Eighth Circuit said the device was useful.

Chief Justice Earl Warren: We'll recess now.

Mr. Schmidt, you may continue your argument.

Mr. Gordon D. Schmidt: Chief Justice, may it please the Court.

In a few moments, I shall enumerate and briefly discuss 18 reasons why the Eighth Circuit held this patent valid.

But before doing this so, I should like to first continue an attempt to clear up some of the confusion as to the law and how it was applied by the Eighth Circuit.

The question was asked this morning whether or not the Eighth Circuit has ever interpreted 103.

I do not recall the answer but in my opinion, it has not.

In the Blue versus Dempster case which we cite, a 1960 case, at pages 41 and 42 of our brief the Eighth Circuit said, “In applying 35 U.S.C.A. 103, this Court follows the standards of patentability set out by the United States Supreme Court in the NP case.

And that's as far as the Eighth Circuit has gone.

What they do -- what the Eighth Circuit has done and which we submit should be done by all of the circuits is to first consider the law, the statutory law, determine whether or not the invention is new, determine whether or not it has utility and then attempt to determine whether or not it was obvious to one skilled in the art.

The problem and the difficulty, is determining whether or not it is obvious.

Each court is called upon to within -- but a few hours understand the principles of every art that might come before him.

Whether it'd be chemical, electrical, or something simple, he must understand it and determine for himself whether or not it is obvious.

I submit that this should not be the whim of the judge and how he happens to feel about the particular art that he is considering.

Did I submit that there are ways to determine whether or not it is obvious?

And these are the 18 points that I intend to discuss, the 18 guidelines, the 18 signposts.

They are referred to many times as make ways.

Our adversary in this case refers to them as something irrelevant to this case.

We say that it is abundantly rel -- relevant if it were not for that.

If we were not to look at these 18 points, these 18 guide posts, then all we have is the statute which says it shall not be in obvious and we have the judge.

And the appellate court and this Court having it determined for themselves whether or not it is obvious simply by listening to one bit of evidence where experts will say, “Yes, it was obvious” and another says, “No it was not obvious.”

And we get nowhere.

Justice Hugo L. Black: May I ask you of your 18 points that set out in your brief at one page --

Mr. Gordon D. Schmidt: Yes, Your Honor.

Justice Hugo L. Black: What page?

Is there one page of it?

Mr. Gordon D. Schmidt: They are scattered throughout the brief.

I do not have them enumerated.

Justice Hugo L. Black: Well, I thought from the argument maybe you might have them.

Mr. Gordon D. Schmidt: No.

No.

No.

But I shall point this out that in all 18 points except one, this Court has passed on it and it said this is something to be looked at to be determined whether or not this invention should be held valid or invalid.

One point I could not find any law and although I suspected that it has come up before.

Again before going to those 18 points, I'd like to take up this question of fact or law again which seems to be a confusing thing.

At the Eighth Circuit level counsel, my opponent was asked the very the same question and I was asked the question, do we have facts?

Questions are, do we have law of questions?

Counsel said it's a question of mixed fact and law.I say that begs the issue, that doesn't tell us on anything.

Let's go back to grave -- to Goodyear Tire versus Ray-O-Vac where this Court in 1944 said that it must a strong case before this Court was set aside concurrent findings.

A little bit later in Graver versus Linde in 1950, this Court emphasized Rule 52 (a) to be sure there was a dissent in the case.

But later on in the AMP case again the question came up as to whether or not the concurrent two court rules should apply.

This Court was not -- it was not necessary for this Court in the AMP case to decide that one way or another because the Court said that there were no substantial dispute and findings.

And therefore, the AMP case stands for a principle of law which simply says that when you have a claim -- when you have a combination claim, that includes a new element and that is always new, you should claim that element and not claim it as a new combination.

We have no difficulty on combinations of old elements.

It's very simple.

If you got a number of old elements in the combination, the only question is whether or not that combination is new.

The difficulty is when you find the invention to be only in one element and that element is new.

And the Court has said, “You must claim that, otherwise, you're overclaiming your invention.”

That Patent Office says to us over and over again, “You have an old and exhausted combination that you're claiming if you think this is a new claimant.”

Justice Hugo L. Black: What -- what is yours?

Mr. Gordon D. Schmidt: In our case, we have a combination of old elements.

There isn't a single element in the combination that is new.

We have not claimed it.

We cannot be accused of overclaiming.

We have claimed only the combination.

We said that combination is new and that it has never been done before and it has utility and it is not obvious.

So we get down to what is the proper approach.

And we find that as a conclusion of law, the question of validity is to be determined by the Court.

But until we come to that final question of validity, there are a number of facts that must be considered.

Otherwise, we're deciding that in evacuant.

Now, the 18 points, Number one, the record has established clearly that there was a need for this invention; that the need existed for a long, long, time.

And one time, the liquid was dispensed with a hand sprayer, a tin hand sprayer.

Later on, the sprayer -- the plastic sprayer was hung on the side of the bottle through a cardboard holder.

What was needed was a shipper sprayer; a sprayer that could become and then it will go part of the package.

It would not leak.

It would not break.

It would not become lost or pilfered.

Calmar and its costumers knew of that need.

Number two, we had a problem.

The record establishes -- it establishes the fact that the -- that the problem was baffling.

The petitioner say, “Supposedly there was a problem but their own witnesses have admitted over and over again that they -- that they could not solve the problem.

The problem was that you can't simply place the square inside the container and let it go with that because it will leak and it will get broken.

Hanging it on the side was not the solution.

It had to do five things.

It had to hold that sprayer depressed.

It had to house to protect the head against damage.

It had to prevent leakage to the outside and onto the label.

It had to remain sealed after it had been once sealed at the factory.

At the time the sprayer is made in this condition, they cover copy and sealed in place and then it can be subsequently placed in the container and the container cap -- the metal container cap can be sealed through automatic machinery without disturbing the seal between the cover cap and the collar.

Those were the things that Mr. Scoggin had to solve.

Those -- those were the problems.

Point number three relates to the skill and the experience.

This Court has said many times that if no one has been trying to solve this problem, if this is what we call a “wouldn't it be nice invention”, and we have many of those.

People come in daily and say, “Wouldn't it be nice if have this one?

Wouldn't it be nice if we have something else?”

That is not what we have here.

We have the skill and the experience of Calmar who had been a leader in the industry in making sprayers long before this invention.

They knew what they were doing and yet they couldn't solve the problem.

They had many engineers on their staffs.

They had many inventors who had previously invented and obtained patent.

Justice Hugo L. Black: Was -- was that Calmar have sold a business or was he engaged in the businesses of selling the fluid in the bottle?

Mr. Gordon D. Schmidt: No, no.

Calmar was initially formed for the purpose of making plastic sprayers and then they when went on -- 0

Justice Hugo L. Black: Plastic what?

Mr. Gordon D. Schmidt: Plastic sprayers of the type that preceded this invention without the cover cap, the ordinary sprayer.

And then ultimately they were acquired by the Drackett Company and the Drackett Company of course makes many liquid products and uses a sprayer.

Number four, I term, the begging for an answer.

Now, this is where I cannot find any decisions by this Court saying that this is a factor to be considered in determining whether or not an invention is patentable and determine whether or not the invention was obvious or not obvious.

But we did have urgent pleas to Calmar by its costumers including Cook, the respondent in this case, for many, many years for the answer.

Over and over again, Cook says, “Will you please come up with something that can be use as a shipper sprayer that will not leak and will not break?”

Justice Hugo L. Black: And would not what?

Mr. Gordon D. Schmidt: Would not break -- would not break --

Justice Hugo L. Black: Leak or break?

Mr. Gordon D. Schmidt: Break -- break the sprayer.

Because hanging it on the side we had the breakage problems.

If you try to merely put in the -- top of the container, it obviously would break in shipment long before you ever got to the housewife.

Number five, I term the struggles, now the --

Justice Hugo L. Black: Well what -- what --

Mr. Gordon D. Schmidt: The struggles --

Justice William J. Brennan: Well, what about the man before you leave, it if you don't mind.

What about the (Inaudible)?

Mr. Gordon D. Schmidt: As -- I heard you this morning, that's a good question.

And the answer is this.

Lohse was on the market in about 1944, a few months and a few thousand of their sprayers was actually for -- was actually produced and sold.

Then the product was -- came off the market.

Now why the evidence doesn't show?

So far as the Lohse people themselves were concerned, they don't have -- they don't say why they ceased.

Justice William J. Brennan: So why was Calmar searching so hard for something else if that -- that's so quick.0

Mr. Gordon D. Schmidt: That's our point.

That's our point exactly.

If Lohse is so good -- if --

Justice William J. Brennan: Well, I can see that that helps you, does it?

If -- if Lohse was really a -- dispositive prior art, what difference does it make that Calmar didn't make use of it and decides to find something else of its own.

Mr. Gordon D. Schmidt: The point that we make is that if Lohse is good and that Lohse anticipates our invention and that Lohse will lose the job, why did they infringe?

Why did they copy us?

Why did they come up with a dead ringer as the courts below had said?

Justice Byron R. White: Well why did you --

Mr. Gordon D. Schmidt: And the answer -- pardon me.

Justice Byron R. White: -- why did the -- why did your men go to work and do something that don't -- if the Lohse had already solved that?

Mr. Gordon D. Schmidt: Because Lohse would not solve the problem and the reason --

Justice Byron R. White: What's wrong with that?

Mr. Gordon D. Schmidt: That Lohse would not solve the problem and the testimony shows that you cannot seal effectively on top of the Mellon container cap for several reasons.

Number one, the gas that that must be used becomes absorbed with the material, I'll assume this.

Number two, these container caps are not uniform.

They're not perfectly smooth on top.

You can never get a solid seal.

And number three, when you attempt to use Lohse and put it into a container and use automatic capping machinery, you break the seal that you attempted to establish in replacement.

That is why Calmar did not use Lohse, that is why we are not using it today, and that is why Scoggin don't --

Justice Byron R. White: That it didn't work?

Mr. Gordon D. Schmidt: That would not work.

Justice Byron R. White: You didn't talk leakage problem the one --

Mr. Gordon D. Schmidt: Right.

It would not solve the leakage problems, it would not permit you to use automatic machinery in -- in putting the sprayers in place, and it would break the seal if you tried it.

Now, that is what the evidence shows and to say that -- that it would work is contrary to what the finding of the two lower courts.

Justice William J. Brennan: That's your finding about Lohse and the --

Mr. Gordon D. Schmidt: There is a finding that --

Justice William J. Brennan: -- to lower courts?

Mr. Gordon D. Schmidt: Yes sir.

There's a finding in the court below to the effect that Lohse.

That Lohse was -- they did consider Lohse and they determined that Lohse was not successful, had not been on the market.

Anyway the lower court indicated it did -- did the lower court indicated that he recognized that Lohse had been used but that had been some 25 years ago and it come off of the market.

And he recognized the testimony of the experts, Mr. Scoggin himself, to the effect that it would not work and he enumerated the reasons why it would not.

Justice Hugo L. Black: Is that finding to which you refer part of the Court's opinion?

I just want to look at it if it won't bother you.

If this bothers you, I'll find it.

Mr. Gordon D. Schmidt: It's a -- it's not set out as a specific finding.

No.

Its -- it's all a part of the opinion.

It's all I --

Justice Hugo L. Black: Part of the --

Mr. Gordon D. Schmidt: The trial court.

Right.

I mentioned as number five, the struggles that the parties had in attempting to come up with an answer.

Device after device was tried by Calmar.Suggestion after suggestion was either tried or submitted.

They all failed.

With respect to the affairs, many futile attempts were made to fill the need.

The president of Calmar and the vice president Drackett testified that he had said in grievous experiences in trying to solve the problem.

At the time that Scoggin invention came on the market, they were still trying to perfect an old leaker called the LP-25.

S. C. Johnson tried to solve there problems for them, they put a cellulose cap on top of the LP-25 to keep it from leaking.

That was not satisfactory.

In other words, they were goaled by frustration and disappointment.

And this Court has heretofore indicated that that is one factor to be considered when determining whether or not a patent is valid, and whether or not it is obvious.

This Court is also --

Justice Hugo L. Black: Are you saying that that just a -- you consider the most valuable part of it -- the leakage problem that they solve that.

Mr. Gordon D. Schmidt: Yes, yes.

And the -- well I -- I don't know but there is any one most valuable the leakage problem is the lack of breakage, number two.

Justice Hugo L. Black: Lack of what?

Mr. Gordon D. Schmidt: Breakage.

Preventing breakage.

Justice Hugo L. Black: Leakage and breakage?

Mr. Gordon D. Schmidt: Yes.

And then number three, making it possible to put this on the bottle at the bottling factory in a way that when you attach the Mellon caps, you do not disturb the seal between the cover cap and the collar inside above the cover cap.

Counsel said this was a thing I -- I have some passion for him to here too, it's called a -- it's called a rib.

It's a part of the cap inside, it's a rib that cooperates with the shoulder on the collar and that affects the seal.

That seal must be there, it cannot be down below on the metal cap like in Lohse because if that is, you have leakage, you break your seal and the gasket will absorb the moisture it just won't work and that is why it has not been adopted by Calmar or by Cook.

So we must consider the fact that Baxter Scoggin did come up with the solution.

And this Court again had said, “If we can find that the problem was really elect and this is a solution to the problem that must be considered in determining whether or not the invention was obvious and patentable.”

They must consider the results of this solution.

This is open up in many, many new fields.

In the Cuno case, in the Cuno versus Automatic case, it was pointed out that the result was old.

And that was one factor considered by this Court in determining that the invention was not patentable.

In our case we have just the opposite, the results are new.

It's not only used on insecticide, it's used on virtually every liquid.

It's branch start into the field of window cleaners and hair sprays, and polishes, and veterinary product, chemicals of all kinds and medicines.

Number nine, the manner of arriving at the solution.

There is -- the petitioners have vacillated in our opinion as to what is the invention?

We have defined the invention.

We defined it three times in our brief.

It was adopted by the courts below.

And our petitioners say that we are doing a very fine job of defining the invention and yet they vacillate.

They tried to say, “The invention relied in the seal, a particular type of seal.

It relied in a space.

It relied in one or two or three other things.”

The invention doesn't lie in any one thing.

The seal is old, the space is old, the cap is old, each individual element is old.

Justice Byron R. White: What space are those?

Mr. Gordon D. Schmidt: Space between the cover cap, the space between the cover cap and -- it's on the -- the infringing structure above the black line which is the cover cap.

And that space of course must be -- if you're going to establish the seal but that is what --

Justice Byron R. White: (Inaudible)

Mr. Gordon D. Schmidt: If you scroll and lay down to hit the cover cap of the container cap first, then you don't have a seal.

That's quite obvious.

It wasn't new, it wasn't claimed to be new.

Now, the manner of the solution that's number nine as the point, number ten the fact that the Patent Office did issue the patents.

There is a presumption of the validity.

It is now statutorily set forth.

Number 11, we have a new combination.

The old -- the elements of some -- element themselves are old; that is quite permissible in law.

We have the prior art to consider and the prior art does not anticipate this, all of the pertinent prior art was considered by the Patent Office except Livingston and all Livingston does is -- is cumulative of a particular type of seal and we do not invent a new seal.

We've got to consider number 13, the utility of the device.

It does have utility.

100 complaints sought of some 15,000,000.

It was not perfect but it was nearly perfect.

The law requires much less.

Number 14, we have acceptance.

The product has been accepted not only by the public but it has been accepted by our adversaries in the fact that they copied.

Number 14, it has been recognized.

Justice Byron R. White: Both claims are (Inaudible).

Mr. Gordon D. Schmidt: Both claim, there are two claims.

Justice Byron R. White: (Inaudible)

Mr. Gordon D. Schmidt: In the record, I wrote it down a little while ago, Your Honor.

Justice Byron R. White: 525

Mr. Gordon D. Schmidt: 525.

Justice Byron R. White: 512.

Mr. Gordon D. Schmidt: 512.

There are two claims 512.

512.

I've covered the acceptance of recognition.

The fact that the -- invention has been directly in -- and exactly copied, the Calmar people sought the same inventions, same protection.

When they filed their own application, they cited Lohse in their application.

They attempted to persuade the Patent Office that they could get a put -- a claim allowed, the same as our view, went above Lohse.

These are all things that are here before considered by this Court as being important.

Number 18 and the last is the fact that there had been successors by both parties.

Our petitioners have said initially that the only reason that this patent was held valid was because of the tremendous success.

That is not true.

I have listed 17 other reasons before I ever came to the question of whether or not it was successful.

And then in the reply brief, they apparently realized that they had build up commercial success too much whereas commercial success became important to show utility and they now call it a commercial innovation.

I don't know why the change but to me, a commercial innovation is synonymous with commercial novelty.

So if they are now saying and admitting that we have something novel then the only question that remains for this Court to determine is whether or not the Eighth Circuit was incorrect in implying the high standards of this Court.

And determining that there were factors, 18 factors or at long last finding one valid.

Justice Hugo L. Black: May I ask you this question that disturbed me a little.

You -- you gave 18 guideposts which maybe all relevant.

But does that not indicate to some extent that it's impossible to capture one single formula in the short series of words that will allow us to say, “This is it?”

Isn't it something like negligence?

Mr. Gordon D. Schmidt: I -- I agree with Your Honor in saying that you cannot define obviousness or non-obviousness by one word, yes.

So what -- what must we do?

We must look to see whether or not there are 18 points or five points, or two points, or none.

If there are none and there is a doubt, certainly then it becomes a problem on the part of the patentee to try to sustain his patent.

But I'm not saying that the absence of all of these 18 points would mean that there would automatically be no -- no invention, I'm not saying that at all.

I'm merely saying that when the question is close, the lower courts would like to see this Court set down the boundary so that they can understand.

And I'm sure they want to follow the AMP case.

The Cuno occasion say that we have a high standard of invention.

They want to follow that.

But what they say whenever the AMP case is cited, they said, “Oh well, that's fine that was an easy one”.

Obviously, that was unpatentable.

Anybody would say that.

That's what's happened over and over again.

But the Eighth Circuit doesn't say that.

Justice Hugo L. Black: Isn't just about a -- isn't it a matter of judgment after all on what you've said considering all of these and maybe 18 more or 36 more factors --

Mr. Gordon D. Schmidt: If I will --

Justice Hugo L. Black: -- whether it actually reaches the standard which is practically impossible of definition.

Mr. Gordon D. Schmidt: It is impossible of definition except that we do have these guidelines.

We need this guideline.

If we cast them aside and say they are of no value then we are hopelessly lost.

And the various circuits throughout the land except for the Eighth Circuit, if there has been a getting away from the high standards, it has been because of the fact that rest of the circuits in our opinion have not followed what the Eighth Circuit says, “When we apply 103, will you follow the high standards of this Court?”

And they've done so for 35 years.

And this is a perfect example, not because it's simply a complex.

Some of the most complex devices can be the most unpatentable.

Anybody can put -- anybody could solve this problem or something complex in ex -- in expensive.

But it takes -- it takes a genius to do it in such a way that it is marketable.

That it is inexpensive, that it'll do the job.

The simplicity has no bearing.

This is not a -- an atomic bomb.

This is not going to help us get to the moon but it is important that we set down the guidelines so that the courts will understand.

And that the Eighth Circuit be used as an example of how to solve this problem of what it is in -- a patentable invention and what is not.

Chief Justice Earl Warren: Mr. Lyons.

Rebuttal of Dennis G. Lyons

Mr. Dennis G. Lyons: May it please the Court.

Just a few words in rebuttal.

There appears to be a little confusion as to what the record shows as to the use of the Lohse patent.

The testimony as to the practice under the Lohse patent back in the late 1930's appears at the record at approximately at page 287 and 288.

And there the witness who was associated with the company that practiced the Lohse patent clearly testified that it inhibited the leakage, that it was capable of an automatic assembly.

In other words, if you could put the over-cap and the sprayer and the container cap together and then put them into a bottle which was exactly what Mr. Scoggin did.

Now, Mr. Scoggin's testimony was that when he tried the Lohse technique, there was leakage.

Now, perhaps Mr. Scoggin had some sort of problem that his device helped him to solve but the fact of the matter is that the Lohse according to the undisputed testimony of what happened back in the late 30s was an effective commercial device.

Justice William J. Brennan: Well, what are you going to do to the then about the findings of fact at page 26 of the record that there's not finding of the trial court?

Mr. Dennis G. Lyons: Well, Your Honor, to the extent that there is a fact finding involved in that I would think it's clearly erroneous to some of the basis of this record.

Justice William J. Brennan: Well its --

Mr. Dennis G. Lyons: There's no --

Justice William J. Brennan: -- it's rather flat isn't it that the Lohse's cap would not solve the problem it was faced by the manufactures and sellers of insecticide.

And then -- including sentence to the next paragraph, this form of contact between the end of the hold down cap from the top of the container would not solve the problem of leakage.

You say there's support in the record for that?

Mr. Dennis G. Lyons: There's no support in the record as to Lohse's device.

The record is unambiguous of Lohse's device was a big proof back in 1938.

Unknown Speaker: (Inaudible)

Mr. Dennis G. Lyons: That Lohse's device was practiced by -- his -- assignee was leak proof.

Justice William J. Brennan: And would you give me those records?

Mr. Dennis G. Lyons: That starts around 287 for the first time.

In any event the further contention is of course that simply using the seal taught by Livingston and taught by Mellon which is all that Scoggin did was not invention.

The prior teachings of this Court in the AMP case in the Marconi Wireless case of this case where the patent issued to the great Marconi was held invalid for warrant of invention, all indicate that the dominant concern is the prior art.

Because it is the prior art that people are to be free to draw from to find solutions to their problems.

It is not 1/18th of the question.

It is the dominant question as this Court's decisions teach.

Justice Byron R. White: Mr. Lyons, it that doesn't favor to your case whether Lohse solved the leak problem or not?

Mr. Dennis G. Lyons: Certainly not.